A&H Sportswear Co., Inc.v.William W. Yedor

Trademark Trial and Appeal Board

Mar 29, 2019

OPP (T.T.A.B. Mar. 29, 2019)

JK
March 29, 2019

Opposition No. 91235843

A&H Sportswear Co., Inc.

v.
William W. Yedor

Before Wolfson, Adlin and Larkin,
Administrative Trademark Judges.

By the Board:

This proceeding involves application Serial No. 86921486, which William W.
Yedor (“Applicant”) filed on February 26, 2016, based on Trademark Act Section 1(b),
15 U.S.C. § 1051(b), to register the standard character mark MIRACLE ON 35th
STREET for “paper goods and printed matter, namely, posters, photographs,
lithographs, post cards” in International Class 16, and “clothing, namely, T-shirts,
sweatshirts, caps, jackets” in International Class 25.
A&H Sportswear Co., Inc. (“Opposer”) filed a notice of opposition on the grounds
of: (1) likelihood of confusion; and (2) dilution by blurring. Opposer pleads ownership
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
General Email: TTABInfo@uspto.gov
THIS ORDER IS A
PRECEDENT OF THE
TTAB
Opposition No. 91235843

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of 15 registrations for marks that include the word MIRACLE, each for apparel goods
in International Class 25.1 1 TTABVUE 9-11, 16-166.
Applicant denied the salient allegations in the notice of opposition. 4 TTABVUE;
9 TTABVUE.
Opposer now moves for leave to amend its notice of opposition to add a claim that
Applicant had no bona fide intent to use the involved mark in commerce on or in
connection with the identified goods when he filed the involved application, 16
TTABVUE, and for summary judgment on the proposed claim, 14 TTABVUE. The
motions are fully briefed.
Motion to Amend Notice of Opposition
A party that seeks summary judgment on an unpleaded claim may
simultaneously move to amend its pleading to assert the claim. TRADEMARK TRIAL
AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 528.07(a) (June 2018), and
cases cited therein. 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.
Trademark Rule 2.107(a), 37 C.F.R. § 2.107(a); Fed. R. Civ. P. 15; TBMP § 507.02.
The timing of a motion to amend is an important factor in determining whether the
non-movant would be prejudiced by allowing the proposed amendment. TBMP
§ 507.02(a), and cases cited therein. The motion should be filed as soon as the ground

