Tiger Press, L.L.C.v.Dorothy J. Patterson

Trademark Trial and Appeal Board

Jan 24, 2002

No. 91109207 (T.T.A.B. Jan. 24, 2002)

1/24/02 Paper No.
23

GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Tiger Press, L.L.C.
v.
Dorothy J. Patterson, d.b.a. True Promise Productions
_____

Opposition No. 109,207 to application Serial No. 74/666,277
filed on April 23, 1995
_____

Richard L. Fortner of Miller Nash L.L.C. for Tiger Press,
L.L.C.

Dorothy J. Patterson, d.b.a. True Promise Productions, pro se.
______

Before Hohein, Wendel and Bottorff, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Dorothy J. Patterson, d.b.a. True Promise
Productions, has filed an application to register the mark
"GOD CAN," in the stylized form shown below,

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 109,207
2
for a "plastic prayer can to be used for inserting prayer
requests".1
Tiger Press, L.L.C. has opposed registration on the
ground that it is the owner of an application to register the
mark "GOD CAN" in connection with "slotted and metal
containers used for depositing written personal thoughts";2
that opposer's "common law rights to the GOD CAN trademark are
prior in time to the filing date and date of first use
alleged" in the application involved in this proceeding; and
that "[b]ased on the identical appearance, sound, and meaning
of the two marks for use with goods having the identical
function, Applicant's mark so resembles Opposer's mark as to
be likely to cause confusion, deception, and/or mistake."
Applicant, in her answer, has denied the salient
allegations of the notice of opposition and has asserted, as
an affirmative defense, that because "the Opposer's claim is
based on an assignment from John D. McCracken, a person
already adjudicated to have no rights in the alleged mark,"

1 Ser. No. 74/666,277, filed on April 23, 1995, which alleges a date
of first use anywhere of January 20, 1991 and a date of first use in
commerce of March 20, 1995.
2 Ser. No. 75/314,935, filed on June 25, 1997, which alleges a date
of first use anywhere and in commerce of January 1, 1984. The word
"CAN" is disclaimed.

Opposition No. 109,207
3
opposer's "application and opposition are null and void due to
... unclean hands and/or fraud."3
The record includes the pleadings; the file of the
opposed application; and, as part of opposer's case-in-chief,
the affidavit, with exhibits, of its manager, Mary M.
Morrissey, which was submitted pursuant to a stipulation by
the parties. Opposer, as the rest of its case-in-chief, has
submitted a notice of reliance upon (i) applicant's responses
to opposer's first set of discovery requests4 and (ii) certain
official records of the United States Patent and Trademark
Office, including copies of its pleaded application, the
initial Office action issued in connection therewith and
assignment documents pertaining to such application.
Applicant, as part of her case-in-chief, has filed a
declaration, with exhibits, of herself, which was submitted
pursuant to a stipulation by the parties. As the remainder of
her case-in-chief, applicant has submitted a notice of

3 Although, as additional affirmative defenses, the answer also
alleges that opposer "is guilty of laches," "is estopped from
bringing this opposition" and "has abandoned its alleged mark," such
allegations will not be given further consideration inasmuch as they
were neither pursued at trial nor argued in the parties' briefs.
4 Unlike answers to interrogatories and requests for admission, it is
pointed out as a general proposition that documents produced in
response to requests for production thereof are not proper subject
matter for a notice of reliance unless they otherwise meet the
requirements of Trademark Rule 2.122(e). See Trademark Rule
2.120(j)(3)(ii) and TBMP §711. However, since applicant in her brief
has treated such evidence as forming part of the record, it has been
so considered.
Opposition No. 109,207
4
reliance upon (i) opposer's responses to her first set of
discovery requests;5 (ii) certain official records of the
United States Patent and Trademark Office pertaining to her
involved application; and (iii) various sales receipts and
advertising for her "GOD CAN" products.6
In rebuttal, opposer has submitted, in accordance
with a stipulation by the parties, the affidavit, with
exhibits, of one of its attorneys, Michael E. Arthur. Briefs
have been filed, but an oral hearing was not requested.
Because, as conceded by the parties, the use of the mark "GOD
CAN" in connection with essentially identical goods is likely
to cause confusion, mistake or deception as to the source or
sponsorship of such products, and because applicant has
offered only conclusory assertions rather than factual proof
with respect to her affirmative defense of unclean hands
and/or fraud,7 the sole real issue to be determined is which

