`
`
`
`THIS OPINION IS A
`PRECEDENT OF THE TTAB
`
`Mailed: March 4, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`University of Kentucky
`v.
`40-0, LLC
`_____
`
`Opposition No. 91224310
`_____
`
`Michael S. Hargis and Trevor T. Graves of King & Schickli, PLLC,
`for University of Kentucky.
`
`Brian P. McGraw of Middleton Reutlinger,
`for 40-0, LLC.
`
`
`Before Bergsman, Heasley, and Pologeorgis,
`Administrative Trademark Judges.
`
`_____
`
`
`Opinion by Heasley, Administrative Trademark Judge:
`
` Opposer, the University of Kentucky, opposes Applicant 40-0 LLC’s application to
`
`register the standard character mark 40-0 on the Principal Register for T-shirts and
`
`other sports-related apparel in International Class 25, primarily on the ground that
`
`“40-0” fails to function as a trademark.
`
`
`
`
`
`

`

`Opposition No. 91224310
`
`I. Background
`
`A. Factual Background
`
`
`
`
`In mid-October 2013, John Calipari, the head coach for the University of
`
`Kentucky’s men’s basketball team, publicly announced his desire “to coach a team
`
`that goes 40-0”—a perfect record in the National Collegiate Athletic Association
`
`Division I.1 His announcement, carried in the media, echoed the desire of University
`
`of Kentucky players and fans for an undefeated season.2
`
` That same month, David Son, an attorney and a self-proclaimed fan of Opposer’s
`
`men’s basketball team, formed Applicant, a Kentucky limited liability company, of
`
`which he is the sole member.3 Applicant began creating, promoting, and selling T-
`
`shirts bearing the legend “40-0” in October 2013, initially distributing and selling the
`
`T-shirts at University of Kentucky men’s basketball viewing parties, and then
`
`marketing and promoting them through its website, 40and0.com, its Facebook page,
`
`and through in-person promotions.4 The next month, November 2013, Mr. Son
`
`contacted the University of Kentucky athletics director, informed him that he had
`
`created the “40-0” T-shirts, and said he was interested in working with the
`
`University’s athletic department in promoting and marketing the T-shirts.5 This
`
`overture did not result in a business relationship, and the parties had no further
`
`
`1 Stipulated facts 4, 13, 57 TTABVUE 9, 11; Opposer’s brief, 63 TTABVUE 9.
`
`2 Stipulated fact 11, 57 TTABVUE 10.
`
`3 Stipulated facts 46-49, 57 TTABVUE 15.
`
`4 Stipulated facts 45, 52-59, 57 TTABVUE 14-16; Applicant’s brief, 67 TTABVUE 7.
`
`5 Stipulated facts 5-6, 57 TTABVUE 10; Applicant’s brief, 67 TTABVUE 8.
`
`- 2 -
`
`

`

`Opposition No. 91224310
`
`discussions until early 2015.6
`
`On February 13, 2015, Applicant applied to register the mark 40-0 (in standard
`
`characters) on the Principal Register for “clothing, namely, T-shirts, sport shirts,
`
`shorts, sweatshirts, mufflers, hats, jackets, athletic jerseys, sweatpants, cloth bibs,
`
`shoes, scarves, bandanas, wrist-bands and socks” in International Class 25.7 About a
`
`month later, Opposer’s counsel sent Applicant’s counsel a cease and desist letter
`
`claiming that Applicant’s use of the term “40-0” in combination with the University’s
`
`blue and white color scheme violated its rights under the Trademark Act.8 The letter
`
`asked Applicant to abandon the involved application, and stated, in pertinent part:
`
`Finally, with regard to your client’s stated threat to interfere with the
`University’s possible use of the term “40-0,” the University and approved
`entities have every right to reference the record of the University’s men’s
`basketball team on merchandise bearing University marks. In the event
`the University’s basketball team completes the 2014-15 season undefeated,
`which would necessarily result in a ninth national title, sales of
`merchandise bearing University marks and referencing their 40-0 record
`would be significant.9
`
`
` Applicant did not abandon the application, and this opposition proceeding
`
`followed.
`
`B. Procedural Background
`
`
`
`Opposer’s Notice of Opposition, as amended, claims in three counts:
`
`(1) Failure to Function— The applied-for mark, 40-0, refers solely to a record
`
`
`6 Applicant’s brief, 67 TTABVUE 9.
`
`7 Application Serial No. 86534269 was filed under Section 1(a) of the Trademark Act, 15
`U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and use in commerce
`since at least as early as October 24, 2013.
`
` 8
`
` Correspondence of March 27, 2015, 66 TTABVUE 64-67.
`
`9 Id. 66 TTABVUE 66.
`
`- 3 -
`
`

