Giant Food Inc. v. Malone & Hyde, Inc.

• Decision Date: 23 October 1975
• Docket Number: Patent Appeal No. 74-557.
• Citation: 522 F.2d 1386
• Parties: GIANT FOOD INC., Appellant, v. MALONE & HYDE, INC., Appellee, C. Marshall Dann, Commissioner of Patents and Trademarks, joined by order of the Court.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

522 F.2d 1386

GIANT FOOD INC., Appellant, v. MALONE & HYDE, INC., Appellee C. Marshall Dann, Commissioner of Patents and Trademarks, joined by order of the Court.

Patent Appeal No. 74-557.

United States Court of Customs and Patent Appeals.

October 9, 1975.

As Amended October 23, 1975.

Browne, Beveridge, DeGrandi & Kline, Washington, D. C., attys. of record, for appellant; Richard G. Kline, Francis C. Browne, Edward T. Colbert, Washington, D. C., of counsel.

James H. Littlepage, Littlepage, Quaintance, Murphy & Dobyns, Washington, D. C., attys. of record, for appellee.

Before MARKEY, Chief Judge, RICH, LANE and MILLER, Judges, and ALMOND, Senior Judge.

ALMOND, Senior Judge.

This appeal is by the prevailing party in a trademark interference from that part of a decision by the Patent and Trademark Office (PTO) Trademark Trial and Appeal Board (TTAB), 178 USPQ 246 (1973), which, after deciding priority in favor of appellant, refused registration to appellant as well as to appellee. We reverse.

On February 19, 1969, appellant, Giant Food Inc., filed a normal, territorially unrestricted application, serial No. 319,538, to register the wordmark GIANT FOOD on the principal register (15 U.S.C. §§ 1051, 1053) as a service mark for "RETAIL GROCERY SUPERMARKET AND GENERAL MERCHANDISING STORE SERVICES." Use of the mark since February 5, 1936 is alleged. This application was placed in interference on October 15, 1969, with an application of Malone & Hyde, Inc., appellee, doing business as Giant Foods of America, to register a mark for grocery store services which includes the words "GIANT FOODS OF AMERICA" displayed in small letters in association with a design.¹ Appellee's application serial No. 293,730 was filed on March 20, 1968, and use of the mark since September 13, 1966 is alleged.

Appellee had also filed another application on March 13, 1968, serial No. 293,157, to register a mark consisting of a different design in association with the same words as a trademark for a number of food products, asserting use since November 16, 1966.² Appellant opposed registration of the mark, opposition No. 49,377, and on November 19, 1969 the interference and opposition were consolidated and moved to final hearing on the same record and briefs.

Appellee's Position and TTAB Decisions

Appellee's position is that GIANT and GIANT FOOD have been shown by the evidence appellee produced in the consolidated proceedings to be so widely used throughout the United States as, or in, the names of stores or supermarkets that they are not subject to exclusive appropriation as trade names or trademarks by appellant, wherefore registration to appellant was properly denied.

Appellee's evidence shows that at the time of its investigation in October and November 1971, there were some 22 "GIANT FOOD" supermarkets in 16 different cities and 59 other users of "GIANT" alone or with a prefix or suffix in food merchandising in 15 other cities. These are all unconnected with appellant or appellee.

Appellee further notes certain litigation in which appellant was involved with one such user of "Giant" in the Norfolk, Va. area. Rosso and Mastracco, Inc. v. Giant Food Shopping Center of Virginia, Inc., 200 Va. 159, 104 S.E.2d 776 (1958). More than a decade prior to appellant's filing date, when it added a new market to its chain in Virginia, it was sued by a corporation which had been doing business under the name GIANT OPEN AIR MARKET since 1948. Plaintiff sought an injunction against appellant's use of GIANT in and around Norfolk. Appellant filed a cross-bill seeking to restrain the plaintiff from using GIANT. The bill and cross-bill were dismissed by the trial court on the grounds that GIANT had not acquired a secondary meaning and that use of the two names GIANT OPEN AIR MARKET and GIANT FOOD were not likely to cause confusion. The appellate court affirmed, holding, inter alia, that:

The word "Giant," as found in the full name of each of the parties, is an adjective. In common and ordinary acceptance, it is descriptive of tremendous, or extraordinary, size. It is applicable to the size of the stores and the extent of their business operations. It bears no relation to the peculiar type or character of merchandise which the parties here offered for sale.

