IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 78/281,660
`Published April 27, 2004 in the Oflicial Gazette
`Trademark: LYNX MASTER
`
`The Chamberlain Group, Inc.
`
`Opposer,
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`v
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`Lynx Industries, Inc.
`Applicant.
`
`TTAB
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`Opposition No. 91/160,673
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`5
`j
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`g
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`APPLICANT’S RESPONSE TO OPPOSER'S MOTION FOR SUMMARY JUDGMENT
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`I.
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`INTRODUCTION
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`Chamberlain’s motion for summary judgment is a work of historical fiction and must be
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`denied.
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`Indeed, just as a work of historical fiction selectively uses facts to support a fictional
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`plot, Chamberlain’s summary judgment motion relies on selective facts to develop unsupported
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`conclusions regarding likelihood of confusion. Chamberlain’s motion completely ignores
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`critical elements of the likelihood of confusion analysis and offers the Board interpretations and
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`inferences as “evidence” instead of undisputed facts. Furthermore, Chamberlain’s unsupported
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`conclusions, interpretations and inferences are sharply disputed by opposing factual evidence
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`that must, as a matter of law, be construed in Lynx’s favor. Accordingly, since substantial
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`disputed issues of fact remain for the trier of fact to decide and the collection of additional
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`testimonial evidence is necessary, Chamberlain’s motion for summary judgment is without
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`merit, in fact or law, and must be denied.
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`_ o
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`5-1 6-2005
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`S Patent & TMOTC/TM Mail HOP! Dt. #72
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`U.
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`II.
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`OPPOSER’S MOTION FOR SUMMARY JUDGMENT MUST BE DENIED
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`A.
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`The Summary Judgment Standard
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`The rules with regard to summary judgment are clear and well settled.
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`Summary
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`judgment is only appropriate “if the pleadings, depositions, answers to interrogatories, and
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`admissions on file, together with the affidavits if any, show that there is no genuine issue as to
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`any material fact“ and the moving party is entitled to judgment as a matter of law. Fed. R. Civ.
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`P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 2510; 91
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`L.Ed.2d 202 (1986).
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`Issues of material
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`fact are genuine and summary judgment
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`is not
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`appropriate if the evidence is such that a reasonable jury could return a Verdict for the non-
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`moving party. Matsushita Elec. Industrial Co. v. Zenith Radio Corp., 475 U.S. 574, 587; 106
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`S.Ct. 1348, 1356; 89 L.Ed.2d 538 (1986); Anderson, 477 U.S. at 248-9.
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`In order to prevail on its motion, Chamberlain bears the burden of establishing the
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`absence of any genuine issue of material fact. Fed.R.Civ.P. 56(a); Anderson, 477 U.S. at 254.
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`Chamberlain’s burden is heavy because evidence of the non-movant Lynx is to be believed, all
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`reasonable inferences must be viewed in a light most favorable to the non-movant Lynx and
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`resolved in the non-movant Lynx’s favor.‘ United States v. Diebold, Inc., 369 U.S. 654, 655
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`(1962); Matsushita, 475 U.S. at 587-8; Anderson, 477 U.S. at 255. “In sum, all significant doubt
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`over pertinent factual issues must be resolved in favor of the party opposing summary
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`judgment.” Armco, Inc.,v. Cyclops Corp., 791 F.2d 147, 149 (Fed. Cir. 1986). Furthermore, a
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`single genuine issue of material fact is enough to defeat Chamberlain’s motion for summary
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`‘ Chamberlain glosses over and tries to minimize its heavy burden by incorrectly implying that
`its all doubts should be resolved in its favor. Chamberlain Br. at 17-18. Chamberlain’s position
`is misleading, however, since it pertains to the likelihood of confusion legal conclusion.
`It is
`undisputed that all factual inferences must be resolved in Lynx’s favor for this summary
`judgment motion.
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`