`

`Opposition No. 91224310
`
`of an NCAA basketball team that wins each and every game played in a single
`
`season. So the term does not function as a trademark to indicate the source of
`
`the clothing and to identify and distinguish Applicant’s clothing from others.
`
`15 U.S.C. §§ 1051-1052, 1127.10
`
`(2) Fraud—When Applicant filed the involved application, it had only used the
`
`applied-for 40-0 mark in commerce on T-shirts, not on the other goods
`
`identified in the use-based application. So Applicant committed fraud on the
`
`USPTO by knowingly and falsely asserting that it had used the applied-for
`
`mark in commerce on all of the goods identified in the use-based application.11
`
`(3) Nonuse—Registration should be denied for all goods identified in the involved
`
`application on which Applicant failed to use the applied-for mark as of the
`
`date it filed the use-based application.12 15 U.S.C. § 1051(a).
`
`Applicant’s Answer denied the salient claims in the Notice of Opposition, although
`
`it admitted that “it sold t-shirts under the applied-for-mark as of the filing of the
`
`application and that it did not and does not sell sport shirts, sweatshirts, jackets,
`
`socks, shorts, mufflers, athletic jerseys, sweatpants, cloth bibs, shoes, scarves,
`
`bandanas, and wrist bands as of the filing date of the ’269 Application.”13
`
`
`10 First amended notice of opposition ¶¶ 36-37, 18 TTABVUE 13-14.
`
`11 Id. at ¶¶ 40-45, 18 TTABVUE 14-15.
`
`12 Id. at ¶¶ 46-48, 18 TTABVUE 15.
`
`13 Answer to first amended notice of opposition, ¶ 40, 22 TTABVUE 7. Applicant also asserted
`the affirmative defenses of unclean hands, laches, estoppel and/or acquiescence, 22
`TTABVUE 9, but did not pursue them at trial or in its final brief, so they are waived or
`forfeited. See TPI Holdings, Inc. v. TrailerTrader.com LLC, 126 USPQ2d 1409, 1413 n.28
`(TTAB 2018) (“Respondent also asserted ‘estoppel, acquiescence and waiver,’ but does not
`argue any of these in its brief. They are therefore waived.”).
`
`- 4 -
`
`

`

`Opposition No. 91224310
`
`Applicant later moved to amend the application to delete from its identification of
`
`goods all clothing items aside from T-shirts. Applicant made its motion without
`
`Opposer’s consent, and in a concurrently filed motion for summary judgment, stated
`
`that if the motion to amend were granted it would accept “judgment against it with
`
`respect to only those goods that it has proposed to delete.” (emphasis in original).14
`
`Opposer then filed a response and a cross-motion for summary judgment as to all
`
`three counts in the amended notice of opposition. Applicant disputed Opposer’s
`
`claims, and averred in particular that “[b]ecause the 40-0 Mark was used in
`
`connection with at least one of the goods listed in the application at the time of filing
`
`the application, the ’269 Application cannot be found void ab initio…. Applicant began
`
`selling T-shirts under the mark in October, 2013 and continued to sell and offer for
`
`sale those 40-0 marked T-shirts since that time. … As a result, there is no basis for a
`
`non-use claim with respect to Applicant’s T-shirts.”15
`
`Opposer responded, in pertinent part:
`
`Given Applicant’s failure to (1) initiate use of the alleged mark on any of
`the listed goods except T-shirts prior to filing its use-based application or
`(2) amend the ’269 Application prior to commencement of the present
`proceeding, judgment against Applicant as to those goods would seem
`appropriate.
`
`With regard to Applicant’s motion for judgment with regard to T-shirts,
`Opposer concedes that the evidence of record indicates that Applicant
`
`
`14 Applicant’s motion for leave to amend application without consent, 32 TTABVUE;
`Applicant’s motion for summary judgment, 33 TTABVUE 14.
`
`15 Applicant’s motion for summary judgment, 33 TTABVUE 15. See also Applicant’s reply in
`support of motion for summary judgment. 37 TTABVUE.
`
`- 5 -
`
`

