Honda Motor Co., Ltd.v.Friedrich Winkelmann

Trademark Trial and Appeal Board

Apr 8, 2009

No. 91170552 (T.T.A.B. Apr. 8, 2009)

Skoro Mailed: April 8, 2009

Opposition No. 91170552

Honda Motor Co., Ltd.

v.

Friedrich Winkelmann

Before Quinn, Drost and Mermelstein,
Administrative Trademark Judges.

By the Board:

On April 21, 2004, Friedrich Winkelmann (hereinafter
“applicant”) filed an application to register the mark
V.I.C. for “vehicles for transportation…” in Class 12.1 On
April 24, 2006, Honda Motor Co., Ltd. (hereinafter
“opposer”) filed a notice of opposition alleging a
likelihood of confusion between opposer’s CIVIC
registrations2 and applicant’s applied-for mark. Applicant

1 Serial No. 76587840 for “Vehicles for transportation on land,
air or water, namely, motor propelled and self-propelled vehicles
for use on land and on water and motor propelled and glider
aircraft; parts used in vehicles for transportation on land, air
or water, namely, motor propelled and self-propelled vehicles for
use on land and on water and motor propelled and glider aircraft”
in Class 12, filed under Section 44(e) based on German
Registration No. 30354374, filed October 24, 2003, for, inter
alia, “vehicles, machines for locomotion by land, air or water
parts of air, land or water vehicles”; claiming a bona fide
intent to use the mark in commerce.

2 Reg. No. 1045160, issued July 27, 1976, for CIVIC, for
“automobiles” in Class 12, renewed May 1, 2006; and Reg. No.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451 THIS OPINION IS
PRECEDENT OF THE
TTAB
Opposition No. 91170552
2
answered the notice of opposition by denying the salient
allegations thereof.
On July 16, 2008, opposer filed a motion for summary
judgment and a motion to amend its notice of opposition. On
September 19, 2008, applicant answered the amended notice of
opposition. We therefore grant opposer’s motion to amend as
conceded, and the amended notice of opposition is of record.
Opposer’s motion for summary judgment is based on the
newly added ground that applicant lacked the requisite bona
fide intent to use the mark in commerce at the time of
filing his application. In support of its motion for
summary judgment, opposer has submitted copies of
applicant’s discovery responses.3 Applicant has responded
with a declaration from Jens Schulte, European Counsel for
applicant, and James C. Wray, counsel for applicant in the
U.S.
In support of its motion, as noted above, opposer has
submitted applicant’s written responses to opposer’s
discovery requests. Opposer maintains that applicant’s

2573521, issued May 28, 2002, also for the mark CIVIC, claiming
dates of first use and first use in commerce of September, 1972;
Section 8 & 15 affidavits accepted January 29, 2008, for
“automobiles and structural parts therefor” in Class 12. (Ex. D
and E to amended notice of opposition).

3 Opposer also submitted proof of the use of its registered mark
on cars; copies of its registrations; and a dictionary definition
of “automobile.”

Opposition No. 91170552
3
discovery responses demonstrate a prima facie case that
applicant lacked a bona fide intent to use the mark when it
filed its application. Opposer further contends that
applicant’s mere statements of subjective intention, without
more, are insufficient to establish applicant’s bona fide
intent to use the mark in commerce in the United States.
Opposer concludes that the absence of any other documentary
evidence prepared, created or produced prior to the filing
date of the application or subsequent thereto, demonstrates
applicant’s lack of the requisite bona fide intent at the
time of filing, rendering the application void ab initio,
and that it is entitled to judgment in its favor as a matter
of law.
Applicant contends, on the other hand, that the
evidence of his bona fide intent to use the mark V.I.C. in
commerce in the U.S. is through his registration and use of
the mark V.I.C. in Europe, including Germany; and through
the filing of applications for registration in other
countries and in the U.S. (Response p. 4). Applicant also
states, through counsel, that this opposition has “delayed
applicant’s realization of its intended use in the United
States.” (Response p. 2).
In a motion for summary judgment, the moving party has
the burden of establishing the absence of any genuine issues
of material fact and that it is entitled to judgment as a
Opposition No. 91170552
4
matter of law. See Fed. R. Civ. P. 56(c). In considering
the propriety of summary judgment, all evidence must be
viewed in a light favorable to the nonmovant, and all
justifiable inferences are to be drawn in the nonmovant's
favor. The Board may not resolve issues of material fact;
it may only ascertain whether such issues are present. See
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great
American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed.
Cir. 1992); Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d
200, 22 USPQ2d 1542 (Fed. Cir. 1992).
As a general rule, the factual question of intent is
particularly unsuited to disposition on summary judgment.
See Copelands’ Enterprises, Inc. v. CNV, Inc., 945 F.2d
1563, 20 USPQ2d 1295 (Fed. Cir. 1991). The Board has held,
however, that the absence of any documentary evidence
regarding an applicant’s bona fide intention to use a mark
in commerce is sufficient to prove that an applicant lacks
such intention as required by Section 1(b) of the Trademark
Act,4 unless other facts are presented which adequately
explain or outweigh applicant’s failure to provide such

4 Lanham Act § 1(b) states that “a person who has a bona fide
intention, under circumstances showing the good faith of such
person, to use a trademark in commerce” may apply for
registration of the mark.

