Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA246949
`ESTTA Tracking number:
`11/05/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91177785
`Plaintiff
`Seattle Pacific Industries, Inc.
`Kevin S. Costanza
`Seed Intellectual Property Law Group PLLC
`701 Fifth Avenue, Suite 5400
`Seattle, WA 98104
`UNITED STATES
`Kevinco@SeedIP.com, Litcal@SeedIP.com
`Reply in Support of Motion
`Kevin S. Costanza
`kevinc@seedip.com, litcal@seedip.com
`/Kevin S. Costanza/
`11/05/2008
`SPI-Reply.pdf ( 8 pages )(372345 bytes )
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`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
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`)
`) Opposition No. 91/177785
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`)
`)
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`Serial No. 77/002855
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`) )
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`) )
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`) )
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`SEATTLE PACIFIC INDUSTRIES, INC.,
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`Opposer,
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`v.
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`MICHAEL SAFRIN,
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`Applicant.
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`OPPOSER’S REPLY IN SUPPORT OF MOTION FOR
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`SUMMARY JUDGMENT SUSTAINING OPPOSITION
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`Applicant, Michael Safrin, has not disputed that he lacks documents to show a bona fide
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`intent to use the applied-for mark, SKATE UNION,
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`in commerce.
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`Indeed, Applicant has
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`admitted that he has no documents evidencing or showing the specific actions taken to begin the
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`marketing and sale of products under the applied-for mark.
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`(Resp. RFP 15) When a trademark
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`applicant does “not have a bona fide intent to use the mark in connection with the identified
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`goods .
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`.
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`. as of the filing date of the application[,]’’ the application is void. TBMP §
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`309.03(c)(6) at 300-42, 44; Aktieselskabet AF 21 v. Fame Jeans Inc., 525 F.3d 8, 21 (D.C. Cir.
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`2008).1 Having shown the absence of any objective evidence of a bona fide intent to use the
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`"mark, Opposer has presented a prima facie case for summary judgment thereby shifting the
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`burden to Applicant to come forward with rebuttal evidence. Boston Red Sox Baseball Club v.
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`Sherman, Oppos. No. 91172268, 2008 WL 4149008 at *6 (TTAB Sep. 9, 2008) (precedential)
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`(hereinafter “Boston Red Sox”). As discussed further below, Applicant has not met that burden.
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`1 Applicant opposes summaryjudgment as if it were based on on a fraud claim. While Opposer reserves
`its right to challenge the application for fraud,
`it notes that the Motion for Summary Judgment is
`premised upon Applicant’s lack of a “bona fide” intent to use the applied-for mark in commerce in
`connection with the goods identified in the application. See Aktieselskabet AF 21, 525 F.3d at 21, 22
`(discussing elements of opposition based on “lack of bona fide intent” versus one based on fraud).
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`

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`A.
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`Applicant Has Not Produced Objective Evidence of Bona Fide Intent
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`The legal standard for proving a bona fide intent is one that requires objective evidence of
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`the circumstances showing a good faith intention to use the mark in commerce at the time the
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`application was filed. Aktieselskabet AF 21, 525 F.3d at 21 (emphasis added).2 Objective
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`evidence is “evidence in the form of real life facts and by the actions of the applicant, not by the
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`applicant’s testimony as to its subjective state of mind. .
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`.
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`. Congress did not intend the issue to
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`be resolved simply by an officer of the applicant later testifying, ‘Yes, indeed, at the time we
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`filed the application, I did truly intend to use the mark at some time in the future.” 3 J.T.
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`McCarthy TRADEMARKS AND UNFAIR COMPETITION § 19:14 (4"‘ ed. 2008) (emphasis added)
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`(hereinafter “McCarthy”).
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`Rather than meeting his burden of presenting objective evidence, Applicant’s Declaration
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`in opposition to summary judgment makes only subjective averments about a putative intent to
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`use the applied-for mark. An applicant who lacks documents to show a bona fide intent to use
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`the applied-for mark in commerce must produce facts to adequately explain the absence of
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`documentary evidence. Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha 0ppos., 26 U.S.P.Q.
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`2d 1503, 1507 (TTAB 1993) (“Commodore”)) (emphasis added). Applicant’s Declaration offers
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`no explanation for the complete absence of documentary evidence, other than his stated intent to
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`wait out marketplace problems and this opposition proceeding.
