Warren Oil Co., Inc.v.Carwell Products, Inc.

Trademark Trial and Appeal Board

Aug 6, 2002

No. 91123199 (T.T.A.B. Aug. 6, 2002)

Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
DEB
Opposition No. 123,199
Warren Oil Company, Inc.
v.
Carwell Products, Inc.
Before Hohein, Walters and Bucher, Administrative Trademark
Judges.
Bucher, Administrative Trademark Judge:
An application has been filed by Carwell Products,
Inc. to register the mark LUBRIGUARD for “lubricants;
namely anti-corrosive, rust protection lubricant,” in
International Class 4.1
Registration has been opposed by Warren Oil Company,
Inc. on the ground that opposer is the prior owner of the
mark LUBRIGUARD used in connection with motor oil and other

1 Ser. No. 76/011,464, filed on March 28, 2000, which is
based upon an allegation of a bona fide intention to use the mark
in commerce.
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related petroleum products such as transmission fluid,
hydraulic fluid and machine oils.
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.
This case now comes up (1) on opposer's motion for
summary judgment, filed on February 28, 2002, which seeks a
holding of priority of use and of likelihood of confusion,
and (2) on applicant’s motion, filed on March 28, 2002, for
the imposition of judgment against opposer as a sanction
for its “signing and filing of a frivolous motion for
summary judgment in this Opposition with the sole and
improper purpose of harassing and imposing needless costs
upon [applicant].” As context for these motions and the
harsh exchanges between applicant and opposer, a brief
chronology, based upon the declarations of the principals
of applicant and of opposer, is in order.
Specialty Oil Company/Industrial Lubricants Company
adopted the mark LUBRIGUARD and began using it in
connection with industrial lubricants in 1981. In January
1995, Quaker State Oil Company purchased Specialty Oil,
including a manufacturing plant in San Antonio, Texas.
Then in 1998, Pennzoil Oil Company and Quaker State Oil
Company combined to form Pennzoil-Quaker State (PQS). In
addition to its market-leading brands (PENNZOIL and QUAKER
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STATE), the lubricants and consumer products business
segment of PQS continued to market a wide variety of
lubricants under the LUBRIGUARD mark. Then in January
2001, opposer purchased from PQS the San Antonio plant
formerly owned by Specialty Oil. The assets of this
purchase included, inter alia, the transfer of common law
rights in the unregistered LUBRIGUARD mark and the goodwill
associated therewith.
In 1999, applicant decided to rename its CP-90 rust
inhibitor – a lubricant designed to control corrosion on
vehicles and other equipment. After working with a
consulting company and reviewing a Thomson and Thomson
trademark search report, applicant adopted the mark
LUBRIGUARD for its rust protection lubricant. The instant
intent-to-use application was filed in March 2000, and
sales were initiated soon thereafter (although no amendment
to allege use has been filed) – especially to various
municipal and commercial fleets in upstate New York. The
involved application published for opposition on February
6, 2001, and following several timely requests for
extension of time, the current opposition was filed by
opposer on June 8, 2001.
As a general proposition, summary judgment is an
appropriate method of disposing of cases in which there are
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no genuine issues of material fact in dispute, thereby
allowing the proceeding to be resolved as a matter of law.
Fed. R. Civ. P. 56(c). The 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 a
judgment as a matter of law. See Celotex Corp. v. Catrett,
477 U.S. 317 (1986). The evidence pertaining to such a
motion, moreover, must be viewed in a light favorable to
the non-movant, and all justifiable inferences are to be
drawn in the non-movant’s favor. Thus, in considering the
propriety of summary judgment, the Board may not resolve
issues of material fact against the non-moving party; it
may only ascertain whether such issues are present. See
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA Inc. v.
Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471, 1472 (Fed. Cir. 1992); and Olde Tyme Foods, Inc. v.
Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed.
Cir. 1992).
Upon careful consideration of the arguments and
evidence presented, we find that there are no genuine
issues of material fact on the following issues: that
opposer has prior rights to the mark LUBRIGUARD as applied
to a wide variety of lubricants (Billy G. Stewart
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affidavit, ¶¶5-10; Ed Davis affidavit, ¶¶3-7); that the
marks are identical; that for purposes of this proceeding,
the goods of both parties must be deemed to be legally
identical – lubricants touted for their anticorrosive and
rust protection; that in spite of applicant’s marketing
emphasis targeting fleets of vehicles, the U.S. Army, and
the like, given the absence of any restrictions in the
involved application as to trade channels, it must be
presumed that the channels of trade for applicant’s goods
are, or will be, the same as that for opposer’s goods, and
hence, that ordinary consumers at retail would be common
customers; and that despite the fact that the mark is
suggestive, opposer has demonstrated that its mark is
fairly well-known because opposer and its predecessors have
used the mark on lubricants for more than twenty years, and
have sold tens of millions of dollars worth of LUBRIGUARD
lubricants each year since at least 1996.2
Accordingly, we grant opposer’s motion for summary
judgment based upon priority of use and a likelihood of
confusion.

2 The exact figures are labeled “Highly Confidential” and are
appropriately covered by the parties’ Consent Protective Order on
Confidentiality of October 2, 2001.
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Finally, we turn briefly to applicant’s motion for
sanctions against opposer. If a party files a paper in an
inter partes proceeding before the Board which violates the
provisions of Rule 11 of the Federal Rules of Civil
Procedure, the Board clearly has the authority to enter
appropriate sanctions against such party, up to and
including the entry of judgment (See 37 CFR §2.116(a)).
However, opposer’s filing of the present motion for summary
judgment was entirely appropriate under the circumstances.
Contrary to applicant’s position, there is nothing in
opposer’s conduct related to this proceeding that
represents a violation of Fed. R. Civ. Proc. §11.3 Thus, we
deny applicant’ motion for the imposition of sanctions.
Decision: This opposition is sustained and
registration to applicant is refused.

3 Ongoing attempts between the parties to reach a settlement
agreement would not toll the running of the discovery periods or
of opposer’s deadline for filing a potentially dispositive
motion. Hence, there is no reason in logic or in the law why
failed attempts between the parties to reach a settlement
agreement should preclude opposer’s filing of its summary
judgment motion.