Central Mfg. Inc.v.Astec Industries, Inc.

Trademark Trial and Appeal Board

Sep 30, 2003

No. 91116821 (T.T.A.B. Sep. 30, 2003)

Mailed: 9/30/03
Hearing: Paper No. 60
July 23, 2003 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Central Mfg. Inc.
v.
Astec Industries, Inc.
_____
Opposition No. 91/116,821
to application Serial No. 75/564,303
filed on October 5, 1998
_____
Central Mfg. Inc., pro se.
David J. Hill and Alicia Brown Oliver of Chambliss, Bahner &
Stophel, P.C. for Astec Industries, Inc.
______
Before Walters, Bucher and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Astec Industries, Inc. [applicant] has applied to
register the mark STEALTH for goods identified as an
"asphalt paving machine," in International Class 7. The
application is based on applicant's allegations that it
first used the mark "no later than April 30, 1998," first
used the mark "in interstate commerce [in connection with
the goods] no later than August 31, 1998" and, as of the
October 5, 1998 filing date, was using the mark in commerce
This Opinion is Not
Citable as Precedent
of the TTAB
Opposition No. 91/116,821
2
through an wholly-owned subsidiary. After the mark was
published for opposition, Central Mfg. Inc. [opposer] filed
a notice of opposition.
The case was tried, although as will be discussed
infra, this trial resulted in a thin record. The parties
fully briefed the case, including in their briefs various
motions. Oral arguments were presented.
Construing the Pleadings
The notice of opposition includes a preamble, numbered
paragraphs and footnotes, all of which we have considered to
be a part of the notice of opposition. Although we have
liberally construed the notice of opposition, we note that
it includes many allegations bearing no relation to legally
cognizable bases for opposition and no references to any
specific provisions of the Lanham Act.
We find opposer to have asserted that it uses the mark
STEALTH as a "trade name, corporate name, service mark and
trademark"; that opposer has used STEALTH as a trademark and
trade name since 1981 and as a trademark for "rakes and
shovels used for asphalt paving, since at least as early as
1986";1 and that its use of STEALTH as a mark for products
1 In paragraph 4 of the notice of opposition, opposer actually
asserts "priority of use, as early as 1986, on the same and/or
similar goods." However, the only goods specified in the notice
appear in opposer's claim of use of STEALTH on or in connection
with "rakes and shovels used for asphalt paving."
Opposition No. 91/116,821
3
or services in numerous classes of goods and services has
been valid and continuous since 1981 and has not been
abandoned.
Opposer also alleges that it "holds rights in" a number
of "well-known STEALTH trademark registrations [and
applications]" and that it has a "family" of STEALTH
registrations.2 In regard to the listed applications and
registrations, opposer apparently is attempting to assert in
paragraph 3 of the notice of opposition that it has attached
to the pleading two copies of each registration and that it
relies upon each registration.3 No such copies, however,
were attached to the notice of opposition.
Opposer asserts that it has been "aggressive" in
licensing its trademark and that applicant is aware of this.
We construe paragraph 5 of the opposition as asserting
only a claim of likelihood of confusion, mistake or
deception among consumers. The paragraph also asserts that
2 In this regard paragraph 3 of the notice of opposition lists
the mark and the registration number for seven registrations and
16 applications. Set forth in a table, are two columns of dates,
so that two different dates are associated with each listed
application or registration, and one column of mere numbers
(e.g., 2, 6, 12, etc.). Opposer has not explained the
significance of the dates or numbers in the table.
3 Cryptically, paragraph 3 also asserts that the registrations
"are incorporated herein by reference as if fully copied and
attached." Incorporating a registration "by reference as if [but
not actually] fully copied and attached" does not make the
registration of record in the absence of some sort of admission
by the defendant. Attachment of copies of registrations
certified by the USPTO and showing current status and title would
Opposition No. 91/116,821
4
use of STEALTH by applicant would "blur the distinctiveness"
of opposer's "well known STEALTH trademarks." We do not
view this phrase alone, contained as it is within a
paragraph that alleges likelihood of confusion, mistake or
deception, as alleging a claim of dilution. Opposer nowhere
alleges that its mark is famous or when, if at all, it
became famous; nor does opposer refer to the dilution
section of the Lanham Act or even use the word dilution.
