The Joy of Cooking Trust comprised of trustees Ethan Becker and Mark Beckerv.Christopher McCarley

Trademark Trial and Appeal Board

Oct 5, 2012

No. 91198657 (T.T.A.B. Oct. 5, 2012)

jk Mailed: October 5, 2012

Opposition No. 91198657

The Joy of Cooking Trust
comprised of trustees
Ethan Becker and Mark Becker

v.

Christopher McCarley

Before Quinn, Zervas and Cataldo,
Administrative Trademark Judges.

By the Board:
Christopher McCarley (“applicant”) filed an application to
register the mark JOY OF GRILLING (standard characters,
GRILLING disclaimed) for:
“books, a series of written articles featuring
information and recipes regarding grilling, magazines and
recipe cards featuring information and recipes regarding
grilling” in International Class 16;

“clothing, namely, t-shirts, sweatshirts, aprons and
headgear, namely, hats, caps and visors” in International
Class 25; and

“electronic digitizing of photographs into a computer
readable media; conversion of data from physical to
electronic media” in International Class 42.1

The Joy of Cooking Trust (“opposer”) filed a notice of
opposition on the grounds of 1) false suggestion of a

1 Application Serial No. 77951028, filed March 4, 2010, on the
basis of use in commerce pursuant to Trademark Act § 1(a), and
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91198657

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connection, under Trademark Act § 2(a), 2) priority and
likelihood of confusion under Trademark Act § 2(d), and 3)
dilution under Trademark Act § 43(c). It asserts ownership of:
1) Registration Nos. 21157792, 22974233, 32030004, 32047035
and 32119706 for the mark JOY OF COOKING (standard
characters; COOKING disclaimed) for, respectively:

“series of books relating to cooking and food” in
International Class 16;

“providing a web page concerning general interest
information in the field of cooking” in International
Class 42;

“measuring spoons and cups, timers, and thermometers” in
International Class 9;

“turners, ladles, mashers, graters, presses, whisks,
scoops, scrapers, cake/basting brushes, pie servers,
tongs, basters, and spatulas” in International Class 21;

“non-electric handtools and implements, namely, spoons,
forks, peelers, slicers, zesters, can openers, cutters for
cakes, pizza and vegetables” in International Class 8; and

2) Registration Nos. 35954637 and 35954648 for the mark
JOY OF COOKING and design (shown below) for

“frozen prepared or packaged sauces and entrees consisting
of pasta, rice and noodles” in International Class 30, and

“frozen, prepared or packaged appetizers and entrees
consisting primarily of meat, poultry, seafood, fruit or
vegetables” in International Class 29.

asserting a date of first use anywhere and date of first use in
commerce of December 1, 2009.
2 Registered November 25, 1997; first renewal August 6, 2007.
3 Registered December 7, 1999; first renewal September 30, 2009.
4 Registered January 23, 2007.
5 Registered January 30, 2007.
6 Registered February 20, 2007.
7 Registered March 24, 2009.
8 Registered March 24, 2009.
Opposition No. 91198657

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Opposer filed a motion for partial summary judgment,
pursuant to Fed. R. Civ. P. 56, with respect to “books” and
“magazines” on the ground of nonuse of the mark prior to the
filing date of the application. The motion has been fully
briefed.9
Unpleaded Issue; Motion to Amend
Pursuant to Fed. R. Civ. P. 56(a), a party may not
obtain summary judgment on an issue that has not been
pleaded. See TBMP § 528.07(a).
Opposer did not plead nonuse of the mark as of the filing
date of the application as a ground for opposition.
Subsequently, with its motion to strike applicant’s
supplemental response, opposer moved for leave to file an

9 Opposer filed and served (by first class mail) its motion on
March 5, 2012. Applicant’s brief in opposition thereto was due
by April 9, 2012. Applicant’s brief, filed April 10, 2012 by
mail and with no Certificate of Mailing, is untimely. See
Trademark Rule 2.120(e)(1); TBMP 528.02. In its discretion, the
Board has declined to grant opposer’s motion as conceded, and has
given consideration to applicant’s brief.
With respect to future filings in this proceeding, the Board
encourages applicant to file via the online ESTTA system,
instructions for which are available at http://estta.uspto.gov.
Opposer’s June 14, 2012 motion to strike applicant’s May 21,
2012 supplemental response is granted. Said supplemental
response has been given no consideration.
Opposition No. 91198657

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amended notice of opposition. Said amended pleading adds new
paragraph 11:
11. In fact, Applicant has failed to make any use
at all, including no use in commerce, of the mark
“JOY OF GRILLING” in connection with either “books”
or “magazines.”

