Westheimer Corp.v.Noriyuki Yusa

Trademark Trial and Appeal Board

Jan 7, 2003

No. 91122612 (T.T.A.B. Jan. 7, 2003)

THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT
OF THE T.T.A.B.
KSK Mailed: January 7, 2003
Opposition No. 122,612
Westheimer Corporation
v.
Noriyuki Yusa
Before Quinn, Bucher and Bottorff, Administrative Trademark
Judges.
By the Board:
This case now comes before the Board for consideration
of applicant’s motion (filed July 24, 2002) for summary
judgment on the issue of priority with regard to opposer’s
claim of likelihood of confusion under Section 2(d) of the
Trademark Act. The motion has been fully briefed.
BACKGROUND/PLEADINGS
Applicant has filed an application for registration of
the mark shown below for “guitars” in Class 15.1
1 Application Serial No. 75/439,289 filed on February 23, 1998
and claiming a bona fide intent to use the mark in commerce.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Opposition No. 113,802
2
In its notice of opposition, opposer alleges, inter
alia, that “on February 23, 1998, [a]pplicant filed
Application Serial No. 75/439289 to register the word mark
and logo MOSRITE in International Class 015 for
guitars...applicant had applied to register for a mark which
was owned by a previous individual, to wit, Semie Moseley
(Reg. No. 1155520, cancelled March 24, 2000)...opposer
submitted an application on or about October 21, 2000 to
register the mark MOSRITE...for use in connection
with...acoustic and electric guitars...the date of first use
in commerce claimed by the opposer in the MOSRITE
application is September 21, 2000...[and] applicant’s
claimed MOSRITE mark is identical to opposer’s mark and the
goods of the respective parties so related as to be likely
to cause confusion or mistake.”
Applicant denied the salient allegations in its answer.
SUMMARY JUDGMENT STANDARD
Generally, summary judgment is appropriate in cases
where the moving party establishes that there are no genuine
issues of material fact which require resolution at trial
and that it is entitled to judgment as a matter of law.
Fed. R. Civ. P. 56(c). An issue is material when its
resolution would affect the outcome of the proceeding under
governing law. Anderson v. Liberty Lobby, Inc., 477 U.S.
Opposition No. 113,802
3
242, 248 (1986). However, a dispute over a fact which would
not alter the Board’s decision on the legal issue will not
prevent entry of summary judgment. See, for example,
Kellogg Co. v. Pack’Em Enterprises Inc., 951 F.3d 330, 21
USPQ2d 1142 (Fed. Cir. 1991). A fact is genuinely in
dispute if the evidence of record is such that a reasonable
fact finder could return a verdict in favor of the nonmoving
party. See Lloyd’s Food Products Inc. v. Eli’s Inc., 987
F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993). The nonmoving
party must be given the benefit of all reasonable doubt as
to whether genuine issues 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 American Music Show, Inc., 970 F.2d 847,
23 USPQ2d 1471 (Fed. Cir. 1992); Olde Tyme Foods Inc. v.
Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
1992).
THE PARTIES’ EVIDENCE AND ARGUMENTS
Applicant has moved for summary judgment in its favor
on the issue of priority.
In support of its motion, applicant has presented
evidence showing that opposer did not use the mark prior to
September 21, 2000 (Exh. E, Opposer’s Response to
Opposition No. 113,802
4
Applicant’s First Request for Admissions; Exh. D, Opposer’s
Response To Applicant’s First Set of Interrogatories).
Applicant’s evidence on summary judgment includes the
declaration of Robert Alpert, applicant’s outside counsel
with the law firm of Ladas & Parry, together with the
exhibits identified therein.
In response, opposer has submitted the “affirmation” of
Ronald S. Bienstock, opposer’s outside counsel with the law
firm of Bienstock & Michael, P.C.
Applicant argues that no genuine issue as to any
material fact concerning priority exists inasmuch as
applicant’s filing date is February 23, 1998 and opposer
alleges in its notice of opposition and expressly admits in
its response to applicant’s request for admissions that it
first used the mark on September 21, 2000. Therefore,
applicant argues, opposer lacks standing to pursue this
opposition.
In response, opposer states that discovery opened on
May 22, 2001 however opposer “has not had an opportunity to
serve its discovery requests...[c]onsequently, opposer has
not been able to obtain a significant portion of the facts
relevant to this proceeding from applicant.” Opposer argues
that “there are several current issues of fact and
prospective issues of fact which opposer has yet to learn
via discovery which may warrant this court to rule that due
Opposition No. 113,802
5
to equitable considerations priority must be determined in
favor of opposer” and “[i]f the facts reveal that applicant
