Planet of the Vapes, LLCv.Kind Distribution LLC

Trademark Trial and Appeal Board

Jul 31, 2017

No. 91226437 (T.T.A.B. Jul. 31, 2017)

al Mailed: July 31, 2017

Opposition No. 91226437
Planet of the Vapes, LLC

v.
Kind Distribution LLC

Before Ritchie, Greenbaum, and Gorowitz,
Administrative Trademark Judges.

Kind Distribution LLC (“Applicant”) seeks to register the mark PLANET OF
THE VAPES1 for “Grinders for smoking herbs; Storage containers for smoking
herbs” in International Class 34 and for “Direct to consumer and online retail store
services featuring vaporizer accessories, smokeless inhalers, herbal storage
containers, vaporizable concentrate storage, vaporizers and herbal grinders” in
International Class 35.
Planet of the Vapes, LLC (“Opposer”) has opposed registration of Applicant’s
mark on the grounds of both priority and likelihood of confusion and fraud. In its
notice of opposition, Opposer alleges “priority over Applicant” based on its adoption
and common law use of the mark PLANET OF THE VAPES since “June 16, 2013”

1 Application Serial No. 86603079, filed April 20, 2015, alleging September 11, 2010 as the dates for
first use and first use in commerce for the services in International Class 35 and October 17, 2014 as
a date of first use and date of first use in commerce for the goods in International Class 34.
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 is not a precedent
of the TTAB.
Opposition No. 91226437

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for “smokeless cigarette vaporizer pipes, e-cigarettes and accessories”; “online and
In Store Retail sales of e-cigarettes, tobacco vaporizers and accessories”; and “short-
sleeved and long-sleeved t-shirts.” Notice of Opposition, para. 2. Opposer also
alleges priority based on its ownership of the following “related” design mark2:

for short-sleeved or long-sleeved t-shirts” in International Class 25 and for
“smokeless cigarette vaporizer pipes” in International Class 34.
This case now comes up for consideration of Applicant’s motion (filed April 7,
2017) for partial summary judgment in its favor on the ground that Opposer cannot
establish priority of use in the term PLANET OF THE VAPES before Applicant’s
first use date of September 11, 2010. The motion is fully briefed.
In support of its motion, Applicant alleges the following:
• that it filed its application based on use in commerce of its mark since at
least September 2010;

• that from 2010 to 2013 Applicant engaged in retail sales of grinders and
vaporizers to brick-and-mortar stores in New York using its mark;

• that on September 12, 2010 and again on July 23, 2011, it sponsored the
Bushwick Block Party, a popular music festival in Brooklyn, N.Y., and its
mark was prominently displayed on materials promoting such party;

• that during such festival Applicant engaged in retail sale services selling one
or more vaporizers in connection with Applicant’s mark;

2 U.S. Reg. 4661874, registered December 30, 2014, alleging July 1, 2013 as the date of
first use and first use in commerce.
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• that following such festival, Applicant continued to use its mark in commerce
and worked to expand its business, in particular, by working on the launch of
its full e-commerce site (it launched a “coming soon” page by January 2011)
and by becoming an authorized dealer for iolite vaporizers on December 9,
2010;

• that on November 16, 2012, it sponsored a Hurricane Sandy relief fundraiser
at Roberta’s Pizza Garden in New York where it also engaged in retail sale
services selling one or more vaporizers in connection with its mark;

• that it launched its e-commerce site to the public in October 2014;

• that it generated more than $4 million in gross retail sales through December
2016;

• that even though Opposer claims to have first used the PLANET OF THE
VAPES mark in commerce on June 16, 2013, Opposer has not produced any
proof of its priority over Applicant’s use of Applicant’s mark;

• that even if Opposer can establish a first use of the PLANET OF THE
VAPES mark in commerce as of June 2013, that is more than two-and-a-half
years after Applicant’s first use of its mark in commerce;

• that if Opposer did not use the PLANET OF THE VAPES mark in commerce
on goods that are similar to Applicant’s goods until 2015, as indicated by
Opposer’s interrogatory response, not only is that more than four years after
Applicant’s first use in commerce, but it is after Applicant launched its e-
commerce site; and

• that in either case, Opposer cannot establish priority and, therefore,
Applicant is entitled to summary judgment on the issue of priority.

