Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1063689
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`Filing date:
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`06/23/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91251601
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`Party
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`Correspondence
`Address
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`Defendant
`HSP EPI Acquisition, LLC
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`GAIL M O BRIEN
`HSP EPI ACQUISITION LLC DBA ENTERTAINMENT
`1401 CROOKS ROAD, SUITE 150
`TROY, MI 48084
`UNITED STATES
`gobrien@entertainment.com
`248-404-1048
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`Submission
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`Motion for Summary Judgment
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`Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule
`2.120(a); OR the motion for summary judgment is based on claim or issue pre-
`clusion, or lack of jurisdiction.
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`The deadline for pretrial disclosures for the first testimony period as originally set
`or reset: 11/14/2020
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Gail OBrien
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`gobrien@entertainment.com
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`/Gail OBrien/
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`06/23/2020
`
`HSP mot sum jdg 6232020.pdf(392600 bytes )
`MSJ exhibits A-C.pdf(3391910 bytes )
`MSJ Exhibits D - H.pdf(4348207 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE
`THE TRADEMARK TRIAL AND APPEAL BOARD
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`AMERICAN AIRLINES, INC.,
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`Opposer,
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`v.
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`HSP EPI ACQUISITION, LLC,
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`Applicant.
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`Opposition No. 91251601
`U.S. Serial No. 88/417,283
`U.S. Serial No. 88/417,301
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`APPLICANT’S MOTION AND BRIEF
` IN SUPPORT OF SUMMARY JUDGMENT
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`Pursuant to Fed.R.Civ.P. 56(a), 37 CFR §2.127, and TBMP §528, Applicant, HSP EPI
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`ACQUISITION, LLC (aka Entertainment), moves for summary judgment on Opposer American
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`Airline’s Notice of Consolidated Notice of Opposition (“Opposition”) against the additional
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`Dining Advantage Marks (U.S. Serial No. 88/417,283 and U.S. Serial No. 88/417,301) (“New
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`DA Marks”) applied for by Entertainment (“Entertainment” as used herein, refers to both the
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`Applicant and prior successors of the Entertainment® business) FOR THE FOLLOWING
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`REASONS:
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`1.
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`Entertainment is entitled to judgment as a matter of law because there is no genuine issue
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`of material fact that:
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`a.
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`In 1990, Entertainment first obtained registration for the trademark Dining
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`Advantage® U.S. Registration Number 1,608,460 in class 035 - Promoting the goods and
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`services of others through the distribution of discount cards and coupons for restaurants,
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`and in 2012, Entertainment also obtained trademark DININGADVANTAGE.COM®
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`U.S. Registration Number 4,286,631 in the same class 035 and added class 16, but
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`1
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`

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`described the goods and services much broader (collectively “Prior DA Marks”). The
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`New DA Marks use the same description of goods and services. Since 1989, the Prior DA
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`Marks and Opposer marks have been concurrently used. Thus, Opposer’s allegations of
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`damages relative to the New DA Marks have a no reasonable basis in fact and Opposer
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`lacks standing to pursue this Opposition because:
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`i. the 30 year history of the Prior DA Marks establishes that the New DA Marks are
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`not confusingly similar to Opposer's AADVANTAGE Marks, nor are they likely
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`to cause confusion as to the source or origin of Entertainment's goods and services
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`and are not likely to mislead consumers to believe that Opposer is the source or
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`origin of the Dining Advantage® products, and
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`ii. because the New DA Marks’ classes, goods and services are the same as the Prior
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`DA Marks.
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`b.
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`Opposer’s Opposition claiming likelihood of confusion is barred by laches
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`because Opposer knew of Entertainment’s Prior Marks and did not oppose them.
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`c.
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`Opposer’s Opposition is barred by unclean hands because: i) Opposer wrongfully
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`breached its covenant with Entertainment not to file for registration of Aadvantage
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`Dining (later withdrawn by Opposer), ii) it filed a petition in 2000 to cancel
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`Entertainment’s Dining Advantage® mark, later withdrawn by Opposer with prejudice,
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`iii) it did not oppose the application for diningadvantage.com, and iv) it intentionally
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`omitted pertinent information in its Opposition.
