`
`it 7‘
`\
`
`7
`SWIDLER BERLIN SHEREFF FRIEDMAN, LLP
`
`THE WASHINGTON HARBOUR
`3ooo K STREET, NW, SUITE 3oo
`WASHINGTON, DC 20007-5116
`TELEPHONE (2o2)424-75oo
`FACSIMILE (202) 295-8478
`VVVV\V.SVVHDLANVl:Ohd
`
`THE
`405 LEXINGTON AVENUE
`NEW YORK, NY 10174
`(212) 973-0111 FAX (212) 891-9598
`
`
`
`~79
`
`.>
`
`um’ I 2 1003 it
`
`MATTHEW A. PATER
`DIRECT DIAL (202) 424-77 7
`MAPATER@swIDLAw.coM _
`
`Commissioner for Trademarks
`
`BOX TTAB/N0 FEE
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Re.:
`
`Opposition No. 91 155470
`Serial NO. 76/415342 for “BROMPTONS”
`Our Ref.: 20627.000l
`
`Sir/Madam:
`
`‘ ‘
`‘
`_
`_
`
`10-22-2003
`“-3- Parents. TMOfc/TM Mail R pro6
`
`1. we
`
`Enclosed please find the following documents in connection with the above-identified
`
`matter:
`
`0 Opposer’s Memorandum of Law in Opposition to Applicant’s Motion for Summary
`Judgment
`Smith Development, Inc.’s Responses to Ed Peete Company’s Statement of Undisputed
`Facts in Support of Its Motion for Summary Judgment
`
`0
`
`No fee is believed to be due for this filing. However, the Commissioner is hereby
`authorized to charge any fee required for filing this Memorandum of Law, and charge any
`additional fees or credit any overpayment, to Deposit Account No. 19-5127. Please refer to our
`attorney reference number (20627.0001) in connection with any charges to this deposit account
`for the above—identified matter. A duplicate of this letter is submitted for this purpose.
`
`Respectfully submitted,
`SWIDLER BERLIN S
`
`REFF FRIEDMAN, LLP
`
`
`
`Date: October 22, 2003
`
`Matthew A. Pater
`
`SWIDLER BERLIN SHEREFF FRIEDMAN, LLP
`
`3000 K Street, N.W.
`Suite 300
`
`Washington, D.C. 20007-5116
`(202) 424-7500
`
`9l00366v1
`
`

