Jet Enterprises Pvt. Ltd.v.Jet Airways, Inc.

Trademark Trial and Appeal Board

Mar 31, 2008

No. 92044201 (T.T.A.B. Mar. 31, 2008)

Brown/Wolfson
Mailed: March 31, 2008

Cancellation No. 92044201

Jet Enterprises Pvt. Ltd.

v.

Jet Airways, Inc.,

Before Seeherman, Holtzman and Taylor, Administrative
Trademark Judges.

By the Board:

This case now comes before the Board for consideration
of petitioner’s motion for summary judgment (filed June 29,
2007). The motion is fully briefed.
By way of background, petitioner seeks cancellation of
Registration No. 2839676 for the mark JET AIRWAYS and design
for “air transportation; air transportation featuring a
frequent flyer program; airline transportation services;
freight transportation by air; transportation of passengers
and/or goods by air; and, transportation reservation
services” in International Class 39.1 That registration
issued from an application filed on December 17, 2002,
alleging October 23, 2002 as the date of first use and
December 1, 2002 as the date of first use in commerce. In

1 The registration issued on May 11, 2004.
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 TTAB
Cancellation No. 92044201
2
its petition to cancel (see petition to cancel at paragraph
#7) as well as in its motion for summary judgment,
petitioner asserts that respondent failed to satisfy the use
in commerce requirement of the Trademark Act prior to filing
its use-based application under Section 1(a), and therefore
was not entitled to registration of its mark. For the
following reasons, we grant petitioner’s motion for summary
judgment.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine issue of material fact, and that it
is entitled to summary judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317 (1986). All
justifiable inferences to be drawn from the undisputed facts
must be viewed in the light most favorable to the nonmoving
party. See Opryland USA, Inc. v. Great American Music Show,
Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
With regard to whether petitioner has standing to
maintain this proceeding, we note that respondent has not
challenged petitioner’s standing to cancel the involved
registration. Moreover, according to petitioner, it has
been refused registration of two of its pending applications
Cancellation No. 92044201
3
because of respondent’s registration and in such instances,
a real interest in the proceeding and a reasonable belief in
damages may be found. See Cerveceria Modelo S.A. de C.V. v.
R.B. Marco $ Sons, Inc., 55 USPQ2d 1298, 1300 (TTAB) and
Hartwell Co. v. Shane, 17 USPQ2d 1569, 1570 (TTAB 1990).
Therefore, we find that there is no genuine issue that
petitioner has a direct commercial interest in this
proceeding, and that it has sufficiently demonstrated its
standing cancel respondent’s registration.
Inasmuch as respondent based its application on use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C.
§1051(a), respondent had to have made actual use of the mark
in commerce, on or in connection with all of the services
listed in the application, on or before the filing date of
the application. Section 45 of the Trademark Act further
provides that a mark is in “use in commerce” on services
when “used or displayed in the sale or advertising of
services and the services are rendered in commerce, or the
services are rendered in more than one State or in the
United States and a foreign country and the person rendering
the services is engaged in commerce in connection with the
services.”
In support of its motion for summary judgment,
petitioner relied upon its unanswered requests for
admissions. As respondent did not timely file its responses
Cancellation No. 92044201
4
to petitioner’s first set of requests for admissions,
petitioner asserted in its motion for summary judgment that
the admissions were deemed admitted.
By rule, any matter admitted under Fed. R. Civ. P.
36(a) is conclusively established unless the Board, upon
motion, permits withdrawal or amendment of the admission.
Because respondent did not file a formal motion to withdraw
or amend its admissions as contemplated under Fed. R. Civ.
P. 36(b), the Board may not consider the admissions
withdrawn. See American Automobile Ass’n (Inc.) v. AAA
Legal Clinic of Jefferson Crooke, P.C., 930 F.2d 117, 19
USPQ2d 1142, 1144 (5th Cir. 1991). However, to avoid
injustice to respondent in this case, and finding that
petitioner will not be prejudiced thereby, we have
considered respondent’s amended responses in making our
decision. Nevertheless, we hasten to add that whether the
admissions are deemed admitted or whether we consider the
amended responses, our decision in this case would not
change.
In considering his answers to the forty nine (49)
numbered requests, we note that respondent repeatedly admits
that it has never used its registered mark in commerce for
any of the services recited in Registration No. 2839676.
For example, in response to Request No. 5, “[a]dmit that
neither YOU nor any RELATED COMPANY has ever used YOUR MARK
Cancellation No. 92044201
5
in commerce for “[a]ir transportation,” respondent admits
that it has never used its mark for those services. In
