Southwest Specialty Food Inc.v.Crazy Uncle Jester’s Inferno World, LLC

Trademark Trial and Appeal Board

Jun 24, 2016

No. 92060809 (T.T.A.B. Jun. 24, 2016)

GMM Mailed: June 24, 2016 Cancellation No. 92060809 Southwest Specialty Food Inc. v. Crazy Uncle Jester’s Inferno World, LLC Before Quinn, Zervas, and Bergsman, Administrative Trademark Judges. By the Board: Now before the Board are the parties’ cross-motions for summary judgment on Petitioner’s pleaded claim of likelihood of confusion, filed on January 27, 2016 (Respondent) and February 26, 2016 (Petitioner). In its cross-motion, Petitioner also moved in the alternative for partial summary judgment on the issues of priority and similarity of the marks, and for summary judgment on Respondent’s affirmative defenses of laches, unclean hands, waiver, acquiescence, estoppel, claim preclusion, and issue preclusion. The parties’ motions have been fully briefed. For purposes of this order we presume the parties’ familiarity with the pleadings, and the arguments and evidence submitted in support of or in opposition to the motions for summary judgment. In reaching our decision, all of the parties’ arguments were carefully considered in light of the evidence of record, although we 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 ORDER IS NOT A PRECEDENT OF THE TTAB Cancellation No. 92060809 2 do not find it necessary to discuss all of them in our opinion. See Guess? IP Holder L.P. v. Knowluxe LLC, 116 USPQ2d 2018, 2018 (TTAB 2015). Background Petitioner owned Registration No. 2077145 for the mark SPONTANEOUS COMBUSTION (in typed form) for “salsa, wing, and hot sauce” in International Class 30. Petitioner’s Motion, Ex. A (11 TTABVUE 18) and Ex. H, Declaration of Jeffery Jacobs (“Jacobs Decl.”), ¶ 9 (11 TTABVUE 78). The registration issued on July 8, 1997, on the Principal Register, but was cancelled in 2008 due to Petitioner’s professed “inadvertent” failure to file the required renewal documents.1 Jacobs Decl., ¶¶ 9-10 (11 TTABVUE 78). On July 14, 2009, Respondent filed an application for registration of the mark CRAZY UNCLE JESTER’S SPONTANEOUS COMBUSTION (in standard character form) for “hot sauce,” in International Class 30. The application matured to registration on March 30, 2010, as Registration No. 3766615. On February 9, 2010, Petitioner’s president, Jeffrey Jacobs, “refiled a new U.S. trademark application” to register the mark SPONTANEOUS COMBUSTION for goods including “hot sauce” (hereinafter the “replacement application”).2 Jacobs Decl., 1 The USPTO records indicate that the registration was issued to Jeffrey Jacobs, and subsequently assigned to Petitioner by an assignment document executed on October 9, 1997, and recorded with the USPTO Assignment Recordation Branch on October 22, 1997, at Reel/Frame 1651/0865. 2 The replacement application was filed in the name of Jeffrey Jacobs doing business as Southwest Specialty Food, Inc., but identified the applicant’s legal entity type as an Arizona corporation. The application was signed by Jeffrey Jacobs as “owner.” Thus it is unclear whether the application was filed by Mr. Jacobs as an individual or by Southwest Specialty Food, Inc. See TMEP § 1201.02(c) (“If the information in the ‘owner section’ of a TEAS Cancellation No. 92060809 3 ¶ 11 (11 TTABVUE 80). However, the USPTO refused Petitioner’s replacement application on the ground of likelihood of confusion with Respondent’s Registration No. 3766615. Id. Petitioner, acting pro se at the time, submitted arguments attempting to overcome the refusal, but those efforts were not successful. Id. See also 11 TTABVUE 83-85. On January 6, 2011, Petitioner filed a civil action against Respondent in the United States District Court for the District of Arizona, asserting claims of federal trademark infringement, unfair competition, and dilution under Arizona law arising from Respondent’s use of the mark CRAZY UNCLE JESTER’S SPONTANEOUS COMBUSTION. See 11 TTABVUE 57-62). In an order dated June 22, 2011, the district court dismissed the action due to lack of personal jurisdiction over Respondent. See 11 TTABVUE 64-74. On February 2, 2015, Petitioner filed a petition for cancellation of Respondent’s Registration No. 3766615 for the mark CRAZY UNCLE JESTER’S SPONTANEOUS COMBUSTION. See 1 TTABVUE. Petitioner subsequently filed an amended petition for cancellation on May 7, 2015. See 7 TTABVUE. In its amended petition for cancellation, Petitioner seeks cancellation of Registration No. 3766615 on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) application form is inconsistent with the information in the ‘entity section’ of the form, the inconsistency can be corrected, for example, if an individual is identified as the owner and a corporation is listed as the entity, the application may be amended to indicate the proper applicant name/entity.”). Cancellation No. 92060809 4 and likelihood of dilution by blurring under Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c). With respect to the Section 2(d) claim, Petitioner asserts that Respondent’s mark CRAZY UNCLE JESTER’S SPONTANEOUS COMBUSTION for “hot sauce” is likely to be confused with Petitioner’s previously-used mark SPONTANEOUS COMBUSTION for “hot sauce, salsa, wing sauce, and other