Long Island Vettes, Inc.v.Long Island Vettes, Ltd.

Trademark Trial and Appeal Board

Mar 26, 2012

No. 91194106 (T.T.A.B. Mar. 26, 2012)

Mailed:
March 26, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Long Island Vettes, Inc.

v.

Long Island Vettes, Ltd.
_____

Opposition No. 91194106
to Application Serial No. 77773462
filed on July 2, 2009
_____

Opposer, Long Island Vettes, Inc., pro se

Applicant, Long Island Vettes, Ltd., pro se
_____

Before Catlado, Bergsman and Kuczma,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:

This opposition proceeding stems from a dispute between
applicant, a car enthusiast club, and opposer, a similar car
club subsequently founded by former members of applicant,
which utilizes the same name as that used by applicant. The
issue in this proceeding focuses on priority of use of the
name LONG ISLAND VETTES used by both parties in their
respective club names.
Applicant, Long Island Vettes, Ltd., (“applicant”),
filed a use-based application to register the mark LONG
THIS OPINION IS NOT CITABLE
AS A PRECEDENT OF THE
T.T.A.B.
Opposition No. 91194106
2
ISLAND VETTES with a standard character claim for “Club
services, namely, promoting the interests of members in
sports cars,” in Class 35.1
Opposer, Long Island Vettes, Inc., (“opposer”), opposes
the registration of applicant’s mark on the ground of
priority and likelihood of confusion under Section 2(d) of
the Trademark Act of 1946, 15 U.S.C. §1052(d). Opposer
alleges that it has used the similar mark LONG ISLAND VETTES
(both with and without a design component) for its
automobile club prior to applicant’s filing date as well as
any date of use of the mark claimed by applicant.
Opposer is the owner of application Serial No. 77799366
filed on August 7, 2009 for the mark LONG ISLAND VETTES with
a standard character claim for “membership club services
providing discounts and processing rebates for the services
of others,” and alleging dates of first use and first use in
commerce on January 1, 2001.
In its answer, applicant admits that the parties’ LONG
ISLAND VETTES marks are similar and applicant’s use and
registration of the mark is likely to cause confusion.
Applicant also alleges several defenses, identified as
affirmative defenses, including that opposer was not a
“juristic” person capable of engaging in business in

1 Application Serial No. 77773462 filed on July 2, 2009, alleging
dates of first use and use in commerce as of February 5, 2002.

Opposition No. 91194106
3
interstate commerce until at least its date of incorporation
in June, 2009 which is several years after applicant’s date
of first use of the LONG ISLAND VETTES mark; and that
applicant has “continuously used the mark since January 16,
2002 and has common law rights of ownership as defined under
the Lantham [sic] Act and the laws of the State of New York
since February 2002.”
The parties agreed to resolve this proceeding by
Accelerated Case Resolution (“ACR”) in lieu of a trial.2
The Board’s order of June 14, 2011, memorializes the
substance of the parties’ telephone conference with the
Board regarding the ACR procedure for this case and notes
inter alia, the parties’ following stipulations:3
1. The “parties’ respective marks and corresponding
services at issue are related for likelihood of
confusion purpose.”
2. Opposer has standing to bring this proceeding.
3. The primary issue for resolution of this
proceeding is priority of use of the mark.

2 ACR is a procedure akin to summary judgment in which parties
can receive a prompt determination of the claims and defenses in
their case, but without the uncertainty and delay typically
presented by standard summary judgment practice. In order to
take advantage of ACR, the parties must stipulate that, in lieu
of trial, the Board can resolve any material issues of fact.
After the briefs are filed, the Board will issue a decision
within fifty days, which will be judicially reviewable as set out
in 37 CFR §2.145. Ballet Tech Foundation, Inc. v. Joyce Theater
Foundation, Inc., 89 USPQ2d 1262, 1266 n. 9 (TTAB 2008).

Opposition No. 91194106
4
4. Parties have stipulated to the authenticity of
documents produced in discovery; therefore, any
documents produced by adversary can be made of
record by submission as exhibits to ACR briefs.
5. Evidence submitted in connection with the briefs
shall be treated as the final record for this
case. See e.g., Freeman v. National Association
of Realtors, 64 USPQ2d 1700 (TTAB 2002); Miller
Brewing Co. v. Coy Int’l Corp., 230 USPQ 675 (TTAB
1986).
6. Preponderance of the evidence is the standard for
the burden of proof. Cf. Gasser Chair Co., Inc.
v. Infanti Chair Mfg. Corp., 60 F.3d 770, 34
USPQ2d 1822, 1824 (Fed. Cir. 1995).
Background
The formation of applicant’s car club was spearheaded
by Richard Shields in late 2001. Early in the club’s
formation and at its request, car enthusiast and graphic
designer, Edward Eksi presented his previously-designed LONG
ISLAND VETTES LOGO (shown below) for consideration as
applicant’s club logo:

3 Although mentioned in the order, the parties did not file a
stipulation of facts.
Opposition No. 91194106
5

Within a few months of the formation of applicant’s club, it
incorporated in the State of New York under the name “Long
Island Vettes, Ltd.,” publicly identified itself as “Long
Island Vettes,” and adopted the LONG ISLAND VETTES LOGO.
Messrs. Shields and Eksi were members of applicant’s club
for several years. In the late 2000’s, Messrs. Shields and
Eksi left applicant’s club and formed another car club.
Their club incorporated in the State of Nevada under the
name “Long Island Vettes, Inc.” and is the opposer in this
proceeding.
The Record
By operation of Trademark Rule 2.122, 37 CFR §2.122,
the record includes the pleadings and the application file
for applicant’s mark. The record also includes the
following testimony and evidence:
Opposition No. 91194106
6
A. Opposer’s Evidence
Opposer introduced Declarations of the following:4
Walter C. Aleman (Best of the Best Screen Printing
Inc.)

Ralph V. Cocchiola (founding member of applicant)

Richard Erdody (Acting Secretary of opposer)

Edward Eski (9/27/2011)(10/5/11) (creator of
LONG ISLAND VETTES LOGO)

Zileyha Eksi (wife of Edward Eksi)

Michael Gaudioso (witness to creation of LOGO)

Drew M. Moore (founding member of applicant)

Kimberly Rada (founding member and former
Treasurer of applicant)

Byron Reed (MV Sport)

Joseph Russotto Jr. (founding member of applicant)

Warren Schetzen (founding member of applicant)

Ralph Schroeder (founding member of applicant)

Richard Shields (founding member and former
President of applicant)

Todd Smith (witness to creation of LOGO)
Opposer also introduced the following Exhibits:
1. Page bearing sketches of Long Island Vettes Logo
containing notation “designed by Edward Eksi in May 2,
1999.” dated May 2, 1999;

4 The “Declarations” submitted by opposer are actually affidavits
sworn before notaries. To avoid confusion, we shall continue to
refer to them as “Declarations.”
Opposition No. 91194106
7
2. Copy of stamped addressed envelope to Edward Eksi
bearing illegible postmark;
3a, 3b and 4. Copies of documents dated 1/10/01,
1/06/2001 and 6/16/2001 from unknown source relating to
embroidery for LONG ISLAND VETTES LOGO design shown in
Exhibits;
5. Copy of Sales Order #21805 from Best of the Best
Screen Printing dated 2/9/01;
6-7. Copy of undated letter from Richie Shields to
“Dear Fellow Corvette Owners” accompanied by copy of
envelope addressed to Eksi with illegible postmark;
8-9. Copies of undated letter from “Richie” to “Ed”
accompanied by envelope addressed to Eksi with illegible
postmark; return address is Rich Shields;
10. Copy of March 16th, 2002 newsletter to “Dear
Friends” on letterhead bearing the name “Long Island Vettes,
Ltd.” and the LONG ISLAND VETTES Logo;
11. Copy of August 24-27, 2001 product List for
2000/Corvettes at Carlisle, Corvette Illustrations by Edward
Eksi;
12. Copy of U.S. Copyright Registration No. VA 1-651-
541 owned by Edward E Eksi, dba Edward Eksi Design for “Long
Island Vettes Logo Design,” featuring a modified version of
Opposition No. 91194106
8
the LONG ISLAND VETTES LOGO, with effective date of
registration on November 12, 2008;5
13. Copy of U.S. Copyright Registration No. VA 1-677-
565 owned by Edward E Eksi, dba Edward Eksi Design, for
“Long Island Vettes” with effective date of registration on
July 22, 2009;
14. Copy of 3/01/2002 communication from Internal
Revenue Service to “Long Island Vets Ltd., c/o Richard
Shields” with assignment of Employer Identification Number;
15-16. Copies of Invoices dated June and August 2009
from Edward Eksi/Edward Eksi Design to Long Island Vettes
Ltd.
Opposer also introduced additional exhibits, referred
to as “Proofs”:
“Proof No. 1.” Copy of what appears to be page 2 from
Long Island Vettes, Ltd. Certificate of Incorporation
bearing signature of “Richard Shields;”
“Proof No. 2.” Copy of N.Y.S. Department of State
report for Corvette Management Group Ltd., current through
June 9, 2010;

