BULKY DOCUMENTS
`(Exceeds 300 pages)
`
`Proceeding/Serial No: 92049332
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`Filed: 8-5-09
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`Title: STK, LLC, v. BACKRACK, INC.
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`Part 1 of 4
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`Processed by Curtis Puryear
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`

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`up TTAB
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`3000 Two Logan Square
`Eighteenth and Arch Streets
`.
`.
`Philadelphia, PA 19103-2799
`215.981.4000
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`Fax 215'981*4750
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`Paul]. Kennedy
`direct dial: 215_981_4194
`direct fax: 215-98l~4750
`kennedyp@pepper1aw.com
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`August 5, 2009
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`VIA U.S. EXPRESS IKAIL
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`IWAILING LABEL N0. EV 823088 705 US
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`United States Patent and Trademark Office
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`Trademark Trial and Appeal Board
`P.O. Box 1451
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`Alexandria, VA 22313-1451
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`1
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`I
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`RE:
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`STK, LLC v. BACKRACK, INC.
`Cancellation No. 92049332
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`Mark: BACKRACK, Registration No. 3,014,986
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`Dear Sir or Madam:
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`Enclosed please find the following documents for filing:
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`Registrant’s Memorandum of Law in Opposition to Petitioner’s Motion
`l.
`for Summary Judgment and in Support of Registrant’s Cross-Motion for Summary Judgment;
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`Declaration of Adrian Jayne in Support of Registrant’s Opposition to
`2.
`Petitioner’s Motion for Summary Judgment and in Support of Registrant’s Cross-Motion for
`Summary Judgment with Exhibits;
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`3.
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`Declaration of J. Anthony Lovensheimer with Exhibits; and
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`lllllllIllllllllllllllllllllllllllllllllllllllllll
`08-05-2009
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`"HE".
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`3
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`Philadelphia
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`Boston
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`Washington, D.C.
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`Detroit
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`New York
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`P.ttsburgh
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`Bcrwyn
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`Harrisburg
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`Orange County
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`Princeton
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`Wilmington
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`www.peppcrlaw.cnm
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`J?tJILL1II1iltI1I1L,LP
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`United States Patent and Trademark Office
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`Trademark Trial and Appeal Board
`August 5, 2009
`Page 2
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`4.
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`Certificate of Mailing and Service.
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`Sincerely yours,
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`
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`Paul J. Kef1nedy\
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`PJK/tc
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`Enclosures
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`cc:
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`John M. Adams, Esquire
`(w/enclosures via US First Class Mail)
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`STK, LLC
`
`Petitioner
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`v.
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`BACKRACK, INC.
`
`Registrant/Respondent
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`Cancellation No. 92049332
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`Mark: BACKRACK
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`Registration No. 3014986
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`Filed: February 24, 2004
`Registered: November 15, 2005
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`2
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`:
`:
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`CERTIFICATE OF MAILING AND SERVICE
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`CERTIFICATE OF MAILING
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`U.S. EXPRESS MAIL
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`MAILING LABEL NO. EV 823088705 US
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`DATE OF DEPOSIT: August 5, 2009
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`1, PAUL J. KENNEDY, hereby certify that:
`
`Registrant’s Memorandum of Law in Opposition to Petitioner’s Motion
`1.
`for Summary Judgment and in Support of Registrant’s Cross-Motion for Summary Judgment;
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`Declaration of Adrian Jayne in Support of Registrant’s Opposition to
`2.
`Petitioner’s Motion for Summary Judgment and in Support of Registrant’s Cross-Motion for
`Summary Judgment with Exhibits; and
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`3.
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`Declaration of J. Anthony Lovensheimer with Exhibits,
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`are being deposited with the United States Postal Service “Express Mail Post Office to
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`Addressee” service under 37 CFR §1.10 on the date indicated above and is addressed to the
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`United States Patent and Trademark Office, Trademark Trial and Appeal Board, P.O. Box 1451,
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`Alexandria, Virginia 22313-1451.
