777%
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`-----------------------------...._..-_............--.._-_-__-_-_-_--....-..x
`
`AMERICAN HONDA MOTOR CO., INC.,
`
`Opposer,
`
`v.
`
`: Opposition No. 121,151
`
`TBC CORPORATION,
`
`_
`
`Applicant.
`
`:
`X
`
`OPPOSER’S NOTICE OF RELIANCE
`
`/
`
`/W”///W////I//J///M[[///I”//IWI”
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`
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`
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`
`Pursuant to Rule 2.122(e) of the Trademark Rules of Practice, 37 C.F.R. §
`
`2.122(e), Opposer herewith gives notice of its reliance upon the Notice of Opposition
`
`filed on or after February 6, 2002 in TBC BRANDS, LLC (by assignment from TBC
`
`Corporation) V. IMCOA LICENSING AMERICA, INC, Opposition No. 125,235. A
`
`certified copy of the file wrapper and contents of Trademark Opposition No. 125,235 is
`
`annexed as Exhibit 1 hereto. The general relevance of the document is as follows:
`
`(i)
`
`Opposer in that proceeding, TBC Brands, LLC, is the assignee, successor
`
`in interest to, and licensor of trademarks to, TBC Corporation, Applicant in this
`
`proceeding. 1| 1.1 For purposes of pleading in Opposition No. 121,151, TBC
`
`Brands, LLC and TBC Corporation are “collectively referred to as TBC.” Id.
`
`Plainly Applicant here and opposer there operate at least in privity, more likely in
`
`tandem, with one another.
`
`' Such assignments and license backs are commonly undertaken for tax reasons.
`
`

`
`
`
`(ii)
`
`In the other proceeding, TBC asserts registrations of GRAN ESPRIT,
`
`GRAND SPIRIT and WILD SPIRIT for tires as grounds for opposing registration
`
`of INDIAN SPIRIT for motorcycles (113 3,5).
`
`(iii)
`
`In the other proceeding, TBC alleges that motorcycles are “identical
`
`and./or similar andlor related to” tires “and on information and belief” motorcycles
`
`“are and./or will be sold through the same and/or similar channels of trade, and/or
`
`to the same general class of purchasers, in and to which” tires “are marketed
`
`and/or sold.” 1] 7
`
`(iv)
`
`In the other proceeding, TBC further alleges that “[t]he registration and/or
`
`use of” INDIAN SPIRIT for motorcycles “is likely to cause confusion, mistake,
`
`and/or deceive as to the origin, sponsorship, and/or association of” INDIAN
`
`SPIRIT motorcycles “vis-a—vis” TBC “and/or” TBC’s GRAN ESPIRIT, GRAND
`
`SPIRIT and WILD SPIRIT tire marks “and/or to mislead purchasers of” IMCOA
`
`LICENSING AMERICA “and/or” TBC’s motorcycles and tires “and/or the
`
`public in general, into believing that" IMCOA LICENSING AMERICA’S
`
`motorcycles “are sold by, emanate from, and/or in some way, directly or
`
`indirectly, are associated with TBC and/or” its “SPIRIT Mark(s), or products, or
`99
`
`vice versa .
`
`.
`
`.
`
`.
`
`(v)
`
`Allegations made in a Board inter partes proceeding may be used as
`
`evidence against the applicant or registrant as admissions against interest and the
`
`like. TBMP § 704.04, and cases cited therein. “[S]tatements in pleadings may
`
`have evidentiary value as admissions against interest by the party that made
`
`them.” TBMP § 704.06(a), and cases cited therein.
`
`