response to Request No. 9, “[a]dmit that neither YOU nor any
RELATED COMPANY was using your mark in commerce for
“[a]irline transportation services” as of the time YOU
executed and filed the application which resulted in
Registration No. 2839676,” and Request No. 10, “[a]dmit that
YOU knew that neither YOU nor any RELATED COMPANY was using
YOUR MARK in commerce for “[a]irline transportation
services” as of the time YOU executed and filed the
application which resulted in Registration No. 2839676,”
respondent goes on to state that since it is not operating
as an airline, it “cannot operate a frequent flyer program.”
Likewise, in response to Request No. 11, “[a]dmit that
neither YOU nor any RELATED COMPANY has ever used your mark
in commerce for “[a]irline transportation services,”
respondent states that its mark “cannot be used” for those
services.
In addition, respondent’s responses to Request Nos. 12
through 20 were virtually identical. By those responses,
respondent admits that it was not and had not used its
claimed mark for “freight transportation by air,” (see
responses to Request Nos. 12, 13 and 14) “transportation of
passengers and/or goods by air” (see responses to Request
Nos. 15, 16 and 17) as well as “transportation reservation
Cancellation No. 92044201
6
services” (see responses to Request Nos. 18, 19 and 20).
Likewise, in answering other admission requests, respondent
repeatedly refers to its answer to Response No. 2, wherein
respondent states that it “cannot use the mark to engage in
domestic or foreign air scheduled transportation until a
Certificate of Public Convenience and Necessity has been
granted by the Federal Aviation Administration (FAA).”
Furthermore, according to respondent, it has yet to receive,
from the FAA, the requisite certification (see response to
Request No. 2). Thus, there is no genuine issue that
respondent failed to use the mark in commerce for any of the
services recited in its registration as of the filing date
of the application, and indeed, had not used the mark for
the identified services at the time its registration issued,
and moreover, respondent was prohibited from doing so by
law.
We realize that in its response to Request No. 1,
respondent indicates that it has used its mark for “start up
purposes such as checking accounts, office leases, business
cards, telephone numbers, travel expenses” and “appointments
with FAA officials.” Nevertheless, such “uses” constitute
preparatory activities only, and fail to demonstrate actual
use of the mark in commerce. See Lucent Information
Management, Inc. v. Lucent Technologies, Inc., 986 F. Supp.
253, 45 USPQ2d 1019 (D. Del. 1997), aff’d, 186 F.3d 311, 51
Cancellation No. 92044201
7
USPQ2d 1545 (3d Cir. 1999); Computer Food Stores Inc. v.
Corner Store Franchises, Inc., 176 USPQ 535 (TTAB 1972).
Respondent, in opposition to the motion for summary
judgment, also submitted documents that allegedly support
use of the mark in commerce. Those documents include an e-
mail from respondent, two letters addressed by respondent to
two local airports, an application addressed to the FAA for
respondent to “engage” in the air transportation of
passengers and a pre-application statement of intent.
The Board, however, notes that these documents were
drafted at least a year after respondent’s trademark
application was filed, and they do no show use of the mark
as of the filing date of respondent’s trademark application.
In addition, even if these documents were dated prior to the
trademark application filing date, as previously discussed,
they only show start up uses and fail to show actual use in
commerce. Given the record in this case, it is therefore
clear that respondent has yet to use its mark in commerce
for any of the services listed in its registration.
As a result, no genuine issue of material fact that
respondent did not use its mark in commerce for “air
transportation; air transportation featuring a frequent
flyer program; airline transportation services; freight
transportation by air; transportation of passengers and/or
goods by air; and, transportation reservation services”
Cancellation No. 92044201
8
prior to December 17, 2002, the filing dates of the
underlying application for the registration which is the
subject of this proceeding exists. In view thereof, we find
that petitioner has met its burden of demonstrating that
there are no genuine issues of material fact with respect to
respondent’s failure to use the mark in commerce, and that
petitioner is entitled to judgment as a matter of law.
Accordingly, petitioner’s motion for summary judgment
is granted, judgment is entered against respondent, the
petition to cancel is granted and Registration No. 2839676
will be cancelled in due course.2

2 On July 30, 2007, respondent filed a motion to extend the
discovery period. Respondent’s contested motion to extend was
not filed under Fed. R. Civ. P. 56(f) and respondent has never
alleged that he could not substantively respond to petitioner’s
motion for summary judgment without further information known
only to petitioner. In light of the Board’s decision to grant
petitioner’s motion for summary judgment, respondent’s motion to
extend the discovery period is moot.