Michelle L. Sandersonv.Allura Imports Inc.

Trademark Trial and Appeal Board

May 31, 2017

No. 92061702 (T.T.A.B. May. 31, 2017)

BUO
Mailed: May 31, 2017

Cancellation No. 92061702
Michelle L. Sanderson

v.
Allura Imports Inc.

Before Richey, Deputy Chief Administrative Trademark Judge, and Adlin and
Heasley, Administrative Trademark Judges.

By the Board:

Michelle L. Sanderson (“Petitioner”) seeks summary judgment on her claim that
the mark in Registration No. 4288491 is likely to cause confusion with her previously
used marks.
Background
Petitioner has petitioned to cancel Registration No. 4288491 (“the ’491
registration”) for the mark AMERICAN HERO, in standard character format, for
“[m]en, women, and children clothing, namely, shirts, pants, coats, dresses, sweaters,
[and] skirts,” in International Class 25. The registration issued on February 12, 2013,
from an application filed June 6, 2012.
Petitioner pleads prior use of the marks AMERICAN HERO, AMERICAN HERO
CLOTHING, and AMERICAN HERO CLOTHING & ACCESSORIES (“Petitioner’s
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. 92061702

- 2 -
AMERICAN HERO marks”) on various items of clothing. 1 TTABVUE 3, ¶¶ 1 and
10-12. Petitioner also pleads ownership of “U.S. Trademark Application Serial
Number 86/479,873 for the mark AMERICAN HERO CLOTHING for use in
connection with ‘Hats; Pants; Short-sleeved or long-sleeved t-shirts; Sweatshirts;
Tank tops,’” which was refused registration based on a finding of likelihood of
confusion with Respondent’s involved mark.1 Id. at 4, ¶¶ 4 and 9.
Petitioner’s pleading of prior use and her application for registration of the similar
mark AMERICAN HERO CLOTHING in connection with clothing is sufficient to
allege her standing. See Empresa Cubana del Tabaco v. Gen. Cigar Co., 573 F.3d
1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (plaintiff’s application refused based
on defendant’s registrations). Petitioner also alleges that the subject mark and
Petitioner’s AMERICAN HERO marks are similar and cover related products, and
therefore, Allura Imports Inc.’s (“Respondent”) use of its mark creates a likelihood of
confusion with Petitioner’s pleaded marks. 1 TTABVUE 5, ¶¶ 13-15.
Respondent, in its answer to the petition, denied the salient allegations thereof.
Additionally, Respondent asserted the following five unexplained “affirmative
defenses”: (1) failure to state a claim upon which relief can be granted; (2) laches; (3)
waiver, acquiescence and estoppel; (4) “Petitioner will not be damaged;” and (5)
“Petitioner’s marks are not protectable….” 4 TTABVUE 3-4, ¶¶ 17-21.

1 The application alleges December 1, 2011 as both the date of first use of the mark and its
date of first use in commerce.
Cancellation No. 92061702

- 3 -
Summary Judgment
Summary judgment is an appropriate method of disposing of cases in which there
are no genuine disputes as to material facts, thus allowing resolution as a matter of
law. See Fed. R. Civ. P. 56(c). In deciding motions for summary judgment, the Board
must follow the well-established principles that, in considering the propriety of
summary judgment, all evidence must be viewed in a light favorable to the non-
movant, and all justifiable inferences are to be drawn in the non-movant’s favor. The
Board may not resolve disputes of material fact; it may only ascertain whether such
disputes exist. See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d
2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d
847, 23 USPQ2d 1471 (Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy’s Inc., 961
F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
The burden is on the party moving for summary judgment to demonstrate the
absence of any genuine dispute of material fact, and that it is entitled to summary
judgment as a matter of law. Fed. R. Civ. P. 56(c). When a moving party’s motion for
summary judgment is supported by evidence sufficient to indicate that there is no
genuine dispute as to any material fact and that the moving party is entitled to
judgment, the burden shifts to the non-moving party to demonstrate the existence of
at least one genuine dispute as to a material fact that requires resolution at trial. The
non-moving party may not rest on the mere allegations of its pleadings and
assertions, but must designate specific portions of the record or produce additional
evidence showing the existence of a genuine dispute as to a material fact for trial.
Cancellation No. 92061702

