Mr. Dana Kelmanv.Mindee K. Hardin DBA Nose Better

Trademark Trial and Appeal Board

Mar 22, 2017

No. 91224275 (T.T.A.B. Mar. 22, 2017)

MW Mailed: March 22, 2017

Opposition No. 91224275
Mr. Dana Kelman

v.
Mindee K. Hardin DBA Nose Better

Before Cataldo, Mermelstein, and Hightower,
Administrative Trademark Judges.

By the Board:

Mindee K. Hardin, dba Nose Better (“Applicant”), seeks registration of
BLESSYOUZ (in standard characters) as a mark for “Disposable wipes impregnated
with cleansing chemicals or compounds for personal hygiene for the nose and face” in
International Class 3.1 On October 8, 2015, Matthew S. Nelles (“Opposer”) filed a
notice of opposition to the registration of Applicant’s mark. As grounds for opposition,
Opposer alleges, inter alia, likelihood of confusion based on his common-law use of
BLESSUE as a mark in connection with facial tissues since at least as early as May
23, 2008.2 Applicant, in her answer, filed November 17, 2016, denied the salient

1 Application Serial No. 86598590, filed April 15, 2015, based on Applicant’s allegation of a
bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b).
2 Opposer also pleaded ownership of pending application Serial No. 86643495 for BLESSUE
(in standard characters), filed May 28, 2015, for “facial tissue; paper tissue” in International
Class 16, based on an allegation of use in commerce under Trademark Act Section 1(a), 15
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
Opposition No. 91224275

2
allegations in the notice of opposition and asserted “Affirmative Defenses,” as more
fully discussed infra.3
This case now comes up for consideration of Opposer’s motion (filed November 11,
2016) for summary judgment. The motion is fully briefed.
The Pleadings
Opposer’s Claims
As an initial matter, a decision on summary judgment requires a review of the
operative pleadings to determine the legal sufficiency of the claims. See Fed. R. Civ.
P. 56(a); Asian & Western Classics B.V. v. Lynne Selkow, 92 USPQ2d 1478, 1478
(TTAB 2009). We note first that the ESTTA-generated cover page of the notice of
opposition indicates Opposer’s intention to pursue claims of deceptiveness and false
suggestion of a connection under Trademark Act Section 2(a), 15 U.S.C. 1052(a).4
However, upon review of the notice of opposition, we find that Opposer has not
sufficiently pleaded the claims under Section 2(a).
A deceptiveness claim under Section 2(a) is based on an allegation that the mark
will lead consumers to draw a false conclusion about the nature, quality, or
composition of the goods under circumstances where such a conclusion will be
material to the consumer’s decision to purchase the goods or services. See Consorzio

U.S.C. § 1051(a). The application identifies May 23, 2008 as both the date of first use and
date of first use in commerce.
3 On December 21, 2016, Applicant filed a revocation of power attorney. Thus, Applicant is
now appearing pro se in this proceeding.
4 ESTTA is an acronym for the Electronic System for Trademark Trials and Appeals, the
Board’s online electronic filing system. Trademark Rule 2.2(g).
Opposition No. 91224275

3
del Prosciutto di Parma v. Parma Sausage Products Inc., 23 USPQ2d 1894 (TTAB
1992) (issue was whether use of PARMA for meat products not made in Parma, Italy
deceived consumers in regard to geographic origin of goods); TMEP § 1203.02(b)
(January 2017).
Here, Opposer’s allegation of deceptiveness appears to be part of a likelihood of
confusion claim. Opposer alleges that, as a result of the confusing similarity of the
marks, “registration of the proposed mark ‘BlessYouz’ in connection with Applicant’s
product is likely to deceive purchasers as to the source or sponsorship of such product,
to cause confusion, to cause mistake or to deceive.”5 Thus, to the extent that Opposer
intends to plead a deceptiveness claim under Section 2(a), the allegations are clearly
insufficient to support the claim.
To the extent that Opposer intends to plead a claim of false suggestion of a
connection, Opposer must plead that (1) Applicant’s mark is the same or a close
approximation of Opposer’s previously used name or identity (not Opposer’s pleaded
marks); (2) Applicant’s mark would be recognized as such, in that it points uniquely
and unmistakably to Opposer; (3) Opposer is not connected with the goods sold by
Applicant under the mark; and (4) Opposer’s name or identity is of sufficient fame or
reputation that when Applicant’s mark is used on its goods, a connection with opposer
would be presumed. See Petróleos Mexicanos v. Intermix SA, 97 USPQ2d 1403, 1405
(TTAB 2010); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1593
(TTAB 2008); TMEP § 1203.03(c). Thus, Opposer’s allegation that Applicant’s use of

