Lile Inc.v.BCS Properties, LLC

Trademark Trial and Appeal Board

Sep 28, 2017

No. 91221745 (T.T.A.B. Sep. 28, 2017)

mbm Mailed: September 28, 2017

Opposition No. 91220066 (Parent)
Opposition No. 91221745
Lile Inc

v.
BCS Properties, LLC

Before Taylor, Wellington, and Gorowitz,
Administrative Trademark Judges.

By the Board:
This proceeding comes before the Board for consideration of the motion (filed May
5, 2017) of BCS Properties, LLC (“Applicant”) for summary judgment based on the
alleged lack of standing of Lile Inc. (“Opposer”). Opposer filed a timely response on
June 5, 2017.1
I. Background
Applicant seeks to register the mark COLLEGE FOOTBALL PLAYOFF, in
standard characters, for the following goods: “Metal key chains” in International
Class 6; “Jewelry, watches, pendants, rings, medallions, collectible coins” in
International Class 14; “Wallets, billfolds” in International Class 18; “Plastic novelty

1 Applicant’s reply brief, filed June 30, 2017, is untimely and will be given no consideration.
See Trademark Rule 2.127(e)(1).
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 ORDER IS NOT A
PRECEDENT OF THE
TTAB
Opposition Nos. 91220066 and 91221745

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license plates; vinyl flags” in International Class 20; “Mugs and beverage glassware”
in International Class 21; “Men’s, women’s, and children’s clothing, namely, t-shirts,
sweat shirts, sweat pants, caps, hats, pullovers, jerseys, and jackets, visors, shorts,
socks, sweatbands, scarves, and sweaters” in International Class 25; “Rugs” in
International Class 27; and “Toy novelty items, namely, foam fingers and hands;
sports equipment, namely, footballs and kicking tees; collectible toys, namely, full-
sized replica football helmets and mini collector football helmets, collectible full-sized
replica footballs” in International Class 28.2
Applicant also seeks to register the mark COLLEGE FOOTBALL PLAYOFF and
Design, as shown below, for the following goods: “Metal key chains” in International
Class 6; “Video game software; digital media, namely, pre-recorded DVDs,
downloadable audio and video recordings, and CDs featuring college football games;
exhibitions and tournaments, and promoting the sport of football; downloadable
software in the nature of a mobile application software for mobile phones and tablet
computers for providing entertainment, information, news and programming, polls,
scores, standings, statistics, and history and background, all in the field of the sport
of football” in International Class 9; “Jewelry, watches, pendants, rings, medallions,
collectible coins” in International Class 14; “Printed publications in the form of game
programs, media guides and commemorative books in the field of sports and
entertainment; bumper stickers, decals and paper pennants” in International Class

2 Application Serial No. 85888764, filed March 28, 2013, based on an allegation of a bona fide
intent to use the mark in commerce pursuant to Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b). “FOOTBALL” is disclaimed.
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16; “Wallets, billfolds” in International Class 18; “Plastic novelty license plates; vinyl
flags” in International Class 20; “Mugs and beverage glassware” in International
Class 21; “Men’s, women’s, and children’s clothing, namely, t-shirts, sweat shirts,
sweat pants, caps, hats, pullovers, jerseys, and jackets, visors, shorts, socks,
sweatbands, scarves, and sweaters” in International Class 25; “Rugs” in International
Class 27; and “Toy novelty items, namely, foam fingers and hands; sports equipment,
namely, footballs and kicking teas; collectible toys, namely, full-sized replica football
helmets and mini collector football helmets, collectible full-sized replica footballs” in
International Class 28.3

On January 7, 2015, Opposer filed a notice of opposition opposing registration of
the mark in application Serial No. 85919900 on the grounds of likelihood of confusion
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), and that the mark
is merely descriptive pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1). On April 29, 2015, Opposer filed a notice of opposition opposing
registration of the mark in application Serial No. 8588764 on the same grounds. On
August 31, 2015, these proceedings were consolidated. On March 21, 2017, the Board

