PRL USA Holdings, Inc.v.Brasilio Machado

Trademark Trial and Appeal Board

Jul 24, 2017

No. 91230510 (T.T.A.B. Jul. 24, 2017)

al Mailed: July 24, 2017

Opposition No. 91230510
PRL USA Holdings, Inc.

v.
Brasilio Machado

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

By the Board:

Brasilio Machado (Applicant) seeks registration of the mark POLO KING1 for
“Boots; jackets; jeans; T-shirts for men, women, children; baseball caps and hats;
sports caps and hats” in International Class 25 under Trademark Act Section 1(b),
15 U.S.C. Section 1051(b). PRL USA Holdings, Inc. (Opposer) has opposed
registration of Applicant’s mark on the grounds of likelihood of confusion with, and
dilution of, its previously used and registered marks.2

1 Application Serial No. 87019978, filed on April 29, 2016, based on an assertion of a bona
fide intent to use the mark in commerce.
2 Opposer pleads ownership of several registrations (U.S. Registration Nos. 1363459,
1468420, 1508314, 1935665, 1951601, 2686291, 3066068, 3306101, 3733341 and 978166)
for the mark POLO alone or common law marks in which the element POLO is used in
conjunction with other terms (such as POLO RALPH LAUREN, POLO SPORT, POLO
GOLF, and POLO TENNIS) for various items of clothing or apparel.
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 PRECENT
OF THE TTAB.
Opposition No. 91230510

2
Applicant denied the salient allegations of the notice of opposition and
asserted certain affirmative defenses in his answer. In light of our findings below,
we do not discuss the answer here.
This case now comes up for consideration of Opposer’s motions (filed June 5,
2017) for (1) leave to amend its notice of opposition to assert a claim of lack of bona
fide intent to use the mark in commerce at the time of filing the application and (2)
summary judgment on this newly asserted claim. Applicant has filed a brief in
response to the motion for summary judgment and has cross-moved for summary
judgment in his favor on the lack of bona fide intent to use claim. The motion for
summary judgment and cross-motion for summary judgment are fully briefed.
Because Applicant has not contested Opposer’s motion to amend, Opposer’s
motion to amend to add a lack of a bona fide intention to use claim is granted as
conceded. Trademark Rule 2.127(a). Furthermore, we construe Applicant’s
opposition to Opposer’s motion for summary judgment on the amended claim as a
general denial of Opposer’s amended allegation, thereby obviating the need for
Applicant to file an amended answer.
Next, we consider Opposer’s motion for summary judgment on the added
claim. Opposer argues that “the undisputed facts show that Applicant lacked a bona
fide intent to use in commerce the subject mark” (Opposer’s Brief, p. 1); that
“through his discovery responses, Applicant has amply demonstrated that he had no
bona fide intent to use the mark at the time he filed his application” (Id.); that such
responses “make clear that Applicant has no business plans and has undertaken no
Opposition No. 91230510

3
business activities evincing a bona fide intent to use Applicant’s Mark” (Id. at 2);
that “Applicant has produced no documents contemporaneous with the filing of its
application that would even purport to show its bona fide intent” (Id. at 3); that
“Applicant’s responses to Opposer’s interrogatories confirmed that: (1) Applicant
has had no discussions whatsoever with any third parties about potentially
manufacturing or selling any products; and (2) Applicant has no business plans
beyond a general, aspirational idea that his ‘products will be sold through local
retailers and a website’”; and that “no genuine issue of material fact exists as to
Applicant’s bona fide intent.” (Id.) As evidentiary support, Opposer submitted
copies of Applicant’s discovery responses.
Applicant in turn argues that he has undertaken certain business activities
which evidence a bona fide intent to use his subject mark; that his actions are
“consistent with any small business owner with limited resources and it shows …
clear undisputed evidence of a bona fide intent to use the mark in commerce”
(Applicant’s Brief, p. 4); that aside from being an attorney he “was also the owner of
a clothing retailer and manufacturer located in Miami Beach, FL for several years
and is an avid polo player in Palm Beach, FL” (Id.); that he has “knowledge of the
general apparel industry and in the specific apparel desires and necessities of real
polo players” (Id.); and that Opposer has failed to satisfy its burden of proof but
rather that Applicant has shown that “there is no question of material fact and that
he does have a bona fide intent to use the mark.” (Id. at 7). Applicant states that
summary judgment in his favor should be granted.
Opposition No. 91230510