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`judgment. See Unique Concepts, Inc. v. Manuel, 669 F. Supp. 185, 187 (N.D. Ill. 1987). In this
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`case, Lynx identifies many disputed issues of fact that preclude summary judgment.
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`B.
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`Chamberlain’s Motion Misapplied The Likelihood Of Confusion Test
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`A motion for summary judgment in trademark infringement cases must be approached
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`with great caution, because the ultimate conclusion on likelihood of confusion is a finding of
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`fact. AHP Subsidiary Holding Co. v. Stuart Hale C0., 1 F.3d 611, 617 (7th Cir. 1993); see also
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`Ty, Inc. v. Agnes M. Ltd., No. 00 C 358, 2001 WL 1414210, *6 (N.D. 111. Nov. 9, 2001) (holding
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`that it is well established that the underlying questions in a likelihood of confusion analysis
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`involve all fact and no law, and that these questions usually are reserved for the jury).
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`Accordingly, the Board cannot grant Chamberlain’s motion for summary judgment unless there
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`is not a single genuine issue of material fact with regard to any of the following factual inquiries:
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`(1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound,
`connotation, and commercial impression;
`(2) the similarity or dissimilarity and nature of the goods or services as described in an
`application or registration or in connection with which a prior mark is in use;
`(3) the similarity or dissimilarity of established, likely-to-continue trade channels;
`(4) the conditions under which, and buyers to whom, sales are made;
`(5) the fame of the prior mark;
`(6) the number and nature of similar marks in use on similar goods;
`(7) the nature and extent of any actual confilsion;
`(8) the length of time during, and conditions, under which there has been concurrent use
`without evidence of actual COIlfl.lSlO1‘l;
`(9) the variety of goods on which a mark is or is not used;
`(10) the market interface between an applicant and the owner of a prior mark;
`(11) the extent to which an applicant has a right to exclude others from use of its mark on
`its goods;
`(12) the extent of potential confusion; and
`(13) any other established fact probative of the effect of use.
`
`In re E. I. DuPont DeNem0urs & C0., 476 F.2d 1357 (C.C.P.A. 1973).
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`

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`As an initial matter, Chamberlain has not applied the likelihood of COI1fllS10l’1 test in the
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`proper context. While Chamberlain offers a rote “analysis” of the likelihood of confusion
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`factors, Opposers’s Br. at pp. 5-15, they do so in a manner that is absolutely divorced from the
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`actual marketplace circumstances in which customers would have encountered the products.
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`See, e.g., James Burrough Ltd. v. Sign ofBeefeaters, Inc., 540 F.2d 266, 275 (7th Cir. 1976)
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`(“Trademark infringement must be considered in a marketplace context”). Indeed, as discussed
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`below, Chamberlain’s analysis ignored virtually all of the likelihood of confusion factors that are
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`reflective of the market, ‘factors such as the third party uses of the MASTER mark, the
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`commercial impressions generated by the LIFTMASTER and LYNX marks, the long-standing
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`concurrent use of the LIFTMASTER and LYNX marks, and the sophistication of the customer
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`base. Chamberlain’s conclusion that likelihood of confusion exists is, therefore, inherently
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`unreliable, for it is axiomatic that even when marks are identical, confiision is not likely if the
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`goods or services in question are not related or marketed in such a way that they would be
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`encountered by the same persons in situations that would create the incorrect assumption that
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`they originate from the same source. See, e.g., Local Trademarks, Inc. v. Handy Boys, Inc., 16
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`U.S.P.Q.2d 1156 (T.T.A.B. 1990); Quartz Radiation Corp. v. C0mmSc0pe C0,, 1 U.S.P.Q.2d
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`1668 (T.T.A.B. 1986). For the likelihood of confusion factors to have any relevance to
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`Opposer’s Lanham Act claims, Chamberlain needed to apply the factors in a context that would
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`allow a fact-finder to determine whether Lynx’s practices would be so like those of Chamberlain
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`that they would cause consumers to be confused as to the source of the products. Bandag, Inc. v.
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`A] Bolser ’s Tire Stores Inc., 750 F.2d 903, 912-916 (applying multifactor likelihood of confusion
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`test to determine whether defendant’s actions would be likely to cause the public to believe that
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`defendant was Plaintiff’ s franchisee).
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`By failing to present any evidence regarding the actual market context in which the marks
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`and products are encountered by customers, Chamberlain’s likelihood of confusion analysis is
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`faulty and its conclusion that confiision is likely is without merit. For this reason alone,
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`Chamberlain’s motion for summary judgment should be denied.
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`C.
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`Many Genuine Issues Of Fact Exist Suggest that Confusion is Not Likely
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`Lynx’s market-centered analysis of the most relevant likelihood of confusion factors in
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`dispute, as set forth below, reveals that many genuine issues of material fact exist regarding the
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`Lanham Act claims. Thus, Chamberlain has clearly failed to meet its burden of establishing as a
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`matter of law that Lyr1x’s use of the mark LYNX MASTER is likely to cause confusion with its
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`LIFTMASTER mark and Chamberlain’s Motion must be denied.
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`1.
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`Material Issues Of Fact Suggest that
`the LIFTMASTER Mark is Not Famous
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`The initial step in any likelihood of confusion analysis is to determine the strength of
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`senior party’s mark, and Chamberlain maintains that its LIFTMASTER mark is “famous.”
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`Chamberlain’s argument, however, seems premised on the idea that the volume of evidence is
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`more important than the truth or relevance of the evidence. Indeed, Chamberlain has submitted a
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`great deal of “evidence” regarding their use of and advertising for the LIFTMASTER mark, most
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`of which is either unsupported or irrelevant to the determination of “fame” in the United States.
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`It is well settled that in determining whether a mark is distinctive and famous, a court
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`may consider factors such as, but not limited to, the following:
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`(A) the degree of inherent or acquired distinctiveness of the mark;
`(B) the duration and extent of use of the mark in connection with the goods or
`services with which the mark is used;
`(C) the duration and extent of advertising and publicity of the mark;
`(D) the geographical extent of the trading area in which the mark is used;
`(E) the channels of trade for the goods or services with which the mark is used;
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`

