Opposition Brief — Purdy v. Burlington Northern Santa Fe Corp.

Supreme Court, U.S. 4

- FILED |

No. 99-1681 | = MAY 1 cnn

InThe | CLERK

Supreme Court of the United States ~~

&

WILLIAM S. PURDY,

Petitioner,

BURLINGTON NORTHERN SANTA FE

CORPORATION, A Delaware Corporation, and THE

BURLINGTON NORTHERN AND SANTA FE

RAILWAY COMPANY, A Delaware Corporation,

Respondents.

oe

On Petition For A ‘vrit Of Certiorari

To The United States Court Of Appeals

For The Fifth Circuit

+

RESPONDENTS’ BRIEF IN OPPOSITION

¢

VERONICA SMITH LEwiIs

Counsel of Record

Grec W. Curry

Lara M. Peirce

THOMPSON & KNIGHT L.L.P.

1700 Pacific Avenue, Suite 3300

Dallas, Texas 75201

(214) 969-1700

CHARLES W. SHEWMAKE

THE BURLINGTON NorTHERN AND

SANTA Fe Rartway COMPANY

3017 Lou Menk Drive

Fort Worth, Texas 76131 4

(817) 352-2358

Counsel for Respondents

COCKLE LAW BRIEF PRINTING CO., (800) 225-6964

OR CALL COLLECT (402) 342-2831

QUESTION PRESENTED

Petitioner seeks to have this Court decide:

Whether the 1988 amendments to the Lanham

Act prevent non-profit, non-commercial, or pub-

lic service entities from obtaining federal regis-

tration for service marks?

ii

LIST OF PARTIES

Petitioner William S. Purdy and Respondents Bur-

lington Northern Santa Fe Corporation and The Bur-

lington Northern and Santa Fe Railway Company were

the only parties to the proceeding in the court of appeals

below.

Respondent Burlington Northern Santa Fe Corpora-

tion has no parent corporation, and no publicly held

company owns 10 percent or more of its-stock.

Respondent The Burlington Northern and Santa Fe

Railway Company is a wholly-owned subsidiary of

Respondent Burlington Northern Santa Fe Corporation.

lil

TABLE OF CONTENTS

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STATUTORY PROVISIONS INVOLVED............. 1

Bamemeemees COP Bia CASE... nck. ccicecscccesoss 2

REASONS FOR DENYING THE WRIT............. 7

1. The question Petitioner seeks to present was nei-

ther presented to nor decided by the district

court or the court of appeals................... 7

2. The decisions below do not conflict with the deci-

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iv

TABLE OF AUTHORITIES

CASES

Allard Enters., Inc. v. Advanced Programming

Resources, Inc., 146 F.3d 350 (6th Cir. 1998)..... 10,

American Diabetes Ass‘n, Inc. v. National Diabetes

Ass'n, 533 F. Supp. 16 (E.D. Pa. 1981), aff'd, 681

ae Ge COE Gee, SE 6 x kos dace css cipanadabael 14,

Blinded Veterans Ass‘n v. Blinded Am. Veterans Foun-

dation, 872 F.2d 1035 (D.C. Cir. 1989) .......... 15,

Brach Van Houten Holding, Inc. v. Save Brach’s Coali-

tion for Chicago, 856 F. Supp. 472 (N.D. Il.

TIE Er ee oO E Te TE otra 5 aide ee Radon 14,

Committee for Idaho’s High Desert v. Yost, 881

F. Supp. 1457 (D. Idaho 1995), aff'd in part, 92

PO Bae Chee Ce Bese bcc xa nein dnecicie aes 14,

Kappa Sigma Fraternity v. Kappa Sigma Gamma Fra-

ternity, 654 F. Supp. 1095 (D.N.H. 1987), recon-

sidered in part by 659 F. Supp. 117 (D.N.H. 1987) 15,

Paramount Pictures Corp. v. White, 31 U.S.P.Q.2d

SOU Ge EA WE h6 esd sc dnctasgassauaaeeere

United States v. Crawley, 837 F.2d 291 (7th Cir.

I Pe Er Ter OD PE Perr Sere yer ree

United States Jaycees v. Philadelphia Jaycees, 490

F. Supp. 688 (E.D. Pa. 1979), vacated, 639 F.2d

roe ge | Pere eee reer rrr re 14,

United States Jaycees v. San Francisco Junior Chamber

of Commerce, 354 F. Supp. 61 (N.D. Cal. 1972),

aff'd, 513 F.2d 1226 (9th Cir. 1975) ............. 14,

United We Stand Am., Inc. v. United We Stand Am.

N.Y., Inc., 128 F.3d 86 (2d Cir. 1997), cert. denied,

ae Gas. SO CUE 6 543 sa beau used bees 12, 13, 14,

15

16

16

16

16

17

17

16

V

TABLE OF AUTHORITIES - Continued

Page

FEDERAL STATUTES

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RESPONDENTS’ BRIEF IN OPPOSITION

Respondents Burlington Northern Santa Fe Corpora-

tion and The Burlington Northern and Santa Fe Railway

Company respectfully request that this Court deny the

petition for writ of certiorari because, as set forth below,

the question petitioner seeks to present was neither pre-

sented to nor decided by the courts below and the deci-

sions of the courts below do not conflict with the

decisions of other courts.

OPINIONS BELOW

. The December 7, 1998 opinion of the United States

District Court for the Northern District of Texas is unre-

ported and reprinted at Pet. App. 5-10. The December 7,

~ | 1999 opinion of the United States Court of Appeals for

the Fifth Circuit is also unreported and is reprinted at

Pet. App. 1-4.

¢

STATUTORY PROVISIONS INVOLVED

Section 1 of the Lanham Act, 15 U.S.C.

§ 1051(a)(1)(A), is reprinted at App. 1-2.

Section 3 of the Lanham Act, 15 US.C. § 1053, is

reprinted at App. 2.

Section 45 of the Lanham Act, 15 U.S.C. § 1127, is

reprinted at Pet. App. 13-19.

