The Amor ALL/STP Product Companyv.Limited liability company “Autoplastic”

Trademark Trial and Appeal Board

Nov 14, 2013

No. 92056035 (T.T.A.B. Nov. 14, 2013)

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Cancellation No. 92056035
2

penopolyethylene insulators of interiors of automobile and other
automobile parts from noise, heat and corrosion; insulating tape and
band, adhesive bands being tapes all being other than stationery and
not for medical or household purposes; soundproofing materials for
automobiles; insulating materials; insulating refractory materials;
rubber material for recapping tires or tyres; non-conducting
materials for retaining heat, namely, insulating penopolietilen
being polyethylene foam, polyurethane foam, and foam plastic
membranes for insulating surfaces of automobiles; sealant compounds
for joints; insulating plaster; cords of rubber for cylinder
jointings, pipe gaskets and joint packings for pipes; non-metal
gaskets for joint packings and seals in the automotive industry;
substances for insulating buildings against moisture, namely,
polyurethane film for use as a moisture barrier; fiberglass
insulation for automobiles; insulating fabrics; waterproof packings
for water-tight rings; foils of metal for insulating automobiles.”2

On August 10, 2012, The Armor All/STP Product Company
(“petitioner”) filed a petition to cancel respondent’s registration
on the grounds of priority and likelihood of confusion, abandonment

2 Registration No. 4137345 issued May 8, 2012 from an application filed
April 8, 2010, which was based on Trademark Act Section 66(a).
Registration No. 4137345 claims the colors “white and blue” and includes
the following description of the mark: “The mark consists of the stylized
term ‘STP’ enclosed within three concentric hexagons; the color blue
appearing in the outermost and innermost heagons (sic) and in the stylized
term ‘STP’; the color white appears in the middle hexagon and in the
background of the mark.”

Cancellation No. 92056035
3

and dilution of its pleaded registrations.3 In support of these
grounds, petitioner relies on its alleged common law rights in the
“STP trademark and STP logo” and the following registrations:4
• Registration No. 648087 for the mark STP (typed drawing) for
“additive compound for motor oils”;
• Registration No. 827102 for the mark for “additive
compound for motor oils and motor fuels”;
• Registration No. 929938 for the mark for “toys and
sporting goods-namely, model vehicles”;
• Registration No. 958574 for the mark for “filters for
automotive and marine engines”;
• Registration No. 1061958 for the mark for “brake
fluid”;
• Registration No. 1072497 for the mark for “motor oil”;
• Registration No. 1117051 for the mark for “restorer and
beautifier for plastic, rubber, leather and wood”;
• Registration No. 1206873 for the mark for “degreasing
cleaner for vehicle engines and industrial equipment”;
• Registration No. 1267491 for the mark for
“lubricants-namely, power steering oil and transmission oil”;
• Registration No. 2103468 for the mark for “automotive
and household cleaners, degreasers and cleaning concentrates;
glass cleaners; multi-purpose cleaners for interior and
exterior home and automotive use, preparations to clean and
shine tires; brake parts cleaner, carburetor cleaner and hand

3 Petitioner included status and title copies of each of its pleaded
registrations as attachments to its petition to cancel.
4 Petitioner also pleaded Registration No. 2570964 for the mark STP (typed
drawing). This registration was cancelled on December 28, 2012 and we
therefore give no probative value to this registration.
Cancellation No. 92056035
4

cleaner”;

• Registration No. 2540084 for the mark STP (typed drawing) for
“providing information on-line through global computer
networks about stock car racing, stock car racing personages,
and automotive products”;

• Registration No. 2704259 for the mark STP (typed drawing) for
“preparation to shine and protect tires”;
• Registration No. 3779058 for the mark for “air filters for
automobile passenger cabins”; and
• Registration No. 3779025 for the mark for “shirts.”

Respondent’s answer denied the salient allegations of the
petition to cancel. Respondent asserted the affirmative defenses
of failure to state a claim and laches, acquiescence and/or
equitable estoppel,5 and enumerated additional “affirmative
defenses” which are not affirmative defenses but rather,
amplifications of its denials. See Order of Sons of Italy in
America v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1223 (TTAB
1995).
This case is now before the Board for consideration of
petitioner’s motion for partial summary judgment, filed June 6,
2013, based solely on the ground of priority and likelihood of
confusion. The motion is fully briefed.
Requests for Admission

5 Respondent has not submitted any evidence in support of its defenses in
response to the motion for summary judgment. Accordingly, such defenses,
to the extent they are viable affirmative defenses, are waived. See Miller
v. Miller, 105 USPQ2d 1615, 1616 n.3 (TTAB 2013); Baroness Small Estates
Inc. v. American Wine Trade Inc., 104 USPQ2d 1224, 1225 n.2 (TTAB 2012).
Cancellation No. 92056035
5