4
Applicant submitted an affidavit in which he asserts that he is a polo player
and has been around the sport all his life as his father was also a polo player; that
he created the POLO KING mark in or around April 2016; that the mark was
developed for the purpose of a new line of clothing for polo players; that he filed his
trademark application for the subject mark on April 29, 2016; that on or about the
beginning of August 2016 he asked a graphics company called KOKO Design
located in Miami, Florida to “digitalize letters for the mark”; that on or about
August 30, 2016 he met with associates of a private label company called T-Shirt
Plus Color, Inc. which manufactures apparel for private labels; that on August 31,
2016 he ordered and paid for a “sample batch” of hats embroidered with the mark
POLO KING to be used for marketing research; that on September 18, 2016 he
secured and purchased the URL Domain name www.POLOKINGUSA.COM; that on
September 20, 2016 he filed corporate documents with the Florida Department of
State creating Polo King, Corp.; that on or about December 10, 2016 he received
samples of handmade riding boots made to order by an artisanal boot maker in
Brazil for market research; that on or about December 2016, he started marketing
research of the hats ordered at polo matches in Wellington, FL; that throughout the
end of December 2016 and through January 2017 he distributed his hats and
“showed the sample boots to polo players and spectators at various polo games and
received positive feedback and an overall display of interest from the public in
purchasing products with the mark”; and that he has a history of working and/or
owning various clothing retail and manufacturing establishments. Attached to the
Opposition No. 91230510

5
affidavit are the invoices, receipts, and pictures of the Brazilian boot samples
referenced in the affidavit.
Opposer further argues that “confronted with Opposer’s Motion for Summary
Judgment, Applicant abruptly changed his story and now asks the Board to accept
his assurances and his meager, hastily assembled documentation as proof of his
bona fide intent to use the mark” (Opposer’s Reply Brief, p. 2); that “the Board
should not countenance such conduct and should therefore give no consideration to
any of the evidence knowingly withheld by Applicant during discovery” and should
apply the preclusion sanction under Federal Rule 37(c)(1) (Id.); that “not a single
documents [sic?] proffered by Applicant predates the filing of the subject
application” (Id.); that “Applicant cannot withhold documents sought by Opposer
during discovery and then seek to rely upon them” (Id. at 4-5); and that “even if
considered, Applicant’s additional documents are insufficient to establish a bona
fide intent to use Applicant’s Mark at the time the Application was filed.” (Id. at 5).
Summary judgment is appropriate 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 issues 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.
Opposition No. 91230510

6
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-
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). The
mere fact that cross-motions for summary judgment have been filed does not
necessarily mean that there are no genuine disputes of material fact, or that a trial
is unnecessary. See University Book Store v. University of Wisconsin Board of
Regents, 33 USPQ2d 1385, 1389-90 (TTAB 1994).
We begin with Opposer’s argument regarding the preclusion sanction under
Federal Rule 37(c)(1) and Applicant’s affidavit and exhibits. In Vignette Corp. v.
Marino, 77 USPQ2d 1408, 1411 (TTAB 2005), the Board stated:
…in cases such as these, where applicant does not unequivocally
refuse to provide the requested information, we believe that it would
be unduly harsh to impose the preclusion sanction under Federal
Rule 37(c)(1). This is particularly true given that discovery
responses may be supplemented at any time, even during trial, or
after receipt of a summary judgment motion. To apply the
preclusion sanction under Federal Rule 37(c)(1) here or in similar
circumstances would amount to elevating form over substance since
Opposition No. 91230510

7
no practical distinction exists between consideration of information
provided as part of a responsive brief to a summary judgment
motion or information provided in supplemental responses to
discovery that are submitted at the same time as a responsive brief.

Because Applicant has not unequivocally refused to provide the requested
information and supplied his responses in a timely manner, we deny Opposer’s
request to apply the preclusion sanction and have considered the affidavit and its
accompanying exhibits.
In determining the sufficiency of documentary evidence demonstrating a
bona fide intent, the Board has held that the Trademark Act does not expressly
impose “any specific requirement as to the contemporaneousness of an applicant’s
documentary evidence corroborating its claim of bona fide intention. Rather, the
focus is on the entirety of the record.” Lane Ltd. v. Jackson International Trading
Co., 33 USPQ2d 1351, 1356 (TTAB 1994). In Lane Ltd., supra, the Board found that
correspondence drafted by applicant in which it sought to license its mark and
which was dated ten months after the filing of applicant's application served to
corroborate applicant's bona fide intention to use its mark. Id. (emphasis added).
After carefully reviewing the arguments and supporting evidence submitted
by both parties, we conclude that Opposer is not entitled to summary judgment on
the issue of whether Applicant had a bona fide intention to use his mark in
commerce at the time he filed his application. We find that Applicant’s graphic
design efforts, contact with a private label company, and marketing endeavors
constitute actions and uses which serve as corroboration of Applicant’s declaration
in the application of a bona fide intention to use the mark in commerce. See Lane
Opposition No. 91230510

