Nettadoz Enterprisesv.Cintron Beverage Group, LLC

Trademark Trial and Appeal Board

Mar 29, 2013

No. 91200692 (T.T.A.B. Mar. 29, 2013)

RK

Mailed: March 29, 2013

Opposition Nos. 91200692 (parent)
91200807

Nettadoz Enterprises
v.
Cintron Beverage Group, LLC

Before Quinn, Kuhlke and Mermelstein,
Administrative Trademark Judges

By the Board:

By the Board’s institution orders of July 14, 2011
(parent), and July 20, 2011 (child), discovery closed on
March 20, 2012, and March 26, 2012, respectively, and
opposer’s pretrial disclosures were due on May 4, 2012, and
May 10, 2012, respectively. On May 4, 2012, applicant filed
a motion for summary judgment on the issue of standing and
further sought consolidation of the two proceedings.
Proceedings herein were consolidated and further suspended
on May 18, 2012, pending disposition of the motion for
summary judgment.
On June 4, 2012, opposer filed a response to
applicant’s motion and further cross-moved for partial
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition Nos. 91200692 (parent) and 91200807
2
summary judgment on the issue of standing.1 Opposer
concurrently filed a motion for leave to use testimony from
another proceeding as evidence in support of its cross-
motion.2 Applicant’s motion and opposer’s cross-motion are
fully briefed.
Background
Opposer Nettadoz Enterprises filed notices of opposition
against application Serial Nos. 778079413 and 778079464 for
the mark CINTRON based on claims of fraud, and primarily
merely a surname under Section 2(e)(4) of the Trademark Act.5

1 Opposer’s response and cross-motion, including the exhibits
thereto, lack a certificate of service as required under Trademark
Rule 2.119. As applicant has responded to the motion and has not
raised any service-related objections, we have considered the
filing.

2 Again, opposer has failed to include a certificate of service
as required under Trademark Rule 2.119. To the extent that the
testimony was included as Exhibit 25 to opposer’s response and
cross-motion and applicant has not raised any objection thereto, the
motion is moot.

3 Filed August 19, 2009, for CINTRON in standard characters for
“tea-based beverages” in International Class 30 and “energy drinks,
sports drinks, fruit flavored beverages” in International Class 32.
Applicant has claimed ownership of Registration Nos. 3410949 (for
CINTRON 21) and 3600401 (for CINTRON ENERGY ENHANCER) and has
claimed acquired distinctiveness under Section 2(f).

4 Filed August 19, 2009, for CINTRON in stylized form for “tea-
based beverages” in International Class 30 and “energy drinks,
sports drinks, fruit flavored beverages” in International Class 32.
Applicant has claimed ownership of Registration Nos. 3410949 (for
CINTRON 21) and 3600401 (for CINTRON ENERGY ENHANCER) and has
claimed acquired distinctiveness under Section 2(f).

5 As originally filed, the notice of opposition in the parent
proceeding only set forth a surname claim. Opposer subsequently
amended the notice of opposition as a matter of course on August 3,
2011, to also include a claim of fraud. See Fed. R. Civ. P.
15(a)(1)(A).
Opposition Nos. 91200692 (parent) and 91200807
3
In its pleadings, opposer has alleged that it is a
Nigerian business that has used the CINTRON mark in
connection with beverage products in Nigeria, that it has
applied to register the mark in Nigeria,6 that opposer and its
“trading partners” have used the mark elsewhere in Africa,
that opposer’s “trading partners” have filed applications to
register the mark in Africa and the United States, and that
applicant was aware of these activities yet failed to mention
them to the USPTO during prosecution of applicant’s
applications.
Following discovery, applicant now seeks summary
judgment on the issue of opposer’s standing, arguing that
because opposer has admitted that “(1) it has not attempted
to register the marks at issue in the United States; (2) it
has not used the marks in the United States; and (3) it has
no intent to use the marks in the United States,” opposer
“has no real interest in this or any proceeding before the
U.S. Patent and Trademark Office, will not be damaged by the
registration of the trademarks at issue, and therefore lacks
standing to assert [these] Oppositions.” Applicant’s Motion
for Summary Judgment, pp. 1-2.
For its part, opposer contends that it has standing to
oppose because it is a competitor of applicant and will be

