Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA346642
`ESTTA Tracking number:
`05/10/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91174249
`Defendant
`Lynx Industries, Inc.
`A. BLAIR HUGHES
`MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
`300 S WACKER DR, STE 3100
`CHICAGO, IL 60606
`UNITED STATES
`mccarthy@mbhb.com, docketing@mbhb.com
`Opposition/Response to Motion
`James M. McCarthy
`mccarthy@mbhb.com
`/James M. McCarthy/
`05/10/2010
`5.10.10 Public Br. and Exhibits.pdf ( 90 pages )(4203067 bytes )
`
`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`C
`
`ERLAIN GROUP’ INC"
`Opposer,
`
`v.
`
`LYNX INDUSTRIES, INC.,
`
`Applicant.
`
`Opposition No. 91/174,249 (Parent)
`Serial No. 78/619,040
`
`Opposition No. 91/175,332
`Serial No. 78/625,795
`
`Opposition No 91/185,559
`Seria1No. 77/356,941
`
`APPLICANT’S RESPONSE TO OPPOSER'S MOTION FOR SUMNIARY JUDGMENT
`
`

`
`TABLE OF CONTENTS
`
`
`
`INTRODUCTION ......................................................................................................................... 1
`I.
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT MUST BE DENIED ...................... 1
`II.
`A. The Previous Opposition Decision Does Not Control ..................................................... 1
`
`B. Opposer’s Motion Involves Three Separate Applications .............................................. 2
`
`C. The Summary Judgment Standard .................................................................................. 3
`
`D. Chamberlain’s Recitation of Both the Summary Judgment Standard
`
` and the Likelihood of Confusion Standard Is Misleading............................................... 4
`
`E. Many Genuine Issues of Fact Exist and Suggest that Confusion is Not
` Likely.................................................................................................................................. 6
`
`
`
`1. Material Issues Of Fact Suggest that
`Chamberlain’s LIFTMASTER Mark is Not Famous ...................................... 6
`
`
`Chamberlain’s “Evidence” of Fame is Faulty...................................... 7
`a.
`b.
`Chamberlain’s Brand Awareness Studies
`Undercut its Alleged Fame..................................................................... 8
`
`LIFTMASTER is a Suggestive Trademark.......................................... 8
`c.
`d.
`Evidence of Third Party Use
`Creates A Genuine Issue Of Material Fact........................................... 9
`
`2. Whether the Parties’ Respective Marks
`Are Confusingly Similar Is a Disputed Issue of Fact ...................................... 11
`a.
`The Marks at Issue Create Different Commercial
`Impressions............................................................................................ 11
`The Commercial Impression of Lynx’s LYNXMASTER
`Marks Is Based on its Continuous and Consistent Use of the
`LYNX Mark and Cathead Logo.......................................................... 12
`Even the LIFTMASTER and LYNXMASTER Word Marks
`Create Distinct Commercial Impressions........................................... 14
`3. Whether the Goods Are Similar Is a Disputed Issue of Fact ......................... 16
`4. Whether Customers Are Sophisticated Enough to Distinguish
`Between the Party’s Respective Marks Is a Disputed Issue of Fact .............. 18
`5. Whether Lynx Acted with Predatory Intent Is a Disputed Issue of
`Fact...................................................................................................................... 19
`6. Chamberlain’s Summary Judgment Motion Is Premature, And
`Additional Discovery Is Necessary ................................................................... 20
`CONCLUSION ............................................................................................................................ 21
`
`III.
`
`i
`
`
`
`
`
`
`
`
`
`
`
`b.
`
`c.
