Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA501425
`ESTTA Tracking number:
`10/22/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92055084
`Plaintiff
`Salvador Lombroso
`STACEY R HALPERN
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET, 14TH FLOOR
`IRVINE, CA 92614
`UNITED STATES
`efiling@knobbe.com, stacey.halpern@knobbe.com
`Motion for Summary Judgment
`Stacey R. Halpern
`efiling@knobbe.com
`/Stacey R. Halpern/
`10/22/2012
`Motion for Summary Judgment.pdf ( 4 pages )(389233 bytes )
`Memo in Support of Motion for Summary Judgment.pdf ( 12 pages )(1094855
`bytes )
`Declaration of Stacey Halpern.pdf ( 40 pages )(3500100 bytes )
`Declaration of Salvador Lombroso.pdf ( 7 pages )(520942 bytes )
`Lombroso Exhibit 1 Part 1.pdf ( 21 pages )(3908941 bytes )
`Lombroso Exhibit 1 Part 2.pdf ( 22 pages )(4104880 bytes )
`Lombroso Exhibit 1 Part 3.pdf ( 41 pages )(4120985 bytes )
`Lombroso Exhibit 1 Part 4.pdf ( 45 pages )(4286348 bytes )
`Lombroso Exhibit 1 Part 5.pdf ( 22 pages )(3679155 bytes )
`Lombroso Exhibit 1 Part 6.pdf ( 19 pages )(1508973 bytes )
`Lombroso Exhibit 2.pdf ( 22 pages )(3801967 bytes )
`Lombroso Exhibit 3 Part 1.pdf ( 20 pages )(4203902 bytes )
`Lombroso Exhibit 3 Part 2.pdf ( 16 pages )(5144149 bytes )
`Lombroso Exhibit 4 Part 1.pdf ( 48 pages )(4399625 bytes )
`Lombroso Exhibit 4 Part 2.pdf ( 20 pages )(4733933 bytes )
`Lombroso Exhibit 4 Part 3.pdf ( 40 pages )(4043449 bytes )
`Lombroso Exhibit 5.pdf ( 4 pages )(728403 bytes )
`Lombroso Exhibit 6.pdf ( 33 pages )(5342138 bytes )
`Lombroso Exhibit 7 Part 1.pdf ( 27 pages )(4545828 bytes )
`Lombroso Exhibit 7 Part 2.pdf ( 47 pages )(4212615 bytes )
`Lombroso Exhibit 7 Part 3.pdf ( 23 pages )(4163633 bytes )
`Lombroso Exhibit 7 Part 4.pdf ( 20 pages )(3636159 bytes )
`
`

`
`LMBRSOOIN
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Salvador Lombroso,
`
`V.
`
`Petitioner
`
`3
`
`SOMA Cycle, Inc.
`
`Respondent.
`
`Cancellation No.: 92055084
`
`I hereby certify that this co
`being electronically filed WI
`through lheir web sile located
`
`ked attachments are
`and Appeal Board
`n‘
`
`/Z/1./7.
`
`Stacey R. Halpern
`
`Eg:
`
`\_/\_/\_/\_/\_/\_/\_/\_/\_/
`
`MOTION FOR SUMMARY JUDGMENT
`
`AND MOTION TO SUSPEND PROCEEDI.NG
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Dear Sir or Madam:
`
`Pursuant to Fed. R. Civ. P. Rule 56 and T.B.M.P_ § 528, Salvador Lombroso (“Petitioner”),
`
`respectfully moves the Trademark Trial and Appeal Board (the “Board”) for summary judgment in
`
`the above-referenced trademark cancellation proceeding and respectfully moves the Board to
`
`suspend the proceeding for all matters not germane to this Motion for Summary Judgment.
`
`This Motion for Summary Judgment is supported by the attached Memorandum in support
`
`of Petitioner’s Motion and the attached Declarations and exhibits, all of which are being filed
`
`concurrently herewith. Petitioner’s Motion for Summary Judgment is based upon the following:
`
`(1)
`
`The registration at issue, U S. Trademark Registration No. 3551275 for the mark
`
`LEADERLINK,
`
`is for a mechanical device that enables a braking, steering and structural
`
`connection between a bicycle and a push cart or stroller to form an unitary carrier bike for
`
`transporting an adult rider and children or other objects, and enables the bicycle brake handle to
`
`

`
`operate the brake and the bicycle handlebar to operate the steering on the push cart or stroller
`
`portion of the carrier bike sold as an integral component of a push cart or stroller that can operate
`
`independently or connect to a bicycle to form a unitary carrier bike for transporting an adult rider
`
`and children or other objects in Class 12 (the ‘"275 Registration”).