5 While, as noted previously, documents produced in response to
requests for production thereof generally are not proper subject
matter for a notice of reliance unless they otherwise meet the
requirements of Trademark Rule 2.122(e), inasmuch as opposer has
treated such evidence in its briefs as forming part of the record, it
has been so considered.

6 Although, under Trademark Rule 2.122(e), such receipts and an
advertising sheet or flyer are not proper subject matter for a notice
of reliance, the evidence nevertheless has been considered in view of
opposer's having treated it as being of record in its briefs.

7 There is no proof, on this record, as to whether John D. McCracken,
who was applicant's husband prior to their divorce in or about 1995,
Opposition No. 109,207
5
party has priority of use of the "GOD CAN" mark, an issue
which necessarily includes whether opposer has proven its
standing to bring and maintain this proceeding.
According to the record, opposer is an Oregon
limited liability company which, among other things,
"distributes spiritual and inspirational materials, including
books, tapes, and, from June 26, 1995, to September 1, 1999,
cans with labels containing the GOD CAN mark (the 'GOD CAN
product')." (Morrissey aff. ¶2.) Such goods, in particular,
consist of "slotted containers into which one may deposit
personal thoughts." (Id. ¶5.) According to Ms. Morrissey,
who is the senior minister at a nonprofit religious
organization known as the Living Enrichment Center in addition
to being the manager of opposer, while she was a co-director
and employee of the Living Enrichment Center in 1982, it began
producing and selling the "GOD CAN product," which she "had
created." (Id. ¶4.) However, during the time that such
product was sold through the Living Enrichment Center, "it was
understood that the GOD CAN product, its trademark rights, and
the goodwill associated therewith were owned by the Living

had any valid rights in the mark "GOD CAN" for prayer request
containers or the like goods which were assigned to opposer, nor is
there any proof that opposer in fact bases its claim of priority of
use of such mark on any assignment thereof to it from John D.
McCracken. Applicant's affirmative defense of fraud and/or unclean
hands accordingly fails for lack of proof.

