Servi-Tek, Inc.v.Jimmy's Contractor Services, Inc.

Trademark Trial and Appeal Board

Jan 18, 2022

92071703 (T.T.A.B. Jan. 18, 2022)

kb January 18, 2022 Cancellation No. 92071703 Servi-Tek, Inc. v. Jimmy’s Contractor Services, Inc. Before Thurmon, Deputy Chief Administrative Trademark Judge, and Heasley and English, Administrative Trademark Judges. By the Board: This proceeding comes before the Board on Petitioner’s motion, filed April 26, 2021, for summary judgment on its likelihood of confusion claim. The motion is fully briefed. We have considered the parties’ briefs and evidence, but address the record on summary judgment only to the extent necessary to set forth our analysis and findings, and do not repeat or address all of the parties’ arguments or evidence. Guess? IP Holder LP v. Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015). I. Background Respondent owns Registration No. 5044774 for the standard character mark SERV-TECH for “Roofing services; Roofing consultation; Roofing contracting; Roofing 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. 92071703 2 installation; Roofing repair; Roofing services, namely, waterproofing” in International Class 37.1 Petitioner filed a petition to cancel Respondent’s registration on July 3, 2019. On the ESTTA cover sheet,2 Petitioner selected the claims of likelihood of confusion, abandonment, and fraud. 1 TTABVUE 1. Respondent filed an answer denying the salient allegations of the petition to cancel and asserting nine affirmative defenses. 7 TTABVUE. On March 11, 2021, Respondent moved for summary judgment on Petitioner’s abandonment and fraud claims. 17, 18 TTABVUE. On April 26, 2021, Petitioner cross-moved for summary judgment on its likelihood of confusion claim. 21, 22 TTABVUE. In lieu of responding to Petitioner’s cross-motion for summary judgment, Respondent moved to suspend briefing thereon pending determination of its own motion for summary judgment. 25 TTABVUE. Respondent argued, inter alia, that Petitioner had failed to state a claim for likelihood of confusion in its petition to cancel, and that therefore the cross-motion was improper. Id. On September 22, 2021, we addressed Respondent’s motion for summary judgment and motion to suspend briefing on Petitioner’s cross-motion for summary 1 Respondent filed the underlying application on February 8, 2016 under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), alleging first use and first use in commerce as early as July 31, 2015. The registration issued on September 20, 2016. 2 “ESTTA” refers to the Board’s Electronic System for Trademark Trials and Appeals. “Because the ESTTA cover sheet forms part of the petition to cancel, it provides details of Petitioner’s” claim. Urock Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1409 n.2 (TTAB 2015). Cancellation No. 92071703 3 judgment. 28 TTABVUE. In addressing the motion for summary judgment, we first reviewed the pleadings and found that Petitioner had sufficiently pleaded likelihood of confusion under Section 2(d), 15 U.S.C. § 1052(d), as well as a claim that Respondent had abandoned the mark by ceasing use with no intent to resume use. Id. at 3-8. However, we struck the fraud claim as insufficient. Id. at 6. We also struck all of Respondent’s affirmative defenses, including Respondent’s bald allegation that “Petitioner’s claims are barred by the doctrine of abandonment.” Id. at 9-11. We then considered Respondent’s motion to the extent it sought summary judgment on Petitioner’s abandonment claim, and found that Respondent was entitled to judgment as a matter of law on this claim. Id. at 17. With respect to Respondent’s motion to suspend briefing on Petitioner’s cross- motion for summary judgment, we denied the motion, but exercised our discretion to allow the parties time to complete briefing thereon. Id. at 11-12. Respondent filed a response to Petitioner’s cross-motion for summary judgment on October 22, 2021 (see 29-31 TTABVUE), and Petitioner filed a reply thereto on November 11, 2021 (see 32 TTABVUE). II. Legal Standard Summary judgment is an appropriate method of disposing of cases in which there are no genuine disputes as to any material facts and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). In reviewing a motion for summary judgment, the evidentiary record must be viewed in the light most favorable to the non-moving party, and all justifiable inferences to be drawn from the undisputed Cancellation No. 92071703 4 facts must be drawn in favor of the non-moving party. See Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424 F.3d 1229, 76 USPQ2d 1310, 1314 (Fed. Cir. 2005); Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). We may not resolve disputes of material fact; we may only ascertain whether a genuine dispute regarding a material fact exists. See Lloyd’s Food Prods., 25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1544. The movant’s burden at summary judgment is greater than the burden of proof at trial, which is a preponderance of