Drive Trademark Holdings LPv.Inofin and Mark Walsh

Trademark Trial and Appeal Board

Feb 22, 2007

No. 91168402 (T.T.A.B. Feb. 22, 2007)

Butler/Gilbert Mailed: February 22, 2007

Opposition No. 91168402

Drive Trademark Holdings LP
substituted for Drive
Financial Services, LP1

v.

Inofin and Mark Walsh2

Before Seeherman, Bucher and Cataldo, Administrative Trademark
Judges.

By the Board:
Mark Walsh, as assignee of Inofin, (“applicant”) seeks to
register the mark DRIVEUSA for “financing services namely; auto
loans, vehicle loans, assisting borrower in applying for loans,
preparing and originating auto loan forms”, in Class 36, and for

1 Drive Trademark Holdings LP is hereby substituted for Drive Financial
Services, LP in view of the assignment of the pleaded registrations to
Drive Trademark Holdings LP. The assignment was recorded on June 7,
2005 at Reel/Frame 3098/0027, prior to the filing date of the notice
of opposition. See TBMP §512.01 (2d ed. rev. 2004). The caption of
this proceeding is, accordingly, amended to reflect the substitution.

2 Applicant’s motion, filed February 26, 2006, to join Mark Walsh as a
defendant to this proceeding is granted in view of the assignment of
Serial No. 78445657, the subject application. The assignment was
recorded on February 22, 2006 (a date subsequent to the commencement
of this proceeding) at Reel/Frame 3252/0001. See TBMP §512.01 (2d ed.
rev. 2004). The caption of this proceeding is, accordingly, amended
to reflect the joinder.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91168402
2
various other automobile related services in Classes 35, 37 and
39.3
Drive Trademark Holdings LP (“opposer”) brought this
opposition solely with respect to Class 36 of the application
alleging, in its notice of opposition, priority of use and
likelihood of confusion with its previously used and registered
marks D DRIVE and design for “financial services, namely,
purchasing loans from automobile dealerships”4; D DRIVE FINANCIAL
SERVICES and design for “financial services, namely, purchasing
loans from automobile dealerships”5; and D and design for
“financial services, namely, purchasing automobile loans from
automobile dealerships.”6 Opposer also alleges that its marks
“have become famous identifiers of opposer and its products and
services” by virtue of opposer’s “substantial, continuous and
exclusive use” of its marks for six years.
Applicant, in his answer, has admitted that opposer is the
owner of record of the referenced registrations and has denied
the remaining essential allegations of the notice of opposition.
Discovery closed on July 23, 2006. This case now comes up
for consideration of (1) applicant’s motion, filed February 26,
2006, to amend his recitation of services; (2) applicant’s

3 Application Serial No. 78445657, filed July 2, 2004 and reciting July
27, 2004 as the date of first use anywhere and the date of first use
of the mark in commerce.

