case: 15-1292 document: 1-2 page: 7 filed: 01/28/2015 (8 ... · 28.01.2015 · case: 15-1292...

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UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 General Contact Number: 571-272-8500

Mailed: July 22, 2014

Cancellation No. 92056995

Jack Rajca

v.

New Yorker S.H.K. Jeans GmbH & Co.KG

Before Kuhlke, Cataldo and Masiello, Administrative Trademark Judges

By the Board:

This matter now comes up on petitioner's motion (filed November 12,

2013) for summary judgment and respondent's motion (filed February 26,

2014) to amend its answer to add counterclaims to cancel petitioner's pleaded

registration. The motions are fully briefed.

Background

On March 28, 2013, petitioner served and filed a petition to cancel

Registration No. 42996981 for FISHBONE in standard characters on grounds

Registered on March 12, 2013, based on a request for extension of protection filed November 17, 2010, under Section 66(a) for "products for beauty and body care, namely, skin soap, body soap, shower gels, body lotions; perfumery, namely, perfumes, eau de perfume, eau de toilette, deodorants for personal use; cosmetics, namely, eye-shadow, foundation make-up, make-up creams, make-up powders, eyemakeup, nail polish remover; lipsticks; make-up" in International Class 3; "eye glasses and their parts, particularly sunglasses, sports glasses, ski glasses, frames

Case: 15-1292 Document: 1-2 Page: 7 Filed: 01/28/2015 (8 of 42)


of fraud and likelihood of confusion based on Registration No. 20894062 and

common law use of FISHBONE with and without a design. Petitioner

subsequently amended his pleading to delete the fraud claim and respondent

served and filed its answer on June 28, 2013. On November 12, 2013,

petitioner moved for summary judgment on his likelihood of confusion claim

and also served on respondent his document production. On November 22,

2013, in response to the motion for summary judgment and notwithstanding

the earlier production, respondent moved under Fed. R. Civ. P. 56(d) seeking

discovery to respond to petitioner's motion for summary judgment. That same

day, petitioner served respondent with supplemental discovery responses.

The Board suspended proceedings on January 13, 2014, pending

disposition of the two motions. In view of the discovery already produced by

petitioner, the Board denied respondent's motion for discovery and resumed

briefing on the motion for summary judgment on February 15, 2014. On

for eye glasses, cases for eyes glasses" in International Class 9; "costume jewellery; horological and chronometric instruments; watch straps" in International Class 14; "bags, namely, travelling bags, backpacks, shoulder bags, handbags, purses, allpurpose carrying bags; sports bags, school bags" in International Class 18; and "clothing, namely, long trousers, jeans, pants, slacks, short trousers, shorts, boxer shorts, 3/4 length trousers, slacks with strap under foot, culottes, blouses, dresses, sweaters, shirts, short-sleeved shirts, T-shirts, long-sleeved shirts, socks; footwear, headgear, namely, hats, caps, head kerchiefs; outerwear for gentlemen and ladies, namely, waistcoats, jackets, denim jackets, coats, tunics, blazers, lounging jackets, bomber jackets, overalls, dungarees; underwear; undergarments; belts, scarves, gloves, bathing fashion for gentlemen and ladies, namely, beachwear, swim wear, bathing suits, swimsuits and bathing trunks; leisure and city shoes for gentlemen and ladies" in International Class 25.

2 For FISHBONE and design for "T-shirts with silk-screen designs." The underlying application was filed on November 25, 1996, under Section l(a) and was registered on August 19, 1997.

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February 26, 2014, respondent moved for leave to amend its answer to add a

counterclaim for cancellation of petitioner's pleaded registration on grounds

of non-use and abandonment.

Respondent's Motion for Leave to Amend Answer

We turn first to respondent's motion for leave to amend its answer.

Trademark Rule 2.115 and Fed. R. Civ. P. 15(a) encourage the Board to look

favorably on motions to amend, stating that "[t]he court should freely give leave

when justice so requires." Nevertheless, if allowance of the amendment would

cause undue prejudice or be futile, amendment will be denied. See Foman v.

Davis, 371 U.S. 178, 182 (1962); and W.R. Grace & Co. v. Arizona Feeds, 195

USPQ 670, 671 (TTAB 1977). In this case, the counterclaims to cancel petitioner's

pleaded registration are compulsory counterclaims. See Trademark Rule

2.114(b)(2)(i). To be timely, a compulsory counterclaim must be brought as part of

defendant's answer or promptly after the grounds therefor are learned. Thus, in

the present case, we must determine whether respondent knew of the grounds at

the time it filed its answer and, if not, whether respondent filed its counterclaims

promptly upon learning of those grounds. Turbo Sportswear Inc. v. Marmot

Mountain Ltd., 77 USPQ2d 1152, 1154 (TTAB 2005).

