Lane Ltd.v.Richard D. Merhar

Trademark Trial and Appeal Board

Jun 26, 2001

No. 91119030 (T.T.A.B. Jun. 26, 2001)

06/26/01

EAD
Opposition No. 119,030

Lane Limited

v.

Richard D. Merhar

Before Simms, Wendel, and Holtzman, Administrative
Trademark Judges.

By the Board:

On August 11, 2000, Lane Limited filed a notice of
opposition to Application Serial No. 75/75/644,671 on the
ground that applicant’s mark ROLL YOUR OWN is merely
descriptive of applicant’s goods, “tobacco”.1 The Board
instituted this proceeding on August 19, 2000. On
February 21, 2001, opposer filed a motion seeking summary
judgment on the descriptiveness of the mark as applied to

1 Application Serial No. 75/75/644,671, filed on the basis of
applicant’s allegation of a bona fide intent to use the mark in
commerce, was published in the Official Gazette on April 11,
2000 with goods listed as “tobacco, cigarette papers and
cigarettes”. By examiner’s amendment dated May 24, 2000, the
goods were amended to “tobacco”.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 119,030
2
the goods. On March 30, 20012, applicant (pro se) filed
its response opposing the motion for summary judgment.
In this proceeding, opposer has challenged
applicant's right to register ROLL YOUR OWN as a
trademark for tobacco. In the opposition, opposer
asserts that opposer is in the business of manufacturing
and selling smoker’s articles, including tobacco
products; that opposer sells goods known as “roll your
own tobacco”, and “roll your own cigarette papers”, and
that the cigarettes made from such tobacco and papers are
known as “roll your own cigarettes”; that applicant’s
asserted mark ROLL YOUR OWN is merely descriptive of
“tobacco, cigarette papers, and cigarettes”; and that
registration of applicant’s asserted mark ROLL YOUR OWN
would be inconsistent with opposer’s right to describe
its goods.
In his answer, applicant denied most of the
allegations of the opposition. In response to opposer’s
allegation that registration of the term ROLL YOUR OWN
would be inconsistent with opposer’s right to describe
its goods, applicant’s answer states “that he will not
seek to assert his trademark rights against descriptive

2 Applicant’s response states “Note, this is being mailed within
the twenty day extention agreed to by Mr. Robins”. Accordingly,
Opposition No. 119,030
3
uses of the terms ‘roll your own tobacco’, ‘roll your own
cigarette papers’, and/or ‘roll your own cigarettes’”.
Turning to opposer’s motion for summary judgment, we
find that there is no genuine issue of material fact as
to whether opposer has standing to bring this proceeding.
To show standing, it is necessary for opposer to prove
that it is engaged in the sale of goods of which the
applied-for mark is allegedly descriptive. Plyboo America
Inc. v. Smith & Fong Co., 51 USPQ2d 1633 (TTAB 1999).
Here, the record establishes that opposer uses the term
“roll your own” in connection with its manufacture and
sale of tobacco products, and thus has standing to
oppose.
Opposer next argues that there is no genuine issue
of material fact concerning the mere descriptiveness of
the term ROLL YOUR OWN when used on tobacco. In support
of its motion, opposer submitted two affidavits with
attached exhibits. The affidavit of Robert Pless, Vice
President of opposer, states that opposer’s tobacco is
used by consumers in rolling their cigarettes; that
tobacco and cigarette papers are generally known as “roll
your own tobacco” and “roll your own cigarette papers”,

we accept applicant’s response to the motion for summary
judgment as timely.
Opposition No. 119,030
4
and that the cigarettes made from such tobacco and papers
are generally known as “roll your own cigarettes”; that
in the trade this category is known as the “roll your
own” or “roll-your-own” category; and that for many years
opposer’s price list has included “roll your own”
categories. Opposer's current price list, an exhibit to
the affidavit, shows “roll your own domestic brands”,
“roll your own imported brands”, and “roll your own
accessories” categories.
The affidavit of Albert Robin, attorney for opposer,
states that the official publication of the Retail
Tobacco Dealers Association, Tobaccionist, has several
examples showing “roll your own” as an industry term
indicating a category of tobacco products, and that the
Patent and Trademark Office has issued at least two
registrations in which the term “roll your own” appears
in the identification of goods. Pages from the
Tobaccionist, exhibits to the affidavit, show references
to “roll your own” in conjunction with an editorial on
tobacco markets, as a tobacco sales category in a chart,
as a tobacco revenue category listed in an article, as a
goods listing used by a tobacco trade show exhibitor, and
as a category of goods advertised by five of opposer’s
competitors. Of the two printouts from the Patent and
Opposition No. 119,030
5
Trademark Office TARR database attached to the affidavit,
one shows that Registration 2,006,488 identifies the
goods as, inter alia, “roll-your-own tobacco” and one
shows that application Serial No. 75/686,820 identifies
the goods as, inter alia, “roll-your-own cigarette kits”.
The burden is on the party moving for summary
judgment to show the absence of any genuine issue of
material fact,
and that it is entitled to judgment as a matter of law.
See Fed. R. Civ. P. 56(c); and Celotex Corp. v. Catrett,
477
U.S. 317, 106 S. Ct. 2548 (1986). The evidence must be
viewed in a light favorable to the non-movant, and all
justifiable inferences are to be drawn in the non-
movant’s favor. In considering the propriety of summary
judgment, the Board may not resolve issues of material
fact; it may only ascertain whether such issues are
present. See Lloyd's Food Products Inc. v. Eli's Inc.,
987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland
USA Inc. v. Great American Music Show Inc., 970 F.2d 847,
23 USPQ2d 1471 (Fed. Cir. 1992); Olde Tyme Foods Inc. v.
Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
1992).
Opposition No. 119,030
6
In inter partes proceedings before the Board, once
opposer has presented a prima facie case, applicant has
the burden of going forward (burden of production) to
rebut the prima facie case. Auburn Farms Inc. v. McKee
Foods Corp., 51 USPQ2d 1439 (TTAB 1999); Societe Des
Produits Marnier Lapostolle v. Distillerie Moccia S.R.L.,
10 USPQ2d 1241 (TTAB 1989); Continental Grain Co. v.
Strongheart Products Inc., 9 USPQ2d 1238 (TTAB 1988).
Upon careful consideration of the record, we find
that opposer has presented a prima facie case that the
term ROLL YOUR OWN is merely descriptive of tobacco and
tobacco products; that there are no genuine issues of
material fact;
and that opposer is entitled to judgment as a matter of
law. Aside from a personal attack upon counsel for
opposer,

applicant’s response to the motion for summary judgment
provides nothing to rebut opposer’s evidence.3

3 Implicit in applicant’s response to opposer’s motion for
summary judgment is applicant’s belief that opposer and the
Board are somehow required to adopt the examining attorney's
conclusion that applicant is entitled to registration. To the
contrary, the Trademark Act clearly provides that the
registrability of a mark approved by an examining attorney and
published by the Office is subject to challenge in an opposition
proceeding brought before the Board. See Trademark Act §13. In
Opposition No. 119,030
7
Accordingly, opposer’s motion for summary judgment
is granted, and judgment is entered against applicant.
The opposition is accordingly sustained, and registration
to applicant is refused.

an inter partes opposition proceeding, where the Board usually
has before it more evidence than the examining attorney had, the
Board necessarily has the authority to reach whatever decision
is supported by the record. McDonald's Corp. v. McClain, 37
USPQ2d 1274 (TTAB 1995).