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`TTAB
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`TRADEMARK TRIAL AND APPEAL BOARD
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`Golden Gate Fireworks, Inc.
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`Opposer,
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`VS.
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`American Promotional Events, Inc.
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`Applicant.
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`\-./\J\_/\q_/\_/\-/H-/\-/\.J
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`Opposition No. 91 158743
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`APPLICANT AMERICAN PROMOTIONAL EVENTS INC.’S OPPOSITION TO
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT
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`hyperbole (hi-pfir-be-lé) n. An exaggeration or extravagant statement
`used as a figure of speech, as I could sleepfor a year or This book
`weighs a ton.‘
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`Because the public is so familiar with fireworks and the mark IF IT’S NOT TNT, IT’S
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`NOT FIREWORKS constitutes such obvious hyperbole, purchasers are unlikely to believe
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`fireworks sold by American Promotional Events, Inc. (“TNT”) are the only fireworks in the
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`universe. Judgment must be entered in TNT’s favor because the Mark, as perceived by
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`purchasers, does not deceptively misdescribe TNT’s products.
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`BACKGROUND
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`TNT and Golden Gate Fireworks, Inc. (“Black Cat”)2 sell retail fireworks in competition
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`with one another nationwide. See Declaration of Kathie Pendergrass, Ex. 1, 111] 3, 4. In
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`September 2003, the United States Patent and Trademark Office (“USPTO”) published for
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` ‘
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`THE AMERICAN HERITAGE DICTIONARY 632 2d Ed. 1985.
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`Black Cat purports to be the exclusive licensee of Li & Fung (B.V.I.) Limited (“Li &
`2
`Fung”). See Black Cat’s Second Amended Notice of Opposition, 111] 3, 5 and Ex. B thereto.
`TNT understands that Black Cat and Li & Fung are related parties. See Ex. 1, j} 15.
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`STLDOI-1249288-3
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`09-22-2006
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`U.S. Paunt It TM01’cITM Mall Hcptbt tau
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`opposition TNT’s intent to use application for the mark IF IT’S NOT TNT, IT’S NOT
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`FIREWORKS. See Opp. ’s Exhibit B. Black Cat then initiated this opposition.
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`The Board dismissed Black Cat’s claim that TNT’s Mark misdescribes Black Cat’s
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`fireworks. See Board’s Orders dated Sept. 23, 2004, Mar. 3, 2005. The only remaining issue is
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`whether the mark IF IT’S NOT TNT, IT’S NOT FIREWORKS deceptively misdescribes TNT’s
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`fireworks. See 2d Am. Notice of Opposition, 1] 1l(a). Black Cat has not pled and does not argue
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`that registration should be refused on grounds of descriptiveness. In fact, Black Cat concedes the
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`opposite. “[TNT’s] mark is n_cot merely laudatory and descriptive of the alleged merit of
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`Applicant’s goods .
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`.
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`. .” 1d., 1[ 11(b) (emphasis added). TNT and Black Cat thus agree that
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`TNT’s Mark is fully capable of serving as an identifier of source.
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`Numerous Similar Trademarks have been Registered
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`Consumers are unlikely to construe TNT’s mark as a factual assertion or be deceived by
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`it into thinking TNT is the only fireworks seller on the planet, which is precisely why the
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`USPTO has allowed registration of other hyperbolic trademarks using the same construct as
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`TNT’s Mark. Such registered trademarks include IF IT DOESN’T SUCK INK FROM A
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`BOTTLE, IT’S NOT A REAL PEN (Reg. No. 2,346,927); IF IT DOESN’T SAY ‘A LA
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`HENRI’ THEY’RE NOT CHICKEN FINGERS (Reg. No. 1,863,288) and IF IT’S NOT
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`MILLER, IT’S NOT LITE. MILLER LITE (Reg. No. 75/ 180,8S5).3 See Ex. 3-1, 3-2 and 3-3.
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`The USPTO has also approved for publication, but not yet registered, the mark IF IT’S NOT
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`DERMANEW, IT’S NOT PERSONAL MICRODERMABRASION. See Ex. 3-5 and 3-6.
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`These marks are not construed as factual assertions, and constitute such obvious hyperbole and
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`bluster that consumers are not deceived by them.
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`The Miller Lite mark was abandoned by the registrant in 1999. See Ex. 3-3.