3 Application Serial No. 85919900, filed May 1, 2013, based on an allegation of a bona fide
intent to use in commerce pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
“COLLEGE FOOTBALL PLAYOFF” is disclaimed for International Classes 9 and 16.
“FOOTBALL” is disclaimed for International Class 28.
Opposition Nos. 91220066 and 91221745

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granted Opposer’s motion for leave to amend its notice of opposition in each of these
proceedings to assert a claim that Applicant lacked a bona fide intent to use the
marks as of the filing dates of the respective applications.
In support of its allegations of standing and asserted claims, Opposer pleads, inter
alia, ownership of pending application Serial No. 86052371 for the mark
CFBPLAYOFF.COM, in standard characters, for the following services in
International Class 41: “Providing a website featuring information relating to the
sport of football; Providing a web-based system and on-line portal for customers to
participate in on-line gaming, operation and coordination of game tournaments,
leagues and tours” in International Class 41.4 Opposer also pleads common law use
of the mark CFBPLAYOFF.COM since at least as early as July 2008. With regard to
its pleaded pending application, Opposer further pleads that its application has been
preliminarily refused registration under Section 2(d) of the Trademark Act on the
ground that Opposer’s pleaded mark is likely to cause confusion with Applicant’s
involved marks.
In its answers, Applicant denies the salient allegations in the consolidated
amended notices of opposition.
II. Applicant’s Motion for Summary Judgment
Applicant has moved for summary judgment on the ground that Opposer lacks
standing. In support of its motion for summary judgment, Applicant submitted the

