Bentwood Television Corp.v.American Theatre Wing, Inc.

Trademark Trial and Appeal Board

Jul 31, 2001

No. 92029146 (T.T.A.B. Jul. 31, 2001)

7/31/01

omelko

Cancellation No. 29,146

Bentwood Television
Corporation

v.

American Theatre Wing, Inc.

Before Quinn, Hairston and Rogers, Administrative Trademark Judges.

By the Board:

Bentwood Television Corporation (“petitioner”) seeks
to cancel the registration of American Theatre Wing, Inc.
(“respondent”) for the mark “Tony” Awards for “giving of dinners
and the making of telecasts in connection with the
recognition of distinguished achievement in the theatre.”1[1]
In its petition to cancel, petitioner asserts that
respondent has abandoned its mark “by failure to use it and
by otherwise nakedly licensing any and all uses thereof,
including many commercial uses that are outside the scope
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
of its registrations.” Specifically, petitioner asserts
that respondent has used the mark without the quotation
marks; in a typeface different from the one appearing on
the registration certificate; and without the “S” in
“AWARDS”.
Respondent, in its answer, denies the salient allegations of the petition to
cancel and includes affirmative defenses.
This case now comes up for consideration of (a) respondent’s contested
motion (filed October 29, 1999) for a protective order;2[2] (b) petitioner’s motion
(filed April 21, 2000) for summary judgment on the ground of abandonment; and
(c) respondent’s cross motion (filed June 5, 2000) for summary judgment on the
ground of abandonment.
We turn first to the petitioner’s motion for summary judgment
exclusively3[3] on the ground of abandonment. In support of its motion for
summary judgment, petitioner cites an out-of-date version of the Lanham Act,
and argues that respondent “has not made any use of the mark, at all.

1[1] Registration No. 979,150 issued on February 19, 1974; renewed
February 19, 1994.
2[2] Petitioner inappropriately objected to the motion by filing a
motion for sanctions requesting the Board to strike respondent’s
answer. See Fed. R. Civ. P. 11(c) and Trademark Rule 2.120(g).
3[3] In a footnote at page 6 of its affidavit in support of its
motion for summary judgment, petitioner asserts that “[t]he
evidence of abandonment is so pervasive that petitioner need not
raise issues such as naked licensing and fraud in this motion.”
Moreover, petitioner argues the claims of naked licensing and
fraud as tangential to the abandonment claim, rather than as
separate claims.
Moreover, it has not done so for more than two4[4] years. Obviously
[respondent] has abandoned its registered mark and has no intention of making
any use of it now or in the foreseeable future.”
In support of its motion, counsel for petitioner states in an affidavit that:
Commencing on February 3, 2000, a hearing was
held on the dispute between petitioner and Alexander
H. Cohen on the one hand and League on the other
respecting ownership of the programs [previously
mentioned].

...[the president of respondent] testified...that
he has “rarely seen it [i.e., the words “Tony Awards”]
in Coronet type. Elsewhere he stated that the words
“Tony Awards” “had been done various ways. In
addition, Mr. Somlyo admitted that the registered mark
was not used on [respondent’s] letterhead. The
relevant pages of [the president of respondent’s]
arbitration hearing testimony are annexed as Exhibit
8.”5[5]

As exhibits to its motion, petitioner has attached a copy of the petition to
cancel; a copy of the Board’s scheduling order; a copy of petitioner’s first
demand for production of documents; a copy of respondent’s answer; a copy of
petitioner’s letter to respondent alleging respondent’s failure to engage in

4[4] The minimum period of nonuse was extended to three consecutive years to establish
a prima facie case of abandonment. 108 Stat. 4809, 4981-82 (1994). Respondent in its
response to petitioner’s motion also references the outdated law.
5[5] This arbitration has been terminated. The arbiter determined
that the “Lanham Act claim was not timely asserted, and even if
it were, no violation has been shown by the way which the League
asserted its consent right.”
discovery; a copy of the involved registration certificate; and copies of two
transcripts from the arbitration hearing.6[6]
In its cross motion for summary judgment, respondent
argues that none of these minor variations have altered the
overall impact of the mark or the public’s ability to
associate it with respondent. These variations are
intended to update the appearance of the mark to maintain
its aesthetic appeal to consumers. Further, respondent
argues that “[I]n the instant case, petitioner has not even
alleged that the mark has lost its significance as an
indication of origin (and certainly it has not offered a
shred of proof to support any such allegation).” In
support of its position, respondent has submitted the
declarations of respondent’s counsel and respondent’s
president. The pertinent paragraphs of the respondent’s
president’s declaration read as follows:
It is conceded that Registrant has used minor
variations of the form of the mark in the registration.
These variations include: (i) using the Mark in block
letters and in a type face different from that in the
registration; (ii) using the Mark without the quotation
around the word “Tony”; (iii) omitting the final “s”
from the word “Awards”; and (iv) using the registration
symbol after the word “Tony” or after the word “Awards”.
However, none of these variations have significantly
altered the form of the Mark as registered, either
aurally or visually. Further, none of these variations

6[6] In the Board’s order of March 29, 2001, the parties were
asked to refrain from filing multiple copies of documents that
are already of record.
has in anyway changed the fact that the public: (i)
continues to associate the Tony Awards with excellence
in Broadway theater, just as it did when the Mark was
first used in 1947 or when it was registered in 1974;
and (ii) continues to associate the Mark with
Registrant.

Registrant has elected to make minor alterations to
the Mark in order to maintain the aesthetic appeal of
the Mark with the consuming public. Quite simply, we
believed that the Mark, as registered, appeared dated
and was in need of updating.

