Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 MISSOURI SILVER PAGES, DIRECTORY PUBLISHING, CORPORATION, INC. AND,
SILVER PAGES ADVERTISING AND PUBLISHING CO., INC.
v.
SOUTHWESTERN BELL MEDIA, INC.
Opposition No. 75,808
January 11, 1988
By the Board:
J.D. Sams, J.E. Rice and E.J. Seeherman
Members
Missouri Silver Pages Directory Publishing Corporation, Inc. and Silver Pages Advertising and Publishing Co., Inc. have opposed the application of Southwest Bell Media, Inc. to register "SILVER PAGES" for the following services:
Class 35--for compiling a telephone directory; promoting the goods and services of others through placing advertisements and listings in directories
Class 41--for publication of telephone directories [FN1]
As grounds for opposition, opposers have alleged that applicant seeks to register "SILVER PAGES" for a directory which provides senior citizens with a list of stores where they can obtain discounts for products they purchase; [FN2] that "opposer" [FN3] has used the term "SILVER PAGES" prior to June, 1984, June 1, 1984 being the date of first use asserted by applicant; that "opposer" met with officials of the Missouri Department of Social Services Division of Aging as early as October, 1983 with regard to discussion of a statewide senior citizen discount program and publication of a directory; that at the end of 1983 opposer ordered a printout of the names and addresses of business entities to be utilized in a senior citizen discount directory, reserved the name "Missouri Silver Pages Directory Publishing Company" [FN4] in the state of Missouri and began soliciting for sales personnel and contracts for the directory; that on January 30, 1984 "opposer" [apparently a reference to Missouri Silver Pages Directory Publishing Corporation, Inc.] was incorporated in the state of Missouri; [FN5] that in late December, 1983 and early January, 1984 "opposer" began his (sic) efforts in the state of Florida to publish a senior citizen discount directory to be called the "SILVER PAGES"; that opposer began recruiting personnel, arranged an escrow agreement with a bank, and applied to the federal government for a grant; that [the other] opposer was incorporated in the state of Florida on June 1, 1984 under the name "Silver Pages Advertising and Publishing Co., Inc."; that "opposer" has attempted to develop a public recognition and goodwill for the name "SILVER PAGES" in both Missouri and Florida; that "opposer" is the prior user of the term "SILVER PAGES" in Missouri and in Florida and the similarity of applicant's mark "SILVER PAGES" is likely to result in confusion, mistake and deception and will damage "opposer's" goodwill represented by prior use of the name "SILVER PAGES"; and that "opposer" has promoted the term "SILVER PAGES" and the senior citizen directory identified with said name.
This case now comes up on applicant's motion to dismiss which, because it contains matters outside the pleading, has, in accordance with the Board's June 29, 1987 order, been treated as a motion for summary judgment.
*2 Applicant asserts that opposers cannot be damaged by the registration it now seeks because applicant already owns a registration for the same mark for similar goods, namely, a telephone and discount directory addressed to senior citizens; [FN6] that opposers have not alleged any facts demonstrating use of "SILVER PAGES" in a trademark sense in connection with a senior citizen directory, nor any facts establishing that goods bearing the term "SILVER PAGES" have been sold, distributed, manufactured, advertised or promoted to the relevant consumers of the goods; and that opposer Silver Pages Advertising and Publishing Co., Inc.'s notice of opposition was untimely because it had not filed a request for an extension of time to oppose and therefore should be dismissed as a party to the opposition. [FN7]
In response to the motion for summary judgment, John T. Carlon, Jr., the president and sole shareholder of both opposers, filed an affidavit in which he detailed his efforts in connection with the publication of a senior citizens directory. [FN8] These efforts dealt generally with the start-up activities for the project of publishing the directory, and included meetings with government officials to secure information about a Missouri state project, developing a business plan, incorporating the two opposer companies, preparation of contractual forms, hiring of sales representatives, and soliciting listing subscribers. The affidavit does not reflect that a directory was ever published, although Mr. Carlon does refer to having contracted for a printer. Mr. Carlon concludes by stating that "his original and prior usage of the term Silver Pages in the coprorate (sic) names of both his Missouri and Florida corporations, as well as in all sales and contractual documents prepared for the use of (and, in fact, used by) both of Affiant's corporations resulted in a trade identity with at least a substantial segment of the public prior to any such usage by" applicant. [FN9]
The granting of a motion for summary judgment is appropriate where there exists no genuine dispute as to any material fact and where the moving party is entitled to judgment as a matter of law. Bongrain International v. Moquet Ltd., 230 USPQ 626 (TTAB 1986), aff'd. unpub. opin., App. No. 86-1487 (Fed.Cir. Jan. 16, 1987); Buffett v. Chi-Chi's, Inc., 226 USPQ 428 (TTAB 1985).