`

`Opposition No. 91224310
`
`distributed T-shirts with the phrase 40-0 printed across the front thereof
`prior to the filing date of the ’269 Application.16
`
`
` Opposer also pressed its claims of fraud and failure to function.
`
` The Board denied both parties’ motions for summary judgment, and deferred
`
`ruling on Applicant’s motion to delete goods from its identification until final
`
`decision.17
`
` The parties then stipulated to Accelerated Case Resolution (“ACR”), an expedited
`
`means of resolving inter partes cases. See generally TRADEMARK TRIAL AND APPEAL
`
`BOARD MANUAL OF PROCEDURE (TBMP) §§ 528.05(a)(2), 702.04 (2020).18 The Board
`
`noted and approved the parties’ ACR stipulation, under which the Board may resolve
`
`and decide any genuine dispute of material fact it may find to exist based on the
`
`record, and render a final decision based on the record and briefs.19
`
`II. The Record
`
` The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
`
`37 C.F.R. § 2.122(b), the file of the subject application. The parties stipulated to 72
`
`facts, and to the admissibility of various categories of evidence that may be presented
`
`at trial, including deposition testimony, trial declarations, all documents produced
`
`during discovery, all exhibits to the parties’ summary judgment briefing, the affidavit
`
`
`16 Opposer’s response to motion for summary judgment and cross-motion for summary
`judgment. 35 TTABVUE. See also Opposer’s reply in support of its cross-motion for summary
`judgment. 38 TTABVUE.
`
`17 Order, 39 TTABVUE.
`
`18 ACR stipulation, 57 TTABVUE 19. Under the summary judgment ACR format, the parties
`agreed to file their joint stipulated facts at least one month before the deadline for Opposer’s
`main brief. Each party also agreed to file any additional evidence five days before filing its
`brief, so that the brief could cite to the evidence by TTABVUE docket and page numbers.
`
`19 Order, 58 TTABVUE 2.
`
`- 6 -
`
`

`

`Opposition No. 91224310
`
`of David Son, the sole member of Applicant, submitted in support of Applicant’s cross-
`
`motion for summary judgment, Applicant’s website and posts on Facebook and
`
`Twitter, and all documents identified and exchanged by the parties prior to
`
`submitting the stipulation to the Board.20 Stipulations of this sort do much to
`
`facilitate the just, speedy, and inexpensive determination of the proceeding, see Fed.
`
`R. Civ. P. 1, and the parties are commended for their cooperation.
`
`
`
`In addition, in accordance with the approved stipulation, the parties introduced
`
`the following evidence prior to their respective briefs:
`
`A. Opposer’s Evidence:21 First notice of reliance, identifying Opposer’s
`Registration No. 2843073 for BIG BLUE NATION for team loyalty T-shirts,
`polo shirts, jackets and sweat shirts in Class 25, with Trademark Status and
`Document Retrieval (TSDR) database printout showing status and title;22
`Second notice of reliance, containing the discovery deposition testimony of
`David Son, sole member of Applicant, and exhibits, and the discovery
`deposition testimony of Jason Schlafer, Rule 30(b)(6) witness for Opposer, and
`exhibits;23 Third notice of reliance, containing documents produced during
`discovery, exhibits to the parties’ cross-motions for summary judgment,
`pleadings, all posts on Applicant’s Facebook and Twitter pages, Applicant’s
`website screenshots, and all documents, including emails between Opposer
`and Applicant, identified and exchanged by the parties prior to the submission
`of their stipulation; 24 Fourth notice of reliance, containing newspaper article
`exhibit to Opposer’s response to summary judgment and cross-motion for
`summary judgment.25
`
`B. Applicant’s Evidence: First notice of reliance, containing the discovery
`deposition testimony of David Son as Applicant’s Rule 30(b)(6) witness, the
`discovery deposition testimony of Jason Schafler, Opposer’s Rule 30(b)(6)
`witness;26 Second notice of reliance, containing documents produced during
`
`20 Stipulation, 57 TTABVUE 9-18.
`
`21 Summarized at 59 TTABVUE.
`
`22 60 TTABVUE.
`
`23 61 TTABVUE.
`
`24 62 TTABVUE.
`
`25 69 TTABVUE.
`
`26 65 TTABVUE.
`
`- 7 -
`
`

