Entrepreneurial Ventures Capital Co., LLCv.Wet Holdings (Global) Ltd.Download PDFTrademark Trial and Appeal BoardMar 20, 2019No. 91241478 (T.T.A.B. Mar. 20, 2019) Copy Citation mbm/WTF Mailed: March 20, 2019 Opposition No. 91241478 Entrepreneurial Ventures Capital Co., LLC v. Wet Holdings (Global) Ltd. Before Bergsman, Wellington and Goodman, Administrative Trademark Judges. By the Board: This proceeding now comes before the Board for consideration of (1) Wet Holdings (Global) Ltd.’s (“Applicant”) motion for summary judgment (filed August 9, 2018) against Entrepreneurial Ventures Capital Co., LLC’s (“Opposer”) pleaded likelihood of confusion claim and (2) Opposer’s combined motion to seal and to strike (filed September 13, 2018).1 The motions are fully briefed. 1 Applicant states that it served its initial disclosures on Opposer concurrently with its summary judgment motion on August 9, 2018. 6 TTABVUE 6. Accordingly, the motion for summary judgment is timely. See Trademark Rule 2.127(e)(1), 37 C.F.R. § 2.127(e)(1). 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 ORDER IS NOT A PRECEDENT OF THE TTAB Opposition No. 91241478 2 I. BACKGROUND Applicant seeks to register the mark WET WATER ENHANCING TECHNOLOGIES and Design, as shown below:2 The application lists the goods in International Class 11 as follows: Apparatus for the cleansing, purification and pH enhancement of water; water conditioning apparatus for producing coherent water; apparatus for cleansing grey water; apparatus for the recovery of water waste; water treatment apparatus, namely, water conditioning units for changing the structure and resonance of water molecules for the enhancement of residential, commercial, and industrial water supplies. On May 30, 2018, Opposer filed a notice of opposition opposing registration of Applicant’s mark on the ground of likelihood of confusion pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). In support of its likelihood of confusion claim, Opposer has pleaded ownership of Registration No. 3541668 for the standard 2 Application Serial No. 87582805, filed August 24, 2017, based on an allegation of a bona fide intent to use pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). “WATER ENHANCING TECHNOLOGIES” is disclaimed. The description of the mark is as follows: “The mark consists of a blue drop of water with the stylized word ‘WET’ spelled in the drop of water and with the gray stylized wording ‘WATER ENHANCING TECHNOLOGIES’ appearing underneath the drop of water. The color white appears as background only and is not a claimed feature of the mark.” Opposition No. 91241478 3 character mark WHET for “bottled drinking water; bottled water; drinking water; spring water; [and] table water,” in International Class 32.3 Additionally, Opposer has attempted to plead prior common law rights in a water droplet design mark, as shown below: In its answer, Applicant denies the salient allegations in the notice of opposition and files counterclaims for cancellation of Opposer’s pleaded registration.4 In support of its motion for summary judgment, Applicant submitted a declaration of Edwin D. Schindler (“Schindler”), counsel for Applicant, who attaches, inter alia, the following: (1) a copy of the complete electronic file wrapper for Applicant’s pending application (Ser. No. 87582805)5; (2) a copy of Opposer’s registration certificate (Reg. No. 3541668); (3) a copy of email correspondence from Opposer’s counsel, Gregg Zegarelli (“Zegarelli”), to Mr. Schindler dated February 28, 2018; (4) a copy of Mr. Zegarelli’s follow-up emails sent to Mr. Schindler on February 3 Registration No. 3541668, issued December 2, 2008, claiming August 21, 2008 as both the date of first use and the date of first use in commerce. Section 8 and 9 declarations accepted December 17, 2018. 4 The Board has not reviewed the counterclaims for purposes of determining Applicant’s motion for summary judgment or Opposer’s combined motion to strike and seal. 5 Pursuant to Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), “[t]he file of each application … of the application against which a notice of opposition is filed … forms part of the record of the proceeding without any action by the parties and references may be made to the file for any relevant and competent purpose in accordance with paragraph (b)(2) of this section.” Opposition No. 91241478 4 28, 2018, April 6, 2018, and May 23, 2018; and (5) copies of third-party trademark registration certificates incorporating water droplet designs. 6 TTABVUE 19-119. In support of its response to Applicant’s motion for summary judgment, Opposer submitted a declaration of Mr. Zegarelli. Additionally, Opposer attached the following: (1) a copy of the failed delivery auto-response email Mr. Zegarelli received on February 28, 2018; (2) screenshots of web pages; and (3) an image of Opposer’s water product bearing the WHET mark and accompanying design.6 8 TTABVUE 12- 18. Additionally, on September 10, 2018, Opposer filed a miscaptioned combined motion to seal and strike titled as a motion in limine. 