- 4 -
Consequently, factual assertions, without evidentiary support, are insufficient to
defend against a motion for summary judgment. See Hornblower & Weeks Inc. v.
Hornblower & Weeks Inc., 60 USPQ2d 1733, 1739 (TTAB 2001) (“applicant has
produced no evidence, or raised any expectation that at trial it could produce
evidence….”).
Petitioner alleges that “[t]here is no genuine dispute of material fact that [she]
has prior use of her marks … for clothing … and that Respondent’s AMERICAN
HERO mark for identical clothing is likely to cause confusion with Petitioner’s
AMERICAN HERO Marks.” 14 TTABVUE 2. Respondent counters:
Registrant … disputes that the marks could lead to a
likelihood of confusion. The Petitioner’s mark, as allegedly
shown in its photographs, consists of a logo featuring a
stylized American flag design and working [sic] atop and
beneath the flag. The apparel is adult women’s casual
clothing. Registrant is an infant and children’s wear
company, using the standard work [sic] mark. There is no
likelihood of confusion.

16 TTABVUE 6.

Petitioner’s declaration in support of her motion includes the following exhibits:
• copies of invoices dated November 24, 2011, December 17,
2011 for Petitioner’s purchase of: (1) clothing “screenprint
for Fort Mill;” and (2) business cards; 2

• copies of invoices from Wix.com, both dated December 22,
2011, for the purchase of an unspecified .net domain
name;3

2 14 TTABVUE 16-17.
3 Id. at 18.
Cancellation No. 92061702

- 5 -
• a copy of a transaction statement dated February 3, 2012,
showing the purchase of a “Cap Hat Heat Press Transfer
Machine;”4

• a copy of a booth reservation form and receipt of payment
for a tradeshow in Grand Falls, Iowa;5

• screenshots from Petitioner’s Facebook.com page showing:
(1) a rendering of a design mark including the wording
AMERICAN HERO CLOTHING & ACCESSORIES, with
a design of the U.S. flag from December 21, 2011; (2)
pictures of sweatshirts with hangtags6 attached and
pricing information from February 2012; (3) a picture of a
store display with a sign featuring the wording
AMERICAN HERO above a rack of shirts from March 15,
2012; and (4) pictures of t-shirts with hangtags attached
from February 2012;7

• copies of various invoices from Petitioner for purchases of
its products, displaying the design mark AMERICAN
HERO CLOTHING & ACCESSORIES; for example,
invoices dated January 30, 2012, February 26, 2012, and
March 7, 2012, for the sale of: (1) “Cranky Wife v-neck tee,”
(2) “American flag heart,” and (3) “T-shirt – Army Brat
custom tee and Car decal;”8

• several screenshots from Petitioner’s Facebook.com page;
for example, screenshots dated January 27, 2012, February
23, 2012, and March 5, 2012, offering: (1) a t-shirt with the
phrase “I’m Cranky because my husband is deployed.
What’s your excuse?” on the front, (2) a sweatshirt
described as “grey American flag heart burnout hoodie,”

4 Id. at 19-20.
5 Id. at 22.
6 The hangtags are completely illegible. It is the filer’s responsibility to ensure that the
documents received by the Board and entered in its electronic proceeding file are clear and
accurate. See TBMP §§ 110.01 and 110.02(b) (Jan. 2017) (“The filer is responsible for ensuring
that all Board submissions – including attachments to ESTTA filings – are legible.”).
7 Id. at 24-36.
8 Id. at 38, 41, 44, 46, 48, 50, 52 and 55.
Cancellation No. 92061702

- 6 -
and (3) a t-shirt with a hangtag attached, featuring the
phrase “I’m an Army brat!” across the chest;9

