Jules Jurgensen/ Rhapsody, Inc.v.Fabrica di Orologi Sindaco S.A. et al.

Trademark Trial and Appeal Board

Aug 13, 1997

CANC (T.T.A.B. Aug. 13, 1997)

THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB 12 AUG 97
Paper No. 18
GDH/KRF
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Jules Jurgensen/Rhapsody, Inc.
v.
Fabrica Di Orologi Sindaco S.A., Orologi "Jaguar"
(Fabrique d'Horologerie Sindaco S.A., Montres "Jaguar")
(Uhrenfabrik Sindaco A.G., "Jaguar" Uhren) and
Peter Baumberger, joined as party defendant
_____
Cancellation No. 21,824
_____
Paul Maleson of Maleson, Rosenberg, Bilker & Farrell for Jules
Jurgensen/Rhapsody, Inc.
Anne H. Peck of Cooley, Godward, Castro, Huddleson & Tatum for
Fabrica Di Orologi Sindaco S.A., Orologi "Jaguar" (Fabrique
d'Horologerie Sindaco S.A., Montres "Jaguar") (Uhrenfabrik
Sindaco A.G., "Jaguar" Uhren) and Peter Baumberger.
_____
Before Simms, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Jules Jurgensen/Rhapsody, Inc. has petitioned to cancel
the registration of the mark "URBAN" for "mechanical watches with
manual or automatic winding, electrical and electronic watches,
watch parts, movements, and dials; watch cases, diving watches,
Cancellation No. 21,824
2
[and] chronometers".1 As the basis for cancellation, petitioner
alleges that it is the owner of the mark "URBAN JURGENSEN" for
wrist watches, having commenced use thereof in interstate
commerce since at least as early as May 7, 1991; that petitioner,
on December 13, 1991, filed its pending application, Ser. No.
74/230,739 to register such mark for wrist watches; that its
application presently stands refused in view of the existence of
the registration it seeks to cancel; and that "the registered
trademark 'Urban' has been abandoned within the meaning of 15 USC
1064(3)" inasmuch as "[i]nquiry has indicated that registrant is
not and has not been using the trademark 'Urban' in the United
States for at least a period of time sufficient to constitute
abandonment."
Peter Baumberger, who by certain assignments claims to
be the present owner of the involved registration and accordingly
was joined as the respondent in this proceeding pursuant to Fed.
R. Civ. P. 19(a), has filed an answer denying the allegations of
the petition for cancellation.2
The record consists of the pleadings; the file of the
involved registration; and, as petitioner's case-in-chief, the
testimony, with an exhibit, of the president of Regal Industries,

