Dille Family Trustv.Nowlan Family Trust

Trademark Trial and Appeal Board

Sep 25, 2015

No. 91200643 (T.T.A.B. Sep. 25, 2015)

This Opinion is not a
Precedent of the TTAB
Mailed: September 25, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Dille Family Trust
v.
Nowlan Family Trust
_____
Opposition No. 91200643
_____
Vincent G. LoTempio and Daniel I. Herman of Kloss, Stenger & LoTempio for Dille
Family Trust.

John J. O’Malley of Volpe and Koenig P.C. for Nowlan Family Trust.
_____

Before Cataldo, Adlin and Masiello,
Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:

Nowlan Family Trust (“Applicant”) filed an application1 to register the mark
BUCK ROGERS in standard characters for the following goods and services:
Motion picture films about science fiction, fantasy
heroism and action adventure; science fiction, and motion
picture films about fantasy heroism and action adventure
for broadcast on broadcast mediums; audio tapes, audio-
video tapes, audio video cassettes, audio video discs, and

1 Application Serial No. 77650082, filed on January 15, 2009 under Trademark Act Section
1(b), 15 U.S.C. § 1051(b), on the basis of Applicant’s alleged bona fide intention to use the
mark in commerce.
Opposition No. 91200643
2

digital versatile discs featuring music, comedy, drama,
action, adventure, and animation; stereo headphones;
batteries; cordless telephones; audio cassette and CD
players; CD ROM computer game discs; telephone and
radio pagers; short motion picture films about science
fiction, fantasy heroism and action adventure and
adventure; video cassette recorders and players, compact
disc players, digital audio recorders and players; radios;
mouse pads; eyeglasses, sunglasses and cases therefore;
game equipment, namely, video game machines for use
with televisions, hand-held electronic games adapted for
use with television receivers only and player operated
electronic controllers for electronic video game machines;
video and computer game programs; video game
cartridges and cassettes; cellular telephone accessories,
namely, cell phone covers, batteries, fitted plastic films
known as skins for covering and providing a scratch proof
barrier, decorative charms, decorative ornaments,
headsets, boosters, connectivity kits and memory cards;
encoded magnetic cards, in International Class 9;
Printed matter and paper goods, namely, books featuring
science fiction, fantasy heroism and action adventure,
comic books, magazines featuring science fiction, fantasy
heroism and action adventure; stationery, writing paper,
envelopes, notebooks, diaries, note cards, greeting cards,
trading cards; lithographs; pens, pencils, cases therefor,
erasers, crayons, markers, colored pencils, painting sets
for children, chalk and chalkboards; decals, heat
transfers; posters; mounted and unmounted photographs;
book covers, book marks, calendars, gift wrapping paper;
Paper party decorations; Printed patterns for costumes,
pajamas, sweatshirts and t-shirts; paper party favors, in
International Class 16;
Clothing, namely, pajamas, t-shirts, shirts, jumpers,
sweatshirts, vests, coats, jackets, overcoats, trousers,
shorts, socks, gloves, ties, scarves, skirts, underwear,
footwear; headgear, namely, hats, caps, head scarves,
baseball caps and headbands, clothing accessories,
namely, belts, gloves, suspenders, sweat bands, straps for
bras, in International Class 25;
Toys, namely, musical toys, inflatable toys, electric action
toys, punch toys, plush toys, talking toys, toy cars, role-
Opposition No. 91200643
3

