Dream Crew Managementv.God's Plan LLC

Trademark Trial and Appeal Board

Dec 11, 2019

91243413 (T.T.A.B. Dec. 11, 2019)

wbc Mailed: December 11, 2019

Opposition No. 91243413

Dream Crew Management

v.

God’s Plan LLC

Before Kuhlke, Bergsman and Goodman,
Administrative Trademark Judges,

By the Board:

God’s Plan LLC (“Applicant”) seeks to register GOD’S PLAN in standard
characters for “clothing, namely, blouses, belts, coats, dresses, pants,
headwear, polo shirts, footwear, vest, jackets, sweaters, leggings, uniforms,
shirts, socks, shorts, sleepwear, fur coats and jackets, jeans, skorts, swimwear,
cardigans, t-shirts, ties as clothing, turban, undergarments, rainwear, sleeping
cap in the nature of a bonnet, bodysuits, jumpers, shower cap, athletic shirts,
overalls, gloves, jogging suits, tank tops, capris, clothing of leather in the
nature of leather belts, blazers, ponchos, suits, gowns, exercise suits
comprising of pants, shirts, sweat suits, and jogging suits” in International
Class 25.1

1 Application Serial No. 87824164 was filed March 7, 2018 under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b), based on an assertion of a bona fide intent to use the
mark in commerce.
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. 91243413
2
Dream Crew Management (“Opposer”) filed its opposition to the
registration of Applicant’s mark asserting a variety of claims of which, only 1)
likelihood of confusion based on Opposer’s allegations of prior use of the mark
GOD’S PLAN for entertainment marketing services, charitable fundraising
services and entertainment services and 2) dilution by blurring based on
Opposer’s allegations that its GOD’S PLAN mark is famous and became
famous prior to Applicant’s priority date, were found to be properly pleaded.2
1 TTABVUE 2, 5-6, 9-10; 8 TTABVUE 4, 8. Applicant denied the salient
allegations in the notice of opposition and asserted a variety of affirmative
defenses of which many were stricken as insufficiently pleaded. See 4
TTABVUE; 8 TTABVUE 11-14.
This case now comes up for consideration of Applicant’s motion for
summary judgment on the issue of Opposer’s claim of prior use and Opposer’s
motions for sanctions. 14 TTABVUE; 16 TTABVUE. The motions are fully
briefed.
1) Motion for Summary Judgment
As a preliminary matter, Applicant’s motion was originally filed as a motion
for judgment on the pleadings. The Board, in its June 25, 2019 order, indicated
to the parties that the motion for judgment on the pleadings was being treated

