RevZilla Motorsports, LLCv.Powersports Plus LLC

Trademark Trial and Appeal Board

Jun 2, 2015

No. 91212858 (T.T.A.B. Jun. 2, 2015)

DUNN
Mailed: June 2, 2015

Opposition No. 91212858
RevZilla Motorsports, LLC
v.
Powersports Plus LLC

Before Kuhlke, Mermelstein, and Masiello, Administrative Trademark
Judges:

By the Board:

This case comes up on Applicant’s motion for summary judgment on
the likelihood of confusion claim, Opposer’s cross-motion for summary
judgment on standing and priority, and Opposer’s motion to amend the notice
of opposition to add a claim, in the alternative, that the opposed mark is
merely descriptive as applied to Applicant’s services. All three motions are
contested.
Powersports Plus LLC seeks registration of the mark PARTZILLA (in
standard characters) for:
Retail store services in the field of parts, aftermarket parts,
accessories and related products for ATVs, motorcycles, scooters,
watercrafts and snowmobiles accessible online and by telephone;
retail store services in the field of tires, wheels and related
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 T.T.A.B.
Opposition No. 91212858
2
products for ATVs and motorcycles accessible online and by
telephone; retail store services in the field of tools and related
products for ATVs, motorcycles and watercrafts accessible online
and by telephone; retail store services in the field of apparel,
eyewear, footwear, helmets, leather jackets, leather pants,
leather vests, protection gear, riding gear and related products
accessible online and by telephone; retail store services in the
field of DVDs and toys accessible online and by telephone.

(Application Serial No. 85862009, filed February 27, 2013).
On October 7, 2013, Opposer filed a notice of opposition alleging a
likelihood of confusion between Applicant’s mark and its pleaded mark
REVZILLA (in standard characters) for “online retail store services featuring
motorcycle apparel and accessories,” the subject of common law use since
2007 and pleaded Registration No. 4186105, issued August 7, 2012. Opposer
included a status and title copy of its pleaded registration. On October 24,
2013, Applicant filed an answer which denies the salient allegations of the
notice of opposition and asserts various affirmative defenses.
Pursuant to the Board’s January 15, 2015 order, discovery was
scheduled to close February 27, 2015. On February 10, 2015, Applicant filed
its motion for summary judgment; on March 12, 2015, Opposer filed its cross-
motion, and on October 13, 2015, Opposer filed its motion to amend the
pleading.
CROSS-MOTIONS FOR SUMMARY JUDGMENT
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,
Opposition No. 91212858
3
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). In reviewing a motion for
summary judgment, the evidentiary record and all reasonable inferences to
be drawn from the undisputed facts must be viewed in the light most
favorable to the nonmoving party. Olde Tyme Foods Inc. v. Roundy’s Inc., 961
F.2d 200, 22 USPQ2d 1542, 1544 (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 Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed.
Cir. 1993). When cross-motions for summary judgment are presented, the
Board evaluates each motion on its own merits and resolves all doubts and
inferences against the party whose motion is being considered. Mingus
Constructors, Inc. v. United States, 812 F.2d 1387, 1390–91 (Fed. Cir. 1987).
Turning first to opposer’s cross-motion for summary judgment on the
issue of its standing and priority of use, as set forth above, Opposer has
submitted a status and title copy of its pleaded Registration No. 4186105.
The registration is sufficient to establish a direct commercial interest, and
therefore Opposer’s standing to bring this proceeding. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
Furthermore, by properly making its pleaded registration of record, Opposer
has removed Section 2(d) priority as an issue in this proceeding as to the
marks and services covered by that registration. See King Candy Co. v.
Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Opposition No. 91212858
4
Accordingly, Opposer’s cross-motion for summary judgment on standing and
priority is GRANTED.1 We hasten to add that Opposer’s standing must
persist throughout trial, and that any change to Opposer’s pleaded
registration adversely affecting its subsistence or Opposer’s ownership of it
would place Opposer in the position of having to demonstrate its standing by
other means. Similarly, any such change to the registration would bring
priority into issue.
Turning to Applicant’s motion for summary judgment, the
determination of likelihood of confusion depends on analysis of all of the
probative facts 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, 567
(CCPA 1973) (“du Pont”). Applicant contends that the differences between the
marks REVZILLA and PARTZILLA are so great that, even if all other du
Pont factors are weighed in favor of Opposer, there can be no likelihood of
confusion. See Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148
F.3d 1373, 1375, 47 USPQ2d 1459, 1460 (Fed. Cir. 1998) (“one DuPont factor
may be dispositive in a likelihood of confusion analysis, especially when that
single factor is the dissimilarity of the marks.”). More specifically, Applicant
contends that the suffix –ZILLA is weak and has a recognized meaning of