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ica eimai

STATEMENT OF THE CASE

Respondent Burlington Northern Santa Fe Corpora-

tion is the holding company for, and the owner of, the

second largest railroad in North America, Respondent

The Burlington Northern and Santa Fe Railway Company

(Respondents are hereinafter referred to as the “Rail-

road”). The Railroad resulted from a business combina-

tion between Burlington Northern Inc. (“BN”) and Santa

Fe Pacific Corporation (“SF”), that was proposed in June

1994 and concluded in September 1995. The Railroad is

widely known as and recognized by “BNSF,” its service

mark. The Railroad’s predecessors used “BN” and “SF”

as their service marks. Thus, “BNSF” was a natural and

widely anticipated choice of mark for the Railroad. Well

before the BNSF business combination was finalized, the

press, members of the general public, and BN and SF

used “BNSF” to refer to the combined companies. The

Railroad has actively and consistently used its “BNSF”

service mark since the merger was completed.

Petitioner Purdy is a former employee of one of the

Railroad’s predecessors. In 1989, Purdy was involved in

an unfortunate accident in which he severed a fellow

employee’s legs. 3R 658-60, 689; 4R 788-89.1 Purdy has

suffered from a severe psychological disorder since this

accident. The Railroad Retirement Board (“RRB”) desig-

nated his wife as the administrator of his affairs after

determining that his psychological disorder renders him

permanently and totally disabled. Purdy has received

1 The citations herein refer to the record before the court of

appeals.

RRB disability benefits attributable to the period from

April 1990 to present. 2R 478-80; 3R 524-28; 4R 761.

Purdy has had a long and contentious history with

the Railroad. At the time this action was pending, Purdy

had sued the Railroad or one of its predecessors six times

and had brought numerous other administrative charges

or grievances against those parties. 3R 658-743, 745-49; 4R

at 750-61, 788-802. He has established several Internet

websites, which feature dripping blood and severed

limbs, that he uses to mount scathing attacks on the

Railroad. Purdy uses domain names which include the

Railroad’s “BNSF” mark, such as “www.bnsf.net”, for

some of his Internet websites and also operates out of his

home a “BNSF Corporation,” which has no employees,

has never entered into a contract, does not have a bank

account, and is not even listed in the telephone directory.

2R 415-21, 423-24, 447; 4R 811-69.

In June 1997, Purdy obtained federal registration for

the service mark “BNSF” from the United States Patent

and Trademark Office. He claims his “BNSF” stands for

the strained expression “Bringing Now Safety First” and

registered “BNSF” for use in connection with “[tlesting of

railroad equipment for others, collecting and providing

information concerning railroad safety problems to the

public, to governmental agencies and injured railroad

employees.” 2R 354-58, 492-93; 3R 553-59.

In the district court, the Railroad filed a motion for

summary judgment seeking cancellation of Purdy’s

“BNSF” registration on the ground that even if a!’

Purdy’s assertions regarding his alleged pre-registration

“BNSF” use were accepted as true, his use would not

meet the “use in commerce” standard that is a prerequi-

site to obtaining a valid federal service mark registration.

The Railroad pointed out that Purdy had testified that he

was operating a for-profit business (2R 433) but could, at

best, only show de minimis provision of services under the

mark “BNSF”.

In its unpublished opinion, the district court

observed that under Sections 1 and 3 of the Lanham Act,

15 U.S.C. §§ 1051(a)(1)(A), 1053, a “service mark is not

validly registered unless it has been ‘used in commerce’

in connection with the services the applicant describes in

his registration application” and that in 1988, Congress

amended the Lanham Act “to eliminate ‘token’ use of a

mark as a basis for registration.” Pet. App. 7-9. The

district court recognized that Section 45 of the Lanham

Act, 15 U.S.C. § 1127, now states “ ‘[t]he term ‘use in

commerce’ means the bona fide use of a mark in the

ordinary course of trade, and not made merely to reserve

a right in a mark’” and explains “ ‘a mark shall be

deemed to be in use in commerce . . . on services when it

is used or displayed in the sale or advertising of services

and the services are rendered. ...’” Pet. App. 6 (quoting

15 U.S.C. § 1127). Hence, the district court noted, “[t]he

court decisions seem to be uniform in holding that for

there to be ‘use in commerce’ to support a valid registra-

tion of a service mark, there must be proof, first, that the

mark has been used in the promotion of services, and,

second, that the services identified by the mark have been

rendered in interstate commerce.” Pet. App. 7.

This statutory standard was applied to an extensive

factual record. Although Purdy made many broad con-

clusory statements about his alleged pre-registration

“BNSF” use in his briefs, a detailed review of the evi-

dence showed he, at best, rendered the first service iden-

tified in his registration application under the mark

“BNSF” —- some unexplained form of “testing” — on behalf

of two close friends on three isolated occasions. 2R 275,

282, 288, 293-94; 4R 969, 970-71, 985, 995, 996A, 997-98; 5R

1016-18. Purdy submitted no evidence showing that he

rendered the second service identified in his registration

application under the mark “BNSF” - dissemination of

railroad safety information —- prior to filing his registra-

tion application. He instead only identified evidence sug-

gesting that he advertised his “Bringing Now Safety

First” organization and his “BNSF Corporation” by driv-

ing a dilapidated car with “BNSF” hand painted and/or

| shoe polished on its side, distributing “BNSF” business

cards, and posting a one-page flyer with biographical

| information about himself, such as a description of his

1989 accident while employed at a predecessor of the

Railroad. 5R 1007-09, 1022.

ieinaeasmitniienies aie on 2 —

The district court ruled that such a factual showing

did not meet the “use in commerce” standard under the

Lanham Act. The court explained:

The record is complete in the sense of demon-

strating everything on which Purdy relies as

constituting “use in commerce” when he

applied for registration of the mark. The court

has concluded that, even if all of the circum-

stances upon which Purdy relies were to be

accepted as factually correct, there still would

not be “use in commerce” within the meaning of

the Lanham Act. The summary judgment record

establishes without dispute that Purdy did not

make a bona fide use of the mark BNSF in the

1 0

6

ordinary course of trade before the mark was

registered to him. Whatever use he made of the

mark was token use that would not qualify for

registration.

Pet. App. 9. The district court thus concluded that

Purdy’s “BNSF” federal registration is “void ab initio and

should be canceled.” Pet. App. 9.

The Fifth Circuit affirmed the district court’s ruling

in an opinion that is also unpublished. The appellate

court noted that the district court had “correctly stated

the applicable law and focused on the twin requirements

of ‘use in commerce’ to support a valid service mark

registration: that the mark has been used in the promo-

tion of services, and that the services identified by the

mark have been rendered in interstate commerce.” Pet.