`

`3‘
`
`-
`
`-t
`
`SWIDLER BERLIN SHEREFF FRIEDMAN, LLP
`
`MATTHEW A. PATER
`D1REcr DIAL (202) 424-7727
`MAPATER@sw1DLAw.coM
`
`THE WASHINGTON HARBOUR
`3000 K STREET, NW, SUITE 300
`WASHINGTON,
`20007'5116
`TELEPHONE (202)424-7500
`FACSIMILE (202) 295-8478
`WWW.SWIDLAW.COM
`
`THE
`405 LEXINGTON AVENUE
`NEW YORK, NY 10174
`(212) 973-0111 FAX (212) 891-9598
`
`Commissioner for Trademarks
`
`BOX TTAB/NO FEE
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Re.:
`
`Sir/Madam:
`
`_
`_
`Opposition No. 91155470
`Serial No. 76/415342 for “BROMPTONS”
`Our Ref.: 20627.0001
`
`*"’
`
`K _/ 2, -
`\\\\\\\\
`1 //e "0' i K
`\\\\\\\\\\\\\\\
`\\\\\\\\\\\\\\\\\\\\\\\\\\\
`3
`to-23300 a‘\\RcntDt.#76
`Us ,,.,ma.w°*°"”‘“
`
`Enclosed please find the following documents in connection with the above-identified
`
`matter:
`
`0 Opposer’s Memorandum of Law in Opposition to App1icant’s Motion for Summary
`Judgment
`Smith Development, Inc.’s Responses to Ed Peete Company’s Statement of Undisputed
`Facts in Support of Its Motion for Summary Judgment
`
`0
`
`No fee is believed to be due for this filing. However, the Commissioner is hereby
`authorized to charge any fee required for filing this Memorandum of Law, and charge any
`additional fees or credit any overpayment, to Deposit Account No. 19-5127. Please refer to our
`attorney reference number (20627.0001) in connection with any charges to this deposit account
`for the above-identified matter. A duplicate of this letter is submitted for this purpose.
`
`Respectfully submitted,
`SWIDLER BERLIN S
`
`REFF FRIEDMAN, LLP
`
`
`Matthew A. Pater
`
`Date: October 22, 2003
`
`SWIDLER BERLIN SHEREFF FRIEDMAN, LLP
`
`3000 K Street, N.W.
`Suite 300
`
`Washington, D.C. 20007-5116
`(202) 424-7500
`
`9100366vl
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 76/415342
`For the mark BROMPTONS
`Published in the Official Gazette on January 21, 2003
`
`____________________________________________________________ __X
`
`Smith Development, Inc.,
`
`Opposer,
`
`—against-
`
`Ed Peete Company,
`
`.
`Applicant.
`______________________________________________________________X
`
`-
`
`:
`
`Opposition No.: 91155470
`
`f___ p
`
`M
`10-22-2003
`U'S' pawn‘ & TMOfcITM Ma“ Rent 0‘. #78
`
`OPPOSER’S MEMORANDUM OF LAW IN OPPOSITION TO
`APPLICANT’S MOTION FOR SUMMARY JUDGMENT
`
`Opposer, Smith Development, Inc. (“SDI”), submits this Memorandum of Law in
`
`Opposition to the Motion for Summary Judgment of Applicant, Ed Peete Company (“EPC”).
`
`1.
`
`PRELIMINARY STATEMENT
`
`EPC seeks summary in its favor on the grounds that there are no genuine issues of
`
`material fact and EPC is entitled to judgment as a matter of law dismissing SDI’s opposition
`
`against Application Serial No. 76/415342 with prejudice. Specifically, EPC alleges that “SDI
`
`lacks standing under 15 U.S.C. section 1053 to oppose EPC’s application because SDI assigned
`
`its rights in the Mark to The Bromptons, L.L.C. on September 4, 1996.”1 EPC’s claim that SDI
`
`lacks standing is based upon two assignment documents that EPC alleges assigned the
`
`BROMPTONS” mark (the “Mark”) from SDI to The Bromptons, L.L.C. (an entity in which both
`
` 1
`
`See EPC’s Motion 1] 6.
`
`9041 853vl
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`

`

`-»7
`
`-n
`
`SDI and EPC were members).2
`
`However, as shown herein, the documents that EPC alleges resulted in an assignment of
`
`the Mark from SDI to The Bromptons, L.L.C. in no way effected such an assignment, and in fact
`
`make no mention of trademark rights. Rather, these assignment documents were narrow
`
`agreements that transferred certain specific assets of SDI to The Bromptons, L.L.C. so that The
`
`Bromptons, L.L.C. could complete a specific construction project that SDI had begun. Further,
`
`SDI’s principal and sole shareholder, Kevin Smith, did not admit that SDI had assigned the Mark
`
`to The Bromptons, L.L.C. as EPC alleges. Mr. Smith’s statement of his belief at the time
`
`regarding ownership of the mark, which, contrary to EPC’s unfounded allegations, was made
`
`without the advice of counsel, is clearly irrelevant and not conclusive of the proper ownership of
`
`the mark. Mr. Smith possesses limited knowledge of trademark law and his statement was made
`
`solely in the context of his objections to EPC’s use of the Mark without the permission of SDI;
`
`use that had already begun causing actual confusion, as evidenced by the fact that the Arlington
`
`Planning Commission was contacting SDI and Mr. Smith regarding an EPC project that was
`
`using the Mark.
`
`Contrary to EPC’s claims, the use of the Mark by The Bromptons, L.L.C., and other later
`
`entities in which SDI and/or Mr. Smith, were members, was only with the permission of SDI.
`
`Through the participation of SDI and/or Mr. Smith in these entities, SDI maintained control over
`
`the nature and quality of the construction services with which the Mark was used, and thus, the
`
` 2
`
`See EPC’s Motion 1] 7. Even assuming for the sake of argument that these assignment documents somehow
`transferred the rights in the Mark from SDI to The Bromptons, L.L.C., EPC’s claim in its application that it has
`exclusive ownership of the Mark is unfounded. If The Bromptons, L.L.C. became the owner of the Mark, as alleged
`by EPC, none of the members or managers of The Bromptons, L.L.C. possessed any exclusive rights to the Mark
`under The Bromptons, L.L.C. Operating Agreement. See SDI’s Responses to EPC’s First Set of Interrogatories,
`Responses to Interrogatories 35, 36 (attached to SDI’s Responses to EPC’s Statement of Facts as Exhibit 1); The
`Bromptons, L.L.C. Operating Agreement (attached to SDI’s Responses to EPC’s Statement of Facts as Exhibit 4).
`Therefore, EPC would not be entitled to exclusive rights in the Mark, and claiming such rights or using the Mark
`would be in violation of the terms of the Operating Agreement.
`
`904l853v1
`
`2
`
`

