ACTION TEMPORARY SERVICES, INC., Appellant, v. LABOR FORCE, INC., Appellee.
No. 88-1446.
United States Court of Appeals, Federal Circuit.
March 23, 1989.
110 F.2d 1563
No contract shall be made under this subchapter . . . unless the Secretary of Commerce shall determine after proper hearing of all parties that the service already provided by vessels of United States registry is inadequate, and that in the accomplishment of the purposes and policy of this chapter additional vessels should be operated. . . .
Accordingly, under the statute, “all parties” have a right to be heard by the “Secretary of Commerce” or his representative prior to the time that a subsidy contract is made. The statute grants no right to any would-be intervenor to be heard by the Claims Court after the Maritime Administration enters into the contract with a shipping company and the shipper sues to enforce the contract and/or for damages for its breach. As a general matter, standing to intervene in a federal court differs fundamentally from that in an administrative agency. An agency‘s responsibility for implementing statutory purposes typically justifies wider discretion in hearing from “parties” beyond those directly involved than is allowed to the courts by either the Constitution or the common law. New Orleans Public Service, Inc. v. United Gas Pipe Line Co., 690 F.2d 1203, 1214 (5th Cir. 1982), vacated, in part, on other grounds, 694 F.2d 421 (5th Cir. 1982), reh. granted, 719 F.2d 733 (5th Cir. 1983), reinstated, 732 F.2d 452 (5th Cir. 1984), cert. denied, 469 U.S. 1019, 105 S.Ct. 434, 83 L.Ed.2d 360 (1984). Moreover, the Claims Court by statute has a narrowly limited jurisdiction. Thus, a right to sue or intervene in district court does not by itself, establish a right to sue or intervene in the Claims Court. Similarly, unless it expressly so provides, no statute pertaining to the Maritime Administration creates rights to sue or intervene in the Claims Court.
In this case, Aeron did not participate in the original section 605(c) proceeding bearing on AMT‘s subsidy contract. Administration‘s Brief at 20; Appellants’ Reply Brief at 7. But belatedly, in an action over a contract to which Aeron is a total stranger, Aeron seeks the result which might have been achieved by earlier participation in the forum where Aeron‘s participation would have been enforceable by law. It cannot rewrite history in this way.
We do not suggest, however, that because Aeron was unable or chose not to participate in the section 605(c) proceeding it has no statutory standing to challenge the Secretary‘s original determination regarding the subsidy by bringing an action on its own behalf in district court. Aeron‘s standing to challenge the Secretary‘s determination in such an action is not an issue before us.
CONCLUSION
Since we conclude that Aeron has not claimed an interest recognized under Rule 24(a), we need not and do not decide whether the other requirements of Rule 24(a), namely, whether the disposition of the Claims Court action will impair or impede Aeron‘s ability to protect its interest and whether the Maritime Administration adequately represents Aeron‘s interest, are met in this case. On the bases set forth above, the denial of Aeron‘s motion to intervene is
AFFIRMED.
Jonathan E. Jobe, Jr., Hubbard, Thurman, Turner & Tucker, Dallas, Tex., argued for appellee. With him on the brief was Molly Buck Richard.
Before RICH, SMITH and NEWMAN, Circuit Judges.
EDWARD S. SMITH, Circuit Judge.
In this concurrent use proceeding, the United States Patent and Trademark Office (PTO) Trademark Trial and Appeal Board (board) granted summary judgment in favor of Labor Force, Inc. (Labor), holding that, as a matter of law, Action Temporary Services, Inc. (Action), was not a concurrent lawful user of the service mark LABOR FORCE within the meaning of
Issue
The principal issue on appeal is whether a federal registration of a mark in force at the time of an applicant‘s adoption of the same or similar mark, which federal registration subsequently is canceled, prevents, as a matter of law, the applicant from being a “lawful use[r]” of its mark, within the meaning of
Background
Although many of the facts are disputed, the following facts are not contested. On June 13, 1973, Labor filed a service mark application on the mark LABOR FORCE for its service of supplying temporary help to others. On July 1, 1975, Labor‘s mark was granted federal registration No. 1,014,980 on the principal register.
On August 1, 1975, Action adopted the mark LABOR FORCE for its service of supplying temporary help to others. Action‘s adoption of its mark was subsequent in time to Labor‘s receipt of its federal registration.
In 1981, 6 years after Labor obtained its federal registration, that registration was canceled by the PTO on the basis of Labor‘s failure to file an affidavit of continuing use under
On February 2, 1984, Action filed application No. 463,700 to register on the principal register its mark LABOR FORCE for supplying temporary help to others. Action claimed first use as of August 1975. The PTO suspended Action‘s application pending disposition of Labor‘s earlier filed ‘781 application.
