Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA956924
`
`Filing date:
`
`02/27/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92067668
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`TAJMA Enterprises
`
`DAVID LUDWIG
`DUNLAP BENNETT & LUDWIG PLLC
`211 CHURCH STREET SE
`LEESBURG, VA 20175
`UNITED STATES
`mwitzel@dbllawyers.com, trademarks@dbllawyers.com, dlud-
`wig@dbllawyers.com
`844-777-7319
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Opposition/Response to Motion
`
`Mary Witzel
`
`mwitzel@dbllawyers.com
`
`/Mary Witzel/
`
`02/27/2019
`
`Attachments
`
`Reply 02272019.pdf(1324389 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`IN THE MATTER OF Trademark Registration No. 5,368,804
`For the mark BEESBUTTER
`
`)
`
`)
`TAJMA ENTERPRISES, LLC,
`)
`
`)
`Petitioner,
`
`)
`
`
`) Cancellation No. 92067668
`
`v.
`
`)
`
`
`
`)
`
`Rubrecht, Shaun M,
`)
`
`
`
`)
`Respondent.
`
`
`______________________________________ )
`
`
`PETITIONER’S OPPOSITION TO
`RESPONDENT’S SECOND MOTION FOR SUMMARY JUDGMENT
`
`
`
`
`TAJMA Enterprises, LLC (“Petitioner”), through counsel, hereby submits this Opposition
`
`to Shaun Rubrecht’s (“Respondent’s”) Second Motion for Summary Judgment. In support thereof,
`
`Petitioner respectfully submits the arguments and facts set forth below.
`
`
`
`The allegations raised in Respondent’s second motion for summary judgment are
`
`inaccurate, and the motion accordingly must be denied. Respondent argues that:
`
`1. There exist no issues of material fact with respect to Petitioner’s claim of fraud in
`the procurement (D. Second Mtn. Sum. J. at 12-14);
`2. There exist no issues of material fact with respect to Petitioner’s claim of non-
`ownership (id. at 15-17);
`3. There exist no issues of material fact with respect to Petitioner’s claim of likelihood
`of confusion(id. at 17-19); and
`4. There exist no issues of material fact with respect to Respondent’s asserted defense
`of licensee estoppel (id. at 19-20).
`
`
`But this is incorrect. There exist genuine issues of disputed fact between the parties such
`
`that a motion for summary judgment is inappropriate. Among these contested issues of fact are
`
`questions regarding ownership of the BEESBUTTER mark, the import of a Memorandum of
`
`
`
`1
`
`

`

`Understanding (“MOU”) between the parties, and Respondent’s intent in filing for the
`
`BEESBUTTER application. The parties also dispute what “use in commerce” creates priority of
`
`use of a mark. Respondent believes that his allegations of creation of logos, brand names, product
`
`formulations, and manufacturing processes establish superior common law rights in the
`
`BEESBUTTER mark. (Second Amended Answer, Superior Common Law Rights ¶¶ 1-2.)
`
`Petitioner, by contrast, alleges that these were preparations to use, and actual use of the mark in
`
`commerce inured to Petitioner’s benefit, as all sales of the goods were made via Petitioner’s
`
`Amazon storefront, all proceeds for such sales were deposited in Petitioner’s bank account, and all
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`goods sold bearing BEESBUTTER were shipped under Petitioner’s direction. (Exhibit A ¶¶ 18,
`
`20, 17); 15 U.S.C. §1127. Indeed, all of Respondent’s actions were done at the direction of
`
`Petitioner.
`
`Summary judgment is only appropriate when there is no genuine dispute as to any
`
`material fact.1 See Fed. R. Civ. P. 56(a); LinkedIn Corp. v. International Council for Education
`
`Reform and Development (ICERD), 2018 WL 529851 (TTAB Jan. 19, 2018). Yet, here, each of
`
`Respondent’s “undisputed facts” is, in fact, disputed. The party moving for summary judgment
`
`has the initial burden of demonstrating that there is no genuine dispute of material fact remaining
`
`
`1 Respondent attempts to assert that Petitioner’s discovery responses were deficient such that a
`motion for summary judgment is appropriate. (D. Second Mtn. Sum. J. at 3.) This is the latest in
`a series of charges that Respondent consistently chooses to bring up for the first time not in a
`good faith discussion with Petitioner, but in a filing before this Board. (See D. Mtn. for Rule 11
`Sanctions.)
`
`Petitioner sought in good faith to discuss an appropriate protective order with Respondent
`regarding its discovery responses. Respondent declined to broach the topic with Petitioner.
`Respondent has submitted all of Petitioner’s discovery responses – even those expressly
`designated “attorney’s eyes only” – as exhibits to a public filing, justifying Petitioner’s concern
`regarding the need for a protective order beyond the Board’s standard protective order.
`
`
`
`2
`
`

