Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA249593
`ESTTA Tracking number:
`11/18/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91184490
`Defendant
`LBI Brands, Inc.
`JEFFREY M. BECKER
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700IP Department
`DALLAS, TX 75219
`UNITED STATES
`ipdocketing@haynesboone.com, jeff.becker@haynesboone.com
`Motion for Summary Judgment
`Jeffrey M. Becker
`jeff.becker@haynesboone.com
`/Jeffrey M. Becker/
`11/18/2008
`Motion for Summary Judgment with Exhibits for filing.pdf ( 57 pages )(11030077
`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
`
`KCD IP, LLC
`Opposer
`
`v.
`
`LBI Brands, Inc.,
`Applicant
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Opposition No. 91184490
`
`C0’3(0'J<a03€0'3C03£0’Jf0J
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`APPLICANT’S MOTION FOR SUMMARY JUDGMENT
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`

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`I.
`
`INTRODUCTION
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`Pursuant to Fed. R. Civ. P. Rule 56, C.F.R. §2.127, and TBMP § 528, Applicant,
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`LBI Brands Inc. (hereinafter, “LBl Brands” or Applicant) hereby moves the Trademark
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`Trial and Appeal Board (hereinafter, “the Board") for summary judgment in its favor and
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`against KCD IP, LLC (hereinafter, “KCD” or Opposer). More particularly, LBI Brands’
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`trademark application for the mark DIE HARD for beverages cannot, as a matter of law,
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`dilute KCD’s trademark registrations for DIEHARD for use in connection with car
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`batteries.
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`A very prominent
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`third party, Twentieth Century Fox Film Corporation
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`(“Twentieth Century Fox”), uses the mark DIE HARD, and its mark DIE HARD coexists
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`with KCD’s DIEHARD marks, which renders a finding of dilution untenable.
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`ll.
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`UNDISPUTED FACTS
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`LBI Brands filed a trademark application in international Class 32 for the mark
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`DIE HARD based on its intent—to—use the mark DIE HARD in connection with fruit-
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`flavored beverages; energy drinks; and sports drinks.‘
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`See, U.S. Trademark
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`Application Serial No. 77/318041. During the prosecution of LB! Brand’s application,
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`not surprisingly, the Office did not raise any issues with regard to the Opposer or any of
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`its marks.
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`KCD2 opposed Applicant's application on June 9, 2008, citing its portfolio of
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`trademarks consisting primarily of the word DIEHARD for various types of automotive
`batteries and other merchandising goods, which are unrelated to beverages. See,
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`Opposer’s Notice of Opposition Tm 1-3 and corresponding Exhibits attached thereto.
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`Applicant filed its trademark application on October 31, 2007. Application Serial No. 77/318041
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`for the mark, DIE HARD was published for opposition on April 8, 2008.
`2
`The Opposer, KCD IP, LLC is a subsidiary of Sears Roebuck.
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`

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`KCD opposed AppIicant’s application for the mark DIE HARD for beverages claiming
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`that registration of AppIicant’s mark DIE HARD will cause consumer confusion.
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`In
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`addition to claims of likelihood of confusion, KCD also asserted a claim of dilution under
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`Section 43(0) of the Lanham Act claiming that registration of LBI Brands’ DIE HARD
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`mark will dilute the fame of its DIEHARD marks. LBI Brands thereafter timely filed an
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`Answer to KCD’s Notice of Opposition. This Motion for Summary Judgment, having
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`been filed prior to the commencement of the first testimony period,
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`is timely. See, 37
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`C.F.R. § 2.127 (e).
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`SUMMARY OF SUPPORTING EVIDENCE
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`LBI Brands’ motion is supported by the following:
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`1.
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`The pleadings of record to date, including but not limited to Opposer’s Notice
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`of Opposition dated June 9, 2008;
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`Trademark Application Serial No. 77/318041, which is the subject of this
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`opposition action;
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`Opposer’s trademark registrations attached to its Notice of Opposition as
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`Exhibit A and relied upon as the basis forthis opposition;
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`Exhibit A: Printouts of Internet Web pages from various Web sites and
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`Affidavit of Melissa S. LaBauve authenticating same;
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`Exhibits B, C, and D, Trademark Registration Nos. 2246886, registered by
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`Twentieth Century Fox FilmACorporation; Reg. No. 2280906, registered by
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`Anaheim Ducks Hockey Club, LLC; Reg. No. 2750152, registered by George
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`Taub Products and Fusion Company, lnc., respectively.
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`