5 The lighthouse image shown in Copyright Registration No. VA 1-
651-541 is different than the lighthouse image shown in all of
opposer’s Declarations and its other exhibits; specifically, the
entire base of the lighthouse shown in VA 1-651-541 is in a dark
color as opposed to the LONG ISLAND VETTES LOGO initially
designed by Mr. Eksi and adopted by applicant which shows the
base having three sections with the middle section of base in
white.
Opposition No. 91194106
9
“Proof No. 3.” Copy of January 28th, 2002 letter on
Long Island Vettes’ letterhead to Lois Black of North
Bellmore Library from Richard Shields, President of Long
Island Vettes;
“Proof No. 4.” Copy of May 2nd, 2005 Meeting Minutes
for Long Island Vettes Ltd. (page 1 of 6);
“Proof No. 5.” Copy of February 7th, 2005 Long Island
Vettes Meeting Minutes (page 1 of 6);
“Proof No. 6.” Copy of Long Island Vettes March 2003
Minutes dated March 7, 2003 (page one).
B. Applicant’s Evidence
1. Copy of Long Island Vettes Alpha Membership List
PAGE: 1, dated 2/25/02;
2a and 2b. Unsigned “File Copy” of Certificate of
Incorporation of Long Island Vettes, Ltd. dated January 29,
2002 (2 pages);
2c. Copy of Filing Receipt from N.Y.S. Department of
State, Division of Corporations and State Records, for
incorporation of LONG ISLAND VETTES, LTD. on February 5,
2002; filed by Art Donnelly;
3a. Copy of letter from Hagerty Classic Insurance of
Traverse City, Michigan, to The Long Island Vettes, Ltd.
dated February 19, 2002;
Opposition No. 91194106
10
3b. Copy of Hagerty Insurance’s Club Liability
Application for Long Island Vettes, Ltd. bearing signature
of Richard Shields and dated 2/15/02;
3c. Copies of check nos.: 1002 dated March 11, 2002
payable to North Bellmore Public Library “For Library Room
Rental,” 1003 payable to Richard Shields “For P.O. Box
Rental,” and 1004 payable to Hagerty Insurance;
4a. Declaration of Carol Kalolekas, Secretary of
applicant;
4b. Declaration of Richard Fingerhut, Treasurer of
applicant;
5a. Copy of Corporate Charter for Long Island Vettes,
Inc. dated June 24, 2009 from Secretary of State, State of
Nevada;
5b. Copy of Articles of Incorporation for “LONG ISLAND
VETTS, Inc.” filed with Secretary of State of Nevada on
6/24/2009;
6a. Copy of page 1 of TEAS Plus Application for mark
LONG ISLAND VETTES filed by opposer;6
6b. Copy of certification of Judith Pascale, Clerk of
Suffolk County, State of New York, certifying that a search
of records of assumed business names, partnership

6 Both parties referred to opposer’s application Serial No.
77799366 in their Briefs and applicant submitted a copy of page 1
of the application as its Exhibit 6a. See Opposer’s ACR Brief
(docket #19) p. 4 (unnumbered); Applicant’s ACR Brief p. 3.

Opposition No. 91194106
11
certificates and certificates of incorporation from 1900 to
present for “Long Island Vettes” found no results, dated
December 4, 2009;
7a. Copy of Sales Order #21805 from Best of the Best
Screen Printing dated 2/9/01 (document same as opposer’s
Exhibit 5);
7b. Copy of Sales Order #21805 from Best of the Best
Screen Printing dated 2/9/05;
8a-c. Copies of Sales Orders from Canvas Originals
Inc. to “LI Vettes” and “L.I. Vetts” dated 7/10/02 and
9/23/02; and,
9. Copy of Long Island Vettes Meeting Minutes dated
February 11, 2002.
C. Applicant’s Objections to Evidence
Applicant objects to all of the Declarations submitted
by opposer on the ground that they “offer no legal evidence
pertaining to opposer’s priority of use,” and to the vast
majority of the Declarations on the additional ground that
they do not “delineate the legal basis for [the declarant’s]
knowledge that Edward Eksi ‘owned’ the trademark ‘Long
Island Vettes.’” Applicant’s objections are overruled.
Because the parties have stipulated that priority is the
factual issue before the Board, we will consider the
Declarations for whatever probative value they have
regarding priority.
Opposition No. 91194106
12
To the extent the Declarations concern Mr. Eksi’s
creation of the LONG ISLAND VETTES LOGO, they peripherally
relate to the timeline for the acquisition of trademark
rights which begins with the creation of a mark followed by
the more legally significant steps of adoption and use.
However, we agree with applicant that the Declarations fail
to provide the bases for the declarants’ beliefs that Mr.
Eksi “owned the trademark logo design ‘Long Island Vettes’.”
Accordingly, the Declarations do not constitute evidence of
Mr. Eksi’s trademark ownership of the LONG ISLAND VETTES
LOGO.
The Declarations submitted by opposer are of limited
evidentiary value. They are nearly identical in wording and
it is obvious they were not prepared in the declarants’ own
words.7 The fact that the language is nearly identical is
not fatal. In re Data Packaging Corp., 453 F.2d 1300, 172
USPQ 396, 399 (CCPA 1972). However, we are not persuaded
that the declarants stated their own knowledge; rather, they
appear to have simply recited conclusions provided by
opposer or Mr. Eksi, which is illustrated by the fact that
all of the Declarations are on “letterhead” bearing the LONG
ISLAND VETES LOGO with the name and address of opposer. See

