Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA287079
`ESTTA Tracking number:
`06/01/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91180271
`Plaintiff
`Broadcom Corporation
`Susan M. Natland
`Knobbe, Martens, Olson & Bear LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`UNITED STATES
`efiling@kmob.com
`Motion for Summary Judgment
`Susan M. Natland
`efiling@kmob.com, ankim@kmob.com
`/Susan M. Natland/
`06/01/2009
`Opposers Motion for SJ BROC676M.pdf ( 25 pages )(1553711 bytes )
`Decl and exhibits BROC676M.pdf ( 152 pages )(7291436 bytes )
`2nd half of exhibits BROC676M.pdf ( 169 pages )(5164653 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`
`
`
`
`
`
`BROC.676M
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Application No.: 78/921,796
`Opposition No.: 91 180271
`,
`_
`I hereby certify that
`this correspondence and all marked
`attachments are being electronically filed with the Trademark
`Trial and Appeal Board through their web site located at
`hgp://estta.uspto.gov on
`
`June 1’ 2°09
`(Date)
`
`
`_
`
`'
`
`
`
`Susan M. Natland
`
`
`
`BROADCOM CORPORATION,
`
`Opposer,
`
`V_
`
`BROADPHONE LLC
`
`'
`
`’
`
`Applicant.
`
`
`
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT; MOTION TO SUSPEND
`
`PROCEEDINGS PENDING THE DISPOSITION OF OPPOSER’S MOTION FOR
`
`SUMMARY JUDGMENT; AND MEMORANDUM IN SUPPORT THEREOF
`
`Pursuant
`
`to FRCP 56(0) and TBMP §528, Broadcom Corporation (“Opposer”) moves the
`
`Trademark Trial and Appeal Board (the “Board”) for summary judgment. This motion is brought in light
`
`of a clarification in the law concerning the “use in commerce” requirement by virtue of the Federal
`
`Circuit’s precedential opinion in Aycock Engineering, Inc. V. Airflite, Inc., Cancellation No. 92032520,
`
`Case No. 2008-1154 (Fed. Cir. March 30, 2009) (slip op.) (“AM”) and the precedential decision by the
`
`Board of Honda Motor Co. Ltd V. Friedrich Winkelmann (Opposition No. 91170552) (T.T.A.B. April 8,
`
`2009) (“Honda”) as well as the factual record not fully considered in any prior motion for summary
`
`judgment. Further, Opposer hereby requests that the Board suspend the proceeding pending a decision on
`
`its motion pursuant to 37 C.F.R. §2.l27(d).
`
`MEMORANDUM IN SUPPORT OF OPPOSER’S MOTION FOR SUMMARY
`
`JUDGMENT AND MOTION TO SUSPEND
`
`I.
`
`INTRODUCTION
`
`As Opposer believes that it will be damaged by Application Serial No. 78/921,796 (“Applicant’s
`
`Application”) for the mark BROADPHONE (“Applicant’s Mark”), Opposer has brought the subject
`
`opposition proceeding against Applicant’s Application.
`
`-1-
`
`

`
`As set forth more fully in the memorandum herein and shown in the attached Declaration of Susan
`
`M. Natland (“Natland Dec1.”) and the exhibits attached thereto, this motion is based on the grounds that
`
`Applicant committed fraud in attempting to procure a registration for Applicant’s Mark because Applicant
`
`had not used Applicant’s Mark in connection with all of the services identified in Applicant’s Application
`
`as of the filing date of the Application. As Applicant has committed fraud, Applicant’s Application is void
`
`ab initio.
`
`The dispositive issue in this case is whether Applicant’s Application, which is based solely on
`
`Section 1(a) of the Trademark Act for the Class 38 services, is void due to Applicant’s fraudulent assertion
`
`that it had used Applicant’s Mark in U.S. commerce in association with all of the services listed in Class 38
`
`of Applicant’s Application. The undisputed facts demonstrate that Applicant had not “used” nor could
`
`have had an objective reasonable belief that it had used the mark in association with 2_1_1_l of the Class 38
`
`services listed in Applicant’s Application within the meaning of Section 1(a) of the Trademark Act (1) as
`
`of the November 9, 2004, the alleged date of first use in commerce, (2) as of July 3, 2006, the filing date of
`
`the Applicant’s Application, or (3) as of the publication of Applicant’s Application. Accordingly, Opposer
`
`requests that the Board deny registration of Applicant’s Application in light of the fraud committed by
`
`Applicant.
