Hubcap Heaven, LLCv.Hubcap Heaven, Inc.

Trademark Trial and Appeal Board

Jan 25, 2005

No. 94001147 (T.T.A.B. Jan. 25, 2005)

Mailed: January 25, 2005
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Hubcap Heaven, LLC
v.
Hubcap Heaven, Inc.
________
Concurrent Use No. 94001147
_______
James N. Dresser of McGinn & Gibb PLLC for Hubcap Heaven,
LLC.
Hubcap Heaven, Inc., pro se.1
_______
Before Seeherman, Chapman and Rogers, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
A concurrent use application was filed on October 13,
1995 by Hubcap Heaven (a Maryland partnership composed of
Thomas J. Jackson and Paul R. Jackson), later assigned to
Hubcap Heaven, LLC (a Maryland limited partnership), to
register on the Principal Register the mark HUBCAP HEAVEN
for services amended to read “wholesale and retail store,
1 The excepted user, Hubcap Heaven, Inc., was represented by
counsel throughout this case, including on the brief after trial.
At that time the excepted user’s attorney (Jonathan Cohen of
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Concurrent Use No. 94001147
2
mail order, and on-line electronic catalog sales order
services in the field of new, reconditioned and used
automotive parts” in International Class 42.2 The
application is based on applicant’s claimed date of first
use and first use in commerce of January 1979. Applicant
disclaimed the word “hubcap.” Applicant seeks registration
for the entire United States except for the area within a
50-mile radius around Metairie, Louisiana, the area within a
50-mile radius around Pittsburgh, Pennsylvania, the area
within a 50-mile radius around Memphis, Tennessee, and the
area within a 50-mile radius around Virginia Beach,
Virginia, all of which are areas in which applicant believes
Hubcap Heaven, Inc., with a business address in Orlando,
Florida, uses the mark HUBCAP HEAVEN for the service of the
sale of automotive hubcaps.
Also part of this proceeding is applicant’s
Registration No. 1803181 for the mark HUBCAP HEAVEN
(“hubcap” disclaimed) for “automotive hubcaps, wheel covers,
and wheels” in International Class 12. This registration
issued November 9, 1993 to “Hubcap Heaven (Partnership).”3
Shutts & Bowen LLP) filed a request for permission to withdraw
from representation, which was granted by the Board.
2 The application (Serial No. 75005643) has been assigned to
Hubcap Heaven, LLC. See Reel 1476, Frame 0754.
3 Registration No. 1803181; Section 8 affidavit accepted, Section
15 affidavit acknowledged; renewed. The registration has been
assigned to Hubcap Heaven, LLC. See Reel 1476, Frame 0754.
Concurrent Use No. 94001147
3
The claimed date of first use and first use in commerce is
January 1979.
The Board instituted this concurrent use proceeding on
August 9, 1999 with the party Hubcap Heaven, LLC (applicant)
as the owner of concurrent use application Serial No.
75005643 and Registration No 1803181, and therefore in
position of plaintiff; and Hubcap Heaven, Inc. (user or
excepted user) as the excepted user named in applicant’s
concurrent use application, and therefore in position of
defendant.
The excepted user filed an answer essentially denying
applicant/registrant’s right to a concurrent use
registration, asserting that it has used the mark since
1981; that it has 22 stores and warehouses in several
states; that it also operates a catalog business accessible
on-line; that it owns nationwide rights in the mark for
these goods and services; and that, if applicant is entitled
to any registration, it should be limited to the area within
a 50-mile radius of each of applicant’s three stores in
Hyattsville, Maryland, Marlow Heights, Maryland and
Alexandria, Virginia.
The record consists of the pleadings; the file of
applicant’s application and the file of its registration;
applicant’s testimony, with exhibits, of (i) Thomas Jackson,
one of applicant’s partners, and (ii) Julie A. Albright, an
Concurrent Use No. 94001147
4
employee of applicant; and the excepted user’s notice of
reliance on applicant’s responses to user’s
interrogatories.4
Both parties have briefed this case. The excepted user
requested an oral hearing, but later (after user’s attorney
had withdrawn as counsel), by its president Floyd Davidson,
withdrew its previous request for an oral hearing. We note
that the request was in the form of a letter addressed to
applicant’s attorney of record; that user clearly indicated
that it no longer desired an oral hearing (as opposed to
user stating that it would not attend any scheduled oral
hearing); and that applicant made no response thereto.