As evidentiary support, Applicant has submitted the following: (1) Opposer’s
December 20, 2016 responses to Applicant’s Interrogatories wherein Opposer states,
among other things, that it first used its mark on its shirts on June 16, 2013 and
that it first used on Hex Ohm box mod (vaporizers) in January 2015, and (2) the
April 7, 2017 declaration Mr. Patrick Bissen, the principal of Applicant, wherein
Mr. Bissen states that Applicant filed its application based on use of the mark since
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at least September 2010. Attached to the declaration are invoices from suppliers of
Applicant’s products; advertisements for the Bushwick Block Party featuring
Applicant’s mark as well as the social media invitations associated with the event;
and a printout from archive.org reflecting the public e-commerce site displayed at
planetofthevapes.com (Applicant’s website) on December 18, 2014. Also attached to
the declaration are the following: (1) a printout from DomainTools.com reflecting
the Whois record for the PlanetoftheVapes.com domain name as of March 19, 2010;
(2) records concerning the registration of Applicant’s June 3, 2010 eBay account,
June 4, 2010 Twitter account, and June 3, 2010 Facebook account; and (3) a
September 2, 2010 email to the event organizer for the Bushwick Block Party
regarding Applicant’s logo.
In response to the motion, Opposer asserts the following:
• that the motion should be denied and that “Applicant’s own documents and
statements prove there is a genuine dispute of material fact as to whether
Applicant has shown priority of use…over Opposer.” (Opposer’s Response
Brief, p. 1).

• that Applicant’s own documented monthly sales reports and its admissions
prove that it did not commence any online sales until October 2014 or later;

• that Opposer’s documents prove that Opposer made retail sales starting in
June 2013 and online sales starting in November 2013;

• that Applicant admits that it never owned any brick and mortar stores, but
Opposer owns seven such stores and has been selling goods and services out
of them since June 2013 under the PLANET OF THE VAPES mark;

• that Applicant admits that its website did not become live to the public until
October 2014, but Opposer’s website became available to the public in
November 2013;
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• that until the filing of the present motion, Applicant’s discovery responses did
not claim that it made any retail sales anywhere in 2010, but only that it
“began offering goods and/or services” in 2010;

• that simultaneously with the filing of the motion, Applicant served
supplemental interrogatory responses and “surreptitiously revised its
responses to now state that at two music festivals and one charity fundraiser
its helped sponsor from 2010 to 2012, it engaged in undocumented sales of
‘one or more’ goods” (Opposer’s Brief, p.1) (emphasis in original);

• that Applicant’s own documents prove that it did not advertise any goods or
services in conjunction with the mark during its sponsorship of the three
events, “but merely advertised the ‘Planet of the Vapes’ name in a vacuum at
those events” (Id. at 2);

• and that “any alleged, undocumented, under-the-table, cash only sales of a
few expensive vaporizers were unlawful, and Applicant’s registration [sic]
intentionally deceived the Board about its allegedly lawful first use in
commerce” (Id.); and

• that “Applicant cannot use its unlawful acts and marketing to…establish any
prior use.” (Id.)

In evidentiary support of its position, Opposer submits the May 1, 2017
declaration of its principal, Mr. Hansel Delacruz, who states that Opposer first
began using the mark “Planet of the Vapes” in commerce on or about June 15, 2013
and that its gross sales in Q2 2013 (from June 15-30, 2013) through Q1 2017 for all
seven of Opposer’s wholly-owned brick-and-mortar stores and Opposer’s website
domains located at www.planetofthevapes.biz and www.planet-of-the-
vapes.online.myshopify.com exceed $6,350,000. The attached exhibits include, inter
alia, the following: (1) Opposer’s May 20, 2013 business registration and business
license tax application filed with the California Secretary of State; (2) a printout of
the vaporizers/vaping devices and accessories sold by Opposer from June 15, 2013 to
June 30, 2015; (3) a printout of quarterly sales for June 2013 showing how much
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Opposer sold in June 2013 through its stores; (4) a printout of sales figures for the
third and fourth quarter of 2013 of its online sales to show when sales began online
in 2013 and how quickly they increased; (5) advertisements showing some of the
vaporizer goods and accessories offered for sale by Opposer and a list of Opposer’s
stores; (6) and a collection of dated advertisements regarding the opening of
Opposer’s various stores which bear signage identifying the store(s) as “Planet of
the Vapes.”
In reply, Applicant argues that the Board should grant Applicant’s motion
because Applicant has submitted a sworn declaration of its principal, Mr. Bissen,
describing services provided under the PLANET OF THE VAPES mark beginning
in September 2010, Applicant has corroborated the declaration with the evidence
detailed above, and Opposer has proffered no countering evidence.
Summary judgment is appropriate only when there is no genuine dispute as to
any material fact and the moving party is entitled to judgment as a matter of law.
See Fed. R. Civ. P. 56(a). 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 Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed.
Cir. 1993); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542
(Fed. Cir. 1992). 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 American Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc., 22 USPQ2d at 1544. The non-
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moving party may not rest on the mere allegations of its pleadings and assertions of
counsel, but must designate specific portions of the record or produce additional
evidence showing the existence of a genuine dispute of material fact for trial. In
general, to establish the existence of disputed facts requiring trial, the non-moving
party “must point to an evidentiary conflict created on the record at least by a
counterstatement of facts set forth in detail in an affidavit by a knowledgeable
affiant.” Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1786 (Fed. Cir. 1990) (citing Barmag Barmer Maschinenfabrik AG v.
Murata Machinery, Ltd., 731 F.2d 831, 221 USPQ 561, 564 (Fed. Cir. 1984)).
To establish priority on a likelihood of confusion claim brought under Trademark
Act § 2(d), a party must prove that, vis-a-vis the other party, it owns “a mark or
trade name previously used in the United States ... and not abandoned ... .”
Trademark Act Section 2, 15 U.S.C. § 1052. A party may establish its own prior
proprietary rights in a mark through ownership of a prior registration, actual use,
or through use analogous to trademark use which creates a public awareness of the
designation as a trademark identifying the party as a source. See Trademark Act
§§ 2(d) and 45, 15 U.S.C. §§ 1052(d) and 1127. See also T.A.B. Systems v. PacTel
Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996), vacating PacTel Teletrac
v. T.A.B. Systems, 32 USPQ2d 1668 (TTAB 1994).
After reviewing the arguments and supporting papers of the parties and
construing all inferences in a light most favorable to Opposer, we find that
Applicant has met its burden on summary judgment. Taken as a whole, Applicant’s
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declaration and accompanying exhibits establish Applicant’s proprietary rights in
the mark PLANET OF THE VAPES arising before June 16, 2013, Opposer’s first
asserted date of use. West Florida Seafood, Inc. v. Jet Restaurants, 31 F.3d 1122, 31
USPQ2d 1660, 1663 (Fed. Cir. 1994). Applicant supported its first use date with Mr.
Bissen’s declaration, wherein Mr. Bissen declares under oath the following:
• that he filed the subject application and that Applicant has used the mark
since 2010 (Bissen Declaration, §4);

