Augustine’s Spiritual Goods, Inc.v.Augustine’s Eternal Gifts, LLC

Trademark Trial and Appeal Board

Aug 26, 2010

No. 92049453 (T.T.A.B. Aug. 26, 2010)

Mailed:
August 26, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Augustine’s Spiritual Goods, Inc.
v.
Augustine’s Eternal Gifts, LLC
_____

Cancellation No. 92049453
_____

Glenn W. Smith of Bensinger, Cotant & Menkes, P.C. for
Augustine’s Spiritual Goods, Inc.

William T. McGrath of Davis McGrath LLC for Augustine’s
Eternal Gifts, LLC.
_____

Before Grendel, Zervas and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Augustine’s Spiritual Goods, Inc. (“petitioner”) has
filed a petition to cancel Registration No. 3438761 for the
mark AUGUSTINE’S, in standard character form, for “novelty
items having a religious theme, namely, incense, perfume
oils and scented oils used to produce aromas when heated,”
in International Class 3, owned by Augustine’s Eternal
Gifts, LLC (“respondent”). As grounds for cancellation,
petitioner alleged priority of use and likelihood of
confusion. However, the essence of the dispute between the
parties is whether respondent purchased the trademark
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Cancellation No. 92049453
2
AUGUSTINE’S SPIRITUAL GOODS and the goodwill associated
therewith from petitioner trademark in an asset purchase
agreement dated October 17, 2002.
The Record
By operation of Trademark Rule 2.122, 37 CFR §2.122,
the record includes the pleadings and the registration file
for respondent’s mark. The record also includes the
following testimony and evidence:
A. Petitioner’s Evidence.

1. Testimony deposition of Alice Pulaski,
petitioner’s owner, with attached exhibits;
2. Rebuttal testimony deposition of Alice Pulaski;
and
3. Rebuttal testimony deposition of Frank J. Pulaski,
the husband of Alice Pulaski, with attached exhibits.
B. Respondent’s Evidence.
Testimony deposition of Carolyn Hennes, the owner of
respondent, with attached exhibits.
Facts
Alice Pulaski was the owner operator of AUGUSTINE’S
SPIRITUAL GOODS, a retail store.1 She started her business
in 1992.2 In 2002, the city of Chicago exercised its right

1 Frank Pulaski Dep., p. 41; Alice Pulaski Testimony Dep., p. 15.
2 Alice Pulaski Testimony Dep., p. 15.
Cancellation No. 92049453
3
of eminent domain and claimed the building where AUGUSTINE’S
SPRITUAL GOODS retail store was located.3 In lieu of
relocating, Ms. Pulaski decided to sell her business.4
Carolyn Hennes agreed to purchase the assets of
AUGUSTINE’S SPIRITUAL GOODS retail store. Ms. Pulaski and
her husband Frank Pulaski drafted the asset purchase
agreement.5 The agreement provides, in pertinent part, the
following:6

3 Frank Pulaski Dep., pp. 4, 26, 41; Alice Pulaski Testimony
Dep., p. 14.
4 Alice Pulaski Testimony Dep., pp. 14-15.
5 Frank Pulaski Dep., pp. 7, 40, 44; see also Alice Pulaski
Testimony Dep., p. 40.
6 Alice Pulaski Testimony Dep., Exhibit 12; Carolyn Hennes Dep.,
Exhibit 1.
Cancellation No. 92049453
4
The above-identified contract was the entire agreement.
Q. Was [the agreement] meant to be a
total integration of your agreement
or were there, you know, little
contingencies and side things going
on, such as she could use the name
to get on her feet?