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`(F) the degree of recognition of the mark in the trading areas and channels of
`trade used by the marks’ owner and the person against whom the injunction is
`sought;
`(G) the nature and extent of use of the same or similar marks by third parties; and
`(H) whether the mark was registered under the Act of March 3, 1881, or the Act
`of February 20, 1905, or on the principal register.
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`15 U.S.C. § 1125 (c)(1).‘
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`Lynx identifies several material facts below regarding the nature and extent of the same
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`or similar marks by third parties that, when considered in a light most favorable to Lynx,
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`demonstrates that Chamberlain’s LIFTMASTER mark is not famous. This genuine issue of
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`material fact with regard to the distinctiveness of Chamberlain’s mark precludes summary
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`judgment in this matter.
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`a.
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`Chamberlain’s “Evidence” of Fame is Faulty
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`The only evidence that Chamberlain submits in support of the alleged “fame” of its
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`LIFTMASTER mark is the affidavits of two employees, Sally Anderson and Mark Tone. While
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`these affidavits purport to set forth evidence of the duration and extent of Chamberlain’s use of
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`and advertising for the LIFTMASTER, they are nothing more than conclusory declarations from
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`biased witnesses. Indeed, since the affidavits do not have any supporting exhibits, none of the
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`sales, advertising, or market share data is supported by any corroborating documentation. Even
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`worse, Chamberlain attempts to establish a broad geographic “use” of its LIFTMASTER mark
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`by detailing an exhaustive list of foreign trademark registrations (that are not indicative of use
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`and in some cases are for a mark that Chamberlain has admitted is not in use)2. Meanwhile,
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`Chamberlain completely ignores the “fame” factors that do not support their position, as it has
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`not presented any evidence ofconsumer recognition or third party use to the Board. &
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`2 Chamberlain rnisleads the Board by relying on registrations for the mark LIFT-MASTER,
`See Exhibit 2, Sally Anderson
`Deposition at pp. 20-21. The LIFT-MASTER marks may therefore be subject to Cancellation.
`.
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`v
`0)
`& \
`9
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`b.
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`Evidence of Third Party Use of the term MASTER
`Creates A Genuine Issue Of Material Fact
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`One of the factors for determining the distinctiveness of a mark that Chamberlain ignores
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`is the prevalent third party use of the trademark MASTER. Indeed, there is a substantial amount
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`of evidence available that demonstrates that use of the term MASTER in connection with doors,
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`door openers, and door installation is widespread. For example, it is undisputed that the
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`following marks are currently in use in the United States:
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`0 LIFT MASTER is owned by Chicago Jack for use in connection with industrial
`lifting equipment;
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`0 LIFT MASTER has been used in connection with lifting platforms by JLG;
`0 TORQUE MASTER is currently in use in connection with garage door openers
`by Wayne Dalton;
`
`0 DOOR MASTER is currently in use in connection with garage door openers by
`Wayne Dalton;
`0 STEELMASTER is currently in use in connection with roll-up doors by Flexon;
`0 SPEED-MASTER is currently in use in connection with roll-up doors by Flexon;
`o FLEX-MASTER is currently in use in connection with roll-up doors by Flexon;
`0 HOMEMASTER has been applied for in connection with electric door openers by
`Rexon Industrial Corporation;
`0 MASTERCODE has been applied for in connection with electric door openers by
`Rexon Industrial Corporation;
`
`0 REDI-MASTER is currently in use in connection with motors for
`raising/lowering rolling steel doors by Alpine Overhead Doors;
`0 POWERMASTER is currently in use in connection with controls for opening and
`closing doors by Bosch Rexroth Corporation;
`0 WW W .DOORMASTERS.COM is currently in use in connection with the
`installation of Raynor brand garage door openers.
`
`Exhibit 1, Declaration of Mark Schram at 1] 3; Exhibit 3, Mark Tone Deposition at pp. 13-18.
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`It is also undisputed that Chamberlain is aware of and permits many of these uses of the term
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`MASTER,-
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`HEE 3 See Exhibit 3, Mark Tone Deposition at pp. 13-18.
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`The numerous inconsistencies and gaping loopholes in Chamberlain’s testimonial
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`“evidence” and the extensive third party use of the MASTER trademark at the very least presents
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`the Board with material issues of fact regarding the strength of Chamberlain’s LIFTMASTER
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`trademark. Accordingly, when all facts and reasonable inferences are viewed in a light most
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`favorable to the non-movant, it is entirely reasonable that a jury could return a verdict for Lynx,
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`finding that the LIFTMASTER marks is weak or only entitled to a narrow scope of protection.
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`In such a situation, Summary Judgment is not appropriate.
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`2.
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`Whether the Party’s Respective Marks
`Are Confusingly Similar is a Disputed Issue of Fact
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`Regardless of the Board’s decision regarding the strength of Chamber1ain’s mark, when
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`the LIFTMASTER and LYNX MASTER marks are compared, serious issues of material fact
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`regarding the similarity of the marks at issue in this Opposition exist that preclude summary
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`judgment.
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`In order to determine whether two marks are confusingly similar, the Board must
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`compare the appearance, sound, meaning, and commercial impression of the LIFTMASTER and
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`LYNX MASTER marks. Palm Bay Imports, Inc. v. Venue Clicquot Ponsardin Maison Fondee
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`en 1 772, 396 F.3d 1369 (Fed. Cir. 2005). While the marks must be reviewed in their entirety, it
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`3 Despite consenting to numerous third party uses of the MASTER trademark, Chamberlain attempts to bolster its
`claim that the LIFTMASTER mark is famous by hijacking a laudatory term and asserting that it owns a family of
`MASTER marks. While Chamberlain does own trademark registrations for the mark LIFTMASTER, ACCESS
`MASTER and GARAGE MASTER, it has never advertised or promoted together as indicators of a common source.
`See Exhibit 2, Sally Anderson Deposition at pp. 73-74. As a result, the marks are not recognized as a trademark
`family by consumers, and Chamberlain’s argument must fail as a matter of law. Marion Labs Inc. v.
`Biochemical/Diagnostics Inc. 6 U.S.P.Q.2d l2l5 (TTAB 1998).
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`