`

`for trial and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c); Celotex
`
`Corp. v. Catrett, 477 U.S. 317, 322 (1987).
`
`In considering the propriety of summary judgment, all evidence must be viewed in a light
`
`favorable to the nonmovant – in this case Petitioner – and all justifiable inferences are to be
`
`drawn in the nonmovant’s favor. Opryland USA Inc. v. The Great American Music Show, Inc.,
`
`970 F.2d 847, 850, 23 U.S.P.Q.2d 1471, 1472 (Fed. Cir. 1992). In considering a motion for
`
`summary judgment, the Board does not resolve issues of material fact, but only determines
`
`whether such issues are present. See Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 767,
`
`25 U.S.P.Q.2d 2027, 2029 (Fed. Cir. 1993). Here, there exist genuine issues of material fact such
`
`that summary judgment is inappropriate and Respondent’s motion should be denied. In support
`
`of its opposition, Petitioner relies on and incorporates herein the declaration of Tricia Mischler,
`
`and states the following.
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`I. COUNTER-STATEMENT OF FACTS
`
`
`
`1.
`
`Petitioner directed and oversaw creation of the BEESBUTTER mark. (Exhibit A ¶
`
`3; Exhibit B ¶ 55);2. Petitioner directed and oversaw design of the BEESBUTTER mark on
`
`packaging and affixation of the trademark symbol next to the mark. (Exhibit A ¶ 4; Exhibit B ¶
`
`66);
`
`3.
`
`Petitioner directed and oversaw the formulation and manufacturing process for the
`
`BEESBUTTER product, and paid all expenses related to creation of the product. (Exhibit A ¶ 5;
`
`Exhibit B ¶¶ 57-59, 63);
`
`4.
`
`Petitioner directed and oversaw application of the BEESBUTTER mark to the
`
`goods sold under the mark. Petitioner first began to depict the mark on Amazon on October 15,
`
`
`
`3
`
`

`

`2014. Sales of BEESBUTTER goods on that date inured to Petitioner’s benefit. (Exhibit A¶ 6;
`
`Exhibit E);
`
`5.
`
`Petitioner directed and oversaw manufacturing and distribution of the
`
`BEESBUTTER product. (Exhibit A ¶ 7; Exhibit E);
`
`6.
`
`Petitioner exercised control over the quality of the BEESBUTTER product.
`
`(Exhibit A. ¶ 8); 7.
`
`Petitioner has never indicated to consumers that Respondent is the owner
`
`of BEESBUTTER. Petitioner has consistently indicated to consumers that Petitioner is solely
`
`responsible for the quality of the goods provided under the BEESBUTTER mark and the
`
`goodwill associated with the mark. (Exhibit A ¶ 9; Exhibit B ¶ 37);
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`8.
`
`During the time that Petitioner and Respondent had a business relationship,
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`consumers of the BEESBUTTER product on Amazon found the BEESBUTTER product on the
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`seller page for TJ Brands, Petitioner’s DBA name. Customers could readily contact Petitioner via
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`their order history page and the product detail page which was as an extension of the product
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`label. (Exhibit A ¶ 10.) For Petitioner, the product detail page on Amazon acted as an extension
`
`of the product label, and consumers were provided with company-identifying information both at
`
`the point of purchase and after their purchase was complete;
`
`9.
`
`Petitioner directed Respondent to create the Amazon listing where
`
`BEESBUTTER was first sold and primarily sold over the years. All such sales and the goodwill
`
`associated with them inured to Petitioner’s benefit. (Id. ¶ 11);
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`10.
`
`At Petitioner’s direction, and subject to Petitioner’s approval, Respondent assisted
`
`with advertising campaigns for the BEESBUTTER product. (Id. ¶ 12);
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`11.
`
`Petitioner answered customer questions regarding the BEESBUTTER product.
`
`(Id. ¶ 13);
`
`
`
`4
`
`