Paragraphs 8 through 11 of the notice are viewed as
elaborating on opposer's view of why confusion will be
likely and why opposer has standing to bring the opposition
(e.g., asserted "loss of sales" by opposer and "damage" to
opposer's licensing program).
Paragraph 12 asserts that applicant signed the involved
application "with the knowledge that another party had a
right to use the mark in commerce." Paragraph 24 is less
comprehensible than paragraph 12; but it appears only to
repeat the essential allegation of paragraph 12. Neither
paragraph alone states a claim upon which relief can be
granted; nor do the paragraphs considered together.
Finally, though we have read each of these paragraphs in
conjunction with other paragraphs, neither paragraph
presents or is reasonably part of a legally cognizable
serve to make the registrations of record. As previously stated,
no copies were made of record with the notice of opposition.
Opposition No. 91/116,821
5
claim.4 Thus, we have given paragraphs 12 and 24 no
consideration.
Similarly, we have given no consideration to paragraphs
13 and 14, which discuss a purported attempt by applicant to
register a mark not involved herein, i.e., STEALTH FORCE,
and opposer's asserted success in opposing that mark in
another opposition proceeding. These paragraphs are not
relevant to this proceeding and do not state any cognizable
claim, either alone or with other paragraphs in the notice
of opposition.
Likewise, we have not considered paragraphs 16 and 18,
which assert that applicant's mark is a mere design which
does not function as a mark and which is a functional
configuration. This does not properly state a legally
cognizable claim, either alone or with other paragraphs in
the notice of opposition.
Paragraph 15 asserts that applicant's mark is
descriptive or deceptively misdescriptive of applicant's
4 Specifically, although the opposition includes allegations that
applicant made certain deliberate misstatements in its
application and that applicant intended the USPTO to rely on
these statements, the allegations in paragraphs 12 and/or 24 do
not constitute all or part of a fraud claim. Nowhere is there an
allegation that applicant knew the right of another to be
superior to applicant's right, so that the application could not
have been filed in good faith; and mere knowledge of another's
right to use the identical mark does not state a claim.
Similarly, the allegations related to applicant's asserted
knowledge of another's right and applicant's asserted knowledge
of opposer's aggressive licensing program do not state a claim of
fraud.
Opposition No. 91/116,821
6
paving machines. Having been properly pleaded, we have
considered this claim.
Paragraph 17 asserts that applicant made no bona fide
use of its mark in commerce prior to the filing of the
application, so that the application is void ab initio.5
However, we also view paragraph 17 as intended to be read in
conjunction with paragraphs 20 and 21, so that, together,
they present the first of three theories of fraud that
opposer is asserting. Under the first theoretical fraud
claim, opposer is asserting that applicant knew it had not
made bona fide use in commerce and fraudulently induced the
USPTO to rely on the statement of use in commerce to obtain
approval of the mark for publication and eventual
registration.
We also view opposer as asserting, in paragraph 22,
that applicant's statement of its date of first use, as
opposed to its date of first use in commerce, was known to
be false and was part of an attempt to perpetrate a fraud on
the USPTO. Finally, we view opposer as asserting its third
theory for a fraud claim in paragraph 23. Specifically,
5 We do not consider this construction of paragraph 17 as
approval of opposer's attempt, during the proceeding, to amend
its notice of opposition to assert that the application is void
because it fails to state dates of use with requisite
specificity, which would be a different claim. And a claim, we
might add, that would be barred because the issue is an ex parte
examination question. See Century 21 Real Estate Corp. v.
Century Life of America, 10 USPQ2d 2034, 2035 (TTAB 1989)
("fairness dictates that the ex parte question of the sufficiency
of the specimens not be the basis for sustaining an opposition").
Opposition No. 91/116,821
7
opposer is asserting by this paragraph that the specimens of
use submitted by applicant do not show the actual method of
use of the mark by applicant, that applicant knew this and,
notwithstanding such knowledge, made the statement to secure
approval of its application.
