Zanova, Inc.

Trademark Trial and Appeal Board

Apr 30, 2001

No. 75571710 (T.T.A.B. Apr. 30, 2001)

05/02/01
deb
Cancellation No. 30,509
Slip Guard Systems, Inc.
v.
Slip Guard Worldwide, Inc.
Before Hohein, Bottorff and Bucher, Administrative Trademark
Judges.
By the Board:
On April 24, 2000, petitioner, Slip Guard Systems,
Inc., filed a petition to cancel respondent’s registration
for the mark SLIP GUARD for “skid-resistant coatings in the
nature of paint for use in bathtubs, showers, and ceramic
surfaces,”1 in International Class 2. As grounds for the
petition for cancellation, petitioner alleges that it has
adopted and continuously used the trademark SLIP GUARD since
June 8, 1987 in connection with its skid-resistant compound
in the nature of acid etching treatment for use on tile,
ceramic and concrete surfaces; and that respondent’s mark,
as used in connection with the goods set forth in the
registration, so resembles petitioner’s mark, as used in
1 Reg. No. 2,033,598, issued on January 28, 1997.
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
Cancellation No. 30,509
2
connection with petitioner's goods, that confusion is
likely.
Respondent’s answer denied the pertinent allegations of
the petition for cancellation. In particular, respondent
denied there is a likelihood of confusion, arguing that
petitioner is a service company and denying that petitioner
had sold any product under the mark SLIP GUARD. In its
answer, respondent also set forth the affirmative defenses
of laches, estoppel and acquiescence.
This case now comes up for consideration of
petitioner’s motion for summary judgment, filed on December
26, 2000. The motion has been fully briefed.2
Summary judgment is appropriate where the moving party
has established that there is no genuine issue of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. Fed. R. Civ. P. 56(c). Petitioner, with
respect to its motion for summary judgment, has the initial
burden of demonstrating the absence of any genuine issue of
material fact. See Celotex Corp. v. Catrett, 477 U.S. 317
(1986); Sweats Fashions Inc. v. Pannill Knitting Co. Inc.,
833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). If the
movant meets its initial burden, the burden then shifts to
2 Although petitioner argues that respondent has failed to
show excusable neglect, respondent’s motion to reopen its time to
respond to petitioner’s motion for summary judgment, filed
January 26, 2001, is hereby granted.
Cancellation No. 30,509
3
the non-moving party to present sufficient evidence to show
an evidentiary conflict as to one or more material facts in
issue. See Opryland USA Inc. v. Great American Music Show
Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). In
considering whether to grant or deny a motion for summary
judgment, the Board may not resolve issues of material fact,
but can only ascertain whether genuine disputes exist
regarding such issues.
In support of its motion for summary judgment,
petitioner has furnished affidavits of the Chief Operating
Officer and President of petitioner, Roy J. Dorsett, with
accompanying exhibits (e.g., copies of invoices dating to
1987 reflecting sales of SLIP GUARD skid-resistant
compounds, respondent’s Material Safety Data Sheet for
registrant’s product having the mark SLIP GUARD, etc.), as
well as the affidavits of several of petitioner’s customers
who describe their own instances of actual confusion upon
encountering respondent’s product.
This showing by petitioner establishes that the
respective marks are identical. Mr. Dorsett’s affidavit and
attachments demonstrate that respondent’s SLIP GUARD product
is also highly acidic. Hence, if the goods involved herein
are not identical, they are certainly used for substantially
the same purpose. Respondent has not submitted any evidence
to counter petitioner’s claim of priority, has not
Cancellation No. 30,509
4
demonstrated that the goods of the respective parties are
different in any way, and not shown any evidentiary conflict
as to the nature and extent of any actual confusion.
Rather, respondent argues that under the present
circumstances, it is appropriate to deny the motion for
summary judgment based upon its equitable defenses set forth
in 15 U.S.C. §1069. Clearly, equitable defenses such as
laches, estoppel and acquiescence are proper issues to be
raised in a cancellation proceeding. It seems there was at
least a substantial delay by petitioner prior to filing this
action, petitioner had notice of respondent’s claims to the
SLIP GUARD mark for its slip-resistant compounds, and
respondent continued to develop significant goodwill during
this period of delay.
However, this is not a case wherein a likelihood of
purchaser confusion or mistake is reasonably in doubt, and
evidence of laches, estoppel or acquiescence may be
considered as a factor in resolving that doubt. Rather,
this is a case where confusion or mistake is not only likely
but also inevitable. Hence, with regard to respondent's
pleaded affirmative defenses, we agree with petitioner that
even if proven, laches, estoppel or acquiescence
attributable to petitioner will not serve to preclude the
granting of appropriate relief in favor of the prior user
where, as here, the respective marks are identical and the
Cancellation No. 30,509
5
respective goods of the parties are substantially the same,
if not identical, and it is determined that confusion is
inevitable. See The Chun King Corporation v. Genii Plant
Line, Inc., 403 F.2d 274, 159 USPQ 649 (CCPA 1968); and Far-
Best Corporation v. Die Casting "ID" Corporation, 165 USPQ
277 (TTAB 1970).
Therefore, petitioner’s motion for summary judgment is
granted. Fed. R. Civ. P. 56(c) and (e). The petition for
cancellation is granted and respondent’s registration will
be cancelled in due course.