National Association of Certified Home Inspectors, Inc.v.American Society of Home Inspectors, Inc.

Trademark Trial and Appeal Board

Aug 28, 2008

No. 91166484 (T.T.A.B. Aug. 28, 2008)

Mailed:
28 August 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

National Association of Certified Home Inspectors, Inc.
v.
American Society of Home Inspectors, Inc.
_____

Opposition No. 91166484
to application Serial No. 78325337
_____

Mark S. Cohen of Cohen Horner, LLP for National Association
of Certified Home Inspectors, Inc.

Harry S. Rosenthal, Esq. for American Society of Home
Inspectors, Inc.
______

Before Grendel, Drost, and Walsh, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On November 10, 2003, applicant, American Society of
Home Inspectors, Inc. (ASHI), filed an intent-to-use
application (Ser. No. 78325337) to register the mark THE
ASHI EXPERIENCE, in standard character form, for
“dissemination of advertising for others in the field of
professional home inspection services” in Class 35. After
the mark was published for opposition on July 5, 2005,
opposer (National Association of Certified Home Inspectors,
Inc. or NACHI), filed a notice of opposition. The
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91166484
2
opposition is based on opposer’s allegation that: (1)
“NACHI is the owner of a common-law trademark for ‘HI
Experience,’ a marketing slogan that NACHI and NACHI
certified inspectors use” and (2) “NACHI attempted to
register ‘HI Experience’ with the U.S. Patent and Trademark
Office by filing an application for registration on October
6, 2003. Trademark Application Serial No. 76549251… [It]
will be published in the Official Gazette on September 6,
2005.” Notice of Opposition at 1-2.
Opposer alleges that “[c]onfusion, mistake, or
deception is likely because (i) both NACHI and ASHI are
organizations of Home Inspectors, and (ii) both trademarks
use the combination of letters ‘HI’ followed by the word
‘experience’ to denote services related to home inspection.”
Notice of Opposition at 3.
Applicant denied the salient allegations of the notice
of opposition and filed a counterclaim with the appropriate
fee seeking “cancellation and dismissal of opposer[‘s]
application.” Answer at 6.
Opposer responded to the counterclaim by essentially
denying the allegations of applicant’s counterclaim. It
pointed out that the USPTO “approved NACHI’s application for
‘HI Experience’ on November 29th, 2005 (U.S.P.T.O. Reg. No.
3,019,043).” Answer to Counterclaim at 1. The registration
is for the term HI EXPERIENCE in typed or standard character
Opposition No. 91166484
3
form for “home inspection” services in Class 42. Opposer
also moved to dismiss the counterclaim on the ground that
applicant failed to plead priority of use.1
The Record and Evidentiary Issues
The record consists of the pleadings; the file of the
involved application; and the testimonial deposition of Nick
Gromicko, the registration’s owner, with exhibits.2 The
parties also agree that the testimonial deposition of Robert
Paterkiewicz, applicant’s executive director, with exhibits
and the testimonial deposition of Frank Lesh, applicant’s
president, are of record. Opposer’s Brief at 5; Applicant’s
Brief at 6; Opposer’s Reply Brief at 5. Applicant also
argues that its trademark for the mark ASHI is in the record
as well as its trademark application for the mark THE ASHI
EXPERIENCE. Inasmuch as applicant’s THE ASHI EXPERIENCE
trademark is the mark that is being opposed in this
proceeding, it is already of record. 37 CFR § 2.122(b)(1).
Applicant’s trademark registration for ASHI was introduced
during the Paterkiewicz deposition, and therefore it too is
of record.3 Opposer submitted a notice of reliance on its

