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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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA438719
`ESTTA Tracking number:
`10/31/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91190276
`Defendant
`OPRO International Limited
`ANTHONY HANDAL
`HANDAL MOROFSKY
`501 KINGS HIGHWAY EAST
`FAIRFIELD, CT 06825
`UNITED STATES
`handal@handalglobal.com
`Opposition/Response to Motion
`Anthony H. Handal
`handaldocket@gmail.com
`/Anthony H. Handal/
`10/31/2011
`OPROopposition.pdf ( 25 pages )(161870 bytes )
`MotionforSuspension.pdf ( 2 pages )(18882 bytes )
`DeclarationAnthonyHHandal.pdf ( 3 pages )(17450 bytes )
`ExhibitsAthroughE.pdf ( 35 pages )(9490037 bytes )
`ExhibitsFthroughJ.pdf ( 48 pages )(2269367 bytes )
`ExhibitsKthroughO.pdf ( 25 pages )(1647695 bytes )
`ExhibitsPthroughR.pdf ( 28 pages )(1400262 bytes )
`ExhibitsSthroughT.pdf ( 7 pages )(432026 bytes )
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`SHIELD MFG. INC.,
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`OPRO LIMITED,
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`v.
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`Opp. No. 91190276
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`Opposer,
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`OPRO.
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`OPRO'S RESPONSE TO OPPOSER’S MOTION FOR SUMMARY JUDGMENT AND CROSS-
`MOTION FOR SUMMARY JUDGMENT
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`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`ATT: BOX TTAB FEE
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`Sir:
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`OPRO, Limited ("OPRO") submits this memorandum opposing the Motion for Summary
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`
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`Judgment filed by Shield Manufacturing. Inc. (“Opposer”) and in Support of OPRO’s Cross-Motion
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`for Summary Judgment. Also attached is the Declaration of Anthony H. Handal in support of OPRO’s
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`Response.
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`MEMORANDUM OF LAW IN RESPONSE TO OPPOSER’S
`MOTION FOR SUMMARY JUDGMENTAND IN SUPPORT OF OPRO’S CROSS-MOTION
`FOR SUMMARY JUDGMENT
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`Opposer, brazenly ignoring its very own generic use of the term, "shield", for hockey hand
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`shields, claims trademark rights in the term "shield" in OPRO’s mark OPROSHIELD as applied to a
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`shield for protecting the teeth from impacts during sports and other physical activities such as boxing and
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`other martial arts. Opposer even admits that its use of “hand shield” is not trademark use. Brief p. 4, l. 7.
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`185493.3
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`Going even further, Opposer rests its motion on the untenable premise that no material question
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`of fact exists as to whether or not OPROSHIELD, the combination of Applicant’s name and what is
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`respectfully submitted to be the generic term “shield”, is confusingly similar to SHIELD. Clearly it is not.
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`Opposer has brought this completely meritless opposition against U.S. Application Serial No.
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`79/042,400 directed to the mark OPROSHIELD (the "Application") owned by OPRO, Limited. Opposer
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`cites its U.S. Trademark Registration No. 835,151 for the alleged trademark SHIELD in plain letters for
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`protective mouth guards for all contact sports (the "Registration"). Following the filing of a Notice of
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`Opposition against the Application, OPRO accordingly counterclaimed for cancellation of Opposer’s
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`registration of the alleged SHIELD trademark on the grounds that the alleged trademark “shield” is
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`generic for shields generally and for gum shields for all contact sports, in particular.
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`OPRO believes that it is being damaged by U.S. Trademark Registration No. 835,151 for the term
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`"shield" and, accordingly, initially moved for summary judgment that the word "shield" is generic as
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`applied to body part protecting shields, including the "gum shields" (also known as "mouth guards",
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`mouth protectors and mouth pieces) as recited in both the Application and the Registration (the "Goods").
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`Opposer opposed the motion for summary judgment and cross moved for summary judgment on the issue
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`of genericness. The Board denied Opposer’s and OPRO’s respective motions for summary judgment,
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`asserting that neither party had established there was no genuine issue of material fact pursuant to Rule 56
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`of the Federal Rules of Federal Procedure. Subsequently, the time for discovery has ended and both
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`parties have produced documents and responses to interrogatory requests. Upon review of the documents
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`and responses, Opposer filed the instant Motion for Summary Judgment (“Motion”) and Memorandum in
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`Support (“Brief”).
