Krause Publica-tions, Inc.v.Chester L. Krause

Trademark Trial and Appeal Board

Feb 15, 2007

No. 91160072 (T.T.A.B. Feb. 15, 2007)

Oral Hearing: Mailed:
March 30, 2006 February 15, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Krause Publications, Inc.

v.

Chester L. Krause
_____

Opposition No. 91160072 to application Serial No. 76504857
filed on April 2, 2003

Brian G. Gilpin of Godfrey & Kahn, S.C. for Krause
Publications, Inc.

John A. Clifford of Merchant & Gould P.C. for Chester L.
Krause.
______

Before Seeherman, Hairston and Zervas, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

Applicant, Chester L. Krause, seeks registration on the
Principal Register of the mark KRAUSE (in standard character
form) under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), for “museum services” in International Class 41.1
The application contains an allegation of first use and

1 Application Serial No. 76504857, filed April 2, 2003.
THIS OPINION IS
NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91160072
2
first use in commerce in 1959. Applicant has entered a
claim of acquired distinctiveness under Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f), pursuant to a
declaration dated October 30, 2003, which claims in relevant
part “[t]hat the mark KRAUSE has become distinctive of the
services herein through substantially exclusive and
continuous use in commerce for at least the five years
immediately before the date of this statement.” Also,
applicant has entered the following statement in the
application: “The name ‘KRAUSE’ identifies a living
individual, ‘Chester L. Krause’, the Applicant herein.”
Opposer, Krause Publications, Inc. (“KPI”), filed a
timely notice of opposition to registration of applicant's
mark. In the notice of opposition, opposer has pleaded
ownership of Registration No. 25731012 for the mark KRAUSE
PUBLICATIONS (in typed or standard character form) for goods
and services in four International Classes, and that
Registration No. 2573101 was the subject of a cancellation
proceeding, No. 92-041171, brought by applicant herein.
Notice of opposition, ¶¶ 2 and 7. (On November 18, 2006,
long after opposer filed the notice of opposition in this
case, the Board ordered cancellation of the goods and
services in three of the four International Classes in
Registration No. 2573101; the International Class 41

2 Registration No. 2573101 issued May 28, 2002.
Opposition No. 91160072
3
services, namely, “entertainment services in the nature of
competitions and awards in the field of cutlery,” survived
the cancellation proceeding.) Additionally, opposer has
pleaded that it “has been using the mark KRAUSE PUBLICATIONS
in commerce since at least as early as 1969 in connection
with various publishing activities, including periodicals
and books about antique automobiles, automobile restoration,
and automobile collecting.”.
In the notice of opposition, opposer claims as follows:
3. On information and belief, Applicant has
never used, is not currently using, and has
no plans to use the term “Krause” as a
trademark in interstate commerce in
connection with the Alleged Services [that
is, “museum services”]. In a sworn
deposition in Cancellation Action No. 92-
041171, Applicant admitted that he has never
used nor does he have plans to use the term
“Krause” in connection with “museum
services.” Rather, Applicant stated he has a
private collection of automobiles that is not
open to the public and may be viewed on an
invitation basis only. Applicant stated that
he does not charge an admission fee to view
his collection. Further, Applicant testified
that he does not advertise and promote his
private collection to the general public
because he does not want the responsibility
of operating a museum with staff, regular
business hours, advertising ….

4. On information and belief, Applicant has
fraudulently and falsely stated that he has
used the term “Krause” as a trademark in
interstate commerce and has fraudulently and
falsely stated the dates of first use and
first use in commerce in the above identified
application. Namely, Applicant admitted in a
sworn deposition in Cancellation Action No.
92-0411171 that his use of the term “Krause
Auto Collection” is for a personal hobby
Opposition No. 91160072
4
activity of recent vintage and Applicant's
use is not trademark use at all, much less
trademark use of the term since 1959.
Applicant's specimen of use in connection
with the subject application is a picture of
him standing next to a sign reading “Krause
Auto Collection.” According to his sworn
deposition testimony: the sign was erected
just four or five years ago; business cards
identifying Applicant as the founder of the
“Krause Auto Collection” were first printed
after October 2002; and “Krause Auto
Collection” letterhead has been used for
around five years or so. These are not
trademark uses, and more importantly,
Applicant has never used the word “KRAUSE” to
identify any goods or services sold in
interstate commerce, particularly in
connection with the Alleged Services.”

