Victoria Kheelv.Lions Gate Entertainment Inc.

Trademark Trial and Appeal Board

Jun 28, 2017

No. 91222461 (T.T.A.B. Jun. 28, 2017)

CME Mailed: June 28, 2017

Opposition No. 91222461
Victoria Kheel

v.
Lions Gate Entertainment Inc.

Before Kuhlke, Wellington, and Greenbaum,
Administrative Trademark Judges.

By the Board:
This case now comes up on the parties’ cross-motions for summary judgment, filed
March 1, 2017, and Opposer’s cross-motion for discovery under Fed. R. Civ. P. 56(d),
filed March 31, 2017. Opposer’s motion for summary judgment and cross-motion for
Fed. R. Civ. P. 56(d) discovery are fully briefed.
Background
Applicant seeks registration of the mark POPI, in standard character format, for
“cosmetics; cosmetic preparations for body care; nail polish; nail decals; bath crystals;
bath gel; bath oil; bath salts; body lotion; cream soaps; fragrances; moisturizing
creams; shaving soap; soaps for personal use.”1

1 Application Serial No. 86346513; filed July 24, 2014 based on an allegation of a bona fide
intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b).
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
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In her amended notice of opposition, Opposer alleges prior use and registration of
the mark POPPY’S for “all-purpose cleaning preparations; all-purpose cleaners; bath
soaps; carpet cleaning preparations; cleaning agents and preparations; cleaning
preparations; cleaning preparations for household purposes; dish detergents; general
purpose cleaning, polishing, and abrasive liquids and powders; glass cleaning
preparations; granulated soaps; hand soaps; household cleaning preparations;
laundry soap; leather cleaning preparations; liquid soaps for hands, face and body;
odor removers for pets; oven cleaners; pet stain removers; powder cleaners for metals,
ceramics and carpets; soap powder; soaps for household use; soaps for personal use;
soaps for toilet purposes.”2 As grounds for opposition, Opposer alleges likelihood of
confusion and fraud.
In its amended answer, Applicant denies the salient allegations in the amended
notice of opposition that are pertinent to the parties’ cross-motions for summary
judgment, and counterclaims to cancel Opposer’s pleaded registration as void ab
initio on the ground that Opposer did not own the mark POPPY’S when she filed the
underlying use-based application. Opposer denies the salient allegations in the
counterclaim.
Summary
Applicant moves for summary judgment on Opposer’s fraud claim, and Opposer
cross-moves for discovery under Fed. R. Civ. P. 56(d) arguing that she needs discovery

2 Registration No. 4537279, filed October 12, 2013, issued May 27, 2014, claiming July 12,
2010 as the date of first use of the mark and first use of the mark in commerce.
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to respond to Applicant’s motion. Opposer seeks summary judgment on Applicant’s
counterclaim.
For the reasons discussed below: (1) Applicant’s motion for summary judgment on
the ground of fraud is denied; (2) Opposer’s cross-motion for discovery under Fed. R.
Civ. p. 56(d) is moot and will be given no further consideration; and (3) Opposer’s
motion for summary judgment is granted and Applicant’s counterclaim for non-
ownership is dismissed.
Summary Judgment Standard
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 seeking summary judgment bears the burden of
demonstrating the absence of any genuine dispute of material fact, and that it is
entitled to judgment under the applicable law. See Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting, 833 F.2d 1560, 4 USPQ2d
1793, 1796 (Fed. Cir. 1987). A factual dispute is genuine if, on the evidence of record,
a reasonable fact finder could resolve the matter in favor of the non-moving party.
See Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22
USPQ2d 1542, 1544 (Fed. Cir. 1992). Evidence on summary judgment must be viewed
in a light most favorable to the non-movant, and all justifiable inferences are to be
drawn in the non-movant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766,
25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. The
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Board may not resolve genuine disputes as to material facts; it may only ascertain
whether genuine disputes as to material facts exist. See Lloyd’s Food Prods., 25
USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1544.
Applicant’s Motion for Summary Judgment on Fraud and Opposer’s Cross-
Motion for Discovery under Fed. R. Civ. P. 56(d)