2 Contrary to Opposer’s arguments that all of its claims are “[l]ive and none have been
dismissed or adjudicated as a matter of law except to affirm the sufficiency of their
pleading,” the Board’s March 6, 2019 order clearly explains that as to the other claims
asserted or marked on the ESTTA coversheet, none, except likelihood of confusion and
dilution by blurring, are adequately pleaded. See 8 TTABVUE.
Opposition No. 91243413
3
as a motion for summary judgment and allowed the parties time to brief the
motion accordingly. See 18 TTABVUE.
a) Summary Judgment Standard
Summary judgment is an appropriate method of disposing of cases in which
there are no genuine disputes of material fact, thus leaving the case to be
resolved as a matter of law. See Fed. R. Civ. P. 56(a). A party moving for
summary judgment has the burden of demonstrating the absence of any
genuine dispute of material fact, and that it is entitled to summary judgment
as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986). In deciding
motions for summary judgment, the Board must follow the well-established
principles that, in considering the propriety of summary judgment, all evidence
must be viewed in a light favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor. See Opryland USA, Inc.
v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir.
1992). The Board may not resolve disputes of material fact; it may only
ascertain whether such disputes are present. See Lloyd’s Food Products Inc. v.
Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc.
v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir.
1992); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542
(Fed. Cir. 1992).
Further, in Celotex Corp., the Court explained that in cases such as this
opposition, where the nonmoving party bears the burden of proof at trial,
Opposition No. 91243413
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“regardless of whether the moving party accompanies its summary judgment
motion with affidavits, the motion may, and should, be granted so long as …
the standard for entry of summary judgment … is satisfied.” 477 U.S. at 323-
24. Such a motion for summary judgment, whether or not accompanied by
evidentiary materials, “requires the nonmoving party to go beyond the
pleadings and … designate ‘specific facts showing that there is a genuine
[dispute] for trial.’” Id. Summary judgment may be opposed “by any of the
kinds of evidentiary materials listed in Rule 56(c), except the mere pleadings
themselves, and it is from this list that one would normally expect the
nonmoving party to make the showing to which we have referred.” Id.
As the party moving for summary judgment, for a finding of priority in its
favor, Applicant must demonstrate the absence of a genuine dispute of
material fact regarding its priority by “citing to particular parts of materials
in the record” or by showing that Opposer “cannot produce admissible
evidence” to support its allegations of priority. Fed. R. Civ. P. 56(c)(1)(A) and
(B); see, e.g., Stephen Slesinger Inc., v. Disney Enter. Inc., 98 USPQ2d 1890,
1894-5 (TTAB 2011) (plaintiff cannot establish priority because it cannot prove
ownership of some prior right; summary judgment for defendant granted).
b) Priority
It is settled that the opposer bears the burden of proof with respect to its
claim of priority of use and likelihood of confusion. See, e.g., Bose Corp. v. QSC
Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002)
Opposition No. 91243413
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(“[t]he burden of proof rests with the opposer ... to produce sufficient evidence
to support the ultimate conclusion of [priority of use] and likelihood of
confusion”); Sanyo Watch Co. v. Sanyo Elec. Co., 691 F.2d 1019, 215 USPQ 833,
834 (Fed. Cir. 1982) (“As the opposer in this proceeding, appellant bears the
burden of proof which encompasses not only the ultimate burden of persuasion,
but also the burden of going forward with sufficient proof of the material
allegations of the Notice of Opposition, which, if not countered, negates
appellee’s right to a registration.”). It remains the opposer’s obligation to
satisfy its burden of proof, regardless of whether the applicant offers any
evidence. See Celotex Corp., 477 U.S. at 323-24.
Prior proprietary rights in a mark may be established through actual use,
use analogous to trademark use, or an earlier constructive use date accorded
to the party’s own application. See Giersch v. Scripps Networks Inc., 90
USPQ2d 1020, 1022 (TTAB 2009). An “applicant may rely without further
proof upon the filing date of its application as a ‘constructive use’ date for
purposes of priority.” Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, 90
USPQ2d 1112, 1119 (TTAB 2009) (citing Trademark Act § 7(c); Levi Strauss &
Co. v. R. Josephs Sportswear Inc., 36 USPQ2d 1328, 1332 (TTAB 1994)). Here,
Opposer has alleged in the notice of opposition use of GOD’S PLAN at least as
early as January 19, 2018 and that it filed a trademark application for GOD’s
PLAN on July 31, 2018. Notice of Opposition Paragraphs 4 and 5, 1 TTABVUE.
As noted, Applicant’s application was filed March 7, 2018.
Opposition No. 91243413
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In its motion for summary judgment, Applicant argues that Opposer “does
not plead any facts showing that it used the GOD’S PLAN mark in commerce
at all, let alone prior to March 7, 2018”; that Opposer’s allegations of use “make
it clear that [a third party, Drake] – not Opposer – was the party that has
actually used GOD’S PLAN”; that “[t]here is simply no evidence whatsoever
that Opposer itself used the GODS’ PLAN mark”; that the copyright in the
God’s Plan song does not list Opposer as an owner; that use of GOD’S PLAN in
a song is not enough to establish trademark rights and priority; and that
Opposer cannot show use of GOD’S PLAN other than as the title of a single
song and thus has no trademark rights, let alone trademark rights that
predate Applicant. 14 TTABVUE 9-11, 13. Applicant seeks dismissal of “the
Opposition with prejudice in its entirety.” 27 TTABVUE 6. In support of its
arguments, Applicant submits various types of evidence including, copies of
Opposer’s application file, a screenshot described as Drake’s video for the song,
God’s Plan, webpages purportedly displaying Drake’s use of GOD’S PLAN, and
webpages from the Copyright Office website.3 See 14 TTABVUE 16-159.