`
`(2)
`
`The ’275 Registration alleges a date of first use and first use in commerce of
`
`September 24, 2007 and a filing date of September 25, 2007.
`
`(3)
`
`Petitioner
`
`is
`
`the owner of US. Application No. 85292841
`
`(the
`
`“’841
`
`Application”), with a date of first use in commerce of March 31, 2000.
`
`(4)
`
`The US. Patent and Trademark Office (“PTO”) refiised registration of the ’84l
`
`Application based on the ’275 Registration under Section 2(d) of the Trademark Act.
`
`In support of
`
`this refusal, the PTO stated that Petitioner’s LEADER mark and the registered LEADERLINK
`
`mark are similar because Petitioner’s mark is identical to a portion of the registered mark. The
`
`PTO also indicated that the goods of the parties are related because they are for bicycles.
`
`(5)
`
`Petitioner has priority of use of the mark LEADER.
`
`(6)
`
`In Petitioner’s Amended Answer to the Petition for Cancellation, Petitioner admitted
`
`that the date of first use anywhere and date of first use in commerce for the mark shown in the ’275
`
`Registration was September 2007. (Answer at 1] 4).
`
`(7)
`
`By refusing registration of the ’841 Application based on Section 2(d) of the
`
`Trademark Act, the PTO has determined that Applicant’s mark so resembles Petitioner’s mark as to
`
`be likely to cause confusion, mistake or deceive, and
`
`(8)
`
`By refijsing registration of the ’84l Application based on Section 2(d) of the
`
`Trademark Act, the PTO has determined that the goods in connection with which Applicant seeks
`
`registration are substantially identical to the goods in connection with which Petitioner has used its
`
`mark.
`
`

`
`Accordingly, there is no genuine dispute as to any material fact which would preclude the
`
`Board from granting summary judgment in this proceeding. The ultimate issues in this case are: 1)
`
`whether the marks and goods are so similar as to cause a likelihood of OOnfl.lSiOI], mistake or
`
`deceive; and 2) whether Petitioner has prior rights in the mark. Petitioner will establish that the
`
`legal conclusion must be that the PTO has determined that Petitioner’s and Respondent’s marks and
`
`goods are likely to cause confusion, and that Petitioner’s use of the mark LEADER was well prior
`
`to the filing of the application that matured into the ’275 Registration and well prior to the date of
`
`first use alleged the application that matured into the ‘Z75 Registration.
`
`Accordingly, Petitioner respectfially submits that a grant of summary judgment for Petitioner
`
`in this proceeding is appropriate and requests that
`
`the Board enter such judgment
`
`in favor of
`
`Petitioner and cancel the ’275 Registration. Finally, as noted above, pursuant to 37 C.F.R. §
`
`2_127(d), T_B_M_P. § 528.03, Petitioner hereby moves the Board to suspend all matters not germane
`
`to this Motion for Summary Judgment. 37 C.F.R. § 2.127(d), T.B.M.P. § 528.03 provides that
`
`when a party files a motion for summary judgment, the matter will be suspended by the Board as to
`
`all matters not germane to the motion.
`
`Dated:
`
`Respectfiilly submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR LLP
`
`/7.
`
`Boris Zelkind
`2040 Main Street, 14"’ Floor
`Irvine, CA 92614
`
`(949) 760-0404
`ef1ling@kmob.com
`Attorneys for Petitioner,
`Salvador Lombroso
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I served a copy of the foregoing MOTION FOR SUMMARY
`
`JUDGMENT AND MOTION TO SUSPEND PROCEEDING upon Respondent by
`
`depositing copies thereof in the United States Mail, first-class postage prepaid on October 22,
`
`2012 addressed as follows:
`
`Michael Ehrenreich
`
`SOMA Cycle, Inc.
`71 South Orange Avenue, Suite 396
`South Orange, NJ 07079
`
`[(4
`/LL. /? _
`Stacey
`fiaipern
`
`l3969845:sg
`l0l7l2
`
`

`
`LMBRSOOIN
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Salvador Lombroso,
`
`V.
`
`Petitioner
`
`3
`
`SOMA Cycle, Inc.
`
`Respondent.
`
`Cancellation No.: 92055084
`
`I hereby certify [hm this co
`being electronically filed WI
`through lheir web sile located
`
`ked attachments are
`and Appeal Board
`n‘
`
`Zllt‘.