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`STLDO I -1249288-3
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`The USPTO has also allowed registration of several other marks using locutions very
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`similar to TNT’s mark. Such registered trademarks include IF IT’S NOT MARINATED IN
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`LEA & PERRINS, SOMETHING’S MISSING (Reg. No. 2,293,447); IF IT ISN’T A SEA RAY,
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`YOU HAVE MISSED THE BOAT (Reg. No. 1,456,430); IF YOU DON'T SEE & HEAR IT
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`AT THE WARREN, YOU WON’T EXPERIENCE IT (Reg. No. 2,604,503); IF IT ISN’T
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`QUALITY, IT’S JUST ANOTHER BOX (Reg. No. 3,083,890); IF THE SHOE FITS, IT’S
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`MASON (Reg. No. 2,030,018); IF IT’S NEW IN BRICK, IT’S BY BILCO (Reg. No.
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`1,937,799); IF YOU PAID FULL PRICE, YOU DIDN’T BUY IT AT CROWN BOOKS (Reg.
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`No. 1,109,753); IF IT’S NEW, IT’S NYLOCK (Reg. No- 2,800,132), IF IT DOESN’T SAY
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`A&A, JUST TAKE IT OUT AND SHOOT IT! (Reg. No. 2,506,858) and IF IT DOESN’T SAY
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`ADJUST A BRUSH IT’S JUST A BRUSH (Reg. No. 1,972,298). See Ex. 3-8 — 3-17. The
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`USPTO would not have registered these hyperbolic “IF IT” trademarks if the USPTO believed
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`consumers would likely take them as factual assertions or be deceived by them. TNT agrees.
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`The Purchasing Public is Extremely Familiar with Fireworks
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`Black Cat wisely admits that fireworks are a generic i_te_1l1 and that the word “fireworks”
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`is a generic %. 2d Am. Notice ofOpposition, 1[ 11(a). Indeed, as with pens, light beer and
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`even chicken fingers, the American consuming public is universally familiar with fireworks.
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`Whether to celebrate the Fourth of July, New Year’s, a home run by the home team or anything
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`else, fireworks are as ingrained in the American culture as the American flag, mom and apple
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`pie, and have been for centuries. Unfortunately for Black Cat’s position in this opposition, such
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`ingrained familiarity with the generic item fireworks makes it all but impossible to fool
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`purchasers into thinking that a firework without the letters “TNT” on it is not truly a firework.
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`See Report of James T. Berger, Ex. 4-1 at 13.
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`STLDOI -1249288-3
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`

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`Black Cat cites government safety data showing that 40% of all Americans injured using
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`fireworks are age 14 or younger, and points out that many states allow children to purchase
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`fireworks without an adult. Without any further evidence or support, Black Cat incorrectly
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`insinuates that an awful lot of fireworks purchases must be made by children. That is simply
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`false. The vast majority of fireworks purchasers use credit or debit cards, not cash, meaning they
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`are not made by people under age 18. See Declaration of Kathie Pendergrass, Ex. 1,1] 6;
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`Declaration of David Opperman, Ex. 2, 1] 22. Most fireworks sale transactions are in amounts far
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`greater than what the average kid age 14 or younger has to spend. The average transaction
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`amount at a TNT stand or tent is roughly $50, at one of TNT’s retail stores the average sale is
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`approximately $90 and at chains that sell both TNT and competitors’ fireworks the average sale
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`is about $57. Ex. 1, 1] 5; Ex. 2, 1] 22. It bears emphasis that these totals are ])_(3l' transaction.
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`Finally, almost all individuals who purchase fireworks arrive at retail locations in an automobile,
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`meaning at least somebody involved in the purchase is 16 or older. Ex. 1, 1] 7; see Ex. 2, 1] 22.
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`Black Cat has Registered a Mark that, like TNT’s Mark, Ought Not be Taken Literally
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`Curiously, Black Cat seeks to register “VVI-IEN QUALITY, SAFETY AND VALUE
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`ARE IMPORTANT TO YOU!’’4 as a trademark for fireworks but opposes TNT’s Mark. Black
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`Cat’s application was filed twenty months glitz its opposition to TNT’s Mark in December 2003.
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`Nobody, including TNT, opposed Black Cat’s application. Taken literally, its mark conveys that
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`consumers are taking risks buying any fireworks other than BLACK CAT® fireworks. Black
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`Cat’s mark claims consumers risk not only their enjoyment with potentially inferior quality
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` 4
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`Li & Fung filed Application Serial No. 78/685,509 on August 4, 2005 for “WHEN
`QUALITY, SAFETY AND VALUE ARE IMPORTANT TO YOU!” for fireworks. The
`application was published on May 9, 2006. No party opposed it. A Notice of Allowance was
`issued on August 1, 2006. See Exhibit 3-18.
