Unique Motorcarsv.Carroll Hall Shelby Trust

Trademark Trial and Appeal Board

Mar 4, 2009

OPP (T.T.A.B. Mar. 4, 2009)

Mailed:
March 4, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Unique Motorcars

v.

Carroll Hall Shelby Trust
_____

Opposition No. 91150352

to application Serial No. 75586777

and

Opposition No. 91155242

to application Serial No. 76279667
_____

W. Wheeler Smith, Esq. for Unique Motorcars.

Robert F. Helfing of Sedgwick, Detert, Moran & Arnold LLP
and Edward A. Sokolski, Esq. for Carroll Hall Shelby Trust.
______

Before Quinn, Zervas and Bergsman, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

This consolidated proceeding involves two trademark
applications owned by Carroll Hall Shelby Trust
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Opp. Nos. 91150352 and 91155242
2
(“applicant”). The first application [Serial No. 75586777
(“‘777”), filed November 12, 1998] is for the configuration

for “automobiles” in International Class 12. The ‘777
application claims acquired distinctiveness under Section
2(f) of the Trademark Act, 35 U.S.C. § 1052(f), and
identifies April 6, 1965 as the date of first use anywhere
and first use in commerce. The parties have referred to the
configuration of the ‘777 application as “Cobra 427 S/C” and
we do the same in our decision. The second application
[Serial No. 76279667 (“‘667”), filed July 2, 2001] is for
the configuration

for “automobile namely a racing car” in International Class
12. The ‘667 application claims acquired distinctiveness
under Section 2(f), identifies September 1, 1962 as the date
of first use anywhere and first use in commerce, and
contains the following description of the mark: “The mark
Opp. Nos. 91150352 and 91155242
3
consists of the overall configuration of the Shelby FIA 289
Cobra automobile.”
Unique Motorcars (“opposer”) has opposed registration
of both of applicant's configuration marks. In the notices
of opposition, opposer claims that over the last 30 years,
it has manufactured and sold automobiles which are replicas
of the vehicles depicted in the ‘777 and ‘667 applications;
that applicant has not acquired distinctiveness in such
shapes; that applicant has abandoned any trademark rights in
such shapes because it has ceased use for more than twenty
years; that the shapes of the automobiles which are the
subject of the applications are generic; and that applicant
is barred from registering its marks because of fraudulent
representations made in its application with respect to its
assertions in its applications that no other entity has the
right to use the mark in commerce.
Applicant has filed answers denying all of the salient
allegations of the notices of opposition. The consolidated
oppositions have been fully briefed.
Evidentiary Issues
Opposer, during its testimony period, submitted only
one item of evidence, namely, a discovery deposition of its
own witness. On August 7, 2008, the Board granted
applicant's motion to strike this deposition as conceded by
Opp. Nos. 91150352 and 91155242
4
opposer. Thus, opposer concluded its testimony period
without any evidence in the record.
Rather than seizing the advantage presented to
applicant and moving for judgment under Trademark Rule
2.132(b), 37 C.F.R. § 2.132(b), due to applicant's failure
to present any evidence into the record to establish its
standing or to support its claims, applicant filed two
notices of reliance during its testimony period, submitting
thousands of pages of evidence. After applicant's testimony
period closed, the following occurred:
(i) opposer filed a rebuttal notice of reliance on
July 1, 2008;

(ii) opposer filed hundreds of pages of exhibits
with its main brief on September 5, 2008;

(iii) applicant filed an “Augmented Notice of
Reliance” on October 20, 2008; and

(iv) opposer filed a motion on November 21, 2008
to use a discovery deposition taken in a civil
action, after applicant filed its main brief.