App. 2. The Fifth Circuit concluded that Purdy’s alleged

“BNSF” use failed to meet the “use in commerce” stan-

dard for the same reason that the district court did. The

court explained Purdy had “not fulfilled the second part

of the test - the actual rendition of services in interstate

commerce — except by sporadic and insubstantial transac-

tions,” all of which “involved work performed for long-

time friends” and thus constituted merely “[njominal or

token sales.” Pet. App. 3.

7

REASONS FOR DENYING THE WRIT

1. The question Petitioner seeks to present was neither

presented to nor decided by the district court or the

court of appeals.

Purdy seeks to have this Court determine whether

“the 1988 amendments to the Lanham Act [were]

intended to deny non-profit, non-commercial or public

service entities from obtaining protectable service mark

rights?” Pet. i. This issue was never before the lower

courts.

The district court did not state or suggest that the

1988 amendments to the Lanham Act precluded non-

profit organizations from obtaining federal registration

for their service marks. The district court instead merely

noted that “token use” is no longer a sufficient basis for

federal registration. The court explained that “[p]rior to

November 16, 1989 . . . a single or ‘token’ sale was bona

fide use of a mark and was sufficient foundation upon

which an applicant could file to register such a service

mark,” but “the legislative history [for the 1988 amend-

ments to the Lanham Act] demonstrates that Congress

wished to eliminate ‘token’ use of a mark as a basis for

registration, and instead apply a stricter standard that

requires ‘commercial use of the type common to a partic-

ular industry in question.’” Pet. App. 8-9 (emphasis

added) (quoting Paramount Pictures Corp. v. White, 31

U.S.P.Q.2d 1768, 1774 (T.T.A.B. 1994)).

There is nothing in the district court’s opinion to

indicate that the court required Purdy to demonstrate he

was operating a for-profit enterprise to meet this “com-

mercial use” standard. The district court did not reference

Purdy’s profit motive, or his lack thereof. No such discus-

sion appears because, as the Railroad pointed out to the

district court, Purdy testified that he was operating a for-

profit business. 2R 433.

Similarly, the question Purdy seeks to have this Court

address was never presented to the court of appeals.

Purdy presented the following issue for review before the

appellate court: “Did the district court err in canceling

Mr. Purdy’s service mark registration for ‘BNSF,’ where

Purdy continuously and deliberately used his mark in

commerce from three years prior to his appication for

service mark registration through the present, and such

use was not mere ‘token use’ as ruled on a factual deter-

mination by the district court?” App. 4. Purdy maintained

that the district court had erred in granting the Railroad’s

summary judgment motion because the court “incorrectly

ruled on a fact determination.” App. 5. After reciting the

standards governing resolution of summary judgment -

motions, Purdy argued:

~ Appellant respectfully submits that the district

court violated all of these rules in granting sum-

mary judgment in favor of Burlington. The trial

court ignored the factual assertions contained in

all of more than a dozen affidavits and other

evidence filed by Appellant, which demonstrate

conclusively that BNSF Company used its ser-

vice mark in interstate commerce continuously,

openly, deliberately and notoriously from a

period of three years prior to the filing of the

service mark registration application through to

the present. The trial court must, therefore, have

necessarily determined, as a matter of fact, that

these witnesses were not credible, weighed the

evidence and found it wanting, and refused to

draw legitimate inferences in favor of BNSF.

This ruling is therefore directly contrary to the

trial court’s limited role in ruling on summary

judgment motions established by the Supreme

Court.

App. 7-8.

The court of appeals disagreed, explaining: (1) it had

“reviewed the district court’s opinion and the record

evidence de novo”; (2) the district court had “accepted all

of Purdy’s allegations as true and still found that ‘Purdy

did not make a bona fide use of the mark BNSF in the

ordinary course of trade before the mark was registered

to him’ ”; and (3) it “agree[d] with the district court’s

application of the facts to the law.” Pet. App. 2-3.

Purdy did not claim to be operating a non-profit

enterprise before the court of appeals, just as he had not

before the district court. Instead, in his appellate briefs,

Purdy maintained he had received “income . . . through

sales” of his “testing and safety services” and argued that

he had “over the years, earned a substantial amount of

money from the provision of the services. ...” App. 4-5,

15. In addressing his contentions, the court of appeals

thus explained that, contrary to his assertions, “[t]he

record identifies only a handful of instances in which

Purdy was paid anything for his ‘services’, and all of

these incidents involved work performed for long-time

friends,” “Purdy’s activities . . . do not demonstrate use

of the service mark in furtherance of a business intended

to provide services for reimbursement,” and Purdy “ren-

dered services for reimbursement . . . in only a de minimi

10

fashion.” Pet. App. 3-4. These statements regarding pay-

ment and reimbursement respond to the specific asser-

tions Purdy himself put before the court. They cannot

reasonably be translated into a ruling that Purdy’s federal

service mark registration is invalid because he did not

operate a for-profit enterprise.”

Similarly, the court of appeals’ observation that “[flor

several years, Purdy has conducted information-gather-

ing and -dissemination regarding railroad safety matters,

but the record is bereft of evidence that he was engaged

in trade or commerce using the ‘BNSF’ mark” (Pet. App.

3) cannot be read as a ruling that “Purdy was required to

demonstrate that [his] advocacy services were performed

in connection with a for-profit commercial enterprise,” as

Purdy maintains. Pet. 4. Instead, there the court was

merely explaining that Purdy submitted no evidence

showing that whatever advocacy services he provided

were performed “using the ‘BNSF’ mark.” Pet. App. 3

(emphasis added).

The court of appeals could not rule upon the impact of

Purdy’s profit motive, or lack thereof, because this was not

a contested issue. In his opening brief, Purdy argued that

his “lack of a strong profit motive does not preclude” him

from obtaining “service mark protection.” App. 8. As

2 The court of appeals also cited Allard Enters., Inc. v.

Advanced Programming Resources, Inc., 146 F.3d 350 (6th Cir.

1998) in response to Purdy’s contentions. Purdy claimed Allard

demonstrated his “BNSF” registration was valid since his pre-

registration use was the same as the use found to establish

common-law rights in Allard. App. 16-17. The court of appeals

explained that Purdy’s use was not the same as the use at issue

in Allard, and thus, Allard “reinforces our conclusion” that the

district court should be affirmed. Pet. App. 3-4.