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`

`
`TABLE OF AUTHORITIES
`
`CASES
`AHP Subsidiary Holding Co. v. Stuart Hale Co., 27 U.S.P.Q.2d 1758 (7th Cir. 1993) ............................... 4
`Am. Express Mktg & Dev. Corp. v. Gilad Dev. Corp., 94 U.S.P.Q.2d 1294 (T.T.A.B. 2010) ..................... 2
`Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) ............................................................................. 3, 4
`Armco, Inc. v. Cyclops Corp., 229 U.S.P.Q. 721 (Fed. Cir. 1986) ........................................................... 4, 5
`Avia Group Int’l, Inc. v. L.A. Gear Cal., Inc., 7 U.S.P.Q.2d 1548 (Fed. Cir. 1988)................................... 20
`Barbeque Marx Inc. v. 551 Ogden Inc., 57 U.S.P.Q.2d 1307 (7th Cir. 2000)............................................ 14
`Boise Cascade Corp. v. Miss. Pine Mfrs. Ass’n., 164 U.S.P.Q. 364 (T.T.A.B. 1969)................................ 12
`Duluth News-Tribune v. Mesabi Publ’g Co., 38 U.S.P.Q.2d 1937 (8th Cir. 1996) .................................... 12
`In re E. I. Du Pont De Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973)................................................ 5
`In re Elbaum, 211 U.S.P.Q. 639 (T.T.A.B. 1981) ...................................................................................... 12
`Hard Rock Cafe Licensing Corp. v. Elsea, 48 U.S.P.Q.2d. 1400 (T.T.A.B. 1998) ...................................... 7
`James Burrough Ltd. v. Sign of the Beefeaters, Inc., 192 U.S.P.Q. 555 (7th Cir. 1976) .............................. 5
`Local Trademarks, Inc. v. Handy Boys, Inc., 16 U.S.P.Q.2d 1156 (T.T.A.B. 1990).................................... 6
`Matsushita Elec. Industrial Co. v. Zenith Radio Corp., 475 U.S. 574 (1986) ............................................. 4
`Nabisco, Inc. v. Warner-Lambert Co., 55 U.S.P.Q.2d 1051 (2d Cir. 2000) ............................................... 14
`In re Nat’l Data Corp., 224 U.S.P.Q. 749 (Fed. Cir. 1985).................................................................. 11, 12
`Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772,
`73 U.S.P.Q.2d 1689 (Fed. Cir. 2005)............................................................................................. 11
`
`Procter & Gamble Co. v. Master Kleens of America, Inc., 179 U.S.P.Q. 735 (C.C.P.A. 1973) ............ 9, 15
`Quartz Radiation Corp. v. Comm/Scope Co., 1 U.S.P.Q.2d 1668 (T.T.A.B. 1986) ..................................... 6
`Rust Env’t & Infrastructure, Inc. v. Teunissen, 45 U.S.P.Q.2d 1187 (7th Cir. 1997)................................. 18
`S.M. Flickinger Co. v. Beatrice Foods Co., 174 U.S.P.Q. 51 (T.T.A.B. 1972) .......................................... 13
`Sleepmaster Products Co. v. Am. Auto-Felt Corp., 113 U.S.P.Q. 63, 64 (C.C.P.A. 1957) ...................... 8, 9
`Smith Fiberglass Prods., Inc. v. Ameron, Inc., 28 U.S.P.Q.2d 1614 (7th Cir. 1993) ................................. 18
`Spectra Corp. v. Lutz, 5 U.S.P.Q.2d 1867 (Fed. Cir. 1988)........................................................................ 20
`St. Croix of Park Falls Ltd. v. Maurice Sporting Goods Inc., 55 U.S.P.Q.2d 1749 (N.D. Ill. 2000) ......... 13
`Ty, Inc. v. Agnes M. Ltd., No. 00-358, 2001 WL 1414210 (N.D. Ill. Nov. 9, 2001) .................................... 4
`Unique Concepts, Inc. v. Manuel, 669 F. Supp. 185 (N.D. Ill. 1987) .......................................................... 4
`United States v. Diebold, Inc., 369 U.S. 654 (1962)..................................................................................... 4
`
`STATUTES
`15 U.S.C. § 1125 (c)(2)(A)-(B)..................................................................................................................... 7
`
`OTHER AUTHORITIES
`37 C.F.R. § 2.71(a)........................................................................................................................................ 4
`Federal Rule of Civil Procedure 56(c) .......................................................................................................... 3
`Federal Rule of Civil Procedure 56(f)......................................................................................................... 20
`2 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11.17
`(4th ed. 2009) ................................................................................................................................... 9, 15
`9A CHARLES ALAN WRIGHT & ARTHUR R. MILLER, FEDERAL PRACTICE AND PROCEDURE
`§ 2382 (3d. ed. 2008).............................................................................................................................. 2
`
`
`
`
`
`ii
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`

`
`I.