playing toys in the nature of play sets for children to
imitate real life occupations, toy boats, toy airplanes, toy
weapons, toy rocket ships, construction toys, toy putty, toy
scooters, toy action figures and accessories for use with
toy action figures, toy model vehicles, water squirting toys
and toy model space craft, toy building blocks, toy model
hobby craft kits comprising paints, beads, ceramics,
plastics, crayons, stencils, toy model vehicles and related
accessories sold as a units, toy modeling dough kits
comprising toy modeling dough, molds and accessories for
use therewith sold as units, toy vehicles, toy weapons, toy
model vehicles and accessories therefor sold as a unit,
wind-up toys and miniature toy helmets; sporting goods,
namely, beach balls, playground balls, soccer balls, sport
balls, baseball balls, basketball balls, baseball bats, and
baseball gloves; games, namely, action type target games,
board games, card games, hand held units for playing
electronic games other than those adapted for use with an
external display screen or monitor, virtual arcade
shooting game machines, trading card games, parlor
games, action skill games, coin operated and non-coin
operated pinball machine games, stand alone video game
machines, collectible card games, and collectible
miniature board games, in International Class 28;
Entertainment services, namely, an on-going series
provided through broadcast mediums, namely, television,
webcasts, and radio broadcasts, in International Class 41.
Dille Family Trust (“Opposer”) opposed registration of the mark on the ground
that the mark, as intended to be used in connection with the identified goods and
services, so resembles Opposer’s mark BUCK ROGERS as to be likely to cause
confusion, mistake or deception under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d); and dilution under Trademark Act Section 43(c), 15 U.S.C. § 1125(c).2
Opposer asserts that it has used the mark BUCK ROGERS in connection with a
variety of goods and services, commencing at least as early as 1928. Opposer also

2 Opposer’s reference to Trademark Act Section 43(a) as an additional basis for its dilution
claim is inapposite.
Opposition No. 91200643
4

pleaded ownership of two pending applications, Serial Nos. 77831393 and
77831213, and two expired registrations, Nos. 0714184 and 1555871.
Applicant, in its answer, denied the salient allegations in the notice of opposition.
The case is fully briefed.
I. The record.
The record includes the pleadings and, by operation of Trademark Rule 2.122,
37 C.F.R. § 2.122, the application file for the opposed mark.3
Applicant has submitted no evidence or testimony.
Opposer has filed the following:
- Testimony deposition of Louise A. Geer, Esq., Opposer’s Trustee, with
exhibits (40-41 TTABVUE).

- Notice of reliance on information from the USPTO’s online database relating
to Opposer’s pending applications Nos. 77831213 and 77831393; and pages
from a publication called Previews (49 TTABVUE).

II. Standing.
Ms. Geer testified that Opposer has produced a series of books with titles
including “Buck Rogers in the 25th Century: The Western Publishing Years,” “Buck
Rogers in the 25th Century: the complete newspaper dailies,” and “Buck Rogers in
the 25th Century: the complete Sundays.”4 It is therefore clear that Opposer has a
real interest in the outcome of this proceeding. See Ritchie v. Simpson, 170 F.3d
1092, 1095, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999); Jewelers Vigilance Committee,

3 Applicant filed a notice of reliance on information relating to its involved application,
taken from the USPTO’s online database (44 TTABVUE); and subsequently filed a notice of
reliance seeking to delete that matter from the record (50 TTABVUE). Nonetheless, as
noted, the entire application file is automatically of record.
4 Geer Exhibit 19, 41 TTABVUE 3-69.
Opposition No. 91200643
5

Inc. v. Ullenberg Corp., 823 F.2d 490, 492-493, 2 USPQ2d 2021, 2023-24 (Fed. Cir.
1987). Opposer has therefore established its standing to oppose registration of
Applicant’s mark. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed.
Cir. 1999); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185 (CCPA 1982); Swiss Grill Ltd. V. Wolf Steel Ltd., __ USPQ2d __ (TTAB 2015);
Conolty v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302, 1308 (TTAB 2014);
Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (standing
established by showing of common law rights).
III. Opposer’s claim under Section 2(d).
Opposer brings its opposition under Trademark Act Section 2(d) on the ground of
likelihood of confusion. Under Section 2(d), the Patent and Trademark Office may
refuse registration of a mark that “so resembles … a mark or trade name previously
used in the United States by another and not abandoned, as to be likely, when used
on or in connection with the goods [or services] of the applicant, to cause confusion,
or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). We address first the issue of
priority.
The earliest date of use that Applicant claims, for its part, is January 15, 2009,
the date on which it filed the opposed application. (“Applicant does not dispute that
it has not alleged a date of first use earlier than this date.”)5 Applicant is entitled to
rely on that date as its date of constructive use. Cent. Garden & Pet Co. v. Doskocil

