Ron Cauldwell Jewelry, Inc.v.Clothestime Clothes, Inc.

Trademark Trial and Appeal Board

Mar 22, 2002

No. 91121784 (T.T.A.B. Mar. 22, 2002)

3/22/02

cab

Opposition No. 121,784

Ron Cauldwell Jewelry, Inc.

v.

Clothestime Clothes, Inc.

Before Simms, Hairston and Wendel, Administrative Trademark
Judges.

By the Board:

Applicant has filed to register the mark EYE CANDY for
goods and services, including the following services that are
the subject matter of this opposition:

retail store services featuring apparel, footwear,
cosmetics, fragrances, health and beauty aids,
candles, hair accessories, jewelry, watches, hand
bags and carry bags, stationery goods, key chains,
picture frames and giftware, in Class 35.1

1 Application Serial No. 75/496,244, filed on June 3, 1998, claiming
a bona fide intention to use the mark. The goods, which are not the
subject matter of the opposition, are identified as follows:
nail polish, lipstick, eyeshadow, eyeliner, mascara, blush,
foundation; body soaps, body powder, body lotion, body cream; bath
and shower gel; hair shampoo and hair conditioner, hair mousse, hair
spray, nail glitter, scented body spray, glitter body gel, and
glitter body cream, in Class 3;
earrings, jewelry; watches, in Class 14;
hand bags, wallets, tote bags, back packs; umbrellas, in Class
18;

UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B.

Opposition No. 121,784
2
As grounds for the opposition, opposer alleges that
applicant’s mark, when used on the identified services,
so resembles opposer’s previously used mark EYE CANDY for
“retail stores featuring jewelry, watches, money clips,
cuff links, key chains, clocks, handbags, purses, shawls,
scarves, gloves, and decorative hair clips and pins” as
to be likely to cause confusion, mistake or deception.
Opposer’s mark, in a stylized presentation set out below,

is the subject matter of pending application Serial No.
75/702,898, filed on May 11, 1999, for the services
recited above, and claiming use in commerce since May
1996.2
Applicant denies the salient allegations of the
notice of opposition and asserts affirmative defenses.
In particular, applicant asserts that, on or about
November 11, 1998, the parties entered into a coexistence
agreement whereby opposer consented to applicant’s use

belts, panties, socks, tights, hats, gloves, scarves, lingerie;
footwear, in Class 25; and
hair bands, hair clips, pony tail holders, in Class 26.

2 In its notice of opposition, opposer alleges that its mark has been
used by opposer and opposer’s predecessors-in-interest since early
1993.
Opposition No. 121,784
3
and registration of applicant’s EYE CANDY mark for the
goods and services identified in applicant’s pending
application Serial Nos. 75/373,1583 and 75/496,244 (the
subject application herein.) Applicant further asserts
that opposer’s claims are barred by the doctrines of
waiver, estoppel and laches.
This case now comes up on applicant’s motion, filed
August 8, 2001, for summary judgment in its favor based
on its affirmative defense invloving the coexistence
agreement. Opposer responded on October 18, 2001,
pursuant to extension requests, filed September 12, 2001
and October 15, 2001, respectively, and agreed upon by
the parties.
Before turning to applicant’s motion for summary
judgment, the Board must preliminarily address
applicant’s consented motion, filed November 11, 2001,
for an extension of time until November 30, 2001, to file
its “memorandum in further support of its motion for
summary judgment” (stamped “approved” on November 30,
2001 by a Board paralegal), and applicant’s reply brief,

3 Serial No. 75/373,158 for the mark EYE CANDY was filed on October
15, 1997, for “clothing, namely, pants, shorts, skirts, t-shirts,
blouses, sweaters, panties and lingerie,” claiming a bona fide
intention to use. Applicant filed an amendment to allege first use
and first use in commerce since May 1, 1998.
Opposition No. 121,784
4
filed November 26, 2001. Applicant’s reply brief is
fifteen (15) pages in length.
Trademark Rule 2.127(a) provides in relevant part as
follows:
The Board may, in its discretion, consider a reply
brief. Except as provided in paragraph (e)(1) of
this section,4 a reply brief, if filed, shall be
filed within 15 days from the date of service of the
brief in response to the motion. The time for
filing a reply brief will not be extended. No
further papers in support of or in opposition to a
motion will be considered by the Board … and a reply
brief shall not exceed more than 10 pages in length.

