Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1125668
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`Filing date:
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`04/08/2021
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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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`91256438
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`Party
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`Correspondence
`Address
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`Plaintiff
`Gibson Brands, Inc.
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`ANDREA E. BATES
`BATES & BATES, LLC
`1890 MARIETTA BLVD NW
`ATLANTA, GA 30318
`UNITED STATES
`Primary Email: abates@bates-bates.com
`Secondary Email(s): kdawson@bates-bates.com, rberkowitz@bates-bates.com,
`ckoerner@bates-bates.com
`No phone number provided.
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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: 07/07/2021
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`Kevin J. Dawson
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`abates@bates-bates.com, kdawson@bates-bates.com, rberkow-
`itz@bates-bates.com, tm@bates-bates.com
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`/Kevin J. Dawson/
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`04/08/2021
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`4.8.21 - Gibson v Collings - MSJ.pdf(201771 bytes )
`4.8.21 - Gibson v Collings MSJ - Declaration and Exhibits .pdf(3038507 bytes )
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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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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK
`TRIAL AND APPEAL BOARD
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`GIBSON BRANDS, INC.,
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`Opposer,
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`v.
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`) App. No.: 88/364,718
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`) OPPOSER GIBSON BRANDS, INC.’S
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`Collings Guitar, Inc.
` ) MOTION FOR SUMMARY
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`) JUDGMENT
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`Applicant.
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`__________________________________________)
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`OPPOSER GIBSON BRANDS, INC.’S MOTION FOR SUMMARY JUDGMENT
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`Please take notice that Gibson Brands, Inc. (“Opposer”), by this document and pursuant to
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`Federal Rule of Civil Procedure 56 and 37 C.F.R. § 2.127, moves the Trademark Trial and Appeal
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`Board to grant summary judgment on the grounds that there is a likelihood of confusion between
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`Applicant’s U.S. Trademark Application No. 88/364,718 and Opposer’s DOVE-WING, EMPEROR,
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`and EPIPHONE Peghead designs under Section 2(d) of the Trademark Act and trademark dilution under
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`15 U.S.C. §1125(c)(1) for the reasons set forth below.
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`MEMORANDUM OF POINTS AND AUTHORITIES
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`I.
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`INTRODUCTION.
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`This is a case of an applicant who has selected and applied for a mark confusingly similar to
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`Opposer’s famous headstock designs (“Opposer’s Marks”) for goods virtually identical to and
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`competitive with Opposer’s goods. [Opposer’s Marks are attached to the Dawson Declaration as Exhibit
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`B.] By failure to timely deny Opposer’s Requests to Admit (“Requests”), all of the salient facts showing
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`a likelihood of confusion and dilution have been admitted. As demonstrated below, the undisputed facts
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`of this case support a finding of a likelihood of confusion with and dilution of the Opposer’s famous
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`headstock designs. The Board should readily determine that summary judgment for Opposer on its
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`Section 2(d) and 1125(c)(1) grounds for opposition must be entered and Collings Guitar Inc.’s
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`Application No 88/364,718 must be denied.
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`II.
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`RELEVANT FACTS.
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`On March 31, 2019, Applicant applied to register the mark
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`(“Applicant’s
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`Mark”) in connection with “Stringed musical instruments, namely, guitars and mandolins” in
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`International Class 15 (“Applicant’s Goods”).
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`Applicant’s Mark was published for opposition in the Official Gazette on February 18, 2020. On
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`June 17, 2020, Opposer timely instituted this proceeding to oppose registration of Applicant’s Mark
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`alleging a likelihood of confusion and dilution as the grounds for the opposition. [See Notice of
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`Opposition, Dkt. #1.] On February 2, 2021, Opposer served on Applicant its First Set of Interrogatories,
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`First Set of Requests for Production of Documents and Things, and Requests for Admissions via email.
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`Applicant failed to timely respond to each on or before March 4, 2021. [Applicant’s Requests for
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`Admission are attached to the Dawson Declaration as Exhibit A.]
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`III. ARGUMENT AND CITATION TO AUTHORITY.
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`a.
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`Summary Judgment is Warranted in this Case.