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`STLDOI-1249288-3
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`fireworks and their pocketbooks with potentially more expensive fireworks, but also their lives
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`and limbs with potentially unsafe fireworks. Black Cat’s mark, if taken literally, also implies
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`exclusivity — that “quality, safety and value” are found only in BLACK CAT® fireworks.
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`Using the Board’s test to determine whether a mark is deceptively misdescriptive and
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`utilizing a literal approach, it would seem obvious that Black Cat’s own mark (1) is
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`misdescriptive of at least the character and gghty of the applicant’s fireworks as being the only
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`ones of “quality, safety and value;” (2) will be believed by prospective purchasers to actually
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`describes the applicant’s goods: and (3) is likely to affect the decision to purchase.
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`So why have TNT and the other fireworks purveyors not risen up in righteous indignation about
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`Black Cat’s denigration of their respective products and opposed this application? Because
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`Black Cat’s competitors know what Black Cat apparently has not yet grasped: neither its mark
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`nor TNT’s mark, opposed herein, will be taken literally by prospective purchasers. Rather, those
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`potential customers will immediately recognize each mark as obvious hyperbole. TNT
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`respectively suggests, “What’s sauce for the goose is sauce for the gander.”5
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`For the reasons set forth below, the mark IF IT’S NOT TNT, IT’S NOT FIREWORKS is
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`not deceptively rnisdescriptive of TNT’s products. Registration should therefore be allowed.
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`ARGUMENT AND AUTHORITIES
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`I.
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`APPLICABLE STANDARDS.
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`A.
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`Standard for Summary Judgment.
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`Pursuant to TBMP § 528.08, the Board may enter summary judgment in favor of TNT to
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`the extent “the Board concludes .
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`.
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`. that there is no genuine issue of material fact, but that it is
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`5
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`The New Dictionary of Cultural Literacy, Third Edition. Edited by E.D. Hirsch, J1",,
`Joseph F. Kett, and James Trefil. © 2002 by Houghton Mifflin Company. Published by
`Houghton Mifflin Company.
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`STLDOI-1249288-3
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`the nonmoving party, rather than the moving party, which is entitled to judgment as a matter of
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`law .
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`.
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`. ." TNT is entitled to judgment because consumers undisputedly are likely to construe
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`TNT’s Mark as hyperbole, not as making a factual claim, and will not be deceived by the Mark.
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`Moreover, Black Cat fails to meet its burden of producing evidence demonstrating “there is no
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`genuine issue as to any material fact .
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`. .” concerning whether purchasers will take TNT’s Mark
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`as an assertion of fact that they will believe. Black Cat’s summary judgment motion must
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`therefore be denied and judgment entered in favor of TNT.
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`B.
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`Standards for Trademark Registration and Deceptive Misdescriptiveness.
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`Under the Lanham Act, “[n]o trademark .
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`.
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`. shall be refused registration on the Principal
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`Register unless it .
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`.
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`. [c]onsists of a mark which .
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`.
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`. when used on or in connection with the
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`goods of the applicant is .
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`.
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`. deceptively misdescriptive of them .
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`.
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`. .” 15 U.S.C. § 1052(e)(l).
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`The Board uses the following test to determine whether a mark is deceptively misdescriptive:
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`(1) Is the term misdescriptive of the character, quality, function, composition or
`use of the applicant’s goods?
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`(2) If so, are prospective purchasers likely to believe that the misdescription
`actually describes the applicant’s goods?
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`(3) If so, is the misdescription likely to affect the decision to purchase?
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`The Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1361 (Fed. Cir. 2001); see In re
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`Budge Mfg. Co., 857 F.2d 773, 775, USPQ 2d 1259, 1260 (Fed. Cir. 1988). None ofthese
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`factors weigh against registration of the mark IF IT’S NOT TNT, IT’S NOT FIREWORKS.
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`II.
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`TNT’S MARK CONSTITUTES OBVIOUS HYPERBOLE THAT DOES NOT MISDESCRJBE
`TNT’S PRODUCTS AND WILL NOT DECEIVE PROSPECTIVE PURCHASERS.
