Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc.

• Decision Date: 07 May 1981
• Docket Number: Appeal No. 80-559.
• Citation: 648 F.2d 1335
• Parties: TUXEDO MONOPOLY, INC., Appellant, v. GENERAL MILLS FUN GROUP, INC., Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

648 F.2d 1335

TUXEDO MONOPOLY, INC., Appellant, v. GENERAL MILLS FUN GROUP, INC., Appellee.

Appeal No. 80-559.

United States Court of Customs and Patent Appeals.

May 7, 1981.

Virginia R. Richard, New York City, attorney for appellant.

Oliver P. Howes, Jr., New York City, and Andrew Baum, Washington, D. C., attorneys for appellee.

Before MARKEY, Chief Judge, RICH, BALDWIN, MILLER, and NIES, Judges.

NIES, Judge.

This appeal is from the decision of the Patent and Trademark Office (PTO) Trademark Trial and Appeal Board (board), reported at 204 USPQ 396 (TTAB 1979), sustaining an opposition to registration of the trademark MONOPOLY for men's, women's, and children's wearing apparel — namely, dresses, skirts, coats, scarves, pant suits, blouses, sweaters, jackets, shirts, slacks, shoes, belts, pantie hose, and socks,¹ on the basis of prior use and registration of the trademark MONOPOLY for a real estate board game.² The facts are set out in detail in the opinion of the board at 204 USPQ 397-402 and familiarity with these facts is presumed. We affirm.

OPINION

In finding likelihood of confusion, the board states:

We are of the opinion that purchasers who encounter items of clothing bearing the mark "Monopoly", ... are likely to believe that, or at least wonder whether, the items originate from, or are approved by, or are in some way associated with opposer. 204 USPQ at 401.

Thus, the board appears to have found that there would be likelihood of confusion from concurrent use of the mark MONOPOLY on a board game and on all of the goods encompassed by the registration sought by appellant. We could not agree with that broad finding. Nevertheless, likelihood of confusion must be found if the public, being familiar with appellee's use of MONOPOLY for board games and seeing the mark on any item that comes within the description of goods set forth by appellant in its application, is likely to believe that appellee has expanded its use of the mark, directly or under a license, for such item.

We agree with the board that appellee's evidence establishes that appellee has built up an enormous goodwill in the mark MONOPOLY, which has been used since 1935 for a board game and that MONOPOLY may properly be termed a "famous" mark. We also find no error in the board's conclusion that it is a matter of common knowledge that famous marks are frequently used on items such as clothing, glassware, and trash cans and that appellee's licensing of its mark for use on certain novelty items supports this conclusion.³ Further, appellee's vice president testified that requests have been received by appellee for licenses to utilize its mark MONOPOLY on T-shirts (as well as other novelty clothing), and that it has acted against unauthorized use on such goods.

We conclude that use of the mark MONOPOLY on novelty T-shirts would be likely to cause confusion with appellee and that appellant's broad description of goods includes such items. Appellant's argument that it does not intend to make this type of use of the mark MONOPOLY is irrelevant. The question of the likelihood of confusion must be based upon a consideration of appellant's goods as described in the application. Feed Service Corp. v. FS Services, Inc., 58 CCPA 708, 432 F.2d 478, 167 USPQ 407 (1970); Ford Motor Co. v. Ford, 59 CCPA 1124, 462 F.2d 1405, 174 USPQ 456 (1972). Further, the description must be construed most favorably to the opposing prior user. CTS Corp. v. Cronstoms Mfg. Inc., 515 F.2d 780, 185 USPQ 773 (CCPA 1975).

Design features associated with appellant's mark, or appellant's asserted restriction of sales to an exclusive boutique in Tuxedo Park, New York, are considerations similarly irrelevant to the question of registrability of appellant's mark when such limitations are not inherent in marketing of the goods or specifically set forth as limitations in the application. The Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419 (CCPA 1977); Sheraton Corp. of America v. Sheffield Watch, Inc., 480 F.2d 1400, 178 USPQ 468 (CCPA 1973); Norton Co. v. Bear Mfg. Co., 58 CCPA 981, 438 F.2d 620, 169 USPQ 44 (1971).

Here, appellant seeks to register the word MONOPOLY as its mark without any restrictions reflecting the facts in its actual use which it argues on this appeal prevent likelihood of confusion. We cannot take such facts into consideration unless set forth in its application. Toro Co. v. Hardigg Industries, Inc., 549 F.2d 785, 790, 193 USPQ 149, 155 (CCPA 1977).

