In the Matter of the Complaints Against: SCOTT DAVID WILCOX d/b/a TELCO DIRECTORIES, INC., 1601 East Main Street at Plainfield, IN 46168-1811; and TELCO DIRECTORIES, INC., a corporation, and VERNON R. FRAZIER and SCOTT WILCOX, individually and as officers or employees of said corporation, 170 Broadway, Suite 201 at New York, NY 10038-4154 P.S. Docket Nos. 18/147 and 22/111 08/31/89 Cohen, James A., Judicial Officer APPEARANCE FOR COMPLAINANT: Geoffrey A. Drucker, Esq., Consumer Protection Division, Law Department, United States Postal Service, Washington, DC 20260-1144APPEARANCE FOR RESPONDENTS: Frank J. Shannon, III, Esq., Henritze & Shannon, Candler Building - Suite 422, 127 Peachtree Street, N.E., Atlanta, GA 30303-1810
Respondents have filed a Motion for Modification of Initial Decisions, Postal Service Decisions, Cease and Desist Orders and False Representation Orders issued in these proceedings. Respondents request that the Decisions and Orders issued in these proceedings be modified and that a new Order be issued permitting them to use in solicitations for directory listings a form of the name Telco, either standing alone or in conjunction with the walking fingers logo and/or the trademark "Advertise for Action," without the use of a disclaimer. Alternatively, Respondents request a hearing on the Motion. Complainant opposes the Motion. All of Respondents' arguments have been considered. For the reasons set forth below, Respondents' Motion is denied.
I. Modification of Initial Decisions and Postal Service Decisions
Respondents seek modification of the Initial Decisions and Postal Service Decisions insofar as they relate to the use of the name Telco, the trademark "Advertise for Action" and the walking fingers logo. Complainant opposes Respondents' Motion on the grounds that it is untimely and vague.
The Rules of Practice do not provide for modification or revocation of Initial Decisions since they are appealable to the Judicial Officer and may on appeal be modified or reversed. Respondents appealed the two Initial Decisions issued in these proceedings and these appeals were denied in two final agency decisions. See Telco Directories, Inc., P.S. Docket No. 22/111 (P.S.D. Feb. 25, 1987); Scott David Wilcox, P.S. Docket No. 18/147 (P.S.D. Oct. 16, 1985).
While there is no specific procedure for modification of Postal Service Decisions, they may be reconsidered in accordance with 39 C.F.R. § 952.27 by the filing of a motion for reconsideration within ten days after receipt of a copy of the decision, "or within such longer period as the Judicial Officer may fix." Respondents' present Motion was not filed within the reconsideration period provided in the Rules of Practice and no extension of that period was sought or granted. Moreover, Respondents have not shown that the Postal Service Decisions issued in these proceedings contain errors of fact or law which would serve as a proper basis for reconsideration. Accordingly, to the extent Respondents' present Motion could be considered to be a motion for reconsideration, it is denied.
II. Modification of Cease and Desist Orders and False
Representation Orders
Paragraphs (a)(3) and (4) of Cease and Desist Order Nos. 550 and 1284 issued with the Postal Service Decisions in these proceedings prohibit Respondents from representing that they are affiliated with the local telephone company or with publishers of local yellow page directories. Paragraph (d) of Cease and Desist Order No. 1284 requires Respondents to include in any solicitation for directory listings seeking remittances through the mail, a conspicuously-placed statement to the effect that Respondents are not affiliated with any telephone company. Respondents seek modification of these Orders to permit them to use solicitations which contain, either alone or in combination, the trade name Telco, the walking fingers logo and the trademark "Advertise for Action" without the required disclaimer. Complainant opposes Respondents' request for modification of the Cease and Desist Orders on the grounds that Respondents are seeking an advisory opinion which does not constitute the type of controversy appropriate for consideration by the Judicial Officer.
Respondents argue that their use of the trade name Telco either alone or in combination with the walking fingers logo and/or their trademark "Advertise for Action" does not falsely represent an affiliation with the local telephone company or the publishers of local yellow page directories. Respondents contend that the walking fingers logo is a generic symbol which they have been authorized to use by Order of a United States District Court Judge. Since Respondents are allegedly entitled to use the walking fingers logo, they argue that they are not making the prohibited false representations.