Essentially all of the evidence which both parties
filed pursuant to notices of reliance is not appropriate for
introduction by way of a notice of reliance. See Trademark
Rules 2.122(e); TBMP § 704 (2d ed. rev. 2004). Opposer has
not objected to the admissibility of any of applicant's
evidence, and in fact relies on much of this evidence in its
main and rebuttal briefs. Opposer even lists a report on a
survey conducted by applicant as part of its “Description of
the Record,” which applicant submitted with a notice of
Opp. Nos. 91150352 and 91155242
5
reliance even though a survey report is not appropriate for
a notice of reliance absent a stipulation between the
parties. Moreover, opposer consented to the filing of
applicant's “Augmented Notice of Reliance,” despite the fact
that opposer had already filed its main brief and was
without an opportunity to submit additional evidence in
rebuttal.
We therefore consider all of applicant's evidence,
construing opposer's lack of any objection to any of
applicant's evidence filed within its testimony period as
opposer's consent to the submission of such evidence by
means of a notice of reliance. As for the applicant's
evidence submitted outside of its testimony period, i.e.,
with applicant's “Augmented Notice of Reliance,” in light of
opposer's consent thereto, we also consider that evidence.
We now address opposer’s submission with its rebuttal
notice of reliance. Applicant's objections to most of this
evidence are overruled because (i) our consideration of this
evidence does not change the outcome of these oppositions,
or (ii) applicant has not offered a valid objection.1

1 For example, applicant has objected to the November 17, 2006
discovery deposition of Maurice Weaver in ERA Replica Automobile
v. Carroll Shelby Trust, Cancellation No. 92040723, on the basis
that opposer did not bring a motion seeking submission of this
deposition testimony. The Board, however, has construed the term
“testimony,” as used in Trademark Rule 2.122(f), 37 C.F.R.
§ 2.122(f), as meaning only trial testimony, or a discovery
deposition which was used, by agreement of the parties, as trial
testimony in the other proceeding. See TBMP §§ 530 and 704.13.
There is no indication that the ERA Replica case ever went to
Opp. Nos. 91150352 and 91155242
6
However, we sustain applicant's objection to the December
13, 2007 discovery deposition of Maurice Weaver taken in the
present proceeding. This deposition is the same deposition
that the Board struck in its August 7, 2008 order, mentioned
above. Opposer’s attempt to submit this deposition
transcript a second time after it had already been stricken
is nothing more than an attempt to hoodwink the Board into
considering this evidence. If we had the power to sua
sponte impose monetary sanctions against opposer’s counsel
for such behavior, we would do so here.
As for the evidence submitted with opposer's main
brief, applicant has objected to most of this evidence as
not having been timely filed, an objection which is well
taken. See Trademark Rule 2.121(a)(1), 37 C.F.R. §
2.121(a)(1); and TBMP § 704.05(b). However, some of this
evidence was also submitted with opposer's rebuttal notice
of reliance, which we have not excluded. Thus, we affirm
applicant's objection to the material submitted with
opposer's main brief, namely, the copies of “The Complete
Guide to Cobra Replicas,” “Kit Car” and “Kit Car
Illustrated,” but overrule applicant's objection to that
material which was also submitted with opposer's rebuttal
notice of reliance.

trial. Thus, the discovery deposition is objectionable because
there is no motion and because it is a discovery deposition which
was not used at trial.
Opp. Nos. 91150352 and 91155242
7
Next, we consider opposer's motion to use a discovery
deposition from Carroll Shelby et al. v. Superformance
International, Inc., Case No. 00-cv-12581, a civil action in
the Massachusetts district court. The Board has not
received a response from applicant to opposer's motion.
However, the certificate of service attached to the motion
identifies the paper served as a “Motion to Extend Time for
Taking Testimony” and incorrectly identifies applicant's
attorney’s postal zip code as 90053 rather than 90503. We
therefore cannot be sure that applicant’s counsel ever
received the motion and had an opportunity to respond. See
Trademark Rule 2.119(a), 37 C.F.R. § 2.119(a); TBMP § 113.
Additionally, opposer's attempt to introduce evidence in
this proceeding after the conclusion of trial, and after
applicant had its last opportunity to make its case, goes
beyond the pale, and makes a mockery of the rules of
evidence. Further, opposer has not explained why it waited
until after applicant filed its main brief to submit
testimony from 2001. Opposer’s motion is therefore denied
and we do not give the discovery deposition any further
consideration.
The Record