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`Applicant submits a supporting affidavit filed simultaneously herewith from Mate Letica;
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`Senior Vice President of Technology for Entertainment (MSJ Exhibit “A”). Also filed
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`simultaneously with this Motion as MSJ Exhibits “B” – “D” are copies of the following: (1)
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`2
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`Applicant’s Responses and Objections to Defendant’s (sic) [Opposer’s] First Request for
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`Documents and First Set of Interrogatories (“MSJ Exhibit B”); and (2) Applicant’s First Set of
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`Requests for Admissions to American Airlines (“RA”) that have not been responded to (“MSJ
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`Exhibit C”, exhibits attached to the Request for Admissions in MSJ Exhibit C are referred to as
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`“MSJ Exhibit C, RA Exhibits A-D”).
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`PROCEEDURAL
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`On May 6, 2019, Entertainment filed Serial No. 88/417283, Serial No. 88/417301 (TSDR
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`for 88/417283 & 88/417301 MSJ Exhibit D) and Serial No. 88/417256 (MSJ Exhibit E, TSDR
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`for #88417256) applications to add to its existing cache of Dining Advantage® U.S. Trademarks
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`in classes 016 and 035. Opposer filed this Opposition against just 2 of the applications Serial No.
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`88/417283 and Serial No. 88/417301 on October 10, 2019. Following the parties pre-trial
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`conference, by leave of the TTAB, Entertainment served its Amended Affirmative Defenses on
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`Opposer on January 20, 2020. On February 11, 2020, Opposer served its Initial Disclosures, First
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`Interrogatories, and First Request for Production on Applicant. Entertainment served its Initial
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`Disclosures on Opposer shortly thereafter. Entertainment’s served the attached First Set of
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`Requests for Admissions (containing 17 requests) with Interrogatories and Production of
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`Documents related to any denials or objections to such requests on Opposer on February 20,
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`2018 MSJ Exhibit C. Entertainment served timely responses to Opposer’s First Interrogatories
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`(with 20 Interrogatories) and First Request for Production to Applicant (with 30 requests) (MSJ
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`Exhibit B).
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`On March 20, 2020, Friday at 4pm EST, one business day before Opposer discovery
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`responses were due, opposing counsel requested a 6-month stay of proceedings due to the
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`“difficulties created by the COVID-19” (email correspondence between the parties, see
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`3
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`Prosecution History #11, Applicant’s Reply in Opposition to Opposer’s Motion to Suspend,
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`Exhibit G of Reply .
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`On the day Opposer responses were due, opposing counsel replied that it did not agree
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`with Entertainment’s description of the prejudice outlined in its reply email and indicated that a
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`motion would be filed. Although Entertainment then offered a 2- week extension (thus allowing
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`a total 45 days to respond to 17 requests for admission, in lieu of response, Opposer filed a
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`conclusory 5 paragraph Motion to Suspend and Extend on the day Opposer’s responses were
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`due. Entertainment filed a timely Reply in Opposition to Opposer’s Motion to Suspend and noted
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`its reliance on the deemed admissions resulting from Opposer’s failure to timely respond.
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`As of the filing of this Motion for Summary Judgement, no decision has been made by
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`the TTAB relative to Opposer’s Motion to Suspend. While the admissions reflected by
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`Opposer’s failure to respond to the Request for Admissions support this summary judgement
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`motion and further substantiate the parties’ trademark history, the irrefutable facts alone are
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`sufficient support to grant this motion for summary judgement.
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`Statement of Material Facts
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`
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`Entertainment is the largest supplier of various assortments of promotional and discount
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`products, provided through mobile, online and printed discounts, which are utilized for
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`advertising, loyalty programs and fundraising purposes by educational, non-profit and
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`corporations, including Opposer in the past, throughout the United States and Canada. (MSJ
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`Exhibit B, Response to Interrogatories 1 & 4) Entertainment sold its international trademarks and
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`product/service offerings to Entertainment of Australia in 2013.