`

`use of the Mark by these entities was in the nature of a license from SDI. SDI did not cease use
`
`of the mark as alleged by EPC, but rather, continued to exert ownership of the mark by
`
`authorizing other entities to use the mark and such uses inured to the benefit of SDI.
`
`Accordingly, there are genuine issues of material fact as to whether SDI assigned its rights in the
`
`Mark to The Bromptons, L.L.C., and thus, summary judgment is inappropriate.
`
`II.
`
`BACKGROUND
`
`A.
`
`Procedural History
`
`On June 10, 2002, EPC filed an application at the United States Patent and Trademark
`
`Office (“USPTO”) to register the Mark for use in connection with “construction services,
`
`including planning, layout and custom construction of residential and commercial properties,” in
`
`International Class 37 (Application Serial No. 76/415342)} Application Serial No. 76/415342
`
`was published for opposition in the Official Gazette of January 21, 2003. On February 12, 2003,
`
`SDI filed an application at the USPTO to register the Mark for use in connection with “land and
`
`real estate development and construction services, namely, planning, laying out, and custom
`
`construction of residential and commercial properties; real estate site selection services;
`
`construction management supervision services; consulting services in the field of commercial
`
`and residential construction;” in International Class 37 (Application Serial No. 76/490367).4 On
`
`February 20, 2003, SDI filed a Notice of Opposition against Application Serial No. 76/415342
`
`requesting denial of registration of that application on the grounds that registration and use of the
`
`Mark by EPC are likely to cause confusion, or to cause mistake, or to deceive, particularly as to
`
`the source or origin of the services with which EPC uses its mark, to induce purchasers to believe
`
`that the services offered by EPC are those of SDI, or are endorsed by, or are in some way
`
`
`
`4
`
`See 1] 36 of SDI’s Responses to EPC’s Statement of Facts.
`See 1] 37 of SDI’s Responses to EPC’s Statement of Facts.
`
`9041853v1
`
`3
`
`

`

`affiliated or associated with SDI. After institution of the opposition proceeding by the USPTO,
`
`the parties engaged in significant discovery until the EPC filed the instant motion on September
`
`3, 2003 and the Trademark Trial and Appeal Board (“TTAB”) issued an order on September 26,
`
`2003 suspending proceedings in this matter pending resolution of this summary judgment
`
`motion.5
`
`B.
`
`Factual Background
`
`In late 1995, SDI began development of a group of townhouses in Arlington, Virginia,
`
`which it called “Bromptons at Ballston.” This name was chosen by SDI’s principal and sole
`
`shareholder, Kevin Smith, along with his friends, Jordan Samuel and James Paresi.6 SDI initially
`
`used the Mark in a variety of ways common to the residential construction industry, including,
`
`advertising and promotion of the Bromptons and Ballston project, contracts and proposals with
`
`other service providers in connection with the development of this project, and documentation
`
`relating to Arlington County’s approval of the development.7 In early 1996 SDI began taking
`
`contractual deposits for the purchase of some of these townhouses.8
`
`On July 11, 1996, The Bromptons, L.L.C. was created as a Virginia limited liability
`
`company by SDI and its principal, Mr. Smith. EPC was not a part of The Bromptons, L.L.C. at
`
`the time of its creation.9 Prior to formation of The Bromptons, L.L.C., SDI and Mr. Smith
`
` 5
`
`SDI notes that there were several outstanding discovery requests pending between the parties at the time of
`suspension of proceedings in this matter, and that SDI filed a Stipulated Motion to Reschedule Time Periods on
`September 26, 2003, seeking an extension of the discovery period for the purpose of taking discovery depositions
`and a corresponding extension of all other time periods. Accordingly, SDI requests that the TTAB reset the time
`periods for responding to all outstanding discovery requests and grant a further extension of the discovery and
`testimony periods after resumption of proceedings in this matter.
`6
`See 111] 14, 21 of SDI’s Responses to EPC’s Statement of Facts.
`7
`See 11 22 of SDI’s Responses to EPC’s Statement of Facts.
`8
`See 1] 23 of SDI’s Responses to EPC’s Statement of Facts.
`9
`See 111} 16, 24 of SDI’s Responses to EPC’s Statement of Facts.
`
`9041 853vl
`
`4
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`

