Award Pictures, LLCv.Renaissance Pictures Ltd.

Trademark Trial and Appeal Board

Feb 5, 2013

No. 91204116 (T.T.A.B. Feb. 5, 2013)

Goodman

Mailed: February 5, 2013

Opposition No. 91204116

Award Pictures, LLC

v.

Renaissance Pictures Ltd.

Before Seeherman, Taylor, and Lykos, Administrative
Trademark Judges.

By the Board:

As background, proceedings herein were suspended for
the parties’ civil action, which action became final during
the pendency of this proceeding. This case now comes up on
applicant’s renewed motion for summary judgment based on a
permanent injunction entered by the district court.1 We
must give deference to the determinations of the district
court and consider the terms of permanent injunctions. See

1 Renaissance Pictures, Ltd., v. Award Pictures, LLC., CV12-3805,
United States District Court, Central District of California,
Western Division. The Board previously found applicant’s August
28, 2012 motion for summary judgment premature because the
decision of the district court was not final. The Board noted in
that order that the motion for summary judgment was based on
preclusion, and may be considered before service of initial
disclosures.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT
A PRECEDENT
OF THE TTAB
Opposition No. 91204116

2
DaimlerChrysler Corp. v. Maydak, 86 USPQ2d 1945, 1950 (TTAB
2008).
Summary Judgment
In a motion for summary judgment, the moving party has
the burden of establishing that there is no genuine dispute
as to any material fact and that it is entitled to judgment
as a matter of law. See Fed. R. Civ. P. 56(a). A genuine
dispute with respect to a material fact exists if sufficient
evidence is presented such that a reasonable fact finder
could decide the question in favor of the non-moving party.
See Opryland USA Inc. v. Great American Music Show, Inc.,
970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). All doubts
as to whether any particular factual issues are genuinely in
dispute must be resolved in the light most favorable to the
non-moving party. See Olde Tyme Foods Inc. v. Roundy’s Inc.,
961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
The Parties’ Arguments and Evidence
In support of its motion, applicant submits that
opposer lacks standing to maintain this opposition in view
of the final order of the district court which acknowledges
the court’s prior entry of default judgment against opposer
and held that opposer is “permanently enjoined from any and
all use of the EVIL DEAD mark, or any similar mark, in
connection with the promotion, development, distribution or
production of any motion pictures or entertainment or
Opposition No. 91204116

3
related goods or services.” Included with applicant’s
motion is the declaration of Michael Chiappetta (Chiappetta
declaration) which declares that “entry of judgment was
entered against Opposer in the Civil Action on August 23,
2012” and that the deadline for appeal was September 22,
2012 and opposer did not file a notice of appeal by that
date “or at any time thereafter.” The order of judgment
accompanies the Chiappetta declaration.
In response, opposer argues that applicant has not
shown that the default judgment was the final judgment as “a
Motion to Vacate (Set Aside) Default Judgment in the Civil
Action will be submitted in a timely manner to the U.S.
District Court.” Opposer contends that since opposer has a
right to move to vacate the judgment, “the default judgment
entered in the Civil Action is not the final judgment in the
Civil Action.”
Opposer further states that it had “entered into an
attorney-client relationship with California Attorney
Charles R. Sutton” to defend the civil action which Sutton
“negligently and incompetently failed to do.” Opposer
further advises that it has “retained Robert Sirianni Jr.
Esq. and his associated attorneys at Brownstone Law, P.A. to
vacate the default judgment in the Civil Action on motion”
and that on this basis “Applicant’s statement that ‘the
Judgment is final’ is incorrect.” Opposer has submitted
Opposition No. 91204116

4
three affidavits of Glen MacCrae-Gray and two affidavits of
Graham MacCrae-Gray, and as exhibits, an unsigned copy of a
retainer agreement between opposer and Brownstone Law P.A.
dated September 13, 2012 and an unsigned retainer agreement
between “Glenn MacCrae and Graham MacCrae” and attorney
Charles Sutton dated July 30, 2012 which has a note that a
signed copy was returned to Mr. Sutton.
In reply, applicant argues that opposer has not
disputed that a judgment was entered against it or that the
time to appeal has passed. Applicant points out that
opposer’s argument is solely based on some “vague plans to
make a motion to vacate the default judgment” “at some
undetermined time in the future.” Applicant argues that
there is no basis for vacating default as opposer
specifically advised the court by letter dated July 5, 2012
that it did not intend to defend the lawsuit. Applicant
submits that the order issued by the district court is a
final judgment and that a motion for relief from judgment
under Fed. R. Civ. P. 60(c)(2) “does not affect the
judgment’s finality or suspend its operation” until an order
under Rule 60 issues.
Applicant has included the declaration of Barbara
Solomon (Solomon declaration) with its reply which declares
that she contacted the Brownstone Law Firm on October 26,
2012 to “ascertain if in fact the firm was representing
Opposition No. 91204116

