Download PDFTrademark Trial and Appeal BoardJun 28, 2011No. 91194730 (T.T.A.B. Jun. 28, 2011) Copy Citation 1 jk Mailed: June 28, 2011 Opposition No. 91194730 Sybarite Lifestyle Management, LLC v. Yvonne M. Matherson and Shira-Michal Dinal Before Quinn, Bergsman and Wolfson, Administrative Trademark Judges. By the Board: Yvonne M. Matherson and Shira-Michal Dinal (“applicants”) applied to register the mark SYBARITE (standard characters) for personal concierge services for others comprising making requested personal arrangements and reservations, running errands and providing customer specific information to meet individual needs, all rendered in business establishments, office buildings, hotels, residential complexes and homes in International Class 45.1 Sybarite Lifestyle Management, LLC (“opposer”) opposes registration on the grounds of priority and likelihood of confusion under Trademark Act Section 2(d), asserting common 1 Application Serial No. 77900640, filed December 23, 2009, based on use of the mark in interstate commerce pursuant to Trademark Act Section 1(a), asserting a date of first use anywhere of July 1, 2009 and a date of first use in commerce of September 6, 2009. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 2 law use of the mark SYBARITE and ownership of a pending application for the mark (standard characters) for: consulting services in the field of hospitality in International Class 43, and personal concierge services for others comprising making requested personal arrangements and reservations, running errands and providing customer specific information to meet individual needs, all rendered in business establishments, office buildings, hotels, residential complexes and homes in International Class 45.2 While the notice of opposition does not comprise averments in numbered paragraphs, each setting forth a single set of circumstances, see TBMP § 309.03(a)(2) (3d ed. 2011), the record reflects that applicants denied the salient allegations in the pleading. Opposer filed its application asserting a date of first use of the mark in commerce of May 28, 2003. Opposer amended the date of first use in commerce in said application to October 8, 2006, citing an “inadvertent error,” and the examining attorney accepted the amendment on February 9, 2011. Thereafter, opposer moved for 1) leave to amend its notice of opposition under Fed. R. Civ. P. 15(a)(2) so as to reflect the amended date of first use; and 2) summary judgment under Fed. 2 Application Serial No. 77949360, filed March 3, 2010, based on use of the mark in interstate commerce pursuant to Trademark Act Section 1(a), and asserting, for both classes, a date of first use anywhere of May 28, 2003, and a date of first use in commerce of October 8, 2006. 3 R. Civ. P. 56(a) on its Section 2(d) claim. Accordingly, this proceeding is before the Board for consideration of opposer’s two motions. The motions have been fully briefed. Opposer’s motion to amend notice of opposition Amendments to pleadings in inter partes proceedings before the Board are governed by Fed. R. Civ. P. 15, made applicable to Board proceedings by operation of Trademark Rule 2.116(a). See Trademark Rule 2.107. After a responsive pleading has been filed, a party may amend its pleading only by written consent of every adverse party, or by leave of the Board. Leave shall be freely given when justice so requires. See Fed. R. Civ P. 15(a)(2). The Board liberally grants leave to amend pleadings at any stage of a proceeding when justice so requires, unless entry of the proposed amendment would violate settled law or be prejudicial to the rights of the adverse party or parties. See TBMP § 507.01 (3d ed. 2011). See also Hurley International LLC v. Volta, 82 USPQ2d 1339, 1341 (TTAB 2007). The crux of opposer’s argument is that “after reviewing documents collected and produced during discovery, (opposer) became aware that, for ease of proof, (opposer’s) trademark application and the Opposition should be amended,” and that “October 8, 2006 is the date that (opposer) launched its website, and although (opposer) used the Mark in commerce since 4 well before October 8, 2006, issues relating to proof dictate amending the documents” (opposer’s reply brief, p. 5). For their part, applicants argue that discovery is closed and they “will not have had the opportunity to prepare a defense to the amendment” (applicants’ brief, unnumbered p. 7), that opposer is acting in bad faith because its original alleged date of first use could be deemed fraudulent based on information applicants have from conducting discovery, and that applicants will be prejudiced because the amendment is “a change of tactics” (applicants’ unnumbered brief p. 2). Entry of the proposed amendment does not violate settled law; rather, it serves the purpose of rendering opposer’s pleading consistent with and in conformity with the dates-of- use allegations in its application. The amendment is not prejudicial to applicants and does not affect their ability to defend the summary judgment motion. Moreover, any assertions that opposer acted in bad faith or committed fraud are premature inasmuch as opposer’s application is in examination and has not been published for opposition under Trademark Act Section 2.80. In view thereof, opposer’s motion to amend is hereby granted. The amended notice of