Aris A. Zissisv.Karolos Fix

Trademark Trial and Appeal Board

Jan 19, 2001

No. 92023470 (T.T.A.B. Jan. 19, 2001)

1/19/01
Hearing: Paper No. 50
September 26, 2000 TEH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Aris A. Zissis dba Importer Wines and Spirits
v.
Karolos Fix, Brewing-Malting-Ice Making Company and D. Kourtakis,
S.A.
_____
Cancellation No. 23,470
_____
Frank P. Presta of Nixon & Vanderhye P.C. for Aris A. Zissis dba
Importer Wines and Spirits.
Neil A. Burstein of Law Offices of Neil A. Burstein for Karolos
Fix, Brewing-Malting-Ice Making Company and D. Kourtakis, S.A.
_____
Before Quinn, Bucher and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
On November 16, 1994, Aris A. Zissis dba Importer Wines and
Spirits (Zissis) filed a petition to cancel a registration
assigned to D. Kourtakis, S.A. (Kourtakis) for the mark FIX for
"beer."1 As the ground for cancellation, petitioner alleges that
1 Registration No. 655,924; issued December 17, 1957 based on ownership
of a Greek registration; renewed. The registration originally issued
in the name of Karolos Fix, Brewing-Malting-Ice Making Company (Karolos
Fix) and was subsequently assigned, according to Office records, to D.
Kourtakis S.A. from the National Bank of Greece S.A. on August 2, 1995.
The Board on January 30, 1996 issued an order granting respondent's
motion to join Kourtakis as a defendant in this proceeding.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 23,470
2
the mark FIX "has not been in use in the United States or in
commerce with the United States by Registrant or any successor in
interest on or in connection with beer or any related products
for more than six (6) years."2
Respondent denied the salient allegations of the petition to
cancel.
The record consists of the file of the involved
registration; petitioner's notice of reliance on certain of
respondent's discovery responses; the testimony (with exhibits)
of petitioner, Aris A. Zissis; respondent's notice of reliance on
its own responses to certain interrogatories under Trademark Rule
2.120(j)(5); and the testimony of Vassilis Kourtakis, Chief
Executive Officer of D. Kourtakis S.A. based on a deposition upon
written questions.
Both parties filed trial briefs3 and an oral hearing was
held.
Mr. Zissis, who came to the United States from Greece in
1955, testified that he had first heard of FIX beer as a child in
Greece in the early 1950's. It appears that FIX beer was first
2 Petitioner alleges that on June 7, 1994, petitioner filed an
application to register the mark FIX for beer based on an allegation of
a bona fide intention to use the mark in commerce and that registration
was refused on the basis of the subject registration.
3 In view of the circumstances set forth in petitioner's contested
motion to accept its late-filed reply brief, and since the Board
desires to have the benefit of petitioner's brief, the motion is
granted. In any event, there is no prejudice to respondent by allowing
the brief since a denial of this motion would not have affected the
outcome of this case.
Cancellation No. 23,470
3
produced and sold in Greece by the Karolos Fix brewery in 1864.
Zissis became an importer of wines and spirits in 1969 and began
importing FIX beer into the United States in 1983. Between March
1983 and August 1983, Zissis sold a total of 3,000 cases of beer.
No further shipments of FIX beer were made after the August
1983 shipment to Zissis. Later that month, the Greek government
shut down the Karolis Fix brewery by a process referred to as
"socialization." (Zissis test. pp.41-43). The government
reviewed the records of "problematic industries" (Zissis test.
p.41), which apparently were large companies with substantial
debt. According to Zissis, creditors were looking for recovery
of their interests in such companies. The National Bank of
Greece was the main creditor of the Karolis Fix brewery, one of
the "problematic" companies. The Bank responded to an
"international tender" by the Greek government (Kourtakis test.
p.9) for the sale of the assets of the brewery and, sometime in
1984, acquired ownership and control of the assets and the mark
for two billion drachmas (approximately $2.7 million in today's
dollars).
In October of that year, Zissis began his efforts to revive
production and exportation of FIX beer into the United States.
Because the Karolos Fix brewery was involved in litigation,
Zissis proposed a merger of the FIX label and the formula for the
beer to be manufactured at Carlsberg Breweries, another abandoned
brewery in Greece. Zissis eventually met with representatives of
Cancellation No. 23,470
4
the Greek government, the Karolis Fix company, and the National
Bank of Greece, and by August 1985 had obtained approval from the
"Greek authorities" to manufacture FIX beer at the Carlsberg
Brewery for export to the United States. (Zissis test. p.62).
After some initial quality control problems which were rectified
by the Bank, Zissis ordered between 2,000 and 3,000 cases of beer
which were subsequently distributed in the United States in early
1986. After attempting another purchase order for FIX beer in
1986, Zissis was informed, and he later confirmed, that the
Carlsberg Brewery had been shut down. The cause of the shutdown
is not explained.
