San Elijo Hills Development Co.v.Rule 66, LLC

Trademark Trial and Appeal Board

Mar 27, 2015

No. 92055855 (T.T.A.B. Mar. 27, 2015)

DUNN

Mailed: March 27, 2015

Cancellation No. 92055855
San Elijo Hills Development
Co.

v.
Rule 66, LLC

Before Lykos, Kuczma, and Masiello, Administrative Trademark
Judges:

By the Board:

This case comes up on Petitioner’s motion, filed November 12, 2014, for
summary judgment on the pleaded claim of priority of use and likelihood of
confusion. The motion is fully briefed.
On November 9, 2010, Registration No. 3875126 issued to Rule 66,
LLC, a limited liability company of California, on the Supplemental Register
for the mark SAN ELIJO HILLS VISITORS CENTER (VISITORS CENTER
disclaimed) for “Visitors information center, namely, promoting business and
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.
Cancellation No. 92055855
2

tourism in the San Marcos community,” alleging September 1, 2009 as its
dates of first use.
Petitioner has pleaded ownership of the following registrations:

Registration No.
2306162 issued
January 4, 2000

Registration No.
2425085 issued
February 8, 2000

Registration No.
2384997 issued
September 12, 2000

Registration No.
2425085 issued
January 30, 2001

SAN ELIJO
HILLS

[standard
characters]

SAN ELIJO

[standard
characters]

real estate
development
services, use since
October 1, 1998

real estate
development
services, use since
October 15, 1998

real estate
development
services, use since
October 1, 1998

real estate
development
services, use since
October 1, 1998

On July 13, 2012, Petitioner filed a petition to cancel Registration No.
3875126 on the grounds of priority of use and likelihood of confusion with its
marks, based on both prior common law use and its pleaded registrations.
Respondent filed an answer denying the salient allegations of the petition to
cancel, and asserted various affirmative defenses.
Discovery closed September 13, 2014.
DISCUSSION
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,
and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P.
Cancellation No. 92055855
3

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).
To obtain cancellation of the registration, the petitioning party must
show both standing and valid grounds for cancellation. Cunningham v. Laser
Golf Corp., 222 F.3d 943, 945, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Here,
Petitioner submits the declaration of attorney Katherine Hoffman averring
that Petitioner has continuously used the marks in commerce from 1998 to
the present. Hoffman’s declaration is sufficient to show Petitioner’s standing.
See Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009)
(common-law use sufficient to establish standing).1

1 Petitioner submitted copies of its registration certificates with its motion for
summary judgment. The submission of a photocopy of a pleaded registration, by
itself, is insufficient for purposes of establishing a party’s current ownership, or the
current status, of the registration. See Sterling Jewelers Inc. v. Romance & Co., Inc.,
110 USPQ2d 1598, 1601 (TTAB 2014) citing Trademark Trial and Appeal Board
Manual of Procedure (TBMP) §704.03(b)(1)(A) (2014) and authorities cited therein.
The Board notes that deposition testimony established Petitioner’s ownership of the
registrations, but not their current status. Accordingly, Petitioner’s pleaded
registrations have not been made of record. The parties are advised that submission
of status copies of the registrations would not have changed the Board’s decision on
this motion for summary judgment.
Cancellation No. 92055855
4

In order for Petitioner to prevail on its motion for summary judgment,
Petitioner must establish that there is no genuine dispute that it has prior
proprietary rights in its SAN ELIJO HILLS and SAN ELIJO marks, and that
contemporaneous use of the parties’ respective marks in connection with
their respective services would be likely to cause confusion or mistake or to
deceive consumers. See Hornblower & Weeks, Inc. v. Hornblower & Weeks,
Inc., 60 USPQ2d 1733, 1735 (TTAB 2001). 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). One of the factors for consideration is
“the market interface between applicant and the owner of a prior mark,”
including whether there has been consent to use the mark, or laches and
estoppel attributable to the owner of the prior mark and indicative of lack of
confusion. Id. at 567.
Here, Petitioner contends that the marks create the identical
commercial impression inasmuch as Respondent merely adds the generic and
disclaimed term VISITORS CENTER to Petitioner’s earlier-used SAN ELIJO
HILLS marks to create the mark SAN ELIJO HILLS VISITORS CENTER,
and that Respondent uses the mark on visitors center services which are
closely related to Petitioner’s real estate development services. Petitioner
asserts that Petitioner formerly owned Respondent’s visitors center building
and used it to promote Petitioner’s real estate business while answering
Cancellation No. 92055855
5

