Department of the Armyv.Jaime Pujol

Trademark Trial and Appeal Board

Apr 23, 2015

No. 91211706 (T.T.A.B. Apr. 23, 2015)

WINTER Mailed: April 23, 2015

Opposition No. 91211706
Department of the Army
v.
Jaime Pujol

Before Bergsman, Wolfson, and Shaw,
Administrative Trademark Judges.

By the Board:

Background

Jaime Pujol, pro se (hereafter “Applicant”), seeks registration of the mark
SPIRIT OF AMERICA, in standard characters, for the following services:
Entertainment in the nature of air shows; Entertainment in the nature of live
radio personality performances; Entertainment in the nature of news and
comedy shows; Entertainment in the nature of visual and audio performances
by an actor; Entertainment in the nature of yacht races; Entertainment
information; Entertainment, namely, a continuing variety show broadcast
over television, satellite, audio, and video media; Entertainment, namely, live
music concerts; Entertainment, namely, live performances by a musical band;
Organizing community festivals featuring a variety of activities, namely, art
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 OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91211706

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exhibitions, heritage markets, and flea markets.1 The Department of the
Army (hereafter “Opposer” or “the Army”) opposes registration on the
grounds that Applicant lacks a bona fide intent to use his mark,
deceptiveness, false suggestion of a connection, and likelihood of confusion
under Sections 1(b), 2(a), and 2(d) of the Trademark Act, 15 U.S.C. §§
1051(b), 1052(a), and 1052(d).2 In support of its claims, Opposer pleads
ownership of trademark rights accrued at common law based on Opposer’s
continuous use of the marks SPIRIT OF AMERICA and THE U.S. ARMY’S
SPIRIT OF AMERICA since 1975 in connection with entertainment services
in the nature of live musical performances, precision military drill
demonstrations, and historical re-enactments of events from American
history.3 In his answer, Applicant admits several of the allegations in the
complaint, including, that his SPIRIT OF AMERICA mark is identical to
Opposer’s SPIRIT OF AMERICA mark (¶13), that his mark is “confusingly
similar” to Opposer’s THE U.S. ARMY’S SPIRIT OF AMERICA mark (¶14),

1 Application Serial No. 85077765 filed July 3, 2010, under Section 1(b) of the
Trademark Act.

2 Only Opposer’s claim under Section 2(d) is the subject of the parties’ respective
motions for summary judgment. In view of our decision herein (see infra), we need
not consider the sufficiency of or otherwise address Opposer’s claims under
Trademark Act Sections 1(b) and 2(a).

