Concept Cyclery, Inc.v.Concept Cycles, LLC

Trademark Trial and Appeal Board

Dec 13, 2012

No. 92055282 (T.T.A.B. Dec. 13, 2012)

jk Mailed: December 13, 2012

Cancellation No. 92055282

Concept Cyclery, Inc.

v.

Concept Cycles, LLC

Before Ritchie, Lykos and Shaw,
Administrative Trademark Judges.

By the Board:
Concept Cycles, LLC (“respondent”)1 owns a registration on
the Supplemental Register for the mark CONCEPT CYCLES (standard
characters; CYCLES disclaimed) for “bicycles” in International
Class 12.2
Concept Cyclery, Inc. (“petitioner”) filed a petition to
cancel, and filed a first amended petition to cancel
(consisting of two additional paragraphs) as a matter of
course, on the ground of priority pursuant to Trademark Act
Section 2(d). Petitioner alleges priority based on common law
usage of the mark CONCEPT CYCLERY. In addition, petitioner

1 The Board has updated its records for this proceeding to
reflect counsel for respondent’s correspondence information.
2 Registration No. 3687731, issued September 22, 2009, from an
underlying intent-to-use application filed July 14, 2008, wherein
respondent filed, on July 30, 2009, an amendment to allege use
asserting a date of first use anywhere, and date of first use in
commerce, of July 30, 2009, and filed, on July 31, 2009 an
amendment to seek registration on the Supplemental Register.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Cancellation No. 92055282

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claims ownership of two pending applications to register on the
Principal Register the marks CONCEPT CYCLERY (standard
characters; CYCLERY disclaimed),3 and CONCEPT CYCLERY and
design (shown below; CYCLERY disclaimed),4 both for “retail
store services in the field of bicycles and bicycle parts and
accessories” in International Class 35, and “repair and
servicing of bicycles” in International Class 37 which were
refused registration under Section 2(d) based on respondent’s
registered mark (second amended petition, para. 3).

In its answer, respondent denied the salient allegations
in the petition to cancel.
Petitioner moved for leave to file a second amended
petition, to add allegations that (1) respondent abandoned the
mark CONCEPT CYCLES “in the three consecutive years since July
30, 2009” (second amended petition, para. 8); and (2) the
underlying application was void ab initio for non-use of the
mark CONCEPT CYCLES for bicycles, as of the July 30, 2009

3 Application Serial No. 85322211, filed May 16, 2011, asserting
a date of first use anywhere of “01/00/2007” and date of first
use in commerce of “10/00/2007,” construed, respectively, as
January 31, 2007 and October 31, 2007. See TMEP § 903.06
(October 2012).
Cancellation No. 92055282

3

effective filing date on which respondent filed its amendment
to allege use to seek registration on the Supplemental Register
(second amended petition, para. 9).
This case now comes before the Board for consideration of
(1) respondent’s motion for summary judgment on priority (filed
August 1, 2012); (2) petitioner’s cross-motion for summary
judgment on its claims of priority and likelihood of confusion,
as well as abandonment and non-use (filed September 5, 2012).
The motions have been fully briefed.
Preliminary pleading matters
Respondent did not file a brief in opposition to the
motion for leave to amend, and did not set forth arguments
in opposition thereto in its brief in response to
petitioner’s cross-motion for summary judgment. In view
thereof, petitioner’s motion is granted as conceded. See
Trademark Rule 2.127(a). The second amended petition to
cancel is petitioner’s operative pleading.
We note, however, that the second amended petition, as
with the prior pleadings, does not allege likelihood of
confusion pursuant to Section 2(d), but rather merely
priority. In this manner, the pleading is deficient. To
state a claim under Section 2(d), petitioner must
sufficiently allege (1) its standing; (2) that it has

4 Application Serial No. 85322124, filed May 16, 2011, asserting
a date of first use anywhere of January 31, 2007, and date of
first use in commerce of October 31, 2007. See fn 3.
Cancellation No. 92055282