`
`
`
`Pursuant to Rule 2.l20(j)(3) ofthe Trademark Rules of Practice, 37 C.F.R. §
`
`2.120(j)(3), Opposer herewith gives notice of its reliance upon the following request for
`
`admission and response, the latter dated October 9, 2001:
`
`6.
`
`Admit there is a likelihood of confusion between OPPOSER’S trademarks
`
`and APPLICANT’S TRADEMARK.
`
`Response:
`
`Applicant objects to this request as vague, indefinite, and
`
`assumes facts not in evidence. Subject to, and without waiver of, its
`
`objections, DENIED.
`
`A copy of the entire APPLICANT’S RESPONSE TO FIRST SET OF REQUEST FOR
`
`ADMISSIONS TO APPLICANT (Nos. 1-1 1) is annexed hereto as Exhibit 2. The
`
`general relevance of the document is that it demonstrates that when TBC made the
`
`allegations in its Notice of Opposition in TBC BRANDS, LLC (by assignment from TBC
`
`Corporation) v. IMCOA LICENSING AMERICA, INC, Opposition No. 125,235 less
`
`than four months after its response in the present case, it was, or should have been, aware
`
`that its pleadings in the IMCOA LICENSING opposition were an admission against its
`
`interest in the present proceeding?
`
`Pursuant to Rule 2.120(j)(3) of the Trademark Rules of Practice, 37 C.F.R. §
`
`2.120(j)(3), Opposer herewith also gives notice of its reliance upon the following requests
`
`for admission and responses thereto served August 22, 2003, copies of which are annexed
`
`as set forth below.
`
`Exhibit 3: Request 12, Exhibits and Response
`
`Exhibit 4: Requests 25 and 26 and Responses
`
`Exhibit 5: Request 27, Exhibit and Response
`
`2 TBC, it will be noticed, used the same attorneys in both proceedings.
`
`

`
`
`
`Exhibit 6: Request 28, Exhibit and Response
`
`Exhibit 7: Request 30, Exhibit and Response
`
`Exhibit 8: Request 31, Exhibit and Response
`
`Exhibit 9: Request 32, Exhibit and Response
`
`The general relevance of these Admissions and Exhibits are that they demonstrate
`
`that Applicant’s SHADOW tires are part of its SIGMA line of tires, which has repeatedly
`
`claimed to be a “Complete line” of tires.
`
`Dated: New York, NY
`January 14, 2004
`
`Respectfully submitted,
`
`FISH
`
`CHARDSON P.C.
`
`
`
`Stacy J. Grossman
`Irene Hudson
`
`45 Rockefeller Plaza, Suite 2800
`
`New York, NY 10111
`
`Telephone: (212) 765-5070
`Facsimile: (212) 258-2291
`
`Attorneys for Opposer
`American Honda Motor Co., Inc.
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I have this 14”‘ day of January 2003 served one copy of the
`foregoing OPPOSER’S NOTICE OF RELIANCE upon Applicant’s counsel, by causing
`the same to be mailed, first class postage prepaid to:
`
`Matthew J. Cuccias, Esq.
`Marsha Gentner, Esq.
`Jacobson Holman PLLC
`
`400 Seventh Street, NW
`Washington, DC 20004
`
`By:
`
`"
`Q5
`Neil Ramsaroop
`
`

`
`709037
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`
`UNITED STATES DEPARTNHENT OF COMMERCE
`
`United States Patent and Trademark Office
`
`
`
`
`
`December 31, 2003
`
`TRADEMARK OPPOSITION NUMBER: Opposition Number 125,235
`
`. y Authority of the
`
`COMNIISSIONER OF PATENTS AND TRADEMARKS
`
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`Certifying Officer
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re the Application of:
`
`IMCOA LICENSING AMERICA, INC.
`
`-
`_
`'
`SW‘ N°-- 75’273~°”
`_
`Filed:
`
`June 18, 200]
`
`Mark: INDIAN SPIRIT
`
`Published in the Official Gazette
`of October 9, 2001, Page TM 350,
`Vol. 1251, No. 2
`
`U.B. Plum I TMOIBJTM Mlil H 1. D1. 057
`lllllllIllllllllllllllIllllllltllllllllflllllll
`01-O7-2002
`
`REQUEST FOR FURTHER EXTENSION OF TIME
`TO FILE NOTICE OF OPPOSITION
`
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Sir:
`
`Your Petitioner, TBC CORPORATION, a corporation of the State of Delaware, located and
`
`doing business at 4770 Hickory Hill Road, Memphis, Tennessee 38181, through its undersigned
`
`counsel, hereby respectfully requests a further extension oftime, to and including February 6, 2002,
`
`to file a Notice of Opposition against the above-identified application.
`
`The extension is needed to allow Petitioner to continue its investigation to determine if
`
`opposition is warranted, to confer with counsel, and to prepare the opposition papers, if necessary.
`
`

