Kraft Group LLCv.William A. Harpole

Trademark Trial and Appeal Board

Apr 22, 2009

No. 91185033 (T.T.A.B. Apr. 22, 2009)

WINTER
Mailed: April 22, 2009

Opposition No. 91185033
Kraft Group LLC
v.
William A. Harpole

Before Bucher, Kuhlke, and Bergsman,
Administrative Trademark Judges.

By the Board:

Applicant, William A. Harpole, seeks to register the mark
“19-0 THE PERFECT SEASON” for “hats; jackets; sport shirts;
sports jackets; sports shirts; t-shirts” in International
Class 25.1 Opposer, Kraft Group LLC, opposes registration of
applicant’s mark on two grounds, namely, that said
application, which originally sought registration on the
Supplemental Register, is void ab initio because it failed to
state that applicant’s mark was in lawful use in commerce or,
in the alternative, should be deemed to have a later effective

1 Application Serial No. 77324426, filed November 8, 2007 for
registration on the Supplemental Register; and amended on April
22, 2008 to seek registration on the Principal Register under
Section 1(b) of the Trademark Act based on applicant’s bona fide
intent to use the mark in commerce as of the filing date of the
application.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF THE
TTAB
Opposition No. 91185033
2
filing date, namely, the date the application was amended to
seek registration on the Principal Register under Section
1(b); and that the use and registration of applicant’s mark is
likely to cause confusion with opposer’s identical mark to be
used with the same, similar or related goods and services.2
In his answer, applicant essentially denied the salient
allegations contained in the notice of opposition, but
admitted that as of the filing date of the application, he had
not used the mark in commerce.
This case now comes before the Board for consideration of
opposer’s motion (filed November 18, 2008) for judgment on the

2 Application Serial No. 77374613, filed January 17, 2008, based
on opposer’s alleged bona fide intent to use the mark in commerce
with the following goods and services: Pre-recorded videotapes,
videocassettes and DVDs featuring sports; computer game and video
game software, disks and cartridges featuring sports
(International Class 9); posters, calendars, trading cards,
series of books relating to football, magazines relating to
football, newsletters relating to football, notepads, stickers,
bumper stickers, paper pennants and greeting cards; printed
tickets to sports games and events; pens and pencils, rub on
decorative transfers, note paper, pictorial prints, paper table
cloths, paper napkins, paper party hats, paper party invitations,
paper decorations, collectible cards; collectible card and
memorabilia holders, souvenir programs for sports events
(International Class 16); men's, women's and children's clothing,
namely, fleece tops and bottoms, caps, headwear, T-shirts,
sweatshirts, shorts, sweaters, pants, jackets, golf shirts, woven
shirts, knit shirts, jerseys, warm up suits, raincoats, parkas,
ponchos, gloves, ties, socks (International Class 25); toys and
sporting goods, namely, plush toys, stuffed animals, play
figures, golf balls, golf bags, golf clubs, golf club covers,
footballs, toy banks, board games relating to football, playing
cards, Christmas tree ornaments, balloons, jigsaw puzzles, toy
and decorative windsocks, kites, toy trucks, toy vehicles,
billiard balls, dart boards, miniature helmets (International
Class 28); and providing sports and entertainment information via
a global computer network; providing on-line computer or video
games (International Class 41).