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`Entertainment offers advertising and the sale of coupon/discount offers - such as
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`Entertainment® books, custom discount products, mobile offers and multiple websites, including
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`4
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`but not limited to: entertainment.com®, DiningAdvantage.com®, and co-branded websites all of
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`which provide consumers savings and discounts for local and national restaurants, travel, car
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`rental, movies, car washes, grocery stores and other related goods and services. (MSJ Exhibit A,
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`Paragraph 3).
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`In 1989, Entertainment launched its discount program named "Dining Advantage". Since that
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`time, Entertainment has extensively used, and continues to use, the Dining Advantage® trademark /
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`service mark, alone and in connection with other Entertainment marks, words and designs (the
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`"Entertainment Marks") in connection with loyalty programs, discount programs, incentive programs,
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`transportation and travel related discounted goods and services. (MSJ Exhibit B, Response to
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`Interrogatory 4). In July 1990, six years prior to Opposer’s registration of the Aadvantage® mark
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`in class 035 (see Opposition page 3, Aadvantage TDSR 2006172), Entertainment successors
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`obtained a federal registration for the trademark Dining Advantage® U.S. Registration Number
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`1,608,460 in class 035 - promoting the registration goods and services of others through the
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`distribution of discount cards and coupons for restaurants. (TSDR 1,608,460 MSJ Exhibit F and
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`Example of use attached as MSJ Exhibit A, Exhibit 1). The registration includes the typeset
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`words “DINING ADVANTAGE” with no design elements.
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`At that time, the parent company of Entertainment and its affiliates also owned the
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`following advantage trademarks, many of which predate Opposer’s AAdvantage mark:
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`The Financial Advantage
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`Shopper’s Advantage
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`The Traveler’s Advantage
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`Autovantage
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`Buyer’s Advantage
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`1,344,981
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`1,352,175
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`1.393,539
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`1,533,199
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`1,531,245
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`5
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`Gourmet Advantage
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`Legal Advantage
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`Warranty Advantage
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`1,542,848
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`1,438,746
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`1,503,239
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`Opposer was made aware of the ownership of these additional advantage marks after it
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`objected to Entertainment’s use of Dining Advantage® by letter dated June 7, 1990. At that time
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`Opposer held the Aadvantage mark for class 39 goods and services only characterized as
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`“Providing a Program of Bonus Flights for Frequent Travelers”. Opposer registration contained
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`this design mark:
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`(Opposer 1990 letter and Entertainment July 21, 1990
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`response are attached as MSJ Exhibit C, RA Exhibits A & B). Following its July 21, 1990
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`response, Entertainment did not receive any further objections to the use of the 1990 Dining
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`Advantage® mark.
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`In 1994, Entertainment and Opposer entered into a commercial services agreement in
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`which Entertainment provided advertising services for Opposer discount offers to consumers.
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`Pursuant to the agreement, and subsequent party agreements, Opposer expressly covenanted that:
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`“American will not register or apply to register “AAdvantage® Dining” at any time during or
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`after the term of this Agreement. However, American shall be entitled to use “AAdvantage®
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`Dining” after the termination of this Agreement.” “Covenant” emphasis added. See page 15 of
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`1994 AAdvantage Participation Agreement attached as MSJ Exhibit C, RA Exhibit C and
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`Request for Admissions Nos. 6 and 17. Entertainment also agreed not to use or allow to be used
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`DINING ADVANTAGE® “in association with the provision of frequent flyer miles or points,
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`air travel awards, upgrades or other air travel benefits”. (MSJ Exhibit C, RA Exhibit C)
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`Entertainment has never breached this obligation and its current applications do not conflict with
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`this obligation. MSJ Exhibit C, Request for Admission No. 11.