5 Notice of Opposition, ¶ 17, 1 TTABVUE 6.
Opposition No. 91224275

4
her mark “is likely to falsely suggest a relationship between Applicant’s product and
Opposer’s products” is legally insufficient to support a false suggestion of a connection
claim under Section 2(a).6
In view of the foregoing, we sua sponte dismiss any claims under Trademark Act
Section 2(a) from the notice of opposition. See NSM Resources Corp. v. Microsoft
Corp., 113 USPQ2d 1029, 1039 n.19 (TTAB 2014) (Board may sua sponte dismiss any
insufficiently pleaded claim).
Although Applicant does not identify a claim under Trademark Act Section 2(d)
on the cover page of the notice of oppositon, we find that Opposer has pleaded a prima
facie claim of likelihood of confusion in the text of the pleading. Opposer alleges that
Applicant’s mark and Opposer’s mark are very similar in sound, appearance and
meaning; that Applicant’s intended products are very similar and likely to utilize the
same or similar channels of commerce as Opposer; that the marks are likely to be
confused; and that Applicant’s intended use of her mark is likely to suggest a
relationship between Applicant’s product and Opposer’s products.7
Applicant’s Defenses
Turning to Applicant’s answer, Applicant has asserted several affirmative
defenses.8 The first two paragraphs under the affirmative defenses allege that

6 Notice of Opposition, ¶ 17, 1 TTABVUE 6.
7 Notice of Opposition, ¶¶ 11-17, 1 TTABVUE 6.
8 In her affirmative defenses, Applicant erroneously refers to Opposer as “Applicant” despite
identifying him has “Opposer” in the opening of her answer. Inasmuch as Opposer has not
asserted any objection to the error, we construe the defenses to refer to Opposer when
referencing “Applicant.”
Opposition No. 91224275

5
Opposer has not used his mark continuously and that he has abandoned any rights
he may have had in his mark. In order to establish priority, an opposer need only
show prior use of its mark, not continuous use. See West Fla. Seafood Inc. v. Jet Rests.
Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1665 (Fed. Cir. 1994). Moreover, a legally
sufficient defense of abandonment must include factual allegations of (1) three
consecutive years of discontinued use or (2) a period of non-use less than three years
together with an intent not to resume use. Trademark Act Section 45, 15 U.S.C. 1127;
Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1394
(Fed. Cir. 1990); Otto Int’l Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB
2007).
Opposer, in his reply brief, has responded to the allegation of abandonment and,
thus, waived his right to object to the defense as deficiently pleaded. However,
because Applicant has failed to support her defense of abandoment with factual
allegations that Opposer discontinued use of his mark for three consecutive years or
that Opposer discontinued use with an intent not to resume use, we find that
Applicant has failed to plead sufficient factual allegattions to support a defense of
abandonment. Thus, to the extent Applicant intends to assert a defense of
abandonment, Applicant must file an amended answer properly alleging such a
defense.
With respect to Applicant’s allegation of fraud as an affirmative defense,
Applicant has failed to assert sufficient factual allegations to support a fraud defense
in accordance with Fed. R. Civ. P. 9(b). See Asian & Western Classics B.V., 92 USPQ2d
Opposition No. 91224275

