Enterprise Rent-A-Car Co.v.Advantage Rent-A-Car, Inc.

Trademark Trial and Appeal Board

Mar 26, 2002

No. 91120101 (T.T.A.B. Mar. 26, 2002)

03/26/02

Mermelstein

Mailed: April 9, 2002
Opposition No. 120,101
Enterprise Rent-A-Car
Company
v.
Advantage Rent-A-Car,
Inc.

Before Bucher, Rogers and Drost, Administrative Trademark
Judges.

By the Board:
On March 26, 2001, applicant filed a “motion to
dismiss for failure to state a claim.” Because
applicant’s motion relied upon matters outside of the
pleadings,1 the Board notified the parties by order dated
April 2, 2001, that the motion would be treated as one
for summary judgment.2 See Fed. R. Civ. P. 12(b). With
its brief in opposition to applicant’s motion for
judgment, opposer filed a motion to amend its notice of

1 Specifically, applicant relies on the opinion and judgment on
appeal in a civil action between the parties herein, Advantage
Rent-A-Car Inc. v. Enterprise Rent-A-Car Co., 238 F.3d 378, 57
USPQ2d 1561, 1562-63 (5th Cir. 2001).
2 To avoid confusion, applicant’s motion is referred to herein
as a motion for summary judgment.

UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B.

Opposition No. 120,101
2
opposition to add claims for relief under state dilution
statutes. Applicant filed a reply in support of its
motion for summary judgment (which we have considered)
and an opposition to opposer’s motion to amend. Finally,
on July 2, 2001, opposer filed a motion to file a
surreply to the motion for summary judgment, along with
its proffered surreply.
MOTION FOR LEAVE TO FILE SURREPLY
Trademark Rule 2.127(e)(1) states that “The Board
may, in its discretion consider a reply brief. * * * No
further papers in support of or in opposition to a motion
for summary judgment will be considered by the Board.”
(emphasis added.) See also, No Fear Inc. v. Rule, 54
USPQ2d 1551, 1553 (TTAB 2000) (reply briefs are
disfavored; no further papers may be considered under
Board’s rules).
The quoted language of Rule 2.127(e)(1) leaves the
Board with no discretion in this matter. Even if it did,
however, we would not exercise it to consider the
surreply in this case. There must be an end to every
argument and a party’s desire to have the last word is
not a sufficient ground to ignore the Board’s rules for
briefing. Opposer’s motion is DENIED, and its surreply
has not been considered.
Opposition No. 120,101
3
MOTION FOR LEAVE TO AMEND PLEADING
Opposer now seeks leave to amend its notice of
opposition to add claims for dilution based on state
law.3 Under Fed. R. Civ. P. 15(a), once a responsive
pleading is filed, a party may amend a pleading only by
leave of the court, “and leave shall be freely given when
justice so requires.”
Consistent with the exhortation in Fed. R. Civ. P.
15(a), the Board is liberal in granting leave to amend,
provided the amendment would not violate settled law or
be prejudicial to the rights of the adverse party. E.g.,
Polaris Industries Inc. v. DC Comics, 59 USPQ2d 1798,
1799 (TTAB 2000); TBMP § 507.01 (and cases cited
therein). However, the Board will deny a motion for
leave to amend if the proffered pleading is itself
legally insufficient, or would serve no useful purpose.
Polaris, 59 USPQ2d at 1798.
Prejudice to applicant is not an issue in this case.
Trial has not yet begun, and the Board could easily