1 Applicant’s Answer and Counterclaim was filed on October 15,
2005. Application Serial No. 76549251 did not issue as
Registration No. 3019043 until November 29, 2005.
2 On April 28, 2008, the board denied applicant’s motion for
involuntary dismissal for failing to take testimony inasmuch as
this deposition was timely submitted.
3 Opposer’s motion to strike “any mention of the ASHI mark, or
testimony regarding the ASHI mark [as] wholly irrelevant” is
denied. Applicant’s ownership of the mark ASHI is not irrelevant
to its attempt to register the mark THE ASHI EXPERIENCE.
Opposition No. 91166484
4
“First Set of Interrogatories, Requests for Admissions,
Request for Production of Documents; Applicant’s responses
thereto; and documents produced by Applicant in response
thereto.” Brief at 5. Also, a status and title copy of
Registration No. 3019043 is of record as Gromicko Ex. 5.
Finally, we agree with opposer, and we will not
consider, applicant’s attorney’s discussion in its brief (p.
15) apparently concerning an alleged conversation with Mr.
Gromicko regarding a possible settlement of the case. Fed.
R. Evid. 408.
Standing
If an opposer has submitted status and title copies of
its federal trademark registrations, we would find that the
opposer has established its standing to oppose. See, e.g.,
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000); and Fort James Operating Co. v.
Royal Paper Converting Inc., 83 USPQ2d 1624, 1626 (TTAB
2007). Also, in view of an opposer’s ownership of this
registration, priority would not be an issue in the
opposition. See King Candy Co. v. Eunice King’s Kitchen,
496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). However, in
this case, the only opposer is the National Association of
Certified Home Inspectors, Inc., who alleges that it is the
“owner of a common-law trademark for ‘HI Experience’” and
that it has “attempted to register ‘HI Experience’ with the
Opposition No. 91166484
5
U.S. Patent and Trademark Office.” Notice of Opposition at
1. In its answer to the counterclaim (p. 1), opposer
alleges that “NACHI’s Application for ‘HI Experience’” was
approved by the USPTO. Opposer’s status and title copy of
the registration lists the owner as “Gromicko, Nick (United
States individual).”4 A license agreement submitted by
opposer between NACHI (licensee) and Nick Gromicko
(licensor) provides that Mr. Gromicko is the “owner of U.S.
trademark application Registration No. 3,019,043” and that
he has allowed “Licensee to use the mark free of charge
under an informal, oral licensee” and that through the
agreement he “grants a non-exclusive, royalty-free license
to Licensee to use the mark ‘HI EXPERIENCE’ to the fullest
extent allowed by law.” Gromicko Ex. 9.5 Therefore,
despite opposer’s statements to the contrary, opposer’s
evidence establishes that NACHI is not the owner of the mark
HI EXPERIENCE. NACHI, formerly incorporated in
Pennsylvania, is now a non-profit corporation of the State
of Colorado with tax-exempt status. Gromicko Exhibits 2-4.
The owner of the registration is Nick Gromicko, who has
either informally or formally, licensed opposer to use the
mark. Mr. Gromicko is “an unpaid volunteer” of NACHI and

4 Our review of the USPTO’s assignment records do not indicate
that the registration has been subsequently assigned.
5 Mr. Gromicko’s deposition was taken on November 8, 2006. The
license agreement between Mr. Gromicko and NACHI (Ex. 9) was
executed on November 7, 2006.
Opposition No. 91166484
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its founder and the only member of its board or directors.
Gromicko dep. at 7. He is not an employee of NACHI and he
has “never been paid directly or indirectly or compensated
in any way by NACHI for the volunteer work” he does.
Gromicko dep. at 7. Obviously, if Mr. Gromicko, as the
owner of an allegedly confusingly similar registration, was
a party to this proceeding, he would have standing. But Mr.
Gromicko is not a party.
Therefore, we must look to NACHI’s status. There is no
evidence that NACHI is an exclusive license. It is clear
that an exclusive licensee has standing to bring an
opposition. J.L. Prescott Co. v. Blue Cross Laboratories
(Inc.), 216 USPQ 1127, 1128 (TTAB 1982). Again, while
opposer argues that it is “the sole user of Gromicko’s mark
HI EXPERIENCE” (Brief at 7), the license agreement makes it
clear that opposer does not have the status of an exclusive
licensee. See also Gromicko dep. at 16-17 (“Q. Did you have
some kind of agreement with NACHI regarding using this mark?
A. Yes. They can use it any way they want”).
However, the case law suggests that a non-exclusive
licensee may also have standing to bring an opposition
proceeding.
We note at the outset that although the three opposers
filed this opposition jointly, each must prove its own
standing and a ground for opposition. With this
principle in mind, we turn first to the threshold issue
of opposers’ standing. A plaintiff may show that it
has standing to bring an action under Section 2(d) of
Opposition No. 91166484
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the Trademark Act of 1946, 15 U.S.C. 1052(d), i.e., may
show that it has a “real interest” in the proceeding,
by alleging, and thereafter proving at trial, that it
has a real commercial interest in its own mark or trade
name, plus a reasonable basis for its belief that it
would be damaged by the registration in question. See:
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982), and Selva and Sons,
Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ
641 (CAFC 1983). The latter may include, for example,
allegations, and then proof at trial, that plaintiff's
belief in likelihood of confusion is not wholly without
merit. It is obvious that opposer Chemical New York,
as owner of the “PRONTO” marks and registrations, and
opposer Chemical Bank, as licensee and user of the
marks, have such a “real interest” in this proceeding.