In addition to the pleadings, the files of the opposed
applications are part of the record without any action by
the parties. Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b).
Opp. Nos. 91150352 and 91155242
8
Taking into account our evidentiary rulings, the record
includes discovery depositions, some (but not all) with
exhibits,2 excerpts from printed publications, survey
reports with exhibits, and applicant's responses to certain
discovery requests propounded by opposer, all introduced by
way of notices of reliance.
Background
Carroll Hall Shelby, identified as the trustee of the
Carroll Hall Shelby Trust, is a former race car driver who
raced and built automobiles in the 1960s. His company,
Shelby American Inc., completed and sold automobiles having
the shapes depicted in the two involved applications. In
the period from 1961 to 1966, his company completed
approximately (i) six-hundred model “260s and 289s,” with
the 260s being “about the same thing” as the 289s;
(ii) three hundred fifty model 427s; (iii) twenty model 289
FIAs; and (iv) fifty model 427 S/Cs. Shelby dep. at 35 –
43, ex. I, applicant's augmented notice of reliance. All of
these vehicles bore the name Cobra. Id. at 46. Sales of
such vehicles spanned from 1961 until “the early ‘70s.” Id.

2 We consider the discovery depositions of Maurice Weaver
(November 17, 2006 in Opposition No. 91151113/Cancellation Nos.
92040723 and 92041950), Richard Weaver (June 22, 1989 in Civ.
Action No. CA3-86-2570-T, Northern Dist. Texas), and Carroll
Shelby and David Davis (March 19 – 20, 2002 and June 6, 2002,
respectively, in the Superformance action).

Opp. Nos. 91150352 and 91155242
9
at 79. In 1993 or 1994, Shelby American resumed production
of Cobra 427s and 289 FIAs. Id. at 132 – 133.
Since 1979, opposer has been manufacturing replicas of
Cobra vehicles produced in the mid-1960s, with its primary
products being replicas of the 427 SC Cobra and the 289 FIA
Cobra. Maurice Weaver dep. pp. 11 – 12, ex. E-1, opposer's
rebuttal notice of reliance; Richard Weaver dep. p. 34, ex.
H., opposer's rebuttal notice of reliance. The replicas are
complete automobiles (“somewhere in the neighborhood of
three to five … per year”) and “kit” cars (between 30 – 40
units per year). According to Maurice Weaver, a “kit” car
is “a complete body assembled sitting on a complete chassis
assembled with no engine or transmission, no tires and
wheels and no paint and some of the accessories that go with
the engine and things like that.” M. Weaver dep. pp. 12 -
13.
Analysis
We first consider opposer's standing to bring this
opposition and then consider each of opposer's pleaded
claims. Opposer has also argued that it is entitled to
relief based on various claims which it did not plead in its
notices of opposition; we later address those claims.
Standing
To establish standing in an opposition, an opposer must
show that it has a “real interest” in the outcome of the
Opp. Nos. 91150352 and 91155242
10
proceeding; that is, that it has a direct and personal stake
in the outcome of the opposition. 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). Because opposer
manufactures replicas of Cobra automobiles produced in the
mid-1960s, R. Weaver dep. pp. 34 – 35, and because applicant
has not contested opposer's standing, we find that opposer
has a real interest in the outcome of this proceeding and
has standing to pursue its claims.
No Acquired Distinctiveness
The Federal Circuit, in Yamaha International Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1004-
05 (Fed. Cir. 1988), addressed the burdens of each party in
an opposition involving an application under Section 2(f)
when the plaintiff alleges that acquired distinctiveness has
not been established:
[O]ne opposing a Section 2(f) registration
published for opposition on the basis of that
section must have at least the initial burden of
challenging or rebutting the applicant's evidence
of distinctiveness made of record during
prosecution which led to publication of the
proposed mark.
An opposer to an application submitted under
Section 2(f) sufficiently meets its initial burden
if it produces sufficient evidence or argument
whereby, on the entire record then before the
board, the board could conclude that the applicant
has not met its ultimate burden of showing
acquired distinctiveness. …
Opp. Nos. 91150352 and 91155242
11
Where, as here, an applicant seeks a registration
based on acquired distinctiveness under Section
2(f), the statute accepts a lack of inherent
distinctiveness as an established fact. …
If the opposer does present its prima facie case
challenging the sufficiency of applicant's proof
of acquired distinctiveness, the applicant may
then find it necessary to present additional
evidence and argument to rebut or overcome the
opposer's showing and to establish that the mark
has acquired distinctiveness.

