Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA589703
`ESTTA Tracking number:
`02/27/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91211059
`Defendant
`Midsun Group, Inc.
`JOSEPH R CARVALKO
`LAW OFFICES OF JOSEPH R CARVALKO JR
`50 BEACH AVE
`MILFORD, CT 06460-8155
`UNITED STATES
`carvalko@sbcglobal.net;joecarvalkojr@co
`Other Motions/Papers
`Joseph Carvalko
`carvalko@sbcglobal.net
`/joseph carvalko/
`02/27/2014
`RESPONSETOMSJ02272014WITHEXHIBITS.pdf(1338965 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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` IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91211059
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`MARK: 570
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`________________________
`CSL Silicones, Inc.
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`Opposer,
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`v.
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`Midsun Group, Inc.
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`Applicant.
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`________________________ )
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`APPLICANT’S RESPONSE TO OPPOSER’S MOTION FOR SUMMARY JUDGMENT
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`NOW COMES, Applicant, Midsun Group, Inc. (“Midsun”), pursuant to 37 C.F.R. sec.
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`2.127 (a), and hereby files its response to Opposer’s motion for summary judgment, following
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`Interlocutory Attorney Elizabeth J. Winter’s suspension of proceedings pursuant to Trademark
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`Rule 2.127(d).
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`BACKGROUND
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`1.
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`Opposer filed a Motion for Summary Judgment, January 28, 2014 in accordance
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`with Fed. R. Civ. P. 56(c) (hereinafter, “MSJ”).
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`2.
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`Pursuant to the Trademark Trials and Appeals Board’s notice of opposition to the
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`parties, dated June 12, 2013, Discovery Opens 8/21/2013 and Discovery Closes 2/17/2014.
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`3. Midsun (variously herein referred to as “Applicant”) served First Request For
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`Production, First Interrogatories and First Request For Admissions on Opposer, CSL Silicones,
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`Inc. (hereafter, “CSL” or “Opposer”), January 15, 2014.
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`1
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`4. Midsun filed a Motion to Deny the MSJ on February 11, 2014 arguing that the
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`MSJ was premature and unanswerable as discovery answers and submissions proffered to CSL
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`remained outstanding as of February 11, 2014.
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`5.
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`On February 14, 2014, CSL filed its Answers and Objections to Midsun’s First
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`Request for Admissions and Objections to Midsun’s First Interrogatories and First request for
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`Production. See composite Exhibit A (Applicant’s discovery directed to Opposer and Opposer’s
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`responses and objections thereto)
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`4.
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`The Interlocutory Attorney suspended proceedings, pursuant to Trademark Rule
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`2.127(d), mailed February 17, 2014, with instructions that only motions relevant to the MSJ
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`would be considered.
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`5.
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`On February 17, 2014, Midsun requested that the Interlocutory Attorney provide
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`written clarification or rule as to whether its outstanding motion regarding the timeliness of
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`CSL’s MSJ is, as the term is applied to Trademark Rule 2.127(d), (a) relevant and granted; or (b)
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`if not relevant or if relevant and not granted, the due date for a reply to the MSJ. Midsun’s
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`motion for clarification and ruling remains outstanding at this time.
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`6.
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`It is Midsun’s position that (a) there remains genuine issues of material fact raised
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`both by CSL’s motion and pleadings, and in light of unanswered discovery and admissions; and
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`(b) in viewing the evidence presented by CSL in the light most favorable to Midsun as the non-
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`moving party, CSL’s motion must be denied.
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`ARGUMENT
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`Response and Incorporated Memorandum of Law
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`Summary judgment is appropriate only if “the pleadings, depositions, answer to
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`interrogatories, and admissions on file, together with the affidavits, if any, show that there is no
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`2
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`genuine issue of material fact and that the moving party is entitled to judgment as a matter of
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`law.”1 For purposes of reviewing a summary judgment motion, a factual dispute is “material”
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`only if it “might affect the outcome of the suit under the governing law.”2
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` A “genuine” issue of
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`fact exists where “there is sufficient evidence on each side, so that a rational trier of fact could
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`resolve the issue either way.”3 The moving party bears the initial burden of demonstrating the
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`absence of a genuine issue of material fact.4
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` To meet this standard, the moving party may simply
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`point out the absence of evidence supporting an essential element of the non-moving party’s
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`claim.5
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` The moving party bears the initial burden of demonstrating the absence of a genuine issue
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`of material fact.6
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` To meet this standard, the moving party may simply point out the absence of
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`evidence supporting an essential element of the non-moving party’s claim.7
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`Once the moving party accomplishes this task, the burden shifts to the non-moving party
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`to show that genuine issues remain for trial “as to those dispositive matters for which it carries
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`the burden of proof.”8
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` The non-moving party may not rest on mere allegations or denials in its
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`pleading in opposition to summary judgment, but “must set forth specific facts showing that
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`there is a genuine issue for trial.”9
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` While the court must consider the record in the light most
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`favorable to the non-moving party,10
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` the mere existence of some alleged factual dispute between
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`the parties will not defeat a properly supported motion for summary judgment.11 On a motion for
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`summary judgment, the “judge’s function is not. . . to weigh the evidence and determine the truth
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`1 Fed. R. Civ. P. 56(c).
