Monday, January 22, 2007

Precedential No. 4: Petitioner's Prior Use Analogous to Trademark Use Leads to TTAB Cancellation of "THE CRAFTSMAN ALS IK KAN" Registrations

In its fourth precedential decision of 2007, the Board granted a petition for cancellation of two registrations for the mark shown immediately below, one for furniture polish and the other for furniture, on the ground of likelihood of confusion. The Board ruled that Petitioner Stickley had prior rights in the term ALS IK KAN for those same goods, based on its use "analogous to trademark use." L. & J.G. Stickley, Inc. v. Cosser, 81 USPQ2d 1956 (TTAB 2007).

The history of this dispute begins with one Gustav Stickley, who designed and sold "Mission furniture" in the early 1900's. He registered the marks CRAFTSMAN and the ALS IK KAN mark (with compass design) at that time, but the registrations expired long ago, and the marks fell out of use for decades. [The Finnish or Flemish words "ALS IK KAN" mean "If I can, all I can."] In 1977, Petitioner Stickley (founded by Gustav Stickley's brothers) published a catalog in which the phrase "Als ik Kan:" the pride of craftsmanship" appears at the top of one page and is said to be a trademark.

Respondent Cosser began using his mark on furniture polish in 1978. As to furniture, Cosser could rely only on his filing date of June 1997.

The "first key issue" in the case was priority. Petitioner argued that its prior use of the marks (on the 1977 catalog page identifying ALS IK KAN as a trademark, and in showroom displays) constituted "analogous trademark use sufficient to warrant cancellation of Registrant's registrations." The Board agreed:

"we find that petitioner has established by a preponderance of the evidence that it made use analogous to trademark use of the phrase ALS IK KAN and the woodworker's compass in association with its furniture and furniture polish and that this use was established at least by the end of 1977 when its 1977 catalog was issued."

Cosser contended that Petitioner Stickley had abandoned its marks: in fact, Stickley's witness, when asked if it was Petitioner's "intention to put the compass with Als ik kan on furniture?" answered "no." However, the Board noted that Petitioner's priority is based not on "petitioner's use of the mark ... but rather as a result of petitioner's use analogous to trademark use or trade name type use. We cannot say that there has been any abandonment of this type of use."

Having decided the priority issue in favor of Stickley, the Board then took its hammer to Registrant's furniture registration, concluding that Cosser had not used his mark on furniture prior to his filing date of June 11, 1997. Therefore, the Board ordered the registration cancelled. [The Board noted that the misstatement regarding use in Cosser's trademark application was not fraud, because Cosser was making and selling furniture and using his mark in association with related services. His error appeared to be the result of "unfamiliarity with the intricacies of trademark law regarding the differences between a service mark for custom furniture making services and a trademark for furniture."]

Turning to the likelihood of confusion issue, the Board wasted little time in ruling in Stickley's favor. Focusing on the expression ALS IK KAN, the Board decided that that phrase "would likely have more trademark significance than the term THE CRAFTSMAN," the latter term being "highly suggestive of furniture and furniture polish made by craftsmen." Therefore it concluded that the marks are "very similar." Moreover, Stickley used the woodworker's compass design before Cosser, and that feature would thus increase the likelihood of confusion. With the goods at least overlapping, the Board concluded that confusion is likely.

The Board consequently granted the petition for cancellation of Cosser's registrations.

TTABlog comments: Perhaps this decision should be known as the "mission" case, because the Board seemed to be on a mission to craft a ruling in favor of Stickley. [The fact that Petitioner is the direct descendant of Gustav Stickley, the originator of the marks at issue, may have influenced the Board's approach]. The evidence of prior "analogous trademark use" by Stickley was rather minimal: use of the marks on a catalog page and in a showroom display hardly seem sufficient to create a public awareness of the "marks." It also seems that the presumption of validity that Cosser should have enjoyed as a result of his registrations was largely ignored.

On a different note, the decision does contain a useful, albeit brief, discussion of fraud, and particularly the fact that not all false statements made by an applicant are fraudulent. It's one thing for an applicant to aver that it has used its mark on goods or services when it has not in fact used the mark at all. It's quite another when the statement made is not purely factual, but involves a mixed question of fact and law. In the latter case, there is room for error. Compare last year's Standard Knitting case (blogged here) with the Maids to Order case (blogged here).

Text Copyright John L. Welch 2007.


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