TBC Brands, LLCv.Harold R. Sullivan

Trademark Trial and Appeal Board

Mar 31, 2008

No. 91167613 (T.T.A.B. Mar. 31, 2008)

Brown/Wolfson
Mailed: March 31, 2008

Opposition No. 91167613
TBC BRANDS, LLC
v.
Sullivan, Harold R.

Before Seeherman, Grendel and Kuhlke, Administrative
Trademark Judges.

By the Board:

Applicant seeks registration of the mark ORIGINAL
BULLET GTX for “land motor vehicles, namely, cars” in
International Class 12, alleging a bona fide intent to use
the mark in commerce.1 On November 18, 2005, opposer filed
a notice of opposition against registration of the mark,
wherein opposer pleaded ownership of various marks including
Registration No. 29723092 for MIRADA SPORTS GTX for “tires”
in International Class 11 and alleged that “registration
and/or use of the ORIGINAL BULLET GTX mark, as set forth in
the opposed application, is likely to cause confusion,
mistake, and/or to deceive as to origin, sponsorship and/or
association…” with opposer’s marks under Section 2(d) of the
Trademark Act (see notice of opposition at paragraph #9).

1 Application No. 78464093, filed August 9, 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
Opposition No. 91167613
2
Opposer did not assert any other grounds in the notice of
opposition. Applicant denied the salient allegations of the
notice of opposition and did not assert any affirmative
defenses.
On October 27, 2006, opposer filed a motion to compel
applicant to respond to opposer’s interrogatories and
document production requests and on January 4, 2007, the
Board granted the motion as conceded, ordering applicant to
provide responses to the discovery requests. Applicant
provided responses to those discovery requests. In light of
those responses, opposer filed a motion for summary judgment
on February 27, 2007, on the grounds that applicant lacked a
bona fide intention to use the mark in commerce and that
applicant had committed fraud in the filing of the
application.
As part of his response to the motion for summary
judgment, applicant asserted that applicant’s alleged lack
of a bona fide intent to use the mark and fraud were not
pleaded in the notice of opposition. With its reply brief,
opposer submitted an amended notice of opposition that
asserted applicant’s lack of a bona fide intention to use
the mark in commerce and fraud as additional grounds for
opposition. Since a party generally may not obtain summary
judgment upon an issue that has not been pleaded, we must

Opposition No. 91167613
3
first consider whether to allow opposer leave to amend the
notice of opposition. See Fed. R. Civ. P. 56(a) and 56(b);
S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1297
(TTAB 1997).
Under Fed. R. Civ. P. 15(a), the Board liberally grants
leave to amend pleadings at any stage of the proceeding when
justice so requires, unless entry of the proposed amendment
would violate settled law or be prejudicial to the rights of
the adverse party. See Polaris Industries v DC Comics, 59
USPQ2d 1789 (TTAB 2001). Timing plays a large role in the
Board’s determination of whether an adverse party would be
prejudiced by allowance of an amendment and as a result,
long, unexplained delays may render the amendment untimely.
See M. Aron Corporation v. Remington Products, Inc., 222
USPQ 93, 96 (TTAB 1984).
Here, the Board finds that opposer was not fully aware
of all the facts it needed in order to include such claims
at the time the notice of opposition was filed and it did
not become fully aware of them until after the Board, on
January 4, 2007, ordered applicant to provide complete
discovery responses to opposer’s interrogatories and
document production requests. Applicant’s responses were
not provided to opposer until on or after January 31, 2007,
and since opposer’s amended notice of opposition was filed

