Champagne G.H. Martel Et Ciev.Societe Agricole de la Durancole

Trademark Trial and Appeal Board

Jan 9, 2015

No. 92056295 (T.T.A.B. Jan. 9, 2015)

RK Mailed: January 9, 2015 Cancellation No. 92056295 Champagne G.H. Martel Et Cie v. Societe Agricole de la Durancole Before Kuhlke, Cataldo and Masiello, Administrative Trademark Judges By the Board: This matter comes up on Respondent/counterclaim Petitioner’s (hereinafter “Durancole”) motion for summary judgment (filed August 5, 2014) on Petitioner/counterclaim Respondent’s (hereinafter “Martel”) claim of likelihood of confusion for cancellation of Registration No. 3995731 and on Durancole’s counterclaim of likelihood of confusion for cancellation of Registration No. 3588337. The motion is fully briefed. The Board presumes the parties’ familiarity with the pleadings, the history of the proceeding and the arguments and evidence submitted with respect to the motion. Therefore, for the sake of efficiency, this order will not summarize the proceeding background or recount the parties’ arguments except as necessary. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 General Contact Number: 571-272-8500 THIS DECISION IS NOT A PRECEDENT OF THE TTAB Cancellation No. 92056295 2 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). If the moving party is able to meet this initial burden, the burden shifts to the nonmoving party to demonstrate the existence of specific genuinely disputed facts that must be resolved at trial. The nonmoving party may not rest on mere allegations or assertions but must designate specific portions of the record or produce additional evidence showing the existence of a genuine dispute of material fact for trial. Should the nonmoving party fail to raise a genuine dispute of material fact as to an essential element of the moving party’s case, judgment as a matter of law may be entered in the moving party’s favor. A factual dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter in favor of the non-moving party. See Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). 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 Cancellation No. 92056295 3 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, supra. The Board does not resolve disputes of material fact but rather only ascertains whether disputes of material fact exist. See Lloyd’s Food Products, 987 F.2d at 767, 25 USPQ2d at 2029; Olde Tyme Foods, 961 F.2d at 200, 22 USPQ2d at 1542. Martel’s Claim of Likelihood of Confusion The sole ground asserted by Martel in its petition for cancellation of Durancole’s Registration No. 39957311 is likelihood of confusion. In support thereof, Martel pleads application Serial No. 790927592 and Registration No. 35883373 and a priority date of November 2, 2007, based on the underlying application filing date of its pleaded registration. Petition for Cancellation, ¶¶ 3, 4, and 11. 1 For CLOS VICTOIRE in stylized form for “wines of guaranteed label of origin Côteaux d'Aix-en-Provence, Côte de Provence” in International Class 33. The underlying application for extension of protection in the United States was filed on August 22, 2008, and registered on the Principal Register on July 19, 2011, with a disclaimer of CLOS. 2 For VICTOIRE in stylized form for “alcoholic beverages, in particular wines and champagne” in International Class 33 (although the ESTTA cover sheet to the petition for cancellation also reflects goods in Classes 3 and 28, petitioner notes that the application has been limited to remove those classes of goods). The application for extension of protection in the United States was filed on July 8, 2010, and suspended on September 8, 2011, based, in part, on Durancole’s then-pending application. 3 For LA VICTOIRE in standard characters for “wine; fruit wine; grape wine; red wine” in International Class 33. The underlying application was filed on November 2, 2007, by Cognac One, LLC, under Section 1(b) of the Trademark Act and registered on the Principal Register on March 10, 2009. The mark and registration were subsequently assigned to Martel on July 25, 2011, and recorded in the Assignment Recordation Branch at Reel 4593 / Frame 0489. Cancellation No. 92056295 4 Durancole has pleaded its own priority as an affirmative defense to Martel’s petition for cancellation and asserts use of its mark in the United States since 1996. See Motion for Summary Judgment, p. 5. In support thereof, Durancole has submitted the declaration of its Manager attesting to its efforts in 1996 to enter the United States market as well as to its use of the CLOS VICTOIRE mark in the United States since 1996 along with supporting documentation in the nature of correspondence from 1996 confirming the appointment of a distributor in New Jersey, a 1996 Certification of Label Approval from the U.S. Bureau of Alcohol Tobacco and Firearms for a label bearing the CLOS VICTOIRE mark, and a series of invoices beginning in 1996 to the New Jersey distributor for goods bearing the mark. See Declaration of Sophie Kessler-Matiere, ¶¶ 5, 8, 9 and 12, and Exhs. 1, 2, 3, 4 and 6.4 In response to Durancole’s assertion of priority, Martel argues that Durancole “has not continuously sold wine under its CLOS VICTOIRE mark since 2007,” based solely on its contention that the sales invoices relied on by Durancole reflect another business entity named “La Jasso De Calissanne” 4 We note these dates are earlier than the constructive use date allowed by Durancole’s registration and, as such, bears on Durancole’s common law use. Neither party addressed the distinctiveness of Durancole’s mark but, instead, have treated the mark as presumptively being inherently distinctive. As there is nothing in the record to rebut this presumption, we find the mark to be inherently distinctive. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA 1981). Cancellation No. 92056295 5 (hereinafter “La Jasso”) rather than Durancole as of February 2007. Martel’s Response to Summary Judgment, p. 3. In reply, Durancole confirms that La Jasso is a separate entity but attests, by way of a second declaration, that La Jasso is merely its distributor that “does not, in any way, exercise control over the nature and quality of wines bearing the CLOS VICTOIRE trademark” and that “[w]ine sold bearing the CLOS VICTOIRE trademark is produced, bottled, and labeled at the direction of Durancole.” Second Declaration of Sophie Kessler-Matiere, ¶¶ 6-9. In view of the record before us, we find that Durancole has met its burden of demonstrating the absence of a genuine issue as to its own priority; and that Martel, in response, has failed to demonstrate the existence of a genuine dispute of material fact concerning Durancole’s priority. Accordingly, Martel cannot succeed on its claim of likelihood of confusion and we, therefore, DISMISS the petition for cancellation. Durancole’s Counterclaim of Likelihood of Confusion Turning now to Durancole’s counterclaim of likelihood of confusion, we initially note that there is no genuine dispute as to Durancole’s standing to counterclaim against Martel’s pleaded registration as such standing is inherent in Durancole’s position as defendant in this proceeding. See Aries Systems Corp. v. World Book Inc., 26 USPQ2d 1926, 1930 n.12 (TTAB 1993). Cancellation No. 92056295 6 Nor do we find a genuine dispute as to Durancole’s priority over Martel.5 See discussion supra. We do not, however, agree with Durancole that there is no genuine dispute concerning the issue of likelihood of confusion. That Durancole may have admitted material facts on the question of likely confusion in response to Martel’s petition does not relieve Durancole of its proof on its counterclaim. Nor can Durancole’s expansive reading of the Board’s prior order discharge this requirement. Martel has denied the salient allegations of the counterclaim as allowed under Fed. R. Civ. P. 8(d)(2)-(3). See Taffy’s of Cleveland, Inc. v. Taffy’s, Inc., 189 USPQ 154, 156-57 (TTAB 1975) (observing that Fed. R. Civ. P. 8 provides for alternate or hypothetical pleadings regardless of consistency). Therefore, this is not an instance where the parties have mutually stipulated to a matter thereby removing it as an issue to be determined by the Board. We find that there remains, at a minimum, a genuine dispute as to the strength of the common element, VICTOIRE, in the parties’ marks. As Durancole has failed to demonstrate the absence of a genuine dispute of 5 In opposition to Durancole’s claim of priority, Martel has asserted a claim of abandonment by way of an affirmative defense to Durancole’s own claim of likelihood of confusion in the counterclaim. This, however, is improper as a defense attacking the validity of a pleaded registration and may not be raised except by way of a claim for cancellation of the registration. See Textron, Inc. v. Gillette Co., 180 USPQ 152, 153 (TTAB 1973) and Trademark Law 2.114(b)(2). Here, Martel has neither pleaded abandonment as a ground for cancellation in its petition nor sought to amend its petition to add such a claim. As such, the claim is unpleaded and, therefore, has been given no consideration. See Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1386 n.8 (TTAB 1991). We add that even if Martel had properly pleaded a claim of abandonment, our decision would not differ as Durancole has established continuous use since 1996 and the evidence adduced by Martel is insufficient to raise a genuine dispute on the issue. Cancellation No. 92056295 7 material fact concerning its likelihood of confusion claim, Durancole’s motion for summary judgment on its Section 2(d) counterclaim is hereby DENIED.6 Proceedings herein are RESUMED on Durancole’s counterclaims in accordance with the following schedule where Durancole is now in the position of plaintiff: Plaintiff's Pretrial Disclosures Due 2/14/2015 Plaintiff's 30-day Trial Period Ends 3/31/2015 Defendant's Pretrial Disclosures Due 4/15/2015 Defendant's 30-day Trial Period Ends 5/30/2015 Plaintiff's Rebuttal Disclosures Due 6/14/2015 Plaintiff's 15-day Rebuttal Period Ends 7/14/2015 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. * * * 6 It should be noted that evidence submitted in connection with a motion for summary judgment is of record only for consideration of that motion. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial period. See Levi Strauss & Co. v. R. Josephs Sportswear, Inc., 28 USPQ2d 1464, 1465 n.2 (TTAB 1993). Furthermore, the fact that we have identified a genuine dispute of material fact sufficient to deny Durancole’s motion should not be construed as a finding that this is necessarily the only issue which remains for trial.