Trademark Rule 2.127(e)(1), which applies specifically to
briefs for summary judgment motions, parallels Trademark
Rule 2.127(a) with respect to timeliness as follows:
…The Board may, in its discretion, consider a reply
brief. A reply brief, if filed, shall be filed
within 15 days from the date of service of the brief
in response to the motion. The time for filing a
reply brief will not be extended. No further papers
in support of or in opposition to a motion will be
considered by the Board.

Thus, the Board, in error, approved applicant’s November 2,
2001 consented motion to extend its time to file a reply
brief. Said approval is hereby vacated, and applicant’s
consented motion to extend its time to file a reply brief is
denied. In addition to being untimely, applicant’s reply

4 Paragraph (e)(1) refers specifically to motions for summary
judgment.
Opposition No. 121,784
5
brief exceeds the designated page limit. See, also, Estate of
Shakur v. Thug Life Clothing Co., 57 USPQ2d 1095 (TTAB 2000).
Accordingly, no consideration will be given to
applicant’s reply brief.
The Board now turns to applicant’s motion for summary
judgment.
In a motion for summary judgment, the moving party has
the burden of establishing the absence of any genuine issue of
material fact and that it is entitled to judgment as a matter
of law. See Fed. R. Civ. P. 56. A genuine dispute with
respect to a material fact exists if sufficient evidence is
presented that a reasonable fact finder could decide the
question 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). Thus, all doubts as to whether
any particular factual issues are genuinely in dispute must be
resolved in the light most favorable to the non-moving party.
See Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ 1542 (Fed. Cir. 1992).
Applicant seeks judgment as a matter of law arguing that
there are no genuine issues of material fact and that it is
entitled to registration by virtue of the terms of the
coexistence agreement between the parties. According to
applicant, it filed its application Serial No. 75/496,244 on
Opposition No. 121,784
6
June 3, 1998 for the identified goods and services, including
the retail store services; and opposer’s principal contacted
applicant in and around September 1998 when the parties
engaged in a series of phone conversations resulting in a
coexistence agreement between the parties dated October 23,
1998 (executed by opposer’s principal on November 11, 1998).
Applicant contends that the terms of the coexistence agreement
are unambiguous; and that, by those terms, opposer is
precluded from preventing applicant from registering the mark
EYE CANDY for the identified retail store services.
Applicant’s motion is supported by the declaration of its
attorney, Joseph R. Molko, introducing a copy of the filing
receipt and application Serial No. 75/496,244; a copy of the
coexistence agreement; and a copy of a letter dated April 18,
2000 from opposer’s previous counsel to applicant’s counsel
notifying applicant of some incidents of actual confusion.
Before opposer’s arguments are set forth, the full terms
of the agreement (dated October 23, 1998) are repeated below:
Page 1

As you know, our client, Clothestime Stores,
Inc., has filed Trademark Application Ser. No.
75/373,158 for the mark EYE CANDY for clothing in
International Class 25 and Trademark Application
Ser. No. 75/494,244 for a wide variety of other
products and services, specifically nail polish,
health and beauty aids, fragrances and cosmetics, in
Class 3; earrings, jewelry; watches, in Class 14;
hand bags, wallets, tote bags, back packs and
Opposition No. 121,784
7
umbrellas, in Class 18; belts, panties, socks,
tights, hats, gloves, scarves, lingerie; footwear,
in Class 25; hair bands, hair clips, pony tail
holders, in Class 26; and retail store services
featuring apparel, footwear, cosmetics, fragrances,
health and beauty aids, candles, hair accessories,
jewelry, watches, hand bags and carry bags,
stationery goods, key chains, picture frames and
giftware, in Class 35.

In recent conversations with my client and by
letter dated October 13, 1998, you provided us with
the following information regarding your use of the
name EYE CANDY. The name of your business is Ron
Caldwell Jewelry. The nature of your business is
design, production, and wholesale/retail sales of a
line of fashion jewelry known as Ron Caldwell
Jewelry line. You have been in business for
eighteen years and own a small retail store named
EYE CANDY in New York City which sells the Ron
Caldwell line, other jewelry lines, watches and
other accessories. The market for your products is
moderate to better, with a mix of merchandise for
both men and women. You use the term EYE CANDY as a
name of the store only and do not use it as a
trademark on any of the merchandise that you sell.