Based thereon, the Board did not hold an oral hearing in
this case.
Preliminary Matters
First, we determine the evidentiary matters raised in
user’s brief and applicant’s reply brief on the case.
4 User’s notice of reliance had included its own answers to
applicant’s interrogatories and the discovery deposition of
user’s president Floyd Davidson, taken by applicant. However,
these two items were stricken by Board order dated
May 11, 2001.
User’s motion for permission to rely on portions of its
president’s discovery deposition was denied by Board order dated
August 6, 2002.
Applicant’s motion to strike Exhibit No. 1 attached to user’s
brief on the case was granted by Board order dated August 6,
2002.
User’s motion to strike applicant’s notice of reliance on
applicant’s answers to user’s discovery requests was granted by
Board order dated August 6, 2002.
Concurrent Use No. 94001147
5
In its brief (pp. 16-19), user objects to the following
exhibits to Thomas Jackson’s testimony: (i) Exhibit No. 2
(a copy of a 1993 letter from applicant’s landlord) as
hearsay and not authenticated; (ii) Exhibit Nos. 3-6
(photocopies of photographs) because they are copies, not
originals and because the witness relied on the dates on the
backs of the photographs without making the backs part of
the record when the photographs were photocopied; and (iii)
Exhibit Nos. 27-34 (photocopies of newspaper articles)
because they are hearsay and they are not admissible under
Fed. R. Evid. 803(16) as documents over 20 years old.
It is clear from user’s arguments that most of its
objections relate more to the weight to be accorded the
evidence than to its admissibility. For example, although
the newspaper articles cannot be considered for the truth of
the matters asserted therein, the fact of publication and
the publication dates of such articles are proper evidence.
User’s objections are overruled and all exhibits to the
Thomas Jackson testimony have been considered and accorded
the probative value to which they are entitled.
Applicant requested in its reply brief (p. 7) that the
Board take judicial notice that the town of Ruckersville,
Virginia “is more than 180 miles from Virginia Beach,
Virginia,” and applicant attached photocopies of two pages
from a Rand McNally Road Atlas. Such information is proper
Concurrent Use No. 94001147
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subject matter for judicial notice and we hereby grant
applicant’s request. See Pinocchio’s Pizza v. Sandra Inc.,
11 USPQ2d 1227, footnote 6 (TTAB 1989). See generally, TBMP
§704.12 (2d ed. rev. 2004).
We note also that in its reply brief, applicant
commented as follows (p. 11): “[Applicant] may well deserve
a registration for the entire United States.” Applicant
offered no amendment to its pending concurrent use
application to delete the named exception to applicant’s
exclusive right to use the mark. Accordingly, applicant’s
comment will be given no further consideration by the Board.
Concurrent Use Proceedings/Burden of Proof
As explained in the TBMP §1108 (2d ed. rev. 2004):
The issue to be determined in a
concurrent use proceeding is the
entitlement of the concurrent use
applicant(s) to the registration(s)
sought, and the extent, if any, to which
every other involved application or
registration should be restricted as a
result thereof. The Board does not
determine the right to registration of a
party that is included in the proceeding
only as a common law concurrent user,
i.e., a party that does not own an
involved application or registration….
The Court of Custom and Patent Appeals (a predecessor
to our primary reviewing Court -- the Court of Appeals for
the Federal Circuit) stated that the two requirements to
obtain a concurrent registration are that (i) the parties be
entitled to concurrently use the mark in commerce, and (ii)
Concurrent Use No. 94001147
7
there be no likelihood of confusion, mistake or deception in
the marketplace as to the source of the goods or services.
In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 435,
436 (CCPA 1970).
Analysis -- Facts and Law
Applicant’s predecessor partnership started the HUBCAP
HEAVEN business in early 1979 following a huge snowstorm in
the Washington DC area, resulting in roads with potholes
which in turn resulted in hubcaps all over the roadside.
(Jackson, dep., pp. 9-13, Exhibit No. 26.) Three brothers,
Thomas, Paul and Carl Jackson, collected up to 800 hubcaps
and began to sell them on a street corner near a carwash
(where their sister worked) in Marlow Heights, Maryland.
