Quality Bicycle Products, Inc.v.Middlebrook Design LLC DBA Love Traverse City

Trademark Trial and Appeal Board

Apr 26, 2016

No. 92060428 (T.T.A.B. Apr. 26, 2016)

WINTER
Mailed: April 26, 2016

Cancellation No. 92060428
Quality Bicycle Products, Inc.
v.
Middlebrook Design LLC
DBA Love Traverse City

Before Zervas, Bergsman, and Wellington,
Administrative Trademark Judges.

By the Board:

This case now comes up for consideration of Petitioner’s motion for summary
judgment on Respondent’s counterclaim of non-use, and on the parties’ cross-motions
for summary judgment on Petitioner’s claim of likelihood of confusion.
For purposes of this order, we presume the parties’ familiarity with the
arguments made and the materials submitted in connection with the subject motions.
Background
Petitioner, Quality Bicycle Products, Inc., seeks to cancel two registrations owned
by Respondent, Middlebrook Design LLC dba Love Traverse City, for the marks 45
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
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92060428

2
DEGREES NORTH and design1 and 45º NORTH and design,2 shown below:

and

As the ground for cancellation, Petitioner alleges, inter alia, likelihood of confusion.
In support of its claim of likelihood of confusion, Petitioner pleaded ownership of
trademark Registration No. 4268136 for the mark 45NRTH in standard characters
for use in connection with “bicycle parts, namely, tires.”3 Petitioner refers to the claim
of misrepresentation on the ESTTA cover sheet to the petition for cancellation;
however, misrepresentation is not pleaded in the attached petition. Therefore, said
claim is insufficient and will not be considered. See Embarcadero Technologies, Inc.
v. RStudio, Inc., 105 USPQ2d 1825, 1827 n.2 (TTAB 2013) (“Although the content of
the ESTTA cover sheet is read in conjunction with the notice of opposition as an

1 U.S. Reg. No. 4496120, issued March 11, 2014, for use in connection with “Headwear;
Hooded sweatshirts; T-shirts.”

2 U.S. Reg. No. 4414967, issued October 8, 2013, for use in connection with “Headwear;
Hooded sweatshirts; T-shirts.”

3 U.S. Reg. No. 4268136, issued January 1, 2013.

Cancellation No. 92060428

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integral component, the mere mention of a ground therein is insufficient.”). In any
event, it is not the subject of the parties’ summary judgment motions.
Respondent denied the salient allegations of the complaint and filed a
counterclaim to cancel Petitioner’s registration on the ground that the underlying
application, as well as Petitioner’s two pending applications, were “void ab initio.” In
support thereof, Respondent alleges that Petitioner had not used its 45NRTH mark
in commerce with any of the “services” identified as of the May 15, 2012 filing date of
the application and on the October 1, 2011 alleged date of first use anywhere and in
commerce, as required under Sections 1(a) and 45 of the Trademark Act.
Petitioner filed an answer to the counterclaim and alleged two affirmative
defenses to the counterclaim, namely, that the counterclaim is barred by Petitioner’s
prior registration U.S. Reg. No. 4268136 and by Respondent’s knowledge of
Petitioner’s prior use and registration of the mark
Respondent’s Counterclaim
Before we can address Petitioner’s motion for summary judgment on Respondent’s
counterclaim, we must first consider two issues raised by Respondent’s pleading.
First, Petitioner’s two pending applications identified in the counterclaim,
application Serial Nos. 86232330 and 83232342, have not yet been approved for
publication and cannot be the subject of the counterclaim. Until a registration
actually issues, there is no registration to cancel and only a registration may be the
subject of a counterclaim. TBMP § 307.03 (2015). Therefore, reference to the two
applications in the counterclaim is hereby stricken. See Fed. R. Civ. P. 12(f).
Cancellation No. 92060428