`
`II.
`
`UNDISPUTED FACTS
`
`The undisputed facts in this matter are as follows:
`
`1.
`
`On July 3, 2006, Applicant electronically filed Applicant’s Application seeking registration
`
`in the United States for Applicant’s Mark based solely on Section 1(a) of the Trademark Act in connection
`
`with the following goods and services:
`
`Telecommunications software and hardware; cable Internet, voice-over-intemet-protocol (VOIP),
`wireless fidelity‘ (WIFI), mobile, and landline telecommunications services;
`fixed mobile
`convergence, personal phone numbers and personal phone book, content on mobile and fixed line
`telecomunications [sic].
`
`2.
`
`Applicant’s Application was based on Section 1(a) of the Trademark Act, and included the
`
`following statements:
`
`

`
`The applicant, or the applicant's related company or licensee, is using the mark in commerce, and
`lists below the dates of use by the applicant, or the applicant's related company, licensee, or
`predecessor in interest, of the mark on or in connection with the identified goods and/or services.
`15 U.S.C. Section l05l(a), as amended.
`
`: Telecommunications software and hardware; cable Internet, voice-
`International Class
`over-intemet-protocol (VOIP), wireless fidelity (WIFI), mobile, and landline telecommunications
`services; fixed mobile convergence, personal phone numbers and personal phone book,content on
`mobile
`and
`fixed
`line
`telecommunications
`[sic].
`
`, the mark was first used at least as early as 11/09/2004, and first
`In International Class
`used in commerce at least as early as 11/09/2004, and is now in use in such commerce.
`
`3.
`
`In addition, Applicant’s Application was signed under penalty of “fine or imprisonment, or
`
`both, .
`
`.
`
`. and [knowing] that .
`
`.
`
`. willful false statements may jeopardize the validity of the application or
`
`any resulting registration .
`
`.
`
`. ” See the file history for Applicant’s Application.
`
`4.
`
`In the first Office Action, dated December 6, 2006, the Examining Attorney indicated that
`
`the identification of goods and services in the application was unacceptable and required Applicant to
`
`amend the identification. fig the file history for Applicant’s Application.
`
`5.
`
`On February 27, 2007, Applicant responded to the Office Action, by amending the
`
`identification of goods and services in Applicant’s Application and adding an additional class to the
`
`application. As a result, the amended identification included the following services in Class 38:
`
`Cable Internet, voice-over-intemet-protocol, wireless fidelity, mobile and landline communications
`services; streaming of audio and Visual material, namely by fixed mobile convergence; personal
`phone numbers and personal phone book services in connection with said communications
`services.
`
`6.
`
`While Applicant amended the basis for the Class 9 goods to be based on its bona-fide
`
`intention to use the mark in U.S. commerce, the so_lg basis for the Class 38 services remained Section 1(a)
`
`of the Trademark Act, with an alleged date of first use of at least as early as November 9, 2004. As to the
`
`services in Class 38 and pursuant to Section 1(a) of the Trademark Act, the Applicant declared the
`
`following again:
`
`The mark was in use in commerce on or in connection with the goods or services listed in the
`application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(l)(i). 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. §l00l, and that such willful false statements may
`jeopardize the validity of the application or any resulting registration.
`
`-3-
`
`

`
`7.
`
`On April 18, 2007, the Examining Attorney issued an Examiner’s Amendment, amending
`
`the identification of services in Class 38 to be consistent with the following:
`
`International Class 38: Cable Internet, voice-over-intemet-protocol, wireless fidelity, mobile and
`landline communications services; streaming of audio and visual material, namely by fixed mobile
`convergence; electronic data transmission of personal phone numbers and personal phone book
`content.
`
`S_ee_ the file history for Applicant’s Application.
`
`8.
`
`On June 6, 2007, Applicant’s Application published for opposition purposes, with the sole
`
`basis of registration under Section 1(a) for the services in Class 38. fig the file history for Applicant’s
`
`Application.
`
`9.
`
`On October 24, 2007, Opposer filed the subject Opposition against Applicant’s Application
`
`and the Opposition proceeding was assigned Opposition No. 91180271. See the file history for Applicant’s
`
`Application.