As a preliminary matter, petitioner asserts that the motion should not

be considered pursuant to the Board's suspension order as it is not germane

to the motion for summary judgment. We disagree. Petitioner relies, in part,

on his registration in support of his motion for summary judgment. As

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respondent seeks to cancel petitioner's pleaded registration by way of a

counterclaim, respondent's motion for leave to amend its answer is germane

to the motion for summary judgment and, therefore, must be considered prior

to any determination of the motion for summary judgment.

Turning to the merits of the motion, respondent asserts that its

counterclaims "are based on facts learned by [respondent] during initial

discovery and investigation in this proceeding [and] were not known to

[respondent] when it filed its answer and so [respondent] could not bring

these counterclaims at that time." Motion for Leave to Amend Answer, pp. 1-

2. This assertion is not well taken. All of the invoices and pictures oft-shirts

upon which respondent relies to support its assertion that these are new facts

are the same types of documents, i.e., invoices and pictures oft-shirts, that

were submitted as specimens of use in the underlying application of

petitioner's registration and would have formed part of the record in the prior

cancellation proceeding respondent brought against petitioner's pleaded

registration (Cancellation No. 92031433 filed November 14, 2000). In

addition, these types of documents were also provided in this proceeding by

petitioner as part of his petition for cancellation filed on March 28, 2013, as

well as by respondent as part of its motion for Rule 56( d) discovery filed on

November 22, 2013.3

3 As an exhibit to that motion, respondent attached petitioner's specimens of use from the application file wrapper of petitioner's pleaded registration.

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CancellationNo.92056995

As to the claim that petitioner was not using his mark prior to filing

his application under Section l(a), respondent was already well aware and in

possession of the documents that would be relevant to this claim as early as

2000, the year respondent petitioned to cancel petitioner's pleaded

registration. As to the abandonment claim, these documents (earlier invoices

and pictures of the same t-shirts) likewise were available and known to

respondent as of the earlier proceeding and as of the filing of this proceeding.

The "new" documents referenced by respondent were obtained by respondent

at least as early as November 12, 2013, and are just more of the same, wholly

consistent with the materials and information already known to respondent.

In view thereof, we find these counterclaims to be untimely, see Trademark

Rule 2.114(b)(2)(i) ("If grounds for a counterclaim are known to respondent

when the answer to the petition is filed, the counterclaim shall be pleaded

with or as part of the answer.") (emphasis added), and hereby DENY

respondent's motion for leave to amend its pleading.

Petitioner's Motion for Summary Judgment

A motion for summary judgment is a pretrial device intended to save

the time and expense of a full trial when the moving party is able to

demonstrate, prior to trial, that there is no genuine dispute of material fact,

and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P.

56(a); Celotex Corp. v. Catrett, 4 77 U.S. 317 (1986); Opryland USA Inc. v.

Great American Music Show Inc., 970 F.2d 84 7, 23 USPQ2d 14 71 (Fed. Cir.

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1992); and Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4

USPQ2d 1793 (Fed. Cir. 1987). If the moving party is able to meet this initial

burden, the burden shifts to the nonmoving party to demonstrate the

existence of specific genuinely disputed facts that must be resolved at trial.

The nonmoving party may not rest on mere allegations or assertions but

must designate specific portions of the record or produce additional evidence

showing the existence of a genuine dispute of material fact for trial. Should

the nonmoving party fail to raise a genuine dispute of material fact as to an

essential element of the moving party's case, judgment as a matter of law

may be entered in the moving party's favor.

A factual dispute is genuine if, on the evidence of record, a reasonable

fact finder could resolve the matter in favor of the non-moving party. See

Olde Tyme Foods, Inc. v. Roundy's, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544

(Fed. Cir. 1992). The evidence must be viewed in a light most favorable to the

non-moving party, and all reasonable inferences are to be drawn in the non

movant's favor. Lloyd's Food Products, Inc. v. Eli's, Inc., 987 F.2d 766, 25

USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, supra. The Board does

not resolve disputes of material fact but rather only ascertains whether

disputes of material fact exist. See Lloyd's Food Products, 987 F.2d at 766, 25

USPQ2d at 2029; Olde Tyme Foods, 961 F.2d at 200, 22 USPQ2d at 1542.

Here, petitioner seeks summary judgment on his claim of priority and

likelihood of confusion as to all five classes of goods in the involved

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registration based on his pleaded registration. In order for petitioner to

prevail on his motion, he must establish that there is no genuine dispute that

he has standing to maintain the proceeding, that he has prior proprietary

rights in his pleaded mark, and that contemporaneous use of the parties'

respective marks on their respective goods and/or services would be likely to

cause confusion or mistake or to deceive consumers. See Hornblower &

Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB

2001).

Turning first to the question of standing, petitioner submitted with his

amended petition a current printout of information from the electronic

database records of the USPTO showing the status and title of petitioner's

pleaded registration pursuant to Trademark Rule 2.122(d)(l). This

registration is sufficient to establish petitioner's direct commercial interest

and, therefore, his standing to petition for cancellation of respondent's mark.