`
`This request is not made for the purpose of unduly delaying proceedings in the Patent and
`
`Trademark Office.
`
`This request is submitted in triplicate.
`
`Respectfiilly submitted,
`
`TBC CORPORATION
`
`By;
`
`Marsha G. Gentner
`
`JACOBSON HOLMAN PLLC
`
`400 Seventh Street, N.W.
`Washington, D.C. 20004
`(202) 638-6666
`
`Date:
`
`January 7, 2002
`
`Atty. Dkt. No.: 1952/I-4570
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`February 4, 2002
`
`Applicant:
`Serial No.:
`Filed:
`
`Imcoa Licensing America,
`76/273,017‘
`June 18, 2001
`
`Inc.
`
`Mark:
`
`Indian Spirit
`
`Marsha G. Genter
`
`Jacobson Holman, PLLC
`400 Seventh Street, NW
`
`Washington, DC
`
`20004
`
`Sir:
`
`The requests for extension of time to oppose, filed under
`Trademark Rule 2.102 on behalf of TBC Corporation (copies
`attached), were timely filed but are just now being acted
`on.
`The Board regrets the delay and any resulting
`inconvenience caused to the potential opposer or to
`applicant.
`
`The requests for extension of time to oppose are granted.
`If any further request for extension of time to oppose or
`any notice of opposition was filed on or before February 6,
`2002, it will be considered as having been timely filed.
`
`I
`
`I
`
`r
`
`Re pectf lly,
`
`Abe
`
`
`
`
`
`Legal Assistant
`Trademark Trial and
`
`Appeal Board
`(703) 308-9300 ext. 134
`
`CC:
`
`Jennifer Lee Taylor
`Morrison & Foerster LLP
`425 Market Street
`
`San Francisco, CA
`
`94105—3482
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`lllllllIlllllllllIIHIlllllllllllllllllllllllllll
`o2_o6_2oo2
`U.B. Paum I. TMorcn’M Mail fiepg, us, no
`
`;
`)
`
`) )
`
`) Opposition No.
`)
`
`) )
`
`)
`
`lg};-.:fi‘]:tiSc,)IL)LC (by assignment from
`
`Opposer,
`
`v.
`
`IMCOA LICENSING AMERICA, INC.,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`In the matter of an application to register a trademark under the Trademark Act of 1946,
`
`Serial No. 76/273,017, filed June 18,2001, in the name of Imcoa Licensing America, Inc., published
`
`for opposition in the Trademark Official Gazette of October 9, 2001, Vol. 1251, No. 2, at page
`
`TM 350, for the mark INDIAN SPIRIT, the Opposer, TBC Brands, LLC, believes it will be
`
`damaged by registration of said alleged trademark and hereby opposes same. The grounds for
`
`opposition are as follows:
`
`1.
`
`The Opposer, TBC Brands, LLC, is a limited liability company duly organized and
`
`existing under the laws ofthe State of Delaware and having its place ofbusiness at 639 Isbell Road,
`
`Suite 390, Reno, Nevada 89502. TBC Brands LLC is the successor in interest to the marks claimed
`
`herein (by assignment) of TBC Corporation, who, in turn, is the licensee of TBC Brands, LLC.
`
`(TBC Brands, LLC and TBC Corporation are hereafter collectively referred to as “TBC”.) TBC
`
`distributes and sells a variety of motor vehicle products and services.
`
`I210?/2002 TSIIITH
`
`00300097
`
`3017
`onaiwmgongng prior to the date offirst use ofthe application opposed herein, TBC has,
`
`and is now, engaged in the production, distribution and sale of vehicle products in commerce in the
`
`United States, under and in connection with the trademarks GRAN ESPRIT, GRAND SPIRIT and
`
`

`
`WILD SPIRIT [hereinafter sometimes referred to as 0pposer’s “SPIRIT Mark(s)"]. TBC
`
`continuously has used Opposer's SPIRIT Mark(s), in commerce in connection with vehicle products
`
`produced, advertised, offered for sale, and sold by TBC, and to identify and designate same, and to
`
`distinguish those goods from those of others.
`
`3.
`
`Opposer TBC is the owner of, and will rely on herein, the following U.S. trademark
`
`
`
`
`
`
`
`
`
`registrations:
`
`
`
`
`
`Said registrations are valid and subsisting, and constitute conclusive (or in the case of registration
`
`no. 2,151,303, primafacie) evidence of Opposer TBC's ownership of Opposer's SPIRIT Mark(s),
`
`and exclusive right to use same in commerce in connection with the goods set forth in said
`
`registrations, tires.
`
`4.
`
`Since TBC's initial use ofOpposer's SPIRIT Mark(s), TBC has used, and advertised,
`
`produced and offered its goods under and in connection with said marks to the public, through
`
`various channels of trade, and in commerce, with the result that TBC's customers and the public in
`
`general have come to know and recognize said marks of Opposer and associate same with TBC
`
`andfor the goods produced, advertised, marketed, distributed, and sold directly or indirectly by
`
`Opposer TBC. TBC thus has built up goodwill in connection with the sale of its products under
`
`Opposer's SPIRIT Mark(s).
`
`
`
`