They then began to buy hubcaps from junkyards, road crews,
and from collections advertised in newspapers. Soon they
hired a night watchman; and in 1984 they moved from a
trailer in Marlow Heights, Maryland to a leased building in
Suitland, Maryland. (Jackson dep., Exhibit No. 8;
applicant’s answer to user’s interrogatory No. 15.)
Ultimately applicant expanded with two additional stores --
in Alexandria, Virginia and Hyattsville, Maryland (opening
in 1991 and 1996, respectively). (Applicant’s answer to
user’s interrogatory No. 13.)
Applicant placed an advertisement for its HUBCAP HEAVEN
store in the 1980 yearbook of the La Reine Catholic Girls
Concurrent Use No. 94001147
8
School (Exhibit No. 11). It also placed ads in a 1996 Holy
Family Parish Community church bulletin (Exhibit No. 12).
Applicant now purchases listings in the “yellow pages”
directories for the Northern Virginia, suburban Maryland,
and Washington DC areas; and it advertises on cable
television networks in Maryland, Washington DC and Virginia.
Mr. Jackson testified that he did not know how far into
Virginia the television stations would be received. (Dep.,
p. 29.) Another method of advertising by applicant is
through “Val-Pak,” which is a collection of coupons from
various local businesses that are mass-mailed to large
blocks of homes in a community. Applicant also puts out a
catalog (a wheel and hubcap identification guide), which is
distributed on the East Coast. About 10,000 copies of the
1999/2000 edition were distributed in states from South
Carolina to New York. (Jackson dep., pp. 42 –44, Exhibit
Nos. 24 and 25.)
Applicant has a website (www.hubcapheaven.com), from
which it has received orders for its products. Applicant’s
website states on the first page:
Hubcap Heaven, LLC
Established in 1979
With retail locations in the Washington DC, Maryland
and Virginia areas…
Shipments are processed daily throughout the United States
and Canada via UPS.
Mr. Jackson testified as to five orders received over
the Internet from persons in Laramie, WY, Framingham, MA,
Concurrent Use No. 94001147
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Mediapolis, IA, Ruckersville, VA and Roswell, GA. (Jackson
dep., pp. 38-41, Exhibit Nos. 18 and 23.)
As previously explained, applicant owns geographically
unrestricted Registration No. 1803181 issued in 1993 for the
mark HUBCAP HEAVEN for goods. In its current application
applicant named the locations of four of user’s stores
(Metairie, Louisiana, Pittsburgh, Pennsylvania, Memphis,
Tennessee and Virginia Beach, Virginia)5 as exceptions to
applicant’s otherwise exclusive right to use the mark HUBCAP
HEAVEN for its identified services, because user assertedly
used the mark HUBCAP HEAVEN in those four locations prior to
November 15, 1990, the filing date of the application which
matured into applicant’s involved Registration No. 1803181.
The record is devoid of evidence relating to user and
the extent of its use of the mark HUBCAP HEAVEN. User’s
argument that it uses the mark in many cities and states in
addition to the four cities recited by applicant is
therefore unsupported in the record.6 User also argues that
because it is applicant’s burden to demonstrate that
5 We note that in user’s answer it included an exhibit which is a
list of 20-plus store and warehouse locations. No evidence as to
any of these locations was ever made of record.
Exhibits to pleadings (with one exception not relevant here)
are not evidence on behalf of a party. See Trademark Rule
2.122(c).
6 Statements made in pleadings cannot be considered as evidence
in behalf of the party making them; such statements must be
established by competent evidence during the time for taking
testimony. See Kellogg Co. v. Pack’Em Enterprises Inc., 14
USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142
(Fed. Cir. 1991); and Times Mirror Magazines, Inc. v. Sutcliff,
Concurrent Use No. 94001147
10
applicant is entitled to a concurrent use registration, see
Trademark Rule 2.99(e), it is also applicant’s burden to
show the extent of user’s use. This is patently absurd. It
is obviously user who has the best information as to the
nature and extent of its own use and its territory of use.
This is particularly true because user claims rights greater
than those acknowledged by the concurrent use applicant.