`

`Opposition No. 91224310
`
`discovery, exhibits to the parties’ cross-motions for summary judgment,
`pleadings, Applicant’s Facebook page, Applicant’s website, and all documents
`identified and exchanged prior to the submission of the parties’ stipulation.
`
`
`III. Entitlement to a Statutory Cause of Action
`
`
`
` Applicant challenges Opposer’s standing to bring and maintain this opposition
`
`proceeding. We now refer to standing as entitlement to a statutory cause of action.
`
`Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *5 n. 34 (TTAB 2020); Major
`
`League Soccer, LLC v. F.C. Int’l Milano S.p.A., 2020 USPQ2d 11488, at *5 n. 18
`
`(TTAB 2020). Despite the change in nomenclature, our prior decisions and those of
`
`the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) interpreting
`
`Sections 13 and 14 remain equally applicable. Corcamore, LLC v. SFM, LLC, 978
`
`F.3d 1298, 2020 USPQ2d 11277, at *4 (Fed. Cir. 2020). As the Court of Appeals for
`
`the Federal Circuit has observed, there is “no meaningful, substantive difference
`
`between the analytical frameworks” in the prior “standing” case law, under which an
`
`opposer must show a real interest in the proceeding and a reasonable basis for its
`
`belief in damage, see Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
`
`111 USPQ2d 1058, 1062 (Fed. Cir. 2014), and the current “entitlement” case law,
`
`under which an opposer must show an interest falling within the zone of interests
`
`protected by statute and damage proximately caused by registration. Corcamore v.
`
`SFM, 2020 USPQ2d 11277, at *4. Thus, “a party that demonstrates a real interest in
`
`[opposing registration of] … a trademark under [Trademark Act Section 13, 15
`
`U.S.C.] § 106[3] has demonstrated an interest falling within the zone of interests
`
`protected by [the Trademark Act]. … Similarly, a party that demonstrates a
`
`reasonable belief of damage by the registration of a trademark demonstrates
`
`- 8 -
`
`

`

`Opposition No. 91224310
`
`proximate causation within the context of § 106[3].” Id. at *7.
`
` The starting point for determining a party’s entitlement to oppose is Section 13 of
`
`the Trademark Act, providing that “[a]ny person who believes that he would be
`
`damaged by the registration of a mark upon the Principal Register” may file an
`
`opposition. See 15 U.S.C. § 1063.
`
` Opposer believes it would be damaged by Applicant’s registration of “40-0” for T-
`
`shirts on the Principal Register because the registration would impair Opposer’s right
`
`to use the term on its team loyalty T-shirts—indicating an undefeated basketball
`
`season or the team’s aspiration to achieve one.27
`
` Applicant argues that Opposer has not demonstrated a real interest in using
`
`“40-0” or a reasonable belief that it would be damaged by Applicant’s registration of
`
`the term. First, it argues, Opposer has no proprietary or other interest in “40-0”:
`
`Opposer admittedly does not own trademark rights to the term 40-0. …
`[W]hat is lacking here is any real evidence that Opposer has ever used the
`term 40-0, or that it would otherwise ever use the term 40-0 [ex]cept in the
`unlikely scenario that its men’s or women’s basketball team were to
`complete an undefeated season with a perfect record of 40-0.28
`
`In fact, it is stipulated that:
`
`
`
`
`Men’s collegiate basketball governed by the National Collegiate Athletic
`Association (“NCAA”) has been in existence as a sport since 1939. Since
`that time, not a single team has finished the season with a final record of
`40 wins and 0 losses.29
`
`
` Second, Applicant argues, the parties are not competitors:
`
`Opposer is an institution of higher learning. The Applicant is a single
`member LLC that prints and sells t-shirts through a website. Practically
`
`
`27 Opposer’s brief, 63 TTABVUE 8-11, Opposer’s reply brief, 70 TTABVUE 3-6.
`
`28 Applicant’s brief, 67 TTABVUE 12.
`
`29 Stipulated fact 67, 57 TTABVUE 17.
`
`- 9 -
`
`

