Shuttle Technology Group Ltd.v.Smart Storage Solutions Corp.

Trademark Trial and Appeal Board

Jul 27, 2001

No. 91112337 (T.T.A.B. Jul. 27, 2001)

7/27/01

Paper No. 10
HRW

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Shuttle Technology Group Ltd.

v.

Smart Storage Solutions Corporation
_____

Opposition No. 112,337
to application Serial No. 75/327,292
filed on June 30, 1997
_____

J. Suzanne Siebert of Majestic, Parsons, Siebert & Hsue
PC for Shuttle Technology Group Ltd.

Bill B. Berryhill for Smart Storage Solutions
Corporation.
______

Before Hanak, Quinn and Wendel, Administrative Trademark
Judges.

Opinion by Wendel, Administrative Trademark Judge:

Smart Storage Solutions Corporation has filed an
application to register the mark SMART SHUTTLE for
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 112,337
2
“computer equipment, specifically computer hardware for
changing the hard drive of a computer.”1
Shuttle Technology Group Ltd. filed an opposition to
registration of the mark on the ground of likelihood of
confusion under Section 2(d) of the Trademark Act.
Opposer alleges use of the mark SHUTTLE TECHNOLOGY and
design since long prior to applicant’s filing date of
June 30, 1997; ownership of a registration for the mark2
for “computer equipment, namely, computer hardware and
peripherals; computer software for the control of
computer peripherals, including archival storage devices;
computer software for control of computer networks and
accompanying operating manuals therefor; and parallel to
SCSI adapters”; and likelihood of confusion if applicant
were to use its mark with the recited goods.

1 Serial No. 75/327,292, filed June 30, 1997, based on an
allegation of a bona fide intention to use the mark in commerce.
A disclaimer has been made of the word SMART.

2 Registration No. 1,862,322, issued November 15, 1994. As of
this date, there is no Office record of the filing of a Section
8 affidavit. The mark is registered in the format depicted below
and a disclaimer has been made of the word TECHNOLOGY.

Opposition No. 112,337
3
Applicant, in its answer, denied the salient
allegations of the notice of opposition. Applicant has
taken no action in the case since the filing of its
answer.
The record consists of the file of the involved
application and opposer's notice of reliance upon
opposer’s first set of requests for admissions and first
set of interrogatories, accompanied by the declaration of
opposer’s counsel to the effect that applicant provided
no
answers or objections to the discovery requests. Counsel
states in this declaration that a telephone voice message
was left for counsel for applicant noting that no answers
or objections had been received to the discovery and, as
a result, the requests for admission would be deemed
admitted and that no response was received from
applicant’s counsel to this call.
Opposer has filed a brief, after the time to do so
was reopened by order of the Board, but no oral hearing
was requested.
Opposer argues that there are no issues in dispute
in this opposition; that because of applicant’s failure
to respond to the requests for admission, the matters
Opposition No. 112,337
4
therein are deemed admitted and thus are conclusively
established.
The requests upon which opposer relies are as follows:
Request for Admission No. 5
Admit that Applicant knew before June 30, 1997
that Opposer had used the mark “SHUTTLE TECHNOLOGY +
DESIGN” for Opposr’s Goods.

Request for Admission No. 6

Admit that Applicant’s mark “SMART SHUTTLE” so
resembles the mark “SHUTTLE TECHNOLOGY + DESIGN” for
Opposr’s Goods and which Opposer has registered in
the
U.S. Patent and Trademark Office in Registration No.
1,862,322 issued November 15, 1994, as to be likely,

when used on in [sic]connection with the goods of
Applicant, to cause confusion, or to cause mistake,
or to deceive.
Request for Admission No. 7

Admit that Applicant’s mark “SMART SHUTTLE” so
resembles the mark “SHUTTLE TECHNOLOGY + DESIGN” for
Opposer’s Goods and which Opposer has registered in
the U.S. Patent and Trademark Office in Registration
No. 1,862,322 issued November 15, 1994, as to be
likely, when used on in [sic] connection with the
following goods of Applicant, to cause confusion, or
to cause mistake, or to deceive: computer
equipment, specifically, computer hardware for
changing the hard drive of a computer.

Request for Admission No. 8

Admit that Applicant’s mark “SMART SHUTTLE” so
resembles the mark ‘SHUTTLE TECHNOLOGY + DESIGN”
used
by Opposer, as to be likely, when used on in [sic]
connection with the following goods of Applicant, to
cause confusion, or to cause mistake, or deceive:
computer equipment, specifically, computer hardware
for changing the hard drive of a computer.

Opposition No. 112,337
5
Request for Admission No. 9

Admit that Applicant’s mark “SMART SHUTTLE” so
resembles the mark “SHUTTLE TECHNOLOGY + DESIGN”
used
by Opposer before June 30, 1997, as to be likely,
when used on or in connection with the following
goods of Applicant to cause confusion, or to cause
mistake, or to deceive: computer equipment,
specifically, computer hardware for changing the
hard drive of a computer.

In the absence of filing any evidence of prior use,
applicant is entitled only to the constructive use date
or the filing date of its intent-to-use application,
namely, June 30, 1997. Applicant has admitted prior use
by opposer. Accordingly, opposer’s priority has been
established.
Applicant has also admitted a likelihood of
confusion because of the similarity of the respective
marks if applicant were to use its mark SMART SHUTTLE on
the recited goods. In view thereof, we find the elements
of a claim under Section 2(d) have been established.3
Decision: The opposition is sustained and
registration is refused to applicant.

3 We find applicant’s admissions of opposer’s prior use and
registration of the mark SHUTTLE TECHNOLOGY + DESIGN for
Opposition No. 112,337
6

opposer’s goods sufficient to establish opposer’s standing to
bring this opposition.