Republic Technologies (NA), LLCv.Brooks Entertainment Inc.

Trademark Trial and Appeal Board

Sep 16, 2014

No. 91212024 (T.T.A.B. Sep. 16, 2014)

WINTER Mailed: September 16, 2014

Opposition No. 91212024
Republic Technologies (NA), LLC
v.
Brooks Entertainment Inc.

Before Kuhlke, Wellington, and Gorowitz,
Administrative Trademark Judges.

By the Board:

This case now comes up for consideration of Opposer’s concurrently
submitted motions (filed June 12, 2014) to amend its pleading and for
summary judgment on its newly-asserted claims that the involved
application is void ab initio based on non-use under Trademark Act Section
1(a) and under Trademark Act Section 44(e) for failing to satisfy the
requirements of that section. Accompanying Opposer’s motion for leave to file
an amended notice of opposition is its proposed Amended Notice of
Opposition.1

1 Opposer’s reply brief to its summary judgment motion, filed July 17, 2014, is over-
length at 11.5 pages. As such, it exceeds the ten-page limit for reply briefs in support
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 DECISION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91212024

2
For purposes of this order, we presume the parties’ familiarity with the
pleadings, arguments and materials submitted in connection with the
referenced motions. Inasmuch as the motion for summary judgment is based
on Opposer’s proposed new claims, we turn first to Opposer’s motion for leave
to amend.
Motion to Amend Notice of Opposition
Opposer seeks to amend its notice of opposition to add two claims set forth
in paragraphs 6-12, as follows:
6. On February 24, 2012, … Applicant filed an application to
register the mark S.O.B. based [on] its purported use of the mark in
connection with “cigars” in International Class 34 “[a]t least as early as”
June 16, 2011. Applicant concurrently claimed a priority date of
November 16, 2011, based on its ownership of a Dominican Republic
registration for the mark pursuant to §§ 1(a) and 44(d) of the Lanham Act
(15 U.S.C. §§ 1051(a) and 1126(d)). On February 14, 2013, as part of its
petition to revive its abandoned application, Applicant asserted §§ 1(a)
and 44(e) of the Lanham Act (15 U.S.C. §§ 1051(a) and 1126(e)) as a basis
for registration. On May 20, 2013, in response to an Office Action,
Applicant amended its application to state that it “ha[d] a bona fide and
effective industrial or commercial establishment in the Dominican
Republic as of the date of issuance of the foreign registration” in order to
perfect its claim under §44(e) of the Lanham Act (15 U.S.C. § 1126(e)).

7. On information and belief, at the time Applicant filed the
application, Applicant did not use the S.O.B. mark in commerce in the
United States in connection with any of the goods described in the
application. Specifically, on information and belief, Applicant did not sell

of motions and has therefore received no consideration. Trademark Rule 2.127(a);
see also Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1141 (TTAB 2011). In
view thereof, Opposer’s uncontested motion to strike Applicant’s evidence submitted
in response to the summary judgment motion (see reply, footnote 1) has also
received no consideration. See also Vignette v. Marino, 77 USPQ2d 1408 (TTAB
2005) (“Although applicant clearly could have been more forthcoming in his
responses to interrogatories, we do not believe that applicant's delay in providing
this information requires us to exclude his declaration.”)

Opposition No. 91212024

3
or transport cigars bearing the mark in interstate commerce and did not
import such cigars to the United States prior to the date of filing of the
subject application. Accordingly, the application is void ab initio to the
extent that it is based on § 1(a) of the Lanham Act (15 U.S.C. § 1051(a)).

8. On information and belief, Applicant is not a national of the
Dominican Republic.

9. On information and belief, Applicant is not a domiciliary of the
Dominican Republic.

10. On information and belief, Applicant did not have a bona fide
and effective industrial or commercial establishment in the Dominican
Republic as of February 15, 2012, the date of issuance of its Dominican
trademark registration.

11. On information and belief, Applicant did not have, and has
never had, a legitimate Dominican business office or production facility.

12. Applicant cannot claim the Dominican Republic as a country of
origin for the purposes of § 44(e) of the Lanham Act (15 U.S.C. § 1126(e))
and therefore does not have a basis for United States registration under
that Section.

