Florida Engineered Construction Products Corporationv.Case-Crete Inc.

Trademark Trial and Appeal Board

Apr 13, 2006

No. 91159554 (T.T.A.B. Apr. 13, 2006)

Lykos Mailed: April 13, 2006

Opposition No. 91159554
Florida Engineered
Construction Products
Corporation1

v.

Cast-Crete Inc.

Before Bucher, Holtzman and Kuhlke, Administrative Trademark
Judges.

By the Board:

This case now comes up for consideration of (1)
opposer’s motion to amend the notice of opposition pursuant
to Fed. R. Civ. P. 15(a); (2) applicant’s cross-motion to
dismiss the case; and (3) opposer’s motion for summary
judgment.
By way of background, applicant applied to register the
mark displayed below

1 By this order, the caption of this proceeding has been amended
to reflect opposer’s correct name. The parties should therefore
caption all further submissions in the above manner.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.

for “pre-cast concrete products for building, namely, window
sills, lintels, cornices, fireplace mantels, stepping
stones, well rings and covers, countertops, planters, postal
bases, panels, meter boxes, vaults, houses, curbstone, pier
caps, piers, parking lot bumpers, light bases, custom
architectural designs, coping banding, balustrades,
balusters, rails, stairs, landings, arches, keystones, grave
markers, monuments, sculpture, fountains, coins” in
International Class 19.2 The mark was published for
opposition on December 2, 2003.
On December 29, 2003, a party identified as "Florida
Engineered Construction Products Corporation” filed a
request to extend the time to oppose the involved
application. The Board granted the extension request. On
January 27, 2004, a party identified as "Cast-Crete,
formerly known as Florida Engineered Construction Products

2 Application Serial No. 78030642, filed October 14, 2000,
alleging October 2, 1997 as the date of first use anywhere and in
commerce.
Corporation" filed the notice of opposition. The notice of
opposition contains the following salient allegations:
1. Cast-Crete Corporation of Florida . . . had
adopted and had used the trademark CAST CRETE
for a wide variety of concrete products,
including lintels, sills, manholes, catch basin,
slabs, beams, and blocks.

2. Cast Crete Corporation of Florida . . .
first used the trademark CAST CRETE in
interstate commerce on August 30, 1962.

4. On or about January 31, 1987, Florida
Engineered Construction Products Corporation . .
. purchased Crete-Corporation of Florida
including all goodwill and all marks associated
therewith . . .

5. On or about January 1, 2004, Florida
Engineered Construction Products Corporation
changed its name to Cast-Crete Corporation.

6. Cast-Crete Corporation assumed all goodwill
and all marks associated with Florida Engineered
Construction Products Corporation, including the
trademark CAST CRETE.

17. The term CAST CRETE, alleged to be used by
Applicant in association with concrete products,
is confusingly similar in appearance, sound,
connotation and commercial impression to CAST
CRETE, the trademark of Opposer, used in
association with concrete products.

In its answer to the notice of opposition, applicant
denied the salient allegations and asserted various
affirmative defenses.
We now turn to the motions pending before us.
I. Opposer’s Motion to Amend the Notice of Opposition and
Applicant’s Cross-Motion to Dismiss the Case

