Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA245203
`ESTTA Tracking number:
`10/27/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91181413
`Plaintiff
`DAVID KIRSCHNER
`David Kirschner
`c/o Ezra Brutzkus Gubner LLP
`21650 Oxnard Street, Suite 500
`Woodland Hills, CA 91367
`UNITED STATES
`mhicks@ebg-law.com
`Other Motions/Papers
`Todd Lander
`tlander@ebg-law.com, lchiarella@ebg-law.com
`/todd lander/
`10/27/2008
`MSJ - Opposition - FINAL.pdf ( 20 pages )(5399522 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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`

`
`Mark D. Brutzkus
`Robert L. Handler
`Todd M. Lander
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`EZRA(J))BRUTZKUS | GUBNER LLP
`21650
`nar_d Street, Sulte 500
`Woodland H1115, Cahforma 91367
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`Fax:
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`818 827-9099
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`Telephone: E818 827-9000
`e—mail:
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`Attorneys for O
`_
`DAVID KIRS
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`oser
`R
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`ND
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Application Serial No. 76/672,502
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`DAVID KIRSCHNER, an individual
`citizen of the United States,
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`OPPPOSER’S OPPOSITION TO
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`Opposer,
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`FOR
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`vs.
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`OPPOSITION N0. 91181413
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`HASBRO, INC.
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`Applicant.
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`OPPPOSER’S OPPOSITION TO SUMMARY JUDGMENT MOTION
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`1
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`TABLE OF CONTENTS
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`Page No.
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`Introduction
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`Statement of Facts
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`A.
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`The 1980’s — Kirschner Creates and Develops Rose Petal,
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`and Protects His Intellectual Property in The Brand
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`B.
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`The 1990’s — Rose Petal Place Maintains Its Place In The
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`Marketplace While Kirschner Contemplates A Re-Launch
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`Of The Brand
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`C.
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`2002—2007 - K_irschner Re—Launches Rose Petal Contacts
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`Hasbro, Arranges For A Licensing Deal With Zizzle, And Is
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`Eventually Foiled B}; Hasbro’s Misappropriating The Mark
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`For Its Benefit
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`i.
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`The First Steps At Renewing The Brand In 2002
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`And 2005-2006
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`ii.
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`The 2005-2007 Contact With Hasbro
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`iii.
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`The 2007 Deal With Zizzle, Followed By Hasbro’s
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`Unveiling Of “Rose Petal Collection”
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`D.
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`This Opposition Is Filed, And Hasbro Serves Discoverv
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`But Does Not Provide Responses To Kirschner’s Reguests
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`III.
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`Standards For Summary Judgment
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`IV.
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`Hasbro’ s Motion Must Be Denied
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`A.
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`B.
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`Kirschner Did Not Abandon His Trademark
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`Hasbro Misses The Point Of The EBay Sales, Which
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`Show Continuing Goodwill In The Mark
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`C.
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`Aside From Defeating The Abandonment Argument,
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`Kirschner’s Evidence Would, In An); Event, Establish
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`Priority Of Use
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`OPPPOSER’S OPPOSITION TO SUMMARY JUDGMENT MOTION
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`V.
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`Conclusion
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`OPPPOSER’S OPPOSITION TO SUMMARY JUDGMENT MOTION
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`Cases
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`Page No.