Opposer further claims (i) that applicant fraudulently
and falsely stated in his Section 2(f) declaration that
applicant has used “Krause” since as early as 1959 and that
“Krause” has become distinctive of applicant's services by
virtue of applicant's substantially exclusive and continuous
use of the term for at least five years; and (ii) that it
“has been using the mark KRAUSE PUBLICATIONS in commerce
since at least as early as 1969 in connection with various
publishing activities, including periodicals and books about
antique automobiles, automobile restoration, and automobile
collecting”; and that “Applicant's use of the term for which
he is seeking registration is therefore likely to cause
confusion, or to cause mistake, or to deceive consumers
familiar with KPI’s prior use of a mark incorporating the
Opposition No. 91160072
5
term ‘Krause,’ KRAUSE PUBLICATIONS.” Notice of opposition,
¶¶ 7 and 9. Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Applicant, in his answer, has admitted that opposer is
the current owner of record of Registration No. 2573101.
Applicant has also admitted that opposer has been using the
mark KRAUSE PUBLICATIONS in commerce since at least as early
as 1969 in connection with various publishing activities,
including periodicals and books about antique automobiles,
automobile restoration, and automobile collecting.
Applicant has denied the remaining salient allegations of
the notice of opposition.
Both opposer and applicant have filed briefs in this
case. An oral hearing was held on March 30, 2006.
Evidentiary Issues
Several evidentiary issues require our attention before
we address the merits of opposer's claims.
First, opposer, with its first notice of reliance,
submitted excerpts from applicant’s June 16 – 17, 2004
discovery deposition taken in the prior cancellation
proceeding. This discovery deposition was not made of
record in the prior proceeding. Because it is not an
official document, and no other means are available to
opposer to enter this discovery deposition into the record
in the present proceeding by means of the notice of reliance
procedure, it is not properly of record. See Trademark Rule
Opposition No. 91160072
6
2.120(j), 37 C.F.R. § 2.120(j); TBMP § 704.09 (2d ed. rev.
2004). We therefore do not further consider the excerpts
from applicant's June 16 – 17, 2004 deposition.
Second, opposer also submitted with its first notice of
reliance excerpts from the January 6, 2005 discovery
deposition of Roger A. Case, opposer's designated Fed. R.
Civ. P. 36 witness in this proceeding.3 Because the
discovery deposition of a person designated under Fed. R.
Civ. P. 30(b)(6) to testify on behalf of a party may only be
offered in evidence by an adverse party, the excerpts from
Mr. Case’s deposition are not properly of record. See
Trademark Rule 2.120(j); and TBMP § 704.09 (2d ed. rev.
2004). We hence do not further consider the excerpts from
Mr. Case’s deposition.
Third, opposer has moved to strike (under Fed. R. Evid.
702) the testimonial deposition of Dr. Lyndel I. King,
Director and Chief Curator of the Weisman Art Museum at the
University of Minnesota, who is applicant's designated
expert on the definition of a “museum” and on whether
applicant's institution qualifies as a “museum.” Opposer
maintains that Dr. King’s testimony will not assist the
Board in understanding or analyzing the evidence or in
determining an issue of fact; and that her testimony was not

3 In its notice of reliance, opposer states that the deposition
was from the prior proceeding. However, the deposition itself
bears the case caption for the present proceeding.
Opposition No. 91160072
7
scientific, technical or otherwise based on specialized
knowledge. Motion at p. 1. According to opposer, Dr.
King’s experience lies with tax-exempt, not-for-profit
public art museums and in accrediting museums for the
American Association of Museums, and not with museums of the
type which applicant maintains he has, i.e., a museum which
is not a tax-exempt, not-for-profit enterprise; that because
Dr. King has relied on a common dictionary definition of
“museum” in providing her testimony, the Board does not
require her testimony; that there is no foundation for much
of her testimony as required under Fed. R. Evid. 702 because
she has never met or interviewed applicant, or visited his
alleged museum, and did not know much about it, including
its location, whether it was open to the public, and how
long it had been in operation; and that in preparing for her
testimony, she only reviewed two DVDs concerning applicant,
an auction catalog and a draft pamphlet featuring fewer than
two dozen Jeeps. Further, opposer maintains that Dr. King
did not have the “factual foundation and the requisite
professional experience” to conclude that applicant's
collection of vehicles qualifies as an automobile museum
because she admitted in her deposition that “automobile
museums are not my specialty” and because she has visited
only one automobile museum. Motion at pp. 2 - 4.
Opposition No. 91160072
8
Applicant, in response, argues that Dr. King is
qualified to provide an expert opinion on the definition of
a “museum” and on whether applicant's institution qualifies
as a “museum.” Response to motion at p. 6. Further,
applicant maintains that Dr. King’s testimony will assist
the Board in determining that applicant has been providing
museum services, and that the materials reviewed by Dr. King
– including applicant's notebooks and photographs - are
sufficient to enable her to render an opinion. As to Dr.
King’s admission that “automobile museums are not my
specialty,” and her qualifications as an expert, applicant
maintains that “particular facts regarding the nature of
automobiles in [the] museum” are not the basis for her
testimony – the basis is whether “applicant's establishment
qualifies as a museum.” Response to motion at p. 9.
Fed. R. Evid. 702 indeed provides that if “specialized
knowledge” will assist the trier of fact to understand the
evidence or to determine a fact in issue, a witness
qualified as an expert by knowledge, skill, experience,
training or education may testify thereto under certain
circumstances. Applicant has established that Dr. King has
the necessary knowledge, experience and education, and the
“specialized knowledge” that will assist us in determining
what is encompassed in “museum services” and whether
applicant has provided “museum services.” She has a
Opposition No. 91160072
9
doctorate in art history and a degree from the Museum
Management Institute, and over twenty-five years of
professional experience in the museum field. Dr. King has
presented lectures on the subjects of art and museum
studies, has authored various materials pertaining to
museums, including articles in Museum News and International
Museum Journal and a chapter for a museum studies textbook.
Also, she has coordinated and directed numerous exhibitions
and museum programs, is a member of several national and
international museum societies, is a Board member of the
American Association of Museums wherein she makes
recommendations to a central committee regarding the
accreditation of museums, and belongs to the Association of
Art Museum Directors. King dep. pp. 5-8; response to motion
at p. 4.
Further, we do not deem applicant's statement
“automobile museums are not my specialty” inimical to Dr.
King’s qualifications to testify on the matters for which
her testimony has been offered in this case. The
definitions of “museum” discussed below do not distinguish
between automobile and non-automobile museums, and opposer
has not argued that automobile museums have any particular
concerns that mandate consideration different from other
museums. Also, Dr. King’s failure to visit applicant's
facilities or to know specific information such as whether
Opposition No. 91160072
10
it has hours of operation does not require that we exclude
her testimony. Thus, opposer's challenges to applicant's
witness are not well taken and opposer's motion to strike is
denied. We have, however, in considering Dr. King’s
testimony, given it the weight it is due in light of the
concerns raised by opposer in its motion.
The Record
The record consists of the pleadings; the file of the
involved application; the trial testimony, with related
exhibits, of applicant taken on April 14, 2005; and the June
27, 2005 trial testimony, with related exhibits, of Dr.
King. Also, pursuant to opposer's two notices of reliance,
the record includes the following: applicant's answers to
opposer's first set of interrogatories; portions of
applicant's answers to opposer's requests for admissions;
applicant's responses and objections to opposer's first
document requests;4 excerpts of applicant's March 17, 2004
discovery deposition testimony from the prior proceeding
along with certain exhibits thereto, including a copy of
Registration No. 2573101, which was asserted by opposer in