4 Application Serial No. 86052371, filed August 30, 2013, for registration on the Supplemental
Register, alleging July 1, 2008 as both the date of first use and the date of first use in
commerce.
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declaration of Steven Hollman, counsel for Applicant, who introduces, inter alia, the
following exhibits: (1) selected portions of the deposition transcript of Bill Hancock;
(2) selected portions of the deposition transcript of Edward Deeb; (3) copies of TSDR
printouts for Opposer’s Serial No. 86052371; (4) selected portions of the deposition
transcript of Tanya Falleiro; (5) a copy of the Office Action issued by the USPTO with
respect to Opposer’s Application Serial No. 86052371; (6) a copy of Opposer’s response
to the USPTO Office Action for Serial No. 86052371; (7) Opposer’s responses to
Applicant’s First Set of Interrogatories; (8) copies of portions of the file history for
Serial No. 85919900; (8) copies of portions of the file history for Serial No. 85888764;
(9) copies of portions of the file history for Serial No. 85888738; and (10) copies of the
file history for Serial No. 86052371.
In opposition to Applicant’s motion for summary judgment, Opposer submitted
the declarations of James R. Hastings, counsel for Opposer, and Edward Deeb, Vice
President of Opposer, who introduce, inter alia, the following exhibits: (1) Applicant’s
Responses to Opposer’s First Set of Requests for Admission; (2) copies of TSDR
printouts for Applicant’s Serial No. 85888764; (3) copies of TSDR printouts for
Applicant’s Serial Nos. 85919900, 85888738, 85919919, 86191300, and 86275222; (4)
copies of TSDR printouts of the file history for Opposer’s Serial No. 86052371; (5) a
screenshot of the Wayback Machine purporting to show the website
www.cfbplayoff.com as of May 30, 2013; (6) a document listing Opposer’s ownership
of the domain name cfbplayoff.com; (7) screenshots of websites showing use of
Opposer’s CFBPLAYOFF.COM mark; (8) screenshots of Applicant’s social media
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accounts; and (9) a copy of a letter sent from Applicant to Opposer dated November
19, 2014.
A. Summary Judgment Standard
Summary judgment is appropriate where the movant shows that there is no
genuine dispute as to any material fact and that it is entitled to judgment as a matter
of law. Fed. R. Civ. P. 56(a). A party asserting that a fact cannot be or is genuinely
disputed must support its assertion by either (1) citing to particular parts of materials
in the record, or (2) showing that the materials cited do not establish the absence or
presence of a genuine dispute, or that an adverse party cannot produce admissible
evidence to support the fact. Fed. R. Civ. P. 56(c).
A movant for summary judgment carries the burden of proof in regard to its
motion. See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). In deciding the
motion, the function of the Board is not to try issues of fact, but to determine if there
are any genuine disputes of material fact to be tried. See TBMP § 529.01 and cases
cited therein (June 2017). When the moving party has supported its motion with
sufficient evidence that, if unopposed, indicates there is no genuine dispute of
material fact and that the moving party is entitled to judgment as a matter of law,
the burden then shifts to the non-moving party to demonstrate the existence of a
genuine dispute of material fact to be resolved at trial. Enbridge, Inc. v. Excelerate
Energy LP, 92 USPQ2d 1537, 1540 (TTAB 2009).
The nonmoving party must be given the benefit of all reasonable doubt as to
whether genuine disputes of material fact exist, and the evidentiary record on
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summary judgment, and all reasonable inferences to be drawn from the undisputed
facts, must be viewed in the light most favorable to the nonmoving party. See
Opryland USA, Inc. v. Great Am. Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471,
1472 (Fed. Cir. 1992).
B. Decision
Standing is a threshold issue that must be proven by a plaintiff in every 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, 1025-26 (Fed. Cir. 1999). Our primary
reviewing court has enunciated a liberal threshold for determining standing, namely,
that a plaintiff must demonstrate that it possesses a “real interest” in a proceeding
beyond that of a mere intermeddler, and “a reasonable basis for his belief of damage.”
Empresa Cubana Del Tabaco, 111 USPQ2d at 1062. A “real interest” is a “direct and
personal stake” in the outcome of the proceeding. Ritchie v. Simpson, 50 USPQ2d at
1025. This threshold determination is made prior to consideration of the pleaded
grounds and defenses.
Here, there is no genuine dispute as to the fact that Opposer is the owner of
application Serial No. 86052371, which has been preliminarily refused registration
based on a potential likelihood of confusion with the applications at issue in these
consolidated proceedings. See 40 TTABVUE 8. Both Applicant and Opposer made the
Office Action preliminarily refusing Opposer’s application of record for this motion.
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It is clear that ownership of an application that has been refused registration
based on a defendant’s prior registration or application is sufficient to confer
standing. See Empresa Cubana Del Tabaco, 111 USPQ2d at 1062; Saddlesprings Inc.
v. Mad Croc Brands Inc., 104 USPQ2d 1948, 1950 (TTAB 2012); ShutEmDown Sports
Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012); Weatherford/Lamb Inc. v. C&J
Energy Services Inc., 96 USPQ2d 1834, 1837 (TTAB 2010) (“Inasmuch as Petitioner
has made of record the USPTO Office action suspending its pleaded application
pending the possible refusal to registration under Section 2(d) of the Lanham Act
based on an alleged likelihood of confusion with Respondent’s registration, there is
no question that Petitioner has standing to bring this petition to cancel.”); Fiat Group
Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111, 1112 (TTAB 2010); Great Seats,
Ltd. v. Great Seats, Inc., 84 USPQ2d 1235, 1237 (TTAB 2007); Cerveceria Modelo S.A.
de C.V. v. R.B. Marco & Sons, Inc., 55 USPQ2d 1298, 1299-1300 (TTAB 2000).
Moreover, Opposer has made of record a letter from counsel for Applicant addressed
to Opposer asserting Applicant’s rights in its marks and requesting that Opposer
abandon its application. 42 TTABVUE 223-224; See Mitchell Miller, A Professional
Corp. v. Michele Ballard Miller, 105 USPQ2d 1615, 1619 (TTAB 2013).
Applicant argues that Opposer cannot have a reasonable basis for its belief of
damage based on Applicant’s ownership of a registration (Registration No. 4748471)
that was also cited as a basis for refusing registration to Opposer’s application based
on a likelihood of confusion. Applicant further notes that Opposer has not sought to
cancel this registration. Opposer’s actions, or lack thereof, with respect to this
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registration has no bearing on Opposer’s standing to bring these consolidated
proceedings. The validity of this registration is not at issue in this proceeding.
Opposer’s standing is established by the fact that it has made of record the
preliminary refusal of its pleaded pending application based on a potential likelihood
of confusion with each of Applicant’s involved marks.5
Based on the foregoing, we sua sponte find that entry of summary judgment in
favor of Opposer with respect to standing is appropriate. In view thereof, Applicant’s
motion for summary judgment based on Opposer’s alleged lack of standing is
DENIED and we hereby enter partial summary judgment in Opposer’s favor with
regard to the issue of Opposer’s standing to maintain this proceeding.6 We note,
however, that Opposer must maintain its standing throughout these proceedings.
III. Pleadings
As a final matter, in reviewing the pleadings for purposes of the motion for
summary judgment, we find that Opposer has not properly pleaded a claim of
likelihood of confusion. In order to state a claim for likelihood of confusion pursuant
to Section 2(d) of the Trademark Act, a plaintiff must allege that it has valid