Opposition No. 109,207
6
Enrichment Center" and that neither Ms. Morrissey nor her ex-
husband, Haven Boggs, "ever used the GOD CAN mark." (Id.)
Opposer was formed on June 12, 1995 "to carry on
certain activity, including the production and distribution of
the "GOD CAN product," thereby "allowing the Living Enrichment
Center to better focus on its core mission." (Id. ¶6.) In
particular, "[o]n June 26, 1995, the Living Enrichment Center
transferred and assigned certain properties, including all of
its interests in the works created by" Ms. Morrissey, to
opposer. (Id.) According to Ms. Morrissey, it was her
understanding that "this transfer and assignment included all
trademark rights to the mark GOD CAN and the goodwill
associated therewith." (Id.) Subsequently, on September 1,
1999, opposer "sold certain properties, including all of its
interests in certain trademarks ..., to Arvus.com, LLC." (Id.
¶7.) Such sale, as evidenced by an assignment (Opposer's
Exhibit 3) which is dated September 21, 1999, specifically
"included an assignment of all trademark rights to the mark
GOD CAN and the goodwill associated therewith." (Id.) The
assignment, in this regard, refers to opposer as the assignor
and "Arvus.com LLC" as the assignee and recites, in relevant
part, that: "This Trademark Assignment is executed pursuant
to the Purchase Agreement between Assignor and Assignee, dated
as of May 1, 1999, whereby Arvus.com has succeeded to the
Opposition No. 109,207
7
business, assets, and appurtenant goodwill associated with the
trademarks listed on Schedule A," which includes the "GOD CAN"
mark which is the subject of application Ser. No. 75/314,935,
filed on June 25, 1997. (Opposer's Exhibit 3.)
According to Ms. Morrissey, Arvus.com, LLC, "through
[opposer as] its predecessor in interest," and opposer,
"through its predecessor in interest, Living Enrichment
Center, began using the mark GOD CAN in connection with their
slotted containers as early as January 1, 1984" and such use
"has been continuous." (Morrissey aff. ¶8.) Likewise, in its
responses to requests for admission, made of record by
applicant, opposer reiterated that its "predecessor in
interest, Living Enrichment Center, produced and sold products
bearing the GOD CAN mark from at least as early as January 1,
1984." (Response to Applicant's Req. for Adm. Nos. 1, 2 & 3.)
Such goods, which retail "from approximately $4.00 for the can
by itself to $9.95 for the can bundled with an audiotape," are
typically "sold through Christian bookstores and other
specialty wholesale and retail distribution channels in the
United States." (Morrissey aff. ¶9.) An advertisement
(Opposer's Exhibit 7) for "GOD CANS," placed by Living
Enrichment Center, appeared as early as "the Winter 1984 issue
of New Thought magazine," while an order form (Opposer's
Exhibit 8) by that firm for such goods, stated to be
Opposition No. 109,207
8
"effective June 1985," recites among other things that: "The
God Can© was born in the minds of the Reverends Mary and Haven
Boggs in 1981." (Morrissey aff. ¶14 and Opposer's Exhibits 7
& 8.) Similarly, another order form (part of Applicant's
Exhibit 20) by Living Enrichment Center names "Mary and Haven
Boggs, Directors" and lists "God Can Price Information
(effective May 1990)," while a credit card receipt and order
form (also part of Applicant's Exhibit 20) evidence a sale by
Living Enrichment Center of "6 God Cans" on July 19, 1993 to a
third party, Living Book Ends, for $24.00. (Applicant's
Exhibit 20.)
An application to register the "GOD CAN" mark for
slotted cardboard and metal containers used for depositing
written personal thoughts was filed by opposer on June 25,
1995. The application, Ser. No. 75/314,935, alleges January
1, 1984 as a date of first use anywhere and in commerce and
was verified by opposer's manager, Ms. Morrissey.
Subsequently, in an Office Action dated November 10, 1997,
opposer was advised in light of applicant's prior pending
application, Ser. No. 74/666,277, for the mark "GOD CAN" for a
plastic prayer can to be used for inserting prayer requests
that, "if the referenced application matures into [a]
registration, the examining attorney may refuse registration
in this case" because, inasmuch as the respective marks "are
Opposition No. 109,207
9
legally identical and the goods are closely related," "[t]here
may be a likelihood of confusion between the marks."
(Opposer's Exhibit 11.) A nunc pro tunc assignment of, inter
alia, application Ser. No. 75/314,935 from opposer to
Arvus.com LLC and which is dated September 21, 1999, was
recorded in the United States Patent and Trademark Office at
reel 1967, frame 0101, on September 25, 1999.
According to Mr. Arthur, "Arvus.com, LLC was formed
as an Oregon limited liability company on April 15, 1999" with
opposer as "the sole member" thereof. (Arthur aff. ¶3.) "On
January 25, 2000, Arvus.com LLC changed its company name to
Arvus.com of Oregon LLC." (Arthur aff. ¶4.) On January 31,
2000, another company, incorporated under the name "arvus.com,
inc." as shown by Opposer's Exhibit 158 but referred to in Mr.
Arthur's affidavit as "Arvus.com, Inc.[,] was formed as an
Oregon corporation ... to accommodate a private stock
offering." (Arthur aff. ¶5.) "On or about February 1, 2000,
Arvus.com, Inc. authorized the issuance to [opposer,] Tiger
Press LLC [sic,] of 5,950,000 shares of common stock in
consideration for its contribution to the corporation of all
outstanding units of membership interest in Arvus.com LLC,"
which as indicated above was then known as Arvus.com of Oregon

8 Such exhibit, Mr. Arthur avers, "is a true and correct copy of the
Articles of Incorporation for Arvus.com, Inc." (Arthur aff. ¶5.)