The Board construes this allegation as setting forth the
ground that applicant had no bona fide use of his mark in
commerce prior to the filing of his use-based application
for registration. See Barbara’s Bakery Inc. v. Landesman,
82 USPQ2d 1283, 1289 (TTAB 2007) (registration is allowed
only as to goods upon which the mark is being used as of the
application filing date, and an opposition will be sustained
as to any of the identified goods as to which it is shown
that no use had been made as of the application filing
date).
Opposer’s motion for leave to amend is uncontested.
Furthermore, the motion is governed by Fed. R. Civ. P.
15(a)(2), and the Board liberally grants leave to amend
pleadings at any stage of a proceeding when justice so
requires, unless the proposed amendment would violate settled
law or be prejudicial to the rights of the adverse party.
See TBMP 507.02, and cases cited therein. Accordingly,
opposer’s motion is granted as conceded (see Trademark Rule
2.127(a)), and as well-taken inasmuch as the amendment is
legally sufficient and would not be prejudicial to applicant.
Opposition No. 91198657

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Thus, the amended notice of opposition filed June 14, 2012
is opposer’s operative pleading in this proceeding, and we
consider the merits of opposer’s motion for summary judgment in
view of this pleading.
Analysis
Summary judgment is appropriate where the movant shows
that there is no genuine dispute as to any material fact and
that it is entitled to judgment as a matter of law. Fed. R.
Civ. P. 56(a). A party asserting that a fact cannot be true
or is genuinely disputed must support its assertion by
either 1) citing to particular parts of materials in the
record, or 2) showing that the materials cited do not
establish the absence or presence of a genuine dispute, or
that an adverse party cannot produce admissible evidence to
support the fact. Fed. R. Civ. P. 56(c).
The party seeking judgment in its favor carries the
burden of proof. See Celotex Corp. v. Catrett, 477 U.S.
317, 323-24 (1986). In deciding a summary judgment motion,
the function of the Board is not to try issues of fact, but
to determine if there are any genuine disputes of material
fact to be tried. See TBMP § 528.01, and cases cited
therein.
To prevail, opposer must demonstrate that the record
establishes that there is no genuine dispute of material
fact that applicant made no bona fide use in commerce of the
Opposition No. 91198657

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mark JOY OF GRILLING on or in connection with “books” or
“magazines” prior to the filing of his use-based
application.
Opposer argues that during discovery applicant provided
no evidence of his use of JOY OF GRILLING in connection with
either “books” or “magazines,” and provided no evidence of
sales or shipments of such goods bearing the mark. Under
declaration of opposer’s counsel, opposer states that none
of the materials applicant produced in response to Document
Request No. 7 - which reads “Please produce a specimen of
every good or service which you have sold or offered for
sale or promoted under Applicant’s Mark” - includes a
specimen of a book or magazine. (Beall decl. para 8).
Counsel also attests that his “independent review of the
Applicant’s website” revealed “no indication that Applicant
is offering for sale or distribution any book or magazine
that displays the mark” (Beall decl. para 14). The
declaration does not introduce any exhibits.
Applicant responds that he “provided evidence of
‘recipe cards’ used in commerce, as shown in the
application, which satisfies the requirement to demonstrate
use of items covered by Class 16,” that opposer “seeks to
usurp the role of the USPTO and challenge Applicant’s
specimen under Rule 16,” and that opposer “attempts to
unearth an issue which has already been resolved to the
Opposition No. 91198657