Opposition No. 91185033
3
pleadings on the first ground of its notice of opposition and
of applicant’s cross-motion (filed November 26, 2008) for
judgment on the pleadings on both opposer’s grounds. Both
motions were filed pursuant to Federal Rule 12(c) and are
fully briefed.
In support of its motion, opposer argues that the
involved application is void ab initio because the application
failed to meet the “clear regulatory mandate” set forth in
Trademark Rule 2.47 for an application for registration on the
Supplemental Register. In particular, opposer contends that
Rule 2.47(a) requires that such an application must specify
that the mark has been in use in commerce; and that, under
Trademark Rule 2.47(d), “an applicant who does not allege use
in commerce, such as Applicant, is not eligible for
registration on the Supplemental Register until the applicant
has filed an ‘acceptable amendment to allege use under § 2.76
or statement of use under § 2.88’” (emphasis in original).
Further, opposer opines that applicant could not have
satisfied “the regulatory requirement” of use in commerce at
the time he filed the application because he was not using the
mark in commerce at the time the application was filed (answer
¶4). Essentially, opposer argues that, taking as true the
facts as pleaded, namely, that applicant chose to seek
registration on the Supplemental Register; that at the time
applicant filed his application, he was not using the mark in
Opposition No. 91185033
4
commerce; that the involved application did not comply with
Trademark Rule 2.47(a); and that, as a result thereof, the
application is void.
In the alternative, opposer argues that, just as the
filing date of an application for registration on the
Principal Register which is amended to seek registration on
the Supplemental Register changes to the date on which the
application is amended and an allegation of use is filed, “the
inverse applies as well.” Specifically, opposer contends that
if the involved application is not deemed to be void, then its
effective filing date is the date on which the application was
amended to seek registration on the Principal Register under
Section 1(b) of the Trademark Act. Based on the foregoing,
opposer argues that it has priority in the “19-0 THE PERFECT
SEASON” mark because the filing date of its application,
namely, January 17, 2008 (notice of opp. ¶5), precedes April
22, 2008, the date on which applicant amended his application,
and that the Board should enter judgment in its favor.
Applicant, in his combined opposition and cross-motion
for judgment on the pleadings, argues primarily that his
application is not void, nor should the filing date be
changed, because the application met the minimum requirements
for receiving a filing date under Trademark Rule 2.21. In
particular, applicant contends that an applicant is not
required to specify the filing basis to receive a filing date.
Opposition No. 91185033
5
Referring to TMEP § 206 (5th ed. 2007), applicant also argues
that his application does not fall within any of the three
designated circumstances where an actual filing date would be
replaced by an effective filing date.3 Based on these
arguments and on Trademark Rule 2.21, applicant contends that
he has priority in the “19-0 THE PERFECT SEASON” mark; that he
is entitled to judgment as a matter of law on each of
opposer’s claims; and that the opposition should be dismissed
with prejudice.
In its reply brief in regard to its motion and in
response to applicant’s cross-motion, opposer argues that
Trademark Rule 2.21 applies to applications filed under
Sections 1 and 44 of the Trademark Act, not to those filed

3 The filing date of an application is changed to an effective
filing date in the following situations, namely, (i) when an
applicant with an application that is based solely on Section
1(b) files an acceptable amendment to allege use or statement of
use and an acceptable amendment to the Supplemental Register, the
effective filing date is the filing date of the use amendment
(see Trademark Rule 2.75(b), 37 C.F.R. § 2.75(b)); (ii) when an
applicant is entitled to priority based on a foreign application,
the effective filing date is the date on which the foreign
application was first filed in the foreign country, as long as
the priority claim for the United States application is filed
within six months after the filing date of the foreign
application (see 15 U.S.C. §§ 1126(d)(1) and 1141(g); and
Trademark Rules 2.34(a)(4)(i) and 7.27(c), 37 C.F.R.
§§ 2.34(a)(4)(i) and 7.27(c)); and (iii) in an application filed
before November 16, 1989 (prior to which one year’s lawful use of
the mark in commerce was required to apply for registration on
the Supplemental Register), the date of the amendment to the
Supplemental Register becomes the effective filing date of the
application if: (1) the applicant had not used the mark in
commerce for one year before the application filing date; and (2)
the applicant amends to the Supplemental Register on or after
November 16, 1989. See TMEP §§ 206, 206.01, 206.02, 206.03 and
816.02 (5th ed. 2007).

