Taylor Corp.v.Barbara Schaffer

Trademark Trial and Appeal Board

Jul 1, 1998

No. 91098357 (T.T.A.B. Jul. 1, 1998)

Paper No. 16
CEW/pwc
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB JULY 1, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Taylor Corporation
v.
Barbara Schaffer
_____
Opposition No. 98,357
to application Serial No. 74/483,306
filed on January 27, 1994
_____
Laura J. Hein of Gray, Plant, Mooty, Mooty & Bennett for
opposer
Robert H. Ware of Ware, Fressola, Van Der Sluys & Adolphson
for applicant
______
Before Rice, Simms and Walters Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Taylor Corporation filed its opposition to the
application of Barbara Schaffer to register the “angel
cartoon character design” shown below for "printed
publications, namely greeting cards, cartoon books and
illustrated children's books." 1

1 Application Serial No. 74/483,306, filed January 27, 1994, in
International Class 16, based on an allegation of use in commerce in
Opposition No. 98,357
2
As grounds for opposition, opposer asserts that it and
its predecessors in interest have for many years "been in
the business of creating, manufacturing and selling greeting
cards and related social stationery, all in original
designs"; that applicant "was a full-time employee of
opposer [or its predecessors in interest] for twenty years,
from approximately 1974 until approximately April 1, 1994";
that “in the course of performing her duties as opposer’s
employee, applicant created numerous original greeting card
designs" used by opposer in its lines of greeting cards;
that "Applicant created for and on behalf of opposer in the
course of her employment" a series of Christmas card designs
featuring "little angels"; that cards bearing these designs
have been sold by opposer under the mark JOY; that the JOY
line of cards “[is] among opposer’s most popular product
lines and [has], for many years, represented a significant
portion of opposer’s sales”; that opposer is the owner of
all of the designs created by applicant during the course of

connection with the identified goods, alleging dates of first use and
use in commerce as of 1968.
Opposition No. 98,357
3
her employment by opposer, including the applied-for angel
cartoon character design.
Opposer alleges, further, that the industry and public
have come to recognize these designs "as the property and
trademark of Opposer" by virtue of opposer’s "long and
exclusive use" thereof on its products;2 and that
applicant's mark, when applied to applicant's goods, “if
any,” so resembles opposer's marks, as to be likely to cause
confusion under Section 2(d) of the Trademark Act.
Applicant, in its answer, denies the salient
allegations of opposer’s claims and asserts that the "little
angel" character "is the exclusive property of Applicant";
and that “by publishing particular cartoons [designed by
applicant] as greeting cards or Christmas cards, opposer and
its predecessor acquired no title or ownership interest in
Applicant's original cartoon character."
In addition, applicant affirmatively asserts
that, although she was a full-time employee of David Forer &
Company, which published many of her designs, David Forer
"never claimed title or ownership rights in [applicant's]
original Little Angel character per se, and never requested,
received or asserted any trademark rights therein" (emphasis
in original); that opposer's predecessors in interest have

2 Opposer claims that it "is the owner of numerous other trademarks and
federal trademark registrations, including the marks MASTERPIECE STUDIOS
(Registration No. 956,528), THE FORERS (Registration No. 1,249,802), and
BRETT-FORER (Registration No. 1,220818)." However, opposer has not made
any of its claimed registrations of record in this proceeding, and we
have not considered them herein.
Opposition No. 98,357
4
not "claimed or displayed as a trademark" applicant’s
designs other than "one cherub carrying a JOY placard" in
connection with Forer or Brett-Forer cards; and that
applicant’s designs are recognized "as a cartoon character
trademark for Applicant’s drawings." Applicant concedes
that in August, 1994, applicant and opposer entered into a
"free-lance commission agreement" for “eleven different
greeting card artwork designs, all or most for Christmas
cards, by which applicant assigned the artwork, and its
copyrights and reproduction rights to opposer for use as
greeting cards or catalogs therefor.” Applicant alleges,
however, that under the terms of the agreement applicant
"expressly retained 'all rights to copyright, use, display
and publish derivative artwork and reproductions thereof for
non-greeting card products'" 3; and that by this agreement,
opposer "has clearly waived any rights it might otherwise
have claimed in Applicant's cartoon character trademark. 4"
Applicant also alleges "unclean hands and predatory
misconduct" on the part of opposer.
The record consists of the pleadings; the file of the
involved application; the testimony depositions of
applicant, Barbara Schaffer, as taken by each party; the