3 Opposer also pleads ownership of pending applications for the marks SPIRIT OF
AMERICA and THE U.S. ARMY’S SPIRIT OF AMERICA, in standard characters,
i.e., application Serial Nos. 85172642 and 85172623, respectively, both filed
November 9, 2010, under Section 1(a) of the Trademark Act, for entertainment
services in the nature of live musical performances, precision military drill
demonstrations, and historical re-enactments of events from American history.
Opposer has not made his pleaded applications of record.
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and that he has made “no bona fide use” of the mark SPIRIT OF AMERICA
in interstate commerce in connection with the services covered by his
application (¶10). Applicant has denied the other salient allegations in the
notice of opposition.
This case now comes up for consideration of Opposer’s motion (filed
October 7, 2014) for summary judgment on its claim of likelihood of
confusion, and of Applicant’s cross-motion (“counter-motion,” filed January 5,
2015) for summary judgment on the issue of priority.
Legal Standard for Summary Judgment
Summary judgment is an appropriate method of disposing of cases in
which there is no genuine dispute with respect to any material fact, thus
leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c)(1).
A party moving for summary judgment has the burden of demonstrating the
absence of any genuine dispute as to a material fact, and that it is entitled to
judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986); Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4
USPQ2d 1793, 1796 (Fed. Cir. 1987). 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 Opryland USA Inc. v. Great American Music
Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme
Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir.
1992). Additionally, the evidence of record and all justifiable inferences that
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may be drawn from the undisputed facts must be viewed in the light most
favorable to the non-moving party. See Lloyd’s Food Products Inc. v. Eli’s Inc.,
987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); and Opryland USA, 23
USPQ2d at 1472.
The mere fact that cross-motions for summary judgment on a claim have
been filed does not necessarily mean that there is no genuine dispute as to a
material fact, and that trial is unnecessary. See 10A FED. PRAC. & PROC. CIV.
§ 2720 (3d ed. 2014 update). Each party has the initial burden of
demonstrating the absence of any genuine disputes as to any material fact
with respect to its own motion. See Celotex Corp. v. Catrett, 477 U.S. at 323;
Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 4 USPQ2d at 1795-96;
University Book Store v. University of Wisconsin Board of Regents, 33
USPQ2d 1385, 1389 (TTAB 1994).
When a moving party’s motion for summary judgment is supported by
evidence sufficient to indicate that there is no genuine dispute as to any
material fact and that the moving party is entitled to judgment, the burden
then shifts to the non-moving party to demonstrate the existence of at least
one genuine dispute as to a material fact that requires resolution at trial. The
non-moving party may not rest on the mere allegations of its pleadings and
assertions, but must designate specific portions of the record or produce
additional evidence showing the existence of a genuine dispute as to a
material fact for trial. See Hornblower & Weeks Inc. v. Hornblower & Weeks
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Inc., 60 USPQ2d 1733, 1739 (TTAB 2001) (“applicant has produced no
evidence, or raised any expectation that at trial it could produce evidence”);
S & L Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221, 1225 n.9 (TTAB
1987).
Opposer’s Motion for Summary Judgment
To prevail on summary judgment on its claim of likelihood of confusion,
Opposer must establish that there is no genuine dispute that it has standing
to maintain this proceeding; that it has priority of use; and that
contemporaneous use of the parties’ respective marks on their respective
goods or services would be likely to cause confusion, mistake or to deceive
consumers. See 15 U.S.C. § 1052(d); and Hornblower & Weeks, Inc. v.
Hornblower & Weeks, Inc., 60 USPQ2d at 1735.
• Standing
We first consider whether Opposer has standing to bring this opposition
proceeding. Standing is a threshold issue that must be proven by a plaintiff
in every inter partes case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023, 1025-26 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185 (CCPA 1982). 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. Id.
at 189. Here, because Opposer has not pleaded or submitted evidence of any
trademark registrations, Opposer must rely on the common law rights it has
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accrued in its marks to prove standing. See, e.g., Giersch v. Scripps Networks
Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (common-law use sufficient to
establish standing); Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, 90
USPQ2d 1112, 1118 (TTAB 2009).
Stephen Herring, the Operations Lead for the Department of the Army’s
SPIRIT OF AMERICA program, states in his declaration that since at least
as early as 1975, the Army has conducted SPIRIT OF AMERICA live musical
performances, precision military drill demonstrations, and historical re-
enactments in the United States (Herring dec., ¶2; 20 TTABVUE 12). We
note, in particular, that Mr. Herring avers that Opposer’s SPIRIT OF
AMERICA program was revived in 2000 when the Army celebrated its 225th
anniversary, and that since then, with three exceptions due to the 2001
attacks on New York City and the 2006 and 2013 government shutdowns,
Opposer’s SPIRIT OF AMERICA shows have been held every year in
different cities in the United States (¶¶6, 7; 20 TTABVUE 13-14). Opposer
also submitted with his declaration exhibits showing Opposer’s use of its
marks SPIRIT OF AMERICA and THE U.S. ARMY’S SPIRIT OF AMERICA
in advertising for its entertainment services. Said advertising shows use of
the mark SPIRIT OF AMERICA in connection with the described
entertainment services in 1981, 1991, 2000, and 2005, and both marks as
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recently as 2014 (¶¶2, 3 & 8; Exh. A, B, & C; 20 TTABVUE 12-13, 14, 16-47).4
Mr. Herring’s averment of use of the mark SPIRIT OF AMERICA with
legally identical services (discussed infra) prior to the filing date of the
subject application, along with evidence of use of Opposer’s marks, is
sufficient to support Opposer’s allegations of a reasonable belief that it would
be damaged by registration of Applicant’s mark. See Giersch, 90 USPQ2d at
1022; Syngenta, 90 USPQ2d at 1118. We also note that Applicant has not
disputed Opposer’s standing to oppose his application. Accordingly, we find
that there is no genuine dispute with respect to the material fact that
Opposer has standing to bring this proceeding. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Jewelers Vigilance
Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir.
1987); and Lipton Industries, Inc. v. Ralston Purina Co., 213 USPQ at 189.
• Priority
Because Opposer has no trademark registrations for its pleaded SPIRIT
OF AMERICA marks, priority is an issue in this case. Cf. King Candy
Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Accordingly, to establish that there is no dispute as to its
priority, Opposer must rely on its rights in the marks SPIRIT OF AMERICA
and/or THE U.S. ARMY’S SPIRIT OF AMERICA that have accrued at
common law. Based on the above-referenced declaration of Mr. Herring and

