Evory Technologies, Inc.v.Avia International

Trademark Trial and Appeal Board

Jan 27, 2012

No. 91193201 (T.T.A.B. Jan. 27, 2012)

al Mailed: January 27, 2012 Opposition No. 91193201 Evory Technologies, Inc. v. Avia International Before Grendel, Bergsman, and Shaw, Administrative Trademark Judges. By the Board: Avia International (“applicant”) seeks to register the mark AVIA for “lubricants for industrial machinery; engine oils; fuel; automobile lubricants; cutting oil for industrial metal working, cutting oils, industrial oils, mould releasing oils, oil for use in the preservation of masonry, penetrating oil” in International Class 4.1 Applicant’s application is based on an assertion of a bona fide intent to use in commerce under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b). Registration has been opposed by Evory Technologies, Inc. (“opposer”). As grounds for opposition, opposer asserts dilution and a likelihood UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 2 of confusion exists between applicant’s mark and its registered marks for AVIA for electric generators and various power-operated machine tools and accessories in International Class 72 and AVIA for various hand tools and hand operated implements in International Class 8.3 Applicant has denied the salient allegations of the notice of opposition. Applicant has also filed a counterclaim to cancel opposer’s pleaded registrations on the ground of priority and likelihood of confusion. Applicant asserts that it has “used, promoted, and advertised” its AVIA mark in commerce “since at least as early as 1998, long prior to Opposer’s claimed date of first use of December 31, 2001.”4 1 Application Serial No. 77644895, filed January 7, 2009. 2 U.S. Registration No. 2969863, filed June 18, 2003, issued on July 19, 2005, alleging January 1, 1985 as a date of first use and October 24, 1995 as a date of first use in commerce. We note that the counterclaim to cancel was filed on March 8, 2010. Office records show that a Section 8 affidavit was accepted and a Section 15 affidavit was acknowledged on February 28, 2011. Inasmuch as such affidavit must include a statement that no proceeding involving the registrant’s rights is pending, and this registration is the subject of a counterclaim in this proceeding, such affidavit should not have been acknowledged. A section 15 affidavit has no effect in proceedings before the Board, as incontestability relates to a party’s right to use a mark. Opposer is directed to contact the Office of the Commissioner for Trademarks for appropriate action in this regard. 3 U.S. Registration No. 3003615, filed September 21, 2003, issued on October 4, 2005, alleging December 31, 2001, as a date of first use and first use in commerce. 4 We note that applicant continually indicates that opposer’s claimed date of first use is December 31, 2001. This is true for opposer’s U.S. Registration No. 3003615 only. For opposer’s U.S. Registration No. 2969863, opposer claims January 1, 1985 as a 3 This case now comes up for consideration of opposer’s motion (filed May 28, 2011) to dismiss applicant’s counterclaim on the ground that the counterclaim is moot because “Applicant has no reason to claim its priority to Opposer.”5 To the extent that opposer filed an answer to the counterclaim and trial has not begun and because the parties appear to have treated the motion as one for summary judgment, we construe opposer’s motion as one for partial summary judgment on the issue of priority. See TBMP Section 528.02 (3d ed. 2011). We note that applicant has filed a brief in response specifically stating that it believes that opposer is seeking to have the counterclaim dismissed on the basis of summary judgment, and that applicant submitted evidence in support of its position.6 Opposer did not file a brief in reply. In support of its motion, opposer argues that dismissal of the counterclaim to cancel opposer’s pleaded registrations is appropriate because such registrations were granted in 2005, which is four date of first use and October 24, 1995 as a date of first use in commerce in the underlying application. 5 In conjunction with its motion opposer filed a copy of applicant’s answer and counterclaim. 6 The withdrawal of applicant’s November 18, 2011 motion to compel is acknowledged. 4 years earlier than applicant’s filing date of January 1, 2009. Opposer contends that opposer and opposer’s related company have used, promoted, and advertised its mark in commerce since at least as early as 1995. Opposer asserts that applicant’s filing date of January 7, 2009 for its intent-to-use application is the earliest date on which applicant can rely for purposes of determining priority; that applicant has no reason to claim its priority over opposer; and the counterclaim is, therefore, “moot.” In response, applicant states that “it vigorously disputes Opposer’s unsupported factual claim of priority…” that opposer and opposer’s related company have used, promoted, and advertised its mark in commerce since at least as early as 1995. Applicant argues that this fact statement is entirely unsupported by any evidence and is contradicted by opposer’s claim in the registrations that the mark was