Corporate Document Services, Inc.v.I.C.E.D. Management, Inc.

Trademark Trial and Appeal Board

Sep 29, 1998

No. 91102651 (T.T.A.B. Sep. 29, 1998)

THIS DISPOSITION IS
CITABLE
AS PRECEDENT OF THE
TTAB
SEPT 29, 98
HRW
Opposition No. 102,651
Corporate Document
Services, Inc.
v.
I.C.E.D. Management, Inc.
Before Seeherman, Quinn and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Corporate Document Services, Inc. filed an opposition
to the registration sought by I.C.E.D. Management, Inc. for
the mark COPY CLUB for various document processing and
handling-related services in Classes 35, 38, 40, 41, and
42.1 The application was filed as an intent-to-use
application under Section 1(b) of the Trademark Act.
Opposer alleges use as of April 1993 of the mark THE COPY
CLUB in connection with various document processing,
document copying and related services and claims that

1 Serial No. 74/550,346, filed July 18, 1994.
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Opposition No. 102651
2
contemporaneous use of applicant’s mark and opposer’s
previously used mark would be likely to cause confusion.
Applicant has filed a motion for summary judgment.
Applicant maintains that there is no genuine issue of fact
that applicant’s first use of its mark COPY CLUB was prior
to opposer’s first use of its mark THE COPY CLUB. Applicant
supports its motion with the testimony of Joel McGinnis,
appearing as a Rule 30(b)(6) witness for opposer, which
confirms that opposer’s first use was in April 1993.
Applicant, on the other hand, states that its first use was
in 1992. Applicant has submitted the declaration of S. Marc
Lindsey, Executive Vice-President of Copy Club, Inc., the
company which began use of the mark in 1992, through an
affiliate, and later assigned the mark to I.C.E.D., with a
license back to use the mark. Lindsey states that Kwik Kopy
Corporation, an affiliate of Copy Club, Inc., opened its
first store in Texas in January 1992 and he refers to
attached exhibits showing use of the mark in promotional
literature in 1992 and 1993. Lindsey further states that
the mark has been used continuously since January 1992, and
has included use in interstate commerce, with a store having
since been opened in California.
Applicant contends that even if its first use was
intrastate use, applicant is the senior user and argues
Opposition No. 102651
3
that, in view of applicant’s priority, opposer has no
standing to pursue this opposition.
Opposer, in response to the motion for summary
judgment, argues that it has standing to bring the
opposition, and that opposer need only prove that it had a
proprietary interest in its mark prior to the filing date of
applicant’s intent-to-use application in order to prevail in
this opposition. Furthermore, opposer asserts that an
exception is made to the general rule (i.e., that a prior
user is entitled to an unrestricted registration) for a
party that, without knowledge of the prior user, adopts and
uses the same or a similar mark in another area of the
country, without any confusion as to source, citing Tie Rack
Enterprises, Inc. v. Tie Rack Stores, 168 USPQ 441 (TTAB
1970). Opposer also challenges the Lindsey declaration on
the grounds that Lindsey’s statements are either hearsay or
not made on personal knowledge and that the statements are
not unequivocally supported by the exhibits attached to the
declaration.
Opposer has concurrently filed an alternative motion,
requesting that, if the Board finds in applicant’s favor on
the issue of priority, the Board suspend action on the
opposition until opposer’s pending concurrent use
Opposition No. 102651
4
application2 reaches the stage that this proceeding can be
converted into a concurrent use proceeding.3 Opposer states
that it amended its original application to one seeking
concurrent use registration, naming applicant as an
exception to opposer’s right to exclusive use of the mark
THE COPY CLUB, after learning that applicant “may have
grounds to reach behind the constructive use date of its
intent-to-use application by tacking on prior intrastate use
by a third party and relying on an assignment agreement
entered into by Applicant and that third party.” [Opposer’s
brief in support of motion to suspend, filed January 12,
1998, pages 1 and 2].
Applicant has filed no response to this motion.
In a motion for summary judgment, the moving party has
the burden of establishing the absence of any genuine issue
of material fact and that it is entitled to judgment as a
matter of law. FRCP 56(c). A genuine dispute with respect
to a material fact exists if sufficient evidence is
presented that a reasonable fact finder could decide the
question in favor of the nonmoving party. See Opryland USA