Page 2

Based on the foregoing information, you advised
my client that you have no objection to its use and
registration of the EYE CANDY mark as set forth
above because you have no plans or desire to use EYE
CANDY as a trademark on merchandise. My client
similarly advised you that your use of EYE CANDY as
the name of your New York City store is acceptable
to it. Accordingly, you and my client have agreed
the each of you can use the term EYE CANDY in your
respective business as outlined above. Should your
respective uses of the EYE CANDY name lead to any
confusion in the marketplace in the future, you
agree to notify each other and work together
amicably to resolve the problem

Opposition No. 121,784
8
If this letter accurately sets forth your
agreement with my client, I would appreciate it if
you could countersign this letter below. My client
will then countersign as well and we will return a
fully executed copy for your file.5

In response to applicant’s motion for summary judgment,
opposer argues that genuine issues of material fact exist
because the coexistence agreement is not clear and
unambiguous; because adequate consideration was not provided
for the coexistence agreement; and because applicant was in
breach of the coexistence agreement at the time opposer
brought the notice of opposition. Opposer provides the
following narrative: in May of 1998 opposer, in preparation
for filing its own application, undertook a search of the
Office’s database which uncovered applicant’s pending
application Serial No. 75/373,158 for merchandise (clothing)
only.6 Opposer indicates that its principal then contacted
applicant directly, informing applicant that opposer had been
using the mark since May 1996 and was preparing to file an
application for retail store services. Opposer further
indicates that the parties did not communicate again until
August 1998 (that is, after applicant filed the application
that is the subject matter of this opposition, including

5 The signature of opposer’s principal is followed by the calendar
date “11/11/98.”
6 Application Serial No. 75/373,158 presently is not the subject
matter of any pending inter partes proceeding at the Board.
Opposition No. 121,784
9
retail store services), at which time, as provided by opposer
in this narrative, applicant suggested that it had no
objection to opposer’s continued use of the mark EYE CANDY for
its store. According to opposer, it requested that this be
put in writing; in October 1998, applicant suggested a
coexistence agreement; and opposer insisted on a clause
requiring each party to “notify each other and work amicably”
to resolve any actual confusion.
Opposer argues that all discussions had been focused on
applicant’s earlier application Serial No. 75/373,158 for
clothing and that, unbeknownst to opposer, applicant also
referred to a second application, which opposer did not know
existed (Serial No. 75/496,244), in the coexistence agreement.
Opposer contends that specific language on page 2 of the
coexistence agreement is ambiguous, referring only to
merchandise, not to services, because prior versions of the
coexistence agreement related only to applicant’s first
application for clothing.7 Opposer argues that its principal
quickly perused the coexistence agreement, focusing on page 2
to ascertain if the requested language, concerning amicably
resolving any confusion problems, had been included, and that

7 The specific language relied on by opposer is “…you advised my
client that you have no objection to its use and registrations of the
EYE CANDY mark as set forth above because you have no plans or
desires to use the trademark on merchandise.”

Opposition No. 121,784
10
believing the coexistence agreement only related to
applicant’s first application, he signed it. Opposer contends
that, in addition to the agreement being ambiguous and
unclear, the agreement lacks consideration because opposer did
not get anything as a result of the coexistence agreement.
Opposer also argues that applicant breached the agreement
because, according to opposer, applicant was not responsive to
opposer’s notifications of incidents of actual confusion.8
Opposer’s response is accompanied by the declaration of
its attorney, Esteban A. Rockett, and accompanying exhibits;9