Opposer’s fraud claim is grounded in allegations that the Examining Attorney
refused registration of Applicant’s mark based on a likelihood of confusion with
Opposer’s mark under Section 2(d) of the Trademark Act; that in arguing against the
refusal, Applicant intentionally omitted material facts and made misleading
arguments based on the omitted facts; that the Examining Attorney relied on
Applicant’s “half-truths” and withdrew the Section 2(d) refusal; and that but for the
material misrepresentations in Applicant’s Office action response, the Examining
Attorney would not have withdrawn the Section 2(d) refusal and approved Applicant’s
mark for publication.
In its motion for summary judgment, Applicant parses out various statements
that it made in its Office action response and argues that these statements are not
statements of fact, but rather are attorney argument, are not false statements, and/or
were not material to the Examining Attorney’s decision to withdraw the Section 2(d)
refusal. The essence of Opposer’s fraud claim is that Applicant omitted information
and made arguments that, in the aggregate, misled the Examining Attorney and were
material to the Examining Attorney’s decision to withdraw the Section 2(d) refusal.
Accordingly, we will not consider Applicant’s alleged fraudulent statements in
isolation. Having considered Applicant’s alleged fraudulent statements in the
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aggregate, we find that Applicant has not met its burden of demonstrating the
absence of any genuine dispute of material fact regarding whether Applicant’s alleged
omissions and arguments predicated thereon, taken as a whole, were false and
whether they were material to the Examining Attorney’s decision to withdraw the
Section 2(d) refusal and approve Applicant’s mark for publication.
Because Applicant has not met its burden on summary judgment, Applicant’s
motion is denied, and we need not consider Opposer’s cross-motion for discovery
under Fed. R. Civ. P. 56(d), which is moot. See Land O’ Lakes, Inc. v. Hugunin, 88
USPQ2d 1957, 1960 (TTAB 2008) (treating motion for discovery pursuant to Fed. R.
Civ. P. 56(f) (now Fed. R. Civ. P. 56(d)) moot where applicant did not meet its burden
on summary judgment).
Opposer’s Motion for Summary Judgment on Non-Ownership
Applicant alleges that on October 12, 2013, when Opposer filed the use-based
application underlying the pleaded registration, the mark POPPY’S was owned by
Poppy’s Pantry, Inc., a corporation that Opposer formed in September 2009. In her
motion for summary judgment, Opposer argues that at all times, including when she
filed her application, she has owned the mark POPPY’S. 31 TTABVUE 2. More
specifically, Opposer asserts that “Poppy’s Pantry is a related company, wholly-owned
and controlled by Opposer … and its use inures to her benefit and does not affect the
validity of [the] registration as a matter of law.” Id. at 2-3.
Applicant argues that there is a genuine dispute of material fact regarding
Opposer’s sole ownership and control of Poppy’s Pantry, 40 TTABVUE 13-14; that
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“[t]here is no evidence of record of a license agreement (oral or written) or any other
document existing between Opposer and Poppy’s Pantry that amounts to a license to
use the mark under Opposer’s control,” id. at 13; that Opposer’s “intention in creating
the mark was for the purposes of use by Poppy’s Pantry,” id. at 12-13; and that when
Opposer formed Poppy’s Pantry in 2009, which was prior to the filing date of the
underlying application, “there was a presumptive transfer of ownership” of the mark
to Poppy’s Pantry. Id. at 21-22.
Under Section 1(a) of the Trademark Act, only the owner of a mark is entitled to
registration. 15 U.S.C. § 1051(a); see also In re Wella A.G., 787 F.2d 1549, 229 USPQ
274, 277 (Fed. Cir. 1986) (C.J. Nies concurring) (“Under section 1 of the Lanham Act,
only the owner of a mark is entitled to apply for registration.”) (emphasis in original);
Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630, 635 n.6 (CCPA 1976)
(“One must be the owner of a mark before it can be registered.”). Accordingly, “[a]n
application filed by one who is not the owner of the mark sought to be registered is a
void application.” In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690 (TTAB 1991)
(citing In re Techsonic Indus., Inc., 216 USPQ 619 (TTAB 1982)); see also Great Seats
Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1239 (TTAB 2007) (“In a use-based
application under Trademark Act Section 1(a), only the owner of the mark may file
the application for registration of the mark; if the entity filing the application is not
the owner of the mark as of the filing date, the application is void ab initio.”);
Trademark Rule 2.71(d) (“An application filed in the name of an entity that did not
own the mark as of the filing date of the application is void.”).
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Ownership of a mark may be based on a related company’s use of a mark. Id. at
§ 1055 (“Where a registered mark or a mark sought to be registered is or may be used
legitimately by related companies, such use shall inure to the benefit of the registrant
or applicant for registration, and such use shall not affect the validity of such mark
or of its registration[.]”). The term “related company” is defined as “any person whose
use of a mark is controlled by the owner of the mark with respect to the nature and
quality of the goods or services on or in connection with which the mark is used.” Id.
at § 1127. “The essence of ‘related company’ is the control of the nature and quality
of the goods, and this is the basis for allowing an applicant to claim ownership of a
mark based on the use by a related company.” In re Pharmacia Inc., 2 USPQ2d 1883,
1884 (TTAB 1987). Where the facts demonstrate that an individual owns a
corporation, and the ownership is so complete that “the two legal entities ‘equitably
constitute a single entity,’ then the individual will be found in sufficient control of the
mark such that use by the corporation inures to the benefit of the individual.” In re
Hand, 231 USPQ 487 (TTAB 1986)3 (explaining Smith v. Coahoma Chemical Co. Inc.,
264 F.2d 916, 121 USPQ 215 (CCPA 1959)); see also Quality Candy Shoppes/Buddy