`
`5.
`
`On June 18, 2001, Applicant filed an application to register the mark INDIAN
`
`SPIRIT. Said application was accorded serial no. 76/273,0l7and was published for opposition in
`
`the Official Gazette of October 9, 2001, at page TM 350, identifying the goods as “motorcycles.”
`
`6.
`
`The opposed mark sought to be registered by Applicant is a colorable imitation of,
`
`and so resembles, Opposer's prior and aforesaid SPIRIT Mark(s) as to be likely, when used in
`
`connection with the goods of Applicant, to cause confusion or mistake or to deceive customers,
`
`thereby resulting in damage and detriment to TBC, its SPIRIT Mark(s) and/or business.
`
`7.
`
`The goods set forth in the application opposed herein identical and/or similar and/or
`
`related to, the goods in connection with which TBC uses Opposer's SPIRIT Mark(s), and on
`
`information and belief, the goods set forth in the opposed application are and/or will be sold through
`
`the same andfor similar channels of trade, and/or to the same general class of purchasers, in and to
`
`which TBC's products are marketed andfor sold.
`
`8.
`
`The registration andfor use of the mark set forth in the application opposed herein,
`
`is likely to cause confusion, mistake, and/or to deceive as to origin, sponsorship, and/or association
`
`of Applicant's goods to be sold under the said mark sought to be registered by Applicant vis-a-vis
`
`Opposer and/or Opposer's SPIRIT Mark(s) andfor to mislead purchasers of Applicant's and/or
`
`Opposer's goods, and/or the public in general, into believing that Applicant's goods are sold by,
`
`emanate from, and/or in some way, directly or indirectly, are associated with TBC, and/or Opposer's
`
`SPIRIT Mark(s), or products, or vice versa, to the damage and detriment of TBC.
`
`9.
`
`By virtue of the foregoing, TBC believes it will be damaged by the registration by
`
`Applicant of the mark set forth in the application serial no. 76/273,017.
`
`
`
`

`
`10.
`
`If Applicant is granted the registration opposed herein, and Applicant obtains such
`
`rights as conferred under the Principal Register of the Trademark Act of 1946, Applicant will obtain
`
`unlawful gain and advantage to which it is not entitled under the Trademark Act of 1946, to the
`
`detriment and harm of Opposer.
`
`WHEREFORE, this Opposer, TBC Brands, LLC, believes and alleges that it will be damaged
`
`by registration of the INDIAN SPIRIT mark of application serial no. 7'6/273,017, as aforesaid, and
`
`prays that:
`
`B.
`
`C.
`
`D.
`
`judgment in the present opposition be entered in favor of Opposer;
`
`the present opposition be sustained; and
`
`registration of application serial no. 76/273,017 be rejected and refused.
`
`Respectfully submitted,
`
`TBC BRANDS LLC (by assignment from
`TBC Corporation)
`
`Date: February 6, 2002
`
`By:
`
`Marsha G. Gentner
`
`JACOBSON HOLMAN PLLC
`
`400 Seventh Street, N.W.
`Washington, D.C. 20004
`(202) 638-6666
`
`

