Exxon Corp. v. National Foodline Corp., Appeal No. 77-629.

• Citation: 579 F.2d 1244
• Decision Date: 30 June 1978
• Docket Number: Appeal No. 77-629.
• Parties: EXXON CORPORATION, Appellant, v. NATIONAL FOODLINE CORPORATION, Appellee.
• Court: United States Court of Customs and Patent Appeals

579 F.2d 1244

EXXON CORPORATION, Appellant, v. NATIONAL FOODLINE CORPORATION, Appellee.

Appeal No. 77-629.

United States Court of Customs and Patent Appeals.

June 30, 1978.

Richard G. Kline, Beveridge, DeGrandi, Kline & Lunsford, Washington, D. C., attys. of record, for appellant; Francis X. Clair, J. Spencer Daly, New York City, of counsel.

Arthur S. Caine, Minneapolis, Minn., atty. of record, for appellee; William T. Bullinger, Cushman, Darby & Cushman, Washington, D. C., of counsel.

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

RICH, Judge.

This appeal is from the decision of the Patent and Trademark Office Trademark Trial and Appeal Board (board), 196 USPQ 444 (1977), granting appellee's motion for summary judgment and dismissing appellant's opposition to the registration of EXXELLO for "ICE CREAM MANUFACTURING MACHINE" on application serial No. 36,213, filed November 4, 1974, claiming first use on November 21, 1973. We affirm.

Familiarity is assumed with the published board opinion which sets forth the details of the proceedings herein. In brief outline, this opposition has proceeded under Federal Rules of Civil Procedure (FRCP) 12(b)(6) and 56(c), made applicable to oppositions by 37 CFR 2.116. Appellee's application to register EXXELLO was published for opposition and Exxon Corporation (hereinafter Exxon) filed its notice of opposition. Without answering the notice, appellee moved under FRCP Rule 12(b)(6) to dismiss it for "failure to state a claim upon which relief can be granted," and the board dismissed, giving time to Exxon, however, to amend its pleading. Exxon then amended its notice by adding four paragraphs to it. Appellee responded by renewing its motion to dismiss, supporting it by an affidavit of its president and exhibits showing numerous relevant facts. Exxon countered with an affidavit by Julius R. Lunsford, Jr., one of its counsel, partly factual and partly argumentative, and appellee responded to it by another affidavit of its president. In this posture of the case, the board treated the motion as one for summary judgment under FRCP Rule 56(c), as is provided in the last sentence of Rule 12(b), granted the motion for summary judgment, and dismissed the opposition "with prejudice." This appeal followed.

Essentially, the question before us is whether summary judgment was proper under the circumstances of this case. Stated otherwise, have the rights of Exxon been prejudiced by depriving it of the opportunity to take testimony, have discovery, and indulge in cross-examination and the other attributes of a full trial? We think not.

The basic purpose of summary judgment procedure is one of judicial economy — to save the time and expense of a full trial when it is unnecessary because the essential facts necessary to decision of the issue can be adequately developed by less costly procedures, as contemplated by the FRCP rules here involved, with a net benefit to society. We recognize that summary judgment is to be granted cautiously in order to preserve substantive rights; nonetheless, it is entirely proper where, after following the FRCP procedures, no genuine issue of material fact remains. As we said in U. S. Steel Corp. v. Vasco Metals Corp., 394 F.2d 1009, 55 CCPA 1141, 157 USPQ 627 (1968), citing 6 J. Moore's Federal Practice ¶ 56.153 (2d ed. 1966), "It is well settled that the function of summary judgment is to avoid a useless trial." "Useless" in the context of this case means that more evidence than is already available in connection with this motion could not be reasonably expected to change the result herein. We turn, now, to discussion of the issue, the evidence already adduced thereon, the decision of the board, its apparent correctness, and whether more evidence might change that decision.