Petitioner’s motion is predicated largely upon its requests for
admissions

(“RFAs”)6 deemed admitted under Fed. R. Civ. P. 36(a)(3)
pursuant to the Board’s May 21, 2013 order.7 Petitioner contends
that, by virtue of respondent’s deemed admissions, there are no
genuine disputes of material fact with respect to petitioner’s
standing, or its claim of priority and likelihood of confusion, and
that, as a consequence, petitioner is entitled to judgment as a matter
of law. In particular, petitioner argues, inter alia, that
respondent effectively admitted the following facts relevant to
petitioner’s likelihood of confusion claim:

• petitioner has standing to bring this proceeding (RFA Nos.
39-40);
• respondent “claims no right in or to [respondent’s
registration] in the U.S. prior to April 2010” (RFA No. 38);
• petitioner’s mark “is famous in the [United States] in
connection with automotive products” (RFA No. 5);
• petitioner’s and respondent’s marks are “highly similar in
appearance” (RFA No. 7);
• petitioner’s and respondent’s registrations are “aurally
indistinguishable” (RFA No. 8);
• petitioner’s and respondent’s registrations “create a highly
similar commercial impression” (RFA No. 9);
• respondent’s registration is used on automotive products (RFA

6 As noted in the Board’s May 21, 2013 order, respondent was allowed until
January 23, 2013 in which to either respond to the petitioner’s outstanding
discovery requests or to move for an extension of time in which to respond.
Having failed to avail itself of either option, the Board granted
petitioner’s motion (filed February 27, 2013) to compel responses and
ordered respondent to respond by June 20, 2013. As of final briefing of
petitioner’s motion for summary judgment, September 25, 2013, respondent
has not provided any discovery responses as ordered in the May 21, 2013
Board order.
7 The Board order noted that “petitioner’s first set of requests for
admission stand admitted pursuant to Fed. R. Civ. P. 36” because respondent
failed to timely respond to them.
Cancellation No. 92056035
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No. 24);
• respondent’s goods offered under respondent’s registration are
similar to or related to petitioner’s goods offered under
petitioner’s registrations (RFA Nos. 22-23);
• respondent’s goods offered under respondent’s registration are
and/or will be advertised in and sold through the same channels
of trade as petitioner’s goods offered under petitioner’s
registrations (RFA Nos. 13, 25, and 27);
• consumers for respondent’s goods offered under respondent’s
registration will overlap with consumers for petitioner’s goods
sold under petitioner’s registrations (RFA No. 11); and
• respondent has no evidence that consumers of the parties’ goods
are sophisticated or discriminating purchasers (RFA Nos.
41-42).

Petitioner’s first set of admissions along with its interrogatories
were introduced by a declaration from its counsel, Jason D. Jones.
In its response, respondent now denies that the deemed
admissions are accurate, arguing, inter alia, that its “use has not
caused and is not likely to cause any confusion”; that its channels
of trade and class of consumers are different from petitioner’s; that
its mark and goods are different from petitioner’s; and that it “has
not admitted any of the [p]etitioner’s allegations.” Respondent’s
response is accompanied by the following attachments: webpages
purportedly from petitioner’s and respondent’s respective websites,
a copy of respondent’s registration certificate, and a copy of one
of petitioner’s pleaded registrations, Registration No. 1072497.
In serving requests for admission, a party asks its adversary
to stipulate to certain matters as a means of reducing issues for
trial. See TBMP § 407.02. Fed. R. Civ. P. 36(a) requires that the
answering party admit or deny the matter set forth in the requests
Cancellation No. 92056035
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for admission, or detail the reasons why the party can do neither.
An admission in response to a request for admission “conclusively
establishe[s]” the matter that is the subject of that request. Fed.
R. Civ. P. 36(b). “This conclusive effect applies to those
admissions made affirmatively and those established by default, even
if the matters admitted relate to material facts that defeat a party’s
claim.” American Automobile Ass’n v. AAA Legal Clinic of Jefferson
Crooke, P.C., 930 F.2d 1117, 19 USPQ2d 1142, 1144 (5th Cir.
1991)(citing United States v. Kasuboski, 834 F.2d 1345, 1350 (7th Cir.
1987); Rainbolt v. Johnson, 669 F.2d 767, 769 (D.C.Cir. 1981); Brook
Village North Assocs. v. General Electric Co., 686 F.2d 66, 70 (1st
Cir. 1982)); see Fram Trak Indus. Inc. v. WireTracks LLC, 77 USPQ2d
2000, 2005 (TTAB 2006)(“Respondent failed to respond to petitioner’s
requests for admission and failed to file a motion to amend or
withdraw those admissions. Accordingly, those requests for
admission are deemed admitted and conclusively established.”).
Fed. R. Civ. P. 36(a)(3) provides that requests for admissions
are deemed admitted unless written answers or objections thereto are
received by the requesting party within thirty days of service of
the requests. In this case, respondent did not make any attempt to
submit either its answers or objections to petitioner. As noted in
the Board’s May 21, 2013 order, the requests were therefore deemed
admitted as a result of respondent’s failure to serve timely
responses. At that point, or even in response to the motion for
Cancellation No. 92056035
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summary judgment, respondent could have filed a motion to withdraw
or amend its admissions pursuant to Fed. R. Civ. P. 36(b). See
Giersch v. Scripps Networks Inc., 85 USPQ2d 1306 (TTAB 2007); Hobie
Designs Inc. v. Fred Hayman Beverly Hills Inc., 14 USPQ2d 2064 (TTAB
1990). However, respondent failed to avail itself of this option.
Therefore, it cannot rely merely on “disputing” the effective
admissions as it did in its response. An admission that is not
withdrawn or amended cannot be rebutted by contrary argument or
testimony. See Texas Department of Transportation v. Tucker, 95
USPQ2d 1241, 1244 (TTAB 2010); AAA Legal Clinic of Jefferson Crooke,
19 USPQ2d at 1144.
In view thereof, the Board finds that the facts set forth in
each of petitioner’s RFAs have been conclusively established.
Summary Judgment

