Sinclair Oil Corporation v. Sumatra Kendrick

    This decision is a precedent of the     UNITED STATES PATENT AND TRADEMARK OFFICE
                                            Trademark Trial and Appeal Board
    Trademark Trial and Appeal Board.       P.O. Box 1451
                                            Alexandria, VA 22313-1451




Baxley                                    Mailed:   June 6, 2007

                                          Opposition No. 91152940

                                          Sinclair Oil Corporation

                                               v.

                                          Sumatra Kendrick

Before Quinn, Rogers and Cataldo,
Administrative Trademark Judges

By the Board:

         Sumatra Kendrick ("applicant") has applied to register

the mark STAACHI'S CO. 1996 and design in the following form




for "retail store services featuring, bath products, gift

products, [and] candy products" in International Class 35.1

         Sinclair Oil Corporation ("opposer") filed a notice of

opposition to registration of applicant's mark on grounds of

likelihood of confusion with a series of previously used and

registered marks, including the following design

1
  Application Serial No. 76212011, filed February 20, 2001, based
on an assertion of use in commerce under Trademark Act Section
1(a), 

15 U.S.C. Section 1051

(a). The application alleges March
1996 as the date of first use anywhere and March 20, 1996 as the
date of first use in commerce and includes a disclaimer of "CO.
1996."
Opposition No. 91152940




for services in International Classes 35 and 41, including

"retail apparel and gift store services."2     On January 31,

2006, the Board granted opposer's motion for leave to file

an amended notice of opposition by which opposer added

claims of nonuse and fraud based on its assertion that

applicant falsely claimed to be using the mark in commerce

in connection with the identified services in the involved

application.

      On March 1, 2006, opposer filed a motion for summary

judgment on its newly pleaded grounds of nonuse and fraud.

Applicant incorporated a motion to amend the filing basis of

the involved application to Trademark Act Section 1(b), 

15 U.S.C. Section 1051

(b), into her response to opposer's

motion.3    Opposer has filed a brief in response to the

motion to amend.




2
  

Registration No. 929749,

 issued February 22, 1972, renewed
twice.
3
  Applicant did not separately caption her motion to amend the
filing basis of her application. Although there is no
prohibition on incorporating a motion into a brief in response to
a motion, the better practice is either to file such motion as a
separate submission or, at a minimum, to caption separately any
such motion.



                                2
Opposition No. 91152940

      We turn first to applicant's motion to amend the filing

basis of the involved application to Section 1(b).      An

applicant under Trademark Act Section 1(a), 

15 U.S.C. Section 1051

(a), who is a defendant in a Board opposition

proceeding, can move to amend its application to substitute

Section 1(b) as its filing basis and maintain its original

filing date, provided that it meets all the requirements for

a Section 1(b) filing basis.    See Trademark Law Treaty

Implementation Act of 1998 (TLTIA), 

Pub. L. No. 105-330, 112

Stat. 3064 (

15 U.S.C. Section 1051

), and the "Trademark Law

Treaty Implementation Act Changes" to the Rules of Practice

and Procedure, published in the Federal Register at 

64 FR 48900

 (Sept. 8, 1999) and in the Official Gazette at 1226

TMOG 103 (Sept. 28, 1999).    See also Trademark Rules 2.34,

2.35 and 2.133(a) and Trademark Exam Guide No. 3-99 at 6.4

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.         See

Trademark Rule 2.35(c).

      In an application under Section 1(b), an applicant must

verify that it has a bona fide intent to use the mark in

commerce on or in connection with the goods or services


4
  Exam Guide No. 3-99 is available on the USPTO web site at
http://www.uspto.gov/web/offices/tac/notices/notices.htm



                                3
Opposition No. 91152940

listed therein.      If the verification is not filed with the

initial application, any later-filed verified statement must

allege that the applicant had a bona fide intention to use

the mark in commerce as of the filing date of the

application.      See Trademark Rule 2.34(a)(2)(i).

        Applicant has now met all the requirements for a

Section 1(b) filing basis, including the submission of a

verified statement that she had a bona fide intention to use

the mark in commerce as of the filing date of the

application.      Inasmuch as there is no evidence in the record

to the contrary, applicant can maintain her original filing

date, i.e., February 20, 2001.        Based on the foregoing,

applicant's motion to amend the filing basis of her involved

application to Section 1(b) is hereby granted.        However,

amending the filing basis of the involved application to

Section 1(b) does not protect the application from a fraud

claim.    See Grand Canyon West Ranch LLC v. Hualapai Tribe,

78 USPQ2d 1696

 (TTAB 2006).

