Noah’s Inc.v.Noah Corporation

Trademark Trial and Appeal Board

Dec 1, 2016

No. 91223629 (T.T.A.B. Dec. 1, 2016)

jk Mailed: December 1, 2016

Opposition No. 91223629
Noah’s Inc.
v.
Noah Corporation

Before Mermelstein, Gorowitz and Masiello,
Administrative Trademark Judges.

By the Board:

On April 21, 2014, Noah Corporation (“Applicant”) filed application Serial No.
86258328 to register on the Principal Register the mark NOAH’S (standard
characters) for:
providing specialized facilities for business meetings, business receptions, and
networking events; providing facilities for trade exhibitions, in International
Class 35, asserting a date of first use anywhere of September 25, 2003 and date
of first use in commerce of October 28, 2008; and

providing general purpose facilities for fairs and exhibitions; rental of banquet
and social function facilities for special occasions, namely, weddings, wedding
receptions, rehearsal dinners, bar mitzvahs, bat mitzvahs, birthday parties,
social receptions and events, anniversary parties, fundraising events, business
receptions, political events and rallies, quinceañeras, wakes, memorial services,
funeral services, trade shows, bachelor parties, bachelorette parties, fashion
shows, networking events, training seminars conventions, conferences, and social
meetings, in International Class 43, asserting a date of first use anywhere and
date of first use in commerce of September 25, 2003.

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. 91223629

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Noah’s Inc. (“Opposer”) filed a notice of opposition on the ground of likelihood of
confusion pursuant to Trademark Act § 2(d), alleging:
1) ownership of Registration No. 1961874, registered March 12, 1996, from an
application filed March 22, 1995, for for “restaurant and bar
services” in International Class 42, with a date of first use anywhere and date
of first use in commerce of November 1, 1957;1
2) common law use, since 1957, of its registered mark, as well as NOAH’S, for
“restaurant, bar, banquet and special event services;”2 and
3) ownership of application Serial No. 86384433, filed September 3, 2014, to
register NOAH’S (standard characters) for:
providing facilities for business meetings, business receptions and
networking events; providing rental of banquet and social function
facilities for special occasions, namely, weddings, wedding receptions,
rehearsal dinners, birthday parties, social receptions and events,
anniversary parties, business receptions, political events and rallies,
bachelor parties, bachelorette parties, networking events, sales
seminars, and social meetings, in International Class 43, asserting a
date of first use anywhere and date of first use in commerce of November
1, 1957.3

1 1 TTABVUE 5. With its pleading, Opposer made of record a current printout of information
from the Trademark Status and Document Retrieval (TSDR) system showing the current
status and title of the registration. 1 TTABVUE 11.

The classification of “restaurant and bar services” changed from Class 42 to Class 43,
effective January 1, 2002, upon implementation of revisions to the Nice Agreement
Concerning the International Classification of Goods and Services for the Purposes of the
Registration of Marks. The classification of goods and services is a purely administrative
matter within the sole discretion of the USPTO. In re Faucher Indus. Inc., 107 USPQ2d 1355,
1357 (TTAB 2013). It has no effect on our determination.

2 1 TTABVUE 5.
3 1 TTABVUE 5. Further examination of Opposer’s application has been suspended pending
the resolution of this proceeding.
Opposition No. 91223629

3

In its answer, Applicant denied each of the salient allegations in the notice of
opposition.
Opposer filed a motion for summary judgment pursuant to Fed. R. Civ. P. 56(a).
The motion is fully briefed.4
Preliminary matter - unpleaded registrations
In its motion, Opposer references Registration Nos. 2068328 and 2092446.
Opposer did not plead these registrations in the notice of opposition, and thus cannot
rely on them. Notwithstanding that Applicant did not object on the basis that these
registrations are not pleaded, we have given them no consideration in adjudicating
the summary judgment motion.5
A party may not rely on an unpleaded registration. Drive Trademark Holdings
LP v. Inofin, 83 USPQ2d 1433, 1437 (TTAB 2007) (unpleaded registrations asserted
for first time in opposer’s cross-motion for summary judgment and objected to by
applicant not considered). Cf. Harry Winston, Inc. v. Bruce Winston Gem Corp., 111
USPQ2d 1419, 1424 n.14 (TTAB 2014) (at trial, opposer may not rely on unpleaded
registrations; opposer did not assert that the pleadings be amended); Wet Seal Inc. v.