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`is appropriate to dissect the marks and give more or less weight to particular feature of the
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`marks. In re National Data Corp., 753 F.2d 1056 (Fed. Cir. 1985).
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`Chamberlain’s conclusion that the marks LIFTMASTER and LYNX MASTER are
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`confusingly similar is based entirely on the sights and sounds of the marks, and the only
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`undisputed fact relied upon is that both marks contain the word MASTER. Opposers’s Br. at pp.
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`7-9. The term MASTER, however, is a laudatory term that is not entitled to broad protection.
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`McCarthy, Trademarks and Unfair Competition §11:17; The Procter and Gamble Co. v. Master
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`Kleens ofAmerica, Inc., 487 F.2d 550 (USCCPA l973)(finding MASTER to be superlative).
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`Moreover, as demonstrated above, the term MASTER is commonly used by third parties as a
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`portion of marks that are applied to similar goods. Exhibit 1, Declaration of Mark Schram at 1] 3;
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`Exhibit 3, Mark Tone Deposition at pp. 13-18. As a result, Chamberlain’s legal argument is
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`flawed since it relies on authorities that discuss the comparison of identical marks and ignores
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`the differences between the dominant LIFT and LYNX portions of the marks.
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`Factually, LIFT and LYNX are words that have different appearances, sound different,
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`and create distinct commercial impressions. Chamberlain’s description of the LIFT and LYNX
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`terms as “one syllable, four letter words composed of one vowel in the second character,”
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`(Opposers’s Br. at p. 9) while not incorrect, is incomplete. Indeed, Chamberlain’s position
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`ignores the undisputed fact that other than the first letter, “L”, the marks have almost no other
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`visual similarity. In addition, a reasonable trier of fact could conclude that the marks are not at
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`all phonetically similar -- after the initial “L” sound, the term LIFT ends with a hard “T” sound
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`that abruptly terminates the word while the term LYNX ends with an “X” or “S” sound that
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`lingers. Most importantly, though, Chamberlain’s argument ignores the drastically different
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`commercial impressions associate with the LIFTMASTER and LYNX MASTER marks. While
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`