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`

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`CERTIFICATE OF SERVICE
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`1, PAUL J. KENNEDY, hereby certify that on August 5, 2009, true and correct
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`copies of the foregoing (1) Registrant’s Memorandum of Law in Opposition to Petitioner’s
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`Motion for Summary Judgment and in Support of Registrant’s Cross-Motion for Summary
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`Judgment; (2) Declaration of Adrian Jayne in Support of Registrant’s Opposition to Petitioner’s
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`Motion for Summaly Judgment and in Support of Registrant’s Cross-Motion for Summary
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`Judgment with Exhibits; and (3) Declaration of J. Anthony Lovensheimer with Exhibits was
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`served upon counsel for Petitioner, STK, LLC, by U.S. First Class Mail, postage prepaid, as
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`follows:
`
`John M. Adams, Esquire
`PRICE AND ADAMS, PC
`4135 Brownsville Road
`P.O. Box 98127
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`Pittsburgh, PA 15227
`Attorneys for Petitioner
`STK, LLC
`
`
` Paul J. Kennedy, Esq 're
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`er,
`'
`J. Anthony Loven
`PEPPER HAMILTON LLP
`
`3000 Two Logan Square
`Eighteenth & Arch Streets
`Philadelphia, PA 19103-2799
`Tel: (215) 981-4000
`Fax: (215)981-4750
`
`Attorneys for Registrant
`Backrack, Inc.
`
`Dated: August 5, 2009
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`U.S. EXPRESS MAIL
`EV 823088705 US
`
`STK, LLC
`
`Petitioner
`
`v.
`
`Cancellation No. 92049332
`
`Mark: BACKRACK
`
`Registration No. 3014986
`
`BACKRACK, INC.
`
`:
`:
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`Filed: February 24, 2004
`Registered: November 15, 2005
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`Registrant/Respondent
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`REGISTRANT’S MEMORANDUM OF LAW IN OPPOSITION TO
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`PETITIONER’S MOTION FOR SUMMARY JUDGMENT AND
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`IN SUPPORT OF REGISTRANT’S CROSS-MOTION FOR SUMMARY JUDGMENT
`
`Paul J. Kennedy
`J. Anthony Lovensheimer
`PEPPER HAMILTON LLP
`
`3000 Two Logan Square
`Eighteenth & Arch Streets
`Philadelphia, PA 19103-2799
`Te1.: (215) 981-4000
`Fax: (215)981-4750
`
`Attorneys for Respondent
`Backrack, Inc.
`
`

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`TABLE OF CONTENTS
`
`E3132
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`I.
`
`II.
`
`INTRODUCTION ............................................................................................................... .. 1
`
`STATEMENT OF FACTS .................................................................................................. .. 1
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`III. ARGUMENT ...................................................................................................................... .. 5
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`A.
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`Summary Judgment Standard ..................................................................................... .. 5
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`B. Registrant’s BACKRACK Mark Is Not Generic ........................................................ .. 6
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`1. The Term BACKRACK Is Not A “Compound Word” ....................................... .. 7
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`2. Registrant Has Properly Used The BACKRACK Mark ...................................... .. 9
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`3. Third Party Use And Understanding Of The BACKRACK Mark .................... .. 13
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`4. Registrant Has Consistently Policed Use Of The BACKRACK Mark .............. .. 14
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`5. Petitioner Has Provided No Admissible Evidence Of Consumer Understanding
`Of The BACKRACK Mark ............................................................................... .. 16
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`C.
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`The Board Should Not Consider Petitioner’s Exhibits And Testimony ................... .. 19
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`IV. CONCLUSION ................................................................................................................. .. 21
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`

`
`TABLE OF AUTHORITIES
`
`CASES
`
`Page(s)
`
`Bellsouth Corp. v. Datanational Corp.,
`60 F.3d 1565, 35 U.S.P.Q.2d 1554 (Fed. Cir. 1995) ............................................................. ..16
