SR Holdings, LLCv.Flip Skateboards Inc.

Trademark Trial and Appeal Board

Apr 28, 2015

No. 91208398 (T.T.A.B. Apr. 28, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed:
April 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

SR Holdings, LLC
v.
Flip Skateboards Inc.
_____
Opposition No. 91208398
_____
Kenneth L. Wilton and Tiffany W. Shimada of Seyfarth Shaw LLP for SR Holdings,
LLC.

Brian P. Kinder of The Kinder Law Group for Flip Skateboards Inc.
_____

Before Taylor, Masiello, and Goodman, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:

Flip Skateboards Inc. (“Applicant”) filed an application to register the mark
GOLD CUP in standard characters for the following goods:
Athletic apparel, namely, shirts, pants, jackets, footwear,
hats and caps, athletic uniforms; Board shorts; Boxer
shorts; Button down shirts; Collared shirts; Denim
jackets; Dress shirts; Head sweatbands; Hooded
sweatshirts; Shorts; Socks; Sports shirts with short
sleeves; Sweat shorts; Sweatshirts; T-shirts, in
International Class 25.1

1 Application Serial No. 85445029, filed on October 12, 2011 under Trademark Act § 1(b), 15
U.S.C. § 1051(b).
Opposition No. 91208398
2

SR Holdings, LLC (“Opposer”) opposed registration of the mark on the ground
that Opposer has used the mark GOLD CUP since 2006 in connection with footwear
in interstate commerce;2 and that Applicant’s mark, as used in connection with the
identified goods, so resembles Opposer’s earlier used mark as to be likely to cause
confusion, mistake or deception, under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d).
Applicant, in its answer, denied the salient allegations of the notice of opposition.
Applicant stated affirmative defenses of abandonment, estoppel, acquiescence, and
unclean hands.
The record includes the pleadings and, by operation of Trademark Rule 2.122, 37
C.F.R. § 2.122, the application file for the opposed mark. Opposer filed a notice of
reliance on its first set of requests for admission, with a statement that Applicant
failed to respond thereto;3 and a brief on the case. Applicant has filed no testimony
or evidence and has not submitted a brief on the case. However, even though
Applicant has filed no evidence or brief, Opposer, as plaintiff in this proceeding,
must nonetheless prove its standing and its claims by a preponderance of the
evidence. Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754 (Fed. Cir.
1998).
A. Standing.
Standing is a threshold issue that must be proven in every inter partes case. See
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189

2 Notice of Opposition ¶ 3, 1 TTABVUE 3.
3 12 TTABVUE; see 37 C.F.R. § 2.120(j)(3)(i).
Opposition No. 91208398
3

(CCPA 1982). To establish standing Opposer must show that it has a “real interest”
in the outcome of the proceeding; that is, that it has a direct and personal stake in
the outcome of the case. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023
(Fed. Cir. 1999). In most circumstances, a direct commercial interest satisfies the
“real interest” test. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000).
For proof of its standing, Opposer relies upon its unanswered requests for
admission. The matter set forth in the requests for admission is deemed admitted
by operation of law in accordance with Fed. R. Civ. P. 36(a)(3), because Applicant
failed to answer the requests for admission and made no motion to withdraw or
amend its admissions. See Fed. R. Civ. P. 36(b) (“A matter admitted under this rule
is conclusively established unless the court, on motion, permits the admission to be
withdrawn or amended.”).4
By means of the unanswered requests for admission, Opposer has conclusively
established that “[w]hen Applicant selected Applicant’s mark, it was aware of
Opposer’s Mark [GOLD CUP]”; and that “[t]hird parties have commented to
Applicant, either orally or in writing, that Applicant’s Mark is confusingly similar
to, or reminds them of, Opposer’s Mark.”5 These admissions are sufficient to show