4 Opposer and Applicant filed pretrial disclosures pursuant to the trial schedule in the
institution order. Written disclosures should not be filed with the Board except in limited
circumstances. Trademark Rule 2.120(j)(8); TBMP § 704.09 (2016). Additionally, the better
practice would have been for the parties to treat proceedings as suspended upon the filing of
the motion for summary judgment.

5 Inasmuch as the summary judgment motion does not dispose of this proceeding, herein
below we allow Opposer an opportunity to amend its notice of opposition to plead the
registrations.
Opposition No. 91223629

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FD Management Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) (at trial, applicant not
given fair notice of opposer’s reliance on unpleaded registration; no consideration
given to such registration).
Preliminary matter – confidential designation
Applicant omitted from its redacted brief6 materials that cannot reasonably be
considered confidential, including the declaration of Eric Jeppsen, and all exhibits
thereto, which include portions of the application record for Serial No. 86258328 and
86384433, a copy of Registration No. 3442556, and publicly available articles and
website screenshots.
When filing submissions, parties should avoid excessive designation of
information as confidential and limit this to only materials that are truly confidential.
TBMP § 412.01(c) (2016). Improper designations create difficulties for the Board in
writing decisions. Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1874 (TTAB
2011). The Board refers to truly confidential parts of the record generally as needed
to explain its analysis. Swiss Watch Int’l Inc. v. Fed’n of the Swiss Watch Indus., 101
USPQ2d 1731, 1736 n.12 (TTAB 2012). However, the Board may treat as not
confidential any material that cannot reasonably be considered confidential,
notwithstanding the filing party’s designation. Edwards Lifesciences Corp. v.
VigiLanz Corp., 94 USPQ2d 1399, 1402-03 (TTAB 2010).

6 16 TTABVUE.
Opposition No. 91223629

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Applicant is allowed until fifteen days from the mailing date of this order to file
a public copy of its brief with only the truly confidential portions properly redacted,
failing which the Board will treat the confidential brief as part of the public record.7

Analysis
Summary judgment is appropriate where the movant demonstrates 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 true or
is genuinely disputed must support its assertion by either: 1) citing to 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 factual dispute is genuine if, on
the evidence of record, a reasonable fact finder could resolve the matter in favor of
the non-moving party. Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d
847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc.,
961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). The party seeking judgment
in its favor carries the burden of proof. Celotex Corp. v. Catrett, 477 U.S. 317, 323-24
(1986).

7 Inasmuch as this proceeding will go to trial after the Board’s forthcoming new rules of
practice become effective, Applicant should note that Trademark Rule 2.116(g) has been
amended to state that the Board may treat as not confidential material which cannot
reasonably be considered confidential. See Notice of Changes herein below.
Opposition No. 91223629

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Evidence on summary judgment must be viewed in a light most favorable to the
non-movant, and all justifiable inferences are to be drawn in the non-movant’s favor.
Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir.
1993); Opryland USA, 23 USPQ2d at 1472. The Board may not resolve genuine
disputes as to material facts; it may only ascertain whether genuine disputes as to
material facts exist. Lloyd’s Food Prods., 25 USPQ2d at 2029; Olde Tyme Foods, 22
USPQ2d at 1544. See also TBMP § 528.01 (2016), and cases cited therein.
To prevail on summary judgment, Opposer must demonstrate that there is no
genuine dispute of material fact that 1) it has standing to bring this proceeding; 2) it
has registered or previously used a mark; and 3) contemporaneous use of the parties’
respective marks on or in connection with their respective goods or services would be
likely to cause confusion, mistake or to deceive consumers. Hornblower & Weeks, Inc.
v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB 2001).
Standing
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. 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); Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Lipton Indus., Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). To establish
standing, a plaintiff must show that it has a “real interest” in the outcome of the
proceeding; that is, that it has a direct and personal stake in the outcome of the
Opposition No. 91223629