spicy products.” Petition, ¶¶ 1-2, 13-21 (7 TTABVUE 2, 4-5). With respect to the Section 43(c) claim, Petitioner asserts that its SPONTANEOUS COMBUSTION mark is distinctive and became famous prior to Respondent’s first use of the mark CRAZY UNCLE JESTER’S SPONTANEOUS COMBUSTION, and that Respondent’s mark impairs or is likely to impair the distinctiveness of Petitioner’s famous mark. Petition, ¶¶ 22-25 (7 TTABVUE 5). In its answer (filed June 26, 2015), Respondent denied the salient allegations in the petition for cancellation and asserted various affirmative defenses. The Pleadings As an initial matter, a decision on summary judgment necessarily requires a review of the operative pleadings. Asian and Western Classics B.V. v. Selkow, 92 USPQ2d 1478, 1478 (TTAB 2009). Further, Respondent, by way of its “failure to state a claim defense,” questions the sufficiency of Petitioner’s pleading. Accordingly, before turning to the merits of the parties’ cross-motions, we first examine the claims Cancellation No. 92060809 5 in the amended petition for cancellation and the defenses asserted in Respondent’s answer. 1. Petitioner’s Amended Petition for Cancellation Upon review of the amended petition for cancellation (filed May 27, 2015), we find that Petitioner has adequately pleaded grounds of likelihood of confusion and dilution by blurring under Sections 2(d) and 43(c) of the Trademark Act, respectively. Petitioner alleges ownership of common law rights in the mark SPONTANEOUS COMBUSTION; that there is a likelihood of confusion between Petitioner’s mark and Respondent’s mark; that Petitioner has priority of use; that Petitioner’s mark is inherently distinctive; that Petitioner’s mark became famous prior to Respondent’s earliest use of its mark; and that registration of Respondent’s mark impairs or is likely to impair the distinctiveness of Petitioner’s famous mark. 2. Respondent’s Answer and Affirmative Defenses Respondent, in its answer to the amended petition for cancellation, denied the salient allegations in the petition for cancellation and asserted the following affirmative defenses: 5. Petitioner’s Amended Petition for Cancellation fails to state a claim upon which relief can be granted. 6. Petitioner’s Amended Petition for Cancellation is barred in whole or in part by the doctrine of laches and unclean hands. 7. Petitioner’s Amended Petition for Cancellation is barred in whole or in part by the doctrine of waiver, acquiescence, and estoppel. Cancellation No. 92060809 6 8. Petitioner’s Amended Petition for Cancellation is barred in whole or in part by prior judgment, claim preclusion, and issue preclusion. Answer, ¶¶ 5-8 (8 TTABVUE 3). Respondent’s defense in numbered paragraph 5, that Petitioner has failed to state a claim upon which relief can be granted, is not a true affirmative defense because it relates to an assertion of the insufficiency of the pleading rather than a statement of a defense to a properly pleaded claim. See Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1738 n.7 (TTAB 2001). Nonetheless, we have reviewed the sufficiency of Petitioner’s pleading and explained above that Petitioner has sufficiently pleaded claims of likelihood of confusion and dilution. Accordingly, Petitioner’s defense of failure to state a claim is stricken. Paragraphs 6-8 in Respondent’s answer consist of bald allegations of the affirmative defenses of laches, unclean hands, waiver, acquiescence, estoppel, prior judgment, claim preclusion, and issue preclusion. A legally sufficient pleading of each defense must include enough factual detail to provide Petitioner fair notice of the basis for the defense. Fed. R. Civ. P. 8(b)(1) and 12(f); see e.g., IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1953 (TTAB 2009); Midwest Plastic Fabricators, Inc. v. Underwriters Laboratories Inc., 5 USPQ2d 1067, 1069 (TTAB 1980). A party must allege sufficient facts beyond a tender of “naked assertion[s]” devoid of “further factual enhancement,” to support its claims or defenses. Ashcroft v. Iqbal, 556 U.S. 662, 663 (2009), quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). Respondent’s affirmative defenses in Paragraphs 6-8 are insufficiently pleaded and therefore are stricken. See, e.g., Midwest Plastic Fabricators, 5 USPQ2d Cancellation No. 92060809 7 at 1069 (striking unclean hands defense because there were “no specific allegations of conduct by petitioner that, if proved, would prevent petitioner from prevailing on its claim”); TBMP § 311.02(b) (2015) (“The elements of a defense should be stated simply, concisely, and directly. However, the pleading should include enough detail to give the plaintiff fair notice of the basis for the defense.”). Cf. McDonnell Douglas Corp. v. National Data Corp., 228 USPQ 45, 47 (TTAB 1985), (petitioner’s recitation of the statutory language did not provide fair notice of basis its § 2(a) claim). In view of our decision to strike Respondent’s affirmative defenses, Petitioner’s motion for summary judgment on the defenses of laches, unclean hands, waiver, acquiescence, estoppel, claim preclusion, and issue preclusion is denied without prejudice as moot. As discussed further below, Respondent will be allowed time in which to file and serve an amended answer in