Westrex Corporationv.New Sensor Corporation

Trademark Trial and Appeal Board

May 11, 2007

No. 91168152 (T.T.A.B. May. 11, 2007)

Lykos Mailed: May 11, 2007

Opposition Nos. 91168152
91170940

Westrex Corporation

v.

New Sensor Corporation

(as consolidated)

Before Quinn, Bucher and Taylor, Administrative Trademark
Judges.

By the Board:

This case now comes up for consideration of applicant’s
motion (filed December 1, 2006) for summary judgment. The
motion is fully briefed.1

1 Applicant has submitted a reply brief which the Board has
considered because it clarifies the issues herein. Consideration
of a reply brief is discretionary on the part of the Board. See
Trademark Rule 2.127(a).

However, insofar as the Board does not consider sur-replies,
opposer’s “Notice of Subsequently Decided Controlling Authority”
(filed February 8, 2007) and applicant’s response thereto (filed
February 21, 2007) have been given no consideration. See id. In
any event, the Board is aware of the case law referenced by the
parties in their communications, including First Niagara
Insurance Brokers, Inc. v. First Niagara Financial Group, Inc.,
476 F.3d 867, 81 USPQ2d 1375 (Fed. Cir. 2007).

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION
IS PRECEDENT
OF THE TTAB
I. Procedural Background
On November 9, 2004, applicant applied to register the
mark GENALEX GOLD LION for “electron tubes, also known as
vacuum tubes,” based on a bona fide intent to use the mark
in commerce.2 On June 28, 2005, applicant filed an
application to register the mark GOLD LION, for the same
goods, alleging June 24, 2005 as the date of first use
anywhere and in commerce.3 Opposer has opposed registration
of both marks on the grounds that each mark so resembles
opposer's previously used GOLD LION mark that each is likely
to cause confusion, mistake, or deceive prospective
consumers under Section 2(d) of the Lanham Act. In its
notices of opposition, opposer alleges that it and its
predecessor in interest have extensively and continuously
used the mark GOLD LION in connection with electron and
vacuum tubes since prior to the filing date of applicant’s
intent-to-use application to register the mark GENALEX GOLD
LION and applicant’s alleged date of first use of the mark
GOLD LION.
Applicant, in its answer to both notices of opposition,
denied the salient allegations and made additional
assertions denominated as affirmative defenses.
On September 1, 2006, the Board consolidated the
oppositions.

2 Application Serial No. 78513996.
II. Applicant’s Motion for Summary Judgment
Applicant has moved for summary judgment on the basis
that neither opposer nor opposer’s predecessor in interest
is the prior user of the GOLD LION mark.4
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, 106 S.Ct. 2548
(1986). The nonmoving party must be given the benefit of
all reasonable doubt as to whether genuine issues of
material fact exist, and the evidentiary record on summary
judgment, and all 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.

3 Application Serial No. 78660006.

4 The Board notes that applicant included with its motion, as
exhibits, papers that had previously been filed (i.e., the
parties’ protective order for governing the disclosure of
confidential information). Applicant is reminded that these
papers, by their very nature, already form part of the proceeding
file. Accordingly, applicant is requested to refrain from
attaching such papers to future filings.