7 For example, the Declarations contain the same grammatical
errors, e.g., “Edward Eksi’s original design of Long Island
Vettes logo was adapted and club officially awarded him to be the
‘Clubs Designer’ by than President and founder . . . .” (emphasis
added).
Opposition No. 91194106
13
In re Bausch & Lomb Inc., 206 USPQ 534, 538 (TTAB 1979)
(affiants simply concurred in conclusions to which they were
led by applicant . . . This lack of conviction undercuts
whatever persuasive value . . . the form affidavits may have
had). None of the declarants expressed knowledge of what a
trademark is or identified a single fact which could form a
basis for their conclusion that Mr. Eksi used or owned the
trademark. The lack of this type of information is
particularly significant where, as in this case, priority of
use of a trademark is the sole issue.
In view of the gaps and discrepancies in the
Declarations, the vast majority have minimal credibility,
but have been considered for the limited factual information
they provide.
Applicant also objects to opposer’s Exhibit 5 on the
ground that it is an altered version of the original
document.8 Opposer’s Exhibit 5 is a copy of Sales Order
#21805 from Best of the Best Screen Printing Corp. to
“Edward” with address of “Long Island Vettes” dated 2/9/01
for T-shirts bearing the LONG ISLAND VETTES LOGO which is
displayed in the Sales Order. The 2/9/01 date on this Sales
Order is almost one year prior to the formation of

8 Applicant’s ACR Brief, p. 6 (docket # 22). Opposer’s Exhibit 5
and other Exhibits produced by opposer concern alleged activities
of Mr. Eksi prior to the formation of opposer. Because such
documents ostensibly pertain to opposer’s implied (but unproven)
Opposition No. 91194106
14
applicant. Thus, it occupies a significant location on the
trademark timeline with respect to the respective adoption
and use of the LONG ISLAND VETTES name and LOGO by the
parties.
Applicant’s Exhibit 7b appears to be the same document
as opposer’s Exhibit 5 . . . except that applicant’s Exhibit
7b is dated for 2/9/05, exactly 4 years after the date shown
in opposer’s Exhibit 5.9 A careful comparison of opposer’s
Exhibit 5 and applicant’s Exhibit 7b shows that despite
their four-years-to-the-date spread, both Sales Orders have
the exact same Sales Order number and are identical except
for the year and the layout box shown on the bottom of the
Exhibits. A closer look at the layout boxes bears out
applicant’s charge that the earlier-dated Sales Order
document, i.e., opposer’s Exhibit 5, has been altered.
The bottom portion of Applicant’s Exhibit 7b dated
2/9/05, displays diagrams of the front and back sides of a
T-shirt with the diagram on the right side (i.e., showing
the back of the shirt) marked with an “X” to indicate the
placement of the logo on the back of the shirt. An
inspection of opposer’s Exhibit 5 shows the LONG ISLAND
VETTES LOGO situated on top of the T-shirt diagrams such

argument, or desire, that Eksi, Edward Eksi Design and opposer be
considered a single entity, they have not been not excluded.
9 Applicant’s Exhibit 7b is a copy of p. 13 of opposer’s 2/2/2010
submission to the USPTO in connection with its application no.
77799366.
Opposition No. 91194106
15
that only the outer left and right edges of the T-shirt
diagrams are visible; tellingly, the upper-right hand arm of
the “X” shown on the back side of the T-shirt in applicant’s
Exhibit 7b is still visible near the sleeve on the back side
of the T-shirt shown in opposer’s Exhibit 5. Thus, the
vestige of the “X” shown in opposer’s Exhibit 5 is a
telltale sign of the attempted “cover up” of the “X’s” that
were shown in applicant’s Exhibit 7b, confirming the
alteration of one of these documents.
Viewing the remaining text of these Sales Order
Exhibits, it is beyond belief that two hand-written Sales
Orders would be identical, down to the placement of the
hand-written letters and numbers falling in exactly the same
location, spacing and alignment on both forms.
The alteration of opposer’s Exhibit 5 to a date, such
as 2/9/01, that is earlier than applicant’s formation date
would cast serious doubt on applicant’s prior use
allegation, thus providing a significant motivation for the
alterations. Based upon the nature of the alterations,
i.e., the modified year from 2005 to 2001, and placement of
the LOGO over the T-shirt diagrams, we conclude that the
earlier-dated Sales Order shown in opposer’s Exhibit 5 was
indeed altered and is more probative of opposer’s intent
than prior use.
Opposition No. 91194106
16
We are further troubled by the Declaration of Walter
Aleman, of Best of the Best Screen Printing, submitted by
opposer. Mr. Aleman states that his company printed the
LONG ISLAND VETTES LOGO on T-shirts for a total cost of $324
on 2/2/01. This is the same amount reflected in opposer’s
altered Exhibit 5 which is dated 7 days later on 2/9/01.
Mr. Aleman also states that “original copy files are in my
directory, and copies of the files are also given to Edward
Eksi and could be presented to other parties if asked.” His
Declaration raises more questions than it answers.
Although Mr. Aleman mentions that documents were
provided to opposer,10 opposer has not provided copies of
any Sales Order bearing the 2/2/01 date addressed in his
Declaration. Additionally, Mr. Aleman’s statement that his
company printed the LONG ISLAND VETTES LOGO on the “left
chest and full back” of the T-shirts is consistent with the
Sales Order shown in applicant’s Exhibit 7b, which was dated
2/9/05, rather than opposer’s Exhibit 5 which does not
reflect the placement of the LOGO.
Opposer had ample opportunity to respond to applicant’s
serious allegation regarding the alteration of opposer’s
Exhibit 5, and to address any inconsistencies in Mr.