`

`12.
`
`On October 30, 2014, Petitioner and Respondent entered into an agreement
`
`wherein petitioner reiterated it was responsible for sale of the BEESBUTTER product. (Id. ¶ 14);
`
`13.
`
`At no time was a licensing agreement entered into regarding the BEESBUTTER
`
`mark. At no time did the parties enter into a contract – oral or written, express or implied -
`
`regarding ownership of the mark. Petitioner believed all trademark use of the mark inured to its
`
`benefit, given its investment in and significant oversight of the sale of BEESBUTTER products
`
`in commerce. (Id. ¶ 15);
`
`14.
`
`Petitioner and Respondent did not create any jointly controlled entity. (Id. ¶ 16);
`
`15.
`
`On November 17, 2014 Petitioner shipped the first cases of BEESBUTTER to an
`
`Amazon warehouse. Indeed, Petitioner directed the creation of shipping labels for the product via
`
`the Amazon seller account for the product. Petitioner paid all shipment costs, and tracking details
`
`for the product were sent to Petitioner’s Amazon seller account. (Id. ¶ 17; Exhibit E; Def. Exhibit
`
`T);
`
`16.
`
`On November 26, 2014 the goods became available for sale on Amazon.
`
`Respondent has alleged that his father was the first to purchase the BEESBUTTER product. This
`
`is inaccurate, however – and it is telling that Respondent would not know who the first customer
`
`was that purchased the product, as Respondent did not have access to the purchase order records
`
`for the goods. All proceeds from sales of the product were sent to TJ Brand’s company bank
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`account. (Exhibit A ¶ 18);
`
`17.
`
`By at least as early as December 1, 2014 – the date of first use in commerce listed
`
`by both Petitioner and Respondent – Petitioner had sold goods in commerce under the
`
`BEESBUTTER MARK. (Id. ¶ 19);
`
`
`
`5
`
`

`

`18.
`
`Petitioner and Respondent had a working relationship spanning from before the
`
`first BEESBUTTER sales starting September 2014 and ending in February 2017. At all times,
`
`Petitioner controlled the proceeds of sales of the BEESBUTTER product and was responsible for
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`allocating a portion of those proceeds to Respondent. (Id. ¶ 20);
`
`19.
`
`On February 7, 2017, for the first time in their working relationship, Respondent
`
`alleged that he had an ownership interest in the BEESBUTTER mark – despite knowing that the
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`mark was used and sold in commerce at Petitioner’s sole direction. (Id. ¶ 21);
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`20.
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`On February 7, 2017, the working relationship between Petitioner and Respondent
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`was terminated. (Id. ¶ 22);
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`21.
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`The reasons for such termination do not have bearing on the present cancellation
`
`proceeding.
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`22.
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`Following termination of the working relationship, Respondent continued to
`
`assert ownership rights in the BEESBUTTER mark – despite knowing that Petitioner continued
`
`to use the mark in commerce. (Id. ¶ 23);
`
`23.
`
`Respondent’s misguided attempts to assert rights in the BEESBUTTER mark
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`continued through 2017. (Id. ¶ 24);
`
`24.
`
`Contrary to the assertions made by Respondent after the working relationship
`
`between the parties was terminated, the mere creation of an idea for a mark does not create
`
`assertible intellectual property. Instead, use of the mark in commerce – such as that made by
`
`Petitioner – creates trademark rights.
`
`25.
`
`Petitioner has sold goods under the BEESBUTTER mark since at least as early as
`
`2014. Petitioner’s AGED LEATHER PROS mark is an independent mark, and is not the basis
`
`for or the subject of Petitioner’s claims in the present proceeding. The Board has sustained
`
`
`
`6
`
`