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proceeding. Ritchie v. Simpson, 50 USPQ2d at 1025; Jewelers Vigilance Committee,
Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987).
Opposer made of record the Office action suspension notice which issued in its
application Serial No. 86384433, wherein the examining attorney stated that
registration may be refused under Trademark Act § 2(d) because of a likelihood of
confusion with Applicant’s involved application.8 On this record, Opposer has
established its standing to bring this proceeding. Empresa Cubana del Tabaco v.
General Cigar Co., supra. See also, Weatherford/Lamb Inc. v. C&J Energy Services
Inc., 96 USPQ2d 1834, 1837 (TTAB 2010).
We note Applicant’s assertion that it does not dispute Opposer’s standing “with
the exception that … Opposer possesses standing only to protect its ’433 Application,
and not any other registered mark,”9 and Applicant’s elaborating argument wherein
it conflates the issues of standing and priority.10 Regardless of which party has
priority, the potential refusal of Opposer’s pending application contingent upon
registration of the opposed application clearly establishes that Opposer has a direct
and personal stake in this proceeding beyond that of a mere intermeddler. Lipton
Indus., Inc. v. Ralston Purina Co., supra.

8 6 TTABVUE 20, Michael Gilchrist decl. ¶ 6; 6 TTABVUE 46. Moreover, as noted above,
Opposer made of record with the notice of opposition a current TSDR copy of pleaded
Registration No. 1961874. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1844 (Fed. Cir. 2000); Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1254 (TTAB
2012).

9 15 TTABVUE 15.
10 15 TTABVUE 16-17.
Opposition No. 91223629

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Inasmuch as Opposer has met its burden of demonstrating that there is no
genuine dispute with respect to its standing, Opposer’s motion for summary judgment
is granted with respect to standing.
Priority
Priority may arise from “prior trademark or service mark use, prior use as a trade
name, prior use analogous to trademark or service mark use, or any other use
sufficient to establish proprietary rights.” Herbko Int’l, Inc. v. Kappa Books, Inc., 308
F.3d1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002), citing Otto Roth & Co. v. Universal
Foods Corp., 640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA 1981). Moreover, in the
absence of a counterclaim or petition to cancel it, ownership of a registration
eliminates the requirement for priority. King Candy, Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Opposer has proven its ownership
of Reg. No. 1961874; therefore, priority is not in issue with respect to the mark and
services identified in that registration. To the extent that Opposer wishes to rely
upon use of any other mark, or on use of a mark in connection with services other
than those listed in the registration, Opposer must demonstrate that there is no
genuine dispute that it acquired rights before April 21, 2014, the filing date of the
involved application. In determining if Opposer has met its burden, we look at the
evidence and ascertain whether Applicant has come forward with any evidence that
presents material facts which would disprove prior use, and thereby raises a genuine
dispute that precludes summary judgment on this issue.
Opposition No. 91223629

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Under the declaration of Opposer’s manager, also the son of its founder, Opposer
states, inter alia, that:
• Noah Lacona founded Opposer’s Noah’s Ark restaurant in Iowa in the late
1940’s;11

• The family has continuously operated its Noah’s Ark restaurant since at least
the late 1940’s;12

• In the late 1950’s, two banquet rooms were added to the restaurant, and have
been used continuously since the late 1950’s to host a variety of events;13

• The restaurant, banquet rooms and events hosting services have been
continuously promoted using NOAH’S and NOAH’S ARK marks since the late
1950’s;14

This declaration also introduces the following evidence of use of Opposer’s pleaded
common law marks – NOAH’S ARK and NOAH’S – for restaurant, bar, banquet and
special event services:
• A photograph of a NOAH’S sign outside Opposer’s banquet rooms, about which
the declarant states, “That same sign has been there for about ten years;”15

• An undated flier which prominently shows NOAH’S ARK, and states “Welcome
to Noah’s Ark Ristorante and Fireside Lounge” and “Noah’s Ark Ristorante has
Provided a Pleasant Atmosphere and exceptional Food to our Customers Since
1946. Thank you for choosing Noah’s.” It also states “Thank you for considering
us for your banquet and party plans,” and “guest parking for the banquet room

11 6 TTABVUE 93; decl. of James Lacona ¶ 4. Applicant’s objection (15 TTABVUE 9) to the
declaration on the basis that the declarant has worked for Opposer for 30 years and thus has
limited personal knowledge of the business dating to the 1950’s, is overruled. Given that Mr.
Lacona states in his declaration that the facts stated are within his personal knowledge, and
given his introduction of various exhibits and familiarity with them, as well as his position
as a member of Opposer’s founding family and knowledge of the business, we are satisfied
that he is competent to attest to the matters in his declaration.
12 6 TTABVUE 93; Lacona decl. ¶ 5.
13 6 TTABVUE 93; Lacona decl. ¶ 6-7.
14 6 TTABVUE 94; Lacona decl. ¶ 8.
15 6 TTABVUE 94, 104; Lacona decl. ¶ 8, Exh. F.
Opposition No. 91223629

