Porscia Fashion Inc.v.Schumacher GmbH

Trademark Trial and Appeal Board

Mar 2, 2020

92071235 (T.T.A.B. Mar. 2, 2020)

JK
March 2, 2020

Cancellation No. 92071235

Porscia Fashion Inc.

v.
Schumacher GmbH

Before Mermelstein, Ritchie and Kuczma.
Administrative Trademark Judges.

By the Board:

Respondent Schumacher GmbH (Schumacher) owns U.S. Registration No.
5038391, issued on September 13, 2016, pursuant to Trademark Act Section 66(a), 15
U.S.C. § 1141f(a), for the design mark shown below, for goods and services in
International Classes 3, 4, 9, 14, 18, 25, 35, 42 and 45.

With its answer, Respondent included a copy of the parties’ July, 2015 Coexistence
Agreement (“Agreement;” discussed herein) wherein this mark is identified as a
“national German trademark” and as “SCHUMACHER ICON II.” 4 TTABVUE 9-10.
Petitioner Porscia Fashion Inc. (Porscia) filed a petition to cancel this registration
in International Classes 3, 9, 18 and 25, on the ground of likelihood of confusion. It
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92071235

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pleads ownership of U.S. Registration No. 4550549, issued on June 17, 2014,
pursuant to Trademark Act Section 44(e), based on Community Trademark
Registration No. 010550028 for the design mark shown below for goods in
International Classes 3, 9, 18 and 25:

In the Agreement, this Community Trademark registration is referred to as
“PORSCIA LOGO.” 4 TTABVUE 8-9.
In its answer, Schumacher denied Porscia’s salient allegations, and set forth the
following first affirmative defense:
Petitioner’s claims are barred by contractual estoppel. Petitioner and
Registrant entered into a valid and binding Coexistence Agreement (the
“Agreement”) dated July 21, 2015, attached as Exhibit A hereto. As part
of the Agreement, Petitioner agreed “not to hinder, oppose, or otherwise
attack and/or challenge the use of” Registrant’s mark at issue in this
proceeding. Accordingly, Petitioner is barred from bringing this Petition
for Cancellation by the plain terms of the Agreement.

4 TTABVUE 4, 8-13.
On August 21, 2019, Schumacher filed a motion for summary judgment pursuant
to Fed. R. Civ. P. 56, with respect to its first affirmative defense. The motion is fully
briefed.
Analysis
Summary judgment is appropriate where the movant demonstrates that there is
no genuine dispute as to any material fact, and that it is entitled to judgment as a
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matter of law. Fed. R. Civ. P. 56(a). A party asserting that a fact cannot be true or is
genuinely disputed must support its assertion by either: 1) citing to materials in the
record, or 2) showing that the materials cited do not establish the absence or presence
of a genuine dispute, or that an adverse party cannot produce admissible evidence to
support the fact. Fed. R. Civ. P. 56(c). A factual dispute is genuine if, on the evidence
of record, a reasonable fact finder could resolve the matter in favor of the non-moving
party. Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22
USPQ2d 1542, 1544 (Fed. Cir. 1992).
On a motion for summary judgment, the Board may not resolve any factual
dispute; it may only determine whether a genuine dispute of material fact exists.
Meyers v. Brooks Shoe Inc., 912 F.2d 1459, 16 USPQ2d 1055, 1056 (Fed. Cir. 1990).
See also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”)
§ 528.01 (2019), and cases cited therein. The non-movant must be given the benefit
of all reasonable doubt as to whether a genuine dispute as to any material fact exists,
and the evidentiary record on summary judgment and all justifiable inferences to be
drawn from the undisputed facts must be viewed in the light most favorable to the
non-movant. Opryland, 23 USPQ2d at 1472. “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.” Venture Out Props. LLC v. Wynn Resort
Holdings LLC, 81 USPQ2d 1887, 1890 (TTAB 2007); see also Fed. R. Civ. P. 56(c)(1);
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Enzo Biochem v. Gen-Probe, 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005);
Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 221
USPQ 561, 564 (Fed. Cir. 1984); Enbridge Inc. v. Excelerate Energy L.P., 92 USPQ2d
1537, 1540 (TTAB 2009).
The Board may consider the terms of a contract if and to the extent that
construction of it is necessary to a decision on matters within the Board's
jurisdiction. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 129
USPQ2d 1027, 1031 (TTAB 2018) (citing Selva & Sons, Inc. v. Nina Footwear,
Inc., 705 F.2d 1316, 217 USPQ 641, 647 (Fed. Cir. 1983); M-5 Steel Mfg. Inc. v.
O'Hagin’s Inc., 61 USPQ 2d 1086, 1094-95 (TTAB 2001). Contractual estoppel is
effectively a threshold inquiry into the enforceability of an agreement, and the
defense is intrinsically connected with plaintiff’s standing. Australian Therapeutic
Supplies Pty. Ltd., 129 USPQ2d at 1028 n.10.
Here, the parties do not dispute the existence of their Agreement; rather, the
parties dispute the effect of the Agreement, in particular whether the terms bar
Porscia from challenging Schumacher’s registration in the United States. To prevail
on summary judgment, Schumacher carries the burden of demonstrating that there
is no genuine dispute of material fact that Porscia’s standing to bring its likelihood of
confusion claim is barred by the parties’ Agreement.
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
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1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 185, 187 (CCPA 1982). To establish standing, a plaintiff must show that
it has a “real interest” in the outcome of the proceeding and a “reasonable basis” for
believing that it would suffer damage if the mark is registered. Coach Servs. Inc. v.
Triumph Learning LLC, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012); Ritchie, 50
USPQ2d at 1025; Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 823 F.2d 490, 2
USPQ2d 2021, 2023-24 (Fed. Cir. 1987).
In its motion, Schumacher mainly addresses Paragraphs 6, 7, 8 and 13 of the
Agreement, which set forth the following:
6. PORSCIA undertakes not to hinder, oppose, or otherwise attack
and/or challenge the registration and renewal of the SCHUMACHER
ICON II trademarks, existing worldwide upon conclusion of the
agreement.

