COMPX International Inc.v.Robert Walter Harvey

Trademark Trial and Appeal Board

May 27, 2008

No. 91176664 (T.T.A.B. May. 27, 2008)

Goodman

Mailed: May 27, 2008

Opposition No. 91176664

COMPX INTERNATIONAL INC.

v.

Robert Walter Harvey

Before Hairston, Kuhlke and Ritchie de Larena,
Administrative Trademark Judges.

By the Board:

Applicant Robert Walter Harvey has applied to register
the mark COMPX in standard character form, for
“computational modeling services for use in a variety of
physical processes; development and custom design of
computer software” in International Class 42.1
Registration has been opposed by opposer Compx
International Inc. on the grounds of descriptiveness and
deceptive misdescriptiveness. Opposer has pleaded ownership
of five COMPX and COMPX formative marks for goods in
International Classes 6, 9 and 20.2

1 Application Serial No. 78859637, based on intent-to-use.
2 Plain copies of the registrations were attached as exhibits to
the notice of opposition. They are as follows: Reg. No. 2681063
for “locks, latches, catches, bolts, keys, key blanks and cabinet
door slides and hinges, work station and table support mechanisms
and drawer slides all made of metal” in International Class 6 and
for “computer furniture hardware; namely, mouse support
UNITED STATES PATENT AND TRADEMARK
OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91176664
2
In its answer, applicant denied the salient allegations
of the notice of opposition.
This case now comes up on opposer’s motion, filed
December 19, 2007, for sanctions, or alternatively for
summary judgment or alternatively, to compel3, and
applicant’s cross-motion for summary judgment, filed January
14, 2008.
We turn first to the parties’ cross-motions for summary
judgment.
Summary judgment is appropriate when there is no
genuine issue of material fact and the moving party is
entitled to judgment as a matter of law. See Fed. R. Civ.
P. 56(c). All reasonable inferences must be drawn in favor
of the nonmoving party. The mere fact that cross-motions

platforms, keyboard platforms and keyboard support arms” in
International Class 20.
Reg. No. 2169134 for “locks, latches, catches, bolts, keys, key
blanks and drawer slides, all of metal” in International Class 6
and “computer furniture hardware, namely, keyboard support arms”
in International Class 20.
Reg. No. 2841552 for “locks, latches, catches, bolts, keys, key
blanks and cabinet door slides and hinges, work station and table
support mechanisms and drawer slides all made of metal” in
International Class 6 and “computer furniture hardware; namely,
mouse support platforms, keyboard platforms and keyboard support
arms” in International Class 20.
Reg. No. 3133472 for “computer accessories, namely, computer
keyboard arms and support platforms, mouse support platforms,
monitor bases, CPU holders, and laptop lockers” in International
Class 9.
Reg. No. 3034053 for “electronic locks, namely, electronic locks
that interface with and/or employ solenoid and/or motor-driven
latches, and/or for electronic locks that maintain an operations
audit trail that includes date, time, user name, and/or access
attempt information” in International Class 9.
Opposition No. 91176664
3
for summary judgment on an issue have been filed does not
necessarily mean that there are no genuine issues of
material fact, and that trial is unnecessary. See TBMP
Section 528.01 (2d ed. rev. 2004) and cases cited therein.
Opposer’s motion for summary judgment is based solely
on its position that no genuine issues of material fact
exist as to its descriptiveness claim due to its requests
for admissions being deemed admitted by virtue of
applicant’s failure to serve responses thereto.
Admissions obtained by Fed.R.Civ.P. 36 may form a
proper basis for summary judgment if there are no genuine
issues as to any material fact. 8A Charles A. Wright,
Arthur R. Miller & Richard L. Marcus, Federal Practice and
Procedure Section 2264 (2d ed. 1994). However, in order for
admissions to form the basis for summary judgment, those
facts deemed admitted must be directed to the essential
allegations of the case. See e.g., M.L.E. Music v. Kimble,
Inc., 109 F.Supp.2d 469, 472 (S.D.W.Va. May 23, 2000)(when
essential allegations in a case have been admitted, summary
judgment is proper).
A review of opposer’s request for admissions reveals
that even if these requests are deemed admitted, they do not
concede or reduce the factual questions at issue in this