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`The Federal Rules of Civil Procedure generally apply to proceedings before the Trademark Trial
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`and Appeal Board (“TTAB” or “Board”). See 37 C.F.R. § 2.116(a). On a motion for summary
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`judgment, the Board may render judgment for the moving party if there is no genuine issue as to any
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`material fact. Fed. R. Civ. P. 56(c). Further, a party may move for summary judgment in its favor
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`regarding all asserted claims, or any part thereof. See Fed. R. Civ. P. 56(a). In Pure Gold, Inc. v. Syntex
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`2
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`(U.S.A.), Inc., 739 F.2d 624, 222 U.S.P.Q. 741 (Fed. Cir. 1984), the Federal Circuit affirmed the
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`Board’s grant of summary judgment in an opposition proceeding. The court explained that the “basic
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`purpose of summary judgment is one of judicial economy.” Id. at 743 (citing Exxon Corp. v. National
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`Food Line Corp., 198 U.S.P.Q. 407, 408 (C.C.P.A. 1978)). It is against public interest to conduct
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`unnecessary trials, and where the time and expense of a full trial can be avoided by the summary
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`judgment procedure, such action is favored. See Pure Gold, 222 U.S.P.Q. at 743. The court encouraged
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`the disposition of matters before the TTAB by summary judgment:
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`The practice of the U.S. Claims Court and of the former U.S. Court of Claims in routinely
`disposing of numerous cases on the basis of cross-motions for summary judgment has
`much to commend it. The adoption of a similar practice is to be encouraged in inter
`parties cases before the Trademark Trial and Appeal Board, which seem particularly
`suitable to this type of disposition. Too often we see voluminous records which would be
`appropriate to an infringement or unfair competition suit but are wholly unnecessary to
`resolution of the issue of registrability of a mark.
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`See Id. at 744, n2; see also Sweats Fashions, Inc. v. Pannill Knitting Co., Inc., 833 F.2d 1560, 4
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`U.S.P.Q.2d 1793, 1795 (Fed. Cir. 1987) (lauding the use of summary judgment to resolve Board
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`proceedings).
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`The burden of the party moving for summary judgment is met by showing “that there is an
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`absence of evidence to support the nonmoving party’s case.” Celotex Corp. v. Catrett, 477 U.S. 317,
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`325 (1986). When the moving party shows that there is no genuine issue of material fact, the
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`nonmoving party “may not rest upon the mere allegations or denials of [its] pleadings.” Fed. R. Civ. P.
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`56(e). It must respond, setting “forth specific facts showing that there is a genuine issue for trial.” Id.
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`A factual dispute is genuine only if, on the evidence of record, a reasonable fact finder could resolve the
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`matter in favor of the nonmoving party. See Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25
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`U.S.P.Q.2d 2027 (Fed. Cir. 1993).
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`By failing to timely deny Opposer’s Requests, Applicant has admitted Opposer’s priority in
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`Opposer’s Marks and likelihood of confusion between Applicant’s Mark and Opposer’s Marks. See
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`3
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`Dawson Decl. Ex. A at Req. Nos. 1-3, 8-12. Thus, the issues for the Board’s determination are whether
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`any disputed facts remain with regard to the likelihood of confusion between the parties’ marks and
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`whether Applicant's Mark dilutes Opposer’s Marks.
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`Both of these issues are questions of law ripe for summary judgment. See Packard Press, Inc. v.
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`Hewlett-Packard Co., 227 F.3d. 1352, 56 U.S.P.Q.2d 1351 (Fed. Cir. 2000) (“Whether a likelihood of
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`confusion exists is a question of law, based on underlying factual determinations.”); see also Sweats
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`Fashions, 4 U.S.P.Q.2d at 1797 (“The uniform precedent of this court is that the likelihood of confusion
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`is one of law.”); see also Visa Intern. Service Ass’n v. JSL Corp., 610 F.3d 1088, 95 U.S.P.Q.2d 1571
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`(9th Cir. 2010) (affirming summary judgment on a dilution claim). Here, based on Opposer’s strong
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`rights in its Opposer’s Marks and on Applicant’s own undisputed admissions, there are no remaining
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`issues of material fact, and an analysis of those facts under the law strongly favors a finding of a
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`likelihood of confusion and dilution of Opposer’s Marks.
