No. 91198617 (T.T.A.B. Sep. 21, 2011)

John Kubanv.Martin Sula

Trademark Trial and Appeal BoardSep 21, 2011

No. 91198617 (T.T.A.B. Sep. 21, 2011)

THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. DUNN Mailed: September 21, 2011 Opposition No. 91198617 John Kuban v. Martin Sula Before Seeherman, Taylor, and Lykos, Administrative Trademark Judges: By the Board: On November 16, 2009, Martin Sula filed application Serial No. 77873279 to register the mark (JETSURF disclaimed) for “surf boards, namely, surf boards fitted with motors, water-skis, kick board flotation devices for recreational use” in Class 28.1 The application is based on Section 44(e) of the Trademark Act based on a European Community registration, and claims a priority 1 Application Serial No 77873279 also includes “boats, yachts, personal watercraft, namely, inflatable boats, water-jet propulsion driven boats” (in Class 12), but these goods were not opposed. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 Opposition No. 91198617 2 filing date of May 13, 2009 under Section 44(d) of the Trademark Act. On February 16, 2011, John Kuban filed a notice of opposition alleging priority and likelihood of confusion with his pleaded Registration No. 3836764 for the mark (SURF JET disclaimed; the colors red, blue, and white are claimed as a feature of the mark) for “personal watercraft, namely, motorized or jet-propelled water scooter, motorized or jet-propelled water board.” Opposer also asserted that because applicant’s application was filed more than six months after the filing date of applicant’s foreign application, the application was not entitled to a priority filing date and was void as untimely filed. On March 24, 2011, applicant filed an answer denying the salient allegations of the notice of opposition; on March 25, 2011, applicant served his initial disclosures; and on March 27, 2011, applicant moved for summary judgment on all pleaded claims. Summary judgment is appropriate where there are no genuine disputes of material fact, thus allowing the case to be resolved as a matter of law. Fed. R. Civ. P. 56(a). The party seeking summary judgment bears the burden of Opposition No. 91198617 3 demonstrating the absence of any genuine dispute as to any material fact, and that it is entitled to a judgment under the applicable law. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). All doubts as to whether any particular factual issues are genuinely in dispute must be resolved in the light most favorable to the non-moving party. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ 1542 (Fed. Cir. 1992). We turn first to the claim that the application was not entitled to a priority filing date and was void as untimely filed. In order to claim a priority filing date under Section 44(d) of the Trademark Act, the U.S. application must be filed within six months of the filing date of the foreign application on which the priority date is claimed. There is no genuine dispute that applicant’s European Community trademark application was filed on May 14, 2009, and that applicant’s U.S. application was filed on November 16, 2009. Thus, at first glance it would appear that applicant filed his application more than six months after the filing of his Community application. However, as pointed out in applicant’s motion for summary judgment, and acknowledged by opposer in his response, when the last day fixed by statute or by regulation for taking any action falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the action may be taken on the next Opposition No. 91198617 4 succeeding day that is not a Saturday, Sunday, or a Federal holiday. Trademark Rule 2.196. Six months from May 14, 2009, i.e., November 14, 2009, was a Saturday, and therefore applicant’s filing of his application on November 16, 2009, a Monday, was timely under Rule 2.196. Moreover, as the parties now agree, even if applicant’s filing was untimely so that applicant could not retain his priority filing date pursuant to Trademark Act Section 44(d), his application based on his foreign registration would not be void. Accordingly, there no longer being any dispute as to the timeliness of the opposed application for retaining the Section 44(d) priority date, or the validity of the application, applicant’s motion for summary judgment is granted with respect thereto, and the claims that the application is void or that applicant is not entitled to the May 14, 2009 priority date are dismissed. With respect to the claim of priority and likelihood of confusion, applicant submits no evidence in support of his position but argues that the differences between the marks, both of which disclaim all wording, are sufficient to preclude confusion. In effect, it appears that applicant is accepting that, for purposes of the motion, we should regard all du Pont factors2 other than that of the 2 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Opposition No. 91198617 5 similarity/dissimilarity of the marks as favoring opposer, and asserting that this single factor alone is sufficient for us to find judgment in applicant’s favor as a matter of law. See Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). In opposition to the motion for summary judgment, opposer contends that disclaimed matter may not be ignored when comparing marks for likelihood of confusion, and the similarity of the marks is a disputed fact which precludes summary judgment.3 Upon careful consideration of the arguments presented by the parties, and drawing all inferences in favor of opposer, we find that applicant has not provided evidence sufficient to demonstrate that there is no genuine factual dispute, and that it is entitled to judgment as a matter of law. That is, we cannot state that the marks are so different that, if all of the other du Pont factors were to favor opposer, there can be no likelihood of confusion as a matter of law.. Accordingly, applicant's motion for summary judgment on the ground of likelihood of confusion is denied. 3 Opposer also contends that entry of summary judgment should be denied because the parties dispute priority of use. However, since opposer pleaded ownership of Registration No. 3836764, and applicant has not counterclaimed for cancellation, so long as opposer submits the appropriate evidence at trial that his pleaded registration is valid and subsisting, priority is not at issue. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974); Vital Pharmaceuticals, Inc. v. Conrad J. Kronholm, Jr., 99 USPQ2d 1708, 1712 (TTAB 2011). Opposition No. 91198617 6 In summary, applicant’s motion for summary judgment is granted to the extent that the claims that his application is not entitled to the priority filing date and the application is void are dismissed, and the motion for summary judgment on the ground of likelihood of confusion is denied. The opposition will go forward solely on the ground of priority/likelihood of confusion. Proceedings are resumed, and dates are reset as indicated below: Deadline for Discovery Conference 10/23/2011 Discovery Opens 10/23/2011 Initial Disclosures Due 11/22/2011 Expert Disclosures Due 3/21/2012 Discovery Closes 4/20/2012 Plaintiff's Pretrial Disclosures Due 6/4/2012 Plaintiff's 30-day Trial Period Ends 7/19/2012 Defendant's Pretrial Disclosures Due 8/3/2012 Defendant's 30-day Trial Period Ends 9/17/2012 Plaintiff's Rebuttal Disclosures Due 10/2/2012 Plaintiff's 15-day Rebuttal Period Ends 11/1/2012 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. Trademark Rule 2.l25. Opposition No. 91198617 7 Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An oral hearing will be set only upon request filed as provided by Trademark Rule 2.l29.