3 We note that some of the arguments and evidence of both parties
concern the ownership of a copyright in the “little angel” designs. The
question before us concerns the registrability of the applied-for design
and, thus, we have not considered the issue of copyright in our
determination.
4 In her brief, applicant argues that she licensed use of the mark at
issue to opposer. Since applicant failed to offer any evidence in
support of this argument we have not considered it.
Opposition No. 98,357
5
testimony deposition of Jay Stein, executive vice president
of Butterick, Inc., a predecessor in interest to opposer;
the testimony depositions of David Forer and Margery Forer,
former principals of D. Forer & Company, also a predecessor
in interest to opposer; and opposer's and applicant’s
exhibits in connection with the aforementioned testimony. 5
Both parties filed briefs on the case but an oral hearing
was not held.
The evidence in this case establishes that opposer is
the successor in interest to the business of D. Forer &
Company (Forer), an independent company that designed,
produced and sold greeting cards. Forer was founded in 1949
and operated by David and Margery Forer, both of whom
remained with the business until they retired during 1991 or
1992. In December, 1986, Butterick, Inc. (Butterick)
purchased all of the assets of Forer, except the
manufacturing facility. Butterick, through its wholly-owned
subsidiary, Masterpiece Studios, continued to operate the
business, which apparently was known as both D. Forer &
Company and Brett-Forer Greetings, Inc. Elise Falkinberg,
of Butterick, eventually took over operation of Forer from
David and Margery Forer. In December, 1993, Forer was
purchased by opposer, Taylor Corporation, as part of an
agreement to acquire Masterpiece Studios by Chicago

5 Opposer made a number of objections during the course of applicant’s
testimony deposition. However, while applicant argued against these
objections in her brief, the objections were not renewed by opposer in
its brief. Thus, we consider these objections to have been waived.
Opposition No. 98,357
6
Holdings, a company formed by Taylor Corporation to make
this acquisition.
The record establishes, also, that applicant began
designing greeting cards for various companies in
approximately 1961; and that she created a series of designs
she denominated as “little angel” designs which consisted of
drawings of stylized angels with consistent characteristics
that were portrayed in various poses and scenes. In 1966,
applicant was hired by Forer to design greeting cards and
she eventually became Forer’s art director. Applicant
worked for Forer and its successors in interest as a
salaried employee until 1994, with the exception of a one-
year period, from 1983 to 1984, during which applicant
worked on a free-lance basis designing greeting cards for
Forer and, during the same time period, pursued other
business unrelated to the design or sale of greeting cards.
Following the termination of her employment by opposer,
applicant continued to design greeting cards for opposer on
a free-lance basis through 1994. At various times
throughout her long period of employment for opposer and its
predecessors in interest, applicant did free-lance design
work for other companies or individuals for use on greeting
cards and other products; however, she made her “little
angel” designs only for the greeting cards of opposer and
its predecessors in interest.
Forer developed and offered several lines of greeting
cards, each line having distinct characteristics and these
Opposition No. 98,357
7
product lines were continued by Forer’s successors in
interest. Applicant designed cards primarily for opposer’s
and its predecessors’ Joy line, comprising informal and
often humorous designs. Applicant’s “little angel” designs
appeared as the front page design of a significant part of
the Joy line of cards for many years. The trademark JOY is
used in connection with the Joy line of greeting cards on
the backs of the cards and in catalogs. The evidence
establishes that for about six years during the 1980’s, the
JOY trademark was featured on the backs of the Joy line of
cards as follows.
Following the purchase of Forer by Butterick, and its
operation by Masterpiece Studios, the trademark JOY appeared
on the backs of the Joy line of cards as follows.
We note that the applied-for design is not the same as
the JOY trademark featuring the angel and placard design,
which was used as a trademark during the 1980’s in
Opposition No. 98,357
8
connection with Forer’s greeting cards. 6 Similarly the
applied-for design is not the same as the designs depicted
on the fronts of the several cards submitted as specimens
and as evidence in this case, although all of the angels are
similar stylistically. The angel depicted in the applied-
for design is the same as the angel depicted in part of the
design on the front of one of opposer’s cards. However,
such design on the front of the cards is different from the
particular design comprising the applied-for design and it
is not a trademark. Rather, the evidence of record shows
the applied-for design used only as part of one ornamental
cover for greeting cards.
There is no question that applicant is the creator of
the “little angel” designs, which include the applied-for
design. Not only do the parties not dispute this fact, but
the greeting card catalogs of opposer and its predecessors
tout this fact. Applicant testified that the applied-for
design, as well as all the “little angel” designs, have been
used as cover designs on greeting cards produced and sold by
opposer or its predecessors in interest; and that, outside
of her employment for opposer and its predecessors, she has
not produced or sold greeting cards using the aforementioned
designs. Applicant testified, further, that, except for a
small number of figurines sold at crafts fairs during the

