Van Dyne-Crotty, Inc. v. Wear-Guard Corp.

• Decision Date: 25 February 1991
• Docket Number: WEAR-GUARD,90-1277,Nos. 90-1276,DYNE-CROTT,INC,s. 90-1276
• Citation: 926 F.2d 1156,17 USPQ2d 1866
• Parties: VAN, Appellant, v.CORPORATION, Cross-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1156

926 F.2d 1156

17 U.S.P.Q.2d 1866

VAN DYNE-CROTTY, INC., Appellant, v. WEAR-GUARD CORPORATION, Cross-Appellant.

Nos. 90-1276, 90-1277.

United States Court of Appeals, Federal Circuit.

Feb. 25, 1991.

Gail L. Morrissey, Frost & Jacobs, Cincinnati, Ohio, argued, for appellant. With her on the brief, were James D. Liles and Kenneth B. Germain.

Milton Springut, Lieberman Rudolph & Nowak, New York City, argued, for cross-appellant. With him on the brief, were David A. Kalow and Kevin S. Rhoades.

Before RICH, NEWMAN, and MICHEL, Circuit Judges.

MICHEL, Circuit Judge.

Van Dyne-Crotty, Inc. ("Van Dyne-Crotty" or "VDC") appeals from the final decision of the United States Patent and Trademark Office, Trademark Trial and Appeal Board ("Board"), granting Wear-Guard Corporation's ("Wear-Guard") petition to cancel VDC's registration of the block letter trademark "CLOTHES THAT WORK" (No. 1,396,746). Wear-Guard Corp. v. Van Dyne-Crotty, Inc., Can. No. 16,340 (TTAB Jan. 24, 1990). The Board based the cancellation on the grounds that concurrent use of VDC's registered trademark and of a series of marks first used by Wear-Guard would be likely to result in confusion, mistake, or deception and that the Wear-Guard series had priority of use over the VDC trademark. Because the Board, in addition, correctly rejected VDC's attempt to "tack" onto its registered mark the prior use of a later acquired, non-equivalent mark, we affirm.

BACKGROUND

Van Dyne-Crotty and Wear-Guard both compete in the uniform and work clothes market. Their product lines range from jumpsuits and smocks to T-shirts, caps and aprons--all geared for use in the work place. VDC and Wear-Guard sell their clothing apparel through catalogs, trade magazines, and field sales representatives.

In addition, Wear-Guard operates its own chain of retail stores. Both companies plan to or have begun to expand their product lines to offer heavy duty clothing for purchase by individual consumers, rather than just employers, for use in everyday household work or weekend leisure activities.

On June 10, 1986, registration was issued to Van Dyne-Crotty for its block letter trademark "CLOTHES THAT WORK" with claimed first use dates of July 8, 1985 (in printed catalogs) and September 3, 1985 (affixed to wearing apparel). On April 24, 1987, Wear-Guard petitioned the Board for cancellation of the VDC registration. In its cancellation petition, Wear-Guard alleged that it had employed a series of facially similar marks--CLOTHING THAT WORKS, CLOTHES THAT WORK HARD, and CLOTHES THAT WORK OVERTIME--"as early as 1983 ... for diverse articles of wearing apparel and related accessories." Wear-Guard, slip op. at 2.

Following Wear-Guard's cancellation petition, in September 1988, VDC acquired the mark "CLOTHES THAT WORK. FOR THE WORK YOU DO" from Horace Small Manufacturing Company ("Horace Small"), a maker of uniforms and other work clothing, for $25,000. Horace Small began using its trademark in the mid-1970s. Although its products were similar to those of VDC and Wear-Guard, Horace Small targeted a substantially different market. Almost all Horace Small sales were in the wholesale rather than retail market, i.e., Small's customers were distributors who resold the clothing to the final, or end-user, customer. Horace Small did not compete with either Wear-Guard or VDC; in fact, each was considered a potential customer, who, in turn, could sell its manufactures on the retail market.

