ARCHER, Circuit Judge.
Copelands' Enterprises, Inc. (Copelands) appeals from the final decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board (TTAB or board) in Cancellation No. 16,128 and Opposition No. 75,373 (May 24, 1990). In these cases, the board granted the motion of CNV, Inc. (CNV) for summary judgment, holding that CNV had not "intend[ed] to deceive or mislead the public or the Office" by its "technically improper" use of a trademark registration notice (a circled "R" symbol), see 15 U.S.C. § 1111 (1988), in connection with the marks VUARNET and VUARNET FRANCE prior to their registration in the United States. We vacate and remand.
From 1979 until April 1986, Copelands' several retail sporting goods stores in the United States sold genuine VUARNET-brand sunglasses manufactured in France by Sporoptic Pouilloux, S.A. (Pouilloux). At first, the glasses were supplied to Copelands by Schwarz, CNV's predecessor, and from May 1981 until late 1982 by CNV. Copelands also purchased glasses from other sources when CNV was unable to satisfy its requirements. CNV advised Copelands in late 1982 that it would no longer supply VUARNET-brand sunglasses to Copelands and thereafter Copelands obtained VUARNET-brand sunglasses exclusively from other sources, one of which Copelands asserts represented itself to be an authorized distributor in the United States of VUARNET-brand sunglasses by Pouilloux.
On February 3, 1983, CNV's attorney, Michael Lindsey, notified Copelands by mail that (1) the VUARNET mark was registered in the United States for, among other things, sunglasses and other protective glasses, (2) CNV, as the exclusive owner of the VUARNET mark in the United States, had "the sole right to use and control the use of" that mark in connection with sunglasses, and (3) Copelands' unauthorized use of the VUARNET mark constituted trademark infringement. The letter further stated: "On behalf of our client, we hereby demand that you ... cease and desist from any further use of the `Vuarnet' mark ... in connection with the sale of sunglasses or other protective glasses."
Subsequently, Copelands determined that the VUARNET mark had not been registered in the United States but was then merely the subject of a pending application filed November 22, 1982, naming Pouilloux as applicant. In a letter dated February 23, 1983, Copelands' counsel notified Lindsey of the inaccuracies in his February 3 letter. Included in the Copelands letter were brochures and other sales materials distributed by CNV. These materials illustrated that CNV was using the circled "R" registration symbol with unregistered marks. CNV accompanied the unregistered VUARNET mark with the registration symbol, and in an unregistered V-shaped symbol incorporating the words VUARNET FRANCE (the VUARNET FRANCE mark), CNV accompanied the VUARNET portion of the mark with the registration symbol. The Copelands letter pointed to the legal basis for saying these practices were improper and could preclude registrations. A demand was made that CNV cease such improper use of the registration symbol. The letter stated:
Although Lindsey sent Copelands' letter to CNV, CNV did not respond to that letter. CNV continued to accompany the unregistered VUARNET and VUARNET FRANCE marks with the registration symbol.
On December 31, 1986, Copelands filed a petition to cancel the registration of the VUARNET mark and an opposition to CNV's application for registration of the VUARNET FRANCE mark.
A. The issue before us in both proceedings is whether the board properly granted CNV's motion for summary judgment on Copelands' claim that CNV had misused the registration symbol. Summary judgment is appropriate when "there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1116, 227 USPQ 577, 581 (Fed.Cir.1985) (in banc). "The movant bears the burden of demonstrating absence of all genuine issues of material fact." SRI, 775 F.2d at 1116, 227 USPQ at 581; Armco, Inc. v. Cyclops Corp., 791 F.2d 147, 149, 229 USPQ 721, 722-23 (Fed.Cir. 1986).
B. The owner of a trademark registered in the United States may display with the mark a notice of that registration, such as the registration symbol consisting of "the letter R enclosed within a circle." 15 U.S.C. § 1111. The improper use of a registration notice in connection with an unregistered mark, if done with intent to deceive the purchasing public or others in the trade into believing that the mark is registered, is a ground for denying the registration of an otherwise registrable mark. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1101, 192 USPQ 24, 27 (CCPA 1976); see also Johnson Controls, Inc. v. Concorde Battery Corp., 228 USPQ 39, 44 (TTAB 1985); Libbey-Owens-Ford Glass Co. v. Plastron, Inc., 80 USPQ 591, 592 (Comm'r Pat. 1949); Weil & Durrse v. United Piece Dye Works, 70 USPQ 36, 37 (Comm'r Pat.1946). In Johnson Controls, the board set forth its position as follows:
228 USPQ at 44. The Trademark Manual of Examination Procedures, § 902.04, as amended by Rev. 6, Examination Guide 26-83 (1983), requires denial of registration "[i]f there is clear evidence of fraud in the use of the registration symbol on specimens in an application." See also Trademark Manual of Examination Procedures, §§ 902.03, 1213. In situations involving only questionable misuse, the examining attorney is required to inform the applicant of the illegality of the use of a registration symbol in connection with a mark for which no federal registration exists. See Examination Guide.