`
`HARVEY B. JACOESON. JR.
`-JOHN CLARKE HOLMAN
`SIMOR L. MOSKOWITZ
`ALLEN S. MELSER
`MICHAEL R. SLOBASKY
`MARSHA G. GENTNER
`JONATHAN L. SCHEFIER
`IRWIN M. AISENBERG
`GEORGE W. LEWI5
`WILLIAM E. PLAYER
`‘(CON 5. HAM
`FHILIF L. O'NEILL
`LINDA J. SHAPIRO
`LEESA N. WEISS
`SUZIN C. BAILEY‘
`MATTHEW .J. CUCCIAS
`DANIEL K. DORSEY
`SUZANNAH K. SUNDBY'
`
`
`
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`JACOBSON HOLMAN
`PROFESSIONAL LIMITED LIABILITY COMPANY
`
`400 SEVENTH STREET. N. W.
`
`WASHINGTON. D. C. 20004
`I202! 6138-5666
`
`February 6, 2002
`
`JACOBSON HOLMAN STERN
`OF COUNSEL
`MAFIVIN FI. STERN
`NATHANIEL A. HUMPHRIE5
`TELEFAXz
`(202) 393-5350
`IEOEI 393-5 3 5|
`IEOEI 393-5352
`E- MAIL: IPQJHIRCOIII
`INVERNET: WWW.JHlP.CDM
`‘BAR OTHER THAN DC
`
`IIIIIMIIlIIIlIlIIIllIIHIIlIIlIIIlllIIIlIIlIlllII
`02-06-2002
`
`U.8.
`
`Pnunll TMO1’cf'I'M Mail Rcpt. O1. #40
`
`RE:
`
`New Opposition
`TBC Brands, LLC (by assignment
`from TBC Corporation) v. Imcoa Licensing America, Inc.
`INDIAN SPIRIT — Serial No. 76/273,017
`Our Ref.: I952/I-4570
`
`Sir:
`
`We enclose the following for filing in the Patent and Trademark Office:
`
`__x_
`
`Notice of Opposition (in duplicate)
`Notice of Appeal
`
`Also enclosed is our check for the required filing fee in the amount of $300.00. Should this
`check become detached, or the amount be insufficient, please charge our Deposit Account, No. 06-
`1358.
`
`Respectfully submitted,
`
`Marsha G. Gentner
`
`MGG/tlb
`
`Enclosures
`
`\.
`
`
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`February 26, 2002
`
`Opposition No 125, 235‘
`
`Serial No. 76/273,017
`
`Marsha G. Gentner
`Jacobson Holman PLLC
`
`TBC BRANDS, LLC
`
`400 Seventh Street, NW
`
`v.
`
`Washington, DC
`
`20004
`
`IMCOA LICENSING AMERICA,
`
`Inc.
`
`in the
`A notice of opposition to the registration sought
`above—identified application has been filed.
`A copy of the
`notice is attached.
`
`ANSWER IS DUE FORT! DAYS after the mailing date hereof.
`(See Patent and Trademark Rule 1.7 for expiration date
`falling on Saturday, Sunday or a holiday).
`
`Proceedings will be conducted in accordance with the
`Trademark Rules of Practice, set forth in Title 37, part 2,
`
`The parties are
`of the Code of Federal Regulations.
`reminded of the recent amendments to the Trademark Rules
`
`that became effective October 9, 1998.
`
`See Notice of Final
`
`Rulemaking published in the Official Gazette on September
`29, 1998 at 1214 TMOG 145. Slight corrections to the rules,
`resulting in a correction notice, were published in the
`Official Gazette on October 20, 1998 at 1215 TMOG 64.
`
`A
`
`copy of the recent amendments to the Trademark Rules, as
`well as the Trademark Trial and Appeal Board Manual of
`Procedure (TBMP),
`is available at http://www.uspto.gov.
`
`

`
`Discovery and testimony periods are set as follows:
`
`Discovery period to open:
`
`March 18, 2002,¢
`
`Discovery period to close:
`
`September 14, 2002
`
`30—day testimony period for party
`in position of plaintiff to close:
`
`December 13, 2002
`
`30-day testimony period for party
`in position of defendant
`to close:
`
`February 11, 2003
`
`15-day rebuttal testimony period
`for plaintiff to close:
`
`March 28, 2003
`
`A party must serve on the adverse party a copy of the
`transcript of any testimony taken during the party's
`testimony period,
`together with copies of documentary
`exhibits, within 30 days after completion of the taking of
`such testimony.
`See Trademark Rule 2.125.
`
`Briefs shall be filed in accordance with Trademark Rule
`2.l28(a) and (b).
`An oral hearing will be set only upon
`request filed as provided by Trademark Rule 2.129.
`
`The Board allows parties to utilize telephone
`NOTE:
`conferences to discuss or resolve many interlocutory matters
`that arise in inter partes cases.
`See the Official Gazette
`notice titled “Permanent Expansion of Telephone Conferencing
`on Interlocutory Matters in Inter Partes Cases Before the
`Trademark Trial and Appeal Board,” 1235 TMOG 68
`(June 20,
`2000).
`A hard copy of the Official Gazette containing this
`notice is available for a fee from the Superintendent of
`Documents, U.S. Government Printing Office, Washington, D.C.
`20402 (Telephone (202) 512-1800).
`The notice is also
`available at http://www.uspto.gov.
`Interlocutory matters,
`which the Board agrees to discuss or decide by phone
`conference may be decided adversely to any party, which
`fails to participate.
`
`

