In re Clorox Co.

MARKEY, Chief Judge,

specially concurring.

The foregoing opinion speaks for a unanimous court. These comments reflect a view respecting the underlying rationale for the holding that the citation of marks “registered” on either register is permissible in ex parte examination under § 2(d).

Section 2(d) refers to marks “registered” or “previously used” and to likelihood of confusion. Because the confusion sought to be prevented by the Act is in the marketplace, where marks are used, the underlying basis for reference to marks “registered” is necessarily the presumption that registered marks cited by an examiner under § 2(d) are in use. For absent that presumption, confusion would be not only unlikely, but impossible. The statutory (“likely * * * to cause confusion, or to cause mistake, or to deceive * * *”) basis for refusal to register would be irrelevant if the examiner’s citation of a registered mark under § 2(d) did not carry with it the presumption that the registered mark is in use. 1 Upon a proper showing that use of the registered mark cited by the examiner has been abandoned, without intent to resume, the presumption is destroyed and the registration may be cancelled. 15 U.S.C. § 1064 (Principal Register); 15 U.S.C. § 1092 (Supplemental Register). Because use of the mark is essential to a finding of likelihood of confusion, the presumption must be applied to “registered” marks, cited by an examiner, including those on the Supplemental Register.

“The Court of Customs and Patent Appeals has consistently held that the introduction of a trademark registration presents prima facie proof of continuing use of the mark * * * Friedman v. Sealy, Inc., 274 F.2d 255, 257 , 124 USPQ 196 , 198 (CA10 1959). In Gillette Co. v. Kempel, 254 F.2d 402, 404 , 45 CCPA 920, 922, 117 USPQ 356 , 357 (1958), this court stated:

*310 [T]he filing of a regular application for the registration of a trademark * * accompanied by specimens of the mark as actually used should be taken as prima facie proof that the applicant was the owner of the mark on the date the application was filed, and that fact having been established the presumption must arise that the applicant continued to own the mark and to use it.

The same presumption applies after a registration has been granted and, accordingly, a registration is prima facie evidence of continuing use of the registered mark beginning on the filing date of the application on which the registration was granted.

No basis exists for a view that marks on the Principal Register are presumptively in use and marks on the Supplemental Register are not. Though one may own a supplemental registration, no one may own a merely descriptive mark itself. The presumption of use, however, is not derived from, nor dependent upon, the presumption of ownership of the mark. Extended and substantially exclusive use may, under 15 U.S.C. § 1052 (f), result in registration on the Principal Register and in the concomitant presumption of ownership under 15 U.S.C. § 1057 (b), but ownership of the mark is not a necessary element of the presumption that a mark registered on the Supplemental Register is in use. That a supplemental registration is not prima facie evidence of registrant’s ownership of the registered mark, the validity of the registration, or registrant’s exclusive right to use, 15 U.S.C. § 1057 (b), 1094, does not conflict with the presumption that the mark is in use.

In inter partes proceedings, evidence establishing earlier and continuing use of marks by third parties, and the effect of that use on the mind of the public, may take a variety of forms and may be adduced through testimony of witnesses. 2 In inter partes proceedings, therefore, the presumption that registered marks of third parties are in use is itself an insufficient basis on which to determine the issue presented. Accordingly, this court has repeatedly refused to permit the presumption to substitute for the proof required of the party offering third party registrations. 3 In In re Helene Curtis Industries, Inc., supra note 3, involving third party registrations cited by an applicant in an ex parte trademark examination, this court said:

We will not assume any knowledge on the part of the purchasing public of mere registrations in the Patent Office and neither will we assume that marks are in continuing use, so as to have had any effect on the mind of the purchasing public, merely because they have been registered. [305 F.2d at 494, 49 CCPA at 1371, 134 USPQ at 503-04.]

The refusal in Helene Curtis was not a refusal to assume that registered marks are used, but a refusal to assume that registered marks are so used as to affect the mind of the purchasing public in the matter sought to be established by the applicant in Helene Curtis. 4 More recently, in Stana- *311 dyne, Inc. v. Lins, supra note 3 involving an opposition proceeding, this court said:

[I]n the absence of evidence of the extent of actual continuing use of registered marks, mere registrations are entitled to little weight in establishing whether there is likely to be confusion because registrations by themselves do not indicate how the public mind may have been conditioned. [490 F.2d at 1397, 180 USPQ at 649.]

Third party registrations are often cited in an effort to prove that, because the marks appearing in those registrations are similar to the mark in use by an applicant, an opposer, or cancellation petitioner, the public has learned to distinguish among them and would not be confused by the addition to the marketplace of the mark sought to be registered or by continued use of the mark sought to be maintained on a register. 5 Whether the public has been so conditioned turns on whether it has been actually exposed to the similar third party marks in the marketplace, and on the extent and intensity of that exposure. A registration does not inherently evidence that exposure, and the presumption that registered marks of third parties are in use does not clothe the cited registrations with that evidentiary effect.

In ex parte refusals to register, yet another factor comes into play. The examiner does not have at hand the sources of evidence available to applicants and to the parties in an inter partes proceeding. The examiner must, therefore, be permitted to rely on the presumption that a registered mark he cites is currently being used. As above indicated, denial of that presumption would deny the examiner the required evidence of prior and continuing use of a particular mark on particular goods, i. e., evidence on which to base his § 2(d)-required position that confusion would be likely when the applicant’s mark is applied to applicant’s goods in the marketplace. Because of .that presumption available to the examiner, a supplemental registration he cites becomes probative, and if not can-celled, persuasive evidence of a prior and continuing use of a mark which, if it so resembles an applicant’s mark that confusion in the marketplace is likely, will sustain a refusal to register.