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`IV.
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`SUMMARY JUDGMENT STANDARD
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`The purpose of summary judgment is judicial economy. Summary Judgment is
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`appropriate to save time and expense of a trial where no genuine issues of material fact
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`remain and more evidence than is already available could not reasonably be expected
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`to change the result. See, e.g., Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 739 F.2d 624,
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`222 USPQ 741 (Fed. Cir. 1984). The summary judgment procedure is regarded as “a
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`salutary method of disposition,” and the Board does not hesitate to dispose of cases on
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`summary judgment when appropriate.
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`See, e.g., Sweats Fashions Inc. v. Pannill
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`Knitting Co., 833 F.2d 1560, 1562 (Fed. Cir. 1987).3 This proceeding presents the
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`appropriate record for summary judgment to be entered in favor of Applicant because
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`no additional material facts could be uncovered through trial or are necessary. to resolve
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`the issue this summary judgment motion raises. See, e.g., Pure Gold, Inc., 739 F.2d
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`624. Further, summary judgment “is to be encouraged in inter partes cases before the
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`Trademark Trial and Appeal Board”. Id.
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`The party moving for summary judgment has the burden of demonstrating -the
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`absence of any genuine issues of material fact, and that it is entitled to judgment as a
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`matter of law. See, e.g., Fed. R. Civ. P. 56 (c); Copelands’ Enterprises, Inc. v. CNC,
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`Inc., 945 F.2d 1563, 1565-66 (Fed. Cir. 1991). When the moving party's motion is
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`supported by evidence sufficient to indicate that there is no genuine issues of material
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`fact, and that the moving party is entitled to judgment as a matter of law, the non-
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`moving party may not rest on mere denials or conclusory assertions, but must proffer
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`countering evidence showing that there is a genuine factual dispute for trial. See, Fed.
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`The Board has previously decided summaryjudgment motions in favor of an Applicant based on
`3
`dilution claims. See, Red Hat, Inc. v. CMC Magnetics Corp., Ltd., Opposition No. 13,577 (October 31,
`2000); K.P. Sports, Inc. v. Armor Gear LLC, Opposition No. 91157069 (February 14, 2005).
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`

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`R. Civ. P. 56 (e); Copelands’ Enterprises, Inc. 945 F.2d at 1564. On the record before
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`this Board, and in addition to the evidence submitted with this Motion for Summary
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`Judgment, there can only be one conc|usion———that the prominent third party use of the
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`mark DIE HARD by Twentieth Century Fox, which co—exists with Opposer’s marks, does
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`not allow for a finding of dilution as a matter of law.
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`V.
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`OPPOSER CANNOT SUPPORT A CLAIM OF DILUTION
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`Applicant brings this Motion for Summary Judgment to address KCD’s claim of
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`dilution only. Opposer cannot demonstrate the requisite level of fame required to
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`prevail on its dilution claims due to the ubiquitous use of the term DIE HARD in
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`connection with Twentieth Century Fox's DIE HARD film series staring Bruce Willis and
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`action video games related to or based on the DIE HARD film series. The film series is
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`so popular that Opposer’s DIEHARD mark is no longer legally capable of being diluted.
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`A dilution claim is extremely challenging to prove.
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`Indeed, a successful dilution
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`claim is a rarity and an extraordinary remedy. See, Advantage Rent—A—Car Inc. v.
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`Enterprise Rent—A-Car C0,, 238 F.3d 378, 381, 57 USPQ2d 1561, 1563 (5”‘ Cir. 2001).
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`Not only does the Board require an exacting standard of proof to establish fame in a
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`dilution claim, but the Board does not resolve doubts in favor of the party claiming
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`dilution. See generally, Toro Co. v. Toro Head, Inc., 61 USPQ2d 1164 (TTAB 2001).
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`Rather, any doubts as to dilution are resolved in favor of the applicant or respondent.
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`Id.
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`In light of this arduous evidentiary background, as well as the ubiquitous third party
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`use of the term DIE HARD by Twentieth Century Fox, KCD cannot, as a matter of law,
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`demonstrate dilution of its mark, DIEHARD, as the result of App|icant’s use and
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`registration of DIE HARD for beverages.
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`