`2 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
`3 3 Adler v. Wal-Mart Stores, Inc., 144 F.3d 664, 670 (10th Cir. 1998) (citing Anderson, 477
`U.S. at 248).
`4 Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).
`5 Adams v. Am. Guarantee & Liab. Ins. Co., 233 F.3d 1242, 1246 (10th Cir. 2000).
`6 Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).
`7 Adams v. Am. Guarantee & Liab. Ins. Co., 233 F.3d 1242, 1246 (10th Cir. 2000).
`8 Applied Genetics Int’l, Inc. v. First Affiliated Sec., Inc., 912 F.2d 1238, 1241 (10th Cir.1990).
`9 Anderson, 477 U.S. at 256.
`10 Doebele v. Sprint Corp., 157 F.Supp.2d 1191, 1195 (D. Kan. 2001). See also, Deepwater Invs., Ltd. v. Jackson
`Hole Ski Corp., 938 F.2d 1105, 1110 (10th Cir. 1991).
`11 Id.
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`3
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`of the matter but to determine whether there is a genuine issue for trial.”12
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` The standard for
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`summary judgment mirrors the standard for directed verdict. The court must decide “whether the
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`evidence presents a sufficient disagreement to require submission to a jury or whether it is so
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`one-sided that one party must prevail as a matter of law.”13
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` “If the [c]ourt concludes a fair-
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`minded jury could not return a verdict in favor of the nonmoving party based on the evidence
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`presented, it may enter a summary judgment.”14 As will be shown below, there are a significant
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`number of material facts in dispute, facts needed to determine the merits of the instant
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`opposition.
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`Opposer filed its opposition to registration of Applicant’s mark presumably on the
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`grounds that Opposer would be damaged by the registration of the Applicant’s mark. As grounds
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`for the opposition to the registration of the Applicant’s mark, Opposer alleged that the mark is
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`considered: Immoral or scandalous under 15 USC section 2(a); Deceptive 15 USC section 2(a);
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`Falsely suggests of a connection under 15 USC section 2(a); to create a likelihood of confusion
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`under 15 USC section 2(d), and finally that Opposer has priority, under 15 USC section 2(d). It
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`is Applicant’s position, that the alleged facts proffered and relied upon by Opposer, support
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`denial of their motion for summary judgment because they demonstrate that there remains
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`significant, and controverted issues of material fact. Furthermore, immaterial facts and factual
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`averments that are not properly supported by the record are highlighted to support the
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`Applicant’s contention that the Opposer seeks to confound the record. Opposer’s MSJ focuses
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`exclusively on its alleged priority, and presents no evidence that the Applicant’s mark is (a)
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`12 Anderson, 477 U.S. at 249.
`13 Id. at 251-52.
`14 Anderson v. City of Cleveland, 90 F. Supp. 2d 906, 907-08 (E.D. Tenn. 2000) (citing, Anderson v. Liberty Lobby,
`477 U.S. at 251-52.)
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`4
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`Immoral; (b) Deceptive; (c) Falsely suggests of a connection; or (d) creates a likelihood of
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`confusion.
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`Opposer asserts that it has priority over the mark and in essence, that priority alone is a
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`sufficient basis for granting their motion for summary judgment. Prior use in an opposition
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`proceeding is determined by the same rules used to determine prior use in court proceedings; that
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`is, the marshaling of all relevant facts on the issue of priority. In this instance, a Court may
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`reasonably conclude by considering the facts most favorable to Applicant, that Opposer’s claim
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`of priority must fail, and its MSJ, must be denied.
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`I.