`
`INTRODUCTION
`
`Chamber1ain’s motion for summary judgment is without merit,
`
`in fact or law. Even worse,
`
`Chamberlain, with its Brief, seems intent on deceiving or at least confusing the Board about the present
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`oppositions and the related, salient facts.
`
`Indeed,
`
`in its Brief, Chamberlain misstates the law, blurs
`
`together the three separate applications at issue into a single amorphous application/opposition, and relies
`
`on a highly selective set of “facts” to reach unsupported conclusions regarding likelihood of confusion.
`
`Chamberlain also ignores critical elements of the likelihood of confusion analysis in its Brief and instead
`
`presents the Board with factual interpretations and inferences as “evidence.” As a result, Chamberlain’s
`
`Brief fails to provide the minimal legal framework or facts necessary for the Board to entertain its motion
`
`for summary judgment, much less to rule in its favor.
`
`Lynx, on the other hand, takes great effort in this Brief to identify a plethora of disputed issues of
`
`fact. More importantly, Lynx explains clearly and unequivocally which facts apply to which of the three
`
`marks at issue and then goes on to demonstrate why the facts—which must, as a matter of law, be
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`construed in Lynx’s favor———require the denial of Chamberlain’s motion.
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`Finally Lynx responds below to Chamberlain’s opposition to Lynx’s December 28, 2009 motions
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`to amend the descriptions of goods in its three applications. See infia at n. 1. Lynx demonstrates that
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`Chamberlain’s objections to the amendments are unfounded and asks the Board to grant its motion to
`
`amend.
`
`II.
`
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT MUST BE DENIED
`
`A.
`
`The Previous Opposition Decision Does Not Control
`
`Chamberlain would have the Board believe that the result in a prior opposition between the
`
`parties (Opposition No. 91/ 160,673) dictates how the Board should decide this summary judgment
`
`motion.
`
`It does not.
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`Indeed, in the pending parent opposition (No. 91/174,239), the Board already ruled
`
`that Applicant’s LYNXMASTER word mark application (Application No. 78/619,040) was not barred by
`
`res judicata or collateral estoppel due to the findings in the prior opposition (No. 91/160,673). Ex. 1 at 4-
`
`5. More specifically, in its order consolidating the three captioned oppositions, the Board noted that since
`
`

`
`the LYNXMASTER word mark was directed to metal garage door hardware instead of garage door
`
`openers, the present consolidated opposition presented a “different set of transactional facts.” Ex. 1 at 4.
`
`Similarly, each of the three pending applications in this consolidated opposition proceeding presents
`
`transactional
`
`facts that are different
`
`from those presented in prior Opposition No. 91/160,673.
`
`Accordingly,
`
`this summary judgment motion must also be denied because many of these new
`
`transactional facts are disputed.
`
`B.
`
`Opposer’s Motion Involves Three Separate Applications
`
`Chamberlain’s motion, at best, presents a likelihood of confusion analysis that is itself confiising,
`
`as it is nearly impossible to determine what facts alleged by Chamberlain apply to which of the three
`
`pending applications. At worst, Chamberlain appears to have intentionally blurred the lines between the
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`three separate applications by applying both alleged facts and the likelihood of confusion elements to a
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`single amorphous mark instead of to each mark independently. Chamber1ain’s approach is legally flawed
`
`because the law clearly mandates that consolidated cases do not lose their separate identity because of
`
`consolidation. See 9A CHARLES ALAN WRIGHT & ARTHUR R. Mll.LER, FEDERAL PRACTICE AND
`
`PROCEDURE § 2382 (3d. ed. 2008). Rather, each proceeding retains its separate character and requires
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`entry of a separate judgment.