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`b.
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`Applicant Admitted that Confusion is Likely and Applicant’s Mark Dilutes
`Opposer’s Marks.
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`By failing to timely deny Opposer’s Requests, Applicant admitted that confusion is likely
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`between Applicant’s Mark and Opposer’s Marks. Additionally, by failing to timely respond to
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`Opposer’s Requests, Applicant admitted that Applicant’s Mark is likely to cause dilution by blurring
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`Opposer's Marks’ distinctiveness. Federal Rule of Civil Procedure 36(a)(3) provides that: “A matter is
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`admitted unless, within 30 days after being served, the party to whom the request is directed serves on
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`the requesting party a written answer or objection addressed to the matter and signed by the party or its
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`attorney.” See also Trademark Board Manual of Procedure § 407.03(a) (2018) (“If a party on which
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`requests for admission have been served fails to timely respond thereto, the requests will stand admitted
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`by operation of law.”), citing Fram Trak Industries v. Wiretracks LLC, 77 U.S.P.Q.2d 2000, 2005
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`(TTAB 2006) (requests for admissions deemed admitted by respondent’s failure to respond to
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`petitioner’s requests for admissions); Pinnochio’s Pizza Inc. v. Sandra Inc., 11 U.S.P.Q.2d 1227, 1228
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`n.5 (TTAB 1989) (same). “A matter admitted under this rule is conclusively established unless the
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`court, on motion, permits the admission to be withdrawn or amended.” Fed. R. Civ. P. 36(b).
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`Just as federal courts from around the country have done, the Board too has relied on deemed
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`admissions to support a grant of summary judgment where, as here, the admissions were directed to
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`essential allegations of the case. See Panda Sec., S.L. v. Panda Core Tech., Inc., Opposition No.
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`91191921, 2011 WL 2161070, at *2-3, 16 TTABVUE 5 (TTAB May 18, 2011) (non-precedential)
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`(noting Rule 36 allows party to seek admissions as to matters dispositive of a case and granting
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`summary judgment on basis of deemed admissions); In re Carney, 258 F.3d 415, 420 (5th Cir. 2001)
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`(same); United States v. 2204 Barbara Lane, 960 F.2d 126, 129 (11th Cir. 1992) (same); Hulsey v. State
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`of Texas, 929 F.2d 168, 171 (5th Cir. 1991) (same); Campbell v. Spectrum Automation Co., 601 F.2d
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`246, 253, 202 U.S.P.Q. 625 (6th Cir. 1979) (same); Chicago Dist. Council of Carpenters Pension Fund
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`v. P.M.Q.T., 169 F.R.D. 336, 341 (N.D. Ill. 1996) (same). Indeed, the USPTO itself has relied upon
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`unanswered requests for admission in successfully seeking summary judgment. See Russell v. Comm’r
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`of Pats. & Trademarks, 695 F.Supp. 572, 573, 8 U.S.P.Q.2d 1452 (D.D.C. 1988) (granting summary
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`judgment for the Commissioner).
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`Here, Opposer served Applicant with requests for admission regarding facts applicable to the
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`likelihood of confusion and dilution analysis factors. Applicant did not respond within 30 days. To
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`date, Applicant has not moved the Board to amend or withdraw its admissions. Therefore, Opposer’s
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`requests for admissions are admitted as a matter of law.
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`c.
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`Applicant’s Mark is Likely to Cause Confusion with Opposer’s Marks.
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`Section 2(d) of the Lanham Act provides that registration of a trademark should be refused if the
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`mark “so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name
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`previously used in the United States by another and not abandoned, as to be likely, when used on or in
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`connection with the goods of the applicant, to cause confusion, to cause mistake, or to deceive….” 15
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`5
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`U.S.C. § 1052(d). As an initial matter, the long-standing prior use of Opposer’s Marks is not in dispute.
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`The first of Opposer’s Marks registered in 1975 (U.S. Reg. No. 1020485) and the last in 2000 (U.S. Reg.
