Maverick Media, Inc.v.Weyer-haeuser Co.

Trademark Trial and Appeal Board

Aug 15, 2001

No. 92029938 (T.T.A.B. Aug. 15, 2001)

8/15/01

RS/kes

Cancellation No. 29,938

Maverick Media, Inc.

v.

Weyerhaeuser Company

Before Simms, Chapman and Bottorff, Administrative
Trademark Judges.

Opinion by Simms, Administrative Trademark Judge:

This case now comes up on Weyerhaeuser Company’s
(respondent’s) motion for summary judgment. Maverick
Media, Inc. (petitioner) has opposed the motion and
respondent has filed a reply brief.
In this proceeding, petitioner seeks cancellation of
respondent’s registration of the mark IMPAK and design
for the following goods:
printed graphic art, commercial art work, namely,
photographs and manual illustrations, camera-ready
art, namely, artboards of visual elements for
commercial purposes, printed paper liners for use
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.
Cancellation No. 29938

2
with packaging and displays and printed paper liners
for use with related promotional products.

(Registration No. 1,586,697, issued March 13, 1990,
Sections 8 and 15 affidavit accepted and acknowledged,
respectively.) As grounds for cancellation, petitioner
asserts that it has filed an application to register the
mark AD IMPAC and design for “printed promotional
packaging for product inserts, namely, printed sheets and
paper advertising inserts”; that registration of this
mark has been refused by the Examining Attorney on the
basis of respondent’s registration; and that respondent
has abandoned its mark because the mark is not being used
on any of respondent’s goods, with no intent to use the
mark on these goods. Alternatively, petitioner asserts
that respondent has not used its mark on some of the
goods in its registration so that it has, in effect,
partially abandoned the registered mark. Petitioner asks
that the registration either be cancelled in whole or in
part to exclude petitioner’s goods therefrom.
Respondent has denied the essential allegations of
the petition for cancellation.
Near the end of the discovery period, respondent
filed its motion for summary judgment and also requested
that, if its motion is denied, the discovery period and
Cancellation No. 29938

3
its time to answer petitioner’s discovery requests be
extended.
In its motion for summary judgment, respondent
maintains that it has continuously used the registered
mark since the date of registration. Respondent’s motion
is supported by a declaration of its sales manager, who
attests to the fact that the registered mark has been
used in connection with all of the products listed in
that registration and that the use has been continuous
since the date of the registration in 1990. More
particularly, he states that he has been employed by
respondent in its IMPAK Center for Graphic Packaging for
13 years and that packaging, boxes, printed matter and
paper liners bearing the mark have been continuously
distributed by respondent during this entire 13-year
period. Respondent has submitted samples of boxes and
printed packaging showing the mark as it appears on
graphic art, illustrations, camera-ready art and paper
liners.
In opposition to respondent’s motion, petitioner
contends that, while respondent’s motion may be
appropriate against an attempt at full cancellation, here
petitioner is seeking, alternatively, partial
cancellation, and respondent has not shown the absence of
Cancellation No. 29938

4
a genuine issue with regard to that question.
Petitioner’s attorney argues that respondent has not
shown use on all the goods listed in the registration,
such as artboards or printed paper liners. Also,
petitioner maintains that respondent has not proven that
it is engaged in the business of selling goods similar to
those recited in petitioner’s application (printed
promotional packaging for product inserts).1 Thus,
according to petitioner, respondent’s registration is
overly broad and should be limited, pursuant to Section
18 of the Act,2 to exclude petitioner’s goods, which
restriction will avoid a finding of likelihood of
confusion. Petitioner’s opposition is supported by a
declaration of its attorney.3

1 Petitioner states that it provides inserts to the USA Today
newspaper.
2 Section 18 (15 U.S.C. §1068) provides, in relevant part:

In such proceedings the Director may refuse to
register the opposed mark, may cancel the
registration, in whole or in part, may modify the
application or registration by limiting the goods or
services specified therein, may otherwise restrict or
rectify with respect to the register the registration
of a registered mark…
3 Respondent has objected to this declaration. Among other
things, respondent complains that the declaration is irrelevant
because petitioner’s difficulties in obtaining a registration
are not relevant to the question of abandonment asserted in
petitioner’s petition for cancellation. We have chosen to
consider the declaration of petitioner’s attorney for whatever
probative value it has.
Cancellation No. 29938

5
In its reply brief, respondent maintains that there
is no genuine issue of fact because its motion and
support show that it has used the mark on all of the
goods listed in the registration. Respondent maintains
that its registration does not claim use on petitioner’s
goods so that it was not required to show use thereon to
demonstrate that there has been no abandonment of its
mark. In addition, respondent contends that a Section 18
restriction is inappropriate because petitioner’s goods
and respondent’s goods are sold in the same channels of
trade. Accordingly, any restriction would not preclude a
likelihood of confusion. Respondent has also submitted
another declaration of its sales manager explaining in
more detail the nature of its goods.
Upon careful consideration of the record and the
arguments on respondent’s motion, we believe that summary
judgment for respondent is justified. First, respondent
has established by declaration that it has used the
registered mark continuously on all of the goods listed
in its registration. Accordingly, the petition, insofar
as it seeks cancellation of the registration in its
entirety, is clearly not warranted.
Second, with respect to petitioner’s request that
the registration be restricted under Section 18, we
Cancellation No. 29938

6
likewise find that there is no genuine issue with respect
to the relief requested by petitioner. In this case,
respondent’s goods (photographs and illustrations,
artboards for commercial purposes, and printed paper
liners) do not specifically include petitioner’s
promotional packaging for product inserts. As such,
there can be no occasion for an amendment excluding these
specific goods from respondent’s registration. By way of
analogy, if respondent’s registration were for shirts and
petitioner’s goods were pants, there simply would be no
occasion for language in the registration that
respondent’s shirts do not include pants. That statement
would be obvious, and unnecessary.
Accordingly, because respondent has demonstrated
that there is no genuine issue with respect to the
question of abandonment of its mark for the goods in its
registration, and because a Section 18 restriction would
be inappropriate in this case, respondent’s motion for
summary judgment is granted and the petition for
cancellation is dismissed with prejudice.