Appealed from U.S. Patent and Trademark Office Trademark Trial and Appeal Board.
Mayer, Circuit Judge, Smith, Senior Circuit Judge, and Plager, Circuit Judge.
Appellant G.H. Mumm & Cie (Societe Vinicole de Champagne Successeurs of New York, Inc.) ("Mumm") opposes registration of a mark by Cross-Appellant Desnoes & Geddes, Ltd. ("Desnoes"). The Trademark Trial and Appeal Board ("Board") dismissed Mumm's opposition. Desnoes cross-appeals from a decision of the Board dismissing Desnoes' counterclaim to cancel Mumm's Registration No. 395,907 ('907). As to both dismissals, we affirm.
On June 16, 1942, the '907 registration of a mark which included a diagonal stripe, lined for red, was granted to Mumm. The registered mark ('907 mark) is reproduced below:
The original '907 registration was for wine, in U.S. class 47. Under the schedule of classes of goods and services in effect at the time of registration, both still wines and sparkling wines*fn1 were included in U.S. class 47. 37 C.F.R. § 100.161 (1947); see H. Nims, The Law of Unfair Competition and Trade-marks 1127 (1929). Products such as malt beverages and liquors were included in U.S. class 48. Id.
The right to use the '907 mark became incontestable, under 15 U.S.C. § 1065 (1988), no later than August 17, 1954 by virtue of a properly submitted affidavit dated May 22, 1954. Mumm has continuously used a red stripe in connection with its product since at least June, 1942. Mumm last renewed its registration of the mark for 20 years from June 16, 1982.
Desnoes markets "Red Stripe" brand beer; the record indicates that it first sold the beer, apparently in Jamaica, in 1934. It has marketed the beer in the United States since 1976, distribution being limited to 28 states. On October 18, 1984, Desnoes filed an application in the Patent and Trademark Office, Serial No. 504,399 ('399), to register the mark shown below:
Mumm opposes registration of the '399 mark, arguing that Mumm's diagonal red stripe mark has become so well known to the trade and purchasing public that it indicates origin exclusively with Mumm, and that, as applied to Desnoes' goods, the proposed '399 mark would be likely to cause confusion, to cause mistake, or to deceive, which the statute makes grounds for denial of a registration. 15 U.S.C. § 1052(d) (1988). Desnoes argues that use of diagonal red stripes has become common in the beer and wine trade and that Mumm is unable to exercise control over the use of such a mark. Desnoes also argues that the '907 mark is no longer capable of distinguishing Mumm's goods from the goods of others. Desnoes argues further that Mumm engaged in inequitable conduct involving fraud and unclean hands before the Patent and Trademark Office during the 1982 renewal of the '907 registration and, therefore, the registration should be cancelled.
Secondary meaning arises when a symbol or device, not inherently distinctive at the time of its adoption, later acquires distinctiveness such that the symbol or device serves as a mark to indicate the source of the associated goods. Levi Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817, 821, 208 U.S.P.Q. (BNA) 713, 717 (9th Cir. 1980). A mark that has acquired secondary meaning may serve as a trademark and be ...