BrothersResearch Corporationv.Dura Lube, LLC (by mesne assignments from original applicant Howe Laborator-ies, Inc.)

Trademark Trial and Appeal Board

Jul 5, 2006

No. 91101367 (T.T.A.B. Jul. 5, 2006)

Butler Mailed: July 5, 2006

Opposition No. 91101367

Brothers Research Corporation

v.

Dura Lube, LLC, as assignee of
Herman Howard, as assignee of
High Rev Products, LLC, as
assignee of Howe Laboratories,
Inc.1

Before Hairston, Drost and Kuhlke, Administrative Trademark
Judges.

By the Board:
Applicant seeks to register the mark DURA SHINE for “car
polish.”2 As grounds for the opposition, opposer, in its
original notice of opposition,3 alleges that applicant’s mark,
when used on the identified goods, so resembles opposer’s
previously used and registered marks DURAGLOSS for “vehicle

1 Howe Laboratories, Inc. is the original applicant, and was the
applicant of record at the time this opposition commenced. The Board,
in an order dated September 21, 2005, joined all named parties as
defendants inasmuch as all assignments occurred subsequent to the
commencement of this proceeding. See TBMP §512 (2d ed. rev. 2004).
2 Application Serial No. 74483527, filed on January 27, 1994, claiming
a date of first use anywhere and a date of first use in commerce of
1993.
3 Opposer’s amended notice of opposition will be discussed in more
detail later in this order.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 91101367
2
polishes and waxes”4 and “vehicle polishes and cleaners; wheel
and tire cleaners; rubber, vinyl and leather dressings;
upholstery cleaners and conditioners; glass cleaners and
protectants; all-purpose cleaning preparations; preparations for
washing and cleaning vehicles; car care kits featuring polish and
cleaner, upholstery dressings and preparations for washing and
cleaning vehicles sold as a unit; and marine polishes and
cleaners”5 as to be likely to cause confusion, mistake or to
deceive.
Applicant, in its answer, denies the salient allegations of
the notice of opposition.
This proceeding commenced on April 3, 1996 with the filing
of the original notice of opposition. In view of the age of this
case, a brief history is in order.

Background
On October 16, 1996, opposer moved for leave to amend its
notice of opposition to include a claim of ownership of newly
issued Registration No. 1995431 (issued August 20, 1996 and
claiming a date of first use anywhere and first use in commerce
of 1985), for the following mark:

4 Registration No. 1632845, issued on January 29, 1991, claiming a date
of first use anywhere and a date of first use in commerce of April 28,
1975.
5 Registration No. 1946828, issued January 9, 1996, claiming a date of
first use anywhere and a date of first use in commerce of April 28,
1975.

Opposition No. 91101367
3

for “vehicle polishes and cleaners; wheel and tire cleaners;
rubber, vinyl and leather dressings; upholstery cleaners and
conditioners; glass cleaners and protectants; all-purpose
cleaning preparations; preparations for washing and cleaning
vehicles; car care kits featuring polish and cleaner, upholstery
dressings and preparations for washing and cleaning vehicles sold
as a unit.” Opposer alleges priority of use and claims that
likelihood of confusion also exists between applicant’s mark and
opposer’s newly registered mark.
On October 21, 1996, opposer moved for summary judgment in
its favor on its priority and likelihood of confusion claim.
Before the due date for its response, applicant, on November 4,
1996, moved to suspend because the parties were involved in a
civil action concerning the same marks that are the subject
matter of this opposition.6 The Board, in an order dated January
6, 1997, granted applicant’s motion to suspend proceedings in
view of the court case and made the following additional
determinations on other pending matters: granted opposer’s

