Warner Bros. Entertainment Inc.v.The Kaplan Trust

Trademark Trial and Appeal Board

Aug 22, 2007

No. 92043813 (T.T.A.B. Aug. 22, 2007)

Lykos

Mailed: August 22, 2007

Cancellation No. 92043813

Warner Bros.
Entertainment, Inc.

v.

The Kaplan Trust

Before Hohein, Holtzman, and Bergsman, Administrative
Trademark Judges.

By the Board:

This case now comes up for consideration of
petitioner’s motion for summary judgment on its Section 2(d)
and fraud claims. The motion is fully briefed.1
I. Background
On October 20, 2004, petitioner filed a petition to
cancel respondent’s registration for the mark THE BOWERY
BOYS for “entertainment services, namely production and
distribution of motion pictures; entertainment services, in
the nature of an on-going television program[sic] in the
field of comedy; distribution of television programs for

1 The Board has exercised its discretion to consider petitioner’s
reply brief. See Trademark Rule 2.127(a).
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, Virginia 22313-1451
THIS DISPOSITION
IS NOT A PRECEDENT
OF THE TTAB
Cancellation No. 92043813
2
others” in International Class 41.2 Petitioner seeks to
cancel respondent’s registration on the grounds that (1)
respondent’s mark so resembles petitioner’s previously used
THE BOWERY BOYS mark for the distribution of motion pictures
and television programs, and pre-recorded videotapes, that
it is likely to cause confusion, mistake, or deception of
prospective consumers under Section 2(d) of the Lanham Act;
(2) respondent’s mark falsely suggests a connection between
petitioner and respondent under Section 2(a) of the Lanham
Act; and (3) respondent fraudulently procured its
registration.
In the petition to cancel, petitioner alleges ownership
of all rights to the mark THE BOWERY BOYS for the
distribution of motion pictures and television programs, and
pre-recorded videotapes, and that petitioner and its
predecessors have continuously used itsmark prior to
respondent’s claimed date of first use. Petitioner also
alleges that:
5. Petitioner’s mark THE BOWERY BOYS has been widely
used and publicized for a period of several decades in
connection with a series of movies shown in theaters
and on television, and on video tapes sold and rented
in a variety of retail outlets.

In its answer, respondent denied the relevant
allegations contained in the petition for cancellation, and

2 Registration No. 2761675, issued on September 9, 2003, alleging
January 1, 1983 as the date of first use anywhere and in
commerce.
Cancellation No. 92043813
3
asserted various affirmative defenses, including
acquiescence.
On August 24, 2006, the Board issued an order which
admonished respondent for its destruction of documents and
entered the sanction that respondent may only prove use of
its mark by documentary evidence. The order further
provides that testimonial evidence from respondent on the
issue of use would not be considered except for
authentication purposes.
II. Petitioner’s Motion for Summary Judgment
We now turn to petitioner’s motion for summary judgment
in its favor on the pleaded Section 2(d) and fraud claims.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). 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 nonmoving party must be given the benefit of
all reasonable doubt as to whether genuine issues of
material fact exist, and the evidentiary record on summary
judgment, and all inferences to be drawn from the undisputed
facts, must be viewed in the light most favorable to the
Cancellation No. 92043813
4
nonmoving party. See Opryland USA, Inc. v. Great American
Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir.
1992). When the moving party's motion is supported by
evidence sufficient to indicate that there is no genuine
issue of material fact, and that the moving party is
entitled to judgment, the burden shifts to the nonmoving
party to demonstrate the existence of specific genuinely-
disputed facts that must be resolved at trial. The
nonmoving party may not rest on the mere allegations of its
pleadings and assertions of counsel, but must designate
specific portions of the record or produce additional
evidence showing the existence of a genuine issue of
material fact for trial.
Based on the submissions of the parties, we find that
petitioner has met its burden of demonstrating that there
are no genuine issues of material fact, and that petitioner
is entitled to judgment as a matter of law on its Section
2(d) and fraud claims.
A. Petitioner’s Section 2(d) Claim
A party moving for summary judgment in its favor on a
Section 2(d) claim must establish that there is no genuine
dispute that (1) it has standing to maintain the proceeding;
(2) it is the prior user of its pleaded mark or marks; and
(3) contemporaneous use of the parties' respective marks on
their respective goods or services would be likely to cause
Cancellation No. 92043813
5
confusion, mistake or to deception of consumers. See
Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60
USPQ2d 1733 (TTAB 2001).
(1) Standing
In its responsive brief, respondent has questioned
petitioner’s standing to bring the present action on the
grounds that petitioner is not using the words “The Bowery
Boys” as a mark, but rather as a means of identifying the
actors appearing in certain films, and that the history of
the copyright assignments in “The Bowery Boys” films
contains a break in the chain of title. As discussed in
more detail below, we find that the evidence of petitioner's
prior use of its THE BOWERY BROTHERS mark suffices to
establish petitioner's standing to bring this case. As
such, no genuine issue of material fact exists on the issue
of standing.
(2) Priority
To establish priority on a likelihood of confusion
claim brought under Section 2(d) of the Trademark Act, a
party must prove that, vis-à-vis the other party, it owns "a
mark or trade name previously used in the United States ...
and not abandoned...." Trademark Act Section 2, 15 U.S.C.
Section 1052. A party may establish its own prior
proprietary rights in a mark through actual use or through
use analogous to trademark use, such as use in advertising
Cancellation No. 92043813
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brochures, trade publications, catalogues, newspaper
advertisements and Internet websites which creates a public
awareness of the designation as a mark identifying the party
as a source. See Trademark Act Sections 2(d) and 45, 15
U.S.C. Sections 1052(d) and 1127; T.A.B. Systems v. PacTel
Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996),
vacating Pactel Teletrac v. T.A.B. Systems, 32 USPQ2d 1668
(TTAB 1994).
We find that the declaration of Janet A. Kobrin, Vice
President, Intellectual Property for petitioner (hereinafter
referred to as the “Kobrin Declaration”), relied upon by
petitioner in support of its motion for summary judgment,
contains unequivocal statements regarding petitioner’s date
of first use in interstate commerce of its mark, and is
sufficient to establish petitioner’s date of first use as
1992.3 In particular, the declaration includes the
following statement:
In 1992, Warner released to the public six (6) of the
films from the Bowery Boys Collection on videocassette,