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satisfaction of the USPTO” (brief, p. 1). Applicant
submitted no declaration as part of his response;
applicant’s only proffered evidence was a copy of his
response to an Office action, attached as an exhibit to his
brief, wherein he identified the submitted specimen as a
“printed recipe card,” as well as copies of the specimens
filed with said response, some of which appear to be recipe
cards.
In reply, opposer asserts that applicant offered no
rebuttal to opposer’s assertion that there is no evidence of
applicant’s use of the mark on “books” or “magazines.”
On the record before us, applicant has failed to come
forth with evidence that demonstrates that there is a
genuine dispute regarding opposer’s assertion that applicant
did not use the mark JOY OF GRILLING on “books” and
“magazines” as of the filing date of the application.
Applicant relies on the argument that he is entitled to
registration of the mark for these goods based on the
examining attorney’s acceptance of his recipe card specimen
of use for International Class 16. However, this argument
fails to raise a genuine dispute regarding nonuse because
the examining attorney’s acceptance of the specimen in
approving the mark for publication in International Class 16
was not, and need not be, pursuant to a determination that
applicant had demonstrated use of JOY OF GRILLING on each of
Opposition No. 91198657

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the goods identified in that class. An applicant who seeks
registration based on Trademark Act § 1(a) is not required
to submit a specimen of use for each good identified in a
class, but rather is only required to submit one specimen
for each class of goods. See TMEP § 904.01(a) (8th ed.
2011). Thus, the examining attorney’s acceptance of a
specimen proving use of a mark on one good in a class does
not prove or disprove evidence of use of the mark on other
goods in the class. Accordingly, in the context of a
summary judgment motion, the examining attorney’s acceptance
of the specimen submitted in support of the application does
not raise a genuine dispute as to whether applicant used the
mark on goods other than printed recipe cards.
Thus, opposer has set forth a record upon which it has
carried its burden of demonstrating that it is entitled to
judgment as a matter of law with respect to the nonuse claim
pertaining to “books” and “magazines” in International Class
16. In view thereof, opposer’s motion for summary judgment
is granted, and the opposition is sustained, with respect to
these goods.
Sufficiency of the notice of opposition
Upon review of the pleadings, neither the original nor
amended notices of opposition sufficiently set forth the
grounds of 1) false suggestion of a connection, under Trademark
Opposition No. 91198657

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Act § 2(a),10 and 2) dilution under Trademark Act § 43(c).11
Accordingly, this proceeding is resumed solely on the priority
and likelihood of confusion claim directed to the goods in
International Class 25, the services in International Class 42,
and the following goods in International Class 16:
A series of written articles featuring
information and recipes regarding grilling,
and recipe cards featuring information
and recipes regarding grilling.

Schedule
Pretrial disclosure and trial dates are hereby reset as
follows:
Plaintiff's Pretrial
Disclosures due 11/23/2012
Plaintiff's 30-day Trial Period
Ends 1/7/2013
Defendant's Pretrial 1/22/2013

10 A pleading of false suggestion of a connection requires
allegations that: 1) the mark is the same as, or a close
approximation of, the name or identity previously used by another
person or institution; 2) the mark would be recognized as such,
in that it points uniquely and unmistakably to that person or
institution; 3) the person or institution identified in the mark
is not connected with the goods sold by respondent under the
mark; and 4) the fame or reputation of the named person or
institution is of such a nature that a connection with such
person or institution would be presumed when respondent’s mark is
used on its goods. See Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imps. Co., 703 F.2d 1372, 217 USPQ 505, 508-10 (Fed.
Cir. 1983); Buffet v. Chi-Chi’s, Inc., 226 USPQ at 429.

11 A pleading of dilution requires allegations that: (1) opposer’s
mark is famous; (2) opposer’s mark became famous before applicant
commenced use of the challenged mark, or in a proceeding opposing
an intent-to-use application, that opposer’s mark became famous
prior to the filing date of the application; and (3) applicant’s
use is likely to cause dilution of the distinctive quality of
opposer’s mark or lessens the capacity of the mark to identify
and distinguish opposer’s goods or services. See Toro Co. v.
ToroHead Inc., 61 USPQ2d 1164, 1172-1173 (TTAB 2001); Polaris
Industries Inc. v. DC Comics, 59 USPQ2d 1798 (TTAB 2000).

Opposition No. 91198657

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Disclosures due
Defendant's 30-day Trial Period
Ends 3/8/2013
Plaintiff's Rebuttal
Disclosures due 3/23/2013
Plaintiff's 15-day Rebuttal
Period Ends 4/22/2013

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.l25.
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.l29.