Exxon opposes registration of EXXELLO for ICE CREAM MANUFACTURING MACHINES on very broad grounds, asserting, as statutory bases, section 2(a) and 2(d) of the Trademark Act of 1946, as amended, 15 U.S.C. § 1052(a), (d). It alleges that more than a year prior to appellee's stated first use of EXXELLO it was using EXXON "as a trade name and house mark." Paragraph 2 of both its original and amended notice of opposition reads:

In actual use, Applicant's mark and Opposer's trade name and mark are displayed in the following Manner:

Its arguments rely heavily on this visual representation, which speaks loudly for itself. In fact, the essence of Exxon's case appears to us to reside in this passage from its brief, which is, after all, a matter of opinion:

It hardly can be disputed that the visual comparison appearing in the second paragraph of the pleadings fulfills the ultimate objective of preciseness by presentation of a picture which is worth a thousand words to establish the visual similarity that immediately suggest sic a connection between the opposed mark and EXXON trade name and house mark.

Oddly, no mention is ever specifically made of the double X's in the two marks, but we cannot escape the impression gleaned from the argument, that they are the crux of the matter. Exxon's amended notice asserts, for example, that EXXELLO is a "colorable imitation" of EXXON and its brief says it "visually simulates the inherently distinctive origin-indicating presentation of the EXXON name and house mark."

The statute relied on reads, in pertinent part:

Sec. 2. Trademarks registrable on the principal register

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 —

(a) Consists of or comprises * * * deceptive * * * matter; or matter which may * * * falsely suggest a connection with persons * * *;

* * * * * *

(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake, or to deceive * * *.

Exxon's case under § 2(a) is that appellee's use of EXXELLO on ICE CREAM MANUFACTURING MACHINES — assuming, as we shall do, and as the board probably did, use of the mark in the format depicted above — would falsely suggest a connection with Exxon. Exxon's position under § 2(a) is succinctly presented in its statement of the first issue¹ which reads:

Does Applicant's mark, when used as depicted above), consist of or comprise deceptive matter or matter which may falsely suggest a connection with the EXXON trade name and/or house mark apart from any particular product line?

Because of its position that no "product line" should be involved in consideration of this question, Exxon has not mentioned one in its pleadings. In fact, the notice of opposition so concentrates on the trade name and/or house mark basis of the opposition that it mentions no product or service of any kind and does not even disclose what line of business Exxon is engaged in. While it makes a single reference to its "registered house mark," no registration (state, Federal, or other) is mentioned. Not until one reaches the Lunsford affidavit does the record contain even a suggestion that Exxon may be one of the "major brand oil companies" which he mentions. He does not say it is. The only record evidence of Exxon's business is in the second affidavit of appellee's president wherein he states: "I am aware of the fact that the Exxon Corporation is one of the world's largest corporations, and that it deals in petroleum products. In my business travels in some parts of the United States, I have observed in a limited number of states, retail gasoline filling stations bearing Opposer's house mark EXXON * * *." In contrast, Exxon stands silent in its pleading and brief about its business, its products, and its services while implying, without proof, that EXXON is a famous name and celebrated house mark.

Exxon's position under § 2(d) is similar to its position under § 2(a), referring to the likelihood of confusion, mistake, or deception as to the origin of appellee's goods because of the similarity of EXXELLO to the trade name EXXON, there being, of course, no reference to any product or service of Exxon nor to any trademark or service mark, or a registration of either, used or owned by Exxon.

Appellee's side of the factual situation is simple. Its application is to register EXXELLO for a single product, an ice cream manufacturing machine, supported by specimens of the mark as used in the form of prints of a photograph of a machine of the type which makes and delivers "soft ice cream," the machine having an oval label at the top of modest proportion on which EXXELLO appears in the type form we have depicted. The drawing of the application sets forth the mark in ordinary block letters so that registration, if issued, would not be restricted to any particular form or type. We agree with Exxon, of course, that it would include the type form in which used. Appellee's president's affidavits supply additional relevant facts, as follows.

Appellee's principal business is the manufacture of fast-food equipment and related products including soft ice cream freezers, machines which make a product identified by such apparently well known names as "Dairy Queen," "Tastee Freeze," "Dairy Freez," "Foster Freeze," "Frogurt," "Mari-Yo," etc. Some eight different models of soft ice cream manufacturing machines of "advanced design" bear the name EXXELLO and they sell at retail to ice cream manufacturers, not the general public, at prices ranging from about $3,500 to $11,000 each. In making soft ice cream, a liquid mix is injected into the machine together with air from the environment of the machine to produce the...