Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 ROUSH BAKERY PRODUCTS CO., INC.
v.
F. R. LEPAGE BAKERY, INC.
Cancellation No. 15,106
August 26, 1987
Bernard, Rothwell & Brown for Roush Bakery Products Co., Inc.
Pennie & Edmonds for F.R. Lepage Bakery, Inc.
By the Board:
J.D. Sams, J.E. Rice and G.D. Krugman
Members
Roush Bakery Products Co., Inc. has filed a petition to cancel the registration of the collective mark 'COUNTRY KITCHEN' for bread. [FN1]
As grounds for cancellation, petitioner alleges that it is the owner of a number of registrations comprising the term 'Country,' including, Registration No. 1,264,403 for the mark 'COUNTRY HEARTH' for bread, rolls, buns and bread mix issued January 17, 1984; Registration No. 1,228,966 for the mark 'COUNTRY HEARTH' and design for crackers issued March 1, 1983; Registration No. 1,114,200 for the mark 'COUNTRY HEARTH' for bakery products, excluding cookies, issued February 27, 1979; Registration No. 1,138,874 for the mark 'COUNTRY FARMS' for bakery products, namely bread issued August 19, 1980; Registration No. 1,251,273 for the mark 'COUNTRY RECIPE' for bread and bakery products issued September 13, 1983; and Registration No. 1,281,792 for the mark 'COUNTRY MILL FARMS' for bread and bakery goods issued June 12, 1984; that petitioner is currently using these marks (sometimes though its licenses) on the aforesaid goods; that respondent has demonstrated a propensity to assert its 'COUNTRY KITCHEN' registration against petitioner and its licensees as evidenced by two civil actions, one in the Maine Superior Court and the other in the United States District Court for New Hampshire, the basis of which were alleged infringement of the 'COUNTY KITCHEN' mark by petitioner's licensees' use of the marks 'COUNTRY HEARTH and/or COUNTRY FARMS; that the 'COUNTRY KITCHEN' registration was assigned from American Bakers Cooperative, Inc. (hereinafter ABC) to respondent on February 19, 1985; that respondent is a private corporation engaged in the bakery business and is not a cooperative or other similar organization with members who meet standards for admission; that prior to February 19, 1985, respondent used the 'COUNTRY KITCHEN' mark on bread as a licensee and member of ABC, but that respondent's use of said mark was not subject to the control of ABC such that this constituted an abandonment of said mark; that respondent is currently using the 'COUNTRY KITCHEN' mark on bread which it produces; that use of a collective mark by the owner of the mark is improper; that respondent's use of said mark falsely represents that respondent is a cooperative or other type of organization capable of owning a collective mark registration; that when respondent uses said mark, the mark is not being used as a collective mark but rather as a trademark; that inasmuch as the mark is no longer being used as a collective mark, this evidences an intent to abandon the registration and indicates that the registration has been abandoned; and that respondent has further failed to control the use of said mark such that this constitutes an abandonment.
*2 Respondent, in its answer to the petition for cancellation, admits that the involved registration issued to and was renewed by ABC; states that it is without sufficient knowledge or information to admit or deny petitioner's ownership of the pleaded registrations, admits that it acquired the 'COUNTRY KITCHEN' registration from ABC, including the good will in connection therewith; admits that it is a private corporation engaged in the bakery business, but denies that it is not a cooperative or similar organization with members who must meet standards for admission; admits that prior to the assignment of the registration, it used the mark on bread as a licensee and member of ABC; denies that it has demonstrated a propensity to assert its registration against petitioner and petitioner's licensees; denies that the civil action in the Maine Superior Court involved the 'COUNTRY KITCHEN' registration; admits that one of the claims in the civil action in New Hampshire was based on infringement of said registration; admits that since 1951 it has used the 'COUNTRY KITCHEN' mark on bread and related bakery products and that since February 19, 1985, it has held title to the registration; and denies that it is using the mark on bread as the owner of the collective mark registration.
This case now comes up on petitioner's motion for summary judgment and respondent's cross motion therefor.
Petitioner, in support of its motion for summary judgment, asserts, inter alia, that respondent is using the 'COUNTRY KITCHEN' mark as a trademark, rather than as a collective mark, and that this has caused the mark to lose its significance as a collective mark; and that the assignment of the involved registration was void ab initio since respondent is not a cooperative or similar entity, but rather the producer of the goods identified with the mark. Further, petitioner asserts that collective marks and certification marks are almost indistinguishable, particularly with respect to the prohibition of use by the owner of the mark, and that inasmuch as Section 14(e) provides for cancellation of a registration where the certification mark is being used by the owner of the registration, the same should be true of a collective mark, such that the involved registration should be cancelled pursuant to Section 14(e).