2 Serial No. 75/255,563, filed March 11, 1997, and amended to a
concurrent use application on September 30, 1997.
3 Opposer’s additional motion for sanctions on the basis of
applicant’s failure to supply adequate discovery information is
not germane to the motion for summary judgment and thus has been
given no consideration.
Opposition No. 102651
5
Inc. v. Great American Music Show Inc., 970 F.2d 847, 23
USPQ2d 1471 (Fed. Cir. 1992).
In the present case, we find that applicant has carried
its burden of establishing that no genuine issues of
material fact remain and that it is entitled to the entry of
judgment in its favor on the basis of its priority of use.4
Applicant has submitted, as evidence of use of its
mark by a predecessor-in-interest as early as 1992, the
declaration of Marc Lindsey. Opposer challenges the Lindsey
declaration on the grounds that his statements were made on
other than personal knowledge, as required by Rule 56(e),
and therefore are hearsay. The basis for opposer’s
challenge was the statement by Lindsey at the beginning of
the declaration that “the statements below are true or
believed by me to be true”. Nothing in these words, which
appear to be standard language for a declaration, raises a
genuine issue as to Lindsey’s personal knowledge of the
facts stated in his declaration with respect to use by
applicant of its mark. Moreover, we consider the exhibits
introduced by the Lindsey declaration adequate to establish
use of applicant’s mark, by a predecessor-in-interest, at

4 Opposer’s argument that this opposition cannot be resolved on
the issue of priority alone is incorrect. Although an opposition
cannot be sustained under Section 2(d) on the basis of opposer’s
prior use without proof of likelihood of confusion, the
opposition can be defeated by applicant’s proof of prior use
alone.
Opposition No. 102651
6
least as early as June 1992, in the state of Texas (see
Exhibit 3).
Furthermore, opposer itself has acknowledged this prior
intrastate use by applicant, by its amendment of its pending
application to one seeking concurrent use, naming applicant
as a prior user in Texas. It is opposer’s position,
however, that applicant may not rely upon this intrastate
use for purposes of an unrestricted registration, and that
opposer must prevail if it can establish use of its mark
prior to the constructive use date of applicant’s intent-to-
use application.
Opposer is wrong. Just as an applicant in a use-based
application can rely, for purposes of priority in a
proceeding such as this, upon use (including use analogous
to trademark use) prior to the filing date of its
application,5 or even prior to its claimed use dates, an
intent-to-use applicant is entitled to rely upon actual use,
or use analogous to trademark use, prior to the constructive
use date of the intent-to-use application. See Dyneer Corp.
v. Automotive Products plc, 37 USPQ2d 1251 (TTAB 1995).
(Intent-to-use applicant permitted to tack use analogous to
trademark use to its constructive use date so long as
applicant had continuing intent to cultivate association of
mark with itself and its goods or services up until the
Opposition No. 102651
7
filing date). Moreover, whether or not this prior use is
strictly intrastate in nature is inconsequential. While
interstate use is a prerequisite to federal registration,
and applicant must file evidence of the same before any
registration will issue, rights in the mark itself are not
dependent upon interstate use. It is well established that
rights in and to a trademark are created by use of the mark
in either intrastate or interstate commerce. See Oland’s
Breweries Limited v. Miller Brewing Company, 189 USPQ 481
(TTAB 1975), aff’d, 548 F.2d 349, 192 USPQ 266 (CCPA 1976);
Textron Inc. v. Arctic Enterprises, Inc., 178 USPQ 315 (TTAB
1973); R. J. Moran Co. v. Gordon, 101 USPQ 206 (Comr. 1954).
Thus, for purposes of this opposition, applicant has
established priority and is entitled to summary judgment in
its favor.
As for opposer’s pending concurrent use application, we
note that once opposer’s application has successfully passed
the opposition stage, a concurrent use proceeding will be
set up, and applicant’s application (or registration, if it
has already issued) will become a part of that proceeding.
Opposer’s burden of proof will be to prove its rights as a
lawful concurrent user and that concurrent use of the
parties’ marks is not likely to cause confusion.

5 See Intersat Corp. v. International Telecommunications
Satellite Organization, 226 USPQ 154, 156 (TTAB 1985).
Opposition No. 102651
8
Finally, despite applicant’s failure to respond to
opposer’s request to suspend the present opposition until
the concurrent use proceeding can be instituted, we find no
need to do so. Applicant is entitled to an unrestricted
registration, upon submission of a proper statement of use
in commerce, Section 1(d) of the Trademark Act, even though
the registration may later be restricted as a result of the
concurrent use proceeding. Opposer’s alternative motion to
suspend is denied.
Accordingly, applicant’s motion for summary judgment is
granted. The opposition is dismissed with prejudice.
E. J. Seeherman
T. J. Quinn
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board