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`The mark IF IT’S NOT TNT, IT’S NOT FIREWORKS clears each of the first two
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`prongs of the Budge test for the same reason: purchasers are so familiar with fireworks they will
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`STLDO 1 - I 249288-3
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`immediately recognize the Mark as obvious hyperbole. That purchasers will not be deceived by
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`TNT’s Mark renders the Budge test’s third prong — materiality — moot.
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`A.
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`The Mark will not be Construed by Prospective Purchasers as Making a
`Statement of Fact.
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`As a matter of law, no false representation of fact occurs where “[i]t is beyond the realm
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`of reason to assert .
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`.
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`. that a reasonable consumer would interpret [the mark] as a factual claim
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`upon which he or she could rely.” Cook, Perkiss and Liehe, Inc. v. N. Caz‘. Collection Service,
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`Inc., 911 F.2d 242, 246 (9th Cir. 1990) (claim that “we’re the low cost commercial collection
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`experts” not deceptive because potential purchasers would interpret it as a general assertion of
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`superiority, not as a factual misrepresentation). The fact that rhetorical hyperbole cannot
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`reasonably be interpreted as stating actual facts is precisely what makes it harmless and, indeed,
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`privileged and protected free speech.
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`Professor James T. Berger, who taught several marketing courses at Northwestern
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`University and its Kellogg Graduate School of Management over 19 years, opines that given
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`consumers’ familiarity with fireworks and the circumstances under which they are purchased,
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`purchasers of TNT’s products will not likely construe the Mark as intending a factual assertion.
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`See Ex. 4-1 at 1 l — 13.6 Instead, prospective purchasers will likely construe TNT’s Mark as a
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`hyperbolic exaggeration and a general claim that TNT’s fireworks are superior to all others. Id.
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`Professor Berger further opines that, given the degree to which fireworks are ingrained into
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`American culture, consumers will not construe TNT’s Mark as seriously asserting that a firework
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`without the letters TNT on it is not a firework. Id.
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` 6
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`In addition to his academic experience, Professor Berger has more than three decades of
`practical marketing experience, including agency work for McDonald’s restaurants and Sears,
`Roebuck & Co. and more than 20 years running his own marketing consulting firm.
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`STLD0l-l249288—3
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`Marks previously registered by the USPTO finther demonstrate the point. Prospective
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`purchasers of A La Henri chicken fingers understand that they can still get chicken fingers at
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`restaurants like Applebee’s notwithstanding A La Henri’s hyperbolic trademark boasting that IF
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`IT DOESN’T SAY ‘A LA HENRI’ THEY’RE NOT CHICKEN FINGERS. Prospective
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`purchasers of the former Miller Brewing Co1npany’s light beer who wanted to cut their caloric
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`intake understood they could still drink Bud Light in furtherance of their efforts, notwithstanding
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`Miller’s now-defunct boast IF IT’S NOT MILLER, IT’S NOT LITE. MILLER LITE. Folks
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`who prefer Bics, Papermates or fountain pens still understand that what they are using are indeed
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`real pens, regardless of Realpens.com’s boast that IF IT DOESN'T SUCK INK FROM A
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`BOTTLE, IT’S NOT A REAL PEN. Likewise, prospective purchasers of fireworks will
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`understand that the products sold by Black Cat are still fireworks, notwithstanding the hyperbole
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`TNT intends to use in marketing and selling its fireworks.
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`Black Cat cites extensively and repeatedly to several “misdesc1iption” cases not
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`involving hyperbole that are all readily distinguishable. The cases cited by Black Cat all
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`involved marks evoking characteristics the subject product did not possess, such as “Cedar
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`Ridge” for siding not made of cedar, “Certified Hearing Aid Audiologist” for unceitified
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`providers, “Cameo” for jewelry not containing cameos, “Lovee Lamb” for a product with no
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`lamb, “Cafeteria” for a full—service restaurant or “Organik,” “Silkease” or “Super Silk” for
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`synthetic cloth.7 The concernin the “Cafeteria” case, that consumers would arrive at a full-
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`
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`7 See Evans Products Co. v. Boise Cascade Corp., 218 USPQ 160 (TTAB 1983); American
`Speech-Language-Hearing Assn. v. Nat’! Hrg. Aid Soc., 224 USPQ 798 (TTAB 1984); In re
`Shapeiy, 231 USPQ 72 (TTAB 1986); In re Woodward & Lothrop, Inc., 4 USPQ 2d 1412
`(TTAB 1987); In re Budge, 857 F.2d 773, 8 USPQ 2d 1259 (Fed. Cir. 1988); In re ALP of
`South Beach, Inc., 79 USPQ 2d 1009 (TTAB 2006); In re Organik Technologies, Inc., 41
`USPQ 2d 1690 (TTAB 1997); In re Philhjps-Van Heusen Corp., 63 USPQ 2d 1047 (TTAB
`2002); In re Berman Bros. Harlem Furniture Co., 26 USPQ 2d 1514 (TTAB 1993).