`Berner Int’l. Corp. v. Mars Sales Co.,
`987 F.2d 975, 26 U.S.P.Q.2d 1044 (3rd Cir 1993) ................................................................ ..16
`Birtcher Electro Medical Systems, Inc. v. Beacon Laboratories, Inc.,
`738 F. Supp. 417, 16 U.S.P.Q.2d 1411 (D. Colo. 1990) ........................................................ ..12
`Caesar's World, Inc. v. Milanian,
`
`247 F. Supp. 2d 1171 (D. Nev. 2003) .................................................................................... ..18
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986) ................................................................................................................. ..5
`Colt Defense LLC v. Bushmaster Firearms, Inc.,
`2005 U.S. Dist. LEXIS 20874 (D. Maine 2005) .................................................................... ..12
`Copelands’Entes. Inc. v. CNVInc.,
`20 U.S.P.Q.2d 1295 (Fed. Cir. 1991) ....................................................................................... ..5
`CPC International, Inc. v. Balzola Foods Corp.,
`224 U.S.P.Q. 85 (S.D. Fla. 1984) .................................................................................... ..10, 11
`Cumnzins Engine Co, Inc. v. Continental Motors Corp.,
`359 F.2d 892, 149 U.S.P.Q. 559 (CCPA 1966) ....................................................................... ..8
`Grooms v. Legge,
`2009 U.S. Dist. LEXIS 43526 (S.D. Cal. May 22, 2009) ...................................................... ..19
`H. Marvin Ginn Corp. v. International Association ofFire Chiefs, Inc.,
`782 F.2d 987, 228 U.S.P.Q. 528 (Fed. Cir. 1986) ................................................................... ..6
`In the Matter ofABCOR Development Corp.,
`588 F.2d 811, 200 U.S.P.Q. 215 (CCPA 1978) ....................................................................... ..8
`In re Anzerican Fertility Society,
`188 F.3d 1341, 51 U.S.P.Q.2d 1832 (Fed. Cir. 1999) ......................................................... ..6, 8
`In re Dial—A—Mattress,
`
`240 F.3d 1341, 57 U.S.P.Q.2d 1807 (Fed. Cir. 2001) ............................................................. ..8
`In re Dugger,
`2005 TTAB LEXIS 462 (Serial No. 78207954) (TTAB October 27, 2005).......................20
`In re Gould Paper Corp.,
`834 F.2d 1017,5 U.S.P.Q.2d 1110 (Fed. Cir. 1987) ............................................................ ..7, 8
`In re Merrill Lynch, Pierce, Fenner, and Smith, Inc.,
`828 F.2d 1567, 4 U.S.P.Q.2d 1141 (Fed. Cir. 1987) ..................................................... ..6, 7, 14
`In re Montrachet S.A.,
`
`878 F.2d 375, 11 U.S.P.Q.2d 1393 (Fed. Cir. 1989) ............................................................... ..6
`In re Northland Aluminum Products, Inc.,
`777 F.2d 1556, 227 U.S.P.Q. 961 (Fed. Cir. 1985) ................................................................. ..7
`In re Steelbuilding. com,
`415 F.3d 1293, 75 U.S.P.Q. 2d 1420 (Fed. Cir. 2005) ............................................................ ..8
`
`

`
`Liberto v. D.F. Staufler Biscuit Co., Inc.,
`441 F.3d 318, 77 U.S.P.Q.2d 1981 (5th Cir. 2006) ............................................................... ..16
`Magic Wand Inc. v. RDB, Inc.,
`940 F.2d 638, 19 U.S.P.Q.2d 1551 (Fed. Cir. 1991) ......................................................... ..7, 17
`National Nonwovens v. Consumer Products Enterprises, Inc.,
`397 F. Supp. 2d 245, 78 U.S.P.Q.2d 1526 (D. Mass. 2005) .................................................. ..12
`Olde Tyme Foods Inc. v. Roundy ’s Inc.,
`961 F.2d 200, 22 U.S.P.Q.2d 1542 (Fed. Cir. 1992) ............................................................... ..5
`Opryland USA Inc. v. The Great American Music Show Inc.,
`970 F.2d 847, 23 U.S.P.Q.2d 1471 (Fed. Cir. 1992) ............................................................... ..5
`Raccioppi v. Apogee Inc,
`47 U.S.P.Q.2d 1368 (TTAB 1998) ........................................................................................ ..20
`Sweats Fashions Inc. v. Pannill Knitting Co., Inc.,
`833 F.2d 1560, 4 U.S.P.Q.2d 1793 (Fed. Cir. 1987) ............................................................... ..5
`Ty Inc. v. Softbelly ’s Inc.,
`353 F.3d 528 (7th Cir. 2003) ................................................................................................... ..7
`Zimmerman v. Nat '1. Assoc. ofRealtors,
`70 U.S.P.Q.2d 1425 (TTAB 2004) ...................................................................................... ..6, 7
`OTHER AUTHORITIES
`
`Federal Rule of Civil Procedure 56 ............................................................................. ..5, 19, 20, 21
`
`

`
`I.
`
`INTRODUCTION
`
`Registrant Backrack, Inc. (“Registrant”), through its undersigned counsel, hereby submits
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`Registrant’s Memorandum in Opposition to Petitioner’s Motion for Summary Judgment (“Petitioner’s
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`Motion”) and in Support of Registrant’s Cross-Motion for Summary Judgment (“Registrant’s Cross-
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`Motion”).