first used on December 31, 2001; that opposer’s motion is unaccompanied by any affidavits or other evidence that would establish a date of first use earlier that than claimed in its registrations; that opposer has patently failed to establish that it has used its mark in commerce earlier than December 31, 2001; that 5 throughout discovery applicant “made repeated and concerted efforts” to obtain evidence regarding opposer’s dates of first use with respect to each product identified in the pleaded registrations and the earliest invoice provided by opposer concerns wrenches and is dated December 6, 2001; that applicant explicitly disputes opposer’s unsupported assertion that it used its marks as early as 1995; and that there is therefore a “live factual dispute in this matter rendering summary judgment inappropriate.” As evidentiary support for its position, applicant has attached the declaration of its counsel, Ms. Julie B. Seyler, and opposer’s responses to applicant’s discovery requests which include invoices for its sales of various items identified in opposer’s pleaded registrations. Summary judgment is only appropriate when there is no genuine dispute as to any material fact and the moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(a). The Board may not resolve issues of material fact; it may only ascertain whether a genuine dispute regarding a material fact exists. See Lloyd's Food Products, Inc. v. Eli's, Inc., 987 F.2d 766, 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542. A factual 6 dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter in favor of the non-moving party. Opyland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, 961 F.2d 200, 22 USPQ2d at 1544. After a careful review of the record in this case, we find that there are no genuine disputes of material fact as to priority and opposer is entitled to judgment as a matter of law. It is well-settled that in the absence of any evidence of earlier use, the earliest date upon which opposer may rely is the filing date of its underlying applications. See Trademark Act Section 7(c), 15 U.S.C. § 1057(c). See also Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840 (TTAB 1995). In this case, the applications that matured into opposer’s pleaded registrations at issue were accorded a filing date of June 18, 2003 for U.S. Registration No. 2969863 and September 21, 2003 for U.S. Registration No. 3003615. We also note that opposer can rely on the evidence of actual use submitted with applicant’s response brief with regard to its goods, particularly the invoice dated December 6, 2001 concerning its wrenches.7 Inasmuch as applicant has 7 We note that opposer has not established the assertion set forth in its motion that its mark has been used, promoted, and advertised since at least as early as 1995 by opposer and opposer’s related company. 7 not established use of its mark in connection with its goods prior to the filing date of its intent-to-use application, the earliest date upon which applicant may rely for priority purposes is January 7, 2009. See Section 7(c) of the Trademark Act; Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991) ("[T]here can be no doubt but that the right to rely upon the constructive use date comes into existence with the filing of the intent-to-use application….”).8 Inasmuch as the filing dates of the applications which matured into opposer’s pleaded registrations predate the January 7, 2009 filing date of applicant’s intent-to-use application, the earliest upon which applicant may rely as established by this record, opposer clearly has established its priority. In view thereof, opposer’s motion for partial summary judgment on the issue of priority is hereby granted.9 Inasmuch as priority is a necessary element of the ground of 8 Any assertion of actual prior use by applicant (including its allegation of having used, promoted, and advertised its mark in commerce since at least as early as 1998 as set forth in its counterclaim) without evidence thereof is insufficient to defeat opposer’s claim of priority with respect to opposer’s 2003 filing dates and/or opposer’s evidence of actual use of its mark in 2001 on wrenches. 9 The parties should note that the evidence submitted in connection with the motion for summary judgment is of record only for consideration of the motion. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial period. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993). 8 likelihood of confusion, applicant’s counterclaim is dismissed.10 Proceedings herein are resumed. Dates are reset as follows: Plaintiff's Pretrial Disclosures 3/2/2012 Plaintiff's 30-day Trial Period Ends 4/16/2012 Defendant's Pretrial Disclosures 5/1/2012 Defendant's 30-day Trial Period Ends 6/15/2012 Plaintiff's Rebuttal Disclosures 6/30/2012 Plaintiff's 15-day Rebuttal Period Ends 7/30/2012 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. 10 In view of applicant’s denial of opposer’s allegations in the notice of opposition, we construe applicant’s assertion of a likelihood of confusion in its counterclaim as a hypothetical pleading of likelihood of confusion rather than an admission of likelihood of confusion. Fed. R. Civ. P. 8(e).