Tri-Star Apparel, Inc.v.Dan Dunn Associates, Inc.

Trademark Trial and Appeal Board

Aug 31, 2000

No. 92027897 (T.T.A.B. Aug. 31, 2000)

THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT
OF THE T.T.A.B.
8/31/00
wellington
Cancellation No. 27,897
Tri-Star Apparel, Inc.
v.
Dan Dunn Associates,
Inc.
Before Cissel, Bucher, and Holtzman Administrative
Trademark Judges.
By the Board:
This case now comes up on respondent’s motion for
summary judgment (filed July 19, 1999).
Tri-Star Apparel, Inc. has petitioned to cancel
Registration No. 1,672,174 owned by Dan Dunn Associates,
Inc. (“respondent”), for the mark ON BOARD for “retail
clothing store services.”1 Petitioner alleges that it

1 Registration No. 1,672,174 issued to Elizabeth Dunn and Dennis
Danner on January 14, 1992 and claims date of first use and
first use in commerce of May 22, 1989. The entire interest and
goodwill in the registration was assigned to Dan Dunn
Associates, Inc. (recorded with the Assignment Division of the
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Cancellation No. 27,897
2
owns application Serial No. 75/276,569 for ON BOARD for
“men’s
and boys clothing.”2 Petitioner alleges that its
application for the mark ON BOARD has been refused
registration under Section 2(d) of the Trademark Act in
view of respondent's registration.
Petitioner claims that “registrant has abandoned
said registered mark by discontinuing use of said mark
with no intent to resume said use.” Petitioner further
alleges that “Petitioner is likely to be damaged by
continuance on the register of said registration….”
On December 4, 1998, respondent filed an answer
which denies the salient allegations of the petition to
cancel.
As mentioned above, respondent filed its motion for
summary judgment on July 19, 1999.
The motion has been fully briefed and the Board has
carefully considered the parties’ arguments and
submissions.
Summary judgment is an appropriate method of
disposing of cases in which there are no genuine issues

Trademark Office on January 29, 1990 at Reel/Frame No.
0689/0607).
2 Office records indicate that the identification of goods for
application Serial No. 75/276,569 is “imprinted T-shirts and
Cancellation No. 27,897
3
of material fact in dispute, thus leaving the case to be
resolved as a matter of law. See Fed. R. Civ. P. 56(c).
The purpose of summary judgment is to avoid an
unnecessary trial where additional evidence would not
reasonably be expected to change the outcome. See Pure
Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222
USPQ 741 (Fed. Cir. 1984). A party moving for summary
judgment has the burden of demonstrating the absence of
any genuine issue of material fact, and that it is
entitled to summary judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct. 2548
(1986). The 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. See Opryland USA,
Inc. v. Great American Music Show, Inc., 961 F.2d 200, 22
USPQ2d 1542 (Fed. Cir. 1992).
In support of its motion for summary judgment,
respondent argues that it “has never discontinued its use
[of] the mark…,” but rather that “uncontroverted evidence
establishes that Dan Dunn has operated retail stores
using the ON BOARD mark continuously since at least
1992.” Respondent has attached, as Exhibit 1 to its

caps.” Application Serial No. 75/276,569 was filed on April 17,
1997 under Section 1(b) (“intent to use”) of the Trademark Act.
Cancellation No. 27,897
4
motion, its Declaration Under Sections 8 and 15 (filed
with the Trademark Office on July 19, 1999) wherein
respondent declares that its mark “has been in continuous
use by Registrant in interstate commerce for five (5)
consecutive years from the date of registration to the
present, on all the services recited in the registration;
that said mark is still in use on the services in
interstate commerce as evidenced by the attached specimen
showing the mark as currently used…” (with attached
specimen evidencing use of said mark). Respondent has
attached, as Exhibit 2 to its motion, a copy of a report
identified by petitioner in its responses to respondent’s
interrogatories as an “industrial investigation report”
executed by Mr. Seymour Adler and dated “May 6, 7, 1998.”
In this report, Mr. Adler states that he was able to
locate two “On Board” retail clothing stores in
California owned by respondent.3

3 In further support of its motion for summary judgment,
respondent attached a copy of its first set of requests for
admissions served on petitioner and requested that they be
deemed admitted pursuant to Fed. R. Civ. P. 36(a) because of
petitioner’s failure to file answers to the requests for
admissions. On August 2, 1999, petitioner filed a motion to
make of record petitioner’s responses to respondent’s first set
of requests for admissions. Petitioner stated that it did not
receive a copy of said requests for admissions. Petitioner’s
motion is hereby granted inasmuch the requests for admissions
shall not be deemed admitted.
Cancellation No. 27,897
5
In response to respondent’s motion for summary
judgment, petitioner argued that a “threshold issue is
whether registrant, possibly at the time of filing of the
application resulting in registration in issue and
certainly at the time of filing Sec. 8 and 15 affidavits,
misrepresented to the PTO that the mark was used in
interstate commerce.”4 Specifically, petitioner argues
that the specimen showing use of the mark ON BOARD which
was submitted with the Section 8 and 15 affidavit
identifies only one store location and petitioner argues
that this
“indicates that Registrant did not make ‘use in commerce’
as defined in TMEP 1201.01….” Petitioner’s allegation
that respondent’s use of the ON BOARD does not amount to
use in interstate commerce was not pleaded in the
petition to cancel. A party may not defend against a
motion for summary judgment by asserting the existence of
genuine issues of material fact as to an unpleaded claim
or defense. See Blansett Pharmaceutical Co. v. Carmrick
Laboratories Inc., 25 USPQ2d 1473 (TTAB 1992) and Perma

4 In response to respondent’s motion for summary judgment,
petitioner initially filed (on July 26, 1999) a motion to
dismiss registrant’s motion for summary judgment as untimely
filed. On August 16, 1999, the Board denied petitioner’s motion
to dismiss respondent’s motion for summary judgment and
suspended proceedings pending the disposition of the motion for
summary judgment.
Cancellation No. 27,897
6
Ceram Enterprises, Inc. v. Preco Industries Ltd., 23
USPQ2d 1134 (TTAB 1992). See also TBMP §528.07(a) and
authorities cited therein. In view thereof, the Board
will not consider petitioner’s claim regarding
respondent’s use of the mark in interstate commerce.
After reviewing the arguments and supporting
evidence of the parties, the Board finds that respondent
has met its burden of establishing that no genuine issues
of material fact exists and has demonstrated that it is
entitled to judgment as a matter of law. Specifically,
respondent has provided evidence establishing that it has
not abandoned its mark ON BOARD and continues to use said
mark in commerce. Petitioner has not submitted any
evidence to the contrary.
Cancellation No. 27,897
7
Accordingly, judgment is entered against petitioner
and the petition to cancel is dismissed with prejudice.
Robert F. Cissel
David E. Bucher
Terry E. Holtzman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board