Universal City Studios, LLLPv.Valen Brost

Trademark Trial and Appeal Board

Aug 18, 2004

No. 91153683 (T.T.A.B. Aug. 18, 2004)

Greenbaum
Mailed: 8/18/2004
Opposition No. 91153683
UNIVERSAL CITY STUDIOS,
LLLP
v.
VALEN BROST
Before Hairston, Walters, and Chapman, Administrative
Trademark Judges.
By the Board.
This case now comes up on opposer’s concurrently filed
motions for leave to file an amended notice of opposition,
and for summary judgment on the newly pleaded grounds for
opposition. The parties have fully briefed the issues, and
we have considered opposer’s reply briefs.1 See Trademark
Rule 2.127(a).
OPPOSER’S MOTION FOR LEAVE TO FILE
AMENDED NOTICE OF OPPOSITION
We turn first to opposer’s motion for leave to amend
the notice of opposition to add claims of (i) applicant’s
non-use of the mark UNIVERSAL TOYS in commerce prior to the
filing date of his use-based application, (ii) applicant’s
1 The parties’ stipulation (filed April 16, 2004) to extend the
briefing schedule for both motions is approved.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3514
THIS OPINION IS NOT
CITABLE
AS PRECEDENT OF
THE TTAB
Opposition No. 91153683
2
lack of ownership of the involved mark, and (iii)
applicant’s fraud in representing to the USPTO that he had
used the mark in commerce prior to the filing date of his
opposed application. Opposer contends that it first learned
of the new grounds in mid-March 2004, when it took
applicant’s discovery deposition;2 that opposer promptly
thereafter filed the motion for leave to amend (before
opposer’s testimony period was scheduled to open); and that
allowing the amendment will not prejudice applicant because
applicant possesses all information relevant to the new
allegations.
In response, applicant argues that opposer should have
addressed applicant’s commercial use and ownership of the
involved mark, and any related fraud claims, while discovery
was open; and that opposer’s inexcusable delay in pursuing
these claims will prejudice applicant by preventing
applicant from effectively defending himself without
conducting additional discovery.
Once a responsive pleading is served, Fed. R. Civ. P.
15(a) allows a party to amend its pleading only upon written
consent of the adverse party, or by leave of the court (or,
in this instance, the Board). Leave to amend is freely
given when justice so requires. Accordingly, the Board
2 By agreement of the parties, the discovery deposition of
applicant occurred one month after the discovery period closed.
Opposition No. 91153683
3
liberally grants leave to amend pleadings at any stage of a
proceeding when justice so requires, unless entering the
proposed amendment would violate settled law or be
prejudicial to the rights of the adverse party, or would be
futile. See, e.g., Commodore Electronics Ltd. v. CBM
Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993). See also,
TBMP §507.02 (2d ed. rev. 2004).
As opposer filed its motion for leave to amend before
the opening of its testimony period, and promptly after it
learned of the basis therefor, the motion is timely. See,
e.g., Commodore Electronics, supra; United States Olympic
Committee v. O-M Bread Inc., 26 USPQ2d 1221 (TTAB 1993); and
Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki
Kaisha, 22 USPQ2d 1316, 1318 (TTAB 1992). Further,
applicant’s argument that he will be prejudiced due to the
delay and his inability to conduct discovery are not
convincing. This amendment to the pleadings involves only
the normal delay in acting on such a matter, and applicant
has made no showing as to what discovery he needs regarding
the new claims about applicant’s own use. Thus, applicant
has not shown that he would be prejudiced by the granting of
the motion to amend. He has neither argued nor shown that
the amendment would be futile for failure to state a claim
upon which relief may be granted. See Trademark Rule
2.107(a).
Opposition No. 91153683
4
Opposer’s motion for leave to file an amended notice of
opposition is granted, and its amended notice of opposition
is accepted.
OPPOSER’S MOTION FOR SUMMARY JUDGMENT
A party is entitled to summary judgment when it has
demonstrated that there is no genuine issue as to any
material fact, and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(c). The evidence must be
viewed in a light favorable to the nonmoving party, and all
justifiable inferences are to be drawn in the nonmovant’s
favor. Opryland USA Inc. v. The Great American Music Show
Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
As a threshold matter, there is no genuine issue that
opposer has standing to maintain this proceeding. In
support of the motions for leave to file an amended notice
of opposition and for summary judgment, opposer submitted
the declaration of Anne B. Nielson, opposer’s Vice President