`
`10.
`
`On or about February 21, 2008, Opposer personally served on Applicant’s counsel
`
`Opposer’s First Set of Discovery Requests. Natland Decl. 112.
`
`11.
`
`On or about May 16, 2008, Applicant mailed to counsel for Opposer, Applicant’s
`
`Responses to Opposer’s Requests for Admissions. Natland Decl. 113.
`
`12.
`
`On or about October 31, 2008, Applicant mailed to Opposer, Applicant’s Responses to
`
`Opposer’s Interrogatories and Document Requests. Natland Decl. 113.
`
`13.
`
`Opposer’s Request for Admission No. 63 asks Applicant to: “[a]dmit that Applicant has
`
`never licensed a third party to use Applicant’s Mark.”
`
`Applicant’s Response: “Admitted.” Natland Decl.113.
`
`14.
`
`Request for Admission No. 79 asks Applicant to: “[a]dmit that Applicant’s Goods and
`
`Services are provided to consumers in the telecommunications industry.”
`
`Applicant’s Response: “Denied.” Natland Decl. 113.
`
`15.
`
`Interrogatory No. 5 requested that Applicant: “[i]dentify and describe Applicant’s first use
`
`of Applicant’s Mark, including, but not limited to, the date Applicant’s mark was first used in the U.S. by
`
`-4-
`
`
`
`

`
`Applicant, and the date Applicant’s Mark was first used in commerce by Applicant, and identify all
`
`persons with knowledge thereof and all documents relating thereto.”
`
`Applicant’s Response: “The mark was first used in U.S. commerce on 11/9/04, in an offer and
`
`accompanying presentation package .
`
`.
`
`. ” Natland Decl. 113.
`
`16.
`
`Interrogatory No. 8 requested that Applicant: “[w]ith respect to each of the goods and/or
`
`services identified .
`
`.
`
`. state the total number of annual sales, in units, subscriptions, users and dollars, for
`
`each calendar year from the first use of such good and/or service in connection with Applicant’s Mark to
`
`the present.”
`
`Applicant’s Response: “No sales to date.” Natland Decl. 113.
`
`17.
`
`Interrogatory No. 10 requested that Applicant: “[d]escribe and identify all channels of
`
`trade, including, but not limited to, the name and location of all wholesale and/or retail stores and all
`
`websites, through which the goods and/or services identified .
`
`.
`
`. are provided under Applicant’s Mark, and
`
`identify all persons with knowledge thereof and all documents related thereto.”
`
`Applicant’s Response: “Services offered via discussions on licensing the technology or providing
`
`the services to cable operators, telecom companies and VoIP companies. Also via Broadphone’s website:
`
`www.broadphone.com.” (emphasis added). Natland Decl. 113.
`
`18.
`
`Interrogatory No. 12 requested that Applicant: “[s]tate the lowest, highest and average retail
`
`price for each good and/or service identified .
`
`.
`
`. by, for example, unit or subscription, or estimated retail
`
`price if such good and/or service has not been sold or provided, for every year from the year that each good
`
`or service was first sold or offered under Applicant’s Mark in the U.S. to the present.”
`
`Applicant’s Response: “No sales.” Natland Decl. 113.
`
`19.
`
`Interrogatory No. 21 requested that Applicant: “[d]escribe in detail all agreements and
`
`parties thereto which Applicant has entered or is contemplating to enter relating to the sale or offering of
`
`goods and/or services in connection with Applicant’s Mark, or any variation thereof, including, but not
`
`limited to, all license agreements, and identify all persons with knowledge thereof and all documents
`
`related thereto.”
`
`

`
`Applicant’s Response: “No agreements or draft agreements.” Natland Decl. 113.
`
`20.
`
`Interrogatory No. 22 requested that: “[i]f Applicant claims or is claiming the benefit of any
`
`use of Applicant’s Mark, or any variation thereof, by any predecessor in title or licensee, identify the
`
`predecessor in title or licensee and describe in detail the nature and extent of the predecessor’s or
`
`licensee’s use of Applicant’s Mark or any variation thereof.”
`
`Applicant’s Response:
`
`“The joint venture between Aubrey Balkind and Roy Shkedi .
`
`.
`
`.