1 Opposer pleaded Registration Nos. 1728652, 2011542, 2631990, 2787470, 3002228,
3292018, 4115402, 4135953, 4495016, 4459354, 4786337, 5037704, 5082487, 5082574 and
5205751.
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for the amendment becomes apparent. A long or unexplained delay in filing a motion
for leave to amend may render the amendment untimely. See Int’l Fin. Corp. v. Bravo
Co., 64 USPQ2d 1597, 1604 (TTAB 2002).
Applicant argues that Opposer failed to timely add the claim. 18 TTABVUE 2.
Opposer claims it learned of the factual basis for the proposed claim from Applicant’s
responses to Opposer’s first set of interrogatories, document requests and requests
for admissions, copies of which it submitted. 15 TTABVUE 6-25. Opposer explains
that, from Applicant’s responses, it learned, inter alia, that Applicant has no history
of manufacturing, selling or marketing the identified goods, has taken no steps to
manufacture or market the goods, has not identified any potential customers, and
has no documentation of advertising, promotional, business or marketing plans.
It does not appear from this record that Opposer had or should have had prior
knowledge of this information. There is nothing in the record suggesting that Opposer
unreasonably delayed in moving to amend only six weeks after receiving the last of
Applicant’s written discovery responses, and the pleading sufficiently alleges the
proposed claim. Applicant has not introduced any evidence demonstrating that it
would be prejudiced by the delay, and no prejudice would seem likely given that the
information and documents through which Applicant may defend the claim are likely
to be in his own possession and control.
In view of these findings, Opposer’s motion for leave to amend is granted. The first
amended notice of opposition is now Opposer’s operative pleading.
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Motion for Summary Judgment
Summary judgment is appropriate where the movant demonstrates 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 true or is
genuinely disputed must support its assertion by either: (1) citing to 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). 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 Opryland USA Inc. v. Great Am. Music Show Inc., 970
F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s,
Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
On a motion for summary judgment, the Board may not resolve any factual
dispute; it may only determine whether a genuine dispute of material fact exists. See,
e.g., Meyers v. Brooks Shoe Inc., 912 F.2d 1459, 16 USPQ2d 1055, 1056 (Fed. Cir.
1990). The non-movant must be given the benefit of all reasonable doubt as to
whether a genuine dispute as to any material fact exists, and the evidentiary record
on summary judgment and all justifiable inferences to be drawn from the undisputed
facts must be viewed in the light most favorable to the non-movant. Opryland, 23
USPQ2d at 1472. However, when the movant has supported its motion with sufficient
evidence that, if unopposed, indicates there is no genuine dispute of material fact and
that the movant is entitled to judgment as a matter of law, the burden then shifts to
the non-movant to demonstrate the existence of a genuine dispute of material fact to
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be resolved at trial. See Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537,
1540 (TTAB 2009); see also Barmag Barmer Maschinenfabrik AG v. Murata Mach.,
Ltd., 731 F.3d 831, 221 USPQ 561, 564 (Fed. Cir. 1984). “The nonmoving party may
not rest on the mere allegations of its pleadings and assertions of counsel, but must
designate specific portions of the record or produce additional evidence showing the
existence of a genuine issue of material fact for trial.” See Venture Out Props. LLC v.
Wynn Resort Holdings LLC, 81 USPQ2d 1887, 1890 (TTAB 2007); see also Fed. R.
Civ. P. 56(c)(1); Enzo Biochem v. Gen-Probe, 424 F.3d 1276, 76 USPQ2d 1616, 1622
(Fed. Cir. 2005); Barmag Barmer Maschinenfabrik, 221 USPQ at 564; Enbridge, 92
USPQ2d at 1540.
To prevail on summary judgment, Opposer must demonstrate that the record
shows no genuine dispute as to any material fact and that, as a matter of law,
Applicant had no bona fide intent to use the mark MIRACLE ON 35th STREET in
commerce on or in connection with the goods identified in the involved application,
as of the application’s February 26, 2016 filing date.
Opposer’s Standing
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 185, 187 (CCPA 1982). To establish standing, a plaintiff must show that
it has a “real interest” in the outcome of the proceeding and a “reasonable basis” for
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believing that it would suffer damage if the mark is registered. See Coach Servs. Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012);
Ritchie, 50 USPQ2d at 1025; Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 823
F.2d 490, 2 USPQ2d 2021, 2023-24 (Fed. Cir. 1987).
In its amended notice of opposition, Opposer sufficiently alleges a claim of
likelihood of confusion that is not wholly without merit, based upon its ownership of
fifteen pleaded registrations, which are valid and subsisting and are of record
pursuant to Trademark Rule 2.122(d)(1).2 1 TTABVUE 16-166. This establishes
Opposer’s real interest in this proceeding and a reasonable basis for its belief that it
would be damaged by issuance of a registration to Applicant, and is sufficient to
establish its standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000); Lipton Indus., 213 USPQ at 189; King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).3 Having
demonstrated standing on this ground, Opposer may assert any other valid basis for
refusal. Lipton Indus., 213 USPQ at 190 (“Standing having been established,
petitioner is entitled to rely on any statutory ground which negates appellant’s right
to the subject registration and may invoke the general public interest in support of
its claim.”) (citation omitted); see also Coach Servs., 101 USPQ2d at 1727-28.

