Bassani Manufacturingv.Monty Allen Campbell

Trademark Trial and Appeal Board

Mar 17, 2009

No. 91166939 (T.T.A.B. Mar. 17, 2009)

Goodman

Mailed: March 17, 2009

Opposition No. 91166939

Bassani Manufacturing

v.

Monty Allen Campbell

Before Quinn, Grendel and Walsh, Administrative Trademark
Judges.

By the Board:

Applicant Monty Allen Campbell seeks to register in
standard character form X-PIPE for “internal combustion
engine exhausts” in International Class 7.1 Opposer,
Bassani Manufacturing, has opposed registration on the
grounds that X-PIPE is generic, and if not generic, X-PIPE
is merely descriptive and lacks acquired distinctiveness; X-
PIPE has been abandoned due to prolific uncontrolled use in
the automotive and motorcycle industry; and fraud.
Applicant, in his answer, denied the salient allegations of
the notice of opposition.2

1 Application Serial No. 78004925, filed April 20, 2000 under
Section 1(a), claiming dates of first use of February 15, 1982,
and claiming acquired distinctiveness under Section 2(f). The
Section 2(f) claim is based on an allegation of substantially
exclusive and continuous use in commerce for the five years
before the date when the distinctiveness claim was made.
2 On July 25, 2006 the Board struck applicant’s affirmative
defense of unclean hands (affirmative defense nos. 4, 5 and 6) as
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451 THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
2
Now before the Board are the following motions:
1)applicant’s motion, filed September 3, 2008, to
extend the discovery period;
2) opposer’s motion, filed September 24, 2008, for
summary judgment;
3)opposer’s motion, filed September 25, 2008, to extend
time to respond to discovery;
4) applicant’s motion, filed October 20, 2008, to
reopen time to answer opposer’s motion for summary
judgment;
5) applicant’s, motion, filed October 20, 2008, to
amend the application drawing to a special-form version
of applicant’s mark3; and
6) applicant’s motion, filed December 31, 2009, to
remove interlocutory attorney or alternatively for the
three judge panel to consider applicant’s motion (filed
December 5, 2008) to strike opposer’s reply to summary
judgment (amended motion to strike opposer’s reply
filed January 5, 2009).4

Turning first to applicant’s motion to extend time to
respond to the motion for summary judgment, we find the
motion moot inasmuch as applicant’s response to the motion
for summary judgment was timely.
We turn next to opposer’s motion for summary judgment
on the grounds of genericness; and that X-PIPE has lost its

unavailable against claims of genericness, descriptiveness, fraud
and abandonment.
3 The Board’s order of October 3, 2008 suspending proceedings for
summary judgment advised that any paper filed not relevant to the
motion for summary judgment would be given no consideration.
Inasmuch as the motion to amend is not germane to the motion for
summary judgment, it will not be considered. We note that even
if we considered and allowed this amendment, it would not alter
our decision on summary judgment.
4 In resolving opposer’s motion for summary judgment, we find it
is unnecessary to consider opposer’s reply. Inasmuch as we are
not relying on opposer’s reply in determining the motion for
summary judgment, applicant’s motion to strike and or amended
motion to strike is deemed moot. Cf., Team Play, Inc. v. Boyer,
391 F.Supp.2d 695 (N.D. Ill. 2005) (declining to consider motion
to strike materials attached to reply on summary judgment because
3
significance as an indication of origin through uncontrolled
widespread use through third parties5; and naked licensing6.
Opposer’s evidence on summary judgment consists of the
declaration of its attorney, Jonathan A. Hyman, through
which opposer makes of record, inter alia, printouts of
magazine articles, newspaper articles, online publications,
website printouts, copies of catalogs and the declaration of
Boyd Butler, President of Dr. Gas Incorporated, a competitor
of applicant’s.
Applicant’s evidence in response consists of a printout
of opposer’s website (Exhibit I), opposer’s discovery
responses in a prior Board opposition proceeding (Exhibit
II), printed material and website printouts relating to Dr.
Gas Incorporated (Exhibits III-VIII), and “opposer exhibit
breakdown” analysis (Exhibit IX).7

