Falcon Marine, LLCv.Marine Pro Custom Boatworks

Trademark Trial and Appeal Board

Apr 23, 2019

92067847 (T.T.A.B. Apr. 23, 2019)

JMM
April 23, 2019

Cancellation No. 92067847

Falcon Marine, LLC

v.
Marine Pro Custom Boatworks

Before Shaw, Kuczma, and Dunn,
Administrative Trademark Judges.

By the Board:

This case comes before the Board for consideration of cross-motions for partial
summary judgment as to Petitioner’s standing and priority as an element of its
likelihood of confusion claim.1
Respondent owns a registration for the mark FALCON in standard characters for
“boats” with a constructive use date of August 5, 2014.2 The petition for cancellation
pleads a claim of priority and likelihood of confusion based on Petitioner’s use of the
marks FALCON MARINE and FALCON “since at least as early as 2008” in

1 To the extent that Respondent’s motion mentions the claim of deceptiveness, the Board
notes that its October 24, 2018 order (16 TTABVUE 4) found that the amended petition to
cancel contains no allegations of deceptiveness, and Petitioner confirmed that it is not seeking
relief on grounds of deceptiveness. See 14 TTABVUE 3–4, n.1.
2 Registration No. 4847202 issued November 3, 2015 from an application filed August 5, 2014
based on an allegation of first use and first use in commerce of January 1, 2015.
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
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92067847

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connection with “the custom manufacture of boats and parts therefor, and custom
fiberglass manufacturing of boats and parts therefor” and the “manufacture and sale
of sail boats and catamarans.”3 After the Board denied as a premature motion for
summary judgment Respondent’s motion to dismiss based on Petitioner’s license
agreement with a third party, Respondent filed its answer, its initial disclosures, and
its present motion for summary judgment. Respondent’s answer asserts the defense
that Petitioner’s use of the mark is based on the license with a third party, and the
license prevents Petitioner from asserting any rights based on its common law use of
the mark.
RELEVANT BACKGROUND
On September 19, 2003, Registration No. 2884381 issued to third-party Jodie
Grigg Fiberglass, Inc. (“JGFI”) for the standard character mark FALCON for “boats”
in International Class 12.
In December 2008, Petitioner Falcon Marine, LLC began use of the marks
FALCON and FALCON MARINE in connection with the manufacture and sale of sail
boats and catamarans.4
On April 3, 2009, JGFI entered into a non-exclusive license of perpetual duration
with Petitioner for use of “the Registered Trademark ‘Falcon®’ as registered with the
Commissioner of Patents and Trademarks under registration number 2884381” in
connection with the manufacture, distribution, marketing, and sale of certain types

3 10 TTABVUE 2–3, Amended Petition, ¶ 2.
4 20 TTABVUE 24, Declaration of Matthew McDonald ¶ 4.
Cancellation No. 92067847

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of boats (hereinafter the “License Agreement”).5 The license specified that Licensor
“shall keep its Trademark current” by complying with all regulations and paying all
filing fees required by USPTO. On December 8, 2011, JGFI assigned Registration No.
2884381 and its interest and goodwill in the mark FALCON to Dawson Stafford, an
individual.6 On February 6, 2012, the License Agreement with Petitioner was
recorded with the Assignment Recordation Division of the U.S. Patent and
Trademark Office, at Reel/Frame 4711/0139.
On August 5, 2014, Respondent filed its application under Section 1(b) of the
Trademark Act to register the mark FALCON for “boats” in International Class 12.
On November 19, 2014, Respondent’s application was rejected based on likelihood of
confusion with Registration No. 2884381.
On April 17, 2015, Registration No. 2884381 was cancelled under Trademark Act
Section 8. With the removal of the confusingly similar prior registration,
Respondent’s application was approved and issued as Registration No. 4847202 on
November 3, 2015.
On April 21, 2017, Petitioner filed application Serial No. 87420703 to register the
standard character mark FALCON MARINE (MARINE disclaimed) for “custom
manufacture of boats and parts therefor; custom manufacture of fiberglass boats and
parts therefor,” in International Class 40 based on an allegation of first use in
commerce of December 1, 2008. On July 28, 2017, Petitioner’s application was

5 18 TTABVUE 19–25.
6 20 TTABVUE 160–62.
Cancellation No. 92067847

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rejected based on likelihood of confusion with Respondent’s subject registration, and
on January 26, 2018, Petitioner filed its petition for cancellation.
CROSS MOTIONS 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(a). The moving party has the burden
of demonstrating the absence of any genuine dispute as to a material fact. See Celotex
Corp. v. Catrett, 477 U.S. 317, 323 (1986). Only when the moving party’s motion for
summary judgment is supported by evidence sufficient to indicate that there is no
genuine dispute as to any material fact, and the moving party is entitled to judgment
as a matter of law, does the burden shift to the nonmoving party to demonstrate the
existence of a genuine dispute regarding at least one material fact which requires
resolution at trial. Celotex Corp., 477 U.S. at 324. When the plaintiff is the movant,
the motion for summary judgment also must establish that there is no genuine
dispute of material fact as to its standing. Lipton Indus., Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 188 (CCPA 1982) (“The facts regarding standing, we
hold, are part of a petitioner’s case and must be affirmatively proved.”).
When cross motions for summary judgment are presented, the Board evaluates
each motion on its own merits and resolves all doubts and inferences against the
party whose motion is being considered. Mingus Constr., Inc. v. United States, 812
F.2d 1387, 1390–91 (Fed. Cir. 1987); Ava Ruha Corp. v. Mother’s Nutritional Ctr.,
Inc., 113 USPQ2d 1575, 1579 (TTAB 2015). The mere fact that both parties have
Cancellation No. 92067847

