Sinclair Oil Corporationv.Sumatra Kendrick

Trademark Trial and Appeal Board

Jun 6, 2007

No. 91152940 (T.T.A.B. Jun. 6, 2007)

Baxley Mailed: June 6, 2007

Opposition No. 91152940

Sinclair Oil Corporation

v.

Sumatra Kendrick

Before Quinn, Rogers and Cataldo,
Administrative Trademark Judges

By the Board:

Sumatra Kendrick ("applicant") has applied to register
the mark STAACHI'S CO. 1996 and design in the following form

for "retail store services featuring, bath products, gift
products, [and] candy products" in International Class 35.1
Sinclair Oil Corporation ("opposer") filed a notice of
opposition to registration of applicant's mark on grounds of
likelihood of confusion with a series of previously used and
registered marks, including the following design

1 Application Serial No. 76212011, filed February 20, 2001, based
on an assertion of use in commerce under Trademark Act Section
1(a), 15 U.S.C. Section 1051(a). The application alleges March
1996 as the date of first use anywhere and March 20, 1996 as the
date of first use in commerce and includes a disclaimer of "CO.
1996."

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
This decision is a precedent of the
Trademark Trial and Appeal Board.
Opposition No. 91152940
2

for services in International Classes 35 and 41, including
"retail apparel and gift store services."2 On January 31,
2006, the Board granted opposer's motion for leave to file
an amended notice of opposition by which opposer added
claims of nonuse and fraud based on its assertion that
applicant falsely claimed to be using the mark in commerce
in connection with the identified services in the involved
application.
On March 1, 2006, opposer filed a motion for summary
judgment on its newly pleaded grounds of nonuse and fraud.
Applicant incorporated a motion to amend the filing basis of
the involved application to Trademark Act Section 1(b), 15
U.S.C. Section 1051(b), into her response to opposer's
motion.3 Opposer has filed a brief in response to the
motion to amend.

2 Registration No. 929749, issued February 22, 1972, renewed
twice.

3 Applicant did not separately caption her motion to amend the
filing basis of her application. Although there is no
prohibition on incorporating a motion into a brief in response to
a motion, the better practice is either to file such motion as a
separate submission or, at a minimum, to caption separately any
such motion.

Opposition No. 91152940
3
We turn first to applicant's motion to amend the filing
basis of the involved application to Section 1(b). An
applicant under Trademark Act Section 1(a), 15 U.S.C.
Section 1051(a), who is a defendant in a Board opposition
proceeding, can move to amend its application to substitute
Section 1(b) as its filing basis and maintain its original
filing date, provided that it meets all the requirements for
a Section 1(b) filing basis. See Trademark Law Treaty
Implementation Act of 1998 (TLTIA), Pub. L. No. 105-330, 112
Stat. 3064 (15 U.S.C. Section 1051), and the "Trademark Law
Treaty Implementation Act Changes" to the Rules of Practice
and Procedure, published in the Federal Register at 64 FR
48900 (Sept. 8, 1999) and in the Official Gazette at 1226
TMOG 103 (Sept. 28, 1999). See also Trademark Rules 2.34,
2.35 and 2.133(a) and Trademark Exam Guide No. 3-99 at 6.4
When an applicant substitutes one basis for another, the
Office will presume that there was a continuing valid basis,
unless there is contradictory evidence in the record, and
the application will retain the original filing date. See
Trademark Rule 2.35(c).
In an application under Section 1(b), an applicant must
verify that it has a bona fide intent to use the mark in
commerce on or in connection with the goods or services