Appellee's evidence shows that six GIANT OPEN AIR MARKETS were in operation in 1971 in Norfolk, Portsmouth, Richmond, and Virginia Beach, Virginia, showing use of that name since 1948. All of this evidence, which formed the basis of the TTAB's decision to refuse a registration to appellant, is summarized in the board's opinion as follows (footnote omitted):

Defendant's appellee's record is directed entirely in support of its pleading in the answer in the opposition that the term "GIANT" has been so widely used in connection with grocery stores that it is, in effect, not capable of being exclusively appropriated by any one person in the field. In this regard, the affidavit offered by defendant, the affiant Mable G. Little-page is the wife of defendant's counsel, reveals that she visited various cities in New York, Pennsylvania, Virginia, Tennessee, Alabama, Louisiana, Texas, and California where she found a large number of supermarket stores utilizing the term "GIANT" alone and in association with other wording as the name for their establishments and, in many cases, as private brand labels for some of the goods sold therein. Illustrative of these terms are "GIANT MEATS", "GIANT-MID-STATE", "GIANT MARKETS", "GIANT OPEN AIR MARKET", "TINEE GIANT", "GIANT FOOD", "GIANT FOOD MARKETS", "FOOD GIANT", and "SCHWEGMANN BROS. GIANT SUPER MARKETS." The affidavit is accompanied by pictures of these establishments which she took during the course of her trip and wrappers, labels, and packaging material from various products which she purchased in these stores. In addition, defendant has made of record under the applicable rule copies of pages from twenty telephone directories which are intended to corroborate the existence of the stores referred to in the affidavit and to further show that listings of stores, and particularly supermarkets, bearing the name "GIANT", either alone or in conjunction with some other word or words, may be found in the telephone directories of such other cities as Wichita, Kansas, St. Louis, Missouri, Mt. Pleasant, Michigan, and Boston, Massachusetts.

The TTAB, speaking primarily of the issue in the opposition, concluded that GIANT and GIANT FOOD possess a strong trademark or service-mark significance in appellant's area of doing business,³ indicating appellant's goods and services, and, notwithstanding extensive use of GIANT by others located elsewhere, that there would be likelihood of confusion from the use of appellee's mark including the words GIANT FOODS OF AMERICA in that area. Citing the prima facie evidentiary effect which an unrestricted registration to appellee would have under § 7(b) of the statute (15 U.S.C. § 1057(b)), the TTAB therefore sustained the opposition and held that appellee was not entitled to register its product trademark involved therein, at least on its then pending unrestricted application.

The TTAB opinion then proceeded to a consideration of the interference involving the two service marks of the parties. Its legal analysis of why neither mark should be registered is as follows (footnote omitted; matter in brackets added):

Turning to the interference proceeding, inasmuch as defendant's appellee's mark * * * bears the words "GIANT FOODS OF AMERICA", what has been said in regard to defendant's mark involved in the opposition likewise pertains thereto, and in view of plaintiff's appellant's established prior rights, as between the parties, in "GIANT" and "GIANT FOOD", defendant is not entitled to a registration of this mark.

In view of this holding, it appears that this interference need proceed no further and that judgment should forthwith be rendered in favor of plaintiff.⁴ However, Section 17 of the statute 15 USC 1067 provides that:

"In every case of interference, opposition to registration, application to register as a lawful concurrent user, or application to cancel the registration of a mark, the Commissioner shall give notice to all parties and shall direct a Trademark Trial and Appeal Board to determine and decide the respective rights of registration...."

Apropos thereto, Trademark Rule 2.96 37 CFR 2.96 provides that "The issue in an interference between applications shall be the respective rights of the parties to registration." And Section 18 15 USC 1068 provides, inter alia, that in an interference proceeding, the Office may refuse to register any or all of several marks, or may register the mark or marks for the person or persons entitled thereto, as the rights of the parties hereunder may be established in the proceeding. Thus, in any given interference, the Board has various alternatives as spelled out in Tudor Square Sportsware Sportswear, Inc. v. The Pop-Op Corporation, 160 USPQ 50 (TT&A Bd., 1968), including that of refusing registration to both parties on the basis of evidence adduced in the proceeding which shows that neither party possesses rights in the contested designation sufficient to support a territory sic unrestricted registration.

In this regard, plaintiff appellant, like defendant appellee, is seeking an unrestricted registration of "GIANT FOOD". The issuance of the registration by virtue of § 7(b) would be prima facie evidence of the plaintiff's exclusive right to the use of "GIANT FOOD" for retail grocery store services and general merchandise store services on a nationwide basis. However, in view of the evidence adduced by defendant to the effect that third persons are making use of "GIANT" as the name or as a part of a name for retail grocery stores in a large number of states throughout the country, and considering that plaintiff has acknowledged use of "FOOD GIANT" by a stranger to this proceeding in

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