`

`developed all of the concepts and designs for the Bromptons at Ballston project. EPC was not
`
`involved in the Bromptons at Ballston project until it became a member of The Bromptons,
`
`L.L.C. in August 1996.”
`
`SDI and EPC signed the Operating Agreement for The Bromptons, L.L.C. on August 29,
`
`1996. This entity was created for the purpose of continuing and completing development of the
`
`Bromptons at Ballston project and was not intended to be an ongoing endeavor.” SDI allowed
`
`The Bromptons, L.L.C. to continue using the Mark because it was actively involved in this
`
`project and a member of that entity, thus allowing SDI to maintain control over the nature and
`
`quality of the project.” SDI did not consider the issue of a written license for use of the Mark at
`
`this time because of its active involvement in this project.” In connection with The Bromptons,
`
`L.L.C. stated purpose of completing the development of the Bromptons at Ballston project that
`
`SDI had begun, SDI entered into two limited assigmnents that transferred certain specific assets
`
`relating to that project to The Bromptons, L.L.C. to enable that entity to complete the project.”
`
`However, SDI retained other assets, including, vehicles, office equipment, and commercial
`
`charge and credit accounts, which were used in connection with the Bromptons at Ballston
`
`proj ect.”
`
`At settlement on September 4, 1996, SDI entered into an “Assignment of Development
`
`Plans and Rights” whereby SDI assigned all of its right, title, and interest in and to certain “plans
`
`and studies,” “professional development services contracts,” and “bonds, permits and licenses,”
`
`which are specifically defined in the assignment document, all relating to the Bromptons at
`
` 8
`
`”
`
`3EG5
`
`See 1] 25 of SDI’s Responses to EPC’s Statement of Facts.
`See 111] 15, 26 of SDI’s Responses to EPC’s Statement of Facts.
`See 1] 27 of SDl’s Responses to EPC’s Statement of Facts.
`See 11 13 of SDI’s Responses to EPC’s Statement of Facts.
`See 1] 28 of SDI’s Responses to EPC’s Statement of Facts.
`Id.
`
`904l853vl
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`

`

`Ballston project, to The Bromptons, L.L.C.” On the same date, SDI also entered into an
`
`“Assignment of Purchase and Sale Agreement,” whereby SDI assigned all of its right, title and
`
`interest in and to an August 10, 1995 Purchase and Sale Agreement between SDI and a third
`
`party for the purchase of certain real property.” The majority of the assets assigned by SDI to
`
`The Bromptons, L.L.C. in connection with the Bromptons at Ballston project by means of these
`
`assignment documents were then assigned by The Bromptons, L.L.C. to the lender providing the
`
`construction loan for the project, Reisterstown Federal Savings Bank, on September 4, 1996, by
`
`an Assignment ofPermits, Contracts, Plans, and Leases. This is customary in this industry.18
`
`In 1998, The Bromptons, L.L.C. Operating Agreement was amended twice to include
`
`development of additional pieces of property to the purpose of the L.L.C.” SDI and Mr. Smith
`
`were actively involved in the activities on the site of the Bromptons at Ballston project that The
`
`Bromptons, L.L.C. developed, while EPC’s principal, Mr. Peete, was rarely present or directly
`
`involved in the activities on the project site.”
`
`After The Bromptons, L.L.C., SDI and/or its principal, Mr. Smith, were involved in
`
`several additional entities created to develop and sell residential communities that used the Mark.
`
`While their respective interests in the later projects varied, SDI and/or Mr. Smith had interests in
`
`such projects. SDI and/or Mr. Smith continued to allow these entities to use the Mark in
`
`connection with the new developments because of their ongoing interest in those projects, which
`
`afforded SDI the ability to control the nature and quality of the projects offered under the
`
`Mark.” When EPC began using the Mark in connection with projects in which SDI and/or Mr.
`
` 3
`
`17
`18
`'9
`20
`21
`
`See 11] 5, 6, 29 of SDI’s Responses to EPC’s Statement of Facts.
`See 111] 7, 8, 9, 30 of SDI’s Responses to EPC’s Statement of Facts.
`See 1] 31 of SDI’s Responses to EPC’s Statement of Facts.
`See 11 32 of SDI’s Responses to EPC’s Statement of Facts.
`See 1] 33 of SDI’s Responses to EPC’s Statement of Facts.
`See 11 34 of SDI’s Responses to EPC’s Statement of Facts.
`
`904l853vl
`
`6
`
`