`
`If the parties to this proceeding are also parties to other
`Board proceedings involving related marks or, during the
`pendency of this proceeding,
`they become parties to such
`proceedings,
`they should notify the Board immediately,
`so
`that the Board can consider consolidation of proceedings.
`
`p
`
`.1;
`
`I”?/rt
`
`Kimberly’L{nt3n/
`Legal Assistant,
`Trademark Trial and
`
`Appeal Board
`(703) 308-9300, ext.134
`
`Jennifer Lee Taylor
`Morrison & Foerster LLP
`425 Market St
`
`San Francisco, CA
`
`94105-2482
`
`

`
`l\
`
`‘J
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE O
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`'23’
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`
`1 0-08-2002
`U.S. Palent & TMOICITM Mail Rcpl D1. #39
`
`
`
`TBC CORPORATION),
`
`Opposer,
`,_
`
`
`
`IMCOA LICENSING AMERICA, INC.,
`
`
`
`Applicant.
`
`OPPOSERS’ MOTION TO SUSPEND
`
`COMES NOW the Opposer, TBC Brands, LLC., through its undersigned counsel, and
`
`hereby moves for an Order from the Trademark Trial and Appeal Board (the “Board”)
`
`suspending these proceedings.
`
`The parties are exploring settlement options which may have the effect of resolving all
`
`matters pending before the Board.
`
`Applicant’s counsel, Gloria Y. Lee, suggested such suspension and consented to this
`
`request in a telephone conversation with the under-signed on October 7, 2002.
`
`The parties also agreed to suspend the deadline for responding to outstanding written
`
`discovery requests.
`
`This request is submitted in triplicate.
`
`

`
`WHEREFORE all of the foregoing reasons, Opposer respectfully requests that the Board
`
`grant its Motion for suspension.
`
`Respectfully submitted,
`
`TBC BRANDS
`
`Date: October 8, 2002
`
`By:
`
`
`
`Marsha G. Gentner
`
`Matthew J. Cuccias
`
`JACOBSON HOLMAN, PLLC
`
`400 Seventh Street, N.W.
`
`Washington, D.C. 20004
`(202) 638-6666
`
`Attorneys for Opposer
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 8"‘ day of October, 2002, a true copy ofthe foregoing Motion for
`Suspension was served by facsimile (415) 268-7522; and by first-class mail, postage prepaid, upon
`counsel for Applicant:
`
`Jennifer Lee Taylor
`Gloria Y. Lee
`
`Morrison & Foerster LLP
`
`425 California Street
`
`San Francisco, California 94105-2482
`
`

`
`UNITED STATES DEPARTI-EENT OF COMMERCE
`Patent and Trademark Office
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Mailed: December 2, 2002
`
`Opposition No. 91125235
`
`TBC BRANDS, LLC
`
`V.
`
`IMCOA LICENSING AMERICA,
`
`INC.
`
`Shirley Hassan, Paralegal Specialist
`
`Because the parties are negotiating for a possible
`
`settlement of this case, proceedings herein are suspended
`
`until six months from the mailing date of this action, subject
`
`to the right of either party to request resumption at any
`
`time.
`
`See Trademark Rule 2.ll7(c).
`
`In the event that there is no word from either party
`
`concerning the progress of their negotiations within the next
`
`six months,
`
`the Board will issue an order resuming proceedings
`
`and resetting the time for applicant to file an answer or
`
`other response to the notice of opposition,
`
`including
`
`resetting discovery and trial dates.
`
`If, during the suspension period, either of the parties
`
`or their attorneys should have a change of address,
`
`the Board
`
`should be so informed.
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`AMERICAN HONDA MOTOR CO., INC.
`
`
`
`Opposer,
`
`V.
`
`Opposition No. 121,151
`
`TBC CORPORATION,
`
`
`Applicant.
`
`APPLICANT‘S RESPONSE TO FIRST SET OF
`
`REQUEST FOR ADMISSIONS TO APPLICANT (Nos. 1-111
`
`Applicant, TBC Corporation, hereby submits the following responses to Opposer’s Requests
`
`for Admissions.
`
`GENERAL OBJECTIONS
`
`The General Objections interposed in App1icant’s Responses to Opposer’s First Set of
`
`Interrogatories are incorporated by reference herein.
`
`RESPONSES TO REQUESTS FOR ADMISSIONS
`
`1.
`
`Admit that OPPOSER has prior rights to the mark SHADOW.
`
`Response:
`
`Applicant objects to this request as vague and indefinite. Subject to, and without
`
`waiver of, its objections and to the extent understood, DENIED.
`
`2.
`
`Admit that APPLICANTS TRADEMARK is confusingly similar to OPPOSER‘S
`
`trademarks .
`
`

