Roel Zylstrav.Kathy L. Norman

Trademark Trial and Appeal Board

Aug 30, 2007

No. 91163509 (T.T.A.B. Aug. 30, 2007)

DUNN
Mailed: August 30, 2007

Opposition No. 91163509

Roel Zylstra

v.

Kathy L. Norman

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

By the Board:

This case comes before the Board on opposer’s motion
for summary judgment, filed September 1, 2006. The motion
has been fully briefed, and the delay in acting upon this
matter is regretted.
On March 11, 2003, applicant Kathy Norman, proceeding
pro se, filed an application to register the mark

for “retail shops featuring cut flowers, live flowers, dried
flowers, silk flowers, live plants, floral wreaths, gifts,
and accessories” (application Serial No. 78224409). The
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT
CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Opposition No. 91163509
2
application asserted a dual basis under Trademark Act
Sections 1(a) and (b), and then was amended to assert
Trademark Act Section 1(b) as the sole basis for the
application.1
Roel Zylstra is the owner of application Serial No.
78378719 for the mark

for “cut flower bouquets, living plants, and gift baskets
comprising living plants and flowers,” which alleges
February 2004 as the date of first use and first use in
commerce.2 In his notice of opposition filed December 16,
2004, opposer claims that applicant’s mark so resembles
opposer’s previously used mark as to be likely to cause
confusion. On January 14, 2005, applicant filed an answer
which essentially admits likelihood of confusion but denies
that opposer has priority.

1 Neither deletion of one of multiple bases for an application,
nor substitution of one basis for another, affects the filing
date of the amended application. See Trademark Rule
2.35(b)(3)(“When an applicant substitutes one basis for another,
the Office will presume that there was a continuing valid basis,
unless there is contradictory evidence in the record, and the
application will retain the original filing date, including a
priority filing date under section 44(d), if appropriate.”).

2 Application Serial No. 78378719 is suspended pending the
disposition of the opposed application, which was cited as a
potential bar to registration under Trademark Act Section 2(d).
Opposition No. 91163509
3
On September 1, 2006, opposer filed a motion for
summary judgment asserting that there are no genuine issues
of material fact inasmuch as applicant’s answer admits
likelihood of confusion, applicant’s discovery responses
demonstrate that applicant has not yet used the mark, and
opposer’s declaration stating that opposer has continuously
used its mark in commerce since February 2004 establishes
opposer’s priority. In response, applicant asserts that
priority lies with applicant, because the constructive use
provision of the Trademark Act gives applicant a superior
right over anyone adopting a mark after the applicant’s
filing date.
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). Opposer, as the
movant for summary judgment, has the initial burden of
demonstrating the absence of any genuine issue of material
fact, and that it is entitled to judgment as a matter of
law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1987);
Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d
1560, 4 USPQ2d 1793 (Fed. Cir. 1987). Furthermore, if the
Board concludes that there is no genuine issue of material
fact, but that the nonmoving party, rather than the moving
party, is entitled to judgment as a matter of law, the Board
Opposition No. 91163509
4
may enter summary judgment sua sponte in favor of the
nonmoving party. See Medinol Ltd. v. Neuro Vasx Inc., 67
USPQ2d 1205 (TTAB 2003); The Clorox Co. v. Chemical Bank, 40
USPQ2d 1098 (TTAB 1996).
Shortly after the Trademark Act was amended to include
intent-to-use provisions, the Board addressed the issue of
priority in an opposition against an application based on
the then-new Trademark Act Section 1(b). See Zirco Corp. v.
American Telephone and Telegraph Co., 21 USPQ2d 1542 (TTAB
1991). After discussing the purposes of the intent-to-use
legislation and the importance of the constructive use date
within that scheme, the Board stated:
With these being the aims of the
constructive use provision, there can be
no doubt but that the right to rely upon
the constructive use date comes into
existence with the filing of the intent-
to-use application and that an intent-
to-use applicant can rely upon this date
in an opposition brought by a third
party asserting common law rights.

Id. at 1544. See also Larami Corp. v. Talk to Me Programs
Inc., 36 USPQ2d 1840, 1845 (TTAB 1995)(distinguishes
application of Section 7(c) in Board proceedings from
district court actions). Therefore, for the purposes of our
decision here, applicant is entitled to rely on its filing
date of March 11, 2003 in the determination of priority.3

3 Trademark Act Section 7(c) provides that “Contingent on the
registration of a mark on the principal register provided by this
Opposition No. 91163509
5
Opposer’s reply brief acknowledges that, for the
purposes of determining priority, the Board uses the
constructive use date of the intent-to-use applicant, but
argues “that an exception should be made in this case due to
applicant’s fraudulent filing of the application and her bad
faith delay tactics in commencing use” of her mark. These
arguments are not persuasive. Since fraud has not been
pleaded, it may not be the basis for entry of summary
judgment. Commodore Electronics Ltd. v. CBM Kabushiki
Kaisha, 26 USPQ2d 1503, 1505 (TTAB 1993).4 We find no bad
faith delay inasmuch as an intent-to-use applicant has up to
three years from issuance of a notice of allowance to begin
use of the mark, a period which, due to the pendency of this
opposition, has not begun. See Trademark Act Section 1(d).

Act, the filing of the application to register such mark shall
constitute constructive use of the mark, conferring a right of
priority, nationwide in effect, on or in connection with the
goods or services specified in the registration against any other
person …”. Accordingly, entry of final judgment in favor of an
intent-to-use applicant is deferred until the mark is registered.
Zirco Corp. v. American Telephone and Telegraph Co., at 1544.

4 Opposer’s assertion of fraud alleges that, because applicant’s
earlier application for a similar mark and services was refused
on the basis of a prior registration, applicant knew of a senior
user at the time the instant application was filed. Inasmuch as
the cited registration was cancelled for failure to file a
Section 8 affidavit six months after the opposed application was
filed, any fraud claim would have to allege facts showing that
the registrant’s rights were clearly established at the time the
opposed application was filed. See L. & J.G. Stickley, Inc. v.
Ronald C. Cosser, 81 USPQ2d 1956, 1959 (TTAB 2007)(“The record
does not support that respondent committed fraud by failing to
acknowledge petitioner's use … The record does not indicate that
petitioner's rights were clearly established and that they should
have been disclosed”).
Opposition No. 91163509
6
To prevail on his claim of priority of use and
likelihood of confusion, opposer must prove that he has a
proprietary interest in his mark prior to the filing date of
applicant's intent-to-use application. Section 2(d) of the
Lanham Act, 15 U.S.C. §1057(d); Aktieselskabet af 21.
November 2001 v. Fame Jeans Inc, 77 USPQ2d 1861, 1864 (TTAB
2006); Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d
1711, 1714 (TTAB 1993); Zirco Corp. v. American Telephone
and Telegraph Co., supra at 1544. As noted above, opposer’s
motion for summary judgment was accompanied by the
declaration of Roel Zystra averring that he has continuously
used his mark in commerce since February 2004. We find no
genuine issue that the earliest date upon which opposer may
rely for purposes of priority is subsequent to the March 11,
2003 filing date of applicant's challenged application. We
find therefore as a matter of law that opposer cannot
establish priority of use.
Summary judgment in favor of applicant dismissing the
opposition is entered, subject to applicant’s establishment
of constructive use under Trademark Act Section 7(c). When
applicant’s mark has been registered or the application
becomes abandoned, applicant should inform the Board so that
the appropriate action may be taken to terminate this
proceeding.
***