Finally, opposer has asserted that applicant is not,
and was not, at the time of filing of the application, the
rightful owner of the mark.
As a result, we find opposer to have pleaded
alternative claims under Section 2(d); a claim that STEALTH
is descriptive or deceptively misdescriptive of applicant's
goods; a claim of lack of bona fide use in commerce prior to
the filing date of the involved application; alternative
claims of fraud; and a claim that applicant is not the
rightful owner of the mark.
Applicant, in its answer, has admitted that it filed
its application and that its mark was published for
opposition. Applicant denied that opposer has used the mark
STEALTH in interstate commerce in connection with paving
machines "or in any other way that is likely to cause
confusion with respect to [applicant's] use of its mark."
In regard to opposer's purported applications and
registrations, applicant admits only that the applications
have been filed and that the registrations "exist."
Applicant denies "opposer is the applicant or owner of the
Opposition No. 91/116,821
8
registrations." As we also construe the answer liberally,
we construe this paragraph in the answer as admitting that
applications with the specified serial numbers are on file
with the USPTO and that registrations with the specified
registration numbers have issued, but we view applicant as
having denied that opposer is owner of any of these, thus
leaving opposer to prove its title in these registrations.
We construe applicant's statement that "the registrations
listed in Paragraph 3 exist" as an admission that the seven
pleaded registrations issued and have not been cancelled.
Applicant has otherwise denied, expressly or
effectively, all other allegations in the notice of
opposition. Titled as affirmative defenses are allegations
by applicant that opposer has not pleaded fraud with
particularity and that opposer's paragraphs 15 through 24
fail to state claims upon which relief can be granted.
Finally, applicant asserts that paragraphs 15 through 24 of
the notice of opposition violate Rule 11 of the Federal
Rules of Civil Procedure.
Applicant asserted in its answer that if this Board did
not dismiss the claims set forth by such paragraphs,
applicant would pursue a separate motion for Rule 11
sanctions. Applicant did not, however, ever file a separate
motion to dismiss any particular claims, or strike any
particular claims, and did not file a Rule 11 motion
Opposition No. 91/116,821
9
regarding the contents of the notice of opposition.
Therefore, the claims we have already discussed remain in
this proceeding.
Opposer's Motion to Amend Under Fed. R. Civ. P. 15(b)
During the pendency of this proceeding, opposer made
numerous attempts to amend its pleading. On more than one
occasion, it moved to amend its pleading "to conform to
[the] evidence" notwithstanding that the parties had not yet
gone through trial. Other motions to amend sought to expand
the list of applications and registrations on which opposer
could rely in this proceeding. Each of the motions, whether
filed under Federal Rule 15(a) or Federal Rule 15(b), was
denied as inappropriate and/or denied on its merits.
Opposer, in its brief and reply brief, does not revisit any
of these interlocutory rulings or seek reconsideration of
those rulings. However, in its brief, opposer requests that
the Board amend the notice of opposition to conform to the
evidence, which we construe as a Rule 15(b) motion.
Opposer seeks to add "an abandonment claim and to deny
registration to the Applicant based on the fact that the
Applicant has presented no evidence of valid trademark use
and thus [the] application should be denied based upon
abandonment." Reply brief, p. 6; see also, opposer's main
brief, pages 26-27. Applicant has argued against granting
this motion, essentially asserting that the evidence does
Opposition No. 91/116,821
10
not support the motion because testimony from applicant's
witness attests to applicant's continued use of the mark in
commerce and that applicant has never abandoned the mark.
As applicant clearly has not consented to trial of an
unpleaded claim of abandonment6, opposer must show that it
has tried the claim with the implied consent of applicant.
See Fed. R. Civ. P. 15(b); see also, authorities collected
in TBMP §507.03(b) (2d ed. 2003).
