Turbo Sportswear, Inc.v.Marmot Mountain Ltd.

Trademark Trial and Appeal Board

Nov 21, 2005

No. 91157260 (T.T.A.B. Nov. 21, 2005)

lms Mailed: November 21, 2005

Opposition Nos. 91157260
91157625

Turbo Sportswear, Inc

v.

Marmot Mountain Ltd.

Before Seeherman, Quinn and Walters,
Administrative Trademark Judges.

By the Board:

Two applications filed by Marmot Mountain Ltd. to
register the marks shown below
1 2

1 Serial No. 76112629 was filed on August 18, 2002, and is based
on applicant’s assertion of a bona fide intention to use the mark
in commerce for goods in four classes (18, 20, 22 and 25).
Opposer has opposed only classes 18 and 25.

2 Serial No. 76112630 was also filed on August 18, 2002, and is
based on applicant’s assertion of a bona fide intention to use
the mark in commerce for goods in four classes (18, 20, 22 and
25). Opposer has opposed only classes 18 and 25.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DECISION IS
CITABLE AS PRECEDENT
OF THE TTAB
Opposition Nos. 91157260 & 91157625
2
have been opposed by Turbo Sportswear, Inc., claiming
priority of use and ownership of seven federal registrations
all containing the stylized mountain design shown below

for numerous clothing items. Opposer alleges that
applicant’s use of its stylized mountain designs in
connection with the goods identified in the applications in
classes 25 and 18 is likely to cause confusion, mistake, or
to deceive. Applicant denied all the salient allegations of
the notices of opposition in its answers.
This consolidated3 case now comes up on applicant’s
motion, filed May 31, 2005, to amend its answers in both
oppositions to add counterclaims to cancel five of opposer’s
pleaded registrations,4 namely, Registration No. 2515997,
issued on December 11, 2001; Registration No. 2197424,
issued on October 20, 1998, Section 8 affidavit filed May
18, 2005; Registration No. 2111782, issued on November 11,
1997, Section 8 affidavit filed November 6, 2003;

3 On August 27, 2004 opposer filed a motion to consolidate the
two proceedings which was granted by the Board on September 24,
2004.

4 All of the registrations sought to be cancelled are for goods
in Class 25.
Opposition Nos. 91157260 & 91157625
3
Registration No. 2069384, issued on June 10, 1997, Section 8
affidavit filed August 23, 2002; and Registration No.
1907447, issued on July 25, 1995, and renewed on December
30, 2004.5 In response, opposer has moved to amend two of
its pleaded registrations to delete certain goods. The
motions are fully briefed.
As grounds for the motions to amend its answers to add
the counterclaims, applicant states that it recently learned
through the testimony deposition of Nate Kestenman,
opposer’s Vice President (taken April 27, 2005), that
“Opposer’s pleaded registrations may have been either
fraudulently issued or maintained” (motion p. 1) and
therefore applicant seeks to cancel opposer’s registrations
based on fraud. For instance, in paragraph 1 of its
proposed counterclaim, after noting that the goods listed in
Registration No. 2515997 include suits and sports jackets,
applicant alleges (paragraph 2) that Mr. Kestenman testified
that the mark “was never used on the items ‘suits’ and
‘sports jackets’”; and alleges (paragraph 3) that
“Registration No. 2515997 was procured by Opposer’s
knowingly false or fraudulent statements, which statements