As stated in a prior Postal Service Decision in this proceeding, Respondents' argument regarding the walking fingers logo misses the point. See Telco Directories, Inc., P.S. Docket No. 22/111 (Feb. 25, 1987). The issue in a proceeding under 39 U.S.C. § 3005 is whether materially false representations are being made, not whether Respondents have a right to use any particular logo. See Scott David Wilcox, P.S. Docket No. 18/147 (P.S.D. Apr. 20, 1988); Telco Directories, Inc., P.S. Docket No. 22/111 (P.S.D. Feb. 25, 1987). To determine whether a solicitation makes a false representation it is necessary to consider the solicitation as a whole and in the light of its probable impact on a person of ordinary mind. See Donaldson v. Read Magazine, Inc., 333 U.S. 178 (1948); Associated Telephone Directory Publishers, Inc., P.S. Docket No. 13/191 (P.S.D. Jan. 25, 1984). Since Respondents have not submitted the text and format of any proposed solicitation, it is impossible to determine whether solicitations containing the walking fingers logo either alone or together with the trade name Telco, and the trademark "Advertise for Action" make the false representations proscribed by the Cease and Desist Orders.
Respondents next contend that because they are the only ones authorized to use the registered trademark "Advertise for Action," an ordinary reader would not construe a solicitation with this trademark as making the representations proscribed by the Cease and Desist Orders. As previously stated, since there is no actual published solicitation for review, it is impossible to determine what effect the use of this trademark in a solicitation would have on the ordinary reader. Furthermore, the inclusion of a registered trademark in a solicitation does not preclude a finding of a false representation. See Jacob Siegel Co. v. FTC, 327 U.S. 608 (1946).
Respondents also contend that because the name Telco is easily distinguishable from the names of other enterprises, its use could not reasonably be considered to represent an affiliation with local telephone companies or publishers of local yellow page directories. Respondents further argue that the name Telco cannot be interpreted as an acronym for the telephone company because (1) Telco is not listed in the dictionary as an abbreviation for telephone company; (2) the testimony by Complainant's expert witness on this issue is contradictory; 1/ and (3) the Postal Service Decision on Petition for Supplemental Orders did not address the question.
The use of the name Telco in the solicitations previously considered in these proceedings contributed to the false impression that Respondents were affiliated with the local telephone company and publishers of local yellow page directories. Scott David Wilcox, P.S. Docket No. 18/147 (P.S.D. April 20, 1988); Telco Directories, Inc., P.S. Docket No. 22/112 (P.S.D. Feb. 25, 1987). Whether revised solicitations using the name Telco would make these same false representations is pure conjecture. As previously stated, it is necessary to examine a solicitation in its entirety in order to determine whether it contains a false representation.
Respondents next argue that the Orders should be modified because there have been no complaints regarding the use of the name Telco. It is well established that the absence of complaints is not determinative of whether Respondents are making false representations in violation of 39 U.S.C. § 3005. Farley v. Heininger, 105 F.2d 79 (D.C. Cir.), cert. denied, 308 U.S. 587 (1939); Dermacure Co., P.S. Docket No. 17/31 (P.S.D. Dec. 31, 1984); Oriental Nurseries, Inc., P.S. Docket No. 9/116 (P.S.D. May 19, 1981).
Respondents object to the requirement that they include in all future solicitations a disclaimer to the effect that they are not affiliated with a telephone company (paragraph (d) of Cease and Desist Order No. 1284). Respondents argue that the disclaimer is unnecessary because the name Telco either alone or together with the walking fingers logo and their personal trademark do not represent such an affiliation.
The Complaint sought and the Initial Decision recommended the issuance of a Cease and Desist Order with a disclaimer. Respondents did not take exception to this recommendation on appeal. The disclaimer requirement is appropriate since (1) it is reasonably related to the unlawful activity and (2) Respondents are likely to commit additional violations in view of their past conduct. Thus, the Order will not be modified to delete the disclaimer requirement.
