Cabell-Wayne Association of the Blind, Inc.v.L.F. Fowler

Trademark Trial and Appeal Board

Oct 20, 2003

No. 91122156 (T.T.A.B. Oct. 20, 2003)

Mailed:
October 20, 2003
Paper No. 40
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Cabell-Wayne Association of the Blind, Inc.
v.
L.F. Fowler
________
Opposition No. 91122156
to Application Serial No. 75937529
_______
Monika J. Hussell of Jackson Kelly PLLC for Cabell-Wayne
Association of the Blind, Inc.
L.F. Fowler, pro se.
_______
Before Simms, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
L.F. Fowler (a U.S. citizen and resident of Huntington,
WV) seeks to register on the Principal Register the composite
mark shown below:
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91122156
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for services recited as “providing information on the blind
and blind focused social service agencies and blind focused
service organizations and associations via the internet, mail
or telephone,” in International Class 42.1
Registration has been opposed by Cabell-Wayne2 Association
of the Blind, Inc. (a West Virginia non-profit corporation) on
the ground that it has previously used the initialism CWAB and
the following logo:
3
Opposer asserts that these marks, individually and
combined, have been used since long prior to applicant’s
filing date herein. Opposer then asserts that applicant’s
mark, if it is used in connection with his recited services,
so resembles opposer’s previously used service marks and
1 Application Serial No. 75937529 was filed on March 6, 2000
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
2 The record shows that Cabell County (Huntington) and Wayne
County are located in the western part of West Virginia, close to
the Kentucky and Ohio borders.
3 This image is described in opposer’s West Virginia state
trademark registration for this exact logo as “a blind man and a
woman, with the woman using a cane and walking with the man using a
dog guide.”
Opposition No. 91122156
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trademarks that it would be likely to cause confusion, to
cause mistake, or to deceive.
Applicant, in his answer, denied the salient allegations
of the notice of opposition.
A trial was conducted in accordance with the Trademark
Rules of Practice. The record consists of the pleadings; the
file of the opposed application; opposer’s trial deposition of
opposer’s Executive Director, Paul R. Slone, with exhibits,
and of applicant, Mr. Lamont (“Monty”) Frederick Fowler, with
exhibits; and applicant’s trial deposition of Mr. Slone. Only
opposer filed a brief on the case and no oral hearing was
requested.
Based upon careful consideration of the testimony and
other evidence properly of record in this opposition
proceeding, we hold that opposer has met its burden of proof
with regard to its likelihood of confusion claim under Section
2(d) of the Lanham Act.
Opposer’s priority
The evidence of record establishes that opposer has used
the image of two people walking with a guide dog (often
referred to in this record as opposer’s “logo”) as a trademark
and as a service mark since at least as early as 1989.4 Also
4 According to the testimony of opposer’s Executive Director,
this mark was adopted in the “fall of 1989.” Opposer’s Trial
deposition of Paul R. Slone (hereinafter, “Slone”), pp. 6 - 8, 11 –
Opposition No. 91122156
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according to the testimony of opposer’s Executive Director,
the initialism CWAB was adopted “about that time [1989]”
(Slone, p. 6) to identify opposer, its products and services.5
The record shows that both marks have been used continuously
to the present (Slone, p. 6). These are dates well prior to
the earliest date upon which applicant can rely, i.e., its
March 6, 2000 application filing date. Hence, we find that
opposer has established its priority.
Likelihood of Confusion
We turn then to the remaining issue before us, namely,
the question of likelihood of confusion. In the course of
determining the question of likelihood of confusion herein, we
have followed the guidance of In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973).
The du Pont case sets forth each factor that should be
considered, if relevant information is of record, in
determining likelihood of confusion. Moreover, we note that
in any likelihood of confusion analysis, two key
19, and Exhibits 2, 5, 6, and 7, including the August 1990 “Guide
Page” showing use of the logo.
