Donald J. Trumpv.Spoonjack LLC dba Spoonjack

Trademark Trial and Appeal Board

Sep 5, 2014

No. 91203345 (T.T.A.B. Sep. 5, 2014)

WINTER
Mailed: September 5, 2014

Opposition No. 91203345
Donald J. Trump
v.
Spoonjack LLC dba Spoonjack

Before Bucher, Mermelstein, and Greenbaum,
Administrative Trademark Judges.

By the Board:

Spoonjack LLC dba Spoonjack (hereafter counterclaim plaintiff or
“Spoonjack”) seeks to cancel two registrations of Donald J. Trump (hereafter
counterclaim defendant or “Trump”) for the mark TRUMP in standard
character format for “entertainment services, namely, ongoing unscripted
television programs in the field of business, business disputes, and dispute
resolution,”1 and for “vodka.”2 As grounds for cancellation, Spoonjack alleges,
inter alia, that Trump has pleaded U.S. Reg. Nos. 3391095 and 3456507 as a

1 U.S. Reg. No. 3391095, issued March 4, 2008. Sections 8 & 15 affidavit
acknowledged on March 20, 2014.
2 U.S. Reg. No. 3456507, issued July 1, 2008.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500This Decision is not a
Precedent of the TTAB
Opposition No. 91203345
2
bar to the registration of Applicant’s mark ITRUMP3; that at the time Trump
applied for registration and at the time of registration, the term TRUMP was
primarily merely a surname; that the term TRUMP has not acquired
distinctiveness; and that continued existence of the aforesaid registrations
would be damaging to Spoonjack. Trump denied the allegations set forth in
the counterclaim.
This case now comes up for consideration of Trump’s motion (filed June 3,
2014) for summary judgment on Spoonjack’s counterclaim that TRUMP is
primarily merely a surname. For purposes of this order, we presume the
parties’ familiarity with the pleadings and the arguments and materials
submitted in connection with the motion 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).
The party seeking summary judgment has the initial burden of establishing
the absence of any genuine issues of material fact and that it is entitled to
judgment as a matter of law. Fed. R. Civ. P. 56(c). However, in cases (such as
this one) where the nonmovant bears the ultimate burden of persuasion (as
Spoonjack does on its counterclaims), the moving party may establish its
entitlement to summary judgment by pointing out the lack of evidence to
support any essential element of the nonmovant’s case at trial. See Celotex

3 The opposition to which Spoonjack’s counterclaim pertained was withdrawn and
the opposition was dismissed on September 11, 2013.
Opposition No. 91203345
3
Corp. v. Catrett, 477 U.S. 317 (1986). If the moving party meets this initial
burden, the nonmoving party may not rest on mere denials or conclusory
assertions, but rather must proffer countering evidence, by affidavit or as
otherwise provided in Fed. R. Civ. P. 56, showing that there is a genuine
factual dispute for trial. Fed. R. Civ. P. 56(e). See Kellogg Co. v. Pack’Em
Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21
USPQ2d 1142 (Fed. Cir. 1991).
Trump seeks summary judgment in his favor on the basis that Spoonjack
has not proffered any evidence to show that TRUMP is primarily merely a
surname. In support of his motion, Trump has submitted the declaration of
his counsel, James Weinberger, who avers that “there are no documents or
other evidence produced or identified by [Spoonjack] to support its
contentions that the marks contained in Reg. Nos. 3,391,095 and 3,456,507,
the challenged registrations in this Cancellation proceeding, primarily are
understood by the purchasing public as a surname.” Weinberger dec., ¶ 9.
Trump also provided through the same declaration a copy of Spoonjack’s
responses to Trump’s first set of interrogatories and first set of document
requests, which show that Spoonjack did not provide to Trump’s counsel any
evidence that TRUMP is primarily merely a surname (see dec. of James
Weinberger, Exh. A-D).4