Van Dyne-Crotty amended its pleadings before the Board to reflect its acquisition of the Horace Small mark and further alleged, on the assumption that the registered and the Horace Small marks were legal equivalents, that by "tacking" on Horace Small's use since the mid-1970s of its "CLOTHES THAT WORK. FOR THE WORK YOU DO" mark to the "CLOTHES THAT WORK" mark, the VDC mark was in use prior to any of the Wear-Guard marks. ¹

Despite VDC's purchase of the Horace Small mark, the Board granted Wear-Guard's cancellation petition, ruling first that the VDC mark and the Wear-Guard series of marks were legal equivalents, then that at least one of the Wear-Guard marks was in use prior to when VDC commenced use of its "CLOTHES THAT WORK" mark, and that VDC could not "tack" Horace Small's prior use of its mark to the registered mark because, inter alia, they were not legal equivalents.

On appeal, Van Dyne-Crotty challenges only the Board's decision to disallow "tacking" of the priority rights of the Horace Small mark onto VDC's rights in the registered mark. Wear-Guard appeals the Board's decision to allow Van Dyne-Crotty to introduce evidence relating to the acquired mark, as to which Wear-Guard alleges it was unable to take testimony or depositions.

DISCUSSION

Our jurisdiction to review final orders of the Trademark Trial and Appeal Board rests on 28 U.S.C. Sec. 1295(a)(4)(B) (1988) (Federal Circuit has exclusive appellate jurisdiction over TTAB decisions).

I

A

Only the Board's determination that "CLOTHES THAT WORK. FOR THE WORK YOU DO" and the registered mark, "CLOTHES THAT WORK," are not legal equivalents is seriously at issue. ² In rather cursory fashion, the Board ruled that the marks were not confusingly similar and therefore not legal equivalents, because "[p]urchasers seeing these two marks would clearly differentiate them and would simply not consider them to be the same mark." Wear-Guard, slip op. at 7.

A determination by the Board that two marks are so confusingly similar that they constitute legal equivalents is a legal determination, and is not entitled to the same deference as a factual finding on review. Cf. Sweats Fashions, Inc. v. Pannill Knitting Co., Inc., 833 F.2d 1560, 1565, 4 USPQ2d 1793, 1797 (Fed.Cir.1987) ("The uniform precedent of this court is that the issue of likelihood of confusion is one of law."); In re Bed & Breakfast Registry, 791 F.2d 157, 158, 229 USPQ 818, 818-19 (Fed.Cir.1986) (likelihood of confusion, on appeal from the Board, is reviewed for correctness as a matter of law).

Clearly then, and as both parties recognize, the threshold issue before us is whether the Horace Small trademark "CLOTHES THAT WORK. FOR THE WORK YOU DO" is the legal equivalent of VDC's "CLOTHES THAT WORK" mark for the purposes of "tacking" its prior use onto use of the Van Dyne-Crotty mark. Only if we were to conclude that the two marks are legal equivalents, would this court then be required to address such ancillary issues as whether the conveyance of the mark was, as Wear-Guard argues, a "naked assignment" amounting to little more than a sham, wherefore its prior use by Horace Small cannot be "tacked."

B

As the Board correctly noted, the standard of legal equivalence used in reviewing efforts to "tack" the prior use of one mark onto that of another is higher than that used in evaluating two competing marks. Wear-Guard, slip op. at 7. The previously used mark must be the legal equivalent of the mark in question or indistinguishable therefrom, and the consumer should consider both as the same mark. Compania Insular Tabacalera v. Camacho Cigars, Inc., 167 USPQ 299, 303-04 (TTAB 1970). However, for the purposes of "tacking," even if the two marks are confusingly similar, they still may not be legal equivalents. Id. Instead, the marks must create "the same, continuing commercial impression," Ilco Corp. v. Ideal Security Hardware Corp., 527 F.2d 1221, 1224, 188 USPQ 485, 487 (CCPA 1976), and the later mark should not materially differ from or alter the character of the mark attempted to be "tacked." See 1 J. Gilson, Trademark Protection and Practice Sec. 3.03 at 3-67-68 (1990) ("What may seem minor to the trademark owner modifying his mark may, from the standpoint of maintaining continuous priority rights, result in an entirely new mark with its own, and later, priority.").

It does not appear that the Board entertained any other evidence concerning the legal equivalence of these two marks except for the visual or aural appearance of the marks themselves. However, no more was necessary. Cf. In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361-62, 177 USPQ 563, 567-68 (CCPA 1973) (legal equivalence based on likelihood of confusion may be found simply on the similarity or dissimilarity of the marks in their entirety). Merely from review of the marks, it is clear that they create different commercial impressions. ³

VDC argues otherwise, claiming that the Board should have considered "CLOTHES THAT WORK" as simply the abbreviated...