5 Applicant also argues that Opposer’s actions (e.g., Opposer’s refusal to consent to
Applicant’s proposed amendments to its application and Opposer’s failure to oppose
Applicant’s now issued Registration No. 4748471) demonstrate Opposer’s lack of a real
interest in its mark and a lack of a reasonable belief of damage. 40 TTABUVE 18-19. To the
extent Applicant is attempting to argue that Opposer’s actions or inactions bar Opposer’s
claims in these consolidated proceedings, these arguments are not persuasive because such
allegations do not deprive Opposer of standing.
6 The parties should note that the evidence submitted in connection with a motion for
summary judgment or opposition thereto is of record only for consideration of that motion.
Any such evidence to be considered at final hearing must be properly introduced in evidence
during the appropriate trial period. See Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28
USPQ2d 1464, 1465 n.2 (TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ 911, 913 (TTAB 1983).
Opposition Nos. 91220066 and 91221745

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proprietary rights that are prior to those of Applicant’s, or that it owns a registration
that Applicant has not counterclaimed to cancel, and that Applicant’s mark so
resembles Opposer’s mark as to be likely to cause confusion. See 15 U.S.C. § 1052(d);
Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981).
Here, Opposer has pleaded that its pending application Serial No. 86052371 has
been preliminarily refused registration by the USPTO based upon a finding of
likelihood of confusion with respect to Opposer’s mark and Applicant’s involved
marks. Amended notices of opposition ¶ 4. It appears that Opposer is seeking to
assert a hypothetical claim of likelihood of confusion based on the Examining
Attorney’s preliminary refusal. A plaintiff may plead likelihood of confusion
hypothetically; however, here, Opposer has not affirmatively pleaded that if, as the
examining attorney contends, Opposer’s mark so resembles Applicant’s cited marks
as to be likely, when applied to the goods or services of Opposer, to cause confusion,
that registration should be refused based on Opposer’s alleged priority. See TBMP
§ 309.03(c)(B). Moreover, although Opposer has pleaded common law use of its
CFBPLAYOFF.COM mark since 2008, Opposer must specifically allege the goods or
services used in connection with its pleaded mark since 2008.
Accordingly, Opposer is allowed until twenty days from the mailing date of this
order to file and serve an amended notice of opposition for each of these consolidated
proceedings that properly sets forth a claim of likelihood of confusion, failing which
Opposer’s claim of likelihood of confusion will be dismissed with prejudice and given
no further consideration by the Board.
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In turn, Applicant is allowed until twenty days from the date of service of the
amended notices of opposition, if any, in which to file and serve answers to the
amended pleadings. Although proceedings are consolidated, Applicant should file its
answers separately in each proceeding, as an exception to the rule that filings be
made only in the parent case.
IV. Trial Schedule
These consolidated proceedings are resumed. Remaining dates for this
consolidated case are reset as follows:
Discovery Closes October 19, 2017
Plaintiff's Pretrial Disclosures Due December 3, 2017
Plaintiff's 30-day Trial Period Ends January 17, 2018
Defendant's Pretrial Disclosures Due February 1, 2018
Defendant's 30-day Trial Period Ends March 18, 2018
Plaintiff's Rebuttal Disclosures Due April 2, 2018
Plaintiff's 15-day Rebuttal Period Ends May 2, 2018
BRIEFS SHALL BE DUE AS FOLLOWS:
Plaintiff's Main Brief Due July 1, 2018
Defendant's Main Brief Due July 31, 2018
Plaintiff's Reply Brief Due August 15, 2018