6
at 1478.9 Moreover, we cannot consider a defense of fraud in connection with
Opposer’s pleaded pending application because Opposer’s application is not before us.
The Board has no jurisdiction over an application that is still pending before an
examining attorney. See, e.g., Home Juice Co. v. Runglin Cos., 231 USPQ 897, 898
n.7 (TTAB 1986). Accordingly, we sua sponte strike Applicant’s fraud defense.
Applicant’s fourth affirmative defense merely consists of bald assertions that
Opposer’s claims are barred by laches and estoppel. Thus, we find that Applicant has
failed to assert a factual foundation for the defenses. See Ashcroft v. Iqbal, 556 U.S.
662, 663 (2009); Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB
2007) (elements of each claim should include enough detail to give fair notice of
claim). Moreover, equitable defenses such as laches and estoppel are generally not
available in opposition proceedings because these defenses start to run from the time
the mark is published for opposition. See Nat’l Cable Television Ass’n v. Am. Cinema
Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991); Barbara’s Bakery
Inc. v. Landesman, 82 USPQ2d 1283, 1292 n.14 (TTAB 2007) (defenses of laches,
acquiescence or estoppel generally not available in opposition proceeding). In view
thereof, we sua sponte strike the affirmative defenses of laches and estoppel.
Finally, we construe Applicant’s fifth affirmative defense alleging that Opposer’s
mark is descriptive as merely an amplification of Applicant’s denials or arguments

9 To assert a viable claim or defense of fraud, the party must allege with particularity, rather
than by implied expression, that the opposing party knowingly made a false, material
representation in the procurement of or maintenance of or renewal of a registration with the
intent to deceive the U.S. Patent and Trademark Office. See In re Bose Corp., 580 F.3d 1240,
91 USPQ2d 1938, 1942 (Fed. Cir. 2009).
Opposition No. 91224275

7
against Opposer’s likelihood of confusion claim. The Board sees no harm in allowing
such a defense since it provides a more complete notice of Applicant’s position
regarding Opposer’s asserted claim.
The Record
For purposes of the summary judgment motion, the evidentiary record includes
the pleadings and by rule, the file of Applicant’s application for registration.
Trademark Rule. 2.122(b).
In addition, Opposer’s has submitted the following exhibits, among others, in
support of his motion:
- The declaration of Opposer testifying to, inter alia, Opposer’s continuous use
of his mark in commerce since April 2008, and introducing evidentiary
Exhibits;10

- Invoices and purchases orders from Opposer’s first sale of its goods in 2008;11

- Representative samples of invoices, purchase orders and other documents;
evidencing sales of Opposer’s products for every year since 2010;12 and

- Samples of advertising for Opposer’s products.13

With her response to the motion for summary judgment, Applicant submitted
pages from the websites of retailers (Exhibit A) in order to demonstrate the lack of
availability of Opposer’s products.14 In addition, Applicant provided screenshots of

10 10 TTABVUE 16-21.
11 Id. at 34-37.
12 Id. at 38-104.
13 Id. at 105-11.
14 12 TTABVUE 9-13.
Opposition No. 91224275

8
the results of Internet searches (Exhibit B) for “bless you tissue” and for the definition
of the phrase “bless you.”15
With his reply brief, Opposer submitted additional evidence supporting his
likelihood of confusion claim. The evidence consists of a supplemental declaration;
two examples of facial tissue manufacturers who also manufacture disposable wipes;
and Opposer’s emails offering his product to retail stores.16
Evidentiary Issues
Prior to considering the merits of the motion for summary judgment, we must
consider the following evidentiary issues.
In his reply brief, Opposer argues that Applicant’s evidence is not legally sufficient
and that the evidence is unsworn and not authenticated. 12 TTABVUE 2.
For purposes of summary judgment, a party may make of record, inter alia,
printed publications available to the general public if the publication is competent
evidence and relevant to an issue. See Trademark Rules 2.122(e) and 2.127(e)(2); see
also Raccioppi v. Apogee Inc., 47 USPQ 1368, 1369-70 (TTAB 1998) (at summary
judgment, a party may rely on documents admissible under 37 CFR § 2.122(e)). The
publications need not be submitted under a notice of reliance in order to make them
of record; rather, the material may be submitted as attachments or exhibits to a
party’s brief or affidavit in support of the motion. See TBMP § 528.05(a)(1) (Jan.
2017). Pursuant to the Board’s ruling in Safer, Inc. v. OMS Investments, Inc., 94