`
`is a
`
`predecessor—in-interest to Applicant, and used the Broadphone mark in offering services to telecom
`
`companies, including Verizon .
`
`. .” Natland Decl. 113.
`
`21.
`
`Interrogatory No. 32 requested that Applicant: “[i]dentify each class of person, including,
`
`but not limited to, gender, age and ethnicity, who purchase, use or utilize goods and/or services provided
`
`under Applicantfs Mark.”
`
`Applicant’s Response: “No one has yet purchased or used Applicant’s products. Applicant has
`
`Lergd its services to various cable, telecom and VoIP companies under the Broadphone mark.” Natland
`
`Decl.113.
`
`22.
`
`Request for Production No. 15 requested that Applicant produce: “[a]ll documents and
`
`W
`
`things, including financial, accounting and corporate records concerning: (a) your total income from the
`
`sale or license of goods and/or services sold under Applicant’s Mark annually by goods or services per
`
`calendar year, from first use of Applicant’s Mark for each such good or service to the present; and (b) your
`
`projected income from the sale or license of goods and/or services sold under Applicant’s Mark annually
`by goods or services per calendar year.”
`
`Applicant’s Response: “No such documents are presently believed to exist.” Natland Decl.113.
`
`23.
`
`Request
`
`for Production No. 45 requested that Applicant produce: “[a]ll documents
`
`sufficient to identify the approximate annual sales in both units and dollars of all goods and/or services
`
`offered in connection with Applicant’s Mark, or any variation thereof, by year on an annual basis, from
`
`Applicant’s first use of Applicant’s Mark until present.”
`
`Applicant’s Response: “No such documents are presently believed to exist.” Natland Decl. 113.
`
`.6.
`
`

`
`24.
`
`Request for Production No. 49 requested that Applicant produce: “[a]ll documents and
`
`things evidencing, referring or relating to third-party use of Applicant’s Mark, or any Variation thereof,
`
`including, but not limited to, authorizations, assignments, licenses [sic] agreements, including but not
`
`limited to, manufacturing agreements, Whether in draft form or executed.”
`
`Applicant’s Response: “No such documents are presently believed to exist.” Natland Decl. fl[3.
`
`25.
`
`Request for Production No. 50 requested that Applicant produce: “[a]ll documents and
`
`things evidencing, referring or relating to the sale of each and every good and/or service in connection with
`
`Applicant’s Mark by Applicant, or a related company or licensee.”
`
`Applicant’s Response: “No such documents are presently believed to exist.” Natland Decl. 1l3.
`
`26.
`
`Request for Production No. 13 requested that Applicant produce: “[a]1l documents and
`
`things sufficient to identify the period or periods of use of Applicant’s Mark, or any variation thereof, since
`
`the date of first use of Applicant’s Mark.”
`
`Applicant’s Response:
`
`“To the extent not privileged or immune from production on grounds of
`
`attorney/client privilege or attorney work product, the requested documents will be produced.” Natland
`
`Decl. 1l3.
`
`27.
`
`Request for Production No. 17 requested that Applicant produce: “[a]ll documents and
`
`things sufficient to establish the date of first use in commerce of Applicant’s Mark, or any variation
`
`thereof, in connection with each good and/or service rendered under Applicant’s Mark, or any variation
`
`thereof.”
`
`Applicant’s Response: “The requested documents will be produced to the extent they exist and are
`
`not privileged or immune from production on grounds of attorney/client privilege or attorney work
`
`product.” Natland Decl. 1l3.
`
`28.
`
`In response to Opposer’s First Set of Discovery Requests, including Request for Production
`
`Nos. 13 and 17, Applicant produced a number of documents. Vln an email produced by Applicant dated
`
`November 9, 2004 (Applicant’s alleged date of first use in commerce of Applicant’s mark), from Aubrey
`
`Balkind to roy@broadphone.com, Ms. Balkind indicates that “BroadPhone .
`
`.
`
`. has conceived and filed a
`
`-7-
`
`

`
`patent for a breakthrough service — Mobiline — that simply and powerfully ties together wireline and
`
`wireless networks. It’s not yet on the market .
`
`.
`
`. (the solution can be implemented in 6 months).” Natland
`
`Decl. 114.
`
`29.