1992). 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 showing the existence of a genuine issue of
material fact for trial.
As a preliminary evidentiary matter, we note that
applicant included in its reply brief a “motion” to strike
the declaration of opposer’s president, Charles Whitener, on
the ground that it contradicts statements made in his
discovery deposition. With its reply brief, applicant has
submitted excerpts from the 30(b)(6) deposition of Mr.
Whitener, purportedly contradicting his declaration.
In this case, upon careful review of the deposition
testimony and declaration, we find that Mr. Whitener’s
declaration does not contradict so much as it clarifies and
explains contradictions given in his deposition. See
Sinskey v. Pharmacia Opthalmics, Inc., 982 F.2d 494, 25
USPQ2d 1290 (Fed. Cir. 1992), cert. denied, 508 U.S. 912
(1993).
Mr. Whitener acknowledges in his declaration that he
“misspoke” during the deposition and attempts to clarify any
discrepancies and inaccuracies. Applicant’s motion to
strike the declaration of Mr. Whitener is therefore denied.
A. Analysis of the Parties’ Priority Dispute
To establish priority on a likelihood of confusion
claim brought under Trademark Act Section 2(d), a party must
prove that, vis-à-vis the other party, it owns "a mark or
trade name previously used in the United States ... and not
abandoned...." Trademark Act Section 2, 15 U.S.C. Section
1052. A party may establish its own prior proprietary
rights in a mark through ownership of a prior registration,
actual use or through use analogous to trademark use, such
as use in advertising brochures, trade publications,
catalogues, newspaper advertisements and Internet web sites
which create a public awareness of the designation as a
trademark identifying the party as a source. See Trademark
Act Sections 2(d) and 45, 15 U.S.C. Section 1052(d) and
1127; T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37
USPQ2d 1879 (Fed. Cir. 1996), vacating Pactel Teletrac v.
T.A.B. Systems, 32 USPQ2d 1668 (TTAB 1994). Priority is an
issue in this case because opposer does not own an existing
registration upon which it can rely under Section 2(d). See
King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974).
In order for applicant to prevail on summary judgment,
it must demonstrate the absence of a genuine issue of
material fact that opposer did not make actual use or
analogous trademark use of the mark GOLD LION prior to
November 9, 2004 (the filing date of applicant’s intent to
use application for the mark GENALEX GOLD LION) and June 28,
2005 (the filing date of application’s use application for
the mark GOLD LION).5
At the outset, we note that opposer does not dispute
that it did not make its first sale of products bearing the
GOLD LION mark until January 3, 2007 (after the filing of
applicant’s motion for summary judgment) when it shipped an
order of electron tubes to a company located in California.
As such, no genuine issue of material fact exists that
opposer cannot rely upon its own technical use of the GOLD
LION mark for purposes of priority.
Instead, opposer relies on two alternate theories to
establish prior rights in the GOLD LION mark: (1) that
since 1995 opposer has engaged in analogous trademark use by
promoting and engaging in preparations to launch its
products under the GOLD LION mark; and (2) that opposer
acquired ownership of the GOLD LION mark by a quitclaim
assignment dated December 5, 2005 from Chelmer Valve (a

5 Applicant states in its motion for summary judgment that it
wishes to rely upon the filing dates of its applications as its
priority dates.
distributor of vacuum tubes), and as a consequence, opposer
is entitled to rely on Chelmer Valve’s date of first use to
assert priority vis-à-vis applicant, which opposer alleges
as June 16, 2003. Applicant contends that the undisputed
facts show that neither basis is valid for asserting
priority.
1. Analogous Trademark Use
First, we turn to the question of whether a genuine
issue of material fact exists as to whether opposer has used
the mark GOLD LION in a manner analogous to trademark use
prior to the filing dates of applicant’s applications.
The following facts regarding opposer’s pre-sale
activities are undisputed:
-Since 1995, opposer has spent approximately $50,000-$60,000
in advertising expenditures promoting GOLD LION electron
tubes (Whitener Declaration, Para. 7). Such promotional
activities included creating artwork, packaging, and a web
site; announcing the product launch on the web site; issuing
a press release; promoting the tubes at trade shows; sending
price list of prospective purchasers; acquiring parts and
equipment for manufacturer of the tubes; (Whitener
Declaration, Para. 5 and Exhibits A-D);

-Opposer received e-mails dated July 10, 1999, May 22,
2000, September 15, 2000, June 26, 2002, June 4, 2003,
December 2003, January 18, 2004, and October 14, 2005,
and January 9, 2006 from potential customers inquiring
as to the release date of the items. (Ferrari
Declaration, Exhibits 9, 11);

-In October 1998, opposer took an order for GOLD LION
tubes, but the order was cancelled (Opposer’s responses
to applicant’s first set of Interrogatory Nos. 1 and
5);

-Opposer took a “bit of a hiatus” from its promotional
activities between 1998-2000 “because of the Asian
economic crisis” (Discovery Deposition of Mr. Whitener
at 160); and

-Opposer repeatedly altered on its web site the target
date for release of products bearing the GOLD LION mark
until finally the web site stated “to be determined.”
(Ferrari Declaration, Exhibit 10; Web Site Printouts
W270, 274, 276, 280, 282, 290,292, 295, 296, 303).