15 Id. at 15-19.
16 13 TTABVUE 13-34.
Opposition No. 91224275

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USPQ2d 1031 (TTAB 2010), documents obtained from the Internet are self-
authenticating and may be admitted into evidence if they identify the date of
publication or the date accessed and printed and their source (URL). See TBMP
§ 704.08(b) (Jan. 2017).17
In Exhibit A of Applicant’s response, each web page includes the date accessed
and printed from the Internet and the Internet address (URL), except for the fourth
web page, a page from the website of retailer H.E.B. See 12 TTABVUE 12. In view
thereof, Opposer’s objection based on lack of authentication is sustained with respect
to the H.E.B. web page.18 See Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1550
(TTAB 2012) (web pages inadmissible for lack of URL and date accessed). However,
Opposer’s objection is overruled with respect to the remaining web pages in Exhibit
A.
With respect to Applicant’s Exhibit B, we note that only the second and fourth
web pages in the exhibit include both the date of access and the full URL. Accordingly,
Opposer’s objection is overruled with respect to these documents. However, because
the first and third documents, consisting of Internet searches for “bless you tissues,”

17 Effective January 14, 2017, the Board amended Trademark Rule 2.122(e), 37 CFR 2.122(e),
to add subsection (2), to codify the Board’s decision in Safer regarding Internet evidence. See
Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 81 Fed. Reg. 69950,
69952 (October 7, 2016).
18 12 TTABVUE 12.
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do not include the full URL, the documents are not self-authenticating.19 Accordingly,
Opposer’s objection is sustained with respect pages 1 and 3 of Exhibit B.20
We also note that Opposer’s evidence submitted with his reply brief is evidence
supporting the motion for summary judgment that should have been submitted in
connection with the motion. The submission of evidence with a reply brief which
should have been filed with the brief on the motion is improper and will not be
considered. See Kellogg Co. v. Pack’Em Enters. Inc., 14 USPQ2d 1545, 1549 n.9 (TTAB
1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991) (evidence supporting a
motion for summary judgment must be submitted with the motion); Johnston
Pump/Gen. Valve Inc. v. Chromalloy Am. Corp., 13 USPQ2d 1719, 1720 n.3 (TTAB
1989) (“The presentation of one’s arguments and authority should be presented
thoroughly in the motion or the opposition brief thereto.”); see also Seay v. Tenn.
Valley Auth., 339 F.3d 454, 481 (6th Cir. 2003) (when new submissions or arguments
are included in a reply brief on summary judgment, a nonmovant’s ability to respond
to the new evidence has been vitiated).

19 12 TTABVUE 16 and 18.
20 We also note that documents consisting solely of the results of an Internet search, such as
those in the first three documents in Exhibit B, generally have little probative value because
they do not include the context in which the mark is used. In this case, the pictures resulting
from Applicant’s searches in documents 1 and 3 do not include evidence that the products are
available for sale to the general public. In re Tea and Sympathy, Inc., 88 USPQ2d 1062, 1064
n.3 (TTAB 2008) (finding truncated Google search results entitled to little probative weight
without additional evidence of how the searched term is used).
Opposition No. 91224275