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`the term LIFT is descriptive of the function (lifting) of a garage door operator, the term LYNX
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`represents the Applicant’s company name and is suggestive of the Applicant’s company logo, the
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`head of a lynx cat. See Exhibit 1, Declaration of Mark Schram at 1] 2. Since the Lynx cat head
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`logo appears in connection with all of Applicant’s goods in some way, the distinct commercial
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`impressions of these two word marks will be even further enhanced in the marketplace. See
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`Exhibit 1, Declaration of Mark Schram at 1] 2.
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`In the context of summary judgment, when the Board compares the LYNX MASTER and
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`LIFTMASTER marks as set forth above it must resolves all inferences in a light most favorable
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`to Lynx, the non-moving party. When the factors identified above are resolved in favor of Lynx
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`as they must be, the only conclusion that can be drawn is that there is not sufficient similarity
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`between the marks as a matter of law to resolve this matter on summary judgment.
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`3.
`
`Whether Customers are Sophisticated Enough to Distinguish
`Between the Party’s Respective Marks is a Disputed Issue of Fact
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`Another likelihood of confusion factor that Chamberlain ignores in its summary
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`judgment motion is the consumer’s sophistication and degree of care used when purchasing
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`garage door operators. Chamberlain admits, however, that it is undisputed that both
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`Chamberlain and Lynx sell their garage door openers to garage door dealers, garage door
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`installers, and garage door distributors. Opposers’s Br. at p. 13; Exhibit 1, Declaration of Mark
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`Schram at 1] 4; Exhibit 2, Anderson Deposition Transcript at pp. 26-27. While no evidence
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`regarding the sophistication of these customers has been presented to the Board, all inferences
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`must be drawn in Lyr1x’s favor and the Board must conclude — for purposes of this motion - that
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`these professional business owners have specialized knowledgeable in the field of garage doors
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`and conclude that consumers of the LYNX MASTER and LIFTMASTER branded products act
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`with discrimination and are less likely to be confused than the average consumer. Exhibit 1,
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`10
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`
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`Declaration of Mark Schram at {I 4; See Rust, 131 F.3d at 1217 (citing Smith Fiberglass Prods,
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`Inc. v. Anaron, Inc., 7 F.3d 1327, 1329 (7"‘ Cir. 1993) (finding consumers purchasing conductive
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`pipe to be sophisticated and discriminating and unlikely to be confused)). Since all inferences
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`regarding the customer’s level of sophistication must be resolved in a light most favorable to
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`Lynx, the Board must determine that a genuine issue of material fact exists that precludes the
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`entry of summary judgment.
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`4.
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`Whether Lynx Acted with Predatory Intent is a Disputed Issue of Fact
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`As a final act of desperation, Chamberlain asks the Board to charge Lynx with predatory
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`intent because Lynx was involved in a patent infringement litigation with Chamberlain and “it is
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`unlikely that Lynx was unaware of Chamberlain’s LIFTMASTER mark.” Opposer’s Brief at p.
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`16. The leap in reasoning and complete lack of factual support for this argument defies
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`comprehension. Familiarity does not imply predatory intent, much less establish it as an
`uncontested fact. Indeed, contrary evidence demonstrates that Lynx selected its mark by
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`combining a common laudatory term (MASTER) with its existing corporate name (LYNX) and
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`has never intended to create any confusion as to its affiliation with Chamberlain. Exhibit 4,
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`Deposition of Mark Schram at p. 54. When Viewed in a light most favorable to the non-moving
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`party and in the absence of any contrary facts, this factor must weigh in Lynx’s favor.
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`5.
`
`Chamberlain’s Summary Judgment Motion Is Premature,
`And Additional Discovery Is Necessary
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`Lynx believes that Chamberlain has presented this Court with nothing more than
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`conclusory declarations from biased witnesses and inconsistent documents in support of its
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`motion for summary judgment. While the assumptions and inconsistencies in Chamberlain’s
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`evidence are alone sufficient to preclude summary judgment, because inferences are to be drawn
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`in favor of the non-movant, Chamberlain’s motion remains, at best, premature.
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`11
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`