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`TABLE OF AUTHORITIES
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`American Motors Corp. v. Action-Age, Inc, 178 U.S.P.Q.2d 377 (TTAB 1923)
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`Andrews v. Unitea'Airiines. 24 F.3d 39, 41 (9th Cir. 1994)
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`Ashman 9. Barrows, 433 F.3d 781, 734 0"‘ Cir. 2006)
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`Auburn Farms Inc. v. McKee Foods Corp, 51 U.S.P.Q. 1439, 1442 (TTAB I999)
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`B.R. Baker Co. v. LeBow Bros, 150 F.2d 580 (1945)
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`Ceiotex Corp. v. Caitrett, 477 U.S. 317, 106 S.Ct. 2548 (1986)
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`Chandon Champagne Corp. v. San Marino Wine Corp, 335 F.2d 531 (9th Cir. 1964)
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`Eastman Kodak Co. v. Image Technical Services, Inc, 504 U.S. 451, 456 (1992)
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`Emergency One Inc. v. America Fireeagie. Ltd, 228 F.3d 531 (4”' Cir. 2000)
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`Ferrari S.p.A. Esercizio Fabriche Automobile corse v. McBurnie,
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`11 U.S.P.Q.2d 1843 (S.D. Cal. 1989)
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`mi Ltd 9. Punchnini, 432 F.3d 135 (2"" Cir. 2007)
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`Kardex, inc. v. Sistemco NV. 583 F.Supp. 803, 815-817 (D. Me. 1984)
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`Kingsmen v. K~Tei internationai, Ltd, 557 F.Supp. 178 (S.D.N.Y. 1983)
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`Lackie Magic Corp. v. McCall Mfg. Co., 133 U.S.P.Q. 487 (1962)
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`Nationwide Life Ins. Co. v. Bankers Leasing /I3s’n, Inc, 182 F.3d 157, 160
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`(2“" Cir. 1999)
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`New West Corp. v. NYM, Co. ofCaiifornia, Inc, 595 F.2d 1194 (9th Cir. 1979)
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`}3_'/izer v. International Rectifier Corp, 538 F.2d 180, 185 (8”' Cir. 1976)
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`Sterling Brewers, Inc. v. Scheniey Industries', Inc., 441 F.2d 675 (1921)
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`Triton Energy Corp. 12. Square D. Co. 68 F.3d 1216, 1222 (9”‘ Cir. 1995)
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`OPPPOSER’S OPPOSITION TO SUMMARY JUDGMENT MOTION
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`n—..
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`Statutes
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`Federal Rules of Civil Procedure, Rule 56
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`Federal Rules of Civil Procedure, Rule 56 (C)
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`15 U.S.C. §1057
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`15 U.S.C. § 10510:)
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`0PPPOSER‘S OPPOSITION TO SUMMARY JUDGMENT MOTION
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`1
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`I.
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`INTRODUCTION
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`Opposer David Kirschner (“Kirschner”) created, developed and nurtured the Rose Petal
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`Place entertainment brand — encompassing a line of toys under the registered trademark “Rose
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`Petal Place", along with animated films, music and books — from its inception in the early 1980's
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`to a planned re-launch of the brand in 2007. But the applicant, Hasbro, Inc. (“Hasbro”),
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`effectively ended Kirschner’s re-launch efforts by rolling out its own — and plainly infringing —
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`line of Rose Petal toys in late 2007. And it did so just months after Kirschner had contacted
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`Hasbro about his proposed renewal of the property. I-lasbro’s conduct sabotaged a licensing deal
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`Kirschner had negotiated with another toy distributer, and prompted Kirschner’s opposition to
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`Hasbro’s pending application for the “Rose Petal” mark. Hasbro now wants to summarily
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`adjudicate Kirsehner’s opposition — and deny him the opportunity to present his case to the
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`Board — on the erroneous basis that Kirschner abandoned the Rose Petal Place trademark. The
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`law and facts prohibits that punitive result.
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`The issue before the Board is straightforward. The Trademark Act permits a finding of
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`abandonment only where the owner ofa mark discontinues its use with an intent not to resume
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`that use. And in the context of a summary judgment, that finding is inappropriate unless the
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`evidence is so clear and undisputed that a trier of fact could conclude only that the owner
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`maintained a subjective intent to abandon the mark. But the evidence here shows that: (1)
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`Kirschner actively licensed the mark in the l980’s, to Hasbro’s predecessor in interest, in
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`connection with the sale of toy dolls; (2) Kirschner never ceased using or deriving income from
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`the brand as a whole and, indeed, licensed Rose Petal music throughout the 1990s and 2000s and
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`received royalties from that licensing over that period and to the present; (3) the Rose Petal brand
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`maintained a presence in the marketplace even after Kirschner’s toy license expired; (4)
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`Kirschner always intended to renew and re-launch the brand fonnally, including a new line of
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`Rose Petal toys; (5) Kirschner worked diligently — and spent tens of thousands of dollars —— from
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`2002-2007 to bring about the re-launch, including the development ofmodem story lines for the
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`property, the preparation of promotional materials and the distribution of those materials at toy
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`fairs, and contacting numerous toy and entertainment companies — including Hasbro — about
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`0PPPOSER’S OPPOSITION TO SUMMARY JUDGMENT MOTION
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`participating in the renewal of the Rose Petal brand; (6) the property retained significant
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`goodwill in the marketplace, stemming from its success in the l980’s, and thus was well
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`positioned to be updated as a nostalgic brand; and (7) Kirschner negotiated in 2007, and was on
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`the verge of signing, a new licensing agreement to manufacture and distribute a new line of Rose
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`Petal products, including toys, when I~lasbro’s advertising of its “Rose Petal Cottage” forced the
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`licensee to bow out of the agreement. Under these circumstances, can Kirschner be found to
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`have manifested an intent to abandonment his trademark‘?