3 The documents submitted by Applicant have not been authenticated through
testimony and some are not self-authenticating. Opposer has not objected to this
evidence on the basis of authentication. The 2010 amendments to Fed. R. Civ. P.
56(c)(2) allow a court to consider unauthenticated documents on summary judgment.
Fed. R. Civ. P. 56(c)(2) (Advisory Committee notes) (2010 amendment). Inasmuch as
Opposer has not objected to Applicant’s evidence that is not self-authenticating and,
therefore, inadmissible with respect to the motion for summary judgment, we have
considered it.
Opposition No. 91243413
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In response thereto, Opposer does not argue that it has priority but rather,
argues that “the Board has already held that a number of Opposer’s claims are
well-plead (sic)”; that all of Opposer’s claims are “live”; and that therefore, the
motion for summary judgment should be denied. 25 TTABVUE 4-5. Opposer
neither points to any facts in dispute regarding its claim of priority nor does
Opposer provide any testimony or evidence showing that Opposer has used
GOD’s PLAN prior to the filing date of Applicant’s application so as to raise a
genuine dispute regarding Applicant’s priority.4 As the Federal Circuit has
held, “[a]ttorney argument is no substitute for evidence.” Zheng Cai v.
Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018)
(quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284 (Fed. Cir.
2005)); see also In re Simulations Publ’ns, Inc., 521 F.2d 797, 187 USPQ 147,
148 (CCPA 1975) (“Statements in a brief cannot take the place of evidence.”).
c) Order
Based on the record and the arguments of the parties and viewing all doubt
and inferences in a light most favorable to Opposer as the non-movant, we find
that there are no genuine disputes of material fact with respect to the issue of
priority. Applicant’s underlying application filing date of March 7, 2018
precedes Opposer’s application filing date of July 31, 2018 and there is nothing

4 In considering a motion for summary judgment, “[t]he evidence of the non-movant is
to be believed, and all justifiable inferences are to be drawn in his favor.” Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 255 (1986) (emphasis added). Nonetheless,
Opposer’s response to Applicant’s motion is not supported by an affidavit or
declaration, nor is it accompanied by any other evidence. We are not required to credit
mere argument as truth.
Opposition No. 91243413
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in the record to raise a genuine dispute that Opposer has proprietary rights
prior to Applicant’s filing date.
Because Opposer, as the party bearing the burden of proof regarding
priority, has not presented any testimony or any other evidence in response to
the motion for summary judgment that would establish its priority or at a
minimum, establish a genuine dispute of material fact, Applicant’s motion for
summary judgment in its favor on the issue of priority is granted. Because
priority is required for Opposer to prevail in the likelihood of confusion claim,5
judgment in favor of Applicant is hereby entered on the likelihood of confusion
claim subject to Applicant’s establishment of constructive use. Kraft Group
LLC v. William A. Harpole, 90 USPQ2d 1837 (TTAB 2009)
Additionally, because priority is required for Opposer to prevail in its
dilution by blurring claim,6 judgment in favor of Applicant is hereby entered
on the dilution by blurring claim subject to Applicant’s establishment of
constructive use.