6 The mark has since registered in Nigeria as of November 9,
2011. Opposer’s Response and Cross-Motion (hereafter “Cross-
Motion”), Ex. 34.
Opposition Nos. 91200692 (parent) and 91200807
4
damaged to the extent that the grant of a U.S. registration
to applicant will provide applicant with more leverage to
impede applicant’s expansion “in Africa and elsewhere” and
will serve to block third parties “from entering the US
market, preventing the possibility of [opposer] entering into
a business relationship with such an entity to access the US
market indirectly in the future” and that opposer “would be
forever barred from entering the US market in the future.”
Cross-Motion, pp. 2, 4-5.
Opposer further contends that since “the instant
oppositions are not based on § 2(d)[,] ownership of competing
US rights or use of a competing US mark is not required to
establish standing under §§ 2(a), 2(b), 2(c), or 2(e) [or] on
the basis of fraud.” Id., pp. 2-3.
Discussion
A motion for summary judgment is a pretrial device
intended to save the time and expense of a full trial when
the moving party is able to demonstrate, prior to trial, that
there is no genuine dispute of material fact, and that it is
entitled to judgment as a matter of law. See Fed. R. Civ. P.
56(a); Celotex Corp. v. Catrett, 477 U.S. 317 (1986);
Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d
847, 23 USPQ2d 1471 (Fed. Cir. 1992); and Sweats Fashions
Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d
1793 (Fed. Cir. 1987). The evidence must be viewed in a
Opposition Nos. 91200692 (parent) and 91200807
5
light most favorable to the non-moving party, and all
reasonable inferences are to be drawn in the non-movant's
favor. Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d
766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA,
supra. That each party has requested entry of judgment in
its favor does not dictate a finding that there is no genuine
dispute of material fact and that entry of summary judgment
is warranted. University Book Store v. University of
Wisconsin Board of Regents, 33 USPQ2d 1385, 1389 (TTAB 1994).
Only if there are no disputes of fact to be decided will a
determination be made as to which party is entitled to
prevail under the applicable law.
Turning then to the question of standing, it is a
threshold issue that must be proven by a plaintiff in every
inter partes case so as to prevent litigation when there is
no real controversy between the parties. See Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); and
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 185 (CCPA 1982). To establish standing, the
plaintiff must demonstrate that it has a “real interest,”
i.e., a direct and personal stake, in the outcome of the
proceeding and a reasonable basis for its belief of damage.
Ritchie, 50 USPQ2d at 1025-26.
The Trademark Trial and Appeal Board is an
administrative tribunal of the United States Patent and
Opposition Nos. 91200692 (parent) and 91200807
6
Trademark Office, empowered to determine only the right to
register in the United States. See Trademark Act § 17.
Therefore, when considering the question of standing in a
Board proceeding, the plaintiff must demonstrate a “real
interest” that bears some connection to the United States.
See, e.g., Corporacion Habanos, S.A. v. Rodriguez, 99 USPQ2d
1873 (TTAB 2011)(notwithstanding strictures of Cuban embargo,
Cuban plaintiffs found to have alleged standing based on
allegations of advertising its goods in the United States and
“United States consumer deception”); and Fiat Group
Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111 (TTAB
2010)(foreign plaintiff that did not allege ownership of a
United States registration or any use of the mark in the
United States nonetheless found to have a basis for pleading
its standing based on plaintiff’s Section 66(a) application
in the United States that was provisionally refused in view
of defendant’s United States application).
In reviewing the record, opposer has explicitly
indicated “that it has not attempted to register the CINTRON
mark in the United States,”7 “that as of April 30, 2012,
Opposer has not made any use of the CINTRON mark … in the