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`As explained in more detail below, the answer to that question is no. Accordingly,
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`Kirschner respectfully request that the Motion be denied.
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`II.
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`STATEMENT OF FACTS
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`A.
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`The l980’s — Kirschner Creates And Develops Rose Petal, And Protects His
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`Intellectual Propemt In The Brand
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`Kirschner created Rose Petal Place in 1980 as an entertainment brand with potential for
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`widespread appeal across a broad cross-section of media, including film, books, music and toys.
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`See Kirschner Declaration, 11 3. The brand developed, through the l980’s, into a successful and
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`lucrative vehicle, resulting in more than 1100 stock keeping units, the release of various songs
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`and books, two animated films, and more than 33 product licenses. This included a toy
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`manufacturing and distribution license between Kirschner and Kenner Toys (“Kenner”),
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`executed in 1984 and expiring in 1989. See Kirsclmer DecI., 11 6'. During that five year period,
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`Rose Petal toys — based on the characters that Kirschner had authored — were a highly successful
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`line sold throughout the country. See Kirschner Decl., 11 6.
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`In May 1984, Kirschner applied for registration of the Rose Petal Place trademark, in
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`International Classes 28 and 16 — specifically relating to dolls and greeting cards and children's
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`books, respectively. Two separate registrations were issued, one in January 1985 — registration
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`number 1313618, concerning lntemational Class 28 — and a second one in May 1985 -
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`registration number 1336588, relating to International Class 16. The attorney of record and
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`2
`' Hasbro and Kenner later merged.
`0PPl’OSER’S OPPOSITION TO SUMMARY JUDGMENT MOTION
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`contact person on both registrations was Richard Berrnan of Minneapolis, Minnesota. See
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`Kirschner Deal. 1} 8, Exhibit “3.”2
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`Kirschner also registered several copyrights in connection with the songs, books, and
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`films that were released and published under the Rose Petal name. See Kirschner Deal, 11 7,
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`Exhibit “2. Those copyrights remain valid and subsisting.
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`Rose Petal’s success, in other words, spanned the full spectrum of the entertainment
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`world, from films to dolls. And Kirschner had every intention of keeping the brand alive and
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`well for future generations.
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`B.
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`The 1990’s — Rose Petal Place Maintains Its Place In The Marketplace While
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`Kirschner Contemglates A Re-Launch Of The Brand
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`By the late l980’s, Rose Petal dolls were no longer actively sold in retail stores. But the
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`brand maintained its place in the marketplace nonetheless. Kirschner continued licensing the
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`brand’s music throughout the 1990’s and 20005, for example, and has derived income from the
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`licensed music sales continuously and to the present. See Kirschner Decl, ll 9, Exhibit “4.”
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`More important, Kirschner always intended to re-launch the Rose Petal property when the time
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`was right to pass it down to a new generation of young girls. He never intended, conversely, to
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`abandon any rights to the brand or its intellectual property. See Kirschner Decl, flfll
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`registrations were cancelled in 1991 under Section 8 of the Lanham Act. The two were cancelled
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`in May and November 1991, respectively, according to tile records. But Kirschner cannot recall
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`ever receiving any notice of abandonment or, for that matter, being informed that his trademark
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`rights were jeopardized in any way. Ktrschner Deal, 1] 28.