We note that the only proffered evidence is opposer's
single notice of reliance and applicant's single testimony
deposition. We see nothing in the submissions made with the
notice of reliance7 or in opposer's cross-examination of
applicant's witness8, that would suffice to put applicant on
notice that opposer was pursuing a claim of abandonment,
notwithstanding the irrelevance of such a claim (for reasons
already noted). See Colony Foods, Inc. v. Sagemark, Ltd.,
735 F.2d 1336, 222 USPQ 185 (Fed. Cir. 1984); Riceland Foods
6 Nor did applicant, by anything in its answer, assume the burden
of proving prior and continuous use of its mark in commerce. Had
applicant asserted, as an affirmative defense, that it had made
use of STEALTH prior to opposer, then the abandonment claim
opposer seeks to add might be relevant. Applicant did not,
however, assert such a defense.
7 At this point in our decision, we consider the notice of
reliance only in regard to opposer's motion under Rule 15(b). We
decide, infra, applicant's motion to strike many of the
submissions made by that notice of reliance.
8 As applicant has noted, on direct examination its witness
testified that applicant has never abandoned its mark. On cross-
examination, opposer did not inquire into or seek to undermine
this testimony.
Opposition No. 91/116,821
11
Inc. v. Pacific Eastern Trading Corp., 26 USPQ2d 1883 (TTAB
1993). Accordingly, we deny opposer's motion under Federal
Rule 15(b).
Motions Relating to the Evidence
What little evidence has been offered is the subject of
various motions, which is not surprising for a case that
appears to have featured much more involvement in procedural
wrangling than in pursuit of the merits.
Applicant has moved to strike many of the submissions
made with opposer's notice of reliance; and, in this regard,
the parties do not simply debate the propriety of that
request vis a vis the particular items proposed to be
stricken, but also debate whether an interlocutory ruling on
June 18, 2002 precludes consideration of applicant's motion.
Opposer has moved to strike the entirety of applicant's
testimony deposition--an interesting prospect, because
opposer relies on much of that testimony in its brief, in
arguing for judgment on some of its pleaded claims.9
Opposer asserts that the deposition was taken on
insufficient notice. Opposer also essentially moves, in the
alternative, to strike exhibit 3 to the testimony, on the
ground that it was not produced during discovery. Thus, we
9 In fact, in its reply brief, opposer argues that the testimony
deposition should be stricken, "with the exception of Applicant's
damning admission" regarding control of the quality of
applicant's goods by its subsidiary.
Opposition No. 91/116,821
12
view opposer as asking us to strike applicant's testimony
and exhibits in their entirety but, if we do not, to at
least strike exhibit 3.
Applicant's Motion to Strike
First, we consider applicant's motion to strike
portions of opposer's notice of reliance. A preliminary
matter that must be considered is the parties' difference of
opinion about whether the question of the admissibility of
these items has already been ruled on in this case in the
interlocutory order of June 18, 2002. After opposer filed
its notice of reliance, applicant filed its objections to
certain submissions made therewith. Opposer asserts that
the Board's order of June 18, 2002 includes a denial of
applicant's attempt to have the disputed items stricken.
Applicant, on the other hand, views the order as directing
applicant to raise its objections by a separate motion to
strike; and applicant argues that it followed this
instruction by including its motion to strike in its brief.
We have reviewed the disputed order and find the two
sentences dealing with applicant's previously filed
objections to the notice of reliance to be confusing and
inconclusive.10 Moreover, because a panel at final hearing
10 The Board attorney simply noted the filing of the objections,
that they were not "in the form of a motion to strike," and
"decline[d] to so construe the objections." There was no
instruction regarding whether the objections were being deferred
Opposition No. 91/116,821
13
may not only review an interlocutory ruling but also may, if
appropriate, reverse it, see Harley-Davidson Motor Co. v.
Pierce Foods Corp., 231 USPQ 857, 859 n.13 (TTAB 1986), we
are not bound by either party's interpretation of the June
18, 2002 order, or the order itself.
By its motion to strike, applicant seeks to bar
consideration of certain materials which it asserts cannot
be made of record by notice of reliance. Moreover, for each
of these items, applicant also has asserted substantive
objections. When parties have procedural objections of a
technical nature relative to a notice of reliance, they are
encouraged to raise them promptly by a motion to strike.
See TBMP §§532 and 707.02(b)(2)(2d ed. 2003). Substantive
objections, however, may be reserved to final hearing and
raised in a party's brief. In this case, applicant has done
both, i.e., it has moved to strike and it has asserted
substantive objections regarding the various subjects of its
motion.
