Hiller, LLCv.Aquila Investment Group, LLC

Trademark Trial and Appeal Board

Oct 22, 2019

91238954 (T.T.A.B. Oct. 22, 2019)

LTS
October 22, 2019

Opposition No. 91238954

Hiller, LLC

v.
Aquila Investment Group, LLC

Before Wolfson, Adlin, and Heasley,
Administrative Trademark Judges.

By the Board:

This case now comes up on Applicant’s motion, filed June 3, 2019, for partial
summary judgment on Opposer’s claim of priority and likelihood of confusion under
Section 2(d) of the Trademark Act. 21 TTABVUE. The motion is fully briefed.1
We have carefully considered all of the parties’ arguments and presume the
parties’ familiarity with the bases for their filings. See Guess? IP Holder LP v.
Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015).
Background
Applicant seeks registration of the mark HOME OF THE $500 GUARANTEE, in
standard characters, for “repair, maintenance, replacement and installation services

1 Applicant’s change of correspondence address, filed July 23, 2019, is noted, and the Board’s
records have been updated accordingly.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91238954

2
in the field of plumbing, heating, ventilation and air conditioning equipment” in
International Class 37.2
In its amended notice of opposition, Opposer alleges prior use and registration of
the mark HAPPY 4 LIFE GUARANTEE, in standard characters, for “HVAC
contractor services; plumbing; plumbing contractor services” in International Class
37,3 and ownership of an intent-to-use application for the mark HAPPY YOU’LL BE
IS OUR SERVICE GUARANTEE, in standard characters, for a variety of repair,
maintenance, replacement and installation services in the field of plumbing, heating,
ventilation and air conditioning equipment in International Class 37.4 As grounds for
opposition, Opposer alleges: (1) priority and likelihood of confusion under Section 2(d)
of the Trademark Act; (2) nonuse in commerce under Section 1(a) of the Trademark
Act; (3) failure to function as a mark under Sections 1, 2, and 45 of the Trademark
Act; (4) that the mark is merely descriptive under Section 2(e)(1) of the Trademark
Act; and (5) fraud. 15 TTABVUE.
In its answer to the amended notice of opposition, Applicant admits that: (1) “the
services specified in [the involved application] are ‘very closely related, if not identical
in the minds of consumers with Opposer’s HVAC contractor services; plumbing;
plumbing contractor services’” (18 TTABVUE 3, ¶ 15); and (2) “consumers ‘would

2 Application Serial No. 87580377, filed August 23, 2017, based on use of the mark in
commerce under Trademark Act Section 1(a), 15 U.S.C. § 1051(a). Applicant claims July 31,
2000 as its date of first use anywhere and date of first use in commerce.
3 Registration No. 4076638, issued December 27, 2011; Section 8 & 15 declaration accepted
and acknowledged. “GUARANTEE” is disclaimed.
4 Application Serial No. 87326187, filed February 6, 2017, based on Opposer’s claim of an
intent to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. § 1051(b).
Opposition No. 91238954

3
likely encounter the Applicant’s services and the Opposer’s services through similar
trade channels under similar conditions’” (id. at 3, ¶ 16). Applicant otherwise denies
the salient allegations in the amended notice of opposition and asserts certain
“affirmative defenses.”
Summary Judgment
Summary judgment is appropriate only where there are no genuine disputes as to
any material facts, 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
demonstrating the absence of any genuine dispute of 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); Sweats Fashions, Inc. v. Pannill Knitting, 833 F.2d 1560, 4 USPQ2d
1793, 1796 (Fed. Cir. 1987). A factual dispute is genuine if, on the evidence of record,
a reasonable fact finder could resolve the matter in favor of the non-moving party.
See Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22
USPQ2d 1542, 1544 (Fed. Cir. 1992). Evidence on summary judgment must be viewed
in a light most favorable to the non-movant, and all justifiable inferences are to be
drawn in the non-movant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766,
25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. The
Board may not resolve genuine disputes as to material facts; it may only ascertain
whether genuine disputes as to material facts exist. See Lloyd’s Food Prods., 25
USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1544.
Opposition No. 91238954

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Likelihood of confusion involves an analysis of all of the probative facts in evidence
that are relevant to the thirteen factors set forth in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See also M2
Software Inc. v. M2 Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006); Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 UPSQ2d 1201, 1203 (Fed. Cir. 2003). Typically,
the two primary factors are the similarity or dissimilarity of the marks, and the
similarity or dissimilarity of the goods and services. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In certain cases,
the Board may find that a single DuPont factor is dispositive of likelihood of
confusion. Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d
1253, 1260 (Fed. Cir. 2011); Kellogg Co. v. Pack’Em Enterprises Inc., 14 USPQ2d
1545, 1550 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
Applicant argues that it is entitled to summary judgment solely because the
parties’ marks are so dissimilar under the first DuPont factor (i.e., the similarity or
dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression). 21 TTABVUE 9-12. See Kellogg, 21 USPQ2d at 1145.
Applicant admits that the second and third DuPont factors (i.e., similarity of services
and similarity of trade channels) “favor a finding of likelihood of confusion[,]” and in
its brief also concedes for purposes of its motion that purchasing decisions for the
parties’ respective goods are “made by both sophisticated and unsophisticated
Opposition No. 91238954