5
Opposer in connection with the Civil Action.” Ms. Solomon
declares that she was advised by the business manager of the
Brownstone Law Firm that the firm does not represent opposer
and that the “retainer process has not been completed, and
that it is not known if it will be completed.” The Solomon
declaration also declares that no papers seeking to vacate
the default judgment have been filed in the Civil Action as
shown in Pacer. A copy of opposer’s July 5, 2012 letter to
the district court by which opposer’s representative advised
that it was unable to hire counsel due to the expense and
that “it appears that . . . the case will be decided by our
default” accompanies the Solomon declaration.
Finality of Judgment
While any final judgment may be the subject of a motion
to vacate pursuant to Fed. R. Civ. P. 60(b), the pendency of
such a motion does not alter a judgment’s finality nor
suspend the time for taking an appeal. See Fed. R. Civ. P.
60(b); In re Austrian German Holocaust Litigation, 250 F.3d
156, 165 (2d Cir. 2001); Burnam v. Amoco Container Co., 738
F.2d 1230, 1232 (11th Cir. 1984). Thus, the fact that a
judgment may be subject to relief under Fed. R. Civ. P.
60(b) does not affect the finality of the judgment.
Williams v. Int’l. Board of Elec. Workers, Local 520 (In re
Williams), 298 F.3d 458, 462 n.3 (5th Cir. 2002).
Opposition No. 91204116

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Accordingly, applicant’s motion for summary judgment is
ripe for consideration because the August 23, 2012 judgment
is a final order of the district court.
We now turn to consideration of whether applicant has
established that there is no genuine dispute of material
fact that opposer lacks standing to maintain this opposition
proceeding.
Standing
Standing is a threshold issue that must be proved in
every inter partes case. Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 188 (CCPA 1982).
The facts regarding the legitimate personal interest of the
plaintiff are a part of the plaintiff's case and must be
affirmatively proved. Lipton Industries, 213 USPQ at 189.
In the case of a notice of opposition, the standing
requirement of a plaintiff has its statutory basis in
Section 13 of the Trademark Act, 15 U.S.C. Section 1063,
which provides that “[a]ny person who believes that he would
be damaged by the registration of a mark upon the principal
register . . . may, upon payment of the prescribed fee, file
an opposition in the Patent and Trademark Office . . . .”
A belief in likely damage can be shown by establishing a
direct commercial interest. Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). A
plaintiff's belief in damage must have some reasonable basis
Opposition No. 91204116

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in fact. Coach Services Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012).
The purpose of the standing requirement, which is
directed solely to the interest of the plaintiff, is to
prevent litigation when there is no real controversy between
the parties. Lipton Industries, Inc., 213 USPQ at 189.
Standing must be present not only at the pleading stage but
present at any time the question of a plaintiff’s real
interest is before the Board. Syntex (U.S.A.) Inc. v. E.R.
Squibb & Sons Inc., 14 USPQ2d 1879, 1883 (TTAB 1990) (Simms,
dissenting).
In this case, opposer has alleged in the amended notice
of opposition its direct commercial interest by its
allegations that it has used EVIL DEAD as a motion picture
title element in United States commerce, that it has entered
into motion picture distribution contracts for one of its
motion picture properties that uses EVIL DEAD as a motion
picture title element, that it is using the mark EVIL DEAD
on its company website, and that it has attempted to
register the mark EVIL DEAD as its company’s mark.2
Permanent Injunction

2 The amended notice of opposition alleges claims under Sections
2(d) and 2(e)(1), as well as claims of abandonment due to non-use
and loss of trademark significance, fraud and lack of bona fide
intention to use the mark in commerce.