`

`Smith had no interest, SDI objected to that use by contacting EPC, and later by filing this
`
`opposition proceeding.”
`
`III.
`
`DISCUSSION
`
`A.
`
`Summary Judgment
`
`Summary judgment is appropriate only where there is “no genuine issue as to any
`
`material fact and that the moving party is entitled to judgment as a matter of law.”23 Summary
`
`judgment is not proper if the dispute about a material fact is “genuine,” that is, if the evidence is
`
`such that a reasonable jury could return a verdict for the non-moving party.“
`
`The party seeking summary judgment has the burden of demonstrating that there is no
`
`genuine issue ofmaterial fact and that it is entitled to judgment as a matter of law.25 Moreover,
`
`the nonmoving party must be given the benefit of all reasonable doubt as to whether genuine
`
`issues of material fact exist, and all inferences to be drawn from the undisputed facts must be
`
`viewed in the light most favorable to the nonmoving party.” “Summary judgment should not be
`
`granted unless the entire record shows a right to judgment with such clarity as to leave no room
`
`for controversy and establishes affirmatively that the adverse party cannot prevail under any
`
`circumstances.”27
`
`B.
`
`There Are Genuine Issues of Material Fact Regarding the Alleged
`Assignment of the Mark
`
`EPC has failed to meet its burden of demonstrating that there are no genuine issues of
`
`material fact and that it is entitled to judgment as a matter of law in this proceeding. The two
`
`
`
`See 11 35 of SDI’s Responses to EPC’s Statement of Facts.
`22
`Fed. R. Civ. P. 56(c); see also, Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Celotex Corp. v.
`23
`Catrett, 477 U.S. 317, 322 (1986); Copelands ’ Enterprises Inc. v. CNVInc., 945 F.2d 1563, 1565 (Fed. Cir. 1991).
`24
`See Anderson, 477 U.S. at 248; Copelands, 945 F.2d at 1565-66.
`25
`See e.g., Copelands ’, 945 F.2d at 1565.
`26
`See Copelands ’, 945 F.2d at 1565-66.
`27
`Chamberlain v. Denny ’s, Inc., 166 F.Supp.2d 1064, 1067 (D. Maryland 2001), quoting Phoenix Savings &
`Loan, Inc. v. Aetna Casualty C0., 381 F.2d 245, 249 (4th Cir. 1967).
`
`904l853vl
`
`7
`
`

`

`assignments that EPC alleges transferred rights in the Mark from SDI to The Bromptons, L.L.C.
`
`were extremely narrowly written assignments that clearly were intended to transfer only certain
`
`specific assets relating to one project from SDI to The Bromptons, L.L.C.” These assignment
`
`documents are unambiguous, and a review of these documents based on the four corners of the
`
`assignments, as required by the rules of contract construction, reveals that these assignments in
`
`no way contemplated a transfer of trademark rights or all the assets of SDI.” Rather, the
`
`assignments clearly demonstrate that SDI intended to transfer only certain assets relating to this
`
`project, while retaining other assets used in connection with this project, to the new limited
`
`liability company that SDI had created so that the new entity could complete a specific project
`
`that SDI had begun.”
`
`Further, EPC’s claim that an email written by SDI’s principal in 2002 is an admission
`
`that the Mark was assigned to The Bromptons, L.L.C. should be disregarded because extrinsic
`
`evidence is only admissible if a contract is ambiguous. By EPC’s own admission in the
`
`Memorandum in Support of its Motion for Summary Judgment, these assignments are not
`
`ambiguous.“ However, even if this email is found admissible, it still does not prove that SDI
`
`admitted the Mark had been assigned.
`
`Finally, EPC’s claims that SDI did not make use of the Mark after formation of The
`
`Bromptons, L.L.C. is simply not accurate. SDI and/or its principal, Mr. Smith were members of
`
`several additional entities following The Bromptons, L.L.C. that used the Mark in connection
`
`with residential development and construction services.” SDI allowed these other entities to use
`
`
`
`28
`29
`3°
`31
`32
`
`See 111] 5, 6, 7, 8, 9, 28, 29, 30 of SDI’s Responses to EPC’s Statement ofFacts.
`See 111] 6, 9, 28, 29, 30 of SDI’s Responses to EPC’s Statement ofFacts.
`Id.
`See e.g., EPC’s Memorandum of Law in Support of its Motion for Summary Judgment at pp. 7, 14.
`See 1111 11, 12, 27, 33, 34 of SDI’s Responses to EPC’s Statement of Facts.
`
`904l853vl
`
`8
`
`