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`Ia’. Accordingly, Chamberlain’s motion should be denied outright because
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`it does not provide the Board with the legal and factual underpinnings necessary to enter a separate
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`judgment for each of the three marks at issue. See Am. Express Mktg & Dev. Corp. v. Gilad Dev. Corp",
`
`94 U.S.P.Q.2d 1294, 1301 (T.T.A.B. 2010)(denying summary judgment where genuine issues of material
`
`fact exist as to the likelihood of confusion with respect to each mark in consolidated proceedings)
`
`In contrast to Chamberlain’s brief, Lynx’s response demonstrates that disputed issues of fact exist
`
`in each separate proceeding requiring the denial of summary judgment for each of the following pending
`
`Oppositions:
`
`

`
`
`
`Opposition No. 91/175,332
`
`Application No. 78/625,795
`
`Application No. 77/356,941
`
`Opposition No. 91/185,559
`
`
`
`
`
`
`"r
`“ Va->1-LynXl\/laster‘
`,. -pry‘
`
`
`
`Opposition No. 91/174,249
`
`Application No. 78/619,040
`
`LYNXMASTER
`
`
`
`
`Metal garage door hardware
`Metal garage door hardware
`Electric door openers, electric
`garage door openers and remote
`
`
`controls for electric garage door
`9p_e_ners
`_J
`. Electric door openers, electric
`.
`. Metal garage door hardware .
`.
`Metal garage door hardware .
`
`all sold only to garage door
`all sold only to garage door
`garage door openers and remote
`
`dealers,
`distributors
`or
`dealers, distributors or installers
`controls for electric garage door
`installersl
`openers all sold only to garage
`door dealers, distributors or
`installers
`
`
`
`
`
`
`
`
`
`
`
`Each of these pending applications presents a set of transactional facts that is different from the
`
`previous opposition between the parties.
`
`In Opposition No. 91/ 174,249, the Board already made this
`
`finding based on the difference between garage door openers and garage door hardware.
`
`In Opposition
`
`No. 91/185,559, the Board is faced with a mark that includes a cathead design element and stylized
`
`wording that is similar to other registered marks owned by the Applicant. Schram Dec. at 111} 35 Ex. A,
`
`B. Finally, the trademark at issue in Opposition No. 91/175,332 involves both the design element and the
`
`substantially different goods. Each factual difference alone is enough to preclude summary judgment.
`
`C.
`
`The Summary Judgment Standard
`
`The rules with regard to summary judgment are clear and well settled. Summary judgment is
`
`only appropriate “if the pleadings, the discovery and disclosure materials on file, and any affidavits show
`
`that there is no genuine issue as to any material fact” and that the moving party is entitled to judgment as
`
`a matter of law. Fed. R. Civ. P. 56(0); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986).
`
`1 The bolded and italicized portions of the descriptions set forth Lynx’s proposed amendments. Lynx’s
`pending motions to amend were timely filed well before the close of fact discovery in order to avoid any
`prejudice to Opposer. As shown herein, the limiting amendments could also narrow the issues for Board
`consideration as required by 37 C.F.R. § 2.7l(a). Thus, Lynx’s motions should be granted.
`
`

`
`
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`Issues of material fact are genuine——and summary judgment is not appropriate——if the evidence is such
`
`that a reasonable jmy could return a verdict for the non—moving party. Anderson, 477 U.S. at 248-49.
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`In order to prevail on its motion, Chamberlain bears the burden of establishing the absence of any
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`genuine issue of material fact. Id at 255-56. Chamberlain’s burden is heavy because all reasonable
`
`inferences must be viewed in a light most favorable to the non-movant, Lynx, and resolved in the non-
`
`movant’s favor. United States v. Diebold, Inc, 369 U.S. 654, 655 (1962); Matsushita Elec. Indus. Co. v.
`
`Zenith Radio Corp., 475 U.S. 574, 587~88 (1986); Anderson, 477 U.S. at 255. “In sum, all significant
`
`doubt over pertinent factual issues must be resolved in favor of the party opposing summary judgment.”
