The Clorox Companyv.Hermilo Tamez Salazar

Trademark Trial and Appeal Board

Sep 26, 2013

No. 91198922 (T.T.A.B. Sep. 26, 2013)

GCP Mailed: September 26, 2013

Opposition No. 91198922

The Clorox Company

v.

Hermilo Tamez Salazar

Before Kuhlke, Wellington, and Bergsman,
Administrative Trademark Judges.

By the Board:

Hermilo Tamez Salazar (“applicant”) seeks to register the mark
CLOROTEC and design, as displayed below, for “electronic equipment,
namely, electrolysis cell for use in the manufacture of various ionic solutions”
in International Class 9.1

1 Application Serial No. 85059351, filed on June 10, 2010, based on an allegation of
use in commerce under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), claiming
May 27, 2010 both as the date of first use and the date of first use in commerce.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DECISION IS A
PRECEDENT OF THE TTAB
Opposition No. 91198922

2
In its amended notice of opposition, The Clorox Company (“opposer”),
as a ground for opposition, alleges priority of use and that applicant’s mark,
when used on the identified goods, so resembles opposer’s previously used
and registered CLOROX marks, CLOROX and diamond-shaped design
marks, and diamond-shaped design marks standing alone, for various
household and laundry cleaning products, including bleach, as to be likely to
cause confusion, mistake or to deceive under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d).
As an additional ground for opposition, opposer asserts that applicant
did not make bona fide use of his mark in commerce on the identified goods
as of the filing date of his use-based application.
Applicant, in his answer, has denied the salient allegations of the
amended notice of opposition.
This case now comes before the Board for consideration of opposer’s
third motion for summary judgment, which is a renewed motion (filed May 6,
2013) for summary judgment based solely on its asserted claim of lack of
bona fide use as of the filing date of the subject application.2
In support of its renewed motion for summary judgment, opposer
contends that, based upon applicant’s responses to opposer’s written

2 On April 30, 2013, the Board denied opposer’s original motion for summary
judgment on this ground because opposer had not set out this claim in its original
pleading. By the same order, the Board, in light of the particular circumstances of
this case, granted opposer leave to amend its pleading to include a claim of no bona
fide use. Opposer filed an amended notice of opposition on May 6, 2013, which
included a claim of no bona fide use as of the filing date of the involved use-based
application.
Opposition No. 91198922

3
discovery requests, applicant has conceded that he did not use his mark in
commerce as of the filing date of his use-based application and has yet to use
his mark in commerce. In particular, opposer maintains that applicant
provided the following responses to opposer’s interrogatories:
Interrogatory No. 3
Identify each good or service on which Applicant has used or intends to
use Applicant’s Mark in the United States.

Response to Interrogatory No. 3
Applicant objects to Interrogatory No. 3 on the grounds that it is [sic]
calls for a response outside the scope of permissible discovery and
seeks discovery of information that is irrelevant in that some goods or
services are not covered by Applicant’s Application for the Mark.
Subject to the foregoing general and specific objections and without
waiving the same, Applicant responds as follows:
Applicant has not yet used the Mark on any product sold in the
United States. Applicant may use the Mark on equipment and
services like Applicant has sold outside of the United States; namely,
equipment for processes in industry, including tanks, filters, hydraulic,
centrifugal and diaphragm pumps and chlorination units of all
capacities.

(emphasis added).

Interrogatory No. 10

For each good identified in response to Interrogatory No. 3, state the
number of units sold for each year since that good was introduced,
inside the United States.

Response to Interrogatory No. 10

Applicant objects to Interrogatory No. 10 on the grounds that it is [sic]
calls for a response outside the scope of permissible discovery and
seeks discovery of information that is irrelevant in that some goods or
services are not covered by Applicant’s Application for the Mark.
Subject to the foregoing general and specific objections and without
Opposition No. 91198922

4
waiving the same, Applicant responds as follows: No units have
been sold to clients inside the United States.

(emphasis added).

Opposer further contends that these interrogatory responses confirm
what applicant previously stated in his declaration submitted in response to
an earlier-filed motion for summary judgment regarding opposer’s priority
and likelihood of confusion claim, wherein applicant stated that “I have sold
none of the machines described in the Application inside the United States,
nor have I shipped one of these machines into the United States.”3
Based upon these discovery responses and the declaration, opposer
argues that there are no genuine disputes of material fact that there was no
bona fide use of applicant’s mark in commerce as of the filing date of
applicant’s use-based application and, therefore, opposer’s motion for
summary judgment should be granted.
As evidence in support of its renewed motion for summary judgment,
opposer submitted the declaration of its attorney, Jeffrey E. Faucette,
through which opposer makes of record (1) a true and correct copy of USPTO
records regarding applicant’s involved application Serial No. 85059351,
printed from the USPTO’s Trademark Electronic Search System (“TESS”)
database,4 (2) a copy of applicant’s declaration submitted in support of his
response to opposer’s earlier-filed motion for summary judgment on opposer’s

