2323 N. Milwaukee LLCv.Winery Exchange, Inc.

Trademark Trial and Appeal Board

Feb 12, 2016

No. 91221974 (T.T.A.B. Feb. 12, 2016)

WINTER Mailed: February 12, 2016

Opposition No. 91221974
2323 N. Milwaukee LLC
v.
Winery Exchange, Inc.

Before Cataldo, Mermelstein, and Lykos,
Administrative Trademark Judges.

By the Board:

Winery Exchange, Inc. (hereafter “Applicant”) seeks registration of the mark
REVOLUTION HARBOR in standard characters for “beer.”1 2323 N. Milwaukee,
LLC (hereafter “Opposer”) opposes registration of the mark on the ground of
likelihood of confusion. In its amended answer, Applicant denies the salient
allegations in the notice of opposition, and sets forth various “affirmative defenses,”2
including that “Opposer’s claim is barred by the principles of equity and fairness,
including estoppel, and/or laches” (¶ 3) and that “Opposer’s claim is barred by the

1 Application Serial No. 86496735, filed January 6, 2015, under Section 1(b) of the
Trademark Act.

2 Applicant asserts that Opposer’s notice of opposition fails to state a claim upon which
relief can be granted. This allegation is not a true affirmative defense, but is an allegation
relating to the sufficiency of Opposer’s pleading. See Hornblower & Weeks Inc. v.
Hornblower & Weeks Inc., 60 USPQ2d 1733, 1738 n.7 (TTAB 2001). Applicant’s remaining
affirmative defenses (other than laches, estoppel, and acquiescence) are merely
amplifications of its denials of Opposer’s allegations of likelihood of confusion.
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 OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91221974

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doctrine of acquiescence” (¶ 4). This case now comes up for consideration of
Opposer’s fully briefed motion (filed October 16, 2015) for partial summary
judgment on Applicant’s three affirmative defenses, namely, laches, estoppel, and
acquiescence.
Opposer argues that the defenses of laches, acquiescence and estoppel are
generally unavailable in opposition proceedings insofar as the time period for
measuring delay runs from the time when the involved application is published for
opposition. In that regard, Opposer points out that it filed its notice of opposition
three days after Applicant’s mark was published for opposition and, in view thereof,
there is no undue delay or prejudice to Applicant. In regard to the defenses of
estoppel and acquiescence, Opposer asserts that Applicant has not claimed that
Opposer committed any affirmative act that led Applicant to believe Opposer would
not oppose Applicant’s registration of its mark, nor is Applicant able to claim either
defense with respect to Opposer’s conduct vis-à-vis third parties with which it is not
in privity. Accordingly, argues Opposer, summary judgment should be granted for
Opposer on Applicant’s three affirmative defenses.
In response, Applicant complains that Opposer’s motion is based solely on the
pleadings and on Opposer’s arguments, and argues further that Opposer’s filing of
the opposition, or Applicant’s failure to assert that Opposer had contact with
Applicant prior to the opposition, do not establish that there is no genuine dispute
as to any material fact. Applicant also asserts that discovery is on-going, that
during discovery, Opposer may make admissions against its own interest, and that
Opposition No. 91221974

3
Opposer has made statements during the prosecution of the applications underlying
its pleaded registrations that may constitute admissions against interest.
In reply, Opposer argues that Applicant cannot defeat a motion for summary
judgment based on speculation, that Applicant failed to identify any genuine
dispute as to a material fact, and that, in view of the timely submission of the notice
of opposition, the three defenses fail as a matter of law.
• Decision
Summary judgment is an appropriate method of disposing of cases in which
there is no genuine dispute with respect to any material fact, thus leaving the case
to be resolved as a matter of law. See Fed. R. Civ. P. 56(c)(1). A party moving for
summary judgment has the burden of demonstrating the absence of any genuine
dispute as to a material fact, and that it is entitled to judgment as a matter of law.
See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). The evidence of record and all
justifiable inferences that may be drawn from the undisputed facts must be viewed
in the light most favorable to the non-moving party. See Lloyd’s Food Products Inc.
v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993).
When a moving party’s motion for summary judgment demonstrates that there
is no genuine dispute as to any material fact and the moving party is entitled to
judgment, the burden shifts to the nonmoving party to demonstrate the existence of
a genuine dispute regarding at least one material fact which requires resolution at
trial. The nonmoving party, however, may not rest on the mere allegations of its
pleadings and assertions, but must designate specific portions of the record or
Opposition No. 91221974