3 Specifically, opposer wishes to plead grounds for opposition
arising under the anti-dilution statutes of Alabama, California,
Connecticut, Delaware, Florida, Georgia, Hawaii, Idaho,
Illinois, Iowa, Louisiana, Maine, Massachusetts, Minnesota,
Mississippi, Missouri, Montana, Nebraska, New Hampshire, New
York, Oregon, Pennsylvania, Rhode Island, Tennessee, Texas,
Washington, West Virginia, and Wyoming. Motion, May 14, 2001,
p. 2.
Opposition No. 120,101
4
ameliorate any difficulty resulting from amendment by
extending the discovery period. See, e.g., Buffett v.
Chi-Chi's, Inc., 226 USPQ 428, 431 (TTAB 1985).
Nonetheless, we deny opposer’s motion, because the Board
has no jurisdiction to decide issues arising under state
dilution laws.
A review of the history of dilution claims before
the TTAB is instructive. Prior to 1995, many states
recognized claims for trademark dilution. It had long
been held, however, that claims for dilution were not a
cognizable ground for opposition or cancellation before
the Board. E.g., Max Factor & Co. v. Clairol Inc., 163
USPQ 240, 243 (TTAB 1969); Geo. A. Dickel Co. v. General
Mills, Inc., 317 F.2d 954, 137 USPQ 891, 892 (CCPA 1963);
K2 Corp. v. Philip Morris Inc., 192 USPQ 174, 177 (TTAB
1976), aff'd, 555 F.2d 815, 194 USPQ 81 (CCPA 1977).
In 1995, in order to provide a federal cause of
action for trademark dilution, Congress passed the
Federal Trademark Dilution Act of 1995 (FTDA). Pub. L.
No. 104-98, 109 Stat. 985. The FTDA amended Trademark
Act § 43 to provide a remedy for dilution.4 In Babson
Bros. Co. v. Surge Power Corp., 39 USPQ2d 1953 (TTAB
Opposition No. 120,101
5
1996), the Board held that while the FTDA provided “a
federal cause of action in courts,” it did not explicitly
or implicitly provide a new ground for opposition or
cancellation before the Board. Babson, 39 USPQ2d at
1954-55.
Finally, pursuant to the Trademark Amendments Act of
1999 (“TAA”), Pub. L. No. 106-43, 113 Stat. 218, Congress
amended the Trademark Act to provide that dilution is a
ground for opposition or cancellation proceedings before
the Board. In doing so, the legislative history
specifically referred to the Board’s decision in Babson,
see, e.g., Cong. Rec. June 22, 1999, S7453-54 (1999)
(statement of Sen. Hatch). To the extent relevant here,
the TAA amended Trademark Act § 13 as follows5 (wording
added by TAA underlined):
(a) Any person who believes that he would be damaged
by the registration of a mark upon the principal
register, including as a result of dilution
under section 43(c), may … file an opposition in
the Patent and Trademark Office, stating the
grounds therefor….

Opposer essentially contends that the term
“including” in the TAA has dramatically expanded the
Board’s jurisdiction in opposition or cancellation

4 The FTDA also amended Trademark Act § 45 by inserting a
definition of “dilution.”
Opposition No. 120,101
6
proceedings to consider as grounds for Board proceedings
any claim asserting a theory by which a “person …
believes that he would be damaged,” including those
arising under state dilution statutes. Neither the
language of the statute, nor its legislative history
supports such a result.
It seems hardly necessary to note that the Trademark
Trial and Appeal Board is an administrative tribunal,
established by statute for narrow and specific purposes,
and is not a court of general jurisdiction.6 Cf.
Trademark Act §§ 17, 18, 20, 24. To that end, the Board
and our primary reviewing court have long rejected claims
not specifically grounded in statute, regardless of
whether “damage” could be shown. E.g., Person's Co. v.
Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1481 (Fed. Cir.
1990) (Board cannot adjudicate unfair competition
claims); Kelly Services Inc. v. Greene's Temporaries
Inc., 25 USPQ2d 1460, 1464 (TTAB 1992) (Board may not
entertain a claim for declaratory judgment); Andersen

5 Trademark Act § 14, governing cancellation proceedings, was
similarly amended by the TAA.
6 Opposer states that “[t]he proposed amendment is consistent
and in accord with the Fifth Circuit’s decision” in a civil suit
between the same parties, arising out of use of the same mark.
However, the Fifth Circuit opinion did not direct opposer to
bring its state claims before the Board nor did it address the
Board’s statutory jurisdiction.
Opposition No. 120,101
7
Corp. v. Therm-O-Shield Int'l, Inc., 226 USPQ 431, 432,
n. 5 (TTAB 1985) (Board may not hear claims alleging
unfair competition under Trademark Act § 43(a)); Yasutomo
& Co. v. Commercial Ball Pen Co., 184 USPQ 60, 61 (TTAB
1974) (no authority to hear antitrust claims). In the
absence of an explicit legislative grant of authority to
do so, the Board may not entertain a claim – even if it
is alleged to be related to other matters properly before
the Board.7
Against this legislative and judicial background, it
is impossible to interpret the TAA as amending the
Trademark Act in the manner proposed by opposer. It is
clear that the portion of the TAA quoted above was
intended only to legislatively overturn the ruling in
Babson by specifically “including … dilution under
section 43(c),” Trademark Act § 13 (italics added), as a
ground for opposition. There is nothing either in the
plain language of the statute or in the legislative
history to support opposer’s interpretation.
Opposer’s motion to amend is accordingly DENIED.