4 Exam Guide No. 3-99 is available on the USPTO web site at
http://www.uspto.gov/web/offices/tac/notices/notices.htm

Opposition No. 91152940
4
listed therein. If the verification is not filed with the
initial application, any later-filed verified statement must
allege that the applicant had a bona fide intention to use
the mark in commerce as of the filing date of the
application. See Trademark Rule 2.34(a)(2)(i).
Applicant has now met all the requirements for a
Section 1(b) filing basis, including the submission of a
verified statement that she had a bona fide intention to use
the mark in commerce as of the filing date of the
application. Inasmuch as there is no evidence in the record
to the contrary, applicant can maintain her original filing
date, i.e., February 20, 2001. Based on the foregoing,
applicant's motion to amend the filing basis of her involved
application to Section 1(b) is hereby granted. However,
amending the filing basis of the involved application to
Section 1(b) does not protect the application from a fraud
claim. See Grand Canyon West Ranch LLC v. Hualapai Tribe,
78 USPQ2d 1696 (TTAB 2006).
Because the involved application is now an intent-to-
use application, opposer's nonuse claim is dismissed as
moot.
We turn next to opposer's motion for summary judgment
on the fraud claim. In support of such motion, opposer
contends that applicant made a willful, false and material
representation of fact in her involved application by
Opposition No. 91152940
5
asserting that she was using her mark in commerce and had
used her mark in commerce since March 20, 1996. Opposer
contends applicant's interrogatory responses establish the
lack of any genuine issue regarding applicant's failure to
use her mark in commerce. Responses upon which opposer
relies in support of its motion include the following:
1) Applicant's statements that she "has not engaged in
commerce" and that the involved mark "has never been used in
commerce" (responses to interrogatory nos. 1, 3, 6, and 7);
2) Applicant's statement that the involved mark "was
registered as a Fictitious Business Name Statement in March
1996 to reserve the name and notice others that I intended
to do business under that name in the future" (responses to
interrogatory nos. 1-3);5
3) Applicant's statements that she "has no invoices,
documents, or writings that would establish 'use' in
commerce," that she "has not had any income," and that she
"has not done any marketing" (responses to interrogatory
nos. 4, 6 and 7); and
4) Applicant's statements that, in 1996, she had a "one
time creation" of "about 25 sample products" which were

5 However, the only fictitious business name registration of
record herein is for STAACHI'S EXCLUSIVES, which applicant
recorded with the Contra Costa County (California) Clerk on March
20, 1996 and which opposer submitted as an exhibit in support of
its motion for summary judgment. Whether or not applicant used
in commerce the mark STAACHI'S EXCLUSIVES is not at issue in this
proceeding.
Opposition No. 91152940
6
"[g]iven away free of charge" and that she has not used the
mark from "[a]pproximately April 1996 to present."
(responses to interrogatory nos. 2 and 5).
In addition, applicant stated, as part of her
objections to every one of opposer's interrogatories, that
she "has not engaged in commerce, but has only attempted to
reserve the name and sought a trademark to protect the
utilization of the mark when and if her business is open."
Applicant's responses to interrogatory nos. 1-36.
Opposer's evidentiary support for its motion includes
its first set of interrogatories and first set of requests
for admissions and applicant's responses thereto. Based on
the foregoing, opposer contends that there is no genuine
issue of material fact that applicant willfully made a
false, material statement that she was using the mark in
connection with the services recited in her involved
application and committed fraud on the USPTO during the
prosecution of her application. Therefore, opposer asks
that summary judgment be entered against applicant on that
ground.
In response, applicant, who is representing herself,
contends as follows:
[D]uring the Interrogatories phase, the question
was asked if I the applicant had used the mark in
commerce. The answer was mistakenly filed as I
had not used my mark in commerce. I would like to
point out, that there was confusion with question.
Opposition No. 91152940
7
The mark has been in use since March of [19]96
[a]nd is currently in use as of Sept. 27, 2006.

Applicant, however, did not identify, or provide evidence
of, any specific activities that she claims constitute use
of the mark in commerce.6
Summary judgment is an appropriate method of
disposing of a case in which there are no genuine issues of
material fact in dispute, thus leaving the case to be
resolved as a matter of law. See Fed. R. Civ. P. 56(c).
A dispute as to a material fact is genuine only if a
reasonable fact finder viewing the entire record could
resolve the dispute in favor of the nonmoving party. See
Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1544 (Fed. Cir. 1992). In deciding a motion
for summary judgment, the Board must view the evidence in
the light most favorable to the nonmovant, and must draw all
reasonable inferences from underlying facts in favor of the
nonmovant. Id.
A party moving for summary judgment has the burden of
demonstrating the absence of any genuine issue of material
fact, and that it is entitled to summary judgment as a
matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317
(1986); Sweats Fashions Inc. v. Pannill Knitting Co.