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`Moreover, Applicant’s Declaration is wholly conclusory. “[A]ffidavits containing mere
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`conclusions have no probative value” in summary judgment proceedings. Cf Children ’s Legal
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`Servs., PLLC v. Kresch, 545 F. Supp.2d 653, 660 (E.D. Mich. 2008) (emphasis added); see also
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`Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1562 (Fed. Cir. 1987) (affirming
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`summary judgment in a trademark action stating that the “[m]ere conclusory statements and
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`denials do not take on dignity by placing them in affidavit form”).3 The “mere assertion of an
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`2 See also Lane Ltd. v. Jackson Int 7 Trading Co., 33 USPQ 2d 1351, 1355 (TTAB 1994) (holding same).
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`3 See also Boston Red Sox, at *6 (factually unsupported assertions are of little, if any, evidentiary value).
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`intent to use the mark without corroboration of any sort, whether documentary or otherwise, is
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`not likely to provide credible evidence to establish a bona fide intention to use the mark.” L. C.
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`Licensing, Inc. v. Berman, 86 U.S.P.Q. 2d 1883, 1892 (TTAB 2008); cf Schuyler v. United
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`States, 987 F. Supp. 835, 839 (S.D. Cal. 1997) (citing 10A Charles Wright, FED. PRAC. AND
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`PROC. § 2721 at 40 (2d ed. 1983) (summary judgment evidence “must be clearly reducible to
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`admissible form”)). The affiant must “set forth in detail” a “counterstatement of facts” based on
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`§p§gi_f§ record evidence. Sinclair Oil Corp. v. Kendrick, 85 U.S.P.Q. 2d 1032, 1036 (TTAB
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`2007) (emphasis added); Sweat Fashions, Inc. 833 F.2d at 1564. The asserted facts must be
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`enough to “raise a right to relief above the speculative level” and the court need not accept as true
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`inferences unsupported by legal conclusions cast as facts. See generally Epps v. U.S. Attorney
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`Gen ’l,_ F. Supp. 2d _, 2008 WL 4119248 at *3 (D.D.C. Sep. 8, 2008) (court need not accept as
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`true unsupported inferences); cf Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249-50 (1986)
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`(metaphysical doubt as to material fact is not enough to avoid summary judgment).
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`The evidence of a bona fide intent to use “must reflect an intention that is fi:rrn[.]”
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`Commodore, at 1508. (emphasis added). Applicant’s Declaration does not provide objective,
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`Q, or spmj evidence. Instead, the Declaration concedes that before considering a sales plan
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`Applicant will await the outcome of this opposition proceeding and the resolution of unspecified
`3
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`“problems in the marketplace.’
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`Safrin Dec].
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`11 8. There is no disclosure about what market
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`problems are impeding him or when, or if, the problems could be resolved. A “bona fide” intent
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`must be something more than a “mere hope;” it must be a real, genuine and firm intent to use the
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`mark in a commercial sense. McCarthy § 19:14. Accordingly, the TTAB rejected an approach
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`similar to that attempted here and held that a “decision to forgo a business model until after the
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`opposition is decided does not explain [the] failure to have any documents whatsoever at the time
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`the application was filed that showed an intent so use the mark.” L. C. Licensing, 86 U.S.P.Q. 2d
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`at 1892. The TTAB further ruled that, absent evidentiary “corroboration,” there is unlikely to be
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`a bona fide intent to use a mark. Id.
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`Applicant’s Declaration implies that he would develop a plan to use the SKATE UNION
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`mark after its allowance, just as he claims he did for the NUTS registration. Remarkably,
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`however, there is no record evidence of whether any sales plans or sales occurred under the
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`NUTS mark.
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`Indeed, Applicant has not shown how or if the two marks are related. Applicant
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`has not disclosed whether he would use the same sales plan used for NUTS, or even what the
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`NUTS approach was.
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`In short, Applicant’s Declaration is not premised on any supported facts.
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`In the similar case of Boston Red Sox, at *6, the TTAB held that an applicant’s assertion that a
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`diverse range of clothing “could be marketed essentially overnight, without forward planning, is
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`simply not credible.” “[T]his claim detracts from, rather than supports, the bona fide nature of
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`[A]pplicant’s intention.” Id.
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`Applicant’s belated reliance on the NUTS mark also contradicts his discovery answers. A
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`party opposing summary judgment cannot rely on a declaration that contradicts prior testimony.
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`Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1313, 67 U.S.P.Q. 2d
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`1865 (Fed. Cir. 2003) (patent infringement case).4 “Discovery admissions, which are a studied
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`response, made under sanctions against easy denials, .
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`.