11
Standing
In every inter partes proceeding before the Board, a plaintiff must prove its
standing at trial or at summary judgment. Ritchie v. Simpson, 171 F.3d. 1092, 50
USPQ2d 1023, 1025-26 (Fed. Cir. 1999); see also Sinclair Oil Corp. v. Kendrick, 85
USPQ2d 1032, 1037 (TTAB 2007). Thus, we consider next whether Opposer has
established his standing to maintain the proceeding.
Here, Opposer has submitted testimony and documentary evidence of his common
law use of the mark BLESSUE in connection with facial tissues. In addition, Opposer
has provided a copy of the Office Action suspending his application for the mark
BLESSUE pending the disposition of Applicant’s involved application. Thus, there is
no genuine dispute that Opposer has established his standing to bring this opposition
proceeding. See Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009)
(standing established by showing of common law rights); Weatherford/Lamb Inc. v.
C&J Energy Servs. Inc., 96 USPQ2d 1834, 1837 (TTAB 2010) (Office action
suspending plaintiff’s pending application pending possible refusal based on alleged
likelihood of confusion with defendant’s registration made of record).
Summary Judgment
We turn next to the merits of Opposer’s motion for summary judgment. Summary
judgment is an appropriate method of disposing of cases in which there are no
genuine disputes as to any material facts and the moving party is entitled to
judgment as a matter of law. Fed. R. Civ. P. 56(a). In reviewing a motion for summary
judgment, the evidentiary record and all justifiable inferences to be drawn from the
Opposition No. 91224275

12
undisputed facts must be viewed in the light most favorable to the non-moving party.
See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029-30
(Fed. Cir. 1993); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d
1542, 1546 (Fed. Cir. 1992). The Board may not resolve disputes of material fact; it
may only ascertain whether a genuine dispute regarding a material fact exists. See
Lloyd’s Food Prods., 25 USPQ2d at 2029; Old Tyme Foods, 22 USPQ2d at 1544.
A party moving for summary judgment has the burden of demonstrating that a
particular fact cannot be disputed by citing to particular parts of materials in the
record, including affidavits or declarations, admissions or interrogatory answers; or
showing that the cited materials do not establish the absence or presence of a genuine
dispute, or that the adverse party cannot produce admissible evidence to support the
fact. Fed. R. Civ. P. 56(c)(1). See generally Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986).
Here, for Opposer to prevail on summary judgment, there must be a
demonstration that there are no genuine disputes of material fact as to Opposer’s
claim of likelihood of confusion. See Hornblower & Weeks, Inc. v. Hornblower & Weeks,
Inc., 60 USPQ2d 1733, 1735 (TTAB 2001). Applicant as the nonmoving party may not
rest on mere allegations, but must designate specific portions of the record or produce
additional evidence showing the existence of a genuine dispute of material fact for
trial. See Venture Out Props. LLC v. Wynn Resort Holdings LLC, 81 USPQ2d 1887,
1890 (TTAB 2007); see also Fed. R. Civ. P. 56(c)(1).
Opposition No. 91224275

13
In support of his claim that he is entitled to judgment as a matter of law, Opposer
initially argues that he has clearly established his priority based on his documentary
evidence of continuous use of his mark in commerce since 2008, which is long prior to
Applicant’s constructive use date of April 15, 2015.21
In response, Applicant argues that she has priority as the “prior constructive
nationwide user” of her mark. 10 TTABVUE 11. Applicant contends that Opposer’s
evidence of sales of products bearing his mark is merely evidence of “token sales” and
is not sufficient to constitute ongoing use. In addition, to the extent Opposer has use,
Applicant contends that the evidence only represents direct sales to commercial and
health care customers; thus, there is no evidence that Opposer sells his goods through
retail stores.
With respect to the similarity of the marks, Opposer argues that the marks are
very similar because they begin and end with the same sound with the exception of
the “z” at the end of Applicant’s mark, and because both marks have the same
connotation and commercial impression. Opposer further contends that confusion is
likely because he is unaware of any third-parties who use any variation of “BLESS
YOU” on facial tissue or disposable wipes for the nose or face, or on related goods.

