Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA385009
`ESTTA Tracking number:
`12/21/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91193845
`Defendant
`The Funk Companies
`HARVEY L. YUSMAN
`GREENSFELDER, HEMKER & GALE, P.C.
`10 S BROADWAY STE 2000
`SAINT LOUIS, MO 63102-1747
`UNITED STATES
`jlr@greensfelder.com, hly@greensfelder.com, dtb@greensfelder.com
`Motion for Summary Judgment
`Daniel T. Batten
`dtb@greensfelder.com, jlr@greensfelder.com
`/Daniel T. Batten/
`12/21/2010
`Applicant's Motion for Summary Judgment.pdf ( 18 pages )(679077 bytes )
`Exhibit 1 to MSJ.pdf ( 18 pages )(607397 bytes )
`Exhibit 2 to MSJ.pdf ( 11 pages )(479468 bytes )
`Exhibit 3 to MSJ.pdf ( 20 pages )(598615 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
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`% )
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`) Opposition No. 91193345
`)
`) Application Serial No. 77/710,803
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`Mark: EXPRESS CLYDESDALES and Design
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`) )
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`)
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`% ) ) )
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`ANHEUSER-BUSCH, INCORPORATED,
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`OPPOSB“
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`_
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`V
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`Tl-IE FUNK COMPANIES,
`Applicant.
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`APPLICANTS MOTION FOR SUMMARY JUDGMENT, STATEMENT
`__m____.
`OF UNDISPUTED FACTS AND MEMORANDUM IN SUPPORT
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`COMES NOW Applicant The Funk Companies (“Funl<” or “Applicant”), by and through its
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`undersigned counsel, and, pursuant to Rule 56 of the Federal Rules of Civil Procedure and TBMP
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`§ 528, hereby respectfully moves
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`for
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`summary judgment on Opposer Anheuser-Busch,
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`lncorporated’s
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`(“Opposer’s”) opposition to Applicant’s application to register EXPRESS
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`CLYDESDALES and Design (the “Opposition”), on the basis that there is no genuine issue of
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`material fact and Applicant is entitled to judgment as a matter oflaw.
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`INTRODUCTION
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`This Opposition is premised on the misconception that Opposer has the exclusive right to use
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`the name and image of a breed of horse — the Clydesdale — and that Opposer is entitled to bar others
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`from using same in a non—trademarl< sense — namely, to describe one’s Clydesdale-themed goods and
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`services. Simply stated, as a matter of law, App1icant’s use of the name and image of a Clydesdale is
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`not likely to cause confusion with Opposer’s marks, because, inter alfa, (1) Applicant’s mark is
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`distinguishing, (2) Applicant’s use of the name and image of a Clydesdale is merely to describe
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`Applicant’s Clyde-sdale—themed services; and (3) Applicanfs services (Clydesdale-related breeding,
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`studding, and entertainment services) are completely separate and distinct from Opposer’s goods
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`(beer). More directly, Applicant is in no way involved with the sale or promotion beer, or any type
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`of food or beverage; in fact, Applicant prohibits alcohol from being consumed at its Clydesdale
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`facilities. Also, Applicant’s mark enlists a dominant, distinguishing characteristic: The term
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`“EXPRESS.” Finally, the distinctive designs employed by both parties destroy any vestige ofa risk
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`that customers are going to be confused as to source or origin.
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`STATEMENT OF UNDISPUTED MATERIAL FACTS
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`The following are the undisputed material facts entitling Applicant to judgment as a matter of
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`law:
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`1.
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`Opposed Application Serial No. 77/710,803 seeks to register the design mark
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`EXPRESS CLYDESDALES (“Applicant’s Mark"), for “Entertainment services in the nature of
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`personal appearances by horses at charity events, parades, festivals, and fairs” in Int. Class 41, and
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`“horse breeding and stud services” in Int. Class 44 (“Opposed Application”). _S§§ Application for
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`Serial No. 77/710,803?
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`' While certain of Opposer’s contentions are cited in support of this Motion, such contentions are
`otherwise disputed and are to be assumed true only for the purposes ofthis Motion, and Applicant in
`no way waives and expressly reserves the right to contest the veracity of such statements.
`2 Pursuant to TBMP § 704.03 (a), the file for Opposer’s Application is incorporated herein by
`reference, including all office actions and responses thereto.
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`l\.)
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`2.