Opposition No. 91170552
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documentary evidence. See Commodore Electronics Ltd. v. CBM
Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993).
At the outset, we find that there is no genuine issue
of material fact concerning opposer’s standing to be heard
on its claim. Although opposer neither submitted status and
title copies of its pleaded registrations of its CIVIC mark
nor an affidavit or declaration in support of its
allegations of use of its CIVIC mark, there is other
evidence establishing opposer’s standing. The record
includes applicant’s statement that “Honda uses CIVIC only
on subcompact automobiles” and “applicant’s vehicles may
compete with Honda vehicles.” (Interrogatory No. 54
response). We find applicant’s statements sufficient to
establish that opposer has a real interest in the outcome of
this proceeding; that is, opposer has a direct and personal
stake in the outcome of the opposition. See Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999);
Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823
F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987).
An applicant who has applied for registration under
Section 44(e) of the Lanham Act, claiming priority based on
a registration of his mark in a foreign country, must, in
his U.S. application, verify, in writing, that he has a bona
fide intent to use the mark in U.S. commerce. 15 U.S.C. §
1126(e). In determining whether an applicant under § 44(e)
Opposition No. 91170552
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has the requisite bona fide intent to use the mark in U.S.
commerce, the Board uses the same objective, good-faith
analysis that it uses in determining whether an applicant
under § 1(b) has the required bona fide intent to use the
mark in U.S. commerce. See Lane Ltd. v. Jackson
International Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994).
In determining the sufficiency of documentary evidence
demonstrating bona fide intent, the Board has held that the
Trademark Act does not expressly impose “any specific
requirement as to the contemporaneousness of an applicant’s
documentary evidence corroborating its claim of bona fide
intention. Rather, the focus is on the entirety of the
circumstances, as revealed by the evidence of record.” Lane
Ltd. v. Jackson International Trading Co., supra at 1356.5

5 As stated by the Board in Lane, “With respect to the
activities of applicant’s predecessor, the evidence shows that
applicant’s principal had succeeded in marketing tobacco in the
United States by locating a non-U.S. licensee … which exported
tobacco to the United States under the previous SMUGGLER mark.
This evidence is relevant because it establishes that applicant’s
principal was engaged in the tobacco marketing business,
including the export of tobacco to the United States under the
previous SMUGGLER mark. When viewed in the context of this prior
experience and success in the relevant industry, we find that
applicant’s efforts to obtain a licensee for the new SMUGGLER
mark are consistent with and corroborative of applicant’s claimed
bona fide intention to use the new mark in commerce.” (Id. at
1356).
The situation in Lane is to be contrasted with the present case
where there is no evidence that applicant is engaged in the
manufacture or sale of automobiles under the claimed mark,
thereby providing no evidence of a bona fide intention to use the
mark in commerce. See also L.C. Licensing Inc. v. Berman, 86
USPQ2d 1883, 1887 (TTAB 2008) and Boston Red Sox Baseball Club LP
v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008) (no bona fide intent
found because there was no relevant business established).
Opposition No. 91170552
7
In this case, opposer has proffered documents that
applicant provided to opposer through discovery, which
include applicant’s interrogatory responses and document
production (or lack thereof) which, opposer asserts,
demonstrates that applicant has no current business plans,
ongoing discussions, promotional activities, or anything
else to corroborate his claim of a bona fide intent to use
the mark in commerce in the United States. Specifically,
opposer points to applicant’s responses to interrogatories
numbered 15 and 16, by which opposer requested a description
of a business plan, strategy or arrangements and methods
used by applicant in connection with the use of, or intent
to use, the mark for the identified goods (interrogatory 15)
and to identify the channels of trade that are or will be
used in the U.S. by applicant in connection with the
identified goods (interrogatory 16). Both interrogatories
were answered with “Applicant has not had activities in the
U.S. and has not made or employed a business plan, strategy,
arrangements or methods there” and “has not identified
channels of trade that will be used in the United States.”
Interrogatory 34 asked applicant to state whether he
had a bona fide intent to use the mark on or in connection
with the goods on the day the application was filed; to
which applicant responded “yes” but the follow-up
interrogatory 36 asked if the response was affirmative, to
Opposition No. 91170552
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identify any and all evidence supporting applicant’s claim
that it had an intent to use the mark for the identified
goods, to which applicant responded “Not Applicable.”
(Motion for Summary Judgment, Exhibits B and C).
As for requests for production, opposer notes requests
number 9 (documents sufficient to identify all intended uses
of applicant’s mark on or in connection with the claimed
goods); number 10 (documents to identify products of
applicant associated with applicant’s mark intended to be
used…); and number 12 (documents applicant intends to use to
promote, advertise, publicize or sell goods and/or services
under his mark) – all to which applicant responded: “No
such documents exist”. (Motion Ex. D). For the documents
actually produced in response to request for production
number 11 (documents sufficient to identify the types of
vehicles applicant intends to promote, advertise, publicize,
offer to sell and/or sell in connection with the mark),
number 14 (documents that evidence, refer or relate to the
advertising and promotional means intended to be used to
advertise and promote applicant’s goods) and number 16
(documents that reflect, refer to or evidence applicant’s
intent to use applicant’s mark on vehicles in the U.S.),
applicant’s responses stated “See Documents A, B and C1-10”.
(Motion Ex. D). Accompanying these documents, applicant
provided a list and described them as “Document A printouts
Opposition No. 91170552
9
from Applicant’s website, www.MTWGroup.de (enclosed)”6;
“Document B Applicant’s German, European and WIPO trademark
registrations (enclosed)”7; and “C1-C10 are official
correspondence with the United States Patent and Trademark
Office and can be viewed online using the ‘View full files’
option from the USPTO homepage.”8
Applicant has countered the motion9 with statements of
subjective intent, not made by applicant himself, but rather
made by declarants on his behalf.10