4 Registration No. 2503943, issued on November 6, 2001.

5 Registration No. 2514867, issued on December 4, 2001.

6 Registration No. 2503946, issued on November 6, 2001.
Opposition No. 91168402
3
motion, filed February 26, 2006, to divide the Class 36 services
from the remaining services in the application; (3) opposer’s
motion, filed March 22, 2006, to amend its notice of opposition
to oppose applicant’s application in Classes 35, 37 and 39; (4)
applicant’s motion, filed September 20, 2006, for summary
judgment in his favor on the ground that there is no likelihood
of confusion between the parties’ respective marks; and (5)
opposer’s cross-motion, filed September 21, 2006, for summary
judgment in its favor on the ground of likelihood of confusion.
We first address the parties’ proposed amendments.
Applicant’s Motion to Amend the Identification
Applicant seeks to amend his recitation of services in Class
36 from “financing services namely; auto loans, vehicle loans,
assisting borrower in applying for loans, preparing and
originating auto loan forms” to “financing services namely,
assisting borrower in applying for loans namely, assisting the
automobile consumer with preparing auto loan forms.” In support
of his motion, applicant argues that this amendment should be
allowed because the amended recitation of services is more
limited than the original recitation of services.
In response, opposer argues that it does not consent to the
proposed amendment; that the proposed amendment is one in
substance; that opposer has a right to a determination of the
issues based on the recitation of services as published; that
applicant has not consented to entry of a judgment on the
question of likelihood of confusion between opposer’s mark and
Opposition No. 91168402
4
applicant’s mark with regard to the broader recitation of
services; and that the amendment is requested solely to defeat
the opposition. Opposer contends that applicant has not
attempted to make a prima facie showing that the proposed
amendment changes the nature and character of applicant’s
services or restricts their channels of trade and purchasers such
that a substantially different issue is presented for
determination in this proceeding. Opposer argues that, should
applicant attempt to make such a showing, applicant would not be
successful because likelihood of confusion exists between the
parties’ marks even if the amendment is allowed.
An application involved in an opposition proceeding may not
be amended in substance except with the consent of the other
party and the approval of the Board, or except upon motion.
Trademark Rule 2.133(a).7
While the Board will generally defer determination of a
timely filed (i.e., pre-trial) unconsented motion to amend in
substance until final decision, or until the case is decided upon
summary judgment, in practice, an acceptable amendment to the
identification of goods or recitation of services often may be
permitted, even where an opposer objects, if the proposed
amendment serves to limit the identification of goods or
recitation of services and if the applicant consents to the entry
of judgment on the question of likelihood of confusion between

7 Certain express exceptions, not present here, exist with respect to
Trademark Act §66 applications (Madrid Protocol).
Opposition No. 91168402
5
opposer’s and applicant’s marks with respect to the broader
identification of goods or recitation of services. See Giant
Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 963 (TTAB
1986); International Harvester Company v. International Telephone
and Telegraph Corporation, 208 USPQ 940, 941 (TTAB 1980); and
TBMP §514.03 (2d ed. rev. 2004). If the applicant wishes to
avoid the possibility of a res judicata effect of the entry of
judgment, an applicant seeking to amend its identification of
goods or recitation of services must set forth adequate reasons
for the amendment. See Giant Food, Inc. v. Standard Terry Mills,
Inc., supra; and International Harvester Company v. International
Telephone and Telegraph Corporation, supra. That is, an
applicant must make a prima facie showing that the proposed
amendment serves to change the nature and character of the goods
and services or to restrict their channels of trade and customers
in such a manner that a substantially different issue for trial
has been introduced from the issue presented by the opposition
against the application based on the original identification of
goods and services. Id. Further, where required to support the
basis of the application, any specimens of record must support
the goods or services remaining after the amendment is entered,
and the applicant must introduce evidence during its testimony
period to prove use of its mark on those remaining goods or
services prior to the relevant date as determined by the basis of
the application. In the case of a use-based application, as
here, the relevant date is the filing date of such application.
Opposition No. 91168402
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Id. See also Trademark Act §1(a). Finally, an unconsented
motion to amend an application ordinarily should be made prior to
trial, in order to give the other party or parties fair notice
thereof. See International Harvester Company v. International
Telephone and Telegraph Corporation, supra.
In this case, the proposed amendment is timely, having been
brought prior to trial, and is limiting in nature as permitted by
Trademark Rule 2.71(a). However, although applicant states in
his motion that his originally filed specimens support the
proposed amendment to the recitation of services, such is not the
case. Applicant’s specimens of use support only the deleted
services, and not the remaining services of “financing services,
namely, assisting borrower in applying for loans namely,
assisting the automobile consumer with preparing auto loan
forms.” Moreover, applicant has not consented to entry of
judgment with respect to opposer’s claim of likelihood of
confusion between opposer’s marks and applicant’s mark as to the
broader recitation of services.8 Thus, the circumstances
presented here do not allow the Board either to exercise its
discretion to enter the amendment now or to defer determination
of the proposed amendment until final decision.

8 We also note that applicant has not made any showing that its
proposed amendment changes the nature and character of the services or
restricts their trade channels or customers in such a way as to
present a substantially different issue. Thus, if a judgment is
entered with respect to the proposed deleted services, and no such
showing is made, the judgment could have a preclusive effect.