• undated pictures of t-shirts with tags attached to the
bottom of the t-shirts reading “American Hero Clothing”
including a design;10

• a copy of the TEAS Plus Application filed by Petitioner for
the mark AMERICAN HERO CLOTHING on December
13, 2014, including the submitted specimens, and the April
1, 2015 Office Action refusing registration of Petitioner’s
application based upon, inter alia, a likelihood of confusion
with the ’491 registration;11

• a copy of the registration certificate for the ’491
registration.12

14 TTABVUE 15-107, Sanderson Exhibits A-G.
In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973), the U.S. Court of Customs and Patent Appeals discussed thirteen factors
relevant to a determination of likelihood of confusion. However, only those relevant
factors for which there is evidence in the record must be considered. Id. at 567-68; see
also In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir.
2010) (“Not all of the DuPont factors are relevant to every case, and only factors of
significance to the particular mark need be considered.”); See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1845 (Fed. Cir. 2000). In a likelihood of
confusion analysis, two key factors are the degree of similarity of the parties’ marks

9 Id. at 39 and 42-43, 45, 47, 49, 51, 53-54 and 56.
10 Id. at 58-60.
11 Id. at 62-105.
12 Id. at 107.
Cancellation No. 92061702

- 7 -
and the degree to which their respective goods or services are related. See In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); In re
i.am.symbolic, LLC, 116 USPQ2d 1406, 1409 (TTAB 2015).
Petitioner’s attachment of relevant portions of the file history from her pleaded
application, particularly a copy of the Office Action dated April 1, 2015 issuing the
likelihood of confusion refusal based upon Respondent’s registration establishes
Petitioner’s standing. See Cunningham, 55 USPQ2d a t 1844; Hartwell Co. v.
Shane, 17 USPQ2d 1569 (TTAB 1990). 14 TTABVUE 62-67, 75-84.
Respondent has conceded the relatedness of the goods, stating, “Petitioner seeks
to cancel Registrant’s valid registration on the basis of alleged prior rights to the
mark AMERICAN HERO CLOTHING for the similar (but not identical) goods as are
contained in Registration No. 4,288,491….” 16 TTABVUE 2 (emphasis added).
Indeed, some of the goods contained in the ’491 registration are identical to those
offered by Petitioner, namely, shirts and pants. Therefore, we conclude there is no
genuine issue of dispute that the relatedness of the goods weighs heavily in favor of
finding a likelihood of confusion.
As with the goods, the marks need not be identical for a finding of likelihood of
confusion. See, e.g., The Wella Corp. v. California Concept Corp., 558 F2d 1019, 194
USPQ 419, 422 (CCPA 1977). In fact, where as here the goods are identical, the degree
of similarity between the marks required to support a finding of likelihood of
confusion is not as great as in the case of diverse goods. See Shen Mfg. Co. v. Ritz
Cancellation No. 92061702

- 8 -
Hotel Ltd., 393 F3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004). The marks at issue
here are virtually identical, save for the addition of the generic terms “CLOTHING”
and “CLOTHING & ACCESSORIES” to Petitioner’s marks. However, these terms
merely convey the genus of goods being sold and thus have no source-identifying
value. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824
(TTAB 2015) (“… it is beyond dispute that descriptive or generic terms (such as WINE
when used in connection with ‘wines’) serve little source-identifying function.”).
Accordingly, there is no genuine dispute that the marks are similar.
The crucial issue remaining for consideration, therefore, is priority of use.
Petitioner asserts, “Since at least as early as December 1, 2011, Petitioner has sold
various articles of clothing, including shirts, pants, tank tops, sweatshirts, and hats
under the trademarks AMERICAN HERO, AMERICAN HERO CLOTHING, and
AMERICAN HERO CLOTHING & ACCESSORIES.” 1 TTABVUE 3. Petitioner’s
submitted evidence demonstrates use of the marks on various articles of clothing that
predate Respondent’s constructive use date of June 6, 2012 – the filing date of the
underlying application that matured into the ’491 registration. This is the earliest
date upon which Respondent can rely without proof by “competent evidence” of an
earlier date of actual use.13 See Trademark Rule 2.122(b)(2) (the date of use in a
registration is not evidence on behalf of the registrant; “a date of use of a mark must

13 Note that while parties may rely on the dates on which their applications were filed as a
date of “constructive” first use, Trademark Act § 7(c), neither party may rely on their
respective alleged dates of first use and use in commerce without proving those dates through
competent evidence.

