throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA841949
`
`Filing date:
`
`08/25/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91201830
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Plaintiff
`The Corps Group
`
`J KEVIN FEE
`MORGAN LEWIS & BOCKIUS LLP
`1111 PENNSYLVANIA AVE NW
`WASHINGTON, DC 20004
`UNITED STATES
`Email: melkon@laborlawyers.com, jrubel@morganlewis.com, jk-
`fee@morganlewis.com, trademark@morganlewis.com
`
`Motion to Amend Pleading/Amended Pleading
`
`J. Kevin Fee
`
`jkfee@morganlewis.com, jrubel@morganlewis.com, trade-
`mark@morganlewis.com
`
`Signature
`
`Date
`
`/JKF/
`
`08/25/2017
`
`Attachments
`
`Amended Notice of Opposition.pdf(2571331 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`THE CORPS GROUP,
`
`
`Opposer,
`
`In re Application Serial No. 85/094,889
`Mark: Pilot Flight Suit Design
`
`
`
`
`v.
`
`
`AFTERBURNER, INC.
`
`
`
`
`
`
`
`
`Applicant.
`
`
`
`
`Published: August 30, 2011
`Opposition No. 91201830
`
`
`
`
`
`
`AMENDED NOTICE OF OPPOSITION
`
`Opposer The Corps Group, a Pennsylvania company, with a principal place of business
`
`located at 258 N. West End Boulevard, #318, Quakertown, Pennsylvania 18951, believes that it
`
`will be damaged if the mark in Application Serial No. 85-094,889 is registered and hereby
`
`opposes the same under 15 U.S.C. § 1063.
`
`The name and address of the Applicant for Application Serial No. 85-094,889 is
`
`Afterburner, Inc., a Georgia company with a principal place of business located at 55 Ivan
`
`Allen Jr. Boulevard, Suite 525, Atlanta, Georgia 30308.
`
`As grounds for cancellation, The Corps Group alleges as follows:
`
`1.
`
`Afterburner has applied for a registration of a mark consisting of a three-
`
`dimensional depiction of an entire pilot flight suit (the “alleged mark”) as worn by
`
`Afterburner's employees and contractors in rendering Applicant's services. The alleged
`
`mark does not contain any distinctive designs or patterns on the flight suit. Rather, the
`
`alleged mark is simply a generic flight suit.
`
`2.
`
`Afterburner defines its claimed use of the mark as being in connection with
`
`

`

`the provision of “business management consultancy services, executive search and
`
`placement services, [and] personnel placement and recruitment,” as well as “providing
`
`seminars in motivational and management training, educational and entertainment services,
`
`namely providing keynote motivational and educational speakers and providing personal and
`
`group coaching and learning forums in the field of leadership development.”
`
`3.
`
`In the application, Afterburner alleges that it first used the alleged mark m
`
`commerce on January 31, 1996.
`
`4.
`
`The application is based on a claim that the alleged mark has acquired
`
`distinctiveness for use in association with Afterburner's services in commerce under Section
`
`2(f) of the Lanham Act, 15 U.S.C. § 1052(f).
`
`5.
`
`Like Afterburner, The Corps Group is in the business of “corporate team
`
`building” and is comprised of former U.S. military fighter pilots who draw on their military
`
`training and experience to perform at speaking engagements and conduct training for
`
`business clients. The Corps Group describes on its web site that “through keynote
`
`addresses, corporate team building events and executive leadership training, [it] can help
`
`your business develop a high performing team culture that generates and maintains
`
`superior, measurable results.”
`
`6.
`
`The Corps Group has used flight suits in the course of advertising and
`
`making corporate team building presentations for an extended period of time. When making
`
`presentations, the individual employees of The Corps Group display logos, titles and
`
`headings making it clear that they are with The Corps Group. The Corps Group
`
`employees make this point clear whether they are wearing a flight suit or business attire.
`
`7.
`
`The Corps Group is not unique in using flight suits to make presentations to
`
`
`
`2
`
`