the evidence, and which permits appropriate inferences to be drawn from the evidence of record. See, e.g., Gasser Chair Co. v. Infanti Chair Mfg. Corp., 60 F.3d 770, 34 USPQ2d 1822, 1824 (Fed. Cir. 1995); see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 528.01 (2021). Only when the movant has supported its motion with sufficient evidence that, if unopposed, indicates there is no genuine dispute of material fact and that the moving party is entitled to judgment as a matter of law, does the burden then shift to the non-movant 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). The party moving for summary judgment has the burden of demonstrating that the material facts are not genuinely in dispute by: 1. citing to the record, including affidavits or declarations, admissions, or interrogatory answers, and showing the cited materials do not establish a genuine dispute; or, Cancellation No. 92071703 5 2. showing that the non-moving party cannot produce admissible evidence sufficient to create a genuine dispute. Monster Energy Co. v. Tom & Martha LLC, 2021 USPQ2d 1197, at *5 (TTAB 2021) (citing Fed. R. Civ. P. 56(c)(1)). If the moving party carries this part of its burden, the nonmoving party may not rest on mere allegations, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine dispute of material fact for trial. See, e.g., id.; Venture Out Props. LLC v. Wynn Resort Holdings, LLC, 81 USPQ2d 1887, 1890 (TTAB 2007). The moving party also has the burden of showing that it is entitled to judgment as a matter of law based on the established, undisputed facts. See Monster Energy, 2021 USPQ2d 1197, at *5 (citing Celotex Corp. v. Catrett, 477 U.S. 317 (1986)); Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986); and Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (1986)). III. Analysis and Decision A. Entitlement to a Statutory Cause of Action Entitlement to a statutory cause of action must be proven in every inter partes case.3 See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020), cert. denied, ___ U.S. ___ (2021) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)). In a cancellation proceeding, a party in the 3 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in nomenclature, our prior decisions and those of the Federal Circuit interpreting Section 13 and 14 remain applicable. See Spanishtown Enters., Inc. v. Transcend Resources, Inc., 2020 USPQ2d 11388, at *2 (TTAB 2020). Cancellation No. 92071703 6 position of petitioner may petition to cancel respondent’s registered mark where such action is within the zone of interests protected by the statute, 15 U.S.C. § 1064, and the petitioner’s reasonable belief in damage is proximately caused by registration of the respondent’s mark. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *6-7 (Fed. Cir. 2020), cert. denied, ___ U.S. ___ (2021). With its motion for summary judgment, Petitioner has submitted its application for the mark SERVI-TEK (Application Serial No. 87908708) and the USPTO’s Final Office Action refusing registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion with Respondent’s mark. 21 TTABVUE 157, 305. This evidence establishes Petitioner’s entitlement to petition to cancel Respondent’s mark. See Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) (“To establish a reasonable basis for a belief that one is damaged by the registration sought to be cancelled, a petition may assert ... a rejection of an application during prosecution.”); Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1959 (TTAB 2008). In addition, Petitioner has submitted the declaration of Bryan McMinn, Petitioner’s co-owner and Chief Financial Officer, who states that Petitioner has “used the SERVI-TEK mark in commerce in connection with its janitorial and building maintenance services from at least as early as March 1, 2006 through to the present.” 21 TTABVUE 22. Based on such common law use, Petitioner has asserted a plausible likelihood of confusion claim against the involved registration, thereby Cancellation No. 92071703 7 demonstrating its entitlement to a statutory cause of action.4 See Corcamore, 2020 USPQ2d 11277, at *8 (“well-pleaded” allegations of likelihood of confusion are “sufficient to establish a real interest in the cancellation proceeding”); DeVivo v. Ortiz, 2020 USPQ2d 10153, at *2 (TTAB 2020). On this record, we find no genuine dispute of material fact that Petitioner’s petition to cancel Respondent’s registration is within the zone of interests protected by the statute, and that Petitioner has a reasonable belief of damage proximately resulting from continued registration of Respondent’s mark. Accordingly, we find no genuine dispute of material fact that Petitioner is entitled to a statutory cause of action.5 B. Section 2(d) Claim 1. Priority Priority is an element of Petitioner’s likelihood of confusion claim under Trademark Act Section 2(d), and is established by a showing that Petitioner’s pleaded mark SERVI-TEK was “previously used in the United States . . . and not abandoned.” 