`

`Petitioner’s view regarding AGED LEATHER PROS by dismissing Respondent’s challenge to
`
`the AGED LEATHER PROS mark for lack of standing. (See Opp. No. 91241537, October 30,
`
`2018 Board Decision; Exhibit A ¶ 25);
`
`26.
`
`Consumers confused by Respondent’s persistent, unauthorized use of
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`BEESBUTTER have often turned to Petitioner for clarification. Petitioner has consistently
`
`informed consumers that its BEESBUTTER mark is the original mark. (Exhibit A ¶ 26);
`
`27.
`
`Respondent’s post-termination use of the BEESBUTTER mark has never been
`
`approved of or authorized by Petitioner. (Id. ¶ 27);
`
`28.
`
`The creation of BEESBUTTER was done at Petitioner’s direction. Petitioner
`
`reimbursed all expenses for creation of the product and provided software on which the branding
`
`could be created. (Id. ¶ 28);
`
`29.
`
`Petitioner paid all product suppliers who manufactured the BEESBUTTER
`
`product. (Id. ¶ 29; Exhibit B. ¶ 64);
`
`30.
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`Petitioner had final approval for the branding and artwork used with the
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`BEESBUTTER product. (Exhibit A ¶ 30);
`
`31.
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`Petitioner never transferred ownership of any intellectual property rights to
`
`Respondent. (Id. ¶ 31);
`
`32.
`
`AGED LEATHER PROS is an independent trademark and is not the subject of
`
`this proceeding, nor are Petitioner’s claims in this proceeding based on AGED LEATHER PROS
`
`in any way. (See Opp. No. 91241537, October 30, 2018 Board Decision.)
`
`33.
`
`The geographic location of Petitioner compared to Respondent is not relevant for
`
`the purposes of this cancellation proceeding.
`
`
`
`7
`
`

`

`34.
`
`The manner of Petitioner’s payments to Respondent are not relevant for the
`
`purposes of this cancellation proceeding.
`
`35.
`
`The tax status of Petitioner’s payments to Respondent are not relevant for the
`
`purposes of this cancellation proceeding.
`
`36.
`
`The very content of Respondent’s unauthorized trademark application is evidence
`
`of Respondent’s fraudulent intent, as has been alleged by Petitioner from the first pleading made
`
`in this cancellation proceeding.
`
`37.
`
`The MOU and a non-competition contract are the only written agreements signed
`
`by Petitioner and Respondent. Neither agreement transfers or licenses ownership of
`
`BEESBUTTER to Respondent. (Exhibit A ¶ 32);
`
`38.
`
`Since the termination of the working relationship between the parties, Respondent
`
`has shut down Petitioner’s BEESBUTTER listing for over a year now and caused Petitioner to
`
`be investigated by the FBI and by state investigative bureaus due to false claims of
`
`counterfeiting. (Id. ¶ 33; Exhibit B ¶¶ 67, 68, 70, 73-74);
`
`39.
`
`Amazon.com fulfilled orders of BEESBUTTER. Any customer purchasing
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`BEESBUTTER goods from Petitioner, both now and in the past, has received a receipt showing
`
`TJ Brands (Petitioner’s DBA name) as the seller of the goods. (Exhibit A . ¶ 34).
`
`II. A GENUINE DISPUTE EXISTS REGARDING WHETHER RESPONDENT
`
`COMMITTED FRAUD IN THE PROCUREMENT
`
`
`There exists a genuine dispute between the parties regarding whether Respondent
`
`intended to deceive the USPTO. For this reason, summary judgment is inappropriate as to
`
`Petitioner’s first basis for cancellation.
`
`A claim of fraud in the procurement is a fact-based inquiry subject to the heightened
`
`pleading standard of Rule 9(b). Because it is a fact-based inquiry, a claim of fraudulent
`
`
`
`8
`
`