Respondent, on the other hand, maintains that it began using the mark 'COUNTRY KITCHEN' in connection with the manufacture, sale, promotion and advertisement of bread and related bakery products as early as 1951; that it obtained a registration for said mark in the state of Maine in 1952; that in the mid-1950's it entered into a series of agreements with ABC under which it 'relinquished to ABC certain of its common-law rights' in said mark; but that it nonetheless retained an exclusive license to use the 'COUNTRY KITCHEN' mark in certain areas within the state of Maine where it had previously used said mark; that in 1975 and 1977 it expanded its bakery business into additional states, and ABC granted it an exclusive license to use the 'COUNTRY KITCHEN' mark in said states; that ABC also licensed other organizations in distinct sections of the country to use the 'COUNTRY KITCHEN' mark on their bakery products; that when it acquired the involved registration in 1985, it concurrently granted ABC a license to use the 'COUNTRY KITCHEN' trademark on bakery products only through the existing members of the cooperative and only in the territories in which these existing members were using the mark at the time of the assignment; that the purpose of this license was to continue the status quo which existed prior to the assignment, i.e., to maintain consistent quality control, and to insure that no purchasers of 'COUNTRY KITCHEN' products would be deceived or mistaken regarding the actual source or origin of such products; that Section 14(e) of the Trademark Act is specifically limited to certification marks and thus cannot serve as the basis for cancellation of respondent's collective mark registration; that the involved mark has not been abandoned since respondent and other organizations associated with ABC have continued to use the 'COUNTRY KITCHEN' mark pursuant to a stringent quality control agreement; that respondent's current use of the 'COUNTRY KITCHEN' mark is based, in part, on its pre-existing common-law rights such that the mark has not lost its significance as an indication of origin; that the only prohibition under Section 4 of the Lanham Act is that the owner of a collective mark may not use the mark 'falsely,' i.e. to confuse or deceive the purchasing public; that respondent is not using the mark in such a manner; and even assuming that the assignment of the involved registration is void, this does not constitute an abandonment of the mark. Respondent maintains that in view of petitioner's failure to present any evidence in support of the allegation of abandonment, summary judgment in respondent's favor is appropriate.
*3 However, in opposition to the cross-motion for summary judgment, petitioner argues that notwithstanding any purported common law trademark rights which respondent maintains it has, the significance and goodwill attained in the 'COUNTRY KITCHEN' mark has been as a collective mark owned by ABC, and that respondent's course of conduct, specifically, its use of 'COUNTRY KITCHEN' as a trademark, has caused the mark to lose its significance as a indication of origin as a collective mark such that the collective mark has therefore been abandoned.
Respondent, in its reply brief, maintains that at least two issues of material fact exist which preclude the entry of summary judgment in petitioner's favor, (1) whether the 'COUNTRY KITCHEN' mark has lost its significance as an indication of origin and (2) whether the public has been deceived by respondent's continued use of said mark and since petitioner has failed to present adequate evidence to support either contention, petitioner's motion for summary judgment should be denied. Again, respondent argues that it is entitled to summary judgment because petitioner has failed to support its allegation of abandonment.
A 'collective mark' is defined in Section 45 of the Lanham Act as:
A trademark or service mark used by the members of a cooperative, an association or other collective group or organization, and includes marks used to indicate membership in a union, an association or other organization.
There are two recognized types of collective marks--a collective trade or service mark and a collective membership mark. The former is a mark adopted by a collective group for use only by its members, who in turn use the mark to identify their goods or services and distinguish them from non-members. As the Court of Appeals for the Second Circuit stated:
A collective mark is owned and may be registered, by the group or association of which it is a symbol, but not by a user thereof (emphasis added), and it indicates to the public that members of the association produced the merchandise bearing the mark. The association which owns the mark may not use it on merchandise, if it produces any, as may its members. [FN2]
It has also been noted that if the owner of a collective trade or service mark itself uses the mark to identify its own similar goods or services, the mark is not a collective mark, but a trademark or service mark. [FN3]
In the instant case, it is clear that respondent is not a cooperative or similar organization, but rather a company which uses the 'COUNTRY KITCHEN' mark to identify its own goods.
While it is true that Section 14(e) of the Lanham Act is not specifically applicable to collective marks, the anti-use by owner rule pertaining to certification marks has been attributed to collective marks. See McCarthy, supra and cases cited therein.
In view thereof, the Board finds that as a result of respondent's use of 'COUNTRY KITCHEN' as a trademark, said mark no longer serves as an indication to the public that only the members of a collective group or organization produce the goods sold thereunder. We agree with petitioner that this constitutes an abandonment of the collective mark.
*4 In view of the foregoing, petitioner's motion for summary judgment is granted.
The petition for cancellation is similarly granted and Registration No. 629,650 will be cancelled in due course.
J. D. Sams
J. E. Rice
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1. Registration No. 629,650 issued June 26, 1956 to American Bakers Cooperative, Inc., subsequently asigned to F. R. Lepage Bakery, Inc.; renewed.
FN2. Huber Baking Co. V. Stroehmann Bros. Co. (1958 CA2 NY, 252 F.2d 945, 116 USPQ 348, cert den 358 US 829, 119 USPQ 502.
FN3. See J. Thomas McCarthy, Trademarks and Unfair Competition, 2nd edition, (1984); § 19:34.