Respondents have also requested that the False Representation Orders issued in these proceedings be modified to permit Respondents to receive remittances in connection with solicitations containing the trade name Telco, the walking fingers logo and the trademark "Advertise for Action." Respondents' request is based on their assertion that the use of these terms in a solicitation does not constitute a false representation. Complainant opposes Respondents' request on the grounds that Respondents have failed to show a justifiable basis for modifying the Orders.
In order to prevail on its Motion for Modification of False Representation Orders, Respondents must show that they are currently engaged in the distribution of solicitations which omit the representations previously found to be false, that the remittances sent in response to these revised solicitations are not influenced by the earlier false representations and that the reasons for the issuance of the False Representation Orders no longer exist. See Scott David Wilcox, P.S. Docket No. 23/70 (P.S.D. Aug. 24, 1988); Associated Telephone Directory Publishers, Inc., P.S. Docket No. 13/191 (P.S.D. Jan. 3, 1985); New Generation, P.S. Docket No. 11/152 (P.S.D. Sept. 25, 1984); Cosvetic Laboratories, P.S. Docket No. 8/160 (P.S.D. Dec. 22, 1982); Raymond Milo, P.S. Docket No. 12/168 (P.S.D. July 16, 1982); Dalen Labs, P.S. Docket No. 12/88 (P.S.D. Nov. 24, 1981); M.K.S. Enterprises, Inc., P.S. Docket No. 5/121 (P.S.D. June 21, 1977). Respondents have not made such a showing in these proceedings. Accordingly, Respondents' Motion for Modification of False Representation Orders is denied.
Respondents' Motion for Modification of Orders is further denied because it constitutes a request for an advisory opinion. See The National Gold Mint, P.S. Docket No. 22/165 (P.S.D. Sept. 30, 1987); Mid-Am Marketing, Inc., P.S. Docket No. 24/12 (P.S.D. May 7, 1987); George M. Ernst, Jr., P.S. Docket No. 13/88 (P.S.D. May 1, 1984), aff'd, Many Interested Savers, Inc. v. United States Postal Service, No. 84-304 (E.D. Ky. Feb. 20, 1986); Paul Harvey, P.S. Docket No. 8/10 (P.S.D. Aug. 29, 1980). It is well established that the Judicial Officer does not issue advisory opinions or give approval to proposed advertisements which have not been published or disseminated. Id.
III. Request for an Evidentiary Hearing
Respondents request an evidentiary hearing in the event their Motion is not granted. Respondents argue that a hearing is warranted because they have shown that the use of the name Telco and their trademark "Advertise for Action" with the walking fingers logo do not falsely represent an affiliation with the local telephone company or the publishers of local yellow page directories. Complainant opposes Respondents' request for a hearing contending there are no genuine issues of material fact in dispute.
Since the Rules of Practice do not provide for a hearing on a motion to modify, the decision to grant a hearing is discretionary. See 39 C.F.R. § 952.29; Many Interested Savers, Inc. v. United States Postal Service, No. 84-304 (E.D. Ky. Feb. 20, 1986). A hearing will be granted upon a showing that there are genuine issues of material fact in dispute on which evidence should be presented. See United States v. Cheramie Bo-Truc #5, Inc., 538 F.2d 696 (5th Cir. 1976); Kirby v. Shaw, 358 F.2d 446 (9th Cir. 1966); Sammy Y. Ip, P.S. Docket No. 20/65 (P.S.D. Sept. 0, 1987); United States Testing Authority, P.S. Docket Nos. 14/77 & 14/114 (P.S.D. Oct. 2, 1985). Where, as here, Respondents have been given a full opportunity to present evidence in support of their position, 2/ they bear a heavy burden of establishing the existence of a genuine issue of material fact justifying a further hearing. See Scott David Wilcox, P.S. Docket No. 18/147 (P.S.D. Oct. 27, 1988). Respondents have not satisfied this burden in these proceedings. Accordingly, no additional hearing will be held.
All of Respondents' contentions have been considered and none have been found to have merit. Accordingly, Respondents' Motion for Modification of Initial Decisions, Postal Service Decisions, Cease and Desist Orders and False Representation Orders, as well as Respondents' request for a hearing, are denied.
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