Kappa Books, Inc.v.Herbko Int'l., Inc.

Trademark Trial and Appeal Board

Jul 18, 2001

No. 92026378 (T.T.A.B. Jul. 18, 2001)

United States Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, VA 22202-3513

CEW

Cancellation No. 26,378
7/18/01
Kappa Books, Inc.

v.

Herbko International, Inc.

Before Seeherman, Hohein and Walters, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Kappa Books, Inc. filed a petition to cancel the
registration of Herbko International, Inc. of the mark
shown below for “crossword puzzle system, namely paper
crossword puzzle rolls and hand held puzzle roll scrolling
device sold as a unit and crossword puzzle replacement
rolls sold separately,” in International Class 16.1[1]

1[1] Registration No. 1,914,863: application filed June 29, 1994 and
registration issued August 29, 1995. The registration includes a
disclaimer of CROSSWORD apart from the mark as a whole.
THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B.

As grounds for cancellation, petitioner asserted that
respondent’s mark, when applied to respondent’s goods, so
resembles petitioner’s previously used mark CROSSWORD
COMPANION for crossword puzzle books as to be likely to
cause confusion, under Section 2(d) of the Trademark Act.
Respondent, in its answer, denied the salient
allegations of the claim and affirmatively asserted, inter
alia, that petitioner lacks priority.
Petitioner filed a motion for summary judgment,
alleging that no genuine issues of material fact exist
regarding either petitioner’s priority or the factors
establishing that likelihood of confusion exists. The
Board granted petitioner’s motion for summary judgment and
entered judgment against respondent.
Respondent filed a motion for reconsideration,
contending that the Board erred in granting petitioner’s
motion for summary judgment. We consider this motion
herein. Respondent contends that the Board erred in
finding that petitioner has priority of use; and in finding
that the goods of the parties are “the same.” Petitioner
submitted a brief in opposition to respondent’s motion.2[2]

2[2] Respondent also submitted a reply brief. While there is no
provision in the Trademark Rules of Practice for the submission of a
reply brief in connection with a request for reconsideration (see
Trademark Rule 2.127(b)), we have exercised our discretion and
considered the reply brief in this case.
Regarding respondent’s assertion that the Board erred
in finding the parties’ goods to be “the same,” we point
out that the Board found the parties’ goods to be
“extremely similar” rather than “the same.” Respondent
does not dispute that both parties’ goods provide crossword
puzzles to the purchaser. While respondent’s product may
be, as respondent describes it, “a cross-word game system”
and petitioner’s product is “a puzzle book,” both parties’
products provide crossword puzzles to purchasers, which is
the essence of each product. We disagree with respondent
and find that the Board did not err in concluding that the
parties’ goods are “extremely,” or “substantially,”
similar.3[3]
We consider, next, respondent’s assertion that the
Board erred in finding that petitioner has priority. The
facts establishing petitioner’s use of the mark CROSSWORD
COMPANION on crossword puzzle books are stated as follows
in the Board’s opinion on the summary judgment motion:
[P]etitioner first sold CROSSWORD COMPANION
puzzle books to WalMart, a U.S. department store
chain, in 1993. Two shipments of books were made
in 1993; the first consisted of 373,200 books and
the second consisted of 683,000 books. No

3[3] Because we are considering the question of whether the Board
committed an error, contrary to respondent’s contention, we reach this
conclusion regardless of the extent to which petitioner did or did not
address this particular point in its response to respondent’s request
for reconsideration.

significant sales took place in 1994. Petitioner
resumed sales of its CROSSWORD COMPANION puzzle
books in 1995 and sold 918,705 books in the years
1995-1997. Sales were made to various retail
stores throughout the United States.

