Karma Athletics, Ltd.v.Scott Kallmann

Trademark Trial and Appeal Board

Apr 28, 2015

No. 92055488 (T.T.A.B. Apr. 28, 2015)

Faint Mailed: April 28, 2015

Cancellation No. 92055488
Karma Athletics, Ltd.
v.
Scott Kallmann

Before Quinn, Mermelstein and Adlin,
Administrative Trademark Judges.

By the Board:

This case now comes up for consideration of Respondent’s renewed motion for
summary judgment on Petitioner’s claims of likelihood of confusion and nonuse, and
Petitioner’s cross-motion for partial summary judgment on likelihood of confusion
and to strike two declarations Respondent submitted as evidence in support of his
motion for summary judgment. The motions are fully-briefed.
1. Background
Petitioner seeks to cancel, on the ground of likelihood of confusion, Respondent’s
registration for the mark PURE KARMA in standard character form for clothing
items in Class 25, claiming first use anywhere on November 1, 2009, and first use in
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 OPINION IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92055488

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commerce on December 1, 2009.1 Respondent counterclaimed to cancel Petitioner’s
three pleaded registrations for the mark:

for goods and services in Classes 21, 24, 25, 28 and 35.2
The Board previously granted in part Petitioner’s first motion for summary
judgment striking “kids clothing” from Class 25 in Respondent’s registration,3 and
denied Petitioner’s motion for reconsideration of the Board’s denial in part of
Petitioner’s motion for summary judgment. The first amended petition to cancel,
filed August 1, 2013, as modified by the Board’s order of May 5, 2014, is the
operative pleading of record. By its May 5, 2014 order, the Board struck Count VI,
which alleged Respondent’s registration is void ab initio because there was no use of
the mark as of the claimed date of first use in commerce. The Board also struck
Respondent’s counterclaim and “affirmative defenses” pleading abandonment and

1 Registration No. 3827814, issued August 3, 2010. The application was filed December 24,
2009, based on Trademark Act § 1(a), use in commerce.

2 Registration No. 3319351 issued October 23, 2007, based on Trademark Act § 1(a) for
“clothing namely, bra tops, t-shirts, jackets, sweat shirts, pants, shorts, leggings, tunics,
shirts” in Class 25, claiming a date of first use anywhere on July 5, 2002, and first use in
commerce on September 30, 2004; Registration No. 3875261, issued November 16, 2010,
based on Trademark Act § 44(e) for “on-line retail store services featuring clothing,
headgear, water bottles, yoga mats, towels, and athletic bags; retail store services featuring
clothing, headgear, water bottles, yoga mats, towels, and athletic bags; wholesale
distributorships featuring clothing, headgear, water bottles, yoga mats, towels, and athletic
bags” in Class 35; and Registration No. 3918906, issued February 15, 2011, based on
Trademark Act § 44(e) for “plastic water bottles sold empty” in Class 21, “towels” in Class
24 and “sports equipment, namely yoga mats” in Class 28.

3 Board’s order of May 5, 2014. 25 TTABVUE 13.
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3
laches as legally insufficient and prohibited Respondent from re-pleading the
counterclaim.
2. Petitioner’s Motion to Strike
We turn first to Petitioner’s motion to strike the declarations of Mr.
Kallmann and his attorney Mr. Meeks, and those portions of Respondent’s motion
for summary judgment that refer to those declarations. Petitioner argues that
Respondent is estopped by the Board’s order of August 1, 2013 compelling discovery
responses from relying on the documents attached to the declarations, because the
order “bars” Respondent from relying on or later producing responsive documents.
Mr. Kallmann’s declaration is identical to the declaration previously provided with
Respondent’s December 30, 2013 response to Petitioner’s prior motion for summary
judgment, and avers dates of first use and first use in commerce as provided in
Respondent’s underlying trademark application. Mr. Meeks’ declaration seeks to
introduce copies from the USPTO TESS database of Respondent’s registration and
19 third-party registrations to support Respondent’s argument that “countless other
marks on the register contain the term ‘karma.’”4 Petitioner made essentially the
same arguments in its prior motion for summary judgment, wherein Petitioner
argued Respondent should be estopped from using the declaration of Mr. Kallmann
as evidence.
First, as the Board noted in its May 5, 2014 order, it is hard to see how
Petitioner can be surprised by the use of declarations in support of or in opposition
to motions for summary judgment or the dates of use asserted therein. See, e.g.,