`
`In an email produced by Applicant from Philip Junker to Aubrey Balkind dated October 21,
`
`2005 (nearly a year after the alleged date of first use in commerce), Mr. Junker demonstrates his
`
`understanding that Applicant was unable, as of that date, to render any services when he implored Ms.
`
`Balkind to “[p]lease do feel free to keep us apprised of any significant progress you make toward a
`
`commercial launch.” Natland Decl. at 114.
`
`30.
`
`In an email from Aubrey Balkind to Carl Rossetti dated January 17, 2006, Aubrey indicated
`
`that Broadphone “can have an operating product within 9 months that you can test in the market.” Natland
`
`Decl. 114.
`
`31.
`
`In an email from Aubrey Balkind to bagnatoj@corp.earthlink.net dated December 6, 2006
`
`(six (6) months fig Applicant’s use-based Application was
`
`filed), Ms. Balkind indicated that
`
`Broadphone’s “product will be available in 9-12 months.” Ms. Balkind goes on to indicate that “by
`
`committing to test before we build will enable us to integrate your needs into the product and enable it to
`
`integrate seamlessly with your existing address book and voice systems. The only time we will require of
`
`~11
`
`your tech people in the next 6 months is prior to our development process.” Natland Decl. 114.
`
`32.
`
`In an email from Aubrey Balkind to Jim Tobin dated July 29, 2007, over a year after
`
`Applicant’s use-based Application was filed, Ms. Balkind filrther indicated that “Broadphone solutions can
`
`be in the marketplace within a year.” Natland Decl. 114.
`
`33.
`
`In the Declaration of Aubrey Balkind submitted with Defendant’s Opposition to Plaintiffs
`
`Summary Judgment Motion (“Balkind Declaration” or “Balkind Decl.”), Mr. Balkind declared that
`
`“Broadphone has used its BROADPHONE mark in connection with the services identified in the
`
`application, including in numerous offers of the services made to .
`
`.
`
`. telecommunications companies,
`
`brochures, and other advertisements connected with these offers.” Balkind Decl. 116; Natland Decl. 15.
`
`

`
`34.
`
`In the Balkind Declaration, Mr. Balkind declared that “Broadphone began to use its
`
`BROADPHONE mark in connection with the cable Internet, voice-over—intemet protocol, wireless fidelity,
`
`mobile and landline communications services identified in the application on November 9, 2004. This use
`
`
`
`occurred in an o_i'fg of these services and accompanying presentation package (titled “Broadphone —
`
`Mobiline System Overview” and dated October 2004) which I sent to Ivan Seidenberg, the CEO of Verizon
`
`Communications, Inc.” Balkind Decl. 112; Natland Decl. 115. (Emphasis added).
`
`35.
`
`In the Balkind Declaration, Mr. Balkind declared that “Broadphone’s 9_{_f_efl and other uses
`
`of its BROADPHONE mark have not yet resulted in sales.” Balkind Decl. 116; Natland Decl. 115.
`
`(Emphasis added).
`
`36.
`
`In the Balkind Declaration, Mr. Balkind declared that “[p]urchasing and implementing the
`
`services in this application involve major infrastructure changes and investments for telecommunications
`
`companies, and thus it often takes some time for the services to ‘catch on’ and be adopted by the offerees.”
`
`Balkind Decl. 1[6; Natland Decl. 115.
`
`37.
`
`In Applicant’s Responses to Opposer’s First Set of Discovery Requests, Applicant admits
`
`that Applicant did not render its services in commerce as of the November 9, 2004 alleged date of first use
`
`in U.S. commerce or the July 3, 2006 filing date of Applicant’s use—based application, and, in fact, was in
`
`no position to do so until much later. Natland Decl. 1T4.
`
`38.
`
`In Applicant’s Responses to Opposer’s First Set of Discovery Requests, Applicant admits
`
`that it has merely “advertised” its services to others, but that no one has engaged or purchased Applicant’s
`
`services and that Applicant has not at any time provided all of the services identified in Applicant’s
`
`Application in U.S. commerce and that even if someone had engaged or purchased Applicant’s services,
`
`Applicant did not have the ability to actually provide the services.
`
`In fact, Applicant admitted that it did
`
`not have and has not had the infrastructure in place to provide such services “from the [alleged] date of first
`
`use up the present [December 22, 2008]” (four years after Applicant’s alleged date first use, a year and ‘/2
`
`after the filing date of Applicant’s use based Application and six months after publication date of
`
`Applicant’s use based Application). E Applicant’s Responses to Opposer’s Request for Admission Nos.
