Jewelers Vigilance Committee, Inc. v. Ullenberg Corp.

• Decision Date: 08 August 1988
• Docket Number: No. 88-1094,88-1094
• Citation: 7 USPQ2d 1628,853 F.2d 888
• Parties: JEWELERS VIGILANCE COMMITTEE, INC., Appellant, v. ULLENBERG CORP., Appellee. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 888

853 F.2d 888

7 U.S.P.Q.2d 1628

JEWELERS VIGILANCE COMMITTEE, INC., Appellant, v. ULLENBERG CORP., Appellee.

Appeal No. 88-1094.

United States Court of Appeals, Federal Circuit.

Aug. 8, 1988.

Roberta Jacobs-Meadway, Panitch Schwarze Jacobs & Nadel, Philadelphia, Pa., argued, for appellant. With her on the brief, were William W. Schwarze and Ross J. Oehler.

Michael T. Platt, Berman, Aisenberg & Platt, Washington, D.C., argued, for appellee. With him on the brief, was Samuel D. Littlepage.

Before RICH, NIES and BISSELL, Circuit Judges.

NIES, Circuit Judge.

Jewelers Vigilance Committee, Inc. (JVC) appeals from the final decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board, 5 USPQ2d 1622 (TTAB 1987) (Jewelers III), dismissing with prejudice its Opposition No. 69,744. JVC opposed Ullenberg Corp.'s trademark application Serial No. 426,312, filed May 17, 1983, to register "FOREVER YOURS/DEBEERS DIA. LTD." (in a particular display) for "precious stones, namely diamonds." The grounds alleged were a false suggestion of association and likelihood of confusion with the name DEBEERS of a third party, DeBeers Consolidated Mines, Ltd. (DBCM), under sections 2(a) and 2(d) of the Lanham Act, 15 U.S.C. Secs. 1052(a), (d) (1982). The board held that JVC failed to state a claim under sections 2(a) or (d) because JVC did not allege that it had a proprietary right in the trade name DEBEERS on which its allegations were based. We reverse and remand with directions to grant JVC's motion for summary judgment.

I

This opposition was brought by JVC, a nonprofit trade association representing 2500 firms in the United States which are distributors and retailers of diamonds and diamond jewelry, pursuant to 15 U.S.C. Sec. 1063 (1982). As grounds for opposition, JVC pleaded, inter alia, that Ullenberg was not entitled to register the claimed mark because the name DEBEERS was associated with DBCM, the major world source of diamonds, since long before Ullenberg's claimed date of first use; that the name DEBEERS was famous and was known to Ullenberg at the time of Ullenberg's first use; that the members of JVC had used the name DEBEERS and the DBCM slogan "A Diamond is Forever" in promoting diamond jewelry continuously since before Ullenberg's first use; and that the mark Ullenberg sought to register falsely suggests a connection between Ullenberg and DBCM, and is likely to cause confusion or deception of the trade and public to the injury of JVC, which attempts to police unfair and deceptive practices in the industry, as well as injury to its members. Thus, per JVC, registration to Ullenberg was precluded under section 2(a), which bars registration of matter which falsely suggests a connection with another, as well as under section 2(d), which bars registration of a mark likely to cause confusion with the trade name of another. ¹

In a previous appeal this court reviewed the TTAB's grant of Ullenberg's motion to dismiss on the ground that JVC had no standing to bring the opposition. The TTAB had held that JVC could not maintain the opposition because it did not claim to have proprietary rights in the name DEBEERS on which the opposition was based. Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 229 USPQ 860 (TTAB 1986) (Jewelers I ). This court reversed the board's decision that JVC lacked standing and remanded for consideration of the merits. Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed.Cir.1987) (Bissell, J.) (Jewelers II ). More particularly, the court, per Judge Bissell, held:

There is no question that a trade association, having a real interest in the outcome of the proceedings, may maintain an opposition without proprietary rights in a mark or without asserting that it has a right or has an interest in using the alleged mark sought to be registered by an applicant. See Tanners' Council [of America v. Gary Ind.], 440 F.2d 1404, 169 USPQ 608 (CCPA 1971); The Scotch Whiskey Ass'n, 204 USPQ 57 (TTAB 1979). This is true irrespective of the grounds upon which the opposer relies in asserting the nonregistrability of applicant's mark.

Jewelers II, 823 F.2d at 493, 2 USPQ2d at 2024.