`
`Stacey R. Halpern
`
`\_/\J\_/\_/\_/\_/\_/\_/\_/
`
`MEMORANDUM IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT
`
`I.
`
`SUMMARY OF ARGUMENT
`
`This is a cancellation proceeding brought by Salvador Lombroso (“Petitioner”) against
`
`SOMA Cycle, Inc. (“Respondent”). The registration at issue is US. Trademark Registration No.
`
`3551275 for the mark LEADERLINK for a mechanical device that enables a braking, steering
`
`and structural connection between a bicycle and a push cart or stroller to form an unitary carrier
`
`bike for transporting an adult rider and children or other objects, and enables the bicycle brake
`
`handle to operate the brake and the bicycle handlebar to operate the steering on the push cart or
`
`stroller portion of the carrier bike sold as an integral component of a push cart or stroller that can
`
`operate independently or connect to a bicycle to form a unitary carrier bike for transporting an
`
`adult rider and children or other objects in Class 12 (the ‘”275 Registration”).
`
`In Petitioner’s Petition for Cancellation, Petitioner asserts that it is the prior and senior
`
`user of the mark LEADER and that Petitioner’s Application Serial No. 85292841 for the mark
`
`LEADER for “bicycle frames; bicycle parts, namely, forks, handle bar stems and seat posts” in
`
`Class 12 (the “LEADER Application”) has been refused registration by the U.S. Patent and
`
`Trademark Office (“PTO”) due to the ’275 Registration. Petitioner also alleges that due to its prior
`
`rights in the LEADER mark, and the PTO’s refusal of the LEADER Application,
`
`there is a
`
`likelihood of confusion between the LEADERLINK mark shown in the ’275 Registration and
`
`

`
`Petitioner’s LEADER mark.
`
`Petitioner’s LEADER mark.
`
`in Respondent"s Amended Answer to the Petition for Cancellation (“Respondent's
`
`in Respondent"s Amended Answer to the Petition for Cancellation (“Respondent's
`
`Amended Answer”) Respondent admitted that
`
`the application that matured into the 275
`
`Amended Answer”) Respondent admitted that
`
`the application that matured into the 275
`
`Registration, Application No. 77/288,822 (“Respondents Application"), was not
`
`filed until
`
`Registration, Application No. 77/288,822 (“Respondents Application"), was not
`
`filed until
`
`September 25, M. Respondents Amended Answer at )2; and Declaration of Salvador
`
`September 25, M. Respondents Amended Answer at )2; and Declaration of Salvador
`
`Lombroso (“Lombroso Decl.") at )l3. Respondent has also admitted that its date of first use and
`
`Lombroso (“Lombroso Decl.") at )l3. Respondent has also admitted that its date of first use and
`
`first use in commerce ofthe LEADERLINK mark for the goods listed in the ’275 Registration was
`
`first use in commerce ofthe LEADERLINK mark for the goods listed in the ’275 Registration was
`
`not until September 24, W. Applicant"s Amended Answer at )4, and Lombroso Decl. at )l3.
`
`not until September 24, W. Applicant"s Amended Answer at )4, and Lombroso Decl. at )l3.
`
`It is also undisputed that Petitioner is the owner of the LEADER Application and that
`
`It is also undisputed that Petitioner is the owner of the LEADER Application and that
`
`Petitioner has used the LEADER mark continuously since at
`
`least as early as 1999 and has
`
`Petitioner has used the LEADER mark continuously since at
`
`least as early as 1999 and has
`
`continuously used the mark in commerce since at least as early as March 31, 2000. Lombroso
`
`continuously used the mark in commerce since at least as early as March 31, 2000. Lombroso
`
`Decl. at )2, 5,7and 9.
`
`Decl. at )2, 5,7and 9.
`
`It
`
`is also undisputed that the LEADER Application was refused registration based on
`
`It
`
`is also undisputed that the LEADER Application was refused registration based on
`
`Section 2(d) of the Trademark Act based on the 275 Registration. Lombroso Decl. at )l7 and 9
`
`Section 2(d) of the Trademark Act based on the 275 Registration. Lombroso Decl. at )l7 and 9
`
`Declaration of Stacey R. Halpern (“Halpern Decl.”) at )2.
`
`In support of this refusal,
`
`the
`
`Declaration of Stacey R. Halpern (“Halpern Decl.”) at )2.