the court, in considering the motion, found it unnecessary to
consider those materials).
5 We construe any arguments on this ground to be an iteration of
the genericness claim.
6 We deem opposer’s motion for summary judgment on the naked
licensing ground to be based on and a further elaboration of
opposer’s abandonment claim in the notice of opposition. We note
that applicant, in its response to the motion for summary
judgment, has denied that any license agreements were executed
between himself and his competitors.
7 These exhibits were not accompanied by an affidavit or
declaration. Applicant’s internet evidence and other printed
material do not qualify as printed publications, are not self
authenticating, and absent a declaration or affidavit do not
constitute admissible evidence on summary judgment (Exhibit I,
III-VIII). TBMP Section 528.05(e) (2d. ed. rev. 2004).
Additionally, Exhibits I-II relate solely to the unavailable
defense of unclean hands, see n. 2 supra, which applicant has
argued in its response brief.
4
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).
To prevail on its motion, opposer must show the absence
of genuine issues of material fact as to its standing to
bring this action and as to its claim that “x-pipe” is
generic. For the reasons stated below, we find that there
are no genuine issues of material fact in dispute that
“x-pipe” is generic and that summary judgment is appropriate
in this case.
We previously granted partial summary judgment for
opposer on the question of standing in our order dated
September 5, 2007.8 Therefore, we turn to the question of
whether “x-pipe” is generic.
A mark is a generic name if it refers to the class,
genus or category of goods and/or services on or in
connection with which it is used. See In re Dial-A-Mattress

8 Although standing has been determined, applicant has continued
to put forward standing arguments (i.e., damage) in its response
to opposer’s motion.
5
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir.
2001)(citations omitted). The test for determining whether
a mark is generic involves a two-step inquiry. First, what
is the genus (category or class) of goods or services at
issue? Second, is the term sought to be registered
understood by the relevant public primarily to refer to that
genus (category or class) of goods or services? Marvin Ginn
Corp. v. International Association of Fire Chiefs, Inc., 782
F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).
With regard to the first part of the genericness
inquiry, the evidence of record establishes that there is no
genuine issue of material fact that the genus of applicant’s
goods is internal combustion engine exhausts which contain
exhaust pipes and discharge pipes. (Applicant’s
identification of goods, involved application Serial No.
78004925; opposer’s exhibit C: Applicant’s Patent No.
4800719 Exhaust System (Abstract: “The [exhaust] system
comprises a plurality of . . . exhaust pipes. . . . The
[exhaust] System further includes discharge pipes . . . . )
and Applicant’s Patent No. 4953352 Exhaust System (Abstract:
“The [exhaust] system comprises a plurality of exhaust pipes
which are operably flow connected to exhaust ports . . . and
to discharge pipes”).
With regard to the second part of the inquiry, evidence
of the relevant public's understanding of a term may be
6
obtained from any competent source including consumer
surveys, dictionary definitions, newspapers and other
publications. In re Northland Aluminum Products, Inc., 777
F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
Opposer has not submitted any dictionary evidence of
the term “x-pipe”, and applicant argues that the lack of
dictionary evidence evidences that “x-pipe” is not generic
for internal combustion engine exhausts. However, the lack
of dictionary evidence of the term “x-pipe” is not
dispositive of the issue of genericness. Continental
Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385, 1393
(TTAB 1999)(“Although there is no dictionary listing for the
term “e-ticket” per se, this fact is not dispositive of the
issue. No dictionary is complete or completely up to date,
or tracks the language of the marketplace perfectly. A
number of generic terms are not found in dictionaries.”).
“Whether a term is generic is determined by actual common
usage.” In re Deutsche Airbus GmbH, 224 USPQ 611, 614 n. 12
(TTAB 1984).
While neither party submitted evidence of the
dictionary definition of the term “pipe,” we judicially
notice9, for present purposes, the definitions in Delmar’s