A. No. Outside of that, that was it.

Q. That was pretty much it?

A. Yeah.7

Six months after selling the assets of the AUGUSTINE’S
SPIRITUAL GOODS retail store to Carolyn Hennes, petitioner
opened a store in Hancock, Michigan.8 The name of the new
store is AUGUSTINE’S CURIOUS GOODS.9 However, petitioner
uses AUGUSTINE’S SPIRITUAL GOODS on its website.10
Standing

Petitioner operates a retail store named AUGUSTINE’S
CURIOUS GOODS in Hancock, Michigan, and it also uses a
website with the name AUGUSTINE’S SPIRITUAL GOODS. This is
sufficient to demonstrate that petitioner has a real
interest in this proceeding, and therefore has standing.
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185, 189 (CCPA 1982).

7 Alice Pulaski Testimony Dep., Exhibit 31.
8 Frank Pulaski Dep., p. 38; see also Alice Pulaski Dep., p. 14
(“we just decided we were going to move to Michigan - - move the
business to Michigan”).
9 Frank Pulaski Dep., pp. 39-40, 42.
10 Frank Pulaski Dep., p. 42.
Cancellation No. 92049453
5
Priority

In order for petitioner to prevail on its Section 2(d)
claim, it must prove that it has a proprietary interest in
the mark AUGUSTINE’S SPIRITUAL GOODS and that interest was
obtained prior to either the filing date of respondent’s
application for registration or respondent’s date of first
use. Herbko International Inc. v. Kappa Books Inc.,
308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002);
Otto Roth & Co., Inc. v. Universal Corp., 640 F.2d 1317,
209 USPQ 40, 43 (CCPA 1981); Miller Brewing Co. v. Anheuser-
Busch Inc., 27 USPQ2d 1711, 1714 (TTAB 1993). The
determination of these facts hinges on the meaning of the
sales contract between the parties because the essence of
respondent’s defense is that it acquired the mark from
petitioner. If respondent acquired the mark from
petitioner, then respondent as the successor company
acquired all the rights which the petitioner had in the
mark. Educational Development Corp. v. Educational
Dimensions Corp., 183 USPQ 492, 495 (TTAB 1974); see also
Morgan Services Inc. v. Morgan Linen Services Inc., 12
USPQ2d 1841, 1842 (TTAB 1989) (assignee “stands in the
shoes” of assignor); Transamerica Financial Corp. v. Trans-
American Collections, Inc., 197 USPQ 43, 50 (TTAB 1977)
(successor in interest succeeds to all rights in a
particular designation acquired by its predecessor).
Cancellation No. 92049453
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In reviewing the contract between the parties, we may
not interpret the contact based “on the subjective
intentions of the parties.” We must focus “on the objective
words of the agreement.” Duramax Marine LLC v. R.W.
Fernstrum & Co., 80 USPQ2d 1780, 1789 (TTAB 2006), quoting
Novamedix Ltd. v. NDM Acquisition Corp., 166 F.3d 1177,
49 USPQ2d 1613, 1616 (Fed. Cir. 1999), relying on United
States v. Armour & Co., 402 U.S. 673, 681-682 (1971).
Because the contract between the parties was negotiated
and signed in Chicago, Illinois and it involved the transfer
of common law rights in the AUGUSTINE’S SPIRITUAL GOODS
service mark for the retail store, we must look to the law
of Illinois to interpret the provisions of the contract.
Old Swiss House, Inc. v. Anheuser-Busch, Inc.,
569 F.2d 1130, 196 USPQ 808, 809 (CCPA 1978); see also
Duramax Marine LLC v. R.W. Fernstrum & Co.,
80 USPQ2d at 1790 (interpreting settlement agreement under
the laws of Louisiana); Stockpot, Inc. v. Stock Pot
Restaurant, Inc., 220 USPQ 52, 58 (TTAB 1983) (interpreting
license under the law of Massachusetts).
The construction of a contract is a matter of law.
Gallagher v. Lenart, 226 Ill.2d 208, 219, 874 N.E.2d 43, 50
(Ill. 2007). The primary objective in construing a contract
is to give effect to the intent of the parties. In so
doing, the court must initially look to the language of the
Cancellation No. 92049453
7
contract alone because the language, given its plain and
ordinary meaning, is the best indication of the parties’
intent. Gallagher v. Lenart, 226 Ill.2d at 232,
874 N.E.2d at 58; Lease Management Equipment Corp. v. DFO
Partnership, 392 Ill.App.3d 678, 685, 910 N.E.2d 709, 715
(Ill. 2009).
[A]n agreement, when reduced to writing,
must be presumed to speak the intention
of the parties who signed it. It speaks
for itself, and the intention with which
it was executed must be determined from
the language used. It is not to be
changed by extrinsic evidence.