5 In its original notices of opposition, opposer also pleaded
ownership of (i) Registration No. 2186355, issued on September 1,
1998, which opposer voluntarily surrendered on May 13, 2005, and
which was cancelled on October 5, 2005; and (ii) Registration No.
2088369, issued on August 12, 1997, which was cancelled under
Section 8 on May 15, 2004. Applicant does not seek to cancel
these registrations.
Opposition Nos. 91157260 & 91157625
4
were made with the intent to induce authorized agents of the
U.S. Patent and Trademark Office to grant said registration,
and, reasonably relying upon the truth of said false
statements, the U.S. Patent and Trademark Office did, in
fact, grant said registration to Opposer.” As for the three
registrations applicant seeks to cancel based on allegedly
inaccurate Section 8 and Section 15 affidavits, applicant
alleges, as an example, again pointing first to the scope of
the goods in the declaration, and then to Mr. Kestenman’s
asserted testimony, that “Registration No. 2197424 has been
maintained by Opposer’s knowingly false or fraudulent
statements, which statements were made with the intent to
induce authorized agents of the U.S. Patent and Trademark
Office to approve the Declaration of Use and
Incontestability under Sections 8 and 15 of the Trademark
Act, and, reasonably relying upon the truth of said false
statements, the U.S. Patent and Trademark Office did, in
fact, approve Opposer’s Declaration….” (paragraph 7).
In response, opposer contends that applicant’s motion
to amend its answers is untimely; that the testimony
applicant relies upon does not support an allegation of
fraud; and that, in connection with its motion to amend its
registrations, opposer contends that applicant is not
prejudiced by the presence of some goods in the
registrations if they are not currently sold under the mark
Opposition Nos. 91157260 & 91157625
5
but, so as not to delay these proceedings further, opposer
is willing to amend two of its registrations to delete goods
that are not currently being marketed under the respective
marks.
Trademark Rule 2.107(a) and Fed. R. Civ. P. 15(a)
encourage the Board to look favorably on motions to amend,
stating that “leave shall be freely given when justice so
requires.” Nevertheless, if allowance of the amendment
would cause undue prejudice or be futile, amendment will be
denied. See Foman v. Davis, 371 U.S. 178, 182 (1962); and
W.R. Grace & Co. v. Arizona Feeds, 195 USPQ 670, 671 (TTAB
1977).
In this case, the counterclaims to cancel opposer’s
pleaded registrations are compulsory counterclaims. See
Trademark Rule 2.106(b)(2)(i). To be timely, a counterclaim
must be brought as part of defendant’s answer or promptly
after the grounds therefor are learned. Thus, in the
present case, we must determine whether applicant knew of
the grounds at the time it filed its answers and, if not,
whether applicant filed its counterclaims promptly upon
learning of those grounds.
Applicant states that “the grounds for cancellation of
Opposer’s pleaded registrations not only could not have been
known to the Applicant when its answer was filed, but for
the most part, such grounds did not yet exist” (motion p. 3)
Opposition Nos. 91157260 & 91157625
6
because it was Mr. Kestenman’s testimony, when compared with
opposer’s Section 8 and Section 15 affidavits, that raised
the issue. Applicant states that the grounds for
cancellation became known during the testimony deposition of
opposer’s vice-president, Mr. Kestenman, which was taken on
April 27, 2005.
In particular, as to Registration No. 2515997, (the
underlying application was based on a claim of use in
commerce), applicant asserts that Mr. Kestenman testified
that he did not think the mark was ever used on suits and
sports jackets, and he did not recall whether it was ever
used on underwear. As to Registration No. 2197424,
applicant contends that Mr. Kestenman testified that opposer
did not use the mark on shirts or shorts, and that he did
not recall use on rainwear, although just a week prior to
this testimony, opposer filed a Section 8 affidavit that
included those items. With respect to the other three
registrations (Nos. 2111782, 2069384 and 1907447), applicant
contends that there are direct inconsistencies between Mr.
Kestenman’s testimony and the Section 8 affidavits regarding
use of the respective marks in connection with certain
listed items.
Opposer counters this argument by stating that
applicant was aware of what goods the marks were being used
on when it received opposer’s responses to its
Opposition Nos. 91157260 & 91157625
7
interrogatories in 2003, but that the motion to amend was
not filed until the case was in the middle of opposer’s
testimony period, and therefore the motion is untimely.
Opposer also appears to take the position that, even if
there is an inconsistency between the goods on which it
claimed use of the marks, and the goods on which it actually
used the marks, such nonuse is de minimis. It argues that,
of the 17 items listed in the various registrations and
discussed during the testimony of Mr. Kestenman, applicant
asserts that opposer was not using the marks on only a few
of the items identified in the registrations. Opposer
further states that when opposer received applicant’s motion
to amend its answers to add the counterclaims, opposer
researched the accuracy of Mr. Kestenman’s testimony and
discovered that some of the goods listed in Registration No.
2515997 are currently not sold under the mark. Therefore,
opposer asserts that these goods will be deleted from the
registration when the Section 8 and 15 affidavits for the
registration are due, but so as not to further delay these
proceedings, opposer is willing to amend this registration
now.
Opposer states that further inquiry also revealed that
Mr. Kestenman’s testimony regarding Registration No. 2197424
was inaccurate, and that all of the listed goods in that
registration are currently sold under the mark.
Opposition Nos. 91157260 & 91157625
8
As to Registration No. 2111782, opposer argues that
applicant mischaracterized Mr. Kestenman’s testimony.
Opposer claims that Mr. Kestenman testified that opposer was
not currently marketing certain goods, not that the mark was
not used on the goods; and that, with respect to
Registration No. 2069384, Mr. Kestenman testified he “did
not recall” use of the mark for boots, not that it was not
being used.
Finally, as to Registration No. 1907447, opposer states
that its subsequent research indicates that it is not
selling leather down coats every season and those goods
should have been deleted when it filed its Section 8
affidavit; and, so as not to further delay these
proceedings, opposer is willing to amend its registration to
delete those goods.
After reviewing the submissions of the parties, we find
that the testimony of Mr. Kestenman provides information
that may be relevant to applicant’s pleading of fraud with
respect to each of the five registrations, and that such
information was not previously available to applicant. In
particular, opposer’s answers to interrogatories, which
dealt only with whether the marks were in use on the goods
at the time the responses were provided, would not have
apprised applicant that the marks were not in use on all of
the goods at the times the applications for registration
Opposition Nos. 91157260 & 91157625
9
were filed,6 or that the marks were not in use on all of the
goods at the times the Section 8 affidavits were
subsequently filed. Thus, applicant would not have been
aware, at the time that it received opposer’s answers to its
interrogatories, that a claim of fraud might lie.
Therefore, the motion to amend the answers to assert the
counterclaims based on fraud is timely. Trademark Rule
2.106(b)(2)(i).
The next question we must consider is whether the
proposed amendment to add the counterclaims would be futile.
A statement in a use-based application that the applied-for
mark is being used on all of the goods listed in the
application, or in a Section 8 affidavit or in a Section 9
application for renewal, that the mark is being used on all
of the goods listed in the registration, when that statement
is false, may give rise to a valid ground of fraud. See
Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205, 1208 (TTAB
2003). Opposer is advised that if applicant is able to
establish the elements of fraud even as to one of the goods
listed in opposer’s single-class registration, the entire
registration is subject to cancellation. Fraud cannot be
cured merely by deleting from the registration those goods
on which the mark was not used at the time of the signing of