Opposer now seeks to amend the notice of opposition to
name Florida Engineered Construction Products Corporation as
the proper party plaintiff and to correct the Cast Crete
Corporation and Florida Engineered Construction Products
Corporation merger date from January 31, 1987 to December 1,
1995. Opposer argues that on August 23, 1962, Cast-Crete
Corporation (“Cast-Crete”) began using its trademark in
interstate commerce; that on December 1, 1995, Florida
Engineered Construction Products Corporation merged with
Cast-Crete, with Florida Engineered Construction Products
Corporation acquiring the rights in the CAST-CRETE
trademark; that at the time opposer filed its notice of
opposition (January 27, 2004), it mistakenly believed that
Florida Engineered Construction Products Corporation had
changed its name to Cast-Crete; that subsequent to the
filing of notice of opposition, Florida Engineered
Construction Products Corporation learned that it had not
changed its name to Cast-Crete but that rather a wholly
owned subsidiary company of Florida Engineered Construction
Products Corporation, American Enterprise Solutions, had
changed its name to Cast-Crete on February 26, 2004; that
the identification of Cast-Crete was a mistake; that the
proper party in interest is Florida Engineered Construction
Products Corporation; that the proposed amendment should be
allowed because it does not involve the substitution of a
different party; and that applicant will not be prejudiced
because during the course of the proceeding, applicant has
been aware of the existence of Florida Engineered
Construction Products Corporation. In support of its
motion, applicant has submitted the declaration of Mr. Craig
M. Parrino, Vice President of Engineering of Florida
Engineered Construction Products Corporation with various
exhibits attached thereto attesting to the above facts; an
amended notice of opposition, and the declaration of Mr.
Ralph W. Hughes, Chairman of Florida Engineered Construction
Products Corporation.
In response, applicant argues that opposer has
submitted no evidence that Florida Engineered Construction
Products Corporation, and American Enterprise Solutions are
related entities, and that because opposer failed to use
diligence in its filing of the notice of opposition, the
case should be dismissed.
Opposer’s motion to amend its pleading and
applicant’s motion to dismiss present the same issue,
that is whether the misidentification of Cast-Crete in
the notice of opposition is a type of mistake
contemplated by Fed. R. Civ. P. 15(a) such that the
Board may now allow opposer to amend the notice of
opposition to name Florida Engineered Construction
Products Corporation as party plaintiff. Based on the
record before us, we find that opposer's
misidentification of the opposer in the notice of
opposition is the type of mistake which may be
corrected.
Under Fed. R. Civ. P. 15(a), leave to amend pleadings
shall be freely given when justice so requires. The Board
liberally grants leave to amend pleadings at any stage of
the proceeding when justice requires, unless entry of the
proposed amendment would violate settled law or be
prejudicial to the rights of the adverse parties or parties.
Section 512.04 of the TBMP (2d ed. rev. 2004) states in
relevant part:
When it is shown to the satisfaction of the
Board that a party in whose name a Board
proceeding complaint was filed was misidentified
therein by mistake, the Board may allow
amendment of the complaint, or pursuant to Fed.
R. Civ. P. 15(a), to correct the
misidentification and/or to substitute the
proper party in interest.

For example, in Davidson v. Instantype, Inc., 165 USPQ
269 (TTAB 1970), the Board applied Rule 15(a) and
permitted opposer to amend its notice of opposition to
substitute the real party in interest where it was
shown that the incorrect party was named due to a
mistake. In that case, the opposition was filed in
the name of an individual. While taking the testimony
of opposer, it became clear that the proper plaintiff
was not the individual named in the notice of
opposition, but rather a corporation where the
individual worked. It also became evident that the
named individual and his wife owned the stock in the
corporation. The Board, after determining that the
corporation controlled the use of the trademark at
issue in the case, allowed opposer time to substitute
the party plaintiff. As the Board remarked:
In the instant case, it is apparent that
the filing of the notice of opposition in
the name of the individual rather than in
the name of the corporation which he
represents occurred because of an innocent
misconception made either by Mr. Davidson
or his attorney. Since Rule 15 of the
Federal Rules of Civil Procedure provides
that leave to amend "shall be freely given
when justice so requires" it is our opinion
that opposer should be granted leave to
amend its opposition to substitute the
proper party-in-interest and that applicant
will not be unduly prejudiced thereby.

Id. at 271.
In addition, Trademark Rule 2.102(b), which pertains to
misidentifications in extensions of time to oppose, provides
a useful analogy. The rule states in relevant part:
Any opposition filed during an extension of
time should be in the name of the person to
whom the extension was granted, but an
opposition may be accepted if the person in
whose name the extension was requested was
misidentified through mistake or if the
opposition is filed in the name of a person
in privity with the person who requested
and was granted the extension of time.