4 Documents produced in response to a request for production of
documents may not be made of record by notice of reliance. See
Trademark Rule 2.120(j)(3)(ii). Opposer is not attempting to
rely on any documents provided by applicant – the response states
in part that applicant does not have documents responsive to
certain requests and provides some limited information about
applicant, e.g., that he has not accepted cash donations “from
persons who have been provided ‘museum services.’” Response to
document request nos. 42 and 46.

Opposition No. 91160072
11
its notice of opposition; applicant's August 24, 2004 trial
deposition testimony from the prior proceeding; and various
trial exhibits from the prior proceeding.5
Pursuant to applicant’s notice of reliance, certain
additional exhibits from the prior proceeding are in the
record.
Background
Applicant began his professional career as a carpenter.
Applicant was a coin collector, and, in 1952, began a
monthly collector’s newspaper named Numismatic News. In
1961, applicant began publishing a periodical named Coins
Magazine. Three years later, in 1964, applicant formally
incorporated his publishing operations under the name
“Krause Publications, Inc.,” which was located in Iola,
Wisconsin. This company – KPI - is the opposer in the
current proceeding. KPI grew and eventually became a major
publisher of hobby magazines. For nearly fifty years,
applicant was KPI’s president and/or chairman of the Board.
Between 1988 and 1995, applicant arranged for KPI and its
Employee Stock Ownership Plan to acquire KPI in a series of
stock transactions. After KPI had been acquired, applicant
became an employee of KPI. In 2002, the KPI Employee Stock

5 On September 1, 2005, opposer withdrew, with applicant's
consent, its Exhibits 19 and 20 consisting of correspondence
between applicant's and opposer's attorneys concerning discovery
requests, filed with its second notice of reliance. Accordingly,
we do not further consider Exhibits 19 and 20.
Opposition No. 91160072
12
Ownership Plan sold its shares to F&W Publications, and
applicant was terminated as a KPI employee.
Applicant has been the subject of numerous articles and
books on collecting, and has coauthored The Standard Catalog
of World Coins. Applicant received the Farran Zerbe Award
of the American Numismatic Association (“ANA”) in 1977,
ANA‘s Numismatist of the Year award in 1999 and ANA’s
Lifetime Achievement Award. In connection with car
collecting, applicant has received “The Friend of Automotive
History Award” and, in 1995, the “Collector Car Hobby’s
Person of the Year” award, known as the “Meguiar’s Award.”
Also, in 2004, the Society of Automotive Historians featured
applicant and his vehicle collection in a film entitled “A
Walk Through Automotive History With Chet Krause.”
Further, in 1972 or 1973, in conjunction with the
launch of a KPI publication called Old Cars, applicant
founded the Iola (Wisconsin) Old Car Show. The show is an
annual event that attracts approximately 140,000 people over
four days. Applicant has displayed his vehicles in the show
each year since the car show began.
Standing

As noted above, the record contains a copy of
Registration No. 2573101 for the mark KRAUSE PUBLICATIONS,
and applicant has admitted that opposer is the current owner
of this registration. In view thereof, we find that opposer
Opposition No. 91160072
13
has established its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Non-Use
We turn now to opposer's allegation in paragraph 4 of
the notice of opposition that applicant has not used KRAUSE
in commerce in connection with “museum services.”6 An
application is void ab initio if the applied-for mark was
not in use in commerce at the time of the filing of the
application. See Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a); Intermed Communications, Inc. v. Chaney,
197 USPQ 501 (TTAB 1977) (application void where the
INTERMED mark had never been used in the United States on or
prior to the filing date in association with the services
described in the application); Justin Industries, Inc. v.
D.B. Rosenblatt, Inc., 213 USPQ 968 (TTAB 1981) (application
void where application filed before first order or sale and
delivery of goods under the mark occurred). However,
because applicant's activities prior to the filing date of
his application are relevant to whether he was providing
museum services at the time he filed his application, we

6 The parties’ arguments in their respective briefs as to what
facts are undisputed are noted and have been considered.

Opposition No. 91160072
14
consider his activities beginning from the time he maintains
he first used KRAUSE in connection with “museum services,”
i.e., in 1959. Applicant purchased his first vehicle for
his vehicle collection – a 1924 Model T truck – in the
spring of 1959.7
He restored the truck in the fall of 1959. After the
restoration, “the truck had a sign on it identifying what it
was and who owned it, and … ‘Chet Krause,’ was on the sign.”
Krause April 14, 2005 dep. p. 15. Applicant used this
vehicle in parades “around the county … and [in] Stevens
Point as well, which is out of the county.” Id. When not
in use, applicant often let the vehicle “sit outside”
because applicant did not have “a proper cover for it,” or
he maintained the vehicle in a barn next to what was then
his home. Id. at pp. 28 and 30.
Applicant acquired an additional vehicle in 1961,
namely, a Model T Roadster. He did not acquire any
additional vehicles until the mid-1970s when KPI, and not
applicant in his individual capacity, began purchasing
vehicles. Between 1974 and 1984, KPI acquired thirty-three
vehicles, and sold all but five in 1985. KPI acquired more
vehicles soon after the 1985 sale. Also, The Krause