`

`Opposition No. 91224310
`
`speaking these parties are not competitors in any real sense. Not even
`remotely. Opposer does not manufacture and sell apparel. All it does is
`license its intellectual property rights to third parties who ultimately sell
`ancillary products featuring that intellectual property.30
`
`
` Third, it argues, even if Opposer used “40-0” on its T-shirts, it need not fear an
`
`infringement action from Applicant. During his deposition, Mr. Son testified:
`
`A. Well, if UK has its logo on it, I would imagine my first — my first thought
`would be the University of Kentucky. … Because I didn’t make it. And
`then I would be thinking that they’re using my mark. … And that I would
`think that we would have to have a conversation.31
`
`In its brief, however, Applicant downplays this testimony, stating:
`
`
`
`All this statement shows is that Applicant’s owner would be thinking he
`owns rights to the term “40-0”, nothing more.
`…
`Opposer’s fear of facing an infringement suit is belied by the fact that two
`women’s basketball teams finished with a record of 40-0, used the term
`“40-0” on t-shirts to describe the record of its team … and Applicant never
`once objected to their use.32
`
`
` We find Applicant’s arguments unavailing, and that Opposer is entitled to bring
`
`and maintain this opposition proceeding under the Trademark Act. Even though this
`
`is a threshold issue, Int’l Dairy Foods Ass’n v. Interprofession du Gruyère and
`
`Syndicat Interprofessionnel du Gruyère, 2020 USPQ2d 10892, at *9 (TTAB 2020), it
`
`is “a low threshold, intended only to ensure that the plaintiff has a real interest in
`
`the matter, and is not a mere intermeddler.” Syngenta Crop Protection Inc. v. Bio-
`
`Chek LLC, 90 USPQ2d 1112, 1117 n.8 (TTAB 2009) (citing Ritchie v. Simpson, 170
`
`F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)).
`
`
`30 Applicant’s brief, 67 TTABVUE 11-12.
`
`31 Son deposition, 96:5-18 (questions omitted), 61 TTABVUE 28.
`
`32 Applicant’s brief, 67 TTABVUE 13-14.
`
`- 10 -
`
`

`

`Opposition No. 91224310
`
`Opposer does not have to assert a proprietary interest in “40-0.” “An absence of
`
`proprietary rights does not in itself negate an interest in the proceeding or a
`
`reasonable belief of damage.” Australian Therapeutic Supplies Pty. Ltd. v. Naked TM,
`
`LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *1 (Fed. Cir. 2020). Opposer may prove
`
`its entitlement by establishing that it has a present or prospective interest in using
`
`the term in its business. Cf. De Walt, Inc. v. Magna Power Tool Corp., 289 F.2d 656,
`
`129 USPQ 275, 280 (CCPA 1961) (Standing “will be presumed or inferred when . . .
`
`the opposer or petitioner is one who has a sufficient interest in using the descriptive
`
`term in its business.”).
`
`
`
` Here, it is stipulated that “The University of Kentucky sells and licenses clothing
`
`and apparel.”33 It even owns a Principal Register registration for the mark BIG BLUE
`
`NATION for use on “team loyalty T-shirts, polo shirts, jackets and sweat shirts” in
`
`International Class 25.34 Its executive associate athletics director, Jason Schlafer,
`
`testified as its Rule 30(b)(6) witness about its interest in using “40-0”:
`
`[T]he University of Kentucky, should be able to market products bearing
`its trademarks and other indicia indicating the University as its source.
`40-0 is the goal for a perfect … men’s or women’s basketball season…. Prior
`to each basketball season, that is the goal of the men’s basketball program
`at Kentucky, and we have come close to achieving that goal historically and
`believe that we should be permitted to use that phrase as part of a licensed
`product.35
`
` Opposer had, for example, licensed T-shirts bearing its UK mark displaying
`
`successful 16-0, 31-0, and 34-0 seasons:
`
`
`33 Stipulated fact 2, 57 TTABVUE 9.
`
`34 Reg. No. 2843073, 60 TTABVUE 5.
`
`35 Schlafer dep. 9:16-10:11, 61 TTABVUE 74-75.
`
`- 11 -
`
`