`
`Armco, Inc. v. Cyclops Corp., 229 U.S.P.Q. 721, 723 (Fed. Cir. 1986). Furthermore, a single genuine
`
`issue of material fact is enough to defeat Chamberlain’s motion for summary judgment. See Unique
`
`Concepts, Inc. v. Manuel, 669 F. Supp. 185, 187 (N.D. Ill. 1987). In this brief, Lynx identifies many
`
`disputed issues of fact that preclude summary judgment in each of the three pending oppositions.
`
`D.
`
`ChamberIain’s Recitation of Both the Summary Judgment Standard and the
`Likelihood of Confusion Standard Is Misleading
`
`Chamberlain glosses over and tries to minimize its heavy burden by incorrectly implying that all
`
`doubts should be resolved in its favor. Chamberlain’s Br. at 21. Chamberlain’s position is misleading,
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`however, since it pertains to the likelihood of confusion legal conclusion? It is undisputed that all factual
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`inferences must be resolved by the Board in Lynx’s favor for this summary judgment motion. Armco,
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`229 U.S.P.Q. at 723.
`
`Chamberlain’s brief also misstates and misapplies the legal standard with regard to a likelihood of
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`confusion. While it is true that likelihood of confusion is a question of law, motions for “summary
`
`judgment in trademark infringement cases must be approached with great caution,” because the ultimate
`
`conclusion on likelihood of confusion is a finding of fact. AHP Subsidiary Holding Co. v. Stuart Hale
`
`C0,, 27 U.S.P.Q.2d 1758, 1762 (7th Cir. 1993); see also Ty, Inc. v. Agnes M Ltd, No. 00-358, 2001 WL
`
`1414210, at *6 (N.D. 111. Nov. 9, 2001) (“[Q]uestions of likelihood of confusion involve all fact and no
`
`2 None of the cases to which Chamberlain cites for this proposition are summary judgment cases.
`
`

`
`law, and .
`
`.
`
`. these questions usually are reserved for the jury”). Accordingly, the Board cannot grant
`
`Chamberlain’s motion for summary judgment if there is a single genuine issue of material fact with
`
`
`
`regard to any of the following factual inquiries:
`
`(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 confusion;
`(8) the length of time during and conditions under which there has been concurrent use without
`evidence of actual confusion;
`(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;
`(1 1) the extent to which an applicant has a right to exclude others from use of its mark on its
`
`;(glO2O)d’tSlie extent ofpotential confusion; and
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`(13) any other established fact probative of the effect of use.
`
`In re E. I. Du Pont De Nemours & C0,, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973).
`
`In its application of the du Pont factors, Chamberlain conceals the genuine issues of fact by
`
`providing an “evaluation” of only the likelihood of confusion factors that it deems “most relevan .”
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`Chamberlain’s Br. at 6. Chamberlain’s analysis is therefore woefully incomplete as it ignores virtually all
`
`of the likelihood of confusion factors that are reflective of the actual marketplace circumstances in which
`
`customers will encounter the products. See, e.g., James Burrough Ltd. v. Sign ofthe Beefeater, Inc., 192
`
`U.S.P.Q. 555, 562-63 (7th Cir. 1976) (“[T]rademark infiingement must be considered in a marketplace
`
`context[.]”). Indeed, Chamberlain either completely ignores or gives merely a passing reference to
`
`factors such as the third party uses of LIFT and MASTER marks, the commercial impressions generated
`
`by the LIFTMASTER, LYNX and LYNX Cathead marks, the long-standing concurrent use of the
`
`LIFTMASTBR, LYNX and LYNX Cathead marks, and the sophistication of the customer base.
`
`Chamberlain’s conclusion that likelihood of confusion exists is, therefore, inherently unreliable, for it is
`
`axiomatic that even when marks are identical, confusion is not likely if the goods or services in question
`
`are not related or marketed in such a way that they would be encountered by the same persons in
`
`

`
`situations that would create the incorrect assumption that they originate from the same source. See, e.g.,
`
`Local Trademarlcs, Inc. v. Hanafv Boys, Inc., 16 U.S.P.Q.2d 1156, 1158 (T.T.A.B. 1990); Quartz
`
`Radiation Corp. v. Comm/Scope C0,, 1 U.S.P.Q.2d 1668, 1669-70 (T.T.A.B. 1986). Thus, Chamberlairfs
`
`incomplete likelihood of confusion analysis is faulty, and its conclusion that likelihood of confusion
`
`cannot be factually disputed is without merit.