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`No. 2367539). It is undisputed that, having been registered on the Principal Register for more than five
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`years, Opposer’s Marks have attained incontestable status, pursuant to 15 U.S.C. § 1065. See Dawson
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`Decl. Ex. B.
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`The court in In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A.
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`1973), listed a number of factors which may be considered when determining whether a likelihood of
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`confusion exists under Section 2(d). The thirteen principal factors to be considered in a likelihood of
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`confusion analysis are; 1) the similarity or dissimilarity of the marks in their entireties as to appearance,
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`sound, connotation and commercial impressions, 2) the similarity or dissimilarity of and the nature of
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`goods described in an application or registration in connection with which a prior mark is in use, 3) the
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`similarity or dissimilarity of established, likely-to-continue trade channels, 4) the conditions under
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`which potential consumers purchase-impulse versus careful sophisticated purchasing, 5) the fame of the
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`prior mark, 6) the number and nature of similar marks in use on similar goods, 7) the nature and extent
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`of actual confusion, 8) the length of time during and conditions under which there has been concurrent
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`use without evidence of actual confusion, 9) the variety of goods on which a mark is or is not used, 10)
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`the market interface between the applicant and the owner of the prior mark, 11) the extent to which
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`applicant has a right to exclude others from use of its mark on its goods, 12) the extent of possible
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`confusion-de minimis or substantial, and 13) any other established fact probative to the effect of use. Id.
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`Along with Applicant’s own admissions, an examination of each relevant DuPont factor reveals
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`that a likelihood of confusion exists in this case and that the registration of the Applicant’s Mark should
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`be denied.
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`Applicant Admits that Applicant’s Mark is Similar to Opposer’s Marks.
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`1.
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`Similar marks can support a finding of a likelihood of confusion; the marks need not be identical.
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`6
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`“Marks may be confusingly similar in appearance despite the addition, deletion or substitution of letters
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`or words.” TMEP § 1207.01(b)(ii). The standard for determining the similarity of marks involves
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`evaluating the similarities in sight, sound, and meaning. Similarities in any one of these three
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`components may suffice for the marks to be deemed confusingly similar. In re Swan, Ltd., 8 U.S.P.Q.2d
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`1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 U.S.P.Q.2d 1041, 1042 n.4 (TTAB 1987).
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`“Obviously, the greater the similarity between the two marks at issue, the greater the likelihood of
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`confusion.” GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206, 53 U.S.P.Q.2d 1652 (9th Cir.
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`2000). “[S]imilarities are weighed more heavily than differences.” Id.
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`Here, by failing to timely deny Opposer’s Requests, Applicant admits that the Applicant’s Mark
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`and Opposer’s Marks are similar. [Dawson Decl. Ex. A at Req. No. 10]. Applicant’s admissions are
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`consistent with the evidence on record. Applicant’s Mark and Opposer’s Marks are headstock designs
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`which incorporate curved designs. Nothing in the perceived differences of the marks appears to change
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`the connotation or commercial impression of the marks. See Steelcase, Inc. v. Steelcare, Inc., 219
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`U.S.P.Q. 433, 436 (TTAB 1983) (holding the similarities in appearance and sound between the marks
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`could be more sufficient to sustain determinations of likelihood of confusion without reference to
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`similarities or differences in meaning or connotation). This DuPont factor strongly favors a finding of a
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`likelihood of confusion.
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`2.
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`The Goods Offered Under the Parties’ Respective Marks are Substantially Similar.
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`The more similar or closely related the goods and services, the greater the likelihood of
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`confusion. Exxon Corp. v. Texas Motor Exch. of Houston, Inc., 628 F.2d 500, 505, 208 U.S.P.Q. 384,
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`388 (5th Cir. 1980). The more closely related the goods, the lesser the showing is needed under the
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`remaining likelihood of confusion factors. Banff, Ltd. v. Federated Dep’t Stores, Inc., 6 U.S.P.Q.2d
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`1187, 1192 (2d Cir. 1988).