Because the holding of the interlocutory order is
unclear, we have reconsidered the issues therein and we find
applicant's filing of its motion to strike in its brief to
meet the promptness requirement for procedural objections,
for consideration at final hearing or whether they would have to
be raised by motion to strike to be considered; and there was no
instruction regarding when any such motion, if required, would
have to be filed.
Opposition No. 91/116,821
14
e.g., whether a particular item may permissibly be made of
record by notice of reliance. Boyds Collection Ltd. v.
Herrington & Co., 65 USPQ2d 2017, 2019 (TTAB 2003).
Moreover, even if we were to have found the interlocutory
order to have had the effect of requiring applicant to file
a motion to strike at an earlier point in the proceeding,
applicant's failure to do so would not have prevented
applicant from raising at final hearing any substantive
objections to the material attached to opposer's notice of
reliance. In other words, the probative value to be
accorded evidence submitted by notice of reliance, and not
excluded by grant of a motion to strike, may always be
argued at final hearing.
Applicant seeks to strike exhibits A, C, H, I and J to
opposer's notice of reliance.
Exhibit A to opposer's notice of reliance is a list of
registrations and applications purportedly owned by opposer.
First, we note that the list improperly includes many more
registrations and applications than those listed in the
notice of opposition. Further, a plaintiff relying on
registrations cannot make those registrations of record by a
list alone, even when, as with this notice of reliance, the
list is referenced in a declaration11 also accompanying the
11 The declaration is signed by Leo Stoller, as president of
Central Manufacturing Co., not Central Manufacturing Inc. While
we choose in this instance to treat the difference in company
Opposition No. 91/116,821
15
notice of reliance. See Boyds Collection, supra, 65 USPQ2d
at 2020 (TTAB 2003) (in the absence of a stipulation,
parties may not present evidence by affidavit or
declaration), and procedures described in TBMP §704.03(b).
We agree with applicant that the list of opposer's purported
registrations and the declaration referencing it are an
inappropriate means for making pleaded registrations of
record, and we have not considered this list.
Exhibit C is a copy only of opposer's second request
for admissions by applicant, but not the responses thereto.
Since applicant, in its motion to strike, clearly is arguing
against opposer's attempt to introduce the responses, we
construe the motion to strike to also target Exhibit E to
opposer's notice of reliance, i.e., the responses to the
requests that are contained in Exhibit C. Applicant argues
that, insofar as its responses contained objections, opposer
never sought to test the sufficiency or propriety of those
objections and should not, therefore, be permitted to put
the responses into the record. We disagree; the responses
show that applicant admitted the authenticity of certain
documents and objected to certain requests. Because the
names as an inadvertent discrepancy, and to assume that the
declaration is from the president of opposer, opposer should not
take this statement as indicating that there is no legal
significance to the distinction.
Also, although the declaration states that a copy of each
listed registration is attached, plainly, no such copies were
submitted.
Opposition No. 91/116,821
16
Trademark Rules allow introduction of responses to requests
for admission by notice of reliance, and because applicant
cites to no authority that requires objections to such
requests to first be made the subject of a motion to test
the sufficiency of the responses, we find no basis for
seeking to strike the responses opposer has introduced.
Accordingly, we have considered applicant's responses and
objections to opposer's requests for admission.
Exhibits H and I are copies of opposer's responses to
applicant's discovery requests. Applicant is entirely
correct that a party may not make its own discovery
responses of record by notice of reliance, except in certain
circumstances, none of which apply in this case. Therefore,
these two exhibits have not been considered.
Finally, Exhibit J is a list of assertedly successful
policing activities conducted by opposer to protect its
assertedly registered marks. The previously referenced
declaration by opposer's president also states "that
Opposer's victories list is a true and correct copy." For
the reasons outlined above in regard to the list of
opposer's asserted registrations, we also find the
"victories list" an inappropriate item for submission by
notice of reliance, and we have not considered this exhibit.