which it may attempt to properly set forth the stricken defenses of laches, waiver, acquiescence, and equitable estoppel, to the extent they may be properly asserted based on the circumstances of the case. On the other hand, it is apparent from the parties’ arguments and evidence in support of their cross- motions for summary judgment that it would be futile for Respondent to amend its Cancellation No. 92060809 8 answer in an attempt to adequately plead the defenses of unclean hands, prior judgment, claim preclusion, and issue preclusion. Respondent’s unclean hands defense is grounded on a claim that Petitioner infringed Respondent’s mark.3 The Board does not have jurisdiction over infringement claims or defenses. See, e.g., FirstHealth of the Carolinas Inc. v. CareFirst of Md. Inc., 479 F.3d 825, 81 USPQ2d 1919, 1921 (Fed. Cir. 2007); General Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1591 (TTAB 2011) (“The Board has no authority to determine the right to use, or the broader questions of infringement, unfair competition[.]”). Accordingly, it would be futile for Respondent to amend its answer in an attempt to plead an unclean hands defense predicated on a claim of infringement. See generally Foman v. Davis, 371 U.S. 178, 183 (1962) (“futility of amendment” is a reason to deny a Rule 15(a) motion); see also, Am. Express Mktg. & Dev. Corp. v. Gilad Dev. Corp., 94 USPQ2d 1294, 1300 (TTAB 2010) (leave to amend answer to plead an additional affirmative defense denied as futile). Regarding Respondent’s affirmative defenses of prior judgment, claim preclusion, and issue preclusion, as noted above Petitioner has submitted evidence that on January 6, 2011, it filed a trademark civil action against Respondent in the United States District Court for the District of Arizona and that the court ultimately 3 See Respondent’s combined reply brief in support of its motion for summary judgment and brief in opposition to Petitioner’s cross-motion for summary judgment, pp. 6-7 (14 TTABVUE 8-9). Cancellation No. 92060809 9 dismissed the action due to lack of personal jurisdiction over Respondent. See 11 TTABVUE 57-62 and 64-74.4 For claim preclusion (res judicata) or issue preclusion (collateral estoppel) to apply, there must have been, inter alia, a judgment on the merits of the prior claim or adjudication of the issue.5 “A judgment of a court having jurisdiction of the parties and of the subject matter operates as res judicata, in the absence of fraud or collusion, even if obtained upon a default.” Morris v. Jones, 329 U.S. 545, 550-51 (1947) (emphasis added). Similarly, under the doctrine of issue preclusion, if an issue is actually and necessarily determined by a court of competent jurisdiction, that determination is normally conclusive in a subsequent suit involving the parties to the prior litigation so long as the party against whom the prior judgment is asserted had 4 Respondent did not address Petitioner’s motion for summary judgment on the defenses of claim preclusion and issue preclusion. However, Respondent refers to the Arizona case when discussing laches, arguing that following dismissal of the Arizona case Petitioner did not pursue action in the appropriate jurisdiction. See 14 TTABVUE 8. Therefore, it is evident that Respondent’s defenses of prior judgment, claim preclusion, and issue preclusion, while insufficiently pleaded, were intended to be based on district court’s order dismissing the civil action for lack of personal jurisdiction over Respondent. 5 The requirements which must be met for claim preclusion are: (1) identity of parties (or their privies); (2) an earlier final judgment on the merits of a claim; and (3) a second claim based on the same set of transactional facts as the first. Jet Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n.5 (1979)). The requirements which must be met for issue preclusion are: (1) the issue to be determined must be identical to the issue involved in the prior litigation; (2) the issue must have been raised, litigated, and actually adjudged in the prior action; (3) the determination of the issue must have been necessary and essential to the resulting judgment; and (4) the party precluded must have been fully represented in the prior action. Mother’s Rest. Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566, 221 USPQ 394, 397 (Fed. Cir. 1983). Cancellation No. 92060809 10 a full and fair opportunity to litigate the issue. See Mother’s Rest. Inc. v. Mama’s Pizza, Inc., 221 USPQ 394, 397 (Fed. Cir. 1983) (emphasis added). Where a court lacks personal jurisdiction over defendants, dismissal of the case on jurisdictional grounds by that court does not involve an adjudication on the merits and thus does not preclude relitigation of the cause of action originally asserted. See Nat’l Ass’n of Home Builders v. E.P.A., 786 F.3d 34, 41 (D.D.C. 2015); Dias v. Bogins, 927 F.Supp. 18, 23 (D.N.H. 1995) (a court whose judgment is asserted as a basis for an application of the doctrine of claim preclusion (or res judicata) must be one of competent jurisdiction). Cf. Fed. R. Civ. P. 41(b) (“Unless the dismissal order states otherwise, a dismissal under this subdivision (b) and any dismissal not under this rule-except one for lack of jurisdiction, improper