Selva & Sons, Inc. v. Nina Footwear, Inc.

• Decision Date: 12 April 1983
• Docket Number: Cancellation No. 12801.,Appeal No. 82-586.
• Citation: 705 F.2d 1316
• Parties: SELVA & SONS, INC., Appellant, v. NINA FOOTWEAR, INC., Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

705 F.2d 1316

SELVA & SONS, INC., Appellant, v. NINA FOOTWEAR, INC., Appellee.

Appeal No. 82-586. Cancellation No. 12801.

United States Court of Appeals, Federal Circuit.

April 12, 1983.

Arthur O. Klein, New York City, argued for appellant. With him on brief were Alfred W. Vibber and Mark J. Regen, New York City.

Steven H. Bazerman, New York City, argued for appellee. With him on brief were Eric D. Offner, Angelo Notaro, Julius Rabinowitz and Perla M. Kuhn, New York City, of counsel.

Before RICH, NICHOLS and BALDWIN, Circuit Judges.

RICH, Circuit Judge.

This appeal is from the October 7, 1981, decision of the Trademark Trial and Appeal Board (board) of the United States Patent and Trademark Office (PTO) dismissing appellant's petition to cancel appellee's registration No. 875,184, issued August 19, 1969 of the mark NINA for ladies' shoes. Dismissal resulted from appellee's motion to dismiss on various grounds, as hereinafter explained. The board's decision is in part vacated, in part reversed, and the case is remanded.

Background

Appellee owns three trademark registrations, each on a mark whose dominant portion consists of the name NINA: (1) No. 681,187, issued June 30, 1959, for NINA, in distinctive lower case script with a crown over the "i", for ladies shoes; (2) No. 752,173, issued July 12, 1963, for NINA DOLL, in script with a doll, for ladies shoes; and, (3) No. 875,184, issued August 19, 1969, for NINA, in block letters, for ladies' shoes, the registration sought to be cancelled. Appellant was the owner of expired registration No. 590,175, issued May 2, 1954, for NINO, in script, for clothing (not renewed), and is the owner of registration No. 1,124,953 for NINO, in script for dance shoes for use by men, women and children.

In 1978, appellee opposed the last of appellant's registrations above listed, and appellant filed a counterclaim for cancellation of appellee's three registrations listed above. The result of these actions was a written settlement agreement of February 20, 1979, between the parties hereto in which each contracted to refrain from challenging the validity of the other's registration(s) and from challenging "their right to use and to sell goods under such Trademark Registrations sic." (Goods are sold under marks, not registrations.)

On November 3, 1980, appellant filed a petition to cancel appellee's registration No. 875,184 (NINA in block letters) on the ground that appellee filed a fraudulent § 8 affidavit of continued use (15 U.S.C. § 1058(a)), alleging, inter alia:

7) On information and belief respondent has filed as specimens, proving the continued use of the trademark NINA in block letters, which were attached to an affidavit dated September 20, 1974, in which the specimen attached had the word NINA in special script and a crown design superimposed over the letter "i". The crown design and the special script form a depiction which is a different commercial impression than the commercial impression rendered by the word NINA in plain block letters. The registration of applicant was fraudulently maintained, because the specimens filed with the Section 8 affidavit by applicant on September 20 of 1974, clearly indicated that applicant was using at that time a trademark which was a material change from the trademark NINA in block letters. This does not constitute a technical defect in the affidavit, but a fatal defect in the affidavit.

A month after filing the petition to cancel, appellant filed, on December 3, 1980, under Fed.R.Civ.P. 34, a request for the production of documents asking for

1. All agreements entered into between Nina appellee and Nino Gesellschaft mit beschraenkter Haftung and Co. relating to the Opposition No. 49519.

2. All correspondence between Nina and Nino Gesellschaft mit beschraenkter Haftung and Co.

It appears that the above-named German company opposed appellee's application serial No. 276,943 which resulted in the registration appellant now seeks to cancel. The present record does not disclose how that dispute was resolved.

On January 14, 1981, appellant's counsel wrote appellee's counsel asking him whether he could come over to his office to inspect and copy the above-requested documents. We infer from the record that this request was rebuffed.

