Ashland Licensing & Intellectual Property LLC and Valvoline Licensing and IP LLCv.Sunpoint International Group USA Corp.

Trademark Trial and Appeal Board

Apr 26, 2019

92057294 (T.T.A.B. Apr. 26, 2019)

Hearing: April 16, 2019 Mailed: April 26, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Ashland Licensing & Intellectual Property LLC
and Valvoline Licensing and IP LLC
v.
Sunpoint International Group USA Corp.
_____

Cancellation No. 92057294
_____

Bruce Tittel of Wood Herron & Evans LLP
for Ashland Licensing & Intellectual Property LLC
and Valvoline Licensing and IP LLC.
Jeffrey M. Furr of the Furr Law Firm
for Sunpoint International Group USA Corp.
_____

Before Zervas, Bergsman and Goodman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Sunpoint International Group USA Corp. (Respondent) is the owner of the
registered MAXVOLINE trademarks set forth below for “lubricants for automobiles,”
in International Class 4:
This Opinion is Not a
Precedent of the
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1. Registration No. 3450454 for the mark MAXVOLINE in standard characters;1
and
2. Registration No. 3454800 for the mark MAXVOLINE and design shown
below:2

Ashland Licensing & Intellectual Property LLC and Valvoline Licensing and IP
LLC (Petitioners) initially filed a petition to cancel Respondent’s registrations on the
grounds of likelihood of confusion, dilution, and abandonment. The operative
pleading, however, is Petitioners’ Third Amended Petition for Cancellation alleging
(i) likelihood of confusion;
(ii) dilution;
(iii) nonuse at the time of filing the Statements of Use and at the expiration
of the time for filing of the Statements of Use of the underlying
applications for Respondent’s registrations;
(iv) abandonment by nonuse, and

1 Registered June 17, 2008; renewed.
2 Registered June 24, 2008; renewed. The registration does not include a description of the
mark.
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(v) that the assignments of Respondent’s registrations were naked
assignments because they failed to include goodwill.3
Because Petitioners did not argue dilution or abandonment by nonuse in their
brief, those claims are waived.4 See Alcatraz Media, Inc. v. Chesapeake Marine Tours
Inc., 107 USPQ2d 1750, 1753 (TTAB 2013) (petitioner’s pleaded descriptiveness and
geographical descriptiveness claims not argued in brief deemed waived), aff’d, 565 F.
App’x 900 (Fed. Cir. 2014) (mem.); see also TPI Holdings, Inc. v. TrailerTrader.com
LLC, 126 USPQ2d 1409, 1413 n.28 (TTAB 2018); Tao Licensing, LLC v. Bender
Consulting Ltd., 125 USPQ2d 1043, 1046 (TTAB 2017).
With respect to the likelihood of confusion claim, Petitioners pleaded ownership
of, inter alia, Registration No. 53237 for the mark VALVOLINE (in typed drawing
form) for “lubricating oils,” in International Class 4,5 and Registration No. 2621773
for the mark MAX LIFE (in typed drawing form) for “motor oils, lubricants and
greases all for motor vehicles,” in International Class 4.6 Because of Petitioners’
purported “prior and continuous use” of VALVOLINE and MAX LIFE in connection
with lubricants for automobiles, the public has associated those marks with
Petitioners and, therefore, Respondent’s MAXVOLINE marks for “lubricants for
automobiles” is likely to cause confusion with Petitioners’ VALVOLINE and MAX

3 54 TTABVUE.
4 At the hearing, Petitioners’ counsel confirmed that the claims at issue are likelihood of
confusion, nonuse at the time of the filing of the statements of use, and abandonment based
on invalid assignments.
5 Registered May 29, 1906; sixth renewal.
6 Registered September 17, 2002; renewed.
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LIFE trademarks.7 To be clear, Petitioners are not alleging that Respondent’s
MAXVOLINE marks are likely to cause confusion with either of Petitioners’
VALVOLINE or MAX LIFE trademarks; rather, Petitioners allege that
“Respondent’s trademarks MaXvoline [and design] and Maxvoline are confusingly
similar to Petitioners’ conjointly used trademarks Valvoline and Max Life, when the
‘Max’ in Max Life is combined with ‘voline’ from Valvoline to form MaXvoline.”8
With respect to the nonuse at the time of registration, Petitioners allege that
Respondent had not used its MAXVOLINE marks when it filed the Statements of Use
and by the respective expiration dates for filing the Statements of Use and, therefore,
“the Registrations should be cancelled for failure to use the marks in commerce on
goods in trade.”9
Finally, Petitioners allege that Respondent’s MAXVOLINE registrations should
be cancelled because “the Registrations at issue were transferred to Respondent were

7 Petitioners’ Third Amended Petition for Cancellation ¶¶12-14 (54 TTABVUE 6).
8 Petitioners’ Brief, p. 7 (98 TTABVUE 17).
9 Third Amended Petition for Cancellation ¶17 (54 TTABVUE 7). The critical date is the
expiration of the time for filing the Statement of Use. During ex parte examination, the actual
filing of a statement of use does not cut off the deadline for meeting the requirements for a
statement of use. The applicant may amend its statement of use so long as the amendment
demonstrates that the requirements for the statement of use were met before the expiration
of the deadline for filing the statement of use. Trademark Rule 2.88(e), 37 C.F.R. § 2.88(e)
(“If, as a result of the examination of the statement of use, the applicant is found not entitled
to registration, the applicant will be notified and advised of the reasons and of any formal
requirements or refusals. The statement of use may be amended in accordance with §§ 2.59
and 2.71 through 2.75.”). Thus, an applicant may amend its statement of use to state dates
of use which fall after the statement of use filing date, but before the expiration of the
deadline for filing the statement of use. See Trademark Rule 2.71(c)(2), 37 C.F.R. § 2.71(c)(2)
(“The applicant may amend the dates of use, provided that the amendment is verified, except
… after filing a statement of use under § 2.88, the applicant may not amend the statement
of use to specify a date of use that is subsequent to the expiration of the deadline for filing
the statement of use.”).
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‘naked assignments,’ otherwise known as ‘transfers in gross,’ because the purported
assignments of the trademark rights failed to also include an assignment of the
goodwill associated with those trademarks.”10 A claim for cancellation based on an
invalid assignment is, in essence, an abandonment claim. See Visa, U.S.A. v.
Birmingham Trust Nat’l Bank, 696 F.2d 1371, 216 USPQ 549 (Fed. Cir. 1982), cert.
denied, 464 U.S. 826, 220 USPQ 385 (1983).
The rule against assignment of a mark in gross thus
reflects “the need, if consumers are not to be misled from
established associations with the mark, that it continue to
be associated with the same or similar products after the
assignment.”
Id. at 216 USPQ at 652 (citing Raufast S.A. v. Kicker’s Pizzazz, Ltd., 208 USPQ 699,
702 (E.D.N.Y. 1980)); see also Stock Pot Rest., Inc. v. Stockpot, Inc., 737 F.2d 1576,
222 USPQ 665, 667 (Fed. Cir. 1984) (“Entwined with the lease to Mrs. Phillips is
appellant’s claim that appellee abandoned the mark at that time through that lease,
i.e., that at best the assignment was of a ‘naked trademark’ or was a ‘naked license,’
both signifying abandonment of rights to the mark); Roush Bakery Prods. Inc. v. F.R.
Lepage Bakery Inc., 13 USPQ2d 1045, 1051 (TTAB 1989) (“We think it is clear from
the foregoing that the issue of whether the invalid assignment in this case constituted
an abandonment of the collective mark COUNTRY KITCHEN hinges upon the facts
concerning such matters as the nature of the use of the mark by respondent and the
other members of the collective prior to and after the 1985 assignment of the
registration to respondent, and the extent to which (and by whom) control over the

10 Third Amended Petition for Cancellation ¶19 (54 TTABVUE 8).
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use of the mark was actually exercised.”). Thus, whether the goodwill is actually
conveyed is a question of fact determined by the circumstances surrounding the
transfer of rights.
Respondent denied the salient allegations in the Third Amended Petition for
Cancellation and asserted the affirmative defense of laches.
I. Preliminary Issues
A. Respondent’s motion to strike Petitioners’ Reply Brief.
Respondent moves to strike Petitioners’ Reply Brief on the grounds that it exceeds
the permitted length because it is 27 pages, rather than 25 pages, and because
Petitioners attached evidence to the Reply Brief not previously made of record.11
Petitioners admit that they inadvertently exceeded the page limit because they
failed to count the Table of Contents and Table of Authorities.12 Nevertheless,
Petitioners ask the Board to exercise its discretion and accept its Reply Brief because,
inter alia, Petitioners responded to Respondent’s evidentiary objection lodged in
Respondent’s brief on the case in Petitioners’ Reply Brief instead of utilizing an
appendix or separate statement as provided by Trademark Rule 2.128(b), 37 C.F.R. §
2.128(b).

11 101 TTABVUE.
12 103 TTABVUE 5.
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Also, Petitioners contend that they attached evidence to their Reply Brief because
it was necessary “to provide the Board with a clear picture of the lengths Registrant
has gone in order to misrepresent key facts so as to mislead the Board.”13
Without the exhibits it would just be a matter of
Petitioners’ counsels’ unsupported statements versus the
unsupported statements made by Registrant’s counsel.
There is no way that Petitioners could have foreseen a
reason to identify the exhibits as trial exhibits.14
Trademark Rule 2.128(b), 37 C.F.R. § 2.128(b), provides that “Without prior leave
… a reply brief shall not exceed twenty-five pages in its entirety” and that “[a]ny brief
beyond the page limits and that any brief with attachments outside the stated
requirements may not be considered by the Board.” The rule allows the Board to
exercise its discretion in deciding whether to consider an over-length brief. Within
that discretion is the ability to strike the brief on the ground that it exceeds the page
limit, consider the brief in its entirety, or to consider the brief but not the attached
appendices due to their content.
Petitioners’ Reply Brief, excluding the exhibits, exceeds the page limitation.
Petitioners chose not to respond to the evidentiary issue in an appendix or separate
statement as provided by the Rules, nor did Petitioners seek prior leave to exceed the
page limit.
Moreover,
the facts and arguments presented in the brief must be
based on the evidence offered at trial. A brief may not be
used as a vehicle for the introduction of evidence. …

13 Petitioners’ Response to Respondent’s Motion to Strike Petitioners’ Reply Brief, p. 2 (103
TTABVUE 6).
14 Id.
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Exhibits to briefs are generally unnecessary and are
discouraged.
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PRACTICE AND PROCEDURE
(TBMP) § 801.01 (2018). The Board issues a trial order setting the deadlines for each
party to present its case. See Trademark Rule 2.121(b)(1), 37 C.F.R. § 2.121(b)(1).
A party may not take testimony or present evidence outside
of its assigned testimony period, except by stipulation of
the parties approved by the Board, or, on motion, by order
of the Board.
TBMP § 701; see also Baseball Am. Inc. v. Powerplay Sports, 71 USPQ2d 1844, 1846
n.8 (TTAB 2004) (documentary evidence submitted outside assigned testimony period
given no consideration); M-Tek Inc. v. CVP Sys. Inc., 17 USPQ2d 1070, 1072 (TTAB
1990) (untimely deposition stricken). Petitioners impermissibly sought to introduce
evidence outside their testimony period by attaching it to their brief.
Finally, we decide cases based on the testimony and evidence introduced into the
record. See In re Merrill Lynch, Fenner, and Smith, 828 F.2d 1567, 4 USPQ2d 1141,
1143 (Fed. Cir. 1987) (in determining whether a mark is generic, “[e]vidence of the
public’s understanding of the term may be obtained from any competent source, such
as purchaser testimony, consumer surveys, listings in dictionaries, trade journals,
newspapers, and other publications.”); In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”) (the determination of likelihood
of confusion is based on the probative facts in evidence). We do not consider
unsupported statements of counsel. See Gemtron Corp. v. Saint-Gobain Corp., 572
F.3d 1371, 91 USPQ2d 1409, 1415 (Fed. Cir. 2009) (reasoning that a party’s “unsworn
attorney argument … is not evidence” and thus cannot rebut record evidence); Enzo
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Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir.
2005) (“Attorney argument is no substitute for evidence.”). Thus, it was not necessary
for Petitioners to introduce evidence to challenge purportedly unsupported
arguments or mischaracterizations of the record by Respondent’s counsel.
We find that Petitioners’ Reply Brief exceeds the page limit without prior leave of
the Board and it includes evidence not properly introduced into the record during
Petitioners’ assigned period for introducing evidence. Accordingly, Respondent’s
motion to strike Petitioners’ Reply Brief is granted.
B. Discovery deposition of Vernon Venne
During their assigned time for introducing testimony and evidence,15 Petitioners
introduced the discovery deposition of Vernon Venne, formerly an attorney for
“Ashland” and formerly President of Ashland Licensing & Intellectual Property
LLC.16 Petitioners designated Mr. Venne as their Fed. R. Civ. P. 30(b)(6) witness.17
Petitioners’ notice for filing the deposition stated
Petitioners hereby provides [sic] this notice that it has filed
the “Vernon Venne Deposition and Registrant’s Ashland
Deposition Exhibit 1” and that copies have been served as
follows.18