6 Indeed, applicant's only equivocation with regard to her
statements that she is "in the formation stage of her business"
and "has not engaged in commerce" were her denials in response to
opposer's requests to admit that she has not used the mark in
commerce.
Opposition No. 91152940
8
Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). When
the moving party's motion is supported by evidence
sufficient to indicate that there is no genuine issue of
material fact, and that the moving party is entitled to
judgment, 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 the mere allegations of its pleadings and
arguments in response to the motion, but must designate
specific portions of the record or produce additional
evidence showing the existence of a genuine issue of
material fact for trial. In general, to establish the
existence of disputed facts requiring trial, the nonmoving
party "must point to an evidentiary conflict created on the
record at least by a counterstatement of facts set forth in
detail in an affidavit by a knowledgeable affiant." Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990), citing Barmag
Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731
F.2d 831, 221 USPQ 561, 564 (Fed. Cir. 1984).
Based on the record now before us, and for the reasons
discussed below, we conclude that opposer is entitled to
entry of summary judgment on the fraud claim as a matter of
law because opposer has made a prima facie showing that
there are no genuine issues of material fact remaining for
trial with regard to that claim, which showing applicant has
failed to rebut.
Opposition No. 91152940
9
Trademark Act Section 45, 15 U.S.C. Section 1127,
states in relevant part as follows:
[A] mark shall be deemed to be in use in commerce
... on services when it is used or displayed in
the sale or advertising of services and the
services are rendered in commerce, or the services
are rendered in more than one State or in the
United States and a foreign country and the person
rendering the services is engaged in commerce in
connection with the services.

Examples of use of a service in commerce include when: (1)
the recited services are rendered across state lines; and
(2) customers travel across state lines in response to
advertising for the recited services. See TMEP Section
1301.03(b) (4th ed. rev. 2004). Use of the mark in
connection with promotional, advertising or other activities
undertaken prior to the actual rendering of the recited
services does not constitute actual "use in commerce" of
identified services sufficient to support the filing of a
use-based application. See In re Port Authority of New
York, 3 USPQ2d 1453 (TTAB 1987); In re Cedar Point, Inc.,
220 USPQ 533 (TTAB 1983).
Fraud in procuring a trademark registration occurs
when an applicant for registration knowingly makes false,
material representations of fact in connection with an
application to register. See Torres v. Cantine Torresella
S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986). A
party making a fraud claim is under a heavy burden because
fraud must be proved by clear and convincing evidence,
Opposition No. 91152940
10
leaving nothing to speculation, conjecture, or surmise. Any
doubt must be resolved against the party making the claim.
See Smith International, Inc. v. Olin Corporation, 209 USPQ
1033 (TTAB 1981).
Statements regarding the use of the mark on the
identified goods and/or services are certainly material to
issuance of a registration. See Hachette Fillipacchi Presse
v. Elle Belle, LLC, ___ USPQ2d ___ (TTAB, Cancellation No.
92042991, April 9, 2007) (fraud found based on applicant's
allegation of use of its mark for a wide variety of clothing
items for men, women and children when mark had not been
used for any identified items for men or children and only
for a limited number of items for women); Hurley
International LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007)
(fraud found based on applicants' allegation of use of their
mark for various entertainment services and production
services, when mark had not been used anywhere in the world
for some of the services and had not been used in commerce
with or in the United States for other services); Standard
Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d
1917 (TTAB 2006) (counterclaim petition for cancellation of
petitioner's pleaded registrations granted when fraud found
based on misrepresentation regarding use of the mark on most
of the goods identified in the filed applications); First
International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628
(TTAB 1988) (fraud found in applicant’s filing of
Opposition No. 91152940
11
application with verified statement that the mark was in use
on a range of personal care products when applicant knew it
was in use only on shampoo and hair setting lotion).
This case is similar to Medinol Ltd. v. Neuro Vasx,
Inc., 67 USPQ2d 1205 (TTAB 2003). In Medinol, a trademark
application was filed, the mark was published, a statement
of use was submitted, and a registration issued for "medical
devices, namely, neurological stents and catheters." In
response to a petition for cancellation, registrant admitted
in its answer that the mark was not used on stents. The
Board stated as follows:
The fraud alleged by petitioner is that
respondent knowingly made a material
representation to the USPTO in order to obtain
registration of its trademark for the identified
goods. There is no question that the statement
of use would not have been accepted nor would
registration have issued but for respondent’s
misrepresentation, since the USPTO will not
issue a registration covering goods upon which
the mark has not been used. (cites omitted).

Id. at 1208.