9 It is well established that the Board may properly take
judicial notice of dictionary definitions. See, e.g., University
of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
7
Automotive Dictionary (1997) that “pipe” is defined as “an
exhaust system” and “pipes” is defined as “[a] dual-exhaust
system.” We are of the view that the judicially noticed
dictionary definitions, while not dispositive, tend to
support opposer’s position that “x-pipe” is used as a name
for a category of internal combustion engine exhausts.
Opposer has provided ample evidence showing various
uses of the term “x-pipe” to support its assertion that the
relevant public uses the term “x-pipe” in a generic manner.
These exhibits include examples of use in various print and
online publications and use by competitors.10 The following
examples of usage are illustrative:
Printed Publications

Exhibit G-2,

An X-pipe’s supposed advantage is that because the
bends are smoother at the convergence, the flow and
scavenging are both better, and hence the X-pipe is
worth more power.
(5.0 Mustang, H-pipe or X-pipe? Which makes the most
power? November 1999)

Exhibit G-8
. . . MRT’s exhaust maintains that deep Mustang
exhaust note rather than raising the pitch as X-pipe
systems might do. (Detroit News, Add Muscle to your
Mustang, September 10, 2003)

10 Opposer has also provided evidence of use by the public via
posting of messages on online forums. Applicant argues that the
online forum evidence opposer provided is sponsored and “edited
by competitor ‘Companies’” and therefore “not ‘relevant’.” We
note that some sources, such as opposer’s online forum evidence,
is of limited probative value and may be inconclusive with regard
to a genericness claim. In re Noon Hour Food Products, Inc. 88
USPQ2d 1172, 1178 (TTAB 2008).

8

Exhibit G-9
. . . tubular headers fitted with an X-pipe, exiting
through a set of Tom Williamson-crafted chrome
rectangular exhaust tips . . . .(Witchita Eagle,
Special delivery: Two Falcon fans turn a two-door
station wagon into a sedan, July 27, 2003)

Exhibit G-15
An efficient exhaust system (header and/or X-pipe/H-
pipe) will scavenge the exhaust . . . . (National
Dragster, Perfecting the Powerband, Part Two, May 9,
2008)

Exhibit G-16
A high-flow exhaust system with X-pipe crossover offers
better power delivery . . . . (Ancaster News, Shelby
drops its top for 2008 model year, September 14, 2007)

Exhibit G-17
. . . an X-pipe for the exhaust system and freer-
flowing after market mufflers. (Dallas Morning News,
Ok, he’ll pony up: In a Mustang Shelby GT, maturity
and cash fly out the windows, July 1, 2007)

Exhibit G-18
The system uses an X-pipe with twin mufflers, saving
more than 30 pounds. (Autoweek, Packing powerful BMW
performance, Volume 57, Issue 19, May 7, 2007)

Exhibit G-19
. . . modify it with Ford parts that include cold air
and muffler kits, an X-pipe, a performance exhaust
system and a power pack . . . . (Boston Herald, Hertz
saddles up wild Mustangs, July 23, 2006)

Exhibit G-23
So, to shed some well-needed light on these questions,
we put together a collection of five off-road X-pipes .
. . and a catted version of one of the X-pipes.
(Mustang Enthusiast, Volume 3, Issue 2, March 2005)

Online Publications
Exhibit G-1
“We picked up this X-pipe from Pacifica Performance . .
. . While improving the sound of your pony is reason
enough to install an off-road X pipe . . . ”
(FordMuscleWebmagazine, http://www.fordmuscle.com/
9
archives/2004/12/Xhale/index.php).