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`Kirschner believes that Mr. Berman, who would have received any notice of abandonment concerning the
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`marks, may have been counsel for Kenner Toys — Kenner, as the licensee at the time. likely handled the registrations
`of the marks. Kirschner is informed that Hasbro later acquired Kenner, and has sought discovery from Hasbro
`relating to any communications involving Mr. Berman and that relate to the marks in any way. But Hasbro filed the
`instant summary judgment the day its discovery responses were due, and sought and obtained a stay of proceedings
`pending the disposition of the motion. Kirschner has not,3as a result, obtained the requested information about Mr.
`Berman.
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`OPPPOSER’S OPPOSITION TO SUMMARY JUDGMENT MOTION
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`C.
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`2002-2007 — Kirsehner Re-Launches Rose Petal, Contacts Hasbro, Arranges
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`For A Licensing Deal With Zizzle, And 15 Eventually Foiled By Hasbro’s
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`Misappropriating The Mark For Its Benefit
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`i.
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`The First Steps At Renewing The Brand In 2002 And 2005-2006
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`Kirsehner was poised to revive the Rose Petal brand in 2002, and, that year, he began
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`steps to bring about that revival. He first developed a creative concept for the re-launch, mainly
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`aimed at modernizing the characters to adapt to a changed world. That was followed by
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`commissioning and purchasing three-dimensional sculptures of the characters that were to
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`comprise the renewed Rose Petal stories — at a cost of $15,000. See Kirschner Deal, 1] 13,
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`Exhibit “S.”
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`These plans were accelerated and expanded in 2005 and 2006, when Kirschner and Jared
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`Wolfson (“Woll"son”) — a creative executive Kirschner’s production company hired in early 2005
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`to work on the Rose Petal re-launch — began moving quickly to package and sell the brand. See
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`Kirschner Dad. 11 14. Messrs. Kirschner and Wolfson conceived modernized content for the
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`storyline and products, and followed that by hiring an advertising agency to assist with the
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`development of promotional materials to distribute to prospective partners in the re-launch. The
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`result, a sophisticated marketing packet consisting of story boards and full character art, among
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`other things, cost Kirschner in excess of $30,000 a countless hours of time and et‘fort.3 See
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`Kirschrzer Dect, 1111 14-15; see also Declaration 0fJared Wolfson, 1] 3.
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`From there, the two began contacting entertainment companies, retailers and toy
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`manufacturers to pitch the modernized Rose Petal property. Kirschner’s agent at the time, David
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`Palmer (“Palmer”) of the William Morris Agency, participated in that process. See Kirschner
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`Dect, W 16-1?; see also Woifson Deal, 1] 4. Kirschner, Wolfson and Palmer collectively
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`contacted no less than 15 companies in 2005 and 2006, including Zizzle Toys (“7.i7.7.1e”), Mattel,
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`Funrise, Fox, Warner Bros, Lionsgate Entertainment and several others. Several of those
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`companies, including 20m Century Fox and Lionsgate, expressed active interest in participating
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`in the development of the line. Kfrschner Decl., 1] 18.
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`The story boards identify Kirsehner as th owner of the copyrights or trademarks
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`associated with the brand. See Kirschner Dec!.,
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`OPPI-‘OSER’S OPPOSITION TO SUMMARY JUDGMENT MOTION
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`Beyond that, Kirschner and Wolfson wanted to ensure that the renewed Rose Petal
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`received widespread exposure to the entire toy and entertainment industry. Thus, when Mr.
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`Palmer attended the fall 2005 Toy Fair in New York for the William Morris Agency, they
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`provided him with numerous sets of the Rose Petal promotional packet to distribute at the fair.
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`Mr. Palmer reported on his return that he distributed all the packets he had taken with him, and
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`that the response from fairgoers was positive. See Kirschner Deal, 1[ 1?; see also Wolfson Deal,
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`fl 6.
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`ii.
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`The 2005-2007 Contact With Hasbro
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`One of the companies Kirsehner approached was Hasbro. Mr. Palmer made the initial
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`contact in late 2005 and asked whether the company maintained the product molds Kcnner had
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`used in manufacturing Rose Petal products during the license period in the 1980’s — Hasbro
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`acquired Kenner in the interim. Palmer informed Kirschner that, after some delay, Hasbro
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`advised that it no longer had the original molds. Kirschner DecZ., 1] 2]; see also Wolfson Decl., 1]
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`7.