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`Here, the goods used with Applicant’s Mark are “stringed musical instruments, namely guitars
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`7
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`and mandolins.” Substantially similar goods listed in Opposer’s Marks include, at least, string
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`instruments (U.S. Reg. No. 1,020,485); stringed instruments, namely guitars (U.S. Reg. No. 2,016,857);
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`and stringed musical instruments, namely guitars (U.S. Reg. No. 2,367,539).
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`The Board may find that there is a likelihood of confusion under Section 2(d) if there is a
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`likelihood of confusion involving any of the goods set forth in the application and opposer’s pleaded
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`registrations. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335, 209
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`U.S.P.Q. 986, 988 (CCPA 1981) (finding likelihood of confusion must be found if the public is confused
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`with “seeing the mark on any item that comes within the description of the goods set forth” in the
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`application). The goods need not be identical; if “the marks are the same or almost so, it is only
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`necessary that there be a viable relationship between the goods or services in order to support a holding
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`of likelihood of confusion.” In re Concordia Int’l Forwarding Corp., 222 U.S.P.Q. 355, 356 (TTAB
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`1984). Here, substantial similarity of the goods is clear -- Applicant’s Mark and Opposer’s Mark being
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`used with string instruments, thus the relationship between the goods is obvious on its face. Therefore,
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`this DuPont factor strongly favors a finding of a likelihood of confusion.
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`3.
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`Applicant Admits that Opposer’s Marks are Famous.
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`“[T]he strength of a mark depends ultimately on its distinctiveness, or its ‘origin-indicating’
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`quality, in the eyes of the purchasing public.” McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126,
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`202 U.S.P.Q. 81, 87 (2d Cir. 1979). “The more distinct a mark, the more likely is the confusion
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`resulting from its infringement, and therefore, the more protection it is due.” Daddy’s Junky Music
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`Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275, 280, 42 U.S.P.Q.2d 1173, 1177 (6th Cir.
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`1997). The fame of a mark is a dominant factor in the likelihood of confusion analysis, “independent of
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`the consideration of the relatedness of the goods.” Recot, Inc. v. Becton, 214 F.3d 1322, 54 U.S.P.Q.2d
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`1894, 1898 (Fed. Cir. 2000). Courts have found the strength of the Opposer’s mark an important factor
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`and, in this instance, one that weighs strongly in Opposer’s favor.
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`8
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`The strength of Opposer’s Marks is indisputable. First, and perhaps most significantly for this
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`motion, by failing to timely deny Opposer’s Requests, Applicant has admitted as much. [Dawson Decl.
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`Ex. A at Req. Nos. 4-6.] Second, Opposer’s Marks are arbitrary, inherently distinctive trademarks.
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`Third, by virtue of Opposer’s incontestable Registrations, Opposer’s Marks are entitled to a strong
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`presumption of validity and exclusivity that prohibits the use of a confusingly similar mark. Finally, as
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`result of longstanding and extensive use, Opposer’s Marks have achieved such recognition and
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`distinction–even iconic status–among the consuming public. “Famous or strong marks enjoy a wide
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`latitude of legal protection.” Kenner Parker Toys, Inc. v. Rose Art Indust., Inc., 963 F.2d 350, 22
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`U.S.P.Q.2d 1453, 1456 (Fed. Cir. 1992), cert. denied, 506 U.S. 862 (1992). As strong and famous
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`marks, Opposer’s Marks “cast[] a long shadow which competitors must avoid.” See Id.; see also Nina
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`Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070, 12 U.S.P.Q.2d 1901, 1904 (Fed. Cir. 1989) (“there
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`is no excuse for even approaching the well-known trademark of a competitor . . . all doubt as to whether
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`confusion, mistake, or deception is likely [should] be resolved against the newcomer, especially where
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`the established mark is one which is famous.”) (internal quotations and citations omitted).
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`This DuPont factor strongly favors a finding that Applicant’s Mark will create a likelihood of
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`confusion.
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`4.
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`Applicant Admits Actual Confusion and that the Potential for Further Confusion is
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`High.