3 By order dated May 23, 2012, the Board denied opposer’s motion for summary
judgment on opposer’s asserted claim of priority and likelihood of confusion.
4 This application is of record by operation of Trademark Rule 2.122(b) and,
therefore, there was no need for opposer to submit it with its motion.
Opposition No. 91198922

5
asserted claim of priority and likelihood of confusion, and (3) applicant’s
responses to opposer’s first set of interrogatories.
In response, applicant argues that opposer simply misrepresents to the
Board the substance of applicant’s responses to opposer’s interrogatories
inasmuch as nowhere does applicant admit that he has never used his
involved mark in commerce in the United States. In fact, applicant
maintains that since March 22, 2010 (a date earlier than the June 10, 2010,
filing date of the subject application), his identified goods have been
advertised and offered for sale on the English version of applicant’s website.
In addition to the depiction of his mark on his website, applicant contends
that since May 31, 2011, machinery parts (presumably to make the goods
identified in the application) bearing his CLOROTEC and design mark have
been shipped from applicant’s manufacturer located in Utah to applicant
located in Mexico through one of applicant’s licensees in Texas. Further,
applicant argues that requiring the actual sale or transportation of goods
such as those at issue is inequitable and inconsistent with Congress’ intent in
defining “use in commerce” in the Trademark Act. Specifically, applicant
maintains that requiring a sale of a product of which applicant sells an
average of fewer than one per year, at prices ranging from two hundred
thousand dollars to two million dollars or more, or requiring transportation of
an approximately one-ton piece of machinery that is custom-made to a client’s
Opposition No. 91198922

6
specifications, was not Congress’ intent with its “use in commerce”
requirements.
As evidence in support of his response to opposer’s renewed motion for
summary judgment, applicant submitted a declaration wherein he provided,
among other things, a description of and the cost of his goods, the number of
goods sold since 2004, and information about the existence and contents of
his website, the English version of which was launched March 22, 2010.
Decision
Summary judgment is appropriate only when there is no genuine dispute
as to any material fact and the moving party is entitled to judgment as a matter
of law. See Fed. R. Civ. P. 56(a). The Board may not resolve issues of material
fact; it may only ascertain whether a genuine dispute regarding a material fact
exists. See Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993); Old Tyme Foods, Inc. v. Roundy’s, Inc., 961
F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
When the moving party has supported its motion with sufficient evidence
that, 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). All evidence must
be viewed in a light favorable to the nonmovant, and all justifiable inferences are
to be drawn in the nonmovant’s favor. Lloyd's Food Products, Inc., supra;
Opposition No. 91198922

7
Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 850, 23
USPQ2d 1471, 1472 (Fed. Cir. 1992).
Standing
Before we consider the merits of opposer’s renewed motion for
summary judgment, we must first entertain the question of whether opposer
has standing to bring this opposition proceeding. Opposer must demonstrate
“that it has a reasonable belief that it would be damaged” by the registration
of applicant’s mark. Syngenta Crop Protection, Inv. v. Bio-Check, LLC, 90
USPQ2d 1112, 1118 (TTAB 2009). In this case, there is no genuine dispute of
material fact regarding opposer’s standing. Indeed, opposer has established
its standing by attaching as exhibits to its amended notice of opposition
copies of its pleaded registrations obtained from the Office’s TESS database,
showing that the registrations are valid and subsisting and owned by
opposer. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1844 (Fed. Cir. 2000) (party’s registration establishes standing). Applicant
does not contest opposer’s standing, nor has applicant introduced
contradictory evidence or filed a counterclaim seeking to cancel any of
opposer’s pleaded registrations.
No Bona Fide Use In Commerce As Of Filing Date Of Application
Turning to the merits of opposer’s renewed motion for summary
judgment, having considered the evidence and arguments submitted by the
parties, and viewing the evidence in the light most favorable to applicant, we
Opposition No. 91198922

8
find that opposer has satisfied its burden of setting forth a prima facie
showing that there are no genuine disputes of material fact remaining for
trial and that it is entitled to judgment as a matter of law as to its claim that
applicant had not made bona fide use of its mark in commerce as of the filing
date of applicant’s use-based application.
“The term ‘use in commerce’ means the bona fide use of a mark in the
ordinary course of trade, and not merely to reserve a right in a mark.” 15
U.S.C. § 1127. Furthermore, a trademark is in use in commerce on goods
when “(A) it is placed in any manner on the goods or their containers or the
displays associated therewith … or if the nature of the goods makes such
placement impracticable, then on documents associated with the goods or
their sale, and (B) the goods are sold or transported in commerce.” Id.
Here, there is no genuine dispute of material fact that applicant did
not use his CLOROTEC and design mark within the meaning of the
Trademark Act as of the filing date of his use-based application. Indeed,
applicant's responses to opposer's interrogatory requests and his declaration
submitted in response to opposer’s earlier-filed motion for summary judgment
on the ground of priority and likelihood of confusion establish that applicant
did not sell or transport his identified goods bearing the CLOROTEC and
design mark in commerce as of the filing date of his use-based application.
Applicant argues that any requirement for the actual sale or
transportation of goods such as applicant’s is inequitable and inconsistent
Opposition No. 91198922