Applicant argues that opposer’s eleven years of pre-
sales activity do not amount to analogous trademark use, and
that opposer has been seeking to improperly “reserve” the
GOLD LION mark. Applicant also maintains that in order to
claim the benefit of analogous trademark use, opposer was
required to make actual trademark use soon after its pre-
sale activities. Opposer contends that it has established a
reputation as being the sole source for GOLD LION tubes via
its pre-sale activities, and that various circumstances
delayed opposer from making actual sales of tubes under the
GOLD LION mark until earlier this year.
Under the theory of analogous use, a party may rely
upon pre-sale activities in order to "tack on" non-trademark
usage for purposes of establishing priority under Section
2(d). See 3 J. Thomas McCarthy on Trademarks and Unfair
Competition, § 20:16 (4th Ed. 1996). Although use analogous
to trademark use is sufficient to create a proprietary right
in the user for purposes of a likelihood of confusion claim,
analogous use must be more than mere advertising. In T.A.B.
Systems v. PacTel Teletrac, 37 USPQ2d at 1882, the Court of
Appeals for the Federal Circuit summarized the test for the
sufficiency of analogous use efforts: "[W]hether it was
sufficiently clear, widespread and repetitive to create the
required association in the minds of the potential
purchasers between the mark as an indicator of a particular
source and the [product or] service to become available
later." The analogous trademark use also must be shown to
have a substantial impact on the purchasing public, and the
user must establish an intent to appropriate the mark. Id.
In addition, the "tacking" theory under which use analogous
to trademark use operates requires that actual technical
trademark use must follow within a commercially reasonable
period of time. Dyneer Corp. v. Automotive Products plc, 37
USPQ2d 1251 (TTAB 1995); Evans Chemetics, Inc. v. Chemetics
International Ltd., 207 USPQ 695 (TTAB 1980).
After reviewing the arguments and supporting papers of
the parties and construing all inferences in a light most
favorable to opposer, we find that applicant has shown that
there is no genuine issue of material fact that opposer
failed to acquire rights through analogous trademark use in
the GOLD LION mark prior to either November 9, 2004 or June
28, 2005, the filing dates of applicant’s respective
applications. We conclude that opposer’s collective
activities noted above do not constitute clear, widespread,
and repetitive activities sufficient to have established
prior analogous trademark use on the part of opposer. For
purposes of establishing priority via analogous trademark
use, the critical factor is the actual number of prospective
customers reached. Based on the paucity of e-mail inquiries
from prospective consumers (presumably prompted by
advertising of the product launch on opposer’s web site), it
is clear that opposer's efforts to solicit business have
neither had any significant impact on the purchasing public
as a whole nor "involve more than an insubstantial number of
potential customers." By illustration, the Federal Circuit
emphasized this requirement for analogous use in T.A.B.
Systems v. PacTel Teletrac, supra:
Nor can there be any doubt that purchaser perception must
involve more than an insubstantial number of potential
customers. For example, if the potential market for a given
service were 10,000 persons, then advertising shown to have
reached only 20 or 30 people as a matter of law could not
suffice. However close the linkage between the mark and the
future service, analogous use could not be shown on such
facts because the actual number of potential customers
reached, not the strength of the linkage for some
“reasonable potential customer,” is the focal point of the
analogous use inquiry.

