American Airlines, Inc.v.American Road Warriors, LLC DBA roadwarrior-usa.com

Trademark Trial and Appeal Board

Jun 14, 2013

No. 91203536 (T.T.A.B. Jun. 14, 2013)

DUNN Mailed: June 14, 2013

Opposition No. 91203536

American Airlines, Inc.

v.

American Road Warriors, LLC DBA
roadwarriorusa.com

Before Seeherman, Lykos, and Adlin, Administrative Trademark
Judges:

By the Board:

This case comes up on opposer’s motion for summary judgment
on its Section 2(d) claims of priority and likelihood of
confusion, and applicant’s motion to suspend the Board’s
decision on the motion for summary judgment until applicant
obtains counsel. Both motions are contested.
American Road Warriors, LLC DBA roadwarriorusa.com
(hereafter ARW) seeks registration, pursuant to Trademark Act
Sec. 1(b), of the mark ROADWARRIORUSA.COM for:
computer services, namely, creating an on-line
community for registered users to participate in
discussions, get feedback from their peers, form
virtual communities, and engage in social networking
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION
IS NOT A PRECEDENT
OF THE T.T.A.B.
Opposition No. 91203536

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featuring content, goods and services useful to
business travelers; computer services, namely,
creating an on-line community for registered users to
network with other business travelers and to have
access to content, goods and services for business
travelers

On January 25, 2012, American Airlines, Inc. (hereafter,
American) filed a notice of opposition on the ground of
likelihood of confusion, alleging that it has used the mark ROAD
WARRIO since 2001 in connection with a contest which promotes
travel and travel tips, and that it owns Registration No.
3614349 for the mark ROAD WARRIOR for “arranging and conducting
contests and sweepstakes to promote travel incentive award
programs.” On April 5, 2012, applicant, acting pro se, filed an
answer denying the salient allegations of the notice of
opposition.
On October 31, 2012, the last day of the discovery period,
opposer filed a motion for summary judgment and applicant filed
a motion to compel. On December 28, 2012, the Board denied
applicant’s motion to compel for failure to comply with the
Board’s rules; recommended that applicant seek counsel; and
suspended proceedings pending the disposition of opposer’s
motion for summary judgment, already fully briefed. On January
16, 2013, applicant filed a motion to suspend the Board’s
deciding opposer’s motion for summary judgment.

Opposition No. 91203536

3
MOTION TO SUSPEND IS DENIED
Suspension of a Board proceeding is solely within the
discretion of the Board. The Other Telephone Company v.
Connecticut National Telephone Company, Inc., 181 USPQ 779, 782
(Comm'r Pat. 1974). "All motions to suspend, regardless of
circumstances . . . are subject to the 'good cause' standard."
National Football League v. DNH Management LLC, 85 USPQ2d 1852,
1855, n. 8 (TTAB 2008) citing Trademark Rule 2.117(c). In
support of its motion to suspend, applicant contends that its
interests may not be served without legal representation, and
suspension is appropriate while applicant reconfigures its
corporate structure and business plan, accumulates funds to pay
for legal representation, and searches for legal representation,
though applicant “is not able at this time to predict a
meaningful completion date for that search… .” Opposer points
out that applicant’s reasons for seeking suspension are
irrelevant to the fully briefed summary judgment, and argues
that applicant has not provided good cause for any suspension,
let alone a suspension of indefinite length.
Because obtaining representation would not alter the fact
that the motion for summary judgment has been fully briefed, the
Board agrees that applicant has not presented good cause to
suspend decision on the motion. Applicant is mistaken in any
assumption that obtaining representation would ensure that
Opposition No. 91203536

4
applicant could file a substitute, and presumably more
persuasive, response to the summary judgment motion. The motion
for summary judgment had been pending for almost three months at
the time applicant filed its motion to suspend, and in the more
than four months intervening since applicant filed its motion to
suspend, applicant has not supplemented its motion with any
indication that its efforts to obtain counsel have begun.
Accordingly, applicant’s motion to suspend decision on the
motion for summary judgment is denied.
MOTION FOR SUMMARY JUDGMENT IS DENIED
Summary judgment is an appropriate method of disposing of
cases that present no genuine disputes of material fact, thus
leaving the case to be resolved as a matter of law. See Fed. R.
Civ. P. 56(a). The evidence must be viewed in a light favorable
to the nonmoving party, and all justifiable inferences are to be
drawn in the nonmovant's favor. Lloyd's Food Products, Inc. v.
Eli's, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir.
1993); Opryland USA Inc. v. The Great American Music Show, Inc.,
970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
Here, opposer contends that its mark ROAD WARRIOR has been
wholly incorporated in applicant’s mark ROADWARRIORUSA.COM; that
the additional top level domain name .COM has no trademark
significance; that the addition of the geographically
descriptive term USA to another’s mark is insufficient to
Opposition No. 91203536

