American Express Marketing & Developing Corp.v.Tung B. Vo

Trademark Trial and Appeal Board

May 21, 2018

No. 91230559 (T.T.A.B. May. 21, 2018)

Mailed: May 21, 2018

Opposition Nos. 91230559 (Parent) and
912327141

American Express Marketing & Developing
Corp.

v.

Tung B. Vo.

Before Cataldo, Taylor and Bergsman,
Administrative Trademark Judges.

By Cataldo, Administrative Trademark Judge:

Applicant Tung B. Vo seeks to register on the Principal Register the standard
character marks AMERIXPRESS for “import agency services,” in International Class
35;2 and AMERIXPRESS LLC, for
Calcium supplements; Dietary supplements; Herbal supplements;
Homeopathic supplements; Mineral supplements; Mineral nutritional
supplements; Natural herbal supplements; Nutritional supplements;
Probiotic supplements; Protein supplements; Soy protein dietary
supplements; Vitamin supplements; Vitamin and mineral supplements,
in International Class 5, and

1 The parties’ March 2, 2017 motion to consolidate (6 TTABVUE) was granted in a Board
order issued on March 8, 2017 (7 TTABVUE). All references will be to the record and briefs
in Opposition No. 91230559 unless otherwise noted. Record citations are to TTABVUE, the
Trademark Trial and Appeal Board’s publically available docket history system. See Turdin
v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
2 Application Serial No. 86894103 was filed on February 2, 2016, based upon Applicant’s
assertion of a bona fide intent to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
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
Opposition Nos. 91230559 (Parent) and 91232714
2

Export agency services for the goods of others in International Class 35.3

Opposer, American Express Marketing & Development Corp. filed notices of
opposition pleading ownership of nine marks for various formatives of AMERICAN
EXPRESS as a word mark or with a design for a variety of services in the fields of
business, finance, communication, ticket reservation, travel, concierge, mail order
and hotel services as well as printed materials in the fields of travel, dining and
hotels. As grounds for its opposition, Opposer alleges likelihood of confusion under
Section 2(d), 15 U.S.C. § 1052(d) and dilution by blurring under Section 43(c), 15
U.S.C. § 1125(c).4
Applicant, in his answers, denied the salient allegations of the notices of
opposition.5
A. Summary Judgment
Now before the Board is Opposer’s motion for summary judgment, filed in both
proceedings on the grounds of likelihood of confusion and dilution. The motion is fully
briefed. We presume the parties’ familiarity with the pleadings, briefs and record
evidence on the motions, and do not repeat them here.

3 Application Serial No. 86881103 was filed on January 20, 2016, based upon Applicant’s
assertion of a bona fide intent to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b) in connection with both classes of goods and services.
4 1 TTABVUE 1-20.
5 2 TTABVUE 1-5.

Opposition Nos. 91230559 (Parent) and 91232714
3
Summary judgment is appropriate only where there are no genuine disputes of
material fact, thus allowing the case to be resolved as a matter of law. Fed. R. Civ. P.
56(a). The party seeking summary judgment bears the initial burden of
demonstrating the absence of any genuine dispute of material fact. See Celotex Corp.
v. Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting Co. Inc.,
833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987). 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 American 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).
The evidence on summary judgment must be viewed in a light most favorable to the
non-movant, and all justifiable 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, 23 USPQ2d at 1472. The Board may not resolve disputes
of material fact; it may only ascertain whether disputes of material fact exist. See
Lloyd’s Food Products, 25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1542.
1. Standing and Priority
As noted above, Opposer has alleged ownership of nine registrations for
AMERICAN EXPRESS formative marks.6 Opposer attached, as exhibits to its motion
for summary judgment, copies of records obtained from the United States Patent and
Trademark Office’s (“USPTO”) Trademark Electronic Search System (“TESS”) as well

6 1 TTABVUE 1-20.
Opposition Nos. 91230559 (Parent) and 91232714
4
as paper copies showing the current status and title of its pleaded registrations.7 We
find no genuine dispute that Opposer’s standing has been established by the filing of
these copies of its pleaded registrations. These registrations and the goods and
services identified therein suffice to establish a direct commercial interest, and confer
Opposer’s standing to bring this proceeding. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); Edwards Lifesciences
Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1408 (TTAB 2010).
Furthermore, we find no genuine dispute that by properly making its pleaded
registrations of record, Opposer has removed Section 2(d) priority as an issue in this
proceeding as to the marks as well as the goods and services identified by those
registrations. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974).
2. Likelihood of Confusion
In a likelihood of confusion analysis, two key factors are the degree of similarity of
the parties’ marks and the degree to which their respective goods or services are
related. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). However, the U.S. Court of Customs and Patent Appeals, in du Pont, discussed
thirteen factors relevant to a determination of likelihood of confusion. Id. at 567. Not
all of the factors are relevant and only those relevant factors for which there is