To illustrate an application of this rule, in Custom
Computer Services Inc. v. Paychex Properties Inc., 67
USPQ2d 1638 (Fed. Cir. 2003) a party identified as
"Custom Computer Services, Inc., formerly known as The
Payroll People" filed two requests to extend the time
to oppose the involved application. The Board granted
each extension request. Thereafter, a party
identified as "The Payroll People, Inc." filed the
notice of opposition. The Board, failing to note the
difference in the identification of the parties who
filed the extension requests and notice of opposition,
instituted the proceeding without requesting an
explanation, and named Custom Computer Services, Inc.
as opposer. Opposer sought to amend the notice of
opposition to name The Payroll People, Inc. as party
plaintiff. The Board granted applicant's motion to
dismiss, and denied opposer's motion for leave to
amend the notice of opposition to correct the party
plaintiff on the ground that The Payroll People, Inc.
failed to demonstrate the requisite privity with
Custom Computer Services, Inc.
On appeal, the Federal Circuit reversed the
Board finding that while substantial evidence
supported a finding of a lack of privity, a mistake
was made within the parameters of the rule. The
court’s reasoning was as follows:
It is not the case that the entity named in
the extensions is a “different existing
legal entity.” Cass Logistics, 27 USPQ2d at
1077 (emphasis added). The PTO’s reliance
on Cass Logistics is thus unsound, as there
were two independent existing legal
entities involved in that case. Here,
there never has been an entity named
“Custom Computer Services, Inc., formerly
known as The Payroll People.” There is an
entity presently named “Custom Computer
Services, Inc.,” but it was never formerly
known as “The Payroll People.” Instead, we
have here a mistake in the form of one
entity’s name, i.e., Payroll People, a
mistake consistent with the PTO’s
definition of a mistake. To be sure, the
mistake that occurred here was an incorrect
belief that a corporate name had changed.
However, that was a mistake as to the form
of the correct entity, not an attempt to
substitute one entity in the place of a
different existing legal entity.
Accordingly, all evidence unambiguously
supports the finding that the mistake in
this case was one within the meaning of
§2.102(b), and the decision of the Board
was therefore lacking in substantial
evidence.

The circumstances presented here are
similar to both cases discussed above. The
declaration of Mr. Craig Parrino, vice president
of Engineering of Florida Engineered
Construction Products Corporation, clearly
states that the identification of Cast-Crete in
the notice of opposition was an innocent
mistake, and was a mistake in the form of the
entity, not an attempt to substitute an entirely
different company. According to Mr. Parrino,
while searching corporate records in order to
respond to applicant's discovery requests, he
learned that his good-faith belief regarding the
date of the corporate merger as well as the name
change was erroneous, and was due to "a mistake
and/or an innocent misconception" on his part.
Moreover, based on the record before us, the
mistake in the identification of opposer and
merger date has not unduly prejudiced applicant
in terms of taking discovery or otherwise
defending itself against the opposition. Thus,
by applying Rule 15(a) to the present case and
the same principles embodied 2.102(b), justice
would require allowing opposer to correct its
mistake.
In view thereof, opposer’s motion to amend the notice
of opposition to name Florida Engineered Construction
Products Corporation as the proper party in interest is
hereby granted and applicant’s motion to dismiss is denied.
Opposer’s amended notice of opposition is now the operative
pleading in this case.3
II. Opposer's Motion for Summary Judgment

Next, we consider opposer's motion for summary judgment
on the grounds of likelihood of confusion and priority. On
the issue of likelihood of confusion, opposer maintains that
insofar as opposer's first set of admission requests have
been deemed admitted by applicant, applicant has admitted to
a likelihood of confusion between the parties' respective
marks.4 As to the issue of priority, opposer contends that
it has conclusively established that through its predecessor
in interest and the evidence submitted with its motion that
opposer first used its mark CAST-CRETE in interstate
commerce on August 30, 1962, and that such use has been
continuous.5 In support of its motion for summary judgment,
opposer has attached the declarations of Mr. Craig Parrino,
vice president of opposer and Mr. Ralph W. Hughes, chairman
of opposer, with various exhibits attached thereto; as well
as excerpts from the discovery deposition transcripts of Mr.

3 With regard to opposer’s request that the exhibits attached to
the original notice of opposition “remain of record,” opposer is
advised that exhibits attached to a pleading are not evidence on
behalf of the party to whose pleading they are attached unless
they are thereafter, during the time for taking testimony,
properly identified and introduced in evidence as exhibits. See
Trademark Rule 2.122(c).