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`Federal Rule of Civil Procedure 56(1) was specifically intended to deal with the problem
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`of premature motions for summary judgment. Spectra Corp. v. Lutz, 839 F.2d 1579, 1581 n. 4
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`(Fed. Cir. 1988). According to Rule 56(f), summary judgment may be refused where the non-
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`moving party has not had the opportunity to discover information that is essential to its
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`opposition. AviaGr0up Int 7, Inc. v. L.A. Gear Calif, Inc., 853 F.2d 1557, 1561 (Fed. Cir. 1988).
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`In the present opposition proceeding, a great deal of discovery with regard to the fame of
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`the LIFTMASTER mark, the third party use of the term MASTER, the phonetic comparisons,
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`and the consumer recognition of the marks is required to test the conclusions set forth in
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`Chamberlain’s affidavits. For this reason as well, the Court should deny Chamberlain’s motion
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`for summary judgment.
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`III.
`
`CONCLUSION
`
`Given the conflicting evidence regarding the likelihood of confusion (and the obviously
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`conflicting conclusions drawn by the parties based on that evidence), the Board must find that
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`genuine issues of material fact exist which preclude summary judgment in Opposer’s favor.
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`Accordingly, for the reasons set forth above, Lynx respectfully requests that the Board deny
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`Chamberlain’s motion.
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`Respectfully submitted,
`
` Dated: May 16, 2005 A. Blair Hughes
`
`James M. McCarthy
`McDonnell Boehnen Hul ert & Berghoff
`300 S. Wackcr Drive, 32nd Floor
`Chicago, Illinois 60606
`Telephone: (312) 913-0001
`
`Attorneys for Applicant,
`Lynx Industries, Inc.
`
`12
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`

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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of App1icant’s Memorandum In Opposition To
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`Opposer’s Motion For Summary Judgment was served this 16”‘ day of May 2005 via hand
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`delivery upon:
`
`Joseph T. Nabor
`Fitch Even Tabin & Flarmery
`120 South LaSa11e St. — Suite 1600
`
`Chicago, IL 60603-3406
`
`C?(/
`
`13
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`

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`Exhibit 1
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`

