Granite Depot Group, Corp.v.Granite Depot, Inc.

Trademark Trial and Appeal Board

May 13, 2013

No. 91190575 (T.T.A.B. May. 13, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 13, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Granite Depot Group, Corp.
v.
Granite Depot, Inc.
_____
Opposition No. 91190575
_____
Mark J. Young of Mark Young PA for Granite Depot Group, Corp.

Ellen Reilly of The Reilly Intellectual Property Law Firm, P.C. for Granite Depot,
Inc.
_____

Before Seeherman, Holtzman, and Masiello, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:

Granite Depot, Inc. (“applicant”) filed an application to register the service
mark GRANITE DEPOT, in standard character form, for “wholesale and retail
stores featuring natural stone and man made stone and tile,” in International Class
35. Applicant disclaimed the exclusive right to use GRANITE.1

1 Application Serial No. 77405951, filed on February 26, 2008 under Trademark Act § 1(a),
15 U.S.C. § 1051(a), claiming dates of first use and first use in commerce of February 19,
2004.
Opposition No. 91190575

2

Granite Depot Group, Corp. (“opposer”) opposed registration of the mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
applicant’s mark, as used in connection with applicant’s services, so resembles
opposer’s previously used mark GRANITE DEPOT as to be likely to cause
confusion, mistake or deception.2 Applicant denied the salient allegations of the
notice of opposition.
The Record
The record includes the pleadings and, by operation of Trademark Rule
2.122, 37 C.F.R. § 2.122, the application file for applicant’s mark. The record also
includes the testimony deposition of Elias Mahfuz Neto, opposer’s president, with
Exhibits 1 through 13 (“Neto Dep.”).
Opposer has filed its brief. Applicant has filed neither a brief nor any
testimony or documentary evidence.
Evidentiary Matter

Although applicant has not objected to any evidence submitted by opposer,
the Board has given no consideration to Neto Dep. Exhibit 11, as it is clearly
hearsay offered for the truth of the matter asserted therein. For the same reason
we have disregarded a portion of Neto Dep. Exhibit 5.3 The remainder of opposer’s
documentary evidence we admit for whatever probative value it may have.

2 The ESTTA cover sheet of opposer’s notice of opposition also makes reference to a claim
under Trademark Act § 2(a), 15 U.S.C. § 1052(a). However, the notice of opposition does
not plead such a claim and opposer has not addressed such a claim in its brief. We have
given any such claim under Section 2(a) no consideration.
3 Exhibit 11 is a letter from Bank of America attesting to the existence of a bank account in
the name of Granite Depot. The portion of Exhibit 5 that we disregard is a letter from an
Opposition No. 91190575

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Standing
Opposer’s witness has testified that opposer is in the business of importing
marble and granite slabs4 and marketing those goods at wholesale to granite
fabricators and other distributors;5 and that opposer has conducted its business
under the mark GRANITE DEPOT since at least as early as 2003.6 Opposer
testifies that it has continuously advertised its business under the mark GRANITE
DEPOT from 2003 to the time of trial,7 and that since 2003 it has operated one or
more stores in Florida that are marked with a sign bearing the mark GRANITE
DEPOT,8 at which marble and granite slabs are offered and displayed for selection
and purchase. These facts are sufficient to demonstrate that opposer has a real
interest in this proceeding and therefore has standing to bring this opposition
proceeding. Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185, 189 (CCPA 1982); Weatherford/Lamb Inc. v. C&J Energy Services Inc., 96
USPQ2d 1834, 1837 (TTAB 2010).
Priority
Opposer claims to have common law rights in the mark GRANITE DEPOT
for importing marble and granite slabs and offering such goods at wholesale to
fabricators and distributors. Opposer must demonstrate that it acquired rights in

employee of AT&T asserting that a particular advertisement appeared in the October 2003
issue of The Real Yellow Pages, as well as the cover page of that publication.
4 Neto Dep. 9:9.
5 Id. 32:25-33:15.
6 Id. 11:16-25.
7 Id. 20:17-18.
8 Id. 31:8-18.
Opposition No. 91190575

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its mark prior to the applicant’s first use of its mark. Otto Roth & Co., Inc. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981);
Threshold.TV, Inc. and Blackbelt TV, Inc. v. Metronome Enterprises, Inc., 96
USPQ2d 1031, 1036 (TTAB 2010). Applicant’s earliest alleged date of actual use is
February 19, 2004, as set forth in its application. However, applicant has
submitted no evidence to prove use as of that date, and the allegation of use in the
application is not acceptable evidence of use as of that date. 37 C.F.R. § 2.122(b)(2).
Applicant may, however, rely on the filing date of its application, February 26,
2008, as its date of constructive use. Levi Strauss & Co. v. R. Josephs Sportswear,
28 U.S.P.Q.2d 1464, 1467 (T.T.A.B. 1993), reconsideration denied, 36 U.S.P.Q.2d
1328 (T.T.A.B. 1994); Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840
(TTAB 1995).
Opposer’s case is built entirely upon the testimony deposition of its president,
Elias Mahfuz Neto, and the relatively few items of documentary evidence that Mr.
Neto authenticated. The testimony of a single witness may suffice to prove
opposer’s case, provided that it is not characterized by contradictions,
inconsistencies or indefiniteness, and carries with it conviction of its accuracy and
applicability. B. R. Bake Co., v. Lebow Bros., 150 F.2d 580, 66 USPQ 232 (CCPA
1945).
According to Mr. Neto’s testimony, opposer was incorporated in Florida as E
& D Industrial Corp. in April of 2002,9 and at the time was engaged in importing