`

`Opposition No. 91224310
`
`
`
`36
`
` The witness was asked:
`
`
` Q. Going back to what we marked as Exhibit 5. It looks like there are
`three shirts depicted in this exhibit. Do you know if these three shirts were
`offered for sale by the University?
` A. These all appear to be products that were sold at retail.37
`
`
`
`Q. Can you imagine the University offering for sale products with the term
`“40-0” in a situation other than if the University men’s or women’s
`basketball team went 40 and 0?
`
`
`36 61 TTABVUE 107. Stipulated fact 43: “The University of Kentucky commemorated its
`undefeated Southeastern Conference record of 16-0 and noted its accomplishments of
`completing its undefeated 2014-15 pre-tournament record of 31-0 and its post-SEC
`tournament record of 34-0.” 57 TTABVUE 14.
`
`37 Schlafer dep. 41:11-16, 61 TTABVUE 95.
`
`- 12 -
`
`

`

`Opposition No. 91224310
`
` …
`A. Well, similar to the garment that we discussed previously, the — there’s
`an aspirational use, as well as a historic one….38
`However, I don’t think that is an unreasonable goal considering the
`following season they finished 38-1.39
`
` The parties stipulate that “To the extent there has been any use of the term ‘40-0’
`
`by Opposer, such use was aspirational in nature pointing to the event either the men’s
`
`or women’s basketball teams at the University of Kentucky were in a position to
`
`achieve a record of 40 wins and 0 losses.”40 Opposer’s witness confirms that “[t]here
`
`have been T-shirts created by licensees indicating the University’s quest for the
`
`perfect season bearing registered trademarks and the goal of the perfect record.”41
`
`This quest is not unattainable; two women’s basketball teams, Baylor and University
`
`of Connecticut, have had perfect 40-0 seasons, and both had “40 and 0” perfect record
`
`T-shirts.42
`
` Accordingly, we find Opposer has a present or prospective interest in using the
`
`term “40-0” on T-shirts and other apparel to indicate its aspiration or achievement of
`
`an undefeated season, either in men’s or women’s basketball.
`
`
`
`It is true that Opposer licenses others to produce and sell team loyalty apparel
`
`bearing its marks. But the licensees’ use of its marks inures to the benefit of Opposer.
`
`See Sock It To Me, Inc. v. Aiping Fan, 2020 USPQ2d 10611, at *3-4 (TTAB 2020). And
`
`Opposer clearly has an interest in the informational matter it places on fan loyalty
`
`
`38 Id. at 37:18-38:1, 61 TTABVUE 93-94.
`
`39 Id. at. 47:8-10, 61 TTABVUE 99.
`
`40 Stipulated fact 68, 57 TTABVUE 17.
`
`41 Schlafer dep. 22:21-23:4, 61 TTABVUE 80-81.
`
`42 Stipulated facts 69, 71, 57 TTABVUE 17-18; Schlafer dep. 29:2-3, 61 TTABVUE 87.
`- 13 -
`
`

`

`Opposition No. 91224310
`
`apparel bearing its trademarks. For example, the following image shows University
`
`of Kentucky basketball players wearing T-shirts that bear its trademarks,
`
`commemorate its undefeated 31-0 regular season record, and add, notably, “NOT
`
`DONE”:
`
`
`
`43
`
` So even though Opposer is an institution of higher learning, it has a direct
`
`commercial interest in licensing and selling apparel products. See Cunningham v.
`
`Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) cited in Int’l
`
`Dairy Foods Ass’n v. Interprofession du Gruyère, 2020 USPQ2d 10892, at *9 (belief in
`
`likely damage can be shown by establishing a direct commercial interest). Regardless
`
`of whether Opposer and Applicant are direct competitors, Opposer has a reasonable
`
`
`43 March 7, 2015 Bleacher Report article, 69 TTABVUE 6.
`
`- 14 -
`
`

