Caterpillar Inc.v.Alan Sadler

Trademark Trial and Appeal Board

Mar 5, 2012

No. 91198463 (T.T.A.B. Mar. 5, 2012)

al Mailed: March 5, 2012

Opposition No. 91198463

Caterpillar Inc.

v.

Alan Sadler

Before Bucher, Taylor, and Mermelstein,
Administrative Trademark Judges.

By the Board:

Alan Sadler (“applicant”) seeks registration of the
mark LEAFCAT1 in stylized form for “lawn care” in
International Class 44 under Trademark Act Section 1(b),
15 U.S.C. Section 1051(b).
Caterpillar Inc. (“opposer”), has opposed registration
of applicant’s mark on the grounds of likelihood of
confusion with and dilution of its previously used and
registered marks2 and on the ground that applicants lack a
bona fide intent to use the subject mark in commerce,
thereby rendering the mark void ab initio.

1 Application Serial No. 77956229, filed on March 11, 2010, based
on an assertion of a bona fide intent to use the mark in
commerce.
2 Opposer pleads ownership of eleven registrations for the mark
CAT or CATERPILLER for various earth moving, earth conditioning
and material handling machinery or equipment or services related
to such goods.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
2
On February 28, 2012, applicant filed an answer to
opposer’s amended notice of opposition, by which applicant
denied the salient allegations of the amended notice.
Applicant’s amended answer is accepted into the record.
This case now comes up for consideration of opposer’s
motion (filed August 10, 2011) for summary judgment on its
claim that applicant lacked (and currently lacks) a
bona fide intent to use his mark in commerce on the services
described in the application as of the application filing
date and (2) applicant’s cross motion (filed on August 26,
2011, in conjunction with his response to opposer’s motion
for summary judgment) for summary judgment on the issue of
likelihood of confusion and for other relief.3
We turn first to opposer’s motion for summary judgment.
In support of its motion, opposer argues that applicant has
never used, has no bona fide intent to use, and did not have
a bona fide intent to use the subject mark for the “lawn
care” services recited in the application at the time he
filed such application. Opposer requests that the Board