2 In its original notice of opposition, Opposer submitted Exhibit A, TESS and TSDR printouts
of its 15 pleaded registrations. 1 TTABVUE 16-166. Exhibit A was incorporated by reference
in the amended notice of opposition. 16 TTABVUE 11.
3 Applicant does not contest Opposer’s standing.
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Bona Fide Intent to Use
Trademark Act Section 1(b)(1) states that “[A] person who has a bona fide
intention, under circumstances showing the good faith of such person, to use a
trademark in commerce may request registration of its trademark….” Trademark Act
Section 1(b)(1), 15 U.S.C. § 1051(b)(1). Whether an applicant has a bona fide intention
to use the mark in commerce is an objective determination based on the totality of
the circumstances. See M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114 USPQ2d
1892, 1898 (Fed. Cir. 2015); Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001,
2008 (TTAB 2015). The evidentiary bar for showing bona fide intent to use is not high,
but more is required than “a mere subjective belief.” The objective evidence must
indicate an intention to use the mark that is “firm” and “demonstrable.” M.Z. Berger,
114 USPQ2d at 1897–98, Swiss Grill, 115 USPQ2d at 2008; see also Bos. Red Sox
Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008); Lane Ltd. v.
Jackson Int’l Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994). The absence of any
documentary evidence regarding an applicant’s bona fide intention to use a mark in
commerce establishes a prima facie case that an applicant lacks such intention as
required by Section 1(b), a case which an applicant may counter with facts that
adequately explain or outweigh its failure to provide documentary evidence. See
Spirits Int’l., B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri
Birligi, 99 USPQ2d 1545, 1549 (TTAB 2011); Honda Motor Co. v. Winkelmann, 90
USPQ2d 1660, 1662-64 (TTAB 2009); L.C. Licensing Inc. v. Berman, 86 USPQ2d
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1883, 1891 (TTAB 2008); Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha, 26
USPQ2d 1503, 1507 (TTAB 1993).
The Record and Arguments
Opposer points to Applicant’s responses to Interrogatory Nos. 4, 6, 7, 10, 12, 17,
18 and 20, wherein Applicant stated that he intends to sell T-shirts, owns the domain
name whitesoxshirts.com, has one shirt design, gave friends and family a “prototype
T-shirt” in 2005, and plans to build a website in the event the Chicago White Sox win
the World Series. 14 TTABVUE 3-4; 15 TTABVUE 6-9, 13. In response to the
remainder of the interrogatories, Applicant identified no other product he has ever
planned to offer under his mark, and no class of purchasers to whom he has marketed
or sold, or intends to market or sell his products. 15 TTABVUE 7-8.
In response to Opposer’s requests for production of documents, Applicant served
only one document, with only an image of a prototype T-shirt he designed and gave
out as gifts in 2005. Applicant stated that no other documents exist that refer to this
image. 15 TTABVUE 12-13, 21. In the remainder of Applicant’s document request
responses, he identified no documents that show use of, or steps toward using, his
mark on any products, or that show advertising, promotions, media, marketing plans,
business plans or packaging materials or expenditures. He did not produce
documents identifying any outlets, distributors or resellers through which he
intended to offer or offers his goods. Furthermore, Applicant responded that he has
no documentation of, inter alia, any business or marketing plan to offer or sell his
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products in connection with his mark, any prospective purchasers, or any websites to
display his products. 15 TTABVUE 13-15.
Applicant has had opportunities – both in responding to discovery, and in
responding to Opposer’s motion – to come forward with documentary or other
evidence to show any concrete steps taken or plans made to actually use his mark
contemporaneous with filing his involved application, such as manufacturing,
licensing or marketing efforts, a functioning website, correspondence with potential
licensees, marketing plans, business plans, or the creation of labels or promotional
materials. See SmithKline Beecham Corp. v. Omnisource DDS LLS, 97 USPQ2d 1300,
1304 (TTAB 2010). In sum, the lack of documentation from the time of filing is highly
probative of Applicant’s lack of a bona fide intent to use the applied-for mark at that
time. Honda Motor Co., 90 USPQ2d at 1664 (Board granted summary judgment
sustaining the opposition where applicant had no documentary evidence to support
its intent to use).
In determining the sufficiency of evidence of bona fide intent, the Trademark Act
does not expressly impose “any specific requirement as to the contemporaneousness
of an applicant’s documentary evidence corroborating its claim of bona fide intention.
Rather, the focus is on the entirety of the circumstances, as revealed by the evidence
of record.” Lane, 33 USPQ2d at 1356. See also Honda Motor Co., 90 USPQ2d at 1662.
We have previously addressed the contemporaneousness of evidence (and
corroboration thereof) in considering evidence which postdates the filing of an
application. Compare Swatch AG v. M.Z. Berger & Co., 108 USPQ2d 1463, 1474
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(TTAB 2013), aff’d, 114 USPQ2d 1892 (Fed. Cir. 2015) (documents created seven
months after application date were relevant to intent at time of filing), and Lane, 33
USPQ2d at 1355 (correspondence that occurred nine to eleven months after filing
date was sufficiently contemporaneous), with Swiss Grill Ltd., 115 USPQ2d at 2009
(vague claims about communications, meetings or events which took place one or two
years after filing date, and which were uncorroborated by any other evidence of
intent, insufficient to show bona fide intent at time of filing), and Bos. Red Sox
Baseball Club LP, 88 USPQ2d at 1587 (Internet searches and investigations
conducted more than two years after application filing date “not even remotely
contemporaneous with” filing date).
Here, the only document that Applicant produced in discovery is an image from
eleven years before the filing date of his application, an image which he identified
as a “prototype T-shirt.” 15 TTABVUE 21. It displays the wording “Miracle on 35th
Street” as part of an ornamental design on the front. Applicant stated in response to
Interrogatory No. 7 that in 2005 he gave friends and family this prototype T-shirt. 15
TTABVUE 7, 12-13. He stated in response to Request for Admission No. 8 that “some
friends and family paid for the shirts, but sales were extremely limited.” 15
TTABVUE 23.
Given the eleven-year time span and the absence of record evidence of any later
activities evidencing Applicant’s use or preparation to use its mark, we conclude that
the use of Applicant’s mark on his T-shirt in 2005 was not sufficiently
contemporaneous with the February 26, 2016 filing date to be probative of Applicant’s
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bona fide intent to use the mark when the involved application was filed. Applicant’s
other described plans similarly lack probative value because they also predate the
filing date by more than a decade; specifically, Applicant states that when the
Chicago White Sox won the World Series in 2005, he planned to sell or license a
“Miracle” clothing line, created a design incorporating the mark, developed a website,
and filed but later abandoned an application to register the mark.4 18 TTABVUE 2-
3. Moreover, Applicant did not set forth any activities he undertook since 2005, much
less on or around the February 26, 2016 filing date of the involved application.
Neither the filing of the involved application itself, nor Applicant’s ownership of the
domain name whitesoxshirts.com constitute evidence that Applicant had a bona fide
intent to use the mark when he filed the involved application. M.Z. Berger, 114
USPQ2d at 1898; Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723 (TTAB 2010); Research
in Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1931 (TTAB 2009) (“If the filing and
prosecution of a trademark application constituted a bona fide intent to use a mark,
then in effect, lack of a bona fide intent to use would never be a ground for opposition
or cancellation….”).