Air Safety, Inc. v. Teachers Realty Corporation,
185 Ill.2d 457, 462, 706 N.E.2d 882, 884 (Ill. 1999),
quoting Western Illinois Oil Co. v. Thompson, 26 Ill.2d 287,
291, 186 N.E.2d 285, 287 (Ill. 1962).
If the language of the contract is unambiguous, then
the court may interpret the contract as a matter of law.
Air Safety, Inc. v. Teachers Realty Corporation,
185 Ill.2d 462, 706 N.E.2d at 884. On the other hand, if
the language of the contract is susceptible to more than one
meaning, it is ambiguous. If the language is ambiguous, the
court may consider extrinsic evidence to ascertain the
intent of the parties. Gallagher v. Lenart, 226 Ill.2d at
232, 874 N.E.2d at 58.
A contract is not rendered ambiguous merely because the
parties disagree on its meaning. The court will consider
Cancellation No. 92049453
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only reasonable interpretations of the language and will not
strain to find an ambiguity where none exists. Rich v.
Principal Life Insurance Co., 226 Ill.2d 359, 372,
875 N.E.2d 1082, 1090 (Ill. 2007).
The contract must be construed most strongly against
the party that prepared it. Western Illinois Oil Co. v.
Thompson, 26 Ill.2d at 291, 186 N.E.2d at 287; see also
Rich v. Principal Life Insurance Co., 226 Ill.2d at 371,
875 N.E.2d at 1090 (“If the words used in an insurance
policy are reasonably susceptible to more than one meaning,
they are considered ambiguous and will be construed strictly
against the insurer who drafted the policy”).
We find that there is no ambiguity in the terms of the
agreement. For the consideration paid by Carolyn Hennes,
she received “[t]he good name of Augustine’s Spiritual
Goods, which has an 11 year reputation”; in other words,
Hennes acquired the AUGUSTINE’S SPIRITUAL GOODS trademark.11
There are no restrictions or limitations ascribed to the
sale of the name. In fact, petitioner, through Frank and
Alice Pulaski, the drafters, made clear that although Hennes
would be using the mark AUGUSTINE’S SPIRITUAL GOODS, Hennes
was not acquiring the corporation, Augustine’s Spiritual

11 Frank Pulaski testified that the value in “[t]he good name of
Augustine’s Spiritual Goods” “was in Alice’s and my reputation,”
thereby corroborating that petitioner transferred the goodwill
associated with the mark. (Pulaski Dep., p. 47).
Cancellation No. 92049453
9
Goods, Inc., or any of the licenses in that entity’s name.
Accordingly, the initial use of the mark AUGUSTINE’S
SPIRITUAL GOODS in 1992 by petitioner through the October
17, 2002 sale of the mark to respondent, inures to the
benefit of respondent by virtue of the sale of assets
between the parties. In other words, the record shows that
respondent may claim first use of the mark in 1992 through
its predecessor-in-interest, petitioner. The earliest date
of first use on which petitioner may rely is when it opened
its store in Hancock, Michigan, six months after the sale of
the assets. In view of the foregoing, petitioner has failed
to prove that it has a proprietary interest in AUGUSTINE’S
SPIRITUAL GOODS prior to that of respondent, and therefore
petitioner’s Section 2(d) claim fails.
Decision: The petition for cancellation is dismissed
with prejudice.