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`In response, OPRO reasserts and incorporates through reference its position as stated in OPRO’s
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`initial Motion for Summary Judgment and submits that the word "shield" is commonly used generically
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`for a wide range of products which protect body parts, including extensive use of the term "gum shield" in
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`the field of sports and martial arts. Such extensive use in the field of sports includes generic use by
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`Opposer. Additionally, the word "shield", referring to shields for protecting the mouth is extensively used
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`by purveyors of sports equipment, in patents, in online information services, and in the generic
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`descriptions of goods in many issued trademark registrations of the United States Patent and Trademark
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`Office, including many registrations for the gum shields covered by the Application and the Registration.
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`Further, OPRO asserts that the evidence submitted by both Opposer and OPRO establishes OPRO’s
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`position that the mark OPROSHIELD is not confusingly similar with the mark SHIELD, and is therefore
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`entitled to Registration.
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`As shown below, summary judgment should not be granted to Opposer in this case because, if
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`summary judgment in favor of OPRO is not appropriate, at the very least there are numerous questions of
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`material fact that go to whether the SHIELD mark is generic. Indeed, when the full factual record is
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`considered, it is apparent that OPRO has a meritorious basis for summary judgment, and judgment should
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`be entered in favor of OPRO, not Opposer.
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`In short, OPRO asserts that the evidence submitted by Opposer is clearly disputed by OPRO, and
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`rather than support Opposer’s contentious assertions that the SHIELD mark has not become generic,
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`rather shows that the word has been descriptive of devices for protecting body parts since antiquity.
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`Additionally, Opposer’s evidence fails utterly to support its additional burden that OPRO’s mark must be
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`shown to be confusingly similar to the SHIELD mark.
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`Accordingly, OPRO requests that Opposer’s motion for summary judgment be dismissed and that
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`OPRO’s cross motion for summary judgment be granted on the basis that (1) the word "shield" is a
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`generic term incapable of functioning as a trademark; (2) if ever there was any significance to the term
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`"shield" as an indication of origin, this term has lost any possible significance at least on account of
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`uncontrolled widespread use of the term "shield" by numerous third-parties (and by Opposer) to
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`generically denominate gum shields and/or other types of shields in sports; and (3) the marks are not
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`confusingly similar.
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`I.
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`UNDISPUTED FACTS
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`The undisputed facts in this matter are as follows:
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`185493.3
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`1.
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`The Goods protect the teeth from injury due to physical impacts of the type
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`which occur during sports, including boxing and other martial arts sports.
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`2.
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`The term "shield" is used to refer to other devices for protecting the body from
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`injury due to physical impact during sports.
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`3.
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`Hand shields are used in the sport of hockey comprise a hollow half toroidal
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`shell which slides down the shaft of a hockey stick and fits around the hand of the user.
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`4.
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`and sticks.
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`5.
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`Hand shields protect the hands from physical impacts from errant balls, pucks,
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`The word "shield" is generic to a thing that protects. See Webster's New
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`Universal Unabridged Dictionary, Exhibit A to the Declaration of Anthony H. Handal in Support
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`of OPRO's Opposition to Opposer’s Motion for Summary Judgment and in Support of its Cross-
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`Motion for Summary Judgment in favor of OPRO (the "Handal Declaration").
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`6.
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`The word "shield" is used in a wide variety of contexts to generically designate
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`a variety of things that protect, ranging from gum shields (even as admitted in the United
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`Kingdom by Opposer) to body armor, and CPR face shields, as well as biological body parts that
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`provide a protective function. See definition 9 of Exhibit A.
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`7.
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`Shield Manufacturing, the Opposer herein, uses the term "Shields" on page 10
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`of its catalog brochure available on its website to generically designate hand shields which are
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`designed to protect the hands during sports activities. See Exhibit B1, which constitutes printouts
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`of Opposer's catalog from the website at the URL www.ShieldSports.com.
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`8.
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`The Goods may be used for a variety of purposes. These purposes include
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`athletic purposes and medical purposes. See Shield Manufacturing's Notice of Opposition,
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`paragraph 7.
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`9.
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`Mouth shields are also used to protect the mouth in industrial settings.
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`1 All references to exhibits in this memorandum identify exhibits to the annexed Handal Declaration.
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`185493.3
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`10.