4 In response to Requests for Admission Nos. 18-22, Applicant admitted that he was the owner
of Registration No. 3184981, which issued on December 12, 2006, for the mark MIRACLE
ON 35th STREET for clothing, and that the registration was cancelled on December 3, 2013,
for failure to respond to the USPTO’s rejection of Applicant’s specimen of use submitted with
his Section 8 Declaration of Use and/or Excusable Nonuse. 15 TTABVUE 24-25. A cancelled
registration is not entitled to any of the statutory presumptions of Section 7(b) of the
Trademark Act. Trademark Act § 7(b), 15 U.S.C. § 1057(b). See also In re Ginc UK Ltd., 90
USPQ2d 1472, 1480 (TTAB 2007) (“Nor does applicant’s cancelled registration justify
registration of its current application.”); In re Hunter Publ’g Co., 204 USPQ 957, 963 (TTAB
1979) (cancellation “destroys the Section [7(b)] presumptions and makes the question of
registrability ‘a new ball game’ which must be predicated on current thought.”).
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On this record, Applicant did not submit anything to show that he engaged in any
activities even somewhat contemporaneous with the February 26, 2016 filing date.
Applicant has therefore failed to establish that a genuine dispute of material fact
exists as to whether Applicant had the requisite bona fide intent to use his mark on
the identified goods as of that filing date.
Applicant alleges that he “plans to launch this business in earnest using the
existing design (among others) and existing website platform once this pending legal
challenge is resolved and once the White Sox fan base has something to cheer about
– making marketing efforts worthwhile and successful.” 18 TTABVUE 3. This is a
mere hope that an alleged condition precedent to using his mark – the Chicago White
Sox winning the World Series – would occur someday. However, Applicant’s hopes
are insufficient to show bona fide intent. See Lincoln Nat’l. Corp. v. Anderson, 110
USPQ2d 1271, 1277 (TTAB 2014) (an applicant’s “idealistic hopes” to build a business
around a mark at some indefinite time in the future do not suffice to show bona fide
intent to use). Without more, this speculative and purely contingent plan, dependent
on a future event that might or might not occur in the future, is not sufficient to
demonstrate a bona fide intent to use the mark on or in connection with the identified
goods as of February 26, 2016. M.Z. Berger, 114 USPQ2d at 1898 (“whether an
applicant had a ‘bona fide intent’ to use the mark in commerce at the time of the
application requires objective evidence of intent”); Lane, 33 USPQ2d at 1355.
Moreover, while we do not reject the possibility that, depending on the circumstances,
legal proceedings may provide an excuse for nonuse, Applicant has not cited any legal
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challenge that was pending when he filed the involved application that could provide
a reason for the lack of evidence of his intent to use the mark at that time.
Conclusion
Having considered the arguments and evidence on summary judgment, and
having drawn all justifiable inferences in favor of Applicant as the non-movant, we
find that Opposer has established the absence of genuine disputes of material fact
that Applicant lacked the requisite intent to use his mark when he filed the involved
application; that Applicant has not rebutted this prima facie case with any evidence
that bears upon his intent to use; and that Opposer is entitled to judgment as a matter
of law. On this record, Opposer has met its burden on summary judgment, and
Applicant failed to counter that showing.
Accordingly, Opposer’s motion for summary judgment is granted. Judgment is
entered against Applicant, the opposition is sustained, and registration of Applicant’s
mark MIRACLE ON 35th STREET in application Serial No. 86921486 is refused.