Subsequent to the 1986 shipment of FIX beer to Zissis, no
further sales of FIX beer were made in the United States and
there is no evidence of any further activity with respect to the
FIX mark until 1993. In that year, Zissis again attempted to
manufacture FIX beer for sale in the United States, this time
with beer that would be supplied by Holsten Brewery in Germany.
Then on June 7, 1994, Zissis filed an application with the Office
to register the FIX mark for beer. Zissis states that he did not
go forward with production of the beer because he subsequently
received a cease and desist letter from respondent's counsel in
August 1995.
In the meantime, in the beginning of 1995, the National Bank
of Greece (by an "invitation to tender") began seeking offers to
purchase the assets of the Karolis Fix brewery. On August 2,
Cancellation No. 23,470
5
1995, the Bank sold its rights to the FIX trademarks and the
associated good will to Kourtakis for a down payment of 50
million drachmas (approximately $138,000 in today’s market), 22
million drachmas to be paid several months later followed by a
further payment of 18 million drachmas, and four years of royalty
payments to the Bank based upon a percentage of sales.
Under Section 45(a) of the Trademark Act, a mark is deemed
to be abandoned when its use has been discontinued with intent
not to resume. A prima facie case of abandonment may be
established by petitioner with proof of nonuse in the United
States for two years.4 See Section 45 of the Act and Imperial
Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390
(Fed. Cir. 1990).
The prima facie case "eliminates the challenger's burden to
establish the intent element of abandonment as an initial part of
[his] case" and creates a rebuttable presumption that the
registrant abandoned the mark without an intent to resume use.
See Imperial Tobacco Ltd., supra at 1393. This presumption
shifts the burden to the registrant to (1) prove that he used the
mark during the statutory period or intended to resume use of the
mark; or (2) prove excusable nonuse that would negate the
4 Effective January 1, 1996, Section 45 was amended to provide that
three years nonuse constitutes prima facie evidence of abandonment.
However, because this proceeding was filed prior to that date and is
based on facts which existed prior to that date, we have decided the
issue of abandonment based on the pre-1996 statutory provision.
Stromgren Supports Inc. v. Bike Athletic Co., 43 USPQ2d 1100 (TTAB
1997).
Cancellation No. 23,470
6
presumptive intent to abandon or not to resume use of the mark.
See Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir.
1998), aff'g, 41 USPQ2d 1731, 1376 (TTAB 1996) and Imperial
Tobacco Ltd., supra at 1395. An "intent to resume use" means an
intent to resume use in the United States. See Imperial Tobacco
Ltd., supra at 1393 ("[t]he terms 'use' and 'nonuse' mean use and
nonuse in the United States").
Respondent admits that there have been no sales under the
FIX mark for a period sufficient to establish a prima facie case
of abandonment. (Respondent's brief p.5). In fact, it is
undisputed that there have been no sales of FIX beer in the
United States since the date of the last shipment of beer to
Zissis in 1986. Therefore, the question in this case is whether
respondent has established either an intent to resume use of the
mark or excusable nonuse of the mark.
Respondent maintains that nonuse of the mark was caused by
outside forces, that is, the involuntary shutdown of the Karolos
Fix brewery by the Greek government in 1983, which, according to
respondent, rebuts the inference of abandonment and demonstrates
that "there was never any intention to abandon the FIX mark."
(Respondent’s brief p.5). Respondent relies on a number of cases
[including Sterling Brewers, Inc. v. Schenley Industries, Inc.,
441 F.2d 675, 169 USPQ 590 (CCPA 1971), Saratoga Vichy Spring Co.
v. Lehman, 625 F.2d 1037, 208 USPQ 175 (2d Cir. 1980), and Miller
Brewing Co. v. Oland's Breweries, 548 F.2d 349, 192 USPQ 266
Cancellation No. 23,470
7
(CCPA 1976)] in arguing that abandonment does not result from
withdrawal from the market caused by outside forces or by valid
business reasons, and if outside factors prevent use of the mark.
There is no question that the initial nonuse by the Karolis
Fix brewery is excusable and does not demonstrate either an
intent to abandon the mark or an intent not to resume use of the
mark. However, once the Bank acquired ownership and control of
the brewery’s assets in 1984, the "outside cause" for nonuse no
longer existed. There is no indication that conditions
unfavorable to the operation of the brewery or other economic
conditions persisted or were such that they prevented the Bank
from taking any action with respect to the business or the mark.
Indeed, not long after the Bank acquired the business in 1986,
Zissis negotiated with the Bank for a license to resume the
production of FIX beer for sale in the United States. Thus,
respondent has not shown that the nonuse of the FIX mark by the
Bank was excusable.
Once the reason for the nonuse passes, use of the mark or
activities showing an intent to use the mark must occur within a
reasonable time. See J. Thomas McCarthy, Trademarks and Unfair
Competition, §17:16 (4th ed. 2000) and Imperial Tobacco Ltd.,
supra at 1395 [requiring evidence "with respect to what
activities it engaged in during the nonuse period or what outside
events occurred from which an intent to resume use during the
Cancellation No. 23,470
8
nonuse period may reasonably be inferred"]. The nine-year period
of nonuse in this case is hardly reasonable.