5 Applicant’s brief at 14-15, 54 TTABVUE 23-24.
Opposition No. 91200643
6

Mfg. Co., 108 USPQ2d 1134, 1140 (TTAB 2013); Larami Corp. v. Talk To Me
Programs Inc., 36 USPQ2d 1840 (TTAB 1995).
Opposer contends that its rights in the mark BUCK ROGERS date back to the
earliest publication of a newspaper comic strip regarding the fictional hero named
Buck Rogers. The evidence indicates that an Illinois corporation called National
Newspaper Service entered into a series of agreements (dated August 27, 1926,
November 15, 1929 and May 1, 1933) with an author named Philip F. Nowlan under
which Mr. Nowlan would supply “material suitable for newspaper publication,” also
described as “A story in strip form of conditions in America some five hundred years
hence.”6 The agreements anticipate that the work might be variously entitled “Buck
Rogers”; “Buck Rogers 2429 A.D.”; and “Buck Rogers 2433 A.D. (or in the Twenty-
Fifth Century).” On September 2, 1932, the same parties entered an agreement to
allow National Newspaper Service to sell related radio broadcast rights of “Buck
Rogers 2432 A.D. (or 25th Century).”7 In these agreements, the signature for
National Newspaper Service appears to read “John F. Dille.”
In 1936, an entity called John F. Dille Co. had dealings with Universal Pictures
Company, Inc.8 A recital in their agreement states:
WHEREAS, Dille represents that it is the sole owner of
the copyright and of all rights hereinafter stated to be
granted to Universal in and to a certain newspaper
feature consisting of a series of comic pages entitled

6 Geer Exhibits 1, 2 and 4, 40 TTABVUE 93-98, 101-103.
7 Geer Exhibit 3, 40 TTABVUE 99-100.
8 Agreement of January 11, 1936, Geer Exhibit 6, 40 TTABVUE 109-110. The record
contains only the cover page and the first page.
Opposition No. 91200643
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“BUCK ROGERS” and controls the trademarks and titles;
…9
An agreement of June 17, 1937 among National Newspaper Service, Philip
Nowlan, and Richard Calkins states that “John Dille Co. is a party to this contract
in all respects and in the same manner as it applies to National and agrees to be
bound hereby.10 It also contains the following release:
Nowlan and Calkins hereby waive and release any
objection or right of any kind they might have now or
hereafter in respect to the production of motion pictures of
BUCK ROGERS material by any party or parties with
whom National may contract, or have the opportunity of
contracting, respecting said motion picture rights in favor
of said party or parties. Nolan and Calkins also waive and
release any right they might have to obtain compensation
therefor from said party or parties. This provision is to
safeguard said party or parties in the production of said
motion pictures against any objection by Nowlan and/or
Calkins. …
On the basis of these documents, it is plausible (but not certain) that Phillip
Nowlan may have developed trademark rights in marks that include the
designation BUCK ROGERS, inasmuch as he appears to have produced and
delivered to National Newspaper Service a series of newspaper strips under those
titles. The title of a series of works can function as a trademark. In re Polar Music
Int'l AB, 714 F.2d 1567, 221 USPQ 315, 318 (Fed. Cir. 1983). If such rights existed,
we would not consider the June 17, 1937 release to have divested Mr. Nowlan of