7 The supplemental jurisdiction exercised by Federal courts does
not apply to administrative proceedings such as those before the
Board. See 28 U.S.C. § 1367(a) and (b) (“in any civil action of
which the district courts have original jurisdiction….”
(emphasis added)).
Opposition No. 120,101
8
SUMMARY JUDGMENT
As has often been stated, summary judgment is an
appropriate method for disposing of cases in which there
are no genuine issues of material fact in dispute, thus
leaving the case to be resolved as a matter of law. See
Fed. R. Civ. P. 56(c). The party moving for summary
judgment has the initial burden of demonstrating the
absence of any genuine issue of material fact. See
Celotex Corp. v. Catrett, 477 U.S. 317 (1986), and Sweats
Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4
USPQ2d 1793 (Fed. Cir. 1987). A factual dispute is
genuine, if, on the evidence of record, a reasonable
finder of fact 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
(Fed. Cir. 1992), and Olde Tyme Foods Inc. v. Roundy's
Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). The
evidence must be viewed in a light most favorable to the
non-movant, and all justifiable inferences are to be
drawn in the non-movant’s favor. 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 1472-73.
Opposition No. 120,101
9
Relevant Facts
The notice of opposition in this matter was based
solely on dilution under Trademark Act § 43(c).8
Simultaneous with the filing of its notice of opposition,
opposer moved for an immediate suspension of this
proceeding, noting that the parties were engaged in civil
litigation which, in opposer’s words,
will likely be dispositive on the ground (i.e.,
dilution) upon which Enterprise is opposing
Advantage’s application to register “We’ll Even Pick
You Up.” Thus, the proceedings before the Board
would be unnecessarily duplicative of the litigation
in the civil action.

The Board instituted this opposition proceeding, granted
opposer’s motion, and immediately stayed further action
in view of the civil action between the parties.
Applicant’s motion for summary judgment essentially
contends that the matters now decided in the civil action
between the parties are res judicata, and fully dispose
of opposer’s pleaded claim in this proceeding. Applicant
points out that the trial court found that Enterprise’s
mark was neither sufficiently distinctive nor famous to

8 Although some of opposer’s allegations might be construed as
alleging a likelihood of confusion under Trademark Act § 2(d),
it appears that the parties entered into a partial consent
judgment in their civil action in which they agreed and
consented to judgment that there is no likelihood of confusion
arising from the use of their respective marks. Advantage v.
Enterprise, 57 USPQ2d at 1562-63. Neither party contends that
likelihood of confusion is an issue in this proceeding.
Opposition No. 120,101
10
sustain an action for dilution under Trademark Act
§ 43(c),9 a holding which was affirmed on appeal.
Advantage v. Enterprise, 57 USPQ2d 1561. The Fifth
Circuit remanded the case to the trial court for further
proceedings on some of Enterprise’s state dilution
claims.10
Res Judicata
As our primary reviewing court said recently, under
the doctrine of res judicata,

9 According to the Fifth Circuit,
Enterprise did not prove that its slogan was
sufficiently “famous,” even within the car rental
market. As the district court explained, dilution
is an extraordinary remedy, and Enterprise failed to
prove that such common, descriptive words as “we'll
pick you up” should be given monopoly protection in
favor of an early user any more than such words as
“we deliver” or “we pay the postage.”
Advantage v. Enterprise, 57 USPQ2d at 1563.
Neither the district court nor the Fifth Circuit
specifically addressed the question of timing, i.e., when the
mark was (or was not) famous. Nonetheless, it is clear that
both courts were convinced that the mark did not, and never had,
achieved fame sufficient to support a finding of dilution under
the FTDA.
10 The Fifth Circuit found that the district court had
incorrectly concluded that “fame” is a necessary element under
the dilution statutes of Texas and Louisiana, and remanded for
further proceedings with regard to those state claims.
Advantage v. Enterprise, 57 USPQ2d at 1564. Notwithstanding
that proceedings are apparently still ongoing with respect to
the Texas and Louisiana claims, opposer does not contend that
the Fifth Circuit decision is not final with respect to claims
under the FTDA. Cf. Tronzo v. Biomet, Inc., 236 F.3d 1342, 57
USPQ2d 1385, (Fed. Cir. 2001), cert. denied, __ U.S. __, 122 S.
Ct. 580 (2001) (party which failed to appeal punitive damages
Opposition No. 120,101
11
a judgment on the merits in a prior suit bars a
second suit involving the same parties or their
privies based on the same cause of action. Over the
years, the doctrine has come to incorporate common
law concepts of merger and bar, and will thus also
bar a second suit raising claims based on the same
set of transactional facts. Accordingly, a second
suit will be barred by claim preclusion if: (1)
there is identity of parties (or their privies);
(2) there has been an earlier final judgment on the
merits of a claim; and (3) the second claim is based
on the same set of transactional facts as the first.