`
`-9-
`
`

`
`63 and 79, Opposer’s Interrogatory Nos. 8, 12, 21 and 32, and Opposer’s Request for Production Nos. 15,
`
`45, 49 and 50; attached as Exhibit B to the Natland Decl. at 113; Balkind Decl. 116.
`
`39.
`
`In Applicant’s Responses to Opposer’s First Set of Discovery Requests, Applicant admits
`
`that its claim to have used its mark in connection with all of the services identified in Applicant’s
`
`Application is based on a mere “offer and accompanying presentation package” and that no actual sales of
`
`any of the services listed in Applicant’s Application have resulted from App1icant’s or any other
`
`presentation or offer. _S_g§ Applicant’s Responses to Opposer’s Interrogatory Nos. 5, 8 and 12, attached as
`
`Exhibit B to the Natland Decl. at 113.
`
`40.
`
`In App1icant’s Responses to Opposer’s First Set of Discovery Requests, Applicant admits
`
`that it had not provided the services identified in Applicant’s Application in U.S. commerce in accordance
`
`with Section 1(a), as of the July 3, 2006 filing date of the application or the publication of the application.
`
`S_e_e_ Applicant’s Responses to Opposer’s Request for Admission Nos. 63 and 79, Opposer’s Interrogatory
`
`Nos. 8, 12, 21 and 32, and Opposer’s Request for Production Nos. 15, 45, 49 and 50, attached as Exhibit B
`
`to the Natland Decl. at 113.
`
`41.
`
`In Applicant’s Responses to Opposer’s First Set of Discovery Requests, Applicant has
`
`admitted that it has not made service mark “use in commerce” of Applicant’s Mark in connection with all
`
`(and in fact, any) of the services identified in App1ication’s Application in accordance with the
`
`requirements of Section 1(a) of the Trademark Act, despite the fact that the sole basis for Class 38 is
`
`Section 1(a) of the Trademark Act. See Applicant’s Responses to Opposer’s Request for Admission Nos.
`
`63 and 79, Opposer’s Interrogatory Nos. 8, 12, 21 and 32, and Opposer’s Request for Production Nos. 15,
`
`45, 49 and 50, attached as Exhibit B to the Natland Decl. at {[3
`
`42.
`
`On May 8, 2009, Opposer sent a “meet and confer” letter to Applicant
`
`to request
`
`clarification and supplementation of App1icant’s Responses to Opposer’s First Set of Discovery Requests,
`
`many of which were deficient.
`
`In particular, Opposer asked Applicant to confirm that all responsive
`
`documents had been produced. No response was received by Opposer. Natland Decl. at 116.
`
`-10-
`
`

`
`43.
`
`On May 21, 2009, Opposer sent a follow-up letter regarding the “meet and confer” letter to
`
`Applicant. No response was received by Opposer. On May 26, 2009, Opposer left a voice mail message
`
`with Applicant regarding the outstanding “meet and confer” letter, and sent an email to Applicant
`
`regarding the same. Natland Decl. at 117 and ‘H8.
`
`43.
`
`On May 26, 2009, Applicant sent a letter to Opposer in which Applicant indicated that
`
`Applicant “believe[d] that our discovery responses are already complete as provided.” Applicant also
`
`indicated that “we did just recently find a few additional documents (mainly emails), and have sent those to
`
`you as a supplement to the documents we originally sent.” In an email response dated May 26, 2009,
`
`Opposer asked that these referenced documents be produced electronically. No response was received by
`
`Opposer. Moreover, Applicant has not provided any additional documents. Natland Decl. at 119 and 1110.
`
`44.
`
`On May 27, 2009, Opposer sent a further follow-up letter to its “meet and confer” letter to
`
`reiterate its request for clarification and supplementation of Applicant’s Responses to Opposer’s First Set
`
`of Discovery Requests. Opposer also requested that
`
`the documents referenced by Applicant as a
`
`supplementary production be produced. No response or additional documents were received by Opposer.
`
`Natland Decl. at fill l.
`
`45.
