Palisades Pageants, Inc. v. Miss America Pageant, Patent Appeal No. 8497.

• Decision Date: 27 May 1971
• Docket Number: Patent Appeal No. 8497.
• Citation: 442 F.2d 1385,169 USPQ 790
• Parties: PALISADES PAGEANTS, INC., Appellant, v. MISS AMERICA PAGEANT, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

169 USPQ 790, 442 F.2d 1385 (1971)

PALISADES PAGEANTS, INC., Appellant, v. MISS AMERICA PAGEANT, Appellee.

Patent Appeal No. 8497.

United States Court of Customs and Patent Appeals.

May 27, 1971.

Stanford W. Berman, Washington, D. C., attorney of record, for appellant.

Andrew R. Klein, Philadelphia, Pa., attorney of record, for appellee.

Before RICH, ALMOND, BALDWIN and LANE, Judges, and JONES, Judge, United States Court of Claims, sitting by designation.

RICH, Judge.

This appeal¹ is from the decision of the Patent Office Trademark Trial and Appeal Board, 158 USPQ 664, sustaining appellee's opposition to appellant's application to register the service mark LITTLE MISS AMERICA on the Principal Register, serial No. 216,728, filed April 16, 1965, asserting first use of the mark on August 30, 1963. We affirm.

THE PARTIES

Appellant is a for-profit corporation which conducts beauty contests for young girls, ages five to ten years, at Palisades Amusement Park, New Jersey. It seeks to register the mark "for promoting the sale of the goods and services of others through the medium of contests." Chief among those whose goods and services appellant, Palisades Pageants, Inc., has promoted has been Rosecliff Realty Company, the owner of Palisades Amusement Park, but it has also used the mark in connection with the promotion of the goods and services of various "participants" in the annual contests, including a manufacturer of modish clothing for little girls.

Appellee is a not-for-profit corporation which conducts beauty contests for young women, ages eighteen to twentyeight years, in Atlantic City, New Jersey. It relies on its common-law rights stemming from use of the mark MISS AMERICA since 1921 and on its Principal Register registration, No. 631,496, issued July 24, 1956, of the same mark for services stated in its registration to be the

Promotion of education through the granting of scholarships, the recipients being selected in local, state, and national contests, based on such factors as beauty, personality and talent, * * *.

Money for the scholarships comes from, inter alia, the "sponsors" of the pageant, which are for-profit corporations the goods and services of which are promoted in connection with the pageant.

THE ISSUES

There are three issues. After both sides had taken testimony, appellant moved to amend the statement of services in its application to further distinguish the beauty contests which it runs from the beauty contests run by opposer by adding the words "for female children between the ages of five and ten" to the description of its beauty contests. The board denied its motion on the ground that the "proposed amendment is not determinative of the issues herein," appellant has appealed the denial here, and the first question is whether we have jurisdiction to determine such an appeal. The second question is likelihood of confusion, and the third question is whether appellee is estopped to oppose appellant's application by reason of its previous failure to take action to prevent appellant's use of the mark.

A. Jurisdiction

The jurisdiction of this court in trademark matters is set forth in 28 U. S.C. § 1542(2). This section expressly grants us jurisdiction in "appeals from decisions of: * * * the Commissioner of Patents as to trade-mark applications and proceedings as provided in section 1071 of title 15." Paragraph (a) (1) of the latter section states, inter alia, that:

An applicant for registration of a mark, party to an interference proceeding, party to an opposition proceeding, party to an application to register as a lawful concurrent user, party to a cancellation proceeding, a registrant who has filed an affidavit as provided in section 8, or an applicant for renewal, who is dissatisfied with the decision of the Commissioner or Trademark Trial and Appeal Board, may appeal to the United States Court of Customs and Patent Appeals * * *. Emphasis ours.

Despite the language of 28 U.S.C. § 1542, appellee is not questioning our jurisdiction to review at least certain decisions of the Trademark Trial and Appeal Board.²

However, not all "decisions" of the Trademark Trial and Appeal Board, in the broad, general sense of the word "decision," are appealable to this court any more than are all "decisions" of the Commissioner, the Patent Office Board of Appeals, or the Board of Patent Interferences. The same appealable versus petitionable dichotomy which obtains in patent matters obtains in trademark matters, In re Railley Corp., 119 F.2d 595, 598-599, 28 CCPA 1122, 1127-1128 (1941), although the question of which side of the line a given matter falls on seems to come up less often in the trademark context than in the patent context. Here, the decision of the board dismissing the opposition is clearly appealable, but, as in In re Hengehold, 440 F.2d 1395, 58 CCPA (1971), we must decide whether a secondary decision made in the same case by a tribunal of the Patent Office (there a patent examiner, here the Trademark Trial and Appeal Board) is so "logically related" to the appealable decision that it, too, may be reviewed on appeal. Cf. In re James, 432 F.2d 473, 476, 57 CCPA 1371, 1375 (1970) (concurring opinion of Judge Lane).

The jurisdiction-giving issues in this case are whether the service mark LITTLE MISS AMERICA so resembles the service mark MISS AMERICA as to be likely, when applied to the services stated in appellant's application, to cause confusion, or to cause mistake, or to deceive, 15 U.S.C. §§ 1053, 1052(d), and whether, even if the former does so resemble the latter, the appellee is estopped from preventing appellant's registration by reason of laches. 15 U.S.C. 1069. The services described in the application, registration of which has been refused, are "promoting the sale of the goods and services of others through the medium of beauty contests." We do not see how the board's decision to refuse to permit the applicant to amend that description is logically related to either of the above issues. Appellant has argued that "logic and equity would dictate that this Motion should have been granted" because, as things stand, it has

* * * had no ruling on a significant issue supported by adduced uncontradicted facts, and will be forced to the needless expenditure of time and expense in re-filing its application and contesting another opposition which Opposer\'s counsel has said would be filed * * *.

Whether or not the board abused its discretion in denying appellant's motion in the face of this argument, however, was a matter to be determined, not by this court, but by the Commissioner of Patents, under well-settled principles of law. Martin v. Crown Zellerbach Corp., 422 F.2d 918, 919 n. 1, 57 CCPA 968, 969 n. 1 (1970).

B. Likelihood of Confusion

Notwithstanding the facts that (1) appellant is a for-profit corporation, whereas appellee is a not-for-profit corporation, and that (2) appellant's application states that it uses its mark to promote the goods and services of others, without mentioning the prizes it gives the winners of the beauty contests it runs, whereas appellee's registration states that it uses its mark to promote education through the granting of scholarships (the scholarships being the prizes which it gives the winners of the beauty contests it runs), without mentioning the promotion of the goods and services of others which it does to earn the revenue from which it pays the scholarships, the board found that ...