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`This matter is a cancellation proceeding brought by Registrant’s disgruntled competitor,
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`whose affiliated company had served as Registrant’s primary U.S. distributor for thirteen years. That
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`prior relationship is now the subject of a collection lawsuit. Notwithstanding Petitioner’s retaliatory
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`motivation, Petitioner’s Motion lacks merit because Petitioner fails to provide any evidence (admissible
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`or otherwise) to establish that Registrant’s registered trademark BACKRACK® (hereinafter
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`“BACKRACK Mark”) is recognized by the relevant consuming public as the name for a genus of goods
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`rather than as an indicator of Registrant as the source for quality pickup truck accessories.
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`To the contrary, the undisputed evidence establishes: (1) Registrant’s consistent use of
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`the BACKRACK Mark as a source identifier for quality pickup truck accessories; (2) non-use of the
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`BACKRACK Mark by Registrant’s competitors, including Petitioner; and (3) the industry’s consistent
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`and exclusive use of the BACKRACK Mark as Registrant’s brand name. Therefore, Petitioner fails to
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`meet the very high burden required to prove that the BACKRACK Mark has become generic because the
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`undisputed evidence confirms that the BACKRACK Mark is a strong trademark associated exclusively
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`with Registrant. Therefore, Petitioner’s Motion should be denied and Registrant’s Cross—Motion for
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`summary judgment granted.
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`II.
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`STATEMENT OF FACTS
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`Adrian Jayne and his father, Gil Jayne, started Backrack in 1988 to develop and
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`manufacture pickup truck accessories, including the patented headache rack/cab guard invented by Gil
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`Jayne. See Declaration of Adrian Jayne (“Jayne Dec.”) at 1] 4, Ex. 1. The BACKRACK Mark was
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`conceived by Gil Jayne in 1988 and has been used continuously ever since. Id. at 1] 5.
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`

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`Before and after Registrant adopted the BACKRACK Mark, no manufacturers had ever
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`used the term “backrack” in connection with pickup truck accessories. Id. at 111] 6-7, 69, Ex. 40.
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`Registrant obtained a federal trademark registration for the BACKRACK Mark in 2005 (Registration No.
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`3014986). See Declaration of J. Anthony Lovensheimer (“Love. Dec.”) at Ex. L. BACKRACK products
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`have been advertised, offered for sale, and sold throughout the United States by Registrant, and by
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`Registrant’s distributors, since 1989 through catalog and other retail advertising, point of sale advertising
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`at various sales and distribution outlets, and through the Internet. Jayne Dec. at 1] 9.
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`From 1994 through 2007, Backrack’s primary distributor in the United States was Armor
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`Deck LLC (“Armor Deck”), which was (and continues to be) owned by Petitioner’s majority owner,
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`Steve Setteducati (“Setteducati”). Id. at 1] 13. Armor Deck is Petitioner’s “Featured Partner”. Love. Dec.
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`at Ex. H (Registrant’s Requests for Admission at Ex. F) and Ex. J (Petitioner’s Answers Requests for
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`Admission Nos. 58-59). Armor Deck advertised and used the BACKRACK Mark as a trademark for 13
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`years without protest or challenge. See Jayne Dec. at 11 14. However, the relationship changed due to a
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`pricing dispute in late 2007. Id. at 11 15, Ex. 2.
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`After the dispute arose, Petitioner announced its plan to introduce virtually identical
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`copies of the BACKRACK line of headache racks/cab guards: the PRO RACK and PRO GUARD in
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`October 2007. Id. at 1111 16, 25. Armor Deck has advertised and sold Petitioner’s headache racks/cab
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`guards since their introduction. Id. at 11 17, Ex. 3. Thus, ever since October 2007, Petitioner has been one
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`of Backrack’s principal competitors. Id. at 1] 18.
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`Due to various issues involving Petitioner and its affiliate, Armor Deck, Backrack ended
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`its relationship with Armor Deck. Id. Backrack has since sued Annor Deck to recover money owed to it.
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`Id. at 11 20. Only after Backrack initiated the collection suit, did Petitioner institute the present
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`cancellation proceeding. Id. at 1] 21.1
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`‘ Petitioner and Armor Deck have extensively advertised Petitioner’s products in print and Internet advertisements. Id.
`at 111] 22-24, Exs. 4-8; Love. Dec. at Ex. H (Registrant’s Admission Requests Exs. D-G) and Ex. J (Petitioner’s Answers to
`Admission Requests Nos. 58 and 64). Neither Petitioner nor Armor Deck uses the term “backrack” in any variation to identify or
`(continued...)
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`

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`Registrant has advertised BACKRACK products through print advertisements including,
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`but not limited to flyers, pamphlets, product guides, and point of sale advertisements. Id. at 1] 27.