`
`In support of this refusal,
`
`the
`
`Examining Attorney at the PTO stated “[t]he marks [LEADER and LEADERLPNK] are similar
`
`Examining Attorney at the PTO stated “[t]he marks [LEADER and LEADERLPNK] are similar
`
`because [Respondent’s] mark is identical to a portion of [the LEADERLINK mark].” D
`
`because [Respondent’s] mark is identical to a portion of [the LEADERLINK mark].” D
`
`Further the PTO also stated “[th]e goods/services of the parties are related because they are for
`
`Further the PTO also stated “[th]e goods/services of the parties are related because they are for
`
`bicycles” and that “[b]ased on the similarity of the marks and relatedness of the goods/services,
`
`bicycles” and that “[b]ased on the similarity of the marks and relatedness of the goods/services,
`
`consumers are likely to be confused by the marks into believing that the goods/services of the
`
`consumers are likely to be confused by the marks into believing that the goods/services of the
`
`parties share a common source or sponsorship.” R
`
`parties share a common source or sponsorship.” R
`
`It is undisputed that Respondent knew of Petitioner's rights in the LEADER mark when it
`
`It is undisputed that Respondent knew of Petitioner's rights in the LEADER mark when it
`
`decided to use and seek to register the LEADERLINK mark. Lombroso Decl. at ))l4 and 16.
`
`It is
`
`decided to use and seek to register the LEADERLINK mark. Lombroso Decl. at ))l4 and 16.
`
`It is
`
`also undisputed that despite Respondent" knowledge, Respondent also sought
`
`to register the
`
`also undisputed that despite Respondent" knowledge, Respondent also sought
`
`to register the
`
`LEADER mark. Id
`
`LEADER mark. Id
`
`By virtue ofPetitioner"s extensive and continuous use of the LEADER mark for over seven
`
`By virtue ofPetitioner"s extensive and continuous use of the LEADER mark for over seven
`
`.2.
`
`.2.
`
`

`
`(7) years prior to Respondent’s filing date and Respondent’s date of first use, Petitioner has senior
`
`and prior rights in the LEADER mark. Lombroso Decl at 111] 2, 18-20. Further, by refusing the
`
`LEADER Application based on the ’275 Registration, the PTO has determined that
`
`the ’275
`
`Registration and the LEADER Application result in a likelihood of confusion.
`
`As the evidence supporting this Motion for Summary Judgment and the PTO itself has
`
`determined that (1) Petitioner’s LEADER mark is identical to a portion of the LEADERLTNK
`
`mark shown in the ’275 Registration, (2) the parties’ goods are related, and (3) due to the
`
`similarity of the marks and relatedness of the goods, consumers are likely to be confused by the
`
`marks into believing that the goods of the parties share a common source or sponsorship, there no
`
`genuine dispute as to any material fact
`
`in this cancellation proceeding. Petitioner is therefore
`
`entitled to judgment as a matter of law. Accordingly, Petitioner respectfiilly requests that the
`
`Trademark Trial and Appeal Board (the “Board”) grant Petitioner’s Motion for Summary Judgment
`
`and cancel
`
`the’275 Registration. Moreover, pursuant
`
`to Trademark Rule 2.l27(d), Petitioner
`
`requests that the Board suspend all deadlines pending the Board‘s decision on this Motion for
`
`Summary Judgment.
`
`II.
`
`STATEMENT OF UNDISPUTED FACTS
`
`1.
`
`The application that matured into the ’275 Registration was filed on September 25,
`
`2007 based on a bona fide intention to use the mark in commerce.
`
`2.
`
`Respondent has admitted that its date of flrst use and first use in commerce of the
`
`LEADERLTNK mark was September 24, 2007.
`
`3.
`
`The mark LEADER was first used by Petitioner in 1999 and first use in US.
`
`commerce in 2000.
`
`4.
`
`Petitioner’s rights in the LEADER mark are senior and prior to Respondent’s rights
`
`in the LEADERLINK mark.
`
`5.
`
`The PTO has refused the LEADER Application based on the ’275 Registration
`
`under Section 2(d) of the Trademark Act.
`
`

`
`Petitioner’s Prior Rights in the LEADER Mark
`
`1.
`
`Petitioner’s first use of the mark LEADER precedes Respondent’s first use of the
`mark shown in the ’27 5 Registration.
`
`There is no dispute that Petitioner is the prior and senior user of the LEADER mark in
`
`connection with bicycle frames; bicycle parts, namely, forks, handle bar stems and seat posts.