6 Howe Labs., Inc. v. Brothers Research Corp., No. 3:96CV2211(WIG) (D.
Conn.).

Opposition No. 91101367
4
motion (dated October 30, 1996) for leave to supplement its
motion for summary judgment; granted opposer’s motion (filed
October 16, 1996) for leave to file an amended notice of
opposition; and informed the parties that, upon resumption, time
for applicant to answer the amended notice of opposition and file
a response to opposer’s motion for summary judgment will be
reset, if appropriate.
Over the passage of time, the Board made numerous inquiries
as to the status of the court case which occasioned suspension of
the Board proceeding. Finally, on October 4 2004, the Board
resumed proceedings, resetting discovery and trial dates.
Notwithstanding resumption, the resetting of the time for
applicant to file an answer to the amended notice of opposition
and to file its response to opposer’s motion for summary judgment
was overlooked. Neither party brought such oversight to the
attention of the Board.
In an order dated September 21, 2005, the Board, considering
applicant’s motion to substitute, joined the parties named in the
captioning of this proceeding as party defendants, and
articulated that dates remained as set in the October 4, 2004
resumption order.7 On October 7, 2005, opposer moved to reopen
discovery arguing that, as a result of settlement (on damages) in
the court case, applicant’s subject mark was assigned to one of

7 In accordance with such resumption order, the only period remaining
open at the time the Board issued its September 21, 2005 order was
plaintiff’s rebuttal testimony period.
Opposition No. 91101367
5
opposer’s affiliates and that “[n]ow it appears that Howe and its
principal, Mr. Herman Howard, have made a series of subsequent
and fraudulent assignments of the same mark….” On December 5,
2005, the Board granted opposer’s fully briefed motion to reopen,
resetting discovery and trial dates.
This case now comes up on opposer’s fully briefed motion,
filed February 21, 2006, for summary judgment on its claim of
likelihood of confusion. Opposer’s summary judgment motion
relies both on the determination in the court case for its res
judicata effect and a renewal of its original motion for summary
judgment.

Preliminary matters addressed
Before turning to the merits of opposer’s summary judgment
motion, the Board addresses some procedural matters.
The Board first notes that opposer’s present motion for
summary judgment, having been filed long after the opening of the
first testimony period in this case, is technically untimely.
See Trademark Rule 2.127(e)(1). Nonetheless, because opposer
relies on the doctrine of issue preclusion in support of its
motion (discussed in more detail, infra), the Board will consider
the motion for summary judgment. See Lukens, Inc. v. Vesper
Corp., 1 USPQ2d 1299, 1300 n.2 (TTAB 1986), aff’d, Vesper Corp.
v. Lukens, Inc., 831 F.2d 306 (Fed. Cir. 1987).
Opposition No. 91101367
6
As discussed above, opposer’s amended notice of opposition
differs from the original only by adding a third registration
upon which opposer seeks to rely. Inasmuch as applicant has not
been provided an opportunity to answer, opposer’s reliance on
this third registration (No. 1995431) will not be considered by
the Board except to the extent it was part of the judgment
entered by the district court (discussed in more detail, infra).

Petitioner’s summary judgment motion
In support of its motion for summary judgment, opposer
argues that the parties engaged in extensive and contentious
litigation before the district court; that the court decided the
issue of likelihood of confusion in opposer’s favor; that, after
such determination, the parties went to trial with respect to
damages only; and that, as part of the settlement agreement on
the damages issue, Howe assigned the DURA SHINE mark to opposer’s
affiliated company (Contract Filling and Packaging, Inc.), along
with the associated goodwill and the application for registration
therefor. Opposer argues that both parties maintained that the
facts were so clear and undisputed that they cross moved for
summary judgment before the district court; and that the court’s
decision in opposer’s favor on the issue of likelihood of
confusion was “exhaustive and sound.” Opposer contends that
applicant (or any party acting through applicant) cannot
plausibly maintain that it has the right to register the same
Opposition No. 91101367
7
mark that was contractually assigned to opposer’s affiliated
company as a part of the settlement agreement on damages in the
court case. Opposer also requests that its pending motion for
summary judgment (filed October 21, 1996) be considered in the
event that the determinations made by the district court are
deemed insufficient in any way.
Opposer’s motion is accompanied, in part, by a declaration
from its president introducing a copy of the assignment,
evidencing an execution date of April 4, 2000, of the DURA SHINE
mark from Howe Laboratories, Inc, The Media Group, Inc. and
American Direct Marketing, Inc. to Contract Filling and
Packaging, Inc.; the district court’s decision in Howe
Laboratories, Inc. v. Brothers Research Corporation, No.
3:96CV2211(WIG) (D. Conn. June 15, 1999); and a complete copy of
opposer’s October 21, 1996 summary judgment motion. 8
In response, applicant (Dura Lube, LLC) argues that it
purchased the DURA SHINE mark in 2005; that it had no knowledge
of any activity prior thereto with respect to the mark, including
the district court case and any purported earlier assignment of