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`BACKRACK products have also been advertised through numerous Internet websites, including but not
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`limited to those owned by Registrant. Id. at 1] 51, Ex. 26. Registrant also prominently displays the
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`BACKRACK Mark in large white font which effectively serve as moving billboards advertising the
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`BACKRACK Mark. Id. at 1 28.
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`Registrant has also made and provided pre-approved advertising materials to its
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`distributors. Id. at 111] 29, 49-50, Exs. 24 and 25. This material has been made available via the Internet,
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`through email or through a CD Rom. Id. Registrant created this content to create a more uniform
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`presentation of the BACKRACK brand and to ensure proper use and marking of the BACKRACK Mark
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`in such materials. Id. Registrant’s distributors can modify the templates as necessary to fit within its
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`catalog or other printed/digital advertising material. Id. at 11 30.
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`Registrant has consistently utilized the BACKRACK Mark in its advertisements in a
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`manner where in the overall context, it is apparent to consumers that BACKRACK is a brand name for
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`the pickup truck accessories depicted. Id. at 1] 31. Registrant has done so through the use of a variety of
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`techniques, including: (1) use of a “TM” designation; (2) prominent use of the BACKRACK Mark in a
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`banner heading; (3) use of images of the BACKRACK Mark applied to products; (4) use of generic
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`product names such as “truck rack” or “cab guard” with BACKRACK; (5) use of all or initial capital
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`letters; (6) use of bold font; and (7) use of larger font size. Id. at 111] 31-50, Exs. 10-25. Registrant has
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`also used the notice “BACKRACK IS A TRADEMARK OF BACKRACK INC.” in its advertising. Id. at
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`(continued...)
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`Instead, they only use the brand names, PRO RACK and PRO GUARD, and the generic
`Id.
`describe Petitioncr’s products.
`product names, “cab racks," “cab guards” and “truck racks.” Id.
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`

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`W 42, 44-46, Exs. 18, 20-22. Registrant has also applied a decal with the BACKRACK Mark marked
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`with a “TM” to all BACKRACK headache racks/cab guards since 1988. Id. at 1] 32, Ex. 9.
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`BACKRACK products are also advertised at numerous third-party websites where
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`BACKRACK products are typically categorized as “cab guards”, “truck headache racks”, “headache
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`racks”, “truck racks”, or “window guards”. Id. 111] 56-68, Exs. 28-39; see also Love. Dec. at Exs. A1-A7,
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`A9, A11, A12, A14-A34. Third parties, including Armor Deck, also consistently use the BACKRACK
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`Mark as the source identification. See Jayne Dec. at 111] 40, 53-55, 61-65, 67-68, 70, 80-81, Exs. 16, 27,
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`32-36, 38-39, 41, 50 and 51; see also Love. Dec. at Exs. Al-A7, A9, A10-11, A13-34.
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`Other manufacturers of similar products are also identified as “cab guard,” “cab rack,” or
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`“cab protector.” See Jayne Dec. at '11 69, Ex. 40. None of them use the term “backrack” in any manner.
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`Id. Armor Deck continued to advertise BACKRACK products along with Petitioner’s under the general
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`category “cab guards”. Id. at 1] 53, Ex. 27.
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`Registrant’s counsel monitors the Internet and U.S. and Canadian trademark registries to
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`identify potentially confusing or improper use of BACKRACK. Id. at 11 71. Registrant has stopped
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`numerous third parties from using the BACKRACK Mark in potentially damaging ways, and protected its
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`trademark rights through opposition proceedings. See Id. at 111] 72-77, Exs. 42-48. Two parties that
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`Registrant has had to pursue are companies with whom Petitioner has stated that it has a “confidential”
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`business relationship. See Id. at ‘W 74-75; Love. Dec. at Ex. I (Petitioner’s Answers to Respondent’s
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`Second Set of Interrogatories and Requests for Production of Documents Addressed to Petitioner at Nos.
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`18 and 21). Indeed, Petitioner lists both parties on its website under “FEATURED AUTOMOTIVE
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`RELATED LINKS.” See Jayne Dec. at 11 75; Love. Dec. at Ex. H (Registrant’s Admission Requests Ex.
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`F) and Ex. J (Petitioner’s Answers to Admission Requests No. 58). Registrant has also recovered domain
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`names, including one from Armor Deck. See Jayne Dec. at 1] 52, Ex. 26.
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`The term “backrack” is also used for unrelated goods and services, but Backrack has
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`taken no action against these uses. Id. at 1] 78, Ex. 49; Love. Dec. at Exs. B4-B28. The articles
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`

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`discovered in Nexis search reports demonstrated no use of “backrack” or “back rack” in connection with
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`trucks other than three references to Registrant. See Love. Dec. at Exs. B1-B28.
