Interlego A.G. and Lego Systems, Inc.v.Inventure Development Corp.

Trademark Trial and Appeal Board

Dec 28, 1999

No. 91101119 (T.T.A.B. Dec. 28, 1999)

THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB DEC. 28, 99

Skoro

Opposition No. 101,119

Interlego A.G. & Lego
Systems, Inc.

v.

Inventure Development
Corp.

Before Seeherman, Hairston and Walters Administrative
Trademark Judges.

By the Board:

An application has been filed by Inventure Development
Corp. for the mark ECOSYSTEM for “construction toy kits
consisting primarily of tubes, nodes, and panels” in class
28.1 The application has been opposed by Interlego and Lego
Systems, claiming priority of use and ownership of numerous
federal registrations for SYSTEM, LEGO and LEGO SYSTEM for
numerous goods, including a full line of construction toys.2

1 Serial No. 74/628766, filed February 2, 1995, alleging a date
of first use and first use in commerce of December 5, 1994.

2 Opposer claims ownership of, inter alia, U.S. Reg. No.
1,834,745, issued on May 3, 1994, for SYSTEM and design for
“construction toys; toy building blocks and connecting links; toy
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Opposition No. 101,119
2
Opposer alleges that applicant’s use of ECOSYSTEM in
connection with the identified goods is likely to cause
confusion, mistake, or to deceive; and further that
applicant has not used the mark in connection with goods in
interstate commerce sufficient for registration purposes.
Applicant denied all of the salient allegations.
This case now comes up on opposer’s renewed motion for
summary judgment, filed January 21, 1998.3 As grounds for
the motion, opposer states that through discovery responses
and a discovery deposition opposer now has evidence that
applicant has never used the mark in commerce.
Applicant responds, without any supporting evidence,
contending that opposer does not have standing to raise the
issue of a failure to use the mark because there is no
likelihood of confusion and opposer thereby has unclean
hands in filing the opposition.
In support of its renewed motion, opposer submitted
applicant’s responses to opposer’s first set of
interrogatories and the transcript of the deposition of
Scott W. Voorhees, president and founder of applicant, to
establish that applicant conceded that it has produced only

construction kits; toy figures; vehicular toys; and accessories
therefor” in Class 28.
3 On August 16, 1996, opposer filed a motion for partial
summary judgment on the issue that applicant had not used its
mark. That motion was denied on July 21, 1997, finding that
genuine issues of material fact remained as to whether applicant
Opposition No. 101,119
3
one product, a prototype box, a photograph of which
applicant filed as a specimen of use with its application,
and has not made a sale of the goods. Based on this
evidence, opposer argues that applicant’s claimed use of the
mark for goods is patently false, that its claimed date of
use of December 1994 is unsupported, and without bona fide
use in commerce of the mark on the goods, the mark cannot be
registered. 15 U.S.C. ∋∋ 1051(a) and 1127.
Applicant’s response, unsupported by any evidence or
affidavit, challenges opposer’s standing.4
The burden is on the party moving for summary judgment
to demonstrate the absence of any genuine issue of material
fact, and that it is entitled to summary judgment as a
matter of law. Fed. R. Civ. P. 56(c). See also, Celotex
Corp. v. Catrett, 477 U.S. 317 (1986). The evidence of
record and any inferences which may be drawn from the
underlying undisputed facts must be viewed in the light most
favorable to the non-moving party. See, Olde Tyme Foods
Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed.
Cir. 1992). In considering the propriety of summary
judgment, the Board may not resolve issues of material fact
against the non-moving party; it may only ascertain whether