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`By failing to timely deny Opposer’s Requests, Applicant has admitted that actual confusion
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`exists. [Dawson Decl. Ex. A at Req. No. 12.] Evidence of actual confusion is strong proof of the fact of
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`a likelihood of confusion. McCarty, § 23:13. “There can be no more positive or substantial proof of the
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`likelihood of confusion than proof of actual confusion.” World Carpets, Inc. v. Dick Littrell’s New
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`World Carpets, 438 F.2d 482, 489, 168 U.S.P.Q. 609 (5th Cir. 1971). See also Roto-Rooter Corp. v.
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`O’Neal, 513 F.2d 44, 186 U.S.P.Q. 73 (5th Cir. 1975) (“very little proof of actual confusion is necessary
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`to prove likelihood of confusion”). The evidence of actual confusion is strong proof of the fact of a
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`likelihood of confusion between Applicant’s Mark and Opposer’s Marks. This DuPont factor strongly
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`favors a finding of a likelihood of confusion.
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`5.
`and Willful.
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`Applicant Admits that its Adoption of a Confusingly Similar Mark was Knowing
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`By failing to timely deny Opposer’s Requests, Applicant has admitted adopting Applicant’s
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`Mark with knowledge of Opposer’s Marks. [Dawson Decl. Ex. A at Req. No. 8,9.] “[I]t is clear that
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`appropriation of a mark with knowledge that it is being used by another is not in good faith…” Weiner
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`King, Inc. v. The Weiner King Corp., 615 F.2d 512, 522, 204 U.S.P.Q. 820 (C.C.P.A. 1980). “A
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`defendant can be presumed to have acted in bad faith if it knowingly adopted a confusingly similar
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`mark.” Edison Bros. Stores, Inc. v. Cosmair, Inc., 651 F.Supp. 1547, 1560, 2 U.S.P.Q.2d 1013
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`(S.D.N.Y. 1987). A likelihood of confusion may be presumed from proof of the junior user’s
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`knowledge of the senior user’s mark. Person’s Co., Ltd. v. Catherine Christman, 900 F.2d 1565, 1569,
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`14 U.S.P.Q.2d 1477 (Fed. Cir. 1990).
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`By failing to timely deny Opposer’s Requests, Applicant admitted it was aware of Opposer’s
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`Marks when it adopted Applicant’s Mark, and thus, has a duty to avoid confusion with Opposer, the
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`prior user. By failing to timely deny Opposer’s Requests, Applicant admitted it intentionally acted
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`willfully, or with gross and knowing disrespect for Opposer’s rights, to trade on Opposer’s goodwill and
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`to cause consumer confusion. See, e.g., E. & J. Gallo Winery v. Consorzio del Gallo Nero, 22
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`U.S.P.Q.2d 1227, 1230 (N.D. Cal. 1992) (“Use of an infringing mark, in the face of warnings about
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`potential infringement, is strong evidence of willful infringement.”). “When the alleged infringer
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`knowingly adopts a mark similar to another’s, reviewing courts presume that the defendant can
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`accomplish his purpose: that is, the public will be deceived.” See Sleekcraft, 204 U.S.P.Q. at 819l; see
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`also D.C. Comics v. Pan American Grain Mfg. Co. Inc., 77 U.S.P.Q.2d 1220, 1229 (TTAB 2005)
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`(“Such bad faith intent is strong evidence that confusion is likely as such an inference is drawn from the
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`imitator’s own expectation of confusion.”). As such, this DuPont factor strongly favors a finding of a
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`likelihood of confusion.
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`6.
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`The Extent of Potential Confusion Is Substantial
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`As the discussion of the previous DuPont factors show, the potential for confusion between
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`Opposer’s Marks and Applicant’s Mark is substantial. It stands to reason that the adoption of a
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`confusingly similar mark by Applicant for use on goods that are identical or highly related to Opposer’s
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`goods presents at least the potential for substantial confusion. Further, Applicant’s goods sold under
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`Applicant’s Mark are directly competitive to Opposer’s goods sold under the Opposer’s Marks, in that
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`the goods are substantially similar. The potential for confusion as to the source of these competitive
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`products is substantial, particularly because both parties use the internet and trade shows to market and
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`sell their products, a worldwide marketplace with millions of potentially confused consumers. Thus,
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`this DuPont also favors the denial of Applicant’s Mark because of a likelihood of confusion with
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`Opposer’s Marks
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`d.