15 77 TTABVUE. Petitioners’ testimony period closed March 12, 2018.
16 81 TTABVUE. The discovery deposition of Vernon Venne was taken on January 11, 2017
(81 TTABVUE 4).
17 Respondent’s Brief, p. 9 (99 TTABVUE 9) (Respondent misidentified Mr. Venne as a Rule
56(b) witness). The discovery deposition states that it is the deposition of Ashland Licensing
& Intellectual Property LLC by Vernon F. Venne pursuant to a notice of deposition to
Ashland Licensing & Intellectual Property LLC. 81 TTABVUE 4, 6, and 7.
18 81 TTABVUE 2.
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Petitioners did not identify Vernon Venne as a witness in their Pretrial
Disclosures, Second Pretrial Disclosures, or Rebuttal Pretrial Disclosures.19 Other
than to identify the Vernon Venne deposition as part of the record, Petitioners did
not refer to the Venne deposition in their main brief.
During its assigned time for introducing testimony and evidence, Respondent
introduced a Notice of Reliance identifying excerpts from the discovery deposition of
Vernon Venne purportedly having relevance to Respondent’s laches affirmative
defense.20
In its brief, Respondent objects to the admissibility of the entire Venne deposition
on the ground that Petitioners failed to identify which parts of the Venne deposition
should in fairness be considered so as to make not misleading what was introduced
by Respondent.21 Trademark Rule 2.120(k)(4), 37 C.F.R. § 2.120(k)(4), provides
If only part of a discovery deposition is submitted and made
part of the record by a party, an adverse party may
introduce under a notice of reliance any other part of the
deposition which should in fairness be considered so as to
make not misleading what was offered by the submitting
party. A notice of reliance filed by an adverse party must
be supported by a written statement explaining why the
adverse party needs to rely upon each additional part listed
in the adverse party’s notice, failing which the Board, in its
discretion, may refuse to consider the additional parts.
Because Respondent objects to the Venne deposition only on the ground that
Petitioners failed to identify which parts of the Venne deposition should in fairness

19 72, 78, and 94 TTABVUE.
20 87 TTABVUE.
21 Respondent’s Brief, p. 8 (99 TTABVUE 9).
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be considered so as to make not misleading what has been introduced by Respondent,
and not on the ground that Petitioners failed to identify Vernon Venne in pretrial
disclosures pursuant to Trademark Rule 2.121(e), 37 C.F.R. § 2.121(e), Respondent
knew that Petitioners were introducing the Venne discovery deposition to rebut
Respondent’s laches affirmative defense and not to prove any of Petitioners’ grounds
for cancellation.
Because Vernon Venne was designated as Petitioners’ Rule 30(b)(6) witness, his
deposition is admissible via a notice of reliance by Respondent, the adverse party. See
Trademark Rule 2.120(k)(1), 37 C.F.R. § 2.120(k)(1) (“The discovery deposition of …
a person designated by a party pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal
Rules of Civil Procedure, may be offered in evidence by an adverse party.”). Although
the Venne deposition is not admissible by Petitioners, Respondent did not object to
the deposition on that ground.
Section 707.04 of the TBMP provides that “[a] party may waive an objection by
failing to raise the objection at the appropriate time.”22 The TBMP further provides
For example, an objection to a notice of reliance on the
ground that the notice does not comply with the procedural
requirements of the particular rule under which it was
submitted generally should be raised promptly. If a party
fails to raise an objection of this nature promptly, the
objection may be deemed waived, unless the ground for
objection is one that could not have been cured even if
raised promptly. See TBMP§ 707.02(b)(1) and TBMP
§ 707.02(b)(2).

22 See also TBMP § 707.02 (objections to a notice of reliance are waived unless promptly made
(i.e., errors which may be cured if promptly presented) while other grounds that cannot be
cured may be raised at any time).
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Similarly, an objection to a testimony deposition on the
ground that it does not comply with the applicable
procedural rules generally is waived if not raised promptly,
unless the ground for objection is one which could not have
been cured even if raised promptly. See TBMP
§ 707.03(b)(1) and TBMP § 707.03(c).
Because Respondent knew that Petitioners introduced the Venne deposition to
rebut Respondent’s laches affirmative defense, Respondent should have lodged its
objection to the introduction of the entire Venne deposition after Petitioners
introduced it, and before the close of Petitioners’ rebuttal testimony period, so that
Petitioners could cure their failure to identify those portions of the deposition which
should in fairness be considered so as to make not misleading what has been
introduced by Respondent. See Barclays Capital Inc. v. Tiger Lily Ventures Ltd.,
124 USPQ2d 1160, 1163 (TTAB 2017) (“Objections to testimony or to a notice of
reliance grounded in asserted procedural defects are waived unless raised promptly,
when there is an opportunity to cure.”); Beech Aircraft Corp. v. Lightning Aircraft Co.,
1 USPQ2d 1290, 1291 (TTAB 1986) (objection waived where respondent received
notice of reliance without the publications that were referred to appended to the
notice of reliance but respondent did not raise the issue until briefing); Bd. of Trustees
of the Univ. of Al. v. BAMA-Werke Curt Baumann, 231 USPQ 408, 409 n.3 (TTAB
1986) (petitioner’s objection that respondent’s justification for reliance on its own
discovery responses was insufficient because it was raised for first time in petitioner’s
brief and, therefore, it was untimely since the defect was one which could have been
cured if raised promptly). Also, had Respondent timely raised its objection,
Petitioners could have noticed and taken Vernon Venne’s deposition during their
Cancellation No. 92057294

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rebuttal testimony period. See Of Counsel Inc. v. Strictly Of Counsel Chartered, 21
USPQ2d 1555, 1556 n.2 (TTAB 1991) (where opposer’s testimony deposition was
taken two days prior to opening of opposer's testimony period, and applicant first
raised an untimeliness objection in its brief on the case, objection held waived, since
the premature taking of the deposition could have been corrected on seasonable
objection). Accordingly, Respondent waived its objection because Respondent did not
raise it in a timely manner.
Respondent’s objection to the admissibility of the Vernon Venne deposition
introduced by Petitioners is overruled and we will consider it in response to
Respondent’s affirmative defense of laches.
II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Respondent’s registration files.23 The parties introduced the
following testimony and evidence:
A. Petitioners’ testimony and evidence.
1. Discovery deposition of Gabriel R. Pappaterra, Respondent’s principal;24
2. Discovery deposition of Vernon Venne, former attorney for “Ashland” and
former President of Ashland Licensing & Intellectual Property LLC;25
3. Notice of reliance on the following:

23 Accordingly, Respondent did not need to introduce copies of the registrations of the marks
at issue in this proceeding, nor did Respondent need to introduce a copy of the summary of
this proceeding. 88-90 TTABVUE.
24 79 TTABVUE.
25 81 TTABVUE. The portions of the Venne deposition designated confidential are posted at
80 TTABVUE.
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a. Copies of Petitioners’ pleaded registrations prepared and issued by the
USPTO showing both the current status of and title to the
registrations;26 and
b. Copies of Petitioners’ website (Valvoline.com) printed from the Wayback
Machine website (web.archive.org);27
4. Testimony declaration of Laura Carpenter, Vice President of Franchising
for Valvoline Instant Oil Change;28
5. Testimony declaration of Sarah M. Love, an intellectual property paralegal
for Petitioners and Secretary of Valvoline Licensing and Intellectual
Property, introducing Petitioners’ pleaded registrations;29
6. Testimony deposition of Gabriel Herrero, principal of Herrero & Sons
Corporation, a wholesaler of automotive accessories, chemicals, and
window film;30
7. Testimony deposition (March 2, 2018) of Gabriel R. Pappaterra;31
8. Rebuttal notice of reliance on the following:

26 82 TTABVUE 12-61.
27 82 TTABVUE 63-73.
28 84 TTABVUE 4-61.
29 84 TTABVUE 62-249.
30 91 TTABVUE.
31 93 TTABVUE. The portions of the Pappaterra deposition designated confidential are posted
at 92 TTABVUE.
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a. Copy of the Virgin Islands Corporate Register for Sunpoint
International Group, Inc. (virgin.bvifs.vg) as of May 22, 2018;32
b. Copy of the British Virgin Islands Business Companies Act, 2004 (with
2005 Amendments) (bvifsc.vg);33
c. A printout from the U.S. Energy Information Administration website
purporting to present the Cushing, OK WTI Spot Price FOB (Dollars per
Barrel) (eia.gov);34 and
d. A webpage from the Petroleum Quality Institute of America
(pqiamerica.com) purporting to list the qualities of ten brands of motor
oil, including Petitioners’ MAX LIFE.35

32 95 TTABVUE 10-11. The cover emails transmitting the Virgin Islands Corporate Records
are not admissible through a notice of reliance and, therefore have been given no
consideration. (95 TTABVUE 5-9). Likewise, the Memorandum of Association and Articles of
Association of Sunpoint International Group Inc. is not the type of document admissible
through a notice of reliance and has been given no consideration. (95 TTABVUE 12-42).
33 95 TTABVUE 43-46.
34 95 TTABVUE 47-48. Pursuant to TBMP § 704.08(b), “[t]he probative value of Internet
documents is limited. They can be used to demonstrate what the documents show on their
face. However, documents obtained through the Internet may not be used to demonstrate the
truth of what has been printed. A printout from a webpage may have more limitations on its
probative value than traditional printed publications. A party may increase the weight the
Board will give website evidence by submitting testimony and proof of the extent to which a
particular website has been viewed. Otherwise, the document may not be considered to have
much probative value.” See also Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1040
(TTAB 2010) (Internet documents introduced through a notice of reliance “are admissible
only to show what has been printed, not the truth of what has been printed.”).
35 95 TTABVUE 49-52. Note the caveat as to the probative value of Internet evidence in the
preceding footnote.
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B. Respondent’s testimony and evidence.
1. Testimony declaration of Ranses Matta, Marketing Adviser for American
Airlines (National Account Manager);36
2. Testimony declaration of Yuki Yunes, a friend and business associate of
Gabriel Pappaterra;37
3. Testimony declaration of Humberto Blanco, an employee of Twin Trading;38
4. Testimony declaration of Rodolfo Montes, a friend and brother-in-law of
Gabriel Pappaterra;39
5. A webpage from inflationdata.org purporting to provide crude oil prices;40
6. Excerpts from the discovery deposition of Vernon Venne, former attorney
for “Ashland” and former President of Ashland Licensing & Intellectual
Property LLC;41 and
7. Testimony deposition (May 11, 2018) of Gabriel Pappaterra.42

36 85 TTABVUE 4-5.
37 85 TTABVUE 6-7.
38 85 TTABVUE 8-9.
39 85 TTABVUE 10.
40 86 TTABVUE. Note the caveat as to the probative value of Internet evidence in footnote
34.
41 87 TTABVUE.
42 97 TTABVUE. “When evidence has been made of record by one party in accordance with
these rules, it may be referred to by any party for any purpose permitted by the Federal Rules
of Evidence.” Trademark Rule 2.122(a), 37 C.F.R. § 2.122(a). Because the Respondent
introduced the Pappaterra testimony deposition, it was not necessary for Petitioners to file a
notice of reliance on portions of that testimony deposition at 95 TTABVUE.
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III. Standing
Standing is a threshold issue 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);
John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). To
establish standing in an opposition or cancellation proceeding, a plaintiff must prove
that it has a “real interest” in the proceeding and a “reasonable” basis for its belief of
damage. See Empresa Cubana, 111 USPQ2d at 1062; 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, 189 (TTAB 1982).
Petitioners have established their standing by properly introducing into evidence
their pleaded registrations. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); N.Y. Yankees P’ship v. IET Prods. & Servs.,
Inc., 114 USPQ2d 1497, 1501 (TTAB 2015). Respondent, in its brief, does not
challenge Petitioners’ standing.
Once a plaintiff shows standing on one ground, it has the right to assert any other
grounds in a cancellation proceeding. See Corporacion Habanos SA v. Rodriquez,
99 USPQ2d 1873, 1877 (TTAB 2011) (because petitioners alleged standing as to at
least one ground, primarily geographically deceptively misdescriptive, they may
assert any other legally sufficient claims including those under Section 2(a), the Pan
American Conventionand fraud); Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d
1537, 1543 n.10 (TTAB 2009), citing Liberty Trouser Co. v. Liberty & Co., Ltd.,
222 USPQ 357, 358 (TTAB 1983).
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IV. Nonuse at the time of Filing of Statements of Use and the Expiration of
time for Filing Statements of Use
Petitioners allege that Respondent had not used its MAXVOLINE marks when it
filed the Statements of Use and at the expiration of time for filing the Statements of
Use and, therefore, “the Registrations should be cancelled for failure to use the marks
in commerce on goods in trade.”43 See Tao Licensing, 125 USPQ2d at 1055
(respondent failed to make the requisite use of the mark in commerce prior to the
statement of use deadline because respondent’s activities were preliminary advisory
consultations rather than bona fied use of the mark in the ordinary course of trade);
Embarcadero Tech., Inc., v. Delphix Corp., 117 UPSQ2d 1518, 1526 (TTAB 2016)
(where a claim of nonuse is alleged, the plaintiff must prove that there was no use in
commerce prior to the filing of the deadline for filing the statement of use); cf. Gay
Toys, Inc. v. McDonald's Corp., 585 F.2d 1067, 199 USPQ 722, 723 (CCPA 1978)
(because applicant did not use the mark in commerce in association with the goods at
the time it filed the application, its application was void); Community of Roquefort v.
Santo, 443 F.2d 1196, 170 USPQ 205, 208 n.7 (CCPA 1971) (nonuse of the mark at
the time the application was filed is a ground for opposition). Nonuse at the time of
registration “is a fact-based inquiry as to whether the activity in question is a bona
fide use in the ordinary course of trade.” Tao Licensing, 125 USPQ2d at 1054.
The issue in this case is whether showing samples of MAXVOLINE motor oil as a
private label motor oil to potential consumers constitutes transporting the goods in