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`The Federal Trademark Dilution Act (“FTDA”) outlines the elements required to
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`prove dilution as follows:
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`Subject to the principles of equity, the owner of a famous
`mark that
`is distinctive,
`inherently or
`through acquired
`distinctiveness, shall be entitled to an injunction against
`another person who, at any time after the owner's mark has
`become famous, commences use of a mark or trade name in
`commerce that
`is likely to cause dilution by blurring or
`dilution by tarnishment of the famous mark, regardless of the
`presence or absence of actual or
`likely confusion, of
`competition, or of actual economic injury.
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`15 U.S.C § 1125(c)(1) (2008).
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`Thus,
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`the Board must determine the following:
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`(1) whether DIEHARD is a
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`famous mark;
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`(2) whether DIEHARD became famous prior to the filing date of
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`Applicant’s trademark application for DIE HARD; and (3) whether Applicant’s use of DIE
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`HARD is
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`likely to cause dilution by blurring of the distinctiveness of Opposer’s
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`DIEHARD mark.
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`7—EIeven Inc. v. Wechsler, 83 USPQ2d 1715, 1727 (TTAB 2007); See
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`also, Toro Co. 61 USPQ2d 1164 at 1173. The instant Motion for Summary Judgment
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`only addresses the first and third elements of this standard.
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`A.
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`OPPOSER CANNOT DEMONSTRATE THAT ITS DIEHARD MARK IS FAMOUS
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`Opposer cannot demonstrate that its mark is famous. The required evidentiary
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`burden is exacting. The case law relating to dilution suggests that if a mark is truly
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`“famous”, the mark must be the principal meaning of the term. Toro C0,, 61 USPQ2d at
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`1189, citing, Las Vegas Sports News, 212 F.3d 157, 175, 54 USPQ2d 1577, 1590 (3rd
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`Cir. 2000). More specifically, a mark is famous “if it is widely recognized by the general
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`consuming public of the United States as a designation of source of the goods or
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`services of the mark’s owner.” 15 U.S.C. § 1125(c)(2)(A).
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`

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`In order to support a finding of fame under this prong of the dilution test, Opposer
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`must demonstrate that its mark is “truly distinctive and famous.” Toro C0,, 61 USPQ2d
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`at 1176 (quoting Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 876 (9th Cir. 1999)
`(emphasis in original). As noted in Tom Co., there is quite a bit of overlap in the
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`evidence utilized to support a finding of fame and distinctiveness.
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`Toro C0,, 61
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`UPSQ2d at 1176 ft.nt. 10. Fame and distinctiveness are two overlapping but slightly
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`different concepts.
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`Id. at 1177. The degree of distinctiveness often determines the
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`degree of fame.
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`Id.
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`In essence,
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`if a term has achieved fame, but the evidence of
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`distinctiveness indicates that there are numerous other uses of the term, the fame of the
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`mark for dilution purposes may be limited. Id.
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`For purposes of this Motion, as in Tom
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`C0,, the finding of fame and distinctiveness are analyzed together.
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`In Toro C0,, the opposer argued that its mark was famous for purposes of dilution
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`based on the following: a) opposer used the mark TORO since 1914 for various lawn
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`and garden care products; b) opposer’s annual sales exceeded one billion dollars; c)
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`opposer’s annual advertising expenditures exceeded thirty—five million dollars; d)
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`opposer owned tvventy-six federal registrations; and e) opposer argued that it had
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`achieved brand dominance in various lawn and ground care markets.
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`Id. at 1179-82.
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`The Board was not persuaded—-~“fame for [dilution] purposes cannot be shown with
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`general advertising and sales figures and unsupported assertions of fame by the
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`party...the owner of a famous mark must show that there is a powerful consumer
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`association between the term and the owner.” Id. at 1179.
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`To prevail on a dilution claim, an opposer must, in effect, demonstrate that the
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`» English language has changed, and that the common or proper noun uses of the term
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`