`

`business clients. Various entities, including numerous famous military heroes, have been
`
`doing so for decades. The following is a non-exclusive list of individuals and entities who
`
`have implemented the same basic idea: Mach 2 Consulting, Bright Consulting Group,
`
`Mission Excellence, Check Six, Fighter Pilots USA, Top Gun Teambuilding, Target
`
`Leadership, Christian Fighter Pilots, Brian Shul Presentations, Rob “Waldo” Waldman, Ed
`
`Rush, John Foley, Vernice Armour, Eileen Collins, Jon McBride, Jeff Espenship, Dan Clark,
`
`Bob Shaw, Pete Ross, Mike Heavey, Bill Simmons, Justin Hughes, Martin Richard, Rick
`
`White, and Scott O'Grady. Screenshots of some of the web sites for the individuals and
`
`entities in the business are attached hereto as Exhibit A.
`
`8.
`
`In fact, the principal of Mach 2 Consulting - Anthony “AB” Bourke - is a
`
`former partner of Afterburner. Espenship, Waldman, White, and the founders of Check
`
`Six were also formerly affiliated with Afterburner.
`
`9.
`
`Practically all of the other entities in the fighter pilot team building
`
`business seminar arena utilize flight suits in advertising their services and/or making
`
`presentations in which they reference their histories as fighter pilots and use call-signs and
`
`military jargon to lead team building seminars for business clients.
`
`10.
`
`As such, the alleged mark is not distinctive in any way. Rather, it represents
`
`the use of a common, well-known uniform by a fraternity of fighter pilots working for
`
`themselves and numerous entities.
`
`11.
`
`The other entities listed above have been using flight suit motifs in
`
`advertising and making team building seminars for years. Additionally, one or more other
`
`entities have been making such presentations in geographic areas that Afterburner has not
`
`penetrated.
`
`
`
`3
`
`

`

`12.
`
`The Corps Group is likely to be damaged by the registration of the alleged
`
`mark in that the prima facie effect of such registration would impair The Corps Group’s
`
`right to have its key employees - all of whom are former fighter pilots - make
`
`presentations in flight suits. Likewise, numerous other veterans - a number of whom
`
`attained a significant degree of notoriety by virtue of their service - would face the
`
`prospect of similar damage if the alleged mark were registered.
`
`13.
`
`In fact, if the alleged mark is registered, then The Corps Group is even faced
`
`with the prospect of its employees and contractors not being able to appear in pictures on the
`
`company's web site wearing the flight suits that they wore when they served in the armed
`
`forces. The alleged mark is so generic and broad that it would arguably prevent even that
`
`basic form of commercial expression on the part of The Corps Group and many other
`
`veterans.
`
`14.
`
`Afterburner filed a complaint in the Superior Court of Forsyth County, Georgia
`
`in October 2009 alleging, among other claims, that The Corps Group and its employees
`
`infringed its trade dress based in part on wearing military flight suits while they made
`
`presentations that Afterburner claimed was likely to cause confusion with Afterburner’s
`
`military flight suit, which is the subject of Application Serial No. 85-094,889.
`
`15.
`
`The Forsyth County Superior Court held a seven day jury trial in April 2014.
`
`After Afterburner finished presenting its case-in-chief, The Corps Group and the other
`
`defendants moved for a directed verdict with respect to the claim for infringement of
`
`Afterburner’s flight suit design on the basis that the design was generic and did not have
`
`secondary meaning. Initially, the court denied the motion for directed verdict.
`
`16.
`
`At the close of all evidence, The Corp Group and the other defendants renewed
`
`
`
`4
`
`

`

`their motion for directed verdict on the claim for infringement of Afterburner’s flight suit
`
`design. The Corps Group and the other defendants argued that Afterburner’s alleged flight suit
`
`service mark was generic and unprotectable, citing evidence of third parties who wore flight
`
`suits when making presentations and the lack of evidence that anyone identified Afterburner as
`
`the source of a “generic” unmarked flight suit.
`
`17.
`
`The court granted the motion for directed verdict, holding that the purported
`
`service mark was “a generic flight suit” and “not a service mark.” Afterburner did not move for
`
`reconsideration and did not appeal the judge’s ruling.
`
`Grounds for Opposition - The Alleged Mark Is Not Capable of Distinguishing
`Afterburner’s Services
`
`18.
`
`As a matter of law, the alleged mark is not entitled to protection as a matter
`
`of law because it is not capable of distinguishing Afterburner's services.
`
`19.
`
`The Corps Group and numerous other entities use motifs similar to that of
`
`the alleged mark and have done so for years. There is nothing unique or distinctive about the
`
`basic use of a non-descript flight suit in advertising and making a presentation to a
`
`business client. The concept should not be exclusively appropriated by any company.
`
`Grounds for Opposition - The Alleged Mark Has Not Acquired Distinctiveness
`
`20.
`
`As a matter of law, the alleged mark is not inherently distinctive and
`
`therefore is not registrable in the absence of proof of acquired distinctiveness.
`
`21.
`
`Afterburner does not and indeed cannot submit evidence in support of its
`
`application that the alleged mark - the simple use of an unmarked flight suit in corporate
`
`team building presentations - has acquired distinctiveness as a trademark. Specifically,
`
`Afterburner cannot meet its substantial burden of showing that the use of unmarked flight
`
`
`
`5
`
`