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`The word "shield" is commonly employed to denominate the Goods generically
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`in the generic name "gum shields" in interstate commerce. See, for example, Exhibit C, excerpts
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`from the website of Gungfu.com which offers a "double gum shield" for sale at $6.99.
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`11.
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`The word "shield" is commonly employed generically as the generic name for a
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`variety of the other shields, including shields for protecting the ribs, the arms, and the body. See
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`Exhibit D, an excerpt from the website of Gungfu.com which offers such products.
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`12.
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`Referring to the hand shields which Opposer sells, Opposer has stated that "The
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`Hand Shield easily slips on all hockey shafts and moves up and down the shaft as the player
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`moves hand positions. Protects hands from errant balls, pucks, and sticks."
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`13. While the Opposer uses the term "mouthguard" in its designation of the Goods,
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`the term is interchangeable with "gum shields". See the definition from Wikipedia which defines
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`the same stating that "[a] mouthguard (also known as a mouth protector, mouth piece, or
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`gumshield) is a protective device for the mouth that covers the teeth and gums to prevent and
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`reduce injury to the teeth, arches, lips and gums." Exhibit E.
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`14.
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`The Goods are used, among other things, to protect the mouth from injury.
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`Shield Manufacturing's Notice of Opposition, paragraph 4.
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`15.
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` Gum shields are also used in connection with dental procedures. Wikipedia
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`definition. Exhibit E.
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`16.
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`Shield Manufacturing's notice of opposition, at paragraph 7, alleges that OPRO's
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`application, U.S. Application Serial No. 79/042,400 directed to the mark OPPROSHIELD,
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`recites goods classified in either International Class 10 in the case of products used for medical
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`purposes or in International Class 28 in the case of products used for athletic purposes.
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`17. Mouth protectors for protecting the teeth, mouth and gums take a wide variety
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`of configurations. See United States Patent Number 6,802,079 directed to a "PROTECTIVE
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`MOUTH SHIELD", which is external to the mouth. Exhibit F. See also United States Patent
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`Number 5,938,435 directed to an "ORTHODONTIC APPLIANCE SHIELD SYSTEM" which
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`is "configured to protect the lips and tongue of a user", and constitutes a strip of protective
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`material worn between the teeth and the lips. Exhibit G.
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`18.
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`The term "shield" is also used for other mouth shields, such as the "Mouth
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`Shield" in United States Design Patent Number 485,944. Exhibit H.
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`19.
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`The word "shield" is used as a generic designator in connection with other types
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`of devices for protecting the mouth. See Exhibit I, United States Patent Number 4,104,530,
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`which describes a "shield" for providing "x-ray shielding" for "portions of the mouth". See also
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`Exhibit J, United States Patent Number 7,025,060, which describes a "shield 32 ... held between
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`the gums and the lips of the user," and United States Patent Number 5,730,599 (Exhibit K)
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`which describes a "protective dental shield" for protecting "soft tissue areas of the inner cheeks,
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`tongue or lips."
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`20.
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`The United States Patent and Trademark Office regularly uses the term "shield"
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`to generically designate mouth protecting products in trademark registrations.
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`21.
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`United States Trademark Registration Number 2,680,226 is directed to "mouth
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`shields". Exhibit L.
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`22.
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`United States Trademark Registration Number 3,697,340, owned by Lonsdale
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`Sports Ltd., is directed to "mouth shields" of the type involved herein. Exhibit M.
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`23.
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`A search of the database at the United States Patent and Trademark Office for
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`trademark registrations and applications including the term "gumshields" or the phrase "gum
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`shields" in the description of goods uncovered 26 filings, half of which matured into
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`registrations. See Exhibit N.
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`24.
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`The number of United States Patent and Trademark Office registrations and
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`applications concerned with and specifically reciting "shields" even in the small area concerned
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`with shields for protecting the mouth is consistent with the extensive use of the term "shield" in
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`commerce and otherwise.
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`25.
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`For example, myKarateStore.com of Thornton, Colorado also offers a double
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`gum shield. Exhibit O.
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`26.
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`Exhibit P.
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`27.
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`Dentists also use the term "gumshield" to generically designate the Goods.
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`A Google search directed to "mouth shield" turned up about 6,590,000 hits,
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`supporting the commonness of this generic use of the term "shield". Exhibit Q.