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`STLD01-l249288—3
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`8
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`service restaurant expecting a self-service cateria, is not present in this case. TNT’s Mark here
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`makes no insinuation that its products are anything other than fireworks. A consumer who sees
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`or hears TNT’s Mark in advertising will find precisely what they are looking for upon arriving at
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`a TNT retail location: fireworks.
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`Black Cat’s argument that TNT’s Mark falsely asserts its fireworks possess the quality of
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`“uniqueness” and is therefore misdescriptive has been rejected in other contexts. In the false
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`advertising case of Coastal Communications Corp. v. The Adams/Laux Co., 40 USPQ 2d 1383,
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`1384 (SD. N.Y. 1996), the court found an advertiser’s general claim that its publications were
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`the “only ones ‘devoted exclusively to [the subscriber’s] needs” could not “be viewed as a
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`factual claim upon which a reasonable subsciiber would rely.” The court dismissed the claim.
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`Like the slogan in Coastal, TNT’s Mark will not be interpreted as making a factual claim
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`of uniqueness upon which a reasonable purchaser would rely. Purchasers indisputably will
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`construe the mark IF IT’S NOT TNT, IT’S NOT FIREWORKS as hyperbole, not as an assertion
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`of fact. The Mark, as perceived by purchasers, thus will not misdescribe TNT’s products.
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`B.
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`No Purchaser is Likely to Believe that TNT’s Products are Uniquely
`Fireworks.
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`Even if prospective purchasers could somehow construe TNT’s Mark as making a serious
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`assertion of fact rather than as obvious hyperbole, consumers will not likely be deceived into
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`believing that only fireworks bearing the letters TNT are truly fireworks. As professor Berger
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`opines, American consumers are simply too familiar with fireworks and the channels of trade
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`through which they are distributed to be deceived by TNT’s Mark. See Ex. 4-1 at 13.
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`Consumer familiarity with the product in question is precisely why TNT’s Mark and the
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`aforementioned pen, light beer and chicken fingers marks create no deception, but the mark “If
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`It’s Not Labatt’s, It’s Not Ice Beer” was held an injurious falsehood in the case ofAnheuser-
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`STLD01-1249288-3
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`Busch Inc. v. John Labatt Ltd., 89 F.3d 1339 (8th Cir. 1996). The court upheld a St. Louis
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`jury’s $1.00 verdict in favor of hometown brewery Anheuser-Bush finding against Labatt’s
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`slogan. In affirming the verdict, the court specifically noted that “[u]ntil 1993 no beer marketed
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`in either Canada or the United States had the term ‘ice’ in its name.” Id. at 1342. While “ice
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`beer” became a new name for a product in the consuming public’s lexicon in 1993, in 2006
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`“fireworks” are about the farthest thing possible fiom a new product name.
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`Indeed, as Black Cat
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`admits, “fireworks” is a generic term and has been for longer than the United States has been in
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`existence. Unlike “ice beer” in 1993, but like “chicken fingers,” “light beer” and “pens,” the
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`purchasing public in 2006 is simply too familiar with fireworks to be deceived by TNT’s Mark.
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`Realizing they have not adduced any evidence to support their claim that purchasers will
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`be deceived by TNT’s Mark, Black Cat attempts a clever legal sleight-of-hand by misapplying
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`puffery cases in a context they were never intended to address. Specifically, Black Cat claims
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`that “[fjalse factual statements to the public about one’s products are not permitted even under
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`the g1_1ise that they are mere puffery.” Opp. Br. at l 1. Really? Then why do the Lanham Act
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`and Budge explicitly dictate that a misdescriptive mark may be registered where “prospective
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`purchasers” are not “likely to believe that the misdescription actually describes the applicant’s
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`goods?” See 857 F.2d at 775, 238 F.3d at 1361. Knowing it cannot win under the controlling
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`test, Black Cat attempts to confuse the issue.
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`The false advertising cases ofPizza Hut and American Italic Pasta cases do not hold, as
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`Black Cat claims, that a mark setting forth a false statement of fact cannot be registered even
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`where consumers are unlikely to believe the misdescription.
