BARONESS SMALL ESTATES v. AMERICAN WINE TRADE, 92051369 (TTAB 3-1-2011)
Cancellation No. 92051369United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: March 1, 2011Page 1
THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
Before Kuhlke, Wellington and Wolfson, AdministrativeTrademark Judges.
By the Board:
American Wine Trade, Inc. owns a registration for the mark CMS for wine in Class 33.[fn1] On August 21, 2009, Baroness Small Estates, Inc. filed a petition to cancel the registration. Petitioner alleges that the mark is generic; that the mark is descriptive and does not have secondary meaning; that the mark was not in use on the goods at the time of filing the underlying application; that the mark has been abandoned; that the registration was obtained fraudulently; and that the underlying application for the subject registration was not filed by its owner and is void. Respondent denies the salient allegations in the petition to cancel and raises petitioner?sPage 2
lack of standing, laches and unclean hands as affirmative defenses.
This case now comes up for consideration of the following motions:
1.) petitioner?s motion for summary judgment on the grounds that respondent?s mark is generic and incapable of functioning as a trademark, and that respondent?s mark is descriptive; and
2.) respondent?s cross-motion for summary judgment regarding petitioner?s claims based on genericness, descriptiveness, non-use, fraud and abandonment.
The motions are fully briefed.
Summary judgment is only appropriate when there is no genuine dispute as to any material fact and the moving party is entitled to judgment as a matter of law. See
Fed.R.Civ.P. 56(a). The mere fact that cross-motions for summary judgment on an issue have been filed does not necessarily mean that there is no genuine dispute of material fact, and that trial is unnecessary. The Board may not resolve issues of material fact; it may only ascertain whether a genuine dispute regarding a material fact exists. See, Lloyd’s FoodProducts, Inc. v. Eli’s, Inc., 987 F.2d 766, 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Olde Tyme Foods,961 F.2d at 200, 22 USPQ2d at 1542. A factual dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter in favor of the non-moving party.See, Opryland USA Inc. v. Great American Music ShowInc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir.Page 3
1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc.,961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
I. Cross-motions on petitioner?s claims ofgenericness and mere descriptiveness
After reviewing the arguments and supporting papers of the parties, we find that the parties have not established that no genuine dispute of material fact exists as to petitioner?s claims of genericness or mere descriptiveness.[fn2] At a minimum, genuine disputes of material fact remain as to whether the purchasing public perceives the acronym CMS to be either the generic name for the goods or in the alternative perceives the term CMS as describing a feature of the goods.[fn3]Page 4
Accordingly, petitioner?s motion and respondent?s cross motion for summary judgment on the claims of genericness and mere descriptiveness are denied.
II. Non-use, Abandonment and Fraud
We turn next to respondent?s cross-motion for summary judgment in its favor on the grounds that its mark was in use at the time of filing the application, is still in use and not abandoned, or that it was obtained fraudulently. Respondent contends that petitioner?s claims of non-use, abandonment and fraud are based on respondent?s use of the trade name ?Hedges Cellars? and ?Hedges Family Estate? on its wine labels instead of its corporate name American Wine Trade, Inc. Respondent argues that its trade name has been registered with the state of Washington, and that the use of its registered trade name with its mark CMS does not constitute non-use, abandonment or fraud. As evidence that ?Hedges Cellars? and ?Hedges Family Estate? are registered trade names, respondent provides copies of its state registration certificate and application for these trade names. Respondent also provides copies of wine labels dated 2002 through 2006 that show the use of ?HEDGES CELLARS? or ?HEDGES FAMILY ESTATES? together with ?CMS? on the labels. Petitioner did not respond to respondent?s arguments or evidence in its opposition to the cross-motion, except to state ?the issue [raised by the cross-motion for summary judgment] is not significantly addressed in the text of the responsivePage 5
filing outside of claims that Baroness has presented no evidence.?