`

`the Mark because SDI or Mr. Smith were members of those companies, and therefore were able
`
`to control the nature and quality of the services offered under the Mark.” Accordingly, the uses
`
`of the Mark by these other entities inured to the benefit of SDI.
`
`Because there are genuine issues of material fact in dispute, EPC has failed to meet its
`
`burden and summary judgment is not warranted in this matter.
`
`1.
`
`SDI did not assign the Mark to The Bromptons, L.L.C.
`
`As shown in The Bromptons, L.L.C. Operating Agreement, The Bromptons, L.L.C. was
`
`created by SDI for a specific purpose, namely, the development and sale of the Bromptons at
`
`Ballston proj ect.” In connection with the development of this project by The Bromptons,
`
`L.L.C., SDI transferred certain assets to The Bromptons, L.L.C. so that The Bromptons, L.L.C.
`
`would be able to complete its purpose.” EPC’s claim that the Assignment of Development Plans
`
`and Rights and the Assignment of Purchase and Sale Agreement Applicant’s argument presents a
`
`case of contract interpretation. “When a contract is complete on its face and is plain and
`
`unambiguous in its terms, a court is not free to search for its meaning beyond the contract
`
`itself.”36 “An ‘ambiguity’ is defined as ‘the condition of admitting of two or more meanings, of
`
`being understood in more than one way, or of referring to two or more things at the same
`
`time.7’737
`
`In the present instance, the terms of the Assignments are clear and unambiguous, and
`
`should be interpreted based on the four corners of the documents.” EPC never claims in its
`
`
`
`See 1111 11, 12, 27, 33, 34 of SDI’s Responses to EPC’s Statement of Facts.
`33
`See 1111 15, 26 of SDI’s Responses to EPC’s Statement of Facts.
`34
`See W 6, 9, 26, 28, 29, 30 of SDI’s Responses to EPC’s Statement of Facts.
`35
`Aetna Casualty and Surety Company v. Fireguard Corporation, 249 Va. 209, 215, 455 S.E.2d 229, 232
`36
`(1995). See also, Golding v. Floyd, 261 Va. 190, 192, 539 S.E.2d 735, 736 (2001) (“It is firmly established that,
`when the terms of a contract are clear and unambiguous, a court is required to construe the terms according to their
`plain meaning”)
`37
`Id. at 215 (quoting Webster’s Third New International Dictionary 66 (3d ed. 1976).
`3*
`See 111] 6, 9, 29, 30 of SDI’s Responses to EPC’s Statement of Facts.
`
`9041 853vl
`
`9
`
`

