Tekni-Plex, Inc.v.Selig Sealing Products, Inc.

Trademark Trial and Appeal Board

Nov 25, 2015

No. 91215874 (T.T.A.B. Nov. 25, 2015)

JK Mailed: November 25, 2015

Opposition No. 91214508 (parent case)
Opposition No. 91215874
Tekni-Plex, Inc.
v.
Selig Sealing Products, Inc.

Before Quinn, Zervas and Bergsman.
Administrative Trademark Judges.

By the Board:

These consolidated proceedings are before the Board for consideration of
Opposer’s February 2, 2015 motions for sumary judgment pursuant to Fed. R. Civ.
P. 56(a), on its claim that the involved applications listed below are void ab initio on
the ground that Applicant lacked a bona fide intent to use the marks at the time it
filed its applications for the identified goods - “primarily non-metal seals comprised
of various layers including a metallic foil layer for use in container closures and
caps” in International Class 17 - as of the July 3, 2013 filing date of the
applications:
• Serial No. 86001725 for the mark EDGEPULL, and
• Serial No. 86001764 for the mark EDGEPEEL.
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
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91214508 (parent case); Opposition No. 91215874

2
Prior to consolidation, Opposer filed the same motion for summary judgment in
each proceeding. Applicant opted to file, in parent case Opposition No. 91214508,
one brief in combined response to the motions. Accordingly, the motions are fully
briefed.
The Board presumes familiarity with the parties’ respective marks as set forth
in the July 10, 2015 consolidation order, and with the operative pleadings - the
amended notices of opposition filed February 2, 2015,1 and the answers filed August
10, 2015.2
Analysis
Summary judgment is appropriate where the movant demonstrates that there
is no genuine dispute as to any material fact, and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(a). A party asserting that a fact cannot be true or
is genuinely disputed must support its assertion by either 1) citing to particular
parts of materials in the record, or 2) showing that the materials cited do not
establish the absence or presence of a genuine dispute, or that an adverse party
cannot produce admissible evidence to support the fact. Fed. R. Civ. P. 56(c). A
factual dispute is genuine if, on the evidence of record, a reasonable fact finder
could resolve the matter in favor of the non-moving party. Opryland USA Inc. v.
Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992);
Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed.

1 In Opposition No. 91214508, 10 TTABVUE; in Opposition No. 91215874, 8 TTABVUE.
2 In Opposition No. 91214508, 19 TTABVUE; in Opposition No. 91215874, 17 TTABVUE.
In its answers to the amended notices of opposition, Applicant unqualifiedly denied the
salient allegations underlying the claim of lack of bona fide intent to use the mark at the
time of filing the applications.
Opposition No. 91214508 (parent case); Opposition No. 91215874

3
Cir. 1992). The party seeking judgment in its favor carries the burden of proof.
Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986).
Evidence on summary judgment must be viewed in a light most favorable to the
non-movant, and all justifiable inferences are to be drawn in the non-movant’s
favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029
(Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. The Board may not resolve
genuine disputes as to material facts; it may only ascertain whether genuine
disputes as to material facts exist. Lloyd’s Food Prods., 25 USPQ2d at 2029; Olde
Tyme Foods, 22 USPQ2d at 1544. TBMP § 528.01 (2015), and cases cited therein.
Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), states:
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 …

An applicant’s bona fide intent to use a mark must reflect an intention that is firm,
though it may be contingent on the outcome of an event such as market research or
product testing, and must reflect an intention to use the mark in the ordinary
course of trade, and not merely to reserve a right in a mark. Commodore
Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1506 n.7 (TTAB
1993). The determination of whether an applicant has a bona fide intention to use
the mark in commerce is made on a case-by-case basis considering the totality of
circumstances, and requires objective evidence of intent. Although the evidentiary
bar is not high, the circumstances must indicate that the intent to use was firm and
not merely an intent to reserve a right in the mark. M. Z. Berger & Co. v. Swatch
Opposition No. 91214508 (parent case); Opposition No. 91215874