While we must view respondent?s cross-motion for summary judgment on petitioner?s pleaded claims of non-use, abandonment and fraud in a light most favorable to petitioner as the non-moving party, petitioner was required to set forth specific facts, by declarations or as otherwise provided in the rule, rebutting respondent?s evidence of continuous use and showing that there are genuine disputed facts remaining for trial. See Fed.R.Civ.P. 56(e). See alsoCopelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1298 (Fed. Cir. 1991), and Octocom SystemsInc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990). Here, petitioner failed to do so, i.e., rebut respondent?s evidence or raise a genuine dispute of material fact. Accordingly, respondent?s cross-motion for summary judgment on the grounds of non-use, abandonment and fraud is granted.
III. Conclusion
Petitioner?s motions and respondent?s cross-motions for summary judgment on the grounds that CMS is generic or merely descriptive are denied.[fn4] Respondent?s cross-motion on thePage 6
grounds of non-use, abandonment and fraud is granted. In view thereof, the petition to cancel is dismissed as to the claims of non-use, abandonment and fraud.[fn5] The proceeding will go forward only on the remaining claims of genericness and mere descriptiveness.
IV. Dates Reset
Proceedings are resumed. Trial dates are reset as set out below.
In each instance, a copy of the transcript of testimony together with copies of documentary exhibits, must be served on the adverse party within thirty days after completion of the taking of testimony. Trademark Rule 2.125.Page 7
Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An oral hearing will be set only upon request filed as provided by Trademark Rule 2.129.
[fn1] Registration No. 2984716, registered August 16, 2005, claiming a date of first use anywhere of Aug. 1, 2001, and a date of first use in commerce of Dec. 17, 2001. [fn2] In going forward with its case, petitioner is advised that even if grape varietal names, such as cabernet, merlot or syrah, are generic for wines made from those grapes, it does not automatically follow that respondent?s mark CMS is generic or descriptive. It is not the case that the initial letters of a generic or descriptive term are automatically recognized as substantially synonymous with that term. Inre Council on Certification of Nurse Anesthetists, 85 USPQ2d 1403, 1411 (TTAB 2007). The question to be answered is whether the initials for generic or merely descriptive terms, or a combination thereof, are also generally recognized and used as an accepted abbreviation for the term itself.Capital Project Management Inc. v. IMDISI Inc., 70 USPQ2d 1172, 1179 (TTAB 2003) (whether initials for generic term create another generic term is separate but related issue to finding underlying term generic); see also Racine Indus.Inc. v. Bane-Clene Corp., 35 USPQ2d 1832, 1838 (TTAB 1994) (finding acronym made up of descriptive terms not descriptive for name of organization where no evidence to show relevant public generally recognized term as descriptive for similar organization). [fn3] Respondent further argues that if its mark is descriptive, it has acquired secondary meaning. A determination regarding acquired distinctiveness of respondent?s mark is a factual one, but one we need not reach on summary judgment where we have already identified genuine disputes of material fact as to the issues of genericness and descriptiveness of respondent?s mark. [fn4] The parties should note that the evidence submitted in connection with the motions for summary judgment is of record only for consideration of those motions. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial period. See, LeviStrauss Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB (1983); American Meat Institute v. Horace W.Longacre, Inc., 211 USPQ 712 (TTAB 1981). Furthermore, the fact that we have identified certain genuine disputes of material fact sufficient to deny the parties? motions should not be construed as a finding that these are necessarily the only issues which remain for trial. [fn5] This decision is interlocutory in nature; therefore, any appeal can be raised only after final disposition of this proceeding. See Trademark Rule 2.145(d), andProcter Gamble Co. v. Sentry Chem. Co., 22 USPQ2d 1589, 1594 n. 4 (TTAB 1992). See also Copelands’Enter. Inc. v. CNV Inc., 887 F.2d 1065, 12 USPQ2d 1562, 1564 (Fed. Cir. 1989).