21 Opposer also argues that he has prior rights by virtue of his ownership of a cancelled
registration (No. 3486263) which was “inadvertently cancelled when Opposer inadvertently
failed to file a Statement of Use.” 10 TTABVUE 9. Opposer is incorrect. The presumptions of
Section 7(b) of the Trademark Act are not available to a registration that has been cancelled.
See Contour Chair-Lounge Co. v. Englander Co., 324 F.2d 186, 139 USPQ 285, 286 (CCPA
1963) (“As long as a registration relied on by an opposer remains uncancelled, we treat it as
valid, entitled to the section 7(b) presumptions, and take it at face value.”). But cancellation
“destroys the Section [7(b)] presumptions and makes the question of registrability ‘a new ball
game.’ ” In re Hunter Publ’g Co., 204 USPQ 957, 963 (TTAB 1979). Thus, Opposer’s priority must
be based on his evidence of common-law use.
Opposition No. 91224275

14
Applicant contends, however, that her mark “is substantially different from
Opposer’s mark.” 12 TTABVUE 4. In addition, based on the definition of the phrase
“bless you,” Applicant argues that Opposer’s mark BLESSUE is merely descriptive of
facial tissues and, at most, entitled to only a narrow scope of protection.22
With respect to the relatedness of the goods of the parties, Opposer argues that
the goods associated with the parties’ marks are “highly similar” because both marks
are used in connection with goods “for use to clean the nose or face, presumably after
a person sneezes,” 10 TTABVUE 11; that we must presume the channels of trade and
classes of consumers are the same because there are no limitations in either party’s
descriptions of their goods; and that confusion is more likely because facial tissues
and disposable wipes are more of an impulse buy than one requiring sophistication.
Applicant argues that because the goods used in connection with her mark are
disposable wipes and not facial tissues, the goods are “very different” from Opposer’s
goods. 12 TTABVUE 2.
In our consideration of Opposer’s motion for summary judgment, we note initially
that Opposer does not argue that no genuine disputes exist with respect to the
relevant du Pont factors. Instead, Opposer appears to contend that “there is no
genuine issue of material fact on the issue of likelihood of confusion” as a result of an
overall analysis of the relevant factors. 10 TTABVUE 13.23 However, pursuant to Fed.

22 Applicant also argues that Opposer’s mark is weak based on the evidence of third-party
use. However, inasmuch as we have sustained Opposer’s objection to Applicant’s Internet
searches for third-party use in Exhibit B, we have not considered this argument.
23 The 2010 amendments to Fed. R. Civ. P. 56 changed the terminology in the summary
judgment standard from genuine “issues” to genuine “disputes” to better reflect the focus of
Opposition No. 91224275

15
R. Civ. P. 56(a), Opposer is entitled to summary judgment only if he shows that “there
is no genuine dispute as to any material fact.” Thus, consideration of likelihood of
confusion in the context of summary judgment involves an analysis of all of the
undisputed facts in evidence that are relevant to the thirteen evidentiary factors set
forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). Any of the du Pont factors “may from case to case play a dominant role.”
Id. Accordingly, we look to whether there are genuine disputes with respect to any of
these du Pont factors which would be material to a decision on the merits.
Keeping in mind the foregoing, we first consider the du Pont factor concerning the
relatedness of the parties’ goods. Here, Opposer merely argues that, based on
Applicant’s identification of goods, the parties’ goods are “highly similar” because
both products are used to clean the nose or face.24 However, Opposer has provided no
evidence that would demonstrate that there is no genuine dispute that consumers are
likely to believe that facial tissues would be likely to emanate from the same source
as disposable wipes impregnated with cleansing chemicals or compounds. Thus,
Opposer has failed to demonstrate that no genuine dispute exists with respect to the
relatedness of the parties goods. See, e.g., H.D. Lee Co. v. Maidenform, 87 USPQ2d
1715, 1723 (TTAB 2008) (the Board will not take judicial notice that items of