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`In Pizza Hut, the slogan “BETTER
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`INGREDIENTS, BETTER PIZZA,” was held not to constitute a factual assertion and, to the
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`extent it became one in the context of certain misleading advertisements, there existed no
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`STLDO1-1249288-3
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`10
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`evidence of materiality. Pizza Hat, Inc. v. Papa John ’s Int’l', Inc., 227 F.3d 489, 498-99, 501,
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`503-504 (5th Cir. 2000). Given the court’s findings, had Pizza Hut been decided as a
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`registration matter under Budge, the slogan at issue did not run afoul of the first prong of the
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`Badge test, and to the extent it did in certain contexts, there was no evidence to prove it ran afoul
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`of the third prong. The case thus simply did not consider whether consumers were likely to
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`believe any misrepresentation made by the slogan at issue. The American Italian Pasta case is
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`even farther off the mark, as it simply held the slogan “AMERICA’S FAVORITE PASTA” did
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`not constitute an assertion of fact. See American Italia Pasta Co. v. New World Pasta Co., Inc.,
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`371 F.3d 387, 391-92 (8th Cir. 2004).
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`Finally, perhaps sensing it cannot clear the bar for establishing deceptive misdescription,
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`Black Cat tries to lower the bar by arguing consumers will misconstrue the Mark because a
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`single firework can cost less than $10. Black Cat concludes, in a statement that could only have
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`come from its legal team rather than its public relations or marketing departments, that “a lower
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`level of sophistication should apply to all purchasers of fireworks, not just children.” Opp. Br. at
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`19. Black Cat provides no evidence that consumers lose their ability to distinguish a factual
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`claim from hyperbole at a threshold of $10 or any other mark Professor Berger opines that no
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`such threshold exists. See Ex. 4-1, at 13. As set forth in the Declaration of Kathie Pendergrass,
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`the average fireworks purchase is actually for several multiples of $10. See Ex. 1,1] 5.
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`Consumers simply will not be deceived by TNT’s Mark into believing only fireworks
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`bearing the letters TNT are fireworks. Black Cat adduces no evidence suggesting otherwise.
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`C.
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`Black Cat Provides No Evidence to Support its Claim that what it Claims is
`the Mark’s Misdescriptiveness would be Material to Purchasing Decisions.
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`Because the Mark is not deceptively misdescriptive of TNT’s products, whether the Mark
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`would be material to purchasing decisions is irrelevant. Even if the issue of materiality were
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`STLD0l~l249288-3
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`I I
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`somehow reached in this proceeding, Black Cat produces no evidence supporting its claim that
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`what it views as the Mark’s misdescriptiveness would impact purchasers’ decisions. Black Cat
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`thus fails to meet its summary judgment burden. See Celotex Corp. v. Catrett, 477 U.S. 317,
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`323, 106 S.Ct. 2548, 2553 (1986).
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`It thus cannot prevail.
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`III.
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`THE CLAIM THAT CHILDREN WILL BE DECEIVED BY TNT’S MARK LACKS MERIT.
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`Knowing it has no chance of prevailing if the standard applied is that of a reasonable
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`person of average intelligence, Black Cat tries to ratchet the bar lower by claiming children will
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`take TNT’s mark literally even if adults will not.8 Black Cat provides no evidence to support its
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`theory of how children will construe TNT’s Mark, submits neither an expert’s report nor survey
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`evidence and cites no cases analyzing deceptive misdescription under 15 U.S.C. § l052(e)(l)
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`with respect to children. But even if Black Cat could properly support its argument and provide
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`evidence that children were somehow likely to misconstrue TNT’s Mark, the Mark still will not
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`materially impact purchasing decisions because of how fireworks sales transactions happen in
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`the real world. See Ex. I, 1] 7; Ex. 4-1, at 11-13; Ex. 2, ‘H 22.
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`A.
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`Black Cat fails to Meet its Summary Judgment Burden.
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`Black Cat provides no evidence to support its claim that children are likely to be deceived
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`by TNT’s Mark. As the summary judgment movant, Black Cat bears the burden of producing
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`evidence to support its factual claim. “Of course, a party seeking summary judgment always
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`bears the initial responsibility of .
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`.
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`. identifying those portions of the pleadings .
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`.
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`. answers to
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`interrogatories, and admissions on file, together with the affidavits .
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`.