8 Opposer did not introduce status and title copies of its pleaded
registrations with either the October 21, 1996 or February 21, 2006
motion for summary judgment. Nor did opposer submit status and title
copies of the pleaded registrations with either the original or
amended notice of opposition. See Trademark Rule 2.122(d); and TBMP
§528.05(d) (2nd ed. rev. 2004). While opposer’s president (see the
October 21, 1996 summary judgment motion) states that opposer is the
owner of the pleaded registrations, and plain photocopies of such
registrations are accompanying exhibits, the declaration is silent as
to status of the registrations. See TBMP §528.05(b) (2d ed. rev.
2004).

Opposition No. 91101367
8
the mark; that the assignor did not provide applicant with any
copies of filings or records; and that applicant learned of the
opposition through its own due diligence review but “as a non-
party, had no access to the Board’s records.”9 Applicant argues
that it did review the USPTO assignment records to ascertain if
an assignment has been recorded and found no assignment. Thus,
applicant, relying on Trademark Act §10(a)(4), argues that,
because it had no notice, it was a good faith purchaser of the
DURA SHINE mark; that the earlier assignment to opposer is void;
and that a genuine issue of material fact exists as to whether
applicant should be bound by the earlier actions of its
predecessor with respect to the mark.
Applicant’s response is accompanied by the declaration of
its chief financial officer in support of applicant’s recited
circumstances giving rise to its acquisition of the mark; a copy
of the USPTO’s abstract assignment records for application Serial
No. 74483572 for the DURA SHINE mark; and executed copies of the
Trademark Assignment Agreement concerning the DURA SHINE mark and
application therefor between Herman S. Howard as assignor and
applicant as assignee.

9 The Board notes in passing that its records are public. Indeed, for
over three years now, including the year 2005, such records may be
accessed on-line. No fee is charged for such access. Older records
which are not available on-line are available for inspection at the
USPTO. See TBMP §120 (2d ed. rev. 2004) for more information on
access to files.

Opposition No. 91101367
9
In reply, opposer argues that ownership of the DURA SHINE
mark is irrelevant, contending that, even if applicant is a good
faith purchaser, this opposition is based on whether likelihood
of confusion exists between the parties’ respective marks.
Opposer points out that applicant never mentions likelihood of
confusion or offers any evidence or arguments with respect to
likelihood of confusion in any attempt to create a genuine issue
of material fact about likelihood of confusion.
In a motion for summary judgment, the moving party has the
burden of establishing the absence of any genuine issues of
material fact and that it is entitled to judgment as a matter of
law. See Fed. R. Civ. P. 56(c). A genuine issue with respect to
a material fact exists if sufficient evidence is presented that a
reasonable fact finder could decide the question in favor of the
non-moving party. See Opryland USA Inc. v. Great American Music
Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). Thus,
all doubts as to whether any factual issues are genuinely in
dispute must be resolved against the moving party and all
inferences must be viewed in the light most favorable to the non-
moving party. See Olde Tyme Foods Inc. v. Roundy’s.,Inc., 961
F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
The Board, at the outset, agrees that it does not have to
decide the ownership issue of application Serial No. 74483572 for
the mark DURA SHINE. In its reply, opposer, at least for
purposes of its summary judgment motion, submits that, even if
Opposition No. 91101367
10
applicant is a good faith purchaser of the mark and application,
likelihood of confusion exists between the parties’ respective
marks as a matter of law. Thus, assuming for purposes of this
summary judgment motion, that the assignment to applicant is
valid, applicant, as a successor in interest, stands in the shoes
of its assignor and derived only those rights that its
predecessor had in the mark. See Educational Development
Corporation v. Educational Dimensions Corporation, 183 USPQ 492
(TTAB 1974); and McCarthy, J. Thomas, 2 McCarthy on Trademarks
and Unfair Competition §18:15 (4th ed. 2006).
Accordingly, as a matter of law, applicant is bound by the
determinations made in the earlier adjudication of trademark
rights between opposer and applicant’s predecessor-in-interest.
The Board now looks at the decision in the civil action.
Howe Laboratories brought suit against Brothers Research seeking
a declaratory judgment of Howe’s right to use the mark DURA
SHINE. Brothers’ counterclaim included a count of trademark
infringement. Each party moved for summary judgment in its
favor. The court stated the issue as “… whether Brothers’
DURAGLOSS mark is likely to be confused with Howe’s DURA SHINE
mark.”10 In his thirty-eight page decision, entering judgment in