9 Id., 40 TTABVUE 110.
10 Geer Exhibit 5, 40 TTABVUE 105-108. There is no signature on behalf of John F. Dille
Co., although the signatory for National Newspaper Service appears to be John F. Dille.
Opposition No. 91200643
8

them, as he released only those rights relating to the production of motion pictures
by certain particular parties.
If we assume that Mr. Nowlan’s trademark rights existed, the record indicates
that, after multi-party litigation involving Mr. Nowlan’s estate, they were
transferred to John F. Dille. A “Full and Compete Release and Assignment” dated
May 14, 1942, executed by Teresa Maria Nowlan, as executrix of Mr. Nowlan’s will,
states:
The party of the first part [Ms. Nowlan] hereby assigns,
releases, waives and conveys all … rights and interests of
any kind whatsoever … in and to all trade-marks, good
will, titles including specifically “Buck Rogers” and “Buck
Rogers In The 25th Century” and all characters, patents
and inventions and all other subject matter relating in
any way to the Buck Rogers features to John F. Dille.11
Here the chain of title beginning in 1926, to the extent that we can trace it on this
record, ends. Thereafter, the entire roster of interested parties appearing in the
record changes. Opposer is not John F. Dille, but the Dille Family Trust. Nothing in
the record explains the connection between the two, if any, and nothing shows how
any trademark rights of Mr. Dille were transferred to Opposer, if they were
transferred at all. There are three later assignments (two of which are represented
in the record only by their first and last pages) that indicate transfers of unspecified
marks and registrations that are identified only by registration number, as follows:
February 1, 1968: Robert C. Dille assigned nine marks and
registrations to National Newspaper Syndicate, Inc.12

11 Geer Exhibit 8, 40 TTABVUE 114.
12 Geer Exhibit 62, 40 TTABVUE 168-169.
Opposition No. 91200643
9

May 31, 1974: National Newspaper Syndicate, Inc. assigned seven
marks and registrations to Robert C. Dille.13

September 24, 1982: Robert C. Dille assigned 16 marks and
registrations to himself and Virginia N. Dille in their capacities as
Trustees of The Dille Family Trust.14

There is another assignment, also dated September 24, 1982, that actually refers
to the mark BUCK ROGERS. That document states that Robert C. Dille assigns 2
marks (TIGER MAN and BUCK ROGERS) and registrations to himself and
Virginia N. Dille in their capacities as Trustees of The Dille Family Trust.15 It is in
the two 1982 documents described above that Opposer makes its first appearance in
this record, but the record shows no connection between the properties described
therein and any rights that may have been in the hands of John F. Dille or Philip F.
Nowlan. The testimony shows that Robert C. Dille was the son of John F. Dille, and
it appears that Virginia Dille was Robert’s wife.16 However, the record shows no
transfer of any property, much less the specific properties at issue in this case,
between John and Robert Dille. If there is any relationship between National
Newspaper Service and National Newspaper Syndicate, Inc., it remains
unexplained. Accordingly, we can find, on this record, no connection between
Opposer and any trademark rights arising at the time of the original issuance of the
Buck Rogers newspaper strips.

13 Geer Exhibit 61, 40 TTABVUE 166-167.
14 Geer Exhibit 59, 40 TTABVUE 162-163.
15 Geer Exhibit 60, 40 TTABVUE 164-165.
16 Geer 69:8-12, 40 TTABVUE 71.
Opposition No. 91200643
10

Of course, Opposer need not trace its rights back to the earliest days of the Buck
Rogers newspaper strip in order to prevail in this proceeding. Opposer need only
show that its rights arose prior to January 15, 2009. We therefore consider whether
Opposer has demonstrated such rights.
The record shows that Opposer has issued a series of publications with titles such
as “Buck Rogers”; “Buck Rogers in the 25th Century: The Western Publishing
Years”; “Buck Rogers 25th Century A.D.”; “Buck Rogers in the 25th Century: the
complete newspaper dailies” (in numerous volumes); “Buck Rogers in the 25th
Century: the complete Sundays”; and “Buck Rogers in the 25th Century: The Dailies
and Sundays 1979-1980.”17 However, with the exception of the first three volumes of
the “complete newspaper dailies” compilation, all of these bear copyright notices
dated 2010 or later; and there is no evidence to indicate that Opposer published
these works at an earlier date.
The first three volumes of “Buck Rogers in the 25th Century: the complete
newspaper dailies” bear copyright notices reading “Copyright © 2009 The Dille
Family Trust, reprinted with permission.” These notices have limited evidentiary
weight. At best, they are hearsay statements to the effect that the works were first
published in 2009. See 17 U.S.C. § 401(b)(2). In any event, even if we consider these
notices as evidence that the works were published in 2009, we have no way of
knowing whether they were published before or after January 15 of that year. There