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is available on the upper level,” and it describes Opposer’s restaurant, banquet
and party room facilities, provides instructions for booking a party or banquet,
and lists menu items;16

• An undated banquet menu which prominently shows NOAH’S ARK and
NOAH’S ARK RISTORANTE, and states “Thank you for considering us for
your banquet and event plans. We have two rooms at your disposal.” It also
provides room reservation specifics, describes the restaurant, banquet and
party room services, and lists “banquet options;”17

• An undated restaurant menu used for a banquet room customer, and a special
menu used for a particular lunch banquet, which show the wording “Molte
Grazie for Choosing Noah’s,” “Ask your server about Noah’s gift certificates”
and “Check out our Banquet and Party Rooms for Your Special Event at
www.noahsdesmoines.com.”18

Under the declaration of its counsel, Opposer submits the following stories
printed in the Des Moines Register, retrieved from www.newspapers.com:
• A June 7, 1959 announcement entitled “2 Banquet Rooms For Noah’s Ark”
promoting the opening of two rooms of Opposer’s restaurant “designed for
parties, banquets, or dinner meetings” and describing the rooms;19

• A November 1, 1959 story describing a Kiwanis Ladies’ Club meeting held “at
Noah’s Ark party room;”20

• A January 3, 1960 story describing a Kiwanis Ladies’ Club meeting held “at
Noah’s Ark Restaurant;”21

• A June 16, 1963 story describing a Polk County Osteopathic Office Assistants
meeting held “at Noah’s Ark;”22

16 6 TTABVUE 94, 96-97; Lacona decl. ¶ 9, Exh. A.
17 6 TTABVUE 94, 98-99; Lacona decl. ¶ 10, Exh. B.
18 6 TTABVUE 94-95, 100-101; Lacona decl. ¶ 11-12, Exh. C, D.
19 6 TTABVUE 22; decl. of Michael C. Gilchrist ¶ 12, Exh. 9.
20 6 TTABVUE 22-23; Gilchrist decl. ¶ 13, Exh. 10.
21 6 TTABVUE 23; Gilchrist decl. ¶ 14, Exh. 11.
22 6 TTABVUE 23-24; Gilchrist decl. ¶ 15, Exh. 12.
Opposition No. 91223629

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• An October 3, 1976 story describing a Hadassah group political meeting held
“at Noah’s Ark restaurant;”23

• A May 13, 1979 story describing a meeting of the American Business Women’s
Association held at “Noah’s Ark Restaurant;”24

• An April 21, 1983 story describing a meeting of the American Association of
University Women held at “Noah’s Ark;”25

• An October 14, 1987 story describing a meeting of the Metro Women’s Network
held at “Noah’s Ark Restaurant;”26

• A May 18, 1988 story describing a meeting of the Metro Women’s Network held
at “Noah’s Ark Restaurant;”27

• A November 14, 1990 story describing a meeting of the American Business
Women’s Association held at “Noah’s Ark Restaurant;”28

• A March 13, 2000 story describing a Metro Women’s Network meeting held “at
Noah’s Ark Restaurant;”29

• An October 10, 1963 story describing a wedding rehearsal dinner held “at
Noah’s Ark Restaurant.”30

Also under the declaration of counsel, Opposer submits the following Des Moines
Register advertisements from www.newspapers.com:
• An April 4, 2001 advertisement showing use of NOAH’S ARK, prominently
stating “[A]n Iowa Dining Tradition Since 1946 Iowa’s Oldest Family Owned
Restaurant,” and promoting food services and banquet and party rooms;31

23 6 TTABVUE 24; Gilchrist decl. ¶ 16, Exh. 13.
24 6 TTABVUE 24-25; Gilchrist decl. ¶ 17, Exh. 14.
25 6 TTABVUE 25; Gilchrist decl. ¶18, Exh. 15.
26 6 TTABVUE 25; Gilchrist decl. ¶ 19, Exh. 16.
27 6 TTABVUE 25-26; Gilchrist decl. ¶ 20, Exh. 17.
28 6 TTABVUE 26; Gilchrist decl. ¶ 21, Exh. 18.
29 6 TTABVUE 28; Gilchrist decl. ¶ 25, Exh. 22.
30 6 TTABVUE 29; Gilchrist decl. ¶ 26, Exh. 23.
31 6 TTABVUE 27, 89; Gilchrist decl. ¶ 23, Exh. 20.
Opposition No. 91223629