11

Purdy recognized below, in its response, the Railroad

explained that it did “not contend that Purdy’s ‘BNSF’

registration was properly canceled . . . because he did not

have a profit motive. ...” App. 13, 15-16. Because there

was no dispute between the parties regarding the via-

bility of a federal service mark registration for a non-

profit organization, the court could not possibly rule

upon that point. Thus, if there was any language in the

court of appeals’ decision that could potentially be inter-

preted as addressing that issue, it would clearly be dic-

tum. See United States v. Crawley, 837 F.2d 291, 292-93 (7th

Cir. 1988) (defining dictum as language in an opinion

where “the issue addressed . . . was not presented as an

issue” and is “not refined by the fires of adversary pre-

sentation”).

This Court should deny the petition for certiorari

i simply because the language Purdy seeks to have it

review is dictum at most. Moreover, the language at

issue appears in an unpublished opinion which is not

precedent except under the limited circumstances set

forth in 51TH Cir. R. 47.5.4.3 There is clearly no reason why

this Court should review unpublished dictum.

3 51H Cir. R. 47.5.4 provides: “Unpublished opinions issued

on or after January 6, 1996, are not precedent, except under the

doctrine of res judicata, collateral estoppel or law of the case (or

similarly to show double jeopardy, abuse of the writ, notice,

sanctionable conduct, entitlement to attorney’s fees or the

like).”

4 In the fifteen months since the district court decision and

five months since the court of appeals’ decision, neither has

been cited by any tribunal for the point of law that Purdy says

they established.

eee em

12

2. The decisions below do not conflict with the deci-

sions of other courts.

Purdy has identified no case in which the court deter-

mined whether non-profit activities can be used to meet

the 15 U.S.C. § 1127 “use in commerce” standard and

create a valid basis for federal registration of a service

mark. Thus, there is clearly no conflict for this Court to

resolve. Purdy’s contention that there is conflict is based

on mischaracterization of the decisions he references.

Purdy repeatedly asserts that in United We Stand

America, Inc. v. United We Stand, America New York, Inc.,

128 F.3d 86 (2d Cir. 1997), cert. denied, 523 U.S. 1076

(1998), “the Second Circuit ruled that the Lanham Act

provision at issue, 15 U.S.C. § 1127, does not contain a

‘commercial activity’ requirement.” Pet. 5; see also Pet.

10-11. This is false. In fact, in United We Stand, the court

did not even address the 15 U.S.C. § 1127 “use in com-

merce” standard. Instead, the Second Circuit addressed a

claim that the defendant’s conduct constituted trademark

infringement in violation of Section 32 of the Lanham

Act, 15 U.S.C. § 1114(1)(a), which the court explained

“bars unauthorized use of a mark ‘in commerce... in

connection with the sale, offering for sale, distribution, or

advertising of any goods or services [if] . . . such use is

likely to cause confusion ...*” United We Stand, 128 F.3d

at 88-89 (quoting 15 U.S.C. § 1114(1)(a)).

In United We Stand, the defendants used the mark at

issue in connection with political activities. Id.

They maintained their conduct did not violate 15 U.S.C.

—

13

§ 1114(1)(a) because, inter alia, that statutory provi-

sion specifies “that the use prohibited must be ‘in com-

merce.’” Id. at 89, 92. The Second Circuit rejected this

defense, explaining “[t]he history and text of the Lanham

Act show that ‘use in commerce’ reflects Congress’s

intent to legislate to the limits of its authority under the

Commerce Clause, rather than to limit the Lanham Act to

profit-seeking uses of a trademark.” Id. at 92; see also id. at

92-93 (“It appears that ‘use in commerce’ denotes Con-

gress’s authority under the Commerce Clause rather than

an intent to limit the Act’s application to profit-making

activity.”). Thus, in United We Stand, the court addressed

the meaning of the “in commerce” limitation in 15 U.S.C.

§ 1114(1)(a), not the “use in commerce” standard of 15

U.S.C. § 1127. In United We Stand, there is absolutely no

reference to 15 U.S.C. § 1127, the provision that Purdy

claims the courts below improperly construed.

15 U.S.C. § 1127 contains a specific and detailed

definition of “use in commerce”:

The term ‘use in commerce’ means the bona fide

use of a mark in the ordinary course of trade,

and not made merely to reserve a right in a

mark. For purposes of this Act, a mark shall be

deemed to be in use in commerce -

on services when it is used or displayed in the

sale or advertising of services and the services

are rendered in commerce, or the services are

rendered in more than one State or in the United

States and a foreign country and the person

rendering the services is engaged in commerce

in connection with the services.

14

15 U.S.C. § 1127. Pet. App. 16. The language in this

provision is significantly different from the “in com-

merce” limitation in 15 U.S.C. § 1114(1)(a) and cannot be

read as merely denoting “Congress’s authority under the

Commerce Clause. . . . ” United We Stand, 128 F.3d at 92.

Thus, the Second Circuit’s ruling on the meaning of the

term “in commerce” as used in 15 U.S.C. § 1114(1)(a)

cannot be read as a decision on the meaning of the term

“use in commerce” as used in 15 U.S.C. § 1127.

There is similarly no conflict between the decisions

below and the other cases Purdy cites. None of the addi-

tional cases Purdy cites addresses the standard for federal

registration of a service mark under 15 U.S.C. § 1127. In

Committee for Idaho's High Desert v. Yost, 881 F. Supp. 1457

(D. Idaho 1995), aff'd in part, 92 F.3d 814 (9th Cir. 1996);

American Diabetes Ass'n, Inc. v. National Diabetes Ass’n, 533

F. Supp. 16 (E.D. Pa. 1981), aff'd, 681 F.2d 804 (3d Cir.

1982); United States Jaycees v. Philadelphia Jaycees, 490

F. Supp. 688 (E.D. Pa. 1979), vacated, 639 F.2d 134 (3d Cir.

1981); and United States Jaycees v. San Francisco Junior

Chamber of Commerce, 354 F. Supp. 61 (N.D. Cal. 1972),

aff'd, 513 F.2d 1226 (9th Cir. 1975), the courts ruled on

claims for trademark infringement and/or false designa-

tion of origin in violation of the Lanham Act brought by

non-profit organizations without addressing the validity

of any federal mark registration.5 In Brach Van Houten

Holding, Inc. v. Save Brach’s Coalition for Chicago, 856

> In fact, in two of these cases, the non-profit organization

did not have a federal registration for its mark. See Committee for

Idaho's High Desert, 881 F. Supp. at 1465; American Diabetes Ass'n,

533 F. Supp. at 19.

15

F. Supp. 472, 475-76 (N.D. Ill. 1994), the court rejected a

non-profit organization’s claim that it did not violate the

Lanham Act because its use of the mark at issue did not

meet the statutory definition of “services.” In Kappa Sigma

Fraternity v. Kappa Sigma Gamma Fraternity, 654 F. Supp.