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`Later, in April 2007, Kirschner had a direct telephone conversation about the property
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`with Matt Cwieka, a Hasbro representative. The two were introduced through a former
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`colleague of Mr. Kirschner and, during their discussion, Kirschncr raised the Rose Petal brand
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`and Hasbro’s potential interest in being a part of its renewal. Mr. Cwieka expressed interest, but
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`asked Kirschner to send him documentation concerning the re-launch — some of it of a sensitive
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`nature —- so he could review it. Kirschner was uncomfortable parting with the information at the
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`time and without meeting Mr. Cwieka personally, and demurred as a result. Kfrschner Deal, 1]
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`22, Exhibit
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`Mr. Cwieka, for his part, did not mention or suggest that Hasbro had any independent
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`interest in marketing any kind of Rose Petal line, nor that the company had any such line in
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`development. This, at a time l-Iasbro had already filed its Rose Petal trademark application.4
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`I The two men did not speak again. Kirschner Dec-1, 11 22.
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`KM
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`KN
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`" Hasbro filed its application on February 9, 200?, according to the USPTO records.
`OPPPOSER’S OPPOSITION TO SUMMARY JUDGMENT MOTION
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`

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`iii.
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`The 2007 Deal With Zizzle, Followed By Hasbro’s Unveiling Of
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`“Rose Petal Collection”
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`The efforts to revive Rose Petal were received enthusiastically by almost all the
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`companies Kirschner and Wolfson called and wrote — many expressing an interest in considering
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`the project further. The two also discovered there was great nostalgia for the brand. Wolfson,
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`for example, met with representatives of the Beanstoek Group in New York in 2005, who
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`expressed genuine excitement about the continuing goodwill and, by extension, the potential
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`success of the property. He likewise discussed the brand with the head of 4kids Entertainment —
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`also in New York — and was met with a similar response. Wolf.i'on Decl. if 5; see also Khtsclmer
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`Decl, 1] 18.
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`In addition, he met with and contacted several Rose Petal based fansite communities
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`and ebay purchasers to sample the level of interest in the property. The responses indicated great
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`enthusiasm for both the past iteration of Rose Petal Place, and the proposed re~launch.
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`Id.
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`Ultimately, however, Kirschner focused on negotiating a licensing agreement with
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`Zizzle, which had expressed particular enthusiasm for the project from the moment Kirschner
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`first contacted it. Kjrschher provided the company with Rose Petal materials throughout the
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`spring and summer of 2007, and Zizzle personnel made several trips to Kirschner’s offices over
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`the same period, all with an eye to settling on the timing and scope of an intended roll-out of the
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`new Rose Petal Place. See Kfrschner Decl, 1125; see also Wolflson Deal. 111] 8-9. The Zizzle
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`representatives displayed, at these 200?‘ meetings, presentation books and other material showing
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`the products that would comprise the new Rose Petal line, and the company’s roll-out and
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`distribution plans. The parties also discussed royalty percentages and other financial issues.
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`Id.
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`By September 2007, the basic nature and scope of this burgeoning relationship had been
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`settled upon. The gist of the arrangement was that Zizzle would become a master toy licensee
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`focused on: (1) small dolls and sets; (2) fashion dolls; (3) playsets; and (4) role play and dress-up
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`for the dolls. See Kirsehner Dec!., 1] 25; see also Womorz Decl, 1] 9. All that remained was the
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`circulation and execution of a formal licensing agreement, and Kirschner expected that to occur
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`within a matter of weeks. His long awaited and anticipated re-launch of Rose Petal was on the
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`verge of reality.