1 Reg. No. 965,536, issued on August 7, 1973, based upon Swiss Reg.
No. 255,118, dated September 22, 1971; renewed.
2 Although the answer also alleges, as "AFFIRMATIVE DEFENSES," that
"the Petition for Cancellation is barred by the doctrines of
estoppel, waiver, laches and acquiescence," these defenses were not
properly pleaded, in that the factual grounds therefor were not set
forth, nor did respondent offer any evidence with respect thereto at
trial. Accordingly, such defenses will not be given further
consideration.
Cancellation No. 21,824
3
David Popowich, and the testimony, with exhibits, of petitioner's
president and chief executive officer, Morton Clayman. No
testimony or other evidence was submitted by respondent, and only
petitioner filed a brief. An oral hearing was not requested.
The issues to be determined are whether petitioner has
proven its standing to bring this proceeding and whether it has
demonstrated that the registered mark has been abandoned.
According to the testimony of the president of Regal
Industries, David Popowich, such firm is a manufacturer and
importer of watch bands. Regal Industries supplies watch bands
to watch companies, watch importers and watch retailers. Except
as a vendor, Regal Industries has no relationship with
petitioner. Regal Industries' customer relationships as a vendor
of watch bands extend to almost all companies in the watch
business in the United States, including "[m]any" importers of
watches into this country. (Popowich dep. at 7.)
Mr. Popowich, who claims that Regal Industries probably
knows more about watch bands and the watch band industry, as it
relates to watches and the resale of watch bands, than anyone
else in the United States, testified that he is familiar with the
watch industry in the United States; that he attends conventions
pertaining to the watch industry; that he "very closely" follows
the watch industry trade literature (id. at 8); that he is
familiar with advertising done in the United States for watches;
and that he routinely looks at watch catalogs. Based upon his
careful attention to the foregoing sources of information for at
least 30 years and the fact that his company is a major supplier
Cancellation No. 21,824
4
of watch bands in the United States, Mr. Popowich further
testified as follows:
Q. Have you ever seen a watch in the United
States with the trademark Urban on it?
A. No.
Q. Let me ask it in even more detail. Have
you ever seen a watch with the trademark
Urban on it at a convention?
A. Never.
Q. Has anybody ever approached you for a
business relationship regarding such a watch?
A. Never.
Q. Have you ever seen an advertisement for
a watch with the trademark Urban on it?
A. Never.
Q. Or a catalogue entry?
A. Never.
(Id. at 9-10.)
In addition, while Mr. Popowich conceded that an
"URBAN" brand watch could also be for sale in the jewelry
department of discount stores, he noted that he frequents such
stores "on a regular basis just to see what is happening with
watches and watch bands in these stores" and that, as is the case
with his knowledge of brands brought into the United States by
watch importers, he has never encountered a watch with the mark
"URBAN" on it. (Id. at 10.) Moreover, Mr. Popowich insisted, in
this regard, that "[i]f it was brought in in any significant
numbers, yes, I think I would have known about it." (Id. at 11.)
Cancellation No. 21,824
5
By contrast, Mr. Popowich stated that he has heard of sales of
petitioner's "URBAN JURGENSEN" watches and, in fact, knows that
petitioner is the source thereof.
Petitioner's president and chief executive officer,
Morton Clayman, indicated that petitioner has made continuous and
increasing sales of its "URBAN JURGENSEN" watches in interstate
commerce since May 1991.3 According to Mr. Clayman, he has been
in the watch business since 1957 and has been actively involved
in the American watch business for approximately 30 years. Mr.
Clayman purchased petitioner in 1974. Petitioner offers and
advertises its watches, including those sold under the "URBAN
JURGENSEN" mark, through its catalogs, which it distributes to
jewelry retailers, including such major mass merchandisers as
Montgomery Ward, K Mart, Service Merchandise, Best Products and
J. C. Penney. Petitioner also publishes and distributes to its
customers a booklet entitled "The Jules Jurgensen Story," which
explains, among other things, that the brothers Urban and Jules
Jurgensen were 18th century Danish watchmakers whose names are
used by petitioner as marks for two of its lines of watches.
Like Mr. Popowich, Mr. Clayton is familiar with the
watch industry in the United States; he attends conventions
relating to the watch trade in the United States, Hong Kong and
Switzerland and has done so for 25 to 30 years; and he is
familiar with trade literature, catalogs and other material