4 The exhibits comprise SPIRIT OF AMERICA programs and printouts from
Opposer’s website (http://spiritofamerica.mdw.army.mil/spirit-of-america-home) and
Facebook® page.
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evidence of use of the SPIRIT OF AMERICA mark with live musical
performances, precision military drill demonstrations, and historical re-
enactments,5 we find that there is no genuine dispute as to the material fact
that Opposer has used the mark SPIRIT OF AMERICA with those services
continuously, with only minor interruption, since at least as early as 2000,
when the SPIRIT OF AMERICA program was revived.6
As to Applicant’s use of its mark, Applicant has admitted that he has “no
bona fide use” of the mark SPIRIT OF AMERICA in interstate commerce in
connection with his identified services (answer, ¶10). In the absence of
testimony or other proof demonstrating that the actual use of the mark an
applicant seeks to register commenced prior to the filing date of its involved
application, the earliest date upon which an applicant may rely in an
opposition proceeding is the filing date of its involved application. See
Syngenta, 90 USPQ2d at 1119; Zirco Corp. v. American Telephone and
Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991). Applicant’s filing date
was July 3, 2010, approximately ten years after Opposer’s undisputed date of

5 Applicant contends that Opposer has failed to establish use prior to the filing date
of his application because Opposer’s pending applications fail to establish such prior
use (see 23 TTABVUE 3). Applicant essentially contends that Opposer’s evidence of
use is limited to the specimens of use submitted with Opposer’s pending trademark
applications. Applicant is incorrect. Evidence on summary judgment may include
depositions, documents, electronically stored information, affidavits or declarations,
stipulations (including those made for purposes of the motion only), admissions,
interrogatory answers, or other materials in the record. See Fed. R. Civ. P. 56(c);
Trademark Rules 2.116(a) and 2.122(b). See also TBMP § 528.05(a)(1) (2014).

6 Although Opposer submitted evidence of use of its pleaded mark THE U.S.
ARMY’S SPIRIT OF AMERICA (20 TTABVUE 47), Opposer does not attest to when
it began using that particular mark.
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first use of the mark SPIRIT OF AMERICA in connection with live musical
performances, precision military drill demonstrations, and historical re-
enactments.
In view of the foregoing, there is no genuine dispute as to the material
fact that Opposer has priority with respect to its SPIRIT OF AMERICA mark
as used in connection with live musical performances, precision military drill
demonstrations, and historical re-enactments.7
• Likelihood of Confusion
We turn next to Opposer’s claim of likelihood of confusion claim under
Trademark Section 2(d), 15 U.S.C. § 1052(d). “We determine likelihood of
confusion by focusing on … whether the purchasing public would mistakenly
assume that the applicant’s [services] originate from the same source as, or
are associated with [opposer’s services].” In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In considering the question
on a motion for summary judgment, we analyze all of the probative facts in
evidence that are relevant to the thirteen factors set forth in In re E. I. du
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), as
well as whether there are genuine disputes as to any of these factors which

7 Applicant’s argument that the first registration determines priority is not well
taken. When an opposer does not own a registration, it may prove prior proprietary
rights based on prior common law use. See Herbko Int’l., Inc., v. Kappa Books, Inc.,
308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002). Therefore, in this case,
because the evidence shows that Opposer was the first party to use the SPIRIT OF
AMERICA mark in connection with certain services, there is no genuine dispute
that it has priority.