`
`E.
`
`Many Genuine Issues of Fact Exist and Suggest that Confusion is Not Likely
`
`Lynx’s complete, rnarket—centered likelihood of confusion analysis below easily demonstrates
`
`that many genuine issues of material fact exist regarding Opposer’s claims. Accordingly, Chamberlain
`
`has failed to meet its burden of establishing as a matter of law that Lynx’s use of the LYNXMASTER
`
`word mark and LynxMaster Cathead design marks are likely to cause confusion with its LIFTMASTER
`
`mark. Thus, Chamberlain’s motion must be denied.
`
`1.
`
`Material Issues Of Fact Suggest that
`Chamberlain’s LIFTMASTER Mark is Not Famous
`
`A critical initial step in any likelihood of confusion analysis is to determine the strength of the
`senior party’s mark, and Chamberlain insists that its LIFTMASTER mark is “famous.” Chamberlain’s
`
`Br. at 11-15. Chamberlaiifs argument, however, openly contradicts a previous finding by the Board and
`
`seems premised on the idea that the volume of evidence is more important than the accuracy or relevance
`
`of that evidence. Indeed, Chamberlain has submitted a great deal of “evidence” regarding their use of and
`
`advertising for the LIFTMASTER mark, most of which is either unsupported, repetitive, or irrelevant to
`
`the determination of “fame” in the United States.
`
`In determining whether a mark is distinctive and famous, a court may consider factors such as,
`
`but not limited to, the following:
`
`(A) the duration, extent, and geographic reach of advertising and publicity of the
`allegedly famous mark, whether advertised or publicized by the owner or third parties;
`(B) the amount, volume, and geographic extent of sales of goods or services offered
`under the allegedly famous mark;
`(C) the extent of actual recognition of the allegedly famous mark;
`(D) whether the allegedly famous mark was registered under the Act of March 3, 1881, or
`the Act of February 20, 1905, or on the principal register;
`(E) the degree of inherent or acquired distinctiveness of the allegedly famous mark; and
`
`

`
`(F) the extent to which the owner of the allegedly famous mark is engaging in
`substantially exclusive use of the mark.
`
`15 U.S.C. § 1125 (c)(2)(A)-(B).
`
`Lynx identifies several material facts below regarding the evidence of fame presented by
`
`Chamberlain, certain brand awareness studies that Chamberlain conveniently ignored, and evidence
`
`regarding the nature and extent of the same or similar marks by third parties. When considered in a light
`
`most favorable to Lynx, these facts are disputed and determinative of whether Chamberlain’s
`
`LIFTMASTER mark is famous. These genuine issues of material fact with regard to the distinctiveness
`
`of Chamberlain’s mark therefore precludes the entry of summary judgment in any of the three pending
`
`oppositions.
`
`a.
`
`Chamberlain’s “Evidence” of Fame is Faulty
`
`Chamberlain’s evidence purporting to show the fame of the LIFTMASTER mark is thin, at best.
`
`Chamberlain offers the testimony of employee Sarah Anderson, the Vice President of Marketing
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`Communications and Customer Advocacy, as to the duration and extent of Chamberlain’s use of and
`
`advertising for the LIFTMASTER, but this amounts to nothing more than conclusory statements from a
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`biased witness. Ex. 2 at 23:12-18. Indeed, none of the sales, advertising, or market share data is
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`supported by any corroborating documentation. Chamberlain’s Br. at 11-12. Even worse, Chamberlain
`
`uses more employee testimony, a declaration from in-house counsel Mark Tone, in an attempt to establish
`
`
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`a broad geographic “use” of its LIFTMASTER mark by detailing an exhaustive list of foreign trademark
`
`registrations (that in some cases are for a mark that Chamberlain has admitted is not in use).3 Foreign
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`registrations are irrelevant to the question of fame in the United States, however. Hard Rock Cafe
`
`Licensing Corp. v. Elsea, 48 U.S.P.Q.2d. 1400, 1405 (T.T.A.B. 1998). Meanwhile, Chamberlain
`
`completely ignored the “fame” factors that do not support its position, failing to present undisputed
`
`evidence of poor consumer recognition and third party use to the Board.