On February 26, 1981, appellee moved the board to dismiss the petition for cancellation, first, "on the ground that the Petitioner has failed to state a claim upon which relief can be granted since the issues in this opposition sic have already been decided by this Court sic, thus estopping Petitioner from bring this action against the Respondent or to dismiss on such other grounds as the Board liens sic just and proper," and on the second specific ground that "Petitioner lacks standing to bring it." Appellee also made some ancillary motions for a stay and attorney's fees.

Board

On the motion to dismiss, the board stated the issue to be "whether respondent's use of the mark `NINA' shown in script form with a crown design over the "I" demonstrates that the registered mark in block letters was still in use and whether the filing of respondent's affidavit under Section 8, in view of the change in the presentation of respondent's mark, constituted fraud on this office."¹ The board resolved the issue as follows:

Although the mark is displayed in stylized form on the specimen submitted with this Section 8 affidavit, there can be no question that respondent was continuing its use of the mark on the same article for which the term was registered. We believe that the mark as used in the specimen must be considered substantially the same as the mark registered. Although the stylized mark and the mark "NINA" in block capitals are not exactly the same, one being in script form with a crown design appearing above the "I" and the other being in block letters, we believe that both marks would be perceived by potential purchasers, who would not be expected to remember the exact display of the stylized mark, as legally identical. * * * Further, fraud, the willful withholding of material information to obtain something that the party practicing such deceit would not otherwise have been entitled to citation omitted, cannot be said to have taken place where the office had before it a specimen showing the mark as currently used. Respondent cannot be charged with the willful withholding of any material information under these circumstances, and we believe that on this record there can be no fraud.

In response to appellee's motion to dismiss on the second ground, namely, that petitioner lacked standing,² the board stated that "the question is whether the registered mark `NINA' in block letters for ladies' shoes is substantially identical to any of respondent's unchallenged existing registrations." The board concluded that

* * * we must consider the mark herein sought to be cancelled to be substantially identical to the mark shown in Registration No. 681,187, also for ladies' shoes. Accordingly, we also hold that petitioner cannot be damaged by the continued existence of respondent's registration sought to be cancelled because of the subsistence of an unchallenged registration for a substantially identical mark for identical goods.

For the above reasons, the board granted appellee's motion and dismissed appellant's petition for cancellation. This appeal followed.

Arguments on Appeal

Appellant first argues that because the board relied on three exhibits attached to appellee's memorandum in support of its motion to dismiss, it was not treated as such a motion, and was in fact treated as a motion for summary judgment and should have been, but was not, disposed of as provided in Fed.R.Civ.P. 56, pursuant to Rule 12(b), last sentence.³ Further, appellant states, if the motion was treated as one to dismiss, it should not have been granted, for, in deciding such motions, the allegations of the complaint (here a petition) are to be taken as true.

Appellant also argues that the board's handling of appellee's motion failed to meet the requirements of Rule 56 because "issues of fact were involved in the Board's decision," and because discovery was essential since "facts essential to justify the opposition sic, cancellation were only in the possession of the appellee." As to the former rationale, appellant argues:

In making its decision to dismiss the cancellation proceeding, the Board made several findings of fact. The Board found 1) the mark as used in the specimen must be considered substantially the same as the mark registered, 2) the appellee was using the plain block letters trademark NINA, as registered when it filed its Affidavit of Use, and 3) that no fraud was committed by the appellee. As the Board has to make these findings of fact, in order to reach the issue of law, whether or not the appellant could be damaged which was decided in favor of appellee, the motion for summary judgment should not have been granted.

Because "facts solely within the possession of the appellee," such as "the use which was being made by the appellee of the trademark and whether the appellee was entitled to use this trademark" were "solely within the possession of the appellee," appellant argues that the motion should have been stayed while discovery proceeded.

Appellee counters that the board did not consider any extraneous matter in ruling on its motion to dismiss. The three exhibits referenced by appellant were (1) a copy of appellee's registration No. 875,184, the subject of the petition to cancel; (2) a copy of the settlement agreement upon which appellee based its estoppel argument (which argument the board refused to consider); and, (3) illustrations of appellee's mark in another registration of and application for marks corresponding to the mark of the challenged registration. Appellee notes that because "the Board cited the actual trademark registrations contained in the Office's records * * *, it did not consider the third...