Valentino Couture, Inc.v.Vantage Custom Classics, Inc.

Trademark Trial and Appeal Board

Aug 25, 2003

No. 91118064 (T.T.A.B. Aug. 25, 2003)

Mailed: 8/25/03
Opposition No. 117,294
Opposition No. 118,064
Valentino Couture, Inc.
v.
Vantage Custom Classics, Inc.

Before Simms, Chapman and Holtzman, Administrative Trademark
Judges.
Holtzman, Administrative Trademark Judge:
This consolidated case now comes up on opposer's motion for
summary judgment filed February 26, 2003.1 The motion has been
fully briefed.
As background for this matter, opposer, Valentino Couture,
Inc., has opposed registration of the following marks:
for "all purpose leather and cloth athletic bags; leather and
cloth all purpose sport bags; leather and cloth barrel bags;
leather and cloth school book bags; leather and cloth tote bags;
1 The two oppositions were consolidated by the Board on January 26,
2001.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
2
leather and cloth travel bags; leather and cloth garment bags for
travel" in International Class 18; and
for "custom embroidered sportswear, namely men's and women's
shirts, men's and women's polo shirts, rugby shirts, sweaters,
cardigans, pullovers, vests, jackets, warm-up pants, shorts,
bathrobes, sweatshirts, and caps" in International Class 25;2
for "stadium blankets" in International Class 24; and
for "sportswear, namely men's and women's golf shirts, rugby
shirts, cardigans, sweaters, vests, jackets, warm-up pants,
shorts, bathrobes, t-shirts, sweatshirts, golf caps and baseball
caps" in International Class 25.3
Relying on prior use and its ownership of a number of
registrations for the mark V (in an oval) for clothing and
accessory items, opposer claims in the notices of opposition that
applicant's mark, when used in connection with the identified
goods, is likely to cause confusion with opposer's mark.
Applicant, in its answers, denied the salient allegations of the
oppositions. On May 15, 2002, the parties entered into an
agreement in settlement of this consolidated case. The
2 Application Serial No. 75/563,253, filed October 1, 1998, based on an
allegation of a bona fide intention to use the mark in commerce. This
application is the subject of Opposition No. 118,064.
3 Application Serial No. 75/549,968, filed September 8, 1998, based on
an allegation of a bona fide intention to use the mark in commerce.
This application is the subject of Opposition No. 117,294.
3
settlement agreement is the basis for opposer's motion for
summary judgment.
In support of its motion, opposer has submitted the
declaration with exhibits of opposer's counsel, Robert H.
Cameron. The exhibits include a copy of the signed settlement
agreement, correspondence between the parties leading up to the
agreement and following execution of the agreement, applicant's
draft of an express abandonment of its two involved applications,
and applicant's draft of its proposed new application for five
classes of goods, namely Classes 18, 24, 25, 26 and 28.
By its motion for summary judgment, opposer essentially
alleges that applicant is precluded by the terms of the agreement
from registering the marks in this case. We note that opposer
has not moved to amend the oppositions to assert this claim and
ordinarily, a party may not obtain summary judgment on an issue
which has not been pleaded. However, because the parties have
treated this issue on its merits and applicant has not objected
to the motion on that ground, the Board deems the pleading to
have been amended to allege the matter. See Paramount Pictures
Corp. v. White, 31 USPQ2d 1768 (TTAB 1994). See also Saint-
Gobain Abrasives, Inc. v. Unova Industrial Automation Systems,
Inc., 66 USPQ2d 1355 (TTAB 2003).
We also note that opposer's motion was filed after the
commencement of the trial period as reset by agreement of the
parties. While generally such motions are untimely, applicant
4
did not object to the motion on the ground of timeliness and
moreover the issue did not even arise until execution of the
settlement agreement. Under the circumstances, and in the
interest of judicial economy, the motion will be decided on the
merits. See, e.g., Food Land, Inc. v. Foodtown Supermarkets,
Inc., 138 USPQ 591 (TTAB 1963).
The following facts are undisputed. The parties exchanged
correspondence for a number of months leading up to the
settlement agreement and the agreement was signed by the parties
on May 15, 2002. The relevant portions of the agreement appear
below.4
...
WHEREAS, Valentino and Vantage wish to avoid the expense and
inconvenience of further legal proceedings and to settle all
the controversies that may exist between them;
...the parties agree as follows:
2. Abandonment of Vantage's Applications: Within 20 days
of the Effective Date of this Agreement, Vantage [applicant]
will file with the U.S. Patent and Trademark Office and
serve on Valentino [opposer] an express abandonment of
Application Serial Nos. 75/549,968 and 75/563,253
[applications herein] and will re-file a single three-class
trademark application for the same goods listed above for
VANTAGE & V in Oval Design (the "New Applications")
4. Payment by Valentino. Within 10 business days of
receipt of notice from Vantage that it has abandoned
4 Although the agreement has been marked "confidential" by the parties,
its confidentiality has been waived by both parties' discussion of the
specific terms of the agreement in their briefs. In any event,
materials filed in the absence of a protective order (as here) are not
regarded as confidential and are not kept confidential by the Board.
See TBMP § 412.04 (2d ed. June 2003).
5
Application Serial Nos. 75/549,968 and 75/563,253, Valentino
will send a check to Pearce, Vort & Fleisig, LLC in the
amount of $1,100 made payable to "Randy T. Pearce, Esq.