3 In In re Hand, the Board held that if “an applicant states that use of [a] mark is by a related
company which is a wholly-owned subsidiary of applicant, and there is no information in the
application which is inconsistent with such a claim, the applicant’s claim of ownership of the
mark can be accepted as correct by the Examining Attorney” regardless of whether the
applicant is an individual, corporation or some other entity. Id. at 488 and n.2. The Board
limited this holding to the ex parte prosecution context, and as such, Applicant argues that
In re Hand is not applicable here. This argument is unpersuasive. In re Hand is limited to ex
parte prosecution to the extent that an individual applicant’s claim of ownership can be
accepted as true if there is no information in the application inconsistent with such a claim.
The proposition that use of a mark by a corporation inures to the benefit of an individual
where the facts demonstrate that the individual and the corporation “equitably constitute a
single entity” applies equally in ex parte and inter partes cases.
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Squirrel of WI Inc. v. Grande Foods, 90 USPQ2d 1389, 1392 (TTAB 2007) (“[Y]ears of
precedent make it very clear that proper use of a mark by a trademark owner’s
licensee or related company constitutes ‘use’ of that mark attributable to the
trademark owner.”).
In support of her motion, Opposer avers that: (1) “[i]n early 2009 [she] coined the
mark Poppy’s, naming it after [her] English bull-dog Poppy” and “began development
of [her] all-natural soap products to help [her] family get rid of toxins in their
environment,” 31 TTABVUE 20, Kheel Declaration, ¶ 2; (2) “in September 2009 [she]
formed Poppy’s Pantry as a corporation,” id. ¶ 3; (3) “[a]t the time of the formation of
the corporation, and at all times to the present, Poppy’s Pantry is and was [her]
wholly-owned and wholly-controlled company,” id. at ¶ 5; (4) she has “always been
and [is] 100% owner of Poppy’s Pantry Inc., dba Poppy’s Naturally Clean. There are
no other owners or shareholders, and there never have been,” id.; and (5) “at all times
[she] has controlled the nature and quality of the goods under the mark POPPY’s”
including “the formulation, labeling, marketing, advertising and sales, etc., of all
goods bearing the mark POPPY’s” and “[e]very decision concerning the mark, its use
or the goods sold under [the] mark is made solely and exclusively by [her].” Id. at 23
¶ 17.
Applicant argues that “Opposer has not established an absence of a genuine
[dispute] of material fact regarding her sole control and ownership of Poppy’s Pantry
because the evidence reflects that she alone does not run Poppy’s Pantry, but instead
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does so with her sons.” 40 TTABVUE 10. In support of this position, Applicant points
to:
• Opposer’s statement in a brief that she filed in this proceeding that she “along
with one of her sons … run[s] the company”;

• evidence that Opposer’s sons “represented Poppy’s Pantry at the Arroyo Food
Co-op grand opening”; and

• evidence that one of Opposer’s sons “has created marketing content for Poppy’s
Pantry, including a video promoting the products that is displayed on Facebook
and YouTube, in which Opposer Victoria Kheel is credited as an Executive
Producer.”