7 Opposer notes that applicant's testimony conflicts with the
1961 date on the title for the vehicle. The difference in dates
does not affect our analysis of opposer's claim.
Opposition No. 91160072
15
Foundation, established by applicant, acquired vehicles.8
In 2002, KPI and the Krause Foundation owned approximately
55 vehicles. Through the 1990s, applicant purchased
additional vehicles and engines, and in 2002, applicant
purchased many of the vehicles owned by KPI.
In 2003, applicant began to sell portions of his
collection. He sold about forty to fifty military vehicles
to a museum in the Netherlands in 2003. On June 5, 2004,
applicant auctioned approximately 155 cars, trucks, tractors
and gasoline engines that were in his personal collection,
and retained approximately six automobiles after the
auction. Applicant received about $2 million for the
vehicles that he sold in the auction. Currently,
applicant’s collection consists of “five or seven
automobiles … four half and three-quarter ton Dodge items”
and sixteen Jeeps. Id. at pp. 32, 92.
As noted above, applicant initially maintained his 1924
Model T truck in a barn adjacent to his home. In the 1970s,
applicant moved the two vehicles in his collection to a
steel building on KSI property located on East State Street
in Iola, Wisconsin. The area where the vehicles were stored
was not opened to the general public because it was also
used in connection with the business operations of KPI. In

8 According to applicant, the Krause Foundation currently owns
one or two vehicles.

Opposition No. 91160072
16
1996, applicant purchased five acres of land located on
Aanstad Road in Iola, Wisconsin, and applicant built a
warehouse on the land to store his vehicles. In 1997,
approximately 30 vehicles owned both by KPI and applicant
were moved into the new warehouse. Other buildings were
built later on applicant's Aanstad Road property and
additional vehicles were moved into the buildings. After
the June 2004 auction, applicant sold the buildings but has
leased one building back.
When he owned the Aanstad Road buildings, applicant
allowed members of the general public into these buildings
provided they obtained his permission or the permission of
one of two of KPI’s employees whose duties involved
maintaining the collection of vehicles. One employee was a
mechanic and the other was a “housekeeper who washed cars,
kept the grease off the floor.” Id. at p. 25. Applicant
and KPI did not, and applicant does not, maintain regular
hours for public viewing of applicant's and/or KPI’s
vehicles.
Further, applicant has testified that he did not
advertise his collection. (“Let me say, we never placed
paid advertising and mentioned the collection.” Id. at
p. 42.) No federal, state, county or local tourism agencies
or chambers of commerce have listed, featured or advertised
applicant's alleged museum at any point between 1959 and
Opposition No. 91160072
17
2003, and currently do not do so. The auctioneers who
conducted the June 2004 auction of applicant's vehicles did,
however, mail a brochure advertising the auction to
approximately 20,000 people.
Applicant did not have a dedicated space or a sign
showing his collection until 1998. In 1997 or 1998,
applicant erected a large sign with “Krause Auto Collection”
on it in front of “a group of three buildings that housed
the collection,” on the Aanstad Road property. Id. at
p. 16. Applicant installed the sign because “the
[R]epublican [P]arty was having a big shindig out there [and
applicant] did open it up for use for that kind of a
meeting, and it was rather dark around there, and with no
identification around, [applicant] put the sign up so they’d
be sure to know where the event was taking place.” Id. at
pp. 18 – 19.
Applicant testified that “Krause Auto Collection”
became a formal name in the “middle, late ‘90s”; and that he
began using “Krause Auto Collection” on business cards in
2002, and later on letterhead. Krause March 17, 2004 dep.
at pp. 137 and 139.9 Applicant also used the phrase “Krause
Auto Collection” on a brochure, which applicant created in

9 Exhibit 114 to applicant's April 14, 2005 deposition is
applicant's business card, showing “Krause Auto Collection” in
prominent letters, with the designation “Chet Krause[,] Founder”
appearing on the card.

Opposition No. 91160072
18
2001 and made available to visitors to the vehicle
collection.
Applicant further testified that people, including car
clubs, have been continuously coming to see his automotive
collection since he began collecting vehicles.
Approximately one thousand persons have viewed applicant's
collection on an annual basis prior to the 2004 auction.
Applicant has not received any revenue in connection with
his alleged museum; does not charge admission; and has only
received spare vehicle parts and accessories as donations
from visitors.
At the present time applicant leases one building for
his collection. He does not have any employees, and to see
his collection visitors must call his “retirement office” in
Iola, Wisconsin to make an appointment - no regular viewing
hours are maintained. Visitors must come to his office to
get a key or arrange a meeting with applicant. In this
building, applicant maintains four or five cars, sixteen
Jeeps, two Iola fire trucks, a 1924 Model T, a 1938 REO
Speedwagon, and a 1912 horse-drawn fire engine.
Additionally, there are seven military vehicles, for a total
of thirty vehicles. Applicant includes information on the
vehicles located in his leased building that identifies the
vehicle and provides some facts about the vehicle.
Opposition No. 91160072
19
Applicant also testified that he has collected items in
addition to vehicles, and that he has a collection of U.S.
and foreign coins;10 Wisconsin bank notes from 1836 - 1865,
scrip (which applicant states is a substitute for currency
issued by a private individual as opposed to a government);
bank notes issued by national banks (beginning in 1862);
political tokens; copper mining shares of stock; and stamps.
He has over 20,000 pieces of world paper money and nearly
3,000 pieces of depression era scrip, and “a specimen of
every United States stamp there is baring probably two or
three dozen of the very earliest ones.” Krause April 14,
2005 dep. at p. 128, 131. Coins in his collection have been
used as photographic subjects for articles in applicant's
publications.
Applicant testified that his coins, as well as coins
owned by opposer, were kept in safety deposit boxes in a
bank, and that “we made extra effort to project the image
that we didn’t own large collections of coins or stamps
because those are always subject to being stolen. And so we
didn’t want to let that out … when somebody wanted one of an
especially high value, I would go get it and bring it to
them.” Krause August 24, 2004 dep. p. 472 – 473.