Opposition No. 91185033
6
under Section 23 for registration on the Supplemental Register
and, thus, that applicant should not be regarded as having
satisfied the minimum filing requirements until April 22,
2008, when he amended his application to seek registration on
the Principal Register under Section 1(b). In applicant’s
reply brief, he argues that opposer has confused the
registration requirements set forth in Trademark Rule 2.47 and
the filing requirements set forth in Trademark Rule 2.21.
A motion for judgment on the pleadings is a test solely
of the undisputed facts appearing in all the pleadings,
supplemented by any facts of which the Board will take
judicial notice. For purposes of the motion, all well pleaded
factual allegations of the non-moving party must be accepted
as true, while those allegations of the moving party which
have been denied (or which are taken as denied, pursuant to
Federal Rule 8(b)(6), because no responsive pleading thereto
is required or permitted) are deemed false. Conclusions of
law are not taken as admitted. Baroid Drilling Fluids Inc. v.
SunDrilling Products, 24 USPQ2d 1048 (TTAB 1992). All
reasonable inferences from the pleadings are drawn in favor of
the non-moving party. Id. Further, a judgment on the
pleadings may be granted only where, on the facts as deemed
admitted, there is no genuine issue of material fact to be
resolved, and the moving party is entitled to judgment on the
substantive merits of the controversy, as a matter of law.
Opposition No. 91185033
7
Id. See also 5C Fed. Prac. & Proc. Civ.3d § 1367 (2008).
Motions for partial judgment on the pleadings are appropriate.
See VNA Plus, Inc. v. APRIA Healthcare Group, Inc.,
29 F.Supp.2d 1253, 1258 (D. Kan. 1998); Carmen v. San
Francisco Unified School District, 982 F.Supp. 1396, 1401
(N.D. Cal. 1997) (“ … although Rule 12(c) does not expressly
authorize ‘partial’ judgments, neither does it bar them, and
it is common practice to apply Rule 12(c) to individual causes
of action”).
Based on our review of the pleadings, the involved
application, which is of record pursuant to Trademark Rule
2.122(b), and the parties’ arguments, we are not persuaded
that applicant’s application is void ab initio or that its
effective filing date must be deemed to be the date on which
he amended the application to seek registration on the
Principal Register. In particular, we find that opposer has
conflated the rule for obtaining a filing date, namely,
Trademark Rule 2.21, with the rules that set forth the
requirements for obtaining a registration under a particular
statutory basis and for a particular register. See, e.g.,
Trademark Rules 2.32, 2.34(a), and 2.47(a) and (e), 37 C.F.R.
§§ 2.32, 2.34(a), and 2.47(a) and (e). With regard to the
involved application, even though it originally indicated that
applicant sought registration on the Supplemental Register, it
contained the name of the applicant, a correspondence name and
Opposition No. 91185033
8
address, a listing of goods, and the filing fee for at least
one class of goods. As a result, the application properly
received a filing date. See Trademark 2.21(a), 37 C.F.R.
§ 2.21(a). Applicant was not required to specify the filing
basis for seeking registration on the Supplemental Register,
i.e., Section 1(a) of the Trademark Act, to receive a filing
date. See TMEP § 806 (5th ed. 2007) (“an applicant is not
required to specify the basis for filing to receive a filing
date”). Moreover, applicant was not required to provide a
verified statement that the mark was in use in commerce. If
the requirements for establishing a basis are not met in the
original application, the examining attorney will require that
the applicant comply with the relevant requirements. See Id.
“If th[e] verified statement [that the mark is in use in
commerce] is not filed with the initial application, the
[later submitted] verified statement must also state that the
mark was in use in commerce on or in connection with the goods
or services listed in the application as of the application
filing date. TMEP Id. at § 806.01(a) (emphasis in original).
Thus, “[a]n applicant must only specify and meet the
requirements of one or more filing bases before the mark will
be approved for publication for opposition or registration on
the Supplemental Register, not to acquire a filing date.”
TMEP Id. at § 806. See also Trademark Rule 2.32(a)(5),
37 C.F.R. § 2.32(a)(5).
Opposition No. 91185033
9
In view of the foregoing, we find that the Trademark
Rules and Trademark Office examination practice clearly allow
applicant another opportunity to provide certain information
missing from the original application so that the mark may be
registered, without losing the original filing date. In sum,
contrary to opposer’s arguments, Trademark Rule 2.47(a) sets
forth the registration requirements for marks to register on
the Supplemental Register, not the requirements to obtain a
filing date. Thus, because an allegation of use was not
required and the involved application met all the filing
requirements set forth in Trademark Rule 2.21(a), said
application is not void.
There is also no authority for opposer’s argument that
the involved application should be accorded a later filing
date, i.e., the date that applicant amended the application to
seek registration on the Principal Register under Section
1(b). As noted, the filing date is governed by Trademark Rule
2.21. Further, an applicant who files for registration on the
Supplemental Register may change its application to seek