`

`suits in corporate team building presentations has acquired distinctiveness as a symbol of
`
`Afterburner's services in commerce.
`
`22.
`
`Afterburner is not the sole and exclusive user of the alleged mark for use in
`
`association with corporate team building presentations. The alleged mark does not function
`
`to identify Afterburner's services and distinguish them from identical, similar, or related
`
`services offered by The Corps Group or numerous other entities in the business of making
`
`corporate team building presentations.
`
`23.
`
`Afterburner is not entitled to register the alleged mark because the alleged
`
`mark is not distinctive. Therefore, Afterburner is not entitled to exclusive use of the alleged
`
`mark in commerce.
`
`Grounds for Opposition - Others Have Used The Alleged Mark Before It Acquired
`Distinctiveness
`
`The Corps Group denies that Afterburner's alleged mark has acquired
`
`24.
`
`secondary meaning. However, to the extent that it has done so, it acquired secondary meaning
`
`after numerous other entities had started advertising and making corporate team building
`
`presentations using flight suits.
`
`25.
`
`Many other entities have been advertising and making corporate team-
`
`building presentations using flight suits for years.
`
`Grounds for Opposition - Others Have Used The Alleged Mark In Geographic Areas
`Where Afterburner Has Not Acquired Distinctiveness
`
`26.
`
`The Corps Group denies that Afterburner's alleged mark has acquired
`
`secondary meaning anywhere. However, to the extent that it has done so, it has not
`
`acquired secondary meaning throughout the United States.
`
`
`
`6
`
`

`

`27.
`
`One or more entities have been advertising and making corporate team-
`
`building presentations using flight suits in geographic areas where Afterburner has a limited
`
`presence and therefore has not acquired secondary meaning.
`
`Grounds for Opposition – Collateral Estoppel
`
`28.
`
`The identical issue of whether the purported mark that is the subject of
`
`Application Serial No. 85-094,889 is protectable as a trademark was involved in the
`
`civil action in Forsyth County Superior Court.
`
`29.
`
`The identical issue of whether the purported mark that is the subject of
`
`Application Serial No. 85-094,889 is protectable as a trademark was actually litigated
`
`in the civil action in Forsyth County Superior Court and the court determined that the
`
`purported mark was not protectable as a trademark.
`
`30.
`
`The determination that the purported mark that is the subject of Application
`
`Serial No. 85-094,889 is not protectable as a trademark was necessary to the resulting
`
`judgment.
`
`31.
`
`Afterburner had a full and fair opportunity to litigate the issue in the
`
`civil action in Forsyth County Superior Court.
`
`32.
`
`As a result, Afterburner is estopped from arguing that the purported mark that
`
`is the subject of Application Serial No. 85-094,889 is protectable as a trademark.
`
`
`
`WHEREFORE, Opposer The Corps Group requests that its Opposition to
`
`Application Serial No. 85-094,889 be sustained and that the Trademark Trial and Appeal
`
`
`
`7
`
`

`

`Board grant any and all further relief to The Corps Group that the Board finds necessary
`
`and just under the circumstances.
`
`
`
`
`Dated: August 25, 2017
`
`
`Respectfully submitted,
`
`By: /s/ J. Kevin Fee________
`J. Kevin Fee
`Jordana S. Rubel
`Morgan, Lewis & Bockius LLP
`1111 Pennsylvania Ave., N.W.
`Washington, D.C. 20004
`Tel: (202) 739-3000
`Fax: (202) 739-3001
`
`Attorneys for Opposer
`The Corps Group
`
`
`
`
`
`
`
`
`
`8
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

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