10 The files Mr. Aleman gave to Mr. Eksi are deemed to be in
opposer’s possession as Mr. Eksi is identified as opposer’s
“General Manager, Treasurer” on documents filed in this
proceeding.

Opposition No. 91194106
17
Aleman’s Declaration, but did not do so.11 The alteration
of opposer’s Exhibit 5 significantly impacts Mr. Aleman’s
credibility. Opposer’s silence on the discrepancies in the
Sales Orders represented in opposer’s Exhibit 5 and
applicant’s Exhibit 7b, further impugns opposer’s intent and
credibility. The alteration of Exhibit 5 and the lack of
any documents supporting the 2/2/01 transaction identified
in Mr. Aleman’s Declaration, adversely impact the
credibility of Mr. Aleman’s Declaration.
Opposer also objects to the 10/5/11 Eksi Declaration
and its attachment entitled: “Long Island Vettes Inc.
Supporter List of Priority Use of Long Island Vettes Logo
and Name” containing a list of names, addresses and
signatures of alleged “supporters” of Long Island Vettes
Inc.’s prior use of the LONG ISLAND VETTES LOGO and name.
This list is deficient from an evidentiary standpoint for
several reasons inter alia, it appears to be a document
created solely for use in this case and is not a business
record kept by opposer in the regular course of its
business. See Fed.R.Evid. 802(6). The document also lacks
information regarding the basis for the signors’ knowledge
about opposer’s prior use of the LONG ISLAND VETTES LOGO and
name. In view of the foregoing, we will consider the

11 Applicant’s ACR Briefs, p. 6 (docket ## 21, 22); [Applicant’s]
Objections to Evidence Submitted in Opposer’s ACR Reply Brief
(docket # 26).
Opposition No. 91194106
18
Declaration and its attachment for whatever limited
probative value it contains.
Applicant’s objection to opposer’s “Proof Nos. 3-6”
because they do not offer any evidence pertaining to
opposer’s priority of use, and because they do not
constitute rebuttal evidence, is denied.12 Opposer’s Proof
No. 3 is contained in the file history for opposer’s
application. Applicant previously affirmed that all of the
documents opposer submitted to the USPTO in connection with
the parties’ applications that bear the mark of “Long Island
Vettes” (without reference to opposer Long Island Vettes,
Inc.), are applicant’s property.13 Applicant has also
requested that the Board take notice of all documents
submitted to the USPTO in connection with opposer’s
application for the LONG ISLAND VETTES mark.14 In view of

12 Objections to Evidence Submitted in Opposer’s ACR Reply Brief
p. 2 (unnumbered) (docket #26).

13 Applicant’s ACR Brief, pp. 10-11 (docket # 22). Opposer
submitted correspondence and accompanying documents to the
examining attorney responsible for applicant’s application Serial
No. 77773462 on 11/5/2009 and 2/2/2010. Such third-party
protests to an application on the grounds asserted by opposer are
not appropriate, see the explanation in TMEP § 1715.01(b). While
it is unusual for such third-party submissions to form part of
the file history, applicant has not sought removal of opposer’s
submissions.

14 On page 3 of Applicant’s ACR Brief (docket #22), applicant
requests that the Board consider all documents submitted to the
USPTO with respect to registration [sic] numbers 77799366 and
77773462 (i.e., the trademark applications filed by the parties
for the LONG ISLAND VETTES mark). Application Serial No.
77773462 is the subject of this proceeding. Thus, its file
history is of record, including those documents submitted by
Opposition No. 91194106
19
the foregoing, applicant’s objection to opposer’s Proof No.
3 is overruled.
Opposer’s Proof Nos. 4-6 are copies of Meeting Minutes
of applicant which are identical in nature to the Meeting
Minutes submitted by applicant as its Exhibit 9, and
applicant’s objections to these Proofs are similarly
overruled, as are its objection to all of opposer’s evidence
on the ground that it is impossible to determine what
evidence may have been “forged, altered or created by
opposer to support their false allegations.”
With respect to applicant’s remaining objections to
opposer’s Exhibits and Declarations, we need not consider
the merits of these objections because the testimony and
materials that applicant seeks to strike from the record
have no bearing on the outcome of our ultimate decision.
We appreciate that the evidence submitted by the
parties has different levels of credibility and
probativeness, and that some of the evidence strains
credulity. We will treat such evidence accordingly and
consider the admissible evidence as a whole to determine
priority in this case. West Florida Seafood, Inc. v. Jet

opposer in connection with applicant’s application on 11/9/2009
and 2/2/2010. 37 C.F.R. § 2.122(b).
As to opposer’s application No. 7799366, opposer’s application
is deemed to be of record, see footnote 6; however, the remaining
contents of the application file history are only in the record
to the extent either party has submitted copies of documents from
the file history as evidence during this ACR procedure.
Opposition No. 91194106
20
Restaurants, Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1663 (Fed.
Cir. 1994).
Standing