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`Inconsistent Prior Use/Abandonment: Opposer apparently desires to make it
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`appear as if it is completely unknowledgeable of Applicant’s long-standing use of the mark
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`“570.” However, Opposer has tried unsuccessfully to prevent Applicant’s use on numerous
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`occasions, using the processes and procedures afforded by the U.S. Trademark Office. Most
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`importantly, Opposer fails to call attention to two facts that are dispositive of its claim to priority.
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`The first is that Applicant filed for the mark “Midsun 570” in 2000, which the Opposer
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`unsuccessfully tried to cancel. Second, Opposer attempted to register the mark “570” in 2000,
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`which application became abandoned in 2006. Although laches, acquiescence, estoppel,
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`abandonment may well serve as a defense available to Applicant’s in opposition proceedings,
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`these defenses as a general rule run from the date of an applicant’s trademark application and not
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`prior thereto. However, evidence of priority does not. Indeed, Opposer’s failure to successfully
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`protest use of the mark, covered by Applicant’s prior registration of substantially the same mark,
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`5
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`precludes it from making the same claim in these proceedings.15 The following brief recitation of
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`the facts are a matter of public record and Applicant requests that judicial notice be taken16:
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`a.
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`Midsun’s Prior Application Serial No. 75886356. On
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`January
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`3,
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`2000,
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`Applicant filed for registration of “Midsun 570,” which was unopposed and registration was
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`granted. See, Reg. #2,508,019, dated November 13, 2001. Opposer could have filed an
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`opposition, but failed to do so.
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`b.
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`CSL’s Prior Application Serial No. 76041955. As in the instant matter case,
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`once Midsun filed for registration for “Midsun 570”, CSL filed Application 76041955 five
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`months later, seeking registration of “570”. In Office Action dated November 1, 2000 directed
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`to CSL’s application, the examiner found that among other things, “there may be a likelihood of
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`confusion” between CSL’s claimed mark of “570” and “Midsun 570”. On May 17, 2006, the
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`U.S. Patent and Trademark Office held CSL’s application for registration “abandoned because
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`[CSL] failed to respond or filed a late response to an Office Action.”
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`c.
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` “Midsun 570” Reg. No. 2,508,019 issued November 13, 2001. On December
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`9, 2002, CSL filed a Petition for Cancellation of “Midsun 570” (amended petition filed April 3,
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`2003), alleging grounds substantially similar to the grounds alleged in the instant case, claiming
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`priority over “570.” CSL acknowledged in its petition that The U.S. Patent and Trademark
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`Office had refused its registration of “570” under Section 2(d) of the Trademark Act in view of
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`[Midsun’s] registration…”.
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` Following Midsun’s service of answers, special defenses,
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`admissions and motions to dismiss in the prior action, CSL withdrew its petition to cancel on
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`June 15, 2005. Thereafter, on June 28, 2006, the Trial Trademark and Appeals Board dismissed
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`CSL’s Petition to Cancel with Prejudice.
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`15 Haggar Co. v. Hugger Corp. 172 U.S.P.Q. 253, 254 (T.T.A.B. 1971) (Hugger for men’s and boys’ slacks and
`related goods found essentially the same as HAGGAR for men’s and boys’ slacks).
`16 Trial Trademark and Appeals Board, Cancellation Proceedings No. 92041557.
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`6
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`In full view of the foregoing facts, which are a matter of public record, on February 14,
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`2014, Opposer proffered admission/answers to the Applicant’s First Request for Admissions as
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`follows (see, composite Exhibit A):
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`REQUEST FOR ADMISSION No.1: Admit that CSL had actual knowledge that
`MIDSUN was using the Mark MIDSUN 570 as early as 2005.
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`RESPONSE: Opposer is unable to admit or deny this request, because the
`principle of Opposer as of 2005 has passed away. Opposer has made reasonable
`inquiry of its records and employees but has been unable to learn of applicant’s
`activities so as to truthfully admit or deny this request. Further, Opposer’s current
`principal, Faisal Huda is out of the country and unable to provide the information
`at this time.
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`REQUEST FOR ADMISSION No.2: Admit that CSL commenced a proceeding
`to cancel Midsun’s use of the Mark MIDSUN 570 in IC class 017 on December 9,
`2002.
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`RESPONSE: Denied.
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`REQUEST FOR ADMISSION No.3: Admit that CSL withdrew its petition to
`cancel MIDSUN’s use of the mark MIDSUN 570 in IC Cass 017 in June 15,
`2005.