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produce additional evidence showing the existence of a genuine dispute as to a
material fact for trial. See Barmag Barmer Maschinenfabrik AG v. Murata
Machinery, Ltd., 731 F.3d 831, 221 USPQ 561, 564 (Fed. Cir. 1984) (“The party
opposing the motion must point to an evidentiary conflict created on the record at
least by a counter statement of a fact or facts set forth in detail in an affidavit by a
knowledgeable affiant.”).
Moreover, where the nonmoving party will bear the burden of proof at trial on a
dispositive issue, a summary judgment motion may properly be made in reliance
solely on the “pleadings, depositions, answers to interrogatories, and admissions on
file” and “requires the nonmoving party to go beyond the pleadings and by her own
affidavits, or by the depositions, answers to interrogatories, and admissions on file,
designate specific facts showing that there is a genuine issue for trial.” Celotex Corp.
v. Catrett, 477 U.S. at 324. That is, the moving party may discharge its burden by
showing that there is an absence of evidence to support the nonmoving party’s case.
Id. at 325; Copelands’ Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295,
1298 (Fed. Cir. 1991).
o Laches
The elements of laches are (1) unreasonable delay in assertion of one’s rights
against another; and (2) material prejudice to the latter attributable to the delay.
Lincoln Logs Ltd. v. Lincoln Precut Log Homes, Inc., 971 F.2d 732, 23 USPQ2d
1701, 1703 (Fed. Cir. 1992). In an opposition, where the objection is to the issuance
of a registration of a mark, laches starts to run when the mark in question is
Opposition No. 91221974

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published for opposition. Panda Travel Inc. v. Resort Option Enterprises Inc., 94
USPQ2d 1789, 1797 (TTAB 2009) (citing National Cable Television Association Inc.
v. American Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir.
1991); Teledyne Technologies Inc. v. Western Skyways Inc., 78 USPQ2d 1203, 1210
n.10 (TTAB 2006)). Further, the mere passage of time does not constitute laches.
Advanced Cardiovascular Systems v. SciMed Life Systems, 988 F.2d 1157, 26
USPQ2d 1038, 1041 (Fed. Cir. 1993). Rather, a party asserting laches must show
not only unreasonable delay, but also circumstances compelling enough to give rise
to an estoppel, that is, that the party asserting the defense has relied upon the
delay to its detriment. Aquion Partners L.P. v. Envirogard Products Ltd., 43
USPQ2d 1371, 1374 (TTAB 1997) (internal citations omitted).
The record in this proceeding, which includes the involved application (see
Trademark Rule 2.122(b)(1)3), shows that the applied-for mark was published for
opposition on May 12, 2015. Opposer filed the notice of opposition on May 15, 2015.
As a matter of law, Opposer did not delay unreasonably in filing its opposition.
Consequently, there can be no resulting detrimental reliance. Applicant plainly
could not have reasonably relied to its detriment on Opposer’s three-day “delay.” In
view of the foregoing, there is no genuine dispute that there has been no undue
delay by Opposer or material prejudice to Applicant.

3 “The file of each application … against which a notice of opposition is filed, … forms part
of the record of the proceeding without any action by the parties and reference may be made
to the file for any relevant and competent purpose.”
Opposition No. 91221974