Standing is a threshold issue that must be proved in
every inter partes case. Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982). In order to meet the standing requirement, a
plaintiff need only show that it has a real interest, i.e.,
a personal stake, in the outcome of the proceeding. See
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026
(Fed. Cir. 1999); and Jewelers Vigilance Committee, Inc. v.
Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2012, 2023-24 (Fed.
Cir. 1987). Opposer has alleged prior use of the term LONG
ISLAND VETTES (both with and without a design component) for
its automobile club membership services and the evidence
shows that it has incorporated to do business in the State
of Nevada under the name Long Island Vettes, Inc. The
parties have stipulated that their respective marks and
corresponding services at issue are related for purposes of
likelihood of confusion. This is sufficient to show that
opposer has a real interest in this proceeding and,
therefore, has standing.15

15 Opposer owns a pending application for registration of the mark
LONG ISLAND VETTES which could have provided a basis for
standing. However, because opposer did not properly introduce
its pending application, or submit evidence that its application
was refused registration and suspended pending the disposition of
Opposition No. 91194106
21
Priority
Opposer does not own an existing registration and
relies on its alleged common law rights in the mark LONG
ISLAND VETTES. To establish priority on its likelihood of
confusion claim under § 2(d) of the Trademark Act, opposer
must prove by a preponderance of the evidence that, vis-à-
vis applicant, it owns “a mark or trade name previously used
in the United States . . . and not abandoned . . . .” Thus,
opposer must prove that its trademark is inherently
distinctive, or has acquired distinctiveness before the date
on which applicant can establish its rights. Threshold.TV,
Inc. v. Metronome Enterprises, Inc., 96 USPQ2d 1031, 1036-37
(TTAB 2010) citing Otto Roth & Co. v. Universal Foods Corp.,
640 F. 2d 1317, 209 USPQ 40, 44 (CCPA 1981).
If opposer cannot prove that it used the mark as a
service mark, or in a manner analogous to a mark, before
either the filing date of applicant’s application or
applicant’s proven date of first use (which ever is
earlier), opposer cannot establish priority.16 Cf. Herbko
International, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64

this opposition proceeding, its application provides no basis for
standing. Additionally, we note that the parties’ stipulation to
opposer’s standing is not sufficient to confer standing.

16 In that event, we need not address the issue of inherent or
acquired distinctiveness. We note that the USPTO accepted
applicant’s claim of distinctiveness under § 2(f) based on
applicant’s assertion of five years of substantially exclusive
and continuous use of the LONG ISLAND VETTES mark.

Opposition No. 91194106
22
USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto Roth, 209 USPQ at
43; Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d
1711, 1714 (TTAB 1993).
Applicant filed its application on July 2, 2009, but
asserts an earlier date of use of the LONG ISLAND VETTES
mark. A review of the evidence concerning applicant’s
adoption and use of the LONG ISLAND VETTES name confirms its
use of the mark as a service mark several years prior to its
application filing date.
Edward Eksi designed the LONG ISLAND VETTES LOGO on or
about May 2, 1999, to use with his “Corvette
Illustrations.”17 According to the copyright registration
received by Mr. Eksi dba Edward Eksi Design for the LONG
ISLAND VETTES LOGO, Registration No. VA 1-651-541 registered
November 12, 2008, he completed the LONG ISLAND VETTES LOGO
in 2001 and it was first published in the U.S. on November
1, 2001.18 Opposer also owns Copyright Registration No. VA
1-677-565, registered July 22, 2009, for a “2-D artwork”
work entitled “LONG ISLAND VETTES.” Opposer did not provide
a copy of the deposit copy for this Copyright Registration

17 See 9/27/11 and 10/5/11 Declarations of Eksi; Declarations of
Zileyha Eksi, Michael Gaudioso (we note serious errors in the
jurat for the Gaudioso Declaration, including lack of notary’s
name and notary seal), and Todd Smith; and Opposer Exhibit 1.

18 Because the lighthouse image contained in the LONG ISLAND
VETTES LOGO featured in Copyright Registration No. VA 1-651-541
(opposer’s Exhibit 12) is different than the lighthouse image
shown in all of opposer’s Declarations and several of its other
Opposition No. 91194106
23
so there is no evidence which identifies the actual nature
of this work.19 In any event, registration of the works
identified in opposer’s Copyright Registration Nos. VA 1-
651-541 and VA 1-677-565 did not occur before or within 5
years of publication and hence, the Registrations do not
constitute prima facie evidence of the validity of the
copyright or the facts stated in the Certificates. 17
U.S.C. § 410. Moreover, ownership of a copyright confers no
trademark rights on the copyright owner. See Clamage
Industries Ltd. v. Glendinning Companies, Inc., 175 USPQ
362, 363 (TTAB 1972) and Penetred Corp. v. Uniroyal, Inc.,
162 USPQ 620, 622 (TTAB 1969) (copyright registration is
incompetent as evidence of use) citing Rap-in-Wax Paper Co.
v. Foilrapp, Inc., 122 USPQ 534, 535 (TTAB 1959).
Warren Schetzen knew Eksi from the LICOA (i.e., Long
Island Corvette Club of America) and other clubs for which
Eksi had created designs. On 10/20/01, Warren Schetzen
invited Eksi to a meeting of a new Corvette club being
organized by a few people including Schetzen, Richard

exhibits, it is unclear to which version of the LOGO the dates of
creation and publication refer. See footnote 5.
19 Copyright law does not protect names, titles, short phrases, or
names of businesses. See 17 U.S.C. § 102 and Copyright Circular
34 Copyright Protection Not Available for Names, Titles, or Short
Phrases; we assume that the work covered by this Registration
includes more than just the term LONG ISLAND VETTES.
Interestingly, this Registration asserts February 25, 2002, as
the date of publication which is after applicant’s priority date.