• that Applicant “engaged in retail sales of grinders and vaporizers to brick-
and-mortar stores in New York using the PLANET OF THE VAPES mark”
(Bissen Declaration, § 8);

• that Applicant participated in events where it “engaged in retail sale services
selling one or more vaporizers in connection” with its mark (Bissen
Declaration, §18); and

• that Applicant has “generated more than $4 million in sales through
December 2016” (Bissen Declaration, §22).

See Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Ltd., 86 USPQ2d
1283, 1284 (TTAB 2008) (relying on declaration testimony of opposer's chairman to
establish date of first use).
The statements in the Bissen Declaration are supported by invoices from
suppliers, descriptions of Applicant’s dealings and activities since 2010 which
expanded its business, and indications of when and at what particular events sales
were made. While the volume of sales during this period was not large or frequent,
we find that the extent of Applicant’s use of the subject mark was sufficient to
constitute use to establish September 2010 as Applicant’s priority date, and that
such use was not token use merely to reserve a right in the mark. Christian Faith
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Fellowship Church v. adidas AG, 841 F.3d 986, 120 USPQ2d 1640 (Fed. Cir. 2016)
(sale of two hats found to constitute “use in commerce” under the Lanham Act).
From this declaration and corroborating evidence we can infer that the public
identified the term PLANET OF THE VAPES as a source indicator for Applicant’s
goods and services beginning in September 2010.
Because Applicant has indisputably established use of the PLANET OF THE
VAPES mark prior to any claimed date of first use of the mark by Opposer, Opposer
cannot as a matter of law prevail on its claim of priority and likelihood of confusion
within the meaning of Section 2(d) of the Lanham Act.
The motion for summary judgment is hereby granted in Applicant’s favor on the
priority and likelihood of confusion claim.
The proceeding will go forward on the fraud claim only. We encourage the
parties to consider resolving the remaining issue of fraud using the Board’s
accelerated case resolution procedure ("ACR"). ACR is an alternative to typical
Board inter partes proceedings with full discovery, trial and briefing, in which the
parties can obtain a determination of the claims and defenses in their case in a
shorter time period than contemplated in the typical Board proceeding. In order to
take advantage of ACR, the parties must stipulate that, in lieu of trial, the Board
can resolve any material issues of fact. After the briefs are filed, the Board will
endeavor to issue a decision within fifty days. The parties should review TBMP §§
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528.05(a)(2), 702.04, and 705 (2017) for more information and telephone the
assigned interlocutory attorney if they are interested in pursuing this alternative.3
Proceedings are hereby resumed. Dates are reset as follows:
Expert Disclosures Due 8/27/2017
Discovery Closes 9/26/2017
Plaintiff's Pretrial Disclosures Due 11/10/2017
Plaintiff's 30-day Trial Period Ends 12/25/2017
Defendant's Pretrial Disclosures Due 1/9/2018
Defendant's 30-day Trial Period Ends 2/23/2018
Plaintiff's Rebuttal Disclosures Due 3/10/2018
Plaintiff's 15-day Rebuttal Period
Ends 4/9/2018

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.

* * *

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:

3 Ann Linnehan, 571-272-3946.
Opposition No. 91226437

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• 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.
• 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.

This is only a summary of the significant content of the Final Rule. All parties
involved in or contemplating filing a Board proceeding, regardless of the date of
commencement of the proceeding, should read the entire Final Rule.

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