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Accordingly, the parties’ respective arguments and evidence pertaining to Petitioner’s
two pending applications, which are made or offered in connection with Petitioner’s
motion for summary judgment, will not be considered.
Second, with respect to the allegation that Petitioner had not used its mark by the
October 1, 2011 alleged date of first use anywhere and in commerce, said allegation
does not constitute a valid claim of non-use. A valid claim of non-use must allege that
the owner of the underlying use-based application did not use the applied-for mark
as of the filing date of the application. Therefore, as long as the owner used the mark
in commerce by the filing date, it is immaterial whether the stated dates of first use
may be incorrect. Accordingly, to the extent Respondent’s non-use claim alleges that
there was no bona fide use prior to the claimed first use dates in the application, said
claim is stricken. Id. See ShutEmDown Sports, Inc. v. Carl Dean Lacy, 102 USPQ2d
1036, 1045 (TTAB 2012) (failure to use mark before application date on any of the
goods or services listed means that the registration is void ab initio.).
In view of the foregoing, we construe Respondent’s counterclaim to be comprised
of the following allegation:
8. Upon information and belief, Petitioner had not used the “45NRTH” mark
in commerce on or in connection with any of the goods identified in Application
Serial No. 85625684 and resulting in Registration No. 4268136, as of the May 15,
2012 filing date of the application, as required under Trademark Act Sections 1(a)
and 45, 15 U.S.C. §§ 1051(a) and 1127.

Cancellation No. 92060428

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Petitioner’s Motion for Summary Judgment
• Legal Standard
Summary judgment is an appropriate method of disposing of cases in which there
is no genuine dispute with respect to any material fact, thus leaving the case to be
resolved as a matter of law. See Fed. R. Civ. P. 56(c)(1). A party moving for summary
judgment has the burden of demonstrating the absence of any genuine dispute as to
a material fact, and that it is entitled to judgment as a matter of law. See Celotex
Corp. v. Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting
Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987). 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. See Opryland USA Inc. v. Great American 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).
Additionally, the evidence of record and all justifiable inferences that may be drawn
from the undisputed facts must be viewed in the light most favorable to the non-
moving party. See Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d
2027 (Fed. Cir. 1993); and Opryland USA, 23 USPQ2d at 1472.
When a moving party’s motion for summary judgment demonstrates that there
is no genuine dispute as to any material fact and the moving party is entitled to
judgment, the burden shifts to the non-moving party to demonstrate the existence of
a genuine dispute regarding at least one material fact which requires resolution at
trial. The non-moving party, however, may not rest on the mere allegations of its
Cancellation No. 92060428

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pleadings and assertions, but must designate specific portions of the record or
produce additional evidence showing the existence of a genuine dispute as to a
material fact for trial. See Barmag Barmer Maschinenfabrik AG v. Murata
Machinery, Ltd., 731 F.3d 831, 221 USPQ 561, 564 (Fed. Cir. 1984) (“The party
opposing the motion must point to an evidentiary conflict created on the record at
least by a counter statement of a fact or facts set forth in detail in an affidavit by a
knowledgeable affiant.”).
Moreover, where the nonmoving party will bear the burden of proof at trial on a
dispositive issue, a summary judgment motion may properly be made in reliance
solely on the “pleadings, depositions, answers to interrogatories, and admissions on
file” and “requires the nonmoving party to go beyond the pleadings and by her own
affidavits, or by the depositions, answers to interrogatories, and admissions on file,
designate specific facts showing that there is a genuine issue for trial.” Celotex Corp.
v. Catrett, 477 U.S. at 324. That is, the moving party may discharge its burden by
showing that there is an absence of evidence to support the nonmoving party’s case.
Id. at 325; Copelands’ Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1298
(Fed. Cir. 1991).
An application can be held void if the plaintiff pleads and proves non-use of a mark
for all identified goods prior to the application filing date. Grand Canyon West Ranch
LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1697 (TTAB 2006); Justin Industries, Inc.
v. D.B. Rosenblatt, Inc., 213 USPQ 968, 974-75 (TTAB 1981) (application void where
application filed before first order or sale and delivery of goods under the mark
Cancellation No. 92060428