      Because the involved application is now an intent-to-

use application, opposer's nonuse claim is dismissed as

moot.

      We turn next to opposer's motion for summary judgment

on the fraud claim.       In support of such motion, opposer

contends that applicant made a willful, false and material

representation of fact in her involved application by



                                  4
Opposition No. 91152940

asserting that she was using her mark in commerce and had

used her mark in commerce since March 20, 1996.      Opposer

contends applicant's interrogatory responses establish the

lack of any genuine issue regarding applicant's failure to

use her mark in commerce.    Responses upon which opposer

relies in support of its motion include the following:

      1) Applicant's statements that she "has not engaged in

commerce" and that the involved mark "has never been used in

commerce" (responses to interrogatory nos. 1, 3, 6, and 7);

      2) Applicant's statement that the involved mark "was

registered as a Fictitious Business Name Statement in March

1996 to reserve the name and notice others that I intended

to do business under that name in the future" (responses to

interrogatory nos. 1-3);5

      3) Applicant's statements that she "has no invoices,

documents, or writings that would establish 'use' in

commerce," that she "has not had any income," and that she

"has not done any marketing" (responses to interrogatory

nos. 4, 6 and 7); and

      4) Applicant's statements that, in 1996, she had a "one

time creation" of "about 25 sample products" which were


5
  However, the only fictitious business name registration of
record herein is for STAACHI'S EXCLUSIVES, which applicant
recorded with the Contra Costa County (California) Clerk on March
20, 1996 and which opposer submitted as an exhibit in support of
its motion for summary judgment. Whether or not applicant used
in commerce the mark STAACHI'S EXCLUSIVES is not at issue in this
proceeding.


                                5
Opposition No. 91152940

"[g]iven away free of charge" and that she has not used the

mark from "[a]pproximately April 1996 to present."

(responses to interrogatory nos. 2 and 5).

      In addition, applicant stated, as part of her

objections to every one of opposer's interrogatories, that

she "has not engaged in commerce, but has only attempted to

reserve the name and sought a trademark to protect the

utilization of the mark when and if her business is open."

Applicant's responses to interrogatory nos. 1-36.

      Opposer's evidentiary support for its motion includes

its first set of interrogatories and first set of requests

for admissions and applicant's responses thereto.     Based on

the foregoing, opposer contends that there is no genuine

issue of material fact that applicant willfully made a

false, material statement that she was using the mark in

connection with the services recited in her involved

application and committed fraud on the USPTO during the

prosecution of her application.   Therefore, opposer asks

that summary judgment be entered against applicant on that

ground.

      In response, applicant, who is representing herself,

contends as follows:

      [D]uring the Interrogatories phase, the question
      was asked if I the applicant had used the mark in
      commerce. The answer was mistakenly filed as I
      had not used my mark in commerce. I would like to
      point out, that there was confusion with question.



                              6
Opposition No. 91152940

      The mark has been in use since March of [19]96
      [a]nd is currently in use as of Sept. 27, 2006.

Applicant, however, did not identify, or provide evidence

of, any specific activities that she claims constitute use

of the mark in commerce.6

      Summary judgment is an appropriate method of

disposing of a case 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 dispute as to a material fact is genuine only if a

reasonable fact finder viewing the entire record could

resolve the dispute in favor of the nonmoving party.      See

Olde Tyme Foods Inc. v. Roundy’s Inc., 

961 F.2d 200

, 

22 USPQ2d 1542, 1544

 (Fed. Cir. 1992).     In deciding a motion

for summary judgment, the Board must view the evidence in

the light most favorable to the nonmovant, and must draw all

reasonable inferences from underlying facts in favor of the

nonmovant.     

Id.

      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

(1986); Sweats Fashions Inc. v. Pannill Knitting Co.



6
  Indeed, applicant's only equivocation with regard to her
statements that she is "in the formation stage of her business"
and "has not engaged in commerce" were her denials in response to
opposer's requests to admit that she has not used the mark in
commerce.


