Sazerac Brands, LLCv.Bison Union LLC and Bison Union IP Holdings LLC

Trademark Trial and Appeal Board

Aug 15, 2019

91241904 (T.T.A.B. Aug. 15, 2019)

mbm
August 15, 2019

Opposition No. 91241904

Sazerac Brands, LLC

v.
Bison Union LLC and Bison Union IP
Holdings LLC

Before Zervas, Pologeorgis, and Coggins,
Administrative Trademark Judges.

By the Board:

This proceeding now comes before the Board for consideration of the following: (1)
Opposer’s motion for leave to amend its notice of opposition;1 (2) Opposer’s motion for
partial summary judgment; and (3) Applicant’s motion to divide its application Serial
No. 87740377. The motions to amend the pleading and for partial summary judgment
are fully briefed.
I. Background
Applicant seeks to register the design mark shown below for “Cologne” in
International Class 3, “Candles” in International Class 4, “Flatware” in International
Class 8, “Stickers” in International Class 16, “Collars for pets” in International Class

1 Opposer filed a copy of its proposed amended pleading concurrently with its motion for leave
to amend.
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
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91241904

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18, “Beverageware” in International Class 21, “Hats; Tops as clothing for men and
women; Bottoms as clothing for men and women” in International Class 25, “Jerky”
in International Class 29, “Coffee” in International Class 30, and “Whiskey” in
International Class 33:2

On June 4, 2018, Opposer filed a notice of opposition against registration of
Applicant’s mark in Class 33 only on the sole ground of likelihood of confusion
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). In support of its
standing and as a basis for its claim, Opposer pleaded ownership of seven
registrations for marks consisting of or including a buffalo design or the word
“BUFFALO.” In its answer, Applicant denied the salient allegations in the notice of
opposition.3

2 Application Serial No. 87740377, filed January 2, 2018. The description of the mark is as
follows: “The mark consists of a stylized right facing buffalo with a horn shape cut out of the
design and a[sic] also a cut our[sic] of a stylized branding on the back of the bison which is
comprised of two arrows, one left facing angled from bottom to top and one right facing from
bottom to top such as they create an X appearance.” Color is not claimed as a feature of the
mark.
3 In its answer, Applicant asserts two “affirmative defenses,” namely, that there is no
likelihood of confusion and that other third party marks use buffalo or bison. The allegations
are not affirmative defenses, and will not be treated as such. Instead, we construe these
defenses as mere amplifications of Applicant’s denial of Opposer’s claim of likelihood of
confusion. See Order of Sons of Italy in Am. v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221,
1223 (TTAB 1995) (amplification of applicant’s denial of opposer’s claims not stricken).
Additionally, Applicant attempts to reserve the right to assert additional affirmative defenses
Opposition No. 91241904

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On April 10, 2019, Opposer filed its motion for leave to amend its pleading.
Pursuant to Fed. R. Civ. P. 15(a)(2), Opposer seeks to add an additional ground for
opposition, namely, that Applicant did not have a bona fide intent to use its mark in
connection with the goods in Class 33 as of the filing date of the application. Opposer
concurrently moved pursuant to Fed. R. Civ. P. 56(a) for partial summary judgment
with respect to the proposed claim of a lack of bona fide intent.
On April 23, 2019, Applicant filed a motion to divide its application to remove
unopposed Classes 3, 4, 8, 16, 18, 21, 25, 29 and 30 from its involved application into
a child application.
II. Applicant’s Motion to Divide Its Application
Applicant seeks to divide its involved application to place the goods and services
not opposed by Opposer into a child application. An application that is subject of an
inter partes proceeding before the Board may be divided into two or more applications
upon motion granted by the Board and payment of the required fee.4 Where a
multiple-class application is the subject of an inter partes proceeding, but not all of
the classes in the application are at issue, it is appropriate to divide out the
uncontested classes. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (“TBMP”) § 516 (2019). Applicant’s request to divide its application is