Opposition No. 109,207
10
LLC. (Arthur aff. ¶6.) Thereafter, "[o]n March 16, 2000,
Arvus.com, Inc. filed Restated Articles of Incorporation
changing its name to PersonPlanet, Inc. [sic]." (Arthur aff.
¶7.) The name "PersonPlanet, Inc.," as recited in Mr.
Arthur's affidavit, appears, however, to be a typographical
error inasmuch Opposer's Exhibit 17, which Mr. Arthur states
"is a true and accurate copy of the Restated Articles of
Incorporation documenting this change," shows that "arvus.com,
inc." changed its name to "PersonPlanet.com, Inc." as of "3-
16-00" by a vote of all "10 million" shares outstanding.
(Arthur aff. ¶7 and Opposer's Exhibit 17.)
Furthermore, according to Mr. Arthur, opposer "has
had a continuous ownership interest in each of the above
entities, first as the sole member of the Arvus.com LLC (which
was renamed Arvus.com of Oregon LLC), and currently as the
majority shareholder of Arvus.com, Inc. (which has since been
renamed PersonPlanet.com, Inc[.])." (Arthur aff. ¶8.) In
addition, Mr. Arthur states that "[t]he mark GOD CAN remains
the property of Arvus.com of Oregon, LLC, which is a wholly
owned subsidiary of PersonPlanet.com, Inc., of which the
majority shareholder is [opposer,] Tiger Press, L.L.C."
(Arthur aff. ¶9.)
Applicant, on the other hand, is a sole proprietor
who does business under the trade name of True Promise
Opposition No. 109,207
11
Productions. Applicant claims a variety of dates of first use
of the "GOD CAN" mark for her prayer request cans. As shown
by her responses to the requests for admission served and made
of record by opposer, applicant admits that her date of first
use of such mark was no earlier than the March 20, 1995 date
of first use stated in her application, but qualifies such
admission by noting that she and her former husband "produced
GOD CANS together before that date for True Promise Prod.
until ... [she] was granted control of the GOD CAN bsns [sic]
in divorce court on 6-6-95 in Modesto, Ca." (Response to
Opposer's Req. for Adm. No. 2.) Applicant denies, moreover,
that her first sale of goods bearing the "GOD CAN" mark was no
earlier than March 20, 1995, claiming instead that she
"started producing her first GOD CANS in 1990." (Responses to
Opposer's Reqs. for Adm. Nos. 3 & 4.) However, in answer to
an interrogatory, which opposer also made of record, applicant
asserts that she "officially" first used the "GOD CAN" mark on
January 20, 1991 by having such mark "printed on the plastic
lids" for her goods. (Response to Opposer's Interog. No. 2.)
Moreover, the earliest documented sale by applicant is a
receipt (part of Applicant's Exhibit 25) dated March 20, 1995
which evidences that applicant sold "1 'GOD CAN'" to Vivian
Green for $2.00. (Applicant's Exhibit 25.)
Opposition No. 109,207
12
In her affidavit, applicant, besides stating that
she is the "creator of the original 'GOD CAN,'" likewise
indicates that she first used the "GOD CAN" mark for her
plastic prayer request cans in January 1991, but notes that
she "began producing [such goods] with my husband for True
Promise Productions in October 1994." (Patterson aff. ¶1.)
Applicant filed her involved application on April 23, 1995,
following her separation from her husband on March 4, 1995.9
Like the goods sold by opposer and its predecessors
in interest under the "GOD CAN" mark, applicant "sell[s] 'GOD
CANS' [at both] retail and wholesale," with prices "vary[ing]
from [$]3.00 ea. to [$]6.95 ea." (Response to Opposer's
Interog. No. 4.) Sales of such goods are made to stores and
"to private individuals at retail prices." (Response to
Opposer's Interog. No. 5.)
Turning to the issue of priority of use, including
whether opposer has proven its standing to bring and maintain