8
Ltd., supra. We further find of note that Applicant’s experience in the clothing
industry coupled with his active, life-long involvement in the sport of polo are
consistent with and corroborative of his claimed bona fide intention to use the mark
in commerce at the time he filed his application.
Accordingly, since there are no genuine disputes of material fact as to the
circumstances surrounding Applicant’s claimed bona fide intention to use the mark
in commerce, and because the evidence of record, when viewed in its totality,
establishes Applicant’s bona fide intention as a matter of law, Opposer’s motion for
summary judgment is denied, and summary judgment is granted in favor of
Applicant as to the issue of bona fide intent.3
ACR
We encourage the parties to consider resolving the remaining issues in this
case, namely Opposer’s claims of likelihood of confusion and dilution, 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

3 The parties should note that the evidence submitted in connection with the motion for
summary judgment is of record only for consideration of the motion. To be considered at
final hearing, any such evidence must be properly introduced in evidence during the
appropriate trial period. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d
1464 (TTAB 1993).

Opposition No. 91230510

9
will endeavor to issue a decision within fifty days. The parties should review TBMP
§§ 528.05(a)(2), 702.04, and 705 (2017) for more information.
Pro Se Information
It is noted that Applicant intends to represent himself in this proceeding. While
Patent and Trademark Rule 11.14 permits any person to represent itself, it is
strongly advisable for a person who is not acquainted with the technicalities of the
procedural and substantive law involved in inter partes proceedings before the
Board to secure the services of an attorney who is familiar with such matters. The
Patent and Trademark Office cannot aid in the selection of an attorney. See TBMP §
114.02.
Trademark Rules 2.119(a) and (b) require that every submission filed in a
proceeding before the Board must be served upon the other party or parties, and
proper proof of such service must be made before the submission will be considered
by the Board. Accordingly, all submissions filed in this proceeding must be
accompanied by a statement, signed by the attorney or other authorized
representative, attached to or appearing on the original submission when filed,
clearly stating the date and manner in which service was made, the name of each
party or person upon whom service was made, and the email address or address.
See TBMP § 113.03. Service must be made by email unless otherwise stipulated, or
unless the filing party has satisfied the requirements for another method of service
as set forth in Trademark Rule 2.119(b). The statement will be accepted as prima
Opposition No. 91230510

10
facie proof of service, must be signed and dated, and should take the form of a
Certificate of Service as follows:
I hereby certify that a true and complete copy of the foregoing (insert title of
submission) has been served on (insert name of opposing counsel or party) by
forwarding said copy on (insert date of mailing), via email (or insert other
appropriate method of delivery) to: (set out name, address, and email address
of opposing counsel or party).

Signature______________________________
Date___________________________________
Submissions in Board proceedings must be made via ESTTA, the Electronic
System for Trademark Trials and Appeals, and must be in compliance with
Trademark Rules 2.126(a) and (b). See TBMP § 110.01. The ESTTA user manual,
ESTTA forms, and instructions for their use are at http://estta.uspto.gov/.
It is recommended that any pro se party be familiar with the latest edition of
Chapter 37 of the Code of Federal Regulations, which includes the Trademark Rules
of Practice. Parties should also be familiar with the Trademark Trial and Appeal
Board Manual of Procedure (TBMP), available at http://www.uspto.gov/trademarks-
application-process/trademark-trial-and-appeal-board-ttab, the TTABVUE system
for viewing the record for all Board proceedings, available at
http://ttabvue.uspto.gov/ttabvue/, and the Standard Protective Order, available at
https://www.uspto.gov/trademarks-application-process/appealing-trademark-
decisions/standard-documents-and-guidelines-0.
Strict compliance with the Trademark Rules of Practice, and where applicable
the Federal Rules of Civil Procedure, is required of all parties, whether or not they
are represented by counsel. McDermott v. San Francisco Women’s Motorcycle
Opposition No. 91230510

11
Contingent, 81 USPQ2d 1212, n.2 (TTAB 2006), aff’d unpub’d, 240 Fed. Appx. 865
(Fed. Cir. 2007), cert. denied, 552 U.S. 1109 (2008).
Proceedings are resumed. Dates are reset as follows:

Expert Disclosures Due 8/22/2017
Discovery Closes 9/21/2017
Plaintiff's Pretrial Disclosures Due 11/5/2017
Plaintiff's 30-day Trial Period Ends 12/20/2017
Defendant's Pretrial Disclosures Due 1/4/2018
Defendant's 30-day Trial Period Ends 2/18/2018
Plaintiff's Rebuttal Disclosures Due 3/5/2018
Plaintiff's 15-day Rebuttal Period Ends 4/4/2018

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.l25.
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.l29.

* * *

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:
Opposition No. 91230510

12
• 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.

Opposition No. 91230510

13