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`28. When the search on Google was narrowed to the term " "mouth shield," that is
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`the two words were placed in quotation marks in the search box, about 27,900 hits turned up,
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`covering such applications as sports, microphones, light guards, CPR face shields, snoring
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`preventers, rescue face shields, pacifiers, and tooth grinding prevention, among many others.
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`The first 10 results pages of this Google search are annexed hereto as Exhibit R.
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`29.
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`As is shown by the Google search of Exhibit R, the term "shield" is extensively
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`used in the sports equipment industry to describe devices for protecting the gums and teeth.
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`30.
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`Companies in the sports equipment industry use the term "shield" generically to
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`designate body protection devices. See Exhibits B (Opposer's website), C, D, E, F, O, P, M, N of
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`the Handal Declaration.
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`31.
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`Opposer has identified the Goods as used in the field of sports. Notice of
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`Opposition, ¶ 7.
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`32.
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`Companies in the dental and medical industry use the term "shield" generically
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`to designate mouth protection devices. See Exhibits G, I, K, L, P of the Handal Declaration.
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`33.
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`Opposer has identified the goods as used in the medical/dental field. Notice of
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`Opposition, ¶ 7.
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`34.
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`Dentists manufacture gum shields to protect the teeth in sports. See Exhibit E.
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`35.
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`Companies in other industries use the term "shield" generically to designate
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`mouth protection devices. See Exhibits H and J of the Handal Declaration.
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`36.
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`Retailer websites in the sports equipment industry use the term "gum shield" to
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`designate mouth protection devices. See Exhibits B (Opposer's website), C, D, O, P, Q, and R of
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`the Handal Declaration.
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`37.
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`Although the Opposer contends that the term “gum shield” is not used in the
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`United States, as noted above, Gungfu.com has a category called “Shields” and under that
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`category lists for sale at a price specified in US dollars an “air shield”, a “rib shield”, various
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`versions of an “arm shield”, a “body shield” and a “Double Gum Shield”. See Exhibit C and D
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`of the Handal Declaration.
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`38.
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`Gungfu.com is operating in the United States, as it lists events associated with
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`martial arts, including locations, and all locations are in the United States, including Brattleboro,
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`Vermont; Kona, Hawaii; New York; Connecticut; Michigan; Dallas, Texas; New York City; and
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`Rutherford, New Jersey. See Exhibit C.
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`39.
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`The term “gum shield” is used by at least one dental office in Florida, by patent
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`applicants from Pennsylvania, Louisiana, Ohio, California and North Carolina, and trademark
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`examiners in the USPTO. See Exhibits F,G, H, I, J, K, L, M, N, and P of the Handal Declaration.
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`40.
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`The above evidence shows that the term "shield" is a commonly used term in the
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`sports equipment industry to generically describe a device for protecting the mouth and teeth
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`from injury.
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`41.
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`The above evidence shows that the term "gum shield" is a commonly used term
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`in the sports equipment industry to generically refer to a device for protecting the mouth and
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`teeth from injury.
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`42.
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`The above evidence shows that the term "hand shield" is a term used in the
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`sports equipment industry to refer generically to a device for shielding the hands.
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`43.
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`The above evidence shows that the term "shield" is a commonly used term in the
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`sports equipment industry to refer generically to a device for protecting various body parts,
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`including gum shields.
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`44.
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`literature.
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`45.
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`Opposer uses the term "shield" to refer to hand shields in its own product
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`The above evidence of widespread, uncontrolled use of the term "shield" by
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`numerous third-parties for the goods involved herein shows that the term is generic.
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`46. Widespread, uncontrolled use of the term "shield" by numerous third-parties
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`shows that the term has no significance as an indication of origin and "shield" cannot act as a
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`trademark indicating a single manufacturer as a source.
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`47.
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`Generic use of the term "shield" by Opposer to describe protective devices for
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`use during sporting competition graphically demonstrates the complete lack of merit of this
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`opposition.
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`48.
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`As to likelihood of confusion, Opposer has used its mark SHIELD in association
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`with protective mouthguards in interstate commerce since as early as 1961, and registered its
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`mark SHIELD with the U.S. Patent & Trademark Office in 1967 for International Class 10, see
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`Opposer’s Motion for Summary Judgment page 14.
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`49.
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`Since 1961, there have been Patent and Trademark applications and registrations
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`with the U.S. Patent & Trademark Office which have used or incorporated the term “Shield”,
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`including Registration Number 2,935,099 for “PRACTI-SHIELD” in International Class 10. See
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`Exhibit T.