10 The court, in its opinion, recognized that “Brothers owns three
United States trademark registrations for the DURAGLOSS mark.” The
court also was aware of this opposition proceeding: “After the DURA
SHINE mark was published for opposition, Brothers filed a Notice of
Opposition and Howe replied. … Before the due date of Howe’s response
to Brothers’ PTO motion for summary judgment, Howe began this
Declaratory Judgment action.”
Opposition No. 91101367
11
favor of Brothers on the issue of likelihood of confusion,11 the
district court judge made the following determinations: 1)
Brothers’ DURAGLOSS mark is relatively strong due to both its
inherent and acquired strength; 2) the marks DURAGLOSS and DURA
SHINE are similar and project very similar commercial
impressions; 3) the involved goods are the same; 4) there has
been “significant credible evidence of actual confusion which
affects the purchasing and selling of the goods in question”; 5)
there was insufficient evidence to find that Howe acted in bad
faith; 6) that the parties sometimes share the same channels of
trade and that the products involved are relatively inexpensive
leading the Court to conclude that ordinary purchasers do not
exercise a great deal of care.
Under the doctrine of collateral estoppel, or issue
preclusion, if an issue is actually and necessarily determined by
a court of competent jurisdiction, that determination is
conclusive in a subsequent suit involving the same issue. The
requirements which must be met for issue preclusion are:
(1) identity of issues in a prior proceeding;
(2) the issues were actually litigated;
(3) the determination of the issues was necessary
to the resulting judgment; and
(4) the party defending against preclusion had a
full and fair opportunity to litigate the issues.

11 More specifically, the court granted Brothers’ motion for summary
judgment and denied Howe’s motion for summary judgment.

Opposition No. 91101367
12
See Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d
1229, 76 USPQ2d 1310 (Fed. Cir. 2005); Jet Inc. v. Sewage
Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854 (Fed. Cir. 2000);
and Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840,
1843-1844 (TTAB 1995).
The issue of likelihood of confusion between the marks
DURAGLOSS and DURA SHINE for “car polish” (the only item in
applicant’s identification of goods) was raised, litigated and
fully adjudicated by the district court. Applicant does not
dispute this. Determination of the issue was necessary and
essential to the resulting judgment and the parties were fully
represented before the court.12 Priority in Brothers’ favor is
implicit in the court’s grant of Brothers’ motion for summary
judgment on the issue likelihood of confusion.
Accordingly, under the doctrine of collateral estoppel,
there being no genuine issue of material fact with respect to
priority and likelihood of confusion, opposer’s motion for
summary judgment is granted. Judgment is hereby entered against
applicant and the opposition is sustained.13
☼☼☼

12 In this case, the present applicant was fully repreented by its
predecessor-in-interest.
13 In view of the decision rendered herein, the need for applicant to
answer the amended notice of opposition is deemed moot.