`

`procurement, “[a]s a general rule . . . [is] particularly unsuited to disposition on summary
`
`judgment.” Copelands’ Enters., Inc. v. CNV, Inc., 20 U.S.P.Q.2d 1295, 1299 (Fed. Cir. 1991).
`
`Here, Petitioner has claimed that Respondent committed fraud upon the Trademark Office by
`
`making a false claim of ownership of the mark – a claim that consisted of 1) submitting a
`
`fraudulent allegation of ownership; 2) submitting a fraudulent allegation of use in commerce, and
`
`3) submitting a fraudulent specimen of use.2 (Second Amended Pet. to Cancel ¶¶ 9-32;
`
`November 29, 2018 Board Decision at 11, construing Petitioner’s factual allegations as
`
`constituting a single claim of fraud based on non-ownership.) The key question is whether
`
`Respondent intended to mislead the Trademark Office in averring he owned the mark. See In re
`
`Bose Corp., 91 U.S.P.Q. 2d 1938, 1941 (Fed. Cir. 2009). Petitioner alleges that Respondent did
`
`intend to mislead the Trademark Office by claiming ownership of the mark.3 (Second Amended
`
`Pet. to Cancel ¶¶ 9-32.) Respondent alleges that he did not intend to mislead the Trademark
`
`Office. (D. Second Mtn. Sum. J. at 11.) It is plain that a genuine dispute exists, and this question
`
`is not appropriate for determination on a motion for summary judgment.
`
`Here, Petitioner has raised genuine issues of fact as to the circumstances and intent of
`
`Respondent’s trademark application. Respondent was engaged in a working relationship with
`
`Petitioner for a number of years.4 (Second Amended Pet. to Cancel ¶ 6.) However, the parties
`
`
`2 Notably, Respondent has provided no arguments regarding other contested components of
`Respondent’s application that remain in dispute, including Respondent’s allegation of use in
`commerce and Respondent’s specimen of use.
`
` 3
`
` Respondent curiously contends that Petitioner had a duty to prove its fraud case in its initial
`disclosures and in its response to Respondent’s motion for Rule 11 sanctions. (D Second Mtn.
`for Sum. J. at 12.) Petitioner’s counsel is aware of no such duty.
`
` 4
`
` Respondent’s continued emphasis on differences in terminology between the parties is
`misguided. (See D. Second Mtn. Sum. J. at 12.) Any difference in terminology suggests that
`many facts remain contested between the parties and, therefore, a motion for summary judgment
`
`
`
`9
`
`

`

`are in deep disagreement regarding the circumstances of that relationship, the import of any
`
`agreements entered into by the parties, and the extent to which any use of the BEESBUTTER
`
`mark by Respondent inured to Petitioner’s benefit. (See id. ¶¶ 12-15, 22-24, 30-32; D. Second
`
`Mtn. Sum. J. at 11-14.) Nonetheless, to suggest that Respondent did not know that Petitioner
`
`had an interest in the mark is insupportable. (See D. Mtn. for Sum. J. at 13.) Respondent has
`
`admitted:
`
`• That all sales revenue for the BEESBUTTER product flowed through Petitioner.
`(Exhibit B, ¶ 9);
`• That Petitioner paid Amazon Marketing Services directly for all marketing campaigns
`for the branded goods. (Id. ¶ 15);
`• That Petitioner’s member Tricia Mischler gave Respondent “her username and
`password to log into an online video seminar series called Amazing Selling Machine
`(“ASM”) to learn how to sell on Amazon.” (Id. ¶¶ 27-28);
`• That “[o]n occasion I received instructions from Petitioner regarding the nature, scope,
`and content of my work.” (Id. ¶ 39);
`• That Respondent created graphics for Petitioner using software at Petitioner’s expense.
`(Id. ¶ 56);
`• That Petitioner financed all equipment and raw material needs for the BEESBUTTER
`product development. (Id. ¶ 57);
`• That Respondent never assumed any expenses related to the development of the
`BEESBUTTER product. (Id. ¶ 58);
`• That Petitioner controlled the capital investment in all inventory for BEESBUTTER
`during Petitioner and Respondent’s working relationship. (Id. ¶ 63);
`• That Petitioner paid product suppliers for all the BEESBUTTER product production.
`(Id. ¶ 64);
`• That the BEESBUTTER label design was approved by Petitioner before it entered
`into interstate commerce. (Id. ¶ 66).
`
`
`
`Given Petitioner’s consistent and admitted role in overseeing use of the mark and ensuring
`
`the goodwill of the mark accrued to Petitioner’s benefit, a genuine dispute exists as to whether
`
`Respondent intended to commit fraud on the Trademark Office in applying for the BEESBUTTER
`
`
`is inappropriate . Petitioner has long since amended its pleading to clarify its initial use of the
`term “employment.” (See Mtn. to Amend Pet. for Cancellation ¶¶ 1, 6.) Respondent did not
`oppose this amendment, and cannot now assert that it was inappropriately made. (See D. Second
`Mtn. Sum. J. at 14.)
`
`
`
`10
`
`