User could have put in evidence to establish its dates
of first use and its area(s) of use of the mark for its
goods and/or services, but user did not do so. As the Board
stated in Pinocchio’s Pizza v. Sandra Inc., 11 USPQ2d 1227,
1228 (TTAB 1989):
As a general rule, a prior user of a
mark is entitled to a registration
covering the entire United States
limited only to the extent that the
subsequent user can establish that no
likelihood of confusion exists and that
it has concurrent rights in its actual
area of use, plus its area of natural
expansion.7
205 USPQ 656 (TTAB 1979). See also, TBMP §704.06(a) (2d ed. rev.
2004).
Factual statements made in a party’s brief on the case can be
given no consideration unless they are supported by evidence
properly introduced at trial. See BL Cars Ltd. v. Puma Industria
de Veiculos S/A, 221 USPQ 1018 (TTAB 1983); and Abbott
Laboratories v. TAC Industries, Inc., 217 USPQ 819 (TTAB 1981).
See also, TBMP §704.06(b) (2d ed. rev. 2004).
7 We note that user requested in amended paragraph 5 of its
answer to the concurrent use proceeding, that if the concurrent
use application is allowed at all, that applicant’s territory be
restricted to a 50-mile radius around each of the three cities
where applicant has stores. This is inappropriate as explained
in Pinocchio’s Pizza v. Sandra Inc., supra. (In any event, user
has put nothing in the record that would support granting such a
request.)
Concurrent Use No. 94001147
11
User has not established any date of use, but even if
we accepted user’s pleaded date of 1981 from its answer
Concurrent Use No. 94001147
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(which we cannot do), applicant has established use of the
mark HUBCAP HEAVEN prior to 1981. Applicant has therefore
met the “jurisdictional requirement” or “condition
precedent” of its lawful use in commerce outside of the
conflicting claimant’s area. See Gray v. Daffy Dan’s
Bargaintown, 823 F.2d 522, 3 USPQ2d 1306, 1308 (Fed. Cir.
1987).8
Turning then to the question of whether a likelihood of
confusion exists because of concurrent use by the parties in
common territories, we note that there is nothing in the
Trademark Act or the Trademark Rules of Practice that
prohibits a party who is the first user and the first
registrant (and whose registration is unrestricted) from
seeking a geographically restricted registration. More
8 Priority is not generally an issue in concurrent use
proceedings, at least not in the same way that it is an issue in
opposition and/or cancellation proceedings. Generally, the
question only arises insofar as a concurrent use applicant must,
as a jurisdictional requirement (or “condition precedent”),
establish use in commerce prior to the application filing date of
any defendant in the concurrent use proceeding. See In re
Beatrice Foods, supra; Gray v. Daffy Dan’s Bargaintown, supra.
In this case, because the defending user does not have a federal
application or registration, applicant’s use obviously is “prior
to” any theoretical future filing by user.
On a related issue, we note that, because the defending user
does not have an application or registration before us, our
decision will not establish its rights, if any, to a concurrent
use registration. (The Board is empowered only to determine the
right to register. See Sections 17, 18 and 24 of the Trademark
Act, 15 U.S.C. §§§1067, 1068 and 1092). Therefore, defendant had
no duty or burden at trial to prove the extent of its rights
except insofar as such proof would suffice to circumscribe those
rights claimed by applicant. By our observations herein we do
not suggest that user had any greater burden than that which it
assumed by contesting applicant’s claims.
Concurrent Use No. 94001147
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importantly, there is no clear and unambiguous evidence of
use of the mark by both parties in the same geographical
area. Again, user had the opportunity to submit evidence to
establish actual concurrent use in the same territory by
both parties, but it failed to properly submit competent
evidence of this.
While user argues that applicant’s own evidence
establishes that there is use in “overlapping geographical
areas,” we disagree. The record (e.g., the testimony of Mr.
Jackson and applicant’s answer to user’s interrogatory No.
8) is ambiguous regarding the question of whether applicant
operates in any portion of user’s named territories (a 50-
mile radius around each of four separate cities). Although
applicant answered an interrogatory that the goods “have
been marketed and distributed” throughout the United States,
there is no evidence of current nationwide distribution of
the goods (other than through the Internet which is more
fully discussed below). Applicant’s stores are located in
three cities -- Suitland, Maryland, Hyattsville, Maryland
and Alexandria, Virginia. The testimony of Mr. Jackson
regarding the distribution area of applicant’s
advertisements and catalogs does not clearly include
distribution in the excepted user’s four named cities, as
set forth by applicant in its application.