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`App1icant’s Mark is as follows:
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`
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`E Applications for Serial No. 77/710,803.
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`3.
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`During the pendency of the Opposed Application, the Examining Attorney required
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`Applicant
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`to disclaim the term “Clydesdales“ “because it merely describes a feature and
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`characteristic of the applicant’s service." SQ Office Action dated June 30, 2009.
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`4.
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`Subsequently, Applicant amended the Opposed Application to disclaim the term
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`“Clydesdales.” 3 Response to Office Action dated September 9, 2009.
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`5.
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`A Clydesdale is defined as “one of a Scottish breed of strong, hardy draft horses,
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`having a feathering of long hairs along the backs of the legs." 53; Random House Unabridged
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`Dictionary at 392 (2"" Ed. 1993).
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`6.
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`Opposer’s Opposition is premised on one claim: Likelihood of confusion.
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`_S_§_r;
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`Notice of Opposition, ‘ll 7.
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`7.
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`Opposer “is the nation’s leading brewer and marketer of beer, and related goods and
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`services.” See Notice of Opposition, ll 1.
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`8.
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`Opposer has employed the Clydesdale horse as a symbol of its beer company, and in
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`this capacity its Clydesdales make personal appearances and represent Opposer at events and
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`exhibitions throughout the country. gag Notice of Opposition, ‘ll 2.
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`9.
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`Opposer uses various trademarks that include the word mark CLYDESDALES and
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`images of a Clydesdale to market, distribute, and sell beer and related goods and services.
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`§;e_§
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`Notice of Opposition, 1l 3.
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`10.
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`None of Opposer’s trademarks inciude the term EXPRESS or any derivation or
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`colorable imitation thereof. E Notice of Opposition.
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`ll.
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`Opposer relies on the following registrations to oppose the Opposed Application
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`("'Oppose1"s Marks”):
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`Registration No. 918,645 for
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`“beer” in Int. Class 32.
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`Registration No. 3,011,411 for
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`“clothing, namely shirts and hats.”
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`Registration No. 3,017,762 for
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`“drinking vessels” in Int. Class 21.
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`Registration No. 3,605,052 for
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`“beer.”
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`E Notice of Opposition, 1] 4.
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`12.
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`Opposer is not aware of any instances of actual confusion between Applicanfs goods
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`and services and those offered by Opposer.
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`§§_E_3 Opposer’s Responses to Applicant’s Amended First
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`Set of lnterrogatories, submitted herewith as Exhibit 1 and incorporated herein by reference,
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`Response to Interrogatory 6.
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`13.
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`Opposer was not aware of Applicant’s Mark until October 27, 2009, when
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`Applicar1t’s Mark was published by the U.S. Patent and Trademark Office. E Exhibit 1, Response
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`to Interrogatory 16.
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`14.
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`Applicant is not one of Opposer’s competitors.
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`_S_(;e Exhibit 1, Response to
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`Interrogatory 21.
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`15.
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`Opposer’s Clyclesclales do not compete in six horse hitch competitions such as those
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`participated in by Applicant. See Declaration of Robert A. Funk (“Decl."), submitted herewith as
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`Exhibit 2 and incorporated herein by reference, ‘W 9 and 17.
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`16.
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`Since at least as early as 1999, Applicant, including through its licensed affiliate
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`Express Clydesdales, L.L.C., has offered numerous Clydesdale-related goods and services under the
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`mark EXPRESS CLYDESDALES. E Deci., ‘ll 3.
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`17.
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`The tenn EXPRESS is the house mark for Applicant and one of Applicant's related
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`companies, Express Franchise Services, L.P. (“Express”). E Decl., 1] 4.
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`18.
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`Specifically, Since as early as 1989, Applicant has used the EXPRESS house mark,
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`including as part of its marks EXPRESS UU BAR, EX EXPRESS UUBAR RANCHES, EX
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`EXPRESS RANCHES, EXPRESS RANCHES, EXPRESS LEMOUSIN RANCHES, in connection
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`with hunting, fishing and lodging services, as well as studding and breeding services. fig Decl.,1]5.
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`19.
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`Express has used the EXPRESS house mark since 1983, including standalone and as
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`part ofits marks EXPRESS PERSSNNEL SERVICES, and EXPRESS STAFFING SERVICES, as
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`well as numerous other EXPRESS marks, in connection with its staffing and employment related
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`services. fiDecl., ‘ll 6.