Exhibit G-27

The theory behind this design is that it will keep the
velocity of the exhaust gases moving quickly through
the header sink to the X-pipe to maximize the
scavenging effect . . . . (Car Craft Magazine, An
Exhaust System Based on a Universal X-Pipe Crossover
and A Pair of Stainless Steel Street Series Mufflers
www.carcraft.com/techarticles/exhaust_system_
installation/index)

Exhibit G-28
. . . an X-pipe’s scavenging advantage over an H-pipe
increases with rpm. . . . In the X-pipe design, because
the right and left exhaust pipes are siamesed for some
distance . . . .(5.0 and Super Fords magazine, 1999
Cobra X-Pipe This Time we X-Periment on a Four-Valve
Modular, http://www.mustang50magazine.com/techarticles/
17880 _1999_cobra).

Use by Others in the Trade
Exhibit D-1
An x pipe is named after its shape . . . . The
difference is that the X pipe shape allows you to get
some extra horsepower out of your engine.”
(www.carpartswholesale.com)

Exhibit D-2
Many “X” pipes on the market are nothing more than two
90 Degree Elbows . . . .” All “X” Pipes are NOT the
same. (www.torquetechexh.com)

Exhibit D-4
. . . we wanted to ensure that our new Section 2 x-pipe
was both high quality as well as functional. . . . As
an added feature, we’ve incorporated an external ‘dump’
at the end of the X-pipe for total user controllable
sound. (www.rougueengineering.com)

Exhibit D-6
Rated one of the bet[sic] X-pipes for the money by 5.0
Mustang. (www.hedman.com)

Exhibit D-9
All BBK Full Length X-Pipes are Direct Replacements for
10
Stock or Aftermarket Shorty Header
(www.bbkperformance.com)

Exhibit D 10
Your car’s x pipe will be specifically made for your
vehicle-- (www.thepartsbin.com)

Exhibit D 13
“Replace your restrictive worn out catalytic converters
with these free flowing, all Stainless Steel 2-1/2”
high flow catalytic converter X-Pipe. (www.steeda.com)

Exhibit D 14

. . . the X Pipes are a classic over-and-under
shotgun design . . . . Check out the magazine and TV
project bikes and you are sure to see X Pipes up close!
(www.supertrapp.com)

Exhibit D 15

Our new X-Pipe is the best fitting system available
without question . . . . Also unlike all the
competitors so called X-Pipes that use a box design or
stamped steel that mimic a real X-Pipe design but have
settled for a cheap design . . . (www.uprproducts.com)

Exhibit D 16
Our universal X-pipes fit an overwhelming variety of
classic cars with ease of installation.
(www.pypesexhaust.com)

Exhibit D 17
. . . these X-pipes use free-flowing mandrel–bent
tubing . . . . (www.americanmuscle.com)

Applicant contends that all of opposer’s evidence is
not reflective of “‘relevant public opinion’” as
“[e]verything Opposer presented was from his fellow
competitors, not from the public” and therefore, this
evidence fails to prove applicant’s mark is generic.
We find applicant's protests against the probative
value of the competitor evidence unconvincing. “[T]he cases
11
have recognized that competitor use is evidence of
genericness,” BellSouth Corp. v. DataNational Corp., 60 F.3d
1565, 35 USPQ2d 1554, 1558 (Fed. Cir. 1995), and that
“evidence of competitors’ use of particular words as the
name of their goods or services, is . . . persuasive
evidence that those words would be perceived by purchasers
as a generic designation for the goods or services.”
Phillip Morris Incorporated, et. al. v. Williamson Tobacco
Corporation, 230 USPQ 172, 176 (TTAB 1986). In this case,
opposer’s evidence establishes competitor use of the term
“x-pipe” in a generic manner for exhaust products.
Additionally, the newspaper and magazine evidence
provides strong evidence of the relevant public’s perception
of the designation “x-pipe” as a generic term. See e.g., In
re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) (noting
that stories from magazines and newspapers demonstrate that
the term “log cabin homes” has a well understood meaning).
Applicant further argues that even if “any [competitor]
use is pertinent,” opposer’s “exhibits fail” because
applicant’s mark “was used only 16 times” and the mixture of
usages do not show by clear evidence that applicants’ mark
is generic. (Applicant’s Exhibit IX).
However, applicant's attempt to discount the evidence
of use of “x-pipe” by competitors is not convincing as minor
variations in the display of a generic term (in this case,
12
e.g., “xpipe”, “XPIPE”, “X pipe”, “x pipe”, “X pipes”, “X
Pipe”, “X Pipes”, “X-PIPE”, “X-PIPES”) typically are legally
insignificant and do not avoid a finding of genericness. In
re Noon Hour Food Products Inc., 88 USPQ2d at 1173 n.2 (TTAB
2008) (“Certainly an upper-case letter or the addition of a
hyphen (or a space) cannot obviate the statutory bar to
registration of a generic designation any more than can a
slight misspelling of such a term”).
Opposer has also provided evidence of use of the terms
H-pipe and Y-pipe for exhaust systems and exhaust pipes as
evidence of naming conventions in the industry with regard
to exhaust systems and exhaust pipes. This evidence is
further supported by the declaration of Boyd Butler,
President of Dr. Gas Incorporated, a competitor of
applicant, who declares that his company has “used the terms
y-pipe, h-pipe, t-pipe and q-pipe generically and
descriptively in connection with exhaust system and exhaust
pipes . . . . it is common practice to use the alphabet to
describe piping joint layout configurations, in this and
other industries.” Opposer’s Exhibit L, Butler declaration
at paragraph 5.11