In granting CNV's summary judgment motion, the board relied on the declarations submitted by CNV as an undisputed showing that CNV's improper use of the registration symbol was through mistake and without fraudulent intent. It held that the facts and conclusion set forth in the declarations excused CNV's improper use as a matter of law. Contrary to the board's determination, however, we conclude that there was sufficient other evidence in the record, if reasonable inferences are drawn in favor of the nonmovant, Copelands, to counter the conclusory assertions in the CNV declarations that its misuse of the registration symbol was due to mistake and lack of intent to deceive or mislead. Thus, we are not convinced that CNV was entitled to summary judgment as a matter of law. See Albert v. Kevex Corp., 729 F.2d 757, 762, 221 USPQ 202, 207 (Fed.Cir.), aff'd on reh'g, 741 F.2d 396, 223 USPQ 1 (Fed.Cir.1984); Fed.R.Civ.P. 56(a).
Before the board, CNV submitted declarations of (1) Peter Mentges, CNV's chairman, (2) Joseph Hatchiguian, Pouilloux'
Hatchiguian corroborated that Mentges sought Pouilloux' advice about Copelands' letter and that Pouilloux officials assured Mentges that CNV could properly use the registration symbol to designate foreign registrations. Hatchiguian also asserted that any misuse was unintentional, inadvertent, and was not intended to deceive the American public.
Marcellin explained in his declaration that while the registration symbol has no legal significance under French law, marks registered in France are commonly accompanied by that symbol. Its use, he explained, is "due to mistake, confusion, or ignorance with regard to French and international law."
Finally, Lindsey's declaration stated only that he sent the February 23 letter to Copelands based on his "understanding" that the VUARNET mark was federally registered by Pouilloux and Pouilloux had granted CNV exclusive rights to use the mark in the United States, and that "[s]hortly after receiving [the Copelands] letter, I sent a copy of it to my client, CNV."
As a general rule, the factual question of intent is particularly unsuited to disposition on summary judgment. See KangaROOS U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571, 1575, 228 USPQ 32, 34-35 (Fed.Cir.1985) (citing Pfizer, Inc. v. International Rectifier Corp., 538 F.2d 180, 185, 190 USPQ 273, 277 (8th Cir.1976), cert. denied, 429 U.S. 1040, 97 S.Ct. 738, 50 L.Ed.2d 751 (1977) ("summary judgment is inappropriate where issues of fact, intent [and] good faith ... predominate")); Albert, 729 F.2d at 763, 221 USPQ at 207. ("Intent is a factual matter which is rarely free from dispute.... [C]utting off Albert's right to trial on the issue was improper.") Although purporting to explain its actions, CNV's self-serving declarations are insufficient in the context of summary judgment to overcome other evidence of deceptive use of the registration symbol. Instead, the sequence of events here raises serious questions as to CNV's purpose and intent in using the registration notice, and, more importantly, continuing to use it after being specifically notified of the impropriety of such use.
CNV, through its attorney, initially aggressively misrepresented the status of the VUARNET mark, an action consistent with intent to mislead or deceive. The evidence clearly indicates that CNV was attempting to prevent Copelands from selling its inventory of VUARNET glasses and from obtaining glasses from other sources.
Faced with the specific charges in the Copelands' reply letter and its demand that the Trademark Office be notified of CNV's alleged misuse of the registration notice, the record indicates that CNV made no attempt to seek legal advice on these issues. Instead, CNV merely consulted Pouilloux officials located in France, who were not represented to have any expertise in United States trademark law. Thus, there is no showing of a good faith effort to evaluate Copelands' charges and demands. CNV's conclusory assertion of lack of intent to deceive or mislead becomes suspect in the context of CNV's actions.
Significant questions also exist as to whether or not Lindsey gave CNV any advice after he received Copelands' February 3 letter and became aware that the VUARNET mark was unregistered.
Based on all of the evidence of record, we conclude that the ultimate issue of whether CNV intended to mislead or deceive the public or others in the trade was not properly decided on summary judgment.
The case is remanded to the board for trial on the issue of registration symbol misuse.
VACATED AND REMANDED.