`
`
`
`Response:
`
`Applicant objects to this request as vague and indefinite. Subject to, and without
`
`waiver of, its objections and to the extent understood, DENIED.
`
`3. A
`
`Admit that OPPOSER'S trademarks are “tarnous” as that term is understood in 15 USC §
`
`1125(0).
`
`Response:
`
`Applicant objects to this request as compound, vague and indefinite. Subject to, and
`
`without waiver of, its objections and to the extent understood, after reasonable investigation, TBC
`
`lacks sufficient information to admit or deny this request for admission.
`
`Admit that APPLICANTS trademark dilutes the distinctive nature of OPPOSER's
`4.
`trademarks.
`
`Response:
`
`Applicant objects to this request as vague, indefinite, and assumes facts not in
`
`evidence. Subject to, and without waiver of, its objections and to the extent understood, DENIED.
`
`Admit that APPLICANT is engaged in the business of distributing products in the
`5.
`automotive replacement market, including, but not limited to, auto and truck tires and tubes.
`
`Response:
`
`Applicant objects to this request as vague and indefinite. Subject to, and without
`
`waiver of,
`
`its objections and to the extent understood, Applicant admits that
`
`it distributes
`
`replacement auto and truck tires.
`
`Admit there is a likelihood of confusion between OPPOSER'S trademarks and
`6.
`APPLICANTS TRADEMARK.
`
`

`
`
`3.
`
`Response:
`
`Applicant objects to this request as vague, indefinite, and assumes facts not in
`
`evidence. Subject to, and without waiver of, its objections, DENIED.
`
`Admit that APPLICANT has applied for registration for SHADOW in connection with goods
`7. _
`in International Class 12.
`"I
`
`Response:
`
`Applicant objects to this request as vague and indefinite, and the opposed application,
`
`including the mark and goods, is of record in this Opposition.
`
`8.
`
`Admit that OPPOSER will be damaged by registration of the opposed application.
`
`Response:
`
`DENIED.
`
`9.
`
`Admit that OPPOSER is the owner of the United States trademarks registrations Nos.
`
`1604515, 2202312, 2260820, 2363335, 2285785, 2282187, and 2151691.
`
`Response:
`
`Applicant objects to this request as vague, indefinite, and assumes facts not in
`
`evidence. Subject to and without waiver of, its objections and to the extent understood, after
`
`reasonable investigation, Applicant lacks sufficient information to admit or deny this request for
`
`admission.
`
`Admit that OPPOSER has widely promoted, advertised and sold SHADOW, SHADOW
`l0.
`AERO and SHADOW AMERICAN CLASSIC EDITION motorcycles and structural parts therefore
`in commerce for many years prior to APPLICANTS application.
`
`Response:
`
`Applicant objects to this request as vague, indefinite, and assumes facts not in
`
`evidence. Subject to, and without waiver of, its objections and to the extent understood, after
`
`reasonable investigation, Applicant lacks sufficient information to admit or deny this request for
`
`admission.
`
`1 1.
`
`Admit that OPPOSER maintains a comprehensive licensing program where its marks are
`used in conjunction with t—shirts, jewelry, and other merchandise.
`
`-3-
`
`

`
`
`
`Response:
`
`Applicant objects to this interrogatory as incomprehensible, vague,
`
`indefinite,
`
`irrelevant and assumes facts not in evidence.
`
`Respectfully submitted,
`
`TBC CORPORATION
`
`Marsha. G. Gentner
`Matthew J. Cuccias
`
`JACOBSON HOLMAN PLLC
`
`400 Seventh Street, N.W.
`
`Washington, DC 20004
`(202) 638-6666
`Attorneys for Applicant
`
`October 9, 2001
`
`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY that I have caused a true and correct copy of the foregoing
`
`APPLICANTS RESPONSE TO FIRST SET OF REQUEST FOR ADMISSIONS TO APPLICANT
`
`(Nos. 1-1 1), in connection with Opposition No. 121,151 -- American Honda Motor Co., Inc. v. TBC
`
`Corporation, to be served by first—class mail, postage prepaid, upon counsel for Opposer:
`
`Mina Hamilton, Esquire
`David N. Makous, Esquire
`Lewis, D’Amato, Brisbois & Bisgaard LLP
`
`221 North Figueroa Street
`Suite 1200
`
`Los Angeles, California 90012
`
`this 9”‘ day of October, 2001.
`
`