`

`registration. In light of the disagreement between the parties about Respondent’s intent in filing
`
`for the BEESBUTTER mark, there exist genuine issues of material fact regarding whether
`
`Respondent’s BEESBUTTER registration is valid, whether Respondent is the owner, and whether
`
`Respondent has the exclusive right to use the mark in commerce. See 15 U.S.C. § 1057(b);
`
`Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha Opposition, 26 U.S.P.Q.2d 1503, 1508 (TTAB
`
`1993) (finding summary judgment “not warranted because the material factual issue of whether
`
`applicant’s intent is bona fide or not remains, in light of the inferences in favor of opposer from
`
`the undisputed facts, genuinely in dispute.”).
`
`Summary judgment is “notoriously inappropriate for determination of claims in which
`
`issues of intent, good faith and other subjective feelings play dominant roles.” Pfizer, Inc. v.
`
`Int’l Rectifier Corp., 90 U.S.P.Q. 273, 277 (8th Cir. 1976); see also Albert v. Kevex Corp., 221
`
`U.S.P.Q. 202, 207 (Fed. Cir. 1984) (“Intent is a factual matter which is rarely free from
`
`dispute.”); Kangaroos U.S.A., Inc. v. Caldor, Inc., 228 U.S.P.Q. 32, 33 (Fed. Cir. 1985) (“Good
`
`faith, intent to deceive, scienter, honest mistake are all questions of fact.”). Respondent’s intent
`
`plays a dominant role in Petitioner’s claim of fraudulent procurement – it is a factual matter that
`
`is far from “free from dispute.” For this reason, Respondent’s motion must be denied.
`
`III. A GENUINE DISPUTE EXISTS REGARDING OWNERSHIP OF THE MARK
`
`There exists a genuine dispute between the parties regarding whether Respondent is the
`
`rightful owner of the BEESBUTTER mark. For this reason, summary judgment is inappropriate
`
`as to Petitioner’s second basis for cancellation.
`
`As an initial matter – and directly contrary to Respondent’s assertions (D. Second Mtn.
`
`Sum. J. at 15) – this Board has expressly stated that Petitioner’s claim of fraud based on non-
`
`ownership was sufficiently pled. (November 29, 2018 Board Decision at 10.) Moreover, if
`
`
`
`11
`
`

`

`Board is inclined to follow Respondent’s suggestion and apply the Covertech test here, the
`
`results of that test demonstrate that Petitioner’s claim of non-ownership must prevail.
`
`Here, unlike in Covertech, Respondent cannot be readily characterized as either a
`
`manufacturer or an exclusive distributor, and no evidence exists that suggests Respondent served
`
`in either role. The MOU only establishes that Petitioner will sell the brands and the goods
`
`provided under the brands. (Exhibit C ¶ 6.)
`
`Moreover, Respondent’s McCarthy factor analysis fails to take the following into
`
`consideration:
`
`• Respondent created graphics for Petitioner using software at Petitioner’s expense.
`(Exhibit B ¶ 56);
`• The BEESBUTTER label design was approved by Petitioner before it entered into
`interstate commerce. (Id. ¶ 66);
`• The point of sale for the BEESBUTTER goods was Petitioner’s branded Amazon
`seller page. (Exhibit A ¶ 10);
`• Petitioner financed all equipment and raw material needs for the BEESBUTTER
`product development. (Exhibit B at ¶ 57);
`• Petitioner reimbursed all costs for development of the BEESBUTTER product. (Id. ¶
`59);
`• Petitioner controlled the capital investment in all inventory for BEESBUTTER during
`Petitioner and Respondent’s working relationship. (Id. ¶ 63);
`• Petitioner paid product suppliers for all the BEESBUTTER product production. (Id. ¶
`64); and
`• Petitioner paid for all advertising and promotion of the branded goods. (Id. ¶ 15).
`
`
`
`Therefore, creation of the mark was completed at Petitioner’s direction (McCarthy factor
`
`1); affixation of the mark to the goods was done at Petitioner’s direction (McCarthy factor 2);
`
`Petitioner’s DBA name appeared at the point of sale for the goods (McCarthy factor 3);
`
`Petitioner admittedly exercised control over the goods sold under the mark (McCarthy factor 4);
`
`consumers looked to Petitioner to resolve issues with the goods (McCarthy factor 5); and
`
`Petitioner paid for advertising and promotion of the trademarked product (McCarthy factor 6).
`
`
`
`12
`
`