4 29 TTABVUE 11.
Cancellation No. 92055488

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Vignette Corp. v. Marino, 77 USPQ2d 1408, 1411 (TTAB 2005) (opposer’s request for
reconsideration of Board order denying its motion for summary judgment denied;
Board properly considered applicant’s declaration provided on summary judgment,
reasoning that it would be “unfair to foreclose applicant from the opportunity to
amplify the assertions made in his previous discovery responses in order to defend
against opposer’s motion for summary judgment”). Nor should Petitioner be
surprised that Respondent would attempt to present evidence of third-party
registrations of the term KARMA, as it is not at all unusual to introduce third-party
registrations to show that a mark has a meaning in the industry and is therefore
weak and entitled to a narrow scope of protection. See. e.g., Strang Corp. v. Stouffer
Corp., 16 USPQ2d 1309, 1311 n.5 (TTAB 1990) (respondent submitted copies of
seven third party registrations to show purported weakness of petitioner’s mark).
Second, Petitioner misconstrues the Board’s August 1, 2013 order compelling
discovery and takes the advisory paragraphs regarding the estoppel sanction out of
context. That order was not a sanction order, but merely advised the possible
consequences of failing to comply with an order compelling discovery responses:
To the extent that respondent produces a representative
sampling of documents in response to a discovery request
compelled by the instant order, respondent is advised that
it may only rely upon at trial the representative sampling
of documents it produces. In other words, documents
which may be responsive but are not produced may not be
relied upon in respondent’s case in chief during testimony
or at final briefing.

Similarly, in the event respondent fails to provide
petitioner with full and complete responses to the
outstanding discovery, as required by the instant order,
Cancellation No. 92055488

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respondent will be barred from relying upon or later
producing documents or facts at trial withheld from such
discovery. See Fed. R. Civ. P. 37(c)(1).5

The order specifically advised Petitioner that if it wished to seek discovery
sanctions, it must file a motion to that effect.6
The declarations at issue are quite obviously not documents that would be
responsive to discovery requests. Mr. Kallmann’s registration provided with Mr.
Meeks’ declaration is already of record in this proceeding by virtue of Petitioner’s
filing of the petition to cancel that registration. As for the third-party registrations
attached to Mr. Meeks’ declarations, those were all printed on the date Respondent
filed his motion for summary judgment and apparently collected to assist
Respondent’s opposition to the motion for summary judgment, rather than being in
Respondent’s possession at the time Petitioner served its discovery requests. See,
e.g., Sports Auth. Mich. Inc. v. PC Auth. Inc., 63 USPQ2d 1782, 1788 (TTAB 2001)
(no obligation to search for third-party uses). Respondent is not required to create
documents in response to discovery requests, or to disclose in advance of trial each
document or other exhibit it plans to introduce at trial, other than those required by
Trademark Rule 2.121(e). See Time Warner Ent. Co. v. Jones, 65 USPQ2d 1650,
1657 (TTAB 2002) (interrogatory requesting opposer “identify each and every fact,
document and witness in support of its pleaded allegations” was equivalent to

5 18 TTABVUE 12.

6 18 TTABVUE 12 n.6.

Cancellation No. 92055488

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request for identification of fact witnesses and trial evidence prior to trial, and
therefore improper).
Accordingly, Petitioner’s motion to strike is hereby denied.
3. Respondent’s Motion for Summary Judgment and Petitioner’s Cross-
Motion

Respondent does not dispute Petitioner’s priority of use of its registered
marks. Respondent argues instead that his involved registration is
prima facie evidence of his mark’s validity and his exclusive right to use his PURE
KARMA mark in commerce, and that he has used his mark in commerce. Thus,
Respondent argues, Petitioner’s claim that it has priority, or proprietary rights, or
that Respondent did not use his mark in commerce at the time of filing his use-
based application for registration, all fail as a matter of law. Respondent also
argues, based on his detailed analysis of the duPont factors, that there can be no
likelihood of confusion with Petitioner’s marks.7
Petitioner points out that Respondent misunderstands the presumptions 15
U.S.C. § 1057 accords a registration, implicitly relying on 15 U.S.C. § 1064 and the
fact that Respondent’s involved registration was less than five years old at the time
the petition to cancel was filed.
4. Summary Judgment Standard

Summary judgment is only appropriate when there is no genuine dispute as
to any material facts and the moving party is entitled to judgment as a matter of

7 Respondent argues priority and likelihood of confusion as separate counts. As the Board
noted in its May 5, 2014 order, however, priority is an element of a likelihood of confusion
claim, not a separate ground for cancellation. Shalom Children's Wear Inc. v. In-Wear A/S,
26 USPQ2d 1516, 1519 (TTAB 1993).
Cancellation No. 92055488

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law. See Fed. R. Civ. P. 56(a). The evidence must be viewed in a light favorable to
the nonmoving party, and all justifiable inferences are to be drawn in the
nonmovant’s favor. Opryland USA, Inc. v. The Great Am. Music Show, Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
Merely because both parties have moved for summary judgment does not
necessarily mean that there are no genuine disputes of material fact, and does not
require that judgment be entered. See University Book Store v. University of Wis.
Bd. of Regents, 33 USPQ2d 1385, 1389 (TTAB 1994).
a. Standing