The Board liberally grants leave to amend pleadings at any stage of the
proceeding when justice requires, unless entry of the proposed amendment
would be prejudicial to the rights of the adverse party or parties, would
violate settled law, or would serve no useful purpose. Fed. R. Civ. P. 15(a).
See, e.g., Polaris Indus. v. DC Comics, 59 USPQ2d 1789 (TTAB 2001); Boral
Ltd. v. FMC Corp., 59 USPQ2d 1701, 1703 (TTAB 2000); Institut National
des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1896
(TTAB 1998); and TBMP § 507.02 (2014). This is so even when a plaintiff
seeks to amend its complaint to plead a claim other than those stated in the
original complaint. See Commodore Elec. Ltd. v. CBM Kabushiki Kaisha, 26
Opposition No. 91212024

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USPQ2d 1503, 1506-1507 (TTAB 1993) (allowing opposer to add the claim
that applicant did not have a bona fide intention to use the mark in
commerce). Whether or not the moving party can actually prove the
allegations sought to be added to a pleading is a matter to be determined
after the introduction of evidence at trial or in connection with a proper
motion for summary judgment. Focus 21 Int’l Inc. v. Pola Kasei Kogyo
Kabushiki Kaisha, 22 USPQ2d 1316, 1318 (TTAB 1992). Further, “the
timing of a motion for leave to amend under Fed. R. Civ. P. 15(a) is a major
factor in determining whether applicant would be prejudiced by allowance of
the proposed amendment.” Boral, 59 USPQ2d at 1703.
Notwithstanding Applicant’s argument to the contrary, we find that
Opposer’s motion for leave to amend to add the additional claims was timely
inasmuch as the proposed new claims are based on information set forth in
Applicant’s discovery responses that were served on Opposer after the close
of discovery, that is, on May 16, 2014. Opposer filed the instant motion only
27 days after it received Applicant’s responses. As to whether Applicant will
be prejudiced by the amendments, we find none inasmuch as Applicant has
not shown that any of its witnesses or evidence has become unavailable as a
result of Opposer’s asserted delay in seeking to amend the notice of
opposition. See Trek Bicycle Corp. v. Styletrek Ltd., 64 USPQ2d 1540, 1541
(TTAB 2001), citing Pratt v. Philbrook, 109 F.3d 18 (1ST Cir. 1997). Further,
Applicant’s asserted inability to pursue its commercial interests in view of
Opposition No. 91212024

5
the pendency of this proceeding is insufficient to demonstrate prejudice. See
Hurley International LLC v. Volta, 82 USPQ2d 1339, 1341 (TTAB 2007).
We also find Opposer’s proposed claims as set forth in paragraphs 6-12 of
the amended notice of opposition to be legally sufficient as they provide
adequate notice of the two claims, viz. that Applicant was not using the
applied-for mark in commerce on the filing date of the application as required
under Trademark Act Section 1(a), 15 U.S.C. § 1051(a); and that Applicant
did not have a bona fide and effective industrial or commercial establishment
in the Dominican Republic as of February 15, 2012, the date of issuance of its
Dominican trademark registration.2 Finally, entry of the new claims would
not violate settled law. See Commodore Elec. Ltd. as to the former and
Kallamni v. Khan, 101 USPQ2d 1864 (TTAB 2012) as to the claim regarding
the Section 44(e) basis.
In view of the foregoing, Opposer’s motion for leave to amend its pleading
is granted. Accordingly, Opposer’s Amended Notice of Opposition filed on
June 12, 2014 (as an exhibit to its motion to amend) is considered Opposer’s
operative pleading in this proceeding. Applicant will be allowed time at the
conclusion of this order to file an answer thereto. Nonetheless, for purposes
of our consideration of Opposer’s motion for summary judgment on its new
claims (see infra), we consider Opposer’s new allegations to be denied. See
Societe des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 10
USPQ2d 1241, 1242 n.4 (TTAB 1989) (motion to amend to add new ground,
Opposition No. 91212024