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`and third—party uses of the mark are now eclipsed by the owner’s use of the mark.
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`Id. at
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`1180. An opposer must demonstrate that what was once a common word or a simple
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`trademark is now a term that the public primarily associates with the famous mark. Id.
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`To achieve this level of fame and distinctiveness, an opposer must demonstrate that the
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`mark has become the principal meaning of the word. Id.
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`For example, in Nasdaq Stock Market, Inc. v. Antartica S.r.I., 69 USPQ2d 1718,
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`1737 (TTAB 2003) the TTAB found that the registered mark NASDAQ for securities
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`trading services was famous.
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`Id. The Nasdaq Trading Company showed that its
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`advertising actually resulted in recognition of NASDAQ by approximately three—quarters
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`of investors by mid—1998.
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`Id.
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`importantly,
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`in Nasdaq Stock Market,
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`Inc. dictionary
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`references, newspaper and magazine articles, and daily reports on the Nasdaq stock
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`market in print and broadcast media evidenced a powerful consumer association of the
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`term NASDAQ with the Nasdaq Trading Company.
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`Id.
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`More recently, the TTAB found the mark BIG GULP to be truly famous, primarily
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`because the owner of the mark, 7—E|even, submitted evidence that was similar in
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`quantity and quality to the evidence in Nasdaq. 7—EIeven, Inc. v. Wechsler, 83 USPQ2d
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`1715, 1728 (TTAB 2007). 7-Eleven submitted evidence of extensive media attention,
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`particularly referencing the mark as a symbol of American culture, as well as a market
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`research study showing a 73% unaided awareness among all consumers,
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`including
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`non-users of 7-E|even’s services.
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`Id. at 1728.4
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`While Opposer can undoubtedly present compelling advertising expenditure
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`amounts and examples of significant advertising campaigns, as well as evidence
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`4 Despite the finding of fame, the Board did not find the mark to be diluted by GULPY for portable animal
`water dishes and animal water containers because the marks were not similar.
`7~E/even, Inc., 83
`USPQ2d at 1730.
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`

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`demonstrating that its product is quite popular in the automobile battery niche, the
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`evidence that Opposer will rely on cannot rise to the level required to demonstrate fame
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`for purposes of dilution. As mentioned in Tom Co., evidence of duration and extent of
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`use and advertising is the type of evidence that would help establish that a mark is a
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`strong mark for likelihood of confusion or to show fame in a niche market, but such
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`evidence is not persuasive to establish that a mark is truly famous and distinctive and
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`entitled to the broad scope of protection provided by the FTDA. Toro Co., 61 UPSQ2d
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`at 1178.5
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`Opposer cannot meet the stringent burden of an FTDA claim because it cannot
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`demonstrate a powerful consumer association between the term DIE HARD and its
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`products. The English language has not changed. Opposer’s mark DIEHARD is not
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`the primary meaning of the term “diehard” or “die hard”. A search for “diehard” on
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`Merriam—Webster Online Dictionary indicated that the meaning of the term was “strongly
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`or fanatically determined or devoted.”
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`See, Exhibit A, Declaration of Melissa S.
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`LaBauve, and A1 appended thereto.6 The Merriam-Webster Online Dictionary did not
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`reveal any references to the Opposer’s mark nor any meanings that related to the
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`goods sold under the Opposer’s mark.7 See,
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`_E__xm_bi_t A and A1 appended thereto.
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`Opposer’s DIE HARD mark did not appear in BusinessWeek and lnterbrand’s annual
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`listing of the best global brands in 2008. See, Exhibit A and A2 appended thereto.
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`5 Applicant notes that fame in a niche market may be a basis for a dilution claim, but only if the applicant’s
`and Opposer’s trading fields overlap.
`Id. at 1182. With niche market fame, a mark may achieve
`extraordinary fame in a particular field so that nearly everyone in that field recognizes the mark divorced
`from its goods and services.
`Id. However, if the trading fields of applicant and Opposer do not overlap,
`as in this case, such niche market fame is irrelevant.
`Id.
`5 Internet evidence is admissible to support a Motion for Summary Judgment when accompanied by a
`declaration or affidavit of the person that accessed the information. Raccioppi v. Apogee Inc., 47
`USPQ2d 1368,1371 (TTAB 1998).
`7 There is a sponsored link to Opposer’s products, but neither Opposer nor Opposer’s products appear in
`the definition of the word, DIEHARD.
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`