at some point in the future. A defendant cannot reserve the right to assert affirmative
defenses, because it does not provide a plaintiff fair notice of the defenses. Rather, a
defendant seeking to assert additional affirmative defenses must do so by way of motion for
leave to amend under Fed. R. Civ. P. 15(a). Accordingly, Applicant’s reservation of the right
to amend its answer is stricken.
4 Applicant has submitted the requisite fee.
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granted, and application Serial No. 87740377 will be divided into a “parent”
application to include the goods in International Class 33 and a “child” application to
include the goods and services in International Classes 3, 4, 8, 16, 18, 21, 25, 29 and
30. Notification will be sent to the USPTO’s ITU/Divisional Unit for processing of the
divisional request and the child application will be forwarded to issuance of a notice
of allowance. The parent application remains subject to this opposition proceeding.
III. Opposer’s Motion for Leave to Amend Its Pleading
In support of its motion for leave to amend the notice of opposition to add a claim
that Applicant lacked a bona fide intent to use its mark in commerce in connection
with whiskey at the time the application was filed, Opposer states that it obtained
the information for the basis of the proposed additional claim through discovery
responses provided by Applicant. Specifically, Opposer states that Applicant served
responses to Opposer’s interrogatories, document requests, and requests for
admission on February 7, 2019. 7 TTABVUE 16-17. Applicant also served documents
responsive to Opposer’s document requests on the same date. Id. In response to the
discovery requests, Applicant stated, inter alia, that it had no documents relating to
Applicant’s intent or preparation to use its involved mark for whiskey. Id. at 32, 35.
A party that seeks summary judgment on an unpleaded claim may move
simultaneously to amend its pleading to assert the proposed claim. See TBMP
§ 528.07(a). Under Fed. R. Civ. P. 15(a), leave to amend pleadings shall be freely given
when justice so requires. Consistent therewith, the Board liberally grants leave to
amend pleadings at any stage of the proceeding when justice requires, unless entry
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of the proposed amendment would violate settled law or be prejudicial to the rights
of the adverse party or parties. See Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha,
26 USPQ2d 1503 (TTAB 1993); U.S. Olympic Comm. v. O-M Bread Inc., 26 USPQ2d
1221 (TTAB 1993). In deciding whether to grant leave to amend, a tribunal may
consider undue delay, prejudice to the opposing party, bad faith or dilatory motive,
futility of the amendment, and whether the party has previously amended its
pleadings. See Foman v. Davis, 371 U.S. 178, 182 (1962).
The timing of the motion for leave to amend is a major factor in determining
whether Applicant would be prejudiced by allowance of the proposed amendment. See
TBMP § 507.02 and cases cited therein. A motion for leave to amend should be filed
as soon as any ground for such amendment, e.g., newly discovered evidence, becomes
apparent.
On the record, we do not find any evidence of bad faith or dilatory motive on the
part of Opposer in seeking to amend its pleading. Although it would have been a
better practice for Opposer to have sought leave to amend its pleading shortly after
receiving Applicant’s responses to written discovery, we nonetheless do not find that
the approximate two-month period constitutes undue delay. Moreover, the concept of
“undue delay” is inextricably linked with the concept of prejudice to the non-moving
party. See Marshall Field & Co. v. Mrs. Field Cookies, 11 USPQ2d 1355, 1359 (TTAB
1989). In this case, we find no such prejudice to Applicant in allowing Opposer to add
its proposed new claim at this juncture in the proceeding (i.e., after the close of
discovery), particularly since any evidence regarding Applicant’s intent to use its
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involved mark would be in Applicant’s own possession, custody or control. Although
Applicant states in conclusory fashion that Applicant will be prejudiced by the
proposed amendment without an opportunity for discovery, Applicant does not
explain what discovery it would need, nor does Applicant identify any specific
prejudice.
Additionally, this is the first instance where Opposer has sought to amend its
pleading and Opposer has therefore not abused its right to amend its pleading.
With regard to the legal sufficiency of Opposer’s proposed claim, we find that