`
`In spite of numerous requests for objective evidence supporting Applicant’s alleged use of
`
`Applicant’s Mark, Applicant has failed to produce any objective, documentary evidence supporting its
`
`alleged dates of first use or its filing basis as a use-based application. Natland Decl. 1111.
`
`III.
`
`ARGUMENT
`
`A.
`
`SUMMARY JUDGMENT STANDARD AND BURDEN OF PROOF
`
`Summary judgment should be granted where, as here, it is shown that there is no genuine issue of
`
`material fact, and the moving party is entitled to judgment as a matter of law. FRCP Rule 56(c). FRCP
`
`56(0), in pertinent part, states that a summary judgment should be granted where, as here, “the pleadings, .
`
`.
`
`. answers to interrogatories, and admissions on file, together with the affidavits .
`
`.
`
`. show that there is no
`
`genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.”
`
`These general principles of summary judgment apply under FRCP 56 to inter-parties proceedings before
`
`-11-
`
`
`
`

`
`
`
`the Board. Sic, ggg Medinol Ltd. V. Neuro VASX Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003) (“Medinol”);
`
`Sweats Fashions, Inc. V. Pannill Knitting Co., 833 F.2d 1560, 4 U.S.P.Q.2d 1793, 1797 (Fed. Cir. 1987).
`
`Thus, summary judgment is an appropriate method of disposing of an opposition in which there is no
`
`genuine issue of material fact on the question of likelihood of confusion. Kellogg Co. v. Pack’Em Enter.,
`
`_I_11c_:g 14 U.S.P.Q.2d 1545 (T.T.A.B. 1990). Moreover, summary judgment in an opposition proceeding is
`
`designed to save the time and expense of a fiill opposition proceeding where there is no genuine issue as to
`
`any material fact. Bet Lock Corp. v. Schlage Lock Co., 413 F.2d 1195 (C.C.P.A. 1969).
`
`Opposer as the moving party, has the burden of demonstrating that it is entitled to summary judgment.
`
`Celotex Corp. V. Catrett, 477 U.S. 317, 324-25 (1986). By meeting its burden of identifying undisputed facts,
`
`Opposer is entitled to relief. Applicant cannot respond merely by pointing to allegations or denials in the
`
`pleadings. Matsushita Elec. Indus. Co. V. Zenith Radio Com, 475 U.S. 574, 586 (1986). Accordingly, the
`
`Applicant _(_:_a_r_1_r§)_t rely upon denials contained in its pleadings to support its response to the motion for
`
`summary judgment; such denials alone are insufficient to raise a genuine issue of material fact. Moreover,
`
`
`mere denials or conclusory statements are insufficient. Collins Inc. v. N. Telecomm. Ltd. 216 F.3d
`
`1042, 1046, 55 U.S.P.Q.2d 1143, 1146 (Fed. Cir. 2000) (“g3_c_>_lli£”). As a result, Applicant cannot rely upon
`
`legally—conc1usory declarations or mere denials to create a genuine issue of material fact.
`
`Instead, Applicant must submit gal facts showing that there is a genuine issue for trial. J
`
`Radio Corp, 475 U.S. 574, 587 (1986). In doing so, Applicant must present objective evidence from which a
`
`reasonable trier of fact might return a verdict in its favor. Anderson v. Libegy Lobby, Inc., 477 U.S. 242, 249-
`
`250 (1986).
`
`If the Applicant fails to set out “specific facts showing a genuine issue for trial .
`
`.
`
`. summary
`
`judgment should, if appropriate, be entered against that party.” FRCP Rule 56(e)(2). Moreover, to “raise a
`
`genuine issue of material fact, [an] applicant must rely on specific facts that establish the existence of an
`
`ability and willingness to use the mark in the United States to identify its claimed [services]'at the time of
`79
`the filing of the application. Honda.
`
`In this case, the undisputed evidence demonstrates that Applicant
`
`had no ability as of the alleged date of first use in commerce of Applicant’s Mark or as of the filing date of
`
`-12-
`
`

`
`
`
`Applicant’s Application to use the mark in commerce within the meaning of Section 1(a) of the Trademark
`
`Act.
`
`B.