In this case, because applicant seeks registration for its
subject design on the basis of a claim of acquired
distinctiveness under Section 2(f) of the Trademark Act, it
is opposer who has the initial burden of showing that the
evidence which applicant submitted with its application is
insufficient to establish such a claim. See Goodyear Tire
and Rubber Co. v. Interco Tire Corp. 49 USPQ2d 1705 (TTAB
1998). If that initial burden is met, the burden of going
forward shifts to applicant to show, by a preponderance of
the evidence of record, that its automobile designs have in
fact acquired distinctiveness and thus function as
trademarks.
Clearly, opposer has not met its initial burden of
providing evidence at the close of its testimony period
challenging or rebutting applicant's evidence of
distinctiveness made of record during prosecution of its
applications – all of opposer’s evidence submitted during
its testimony period has been stricken. Additionally,
opposer has not argued in its briefs that applicant’s
Opp. Nos. 91150352 and 91155242
12
evidence of acquired distinctiveness made of record during
prosecution of its applications is insufficient. Because
opposer has not met its initial burden, opposer’s claims of
no acquired distinctiveness are dismissed.3
Abandonment
At p. 12 of its brief, opposer, under the heading
“Shelby Re-Entered the Cobra Industry After a 20-Year
Absence,” argues that “In 1996, Shelby American, Inc. began
selling the … Cobra replica. This car has the same body
shape as the original Cobra 427 S/C. Shelby American
continues to sell the [replica] to the present, at prices
exceeding $100,000.” At p. 7 of its reply brief, applicant
argues “Applicant and Opposer have both used the subject
trade dress concurrently from 1990 to the present time.
Opposer has averaged sales of twenty-five (25) Cobra
replicas per year since 1990 … Applicant has not disclosed
its sales during this time period, but it is probably about
the same, because Applicant demands a higher price for its
vehicles by advertising the vehicles as ‘original Cobras.’”
Further, Mr. Shelby has stated in his deposition that he has
been building and selling Cobra 289s and 427s since 1989 and

3 Because opposer did not introduce any evidence or make any
argument regarding the sufficiency of applicant's showing of
acquired distinctiveness during the prosecution of the
applications, we need not consider applicant’s evidence of
acquired distinctiveness, including the survey reports submitted
by applicant.