1 Since even successful motions for partial summary judgment usually lengthen the
proceeding and involve the additional expense to the parties of first submitting
evidence in connection with the briefing of the summary judgment motion and then
submitting evidence on the remaining issues at trial, they seldom are utilized.
Nonetheless, contrary to Applicant’s argument (Combined reply and opposition to
cross-motion, p.2 n1), neither case law nor the Board’s rules bar such motions.
Opposition No. 91212858
5
size, ferocity, or other excess, that the remainder of the parties' marks (REV
and PART) form the dominant part of the mark and are utterly dissimilar;
and that wide third-party use of the ZILLA suffix entitles Opposer to a very
limited scope of protection for its REVZILLA mark. Opposer maintains that
the term ZILLA is arbitrary, does not have a commonly accepted meaning,
and forms the dominant part of the mark; that the prefatory terms REV and
PART are suggestive of the retail services featuring motorcycle apparel and
accessories offered by Opposer, and the retail services featuring motorcycle
apparel, accessories, and parts offered by Applicant, and that as used on the
identical services, the terms REVZILLA and PARTZILLA create highly
similar commercial impressions. Opposer also contends that, due to its use
since 2007 and extensive promotional efforts, its REVZILLA mark is well
known and entitled to a wide scope of protection, that there are no directly
competitive third party uses of ZILLA marks, and that Applicant’s use of its
PARTZILLA mark has created actual confusion as to the source of Opposer’s
REVZILLA services.
Both parties submitted declarations and supporting exhibits in support
of their respective arguments. Applicant primarily relies on dictionary
definitions for the term ZILLA, and third-party registrations and website
evidence offered to show third-party use of marks with a ZILLA suffix.2

2 To the extent that Applicant cites to the Board’s unpublished July 22, 2014
determination of no likelihood of confusion between the marks ZILLOW and
ZILLOW.COM and LOANZILLA, and the finding that that there is a “plethora” of
ZILLA marks, the finding is not dispositive of the likelihood of confusion issue
Opposition No. 91212858
6
Opposer primarily relies on the confidential declarations of its cofounder
Anthony Bucci and its Finance and Administration Director David Price
averring as to the directly competitive relationship between the parties,
Opposer’s use of its REVZILLA mark since 2007, instances of actual
confusion between the parties; and Opposer’s promotional efforts involving
the REVZILLA mark and its revenue from services offered in connection with
the REVZILLA mark. Opposer also submits a declaration of counsel with
attached excerpts from the deposition of a “confused” customer, and the
declaration of two paralegals with attached website evidence offered to show
that there is a limited amount of unrelated third-party use of ZILLA marks,
alternate dictionary definitions, and actual confusion.
Upon careful consideration of the evidence and arguments submitted
by the parties, and drawing all inferences in favor of Opposer, the Board
finds that material facts relevant to the likelihood of confusion between the
marks REVZILLA and PARTZILLA are disputed. The Board finds that, at a
minimum, there are genuine disputes as to the strength of Opposer’s

regarding the REVZILLA and PARTZILLA marks in this opposition. We do not rely
on findings of fact that were made on a different record that is not now before us. See
Zillow, Inc. v. Super T Financial Inc. DBA LoanZilla (Opposition No. 91203730). To
the extent that Applicant cites to the June 25, 2013 decision of the National
Arbitration Forum, a dispute resolution service provider for the Internet
Corporation for Assigned Names and Numbers (ICAAN), denying Opposer’s request
to transfer the domain name PARTZILLA.COM from Applicant to Opposer based on
Opposer’s ownership of the REVZILLA trademark, the Board notes that the decision
also acknowledges “A domain name dispute proceeding generally is not an
appropriate forum to resolve questions involving the legitimacy of trademark
registrations or infringement.” Both decisions were considered and given the
appropriate weight by the Board in connection with this order.
Opposition No. 91212858
7
REVZILLA mark, whether there is an accepted meaning of the term ZILLA
among relevant consumers, the extent of third-party use of the term ZILLA
in connection with relevant retail store services; the similarities in
commercial impression of the marks REVZILLA and PARTZILLA; and the
number and significance of instances of actual confusion as to the source of
the services offered under the parties’ respective marks.
Accordingly, Applicant’s motion for summary judgment on the
likelihood of confusion between the marks is denied.3
MOTION TO ADD MERE DESCRIPTIVENESS CLAIM
When justice so requires, the courts and the Board look favorably on
motions to amend, and the Board will grant the motion unless entry of the
proposed amendment would violate settled law or would be prejudicial to
defendant. Fed. R. Civ. P. 15(a); Karsten Manufacturing Corp. v. Editoy AG,
79 USPQ2d 1783, 1785 (TTAB 2006). In determining whether defendant
would be prejudiced by allowance of the proposed amendment, the timing of
the motion for leave to amend plays a large role. Black & Decker Corp. v.
Emerson Electric Co., 84 USPQ2d 1482, 1486 (TTAB 2007).
Here, Opposer contends that Applicant’s motion for summary
judgment argues and submits evidence that the term ZILLA is descriptive of,

