Sturgis Motorcycle Rally, Inc.v.Gary St. Martin Hansen a/k/a Gary Kimble St. Martin

Trademark Trial and Appeal Board

Jul 18, 2017

No. 91217630 (T.T.A.B. Jul. 18, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: July 18, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Sturgis Motorcycle Rally, Inc.
v.
Gary St. Martin Hansen
a/k/a Gary Kimble St. Martin
________

Opposition No. 91217630
_______

Jason M. Sneed, Charles Landrum, Sarah C. Hsia and Megan E. Sorokes of
Sneed PLLC, for Sturgis Motorcycle Rally, Inc.

Gary St. Martin Hansen, a/k/a Gary Kimble St. Martin, pro se.
_____

Before Zervas, Wellington and Goodman,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Gary St. Martin Hansen, a/k/a Gary Kimble St. Martin (“Applicant”), seeks to
register the standard character mark,

Opposition No. 91217630
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for the following International Class 40 services:
Custom imprinting of T-shirts; Custom imprinting of
bumper sticker with decorative designs; Custom
imprinting of slogan with messages; Imprinting messages
on T-shirts; Imprinting messages on wearing apparel and
mugs; Imprinting of decorative designs on T-shirts; Silk
screen printing; T-shirt embroidering services.1
Sturgis Motorcycle Rally, Inc. (“Opposer”) asserts common law rights in the mark
BLACK HILLS, and ownership of Registration Nos. 39551702 and 43015623 both for
the typed4 mark BLACK HILLS, for, inter alia, clothing, paper goods, printed matter
and entertainment services; and a likelihood of confusion of Applicant’s mark with
the BLACK HILLS mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d).5
Applicant, in his answer, denied the salient allegations of the amended notice of
opposition, but admitted Opposer is the owner of Registration No. 3955170. Applicant

1 Application Serial No. 86112261, filed November 6, 2013 pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), asserting a bona fide intent to use the mark in
commerce.
2 Registered May 3, 2011, Section 8 declaration accepted.
3 Registered March 12, 2013.
4 Prior to November 2, 2003, “standard character” marks were known as “typed” drawings. A
typed mark is the legal equivalent of a standard character mark. In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’ marks
formerly were known as ‘typed’ marks.”)
5 Opposer also asserted a claim of false designation of origin in violation of Trademark Act
Section 45(a), 15 U.S.C. § 1125(a), but did not pursue the claim in its brief. The Board may
consider a pleaded claim to have been waived if the party raising the claim has not pursued
the claim in its brief. See UMG Recordings Inc. v. O'Rourke, 92 USPQ2d 1042, 1045 (TTAB
2009) (“In its main brief … opposer lists the only question presented as whether there exists
a likelihood of confusion, and we therefore consider opposer to have waived its dilution
claim.”); Viacom International Inc. v. Komm, 46 USPQ2d 1233, 1235 n.3 (TTAB 1998)
(“Opposer also pleaded in its notice of opposition that applicants' mark would falsely suggest
a connection with opposer. However, this issue was not briefed by opposer, and we therefore
deem this Section 2(a) claim to have been waived.”). Thus, because Opposer has not discussed
its allegation under Section 45(a) in its brief, we deem Opposer to have waived the false
designation of origin claim.
Opposition No. 91217630
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stated 14 times as a response to 14 separate allegations in the complaint, “I AM NOT
GOING TO BE SELLING ANYTHING EXCEPT MY BOOK.”6
Opposer and Applicant filed briefs on the case and Opposer filed a reply. Applicant
did not submit any evidence.
The Record
In addition to Applicant’s opposed application, which is automatically of record
pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the evidence of record
consists of the following:
● Testimony deposition of Applicant, with exhibits.

● Testimony deposition of Dean Kinney, Chairperson of Opposer’s
Board and employee of HomeSlice Corporation, Opposer’s licensing
agent, with exhibits.

● Testimony deposition of Clinton Brengle, Vice-President of
HomeSlice Corporation, with exhibits.

● Testimony deposition of Karen Simmons Parks, owner of Karen
Simmons CPA, P.C. and Applicant’s Treasurer, with exhibits.