`

`Opposition No. 91224310
`
`basis for its belief in damage resulting from Applicant’s registration of “40-0”, and a
`
`real interest in this case. Thus, Opposer has shown that it has an interest in
`
`preventing registration within the zone of interests protected by the statute and that
`
`it has a reasonable basis for its belief that registration would proximately cause
`
`damage to that interest.
`
` Applicant makes much of its forbearance from instituting trademark infringement
`
`actions, emphasizing that it has not objected to Baylor University’s or the University
`
`of Connecticut’s use of “40-0” to describe their women’s basketball team records.44
`
`That forbearance, however, misses the point, as registration would accord Applicant
`
`rights it does not presently have, as explained more fully below.
`
` Granting Applicant a Principal Register registration for “40-0” would accord it the
`
`presumptions afforded under Section 7(b) of the Trademark Act. That section
`
`provides that registration on the Principal Register is prima facie evidence of the
`
`registrant’s “exclusive right to use the mark in commerce on or in connection with the
`
`goods….” 15 U.S.C. § 1057(b). “To put [Applicant] in possession of a right it does not
`
`have, which it might at any time decide to assert…, would, in our opinion, be
`
`damaging… since it could at least be used to harass [Opposer] into ceasing use of [the
`
`term] on pain of defending a lawsuit.” De Walt v. Magna Power Tool, 129 USPQ at
`
`280.
`
` The Board echoed this language in descriptiveness cases:
`
`The rationale behind these cases involving damage from the registration
`of merely descriptive terms lies in the presumptions afforded a registration
`under Section 7(b) of the Statute. That section provides that registration
`on the Principal Register is prima facie evidence of the registrant's
`
`44 Stipulated facts 70, 72; Applicant’s brief, 67 TTABVUE 13-14.
`
`- 15 -
`
`

`

`Opposition No. 91224310
`
`“exclusive right to use the mark in commerce in connection with the goods”.
`Implicit in the “exclusive right” to use is the right “to exclude” others. Thus,
`a registration of a merely descriptive term would be inimical to the right
`of others in the trade engaged in the sale of the same or similar goods to
`use the notation as a word of art in describing their goods and would bestow
`upon the applicant a competitive advantage to the extent that purchasers
`may be deceived or misled into believing goods so marketed are the only
`ones of that type available in the marketplace. This constitutes damage
`within the intent and meaning of Section 13.
`
`Southwire Co. v. Kaiser Aluminum & Chem. Corp., 196 USPQ 566, 572-73 (TTAB
`
`1977).
`
` So too here. Applicant’s assumption of the exclusive right to use “40-0” to the
`
`exclusion of others would, despite its avowed forbearance, constitute damage within
`
`the meaning of Section 13. Opposer has demonstrated, by a preponderance of the
`
`evidence, that it is entitled to oppose the registration of Applicant’s mark.
`
`IV. Motion to Amend Application
`
` As noted, Opposer’s amended notice of opposition claims that when Applicant filed
`
`the subject application for 40-0 based on actual use under Section 1(a), it had used
`
`the applied-for mark only on T-shirts, not on the other clothing items identified in the
`
`application. Opposer claims that registration should be denied for all the goods on
`
`which Applicant failed to use the applied-for mark in commerce when it filed the use-
`
`based application. 45 Applicant admits that it had only used 40-0 on T-shirts as of its
`
`filing date.46
`
`
`
`“In a use-based application filed under Trademark Act Section 1(a), 15 U.S.C.
`
`1051(a), registration is allowed only as to goods upon which the mark is being used
`
`
`45 First amended notice of opposition ¶¶ 40, 48, 18 TTABVUE 14-15.
`
`46 Answer to first amended notice of opposition, ¶ 40, 22 TTABVUE 7.
`
`- 16 -
`
`