3 Respondent has moved to strike the Kobrin Declaration on the
grounds that petitioner did not disclose Ms. Kobrin’s identity as
an individual with knowledge of the facts alleged in this
proceeding, and that she was not made available for cross
examination. Respondent’s motion is denied. Petitioner did not
outright refuse to furnish her identity during discovery. In
addition, the Kobrin Declaration does not contain any previously
undisclosed facts. Under these circumstances, it would be unduly
harsh to impose the preclusion sanction under Fed. R. Civ. P.
37(c)(1). See Vignette v. Marino, 77 USPQ2d 1408 (TTAB 2005).
As a final comment, the Board notes that the fact that another
individual was designated as petitioner’s Rule 30(b)(6) witness
does not prevent petitioner from introducing on summary judgment
the declaration of another corporate official.
Cancellation No. 92043813
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including the film “Ghost Chasers.” These films were
released under the mark THE BOWERY BOYS and are still
available in stores today. . . .

Paragraph 21, Kobrin Declaration.

Attached to the declaration are photographs of the
packaging for the pre-recorded videocassettes displaying THE
BOWERY BOYS mark for the featured films. See Kobrin
Declaration, Exhibit 3. Thus, the Kobrin declaration,
coupled with the documentary evidence consisting of the
photographs of labels affixed to videocassette boxes
submitted therewith, are sufficient to establish
petitioner’s priority date as 1992.
In contrast, respondent has not produced any
documentary evidence showing use of the mark THE BOWERY BOYS
so as to raise a genuine issue of material fact to rebut
petitioner’s date of first use. See Deposition of Jeff
Kaplan, October 13, 2006 at 12-25.
Respondent attempts to raise a genuine issue of
material fact by arguing that petitioner is not using the
words “The Bowery Boys” as a trademark because it appears on
the labels of the videocassettes as “Leo Gorcey and The
Bowery Boys” and therefore describes a group of actors
appearing in certain films. The Board disagrees with
respondent’s characterization of petitioner’s mark. We find
the stylization of the wording “The Bowery Boys” as
displayed on the videocassette labels sufficiently
Cancellation No. 92043813
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distinctive to create a separate commercial impression so as
to constitute a discrete trademark.
Respondent also attempts to raise of genuine issue of
material fact by arguing that petitioner’s evidence
regarding the history of copyright assignments in the Bowery
Boys film series contains a break in the chain of title. We
find respondent’s argument unavailing. In light of
petitioner’s uncontroverted evidence of current ownership
and trademark use as provided by the Kobrin declaration and
supporting documentation, the chain of title of copyright
transfers is irrelevant to our analysis of priority in this
case.
(3) Likelihood of Confusion
Turning to the issue of likelihood of confusion, we are
guided by the factors set forth in the case of In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). Our determination of likelihood of confusion is
based on an analysis of all of the facts and evidence that
are relevant to the factors bearing on the issue of
likelihood of confusion.4 In this particular case, the key
factors are the degree of similarity of the parties’ marks,
the relatedness of the parties’ goods and services, and the

