ZYLSTRA v. NORMAN, 91163509 (TTAB 8-30-2007)

Roel Zylstra v. Kathy L. Norman

Opposition No. 91163509United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: August 30, 2007Page 1

THIS OPINION IS NOT CITABLE AS PRECEDENT OF THE T.T.A.B.

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

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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.[fn1]

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.[fn2] 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.Page 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 CelotexCorp. v. Catrett, 477 U.S. 317 (1987); Sweats FashionsInc. 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 BoardPage 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. ChemicalBank, 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 MePrograms 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.[fn3]Page 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 ElectronicsLtd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1505 (TTAB 1993).[fn4] 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).Page 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 2001v. 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 Telephoneand 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.

[fn1] 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.”).

[fn2] 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).

[fn3] Trademark Act Section 7(c) provides that “Contingent on the registration of a mark on the principal register provided by this 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. AmericanTelephone and Telegraph Co., at 1544.

[fn4] 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. SeeL. 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”).