9 TTABVUE. On September 13, 2018, Opposer filed a corrective motion to seal and strike, stating that its September 10, 2018 filing was inadvertently titled a motion in limine, and clarifying that Opposer was seeking only to strike and seal certain evidence submitted in support of Applicant’s motion for summary judgment. 10 TTABVUE 2. For purposes of this order, we presume the parties’ familiarity with the pleadings, the history of the proceedings, and the additional arguments and evidence submitted with respect to the parties’ motions and responses thereto. 6 Internet materials may only be considered if properly submitted with the date the materials were accessed and their source (e.g., the URL). Trademark Rule 2.122(e). Inasmuch as Opposer did not provide the required information, the screenshots are given no consideration. See TBMP § 704.08(c) and authorities cited therein; TMBP § 528.05(a)(1). Additionally, none of the remaining exhibits are considered self-authenticating and were not submitted with an authenticating declaration or affidavit. The exhibits are therefore given no consideration. Opposition No. 91241478 5 II. PLEADING MATTERS As an initial matter, the Board finds that Opposer failed to plead properly its claim of likelihood of confusion based on its purported common law rights. To allege a valid ground for opposition under Section 2(d) of the Trademark Act, a plaintiff must allege that it has valid proprietary rights that are prior to those of Applicant and that Applicant’s mark so resembles Opposer’s mark as to be likely to cause confusion. See 15 U.S.C. § 1052(d); Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981). In support of its purported common law rights, Opposer pleads that it uses its “brand in conjunction with a water droplet” design. Notice of opposition ¶ 2. Opposer does not plead the dates of first use of its design mark or identify with particularity the goods or services for which the logo is used.7 This allegation is insufficient to provide Applicant adequate notice for the basis of the alleged prior rights. See Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007) (elements of each claim should include enough detail to give the defendant fair notice). Accordingly, the Board finds that Opposer has failed to sufficiently plead a claim of likelihood of confusion based on its prior common law rights in its design mark. Thus, the insufficiently pleaded allegations of common law rights in connection with the design mark are hereby stricken. 7 Additionally, Opposer pleads generally that it has use of its registered mark in connection with “water products.” Notice of opposition ¶ 3. The general reference to “water products” is vague and does not provide Applicant fair notice of the basis of any additional claimed common law rights for goods beyond those specifically identified in Opposer’s pleaded registration. Opposition No. 91241478 6 Consistent with Board policy, however, Opposer is granted leave to amend its notice of opposition. Opposer is allowed until April 10, 2019 in which to file an amended notice of opposition that properly pleads a claim of likelihood of confusion based on its purported common law rights, failing which, the allegations will be stricken with prejudice and given no further consideration. In turn, Applicant is allowed until April 30, 2019 in which to file and serve an answer (and counterclaims) or otherwise respond to the amended pleading, if any. The Board turns next to Opposer’s combined motion to seal and strike. III. OPPOSER’S COMBINED MOTION TO SEAL AND STRIKE Pursuant to Fed. R. Civ. P. 12(f) and Fed. R. Evid. 408, Opposer has motioned the Board to strike and seal certain material submitted by Applicant in support of its motion for summary judgment, specifically, email communications sent from Opposer to Applicant’s counsel regarding the dispute at issue in this proceeding. Fed. R. Civ. P. 12(f). In support of its motion for summary judgment, Applicant has submitted copies of emails sent from Opposer to Applicant’s counsel, which Applicant contends contradict certain allegations in the notice of opposition. Applicant relies upon these emails, at least in part, to support its argument that summary judgment should be entered in Applicant’s favor on Opposer’s claim of likelihood of confusion. Specifically, Applicant argues that Opposer has admitted in its emails that there is no likelihood of confusion with respect to “WET” and “WHET.” Applicant contends that Fed. R. Evid. 408 is “inapplicable to the unsolicited e-mails that [Opposer] took upon itself to Opposition No. 91241478 7 send to counsel for [Applicant] and therefore the [Opposer’s] e-mails are fully admissible into evidence.” 