Id. at 1883. Opposer has failed to submit any evidence to
create a genuine issue of material fact that more than a
negligible segment of the marketplace was impacted by its online
pre-sale activities. See id.
Furthermore, the $50,000-60,000 in advertising
expenditures over an eleven-year time period are
insufficient to establish that the necessary association or
public identification was indeed created among more than “an
insubstantial number of potential customers.” This is
especially true given the absence of any indication as to
the response, if any, received to any advertising (i.e.
print ads, trade shows) unrelated to opposer’s web site.
Thus, the Board is unable to draw the critical inference
that the public identified the term GOLD LION as a source
indicator for opposer’s goods by virtue of opposer's pre-
sale activities.
Lastly, we note that a significant time period (eleven
years) elapsed between opposer’s pre-sale activities and
first technical sale under the GOLD LION mark. Such a
lengthy time period is not “commercially reasonable” and
indicates that opposer’s activities were far too sporadic to
rise to the level of analogous use.
Since 1989, domestic applicants in the United States
have had the options presented by a dual application system
– filing based either on pre-application use in commerce, or
based upon a bona fide intention to use the mark in
commerce.
The legislative history of the Trademark Law Revision
Act of 1988 (TLRA) demonstrates that achieving greater
certainty in the acquisition of trademark rights by
providing clear notice to third parties was a driving force
behind the changes in the provisions of use and constructive
use.
It is readily apparent that the constructive use
provision of §7(c) of the Lanham Act, as amended, was
intended to foster the filing of intent-to-use applications.
By according conditional rights to those who publicly
disclose their marks, constructive use encourages the early
filing of applications and the searching of trademark
records prior to the adoption of and investment in new
marks. Constructive use provides an intent-to-use applicant
a superior right over anyone adopting a mark after
applicant’s filing date (providing the applicant’s mark is
ultimately used and registered) and to prevent a third party
from acquiring common law rights in a mark after the filing
date of the intent-to-use application. Under this intent to
use system, “token use” became unnecessary and
inappropriate.
Thus, a mere token sale or shipment of the goods does not
constitute “use” under the Trademark Act. See Paramount
Pictures Corp. v. White, 31 USPQ2d 1768, 1774 (TTAB 1994)
[noting that the purpose of the Trademark Law Revision Act
of 1988 was to eliminate “token use” as a basis for
registration, and that the new, stricter standard
contemplates instead commercial use of the type common to
the particular industry in question]. H.R. Rep. No. 100-
515, 100th Congress, 2d Sess.
Opposer, acting at its peril, failed to take advantage
of the intent-to-use provisions provided by the Trademark
Law Revision Act. Thus, in order to assert priority vis-à-
vis applicant, opposer had to rely on the doctrine of
analogous use. Based on the facts established by the
evidence of record, opposer has failed to meet the threshold
requirements to benefit from that doctrine.
2. Opposer’s Assertion of Prior Rights via Chelmer
Valve as a Predecessor in Interest

Next we consider opposer’s second basis for asserting
prior rights in the GOLD LION mark, namely, that it acquired
ownership of the GOLD LION mark by assignment from Chelmer
Valve, and that opposer is entitled to rely on Chelmer
Valve’s alleged date of first use to assert priority
vis-à-vis applicant.
It is undisputed that the only evidence on record of
Chelmer Valve’s U.S. sales consist of two transactions, the
first consisting of the sale of three tubes to an individual
in Minnesota on June 16, 2003, and the second transaction
consisting of the sale of two tubes to the same individual
on September 26, 2003.
Applicant has moved for summary judgment on the grounds
that it is undisputed that Chelmer Valve was merely a U.S.
distributor of vintage electron tubes manufactured in the
United Kingdom, and therefore had no authority to assign the
GOLD LION mark to opposer. Applicant also maintains that
there is no genuine issue of material fact that Chelmer
Valve failed to continuously use the GOLD LION mark in
commerce since June 2003. Opposer, however, argues that
Chelmer Valve was a manufacturer of such tubes, and that it
acquired ownership of the mark by quitclaim assignment dated
December 5, 2005 from Chelmer Valve.
Even if issues may exist as to whether or not Chelmer
Valve owned, and had the authority to assign, the GOLD LION
mark (either as a distributor or manufacturer) to opposer,
such issues are not material in this case. The documentary
evidence of two sales transactions to the same purchaser,
approximately three months apart, fails to support a finding
of prior and continuous use of the GOLD LION mark by Chelmer
Valve. By logical extension, opposer cannot rely on Chelmer
Valve as a predecessor in interest for asserting priority
over applicant.
In sum, we find that applicant has met its burden of
demonstrating that there are no genuine issues of material
fact regarding applicant’s priority, and that applicant is
entitled to judgment as a matter of law.
Accordingly, judgment is entered against opposer, and
the oppositions are dismissed with prejudice.