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`6
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`On February 7, 2000, despite Opposer’s prior Covenant, and without Entertainment’s
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`permission, Opposer’s filed US trademark application NO. 75911404 for registration of the mark
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`“AADVANTAGE DINING”. See TSDR status attached as MSJ Exhibit G, and MSJ Exhibit C,
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`Admission No. 7. Without notice or participation from Entertainment, the USPTO denied the
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`AADVANTAGE DINING application based on the likelihood of confusion with Entertainment’s
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`DINING ADVANTAGE® mark on September 7, 2000. (MSJ Exhibit G). In response,
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`compounding its Covenant breach, Opposer then filed a Petition for Cancellation with respect to
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`Entertainment’s Registration No. 1,608,460 for DINING ADVANTAGE®. Id., see also TSDR
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`status attached as MSJ Exhibit F, and MSJ Exhibit C, Admission No. 8. The basis for the
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`Petition was non-use. Upon response from Entertainment, Opposer withdrew the Petition with
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`prejudice and Opposer’s application for AADVANTAGE DINING was abandoned in 2003. Id.,
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`and MSJ Exhibit C, Admission No. 9 and 10.
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`In 2007 Entertainment secured the domain name “diningadvantage.com”. (Exhibit A,
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`Paragraph 4) Subsequently it launched the website www. diningadvantage.com using the 1990
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`Dining Advantage® mark on the website. (Id.) In 2011, Entertainment applied for the federal
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`registration of the trademark DININGADVANTAGE.COM® U.S. Registration Number
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`4,286,631 of the typeset words “DININGADVANTAGE.COM” with no design elements and
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`without claim to any font style, size, or color in classes 016 and 035 described as:
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`a.
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`016 - Non-magnetically encoded printed coupon and discount cards all which
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`entitle the holder to receive discounts on dining, hotel accommodations, consumer merchandise,
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`travel, movies, sports, theater, and other leisure activities sold separately or as part of a unit.
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`b.
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`035 - Advertising and promotional services, namely, promoting the goods and
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`services of others through the distribution of coupons, and discount offers which entitle the
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`7
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`holder to receive discounts on dining, hotel accommodations, consumer merchandise, travel,
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`movies, sports, theater and other leisure activities; Providing advertising service through the
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`distribution of advertisements, coupons and discount offers for display on Internet, namely, in
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`websites, e-mails and multimedia messages; providing via on-line computer services a
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`membership program entitling the participants to receive discounts on dining, hotel
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`accommodations, consumer merchandise, travel, movies, sports, theater and other leisure
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`activities, and providing in connection therewith an on-line directory of information about
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`the discount program and participating businesses (emphasis added). See TSDR status
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`attached as MSJ Exhibit H.
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`In January 2012 Opposer filed a motion for extension of time to oppose the
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`diningadvantage.com® application which was granted until April 2012. (Id.). The extension was
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`terminated in April because Opposer did not file an opposition. (Id). The registration was granted
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`to Entertainment in February 2013. (Id.). Example of landing page for DiningAdvantage.com®
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`from 2014 attached as MSJ Exhibit A, Exhibit 2.
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`On DiningAdvantage.com®, Entertainment has posted offers for dining, things to do,
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`shopping and services, including but not limited to travel related offers for hotels, airport
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`parking, travel packages, vacation rentals, and car rentals. At times the diningadvantage.com
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`website redirected to the entertainment.com® website for all offers. MSJ Exhibit A, Paragraph 5.
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`DININGADVANTAGE.COM®, ENTERTAINMENT.COM®, SAVERSGUIDE.COM®
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`Entertainment brands, among other “.com” brands registered to Entertainment, have been used
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`since 2011. They provide consumers over 500,000 merchant offers that save consumers money
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`and provide advertising for over 50,000 businesses. The Entertainment websites have 21 million
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`8
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`registered members, including 1.9 million registered members in Dining Advantage® and access
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`available to 19 million consumers. (Id., Paragraph 7).
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`Three years and 6 months after Entertainment’s filing for DININGADVANTAGE.COM,
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`Opposer filed application for U.S. Registration No. 4897372 removing the winged Aadvantage
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`mark and changing to typeset the typeset work AADVANTAGE to include among other things
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`“promoting the goods and services of others by means of providing an on-line shopping mall”.