See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844

(Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024,

213 USPQ 185, 189 (CCPA 1982).

As to priority, because we have denied respondent's motion for leave to

amend its answer to add a counterclaim against petitioner's pleaded

registration, petitioner may rely on the November 25, 1996 filing date of his

pleaded registration's underlying application as his constructive use date to

establish his priority over respondent. Brewski Beer Co. v. Brewski Brothers

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Inc., 47 USPQ2d 1281, 1284 (TTAB 1998). We note that respondent has

admitted non-use of its mark in commerce in the United States. See

Registrant's Response to Petitioner's First Set of Interrogatories, Response No.

3 and Answer to First Amended Petition, if 22. Additionally, the request for

extension of protection in the United States underlying respondent's

registration was made in a subsequent designation rather than as part of the

international application and respondent failed to make a claim of priority

under 15 U.S.C. § 1141g. Accordingly, the earliest date upon which

respondent may rely is the date of recordal by the International Bureau of

the subsequent designation requesting an extension of protection to the

United States, i.e., November 17, 2010, the "filing date" of the underlying

§ 66(a) application. See 15 U.S.C. § 1141f(b) and Trademark Rule 7.26. In

view thereof, there is no genuine dispute as to petitioner's priority.

Turning to the likelihood of confusion factors, there is no genume

dispute as to the similarity of the parties' marks. 4 The literal elements of the

marks are identical and the design element of a fish skeleton in petitioner's

mark simply reinforces the connotation and commercial impression of the

term FISHBONE.

As to the relatedness of the goods, since the nature and scope of the

parties' goods must be determined on the basis of the goods recited in the

4 As petitioner has relied only on his pleaded registration to support his claim of likelihood of confusion in his motion for summary judgment, our decision herein is based solely on the pleaded registration.

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parties' respective registrations and smce there is no limitation in the

identifications as to their nature, type, channels of trade, or class of

purchasers, it is presumed that the registrations encompass all goods of the

type described, that they move in all normal channels of trade for such goods,

and that they are available to all classes of purchasers of such goods. See,

e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367,

1373, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013). Because the t-shirts

identified in respondent's registration encompass the more narrowly

described t-shirts in petitioner's pleaded registration, there is no genuine

dispute that these goods are related. The record contains no evidence or

arguments regarding a genuine dispute of material fact as to any other

factors bearing on the issue of likelihood of confusion, as set forth in In re E.

I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA

1973). Where priority and likelihood of confusion are established as to a

particular good in a class, then the refusal must be sustained as to all of the

goods in that class. See The B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d

1500, 1507 (TTAB 2007); Baseball America Inc. v. Powerplay Sports Ltd., 71

USPQ2d 1844, 184 7 n.9 (TTAB 2004). Therefore, we find that petitioner is

entitled as a matter of law to a judgment in his favor as to his claim of

priority and likelihood of confusion with respect to respondent's goods in

International Class 25. Accordingly, petitioner's motion for summary

judgment is hereby GRANTED as to respondent's goods in Class 25.

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On the other hand, as to the respondent's remaining goods in Classes

3, 9, 14 and 18, petitioner has, at a minimum, failed to demonstrate the

absence of a genuine dispute as to the relatedness of the parties' goods. As

such, petitioner's motion for summary judgment is hereby DENIED as to

respondent's goods in Classes 3, 9, 14 and 18.5

To be clear, summary judgment is granted in favor of petitioner only as

to the Class 25 goods in respondent's registration and this proceeding will go

forward on the remaining goods in Classes 3, 9, 14 and 18. As this decision is

interlocutory in nature, appeal may be taken within two months after the

entry of a final decision in this matter. See Copelands' Enterprises, Inc. v.

CNV, Inc., 887 F.2d 1065, 12 USPQ2d 1562 (Fed. Cir. 1989).

Proceedings herein are RESUMED and dates are RESET as follows:

Expert Disclosures Due Discovery Closes Plaintiff's Pretrial Disclosures Due Plaintiff's 30-day Trial Period Ends Defendant's Pretrial Disclosures Due Defendant's 30-day Trial Period Ends Plaintiff's Rebuttal Disclosures Due Plaintiff's 15-day Rebuttal Period Ends

9/22/2014 10/22/2014

12/6/2014 1/20/2015

2/4/2015 3/2112015

4/5/2015 5/5/2015

IN EACH INSTANCE, a copy of the transcript of testimony, together

with copies of documentary exhibits, must be served on the adverse party

5 The parties are reminded that evidence submitted in support of or in opposition to a motion for summary judgment is of record only for consideration of that motion. Any such evidence to be considered at final hearing must be properly introduced during the appropriate trial period. See, for example, Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).

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within thirty days after completion of taking of testimony. Trademark Rule

2.125.

Briefs shall be filed in accordance with Trademark Rule 2.128(a) and

(b). An oral hearing will be set only upon request filed as provided by

Trademark Rule 2.129.

***

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case: 15-1292 document: 1-2 page: 7 filed: 01/28/2015 (8 ... · 28.01.2015 · case: 15-1292...

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