Opp. Nos. 91150352 and 91155242
13
has built “two or three hundred” Cobra 427s. See Shelby
dep. pp. 122-123, 129, 132-133, 148, 217, 219 and 225. This
uncontroverted testimony is sufficient to establish that
applicant is manufacturing and selling automobiles with the
applied-for configurations.
Opposer, in its briefs, has argued strenuously that
applicant abandoned its mark from approximately 1970 until
approximately 1990 when it resumed use. We find opposer's
abandonment argument irrelevant in view of opposer's
concession that applicant has resumed manufacturing and
selling automobiles with the applied-for configurations.
Abandonment and resumption of use are material when priority
of use is at issue, and priority of use is not an issue
here. Further, opposer's claim at paragraph 6 of both
notices of opposition that applicant ceased manufacture of
the 289 and 427 S/C vehicles and did not recommence making
replicas of such vehicles until about 1990, over twenty
years later, even if true, has no consequence and does not
preclude registration of applicant's configurations; opposer
is not contending that applicant currently is not using the
marks.
Opposer’s claims of abandonment therefore are
dismissed.
Opp. Nos. 91150352 and 91155242
14
Genericness
Opposer’s claims that the configurations of the ‘777
and ‘667 applications are generic are based on opposer's
allegation that “dozens” of automobile manufacturers have
manufactured and sold replicas of applicant's designs
without any control or permission from Mr. Shelby, and that
applicant was aware of this “prolific uncontrolled use.”
See both paragraphs numbered “3” in the notices of
opposition.
The Board does not often have the occasion to consider
a claim involving the genericness of a design. Accordingly,
there is little Board precedent on this issue. The Federal
Circuit, our principal reviewing court, however, has
confirmed that “generic name” in Section 14 of the Lanham
Act 15, U.S.C. Section 1064(3), applies to a product
configuration. Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175
F.3d 1322, 50 USPQ2d 1532 (Fed. Cir. 1999)(vacating the
Board’s dismissal of a claim to cancel a registration for a
“metallic nautical rope design” for clocks, watches and
jewelry on the ground of genericness because of the
trademark’s incontestable status). The court stated that
“generic name” “must be read expansively to encompass
anything that has the potential but fails to serve as an
indicator of source, such as names, words, symbols, devices,
or trade dress.” It reasoned that “[a]ny narrower
Opp. Nos. 91150352 and 91155242
15
interpretation of ‘generic name’ would allow incontestable
trademarks other than names that become generic to retain
incontestable status despite their inability to serve as
source designators. This would directly contravene the
purpose of the Lanham Act.” Id. at 1535.
Other courts have also recognized a claim of
genericness regarding a product configuration. For example,
in Abercrombie & Fitch Stores Inc. v. American Eagle
Outfitters Inc., 61 USPQ2d 1769 (6th Cir. 2002), the Sixth
Circuit stated that “no designer should have a monopoly on
designs regarded by the public as the basic form of a
particular item.” In Walker & Zanger, Inc. v. Paragon
Industries, Inc., 549 F. Supp. 2d 1168, 84 USPQ2d 1981, 1985
(N.D. Cal. 2007), the district court found various stone and
ceramic decorative tiles generic, stating that “[c]ases
addressing product design suggest that the term
‘genericness’ covers three situations: (i) if the definition
of a product design is overbroad or too generalized; (ii) if
a product design is the basic form of a type of product; or
(iii) if the product design is so common in the industry
that it cannot be said to identify a particular source.”
Opposer's tack in this case is based on no. (iii)
above, i.e., that the product design is so common in the
industry that it cannot be said to identify a particular
source. The evidence of record reflects that third-parties
Opp. Nos. 91150352 and 91155242
16
have manufactured replicas of the automobiles depicted in
the involved applications. According to Richard Weaver,
seven replica manufacturers “have popped up starting in
1980, ’81, and in the years since. Some of them have come
and gone, new names, new owners, disappeared for 6 or 8
months and re-emerged, but for the most part it all happened
– it happened all in about a four year period from late 1979
to 1984 that all these people came up.” R. Weaver dep. pp.
87 – 90. Maurice Weaver stated in his 2006 deposition that
there are about 25 to 26 Cobra replicar builders in the
United States, and that companies come into existence and go
out of existence. M. Weaver dep. at p. 37. Mr. Shelby, on
p. 73 of his 2001 deposition stated, without further
elaboration, “So all these guys, these 40 companies – or
whatever number it is – that have knocked them off, they –
they call themselves – they call them Cobra replicas.”
There is some evidence in the record too as to
opposer's sales activities. Richard Weaver has stated that
opposer's total sales of kits and completed replica cars
since opposer began making such kits and cars was
approximately 300; and that opposer sold 35 kits in 1987,
the most opposer had ever sold. Richard Weaver dep. p. 141.
Based on this record, however, we cannot conclude that
the product designs are so common in the industry that they
cannot be said to identify a particular source. At a
Opp. Nos. 91150352 and 91155242
17
minimum, the evidence does not reflect when the third-party
manufacturers sold their replicas, how many they sold or the
market share of opposer and the third-party manufacturers.4
Without such evidence, we cannot conclude that the
configurations are generic.
Opposer has also argued that “[t]here was no attempt by
Shelby [applicant] to judicially enforce his claim to
exclusive use except his action against Superformance, which
resulted in a judgment in favor of Superformance … and his
action against Factory Five, which was settled by the
parties.”5 Reply at p. 7. It is true that trade dress may
become generic “as a result of the trademark owner's failure
to police [it] … so that widespread usage by competitors
leads to generic usage among the relevant public, who see
many sellers using the same [product design].” 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition, §
12:1 (4th ed. 2009). Although a party need not police every