2 Registration No. 2972309, issued July 19, 2005.
Opposition No. 91167613
4
less than four months later on April 16, 2007, it was
timely. Moreover, while applicant objected to the motion
for summary judgment in his responsive brief on the ground
that it was based on two unpleaded issues, he also argued
against the motion for summary judgment on the merits.
Finally, we note that applicant never objected to opposer’s
motion to amend its pleading that was submitted along with
opposer’s reply brief.
In view thereof and in the interest of justice and
judicial economy, the Board grants the motion to amend, and
will consider the amended pleading as the operative
pleading. In view thereof, opposer’s motion for summary
judgment is now on pleaded grounds, and we will rule on the
merits of opposer’s motion for summary judgment at this
time. In deciding the motion for summary judgment, the
Board assumes that applicant maintains all denials in his
answer to the notice of opposition and that applicant denies
opposer’s newly asserted claims as alleged in paragraphs 9-
15 in the amended notice of opposition.
For the following reasons, we grant opposer’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
Opposition No. 91167613
5
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).
As a preliminary matter, we find that there is no
genuine issue of material fact as to opposer’s standing. In
his answer to the notice of opposition, applicant has
admitted that opposer “has a live trademark” for the mark
“Mirada Sport GTX” (see answer at paragraph #4). In view
thereof, there is no genuine issue that opposer has a real
interest in this proceeding, and that opposer has
established its standing as a matter of law. See, e.g.,
Trademark Act Section 14(a), 15 U.S.C. Section 1064(a);
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Section 1(b) of the Trademark Act, 15 U.S.C.
§1051(b)(1), requires that an applicant filing an
application based on its bona fide intent to use the mark in
commerce verify that it has a “bona fide intention” to use
the mark in commerce on the goods or services identified in
Opposition No. 91167613
6
the application. If an applicant lacks a bona fide intent
to use its mark in commerce on the goods or services
identified in the application at the time of its filing, the
application is void. See Trademark Trial and Appeal Board
Manual of Procedure (“TBMP”) §309.03(c)(6) (2d ed. rev.
2004) and cases cited therein.
Here, opposer alleges that applicant lacked a bona fide
intention to use the mark in commerce on the goods
identified in the application, i.e., “land vehicles, namely,
cars,” and that applicant failed to produce any objective
evidence to support his claim of a bona fide intention to
use the mark on such goods. In support of its motion for
summary judgment, opposer relies upon applicant’s responses
to opposer’s requests for admissions and document production
requests as well as applicant’s answers to interrogatories
to show that there is no genuine issue that applicant did
not have an intention to use his mark on cars.
In particular, opposer points out that in his answers
to interrogatory nos. 1(a) and 26, applicant stated that he
“only wishes to use the [m]ark to describe his one
automobile, which is the famous ‘Silver Bullet’ which is the
original 1967 Plymouth GTX automobile owned by famous street
racing legend James Addison (now deceased) in the Detroit
Area.” Responding to interrogatory nos. 5 and 6, applicant
goes on to state that the mark ORIGINAL BULLET GTX “pertains
Opposition No. 91167613
7
to only one automobile that applicant does not intend to
sell,” and in response to document production request no. 5,
applicant declares that there are “no products/services sold
or planned to be offered or sold under Applicant’s Mark.”
Moreover, in answers to requests for admission nos. 84, 85
and 86, applicant admitted that he does not manufacture cars
and that he has no intention of manufacturing cars.
In an attempt to clarify the “exact goods and services
that he intends to supply” under the proposed mark and in
opposition to the motion, applicant submitted an affidavit
with his responsive brief. Rather than supporting his bona
fide intention to use the mark in commerce for the goods
specified in the application, however, applicant’s affidavit
confirms the fact that he is not providing any goods as
contemplated in the application and that he has no bona fide
intention to either sell, produce or manufacture any
automobiles that bear the ORIGINAL BULLET GTX mark.
Indeed, in paragraph nos. 3 and 6 of his affidavit,
applicant states the following:
This vehicle can best be described as an “exhibit
car” whereby I am compensated in direct monetary
terms and/or by various forms of compensation to
display this vehicle at numerous automotive events
that take place throughout the entire United
States where I am requested to do so by event
sponsors and promoters of said events, and I am
also requested to feature this vehicle in numerous
magazines (18 in total), numerous books, numerous
newspapers and numerous television programs. (See
affidavit at paragraph no. 3)

Opposition No. 91167613
8
It is the act of providing and displaying the
famous Silver Bullet at various automotive events,
etc. and the car’s world wide reputation and good
will (which is a draws [sic] thousands of people
to said events) which represents both the goods
and services that I am selling and in commerce
which I seek a registered mark to prevent clone
cars and/or imposters from calling their vehicles
by the same or similar name which would cause
tremendous confusion within the public. (See
affidavit at paragraph No. 6).

Based on the foregoing, we find that there is no
genuine issue that applicant uses the mark ORIGNAL BULLET
GTX to identify only a single automobile, which he displays
at various events, and that he has no intention of selling
cars under the mark.
Under Section 45 of the Trademark Act, however, "use in
commerce" for goods is defined as "the bona fide use of a
mark in the ordinary course of trade, and not made merely to
reserve a right in a mark." Section 45 goes on to state
that a mark shall be deemed to be in use in commerce on
goods when it is placed on the goods, or their containers or
displays associated therewith and the actual goods are "sold
or transported in commerce." Thus, the act of “providing
and displaying the famous Silver Bullet itself at various
events” by applicant is, at best, a service and fails to
constitute a tangible good; it is not use of the mark to
identify the source of goods, and does not constitute
trademark use of the type “common to the industry in
question” for the goods identified in the application as
Opposition No. 91167613
9
provided by law. See Paramount Pictures Corporation V.
James E. White d/b/a R.I. Productions, 31 USPQ2d 1768, 1774
(TTAB 1994).
Given applicant’s own words, we find that there is no
genuine issue that applicant has no intention to use his
mark on “cars” in a trademark manner, and we further find
that there is no genuine issue that applicant lacked a bona
fide intent to use his mark on those goods as of the filing
date of his application. In view thereof, we find that
opposer is entitled to judgment as a matter of law on this
ground.3
Accordingly, opposer’s motion for summary judgment is
granted, the opposition is sustained, and registration to
applicant is refused.
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

3 In view of our finding that opposer is entitled to summary
judgment on this ground, we need not reach the fraud claim as
articulated in opposer’s motion for summary judgment as well as
in its amended notice of opposition, or opposer’s likelihood of
confusion claim pleaded in the notice of opposition.
Opposition No. 91167613
10
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