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`(Opposition, Pages 3-4). Its original class 035 Registration No. 2006172 (Opposition, Page 3)
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`filed in 1995 contained the winged mark
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`for promoting travel
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`services, credit card use, long-distance service car rentals, and hotel accommodations through the
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`administration of award programs”. The 2014 application was approved in February 2016. See
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`Opposition, Pages 3-4, and MSJ Exhibit C, Admission No. 14.
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`On September 10, 2019, Entertainment received Official USPTO Notice of
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`Acceptance/Acknowledgement Sections 8 and 15: U.S. Trademark RN 4286631:
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`DININGADVANTAGE.COM: Docket/Reference No. 235585343258 MSJ Exhibit H. Thus,
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`Entertainment’s DININGADVANTAGE.COM® mark is incontestable pursuant to 15 U.S.C. §
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`1065. Notably, Opposer has yet to qualify for incontestability to the AADVANTAGE
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`registration in class 35 including the additional description of “promoting the goods and services
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`of others by means of providing an on-line shopping mall”.
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` On May 6, 2019, Entertainment filed three additional dining advantage U.S. Trademark
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`Applications in classes 016 and 035, to add design elements to the Prior DA Marks and update
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`the original Dining Advantage® 1990 goods and services description to match the
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`diningadvangage.com description. The 1990 Dining Advantage® mark has been used on the
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`9
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`diningadvantge.com website since it was acquired in 2007. The three applications include: 1)
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`Serial No. 88/417283 containing design elements of a fork and knife in the center of a thin circle
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`all inside a larger, thicker circle to the left of the wording “DINING ADVANTAGE”, 2) U.S.
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`Trademark Application Serial No. 88/417301 for “DINING ADVANTAGE BY
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`ENTERTAINMENT” which also added a fork and knife in the center of a thin circle all inside a
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`larger, thicker circle to the left of the wording DINING ADVANTAGE above the wording BY
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`ENTERTAINMENT with a four-point crown in between the words BY and
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`ENTERTAINMENT and 3) un-opposed Serial No. 88/417256 containing merely the design
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`elements of a fork and knife in the center of a thin circle all inside a larger, thicker circle.
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`All applications refer to the Prior DA marks in the applications. (Serial No. 88/417283
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`and Serial No. 88/417301 collectively referred to as the "Opposed Applications" or "New DA
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`Marks"). Examples provided with Applicant’s Document Production Response MSJ Exhibit B:
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` These applications are in Class 35 and in Class 16 for the same goods and services described for
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`the registered mark DININGADVANTAGE.COM® and similar to the Dining Advantage® mark.
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`compare TSDR status MSJ Exhibits D-F and H, and see also MSJ Exhibit C, Admission No. 15.
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`Since 1989 Entertainment has spent a considerable amount of money developing name-
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`recognition and goodwill for the Dining Advantage® marks. See MSJ Exhibit B, Answer to
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`Interrogatory 9. Entertainment is unaware of a member of the public who has been, or may have
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`been, confused as a result of the contemporaneous use of the Prior DA Marks and the New DA
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`Marks (collectively “Dining Advantage Marks”) and Opposer’s Marks. (Id., Answer to
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`10
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`Interrogatory No. 11. Also, since 1990 to the current day, neither Entertainment or Opposer have
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`received any consumer or other third party reports, inquires or complaints questioning whether
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`Entertainment’s Dining Advantage products/services are affiliated, connected or associated with
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`Opposer based upon Entertainment’s use of any of its Dining Advantage Marks on its goods or
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`services or questioning whether such goods and services originate from or are sponsored or
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`approved by Opposer. See Id., and MSJ Exhibit C, Admission No. 12. Nor has Opposer been
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`damaged by Entertainment’s use of any it’s Dining Advantage Marks. MSJ Exhibit C,
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`Admission No. 13.