`
`Since at least as early as 1999, Petitioner along with his licensee, Leader Bike LLC, and their
`
`authorized distributors, retailers and other authorized users of the mark (collectively “Leader”),
`
`have designed, developed, marketed, manufactured, promoted and sold a variety of bicycle
`
`related products,
`
`including, but not limited to, bicycle frames; bicycle parts, namely, forks,
`
`handle bar stems and seat posts (the “Leader Goods”) in connection with the LEADER name and
`
`mark throughout the United States and numerous foreign countries. Lombroso Decl. at 111.
`
`Further, since at least as early as 2000, Leader first used the LEADER mark in connection
`
`with the Leader Goods in U.S. commerce. Lombroso Decl. at 111. Since this time, Leader has used
`
`and continues to use the LEADER mark in advertising and promotional materials, catalogues,
`
`invoices, price sheets, Facebook, websites, and in other materials. Lombroso Decl. at 1112-8.
`
`The Leader Goods are provided through various channels of trade, including, but not
`
`limited to, retail locations, on-line retailers, eBay and other Internet sources, authorized dealers
`
`and distributors. Lombroso Decl. at 11112-8. Moreover, the Leader Bikes name and LEADER
`
`mark are used by Team Leader, which is an athletic team of persons who tour the United States
`
`and internationally participate in competitions and demonstrations. Lombroso Decl. at 18.
`
`Conversely, Respondent did not flle Respondent’s Application until September 24, E.
`
`Respondent’s Amended Answer at 112.
`
`Further, Respondent has admitted that Respondent’s
`
`Application was based on a bona fide intention to use the mark in commerce and that its date of first
`
`use was not until September 25, 2007, afier the filing date of Respondent’s Application. E. at 114.
`
`Thus, the earliest possible date on which Respondent can rely on is its filing date of September 24,
`
`2007, over seven years after Petitioner first used the LEADER mark in U.S. commerce.
`
`-4-
`
`

`
`2.
`
`Due to Petitioner’s extensive use and advertising of the LEADER mark, consumers
`will associate bicycle parts sold or offered for
`LEADERLINK as emanating from the Petitioner.
`
`As set forth in the Lombroso Decl. and the Exhibits and evidence attached thereto, since at
`
`least as early as 1999, Petitioner has continuously used the trademark LEADER in the United States
`
`in connection with bicycle parts. Lombroso Decl. at 1[2.
`
`In fact, from 1999 to present, Petitioner
`
`has sold over 50,000 units of products in connection with the LEADER mark. Lombroso Decl. at
`
`117. Moreover, as discussed above, the LEADER mark has been extensively used and advertised in
`
`U.S. commerce on the Leader Goods since at least as early as 2000. Lombroso Decl. at W2, 5 and
`
`19.
`
`Due to Respondent’s extensive and continuous use, promotion, and advertising of the
`
`Leader Goods in connection with the LEADER mark, consumers will associate the mark LEADER
`
`with the Leader Goods. Lombroso Decl. at 1] 18-20.
`
`The Present Dispute
`
`On September 24, 2007, Respondent applied for registration of the LEADERLINK mark for
`
`a mechanical device that enables a braking, steering and structural connection between a bicycle
`
`and a push cart or stroller to form an unitary carrier bike for transporting an adult rider and
`
`children or other objects, and enables the bicycle brake handle to operate the brake and the
`
`bicycle handlebar to operate the steering on the push cart or stroller portion of the carrier bike
`
`sold as an integral component of a push cart or stroller that can operate independently or connect
`
`to a bicycle to form a unitary carrier bike for transporting an adult rider and children or other
`
`objects in Class 12. Respondent’s Amended Answer at 1[2. Moreover, in November 2011, despite
`
`actual knowledge of Petitioner’s rights, Respondent also sought to register the mark LEADER in
`
`connection with the same goods. E at 1117 The application for the mark LEADER filed by
`
`Respondent was Serial No. 85/292,841 (the “’841 Application”) and is currently suspended due
`
`to a potential likelihood of confusion objection based on the LEADER Application. Q Clearly,
`
`by refusing registration of the LEADER Application,
`
`the PTO believes there is a likelihood of
`
`-5-
`
`

`
`confusion between the marks shown in the LEADER Application and the ’275 Registration.
`
`Lombroso Decl. at 111116 and 17.