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`50.
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`As evidenced by the numerous patent and trademark registrations and
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`widespread, uncontrolled use of the term "shield" by numerous third-parties, at the very least,
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`any strength of Opposer’s alleged mark has been weakened by a crowded field.
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`51.
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`OPRO’s mark is distinguishable from Opposer’s mark by the addition of
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`OPRO’s house mark “OPRO” to Opposer’s alleged mark.
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`52.
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`OPRO’s use of its house mark OPRO gives thetm OPROSHIELD a distinct
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`difference in sound, appearance, connotation, and commercial impression from Opposer’s
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`mark, and when combined with the generic term “shield” becomes a distinct source
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`identifier entitled to trademark protection.
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`II.
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`ARGUMENT
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`1. OPPOSER’S MOTION FOR SUMMARY JUDGMENT SHOULD BE DENIED AS THE
`OPPOSER HAS FAILED TO SATISFY THE STANDARD
`FOR SUMMARY JUDGMENT
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`A.
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`Summary Judgment Standard
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`Summary judgment may not be granted unless “the pleadings, depositions, answers to
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`interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine
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`issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” FED. R.
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`CIV. P. 56(c). See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986) (summary judgment only
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`appropriate where the evidence is such that no reasonable jury could return a verdict for the non-moving
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`party). Initially, as the moving party, Opposer has the burden of bringing forward sufficient evidence to
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`establish that there are no genuine issues of material fact and that it is entitled to judgment as a matter of
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`law. Celotex Corp. v. Catrett, 477 U.S. 317, 324-25 (1986). Opposer must do more than rely upon “bare
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`assertions, conclusory allegations or suspicions.” Gans v. Mundy, 762 F. 2d 338, 341 (3d Cir. 1985).
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`“The movant must make a prima facie showing that the standard for obtaining summary judgment has
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`been satisfied.” 11 Moore’s Federal Practice, § 56.11[1][a](Matthew Bender 3d ed.). That is, the burden
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`is on the moving party to demonstrate that the evidence creates no genuine issue of material fact. See
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`Amaker v. Foley, 274 F.3d 677 (2nd Cit. 2001); Chipollini v. Spencer Gifts, Inc. 814 F.2d 893 (3d Cir.
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`1987) (en banc).
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`Evidence offered by OPRO to resist summary judgment is to be believed and all justifiable
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`inferences therefrom are to be drawn in the light most favorable to OPRO. Matsushita Elec. Indus. Co.,
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`Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). In determining whether a genuine issue exists as to
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`a material fact, the court must view underlying facts contained in affidavits, attached exhibits, and
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`depositions in the light most favorable to the non-moving party. U.S. v. Diebold, Inc. 369 U.S. 654, 655,
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`82 S. Ct. 993, 8 L. Ed. 2d 176 (1962). Moreover, the court must draw all reasonable inferences and
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`resolve all ambiguities in favor of the non-moving party. Leon v. Murphy, 988 F.2d. 303, 308 (2d Cir.
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`1993); Anderson, 477 U.S. at 248-49; Doe v. Dep’t of Pub. Safety ex rel. Lee, 271 F.3d 38, 47 (2d Cir.
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`2001), rev’d on other grounds; Connecticut Dep’t of Public Safety v. Doe, 538 U.S. 1, 123 S. Ct. 1160,
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`155 L. Ed. 2d 98 (2003); International Raw Materials, Ltd. V. Stauffer Chemical Co., 898 F.2d 946 (3d
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`Cir. 1990). A fact is “material” only if the fact has some affect on the outcome of the suit. Catanzaro v.
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`Welden, 140 F.3d 91, 93 (2d Cir. 1998). A dispute regarding a material fact is genuine “if the evidence is
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`such that a reasonable jury could return a verdict for the nonmoving party”. Anderson, 477 U.S. at 248.
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`These general principles of summary judgment apply under Federal Rule of Civil Procedure 56 to inter-
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`party proceedings before the Board. See e.g., Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d
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`1560, 4 U.S.P.Q.2d 1793, 1797 (Fed. Cir. 1987).
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`As explained more fully below, the Opposer in this case has failed to demonstrate either the
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`absence of contested issues of material fact, or an entitlement to judgment as a matter of law.
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`Accordingly, its Motion must be denied and, where appropriate, judgment should be entered in favor of
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`OPRO.
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`B.
