National Cable Television Ass'n, Inc. v. American Cinema Editors, Inc.

• Decision Date: 02 July 1991
• Docket Number: No. 90-1247,90-1247
• Citation: 19 USPQ2d 1424,937 F.2d 1572
• Parties: NATIONAL CABLE TELEVISION ASSOCIATION, INC., Appellant, v. AMERICAN CINEMA EDITORS, INC., Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1572

937 F.2d 1572

19 U.S.P.Q.2d 1424

NATIONAL CABLE TELEVISION ASSOCIATION, INC., Appellant, v. AMERICAN CINEMA EDITORS, INC., Appellee.

No. 90-1247.

United States Court of Appeals Federal Circuit.

July 2, 1991.

Gloria C. Phares, of Weil, Gotshal & Manges, New York City, for appellant.

Robert L. Balmuth, of Davis, DiGrazia & Balmuth, Irvine, Cal., for appellee.

Before NIES, Chief Judge, and RICH and MAYER, Circuit Judges.

NIES, Chief Judge.

National Cable Television Association, Inc. (Cable), appeals the decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board, American Cinema Editors, Inc. v. National Cable Television Assoc., Cancellation No. 17,390 (TTAB Dec. 29, 1989), granting the petition of American Cinema Editors, Inc. (Editors), to cancel Cable's Registration No. 1,311,529 for the mark ACE, used since 1979, for the service of "conducting award presentation ceremonies for excellence in cable television broadcasting."

On cross-motions for summary judgment, the Board held that Editors was entitled to prevail because Editors had long prior use of, and identification with, the acronym A.C.E., as well as ACE, in the entertainment industry, including use in connection with presentations of awards for excellence in film editing for motion pictures and television, and that Cable's use of ACE for television awards ceremonies, including making awards for film editing, was likely to cause confusion. The Board additionally rejected Cable's defense that Editors was precluded from maintaining the instant action due to laches, estoppel or acquiescence in asserting its rights. We affirm.

Issues

1. Does the record show a genuine issue of material fact with respect to Editors' asserted rights in ACE?

2. Is Cable's use of ACE as a service mark for awards ceremonies likely to be attributed to Editors?

3. Is Editors' petition for cancellation of Cable's registration barred by laches, estoppel or acquiescence?

I

American Cinema Editors, Inc., was formed in 1951, by members of the cinema editors profession, as a nonprofit corporation for the primary purpose of advancing the art and science of film editing. Membership in Editors is by invitation only and is extended to individuals who have achieved preeminence in the art of film editing. As of April 1989, there had been only 267 individuals so selected. Members are entitled to display the acronym "A.C.E." after their names which appear, for example, in the screen credits appended to television programs and motion picture films. A mark so used by members of an organization is known as a "collective mark." See 15 U.S.C. Sec. 1127 (1988). ¹ In addition, the undisputed and extensive evidence of record shows that the name "American Cinema Editors" is frequently shortened to "ACE" or "the ACE" by its officers, by members, by film professionals, and in the press and that this usage began long prior to 1979.

To advance its objects and purposes, Editors has, since 1952, presented annual awards for outstanding achievement in the art of film editing. Any film editor, whether a member of Editors or not, is eligible to receive an award. The awards are made not only for motion picture film editing but also, since at least 1963, for television editing.

Editors originally called its awards the "A.C.E. Quarterly Awards." Sometime in or about 1962, Editors chose "EDDIE" as the name for its awards and also referred to them as "A.C.E. EDDIE" awards. However National Cable Television Association, Inc., headquartered in Washington, D.C., is a trade association representing the cable television industry. In 1979, Cable initiated the presentation of annual awards in connection with cable programming, naming them "ACE" awards, an acronym for "A ward for C ablecasting E xcellence." In 1985, an ACE award was added for the category of film editing. That year a member of Editors, Edward Abroms, A.C.E., received such an ACE Award from Cable. Also in its 1985 promotional materials, Cable listed several members of Editors among its "ACE FINAL JUDGES," with the Editors' A.C.E. mark after each name, specifically "Bernie Balmuth, A.C.E."; "James Blakeley, A.C.E."; "John F. Burnett, A.C.E."; "Jerrold L. Ludwig, A.C.E."; and "Irving Rosenblum, A.C.E."

                others, particularly the press, have long identified them simply as "ACE AWARDS."    Editors' awards are presented at a large formal dinner, attended by people in the entertainment industry, and the ceremonies are well covered by the trade papers, such as Hollywood Reporter and Variety
                

Cable has advertised its ACE awards in Hollywood Reporter and Variety. In a 1988 Hollywood Reporter ad, "ACE AWARDS" was displayed in large bold letters in the center of the ad superimposed on the names of individuals including "Edward Abroms, A.C.E." In 1989, Cable spent $1.5 million to put on a television special at which its awards were bestowed. There is no dispute that Cable's awards have been extensively promoted and have in recent years become known to a substantial part of the entertainment industry and to many television viewers.

