Massey Junior College, Inc. v. FASHION INSTITUTE OF TECH.

• Decision Date: 21 March 1974
• Docket Number: Patent Appeal No. 9149.
• Citation: 181 USPQ 272,492 F.2d 1399
• Parties: MASSEY JUNIOR COLLEGE, INC., Appellant, v. FASHION INSTITUTE OF TECHNOLOGY, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

181 USPQ 272, 492 F.2d 1399 (1974)

MASSEY JUNIOR COLLEGE, INC., Appellant, v. FASHION INSTITUTE OF TECHNOLOGY, Appellee.

Patent Appeal No. 9149.

United States Court of Customs and Patent Appeals.

March 21, 1974.

COPYRIGHT MATERIAL OMITTED

Edward G. Fenwick, Jr., J. Timothy Hobbs, Washington, D. C. (Mason, Fenwick & Lawrence, Washington, D. C.), attorneys of record, for appellant.

Harold Sacks, New York City, attorney of record, for appellee.

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

MILLER, Judge.

This is an appeal from the decision of the Trademark Trial and Appeal Board, abstracted at 175 USPQ 717 (1972), granting appellee's petition to cancel appellant's registration No. 816,357 on the principal register for the following composite service mark registered for "EDUCATIONAL SERVICES — NAMELY, OFFERING COURSES IN FASHION, MERCHANDISING, AND RETAILING":

The registration is dated October 4, 1966, and is based on an application filed November 19, 1965, with first use in commerce asserted to have been November, 1963.

Appellee is the owner of two service marks registered on the principal register for "EDUCATIONAL SERVICES AT THE COLLEGE LEVEL," namely: No. 932,423 for the mark "FASHION INSTITUTE OF TECHNOLOGY"; and No. 932,422 for the following mark, which is stated to comprise the letters "FIT":

Both registrations are dated April 11, 1972, and are based on applications filed December 18, 1969, with first use in commerce alleged to have been September, 1944. Appellee filed its petition for cancellation on April 29, 1970.

In its petition, appellee alleged that since its founding (in 1944), Fashion Institute of Technology has been known by the designation "F.I.T." and "FIT"; that its services have been conducted under such designations; and, in substance, that appellant's mark, particularly the letters "FIA," so resembles the letters "FIT" and "F.I.T." as to be likely to cause confusion among specified segments of the public, so that any fault or deficiency in the curriculum found in the courses offered by appellant would seriously injure appellee's reputation.

The board found that there was no dispute over the material facts; that the services of the parties include "generally similar educational courses in the field of fashion"; and that appellee is the prior user of the letters "F.I.T." by many years. It further found that "the letters `F.I.A.' are visually the most prominent literal feature" of appellant's mark and that this feature "creates a commercial impression separate and apart from the remaining features" of the mark. Such being the case, it said that if the letters "F.I.A." are found to be confusingly similar to appellee's mark "F.I.T." appellant's mark in its entirety must be so regarded. The board then proceeded to hold that the contemporaneous use of "these three letter marks" for the specified services would be likely to cause confusion or mistake, or to deceive. The sole issue on this appeal is whether the board erred in its determination and in granting the petition for cancellation.

That marks must be considered in their entireties in determining whether there is likelihood of confusion or mistake is a basic rule in comparison of marks. Here the board, having determined that the services of the parties were "generally similar," sought to establish an exception to the rule, namely: if the most prominent feature of a mark creates a commercial impression separate and apart from the remaining features of the mark, any confusing similarity with respect to it is determinative with respect to the mark in its entirety. We know of no authority which supports such an exception and hold that the board erred on this point. The error was compounded when the board, after dissecting appellant's mark treated the dissected portion "F.I.A." (properly "FIA") as one of the "three letter marks" (emphasis supplied) to be compared.

Appellant points out that it has had its registration for some seven years; that appellee could have filed a notice of opposition to the registration, but did not do so (although appellant did not raise the issue of laches below under 15 U.S.C. § 1069); and that in the intervening years considerable sums of money have been spent in promoting and advertising its services so that it has developed valuable good will in its mark. It contends that Patent Office tribunals and this court have drawn distinctions between the burden of proof required in cancellation proceedings and in opposition proceedings, citing, among others, Prince Dog and Cat Food Co. v. Central Nebraska Packing Co., 305 F.2d 904, 49 CCPA 1328 (1962), where the court said: "Cancellation of a valuable registration around which a large and valuable business good will have sic been built should be granted only with `due caution and after a most careful study of all the facts.'" The implied suggestion by appellant is that appellee's burden of proof with respect to the crucial issue of "likelihood of confusion" should be greater than it would be if this were an opposition proceeding.

This court has stated its approval of a rationale "to the general effect that the petitioner in a cancellation proceeding bears a much heavier burden of proof than the opposer in an opposition proceeding." W. D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 377 F.2d 1001, 54 CCPA 1442 (1967). Such a rationale may find support to the extent that a holder of a registered mark enjoys the benefit of his certificate as prima facie evidence of the validity of the registration, his ownership of the mark, and his exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate;¹ also of his continued use of the mark from the date of filing the application.² Further, prima facie evidence of "validity" would include absence of "likelihood of confusion" with other registered marks for similar goods or services.³ When any of these matters is at issue, the petitioner must overcome the prima facie evidence of the registrant. Moreover, the longer a party waits, after the time for bringing an opposition has expired, to commence a cancellation proceeding, the greater may be the number of facts (e. g., evidence of actual confusion) to be considered in determining the quantum of proof required.

Nevertheless, in an opposition proceeding, the opposer also bears the burden of proof. Often this involves his alleged belief of "likelihood of damage" on the ground of "likelihood of confusion" resulting from the contemporaneous use of the involved trademarks.⁴ In either an opposition proceeding or a cancellation proceeding, the issue of "likelihood of confusion" should be approached with a view to achieving the objective of the Lanham Act, namely:

To protect trade-marks, therefore, is to protect the public from deceit, to foster fair competition, and to secure to the business community the advantages of reputation and good will by preventing their diversion from those who have created them to those who have not. This is the end to which this bill is directed.⁵

The problem of achieving this legislative purpose of the Act becomes apparent from the variable factors which can be present in a given opposition or cancellation proceeding: degree of likelihood of confusion, relative length of time of use of a mark, and relative investment in good will by the parties. It is compounded when the opposer or petitioner holds a registered mark and enjoys the benefit of his certificate for prima facie evidence purposes, as outlined earlier in this opinion.⁶ It is easy to visualize a situation in which the quantum of evidence required of an opposer would be greater than that required of a petitioner in a different situation. And where the situations are identical, there would seem to be no good reason for requiring a different quantum of evidence according to whether a party is an opposer or a petitioner.

It can, of course, be argued that, because a registrant's certificate is prima facie evidence of "exclusive right to use," there is a presumption of absence of "likelihood of confusion," so that a petitioner bears a "heavier" burden on this point than an opposer, who has no such presumption to overcome. However, there is nothing in 15 U.S.C. §§ 1057, 1063, or 1064 to support this view. In one case, the opposer would have to produce sufficient evidence to prove "likelihood of confusion." In the other case, the petitioner would be required to produce sufficient evidence to rebut a presumption of...