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registered or previously used a mark; and (3) that
contemporaneous use of the parties’ respective marks on or
in connection with their respective goods or services would
be likely to cause confusion, mistake or to deceive
consumers. See Hornblower & Weeks, Inc. v. Hornblower &
Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB 2001).
However, inasmuch as petitioner argues in the summary
judgment motions the issue of likelihood of confusion on its
merits, and respondent did not object on the basis that the
issue was not pleaded, the Board deems the petition to be
amended by agreement of the parties to allege likelihood of
confusion. Thus, the pleading sets forth both the grounds of
priority and likelihood of confusion. See Paramount Pictures
Corp. v. White, 31 USPQ2d 1768, 1772 (TTAB 1994). See also
TBMP § 528.07(a).
Analysis
Summary judgment is appropriate where the movant shows
that there is no genuine dispute as to any material fact and
that it is entitled to judgment as a matter of law. Fed. R.
Civ. P. 56(a). A party asserting that a fact cannot be true
or is genuinely disputed must support its assertion by
either (1) citing to particular parts of materials in the
record, or (2) showing that the materials cited do not
establish the absence or presence of a genuine dispute, or
Cancellation No. 92055282

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that an adverse party cannot produce admissible evidence to
support the fact. Fed. R. Civ. P. 56(c).
With regard to each respective motion, the party
seeking judgment in its favor carries the burden of proof.
See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986).
In deciding a summary judgment motion, the function of the
Board is not to try issues of fact, but to determine if
there are any genuine disputes of material fact to be tried.
See TBMP § 528.01, and cases cited therein. Merely because
both parties have moved for summary judgment does not
necessarily mean that there are no genuine disputes of
material fact, and does not dictate that judgment should be
entered. See University Book Store v. University of
Wisconsin Board of Regents, 33 USPQ2d 1385, 1389 (TTAB
1994).
Priority and Likelihood of Confusion
For petitioner to prevail, it must prove that it has
standing,5 that it has registered or previously used its mark
as of the July 30, 2009 effective filing date of the
application from which respondent’s registration issued, and
that contemporaneous use of the parties’ respective marks on or

5 Regarding petitioner’s standing, petitioner pleaded and has
shown that its two applications have each been refused
registration under Trademark Act Section 2(d) on the basis of
respondent’s involved registration. Thus, as a threshold matter,
petitioner has proven its standing to be heard on its claims.
See, e.g., Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185, 189 (CCPA 1982).
Cancellation No. 92055282

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in connection with their respective goods or services is likely
to cause confusion, mistake or to deceive consumers. See
Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., supra.
Priority
Respondent does not contest that petitioner has priority,
and rather identifies itself as “a junior user” (motion, p.
13).
In its pleading, petitioner asserts a priority date of “at
least as early as October 2007” (second amended petition, para.
5). In order for petitioner to prevail on its Section 2(d)
claim on summary judgment, it must prove the absence of a
genuine dispute of material fact that it has a proprietary
interest in the mark, and that that interest was obtained prior
to either the filing date of respondent's application for
registration or respondent's date of first use in commerce.
See Herbko International Inc. v. Kappa Books Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto Roth & Co.,
Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA
1981); Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d
1711, 1714 (TTAB 1993).
To demonstrate priority, petitioner submits with its
motion, inter alia, the following:
1) a May 31, 2007 purchase invoice for $79,268.55 of
merchandise, indicating shipment of the merchandise to
Concept Cyclery prior to the opening of its store (Exh. B)

Cancellation No. 92055282

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2) a Register Summary Report covering January 1, 2007 through
December 31, 2007, indicating a breakdown of sales
transactions and net sales of $132,111.73 (Exh. E)

3) an advertising contract and invoice for 11 consecutive
print advertisements for petitioner’s Morgan Hill,
California store, which ran commencing in an October 2007
issue of Cycle California! Magazine, as well as a copy of
said advertisement bearing petitioner’s word and design
marks (Exh. F)

4) a Register Summary Report covering January 1, 2007 through
July 30, 2009, indicating a breakdown of sales
transactions and net sales of $1,488,585.46 (Exh. G)

5) a “Customer List (Customer Report)” covering January 1,
2007 through July 30, 2009, listing the names and
addresses of over 5000 customers as of July 30, 2009 (Exh.
H)

6) Register Summary Reports covering January 1, 2008 through
December 31, 2008, indicating net sales of $864,580.17;
covering January 1, 2009 through December 31, 2009,
indicating net sales of 806,864.27; covering January 1,
2010 through December 31, 2010, indicating net sales of
674,531.37; and covering January 1, 2011 through December
31, 2011, indicating net sales of 707,931.87 (Exh. K)

7) a printout from the Internet Archive Wayback Machine which
depicts a graph of the number of times the site
www.conceptcyclery.com was crawled, and which includes
several years, including the years 2007 and 2008, prior to
July 30, 2009 (Exh. O)

Furthermore, with its motion, respondent submitted
petitioner’s responses to respondent’s first discovery
requests, wherein Interrogatory No. 1 reads, in pertinent
part:
INTERROGATORY No. 1: Please describe in detail your
adoption and initial use of the trademark, CONCEPT
CYCLERY, in both word and logo format.

