Trenton Place Designsv.Board of Supervisors of Louisiana State University and Agricultural and Mechanical College

Trademark Trial and Appeal Board

Nov 23, 2015

No. 91217249 (T.T.A.B. Nov. 23, 2015)

WINTER Mailed: November 23, 2015

Opposition No. 91217249
Trenton Place Designs
v.
Board of Supervisors of Louisiana State
University and Agricultural and
Mechanical College

Before Quinn, Bucher, and Lykos,
Administrative Trademark Judges.
By the Board:

The Board of Supervisors of Louisiana State University and Agricultural and
Mechanical College (hereafter “Applicant” or “LSU”) seeks registration of the mark
TIGER BAIT in standard characters on the Principal Register for goods identified
as “clothing, namely, shirts.”1 Trenton Place Designs (hereafter “Opposer”) opposes
registration on the ground of priority and likelihood of confusion under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), and, in support thereof, alleges, inter
alia, that it been using the mark TIGER BAIT on shirts, jewelry and on other
printed matter since 2009, that its use of the mark predates Applicant’s use of the

1 Application Serial No. 85886868, filed March 26, 2013, under Section 1(a) of the
Trademark Act, claiming January 1, 1981, as its dates of first use anywhere and in
commerce. Applicant claims prior ownership of U.S. Reg. Nos. 4089445, 4089446, and
4089447.
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. 91217249
2
mark, that it owns two State of Louisiana trademark registrations for the mark
TIGER BAIT, and that in view of the similarity of the marks and related nature of
the goods and channels of trade, Applicant’s use and registration of the mark is
likely to cause confusion with Opposer’s goods. In its answer, Applicant denies the
salient allegations set forth in the notice of opposition.
This case now comes up for consideration of Applicant’s fully briefed motion
(filed July 14, 2015) for partial summary judgment on the issue of priority with
respect to Opposer’s likelihood of confusion claim.
For purposes of this order, we presume the parties’ familiarity with the
pleadings, materials and arguments submitted in connection with the subject
motion.
Preliminary Matter
Opposer contends that Applicant’s motion for summary judgment is premature
because Opposer has not yet had the opportunity to depose Applicant’s declarant
regarding Applicant’s licensees and the alleged sales of Applicant’s goods bearing
the TIGER BAIT mark, nor has Opposer’s representative had the opportunity to
testify as to averments set forth in Opposer’s own declaration. Attached to
Opposer’s response is the declaration of Trenton Verges, who states that dates for
the deposition of Mr. Hommel were requested, but a date had not been agreed upon
and a notice of deposition had not yet been served.
To the extent that Opposer’s argument may be construed as a motion under Fed.
R. Civ. P. 56(d), said motion is denied as moot. When a party faced with a summary
Opposition No. 91217249
3
judgment motion files a combined request for Fed. R. Civ. P. 56(d) discovery and
response on the merits of the motion, the Board ordinarily will deem the Fed. R.
Civ. P. 56(d) discovery request moot, and decide the summary judgment motion on
the merits thereof. See Ava Ruha Corp. v. Mother’s Nutritional Center, Inc., 113
USPQ2d 1575, 1578 (TTAB 2015) (Fed. R. Civ. P. 56(d) motion denied as moot
because party filed substantive response to summary judgment motion); Ron
Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., 63 USPQ2d 2009, 2012 n.8
(TTAB 2002) (Fed. R. Civ. P. 56(f)2 motion denied where opposer filed a response to
the motion for summary judgment on the merits). See also TBMP § 528.06 (2015).
Here, inasmuch as Opposer responded to Applicant’s motion on the merits,
Opposer’s construed motion under Fed. R. Civ. P. 56(d) is moot and shall be given
no further consideration.
Applicant’s Motion for Summary Judgment
Summary judgment is an appropriate method of disposing of cases in which
there is no genuine dispute with respect to any material fact, thus leaving the case
to be resolved as a matter of law. See Fed. R. Civ. P. 56(c)(1). A party moving for
summary judgment has the burden of demonstrating the absence of any genuine
dispute as to a material fact, and that it is entitled to judgment as a matter of law.
See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions, Inc. v.
Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987). 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. See Opryland USA Inc. v.

