No. 91204773 (T.T.A.B. Jul. 12, 2013)

Edward Plattsv.M7 GmbH

Trademark Trial and Appeal BoardJul 12, 2013

No. 91204773 (T.T.A.B. Jul. 12, 2013)

Goodman Mailed: July 12, 2013 Opposition No. 91204773 Edward Platts v. M7 GmbH Before Seeherman, Ritchie and Kuczma, Administrative Trademark Judges. By the Board: M7 GmbH (hereafter “applicant”) seeks to register in standard character form the mark PRECISTA for the following goods in International Class 14: “Precious metals and their alloys; jewelry, precious stones; timepieces and chronometric instruments; goods in precious metals or coated therewith, namely, jewelry cases of precious metal, personal ornaments of precious metal and jewelry plated with precious metals.”1 Edward Platts (hereafter “opposer”) has opposed registration on the grounds of priority and likelihood of confusion and of fraud. Opposer relies on his common-law rights through his use of the mark PRECISTA. 1 Application Serial No. 79097420, filed April 11, 2011 under Section 66(a), with an international priority date of December 13, 2010. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91204773 2 Applicant, in its answer, has denied the salient allegations of the notice of opposition.. Now before the Board is opposer’s motion, filed February 6, 2013, for summary judgment. The motion is fully briefed. A party is entitled to summary judgment when it has demonstrated that there is no genuine dispute as to any material fact and that it is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). In reviewing a motion for summary judgment, the evidentiary record and all reasonable inferences to be drawn from the undisputed facts must be viewed in the light most favorable to the nonmoving party. Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). The Board may not resolve issues of material fact; it may only ascertain whether such issues are present. See Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993). Opposer's motion for summary judgment is supported by his declaration (Platts declaration) and accompanying exhibits; and the declaration of Joan N. Isaac, a paralegal with opposer’s law firm, (Isaac declaration) and accompanying exhibits. In addition, opposer has submitted Opposition No. 91204773 3 certain of applicant’s responses to opposer’s discovery requests. Applicant’s response includes as an exhibit a three- page printout from a third-party website, which identifies the URL and date accessed. Standing Before we consider the merits of the motion for summary judgment, we must first consider whether opposer has demonstrated that there is no genuine dispute as to his 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 (Fed. Cir. 1999) and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). The Platts declaration states that opposer, through his business, has advertised and sold watches in the United States under the PRECISTA mark for over eight years. Paragraph 2. The Platts declaration and the accompanying evidence of opposer’s use of PRECISTA in connection with watches is sufficient to establish opposer’s standing to bring this opposition proceeding. Moreover, applicant does not contend otherwise. Accordingly, we find no genuine dispute of material fact exists regarding opposer’s Opposition No. 91204773 4 standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000) (direct commercial interest satisfies the “real interest” test). Priority A party may establish its own prior proprietary rights in a mark through actual or technical trademark use or by use analogous to trademark use. Westrex Corp. v. New Sensor Corp., 83 USPQ2d 1215 (TTAB 2007). Applicant has not shown use in the United States, and neither party disputes that the earliest date on which applicant can rely for purposes of priority is the December 13, 2010 priority date of its Swiss Registration No. 609564, which is the Office of Origin for International Registration No. 1077246. Thus, in order for opposer to prevail on his priority claim, opposer must prove that he has a proprietary right in the mark PRECISTA and that the interest was obtained prior to December 13, 2010. Opposer is relying on his common law rights to prove his priority. Opposer has submitted, as evidence of his prior rights, the Platts declaration in which he states that opposer’s first use of PRECISTA in the United States was in 2004 in connection with “watches and watch accessories” “through his website timefactors.com.” To corroborate his statement of Opposition No. 91204773 5 advertising and selling watches beginning in 2004, he has included with his declaration a copy of an internet printout, taken from the Wayback Machine archive, showing opposer's timefactors.com website in 2004 and displaying PRECISTA watches. Opposer states in his declaration that the archived website printout reflects the models of his PRECISTA watches that were sold in the United States in 2004. In addition, to establish continuous use, opposer included with his declaration a printout of his sales from 2004 through 2010, showing sales of 435 watches to buyers in forty-four states in the United States. Opposer also submitted with his declaration what he states are representative samples of invoices from 2004, 2005, and 2007, showing sales of PRECISTA watches to buyers in the United States. Applicant argues that the corroborating evidence of usage of the mark PRECISTA consists of undated photographs, internal business records and archived screenshots which “fall short of the standard of proof required” to show that opposer has prior rights in his mark. In particular, applicant argues that the undated photographs and watch instructions, even in combination with the 2011 online forum comments and website printouts from 2013, do not establish opposer’s prior use of the mark in the United Opposition No. 91204773 6 States, and therefore do not establish opposer’s priority. Applicant submits that the 2004 archived website pages indicate prices for the goods in British pounds, and there is no way to know whether these goods were definitively sold in the United States. Applicant also claims it should be able to cross-examine opposer regarding the veracity of the sales claims in connection with the list of sales, because only a representative sample of invoices was provided by opposer in connection with the Platts