RESPONSE TO INTERROGATORY No. 1: … Petitioner’s website
at www.conceptcyclery.com was available to the public
since at least as early as August of 2007. Petitioner
Cancellation No. 92055282

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sold its first bicycle under the CONCEPT CYCLERY name
in August of 2007. Petitioner advertised in print
publications using the CONCEPT CYCLERY word mark and
design mark in September of 2007. The Concept Cyclery
retail store opened on October 20, 2007.

On this record, we find that there is no genuine dispute
that petitioner has established common law use of the mark
CONCEPT CYCLERY as a service mark for “retail store services in
the field of bicycles and bicycle parts and accessories” prior
to July 30, 2009, the effective filing date of respondent’s
underlying application.6 According to the record, respondent’s
use of its mark on its goods is limited to two sales
transactions, one in July 2009 and one in January 2012;
specifically, petitioner submitted respondent’s answer to
Interrogatory No. 6, which reads:
6. Please describe in detail the amount of sales per
month of products sold under the CONCEPT CYCLES
trademark to date, indicating the month and year of
such sales.

ANSWER: … In July 2009, Concept Cycles traded an eQuadz
cycle for custom made, hand machined aluminum cycle
transmission and hub parts. Lon Mathews, North Bend,
Washington. In January 2012, Concept Cycles sold an

6 We note respondent’s assertions that petitioner has not produced in
discovery evidence of advertising or marketing outside of the San
Francisco, California region, that petitioner’s common law rights in
its mark are limited to that geographic area, and that prior use of
a mark in a remote or different geographic region does not warrant
cancellation of a junior user’s registration. Such assertions are
in error. Moreover, to the extent that respondent’s arguments going
to the parties’ respective rights in the mark focus on the purported
geographic areas of use, it is manifest that the Board will consider
and determine issues regarding geographic limitations only in the
context of a concurrent use proceeding. See Trademark Act Sections
2(d), 17 and 18; Trademark Rules 2.99(h) and 2.133(c); TBMP §
309.03(a)(1) and Chapter 1100 generally. A party seeking a
concurrent use registration must also satisfy jurisdictional as well
as other statutory requirements.

Cancellation No. 92055282

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eQuadz on a contract layaway plan for $5500. Jodi Beth
Orliss, Cresskill, New Jersey.

In view of these findings on summary judgment,
petitioner’s cross-motion for summary judgment, with respect to
the issue of priority, is granted.
Likelihood of Confusion
Respondent asserts that petitioner cannot demonstrate
likelihood of confusion, specifically arguing that petitioner
cannot prove that CONCEPT CYCLERY is inherently distinctive for
its services, or that it had acquired such distinctiveness,
before respondent adopted its mark. It argues that “CONCEPT
CYCLERY cannot be considered to be inherently distinctive for
bicycles or bicycle related services” (motion, p. 11). In
support thereof, it sets forth, inter alia, a list of marks
which contain the term CONCEPT of CONCEPTS, and their
accompanying Supplemental Registration numbers (respondent’s
reply brief, p. 6-7). Respondent also argues that petitioner
has not demonstrated that the mark CONCEPT CYCLERY has acquired
distinctiveness, arguing that petitioner has not submitted any
surveys or affidavits related to secondary meaning
(respondent’s reply brief, p. 6).
Petitioner maintains that it is not required to show
acquired distinctiveness, but that if it is so required, its
marks are at least suggestive of its services inasmuch as it
“is not selling and servicing what could be called ‘concept’
bicycles” (petitioner’s reply, p. 8), and it has acquired
Cancellation No. 92055282

