General Media Communica-tions, Inc.v.Imperia Holdings, Inc.

Trademark Trial and Appeal Board

Sep 26, 2018

No. 91227102 (T.T.A.B. Sep. 26, 2018)

RK September 26, 2018 Opposition No. 91227102 General Media Communications, Inc. v. Imperia Holdings, Inc. Before Cataldo, Lynch and Pologeorgis, Administrative Trademark Judges By the Board: Following the Board’s order of July 3, 20171, wherein the Board granted in part and denied in part Opposer’s motion for discovery sanctions2, Opposer moved to amend the notice of opposition to add a claim of lack of a bona fide intent to use the mark in commerce at the time Applicant’s application was filed3 and separately moved for summary judgment4 on the newly added claim. On August 22, 2017, the Board suspended proceedings, including briefing on the motion for summary judgment, pending disposition of Opposer’s motion to amend its pleading.5 On October 10, 2017, the Board granted the motion as conceded and resumed briefing 1 16 TTABVUE. 2 11 TTABVUE. 3 18 TTABVUE. 4 17 TTABVUE. 5 19 TTABVUE. 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 Opposition No. 91227102 2 on the motion for summary judgment.6 Applicant moved to extend its time to respond to the motion for summary judgment four (4) times7 and Opposer contested each of Applicant’s motions for extension.8 On March 9, 2018, Applicant filed its response to the motion for summary judgment9 and on March 29, 2018, Opposer moved to strike the response as untimely or, alternatively, to reply thereto in support of its motion for summary judgment.10 Timeliness of Applicant’s Response Before reaching the merits of Opposer’s motion for summary judgment, we first consider the timeliness of Applicant’s response. By the Board’s order of October 10, 2017, Applicant was allowed until November 9, 2017 to file a response to Opposer’s motion for summary judgment. On November 8, 2017, Applicant moved to extend its time for response to December 9, 2017. Applicant sought to extend this deadline three (3) more times to January 8, 2018, February 7, 2018, and March 9, 2018. As all of Applicant’s extension requests were timely filed, i.e., prior to the close of the deadline sought to be extended,11 Applicant need only show good cause for the requested extension. See Fed. R. Civ. P. 6(b); Nat’l Football League v. DNH Mgmt. LLC, 85 USPQ2d 1852, 1854 (TTAB 2008). However, the motion “must state with particularity the grounds therefor, including detailed facts constituting good cause” 6 20 TTABVUE. 7 22 TTABVUE; 24 TTABVUE; 26 TTABVUE; 28 TTABVUE. 8 23 TTABVUE; 25 TTABVUE; 27 TTABVUE; 29 TTABVUE. 9 30 TTABVUE. 10 31 TTABVUE. 11 Although the second request for extension (24 TTABVUE) was filed on December 11, 2017, it is considered timely by operation of Trademark Rule 2.196, 37 C.F.R. § 2.196. Opposition No. 91227102 3 as the motion will be carefully scrutinized. Luemme Inc. v. D.B. Plus Inc., 53 USPQ2d 1758, 1760 (TTAB 1999). Here, of the four requests for extension sought by Applicant, three12 simply stated that additional time was needed “to obtain a business meeting document from an overseas chocolate manufacturer that [Applicant] planned to use during the time it filed for the intent-to-use trademark application.” Request for Extension of Time to Respond to Opposer’s Motion for Summary Judgment, 22 TTABVUE 2. No further explanation is provided, for example, of why Applicant needs such an extensive period of time to merely obtain a copy of a document, even if located overseas, the nature and import of the document beyond a general label of a “business meeting document,” why this document was not previously obtained by Applicant and, if previously unavailable, the reason for such unavailability. In the absence of such information, we are unable to ascertain whether there was a lack of diligence or unreasonable delay on the part of Applicant that led to the extension requests. In view thereof, we are unable to find the necessary good cause for Applicant’s requested extensions. Be that as it may, Applicant ultimately filed a response and as we are mindful of the policy of the law to decide cases on their merits, see Johnston Pump/Gen. Valve Inc. v. Chromalloy Am. Corp., 13 USPQ2d 1719, 1720 (TTAB 1989) (“Emphasized throughout the Federal Rules of Civil Procedure is the importance of resolving actions on the merits whenever possible.”), we exercise our discretion to consider the 12 The remaining request (24 TTABVUE) gave no reason at all for the requested extension. Opposition No. 91227102 4 late response. See Carrini Inc. v. Carla Carini S.R.L., 57 USPQ2d 1067, 1071 (TTAB 2000) (“Board possesses the inherent authority to control the disposition of cases on its docket”). Thus, we deny Opposer’s request to strike Applicant’s response and construe Opposer’s March 29, 2018 filing13 as solely a reply in support of its motion for summary judgment. To the extent Applicant’s filing14 of April 17, 2018 constitutes a surreply, it will not be considered. See Trademark Rule 2.127(a). Opposer’s Motion for Summary Judgment A motion for summary judgment is a pretrial device intended to save the time and expense of a full trial when the moving party is able to demonstrate, prior to trial, that there is no genuine dispute of material fact, and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); and Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). If the moving party is able to meet this initial burden, the burden shifts to the nonmoving party to demonstrate the existence of specific genuinely disputed facts that must be resolved at trial. A factual dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter in favor of the nonmoving party. See Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). The nonmoving party may not rest on mere allegations or assertions but must designate specific portions of the record or produce additional evidence showing the existence 13 31 TTABVUE. 