`
`
`
`D.
`
`Applicant reserves any and all objections to admissibility at trial of any of the
`
`Exhibits attached or referred to in Opposer’s Second Requests for Admissions, except for an
`
`objection challenging the authenticity of any Exhibit established by the following responses of
`
`Applicant.
`
`E.
`
`Applicant’s objections herein are made without prejudice of Applicant to offer
`
`evidence on its behalf and/or to obj ect to the relevance, competence or admissibility of any evidence
`
`offered by Opposer at trial.
`
`F.
`
`- Applicant’s responses are made without prejudice to the right of Applicant to make -
`
`additional or modified answers should additional information become available to Applicant.
`
`REQUESTS
`
`12.
`
`Each of Exhibits 1 - 18 (documents labeled as TBC 000001 - 18, respectively) depicts one
`
`or two labels used by Applicant TBC Corporation on, or in connection with, certain of
`
`Applicant TBC Corporation's tires.
`
`Response:
`
`Applicant objects to this request as vague, indefinite, and compound. Subject to, and without
`
`waiver of, its objections, ADMIT, except that TBC 000003 appears to be a black and white
`
`photocopy.
`
`13.
`
`Each of Exhibits 19 - 21 (documents labeled as TBC 000106, TBC 000109, TBC 000115,
`
`respectively) depicts one or more tires ofApplicant TBC Corporation onto the side of which
`
`the word SHADOW is molded.
`
`

`
`
`
`
`
`
`
`Request Ex. No. 1Request Ex. No. 1
`
`

`
`
`
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`
`.
`
`‘AVAILABLE FHOH FIMA. 1400 K STREET: N.W.. WASHINGTON, DI: 20003
`
`TBC CORPORATION
`20. BOX1B342
`MEMPHIS, TN 33131-0332
`
`
`
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`ALL SEASON STEEL
`DELTED RADIAL
`
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`
`
`
`P185/70R14
`
`87$
`
`' POLYESTEFIISTEEL
`
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`
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`
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`
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`
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`
`PASSENGER TIRE MOUNTING SAFETY WARNING
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`hazard: lnvalud which cm uuu wine: personal lnfury. Thls haurdoul work ls | job
`lor trnlnnd unrir.-0 personnel. The following art may pnuullcna. not lnnuuullonu
`on how In rnounl tlru. Tha mounting mocuduru and sunny prucuullonn an thu
`RM5 Tire Dnmoumlnn and Mounllng Wall chm‘ mutt ha Jollownd.
`1.NE\l'El'«l_ rnaunl tire: on rlrn_s which an damaged at no! nrnuolh Ind clnn.
`LALWAYS In sun [hat rim dlnmntur and my dlnmalur are thu nmc.
`8. ALWAYS lubrlull both bud: Ind rim llnngan wlth an nppruvud lubricant.
`AAUNAYS lock the llrelrlm Isumbly on mounting machine when
`lnllaung mdlur unsung tho bands.
`5.N.Jl'lAYS use clip-on chuck and extension gauge on nlr hon when
`Inllaxlng nndlor neallng beads.
`B.NEVEl'l stand nexl to or lean over llrclrlrn anombly whln lnllatlng.
`T.NE\fEFl Ixccid 40 PSI preuurn to seal bends.
`B.ALwAVs altar buds haw nntud. Idlusl lo moornmondod lrtflallon preuun.
`B.AL\'l'AVs follow ml: and match who on conalructloru.
`WARNING - FAILURE TO FOLLOW THE ABOVE AND THE FIMN5 MOUNTING
`PFIOCEDIJRES AND SAFETY PRECAUTIONS CAN RESULT IN SERIOUS PERSONAL
`INJUFIY OH DEATH.
`
`'
`
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`
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`
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`
`‘AVAILABLE FROM EMA. 1400 K STREET} N.W.. WASHINGTON, DC 26003
`
`-
`TBC CORPORATION
`P.O. BOX 18342
`IIIIEMPHIS. TN 38181-0342 I
`9-02 I4
`
`

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