The Board ruled in its May 5, 2014 order that Petitioner has established its
standing for this proceeding.
b. Priority
To establish priority on a likelihood of confusion claim brought under
Trademark Act Section 2(d), a party must prove that, vis-à-vis the other party, it
owns “a mark or trade name previously used in the United States . . . and not
abandoned… .” Trademark Act § 2, 15 U.S.C. § 1052. A party may establish its own
prior proprietary rights in a mark through “prior use as a trade name, prior use
analogous to trademark or service mark use, or any other use sufficient to establish
proprietary rights.” Trademark Act §§ 2(d) and 45, 15 U.S.C. §§ 1052(d) and 1127;
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed.
Cir. 2002) (internal citations omitted); Otto Roth & Co. v. Universal Foods Corp.,
640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA 1981); Century Garden & Pet Co. v.
Cancellation No. 92055488

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Doskocil Mfg. Co., 108 USPQ2d 1134, 1139 (TTAB 2013). Where both parties own
registrations, a petitioner must establish prior rights in the similar mark, and a
respondent can defeat the claim of priority by establishing that, as between the
parties, it possesses prior superior rights in the mark sought to be cancelled.
Brewski Beer Co. v. Brewski Bros., Inc., 47 USPQ2d 1281, 1284 (TTAB 1998) citing
United States Mineral Prods. Co. v. GAF Corp., 197 USPQ 301, 305 (TTAB 1977).
Petitioner’s assertion of priority is based on its pleaded registrations, which
are of record by virtue of the now stricken counterclaim and because status and title
copies were attached to the first amended petition to cancel. Petitioner has shown
through the TESS printouts made of record that it is the owner of the pleaded
registrations and that the registrations are valid and subsisting. Petitioner’s
underlying application filing dates for each of its three registrations precede
Respondent’s filing date. Respondent does not dispute Petitioner’s priority in
Petitioner’s marks and does not assert any dates of use earlier than Petitioner’s
application filing dates.8 Petitioner has therefore proven its priority for this
proceeding.
Accordingly, we find no genuine dispute of material fact regarding
Petitioner’s priority with respect to the marks and goods and services covered by the
pleaded registrations made of record, Registration Nos. 3319351, 3875261 and
3918906. Petitioner’s cross-motion for summary judgment on the issue of priority is
accordingly granted.

8 29 TTABVUE 8-9.
Cancellation No. 92055488

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c. Likelihood of Confusion
Both parties presented detailed arguments regarding the duPont factors as
applied to their marks and provided declarations and exhibits as evidence.
Petitioner also argues that Respondent’s cease and desist letter sent prior to the
institution of this proceeding must be taken by the Board as an admission by
Respondent that the parties’ marks are confusingly similar and the products are in
direct competition.
As to the effect of Respondent’s cease and desist letter, Petitioner relies on
the Board’s decision in Ultra Elecs., Inc. v. Workman Elec. Prods., Inc., 192 USPQ
497 (TTAB 1976). In Ultra Electronics., the defendant admitted an averment in its
answer to the petition to cancel concerning a letter charging the plaintiff with
infringement. In that case, the Board also found that the marks ULTRATEC and
ULTRALEC look and sound alike. However, the Board found that the letter at issue
was not controlling, as the Board must weigh whether the letter unequivocally
states there is a likelihood of confusion. 192 USPQ at 498.
While an unequivocal letter may resolve doubts as to likelihood of confusion,
such a letter is not conclusive evidence on the issue, and in this case the letter is at
least equivocal. In any case, genuine disputes of material fact remain at least with
regard to the similarities or dissimilarities of the parties’ marks.9

9 The parties should note that the evidence submitted in connection with 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 in evidence during the
appropriate trial period. See Land O’ Lakes Inc. v. Hugunin, 88 USPQ2d 1957, 1960 n.7
(TTAB 2008); University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465, 1468 n.4 (TTAB
2008); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993)
Cancellation No. 92055488

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Accordingly, Respondent’s motion, and Petitioner’s cross motion are denied
on the issue of likelihood of confusion.
d. Nonuse at Filing of Use-Based Application
Respondent asserts he is entitled to summary judgment on Petitioner’s
Counts V and VI.10 The Board has previously stricken Count VI from the first
amended petition to cancel, thus Respondent’s motion on this point is moot.
Count V avers that Respondent’s application for registration is void ab initio
because at the time of filing the mark was not in use on goods that were sold in
commerce. Respondent argues that his registration establishes prima facie evidence
of use and thus there can be no genuine dispute of material fact that his mark was
in use as of his underlying application filing date of December 24, 2009.
Respondent is mistaken as to the law on this point. Compare 15 U.S.C.
§§ 1051(a), 1064(3) and 1064(5). Although Respondent’s registration is prima facie
evidence of its use, it is not irrefutable evidence, nor does it impose on Petitioner a
higher burden of proof. At trial, Petitioner need only establish Respondent’s nonuse
by a preponderance of evidence to prevail on this issue. Where, as here, the
registration at issue is not five years old, and Respondent’s use of its mark as of the
filing date of its use-based application is at issue, Respondent must be prepared to