In conclusion, applicant's motion to strike is granted
as to exhibits A, H, I and J, and the declaration that
Opposition No. 91/116,821
17
refers thereto. These items are considered stricken from
the record. The motion is denied as to Exhibit C and, to
the extent the motion was also intended to cover Exhibit E,
it is also denied as to that exhibit. These exhibits have
been considered. We note, however, that even if we did not
strike exhibits A, H, I and J, we would find applicant's
substantive objections to the exhibits, on the grounds that
they contain hearsay and are unauthenticated, to be well
taken. Thus, the exhibits would, in any event, be of
little, if any, probative value.
Opposer's Motion to Strike
Prior to the commencement of its testimony period,
applicant informed opposer of applicant's plan to take the
testimony deposition of Jeff Richmond, and opposer
acknowledged, by fax, receipt of the letter setting forth
applicant's plan. In its acknowledgment, opposer informed
applicant it would participate in the deposition by
telephone. Next, approximately 10 days into the testimony
period, on September 25, 2002, applicant forwarded, by both
mail and fax, notice that the deposition would take place on
October 7, 2002. Opposer, in arguing the unreasonableness
of its actual notice, ignores the fax and focuses on its
asserted receipt on October 1, 2002 of applicant's letter.
Opposer does not, however, deny receipt of the fax. In
arguing why the testimony should be stricken, opposer
Opposition No. 91/116,821
18
asserts "courts have consistently held" that 7 days notice
of a deposition is insufficient, it being "normally
considered that any notice under 15 days is inadequate
notice." Opposer does not, however, cite to any authority
for these statements.
Another argument raised by opposer is that, because
this was a testimony deposition, rather than a discovery
deposition, opposer needed more time to prepare. We take
this argument as an attempt by opposer to show prejudice
suffered because of the assertedly insufficient notice. In
regard to this argument, we note that opposer, prior to the
deposition, was presented with copies of the exhibits that
applicant proposed to introduce through the testimony of its
witness. There were only four exhibits. Further, being
limited in its cross-examination to the scope of direct
examination, and applicant having obtained scarcely two
dozen pages of direct testimony, this clearly was a
deposition that did not require extensive preparation by
opposer.
We deny opposer's motion to strike the testimony
deposition of Jeff Richmond for inadequate notice. Compare
Hamilton Burr Publishing Co. v. E.W. Communications, Inc.,
216 USPQ 802, 804 n.6 (TTAB 1982) (Testimony considered
despite only two days notice, because no significant travel
involved to attend and no prejudice shown by objecting
Opposition No. 91/116,821
19
party) with Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072,
1074 (TTAB 1990) (twenty-four hours notice held
insufficient).
Having denied opposer's motion to strike the deposition
in its entirety, we now consider opposer's alternative
motion to strike applicant's exhibit 3 to the deposition.
In essence, opposer is arguing for application of the
estoppel sanction, discussed in TBMP §527.01(e) (2d ed.
2003) on the ground that the exhibit was not produced during
discovery. We deny the motion. Applicant's failure to
produce the exhibit during discovery was an oversight, now
adequately explained by applicant's counsel. This is not a
case where applicant refused to produce material so as to
lead opposer to believe that it would not take testimony on
a particular subject, specifically, applicant's first use.
Cf. Weiner King, Inc. v. Weiner King Corp., 615 F.2d 512,
204 USPQ 820 (CCPA 1980). Other exhibits to the Richmond
testimony that were produced during discovery clearly allude
to the first use. We note, however, that even if the motion
were granted and the exhibit were not considered, it would
not make any difference to the ultimate result herein,
which, as discussed infra, is premised on opposer's failure
to bear its burden of proof as to opposer's pleaded claims.
Opposition No. 91/116,821
20
The Merits of Opposer's Various Claims
Earlier, we reviewed opposer's notice of opposition at
length. Now, in conjunction with our consideration of what
little evidence there is, we review the claims one by one.
Likelihood of Confusion
Opposer made a variety of factual assertions in
connection with its claim, under Section 2(d), of likelihood
of confusion among consumers. First, opposer has asserted
that it owns various STEALTH registrations. Second, opposer
has asserted that it has actually used STEALTH as a
trademark in commerce for rakes and shovels used for asphalt
paving, i.e., goods which opposer argues are complementary
to applicant's paving machines. Third, opposer has asserted
that it has a family of STEALTH marks.