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o Acquiescence and Estoppel
As regards Applicant’s affirmative defenses of acquiescence and estoppel, it is
well-settled that “[a]cquiescence and estoppel require some affirmative act by
opposer which led applicant to reasonably believe that opposer would not oppose
applicant’s registration of its mark.” DAK Indus. Inc. v. Daiichi Kosho Co. Ltd., 25
USPQ2d 1622, 1625 (TTAB 1993). Acquiescence requires the proof of three
elements: (1) that opposer actively represented that it would not assert a right or a
claim; (2) that the delay between the active representation and assertion of the
right or claim was not excusable; and (3) that the delay caused applicant undue
prejudice. Coach House Restaurant Inc. v. Coach and Six Restaurants, Inc., 934
F.2d 1551, 1564, 19 USPQ2d 1401, 1409 (11th Cir. 1991). The elements of equitable
estoppel are: (1) misleading conduct which leads another to reasonably infer that
rights will not be asserted against it; (2) reliance upon this conduct; and (3) due to
this reliance, material prejudice if the delayed assertion of such rights is permitted.
See Lincoln Logs Ltd. v. Lincoln Precut Log Homes, Inc., 23 USPQ2d at 1703 (citing
A.C. Aukerman Co. v. R.L. Chaides Construction Co., 960 F.2d 1020, 22 USPQ2d
1321 (Fed. Cir. 1992)).
Applicant has not submitted any evidence that would indicate that Opposer
either actively represented that it would not assert a claim against Applicant or
misled Applicant by its conduct such that Applicant could reasonably infer that
Opposer would not assert its rights against Applicant. Thus, Applicant has failed to
reveal specific facts showing that there is a genuine issue for trial. Celotex Corp. v.
Opposition No. 91221974

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Catrett, 477 U.S. at 324. Moreover, Applicant’s speculation that Opposer may have
made admissions against interest does not raise a factual question sufficient to
preclude summary judgment.4 See Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d
624, 222 USPQ 741, 743 (Fed. Cir. 1984). In view of the foregoing, Opposer has met
its burden on summary judgment by showing that there is an absence of evidence to
support Applicant’s affirmative defenses. Id. at 325; Copelands’ Enters. Inc. 20
USPQ2d at 1298.
Accordingly, Opposer’s motion for summary judgment is granted5 and
Applicant’s defenses of laches, acquiescence and estoppel are hereby stricken. This
proceeding shall move forward solely on Opposer’s claim of likelihood of confusion
under Section 2(d) of the Trademark Act.
Proceeding Resumed; Trial Dates Reset
This proceeding is resumed. Trial dates are reset as shown in the following
schedule:

4 Applicant argues that there are no depositions, answers to interrogatories, or admissions
of record and that “discovery might uncover additional genuine issues as to material facts”
(18 TTABVUE 4). To the extent these arguments could be construed as a motion for
discovery under Fed. R. Civ. P. 56(d), the motion is denied for failure to submit the required
affidavit or to adequately set forth with particularity what facts it hopes to obtain by
discovery and how these facts will raise a genuine dispute as to a material fact. In any
event, Applicant did not specifically request Rule 56(d) discovery and responded to the
summary judgment motion on the merits. See Ron Cauldwell Jewelry, Inc. v. Clothestime
Clothes, Inc., 63 USPQ2d 2009, 2012 n.8 (TTAB 2002) (Fed. R. Civ. P. 56(f) (now identified
as 56(d)) motion denied where opposer filed a response to the motion for summary
judgment on the merits).

5 Because this decision is interlocutory and nonfinal in nature, any appeal thereof can be
raised only after final disposition of this proceeding. See Copelands’ Enterprises Inc. v. CNV
Inc., 12 USPQ2d 1562 (Fed. Cir. 1989).

Opposition No. 91221974

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Expert Disclosures Due 6/11/2016
Discovery Closes 7/11/2016
Plaintiff's Pretrial Disclosures Due 8/25/2016
Plaintiff's 30-day Trial Period Ends 10/9/2016
Defendant's Pretrial Disclosures Due 10/24/2016
Defendant's 30-day Trial Period Ends 12/8/2016
Plaintiff's Rebuttal Disclosures Due 12/23/2016
Plaintiff's 15-day Rebuttal Period Ends 1/22/2017

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. See Trademark Rule
2.125, 37 C.F.R. § 2.125.
Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b), 37
C.F.R. §§ 2.128(a) and (b). An oral hearing will be set only upon request filed as
provided by Trademark Rule 2.129, 37 C.F.R. § 2.129.
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