                                7
Opposition No. 91152940

Inc., 

833 F.2d 1560

, 

4 USPQ2d 1793

 (Fed. Cir. 1987).    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

arguments in response to the motion, but must designate

specific portions of the record or produce additional

evidence showing the existence of a genuine issue of

material fact for trial.   In general, to establish the

existence of disputed facts requiring trial, the nonmoving

party "must point to an evidentiary conflict created on the

record at least by a counterstatement of facts set forth in

detail in an affidavit by a knowledgeable affiant."     Octocom

Systems Inc. v. Houston Computer Services Inc., 

918 F.2d 937

, 

16 USPQ2d 1783, 1786

 (Fed. Cir. 1990), citing Barmag

Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 

731 F.2d 831

, 

221 USPQ 561, 564

 (Fed. Cir. 1984).

      Based on the record now before us, and for the reasons

discussed below, we conclude that opposer is entitled to

entry of summary judgment on the fraud claim as a matter of

law because opposer has made a prima facie showing that

there are no genuine issues of material fact remaining for

trial with regard to that claim, which showing applicant has

failed to rebut.


                              8
Opposition No. 91152940

      Trademark Act Section 45, 

15 U.S.C. Section 1127

,

states in relevant part as follows:
      [A] mark shall be deemed to be in use in commerce
      ... on services when it is used or displayed in
      the sale or advertising of services and the
      services are rendered in commerce, or the services
      are rendered in more than one State or in the
      United States and a foreign country and the person
      rendering the services is engaged in commerce in
      connection with the services.

Examples of use of a service in commerce include when:      (1)

the recited services are rendered across state lines; and

(2) customers travel across state lines in response to

advertising for the recited services.    See TMEP Section

1301.03(b) (4th ed. rev. 2004).    Use of the mark in

connection with promotional, advertising or other activities

undertaken prior to the actual rendering of the recited

services does not constitute actual "use in commerce" of

identified services sufficient to support the filing of a

use-based application.    See In re Port Authority of New

York, 

3 USPQ2d 1453

 (TTAB 1987); In re Cedar Point, Inc.,

220 USPQ 533

 (TTAB 1983).

      Fraud in procuring a trademark registration occurs

when an applicant for registration knowingly makes false,

material representations of fact in connection with an

application to register.    See Torres v. Cantine Torresella

S.r.l., 

808 F.2d 46

, 

1 USPQ2d 1483

 (Fed. Cir. 1986).    A

party making a fraud claim is under a heavy burden because

fraud must be proved by clear and convincing evidence,



                               9
Opposition No. 91152940

leaving nothing to speculation, conjecture, or surmise.    Any

doubt must be resolved against the party making the claim.

See Smith International, Inc. v. Olin Corporation, 

209 USPQ 1033

 (TTAB 1981).

      Statements regarding the use of the mark on the

identified goods and/or services are certainly material to

issuance of a registration.   See Hachette Fillipacchi Presse

v. Elle Belle, LLC, ___ USPQ2d ___ (TTAB, Cancellation No.

92042991, April 9, 2007) (fraud found based on applicant's

allegation of use of its mark for a wide variety of clothing

items for men, women and children when mark had not been

used for any identified items for men or children and only

for a limited number of items for women); Hurley

International LLC v. Volta, 

82 USPQ2d 1339

 (TTAB 2007)

(fraud found based on applicants' allegation of use of their
mark for various entertainment services and production

services, when mark had not been used anywhere in the world

for some of the services and had not been used in commerce

with or in the United States for other services); Standard

Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 

77 USPQ2d 1917

 (TTAB 2006) (counterclaim petition for cancellation of

petitioner's pleaded registrations granted when fraud found

based on misrepresentation regarding use of the mark on most

of the goods identified in the filed applications); First

International Services Corp. v. Chuckles Inc., 

5 USPQ2d 1628

(TTAB 1988) (fraud found in applicant’s filing of



                              10
Opposition No. 91152940

application with verified statement that the mark was in use

on a range of personal care products when applicant knew it

was in use only on shampoo and hair setting lotion).

      This case is similar to Medinol Ltd. v. Neuro Vasx,

Inc., 

67 USPQ2d 1205

 (TTAB 2003).   In Medinol, a trademark

application was filed, the mark was published, a statement

of use was submitted, and a registration issued for "medical

devices, namely, neurological stents and catheters."     In
response to a petition for cancellation, registrant admitted

in its answer that the mark was not used on stents.    The

Board stated as follows:

      The fraud alleged by petitioner is that
      respondent knowingly made a material
      representation to the USPTO in order to obtain
      registration of its trademark for the identified
      goods. There is no question that the statement
      of use would not have been accepted nor would
      registration have issued but for respondent’s
      misrepresentation, since the USPTO will not
      issue a registration covering goods upon which
      the mark has not been used. (cites omitted).