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`After 20 years of extensive advertising and development, BACKRACK identifies the
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`source of quality pickup truck accessories originating from Registrant. See Jayne Dec. at 1] 84.
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`Registrant’s competitors have not adopted the term “backrack”, nor have distributors identified any
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`general category of goods as the “backrack”: instead; the generic terms “headache rack,” “cab guard,” or
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`“truck rack” are used to describe the general type of products. Id. at Exs. 4-7, 40; see also Love. Dec. at
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`Exs. A1-A34. Petitioner’s retaliatory petition to cancel Registrant’s BACKRACK Mark would destroy
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`the value and goodwill of Registrant’s BACKRACK Mark established through Registrant’s 20 years of
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`exclusive use.
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`III.
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`ARGUMENT
`
`A.
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`Summary Judgment Standard
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`Summary judgment is appropriate for disposing of cases in which there are no genuine
`
`issues of material fact in dispute, thus leaving the matter to be resolved as a matter of law. Fed. R. Civ. P.
`
`56(c). The party moving for summary judgment bears the initial burden of demonstrating the absence of
`
`any genuine issue of material fact and that it is entitled to judgment as a matter of law. See Celotex Corp.
`
`v. Catrett, 477 U.S. 317 (1986); Copelands’Entes. Inc. v. CNVInc., 20 U.S.P.Q.2d 1295, 1297-8 (Fed.
`
`Cir. 1991); Sweats Fashions Inc. v. Pannill Knitting Co., Inc., 833 F.2d 1560, 1562, 4 U.S.P.Q.2d 1793
`
`(Fed. Cir. 1987); TBMP § 528.01.
`
`To establish that a genuine factual dispute exists, “the nonmoving party ‘need only
`
`present evidence from which a jury might return a verdict in [its] favor.”’ Olde Tyme Foods Inc. v.
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`Roundy '5' Inc., 961 F.2d 200, 202, 22 U.S.P.Q.2d 1542 (Fed. Cir. 1992) (quoting Anderson v. Liberty
`
`Lobby, Inc-., 477 U.S. 242, 257 (1986)). The Board may not resolve issues of material fact against the
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`non-moving party; it may only ascertain whether such issues are present. See Opryland USA Inc. v. The
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`Great American Music Show Inc., 970 F.2d 847, 850, 23 U.S.P.Q.2d 1471, 1472 (Fed. Cir. 1992).
`
`

`
`The undisputed facts of record establish that there are no genuine issues of material fact
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`as to: (1) Registrant’s consistent and exclusive use of the BACKRACK Mark to indicate the source of
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`pickup truck accessories; (2) use of the BACKRACK Mark as a source identifier for Registrant’s goods
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`by the automotive parts industry (including Petitioner and its affiliate, Armor Deck); (3) the availability
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`and use of generic names to describe the parties’ goods, including “headache racks”, “cab guards” and
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`“truck racks”; and (4) the complete lack of evidence of any third party use of the term “backrack” in
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`connection with truck accessories other than as a source identifying reference to Registrant.
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`The evidence upon which Petitioner attempts to rely to overcome the clear weight of
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`dispositive evidence supporting Registrant’s Cross—Motion is not only unpersuasive but predominately
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`inadmissible because it is either unauthenticated or inadmissible hearsay. As a result, for the reasons set
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`forth below, the Board should not consider the proffered evidence in the present motions. However, even
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`if the Board were to consider Petitioner’s evidence, the overwhelming weight of all the relevant evidence
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`weighs decidedly in Registrant’s favor. Therefore, Registrant, not Petitioner, is entitled to judgment as a
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`matter of law that the BACKRACK Mark is not generic. As a result, the Board should deny Petitioner’s
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`Motion and grant Registrant’s Cross—Motion.
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`B.
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`Registrant’s BACKRACK Mark Is Not Generic
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`The Board employs a two-part test to determine genericness: (1) What is the class of
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`goods or services at issue?; and (2) Does the relevant public understand the designation primarily to refer
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`to that class of goods or services? H. Marvin Ginn Corp. v. International Association ofFire Chiefs, Inc.,
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`782 F.2d 987, 990, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986). See also In re American Fertility Society,
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`188 F.3d 1341, 51 U.S.P.Q.2d 1832 (Fed. Cir. 1999).