3 Invoices documenting representative sales of petitioner's "URBAN
JURGENSEN" watches in 1993 and 1994 were also introduced.
Cancellation No. 21,824
6
produced by those who sell watches. Yet, despite the knowledge
and experience gained as the result of at least 30-years of
active involvement in the watch business, Mr. Clayton stated that
he has never seen a watch in the United States with the name
"URBAN" used thereon as a mark. Specifically, Mr. Clayton
testified that:
Q. In all of those years of your active
participation in the watch business and your
involvement in it, have you ever seen, in the
United States, a watch with the name Urban on
it as a trademark?
A. Absolutely not.
Q. Have you ever seen any printed or
written material or advertisement material or
a catalogue in the United States showing a
watch with the trademark Urban on it?
A. No.
Q. Have you ever seen what I will call an
Urban watch or an Urban advertisement
anywhere in the world in any language at any
time?
A. Absolutely not. I've been in
Switzerland and Hong Kong, all of the shows.
I've gone around to all of the shows. I've
talked to people. I know everybody in the
industry. They know me, and I have never
heard of an Urban watch.
Q. You talk to people in the industry, you
say?
A. Yes.
Q. You chat with them and discuss business
with them?
A. Yes.
Cancellation No. 21,824
7
Q. Is it fair to say that if there had been
a watch with the brand or trademark Urban on
it that was sold or on sale or being promoted
in the United States in any significant way,
you would have been aware of it?
A. Absolutely.
Q. But even in a non-significant way, you
never saw or heard of one?
A. Never saw one.
Mr. Clayman also indicated that he asked petitioner's
counsel to file an application for federal registration of
petitioner's "URBAN JURGENSEN" mark for watches. However, in
view of respondent's involved registration, Mr. Clayton was
advised by petitioner's counsel that petitioner's application to
register its mark was being held up.
Turning, therefore, to the issues herein, Mr. Clayton's
testimony is sufficient to demonstrate that petitioner has a real
commercial interest in this proceeding and thus has standing to
seek cancellation of respondent's involved registration. In
particular, petitioner's proof, through the testimony of Mr.
Clayton, that it has filed an application for federal
registration of its "URBAN JURGENSEN" mark for watches which has
been refused registration in light of the existence of
respondent's registration for the mark "URBAN" for watches and
their components establishes petitioner's standing herein. See
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982).
With respect to the issue of whether the registered
mark has been abandoned, Section 45 of the Trademark Act
Cancellation No. 21,824
8
provides, in relevant part, that "[a] mark shall be deemed to be
'abandoned' when ... the following occurs:"4
(1) When its use has been discontinued
with intent not to resume such use. Intent
not to resume use may be inferred from
circumstances. Nonuse for two consecutive
years shall be prima facie evidence of
abandonment. "Use" of a mark means the bona
fide use of that mark made in the ordinary
course of trade and not made merely to
reserve a right in a mark.
It is settled that "[a]bandonment, being in the nature of a
forfeiture, must be strictly proved." Wallpaper Manufacturers,
Ltd. v. Crown Wallcovering Corp., 680 F.2d 755, 214 USPQ 327, 332
(CCPA 1982). Moreover, it is petitioner who bears the ultimate
burden of proof of abandonment by a preponderance of the
evidence. See Cerveceria Centroamericana S.A. v. Cerveceria
India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989).
Thus, for instance, it is petitioner who bears the burden of
establishing a prima facie case of abandonment on the basis of
nonuse of the "URBAN" mark by respondent for a period of at least
two consecutive years and, only upon such a showing, does the
burden of persuasion shift to respondent to come forward with
evidence to disprove the presumption of abandonment. Id. at
1312.

4 While we note that, as of January 1, 1996, Section 45 of the
Trademark Act was amended to provide that a period of three
consecutive years of nonuse, instead of a two-year period,
constitutes prima facie abandonment, we have applied the two-year
standard, since these proceedings were commenced on May 7, 1993, so
as not to give retroactive effect to the statutory amendment. See
Clairol Inc. v. Compagnie D'Editions et de Propagande du Journal La
Vie Claire-Cevic, 24 USPQ2d 1224, 1226 (TTAB 1992).
Cancellation No. 21,824
9
In the present case, we find that petitioner has
satisfied its burden of proof. The testimony presented by
petitioner of two individuals, each of whom has 30 years of
knowledge and experience in the watch and related watch band
industries, respectively, that at all times relevant herein,
neither has ever encountered a watch or trade literature in the
United States which bears the mark "URBAN" is sufficient to
establish a prima facie case of abandonment of such mark, through
a showing of at least two consecutive years of nonuse, and to
shift to respondent the burden of coming forward with evidence to
disprove the statutory presumption of abandonment. Respondent,
however, offered nothing to explain or refute the observations by
two knowledgeable and experienced individuals who have long been
familiar with, respectively, all aspects of the watch and watch
band industries in this country and who have never seen or heard
of any use of the mark "URBAN" for watches.
Decision: The petition for cancellation is granted and
Reg. No. 965,536 will be canceled in due course.
R. L. Simms
G. D. Hohein
P. T. Hairston
Administrative Trademark Judges,
Trademark Trial and Appeal Board
Cancellation No. 21,824
10