Opposition No. 91194106
24
Shields and Tony Zabrocki. Mr. Schetzen asked Eksi if he
could bring or design a logo for the new Corvette Club.20
Richard Shields, a founding member and first President
of the newly formed club which incorporated as applicant,
also invited Eksi to the January 7, 2002 club meeting.21 A
month later, on February 5, 2002, applicant, Long Island
Vettes Ltd., was incorporated in the State of New York.22
According to the Declarations of several of opposer’s
witnesses, applicant’s club “decided to adapt [sic] [Eksi’s]
design . . . on January 7, 2002.” Mr. Shields and other
Board members “officially awarded” Eksi to be the “Clubs
Designer” and Eksi was given “privileges to market and sell
his own merchandise since he owned the trademark logo design
for ‘Long Island Vettes.’ This arrangement was mutually
respected and understood by all members until 2009.”23
As early as January 28, 2002, applicant was conducting
business as a car club under the name LONG ISLAND VETTES as
reflected by its correspondence with the North Bellmore

20 Declaration of Walter Schetzen.

21 Declaration of Richard Shields.
22 Applicant’s Exhibit 2c.

23 Declarations of Ralph V. Cocchiola, Kim Rada (former Treasurer
of applicant), Joseph Russotto Jr., Drew M. Moore, Walter
Schetzen (some of the founding members of applicant), Richard
Shields (former President of applicant), Richard Erdody (Acting
Secretary of Opposer); although there is some discrepancy as to
the actual adoption date by applicant, it is clear that the LOGO
was previously created by Mr. Eksi.

Opposition No. 91194106
25
Library on letterhead bearing the name LONG ISLAND VETTES.24
By February, 2002, applicant, operating as Long Island
Vettes, Ltd., was conducting business with Hagerty Insurance
of Traverse City, Michigan, concerning club liability
insurance coverage.25 According to its February 25, 2002,
membership listing, applicant by then had several members
including at least one member who had a Pennsylvania
address.26
In March 2002, applicant received an Employer
Identification Number from the Internal Revenue Service27
and published a newsletter dated March 16, 2002, under the
name “Long Island Vettes, Ltd.” reporting on club activities
and featuring the LONG ISLAND VETTES LOGO.28 Accordingly,
for purposes of determining priority of use, applicant’s
date of first use of the LONG ISLAND VETTES service mark is
at least as early as March 16, 2002. See Corporate Document
Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477,
1479 (TTAB 1998)(for purposes of priority, a use-based

24 Opposer’s Proof No. 3 (1/28/02 letter to Lois Black of North
Bellmore Library).

25 Applicant’s Exhibits 3a, 3b and 3c; Hagerty Insurance is
identified in its letterhead as being located in Traverse City,
Michigan.

26 Applicant’s Exhibit 1.

27 Opposer’s Exhibit 14.

28 Opposer’s Exhibit 10 (3/16, 2002 letter from Shields to
“Friends” on letterhead bearing logo and “Long Island Vettes,
Ltd).
Opposition No. 91194106
26
applicant can rely upon use, including use analogous to
trademark use, prior to the filing date of its application;
whether or not this prior use is strictly intrastate is
inconsequential; trademark rights are created by use of the
mark in either intrastate or interstate commerce); Maids to
Order of Ohio Inc. v. Maid-to-Order Inc., 78 USPQ2d 1899,
1909 (TTAB 2006).
In view of the foregoing, opposer must establish its
priority before applicant’s proven March 16, 2002, date of
use. Opposer did not come into existence until its
incorporation in the State of Nevada on June 24, 2009,29 nor
did it previously file to do business under an assumed
business name in Suffolk County, New York.30 In an attempt
to prove its priority, opposer submits Mr. Eksi’s 10/5/2011
Declaration with an attachment entitled “Long Island Vettes
Inc. Supporter List of Priority Use of Long Island Vettes
Logo and Name.” This Supporter List does not constitute

29 Applicant’s Exhibits 5a and 5b; Nev. Rev. Stat. § 78.050:

Commencement of corporate existence.
1. Upon the filing of the articles of incorporation
pursuant to NRS 78.030 and the payment of the filing fees,
the Secretary of State shall issue to the corporation a
certificate that the articles, containing the required
statement of facts, have been filed. From the date the
articles are filed, the corporation is a body corporate, by
the name set forth in the articles of incorporation, subject
to the forfeiture of its charter or dissolution as provided
in this chapter. . . . 3. The filing of the articles of
incorporation does not, by itself, constitute commencement
of business by the corporation.