4
AG, 787 F.2d 1368, 114 USPQ2d 1892, 1898 (Fed. Cir. 2015). See also Boston Red
Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008); Lane Ltd.
v. Jackson Int’l Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994) (“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”).
The evidence necessary to support a finding of a bona fide intent to use will
differ in each case, depending on the circumstances. Honda Motor Co. v.
Winkelmann, 90 USPQ2d 1660, 1664 (TTAB 2009). The Board considers the
evidence as a whole, and any clear interrelationships that exist between the several
pieces of evidence of record, to determine whether the evidence, in its totality,
establishes a bona fide intent to use the mark for the identified goods. Cf. West
Florida Seafood Inc. v. Jet Restaurants Inc., 31 USPQ2d 1660, 1663 (Fed. Cir.
1994). The Board may look to inconsistencies in the record, as well as the general
lack of documentary support or other objective evidence. Swiss Grill Ltd. v. Wolf
Steel Ltd., 115 USPQ2d 2001, 2010 (TTAB 2015).
In the proceedings before us, to prevail on summary judgment in either
proceeding, Opposer must demonstrate that there is no genuine dispute that 1) it
has standing, and 2) Applicant lacked a bona fide intent to use the mark on
“primarily non-metal seals comprised of various layers including a metallic foil
layer for use in container closures and caps” as of the July 3, 2013 application filing
date. Opposer may demonstrate a prima facie case that Applicant lacked a bona
fide intent use the marks as of the filing date of the applications by establishing
Opposition No. 91214508 (parent case); Opposition No. 91215874

5
that there is an absence of any documentary evidence on Applicant’s part regarding
such intent. Commodore Electronics Ltd., 26 USPQ2d at 1507.
Opposer’s standing
Opposer has standing to bring both proceedings. In its motion for summary
judgment, under the declaration of its counsel Catherine Dugan O’Connor, Opposer
states that on January 16, 2014 it filed application Serial No. 86167739 to register
the mark EDGEPULL for “adhesive seals for use in packaging,” that said
application was filed based on use of the mark in commerce and alleging a date of
first use at least as early as October 1, 2012, and that on February 25, 2014 the
USPTO suspended action on its application until Applicant’s application Serial No.
86167739 either registered or abandoned, based on a likelihood of confusion.3 The
O’Connor declaration includes a true and correct copy of Opposer’s application,4 as
well as a true and correct copy of the suspension letter to which the examining
attorney attached a copy of Applicant’s application Serial No. 86001725.5
By way of these allegations, Opposer has sufficiently established that it has a
real interest in the outcome of each of the opposition proceedings. That is, opposer
has a direct and personal stake in the outcome. Ritchie v. Simpson, 170 F.3d 1092,
50 USPQ2d 1023 (Fed. Cir. 1999); Jewelers Vigilance Committee Inc. v. Ullenberg
Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987). See also Lipton Industries,

3 11 TTABVUE 5 (brief on motion). 11 TTABVUE 15-16 (O’Connor decl.)
4 11 TTABVUE 15 (O’Connor decl., para. 4, exh. 1).
5 11 TTABVUE 15 (O’Connor decl., para. 5, exh. 2). The suspension letter is erroneous on
its face inasmuch as it states that Opposer’s application Serial No. 86167739 is suspended
pending the same application - Serial No. 86167739. However, the error is an obvious one;
Opposer’s application is clearly suspended pending Applicant’s Serial No. 86001725 (see 11
TTABVUE 29).
Opposition No. 91214508 (parent case); Opposition No. 91215874

6
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) (“We
regard the desire for a registration with its attendant statutory advantages as a
legitimate commercial interest. To establish a reasonable basis for a belief that one
is damaged by the registration sought to be cancelled, a petition may assert a
likelihood of confusion which is not wholly without merit (as in Norac) or, as here, a
rejection of an application during prosecution.”).
No bona fide intent
Opposer submits and relies on Applicant’s responses to its interrogatories and
document requests. Trademark Rule 2.127(e)(2); TBMP § 528.05(c) (2015). It
submits the declaration of counsel attesting that Opposer served its first set of
interrogatories and first request for production of documents on Applicant on
September 5, 2014, and that Applicant served responses on October 6, 2014 but did
not produce therewith any documents.6 In particular, Opposer points to
interrogatories 2, 3, 9 and 10, as well as document requests 3, 5, 6, 8, 11-14, 17, 18,
28 and 32.7 In these document requests, Opposer specifically sought, with respect
to the applied-for marks, documents concerning: public filings, brochures, press
releases, communications, advertisements, promotional or marketing materials;
adoption of the marks; business plans, marketing plans, sales agreements,
distribution agreements, proposals, price quotes; branding, sales or distribution
plans, strategies and forecasts; sales or offers to sell goods in the United States, and
communications with customers or potential customers. In summary, Applicant’s

6 11 TTABVUE 16 (O’Connor decl.)
7 11 TTABVUE 8.
Opposition No. 91214508 (parent case); Opposition No. 91215874