`

`Memorandum of Law in support of the Motion for Summary Judgment that the meaning of the
`
`assignment documents is ambiguous, and in fact, several times refers to the “plain language of
`
`the Assignments.”39 The Assignments make no mention of any transfer of trademark rights.
`
`Instead, those assignments were narrowly constructed to transfer only certain tangible assets of
`
`SDI, which are explicitly set out and defined in those documents, to The Bromptons, L.L.C. in
`
`order to allow that entity to operate and develop this specific project.4° Clearly, the plain
`
`language of the assignments demonstrates that no transfer of trademark rights was contemplated
`
`by the parties.“ Therefore, to overcome the fact that the assignments clearly did not contemplate
`
`an assignment of trademark rights, EPC has attempted to claim that the assignment occurred
`
`because SDI assigned the good will associated with the Mark to The Bromptons, L.L.C.
`
`A trademark carmot be sold or assigned apart from the good will with which the mark has
`
`been associated.“ Extending from the inseparability of a trademark and its associated goodwill,
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`a sale of the entire business in which a trademark is used transfers title in the trademark.“
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`However, when the sale involves less than the entire business, courts look to see whether the
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`assets are purchased are sufficient to enable the buyer to “go on in real continuity with the
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`past.”44 The facts in the present instance clearly demonstrate that SDI did not transfer the good
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`will associated with the Mark to The Brompton’s, L.L.C.
`
`The Bromptons, L.L.C. Operating Agreement explicitly describes the specific project for
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`which that entity was created.“ The Bromptons, L.L.C. was not intended to be an ongoing
`
`
`
`39
`4°
`41
`‘*2
`43
`4‘
`45
`
`See e.g., EPC’s Memorandum of Law in Support of its Motion for Summary Judgment at pp. 7, 14.
`See -my 6, 9, 28, 29, 30 of SDI’s Responses to EPC’s Statement of Facts.
`See 1111 6, 9, 29, 30 of SDI’s Responses to EPC’s Statement of Facts.
`See Guth Chocolate Co. v. Guth, 224 F. 932 (4“' Cir. 1915).
`J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 18:23, at 18-42, 43 (2002).
`Id. at 18-43.
`See 111] 15, 26 of SDI’s Responses to EPC’s Statement of Facts.
`
`904l853vl
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`endeavor, but rather, simply an entity created to develop one specific proj ect.“ In order to allow
`
`the new entity (The Bromptons, L.L.C.) that it created to complete the Bromptons at Ballston
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`project SDI had begun, SDI needed to assign some of its assets that related to that project to the
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`new entity.“ However, SDI retained other assets, such as vehicles, office equipment, and
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`commercial charge and credit account, which were used in connection with the Bromptons at
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`Ballston proj ect.“ The fact that The Bromptons, L.L.C. was never intended to be an ongoing
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`entity shows that it would have been illogical for SDI to transfer the good will associated with
`
`the Mark to a temporary entity created solely to complete a single project. EPC’s argument that
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`the assignment documents somehow transferred the good will associated with the Mark from
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`SDI to The Bromptons, L.L.C. is even more illogical in View of the fact that the same assets of
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`SDI that were associated with the Bromptons at Ballston project and were transferred to The
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`Bromptons, L.L.C. were thereafter assigned by The Bromptons, L.L.C. to the Reisterstown
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`Federal Savings Bank in connection with the construction loan granted by that bank to The
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`Bromptons, L.L.C.” Under EPC’s theory, because transfer of these assets from SDI to The
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`Bromptons, L.L.C. transferred the good will associated with the Mark, and thus effected an
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`assignment of the Mark, transfer of these assets from The Bromptons, L.L.C. to Reisterstown
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`Federal Savings Bank would also have transferred the good will associated with the Mark, and
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`thus Reisterstown Federal Savings Bank would be the owner of the Mark and its associated good
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`will. The facts demonstrate that EPC’s claim is clearly flawed.50
`
`
`
`See 1111 15, 24, 26 of SDI’s Responses to EPC’s Statement of Facts.
`‘*6
`See 111] 21, 22, 23, 24, 25, 28 of SDI’s Responses to EPC’s Statement of Facts.
`47
`See 1] 28 of SDI’s Responses to EPC’s Statement of Facts.
`48
`See 1] 31 of SDI’s Responses to EPC’s Statement of Facts.
`49
`It is also interesting to note that if, as EPC alleges, The Bromptons, L.L.C. became the owner of the Mark
`5°
`in August 1996 when the assignment documents between SDI and The Bromptons, L.L.C. were executed, then
`EPC’s claim in its trademark application (Serial No. 76/415342) that it began use of the Mark in commerce in
`August 1996 was clearly false because The Bromptons, L.L.C., and not EPC, would have been the owner of the
`Mark at that time.
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`Further, the evidence demonstrates that SDI intended to continue using the Mark in
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`connection with its services after creation of The Bromptons, L.L.C., and, contrary to EPC’s