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`Again, while Opposer’s product is undoubtedly popular in its niche, there does
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`not appear to be a “powerful consumer association” of the term DIEHARD with Opposer
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`such that Opposer’s use of the term has caused a change in the consumer’s perception
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`or a change in the English language. Nor has the mark DIEHARD become a symbol of
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`American culture, as in Nasdaq and 7—E/even.
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`Further, the use of DIEHARD as a mark is not unique. There are numerous third
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`party DIE HARD trademark registrations for products and services unrelated to
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`Opposer’s goods:
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`0 DIE HARD, Reg. No. 2246886, by Twentieth Century Fox Film
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`Corporation, for services in the nature of a series of motion picture films
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`for theatrical release, television distribution and distribution to video rental
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`outlets in international Class 41. See, _ELh_ibi_t B;
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`o DIE HARD DUCKS, Reg. No. 2280906, by Anaheim Ducks Hockey Club,
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`LLC, for Fan clubs in International Class 41. See, _ExiliQit C;
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`o DIE HARD, Reg. No. 2750152, by George Taub Products and Fusion
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`Company, lnc., for Dental stone die and plaster hardeners in International
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`Class 5. See, _Exh_ibi_t_ D.
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`The term DIEHARD is also used to refer to a battery of tests for measuring the
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`quality of random numbers. See, _@1_ib_i_t_ A and A3 appended thereto. These facts
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`evidence that
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`the public does not associate the term, at
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`least exclusively, with
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`Opposer.3
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`“A search for "diehard” on Google news brought up several hits related to "diehard” fans of sports, and
`none of the hits referenced the Sears brand, at least on the first page of the hits. See, Exhibit A and A4
`appended thereto.
`in contrast this with a search for NASDAQ on Google news, the primary hits all
`reference the Nasdaq Trading Co.’s brand. See, Exhibit A and A5 appended thereto.
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`10
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`

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`The most significant of the above mentioned third-party uses is the use of DIE
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`HARD by Twentieth Century Fox.
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`In fact, the public may even associate the word DIE
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`HARD with this use of the mark. The use of DIE HARD by Twentieth Century Fox, as
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`well as other third party uses of DIE HARD, demonstrates a lack of distinctiveness of
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`the mark, which, in essence, greatly limits the finding of fame across all markets. The
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`extent of the use of the mark DIE HARD by Twentieth Century Fox is more fully
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`analyzed below.
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`In light of the high standard of proof required to establish fame, and the fact that
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`doubts are resolved against the party claiming dilution, Opposer cannot demonstrate
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`the requisite finding of fame required to support its claim of dilution.
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`B.
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`APPLlCANT’S USE or THE MARK DIE HARD IN CONNECTION WITH BEVERAGES
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`CANNOT DILUTE OPPosER’s MARK DIEHARD FOR CAR BATTERIES.
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`Applicant’s use of the mark DIE HARD in connection with beverages cannot
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`dilute Opposer’s mark DIEHARD as a result of the prominent and substantial use of DIE
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`HARD by Twentieth Century Fox. Twentieth Century Fox’s use of the mark DIE HARD
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`is so pervasive that Opposer cannot, as a matter of law, demonstrate that Applicant’s
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`use of the mark DIE HARD will dilute Opposer’s mark.
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`In determining whether a mark or trade name is likely to cause dilution by
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`blurring, the Board may consider all relevant factors, including the following:
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`(i)
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`(ii)
`(iii)
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`The degree of similarity between the mark or trade name and the famous
`mark;
`The degree of inherent or acquired distinctiveness of the famous mark;
`The extent
`to which the owner of the famous mark is engaging in
`substantially exclusive use of the mark;
`The degree of recognition of the famous mark;
`(iv)
`(v) Whether the user of the mark or trade name intended to create an
`association with the famous mark;
`
`11
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`