43 Third Amended Petition for Cancellation ¶17 (54 TTABVUE 7).

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commerce. However, neither Petitioners, nor Respondent, introduced any testimony
or evidence regarding private label sales in the motor oil industry. Thus, we are left
to determine whether Respondent used its mark in commerce without any testimony
or evidence regarding industry practice.
Use in commerce is defined as
… the bona fide use of a mark in the ordinary course of
trade, and not made merely to reserve a right in a mark.
For purposes of this chapter, a mark shall be deemed to be
in use in commerce—
(1) on goods when—
(A) it is placed in any manner on the goods or their
containers or the displays associated therewith or on
the tags or labels affixed thereto, or if the nature of the
goods makes such placement impracticable, then on
documents associated with the goods or their sale, and
(B) the goods are sold or transported in commerce.
Section 45 of the Trademark Act, 15 U.S.C. § 1127.
Respondent filed the Statements of Use to support the registration of its marks on
April 23, 2008. The specimen supporting the use of the MAXVOLINE mark was a
bottle of oil manufactured by Amalie Motor Oil with a MAXVOLINE label.44
Respondent printed the label from his digital printer.45 Respondent purchased oil
products from Amalie Motor Oil and put his MAXVOLINE label on the bottle.46

44 Pappaterra Testimony Dep. (March 2, 2018), p. 14 (93 TTABVUE 17); see also Pappaterra
Testimony Dep, (May 11, 2018), p. 63 (97 TTABVUE 65).
45 Id.
46 Id. at pp. 16-17 (93 TTABVUE 19-20).
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It was a little unnecessary back then to have an inventory
if I could show the product with a sample in such a way
that I was going to sell it.47
Although the label displayed an American Petroleum Institute (“API”)
certification mark,48 Respondent had not applied for API certification itself because
it did not make sense to pay API for a license until Respondent was ready to mass
produce its product.49 In any event, Mr. Pappaterra testified that an API license is
not necessary to sell motor oil so long as Respondent does not use the API certification
mark on its MAXVOLINE products.50 Because Respondent failed to get a license to
use the API certification mark does not ipso facto mean that Respondent’s use of its
MAXVOLINE mark is not in lawful commerce.
Prior to filing the Statements of Use, Gabriel Pappaterra “started working with
the brand designing and looking for suppliers, looking for customers, creating
websites and everything concerning creating a product.”51 In the 2007 to 2008 time
frame, Pappaterra began investigating motor oil manufacturers.52 He visited Amalie
Motor Oil Company in Tampa, a manufacturer of motor oil. “They do over a hundred-

47 Id. at p. 17 (93 TTABVUE 20).
48 Pappaterra Testimony Dep. (March 2, 2018), p. 16 (93 TTABVUE 19). Exhibit 23 to the
Pappaterra Testimony Dep. (May 11, 2018) (97 TTABVUE 214) is an “Engine Oil Licensing
and Certification System License Agreement” regarding a nonexclusive license from API for
goods made in accordance with API standards and specifications.
49 Pappaterra Testimony Dep. (March 2, 2018), p. 20 (93 TTABVUE 23); see also Pappaterra
Testimony Dep. (May 11, 2018), p. 64 (97 TTABVUE 66).
50 Id.
51 Pappaterra Testimony Dep. (March 2, 2018), p. 10 (93 TTABVUE 13).
52 Pappaterra Discovery Dep., p. 16 (79 TTABVUE 19).
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and-some-odd private brands, and they also naturally have their own brand.”53
Amalie “would offer me [Pappaterra] the standard bottle, the common one.”54
However, Pappaterra had not decided on a final bottle design or supplier.55
Q. Let me just repeat so I’m sure I understand.
A. Due to I was looking for prices, and then I started
comparing before - - because well, I mean - - well, in
2007, 2008 I started collecting all of that
information, but I don’t recall whether there was
price instability, but it seems there was a great deal
of price instability due to the conflict with the Middle
East and the war. But I don’t recall whether it was
around that time or the prices started - - it was
speculation, but I don’t quite recall.56
* * *
In 2008, it [oil] reached its maximum price. Then it
was very difficult to start something with prices
speculation and instability and more. That’s why I
was focused on ever improving my container, my
label.57
* * *
Q. Let’s go back to your - - your statements about price
instability. So you’ve got raw - - your raw material
to make your motor oil which would use the
Maxvoline mark, are fluctuating substantially
during this period of time?

53 Pappaterra Discovery Dep., p. 17 (79 TTABVUE 20).
54 Pappaterra Discovery Dep., p. 17 (79 TTABVUE 20).
55 Pappaterra Discovery Dep., p. 19 (79 TTABVUE 22).
56 Id.
57 Id. at p. 20 (79 TTABVUE 23).
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A. Yes. I had access so that in case any customer placed
an order, I could contact them, but price instability
was constant.58
* * *
I did have a source and I could select it easily if a
customer would buy from me.
Q. And did you have any customers at this time period
[2007-2008]?
A. Not that I recall.59
* * *
Q. Okay. Just to confirm, prior to 2012, you didn’t have
any inventory of product?
A. Not really. What I did have was - - was bottles with
the Maxvoline label to, if needed, show it to the
people, but if they required the product, then I would
go ahead and order it.60
* * *
Q. At that point in time [2007-2008], you didn’t have
any inventory, but you had bottles and the bottles
were labeled; is that correct?
A. Yes, but the amounts we’re talking about are units,
samples.
Q. Samples. Samples of empty bottles with labels?
A. Well, not necessarily because if, for example, I
understood that there was a client who could buy
certain product for me - - from me and if the
manufacturer would offer me that same
formulation, that same product and put my own

58 Id. at pp. 22-23 (79 TTABVUE 25-26).
59 Id. at p. 24 (79 TTABVUE 27); see also Pappaterra Testimony Dep. (March 2, 2018), pp.
12-13 (93 TTABVUE 15-16).
60 Id. at 27 (79 TTABVUE 30). Respondent did not have any MAXVOLINE inventory prior to
December 2012. Id. at 79 (79 TTABVUE 93).
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private label on it, it could just change the label and
put Maxvoline’s on it as a sample.
Q. Do you recall providing samples to anybody?
A. No. I never - - never used it. I mean, I did not get to
give them out to any client.61
Accordingly, although Respondent had not made any sales, prior to filing the
Statements of Use, Gabriel Pappaterra had been showing samples of the
MAXVOLINE product to potential customers.
Q. You also stated on the questioning from Mr. Furr,
that you’ve been actively marketing Maxvoline since
2007. Could you define what you mean by “actively
marketing” for me, please?
A. Within the range of those dates running from 2007
through 2012, I have visited clients, shown samples
to them. I have contacted them. I have quoted also
and I have also offered the product. …
Q. My note shows from our discussions yesterday, and
correct me if I’m wrong, you said no samples were
ever given; is that correct?
A. What I was saying is that I have shown it.
Q. But you never gave the samples of Maxvoline brand
motor oil to any potential customer; is that correct?
A. No.
Q. And the samples that you showed to potential
customers, were they empty bottles or full bottles?
A. Like I told you yesterday, they were full and they
were labeled with the Maxvoline products – well,
with the mark of Maxvoline.62

61 Id. at 30 (79 TTABVUE 32).
62 Pappaterra Discovery Dep., pp. 96-97 (79 TTABVUE 110-111); see also Pappaterra
Testimony Dep. (March 2, 2018), p. 17 (93 TTABVUE 20) (prior to April 15, 2008, and the
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Although Respondent did not give samples of the product to any of the potential
customers, if a client was willing to buy it, Respondent had a manufacturer ready to
supply it on a private label basis.63
Q. In - - in 2008, you were actively pursuing clients,
correct?
A. Correct.
Q. If the client would purchase something from you,
you had a source to provide oil or lubricant for them?
A. Yes.
* * *
A. Since 2007 to the date, yes.
Q. And so you have producers who would provide you
with the product and you were actively pursuing
customers and distributors, correct?
A. Yes.64
However, at the time Respondent filed its Statements of Use, Respondent did not
have a contract with any oil company to supply MAXVOLINE motor oil. According to
Mr. Pappaterra, it was not necessary to have such a contract because he “had
everything ready to execute the purchase and sale - - to exercise sale without the
necessity of having a massive inventory.”65 Mr. Pappaterra had visited a factory in
the summer of 2007 and discussed private labeling with that entity.

expiration of the deadline for filing the Statements of Use Pappaterra had shown samples to
several potential customers but could only specifically name two of them).
63 Id. at pp. 29-30 (79 TTABVUE 32-33).
64 Pappaterra Testimony Dep. (May 11, 2018), pp. 88-89 (97 TTABVUE 90-91); see also
Pappaterra Testimony Dep. (March 2, 2018), pp. 76-77 (93 TTABVUE 79-80).
65 Pappaterra Testimony Dep. (March 2, 2018), p. 29 (93 TTABVUE 32).
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They were very specific, they clarify me a lot of stuff. They
give me - - if I don’t - - if I remember correctly, they give me
all the requirements that I need to make my private label,
and they gave me all of the details and all of the conditions
that I may need for - - to produce my own label.
I remember asking about the - - if they came out with
different models, or if I can have a specific formulation and
everything. And these kind of companies are very open to
do whatever you need, but they require volume.
And so what I did is I got all that information and I started
working with that. And in that same trip, if I remember
correctly -- if I remember correct, I use a bottle of oil of their
company, I put my label on, and I use it as a sample and I
visited Mr. -- Mr. Herrero.66
Gabriel Herrero corroborated Mr. Pappaterra’s testimony, testifying that in the
summer of 2007, Mr. Pappaterra visited Mr. Herrero in Miami to try and sell him
MAXVOLINE motor oil.67 Pappaterra showed Herrero a typical quart bottle of oil,
containing oil, displaying the MAXVOLINE logo, and offered to sell Herrero the
product.68 Mr. Herrero also testified that it is not unusual for him to be made offers
to distribute products by others because his company has “a big distribution in Latin
America.”69 Finally, Mr. Herrero testified that Pappaterra also distributed other
motor oil such as HAVOLINE from Texaco,70 and that he viewed Pappaterra as a
potential competitor.71 Mr. Herrero testified that he was not interested in purchasing
the Maxvoline product and did not engage in any discussion with Pappatera

66 Pappaterra Testimony Dep. (May 11, 2018), pp. 21-22 (97 TTABVUE 23-24).
67 Herrero Testimony Dep., pp. 4 and 8-9 (91 TTABVUE 7 and 11-12).
68 Id. at pp. 10-14 (91 TTABVUE 13-17).
69 Id. at p.13 (91 TTABVUE 16).
70 Id. at p. 15-16 (91 TTABVUE 18-19).
71 Id. at p. 25 (91 TTABVUE 28).
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regarding sales of the product.72 (“If you approach someone with a sample and the
person says, ‘I don't want it,’ there’s no further discussion.”).73
Mr. Pappaterra also testified that, “at the end of 2007,” he showed a sample bottle
of the MAXVOLINE labeled oil obtained from Amalie Motor Oil to Yuki Yunes, a
friend and business associate. Pappaterra was “looking for the way to sell it to him
so he could resell it over there [Dominican Republic].”74 “I was trying to convince him
in order for him to sell the product there.”75 That meeting took place at Mr.
Pappaterra’s office in the Dominican Republic.76
However, Mr. Yunes did not totally corroborate Mr Pappaterra’s testimony,
particularly with respect as to the purpose of Respondent’s offer to sell the
MAXVOLINE motor oil.
GABRIEL PAPPATERRA showed me a bottle of Maxvoline
that was full of oil at the end of December in 2007 in his
office and tried to sell me MAXVOLINE products with
sample in hand. We discussed all the details of the
potential transaction. It is my understanding that
GABRIEL PAPPATERRA, through himself and other
entities has used the “MAXVOLINE” mark in commerce in
the United States and has not ever intended to abandon
the use of the mark.77