Finally, appellant asserts that the board ignored "a record which indicates appellee's specific lack of interest in collateral exploitation of its own `famous mark'." Lack of present intent to expand use of one's mark is not an overriding consideration. American Drill Bushing Co. v. Rockwell Mfg. Co., 52 CCPA 1173, 342 F.2d 1019, 145 USPQ 144 (1965). We are unpersuaded that appellee's private intent would affect public reaction to seeing the mark used in the manner discussed above.

Accordingly, we affirm the opposition for the reasons indicated.

AFFIRMED.

MILLER, Judge, with whom BALDWIN, Judge, joins, dissenting.

I dissent because of errors of the board and errors in the majority opinion leading to an unwarranted monopoly on registration of "MONOPOLY."

Proper Test

The board sustained the opposition because "purchasers who encounter items of clothing bearing the trademark `MONOPOLY', used with or without the game components, are likely to believe that, or at least wonder whether, the items originate from, or are approved by, or are in some way associated with opposer" or "would be much more likely to react to applicant's mark by thinking of opposer's familiar mark." Neither statement in its entirety expresses the correct test under section 2(d).¹ The test here is whether the trademark "MONOPOLY," registered by appellee for a game and its components in the Patent and Trademark Office on the principal register, is likely to cause confusion when applied by appellant to its wearing apparel. I agree with appellant that this test is not met.

Imprecise Approach

The basic premise of the opinions of both the board and the majority appears to be that the trademark "MONOPOLY" alone is famous. Their secondary premise (of which the board took, and the majority appears to take, judicial notice) is that famous marks are frequently used on collateral products. The majority indicates that the truth of its secondary premise is bolstered by appellee's actual collateral uses. From this it is concluded that purchasers would believe, when seeing the trademark "MONOPOLY" on a collateral product such as a T-shirt, that the product emanates in some fashion from appellee. There are fallacies in this analysis. First, the evidence does not establish that the trademark "MONOPOLY" alone is famous. The evidence only establishes that it is famous when used on games or with graphic displays of the game components on collateral products. Second, the only use under 15 U.S.C. § 1052(d) which can form the basis for an opposition is one which functions as an indication of quality control or source. Whether the use of famous marks on collateral products functions as an indication of quality control or source is a mixed question of law and fact that cannot be resolved by judicial notice. Third, the actual uses on collateral products have not in any instance been of "MONOPOLY" alone, but only in connection with graphic displays of the game components. Additionally, those actual uses referred to by the board and majority opinions frequently did not include either the term or the trademark "MONOPOLY." Further, the actual collateral uses of "MONOPOLY" were limited to tumblers, coasters, jigsaw puzzles, and rugs.² These products are not sufficiently related to clothing to warrant a finding of likelihood of confusion.

Fame of Mark — Major Premise

The majority agrees with the board that "MONOPOLY" may properly be termed a "famous" mark. Indeed, the evidence establishes that the "MONOPOLY" game is famous and that the trademark when used for the game or with graphic displays of the game components on collateral products is famous. However, beyond this evidence, the "famous" label does not warrant a monopoly on registration. It does not, ipso facto, create a presumption or inference of a likelihood of confusion. Nor does it justify the assumption that, regardless of the nature of the goods,³ the public will always identify them with a particular source. In effect, the majority appears to be either inventing a federal antidilution doctrine or proposing to grant rights in gross for famous marks. However, the Lanham Act is not an antidilution statute. Tiffany & Co. v. National Gypsum Co., 59 CCPA 1063, 1068, 459 F.2d 527, 530, 173 USPQ 793, 796 (1972). And there is no right in gross to prevent another from registering a mark that is famous, when applied by one entity to its goods or services, for use as an indication of source of, or quality control over, all other goods or services in the marketplace. See United Drug Co. v. Rectanus Co., 248 U.S. 90, 97, 39 S.Ct. 48, 50, 63 L.Ed. 141 (1918).

Judicial Notice — Secondary Premise

The board undertook to judicially recognize, and the majority opinion finds "no error in the board's conclusion," that "it is a matter of common knowledge that famous marks are frequently used on certain types of items, such as clothing, glassware, trash cans, pillows, etc., which are unrelated in nature to those goods on which the marks are normally used."⁴ However, mere use of a term which, under certain circumstances, may function as an indication of quality control or source is not relevant to an opposition proceeding under 15 U.S.C. § 1052(d) unless the particular term so functions with respect to the particular goods involved in the opposition. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). Further, possible uses of famous marks in general are not...