questions about the surrounding community; that the 2009 sale of the
visitors center building to Respondent did not include Petitioner’s rights to
the SAN ELIJO HILLS mark; that Petitioner is aware of actual confusion,
and that Respondent’s SAN ELIJO HILLS VISITORS CENTER registration
is likely to create confusion as to the source of Respondent’s services.
Petitioner submits the declaration of its attorney Katherine Hoffman, the
2009 sales agreement conveying the visitors center, and excerpts from the
depositions of Hale Richardson, Petitioner’s Director of Marketing, and
Robert Goetz.2
Respondent contends that no confusion is likely because the
Petitioner’s marks are geographically descriptive, widely used by third
parties, and entitled to only minimal protection, that the services with which
the parties’ respective marks are used are not related, and that Petitioner
effectively gave its consent to Respondent’s use of the SAN ELIJO HILLS

2 To establish the necessary foundation for the consideration of testimony, and
when first referring to an individual in a motion or response, the parties are ordered
to list the individual’s title (as listed in the articles of incorporation), or to otherwise
describe their role relative to the party. Petitioner’s motion for summary judgment
(page 3) describes Goetz as the person “who registered the mark… on behalf of
Registrant.” All application papers underlying the subject registration, and all
papers filed in this proceeding on behalf of Respondent, were signed by counsel. The
sales agreement submitted by Petitioner shows that Petitioner conveyed the visitors
center building to Goetz, and not Respondent. In the transcript pages attached to
Petitioner’s motion, Goetz refers to himself, and not Respondent, as the owner of the
mark. Clearly, the unexplained relationship between Goetz and Respondent is
central to the evidence submitted in connection with the motion for summary
judgment.
For the purposes of this motion, the Board will consider Mr. Goetz’ testimony
as if he is an officer of Respondent. However, at trial evidence not obtained and filed
in compliance with the Board’s rules will not be considered. Trademark Rule
2.123(l).

Cancellation No. 92055855
6

VISITORS CENTER mark inasmuch as Petitioner installed a plaque on the
building identifying it as the SAN ELIJO HILLS VISITORS CENTER, that
this phrase is how the building was identified throughout the conveyance
papers with Respondent, that the plaque was left in place when Petitioner
left the building, and that Respondent reasonably believed that Petitioner
also conveyed the right to use the mark the SAN ELIJO HILLS VISITORS
CENTER in connection with the visitors center services. Respondent submits
the declaration of its attorney Jared Roark, excerpts from the International
Classification of Goods and Services for the Purposes of the Registration of
Marks (10th ed. 2014), the San Elijo Business Directory, and excerpts from
the depositions of Hale Richardson, Petitioner’s Director of Marketing, and
Robert Goetz.
Upon careful consideration of the evidence and arguments submitted
by the parties, the Board finds that, at a minimum, there are genuine
disputes as to the strength of Petitioner’s marks; the degree of commercial
relatedness between the parties’ respective services; whether the use of their
respective marks would be likely to cause confusion when used in connection
with their respective services, and whether, under the circumstances
surrounding the sale of the visitors center building to Respondent, Petitioner
consented or acquiesced to Respondent’s use of the mark. Accordingly,
Petitioner’s motion for summary judgment on the claim of priority of use and
likelihood of confusion is denied.
Cancellation No. 92055855
7

Proceedings herein are resumed, and dates are reset below:
Discovery CLOSED
Plaintiff's Pretrial Disclosures 4/29/2015
Plaintiff's 30-day Trial Period Ends 6/13/2015
Defendant's Pretrial Disclosures 6/28/2015
Defendant's 30-day Trial Period Ends 8/12/2015
Plaintiff's Rebuttal Disclosures 8/27/2015
Plaintiff's 15-day Rebuttal Period Ends 9/26/2015

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