Immediately upon learning of Cable's initiation of ACE Awards in 1979, Editors sent a letter to Cable advising them of Editors' long prior identification in the motion picture and television industry with A.C.E. and ACE in connection with film editing awards. In this letter Editors urged Cable to change the name of its award because of the conflict in identification with Editors. Cable responded by denying that its concurrent use of ACE awards would cause confusion but gave Editors its assurances that:

[E]ach and every use it [Cable] makes of the "ACE" acronym will specifically include the following:

1. A correlation with the words "Awards for Cable-casting Excellence" from which the acronym derives, and

2. NCTA's name and logo prominently displayed therewith. Such a representative use is shown in the Attachment A enclosure to this letter.

We are confident that this specific identification will eliminate the possibility of any possible false designation of origin or industry mis-association.

In late 1983, Editors sent another letter protesting Cable's use of ACE because Cable was using ACE alone and not in accordance with the above letter. Instances of actual confusion, such as phone calls to Editors inquiring about Cable's awards, were recounted. Shortly after receiving this letter, Cable filed to register ACE alone as its service mark for awards presentations and obtained the registration which is the subject of this proceeding.

Apparently unaware that Cable had registered ACE as its service mark, in 1986 an officer of Editors wrote Cable urging that it change its award name because of confusion in the industry. Cable responded that it had obtained the subject registration and that Cable did attempt to identify its ACE awards by using its organizational name with ACE "whenever possible." It stated it would continue to do so "which should help to minimize any considerable confusion with American Cinema Editors." Editors then wrote a letter of protest to the Commissioner of Patents and Trademarks, an ineffectual gesture, after which it proceeded to file a timely petition for cancellation of Cable's registration before the Trademark Trial and Appeal Board. Following discovery, both parties filed motions for summary judgment accompanied by supporting affidavits. The Board granted Editors' motion, and Cable timely appealed to this court pursuant to 28 U.S.C. Sec. 1295(a)(4)(B) (1988).

II DISCUSSION

Summary Judgment Standard of Review

Summary judgment is appropriate where the movant has established that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law. Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1562, 4 USPQ2d 1793, 1795 (Fed.Cir.1987); 37 C.F.R. Sec. 2.116(a) (1990) (proceedings before board are governed by Federal Rules of Civil Procedure); Fed.R.Civ.P. 56. On appeal, this court reviews the question of the propriety of summary judgment de novo. Action Temporary Servs., Inc. v. Labor Force, Inc., 870 F.2d 1563, 1565, 10 USPQ2d 1307, 1308-09 (Fed.Cir.1989) (In reviewing whether the Board correctly entered summary judgment, court reapplies standard of Fed.R.Civ.P. 56); Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 853 F.2d 888, 890, 7 USPQ2d 1628, 1630 (Fed.Cir.1988) (same).

Editors asserts Cable is not entitled to registration of ACE for award presentations because of Editors' prior identification with A.C.E. and ACE in connection with awards. Per Editors, registration is barred by section 2(d) of the Lanham Act, 15 U.S.C. Sec. 1052 (1988), which provides, in pertinent part,

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--

* * * * * *

(d) Consists of or comprises a mark which so resembles ... a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive:....

There is no dispute that Editors has long prior rights in A.C.E. as a collective mark used by its members in connection with film editing. However, Cable asserts that there is a genuine issue of fact as to whether Editors had used ACE as a trade name or mark and asserts that resolution of this factual dispute is critical to granting of the motion. Per Cable, if the issue of likelihood of confusion is correctly limited to a comparison of Cable's use of ACE for awards ceremonies with the use of A.C.E. to indicate honorary membership in Editors, Cable would prevail.

No Genuine Issue of Material Fact As To Editors' Rights in ACE

A.

Cable asserts that the Board held there was a likelihood of confusion only by finding Editors had rights in ACE as a...