Opposer has adequately pleaded its standing as well as its proposed claim that
Applicant lacked the requisite bona fide intent to use its mark in commerce with
whiskey at the time it filed its application.
In view of the foregoing, Opposer’s motion to amend its pleading is granted, and
Opposer’s April 10, 2019 amended notice of opposition, see 6 TTABVUE 19-24, is
accepted as the operative pleading in this proceeding.
IV. Opposer’s Motion for Partial Summary Judgment
Opposer moves for partial summary judgment only on its newly pleaded claim
that Applicant lacked the requisite bona fide intent to use its involved mark in
connection with whiskey at the time it filed its application.
For purposes of this order, we presume the parties’ familiarity with the pleadings,
the history of the proceedings, and the additional arguments and evidence submitted
with respect to Opposer’s motion and Applicant’s response thereto.
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Summary judgment is an appropriate method of disposing of cases in which there
are no genuine disputes as to material facts, thus allowing resolution as a matter of
law. See Fed. R. Civ. P. 56(a). In deciding motions for summary judgment, the Board
must follow the well-established principles that, in considering the propriety of
summary judgment, all evidence must be viewed in the light most favorable to the
non-movant, and all justifiable inferences are to be drawn in the non-movant’s favor.
The Board also may not resolve disputes of material fact; it may only ascertain
whether such disputes exist. See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766,
25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc v. Great Am. Music Show Inc.,
970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); Olde Tyme Foods Inc v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
The burden is on the party moving for summary judgment to demonstrate the
absence of any genuine dispute of material fact and that it is entitled to summary
judgment as a matter of law. Fed. R. Civ. P. 56(c). When a moving party’s motion for
summary judgment is supported by evidence sufficient to indicate that there is no
genuine dispute as to any material fact and that the moving party is entitled to
judgment, the burden shifts to the non-moving party to demonstrate the existence of
at least one genuine dispute as to a material fact that requires resolution at trial.
Enbridge, Inc. v. Excelerate Energy Ltd. P’ship, 82 USPQ2d 1537, 1540 (TTAB 2009).
The non-moving party may not rest on the mere allegations of its pleadings and
assertions, but must designate specific portions of the record or produce additional
evidence showing the existence of a genuine dispute as to a material fact for trial. See
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Fed. R. Civ. P. 56(c). Consequently, factual assertions, without evidentiary support,
are insufficient to defend against a motion for summary judgment. See Hornblower
& Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1739 (TTAB 2001).
The non-moving party must be given the benefit of all reasonable doubt as to
whether genuine disputes of material fact exist, and the evidentiary record on
summary judgment, and all inferences to be drawn from the undisputed facts, must
be viewed in the light most favorable to the non-moving party. See Opryland USA
Inc., 23 USPQ2d at 1472.
A. Standing
The Board first considers Opposer’s standing, which is a threshold issue that must
be pleaded and proven by the plaintiff in every inter partes case. See Empresa Cubana
Del Tabaco v. Gen Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);
Ritchie v. Simpson, 171 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999).
Opposer has pleaded prior use and registration of seven marks, which it asserts are
confusingly similar to Applicant’s involved mark. Opposer states in paragraph 2 of
its amended notice of opposition (6 TTABVUE 20) that it attached Trademark Status
and Document Retrieval (“TSDR”) copies of its pleaded registrations thereto, but
Opposer failed to attach copies of the registrations. Opposer has therefore pleaded
facts which, if proved, would be sufficient to establish its standing; however, the
allegations alone do not establish Opposer’s standing. For the Board to grant a motion
for summary judgment in its favor, Opposer must establish that there is no genuine
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dispute of material fact as to its standing to bring the case. See United Rum
Merchants Ltd. v. Distillers Corp. (S.A.) Ltd., 9 USPQ2d 1481, 1483 (TTAB 1988).