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`Applicant’s Mark will Dilute Opposer’s Marks as a Matter of Law.
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`Registration should also be denied when a mark will dilute a famous senior mark, in violation of
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`§ 43(c) of the Lanham Act, 15 U.S.C. § 1125(c). See 15 U.S.C. §1063(a). By failing to timely deny
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`Opposer’s Requests, Applicant has admitted that Opposer’s Marks are famous. [Dawson Decl. Ex. A at
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`Req. No. 5.] By failing to timely deny Opposer’s Requests, Applicant has also admitted that due to the
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`similarity of its mark with Opposer’s Marks, actual confusion has arisen. [Dawson Decl. Ex. A at Req.
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`Nos. 10-12.] The statutory definition of dilution by blurring is defined in the Lanham Act as an
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`“association arising from the similarity between a mark or trade name and a famous mark that impairs
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`the distinctiveness of the famous mark.” 15 U.S.C. § 1125(c)(B). Marks need not be identical or even
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`substantially similar to the opposer's famous mark in order for dilution by blurring to be found. Nike v.
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`Maher, 100 U.S.P.Q.2d 1019, 1028-30, 2011 WL 3828723, at *13-14 (TTAB Aug. 9, 2011). Instead,
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`“blurring occurs when a substantial percentage of consumers, upon seeing the junior party’s use of a
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`mark on its goods, are immediately reminded of the famous mark and associate the junior party’s use
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`with the owner of the famous mark, even if they do not believe that the goods come from the famous
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`mark’s owner.” Id. at *14.
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`Since, by its failure to timely deny Opposer’s Requests, Applicant has admittedly adopted and
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`used a confusingly similar mark, Opposer’s Marks will be diluted because the capacity of those marks to
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`identify Opposer’s products will be weakened and lessened. This is dilution by blurring and is the type
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`of encroachment that the Federal Trademark Dilution Act was intended to prevent. As stated in Eli Lilly
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`& Co. v. Natural Answers, Inc.: “The theory of dilution by blurring is that if a famous commercial mark
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`exists, and other non-famous similar marks are permitted to be used in commerce, the famous mark will
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`lose more and more of its distinctiveness with each new similar mark.” 86 F.Supp.2d 834 (S.D. Ind.
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`2000). In addition to the likelihood of confusion under Section 2(d), Applicant’s Mark should also be
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`denied under the separate and distinct doctrine of dilution by blurring under 15 U.S.C. § 1125(c) as there
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`are no disputed facts.
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`IV. CONCLUSION.
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`By failing to timely deny Opposer’s Requests, Applicant has admitted all of the essential facts
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`supporting findings of a likelihood of confusion and likelihood of dilution by blurring. There are
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`therefore no genuine issues of material fact to be tried, and this matter should be decided as a matter of
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`law in Opposer’s favor. For all of these reasons, Opposer respectfully requests that the Board sustain
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`Opposer’s Notice of Opposition and refuse registration of Applicant’s Mark.
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`Respectfully submitted this 8th day of April 2021.
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`Bates & Bates, LLC
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`/Andrea E. Bates/
`Andrea E. Bates
`1890 Marietta Blvd NW
`Atlanta, Georgia 30318
`Attorneys for Plaintiff
`Gibson Brands, Inc.
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`Phone: (404) 228-7439
`Email: abates@bates-bates.com
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`CERTIFICATE OF SERVICE
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`The undersigned attorney hereby certifies that a true and correct copy of the foregoing Motion
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`for Summary Judgment has been served, via email, on the 8th day of April 2021 to:
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`RONALD S. BIENSTOCK
`SCARINCI HOLLENBECK, LLC
`1100 VALLEY BROOK AVE, P.O. BOX 790
`LYNDHURST, NJ 07071
`UNITED STATES
`itukhtin@sh-law.com, rbienstock@sh-law.com,
` zklein@sh-law.com, trademarks@SH-LAW.COM
`Phone: 201-896-4100
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`/ Andrea E. Bates /
`ANDREA E. BATES
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK
`TRIAL AND APPEAL BOARD
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`))
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`))
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`) Opposition No.: 91256438
`) App. No.: 88/364,718
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`)))
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`))
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`GIBSON BRANDS, INC.,
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`Opposer,
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`v.