Opposition No. 91168402
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Accordingly, applicant’s motion to amend the recitation of
services in Class 36 is denied. See also J. Thomas McCarthy, 3
McCarthy on Trademarks and Unfair Competition §20:24 (4th ed.
2006); and TBMP §514.03 (2d ed. rev. 2004).
We note that if applicant were to file a timely, renewed
motion to amend his recitation, with supporting specimens,
applicant would have to agree to accept judgment with respect to
the services deleted, or the consideration of any renewed motion
would be deferred until after trial. In that event, opposer will
be on notice that it must prepare for trial as to both the
recitation as it currently reads and the recitation as proposed
in the renewed motion.
Opposer’s Motion to Amend Opposition/Applicant’s Motion to
Divide

By his motion to divide, applicant requests that, because
opposer opposed only Class 36 of the application, the remaining
Classes 35, 37 and 39 be divided from the application and be
allowed to proceed to issue. In response, opposer argues that
applicant’s motion to divide should be denied in view of
opposer’s motion to amend its notice of opposition to include
Classes 35, 37 and 39. Opposer argues that its proposed
amendment is not prejudicial to applicant’s rights because
discovery has not yet been taken by either party; that its motion
was timely filed in response to applicant’s motion to divide,
which gave opposer notice of the need to amend; and that such an
amendment is in the interest of judicial economy because, if the
Opposition No. 91168402
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application is allowed to mature into a registration, opposer
will be forced to file a separate petition to cancel that
registration. In response, applicant argues that opposer should
not be permitted to amend its notice of opposition to include the
previously unopposed classes because the time period for filing
an opposition, or an extension of time for filing an opposition,
has closed, making opposer’s motion untimely. Applicant also
argues that opposer is “estopped by acquiescence” from amending
the notice of opposition because it deliberately chose to oppose
only one of the four classes in the published application.
After the close of the time period for filing an opposition,
including any extension of time for filing an opposition, an
opposition may not be amended to add to the goods or services
opposed. Trademark Rule 2.107. In view thereof, opposer’s
motion to amend its pleading to oppose the application in Classes
35, 37 and 39 is hereby denied and the opposition will go forward
as to Class 36 only.9 Inasmuch as the opposition is limited to
only Class 36, and because applicant agreed to pay the fee
required for division of an application, applicant’s motion to
divide out Classes 35, 37 and 39 is hereby granted. TBMP §516

9 We note that, where a party cannot commence an opposition proceeding,
its remedy may lie with the filing of a petition to cancel after the
subject application has registered. See, for example, TBMP §306.04
(2d ed. rev. 2004) (“Late Opposition”).

Opposition No. 91168402
9
(2d ed. rev. 2004). Notification will be sent to the
ITU/Divisional Unit for processing of the divisional request.10
Cross-motions for Summary Judgment
We now turn to the parties’ cross-motions for summary
judgment. 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 judgment as a matter
of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct.
2548 (1986). Therefore, although here there are cross-motions
for summary judgment, the moving party in each of the pending
motions has the burden as to its own motion. Additionally, the
evidence must be viewed in a light favorable to the non-movant in
each party’s pending motion, and all justifiable inferences are
to be drawn in the non-movant’s favor. See Opryland USA, Inc. v.
Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471
(Fed. Cir. 1993).
The mere fact that cross-motions for summary judgment on an
issue have been filed does not necessarily mean that there are no
genuine issues of material fact, and that trial is unnecessary.

10 After the application has been divided, the new application created
by the division will be forwarded to issue in Classes 35, 37 and 39
and the original application, in Class 36, will remain the subject of
this opposition proceeding before the Board. TBMP §516 (2d ed. rev.
2004).