72 Id. at pp. 11-13, 20 (91 TTABVUE 14-16, 23).
73 Id. at p. 20 (91 TTABVUE 23).
74 Pappaterra Testimony Dep. (March 2, 2018), pp. 48-52 (93 TTABVUE 51-55).
75 Id. at p. 51 (93 TTABVUE 54).
76 Pappaterra Testimony Dep. (March 2, 2018), p. 50 (93 TTABVUE 53).
77 Yuki Yunes Decl. ¶4 (85 TTABVUE 7).
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The record fails to disclose whether Mr. Yunes had any experience selling motor oil
or any other product.78 Also, the record fails to disclose whether either Amalie Motor
Oil or Mr. Pappaterra transported a MAXVOLINE labeled bottle to the Dominican
Republic from the United States or whether it was an Amalie Motor Oil labeled bottle
that they shipped on which Mr. Pappaterra subsequently placed the MAXVOLINE
label.
Other than Messrs. Herrero and Yunes, Mr. Pappaterra could not recall anyone
else to whom showed his samples of MAXVOLINE.
It’s a complex question and it’s from a long time ago and
since I was frequently traveling I don’t recall exactly how
many people I visited, but there were several visits.79
In summary, prior to filing its Statements of Use, Respondent had not made any
sales, nor had Respondent made any sales by the June 25, 2008 and July 8, 2008
expiration dates for filing Statements of Use.80 However, Respondent had shown
samples of its MAXVOLINE product to Gabriel Herrero in Miami, Florida, and Yuki
Yunes in the Dominican Republic. The offer to sell MAXVOLINE to Yuki Yunes was
not a bona fide offer to sell MAXVOLINE sufficient to support registration because
Respondent failed to lay the foundation as to the experience of Mr. Yunes in
connection with selling motor oil or any other product. Further, Respondent failed to

78 Pappaterra Testimony Dep. (March 2, 2018), p., 56 (93 TTABVUE 59). Messers. Pappaterra
and Yunes were friends whose relationship consisted of “a summer program of activities
cutting grass and spending time together.” Id.
79 Pappaterra Testimony Dep. (March 2, 2018), p. 46 (93 TTABVUE 49).
80 Respondent’s first sale was in 2012. Pappaterra Testimony Dep. (May 11, 2018), pp. 69 and
90 (97 TTABVUE 71 and 92).
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include any testimony as to how Mr. Yunes would meet the volume requirement
necessary to meet the minimum order quantity Mr. Pappaterra testified was
necessary for a private label sale.
We find Mr. Pappaterra’s showing of the sample to Mr. Herrero was more in the
nature of a preliminary advisory consultation than bona fide use of MAXVOLINE in
the ordinary course of trade. See Hydro-Dynamics, Inc. v. George Putnam & Co., 811
F.2d 1470 , 1 USPQ2d 1772, 1774 (Fed. Cir. 1987) (sending a box of samples to obtain
the opinion of an independent distributor did not qualify as use in commerce, because
the purpose of the shipment was “advisory consultation on the merits of a proposed
trademark.”). Although Mr. Herrero was a distributor to whom Respondent could
conceivably sell the MAXVOLINE products, Mr. Herrero’s testimony indicates that
Mr. Pappaterra showed him the sample, simply telling him “I’m thinking of getting
into this, my private label.”81 To which, Mr. Herrero responded, “Good luck.”82 Mr.
Herrero had no interest in buying the product, and there was no discussion about
possible sales because Mr. Herrero viewed Mr. Pappaterra as a potential competitor.
(“He told me that he was going to be working that brand. Now, if he sold or not sold,
I don't know because I never engaged in that. As I told you, I tried to not just talk as
much as possible since, again, he’s my customer and he’s all of a sudden with his own
brand.”).83 The Herrero testimony is consistent with the record that Mr. Pappaterra

81 Herrero Testimony Dep., p. 13 (91 TTABVUE 16).
82 Id.
83 Id., p. 12 (91 TTABVUE 15).
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was not ready to use the mark in the ordinary course of trade in 2007 but was merely
exploring such use at some point in the future.
The record shows that Respondent transported its MAXVOLINE samples only in
Florida. Amalie Motor Oil Company, a potential supplier, is located in Tampa,
Florida. There is no testimony that Respondent had Amalie Motor Oil ship its motor
oil to Respondent in the Dominican Republic or that Respondent subsequently
shipped MAXVOLINE labeled motor oil to the United States from the Dominican
Republic.84 See Tao Licensing, 125 USPQ2d at 1052 (quoting Avakoff v. So. Pacific
Co., 765 F.2d 1097, 226 USPQ 435, 436 (Fed. Cir. 1985)) (a shipment of goods from
the manufacturer to the trademark owner did not satisfy the use or transportation in
commerce requirement, as “it was a shipment of the goods in preparation for offering
the goods for sale. It did not make the goods available to the purchasing public.”).
Even if Mr. Pappaterra’s visit to Gabriel Herrero is considered a bona fide sales
call as opposed to an advisory consultation, Gabriel Herrero’s company is located in
Miami, Florida. Amalie Motor Oil is located in Tampa, Florida. Tampa and Miami
are both located in Florida. While Mr. Pappaterra testified that he had shown his
sample to “several customers,”85 Mr. Pappaterra could identify only Gabriel Herrero

84 Obviously, Respondent’s sample bottle was shipped by Amalie Motor Oil to Mr. Pappaterra
in the Domincan Republic or Mr. Pappaterra carried it with him from the United States into
the Dominican Republic. As noted above, the record does not disclose whether the sample
bottle was shipped or transported with an Amalie Motor Oil or MAXVOLINE label.
Nevertheless, the only relevant activity in the Domincan Republic was the meeting between
Mr. Pappaterra and Mr. Yunes which we found was not a bona fide offer to sell MAXVOLINE
lubricants sufficient to support registration. This also raises the issue, which neither party
addresses, as to whether one sample bottle shipped from the United States to the Dominican
Republic is a bona fide commercial use in the lubricating oil market.
85 Pappaterra Testimony Dep. (March 2, 2018), p. 17 (93 TTABVUE 20).
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and Yuki Yunes (whom we discount for the reasons set forth above) as the people to
whom Respondent tried to sell his MAXVOLINE product. The record shows that the
MAXVOLINE product moved only in the state of Florida. At the time Respondent
filed its Statements of Use, it had made no sales, it had no distributors,86 and it had
no inventory because it was keeping its fixed prices low.87 As discussed more fully
below in the analysis of the actual confusion factor in the likelihood of confusion claim
and the analysis of Respondent’s laches affirmative defense, Respondent has had
minimal, if any, impact in the motor oil marketplace. There is no basis on which we
can find that the intrastate movement of Respondent’s MAXVOLINE product has had
any effect on interstate commerce. See Tao Licensing, LLC v. Bender Consulting Ltd.,
125 USPQ2d at 1055 (citing Christian Faith Fellowship Church v. Adidas AG, 841
F.3d 986, 120 USPQ2d 1640, 1644-45 (Fed. Cir. 2016)). Respondent has failed to show
that Respondent transported its MAXVOLINE products across state lines or in
foreign commerce prior to filing its Statements of Use, or prior to the expiration of
the time for Respondent to have filed its Statement of Use, to have any effect on
interstate commerce.88

86 Pappaterra Testimony Dep. (May 11, 2018), p. 76 (97 TTABVUE 78).
87 Pappaterra Testimony Dep. (March 2, 2018), p. 36 (93 TTABVUE 39).
88 Each of Respondent’s witnesses testified that Respondent has been actively using
MAXVOLINE “in commerce including the United States.” However, Respondent did not lay
the foundation that any of the witnesses understood what “in commerce” means for purposes
of trademark use. Accordingly, the third-party testimony fails to persuade us that
Respondent transported its MAXVOLINE product across state lines or in foreign commerce
that may be regulated by Congress prior to Respondent having filed its Statements of Use.
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Petitioners’ claim that Respondent failed to make use of its MAXVOLINE marks
prior to filing its Statements of Use, or to the expiration of the time for Respondent
to have filed its Statements of Use, is well taken and, therefore, the Petition for
Cancellation is granted.
For purposes of completeness, we address Petitioners’ remaining claims of
likelihood of confusion and abandonment because of an invalid assignment and
Respondent’s affirmative defense of laches.
V. Priority
“A party claiming prior use of a registered mark may petition to cancel the
registration on the basis of such prior use pursuant to section 14 of the Lanham Act.
15 U.S.C. Section 1064.” West Florida Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122,
31 USPQ2d 1660, 1662 (Fed. Cir. 1994). However, “a presumption of validity attaches
to” Respondent’s involved registrations, and Petitioner, the alleged prior user, bears
the burden of proving its claim of priority by a preponderance of the evidence. Id.;
Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307, 1309 (Fed. Cir. 1989); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100,
1105-06 (TTAB 2007).
“To establish priority, the petitioner must show proprietary rights in the mark
that produce a likelihood of confusion…. These proprietary rights may arise from a
prior registration, prior trademark or service mark use, prior use as a trade name,
prior use analogous to trademark or service mark use, or any other use sufficient to
establish proprietary rights.” Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156,
64 USPQ2d 1375, 1378 (Fed. Cir. 2002) [internal citations omitted]; Otto Roth & Co.
Cancellation No. 92057294

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v. Universal Foods Corp., 640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA 1981). In the
absence of evidence establishing earlier use of its mark, a party may rely for priority
purposes on the filing date of the application that matured into its registration. See,
e.g. Brewski Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1283-84 (TTAB 1998);
Am. Standard Inc. v. AQM Corp., 208 USPQ 840, 842 (TTAB 1980).
As noted above, Petitioners’ Registration No. 53237 for the mark VALVOLINE for
“lubricating oils” registered May 29, 1906 (with a filing date of April 14, 1905), and
its Registration No. 2621773 for the mark MAX LIFE for “motor oils, lubricants and
greases all for motor vehicles” registered September 17, 2002 (with a filing date of
August 9, 1999). Moreover, Laura Carpenter, Vice President of Franchising for
Valvoline Instant Oil Change, testified that “[f]rom 2000 to 2013, Max Life motor oil
sales in packaged products have always used the Max Life trademark right below the
Valvoline trademark.”89
Respondent filed its application for Registration No. 3450454 for the mark
MAXVOLINE in standard characters and its application for Registration No.
3454800 for the mark MAXVOLINE and design on March 14, 2007. Respondent
claimed first use anywhere and first use in commerce for both marks on April 15,
2008. Respondent introduced no testimony or other evidence that it used its mark
prior to that date. Respondent in its brief does not challenge Petitioners’ priority.