`

`Opposition No. 91224310
`
`as of the application filing date, and an opposition will be sustained as to any of the
`
`identified goods as to which it is shown that no use has been made as of the
`
`application filing date.” Barbara’s Bakery, Inc. v. Landesman, 82 USPQ2d 1283, 1289
`
`(TTAB 2007). “In the absence of a fraud claim, … as long as the mark was used on
`
`some of the identified goods as of the filing of the application, the application is not
`
`void in its entirety.” Grand Canyon W. Ranch, LLC, v. Hualapai Tribe, 78 USPQ2d
`
`1696, 1697 (TTAB 2006) (opposer had not pleaded fraud, and did not seek summary
`
`judgment on that basis). The application may be amended to delete those goods on
`
`which no use was made. Id. at 1698.
`
` Applicant accordingly moved to amend its application to delete all goods except T-
`
`shirts from its identification.47 It further agreed to accept judgment against it as to
`
`those deleted goods.48 Applicant notes that this is the same relief Opposer could have
`
`obtained had it prevailed on its claim of non-use.49
`
` Opposer responds that “[g]iven Applicant’s failure to (1) initiate use of the alleged
`
`mark on any of the listed goods except t-shirts prior to filing its use-based application
`
`or (2) amend the ’269 Application prior to commencement of the present proceeding,
`
`Applicant’s requested judgment against itself as to those goods should be entered
`
`with prejudice.”50
`
`
`47 32 TTABVUE 4.
`
`48 33 TTABVUE 14.
`
`49 32 TTABVUE 4.
`
`50 Opposer’s brief, 63 TTABVUE 11. See also Opposer’s response to motion for summary
`judgment, 35 TTABVUE 9-10.
`
`- 17 -
`
`

`

`Opposition No. 91224310
`
` The amendment of an application that is the subject of an opposition proceeding
`
`is governed by Trademark Rule 2.133(a), 37 C.F.R. § 2.133(a):
`
`An application subject to an opposition may not be amended in substance
`nor may a registration subject to a cancellation be amended or disclaimed
`in part, except with the consent of the other party or parties and the
`approval of the Trademark Trial and Appeal Board, or upon motion
`granted by the Board.
`
` Under its terms, the Board may, at its discretion, grant the motion even if the
`
`opposer does not consent. City of London Distillery, Ltd. v. Hayman Grp. Ltd., 2020
`
`USPQ2d 11487, at *12 (TTAB 2020) (citing Drive Trademark Holdings LLC v. Inofin,
`
`83 USPQ2d 1433, 1435 (TTAB 2007)). See TBMP §§ 514.01, 514.03. As the Board has
`
`observed:
`
`An acceptable amendment to the identification of goods or services may be
`permitted, even where an opposer objects, if: 1) the proposed amendment
`serves to limit the broader identification of goods or services; 2) applicant
`consents to the entry of judgment with respect to the broader identification
`of goods or services present at publication; 3) the specimens of record support
`the goods or services as amended; and 4) if the applicant wishes to avoid the
`possibility of a res judicata effect by the entry of judgment on the original
`identification, the applicant must make a prima facie showing that the
`proposed amendment serves to change the nature and character of the goods
`or services or restrict their channels of trade and customers so as to introduce
`a substantially different issue for trial.
`
`Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914, at *5
`
`(TTAB 2020).
`
` Applicant acknowledges these four factors.51 We find that the amendment limits
`
`the broader identification of goods, and that the specimens display Applicant’s use of
`
`40-0 on the remaining identified goods: T-shirts. The amendment also presents a
`
`
`51 32 TTABVUE 3.
`
`- 18 -
`
`

`

`Opposition No. 91224310
`
`substantially different issue for trial solely as to Opposer’s third claim, as it resolves
`
`the issue of nonuse.52 Applicant’s motion to amend is granted, and judgment is
`
`entered against Applicant as to the deleted goods on Opposer’s nonuse claim. See
`
`Grand Canyon W. Ranch v. Hualapai Tribe, 78 USPQ2d at 1697-98.
`
`V. Fraud
`
` Even though Applicant’s