and Senior Trademark Counsel, in which she avers as to
opposer’s ownership of its five UNIVERSAL and UNIVERSAL-
inclusive registrations that opposer pleaded in the notice
of opposition, and that opposer is using and/or licensing
“various marks and names consisting of or containing the
mark ‘UNIVERSAL.’”3 Nielson Decl. Par. 2.
3 The original and amended notices of opposition include claims
of likelihood of confusion between opposer’s previously used and
registered UNIVERSAL and UNIVERSAL-inclusive marks for a variety
Opposition No. 91153683
5
We now turn to opposer’s claim that applicant had not
used the mark in commerce before he filed the application.
An application filed under Section 1(a) of the Trademark Act
is void ab initio if the first use of the mark occurs after
the filing date of the application. See Justin Industries,
Inc. v. D.B. Rosenblatt, Inc., 213 USPQ 968, 974-75 (TTAB
1981)(application void where application filed before first
order or sale and delivery of goods under the mark
occurred).
The record shows that applicant did not use the mark in
commerce before he filed the opposed application.
Specifically, during applicant’s discovery deposition, the
pertinent pages of which opposer submitted in support of the
summary judgment motion, applicant testified that he had not
used the applied-for mark in commerce either as of the July
31, 2001 execution and mailing date of the application, or
the August 6, 2001 filing date of the application, and that
the first sales of goods bearing the mark occurred in “the
late fall of 2001 or early 2002,” (Tr. 54:22-55:2) or
possibly as late as the New York Toy Fair in February 2002.
In response to the summary judgment motion on the issue
of applicant’s use of the mark in commerce, applicant argues
that he shipped goods bearing the UNIVERSAL TOYS trademark
of entertainment, communication, marketing and development
services and products, including the licensing and sale of toys,
and applicant’s mark UNIVERSAL TOYS for toy rockets.
Opposition No. 91153683
6
in commerce on July 31, 2001; and that his first use of the
mark in commerce included, among other things, the mailing
of brochures through interstate commerce. Applicant
supports these arguments in a concurrently submitted
declaration offered “[i]n clarification of my deposition
transcript.” However, applicant’s declaration directly
contradicts, rather than clarifies, his prior testimony with
respect to his claimed pre-filing use in commerce.
Specifically, applicant makes the following statement
in his declaration:
Par 4: In clarification of my deposition transcript, I
shipped samples of finished product I referred to at
page 56, line 2-4 of my deposition transcript to key
customers including Toys R Us and Zany Brainy at the
time I sent out brochures bearing the UNIVERSAL TOYS
mark on or about July 31, 2001.
A party cannot create an issue of fact, and thereby
avoid summary judgment, merely by submitting an affidavit or
declaration contradicting his prior deposition testimony,
without explaining the contradiction or attempting to
resolve the disparity. Sinskey v. Phamada Ophthalmics Inc.,
982 F.2d 494, 25 USPQ2d 1290 (Fed. Cir. 1992) cert. denied,
508 U.S. 912 (1993). Applicant has done neither to our
satisfaction.
Upon careful consideration of the arguments and
evidence presented by the parties, and drawing all
justifiable inferences in favor of applicant as the
nonmoving party, we find that opposer has demonstrated,
Opposition No. 91153683
7
through applicant’s own testimony in his discovery
deposition, that no genuine issue of material fact remains
for trial, and that opposer is entitled to judgment as a
matter of law, with respect to opposer’s claim that
applicant had not used the mark in commerce as of the filing
date of the application.
In view thereof, opposer’s motion for summary judgment
on the issue of applicant’s non-use of the mark in commerce
prior to the filing date of the application is GRANTED.4
Accordingly, judgment is hereby entered against
applicant, the opposition is sustained on the basis that
applicant had not used the mark prior to the filing date of
his use-based application, the application is void ab
initio, and registration to applicant is refused.
4 In view of our decision granting opposer’s summary judgment
motion on the issue of applicant’s non-use of the mark in
commerce prior to the filing date of the application, we need not
reach the issues of whether applicant was the owner of the mark
as of the filing date of the application, whether applicant made
fraudulent representations to the USPTO that the mark had been
used in commerce as of the filing date of his application, and
whether contemporaneous use of the parties’ respective marks on
the identified goods and/or services is likely to cause
confusion.