Jet, Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55
USPQ2d 1854, 1856 (Fed. Cir. 2000) (internal citations
and quotation marks omitted).
Analysis
There is no genuine issue of material fact at issue
here. Opposer does not contend that all of the necessary
elements for the application of res judicata have not
been satisfied, or that the judgment in the civil action
is not final or binding to the extent relevant here.
Rather, opposer contends that were it to prevail “on any
aspect of the Fifth Circuit litigation, [opposer] will
obtain an injunction against [applicant] and [applicant]
would absolutely be precluded from a federal trademark
registration because it would not be entitled to
nationwide use.” Memorandum in Opposition at 1-2.

award may not later argue that such damages are excessive when
compensatory damages are dramatically reduced on remand).
Opposition No. 120,101
12
We disagree. As noted, the only matters which have
not been finally decided in the civil litigation are
claims for dilution under state statutes. But as we
explained above in connection with opposer’s motion to
amend, such claims are not appropriate grounds for
opposition and cannot be considered by the Board.
Indeed, the only pleaded matter which could properly be
put before us has already been decided in the civil
action.11
Finally, while opposer “strongly disagree[s]” that
its mark was not famous at the time of trial,12 it claims
that the mark has achieved fame since then. Memorandum
in Opposition at 2. Opposer’s argument is too little,
too late. Too little, because the “distinctive and
famous” requirement of Trademark Act § 43(c) is a
question to be determined by looking to the factors set
out in the statute, not to any other standard such as
those used under a particular state’s dilution law, which

11 Needless to say, if the Federal court does ultimately find
for opposer on one or more state claims, nothing in this
decision precludes opposer from seeking from the court any
remedy with respect to a resulting registration that may be
appropriate. See Trademark Act § 37.
12 In opposing the motion for summary judgment, opposer takes
issue with the conclusions of the district court and the Fifth
Circuit. If opposer disagreed with the outcome in the district
court and the Fifth Circuit, the Board is not the appropriate
forum to obtain relief. Opposer may not collaterally attack the
judicial proceedings in this forum.
Opposition No. 120,101
13
opposer would have us import into the federal dilution
statute.
More importantly, however, opposer’s argument is too
late, because a party seeking to invoke dilution as a
ground for cancellation must establish that its mark
became famous prior to applicant’s first use of the mark.
Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1174 n. 9
(TTAB 2001). As noted in the Fifth Circuit’s opinion,
applicant has used the mark since at least as early as
1990. 57 USPQ2d at 1562. Since opposer could not show
in district court that its mark was ever distinctive and
famous, the question of whether opposer’s mark has
achieved fame since the earlier trial is irrelevant.
Opposer argues, however, that we must consider the
respective rights of the parties in each geographical
area in which they do business. Memorandum in Opposition
at 6-7. To the extent we understand it, under opposer’s
theory, a dilution plaintiff need only prove that its
mark became famous in a particular geographical area
prior to the defendant’s use in that area. Thus, use
prior to the attainment of fame in plaintiff’s mark would
– at most – preclude a finding of dilution only in the

Opposition No. 120,101
14
areas in which the defendant had actually used the
allegedly diluting mark.
Suffice it to say that we do not find opposer’s
authorities – all likelihood of confusion cases decided
prior to enactment of the FTDA – persuasive support for
its theory. Federal registration generally affords the
owner rights which are national in scope. See Trademark
Act § 7(c). By long-standing policy, the Board will
consider geographic limitations only in the context of a
concurrent use proceeding, Trademark Rule 2.133(c); TBMP
§ 1101.02, and cases cited therein, and we see nothing in
the FTDA or the TAA which would support a different
result.
Applicant alleges use of the mark as early as 1990.
Assuming such use could be proved, whether opposer’s mark
is famous today is of little relevance. Unless opposer
can establish that its mark was famous prior to
applicant’s use – anywhere in the country – it cannot
prevail. On this point, opposer is barred by the federal
court’s judgment and the doctrine of claim preclusion
from attempting to prove its mark was famous prior to
1999.
After careful consideration of the evidence and
argument of record, we conclude that there are no genuine
Opposition No. 120,101
15
issues of material fact, and that applicant is entitled
to judgment as a matter of law. Fed. R. Civ. P. 56.
Accordingly, applicant’s motion for summary judgment is
GRANTED, and the opposition is dismissed with prejudice.

.oOo.