opposition, filed February 15, 2011, is opposer’s operative pleading in this proceeding. Opposer’s motion for summary judgment 5 Summary judgment is appropriate where the movant shows that there is no genuine dispute as to any material fact and that it is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). A party asserting that a fact cannot be or is genuinely disputed must support its assertion by either 1) citing to particular parts of materials in the record, or 2) showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact. Fed. R. Civ. P. 56(c). As the movant, opposer carries the burden of proof. See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). In deciding the motion, the function of the Board is not to try issues of fact, but to determine if there are any genuine disputes of material fact to be tried. See TBMP § 528.01 (3d ed. 2011), and cases cited therein. To prevail on summary judgment on its claim, opposer must establish that there is no genuine dispute that: 1) it has standing to maintain this proceeding; 2) it has priority of use; and 3) contemporaneous use of the parties’ respective marks on their respective services would be likely to cause confusion, mistake or to deceive consumers. See Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB 2001). 6 Standing To prevail on summary judgment, opposer must prove its standing. To establish standing, an opposer must show that it has a “real interest” in the outcome of the proceeding; that is, it must show a direct and personal stake in the outcome of the opposition. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999); Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987). Opposer does not own a subsisting registration upon which it can rely for purposes of demonstrating priority under Section 2(d). Cf. King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). However, the parties’ marks are identical and the services in International Class 45 are identical. Moreover, through the declaration of its sole owner Scott A. Hale, opposer submitted a copy of its application for the mark SYBARITE, and the file thus far in examination, which includes an Office action wherein the examining attorney advised opposer that the application will be refused registration under Trademark Act Section 2(d) if and when applicants’ application matures into a registration, and a subsequent Office action suspending opposer’s application pending disposition of applicants’ application (Hale decl. para. 40-42, exh. U-V). See Nextel 7 Communications Inc. v. Motorola Inc., 91 USPQ2d 1393, 1400 (TTAB 2009); TBMP § 309.03(b) (3d ed. 2011). In view of the foregoing, opposer has established its standing to oppose registration of the involved application, and has shown that it is not a mere intermeddler. Priority We now turn to whether a genuine dispute exists as to priority of use of the mark SYBARITE for personal concierge services for others comprising making requested personal arrangements and reservations, running errands and providing customer specific information to meet individual needs, all rendered in business establishments, office buildings, hotels, residential complexes and homes. Pursuant to Trademark Rule 2.122(b)(2), the allegation in an application for registration of a date of use is not evidence on behalf of the applicant or registrant; a date of use of a mark must be established by competent evidence. At summary judgment, specimens of use are not evidence on behalf of the applicant. In the absence of testimony or other proof demonstrating that the actual use of the mark an applicant seeks to register is prior to the filing date of its involved application, the earliest date upon which an applicant may rely in an opposition proceeding is the filing date of its involved application. See Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 8 2009); Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991). As discussed below, applicants have failed to present evidence of actual use of the mark prior to the filing date of their application. Thus, the earliest date upon which applicants may rely for priority purposes is December 23, 2009, the filing date of their application. Inasmuch as opposer’s filing date is after the filing date of the opposed application, opposer must demonstrate actual use of the mark SYBARITE for the identified services earlier than December 23, 2009. Opposer’s arguments As noted, opposer submitted the declaration of its sole owner, Scott A. Hale. Mr. Hale asserts that he formed opposer company on May 7, 2007, and transferred to opposer company the entirety of the business, including his interest in the involved mark (Hale decl., para. 16-17). The declaration introduces various materials, some of which we summarize here. Opposer introduced numerous written invoices; opposer’s declarant states that opposer “retains copies of those invoices in its book and records within the ordinary course of its business” (Hale decl., para. 21). Each invoice prominently bears the wording “SYBARITE” and “Please make check payable to: Sybarite Lifestyle Management, LLC,” and includes, in a “Description” column, what Mr. Hale identifies as “a fairly 9 detailed description of the concierge-related services for which a client is billed” (Hale decl., para. 21). We note that the first set of invoices that are itemized