Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 ESTATE OF LADISLAO JOSE BIRO, BY HIS HEIRS, ELIZABETH SCHICK BIRO AND
MARIANNA BIRO
v.
BIC CORPORATION
Opposition No. 73,600
February 4, 1991
Before Sams, Rice and Quinn
Members
Opinion by Quinn
Member
An application has been filed by Bic Corporation to register the mark "BIRO" in stylized form for ball point pens and refills therefor. [FN1]
Registration has been opposed by the estate of Ladislao Jose Biro, by his heirs, Elizabeth Schick Biro (wife) and Marianna Biro (daughter). As grounds for opposition opposer asserts that Mr. Biro is generally recognized as the inventor of the ball point pen; that Mr. Biro received a patent in Argentina in 1943 for a ball point pen and that the name "Biro" has been associated with ball point pens for many years; that applicant's statements in the application regarding the surname and significance of the mark are incorrect; that Mr. Biro did not grant to applicant permission to use or a license to use his name in connection with the goods in the United States; and that the mark falsely suggests a connection with Ladislao Jose Biro, living at the time the mark was adopted and now deceased, to the damage of his estate.
Applicant, in its answer, admitted that Mr. Biro is credited with inventions which had importance for the development of ball point pens and that its statement in the application that "the mark is not a surname" is not correct. Applicant otherwise denied the salient allegations of the opposition. Applicant set forth several affirmative defenses, including unclean hands, laches and acquiescence. Applicant also asserted that opposer is estopped from asserting any claim or interest in the mark "BIRO" for ball point pens in the United States in view of a license agreement.
This case now comes up on the following matters:
1) Applicant's motions, filed November 28, 1988, for reconsideration or, in the alternative, for summary judgment; and
2) Applicant's motion, filed December 8, 1989, to amend its answer.
A brief prosecution history of this case is believed helpful. Applicant, in March 1988, filed a motion for summary judgment essentially on the ground that opposer lacks standing to raise its claim of false suggestion of a connection since Mr. Biro assigned away the rights to use of his name on pens in 1945. Opposer, in lieu of responding in the main to the merits of the motion, requested leave to complete relevant discovery under Fed.R.Civ. P. 56(f). The Board, on September 26, 1988, denied applicant's motion for summary judgment due to the existence of genuine issues of material fact regarding the "license agreement" that formed the basis of applicant's motion. On the record before the Board at the time of ruling on applicant's motion, the Board was unable to determine, as a matter of law, the actual legal effect of the agreement. The Board also found that opposer's standing was established by virtue of applicant's admission in its answer that Mr. Biro is credited with important inventions in the development of ball point pens. Since applicant, as the moving party, did not meet its burden of establishing initially the absence of any genuine issue of material fact, its motion was denied and opposer's request pursuant to Fed.R.Civ. P. 56(f) was deemed moot. Applicant then filed its motion for reconsideration and alternative motion for summary judgment. Opposer followed with motions for sanctions, to compel and to extend, with the result, in pertinent part, that opposer was allowed limited discovery relative to the disputed license agreement. Applicant then filed its motion to amend the answer. Opposer completed its discovery and then filed a brief on the merits in response to applicant's outstanding motions.
*2 We turn first to applicant's motion to amend its answer. More specifically, applicant seeks to clarify its denial in paragraph 1 of the answer. While opposer has objected thereto, we find that the liberality of Fed.R.Civ. P. 15(a) mandates allowance of the amended pleading. In view thereof, applicant's motion to amend is granted. [FN2] Applicant is allowed twenty days from the date hereof in which to file a signed copy of the amended answer.