17 Geer Exhibit 19, 41 TTABVUE 3-69.
Opposition No. 91200643
11

is no testimony or other evidence on this point. We have given due consideration to
the copyright notice at 41 TTABVUE 15, which reads as follows:
Buck Rogers and Buck Rogers in the 25th Century® © 1964,
1979-80 and 2013 Dille Family Trust. …
Dates of original publication: Buck Rogers #2, August,
1979; #3, September, 1979; #4, October, 1979; #5,
December, 1979; #6, February 1980; #7, April, 1980; and
#1, 1964.
The assertion of dates of publication in a copyright notice is hearsay and cannot
be accepted for the truth of the matter asserted. There is no evidence of record to
show that Opposer issued the publications of 1964 and 1979-80 mentioned in the
notice; nor is there any evidence to suggest that any person or entity related to
Opposer had rights in the BUCK ROGERS mark as of those dates. Indeed, nothing
connects Opposer to the mark prior to 1982 (the date that Robert C. Dille purported
to transfer the mark BUCK ROGERS to Opposer).18 Although the record does show
substantial activity by Opposer under various BUCK ROGERS marks beginning in
2009, the record does not prove any such trademark use prior to Applicant’s filing
date of January 15, 2009.
We have given due consideration to the testimony of Louise Geer, Opposer’s
current trustee, who was appointed in 2011. She testified, for example:
The Dille Family Trust has used this mark continuously
since – well, at least 1929 and when they started with the
memorandum of agreement, and then they started the
newspaper strip. They’ve done movies, they did all kinds
of paraphernalia, sales, et cetera, over the years.19

18 40 TTABVUE 164-165.
19 Geer 27:8-14, 40 TTABVUE 29.
Opposition No. 91200643
12

On this point, we find Ms. Geer’s testimony to be unclear. The record does not
support the suggestion that The Dille Family Trust even existed in 1929; rather,
documents of record indicate that the trust was created in 1979.20 Where a party
seeks to establish its priority by means of the testimony of a single witness, the
testimony must be “clear, convincing, consistent and sufficiently circumstantial to
convince the trier of facts of its probative value,” and “not characterized by
inconsistencies, contradictions and indefiniteness.” H. Betti Industries, Inc. v.
Brunswick Corporation, 211 USPQ 1188, 1197 (TTAB 1981); see also Powermatics,
Inc. v. Globe Roofing Products Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965);
Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98
USPQ2d 1921, 1931 (TTAB 2011). However, Ms. Geer’s testimony is inconsistent
with other evidence of record. For example, her testimony refers to certain
agreements purportedly involving Opposer, while the documents of record indicate
that Opposer was not a party.21
Opposer’s evidence indicates that the process of producing the BUCK ROGERS
publications of 2009 through 2013 began prior to the filing of Applicant’s
application; however, that contention is supported by only a single page of evidence:
the first page of an agreement between Opposer and Herman and Geer

20 See, e.g., Geer Exhibit 33, 40 TTABVUE 122 (referring to “the trust instrument dated
August 16, 1979”).
21 See, e.g., Geer 21:13-21; 28:1-12, 40 TTABVUE 23, 30; compare Geer Exhibit 6,
agreement of January 11, 1936 between Universal Pictures Company, Inc. and John F.
Dille Co., 40 TTABVUE 109-110; and Exhibit 13, agreement of May 12, 1977 between
Universal Television and Leisure Concepts, Inc., 40 TTABVUE 117-118.
Opposition No. 91200643
13