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`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 78/281,660
`Published April 27, 2004 in the Ofiicial Gazette
`Trademark: LYNX MASTER
`
`The Chamberlain Group,’ Inc.
`
`Opposer,
`
`v
`
`Lynx Industries, Inc.
`Applicant.
`
`)
`
`i
`3
`l
`§
`
`Opposition No. 91/160,673
`
`DECLARATION OF MARK SCHRAM
`
`Mark Schram, in support of Applicant’s Response To Opposer's Motion For Summary
`Judgment, states the following:
`
`I am the Vice-President and General Manager at Lynx Industries, Inc. (Lynx) where I
`1.
`have been employed in various capacities since 1982, and I am personally knowledgeable
`regarding the maters stated herein.
`
`In order to distinguish Lynx’s products fiom our competitor’s products, Lynx uses the
`2.
`name LYNX and our corporate “cat head” logo in connection with all of our products. (Exhibit
`A) The LYNX name and “cat head” logo appear on all residential garage door operators sold in
`the United States.
`
`In addition to The Chamberlain Group Inc. (“Chamberlain”), I am personally aware of
`3.
`many other companies that use or have used the term MASTER in connection with doors, door
`openers, and door installation services. For Example, Chicago Jack owns the mark LIFT
`MASTER for use in connection with industrial lifting equipment (Exhibit B), LIFT MASTER
`has been used in connection with lifiing platforms by JLG (Exhibit C), TORQUE MASTER and
`DOOR MASTER are currently in use in connection with garage door openers by Wayne Dalton
`(Exhibit D), STEELMASTER, SPEED-MASTER, and FLEX-MASTER are currently in use in
`connection with roll—up doors by Flexon (Exhibit E), Rexon Industrial Corporation has applied
`to register the marks HOMEMASTER and MASTER CODE for use in connection with electric
`door openers (Exhibit F), REDI-MASTER is currently in use in connection with motors for
`raising/lowering rolling steel doors by Alpine Overhead Doors (Exhibit G), POWERMASTER is
`currently in use in connection with controls for opening and closing doors by Bosch Rexroth
`Corporation (Exhibit H),
`
`

`
`and the domain name WWW.DOORMASTERS.COM is currently in use in connection with the
`installation of Raynor brand garage door openers (Exhibit I).
`4.
`Since Lynx only sells garage door openers to garage door dealers, garage door installers,
`and garage door distributors, I do not believe that our customers will be confused between
`Chamberlain’s LIFTMASTER name and the name LYNX MASTER. Our customers are
`specialists in the garage door industry who make careful purchasing decisions.
`The undersigned, being hereby warned that willful false statements and the like so made are
`punishable by fine or imprisonment, or both, under 18 U.S.C. §l001, and that such willful false
`statements may jeopardize the validity ofthe application or any resulting registration, declares
`that he is properly authofized to execute this Declaration on behalfofthe applicant; that all
`statements made ofhis own knowledge are true; and all statements made on information and
`
`belief are believed to be true.
`
`Executed on May /2 , 2005
`
`
`
`Vice President and General Manager
`Lynx Industries, lnc.
`
`

`
`Exhibit A
`
`

`
`SILENT GUARD PHOTO EVE SYSTEM ————j
`
`Silent guard non-contact reversing system transmits an invisible light across the
`
`inside of the garage door opening. If anyone or anything crosses that beam of light
`while the door is closing, the opener will reverse automatically to the full open position.
`
`- Non-polarity wiring
`
`- High resolution optics for easy alignment
`and dependable operation
`
`- Splash resistant Photo Eye case
`
`- Compact case design
`
`- Electronics with state-of-the-art design for years of trouble-free operation.
`- So|id—state courtesy light turns on when unit is activated and turns off
`
`automatically approximately 4‘/2 minutes later
`
`- S_elf-diagnostic system constantly monitors operations and communicates
`by flashing courtesy light if a malfunction were to occur
`
`
`
`
`
`
`- Built—in surge suppressor
`
`
`
`LIMIT ADJUSTMENT
`
`
`
`,1.:.r1’.‘
`
`
`
`
`
`
`
`
`:"g-.-u’_-s;i_«‘E3-7;‘jff9--Mr
`
`- Up and down limits are located externally for
`easy adjustment
`
`- Limits are factory-set at 6'6" of travel
`
`9
`
`- Limits will accommodate doors up to 10' high
`
`DPEN CLOSE
`LIMIT
`LIMIT
`
`fl. 5/
`
`R"=F
`V3“?
`7fi:..';;
`YFJ-.iL
`a§f§
`
`.
`
`._
`
`L 000062
`
`

