Metrokane Inc.v.Houdini, Inc.

Trademark Trial and Appeal Board

Jun 30, 2009

No. 91177551 (T.T.A.B. Jun. 30, 2009)

coggins Mailed: June 30, 2009

Opposition Nos. 91177551 (parent)
91177762

Metrokane Inc.

v.

Houdini, Inc.

Before Quinn, Drost, and Mermelstein,
Administrative Trademark Judges.

By the Board:

These consolidated cases now come up on applicant's
motion (filed October 31, 2008, in Opposition No. 91177551)
for summary judgment and opposer's motion (filed December 1,
2008) for discovery sanctions.1 Before determining the motion
for summary judgment, the Board briefly considers the motion
for discovery sanctions.
Discovery Sanctions
On November 10, 2008, the Board suspended proceedings
pending disposition of applicant's motion for summary
judgment. In the suspension order, the Board stated that any
paper filed during the pendency of the motion for summary

1 The notice of appearance, filed May 13, 2009, by counsel for
opposer, is noted and entered.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition Nos. 91177551 and 91177762
2
judgment which is not relevant thereto would be given no
consideration. Opposer's later-filed motion for discovery
sanctions relates to an earlier motion to compel discovery; it
does not relate to the motion for summary judgment.
Accordingly, opposer's motion for discovery sanctions will be
given no further consideration.
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), and Sweats Fashions Inc. v.
Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed.
Cir. 1987). When the moving party's motion is supported by
evidence sufficient to indicate that there is no genuine issue
of material fact, and that the moving party is entitled to
judgment, the burden shifts to the nonmoving party to
demonstrate the existence of specific genuinely-disputed facts
that must be resolved at trial.
The nonmoving party may not rest on the mere allegations
of its pleadings and assertions of counsel, but must designate
specific portions of the record or produce additional evidence
Opposition Nos. 91177551 and 91177762
3
showing the existence of a genuine issue of material fact for
trial. In general, to establish the existence of disputed
facts requiring trial, the nonmoving party "must point to an
evidentiary conflict created on the record at least by a
counterstatement of facts set forth in detail in an affidavit
by a knowledgeable affiant." Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1786
(Fed. Cir. 1990), citing Barmag Barmer Maschinenfabrik AG v.
Murata Machinery, Ltd., 731 F.2d 831, 221 USPQ 561, 564 (Fed.
Cir. 1984). A dispute as to a material fact is genuine only
if a reasonable fact finder viewing the entire record could
resolve the dispute in favor of the nonmoving party. See Olde
Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d
1542, 1544 (Fed. Cir. 1992). Finally, in deciding a motion
for summary judgment, the Board must view the evidence in the
light most favorable to the nonmovant, and must draw all
reasonable inferences from underlying facts in favor of the
nonmovant. Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d
766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993).
Fraud in procuring a trademark registration occurs when
an applicant for registration knowingly makes false, material
representations of fact in connection with an application to
register. See Torres v. Cantine Torresella S.r.l., 808 F.2d
46, 1 USPQ2d 1483 (Fed. Cir. 1986). A party making a fraud
claim is under a heavy burden because fraud must be shown by
Opposition Nos. 91177551 and 91177762
4
clear and convincing evidence, leaving nothing to speculation,
conjecture, or surmise. Any doubt must be resolved against
the party making the claim. Zanella Ltd. v. Nordstrom Inc.,
90 USPQ2d 1758, 1760 (TTAB 2008), citing Smith International,
Inc. v. Olin Corp., 209 USPQ 1033 (TTAB 1981).
Applicant Houdini, Inc. seeks to register the mark
HOUDINI, in standard character form, based on two applications
filed June 21, 2005, for the following goods: "gift baskets
and gift packages containing household items, beverages and/or
food items, namely cheese, edible oils, dried fruit, fruit-
based spreads, processed fruits, nuts and vegetables, and
processed meat and fish,"2 in Class 29; and "gift baskets and
gift packages containing food items, namely crackers,
breadsticks, cookies, candy, pasta, rice, mustard, vinegar,
spices and coffee,"3 in Class 30.
In the notices of opposition for these consolidated
proceedings, opposer alleges that applicant was not using the
applied-for mark on the specified goods when it filed the
involved applications, and that applicant fraudulently signed

2 Application Serial No. 78655505, based on use in commerce under
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
Applicant claims November 20, 1985 as the date of first use of
the mark, and September 24, 1992 as the date of first use of the
mark in commerce.