Upon publication of Labor‘s mark in the PTO‘s Official Gazette, Action timely filed an opposition against registration of that mark. Subsequently, Action amended its application to one for concurrent use, naming Labor‘s use of the mark in Texas and Tennessee as an exception to Action‘s exclusive right to use the mark. The PTO dismissed Action‘s opposition and a concurrent use proceeding was instituted.
The board granted summary judgment to Labor, holding that Action was not a lawful concurrent user. In reaching its disposition, the board held that, as a matter of law, Action was not a concurrent lawful user of the mark because its adoption on August 1, 1975, of the mark LABOR FORCE was not in good faith. The board concluded that “having been put on notice of Labor‘s use in 1975, Action cannot claim that its continued use in 1981 was without knowledge of Labor‘s use.”
For the reasons set forth below, we hold that the board erred, as a matter of law, by entering summary judgment in this case.
Analysis
In reviewing whether the board correctly entered summary judgment in favor of Labor, we apply the same legal standard as that applied by the board in determining whether summary judgment was appropriate.3 Summary judgment may be granted only when the pleadings and evidence of record “show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.”4
At the threshold of concurrent use registration, as provided for by
Here, subsequent to the cancellation of Labor‘s federal registration in 1981, and prior to Labor‘s filing of its application on July 21, 1982, there were no applications pending, or federal registrations existing, on the service mark LABOR FORCE. During that period, both Action and Labor allege use of their respective marks, the former having alleged use from August 1975 and the latter having alleged use from May 1970. Action‘s use between 1981 and July 21, 1982, was prior to the filing date of Labor‘s application. In view of these allegations, the board, however, concluded that Action adopted its mark on August 1, 1975, with constructive notice of Labor‘s use of the same mark and that the existence at that time of constructive notice of Labor‘s
It is well established that, pursuant to
The board‘s reasoning, that “[w]hat had been an unlawful adoption when it occurred was still unlawful,” i.e., that because Action‘s adoption of its mark was “unlawful,” Action cannot claim that its use of the mark after Labor‘s registration was canceled may be lawful, is flawed. Whereas actual notice, once obtained by a party of another party‘s use of a mark, exists independent of the event giving rise to that notice, constructive notice, pursuant to
On remand, the board shall determine the relative rights of the parties based on our holding that the constructive notice effects of Labor‘s federal registration prevented Action from being a lawful user
only during the existence of that registration. The board shall consider the effects of actual notice, which must “always be the product of the particular fact pattern involved in each case,”10 bearing in mind the holding of one of our predecessor courts that “mere knowledge of the existence of the prior user should not, by itself, constitute bad faith.”11
Conclusion
For the reasons discussed, the board‘s grant of summary judgment in favor of Labor on grounds that Action could not be a lawful concurrent user is reversed. Because the board‘s decision rested exclusively on its erroneous legal conclusion that the constructive notice effects of Labor‘s canceled federal registration precluded Action from being a lawful user of its mark subsequent to that cancellation and did not reach any other issues underlying concurrent use, we remand this case to the board for further proceedings.
REVERSED and REMANDED.
RICH, Circuit Judge, dissenting.
I would affirm the decision of the board granting summary judgment against appellant Action Temporary Services, Inc. (Action). That was a holding that Action is not entitled to a concurrent registration under the statute, this being a concurrent use proceeding. A concurrent registration is the only kind of registration Action could possibly get, Labor Force, Inc. (Labor), the appellee, being the prior and continuing user and the holder of a registration of the mark at the time Action adopted and began using it. This case would not be here but for the fact Labor allowed its registration
The board correctly pointed out that, at the time Action adopted the mark, Labor‘s registration of the same mark for the same services was in force and, under
The majority makes clear (page 1566) that had Action‘s knowledge been “actual” instead of “constructive,” it would have reached the opposite result. The only reason given—if it can be called a reason—is that, unlike an actual notice, which exists forever independently of the event giving rise to it—a constructive notice based on a registration lasts only as long as the registration. I cannot accept that as justification for ignoring or wiping out altogether the effect of the initial adoption under the legal impediment of constructive notice and continued “unlawful” use thereafter for nearly six years. The majority is giving retroactive effect to the termination of the registration and giving no heed to Action‘s failure to meet the conditions of
Since this is a reversal of only a grant of summary judgment, which undoes the board‘s expeditious disposition of the concurrent use proceeding, wherefore the board and counsel must wrestle with it further on remand, it will now be necessary for the board to face the other
Notes
“Each certificate of registration shall remain in force for twenty years: Provided, That the registration of any mark under the provisions of this chapter shall be canceled by the Commissioner at the end of six years following its date, unless within one year next preceding the expiration of such six years the registrant shall file in the Patent and Trademark Office an affidavit showing that said mark is in use in commerce or showing that its nonuse is due to special circumstances * * *”
“* * * when the Commissioner determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks * * *, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (i) the earliest of the filing dates of the applications pending or of any registration issued under this chapter * * *”