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`. occur under the supervision of counsel,
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`who has full professional realization of their significance[’]” thus, discovery answers are less
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`easily disclaimed then deposition testimony. Cf Scalfv. D.B. Log Homes, Inc., 27 Cal. Rptr. 3d
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`826, 833, 128 Cal. App. 4th 1510 (Cal. App. 2005). Had Applicant intended to rely upon NUTS
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`sales to show a sales plan for SKATE UNION, the time to make that disclosure was in answer to
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`discovery. He did not do so, but instead stated in discovery answers that:
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`He has no documents relating to the charmels of trade through which he
`1.
`intends to sell goods under the applied-for mark, SKATE UNION. (Resp. RFP 8).
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`Applicant’s discovery answers stated that he has no documents “relating to
`2.
`the customers or potential customers .
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`. .” (Resp. RFP 11).
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`There are no advertisements and promotional materials for the subject
`3.
`goods or services. (Resp. Interrog. 10).
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`4 See also Univ’l City Studios, LLP v. Brost, Oppos. No. 91153683, 2004 WL 1957207 (TTAB 2003) (not
`precedential) (citing Sinskey v. Phamada Ophthalmics Inc., 982 F.2d 494, 25 U.S.P.Q. 2d 1290 (Fed. Cir. 1992)).
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`

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`The Federal Circuit has held that, under Fed. R. Civ. P. 56, “one must .
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`.
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`. proffer more
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`than conclusory testimony or affidavits. .
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`.
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`. “[A] conclusory statement on the ultimate issue does
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`not create a genuine issue of facts.” Imperial Tobacco Ltd v. Philip Morris, Inc., 899 F.2d 1575,
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`1581 (Fed. Cir. 1990) (trademark proceeding involving alleged abandonment of the mark) (citing
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`Sweats Fashions, Inc., 833 F.2d at 1564).5 “|
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`|nsupportable, or specious explanations or excuses
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`will not suffice to raise a genuine issue of fact.” Cf Ferring B. V. v. Barr Labs, Inc., 437 F.3d
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`1181, 11993 (Fed. Cir. 2006)
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`(avoiding summary judgment requires the submission of
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`conflicting evidence) (emphasis added). Otherwise, the utility of summary judgment would be
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`greatly undermined.
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`Here, Applicant’s Declaration presents argument and conclusory
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`statements, but no “evidence” to satisfy his burden to oppose summary judgment.
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`B.
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`The Cases Relied Upon by Applicant Do Not Support His Position
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`Applicant has attempted to shoehom his Declaration into the unique circumstances
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`presented in Commodore so that he may avoid summary judgment. The TTAB denied summary
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`adjudication in Commodore against the “CBM” application because the applicant submitted
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`evidence of a “statement of use” for the related mark, “JCBM,” to establish a bona fide intent to
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`use “CBM.” Id at 1507. By attempting to analogize to Commodore, Applicant appears to
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`contend that registration of an entirely unrelated mark is proof of intent to use the SKATE
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`UNION mark, notwithstanding the absence of evidentiary support of the putative bona fide intent
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`to use the mark. In any event, using two marks to sell the same goods weighs against, rather than
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`for registration of the second mark. See McCarthy § 19:14 (filing intent to use application on
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`many products or filing applications for a variety of marks may cast doubt on bona fide intent).
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`Also, here there is no relatedness of the two marks (compare CBM : JCBM and NUTS : SKATE
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`UNION).
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`5 Cf Kennedy v. Applause, Inc., 90 F.3d 1477, 1481 (9th Cir. 1966) (A court may disregard declarations that are
`inconsistent with prior sworn testimony and that are conclusory or uncorroborated.); cf B.R. Baker Co. v. Lebow
`Bros., 150 F.2d 580, 583 (C.C.P.A. 1206 (1945) (trademark matter holding that while an applicant’s declaration may
`suffice,
`it may not be probative if it
`is characterized by contradictions,
`inconsistencies,
`indefiniteness, and is
`uncorroborated).
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`The rule of Commodore, at 1507, is that “the absence of any documentary evidence on the
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`part of an applicant regarding [a bona fide] intent is sufficient to prove that the applicant lacks a
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`bona fide intention to use it mark in commerce[.]” In Intel Corp. v. Emeny, the TTAB applied
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`Commodore and granted the opposer’s summary judgment. Oppos. No. 91123312 at * 7-11
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`(May 15, 2007) (non-precedential). The TTAB ruled that: “Just as the applicant in Commodore
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`could not point to any §pe_cfi'g documents demonstrating its intent to use the mark, applicant
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`herein has failed to produce any documents that objectively prove his bona fide intent to use
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`the.