Id. at 14.
Running a company is not the same as owning a company. The actions of Opposer’s
sons are typical of a company employee and are not sufficient to create a genuine
dispute of material fact regarding ownership of Poppy’s Pantry. Opposer’s averments
of ownership are clear and convincing and uncontradicted by Applicant.4 GAF Corp.
v. Amatol Analytical Servs., Inc., 192 USPQ 576, 577 (TTAB 1976) (“It is established
that ownership of a trademark and of a trademark registration as well as use of a
mark may be established by the oral testimony of a single witness where such
testimony is clear, consistent, convincing, circumstantial and uncontradicted.”).
Opposer’s declaration also is corroborated by the clear and convincing declarations of
her sons who each aver that they have worked for Poppy’s Pantry as an employee,

4 Opposer attached to her declaration a Fictitious Business Name Statement and three
Schedule K-1 tax forms. 31 TTABVUE 26-27, 32-33 and 41-44. Applicant objects to these
documents on the ground that Applicant requested such documents, but Opposer did not
produce them, and because the documents are incomplete and unsigned. 40 TTABVUE 14-
15 and 19. We need not address Applicant’s evidentiary objections because Opposer’s
uncontradicted declaration is sufficient, on its own, to establish the absence of any genuine
dispute of material fact regarding her sole ownership of Poppy’s Pantry.
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and have never had an ownership interest in Poppy’s Pantry or controlled the
business. 43 TTABVUE 16-17.
Because there is no genuine dispute of material fact that Opposer is the sole owner
of Poppy’s Pantry, there is no genuine dispute of material fact that Poppy’s Pantry is
a related company whose use of the POPPY’S mark inures to the benefit of Opposer.
Accordingly, we need not consider whether Opposer has licensed the mark to Poppy’s
Pantry.
Finally, the case law does not support Applicant’s arguments that in 2009, when
Poppy’s Pantry was incorporated, “there was a presumptive transfer of ownership” to
Poppy’s Pantry, and that because Opposer intended that Poppy’s Pantry use the
mark, Poppy’s Pantry is the owner of the mark.
With respect to the first argument, Applicant cites to Huang v. Tzu Wei Chen Food
Co. Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988) and Am. Mnfg. Co., v. Phase
Indus. Inc., 192 USPQ 498 (TTAB 1976). In Huang, both parties and the Board agreed
that “in accordance with the terms of incorporation, ownership of the trademark
passed” from the individual applicant to the newly formed corporation. Huang, 7
USPQ2d at 1335-36. In Am. Mnfg. Co., the Board held that “[a] merger of one
corporation into another effects a transfer of all of the business, assets and liabilities
of the acquired corporation into the surviving corporation.” 192 USPQ at 500. Here,
there is no evidence that the terms of incorporation for Poppy’s Pantry transferred
ownership of the mark POPPY’S from Opposer to Poppy’s Pantry. Nor does this case
involve a merger of companies.
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In support of its argument that Opposer is not the owner of the POPPY’S mark
because she intended that Poppy’s Pantry use the mark, Applicant cites Am. Forests
v. Sanders, 54 USPQ2d 1860 (TTAB 1999). In that case, the Board found that an
intent-to-use application filed under Section 1(b) of the Trademark Act was void ab
initio because when the application was filed, it was a partnership consisting of the
applicant and her husband who had a bona fide intent to use the mark rather than
applicant as an individual. This case is distinguishable because Opposer filed her
underlying application based on a claim of use under Section 1(a) of the Trademark
Act, which does not require an allegation of intent, but instead requires only that the
owner of the mark file the application and allege use in commerce.
In view of the foregoing, we find no genuine disputes of material fact that: (1)
Opposer is, and was when the underlying application was filed, the sole owner of
Poppy’s Pantry; (2) Poppy’s Pantry is a related company under 15 U.S.C. § 1127; (3)
use of the POPPY’S mark by Poppy’s Pantry inures to the benefit of Opposer; and (4)
Opposer is, and was when she filed the application, the owner of the POPPY’S mark.
Accordingly, Opposer’s motion for summary judgment is granted and Applicant’s
counterclaim for non-ownership is dismissed.
Proceedings are resumed and dates are reset as follows:
Plaintiff’s Pretrial Disclosures Due July 10, 2017
Plaintiff’s 30-day Trial Period Ends August 24, 2017
Defendant’s Pretrial Disclosures Due September 8, 2017
Defendant’s 30-day Trial Period Ends October 23, 2017
Plaintiff’s Rebuttal Disclosures Due November 7, 2017
Plaintiff’s 15-day Rebuttal Period Ends December 7, 2017
BRIEFS SHALL BE DUE AS FOLLOWS:
Plaintiff’s Main Brief Due February 5, 2018
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Defendant’s Main Brief Due March 7, 2018
Plaintiff’s Reply Brief Due March 22, 2018

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
manner and timing of taking testimony, matters in evidence, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
final hearing will be scheduled only upon the timely submission of a separate notice
as allowed by Trademark Rule 2.129(a).
***