Summary judgment is an appropriate method of disposing of cases
in which there are no genuine disputes as to material facts, thus
allowing the case to be resolved as a matter of law. See Fed. R.
Civ. P. 56(c). 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 a light
favorable to the non-movant, and all justifiable inferences are to
be drawn in the non-movant's favor. The Board may not resolve
disputes of material fact; it may only ascertain whether such
disputes exist. See Lloyd's Food Products Inc. v. Eli's Inc., 987
Cancellation No. 92056035
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F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great
American 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).
Standing
We turn first to the issue of standing, a threshold issue that
must be proven by a plaintiff in every inter partes case. See 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). The Board finds that there is no genuine
dispute of material fact concerning opposer’s standing. A party has
standing to seek cancellation of a trademark registration if the
party believes it is likely to be damaged by the registration and
the belief in likely damage can be shown by establishing a direct
commercial interest. See Cunningham v. Laser Golf Corp., 55 USPQ2d
1842, 1844 (Fed. Cir. 2000); International Order of Job’s Daughters
v. Lindeburg & Co., 727 F.2d 1087, 1091, 220 USPQ 1017, 1019 (Fed.
Cir. 1984). Petitioner has submitted status and title copies
obtained from a USPTO database of its pleaded registrations with its
petition to cancel. See Trademark Rule 2.122(d)(1). These
registrations and the goods listed in those registrations8 suffice

8 For example, Registration No. 958574 for STP and design is for “filters
for automotive and marine engines”; Registration No. 1206873 for STP and
design is for “degreasing cleaner for vehicle engines and industrial
equipment”; and Registration No. 3779058 for STP and design is for “air
filters for automobile passenger cabins.”
Cancellation No. 92056035
10

to establish a direct commercial interest and therefore petitioner’s
standing to bring this proceeding. See Edwards Lifesciences Corp.
v. VigiLanz Corp., 94 USPQ2d 1399, 1408 (TTAB 2010); Cunningham v.
Laser Golf Corp., 55 USPQ2d at 1844; Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Moreover,
respondent has not disputed petitioner’s standing. Indeed, through
its deemed admission of RFA No. 39, respondent admits it “does not
challenge [p]etitioner’s standing to bring the instant Cancellation
proceeding.”
Priority
In a cancellation proceeding, whereas here both parties own
registrations, petitioner must prove priority of use. See Brewski
Beer Co. v. Brewski Bros., Inc., 47 USPQ2d 1281 (TTAB 1998) and cases
cited therein. In this case, because both parties’ registrations
are of record, either party may rely on the filing date of its
registration(s), without further proof, to establish priority.
See Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112,
1119 (TTAB 2009); J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d
960, 144 USPQ 435, 437 (CCPA 1965). The filing dates of the
applications for each of petitioner’s pleaded registrations9 are