Id. at 1208

.
      In the case at hand, there is no dispute and no genuine

issue of material fact that applicant filed an application

based on use in commerce and signed a declaration attesting

to the truth of all the statements in the application when

she knew or should have known that she had not used the mark

in connection with the recited services, i.e., "retail store

services featuring, bath products, gift products, [and]




                              11
Opposition No. 91152940

candy products."7         There is no question that applicant's

misrepresentation resulted in the involved application being

approved for publication as a use-based application.

       From the original filing of her application until the

filing of her motion to amend the filing basis of the

application to Trademark Act Section 1(b), applicant

asserted a claim of use under Trademark Act Section 1(a).

However, in her responses to opposer's discovery requests

which opposer submitted as evidence in support of its motion

for summary judgment, applicant states that the STAACHI'S

CO. 1996 mark "has never been used in commerce."

Applicant's responses to interrogatory nos. 1-3.         Applicant

further states that she not had any income and has not done

any marketing.      Applicant's responses to interrogatory nos.

6-7.

       Thus, as in Medinol, a material representation of fact

with regard to use of the mark on particular services was

made by the mark’s owner and that statement was relied upon

by the USPTO in determining applicant's rights to the


7
  An applicant may not claim a Section 1(a) filing basis unless
the mark is in use in commerce on or in connection with all goods
and/or services covered by the Section 1(a) basis as of the
application filing date. See Trademark Rule 2.34(a)(1)(i). Cf.
E.I. du Pont de Nemours & Co. v. Sunlyra International, Inc., 

35 USPQ2d 1787

, 1791 (TTAB 1995). The involved application includes
the following statement: "Applicant is using or is using through
a related company the mark in commerce on or in connection with
the ... identified goods/services." Also, applicant signed the
oath at the conclusion of the application under penalty of "fine
or imprisonment, or both ... that ... willful false statements
may jeopardize the validity of the application or any resulting
registration...."


                                    12
Opposition No. 91152940

registration.      In Board inter partes proceedings, "proof of

specific intent is not required, rather, fraud occurs when

an applicant or registrant makes a false material

representation that the applicant or registrant knew or

should have known was false."         General Car and Truck Leasing

Systems Inc. v. General Rent-A-Car Inc., 

17 USPQ2d 1398

,

1400-01 (S.D. Fla. 1990), aff’g General Rent-A-Car Inc. v.

General Leaseways, Inc., Canc. No. 14,870 (TTAB May 2, 1988)

(intent of the signatories not material to question of

fraud).

      As the Board determined in Medinol, "the

appropriate inquiry is ... not into the registrant’s

subjective intent, but rather into the objective

manifestations of that intent."        Medinol Ltd. v. Neuro Vasx,

Inc., supra at 1209.      In Medinol, the Board concluded that

the facts justified a finding of fraud:

      The undisputed facts in this case clearly
      establish that respondent knew or should have
      known at the time it submitted its statement of
      use that the mark was not in use on all of the
      goods. Neither the identification of goods nor
      the statement of use itself was lengthy, highly
      technical, or otherwise confusing, and the
      President/CEO who signed the document was clearly
      in a position to know (or to inquire) as to the
      truth of the statements therein.

Id. at 1209-1210.

      As previously indicated, applicant stated repeatedly in

her responses to opposer's interrogatories that she has not

engaged in commerce and that her business is in the


                                 13
Opposition No. 91152940

formation stage and also stated that she has not used the

mark since approximately April 1996.        Although she asserts

in response to the motion for summary judgment that she has

used the mark in commerce since March 1996 and has denied

certain requests for admission regarding nonuse of the

mark,8 she has provided no details that are sufficient to

raise a genuine issue of material fact with regard to the

fraud claim.      Without further corroboration, the general

statement and denials of requests for admission are not

sufficient to refute applicant's earlier, more specific, and

contradictory statements in response to opposer's

interrogatories so as to create a genuine issue of material

fact requiring resolution at trial.        Applicant was certainly

in a position to have personal knowledge of the facts

concerning whether she had used her mark in connection with

the services identified in her application prior to filing

that application.         Even if applicant honestly believed that

her activities in connection with her involved mark

warranted filing the involved application based on use in

commerce under Trademark Section 1(a), there is no genuine

issue that, under the circumstances, it was not reasonable


8
  An admission in response to a request for admission
“conclusively establishe[s]” the matter that is subject of that
request. Fed. R. Civ. P. 36(b). However, a denial in response
to a request for admission is merely a refusal to stipulate to
certain matter. See National Semiconductor Corp. v. Ramtron
Int’l Corp., 

265 F.Supp.2d 71

 (D.D.C. 2003).