4 It has been held an abuse of discretion for a court to withdraw or ignore such an
admission where there has been no motion to withdraw or amend. American Automobile
Association (Inc.) v. AAA Legal Clinic of Jefferson Crooke, 930 F.2d 1117, 19 USPQ2d 1142
(5th Cir. 1991) (quoting Advisory Committee’s Note, 48 F.R.D. 487, 534 (1970): “In form and
substance a Rule 36 admission is comparable to an admission in pleadings or a stipulation
drafted by counsel for use at trial, rather than to an evidentiary admission of a party.”)
5 Requests for admission Nos. 2 and 18, 12 TTABVUE 6-8.
Opposition No. 91208398
4

that Opposer is not a mere intermeddler and has standing to bring this proceeding.
Lipton Industries, Inc. v. Ralston Purina Co., 213 USPQ at 185.
B. Opposer’s claim under Section 2(d).
In order to prove a claim based on likelihood of confusion under Trademark Act §
2(d), Opposer must demonstrate that it acquired rights in its mark prior to
Applicant’s first use of its mark. Otto Roth & Co., Inc. v. Universal Foods Corp., 640
F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Threshold.TV, Inc. and Blackbelt TV,
Inc. v. Metronome Enterprises, Inc., 96 USPQ2d 1031, 1036 (TTAB 2010). For its
proof, Opposer relies solely on its unanswered requests for admission. Although
Applicant has submitted no evidence of use, Applicant may rely on the filing date of
its application, October 12, 2011, as a date of constructive use. Levi Strauss & Co. v.
R. Josephs Sportswear, 28 U.S.P.Q.2d 1464, 1467 (T.T.A.B. 1993), reconsideration
denied, 36 U.S.P.Q.2d 1328 (T.T.A.B. 1994); Larami Corp. v. Talk To Me Programs
Inc., 36 USPQ2d 1840 (TTAB 1995).
The unanswered requests for admission establish that “Opposer first used
Opposer’s Mark in the United States prior to the Applicant’s first use of Applicant’s
Mark in the United States.”6 This admission leaves unanswered the question of
whether Opposer first used its mark prior to Applicant’s filing date. We note,
however, the admissions that “[w]hen Applicant selected Applicant’s Mark, it was
aware of Opposer’s Mark”; “[w]hen Applicant selected Applicant’s Mark, one or
more of its managers or members had previously purchased the product sold under

6 Request for admission No. 6, 12 TTABVUE 6.
Opposition No. 91208398
5

Opposer’s Mark”; and “[w]hen Applicant selected Applicant’s Mark, it was aware of
Opposer’s prior use of Opposer’s Mark.”7 Inasmuch as selection of a mark must, a
fortiori, occur prior to the filing of an application to register the mark, we take these
admissions as sufficient to establish Opposer’s use of its mark prior Applicant’s
filing date.
Our determination of likelihood of confusion is based on an analysis of all
probative facts in evidence that are relevant to the factors set forth in In re E. I. du
Pont de Nemours & Co. 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Applicant’s mark is GOLD CUP in standard characters. Opposer, in its requests
for admission, defined “Opposer’s Mark” to mean “the mark ‘GOLD CUP.’”8 As
noted above, Applicant is deemed to have admitted Opposer’s use of “Opposer’s
Mark.” Accordingly, the marks at issue are identical.
Opposer alleges that it uses its mark on “footwear”;9 but Opposer has neither
proven this fact nor elicited an admission as to this fact. We note, however, that the
unanswered requests for admission do establish that Applicant both intends to and
does “use[ ] Applicant’s Mark on goods which are identical to those goods on which

7 Requests for admission Nos. 2, 3, and 4, 12 TTABVUE 6.
8 12 TTABVUE 6.
9 Notice of opposition ¶ 3, 1 TTABVUE 3.
Opposition No. 91208398
6

Opposer uses Opposer’s Mark.”10 Thus, the identity of the goods is established,
albeit without specificity as to the actual nature of the goods.
Because the parties’ goods are identical, we must presume that they move
through the same channels of trade and that the classes of customers to whom they
are offered are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012); American Lebanese Syrian Associated Charities Inc. v. Child
Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994).
There is no fact-based evidence relating to any of the other du Pont factors,
although there are other unanswered requests for admission relating to customer
perceptions and actual confusion. Let it suffice to say that they favor Opposer. In
view of the identical nature of the marks and goods and our presumption that the
goods travel in the same trade channels and are directed to the same classes of
customers, we find that Applicant’s mark so resembles Opposer’s mark as to be
likely to give rise to confusion, mistake or deception as to the source of Applicant’s
goods.
Decision: The opposition is sustained.

10 Requests for admission Nos. 9 and 12, 12 TTABVUE 7.