4 For instance, in response to Interrogatory No. 20, which asked Spoonjack to set
forth the legal and factual basis for the allegation that TRUMP is primarily merely a
surname and had not acquired distinctiveness for the goods and services listed in
Opposition No. 91203345
4
In response, Spoonjack argues, inter alia, that there is information in the
record which shows there is a genuine dispute as to a material fact, namely,
Spoonjack’s response to Trump’s interrogatory no. 19, in which Spoonjack
stated that “TRUMP is a common surname of thousands of people.”
Since trademark and service mark registrations are presumed valid, the
burden of proof is on the party seeking cancellation of such registration and
that party must rebut the presumption of validity by a preponderance of the
evidence. See Martahus v. Video Duplication Serv., Inc., 3 F.3d 417, 27
USPQ2d 1846, 1850 (Fed. Cir. 1993); Cerveceria Centroamericana, S.A. v.
Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir.
1989). When a defending party files a summary judgment motion noting the
absence of evidence in the record to support a material element of the claim
against it, the burden shifts to the plaintiff, nonmoving party to demonstrate
the existence of issues of material fact which must be resolved at trial. The
nonmoving party may not rest on conclusory assertions, but rather must
proffer countering evidence, by affidavit or as otherwise provided in Fed. R.

Registration Nos. 3391095 and 3456507, Spoonjack merely responded, in relevant
part, as follows:
A mark that is primarily merely a surname is not allowed registration
on the principal register without having had acquired distinctiveness.
Opposer’s Mark had not acquired distinctiveness at the time of
application for the marks depicted in Registration Nos. 3391095 and
3456507, and at the time of registration continuing until at least the
filing of the Applicant’s Answer to the Notice of Opposition and
Counterclaim.
This response merely states the general rule on the registrability of surnames and
asserts that Trump’s marks had not acquired distinctiveness. The statement does
not, however, offer any factual basis for Spoonjack’s surname claim.
Opposition No. 91203345
5
Civ. P. 56, showing that there is a genuine factual dispute for trial. See Fed.
R. Civ. P. 56(e); 10B Fed. Prac. & Pro. Civ. 3d § 2739 (2014). Here, Spoonjack
has not submitted in response to the summary judgment motion any evidence
that would demonstrate that there is a genuine dispute as to whether
TRUMP is primarily merely a surname, and Spoonjack’s conclusory
statement that TRUMP is the surname of thousands of people is insufficient
to show that a factual dispute remains for trial.
But even if we assume it to be true, Spoonjack’s claim that TRUMP is the
surname of thousands of people is insufficient to raise a genuine issue of fact
in support of its claims. It is important to note that not all surnames are
prohibited registration; only those terms which are “primarily merely” a
surname are unregistrable. Trademark Act Section 2(e)(4), 15 U.S.C.
§ 1052(e)(4). “If the mark has well known meanings as a word in the
language and the purchasing public, upon seeing it on the goods, may not
attribute surname significance to it, it is not primarily merely a surname.
‘King’, ‘Cotton’ and ‘Boatman’ fall in this category.” Ex parte Rivera Watch
Corp., 106 USPQ 145 (Comm’r Pats. 1955); see also Fisher Radio Corp. v.
Bird Elec. Corp., 162 USPQ 265 (TTAB 1969) (BIRD and design held not
primarily merely a surname, even though Bird was the name of applicant’s
president). This rule is clearly applicable to TRUMP, the surname at issue
here.
Opposition No. 91203345
6
We take judicial notice of the fact that “trump” is a common English word,
defined5 as a noun, namely, “a card suit any of whose cards will win over a
card that is not of this suit,” and as a verb, namely, “to get the better of” or
“to play a trump (a card or trick) when another suit was led.”6 Because
TRUMP has a well-known non-surname meaning, there is no genuine
dispute that TRUMP is not primarily merely a surname under Trademark
Act Section 2(e)(4), 15 U.S.C. § 1052(e)(4).
Accordingly, Trump’s motion for summary judgment is granted.
Spoonjack’s counterclaim to cancel U.S. Reg. Nos. 3391095 and 3456507 is
dismissed with prejudice.
☼☼☼

5 MERRIAM-WEBSTER ONLINE DICTIONARY, accessed September 3, 2014, at
http://www.merriam-webster.com/dictionary/trump, (2014) Merriam-Webster, Inc.
6 The Board may take judicial notice of dictionary definitions, including online
reference works which exist in print format or have regular fixed editions. See, e.g.,
Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1590 n.8 (TTAB
2008) (judicial notice taken of definition from the MERRIAM-WEBSTER ONLINE
DICTIONARY). See also Syngenta Crop Protection, Inc. v. Bio-Chek LLC, 90 USPQ2d
1112, 1117 (TTAB 2009); and University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983). We note in particular that the definition of “trump” is both “generally
known” in the United States and can be easily ascertained “from sources whose
accuracy cannot reasonably be questioned.” Fed. R. Evid. 201(b)(1) & (2).