2 Fed. R. Civ. P. 56(f) is now referred to as Rule 56(d).
Opposition No. 91217249
4
Great American 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. Cir. 1992). Additionally, the evidence of record and all justifiable
inferences that may be drawn from the undisputed facts must be viewed in the light
most favorable to the non-moving party. See Lloyd’s Food Products Inc. v. Eli’s Inc.,
987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); and Opryland USA, 23 USPQ2d at
1472.
Further, when a moving party’s motion for summary judgment is supported by
evidence sufficient to indicate that there is no genuine dispute as to any material
fact and the moving party is entitled to judgment, the burden shifts to the
nonmoving party to demonstrate the existence of a genuine dispute regarding at
least one material fact which requires resolution at trial. The nonmoving party,
however, may not rest on the mere allegations of its pleadings and assertions, but
must designate specific portions of the record or produce additional evidence
showing the existence of a genuine dispute as to a material fact for trial. See, e.g.,
Sukumar v. Nautilus, Inc., 785 F.3d 1396, 114 USPQ2d 1626, 1632 (Fed. Cir. 2015)
(“[plaintiff] cannot create a genuine issue of material fact by simply submitting a
conclusory declaration against overwhelming evidence to the contrary”); Barmag
Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.3d 831, 221 USPQ
561, 564 (Fed. Cir. 1984) (“The party opposing the motion must point to an
evidentiary conflict created on the record at least by a counter statement of a fact or
facts set forth in detail in an affidavit by a knowledgeable affiant.”). Consequently,
Opposition No. 91217249
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factual assertions, without evidentiary support, are insufficient to defend against a
motion for summary judgment. See Hornblower & Weeks Inc. v. Hornblower &
Weeks Inc., 60 USPQ2d 1733, 1739 (TTAB 2001) (“applicant has produced no
evidence, or raised any expectation that at trial it could produce evidence.”); S & L
Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221, 1225 n.9 (TTAB 1987).
On summary judgment, to establish priority on a likelihood of confusion claim
brought under Trademark Act Section 2(d), a party must show that there is no
genuine dispute that, vis-à-vis the other party, it owns “a mark or trade name
previously used in the United States ... and not abandoned. ...” Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d).
Upon careful consideration of the arguments and evidence presented by the
parties, and drawing all inferences with respect to the motion in favor of Opposer as
the nonmoving party, we find that there is no genuine dispute as to Applicant’s
priority of use.
Specifically, in support of its motion, Applicant has submitted various materials,
including the declaration of Brian R. Hommel, Applicant’s Director of Trademark
Licensing since 1995 (Hommel dec. ¶ 1). Mr. Hommel avers that Applicant
commenced licensing of its TIGER BAIT mark on apparel in 1981 (Id. ¶ 12).
Attached to Mr. Hommel’s declaration are the following notable exhibits: a
photograph dated 1989 of a t-shirt showing the wording TIGER BAIT3 (19

3 We note that an ornamental refusal under Sections 1, 2, and 45 of the Trademark Act,
15 U.S.C. §§ 1051, 1052 and 1127, to the opposed application was withdrawn by the
Examining Attorney.
Opposition No. 91217249
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TTABVUE 276); photocopies of invoices evidencing the sale of TIGER BAIT shirts
by Applicant’s licensees on July 5, 2006, and on February 28, 2008 (20 TTABVUE 5,
19); and a printout dated May 26, 2015, from www.annadean.com, showing “Men’s
LSU” TIGER BAIT shirts for sale (19 TTABVUE 290). In reply to Opposer’s
response arguing that Mr. Hommel’s statements constitute hearsay,4 Applicant also
submitted the declaration of Lyn Taylor (23 TTABVUE 13), a former employee of
Applicant, who held various positions at LSU from 1981 to 2014, including working
with Applicant’s trademark licensing program (¶ 2); and the declaration of Stuart B.
Cohen, managing member of Southland Graphics Apparel, LLC (23 TTABVUE 28).
Ms. Taylor avers that Applicant licensed the mark TIGER BAIT on a wide variety
of goods, including apparel, since 1981 and throughout her employment with
Applicant (Taylor dec. ¶ 3); and that the attached photograph of a shirt bearing the
TIGER BAIT mark5 was submitted to Applicant for approval by one of its licensees
(Id. ¶ 4). Mr. Cohen’s attests that from 2008 to 2013, Southland Graphics licensed
Applicant’s TIGER BAIT trademark for use on a variety of goods, including apparel

