Island Seafood & Trading Co., Inc.v.Pedro Alvarez

Trademark Trial and Appeal Board

Mar 13, 2001

No. 92029311 (T.T.A.B. Mar. 13, 2001)

03/13/01
GDH/gdh
Cancellation No. 29,311
Island Seafood & Trading
Company, Inc.
v.
Pedro Alvarez
Before Hohein, Hairston and Drost, Administrative Trademark
Judges.
By the Board:
Island Seafood & Trading Company, Inc. has filed an
amended petition to cancel the registration which is presently
owned, according to the Assignment Division records of the United
States Patent and Trademark Office, by Pedro Alvarez for the mark
"NATIVE SEAFOOD & TRADING CO" and design, as reproduced below,
U.S. PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 29,311
2
for "retail store and wholesale distributorship services in the
field of seafood products and restaurant services."1
As grounds for cancellation, petitioner alleges that it
"provides restaurant services under the mark Native Seafood &
Trading Company and design and has done so since at least as
early as November 25, 1995"; that, upon information and belief,
use of the mark which is the subject of respondent's involved
registration "has been abandoned by the owner with no intent to
resume use"; that the assignor of the involved registration "has
declared bankruptcy and is [no] longer in business"; that while
the involved registration "has been assigned out of bankruptcy to
the current Registrant[,] Pedro Alvarez," the "Trustee's Bill of
Sale is defective in that it is an assignment in gross"; and
that, accordingly, such registration "is invalid and should be
canceled."
Respondent, in his answer, has admitted the allegation
that petitioner "provides restaurant services under the mark
Native Seafood & Trading Company and design and has done so since
at least as early as November 25, 1995." Respondent also admits
therein that "the Trustee's Bill of Sale is defective in that it
is an assignment in gross" and that "a putative assignor of Reg.
No. 1,774,541 filed a Chapter 7 petition in bankruptcy and is no
longer in business." Respondent, however, has denied the
remaining salient allegations of the petition to cancel and has
1 Reg. No. 1,774,541, issued on June 1, 1993 from an application filed
on July 6, 1992, which sets forth dates of first use of July 1989;
combined affidavit §§8 and 15. The terms "SEAFOOD" and "TRADING CO"
are disclaimed.
Cancellation No. 29,311
3
asserted, as an "affirmative defense," that petitioner "uses the
subject mark by virtue of a license granted by Registrant."
This case now comes up on petitioner's contested
motion, filed on January 31, 2000 as a motion for judgment on the
pleadings, which was construed by the Board, in an order issued
on June 15, 2000, as one for summary judgment "[b]ecause matters
outside the pleadings have been referenced by the parties."2 As
grounds for summary judgment in its favor, petitioner argues that
the undisputed facts in this proceeding, as revealed in the
pleadings, "establish that the assignor of Registration No.
1,774,541 declared bankruptcy"; that such assignor is no longer
in business; that the involved registration "has been assigned
out of bankruptcy to the current registrant[,] Pedro Alvarez; and
that the "Trustee's Bill of Sale is defective in that it is an
assignment in gross" which was made without an accompanying
assignment of the goodwill appurtenant to the mark. Petitioner
consequently maintains that in view of the assignment in gross,
2 In consequence thereof, the Board allowed petitioner until July 17,
2000 "to submit any additional material in support of its motion for
summary judgment" and permitted respondent until August 16, 2000 "to
submit any responsive material." Petitioner, by a certificate of
mailing dated July 13, 2000, responded by essentially re-styling and
re-filing its original motion as a motion for summary judgment, noting
therein that because respondent admitted in his answer that the
assignment to him of the involved registration was defective as an
assignment in gross and hence, as a matter of law, was invalid, the
Board "need not entertain any additional facts." Respondent, in its
timely response filed on August 14, 2000, submitted additional
evidence in opposition to petitioner's original motion and also moved
"to strike Petitioner's second motion for summary judgment served July
13 2000" on the basis that such motion "is redundant." Inasmuch as
the motion to strike is not only uncontested, but in any event is also
well taken, petitioner's July 13, 2000 motion for summary judgment is
hereby stricken as duplicative.
Cancellation No. 29,311
4
the registration is invalid as a matter of law and thus must be
canceled.
Respondent, in opposition to the summary judgment
motion, has submitted evidence consisting of his declaration and
supporting documentary exhibits. Among other things, Mr. Alvarez
states, on the basis of his "own personal knowledge" that:
2. I am the registrant of the mark
"NATIVE SEAFOOD & TRADING CO AND DESIGN,"
Registration No. 1,774,541.
....
4. On or about February 6, 1991 I was
instrumental in incorporating here in Florida
a company known as Native Seafood & Trading
Co., Inc.
5. Subsequently, I caused Native
Seafood & Trading Co., Inc. to file an
application to register the mark "NATIVE
SEAFOOD & TRADING CO AND DESIGN" as a service
mark on July 6, 1992, which application
subsequently matured into Registration No.
1,774,541, which is the subject of the ...
cancellation proceeding.
