Delaware Quarries, Inc.v.PlayCore IP Sub, Inc.

Trademark Trial and Appeal Board

Sep 27, 2013

No. 91190282re (T.T.A.B. Sep. 27, 2013)

Mailed: September 27, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Delaware Quarries, Inc.
v.
PlayCore IP Sub, Inc.
________

Opposition No. 91190282
On Request for Reconsideration
_______

Eric J. Von Vorys of Shulman, Rogers, Gandal, Pordy &
Ecker, P.A. for Delaware Quarries, Inc.

Douglas T. Johnson of Miller & Martin PLLC, for PlayCore IP
Sub, Inc.
_______

Before Cataldo, Ritchie, and Hightower, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On July 2, 2013, the Board dismissed the opposition
brought by opposer Delaware Quarries, Inc. (“opposer”) to
registration of the mark ROCKSCAPE for “playground
equipment, namely, climbing units,” sought by PlayCore IP
Sub, Inc. (“applicant”). Opposer based the opposition on
its prior registration of the mark ROCKSCAPE and its claim
of priority and likelihood of confusion pursuant to Section
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91190282
2
2(d) of the Trademark Act, 15 U.S.C. § 1052(d). In the
decision dismissing the opposition, the Board first found
no likelihood of confusion, and then granted applicant’s
counterclaim to cancel opposer’s registration for
ROCKSCAPE, on the ground that it is generic for the “stone,
gravel or similar products, namely boulders, stone veneer,
and crushed stone for use in landscaping, building
construction, and paving,” for which it is registered.
Opposer has timely filed a request for reconsideration
of the Board’s decision, insofar as it granted applicant’s
counterclaim. In that request, opposer argues that the
Board erred in deciding the counterclaim on its merits
after it had decided registration of applicant’s mark would
not create a likelihood of confusion with opposer’s prior
registered mark. Opposer argues that applicant no longer
had standing to seek cancellation of the ROCKSCAPE
registration after the opposition was dismissed. Applicant
filed a brief arguing against opposer’s request for
reconsideration.
We disagree that applicant lacked standing once the
opposition was dismissed. Standing is assessed at the time
the counterclaim is filed. See, e.g., Friends of the
Earth, Inc. v. Laidlaw Envir. Servs. (TOC), Inc., 528 U.S.
167, 189 (2000); Wheaton College v. Sebelius, 703 F.3d 551,
Opposition No. 91190282
3
552 (D.C. Cir. 2012). The general rule is that a
counterclaimant, as a defendant in an opposition, has
inherent standing to assert its counterclaims. See Finanz
St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1479
(TTAB 2007); Carefirst of Maryland, Inc. v. FirstHealth of
the Carolinas Inc., 77 USPQ2d 1492, 1502 (TTAB 2005); TBMP
§ 309.03(b) (3d. ed. rev.2 2013) and authorities cited
therein). So it is clear that applicant’s standing to
pursue the counterclaim is not the issue before us.
Although opposer framed the issue before us as one of
standing, the actual issue is whether our finding of no
likelihood of confusion mooted applicant’s counterclaim to
cancel opposer’s registration for ROCKSCAPE. While we have
previously addressed circumstances such as these as
presenting an issue of standing, see Syntex (U.S.A.) Inc.
v. E.R. Squibb & Sons Inc., 14 USPQ2d 1879, 1880-81 (TTAB
1990) (finding that the counterclaimant had standing to
pursue its counterclaim of abandonment even after opposer’s
claim was dismissed), the Supreme Court’s subsequent
decision in Cardinal Chemical Co. v. Morton International,
Inc., 508 U.S. 83 (1993), makes it clear that circumstances
such as these present an issue of mootness, not of
standing.
Opposition No. 91190282
4
In Cardinal Chemical, a patent infringement case, the
Supreme Court held that a counterclaim for a declaration
that the plaintiff’s asserted patent was invalid was not
mooted by the circuit court’s affirmance of the district
court’s finding of noninfringement. Id. at 102. This
holding was based primarily on two observations, both of
which have relevance here. First, a litigant charged with
patent infringement (or as here, a defendant facing a claim
of likelihood of confusion) “must remain concerned about
the risk of similar charges if it develops and markets
similar products in the future.” Id. at 99-100. This
applies in the instant situation, where opposer could bring
an infringement action in court to enjoin applicant’s use
of its mark. A finding of genericness – even in the
narrower context of this registration proceeding – would
certainly be of interest to applicant. Cf. Syntex, 14
USPQ2d at 1880 n.2 (noting that opposer’s mark could be
used against applicant’s attempted registration of the same
mark for other goods or else for a “variant mark”).
Second, the Cardinal Chemical Court noted the public
interest in resolving questions of patent validity. Id. at
100. This public interest also is present when dealing
with questions regarding the genericness of registered
trademarks. See, e.g., Loglan Inst., Inc. v. Logical
Opposition No. 91190282
5
Language Group, Inc., 962 F.2d 1038, 22 USPQ2d 1531, 1534
(Fed. Cir. 1992) (noting “the public interest in a
cancellation proceeding to rid the register of a generic
mark”).
We hold that our dismissal of opposer’s likelihood of
confusion claim did not implicate applicant’s standing to
have asserted its cancellation counterclaim, nor did it
moot this proceeding. Opposer’s request for
reconsideration is denied.