7
responses consist of boilerplate objections (e.g. request 6), or boilerplate objections
coupled with the repeated response that it “will produce” relevant and non-
privileged documents “if any exist” or similar wording.
On the issue of what it produced in discovery, Applicant argues that it
“responded to Interrogatories and accurately stated that it has existing products
available for the EDGEPULL and EDGEPEEL marks,”8 and cites its responses to
interrogatories 3 and 10. However, in these two responses, aside from boilerplate
objections, Applicant merely states that it “has for many years produced seals with
a variety of trademarks and continues to develop and explore new products and
marks. One long existing product has the phrase Pull from Edge to Open” (response
to interrogatory 3),9 and “has existing products which can be adopted to use this
mark once it is cleared of objections” (response to interrogatory 10).10 Such
responses do not raise a genuine dispute with respect to Applicant’s bona fide intent
to use the marks at issue in these proceedings.
Turning to Applicant’s submissions, it proffers what it describes in its brief as
“pages from its website, www.seligsealing.com, showing the history of Selig as well
as its products and services.”11 In its brief, it states that “[T]hese pages display the
variety of trademarked packaging seals readily available from Selig,” that the pages
show “promotional information and the gallery of seals,” that “[T]his gallery
displays a myriad of customer trademarks and brands that Selig prints on seals as

8 21 TTABVUE 5.
9 11 TTABVUE 38.
10 11 TTABVUE 41.
11 21 TTABVUE 3.
Opposition No. 91214508 (parent case); Opposition No. 91215874

8
well as Selig’s own marked seals, all printed in the ordinary course of its
business,”12 and that “[T]he website demonstrates Selig’s substantial business and
presence in the sealing business contemporaneous with the filing of the
EDGEPULL and EDGEPEEL trademark applications.”13
The marks EDGEPULL and EDGEPEEL do not appear anywhere on the web
pages, and Applicant is silent as to where either mark appears. Further, there is no
indication of when the web pages were created, and they are not submitted with an
affidavit or declaration of a person with personal knowledge as to their identity,
content or when they were created or accessed.
Fed. R. Civ. P. 56(c)(1) requires a nonmoving party to cite to particular parts of
the record or to show that the materials cited do not establish the absence or
presence of a genuine dispute, or that the moving party cannot produce admissible
evidence to support the fact. Fed. R. Civ. P. 56(c)(1). As noted above, Opposer may
demonstrate a prima facie case that Applicant lacked a bona fide intent use the
marks as of the filing date of the applications by establishing that there is an
absence of any documentary evidence on Applicant’s part regarding such intent.
Commodore Electronics Ltd., 26 USPQ2d at 1507. Opposer has made such a
showing. Here, Applicant has not proffered evidence to demonstrate that it ever
had a bona fide intention to use the marks EDGEPULL and EDGEPEEL on or in
connection with the products it identified in its applications. Applicant has not
come forward with evidence indicating, for example, current business plans,

12 21 TTABVUE 3.
13 21 TTABVUE 6.
Opposition No. 91214508 (parent case); Opposition No. 91215874

9
ongoing discussions, or promotional activities to corroborate its claim of a bona fide
intent to use either EDGEPULL or EDGEPEEL in commerce. In sum, Applicant
has produced no evidence supporting or confirming the bona fide intent to use the
mark in commerce which it asserted in its two involved applications. Given the
several opportunities that Applicant has had to come forward with evidence of its
intent to use the involved marks, as well as the deficient nature of the discovery
responses that Applicant did provide, the Board must conclude that Applicant
produced no evidence because it has none. Moreover, for the reasons that we have
stated, the web pages upon which Applicant relies are insufficient to raise a genuine
dispute of material fact as to its lack of bona fide intent to use the marks
EDGEPULL and EDGEPEEL.
Based on the record on summary judgment, Opposer has carried its burden on
summary judgment and is in entitled to judgment as a matter of law. Analyzing the
evidence as a whole as to what it demonstrates and in a light most favorable to
Applicant as the non-movant, the record does not indicate that Applicant had a
bona fide intent to use the mark EDGEPULL or the mark EDGEPEEL on or in
connection with “primarily non-metal seals comprised of various layers including a
metallic foil layer for use in container closures and caps” as of the date that
Applicant filed the involved applications. Accordingly, the applications are void ab
initio.
Opposition No. 91214508 (parent case); Opposition No. 91215874

10
In view of the Board’s grant of the motion for summary judgment on Opposer’s
claim of no bona fide intent to use, the Board need not reach Opposer’s likelihood of
confusion claim.
In view of these findings, Opposer’s motions for summary judgment in
Opposition Nos. 91214508 and 91215874 are granted; the oppositions are sustained,
and registration of application Serial Nos. 86001725 and 86001764 is refused.