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`(vi)
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`Any actual association between the mark or trade name and the famous
`mark.
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`Many of the above factors interrelate. Factors ii,
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`iii, and iv are analyzed together,
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`herein. As already mentioned above, Opposer’s mark is not exclusive,
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`there is
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`substantial third party use of the mark DlE HARD, and as a result, the degree of
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`recognition of the mark DIEHARD as Opposer’s mark is low.
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`While the owner of a famous mark’s use of that mark does not have to be
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`absolutely exclusive, it must be substantially exclusive. See, L.D. Kichler Co. v. Davoil
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`/nc., 192 F.3d 1349, 1352 (Fed. Cir. 1999). A limited amount of third party use is
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`acceptable. However,
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`in this case,
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`third party use of DlE HARD is overwhelming.
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`indeed, the third party use in this case has been so widespread that it has likely had an
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`impact on consumer perceptions. See generally, Exhibit A and A6 — A14 appended
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`thereto.
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`in 7—Eleven the Board did not find that respondent's evidence of third—party use of
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`various “Gulp” trademarks sufficient
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`to defeat a finding of dilution because the
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`respondent did not introduce evidence to support the _e__>_<_t_e__n1 of the third-parties’ use and
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`promotion of their “Gu|p” marks. 7-Eleven, Inc. v. Wechsler, 83 USPQ2d at 1729.9 The
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`Board noted that without evidence of the extent of third party use of the same or similar
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`marks, the Board could not assess whether third—party use has been so widespread as
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`to have had any impact on consumer perceptions. Id. But compare, National Motor
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`Bearing Co. v. James—Pond Clark, 266 F.2d 709, 121 USPQ 515, 517 (CCPA 1959)
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`(“evidence of present third party usage
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`indicates a conditioning of the public mind to
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`the common feature, thereby decreasing any likelihood of confusion”).
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`9 See, ft.nt. 4, supra. The Board rejected a finding of dilution based on other grounds. 7-Eleven, /nc., 83
`USPQ2d at 1730.
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`

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`In this case, Applicant submits the following evidence and facts detailing the
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`ubiquitous and well-known use of the mark DIE HARD by Twentieth Century Fox. Die
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`Hard is an action film released by Twentieth Century Fox in 1998. See, _E__>_<_h_i__t_)_i_t_ A and
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`A6 appended thereto. The film centers around the character John McClane, and his
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`fight against terrorists. See, Exhibit A and A7 appended thereto. Bruce Willis portrays
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`the character John McC|ane. See, E_>_g_l_'i_i_bfi A and A6 appended thereto.
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`Indeed, Bruce
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`Willis’ role in Die Hard was his break out and career defining role. See, E_x__h_i_t_)__i_t_ A and
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`A8 appended thereto.
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`in 1989 Die Hard was nominated for four academy awards in the
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`following categories:
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`film editing; sound; sound effects editing; visual effects. See,
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`Exhibit A and A9 appended thereto.
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`The Die Hard movie was so popular that over the next twenty years Twentieth
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`Century Fox released subsequent Die Hard films featuring the character John McC|ane.
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`See, Exhibit A and A6 appended thereto. Die Hard 2: Die Harder was released in 1990.
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`See, Exhibit A and A6 appended thereto. Die Hard with a Vengeance was released in
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`1995, and finally Live Free or Die Hard was released in 2007. See, Exhibit A and A6
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`and A10 appended thereto.
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`The Academy of Motion Picture Arts and Sciences recently commemorated the
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`twentieth anniversary of the release of Die Hard. The Academy of Motion Picture Arts
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`and Sciences held a special screening of Die Hard, which included a panel discussion
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`of the film. See, §>_<_h_i__b_it A and A9 appended thereto. As the Academy of Motion Picture
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`Arts and Sciences stated in the attached exhibit, Die Hard is considered one of the
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`benchmarks in the action genre. See, _l.=._xhflt A and A9 appended thereto. Die Hard
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`launched a popular franchise and set the stage for a new kind of action hero. See,
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`