1095, 1099, 1102 (D.N.H. 1987), reconsidered in part by 659

F. Supp. 117 (D.N.H. 1987), the court rejected the defen-

dants’ argument that their use of the mark at issue was

not “in commerce” within the meaning of the Lanham

Act because they had only used the mark on one college

campus in New Hampshire. And, in Blinded Veterans

Ass'n v. Blinded American Veterans Foundation, 872 F.2d

1035, 1036 (D.C. Cir. 1989), the court ruled that the non-

profit plaintiff’s name “is not a protectable trademark

because the term ‘blinded veterans’ is generic.” None of

these cases makes any reference to 15 U.S.C. § 1127, the

“use in commerce” standard it contains, or any aspect of

the requirements for federal registration of a service

mark. They cannot be read to conflict with the decisions

below, even if the decisions below are interpreted in the

manner Purdy suggests.® ;

Moreover, Purdy’s claimed use of “BNSF” is vastly

different from the use of the organizations involved in the

cases he identifies. In each of the cases Purdy cites, the

non-profit organization at issue had made extensive use

of its mark for decades in providing substantial, costly

6 In Allard, 146 F.3d at 359-61, the Sixth Circuit ruled that

the defendant had limited common-law rights to use a service

mark because it had made some bona fide use before the plaintiff.

Allard did not rule upon the validity of a federal service mark

registration and thus also cannot be read to conflict-with

Purdy’s suggested interpretation of the decisions below.

16

services to the public. See United We Stand, 128 F.3d at 90

(noting that defendants had “engaged in political orga-

nizing; established and equipped an office; solicited poli-

ticians to run on [their] slate; issued press releases

intended to support particular candidates and causes;

endorsed candidates; and distributed partisan political

literature”); Blinded Veterans Ass'n, 872 F.2d at 1036-37

(“Blinded Veterans Association is a nonprofit organiza-

tion founded in 1945 by a group of blinded World War II

veterans” that “has approximately 6,500 members,”

“employs sixteen persons on its headquarters staff in

Washington, D.C. and eight field representatives outside

the nation’s capital,” and has an “annual operating bud-

get [that] is just under $1.5 million”); Committee for Idaho's

High Desert, 881 F. Supp. at 1463-66 (“As a result of

Plaintiff's continuous and exclusive use of its name in

conducting its business since 1980, Plaintiff has gained

substantial notoriety, influence, and prominence... . ”);

Brach Van Houten, 856 F. Supp. at 475 (stating that defen-

dant “is engaged in soliciting donations, preparing press

releases, holding public meetings and press conferences,

propounding proposals for the reorganization of Brach’s

ownership and/or management, and other activities

designed to bring about change in the Brach’s organiza-

tion and enhance the stability of workers’ jobs”); Kappa

Sigma Fraternity, 654 F. Supp. at 1096-97 (“Plaintiff .. . is

an unincorporated collegiate fraternal organization with

an international membership of more than 132,000 per-

sons,” “has chapters on or in close proximity to the

campuses of 198 colleges and universities in the United

States and Canada,” and “alumni chapters in many major

cities in the United States.”); American Diabetes Ass'n, 533

17

F. Supp. at 18 (“Plaintiffs, as the leading charitable orga-

nizations in the diabetes field, have been engaged in

raising money to fund research, render services, and

inform the public for forty years. . . . ”); United States

Jaycees v. Philadelphia Jaycees, 490 F. Supp. at 690-91 (not-

ing that plaintiff organized as a civic group in 1920 and

has continuously existed since then); United States faycees

v. San Francisco Junior Chamber of Commerce, 354 F. Supp.

at 63 (same).

Thus, even if the cases Purdy cites had held that the

non-profit organizations at issue met the 15 U.S.C. § 1127

“use in commerce” standard that is a prerequisite to valid

federal registration, Purdy’s situation would not fall

within their scope. Purdy could only identify three occa-

sions prior to the filing of his registration application on

which he claimed to have provided his “testing” services

under the mark “BNSF” to three close friends. Purdy

could identify no railroad safety information he dissemi-

nated under the mark “BNSF” prior to filing his registra-

tion application. Purdy’s purported use falls far short of

that identified in the cases he cites.

Even if the courts below and the courts cited by

Purdy were presumed to have addressed the same statu-

tory provision (which they did not), their results are not

inconsistent. There is no conflict for this Court to resolve.

e

CONCLUSION

Purdy seeks to have this Court review language that

is, at most, dictum in a nonprecedential opinion. The

decisions below do not conflict with those of any other

18

court. Purdy’s petition for writ of certiorari should be

denied.

Respectfully submitted,

THOMPSON & KNiGHT L.L.P.

VERONICA SMITH Lewis

Grec W. Curry

Lara M. Peirce

1700 Pacific Avenue, Suite 3300

Dallas, Texas 75201

(214) 969-1700

CHARLES W. SHEWMAKE

THE BURLINGTON NorTHERN AND

SANTA Fe Rartway COMPANY

3017 Lou Menk Drive

Fort Worth, Texas 76131

(817) 352-2358

Counsel for Respondents

App. 1

15 U.S.C. § 1051. Registration of trade-marks

(a) Trade-marks used in commerce

The owner of a trade-mark used in commerce may

apply to register his or her trade-mark under this chapter

on the principal register established;

(1) By filing in the Patent and Trademark Office -

(A) a written application, in such form as may be

prescribed by the Commissioner, verified by the appli-

cant, or by a member of the firm or an officer of the

corporation or association applying, specifying appli-

cant’s domicile and citizenship, the date of applicant’s

first use of the mark, the date of applicant’s first use of

the mark in commerce, the goods in connection with

which the mark is used and the mode or manner in which

the mark is used in connection with such goods, and

including a statement to the effect that the person making

the verification believes himself, or the firm, corporation,

or association in whose behalf he makes the verification,

to be the owner of the mark sought to be registered, that

the mark is in use in commerce, and that no other person,

firm, corporation, or association, to the best of his knowl-

edge and belief, has the right to use such mark in com-

merce either in the identical form thereof or in such near

resemblance thereto as to be likely, when used on or in

connection with the goods of such other person, to cause

confusion, or to cause mistake, or to deceive: Provided,

That in the case of every application claiming concurrent

use the applicant shall state exceptions to his claim of

exclusive use, in which he shall specify, to the extent of

his knowledge, any concurrent use by others, the goods

App. 2

on or in connection with which and the areas in which

each concurrent use exists, the periods of each use, and

the goods and area for which the applicant desires regis-

tration;

(B) a drawing of the mark; and

(C) such number of specimens or facsimiles of the

mark as used as may be required by the Commissioner.