3 We note applicant’s filing of September 29, 2011. We remind
the parties that materials filed with the Board under seal
pursuant to the Board’s standard protective order, or a
protective agreement signed by the parties, will be kept
confidential and will not be made available for public
inspection. To be handled as confidential, and kept out of the
public record, confidential materials must be so designated at
the time of filing. If a party submits any brief, pleading,
motion or other such filing containing confidential information
under seal, the party must also submit for the public record a
version of the paper with only the confidential matter redacted.
See TBMP Section 120.02 (3d ed 2011).
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sustain this opposition proceeding because there is no
genuine issue of fact that applicant lacked the required
bona fide intent to use the applied-for LEAFCAT mark in
commerce for the services recited at the time he filed his
application.
Summary judgment is only appropriate when there is no
genuine dispute as to any material fact and the moving party
is entitled to judgment as a matter of law. See Fed. R.
Civ. P. 56(a). The mere fact that cross-motions for summary
judgment on an issue have been filed does not necessarily
mean that there is no genuine dispute of material fact, and
that trial is unnecessary. The Board may not resolve issues
of material fact on a motion for summary judgment; it may
only ascertain whether a genuine dispute regarding a
material fact exists. See, Lloyd’s Food Products, Inc. v.
Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir.
1993). A factual dispute is genuine if, on the evidence of
record, a reasonable fact finder could resolve the matter in
favor of the non-moving party. See Opryland USA Inc. v.
Great American Music Show Inc., 970 F.2d 847, 23 USPQ 1471,
1472 (Fed. Cir. 1992); Old Tyme Foods, Inc. v. Roundy’s,
Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
First, we find that no genuine issues of material fact
exist as to opposer’s standing to oppose registration of the
involved application. In particular, opposer has pleaded
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ownership of eleven registrations for the CAT or CATERPILLER
mark and made the TARR printouts for these registrations of
record with its amended notice of opposition, showing that
opposer is the owner of these valid and subsisting
registrations. Thus, opposer’s standing has been
established. See Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
With respect to the ground asserted in opposer’s motion
for summary judgment, opposer argues that based on “clear
and uncontroverted testimony and responses to Opposer’s
written discovery responses by Applicant, it is evident that
Applicant did not at the time he filed his application, and
does not currently, have any plans to use the LEAFCAT mark
in connection with the applied-for lawn care services.” To
support its claim, opposer has introduced, inter alia, a
copy of applicant's responses to opposer’s first set of
requests for admissions, first set of interrogatories, first
set of requests for the production of documents and things,
and second set of requests for admissions. In particular,
in response to opposer’s Interrogatory No. 3 asking
applicant to describe in detail the “lawn care” services
applicant intends to offer and/or offers in connection with
the LEAFCAT mark, applicant stated that “Applicant does not
currently offer lawn care services and at the present has no
current or future plan to offer lawn care services.” In
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response to opposer’s Interrogatory No. 10 asking applicant
to describe in detail all experience applicant has had in
the lawn care field, applicant states that “Other than
mowing the neighbor’s lawn and a college professor’s lawn
(many years ago).[sic] Applicant’s lawn care experience has
been limited to his personal and private property.” In
response to opposer’s Request for Admission No. 78 (First
Set) asking that applicant admit that he does not offer lawn
care services in connection with the LEAFCAT mark, applicant
admits that “The proceeding statement is correct.” In
response to opposer’s Request for Admission No. 79 (First
Set) asking applicant to admit that he does not intend to
ever offer lawn care services in connection with the LEAFCAT
mark, applicant states that “While there are no immediate
plans, Applicant may at some time in the future, offer the
use of the term LEAFCAT in connection with lawn care
services.”
During the opposer’s August 8, 2011, deposition of
applicant, opposer’s counsel asked questions related to
applicant’s intent to use his mark in commerce with lawn
care services. Our review of the transcript excerpts
provided indicates that applicant admitted that he has no
plan to use the LEAFCAT mark in connection with lawn care
services; that when he filed his subject application he had
no plans to use the mark in connection with lawn care
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services; that lawn care services were not on his mind when
he filed the subject application; that he has no business
plans or other documents with respect to lawn care services
and the LEAFCAT mark; that he has no documents showing plans
for lawn care services; and he does not currently provide
any lawn care services for others.
Applicant, in his brief in opposition, states that he
“has never presented himself or his company as a lawn care
services professional.” Applicant later argues that he “has
followed the rules of procedure to the best of his ability
and should not be derailed by a technicality or failing of
the prescribed process.” He explains that he obtained the
services of a trademark counsel and said counsel filed the
application for the LEAFCAT mark on his behalf. He further
states that the USPTO examining attorney “did not request
that the application be amended or that the classification
be changed.” Applicant argues that opposer “is seeking to
degrade a serious process to nothing more than an
insubstantial play of semantics.”
Despite applicant’s contentions, the recitation “lawn
care” in International Class 44 clearly indicates that the
services include the care of lawns. Applicant has admitted
unequivocally that he has no intention to use the mark
LEAFCAT for “lawn care services.”
7
An applicant for registration of a trademark under
Trademark Act § 1(b) (the provision under which applicant
applied) must have a bona fide intent to use the applied-for
mark in commerce on or in connection with the identified
goods or services. Trademark Act § 1(b)(1). While such an
applicant must state that it has a bona fide intent to use
the mark in commerce, Trademark Act § 1(b)(3)(B), the
statement alone is insufficient; the applicant must in fact
possess such an intent. Although the issue of whether
applicant in fact possesses a bona fide intent to use the
mark is rarely – if ever – raised by the examining attorney,
Trademark Manual of Examining Procedure (TMEP) § 1101 (8th
ed. 2011), it may be raised in an inter partes proceeding
before the Board, such as this opposition. Id.; see, e.g.,
Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723 (TTAB 2010).
Based on the evidence of record – primarily applicant’s
own statements – we find that there is no genuine dispute of
material fact that applicant did not at the time he filed
his application, nor does he now, have a bona fide intention
to use his mark for “lawn care,” the services recited in his
application. We therefore conclude that opposer has
demonstrated, as a matter of law, that it is entitled to
summary judgment on the ground that applicant did not have
at the time the application was filed (nor does he now
have), the required bona fide intent to use the mark in
8
commerce for the services described in the involved
application.
Accordingly, opposer’s motion for summary judgment is
hereby granted on the ground of lack of bona fide intent to
use the mark. Having reached this conclusion, we need not
consider applicant’s cross-motion for summary judgment on
the likelihood of confusion claim, because even if applicant
were to establish that it is entitled to judgment on the
issue of likelihood of confusion, the opposition would
nonetheless be sustained based on applicant’s lack of a
bona fide intent to use the mark in connection with the
identified services.4
Further, applicant’s motion for a finding of frivolous
litigation under Fed. R. Civ. P. 11 is denied. Applicant
has not established a factual basis upon which the Board
could grant sanctions under the rule. We also observe that
inasmuch as applicant did not comply with the “safe harbor”
and “separate motion” requirements of the rule, the motion
must be and is hereby denied. See Fed. R. Civ.
P. 11(c)(1)(A). Applicant’s further request for an award of
“equivalent” attorney’s fees, set forth at the end of his
opposition brief, will not be considered. Applicant is

4 We also need not consider applicant’s September 29, 2011,
filing as it relates to his motion for summary judgment.

9
advised that the Board is without authority to award
attorney’s fees. See Trademark Rule 2.127(f).
In view of our findings herein, the opposition is
sustained and registration to applicant is refused.