8 Opposer has also requested discovery pursuant to Fed. R. Civ. P.
56(f) as to 1) facts surrounding the drafting of the coexistence
agreement; 2) the intent of the parties in signing the coexistence
agreement; and 3) applicant’s breach of the coexistence agreement,
arguing that the sought-after discovery is reasonably expected to
create genuine issues of material fact as to whether the terms of the
coexistence agreement are unclear and ambiguous, applicant’s alleged
breach of the agreement, and lack of consideration for the agreement.
Inasmuch as opposer has submitted a substantive response to
applicant’s motion for summary judgment, opposer’s request for
discovery pursuant to Fed. R. Civ. P. 56(f) is denied. See, also,
Quinn, TIPS FROM THE TTAB: Discovery Safeguards in Motions for
Summary Judgment: No Fishing Allows, 80 Trademark Rep. 413, 416
(1990).
9 Those exhibits are: a letter from opposer to applicant dated
October 13, 1998, concerning the parties recent conversations about
the marks (Ex. 1); a copy of the application for Serial No.
75/496,244 (Ex. 2); a copy of the coexistence agreement (Ex. 3);
copies of correspondence between applicant’s attorney and opposer’s
present and prior attorneys concerning opposer’s alleged experiences
of actual confusion (Ex. 4-10); copies of opposer’s discovery
requests (Ex. 11-13); a copy of an information subpoena with
restraining notice, accompanying cover letter, and opposer’s response
to the subpoena, which concerns a debt that opposer indicates is not
its debt but believes is applicant’s debt (Ex. 14-16).

Opposition No. 121,784
11
and the declaration of its owner, Ronald E. Caldwell, with
respect to his actions leading up to and resulting in the
coexistence agreement.
After careful consideration of the short, two-page
coexistence agreement, and the arguments and evidentiary
submissions presented by each party, we find that applicant
has met its burden on summary judgment of establishing that no
genuine issues of material fact exist and that it is entitled
to registration as a matter of law.
Despite opposer’s arguments to the contrary, the record
is devoid of any evidence which raises a genuine issue of
material fact as to whether the coexistence agreement is
ambiguous, whether the agreement lacks consideration, and
whether there has been a breach of the agreement on
applicant’s part.
The interpretation of an agreement must be based, not on
the subjective intention of the parties, but on the objective
words of their agreement. See Novamedix Ltd. v. NDM
Acquisition Corp., 49 USPQ2d 161, 1616 (Fed. Cir. 1999).
The first page clearly sets out both of applicant’s
pending applications, including the subject application
herein, by application serial number and by international

Opposition No. 121,784
12
classification for each class. In addition, the reference to
application Serial No. 75/496,244, the subject application,
sets forth the individual items or categories of items in each
class for which applicant is seeking registration. The second
page of the agreement expressly indicates opposer advised
applicant that opposer has “…no objection to its [applicant’s]
use and registration of the EYE CANDY mark as set forth
above….”
As to opposer’s argument that prior versions of the
agreement did not refer to the application which is the
subject matter of this opposition, even if prior versions
might create a genuine issue of material fact, here no copies
of prior versions of the agreement were submitted. Opposer’s
arguments that it “perused” the agreement, and that
“unbeknownst” to opposer, applicant included the subject
application is not supported by the agreement itself. The
agreement is short and uncomplicated in presentation. The
inclusion of application Serial No. 75/496,244 adds eight more
lines to the first page of the agreement, the same number of
lines in the first paragraph on the second page. The use of
the term “merchandise” in the first sentence of the first
paragraph of the second page does not create an ambiguity with
respect to opposer’s agreement that it does not object to
Opposition No. 121,784
13
applicant’s “…use and registration of the EYE CANDY mark as
set forth above….”
Thus, we find that the coexistence agreement is clear and
unambiguous on its face.
As to applicant’s arguments that it has not received any
consideration in exchange for “…agreeing not to initiate this
instant action,” the coexistence agreement itself evidences
the consideration. In exchange for opposer not objecting to
applicant’s use and registration, applicant indicated that
opposer’s use for its store was acceptable. Thus, no genuine
issue of material fact exists with respect to consideration
for the agreement.
Opposer’s arguments that applicant breached the contract
by being non-responsive to opposer’s notification of actual
confusion are not supported by the record. Opposer submitted
correspondence from applicant indicating applicant’s continued
willingness to work together to alleviate any confusion.
(Exhibits 4 and 9 accompanying the declaration of opposer’s
attorney.) Thus, no genuine issue of material fact exists
with respect to any alleged breach of the agreement by
applicant.
In view thereof, applicant’s motion for summary judgment
is granted, and the opposition is dismissed with prejudice.

Opposition No. 121,784
14