926 F.2d 1156 (Fed. Cir. 1991), 90-1276, Van Dyne-Crotty, Inc. v. Wear-Guard Corp.

Docket Nº:90-1276, 90-1277.
Citation:926 F.2d 1156
Party Name:17 U.S.P.Q.2d 1866 VAN DYNE-CROTTY, INC., Appellant, v. WEAR-GUARD CORPORATION, Cross-Appellant.
Case Date:February 25, 1991
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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926 F.2d 1156 (Fed. Cir. 1991)

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

February 25, 1991

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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.

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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

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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."...

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