11 In applicant’s response brief, applicant complains that the
Butler declaration offers a legal conclusion that Butler used the
mark ‘generically.” For purposes of the motion for summary
judgment, we have considered and accorded appropriate probative
weight to the factual statements in the Butler declaration to the
extent that they are made on personal knowledge, that they set
forth facts as would be admissible in evidence, and that they
13
Although applicant argues that this evidence is not
relevant, we find that this evidence is relevant to
opposer’s genericness claim. In short, the way in which “x-
pipe” is used with exhausts is similar to the use in the
industry of other descriptive or generic terms for the same
type of goods (e.g., Y-pipe or H-pipe) and provides further
evidentiary support for opposer’s claim of genericness for
the term “x-pipe”.
Applicant’s Use (Opposer’s Exhibit A)
Opposer’s evidence includes copies of pages from
applicant’s website. This evidence does show use of X-PIPE
by applicant in the manner of a trademark. However, in view
of opposer’s clear evidence of genericness, this evidence is
not sufficient to raise a genuine issue of material fact by
creating a mixed record of generic use. See e.g., In re
International Business Machines Corporation, 81 USPQ2d 1677,
1684 (TTAB 2006) (finding significant evidence of generic
use is not offset by applicant’s evidence that shows proper
trademark use by applicant).
Accordingly, we find that there is no genuine issue of
material fact that the relevant public perceives “x-pipe” as

show that the declarant is competent to testify as to the matters
set forth therein. See Fed. R. Civ. P. 56(e); TBMP Section
528.05(b). Applicant also complains that the Butler declaration
is “un-notarized.” Because the Butler declaration is subscribed
to by a written declaration under Trademark Rule 2.20, it is
acceptable. See TMEP Section 804.01 (5th ed. September 2007).

14
referring to internal combustion engine exhausts which
contain exhaust pipes and discharge pipes and, thus, the
term is generic for applicant’s goods. Applicant's
arguments with respect to the evidence of record are not
persuasive of a contrary result.
Based on the parties’ arguments and evidence of record
we find that opposer has met its burden of establishing that
there is no genuine issue of material fact that the primary
significance of “x-pipe” is as a generic term, and not as a
source identifier for applicant’s goods, “internal
combustion engine exhausts”.
Accordingly, opposer’s motion for summary judgment is
granted, the opposition is sustained and registration to
applicant’s application Serial No. 78004925 is refused.12

12 In view of our decision herein, we need not reach the naked
licensing issue on summary judgment. Additionally, all pending
motions and requests of the parties not addressed herein are
deemed moot.