89 Carpenter Testimony Decl. ¶6 (84 TTABVUE 10).
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We find that Petitioners have prior use of their VALVOLINE and MAX LIFE
marks, as well as the prior use of those marks together for, inter alia, lubricating oils,
“motor oils, lubricants and greases all for motor vehicles.”
VI. Likelihood of Confusion
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 likelihood
of confusion. du Pont, 177 USPQ at 567, cited in B&B Hardware, Inc. v. Hargis
Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have
considered each du Pont factor that is relevant or for which there is evidence of record.
See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242
(TTAB 2015) (“While we have considered each factor for which we have evidence, we
focus our analysis on those factors we find to be relevant.”). “[E]ach case must be
decided on its own facts and the differences are often subtle ones.” Indus. Nucleonics
Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973) (internal citations
removed). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
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.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747
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(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods’”) (quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 64 USPQ2d at 1380).
A. The similarity or dissimilarity and nature of the goods, established,
likely-to-continue channels of trade, and purchasers to whom sales
are made.
Petitioners’ VALVOLINE trademark is registered for “lubricating oils” and their
MAX LIFE trademark is registered for “motor oils, lubricants and greases all for
motor vehicles.” Respondent is seeking to register its MAXVOLINE marks for
“lubricants for automobiles.” “Lubricant” is defined as “a substance, as oil or grease,
for lessening friction, especially in the working parts of a mechanism” and “capable
of lubricating; used to lubricate.”90 “Lubricating” is defined as “to apply some oily or
greasy substance to (a machine, parts of a mechanism, etc.) in order to diminish
friction; oil or grease (something).”91 Since Petitioners’ VALVOLINE “lubricating oils”
description of goods is not limited or restricted, it is broad enough to encompass
lubricants for automobiles. Accordingly, the goods are identical.
Because the goods described in Respondent’s registrations and Petitioners’
registrations are identical, we presume that the channels of trade and classes of

90 Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2019). The
Board may take judicial notice of dictionary definitions, including online dictionaries that
exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014),
aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome
Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d
1375, 1378 (TTAB 2006).
91 Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2019).
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purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same channels
of trade to same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752,
159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the
channels of trade and classes of purchasers are considered to be the same); In re Inn
at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018) (“Because the services
described in the application and the cited registration are identical, we presume that
the channels of trade and classes of purchasers are the same.”); United Glob. Media
Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese Syrian
Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028
(TTAB 2011).
B. Conditions under which sales are made.
Sarah Carpenter, Vice President of Franchising for Valvoline Instant Oil Change,
testified on behalf of Petitioners that VALVOLINE and MAX LIFE lubricants are
sold in the “do it for me market” and the “do it yourself market.”92 Ms. Carpenter did
not define those markets. Presumably, the “do it for me market” includes automobile
service stations, “lube shops,”93 including Petitioners’ Valvoline Instant Oil Change
locations,94 automobile dealership service centers, and the like where automobile
owners pay others to have their automobile motor oil changed. The “do it yourself
market” includes automobile owners who service their own automobiles, including

92 Carpenter Testimony Decl. ¶12 (84 TTABVUE 11).
93 Id. at ¶12 (84 TTABVUE 11).
94 Id. at ¶15 (84 TTABVUE 12).
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changing their own oil. Consumers may purchase Petitioners’ VALVOLINE and MAX
LIFE lubricants at retail outlets such as AutoZone, Advance Auto Parts, O’Reilly’s,
Wal-Mart, Napa, etc.95
Because Respondent is seeking to register its MAXVOLINE marks for “lubricants
for automobiles,” without any restrictions as to channels of trade or classes of
consumers, Respondent’s products also may be sold in the “do it for me” and “do it
yourself” markets.
Petitioners counterintuitively argue that because MAX LIFE is designed for use
in cars with higher mileage engines and is a new class of motor oil, purchasers are
more cognizant of the trademarks on the containers and, thus, more likely to confuse
MAX LIFE sold as a VALVOLINE product with MAXVOLINE.96 It seems to us that
if consumers are more cognizant of the trademarks, they will be less likely to confuse
the source of the products, especially because, as discussed below, MAX LIFE is
highly suggestive, it is not famous, and the testimony and evidence regarding the
conjoint use of MAXVOLINE and MAX LIFE ended in 2013.
In any event, because Petitioners’ MAX LIFE description of goods does not specify
use in higher mileage engines, we cannot consider that restriction or limitation to the
description of goods. Our determination regarding the similarity of the goods,
channels of trade and classes of purchasers is based on the products as they are
identified in the application and registrations, respectively. Stone Lion Capital

95 Id. at ¶9 (84 TTABVUE 10).
96 Petitioners’ Brief, pp. 27-28 (98 TTABVUE 37-38).
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Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Octocom Sys. Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
Also, we cannot resort to extrinsic evidence to restrict the nature or use of the
lubricants sold by the parties. See In re Bercut-Vandervoort & Co., 229 USPQ 763,
764 (TTAB 1986) (evidence that relevant goods are expensive wines sold to
discriminating purchasers must be disregarded given the absence of any such
restrictions in the application or registration). We must treat the lubricants as
including general-use lubricants, as well as specialized lubricants, and, therefore,
presume that purchasers for “lubricants” include ordinary consumers who may buy
lubricants without exercising a high degree of consumer care. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1163-64 (recognizing Board
precedent requiring consideration of the “least sophisticated consumer in the class”);
see also In re Sailerbrau Franz Sailer, 23 USPQ2d 1719, 1720 (TTAB 1992) (finding
that all purchasers of wine may not be discriminating because while some may have
preferred brands, “there are just as likely to be purchasers who delight in trying new
taste treats.”).
The conditions under which sales are made weighs in favor of finding a likelihood
of confusion.
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C. Actual confusion
Respondent contends that since at least as early as September 24, 2013, there
have been no reported instances of actual confusion.97 The absence of any reported
instances of confusion is meaningful only if the record indicates appreciable and
continuous use by Respondent of its mark for a significant period of time in the same
markets as those served by Petitioners under their marks. Citigroup Inc. v. Capital
City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344,
98 USPQ2d 1253 (Fed. Cir. 2011); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d
1768, 1774 (TTAB 1992). In other words, for the absence of actual confusion to be
probative, there must have been a reasonable opportunity for confusion to have
occurred. Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007)
(the probative value of the absence of actual confusion depends upon there being a
significant opportunity for actual confusion to have occurred); Red Carpet Corp. v.
Johnstown Am. Enters. Inc., 7 USPQ2d 1404, 1406-1407 (TTAB 1988); Central Soya
Co., Inc. v. N. Am. Plant Breeders, 212 USPQ 37, 48 (TTAB 1981) (“the absence of
actual confusion over a reasonable period of time might well suggest that the
likelihood of confusion is only a remote possibility with little probability of
occurring”).
We analyze Respondent’s impact in the market to determine the probative value
of the lack of any reported instances of confusion. Since April 2008, Respondent has

97 Respondent’s Brief, p. 22 (99 TTABVUE 23).
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posted a website offering the sale of MAXVOLINE lubricants (maxvoline.com).98
However, Respondent did not introduce any testimony or evidence regarding the
number of visitors to its website. Despite the fact that Respondent’s MAXVOLINE
product was offered for sale through AMAZON.com in 2015, Mr. Pappaterra could
not recall the sales volume. At the time of Mr. Papaterra’s deposition [March 2, 2018],
MAXVOLINE was not available through AMAZON.com.99 In his second testimony
deposition [May 11, 2018], Mr. Pappaterra was unable to provide any sales
information.100 Subsequently in his May 11, 2018 deposition, Mr. Pappaterra testified
that between 2008 and 2015 he was actively pursuing customers, but he did not
testify regarding the number of customers he visited nor the geographic extent of his
company’s sales.101 To be clear, Respondent did not introduce any other testimony or
evidence regarding its sales or advertising.
Finally, Respondent introduced four testimony declarations from third-party
witnesses familiar with Respondent’s efforts to sell MAXVOLENE lubricants. The
witnesses are listed below:
1. Ranses Matta, a Marketing Adviser for American Airlines;102

2. Yuki Yunes, a friend and business associate of Respondent’s principal;103

98 Pappaterra Testimony Dep., (March 2, 2018), pp. 31-33 and 73-74 and Exhibits 77 and 81
(93 TTABVUE 34-36, 76-77, and 167-176).
99 Pappaterra Testimony Dep. (March 2, 2018), pp. 52-54 (93 TTABVUE 55-57).
100 Pappaterra Testimony Dep. (May 11, 2018), p. 58 (97 TTABVUE 60).
101 Id. at pp. 88-89 99 (TTABVUE 90-91).
102 85 TTABVUE 4.
103 85 TTABVUE 6.
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3. Humberto Blanco, a person associated with Twin Trading Inc.;104 and

4. Rodolfo Montes, a friend and brother-in-law of Respondent’s principal.105

In addition, Petitioners introduced the testimony deposition of Gabriel Herrero,
principal of Herrero & Sons Corporation, a wholesaler of automotive accessories,
chemicals, and window film, to whom Respondent made a sales pitch.106 Gabriel
Herrero is the only third party in the lubricant industry. The other third parties are,
in essence, four people who are familiar with Respondent’s principal. The third-party
testimony is not probative of the effectiveness of Respondent’s marketing efforts
because it is conclusionary and without details to support the conclusions.
Respondent’s evidentiary showing is insufficient to prove that there has been a
reasonable opportunity for confusion to have occurred. Thus, this du Pont factor is
neutral.
D. The strength of Petitioners’ marks, including the number and nature
of similar marks in use on similar products.
Petitioners argue that “[t]he undisputed record in this proceeding establishes the
strength of the Valvoline and MAX LIFE trademarks and their entitlement to broad
protection.”107 In fact, Petitioners contend that their marks are famous.108 Fame, if it
exists, plays a dominant role in the likelihood of confusion analysis because famous
marks enjoy a broad scope of protection or exclusivity of use. A famous mark has

104 85 TTABVUE 8.
105 85 TTABVUE 10.
106 91 TTABVUE.
107 Petitioners’ Brief, p. 28 (98 TTABVUE 38).
108 Id. at pp. 28-34 (98 TTABVUE 38-44).
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extensive public recognition and renown. Bose Corp. v. QSC Audio Prods. Inc.,
293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton,
214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v.
Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Fame may be measured indirectly by the volume of sales of and advertising
expenditures for the goods and services identified by the marks at issue, “the length
of time those indicia of commercial awareness have been evident,” widespread critical
assessments and through notice by independent sources of the products identified by
the marks, as well as the general reputation of the products and services. Bose Corp.
v. QSC Audio Prods. Inc., 63 USPQ2d at 1305-06 and 1309. Raw numbers alone may
be misleading, however. Thus, some context in which to place raw statistics may be
necessary, for example, market share or sales or advertising figures for comparable
types of goods. Id. at 1309.
Petitioners rely on the following evidence to prove the fame and commercial
strength of their marks:
1. Valvoline motor oil was developed in 1866;109
2. Valvoline motor oil was used by the winning race car in the first
automobile race in North America;110

109 Carpenter Testimony Decl. ¶2(C) (84 TTABVUE 6).
110 Id.
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3. In 1920, the Ford Model T included a dash plaque that read “This Car
Is Filled With Valvoline Motor Oil. We Recommend Its Use. No Other
Oil Should Be Used In This Car.”;111
4. In 1985, Petitioners entered the “do it for me” lubrication service called
Valvoline Instant Oil Change;112
5. In 2000, Petitioners developed MAX LIFE motor oil to help cars with
more than 75,000 miles restore lost horsepower;113
6. In 2007, Petitioners opened the 500th Valvoline Instant Oil Change
location;114
7. Many notable racecar drivers and teams used VALVOLINE motor oil
(e.g., A.J. Foyt, Cale Yarborough, Mario Andretti, and Hendrick Motor
Sports);115
8. Between the years 2000-2016, U.S. sales in dollars of VALVOLINE
products ranged from $700 million to $1.33 billion;116
9. In 2017, VALVOLINE brand U.S. sales generated $1.54 billion;117

111 Id. (84 TTABVUE 7).
112 Id.
113 Id.
114 Id.
115 Id. (84 TTABVUE 7-8).
116 Id. at ¶¶3-4 (84 TTABVUE 8-9). Ms. Carpenter provided a worldwide sales figure but
testified that “domestic sales would have been in excess of 65% of the identified sales. Id. at
¶4. The figures we use in the main body are 65% of the worldwide sales figures.
117 Id. at ¶5 (84 TTABVUE 9).
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10. Between the years 2000-2016, U.S. sales of VALVOLINE products
ranged from 103 million gallons to 126 million gallons;118
11. In 2013, there were over 900 Valvoline Instant Oil Change locations;119
12. In 1999, Petitioners launched a second oil change service center,
Valvoline Express Care. Valvoline Express Care grew from 25 locations
in 2000 to approximately 330 in 2015;120
13. From 2008 to 2017, MAX LIFE oil sold in Valvoline Instant Oil Change
locations increased from over 2,000,000 gallons to over 7,000,000
gallons;121
14. MAX LIFE automatic transmission fluid sold in the “do it yourself”
market increased from over 800,000 gallons in 2008 to over 1,700,000
gallons in 2016;122
15. Total U.S. sales of MAX LIFE automatic transmission fluid increased
from over 1.2 million gallons in 2003 to over 2.8 million gallons in
2006;123 16. MAX LIFE was recognized in Lubricant World magazine’s 2001 issue as
the 2001 Product of the Year;124