The first issue which we must consider is applicant's claim that opposers will not be damaged by the registration of "SILVER PAGES" for the identified services because opposers are basing their action on their rights in "SILVER PAGES" for a senior citizen directory and applicant already owns a registration for that mark for the identical goods, namely a telephone and discount directory addressed to senior citizens. [FN10] It has been held that an opposer cannot be damaged within the meaning of Section 13 of the Statute by registration of a mark for particular goods or services if applicant owns a subsisting registration for the same or a substantially identical mark for the same or substantially identical goods or services. Morehouse Manufacturing Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715 (CCPA 1969); Carl Karcher Enterprises, Inc. v. Gold Star Chili, Inc., 222 USPQ 727 (TTAB 1983). In this case, applicant is seeking to register the identical mark which it had previously registered but the services, while related to the goods covered by its previous registration, are not the same or substantially identical thereto. Nonetheless, we are of the view that the so-called Morehouse defense would still apply if opposers were claiming rights in "SILVER PAGES" only in respect of a senior citizen directory because opposers could not be further damaged by the registration of the same mark for the services, which are one step removed from the directory. That is, no matter how intrinsically the services are involved with the directory itself, a fortiori they cannot be closer in nature to the directory than the directory is to itself and, therefore, opposer could not suffer additional damage by the registration of the mark for the services. Cf. Place for Vision, Inc. v. Pearle Vision Center, Inc., 218 USPQ 1022 (TTAB 1983).
*3 While summary judgment would be appropriate if opposers were only claiming rights in "SILVER PAGES" for a directory, the material submitted by opposers indicates that opposers may also claim use of the term "SILVER PAGES" for at least the services identified in Class 35 of the applicant's application. [FN11] For example, in the notice of opposition, paragraph 4, "opposer" indicates a solicitation of contracts for the directory, and in Mr. Carlon's affidavit he refers to active solicitation of listing subscribers for the directory and he also refers to the "customer/listee".
Accordingly, in view of the fact that applicant has not filed an answer herein, opposers are given leave, should they so desire, to amend their pleading in order to make clear their interest in the mark failing which the motion for summary judgment will be granted. [FN12]
Assuming, arguendo, that opposers amend their notice of opposition to claim rights in the mark "SILVER PAGES" for services of the type listed in applicant's application, we turn to applicant's allegation that opposers have not used the term "SILVER PAGES" as a mark or tradename, or in some manner which has resulted in establishing trade identity. While there is nothing in the record to indicate that opposers ever published a senior citizens directory, John Carlon's affidavit states that in June, 1984 listing subscribers for the projected Missouri directory were solicited.
Although the record does not contain any more information about the solicitation other than the mere assertion of it in the affidavit, it is our opinion that this is sufficient to raise a genuine question of material fact as to the sufficiency of opposers' use of the mark. It has been held that the prior adoption and use of a term, not amounting to a technical trademark use on the goods in commerce, may be sufficient to defeat a right of registration asserted by another who has made subsequent trademark use [FN13] of the same or similar term on the same or similar goods in commerce. Such use, however, must be an open and public use directed to the segment of industry or purchasing public for whom the party's goods are intended and be in a manner calculated to attract the attention of the viewer and thereby create an association of the term with such goods. See Hamilton Burr Publishing Co. v. E.W. Communications, Inc., 216 USPQ 802 (TTAB 1982) and cases cited therein. If opposers amend their notice of opposition to claim use of "SILVER PAGES" in connection with the promotion of the goods or services of others, the solicitation of customer/listees which opposers have alleged in Mr. Carlon's affidavit may be sufficient to accord opposers proprietary rights in the term.
Applicant has also asserted that Silver Pages Advertising and Publishing Co., Inc. should be dismissed as an opposer because it had not been granted an extension of time to file the opposition. It is true that the extension of time in this case was requested by John Carlon and Missouri Silver Pages Directory Publishing Corporation and not by Silver Pages Advertising and Publishing Co., Inc., although the latter party was listed with Missouri Silver Pages Directory Publishing Corporation, Inc. as an opposer when the notice of opposition was filed. However, there is a question of fact as to whether Silver Pages Advertising and Publishing Co., Inc. was or is in privity with at least one of the two parties who originally requested the extension of time, and therefore summary judgment is not appropriate. See, in this regard, Trademark Rule 2.102(b). Moreover, given the information in both the notice of opposition and in Mr. Carlon's affidavit, if anything Silver Pages Advertising and Publishing Co., Inc. is not only acting in privity with Mr. Carlon, but Mr. Carlon himself appears to be the real party in interest, and should be substituted as the sole (or as one) opposer.