`

`For these reasons, if the Board elects to apply the Covertech test here, the results are in
`
`Petitioner’s favor. Respondent reached a different outcome in analyzing the McCarthy factors.
`
`(D. Second Mtn. Sum. J. at 16.) It is apparent, therefore, that there remain contested issues of
`
`fact regarding ownership of the BEESBUTTER mark – indeed, the parties’ disagreement on this
`
`ground is the primary basis for the cancellation proceeding. Accordingly, summary judgment is
`
`inappropriate in this instance, and Respondent’s motion should be denied.
`
`IV. A GENUINE DISPUTE EXISTS REGARDING PRIORITY OF USE
`
`There exists a genuine dispute between the parties regarding whether Respondent has
`
`priority of use of the BEESBUTTER mark. For this reason, summary judgment is inappropriate
`
`as to Petitioner’s third basis for cancellation.
`
`Neither party disputes that a likelihood of confusion exists. However, the parties do dispute
`
`which of them has priority of use of the BEESBUTTER mark. Indeed, the very fact that both
`
`Petitioner and Respondent listed the same date of first use of the mark in their filings before the
`
`USPTO indicates that the parties deeply dispute which was the first to make trademark use of the
`
`name BEESBUTTER in commerce. (See D. Second Mtn. Sum. J. at 17.) Accordingly, the
`
`Petitioner’s likelihood of confusion claim involves contested issues of fact that are not appropriate
`
`for resolution on a motion for summary judgment.
`
`Ownership is a key component of any likelihood of confusion claim. See, e.g., Herbko Int’l,
`
`Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 U.S.P.Q.2d 1375, 1378 (Fed. Cir. 2002) (“[A] party
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`petitioning for cancellation under section 2(d) must show that it had priority and that registration
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`of the mark creates a likelihood of confusion. … To establish priority, the petitioner must show
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`proprietary rights in the mark that produce a likelihood of confusion.”); T.A.B. Sys. v. Pactel
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`Teletrac, 77 F.3d 1372, 37 U.S.P.Q.2d 1879, 1881 (Fed. Cir. 1996) (“In an opposition founded on
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`section 2(d), the opposer must establish its own prior proprietary rights in the same or a confusingly
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`similar designation in order to defeat the application.”); The Land-O-Nod Co. v. Paulison, 220
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`U.S.P.Q. 61, 65 (TTAB 1983) (“One who opposes registration to an applicant under Section 2(d)
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`… must prove that he has proprietary rights in the term he relies upon to demonstrate likelihood
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`of confusion as to source, whether by ownership of a registration, prior use of a technical
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`‘trademark,’ prior use in advertising, prior use as a trade name, or whatever other type of use may
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`have developed a trade identity.”); Person’s Co. v. Christman, 900 F.2d 1565, 14 U.S.P.Q.2d 1477,
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`1479 (Fed. Cir. 1990) (use of a trademark is what gives rise to ownership rights).
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`Here, ownership of the BEESBUTTER mark is heavily contested – indeed, it is the crux
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`of the claims of both Petitioner and Respondent in this matter. Though the marks at issue here are
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`patently identical, there exist multiple contested questions of fact that relate to likelihood of
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`confusion between the marks, including:
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`• Priority of use of the BEESBUTTER mark in commerce;
`• Respondent’s knowledge of Petitioner’s rights in the BEESBUTTER mark; and
`• Ownership of the BEESBUTTER mark.
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`(See, e.g., Second Amended Pet. to Cancel ¶¶ 3-5.) Contrary to Respondent’s argument,
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`these contested issues of ownership support, rather than undercut, the need for a thorough
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`determination of the likelihood of confusion issue.
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`Notably, the events Respondent cites in support of his claim of priority of use do not
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`constitute trademark use. A photograph does not establish use in commerce. (See D. Second Mtn.
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`Sum. J. at 17.) Moreover, Exhibit T to Respondent’s motion, cited to support the position that
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`Respondent made the first interstate shipment of the BEESBUTTER goods, instead plainly shows
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`that Petitioner controlled the shipment status of the goods sold under the BEESBUTTER mark.
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`The purchase allegedly made by Respondent’s father is inapposite and inaccurate (See D. Second
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`Mtn. Sum. J. at 18) – Petitioner’s first sale of the goods was to consumers other than the
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`Respondent’s father. Further, the Respondent has admitted that all sales revenue for the
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`BEESBUTTER product flowed through Petitioner, therefore, the purchases made of the product