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
manner and timing of taking testimony, matters in evidence, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
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declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
final hearing will be scheduled only upon the timely submission of a separate notice
as allowed by Trademark Rule 2.129(a).
***
NOTICE: CHANGES TO THE TRADEMARK TRIAL AND APPEAL
BOARD (“BOARD”) RULES OF PRACTICE EFFECTIVE JANUARY 14, 2017

The USPTO published a Notice of Final Rulemaking in the Federal Register on
October 7 2016, at 81 Fed. Reg. 69950. It sets forth several amendments to the
rules that govern inter partes (oppositions, cancellations, concurrent use) and ex
parte appeal proceedings. A correction to the final rule was published on December
12, 2016, at 81 Fed. Reg. 89382.
For complete information, the parties are referred to:

• The Board’s home page on the uspto.gov website:
https://www.uspto.gov/trademarks-application-process/trademark-trial-and-
appeal-board

• The final rule:
http://www.uspto.gov/sites/default/files/documents/81%20FR%2069950.pdf

• The correction to the final rule:
http://www.uspto.gov/sites/default/files/documents/81%20FR%2089382.pdf

• The clarification to the final rule:
https://www.uspto.gov/sites/default/files/documents/82%20FR%2033804%20%
28Final%20rule%29.pdf

• A chart summarizing the affected rules and changes:
http://www.uspto.gov/sites/default/files/documents/RulesChart_12_9_16.pdf

For all proceedings, including those already in progress on January 14, 2017,
some of the changes are:
Opposition Nos. 91220066 and 91221745

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• All pleadings and submissions must be filed through ESTTA. Trademark
Rules 2.101, 2.102, 2.106, 2.111, 2.114, 2.121, 2.123, 2.126, 2.190 and 2.191.

• Service of all papers must be made by email, unless otherwise stipulated.
Trademark Rule 2.119.

• Response periods are no longer extended by five days for service by first-
class mail, Priority Mail Express®, or overnight courier. Trademark Rule
2.119.

• Deadlines for submissions to the Board that are initiated by a date of
service are 20 days. Trademark Rule 2.119. Responses to motions for
summary judgment remain 30 days. Similarly, deadlines for responses to
discovery requests remain 30 days.

• All discovery requests must be served early enough to allow for responses
prior to the close of discovery. Trademark Rule 2.120. Duty to supplement
discovery responses will continue after the close of discovery.
• Motions to compel initial disclosures must be filed within 30 days after the
deadline for serving initial disclosures. Trademark Rule 2.120.

• Motions to compel discovery, motions to test the sufficiency of responses or
objections, and motions for summary judgment must be filed prior to the
first pretrial disclosure deadline. Trademark Rules 2.120 and 2.127.

• Requests for production and requests for admission, as well as
interrogatories, are each limited to 75. Trademark Rule 2.120.

• Testimony may be submitted in the form of an affidavit or declaration.
Trademark Rules 2.121, 2.123 and 2.125.

• New requirements for the submission of trial evidence and deposition
transcripts. Trademark Rules 2.122, 2.123, and 2.125.

• For proceedings filed on or after January 14, 2017, in addition to the
changes set forth above, the Board’s notice of institution constitutes service
of complaints. Trademark Rules 2.105(a) and 2.113(a).

This is only a summary of the significant content of the Final Rule. All parties
involved in or contemplating filing a Board proceeding, regardless of the date of
commencement of the proceeding, should read the entire Final Rule.
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