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`20.
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`Since at least 1999, Applicant has been in the business of breeding and studding
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`Clydesdales. E Decl., ‘ll 7.
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`I
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`21.
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`Since at least 1999, Applicant’s EXPRESS CLYDESDALES Clydesdales have
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`appeared at numerous charity events, parades, festivals, and fairs. E Decl., fl 8.
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`22.
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`Since at least i999, Applicant’s EXPRESS CLYDESDALES Clydesdales have
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`competed in nurnerous events, including six horse hitch competitions. E Decl., ‘ll 9.
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`23.
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`Applicant has an EXPRESS CLYDESDALE Barn which houses and cares for its
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`Clydesdales. The public is invited to visit the Barn and experience the EXPRESS CLYDESDALES
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`Clydesdales, including touring the Barn and meeting the horses. At the Barn, customers are able to
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`purchase EXPRESS CLYDESDALES merchandise. E Decl., {E 10.
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`24.
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`Applicant also offers Barn rental services under the EXPRESS CLYDESDALES
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`mark. In renting the EXPRESS CLYDESDALES Barn, customers are provided exclusive access to
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`the Barn, its facilities, and its housed EXPRESS CLYDESDALES Clydesdales, including for
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`weddings and birthday parties. Customers are also able to rent access to the EXPRESS
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`CLYDESDALES hay loft, and participate in EXPRESS CLYDESDALES wagon rides pulled by
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`Clydesdales.
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`_S,§9_ Decl.,1l I1.
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`25.
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`Pursuant to the EXPRESS CLYDESDALES Barn Rental Agreement, and to ensuer a
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`family~friendly environment, no alcoholic beverage is allowed at the Bani, and no alcoholic beverage
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`is to‘ be brought to the Barn. E Decl., fil I2.
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`26.
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`Applicanfs EXPRESS CLYDESDALES Clydesdales are also used to promote
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`Express’s stalling and employment services. Sg Decl., 1[ I3.
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`27.
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`In 2009, Applicant spent $28,947.14 in nationally advertising its Clydesdale—tlierned
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`services under the mark EXPRESS CLYDESDALES.
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`In 2008, Applicant spent $19,938.98 in
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`nationally advertising its Clydesdale—tl1eined services under the mark EXPRESS CLYDESDALES.
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`In 2007, Applicant spent $17,520.28 in nationally advertising its Clydesdale-themed services under
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`the mark EXPRESS CLYDESDALES.
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`In 2006, Applicant spent $17,394.30 in nationally
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`advertising its Clydesdale-themed services under the mark EXPRESS CLYDESDALES. In 2005,
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`Applicant spent $18,335.83 in nationally advertising its Clydesdale-themed services under
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`EXPRESS CLYDESDALES. In 2004, Applicant spent $30,954.60 in nationally advertising its
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`Clydesdale—themed services under the mark EXPRESS CLYDESDALES. In 2003, Applicant spent
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`$23,467.90 in nationally advertising its Clydesdale—tliemed services under the mark EXPRESS
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`CLYDESDALES. In 2002, Applicant spent $27,197.03 in nationally advertising its Clydesdale-
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`themed services under the mark EXPRESS CLYDESDALES. SE Decl., 1} 14.
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`28.
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`I Applicant’s goods and services are geared towards “family friendly” events that do
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`not promote the consumption of alcoholic beverages. E Decl., ‘ll 15.
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`29.
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`Applicant does not sell or market beer or any other type of alcoholic beverage.
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`_S_§_e
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`Decl.,1l 16.
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`30.
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`Applicant is aware of at least eleven (1 1) ofApplicant’s direct competitors that use or
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`include the term and/or image of a Clydesdale as a trademark and/or trade name. E Deci., ii 17.
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`3 1 .
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`Applicant is aware of at least one hundred sixteen (1 16) other companies that use or
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`include the term and/or image of a Clydesdale as a trademark and/or trade name in connection with
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`promoting their goods and services. E Decl, ‘El 18.
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`32.
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`Applicant is not aware of any instances of actual confusion between Applicanfs
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`goods and services and those offered by Opposer. E Decl., ‘ll 19.
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`33.
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`A Westlaw Business Name Search Report identifies two hundred sixty—nine (269)
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`active and inactive business names that include the term “Clydesdale.” gee Westlaw Business Name
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`Search Report, submitted herewith as Exhibit 3 and incorporated herein by reference.