10 Applicant stated that his foreign coins “aren’t that valuable.
As a lot, they’re valuable, but individual pieces, it takes
thousands of them to make some money.” Krause April 14, 2005
dep. p. 72.

Opposition No. 91160072
20
Currently, applicant's numismatic collection is stored in a
vault and in safety boxes at a bank; the public can call
applicant and arrange a time to see the collection.
In contending that the foregoing activities by
applicant do not constitute “museum services,” opposer
relies on two definitions of “museum.” First, opposer cites
the definition set forth in 20 U.S.C. § 917211 which is “a
public or private nonprofit agency or institution organized
on a permanent basis for essentially educational or
aesthetic purposes, that utilizes a professional staff, owns
or utilizes tangible objects, cares for the tangible
objects, and exhibits the tangible objects to the public on
a regular basis.” Second, opposer cites the definition in
40 C.F.R. § 1180.3,12 which requires that a “museum” be
organized on a permanent basis and use a professional staff,
and that:
1. An institution which exhibits objects to the
general public for at least 120 days a year shall
be deemed to meet this requirement; and

2. An institution which exhibits objects by
appointment may meet this requirement if it can
establish, in light of the facts under all the
relevant circumstances, that this method of
exhibition does not unreasonably restrict the
accessibility of the institution’s exhibits to the
general public.

11 20 U.S.C. § 9721 pertains to the Institute of Museum and
Library Services, formed within the National Foundation on the
Arts and the Humanities, which provides, inter alia. Financial
assistance.
12 40 C.F.R. § 1180.3 pertains to the Institute of Museum and
Library Services.
Opposition No. 91160072
21

Applicant challenges opposer's definitions, and
maintains that opposer's definitions are limited to tax-
exempt entities. Applicant relies on a definition of
“museum” from Merriam-Webster Online Dictionary, accessed
from www.webster.com, as “an institution devoted to the
procurement, care, study, and display of objects of lasting
interest or value.” Brief at p. 23; Exhibit 125 to King
dep. Dr. King testified that the Merriam-Webster definition
is an accurate definition.
We do not apply the restrictive definitions of “museum”
proposed by opposer, which include requirements such that
the “institution” be a non-profit entity, that there be a
“professional staff,” or, in the case of Section 1180.3,
that the institution be open a particular amount of time per
year. The definitions of “museum” in 20 U.S.C. § 9172 and
40 C.F.R. § 1180.3 specify those qualifications an entity
must possess to gain the specific benefits described in
related statutory sections. Rather, we are guided by the
less restrictive definition of “museum” from Merriam-Webster
Online Dictionary, submitted by applicant.13

13 Dr. King has defined a “museum” as “an institution or
organization that collects, preserves and interprets objects of
cultural artistic significance.” King dep. at p. 9. Of note is
her requirement that the “objects” in the institution be of
“artistic significance.” We find her definition to be
unnecessarily restrictive as well.