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occurred). Petitioner argues that the evidence of record shows that there is no genuine
dispute that it was using the mark 45NRTH with “Bicycle parts, namely, tires” prior
to the filing date of the underlying application, i.e., May 15, 2012. Petitioner, as the
counterclaim defendant and moving party, must establish that there is no genuine
dispute regarding this contention.
• Petitioner’s Evidence
In support of its motion, Petitioner has submitted the following pertinent
evidence:
1. A copy of a November 2, 2015 printout from the USPTO Trademark Status
& Document Retrieval (TSDR) database of Application Serial No. 85625684
(the underlying application of the registration sought to be cancelled),
which includes a photograph of a tire showing the mark 45NRTH and shows
that the application was filed on May 15, 2012 (9 TTABVUE 14-21; Exh. A.
to the declaration of Audrey Babcock, Petitioner’s counsel);
2. A copy of a November 2, 2015 printout from the USPTO Trademark
Electronic Search System (TESS) database showing the record of
Petitioner’s registration for the mark 45NRTH, attached (9 TTABVUE 24-
26; Exh. C to the Babcock declaration);
3. A copy of spreadsheets submitted under seal showing invoice dates for sales
of various types of tires, e.g., “45Nrth Dillinger Studles[s]26x4” 120tpi” or
“45North Xerxes 700x30, 27tpi, 140 studs,” beginning on October 6, 2011
through December 3, 2013 (10 TTABVUE 77-239; Exh. D, Part 1, to
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Babcock declaration) and from October 6, 2011 through June 30, 2015 (11
TTABVUE 2-290; Exh. D, Part 2, to Babcock declaration).
• Decision
The photograph in the underlying application showing the registered mark
45NRTH on the bicycle tire, along with the invoices indicating sales of such tires since
October 6, 2011, establish that there is no genuine dispute that Petitioner used the
mark 45NRTH in connection with “bicycle parts, namely, tires” on or before the filing
date of the underlying application, i.e., May 15, 2012.
In contrast, Respondent has not submitted any evidence that would indicate that
there is a genuine dispute as to whether Petitioner used its 45NRTH mark in
connection with “bicycle parts, namely, tires” on or before the filing date of the
underlying application. In fact, Respondent does not respond whatsoever to this
claim. Thus, Respondent has failed to reveal specific facts showing that there is a
genuine issue for trial. Celotex Corp. v. Catrett, 477 U.S. at 324. Rather, Respondent
argues, in essence, that a genuine dispute exists with respect to an unpleaded issue,
i.e., whether Petitioner uses the designation 45NRTH in an ornamental manner, not
as a trademark, for the various clothing items identified in Petitioner’s two pending
applications. As discussed supra, Petitioner’s two pending applications are not the
subject of Respondent’s counterclaim.4 Therefore, any discussion related to those

4 Moreover, while the ESTTA cover sheet forms part of the pleadings, simply listing
Petitioner’s pending applications on the ESTTA cover sheet does not make them of record.
Cf. Melwani v. Allegiance Corp., 97 USPQ2d 1537, 1540 (TTAB 2010) (“[M]ere inputting of a
registration number when prompted by ESTTA ... is insufficient to make the pleaded
registrations of record”).
Cancellation No. 92060428

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applications is immaterial to the question before us, i.e., whether there is a genuine
dispute that Petitioner used its 45NRTH mark in connection with “bicycle parts,
namely, tires” on or before the filing date of the underlying application. Further, any
factual issues that might conceivably exist in connection with Petitioner’s use of its
mark for clothing items do not raise a factual question sufficient to preclude summary
judgment in regard to Petitioner’s use of its mark with bicycle tires. See Pure Gold,
Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741, 743 (Fed. Cir. 1984).
In view of the foregoing, Petitioner has met its burden on summary judgment by
showing that there is no genuine dispute of fact that it used its 45NRTH mark for
“bicycle parts, namely, tires” on or before the filing date of the underlying application.
Celotex, 477 U.S. at 325; Copelands’ Ent., 20 USPQ2d at 1298. Accordingly,
Petitioner’s motion for summary judgment on Respondent’s non-use counterclaim is
granted5 and said counterclaim is dismissed with prejudice.
Respondent’s Motion for Summary Judgment and Petitioner’s Cross-Motion
for Summary Judgment on Petitioner’s Claim of Likelihood of Confusion