`
`3 Chamberlain openly misleads the Board by relying on registrations for the mark LIFT-MASTER,
`Chamberlairfs Br. at 13-14, Tone Dec.,
`I 8,
`
`The LIFT-
`
`MASTER marks may therefore be subject to Cancellation.
`
`

`
`b.
`
`Chamberlain’s Brand Awareness Studies
`
`Undercut its Alleged Fame
`
`Chamberlain’s attempt to argue that the alleged fame of its LIFTMASTER mark is not in dispute
`
`runs afoul one of the few relevant portions of the Board’s holding in the prior opposition. In particular,
`
`the Board agreed with Lynx that many years’ worth of Chamberlain’s own brand awareness studies
`
`“undercut opposer’s claim that the LIFTMASTER mark is a famous mark.” Tone Dec., Ex. G at 14.
`
`According to the Board, even the aided awareness numbers provided “little support for opposer’s claim
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`that the LIFTMASTER mark is a famous mark.” Id. at 14. The Board went on to characterize the
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`evidence as “point[ing] to low recognition of the LIFTMASTER brand among ultimate consumers.” Ia’.
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`Perhaps when Chamberlain asserted that “little has changed” since the prior opposition, it was
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`referring only to its own evidence. Chamber1ain’s Br. at 1. Indeed, according to Chamberlain’s own
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`REDACTED
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`Therefore, when these facts are viewed in a light most favorable to Lynx, the Board must conclude for
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`each pending opposition that the LIFTMASTER mark has not achieved the elusive status of a “famous”
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`mark.
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`c.
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`LIFTMASTER is a Suggestive Trademark
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`LIFTMASTER is not famous or even distinctive. Rather, Chamberlain admits that it is at best a
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`suggestive trademark for which Chamberlain is trying to establish acquired distinctiveness and fame.
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`Chamberlain’s Br. at 10-11. The Board considered a similar situation in Sleepmaster Products Co. v. Am.
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`Aut0—Felt Cmgp. 113 U.S.P.Q. 63, 64 (C.C.P.A. 1957). In Sleepmaster, the CCPA evaluated the
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`likelihood of confusion between the marks HEALTI-IMASTER, RESTMASTER, and DREAMMASTER
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`and the mark SLEEPMASTER when these marks were used on identical goods sold through similar
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`channels of trade. Id. at 64—66. The CCPA determined that a likelihood of confusion determination could
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`

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` y
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`it
`z>
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`not be based on the shared MASTER suffix alone and that discriminating purchasers could readily
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`distinguish between marks having such suggestive prefixes, namely SLEEP, REST, and DREAM. Id. at
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`66.
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`Similar to the Sleepmaster case, Chamberlain’s mark consists of a suggestive term LIFT
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`(suggesting the lifting action of a garage door opener) paired with the MASTER suffix. The term
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`MASTER, however, is also clearly recognized as a laudatory term that is not entitled to broad protection.
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`2 J. THOMAS NICCARTHY, l\/ICCARTHY ON TRADEMARKS AND UNFAIR CQMIPETITION § ll.l7p(4th ed.
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`2009); Procter & Gamble Co. v. Master Kleens ofAmerica, Inc., 179 U.S.P.Q. 735, 73b (C.C.P.A.
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`1973)(finding MASTER to be superlative). In the prior opposition between the parties, the Board
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`supported this position, taking judicial notice of the definition of MASTER (as denoting control) and
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`finding that it “tends to show that MASTER is slightly suggestive." Tone Dec., Ex. G at 18. When the
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`terms LIFT and MASTER are combined, Chamberlain’s LIFTMASTER marks “[are] not inherently
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`strong since [they] suggest[] that the associated garage door openers have mastered the art of lifting
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`garage doors.” Ex. 6 at L691.
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`(1.