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`OPPPOSER’S OPPOSITION TO SUMMARY JUDGMENT MOTION
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`The re-launch never occurred, of course. In September 2007, Kirschner and, importantly,
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`Zizzle became aware that Hasbro was advertising the release of its own Rose Petal brand, using
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`essentially the same mark, color scheme and underlying concept — an imaginary garden brought
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`to life — that Kirschner created 27 years before.5 And this advertising blitz soon dissuaded Zizzle
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`from consurnmating the licensing agreement with Kirschner. Zizzle pulled out of the deal, with
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`its representatives explaining to Kirschner that Hasbro’s advertising was “clouding” the brand
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`and would lead to consumer confusion. This not only ended the Zizzle agreement, it brought
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`Kirschner’s entire enterprise to a permanent halt. Given the company’s size and presence in the
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`marketplace, no other potential licensee would even consider dealing with Kirschner concerning
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`the property. Simply put, llasbro took his brand, and with it, control of his creation. See
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`Kirschner, 111] 26-27.
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`D.
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`This Opposition Is Filed, And Hasbro Serves Discovefl But Does Not
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`Provide Responses To Kirschner’s Reguests
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`Kirschner filed his Notice of Opposition to Hasbro’s application on December 20, 2007.
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`In March of this year, Kirschner served initial disclosures that included a detailed description of
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`the evidence he intended to rely upon and extensive documentation supporting his claim. See
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`Deciaratirm of Todd M’. Lander. 1] 2. Approximately a month later, Hasbro served
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`interrogatories and requests for production. Kirschner served objections and responses
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`notwithstanding those objections, in early July. He also served additional documents on Hasbro,
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`in addition to those provided with the initial disclosures. See Lander Dec!., ‘ff 2. Hasbro never
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`attempted, after the receipt of the additional documents, to meet and confer concerning any
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`aspect of the discovery.
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`It never contended that Kirschner’s responses were inadequate, nor did
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`it demand supplemental responses to either the interrogatories or the document requests. And
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`importantly, it never addressed any of Kirschner‘s objections to the requests. Rather, I--Iasbro
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`was completely silent about the adequacy of the responses. See Lander Dec!., 1 2.
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`For his part, Kirschner served his own set of interrogatories and document requests in
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`July 2008. That discovery sought information concerning, among many other things, Hasbro’s
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`Hasbro’s “Rose Petal Cottage” targeted the identjfal demographic to which Kirschner’s brand had, and
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`would have, a
`ealed — oun
`irls.
`OPPPOSER‘S OPPOSITION TO SUMMARY JUDGMENT MOTION
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`U‘:-F2-L»Jl\.>
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`--JC'\
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`conception of the Rose Petal Collection, its communications with Kirschner, its knowledge of
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`Kirchner’s plans to re-launch the brand, and contacts with the Minnesota lawyer that presumably
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`received the notices of abandonment in the 1990’s. Lander Dec!., '1] 3, Exhibits “1” and
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`In August, Hasbro requested a thirty—day extension of time to respond, explaining that it
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`was difficult in late summer to track down clients and obtain responsive information and
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`documents. Kirschner granted the extension without hesitation. See Lander Dec!., 114, Exhibit
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`a3_»
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`But Hasbro never served responses. Instead, the day the responses were due, September
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`22, the company filed the instant Motion. And it accompanied the Motion with a request to
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`suspend the proceedings while the Motion was pending, which the Board granted. Kirschner
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`takes no issue, of course, with the Board’s action — since a suspension is appropriate in the face
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`of a dispositive motion * but Hasbro plainly timed the Motion filing so as to avoid having to
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`respond to Kirschner’s discovery.
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`Thus, the Board has a summary judgment motion before it — one that would deny
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`Kirschner an opportunity to make his case at trial — under circumstances where Hasbro has
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`obtained the discovery it sought while frustrating Kirschner’s ability to do the same.“
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`Fortunately, and as explained below, the Motion must be denied on the limited record available.
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`III.
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`STANDARDS FOR SUMMARY JUDGMENT
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`Hasbro’s superficial discussion of the standards governing this Motion understate the
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`extraordinary burden facing any party seeking to summarily adjudicate a dispute under Rule 56.?