There also remains the matter of applicant's motion for summary judgment, filed November 28, 1988, regarding its defense grounded on its ownership of a prior registration. Inasmuch as opposer has now filed a petition to cancel the prior registration, namely Cancellation No. 18,271, applicant's "Morehouse" defense must fail. Accordingly, applicant's motion for summary judgment grounded on this defense is denied. [FN3]
We now turn to applicant's motion for reconsideration or, in the alternative, for summary judgment. [FN4]
Applicant, in requesting reconsideration, essentially argues that the Board erred in finding genuine issues of material fact regarding opposer's standing in light of the pertinent 1945 "License Agreement." Applicant argues that the agreement, when properly interpreted, is not ambiguous and that the plain effect of the agreement is an assignment of opposer's rights in the mark BIRO for writing instruments. Coupled with opposer's failure to show any present commercial interest in exploitation of the BIRO name as a mark, applicant concludes that opposer lacks standing, as a matter of law, to bring the opposition. In view of the Board's suggestion, when summary judgment was denied, that evidence of the parties' post-agreement conduct might be helpful in resolving the assignment issue, applicant has submitted numerous documents. The documents purportedly involve ownership and marketing of goods under the mark BIROME (which, applicant points out, is a "compound or derivation" of BIRO). These documents are accompanied by the declaration of one of applicant's attorneys who represents that he has custody of files that contain the original documents, of which copies have been submitted.
Opposer has objected to applicant's request for reconsideration, contending that applicant has failed to show the absence of genuine issues of material fact. In sum, opposer views the Board's earlier ruling as correct and asserts that the material fact issues must be resolved at trial and not by way of summary judgment.
We find that applicant's request for reconsideration is not well taken. Upon further review, we stand by our ruling that the pleadings establish, as a matter of law, that opposer has standing to be heard on its Section 2(a) claim in this opposition.
Opposer, in the notice of opposition, asserted that Mr. Biro is generally recognized as the inventor of the ball point pen. Applicant, in its amended answer, admits that Mr. Biro "was the named inventor on certain patents relating to ball point pens .... and in this sense that Mr. Biro was credited with ball point pen inventions." As indicated in our decision now complained-of, the above pleadings are sufficient to establish that opposer is not just an intermeddler but rather has a personal interest in the outcome of this case beyond that of the general public; [FN5] opposer thus has standing, as a matter of law, to oppose under Section 2(a). Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed.Cir.1987).
*3 Applicant's reliance on the 1945 "license agreement" to show that opposer lacks a personal interest in this case has caused some confusion, at least as we see it, in the parties' attempts to argue the propriety of summary judgment on opposer's standing. We find that the parties appear to have confused opposer's standing with the merits of the case. That is to say, the parties have confused a standing determination (whether opposer has a right to bring the opposition) with a merits determination (whether applicant is entitled to registration of its mark). See: Books on Tape Inc. v. The Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed.Cir.1987), rev'g 229 USPQ 632 (TTAB 1986). [FN6] As the Board indicated in the earlier opinion, however, the "license agreement" has no bearing on the specific question of opposer's standing in this case. Opposer's opposition, as noted above, is grounded on false suggestion of a connection under Section 2(a). As discussed by our reviewing court in the case of University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed.Cir.1983), the portion of Section 2(a) dealing with false suggestion of a connection resulted from the desire to give statutory effect to the notions of the rights of privacy and of publicity, the elements of which are distinctly different from elements of a trademark or trade name infringement claim, which are the essence of Section 2(d). It is our view that the license agreement may, indeed, be a good defense against opposer's Section 2(a) claim, but that the agreement has no relevance to opposer's standing. [FN7]
Standing, in the context of a Section 2(a) claim, does not rise or fall on the basis of a plaintiff's proprietary rights in a term; rather, a Section 2(a) plaintiff has standing by virtue of who the plaintiff is, that is, the plaintiff's personality or "persona." We believe that the pleadings establish opposer's personal interest in this case because applicant is attempting to register the surname of Ladislao Jose Biro who is credited with inventions regarding the ball point pen.