3 Application Serial No. 78655501, based on use in commerce under
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
Applicant claims November 20, 1985 as the date of first use of
the mark, and October 22, 1991 as the date of first use of the
mark in commerce.
Opposition Nos. 91177551 and 91177762
5
a declaration attesting to use of the mark in commerce in
connection with all of the goods in the applications.
Statements regarding the use of the mark on goods and
services are material to issuance of a registration. See
Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77
USPQ2d 1917 (TTAB 2006) (fraud found based on
misrepresentation regarding use of the mark on most of the
goods identified in the filed applications); First
International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628
(TTAB 1988) (fraud found in applicant's filing of application
with verified statement that the mark was in use on a range of
personal care products when applicant knew it was in use only
on shampoo and hair setting lotion).
As evidence in support of its motion for summary judgment
applicant submitted the declaration of its chief financial
officer, Daniel M. Maguire, through which applicant makes of
record (a) labels used by applicant on or before the June 21,
2005, filing date of the involved applications, (b) cost
sheets identifying items used in particular gift baskets or
gift packages, and (c) invoices and related shipping documents
for baskets sold by applicant on or before the June 21, 2005,
filing date of the involved applications. By way of the
declaration, applicant explains that it does not normally keep
labels after completing sales of specific baskets, and
therefore applicant "has only a limited number of actual
Opposition Nos. 91177551 and 91177762
6
labels that date back to prior to the June 21, 2005, filing
date of the applications." (Maguire Dec. para. 10.)
Applicant further explains that its labels typically do not
list every item in the gift basket with which the label is
used, but instead usually list the less durable (perishable)
items (Maguire Dec. para. 11), and that each basket applicant
creates is supported by a cost sheet which identifies each of
the specific items that is used in assembling a particular
gift basket (Maguire Dec. para. 12).
Applicant contends that its labels, cost sheets, and
invoices show that applicant had, in fact, used its mark on
all of the goods in the identifications on the date on which
the declarations were signed and the applications were filed.
In response to the motion, opposer alleges that
applicant's label evidence does not show use of the mark for
dried fruit, fruit-based spreads, or processed fruits listed
in the identification of goods for application Serial No.
78655505, or for breadsticks, rice, vinegar, spices, or coffee
listed in the identification of goods for application Serial
No. 78655501. Opposer further claims that applicant's
evidence of cost sheets and invoices are not sufficient to
show use of applicant's mark as a trademark, and that, at a
minimum, such evidence presents a question of material fact
that cannot be decided on summary judgment.
Opposition Nos. 91177551 and 91177762
7
In reply, applicant argues that the labels, cost sheets,
and invoices are of the type which the Board previously found
sufficient to support applicant's priority and likelihood of
confusion claim against opposer in two other Board
proceedings.4 Applicant further argues that it did not commit
fraud on the Office when it signed the declarations attesting
to use of the mark in commerce in connection with all of the
goods in the applications because it was, in fact, using the
mark on all of the goods.
Our review of applicant's evidence shows that applicant
has not committed fraud on the Office. There is no genuine
issue of material fact that applicant was using its mark on
each of the goods in the identifications prior to June 21,
2005, the date on which the declarations were signed and the
applications were filed.
The goods identified in application Serial No. 78655505
are "gift baskets and gift packages containing household
items, beverages and/or food items, namely cheese, edible
oils, dried fruit, fruit-based spreads, processed fruits, nuts
and vegetables, and processed meat and fish." By way of its

4 Cancellation No. 92044725 in which applicant successfully
petitioned for cancellation of opposer's Registration No. 2687530
for the mark HOUDINI for corkscrews based on the ground of
priority and likelihood of confusion, and Opposition No. 91176231
in which applicant successfully opposed registration of opposer's
application Serial No. 78552461 for the mark HOUDINI for various
wine-related goods in view of the decision entered in
Cancellation No. 92044725.