3 Opposer also seeks a 90-day extension of the discovery and
testimony periods in the event that its motion for sanctions or
alternative motion for summary judgment is denied.
Opposition No. 91176664
4
matter inasmuch as the requests do not prove any of the
essential elements of opposer’s descriptiveness claim.
Accordingly, applicant cannot be deemed to have admitted all
material facts in dispute via opposer’s request for
admissions. Inasmuch as genuine issues of material fact
remain with regard to the descriptiveness claim, opposer’s
motion for summary judgment is denied.
We now turn to applicant’s motion for summary judgment
which we construe as a motion for summary judgment based on
opposer’s lack of standing.4
Applicant has argued that “CompX International’s
business is sufficiently different from APPLICANT’S” stating
that “R.W. Harvey and his group of scientists . . . obtain
funding for performance of fusion energy research under the
name CompX” and that “[i]n CompX business, there is no
conflict at all with CompX International . . . APPLICANT
performs computational modeling, and OPPOSER represents a
manufacturing company. The businesses are very different.”

4 In paragraph 10 of his answer applicant alleges: “There is no
potential for OPPOSER and APPLICANT to be competitors. OPPOSER
shows no experience in computational modeling of various physical
processes performed by APPLICANT nor is it a logical extension of
its business. Applicant has no background or connection with
OPPOSER’S type of business. There is no potential whatsoever
that OPPOSER and APPLICANT will be competitors.” In paragraph 24
of its answer applicant alleges: “No damage accrues to OPPOSER
since there is no potential for COMPX INTERNATIONAL taking up a
competing position. OPPOSER is involved in a very different
business, nor would it be plausible for it to extend into
computational modeling of physics [sic] processes.”
Opposition No. 91176664
5
In response, opposer argues that applicant’s motion for
summary judgment should be denied as it appears to be based
on likelihood of confusion and “any such issue is totally
moot” because the opposition does not include such a claim.
Standing is a threshold issue that must be proven by a
plaintiff in every inter partes case, Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999) and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). The purpose of the standing
requirement, which is directed solely to the interest of
the plaintiff, is to prevent litigation when there is no
real controversy between the parties. Lipton Industries,
Inc., 213 USPQ at 189.
To establish standing, it must be shown that the
plaintiff has a “real interest” in the outcome of a
proceeding; that is, plaintiff must have a direct and
personal stake in the outcome of the opposition. Ritchie,
50 USPQ2d at 1023. Facts regarding the legitimate
personal interest are a part of the plaintiff's case and
must be proved. Lipton Industries, 213 USPQ at 189. With
regard to a Section 2(e) descriptiveness or
misdescriptiveness claim, opposer needs to show that “it
is engaged in the manufacture or sale of the same or
related goods as those listed in the defendant's involved
application or registration and that the product in
Opposition No. 91176664
6
question is one which could be produced in the normal
expansion of plaintiff's business; that is, that plaintiff
has a real interest in the proceeding because it is one
who has a present or prospective right to use the term
descriptively in its business.” Binney & Smith Inc. v.
Magic Marker Industries, Inc., 222 USPQ 1003, 1010 (TTAB
1984).
Opposer has failed to address the issue of standing in
its motion papers and thus has not demonstrated the
existence of any genuine issue of material fact as to
standing. On this basis alone, summary judgment is
appropriate. See Celotex Corp. v. Catrett, 477 U.S. 317,
322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (“Rule 56(c)
mandates the entry of summary judgment, after adequate time
for discovery and upon motion, against a party who fails to
make a showing sufficient to establish the existence of an
element essential to that party's case, and on which that
party will bear the burden of proof at trial”); Coup v.
Vornado Inc., 9 USPQ2d 1824 (TTAB 1988) (petitioner’s
failure to prove standing warrants grant of summary judgment
for respondent).
Additionally, we conclude that even if opposer’s
silence did not operate as a concession of lack of standing,
there are no genuine issues of material fact that opposer
has no standing to oppose.
Opposition No. 91176664
7
In this case, opposer, in the notice of opposition, has
pleaded ownership of registrations for its COMPX marks that
relate to electronic locks or metal locks, latches, bolts,
and keys and the like as well as computer furniture hardware
or computer accessories such as mouse support platforms,
keyboard support platforms and keyboard support arms.
Paragraphs 5-9; exhibits A-E, notice of opposition. Opposer
also alleges that “[a]pplicant is at least a potential
competitor of Opposer.” Paragraph 10, notice of opposition.
Applicant’s services are identified as “computational
modeling services for use in a variety of physical
processes; development and custom design of computer
software” and applicant’s discovery responses5 indicate that
applicant provides highly specialized computational modeling
and custom development of computer software in the field of
physics:
CompX is a consulting group comprised of a project
director and several physicists who focus on