venue, or failure to join a party under [Federal Rule of Civil Procedure] 19-operates as an adjudication on the merits.”).6 Where there is a lack of personal jurisdiction, a court’s dismissal of claims against a defendant, even if purportedly rendered on the merits, generally would not bar re-litigation of those claims if the court did not have personal jurisdiction over the defendant. See Derr v. Swarek, 766 F.3d 430, 440 (5th Cir. 2014); Computer Assocs. Int’l, Inc. v. Altai, Inc., 126 F.3d 365, 44 USPQ2d 1281, 1284-85. (2d Cir. 1997) (“Even where a second action arises from some of the same factual circumstances that gave 6 A motion for involuntary dismissal under Federal Rule of Civil Procedure 41(b) is unavailable in Board inter partes proceedings. See Stockpot, Inc. v. Stock Pot Rest., Inc., 220 USPQ 52, 56 n.7 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665, 668-69 (Fed. Cir. 1984). However, the statement in that rule regarding the effect of dismissals is informative. Cancellation No. 92060809 11 rise to a prior action, res judicata is inapplicable if formal jurisdictional or statutory barriers precluded the plaintiff from asserting its claims in the first action.”). Here, the Arizona court dismissed the prior action between the parties due to lack of personal jurisdiction over Respondent. In doing so, the court did not adjudicate any claims based on the same set of transactional facts now before the Board, and other than the jurisdictional dispute no issues were actually litigated. Accordingly, for at least these reasons, the affirmative defenses of prior judgment, claim preclusion, and issue preclusion would not apply in this Board proceeding and therefore any attempt by Respondent to amend its answer to assert these defenses would be futile. See e.g., BE Sport, Inc. v. Al-Jazeera Satellite Channel, 115 USPQ2d 1765, 1769 (TTAB 2015) (applicant’s motion for leave to amend its answer to assert the proposed additional defense of res judicata denied as futile). In view of the above, Respondent is allowed until TWENTY DAYS from the mailing date of this order in which to file and serve an amended answer which properly sets forth the affirmative defenses of laches, waiver, acquiescence, or equitable estoppel, to the extent any of these defenses may be properly asserted based on the circumstances of the case, failing which the defenses will be dismissed with prejudice and the cancellation will move forward only on Respondent’s denials of Petitioner’s pleaded claims.7 However, we decline to afford Respondent an 7 Fed. R. Civ. P. 11, applicable to Board proceedings by operation of Trademark Rule 2.116(a), and U.S. Patent and Trademark Office Rule 11.18, require that all pleadings and papers be made in good faith and with evidentiary support. Specifically, all defenses and allegations in support thereof must have a basis in law or fact, and must not be filed for any improper purpose. Cancellation No. 92060809 12 opportunity to attempt to amend its putative defenses of unclean hands, prior judgment, claim preclusion, and issue preclusion because amendment would be futile. Summary Judgment Summary judgment is appropriate only where there are no genuine disputes as to any material facts, thus allowing the case to be resolved as a matter of law. Fed. R. Civ. P. 56(a). The party moving for summary judgment has the initial burden of demonstrating that there is no genuine dispute of material fact remaining for trial and that it is entitled to judgment as a matter of law. 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). The nonmoving party must be given the benefit of all reasonable doubt as to whether genuine disputes of material fact exist; and the evidentiary record on summary judgment, and all inferences to be drawn from the undisputed facts, must be viewed in the light most favorable to the nonmoving party. See Opryland USA, Inc. v. Great Am. Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992). The Board may not resolve genuine disputes as to material facts; it may only ascertain whether they exist. See Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993). When cross motions for summary judgment are presented, the moving party in each motion has the burden as to its own motion, and the Board evaluates each motion on its own merits and resolves all doubts and inferences against the party The parties are further advised that the Board’s jurisdiction is limited to determining the registrability of a mark. The Board does not have jurisdiction over the right to use, infringement, or unfair competition claims. TBMP § 102.01 (2015). Cancellation No. 92060809 13 whose motion is being considered. See Mingus Constructors, Inc. v. United States, 812 F.2d 1387, 1391 (Fed. Cir. 1987); Drive Trademark Holdings, 83 USPQ2d at 1437. The fact that both parties have moved for summary judgment does not necessarily mean that there are no genuine disputes of material fact, or that a trial is unnecessary. See Amazon Tech. Inc. v. Wax, 95 USPQ2d 1865, 1871 (TTAB 2010). 