Opposition Nos. 91177551 and 91177762
8
label evidence, at a minimum, applicant has shown that it was
using its mark on baskets containing household items,
beverages, cheese, edible oil, nuts, vegetables, processed
meats, and fish. See Maguire declaration Exhibit A, page
H00153 for the "Springtime Spirit Spa Basket" label listing
household items such as bath robe, bath sponge, and satin
pillow, "2 Bottle Picnic Basket" label listing wine, cheese,
and nuts, "Continental Collection" label listing asparagus and
smoked salmon, and the "Antinori 'Santa Cristina'" label
listing olive oil.
In the Maguire declaration, applicant has explained that
it cooperatively develops gift baskets with its clients who
desire varying combinations of goods in each basket, that it
prepares an internal and confidential "cost sheet" which
identifies each of the specific items that is used in
assembling a particular basket, and that it uses invoices and
shipping documents to bill and send the baskets to its
clients.
Applicant has further shown that it was using the mark on
baskets including those specific Class 29 goods that opposer
claims applicant was not; that is, on dried fruit, fruit-based
spreads, and processed fruits listed in the identification of
goods for application Serial No. 78655505. Applicant has
provided cost sheets revealing that these goods were, in fact,
included in baskets sold prior to the filing date of the
Opposition Nos. 91177551 and 91177762
9
application. At a minimum, applicant has labeled as H000245 a
cost sheet which shows dried and processed fruit (e.g.,
raisins and dried fruit mix), and H000452 a cost sheet which
shows fruit-based spreads (e.g., preserves) in Exhibit B of
the Maguire declaration. When viewed in conjunction with Mr.
Maguire's declaration as to the relationship between the cost
sheets and the final gift baskets, these cost sheets are
sufficient to show that there is no genuine issue of material
fact that the items listed thereon were being used by
applicant at least as early as the filing date of the
applications. Contrary to opposer's argument, applicant's
cost sheets need not show use of the HOUDINI mark as a
trademark such that they could support registration as
acceptable specimens of use. Applicant did not submit them
for that purpose. Applicant has established that it included
labels with its gift baskets and the cost sheets prove what
went into the baskets. By this evidence, applicant has
satisfactorily shown that it was using its mark in commerce on
the Class 29 goods as identified in application Serial No.
78655505.
The goods identified in application Serial No. 78655501
are "gift baskets and gift packages containing food items,
namely crackers, breadsticks, cookies, candy, pasta, rice,
mustard, vinegar, spices and coffee." By way of its label
evidence, at a minimum, applicant has shown that it was using
Opposition Nos. 91177551 and 91177762
10
its mark on baskets containing crackers, cookies, candy,
pasta, and mustard. See Maguire declaration Exhibit A, page
H00153 for the "Continental Collection" label listing crackers
and cookies, and "Celebration" label listing candy and
mustard, and page H001054 for the "Italian Bowl Gift Set"
label listing pasta.
Turning now to the breadsticks, rice, vinegar, spices,
and coffee goods listed by opposer in its brief in opposition
to the motion for summary judgment on which opposer claims
that applicant was not using the mark at the time the
application Serial No. 78655501 was filed, we note that, at a
minimum, applicant has labeled as H000993 a cost sheet which
shows breadsticks (e.g., traditional breadsticks), H001063 a
cost sheet which shows rice (e.g., risotto), H000245 a cost
sheet which shows vinegar (e.g., balsamic vinegar) and spices
(e.g., mulling spices), and H000499 a cost sheet which shows
coffee (e.g., hazelnut flavored coffee), in Exhibit B of the
Maguire declaration. As we explained earlier, when viewed in
conjunction with Mr. Maguire's declaration as to the
relationship between the cost sheets and the final gift
baskets, these cost sheets are sufficient to show that the
items listed thereon were being used by applicant at least as
early as the filing date of the applications.
To show the absence of a genuine issue of material fact
as to fraud, applicant does not need to produce an actual