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`ARGUMENT
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`A.
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`Standard of Review for Motions for Summagy Judgment.
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`Pursuant to Federal Rule of Civil Procedure 56, summary judgment is appropriate where the
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`pleadings, depositions, answers to interrogatories, and admissions on tile, together with the
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`affidavits, if any, reveal that there is no genuine issue of material fact, and that the moving party is
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`entitled to judgment as a matter oflaw. Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S.
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`317, 322 (£986); I-lamrnonds V. Hartford Fire Ins. Co., 50] F.3d 991, 995 (8th Cir. 2007). Only
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`disputes over facts that might affect the outcome will properly exclude summary judgment.
`Anderson v. Liberty Lobby. Inc., 477 U.S. 242, 248 (1986). The moving party has the burden of
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`informing the Court ofthe basis of its motion. Qelmj, 477 U.S. at 322.
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`Once the moving party has carried its burden, its opponent must set forth specific facts
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`demonstrating there is a dispute about a genuine issue of material fact, not the “mere existence of
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`some alleged factual dispute.” Fed. R. Civ. P. 56(e); Liberty Lobby. Inc., 477 U.S. at 247.
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`Furthennore, the nonmoving party may not rely solely on his pleadings, but must set forth specific
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`facts showing that there is a genuine issue for trial with regard to those dispositive matters. E. at
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`324. E 1 Hammonds, 501 F.3d at 9951 fiali Buffett v. Chi-Chi’s, 226 USPQ. 428, 430
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`(TTAB 1985) (Nonniovant, in responding to motion for summary judgment “may not rest on mere
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`conclusory pleadings but must set out, usually in affidavit form by one with knowledge of specific
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`facts, what specific evidence could be offered at trial.").
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`Pursuant to 15 U.S.C. § l052(d), a trademark application may be refused if it “[c]onsists of or
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`comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a
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`mark or trade name previously used in the United States by another and not abandoned, as to be
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`likely, when used on or in connection with the of the applicant, to cause confusion, or to cause
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`mistake or to deceive. . .” An applicant in an opposition proceeding is entitled to summary judgment
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`it’ it can establish that there are no genuine issues as to any fact that would be material to the decision
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`of likelihood ofconfusion and that applicant is entitled to judgment on this question as a matter of
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`law. Kellogg Co. v. Pack’ern Enterprises, 951 F.2d 330, 332 (Fed. Cir. 1991).
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`B.
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`Establishing Likelihood of Confusion.
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`“[A] determination of likelihood of contusion is a question of law based on findings of
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`relevant underlying facts.” Packard Press. Inc. v. Hewlett—Packard Co., 227, F.3d 1352, 1356 (Fed.
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`Cir. 2000). Likelihood of confusion is analyzed according a various factors set for in In re. E.i.
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`DuPont Del\lemours & Co., 177 U.S.P.Q. 563 (CCPA 1973), including:
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`-
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`I
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`0
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`I
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`Similarities of the marks in their entireties as to appearance, sound, connotation and
`commercial impression;
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`Similarities in the nature of goods or services described in the application;
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`Similarity of trade channels;
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`Sophistication of the customers;
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`Fame of the prior mark;
`0
`0 Number and nature of similar marks in use on similar goods;
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`0 Nature and extent of any actual confusion;
`I Length oftime and condition under which the goods have been used concurrently without
`evidence of actual confusion;
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`o The variety of goods on which the mark is used;
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`0 The market interaction between the parties; and
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`o The extent of potential confusion.
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`Although all of these factors may carry different weight depending on the marks at issue, the
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`dissimilarity of the marks can be dispositive on the issue of likelihood of confusion and warrant
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`summary judgment in favor of a party. Packard Press at 1356; Kellogg Company v. Pack-Em
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`Enterprises. Inc., 951 F.2d 330, 21 U.S.P.Q.2d 1142 (Fed. Cir. 1991).
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`C.
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`There Is No Likeiihood of Confusion.
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`L
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`Appiicantis Mark is Distinguishably Different From Opposer’s Mark In Appearance.
`Sound. Connotation and Commercial Impression.
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`:1.
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`The Test for Confusing Similarity.
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`In analyzing the similarity of marks, one must look at the marks in their entirety, although the
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`dominant portion of a composite mark may be afforded more weight.