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• A January 24, 2007 advertisement showing use of NOAH’S ARK and NOAH’S
ARK RISTORANTE, and promoting the restaurant’s dinner menu and
reception rooms for dinner parties and rehearsal dinners;32

• A June 10, 1996 eight-page advertising supplement which has the title lines
“Noah’s Ark” and “Noah’s Restaurant is in the people business,” describes the
history and 50th anniversary of Noah’s Ark Restaurant, provides its hours and
notes its 1957 expansion of a “party room on upper level.”33

This evidence, considered as a whole, is probative of the factual issue of Opposer’s
first use of its asserted common law marks NOAH’S and NOAH’S ARK. The June 7,
1959 announcement, April 4, 2001 advertisement, and sign outside of Opposer’s
banquet rooms show use of the marks NOAH’S ARK and NOAH’S as of dates prior to
April 21, 2014, Applicant’s filing date upon which it may rely without further proof
of actual use. Furthermore, the newspaper stories and announcements — which span
several decades and show consistent usage of NOAH’S and NOAH’S ARK to refer to
Opposer’s restaurant establishment and its banquet and party room facilities — are,
when considered together with the advertisements and sign, sufficient to corroborate
the declaration of Opposer’s use of its marks. Stuart Spector Designs, Ltd. v. Fender
Musical Instruments Corp., 94 USPQ2d 1549 (TTAB 2009) (articles and
advertisements considered for whatever they may show on their face, but not for the
truth of the matters asserted); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d

32 6 TTABVUE 27-28, 90; Gilchrist decl. ¶ 24, Exh. 21.
33 6 TTABVUE 26, 82-88; Gilchrist decl. ¶ 22, Exh. 19. Addressing the June 10, 1996
advertising supplement, Applicant states that it “does not dispute that ‘Noah Lacona opened
a pizza restaurant in Des Moines, Iowa in the 1940’s,’ or that that restaurant became known
as ‘Noah’s Ark.’” 15 TTABVUE 8.
Opposition No. 91223629

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1881, 1884 n.8 (TTAB 2006) (publications only admissible for what they show on their
face).
Applicant has not come forward with evidence to contradict what the
documentary evidence shows on its face. Its argument that Opposer cannot prove
prior use of NOAH’S with uses of NOAH’S ARK, and that “the current dispute
revolves only around the use of NOAH’S”34 are inapposite inasmuch as Opposer
asserted common law rights in both marks, and can prevail upon demonstrating
likelihood of confusion with either of them. The statute does not require Opposer to
show that it uses an identical mark, only that the mark Applicant seeks to register
would cause a likelihood of confusion with Opposer’s mark.
Applicant’s argument that there is a dispute regarding whether Opposer’s
NOAH’S mark is distinctive, has acquired secondary meaning, or is merely
descriptive of “a ‘restaurant belonging to Noah,’” referring to the name of the
founder,35 is also inapposite. Applicant’s argument that Opposer’s 1996 Advertising
Supplement (Gilchrist decl. ¶ 22, Exh. 19) and sign (Lacona decl. ¶ 8, Exh. F) do not
show Opposer’s use of NOAH’S to promote “event services” fails to raise a genuine
dispute regarding a material fact going to Opposer’s priority.
On this record, Opposer has demonstrated by competent evidence that there is no
genuine dispute that it has priority of use of its asserted common law marks NOAH’S

34 15 TTABVUE 7-8, 17.
35 15 TTABVUE 19-21.
Opposition No. 91223629

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and NOAH’S ARK in connection with, at a minimum, “restaurant, bar, banquet and
special event services” prior to April 21, 2014.
Likelihood of confusion

The determination of likelihood of confusion on summary judgment is based on
an analysis of all of the probative facts that are properly in evidence that are relevant
to the thirteen factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973) (“du Pont factors”). See also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We look to whether there are
genuine disputes with respect to any of these factors which would be material to a
decision on the merits. Two key considerations are the similarities between the
marks, and the similarities between the goods and services. In re Chatam Int’l Inc.,
380 F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Upon thorough consideration of the arguments and evidence of record, Opposer
has not met its burden of demonstrating that there is no genuine dispute of material
fact that a likelihood of confusion exists. Issues of material fact concerning, at a
minimum, the similarity of the parties’ services, preclude summary judgment.
Applicant maintains that the nature of the parties’ services differs.36 As the evidence
shows, Opposer’s most relevant services are banquet facility services that are
associated with a restaurant on the same premises. Applicant offers the declaration
of its chief operating officer who attests that Applicant is in the leasing business and