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moved for summary judgment does not necessarily mean there are no genuine
disputes of material fact, or authorize the resolution of such disputes, or dictate that
the Board should enter judgment in favor of one of the parties. See Drive Trademark
Holdings LP v. Inofin, 83 USPQ2d 1433, 1437 (TTAB 2007).
To prevail on summary judgment on a claim of likelihood of confusion, the movant
must establish that there is no genuine dispute that it has priority of use or that
priority is not at issue; and that contemporaneous use of the parties’ marks in
connection with their respective goods or services would, or would not, be likely to
cause confusion, mistake or to deceive consumers. See 15 U.S.C. § 1052(d);
Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735
(TTAB 2001).
In the absence of a pleaded registration, a party may establish priority in a mark
through common law use. Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1023
(TTAB 2009). “[T]o the extent opposer wishes to rely on its common law rights, it
must establish priority with respect to such rights. That is, opposer must prove by a
preponderance of the evidence that its common law rights were acquired before any
date upon which applicant may rely.” Embarcadero Techs., Inc. v. RStudio, Inc., 105
USPQ2d 1825, 1834 (TTAB 2013). Even if it does not claim ownership of a
registration, a licensee may rely on its own common law use of a mark to establish its
priority. See Chicago Bears Football Club Inc. v. 12th Man/Tennessee LLC, 83
USPQ2d 1073, 1075 (TTAB 2007) (“Thus, opposers [comprising owner and licensee of
registration] have also established priority as to their common law use”); Avia Grp.
Cancellation No. 92067847

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Int’l Inc. v. Faraut, 25 USPQ2d 1625, 1627 (TTAB 1993)(“Further, the issue in a
proceeding such as this is what rights petitioner has in its pleaded marks vis-a-vis
the defendant, not what rights anyone else may have in it.”).
RESPONDENT’S MOTION FOR PARTIAL SUMMARY JUDGMENT DENIED
Where the nonmoving party will bear the burden of proof at trial on a dispositive
issue, the moving party may discharge its burden by showing that there is an absence
of evidence to support the nonmoving party’s case. Celotex Corp., 477 U.S. at 325;
Copelands’ Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1298 (Fed. Cir.
1991). Respondent submits TSDR printouts for Petitioner’s pending application, the
cancelled third-party registration, and the License Agreement between Petitioner
and the third party.
Respondent’s motion for partial summary judgment as to standing and priority
does not dispute Petitioner’s claims that it has been using the FALCON and FALCON
MARINE marks since 2008 and that it owns the pending FALCON MARINE
application based on that use, and Respondent does not contend that Petitioner’s use
was unlawful or insufficient for trademark use. Respondent relies exclusively on
Trademark Act Section 5 to assert that Petitioner was party to a license for use of the
registered mark FALCON, that Petitioner’s use under the license inured to the
benefit of the third-party licensor, and so the license precludes Petitioner from
asserting its common law use of the marks FALCON and FALCON MARINE either
as a direct basis for standing and priority, or indirectly, as the basis for its application
Cancellation No. 92067847

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for the mark FALCON MARINE, which also is asserted as a basis for standing. 7
In opposition to the motion, Petitioner contends that the License Agreement is
immaterial to this proceeding because it does not negate Petitioner’s continuous, and
“substantially exclusive,” use of the FALCON and FALCON MARINE marks since
before Respondent’s earliest possible priority date.8 Petitioner submits the
declaration of its co-founder and president, Matthew McDonald (hereinafter the
“McDonald Declaration”), who states that he was the designer and builder of
Petitioner’s FALCON line of racing catamarans, that Petitioner has used the marks
on sail boats and catamarans continuously since 2008, including both boats for the
commercial and military marine markets under the mark FALCON MARINE, and
sail boats and catamarans under both marks.9 In addition, Mr. McDonald attaches to
his declaration printouts from the Internet Archive Wayback Machine that allegedly
“show examples” of Petitioner’s historic and ongoing use of the FALCON and
FALCON MARINE marks, printouts showing current use of the marks on
Petitioner’s website, and a printout of a digital owner’s manual for one of Petitioner’s
catamarans that allegedly shows Petitioner’s current use of the FALCON and

7 Trademark Act Section 5 provides:
Where a registered mark or a mark sought to be registered is or may be used legitimately
by related companies, such use shall inure to the benefit of the registrant or applicant for
registration, and such use shall not affect the validity of such mark or of its registration,
provided such mark is not used in such manner as to deceive the public. If first use of a
mark by a person is controlled by the registrant or applicant for registration of the mark
with respect to the nature and quality of the goods or services, such first use shall inure
to the benefit of the registrant or applicant, as the case may be.
8 20 TTABVUE 7–8.
9 20 TTABVUE 23–26.
Cancellation No. 92067847

