Georgia-Pacific Corp. v. Great Plains Bag Co.

614 F.2d 757, 204 U.S.P.Q. (BNA) 697, 1980 CCPA LEXIS 293
CourtCourt of Customs and Patent Appeals
DecidedJanuary 24, 1980
DocketAppeal No. 79-544
StatusPublished
Cited by16 cases

This text of 614 F.2d 757 (Georgia-Pacific Corp. v. Great Plains Bag Co.) is published on Counsel Stack Legal Research, covering Court of Customs and Patent Appeals primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Georgia-Pacific Corp. v. Great Plains Bag Co., 614 F.2d 757, 204 U.S.P.Q. (BNA) 697, 1980 CCPA LEXIS 293 (ccpa 1980).

Opinion

BALDWIN, Judge.

This appeal is from the decision of the Patent and Trademark Office Trademark Trial and Appeal Board (board) in cancellation No. 10,389, dismissing Georgia-Pacific’s petition to cancel registration No. 911,935 of Great Plains Bag Co. (Great Plains) of the mark:

Georgia-Pacific Corp. v. Great Plains Bag Co., 200 USPQ 601 (TTAB 1978). We affirm.

Background

Great Plains filed an application for registration of the mark for use on paper and plastic bags on January 23, 1970, alleging a first use of September 1, 1961. The registration was issued on June 8, 1971.

Georgia-Pacific petitioned for cancellation of the mark on July 11, 1973, on the grounds that it had been and is still engaged in the manufacture and sale in interstate commerce of a variety of forestry products including, specifically, paper bags and Kraft paper; it is owner of the trademark G-P, which mark has been used extensively as a portion of its corporate logo and on its various goods long prior to Great Plains’ first use in 1961; it is the owner of registrations for a number of marks containing the letters G-P for use on lumber [759]*759and plywood. Finally, Georgia-Pacific alleged that Great Plains’ mark, as used on paper and plastic bags, so resembles its own mark as applied to its goods as to be likely to cause confusion, mistake or deception regarding the source of the goods.

Great Plains averred that Georgia-Pacific was barred from bringing the cancellation proceeding by reason of laches and estoppel. It argued that since the parties had engaged in various business dealings since 1962, including the sale of Kraft paper by Georgia-Pacific to Great Plains, Georgia-Pacific knew, or should have known, of its use of the mark in its corporate logo (said logo appearing on its bags, stationery and envelopes since 1961). Georgia-Pacific’s failure to object to the use of the logo and the subsequent increase in its use results in Georgia-Pacific now being estopped from asserting a likelihood of confusion between the respective marks and from asserting that it would be damaged by this registration.

Board

The board found that Georgia-Pacific’s use of the designation G — P has been well known in the lumber industry since the late 1940’s both as an identification of the corporate entity and a trade designation identifying its marketed products.

The board admitted into evidence a survey (conducted for use in another proceeding) which tended to show that the verbal letters G-P were recognized, both by sixty percent of a group of executives from various paper purchasing companies and additionally by twenty-five percent of a group of regular readers of the Wall Street Journal, as a term representing Georgia-Pacific. Great Plains objected to admission of the survey on the basis of hearsay since without the inclusion of the interview sheets and recorded responses, the accuracy of the survey could not be verified. The individuals who conducted and designed the survey were deposed and made, available for cross-examination. The board concluded that the survey should be admitted for consideration of the probative value to be attached thereto. The survey was qualified to sustain a recognition of G-P with Georgia-Pacific in the paper industry.

The board indicated that it is well settled in trademark law that the defenses of laches and estoppel are based on the concept that the owner and prior user of a mark having actual or constructive notice of another party’s use of the same or similar mark for like or similar goods must be persevering. He must not sit on those rights for an exorbitant length of time and allow the subsequent user to build up a business and good will associated with such mark before taking action against that use.

To prove the defense of laches one must make a showing that the party, against which the defense is asserted, had actual knowledge of trademark use by the party claiming the defense or at least a showing that it would have been inconceivable that the party charged with laches would have been unaware of the use of the mark. Loma Linda Food Co. v. Thomson & Taylor Spice Co., 279 F.2d 522, 47 CCPA 1071, 126 USPQ 261 (1960).

The board indicated that circumstantial evidence appeared to be overwhelming on the concept that Georgia-Pacific must have been aware of Great Plains’ use of its logo containing the letters G-P.

The board detailed the evidence by Great Plains which would show the requisite knowledge. It pointed out that a vice-president of Georgia-Pacific visited the president of Great Plains to discuss a joint venture. A large corporate logo was present on a wall behind the receptionist’s desk at the time of that visit. Numerous visits by salesmen and sales managers of Georgia-Pacific to two of Great Plains’ locations were catalogued. Each salesman would have had to pass a large outside sign bearing Great Plains’ G-P logo. Several sales of paper were made by Georgia-Pacific to Great Plains. Great Plains picked up the paper in trucks bearing the corporate logo, paid for it using checks using the corporate logo, and confirmed several of its telephone orders using purchase orders bearing the corporate logo.

[760]*760Georgia-Pacific argues that Great Plains has produced evidence showing only that lower echelon employees (clerks, bookkeepers, dock workers) might have seen Great Plains’ usage of the mark. Since no employee specifically charged with policing trademark infringement matters saw the usage, a corporation as large as Georgia-Pacific should not be charged with such knowledge. The board concluded that notice to a corporation via its sales personnel constitutes sufficient notice for the support of the equitable defenses of laches. Alternatively, the absence of question by the sales force concerning that mark’s usage was considered as evidence that no likelihood of confusion exists.

Finally, the board considered the parties’ respective marks on paper bags. Great Plains’ mark, it is said, being a distinctive design mark, requires some effort to discern the letters G-P. For that reason, the board found “considerable doubt” existed that a prospective purchaser would equate the two marks or even form an association between them.

The board therefore concluded that the differences in the marks were sufficient to make the question of likelihood of confusion reasonably debatable and therefore to give effect to Great Plains’ equitable defenses. Georgia-Pacific was held guilty of laches and estopped from asserting that it is and will be damaged by Great Plains’ registration.

OPINION

All evidence tending to prove or disprove a likelihood of confusion between two marks must be considered. In re E. I. du Pont de Nemours, 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).

Georgia-Pacific argues that the board expressly held that “the Great Plains mark comprises the identical letters GP” as used by Georgia-Pacific. The board opinion fails to provide support for such an argument. The board did indicate that the Great Plains mark “while incorporating the letters ‘GP,’ can by no means be considered a literal mark” but, instead, “projects the image of a distinctive design mark.” We agree with the board on this point.

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614 F.2d 757, 204 U.S.P.Q. (BNA) 697, 1980 CCPA LEXIS 293, Counsel Stack Legal Research, https://law.counselstack.com/opinion/georgia-pacific-corp-v-great-plains-bag-co-ccpa-1980.