3 Although we have only mentioned certain genuine disputes of material fact in this
decision, this is not to say that this is all that would necessarily be at issue for trial.
The parties should note that evidence submitted in support of or in opposition to a
motion for summary judgment is of record only for consideration of that motion. Any
such evidence to be considered at final hearing must be properly introduced in
evidence during the appropriate trial period. See Levi Strauss & Co. v. R. Joseph
Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).
Opposition No. 91212858
8
among other things, size, and that, if the Board accepts this argument and
evidence, Opposer wishes to argue that Applicant’s mark PARTZILLA is
merely descriptive of Applicant’s sizable motorcycle parts services. Opposer
asserts that Applicant’s intent to argue that ZILLA is descriptive was only
made known to Opposer through Applicant’s motion for summary judgment,
that it was contradicted by Applicant’s discovery responses, that Opposer
acted promptly in moving to amend the notice of opposition, and that
Applicant will suffer no prejudice from having the pleadings amended to
conform to the evidence which Applicant offered. Opposer submits Applicant’s
discovery responses regarding the meaning of the term ZILLA, which do not
explain that the term ZILLA has a recognized meaning, but which explain
that the term ZILLA it is weak based on third-party use.
Applicant opposes the motion, contending that Opposer had notice that
Applicant intended to argue that ZILLA had a commonly-understood
meaning, and submits the declaration of Applicant’s paralegal Paul Painter,
and attached February 4, 2013 cease and desist letter and May 20, 2013
response filed with the National Arbitration Forum, contending that the term
ZILLA has a recognized meaning. Applicant also argues (Opposition, p. 8)
that “Applicant has not introduced any evidence purporting to show that
ZILLA is merely descriptive, nor is Applicant aware of such evidence.” The
Board finds no support for this contention, and, as set forth above,
Applicant’s motion for summary judgment relies on dictionary and Wikipedia
Opposition No. 91212858
9
evidence submitted to show that ZILLA has a recognized meaning of size,
ferocity, or other excess.
Upon review, Applicant’s discovery responses do not indicate that
Applicant intended to argue that ZILLA is merely descriptive, and
Applicant’s summary judgment motion does argue – and present evidence –
that ZILLA is merely descriptive. The introduction of the issue of mere
descriptiveness by Applicant is a crucial distinction from the case Applicant
cites, in which the plaintiff brought the new claim of descriptiveness and “did
not claim that it learned of these newly asserted claims through discovery or
was otherwise unable to learn about these new claims prior to or shortly after
filing its first complaint.” Media Online Inc. v. El Clasificado Inc., 88
USPQ2d 1285, 1287 (TTAB 2008). The discussion of alternate theories to
alternate tribunals, or between the parties before this proceeding began, is
not binding in this proceeding. Opposer was entitled to rely on Applicant’s
discovery responses indicating that Applicant regarded third-party uses as
the reason why the term ZILLA was weak, and if Applicant developed an
alternate theory during discovery, Applicant should have supplemented those
responses.
Opposer’s motion to amend the notice of opposition is GRANTED, and
the attached amended notice of opposition is accepted as the operative
pleading.
Opposition No. 91212858
10
Applicant is ordered to file its answer to the amended notice of
opposition within TEN DAYS from the mailing date of this order.
SUMMARY
Applicant’s motion for summary judgment on the likelihood of
confusion is DENIED, Opposer’s cross-motion for summary judgment on
standing and priority is GRANTED4, and Opposer’s motion to amend the
notice of opposition to add a claim, in the alternative, that the opposed mark
PARTZILLA is merely descriptive is GRANTED.
In view of the factual disputes in this proceeding, the Board
determines that disposition by summary judgment is not appropriate.
Accordingly, the parties are barred from filing new motions for summary
judgment and must proceed to trial.
Proceedings are resumed, and dates are reset below.
Discovery Closes 6/19/2015
Plaintiff's Pretrial Disclosures 8/3/2015
Plaintiff's 30-day Trial Period Ends 9/17/2015
Defendant's Pretrial Disclosures 10/2/2015
Defendant's 30-day Trial Period Ends 11/16/2015
Plaintiff's Rebuttal Disclosures 12/1/2015
Plaintiff's 15-day Rebuttal Period Ends 12/31/2015

In each instance, a copy of the transcript of testimony together with
copies of documentary exhibits, must be served on the adverse party within

4 As set forth earlier, the grant of summary judgment is contingent upon Opposer
retaining title to the pleaded registration throughout this proceeding, and the
registration continuing to subsist. In other words, if the pleaded registration is
transferred or cancelled, Opposer will have to prove its standing and priority by
other means at trial.
Opposition No. 91212858
11
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 2.129.