A final matter on this issue requires discussion. We would be disingenuous to ignore applicant's argument based on holdings in the case of Uziel Gal, et al. v. Israel Military Industries of the Ministry of Defense of the State of Israel, 230 USPQ 669 (TTAB 1986), aff'd unpublished opinion, No. 87-1076 (Fed.Cir. June 24, 1987). Applicant's discussion compels us to further review our ruling on opposer's standing in this case in light of Uziel Gal. Applicant relies on that case for the proposition that lack of proprietary rights results in lack of standing. Uziel Gal reads, in pertinent part, as follows:
In determining then, that collateral estoppel bars Gal from asserting proprietary rights in the term "UZI" in this action, we must conclude that Gal does not have standing to oppose registration by applicant of the mark sought to be registered on any statutory ground where proprietary rights in the term are necessary to exist. 230 USPQ at 674.
*4 In view of the District Court's holding in a civil action that Gal relinquished all rights associated with the UZI name, the Board found that Gal's lack of proprietary rights took away his standing to proceed on the Section 2(a) claim of falsely suggesting a connection with his name. On appeal, the Federal Circuit, in an unpublished opinion, found no legal error in the Board's conclusion and affirmed the decision. Applicant would have us reach the same result in the case now before us and urges us to dismiss the opposition for lack of standing.
At the outset, we note that the Court's opinion is unpublished and, accordingly, is not citable as precedent. We are thus left to look at subsequent decisions of the Federal Circuit, prepared for publication, wherein the Court considered the question of a plaintiff's standing.
We confess that the Board at this time is not certain as to the necessity of a plaintiff's having to state and prove proprietary rights in his name in making a claim of false suggestion of a connection under Section 2(a). Upon careful review, we find the Board's language in Uziel Gal to be inartfully drafted, confusing standing with merits (see discussion above). We readily concede that the Federal Circuit, on appeal, affirmed the Board on the very point of standing. Notwithstanding the above, subsequent statements by the Federal Circuit in published opinions lead us to believe that proprietary rights in a name are not necessary in the context of false suggestion of a connection under Section 2(a), either as a matter of pleading or of proof.
Our reading of recent published case law of the Federal Circuit leads us to the inescapable conclusion that the requirements for standing have been liberalized. The standing question is an initial and basic inquiry made by the Board in every inter partes case; that is to say, standing is a threshold inquiry. This inquiry is directed solely to establishing the personal interest of the plaintiff. The continuing pronouncements of the Federal Circuit leave us with the understanding that there is a low threshold for a plaintiff to go from being a mere intermeddler to one with an interest in the proceeding. The Court has stated that an opposer need only show "a personal interest in the outcome of the case beyond that of the general public." Jewelers Vigilance Committee Inc., supra at 2023, citing Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 188 (CCPA 1982). See also: Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 853 F.2d 888, 7 USPQ2d 1628 (Fed.Cir.1988), rev'g 5 USPQ2d 1622 (TTAB 1987). Once this threshold has been crossed, the opposer may rely on any ground that negates applicant's right to the registration sought. In the instant case before us, we are unable to conclude anything but that opposer, at the very least, has passed the threshold question, it being established that opposer is not a mere intermeddler in view of Mr. Biro's surname and Mr. Biro's role in inventing the ball point pen.
*5 In concluding we note that, even if we were to agree with applicant's view that opposer's standing is tied to proprietary rights which have been relinquished by the "license agreement," genuine issues of material fact nevertheless exist with respect to the effect of the agreement. Therefore, the matter would not be one amenable to summary judgment and a trial would still be necessary in this case.
Notwithstanding our ruling on opposer's standing to proceed in this case, opposer may, of course, be precluded from prevailing herein. Even if opposer is able to prove the elements of its Section 2(a) claim, opposer may still lose on its right of privacy/publicity claim if applicant can prove that Mr. Biro alienated his rights in the name BIRO in connection with ball point pens. That is to say, if applicant is able to prove that Mr. Biro assigned his rights in BIRO for writing instruments, then this proof would constitute a good defense. This is so because opposer cannot prevail on a right of privacy/publicity claim if those rights were relinquished by contract. In sum, the agreement has relevance in the context of an affirmative defense against opposer's Section 2(a) ground, but no relevance as to standing.