6 All of the underlying applications were based on Section 1(a)
of the Trademark Act, asserting use of the mark in commerce.
Opposition Nos. 91157260 & 91157625
10
a use-based application or a Section 8 affidavit. Thus,
applicant’s proposed counterclaims are not futile.
Accordingly, because applicant’s motion to amend its
answers to add counterclaims to cancel five of opposer’s
seven pleaded registrations is timely and the counterclaims
state a valid claim, the motion is granted. Applicant’s
amended answers and counterclaims for cancellation of
Registration Nos. 2515997; 2197424; 2111782; 2069384; and
1907447 are accepted.
Opposer is allowed until thirty days from the mailing
date of this order to file its answers to the
counterclaims.7
As to opposer’s motion to amend two of its
registrations to delete certain goods, although the
amendments are limiting in nature, because they are
contested by applicant, the propriety of the amendments will
be deferred until final decision and decided in connection
with the determination of the counterclaims. See Medinol,
supra (amendment of an identification to delete goods cannot
cure fraud).
Proceedings are resumed and trial dates are reset as
indicated below. Discovery and testimony periods are being
reopened in view of the counterclaims.
THE PERIOD FOR DISCOVERY TO CLOSE: 3/01/2006

7 An answer should be filed in each opposition file so each
proceeding can retain its separate character.
Opposition Nos. 91157260 & 91157625
11

30-day testimony period for
plaintiff in the opposition to close: 5/30/2006

30-day testimony period for defendant in the opposition
and as plaintiff in the counterclaims to close: 7/29/2006

30-day testimony period for defendant in the counterclaims
and its rebuttal testimony as plaintiff in the
opposition to close: 9/27/2006

15-day rebuttal testimony period for plaintiff in the
counterclaims to close: 11/11/2006

Briefs shall be due as follows:
[See Trademark rule 2.128(a)(2)].

Brief for plaintiff in the opposition shall be due: 1/10/2007

Brief for defendant in the opposition and as
plaintiff in the counterclaims shall be due: 2/09/2007

Brief for defendant in the counterclaims and its reply
brief (if any) as plaintiff in the opposition
shall be due: 3/11/2007

Reply brief (if any) for plaintiff in the
counterclaims shall be due: 3/26/2007

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule
2.125.
An oral hearing will be set only upon request filed as
provided by Trademark Rule 2.129.

.o0o.