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`inured to Petitioner’s benefit. (Exhibit B ¶ 9). Nor does any written agreement exist regarding
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`priority of use of the mark.5
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`Here, although both Petitioner and Respondent agree that a working relationship did exist
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`between them, the precise composition of the relationship and its impact on the BEESBUTTER
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`trademark rights is deeply in dispute. (See, e.g., Exhibit D, Requests 6-219; Exhibit E, depicting
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`emails between Petitioner and Respondent wherein Petitioner instructs Respondent and approves
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`Respondent’s work.) There clearly exists a material dispute regarding use and ownership of the
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`mark. For this reason, summary judgment is inappropriate regarding Petitioner’s likelihood of
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`confusion claim.
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`V. RESPONDENT’S DEFENSE OF LICENSEE ESTOPPEL PRESENTS
`CONTESTED ISSUES OF FACT AND DOES NOT SUPPORT A MOTION FOR
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`SUMMARY JUDGMENT
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`Respondent’s defense of licensee estoppel presents highly contested issues of fact. This
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`defense is based on a MOU entered into by the parties in 2014. (See attached Exhibit C.)
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`Respondent has asserted this defense as a basis for summary judgment in the past. (D. First Mtn.
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`for Sum. J. at 8.) In response, Petitioner noted that the plain terms of the MOU do not support
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`Respondent’s characterization, and that any licensing provision contained in the MOU (there are
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`5 Throughout his motion, Respondent appears to assert that Petitioner’s independent trademark
`registration for AGED LEATHER PROS has some bearing on this proceeding. (See D. Second
`Mtn. Sum. J. at 18.) Contrary to Respondent’s implication, Petitioner does not base its claim of
`priority of use of the BEESBUTTER mark on the AGED LEATHER PROS registration, and has
`never done so in this proceeding. Respondent’s “straw man” argument regarding AGED
`LEATHER PROS should not be considered by the Board in determining Respondent’s motion.
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`none) would be ineffective as a naked transfer. (Pet. First Mtn. in Opp. at 11.) Nowhere in his
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`motion does Respondent explain why the MOU is a valid license – nowhere is it claimed that the
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`MOU is not a naked transfer. For these reasons, the motion must fail.
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`Contrary to Respondent’s assertions, the MOU in no way establishes “an agreement to pay
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`Respondent in perpetuity for all sales of BEESBUTTER,” nor is it a “licensing deal.” (D. Second
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`Mtn. for Sum. J. at 19-20.) No provision of the MOU contemplates intellectual property licensure
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`or use of the trademark. (See attached Exhibit C.) Further, it is axiomatic that rights to a mark are
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`transferred “only in connection with the transfer of the goodwill of which it is a part.” Visa, U.S.A.,
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`Inc. v. Birmingham Tr. Nat. Bank, 696 F.2d 1371, 1375 (Fed. Cir. 1982). A naked transfer of the
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`mark—known as a transfer in gross—is invalid.6 See id. Therefore, even if the MOU contained a
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`licensing provision, as Respondent alleges (by its plain terms, it does not), it would be ineffective
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`to transfer rights in the mark to Respondent.
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`Given the MOU’s sparse treatment of intellectual property rights and lack of any mention
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`of goodwill, any transfer effected by it (there was none) would be a naked transfer, and therefore
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`invalid. (See attached Exhibit C.)
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`The MOU has no bearing on the actual trademark use or ownership of BEESBUTTER.
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`Instead, Petitioner has plainly claimed that is has made exclusive use of the BEESBUTTER mark
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`since 2014 (Second Amended Pet. to Cancel ¶¶ 4-5), that Respondent was aware of its use (id. ¶
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`6-7, 12-13, 21-22, 30), and that Respondent misled the Trademark Office about the scope and
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`validity of his purported rights in BEESBUTTER (id. ¶¶ 12-15, 22-24, 30-32). Respondent
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`6 The caselaw cited by Respondent is inapposite – here, unlike in the cases cited by Respondent,
`no written license agreement existed between the parties. (See D. Second Mtn. for Sum. J. at 19.)
`Further, Respondent has nowhere alleged that an oral licensing agreement was made between the
`parties. (See id. at 20.)
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