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`Hasbro, as the moving party, maintains both the initial and ultimate burden of demonstrating that
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`there is “no genuine issue as to any material fact and that the movant is entitled to judgment as a
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`matter of law.” Rule 56(e). And because summary judgment is a “drastic remedy," and one that
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`denies a party’s right to present his case at trial, Hasbro bears a “heavy burden” of demonstrating
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`We note. in that regard, that Hasbro’s Motion relies heavily on the Supreme Court’s opinion in Ceforex
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`Corp. v. Cafrrezr, 4?? U.S. 317, 106 S.Ct. 2548 (1986). But Cefotex is clear that summary judgment is appropriate
`only after a full opparrmflty for discovery has been ufiarded, for fear that the non-moving party could be
`“railroaded” by a premature motion for summary judgment. Id.. 477 U.S. at 326.
`In this case, Hasbro filed its
`Motion without even providing Kirschner with discovery
`sponses.
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`Under TBMP §528, Rule 56 ofthe Federal Rule ofCivil Procedure is applicable to this Motion.
`0l’PPOSER’S OPPOSITION TO SUMMARY JUDGMENT MOTION
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`the absence of any triable issue of fact. See Nationwide Life Ins. C0. v. Bankers Leasing Ass ‘n,
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`Inc, 182 F.3d 157, 160 (2"d Cir. 1999).
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`In evaluating whether a party has discharged that burden, the Federal Courts apply a
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`burden-shitting principle. The moving party carries the initial burden of showing a lack of
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`material facts in dispute and, assuming it meets the test, the burden then shifts to opposing party
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`to establish that triable issues are present — the final burden then rests with the movant. See
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`Ceiorex Corp. v. Carrezt, 4?? U.S. 317, 322-323 (1986). But several important principles inform
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`the application of this burden-shifting analysis.
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`Most notably, the Courts view summary judgments with caution, and thus in discharging
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`its burden, the opposing party must only introduce sufficient evidence from which a trier of fact
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`could draw reasonable inferences that could be used to find in the opposing's party’s favor. See
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`e.g. Andrews v. Um'!'edAir!ines, 24 F.3d 39, 41 (9"' Cir. 1994) (airline passenger sued after he
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`was injured by falling luggage on a flight, and airline moved for summary judgment based on
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`warnings given to all passengers; passenger introduced evidence of only 135 similar injuries out
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`of a 1?5,000 flights a year, but court denied motion and found that this was sufficient evidence to
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`raise triable issue as to whether warnings were adequate); Triton Energy Corp. v. Square D. C0.
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`68 F.3d 1216, 1222 (9th Cir. 1995). Moreover, any inferences drawn from the evidence must be
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`viewed in the light most favorable to the nonmoving party. See e. g., Eastman Kodak Co. v.
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`Image Technical .S'ervice.s', Inc, 504 U.S. 451, 456 (1992).8
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`Finally, the Courts are particularly loathe to grant summary judgment where, as here, the
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`intent or subjective feelings of a party are at issue. See 9. g., Pfizer 12. International Rectifier
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`Corp, 538 F.2d 180, 185 (8th Cir. 1976) (in patent infringement action in which defendant
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`alleged patent was invalid because of applicant’s purported fraudulent intent in dealing with the
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`Patent Office, Circuit Court reversed partial summary judgment and observed that “summary
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`judgment is notoriously inappropriate for determination of claims in which issues of intent, good
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`faith or other subjective feelings play a prominent role”; accord Ashman v. Barrows. 438 F.3d
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`Moreover, as mentioned above, a summaryjudgiaent under Celbrex. supra, is only appropriate after there
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`has been a full round of discovery. _
`OPPPOSEIPS OPPOSITION T0 SUMMARY JUDGMENT MOTION
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`\D0O*--IlG\-[bu-3E\-J
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`781, 784 (T"‘ Cir. 2006) (“We are particularly leery of resolving issues of state of mind on
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`summary judgment”).9
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`Applying these principles here, Hasbro’s Motion must be denied.
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`IV.
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`HASBRO’S MOTION MUST BE DENIED
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`A.
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`Kirschner Did Not Abandon His Trademark
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`l-lasbro’s principal argument is that Kirschner abandoned the Rose Petal Place mark, and
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`therefore has no basis to oppose Hasbro’s registration application. The law and facts
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`demonstrate the contrary.
