HBP, Inc.v.Becker Designs, Inc.

Trademark Trial and Appeal Board

Dec 16, 2005

No. 91154068 (T.T.A.B. Dec. 16, 2005)

Mailed: December 16, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

HBP, Inc.
v.
Becker Designs, Inc.
_______

Opposition No. 91154068
to Application No. 76295465
filed on August 7, 2001
_______

Martin J. Elgison and Andrew J. Wilson of Alston & Bird for
HBP, Inc.

Herbert L. Allen of Allen, Dyer, Doppelt, Milbrath &
Gilchrist for Becker Designs, Inc.
_______

Before Walters, Holtzman and Kuhlke, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

HBP, Inc. filed its opposition to the application of
Becker Designs, Inc. to register the mark DAYTONA
THUNDERWEAR, in standard character form, for “clothing,
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Opposition No. 91154068
2
namely women’s blouses and shorts,” in International Class
25.1
As grounds for opposition, opposer asserts that it is a
wholly owned subsidiary of International Speedway
Corporation (“ISC”); that ISC owns “an entire ‘family’ of
marks comprised in whole or in part of the term DAYTONA”
(Notice of Opposition, paragraph 1); that opposer is the
exclusive licensee of this family of marks; and that
applicant’s mark, when applied to applicant’s goods so
resembles ISC’s previously used and registered DAYTONA marks
for promoting, organizing and conducting motorsports racing
events and for a wide variety of goods as to be likely to
cause confusion, under Section 2(d) of the Trademark Act.2
Applicant, in its answer, denies the salient
allegations of the claim; and asserts that “the word
‘Daytona’ is primarily geographically descriptive as applied
to applicant’s mark DAYTONA THUNDERWEAR” (Answer, paragraph

1 Application Serial No. 76295465, filed August 7, 2001, based upon use
of the mark in commerce, alleging a date of first use as of January 26,
1996, and a date of first use in commerce as of February 28, 1997. The
application includes a disclaimer of DAYTONA apart from the mark as a
whole.

2 Additionally, opposer alleges that ISC’s family of DAYTONA marks are
famous, and opposer asserts a claim of dilution. The Board notes,
however, that opposer's allegation of dilution is legally insufficient,
inasmuch as there is no allegation that its marks became famous prior to
the filing date of the involved application. See Polaris Industries Inc.
v. DC Comics, 59 USPQ2d 1798 (TTAB 2000). See also, Toro Co. v. ToroHead
Inc., 61 USPQ2d 1164 (TTAB 2001). Further, opposer presents no evidence
in this regard or arguments regarding its dilution claim in its brief.
Therefore, opposer’s dilution claim has not been considered because it
is not properly pled and it has not been tried by either the express or
implied consent of the parties.

Opposition No. 91154068
3
13); and that “the word ‘Daytona” is in such widespread use
as a prefix for business names in the Daytona area, as to
afford no distinctiveness to any party when “Daytona” is
used alone, instead of as a part of a composite mark such as
Opposer’s DAYTONA SPEEDWEEK mark” (Answer, paragraph 15).
The record consists of the pleadings; the file of the
involved application; excerpts from a dictionary and an
encyclopedia, and excerpts from various publications, all
made of record by opposer’s notice of reliance; and the
testimony deposition by opposer of Susan Becker, applicant’s
president, with accompanying exhibits. The case was fully
briefed, but a hearing was not requested.3
Opposer has established by its evidence4 that Daytona
Beach is a Florida city formed in 1926 by the consolidation
of the municipalities of Seabreeze, Daytona Beach and
Daytona (notice of reliance exhibit nos. 1 and 2, Webster’s
New Geographical Dictionary, 1988, and The New Encyclopaedia
Brittanica, vol. 3, 1988); that Daytona Beach is noted for,
inter alia, the Daytona International Speedway, a
motorsports race track located therein (id.); that the
Daytona 500 is a NASCAR race conducted at the Daytona
International Speedway (notice of reliance exhibit nos. 3-7,

3 Confidential Exhibit A to opposer’s reply brief was stricken by the
Board’s order of September 21, 2005. Thus, the exhibit has not been
considered.

4 Whether applicant has made admissions regarding opposer in its answer
and brief are discussed infra.
Opposition No. 91154068
4
excerpts from various publications); and that the Daytona
200 is a motorcycle race conducted at the Daytona
International Speedway (id.). The aforementioned various
publications contain references to “Daytona 500” and
“Daytona International Speedway” in connection with
motorsports races as early as 1959.
Opposer did not submit status and title copies of the
pleaded registrations; rather, opposer asserts that
applicant’s admissions make the registrations of record.
Therefore, we must determine whether the asserted
registrations may be considered to be part of the record in
this proceeding. In paragraph 6 of its notice of
opposition, opposer stated “HBP is the exclusive licensee of
the following subsisting U.S. Service mark and Trademark
Registrations issued by the [USPTO] and registration
applications currently pending before the [USPTO] for the
marks set forth below” and opposer listed thirty-one
registrations, noting the marks, goods and other
information. In corresponding paragraph 6 of its answer,
applicant stated “applicant acknowledges that some of the
registrations referred to in paragraph 6 have been issued,
but is without knowledge as to the allegations in paragraph
6 and therefore denies same.”
In paragraph 7 of its notice of opposition, opposer
stated “the federal registrations for the foregoing DAYTONA
Opposition No. 91154068
5
Marks are valid and subsisting in law, were duly and legally
issued ….” In corresponding paragraph 7 of its answer,
applicant stated “applicant denies the allegations of
paragraph 7.”
In paragraph 1 of its notice of reliance, opposer
listed the same thirty-one registrations and stated its
intention to rely thereon. In a footnote to paragraph one,
opposer stated the following:
In its answer, respondent (sic) admitted that
these registrations were issued by the [USPTO].
See Answer, paragraph 6. This admission is
sufficient to make these registrations of record.
[TBMP] §703.02(a) (“A federal registration owned
by a plaintiff … will be deemed by the Board to be
of record in an inter partes proceeding if the
defendant’s answer to the complaint contains
admissions sufficient for that purpose.”)