14 32 TTABVUE. Opposition No. 91227102 5 of a genuine dispute of material fact. The evidence must be viewed in a light most favorable to the nonmoving party, and all reasonable inferences must be drawn in the nonmovant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993). On summary judgment, the Board will not resolve disputes of material fact but rather will only ascertain whether disputes of material fact exist. See id.; Olde Tyme Foods, 22 USPQ2d at 1542. Should the nonmoving party fail to raise a genuine dispute of material fact as to an essential element of the moving party’s case, judgment as a matter of law may be entered in the moving party’s favor. In order for Opposer to prevail on its motion, Opposer must establish that there is no genuine dispute of any material fact: (1) that it has standing to maintain the proceeding; and (2) that Applicant did not have a bona fide intent to use the mark in commerce at the time it filed the subject application. Standing Standing is a threshold issue that must be proven by a plaintiff in every Board inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S.Ct. 1401 (2015) and Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999). To establish standing, the plaintiff must demonstrate that it has a “real interest,” i.e., a direct and personal stake, in the outcome of the proceeding and a reasonable basis for its belief of damage. Ritchie, 50 USPQ2d at 1025-26. Opposer submitted status and title copies of its pleaded registrations with its original and amended notices of Opposition No. 91227102 6 opposition.15 As they are unchallenged evidence of the subsistence of the registrations and Opposer’s ownership thereof and are properly of record pursuant to Trademark Rule 2.122(d)(1), Opposer has established that there is no genuine dispute of material fact concerning Opposer’s standing to oppose the subject application. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Lack of a Bona Fide Intent Under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), “[a] person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register ….” Such bona fide intent “must reflect an intention that is firm [and] must reflect an intention to use the mark … ‘in the ordinary course of trade, … and not merely to reserve a right in a mark.’” Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1506 n.7 (TTAB 1993) quoting Senate Judiciary Comm. Rep. on S. 1883, S. Rep. No. 515, 100th Cong., 2d Sess. 24-25 (1988). While the factual question of intent is generally unsuited to disposition on summary judgment, see Copelands’ Enters., Inc. v. CNV, Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991), a determination of an applicant’s bona fide intent “is an objective determination based on all the circumstances.” Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008). 15 1 TTABVUE 18-390; 18 TTABVUE 16-410. Opposition No. 91227102 7 An opposer can establish a prima facie case of no bona fide intent by demonstrating “the absence of any documentary evidence on the part of an applicant regarding such intent ….” Commodore Elecs. Ltd., at 1507. If the opposer is able to do so, the burden of production shifts to the applicant to come forward with “other facts which adequately explain or outweigh the failure of [the] applicant to have any documents supportive of or bearing upon its claimed intent to use its mark in commerce ….” Id. In support of its motion, Opposer has submitted copies of its discovery requests and Applicant’s responses thereto. Through its requests for production, Opposer sought, inter alia, “clearance searches or reports” for the mark [RFP No. 8], documents in which the mark is “discussed, reviewed or mentioned” [RFP No. 9], “internal memoranda, meetings minutes, or correspondence” referencing the mark [RFP No. 10], advertisements bearing the mark [RFP No. 14], documents relating to distribution and trade channels [RFP No. 16], pricing information [RFP No. 18], customer information [RFP No. 19], advertising expenditures [RFP No. 21], business plans [RFP No. 22], market or consumer research [RFP No. 24], documents referencing Internet domain names or websites containing the mark [RFP No. 25], and any agreements, contracts, assignments, transfers, sales, or licenses involving the mark [RFP No. 27]. In particular, Opposer requested “[a]ll documents evidencing or relating to your bona fide intention to use your mark …” [RFP No. 23]. In response to each of these requests, Applicant stated that “[t]here are no Opposition No. 91227102 8 responsive documents available.” Opposer’s Motion for Summary Judgment, Exhibit C, 17 TTABVUE 30-42. Similar representations were made by Applicant in regard to certain of Opposer’s interrogatories, i.e., Interrogatory Nos. 4, 7 - 9.16 Indeed, all that Applicant produced in response to these interrogatories after being ordered by the Board to provide supplemental responses “in full and without objection on the merits”17 was a Trademark Search and Data Retrieval (TSDR) printout of the subject application. Considering that the only document Applicant produced in response to the discovery requests noted herein is a TSDR printout of its application, which we do not consider probative of Applicant’s bona fide intent, see Research in Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1931 (TTAB 2009), we find that Opposer has met its initial burden of demonstrating the absence of any documentary evidence to support Applicant’s bona fide intention to use the mark. See Swatch AG (Swatch SA) (Swatch Ltd.) v. M. Z. Berger & Co., Inc., 108 USPQ2d 1463, 1471 (TTAB 2013). This, of course, shifts the burden to Applicant to adduce such evidence that 16 Interrogatory No. 4: Explain the creation, adoption, and development of your mark, including