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`RESPONSE: Denied.
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`REQUEST FOR ADMISSION No.4: Admit that CSL’s application for trademark
`protection for the Trademark 570 was abandoned as of June 14, 2006.
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`RESPONSE: It is admitted that application serial number 76/041,955
`became abandoned, without prejudice, on June 14, 2006…
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`Applicant contends that Opposer’s admissions are disingenuous in light of the public
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`record. However, in a light most favorable to Applicant, there is an admission drawn from
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`Opposer’s statement to Request for Admissions No. 1: “Opposer has made reasonable inquiry of
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`its records and employees but has been unable to learn of applicant’s activities so as to truthfully
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`admit or deny this request.” This statement supports Applicant’s defense that its long standing
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`7
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`use of the mark 570, dating back to 2001, has had no effect on the Opposer’s commercial
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`activities, such as creating a likelihood of confusion.
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`Therefore, where Applicant owned a prior registration, i.e., “MIDSUN 570” for
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`essentially the same mark on arguably the same goods, the Opposer cannot be damaged by the
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`issuance of the current registration application.17
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`II.
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`Opposer’s Contention for Priority is Unsupported. “A trademark is a word,
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`phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one
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`party from those of others.”18 Opposer’s proffered exhibits demonstrate that its long history of
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`usage is that of a product designation and not as a trademark. The examples are numerous:
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`a.
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`Affidavit of Faisal Huda. Opposer’s brief at page 2, states that: “… Opposer
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`markets and sells a successful high-voltage insulator coding… Under the mark 570 TM. See id.
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`At Ex.14.” The support for this assertion is confusing because “id” points the reader to the
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`affidavit of Faisal Huda, however, “Ex 14,” points the reader to Exhibit 14. In either case, the
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`designation 570 is mentioned. On closer inspection of Mr. Huda’s affidavit he states that “CSL
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`secured patent protection in the United States for this innovative product. CSL gave the product
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`the name 570…”.
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`In paragraph 4, Mr. Faisal repeatedly refers to 570 as a product. “…Midsun became an
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`official applicator and distributor of CSL’s 570 product…”
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`In paragraph 7, Mr. Faisal refers to CSL’s development of its “570 product long before
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`the date on which Midsun alleges its first use of the 570 mark.”
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`In paragraph 10, Mr. Faisal refers to a “current marketing brochure for CSL’s 570
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`product…”
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`17 See, Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 883 – 84 (C. C. P. A. 1969).
`18 See, USPTO website, “Trademark Basics”, http://www.uspto.gov/trademarks/basics/definitions.jsp. (last viewed
`2/26/14).
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`8
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`In paragraph 11, Mr. Faisal refers to the prior distributor agreement between CSL and
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`Midsun (Exhibit 8), stating that “the agreement refers to CSL’s 570, 579 and 587 products by
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`name….”. Notably absent from the agreement relied upon, is any discussion or claim to any
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`trademark by CSL, and fails to identify or claim any right to the use of “570” as a trademark.
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`The last page of the agreement lists “Product Prices” which are covered by the agreement.
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`Listed are CSL 570 WN, CSL 570 GN, CSL WT, CSL 570 GT, CSL 579 and CSL 587. No
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`“TM” designation appears after any of these terms. Other issues concerning the distribution
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`agreement are further addressed below.
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`In paragraph 12, Mr. Faisal he states that “Applicant purchased the 570 coating from
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`CSL during the course of the relationship….”.
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`In paragraph 13, they refer to a marketing report (which fails to designate 570 as a
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`trademark), and states that “…Midsun purchased almost exclusively the 570 product…”.
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`b.
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`Exhibits offered by CSL. The documents offered in support of their MSJ,
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`also fail to establish either priority of use or use of “570” as a trademark.
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`Exhibit 1 contains no reference to “570” anywhere, and generically refers to
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`product testing of some unidentified insulator sprays.
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`Exhibit 2 refers to a sample of “CSL 570 Sylkote”. No “TM” designation is
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`associated with “570”. SYLKOTE, was a registered trademark of K-Line Insulators
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`Limited, during the period 1996-2003.
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`Exhibit 3 refers to US Patent Application 5,326,804 in further support of its priority to
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`the mark “570”. The designation “570” appears in the written specification as follows:
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`“Samples coated with the composition according to the above example (CSL
`570), a composition available from Dow Corning presumed to be covered by U.S.