15 U.S.C. § 1052(d). Because Petitioner does not own a live trademark registration for its pleaded mark, on summary judgment Petitioner has the burden of demonstrating that there is no genuine dispute of material fact as to its priority. See 4 In finding so, we make no ruling on Petitioner’s ability to prove likelihood of confusion under Section 2(d), 15 U.S.C. § 1052(d). 5 Petitioner is reminded that it must maintain its entitlement throughout the proceeding; however, unless Petitioner’s status changes, entitlement is not at issue for a determination on the merits of Petitioner’s claim. Cancellation No. 92071703 8 Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB 2001). Oral testimony of a witness may be sufficient to prove first use of a party’s mark when it is based on personal knowledge of the facts and the testimony is clear, convincing, and has not been contradicted. See Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1108 (TTAB 2007) (oral testimony of a single witness, if ‘sufficiently probative,’ may be sufficient to prove priority); Nat’l Blank Book Co. v. Leather Crafted Prods., Inc., 218 USPQ 827, 828 (TTAB 1983); Liqwacon Corp. v. Browning-Ferris Indus., Inc., 203 USPQ 305, 316 (TTAB 1979) (oral testimony may be sufficient to establish both prior use and continuous use when testimony is proffered by witness with knowledge of facts and testimony is clear, convincing, consistent, and sufficiently circumstantial to convince the Board of its probative value). Petitioner argues that it has used the mark SERVI-TEK in commerce for janitorial and building maintenance services since at least as early as March 1, 2006, which is nine years before Respondent’s claimed first use date of May 2015. 21 TTABVUE 10- 11. As evidence thereof, Mr. McMinn states that he has been employed by Petitioner in his current position since 2006, and that based on his personal knowledge, Petitioner “offers and provides its janitorial and building maintenance services to the owners, property or facility managers of commercial and multi-family residential properties of all sizes and across every industry” and has done so continuously since at least March 1, 2006. Id. at 21-22. Attached to Mr. McMinn’s declaration are, inter Cancellation No. 92071703 9 alia, digital brochures that, according to Mr. McMinn, were distributed by Petitioner in 2009, 2015, and 2016; printouts of Petitioner’s website, servi-tek.net; printouts from the website web.archive.org showing how Petitioner’s website appeared each year from 2010 to 2018; articles about Petitioner from 2009 and 2010; a confidential exhibit showing Petitioner’s promotional expenditures from December 2015 to December 2020; and two confidential statements of work for Petitioner’s customers.6 Id. at 23-149. See also 22 TTABVUE (confidential). Taken in combination with the supporting materials, we find Mr. McMinn’s testimony sufficient to establish that Petitioner commenced use in commerce of its mark prior to the filing date of Respondent’s underlying application for registration and Respondent’s claimed date of first use in commerce. Although the record does not contain documentary evidence substantiating Petitioner’s asserted date of first use, Mr. McMinn’s testimony that Petitioner has used its mark since March 1, 2006 is clear, internally consistent, and uncontroverted. See Hornblower & Weeks, 60 USPQ2d at 1736 (opposer’s declaration, while not accompanied by any documentary evidence, was internally consistent, not characterized by uncertainty and was unchallenged by applicant); 4U Co. of Am., Inc. v. Naas Foods, Inc., 175 USPQ 251, 253 (TTAB 1972) (that statements in affidavit not supported by invoice does not undermine the testimony when uncontradicted). Moreover, Respondent does not dispute that Petitioner commenced use of SERVI- TEK prior to Respondent’s first use in commerce of SERV-TECH in May 2015. See, 6 The statements of work are unsigned and undated. Cancellation No. 92071703 10 e.g., 29 TTABVUE 4-5, 7-8. Instead, Respondent argues that Petitioner did not prove that its use has been continuous. See id. at 7-8. In support thereof, Respondent submits the declaration of its attorney, who states that based on his review, Petitioner’s document production did not show use of its mark in 2013, 2017, 2018, or 2019. Id. at 20. “The governing statute does not speak of ‘continuous use,’ but rather of whether the mark or trade name has been ‘previously used in the United States by another and not abandoned.’ (emphasis added).” W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1665 (Fed. Cir. 1994) (citing 15 U.S.C. § 1052(d)). A mark is abandoned “[w]hen its use has been discontinued with intent not to resume such use.” 15 U.S.C. § 1127. Respondent does not argue that Petitioner abandoned its mark. See 29 TTABVUE. Even if we construe Respondent’s response as asserting abandonment, a party may not defend against a motion for summary judgment by asserting the existence of genuine disputes of material fact as to an unpleaded claim or defense. See TBMP § 528.07(b) and cases cited therein.7 See also W. Fla. Seafood, 31 USPQ2d at 1129 (“West was never put on notice that it was faced with an abandonment allegation, and thus West was not provided an adequate opportunity to address this 7 Respondent did not move for leave to amend its answer to assert abandonment. See Am. Express Mktg. & Dev. Corp. v. Gilad Dev. Corp., 94 USPQ2d 1294, 1296 (TTAB 2010); U.S. Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221, 1223 (TTAB 1993); TBMP § 528.07(b) (“a party that seeks to defend against a motion for summary judgment by asserting the existence of genuine disputes of material fact regarding an unpleaded claim or defense, may move to amend its pleading to allege the matter.”). Cancellation No. 92071703 11 issue.”). In addition, in its reply Petitioner objects to Respondent’s assertion of abandonment on the grounds that it is unpleaded. See 32 TTABVUE 4 n.2. Inasmuch as abandonment was neither pleaded nor tried by consent, we give it no consideration. In view of Mr. McMinn’s unrefuted declaration, and the documentary evidence put forth by Petitioner, we find no genuine dispute of material fact that Petitioner has priority in the mark SERVI-TEK as to janitorial and building maintenance services. 2. Likelihood of Confusion Consideration of this issue in the context of summary judgment involves an analysis of the thirteen evidentiary factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). Any of the du Pont factors “may from case to case play a dominant role.” Id. Thus, we look to whether there are genuine disputes with respect to any of the du Pont factors which would be material to a decision on the merits. Petitioner argues that the parties’ marks are nearly identical; that Petitioner’s mark is commercially strong due to its many years of use and public recognition; that Respondent’s roofing services are subsumed in Petitioner’s “building maintenance services”;8 that third parties offer the types of services offered by Petitioner and 8 Petitioner also asserts that Respondent offers other services, including “maintenance on commercial building, graffiti removal, internal ceiling tile replacement, and light ceiling cleaning;” that are subsumed by Petitioner’s registered services. 21 TTABVUE 17. Likelihood of confusion must be based on the services identified in the registration. Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). Accordingly, inasmuch as Respondent’s registration does not expressly identify these Cancellation No. 92071703 12 Respondent under the same mark; and that the parties’ services travel through the same channels of trade and are offered to the same customers, namely owners and property managers of commercial and residential buildings. 21 TTABVUE 12-19. In support, Petitioner submits, inter alia: the Office Action issued by the examining attorney refusing registration of Petitioner’s Application Serial No. 87908708 due to a perceived likelihood of confusion with Respondent’s mark; documents produced by Respondent; Respondent’s responses to discovery requests; excerpts from the deposition of Respondent’s owner Jim Stroh; copies of third-party registrations that identify both roofing and janitorial/building maintenance services;9 and printouts of third-party web pages that purportedly show that these entities provide Petitioner’s and Respondent’s services under the same mark. Id. at 152-583. Petitioner also relies on the previously-referenced evidence of use, marketing expenditures, and media recognition attached to the declaration of Mr. McMinn. In response, Respondent states that Petitioner took the position during prosecution of Application Serial No. 87908708 that the parties’ marks are not similar; that Petitioner’s mark is weak due to numerous third-party uses, including services, Petitioner’s evidence concerning these services is only relevant if Petitioner establishes that they are subsumed in the services identified in Respondent’s registration. 9 Respondent objects to some of these third-party registrations because they are either not based on use in commerce, or have been cancelled. 29 TTABVUE 14-15. Registrations that are not based on use in commerce have no probative value in showing the relatedness of the services. See In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 and n. 5 (TTAB 2007). Further, a cancelled registration is evidence only that the registration issued. In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1159 n.48 (TTAB 2019). Accordingly, the registrations that are not based on use in commerce and those that have been cancelled have not been considered. The remaining registrations are given appropriate evidentiary weight. Cancellation No. 92071703 13 descriptive uses; that the parties’ services are distinct and not related; and that neither party is aware of any actual confusion. 