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filed simultaneously with motion for summary judgment, granted and
allegations in new ground deemed denied).
Motion for Summary Judgment
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).
When the moving party has supported its motion with sufficient evidence
that, if unopposed, indicates there is no genuine dispute of material fact, the
burden then shifts to the non-moving party to demonstrate the existence of a
genuine dispute of material fact to be resolved at trial. Enbridge, Inc. v.
Excelerate Energy LP, 92 USPQ2d 1537, 1540 (TTAB 2009). All evidence
must be viewed in a light favorable to the nonmovant, and all justifiable

2 Opposer’s claims do not allege fraud, as suggested by Applicant.
Opposition No. 91212024

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inferences are to be drawn in the nonmovant's favor. Lloyd's Food Products,
Inc., 987 F.2d at 766, 25 USPQ2d at 2029; Opryland USA Inc. v. Great
American Music Show Inc., 970 F.2d 847, 850, 23 USPQ2d 1471, 1472 (Fed.
Cir. 1992). Further, in considering whether summary judgment is
appropriate, the Board may not resolve any genuine disputes of material fact
necessary to decide the merits of the opposition. Rather, the Board may only
ascertain whether any material fact cannot be disputed or is genuinely
disputed. See Lloyd’s Food Products, 25 USPQ2d at 2029; and Olde Tyme
Foods, 22 USPQ2d at 1542.
Based on our review of the parties’ arguments and evidence, and drawing
all inferences in favor of Applicant, the non-movant, we find that genuine
disputes of material facts preclude summary judgment on Opposer’s two new
claims regarding Applicant’s two filing bases. Fed. R. Civ. P. 56(a). At a
minimum, a genuine dispute exists as to whether Applicant sold the
identified goods before February 24, 2012, and whether Applicant’s presence
in the Dominican Republic constitutes a commercial establishment, including
whether Applicant’s representative in the Dominican Republic is an
employee.3 In view thereof, Opposer’s motion for summary judgment is
denied.4

3 The fact that we identify only two material facts that are genuinely in dispute as a
sufficient basis for denying the motion for summary judgment should not be
construed as a finding that they are necessarily the only issues which remain for
trial.

Opposition No. 91212024

8
In denying this motion, we note that the standard of proof for summary
judgment, the absence of a genuine dispute of material facts, is quite
different from the preponderance of evidence standard for trial. Evidence
that may be sufficient to raise a genuine issue, may not be sufficient to rebut
a prima facie case. We further note, that Applicant, in response to the motion
for summary judgment observed that the filing basis of an application
involved in an inter partes proceeding may be amended. Such amendment
may be made with the consent of the other party or upon motion granted by
the Board. Trademark Rule 2.133(a).5 In view thereof, Applicant is allowed
until FIFTEEN (15) DAYS from the mailing date of this order to file a
motion to amend its application to substitute Section 1(b)6 as a filing basis,
failing which such a motion will not be given any consideration and the
proceeding shall move forward on all three of Opposer’s claims.

4 The parties are reminded that, absent the parties’ stipulation that the evidence
submitted in connection with Opposer’s motion for summary judgment is to be
considered of record for trial, said evidence is of record only for consideration of the
motion for summary judgment. See TBMP § 501 (2014) and authorities cited therein.
See also TBMP § 702.04(d). Any such evidence to be considered at final hearing must
be properly introduced in evidence during their appropriate trial periods. See Levi
Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); Pet Inc.
v. Bassetti, 219 USPQ 911 (TTAB 1983); American Meat Institute v. Horace W.
Longacre, Inc., 211 USPQ 712 (TTAB 1981).

5 Regarding Applicant’s reference to Trademark Rule 2.133(b), Applicant is advised
that amendment of the filing basis is not a restriction and therefore is not the type of
amendment contemplated by that rule.

6 Applicant is reminded that any such amendment must be in compliance with
Trademark Rule 2.34(a)(2). See Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032
(TTAB 2007). See also TMEP § 806.
Opposition No. 91212024

9
Proceeding Resumed; Trial Dates Reset
This proceeding is resumed. Trial dates are reset as shown in the
following schedule:
Plaintiff's 30-day Trial Period Ends 11/10/2014
Defendant's Pretrial Disclosures Due 11/25/2014
Defendant's 30-day Trial Period Ends 1/9/2015
Plaintiff's Rebuttal Disclosures Due 1/24/2015
Plaintiff's 15-day Rebuttal Period Ends 2/23/2015

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 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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