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`In re National Data Co§p., 753
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`F.2d I056, 1058 (Fed. Cir. 1985). A descriptive or generic feature of a mark shall be given less
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`weight. I_gI_. Disclaimed terms should also be afforded less weight. In re Dixie Restaurants, 105 F.3d
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`1405, 1407 (Fed. Cir. 1997); Kellogg Company v. Pack—Ern Enterprises. Inc., 951 F.2d 330 (Fed.
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`Cir. 1991).
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`In Kellogg Cornpan , opposer challenged the registration of appiicanfs mark for FROOTEE
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`ICE with an elephant design for flavored ice bars, based on opposer’s prior registration for FROOT
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`LOOPS for cereal breakfast foods and related goods.
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`1_cl._ The court upheld the Board’s conclusion
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`that there was no likelihood of confusion because the applicant had disclaimed term “FROOTEE
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`ICE,” and the associated design element otherwise distinguished it from petitioner’s mark.
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`Id__. at
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`333.
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`10
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`In Dixie Restaurants, the applicant's challenged mark was THE DELTA CAFE and design,
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`for restaurant services, and the petitioner's mark was for DELTA for hotel, motel, and restaurant
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`services. In re Dixie Restaurants at 1405. The court again aflirmed the Board’s conclusion that the
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`term “CAFE,” which the applicant had disclaimed, was generic and was entitled to little weight in
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`assessing likelihood of confusion. Id, at 1407.
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`When assessing the similarity of two marks that share the same term, and that term is used by
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`many third parties, the inclusion of said term should be afforded little weight in the analysis.
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`lmagewear Apparel Corp. v. Wings Manufacturing Cogporation, 2010 TTAB LEXIS 15 (TTAB
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`2010). In Imagewear Apparel Copp., the TTAB concluded that the inclusion of the term “RED” in
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`the mark RED SNAP was not enough to create a sufficient likelihood of confusion with the
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`registered mark for RED KAP, because the term “RED” was greatly used by third parties in the same
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`industry.
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`Further, a dominant term of an applicant’s mark that is dissimilar to the petitioner’s family of
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`marks can be sufficient to distinguish the applicant’s mark. The Sports Authorig Michigan. Inc. V.
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`I-Ianover Catalog Holdings. Inc., 2000 TTAB LEXIS 630 (TTAB 2000).
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`In The Sports Authority
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`Michigan. Inc., applicant’s mark for AMERlCA’S AUTHORITY IN HOME FASHIONS was
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`dissimilar to petitioner’s family of AUTHORITY marks, including SPORTS AUTHORITY, because
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`the term HOME FASHIONS was both dominant and distinguishing.
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`The inclusion of an additional term can also affect the overall commercial impression ofa
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`mark such that there is no likelihood of confusion. In re I-Iea1'stCo§p., 982 F.2d 493, 494 (Fed. Cir.
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`1992) (applicant”s mark, VARGA GIRL, was sufficiently dissimilar to the registered mark for
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`VARGAS for identical services, because the terrn “GIRL” was distinguishing.) There is even less
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`likelihood of confusion if the shared term is descriptive (and therefore accorded limited trademark
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`It
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`protection).
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`§_t;§ The Conde Nast Publications, inc. V. Miss Quality. Inc., 507 F.2d 1404, 1407
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`(CCPA 1975).
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`In The Conde Nast Publications. 1110., opposer challenged applicant’s mark for
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`COUNTRY VOGUES for dresses based on its registered mark for VOGUE for fashion magazines.
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`The court conciuded that the term VOGUE, as used by opposer, was weak and afforded limited
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`protection because its dictionary definition described the quality of the associated goods:
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`“something. . .in fashion at a particular time” or “fashionable.” The court concluded that, in light of
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`the fact that applicant’s mark includes the distinguishing term “COUNTRY,” there was no likelihood
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`ofconfusion.
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`b.
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`The Marks Are Not Similar.
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`Applicant’s Mark is a composite mark that includes three elements: (1) The term EXPRESS,
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`(2) the term CLYDESDALES, and (3) an elaborate design:
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`The Opposed Application is for two classes of Clydesdale—themed services: (1) Entertainment
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`services in the nature of exhibiting its special breed of Clydesdales, and (2) breeding and studding
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`services. Therefore, as recognized by the Examining Attorney in demanding that the term be
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`disclaimed, the term CLYDESDALES, as used by Applicant, is clearly and indisputably descriptive,
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`if not generic, of its services, and the subordinate term.