9 According to applicant, after their separation her "husband (John
D. McCracken) filled out his Trademark Application under the name of
GODCAN Co." (Patterson aff. ¶1.) Such application, which was filed
on April 3, 1995 as Ser. No. 74/659,474, was for registration of the
mark "GODCAN" for cylindrical paper cardboard containers with metal
tops having slots in the top for depositing written prayer petitions.
That application, however, contains no mention of John D. McCracken
and, instead, refers to the applicant therein, GODCAN Co., as a
partnership composed of three other individuals, including Arnold J.
Capitanelli, Jr., who verified the application. In any event, the
application was subsequently abandoned during the course of an
opposition thereto brought by Ms. Patterson.

Opposition No. 109,207
13
this proceeding, we find that opposer has priority and has
established its standing. As to the latter, the record
demonstrates that opposer had a reasonable belief that it is
likely to be damaged by the registration which applicant
seeks10 inasmuch as, at the time it commenced this proceeding
on January 8, 1998, it was the owner of an application to
register the mark "GOD CAN" in connection with goods which are
essentially identical to those for which applicant seeks
registration of her stylized "GOD CAN" mark and had been
advised that, if applicant's application were to mature into a
registration, such registration would possibly be cited as bar
to opposer's application on the ground of likelihood of
confusion. See, e.g., Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
Although opposer, on September 21, 1999, assigned its
application to Arvus.com LLC, which later changed its name to
Arvus.com of Oregon LLC, opposer has maintained its standing
to bring this proceeding by virtue of the fact that, even
though the mark "GOD CAN" remains the property of Arvus.com of
Oregon LLC, such entity is a wholly owned subsidiary of
PersonPlanet.com, Inc., of which the majority shareholder is

10 Section 13(a) of the Trademark Act, 15 U.S.C. §1063(a), provides in
relevant part that "[a]ny person who believes that he would be
damaged by the registration of a mark upon the principal register ...
may, upon payment of the prescribed fee, file an opposition ...
stating the grounds therefor ...."
Opposition No. 109,207
14
opposer. Thus, damage to Arvus.com of Oregon LLC, by failure
to secure registration of the "GOD CAN" mark in light of
applicant's application for the same mark in a stylized
format, would in turn damage its sole owner, PersonPlanet.com,
Inc., and hence opposer, as holder of a majority interest in
PersonPlanet.com, Inc.
Moreover, and in any event, opposer has standing by
virtue of the fact that it has demonstrated that it is the
prior user of the "GOD CAN" mark by virtue of the prior use
thereof by its predecessor in interest to such mark, Living
Enrichment Center. In terms of which party has the earliest
documented sale under such mark, the record shows that Living
Enrichment Center, which transferred and assigned its
trademark rights therein to opposer on June 26, 1995, sold six
"GOD CAN" prayer request containers on July 19, 1993, while
the earliest documented sale by applicant involves a sale of
one "GOD CAN" prayer request can twenty months later on March
20, 1995. Although applicant admitted such date to be her
date of first use of her mark, as set forth in her involved
application, with respect to sales of her goods,11 she claims
not only that she and her former husband "produced GOD CANS
together before that date," but that she "started producing