4 On December 15, 2004, the Board granted as conceded opposer's
motion to deem admitted its first set of admission requests. See
Fed. R. Civ. P. 36(a) and Trademark Rule 2.127(a).
5 Opposer states that it inadvertently allowed its federal
Registration No. 0836555 to expire.
Gail Brewer, president of applicant and Glen S. Petrosso, a
corporate representative of applicant; opposer's first set
of requests for admissions; and opposer's first set of
interrogatories and applicant's responses thereto.
Applicant, in response to opposer's motion for summary
judgment, argued the issue of likelihood of confusion on its
merits, and does not address opposer's assertions regarding
the effect of applicant's admissions. On the issue of
priority, applicant maintains that the "key test" is whether
"the first user's market penetration at the time of the
second user's entry is significant enough to pose a real
likelihood of confusion"; that opposer has failed to
demonstrate prior use under this standard; that in addition,
opposer's interstate use of its mark has been sporadic and
not continuous; and that opposer's documentation is
insufficient for establishing prior use. Applicant
submitted with its responsive brief the declaration of Mr.
Brewer.
In its reply brief, opposer contends that applicant has
applied the wrong test for priority. Opposer submitted
therewith a second declaration from Mr. Parrino regarding
opposer's inadvertent expiration of its federal
registration.
Before further discussing the merits of opposer's
summary judgment motion, we will consider applicant's
objections to the declarations of Mr. Craig Parrino and Mr.
Ralph W. Hughes, and the exhibits attached thereto.
Applicant has objected to the declarations and a number of
the exhibits of the grounds that they contain inadmissible
hearsay statements and are irrelevant.
Applicant's objections are overruled. With respect to
applicant's hearsay objections, the statements of both
declarants were made with personal knowledge and not based
on out-of-court statements of persons other than the
declarants. See Fed. R. Evid. 802. Moreover, the
declarations and exhibits attached thereto are being
submitted for the purpose of showing prior use, the extent
of opposer's use of its mark throughout the United States,
and public recognition of opposer's mark. See Fed. R. Evid.
802. As to applicant's objections on relevancy, the
declarations and exhibits submitted therewith are clearly
relevant to the issues likelihood of confusion and priority
presented in this case. See Fed. R. Evid. 402.
We will now discuss whether summary judgment is
warranted in this case. 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 summary judgment as a
matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317,
106 S.Ct. 2548 (1986). The nonmoving party must be given
the benefit of all reasonable doubt as to whether genuine
issues of material fact exist, and the evidentiary record on
summary judgment, and all inferences to be drawn from the
undisputed facts, must be viewed in the light most favorable
to the nonmoving party. See Opryland USA, Inc., v. Great
American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471
(Fed. Cir. 1992). When the moving party's motion is
supported by evidence sufficient to indicate that there is
no genuine issue of material fact, and that the moving party
is entitled to judgment, the burden shifts to the nonmoving
party to demonstrate the existence of specific genuinely-
disputed facts that must be resolved at trial. The
nonmoving party may not rest on the mere allegations of its
pleadings and assertions of counsel, but must designate
specific portions of the record or produce additional
evidence showing the existence of a genuine issue of
material fact for trial.
A plaintiff moving for summary judgment in its favor on
a Section 2(d) claim must establish that there is no genuine
dispute that (1) it has standing to maintain the proceeding;
(2) contemporaneous use of the parties' respective marks on
their respective goods would be likely to cause confusion,
mistake or to deceive consumers; and (3) it is the prior
user of its pleaded mark. See Hornblower & Weeks, Inc., v.
Hornblower & Weeks, Inc., 60 USPQ2d 1733 (TTAB 2001).
We first turn to the facts alleged in opposer's
requests for admission, which stand admitted pursuant
to the Board's December 15, 2004 order. The facts
established by applicant's admissions include the
following: that applicant did not use its mark in
interstate commerce until October 2, 1997 (admission
no. 2); that applicant uses its mark in connection
with sills, window sills, thresholds, parking
bumpers, slabs, beams, and scuppers (admission nos.
3-10); that the parties' goods are sold through the
same trade channels and to the same types of
purchasers (admission nos. 11 and 12); and that the
parties' marks are identical in sound, pronunciation,
meaning and commercial impression (admission nos. 13,
14 and 15). These admissions demonstrate that no
genuine issue of material fact exists as to opposer's
pleaded claim of likelihood of confusion under
Section 2(d) of the Trademark Act.
The admission requests, however, by themselves do not
establish opposer's priority. As to that issue, we find
that opposer has satisfied its burden on summary judgment of
demonstrating prior use by virtue of the evidence it has
submitted in conjunction with its motion for summary
judgment.
Before turning to a discussion of this evidence, we
note that opposer is correct that applicant has argued its
case under the wrong standard for assessing priority in
Board proceedings. To establish priority on a likelihood of
confusion claim brought under Trademark Act Section 2(d), a
plaintiff must prove that it owns "a mark or trade name
previously used in the United States ... and not
abandoned...." Trademark Act Section 2(d), 15 U.S.C. Section
1052(d). The geographic extent of such use is irrelevant
except in the context of a concurrent use proceeding. See
Pinocchio’s Pizza Inc. v. Sandra Inc., 11 USPQ2d 1227 (TTAB
1989). A plaintiff may establish its own prior proprietary
rights in a mark through actual trademark use or through use
analogous to trademark use, such as use in advertising
brochures, trade publications, catalogues, newspaper
advertisements and Internet websites which creates a public
awareness of the designation as a trademark identifying the
party as a source. See Trademark Act Sections 2(d) and 45,
15 U.S.C. Section 1052(d) and 1127; T.A.B. Systems v. PacTel
Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996),
vacating Pactel Teletrac v. T.A.B. Systems, 32 USPQ2d 1668
(TTAB 1994). Thus, applicant's arguments regarding market
penetration are irrelevant here.
Furthermore, applicant's assertion that opposer must
demonstrate continuous use of its pleaded mark in order to
prevail on the issue of priority is misplaced. In West
Florida Seafood Inc. v. Jet Restaurant, Inc., 31 USPQ2d 1660
(Fed. Cir. 1994), the Federal Circuit, in reversing the
Board, held that a plaintiff in a Board proceeding need not
show continuous use unless the defendant is asserting the
affirmative defense of abandonment. The Court, in reaching
its conclusion, highlighted the following language from the
Trademark Act:
The governing statute does not speak of
"continuous use," but rather of whether the mark
or trade name has been "previously used in the
United States by another and not abandoned." 15
U.S.C. Section 1052(d)(emphasis in original).

