Pacific Poultry Company, Limitedv.George D. Stirling, Jr.

Trademark Trial and Appeal Board

Jun 12, 2013

No. 91204620 (T.T.A.B. Jun. 12, 2013)

Faint Mailed: June 12, 2013

Opposition No. 91204620

Pacific Poultry Company,
Limited

v.

George D. Stirling, Jr.

Before Kuhlke, Wellington and Gorowitz,
Administrative Trademark Judges.

By the Board:

George D. Stirling, Jr. (“applicant”) seeks to register
the mark SWEET G'S HULI CHICKEN MARINADE, SAUCE, GLAZE in
standard character form for “retail grocery stores” in Class
35.1
Pacific Poultry Company, Limited (“opposer”) has opposed
registration of applicant’s mark on the grounds of priority
and likelihood of confusion,2 and that applicant lacks a bona

1 Application Serial No. 85247221, filed Feb. 21, 2011 based on
Trademark Act § 1(b). A disclaimer of “HULI CHICKEN MARINADE,
SAUCE, GLAZE” is of record.
2 Opposer pleads ownership of two registrations which were
attached to the amended notice of opposition: (1) Registration
No. 958668 for the mark “HULI-HULI” in special form for “sauces
for meat and poultry” in Class 30, registered May 8, 1973. The
statement, “The term ‘Huli-Huli’ in the Hawaiian language may be
translated as ‘turn turn’,” is of record. Section 8 & 9 renewals
were filed Jan. 4, 1993 May 5, 2003, and May 8, 2013; and (2)
Registration No. 1639223 for the mark HAWAII'S FAMOUS HULI-HULI
SAUCE in typed form for, “sauces excluding cranberry and
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91204620

2
fide intent to use the subject mark in commerce “as a service
mark for retail grocery stores,” rendering the mark void ab
initio.3
On May 29, 2012, applicant filed an amended answer to
opposer’s amended notice of opposition, by which applicant
admitted that opposer owns Registration No. 958668 for the
mark and Registration No. 1639223 for the mark
HAWAII’S FAMOUS HULI-HULI SAUCE, both for sauces. Applicant
also admitted the allegation that,
[n]either applicant nor any predecessor or entity
related to applicant has any constructive or
actual right in the mark SWEET G’S HULI CHICKEN
MARINADE, SAUCE, GLAZE prior to February 21,
2011, the filing date of the 221 application.

Applicant otherwise denied the salient allegations of the
amended notice of opposition. In “further answering” the
opposition, applicant asserted that his “product,”
is intended for use not only as a marinate [sic]
but as an injectable solution to enhance the
flavor of not only poultry but other meats, …
[and] is further intended for use as a topping
for all consumable food products….
(Amended answer at ¶ 17).

applesauce” in Class 30, registered Mar. 26, 1991. A disclaimer
of "HAWAII'S FAMOUS" AND "SAUCE", and a translation statement,
“The English translation of the words ‘HULI-HULI in the mark is
‘turn, turn’ or ‘to turn repeatedly,’ are of record. Section 8 &
9 renewals were filed May 29, 1996, July 11, 2000 and Mar. 28,
2011.
3 Opposer filed its amended notice of opposition on May 17, 2012
to add the ground that applicant lacked a bona fide intent to use
the mark in commerce.
Opposition No. 91204620

3
Motion for Summary Judgment
This case now comes up for consideration of opposer’s
motion, filed December 5, 2012, for summary judgment on its
claim that applicant does not have, and never has had, a bona
fide intent to use his mark in commerce for the services
recited in the application, namely “retail grocery stores.”
Opposer requests that the Board sustain this opposition
proceeding because there is no genuine dispute of material
fact that applicant did not have a bona fide intent to use the
mark in commerce for “retail grocery stores” when the
application was filed.
In support of its motion for summary judgment, opposer
has submitted applicant’s written responses to opposer’s
discovery requests. Opposer maintains that by his discovery
responses applicant specifically states that he did not have a
bona fide intent to use his mark in commerce for the services
identified in the application when the application was filed,
that he does not presently have a bona fide intent to use his
mark for those same services, and that applicant cannot
produce any documents supporting an intention to use the mark.
Opposer further contends, that while the original application
includes a verified statement that applicant had a bona fide
intent to use his mark in commerce for “retail grocery stores”
that statement is contradicted by applicant’s discovery
Opposition No. 91204620

4
responses. To support its claims, opposer has introduced
copies of applicant’s responses to opposer’s first set of
interrogatories, first request for the production of documents
and things, and first requests for admissions. In particular,
in response to Interrogatory No. 21 asking applicant to
explain what is meant by the term “retail grocery stores” in
his application, applicant stated that,
[a]pplicant presumes the attorney that filed the
application meant that applicant would be selling
his sauces to “retail grocery stores.” Applicant
does not now nor does he plan on operating a
retail grocery store.