The first of these Section 2(d) allegations fails
because, although applicant has admitted that the seven
pleaded registrations "exist," it specifically denied that
opposer is the owner of them. In the face of this denial,
opposer has not proved its ownership. Opposer, of course,
attempted to do so by submitting a list of its asserted
registrations with a declaration. We have stricken those
exhibits to the notice of reliance. We also note that, even
had we not stricken those exhibits, and had we accepted the
declaration and list as proof of applicant's ownership of
the seven listed registrations that were also listed in the
Opposition No. 91/116,821
21
notice of opposition, we would find no likelihood of
confusion because, though the involved marks are identical,
the goods are vastly different.12 In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA
1973).
The second of opposer's Section 2(d) allegations fails
because opposer has not established its use of the STEALTH
mark on or in conjunction with rakes and shovels used for
asphalt paving. Opposer did discuss its asserted use of the
mark for these items in its responses to applicant's
interrogatories, but we have stricken these as improper
items to submit by opposer's own notice of reliance. Even
if we had not stricken them, we would not give the
interrogatory responses any significant probative value in
the absence of any corroborating testimony or evidence, for
a party’s response to an interrogatory generally is viewed
as “self-serving.” General Electric Co. v. Graham Magnetics
Inc., 197 USPQ 690, 692 n.5 (TTAB 1977) citing Grace & Co.
v. City of Los Angeles, 278 F.2d 771, 776 (9th Cir. 1960),
12 Applicant's goods are asphalt paving machines. The goods
listed in opposer's seven pleaded registrations cover various
sporting goods in class 28; bicycles, motorcycles and boats in
class 12; microwave absorbing automobile paint in class 2;
various items for playing pool or billiards, in class 28; comic
books in class 16; lawn sprinklers in class 21; and metal alloys
for use in sporting goods and transportation and window locks in
class 6. Opposer has put in no evidence to show the relation of
any of these items to asphalt paving machines, nor is any
relationship apparent on its face.
Opposition No. 91/116,821
22
and Beecham Inc. v. Helene Curtis Industries, Inc., 189 USPQ
647 (TTAB 1976).
The third of the Section 2(d) allegations, i.e.,
opposer's claim that it has a family of marks, fails because
it has not established the existence of the family or that
it has promoted the members of the family in a way such that
they would be recognized as a family. Colony Foods, supra,
222 USPQ at 186-87 (Fed. Cir. 1984).
Descriptiveness/Misdescriptiveness
As to opposer's claim that applicant's mark is
descriptive or deceptively misdescriptive, opposer has not
submitted any evidence to support the claim and did not
pursue the claim in its brief. There appears to have been
an attempt by opposer's president, during cross-examination
of applicant's witness, to obtain an admission from the
witness that STEALTH is descriptive of applicant's asphalt
paving machine. We agree with applicant's counsel, however,
who objected during the deposition, that opposer was
mischaracterizing the testimony, and that no such admission
was made.
Bona Fide Use of Mark Prior to Filing Date
In regard to opposer's claim that applicant did not
make bona fide use of the mark in commerce prior to its
filing date, we find the testimony of applicant's witness to
Opposition No. 91/116,821
23
establish just the opposite. The testimony describes the
first shipment of an asphalt paving machine bearing the mark
and subsequent payment for the machine by the receiving
party. The exhibits to the testimony corroborate the
testimony. Opposer attempts to make much of the fact that
the first shipment is not listed on the list of sales of
STEALTH paving machines produced during discovery by
applicant. However, the Richmond testimony explains that
the shipment was made as of August 24, 1998 but the sale of
this particular machine appears on the list of sales as of
December 31, 1998, for accounting reasons, because that was
when the final invoice issued. Because the application was
not filed until October 5, 1998, the August 24, 1998
shipment was a bona fide use of the mark in commerce prior
to the filing date of the application.