`
`THERE IS NO GENUINE ISSUE OF MATERLAL FACT THAT APPLICANT DID
`
`NOT USE ITS MARK IN COMMERCE AND THAT APPLICANT’S ALLEGATION
`OF USE WAS UNREASONABLE
`
`There is no genuine issue of material fact that Applicant was not using Applicant’s Mark in
`
`connection with all of the services identified in App1icant’s Application as of the alleged dates of first use, at
`
`the time the application was filed, or at the time application was published.
`
`Indeed, the undisputed facts
`
`demonstrate that Applicant has 1 provided a_H (if any) of the services identified in Applicant’s
`
`Application in U.S. commerce and that Applicant is and was _u_n__a_lQ_l_§ to render such services in commerce.
`
`Moreover, Applicant could not have an objective reasonable belief that it was using its mark in U.S.
`
`commerce.
`
`To support a service mark application under Section 1(a) of the Trademark Act, the Applicant must
`
`verify that the mark has been used in commerce in connection with the goods or services identified in the
`
`application. 15 U.S.C. §l05l(a). “Use in commerce” means the bona fide use of a mark in the ordinary
`
`course of trade, and not merely to reserve a right in a mark. 15 U.S.C. § 1 127. A service mark is only used
`
`in commerce when it is used or displayed in the sale or advertising of services fig the services are
`
`performed in commerce.
`
`l5 U.S.C. §l 127; ge_e al@ 2 J. Thomas McCarthy, McCarthy on Trademarks and
`
`Unfair Competition §§ 16:1-16:11, 192103 (4th ed. 2001) (to qualify for registration, the Lanham Act
`
`requires that the mark be both used in the sale or advertising of services 11 that the services themselves
`
`have been provided in interstate or foreign commerce).
`
`Indeed, the “use in commerce” requirement for a service mark “entails use in conjunction with the
`
`offering and providing of a service.” Lloyd’s Food Products, Inc., v. Eli’s, Inc., 987 F.2d 766, 25
`
`U.S.P.Q.2d 2027 (Fed Cir. 1993).
`
`It is not sufficient to merely advertise or offer to provide a service.
`
`Instead, the services must actually be provided in commerce to support an application under Section 1(a)
`
`of the Trademark Act. Se§’The Greyhound Corporation, Et Al. v. Armour Life Insurance Company, 214
`
`U.S.P.Q. 473, (T.T.A.B. 1982).
`
`-13-
`
`

`
`In fact, it is “well settled that advertising of a service, without performance of a service, will not
`
`support registration.” The Greyhound Corporation, Et Al. v. Armour Life Insurance Company, 214
`
`U.S.P.Q. 473, 474 (T.T.A.B. 1982); fie algg In re Cedar Point Inc., 220 U.S.P.Q. 533, (T.T.A.B. 1983); Q
`
`re Gill, 87 U.S.P.Q. 274, 275 (Comm’r Pat. 1950). A mark is used in commerce only if its accompanied
`
`services are performed in commerce, i.e., “it is employed appurtenant to an established business or trade
`
`that is in commerce, [such that] ‘mere advertising’ of that mark does not establish its protectability.”
`
`International Bancorp, LLC V. Societe Des Bains De Mer Et Du Cercle Des Estrangers A Monaco, 329
`
`F.3d 359, 66 U.S.P.Q.2d 1705, (4th Cir. 2003), referring to United Drug Co. v. Theodore Rectanus, C0,,
`
`
`248 U.S. 90, 97, 39 S.Ct. 48, 63 L.Ed. 141 (1918); fi'a_ls_g Buti V. Perosa S.R.L. 139 F.3d 98, 45
`
`U.S.P.Q.2d 1985 (2d Cir. 1998) (“mere advertising or promotion of a mark in the United States is
`
`insufficient to constitute ‘use’ of the mark ‘in commerce’ .
`
`.
`
`. where that advertising or promotion is
`
`unaccompanied by any actual rendering in the United States or in ‘commerce which may lawfully be
`
`regulated by Congress,’ .
`
`.
`
`. of the services ‘in connection with which the mark is employed”).
`
`
`
`..\sr.l.«.{J/»zi§§lr’«\«»x‘«§>-’..a;,.;a.;.n;3.r..,..,,l..«.«i;'m‘l7_:Jz}ir./
`
`
`
`
`
`As is shown by Applicant’s Responses to Opposer’s First Set of Discovery Requests, all Applicant
`
`did was advertise and promote its services. As Applicant never actually performed or provided its
`
`serv