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`Collings Guitar, Inc.
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`Applicant.
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`__________________________________________)
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`DECLARATION OF KEVIN DAWSON IN SUPPORT OF OPPOSER GIBSON BRANDS,
`INC.’S MOTION FOR SUMMARY JUDGMENT
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`I, Kevin Dawson, declare as follows:
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`1.
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`I am an attorney at the law firm of Bates & Bates, LLC and am one of the attorneys
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`representing Gibson Brands, Inc. (“Opposer”) in this action against Collings Guitar, Inc. (“Applicant”).
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`I am over the age of twenty-one, I am competent to make this Declaration, and the facts set forth in this
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`Declaration are based on my personal knowledge.
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`2.
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`Attached hereto as Exhibit A is a true and correct copy of Gibson’s First Requests for
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`Admissions (“Requests”) to Applicant, dated February 2, 2021. Applicant did not timely reply to the
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`Requests.
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`3.
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`Attached hereto as Exhibit B are current printouts of USPTO electronic database records
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`showing the status and title of Gibson’s Registration Nos. 1,020,485; 2,016,857; and 2,367,539.
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`4.
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`Attached hereto as Exhibit C is a true and correct copy of Celotex Corp. v. Catrett, 477
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`U.S. 317 (1986), from the Westlaw commercial database.
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`5.
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`Attached hereto as Exhibit D is a true and correct copy of In re Carney, 258 F.3d 415 (5th
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`Cir. 2001), from the Westlaw commercial database.
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`6.
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`Attached hereto as Exhibit E is a true and correct copy of United States v. 2204 Barbara
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`Lane, 960 F.2d 126 (11th Cir. 1992), from the Westlaw commercial database.
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`7.
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`Attached hereto as Exhibit F is a true and correct copy of Hulsey v. State of Texas, 929
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`F.2d 168 (5th Cir. 1991), from the Westlaw commercial database.
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`8.
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`Attached hereto as Exhibit G is a true and correct copy of Chicago Dist. Council of
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`Carpenters Pension Fund v. P.M.Q.T., 169 F.R.D. 336 (N.D. Ill. 1996), from the Westlaw commercial
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`database.
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`9.
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`Attached hereto as Exhibit H is a true and correct copy of Eli Lilly & Co. v. Natural
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`Answers, Inc. 86 F.Supp.2d 834 (S.D. Ind. 2000), from the Westlaw commercial database.
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`I declare under penalty of perjury of the laws of the United States that the foregoing is true and
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`correct.
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`Dated: April 8, 2021
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`/Kevin Dawson/
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`Kevin Dawson
`Bates & Bates, LLC
`1890 Marietta Blvd NW
`Atlanta GA, 30318
`kdawson@bates-bates.com
`Attorney for Opposer
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`Exhibit A
`Exhibit A
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Gibson Brands, Inc.
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` Opposer,
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`Collings Guitar, Inc.
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` Applicant.
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`Opposition No. 91256438
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`Application No. 88/364,718
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`OPPOSER'S FIRST SET OF REQUESTS FOR ADMISSIONS
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`Pursuant to Rules 26 and 36 of the Federal Rules of Civil Procedure and 37 C.F.R. §
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`2.120, Opposer Gibson Brands, Inc. hereby requests that Applicant Collings Guitar by its
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`undersigned counsel, admit to the truth of the following, separately, fully, in writing, and under
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`oath, and deliver its admissions to the offices of Opposer’s attorneys, Bates & Bates, LLC, at
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`abates@bates-bates.com​,
`​kschuettinger@bates-bates.com​,
`​kdawson@bates-bates.com​,
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`within thirty (30) days of service of this request.
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`and
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`DEFINITIONS
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`1.
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`”​Opposer” means Gibson Brands, Inc.,
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`the Opposer in the above-captioned
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` proceeding.
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`2.
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` “Applicant,” “you,” or “your” means Applicant Collings Guitar, its subsidiaries,
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`divisions, predecessor, and successor companies, affiliates, parents, any partnership or joint
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