Communications.22 The agreement appears to relate to Opposer’s intention to grant
“a non-exclusive license to publish the entire newspaper strip run of Buck Rogers in
the 25th Century …” At the top of the page is the date “3/16/2008,” and Opposer’s
witness stated that the agreement was dated March 16, 2008.23 The act of entering
into such an agreement is not use of a trademark; but we have considered whether
it indicates the kind of use analogous to trademark use that would be sufficient to
give rise to proprietary rights. We find that it does not. “Before a prior use becomes
an analogous use sufficient to create proprietary rights, the [plaintiff] must show
prior use sufficient to create an association in the minds of the purchasing public
between the mark and the [plaintiff’s] goods. … [T]he activities claimed to create
such an association must reasonably be expected to have a substantial impact on
the purchasing public ...” Herbko International Inc. v. Kappa Books Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002). This single page, relating to a single
contemplated transaction within the publishing trade, can tell us nothing about any
impact on the minds of the purchasing public.
The one other piece of evidence that involves Opposer and is dated prior to
Applicant’s filing date is the front page of a Memorandum of Agreement dated as of
October 31, 1996 between Walt Disney Pictures and Opposer.24 To the extent that
we can surmise, the contemplated agreement appears to grant to Disney “the
exclusive and irrevocable option (‘Option’) to acquire all right, title and interest …

22 Geer Exhibit 19, 41 TTABVUE 2.
23 Geer 31:3-6, 40 TTABVUE 33.
24 Geer Exhibit 14, 40 TTABVUE 119.
Opposition No. 91200643
14

including, without limitation, the exclusive motion picture, television, digital
television, video and computer games, videocassette, video and laser disc, computer
assisted media (including but not limited to CD-ROM,” [the page ends here]. The
Preamble refers to rights in and to
the comic book character “BUCK ROGERS” owned by
Owner and any and all publications and radio programs
based thereon (collectively referred to as the “Property”)
in connection with a proposed motion picture based
thereon tentatively entitled “BUCK ROGERS” (the
“Picture”).
This document makes no mention of any trademark. In any event, it does not
demonstrate that either Opposer or Disney ever used a BUCK ROGERS trademark
on any product. Accordingly, it does not demonstrate trademark rights, much less
that Opposer has prior rights in the mark BUCK ROGERS.
Finally, the record contains a number of “deal memos” relating to product
licenses. However, they bear dates from May 5, 2010 through September 23, 2013.25
Accordingly, they cannot prove use of the BUCK ROGERS mark by Opposer prior to
January of 2009.
After careful review of all of the evidence of record, we find that Opposer has
failed to demonstrate proprietary rights in the BUCK ROGERS designation prior to
Applicant’s filing date. See Otto Roth & Co., v. Universal Foods Corp., 640 F.2d
1317, 209 USPQ 40, 43 (CCPA 1981); see also 15 U.S.C § 1052(d). On this record,
Opposer’s claim under Section 2(d) must therefore fail, and we need not consider the
other elements of Opposer’s claim of likelihood of confusion.

25 Geer Exhibits 51, 34, 36, 37, 39, 40, 42, 43, 53, 40 TTABVUE 139-155.
Opposition No. 91200643
15

IV. Opposer’s claim under Section 43(c).
We turn now to Opposer’s claim of dilution under Section 43(c). Applicant filed its
application under Trademark Act Section 1(b), on the basis of its intent to use its
mark. Where such an application is opposed, an essential element of a dilution
claim is a demonstration that the opposer’s mark became famous prior to the filing
date of the application. Midwestern Pet Foods Inc. v. Societe des Produits Nestle
S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1439, citing Toro Co. v. ToroHead Inc., 61
U.S.P.Q.2d 1164, 1174 (TTAB 2001); see also 15 U.S.C. 1125(c). Inasmuch as
Opposer cannot demonstrate its proprietary interest in the asserted mark prior to
Applicant’s filing date, as demonstrated above, Opposer cannot make the necessary
showing of fame as of an appropriate time, and its claim of dilution must fail.
Decision: The opposition is dismissed as to both asserted grounds, Trademark
Act Sections 2(d) and 43(c).