On remand, the board then considered JVC's motion for summary judgment based on pleadings, depositions, answers to interrogatories and affidavits. Jewelers III, 5 USPQ2d at 1623. Ullenberg does not dispute the facts JVC asserted in its pleadings or the additional facts that Ullenberg does no business with DBCM and does not know which, if any, of its diamonds originate with DBCM. Ullenberg's position is that JVC's case fails on the merits because JVC cannot assert the rights of the third party DBCM in the name DEBEERS. The TTAB agreed, dismissing the opposition on the ground that JVC had to have proprietary rights in the name DEBEERS to maintain an opposition under either section 2(a) or 2(d) on the grounds of alleged false association or likelihood of confusion arising from Ullenberg's use of DEBEERS. We disagree for reasons that follow and hold that JVC established its entitlement to summary judgment as a matter of law. ²

II

In reviewing the grant or denial of a motion for summary judgment in an opposition or cancellation, this court applies the same standard as the board, namely, the standard of Federal Rule of Civil Procedure 56 made applicable to proceedings before the TTAB by 37 C.F.R. Sec. 2.116(a)(1987). Rule 56(c) provides in pertinent part that summary judgment shall be rendered forthwith if the pleadings and evidence of record "show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law."

As the board recognized, the material facts in this proceeding are undisputed. Jewelers III, 5 USPQ2d at 1623 ("[Ullenberg] does not dispute that the material facts involved herein are not in controversy, but argues that those undisputed facts do not support the legal conclusions propounded by [JVC]."). Ullenberg argues on appeal, however, that certain statements of fact in JVC's brief are disputed. More particularly, Ullenberg challenges JVC's statement that Ullenberg adopted the mark FOREVER YOURS/DEBEERS DIA. LTD. to exploit the fame of the DEBEERS name and its slogan "A Diamond is Forever." JVC counters that an inference of intent is justified from the statements of Mr. Ullenberg, president of applicant, reported in a media interview: "No one ever told us we could not use the name. I don't think there is anyone that can stop us. Yes, people do recognize the name DeBeers when they hear of us. But that name just gives us the opportunity to [meet and] talk with new customers." See Csatari, JVC Fights U.S. Firm's 'DeBeers' Trademark, National Jeweler, Oct. 16, 1984, at 8.

Ullenberg argues that its president's statement is not evidence of wrongful intent but merely a comment that no customer confusion had occurred as a result of Ullenberg's use of DEBEERS. It is correct that, when ruling on a summary judgment motion, all reasonable factual inferences must be drawn in favor of the nonmovant. See, e.g., United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 994, 8 L.Ed.2d 176 (1962); Avia Group Int'l, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1560 (Fed.Cir. 1988). However, we cannot read that statement as reasonably supporting that inference. Moreover, proof of intent to trade on another's goodwill, while persuasive evidence of likelihood of confusion, is not, in any event, a requirement under section 2(d). See, e.g., Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 875, 230 USPQ 831, 837 (2d Cir.1986) ("It must be remembered, however, that intentional copying is not a requirement under the Lanham Act. Also, intent is largely irrelevant in determining if consumers likely will be confused as to source."); Shoe Corp. of Am. v. Juvenile Shoe Corp. of Am., 266 F.2d 793, 795, 121 USPQ 510, 512 (CCPA 1959) (evidence of intent may influence the ultimate question of likelihood of confusion, but is not necessarily controlling). Thus, the dispute over whether the statement establishes wrongful intent is not here a material issue when JVC is, in any event, entitled to summary judgment on the ground of likelihood of confusion without considering that evidence.

Ullenberg also discredits the statement of a principal of Michaels Jewelers (a member of JVC) that he was confused by the promotion of a bank which advertised "The Great DeBeers Give-a-Way" and offered Ullenberg's jewelry in connection with a customer's purchase of a savings certificate. Because the give-away promotion does not use the exact trademark Ullenberg sought to register, Ullenberg asserts that the principal's testimony cannot be considered evidence bearing on the issue of likelihood of confusion with respect to the mark sub judice. We disagree. Although not controlling evidence, the bank's promotion under the DEBEERS name appears inextricably intertwined with Ullenberg's use of its alleged DEBEERS mark. Thus, we hold that the principal's testimony is relevant evidence and, not being discredited in any way, is competent. But, again, even without this evidence, our decision that there is a likelihood of confusion between the name DEBEERS and Ullenberg's alleged mark would not be changed.

Upon review of Ullenberg's list of facts which it alleges are material, and in genuine dispute, we discern none that meets the standard of Rule 56. The issues Ullenberg raises are either immaterial because not necessary to decide the merits, see, e.g., Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986) ("Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment."), or not genuinely disputed because Ullenberg did not provide sufficient, favorable, factual evidence or bases for factual inference upon...