5 We find that applicant’s December 17, 2007 correspondence,
which was a response to opposer’s November 13, 2007
correspondence regarding outstanding discovery, is partially
responsive to opposer’s discovery requests, particularly to
Opposer’s First Set of Interrogatory nos. 20, 29 and 30 and at
least some of opposer’s requests for production. With regard to
the requests for production, applicant has stated “[w]ith regard
to notes in our patent application folder from the time we
originally applied for the CompX service mark in 1995, there are
none.” This correspondence was an exhibit to opposer’s combined
motion and was also filed with the Board on December 18, 2007.
Applicant provided additional discovery responses (i.e.,
documents) in his cross-motion for summary judgment and response
to opposer’s combined motion which are responsive at least to
opposer’s request for production nos. 7, 8, 10, 24, 29, and 32.

Opposition No. 91176664
8
computational modeling of the auxiliary heating of
magnetic confinement, fusion energy and plasma devices.
We are engaged in long term development and upgrading
of computer modeling codes which give phase-space
distributions of electrons and ions resulting from rf
wave and plasma sources in toroidal magnetic
confinement devices. These comprehensive physics-based
models have proven useful for the interpretation and
projection of plasma heating, current drive, and
particle source experiments in tokamak, spherical
tokamak and reverse field pinch plasmas.6
We find that there is no genuine issue of material fact
that opposer is not currently engaged in providing
“computational modeling services for use in a variety of
physical processes; development and custom design of
computer software.” Additionally, we find that there is no
genuine issue of material fact that opposer’s electronic
locks, metal locks, latches, bolts, keys, key blanks, drawer
slides, cabinet door slides, mouse support platforms,
keyboard support platforms and keyboard support arms and
applicant’s identified services are not similar nor
competitive. We also find that there is no genuine issue of
material fact that the goods currently provided by opposer
are not logically related to applicant’s identified services
nor would they be part of the natural or normal expansion of
opposer to extend its business from its current products to
applicant’s identified services. Therefore, we find, based
on the evidence of record, that there is no genuine issue of
material fact that the parties are not competitors nor are

6 Applicant’s partial discovery response as set forth in his
Opposition No. 91176664
9
they potential competitors. Compare Nobelle.com LLC v.
Qwest Communications International Inc., 66 USPQ2d 1300,
1304 (TTAB 2003) (“On this record, we cannot conclude that
petitioner is . . . “in a position” to use (or have the
right to use) the Bell symbol in its business, or that
petitioner is engaged in any “business” at all which would
give it a real interest in the outcome of this proceeding”).
In view thereof, we find that there is no genuine issue
of material fact and that therefore, opposer has no standing
to maintain this proceeding. Accordingly, applicant’s
motion for summary judgment is granted on the basis of lack
of standing; judgment is entered against opposer based on
lack of standing; and the opposition is dismissed with
prejudice.7

December 17, 2007 response to opposer’s November 13, 2007 letter.
7 Opposer’s motion for sanctions, alternative motion to compel,
and motion to extend are moot.