was using the mark as of the filing date of applicant’s
application and the extent of such use.
4 Opposer has standing by virtue of its pleaded registration and
belief that there is a likelihood of confusion. The evidence of
Opposition No. 101,119
4
such issues are present. See, Opryland USA, Inc. v. Great
American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471
(Fed. Cir. 1993); and Lloyd’s Food Products Inc. v. Eli’s
Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993).
In certain cases, however, even though disputes remain with
respect to certain material facts, summary judgment may be
granted, so long as all factual disputes are resolved in
favor of the non-moving party and inferences drawn from the
undisputed facts are viewed in the light most favorable to
the non-moving party. See, Larry Harmon Pictures Corp. v.
The William’s Restaurant Corp., 929 F.2d 662, 18 USPQ2d
1292, 1293 (Fed. Cir. 1991); and Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 255 (1986) (“The evidence of the non-
movant is to be believed, and all justifiable inferences are
to be drawn in his favor”).
Opposer’s papers demonstrate that applicant has not
sold in commerce under its mark any of the items identified
in its application. Mr. Voorhees states in his deposition
testimony that prior to filing the application, he
personally created the ECOSYSTEM box and contents in
Singapore (dep. at 28); that it was intended to be a sample
of how the product might be constructed (dep. at 30); that
applicant contacted a major toy company in December 1994 for
development of the product (dep. at 31); that the box was

its standing is the certified copy of its registration and the
Opposition No. 101,119
5
presented to that company in Tokyo (dep. at 42); that that
has been the only presentation made of the product (dep. at
32); and the only package made (dep. at 33). Further, Mr.
Voorhees testified that no other promotional activity
occurred (dep. at 38); that the box was shipped to
applicant’s San Francisco office for a sales and marketing
review also around December, 1994 (dep. at 44); that the box
was returned to Singapore after the meeting (dep. at 44) and
now cannot be located (dep. at 45). Additionally, in its
response to interrogatories numbered 12 and 13, applicant
states that the goods are not being sold at this time.
Applicant filed its application on February 2, 1995.
In response to the motion for summary judgment,
applicant has only raised a question about opposer’s
standing which, as previously indicated, opposer has
established by making of record its registration and
evidence as to its use of the marks. Applicant has not shown
that there are any genuine issues about the use of the mark.
Thus, there is no genuine issue of material fact as to
applicant’s activities regarding use of the mark; rather the
issue is whether applicant’s use of the mark is adequate,
which is a matter of law.
The Lanham Act requires that marks be used in commerce
to qualify for registration. 15 U.S.C. ∋ 1051(a). Prior to

examples of the use of the mark on the goods.
Opposition No. 101,119
6
the amendment of the Lanham Act in 1989, token use of a
trademark was enough for registration purposes. However,
even under the previous token use system, the Board stated
that “sporadic, casual or nominal shipments of goods [which]
bear a mark” will not qualify a mark for registration.
Bellanca Aircraft Corp. v. Bellanca Aircraft Engineering,
Inc., 190 USPQ 158, 167 (TTAB 1976). When the Lanham Act
was amended in 1989, it provided for the filing of
applications based on an intent to use, thereby eliminating
the necessity for a token use system to reserve a mark, and
instituting the requirement that the use must be in the
“ordinary course of trade”, 15 U.S.C. ∋ 1127. See,
Paramount Pictures Corp. v. White, 31 USPQ2d 1768 (TTAB
1994), aff’d White v. Paramount Pictures Corp., No. 96-1096,
slip op. at 6 (Fed. Cir. Feb. 21, 1997).
In the instant case, applicant’s “use”, as shown by the
undisputed facts, would not satisfy the old token use
standard, much less satisfy the more stringent ordinary
course of trade standard necessary to establish use in
commerce. There have been no sales under the mark. There
has been no use of the mark in advertising or promotion. We
find, as a matter of law, that creating one sample5 of a
product and shipping it to one’s own company in the United

5 See also, Gay Toys, Inc. v. McDonald’s Corp., 199 USPQ 722,
723 (TTAB 1978) (a plaster mock-up of a truck did not constitute
Opposition No. 101,119
7
States is not adequate use of the mark in commerce to
establish trademark rights and to support a basis for filing
an application under 15 U.S.C. ∋ 1051(a). See, Bellanca
Aircraft Corp. supra at 167. See also, 2 McCarthy on
Trademarks and Unfair Competition ∋ 19.103 et seq. (1996).
In light of the foregoing, opposer’s motion for summary
judgment is granted and judgment is hereby entered against
applicant, the opposition is sustained and registration to
applicant is refused.

E. J. Seeherman

P. T. Hairston

C. E. Walters

Administrative Trademark
Judges, Trademark Trial
and Appeal Board

“toy trucks” as set forth in the application and therefore are
not “goods” within the meaning of the Act).