reflects services dated December 2007 through December 2008 (Hale decl., para. 24, exh. J). The services identified therein are in the nature of, for example, acquiring goods at retail or grocery establishments, hardware store purchases, obtaining supplies, cleaning, painting, plumbing installation, repairing damaged areas and personal property, obtaining fabric samples, photo hanging, photo development, laminating, framing, equipment rental, securing carwash and storage services, obtaining permits, obtaining meals, and supervision of subcontractors. These services fall within the scope of what is defined as “concierge services.” We note the dictionary definition of “concierge,” as follows: • a resident in an apartment building especially in France who serves as doorkeeper, landlord’s representative, and janitor • a usually multilingual hotel staff member who handles luggage and mail, makes reservations, and arranges tours; broadly: a person employed (as by a business) to make arrangements or run errands.3 3 The Merriam-Webster Dictionary, © 2008 by Merriam-Webster, Inc., http://www.merriam-webster.com/dictionary/concierge. The Board may take judicial notice of dictionary definitions. See Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1515 n13 (TTAB 2009); University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). 10 Opposer points out Invoice Number 1025, explaining that “(T)he short description provided on the invoice reflects the kind of personal concierge services handled by (opposer)” (Hale decl., para. 25). This invoice, dated January 20, 2008, consists of five pages that list various services and the dates on which they were performed; said list references specific commercial establishments visited by and activities undertaken by opposer, as well as the price charged for said services. The services described in this list include those that fall under the definition of “concierge services.” In summary, the services identified on opposer’s invoices are encompassed within the recitation of services for which applicants seek registration. Opposer submitted similar invoices that reflect itemized services performed in 2009 (Hale decl. para. 26, exh. K), and in 2010 (Hale decl. para. 27, exh. L). In determining priority, we look at the total picture presented by the evidence. As our primary reviewing court has noted, [W]hether a particular piece of evidence by itself establishes prior use is not necessarily dispositive as to whether a party has established prior use by a preponderance. Rather, one should look at the evidence as a whole, as if each piece of evidence were part of a puzzle which, when fitted together, establishes prior use. West Florida Seafood, Inc. v. Jet Restaurants, 31 F.3d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994). Here, while 11 opposer’s invoices that predate applicant’s December 23, 2009 filing date are sufficient to prove opposer’s prior use of the mark for concierge services, we nonetheless note that opposer submitted additional evidence that corroborates what the invoices demonstrate inasmuch as it shows that opposer was actively promoting the services rendered under the mark. For example, opposer’s declarant asserts that opposer prominently displays its mark and descriptions of its concierge and lifestyle management services on its website www.sybaritelm.com, that it published and launched said website on October 8, 2006 (Hale Decl., para. 10), and that the website “has been fully operational since its launch” (Hale Decl., para. 12). Pages from its website prominently display the mark SYBARITE, and provide descriptions of services offered thereunder (Hale Decl., para. 10, exh. C).4 For example, the first paragraph under the “About” link explains as follows: A UNIQUE APPROACH TO HOSPITALITY. Scott Hale established Sybarite Lifestyle management in 2003 to bring exceptional standards, training, and service delivery techniques to the operation of fine hotels and private residences. To do so, he has assembled a team of hospitality professionals rich in experience from all facets of luxury hotel operations. Their expertise in leading teams to deliver innovative and intuitive service in elegant settings makes Sybarite Lifestyle Management unique. 4 Inasmuch as said printouts reflect both the date on which they were accessed and printed, and their URL source, they are considered to be self-authenticating and may be admitted into evidence in the same manner as a printed publication in general circulation under Trademark Rule 2.122(e). See Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2010). 