Cancellation No. 92061702

- 9 -
be established by competent evidence.”); see also Weatherford/Lamb Inc. v. C&J
Energy Svcs. Inc., 96 USPQ2d 1834, 1837 (TTAB 2010) (“It is well settled that in the
absence of any evidence of earlier use, the earliest date upon which respondent may
rely is the filing date of the underlying application that matured into the subject
registration.”).
Accordingly, Petitioner has established her standing to bring this claim, her
priority of use and that there is no genuine dispute of material fact with respect to
likelihood of confusion. Therefore, the burden now shifts to Respondent to
demonstrate the existence of at least one genuine dispute as to a material fact that
requires resolution at trial. Respondent, however, failed to offer any evidence
whatsoever in opposing the motion for summary judgment.14 Respondent’s remaining
contentions amount to mere attorney argument. Nevertheless, as previously stated,
factual assertions, without evidentiary support, are insufficient to defend against a
motion for summary judgment. See Hornblower & Weeks Inc., 60 USPQ2d at 1739.
Respondent attempted to raise for the first time in its brief a claim that Petitioner
has abandoned her pleaded mark and “has no trademark rights in and to AMERICAN
HERO because of insufficient trademark use.”15 16 TTABVUE 5. However, a party

14 Although Respondent refers to “emails and artwork dating back to 2012, evidencing the
designing of a new hang tag for the American Hero line in 2012 at least as early as 2012 for
use in [Respondent’s] Spring 2013 line,” no such emails or artwork were included as evidence
accompanying the brief. 16 TTABVUE 8, ¶ 7. As previously noted, it is the filer’s
responsibility to ensure the accuracy and completeness of any documents submitted through
ESTTA. Indeed, prior to final submission, the user is presented with a display of its
submission in “thumbnail” form, so that the user may determine whether all of the relevant
pages of the selected file or files have been properly attached. See TBMP § 110.02(a).
15 Although Respondent asserted a vague defense that “Petitioner’s marks are not protectable
as sought in the Complaint,” this defense lacks any factual background, nor does Respondent
Cancellation No. 92061702

- 10 -
may not defend against a motion for summary judgment by asserting the existence
of genuine disputes of material fact as to an unpleaded claim or defense. See Blansett
Pharmacal Co. v. Carmrick Labs. Inc., 25 USPQ2d 1473, 1475 n.4 (TTAB 1992).
Furthermore, Respondent’s mere arguments regarding the lack of identity of the
marks and goods are unavailing, as previously discussed.
Accordingly, Respondent has failed to show the existence of a genuine dispute as
to a material fact for trial.
Decision
For the foregoing reasons, Petitioner’s motion for summary judgment on her
likelihood of confusion claim against Registration No. 4288491 is GRANTED, and
judgment is entered against Respondent. The petition to cancel is GRANTED, and
Registration No. 4288491 will be cancelled in due course.

explain this defense in its brief on the present motion. See IdeasOne Inc. v. Nationwide Better
Health Inc., 89 USPQ2d 1952, 1953 (TTAB 2009) (affirmative defenses must be supported by
enough factual background and detail to fairly place the petitioner on notice of the basis for
the defenses); Ohio State Univ. v. Ohio Univ., 51 USPQ2d 1289, 1292 (TTAB 1999) (prima-
ry purpose of pleadings “is to give fair notice of the claims or defenses asserted”).