In the case at hand, there is no dispute and no genuine
issue of material fact that applicant filed an application
based on use in commerce and signed a declaration attesting
to the truth of all the statements in the application when
she knew or should have known that she had not used the mark
in connection with the recited services, i.e., "retail store
services featuring, bath products, gift products, [and]
Opposition No. 91152940
12
candy products."7 There is no question that applicant's
misrepresentation resulted in the involved application being
approved for publication as a use-based application.
From the original filing of her application until the
filing of her motion to amend the filing basis of the
application to Trademark Act Section 1(b), applicant
asserted a claim of use under Trademark Act Section 1(a).
However, in her responses to opposer's discovery requests
which opposer submitted as evidence in support of its motion
for summary judgment, applicant states that the STAACHI'S
CO. 1996 mark "has never been used in commerce."
Applicant's responses to interrogatory nos. 1-3. Applicant
further states that she not had any income and has not done
any marketing. Applicant's responses to interrogatory nos.
6-7.
Thus, as in Medinol, a material representation of fact
with regard to use of the mark on particular services was
made by the mark’s owner and that statement was relied upon
by the USPTO in determining applicant's rights to the

7 An applicant may not claim a Section 1(a) filing basis unless
the mark is in use in commerce on or in connection with all goods
and/or services covered by the Section 1(a) basis as of the
application filing date. See Trademark Rule 2.34(a)(1)(i). Cf.
E.I. du Pont de Nemours & Co. v. Sunlyra International, Inc., 35
USPQ2d 1787, 1791 (TTAB 1995). The involved application includes
the following statement: "Applicant is using or is using through
a related company the mark in commerce on or in connection with
the ... identified goods/services." Also, applicant signed the
oath at the conclusion of the application under penalty of "fine
or imprisonment, or both ... that ... willful false statements
may jeopardize the validity of the application or any resulting
registration...."
Opposition No. 91152940
13
registration. In Board inter partes proceedings, "proof of
specific intent is not required, rather, fraud occurs when
an applicant or registrant makes a false material
representation that the applicant or registrant knew or
should have known was false." General Car and Truck Leasing
Systems Inc. v. General Rent-A-Car Inc., 17 USPQ2d 1398,
1400-01 (S.D. Fla. 1990), aff’g General Rent-A-Car Inc. v.
General Leaseways, Inc., Canc. No. 14,870 (TTAB May 2, 1988)
(intent of the signatories not material to question of
fraud).
As the Board determined in Medinol, "the
appropriate inquiry is ... not into the registrant’s
subjective intent, but rather into the objective
manifestations of that intent." Medinol Ltd. v. Neuro Vasx,
Inc., supra at 1209. In Medinol, the Board concluded that
the facts justified a finding of fraud:
The undisputed facts in this case clearly
establish that respondent knew or should have
known at the time it submitted its statement of
use that the mark was not in use on all of the
goods. Neither the identification of goods nor
the statement of use itself was lengthy, highly
technical, or otherwise confusing, and the
President/CEO who signed the document was clearly
in a position to know (or to inquire) as to the
truth of the statements therein.

Id. at 1209-1210.
As previously indicated, applicant stated repeatedly in
her responses to opposer's interrogatories that she has not
engaged in commerce and that her business is in the
Opposition No. 91152940
14
formation stage and also stated that she has not used the
mark since approximately April 1996. Although she asserts
in response to the motion for summary judgment that she has
used the mark in commerce since March 1996 and has denied
certain requests for admission regarding nonuse of the
mark,8 she has provided no details that are sufficient to
raise a genuine issue of material fact with regard to the
fraud claim. Without further corroboration, the general
statement and denials of requests for admission are not
sufficient to refute applicant's earlier, more specific, and
contradictory statements in response to opposer's
interrogatories so as to create a genuine issue of material
fact requiring resolution at trial. Applicant was certainly
in a position to have personal knowledge of the facts
concerning whether she had used her mark in connection with
the services identified in her application prior to filing
that application. Even if applicant honestly believed that
her activities in connection with her involved mark
warranted filing the involved application based on use in
commerce under Trademark Section 1(a), there is no genuine
issue that, under the circumstances, it was not reasonable

8 An admission in response to a request for admission
“conclusively establishe[s]” the matter that is subject of that
request. Fed. R. Civ. P. 36(b). However, a denial in response
to a request for admission is merely a refusal to stipulate to
certain matter. See National Semiconductor Corp. v. Ramtron
Int’l Corp., 265 F.Supp.2d 71 (D.D.C. 2003).