12 Finally, Mr. Hale asserts in his declaration that with the exception of one icon entitled “Aspen Housekeeper Academy,” the substantive information on the website was present at the time of the website’s launch (Hale decl. para. 15). Opposer also submitted seven letter-style business proposals for concierge services, which bear the mark in its letterhead, and are dated August 26, 2007, June 17, 2008, January 25, 2009, September 4, 2009, February 6, 2010, March 8, 2010, January 9, 2011 (Hale decl. para. 29, exh. M). Hence, four such proposals are dated prior to applicants’ December 23, 2009 filing date. For example, the August 26, 2007 proposal explains in detail the concierge services that opposer offers, and states, in part, By selecting the finest aspects of our shared experiences, we can create a superlative service experience for your collection of residences. … I would suggest five days of instruction to ensure sufficient time for use to thoroughly cover all of the necessary topics. We will focus on the methods of household management, creating the service culture that you wish to convey, and how to successfully plan for each guest who will be utilizing the residences. Applicants’ arguments In opposition to opposer’s claim of priority, applicants assert, “…all evidences (sic) submitted in its motion for summary judgment, prove that the Opposer operated as an estate manager, domestic staff and hotel consultant. None of the Opposers evidences (sic) suggest that he operates as a personal concierge service” (applicants’ brief, unnumbered p. 4) 13 and “All of the evidences (sic) submitted … supports the Opposer operating as a hospitality consultant (class 43), not a personal concierge service (class 45).” (applicants’ brief, unnumbered p. 6) Applicants’ first exhibit, two California Secretary of State documents from 2007 and from 2009, the first of which indicates that opposer described its type of business as “consulting for private residences,” appear to have been submitted to support applicants’ assertion that opposer was not or has not been registered in California as a personal concierge company. Applicants’ next exhibits, business directory third-party websites,5 appear to have been offered to support the assertion that opposer is not listed by such entities as operating personal concierge services, and that the public does not know opposer to be rendering personal concierge services. Applicants did not submit a declaration attesting to or otherwise explaining these exhibits. Applicants’ exhibits are not proof of the information or statements included therein, and are of limited probative value. They are nonetheless relevant in determining whether applicants have negated, or raised a genuine issue with respect to, opposer’s prior use. We find that applicants’ evidence fails to raise a genuine dispute with respect to opposer’s 5 As with opposer’s website evidence, these are admissible, and we consider them for whatever probative value they have. See Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d at 1039. 14 priority. Moreover, applicants have not pointed to particular materials in the record that show that opposer’s priority is genuinely disputed.6 In contrast, opposer’s evidence demonstrates its use of SYBARITE as a service mark in connection with the rendering of personal concierge services to individual and business clients. As noted above, such services are in the nature of purchasing goods, cleaning, painting, securing repairs, obtaining permits, storing goods, and various other activities addressing the personal or business-related needs of others. The invoices that opposer submitted, particularly those referenced above that are dated 2008, indicate uses in connection with concierge services that predate applicants’ filing date. In view of the foregoing, opposer has established prior use of the mark SYBARITE in connection with its International Class 45 services, and has demonstrated the absence of genuine dispute regarding its priority. Likelihood of confusion 6 We note applicants’ assertion that “Evidence cannot be submitted to disprove these allegations because Opposer made these new claims after discovery had already closed” (applicants’ brief, unnumbered p. 3). To the extent that applicants posit that they were unable to respond to opposer’s summary judgment motion absent further discovery, the argument is unavailing. See Trademark Rule 2.127(e)(1); TBMP § 528.06 (3d ed. 2011). Applicants responded to opposer’s motion, rather than moving for discovery under Fed. R. Civ. P. 56(d). Cf. Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., 63 USPQ2d 2009 (TTAB 2002) (motion for discovery denied where nonmovant filed a response to the motion for summary judgment on the merits). 15 Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Our primary reviewing Court has held that only those du Pont factors shown to be material or relevant in the particular case and which have evidence submitted thereon are to be considered. Olde Tyme Foods, Inc. v. Roundy's, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks”). In this case, the only evidence relates to the similarity of the marks and the similarity of the services. As noted, the parties’ marks are identical, and their services are identical. Based on this record, we conclude that there is no genuine dispute that there is a likelihood of confusion. 16 Conclusion Based on the record on summary judgment, and after consideration of the parties’ arguments and evidence, the Board finds that opposer has met its burden of demonstrating that it has standing, and that there is no genuine dispute that 1) it used the mark in commerce since at least prior to the earliest date upon which applicants may rely, and 2) a likelihood of confusion exists. Thus, opposer has demonstrated that it is entitled to judgment as a matter of law. In view thereof, opposer’s motion for summary judgment is granted. The opposition is sustained on the ground of priority and likelihood of confusion, and registration to applicants is refused. Copy with citationCopy as parenthetical citation