Robert Bosch GmbHv.Jun Wang

Trademark Trial and Appeal Board

May 19, 2004

No. 91124058 (T.T.A.B. May. 19, 2004)

omelko
Mailed: May 19, 2004
Opposition No. 91124058
ROBERT BOSCH GMBH
v.
JUN WANG
Before Simms, Hairston and Holtzman,
Administrative Trademark Judges.
By the Board:
Jun Wang, an individual, has filed an application to
register on the Principal Register the mark BOSHI for
"rearview and sideview mirrors for auto vehicles, e.g.,
automobiles, trucks, buses", based on applicant's claimed
date of first use and first use in commerce of September 15,
2000.1
Robert Bosch GmbH has opposed registration of
applicant's mark, alleging that opposer has continuously
used BOSCH throughout the U.S. and worldwide, both as a
trademark and service mark in connection with the
manufacture, distribution, promotion and sale of its
automotive goods and services long prior to applicant’s
filing date and alleged first use; and that applicant’s use
1 Application Serial No. 78033950 was filed on November 6, 2000.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3514
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Opposition No. 91124058
2
of BOSHI on parts for automotive vehicles is likely to cause
confusion, mistake or deception with opposer’s famous BOSCH
mark used and registered for similar goods. Opposer
subsequently moved to amend its notice of opposition to
include an additional claim, the basis for which opposer
states was revealed through applicant’s responses to
opposer’s discovery requests. On October 14, 2003, the
Board granted opposer’s motion to amend its notice of
opposition to add the following allegation:
15) That whereas the application Serial No. 78/033,950
is based on the allegation of use in commerce, the
mark has in fact never been used; and the
application is void ab initio.
Opposer moves for summary judgment on this added claim
only and argues that although applicant claims in the
involved application actual use in commerce since September
15, 2000, based on applicant’s answers to opposer’s
interrogatories the mark has never been used in commerce on
the goods identified in the application. In support of its
motion for summary judgment, opposer has submitted a copy of
applicant’s responses to opposer’s first set of
interrogatories. Specifically, opposer refers to
applicant’s responses to the three interrogatories set forth
below:
Interrogatory No. 3:
Identify and describe each and every product on or
in connection with which applicant uses, or
intends to use the mark.
Opposition No. 91124058
3
Answer:
Boshi mirror is the only product that was
designed, to be used commercially, I also tried to
use it on the cheap batteries, but proved a
complete failure, nobody ever bought from me.
Interrogatory No. 4:
For each product identified in answer to
Interrogatory No. 3, state whether such product
has been sold in the U.S.A., and, if so, state the
date on which such product was first sold to a
customer, whether such use continues today and, if
not, the date and reasons for discontinuance.
Answer:
I have invested a lot of money on the brochure,
retail color package, and designed a nice web
site. I planned to find companies that might be
interested in this product, but the opposer has
huge money, and the opposer has succeeded in
damaging my plan to go further trying to locate
and find possible companies that might be
interested in my product. I can say huge
companies did succeed in stopping me marketing
successfully, and the answer is: Not a single
piece ever sold by me in the USA, and elsewhere in
the world. So, small fish can only starve, and
now this huge company is happy!
Interrogatory No. 11:
For each product identified in answer to
Interrogatory No. 3, state whether Applicant has
promoted or exhibited any products bearing the
Mark at any conventions, trade shows or
exhibitions or has any plans to do so, and if so,
state the title, dates and location of each such
convention, trade show or exhibition and the
products exhibited or expected to be exhibited.
Answer:
At 2001 SEMA show in Las Vegas from Oct.29-Nov.2,
I displayed the marked product and the brochure.
One postal [sic] is displayed, and several retail
boxed mirror is displayed, together with my other
products. No intention to do it again as nobody
ever bought any marked product from me.
In response to opposer’s motion, applicant argues in
part:
.... [T]he opposer’s allegation ‘that this product was
Opposition No. 91124058
4
never used in commerce’, the allegation itself is
wrong, this should be regarded as a valid allegation.
If the USPTO take so seriously everything the lawyer
says that such allegation stands firm, I then correct
my letters in the statement before, and it was used in
commerce! Because the Applicant purchased from the
factory which is a legitimate transaction, and
Applicant filed Customs declaration to let the initial
purchase from the factory in the US. If the Opposer’s
“Never Be Used in Commerce” means this product was
never sold to the US customers, then the answer is No
because the opposer stepped right in time trying to
damage all the work the Applicant has done. Remember
one thing: the Opposer has not produced a single
similar product like BOSHI. As the sample proved in my
enclosure before, why they are not going after BUSCH
beer?
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). The party moving
for summary judgment has the initial burden of demonstrating
the absence of any genuine issue of material fact. See
Celotex Corp. v. Catrett, 477 U.S. 317 (1986); and Sweats
Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4
USPQ2d 1793 (Fed. Cir. 1987). A factual dispute is genuine,
if, on the evidence of record, a reasonable finder of fact
could resolve the matter in favor of the non-moving party.
See Opryland USA Inc. v. Great American Music Show Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); and Olde Tyme
Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542
(Fed. Cir. 1992). The evidence must be viewed in a light
most favorable to the non-movant, and all justifiable
Opposition No. 91124058
5
inferences are to be drawn in the non-movant's favor. See
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993); and Opryland USA, supra.
Preliminarily, we note that opposer submitted an
unsigned copy of applicant’s responses to 19 of opposer’s
first set of 22 interrogatories. We assume that the
applicant signed her responses to opposer’s interrogatories,
as she was required to do.2 With respect to applicant’s
responses to Interrogatories Nos. 3 and 4, her statements
make it clear that she never used the mark prior to the
filing date of her application, or prior to her claimed date
of first use. As for applicant’s response to Interrogatory
No. 11, we note that the date of the trade show was
subsequent to the filing date of the involved application
and her claimed date of first use. Furthermore, applicant’s
response to opposer’s motion for summary judgment confirms
what applicant said in response to opposer’s
interrogatories. The purchase of the mirrors from the
factory that manufactured them and applicant’s subsequent
labeling of the mirrors with the trademark, without sales to
the public, is not use in commerce; nor is the filing of a
declaration with U.S. Customs.
2 Apparently, opposer neglected to send in the last page of
applicant’s responses containing her signature.
Opposition No. 91124058
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Based on the record before us, we find that opposer has
met its burden of demonstrating the absence of any genuine
issue of material fact and that it is entitled to judgment
as a matter of law on the issue of whether applicant used
her mark in commerce before the filing date of her
application.
Accordingly, opposer's motion for summary judgment is
granted; summary judgment is entered against applicant on
the ground that her application is void ab initio;3 and
registration to applicant is refused.4
3 Regarding applications held void ab initio based on the
applicant's failure to use the mark on the identified goods, see,
e.g., E. I. du Pont de Nemours and Co. v. Sunlyra International
Inc., 35 USPQ2d 1787, 1791 (TTAB 1995); and CPC International
Inc. v. Skippy Inc., 3 USPQ2d 1456, 1460 (TTAB 1987).
4 In view of our conclusion that applicant never used the mark
BOSHI on mirrors prior to the application filing date, opposer's
claims of priority and likelihood of confusion are moot.