Larry Harmon Pictures Corporation v. The Williams Restaurant Corporation

929 F.2d 662, 18 U.S.P.Q. 2d (BNA) 1292, 1991 U.S. App. LEXIS 4876, 1991 WL 40616

• Court: Court of Appeals for the Federal Circuit
• Decided: March 27, 1991
• Docket: 89-1336
• Status: Published

Opinions

ARCHER, Circuit Judge.

This is an appeal from the grant of a summary judgment by the United States Patent and Trademark Office Trademark Trial and Appeal Board (board), Opposition No. 73,217 (January 13, 1989), dismissing the opposition of Larry Harmon Pictures Corporation (Harmon) to the application for registration by The Williams Restaurant Corporation (Williams) of the service mark BOZO’S for restaurant services. On the sole issue raised by Harmon’s opposition, the board held that Williams “satisfied the use in commerce requirement of Section 3” of the Lanham Trademark Act of 1946, 15 U.S.C. § 1053 (1988). We affirm.

I

The board found the following facts to be undisputed. Williams has operated BOZO’S pit barbecue restaurant in Mason, Tennessee, since 1932. Mason is about a 50 or 60 minute drive from Memphis, Tennessee, which is a large city and a major commercial center for the Mid-South region. The Memphis metropolitan statistical area comprises not only a portion of Tennessee, but also portions of Mississippi and Arkansas. As conceded by Harmon before the board, BOZO’S “restaurant is obviously popular with Memphis residents ... It is close enough (50-60 minutes) to make a pleasant outing from the city. Articles ... from Memphis newspapers and magazines also refer to the restaurant’s popularity with Memphis residents.” In addition, BOZO’S restaurant has been at least mentioned in publications originating in New York, New York; Washington, D.C.; Dallas, Texas; Gila Bend, Arizona; and Palm Beach, Florida. Further, according to the board’s opinion, “[tjhere is no dispute that BOZO’S restaurant services are rendered to interstate travelers” and Harmon “acknowledges that applicant’s restaurant ... serves some interstate travelers.”

The board concluded on the basis of these “undisputed facts” that Williams had made use of its service mark BOZO’S in a manner sufficient to satisfy the use in commerce requirement of Section 3 of the Lan-ham Act. The board, therefore, granted Williams’ motion for summary judgment and dismissed Harmon’s opposition. In doing so it stated that it “resolve[d] all factual disputes in favor of [Harmon]” and “construe^] all inferences to be drawn from established facts in the light most favorable to [Harmon].” The proper standard for considering a summary judgment motion was therefore applied. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 2513, 91 L.Ed.2d 202 (1986) (“The evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor.”).¹

II

The only issue in this appeal is whether the board correctly concluded that the “use in commerce” requirement set forth in Section 3 of the Lanham Act is satisfied by the service in a single-location restaurant of interstate customers. Harmon argues that the use in commerce requirement of Section 3 cannot be satisfied by a single-location restaurant, such as BOZO’S, that serves only a minimal number of interstate travelers. In support of its argument, Harmon relies on In re Bookbinder’s Restaurant, Inc., 240 F.2d 365, 44 CCPA 731, 112 USPQ 326 (1957), in which a single-location restaurant in Philadelphia was not permitted to register its service mark. Harmon further contends that if the Bookbinder’s rule — which it interprets to be that single-location restaurants, not located on an interstate highway, cannot be considered as rendering services in commerce — seems too restrictive, this court should adopt the test that a single-location restaurant is not entitled to register its service mark unless (1) it is located on an interstate highway, (2) at least 50% of its meals are served to interstate travelers, or (3) it regularly advertises in out-of-state media. We decline to circumscribe the statute in the manner suggested.

Section 1 of the Lanham Act provides that the “owner of a trade-mark used in commerce may apply to register his trademark under this chapter.” 15 U.S.C. § 1051 (1988) (emphasis added). Section 3 of the Act states that “service marks shall be registrable, in the same manner and with the same effect as are trade-marks.” 15 U.S.C. § 1053 (1988). In general, therefore, service marks must be “used in commerce” before they may be registered.

Section 45 of the Lanham Act provides the following definitions for the word “commerce” and the phrase “use in commerce:”

The word “commerce” means all commerce which may lawfully be regulated by Congress.

For purposes of this chapter 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.