1. Respondent’s Motion for Summary Judgment In determining the issue of likelihood of confusion and, in this case, whether there is any genuine dispute of material fact, we consider all of the DuPont factors which are relevant under the present circumstances and for which there is evidence of record. See E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Respondent has submitted evidence that Petitioner, in connection with its unsuccessful prosecution of its replacement application to register the mark SPONTANEOUS COMBUSTION, argued before the USPTO that “it is very unlikely that were would be any confusion [between Petitioner’s Mark and Respondent’s Mark].” Resp. Mot., Ex. D. (10 TTABVUE 31); Ex C., Petitioner’s response to request for admission no. 2 (10 TTABVUE 28). Although the arguments made by Petitioner during the ex parte prosecution of its application may be relevant to the likelihood of confusion analysis, they are not dispositive of the issue. See Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 153-154 (CCPA 1978) (finding that a likelihood of confusion argument made in support of an application for registration is a legal conclusion, and Cancellation No. 92060809 14 therefore, cannot constitute an admission because only facts may be admitted); Calypso Tech. Inc. v. Calypso Capital Mgmt. LP, 100 USPQ2d 1213, 1223 (TTAB 2011) (recognizing that a party’s position in a prior proceeding “is not an admission, but may be considered only as illuminative of shade and tone in the total picture”); Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d 1271 (TTAB 2009) (“The doctrine of ‘file wrapper estoppel’ does not apply in trademark cases” nor does a party’s position in a prior proceeding “rise to the level of an admission against interest.”); Taffy’s of Cleveland, Inc. v. Taffy’s, Inc., 189 USPQ 154, 156 (TTAB 1975) (fact that petitioner argued before examining attorney that its mark and that of respondent were not confusingly similar does not preclude petitioner from asserting likelihood of confusion as ground for cancellation). Accordingly, Petitioner’s statements in connection with the prosecution of its replacement application do not establish the absence of any genuine dispute of material fact regarding likelihood of confusion. Respondent also has submitted evidence that neither Respondent nor Petitioner are aware of any instances of actual confusion. Respondent’s Mot., Ex. A, Affidavit of Jeffrey Stevenson (“Stevenson Aff.”) ¶ 10 (10 TTABVUE 12); Ex. B., Petitioner’s response to interrogatory nos. 16-18 (10 TTABVUE 22). However, evidence of actual confusion is not necessary to show a likelihood of confusion, and its absence is not dispositive. See Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983); Kabushiki Kaisha Hattori Tokeiten v. Cancellation No. 92060809 15 Scuotto, 228 USPQ 461, 463 (TTAB 1985). Moreover, Respondent has offered no evidence regarding the nature and extent of the parties’ use of their respective marks and whether or not there has been any meaningful opportunity for actual confusion to occur. See, e.g., Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992) (noting that there was no evidence that the parties’ goods had been sold together in the same locality for a significant period of time). To the contrary, Respondent has argued that it does not market and offer its products in Arizona, where Petitioner is located. See Stevenson Aff., ¶ 8-9 (10 TTABVUE 11-12). Accordingly, the absence of reported instances of actual confusion does not establish the absence of any genuine dispute of material fact regarding likelihood of confusion. Respondent goes on to argue that the mark SPONTANEOUS COMBUSTION is “highly suggestive … weak and is entitled to only a limited scope of protection.” See 10 TTABVUE 8. Respondent further contends that the presence of the wording “CRAZY UNCLE JESTER’S” in its mark is sufficient to distinguish the parties’ marks and obviate likelihood of confusion. Id. However, Respondent has not submitted any evidence to support its contention that the wording “spontaneous combustion” is highly suggestive and weak, and thus Respondent’s position regarding the alleged weakness of Petitioner’s mark amounts to mere attorney argument. Respondent also has submitted evidence that while “it sells its hot sauce in stores and online” it does not sell its hot sauce in Arizona,” where [Petitioner] is located.” Stevenson Aff., ¶ 8-9 (10 TTABVUE 11-12). However, Respondent has submitted Petitioner’s interrogatory responses, including Petitioner’s response to interrogatory Cancellation No. 92060809 16 11, in which Petitioner states that its goods have been marketed and distributed in “[a]ll 50 states[.]” Resp. Mot., Ex. B. (10 TTABVUE 19-20). In any event, Respondent’s arguments and evidence concerning any alleged geographical limitations are irrelevant. Respondent’s involved registration contains no geographic restrictions, and affords Respondent the presumption of the exclusive right to use of its registered mark throughout the United States regardless of its actual extent of use. Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b). See also Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 393 (Fed. Cir. 1983). Even if the parties’ goods are marketed and sold in discrete areas of the country, we must consider whether there would be a likelihood of confusion if the parties were to use their marks in connection with their respective goods in the same area. Respondent also has submitted statements of its owner, Mr. Stevenson, asserting that Respondent uses a design of a grinning jester in connection with the word mark CRAZY UNCLE JESTER’S SPONTANEOUS COMBUSTION. Stevenson Aff., ¶ 7 and Ex. 1 (10 TTABVUE 11 and 13. However, Respondent’s mark is registered in standard character form “without claim to any particular font style, size, or color.” Trademark Rule 2.52(a). The manner in which Respondent actually displays the mark thus is immaterial. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000) (“Registrations with typed drawings are not Cancellation No. 92060809 17 limited to any particular rendition of the mark and, in particular, are not limited to the mark as it is used in commerce.”).8 Respondent’s arguments and evidence concerning Petitioner’s graphics are similarly unpersuasive. Petitioner, in its amended petition for cancellation, bases its claim on its alleged common law rights in the mark SPONTANEOUS COMBUSTION, without reference to any design elements. Amended Petition, ¶¶ 1- 2. The only evidence Respondent has submitted regarding Petitioner’s actual use of the mark SPONTANEOUS COMBUSTION is Petitioner’s arguments to the USPTO in connection with its unsuccessful attempt to overcome the Section 2(d) refusal and register its replacement application to register the mark SPONTANEOUS COMBUSTION, in which Petitioner argued that its “unique packaging graphic design has an exploding mouth below the word Spontaneous Combustion” and that “it is very unlikely that there would be any confusion” with Respondent’s mark. Resp. Mot., Ex C., Petitioner’s response to request for admission no. 2 and Ex. D. (10 TTABVUE 31). Respondent otherwise has submitted no evidence to establish the extent to which Petitioner uses a design in connection with the mark 8 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. A typed mark is the legal equivalent of a standard character mark. TMEP § 807.03(i) (April 2016). Marks presented in standard or typed characters are not limited to any particular depiction. The rights associated with a mark in standard or typed characters reside in the wording and not in any particular display. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909-11 (Fed. Cir. 2012); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983); In re RSI Systems, LLC, 88 USPQ2d 1445, 1448 (TTAB 2008). Cancellation No. 92060809 18 SPONTANEOUS COMBUSTION and has offered no evidence regarding the commercial impression or consumer perception of Petitioner’s mark. Respondent also has offered evidence that it only uses its mark “on one of its numerous hot sauces” (Stevenson Decl., ¶ 6, 10 TTABVUE 11) whereas Petitioner uses its mark “on a variety of different products, including hot sauce.” Resp. Mot., Ex. B, Petitioner’s answer to interrogatory no. 11 (10 TTABVUE 19). These arguments similarly fail to establish the absence of any genuine dispute of material fact regarding likelihood of confusion. Respondent concedes that the parties use their respective marks on hot sauce. If relatedness is established for any item encompassed by the identification of goods within a particular class, then registration is refused as to the entire class. See, e.g., Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004). Once likely confusion is found as to one item in a single class, registration is refused as to the entire class. Id. When we view Respondent’s arguments and evidence in the light most favorable to Petitioner as the non-movant with respect to Respondent’s motion for summary judgment, we find that, at a minimum, genuine disputes of material fact exist regarding the similarity or dissimilarity of the parties’ respective marks in appearance, sound, meaning, and commercial impression, as well as the extent to which there has been any meaningful opportunity for actual confusion to occur, such Cancellation No. 92060809 19 that the absence of reported instances of confusion would be probative. We therefore deny Respondent’s motion for summary judgment on Petitioner’s Section 2(d) claim. 2. Respondent’s Cross-Motion for Summary Judgment Petitioner, in its cross-motion, seeks summary judgment on its Section 2(d) claim and alternatively seeks partial summary judgment on the issues of priority and the similarity of the parties’ marks. 9 a. Standing In cancellation proceedings before the Board a plaintiff must plead, and ultimately prove, that it has a “real interest,” i.e., a direct and personal stake, in the outcome of the proceeding, as well as a “reasonable basis” for its belief of damage. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1063 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston Purina Co., 213 USPQ 185, 189 (TTAB 1982). The Court of Appeals for the Federal Circuit has enunciated a liberal threshold for determining standing in Board proceedings. Ritchie v. Simpson, 50 USPQ2d at 1030. There is no requirement that actual damage be pleaded. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Books on Tape Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987). However, the allegations in support of a plaintiff’s belief of damage must have a “reasonable basis in fact.” Ritchie v. Simpson, 50 USPQ2d at 1027; TBMP § 309.03(b). 