declaration. Applicant also argues that the invoices and internal business records submitted as part of the declaration do not establish that the public associates the mark with opposer as a source of origin and that 435 sales, which would be an average of 77 watches per year from 2004 to 2010, is a nominal figure insufficient to establish deliberate and significant use for purposes of priority. Applicant submits that opposer’s evidence fails to show that opposer was using PRECISTA in the ordinary course of trade on watches and packaging for watches in the United States during this 2004-2010 time period. Further, because opposer adopted the mark after it had been abandoned by a prior user, applicant contends that opposer cannot establish that the public associates the PRECISTA mark exclusively with him. Opposition No. 91204773 7 We disagree, and find that applicant’s arguments regarding the probative value of opposer’s evidence fail to raise a genuine issue. On the contrary, opposer’s declaration testimony and exhibits demonstrate there is no genuine dispute of material fact as to opposer’s trademark use of PRECISTA prior to applicant’s December 13, 2010 priority date. Applicant, in its response, has gone to great lengths to criticize many of opposer’s corroborating exhibits; however, we must consider the corroborating exhibits as a whole, rather than individually. West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994). Moreover, the testimony of a witness, even without documentary evidence, can be sufficient to prove priority. See 3 J. Thomas McCarthy: McCarthy on Trademarks and Unfair Competition § 16.06(2) (4th ed. Westlaw 2013). In this case, applicant has not pointed to any contradictions, inconsistencies or indefiniteness in the Platts declaration that would raise a genuine dispute as to opposer’s explicit averment of use of the PRECISTA mark in United States commerce since 2004. In particular, the representative invoices submitted by opposer list a PRECISTA watch as the item purchased, and each of the invoices have transaction dates prior to Opposition No. 91204773 8 applicant’s priority date. The mark clearly appears in the body of the invoices and supports opposer’s trademark use of the PRECISTA mark. These invoices, coupled with opposer’s sales list and declaration testimony, suffice to prove opposer's claim of prior trademark use of the mark PRECISTA in connection with watches and watch accessories. See Feed Flavors Incorporated v. Kemin Industries, Inc., 214 USPQ 360 (TTAB 1982) (invoices, testimony and supporting material established prior use). With regard to the undated photographs and watch instructions, there is nothing about the undated photographs or watch instructions which contradicts or is inconsistent with opposer’s declaration of continuous use since 2004, and applicant has pointed to no such contradictions or inconsistencies. Applicant’s arguments regarding whether the public associates the PRECISTA mark with opposer due to the fact that the same mark had been previously used by a third party, and then abandoned, also are unpersuasive. Opposer has used his mark for more than eight years since the third party ceased use of the prior mark. Given that the statutory period for establishing a prima facie case of abandonment is three years of non-use, applicant would have had to submit some evidence that the third party still had any good will in the mark in order to raise a genuine Opposition No. 91204773 9 dispute as to whether opposer’s use of his mark is sufficient to develop common law rights. We also find opposer’s sales of 435 watches over the period from 2004 to 2010, given that these goods are not inexpensive, is far from nominal. Lastly, applicant’s argument that it should have the right to cross-examine Mr. Platts regarding the sales list fails to raise a genuine dispute of material fact. Applicant did have that right but failed to avail itself of the opportunity provided under Fed. R. Civ. P. 56(d). Accordingly, we find there is no genuine dispute of material fact that opposer made trademark use of the mark PRECISTA in connection with watches and watch accessories at least as early as 2004 and that opposer continues to provide these goods in connection with the PRECISTA mark. Thus, there is no genuine dispute that opposer has established its prior use of PRECISTA for watches and watch accessories over applicant. Likelihood of confusion In determining likelihood of confusion, we are guided by the factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Applicant has not presented any arguments or evidence regarding the issue of likelihood of confusion. By Opposition No. 91204773 10 applicant's silence on the issue of likelihood of confusion in its response to opposer's motion, applicant appears to concede that the parties' use of their respective marks is likely to cause confusion. Moreover, as opposer has pointed out, applicant has admitted as much: in applicant's answer, paragraph 7, applicant admits that “its mark is identical to Opposer’s mark” and its interrogatory response to opposer’s interrogatory request no. 1.04 states: “the respective marks are identical.” Applicant’s response to opposer’s interrogatory request no. 1.04 also states that the parties’ marks “cover goods that will be deemed to be closely related if not legally identical, the sole issue to be decided by the Trademark Trial and Appeal Board is whether Opposer's claim of prior use of the PRECISTA mark can be proven as legitimate use of the mark in the United States.” Given that applicant does not dispute that the parties’ use of their respective marks is likely to cause confusion and that the sole issue to be decided in this proceeding is that of priority, we find there is no dispute that applicant’s use of its mark is likely to cause confusion with opposer’s use of his mark. Opposition No. 91204773 11 Decision We find, based on the record herein and the applicable law, that there is no genuine dispute of material fact that opposer has established its standing, priority, and likelihood of confusion as a matter of law. Opposer's motion for summary judgment is granted.2 The opposition is sustained, and registration to applicant is refused. 2 In view of our finding on likelihood of confusion, we need not consider opposer’s claim of fraud.