Opposition No. 91160072
22
Because most of the parties’ briefs and the evidence of
record concern applicant's vehicle collection, we first
address applicant's contentions regarding his vehicle
collection. The evidence of record shows that applicant has
been a long time collector of vehicles, individually and
through his company, KPI, and was willing, as are most
collectors, to share his interests in vehicles and to show
his vehicles to those who were interested in such vehicles.
When his activities are considered as a whole, we find,
however, that applicant was not providing museum services at
the time he filed his application on April 2, 2003.
For the first fifteen years during which applicant
maintains he offered “museum services,” applicant owned a
total of two vehicles. He maintained these vehicles
initially on his private property and later on KPI’s
property, and showed them to individuals who asked to see
them. Applicant occasionally participated in parades with
his vehicles, and provided ownership and identifying
information about his vehicles through signs placed on the
vehicles.
In the mid 1970s, applicant's company, KPI, rather than
applicant himself, began acquiring vehicles. Applicant and
KPI maintained their vehicles in a building owned by KPI,
but not one dedicated to the collection; they were
maintained in a KPI facility where other critical company
Opposition No. 91160072
23
operations were ongoing, namely, packaging and shipping. It
was not until 1997 that applicant purchased a parcel of
property and constructed a building to house his collection.
From 1998 until the time that applicant filed his
application in 2003, applicant and opposer owned numerous
vehicles that were eventually maintained in three buildings
on property owned by applicant. Members of the public were
welcome to visit the collection, and did visit the
collection, but to view the collection they had to make an
appointment with applicant or one of the two individuals who
took care of the collection. Both of these individuals were
in KPI’s employment, not applicant's employment, and
applicant has described their positions as a mechanic and a
“housekeeper who washed cars, kept the grease off the
floor.” Krause April 14, 2005 dep. p. 25. In view of their
limited duties, we do not consider these two KPI employees
to be the equivalent of museum curators. Also, there is no
indication in the record as to whether these individuals, or
any other individuals other than applicant himself, provided
tours of the collection.
Significantly, it was not until 1998 that applicant
installed a sign to identify the location of the collection.
The sign, placed in front of the buildings housing the
collection, only bore the words KRAUSE AUTO COLLECTION. It
did not indicate that the collection was open to the general
Opposition No. 91160072
24
public or the time when the collection could be viewed, it
did not invite the public in to view the collection, and it
did not indicate that KRAUSE AUTO COLLECTION was a museum.
There is no indication in the record that either KPI or
applicant installed any other signs identifying or promoting
the collection or directing persons to the location of the
collection. Further, applicant has testified that the
reason the sign was installed was so that those persons who
were attending a “shindig” would know where the event was
taking place. Id. at pp. 18 – 19.
In the forty-seven years that applicant has maintained
his collection, he never once advertised his collection and,
of course, never advertised it as a museum. Hence, no
information was made available to the public regarding any
hours when the collection could be viewed, how to arrange to
view the collection or even that the general public could
view the collection. Also, applicant has not pointed to any
of the many articles that he entered into evidence – which
discuss applicant's personal accomplishments at length -
that also mention applicant's vehicle collection or that he
operates a vehicle museum. Applicant only had one brochure,
which was created in 2001, and which was handed to persons
visiting the collection. The brochure has KRAUSE AUTO
COLLECTION written on it in prominent letters and identifies
the vehicles that were in the collection, but did not
Opposition No. 91160072
25
identify the collection as part of a “museum. There is no
testimony that applicant used the brochure in connection
with any promotional efforts.
The record contains other evidence which suggests that
applicant maintained a personal collection rather than a
museum. Dr. King acknowledged that applicant's collection
of vehicles is not included on the list of accredited
museums in Wisconsin listed by the American Association of
Museums; and that applicant is not a member of the
Association of Art Museum Directors. See Exhibit 126 to
King’s dep.; King Dep. pp. 18 – 19, 30. Applicant stated
that he did not charge for admission and was not given
monetary donations.14 Also, applicant testified that the
collection “wasn’t meant to make money … it was a great big
loss.” Krause April 14, 2005 dep. p. 40. This “big loss”
suggests that applicant’s accumulation of vehicles was due
to a passion for collecting, and not an activity of an
institution devoted to the procurement, care, study, and
display of objects of lasting interest or value.
Most telling, however, is the fact that there is no
evidence in the record that applicant ever identified his
facility as a museum or indicated that his collection was
part of a museum collection.