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`.
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`. mark in commerce.
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`In spite of several discovery requests that called for applicant’s
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`marketing plans, discussions, or business plans for the .
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`.
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`. mark, none were divulged.” Id. at *7
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`(emphasis added); see also L. C. Licensing, at 1892 (precedential) (summary judgment granted
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`finding applicant failed to explain the absence of documents to corroborate bona fide intent).
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`Applicant also relies on the non-precedential case of Kellogg v. The Earthgrains C0,,
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`Oppos. No. 91110121, 2003 WL 22273096 (TTAB Dec. 16, 1996). However, Applicant has
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`selectively relied on the similarities of Kellogg without
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`fully acknowledging its critical
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`distinguishing factors. See Applicant’s Opp. Brief at pp. 6-7.
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`In Kellogg, at *2, the applicant
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`answered interrogatories stating that it had: (1) “prepared labels for use during test marketing for
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`the product” and (2) “used the [applied-for] mark MORNING GOODNESS in conjunction
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`with. .
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`. packaging for test marketing the product.” The opposer in Kellogg did not ask the
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`Applicant to produce documents that demonstrated the applicant’s test marketing work. The
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`opposer in Kellogg also did not ask the applicant to produce the labels used during test
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`marketing.
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`Id Thus, the TTAB ruled that, “[u]nder the circumstances, we cannot say that
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`applicant failed to have any documentary or other evidence supportive of or bearing on its intent
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`to use the applied-for mark in commerce.” Id. Conversely, Opposer has demonstrated that it
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`expressly asked Applicant for, but Applicant did not produce, any documents that demonstrate a
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`bona fide intent to use the applied-for mark in commerce. Moreover, unlike in Kellogg,
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`Applicant here does not claim to have test-marketed the product. And, Applicant has admitted
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`that he has not undertaken any sales efforts of the products related to the applied-for mark.
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`CONCLUSION
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`To avoid abuse of the “intent-to-use” based trademark application system, Congress has
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`required that the intention to use a mark in commerce be bona fide. See S. Rep. 100-515 100”‘
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`Cong., 2d Sess. (1998) at 4, 1988 U.S.C.C.A.N. 5577, 5582. Registrability of a mark is
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`particularly well suited to summary dismissal when the non-movant has failed to set forth
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`specific, objective facts of a bona fide intent to use the applied-for mark in commerce when the
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`trademark application was filed.
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`In such circumstances, summary judgment is not a disfavored
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`procedure, but [r]ather .
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`.
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`. a salutary method of disposition designed to secure the just, speedy
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`and inexpensive determination[.]” See generally Sweat Fashions, Inc, 833 F.2d at 1562.
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`Applicant has failed to produce objective, corroborative evidence of a E bona fide
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`intention to use the mark in commerce. Specifically, Applicant’s Declaration has no probative
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`value of a bona fide-intent because the Declaration is conclusory, lacks evidentiary support, and
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`is internally inconsistent. While avowing a bona fide intent, the Declaration simultaneously
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`avers that unspecified “problems in the marketplace” have precluded development of a plan to
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`use the applied-for mark in commerce. The Declaration also contradicts Applicant’s discovery
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`answers wherein Applicant was requested to produce evidence of his bona fide intent, but did not
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`do so. For these reasons, summary judgment should be granted and Applicant’s application for
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`registration of the mark s ould be declared void, ab initio.
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`DATED this ZZ
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`day ofNovember, 208.
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` .
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`
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`7
`_
`‘ amberlin
`Donna M.
`701 Fifth Avenue, Suite 5400
`Seattle, Washington 98104
`Telephone (206) 622-4900
`Facsimile (206) 682-6031
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`Attorneys for Opposer
`SEATTLE PACIFIC INDUSTRIES, INC.
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that on this
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`if‘
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`day of November, 2008, the foregoing OPPOSER’S
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`REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT was served upon App1icant’s
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`counsel by United States first-class mail, postage-prepaid, addressed as follows:
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`Daniel S. Polley, Esq.
`DANIEL S. POLLEY, P.A.
`1215 East Broward Boulevard
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`Fort Lauderdale, Florida 33301
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`John F. Bradley, Esq.
`BRADLEY & ROBINSON, P.L.
`1215 East Broward Boulevard
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`Fort Lauderdale, Florida 33301
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`K251/1.30% (ga (av
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`Annette Baca
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`126 1 999_l .DOC