6 The printouts appear to be from the MTW Motor Group website
with applicant’s name underneath the banner; the advertisement is
in German, with use of the mark as “MTW V.I.C.-PAKET” which
appears to be a gift box with a list of items to be used in
connection with an automobile. Without verification and
translation, the connection between the goods claimed in the
application and these documents is unclear. As used in these
materials, the mark does not appear to identify “vehicles for
transportation.”

7 These are again without translation and submitted with the
application to support a claim of priority.

8 Opposer notes that Document A is actually the foreign
registrations and Document B is the website printout and
Documents C1-10 were never produced.

9 There is also quite a bit of argument by applicant that opposer
has not objected to applicant’s registration of its mark outside
of the United States; and has not objected to the use of “vic” as
used by Ford Motor Company. Exhibits attached to Mr. Wray’s
declaration provide extensive Internet results relating to the
use of “vic” to identify Ford Motor Company’s “Crown Victoria”
automobile. These arguments are not relevant to the issue before
us, namely, applicant’s bona fide intent to use the mark in
commerce in the U.S.

10 Opposer has moved to strike these declarations as lacking
foundation. We have considered the declarations submitted by
applicant’s counsel to the extent they are relevant to the issue
of applicant’s bona fide intent to use the mark in the U.S. It
should be pointed out, however, that these declarations do not
include any objective facts in support of applicant’s intent. In
that we have considered these declarations as applicant’s only
Opposition No. 91170552
10
Federal Rule of Civil Procedure 56(c) provides:
The judgment sought should be rendered
if the pleadings, the discovery and
disclosure materials on file, and any
affidavits show that there is no genuine
issue as to any material fact and that
the movant is entitled to judgment as a
matter of law.

Federal Rule of Civil Procedure 56 requires a nonmoving
party to go beyond the pleadings and to “set out specific
facts showing a genuine issue for trial.” Fed. R. Civ. P.
56(e)(2); Celotex Corp. v. Catrett, supra at 324.
In its response to the motion, applicant has not
provided any exhibits that provide any additional, relevant
information in support of his declarations nor identified
those portions of the record before the Board that
demonstrate that he manufactures vehicles in Germany or
elsewhere. Rather, applicant has pointed to the same
evidence opposer points to, namely, the website printouts
showing the mark as used in Europe.
To raise a genuine issue of material fact, applicant
must rely on specific facts that establish the existence of
an ability and willingness to use the mark in the United
States to identify its claimed “vehicles for transportation”
at the time of the filing of the application. Applicant’s

evidence in support, we have not afforded them much weight.
Accordingly, opposer’s motion to strike these declarations is
hereby denied.
Opposition No. 91170552
11
declarations of outside counsel merely state opinions and do
not provide specific facts in support of his position.
While the evidence necessary to support a bona fide
intent to use may differ depending on the circumstances of
each case, the evidence that applicant relies upon through
its foreign registrations and Internet printouts does not
demonstrate trademark use for the claimed goods. Further,
these documents do not show that applicant has an intent to
use the mark in the United States. The website printouts
are not translated, but judging from the graphics, the mark
seems to be used to identify car care packages or
promotional material, not the vehicles themselves; and there
is no evidence of a bona fide intent to use the mark in the
United States as to the goods listed in the application.
Any intention to use the mark may go to promotional services
for dealerships, but not to “vehicles for transportation.”
Finally, because the arguments of counsel are not supported
by any evidence of record related to applicant’s bona fide
intent, they are insufficient to raise a genuine issue of
material fact. See, e.g., Hornblower & Weeks Inc. v.
Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1736 (TTAB 2001).
Therefore, after having considered the evidence and
arguments submitted by the parties in connection with the
motion, and viewing that evidence in the light most
favorable to applicant, we find there is no evidence of
Opposition No. 91170552
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applicant’s bona fide intent to use the mark in the United
States to identify the claimed goods. Because applicant has
not established that there is any genuine issue of material
fact as to his lack of a bona fide intent to use, opposer’s
motion for summary judgment is granted.
The opposition is sustained, and registration is
refused to applicant.