6. After that ... application was
filed, I was instrumental in setting up
another Florida corporation known as Native
Seafood, Inc., which was incorporated on or
about July 16, 1992 (10 days after said
registration issued).
7. The second company, Native Seafood,
Inc., was then licensed by Native Seafood &
Trading Co., Inc. to use the trademark
"NATIVE SEAFOOD & TRADING CO AND DESIGN" in
its business.
8. Thereafter, the licensee, Native
Seafood, Inc., filed a Chapter 7 petition in
bankruptcy, and the ... registration was
inadvertently and erroneously listed as one
of the assets of that corporation.
9. Since I desired to continue using
the mark, I subsequently made arrangements to
Cancellation No. 29,311
5
purchase the registration from the bankruptcy
Trustee for a nominal sum, erroneously
thinking that the Trustee had title to the
registration.
10. The assignment (the "Bill of Sale"
attached hereto) that I received for the
bankruptcy Trustee was recorded in the Patent
and Trademark Office at Reel #1668, Frame
#0079.
11. I then licensed the subject mark to
Island Seafood & Trading Company, Inc., the
petitioner in the ... cancellation proceeding
..., and that license continues to the
present time; I directly supervise the use of
the mark.
12. When I learned of the error in the
paper chain of title of ... Registration No.
1,774,541, I promptly caused a nunc pro tunc
assignment to be made by the official
registrant of the mark, Native Seafood &
Trading Co., Inc.[,] to me, effective August
14, 1993, and said assignment, a copy of
which is attached hereto ..., was recorded in
the Patent and Trademark Office at Reel
#1995, Frame #0597.
13. During its entire existence, I was
an officer and director of the proper
assignor of the subject mark to me, namely[,]
Native Seafood & Trading Co., Inc., and it
has never filed a petition in bankruptcy.
We agree with respondent that, in light of the above
evidence, summary judgment in favor of petitioner is not
warranted. As respondent carefully points out in his response:
The basis of Petitioner's cancellation
petition and its ... motion is the premise
that the Registrant claims ownership of the
registration in question by virtue of an
alleged assignment in gross. The accused
assignment took the form of a "Bill of Sale"
from a bankruptcy trustee handling the estate
of a company known as Native Seafood, Inc.,
and it is true that the Bill of Sale document
failed to mention the goodwill associated
with the mark.
Cancellation No. 29,311
6
However, ... the registration for the
subject mark was erroneously and
inadvertently listed as an asset of the
bankrupt corporation, when in fact that
corporation was only a licensee. Note that
the Bill of Sale specifically mentions the
debtor corporation, Native Seafood, Inc.,
while the actual registration certificate
names the proper registrant at that time,
namely[,] Native Seafood & Trading Co., Inc.
....
In any event, when the current
Registrant and Respondent in the instant
cancellation proceeding discovered the
inadvertent error, a nunc pro tunc assignment
of the subject mark [and the registration
therefor] was executed by Native Seafood &
Trading Co., Inc. to him .... Said nunc pro
tunc assignment was then promptly submitted
to the Patent and Trademark Office for
recordation ....
As shown in the declaration of Pedro
Alvarez, ... the proper assignor, Native
Seafood & Trading Co., Inc.[,] has never
declared bankruptcy. .... [Thus,] ... the
proper assignment is not an assignment in
gross.
Petitioner's motion for summary judgment is accordingly denied.
Fed. R. Civ. P. 56(c).
In addition, in his response, which is entitled
"REGISTRANT'S BRIEF OPPOSING SUMMARY JUDGMENT FOR PETITIONER AND
SUGGESTING SUMMARY JUDGMENT FOR REGISTRANT," respondent "requests
that this Board enter summary judgment in Registrant's favor,
which it is permitted to do in situations such as this where the
facts are uncontroverted and the undisputed material facts
clearly show that Registrant is entitled to summary judgment in
its favor as a matter of law."3 Among other things, respondent
3 In support of such action, respondent cites, inter alia, Celotex
Corp. v. Catrett, 477 U.S. 317 (1986); Tonka Corp. v. Tonka Tools,
Cancellation No. 29,311
7
points out in support of his request that, despite being allowed
time to submit evidence, petitioner offered no evidence (beyond
the admissions in the pleadings) to substantiate its contentions
that the mark which is the subject of the involved registration
has been assigned in gross, much less any evidence "to contradict
the corrective nunc pro tunc assignment." No response to
respondent's request for summary judgment has been received from
petitioner.
Trademark Rule 2.127(a) provides in relevant part that,
"[w]hen a party fails to file a brief in response to a motion,
the Board may treat the motion as conceded." In view thereof,
and since respondent's request, which is essentially an
uncontested cross-motion for summary judgment in its favor,
appears to be well taken, the request is granted. Fed. R. Civ.
P. 56(c) and (e); and Trademark Rule 2.127(a). Summary judgment
is hereby entered in respondent's favor and the petition for
cancellation is accordingly dismissed with prejudice.
Inc., 229 USPQ 857 (TTAB 1987); Crocker National Bank v. Canadian
Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984); Visa Int'l
Service Ass'n v. Life Code Systems, Inc., 220 USPQ 740 (TTAB 1983);
and TBMP §528.08.