7 Applicant’s Motion for Summary Judgment, Ex. F - Opposer’s
Response to Applicant’s First Set of Requests for Admission,
Response to Request for Admission No. 4.
Opposition Nos. 91200692 (parent) and 91200807
7
United States,”8 and that “[a]s of April 30, 2012, Opposer has
no intention of utilizing Opposer’s Marks in the U.S.”9 In
view thereof, we find that opposer does not have standing in
these proceedings.
While it is true that a proprietary right in the marks
in the United States is not a requisite to standing to raise
claims based on fraud and Section 2(e), see Corporacion
Habanos, S.A., 99 USPQ2d at 1875 (TTAB 2011), that is not to
say that a foreign plaintiff can establish standing based
solely on its foreign rights without any claim or interest
related to the U.S. market. Opposer’s attempts to explain or
establish a connection to the United States and, thus, its
“real interest,” are not persuasive and simply underscore the
speculative nature of opposer’s standing to proceed with its
claims. For instance, opposer’s allegations concerning its
“trading partners” and “business partners” who have filed
applications to register the mark in the United States do not
demonstrate a “direct and personal” interest on the part of
opposer. Indeed, there is nothing in the record to suggest
that these “partners” are anything more than independent
third parties. Even under the Board’s liberal standing

8 Applicant’s Motion for Summary Judgment, Ex. G - Opposer’s
Supplemental Discovery Responses, Supplemental Response to
Request to Admit 1.

9 Applicant’s Motion for Summary Judgment, Ex. G - Opposer’s
Supplemental Discovery Responses, Supplemental Response to
Interrogatory 11.
Opposition Nos. 91200692 (parent) and 91200807
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rules, a party cannot gain standing by asserting the rights
of unrelated third parties. See Colony Foods, Inc. v.
Sagemark, Ltd., 735 F.2d 1336, 222 USPQ 185 (Fed. Cir.
1984)(possible rights of third party does not give plaintiff
standing to cancel defendant’s registration).
Furthermore, opposer’s contentions that it may
potentially enter into a business relationship with a third
party that has applied to register identical marks in the
U.S. should the involved applications be successfully
opposed, and that such a potential relationship may be
foreclosed should the applications be allowed to register,
demonstrate neither an interest that is real nor a belief of
damage that is reasonable. To find standing under such
indirect and inchoate circumstances would permit any entity
to establish standing by simply referencing a third party
that has standing and reciting a future possibility of a
business relationship with that entity. The threshold for
standing may be low but it is not non-existent.
As to opposer’s claim that it is a competitor of
applicant in Nigeria, opposer has failed to demonstrate, let
alone articulate, how such a claim, taken as true, bestows
opposer with standing to oppose applicant’s applications for
the marks in the United States, particularly where opposer
has expressly indicated that it has no intention of using the
marks in the United States. That there may be a future
Opposition Nos. 91200692 (parent) and 91200807
9
possibility of using the marks or even applying for
registrations in the United States should the involved
applications not register is not a sufficient basis for
standing. Cf. International Telephone and Telegraph Corp. v.
International Mobile Machines Corp., 218 USPQ 1024, 1027
(TTAB 1983)(“an allegation that a party believes that an
existing registration will present a bar to the registration
of its own mark is not … sufficient to serve as a reasonable
basis for a belief that it is or will be damaged by the
continued existence of the registration where no such refusal
to register has in fact been made.”).
Finally, opposer’s claim that it has standing by virtue
of applicant’s assertion, via an affirmative defense, that
opposer is a distributor or subdistributor of applicant is
not well-taken as the claim has not been established by any
evidence. Indeed, it is not clear how opposer can claim a
direct and personal stake and/or a reasonable belief in
damage based on an allegation that opposer itself clearly
believes to be false.
Decision
In view thereof, we find that there is no genuine
dispute of material fact concerning opposer’s standing.
Accordingly, applicant’s motion for summary judgment is
hereby GRANTED and opposer’s cross-motion for partial summary
judgment is hereby DENIED.
Opposition Nos. 91200692 (parent) and 91200807
10
The oppositions herein are DISMISSED with prejudice and
the involved applications will proceed to registration in due
course.
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