6 TTABVUE 11. In other words, Applicant contends that the emails are admissible to disprove the validity of Opposer’s claim because they were unsolicited and sent prior to the institution of this proceeding. Conversely, Opposer argues that Applicant inappropriately divulged Opposer’s compromise offers to initiate settlement negotiations and that Applicant is improperly relying upon them in support of its summary judgment motion to disprove Opposer’s likelihood of confusion claim in contravention of Fed. R. Evid. 408. Although the emails were sent prior to the institution of this proceeding, Opposer contends that the emails were sent after Opposer filed an extension of time to oppose Applicant’s involved application and that the emails were sent in an attempt to settle the trademark dispute. Although motions to strike are not favored, the Board grants motions to strike in appropriate cases. See, e.g., Ohio State University v. Ohio University, 51 USPQ2d 1289, 1293 (TTAB 1999); and Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570 (TTAB 1988). See also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 506.01 (2018) and cases cited therein. Fed. R. Evid. 408 prohibits, in relevant part, the admissibility of evidence “either to prove or disprove the validity or amount of a disputed claim…” See Fed. R. Evid. 408(a). Although the email communications were sent prior to the institution of this proceeding, they were sent after Opposer filed an extension of time to oppose the involved application and were sent with a clear intent of settling the trademark dispute. Applicant is also offering Opposition No. 91241478 8 the emails specifically in an attempt to disprove the validity of Opposer’s claim of likelihood of confusion. Thus, the emails fall within the protection of Fed. R. Evid. 408. In its opposition to the motion to strike and seal, Applicant contends that Rule 408 does not extend to unsolicited offers. In support of its argument, Applicant cites U.S. v. Davis, 664 F. Supp. 2d 86 (D.D.C. 2009) for the proposition that an unsolicited offer cannot constitute an offer to settle a dispute or claim under Fed. R. Evid. 408. However, the Court of Appeals for the District of Columbia overruled the district court’s decision in U.S. v. Davis and found that Fed. R. Evid. 408 also protects unsolicited offers provided to prove or disprove the validity of a claim. U.S. v. Davis, 596 F.3d 852 (D.C. Cir. 2010). “If one party attempts to initiate negotiations with a settlement offer, the offer is excluded from evidence even if the counterparty responds: ‘I’m not negotiating with you.’” Id. at 859. Thus, the fact that Opposer sent an unsolicited compromise offer to Applicant to which Applicant never responded is not dispositive. As the Court of Appeals recognized in U.S. v. Davis, “[o]ffers to settle are excluded even if no settlement negotiations follow,” because “[i]t makes no sense to force the party who initiates negotiations to do so at his peril.” Id. at 859. Moreover, the Board finds that the purpose of Fed. R. Evid. 408 is to promote settlement. See Fed. R. Evid. 408 advisory committee’s note (1974). Consideration of Opposer’s offers as evidence to disprove Opposer’s claim would be at odds with the purpose of Fed. R. Evid. 408. Opposition No. 91241478 9 The Board finds that the email communications were made as part of an offer to compromise and that Applicant is specifically presenting the statements as evidence to disprove the validity of the Opposer’s claim asserted in the notice of opposition. Accordingly, Rule 408 applies and precludes the presentation of said communications as evidence. The Board therefore finds it appropriate to strike the copies of Opposer’s emails provided by Applicant, as well as all statements derived from Opposer’s emails. Accordingly, Opposer’s motion to strike said material is GRANTED and the exhibits and references to their contents contained in Applicant’s motion for summary judgment are hereby stricken.8 As to the motion to seal, the Board relies on the above-referenced analysis in finding that the statements should be sealed from the public record and Opposer’s motion to seal is GRANTED. Accordingly, the motion and supporting materials in the Board’s docket (6 TTABVUE) will no longer be viewable to the public and Applicant is required to file a redacted copy of its motion for summary judgment for the publicly available record by April 10, 2019. IV. APPLICANT’S MOTION FOR SUMMARY JUDGMENT A. Summary Judgment Standard Summary judgment is appropriate where the movant shows that there is no genuine dispute as to any material fact and that it is entitled to judgment as a matter 8 In view of the Board’s finding that the communications should be stricken under Fed. R. Evid. 408, the Board need not reach a determination regarding Opposer’s alternative argument that the email communications are subject to the Board’s Standard Protective Order. Opposition No. 91241478 10 of law. Fed. R. Civ. P. 56(a). A party asserting that a fact cannot be or is genuinely disputed must support its assertion by either (1) citing to particular parts of materials in the record, or (2) showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact. Fed. R. Civ. P. 56(c). A movant for summary judgment carries the burden of proof in regard to its motion. See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). In deciding the motion, the function of the Board is not to try issues of fact, but to determine if there are any genuine disputes of material fact to be tried. See TBMP § 529.01 and cases cited therein. When the moving party has supported its motion with sufficient evidence that, if unopposed, indicates there is no genuine dispute of material fact and that the moving party is entitled to judgment as a matter of law, the burden then shifts to the non-moving party to demonstrate the existence of a genuine dispute of material fact to be resolved at trial. Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1540 (TTAB 2009). The nonmoving party must be given the benefit of all reasonable doubt as to whether genuine disputes of material fact exist, and the evidentiary record on summary judgment, and all inferences to be drawn from the undisputed facts, must be viewed in the light most favorable to the nonmoving party. See Opryland USA, Inc. v. Great Am. Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992). Opposition No. 91241478 11 B. Summary Judgment Decision In support of its motion for summary judgment on Opposer’s claim of likelihood of confusion, Applicant submits that Opposer’s pleaded mark is weak for the asserted goods and should be afforded a narrow scope of protection. 6 TTABVUE 12-13. Additionally, Applicant alleges that its goods and those of Opposer are unrelated. Id. at 14-15. In response, Opposer contends that “WHET” and “WET” are pronounced the same and have the same meaning or connotation. 8 TTABVUE 6. Additionally, Opposer asserts that the parties’ goods are related and that the channels of trade overlap and submits the Zegarelli declaration in support of its contention. Id. at 9, 15. Upon careful consideration of the parties’ arguments and evidence, and drawing all inferences in favor of Opposer as the nonmoving party, we find that Applicant has not demonstrated the absence of a genuine dispute of material fact for trial and that Applicant is not entitled to summary judgment under applicable law. Based on the present record,9 we find that with regard to Opposer’s asserted Section 2(d) claim, a genuine dispute of material fact exists as to: (1) the similarities or dissimilarities between the parties’ respective marks for likelihood of confusion purposes; (2) the similarities or dissimilarities between the parties’ respective goods; (3) the relatedness of the respective established, likely to persist channels of trade 9 The parties should note that the evidence submitted in connection with a motion for summary judgment or opposition thereto is of record only for consideration of that motion. Any such evidence to be considered at final hearing must be properly introduced in evidence during the appropriate trial period. See Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983). Opposition No. 91241478 12 and purchasers to whom sales are made; and (4) the strength of Opposer’s pleaded mark.10 In view thereof, Applicant’s motion for summary judgment on Opposer’s claim of likelihood of confusion is DENIED. V. TRIAL SCHEDULE Proceedings herein are resumed. Remaining dates are reset as follows: Amended Notice of Opposition (If Any) & Redacted Version of Motion for Summary Judgment Due 4/10/2019 Answer to Amended Opposition (If Any) 4/30/19 Answer to Counterclaim 5/20/2019 Deadline for Discovery Conference 6/19/2019 Discovery Opens 6/19/2019 Initial Disclosures Due 7/19/2019 Expert Disclosures Due 11/16/2019 Discovery Closes 12/16/2019 Pretrial Disclosures Due for Opposer/Counterclaim-Respondent 1/30/2019 30-Day Trial Period Ends for Opposer/Counterclaim- Respondent 3/15/2020 Pretrial Disclosures Due for Applicant/Counterclaim-Petitioner 3/30/2020 30-Day Trial Period Ends for Applicant/Counterclaim-Petitioner 5/15/2020 Pretrial Disclosures Due for Rebuttal of Opposer/Counterclaim- Respondent 5/30/2020 30-Day Trial Periods Ends for Applicant/Counterclaim- Petitioner 7/13/2020 Pretrial Disclosures Due for Rebuttal for Applicant/ Counterclaim-Petitioner 7/28/2020 15-Day Trial Period Ends for Applicant/Counterclaim-Petitioner 8/27/2020 Opening Brief for Opposer/Counterclaim-Respondent Due 10/26/2020 Combined Brief for Applicant/Counterclaim-Petitioner Due 11/25/2020 Combined Rebuttal Brief for Opposer/Counterclaim-Respondent Due 12/25/2020 Rebuttal Brief for Applicant/Counterclaim-Petitioner Due 1/9/2021 Request for Oral Hearing (optional) Due 1/19/2021 10 The fact that we have identified certain genuine disputes of material fact as a sufficient basis for denying Applicant’s motion for summary judgment should not be construed as a finding that such disputes necessarily are the only disputes that remain for trial. Opposition No. 91241478 13 Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is taken and introduced out of the presence of the Board during the assigned testimony periods. The parties may stipulate to a wide variety of matters, and many requirements relevant to the trial phase of Board proceedings are set forth in Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the manner and timing of taking testimony, matters in evidence, and the procedures for submitting and serving testimony and other evidence, including affidavits, declarations, deposition transcripts and stipulated evidence. Trial briefs shall be submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at final hearing will be scheduled only upon the timely submission of a separate notice as allowed by Trademark Rule 2.129(a). Copy with citationCopy as parenthetical citation