4 Richard and Maurice Weaver were shown various issues of “Kit
Car Illustrated” in their depositions and discussed the magazine
advertisements in such magazines. Because opposer did not submit
the deposition exhibits, we are unable to consider the
advertisements themselves. With regard to Richard and Maurice
Weaver’s statements regarding these advertisements and the
identity of the advertisers, their statements violate Fed. R.
Evid. 1002 and 1003, which require an original or duplicate to
prove the content of a “writing.” We therefore do not consider
their testimony regarding third-party advertisements.
Additionally, we give limited weight to Maurice Weaver’s
“guess” at p. 16 of his deposition that ERA Automobiles of New
Britain, Connecticut builds approximately fifty 427 SC and 289
FIA Cobra replicas per year because his “guess” is speculative.
5 The Superformance case is discussed, infra.
Opp. Nos. 91150352 and 91155242
18
potential infringing third-party use, complete failure to
police the product design is evidence that a product
configuration is generic. See BellSouth Corp. v.
DataNational Corp., 60 F.3d 1565, 35 USPQ2d 1554 (Fed. Cir.
1995); McCarthy on Trademarks and Unfair Competition, §
17:17. We assume for purposes of our discussion on this
argument that there indeed are third-party manufacturers
with more than a minor market share and consider whether
applicant has policed its claimed configurations.
Mr. Shelby stated in his deposition that he sent six or
eight letters to replica manufacturers beginning in June
1990. Shelby dep. p. 100. As noted earlier in this
decision, Richard Weaver indicated that replica manufactures
went in and out of business over the years. Although there
is no evidence on this point, we cannot discount the
possibility that some of these manufacturers ceased
manufacturing due to Mr. Shelby’s letters. The record also
contains three letters from applicant's counsel dated
October 15, 2008 asserting rights in “the 1960s Shelby Cobra
Roadster vehicle[].” Exhibits F(25), F(26) and F(27),
applicant's augmented notice of reliance. Further, opposer
has pointed out two proceedings in which applicant has
asserted a claim involving its product configurations
against third parties.
Opp. Nos. 91150352 and 91155242
19
From this evidence, we accept that Mr. Shelby has made
some effort to protect the configurations which are
identified in the subject applications. This evidence of
policing favors applicant and weighs against opposer's claim
that the configurations are generic.
In order to prevail on the ground of genericness, a
plaintiff must establish genericness by a preponderance of
the evidence. Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19
USPQ2d 1551 (Fed. Cir. 1991). Considering all the evidence,
and keeping in mind the burden a plaintiff faces in
establishing that a mark is or has become generic, we find
that opposer has not met its burden. Opposer's claims of
genericness are dismissed.
Fraud
Because opposer has not discussed its pleaded fraud
claim in its brief, we deem opposer to have waived this
claim.
Unpleaded Claims
Opposer has made three arguments in its briefs
pertaining to claims which it did not plead in its notice of
opposition, i.e., claims of res judicata, functionality and
laches. A plaintiff may not rely on unpleaded claims,
unless those claims were tried by implied consent.
Implied consent to the trial of an unpleaded issue
can be found only where the nonoffering party
(1) raised no objection to the introduction of
evidence on the issue, and (2) was fairly apprised
Opp. Nos. 91150352 and 91155242
20
that the evidence was being offered in support of
the issue.

TBMP §§ 314 and 507.03(b). See also Fed. R. Civ. P. 15(b).
In this case, because the parties submitted some evidence
after the close of trial and even after briefing, in certain
instances without any objection from the non-offering party,
we consider the claims for which there is evidence, namely,
the claims of res judicata and laches. We do not consider
the unpleaded claim of functionality because there is no
evidence in the record regarding functionality; the claim
cannot be said to have been tried by the implied consent of
the parties.6
A. Res Judicata
Opposer has argued in its main brief that we are bound
by the decision in Carroll Shelby et al. v. Superformance
International, Inc., 251 F. Supp.2d 983 (D. Mass 2002), the
same Superformance action mentioned earlier in this
decision. On a motion for partial summary judgment, the
district court, inter alia, dismissed plaintiffs’ trade
dress claims, finding that plaintiffs had not established a
protectable right in the design of the Cobra automobile.
Specifically, the district court found that plaintiffs had
not established acquired distinctiveness because the survey