Respondent requests summary judgment in its favor on Petitioner’s claim of
likelihood of confusion. In response, Petitioner seeks summary judgment in its favor
on its claim. Where, as here, the parties have filed cross-motions for summary
judgment, each party has the initial burden of demonstrating the absence of any
genuine dispute of material fact with respect to its own motion. See Univ. Book Store

5 Because this decision is interlocutory and nonfinal in nature, any appeal thereof can be
raised only after final disposition of this proceeding. See Copelands’ Enterprises Inc. v. CNV
Inc., 12 USPQ2d 1562 (Fed. Cir. 1989).

Cancellation No. 92060428

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v. Univ. of Wisconsin Bd. of Regents, 33 USPQ2d 1385 (TTAB 1994). If the moving
party is able to meet this initial burden, the burden shifts to the nonmoving party to
demonstrate the existence of specific genuinely disputed facts that must be resolved
at trial. The nonmoving party may not rest on mere allegations or assertions, but
must designate specific portions of the record or produce additional evidence showing
the existence of a genuine dispute of material fact for trial. Should the nonmoving
party fail to raise a genuine dispute of material fact as to an essential element of the
moving party’s case, judgment as a matter of law may be entered in the moving
party’s favor. Finally, where, as here, both parties have moved for summary
judgment, the mere fact that they have done so does not necessarily mean that there
are no genuine disputes of material fact, or authorize the resolution of such disputes,
or dictate that judgment should be entered in favor of one of them. See Drive
Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1437 (TTAB 2007); Fishking
ProcessorsInc. v. Fisher King Seafoods Ltd., 83 USPQ2d 1762, 1764 (TTAB 2007);
University Book Store v. Universityof Wisconsin Board of Regents, 33 USPQ2d at
1389.
Based on our review of the parties’ arguments and supporting evidence, and
drawing all inferences in favor of each non-moving party, we find that neither party
has met its burden of establishing that there is no genuine dispute as to material
facts and that it is entitled to judgment as a matter of law on Petitioner’s likelihood
Cancellation No. 92060428

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of confusion claim under Section 2(d) of the Trademark Act. At a minimum,6 there
exists a genuine dispute as to the commercial impressions evoked by the parties’
respective marks. Accordingly, the parties’ respective motions for summary judgment
on Petitioner’s likelihood of confusion claim are denied.7
Proceeding Resumed; Trial Dates Reset
In view of the foregoing decisions, this proceeding is resumed and shall move
forward solely in connection with Petitioner’s claim under Section 2(d) of the
Trademark Act. The parties are not allowed to file any new motions for summary
judgment. Petitioner is allowed until TWENTY-ONE (21) DAYS from the mailing
date of this order to serve any supplementary pretrial disclosures on Respondent.
Trial dates are reset as shown in the following schedule:
Plaintiff's 30-day Trial Period Ends 7/10/2016
Defendant's Pretrial Disclosures Due 7/25/2016
Defendant's 30-day Trial Period Ends 9/8/2016
Plaintiff's Rebuttal Disclosures Due 9/23/2016
Plaintiff's 15-day Rebuttal Period Ends 10/23/2016

IN EACH INSTANCE, a copy of the transcript of testimony, together with copies
of documentary exhibits, must be served on the adverse party WITHIN THIRTY

6 The fact that we have identified in this order only particular material facts that are
genuinely in dispute should not be construed as a finding that these are necessarily the only
issues that remain for trial.

7 The parties are reminded that evidence submitted in support of or in opposition to a motion
for summary judgment is of record only for consideration of that motion. Any such evidence
to be considered at final hearing must be properly introduced in evidence during the
appropriate trial period. See, e.g., Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28
USPQ2d 1464 (TTAB 1993); TBMP § 528.05(a).
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DAYS after completion of the taking of testimony. See Trademark Rule 2.125, 37
C.F.R. § 2.125.
Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b), 37
C.F.R. §§ 2.128(a) and (b). An oral hearing will be set only upon request filed as
provided by Trademark Rule 2.129, 37 C.F.R. § 2.129.
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