118 Id. at ¶¶3-4 (84 TTABVUE 8-9).
119 Id. at ¶12 (84 TTABVUE 11).
120 Id. at ¶15 (84 TTABVUE 12).
121 Id.
122 Id. at ¶13 (84 TTABVUE 12).
123 Id.
124 Id. at ¶16 (84 TTABVUE 12).
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17. From 2005 through 2013, Petitioners’ advertising expenditures for
VALVOLINE and MAX LIFE lubricants have been substantial;125
18. Since 2004, there have been at least 1,000,000 calls to Petitioners’ call-
in number for customers and prospective customers to obtain
information about VALVOLINE and MAX LIFE products.126
We find that the VALVOLINE mark is famous. Respondent does not contend to
the contrary.127 Total sales of VALVOLINE products are in the hundreds of millions
to billions of dollars and hundreds of millions of gallons. Petitioners have spent tens
of millions of dollars advertising VALVOLINE products through 2013. Petitioners’
promotional efforts have been rewarded with a high degree of brand awareness of
this mark. Although the record falls short of establishing fame of the MAX LIFE
mark, the evidence shows that the mark has achieved commercial success.
Respondent counters by arguing that Petitioners’ mark MAX LIFE is highly
descriptive, if not generic, and has no probative value in assessing likelihood of
confusion.128 Petitioners are the owners of four registrations for MAX LIFE:
1. Registration No. 2513312 for the mark MAXLIFE (typed drawing form) for
“motor oils, lubricants and greases, all for automobiles”;129

125 Id. at ¶17 (83 TTABVUE 13). Because Petitioners designated their advertising
expenditures as confidential, we refer to them in general terms. Also, Ms. Carpenter testified
as to Petitioners’ advertising through 2013.
126 Id. at ¶19 (84 TTABVUE 13).
127 Respondent’s Brief, p. 21 (99 TTABVUE 22) (“b. Fame of Marks. Petitioner’s [sic] MAX
LIFE mark is not famous and generic [sic] which cannot be considered famous.”).
128 Respondent’s Brief, pp. 14-16 (99 TTABVUE 15-17).
129 82 TTABVUE 42-47; 84 TTABVUE 127-137.
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2. Registration No. 2518757 for the mark MAX LIFE (typed drawing form) for
“automatic transmission fluid”;130
3. Registration No. 2518758 for the mark MAXLIFE (typed drawing form) for
automatic transmission fluid”;131 and
4. Registration No. 2621773 for the mark MAX LIFE (typed drawing form) for
“motor oils, lubricants and greases, all for automobiles.”132
All four marks are registered on the Principal Register, without a claim of
acquired distinctiveness, and without a disclaimer of any portion of the mark.
Sections 8 and 15 declarations of use and incontestability have been accepted and
acknowledged and each registration has been renewed. Because MAX LIFE has been
registered, it is entitled to a presumption of validity by Section 7(b) of the Trademark
Act, 15 U.S.C. § 1057(b), and “moreover, in the absence of a Section 2(f) claim in the
registration, that the mark is inherently distinctive for the goods.” Tea Bd. of India
v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006).
Because there is no counterclaim to cancel any of the MAX LIFE registrations, we
may not consider Respondent’s contention that MAX LIFE is generic or merely
descriptive. Such arguments constitute an attack on the validity of the registrations.
(3)(i) A defense attacking the validity of any one or more of
the registrations pleaded in the petition shall be a
compulsory counterclaim if grounds for such counterclaim
exist at the time when the answer is filed. If grounds for a
counterclaim are known to respondent when the answer to

130 82 TTABVUE 49-54; 84 TTABVUE 139-149.
131 82 TTABVUE 56-61; 84 TTABVUE 151-160.
132 82 TTABVUE 35-40; 84 TTABVUE 114-125.
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the petition is filed, the counterclaim shall be pleaded with
or as part of the answer. …
(ii) An attack on the validity of a registration pleaded by a
petitioner for cancellation will not be heard unless a
counterclaim or separate petition is filed to seek the
cancellation of such registration.
Trademark Rule 2.114(b)(3)(i) and (ii), 37 C.F.R. § 2.114(b)(3)(i) and (ii).
Nevertheless, we acknowledge that Petitioners MAX LIFE marks suggest that the
products are long lasting or preserve the life of the products in which they are used.
Finally, with respect to the number and nature of similar marks in use on similar
products, we note that Respondent sold HAVOLINE motor oil.133 While the Federal
Circuit has held that “extensive evidence of third-party use and registrations is
‘powerful on its face,’ even where the specific extent and impact of the usage has not
been established,” see Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA
v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir.
2015) (emphasis added) (citing Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)), the record of third-party use in this
case is far less than the amount of evidence found convincing in Jack Wolfskin and
Juice Generation wherein “a considerable number of third parties’ use [of] similar
marks was shown.” Id.
Considering the record as a whole, we find that Petitioners’ VALVOLINE marks
are appropriately placed on the “strong” side of the “‘spectrum from very strong to
very weak,’” while Petitioners’ MAX LIFE marks are appropriately placed in the

133 Gabriel Pappaterra Testimony Dep., pp. 6-7 (93 TTABVUE 9-10); Gabriel Herrero
Testimony Dep., pp. 15-16 (91 TTABVUE 18-19).
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middle of the spectrum. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC,
857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting In re Coors Brewing
Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)); Tao Licensing, LLC v.
Bender Consulting Ltd., 125 USPQ2d at 1059 (“The commercial strength of
Petitioner’s TAO mark outweighs any conceptual weakness.”).
E. The similarity or dissimilarity of the marks in their entireties in terms
of appearance, sound, connotation, and commercial impression.
As noted above, Petitioners allege that “Respondent’s trademarks MaXvoline [and
design] and Maxvoline are confusingly similar to Petitioners’ conjointly used
trademarks Valvoline and Max Life, when the ‘Max’ in Max Life is combined with
‘voline’ from Valvoline to form MaXvoline.”134 Petitioners are required to prove that
the use of their pleaded marks together has been effective to qualify for a conjoint use
analysis. See Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1349
(TTAB 2017). The prerequisites for this showing are set forth in Schering-Plough
HealthCare Prods., Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1326 (TTAB 2007).
In order that opposer’s marks may be considered together,
two elements must be satisfied before traditional likelihood
of confusion analysis can proceed. First, it must be
established that the marks have been and are being used
together on a single product or in marketing. See H.D.
Hudson Manufacturing Co. v. Food Machinery and
Chemical Corp., 230 F.2d 445, 109 USPQ 48 (CCPA 1956);
and Simoniz Company v. Hysan Products Company,
142 USPQ 377 (TTAB 1964). Further, it must be
established that opposer’s marks are used in such a fashion
that it would be proper to combine them for purposes of
comparison, that is, that they have been used and/or
advertised conjointly in such a manner and to such an

134 Petitioners’ Brief, p. 7 (98 TTABVUE 17); see also Third Amended Petition for Cancellation
¶¶12-13 (54 TTABVUE 6).
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extent in connection with a single product that they have
come to be associated together, in the mind of the
purchasing public, as indications of origin for opposer’s
product. (citations omitted).
See also Bell’s Brewery, 125 USPQ2d at 1349.
Laura Carpenter testified about Petitioners’ conjoint use of the VALVOLINE and
MAX LIFE trademarks.
6) From 2000 to 2013, Max Life motor oil sales in packaged
products have always used the Max Life trademark right
below the Valvoline trademark. See examples attached as
VAL Ex-41.
135

7) Max Life brand oil produced domestically in packaged
product exceeded:
(1) 200,000 gallons per month in 2001;
(2) 400,000 gallons per month in 2002; and
(3) 500,000 gallons per month in 2003.
Almost all container sales have displayed “Max” above
“Life” and above and alongside [and] below the trademark
Valvoline. See VAL Ex.-37.

135 VAL-Ex 41 (84 TTABVUE 25).
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136

* * *
14) All packaged products of Max Life ATF [automatic
transmission fluid] have also included a prominent display
of the Valvoline trademark. As with motor oil usage, the
Max Life trademark when applied to ATF packaged
products has been always conjointly used with the
Valvoline trademark. A photo of a Max Life ATF container
is attached as VAL-47.
137

136 VAL-Ex 37 (84 TTABVUE 17).
137 VAL-Ex 47 (84 TTABVUE 45).
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* * *
17) … Max Life brand motor oil is currently and has been
prominently displayed on the website Valvoline.com since
before 2001. VAL-49 shows an advertisement on the site
for MaxLife motor oil as captured by the
waybackmachine.org on 2/16/2007 and for the sale of
MaxLife ATF captured by the waybackmachine.org on
2/16/2007. The illustrations for the oil and ATF packaged
products accurately show how the packaged products
appeared in retail stores. Each container shows the
prominent display of the Valvoline and Max Life
trademarks used together.138
139

138 84 TTABVUE 10-13. Through a notice of reliance, Petitioners introduced webpages from
Valvoline.com dated August, 14, 2002, April 23, 2003, June 19, 2004, October 16, 2005, and
February 16, 2007 from web.archive.org (Wayback Machine). 82 TTABVUE 63-72.
139 VAL Ex. 49 (84 TTABVUE 47).
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In addition, Ms. Carpenter introduced screen shots for television advertisements
aired between 2000 and 2007 where VALVOLINE and MAXLIFE were conjointly
used.140
Petitioners have satisfied the first element of the test by introducing evidence that
the VALVOLINE and MAX LIFE trademarks have been and are being used together
on lubricants. However, Petitioners have not met the second part of the test by
establishing that VALVOLINE and MAX LIFE “have been used and/or advertised
conjointly in such a manner and to such an extent in connection with a single product
that they have come to be associated together, in the mind of the purchasing public,
as indications of origin for opposer’s product.” Schering-Plough, 84 USPQ2d at 1326.
First, even though Ms. Carpenter signed her declaration on March 9, 2018, she
testified that between “2000 to 2013, Max Life motor oil sales in packaged products
have always use the Max Life trademark right below the Valvoline trademark,” but
was essentially silent about events from 2013 through 2018.141 In this regard, we note
that Petitioners introduced copies of their websites through 2007 and television
advertisements that aired through 2004. Petitioners did not introduce any testimony

140 Carpenter Testimony Decl. ¶20 and Exhibits 50-51 and 54 (84 TTABVUE 13-14 and 50-
54 and 58). Ms. Carpenter testified that the advertisements were “used on television for
various years from 2000 to 2007,” but she only introduced exhibits used in the years 2000-
2004.
141 Ms. Carpenter testified that “[g]allons of Max Life sold increased from over 2,000,000 sold
in 2008 to over 7,000,000 sold in 2017 in the Valvoline Instant Oil Change business alone”
and that the volume of MAX LIFE automatic transmission fluid for the “do it yourself”
market has increased to over 1,700,000 gallons in 2016. Carpenter Testimony Decl. ¶¶12 and
13 (84 TTABVUE 8-9). However, there is no testimony or evidence regarding how MAX LIFE
is packaged and labeled for sale in the “do it for me” market or what people and how many
people see the products. Likewise, there is no testimony or evidence regarding the number of
“do it youselfers” who change their own automatic transmission fluid.
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or evidence about packaging and advertising after 2013. Also, Petitioners did not
provide any testimony or evidence as to how many times their television
advertisements appeared or an estimate as to how many viewers saw the
advertisements.
Even for the evidence displaying both marks, there is no reason to assume that
purchasers would see them as anything other than two distinct marks: (i) a house
mark (VALVOLINE); and (ii) a product mark (MAX LIFE). For example, the cover of
Lubricants World magazine announcing MAX LIFE as the 2001 Product of the Year
reads “Valvoline’s MaxLife hits its mark with higher mileage vehicles,” as opposed to
VALVOLINE MAX LIFE.142 The use of the possessive emphasizes the house mark
versus the product mark whereas VALVOLINE MAX LIFE would have been
perceived as a conjoint use of the two marks. Although the article about Petitioners’
award for best product of 2001 refers to both VALVOLINE and MAX LIFE
individually, it does not refer to them conjointly. Thus, at least as early as 2001, the
editors of Lubricants World magazine did not perceive the two marks as being
associated together as one mark and consumers would not have been exposed to
conjoint use through this article.
While Petitioners have displayed VALVOLINE and MAX LIFE on the same
products and in some of their advertising, “it does not necessarily follow therefrom
that purchasers would automatically react by combining parts of such marks in
comparing [Respondent’s] mark to them.” Simoniz Co. v. Hysan Prods. Co., 142 USPQ