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`Notwithstanding the parties’ prior history and Opposer’s knowledge of Entertainments prior
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`DA Marks, Opposer filed this Opposition on October 10, 2019. While the Opposition does not claim
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`the Prior Marks have caused it any damage, Opposer disingenuously claims in Paragraph 12 of its
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`Opposition that “the claimed goods and services [of the New DA Marks] are likely to cause confusion
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`as to the source or origin of Applicant's Goods and Services, and are likely to mislead consumers, all
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`to Opposer's damage” (emphasis added).
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`Remarkably, Paragraph 13 of Opposer’s Opposition also alleges that Entertainment’s 035
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`class description for the current Dining Advantage marks “[p]roviding via on-line computer
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`services a membership program entitling the participants to receive discounts on dining, hotel
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`accommodations, consumer merchandise, travel’ services directly overlap with American's
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`services”. However, this is the same 035 class description as Entertainment’s registered mark for
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`DININGADVANTAGE.COM®, which was never opposed and is now incontestable, while
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`Opposer’s 2016 additional trademark description of “promoting the goods and services of others
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`by means of providing an on-line shopping mall” is not incontestable.
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`11
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`ARGUMENT
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`I. ENTERTAINMENT IS ENTITLED TO SUMMARY JUDGMENT BECAUSE
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`OPPOSER LACKS STANDING, THE ALLEGATIONS OF DAMAGES HAVE A
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`NO REASONABLE BASIS IN FACT.
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`Entertainment selected the New DA Marks after carefully evaluating competing uses and
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`Entertainment Prior DA Marks. Once the New DA Marks were selected, Entertainment began to
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`use them in commerce, and the applications were filed in May 2019. Entertainment has invested
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`considerable time and money toward product development, testing and marketing. (MSJ Exhibit
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`B, Answer to Interrogatory 9). The Opposition makes conclusory allegations of damages which
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`have no reasonable basis in fact. The added expense associated with defending against the
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`meritless Opposition during a time when small businesses like Entertainment cannot afford to be
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`bullied by Goliath.
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`An opposition to a trademark can be filed by any person who believes it is or will be
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`damaged by registration of a mark has standing to file a complaint. See TBMP § 303. To plead a
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`"real interest," the allegations must show a "direct and personal stake" in the outcome of the
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`proceeding and the belief of damage must have a reasonable basis "in fact." TBMP § 309.03(b).
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`While Opposer’s allegations regarding its Aadvantage® marks in the Opposition is quite
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`detailed, Opposer’s failure to detail Applicant’s ownership of the Prior DA Marks and the
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`parties’ 30 year history, including Opposer’s abandoned: trademark applications, oppositions,
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`and attempts to cancel Entertainment Prior DA Marks in its Consolidated Notice of Opposition is
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`manipulative and an intentional misrepresentation of Opposer’s direct and personal stake and
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`basis for its alleged belief of damages.
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`12
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`A real interest in the proceeding and a reasonable belief of damage may be found, by
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`asserting non-frivolous claim of likelihood of confusion, including claims based upon current
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`ownership of a valid and subsisting registration. Barbara’s Bakery Inc. v. Landesman, 82
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`USPQ2d 1283, 1285 (TTAB 2007) (standing established by properly making pleaded
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`registration of record and asserting non-frivolous likelihood of confusion claim). The plaintiff’s
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`belief of damage “must have a reasonable basis in fact.” Coach Servs. v. Triumph Learning, 668
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`F.3rd 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012).
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`In a case strikingly similar to the present facts, likelihood of confusion was not found in
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`ProMark Brands Inc. and H.J. Heinz Company v. GFA Brands, Inc., 114 U.S.P.Q.2d 1232
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`(T.T.A.B. 2015). The ProMark Board denied the opposition to registration of the mark SMART
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`BALANCE for frozen entrees and various snack foods and desserts, finding the mark not likely
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`to cause confusion with the registered mark SMART ONES for various types of frozen foods,
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`including entrees, desserts, ready-to-eat wraps, pizzas, and breakfast foods. The Board concluded
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`that although the goods of those parties were closely related and, in some cases, legally identical,
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`the marks are significantly different, particularly in view of: 1) the weakness of the formative
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`“SMART,” and 2) the seventeen-year period of conflict-free coexistence of the parties’ marks
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`(although not for frozen foods). The Board dismissed the dilution-by-blurring claim. Similarly,
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`Entertainment and Opposer have had a 30-year consumer conflict-free coexistence, with no
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`consumer claims of confusion, although Opposer has continually caused frivolous conflict.