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rights in CONCEPT CYCLERY inasmuch as this wording is also its
trade name used to identify itself to the public. It further
states that the third-party registrations respondent lists are
not the same as petitioner’s mark and do not involve
petitioner’s services.
Regarding the factors which the Board applies that bear on
the likelihood of confusion analysis, as defined in In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“du Pont”), respondent does not address these
factors in either its brief on motion or its reply brief.
For its part, petitioner argues, in cursory fashion, that
four of the du Pont factors weigh in its favor: the similarity
of the marks, the similarity of the goods and services, the
trade channels through which the goods and services travel, and
the conditions under which and buyers to whom sales are made.
On this record, there is a genuine dispute with respect to
the factual issue of likelihood of confusion. To prevail on
likelihood of confusion based on ownership of common-law
rights, the mark must be distinctive, inherently or otherwise.
Giersch v. Scripps Networks Inc, 90 USPQ2d 1020, 1023 (TTAB
2009), citing Otto Roth & Co., v. Universal Foods Corp., 209
USPQ at 45 (Board must require opposer to prove secondary
meaning in its merely descriptive or deceptively misdescriptive
mark before applying the test of likelihood of confusion as to
source). See also Herbko Int’l, Inc. v. Kappa Books, Inc., 64
Cancellation No. 92055282

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USPQ2d at 1378; Towers v. Advent Software Inc., 913 F.2d 942,
16 USPQ 1039, 1042 (Fed. Cir. 1990) (Board did not err in
requiring petitioner to show that his descriptive term had
acquired secondary meaning before respondent adopted its mark).
On the record before us, there is a genuine dispute with
respect to whether petitioner’s asserted common law mark
CONCEPT CYCLERY is inherently distinctive, or has acquired
distinctiveness. Respondent has raised the issue of the
distinctiveness of petitioner’s mark, at a minimum, by setting
forth arguments directed to the distinctiveness of the term
CONCEPT in the context of its appearance in third-party
registrations, and its registration on the Supplemental
Register. Cf. Giersch v. Scripps Networks Inc., 90 USPQ2d at
1023.
Moreover, notwithstanding that the likelihood of confusion
analysis will involve comparing the marks in their entireties,
we note that respondent’s mark was found to only be registrable
on the Supplemental Register. Inasmuch as the non-disclaimed
word element in both parties’ marks is identical – CONCEPT – in
assessing the similarity of the marks, the weight to be given
this term in creating a commercial impression in the
marketplace for the goods and services is at issue. See In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985).
Cancellation No. 92055282

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Based on these findings, the issue of whether CONCEPT
CYCLERY has inherent or acquired distinctiveness in connection
with petitioner’s services remains in genuine dispute. In view
thereof, the parties’ cross-motions with respect to likelihood
of confusion are denied.
Petitioner’s motion: abandonment; non-use
Trademark Act Section 45, 15 U.S.C. § 1127, defines
“abandonment” of a mark as follows:
When its use has been discontinued with intent not
to resume such use. Intent not to resume may be
inferred from circumstances. Nonuse for 3
consecutive years shall be prima facie evidence of
abandonment. “Use” of a mark means the bona fide
use of such mark made in the ordinary course of
trade, and not made merely to reserve a right in a
mark.

To prevail on its claim of abandonment, petitioner must
demonstrate that there is no genuine dispute with respect to
its allegation that respondent abandoned use of CONCEPT
CYCLES as a mark for “bicycles” in the three consecutive
years since July 30, 2009, such as would establish a prima
facie case and rebuttable presumption that respondent has
abandoned the mark without intent to resume use. See Crash
Dummy Movie LLC v. Mattel Inc., 601 F.3d 1387, 94 USPQ2d
1315, 1316 (Fed. Cir. 2010); On-line Careline Inc. v.
America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476
(Fed. Cir. 2000); Cerveceria Centroamericana S.A. v.
Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309
(Fed. Cir. 1989).
Cancellation No. 92055282

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To prevail on its claim of non-use as of the effective
filing date of respondent’s underlying application,
petitioner must prove that on July 30, 2009, respondent was
not using CONCEPT CYCLES as a mark for “bicycles.”
With respect to both claims, petitioner’s core argument
is that the only products on which respondent has used the
mark are not bicycles, but rather are four-wheeled cycles
known as “quadracycles” that do not fall under the
definition of, are not recognized as, and are not commonly
referred to as “bicycles.” It relies on, inter alia,
definitions of “bicycle” taken from the Free Merriam-Webster
Online Dictionary and Wikipedia,7 respondent’s answers to
Interrogatory Nos. 4 and 5 wherein respondent describes all
products which have been offered for sale or sold as of July
30, 2009, and following that date, under its mark (Exh. I),
as well as printouts from respondent’s website identifying
and depicting the goods as “four-wheeled pedal cycles” (Exh.
J).
In opposition, respondent argues that the definition of
“bicycles” on which petitioner relies is narrow and is not
in accord with consumer perception of and usage of that
term. It argues that “bicycle” is a term that “encompasses