In response to opposer’s document Request Nos. 23 and 24
seeking documents concerning applicant’s bona fide intent to
use its mark, applicant stated, “applicant shows there are no
documents that would be responsive to these requests.” In
response to opposer’s admission Request Nos. 5-6, 13-14 and
17-18, applicant admitted that it did not have at the time of
filing his application, and does not now have, a bona fide
intention to use the mark for retail grocery store services.
In his brief in opposition, applicant’s counsel states he
has “on many occasions indicated” that applicant does not have
any intention of operating a “retail grocery store,” but does
intend to “sell his products to retail grocery stores for the
distribution of his products at retail.” Applicant contends
opposer has “misconstrued” applicant’s discovery responses,
Opposition No. 91204620

5
and that the sale of applicant’s products to retail grocery
stores is, “in fact, a ‘retail grocery store’ service.”
Further, counsel states, applicant does not now nor has he
ever had a bona fide intent to use the mark for the operation
of a retail grocery store to sell products to the general
public, but rather his intent has always been to provide a
wholesale service by providing his products for purchase to
retail grocery stores.
In reply, opposer argues that the term “retail grocery
stores” used by applicant to identify his services has a clear
meaning. Opposer also provides printouts from the U.S.
Acceptable Identification of Goods and Services Manual (ID
Manual) for retail grocery store services and wholesale
services. Further opposer argues that it is not clear
applicant would be offering a service for others by the sale
or promotion of his own goods.
Legal Standard
Summary judgment is only appropriate when there is no
genuine dispute as to any material facts and the moving party
is entitled to judgment as a matter of law. See Fed. R. Civ.
P. 56(a). The evidence must be viewed in a light favorable to
the nonmoving party, and all justifiable inferences are to be
drawn in the nonmovant’s favor. Opryland USA Inc. v. The
Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471,
Opposition No. 91204620

6
1472 (Fed. Cir. 1992). The Board may not resolve issues of
material fact; it may only ascertain whether such issues are
present. See Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987
F.2d 766, 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Olde
Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d
1542, 1544 (Fed. Cir. 1992).
When the moving party has supported its motion with
sufficient evidence which, if unopposed, indicates there is no
genuine dispute of material fact, 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).
First, we find that no genuine dispute of material fact
exists as to opposer’s standing to oppose registration of the
involved registration. Opposer has pleaded ownership of two
registrations for the marks, and HAWAII'S FAMOUS
HULI-HULI SAUCE and made the TARR printouts for these
registrations of record with its amended notice of opposition,
showing that opposer is the owner of these valid and
subsisting registrations. Also, applicant has admitted by his
answer that opposer is the owner of the registrations. Thus,
opposer’s standing has been established. See Lipton
Opposition No. 91204620

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Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982).
An applicant for registration of a mark under Trademark
Act § 1(b) must have a bona fide intent to use the applied-for
mark in commerce on or in connection with the identified goods
or services. Trademark Act § 1(b)(1). In determining whether
an applicant possesses a bona fide intent, the Board focuses
on the entirety of the circumstances, as revealed by the
evidence of record. Lane Ltd. v. Jackson International
Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994).
Opposer has proffered applicant’s discovery responses,
which opposer asserts demonstrate that applicant has not had,
and does not have, plans to operate retail grocery stores, and
applicant does not dispute this point. Instead, applicant
argues that providing his sauces to a retail grocery store is
a retail grocery store service. In applicant’s view, all of
the suppliers to a retail grocery store are engaged in retail
grocery store services, but such is not the case. By its
nature, a service must be performed primarily for the benefit
of others, and promoting the sale of one’s own goods is not a
service. See TMEP § 1301.01(a)(ii) (Apr. 2013 ver.) (“To be a
service, an activity must be primarily for the benefit of
someone other than the applicant” (i.e., for others)); see
also In re Reichhold Chemicals, Inc., 167 USPQ 376, 377 (TTAB
Opposition No. 91204620

8
1970) (finding it “well-settled” that promoting the sale and
use of one's own goods is not a registrable service). As
applicant’s potential sale of his sauces to retail grocery
stores is promoting the sale of his own goods, it is not a
registrable service, and not a grocery store service.
Opposer has established that there is no genuine dispute
of material fact that applicant lacked the bona fide intent to
use his mark in commerce for retail grocery store services
when he filed his application.
Accordingly, opposer’s motion for summary judgment is
hereby granted on the ground of lack of bona fide intent to
use the mark. Having reached this conclusion, the claim of
priority and likelihood of confusion is rendered moot, and we
need not reach it in this case.
In view thereof, the opposition is sustained and
registration to applicant is refused.
***