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`The Prior DA Marks are strong and have achieved a substantial level of consumer
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`recognition in the United States and Canada as a result of Entertainment's exclusive and long-
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`standing use of the Prior DA Marks in association with discounts on dining, hotel
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`accommodations, consumer merchandise, travel, movies, sports, theater and other leisure
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`activities. There are 1.9 million consumer members and multiple corporate clients that use the
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`Dining Advantage® website and mobile applications. Thus, the Prior DA Marks are inherently
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`distinctive and have acquired fame among the consuming public through the extensive, exclusive
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`and continuous use and promotion of the Prior DA Marks for 30 years. Entertainment's federal
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`registrations are prima facie evidence of validity of these marks as well as Entertainment's
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`ownership and exclusive right to use these marks in connection with the identified products and
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`services. 15 U.S.C. § 1057(b).
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`These substantially similar registered marks to the New DA Marks, for substantially similar
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`goods and/or services have caused no added injury to Opposer and there is no likelihood the New DA
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`Marks will cause any injury MSJ Exhibit B, Response to Interrogatories No. 11, and MSJ Exhibit C,
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`Admissions No 12, 13, and16. In Hearst Communications, Inc. v. TVNESS, LLC, Opposition No.
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`91162261, 2007 WL 616038 (TTAB Feb. 20, 2007), applicant failed to respond to 116 admission
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`requests relating to priority, fame, distinctiveness and confusing similarity. As a result of this failure,
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`opposer filed a motion for summary judgment asserting that applicant’s failure to respond was an
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`admission. The Board held applicant ignored the ramifications of not responding and all 116 requests
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`were held to be admitted and granted summary judgement. See also Florida Engineered Construction
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`Products Corporation, Opposition No. 91159554, 2006 WL 1087855 (TTAB Apr. 13, 2006).
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`
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`The 30 year history of the Prior DA Marks establishes that the New DA Marks are not
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`confusingly similar to Opposer's AADVANTAGE Marks, nor are they likely to cause confusion
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`as to the source or origin of Entertainment's goods and services and are not likely to mislead
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`consumers to believe that Opposer is the source or origin of the Dining Advantage® products. At
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`the time it filed its Opposition, Opposer had intimate knowledge of Entertainment's rights in the
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`Prior DA Marks and the lack of any confusion on the part of consumers for thirty years. This
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`knowledge, the 30-year history, and requests for admissions demonstrate there is no genuine
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`issue of material fact with respect to opposer’s lack of damages. The motion for summary
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`judgement should be granted.
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`II. ENTERTAINMENT IS ENTITLED TO SUMMARY JUDGMENT BECAUSE
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`OPPOSITION’S CLAIM OF LIKELIHOOD OF CONFUSION IS BARRED BY
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`THE MOREHOUSE LACHES DEFENSE.
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`
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`Opposer bears the burden of proof by a preponderance of the evidence on its claim of
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`likelihood of confusion to establish priority and likelihood of confusion. Bose Corp v QSC
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`Audio Products, Inc., 293 F3rd 1367, 1370, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002). Indeed in
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`Yamaha Int’l Corp v Hoshino Gakki Co., 840 F2d 1572, 1579-1580, 6 USPQ2nd 1001, 1007
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`(Fed Cir 1988) the court noted that because Section 2 of the Landham Act “provides that no
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`trademark shall be refused unless it is shown that there is a likelihood of confusion with another
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`mark, the requirement that the opposer both establish a prima facie case of likelihood of
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`confusion and carry the ultimate burden of persuasion on that issue is proper.