6 If we considered the functionality claim, we would deny it.
Applicant has only addressed the doors, windshield and “air scoop
– ventilator” in the configurations, when the configurations
contain other features.
Opp. Nos. 91150352 and 91155242
21
plaintiffs relied on improperly concluded that the survey
respondents identified one source, namely, “Shelby,” as the
source of the vehicle’s design when the respondents actually
identified various sources. Id. at 985. (“Not only are
[the expert] Pollner's conclusions illogical in a very basic
sense, but they are also completely unreliable and bear no
weight on Shelby's secondary meaning argument.”)
The Board addressed the issue of res judicata with
respect to the Superformance decision prior to trial. After
learning of the court’s decision in the Superformance case,
the assigned interlocutory attorney ordered applicant to
show cause why judgment should not be entered on opposer's
behalf. When applicant responded, the interlocutory
attorney in her February 2, 2007 order stated that the
doctrine of collateral estoppel (or issue preclusion) does
not apply due to the amount of time that had passed since
the Superformance decision and due to “the possibility of
changed circumstances.”
Opposer, by raising the issue of res judicata again, is
apparently seeking review of the interlocutory attorney’s
decision as it pertains to opposer's claim of no acquired
distinctiveness. We therefore consider whether the district
court’s Superformance decision is preclusive of any issue in
this case.
Opp. Nos. 91150352 and 91155242
22
In Montana v. United States, 440 U.S. 147, 153-55, 99
S.Ct. 970, 59 L.Ed.2d 210 (1979), the Court summarized the
requirements of collateral estoppel or issue preclusion as
(1) the identity of an issue in a prior proceeding, (2) the
identical issue was actually litigated, (3) a determination
of the issue was necessary to the judgment in the prior
proceeding, and (4) the party defending against preclusion
had a full and fair opportunity to litigate the issue in the
prior proceeding. We focus on the first element, whether
the acquired distinctiveness issue in the prior proceeding
is identical to the issue in this proceeding.
The issue of acquired distinctiveness in the prior
proceeding is not identical to the issue of acquired
distinctiveness in this proceeding. First, the court did
not apply the same burdens of persuasion as we must do in
this case. See Yamaha International, supra; and discussion
on burdens of persuasion, supra. Second, in this
proceeding, acquired distinctiveness must be considered in
view of the facts that exist at the time registrability is
being considered. McCormick & Co., Inc. v. Summers, 354
F.2d 668, 148 USPQ 272 (CCPA 1966); and General Foods Corp.
v. MGD Partners, 224 USPQ 479 (TTAB 1984). Facts based on
events that occurred subsequent to the filing date of the
application may be considered. TMEP § 1212.01. The court’s
finding in 2002 therefore does not preclude our
Opp. Nos. 91150352 and 91155242
23
consideration of acquired distinctiveness in this proceeding
which was tried six years later.
Thus, the decision of the interlocutory attorney was
correct, and we are not bound by the court’s decision in
Superformance on the question of acquired distinctiveness.
Opposer's unpleaded claim of res judicata is dismissed.
B. Applicant's Laches in Registering its Mark
At p. 35 of its main brief, applicant has argued:
Shelby [opposer] should not be allowed to now
register trade dress of the Cobra. He is guilty
of laches by failing to act. The twenty-five (25)
existing replicar companies have built the
replicar industry while Shelby retired from the
Cobra industry. He should not be allowed an
interest or ownership in the replicar industry
when he did nothing to justify such a windfall.

At p. 8 of its reply brief in addressing “laches,” applicant
explains that “Applicant's delay in seeking registration and
his failure to ‘police his claims until 1997,’ encouraged
the widespread development of replica manufacturers [and] he
is unable to show that he had ‘substantially exclusive’ use
of the trade dress of the Cobra for the five (5) years
before the date of his application for registration.”
To the extent that opposer argues laches, opposer's
argument is legally insufficient because laches is an
affirmative defense and not a ground for opposing the
registration of a mark. See University Book Store v.
University of Wisconsin Board of Regents, 33 USPQ2d 1385,
Opp. Nos. 91150352 and 91155242
24
1401 n. 39 (TTAB 1994). Opposer's unpleaded claim of laches
is hence dismissed.
Conclusion
In summary, because opposer has not properly introduced
any evidence into the record during its testimony period
supporting its claims of no acquired distinctiveness,
opposer has not met its initial burden of establishing that
applicant's marks have not acquired distinctiveness. Also,
because opposer has acknowledged that opposer is using the
mark, and priority is not an issue in this case, opposer's
claims of earlier abandonment are irrelevant. As for
opposer's claims of genericness, opposer simply has not
persuaded us that applicant's configurations are generic.
Finally, opposer's unpleaded claims of claim preclusion and
laches are without merit.
DECISION: The oppositions to both applications are
dismissed on all grounds.