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would be material to a decision on the merits.8 In any likelihood of confusion
analysis, however, two key considerations are the similarities between the
marks and the similarities between the goods and/or services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
o Similarity of the Marks
With respect to the similarity of the marks, we look to the marks in their
entireties as to appearance, sound, meaning or connotation, and commercial
impression. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Here, there is no dispute that Applicant’s mark SPIRIT OF AMERICA is
identical to Opposer’s SPIRIT OF AMERICA mark. Indeed, Applicant admits
that the marks are identical (answer, ¶13). Similarly, insofar as Applicant
admits that his applied-for mark is “confusingly similar” to Opposer’s THE
U.S. ARMY’S SPIRIT OF AMERICA mark (answer, ¶14), there is no dispute
that Applicant’s mark is highly similar to Opposer’s mark THE U.S. ARMY’S
SPIRIT OF AMERICA.

8 Our primary reviewing Court has held that only those du Pont factors shown to be
material or relevant in the particular case and which have evidence submitted
thereon are to be considered. See Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d
200, 22 USPQ2d 1542 (Fed. Cir. 1992).
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o Similarity of the Services
With respect to the similarity of the parties’ services, we must compare
the services identified in Applicant’s application to those Opposer offers
under its mark, as disclosed by the evidence. Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).
Additionally, we may find that there is a likelihood of confusion when only
one item in a class of goods or services is commercially similar to a party’s
goods or services. See Tuxedo Monopoly, Inc. v. General Mills Fun Group,
Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (It is sufficient for a
finding of likelihood of confusion if the relatedness is established for any item
encompassed by the identification of goods within a particular class in the
application). See also Research in Motion Limited v. Defining Presence
Marketing Group, Inc. et al, 102 USPQ2d 1187 (TTAB 2012) (“Likelihood of
confusion must be found if there is likely to be confusion with respect to any
item that comes within the identification of goods in the application.”).9
Here, Applicant seeks registration of his mark, in relevant part, for the
following: “Entertainment, namely, live music concerts; Entertainment,
namely, live performances by a musical band.” The record shows that
Opposer uses its mark in connection with “live musical performances” and
that those live performances include performances by the U.S. Army’s Fife
and Drum Corps, a band (see 20 TTABVUE 41). Thus, Opposer’s broadly

9 Thus, it is not required, as argued by Applicant (see 23 TTABVUE 9-10), that
Opposer show that all of its services are related to all of Applicant’s services.
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described services, “live musical performances,” encompass Applicant’s
services identified as “live music concerts” and “live performances by a
musical band.” In view thereof, there is no dispute that the parties’ services
are legally identical. Consequently, the applied-for mark must be refused as
to the entire class of services because two services identified by Applicant and
one service actually provided by Opposer in connection with the SPIRIT OF
AMERICA mark are identical. See Tuxedo Monopoly, 209 USPQ at 988. See
also Hewlett-Packard Development Company, L.P. v. Vudu, Inc., 92 USPQ2d
1630, 1633 n.4 (TTAB 2009) (“[I]t is sufficient if likelihood of confusion is
found with respect to use of the mark on any item that comes within the
description of goods in the application or registration.”) (internal citations
omitted).
Thus, considering the evidentiary factors set forth in du Pont for which
there is evidence in the record,10 and having drawn all justifiable inferences
in a light most favorable to Applicant, we find that there is no genuine
dispute as to the material facts relating to the issue of likelihood of confusion.
Because the parties’ SPIRIT OF AMERICA marks are identical and the
services are in part legally identical, we find as a matter of law that there is a
likelihood of confusion with respect to Opposer’s pleaded SPIRIT OF
AMERICA mark and the applied-for mark.

10 We have concentrated our discussion on the du Pont factors which the parties have
discussed and/or on which we have evidence. To the extent that any other factors are
applicable, we treat them as neutral.
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• Decision
Having considered the evidence and arguments submitted by the parties,
and viewing the evidence in the light most favorable to Applicant and
drawing all justifiable inferences in favor of Applicant, we find that Opposer
has satisfied its burden of setting forth a prima facie showing that there is no
genuine dispute as to any material fact remaining for trial; that Applicant
has failed to demonstrate the existence of a genuine dispute regarding at
least one material fact which requires resolution by trial; and that Opposer is
entitled to judgment as a matter of law as to its claim of priority and
likelihood of confusion. Accordingly, Opposer’s motion for summary judgment
is granted and the opposition is sustained.
Applicant’s Cross-Motion for Summary Judgment
In view of our decision granting summary judgment in favor of Opposer,
Applicant’s cross-motion on the issue of priority is denied.
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