Brooklyn Craft Works, LLCv.Brooklyn Spirits LLC

Trademark Trial and Appeal Board

May 16, 2013

No. 91200676 (T.T.A.B. May. 16, 2013)

RK

Mailed: May 16, 2013

Opposition No. 91200676
Brooklyn Craft Works, LLC
(substituted for Brooklyn
Distilling Company)

v.
Brooklyn Spirits LLC

Before Quinn, Cataldo and Kuczma,
Administrative Trademark Judges

By the Board:

This matter comes up on opposer/counterclaim-
respondent’s (“opposer”) motion for partial summary judgment
on six of applicant/counterclaim-petitioner’s (“applicant”)
counterclaims,1 and on applicant’s cross-motion for summary
judgment on opposer’s claims of priority and likelihood of

1 As filed on May 1, 2012, applicant has counterclaimed to
cancel opposer’s pleaded Registration No. 3832757 on the
following grounds:
(1) Lack of bona fide use in commerce;
(2) Abandonment;
(3) Fraudulent specimen and statement of use;
(4) Geographically deceptive/geographically deceptively
misdescriptive;
(5) Primarily geographically descriptive;
(6) Fraudulent misrepresentation of significance of
BROOKLYN; and
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91200676
2
confusion and applicant’s counterclaim of primary geographic
descriptiveness.2,3 The motions are fully briefed.
For purposes of this order, we presume the parties'
familiarity with the pleadings, the history of the
proceeding and the arguments and evidence submitted with
respect to each motion. Therefore, for the sake of
efficiency, this order does not summarize the parties'
arguments raised in the briefs.
As a preliminary matter, we note that applicant has
withdrawn counterclaims (2) abandonment, (3) fraudulent
specimen and statement of use and (6) fraudulent
misrepresentation of significance of BROOKLYN, in response
to opposer’s motion for partial summary judgment. As the
counterclaims were already joined by way of opposer’s answer
(filed May 22, 2012) at the time of withdrawal and the
withdrawal comes without opposer’s written consent,
counterclaims (2), (3) and (6) are hereby DISMISSED with
prejudice. See Trademark Rule 2.114(c); see also Johnson &

(7) Partial cancellation by restriction of goods pursuant
to Trademark Act § 18.

2 The notice of appearance and change of correspondence filed
October 11, 2012, by oposer’s counsel are noted and entered into
the record.

3 Opposer’s consented motion (filed April 26, 2013) to
substitute BROOKLYN CRAFT WORKS, LLC for BROOKLYN DISTILLING
COMPANY, LLC, is noted and the substitution has been entered into
the record.

Opposition No. 91200676
3
Johnson v. Bio-Medical Sciences, Inc., 179 USPQ 765, 766
(TTAB 1973).
A motion for summary judgment is a pretrial device
intended to save the time and expense of a full trial when
the moving party is able to demonstrate, prior to trial,
that there is no genuine dispute of material fact, and that
it is entitled to judgment as a matter of law. See Fed. R.
Civ. P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317
(1986); Opryland USA Inc. v. Great American Music Show Inc.,
970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); and Sweats
Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4
USPQ2d 1793 (Fed. Cir. 1987). The evidence must be viewed
in a light most favorable to the non-moving party, and all
reasonable inferences are to be drawn in the non-movant's
favor. Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d
766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23
USPQ2d at 1472.
Turning first to opposer’s partial motion for summary
judgment on remaining counterclaims (1), (4) and (5), upon
careful consideration of the arguments and evidence
presented by the parties, and drawing all inferences with
respect to the motion in favor of applicant as the nonmoving
party, we find that opposer has failed to demonstrate the
absence of a genuine dispute of material fact as to
counterclaims (4) and (5). At a minimum, genuine disputes
Opposition No. 91200676
4
of material fact remain as to whether a goods/place
association exists between opposer’s goods and Brooklyn
(counterclaims (4) and (5)), and whether such an association
is material to a consumer’s decision to purchase the goods
(counterclaim (4)). Accordingly, opposer’s motion for
summary judgment as to counterclaims (4) and (5) is hereby
DENIED.
By the same token, and drawing all inferences with
respect to applicant’s cross-motion in favor of opposer as
the nonmoving party, applicant’s cross-motion for summary
judgment on counterclaim (5)4 is also DENIED as a genuine
dispute of material fact remains, at a minimum, with respect
to the underlying issue regarding the geographic
descriptiveness of the term BROOKLYN in relation to
opposer’s goods.
As to opposer’s partial motion for summary judgment on
counterclaim (1), we agree with opposer to the extent that
applicant has failed to raise a genuine dispute as to
opposer’s bona fide use of its mark in commerce on or before
opposer’s filing of its allegation of use on June 7, 2010,
which resulted in the issuance of Registration No. 3832757

4 We note that applicant is not seeking summary judgment on a
finding that opposer’s mark, as a whole, is geographically
descriptive, but rather on a finding that the term BROOKLYN is
geographically descriptive of opposer’s goods and has not
acquired distinctiveness such that the entry of a disclaimer of
BROOKLYN in opposer’s pleaded registration is warranted.