Opposition Nos. 91177551 and 91177762
11
label with the mark which lists every single claimed good at
least once. Opposer argues that the cost sheets would "not be
acceptable [as] specimens of use"; however, there is no
requirement that an applicant submit a specimen for every good
or service identified in its application in order to rebut an
allegation of fraud. Indeed, opposer has not provided any
authority to the contrary. An applicant may submit other
evidence to show that it was using its mark on all the goods
identified in its application at least as early as the filing
date of its application. Cf. Garri Publication Associates
Inc. v. Dabora Inc., 10 USPQ2d 1694 (TTAB 1988) (affidavit
with supporting exhibits sufficient to establish on summary
judgment against a ground of fraud that defendant in
cancellation proceeding had made use of its mark in interstate
commerce prior to the filing of its application). We find
from the cost sheets that each good listed in the
identifications of the applications was used prior to the
filing date of the application. The cost sheets, which were
not submitted as specimens of use, are sufficient to show that
applicant had used each of the claimed goods in at least one
gift basket prior to the filing date of the application.
Applicant need not submit an actual label showing every good
at least once because applicant has sufficiently shown the
relationship between its labels, as specimens of use, and its
cost sheets which list the items contained in a gift basket.
Opposition Nos. 91177551 and 91177762
12
Applicant, as the moving party, has supported its motion
with declaration, label, and cost sheet evidence which is
sufficient to indicate that there is no genuine issue of
material fact, and that applicant is entitled to judgment in
its favor. By doing so, applicant has shifted the burden to
opposer to point to specific, disputed facts by the use of
additional evidence or specific portions of the record that
show the existence of material facts that must be resolved at
trial. However, opposer has neither pointed to an evidentiary
conflict created on the record nor provided a counterstatement
of facts set forth in the declaration of its counsel,
Nathaniel Buchek. See Octocom Systems, 16 USPQ2d at 1786.
On the entire record before us, a reasonable fact finder
could not resolve the dispute as to applicant's alleged fraud
in favor of opposer. Even viewing the evidence in a light
most favorable to opposer, and drawing all reasonable
inferences in favor of opposer, the record shows no genuine
issue concerning applicant's material representations of fact
that it was using the mark on all of the goods listed in
connection with the involved applications as of the filing
date of those applications.
Accordingly, applicant's motion for summary judgment is
granted, and the notices of opposition are dismissed with
prejudice.

Opposition Nos. 91177551 and 91177762
13

NEWS FROM THE TTAB:
The USPTO published a notice of final rulemaking in the
Federal Register on August 1, 2007, at 72 F.R. 42242. By
this notice, various rules governing Trademark Trial and
Appeal Board inter partes proceedings are amended. Certain
amendments have an effective date of August 31, 2007, while
most have an effective date of November 1, 2007. For
further information, the parties are referred to a reprint
of the final rule and a chart summarizing the affected
rules, their changes, and effective dates, both viewable on
the USPTO website via these web addresses:
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_FinalR
uleChart.pdf

By one rule change effective August 31, 2007, the Board's
standard protective order is made applicable to all TTAB
inter partes cases, whether already pending or commenced on
or after that date. However, as explained in the final rule
and chart, this change will not affect any case in which any
protective order has already been approved or imposed by the
Board. Further, as explained in the final rule, parties are
free to agree to a substitute protective order or to
supplement or amend the standard order even after August 31,
2007, subject to Board approval. The standard protective
order can be viewed using the following web address:
http://www.uspto.gov/web/offices/dcom/ttab/tbmp/stndagmnt.htm