9 As discussed supra, Petitioner’s motion for summary judgment on Respondent’s affirmative defenses of laches, unclean hands, waiver, acquiescence, estoppel, claim preclusion, and issue preclusion is moot in view of our determination that the defenses were insufficiently pleaded. Cancellation No. 92060809 20 There is no genuine dispute of material fact regarding Petitioner’s standing. Petitioner has sufficiently alleged a plausible claim of damage under Section 2(d),10 as discussed infra, by submitting evidence establishing its priority, Petitioner has proven its standing.11 See, e.g., Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (“Petitioner has established its common-law rights in the [pleaded mark], and has thereby established his standing to bring this proceeding.”). b. Priority Petitioner’s evidence of prior use of its pleaded mark consists of sales documents and the declaration of Petitioner’s president, Jeffrey Jacobs.12 Mr. Jacobs avers in his declaration that “[i]n 1995 I created the mark SPONTANEOUS COMBUSTION for a hot sauce product”; “[b]y at least as early as January 1996 [Petitioner] had sold hot 10 While neither party has moved for summary judgment on Petitioner’s dilution claim, if a plaintiff can show standing on one ground, it has the right to assert any other grounds. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012); Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1543 n.10 TTAB 2009). 11 Petitioner also submitted evidence showing that Respondent’s registration was cited as a bar to registration of Petitioner’s replacement application under Trademark Act Section 2(d). Ordinarily, this too would suffice to establish Petitioner’s standing. See, e.g., Lipton Indus., 213 USPQ at 189 (“to have standing in this case, it would be sufficient that appellee prove that it filed an application and that a rejection was made because of appellant’s registration.”). However, as noted supra at note 2, the replacement application contained internal inconsistencies making it unclear whether the application was filed by Mr. Jacobs as an individual or by Petitioner as an Arizona corporation. Thus, we have not considered the rejected replacement application in determining standing. 12 Petitioner’s sales documents were attached as Exhibit E to the “statement of facts” signed by Petitioner’s counsel. However, Petitioner’s president, in his declaration, referred to the documents and authenticated them as “true and correct copies of invoices and other documents reflecting the sales of SPONTANEOUS COMBUSTION hot sauce to customers/distributors in Oregon, Delaware, North Carolina, and Ohio.” See Declaration of Jeffrey Jacobs, ¶ 5 (11 TTABVUE 78). Cancellation No. 92060809 21 sauce bearing the SPONTANEOUS COMBUSTION mark to its customers in other states”; and [b]y 2001, [Petitioner] was actively selling in the order one hundred thousand units of SPONTANEOUS COMBUSTION hot sauce per year throughout the United States.” Petitioner’s Motion, Ex. H, Declaration of Jeffrey Jacobs, ¶ 5 (“Jacobs Decl.”) (11 TTABVUE 78). Mr. Jacobs further avers that “our major U.S. distributors, including Pepper Palace, Inc. (since at least 2000) Bass Pro Shops (since at least 2000) and Peppers.com (since at least 1996) either individually or together, distribute the SPONTANEOUS COMBUSTION products to the fifty (50) states of the United States.” Id., at ¶ 7 (11 TTABVUE 79). Mr. Jacobs further states that Petitioner has hosted an online store since at least as early as 1998 and “also runs several webstores on Amazon.com including Spontaneous Combustion … since at least as early as 2001.” Id., at ¶ 8 (11 TTABVUE 79). Petitioner’s sales documents, consisting of purchase orders and invoices, show specific sales of hot sauce under the mark SPONTANEOUS COMBUSTION on January 12, 1996, and at discrete points of time in 2002, 2005, 2008, 2009, and 2012. Petitioner’s Motion, Ex. E (11 TTABVUE 45-51, 54-55). Although the sales documents exhibit only small quantities of sales, they corroborate Mr. Jacobs’ statements in his declaration, which are clear, internally consistent, and uncontroverted. See e.g., 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) (fact that Cancellation No. 92060809 22 allegations in affidavit not supported by invoice does not undermine the testimony when uncontradicted). Mr. Jacobs’ statements regarding Petitioner’s use of the mark SPONTANEOUS COMBUSTION are internally consistent and not characterized by uncertainty and are supported by evidence of that use. Moreover, Respondent does not dispute Petitioner’s prior use. To the contrary, in its combined reply brief in support of its motion for summary judgment and brief in opposition to Petitioner’s cross-motion for summary judgment, Respondent states “[Petitioner] started using its mark in January of 1996” and “Respondent began using its mark in January of 2003.” See 14 TTABVUE 4. Respondent, by setting forth these dates, has conceded Petitioner’s prior use of the mark SPONTANEOUS COMBUSTION. In view of Mr. Jacob’s uncontroverted declaration statements regarding Petitioner’s prior use, the verified documents evidencing that use, and Respondent’s acknowledgment of Petitioner’s prior use, there is no genuine dispute of material fact regarding