29 TTABVUE 1-15. Respondent asks that we deny Petitioner’s motion for summary judgment and grant summary judgment to Respondent on the issue of likelihood of confusion. Id. at 15. In support of its argument, Respondent submits, inter alia: both parties’ responses to discovery requests; printouts of web pages showing third-party uses of, inter alia, “Service Tech,” “Servitek,” and “Servtech,” in connection with the provision of various services; printouts of web pages referring to professionals authorized to perform different types of maintenance and repair work as “service technicians;” and third-party registration certificates for marks registered for the services of either Petitioner or Respondent but not both. See id. at 18-394. See also 30 TTABVUE (confidential). Upon careful consideration of the parties’ arguments and evidence, and drawing all reasonable inferences with respect to the motion in favor of Respondent as the nonmoving party, we find that Petitioner has failed to demonstrate that there are no genuine disputes of material fact that remain for trial as to likelihood of confusion and that it is entitled to judgment as a matter of law. At a minimum, genuine disputes of material fact exist as to the similarity of the marks, similarity or relatedness of the parties’ services, and the strength of Petitioner’s mark.10 10 The fact that we have identified certain genuine disputes of material fact as a sufficient basis for denying the cross-motions for summary judgment should not be construed as a finding that such disputes necessarily are the only disputes that remain for trial. Cancellation No. 92071703 14 Accordingly, Petitioner’s motion for summary judgment on likelihood of confusion is denied, and, for the same reasons, Respondent’s cross-motion for summary judgment is also denied. C. Summary Petitioner’s motion for summary judgment is granted, in part, as to Petitioner’s priority. We further find that the evidence submitted by Petitioner demonstrates that there is no genuine dispute of material fact that Petitioner is entitled to a statutory cause of action. Accordingly, this case will proceed to trial on likelihood of confusion.11 IV. Proceedings Resumed; Dates Reset Proceedings are resumed. Remaining dates are reset as follows: Plaintiff's Pretrial Disclosures Due 2/21/2022 Plaintiff's 30-day Trial Period Ends 4/7/2022 Defendant's Pretrial Disclosures Due 4/22/2022 Defendant's 30-day Trial Period Ends 6/6/2022 Plaintiff's Rebuttal Disclosures Due 6/21/2022 Plaintiff's 15-day Rebuttal Period Ends 7/21/2022 Plaintiff's Opening Brief Due 9/19/2022 Defendant's Brief Due 10/19/2022 Plaintiff's Reply Brief Due 11/3/2022 Request for Oral Hearing (optional) Due 11/13/2022 Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is taken and introduced out of the presence of the Board during the assigned testimony 11 The parties should note that the evidence submitted in connection with a motion for summary judgment or opposition thereto 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 Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993). See also TBMP § 528.05(a)(1). Cancellation No. 92071703 15 periods. The parties may stipulate to a wide variety of matters, and many requirements relevant to the trial phase of Board proceedings are set forth in Trademark Rules 2.121 through 2.125, 37 C.F.R. §§ 2.121-2.125. These include pretrial disclosures, the manner and timing of taking testimony, matters in evidence, and the procedures for submitting and serving testimony and other evidence, including affidavits, declarations, deposition transcripts and stipulated evidence. Trial briefs shall be submitted in accordance with Trademark Rules 2.128(a) and (b), 37 C.F.R. §§ 2.128(a) and (b). Oral argument at final hearing will be scheduled only upon the timely submission of a separate notice as allowed by Trademark Rule 2.129(a), 37 C.F.R. § 2.129(a). TIPS FOR FILING EVIDENCE, TESTIMONY, OR LARGE DOCUMENTS The Board requires each submission to meet the following criteria before it will be considered: 1) pages must be legible and easily read on a computer screen; 2) page orientation should be determined by its ease of viewing relevant text or evidence, for example, there should be no sideways or upside-down pages; 3) pages must appear in their proper order; 4) depositions and exhibits must be clearly labeled and numbered - use separator pages between exhibits and clearly label each exhibit using sequential letters or numbers; and 5) the entire submission should be text-searchable. Additionally, submissions must be compliant with Trademark Rules 2.119 and 2.126. Submissions failing to meet all of the criteria above may require re-filing. Note: Parties are strongly encouraged to check the entire document before filing.12 The 12 To facilitate accuracy, ESTTA provides thumbnails to view each page before submitting. Cancellation No. 92071703 16 Board will not extend or reset proceeding schedule dates or other deadlines to allow time to re-file documents. For more tips and helpful filing information, please visit the ESTTA help webpage.