ER Marks, Inc.v.Quarles Petroleum, Inc.

Trademark Trial and Appeal Board

May 30, 2007

No. 92043631 (T.T.A.B. May. 30, 2007)

Skoro
Mailed: May 30, 2007

Cancellation No. 92043631

ER MARKS, INC.

v.

QUARLES PETROLEUM, INC.

Before Bucher, Holtzman and Mermelstein,
Administrative Trademark Judges.

By the Board:

Quarles Petroleum, Inc. owns U.S. Reg. No. 2071555,
issued on June 17, 1997, on the Principal Register for the
mark QCARD and design for “credit card services” in Class
36.
On August 16, 2004, ER Marks, Inc. filed a petition to
cancel the registration claiming that “respondent
discontinued with the intent to abandon, use of the mark…”;
that “respondent also did not submit acceptable evidence of
use of the mark Q CARD and design in commerce to support the
§8 Declaration of Use filed on December 17, 2003”; and
“accordingly, the registration should be cancelled under §
14 of the Trademark Act of 1946 because of respondent’s
abandonment of the mark and false representation of
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT
PRECEDENT OF THE
TTAB
Cancellation No. 92043631
2
continued use of the mark…”; and that it “should also be
cancelled for failure to file an acceptable specimen to
evidence continued use within the prescribed time of the
Trademark Statute” (Petition at ¶¶ 5-7). Petitioner alleges
that respondent’s continued registration of QCARD and design
in connection with the identified services will continue to
block petitioner’s pending application for QCARD.
Respondent denied all of the salient allegations.
This case now comes up on petitioner’s motion for
summary judgment, filed September 26, 2006. As grounds for
the motion, petitioner contends that respondent has
abandoned its mark in that the signage used by respondent
for the past 6 years, "does not reference any credit card
services",1 and (2) that respondent’s failure to use the
mark "as registered” for six years, i.e., with the word CARD
directly below the Q, also constitutes an abandonment of the
mark. (Br. at 5). Petitioner concludes, based on these
asserted facts, that there is no genuine issue that
respondent has abandoned its mark and that the same should
be cancelled. (Br. at 7, 11, 13-14).
In support of its motion petitioner has submitted
documentary evidence. Petitioner admits that respondent
uses the mark, but argues that its use on road signs does

1 To the extent petitioner may be alleging no valid service mark
use as a claim separate from abandonment, such claim is not
available after five years. See 15 U.S.C. § 1064.
Cancellation No. 92043631
3
not identify credit card services and that it uses the mark
only at some of its locations, not all, and in a manner
different from how the mark is shown on the certificate of
registration (Br. at 4 and 5). Respondent answers that the
evidence submitted by petitioner establishes good service
mark use; that the Office accepted such evidence by way of
specimens when it filed its Section 8 & 15 affidavits; and
that its customers associate its mark with its unattended
locations where only respondent’s credit card holders can
purchase fuel.
The burden is on the party moving for summary judgment
to demonstrate the absence of any genuine issue of material
fact, and that it is entitled to summary judgment as a
matter of law. Fed. R. Civ. P. 56(c). See also Celotex
Corp. v. Catrett, 477 U.S. 317 (1986). The evidence of
record and any inferences that may be drawn from the
underlying undisputed facts 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). 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 Opryland USA, Inc. v. Great
American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471
Cancellation No. 92043631
4
(Fed. Cir. 1993); and Lloyd’s Food Products Inc. v. Eli’s
Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993).
Petitioner’s ground of attack on the subject
registration, to the extent we can understand it, is
abandonment, and it is presented in a twofold argument: (1)
that the signage used by respondent for the past six years,
does not show use of the mark in connection with credit card
services, i.e., that the mark is not used on credit cards
themselves and the signs do not contain a reference to those
services; and (2) that respondent’s failure to use the mark
as registered for six years, i.e., with the word CARD
directly below the Q, constitutes an abandonment of the
mark.
Petitioner's claim of abandonment based on the asserted
failure of the signage to show service mark use is not a
valid claim. The examples of signage that petitioner is
challenging are the same as those submitted by respondent as
specimens in connection with the filing of its Section 8 and
15 affidavits. Thus, by this claim, petitioner is
essentially arguing that the specimens of use are
unacceptable. However, the question of whether the signage
would constitute an acceptable specimen of use, is solely an
ex parte examination issue and does not constitute a valid
ground for cancellation. See Saint Gobain Abrasives Inc. v.
Industrial Automation Systems, Inc., 66 USPQ2d 1355, 1359
Cancellation No. 92043631
5
(TTAB 2003); Phonak Holding AG v. ReSound GmbH, 56 USPQ2d
1057, 1059 (TTAB 2000); and Century 21 Real Estate Corp. v.
Century Life of America, 10 USPQ2d 2034 (TTAB 1989). The
Office has accepted the photographs of the signage as good
service mark use for the identified services.2 See In re
Royal Viking Line A/S, 216 USPQ 795, 796 (TTAB 1982).
Additionally, we find no merit in petitioner’s argument
for finding abandonment simply because the record does not
show that the mark is used directly on the credit cards
themselves. We are unaware of any requirement that a
provider of credit card services must demonstrate use of its
mark on the credit card itself.
Furthermore, petitioner's arguments on the merits of
good service mark use are not well taken. Petitioner
submitted evidence of respondent’s current use of the mark;
and the evidence shows use of the mark in connection with
fueling services that are accessed by use of a credit card.
There is agreement that respondent’s mark is in current use
and that such use is on signage associated with the use of a
credit card to obtain fuel.3 Thus, based on the undisputed
facts, we find that there is no genuine issue of material