`Pat. No. 4,476,155 and two different compositions from Wacker Silicones one of
`which is commercially available in North America (Wacker Blue) and the other in
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`9
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`Europe (Wacker Grey) were prepared-- current with salt-fog cycles after one hour
`(in B) and after ten hours (in A) of salt-fog. (See U.S. pat. 5,326,804, Column 5,
`lines 42-50.)” . . .
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`Figure 2 to the Patent Application is a graph of CSL 570 product performance versus other
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`products by comparing “the coating of the presenting invention to prior art coating for the
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`progression of leakage current with salt-fog cycles after one hour (in B)….”. In both cases,
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`Opposer fails to designate “570” as a trademark. The U.S. Patent and Trademark Office, Manual
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`of Patent Examining Procedures (“MPEP”) clearly states that “the proprietary nature of the
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`marks should be respected and every effort made to prevent their use in any manner which might
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`adversely affect their validity.”
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`TRADEMARKS19
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`The relationship between a trademark and the product it identifies is sometimes
`indefinite, uncertain, and arbitrary. The formula or characteristics of the product
`may change from time to time and yet it may continue to be sold under the same
`trademark. . . Although the use of trademarks having definite meanings is
`permissible in patent applications, the proprietary nature of the marks should be
`respected. Trademarks should be identified by capitalizing them and placing
`them between quotation marks. Every effort should be made to prevent their use
`in any manner which might adversely affect their validity as trademarks. Form
`6.20 may be used.
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`¶ 6.20 Trademarks and Their Use
`The use of the trademark [1] has been noted in this application. It
`should be capitalized and placed between parentheses wherever it
`appears and be accompanied by
`the generic
`terminology.
`Although
`the use of
`trademarks
`is permissible
`in patent
`applications, the proprietary nature of the marks should be
`respected and every effort should be made to prevent their use in
`any manner which might adversely affect their validity as
`trademarks.
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`Examiner Note:
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`Capitalize each letter of the word in the bracket.
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`
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`19 Manual of Patent Examining Procedure, Fifth Edition, Sixteenth Revision (March 1994), section 608.01(v)
`Trademarks and Names Used in Trade [R-8] (MPEP).
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`10
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`The examiner should not permit the use of language such as "the
`product X (a descriptive name) commonly known as Y
`(trademark)" since such language does not bring out the fact that
`the latter is a trademark. Language such as "the product X (a
`descriptive name) sold under the trademark Y" is permissible. . .”
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`None of the MPEP drafting requirements that would have designated CSL 570 or 570 standing
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`alone were observed by the draftsperson in authoring the patent application. As such there is a
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`strong presumption that no trademark use was intended. Again, the term 570 appears to identify
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`a particular grade of coating in the Opposer’s industry, namely, coatings suitable for high voltage
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`insulator coatings. If so, the term 570 merely describes this characteristic of the applicant’s
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`goods.
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`
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`In Exhibits 5 and Exhibit 14 “570” appears as follows: “Si-COAT 570”. There are
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`multiple problems here. First, there is no TM designation after “570”; rather, “570” appears as a
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`grade designation, and does not function as a trademark to identify and distinguish applicant’s
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`goods from those of others and to indicate the source of applicant’s goods. Also, Opposer’s use
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`of “Si-COAT” with other three-digit numbers, further adds to the perception that 570 serves as a
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`grade designator in the context of the Opposer’s business.20 Based on the foregoing, the manner
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`in which the Opposer uses “570” fails to function as a trademark.
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`
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`Opposer’s Exhibit 6 shows unequivocally in the title to the document: Si-CoatTM 570
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`Applications, that they use “570” as a noun that defines a product or as a product designation.
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`The approved U.S. Patent and Trademark Office practice is that trademarks are to be used as
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`20 Roxy Chemical, Guide to CSL Silicone Products, http://www.roxychemical.com/CSLDataSheet/prodguide.pdf
`(viewed on Feb-26-2013, 08:08 EST). Wacker, World’s First at CIGRE 2012: WACKER Presents Solvent-free
`Silicone Coating for
`Insulations,http://www.wacker.com/cms/en/press_media/pressreleases/achive2012/pressinformation-2012-
`detail~1_37057.jsp (viewed on Feb-16-2013 14:19 GMT) (“WACKER, the Munich-based chemical group, will, for
`the first time, showcase a solvent-free silicone coating for electrical insulators at CIGRE 2012. The one-component
`emulsion called POWERSIL® 570 PLUS is applied by spraying and then cures to form a water-repellant silicone
`coating. The coating considerably increases the reliability and fail-safe characteristics of insulators for overhead
`T&D power lines.”).