11 Applicant sets forth in her application, as the date of first use
of her mark, the following: "3/25/95 first sold, first used
1/20/91."
Opposition No. 109,207
15
her first GOD CANS in 1990," with her first use "officially"
of the "GOD CAN" mark on January 20, 1991 consisting of having
such mark "printed on the plastic lids" for her goods.
However, as to technical trademark use, there is no
documentary evidence that applicant actually sold or
transported any prayer request cans under her "GOD CAN" mark
in 1990 or 1991, and the mere printing of the "GOD CAN" mark
on plastic lids for such goods does not qualify, for priority
purposes, as use analogous to technical trademark use since it
has not been shown to have been of a sufficient nature and
extent so as to have created a public identification of the
mark with applicant's goods. See, e.g., T.A.B. Systems v.
PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1881 (Fed. Cir.
1996).
Nevertheless, opposer concedes in its briefs that,
for priority purposes, applicant may indeed rely upon January
20, 1991 as her earliest date of use of the "GOD CAN" mark.
Opposer maintains, however, that it still has priority based
upon the uncontroverted testimony of its witness, Ms.
Morrissey, that opposer's predecessor in interest, Living
Enrichment Center, first used the "GOD CAN" mark for prayer
request containers as early as January 1, 1984 and that such
use has been continuous. Applicant, on the other hand,

Opposition No. 109,207
16
asserts in her brief (at 4) that opposer, "Tiger Press[,] has
never had any ... legal right to have the GOD CAN Trademark
... because Tiger Press never obtained an assignment from the
alleged predecessor ... and Tiger Press began producing their
products long after the [applicant's] True Promise
[Productions'] GOD CAN was created and sold."
In particular, applicant argues in her brief (at 5)
that, not only is it "against the law for a non[-]profit
organization's product to be used for anyones [sic] personal
gain," but that opposer "never received a legal assignment or
permission to use" the "GOD CAN" mark from Living Enrichment
Center. However, as opposer points out in its reply brief (at
3), "Oregon law recognizes the right of a non-profit
organization to sell its own property,"12 and there is nothing
in the record to show that sales by Living Enrichment Center
of its "GOD CAN" product, which Ms. Morrissey stated she

12 Opposer, in support thereof, cites Foundation of Human
Understanding v. Department of Revenue, 722 P.2d 1, 301 Or. 254, 259
at n. 5 (1986), citing Ginsburg, The Real Property Tax Exemption of
Nonprofit Organizations: A Perspective, 53 Temp. L.Q. 291, 316-17
(1980) (footnotes omitted):

The primary test of nonprofit status in most states are
that no individual connected with the entity may receive
any personal pecuniary benefit except for reasonable
compensation for services rendered, and that any excess of
income over expense derived from the operation of the
property and all proceeds from the sale of property owned
by the organization must be devoted to the furthering of
the exempt purposes.

Opposition No. 109,207
17
created for that nonprofit organization's use, were misused
for personal gain of any individual associated therewith.
Thus, there is no evidence that use of the "GOD CAN" mark by
Living Enrichment Center, which was continuous from January 1,
1984 until it transferred and assigned such mark to opposer on
June 26, 1995, was illegal.
Instead, the principal thrust of applicant's
arguments appears to be that the transfer and assignment of
the "GOD CAN" mark from Living Enrichment Center to opposer
was ineffective because the bill of sale and assignment
document does not specifically mention the mark. Such
document (Opposer's Exhibit 2 and Applicant's Exhibit 19.) is
dated June 26, 1995 and provides, in pertinent part, that:
LIVING ENRICHMENT CENTER ("Seller")
does hereby bargain, sell, transfer,
convey, and assign to TIGER PRESS, L.L.C.
("Purchaser"), all of Seller's right,
title, and interest (including copyrights,
rights to copyright, and other intangible
rights of any nature whatsoever) to and in
connection with the following described
personal property (collectively, the
"Purchased Assets") for the purchase price
of $200,000, receipt of which is hereby
acknowledged:

1. Sermons and speeches given by
the Reverend Mary Manin Morrissey
("Morrissey"), including all
transcripts, tapes, and videotapes
thereof;

2. Meditation tapes created by
Morrissey;

Opposition No. 109,207
18
3. Morrissey's "Pocket
Principles" manuscripts;

4. Morrissey's developmental
manuscripts known as "Lifeworks" or
"Breakthrough"; and

5. Similar works that Morrissey
may have created in the past or may
create in the future while employed by
Seller or Purchaser.