a summary judgment determination. See Fed. R. Civ. P. 56, Fed. R. Civ. P. 56(a) Advisory
Committee’s notes (2010 amendment).
24 In his analysis of the channels of trade, Opposer states, without support, that the parties’
products “are legally identical.” 10 TTABVUE 12. However, we cannot conclude, based solely
on the identifications of goods, that the parties’ goods are legally identical or even overlap.
See Olde Tyme Foods Inc., 22 USPQ2d at 1546 (impermissible inferences in favor of movant).
Opposition No. 91224275

16
outerwear and undergarments are related items for purposes of determining whether
parties’ goods are related).
Because the relatedness of the parties’ goods is clearly a material fact that would
affect the decision on the issue of likelihood of confusion, we find that Opposer has
failed to carry his initial burden on summary judgment of demonstrating that no
genuine disputes of material fact exist with respect to the issue of likelihood of
confusion. See, e.g., Gasser Chair Co. v. Infanti Chair Mfg. Corp., 60 F.3d 770, 34
USPQ2d 1822, 1824 (Fed. Cir. 1995) (in addition to proving elements of laches by
preponderance of the evidence, moving party must also establish no genuine issue of
material fact as to those elements).25
Decision
Based on the record herein and the applicable law, we find that, at a minimum,
genuine disputes of material fact exist with respect to Opposer’s likelihood of
confusion claim. Accordingly, Opposer’s motion for summary judgment on the issue
of likelihood of confusion is DENIED.
Proceedings are hereby resumed. Discovery is closed. Trial dates are reset as
follows:
Plaintiff's 30-day Trial Period Ends 5/2/2018
Defendant's Pretrial Disclosures 5/17/2018

25 The fact that we have identified a particular genuine dispute as to a material fact should
not be construed as a finding that these are necessarily the only disputes which remain for
trial. In addition, the parties should note that, absent an agreement between the parties,
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 (TTAB 1993).
Opposition No. 91224275

17
Defendant's 30-day Trial Period Ends 7/1/2018
Plaintiff's Rebuttal Disclosures 7/16/2018
Plaintiff's 15-day Rebuttal Period Ends 8/15/2018

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.
Accelerated Case Resolution
We note that the legal issues presented in this proceeding appear to be limited
and that the parties are well-acquainted with the relevant facts. Accordingly, the
parties may wish to stipulate to resolution of this proceeding by means of the Board’s
accelerated case resolution (“ACR”) procedure, on summary judgment briefs and
incorporating the current record pursuant to an agreement to proceed under ACR
with respect to Opposer’s likelihood of confusion and fraud claims. See, e.g., Freeman
v. National Association of Realtors, 64 USPQ2d 1700 (TTAB 2002) (parties agreed
that evidence and arguments submitted with Opposer’s motion for summary
judgment and Applicant’s response could be treated as the final record and briefs);
see also TBMP § 528.05(a)(2) (Jan. 2017) and authorities cited therein. In the event
the parties agree to ACR using summary judgment briefs and incorporating the
current evidence, including any supplementation of evidence they may agree would
be appropriate, they will need to stipulate that the Board may determine any genuine
Opposition No. 91224275

18
disputes of material fact the Board may find to exist.26 See TBMP § 702.04 (Jan. 2017)
for more information.
The parties are therefore encouraged to jointly contact the Board’s interlocutory
attorney responsible for this proceeding by telephone to discuss the possibility of
ACR, any necessary stipulations, and an agreed schedule for proceeding under ACR.
If the parties determine not to proceed via ACR this proceeding will continue on
the schedule as set forth above.

26 However, absent such an agreement the parties may stipulate that any or all of the
summary judgment evidence be treated as properly of record for purposes of final decision.
See, e.g., Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 n.2 (TTAB 1998).