Ecolab Inc.v.Cyclo3pss

Trademark Trial and Appeal Board

Nov 18, 2002

No. 91124462 (T.T.A.B. Nov. 18, 2002)

BAC
Mailed: November 18, 2002
Opposition No. 124,462
Ecolab Inc.
v.
Cyclo3pss Corporation
Before Hanak, Chapman and Rogers, Administrative Trademark
Judges.
By the Board.
Cyclo3pss Corporation (a Delaware corporation located
in Utah) has filed an application to register on the
Principal Register the mark ECO-WASH for “commercial laundry
machines” in International Class 7, based on applicant’s
claimed date of first use and first use in commerce of
February 3, 1998.1
Ecolab Inc. (a Delaware corporation located in
Minnesota) has opposed registration of applicant’s mark,
alleging that opposer is the leading global developer and
marketer of premium cleaning, sanitizing, maintenance and
1 Application Serial No. 75/898,601 was filed on January 20,
2000.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513 THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 124462
2
repair products and services for a variety of markets,
including hospitality, institutional and industrial markets;
that a significant portion of opposer’s business is directed
to providing laundry-related goods and services to, inter
alia, hotels, restaurants, healthcare facilities, hospitals,
food and beverage processors and commercial laundries; that
in addition to laundry-related goods and services, opposer
provides, inter alia, a complete line of cleaning and
sanitizing products, foodservice products and safety
training, and pest elimination services; that opposer
adopted the corporate and trade name ECOLAB INC. in 1986 and
it has offered virtually all of its various goods and
services under the name and mark ECOLAB since 1986; that
opposer, through its related companies and predecessors-in-
interest, has continuously provided a wide variety of goods
and services under its family of “ECO-based” marks,
commencing with use of ECO-VAC used on detergent dispensers
in November 1964; that virtually all of opposer’s goods and
services carry its famous house mark ECOLAB; that opposer is
the owner of numerous federal registrations for marks
containing the ECO formative or prefix (31 were listed in
the original notice of opposition); that opposer also owns
common law rights in the mark ECO-CLEAN, used since January
1995 on a line of cleaning products for use in the
institutional and hospitality industries, and the marks ECO-
Opposition No. 124462
3
STAR, ECOJET and ECO-PORT, all used in connection with
opposer’s laundry business; that opposer’s family of “ECO”
marks is distinctive, well-known and famous; that the term
“WASH” contained within applicant’s mark is descriptive or
generic for commercial laundry machines; that applicant’s
mark, when used on its goods, so resembles opposer’s marks
as to be likely to cause confusion, mistake, or deception;
and that applicant’s mark ECO-WASH is likely to cause
dilution of the distinctive quality of opposer’s famous
ECOLAB house mark and the other marks in opposer’s family of
“ECO” marks.
In its answer, applicant denies the salient allegations
of the notice of opposition, and raises the affirmative
defenses of laches and estoppel.
In the trial order mailed by the Board on November 9,
2001, discovery was set to close on May 28, 2002 and
opposer’s testimony period was set to close on August 26,
2002.
This case now comes up on the following motions:
(1) applicant’s motion for summary
judgment (filed April 17, 2002—via
certificate of mailing);
(2) applicant’s motion to quash
opposer’s April 17, 2002 notices of
discovery depositions for May 7 and
8, 2002 (filed April 27, 2002—via
certificate of mailing);
(3) opposer’s motion for leave to amend
its notice of opposition (filed May
Opposition No. 124462
4
22, 2002-via certificate of
mailing); and
(4) opposer’s motion for summary
judgment (filed May 22, 2002-via
certificate of mailing).
About one month prior to the scheduled close of
discovery in this case, applicant moved for summary
judgment2 contending that the prefix “ECO” in opposer’s
asserted marks has a common meaning in the English language
and is not distinctive; that there are numerous third-party
registrations including “ECO” owned by parties other than
opposer; that opposer’s alleged family of marks cannot exist
as a matter of law; and that there is no likelihood of
confusion between applicant’s mark and opposer’s alleged
family of marks.
In response, opposer filed (i) a brief in opposition to
applicant’s motion for summary judgment specifically noting
in footnote 3 (p. 24) that the Board can grant summary
2 In its motion for summary judgment applicant requested that the
Board take judicial notice of the materials applicant submitted
as Exhibits A-S (dictionary definitions and printouts from the
USPTO’s Trademark Electronic Search System--TESS). Applicant’s
requests for judicial notice were superfluous and unnecessary
because applicant had actually submitted the materials as
exhibits in support of its motion for summary judgment. See TBMP
§528.05. Because the materials were physically present in the
record, there is no need to take judicial notice thereof. [Of
course, evidence submitted in support of and/or in opposition to
a summary judgment motion is of record only for purposes of the
summary judgment motion. See TBMP §528.05(a).]
For applicant’s information, the Board generally will take
judicial notice of dictionary definitions (see TBMP §712), but we
will not take judicial notice of registrations or other records
of the USPTO. See Wright Line Inc. v. Data Safe Services
Corporation, 229 USPQ 769, footnote 5 (TTAB 1985).
Opposition No. 124462
5
judgment on likelihood of confusion and dilution to opposer