15 U.S.C. § 1053. Service marks registrable

Subject to the provisions relating to the registration

of trademarks, so far as they are applicable, service marks

shall be registrable, in the same manner and with the

same effect as are trade-marks, and when registered they

shall be entitled to the protection provided in this chapter

in the case of trade-marks. Applications and procedure

under this section shall conform as nearly as practicable

to those prescribed for the registration of trade-marks.

App. 3

|

98-11485

IN THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL FIFTH CIRCUIT

BURLINGTON

NORTHERN SANTA FE

CORP.,

A Delaware Corporation;

BURLINGTON

NORTHERN AND SANTA

FE RAILWAY COMPANY,

A Delaware Corporation

Plaintiffs-Appellees,

v.

WILLIAM S. PURDY, ET AL, -

Defendants,

WILLIAM S. PURDY, An

Individual,

Defendant-Appellant.

APPEAL FROM DECISION OF THE U.S. DISTRICT

COURT FOR THE NORTHERN DISTRICT OF TEXAS,

FORT WORTH DIVISION CIVIL ACTION NO.

4-98CV-70A ENTERED ON DECEMBER 7, 1998

FROM JUDGE JOHN MCBRYDE

BRIEF FOR DEFENDANT-APPELLANT

App. 4

STATEMENT OF ISSUE FOR REVIEW

Did the district court err in cancelling Mr. Purdy’s

service mark registration for “BNSF,” where Purdy con-

tinuously and deliberately used his mark in commerce

from three years prior to his application for service mark

registration through the present, and such use was not

mere “token use” as ruled on a factual determination by

the district court?

MR. PURDY’S BNSF COMPANY HAS DERIVED ECO-

NOMIC BENEFIT FROM THE INTERSTATE SALES OF

SERVICES AND PRODUCTS AS WELL AS FROM

CONTRIBUTIONS SUFFICIENT TO CARRY OUT ITS

PURPOSES

The primary puzpose of his BNSF company is the

promotion of railroad safety and has not been to make a

large profit. The BNSF income has been sufficient to carry

out the objectives of the company. The income has been

through sales of services and products and through con-

tributions from interested persons. While his BNSF com-

pany has made money it has not made more than four

hundred dollars in any one month. Under his disability,

Purdy is permitted to make as much as four hundred

dollars a month. (A22 417-19; A26 47; A35 425; D72 Ex.

21)

Mr. Purdy does not know the total receipts he has

received for the testing and safety services he provided.

He knows the amount is substantial, but again not more

than $400 in any one month. Purdy received payments in

various forms from a wide variety of persons including

App. 5

Mr. Bifulk, Mr. McAllister, Mr. Minnis, and others. For

example, Leroy Minnis of New York paid BNSF $100 in

July of 1995 for information provided to him and for the

information that BNSF company would collect and pro-

vide to him at a later time. In the Summer of 1996, Purdy

returned to provide Minnis with the additional informa-

tion Minnis had requested. Minnis paid Purdy an addi-

tional $100 at that time. Purdy returned to New York

again in September of 1997 and against collected and

provided information to Minnis regarding railroad safety.

(A26 47; A35 25)

While some of BNSF company’s safety activities were

provided to friends of Purdy, the activities were not in

any manner intended to be, nor were the activities lim-

ited to use only by friends. The safety activities were

used by Burlington engineers and others, in interstate

commerce, to benefit the general public. BNSF company’s

safety activities provided safety information to literally

thousands of interested persons throughout the United

States and Canada, and not just “friends” of Purdy. (A19-

A22; A25-A26)

SUMMARY OF THE ARGUMENT

As demonstrated above, BNSF company used its

“BNSF” service mark in commerce on a continuous basis

from 1993 to the present. This use was not “token use” as

incorrectly ruled on a fact determination by the district

court. The facts overwhelmingly demonstrate that BNSF

App. 6

company continuously provided its railroad safety ser-

vices throughout the United States both prior to the filing

of its service mark application, and through the present.

This use has included advertising of and provision of

services in collecting information and monitoring railroad

crossings, in providing safety information to railroad

employees and others addressing these issues in testing

various railroad equipment, and in providing railroad

safety information directly to interested members of the

public in several states through written and oral commu-

nications. These uses qualify as “services” under the Lan-

ham Act as that term has been interpreted by the courts.

Moreover, this use cannot be characterized as “token

use” as that term has been interpreted by the courts.

While BNSF’s use has, in fact, continuously expanded

through the short period of time it has been in business,

the courts, including courts in this Circuit, has uniformly

held that as long as the use is in commerce, and is

continuous and deliberate, the quantum of use is not

relevant. Nor does a registrant have to be a highly prof-

itable corporate enterprise, or even have a strong profit

motive, to qualify for service mark registration.

Remarkably, Burlington admits that BNSF company’s

web site services qualify as “use in commerce” of the

“BNSF” service mark, yet argues that the same activities

performed by BNSF company in its “low tech” phase do

not qualify for service mark protection. Burlington’s con-

tention is contrary to the Lanham Act’s service mark

statutory provisions, and the uniform case law and other

App. 7

authorities interpreting the statutory provisions. The dis-

trict court erred in granting summary judgment to Bur-

lington and cancelling BNSF’s service mark registration

for its mark, “BNSF”.

STANDARD OF REVIEW

Appellate court review of the district court’s ruling

granting summary judgment is de novo review. Montgom-

ery v. Brookshine, 34 F.3d 291, 294 (5th Cir. 1994 (citations

omitted).