MILLER, Judge, with whom BALDWIN, Judge, joins, specially concurring.

I also join in the opinion of the court affirming the Trademark Trial and Appeal Board on section 2(d). I do so in view of the definition of “registered mark” in Lan-ham Act section 45, which includes marks on the Supplemental Register.

However, I would point out that the view expressed in Chief Judge Markey’s specially concurring opinion regarding the underlying rational of presumed use of registered marks for purposes of ex parte examination under section 2(d) is not supported by the statute in the case of marks on the Supplemental Register. Section 2(d) provides that no trademark shall be refused registration unless it “consists of or comprises a mark which so resembles a mark registered” in the PTO “as to be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” It is the Commissioner who is to make the determination of likelihood of confusion; and his determination is to be based on a comparison of an applicant’s mark, applied to its respective goods, with marks registered in the PTO. His refusal to register under this part of section 2(d) is based on the existence of a registration in the PTO— not on any presumption of use, and a primary purpose of such authority is to protect *312 trademark registrants from “misappropriation” of their marks. [1946] U.S. Code Cong. Service, p. 1274.

Indeed, if a presumption of use were necessary to support an ex parte rejection under section 2(d), reversal of the board would be indicated in this appeal. Section 26 of the Act provides that ownership of a registration on the Supplemental Register is not given any of the presumptions of section 7(b) of the Act. These include “ownership of the mark,” and ownership “imparts pri-ma facie evidence of use.” J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 962 , 52 CCPA 981, 984, 144 USPQ 435 , 437 (1965). Accord, Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 1402 , 181 USPQ 272, 274 (Cust. & Pat.App. 1974). Accordingly, the owner of a mark on the Supplemental Register would have to affirmatively prove use of that mark. See Aloe Creme Laboratories, Inc. v. Bonne Bell, Inc., 168 USPQ 246 (TTAB 1970). This contrasts with the presumption of continuing use of a mark by the owner of a registration on the Principal Register. Gillette Co. v. Kempel, 254 F.2d 402, 404 , 45 CCPA 920, 921-22, 117 USPQ 356 , 357 (1958).

. Except for its provisions respecting foreign applicants, the entire thrust and expectation of the Act is that the registers in the PTO should reflect marks used in the marketplace, and that registrations of marks not in continuing use be cancelled. Though use in commerce is a prerequisite for registration on the Principal Register, 15 U.S.C. § 1051 , and use for a year prior to the filing date of an application for registration on the Supplemental Register is required, 15 U.S.C. § 1091 , a registration, absent contrary proof, cannot be viewed as entitled to no presumption beyond use as of the filing date of the application. Affidavits of continuing use, or excusable non-use, accompanied by evidence, are required during the sixth year following registration, 15 U.S.C. § 1058 (a), 37 CFR 2.161, or the registration will be cancelled. Applications for renewal of a registration must be supported by evidence that the mark is still in use, or of excusable non-use, 15 U.S.C. § 1059 . Assignments require transfer of the “goodwill of the business connected with the use of the * * * mark,” 15 U.S.C. § 1060 . Benefits of the Act are claimable by 1881 Act or 1905 Act registrants by affidavit listing the goods “on which [the] mark is in use,” 15 U.S.C. § 1062 (c). If use of the mark is proved abandoned, even when the right to use is incontestable under § 15, the registration is not conclusive evidence of the exclusive right to use, 15 U.S.C. § 1115 (b)(2). In sum, what is subject to registration, and to maintenance on a register,, are rights established, and maintained viable, by use, and only by use, of a mark.

. Allegations of dates of use, exhibits attached to pleadings, and specimens of use in application and registration files, are not considered evidence of use on behalf of the party who filed them in inter partes proceedings. 37 CFR 2.126.

. See San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 685 , 196 USPQ 1, 2 (Cust. & Pat.App.1977); Stanadyne, Inc. v. Lins, 490 F.2d 1396, 1397 , 180 USPQ 649 (Cust. & Pat.App. 1974); AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 1406 , 177 USPQ 268, 269-70 (Cust. & Pat.App.1973); Tiffany & Co. v. National Gypsum Co., 459 F.2d 527, 530 , 59 CCPA 1063, 1067, 173 USPQ 793 , 795 (1972); Clairol Inc. v. Roux Laboratories, Inc., 442 F.2d 980, 981 , 58 CCPA 1170, 1171, 169 USPQ 589 (1971); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 325 , 54 CCPA 1295, 1297, 153 USPQ 406, 407 (1967); J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 964 , 52 CCPA 981, 986, 144 USPQ 435 , 439 (1965); cf. In re Belgrade Shoe Co., 56 CCPA 1298, 1299-300, 411 F.2d 1352, 1353 , 162 USPQ 227 (1969); In re Helene Curtis Industries, Inc., 305 F.2d 492, 494-95 , 49 CCPA 1367, 1371-72, 134 USPQ 501, 503-04 (1962) (ex parte trademark examination cases).

. In Tiffany & Co. v. National Gypsum Co., supra note 3, there is an indication that the court will not assume that registered marks are in continuing use, and the qualifying language *311 of Helene Curtis is not repeated. The opinion cites Helene Curtis on the point, however, and the absence, from one opinion, of the qualifying language which appears in all of the cases listed in note 3, should not be taken as an indication that no presumption of use attaches to registered marks.

. Describing the effort as showing that the mark of a reference registration, or of opposer, or of petitioner, is a “weak” mark, or is a mark entitled to “a limited range of protection,” tends to becloud the issue, which remains whether confusion is likely when the marks involved are used in connection with the respective goods.