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purchasers,” so the fourth DuPont factor also favors a likelihood of confusion. 21
TTABVUE 8. Applicant contends that the remaining DuPont factors either can only
favor Applicant or are neutral. Id. at 9. Nonetheless, Applicant argues that the
parties’ respective marks are so completely different in sight, sound, meaning, and
commercial impression that summary judgment is appropriate on Opposer’s
likelihood of confusion claim. In this regard, Applicant argues that the marks consist
of a different number of words, the numerals in the marks HOME OF THE $500
GUARANTEE and HAPPY 4 LIFE GUARANTEE are different, and the meaning
behind the “guarantees” for each party are different. Id. at 9-12. Although both
parties’ marks include the word “GUARANTEE,” Applicant argues that when the
marks are compared as a whole, this one similarity should not preclude a grant of
summary judgment to Applicant. Id. at 12.
In response, Opposer argues that: (1) Applicant did not submit any admissible
evidence to support its motion5 (23 TTABVUE 3 and 9-10); (2) the marks are similar
enough to require an analysis of all of the DuPont factors (id. at 12-13); and (3) other
DuPont factors strongly favor finding a likelihood of confusion, including the second
(similarity of services), third (similarity of trade channels), fourth (lack of
sophistication of consumers), fifth (strength of Opposer’s marks), ninth (variety of
services on which the marks are used), and tenth (market interface between
Applicant and Opposer) (id. at 14-17). As to the similarity between the parties’ marks,

5 There is no need to address Opposer’s objections to Applicant’s evidence because Applicant’s
Exhibits 1 and 2 to its motion for summary judgment (21 TTABVUE 51-60) are not relevant
to our likelihood of confusion analysis.
Opposition No. 91238954

6
Opposer argues that both of Opposer’s marks and Applicant’s mark “begin with H
and end with GUARANTEE,” and as between HAPPY 4 LIFE GUARANTEE and
HOME OF THE $500 GUARANTEE, they both have “a number in the middle and
[are] roughly the same length[.]” Id. at 13. Opposer further argues that the parties’
respective marks have a similar commercial impression in that they “denote a
GUARANTEE to the purchasing consumer that they will be pleased with the parties’
respective services.” Id.
In reply, Applicant argues that: (1) Opposer did not submit any evidence
concerning the alleged disputed facts (25 TTABVUE 2); (2) “the meagre [sic]
similarity between the marks … [is] insufficient to support a finding of similarity”
(id. at 4); (3) Opposer did not submit any evidence from which the Board could find
that Opposer’s marks have acquired fame (id. at 5); (4) the ninth DuPont factor “need
not be considered in this case because there is overlap between the services of the
application and those of the asserted marks” (id.); and (5) the tenth DuPont factor
“has no relevance to the question of likelihood of confusion in the present opposition”
(id.).
We find that Applicant has satisfied its burden of establishing the absence of a
genuine dispute of material fact with regard to the dissimilarity between Applicant’s
HOME OF THE $500 GUARANTEE mark and Opposer’s pleaded HAPPY 4 LIFE
GUARANTEE and HAPPY YOU’LL BE IS OUR SERVICE GUARANTEE marks,
and that Applicant is therefore entitled to judgment as a matter of law dismissing
the likelihood of confusion claim under Section 2(d).
Opposition No. 91238954

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In Kellogg, the Court of Appeals for the Federal Circuit affirmed the Board’s
determination that the single DuPont factor of the dissimilarity of the marks
outweighed the other relevant DuPont factors, and was therefore dispositive on the
issue of likelihood of confusion. Kellogg, 21 USPQ2d at 1145.
Similarly here, despite presuming that the services and channels of trade are
identical, we find that Applicant’s HOME OF THE $500 GUARANTEE mark is so
dissimilar to Opposer’s pleaded HAPPY 4 LIFE GUARANTEE and HAPPY YOU’LL
BE IS OUR SERVICE GUARANTEE marks that no likelihood of confusion can exist
as a matter of law. See Champagne Louis Roederer S.A. v. Delicato Vineyards, 148
F.3d 1373, 47 USPQ2d 1459, 1460 (Fed. Cir. 1998) (“one du Pont factor may be
dispositive in a likelihood of confusion analysis, especially when that single factor is
the dissimilarity of the marks”). In fact, each mark is a different length, and the
marks share only one common and weak word, “GUARANTEE.” In the context of
HVAC and plumbing services, “GUARANTEE” is descriptive or at best highly
suggestive, and thus has little if any source-distinguishing significance. See EZ
Loader Boat Trailers, Inc. v. Cox Trailers, Inc., 213 USPQ 597, 601 (TTAB 1982),
aff’d, 706 F.2d 1213, 217 USPQ 986 (Fed. Cir. 1983). The word “guarantee” is a
laudatory word which assures consumers of reimbursement in the event they are
dissatisfied. We take judicial notice of the Merriam-Webster Online Dictionary (2019)
definition of “guarantee” as “3b. an assurance of the quality of or of the length of use
to be expected from a product offered for sale often with a promise of
Opposition No. 91238954

