Hoganas ABv.Konica Minolta Printing Solutions USA, Inc.

Trademark Trial and Appeal Board

Dec 18, 2006

No. 91168421 (T.T.A.B. Dec. 18, 2006)

Taylor Mailed: December 18, 2006

Opposition No. 91168421

Hoganas AB

v.

Konica Minolta Printing
Solutions USA, Inc.

Before Quinn, Hairston and Kuhlke,
Administrative Trademark Judges.

By the Board:

Applicant seeks to register the mark MAGICOLOR for “ink
and ink cartridges for computer printers; toner and toner
cartridges for computer printers.”1 Opposer has opposed
registration of the mark on the grounds that it would be
damaged because such a registration would: (1) falsely
suggest a connection between the parties within the meaning
of Section 2(a) of the Lanham Act; (2) would dilute the
distinctive quality of opposer’s MAGICOL mark within the
meaning of Section 43(c) of the Lanham Act; and (3) would

1 Application Serial No. 78491065, filed September 28, 2004 and
claiming March 15, 1994 as the date of first use and first use of
the mark in commerce.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91168421
2
likely cause confusion with Opposer’s MAGICOL2 mark within
the meaning of Section 2(d) of the Lanham Act.
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.
This case now comes up for consideration of applicant’s
motion for summary judgment “for a determination that Konica
Minolta has rights in the MAGICOLOR mark that are senior to
Hoganas’s claimed rights in the MAGICOL mark and, based on
that determination, a judgment denying all claims asserted
by Hoganas in its Opposition to the Konica Minolta
Application.” The motion is fully briefed.
It is well established that the purpose of summary
judgment is one of judicial economy, that is, to save the
time and expense of a useless trial where no genuine issue
of material fact remains and more evidence than is already
available in connection with the summary judgment motion
could not reasonably be expected to change the result. Pure
Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 USPQ
741 (Fed. Cir. 1984). Fed. R. Civ. P. 56(c) provides that
summary judgment may be granted "if the pleadings,
depositions, answers to interrogatories, and admissions on
file, together with the affidavits, if any, show that there

2 Opposer asserts ownership of application Serial No. 78389861
for “iron oxides and other metal oxides” in Class 1; and metal
powders for industrial use” in Class 6. The application was
filed on March 24, 2004 and includes a claim of Section 44(d)
priority as of December 19, 2003.
Opposition No. 91168421
3
is no genuine issue as to any material fact and that the
moving party is entitled to a judgment as a matter of law."
The record must be viewed in the light most favorable to the
nonmoving party, and all factual inferences must be drawn in
favor of the nonmoving party. Olde Tyme Foods Inc. v.
Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
1993).
In support of its motion, applicant argues that it has
used the MAGICOLOR mark since 1994; that it has a
registration for the MAGICOLOR mark for use with laser
printers3; that it began offering inks, toners and
cartridges bearing the MAGICOLOR mark in interstate commerce
at the same time it began to offer its MAGICOLOR printers,
namely on March 15, 1994. Applicant further argues that
opposer did not file its intent-to-use application for the
pleaded MAGICOL mark until March 24, 2004, claiming priority
from a European Community trademark application filed on
December 19, 2003, giving opposer a constructive first use
date of December 19, 2003 – nearly ten years after
applicant’s first use date of March 15, 1994.
Applicant contends that because opposer can only rely
on its constructive use date of December 19, 2003,
applicant’s rights in its MAGICOLOR mark are senior to any

3 Registration No. 1855120 claiming March 15, 1994 as the date of
first use anywhere and in commerce, Section 9 renewal filed
August 19, 2005.
Opposition No. 91168421
4
rights that opposer may claim in its MAGICOL mark; and that
accordingly, opposer cannot prevail on its claims of
likelihood of confusion, dilution and false suggestion of a
connection. Applicant therefore maintains that its motion
for summary judgment should be granted.
As evidentiary support for its position, applicant has
submitted the declaration, with exhibits4, of its general
counsel and secretary, Bryan Hack. Mr. Hack states, in
relevant part, that:
2. Konica Minolta owns United States Trademark Reg. No.
1,8551,20[sic] for MAGICOLOR for use with laser
printers. Through its predecessors-in-interest (QMS,
Inc. and Minolta-QMS, Inc.) Konica Minolta has been
using the MAGICOLOR mark in connection with laser
printers sold in interstate commerce since March
1994.

3. In order to use the MAGICOLOR printers, purchasers
must also separately purchase ink and ink cartridges
or toner and toner cartridges. As a result, Konica
Minolta began offering inks, toners, and cartridges
bearing the MAGICOLOR mark in interstate commerce at
the same time that it began to offer its MAGICOLOR
printers, March 15, 1994.

4. Attached hereto as Exhibit A are true and correct
copies of invoices showing the sale of Konica
Minolta’s MAGICOLOR-branded inks, toners, and
cartridges in interstate commerce between April 18,
2000 and December 19, 2003. The initials “MC” on the
invoices indicate that the listed products are
MAGICOLOR toners, inks, and cartridges.

4 The exhibits consist of selected invoices representing sales
of KONICA MINOLTA’S MAGICOLOR branded inks, toners, and
cartridges.