142 84 TTABVUE 19.
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at 378. What is missing is testimony or evidence regarding consumer propensity to
dissect Petitioners’ two marks and come up with a third. See Am. Cyanamid Co. v. J.
Josephson, Inc., 192 USPQ 765, 768 (TTAB 1976) (to prove the effectiveness of
plaintiff’s conjoint, “it is believed necessary for the proponent thereof to submit
evidence of consumer reaction to applicant’s mark or of consumer propensity to
dissect two well-known marks and come up with a third mark.”). In other words,
Petitioners needed to introduce testimony or evidence as to whether consumers
associate, or how they perceive, Petitioners’ use of VALVOLINE and MAX LIFE
together. See Mallinckrodt, Inc. v. CIBA-GEIGY Corp., 195 USPQ 665, 667 (TTAB
1977) (to consider opposer’s marks KOBAN, TOBAZ and PO-SAN marks together,
they must have been used or advertised together in such a manner that “they have
all come to be associated together.”).
On the basis of the present record, there is no reason to find that purchasers,
whether “do it for me” or “do it yourself,” would combine syllables or words from
Petitioners’ two marks when ordering lubricants for automobiles. The facts in this
case may be contrasted with the facts in Sperry Rand Corp. v. Remvac Sys. Corp., 172
USPQ 415, 416 (TTAB 1971), where the Board found that
opposer in promoting its corporate image through
advertisements in such media as television, nationally
distributed trade and consumer publications, and outdoor
advertising and the like, has consistently displayed
conjointly its marks and trade names “REMINGTON”,
“REMINGTON RAND” and “UNIVAC”, and that the cost
of such advertising for the period October, 1967 to January
25, 1971 alone exceeded $4,500,000. (Emphasis added).
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In this case, Petitioners’ testimony and evidence regarding its conjoint use of
VALVOLINE and MAX LIFE stops in 2013, whereas the testimony and evidence
regarding conjoint use in Sperry Rand went through the time of trial. See also
Schering-Plough HealthCare Prods., Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1327
(TTAB 2007) (finding that the record contains evidence similar to that in Sperry Rand
Corp. “to establish that the marks have come to be known together as indications of
origin for opposer’s goods.”).
Assuming arguendo that Petitioners met their evidentiary burden that the use of
their pleaded marks together has been effective to qualify for a conjoint use analysis,
Petitioners failed to show that either their “do it for me” or “do it yourself” consumers
would be likely to delve into the derivation of Respondent’s marks much less
remember Petitioners’ two marks and go through the mental gymnastics necessary
to equate Respondent’s marks with Petitioners’ marks. In other words, Petitioners
failed to introduce any testimony or evidence regarding consumer reaction to
Respondent’s marks. See Am. Cyanamid Co., 192 USPQ at 768.
The fallibility of the memory of trademarks by consumers
and their predisposition to transpose marks have been
recognized by this and other tribunals in resolving the
question of likelihood of confusion where the situation
involves one mark vis-a-vis another mark. (Internal
citations omitted). But, here there are three marks
involved and, to arrive at the outcome urged by applicant
[sic], an additional mental exercise is required, and we are
not persuaded on the record before us that the average
consumer under ordinary marketing conditions would be
likely to make this association.
Id. This is especially true with respect to Petitioners’ MAX LIFE trademark which
suggests that Petitioners’ lubricants provide long lasting protection. The term “Max”
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is a shortened form of the word “Maximum” meaning “the greatest quantity or
amount possible, assignable, allowable, etc.” or “the highest amount, value, or degree
attained or recorded.”143 See Toro Mfg. Corp. v. Kearney-Nat’l Inc., 168 USPQ 383,
383 (TTAB 1970) (“While we agree with opposer that ‘PRO’ is an abbreviation for
‘professional’ and that ‘POWER’ is a merely descriptive term as applied to applicant’s
goods, such factors do not necessarily lead to a conclusion that applicant’s composite
mark [POW-R-PRO] is confusingly similar to either of opposer’s marks
[PROFESSIONAL and POWER HANDLE], or a combination thereof.”). Petitioners
failed to make the case that consumers will perceive that Respondent’s MAXVOLINE
mark is a combination of Petitioners’ VALVOLINE and MAX LIFE trademarks.
We find that the marks are not similar in their entireties in terms of appearance,
sound, meaning or commercial impression.
F. Summary of the du Pont factors.
We have carefully considered all arguments and evidence properly of record,
including any not specifically discussed herein, as they pertain to the relevant
likelihood of confusion factors. To the extent that any other du Pont factors for which
no evidence was presented by Petitioners or Respondent nonetheless may be
applicable, we treat them as neutral.
Any of the du Pont factors may play a dominant role in our analysis, and in some
cases, a single factor is dispositive. Champagne Louis Roederer S.A. v. Delicato
Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460 (Fed. Cir. 1998) (holding that the

143 Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2019).
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Board did not err in deciding likelihood of confusion based solely on dissimilarity of
marks, noting that “we have previously upheld Board determinations that one
DuPont factor may be dispositive in a likelihood of confusion analysis, especially
when that single factor is the dissimilarity of the marks”); Kellogg Co. v. Pack’em
Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991). We find this to be
such a case.
We have found that the parties’ goods, customers, and channels of trade are
identical; that lubricants for automobiles may be purchased without a great deal of
consumer care; and that Petitioners’ VALVOLINE mark is afforded a broad scope of
protection and their MAX LIFE mark is afforded the normal scope of protection to
which inherently distinctive marks are entitled. Nonetheless, on the record before us,
we find that Petitioners failed to meet their evidentiary burden to be able to rely on
the combination of their VALVOLINE and MAX LIFE trademarks and, in the
alternative, that the dissimilarity of the marks in appearance, sound, connotation,
and overall commercial impression outweighs the other du Pont factors. For those
reasons, we find the first du Pont factor to be outcome-determinative.
G. Conclusion
Considering the record evidence as a whole, we find that Petitioners have not
carried their burden to establish by a preponderance of the evidence that Applicant’s
MAXVOLINE marks are likely to cause consumer confusion with Petitioners’ marks
VALVOLINE and MAX LIFE.
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VII. Laches
In the event that our finding that there is no likelihood of confusion is reversed on
appeal, we turn to Respondent’s affirmative defense of laches.
Section 19 of the Trademark Act, 15 U.S.C. § 1069, provides that in “all inter
partes proceedings equitable principles of laches, estoppel, and acquiescence, where
applicable, may be considered and applied.” Laches is an available equitable defense
in a cancellation proceeding based upon a likelihood of confusion. Nat’l Cable
Television Ass’n Inc. v. Am. Cinema Editors, Inc., 971 F.2d 1572, 19 USPQ2d 1424,
1431 (Fed. Cir. 1991); Ava Ruha Corp. v. Mother’s Nutritional Ctr., Inc., 113 USPQ
1575, 1580 (TTAB 2015). “In order to prevail on the affirmative defense of laches,
Respondent is required ‘to establish that there was undue or unreasonable delay [by
Petitioner] in asserting its rights, and prejudice to [Respondent] resulting from the
delay.’” Ava Ruha Corp., 113 USPQ2d at 1580 (quoting Bridgestone/Firestone
Research Inc. v. Automobile Club de l'Ouest de la France, 245 F.3d 1359, 58 USPQ2d
1460, 1462 (Fed. Cir. 2001)); see also Nat’l Cable Television Ass’n, 19 USPQ2d at 1431.
A. Undue or unreasonable delay
“We turn first to a calculation of the length of delay between the time when a
petitioner first has notice of a defendant and its mark and the time when petitioner
files the petition for cancellation.” Ava Ruha Corp., 113 USPQ2d at 1580. Petitioner
“must be shown to have had actual knowledge or constructive notice of [respondent’s]
trademark use to establish a date of notice from which delay can be measured.” Id.
“‘In the absence of actual knowledge [of trademark use] prior to the close of the
opposition period, the date of registration is the operative date for laches,’ as it
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provides constructive notice to petitioner of the registrant’s claim of ownership.” Id.
(quoting Teledyne Tech. Inc. v. Western Skyways Inc., 78 USPQ2d 1203, 1210 n.10
(TTAB 2006), aff'd unpublished opinion, Appeal Nos. 2006-1366 and 1367 (Fed. Cir.
2006)).
Respondent’s registrations issued on June 17, 2008 and June 24, 2008. Petitioners
commenced this proceeding on June 6, 2013.144 However, in a letter dated October 11,
2007, Petitioners’ predecessor-in-interest sent Gabriel Pappaterra, Respondent’s
Principal, Petitioners’ demand that Respondent abandon its MAXVOLINE
applications on the ground that they are likely to cause confusion with Petitioners’
VALVOLINE and MAX LIFE trademarks.145 On June 10, 2009, Petitioners sent
Respondent’s counsel another letter demanding that Respondent abandon the
registrations.146 Respondent argues that laches is applicable because Petitioners
waited until a few weeks before the five year anniversary of the issuance dates of the
MAXVOLINE registrations before filing the Petition for Cancellation even though
Petitioners had knowledge of the marks and the registrations prior to their
registration.147 We must consider the reasons for Petitioners’ delay.
After learning about Respondent’s applications for the MAXVOLINE marks,
Petitioners “tried to find out what [Gabriel Pappaterra] was doing.”148 Petitioners did

144 1 TTABVUE.
145 Gabriel Pappaterra Testimony Dep. (5-11-2018), p. 30 and Exhibit 10 (97 TTABVUE 32
and 149).
146 Id. at p. 31 and Exhibit 11 (97 TABVUE 33 and 150).
147 Respondent’s Brief, pp. 11-12 (99 TTABVUE 12-13).
148 Venne Discovery Dep. (87 TTABVUE 10); see also 81 TTABVUE 10.
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not believe that Respondent was using the MAXVOLINE marks because “[i]f there
was any use, it was diminimus [sic] because we couldn’t find any use.”149 Petitioners
continued to monitor Respondent’s use of the MAXVOLINE marks,150 but was never
able to determine that the marks were in use.151 In addition, between 2007 and 2013,
Petitioners were engaged in other enforcement actions against third parties using the
VALVOLINE trademark.152
Respondent’s sales have been negligible. Respondent earned no income from the sale
of MAXVOLINE product from 2007 to 2010.153 In fact, Respondent’s first sale was in
2012.154 Gabriel Pappaterra was unable to testify regarding the Respondent’s sales
volume even though he is Respondent’s principal.155 As we discussed in the analysis
of actual confusion, the only third party in the lubricant industry to testify regarding
Respondent’s attempt to sell its MAXVOLINE product was Gabriel Herrero, principal
of Herrero & Sons Corporation, a wholesaler of automotive accessories, chemicals,
and window film, to whom Respondent made a sales pitch.156 The other third parties
are four people who are familiar with Respondent’s principal and who provide

149 Venne Discovery Dep., p. 8 (81 TABVUE 11).
150 Id. at p. 9 (81 TTABVUE 12).
151 Id. at p. 15 (81 TTABVUE 18).
152 Id. at pp. 16-18 (81 TTABVUE 19-21).
153 Pappaterra Discovery Dep., p. 43 (79 TTABVUE 46); see also Pappaterra Testimony Dep.
(March 2, 2018), p. 12 (93 TTABVUE 15) (no sales of MAXVLOINE product as of April 15,
2008).
154 Pappaterra Testimony Dep. (May 11, 2018), pp. 69 and 90 (97 TTABVUE 71 and 92).
155 Pappaterra Testimony Dep. (March 2, 2018), p. 54 (93 TTABVUE 57); see also Pappaterra
Testimony Dep. (May 11, 2018), p. 58 (97 TTABVUE 60).
156 91 TTABVUE.
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testimony that is conclusionary and without details to support the conclusions. From
the third-party testimony, we find that Respondent’s use of its MAXVOLINE marks
has had a negligible, if any, impact in the lubricant market.
“The defense of laches is not determined by adherence to rigid legal rules; rather,
we analyze laches by a consideration of the specific facts and a balancing of the
respective interests and equities of the parties, as well as of the general public.” Kemi
Organics, LLC v. Gupta, 126 USPQ2d 1601, 1612 (TTAB 2018) (quoting Jansen
Enters. Inc. v. Rind, 85 USPQ2d 1104, 1117 (TTAB 2007)). Taking into account the
“respective interests and equities of the parties,” including Respondent’s negligible
sales and Petitioners’ actions against other third parties, we find that Petitioners’
delay in seeking cancellation of Respondent’s registrations was not unreasonable. See
Kemi Organics, supra; see also Cullman Ventures, Inc. v. Columbian Art Works, Inc.,
717 F. Supp. 96, 13 USPQ2d 1257, 1280 (S.D.N.Y. 1989) (a trademark owner is “not
required to constantly monitor every nook and cranny of the entire nation and to fire
both barrels of [its] shotgun instantly upon spotting a possible infringer.”). Compare
Bridgestone/Firestone Research Inc. v. Automobile Club de l'Ouest de la France, 245
F.3d 1359, 58 USPQ2d 1460, 1463 (Fed. Cir. 2001) (undue delay found, in part, where
there was widespread commercial use of defendant’s mark); Teledyne Tech. Inc. v.
Western Skyways Inc., 78 USPQ2d at 1210 (3.5 years of use with documentary
evidence of sales was sufficient to find undue delay). Petitioners were justified in
waiting to see if the MAXVOLINE product would survive, let alone impact the
lubricant market before engaging in the time, effort and expense of a cancellation
proceeding. Otherwise, the law of laches would require each trademark owner to file
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a notice of opposition, petition for cancellation, or trademark infringement action on
first notice and ask questions later. Respondent has thus failed to prove its laches
defense. For the sake of completeness, however, we will determine whether
Respondent showed prejudice resulting from Petitioners’ delay.
B. Prejudice
“Laches is ‘principally a question of the inequity of permitting the claim to be
enforced—an inequity founded upon some change in the condition or relations of the
property or the parties.’” Bridgestone/Firestone Research Inc., 58 USPQ2d at 1463
(quoting Galliher v. Cadwell, 145 U.S. 368, 373 (1892)). Mere delay in asserting a
trademark-related right does not necessarily result in changed conditions sufficient
to support the defense of laches. There must also have been some detriment due to
the delay. See Bridgestone/Firestone Research Inc., supra (citing Advanced
Cardiovascular Sys. v. Scimed Life Sys., 988 F.2d 1157, 26 USPQ2d 1038, 1041 (Fed.
Cir. 1993)). “Prejudice is generally shown by the fact that in reliance on petitioner’s
silence, respondent built up a valuable business and good will around the mark
during the time petitioner never objected.” Alfacell Corp. v. Anticancer Inc.,
71 USPQ2d 1301, 1307 (TTAB 2004).
Two general categories of prejudice may flow from an unreasonable delay:
prejudice at trial due to loss of evidence or memory of witnesses, and economic
prejudice based on loss of time or money or foregone opportunity. See A.C. Aukerman
Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 22 USPQ2d 1321, 1328-29 (Fed. Cir.
1992) (en banc). Respondent argues that it suffered both prejudice at trial and
economic prejudice.
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With respect to prejudice at trial, Respondent argues that because of Petitioners’
delay, Gabriel Pappaterra, Respondent’s principal, had difficulty at trial
remembering the specifics of Respondent’s business deals or “to keep the records that
show the usage and customer interactions.”157 Respondent also points out that
Vernon Venne, former attorney for “Ashland” and former President of Ashland
Licensing & Intellectual Property LLC, could not recall why Petitioners failed to file
a notice of opposition to Respondent’s MAXVOLINE applications.158 However, Mr.
Venne testified that Petitioners were unable to determine whether Respondent was
using the MAXVOLINE marks because “[i]f there was any use, it was diminimus [sic]
because we couldn’t find any use,”159 and because Petitioners’ continued efforts to
monitor Respondent’s use of the MAXVOLINE marks160 never revealed that the
MAXVOLINE marks were in use.161 As noted above, Respondent’s sales have been
negligible and its marketing efforts limited to essentially customer visits by Gabriel
Pappaterra.162 The MAXVOLINE business has always been Gabriel Pappaterra.163
With the exception of Gabriel Pappaterra’s inability to recall how many people to
whom he showed the MAXVOLINE label and tried to sell the product164 and the