14 In response to opposer's interrogatory no. 27, applicant states
that he only received vehicle parts as donations.

Opposition No. 91160072
26
The testimony of Dr. King, applicant's designated
expert on the topic of what constitutes a museum, has only
limited probative value on the issue of whether applicant
was providing museum services at the time applicant filed
his application. She never visited applicant's collection
and hence could not speak firsthand about the collection,
particularly as it existed in 2003. Also, there are no
copies of, and no testimony regarding, the specific
“documents, photographs, materials related to the Krause
collection … in Iola, Wisconsin” she viewed prior to her
deposition so that we can determine precisely on what she
based her opinion. Id. at p. 22. She did not know when the
photographs she viewed had been taken, although she stated
it was her understanding that they were taken in the year
prior to her deposition, which would have been in 2004, not
in 2003, when applicant filed his application. Id. As
noted above, the ultimate question in connection with
opposer's claim of non-use is whether applicant had used the
mark in connection with museum services in 2003 when he
filed his application. Dr. King simply did not have
sufficient knowledge of applicant's collection in 2003.
Further, we do not find Dr. King’s testimony regarding
the differences between a personal collection and a museum
collection persuasive. Dr. King testified that she, in
connection with her personal collection of Navajo rugs
Opposition No. 91160072
27
located in her home, does not provide museum services
because her collection does not have an educational purpose.
She explained that her collection does not “have labels
beside the things that are in my home saying this is a
Navaho rug that came from this reservation and was – was
made at such-and-such a time”; and that “they’re purely for
my private pleasure and they ha – and they don’t have any
educational function.” Id. at 34. She explained that “in
the last 50 years I think the educational part of museums in
this country, at least, has become equal to the preserving
and the collecting”; that “traditionally museums were about
preserving and collecting and not so much about education”;
and that “[i]n the last 50 years I would say that making
sure that – that a museum does have some interpretation
available … has become more and more important.” Id. at 35.
It follows from Dr. King’s comments that if she had placed
informative material next to the items in her collection of
Navajo rugs, she too would be providing museum services.
There can be no dispute that by doing so she still would not
be providing museum services. Clearly, something more is
needed to constitute the rendering of such services.
In view of the foregoing, we conclude that applicant
was not providing museum services in connection with his
vehicle collection when he filed his application in 2003.
Opposition No. 91160072
28
We now address applicant's contentions regarding his
numismatic and stamp collections. The record shows that
while they were shown to the public on request, they were
not advertised and were maintained in a vault. In fact,
applicant stated that “we made extra effort to project the
image that we didn’t own large collections of coins or
stamps because those are always subject to being stolen.”
Krause August 24, 2004 dep. at pp. 472 – 473. Thus,
applicant’s collection was not “devoted to the care, study
and display of objects of lasting interest or value.” We
find that applicant’s activities with respect to his stamp
and coin collections never constituted museum services, and
therefore applicant was not providing museum services in
connection with his stamp and numismatic collections at the
time he filed his application.
Because applicant was not providing museum services at
the time he filed his application, applicant’s application
is void ab initio, and the opposition is sustained on the
ground of nonuse.
Fraud
We next consider opposer's fraud claims. Opposer has
alleged that applicant has committed fraud on the Office in
connection with both his application and his Section 2(f)
declaration. In the application, opposer asserts that
applicant fraudulently and falsely stated (i) that he has
Opposition No. 91160072
29
used KRAUSE as a trademark in interstate commerce, and (ii)
the dates of first use and first use in commerce. In his
Section 2(f) declaration, opposer asserts that applicant
fraudulently and falsely stated that (i) he has used KRAUSE
in connection with “museum services” since at least as early
as 1959, and (ii) KRAUSE has become distinctive of
applicant's services by virtue of applicant's substantially
exclusive and continuous use of the term for at least five
years, i.e., since October 30, 1998.
Fraud in obtaining a trademark registration occurs
“when an applicant knowingly makes false, material
representations of fact in connection with his application.”
Torres v. Cantine Torresella S.r.l, 808 F.2d 46, 1 USPQ2d
1483, 1484 (Fed. Cir. 1986); Mister Leonard Inc. v. Jacques
Leonard Couture Inc., 23 USPQ2d 1064, 1065 (TTAB 1992)
(“Thus, according to Torres, to constitute fraud on the PTO,
the statement must be (1) false, (2) a material
representation and (3) made knowingly.”). The false
material representation of fact may be one the applicant
made knowingly or one which it should have known to be
false. See Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205
(TTAB 2003) (“A trademark applicant commits fraud in
procuring a registration when it makes material
representations of fact in its declaration which it knows or
should know to be false.”).
Opposition No. 91160072
30
Fraud must be proven with clear and convincing
evidence, and any doubt must be resolved against a finding
of fraud. See Giant Food, Inc. v. Standard Terry Mills,
Inc., 229 USPQ 955 (TTAB 1986) and cases cited therein.
Furthermore, fraud will not lie if it can be proven that the
statement, though false, was made with a reasonable and
honest belief that it was true. See Woodstock's Enterprises
Inc. (California) v. Woodstock's Enterprises Inc. (Oregon),
43 USPQ2d 1440 (TTAB 1997).
We turn first to opposer's claim that applicant
fraudulently and falsely stated the dates of first use and
first use in commerce in the application. If a mark was in
use at the time an application is filed, a claim of first
use, even if false, is not fraud. See Western Worldwide
Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137,
1141 (TTAB 1990) (“The Board repeatedly has held that the
fact that a party has set forth an erroneous date of first
use does not constitute fraud unless, inter alia, there was
no valid use of the mark until after the filing of the
[Section 1(a)] application.”); Colt Industries Operating
Corp. v. Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 76
(TTAB 1983) (“The Examining Attorney gives no consideration
to alleged dates of first use in determining whether
conflicting marks should be published for opposition.”).
Thus, because fraud cannot lie based on false claimed dates
Opposition No. 91160072
31
of first use, opposer's claim of fraud regarding the dates
of first use and first use in commerce set forth in the
application is legally insufficient.
We now turn to opposer's claims that applicant
fraudulently and falsely stated (i) in his application that
he has used KRAUSE as a trademark in interstate commerce;
(ii) in his Section 2(f) declaration that he has used KRAUSE
in connection with “museum services” since at least as early
as 1959; and (iii) in his Section 2(f) declaration that
KRAUSE has become distinctive of applicant's services by
virtue of applicant's substantially exclusive and continuous
use of the term for at least five years. We have already
found that applicant was not using KRAUSE as a mark for
“museum services” at the time applicant filed his
application, i.e., on April 2, 2003. Thus, applicant's
statements in his application that he has used KRAUSE as a
trademark in interstate commerce, and in his Section 2(f)
declaration that (i) KRAUSE has become distinctive of
applicant's services by virtue of applicant's substantially
exclusive and continuous use of KRAUSE for a five year
period, beginning on October 30, 2003, and (ii) applicant
has used KRAUSE in connection with museum services since at
least as early as 1959, are false. Also, all three
statements are material to the registration of the mark. If
the examining attorney had known that the mark was not in
Opposition No. 91160072
32
use in interstate commerce at the time the application was
filed, the application would have been refused as void ab
initio; if the examining attorney had known that the mark
was not in use since 1959 and for the five years preceding
the filing of the Section 2(f) declaration, and because
applicant had not submitted any other evidence of acquired
distinctiveness, the examining attorney would not have
accepted the Section 2(f) claim. Thus, but for the false
statements of use of the mark, the examining attorney would
not have allowed the application. See American Hygienic
Laboratories, Inc. v. Tiffany & Co., 12 USPQ2d 1979 (TTAB
1989); McCarthy, J. Thomas, McCarthy on Trademarks, § 31:67
(4th ed. 2004).
We therefore consider whether applicant knew or should
have known that his statements regarding use of KRAUSE as a
trademark in the application and declaration were false or
misleading. In reaching our decision, we consider
applicant's intent – an intent to deceive must be “willful.”
“If it can be shown that the statement was a ‘false
misrepresentation’ occasioned by an ‘honest’
misunderstanding, inadvertence, negligent omission or the
like rather than one made with a willful intent to deceive,
fraud will not be found. Fraud, moreover, will not lie if
it can be proven that the statement, though false, was made
with a reasonable and honest belief that it was true ….”
Opposition No. 91160072
33
First International Services Corp. v. Chuckles Inc., 5
USPQ2d 1628, 1634 (TTAB 1988), citing Smith International,
Inc. v. Olin Corp., 209 USPQ 1033, 1043-44 (TTAB 1981).
Opposer maintains, in relevant part, that applicant’s
“intent to misrepresent the services” can be determined from
“surrounding circumstances and related statements.” Brief
at p. 25. Opposer points to applicant's March 17, 2004
deposition, in which he stated:
… to organize as a museum, you then must spend 5
percent of your assessed valuation … every year,
and that could be in hiring docents or
advertising, … whatever. And so, also, you must
maintain certain hours that you’re open and all
that sort of thing and advertise it. And I didn’t
want that kind of – I wanted a collection. It was
a private collection, and if I wanted to show it
to somebody, I’d show it to them. So it was
organized as a collection ….
Subsequently, in his April 14, 2005 deposition, when asked
what museum services he provided in 1959, applicant replied:
Well, I had a collection of automobiles, and
certainly I had a – not a substantial collection
of coins like I have today or have had, but those
cars were there to see and to use for parade
purposes.