5 On the other hand, we note that opposer’s 1990 newsletter of
record referred to the organization as “CWSVI” (“Cabell-Wayne
Services for the Visually Impaired”). In any case, clearly dated
usage of the designation CWAB as of 1997 was demonstrated with
documentary evidence in “Guide Page: The monthly newsletter of
Cabell-Wayne Association of the Blind, Inc.,” October 1997 (Slone,
Exhibit 2), and this usage clearly predates applicant’s filing date
herein.
Opposition No. 91122156
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considerations are the similarities between the marks and the
relationships between the goods or services. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
Accordingly, we turn first to the relationship between
the services as recited in applicant’s application and the
goods and services in connection with which opposer’s prior
marks have been in use as shown through the evidence of
record. From the recitation contained in his application
papers, applicant intends to provide information about the
blind, and about agencies, organizations, and associations
focused on the blind. Opposer is an agency whose mission is
to help the blind and severely visually impaired achieve
maximum independence in a variety of ways. Opposer’s
activities include the collection and dissemination of
information of interest to the blind. (Slone, p. 5; Opposer’s
Trial deposition of L.F. Fowler (hereinafter, “Fowler”), p. 9)
The testimony depositions of Messrs. Slone and Fowler both
demonstrate that, indeed, from at least 1999 through 2002, Mr.
Fowler’s website focused almost exclusively on opposer.
(Fowler, pp. 23 – 36) Hence, we find that applicant’s recited
services are very closely related to the services being
provided by opposer.
Opposition No. 91122156
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Moreover, turning to the du Pont factors dealing with the
similarity or dissimilarity of established, likely-to-continue
trade channels as well as the conditions under which and
buyers to whom sales are made, we must presume that
applicant’s services will move through all of the normal
channels of trade to all of the usual consumers of services of
the type recited,6 and that this would include the same class
of consumers that are being served by opposer’s services.
Hence, in looking to these two related du Pont factors, we
conclude that the channels of trade and classes of purchasers
will be the same.
As to the marks, opposer uses the initialism CWAB and the
logo both separately and together. The logo appears in
opposer’s monthly publication, invitations for special
occasions (Slone, pp. 12 – 13), on the side of its shuttles,
vans and other vehicles, on its concession stand in Marshall
University’s football stadium, on billboards and placards
(Slone, pp. 13 – 16), its bank drafts (Slone, pp. 17 – 18),
letterhead (Slone, p. 18), forms for internal usage, and
clothing items such as uniforms, hats, T-shirts and jackets
(Sloan, Exhibit 2). Many of the above referenced items also
show the letters CWAB being used apart from the logo. When
opposer, as an entity, is mentioned in news publications, it
6 See Canadian Imperial Bank of Commerce, National Association v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir.
Opposition No. 91122156
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is often referred to simply as “CWAB.” (Slone, p. 8). The
record also contains undated photographs7 showing the two
indicators used together on the back of a van and on the front
of a cap:
8
In deriving his composite mark, applicant has inserted a
substantially exact representation of opposer’s logo into a
circle and then added opposer’s CWAB initialism beneath it.
The only other new matter applicant has added to opposer’s two
prominent source-indicators is “.org” – a top level Internet
domain (TLD) name.
Of course, while we compare the marks in their
entireties, the TLD portion of a domain name has no source-
1987).
7 Q: … [T]hese are true and accurate pictures, all taken before
the filing date of [applicant’s] application, is that correct?
A: Yes.
(Slone, p. 19).
8 (Slone, p. 19, Exhibit 5).
Opposition No. 91122156
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indicating significance.9 Moreover, while the letters CWAB are
clearly derived from the initials of opposer’s trade name,
this initialism would have to be considered an arbitrary
designation for its services. Similarly, while the logo may
be suggestive of services for those having impaired vision, we
have no reason, on this record, to believe this is anything
but an image designed specifically by (or for) opposer.