In its brief, opposer alleges that applicant, in its answer,
made sufficient admissions to make the claimed registrations
of record in this proceeding.
In its brief (pp. 16-17), applicant makes the following
statement about the registrations pleaded in the notice of
opposition:
In the Notice of Reliance, 31 issued federal
registrations are cited in support of the
assertion of a likelihood of confusion. Two of
these registrations (2,010,602 and 2,119,441) have
been cancelled. Most significantly, however,
Opposer’s Registration No. 1,445,066 for the mark
DAYTONA in a stylized form for wearing apparel
issued only after the word “Daytona” was
specifically disclaimed.

The following chart lists the nine cited “live”
registrations that make any reference to wearing
Opposition No. 91154068
6
apparel; of these registrations, only two are
directed to the word DAYTONA alone for clothing
(Registration Nos. 1,445,066 and 1,827,196), and
of these, No. 1,445,066 contains a specific
disclaimer of the word “Daytona.” It is also
noteworthy that the date of first use for the
clothing listed in Registration No. 2,564,163
(DAYTONA AT THE SPEED OF LIGHT) is about five
years after Mrs. Becker began utilizing her
DAYTONA THUNDERWEAR mark as a sole proprietor.

Additionally, applicant specifically states in its brief (p.
20) that the nine above-noted registrations are owned by
International Speedway, Inc.; and that opposer “has had
ample opportunity during the two and a half years that this
opposition has been pending to establish its standing as an
exclusive licensee, and has failed to do so; simply put,
there is not a scrap of evidence before the Board that
[opposer] has standing to bring this opposition proceeding,
other than the unsubstantiated allegations in its notice of
opposition, which were denied by applicant.”
In addition to meeting the broad requirements of
Section 13 of the Trademark Act, an opposer must meet two
judicially-created requirements in order to have standing --
the opposer must have a "real interest" in the proceedings
and must have a "reasonable" basis for his belief of damage.
Ritchie v. Simpson, 170 F.3d 1092; 50 USPQ2d 1023 (Fed. Cir.
1999).5

5 In its reply brief (pp. 6-7), opposer states that “standing has never
been an issue in this proceeding, and applicant has offered no evidence
to refute [opposer’s] allegations of standing” and that “[opposer]
presumed that [applicant] was satisfied with [opposer’s showing of
standing.” Opposer appears to be under the mistaken impression that
Opposition No. 91154068
7
Thus, in order to establish standing in this case, not
only must opposer establish the status and title of the
pleaded registrations, but, if it is not the owner of record
of the pleaded registrations, it must establish a viable
relationship to that record owner. There is no question
that neither applicant’s vague assertions in paragraph 6 of
its answer that “some of the registrations have been issued”
nor applicant’s uncategorical denial, in paragraph 7 of its
answer, of the ownership and status of those registrations,
constitutes an admission by applicant sufficient to make the
pleaded registrations of record in this proceeding or to
establish opposer’s standing.
However, applicant listed in its brief nine of
opposer’s pleaded registrations, and discussed them in a
manner that we deem to be an admission that these nine
referenced registrations are valid and subsisting and, thus,
of record.
While applicant treated these nine registrations as
being of record, we do not find applicant’s statements in
either its answer or, as quoted above, in its brief to
constitute an admission that opposer is the owner of these
registrations or that opposer is otherwise entitled to rely

mere allegations of standing are sufficient at trial and that the burden
is on applicant to contest opposer’s standing. However, while opposer’s
allegations in its notice of opposition may be sufficient to withstand a
motion to dismiss on the ground of lack of standing, the burden is on
opposer to establish to the satisfaction of the Board, not applicant,
that opposer, in fact, has standing as claimed.
Opposition No. 91154068
8
on these registrations, as alleged in the notice of
opposition. Furthermore, applicant expressly stated in its
brief, as quoted above, that opposer has not established its
relationship to the record owner of the registrations.6
Opposer has not introduced any evidence or testimony to
establish any relationship to the record owner of the
registrations or its right to rely on such registrations.
We, therefore, conclude that opposer has not established its
standing herein and, thus, cannot prevail on its claim of
priority and likelihood of confusion.
Moreover, even if opposer had established its standing,
there is absolutely no evidence of opposer’s use of the
pleaded registered marks in connection with the identified
goods and services. Inasmuch as opposer is not the owner of
the registrations, and hence cannot rely on them herein, it
was incumbent upon opposer to prove priority of use in order
to prevail upon its claim under Section 2(d). See Chemical
New York Corp. v. Conmar Form Systems, Inc., 1 USPQ2d 1139
(TTAB 1986); and Yamaha International Corp. v. Stevenson,
196 USPQ 701 (TTAB 1977), affirmed in unpublished opinion,
Appeal No. 78-525 (CCPA June 8, 1978), and cases cited
therein. While it may well be that opposer used some or all
of the DAYTONA marks in connection with various of the

6 We find that any further arguments by applicant against the claim of
likelihood of confusion must be considered to have been made by
applicant in the alternative.
Opposition No. 91154068
9
specified goods and services prior to applicant's
application filing date or prior to an earlier alleged date
of first use, there is no specific evidence of such priority
of use, or any use by opposer, in the record. Accordingly,
we would be constrained to conclude that, in addition to
failing to establish its standing, opposer has failed to
prove a critical element of its ground for opposition,
namely, the element of priority of use, and, thus, could not
prevail herein.
Decision: The opposition is dismissed.