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`Exhibit A and A9 appended thereto. Twenty years after its original release, Die Hard
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`continues to thrill audiences with its riveting action sequences and masterful sound and
`
`visual effects. See, _E_x_h_1_b_it A and A9 appended thereto.
`
`The popularity of Die Hard and the remainder of the Die Hard films in the series
`
`is evidenced by their tremendous box office success. Die Hard alone brought in 81
`
`million dollars in the U.S. and 137 million world—wide. See, Exhibit A and A11 appended
`
`thereto. The remainder of the series was also extremely successful, with the world—wide
`
`gross of all of the Die Hard films eventually exceeding 1.1 billion. See, _E_>_<h_ib_i1 A and
`
`A11 appended thereto.
`
`Die Hard’s popularity as an action series is unparalleled. Die Hard was named
`the best action movie of all time. See, _l§);i;i_b_i_t A and A12 appended thereto. I in fact,
`
`one line of dialogue from Die Hard has had such an impact on viewers that it has even
`
`been regarded by some as “the best one—liner”. See, Exhibit A and A13 appended
`
`thereto.
`
`in addition,
`
`there are several popular video games available based on the
`
`popular movie quadrilogy. Die Hard; Die Hard Arcade; Die Hard Trilogy; Die Hard
`
`Trilogy 2: Viva Las Vegas: Die Hard: Nakatomi Plaza; Die Hard: Vendetta. See
`
`generally, _Ex_l1iLJ_i_t A and A14 appended thereto.
`
`The remaining factors used to analyze whether the use of a mark will result in
`
`dilution by blurring are either neutral or cannot eclipse the compelling third party use of
`
`DIE HARD by Twentieth Century Fox. Applicant did not intend to create an association
`
`between its use of the mark DIE HARD and Opposer's use of its mark DIEHARD. And
`
`

`
`Applicant is unaware of any evidence of actual association between its use of the mark
`
`DIE HARD and Opposer’s use of the mark DIEHARD.
`
`VI.
`
`CONCLUSION
`
`Opposer cannot, as a matter of
`
`law, demonstrate that
`
`the registration of
`
`Applicant's mark will dilute its DIEHARD trademark. Not only can Opposer not
`
`demonstrate that
`
`its mark is
`
`famous for purposes of dilution because it
`
`lacks
`
`distinctiveness, but Opposer cannot demonstrate dilution as a result of blurring because
`
`of the prominent third—party use of the mark DIE HARD by Twentieth Century Fox.
`
`Applicant hereby requests that the Board issue summary judgment in its favor
`
`and reject Opposer’s claim of dilution. Applicant also requests that the Board hereby
`
`suspend these proceedings pending disposition of this Motion.
`
`Respectfully submitted,
`
`
`
`Attorneys for Applicant
`
`Date: November18 2008
`
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, TX 75219
`Telephone: (214) 651-5066
`Facsimile: (214) 200-0558
`jeff.becker@haynesboone.com
`melissa.Iabauve@haynesboone.com
`File: 36119.50
`H-753920_1.DOC
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91184490
`
`§
`
`§ §
`
`§ §
`
`§
`§
`
`KCD lP, LLC
`Opposer
`
`v.
`
`LBI Brands, Inc.,
`Applicant
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on this 18"‘ day of November, 2008, a copy
`of the foregoing Applicant’s Motion for Summary Judgment was served on Opposer, in
`the manner indicated below:
`
`Kimberly N. Reddick ..................................... ..vla first class mail, postage prepaid
`Bell, Boyd & Lloyd LLP
`P. O. Box 1135
`
`Chicago, IL 60690
`
`m Mm
`
`EIUVG
`
`er
`
`