6 It is not relevant to the issues before us to determine the ownership
Opposition No. 98,357
9
1980s, she has not used any “little angel” design, including
the applied-for design, as a trademark or in any other
manner in connection with any of the goods identified in the
application.
There is also no question, and the parties do not
dispute, that applicant created the “little angel” designs
for greeting cards in the context of her employment for
opposer and its predecessors 7; and that the “little angel”
designs were and are used by opposer and its predecessors on
greeting cards as cover designs.
Opposer argues, essentially, that, because applicant
has not used the applied-for design in connection with
greeting cards outside the scope of her employment for
opposer and its predecessors, or in connection with the
other identified goods at all, any trademark rights arising
in the applied-for design in connection with greeting cards
inure to opposer’s benefit. Opposer concludes that,
therefore, any use by applicant of the applied-for design in
connection with any of the identified goods will result in a
likelihood of confusion, under Section 2(d) of the Act, with
opposer’s use of the same mark in connection with greeting
cards.
The term “trademark,” as defined in the relevant part

of this mark as it is clearly not the mark applied for herein.
7 While applicant may have conceived and drawn little angels prior to
her employment by Forer, there is no evidence that, prior to her
employment by Forer, she either created or used the specific designs
Opposition No. 98,357
10
of Section 45 of the Trademark Act, means “any word, name,
symbol, or device, or any combination thereof used by a
person to identify and distinguish his or her goods,
including a unique product, from those manufactured or sold
by others and to indicate the source of the goods, even if
that source is unknown.” Clearly, not every word,
combination of words, or design which appears on an entity’s
goods functions as a trademark. In re Remington Products
Inc., 3 USPQ2d 1714 (TTAB 1987). Thus, the mere fact that
the applied-for design may appear on the cover of greeting
cards does not make it a trademark. To be a mark, the
designation must be used in a manner calculated to project
to purchasers or potential purchasers a single source or
origin for the goods. Mere intent that a designation
function as a trademark is not enough in and of itself to
make that designation a trademark. id.
A critical element in determining whether a term is a
trademark is the impression the term makes on the relevant
public. In the case before us, the inquiry is whether the
design sought to be registered would be perceived as a
source indicator or, rather, as merely an ornamental design
in connection with the identified goods. We find nothing in
the record to indicate that either party adopted or used the
design which is the subject matter of this application as a

appearing on opposer’s and its predecessors’ greeting cards.
Opposition No. 98,357
11
trademark in connection with greeting cards or the other
identified goods. Thus, opposer’s case must fail because
opposer has not established it owns a proprietary interest
in the applied-for design as a trademark in connection with
greeting cards.
The evidence concerning applicant’s salaried and free-
lance work for opposer and its predecessors is silent on the
trademark significance of the “little angel” designs, in
general, and the applied-for design, in particular. Because
the evidence has not established that the applied-for design
is a trademark, it is irrelevant that the 1994 free-lance
agreement between opposer and applicant addresses ownership
of trademarks. Similarly, it is irrelevant that portions of
asset purchase agreements purportedly transferring the Forer
business first to Butterick and later to opposer appear to
convey trademark rights as part of the predecessor’s assets
without specific mention of the applied-for design or the
little angel designs .8
In conclusion, opposer has not established that it is
the owner of trademark rights in the applied-for design in
connection with greeting cards. Nor has opposer established

8 While, in view of our decision, it is unnecessary to consider the
substance of the agreements made of record, we note that the incomplete
nature of the purported asset purchase agreement submitted as Stein
Exhibit No. 2 renders it of little probative value for any purpose. In
particular, the portion of the agreement submitted does not indicate the
parties to it and Mr. Stein’s testimony in this regard is not entirely
clear as to what parties are involved. Further, the portion of the
agreement submitted does not include a copy of Schedule 12 which
Opposition No. 98,357
12
ownership of any mark or marks in connection with greeting
cards for which there is a likelihood of confusion with the
applied-for design as it may be used in connection with the
identified goods.9
Because we have determined that applicant has not used
the applied-for design in connection with any of the goods
identified in the application and, further, that any use
that may have been made of the subject matter of this
application appears to have been merely as part of an
ornamental design on greeting cards, we hereby remand the
application to the Examining Attorney to refuse registration
on the ground that the applied-for design is not used as a
trademark. Trademark Rule 2.131.

purports to identify the trademarks involved in the transfer.
9 The only trademark involving an angel design shown in this
record is the trademark of the angel holding a placard with the
word JOY thereon, which the evidence shows was used only during
the 1980’s. In the absence of evidence of continuing use of this
mark, we presume this mark is abandoned. Therefore, we do not
consider the question of likelihood of confusion of this mark
with the applied-for design, in the event that such design could
be shown to be a trademark owned by applicant.
Opposition No. 98,357
13
Decision: The opposition is dismissed. The
application is remanded to the Examining Attorney to refuse
registration, consistent with the facts found herein, on the
ground that the subject matter of the application is not
used as a trademark.
J. E. Rice
R. L. Simms
C. E. Walters
Administrative Trademark
Judges, Trademark Trial and
Appeal Board