9 Neto Dep. 8:7-9:5 and Exhibit 1 (Articles of Incorporation filed April 16, 2002).
Opposition No. 91190575

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marble and granite slabs into the United States.10 On May 15, 2003, Mr. Neto filed,
on behalf of opposer, an application for registration of the fictitious name GRANITE
DEPOT with the Florida Secretary of State.11 The record contains a certification by
the Secretary of State of opposer’s fictitious name dated May 15, 2003.12 When
questioned as to the name by which opposer was known at that time, Mr. Neto
stated:
We started, you know, to say that we were Granite Depot
a little bit before that. But we just – we decided to change
the sign in front of our building and start to do all the
publicity as Granite Depot once we got the registration for
the fictitious name of Granite Depot.13
Regarding the mentioned sign, he testified:
By the way, the location that we were back in 2003 and
we had the sign on the top of the building was in front of a
road called I-95, which is the Interstate, one of the most
important Interstates of United States East Coast. We
had it in front of our building, over 150,000 cars a day.
And we had it Granite Depot in front of that building back
in the earlier 2003.14
The record contains one depiction of the sign on opposer’s current premises, which
clearly displays the mark GRANITE DEPOT. According to Mr. Neto, opposer has
used such a sign continually “Since we open.”15

10 Id. 9:8-17.
11 Id. 11:4-17 and Exhibit 2.
12 Id. Exhibit 3.
13 Id. 11:20-25.
14 Id. 12:20-13:2.
15 Id. 31:18-32:12 and Exhibit 10 (internet web page with exterior view of premises in
Jacksonville, Florida).
Opposition No. 91190575

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Opposer obtained from the town of Pembroke Park, Florida a “license of
occupation” in the name of Granite Depot for the term of “Oct. 1, 2002 To Sept. 30,
2003,”16 which we take to be an indication that it was issued at some time between
those two dates. According to Mr. Neto, in 2003 opposer’s gross receipts, primarily
from the wholesale sales of stone products under the GRANITE DEPOT mark,
amounted to $2,152,347 and that subsequent annual receipts have been similar or
greater.17
Mr. Neto testified that opposer ran ads in the Yellow Pages “all the years
that we’re – since 2003.”18 The record contains one example of such an
advertisement, which shows clear service mark use of GRANITE DEPOT and
states, “Direct From The Quarries / More Than 2000 Slabs In Stock.”19 The date of
this advertisement is questionable. In order to locate this advertisement and date it
as having been published in a 2003 edition of The Real Yellow Pages, the witness
relied on the assistance of an employee of AT&T and a statement of hers which is
clearly inadmissible hearsay. On its face, the ad states an address that is
consistent with the address on the 2003 license of occupation (Ex. 4), as well as the
address on a July 11, 2003 check for $34,000 payable to GRANITE DEPOT (Ex. 7).
However, the ad might have been published at any time when opposer occupied the

16 Id. 14:17-15:23 and Exhibit 4.
17 Id. 37:9-38:2 and Exhibit 13 (2003 federal tax return).
18 Id. 20:18.
19 Id. Exhibit 5.
Opposition No. 91190575

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premises identified in the ad, and the evidence does not show the latest date as of
which opposer occupied that address.
In June 2006, opposer officially changed its name to GRANITE DEPOT
GROUP, CORP.20 Mr. Neto stated:
Once we are using since we opened the business Granite
Depot as our main and core name, we decided that there
was no reason anymore to keep E & D Industrial
Corporation doing business as Granite Depot at that time.
And then we filed to change the name from E & D
Industrial Corporation to Granite Depot Group,
Corporation.21
Mr. Neto testified that opposer has sold its stone products under the name
GRANITE DEPOT to customers in North Carolina, South Carolina, Georgia,
Maryland, Minnesota, Colorado, Texas, New York, Indiana, and Ohio, and has
made repeat sales in each of those states. Opposer received payments for such sales
by check, wire transfer, and credit card and such payments were “always” payable
to GRANITE DEPOT.22 He identified two checks written in 2003 by customers of
opposer in payment for goods, payable to the order of “Granite Depot.”23 He also
identified a 2003 wire transfer advice from Bank of America, showing a transfer
from the account of GRANITE DEPOT to a supplier of opposer, in payment for
goods.24

20 Id. Exhibit 6, Articles of Amendment to Articles of Incorporation, filed July 13, 2006.
21 Id. 22:4-10.
22 Id. 28:23-29:17.
23 Id. 25:4-27:5 and Exhibits 7 and 8. Of less relevance are two 2003 checks, also payable to
Granite Depot, from a customer to which opposer had sold chairs (Exhibit 9).
24 Id. Exhibit 12.
Opposition No. 91190575