7. PORSCIA undertakes, without any territorial restrictions, not to
hinder, oppose, or otherwise attack and/or challenge the application for
registration, the registration and renewal of the future SCHUMACHER
ICON II trademarks, not yet in existence upon the conclusion of this
agreement, on condition that these trademarks are not seeking
registration for, or are registered as the SCHUMACHER ICON II in
combination with the terms “Porscia”, “yeganeh”, “Yeganeh Porscia”
and/or respective abbreviations of the afore-mentioned terms, “YP”, “Y”,
“P”, and/or terms similar thereto, or further word and/or graphical
elements which are capable of being a trademark and are protected for
the benefit of PORSCIA.

8. PORSCIA undertakes, without any territorial restrictions, not to
hinder, oppose, or otherwise attack and/or challenge the use of
SCHUMACHER ICON II on condition that SCHUMACHER II ICON is
not used in combination with the terms “Porscia”, “yeganeh”, “Yeganeh
Porscia” and/or respective abbreviations of the afore-mentioned terms,
“YP”, “Y”, “P”, and/or terms similar thereto, or further word and/or
graphical elements which are capable of being a trademark and are
protected for the benefit of PORSCIA.

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13. This Agreement is governed by German law and is valid worldwide.
Paragraphs 3, 4 and 5 of the Agreement set forth reciprocal terms whereunder
“Schumacher undertakes not to hinder, oppose, or otherwise attack and/or challenge”
the, respectively, application for registration of, or use of, Porscia’s trademark. 10
TTABVUE 18.
Finally, in the preamble paragraphs of the Agreement, the parties state that they
have agreed that their trademarks “will be able to coexist without causing confusion.”
10 TTABVUE 17.
The Parties’ Arguments
Schumacher argues that it agreed to withdraw and cease using another mark not
involved in this proceeding (referred to in the Agreement as its “Schumacher Icon I”
mark) in exchange for Porscia’s promise not to hinder, oppose, attack or challenge the
registration and renewal of its subject registration worldwide. 10 TTABVUE 3.
Schumacher submitted:1
• Porscia’s EUIPO Registration No. 010550028, the basis for perfecting its
pleaded registration (10 TTABVUE 8);

• Porscia’s International Trademark No. 1213282 for the same mark as that in
its pleaded registration (10 TTABVUE 13);

• the Agreement (10 TTABVUE 15); and

1 The materials Schumacher submitted for the first time in its reply brief have been given no
consideration. Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286-87 (TTAB 1998)
(request in reply brief proposed therein for the first time deemed untimely). Cf. Fuji Photo
Film Co. v. Jazz Photo Corp., 394 F.3d 1368, 73 USPQ2d 1678, 1685 n.4 (Fed. Cir. 2005)
(court will not consider arguments raised for the first time in reply brief and not addressed
in an opening brief as those arguments are considered to have been waived).

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• the declaration of Dorothee Schumacher-Singhoff, Managing Director of
Schumacher, attesting to the validity of the Agreement (10 TTABVUE 22).

Contesting the motion, Porscia maintains that it signed the Agreement with the
understanding that it does not apply to, and therefore does not prohibit its challenge
to, Schumacher’s registration of the mark in the United States. Porscia maintains
that it “would never agree to sign an agreement that waives worldwide rights on
future challenges related to its trademark,” and notes that it has filed cancellation
proceedings worldwide against similar marks of other parties. 12 TTABVUE 5.
Evidentiary submissions from Porscia include:
• emails between the parties in 2018 regarding a similar cancellation action in
the United Kingdom to show that that action raised questions about the
validity and applicability of the Agreement and that Schumacher
acknowledged the need for a new agreement (12 TTABVUE 4, 18-27);

• the declaration of Porscia Yeganeh, Porscia’s Chief Executive Officer, stating,
inter alia, that the Agreement limits Schumacher’s current and future
trademark registrations exclusively to Germany, that English is not her first
language, that the terms of the Agreement were misrepresented to her at the
time of execution, that she “signed the (Agreement) by mistake” and that she
believes the Agreement “is now null and void.” (12 TTABVUE 29-30).