Pursuant to Federal Rule of Civil Procedure 56, sum-

mary judgment shall only be granted where the plead-

ings, depositions, answers to interrogatories, admissions

on file, together with affidavits, show that there is no

genuine issue as to any material fact. “[S}ummary judg-

ment will not lie if the dispute about a material fact is

‘genuine’, that is, if the evidence is such that a reasonable

jury could return a verdict for the nonmoving party.”

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).

In ruling on the motion, the trial judge, therefore,

cannot act as a juror by making credibility determinations

by weighing evidence. The court therefore cannot, as

occurred here, ignore substantial, uncontradicted and

unimpeached affidavit and deposition testimony proving

continuous use in commerce by BNSF company of its

service mark.-As the Supreme Court instructs:

Credibility determination, the weighing of evi-

dence, and the drawing of legitimate inferences

from the facts are jury functions, not those of a

judge, whether he is ruling on a motion for

summary judgment or for a directed verdict.

App. 8

The evidence of the non-movant is to be

believed, and all justifiable inferences are to be

drawn in his favor.

Id. at 255 (emphasis added).

Appellant respectfully submits that Judge McBryde

violated all of these rules in granting summary judgment

in favor of Burlington. The trial court ignored the factual

assertions contained in all of more than a dozen affidavits

and other evidence filed by Appellant, which demon-

strate conclusively that BNSF company used its service

mark in interstate commerce continuously, openly, delib-

erately and notoriously from a period three years prior to

the filing of the service mark registration application

through to the present. The trial court must, therefore,

have necessarily determined, as a matter of fact, that

these witnesses were not credible, weigh the evidence

and found it wanting, and refused to draw legitimate

inferences in favor of BNSF. This ruling is therefore

directly contrary to the trial court’s limited role in ruling

on summary judgment motions established by the

Supreme Court.

2. BNSF Used Its Service Mark in Commerce;

Its Lack of a Strong Profit Motive Does Not

Preclude BNSF From Service Mark Protec-

tion

“Commerce” means either interstate or foreign com-

merce. 15 U.S.C. § 1501. Services are performed in “com-

merce” if they are performed in more than one state. It

may even include provision of services in one state,

App. 9

where the customers travel to other states, or are from

other states. McCarthy, § 19:104-106, pp. 19-188 to 19-193

and cases there cited. “For a number of reasons, the

Patent and Trademark Office’s (PTO’s) definition of inter-

state commerce has considerably broadened over the

years.” at §19:104, p. 19-188. “Use in commerce” should

be read as “use affecting commerce.” Id. at 19:123

(emphasis in original). Because BNSF clearly provided its

safety testing and advice services in several states prior

to its registration in 1996, BNSF meets these broad

requirements. BNSF used its service mark “in commerce.”

However, commercial success is not required to

establish use of the mark “in commerce,” under relevant

case law authority from this Circuit and other courts

throughout the country, in uniform decisions spanning

the last 100 years. “As long as there is a genuine use of

the mark in commerce, however, ownership may be

established even if the first uses are not extensive and do

not result in deep market penetration or widespread rec-

ognition.” Allard Enterprises, 146 F.3d at 358. “The test

used to determine continuous prior user is not the value

of sales or advertising or the degree of familiarity of the

public with the mark.” Fieldcrest Mills, Inc. v. Couri, 220

F.Supp. 929, 931 (S.D. NY 1963); Drexel Enterprises, Inc. v.

Richardson, 312 F.2d 525, 527 (10th Cir. 1962).

The venerable case of Adam Hat Stores v. Lefco, 44

F.Supp. 442 (E.D. Pa. 1942), aff'd, 134 F.2d 101 (3d Cir.

1943) is particularly apt. “While it must be conceded from

the testimony in the record that no extremely great vol-

ume of business was conducted by the defendants with

respect to ‘Adams Clothes’ covering the years 1923 to

1933, nor that extensive advertising campaigns were

App. 10

employed in connection with the marketing of the prod-

uct, this is not a requirement, as it has been held from

_an early date that in order for equity to protect a trade-

mark, while there must be some use in connection

therewith, the quantum thereof need not be large.” Id.,

44 F.Supp. at 445 (citations omitted) (emphasis added); see

also McCarthy, § 16:6 at p. 16-8.

What the registrant is required to show, as BNSF does

here, is that its use of the mark is deliberate and contin-

uous, and not sporadic, casual or transitory. Bell v. Street-

wise Records, Ltd., 640 F.Supp. 575, 580 (D.Mass. 1986)

(citation omitted). The usage must be consistent with a

present plan of commercial use, but “it is not required

that a product be an instant success the moment it hits

the market.” Id.

This Circuit similarly does not require that the use of

the mark have gained the mark wide public recognition,

and additionally, this circuit holds that even a single use

in trade may sustain trademark rights if followed by

continuous commercial utilization. Blue Bell, Inc. v. Farah

Manufacturing Company, Inc., 505 F.2d 1260, 1265 (5th Cir.

1975); citing, Kathreiner’s Malzkaffee Fabriken v. Paster

Kniepp Medicine Co., 82 F. 321, 326-327 (7th Cir. 1897)

(importations, which were “not numerous, indeed,” were

as much as one would expect during the first years of

growth of an infant industry) (other citations omitted).

BNSF’s pattern of use of its service mark clearly

comports with these standards. BNSF began use of its

service mark, “BNSF,” in 1993. Its use started as a grass

roots campaign, slowly as one would expect in a new

company. BNSF’s use was, however, continuous over the

App. 11

years. BNSF now has significant exposure through its

web site, which Burlington Northern has admitted is

sufficient evidence of use in commerce. This conduct

establishes that BNSF used its service mark in commerce,

with a clear intent to adopt that mark evidenced by

BNSF’s continued use of the mark from 1993 to the pres-

ent.

Moreover, BNSF provided safety testing services to

Burlington Northern through its engineers, which ser-

vices were similar to services provided to Burlington

Northern by other safety corsulting companies. McCar-

thy, § 19:103, p. 19-187 (“use” necessary is use in the

“ordinary course of trade,” and not just “token use”).

BNSF’s provision of railroad safety services, similar to

services provided by other railroad safety services pro-

viders, was therefore bona fide use of its service mark in

the ordinary course of trade.