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`11
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`adjectives that modify generic nouns. If Opposer’s use of “570” were a trademark, it should have
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`been designated as such.
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`
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`In Exhibit 8, a distribution contract between the Opposer and the Applicant, Opposer
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`calls attention to its former relationship with the Applicant as a product distributor. Under the
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`contract, the Opposer admits that the Applicant sold over a $1 million worth of products.
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`Throughout the contract reference is made to “CSL 570” as part of a product name, and not as a
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`trademark (note that “570” does not stand alone to serve as a modifier to a noun). The contract
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`states in part: “1. PRODUCTS. This agreement covers the coating products CSL 570, CSL 587
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`and CSL 579, hereafter referred to as the product.”
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`By its own admission, CSL 570 is a product and not a trademark. Opposer alleges (MSJ,
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`pg. 3) that “Opposer did not grant Applicant any rights in the 570 mark beyond the right to use it
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`to market and sell Opposer’s 570 product.” The Applicant agrees with Opposer, because “570”
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`standing alone is not mentioned in the contract.
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`Paragraph 7 of the distribution agreement states: “7. OBLIGATIONS CSL will permit
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`Midsun to advertise as the exclusive agent in the territories of the products,…” It is clear that the
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`Applicant would use the trademarks of the Opposer, if the Opposer were claiming any
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`trademarks - which it did not. And in further support of this point, the contract notably lacks a
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`quality assurance clause. If Opposer’s trademarks were intended to be used by the Applicant,
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`there must be a clause to require that the licensor controls the quality and that the licensee
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`undertakes certain obligations in respect thereto. Either no trademark existed (as Applicant
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`contends) or if intended, the Opposer failed to notify the Applicant that there were trademarks to
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`which it claimed ownership. An indispensable condition of a valid trademark license is that the
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`licensor control the nature and quality of the goods or services sold under the mark. Not having
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`such a clause strongly suggests that the Opposer did not intend to claim any trademarks. If there
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`were trademarks associated with the products, the penalty for failure to control quality is a harsh
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`one. The license is deemed a “naked” license and the licensor’s marks are deemed
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`“abandoned.”21 Again, the Opposer has by virtue of its own actions supported by its proffered
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`documents that it never intended to use “570” as a mark, and that if it did, it has caused the CSL
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`570 designation to lose its significance as an indication of origin.
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`The foregoing raises the point that the Opposer is making an assumption that the products
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`sold by Applicant, but not purchased from the Opposer, throughout the period 2001-present, are
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`the same as the Opposers. Opposer states: “Applicant had purchased other products from
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`Opposer, intended for a different use than the 570 product, and was selling it to customers with
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`the representation that it was, in fact, the 570 product (emphasis supplied) (MSJ, pg 3).” The
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`Opposer fails to point out that Applicant uses “570” as a brand for its product line, which
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`including custom formulations, not one product. More specifically, Midsun’s 570™ mark applies
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`to such goods and services as: (1) HVIC, a one part RTV silicone high voltage insulator coating,
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`(2) including custom coatings, and (3) to a turnkey live line application service that applies the
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`goods by Midsun OSHA trained certified applicators (see, Exhibit 2).22
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`To further support the difference in the products manufactured by Opposer and sold by
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`the Applicant under the brand 570, is that by its own admission Opposer’s asserts that U.S. Pat.
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`5,326,804 (‘804’) covers or that its claims purport to “read on” a product it refers to as the 570
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`product (MSJ, pg 2). If Applicant sold products during the years 2001 to the present, not
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`obtained from CSL, yet arguably infringing the ‘804 patent, then Opposer presumably would
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`21 Under the Lanham Act, a mark is deemed “abandoned,” inter alia, “[w]hen any course of conduct of the owner,
`including acts of omission as well as commission, causes the mark to become the generic name or otherwise to lose
`its significances a mark.” 15 U.S.C.A. section 1127(b).
`22 Exhibit 2 consists of pages 27 and 28 from Midsun’s 2013 Catalog, which is found at:
`http://www.midsungroup.com/pdf/midsuncatalog2013lowr2.pdf (Last visited, 2/20/2014).