Attorney Trust Account."
...
10. Entire Agreement: This agreement is the entire
agreement between the parties regarding the subject matter
of this Agreement and supersedes all other such agreements,
promises, representations, negotiations and discussions,
whether written or oral, between the parties. No amendment
to this Agreement is valid or effective unless in writing
and signed by both parties.
Following execution of the agreement, applicant, on May 24,
2002, sent a letter to opposer enclosing for opposer's review and
approval a proposed draft of its new application along with a
draft of applicant's proposed express abandonment of its involved
applications. Applicant states in the letter: "Once we receive
your check for $1,100 for attorneys fees and $1,225 for the
filing fees, we will forward the required documents for filing."
Notwithstanding that the involved applications cover goods
only in International Classes 18, 24, and 25, the new application
included additional goods in International Classes 26 and 28, two
classes that are not covered in the original applications.
Although the settlement agreement provides that the
abandonment and the new application would be filed within 20 days
of the effective date of the agreement, applicant, to date, has
filed neither. In January 2003, trademark application filing
fees in the USPTO increased from $325 per class to $335 per
class.
6
Arguing that it is entitled to judgment as a matter of law,
opposer maintains that there is no genuine issue of fact that the
parties entered into a settlement agreement in which applicant
agreed to abandon both of the applications involved in this
consolidated case within 20 days of the effective date of the
agreement and that applicant should be held to that agreement.
It is applicant's position, however, that in view of an
asserted mutual mistake of the parties and failure of
consideration, summary judgment is not appropriate because there
is a genuine issue as to the true intent of the parties.
Applicant complains that the agreement does not "further the
intent of the parties" because "the monetary amount agreed to in
the Settlement Agreement was based upon [opposer's] obligation to
pay all filing fees and legal costs." (Brief, unnumbered p. 10,
emphasis in original). Applicant believes that "[i]n order to
now file a complete application, applicant must include five
classes" (brief, unnumbered p. 4) and that because the settlement
agreement was, in applicant's words, "premised upon [opposer]
paying all costs and attorney's fees to accomplish the filing"
(brief, unnumbered p. 5), it would be inequitable to enforce the
agreement as written.
Applicant argues that the agreement did not contemplate the
increase in fees because at the time of the contract, both
parties mistakenly believed that applicant would only need to
file a three-class application and that the filing would cost
7
$325 per class. Applicant claims that in correspondence leading
up to the agreement, opposer stated that it would "cover filing
fees, costs, and attorney's fees" associated with the new
application. In this regard, applicant points to opposer's offer
in its December 3, 2001 letter to increase the payment to
applicant from $950 to $1,100 and the accompanying statement by
opposer that "this amount should be more than adequate to cover
the filing and legal costs." Applicant maintains that if the
agreement is enforced, applicant will not receive consideration
necessary for the new application on which it had based its
negotiations and ultimate decision to enter into the agreement.
In reply, opposer points out that applicant was supposed to
have filed its new application within 20 days of signing the
agreement on May 15, 2002, long prior to the increase in filing
fees, and that throughout negotiations and in accordance with the
terms of the agreement applicant was to refile in three, not five
classes. Opposer insists that there was no agreement or intent
that applicant would be provided with consideration for both
filing fees and attorney's fees for the new application.
The Board can give effect to a settlement agreement to the
extent that the agreement is relevant to issues properly before
the Board. See Selva & Sons, Inc. v. Nina Footwear, Inc., 705
F.2d 1316, 217 USPQ 641, 647 (Fed. Cir. 1983) (stating that the
Board may "consider the agreement, its construction or its
validity if necessary to decide the issues properly before
8
it..., including the issue of estoppel."). The issue of whether
applicant is contractually barred from obtaining registrations
for these marks is within the jurisdiction of the Board. See
Kimberly-Clark Corp. v. Fort Howard Paper Co., 772 F.2d 860,
863, 227 USPQ 36, 38 (Fed. Cir. 1985).
Summary judgment is appropriate when there are no genuine
issues of material fact and the moving party is entitled to
judgment as a matter of law. See Fed. R. Civ. P. 56(c). All
doubts as to whether any factual issues are genuinely in dispute
must be resolved against the moving party and all inferences to
be drawn from the undisputed facts must be viewed in the light
most favorable to the nonmoving party. See Olde Tyme Foods Inc.
v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
The question of whether opposer is entitled to summary
judgment on the basis of the settlement agreement requires
construction of the terms of the agreement. We have construed
the agreement in accordance with the laws of the State of New
Jersey pursuant to paragraph 8 of the agreement.
The starting point for construing a settlement agreement is
discerning the intent of the parties. Buono Sales, Inc. v.
Chrysler Motors Corp., 239 F.Supp. 839 (D.N.J. 1965), rev'd on
other grounds, 363 F.2d 43 (3rd Cir. 1966), cert. den., 385 U.S.
971, 87 S.Ct. 510 (1966). The intent of the parties is