In this context, we find applicant’s derivation of a name
for his webpage efforts to be particularly disingenuous --
choosing the name “Campaign for Workers Assisting the Blind”
supports a CWAB initialism. Similarly, the degree to which
applicant’s image resembles opposer’s logo cannot be explained
as coincidental.
In fact, we find applicant’s strained testimony on the
creation of his design element to be incredulous. The record
shows that applicant was the “media and marketing manager” for
opposer from 1994 through 1997 (Slone, p. 5; Fowler, pp. 7,
41). Among other responsibilities, this involved implementing
the policies of opposer’s board of directors as to the correct
usage of opposer’s trademarks and service marks, editing
9 See 555-1212.com, Inc. v. Communication House International,
Inc., 157 F.Supp. 2d 1084, 59 USPQ2d 1453 (N.D.CA. 2001); In re
Martin Container Inc., 65 USPQ2d 1058 (TTAB 2002); In re
CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002); and In re Page,
51 USPQ2d 1660 (TTAB 1999). See also, TMEP §§1209.03(m) and 1215.04
(3rd ed. May 2003); and 1 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition, §7:17.1 (4th ed. 2001).
Opposition No. 91122156
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opposer’s monthly newsletter10 and writing grant applications.
(Slone, pp. 5, 20 – 21; Fowler, pp. 9, 68 – 69).
Nonetheless, when asked about the origins of the image
contained within the circle of his composite drawing,
applicant testified that in spite of his limited computer
skills and the fact that he is clearly not an artist, he
painstakingly drew this image himself in the “Paint” program
of Windows, beginning with crude stick figures and then
filling them in until such time as the image “looked like
something” (Fowler, pp. 38 – 40).
Opposer’s logo Applicant’s image 11
10 “Guide Page: The monthly newsletter of Cabell-Wayne
Association of the Blind, Inc.,” October 1997 (Slone, Exhibit 2),
11 In fact, when these two electronic images are laid on top of
each other, the pixels match up precisely on most of the image.
Contrary to Mr. Fowler’s testimony of working from stick figures, it
appears much more likely that Mr. Fowler started with an extant
electronic image of opposer’s logo, and then made minor
modifications with his computerized drawing program (e.g., adding a
pointed skirt to the woman’s dress and enhancing her breasts (“… The
woman in [my mark] appears to be more, I guess, well formed and
feminine looking…” Fowler, pp. 42 – 43), removing the strap from
the top of a whittled-down cane, giving the male figure a haircut,
placing one of the dog’s front legs a half-step behind the other,
and then loping off the dog’s raised ears).
Opposition No. 91122156
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However, applicant ultimately admitted that one has to look
closely at the two drawings in order to notice the differences
(Fowler, p. 53).
In any case, given the close relationship of the
respective services and the remarkable similarity of the
marks, we find a strong case for likelihood of confusion in
the instant case. Furthermore, we must consider that the
severely visually impaired face obvious challenges in
distinguishing source-indicators by their appearance. Hence,
in light of the remarkable similarity between the respective
marks herein, we find that the opportunity for potential
confusion is substantial.
We turn next to the du Pont factor focusing on the number
and nature of similar marks in use on similar goods or
services. From the time of filing his answer to the notice of
opposition, applicant has referred throughout this trial to
several third-party uses of CWAB designations. During trial,
applicant proffered a photocopy of a single third-party
federal registration. However, there are multiple problems
with this showing. First, it is well settled that an extant
federal trademark registration alone does not prove actual use
of the mark. Second, there are proper ways to make such a
registration of record, and applicant failed to do that in
this instance. Third, this registration has now expired.
