Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 MARSHALL FIELD & COMPANY
v.
MRS. FIELDS COOKIES
Cancellation No. 16,424; 16,573
March 17, 1989
Before Rice, Krugman and Quinn
Members
By the Board:
J. E. Rice, G. D. Krugman and T. J. Quinn
Members
Petitions to cancel were filed by Marshall Field and Company on June 3, 1987 and August 3, 1987 to cancel four registrations owned by Mrs. Field's Cookies, that is, Registration Nos. 1,197,025; 1,206,373; 1,206,555; and 1,207,441. [FN1] Cancellation was sought on two grounds, that is, that registrant had abandoned the mark shown in each of the above registrations and that registrant's marks so closely resemble petitioner's previously used and registered marks as to be likely to cause confusion, to cause mistake, or to deceive.
Registration No. 1,197,025 was cancelled by order of the Commissioner for failure to file a Section 8 affidavit on August 27, 1988. The remainder of registrant's registrations, that is, Registration Nos. 1,207,441; 1,206,373; and 1,206,555 were also cancelled for failure to file Section 8 affidavits on December 15, 1988.
Accordingly, the Board, on January 13, 1988, issued an order pursuant to Trademark Rule 2.134(b) allowing registrant until February 2, 1989 to show cause who such cancellation should not be deemed to be the equivalent of a cancellation by request of respondent without the consent of petitioner and should not result in entry of judgment against respondent.
This case now comes up on registrant's response, filed by certificate of mailing dated February 6, 1989, to the Board's order to show cause. In its response, registrant states that in November 19, 1981, registrant gradually began to phase out use of the 'Mrs. Field's Chocolate Chippery' marks, which are the subject of the cancelled registrations, in favor of the 'Mrs. Fields' dot and logo design; that by the time the 'Mrs. Field's Chocolate Chippery' registrations were five years old, that is, by June 1, 1987 and August 1, 1987, respondent had discontinued completely the use of such marks; that for this reason alone, registrant did not file the requisite affidavits of use under Sections 8 and 15 of the Lanham Act and that therefore the petitions for cancellation should be dismissed as moot. In support of its response, respondent has submitted relevant portions of a discovery deposition of Mrs. Debra Fields, who is president and chief executive officer of respondent, in which Mrs. Fields testifies to the fact that respondent has no present intention to resume use of such marks in commerce.
Petitioner has filed a brief in opposition to respondent's response to the order to show cause. Petitioner, in its brief, points out the fact that respondent, in its answers to the petitions for cancellation, on March 28, 1988, denied that the 'salient portions' of the marks shown in the registrations for which cancellation is sought had been abandoned and that registrant had discontinued use of such 'salient portions' in commerce. Petitioner also alleges that registrant did not apprise petitioner or the Board that it would not be filing the requisite Section 8 affidavits of use until substantial discovery was completed and that since petitioner was required to spend substantial time and money in seeking to prove the issue, inter alia, of abandonment, judgment, at least as to the ground of abandonment, should be entered against respondent.
*2 The Board, in a notice of final rulemaking which became effective on June 22, 1983, announced its policy regarding the operation of Trademark Rule 2.134(b). [FN2]
In this case, while registrant has not indicated that there was a two-year period of nonuse which commenced well before the commencement of this proceeding, registrant has stated that use of the registered marks has in fact been discontinued and that registrant has no present intention to resume use of such marks. Under the circumstances, judgment is entered against respondent on the ground of abandonment.
However, with respect to the ground of likelihood of confusion, respondent has demonstrated to our satisfaction that respondent's failure to file a Section 8 affidavit was the result of a deliberate business decision made well prior to the commencement of this proceeding and not for purposes of avoiding this proceeding. Additionally, with respect to Registration No. 1,197,025, judgment cannot be entered on the ground of likelihood of confusion as a separate ground for cancellation since the petition for cancellation of such registration was not filed until after the expiration of the five year period set forth in Section 14(a) of the Lanham Act. In this regard, the Board notes that Registration No. 1,197,025 was issued on June 1, 1982. The petition for cancellation of such registration, that is Cancellation No. 16,424, was received by the Patent and Trademark Office on June 3, 1987. While the petition for cancellation of that registration was accompanied by a certificate of mailing under Trademark Rule 1.8, that rule provides that a certificate of mailing is ineffective with respect to the filing of a petition for cancellation under section 14(a) of the Lanham Act. Accordingly, Cancellation No. 16,424 is granted with respect to the ground of abandonment and, since the allegation of likelihood of confusion cannot be entertained except insofar as it pertains to petitioner's standing to assert any of the grounds set forth in 15 U.S.C. 1064(c), that proceeding is considered concluded. With respect to Registration Nos. 1,206,373; 1,206,555; and 1,207,441, which are the subjects of Cancellation No. 16,573, the order to show cause is considered discharged with respect to the ground of likelihood of confusion only.
In these situations it is the Board's usual practice to allow petitioner an election as to whether petitioner desires to dismiss its remaining petition for cancellation without prejudice with respect to the ground of likelihood of confusion or wishes to go forward with such proceeding to obtain a determination of the remaining issues. Accordingly, petitioner is allowed thirty days from the mailing date of this order to advise the Board how it wishes to proceed with respect to this matter, failing which the petition will be dismissed without prejudice.
In conclusion, judgment is hereby entered against respondent in Cancellation No. 16,424 with respect to the ground of abandonment, the petition to cancel is granted, and Cancellation No. 16,424 will be terminated in due course. With respect to Cancellation No. 16,573, judgment is hereby entered against respondent on the ground of abandonment only and petitioner is allowed thirty days from the mailing date of this order to notify the Board whether it wishes to go forward with the issues remaining in that proceeding.
*3 Pending petitioner's response to the above, proceedings herein are otherwise suspended.
J. E. Rice
G. D. Krugman
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Registration No. 1,197,025, issued June 1, 1982; Registration No. 1,206,373, issued August 24, 1982; Registration No. 1,206,555, issued August 24, 1982; and Registration No. 1,207,441, issued September 7, 1982.
FN2. 48 Fed. Reg. 23133 (1983). The full text of the comments and response is set forth below:
Comment; With respect to proposed section 2.134(b) (which provides that if the respondent in a cancellation proceeding permits his involved registration to be cancelled under section 8 of the Act of 1946 or fails to renew the registration under section 9 of the Act of 1946, such cancellation or failure to renew shall be deemed to be the equivalent of a cancellation by request of respondent without the consent of the adverse party and shall result in entry of judgment against respondent), two organizations commented that the judgment entered against a respondent under the proposed paragraph would have a res judicata effect; that the entry of such a judgment would be unduly harsh where the cancellation or expiration was the result of an inadvertence or mistake; and that, at a minimum, a respondent should be allowed to 'show cause' why such a judgment should not be entered. Similarly, one individual commented that in such situations, a respondent whose use of its registered mark has in fact been discontinued should be put in a position whereby it can terminate the dispute with prejudice only as to ground of abandonment.
Response: The paragraph has been modified to provide an opportunity for the respondent in such situation to 'show cause' why judgment should not be entered against it. If respondent submits a showing that the cancellation or expiration was the result of an inadvertence or mistake, judgment will not be entered against it. If respondent submits a showing that the cancellation or expiration was occasioned by the fact that its registered mark had been abandoned and that such abandonment was not made for purposes of avoiding the proceeding but rather was the result, for example, of a two year period of nonuse which commenced well before respondent learned of the existence of the proceeding, judgment will be entered against it only and specifically on the ground of abandonment.