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`The fact that the term “CLYDESDALE” is subordinate is enforced by the fact that eleven
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`(1 1) ofApplicant’s direct competitors also use this term, and between one hundred sixteen (1 16) and
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`two hundred sixty—nir1e (269) other companies have otherwise incorporated the name and image of
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`the Clydesdale in their trade names and trademarks.
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`This leaves EXPRESS as the dominant term, which is underscored by the fact that, as
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`represented in the above design, it is the first and most prominent term of Applicant’s Mark.
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`EXPRESS is also Applicant’s and its related company’s house mark.
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`Opposer’s Marks consist ofa loose affiliation of marks that include images of Clydesdales or
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`the term Clydesdales. However, none of Opposer’s marks include the term EXPRESS or any
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`derivation or colorable imitation thereof.
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`The dissimilarities between each party’s associate designs are far more substantial and
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`distinguishing than any suggested similarities. As evidenced below, the most similar of Opposer’s
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`Marks include a distinctive crowned “B", while, again, Applicant's Mark has the distinctive term
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`EXPRESS along with a decorative “X” within an ornamental border:
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`Although two of Opposer’s Marks include the image of a Clydesdale, and apparently
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`succeeded in registering a live Clydesdale, none of these Clydesdale images look similar to the
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`Clydesdale head in Applicant’s Mark, and Opposer does not have the exclusive right to any and all
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`depictions of this particular breed of horse.
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`In sum, there is no likelihood of confusion because (i) Applicant uses a dominant, distinctive
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`term, EXPRESS; (ii) each party deploys distinctive associated design elements; and (iii) the only
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`shared term, “CLYDESDALE,” is entitled to little, if any, weight.
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`;
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`Applicant Offers Completely Different and Distinct Services.
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`Services may be sufficiently similar to conclude that there is a likelihood of confusion if the
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`goods or services “are related in some Viable manner, and/or that the conditions surrounding their
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`marketing are such that they would be encountered by the same persons under circumstances that
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`could, because of the similarities of the marks used therewith, give rise to the mistaken belief that
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`they emanate. from or are in some way associated with the same source.” In re Albert Trostel & Sons
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`Company, 29 U.S.P.Q.2d 1783, 1785 (TTAB 1993).
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`In assessing the similarity of the parties’
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`respective goods and services, only the goods and services as they are identified in the their
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`registrations and applications may be considered. Octocom Systems. Inc. v. Houston Computer
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`Services. 1110., 918, F.2d 937, 942 (Fed. Cir. 1990).
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`Simply stated, Opposer is in the beer business, and Applicant is not.
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`In fact, Opposer's
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`relied-upon registrations are limited to (1) “beer,” (2) “drinking vessels,” and (3) “clothing, namely
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`shirts and hats” (presumably in furtherance of beer—reiated promotions). It is indisputable that beer is
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`the primary, ifnot sole, focus of Opposer’s business, and its customers associate Opposer with beer.
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`In contrast, the Opposed Application is for breeding and studding of Clydesdales, and
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`"'[e]ntertainment services in the nature of personal appearances by horses at charity events, parades,
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`‘festivals, and fairs.’ Applicant does not sell beer or any other alcoholic beverage.
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`In fact,
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`Applicant’s service agreement specifically excludes the use or consumption of alcoholic beverages at
`
`its facilities.
`
`Its business is otherwise geared towards more “family friendly” events that do not
`
`promote or involve alcohol consumption. Clearly, any of Opposer’s customers would quickly
`
`ascertain that Applicant and its services are not associated with Opposer.
`
`Further highlighting the dissociated nature of each party’s services is the fact that, after ten
`
`(10) years, Opposer never learned of Applicant or its Clydesdales-related services, even though they
`
`14
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`

`
`had been extensively promoted under Applicant's Mark since 1999. In fact, Opposer only learned of
`
`Applicant’s Mark once it was published for opposition, and does not even identify Applicant as a
`
`competitor.
`
`In sum, it is clear that the general public will not confuse Opposer’s goods and services with
`
`that of Applicant.
`
`"1
`L
`
`The Market Is Rife With Clydesdale—Branded Services
`
`In assessing a rnark’s strength or weakness and the range of protection it should be afforded,
`
`the Board must consider “the number and nature of similar marks in use on similar goods [or
`
`7?
