Ste. Michelle Wine Estates, Ltd.v.Klosterstift St. Marienthal, Korperschaft des offentlichen Rechts

Trademark Trial and Appeal Board

May 9, 2013

No. 91202261 (T.T.A.B. May. 9, 2013)

GCP Mailed: May 9, 2013

Opposition No. 91202261

Ste. Michelle Wine Estates,
Ltd.

v.

Klosterstift St. Marienthal,
Körperschaft des öffentlichen
Rechts

Before Quinn, Zervas, and Cataldo,
Administrative Trademark Judges.

By the Board:
Klosterstift St. Marienthal, Körperschaft des
öffentlichen Rechts (“applicant”) seeks to register the
mark SEIT 1557 ST.M ST. MARÍENTHALER KLOSTERBRÄU and
design, as illustrated below, for “beer” in International
Class 32.1

1 Application Serial No. 79092965, filed on December 11, 2010,
based upon an allegation of a bona fide intention to use the mark
in commerce under Section 66(a) of the Trademark Act. Applicant
has provided the English translation of the term “SEIT” to mean
“since” and the word “KLOSTERBRÄU” to mean “monastery beer.”

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
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Opposition No. 91202261

3
For purposes of this order, we presume the parties’
familiarity with the pleadings, the history of the
proceeding and the arguments and evidence submitted with
respect to each motion.
A party is entitled to summary judgment when it has
demonstrated that there are no genuine disputes as to any
material facts, and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(a). The evidence must
be viewed in a light favorable to the nonmoving party, and
all justifiable inferences are to be drawn in the
nonmovant’s favor. Opryland USA Inc. v. The Great American
Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir.
1992).
When the moving party has supported its motion with
sufficient evidence which, if unopposed, indicates there is
no genuine dispute of material fact, the burden then shifts
to the non-moving party to demonstrate the existence of a
genuine dispute of material fact to be resolved at trial.
Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537,
1540 (TTAB 2009). Further, merely because both parties
have moved for summary judgment does not necessarily mean
that there are no genuine disputes of material fact, and
does not dictate that judgment should be entered. See
Opposition No. 91202261

4
University Book Store v. University of Wisconsin Board of
Regents, 33 USPQ2d 1385, 1389 (TTAB 1994).
Upon careful consideration of the arguments and
evidence presented by the parties, and drawing all
inferences with respect to each motion in favor of each
nonmoving party, we find that neither applicant nor opposer
has demonstrated the absence of a genuine dispute of
material fact for trial and that it is entitled to judgment
under applicable law.
In light of the parties’ conflicting affidavits and
other supporting evidence, we find, at a minimum, that a
genuine dispute of material fact exists as to the
similarities between the parties’ respective marks, in
particular the commercial connotation and/or impression
conveyed by each mark. We additionally find that a genuine
dispute of material fact exists as to whether applicant had
a bona fide intention to use its mark at the time it filed
its application.
In view thereof, applicant’s motion and opposer’s
cross-motion for summary judgment on opposer’s asserted
claims of likelihood of confusion and lack of a bona fide
intent are DENIED.4

4 The parties should note that the evidence submitted in
connection with their cross-motions is of record only for
consideration of those motions, except for the evidence submitted
Opposition No. 91202261

5
With regard to the question of standing and priority,
however, we find that inasmuch as opposer’s pleaded
Registration No. 3101191 is of record by submission of a
Trademark Application and Registration Retrieval (“TARR”)
database printout of the same with opposer’s cross-motion
for summary judgment; opposer’s standing and priority are
not at issue. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) and King Candy
Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108, 110 (CCPA 1974). Moreover, applicant does not dispute
opposer’s standing and priority of use. Accordingly, there
is no genuine dispute of material fact as to opposer’s
standing and priority.
In view thereof, opposer’s cross-motion for summary
judgment is GRANTED solely in regard to opposer’s standing
and priority of use.
Trial Schedule

by opposer to support its standing and priority of use. See
infra. To be considered at final hearing, any such evidence must
be properly introduced in evidence during the appropriate trial
period. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28
USPQ2d 1464 (TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB
(1983). Furthermore, the fact that we have identified certain
genuine disputes as to material facts sufficient to deny the
parties’ cross-motions should not be construed as a finding that
these are necessarily the only disputes which remain for trial.

Opposition No. 91202261

6
Proceedings herein are RESUMED. Discovery is open.
Trial dates, beginning with the deadline for expert
disclosures, are reset as follows:
Expert Disclosures Due 6/1/2013
Discovery Closes 7/1/2013
Plaintiff's Pretrial
Disclosures 8/15/2013
Plaintiff's 30-day Trial Period
Ends 9/29/2013
Defendant's Pretrial
Disclosures 10/14/2013
Defendant's 30-day Trial Period
Ends 11/28/2013
Plaintiff's Rebuttal
Disclosures 12/13/2013
Plaintiff's 15-day Rebuttal
Period Ends 1/12/2014

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.
Briefs shall be filed in accordance with Trademarks
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.129.