7 8 TTABVUE 869-881; 9 TTABVUE 56-64, 106-202.
Opposition Nos. 91230559 (Parent) and 91232714
5
evidence in the record must be considered. Id. at 567-68; see also In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010) (“Not all of the DuPont
factors are relevant to every case, and only factors of significance to the particular
mark need be considered.”); Cunningham, 55 USPQ2d at 1845.
In light of the strict standards for summary judgment, as set forth above, we find
that based on the evidence presented, Opposer has failed to demonstrate the absence
of genuine disputes of material fact. In particular, we find that genuine disputes of
material fact exist at least as to the similarity between Opposer’s marks and
Applicant’s marks, and the relatedness of the identified goods and services. Opposer’s
motion for summary judgment on likelihood of confusion is denied.
3. Dilution
Dilution under Section 43(c) of the Act, 15 U.S.C. § 1125(c) requires consideration
of the following: (1) whether the opposer’s mark is famous; (2) whether the opposer’s
mark became famous prior to the date of the application to register the applicant’s
intent to use mark; and (3) whether the applicant’s mark is likely to cause dilution
by blurring or tarnishment of the opposer’s famous mark. See Coach Services Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1723-24 (Fed. Cir. 2012);
Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1295
(TTAB 2016): Research in Motion Ltd. v. Defining Presences Marketing Group Inc.,
102 USPQ2d 1187, 1197 (TTAB 2012); Trek Bicycle Corp. v. StyleTrek Ltd., 64
USPQ2d 1540, 1542 (TTAB 2001); The Toro Company v. Torohead, Inc., 61 USPQ2d
1164 (TTAB 2001).
Opposition Nos. 91230559 (Parent) and 91232714
6
Based upon the evidence of record, and drawing all possible inferences with respect
to Opposer’s motion in favor of Applicant as the nonmoving party, Opposer again has
failed to meet its burden on summary judgment with respect to its claim of dilution.
There are genuine disputes at least as to whether Applicant’s Marks would dilute the
distinctiveness of Opposer’s pleaded marks. Opposer’s motion for summary judgment
based on dilution is denied.
However, the issues of standing and priority have been resolved. Accordingly,
partial summary judgment is GRANTED in favor of Opposer as to its standing and
priority with respect to its pleaded registered marks and the goods and services
shown in her pleaded registrations. See Fed. R. Civ. P. 56(g); Tonka Corp. v. Tonka
Tools, Inc., 229 USPQ 857, 858-59 (TTAB 1986) (partial summary judgment granted
to nonmovant as to its standing). Opposer’s motion for summary judgment is
otherwise DENIED.
B. Accelerated Case Resolution
We note that the relevant facts of this proceeding are relatively uncomplicated and
that the parties are well-acquainted with them. We further note that the parties,
Opposer in particular, has introduced a substantial record in support of its summary
judgment motion. Additionally, the issues remaining for trial have been narrowed by
this order. Accordingly, the parties may wish to stipulate to resolution of this
proceeding by means of the Board’s accelerated case resolution (“ACR”) procedure.
They may do so through summary judgment-type briefs accompanied by evidence,
incorporating the record for this motion, with or without supplementation. See e.g.,
Opposition Nos. 91230559 (Parent) and 91232714
7
Freeman v. Nat’l Ass’n of Realtors, 64 USPQ2d 1700 (TTAB 2002) (parties agreed that
evidence and arguments submitted with petitioner’s motion for summary judgment
and respondent’s response could be treated as the final record and briefs). See also
TBMP § 528.05(a)(2) (June 2017) and authorities cited therein. In the event the
parties agree to ACR, they will need to stipulate that the Board may resolve any
genuine disputes of material fact the Board may find to exist. See TBMP § 702.04 for
more information.
The parties are therefore encouraged to jointly contact the assigned Board
Interlocutory Attorney responsible for this proceeding by telephone to discuss the
possibility of ACR, any necessary stipulations and an agreed-upon schedule for
proceeding under ACR.
If the parties determine not to proceed via ACR the proceeding will continue on the
schedule as set below.
C. Schedule
Proceedings are resumed upon the following schedule:

Plaintiff's Pretrial Disclosures Due 5/29/2018
Plaintiff's 30-day Trial Period Ends 7/13/2018
Defendant's Pretrial Disclosures Due 7/28/2018
Defendant's 30-day Trial Period Ends 9/11/2018
Plaintiff's Rebuttal Disclosures Due 9/26/2018
Plaintiff's 15-day Rebuttal Period Ends 10/26/2018
Plaintiff's Opening Brief Due 12/25/2018
Defendant's Brief Due 1/24/2019
Plaintiff's Reply Brief Due 2/8/2019
Request for Oral Hearing (optional) Due 2/18/2019

In each instance, a copy of the transcript of any testimony, together with copies of
Opposition Nos. 91230559 (Parent) and 91232714
8
documentary exhibits, must be served on the adverse party within thirty days after
completion of the taking of that testimony. Trademark Rule 2.125.
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 2.129.