Fraud
As we have found that applicant made bona fide use of
the mark in commerce prior to the filing date of the
application, opposer's claim of fraud, based as it is on the
lack of such use, also fails. Even if we had found that
applicant's first shipment was not a bona fide use in
commerce, we would still dismiss the related fraud claim, as
opposer has not established that applicant intended to
commit fraud on the USPTO.
Opposition No. 91/116,821
24
Opposer's alternative fraud claim, specifically, that
the date of first use asserted in the application, as
opposed to the date of first use in commerce, is false and
was known to applicant to be false, also must fail. Opposer
has failed to submit any evidence to establish that the date
asserted in the application is false, and has failed to
prove that applicant intended to commit fraud on the USPTO.
More importantly, the date of first use is not material to
the office's examination of the application and decision
whether to approve the mark for publication.
Opposer's additional alternative fraud claim,
specifically, that applicant has not used the mark on the
goods in the manner shown by the application specimens, also
fails for lack of proof. Opposer has offered no evidence
whatsoever to support the claim.
Ownership
The only remaining claim is opposer's claim that
applicant is not the owner of the mark. This is based on
opposer's argument that Roadtec, a wholly-owned subsidiary
of applicant Astec Industries, and a division of applicant,
is the true owner of the mark and should have been listed in
the application instead of Astec. Notwithstanding the
evidence that indicates that Roadtec controls the quality of
the STEALTH asphalt paving machine, there is nothing
improper or unlawful about having a parent corporation apply
Opposition No. 91/116,821
25
to register a mark based on its subsidiary's use of the
mark.
In sum, opposer has failed to prove any of its claims.
Moreover, because opposer has not proved ownership of any of
the pleaded registrations, or common law rights in STEALTH
based on use for rakes and shovels, it has not established
its standing to pursue the opposition. Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023, 1029 (Fed. Cir. 1999)
(allegations alone do not establish standing and, if
challenged, must be proved as part of the plaintiff's case).
Accordingly, judgment is entered against opposer on all
claims and the opposition is dismissed.
The Cross-Motions Under Federal Rule 11
Though we have dismissed the opposition, we briefly
address the parties' cross-motions under Rule 11 of the
Federal Rules of Civil Procedure, for the sake of judicial
efficiency. Applicant asserted in its brief that opposer
had not proven its standing. Opposer took umbrage at the
assertion and argued that applicant's arguments were
sanctionable. In particular, opposer noted that it has been
involved in numerous cases in the courts and before this
Board and has never been held not to have standing.
Applicant responded to opposer's motion and filed a
cross motion of its own, arguing that an improper motion
under Rule 11 is itself sanctionable. In its response to
Opposition No. 91/116,821
26
opposer's initial motion, applicant noted that it could not
know until after trial that opposer would not have proved
its standing. Applicant also asserts that opposer has cited
no authority for its initial Rule 11 motion targeting
applicant's assertion, in its brief, that opposer failed to
prove its standing. In support of its cross-motion,
applicant argues that opposer has, throughout the
proceeding, caused needless delays; that Rule 11 is not to
be bandied about as a tactical tool; and that opposer's
motion is the last straw.
Opposer responded to applicant's cross-motion by filing
a second Rule 11 motion, heaping another straw on the pile,
so to speak. The arguments, however, are merely longer
repetitions of those arguments in opposer's first motion.
Opposer quotes at length from decisions (precedential and
not) wherein opposer was found to have standing. Opposer
apparently believes, mistakenly, that once it has been found
to have standing in one case, it will always have standing
for all cases. Opposer also appears not to have understood
the difference between making sufficient allegations
relating to standing in a pleading and, if challenged on
those allegations, proving standing at trial as an element
of one's case.
We do not find opposer's misunderstanding of the law to
provide opposer with an excuse for filing not one but two
Opposition No. 91/116,821
27
Rule 11 motions. Applicant did nothing improper in arguing
in its brief that opposer had not proved its pleaded
allegations relating to standing. Likewise, applicant did
nothing improper in cross-moving for Rule 11 sanctions after
opposer refused to withdraw its first Rule 11 motion.
We deny opposer's motions and grant applicant's cross-
motion. Accordingly, we also enter judgment against opposer
as a sanction for its abuse of the Rule 11 process.