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`have sought to enjoin Applicant on the grounds of patent infringement. The presumption is that
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`the products Opposer designated 570 and the products Applicant sold and branded as 570 were
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`not the same.
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`In Exhibit 11, letter from CSL dated January 4, 1999 to Midsun, it conveys new FOB
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`Product Pricing for CSL 570, CSL 579 and CSL 587. No “TM” designation appears after any of
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`these terms.
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`ii.
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`Notice of Opposition. Opposer alleges in its Notice of Opposition that it
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`has applied filed for registration October 26, 2012 for the mark 570 in standard character form
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`for: silicone based coating for application to electrical insulators, in Class 2. Applicant points out
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`that its registration for “570” is based in Class 17.
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`iii.
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`CSL’s Specimen Supplied in Support of its Application for “570”. In
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`support of its application, Opposer submitted a specimen described as “Label displaying the
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`mark.” As described, the specimen consists of a label for the goods. The applied-for mark
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`appears after one of the applicant’s other registered marks. Due to this placement (along with
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`the size and lack of stylization of the term), consumers would be likely to view the applied-for
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`mark as merely indicating the grade or model of the applicant’s goods, and not as an indicator of
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`source. The Examining Attorney issued its refusal to register on the grounds: (1) that the mark
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`identifies a grade designation, and (2) that the mark identifies a model designation.
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`Grade.
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`Registration is refused because the applied-for mark, as used on the specimen of
`record, merely identifies a grade designation; it does not also function as a trademark
`to identify and distinguish applicant’s goods from those of others and to indicate the
`source of applicant’s goods. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-
`1052, 1127; see Jones & Laughlin Steel Corp. v. Armco Steel Corp., 139 USPQ 132
`(TTAB 1963) (holding that the applied-for marks, 17-4 PH and 17-7 PH, served as
`grade designations to indicate the ratio of chromium and nickel in “precipitation
`hardening” stainless steel alloys); cf. In re Dana Corp., 12 USPQ2d 1748 (TTAB
`1989) (holding that the applied-for marks, comprised of various alphanumeric
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`designations such as 5-469X and 5-438X, served merely as model designations for
`vehicle parts); TMEP §§904.07(b), 1202.16(a), (c)(ii), (c)(iii)(B).23
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`iv.
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`Outstanding Discovery. Prior to the issuance of the suspension order entered on
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`February 17, 2014, Applicant timely served upon Opposer the discovery mentioned in paragraph 3,
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`page 1, above (see, Exhibit A). Such discovery was due to be provided to Applicant on or before
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`February 18, 2014. Many of Applicant’s request for production and related interrogatories sought to
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`determine the factual basis of nearly all of Opposer’s allegations as set forth in its Opposition. This
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`discovery is made even more relevant in light of the Faisal Huda Affidavit and the record evidence
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`which on which CSL relies. By way of example, and not limitation, Applicant sought information
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`evidencing historical use of “570”, and the dates, geographic scope of such advertisements. The
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`relevance of this information is in connection with Opposer’s Exhibit 7 to the MSJ. Opposer
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`attached an undated document referring to Si-COAT® 570™. It is interesting to note however, that
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`in its 2012 Application for the “570” mark, the original specimen submitted to the USPTO was to Si-
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`COAT® 570 – without the TM designation.
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`CONCLUSION AND PRAYER FOR RELIEF
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`Wherefore, based on the foregoing, Opposer has failed to prove that there exists no
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`genuine issue of material fact at this stage of the opposition proceedings, and for that reason the
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`motion must be denied.
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`Respectfully submitted,
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`__________________
`Joseph R. Carvalko, Esq.
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`23 See Opposer’s application no. 85764584 for mark “570” filed October 26, 2012; and Office Action dated
`February 27, 2013.
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`Attorney for Applicant
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`CERTIFICATE OF SERVICE
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`WE HEREBY CERTIFY that a copy of the forgoing was sent via Email this 27 day of
`February, 2014 to: Jack Clifford, Esq., Merchant & Gould, PC, 3200 IDS Center, 80 South 8th
`Street, Minneapolis, MN 55402-2215 USA, Attorney’s for CSL Silicones, Inc. Email:
`jclifford@merchantgould.com; aavery@merchantgould.com; dockmpls@merchantgould.com.
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`Law Offices of Joseph R. Carvalko
`50 Beach Avenue
`Milford, CT 06460-8155
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`__________________
`Joseph R. Carvalko, E