5
differentiate the marks; that opposer’s and applicant’s services
both center on information for travelers, are offered to the
identical consumers, and travel in the identical channels of
commerce, and thus that there is a likelihood of confusion.
Opposer has submitted the declaration of its attorney Andrew
Avsec, accompanied by a status and title copy of opposer’s
pleaded registration, and applicant’s discovery responses
stating that applicant is a general service travel agency.
Opposer also relies on the declaration of Paul Schaefer, its
Director of Print and Digital Projects, with averments and
voluminous exhibits regarding the promotion of opposer’s ROAD
WARRIOR contest for sharing business travel tips, held every
year since 2001 and promoted through opposer’s inflight
magazine, website and social media.
Applicant contends that the term ROAD WARRIOR is weak, as
shown by the use of the term as a trademark for various travel-
related goods and services; that the differences between ROAD
WARRIOR and ROADWARRIORUSA.COM ensure that consumers would not
assume any connection between the parties; that opposer is
primarily a travel agency and does not complete with applicant’s
commercial airline services; and that inasmuch as opposer’s
evidence shows declining ROAD WARRIOR contest entries, opposer’s
use and promotion has not strengthened consumer recognition of
Opposition No. 91203536

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the ROAD WARRIOR mark. Applicant submits no evidence in support
of its arguments.
In view of opposer's ownership and submission into evidence
of a valid and subsisting registration for its pleaded mark,
there is no issue with respect to opposer's standing and
priority. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
945, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (party’s ownership of
pleaded registration establishes standing);
King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974) (priority not at issue where
opposer pleads registration the validity of which is
unchallenged).
Notwithstanding applicant’s failure to present any evidence
in support of its arguments regarding likelihood of confusion1,
we are constrained in considering a motion for summary judgment
to view the evidence in a light favorable to applicant as the
non-moving party, and to draw all justifiable inferences in
applicant’s favor. Under this standard, we find that opposer
has not sustained its burden of establishing the absence of a
genuine dispute of material fact. There are, at a minimum,
genuine disputes remaining for trial relating to the

1 Applicant is encouraged to seek legal representation to ensure
that evidence supporting its position is submitted (in proper form) at
trial.
Opposition No. 91203536

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similarities between the parties’ services and the strength of
opposer’s mark.
Opposer’s motion for summary judgment is granted in part as
to standing and priority based solely on the registration and
the services recited in the registration, and is denied as to
the claim of likelihood of confusion.2
Proceedings herein are resumed3, and dates are reset as
follows:
Discovery CLOSED
Plaintiff's Pretrial Disclosures 7/20/2013
Plaintiff's 30-day Trial Period Ends 9/3/2013
Defendant's Pretrial Disclosures 9/18/2013
Defendant's 30-day Trial Period Ends 11/2/2013
Plaintiff's Rebuttal Disclosures 11/17/2013
Plaintiff's 15-day Rebuttal Period Ends 12/17/2013

In each instance, a copy of the transcript of testimony,
together with copies of documentary exhibits, must be served on

2 Although we have only mentioned a few genuine disputes of
material fact in this decision, this is not to say that these are all
the only disputes that would necessarily be at issue for trial. If
opposer wants to rely on its common law rights for services outside
those listed in the registration, it would have to prove prior use of
the mark for those services. The parties should note 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
in evidence during the appropriate trial period. See Levi Strauss &
Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).
3 In view of the limited disputes remaining, the parties should
consider agreeing to resolve this case via the Board’s Accelerated
Case Resolution (“ACR”) procedure, which provides a flexible,
inexpensive and simplified means of resolving Board cases. Applicant,
currently pro se, may benefit from the more informal procedures for
introducing evidence which apply to most ACR cases. The parties are
encouraged to jointly contact the interlocutory attorney assigned to
this case [Richard Kim at 571-272-7326] to discuss the possibility of
ACR.
Opposition No. 91203536

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the adverse party within thirty days after completion of the
taking of testimony. Trademark Rule 2.l25.
Briefs shall be filed in accordance with Trademark Rules
2.128(a) and (b). An oral hearing will be set only upon request
filed as provided by Trademark Rule 2.l29.for summary judgment
on the issue of likelihood of confusion are denied.