`
`
`
`EXHIBIT A
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`KCD IP, LLC
`
`v,
`
`LBI BRANDS, IN C.,
`
`C0'JOO'300>003'-"0900-‘0O)00>
`
`Opposer,
`
`Applicant.
`
`Opposition No. 91184490
`
`AFFIDAVIT OF MELISSA S. LABAUVE
`
`I, Melissa S. LaBauve, being first duly sworn, state that:
`
`1.
`
`I am an attorney in the law firm of Haynes and Boone, LLP, counsel for the Applicant, LBI Brands,
`
`Inc. (LBI Brands).
`
`2.
`
`3.
`
`4.
`
`I make this affidavit on personal knowledge.
`
`If sworn as a witness, I can testify competently to the facts stated herein.
`
`The printouts attached hereto and labeled as Documents A1 through A14 are Web pages that were
`
`published on the Internet and accessed by me on November 17, 2008 at the following Internet addresses:
`
`A1 :
`
`http://wwwrnerriam-Webster.corn/dictiona1'y@:hard
`
`A2:
`
`ht
`
`://ima esbusinessweek.com/ss/08/09/0918 best brands/indexhtm
`
`http2//www.interbrandcom/bcst_global brandsaspx
`
`A3:
`
`http://www.stat.fsu.edu[pub/diehard/
`
`A4:
`
`A5:
`
`htm://news.google.com/news?hl=en&tab=wn&nedius&q=diehard
`
`htt
`
`://news. 00 le.com/news?hl=en&tab=wn&ned=us&nol1=1& =NASDA &btnG=Search
`
`
`
`A6:
`
`http://www.usatoday.com/life/movies/news/2006-08-02-die-hard x.htm
`
`A7:
`
`http://www.imdb.corn/title/ttO0950 l 6/plotsummary
`
`A8:
`
`http://www.superiogpicscom/bruce willis/
`
`H-754783_l DOC
`
`l
`
`

`
`
`
`A9:
`
`http://www.0scars.ogfipresypressrelgses/2008/08.07.25 .htm1
`
`A10:
`
`Qt_tp://www.ce11u1oidheroreviews.com/2007/ 1 1/23/live-frcc-die-hard/
`
`A1 1 :
`
`httg://www.the-numbers.c0m/movies/series/D1'eHard .p_hp
`
`A12:
`
`htt ://www.ew.com/ew/article/0 20041669 20041686 20042607 O0.htm1
`
`hfi/www.ew.com/ew/article/0,,200416@_20041686 20042607 25,00.htm1
`
`A13:
`
`h1tp://www.s1atc.c0m/id/2168927/nav/tap_1[
`
`A14:
`
`http://ww£giantbomb.corn/die-hard-nakatomi;Q1aza/61-827/ #2
`
`Melissa S. LaBauve
`
`SUBSCRIBED AND SWORN TO BEFORE MB on November 18, 2008.
`
`(SEAL)
`
`Ozgé
`
`Notary Public in and for the tate of Texas
`
`MY COMMISSION EXPIRES
`
`H-754783_1 DOC
`
`2
`
`

`
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`die-—lm1'rl
`
`1 (lie (i11t'1'2111s1t'ive verb!
`
`DieHn1‘r1Produots at Sears
`Find DieH:11‘rl Products and Accessories Online Now at Sears
`www S EARS com
`
`Mam Entry: die—hard 1:)
`Pronunciation:
`\'di-,hé.rd\
`Function adjeczive
`Date: 1922
`
`1 strongly or fanatically detennined or devoted <dI'e—}mmE fa.ns> ; e.sj.r7ecI'a.E.t'y 1 strongly resisting change <a die—}:ard
`conservat:ive>
`— die-hard ISOIJFG
`— die—hard-ism I3) \-I1z-am\ now:
`
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`Cite this page:
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`MLA fie
`"die-hard." Merriam-Webster Online Dictionam. 2003.
`Merriam-Weoster0nIine.1? November 2008
`<h!'!p:IJ\-\-ww.merriam-webeter.comidictionaryidie-hard»
`AP.!!. 19
`die-hard (2008). In Merriamwebster Onnne Drbflonary.
`Retrieved November 1 ?, 2000, from hi'l[ZIIJ'.|\v\-'W'\Iv' merriam-webster.comIdict\onaryJ‘die-hard
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`2008 Businessweekflnterbrand Best Global Brands ranking
`When ranking the Value Of the EiestE3IDi3aIEIrar1ds,InteriJrar1d evaluates brand valuein the
`same way any ether corporate asset VS \i"8|UeEt -- Oh the tJE!StS UT hDW i’T]UCh it tS likely t0 earn for
`the company th the future. Interbrand uses 3 combination UT analysts‘ protections, company
`financial documents‘ ahtt ttS DWh qualitative and quantitative 8h8|yStS tD arrive at 8 net present
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