And a collection, if we can just get ‘auto
collection’ and ‘museum services’ as synonymous,
in my case, they were certainly there for visitors
to see, and the locals all knew they were there.
They would come by. I remember the former
postmaster was kind of a self-appointed tour guide
of our institution. He would bring his friends by
and show them all this stuff. They certainly were
there to look at. Krause April 14, 2005 dep. at
pp. 29 – 30.

Opposition No. 91160072
34
From applicant's testimony, opposer maintains that prior to
the filing of the application, “Applicant did not believe
his collection was a museum service; he believed that his
collection was simply a private collection available for
viewing upon specific request.” Brief at p. 26.
Opposer implies that applicant knew that he was not
providing museum services, and that applicant filed his
application simply out of spite. Specifically, opposer
asserts that applicant desired “to punish or damage KPI for
the sale of the company by the ESOP to F&W.” Id. According
to opposer, applicant was “quite upset” over the sale;
“expressed that he felt as if his name was ‘stolen’ from
him”; and that the filing of the present application “with a
priority date just prior to that held by KPI would likely
allow applicant to file infringement claims against
[opposer], and allow him to ‘get back’ at the company for
the sale undesired by him.” Brief at p. 27.
We find that opposer has not met its “heavy burden of proof”
in showing fraud. W.D. Byron & Sons, Inc. v. Stein Bros,
Mfg. Co., 377 F.2d 1001, 153 USPQ 749 (CCPA 1967). There is
no proof in the record that applicant did not personally
believe that he was not providing museum services when he
filed his application or when he signed his declaration
under Section 2.41(b). We construe applicant's statement in
his March 17, 2004 deposition that he “wanted a collection …
Opposition No. 91160072
35
[i]t was a private collection, and if I wanted to show it to
somebody, I’d show it to them. So it was organized as a
collection …” as meaning that he did not want to operate a
“formal” museum such as a not-for-profit museum, in light of
the operating parameters that are needed to gain such a
status. Further, his subsequent comment that “if we can
just get ‘auto collection’ and ‘museum services’ as
synonymous” is simply a statement of his belief that his
exhibition of his auto collection to those in the general
public who ask to see the collection, along with providing
information regarding the items in the collection, qualifies
as museum services.15 Because opposer had a good faith
belief that his activities constituted the rendering of
museum services, the element of intent that is necessary to
prove fraud is missing. See Bart Schwartz Int'l Textiles
Ltd. v. Federal Trade Comm'n, 289 F.2d 665, 129 USPQ 258,

15 When asked what the difference is between having a collection
and providing museum services, applicant testified;

“Museum services” is merely a word out of a catalog
that exists where you apply for a mark. It’s under
that. This, I think shouldn’t be confused here as a
museum that’s a 501(c)(3). You can organize a museum
under 501(c)(3) whereby they dictate lots of things
that you should do in order to do that. I prefer to
be a private collector, and if you want to substitute
“museum” for “collection,” you can. I prefer not to
use the term ‘museum’ because I believe, in the
general public, museums are a collection of art, art
museums, if you will. That’s always specified.
Although there are many kinds of museums, and the
private museums far outnumber the 501(c)(3) museums,
and those rules do not apply to a private museum.

Opposition No. 91160072
36
260 (CCPA 1961) (“[T]he obligation which the Lanham Act
imposes on an applicant is that he will not make knowingly
inaccurate or knowingly misleading statements in the
verified declaration forming a part of the application for
registration.”); Maids to Order of Ohio, Inc. v. Maid-to-
Order, Inc., 78 USPQ2d 1899, 1907 (TTAB 2006)(“[W]e find
that Ms. Kern had a reasonable basis for her belief that MTO
had used/was using the mark MAID TO ORDER in interstate
commerce for cleaning services at the time of filing the
application, the Section 8 declaration, and the application
for renewal. It was not unreasonable for Ms. Kern, as a
layperson, to believe that the above activities constituted
use of the MAID TO ORDER mark in interstate commerce.”).
Further, the fact that we have found that applicant did not
use his mark for museum services as of the filing date of
his application has no effect on our finding on this issue.
While opposer has shown that applicant was not using his
mark in interstate commerce for museum services as of the
filing of his application, opposer has not proved the
element of intent, and therefore its claims of fraud
concerning applicant's statements regarding use of KRAUSE as
a trademark in the application and declaration must fail.
Thus, for the reasons set forth in the preceding
paragraphs, opposer's claims of fraud are dismissed.

Krause April 14, 2005 dep. p. 23.
Opposition No. 91160072
37
Likelihood of Confusion

In view of our finding that applicant was not using
KRAUSE in connection with “museum services” at the time he
filed his application, we need not reach the question of
likelihood of confusion.
DECISION: The opposition is sustained on the ground of
non-use and dismissed on the ground of fraud. Registration
to applicant is refused.