`
`In 2007, Petitioner encountered Michael Ehrenreich, the CEO of SOM.A Cycle, Inc. at a
`
`trade show. At that time, Petitioner advised Mr. Ehrenreich that the LEADERLINK mark was
`
`too close to the LEADER mark such that it would confuse consumers. Since that time, Petitioner
`
`continued to object
`
`to Mr. Ehrenreich and SOMA Cycle’s use of the LEADERLWK mark.
`
`Lombroso Decl. at 1114.
`
`As Petitioner’s international business expanded, Petitioner realized he needed to obtain a
`
`Federal Trademark Registration for his LEADER mark. Lombroso Decl. at 1115. As such, on
`
`April 12, 2011, Petitioner filed the LEADER Application. Subsequent to filing the LEADER
`
`Application, on or about July 20, 201 1, the PTO issued an Office Action refiising registration of
`
`the LEADER Application based the ’275 Registration. Lombroso Decl. at 1115.
`
`It was around
`
`this
`
`time that Petitioner
`
`learned that Respondent had not only continued to use the
`
`LEADERLWK mark, despite Petitioner’s repeated objections to the mark, but also sought and
`
`obtained the ’275 Registration. Q From this time until
`
`the filing of the Petition for
`
`Cancellation, Petitioner communicated with Respondent
`
`in an effort
`
`to have Respondent
`
`voluntarily surrender its registration, or if possible, limit the ’275 Registration and its use of the
`
`LEADERLWK mark to goods that do not conflict with Petitioner’s goods.
`
`I_d.
`
`As Respondent was not willing to voluntarily surrender the ’275 Registration, or limit its
`
`registration and use of the LEADERLINK mark to goods that Petitioner believed did not conflict
`
`with Petitioner’s goods, and as the PTO had l'6fi.lSCCi registration based on the ’275 Registration, on
`
`or about January 17, 2012, Petitioner filed the Petition for Cancellation of the ’275 Registration.
`
`Summafl Judgment Standard and Burdens
`
`111.
`
`ARGUMENT
`
`Summary judgment for Petitioner is the proper disposal of this cancellation proceeding.
`
`Summary judgment is an appropriate method of disposing of a cancellation proceeding in which
`
`-6-
`
`

`
`there is no genuine dispute as to any material fact and where the moving party is entitled to
`
`judgment as a matter of law. Fed. R. Civ. P. 56(c); Opmland USA Inc. v. Great American Music
`
`
`Show Inc. 970 F.2d 847, 23 U.S_P.Q.2d 1471 (Fed. Cir. 1992). The basic purpose of summary
`
`judgment procedure is one ofjudicial economy -- to save the time and expense of a full trial when it
`
`is unnecessary because the essential facts necessary to decision of the issue can be adequately
`
`developed by less costly procedures, as contemplated by FRCP rules here involved, with a net
`
`benefit to society. Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 626, 222 U_S.P_Q. 741,
`
`743 (Fed. Cir. 1984); and National Football League v. Jasper Alliance Corp., 16 U.S.P.Q.2d 1212,
`
`1215 (T_T_A.B_ 1990) (“Lflfl”).
`
`Petitioner, as the moving party, has the burden of demonstrating that he is entitled to
`
`summary judgment. Celotex Com. v. Catrett, 477 U.S. 317, 324-25 (1986). However, where, as
`
`here, Petitioner has met his burden of identifying undisputed facts entitling it to relief, Respondent
`
`must submit specific facts showing that there is a genuine issue for trial. Matsushita Elec. Indus.
`
`Co, v. Zenith Radio Co[[;., 475 U.S. 574, 587 (1986); National Football, s_u13r_a, at 1215.
`
`In doing so, Respondent must present specific evidence from which a reasonable trier of fact
`
`might return a verdict in its favor.
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`477 U.S. 242, 249-250 (1986);
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`National Football, supra, at 1215. These general principles of summary judgment apply under
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`FRCP 56 to inter-partes proceedings before the Board. See, gg, Sweats Fashions, Incgannill
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`Knitting Co., 833 F.2d 1560, 1564-65, 4 U.S_P.Q.2d 1793, 1797 (Fed. Cir. 1987).
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`IV.
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`SUMMARY JUDGMENT IS PROPER
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`15 U.S.C. §l052, Section 2(d) of the Trademark Act, prohibits registration of a mark which
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`“so resembles a mark previously used in the United States by another and not abandoned, as to be
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`likely, when in used on or in connection with the goods of the applicant, to cause confilsion, or to
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`cause mistake, or to deceive.”