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`The critical issue is whether members of the relevant public primarily use or understand
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`the term to refer to the genus or category of goods or services in question. See In re Montraclzet S.A., 878
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`F.2d 375, ll U.S.P.Q.2d 1393, 1394 (Fed. Cir. 1989); In re Merrill Lynch, Pierce, Fenner, and Smith,
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`Inc., 828 F.2d 1567, 4 U.S.P.Q.2d 1141 (Fed. Cir. 1987); and Zimmerman v. Nat ’l. Assoc. ofRealtors, 70
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`U.S.P.Q.2d 1425 (TTAB 2004). Petitioner bears the burden of proving that the BACKRACK Mark has
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`become generic by a preponderance of the evidence. Magic Wand Inc. v. RDB, Inc., 940 F.2d 638, 19
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`U.S.P.Q.2d 1551 (Fed. Cir. 1991); Zimmerman, 70 U.S.P.Q.2d at 1425. However, the Board should also
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`be mindful that “To determine that a trademark is generic and thus pitch it into the public domain is a
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`fateful step.” Ty Inc. v. Softbelly’s Inc., 353 F.3d 528, 531 (7th Cir. 2003).
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`Evidence of the relevant public’s understanding of a term may be obtained from any
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`competent source, including testimony, surveys, dictionaries, trade journals, newspapers, and other
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`publications. See In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 U.S.P.Q. 961 (Fed. Cir.
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`1985). See also Magic Wand, 940 F.2d at 640, 19 U.S.P.Q.2d at 1553; and Merrill Lynch, 828 F.2d at
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`1570, 4 U.S.P.Q.2d at 1142. Petitioner fails to provide any evidence of this and as a result fails to meet
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`its challenging burden of proof by failing to establish that the BACKRACK Mark is understood by the
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`relevant public primarily to refer to the genus of goods rather than as the source of the particular goods.
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`In fact, the evidence of record establishes the opposite: the BACKRACK Mark is used and understood by
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`the relevant public to refer only to Registrant as the source of the relevant goods.2
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`1.
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`The Term BACKRACK Is NotA “Compound Word”
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`Petitioner misguidedly attempts to minimize the glaring evidentiary shortcomings of its
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`case by asserting that it should be held to a lower standard of proof pursuant to In re Gould Paper Corp.,
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`834 F.2d 1017,5 U.S.P.Q.2d 1110 (Fed. Cir. 1987). Petitioner’s attempt to interject the Gould analysis to
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`this matter is inappropriate and unsupported by any evidence.3
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`The Gould test is only applicable, however, to “compound terms formed by the union of
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`words” where the public understands the individual terms to be generic for a genus of goods or services,
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`and the joining of the individual terms into one compound word lends “no additional meaning to the
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`2 The genus of goods at issue are the goods recited in the registration namely “Pick-up truck racks, namely, headache
`racks designed to protect the cab and mount a variety of accessories, namely, light, antenna and toolbox brackets. See Magic
`Wand, 940 F.2d at 640, 19 U.S.P.Q.2d at 1552.
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`3 For the reasons discussed infra at Section C, Registrant maintains that Petitioner has failed to properly introduce any
`dictionary references to “back" or “rack” because the dictionary relied on by Petitioner is only available on-line at
`www.thcfrccdictionary.com and the printouts attached at Petitioner’s Ex. 6 (Exs. A and B) have not been properly authenticated.
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`term.” In re Dz'al~A-Mattress, 240 F.3d 1341, 1345, 57 U.S.P.Q.2d 1807 (Fed. Cir. 2001) (Board
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`reversed, 1-800-M-A-T-R—E—S—S held not generic). Under Gould,
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`the burden of proving the term generic
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`can be met by producing evidence that m of the constituent words is generic, and that “the separate
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`words joined to form a compound have a meaning identical to the meaning common usage would ascribe
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`to those words as a compound.” Gould, 834 F.2d at 1018, 5 U.S.P.Q.2d at 1110.
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`Here, Petitioner has failed on both counts. Petitioner has failed to produce any evidence
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`that gc_h of the constituent terms “back” and “rack” is generic for the relevant goods and failed to provide
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`any evidence of the public’s understanding of BACKRACK as the composite term. Moreover, the
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`definitions relied on by Petitioner (to the extent that they are even admissible) make no reference to any
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`pickup truck or pickup truck accessories. Indeed, the dictionary entries alone provide no basis for the
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`conclusion that BACKRACK is generic for the relevant goods. Therefore, BACKRACK is not a
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`compound word that can be rendered generic based solely on Petitioner’s tortured interpretation of the
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`definitions of the constituent tenns pursuant to the holding in Gould.