applied for the mark without a genuine intention on using
the mark in interstate commerce, equity may require this
court to rule for priority in favor of opposer.” Further,
opposer submits that “there are many different facts that
opposer has not yet discovered that, when revealed to this
court, would mandate a ruling that opposer has superior
rights to the trademark notwithstanding applicant’s calendar
priority. Opposer argues that “the law clearly states that
calendar priority is not always dispositive, and summary
judgment is not appropriate when equitable considerations
may exist which can give opposer priority.”
In reply, applicant states that opposer has had over a
year to take discovery but chose not to do so. Further,
applicant argues that opposer’s counsel does not allege that
applicant adopted the mark in bad faith, but merely states
that applicant might have done so.
DECISION
After a careful review of the record in this case, we
find that there are no genuine issues of material fact
relating to the issue of priority and that applicant is
entitled to judgment as a matter of law.
It is well settled that Section 7(c) of the Trademark
Act provides an intent-to-use applicant with superior rights
Opposition No. 113,802
6
over anyone adopting a mark after applicant’s filing date,
contingent upon applicant’s ultimate registration of the
mark. Zirco Corporation v. American Telephone and Telegraph
Company, 21 USPQ2d 1542 (TTAB 1991).
With regard to opposer’s arguments concerning any
possible bad faith in adoption of the mark or lack of a bona
fide intent-to-use, these allegations were not pleaded and,
therefore, no consideration will be given to arguments
regarding these unpleaded issues. See Fed. R. Civ. P. 56(a)
and 56(b); Paramount Pictures Corp. v. White, 31 USPQ2d 1768
(TTAB 1994). Moreover, opposer has had more than ample time
to take discovery in order to explore a possible claim on
these issues yet has chosen not to do so. The question of
when summary judgment can be granted in the absence of
discovery has been addressed by the Federal Circuit many
times. See Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739
F.2d 624, 627, 222 USPQ 741, 744 (Fed.Cir.1984); Keebler Co.
v. Murray Bakery Products, 866 F.2d 1386, 1389, 9 USPQ2d
1736, 1739 (Fed.Cir.1989) (citations omitted). As stated in
Sweats Fashions, Inc. v. Pannill Knitting Co., Inc. summary
judgment need not be denied merely to satisfy a litigant's
speculative hope of finding some evidence [through
discovery] that might tend to support a complaint. Sweats
Fashions, Inc. v. Pannill Knitting Co., Inc., 833 F.2d 1560,
1567; 4 USPQ2d 1793, 1799 (Fed. Cir. 1987).
Opposition No. 113,802
7
It appears that opposer would have us infer bad faith
because of applicant’s possible awareness of a third-party’s
prior use of the mark. However, an inference of "bad faith"
requires something more than mere knowledge of a prior
similar mark. See Sweats Fashions, Inc. v. Pannill Knitting
Co., Inc., supra. Not only has opposer failed to
demonstrate more than a "speculative hope" of finding
evidence to support a possible claim of bad faith or lack of
bona fide intent, it has also failed to avail itself of the
protection of Fed. R. Civ. P. 56(f) by not filing an
affidavit explaining why it could not respond to the summary
judgment motion without discovery.
The evidence of record clearly establishes the lack of
a genuine issue of material fact as to the issue of
priority. Thus, for purposes of this opposition, applicant
has established priority and is entitled to summary judgment
in its favor.
Opposition No. 113,802
8
Accordingly, applicant’s motion for summary judgment on
the issue of priority under Section 2(d) of the Trademark
Act is granted and judgment in favor of applicant is hereby
entered, subject to applicant’s establishment of
constructive use.2 The time for filing an appeal or for
commencing a civil action will run from the date of the
present decision. See Trademark Rules 2.129(d) and 2.145.
When applicant’s mark has been registered or the application
becomes abandoned, applicant should inform the Board, so
that appropriate action may be taken to terminate this
proceeding.
* * *
2 In view of the above, applicant’s motions to extend the
discovery period and to extend its time to serve discovery
responses on opposer are moot. We note, however, with regard to
the motion to extend applicant’s time to respond to opposer’s
discovery requests, opposer did not serve those requests until
September 13, 2002, two months after applicant filed his summary
judgment motion and seventeen days prior to the Board’s October
1, 2002 order suspending proceedings. In view of the filing of
the summary judgment motion and the subsequent suspension of
proceedings prior to any possible due date, applicant was under
no obligation to serve responses prior to the Board’s decision on
its summary judgment motion.