Opposition No. 91204116

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By its terms, the permanent injunction permanently
enjoins “. . . Defendant Award Pictures, LLC, its
principals, members, officers, shareholders, partners, and
directors, and all persons who ... act in concert or in
participation with them . . .” from doing any of the
following:
(a) Using the EVIL DEAD name or mark or any derivation
or colorable imitations thereof or any name or
mark that is confusingly similar thereto,
including but not limited to the names Evil Dead;
Evil Dead: Genesis of Necronomicon; Evil Dead:
Genesis of the Necronomicon, Part 2; Evil Dead:
Consequences, (collectively, the ‘Prohibited
Names”) as part of the title of a motion picture,
television program, video game, play, book or any
other form of entertainment provided or to be
provided through any media, or in connection with
the promotion, development, distribution or
production of any form of entertainment;

(b) Using any of the Prohibited Names in connection
with the promotion, development, distribution or
production of motion pictures or any
entertainment-related goods or services, or to
otherwise promote Award Pictures, LLC or any of
Award Pictures, LLC’s goods or services;

(c) Making or employing any other commercial use of
any of the Prohibited Names on any website or in
any markeing [sic] or promotional materials,
regardless of media;

(d) Representing to third parties by acts of omission
or commission that Defendant owns rights in the
EVIL DEAD name or mark, that Defendant’s works are
associated with or approved by Plaintiff or were
created, prepared or distributed with the consent
or permission of Plaintiff, or that Defendant is
intending on or is producing any form of
entertainment under the Prohibited Names;

(e) Using any other false designation of origin or
false description or representation or any other
thing calculated or likely to cause confusion or
Opposition No. 91204116

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mistake in the mind of the trade or public or to
deceive the trade or public into believing that
Defendant’s activities are in any way sponsored,
licensed, endorsed, authorized by or affiliated or
connected with Plaintiff or originate from
Plaintiff or to otherwise cause the public or
trade to believe that Defendant has rights to any
Prohibited Names on or as the title of any works;

(f) Doing any other acts or things calculated or
likely to cause confusion or mistake in the mind
of the public or to lead purchasers or consumers
or investors into the belief that the products or
services promoted, offered or sponsored by
Defendant emanate from or originate with Plaintiff
or its licensees, or are somehow sponsored,
licensed or endorsed, authorized by or affiliated
or connected with Plaintiff, or originate from
Plaintiff or to otherwise cause the public or
trade to believe that Defendant has rights to use
any Prohibited Names on or as the title of any
works;

(g) Further infringing Plaintiff’s EVIL DEAD mark and
damaging Plaintiff’s goodwill;

(h) Applying to register the EVIL DEAD mark, or any
confusingly similar mark, with the United States
Patent and Trademark Office or any other trademark
office or governmental authority;

(i) Interfering with Plaintiff’s use, registration or
attempts to register EVIL DEAD as a mark with the
U.S. Patent and Trademark Office or any state
trademark authority.

In view of the permanent injunction, we find that there
is no genuine dispute of material fact that opposer lacks a
legitimate commercial interest in the EVIL DEAD mark, due to
the prohibition against use of any kind, and that, as a
result, its belief in damage resulting from the registration
of applicant’s EVIL DEAD mark is wholly without merit. In
particular, under the terms of the permanent injunction,
Opposition No. 91204116

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opposer cannot establish in this proceeding its commercial
interest in using the EVIL DEAD mark as opposer is
permanently enjoined from using the “EVIL DEAD name or mark
or any derivation or colorable imitations thereof or any
name or mark that is confusingly similar thereto . . .” for
any commercial use, on any website, in marketing or
promotional materials, and in conjunction with the
promotion, development, distribution or production of any
form of entertainment related goods or services provided
through any media. Additionally, opposer is enjoined from
interfering with applicant’s attempts to register the EVIL
DEAD mark with the USPTO.
As a matter of law, opposer has no standing to
maintain this proceeding because it lacks a legitimate
commercial interest in the EVIL DEAD mark, is prohibited
from using the EVIL DEAD mark, and cannot demonstrate any
real interest in this proceeding.
Accordingly, applicant’s motion for summary judgment
is granted on the basis of lack of standing. See e.g.,
Coup v. Vornado Inc., 9 USPQ2d 1824 (TTAB 1988)
(petitioner’s failure to prove standing warrants grant of
summary judgment for respondent).
Judgment is hereby entered against opposer, and the
opposition is dismissed.