In this particular case, applicant has not asserted the
affirmative defense of abandonment. Furthermore, we find
that opposer has demonstrated use of its mark at least as
early as 1996 which is sufficient to show use prior to the
October 14, 2000 filing date of the involved application
which, in the absence of any proof of earlier use, is the
earliest date on which applicant is entitled to rely.
According to the declarations of Mr. Parrino and Mr. Hughes,
opposer first used the mark CAST-CRETE in interstate
commerce on August 30, 1962, and such use has been
continuous. Documentary evidence of such use includes a
photograph from a publication showing the mark CAST-CRETE
imprinted on a box containing opposer’s goods dated April
1977, submitted as Exhibits 21 and 22 to the declaration of
Mr. Hughes; photographs from a publication showing the mark
CAST-CRETE imprinted on a box containing opposer’s goods
dated 1974-1981, submitted as Exhibits 24 and 25 to the
declaration of Mr. Hughes; a photograph of a truck imprinted
with the mark CAST-CRETE transporting opposer's goods from a
publication dated “Fourth Quarter 1990”, submitted as
Exhibit 34 to the declaration of Mr. Hughes and accompanied
by the statement in the declaration that the trucks are used
to transport opposer's goods in interstate commerce; and a
photograph of a truck imprinted with the mark CAST-CRETE
transporting opposer's goods from a publication dated July
1, 1996, submitted as Exhibit 38 to the declaration of Mr.
Hughes and accompanied by the statement in the declaration
that the trucks are used to transport opposer's goods.
Based on this evidence, opposer has established its claim of
priority.
Further, we find that the evidence of opposer's prior
use of the CAST-CRETE mark shows, and there is no dispute,
that opposer has standing to bring this case. As such, no
genuine issue of material fact exists on the issue of
standing.
Based on the foregoing, we find that there is no
genuine issue of material fact and that confusion is likely
to result as a matter of law. See Fed. R. Civ. P. 56(e).6
Accordingly, in view of the foregoing, the opposition
is sustained, and registration of applicant's mark is
refused.

6 Applicant’s request to “modify its application to limit the
goods . . . so as to avoid a likelihood of confusion” in the
event that the Board determines that opposer has met its burden
of proof on summary judgment is denied. Applicant has made no
formal motion to amend its application but has merely attempted
to reserve the right to modify its application in an attempt to
avoid judgment.