Decision
We have considered the terms of the Agreement as a whole, and find that
Schumacher has met its burden to show that there is no genuine dispute of material
fact that the Agreement precludes Porscia from establishing standing to bring this
petition to cancel Registration No. 5038391.
Paragraphs 7 and 8 of the Agreement expressly set forth terms that, without the
need for parol or other extrinsic evidence, define the territorial scope of Porscia’s
agreement not to hinder, oppose or otherwise attack or challenge Schumacher’s
Cancellation No. 92071235

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application to, respectively, register and use the subject mark. In particular, the
terms “without any territorial restrictions” designate that the parties agreed that the
stated restrictions on Porscia’s ability to attack or challenge the registration and use
of Schumacher’s subject mark extend to all territories worldwide. By the plain terms
of the Agreement, this includes the United States. No terms in the Agreement can be
read to limit the worldwide geographic scope of the relevant provisions of the
Agreement. The Board has the authority to uphold the terms of the Agreement. Cf.
Vaughn Russell Candy Co. v. Cookies in Bloom, Inc., 47 USPQ2d 1635, 1638 n. 6
(TTAB 1998) (Board noted that “[w]hile it does not lie within the jurisdiction of the
Board to enforce the contract between the parties, agreements to cease use of a mark
or to not use a mark in a certain format are routinely upheld and enforced.”).
Although Porscia disagrees with Schumacher on the effect of the Agreement, such
disagreement does not raise an issue of fact because the interpretation of a contract
is a question of law. Meds. Co. v. Hospira, Inc., 881 F.3d 1347, 125 USPQ2d 1598,
1600 (Fed. Cir. 2018); Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d
1526, 1530 (TTAB 2008) (“Because construction of a contract is a question of law,
resolution of the meaning and interpretation of a contract is appropriate
on summary judgment.”) (citing Interstate Gen. Gov’t Contractors, Inc. v. Stone, 980
F.2d 1433, 1434 (Fed. Cir. 1992) (“Interpretation of a contract is a legal question ....”)).
As noted above, Ms. Yeganeh states in her declaration that English is not her
first language; the terms of the Agreement were misrepresented to her at the time of
execution; she “signed the (Agreement) by mistake;” and the Agreement “is now null
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and void.” 12 TTABVUE 29-30. Porscia points to German Civil Code BGB § 119(1),
entitled “Voidability for Mistake,” that governs the capacity to contract, and states:
(1) A person who, when making a declaration of intent, was mistaken
about its contents or had no intention whatsoever of making a
declaration with this content, may avoid the declaration if it is to be
assumed that he would not have made the declaration with knowledge
of the factual position and with a sensible understanding of the case.2

However, other than Ms. Yeganeh’s declaration, and the vague statement in Porscia’s
brief that she “was advised and of the understanding that the Agreement with
(Schumacher) was limited to Germany,” Porscia did not set forth evidence that makes
a prima facie case of a mistake such as would operate to render the Agreement
voidable under this provision.3
In summary, on the record on summary judgment there is no genuine dispute
with respect to the material fact that under the parties’ Agreement Porscia is
contractually estopped from attacking or challenging Schumacher’s registration of
the subject mark in the United States. Under authorities that govern whether a party
can establish standing to bring a petition to cancel a U.S. registration, the consequent

2 https://www.gesetze-im-internet.de/englisch_bgb/englisch_bgb.html#p0353.

3 Similarly, Porscia has not made a prima facie case of mistake, as that term is defined and
held to be a basis for voiding a contract under U.S. law. Porscia merely mentions Restatement
of Contracts, a source which discusses contract law in the U.S. and which explains, for
instance, the definition of “mistake” in such a manner as to distinguish the term from how it
is used in common speech. Restatement 2d. of Contracts § 151 cmt. a (1979). 12 TTABVUE
8. The term “mistake” with respect to contracts is defined as “The situation in which either
(1) the parties to a contract did not mean the same thing, or (2) at least one party had a belief
that did not correspond to the facts or law.” Mistake, Black’s Law Dictionary (10th ed. 2014).
In any event, a prima facie case has not been made.
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determination is that Porscia cannot establish standing to challenge Registration No.
5038391. Trademark Act § 14, 15 U.S.C. § 1064. Trademark Rule 2.111(b).
Accordingly, on this record, having drawn all inferences in the light most
favorable to Porscia, we find that Schumacher has satisfied its burden to demonstrate
that there is no genuine dispute of material fact that the parties’ Agreement bars
Porscia from petitioning to cancel Schumacher’s subject registration. Based on these
findings, Schumacher’s motion for summary judgment on its affirmative defense of
contractual estoppel is granted.
The petition to cancel is denied.