Applicant alternatively moves for summary judgment, contending that, even if the disputed agreement is construed as a license agreement (which applicant disputes), then opposer abandoned its proprietary rights, if any, due to uncontrolled licensing. Applicant points to the lack of any quality control provision in the agreement and asserts that the agreement itself evidences Mr. Biro's lack of power to control use of the mark by licensees.
Opposer, in response to the alternative motion for summary judgment, asserts that licensee estoppel precludes applicant from challenging the validity of the agreement.
Assuming arguendo that the agreement at issue is a license agreement, we agree with opposer that applicant is estopped from challenging the validity of the agreement on the basis of lack of quality control. [FN8] Inasmuch as applicant is challenging the agreement based on facts which occurred during the time frame of the "license", we find that applicant is estopped under the doctrine of licensee estoppel. Garri Publication Associates Inc. v. Dabora Inc., 10 USPQ2d 1694, 1697 (TTAB 1988).
In summary, applicant's motions for reconsideration, for alternative summary judgment and for summary judgment under Section 13 are denied; applicant's motion to amend its answer is granted, and applicant is allowed until twenty days from the date hereof in which to file a signed copy of the amended answer.
Trial dates, including the period for discovery, are rescheduled as indicated in the accompanying trial order.
J. D. Sams
J. E. Rice
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 489,557, filed July 12, 1984, alleging dates of first use of September 15, 1982. Applicant claims ownership of Registration No. 726,520 of the mark "BIRO" in stylized form for ball point pens and refills therefor. Applicant also stated in the application that "BIRO" is not a surname or a foreign term and has no significance in the trade apart from the goods.
FN2. In the Board's opinion on summary judgment dated September 26, 1988, we found applicant's admission that Mr. Biro is credited with inventions which had importance in the development of ball point pens to be sufficient to establish that opposer is not just an intermeddler. In view of this admission, we advised that no further proof on opposer's standing was required at trial. Although the amended pleading clarifies this admission, we find that the amended answer has no effect on opposer's standing to be heard on its Section 2(a) claim. The amended answer still admits that "Mr. Biro was credited with ball point pen inventions." The denial that "Mr. Biro held a recognized position in the U.S. pen industry or was (or is) known to the consuming public or trade as an inventor of the ball point pen" does not take away from the admission which establishes opposer's personal interest in the outcome of this proceeding which exceeds that of the general public.
FN3. We note that the Board, on June 4, 1990, suspended proceedings in Cancellation No. 18,271, pursuant to the parties' stipulation, pending the outcome of applicant's motions presently before us. The cancellation and this proceeding appear to involve common issues of law and fact. Accordingly, the parties are allowed twenty days from the mailing date of this order to show cause why the proceedings should not be consolidated, failing which proceedings will be consolidated pursuant to Fed.R.Civ. P. 42(a).
FN4. The delay in reaching these motions was occasioned, at least in part, by opposer's discovery under Fed.R.Civ. P. 56(f) and numerous agreed extensions.
FN5. Contrary to applicant's contentions, the Board did not rule that opposer established its standing by merely pleading facts which, if proved, would establish standing. Rather, the Board found that opposer's pleading, when coupled with applicant's admission in its own pleading, establishes opposer's standing.
FN6. We note in passing that the Federal Circuit has accused the Board in the past of being similarly confused. See: Books on Tape Inc., supra, and Jewelers Vigilance Comm., Inc., supra.
FN7. We note that applicant reiterates (brief, p. 6, n. 4) that its motion is directed solely to standing, and not to any affirmative defense.
FN8. We also note, in passing, that this defense is not pleaded even hypothetically in the answer or amended answer. See: Intermed Communications, Inc. v. Chaney, 197 USPQ 501, 503 n. 2 (TTAB 1977) [a party may not ordinarily move for summary judgment on a non-pleaded issue].