*4 In summary, opposers are given thirty days in which to file an amended notice of opposition in order to allege if accurate, use of the mark "SILVER PAGES" in connection with any services they render under the mark, failing which summary judgment will be granted to applicant, provided that applicant, within thirty days of opposers' failure to file an amendment to the notice of opposition, submits proof of the current status and title of its registration. See footnote 10. If opposers amend the notice of opposition as indicated, applicant's motion for summary judgment on the grounds that opposers have not used the mark in such manner as to obtain proprietary rights will be denied, although applicant may renew its motion for summary judgment based on its superior rights in the mark if applicant can provide evidence of prior and superior rights.
Proceedings herein remain otherwise suspended pending response to the above.
J. D. Sams
J. E. Rice
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 591,674, filed April 4, 1986, and asserting a date of first use and first use in commerce on June 1, 1984.
FN2. In actuality, applicant has applied to register its mark not for a directory, but for the services previously indicated.
FN3. While the notice of opposition has been filed in the name of two opposers, the numbered allegations use the term "opposer" in the singular.
FN4. This opposer has been variously styled "Missouri Silver Pages Directory Publishing Corporation" and "Missouri Silver Pages Directory Publishing Corporation, Inc." in the pleadings, while the Missouri certificate of incorporation papers indicate the name to be "Missouri Silver Pages Directory Publishing Co." In the event this case ultimately goes to trial opposers should establish the proper name of this party.
FN5. Obviously, the acts alleged to have been taken prior to January 30, 1984 could not have been taken by either named opposer, but must have been by a predecessor of the opposers.
FN6. Registration No. 1,349,265, issued July 16, 1985 from an application filed July 16, 1984. The copy of the registration submitted with applicant's motion does not indicate status and title.
FN7. Applicant's application was published for opposition on October 28, 1986. John Carlon and Missouri Silver Pages Directory Publishing Corporation timely filed a request for extension of time to oppose the application, and an extension to January 27, 1987 was granted by the Board. On January 28, 1987, with a certificate of mailing dated January 26, 1987, an opposition was filed in the names of Missouri Silver Pages Directory Publishing Corporation and Silver Pages Advertising and Publishing Co., Inc.
FN8. Applicant has moved to strike certain paragraphs of this affidavit on the grounds that they refer to immaterial, impertinent matter and that one paragraph was not based on personal knowledge of the affiant, but was made on information and belief. Opposers have not filed any paper in response, and we therefore treat the motion as conceded. In any case, the paragraphs at issue have no bearing on our decision on the summary judgment motion.
FN9. Viewing the information in Mr. Carlon's affidavit, as well as that in the notice of opposition, it would appear that John T. Carlon, Jr. is the actual party in interest, and should be substituted as the opposer, or as one opposer.
Along with the affidavit of John Carlon, opposers have submitted various documents which they indicate were referred to in Mr. Carlon's affidavit. While these documents are tangential to the information given in the affidavit, they were not specifically identified in the affidavit and cannot be considered as exhibits to the affidavit.
FN10. In order for applicant to rely on this registration, the current status and title thereof must be proved, as, for example, by the filing of a copy of the registration prepared and issued by the Patent and Trademark Office showing the current status and title of the registration.
FN11. In view of applicant's asserted ownership of a registration for "SILVER PAGES" for telephone and discount directory addressed to senior citizens, a question is raised as to whether applicant performs the service of "publication of telephone directories" in Class 41 under the same mark, since to be a service the publication must be for others. Accordingly, if applicant ultimately prevails in this case we recommend, pursuant to Trademark Rule 2.131, that the Examining Attorney reexamine the application with respect to this issue.
FN12. The cases cited by applicant for the proposition that an opposer is bound by the alleged use of the mark indicated in the notice of opposition are distinguishable in that they involved situations in which the entire opposition proceeding had been completed. Where proceedings are in the early stages, and particularly where, as here, no answer has been filed, the Board has adopted a liberal policy in allowing the amendment of pleadings.
FN13. It is noted that, because applicant originally filed this motion as a motion to dismiss, it did not submit any evidence of its own use of the mark "SILVER PAGES". In the absence of such evidence, the use on which applicant can rely is the filing date of its application, namely, April 4, 1986. ECI Division of E-Systems v. Environmental Communications, 207 USPQ 443 (TTAB 1980). This date is subsequent to the June, 1984 date asserted in the Carlon affidavit for the solicitation of listing subscribers.