* * +

App. 12

IN THE

Unrtep States Court OF APPEALS

For THE FiFtH CIRCUIT

No. 98-11485

BURLINGTON NorTHERN SANTA FE Corp.,

A Delaware Corporation;

THE BURLINGTON NorRTHERN AND SANTA FE RaILway

Company, A Delaware Corporation,

Plaintiffs - Appellees,

v.

WiiuraM S. Purpy, Et AL.,

Defendants,

WituiaM S. Purpy, an Individual,

- Defendant — Appellant.

Appeal from the United States District Court

for the Northern District of Texas

Fort Worth Division

BritF FOR APPELLEES

App. 13

ARGUMENT

A. The district court properly canceled Purdy’s

. “BNSF” registration because he did not demon-

strate pre-application “use in commerce” in

connection with the services recited in his

application.

Appellant’s brief presents a host of irrelevant obser-

vations about trademark law. The Lanham Act’s defini-

tion of “services,” Purdy’s profit motive, and Purdy’s

size136 are not relevant to the issue before the Court:

whether the trial court properly granted summary judg-

ment on the record before it.

The Railroad does not contend that Purdy’s “BNSF”

registration was properly canceled because his purported

activities did not meet the statutory “services” definition,

because he did not have a profit motive, or because his

company was small. Rather, the Railroad maintains that

Purdy’s registration was properly canceled because he

did not demonstrate the requisite “use in the ordinary.

course of trade” before the filing date of his application.

* * *

136 See Purdy Brief at 20-23, 26-30.

98-11485

IN THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL FIFTH CIRCUIT

BURLINGTON

NORTHERN SANTA FE

CORP.,

A Delaware Corporation;

BURLINGTON

NORTHERN AND

SANTA FE RAILWAY

COMPANY,

A Delaware Corporation

Plaintiffs-Appellees,

v.

WILLIAM S. PURDY, ET AL,

Defendants,

WILLIAM S. PURDY,

An Individual,

Defendant-Appellant.

APPEAL FROM DECISION OF THE U.S. DISTRICT

COURT FOR THE NORTHERN DISTRICT OF TEXAS,

FORT WORTH DIVISION CIVIL ACTION NO.

4-98CV-70A ENTERED ON DECEMBER 7, 1998

FROM JUDGE JOHN MCBRYDE

REPLY BRIEF FOR DEFENDANT-APPELLANT

App. 15

Appellees assert that Mr. Purdy cannot have used the

mark BNSF because he has been fully disabled since prior

to 1993. The facts show that Mr. Purdy is fully disabled

under the definition of the National Railroad Retirement

Board’s policies. These policies state that a person may be

fully disabled and still earn up to $400.00 per month. (5R

1010 {1, 1016 420, 1041, 1202, 1214) The record shows

that Mr. Purdy has, over the years, earned a substantial

amount of money from the provision of the services but

no more than $400.00 in any one month. (4R 977 47,

4R985 {{ 17-19, 5R 1018 25) Persons with disabilities are

not precluded from obtaining trademarks or trademark

protection under the trademark law.

* * *

III. BURLINGTON NORTHERN FAILS TO DISPUTE

AND THEREFORE CANNOT BE HEARD TO

DENY THAT APPELLANT’S ACTIVITIES CON-

STITUTE “SERVICES” UNDER THE LANHAM

ACT, THAT THE “USE” NECESSARY TO ESTAB-

LISH SERVICE MARK RIGHTS IS FAR

BROADER THAN THE USE NECESSARY TO

ESTABLISH RIGHTS TO A TRADEMARK, AND

THAT APPELLANT’S LACK OF PROFIT MOTIVE

AND SMALL SIZE ARE NOT CONTROLLING TO

THE ISSUE OF WHETHER APPELLANT CAN

MAINTAIN HIS SERVICE MARK RIGHTS

In Appellant’s opening brief, at pp. 20-23, and 26-30,

Appellant cited to treatise and case law authority that

conclusively establish: A) that the Lanham Act’s term

“services” is to be liberally construed; B) that Appellant's

services meet that broad definition; C) that use sufficient

App. 16

to support service mark registration is far broader than

use necessary to support trademark registration; D) that

Appellant's lack of a profit motive does not defeat Appel-

lant’s service mark rights; and E) that Appellant's small

size does not defeat his service mark registration rights.

In its brief, Burlington Northern simply states that these

issues are “not relevant,” without any attempt to contra-

dict Appellant’s positions. Burlington Northern's Brief at

32. Appellant’s positions on these issues, which are of

course highly relevant to Appellant’s argument here that

he is entitled to maintain his service mark registration

rights, are therefore conclusively established.

Finally, Burlington Northern contends that In re

Ames, 160 U.S.P.Q. 214 (TTAB 1968), and Allard Enter-

prises, 146 F.3d at 350, do not stand for the proposition

that advertising alone can support a valid registration.

Burlington Northern's Brief at 35. Burlington Northern

misconstrues Appellant's citations to these cases. (Open-

ing Brief at p. 25) In Ames, the court held that advertising

of services available to the pubic suffices to establish use

sufficient to support a service mark registration. Id. at

214-215. In Allard Enterprises, the Sixth Circuit held, in a

case where the party had not made a single sale of its

services and therefore had never performed its services in

commerce, that prior adoption of a service mark through

advertising of services available to the public was suffi-

cient to defeat the federal registration rights of plaintiff.

Id. at 358-360. Similarly here, Appellant's sales brochures

App. 17

and business cards advertised services that were avail-

able to the public, and under these authorities constitute

sufficient use to maintain its service mark registration.

* * +

VI. APPELLANT’S SERVICES WERE NOT PRO-

VIDED SOLELY TO FRIENDS

Another argument raised by Burlington Northern is

that Appellant is not entitled to registration because ser-

vices were rendered entirely to friends. (Burlington

Northern’s Brief at p. 39, and fn 163) As demonstrated in

Section II(C), this contention is also contrary to the facts,

and Burlington Northern’s case citations are therefore

inapposite.

Moreover, in Allard Enterprises, the Sixth Circuit

approved a marketing program apparently limited solely

to “friends” of the party seeking a priority of use deter-

mination. As long as the uses were sufficiently public and

were continuous and consistent, as Appellant’s were in

this case, a “word of mouth” marketing plan that targeted

“personal friends” is “not so atypical that no reasonable

person” could view it as “commercial.” Id. at 359.

+ * +