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`. it believes demonstrate
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`the absence of a genuine issue of material fact.” Celotex, 477 U.S. at 323, 106 S.Ct. at 2553.
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` 8
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`It bears mention that Black Cat is a fine one to be proclaiming the perils of marketing
`fireworks to children. Excerpts from Black Cat’s own web site demonstrate it lives in a glass
`house and ought not throw stones. See Ex. 3-18 — 3-22.
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`While citing cases discussing childrens’ influence on adult purchases and a government
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`report indicating children use fireworks, Black Cat provides zero evidence as to how a child will
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`interpret TNT’s Mark. Black Cat presents no expert report or survey supporting its claim.
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`Indeed, in the 51 uncontroverted “material” facts it identifies, Black Cat never asserts the one
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`truly material fact: whether prospective purchasers of £11 age are likely to construe TNT’s Mark
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`literally. The reason Black Cat fails to do so is simple: if it made that assertion, it would need
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`evidence supporting it, and Black Cat simply has none. Its motion must therefore be denied.
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`B.
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`Cases Relied upon by Black Cat are Inapplicable.
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`Black Cat not only lacks evidence to support its argument, but also applicable authority.
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`The cases it cites Q apply a traditional likelihood of confilsion analysis.9 Such cases might
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`control if TNT were trying to register the marks “BLACK HAT” or “NOIRE CAT” for
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`fireworks, but this case requires no assessment of whether two marks are confusingly similar.
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`Further, none of the cases Black Cat cites arise in the context of 15 U.S.C. § 1052(e)(1), none
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`address the issue of deceptive misdescriptiveness, none apply the Budge test and none involve
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`marks using hyperbole.
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`In fact, almost half of Black Cat’s cases, including Electronic Design,
`
`See In re Infinity Broadcasting Corp. ofDallas, 60 USPQ 2d 1224 (TTAB 2001)
`9
`(KYNG radio versus KING-TV and KING-FM); Electronic Design & Sales, Inc. v. Electronic
`Data Sys. Corp., 954 F.2d 713 (Fed. Cir. 1992) (reversing denial of registration for EDS for
`batteries vis—a—vis EDS for EDS for computer services); In re Artic Electronics Co., Lat, 220
`USPQ 836 (TTAB 1983) (MARS for video game versus MARS for coin changing machine);
`Toys “R” Us, Inc. v. Canarsie Kiddie Shop, Inc., 559 F. Supp. 1189 (E.D. N.Y. 1983) (Kids
`“R” Us for children’s clothing store versus Toys “R” Us); Warner Bros., Inc. v. Gay Toys, Inc.,
`658 F.2d 76 (2d Cir. 1981) (“Dixie Racer” versus Dukes of Hazzard’s “General Lee”); Gen.
`Signal Corp. v. William M Wilson ’s Sons, Inc., 207 USPQ 680 (TTAB 1980) (CARDTROL
`for fuel pump apparatus versus CARDTROL for gate opemer); Blake Publishing Corp. v.
`0’Qainn Studios, Inc., 202 USPQ 848 (S.D. N.Y. 1979) (fantasy magazine Fantastica versus
`science fiction and fantasy magazine Fantastic Films); General Foods Corp. v. Mellis, 203
`USPQ 262 (S.D. NY. 1979) (song titled “I’m the Pop Rock King” versus Pop Rock Candy);
`Am. Optical Corp. v. Atwood Oceanics, Inc., 180 USPQ 532 (TTAB 1973) (American Optical’s
`petition for cancellation of A0 in connection with offshore drilling denied).
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`Am. Optical, Gen. Signal and Infinity Broadcasting, do not even deal with children. Of the
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`cases involving products likely to be used by children, only Artie (video games), is even a
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`registration case. And Black Cat cites no case holding that a likelihood of confiision analysis is
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`proper in the context of deceptive misdescriptiveness under 15 U.S.C. § 10S2(e)(1). No such
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`case exists.
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`The Toys “R” Us case, however, unambiguously regards the parents, not their children,
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`as the purchasers of the subject articles. 559 F. Supp. at 1199. The court simply downgraded its
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`assessment of parents’ care in purchasing items by virtue of the child’s influence. Id. As the
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`court said in a sentence Black Cat deliberately omitted from the block quote on page 17 of its
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`brief, “[i]t may be that consumers purchasing from the plaintiff and defendants are influenced in
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`part by the desires of their children, for whom the products offered by plaintiff and defendants
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`are meant.” Id. The opinion makes clear, as Black Cat tries to obscure, that the purchaser in the
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`eyes of the law is the one holding the wallet, not his or her child. And that holding a’_0.e_s have
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`ramifications for the analysis under Budge, which is concerned only with gurchaser 's decisions.