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reimbursement.”6 Indeed, Opposer disclaimed “GUARANTEE” in its HAPPY 4 LIFE
GUARANTEE mark.7 The mere presence of the word “GUARANTEE” in both parties’
marks is insufficient to create a genuine dispute of material fact concerning the
similarity of the parties’ marks. Id. Considered as a whole, the parties’ marks do not
look or sound alike.
Furthermore, the marks have dissimilar connotations and overall commercial
impressions. Applicant’s HOME OF THE $500 GUARANTEE mark suggests that its
services are backed by a $500 “guarantee,” whereas Opposer’s HAPPY 4 LIFE
GUARANTEE mark suggests that Opposer’s consumers will be happy with Opposer’s
service forever, and Opposer’s HAPPY YOU’LL BE IS OUR SERVICE GUARANTEE
mark simply suggests that Opposer’s consumers will be happy with Opposer’s
services. There is no monetary value tied to Opposer’s “guarantee.”
Because the marks, considered in their entireties, are so dissimilar in appearance,
sound, connotation, and commercial impression, Applicant’s motion for partial
summary judgment on Opposer’s likelihood of confusion claim is granted.8 See

6 The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB
2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v.
Metronome Enters. Inc., 96 USPQ2d 1031, 1037 n.14 (TTAB 2010).
7 Disclaimed matter is often “less significant in creating the mark’s commercial impression.”
In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001). “That a particular feature
is descriptive or generic with respect to the involved goods or services is one commonly
accepted rationale for giving less weight to a portion of a mark.” In re Natl. Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also, e.g., In re Dixie Rests., Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term
“CAFE,” is the dominant portion of the mark THE DELTA CAFE).
8 The parties should note that any evidence submitted in connection with the motion for
summary judgment is of record only for consideration of the motion. To be considered at final
hearing, evidence must be properly introduced into the record during the appropriate trial
Opposition No. 91238954

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Champagne Louis Roederer, S.A., 47 USPQ2d at 1460-61 (court affirms Board
dismissal of opposition based on dissimilarity of the marks CRISTAL and CRYSTAL
CREEK); Kellogg, 21 USPQ2d at 1145 (court affirms Board dismissal of opposition
based on dissimilarity of the marks FROOTEE ICE and elephant design and FRUIT
LOOPS); Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 9 USPQ2d 1736,
1739-40 (Fed. Cir. 1989) (court affirms Board dismissal of opposition based on
dissimilarity of the marks PECAN SANDIES and PECAN SHORTEES). See also
Sears Mortgage Corp. v. Northeast Savings F.A., 24 USPQ2d 1227, 1229 (TTAB 1992)
(dissimilarity between the marks APPROVAL PLUS and APPROVALFIRST
dispositive).
Proceedings Resumed
Proceedings are resumed in connection with Opposer’s claims of nonuse, failure
to function as a mark, descriptiveness, and fraud, and dates are reset as follows:
Discovery Closes 11/20/2019
Plaintiff’s Pretrial Disclosures Due 1/4/2020
Plaintiff’s 30-day Trial Period Ends 2/18/2020
Defendant’s Pretrial Disclosures Due 3/4/2020
Defendant’s 30-day Trial Period Ends 4/18/2020
Plaintiff’s Rebuttal Disclosures Due 5/3/2020
Plaintiff’s 15-day Rebuttal Period Ends 6/2/2020
Plaintiff’s Opening Brief Due 8/1/2020
Defendant’s Brief Due 8/31/2020
Plaintiff’s Reply Brief Due 9/15/2020
Request for Oral Hearing (optional) Due 9/25/2020

period. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1465 n.2
(TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ 911, 913 n.4 (TTAB 1983); Am. Meat Inst. v.
Horace W. Longacre, Inc., 211 USPQ 712, 716 n.2 (TTAB 1981).
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Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
manner and timing of taking testimony, matters in evidence, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
final hearing will be scheduled only upon the timely submission of a separate notice
as allowed by Trademark Rule 2.129(a).