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Mr. Neto stated that opposer ran advertisements under the name GRANITE
DEPOT in “the main publication of the industry,” which is called “Stone World”
magazine:
We did advertising for more than consecutive – I’ll say 25
to 36 month consecutive full-page advertising.
…
We started advertising there, I’ll say, back in 2006, 2007
maybe. And since then we, you know, we’re advertising
every – every single year since – we just – we stop
advertising, I’ll say, like six or eight months ago just for –
you know, we decided to take it a different way to
approach our customers. Once we had it doing more than
40 different issues with them.25

Opposer’s current internet web site located at shows
prominent service mark use of GRANITE DEPOT. (Whether there is a space
between the words is debatable, but the two words are rendered in different colors
and different typefaces.) According to Mr. Neto, opposer began use of a website to
promote its business in 2004, and the website has always displayed the GRANITE
DEPOT mark and described the stone products of opposer.26
Opposer’s customers are granite fabricators and distributors:
Because as a wholesaler we sell our granite slabs to
fabricators, other distributors, but we don’t commercialize
our products to end-users, like to normal people that want
to buy for countertop.27

25 Id. 29:24-30:17.
26 Id. 31:3-32:22.
27 Id. 32:25 and 33:11-15.
Opposition No. 91190575

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We note, however, that opposer’s website indicates that “homeowners” may visit
opposer’s premises “to personally hand-select their slabs, reserve that specific slab,
and have it delivered to the customer’s preferred fabricator.”28
Opposer attracts its customers by means of advertising and direct
“approach”:
Q. How do you approach them?
A. Over the phone, you know, calls, or we make it a –
we pay a visit, you know, constantly on the road,
traveling, you know, to see if we can get more customers,
different states.29
We find that opposer has demonstrated that it acquired common law rights in
the service mark GRANITE DEPOT prior to February 26, 2008, which is the filing
date of applicant’s application and the earliest date of use on which applicant can
rely. In reaching this conclusion, we note that applicant, in its answer, denied that
opposer’s mark is distinctive,30 although applicant did not submit any evidence to
show that the mark is descriptive. It is not clear to us that opposer’s mark is not
inherently distinctive, as any descriptiveness of the word DEPOT in the mark is not
readily apparent. To the extent that opposer’s mark might not be considered
inherently distinctive, we find the evidence of opposer’s sales and advertising
sufficient to show that the mark acquired distinctiveness as a source-indicator for
opposer prior to February 26, 2008.

28 Id. Exhibit 10.
29 Id. 33:19-24.
30 Answer ¶ 6.
Opposition No. 91190575

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Likelihood of Confusion
We consider next whether applicant’s mark is likely to cause confusion with
opposer’s mark GRANITE DEPOT under Trademark Act § 2(d). Our determination
under Section 2(d) is based on an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the issue of likelihood of confusion. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods and/or services at issue.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976). As noted above, applicant has not made any evidence of record,
nor has it submitted a brief.
Applicant’s mark is identical to opposer’s mark. Accordingly, the du Pont
factor regarding the similarity of the marks weighs in favor of a finding of likelihood
of confusion.
We next consider the similarity or dissimilarity of the services at issue.
Where identical marks are involved, the degree of similarity between the parties’
services that is required to support a finding of likelihood of confusion declines.
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108
(TTAB 2007). For purposes of determining the scope of applicant’s services, we look
only to the services as they are identified in the application. Octocom Syst. Inc. v.
Opposition No. 91190575

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Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990).
Applicant's services, as identified, include “wholesale ... stores featuring
natural stone....” Opposer has demonstrated that it imports slabs of marble and
granite into the United States and sells those slabs through wholesale outlets in the
nature of stores to fabricators and other distributors. We view applicant's
description of services as, in part, identical to the services provided by opposer. In
the context of an analysis of likelihood of confusion, it is sufficient if likelihood of
confusion is found with respect to use of the mark in connection with any service
that comes within the description of services in the application. Tuxedo Monopoly,
Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981);
Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007).
Accordingly, the du Pont factor relating to the similarity or dissimilarity of the
services favors a finding of likelihood of confusion.
To the extent that applicant’s services are identical to those of opposer and
are not limited as to trade channels, we must presume that those services move in
all channels of trade normal for those services and are available to all classes of
customers for those services, including the trade channels and customers shown by
opposer. Octocom, 16 USPQ2d at 1787; Paula Payne Products Co. v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera-
Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); In re Viterra Inc., 671 F.3d
Opposition No. 91190575

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1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). The du Pont factors of trade
channels and classes of customers favor a finding of likelihood of confusion.
Having considered the evidence of record and all relevant du Pont factors,
including those not specifically discussed herein, we find that applicant’s mark, as
used in connection with applicant’s services, so closely resembles opposer’s earlier
used mark GRANITE DEPOT, as to be likely to cause confusion, mistake or
deception as to the source of applicant’s services.
Decision: The opposition is sustained and registration of the applicant’s
mark is refused.