`
`C.
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`The Marketplace Realities of how Fireworks are Sold Dictate that No
`Fireworks Purchasing Decision Involving Children will be Materially
`Affected by the Mark.
`
`Assuming arguendo that Black Cat had met its summary judgment burden of evidencing
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`that young children of reading age would be fooled by TNT’s Mark, the reality of how and
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`where fireworks are sold in the real world demonstrates that such deception could not possibly
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`impact a purchaser’s decision.
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`There are three kinds of establishments that sell TNT fireworks: (1) those run by TNT
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`itself, which predictably enough sell only TNT brand fireworks; (2) those retailers that TNT sells
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`to on a wholesale basis who carry only TNT brand fireworks and (3) those retailers that TNT
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`STLDOI-1249288-3
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`sells to on a wholesale basis but who also sell fireworks from TNT’s competitors, such as Black
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`Cat. See Ex. 1, ‘H 3.
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`In the first two scenarios, the alleged deception caused by the Mark — the
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`belief that TNT’s fireworks are the only ones in the world -— is harmless. There are no fireworks
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`bearing other trademarks that are available for purchase from that retailer. The consumer will
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`only purchase TNT fireworks, because that is all that is available to be purchased.
`
`But even in the third scenario, where a retailer sells TNT fireworks alongside Black Cat
`
`or other fireworks, the purchaser need only look to the next display or table to see that indeed,
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`there are other fireworks in the universe besides TNT’s. But how the consumer gets to such an
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`establishment in the first place is equally important, and perhaps even moreso.
`
`Because they are a generic, seasonal item often sold at different locations from one early
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`summer to the next, the most important word in marketing and selling fireworks is just that:
`
`FIREWORKS. Id. Families seeking fireworks see the billboards, hear the radio advertisements
`
`or see the newspaper advertisements, all of which emphasize the key word “FIREWORKS,”
`
`and venture on in pursuit of that item. See Ex. 4-] at 13. Thus when a family arrives at a
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`fireworks store, stand or tent, they all know, regardless of their age, precisely where they are,
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`what they are there to purchase and what it is the establishment sells. In this real-world
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`purchasing environment, no kid will likely be persuaded that many of the fireworks for sale at
`
`the fireworks store are in fact not fireworks, nor will he or she change product selection
`
`accordingly.
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`Ia’.
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`IV.
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`THE RATIONALE FOR A LOWER TRADEMARK REGISTRATION STANDARD IN THE
`PHARMACEUTICAL CONTEXT IS INAPPLICABLE TO FIREWORKS.
`
`Black Cat improperly tries to analogize fireworks to pharmaceutical products in arguing a
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`lesser standard for deceptive misdescription should apply to registration of fireworks trademarks.
`
`In taking that position, Black Cat ignores the “hundreds” of trademarks already registered in
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`STLDOI-1249288-3
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`connection with the sale of fireworks with no such lesser standard having been applied. See
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`Opp. '3 Statement of Una’. Facts, 1] 45. Black Cat also necessarily premises its argument for a
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`lesser standard upon its incorrect and unsupported conclusion, discussed above, that purchasers
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`will be deceived into thinking that only TNT brand fireworks are fireworks. Absent deception
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`there is no harm from which to protect the public, because purchasers are not being fooled.
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`But Black Cat’s argument for a lesser likelihood of confusion standard fails for a more
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`fundamental reason. The danger posed by confusingly similar pharmaceutical trademarks is
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`obvious: a consumer could mistakenly take the wrong drug, incurring dangerous consequences.
`
`But here, Black Cat makes no argument and presents no evidence that consumers are likely to
`
`confuse TNT’s fireworks for Black Cat’s, or that if they did, harm could result. The difference
`
`between lighting a TNT artillery shell instead of a Black Cat artillery shell, or vice versa, simply
`
`does not compare to the danger presented by taking a pill for urinary tract infections when one is
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`intending to treat hypertension. See Morganstern Chem. Co. v. G.D. Searle & Co., 253 F.2d
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`390 (3d Cir. 1958) (Registration of Mictine refused where Micturin preceded it on the market).
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`Likewise, the difference between lighting a Black Cat firecrack