15 U.S.C. § 1127 (1988) (emphasis added).

Congress has broad powers under the commerce clause of the United States Constitution, Art. 1, sec. 8, to regulate interstate commerce. In In re Silenus Wines, Inc., 557 F.2d 806, 194 USPQ 261 (CCPA 1977), this court’s predecessor observed that the Lanham Act represented a change in the scope of federal trademark jurisdiction and that in making the change “Rep. Lanham and his subcommittee,” and presumably the Congress, were “mindful of the broad scope of Congressional regulatory powers which the Supreme Court has sanctioned.” Id. at 810, 194 USPQ at 265. The CCPA stated:

In the Lanham Act, Congress set out what appears to be an unambiguous statement of the scope of federal trademark jurisdiction, namely, “all commerce which may lawfully be regulated by Congress.” 15 USC 1127 (1976). This language represents an obvious change from the phrasing of the former trademark acts, which phrasing expressly limited trademark jurisdiction to interstate and foreign commerce and commerce with Indians. [Footnote omitted.] The change clearly involves a broadening of jurisdiction.¹⁰

Silenus Wines, 557 F.2d at 809, 194 USPQ at 264-65.

Harmon’s position is based primarily on In re Bookbinder’s, but in that case the court’s decision reflects clearly the failure to prove any use in commerce. The court observed that “[t]he record indicates that appellant operates a single restaurant in Philadelphia, Pennsylvania, and the services relied on are rendered in that city,” and that “[t]here are no affidavits or testimony of record and the application states merely that the mark is used ‘for restaurant, catering and banquet services.’ ” 240 F.2d at 366, 368, 112 USPQ at 326, 328. The court also discounted as not probative the “unverified statement [by the applicant’s attorney] that the services were offered to customers and prospective customers in states adjoining Pennsylvania.” 240 F.2d at 368, 112 USPQ at 328.

In In re Gastown, Inc., 326 F.2d 780, 51 CCPA 876, 140 USPQ 216 (1964), decided seven years after Bookbinder’s, the CCPA again discussed the “use in commerce” requirement set forth in Section 3 of the Lanham Act. In Gastown, the appellant operated a chain of automobile and truck service stations, some of which were located on federal highways. Although the services rendered by the appellant were confined to the State of Ohio, some of appellant’s customers had their legal situs in other states, were engaged in interstate commerce when served by appellant in Ohio, and were extended credit and billed in their respective domiciliary states. The court held that those circumstances established that the services had a direct effect on interstate commerce and were sufficient to show that applicant’s mark was used in commerce within the meaning of Sections 3 and 45 of the Lanham Act.

The Bookbinder’s and Gastown decisions are distinguishable from each other on the basis of the underlying evidence before the board in each case. See Gastown, 326 F.2d at 784, 140 USPQ at 218 (noting the deficiency in proof of interstate commerce in Bookbinder’s and stating that “[n]o weight ... was given to those unverified statements”). In Bookbinder’s, the evidence of record indicated that the applicant’s services were not “rendered in commerce” within the meaning of the Act. In Gastown, the opposite was true. 326 F.2d at 782, 140 USPQ at 217.

While the facts supporting Williams’ contention that its service mark is used in commerce are not as extensive, or as persuasive, as those in Gastown, we are convinced they are sufficient to satisfy the statutory requirement for registration. In Gastown, the court approved the Fifth Circuit’s observation that in enacting the Lanham Act “[i]t would seem that ... Congress intended to regulate interstate and foreign commerce to the full extent of its constitutional powers,” Gastown, 326 F.2d at 784, 140 USPQ at 218 (quoting the Fifth Circuit’s decision in Bulova Watch Co. v. Steele, 194 F.2d 567, 571, 92 USPQ 266, 269 (5th Cir.), aff'd, 344 U.S. 280, 73 S.Ct. 252, 97 L.Ed. 319 (1952)).

Again, in Silenus Wines, the CCPA pointed to the “broadened commerce provisions of the Lanham Act” (quoting the Supreme Court’s decision in Steele v. Bulova Watch Co., 344 U.S. at 287, 73 S.Ct. at 256) and stated that the changed language regarding use in commerce in the Lanham Act “clearly involves a broadening of jurisdiction.” 557 F.2d at 810, 194 USPQ at 265. The court also quoted from the Supreme Court’s decision in Wickard v. Filburn, 317 U.S. 111, 125, 63 S.Ct. 82, 89, 87 L.Ed. 122 (1942), as indicating the scope of Congressional regulatory powers that the Supreme Court had sanctioned prior to the passage of the Lanham Act. Moreover, the Silenus Wines court found support for the broadened trademark jurisdiction in other federal courts’ decisions which applied the infringement provisions of the Lanham Act:

Our Gastown decision and this opinion are further fortified by the manner in which other federal courts have treated these terms, “use in commerce” and “commerce,” when used in the infringement portion of the Lanham Act. [Footnote omitted.] Courts have uniformly held, in the infringement context, that “commerce” includes intrastate transactions that affect interstate or foreign commerce. [Footnote omitted.] We see no basis for the meaning of commerce in the registration context to be different from the meaning in the infringement context, particularly since the meanings both derive from the same definition in 15 USC 1127 (1976).