2 Photographs of the mark used on signage were submitted to the
Office as specimens in support of its application and its Section
8 & 15 affidavits and were accepted as good service mark use.

3 See Petitioner’s Exhibit 4, Natvig Deposition at p.10, lines
12-15 and p. 26, lines 18-24.

Cancellation No. 92043631
6
fact that respondent’s use of the mark identifies its credit
card services.4
As to petitioner’s argument that respondent does not
always use the mark in the same manner as it was registered,
and it has thus abandoned its mark, we note that the
evidence petitioner submitted, i.e., signage, shows use of
the registered mark,5 or substantially the same mark6 on
signage and the mark is used in conjunction with obtaining
fuel through the use of a credit card. Despite the word
“card” being moved from below the letter Q or to the right
of it, it is substantially the same mark. See Visa
International Service Assn v. Life-Code Systems Inc., 220
USPQ 740, 743 (TTAB 1983).
Likewise, whether respondent uses a different mark (or
a different version of the same mark) in some locations is
irrelevant. As long as the registered mark is in use, there
is nothing that prevents a respondent from using other marks
or other versions of the registered mark elsewhere. The
Board finds that there is no genuine issue as to any fact
that would be material to the issue of abandonment, and that

4 In the Natvig deposition, Mr. Natvig, when asked to describe
the signage, attested: “This is a sign to let people who use –
to identify that this is a Quarles Fuel Network location, and
it’s for the use of people who carry the fuel card only, and that
if they need any information about the site, we give them a
number, an 800 number, toll-free number for them to call”.
(Natvig dep. At p.26, ll. 18-24).

5 Photo dated 10/06/05 provided as Exhibit 4 to Natvig Dep.

Cancellation No. 92043631
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respondent is entitled to judgment on this issue as a matter
of law.
The Board thus finds that while petitioner, the moving
party, is not entitled to summary judgment, respondent, the
non-moving party, is so entitled on the issue of
abandonment. In such circumstances, the Board may enter the
proper judgment, although a cross-motion therefor was not
made. Rule 54(c) of the Federal Rules gives the Board the
power to enter final judgment to which the prevailing party
is entitled, even if the party has not demanded such relief.
See Missouri Pacific Railroad Co. v. National Milling Co.,
Inc., 409 F.2d 882 (3rd Cir. 1969).
Therefore, because the Board finds that there is no
genuine issue of material fact regarding abandonment, and
because respondent is entitled to judgment as a matter of
law on this issue, petitioner’s motion for summary judgment
is denied, and summary judgment in favor of respondent is
hereby entered. The petition to cancel is dismissed with
prejudice.
.o0o.

6 Photo dated 10/11/05 provided as Exhibit 4 to Natvig Dep.