Preliminary Issue
Opposer, in its brief, identifies several issues to be decided by the Board in this
proceeding, including the unpleaded issue of “whether Applicant had a bona fide
intent to use his applied-for mark in commerce in connection with the goods set forth
in the Application.”7

6 Answer ¶ 2, 4 TTABVUE 2.
7 Brief at 5, 52 TTABVUE 6.
Opposition No. 91217630
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Fed.R.Civ.P. 15(b) provides, in pertinent part, that when issues not raised by the
pleadings are tried by the express or implied consent of the parties, they shall be
treated in all respects as if they had been raised in the pleadings. Applicant has not
expressly consented to the trial of the issue of no bona fide intent to use. As for
whether there was implied consent, implied consent to the trial of an unpleaded issue
can be found only where the non-offering party (1) raised no objection to the
introduction of evidence on the issue, and (2) was fairly apprised that the evidence
was being offered in support of the issue. TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE (“TBMP”) § 507.03(b) (June 2017). “[T]he Board has found
that an issue was tried by implied consent where the non-offering party raised no
objection to the introduction of evidence on the issue and in its brief treated the
evidence as being of record, or discussed the issue in its brief as though it were part
of the pleading.” Morgan Creek Productions, Inc. v. Foria Int’l, Inc., 91 USPQ2d 1134,
1138 (TTAB 2009).
During Applicant’s testimony deposition, Opposer elicited the following testimony
concerning Applicant’s intent to use its mark in commerce:
Q. So if I could just clarify under the “Goods and Services’’
section, I think you’ve already said, but will you confirm
that you didn’t -- you do not have plans or intent to use the
It’s a Black Hills Thing mark with any of those services
listed on your application?
A. No. And when I -- and when you asked me that question
on the phone, I told you that I would sign an agreement
saying I would never make T-shirts or any other
memorabilia … .
Q. And when you -- when you submitted the application,
you didn’t plan -- have those plans then, did you, either?
Opposition No. 91217630
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A. No. In in the beginning, when I -- when I filled out the
application, like I said, the little entrepreneurial thing in
my mind went, Oh, maybe I should do that. But it sure as
hell was not my intention to -- to go into the business -- I’m
a professional musician. I’ve been doing it since I was four.
That’s 71 years. I’ve been all over the world. Everybody
knows who I am. I’m on hundreds of records and studio
work and so forth. I have no intention of making T-shirts.
…
Q. And on November 6, 2013, when you submitted this, you
didn’t intend to -- to do custom imprinting and silk-screen
printing and those other services then, either?
A. It never -- it never even crossed my mind. I just pushed
the button [on Trademark Electronic Application System
(“TEAS”), the USPTO’s internet-based application filing
system], and by God, I wish I would have pushed it for --
for -- I don’t know, for musical instruments like I tried -- or
Bentonite would have been a wonderful one.
Q. So - - so your -- so just so I understand your testimony,
your testimony is that as of today you don’t intend to use
the It’s a Black Hills Thing mark for the services listed in
your application and you didn’t intend to use the mark for
those services at the time you filed it, either?
A. No, I did not.8
In addition, Applicant responded to Opposer’s arguments in its main brief
regarding its claim of no bona fide intent to use the mark in commerce, without
raising any objection on the ground that the claim was not pleaded. We therefore find
that the claim of no bona fide intent to use the mark in commerce was tried by the
consent of the parties. Fed. R. Civ. P. 15(b); TBMP § 507.03(b).

8 Hanson Dep. at 39-41, 51 TTABVUE 41-43.
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Standing
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. To establish standing in an opposition or cancellation proceeding, a
plaintiff must show “both a ‘real interest’ in the proceedings as well as a ‘reasonable
basis’ for its belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753
F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports,
Inc., v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012)); Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
Opposer has established its standing through its submission of printouts from the
USPTO’s TSDR database of its two pleaded registrations for BLACK HILLS, which
demonstrate that the registrations are valid and subsisting, and owned by Opposer.9
See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.
Cir. 2000) (party’s ownership of pleaded registration establishes standing).
No Bona Fide Intent to Use in Commerce
Opposer has the burden of proving by a preponderance of the evidence that
Applicant lacked a bona fide intent to use the mark in commerce in connection with
its goods when he filed his application on November 6, 2013. See Research In Motion
Ltd. v. NBOR Corp., 92 USPQ2d 1926 (TTAB 2009); Boston Red Sox Baseball Club