157 Respondent’s Brief, pp. 12-13 (99 TTABVUE 13-14).
158 Respondent’s Brief, p. 13 (99 TTABVUE 14) (citing Venne Discovery Dep., p. 8
(81 TTABVUE 11 and 87 TTABVUE 10).
159 Venne Discovery Dep., p. 8 (81 TABVUE 11).
160 Id. at p. 9 (81 TTABVUE 12).
161 Id. at p. 15 (81 TTABVUE 18).
162 Pappaterra Discovery Dep., p. 97 (79 TTABVUE 111).
163 Id. at p. 54 (79 TTABVUE 57); Pappaterra Testimony. Dep. (March 2, 2018), p. 77
(93 TTABVUE 80); Pappaterra Testimony Dep. (May 11, 2018), p. 85 (97 TTABVUE 87).
164 Pappaterra Testimony Dep. (March 2, 2018), p. 46 (93 TTABVUE 49).
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extent of Respondent’s sales,165 Mr. Pappaterra was able to clearly testify regarding
his business plan, starting the business, marketing product, transferring ownership
of the business to his different corporations, the instability of the price of oil in 2007-
08 which hindered Respondent’s sales efforts, and much more.
Respondent’s contention that it was prejudiced at trial because of the difficulty of
keeping the records that show the usage and customer interactions rings hollow in
light of the documents Respondent introduced during Gabriel Pappaterra’s May 11,
2018 testimony deposition.166 Respondent introduced, inter alia, the Sunpoint
International Group USA Project Plan,167 the October 11, 2007 protest letter from
Petitioners’ predecessor-in-interest,168 the June 2009 protest letter from
Petitioners,169 a 2007 receipt for Respondent’s website,170 and emails and invoices
dated April 8, 2008 through April 2014.171
Respondent failed to prove that it suffered prejudice at trial.
We now turn to economic prejudice.
Economic prejudice arises when a defendant suffers the
loss of monetary investments or incurs damage that likely
would have been prevented by an earlier suit. A.C.
Aukerman Co. v. R. L. Chaides Construction Co., 960 F.2d
1020, 22 USPQ2d 1321 (Fed. Cir. 1992). A nexus must be
shown between the delay in filing suit and the
expenditures; the alleged infringer must change his

165 Id. at p. 54 (93 TTABVUE 57).
166 97 TTABVUE.
167 97 TTABVUE 27 and 117.
168 97 TTABVUE 30 and 149.
169 97 TTABVUE 31 and 150.
170 97 TTABVUE 34 and 153.
171 97 TTABVUE 35-38 and 154-189.
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position because of and as a result of the plaintiff’s delay.
The essential inquiry is to determine if there was a change
in the economic position of the alleged infringer during the
period of delay. State Contracting & Engineering Corp. v.
Condotte America, Inc., 346 F.3d 1057, 68 USPQ2d 1481
(Fed. Cir. 2003).
Alfacell Corp., 71 USPQ2d at 1307.
Respondent contends that it “moved forward spending money and capital on
supplies, labels and marketing for their [sic] products using the marks,”172 without
providing any specifics about the purported detriment it alleges to have suffered
because of Petitioners’ delay in filing the petition for cancellation. As previously
discussed, Respondent’s sales and promotional efforts have been negligible. In
addition, to keep its fixed prices low, Respondent sought private label contracts for
MAXVOLINE lubricants which Respondent would fill when customers placed orders.
Thus, Respondent had no inventory or warehousing costs.173 And, as noted above,
Gabriel Pappaterra is, in essence, Respondent, and there is no testimony or evidence
about any other expenses that Respondent incurred to grow its business. Finally, we
lack any testimony or evidence which sheds light on the effect and success of
Respondent’s promotional efforts.
The facts in this proceeding do not support any claim of damage to Respondent
arising from Petitioners’ purported inaction so as to estop Petitioners from seeking to
cancel Respondent’s MAXVOLINE registrations. In other words, Respondent’s

172 Respondent’s Brief, p. 13 (99 TTABVUE 14).
173 Pappaterra Discovery Dep., pp. 26-27, 29 and 80 (79 TTABVUE 29-30, 32 and 93);
Pappaterra Testimony Dep. (March 2, 2018), pp. 17, 28-29, 36, 44-45 (93 TTABVUE 20, 31-
32, 39, 47-48).
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testimony and evidence does not show how Petitioners’ delay in seeking to cancel the
MAXVOLINE registrations affected Respondent’s investment in, development of,
commercial use, and promotion of the MAXVOLINE marks. See Alfacell Corp.,
71 USPQ2d at 1308; Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400, 403
(TTAB 1964) (“in view of applicant’s diminution of sales and promotion of “SLEEX”
garments, the facts in this proceeding cannot support any claim of damage to
applicant arising from opposer’s supposedly ‘inaction so as to estop opposer from
objecting to the registration sought by applicant.’”); John Walker & Sons, Ltd. v. The
Am. Tobacco Co., 110 USPQ 249, 250-51 (Comr., 1956) (because the record fails to
show that applicant invested a substantial amount in its mark or that the business
expanded, applicant will not be prejudiced).
Respondent failed to prove that it will suffer economic prejudice.
Because Respondent failed to prove that it will suffer prejudice at trial or economic
prejudice, Respondent’s affirmative defense of laches fails.
VIII. Abandonment Through Naked Assignment
As discussed above, Petitioners claim that Respondent’s MAXVOLINE
registrations should be cancelled because “the Registrations at issue were transferred
to Respondent were ‘naked assignments,’ otherwise known as ‘transfers in gross,’
because the purported assignments of the trademark rights failed to also include an
assignment of the goodwill associated with those trademarks.”174 This is an
abandonment claim based on an invalid assignment.

174 Third Amended Petition for Cancellation ¶19 (54 TTABVUE 8).
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The issue before us is the effect of the written assignments that fail to include the
goodwill associated with the MAXVOLINE marks. An invalid assignment can only be
“abandonment” under federal law if the invalid assignment “causes the mark … to
lose its significance as a mark.” Section 45 of the Trademark Act, 15 U.S.C. § 1127.
Whether an invalid assignment is an abandonment of the mark depends upon the
circumstances surrounding the purported transfer and use of the mark by
Respondent. Roush Bakery Prods. v. F.R. Lepage Bakery, Inc., 13 USPQ2d at 1051;
see also Sterling Brewers, Inc. v. Schenley Indus., Inc., 441 F.2d 675, 169 USPQ 590,
593 (CCPA 1971) (“the determination of abandonment is peculiarly dependent on the
facts of each particular situation and remarks in prior opinions are of little help.”).
The assignments of Respondent’s MAXVOLINE marks in this case were not
invalid. Gabriel Pappaterra transferred all the property rights from his sole
proprietorship to his wholly-owned corporation Sunpoint International Group, Inc.
and then from Sunpoint International Group, Inc. to his wholly-owned corporation
Sunpoint International Group USA Corp. At all times, Mr. Pappaterra was the head
of the companies and he interacted with the customers.175
Q. The only asset referred there [the two assignments]
is the Valvoline [sic] trademark, correct?
A. Again, I’m not an expert in trademark, but it’s been
me all the time since the beginning, and I pass all
the assets and whatever is included from one to
another.

175 Pappaterra Testimony Dep. (May 11, 2018), pp. 11-13 (97 TTABVUE 13-15).
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Q. Okay. What - - what documents do you have showing
the transfer of any assets from the British Virgin
Islands entity to the U.S. entity?
* * *
Q. Is there any document transferring assets from the
British Virgin Island corporation?
A. I mean, it wasn’t necessary. It was myself. Any - - I
didn’t need that formality within my companies.176
* * *
Q. And that’s when you transferred as an individual to
Sunpoint British Virgin Islands [the 2008
assignment]?
A. That is correct. I transferred all of the assets of, and
that’s the only document that I have.177
* * *
A. Because we made a mistake, we didn’t put all of the
assets and all of the - -
Q. Fair enough.
A. - - when it was.178
* * *
A. So the bottom line is that I - - I transfer from me to
the other company and then to the other company.
It was me all the time, and here are the transfer of
documents, and the corrections.179

176 Pappaterra Testimony Dep. (May 11, 2018), pp. 81-82 (97 TTABVUE 83-84).
177 Id. at p. 83 (97 TTABVUE 85).
178 Id. at p. 84 (97 TTABVUE 86); see also Pappaterra Testimony Dep. (March 2, 2018), p. 67
(93 TTABVUE 70) (although the assignments refer only to the trademark, “but really
everything referred to the trademark, like marketing, knowledge, et cetera, customers,
documents, everything was transferred.”).
179 Id. at p. 85 (97 TTABVUE 87); see also Pappaterra Discovery Dep., p. 54 (79 TTABVUE
57) (the MAXVOLINE business, “it’s always been me.”).
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* * *
Q. You were the hundred percent owner [of Sunpoint
International Group, Inc. and Sunpoint
International Group USA Corp.], correct?
A. Correct.
Q. You were the manager, correct?
A. Correct.
Q. You were the face of those companies?
A. Correct.
Q. When you transferred the assets from you
personally to Sunpoint British Virgin Islands, you
transferred everything, correct?
A. Correct.
Q. When you transferred from Sunpoint British Islands
to Sunpoint USA you transferred everything?
A. Correct.180
As the MAXVOLINE trademarks passed from Gabriel Pappaterra to Sunpoint
International Group, Inc. to Sunpoint International Group USA Corp., there was a
continuity of goodwill from the same, single continuing commercial enterprise albeit
in different forms. At all times, the marks were used on the same products by
essentially the same source. The marks never lost their significance as trademarks
and always symbolized the same source. And, the goodwill associated with the marks
were, in fact, transferred although specific reference to the transfer of the goodwill
was omitted from the assignment documents.

180 Pappaterra Testimony Dep. (March 2, 2018), pp. 77-78 (93 TTABVUE 80-81).
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Petitioners’ abandonment claim based on an invalid assignment or assignment in
gross is dismissed.
Decision:
The Petition to Cancel Respondent’s registrations is granted on the claim that
Respondent failed to use its marks at the time Respondent filed its Statements of Use
and by the expiration of the time for filing its Statements of Use.