Accordingly, Opposer has failed to meet its initial burden of demonstrating the
absence of a genuine dispute of material fact with respect to its standing to bring this
proceeding.
B. Lack of Bona Fide Intent to Use
To prevail on its claim of lack of bona fide intent to use, Opposer must establish
that there is no genuine dispute of material fact that Applicant did not have a bona
fide intent to use its mark on whiskey as of the filing date of the application under
Section 1(b) of the Trademark Act. Section 1(b) of the Trademark Act provides:
A person who has a bona fide intention, under circumstances showing the good
faith of such person, to use a trademark in commerce may request registration
of its trademark on the principal register hereby established by paying the
prescribed fee and filing in the Patent and Trademark Office an application
and a verified statement, in such form as may be prescribed by the Director.
15 U.S.C. § 1051(b).
Whether an applicant had a bona fide intention to use its mark in commerce is an
objective determination based on all of the circumstances. Bos. Red Sox Baseball Club
LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008). “[T]he focus is on the entirety
of the circumstances, as revealed by the evidence of record.” Lane Ltd. v. Jackson Int’l
Trading Co., 33 USPQ2d 1351, 1356 (TTAB 1994); see also Swatch AG (Swatch SA)
(Swatch Ltd.) v. M.Z. Berger & Co., 108 USPQ2d 1463, 1471 (TTAB 2013). The
evidentiary bar for showing bona fide intent to use is not high, but requires more than
“a mere subjective belief.” M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114
USPQ2d 1892, 1897-98 (Fed. Cir. 2015).
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Although the factual question of intent is generally unsuited to disposition on
summary judgment, see Copelands’ Enters., Inc. v. CNV, Inc., 945 F.2d 1563, 20
USPQ2d 1295, 1299 (Fed. Cir. 1991), an opposer can establish a prima facie case of
no bona fide intent by demonstrating “the absence of any documentary evidence on
the part of an applicant regarding such intent…” Commodore Elecs. Ltd., 26 USPQ2d
at 1507. If the opposer is able to do so, the burden of production shifts to the applicant
to come forward with “other facts which adequately explain or outweigh the failure
of [the] applicant to have any documents supportive of or bearing upon its claimed
intent to use its mark in commerce….” Id.; Honda Motor Co. v. Winkelmann, 90
USPQ2d 1660, 1662 (TTAB 2009) (“The Board has held … that the absence of any
documentary evidence regarding an applicant’s bona fide intention to use a mark in
commerce is sufficient to prove that an applicant lacks such intention as required by
Section 1(b) of the Trademark Act, unless other facts are presented which adequately
explain or outweigh applicant’s failure to provide such documentary evidence.”).
In support of its motion, Opposer submits the declaration of Cynthia Johnson
Walden, counsel for Opposer, who attached the following: Opposer’s first set of
interrogatories and Applicant’s responses thereto; Opposer’s first set of document
requests and Applicant’s responses thereto; Opposer’s first set of requests for
admission and Applicant’s responses thereto; and a copy of all documents produced
by Applicant to Opposer in this proceeding.
In response to Opposer’s interrogatories, Applicant stated that it does not recall
discussing its plans to use its mark in connection with whiskey with anyone other
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than its attorney. 7 TTABVUE 23. Additionally, Applicant states that it has not yet
determined channels of trade, a price, or a source for its whiskey, has not entered into
any agreements, contracts or licenses, has not identified any business partners, and
has prepared no marketing studies, labels, packaging, marketing materials, or
advertising materials. Id. at 23-26.
Applicant stated in response to Opposer’s document requests that it had no
documents in its possession, custody, or control relating to its planned use of the mark
aside from the filings made in this opposition. Id. at 32, 35. The only documents
produced by Applicant consist of a copy of a website providing information about
buffalo, copies of third-party marks, and a copy of a cease and desist letter sent by
Opposer to Applicant and Applicant’s response thereto. Id. at 47-76. Applicant
produced no documents evidencing or relating to Applicant’s purported planned use
of its involved mark in connection with whiskey or demonstrating any steps toward
using its mark. Similarly, Applicant submitted no documents or other evidence in
response to Opposer’s motion for partial summary judgment.