`The Evidence Asserted by Opposer is Clearly in Dispute as to Whether Opposer’s
`SHIELD mark is Generic.
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`Summary judgment should not be granted to Opposer because it has failed to present evidence
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`that conclusively establishes that the term “Shield” is not generic for protective devices for protecting the
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`body from injury due to physical impact. Instead, Opposer has simply offered bald assertions and
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`conclusory allegations, taking issue with the use of adjectival modifiers, contending irrelevantly that the
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`term “gum shield” is not used in the United States, and objecting to the conservative definition of the
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`genus of goods consistent with the evidence submitted in this proceeding, all of which are disputed issues
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`of fact.
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`At the very least, Opposer has failed to establish that there is no genuine issue regarding the fact
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`that the term "shield" is generic to protective devices for protecting the body from injury due to physical
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`impact, which is the exact function of the Goods. Opposer’s contention that the genus of goods is limited
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`solely to mouth protecting devices is unsupportable and clearly disputed by the evidence presented by
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`OPRO. As shown by the evidence submitted by OPRO, the term “shield” is used by sellers of sporting
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`goods to refer to a wide variety of products for protecting different parts of the body from injury. These
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`include the hands. See Exhibit B. Indeed, in the website gungfu.com, there is a category called “Shields”,
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`which offers for sale an “air shield”, a “rib saver”, various versions of an “arm shield”, and a “body
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`shield”. See Exhibit D. The same company also offers a “Double Gum Shield”. See Exhibit C.
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`Additionally, in the very specific commercial market for martial arts products, merchants use the word
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`“shield” to refer to devices for protecting the gums, ribs, torso, and arm. Clearly, all these uses show that
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`the term “shield” is generic for devices which protect the mouth, gums and teeth. Thus, any attempt to
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`define the genus to exclude one of these items (e.g., "gum shields") is completely without merit and at the
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`very least, disputed by the evidence established by OPRO.
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`Similarly, Opposer would have this Board rule that, because the word “shield” does not appear in
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`the evidence as referring solely to shields for protecting the mouth, the word “shield”, absent an adjectival
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`modifier, is not generic. No legal authority is cited for the remarkable proposition that the Board should
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`disregard references to shields including “gum shields” that protect the mouth, because this generic term
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`is sometimes used with an adjective.
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`In any case, the result of such a rule would be inequitable and illogical. For example, the word
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`“vehicle” would become registrable as a trademark for limited classes of vehicles, for example, utility
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`vehicles, if all uses of the generic term “vehicle” for utility vehicles carried an adjectival modifier. Under
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`this rule, using the generic term “car” as part of a trademark applied to a sports car might be an
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`infringement of trademark rights of another in the supposed trademark “car” as applied to sports cars.
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`Similarly, using the generic term “cola” as part of a trademark (for example the trademark Coca-Cola)
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`might infringe the trademark rights of another party in a supposed trademark “cola” as applied to a cola-
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`based soft drinks, on account of that other party’s use of the generic term “cola” in and of itself as a
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`trademark on a cola drink. Opposer’s essentially arguing that a dictionary definition of the generic term
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`“shield” does not list every type of shield would suggest that if one dictionary definition of “car” did not
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`list “sports cars,” the term “car” could be registered for sports cars, and that the term “car” is not a generic
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`term in referring to sports cars.
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`According to Opposer’s position, the word “shield”, though it has been a generic term in the
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`English language and its predecessors for a thousand years might suddenly become available for
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`trademark use as applied to gum shields, if users commonly refer to such devices with an adjectival
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`modifier. In such a case, the failure to use an adjectival modifier with a generic term would amount to
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`trademark infringement.
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`Opposer’s position goes even further.
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`Opposer would have this Board rule that use of the generic term with an adjectival modifier
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`amounts to trademark infringement. Exactly this question is the subject of this proceeding. OPRO’s
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`trademark is “OPROSHIELD”, and it includes an adjectival modifier.
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`In short, as is apparent from the legal authority and evidence submitted in this matter, no party
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`can gain trademark rights in a generic word, simply because others have used the generic word with
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`adjectival modifiers. Any other rule would open the door to litigation with respect to numerous uses of
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`generic terms. As such, whether the term “shield” alone is generic is undoubtedly, at the very least,
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`disputed by the evidence on record.