when your mark was conceived and by whom it was conceived. Interrogatory No. 7: Describe any steps you had taken prior to April 20, 2009 to prepare for the use of your mark and identify all documents related thereto. Interrogatory No. 8: Identify all documents related to your bona fide intention to use your mark that existed prior to April 20, 2009. Interrogatory No. 9: Excluding attorney-client and work product privileged communications, describe any trademark clearance searches or reports that you conducted or have had conducted on your behalf directed to your mark. 17 See Board Order, 9 TTABVUE 2. Opposition No. 91227102 9 adequately explains or otherwise outweighs its failure to provide such documentary evidence. In that regard, Applicant has submitted the “declaration” of its President and CEO, David Arevshatyan, domain registration receipts for PenthouseCoffee.com, a graphic of a putative design logo for its mark, and a copy of its now-abandoned application for PENTHOUSE VODKA.18 Turning first to Mr. Arevshatyan’s putative declaration, we note that it is not properly sworn or otherwise verified under Trademark Rule 2.20, 37 C.F.R. § 2.20. We, therefore, give it little consideration as it carries no probative value beyond that of an unverified statement unsupported by evidence. See McDonald’s Corp. v. McKinley, 13 USPQ2d 1895, 1897 n.4 (TTAB 1989) (“unsworn statement does not constitute testimony in the absence of an oath or affirmation thereof”). Even if we were to consider the statements in the declaration, they provide little objective evidence of Applicant’s bona fide intent to use the mark in commerce at the time it filed its application since a mere statement of a discussion with a foreign manufacturer, which meeting Applicant is unable to otherwise corroborate and which statement is devoid of any details as to the particulars and extent of the discussion, is wholly inadequate to raise a genuine dispute regarding Applicant’s bona fide intent. Indeed, that Applicant has otherwise failed to demonstrate that it has the capacity, either on its own or through a third-party, to produce the goods identified in its application undercuts any claim by Applicant of a bona fide intent 18 Application Serial No. 77093101 filed on January 29, 2007, for “alcoholic beverages, namely vodka” in International Class 33 and abandoned on November 29, 2010. Opposition No. 91227102 10 to use the mark in commerce. See Swatch, 108 USPQ2d at 1477 (“Board has repeatedly found a lack of bona fide intent to use a mark by individuals who lack the demonstrated capacity to produce the goods identified in the application”). As for the domain registration receipts and logo design, Applicant has provided no explanation as to why they were not earlier produced in response to Opposer’s discovery requests even though they are clearly within the scope of the requests. However, even if they had been produced, they are insufficient to demonstrate Applicant’s bona fide intent to use the mark at issue. The mere registration of a domain name with no other indication of steps taken to commence use of the mark, such as the construction and/or operation of a website, is, at most, indicative of an intent to reserve a right in the mark but far from sufficient to demonstrate a bona fide intent to use the mark in commerce. See Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1727-28 (TTAB 2010). As to Applicant’s graphic of a putative logo of its mark, it is of even less probative value since it is offered by Applicant without any corresponding testimony or corroborating evidence as to, for instance, its creation or intended manner of use. The logo, therefore, is probative of nothing more than what it shows on its face. See, e.g., ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 (TTAB 2012) (hangtag, without testimony describing use, merely demonstrates that it existed at some point in time). Finally, as we noted supra, since Applicant’s filing of the involved application is not probative of a bona fide intent to use the mark that is the subject of the Opposition No. 91227102 11 application, then a fortiori, Applicant’s filing of an application for a different mark for different goods will also not be probative of Applicant’s bona fide intent to use the subject mark at the time the involved application was filed, particularly where the other application was filed over two (2) years prior. Cf. Swatch, 108 USPQ2d at 1477 (filing of application for I-KIDZ almost three years after filing of application for IWATCH fails to establish earlier intent to use IWATCH); Boston Red Sox Baseball Club, 88 USPQ2d at 1587 (actions taken over two years after filing of application “not even remotely contemporaneous with the filing of the application”). Taken as a whole, Applicant has failed to demonstrate the existence of a genuine dispute of material fact as to Applicant’s lack of a bona fide intent to use PENTHOUSE COFFEE for “chocolate confections” as of the filing date of the application. Accordingly, Opposer’s motion for summary judgment on its claim of lack of a bona fide intent is hereby GRANTED. The opposition against Application Serial No. 77717122 is sustained and registration refused.19 * * * 19 Inasmuch as Opposer did not move for summary judgment on its other claims of likelihood of confusion and dilution, we need not reach them. See e.g., Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013) (the Board's determination of registrability does not require, in every instance, decision on every pleaded claim); see also City Nat'l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1679 n.23 (TTAB 2013) (because registration at issue is cancelled on ground of abandonment, no need to reach second ground involving alleged lack of bona fide intent to use the applied-for mark at the time the application was filed).