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`Section 45 of the 1'"rademarkAct, 15 U.S.C. §1057, declares that a mark is deemed
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`abandoned when “its use has been discontinued with intent not to resume such use." (Emphasis
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`added.) The party asserting abandonment bears the burden ofestablishing the claim. And while
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`the statute provides that nonuse for three consecutive years is prima facie evidence of
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`abandonment, that presumption may be rebutted by evidence that the mark’s owner intended to
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`or did resume use of the mark. See Auburn Farms Inc. v. McKee Foods Corp, 51 U.S.l’.Q.
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`1439, 1442 (TTAB 1999).
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`The user’s intent can be established both by the testimony of the mark holder, and
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`objective evidence that no intent to abandon existed. For example, where an owner provides
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`reasons for a period of abandonment is rebutted. See e. g., Kardex, Inc. v. Sistemco NV. 583
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`F.Supp. 803, 815-817 (D. Me. 1984) (Court found no abandonment where two three-year periods
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`of non-use, where owner and later buyer of the mark showed the first period was due to financial
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`difficulties and the second period coincided with preparation to resume use.) Evidence of non-
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`intent can also include the continued drawing of income from the mark or product, among other
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`things. See Ki'ngsmen v. K-Tel’ International, Ltd, 55? F.Supp. 178 (S.D.N.Y. 1983) (musical
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`group that disbanded in 1967 did not abandon use of the name where the band’s
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`We note also that oral testimony, even that of a single witness. can, if sufficiently probative, be enough to
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`establish priority in a trademark case. See B.R. Baker Co. v. i".eBow B}‘0S., 150 F.2d 580 (1945); see also Lucuhe
`Magic Corp. v, Mc'Ccih’ Mfg. Co. 133 U.S.P.Q. 48? (1962). Accordingly, it is inappropriate to grant summary
`judgment before any oral testimony has been elicited.
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`10
`OPPOSER’S OPPOSITION TO SUMMARY JUDGMENT MOTION
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`-ILL»-Dix.)
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`music continued to be sold and royalties continued to be derived from those sales over the
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`ensuing years).
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`Beyond that, among the most telling barometers of abandonment — or lack thereof— is the
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`existence of continuing good will in connection with the mark. In Sterling Brewers, Inc. v.
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`Schenley Indu.s'rrt'e.s', Inc, 441 F.2d 675 (1971), for example, the Second Circuit, in finding a lack
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`of abandonment, focused on whether the goodwill symbolized by the mark had dissipated during
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`the period of non-use. This analysis has been applied with particular emphasis in cases involving
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`heritage brands that maintain their presence in the marketplace long after their actual production
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`or manufacture ceases. See Ferrari S.p.A. Esercizio Fabric-he Antomobili e corse v. McBurnie,
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`11 U.S.P.Q.2d 1843 (SD. Cal. 1989) (non-manufacture ofa Ferrari Daytona Spider automobile
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`for thirteen years did not result in abandonment because of persistent good will associated with
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`the mark); see also American Motors Corp. v. Action-Age, Inc, 178 U.S.P.Q.2d 377 (TTAB
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`1973) (auto mark Rambler was not abandoned because of cessation of manufacture where
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`models remained on the road and goodwill remained). Thus, where the user claims no intent to
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`abandon, took concrete steps to resume the use of the mark, and the mark maintains existing
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`goodwill, no finding of abandonment is appropriate. '0
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`In our case, Hasbi-o’s abandonment argument should be rejected. Kirschner has
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`submitted evidence demonstrating that:
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`'
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`He never intended to abandon the mark, and always intended to re-launch the
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`Rose Petal line of goods in a formal way. Kirscnner DecI., 111] 11 and 28.
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`*
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`He never discontinued the use or marketing of the Rose Petal brand. Indeed, he
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`continued deriving income from the sale of Rose Petal music throughout the 1990’s and into the
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`2000s. Kirschner Decl.. 11 7.
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`In that regard, it’s important to note that Rose Petal Place was not
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`It is also worth noting that Hasbro took an identical position in Hasbro v. Goldman, Opposition No.
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`91 152638, and opposition proceeding before this Board that was decided on February 2, 2001. There, Hasbro -
`through the same counsel representing the company here — opposed Goldman's application for registration of Cotton
`Candy Cloud Castle for International Class