Concurrent Use No. 94001147
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We acknowledge that the juxtaposition, on the one hand,
of use of a mark on the Internet, and on the other hand, the
seeking of a geographically restricted registration is
troubling. Indeed, in the age of the Internet, concurrent
use registrations premised on geographically distinct uses
appear to be a legal fiction as the Internet is accessible
not only nationwide but world-wide. However, there is
little judicial precedent or guidance as to the effect on
either trademark infringement suits or on concurrent use
proceedings of use by parties on Internet websites. In
Allard Enterprises Inc. v. Advanced Programming Resources,
249 F.3d 564, 58 USPQ2d 1710, 1717 (6th Cir. 2001) the Court
stated the following:
We also vacate the district court’s
injunction against Allard’s use of the
APR mark on the internet. Although we
have held that APR has superior rights
to use the mark, at a minimum, in
central Ohio we decline to affirm the
district court’s conclusion that an
injunction prohibiting Allard’s use of
the mark in a specific geographic area
necessarily precludes any use of the
mark by Allard on the internet. …
We suggest that, due to the paucity of
case law addressing concurrent trademark
rights and internet use, the district
court may want to consider cases
addressing the role of national
advertising by parties with concurrent
trademark rights. Courts have held in
some cases that, despite a concurrent
user with a territory of exclusive use,
an almost-national user should be
permitted some form of national
advertising. See 4 McCarthy § 26:46.
Concurrent Use No. 94001147
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The Board declines to establish or assert an absolute
prohibition on the issuance of geographically restricted
registrations when the evidence shows that one or more of
the parties to a concurrent use proceeding does business on
the Internet. Cases, as always, must be decided on the
basis of their individual facts. Here, there is no evidence
of applicant achieving sales to consumers in any of user’s
four excepted territories. Moreover, consumers are becoming
more computer and Internet-savvy and they are likely to
understand how business is done on the Internet. Thus, the
fact that a business has a website does not necessarily mean
to consumers that the business is a nationwide business.
In the situation now before us, there is a prior user
and prior registrant (applicant) who apparently determined
after it obtained Registration No. 1803181 for the mark
HUBCAP HEAVEN for goods, and before it applied for the mark
for services, that its right to registration was subject to
whatever rights user had in the mark HUBCAP HEAVEN for its
goods and/or services offered in the cities of Metairie,
Louisiana, Pittsburgh, Pennsylvania, Memphis, Tennessee and
Virginia Beach, Virginia, as of November 15, 1990. Because
of user’s possible rights in those cities, applicant
“concedes [user] the rights to the mark in those locations.”
(Reply brief, p. 2.)
Concurrent Use No. 94001147
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There is no evidence that user’s use is superior in any
area other than those four cities conceded by applicant to
user. There is no unambiguous evidence that applicant uses
or advertises its mark in any of user’s four cities named
herein. Based on this record, we find that applicant has
established “jurisdictional” priority and that there is no
likelihood of confusion, notwithstanding that applicant does
business on the Internet.
Decision:
Application Serial No. 75005643: The party Hubcap
Heaven, LLC (applicant) is entitled to the registration of
its mark HUBCAP HEAVEN for “wholesale and retail store, mail
order, and on-line electronic catalog sales order services
in the field of new, reconditioned and used automotive
parts” for the area comprising the entire United States
except for the area within a 50-mile radius around Metairie,
Louisiana, the area within a 50-mile radius around
Pittsburgh, Pennsylvania, the area within a 50-mile radius
around Memphis, Tennessee, and the area within a 50-mile
radius around Virginia Beach, Virginia.
Registration No. 1803181: This registration, owned by
Hubcap Heaven, LLC, will be restricted to the area
comprising the entire United States except for the area
within a 50-mile radius around Metairie, Louisiana, the area
Concurrent Use No. 94001147
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within a 50-mile radius around Pittsburgh, Pennsylvania, the
area within a 50-mile radius around Memphis, Tennessee, and
the area within a 50-mile radius around Virginia Beach,
Virginia.