7 The definitions that petitioner offers are not submitted as
printouts from the original source, or under declaration or
affidavit, but rather are merely set forth in its brief.
Cancellation No. 92055282

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four-wheeled bikes” (brief, p. 8), and offers the affidavit
of Sandy Pomeroy, its Managing Member, which introduces (1)
a Wikipedia article which, inter alia, identifies a four-
wheeled human powered land vehicles as a “four-wheeled
bicycle” and states that “[T]here is no consensus amongst
manufacturers of four-wheeled, human powered vehicles as to
what this class of vehicle should be called;” and (2)
various web pages to show that manufacturers and consumers
use “bicycle,” “four wheel bike,” “4-wheel bicycles” and “4-
wheel pedal bike” to describe products of the type that
respondent offers under the mark.
On this record, there remains a genuine dispute with
respect to two key issues of fact, namely, (1) whether
respondent was using the CONCEPT CYCLES as a mark on
“bicycles” as of the July 30, 2009 effective filing date of
its application (relevant to petitioner’s non-use claim),
and (2) whether respondent so used its mark in the three
consecutive years since July 30, 2009 (relevant to
petitioner’s abandonment claim).
Accordingly, petitioner’s cross-motion for summary
judgment with respect to abandonment and non-use is denied.
Summary
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Petitioner’s cross-motion for summary judgment, with
respect to the issue of priority, is granted. Respondent’s
motion and petitioner’s cross-motion with respect to
likelihood of confusion are denied. Petitioner’s cross-
motion for summary judgment with respect to abandonment and
non-use is denied.
Accelerated Case Resolution
This proceeding appears to be suitable for resolution
via the Board’s Accelerated Case Resolution (“ACR”)
procedure. The parties are encouraged to give serious
consideration to stipulating to resolution of the issues of
likelihood of confusion, abandonment and non-use on the
current record, as supplemented by further briefing to take
place by an agreed-upon date certain, not to be beyond the
deadline as reset (indicated below) for petitioner to serve
its pretrial disclosures. Pursuing resolution by ACR will
require the parties to stipulate, at a minimum, (1) that the
Board will treat their cross-motions for summary judgment
and evidence, and any supplementation thereto filed within
the agreed-upon period, as the final record and briefs
herein; (2) to forego trial; and (3) that the Board may make
determinations of genuine disputes of material fact on the
basis of the final record, and may issue a final ruling
based thereon in accordance with the evidentiary burden at
Cancellation No. 92055282

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trial, that is, by a preponderance of the evidence. For
additional and detailed information regarding ACR, the
parties are referred to TBMP § 528.05(a)(2), as well as the
following web page, under the heading “ACR & ADR…”:
http://www.uspto.gov/trademarks/process/appeal/index.jsp
If the parties stipulate to determination by ACR, they
are directed to advise the Board by filing a notice to that
effect prior to the deadline for petitioner to serve its
pretrial disclosures, as reset below, and concurrently
phoning the assigned interlocutory attorney (571-272-9183).8
Schedule
Proceedings are resumed. Remaining disclosure,
discovery and trial dates are reset as follows:
Expert Disclosures Due 3/15/2013
Discovery Closes 4/14/2013
Plaintiff's Pretrial
Disclosures due 5/29/2013
Plaintiff's 30-day Trial Period
Ends 7/13/2013
Defendant's Pretrial
Disclosures due 7/28/2013

8 If the parties do not opt to have the Board decide the
remaining factual issues by ACR, they are advised that the
evidence submitted in connection with the motions for summary
judgment is of record only for consideration of those motions.
To be considered at final hearing, any such evidence must be
properly introduced in evidence during the appropriate trial
period. See, e.g., Drive Trademark Holdings LP v. Inofin, 83
USPQ2d 1433, 1438 n.14 (TTAB 2007); Levi Strauss & Co. v. R.
Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).
The fact that we have identified certain issues in dispute
should not be construed as a finding that these are necessarily
the only issues which remain for trial.

Cancellation No. 92055282

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Defendant's 30-day Trial Period
Ends 9/11/2013
Plaintiff's Rebuttal
Disclosures due 9/26/2013
Plaintiff's 15-day Rebuttal
Period Ends 10/26/2013

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule
2.l25. Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.