`
`MODEL 455 PLUS
`ocLAssIc SERIES 1/2 H.P.
`
`Exciusiveiy fiaid fihrteugh the Prater;-zsmmas Garage mam? Ensiaiier
`
`CHAIN DRIVE OPERATOR
`
`- Rapid “L Rails" for Maximum Strength
`- Full Chain Drive
`- Non—Polarity Sensitive Photo Eyes
`- Ultra—Secure Radio Controls
`
`- Self—Diagnostic Electronics
`- Service Friendly
`- Automatically Locks Door in Closed Position
`- Automatic Thermal Protected Motor
`
`- On/Off Courtesy Light
`Serving Dear Ensiaiflerfi far Over 39 Years
`
`

`
`Exhibit B
`
`

`
`Trademark Electronic Search System (TESS)
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`I
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`I Record 4 out of 9
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`
`(TARR contains current status, correspondence address and attorney of
`record for this mark. Use the "Back" button of the Internet Browser to return to TESS)
`
`Typed Drawing
`
`Word Mark
`
`Goods and
`Services
`
`LIFTMASTER
`
`IC 006. US 002 012 013 014 023 025 050. G & S: Lifting equipment, namely, slings, cable wires,
`chains, clamps, hooks, links, swivels, and wire, all made of metal. FIRST USE: 20000410. FIRST
`USE IN COMMERCE: 20000410
`
`IC 037. US 100 103 106. G & S: Repair, modification, and rebuilding of lifting equipment. FIRST
`USE: 20000410. FIRST USE IN COMMERCE: 20000410
`
`IC 007. US 013 019 021 023 031 034 035. G & S: Mechanical hoists, mechanical winches, and
`hydraulicjacks. FIRST USE: 20000410. FIRST USE IN COMMERCE: 20000410
`
`IC 008. US 023 028 044. G & S: Manually controlled hoists, manually controlled winches, and
`manually controlled jacks. FIRST USE: 20000410. FIRST USE IN COMMERCE: 20000410
`
`IC 022. US 001 002 007 019 022 042 050. G & S: Slings made of fabric. FIRST USE: 20000410.
`FIRST USE IN COMMERCE: 20000410
`
`Mark Drawing
`Code
`
`(1) TYPED DRAWING
`
`Serial Number
`
`75405944
`
`Filing Date
`
`Current Filing
`Basis
`
`Original Filing
`Basis
`
`Published for
`
`Opposition
`Registration
`Number
`
`December 16, 1997
`
`1A
`
`1B
`
`November 30, 1999
`
`2579009
`
`http://tess2.uspto.gov/bin/showfie1d?f=doc&state=rOd05a.2.4
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`3/16/2005
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`Registration
`Date
`
`June 11, 2002
`
`Owner
`
`(REGISTRANT) Chicago Jack Services, Inc. CORPORATION ILLINOIS 8346 W. 47th Street
`Lyons ILLINOIS 60534
`
`A“°"‘°V °f
`Record
`
`DENNIS M MCWILLIAMS
`
`TRADEMARK. SERVICE MARK
`PRINCIPAL
`
`Type of Mark
`Register
`LiveIDead
`LIVE
`Indicator
`
`
`smumm
`
`new
`
`
`
`I.I-IOME I SITE INDEXI SEARCH I eBUS|NESS I HELP I PRIVACY POLICY
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`http://tess2.uspto.gov/bin/showfield?f=doc&state=rOdO5a.2.4
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`
`‘
`
`Typed Drawing
`
`Word Mark
`
`Goods and
`Services
`
`LIFTMASTER
`
`IC 006. US 002 012 O13 014 023 025 050. G & S: Lifting equipment, namely. slings, cable wires,
`chains, clamps, hooks, links, swivels, and wire, all made of metal. FIRST USE: 20000410. FIRST
`USE IN COMMERCE: 20000410
`
`IC 037. US 100 103 106. G & S: Repair, modification, and rebuilding of lifting equipment. FIRST
`USE: 20000410. FIRST USE IN COMMERCE: 20000410
`
`IC 007. US 013 019 021 023 031 034 035. G & 8: Mechanical hoists, mechanical winches, and
`hydraulicjacks. FIRST USE: 20000410. FIRST USE IN COMMERCE: 20000410
`
`IC 008. US 023 028 044. G & S: Manually controlled hoists, manually controlled winches, and
`manually controlled jacks. FIRST USE: 20000410. FIRST USE IN COMMERCE: 2000041