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`
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`This burden is insurmountable by Opposer. As discussed previously, although Opposer
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`had actual knowledge of Entertainment's rights in the Prior DA Marks before bringing this
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`Opposition, Opposer failed to address any of the parties 30-year dining advantage history in its
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`Opposition. The only rational for this glaring omission is that Opposer knew such information
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`would emasculate the ability to state a claim on which favorable relief could be granted.
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`
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`The Prior DA Marks are inherently distinctive and have acquired significant
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`distinctiveness and fame among the consuming public through the extensive, exclusive and
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`continuous use and promotion of the Prior DA Marks by Entertainment for 30 years. The New
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`DA Marks are substantially alike and for substantially similar goods and/or services as the Prior DA
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`Marks. Moreover, Opposer’s likelihood of confusion claim relates only to the text portion of the
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`Dining Advantage applied-for marks, and not to the “Entertainment” text or the design features of the
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`fork and knife portion of the mark. It is inconceivable that Opposer can be damaged by registration of
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`the present applied-for marks when Entertainment already owns unchallenged registrations for the
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`same goods covered by the New DA Marks that are closer to Opposer’s Aadvantage mark than the
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`applied-for marks.
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`
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`The doctrine of laches or prior registration defense, also known as the Morehouse defense,
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`Morehouse Mfg. Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715 (CCPA 1969), is based
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`on the premise that one opposing a registration cannot be further injured by a new registration that is
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`the “same or substantially identical” to an existing registration. See 3 J. THOMAS MCCARTHY,
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`MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 20:38 (4th ed. 2015).
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`
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`
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`If one opposing a mark "cannot procure the cancellation of [an] existing registration it cannot
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`prevent the granting of [a] second registration" of effectively the same mark. Morehouse, 407 F.2d at
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`884. The only difference between earlier and later dining advantage marks is the design element.
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`According to past cases, the mere stylization of a name, or the addition of a design element, is not
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`enough to defeat the Morehouse defense. In Tillamook Country Smoker, Inc. v. Tillamook Cty.
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`Creamery Ass'n, 333 F. Supp. 2d 975 (D. Or. 2004), the court was persuaded by Smoker's prior-
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`registration defense and found that limiting the Applicant to its prior mark served only to limit
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`unnecessarily applicant's rights without protecting opposer in any way from the alleged source of its
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`alleged harm, the use of the word "Tillamook”. Similarly, in The Place for Vision, Inc. v. Pearle
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`Vision Center, Inc., 218 U.S.P.Q. 1022, 1983 WL 51990 (Trademark Tr. & App. Bd. 1983) the Board
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`applied the prior-registration defense "because opposer's claim of damage relates only to the `Vision
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`Center' portion of applicant's mark and not to the `Pearle' and design portions of the mark"). See also
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`
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`16
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`GTFM, Inc. v. Fresh Body, LLC, Opposition No. 91209621 (March 4, 2016) (Board dismissed
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`opposer’s likelihood of confusion claim because it related only to the FB portion of the applied-for
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`mark, and not to the FRESH BODY and design features of the mark); e.g., S & L Acquisition Co. v.
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`Helene Arpele, Inc., 9 U.S.P.Q.2d 1221, 1225-26, 1987 WL 123899 (Trademark Tr. & App.
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`Bd.1987).
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`
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`Thus, like the above cases, Entertainment is entitled to registration of the New DA Marks
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`under the doctrines of laches and acquiescence because Opposer’s likelihood of confusion claim
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`relates only to the “dining advantage” portions of the applied-for marks, and not to the Entertainment
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`and fork & Knife design features of the marks. Under these circumstances, the prior-registration
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`defense bars Opposer’s claim and summary judgement should be granted in Entertainment’s favor.
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`
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`
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`III. ENTERTAINMENT IS ENTITLED TO SUMMARY JUDGMENT BECAUSE
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`OPPOSER’S CLAIM IS BARRED BY UNCLEAN HANDS.
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`Alternatively, Entertainme