Trade Marks - As Published in Current Intelligence 2007

Title: Use (You) Snooze You Lose

Cite and date: L. & J.G. Stickley, Inc. v. Ronald C. Cosser [Jan. 11, 2007] Trademark Trial and Appeal Board (TTAB) opinion in Cancellation Proceeding No. 92040202.

Conclusion sentence: Two registrations were cancelled based on analogous use where

Petitioner seeking cancellation established priority (standing) and met the burden of proof to rebut presumption of registration's validity by preponderance of evidence.

Legal Context: This TTAB decision illustrates the potential importance and availability of tacking on use that is considered analogous to trademark use for intent-to-use applicants as well as petitioners in contentious proceedings. Additionally, failure to establish proper trademark use in connection with goods can prove fatal when defending a challenge against a registration.

In this cancellation proceeding, the TTAB addressed petitioner's ability to tack on analogous use in order to determine and establish priority. Once the priority was determined, the TTAB was able to address the ground of likelihood of confusion as a basis for cancellation of the registrations.

Facts: The Respondent, Ronald C. Cosser ("Cosser"), owned two registrations as follow:

The marks include the words THE CRAFTSMAN, the phrase ALS IK KAN which translates from Finnish or Flemish to "If I can, all I can" and the design element of a woodworker's compass.

In 2001, petitioner ("Stickley") filed a petition to cancel both registrations on the ground that Gustav Stickley, its predecessor in interest, used the mark on furniture and related products and services since 1901. Stickley further alleged that the registrations are void because Cosser failed to use the marks in commerce at the time he applied for registration or for three consecutive years. Cosser denied the allegations.

As background, the TTAB discussed the history relative to Gustav Stickley ("Gustav"). Beginning in the early 1900's, Gustav was an artisan who became a leader in the Arts and Crafts movement of American furniture design, known as "Mission" furniture. It is known for its severely plain and rectilinear style. Gustav founded Stickley with his brothers. Gustav obtained trademark registrations for ALS IK KAN and WOODWORKER COMPASS Design in 1901; CRAFTSMAN for furniture in 1906; and THE CRAFTSMAN for a monthly magazine in 1909. Use of these marks ceased when Gustav went bankrupt in 1916.

In the 1980's interest in Mission furniture increased and Gustav's private collection was auctioned for record prices. Stickley reissued 33 pieces of Gustav pieces in 1989. Cosser filed his trademark application in 1993 for furniture polish and then in 1997 for furniture.

It was clear that Stickley did not use the mark on its furniture or polish prior to 1978, the first use date claimed in Cosser's trademark application. The petitioner argued that prior use of its marks constituted analogous trademark use. Testimony revealed that such use was composed of a framed display located in Stickley's factory showroom for years prior to 1978 until the 1980's and the phrase "Als ik Kan: the pride of craftsmanship" in its 1977 catalog. Stickley admitted that it did not make use of the mark on furniture and that Cosser used the mark on furniture polish and furniture restoration services from 1979 - 1981.

Analysis: The filing dates of Cosser's applications are significant because he can rely on those dates for his priority. Thus, Stickley would have to show a date of use on furniture earlier than June 1997 to establish priority. Although Cosser was able to demonstrate use of his mark in connection with polish and furniture-related services, he was unable to show earlier use of the mark on furniture simply because he did not affix the mark in question to his furniture products in any way.

Stickley's use is more complicated where there was a period of 28 years of no evidence of use of the mark by Gustav or Stickley and again not until 1989 in connection with furniture. A mark is considered abandoned when "its use has been discontinued with intent not to resume use...nonuse for three consecutive years shall be prima facie evidence of abandonment", 15 U.S.C. Sec. 1127. Any rights that Stickley claims it acquired from Gustav were lost through this period of non-use.

Stickley then relied on the argument that its prior use constituted analogous trademark use. The question is whether Stickley's display of ALS IK KAN and Woodworker's Compass Design in its showroom prior to 1978 and the phrase ALS IK KAN in its 1977 catalog amounted to trade name or use analogous to trademark use. It is well settled by the TTAB that "...one may ground one's opposition to an application on the prior use of a term in a manner analogous to service mark or trademark use." T.A.B. Systems v. PacTel Teletrac, 37 USPQ2d 1879, 1991 (Fed. Cir. 1996). The fact that Stickley had only one showroom during the relevant period suggests that the display was visible to all consumers seeking to buy Stickley's furniture and polish in the 1970's.

Based on these seemingly minimal uses of the mark at issue, the TTAB found that Stickley had established by a preponderance of the evidence that it made analogous use of the phrase ALS IK KAN and the Woodworker's Compass Design in association with both furniture and furniture polish at least by the end of 1977 (prior to Cosser's 1978 use date).

Practical Significance: It appears that a Petitioner can rely on analogous use to establish priority and thus standing to challenge a registration. This seems to also apply to an intent-to-use applicant who may tack onto its constructive use date (filing date) its use that is analogous to trademark use. The TTAB has specifically stated that "an applicant with a bona fide intent to make use of the applied for mark in commerce, should be permitted to tack such use if circumstances show that there was a continuing intent to cultivate an association of the mark with itself and its goods or services and that such association was created". Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251 (TTAB 1995).

The significance of establishing priority in this manner allows a petitioner to challenge a registration, who would not otherwise have standing, on the likelihood of confusion ground. Additionally, the finding that Cosser did not use the mark on furniture illustrates the importance of proper trademark use. Although advertisements and brochures may be acceptable to establish use in connection with services, such are not sufficient to establish use in connection with goods. Although Stickley did not prevail on its claim of fraud in this regard, Cosser failed to establish use of the mark which could have provided him with priority over Stickley thereby defeating the petitioner's standing. Failure to establish or keep a record of proper trademark use was a fatal blow to Cosser's registration for furniture.

Following the TTAB's extensive look at the issue of priority and use, it then turned to whether there was a likelihood of confusion. The TTAB determined that the phrase ALS IK KAN has more trademark significance due to the suggestive nature of the other elements of the mark. Since this highly unusual phrase dominates Cosser's mark and was the only or dominant portion used by Stickley in its display and catalog, it found the marks to be very similar. Based on all the likelihood of confusion factors, the TTAB concluded that confusion is likely and granted the petition for cancellation of both registrations.

Robyn S. Lederman, Senior Trademark Counsel

Cantor Colburn LLP, Troy, MI USA

Email: rlederman@cantorcolburn.com