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`In the case at hand, summary judgment in favor of Petitioner is proper because there is no
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`genuine dispute as to any material fact regarding the likelihood of confusion between Petitioner’s
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`-7-
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`

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`LEADER mark and the mark in the ’275 Registration. Moreover, there is no genuine dispute as to
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`any material fact regarding Petitioner’s prior rights in the LEADER mark.
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`Furthermore, Petitioner has suffered damages and will continue to suffer damages due to the
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`‘275 Registration because it has been precluded Petitioner from registering the mark LEADER.
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`There is No Genuine Dispute Regarding Likelihood of Confusion Between the Marks
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`Cancellation is proper, where, as here, the mark shown in the ’275 Registration consists of
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`the mark LEADERLINK, which so resembles a mark previously used in the United States by
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`another and not abandoned as to be likely, when used on or in connection with Respondent’s goods,
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`to cause confusion, or to cause mistake or to deceive.
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`15 U.S.C. §10529(d).
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`Further, any
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`reasonable doubts as to a likelihood of confusion must be resolved against Respondent, the junior
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`user, and in favor of Petitioner, the senior user, “for the newcomer has the opportunity of avoiding
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`confusion, and is charged with the obligation to do so.” In re Might Leaf Tea, 601 F.3d 1342, 1346
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`(Fed. Cir. 2010; In re Phytochrome Pharmaceuticals, Inc., 2011 WL 1060722 (T.T.A.B. 2011)).
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`T.M.E.P. §1207.0l
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`lists thirteen factors as relevant in determining the registrability of a
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`mark over a potential confirsingly similar mark. E Ap.plication of E.I. DuPont DeNemours & Co.,
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`476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). Of those thirteen factors, the most important
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`factors are the similarity between the marks in their entireties as to appearance, sound, connotation
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`and commercial
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`impression and the similarity and nature of the goods as described in the
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`registration at issue and in connection with which Petitioner’s mark is used.
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`In re Max Capital Gm.
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`Ltd., 93 U.S.P.Q.2d 1243, 1244 (T.T.A.B. 2010).
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`In the case at hand, there is no genuine dispute as
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`to any material fact regarding a likelihood of confirsion between Petitioner’s and Respondent’s
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`marks.
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`1.
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`The marks are likely to cause confirsion.
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`The Federal Circuit has held that the similarity of marks,
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`including, appearance, sound,
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`connotation and commercial impression, is a “predominant inquiry.” Herbko Intern, Inc. v. Kappa
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`Brooks, Inc., 308 F.3d 1156, 1165,64 U.S.P.W.2d 1375 (Fed. Cir. 2002).
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`-3-
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`

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`Responder1t’s mark is LEADERLINK Petitioner’s mark is LEADER, The first and
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`dominant portion of the mark LEADERLINK is identical to Petitioner’s LEADER mark. The first
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`part of a mark is most likely to be impressed upon the mind of a purchaser when making purchasing
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`decisions)
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`W 396
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`F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. C11. 2005); and Presto Prods, Inc. v. Nice-Pak
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`Prods, Inc., 9 USPQ2d 1895, 1897 (T.T.A.B 1988).
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`Further,
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`it is well recognized that where the entirety of one mark is incorporated within
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`another,
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`there is a likelihood of confusion.
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`See In re Republic Bike Inc,
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`(Application No.
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`7790977)‘;
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`In re Tropical Seas. Inc, 2011 WL 3828727 at *3 (T.T.A.B. August 2O11)2; Wella
`
`
`Cogp v. California Concept Com, 558 F.3d 1019, 1022 (C.C.P.A. 1977); Guardian Prods. Co. v.
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`—, 200 USPQ 738 (TTAB 1978) (SCOTT GUARDIAN and GUARDIAN likely to
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`cause confusion; On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d
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`1471, 1475-76 (Fed. Cir. 2000) (ON-LINE TODAY and ON-LINE CARELTNE likely to cause
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`confusion); In re Pellerin l\/lilnor Co[p., 221 U.S.P.Q. 558, 560 (T.T.A.B. 1983) (slight variations
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`between MILTRON and MILTRONICS does not overcome essential similarity of marks); Ir1_re
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`flip“, 218 U.S.P.Q. 479, 480 (T.T.A.B. 1983) (likelihood of confusion
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`between LITTLE LADY and LIL’ LADY BUGGY); 1983); and In re Int’l Tel. and Tel. Corp.,
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`197 USPQ 910 (T.T.A.B. 1978).