Petitioner’s standing to bring this cancellation proceedings, as well as Petitioner’s priority. We therefore grant Petitioner’s motion for partial summary with respect to the issue of its priority. As indicated above, we also find that the same evidence that establishes that there is no genuine dispute of material Cancellation No. 92060809 23 fact as to Petitioner’s priority establishes that there is no genuine dispute of material fact as to Petitioner’s standing. c. Likelihood of Confusion Turning to the issue of likelihood of confusion, Petitioner has moved for summary judgment on its Section 2(d) claim, and, in the alternative, for partial summary judgment on the issue of the similarity of the parties’ marks. Petitioner argues that the parties’ marks are confusingly similar and that “[l]egions of cases have held that adding a distinctive mark to someone else’s trademark does not avoid a likelihood of confusion.” See Petitioner’s Mot., pp. 4-5, and cases cited therein (11 TTABVUE 5-6). However, none of the inter partes cases cited by Petitioner were decided on summary judgment. Thus, in each case the Board was able to make determinations of fact regarding the similarity of the marks at issue. In further support of its contention that confusion is likely, Petitioner has submitted a copy of a USPTO office action dated May 12, 2010, in which the assigned USPTO Examining Attorney refused registration of Petitioner’s replacement application for the mark SPONTANEOUS COMBUSTION pursuant to Section 2(d) on the ground of likelihood of confusion with Respondent’s registered mark CRAZY UNCLE JESTER’S SPONTANEOUS COMBUSTION. See 11 TTABVUE 27. Petitioner’s reliance on the Examining Attorney’s Section 2(d) refusal of its replacement application does not establish the absence of any genuine dispute of material fact regarding likelihood of confusion. We must determine the merits of Cancellation No. 92060809 24 Petitioner’s Section 2(d) claim on the record before us and are not bound by the determination of the examining attorney. See, e.g., In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001); In re Rodale Inc., 80 USPQ2d 1696, 1699 (TTAB 2006). When we view Petitioner’s arguments and evidence in the light most favorable to Respondent as the non-movant with respect to Petitioner’s cross-motion for summary judgment, we find that, at a minimum, genuine disputes of material fact exist regarding the similarity or dissimilarity of the parties’ respective marks in appearance, sound, meaning, and commercial impression. We therefore deny Petitioner’s cross-motion for summary judgment on its Section 2(d) claim. For the same reasons, we also deny Petitioner’s alternative motion for partial summary judgment on the issue of the similarity of the parties’ marks. Summary Respondent’s motion for summary judgment on Petitioner’s Section 2(d) claim is denied. Petitioner’s cross-motion for summary judgment on its Section 2(d) claim, and its alternative motion for partial summary judgment on the issue of the similarity of the marks, are denied.13 Petitioner’s alternative motion for partial summary judgment on the issue of priority is granted. Also, we find that the same evidence that establishes that there 13 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 issues necessarily are the only issues that remain for trial. See, e.g., Am. Express Mktg. & Dev. Corp. v. Gilad Dev. Corp., 94 USPQ2d 1294, 1301 n.5 (TTAB 2010). Also, the parties should note that the evidence submitted in connection with their cross- motions for summary judgment is of record only for consideration of the motions. To be Cancellation No. 92060809 25 is not a genuine dispute of material fact as to Petitioner’s priority also establishes Petitioner’s standing. Petitioner’s motion for summary judgment on Respondent’s affirmative defenses of laches, unclean hands, waiver, acquiescence, estoppel, claim preclusion, and issue preclusion is denied without prejudice as moot. Respondent is allowed until twenty days from the mailing date of this order in which to file and serve an amended answer which properly sets forth the affirmative defenses of laches, waiver, acquiescence, or equitable estoppel, to the extent any of these defenses may be properly asserted based on the circumstances of the case, failing which the defenses will be dismissed with prejudice and the cancellation will move forward only on Respondent’s denials of Petitioner’s pleaded claims. Proceedings are resumed and remaining dates are reset as follows. Discovery Closes 7/14/2016 Plaintiff’s Pretrial Disclosures 8/28/2016 Plaintiff’s 30-day Trial Period Ends 10/12/2016 Defendant’s Pretrial Disclosures 10/27/2016 Defendant’s 30-day Trial Period Ends 12/11/2016 Plaintiff’s Rebuttal Disclosures 12/26/2016 Plaintiff’s 15-day Rebuttal Period Ends 1/25/2017 considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial period. See Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB 1998); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993). Cancellation No. 92060809 26 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. Trademark Rule 2.125. Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An oral hearing will be set only upon request filed as provided by Trademark Rule 2.129.