Opposition No. 91168421
5
In response, opposer argues that the motion should be
denied because applicant did not meet its burden on summary
judgment and because there exists a genuine issue of
material fact as to whether opposer has used the MAGICOLOR
mark in the manner claimed in its motion. Specifically,
opposer contends that applicant’s motion for summary
judgment is based on the assertion that applicant has rights
to the MAGICOLOR mark that are senior to the rights of
opposer to its MAGICOR mark and the “factual evidence
demonstrating that [applicant] first used MAGICOLOR for ink
and ink cartridges beginning March 15, 1994.” Opposer
further contends that the only factual evidence provided by
applicant is the declaration of Bryan Hack with exhibits
consisting of invoices. Opposer, citing to S Industries,
Inv. v. Diamond Multimedia Systems, Inc, 991 F.Supp 1012
(N.D. Ill. 1998),5 argues that the invoices produced by
applicant did not include the MAGICOLOR designation and,
even if they did so, that invoices alone are not sufficient
to show trademark use.6
In reply, applicant contends that opposer offered no
evidence of prior rights in the MAGICOL mark, solely arguing
that applicant did not meet its burden on summary judgment.

5 In that case, the Court found the invoices, in and of
themselves, insufficient proof of use because they did not
establish that any goods bore the mark as a source identifier.
6 Opposer did not submit any other evidence to support its
position.
Opposition No. 91168421
6
Applicant argues that opposer ignored the “uncontroverted”
evidence of its prior use and states that it is not relying
on invoices alone but also on the supporting declaration of
Bryan Hack. Citing to J. Thomas McCarthy, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION (“McCarthy”), 4th Ed. §
20.28 (quoting Powermatics, Inc. v. Globe Roofing Products
Co., 341 F.2d 127, 144 USPQ 430 (CCPA 1965), applicant
maintains that it has submitted more than enough evidence to
establish its priority and that oral testimony, even of a
single witness, if sufficiently probative may suffice to
prove priority.
We agree. Contrary to opposer’s position, applicant
not only supported its first use date with invoices, but
also with the declaration of Bryan Hack. As noted earlier,
Mr. Hack attested that applicant began offering inks,
toners, and cartridges bearing the MAGICOLOR mark in
interstate commerce on March 15, 1994. Although, as pointed
out by opposer, the MAGICOLOR mark did not appear on the
invoices, as explained in the Hack declaration, the “MC”
designation shown on the invoices indicates inks, toners,
and toner cartridges bearing the MAGICOLOR mark. Moreover,
opposer did not question the veracity of the Hack
declaration and we find the declaration sufficiently
probative to establish applicant’s asserted first use date
of March 15, 1994. Cf. Powermatics v. Globe Roofing, 341
Opposition No. 91168421
7
F.2d 127, 144 USPQ 430 (CCPA 1965). As such, applicant has
met its initial burden on summary judgment.
On the other hand, opposer did not dispute that the
earliest date upon which it can rely is the filing date of
its European Community trademark application filed on
December 19, 2003. Nor did opposer offer any evidence to
raise a genuine issue of material fact for trial. See Fed.
R. Civ. P . 56(e); and Octocom Systems Inc. v. Houston
Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cir. 1990)(non-moving party’s response was not supported by
contradictory facts, but merely expressed disagreement with
facts).
Simply put, on this record, applicant has clearly and
indisputably established use of the MAGICOLOR mark prior to
any claimed date of first use of MAGICOL by opposer.
Accordingly, opposer cannot as a matter of law prevail on
its claim of likelihood of confusion within the meaning of
Section 2(d) on the Lanham Act.
Similarly, opposer cannot prevail as a matter of law on
its claim of dilution because opposer would have to prove
that its pleaded mark became famous prior to the first use
of applicant’s involved mark. Section 43(c) of the Lanham
Act provides that “[t]he owner of a famous mark shall be
entitled, subject to the principles of equity and upon such
terms as the court deems reasonable, to an injunction
Opposition No. 91168421
8
against another person’s commercial use in commerce of a
mark or trade name, if such use begins after the mark has
become famous and causes dilution of the distinctive quality
of the mark, and to obtain such other relief as is provided
in this subsection.” 15 U.S.C. § 1125. Because we have
found that applicant’s rights in its MAGICOLOR mark are
senior to opposer’s rights in the pleaded MAGICOL mark, as a
matter of law opposer’s MAGICOL mark did not (and could not)
become famous prior to applicant’s first use of its
MAGICOLOR mark. As such, opposer’s dilution claim must
fail.
Likewise, because applicant is the senior user of the
MAGICOLOR mark, opposer cannot prevail on its claim that
registration of the MAGICOLOR mark would falsely suggest a
connection between applicant and opposer within the meaning
of Section 2(a) of the Lanham Act. The Board has previously
found that the phrase “falsely suggest a connection with” in
Section 2(a) “necessarily requires by implication that the
person or institution with whom a connection is suggested
must be the prior user.” In re Nuclear Research Corp., 16
USPQ2d 1316, 1317 (TTAB 1990); see also In re Mohawk Air
Services, Inc. 196 USPQ 851, 854-855 (TTAB 1977); and
Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 429. Given
applicant’s prior use, opposer’s Section 2(a) claim must
fail.
Opposition No. 91168421
9
In view of the foregoing, applicant’s motion for
summary judgment is granted, and the notice of opposition is
dismissed with prejudice.
***