Opposition No. 91200676
5
on August 10, 2010, which alleges a date of first use
anywhere and in commerce of June 3, 2010. Specifically,
applicant’s own proffered evidence demonstrates that
opposer’s first bona fide use of its mark indeed occurred on
June 3, 2010, when opposer, located in New York, sold its
goods bearing the mark through a distributor to Potomac
Liquors, a store in Washington, D.C. Santos Deposition,
Exh. 12 and pp. 153-63. See also id., Exh. 11 (Opposer’s
Responses to Applicant’s Second Set of Interrogatories,
Interrogatory No. 44 and Response). Opposer has testified
that it did not know anyone at Potomac Liquors and there is
nothing in the record to demonstrate or even suggest that
Potomac Liquors was anything other than a legitimate
customer of opposer. Id., p. 156. Further, while we are
cognizant that this initial sale consisted of one case of
twelve bottles, the evidence of record shows steadily
increasing subsequent sales to numerous other customers as
well as reorders, including by Potomac Liquors, such that
opposer had sold 1331 bottles from June 2010 to April 2011.
Id., pp. 165-173 and Exhs. 14-16. Such sales are neither
sporadic nor nominal and undercut any notion that opposer’s
use of its mark is not bona fide and merely token in nature
so as to reserve a trademark. We, therefore, GRANT
Opposition No. 91200676
6
opposer’s motion for summary judgment as to applicant’s
counterclaim (1).5
Finally, applicant’s cross-motion for summary judgment
on opposer’s claims of likelihood of confusion is hereby
DENIED as any determination thereof necessarily relies on a
determination of the pleaded mark’s inherent or acquired
distinctiveness. Thus, to the extent that we have
determined that a genuine dispute of material fact exists as
to the geographic descriptiveness of opposer’s mark, we find
that a genuine dispute of material fact exists as to
opposer’s likelihood of confusion claims.6,7
Proceedings herein are RESUMED. Dates are RESET as
follows:

30-day testimony period for plaintiff's testimony to close 6/28/2013
Defendant/Counterclaim Plaintiff's Pretrial Disclosures 7/13/2013

5 As the decision on the motion for partial summary judgment
is interlocutory in nature, any appeal thereof may be raised only
after final disposition of this proceeding. See Trademark Rule
2.145(d), and Procter & Gamble Co. v. Sentry Chem. Co., 22 USPQ2d
1589, 1594 n.4 (TTAB 1992). See also Copelands’ Enter. Inc. v.
CNV Inc., 887 F.2d 1065, 12 USPQ2d 1562, 1564 (Fed. Cir. 1989).

6 To the extent that opposer concedes in its reply brief that
it will be unable to prove use of the BROOKLYN VODKA mark
(application Serial No. 85137156, abandoned February 20, 2012),
partial summary judgment is hereby entered against opposer on
opposer’s likelihood of confusion claim as to that mark.

7 The parties are reminded that evidence submitted in support
of or in opposition to a motion for summary judgment is of record
only for consideration of that motion. Any such evidence to be
considered at final hearing must be properly introduced during
the appropriate trial period. See, for example, Levi Strauss &
Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).

Opposition No. 91200676
7
30-day testimony period for defendant and plaintiff in the
counterclaim to close 8/27/2013
Counterclaim Defendant's and Plaintiff's Rebuttal Disclosures
Due 9/11/2013
30-day testimony period for defendant in the counterclaim and
rebuttal testimony for plaintiff to close 10/26/2013
Counterclaim Plaintiff's Rebuttal Disclosures Due 11/10/2013
15-day rebuttal period for plaintiff in the counterclaim to
close 12/10/2013
Brief for plaintiff due 2/8/2014
Brief for defendant and plaintiff in the counterclaim due 3/10/2014
Brief for defendant in the counterclaim and reply brief, if
any, for plaintiff due 4/9/2014
Reply brief, if any, for plaintiff in the counterclaim due 4/24/2014

IN EACH INSTANCE, a copy of the transcript of testimony
together with copies of documentary exhibits, must be served
on the adverse party within thirty days after completion of
taking of testimony. Trademark Rule 2.125.
Briefs shall be filed in accordance with Trademark Rule
2.128(a) and (b). An oral hearing will be set only upon
request filed as provided by Trademark Rule 2.129.
* * *