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`The cases relied on by Petitioner provide no support for Petitioner’s position. See e. g. In
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`re Steelbuildingcom, 415 F.3d 1293, 75 U.S.P.Q. 2d 1420 (Fed. Cir. 2005) (genericness finding reversed
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`because, inter alia, the Board “erroneously .
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`.
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`. discounted the ambiguities and multiple meanings in the
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`mark .
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`. ..”); In re American Fertility Society, 188 F.3d 1341, 51 U.S.P.Q. 2d 1832 (Fed. Cir. 1999)
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`(Board incorrectly assumed genericness of the whole term based solely on proof of the genericness of its
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`individual terms when no evidence of the relevant public’s understanding of the phrase as a whole
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`provided)“
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`4 Petitioner also relies on In the Matter of/IBCOR Development Corp., 588 F.2d 811, 200 U.S.P.Q. 215 (CCPA 1978)
`and Cummins Engine Co., Inc. v. Continental Motors Corp., 359 F.2d 892, 149 U.S.P.Q. 559 (CCPA 1966); however, both cases
`are inapplicable.
`In ABCOR, the CCPA reversed the genericness holding.
`In Cummins, the CCPA relied on extensive evidence,
`not just basic dictionary definitions (unlike Petitioner), to determine that the term TURBODIESEL was “a natural composite term
`for designating such engines."
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`2.
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`Registrant Has Properly Used The BA CKRA CK Mark
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`Registrant has consistently used the BACKRACK Mark in its advertising materials to
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`make the relevant public aware that BACKRACK is a source of goods. As set forth in the extensive
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`Declaration of Adrian Jayne, Registrant’s President, and the attached advertising examples, Registrant has
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`used the BACKRACK Mark so that within the context of each advertisement, it is clear that Registrant’s
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`BACKRACK Mark identifies the specific goods originating from Registrant, not a general category of
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`goods. See Jayne Dec. at fifll 31-50, Exs. 10-25.
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`In particular, Registrant has routinely marked the
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`BACKRACK Mark with a “TM” symbol or otherwise set off the BACKRACK Mark through a
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`combination of capitalization, font size or style along with use of the images of the products themselves
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`bearing the BACKRACK Mark as installed on vehicles. Id. at 1] 31, Exs. 10-25. The advertisements used
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`by Registrant through the years overwhelmingly demonstrate that BACKRACK is the source of the
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`particular goods advertised and not a generic type of good. Id.
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`In addition to all of the various techniques utilized by Registrant mentioned above,
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`Registrant has also used an explicit trademark notice “BACKRACK IS A TRADEMARK OF
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`BACKRACK INC.” in its advertising. Id. at 111] 42, 44-46, Exs. 18, 20-22. Registrant has also applied a
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`decal bearing the BACKRACK Mark marked with the “TM” designation to all BACKRACK headache
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`racks/cab guards since the first sale in 1988. Id. at 1] 32, Ex. 9. These additional elements erase all doubt
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`as to how the relevant public perceives the BACKRACK Mark within the context of Registrant’s
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`advertising.
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`The commercial context of many of these advertisements within the marketplace further
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`confirm the use of BACKRACK as a brand and not as a type of good. For example, in the advertisement
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`for BACKRACK products which appeared in the 1996 Buyer’s Guide Issue of the trade magazine,
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`Trailer Body Builders, the advertisement appeared along with other manufacturers on the page under the
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`general product category “Cab Protectors.” Id. at $1 40, Ex. 16. Several other BACKRACK
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`advertisements also appeared in catalogs prepared by distributors in which the BACKRACK Mark is
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`clearly used to identify one source of the general products known as headache racks, cab guards or cab
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`protectors. Id. at 111] 40, 53-55, 61-65, 67-68, 70, 80-81, Exs. 16, 27; 32-36, 38-39, 41, 50 and 51; see also
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`Love. Dec. at Exs. Al-A34. This categorization is also made evident to consumers by the index and table
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`of contents of third party catalogs. See e. g. Jayne Dec. at Exs. 50-51.
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`Petitioner’s attack on the advertisements used by Registrant’s distributors also fails for
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`the same reasons. Indeed, in many cases, Registrant’s distributors utilized advertising materials that
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`Registrant made available to them either through e-mail or through Registrant’s Internet Websites See
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`Id. at 111] 29, 49-50, Exs. 24 and 25.
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`Rather than present any admissible or credible direct evidence of the relevant public’s
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`understanding of the BACKRACK Mark, Petitioner rests its clai