Chemical New York Corp. v. Conmar Form Systems, Inc., 1
USPQ2d 1139, 1142 (TTAB 1986) (emphasis added).
To the contrary, SGA's claims of priority of use,
coupled with its pleading of likelihood of confusion,
constitute a legally sufficient pleading of SGA's claim
that it has a real interest in the proceeding and,
therefore, standing to pursue the opposition. This is
so even if SGA's use of the two pleaded marks is as a
licensee or distributor for WSC, for a plaintiff may
have standing in a case brought under Section 2(d) of
the Trademark Act even if it does not claim ownership
of the assertedly similar mark, or the right to control
its use.

William & Scott Co. v. Earl's Restaurants Ltd., 30 USPQ2d
1870, 1872 n.2 (TTAB 1994) (citation omitted). Accord
Universal Oil Products Co. v. Rexall Drug And Chemical Co.,
463 F.2d 1122, 174 USPQ 458, 459 (CCPA 1972) (“As the parent
corporation of a wholly owned subsidiary, appellant can
reasonably believe that damage to the subsidiary will
naturally lead to financial injury to itself”).
Assuming that, as a non-exclusive licensee, opposer has
standing to bring this opposition, it is clear that, as a
Opposition No. 91166484
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licensee and non-owner of the mark, opposer is not entitled
to rely on the registration’s Section 7(b) presumptions. 15
U.S.C. § 1057(b). See TBMP § 704.03(b)(1)(B) (2d ed. rev.
2004) (Section 7(b) presumptions accorded to a registration
on the Principal Register accrue only to the benefit of the
owner of the registration, and hence come into play only
when the registration is made of record by its owner”).
See, e.g., Chemical New York, 1 USPQ2d at 1142 (“Priority of
use does not arise as an issue as against Chemical New York
in view of said party's ownership of the ‘PRONTO’
registrations… However, inasmuch as opposer Chemical Bank
is not the owner of the registrations, and hence cannot rely
on them herein…, it was incumbent upon Chemical Bank to
prove priority of use in order to prevail upon its claim
under Section 2(d)”) and Fuld Bros., Inc. v. Carpet
Technical Service Institute, Inc., 174 USPQ 473, 475-76
(TTAB 1972) (“Notwithstanding the relationship of Associated
Just Distributors, Inc. to petitioner, it is nevertheless a
separate legal entity, it is the record owner of the
registration, and, in view of the express language of
Section 5 of the Statute, only the registrant can rely upon
the prima facie presumptions afforded a registration under
Section 7(b)”).6 Therefore, we proceed to the next issue.

6 After the briefs were filed, applicant filed a motion seeking
“clarification of the identity and status of opposer” as a result
of third-party litigation. According to applicant’s motion
Opposition No. 91166484
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Priority
Opposer has alleged that there is a likelihood of
confusion between the mark HI EXPERIENCE and THE ASHI
EXPERIENCE when they are used in association with home
inspection-related services. “Opposer, as plaintiff in the
opposition proceeding, bears the burden of proving, by a
preponderance of the evidence, its asserted grounds of (i)
priority and likelihood of confusion…” Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1267 (TTAB 2003). The key issue here
is whether plaintiff has shown that it has priority. As
discussed above, opposer cannot rely on ownership of a
registration because it is not the owner of the
registration. Instead, opposer must show use of the mark
prior to applicant’s priority date. This application was
filed on November 10, 2003. Applicant can rely on this date
as its constructive use date. See Larami Corp. v. Talk To
Me Programs Inc., 36 USPQ2d 1840, 1844-1845 (TTAB 1995) and
Zirco Corp. v. American Telephone and Telegraph Co., 21
USPQ2d 1542, 1544 (TTAB 1992). Therefore, applicant has a
priority date at least as early as November 10, 2003.
In order to meet the first of its burdens of proof,
opposer must be able to show that it has used its mark prior

(p.2), “Opposer NACHI agreed, among other things, to change its
name to ‘InterNACHI.’” The board denied applicant’s request for
clarification. Order dated April 29, 2008 at 3. The request is
not relevant to whether Mr. Gromicko or NACHI is the owner of the
‘043 registration.
Opposition No. 91166484
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to applicant’s November 10, 2003, priority date. Opposer’s
witness testified as follows on the subject of NACHI’s or
the registrant’s use of the mark:
Q. Okay. Let me ask you a couple of questions about
this. First of all, when you said the first use of the
HI Experience was in February of 2001, do you recall
how you were using it at that time?