(Opposer's Exhibit 2 and Applicant's Exhibit 19.) Applicant
also argues in her brief (at 7) that, in any event, such
document "has no bearing at all" because she "was granted the
True Promise [Productions'] GOD CAN in divorce court on June
6, 1995" and opposer not only did not come into existence
until six days later on June 12, 1995, but the bill of sale
and assignment were not executed until two weeks later on June
26, 1995.
The fact, however, that neither opposer's formation
nor the signing of the bill of sale and assignment occurred
until after applicant's rights in her "GOD CAN" mark were
decreed by the divorce court in California on June 6, 1995
does not mean that opposer lacks priority since it bases its
claim to rights in its "GOD CAN" mark through its predecessor
in interest, Living Enrichment Center, rather than any
activities by applicant or her ex-husband. While the bill of
sale and assignment document plainly does not list the "GOD
CAN" mark, the document does refer, although ambiguously, to
Opposition No. 109,207
19
"[s]imilar works that Morrissey may have created in the past
... while employed by Seller," namely, the Living Enrichment
Center, and the prayer request containers sold and advertised
by such organization under that mark are, on their face,
arguably "similar" in purpose to such "works" by Ms. Morrissey
as "meditation tapes." Moreover, the uncontroverted testimony
of Ms. Morrissey explained the ambiguity in the bill of sale
and assignment document by stating that it was her
understanding that the transfer and assignment reflected
thereby included all trademark rights to the "GOD CAN" mark,
which she had created for the Living Enrichment Center while a
co-director and employee thereof, as well as the goodwill
associated therewith, and that neither she nor her former
husband, Haven Boggs, ever used such mark themselves.
Thus, as opposer correctly points out in its reply
brief (at 4), the legal effect of the June 26, 1995 assignment
from the Living Enrichment Center ("LEC") to opposer ("Tiger
Press") was that (italics in original):
LEC assigned its rights to the materials
produced or created by Morrisey [sic]
(which included the GOD CAN mark and
product) to Tiger Press. ....
Accordingly, Tiger Press received the
rights that LEC had at that time the
assignment was made. At the time of the
assignment, LEC had already been producing
the GOD CAN product for a number of years,
and Tiger Press therefore received LEC's
rights to the priority of the mark.
Opposition No. 109,207
20
Because Tiger Press, as an assignee,
stepped into the shoes of its assignor,
LEC's date of first use becomes Tiger
Press' date of first use. Because the
assignment is valid, the only relevant
factor is LEC's date of first use, which
has been established as the early 1980s
[and, in particular, January 1, 1984,] from
the evidence. This date is earlier than
True Promises' ... date of first use and,
therefore, Tiger Press' priority is
established.

Finally, as previously noted, the subsequent
assignment by opposer of its rights in the "GOD CAN" mark,
following its own period of use thereof from June 26, 1995 to
September 1, 1999 in connection with its slotted containers
for depositing prayers or other personal thoughts, did not
divest opposer of its priority to such mark vis-à-vis
applicant. This is because despite opposer's nunc pro tunc
assignment on September 21, 1999 of its application to
register the "GOD CAN" mark for slotted containers for
depositing personal thoughts (such as prayers) to Arvus.com
LLC, which subsequently changed its name to Arvus.com of
Oregon LLC, opposer has maintained its standing to bring this
proceeding, and hence its priority, by virtue of the fact
that, even though the mark "GOD CAN" remains the property of
Arvus.com of Oregon LLC, such entity is a wholly owned
subsidiary of PersonPlanet.com, Inc., of which the majority
shareholder is opposer. Consequently, the priority with
respect to the "GOD CAN" mark which lies with Arvus.com of
Opposition No. 109,207
21
Oregon LLC inures in turn to opposer by virtue of its holding
of a majority interest in PersonPlanet.com, Inc., which is the
sole owner of Arvus.com of Oregon L.L.C.
Decision: The opposition is sustained and
registration to applicant is refused.