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`assertions, did continue using the Mark through third parties in which SDI or its principal, Mr.
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`Smith, were invo1ved.5 1 Similar to the situation involving The Bromptons, L.L.C., SDI and/or its
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`principal were involved in several additional entities that were created solely to develop and sell
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`other developments using the Mark.52 SDI allowed these new entities to use the Mark, just as it
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`had done with The Bromptons, L.L.C., because SDI and/or its principal were members of these
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`new entities, and thus had the ability to control the nature and quality of the services offered in
`
`connection with the Mark.53 Use of a mark by a licensee inures the benefit of the licensor and, in
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`the present instance, these uses demonstrate that SDI continued using the Mark afier The
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`Bromptons, L.L.C.
`
`EPC attempts to avoid these facts by arguing that the lack of written license agreements
`
`between SDI and these various entities evidences an intent to assign the Mark and that SDI is
`
`simply creating a new theory claiming that licenses existed “by way of some sort of implied
`
`license.”54 However it is a well—established trademark principle that licenses can be implied
`
`from the parties conduct or they can be oral.” Courts will often find an oral license to exist in
`
`situations where the implied licensor is in a position to, and in fact does, exercise a significant
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`measure of control over the “licensed” trademark. In University Book Store v. University of Wis.
`
`Bd. ofRegents, the Trademark Trial and Appeal Board found that there was no abandonment of
`
`the mark of a college mascot by informal, implied, royalty-free licenses granted by the college to
`
`
`
`5'
`52
`
`See 1] 11, 12, 34 of SDI’s Responses to EPC’s Statement ofFacts.
`Id.
`See 111] 11, 12, 13, 34 of SDI’s Responses to EPC’s Statement ofFacts.
`53
`See EPC’s Memorandum of Law in Support of its Motion for Summary Judgment at p. 14.
`54
`See, e.g., Basic, Inc. v. Rex, 167 U.S.P.Q. 696 (TTAB 1970); Council ofBetter Business Bureaus, Inc. v.
`55
`Better Business Bureau ofSouth Florida, Inc., 200 U.S.P.Q. 282 (S.D. F1. 1978); The Nestle Company Inc. v. Nash-
`Finch C0,, 4 U.S.P.Q.2d 1085, 1089 (TTAB 1987).
`
`9041853v1
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`12
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`nearby book stores to sell apparel with the mascot on it when the quality of the apparel remained
`
`at an acceptable level.56 Also, in Villanova University v. Villanova Alumni Educational
`
`Foundation, Inc., the court found that the University exercised sufficient control over the use of
`
`its name by an alumni athletic booster club under an implied license that lasted for twenty years
`
`and was later ratified by a written license.57 In that case, the court stated that “[i]t is irrelevant
`
`whether the parties thought of the arrangement at the time in terms of an implied license. The
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`test for whether or not an implied license existed is based solely on the objective conduct of the
`
`parties.”58
`
`In the present instance, SDI allowed use of the Mark by The Bromptons, L.L.C. and the
`
`other entities because it or its principal were members of those entities, and thereby were able to
`
`control the nature and quality of the services offered in connection with the Mark.” When EPC
`
`began using the Mark in connection with projects in which neither SDI nor its principal were
`
`involved, SDI objected.60 These facts show conduct on the part of SDI similar to that of a
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`licensor, therefore a license can be implied with respect to the uses of the Mark by the entities
`
`described above and such uses inured to the benefit of SDI, the owner of the Mark. Accordingly,
`
`the lack of a written license is irrelevant to whether or not SDI assigned the Mark to The
`
`Bromptons, L.L.C.
`
`As shown herein, there are genuine disputes as to material facts concerning the
`
`assignment documents and SDI’s ongoing use of the Mark. Accordingly, summary judgment is
`
`not proper.
`
`
`
`56
`57
`53
`59
`60
`
`33 U.S.P.Q.2d 1385, 1396 (TTAB 1994).
`123 F. Supp. 2d 293, 149 Ed. Law Rep. 513,58 U.S.P.Q.2d 1207. (E.D. Pa. 2000).
`Id. at 1219.
`See 111] ll, 12, 13, 27, 33, 34 of SDI’s Responses to EPC’s Statement of Facts.
`See 1] 35 of SDI’s Responses to EPC’s Statement of Facts.
`
`9041853v1
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`2.
`
`SDI did not admit to assigning the Mark
`
`EPC asserts further that an assignment of the Mark from SDI to The Bromptons, L.L.C.
`
`is supported by a March 29, 2002 email from SDl’s principal, Mr. Smith, to EPC’s principal, Mr.
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`Peete, in which Mr. Smith allegedly admits that such an assignment occurred. EPC argues that
`
`this email is admissible as evidence of the intent of the assignment documents because it was
`
`written more than five years after the execution of the assignment documents and therefore, is
`
`not barred by the parole evidence rule.“
`
`In the present instance, the March 29, 2002 email is not inadmissible because it is not a
`
`prior or contemporaneous oral negotiation in relation to the assignment documents; it is
`
`inadmissible because the assignment documents that the email relates to are complete,
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`unambiguous, and unconditional. As noted above, EPC has admitted in its Memorandum in
`
`support of this motion that the language of the assignments is c1ear.62 Accordingly, Mr. Smith’s
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`email is not admissible to contradict or explain the clear meaning of th