4 Opposer’s objections on the ground of hearsay to Mr. Hommel’s declaration are not well-
taken. See Ava Ruha Corp. v. Mother’s Nutritional Center, Inc., 113 USPQ2d 1575, 1578
(TTAB 2015) (Fed. R. Civ. P. 56(c)(4) allows testimony from personal knowledge based on
review of files and records or position with company and may be based on discussions
concerning the subject matter with other knowledgeable officers, employees, or contractors)
(citing In re DBC, 545 F.3d 1373, 89 USPQ2d 1123, 1131 (Fed. Cir. 2008)).
5 The photograph referred to by Ms. Taylor (23 TTABVUE 16) is the same photograph
referred to in the declaration of Mr. Hommel (19 TTABVUE 276).
Opposition No. 91217249
7
(Cohen dec. ¶ 5), and that Southland Graphics sold 204 units of a licensed shirt
bearing the TIGER BAIT mark in 2008 (Id. ¶ 6).6
Ms. Taylor’s uncontroverted testimony and exhibit demonstrate use of
Applicant’s TIGER BAIT mark dating back to 1981. Likewise, Mr. Hommel’s
testimony shows use of the TIGER BAIT mark since 1989. The above-referenced
evidence also shows that Applicant, through its licensee, Southland Graphics, has
used the mark TIGER BAIT in connection with clothing, namely, shirts, since at
least as early as 2008. See Trademark Act Section 5, 15 U.S.C. § 1055 (“Where a …
mark sought to be registered is or may be used legitimately by related companies,
such use shall inure to the benefit of the … applicant for registration.”). See General
Motors Corp. v. Aristide & Co., 87 USPQ2d 1179 (TTAB 2008) (“A trademark owner
can rely on the use of a licensee for its priority.”). In view of the foregoing, for
purposes of this motion, there is no genuine dispute that Applicant’s use of its
TIGER BAIT mark with apparel commenced no later than 2008.
Opposer does not own an existing registration upon which it can rely for
purposes of priority. King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974). Therefore, in order for Opposer to prevail on the
issue of priority, it must show that there is no genuine dispute that its proprietary
interest in the mark TIGER BAIT was obtained prior to Applicant’s date of first
use, i.e., 2008. See Herbko International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64

6 Although the declaration states that a photograph of a representative example of a
licensed shirt was attached as Exhibit A, the photograph is not part of the record.
Opposition No. 91217249
8
USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto Roth & Co., Inc. v. Universal Corp., 640
F.2d 1317, 209 USPQ 40, 43 (CCPA 1981).
The only evidence that Opposer has submitted is the declaration of its principal,
Trenton Verges. Mr. Verges states that Opposer’s records of its use of the mark
TIGER BAIT on t-shirts are incomplete (Verges dec. ¶ 2); and further attests that
Opposer began using the mark TIGER BAIT in commerce on jewelry, specifically,
wrist bands, beginning in December 2009, and on t-shirts “shortly thereafter.” (Id.
¶3; 22 TTABVUE 13). We note also the copies of Opposer’s receipts submitted by
Applicant, which were produced by Opposer during discovery and which show that
Opposer sold shirts of some kind on February 12, 2010, and on December 5, 2010
(19 TTABVUE 71, 75 (declaration of Carrie W. Cao, attorney for Applicant, Exh. J)).
Assuming arguendo that the receipts provided by Applicant relate to shirts bearing
the TIGER BAIT mark, which the receipts do not indicate, even then the earliest
date of use would be February 12, 2010, which is later than the 2008 sale of t-shirts
by Applicant’s licensee Southland Graphics. In view thereof, there is no genuine
dispute that Applicant has priority with respect to the TIGER BAIT mark for
clothing, namely, shirts.
In view of the foregoing, Applicant has demonstrated a prima facie case that
there is no genuine dispute of material fact regarding priority that requires trial for
resolution. The declaration of Trenton Verges does not raise any genuine dispute of
material fact. Accordingly, Opposer cannot prevail on the priority element, and its
Section 2(d) claim must fail. In view thereof, Applicant’s motion for partial
Opposition No. 91217249
9
summary judgment on the issue of priority is granted. Moreover, because priority
is an essential element of a Section 2(d) claim, the notice of opposition is dismissed
with prejudice.
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