9 See Exhs. 28 and 30, Kinney Dep.
Mr. Kinney also testified that both asserted registrations are owned by Opposer and extant,
and that the registered mark is in use. 49 TTABVUE 9 – 18.
Opposition No. 91217630
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LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008). For the reasons discussed below, we
find that Opposer has satisfied this burden.
Trademark Act Section 1(b)(1) provides, in pertinent part, that “[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 ... .”
It is settled that “the determination of whether an applicant has a bona fide
intention to use the mark in commerce is to be a fair, objective determination based
on all the circumstances.” Lane Ltd. v. Jackson International Trading Co., 33
USPQ2d 1351, 1357 (TTAB 1994).
The statutory requirement that an applicant must have a bona fide intent to use
the mark in commerce at the time the application is filed “must be read in conjunction
with the revised definition of ‘use in commerce’ in Section 45 of the Trademark Act,
which the Trademark Law Revision Act of 1988 (TLRA) amended to require that such
use be ‘in the ordinary course of trade, and not made merely to reserve a right in a
mark.’” Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503,
1507 (TTAB 1993).
Applicant’s testimony quoted above10 and his statement in his answer “I AM NOT
GOING TO BE SELLING ANYTHING EXCEPT MY BOOK,” repeated 14 times, are

10 Applicant also testified:
Q. So -- so if I'm understanding your testimony correctly, you
didn't -- when you submitted the application, you didn't intend
to use the mark for custom imprinting services?
Opposition No. 91217630
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acknowledgements that Applicant did not have the bona fide intent to use his mark
in commerce on the International Class 40 services identified in the application. In
addition, Applicant admitted that he is not in the business of screen printing t-shirts
and/or apparel for the production to others, that he is not using the mark and not
intending to use the mark in the business of screen-printing t-shirts and/or apparel
for production to others.11 Applicant confirmed his admissions in his testimony:
Q. Okay. And then in number 20 we ask, Admit that you
are not using the designation It’s a Black Hills Thing in the
business of screen printing T-shirts and/or apparel for
production to others.
A. Yes.
Q. And you again state, “Not!”
A. Yeah.
Q. “Admitted.”
A. Yeah.
Q. Okay. So you’re confirming that you’re --

A. No.
Q. Okay. And that's cus- -- whether it's custom imprinting of T-
shirts or bumper stickers or coffee mugs?
A. Nothing. Nothing. I -- I don't want to sell anything and I don't
care about that stuff.
Q. Okay. And -- and you weren't intending to -- to imprint
slogans on T-shirts that you would sell?
A. No.
51 TTABVUE 33–34.
11 Applicant’s responses to Opposer’s requests for admissions Nos. 19 – 21, Hansen Dep.
Exh. 36, 51 TTABVUE 74.
Opposition No. 91217630
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A. I’m not and that I admit it, and I admit that I’m not.
Q. Okay. You’ve confirmed that you’re not using the
designation for screen shirt -- screen printing?
A. That’s right.
Q. Okay. And then we ask in 21, Admit that you are not
intending to use the designation It’s a Black Hills Thing in
the business of screen printing T-shirts and/or apparel for
others -- for production to others.
A. Yes.
Q. And you say “Admitted”?
A. Yes.
Q. Okay.
A. I am not.
Q. And you’re confirming -- confirming there that you’re not
intending to use the It’s a Black Hills Thing designation for
the screen printing?
A. I’m not trying to sell it. Just the book and the -- and the
music.12
In addition,
● Applicant’s answer to Interrogatory No. 5 (“Identify all goods and services
you intend to sell, distribute or offer in the United States in connection with”
Applicant’s mark) is “THE BOOK, THE SONG.”13
● nothing in the record suggests that Applicant had undertaken any efforts to
offer the International Class 40 services. See L'Oréal S.A. v. Marcon, 102 USPQ2d
1434, 1443 (TTAB 2012) (finding that the applicant’s “lack of capacity or

12 51 TTABVUE 79-80.
13 51 TTABVUE 72–73.
Opposition No. 91217630
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experience needed to manufacture or otherwise offer his identified goods” supports
a finding of no bona fide intent).
In view of the foregoing, we conclude that Opposer established that Applicant did
not have a bona fide intent to use his mark in commerce for the International Class
40 services when he filed his application on November 6, 2013.
Because Opposer has prevailed on its no bona fide intent to use claim, we need
not reach Opposer’s likelihood of confusion and (unpleaded) lack of ownership claims
set forth in its brief.
Decision: Opposer’s claim of no bona fide intent to use the mark in commerce is
sustained. Registration to Applicant is refused.