(declaration of witness submitted in connection with summary judgment motion was part of
record for trial where witness identified and attested to accuracy of it during applicant’s
testimony period). Furthermore, the fact that we have identified certain genuine disputes of
material fact sufficient to deny the motion should not be construed as a finding that these
are necessarily the only issues which remain for trial.

10 Petitioner has not cross-moved for summary judgment on nonuse.
Cancellation No. 92055488

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defend against a claim that its mark was not in use as of the filing date of its use-
based application.
Turning to the substance of Petitioner’s nonuse claim, Petitioner lists under
“undisputed material facts,”11 Respondent’s Amended Response to Interrogatory No.
1:
Respondent first used the PURE KARMA mark
commercially on December 1, 2009. The PURE KARMA
mark has been used throughout the United States. There
are no documents other than those previously produced
that show the “first use” of the PURE KARMA trademark.
Documents showing the general time period of “first use”
include email from Scott Kallmann to Chentil Smith
dated December 21, 2009 (confirming earlier order of
goods that were sold as PURE KARMA); email between
Ava Garrett and Scott Kallmann dated January 4, 2010
attaching spreadsheet regarding December 2009 use
goods for PURE KARMA mark; email between Scott
Kallmann and Lapierx2 [sic] dated December 9, 2009
confirming that Respondent was using the PURE KARMA
trademark; and email from Scott Kallmann to Hmrpg [sic]
dated December 10, 2009 confirming use of PURE
KARMA trademark. Respondent did not maintain records
of the specific “first use” because he did not believe such
records would be necessary. However, Respondent has a
memory of when he began using the PURE KARMA mark
in commerce in communicating with potential customers
about the products sold under the PURE KARMA mark.

Berenato Decl. at ¶ 10, Ex. 5 (emphasis in original).

Nevertheless, Petitioner argues that “no evidence of first use exists,” and that
Respondent’s declaration merely provides “conclusory allegations without any
corroboration or evidentiary support.” Petitioner also argues that Mr. Kallmann’s

11 38 TTABVUE 11.
Cancellation No. 92055488

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declaration raises “credibility issues” and is inconsistent with his discovery
responses.
Obviously, genuine disputes of material fact remain on this issue. In view
thereof, Respondent’s motion for summary judgment on the issue of nonuse is
denied.
The Board has now considered two motions for summary judgment and a
cross-motion for summary judgment in this case. The remaining issues presented by
the parties are not suitable for resolution on summary judgment. Consequently, the
parties may not bring any further motions for summary judgment. This case will be
tried if it is not settled beforehand.
5. Summary
The following summarizes the current rulings and findings in this case:

• Petitioner’s first amended petition to cancel is its operative pleading of
record. Count VI has been stricken from the pleading.

• Respondent’s second amended answer is his operative pleading of record.
Respondent’s counterclaim has been stricken and Respondent may not
replead the counterclaim. Respondent’s affirmative defenses of laches and
abandonment have been stricken.

• The goods “kids clothing” have been stricken from Class 25 in Respondent’s
Registration No. 3827814.

• Petitioner has established its standing for this proceeding.

• Petitioner has established its priority as to the marks and goods in all three
of its pleaded registrations, and Petitioner’s cross motion for summary
judgment on the issue of priority is granted.

• Respondent’s motion and Petitioner’s cross-motion are denied on the issue of
likelihood of confusion.

Cancellation No. 92055488

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• Respondent’s motion for summary judgment on the issue of nonuse is
denied.

• The parties may not bring any further motions for summary judgment.

6. Dates Reset
Proceedings are resumed. Dates are reset as set out below.
Plaintiff's Pretrial Disclosures Due 5/14/2015
Plaintiff's 30-day Trial Period Ends 6/28/2015
Defendant's Pretrial Disclosures Due 7/13/2015
Defendant's 30-day Trial Period Ends 8/27/2015
Plaintiff's Rebuttal Disclosures Due 9/11/2015
Plaintiff's 15-day Rebuttal Period Ends 10/11/2015
In each instance, a copy of the transcript of testimony, together with copies of
documentary exhibits, must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule 2.125.
Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An
oral hearing will be set only upon request filed as provided by Trademark Rule
2.129.
***