registration on the Principal Register, as long as the
application is amended to comply with the rules relating to
the Principal Register. See Trademark Rule 2.75(a), 37 C.F.R.
§ 2.75(a). As discussed, the Trademark Rules do not
contemplate that an application must conform to all
requirements for registration when the application is filed in
Opposition No. 91185033
10
order to receive a filing date. Additionally, Trademark Rule
2.75(b) provides that the actual filing date is changed to an
effective filing date only when an application that originally
sought registration on the Principal Register and under
Section 1(b) of the Act is amended to seek registration on the
Supplemental Register, which is not the case here. Contrary
to opposer’s arguments, the converse is not true. Rather,
when an applicant amends an application on the Principal
Register to substitute one basis for another, a continuing
valid basis is presumed, unless there is contradictory
evidence in the record, and the application retains the
original filing date. Trademark Rule 2.35(b)(3), 37 C.F.R.
§ 2.35(b)(3). See also Sinclair Oil Corporation v. Sumatra
Kendrick, 85 USPQ2d 1032, 1033 (TTAB 2007); and TMEP
§ 806.03(h) (5th ed. 2007). Likewise, a continuing valid
basis is presumed when an applicant amends its application for
registration on the Supplemental Register to seek registration
on the Principal Register. Thus, if an application is amended
to the Principal Register to assert Section 1(b) as a basis
for that application, i.e., a bona fide intention to use the
mark in commerce, applicant is deemed to have that bona fide
intention to use the mark at the time it filed the original
application on the Supplemental Register. In this case, the
involved application was amended to include a statement that
applicant “had a bona fide intention to use … the mark in
Opposition No. 91185033
11
commerce on or in connection with the identified goods … as of
the filing date of the application,” as required by Trademark
Rule 2.34(a)(2). In view thereof, applicant’s continuing
valid basis under Section 1(b) since the filing date of the
application is presumed, and November 8, 2007 remains the
filing date of the involved application.
Accordingly, opposer’s motion for judgment on the
pleadings on the ground that the involved application is
either void ab initio or should be accorded a later effective
filing date is denied, and applicant’s cross-motion on that
ground is granted.
We turn now to applicant’s cross-motion for judgment on
the pleadings on the ground of likelihood of confusion. To
prevail on a Section 2(d) ground of opposition, the movant
must prove priority and likelihood of confusion. A party that
has filed an intent-to-use application may rely on the filing
date of its application to establish priority. See Zirco
Corp. v. American Telephone & Telegraph Co., 21 USPQ2d 1542,
1544 (TTAB 1991).
The filing date of the involved application is November
8, 2007. Opposer has pleaded that its application filing date
is January 17, 2008. Even though applicant denied in his
answer opposer’s allegations regarding its pleaded
application, applicant states in his cross-motion that he does
not dispute the facts section of opposer’s motion, which
Opposition No. 91185033
12
refers to the filing date of opposer’s application. Further,
applicant acknowledges that the filing date of opposer’s
pleaded application is January 17, 2008 (cross-motion, p. 2,
¶5).4 In view thereof, the filing date of opposer’s
application is not in dispute; and applicant’s filing date
precedes the filing date of opposer’s application.
Accordingly, because we have found that the involved
application is not void, that applicant’s filing date is
November 8, 2007, that opposer’s filing date is January 17,
2008, and that both applications are based on intent to use
the mark in commerce and opposer has not alleged any use prior
to the filing of its application, applicant clearly has
priority in the mark “19-0 THE PERFECT SEASON.” Because
opposer has failed to plead any facts by which it can
establish priority of use, it cannot prevail, and we need not
reach the question of likelihood of confusion concerning the
marks “19-0 THE PERFECT SEASON.” See Corporate Document
Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477,
1479 n.4 (TTAB 1998) (“although an opposition cannot be
sustained under Section 2(d) on the basis of opposer’s prior
use without proof of likelihood of confusion, the opposition
can be defeated by applicant’s proof of prior use alone”).

4 Our consideration of briefs filed in regard to a motion for
judgment on the pleadings does not mean that we are considering
matters outside the pleadings.
Opposition No. 91185033
13
In view of the foregoing, opposer’s claim of priority
fails as a matter of law, applicant’s cross-motion for
judgment on the pleadings is granted on the issue of priority,
and judgment in favor of applicant dismissing the opposition
is hereby entered, subject to applicant’s establishment of
constructive use.
The time for filing an appeal or for commencing a civil
action will run from the date of this decision. Trademark
Rules 2.129(d) and 2.145, 37 C.F.R. §§ 2.129(d) and 2.145. If
there is no appeal, then applicant’s application shall be
processed for issuance of a notice of allowance. Thereafter,
when applicant’s mark has been registered or the application
becomes abandoned, the interested party should inform the
Board so that appropriate action may be taken to terminate
this proceeding.
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