Opposition No. 91122156
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Finally, this particular registration – for the mark “Cwab”
for goods identified as “lubricating compound for molds for
casting of glass products” – is apropos of nothing as the
registration issued for goods completely unrelated to the
services involved herein. Because no trademark owner is
entitled to property rights in gross, the only arguably
relevant third-party registrations would be for marks actually
shown to be used in the same or related fields of goods or
services (e.g., those directed to the blind or other
physically handicapped individuals, etc.). Similarly, even if
properly entered into the record (which it is not),
applicant’s Internet evidence of CWAB used in connection with
organizations such as “Catholic Wedding Answer Book,”
“Catholic Workers Association of Bangladesh,” “Clean Water for
Armand Bayou” and “Cricketers’ Welfare Association of
Bangladesh” is also totally irrelevant, for the same reasons
explained above.12
Hence, we find based upon this entire record that both
components of applicant’s involved mark, which he adopted from
his former employer, are arbitrary (CWAB) and/or suggestive
12 Applicant has even put in evidence of Internet hits for the
slightly rearranged letters CAWB (e.g., standing for the “Campaign
Against Workplace Bullying Ways”). This too was not properly made
of record, and moreover, is irrelevant in determining the issue of
likelihood of confusion between applicant’s and registrant’s marks
as applied to their respective services.
Opposition No. 91122156
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(logo), and that individually and together, they are strong
source-indicators as applied to goods and services directed to
the blind and severely visually impaired.
As to any other facts that may be probative of the effect
of applicant’s intentions to adopt and use his claimed mark,
applicant’s history with opposer and the nature of his
Internet activities at www.cwab.org between 1999 and 2002
should be mentioned.
It is clear that sometime after Mr. Fowler left his
employment with opposer (“CWAB”) – a not-for-profit social
service agency – he secured cwab.org as the domain name for
his personal website. In selecting this particular domain
name, he chose a combination virtually certain to create
confusion with his former employer. In fact, the text of his
webpages shows that applicant repeatedly used the designation
CWAB as a shorthand reference to opposer. He used the site to
make available on the Internet unflattering and disparaging
information about opposer. Then, although he never used the
composite image that is the subject of this application on his
website (Fowler, pp. 37 – 38), in designing his composite
service mark and filing this trademark application, he
knowingly added a substantially exact representation of
opposer’s logo to his misleading domain name.
Opposition No. 91122156
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Applicant appears, in part, to justify his various
actions (e.g., domain name registration, federal trademark
application, etc.) based upon the fact that opposer failed to
seek federal trademark or service mark registrations,
allegedly was tardy in getting a domain name for its
initialism and delayed in producing a working website. Of
course, if resources were available for such purposes, it may
well have been a wise business practice for opposer to have
initiated these steps earlier. Nonetheless, opposer’s failure
to pursue these steps during the period that applicant was
employed with opposer did not leave these valuable properties
fair game for applicant’s taking upon his departure.
Trademark registrations are most beneficial but are not
mandatory. Hence, there was certainly no obligation on
opposer’s part to secure such legal protections, nor does
opposer lose its common law rights by failing to pursue
registrations.
The testimony taken by the parties focuses, inter alia,
on applicant’s bona fides. According to his testimony,
applicant fancies himself a whistleblower committed to shining
the light of truth into the shady corners of a mismanaged, if
not unprincipled, agency. (Fowler pp. 24 – 37) By contrast,
opposer views applicant as a disgruntled former employee
committed to harassing, and perhaps harming, opposer (Slone,
Opposition No. 91122156
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p. 10; Applicant’s deposition of Mr. Slone, pp. 15, 19, 28 –
102, 109 – 114, 126 – 127) However, we need not enter into
this fray. The veracity of the many needling allegations
contained within applicant’s website is irrelevant in the
context of our determination under Section 2(d) of the Lanham
Act. Applicant’s disclaimers and other attempts at
vindicating legalese sprinkled among his website content are
also irrelevant to our determination herein. Undeniably,
applicant’s actions, taken as a whole, demonstrate his
hostility to opposer as well as a blatant disregard for
opposer’s intellectual property rights. Accordingly, to the
extent that applicant’s intentions enter into our likelihood
of confusion determination herein under the final du Pont
factor, they weigh heavily against applicant.
Decision: The opposition is sustained and registration
to applicant is hereby refused under Section 2(d) of the
Lanham Act.