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`Evidence of Third Party Use
`Creates A Genuine Issue Of Material Fact
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`The strength of Chamber1ain’s LIFTMASTER marks is further undennined by the prevalent third
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`party use of similar trademarks. Indeed, there is a substantial amount of evidence in the record that
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`demonstrates widespread use of identical LIFTMASTER marks, of the LIFT prefix, or of the term
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`MASTER in connection with doors, door openers, and door installation is widespread. Indeed, Lynx’s
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`own customer list includes garage door dealers, distributors, and installers operating under the names
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`Moreover, it is undisputed that the following marks are currently in use in the United States:
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`Ex. 7 at 1132-24;
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`6 LIFT MASTER is currently used in connection with industrial lifting equipment by
`Chicago Jack;
`0 LIFT—O—MAT is currently used in connection with metal fittings for garage doors;
`0 LIFT—SLIDE is currently used in connection with metal hardware for doors;
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`

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`0 LIFT READY ROLLING CLOSURES is currently used in connection with metal rolling
`doors;
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`0 WIND MASTER is currently in use in connection with metal garage doors;
`0 HURRICANE MASTER is currently in use in connection with metal reinforcements for
`garage doors;
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`0 TORQUE MASTER is currently in use in connection with garage door openers by
`Wayne Dalton;
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`0 DOOR MASTER is currently in use in connection with garage door openers by Wayne
`Dalton;
`.
`
`0 FLEX~MASTER is currently in use in connection with roll-up doors by Flexon;
`o REDI—MASTER is currently in use in connection with motors for raising and lowering
`rolling steel doors by Alpine Overhead Doors;
`0 POWER MASTER is currently in use in connection with controls for opening and
`closing doors by Bosch Rexroth Corporation; and
`0 W W W.DOORlVlASTERS.COM is currently in use in connection with the installation of
`Raynor brand garage door openers.
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`Schram Dec., 1] 9, Ex. C-R; Ex. 2 at 10124-10.
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`REDACTED
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`but
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`Chamberlain has refused to provide such a list during discovery.Ex. 5.
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`The extensive third party use of the LIFTMASTER trademark, or of the LEFT or MASTER
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`components at the very least, constitute material issues of fact regarding the strength of Chamberlain’s
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`LIFTMASTER trademark. Accordingly, when all facts and reasonable inferences are viewed in a light
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`most favorable to the non—movant, it is entirely reasonable that a trier of fact could return a verdict for
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`Lynx, finding that the LIFTMASTER mark is weak or only entitled to a narrow scope ofprotection. In
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`such a situation, summary judgment is not appropriate for any of the three pending applications.
`
`10
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`2.
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`Whether the Parties’ Respective Marks
`Are Confusingly Similar Is a Disputed Issue of Fact
`
`a.
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`The Marks at Issue Create Different Commercial Impressions
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`Regardless of the Board’s decision regarding the strength of Chamberlain’s mark, when the
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`Opposer’s LIFTMASTER mark is compared to the pending LYNXMASTER word mark and LynxMaster
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`Cathead marks, serious issues of material fact regarding the similarity of the marks exist such that
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`summary judgment is precluded in each of the three pending oppositions.
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`Chamberlain’s conclusion that Lynx’s marks are confusingly similar to the LIFTMASTER mark
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`is based entirely on the sights and sounds of the word marks and fails to properly consider the cathead
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`design element.4 For two of the pending oppositions, as seen below, however, the LIFTMASTER word
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`mark must be compared to Lynx’s LynxMaster Cathead logo:
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`
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`Opposition No. 91/175,332
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`Opposition No. 91/185,559
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`=.-.-LynXl_i\_/[aster
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`Application No. 78/625,795
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`Application No. 77/356,941
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`..:§i*$i:%::Ly11XM:aster
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`In order to determine whether two marks are confusingly similar, the Board must compare the
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`appearance, sound, meaning, and commercial impression of the LIFTMASTER mark with that of the
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`LYNXMASTER word mark (Opposition No. 91/174,249) and the LynxMaster Cathead marks, shown
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`above. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1 772, 73 U.S.P.Q.2