Wednesday, November 23, 2005

In a Citable Section 2(c) Decision, TTAB Partially Cancels "KRAUSE PUBLICATIONS" Registration

Section 2(c) decisions are as rare as a White Sox fan in Boston, but the TTAB has just issued one -- the Board's 13th citable decision of 2005. The Board granted (in large part) Chester L. "Chet" Krause's 2(c) petition to cancel a registration for the mark KRAUSE PUBLICATIONS for various goods and services in classes 16, 35, and 42 relating to coin collecting, antique autos, and various other topics ("PUBLICATIONS" disclaimed). Krause v. Krause Publications, Inc., 76 USPQ2d 1904 (TTAB 2005).


Section 2(c) of the Trademark Act bars registration of a mark that "consists of or comprises a name ... identifying a particular living individual except by his written consent ...." It was therefore incumbent upon Petitioner to show that the word KRAUSE "points uniquely to him 'as a particular living individual.'" Respondent, in turn, attempted to show consent.

Chet contended that he is renowned in "the multiple fields of numismatics, car collecting, business, publishing and philanthropy; and that he is so well known by the public in general that they would assume a connection between [him] and the mark KRAUSE PUBLICATIONS."

Krause Publications
, on the other hand, maintained that Chet's activities from 1964 to 1990 were "through respondent," and it denied that any consent from Chet was necessary when it applied for registration. Respondent asserted that Chet had acquiesced in its use of the name KRAUSE PUBLICATIONS, and had waived any objection thereto.

The record showed that Chet started his publishing business as a sole proprietorship and then was associated with Respondent for nearly 50 years, stepping down as president in 1990. He co-authored at least three publications in the field of numismatics, including "The Standard Catalog of World Coins," which "is considered the worldwide reference authority for coin collectors." He lectured across the country and received awards in recognition of his contributions to the field of numismatics. With regard to car collecting, Chet received the 1995 "Collector Car Hobby's Person of the Year Award," and his "extensive car collection was the subject of a film by the Society of Automotive Historians."

The Board found that Chet is "publicly connected, at the very least, with the fields of numismatics, car collecting, and publishing activities related thereto, such that a connection between petitioner and the mark KRAUSE PUBLICATIONS would be presumed by people who have an interest in these fields."

However, Chet failed to establish that the general public would assume a connection between him and KRAUSE PUBLICATIONS. Nor did Chet demonstrate that "he is publicly connected with the services in class 41, namely, 'entertainment services in the nature of competitions and awards in the field of cutlery.'"

As to the issues of consent, Respondent argued that Chet gave his implied consent when he incorporated the business; when he sold his stock in Respondent to set up an ESOP; and when he (as president and CEO) pledged Respondent's assets, including trademarks and tradenames, to finance expansion and acquisitions. The Board reviewed the various cases cited by Respondent, but concluded that Chet had given no such consent to registration.

Nor did Chet's silence during Respondent's decades-long use of KRAUSE PUBLICATIONS estop him from challenging its registration. Chet brought the cancellation proceeding within six months after issuance of the registration, a delay that cannot be considered unreasonable.

In sum, the Board found that the mark KRAUSE PUBLICATIONS had been registered without the required consent of Chet Krause, and it cancelled the registration as to classes 16, 35, and 42.

TTABlog comment: The Board pointed out that, to prevail on his claim, Chet need not demonstrate that he is publicly connected with all of the goods or services listed in a particular class. It is sufficient that he be publicly connected with "at least some of the goods and services in the class."

Respondent's class 16 goods included magazines relating to interior decorating, comics, collectible card games, fantasy sports, hunting, firearms, rock and roll memorabilia, and various other subjects. It appears that a new application filed by Krause Publications, Inc. that avoided numismatics and antique autos would survive a Section 2(c) challenge from Chet.

Had Respondent filed a timely (and prescient) motion under Rule 2.133(a) to amend the identification of goods and services in its registration to eliminate those related to coins and autos, the Board might have taken up that motion at final hearing and allowed the registration to survive with the offending goods and services deleted.

Text Copyright John L. Welch 2005.


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