without a cross-motion from opposer; (ii) the above-
mentioned motion to amend the notice of opposition by more
specifically setting forth additional common law “ECO”
marks, clarifying the registered marks asserted, and adding
the ground that applicant’s application is void ab initio
because applicant has not used the mark ECO-WASH on the
identified goods -- “commercial laundry machines”; and (iii)
the above-mentioned motion for summary judgment on the
ground that applicant’s application is void ab initio for
failure to use the mark on the identified goods.
The Board has not received any further papers in this
case from either party. Thus, only applicant’s motion for
summary judgment is contested; and applicant’s motion to
quash3, opposer’s motion to amend the notice of opposition,
and opposer’s motion for summary judgment on the added
ground are each uncontested.
In arguing against applicant’s motion for summary
judgment opposer contends that there are genuine issues of
material fact as to the existence of opposer’s family of
“ECO” formative marks, the similarities/dissimilarities
3 Applicant’s motion to quash two discovery depositions is
granted as conceded by opposer. See Trademark Rule 2.127(a).
Moreover, the Board presumes that applicant’s motion for summary
judgment and opposer’s notice of the discovery depositions
crossed in the mail; and that the noticed discovery depositions
of applicant did not take place.
Opposition No. 124462
6
between each of opposer’s various “ECO” marks and
applicant’s mark ECO-WASH, the extent of overlap or
relatedness of the goods and services, the level of
sophistication of the respective purchasers and users, the
fame of opposer’s various “ECO” marks, the number and nature
of third-party uses of similar marks for similar goods or
services, and applicant’s intent in adopting the mark ECO-
WASH, all of which preclude entry of summary judgment on the
issue of likelihood of confusion. Opposer further contends
that applicant has not proven as a matter of law either (i)
that opposer’s “ECO” marks are not famous and/or (ii) that
registration of applicant’s mark would not cause dilution of
opposer’s marks.
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). The party moving
for summary judgment has the initial burden of demonstrating
the absence of any genuine issue of material fact. See
Celotex Corp. v. Catrett, 477 U.S. 317 (1986); and Sweats
Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4
USPQ2d 1793 (Fed. Cir. 1987). A factual dispute is genuine,
if, on the evidence of record, a reasonable finder of fact
could resolve the matter in favor of the non-moving party.
See Opryland USA Inc. v. Great American Music Show Inc., 970
Opposition No. 124462
7
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); and Olde Tyme
Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542
(Fed. Cir. 1992). The evidence must be viewed in a light
most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor. See
Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993); and Opryland USA, supra.
Based on the record before us, we find that there are
genuine issues of material fact, (including, but not limited
to, those listed above as part of opposer’s argument) and
that applicant is not entitled to judgment as a matter of
law on the issues of likelihood of confusion and/or
dilution. Accordingly, applicant’s motion for summary
judgment is denied. Further, we decline to enter summary
judgment in the non-moving party’s (opposer’s) favor on
either of the issues of likelihood of confusion or dilution.
We turn next to opposer’s motion for leave to amend the
notice of opposition. The motion is granted as conceded
pursuant to Trademark Rule 2.127(a). See also, Fed. R. Civ.
P. 15(a); and TBMP §507.02. Opposer’s amended notice of
opposition (filed May 22, 2002—via certificate of mailing)
is accepted, and the amended pleading includes a claim that
applicant’s application is void ab initio.
Finally, we turn to opposer’s motion for summary
judgment. Opposer contends that applicant’s application is
Opposition No. 124462
8
void ab initio because applicant has not used the mark ECO-
WASH on its identified goods (“commercial laundry machines”)
prior to the filing date of the application; that applicant
uses the mark ECO-WASH in connection with an ozone
generation and injection system which is placed next to, and
is for use with, a commercial laundry machine; that
applicant does not manufacture, market or sell “commercial
laundry machines”; that the documents and information
supplied to opposer by applicant in response to opposer’s
discovery requests demonstrate that applicant’s only use of
the mark ECO-WASH in commerce, if at all, is on an ozone
generation and injection system, a separate item from the
commercial laundry machine with which it is used; and that
because applicant has not used the mark on the identified
goods, the application is void ab initio.
As noted above, applicant filed no response to
opposer’s motion for summary judgment. Thus, pursuant to
Trademark Rule 2.127(a), applicant has conceded this motion.
Regarding applications held void ab initio based on the
applicant’s failure to use the mark on the identified goods,
see, e.g., E. I. du Pont de Nemours and Co. v. Sunlyra
International Inc., 35 USPQ2d 1787, 1791 (TTAB 1995); and
CPC International Inc. v. Skippy Inc., 3 USPQ2d 1456, 1460
(TTAB 1987).
Opposition No. 124462
9
Accordingly, opposer’s motion for summary judgment is
granted; summary judgment is entered against applicant on
the ground that applicant’s application is void ab initio;
the opposition is sustained only on the ground that
applicant’s application is void ab initio; and registration
to applicant is refused.