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`In fact, the PTO itself has stated that the only difference in the mark is Respondent’s
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`addition of the descriptive term LWK. Exhibit A to the Halpern Decl. at 112. Further, both parties‘
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`goods are related to bicycles. Thus, Responder1t’s addition of the term LINK does not serve as a
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`meaningful point of differentiation particularly when applied to use on a bicycle-related part. Si I_n
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`re Nat’L Datgm, 753 F.2d. 1056, 1058, 224 U.S.P.Q. 749, 751 (Fed. C11. 1985) (“That a
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`
`
`1 A true and correct copy of this decision is attached as Exhibit B to the Hzilpem Dec.
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`2 A true and correct copy of this decision is attached as Exhibit C to the Halpern Dec.
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`-9-
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`

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`particular feature is rationale for giving less weight to a portion of a mark”). Given the marks at
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`issue and the PTO’s refusal of the LEADER Application, there can be no doubt that the mark in
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`the’275 Registration is highly similar to Petitioner’s LEADER mark in commercial impression and
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`appearance such that confusion is likely.
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`2.
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`The goods are likely to cause confiJsion.
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`The ’275 Registration is for a bicycle parts. Petitioner also uses the LEADER mark on
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`bicycle parts. It is well settled that it is not necessary in a proceeding such as this that the goods
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`of the parties be similar or competitive in character to support a holding of likelihood of
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`confirsion.
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`Instead, as is the case at hand,
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`it is sufficient that the products are related in some
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`manner. E Safety-Kleen Corp. v. Dresser Indus, Inc., 518 F.2d 1399, 1404, 186 USPQ 476,
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`480 (C.C.P.A. 1975); T.M.E.P. §1207.01(a)(i). More importantly, the PTO itself has determined
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`that there is a likelihood of confusion not only due to the similarity of the marks, but also the
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`relatedness of the goods. Exhibit A to the Halpern Decl. at 112 As the marks are virtually identical
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`and the goods substantially related, there is no doubt that confusion is likely.
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`3.
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`Consumers are likely to believe that Petitioner’s and Respondent’s goods emanate
`affiliated connected or 0th
`'
`associated.
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`As discussed above, the ’275 Registration is for a bicycle parts. Petitioner also uses the
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`LEADER mark on bicycle parts As Petitioner’s and Respondent’s virtually identical marks are
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`both used in connection with goods related to bicycles and, in fact, could be used in conjunction
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`with one another, consumers seeing goods marketed in connection with either mark would
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`reasonably believe that the goods emanate from the same source, or are some how connected with
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`one another. More importantly,
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`the PTO has already stated that consumers are likely to be
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`confirsed by the marks into believing that Petitioner’s goods and Respondent’s goods share a
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`common source or sponsorship. Exhibit A to Halpem Decl. at {[2
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`4.
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`Summary Judgment is proper since the mark in the ’275 Registration so resembles
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`Petitioner’s mark as to be likely to cause COnfilSlOI1 when used on or in connection
`—‘L*S-
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`-10-
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`

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`In light of Petitioner’s use of a virtually identical mark for substantially related goods for
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`over seven years prior to Respondent’s first use of the mark, Petitioner clearly has prior rights in the
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`mark, Based on the fact that the marks are virtually identical and the goods are substantially similar,
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`as well as the fact that the PTO has already made such a determination by refusing registration of
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`the LEADER Application, there is no genuine dispute as to any material fact regarding the
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`likelihood of confusion between the marks. Accordingly, summary judgment
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`in favor of the
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`Petitioner is proper.
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`V.
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`CONCLUSION
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`For the reasons discussed above, Petitioner respectfully requests the Board to grant this
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`Motion for Summary Judgment and cancel the 275 Registration.
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`Dated:
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`October 22, 2012
`
`By: /Z/1.
`
`/7.
`
`/L4 //
`
`KNOBBE, MARTENS, OLSON & BEAR LLP
`
`Stacey R. Halpern
`Boris Zelkind
`2040 Main Street, 14"’ Floor
`Irvine, CA 92614
`
`(949) 760-0404
`ef1ling@kmob.com
`Attorneys for Petitioner,
`Salvador Lombroso
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`-11-
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that I served a copy of the foregoing MEMORANDUM IN SUPPORT
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`OF MOTION FOR SUMMARY JUDGMENT upon Respondent by depositing copies thereof
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`in the United States Mail, flrst-class postage prepaid on October 22 2012 addressed as follows:
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`Michael Ehrenreich
`
`SOMA Cycle, Inc.
`71 South Orange Av