determined from the language used in the agreement. Buono Sales,
Inc., supra. Where the language in an agreement is clear and
9
unambiguous, the agreement must be enforced as written, without
reference to extrinsic facts. Schor v. FMS Financial Corp., 814
A.2d 1108 (N.J. Super. Ct. App. Div. 2002). If, however, the
terms of an agreement are ambiguous, a party may introduce proof
of extrinsic circumstances bearing on the alleged proper
interpretation of the language used. See Schor, supra. "An
ambiguity in a contract exists if the terms of the contract are
susceptible to at least two reasonable alternative
interpretations." Schor, supra at 1112 (citations omitted).
The construction of an agreement is a question of law and
the Board will decide whether the terms in the agreement are
clear or ambiguous. Schor, supra. If there is a genuine issue
of material fact as to the meaning of a term, summary judgment is
not appropriate. Schor, supra.
Applying the principles of contract construction to this
agreement, we have no difficulty concluding that opposer is
entitled to judgment as a matter of law.
As reflected in the language of the agreement, the intent of
the parties is clear. Applicant, for its part, was required to
abandon the two applications which are the subject of this
consolidated proceeding and file a single three-class application
for the same goods identified in the abandoned applications. Ten
days after receiving notice of the abandonment, opposer would
send applicant a check for $1,100. Thus, while applicant claims
that the agreement "does not further the intent of the parties"
10
applicant has not pointed to any ambiguity in a single provision
or term in the agreement which would even arguably support this
contention.
In fact, there are no ambiguous terms or provisions in the
agreement. The terms are simple, straightforward and clear.
There is nothing in the language to suggest that opposer is, or
at some future date might be, obligated for additional payments
to applicant. There is nothing in the agreement which states or
implies that opposer's $1,100 payment contradicts an alleged
intention to cover all of applicant's costs and fees. It is
apparent that applicant is dissatisfied with the agreement as
written but having signed an agreement that is clear on its face,
applicant is bound by its terms.
Applicant's claim of "mutual mistake" is meritless. Any
mistaken belief that the settlement agreement was entered into
"for the express purpose of paying filing fees, costs associated
with filing, and attorney's fees" was applicant's alone. As
stated by the Court in Schor, supra at 1112 (citations omitted),
"[a] party to a contract is bound by the apparent intention he or
she outwardly manifests to the other party. It is immaterial
that he or she had a different, secret intention from that
outwardly manifested."
Applicant's claim of "failure of consideration" is equally
meritless. As explained in Giumarra v. Harrington Heights, 109
A.2d 695, 701 (N.J. Super. Ct. App. Div. 1955), aff'd 114 A.2d
11
720 (J.J. 1955), failure of consideration exists where "one who
has promised to give some performance fails, without his fault,
to receive in some material respect the agreed exchange for that
performance." In this case, if applicant performs as agreed,
applicant will receive precisely the consideration it bargained
for, $1,100 and a settlement of the case. Applicant has
otherwise incurred higher fees and additional costs by its own
deliberate actions – its deliberate and unwarranted delay in
filing the new application and its deliberate decision to file a
new application for goods in classes that are not covered by the
agreement.5
Because the agreement is unambiguous on its face and there
is no issue to be resolved as to the meaning of any language in
the agreement, the agreement is enforceable as written and
extrinsic evidence of the circumstances leading up to the
agreement need not be considered. Schor, supra. Even if we do
look to this evidence, however, we find that it fully supports
this construction.
Applicant's interpretation of the statements in opposer's
letters is simply not reasonable. Contrary to applicant's
contention, the letters contain no offer, either express or
implied, to cover all the costs and fees associated with
applicant's new application. It is clear, particularly
5 Not that it affects any aspect of our decision, but we note that
applicant has never explained why its application would be "incomplete"
without the two additional classes of goods.
12
considering all the circumstances, that opposer's proposed
increase in the payment from $950 to $1,100 along with its
statement that the amount "should be more than adequate to cover
the filing and legal costs" was not an offer to cover all of
applicant's costs but was instead an offer of compromise to
applicant in furtherance of settlement which applicant was free
to reject. Applicant chose to accept it.
In view of the foregoing, opposer is entitled to judgment as
a matter of law.6 Opposer's motion for summary judgment is
accordingly granted to the extent that applicant is allowed until
twenty days from the mailing date of this order to file an
express abandonment of the two applications involved in these two
consolidated oppositions and to notify opposer that it has done
so. If the abandonment is not filed within the time allowed, the
Board will enter judgment against applicant and the opposition
will be sustained.7
6 Opposer's standing has been established by the introduction of the
settlement agreement which provides evidence of opposer's real interest
in this proceeding. See Vaughn Russell Candy Co. v. Cookies In Bloom
Inc., 47 USPQ2d 1635 (TTAB 1998).
7 Any issues relating to applicant's "new" application are not before
the Board.