30 Applicant’s Exhibit 6b.
Opposition No. 91194106
27
evidence of opposer’s actual use of LONG ISLAND VETTES; no
dates are associated with opposer’s use of the name and,
more seriously, the Supporter List fails to identify the
party over which opposer supposedly has priority.
Threshold.TV, 96 USPQ2d at 1036-37 (to establish priority
must prove priority vis-à-vis applicant). See the
discussion regarding additional defects in this Exhibit
supra.
Opposer also tries to create the impression that Eksi,
Eski’s dba Edward Eksi Design and opposer are somehow
interrelated and should be viewed as a single entity by
submitting evidence relating to Mr. Eksi’s creation of the
LOGO, and various instances where Eksi’s name is used in
connection with the LOGO. However, there is no proof of any
legal relationship between them. Therefore, unless Eksi
established prior trademark rights in the LONG ISLAND VETTES
name and assigned his rights to opposer, opposer cannot
establish priority over applicant’s March 16, 2002 date of
use.
Mr. Eksi’s creation of the LONG ISLAND VETTES LOGO,
which incorporates the name “Long Island Vettes,” in 1999,
does not endow him with prior rights in either the LOGO or
the name. The right to register flows from the use of a
mark, not from mere invention or creation. Hydro-Dynamics,
Inc. v. George Putnam & Co., Inc., 811 F.2d 1470, 1 USPQ2d
Opposition No. 91194106
28
1772, 1774 (Fed. Cir. 1987); La Maur Inc. v. International
Pharmaceutical Corporation, 199 USPQ 612, 616 (TTAB 1978)
(conception of a mark does not establish priority of use).
There is no evidence that Mr. Eksi acquired trademark
or service mark rights in the LONG ISLAND VETTES LOGO or
name. In fact, the record supports the contrary. Mr. Eksi
never used the LONG ISLAND VETTES name in connection with
car club services. While he placed embroidery orders for
the LOGO in 2001, and advertised clothing and collateral
products bearing the LOGO, there is no evidence of any
actual sales of these products by Mr. Eksi.31 Moreover,
opposer’s evidence, namely, the Declarations of several
founding members of applicant’s club, indicate that when
applicant’s President and Board adopted Mr. Eksi’s LONG
ISLAND VETTES LOGO for the club’s use, the club awarded Mr.
Eksi “privileges” to sell merchandise bearing the LOGO.32
Thus, from the time applicant adopted the LOGO, Mr. Eksi’s
use of the LOGO on any such merchandise was pursuant to the
express “privileges” or permission granted to him by
applicant.
In view of the lack of evidence showing that Mr. Eksi
owned any trademark or service mark rights in the LONG

31 Opposer’s Exhibits 3a, 3b, 4, 11 and Declaration of Byron Reed.

32 Notably, none of the Declarations mention that “privileges” in
the LONG ISLAND VETTES name were granted to Mr. Eksi.

Opposition No. 91194106
29
ISLAND VETTES LOGO or name,33 Mr. Eksi had no rights that
could have been transferred to opposer. Even if Mr. Eksi
had any trademark rights in the LOGO prior to its adoption
by applicant, such rights would have been extinguished or
transferred to applicant when applicant adopted the LOGO and
granted Eksi permission to sell products bearing the LOGO.
Applicant freely used the LONG ISLAND VETTES name for
several years without any express approval by, or objection
from, either opposer or Mr. Eksi. This is consistent with
the June 15 and August 6, 2009 Invoices issued by Edward
Eksi/Edward Eski Design to applicant which charge applicant
for its use of the LOGO; not the LONG ISLAND VETTES name.34
Indeed, neither opposer nor Mr. Eksi ever objected to
applicant’s use of LONG ISLAND VETTES until applicant
attempted to register the LONG ISLAND VETTES name. While
the record is silent as to the origin of the name LONG
ISLAND VETTES, it is clear that as between opposer and
applicant, applicant is the prior user of the LONG ISLAND
VETTES name in connection with car club services.
Conclusion
Applicant used the LONG ISLAND VETTES service mark
several years before opposer’s club incorporated on June 24,

33 Opposer’s Exhibits 3a, 3b and 4, appear to be in the nature of
sales orders dated prior to the existence of applicant, and show
Eksi’s name in connection with the name “Long Island Vettes.”
However, they do not establish his use of the name as a trademark
or service mark, nor is there any other evidence that does so.
Opposition No. 91194106
30
2009. In view of the fact that opposer was not in existence
as of applicant’s date of first use of the mark in commerce,
and did not acquire rights from any predecessor, opposer has
not carried its burden of proving prior use of LONG ISLAND
VETTES by a preponderance of evidence. For the reasons set
forth above, priority rests with applicant as the prior user
of the LONG ISLAND VETTES service mark.

Decision: The opposition is dismissed with prejudice.

34 Opposer’s Exhibits 15 and 16.