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FALCON MARINE marks.10 The McDonald Declaration also avers that licensor JGFI
never licensed any other party to use the registered FALCON mark; that JGFI ceased
use of the registered mark at least by 2011; that, after making its payment under the
license in early 2010, there was no further contact between Petitioner and JGFI; that
Petitioner never had any contact with JGFI’s assignee; that the assignee never made
direct use of the registered mark and never licensed any third party to use the
registered mark; and that no third party has used the FALCON or FALCON
MARINE mark between 2008 and 2014. With its reply, Respondent does not explain
how the license for FALCON bars Petitioner’s use of FALCON MARINE, and with
respect to the FALCON mark, insists that the license states that it is perpetual in
duration, and so Petitioner is barred from relying on its common law use of the term
FALCON.
As shown, Respondent’s motion for summary judgment is based on a
misunderstanding of the relevant case law. Petitioner is entitled to rely on its own
common law use, whether or not that use occurred pursuant to a license, as the basis
for its standing and its claim of priority. Giersch, 90 USPQ2d at 1023; Chicago Bears
Football Club Inc., 83 USPQ2d at 1075. As a result, Respondent has not carried its
burden to show that there is no genuine dispute of material fact that Petitioner will
be unable to prove standing or to rely on its common law use to establish priority,
and that Respondent is entitled to judgment as a matter of law. Respondent’s
motion for partial summary judgment is denied.

10 20 TTABVUE 89–104.
Cancellation No. 92067847

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PETITIONER’S MOTION FOR PARTIAL SUMMARY JUDGMENT DENIED IN
PART
Petitioner’s motion for partial summary judgment argues that there are no
genuine disputes of material fact as to standing and priority, and that the undisputed
facts establish that Petitioner “is damaged by the continued registration” of
Respondent’s mark.11 In support, Petitioner relies on the McDonald Declaration and
the printouts from the Internet Archive Wayback Machine attached thereto to
contend that Petitioner has continuously used the FALCON and FALCON MARINE
marks since 2008. In response, Respondent reiterates its argument that the License
Agreement prohibits Petitioner from establishing either standing or priority, and
further contends that Petitioner has not alleged that any confusion has occurred
between the parties’ marks, despite contemporaneous use.
As to standing, although Petitioner did not submit a status and title copy of its
pending application, Respondent submitted a TDSR printout of Petitioner’s
application with its motion for summary judgment.12 Thus, Petitioner’s standing is
established.13 As to Petitioner’s priority, the McDonald Declaration is not sufficiently
detailed as to the nature and extent of Petitioner’s alleged continuous use since 2008
to substantiate Petitioner’s claim of priority. In particular, the print outs attached to
the McDonald Declaration have no indicia of authentication and do not include the
date the materials were accessed. See Safer, Inc. v. OMS Investments, Inc., 94
USPQ2d 1031, 1039 (TTAB 2010); see also Trademark Trial and Appeal Board

11 20 TTABVUE 18.
12 18 TTABVUE 31–32.
13 We note that Petitioner must maintain its standing throughout this proceeding.
Cancellation No. 92067847

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Manual of Procedure (TBMP) § 528.05(b), (e).
After careful consideration of the parties’ evidence and arguments, the Board finds
that the record shows that there are no genuine disputes of material fact as to
Petitioner’s standing, and that Petitioner has not met its burden to show that there
are no genuine disputes of material fact as to its priority. Petitioner’s motion for
partial summary judgment is granted with respect to standing and denied
with respect to priority.14
The Board will not entertain any more motions for summary judgment, and the
parties are barred from filing additional motions for summary judgment.
PROCEEDINGS RESUMED
Proceedings are resumed. Remaining dates are reset as follows:
Deadline for Discovery Conference 5/23/2019
Discovery Opens 5/23/2019
Expert Disclosures Due 10/20/2019
Discovery Closes 11/19/2019
Plaintiff’s Pretrial Disclosures Due 1/3/2020
Plaintiff’s 30-day Trial Period Ends 2/17/2020
Defendant’s Pretrial Disclosures Due 3/3/2020
Defendant’s 30-day Trial Period Ends 4/17/2020
Plaintiff’s Rebuttal Disclosures Due 5/2/2020
Plaintiff’s 15-day Rebuttal Period Ends 6/1/2020
Plaintiff’s Opening Brief Due 7/31/2020
Defendant’s Brief Due 8/30/2020
Plaintiff’s Reply Brief Due 9/14/2020
Request for Oral Hearing (optional) Due 9/24/2020

14 The parties are reminded that evidence submitted in support of or in opposition to a motion
for summary judgment is of record only for consideration of that motion. To be considered at
final hearing, any such evidence must be properly introduced during the appropriate trial
period. See, e.g., Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB
1993); TBMP § 528.05(a).
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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, matters in
evidence, the manner and timing of taking testimony, 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).