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`Opposer, in Section 2 of its Motion for Summary Judgment, relies on the principal that “where
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`the mark at issue is federally registered, a presumption exists that the term is not generic” Gilson on
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`Trademarks § 2.02 (citing Yellow Cab Co. v. Yellow Cab, 419 F.3d. 925, 75 U.S.P.Q.2d 1771 (9th Cir.
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`2005); Nartron Corp. v. STMicroelectronics, Inc., 305 F.3d 397, 405, 64 U.S.P.Q.2d 1761 (6th Cir. 2002).
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`However, Opposer fails to include the principal that a mark, though originally distinctive and
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`registered, over time may become generic, thereby losing all protection. See King-Seely Thermos Co. v
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`Aladdin Indus. Inc., 321 F.2d 577 (2d Cir. 1963)(formerly suggestive term THERMOS held generic).
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`OPRO has submitted evidence that the term "shield", if it ever had any trademark significance, has lost
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`any such significance as a trademark, due to the widespread, uncontrolled use of the term "shield" on gum
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`shields, and related products for protecting the hands, ribs and arms, throughout the relevant industry.
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`Opposer has not offered any evidence to refute this, and at the very least, Opposer and OPRO are
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`diametrically opposed as to the facts on this issue.
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`Opposer also contends that the term “gum shield” is not used in the United States. Quite simply,
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`this contradicts the evidence of record. As noted above, Gungfu.com has a category called “Shields” and
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`under that category lists for sale at a price specified in US dollars an “air shield”, a “rib shield”, various
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`versions of an “arm shield”, a “body shield” and a “Double Gum Shield”. See Exhibits C and D.
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`Moreover, the evidence of record shows that this company is operating in the United States, as it lists
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`events associated with martial arts, including locations, and all locations are in the United States,
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`including Brattleboro, Vermont; Kona, Hawaii; New York; Connecticut; Michigan; Dallas, Texas; New
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`York City; and Rutherford, New Jersey. The term is also used by at least one dental office in Florida
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`(Exhibit P), by patent applicants from Pennsylvania, Louisiana, Ohio, California and North Carolina
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`(Exhibits F, G, H, I, J, K), and trademark examiners in the USPTO. See Exhibits L, M, N. OPRO’s own
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`evidence further shows that the term “gum shield” is used in at least one United States website, see
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`Opposer’s Motion for Summary Judgment page 9-10.
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`C.
`The Evidence Demonstrates that at the Very Least There are Triable Issues of Fact
`Concerning Likelihood of Confusion.
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`As to likelihood of confusion, summary judgment is often inappropriate in trademark cases because
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`the likelihood of confusion analysis generally is fact intensive: “Due to the factual nature of likelihood of
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`confusion, determining whether a likelihood of confusion exists at the summary judgment stage is
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`generally disfavored because a full record is usually required to fully assess the facts.” KP Permanent
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`Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 608 (9th Cir. 2005).
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` Opposer, in Section 3(A) of its Argument portion of its Motion, relies on its priority of registration.
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`However, it must be noted that if a trademark becomes generic, often as a result of improper use, rights in
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`the mark may no longer be enforceable. Likewise, the strength of a mark can decrease over time from
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`improper use or failure to police and enforce trademark rights. As stated above, there are numerous patent
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`and trademark applications and registrations which use the term “shield” Similarly, there is numerous,
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`and widespread third party use of the term “shield” in interstate commerce, including the United States.
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`Opposer also contends that the registration and use of OPRO’s mark is likely to cause confusion,
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`or to cause mistake, or to deceive, particularly as to the source or origin of the goods which OPRO seeks
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`to use its mark. As to this allegation, there is an obvious genuine dispute of material facts. The Board will
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`grant summary judgment of no likelihood of confusion where the evidence shows a distinct difference in
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`sound, appearance, connotation, and commercial impression. Inspiration Software, Inc. v. Teachers
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`Inspired Practical Stuff, Inc. The use of OPRO's mark is sufficiently distinct from the registered mark
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`owned by Opposer. OPROSHIELD mark is capable of distinguishing Opposer's mark by use of the prefix
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`“OPRO”. Therefore, even if Opposer’s mark is not generic, a question of fact exists as to whether
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`OPRO’s use of its house mark “OPRO” acts as a source identifier capable of distinguishing the
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`trademarks and entitles OPRO’s mark to trademark protection.
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`It is astonishing to OPRO that Opposer believes there is a likelihood of confusion when there
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`have been