36 15 TTABVUE 23.
Opposition No. 91223629

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leases large and multi-room venues, but that Applicant’s customers must furnish
their own caterers and bring their own premade food and beverages, that it does not
prepare any food, and that its venues have kitchens that contain only limited, non-
cooking amenities.37 We find that Applicant’s evidence is sufficient to show that there
is a genuine dispute regarding a primary du Pont factor - the relatedness of the
parties’ services.
On this record, a reasonable fact finder could resolve the issue of the relatedness
of the parties’ services in favor of Applicant. Consequently, Opposer has not carried
its burden on summary judgment with respect to the element of likelihood of
confusion.
Summary
Opposer’s motion for summary judgment is granted with respect to standing and
priority, and is denied with respect to likelihood of confusion. Accordingly, this
opposition will proceed to trial on that issue.
The evidence submitted in connection with the motion for summary judgment is
of record only for consideration of that motion. To be considered at final hearing, any
such evidence must be properly introduced in evidence during the appropriate trial
period. Drive Trademark Holdings LP v. Inofin, 83 USPQ2d at 1438 n.14; Levi
Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).
Moreover, the fact that we have identified certain issues that are in dispute should

37 15 TTABVUE 137-138; decl. of Nicholas Redd ¶ 4-14.
Opposition No. 91223629

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not be construed as a finding that these are necessarily the only issues which remain
for trial.
Schedule
Proceedings are resumed. Opposer is allowed until fifteen days from the mailing
date of this order to file an amended notice of opposition to include a pleading of
Registration Nos. 2068328 and 2092446, if it so chooses. Drive Trademark Holdings
LP v. Inofin, supra. If Opposer does not file an amended notice of opposition, it may
not rely at trial on either of the unpleaded registrations. Harry Winston, Inc. v. Bruce
Winston Gem Corp., supra.
Applicant is allowed until fifteen days from the date of service of the amended
notice of opposition to file its answer thereto.
As noted above, Applicant is allowed until fifteen days from the mailing date of
this order to file a public copy of its brief on summary judgment with only the truly
confidential portions properly redacted.
The parties are allowed until thirty days from the mailing date of this order to
serve responses, or supplemental responses, to any outstanding discovery. This
allocation of time does not constitute an order to compel discovery; it is merely a
scheduling matter to maintain order in this proceeding going forward.
Remaining trial dates are reset as follows:
Plaintiff's 30-day Trial Period Ends 2/22/2017
Defendant's Pretrial Disclosures Due38 3/9/2017
Defendant's 30-day Trial Period Ends 4/23/2017

38 If Applicant has no amendment to its pretrial disclosures served August 22, 2016, it need
not serve its pretrial disclosures again.
Opposition No. 91223629

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Plaintiff's Rebuttal Disclosures Due 5/8/2017
Plaintiff's 15-day Rebuttal Period Ends 6/7/2017

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.
NOTICE: CHANGES TO THE TRADEMARK TRIAL AND APPEAL BOARD
(“BOARD”) RULES OF PRACTICE WILL BE
EFFECTIVE JANUARY 14, 2017

The USPTO published a Notice of Final Rulemaking in the Federal Register on
October 7 2016, at 81 F.R. 69950. It sets forth several amendments to the rules that
govern inter partes (oppositions, cancellations, concurrent use) and ex parte appeal
proceedings.
For complete information, the parties are referred to:
• The Board’s home page on the uspto.gov website:
http://www.uspto.gov/trademarks-application-process/trademark-trial-and-
appeal-board-ttab
• The final rule:
http://www.uspto.gov/sites/default/files/documents/81%20FR%2069950.pdf
• A chart summarizing the affected rules and changes:
http://www.uspto.gov/sites/default/files/documents/RulesChart_01_14_17.pdf

For all proceedings, including those already in progress on January 14, 2017,
some of the changes are:
• 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 by email, unless otherwise stipulated.
Trademark Rule 2.119.
• Response periods are no longer extended by five days for service by mail.
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.
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• 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 2.101 and 2.111.