9 The filing date of the application which resulted in Registration No.
648087 was filed October 22, 1956; The filing date of the application which
resulted in Registration No. 827102 was filed May 4, 1966; The filing date
of the application which resulted in Registration No. 929938 was filed
August 28, 1970; The filing date of the application which in resulted
Registration No. 958574 was filed August 19, 1971; The filing date of the
application which resulted in Registration No. 1061958 was filed August
Cancellation No. 92056035
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prior to the April 8, 2010 filing date of the application which
resulted in respondent's involved registration, which is the
earliest date on which respondent is entitled to rely given the
absence of any evidence of earlier use. Further, respondent has
admitted, see RFA No. 38, that it does not claim any rights to its
mark in the United States prior to April 2010. Thus, petitioner has
established its priority.
Likelihood of Confusion
In determining the issue of likelihood of confusion and, in
this case, whether there is any genuine dispute of material fact
relating to that ultimate legal question, we must consider the
pertinent evidentiary factors listed in In re E.I. du Pont de
Nemours & Co.10 The determination of a likelihood of confusion does
not necessarily require examination and findings as to each du Pont

19, 1976; The filing date of the application which resulted in Registration
No. 1072497 was filed December 29, 1976; The filing date of the application
which resulted in Registration No. 1117051 was filed July 26, 1978; The
filing date of the application which resulted in Registration No. 1206873
was filed May 27, 1980; The filing date of the application which resulted
in Registration No. 1267491 was filed September 20, 1982; The filing date
of the application which resulted in Registration No. 2103468 was filed
October 24, 1996; The filing date of the application which resulted in
Registration No. 2540084 was filed March 5, 2001; The filing date of the
application which resulted in Registration No. 2704259 was filed April 22,
2002; The filing date of the application which resulted in Registration
No. 3779058 was filed December 4, 2008; and the filing date of the
application which resulted in Registration No. 3779025 was filed November
10, 2008.
10 In In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973), the Court of Customs and Patent Appeals, our primary
reviewing court's predecessor, discussed the factors relevant to a
determination of likelihood of confusion.

Cancellation No. 92056035
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factor. See Kenner Parker Toys, Inc. v. Rose Art Indus., Inc. 963
F.2d 350, 352, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). Rather, the
“scope of examination by the Board in any particular case will
ordinarily be established by the record presented by the parties.”
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d
1303, 1305 (Fed. Cir. 2002). Here, the ultimate legal question
is framed by the inquiry into four du Pont factors in view of
respondent’s admissions: similarity of the marks, similarity of
the goods, channels of trade and fame. There is no evidence
regarding the remaining du Pont factors, nor has a genuine dispute
been raised regarding them.
Similarity of Marks

With regard to respondent’s registration and petitioner’s
registrations, respondent admitted that the parties’ marks are
visually and aurally similar and create the same commercial
impression. See RFA Nos. 7-9. We note, too, that the marks are
similar in sound, appearance and connotation inasmuch as they share
the common letters S, T, and P in the same sequence. Thus, no genuine
dispute of material fact exists that the parties’ marks are similar
in sight, sound, connotation and commercial impression.
Similarity of Goods/Channels of Trade
Respondent further effectively admitted that respondent’s
goods offered under respondent’s mark are similar to or related
to petitioner’s goods offered under petitioner’s marks; that the
Cancellation No. 92056035
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consumers of the parties’ goods may and will overlap; and that
the parties’ goods travel in the same channels of trade. See RFA
Nos. 13, 22-25, and 27. Thus, there is no genuine dispute of
material fact that the parties’ respective goods, as recited, are
in part the same, and travel in the same channels of trade.
Fame
Fame of a mark, if it exists, plays a “dominant role in the
process of balancing du Pont factors . . . Famous marks thus enjoy
a wide latitude of legal protection.” Bose Corp., 63 USPQ2d at 1305
(citing Recot Inc., 214 F.3d at 1327, 54 USPQ2d at 1897). Inasmuch
as respondent has admitted that petitioner’s mark is famous in the
United States in connection with automotive products, see RFA No.
5, this du Pont factor weighs heavily in favor of a finding of
likelihood of confusion.
Based on respondent’s admissions, and viewing these admitted
facts in the light most favorable to respondent, we conclude that
there are no genuine disputes of material fact and that a likelihood
of confusion exists in this case.
Because we find on this record that no genuine disputes of
material fact remain as to petitioner’s standing, or its claim of
priority and likelihood of confusion, and that petitioner is entitled
to judgment as a matter of law, petitioner’s motion for partial
summary judgment is granted.
Petitioner is allowed until TWENTY (20) DAYS from the mailing
Cancellation No. 92056035
14

date of this order to inform the Board whether petitioner wishes to
go forward on the remaining grounds in the petition to cancel, failing
which the Board will dismiss the remaining claims, cancel
respondent’s involved registration, and enter judgment against
respondent solely on the grounds of priority and likelihood of
confusion. Proceedings remain otherwise suspended.