Applicant states that it “will present” information “such as social media following
and actual bison ranch ownership which shows that [Applicant] has a substantial
customer base in complimentary markets as well as other facts and circumstances
not addressed in the Interrogatories since Lack of Bona Fide Intent was never raised
in the Pleadings.” 9 TTABVUE 8. The unsupported statements in Applicant’s
response brief are not evidence and are therefore insufficient to raise a genuine
dispute of material fact. See Honda Motor Co., Ltd., 90 USPQ2d at 1664. Moreover,
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although Applicant contends that the interrogatories were not related to the claim of
lack of intent to use, many of the interrogatories and document requests clearly
sought information and documents showing Applicant’s use or planned use of its
involved mark in connection with whiskey. Applicant has had opportunities to submit
evidence or documents evidencing its planned use of its mark both in response to the
pertinent discovery requests and in response to Opposer’s motion for summary
judgment. See A&H Sportswear Co., Inc. v. Yedor 2019 USPQ2d 111513 BL *4 (TTAB
2019) (“Applicant has had opportunities—both in responding to discovery, and in
responding to Opposer’s motion—to come forward with documentary or other
evidence to show any concrete steps taken or plans made to actually use [its] mark
contemporaneous with filing [its] involved application, such as manufacturing,
licensing or marketing efforts, a functioning website, correspondence with potential
licensees, marketing plans, business plans, or the creation of labels or promotional
materials.”).
In its responses to Opposer’s document requests, Applicant states that it has no
documents because of the opposition. 7 TTABVUE 32, 35. The opposition proceeding,
which was filed June 4, 2018, has no bearing on Applicant’s lack of documents or
other support demonstrating Applicant’s intent to use its mark at the time it filed its
application on January 2, 2018. See A&H Sportswear Co., Inc., 2019 USPQ2d at BL
*5-6 (rejecting argument that legal challenge that was not pending at the time the
applicant filed its application “could provide a reason for the lack of evidence of his
intent to use the mark at that time.”). In response to the motion for summary
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judgment, Applicant provides no explanation or justification for its lack of
documentary evidence or other support related to its intent to use the mark at the
time it filed its application.
On the record, we find that there is no documentary evidence of Applicant’s bona
fide intent to use its mark in commerce with whiskey as of the filing date of the
application. In view of the foregoing, we find that Opposer has met its initial burden
of demonstrating the absence of any documentary evidence to support Applicant’s
bona fide intent to use its mark. See Swatch AG (Swatch SA) (Swatch Ltd.), 108
USPQ2d at 1471. Applicant has not provided any evidence, documentary or
otherwise, to explain or outweigh the lack of documentary support so as to raise a
genuine dispute of material fact.
In view of the foregoing, the Board finds that Opposer has met its burden in
establishing that there is no genuine dispute of material fact as to Applicant’s lack of
bona fide intent to use its mark in commerce for whiskey as of the filing date of the
application. Notwithstanding this finding, in light of Opposer’s failure to establish its
standing, Opposer’s motion for summary judgment may not be granted at this time.
Accordingly, Opposer is allowed until twenty days from the date of this order to
submit a supplement to its motion for summary judgment demonstrating the absence
of a genuine dispute of material fact regarding its standing. Applicant in turn is
allowed until twenty days from the date of service of Opposer’s supplemental filing
in which to file a response thereto, should it so choose. If the supplemental filings are
sufficient to establish that there is no genuine dispute of material fact as to Opposer’s
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standing, the motion for partial summary judgment may be granted as to Opposer’s
standing and as to the ground of no bona fide intent. If the supplemental filings are
not sufficient to establish Opposer’s standing, the motion for summary judgment will
be denied, proceedings will be resumed, and dates reset including a date for filing an
answer to the amended Notice of Opposition. See Paramount Pictures Corp. v. White,
31 USPQ2d 1768, 1776 (TTAB 1994).
Proceedings otherwise remain suspended.