4 Our primary reviewing Court has held that only those du Pont
factors shown to be material or relevant in the particular case
and which have evidence submitted thereon are to be considered.
See Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22
USPQ2d 1542 (Fed. Cir. 1992).
Cancellation No. 92043813
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channels of trade. We thus have concentrated our discussion
on the du Pont factors which the parties have discussed
and/or on which we have evidence.
Considering first the marks, there is no issue that
respondent’s mark is identical to petitioner’s mark. As
discussed inter alia, petitioner’s mark, as displayed on the
labels of its pre-recorded videocassettes, appears as the
single trademark THE BOWERY BOYS. Thus, the identical
nature of the marks at issue weighs heavily in favor of
finding likelihood of confusion.
We next turn to a consideration of the parties’
respective goods and services. There is no genuine issue
that, based on the evidence of record, petitioner’s goods
consist of pre-recorded videocassettes featuring a film
series, and that respondent’s services, as identified in the
involved registration, include the production and
distribution of motion pictures. It is well recognized that
confusion is likely to occur from the use of the same or
similar marks for goods, on the one hand, and for services
involving those goods on the other. See e.g. Corinthian
Broadcasting Corp. v. Nippon Electric Co. Ltd., 219 USPQ 773
(TTAB 1983) (TVS for transmitters and receivers of still
television pictures held likely to be confused with TVS for
television broadcasting services). The nature of
petitioner’s goods (videocassettes featuring a film series)
Cancellation No. 92043813
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and respondent’s services (production and distribution of
motion pictures) are so closely related that if the goods
are sold and the services are rendered under the same mark,
consumers will mistakenly believe that the goods and
services emanate from a single source. This du Pont factor
therefore favors a finding of likelihood of confusion.
Regarding the channels of trade, it is undisputed that
petitioner sells its pre-recorded videocassettes through
retail outlets. Respondent’s involved registration,
however, contains no limitation regarding the channels of
trade. While the production and distribution of films are
not services that are offered at the retail level, the
ultimate consumer of such services (i.e. the ordinary
consumer who views films in movie theaters) is the same
prospective purchaser of prerecorded videotapes featuring
films. In this particular case, the films which are
recorded on the videocassettes were all previously released
in movie theaters. Indeed, the labels affixed to the
pre-recorded videocassettes explicitly notify the consumers
of this fact. Thus, prospective consumers certainly are
aware that the same company offers the service of producing
and distributing films as well as offering for sale pre-
recorded videocassettes featuring films. This du Pont
factor also favors a finding of likelihood of confusion.
Cancellation No. 92043813
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Inasmuch as petitioner has demonstrated that there is
no genuine issue of material fact, and that it is entitled
to judgment as a matter of law, petitioner’s motion for
summary judgment is granted on its Section 2(d) claim.5

B. Petitioner’s Fraud Claim
Petitioner has also moved for summary judgment on its
claim of fraud, arguing that respondent copied petitioner’s
labels as they appeared on petitioner’s videocassettes, and
submitted such labels as specimens in support of its own
application. Petitioner further contends that respondent
falsely declared that the label specimen constitutes
evidence of respondent’s use in commerce in connection with
its application.
Fraud in procuring a trademark registration occurs when
an applicant for registration knowingly makes false,
material representations of fact in connection with an

5 In its responsive brief, respondent argues that based on e-mail
correspondence between respondent and petitioner which took place
prior to the institution of this case, petitioner acquiesced to
respondent’s use of the words “The Bowery Boys” as a trademark.
It is well settled that acquiescence requires proof of an
affirmative act or misleading conduct by the party against whom
the defense is asserted, with such act or conduct signaling to
the adverse party that its use and/or registration of a mark
would not be challenged. See DAK Indus. Inc. v. Daiichi Kosho
Co. Ltd., 25 USPQ2d 1622 (TTAB 1993). The e-mail correspondence
does not affirmatively state that petitioner would not assert any
claims against respondent either before the Board or in federal
court. We therefore find that the evidence presented by
respondent is insufficient to raise a genuine issue of material
fact to rebut petitioner’s motion for summary judgment on its
Section 2(d) claim, and is also insufficient for respondent to
meet its burden of proof on this defense.
Cancellation No. 92043813
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application to register. See Torres v. Cantine Torresella
S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986). As set
forth below, there is no genuine issue of material fact that
respondent made materially false representations in
connection with the specimen submitted with its application
during ex parte examination.
There is no dispute and no genuine issue of material
fact that respondent filed an application based on use in
commerce and signed a declaration attesting to the truth of
all the statements in the application. A side-by-side
comparison of respondent’s label specimen with petitioner’s
videocassette label reveals that the labels are virtually
identical. Kobrin Declaration, Exhibit D. Indeed, the
placement and stylization of both parties’ marks is the
same. While respondent claimed that it obtained the image
from a lobby card, it was unable to produce documentary
evidence of such a card. Deposition of Jeffrey Kaplan,
August 31, 2005, at 103-105, 107. We therefore conclude
that there is no genuine issue of material fact that
respondent submitted a fabricated specimen in support of its
registration, namely a very slightly altered but essentially
identical copy of one of petitioner’s videocassette labels.
By relying on a label obtained from petitioner’s
videocassette box to support is own allegation of use,
Cancellation No. 92043813
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respondent knowingly made false and material
misrepresentations in connection with its application.
Accordingly, we find that there are no genuine issues
of material fact that respondent fraudulently obtained its
registration. Accordingly, petitioner's motion for summary
judgment is granted on its fraud claim.
Inasmuch as petitioner did not move for summary
judgment on its Section 2(a) claim, we need not reach this
remaining claim. Judgment is hereby entered against
respondent, the petition to cancel is granted and the
involved registration will be cancelled in due course,
based on the Section 2(d) and fraud claims.