Moreover, between the last shipment of FIX beer to the
United States in 1986, and the "invitation to tender" by the Bank
in 1995, there is no evidence that any activity whatsoever took
place with respect to the business or the mark anywhere in the
world, let alone in the United States. The facts in this case
stand in sharp contrast to those presented in the very cases
relied on by respondent. For example, in Sterling Brewers,
although the brewery which produced beer under the mark GOLDBLUME
BEER was shut down because of a labor strike, the Court found
that the "continuous activity" directed to maintenance of the
brewery during the nine-year period of nonuse "coupled with" the
efforts made to sell the brewery demonstrated "an intent to
maintain conditions conducive to resumption of production under
the mark" and established that "[t]here obviously was continuing
specific intent to preserve the capacity to transfer the right
and ability to resume production of [the beer] to a purchaser of
the brewery assets." (Supra at 594). Similarly, in Saratoga
Vichy Spring Co., where the State of New York closed its mineral
water bottling facility (due to the legislature’s decision that
the State withdraw from the mineral water business), the Court
found no abandonment during a seven-year hiatus inasmuch as the
State "sought continuously to sell the business" with the
trademark during that time. In Miller Brewing Co., the evidence
Cancellation No. 23,470
9
showed that, even though shipments of SCHOONER beer to the United
States had been discontinued "for several business and economic
reasons," there was active promotion of the mark in the United
States, evidence of offers to sell the product, and a renewed
license to sell the product in one state during the five-year
period of nonuse.
In this case, there is no evidence that for this nine-year
period, the Bank made any attempt, or even had any plans, to
either itself resume the business in the United States, to sell
or license the business to others, or to take any steps to keep
the FIX name before the public.5 In short, there is no evidence
to overcome the presumption that the mark had been abandoned
during that time. Thus, contrary to respondent’s claim, the
Bank's actions in seeking purchasers for the assets of the
brewery in 1995 followed by the Bank's subsequent sale of the
assets to Kourtakis later that year do not demonstrate an intent
by either respondent or its predecessor to resume use of the
mark. Such activities occurred after the mark had been abandoned
and cannot serve to cure the abandonment. See Auburn Farms Inc.
5 Respondent claims that prior to the purchase by Kourtakis, the Bank
itself attempted to resume operations and had signed an agreement with
the Hellenic Brewing and Vinefecation Company for the production of
beer under the FIX mark. However, the testimony on this matter is
vague and to the extent that any such efforts were made, they were
admittedly unsuccessful and appear to have occurred prior to the 1986
shutdown of the Carlsberg Brewery and the final shipment of beer to
Zissis in 1986. If anything, this asserted activity is simply further
evidence that the Bank was not prevented from carrying on business or
taking action with respect to the FIX mark.
Cancellation No. 23,470
10
v. McKee Foods Corp., 51 USPQ2d 1439 (TTAB 1999) and Money Store
v. Harriscorp Finance, Inc., 689 F.2d 666, 216 USPQ 11 (7th Cir.
1989).
We note the claim by Mr. Kourtakis that he was willing to
pay a "high price" for rights to the FIX mark "because of the
fame of the trademark and the existing know-how in the production
of beer" and because "FIX beer is considered as one of the five
famous trademarks in Greece." (Kourtakis test. p. 14).
Respondent is required to show an intent to resume use of the
mark in the United States, and the question of whether the FIX
trademark still is or ever was "famous" in Greece, is simply not
relevant to that showing. The "high price" Kourtakis was willing
to pay in Greece for the rights to the mark and the associated
good will is not evidence of fame or of the existence of any good
will in the mark in the United States.6
6 Thus, respondent's reliance on Sterling Brewers, Inc., supra is
misplaced. The Court found in that case that the buyer's willingness
to pay a considerable sum for the rights to the mark and the associated
good will was evidence that the mark still had significance as an
indication of origin and a symbol of good will. Unlike Sterling, we
have no evidence of good will residing in the FIX mark. In any event,
the Court did not find that the purchase price was sufficient in itself
to overcome the presumption of abandonment. As we pointed out earlier,
the Court's finding of an intent to resume use in Sterling was based on
the "continuous activity" directed to maintenance of the brewery during
the nine-year period of nonuse "coupled with" the efforts made to sell
the brewery which demonstrated "an intent to maintain conditions
conducive to resumption of production under the mark" and established
that "[t]here obviously was continuing specific intent to preserve the
capacity to transfer the right and ability to resume production of [the
beer] to a purchaser of the brewery assets." (Supra at 594). Those
circumstances do not exist in this case.
Cancellation No. 23,470
11
Accordingly, we find that respondent's predecessor abandoned
the FIX mark and that use of the mark was discontinued with
intent not to resume use.
Decision: The petition to cancel is granted, and
Registration No. 655,924 will be cancelled in due course.