                                    14
Opposition No. 91152940

for applicant to believe that her activities in 1996

constituted current use or use in commerce for the

identified services at the time she signed her application.

That is, applicant could not have reasonably believed that

either registration of STAACHI'S EXCLUSIVES as a fictitious

business name in 1996 and a one-time giveaway of twenty-five

product samples bearing the involved mark in 1996 were

sufficient to constitute use or use in commerce of the mark

STAACHI'S CO. 1996 and design for "retail store services

featuring, bath products, gift products, [and] candy

products" when the involved application was filed on

February 20, 2001, nearly five years after these activities.

Inasmuch as applicant's material representations regarding

use of the mark were false and applicant knew or should have
known such representations were false, we conclude that

applicant has committed fraud.

      This case is distinguished from Maids to Order of Ohio

Inc. v. Maid-to-Order Inc., 

78 USPQ2d 1899

 (TTAB 2006),

wherein the Board found that the defendant's limited use of

its mark across state lines in connection with its recited

services provided the defendant's president with a

reasonable basis for her belief that the mark was being used

in interstate commerce in connection with the recited

services when respondent filed an application for

registration, a declaration under Trademark Act Section 8,



                              15
Opposition No. 91152940

15 U.S.C. Section 1058

, and an application for renewal, and

that such good faith belief was sufficient to negate an

inference of fraud.       The present case does not present a

question, as in Maids to Order, about whether use in

connection with the identified services constituted use in

commerce.     Rather, the instant case presents a question

whether there was any use of the mark in connection with the

identified services.      Applicant has pointed to no use of the

mark in connection with any retail store services that would

have provided applicant with any basis for claiming that the

mark was in use in commerce when she filed her use-based

application.      As noted supra, applicant's activities related

to the formation of her business without subsequent

rendering of her retail store services do not provide a

basis for a claim of use of her mark in commerce for such

services.9     See In re Port Authority of New York, supra.

Further, applicant's one-time use of the mark on products

does not provide a basis for asserting service mark use.

See TMEP Section 1301.01(a) (4th ed. 2005).

      In view of the above, we find that applicant's material

misrepresentations made in connection with her application

were fraudulent and, therefore, the application is void ab


9
  This is not a case where the question is whether use of the
mark constituted use for retail services. Applicant has not used
the mark for Internet retailing, mail-order or catalogue
retailing, or retailing from a fixed store location. In short,
there has been no retailing whatsoever.



                                  16
Opposition No. 91152940

initio.    Accordingly, summary judgment is entered in

opposer’s favor on the issue of fraud.     Inasmuch as opposer

did not move for summary judgment on its pleaded likelihood

of confusion claim, we need not reach the issue of

likelihood of confusion.

      However, to prevail in this proceeding, opposer must

establish not only a valid ground for denying the

registration sought, as it has, but must also prove its

standing.     See, e.g., Lipton Industries, Inc. v. Ralston

Purina Co., 

670 F.2d 1024

, 

213 USPQ 185

 (CCPA 1982).      While

opposer's allegation that it is the owner of previously used

and registered marks would, if proven, suffice to establish

its standing, opposer has not yet submitted any evidence on

this point.10     See 

id.

      Opposer is therefore allowed until thirty days from the

mailing date set forth in the caption of this order in which

to submit a showing that there is no genuine issue of fact

as to standing, and that it is entitled to judgment on the

issue of standing as a matter of law.     Applicant is allowed

until fifty days from the mailing date set forth in the

caption of this order to file a response thereto, if

10
  Although opposer alleged ownership of the pleaded registrations
in the amended notice of opposition, applicant stated in her
answer thereto that she was without "sufficient knowledge or
information on which to form a belief as to the truth" of
opposer's allegation that it owns the pleaded registrations.
In addition, opposer did not submit status and title copies of
any of its pleaded registrations. Further, it did not ask



                                17
Opposition No. 91152940

desired.    If opposer's showing is sufficient to establish

its entitlement to summary judgment on the issue of

standing, summary judgment on standing will be entered in

opposer's favor, and the opposition will be sustained.       If

opposer's showing is not sufficient on the issue of

standing, proceedings will resume on that issue alone.

      This proceeding remains otherwise suspended pending

opposer's response.




applicant to admit that opposer owns the pleaded registrations in
its requests for admission.


                               18