557 F.2d at 811-12, 194 USPQ at 266-67 (emphasis in original).

In Silenus Wines, the CCPA expressly rejected the position of the Patent and Trademark Office that the statute is ambiguous and that the various statements in legislative history “contradict and overshadow [the] statutory definition of commerce.” Id. 557 F.2d at 810-11, 194 USPQ at 265-66. The CCPA found instead that the Lanham Act contains “a clear and unambiguous definition of federal trademark jurisdiction” and that “with unambiguous language in a statute, it is improper to consider extrinsic sources like legislative history to raise ambiguities.” Id. (footnote omitted). It also noted that “[w]hile some of the other hearing participants appear to have taken a position contrary to the language of the statute, their opinions as to what the statute should have said will not be used to reverse clear, contrary language in the statute.” Id. at 811, 194 USPQ at 266.

Thus, our predecessor court whose decisions are binding on us, South Corporation v. United States, 690 F.2d 1368 (Fed.Cir.1982) (in banc), has unequivocally-held that the definition of commerce in the Lanham Act means exactly what the statute says, i.e., “all commerce which may lawfully be regulated by Congress.” In view of our precedent as to the scope of the use in commerce provision of the Lanham Act, we must reject Harmon’s contention that its suggested non-statutory limitations, i.e., location on an interstate highway, or 50% of the meals furnished to interstate travelers, or regular advertising in out-of-state media, should be imposed on the registration of a mark used by a single-location restaurant.

The record here established that the BOZO’S mark has been used in connection with services rendered to customers traveling across state boundaries. It is not required that such services be rendered in more than one state to satisfy the use in commerce requirement. See Gastown, 326 F.2d at 782-84, 140 USPQ at 217-18; see also In re Smith Oil Corp., 156 USPQ 62, 63 (TTAB 1967); 1 J. McCarthy, Trademarks and Unfair Competition, § 19:36.A at page 960 (2d ed. 1984). Harmon does not dispute that there has been some use in commerce of Williams’ mark. It contends only that the volume of such activity was less than Williams’ affidavit would indicate. Harmon, however, has produced no evidence to counter the proof of interstate activity by Williams, and its reliance on attorney arguments is similar to the situation in Bookbinder’s where such arguments were given no weight. See Bookbinder’s, 240 F.2d at 368, 112 USPQ at 216; Gastown, 326 F.2d at 784, 140 USPQ at 218.

We therefore reject Harmon’s argument that a certain increased threshold level of interstate activity is required before registration of the mark used by a single-location restaurant may be granted. The Lan-ham Act by its terms extends to all commerce which Congress may regulate. This court does not have the power to narrow or restrict the unambiguous language of the statute. Accordingly, we affirm the decision of the board.

AFFIRMED.

1 . In the proceedings below, Miss Williams' affidavit estimated "that 15% of BOZO’s business each year is with customers from other states. This has been true for many years including prior to October 28, 1982." Supporting the fact that restaurant services were rendered to interstate travellers, the board also had before it the stipulated pages from the visitor's register maintained by BOZO’s restaurant for a period subsequent to the application filing date and a number of affidavits and letters from persons out of state who had patronized BOZO’s at various times prior to the application filing date. The only contrary evidence before the board was that Harmon’s representative visited the restaurant from 11:00 a.m. to 1:00 p.m. on June 29, 1987, and "did not see a single customer who seemed to be from out-of-state or a single out-of-state car in the restaurant’s parking lot.” The board’s holding implicitly recognized that this evidence was not adequate to raise a genuine issue of material fact. See Fed.R.Civ.Proc. 56(c). Harmon argues that Miss Williams’ affidavit is "biased and self serving” and “suspect for many reasons.” The arguments of Harmon’s counsel are insufficient to raise a genuine issue of material fact where there is an absence of probative evidence conflicting with the evidence presented by Williams. Anderson v. Liberty Lobby, Inc., 477 U.S. at 249, 106 S.Ct. at 2511 ("If the [non-movant’s] evidence is merely colorable ... or is not significantly probative ... summary judgment may be granted.”).

10 The Supreme Court, looking at the change as it applied- to infringement, expressly recognized "the broadened commerce provisions of the Lanham Act.” Steele v. Bulova Watch Co., 344 U.S. 280, 287, 73 S.Ct. 252, 256, 97 L.Ed. 319, 95 USPQ 391, 394 (1952).