Evidence that the significance of the Mark to the
consuming public has remained unchanged and undiminished
is seen in the tremendous volume of unsolicited press
coverage relating to Registrant and the Mark.

In further support of its cross motion, respondent has
included a copy of another registration indicating
ownership in respondent for the mark TONY for
“entertainment services, namely providing dinners, dances
and entertainment in connection with the recognition of
distinguished achievement in the theatre; the presentation
of awards in recognition of distinguished achievement in
the theatre; television show production; and educational
services, namely, conducting seminars in the field of the
theatre.”
Additional exhibits include: an agreement dated June
19, 1975 between The League of New York Theatres and
Producers, Inc. and Bentwood Television Corporation; a
publication titled “Tony Award Productions: Rules for Use
of the Tony Awards® Trademarks and Materials”; copies of
advertisements displaying the mark; various other examples
of use of the mark; a copy of the American Theatre Wing’s
Tony Awards Website; and a selection of articles from
newspapers and websites discussing production of the
television awards programs and the awards recipients.
Petitioner, in response to respondent’s cross motion,
asserts that there are three flaws with respondent’s
arguments:
(1)The generic words “Tony Awards” are not a variation on the registered
mark–“Tony” Awards.

(2) Respondent has not tacked on an additional distinctive mark or used
only part of a distinctive mark, it has abandoned all precept [sic] of
distinctiveness and claims rights to a generic name.

(3) It proposes to retain registration of a distinctive, albeit never used mark,
so as to stake out a claim in a generic proper name “Tony.”

Petitioner also attached a copy of the arbitration
award.
Summary judgment is an appropriate method of disposing of cases in
which there are no genuine issues of material fact in dispute, thus leaving the
case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c). The party
moving for summary judgment has the initial burden of demonstrating the
absence of any genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S.
317 (1986), and Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4
USPQ2d 1793 (Fed. Cir. 1987). A factual dispute is genuine,
if, on the evidence of record, a reasonable finder of fact could resolve the matter
in favor of the non-moving party. See Opryland USA Inc. v. Great American Music
Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992), and Olde Tyme Foods Inc.
v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). The evidence
must be viewed in a light most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor. See Lloyd's Food Products
Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993), and Opryland
USA, supra.
We find that there are no genuine issues of material
fact as to the claim of abandonment. Petitioner argues
that respondent is using the mark without the quotation
marks; in a typeface different from the one appearing on
the registration certificate; and without the “S” in
“AWARDS”. Respondent admits these facts but argues that
the differences are not significant enough to deem the
registered mark abandoned.
Having determined that there is no question of
material fact in dispute, we must now decide whether
registrant has abandoned its registered mark because it has
used the mark (1) without the quotation marks; (2) in a
type face different from the one appearing on the
registration certificate; and (3) without the “S” in
“AWARDS.”
The principal case pertinent to this issue is Ilco Corp. v. Ideal Security
Hardware Corp., 527 F.2d 1221, 188 USPQ 485 (CCPA 1976). In Ilco, the court
stated that "the law permits a user who changes the form of its mark to retain
the benefit of its use of the earlier form, without abandonment, if the new and
old forms create the same, continuing commercial impression." 527 F.2d at
1224, 188 USPQ at 487.
If the new form of the mark creates a different commercial impression
from that of the original mark, it is deemed to be a material alteration of the
character of the mark. In re Holland American Wafer Co., 737 F.2d 1015, 222
U.S.P.Q. 273 (Fed. Cir. 1984)
Petitioner’s allegation that the variations of the mark used by
respondent, i.e., those without the quotation marks or in a typeface
different from the one appearing on the registration certificate, are so
different from the registered mark as to constitute an abandonment of the
registered mark is in error. The commercial impression of the registered
mark is not changed by the presence or absence of quotation marks or the
use of difference typeface. Cf. In re Ervin, 1 USPQ2d 1665 (TTAB 1986)
(use of slanting script and quotation marks do not render laudatory
matter a registrable mark); In re Burlington Industries, Inc., 196 USPQ 718
(TTAB 1977) (exclamation point in CHAMPAGNE! fails to change
connotation of term alone). See also Ex parte Hanna Paint Mfg. Co., 103
USPQ 217 (Comm'r Pats. 1954) (change of words in mark from arcuate
display in “fancy capital letters” to “block letters in a straight line” a mere
modernization); and Ex parte Petersen & Pegau Baking Co., 100 USPQ 20
(Comm'r Pats. 1953) (change in type face held not a material difference).
We turn finally to petitioner’s concern about respondent’s
sometime deletion of the “s” in “awards”. Contrary to petitioner's
argument, there is no material difference, in a trademark sense, between
the singular and the plural form of a word. See Wilson v. Delaunay, 245
F.2d 877, 114 USPQ 339, 341 (CCPA 1957); In re Sarjanian, 186 USPQ 307
(TTAB 1962).
Accordingly, we find that respondent’s registered mark “Tony” Awards has
not been abandoned merely because of respondent’s occasional use of the mark
without quotation marks, without the “s” in “awards” or in a font other than
Coronet. These minor changes do not alter the commercial impression of the
mark; rather, the forms create the same, continuing commercial impression.
In view thereof, petitioner’s motion for summary judgment is denied;
respondent's cross motion for summary judgment is granted;7[7] and the
petition to cancel is dismissed with prejudice.

7[7] Because granting of respondent’s cross motion for summary judgment dispenses
with this proceeding, the contested motion for a protective order is hereby denied as
moot.