A. It has been on our front page of our Web site for as
long as I can remember.

Q. And when you say “our Web site,” do you mean
NACHI.org?

A. Yes.

Q. Are there other ways in which NACHI has used that
trademark?

A. Not that I can think of offhand.

Gromicko dep. at 11.

Q. The mark HI Experience, did NACHI allow its members
to use that mark in connection with their own marketing
efforts?

A. Yes.

Q. Is there a written policy that allows that?

A. Yes. It’s on our Web site somewhere.

Gromicko dep. at 13. See also Id. at 20 (The mark has “been
continuously on our site for as long as I can remember”).
Q. Okay. You indicate that NACHI’s first use of HI
Experience was February 14, 2001. How did that first
use occur?

A. I would guess that it was on our Web site somewhere.

Q. Okay. Now, you said you guessed, but do you have
any documents to indicate that that was used on your
website on February 14, 2001.

Opposition No. 91166484
11
A. No, but everyone can procure that themselves. They
can – there are sites that record the front page of all
Web sites forever, so you can go back in time and look
at anyone’s home page at any time.

Gromicko dep. at 31.

Opposer did not provide any exhibits to its witness’s
testimony that would support Mr. Gromicko’s testimony.
“[O]ral testimony, if sufficiently probative, is normally
satisfactory to establish priority of use in a trademark
proceeding.” Powermatics, Inc. v. Globe Roofing Products
Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965). Such
testimony should “not be characterized by contradictions,
inconsistencies and indefiniteness but should carry with it
conviction of its accuracy and applicability.” B.R. Baker
Co. v. Lebow Bros., 150 F.2d 580, 66 USPQ 232, 236 (CCPA
1945). See also Liqwacon Corp. v. Browning-Ferris
Industries, Inc., 203 USPQ 305, 316 (TTAB 1979) (“It is
settled that oral testimony in situations such as this one
where documentary evidence may be insufficient or
unavailable for various reasons may be sufficient to
establish both prior and continuous use of a designation
providing that the testimony is by a witness or witnesses
personally conversant with the facts, and that it is clear,
convincing, consistent, and sufficiently circumstantial to
convince the trier of fact of the probative value thereof”).
In this case, we cannot find that Mr. Gromicko’s
testimony meets this standard. The uncorroborated testimony
Opposition No. 91166484
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was vague with very few details. It is not clear how the
term HI EXPERIENCE was used on the website and what specific
services were associated with the term. In this case, we do
not find that this vague and general testimony very
persuasive. See Elder Mfg. Co. v. International Shoe Co.,
194 F.2d 114, 92 USPQ 330, 333 (CCPA 1952) (“The testimony
shows [appellant] carried on an extensive business and sold
collars on a large scale. However, there is no evidence of
any advertising or of sales of any product to any particular
customers, nor is there any evidence which would indicate
use of the trade mark ‘Mark Twain’ on collars prior to
October 1, 1921, except the oral testimony of the three
witnesses aforementioned. The only specimen produced
showing use of the mark was the above-mentioned collar which
was manufactured in 1937”). Therefore, we conclude that
opposer has not met its burden of establishing a date of use
prior to applicant’s date of November 10, 2003.
Other Issues
We note that applicant has petitioned to cancel the
‘043 registration while it was an application. We do not
reach this issue inasmuch as opposer is not the owner of the
registration and it cannot rely on the registration in this
proceeding. In addition, the owner of the mark is not a
party to defend the registration.

Opposition No. 91166484
13
Therefore, primarily because of the fact that the owner
of the registration is not involved in this proceeding, we
dismiss the counterclaim to cancel as moot.
Furthermore, because opposer has not shown that it has
priority, we do not address its claim of likelihood of
confusion.
Decision: The opposition is dismissed.