Opposition No. 91152940
15
for applicant to believe that her activities in 1996
constituted current use or use in commerce for the
identified services at the time she signed her application.
That is, applicant could not have reasonably believed that
either registration of STAACHI'S EXCLUSIVES as a fictitious
business name in 1996 and a one-time giveaway of twenty-five
product samples bearing the involved mark in 1996 were
sufficient to constitute use or use in commerce of the mark
STAACHI'S CO. 1996 and design for "retail store services
featuring, bath products, gift products, [and] candy
products" when the involved application was filed on
February 20, 2001, nearly five years after these activities.
Inasmuch as applicant's material representations regarding
use of the mark were false and applicant knew or should have
known such representations were false, we conclude that
applicant has committed fraud.
This case is distinguished from Maids to Order of Ohio
Inc. v. Maid-to-Order Inc., 78 USPQ2d 1899 (TTAB 2006),
wherein the Board found that the defendant's limited use of
its mark across state lines in connection with its recited
services provided the defendant's president with a
reasonable basis for her belief that the mark was being used
in interstate commerce in connection with the recited
services when respondent filed an application for
registration, a declaration under Trademark Act Section 8,
Opposition No. 91152940
16
15 U.S.C. Section 1058, and an application for renewal, and
that such good faith belief was sufficient to negate an
inference of fraud. The present case does not present a
question, as in Maids to Order, about whether use in
connection with the identified services constituted use in
commerce. Rather, the instant case presents a question
whether there was any use of the mark in connection with the
identified services. Applicant has pointed to no use of the
mark in connection with any retail store services that would
have provided applicant with any basis for claiming that the
mark was in use in commerce when she filed her use-based
application. As noted supra, applicant's activities related
to the formation of her business without subsequent
rendering of her retail store services do not provide a
basis for a claim of use of her mark in commerce for such
services.9 See In re Port Authority of New York, supra.
Further, applicant's one-time use of the mark on products
does not provide a basis for asserting service mark use.
See TMEP Section 1301.01(a) (4th ed. 2005).
In view of the above, we find that applicant's material
misrepresentations made in connection with her application
were fraudulent and, therefore, the application is void ab

9 This is not a case where the question is whether use of the
mark constituted use for retail services. Applicant has not used
the mark for Internet retailing, mail-order or catalogue
retailing, or retailing from a fixed store location. In short,
there has been no retailing whatsoever.

Opposition No. 91152940
17
initio. Accordingly, summary judgment is entered in
opposer’s favor on the issue of fraud. Inasmuch as opposer
did not move for summary judgment on its pleaded likelihood
of confusion claim, we need not reach the issue of
likelihood of confusion.
However, to prevail in this proceeding, opposer must
establish not only a valid ground for denying the
registration sought, as it has, but must also prove its
standing. See, e.g., Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). While
opposer's allegation that it is the owner of previously used
and registered marks would, if proven, suffice to establish
its standing, opposer has not yet submitted any evidence on
this point.10 See id.
Opposer is therefore allowed until thirty days from the
mailing date set forth in the caption of this order in which
to submit a showing that there is no genuine issue of fact
as to standing, and that it is entitled to judgment on the
issue of standing as a matter of law. Applicant is allowed
until fifty days from the mailing date set forth in the
caption of this order to file a response thereto, if

10 Although opposer alleged ownership of the pleaded registrations
in the amended notice of opposition, applicant stated in her
answer thereto that she was without "sufficient knowledge or
information on which to form a belief as to the truth" of
opposer's allegation that it owns the pleaded registrations.
In addition, opposer did not submit status and title copies of
any of its pleaded registrations. Further, it did not ask
Opposition No. 91152940
18
desired. If opposer's showing is sufficient to establish
its entitlement to summary judgment on the issue of
standing, summary judgment on standing will be entered in
opposer's favor, and the opposition will be sustained. If
opposer's showing is not sufficient on the issue of
standing, proceedings will resume on that issue alone.
This proceeding remains otherwise suspended pending
opposer's response.

applicant to admit that opposer owns the pleaded registrations in
its requests for admission.