`
`services].
`
`LIoyd’s Food Products. Inc. v. Eli’s. Inc., 987 F.2d 766, 768 (Fed. Cir. 1993).
`
`In
`
`evaluating this, the Board errs if it does not consider evidence of search reports and telephone
`
`directories.
`
`I_c_I_.; In re Broadway Chicken. Inc., 38 U.S.P.Q.2d I559 (TTAB 1996).
`
`In fact, a
`
`“threshold showing that the mark appears in advertising, in the form of current listings in the yellow
`
`and white pages, carries the presumption that the service mark is being used by third—parties in
`
`connection with the offering of the advertised services.” Lloyd’s Food Products. Inc., at 768.
`
`In In re Broadway Chicken. Inc., the examining attorney rejected applicant's trademark
`
`application for BROADWAY CHICKEN for restaurant services, based on likelihood of confusion
`
`with prior registrations for BROADWAY PIZZA and BROADWAY BAR & PIZZA for restaurant
`
`services, because of the shared term “BROADWAY.” In overturning the examining attorney’s
`
`1'Bfi1Sfll, the Board found that the examining attorney should have considered the applicant’s evidence
`
`of significant third party Lise of the term “BROADWAY” in trade names and trademarks, including
`
`photocopies of listings in the yellow and white pages of current telephone directories, search results
`
`of the American Business Directory, and the search results of the Dun & Bradstreet database. The
`
`Board concluded that this evidence was “stifficient to establish primrcifacie that a significant number
`
`15
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`

`
`ol” third parties are using trade names/service marks containing” the term “BROADWAY” and so
`
`should be afforded narrow trademark protection. Q.
`
`There are at
`
`least eleven (11) different companies that have adopted the term
`
`CLYDESDALE and/or image of the Clydesdale to promote their Clydesdale—themed entertainment,
`
`studding and breeding services. A recent Westlaw Business Name Search Report identifies least two
`
`hundred sixty—nine (269) companies that do and/or have otherwise used the term “Clydesdale” as
`
`part of their trademark and/or trade name. Therefore, if Opposer is entitled to any protection in the
`
`term “CLYDESDALE,” the scope of such protection must be narrowly applied to its primary area of
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`trade and narrowly limited to the scope of its registrations: Beer (along with drinking vessels and t-
`
`shirts).
`
`Applicanfs Mark is further removed from Opposer’s scope of protection through the
`
`inclusion of the term EXPRESS, so that there is absolutely no likelihood of confusion. Because the
`
`sole basis of the Opposition is Oppose-r’s purported rights in the term “CLYDESDALE,” the
`
`Opposition must fail.
`
`4.
`
`There Have Been No Instances of Actual Confusion For Ten Years
`
`In evaluating likelihood of confusion, the absence of actual instances of confusion may be
`
`considered where “the record indicated appreciable and continuous use by applicant of its mark for a
`
`significant period of time in the same markets as those served by opposer under its marks." Gillette
`
`Canada Inc. v. Ranir Coggoration, 23 U.S.P.Q.2d 1768 (TTAB 1992).
`
`Here, Applicant and Opposer enjoy separate markets. In fact, Oppose1"s goods and services
`
`are directed to, and focused upon, beer—drinkers, while Applicant does not even allow alcoholic
`
`beverages at its facilities.
`
`However, to the extent Opposer argues otherwise, the fact that neither party has learned of
`
`16
`
`

`
`any instance of actual confusion undercuts any argument that there is any likelihood of confusion.
`
`Specifically, Applicant adopted the Mark over ten (10) years ago, and since then has continuously
`
`offered its Clydesdale goods and services. Since 2002, it has spent $183,756.06 in promoting such
`
`Clydesdale goods and services. Over that time frame Opposer admits that there have been no
`
`instances of actual confusion.
`
`CONCLUSION
`
`There is simply no basis upon which Opposer can a establish likelihood of confusion. The
`
`marks are not similar. The goods/services are not similar. There are scores of other similar
`
`“Clydesdale” trademarks and trade names such that, even if Opposer has protectable rights to the
`
`Clydesdale image and name,
`
`it is limited to the beer industry. To conclude otherwise would
`
`ellectively conclude that Clydesdale breeders and showers cannot advise the public that they breed,
`
`compete and show their Clydesdales.