9
with Congress’ intent behind the “use in commerce” definition. This
argument is without merit. While the legislative history of the Trademark
Act states, inter alia, that “infrequent sales of large or expensive or seasonal
products, reflect legitimate trademark uses in the normal course of trade,” see
134 Cong. Rec. S16973 (daily ed. Oct. 20, 1988) (statement of Sen.
DeConcini), this statement is not inconsistent with the plain language of the
statute which requires “sales” even if they are infrequent or seasonal in
nature. Moreover, applicant fails to cite to any authority supporting the
proposition that “use in commerce” does not require any actual sales or
transport of goods when they are large or infrequently sold. Applicant’s
position is in conflict with the clear and plain statutory definition of “use in
commerce.” See 15 U.S.C. § 1127.
Applicant’s proposition that the depiction of his applied-for mark on
the website he describes in his declaration constitutes “use in commerce” is
similarly unavailing. The mere use of a trademark in the advertising or
promotion of goods in the United States is insufficient to constitute use of the
mark in commerce, within the meaning of the Trademark Act, where the
advertising or promotion is unaccompanied by any actual sale or transport of
the goods in commerce, as is the case here. Buti v. Perosa S.R.L., 139 F.3d
98, 45 USPQ2d 1985 (2d Cir. 1998).
Finally, applicant’s assertion that the shipment of parts for his goods
bearing the CLOROTEC and design mark from Utah to Mexico as of May 31,
Opposition No. 91198922

10
2011, constitutes use in commerce is of no avail. We note that applicant filed
his use-based application on June 10, 2010. Accordingly, any alleged use
subsequent to the filing date of applicant’s use-based application, as
contended by applicant, is not bona fide use as of the filing date of the
application.
Even assuming arguendo that the transport of goods bearing
applicant’s mark from applicant’s manufacturer to applicant occurred as
early as the filing date of his application, such use does not constitute use in
commerce as defined by the Trademark Act. See Avakoff v. Southern Pac.
Co., 765 F.2d 1097, 226 USPQ 435 (Fed. Cir. 1985); accord, General
Healthcare Ltd. v. Qashat, 364 F.3d 332, 70 USPQ2d 1566 (1st Cir. 2004).
We first note that applicant’s manufacturer only shipped parts that applicant
used in conjunction with other parts that were then used to produce his
identified goods. Accordingly, there was no shipment of an actual finished
product. Further, even if applicant’s manufacturer shipped the finished
product bearing applicant’s mark from Utah to applicant located in Mexico,
or all parts necessary to construct the product, such transportation of goods
from a manufacturer to the owner of the trademark, even when the goods
bear the trademark, is purely a delivery of the goods to the trademark owner
in preparation for offering the goods for sale and, therefore, does not
constitute bona fide use of applicant’s mark in commerce. Avakoff, 226 USPQ
at 436 (Fed. Cir. 1985); General Healthcare, 70 USPQ2d at 1569-70.
Opposition No. 91198922

11
Conclusion
Based upon the record before us and applicable law, we find that there
are no genuine disputes of material fact that opposer has established its
standing to bring this opposition proceeding and that there was no bona fide
use of applicant’s mark in commerce at the time applicant filed his use-based
application. Accordingly, opposer’s motion for summary judgment as to its
asserted claim of lack of bona fide use is GRANTED, the opposition is
sustained as to this claim, applicant’s application is void ab initio,5 as a
matter of law, and registration to applicant is refused.6 Aycock Engineering,
Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1305 (Fed. Cir. 2009)
(“The registration of a mark that does not meet the use requirements is void
ab initio.”)

5 Applicant was aware of the opportunity to amend the filing basis of his application
from a use-based application under Section 1(a) of the Trademark Act to an intent-
to-use application pursuant to Section 1(b) of the Trademark Act, but did not do so,
explaining that “he would only have three years from the Notice of Allowance in
which to make a sale or transport a product” and that this limited time would lead
to an “inequitable result that, despite his best efforts and his expenditure of
resources on promoting his product, Applicant might not complete a sale in the
United States for many years and thus could never register the Mark for his
expensive, custom-made, not-easily-transported product.” See p. 6 of applicant’s
response to opposer’s renewed motion for summary judgment. While the Board
understands applicant’s concerns, this does not excuse applicant from making a
bona fide use of his mark as of the filing date of his use-based application in
accordance with the Trademark Act.
6 Because we have refused registration based on opposer’s claim that applicant did
not have bona fide use of his mark in commerce as of the filing date of his use-based
application, we need not reach opposer’s additional claim of priority and likelihood of
confusion.