5 A mark may be refused registration under Section 2(d) of the Lanham Act where it:
[c]onsists of or comprises a mark which so resembles a mark registered in the
Patent and Trademark Office, or a mark or trade name previously used in the
United States by another and not abandoned, as to be likely, when used on or in
connection with the goods of the applicant, to cause confusion, or to cause
mistake, or to deceive.
See 15 U.S.C. § 1052(d).
6 Dilution under Section 43(c) of the Act, 15 U.S.C. § 1125(c) requires proof that
opposer’s mark became famous prior to the date of the application to register the
applicant’s mark. Research in Motion Ltd. v. Defining Presences Marketing Group Inc.,
102 USPQ2d 1187, 1197 (TTAB 2012). Because there is no genuine dispute of material
fact regarding Applicant’s priority, it is impossible for Opposer to prove that its mark
became famous before the filing date of Applicant’s application.
Opposition No. 91243413
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2) Motion for Sanctions
When conduct sanctionable under Rule 11 of the Federal Rules of Civil
Procedure or Board rules is found, the Board has the authority to enter
appropriate sanctions, including the entry of judgment. See Trademark Board
Manual of Procedure (TBMP) §§ 527.02 and 527.03 and authorities cited
therein (2019). See also Fed. R. Civ. P. 11; Giant Food, Inc. v. Standard Terry
Mills, Inc., 231 USPQ 626 (TTAB 1986). One of the predominant purposes for
entering a Rule 11 sanction is to deter further wrongdoing. Central Mfg. Inc.
v. Third Millennium Tech. Inc., 61 USPQ2d 1210, 1213 (TTAB 2001). The
Board has discretion to tailor sanctions appropriate to the violations and may
consider any measure designed to serve this purpose. Id.; see also Elec. Indus.
Ass’n v. Potega, 50 USPQ2d 1775, 1778 (TTAB 1999).
Fed. R. Civ. P. 11(c)(2) provides a “safe harbor” provision allowing the party
or attorney an opportunity to withdraw or correct a challenged submission.
This provision delays filing of a motion for sanctions before the Board for
twenty-one days after service of the motion and allows the motion to be filed
only if the challenged submission is not withdrawn or appropriately corrected
within those twenty-one days or within another time that the Board may set.
The Board will deny motions for Fed. R. Civ. P. 11 sanctions that fail to comply
with this requirement. We note that Opposer’s motion for sanctions was filed
more than twenty-one days after its service upon Applicant, was presented as
a distinct and separate motion, and details Applicant’s allegedly offensive
Opposition No. 91243413
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conduct. See 16 TTABVUE. Accordingly, the motion satisfies the requirements
of the “safe harbor” provision of Fed. R. Civ. P. 11(c)(2).
Opposer’s motion for Rule 11 sanctions asserts, in large part, that Applicant
filed its application for the “improper purpose of extorting Opposer for financial
gain with no intent to actually use the mark in commerce”; and that Applicant
submitted intentionally false statements to the Board in an attempt to obtain
registration. 16 TTABVUE 3-4. Opposer also asserts that a third party, Robert
Moore, owns a pending application for GOD’S PLAN, and that Applicant
contacted Mr. Moore about Applicant’s intent to deceive and extort Opposer;
and that in October 2018, Applicant called Mr. Moore impersonating an
Examining Attorney. 16 TTABVUE 6. In support of these assertions, Opposer
submits the declaration of Mr. Moore which purports to include an audio
recording of a phone conversation with Mr. Moore and, who Mr. Moore believes
to be Applicant’s owner, Pia Robertson. 17 TTABVUE.
In response, Applicant disputes Opposer’s allegations and how Applicant’s
actions should be interpreted. Applicant further argues that Opposer’s
attorney has made threats to Applicant; that Applicant’s owner, Ms.
Robertson, need not “extort Drake” because she has plans to use the applied
for mark as evidenced by her “family of GOD-formative registrations and
applications in Class 25 … that dates back to 2014,” her website selling GOD
KNOWS apparel, and other online activities. 19 TTABVUE 5, 8-9, 132-33. In
support thereof, Applicant submits a variety of evidence including, copies of
Opposition No. 91243413
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party emails, copies of its GOD application and registrations, webpages from
Ms. Robertson’s website, and a declaration of Ms. Robertson that disputes
Opposer’s claims of misconduct, specifically noting that she did not speak to
Mr. Moore between March and October 2018. 19 TTABVUE 132-35; 20
TTABVUE.
Upon review of the parties’ submissions, we are not persuaded that
Applicant’s application and related submissions were submitted in an effort to
extort Opposer or for other misconduct. Whether Applicant filed its application
for the improper purpose of extorting Opposer for financial gain, with no intent
to use the mark in commerce, or whether Applicant submitted intentionally
false statements to the USPTO in an attempt to obtain registration, are
allegations that may be the basis for a fraud claim or a claim of lack of bona
fide intent to use the mark, but not for sanctions. Opposer is reminded,
however, that the Board has already noted that its claims of fraud including,
fraud based on no bona fide intent to use, are not properly pleaded in its notice
of opposition.
In view thereof, we decline to enter sanctions against Applicant. The motion
for sanctions is denied.
3) Summary
Applicant’s motion for summary judgment on the likelihood of confusion
and dilution by blurring claims is granted. Judgment is entered in Applicant’s
Opposition No. 91243413
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favor subject to Applicant’s establishment of constructive use. Opposer’s
motion for sanctions is denied.
When Applicant’s mark has been registered or the application becomes
abandoned, Applicant should inform the Board, so that appropriate action may
be taken to terminate this proceeding. The time for filing an appeal or for
commencing a civil action will run from the date of the present decision. See
Trademark Rules 2.129(d) and 2.145.