`
`WI-IEREFORE, Opposer prays that the Board (i) enter summary judgment in favor of
`
`Applicant and against Opposer, (ii) dismiss the Opposition with prejudice, (iii) approve the
`
`Application for registration, and (iv) grant such other and further relief as it deems just and proper.
`
`l7
`
`

`
`Dated: December 21. 2010
`
`Respectfully Submitted,
`
`GREENSFELDER, HEMKER & GALE, P.C.
`
`
` L,,J,.«*
`
`»,
`'33
`
`Jason lilioss
`
`jlr@greensfelder.com
`Daniel T. Batten
`
`dtb@greensfelder.com
`GREEN SFELDER, HEMKER & GALE, P.C.
`
`10 South Broadway, Suite 2000
`St. Louis, Missouri 63102
`
`(314)241-9090
`
`(314) 241-8624 FAX
`
`Attorneys for Applicant The Funk Conipanies
`
`CERTIFICATE OF SERVICE
`
`The Lmdersignecl certifies that a true and complete copy ofthe foregoing Motion for Summary
`Judgment has been served on the undersigned by mailing said copy on December 21, 2010 via First
`Class Mail, postage prepaid, to:
`
`Douglas N. Masters, Esq.
`Loeb & Loeb LLP
`
`321 North Clark Street, Suite 23 00
`
`Chicago, IL 60654
`
` ‘W
`
`Daniel T. Batten I
`
`18
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 77/710,803: EXPRESS CLYDESDALES
`Published in the Ofiir:ial Gazerfe of October 27, 2009
`
`) )
`
`ANHEUSER-BUSCH, INCORPORATED,
`
`Opposer,
`
`v.
`
`. )
`) Opposition No. 91193845
`) Application Serial No. 77/710,803
`)
`
`) )
`
`)_
`
`TI-IE FUNK COMPANIES,
`
`Appiicant.
`
`OPPOSEIPS RESPONSES TO APPLICANTS
`AMENDED FIRST SET OF INTERROGATORIES
`
`Opposer objects to the Applicant's Amended First Set of interrogatories to the extent that
`it seeks to impose obligations on Oppose: beyond or inconsistent with those set forth. in the
`
`Federal Rules of Civil Procedure or the Trademark Rules of Practice. Opposer also objects to
`
`Applicant's Amended First Set of interrogatories to the extent to which it seeks information
`
`comprising attorney work product or shielded from discovery by the attorney client privilege.
`
`Opposer Further objects to App1icant’s Amended First Set of interrogatories to the extent to
`
`which it is overly broad, unduly burdensome, and/or seeks the production of documents or
`
`information that are not relevant, material, or reasonably calculated to iead to the discovery of
`
`relevant, material, or admissible evidence.
`
`Furthermore, Opposer notes tha1App1icant’s Amended First Set of interrogatories still
`
`exceeds the limit of 75 interrogatories, including subparts, but in the spirit of cooperation, and
`
`subject to the foregoing objections, Opposer responds as follows:
`
`CH694I3.¢
`442200-1027!
`
` s
`
`j
`
`

`
`INTERROGATORY N0. 1:
`
`For each of Opposer’s Marks:
`
`a.
`
`Identify each mark, each product or service in connection in which it has been
`used, the manner of use, the geographic locations in which it has been used, and
`the period of time in which it has been used for those goods and services in that
`location; and
`
`RESPONSE:
`
`Opposer objects to Interrogatory No. 1 as overly broad and unduly burdensome. Opposer furdicr
`
`objects to this interrogatory on the grounds that Opposer has been using some of Opposer’s
`
`Marks for more than 70 years and is not able to identify each product or service in connection
`
`with which it has been used, the manner of use, the geographic locations in which it has been
`
`used, and the period of time in which it has been used for those goods and services in that
`
`location. Without waiver of objection, Opposer’s Marks have been used nationwide since at
`
`least as early as the 1930s, as follows:
`
`
`
`
`
`Reg. No. 918,645
`
`Reg. No. 3,017,762
`
`
`As depicted in U.S. Clothing, namely shirts and hats
`
`
`
`Reg. No. 3,605,052
`BUDWEISER
`CLYDESDALES
`
`
`
`
`
`
`
`
`
`
`As early as the
`1930s
`
`
`
`
`
`
`Various goods and services, including,
`but not limited to, entertainment
`services including parades,
`advertisements, competitions, and film,
`television, print, fairground, spor