Opposition No. 91168402
10
See University Book Store v. University of Wisconsin Board of
Regents, 33 USPQ2d 1385, 1389 (TTAB 1994); and TBMP §528.01 (2d
ed. rev. 2004). See also Wright, Miller & Kane, 10A Fed. Prac. &
Proc. Civ.3d §2720 (2006).
We first address some preliminary matters. To the extent it
is applicant’s position that opposer’s pleaded registered marks
are descriptive within the meaning of Trademark Act §2(e)(1),
such arguments could only be considered if applicant had raised a
timely counterclaim or separate petition to cancel the pleaded
registrations. Trademark Rule 2.106(b)(2)(ii). See also TBMP
§313.01 (2d ed. rev. 2004). However, to the extent applicant’s
position goes to the strength of opposer’s marks in view of use
of the term DRIVE by others, the Board will consider such
argument and evidence submitted in support thereof on summary
judgment.
Opposer, in its motion for summary judgment, references two
additional registrations in support of its claim of likelihood of
confusion. Opposer did not plead these registrations in its
notice of opposition, and asserted them for the first time in its
motion for summary judgment.11 Applicant has objected to our
consideration of these registrations on the basis that they were
not pleaded in opposer’s notice of opposition. This objection is

11 Registration No. 3,081,262 for the mark DRIVE and Registration No.
3,081,414 for the mark DRIVE FINANCIAL SERVICES, both for “financial
services, namely, originating loans, purchasing loans and servicing
auto loans.”

Opposition No. 91168402
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sustained. See Fed. R. Civ. P. 56(a) and 56(b;) and TBMP
§528.07(a) (2d ed. rev. 2004). However, it is noted that these
registrations had not issued at the time the notice of opposition
was filed. Therefore, although they have not been considered in
connection with opposer’s current motion for summary judgment, as
indicated below, opposer is granted leave to amend the notice of
opposition to include them.
After reviewing the arguments and supporting papers of the
parties,12 we conclude that disposition of this matter by summary
judgment is not appropriate because, at a minimum, there exist
genuine issues of material fact as to the relatedness of the
parties’ services; the commercial impressions of the parties’
marks; the fame and strength of opposer’s pleaded marks; the
customers for the services; and the channels of trade.13 In
connection with the issue of the strength of opposer’s marks, we
note that applicant has submitted printouts from the Trademark
Electronic Search System (TESS) showing registrations of marks
containing the term “DRIVE” in combination with other matter for

12 The Board has not considered applicant’s “estoppel” argument based
upon opposer’s settlement agreement with a third party. Estoppel is
an affirmative defense which was not pled and, therefore, will not be
considered. See TBMP §528.07 (2d ed. rev. 2004). However, in any
event, opposer’s settlement agreement with a third party is not
relevant to the instant dispute. As discussed earlier, the Board has
also not considered opposer’s Registration Nos. 3,081,262 and
3,081,414, which were not properly pled.

13 The fact that we have identified and discussed only a few genuine
issues of material fact as sufficient bases for denying the motions
for summary judgment should not be construed as a finding that these
are necessarily the only issues which remain for trial.

Opposition No. 91168402
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services related to automobile financing and sales. Opposer
contends that these printouts are not probative of the matter at
hand. While it is true that these registrations do not prove
third-party trademark use of the marks, the registrations are
sufficient to raise a genuine issue of material fact to the
extent of use by third parties of marks containing the term
“DRIVE” in combination with other matter for similar services.
See Lloyd’s Food Products, Inc. v. Eli’s Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993).
Applicant’s motion for summary judgment is denied and
opposer’s cross-motion for summary judgment is denied.14
Scheduling
As noted, supra, the unpleaded registrations asserted by
opposer in its motion for summary judgment issued after the
notice of opposition was filed. Opposer is allowed until TWENTY
DAYS from the mailing date of this order to amend its notice of
opposition to plead ownership of Registration Nos. 3081262 and
3081414, if it so desires; and applicant is allowed until FORTY
DAYS from the mailing date of this order in which to file an
answer if an amended notice of opposition is served.

14 The parties should note that the evidence submitted in connection
with their 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 periods. See Levi Strauss & Co. v. R. Josephs
Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); Pet Inc. v. Bassetti, 219
USPQ 911 (TTAB 1983); and American Meat Institute v. Horace W.
Longacre, Inc., 211 USPQ 712 (TTAB 1981).

Opposition No. 91168402
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Proceedings are otherwise suspended. Upon resumption,
appropriate dates will be set.
***