Respondent filed the application resulting in the
challenged registration on June 29, 1994, based on an
intention to use the mark in commerce, and began use of its
mark on its goods on September 22, 1994.
Respondent does not contend that these facts are
incorrect. Rather, respondent points out that petitioner’s
sales during 1993 were of its first book of crossword
puzzles; and that petitioner did not sell subsequent
volumes of crossword puzzle books until 1995, which is
after respondent began using its mark on its goods.
Respondent argues in its request for reconsideration
that the Board should have found that petitioner’s use of
CROSSWORD COMPANION in 1993 was as a title of a single
work; that a title of a single work is merely descriptive
and petitioner did not establish that CROSSWORD COMPANION
has acquired distinctiveness as a trademark; that
petitioner’s puzzle books did not become a series until
1995, subsequent to respondent’s use of its mark, when new
CROSSWORD COMPANION books were published; and, thus, that
it was not until 1995 that CROSSWORD COMPANION became a
trademark for that series.
The question raised by respondent’s argument is when
did petitioner commence use of CROSSWORD COMPANION as a
mark for a series of crossword puzzle books.
The Board answered this question in its opinion, and
respondent has merely reiterated the arguments made in its
opposition to the motion for summary judgment. In this
regard, the Board stated the following:
[T]here is no genuine issue that petitioner
continued to use its mark on a series of
crossword puzzle books, and that its use on the
books in 1993 was a trademark use on the first of
the books in the series. (footnote omitted.)
Accordingly, as a matter of law, we find that
petitioner established rights in the trademark
CROSSWORD COMPANION in 1993 and thus petitioner
has priority.

It is well established, and respondent does not
disagree, that a title that is the name of a series of
works may function as a trademark for that series. See In
re Cooper, 254 F.2d 611, 117 USPQ 396 (CCPA 1958); and In
re Scholastic Inc., 223 USPQ 431 (TTAB 1984). Respondent
argues, however, that the series, and thus the use of the
title as a trademark, does not arise until such time as a
second “volume” is sold. In this regard, we stated the
following:
This case is not unlike an “analogous use case,”
where non-technical trademark use of a term
creates an inchoate right that its owner may
perfect upon making a technical trademark use of
the term, so long as the analogous use is of such
a nature and extent that it creates a proprietary
right in the user deserving of protection, and
the technical use is commenced within a
reasonable time. See Era Corp. v. Electronic
Realty Associates, Inc., 211 USPQ 734, 745 (TTAB
1981); and Dyneer Corporation v. Automotive
Products, plc, 37 USPQ2d 1251 (TTAB 1995).
Petitioner’s initial shipments to WalMart in 1993
were sufficient to create such proprietary
rights, since they were in fact followed by
shipments of additional sets of books in 1995.

In its request for reconsideration, respondent bases
its argument, by analogy, on Towers v. Advent Software
Inc., 913 F.2d 942, 16 USPQ2d 1039 (Fed. Cir. 1990). In
that case, the court affirmed the Board’s decision, based
on Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317,
209 USPQ 40 (CCPA 1981), that petitioner’s Section 2(d)
claim failed because petitioner’s unregistered mark was
merely descriptive, and thus not inherently distinctive,
and petitioner had not shown that his term had become
distinctive of his goods prior to respondent’s first use of
its mark.
We find Towers to be inapposite to the present
situation. That case pertained to the use by petitioner of
THE PROFESSIONAL PORTFOLIO SYSTEM in connection with a
computer based portfolio valuation system, not as the title
of either a single work or a series. In the case before
us, we do not have a term that is the name of a product or
merely describes a quality or characteristic of a product.
Rather, we have a title of a series of books.4[4] While the
title of a single work does not function as a trademark and
has been described as merely descriptive of the contents of
that work, the Court in In re Cooper, supra, found that a
series is quite different from a single title, stating the
following:
Appellant appears to argue that there is an
inconsistency in registering as a trademark the
name for a series of books and in not registering
the title of a single book. We see no
inconsistency. The name for a series, at least
while it is still being published, has a
trademark function in indicating that each book
of the series comes from the same source as the
others.

Petitioner’s crossword puzzle books constitute a
series of books which, logically, must begin with the
publication of the first book in the series. As a result,
the use of the mark in connection with the series dates
back to the beginning of the series, i.e., the date of sale
of the first “volume” of the series. Nothing in Cooper is
to the contrary.
For the reasons stated herein and in our opinion on
the motion, we stand by our decision granting petitioner’s
motion for summary judgment. The motion for

4[4] There is no genuine issue that petitioner has published a series of
crossword puzzle books, i.e., that, inter alia, the second “volume” was
published within a reasonable time period following distribution of the
first volume.

reconsideration is denied and Registration No. 1,914,863
will be cancelled in due course.