`
`
`
`
`
`DUNN
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`
`
`
`
`
`
`
`
`
`Mailed: July 10, 2018
`
`Opposition No. 91239608
`Cancellation No. 92067945
`
`Unique Motorsports Inc.
`
`
`v.
`
`
`
`Elizabeth A. Dunn, Attorney (571-272-4267):
`
`
`Neal Technologies, Inc.
`
`On May 9, 2018 in each of the proceedings listed above, Neal Technologies, Inc.
`
`(hereafter, Respondent) moved to suspend proceedings pending the final determina-
`
`tion of the bankruptcy case involving Unique Motorsports Inc. (hereafter, Peti-
`
`tioner).1
`
`Because in the absence of a counterclaim, the automatic stay provisions of Section
`
`362 of the United States Bankruptcy Code do not mandate the suspension of a Board
`
`proceeding in which the plaintiff filed a petition for bankruptcy, the Board addresses
`
`whether Respondent’s motion to suspend, in combination with the other filings in
`
`these proceedings, show good cause for suspension. See Trademark Trial and Appeal
`
`Board Manual of Procedure (TBMP) 510.03(a) (2018).
`
`
`1 Because Respondent provides no legal support for finding that either an invalid domain
`name or a search engine reference to a business being closed is probative evidence that an
`entity no longer exists, the Board does not agree that Respondent previously established that
`“Opposer is no longer a viable entity.”
`
`
`
`Opposition No. 91239608 and Cancellation No. 92067945
`
`
`As necessary background, the Board notes that Respondent owns the following
`
`registrations and pending application:
`
`
`
`Reg. No.
`4235578
`issued
`11/6/12
`
`BULLETPROOFDIESEL.COM
`(standard characters)
`
`Reg. No.
`4262825
`issued
`12/25/12
`
`Reg. No.
`5130772
`issued
`1/31/17
`
`Reg. No.
`5220129
`issued
`6/13/17
`
`App. No.
`87610052
`filed
`9/15/17
`
`
`
`
`(.COM disclaimed)
`
`BULLET PROOF
`(standard characters)
`
`
`BULLET PROOF
`(standard characters)
`
`
`DARN-NEAR BULLET PROOF
`(standard characters)
`
`
`
`2
`
`Automotive components, namely,
`oil coolers and exhaust gas re-circu-
`lation coolers for diesel engines; oil
`filtration systems comprised of fil-
`ters for motors and engines and
`light bars for sport utility vehicles
`
`Vehicle engine parts, namely, en-
`gine oil thermostats
`
`Vehicle services, namely, repair
`and maintenance of diesel engines;
`repair and re-manufacture of diesel
`engine components, namely, engine
`oil coolers and exhaust gas re-circu-
`lation coolers
`
`
`same as Reg. No. 4235578
`
`
`Retail store services featuring die-
`sel engine parts; on-line retail store
`services featuring diesel engine
`parts; wholesale store services fea-
`turing diesel engine parts
`
`Automotive repair and mainte-
`nance services, namely, repair and
`maintenance of diesel engines, and
`repair and installation of diesel en-
`gine components
`
`Retail store services featuring die-
`sel engine parts; on-line retail store
`services featuring diesel engine
`parts; wholesale store services fea-
`turing diesel engine parts
`
`
`
`Opposition No. 91239608 and Cancellation No. 92067945
`
`THE DISTRICT COURT ACTION
`
`On April 30, 2018, in response to the Board’s order in Cancellation No. 92067945,
`
`Respondent filed excerpts from the record in Neal Technologies, Inc. v. Unique Mo-
`
`torsports Inc. et. al., Civil Action No. 4:15-cv-385-RC-CMC, in the United States Dis-
`
`trict Court for the Eastern District of Texas, Sherman Division. The amended com-
`
`plaint filed December 10, 2015 pleads, among other claims, trademark infringement
`
`of Respondent’s marks BULLETPROOF, BULLET PROOF, and BULLET PROOF
`
`DIESEL for aftermarket diesel truck parts and related services, and seeks, among
`
`other remedies, to permanently enjoin Petitioner’s use of “the BulletProof Marks (or
`
`any derivation of colorable imitation thereof).” 7 TTABVUE 6-21.2 On February 4,
`
`2016, Petitioner filed an amended answer and counterclaim to cancel Registration
`
`Nos. 4235578 and 4262825 for the marks BULLETPROOFDIESEL.COM in standard
`
`characters and with a design as abandoned. 7 TTABVUE 23-53,
`
`On August 5, 2016, the jury issued a verdict finding the terms BULLETPROOF,
`
`BULLET PROOF, and BULLET PROOF DIESEL descriptive, and the registered
`
`marks BULLETPROOFDIESEL.COM in standard characters and with a design sug-
`
`gestive. The jury also found that Respondent did not show by a preponderance of the
`
`evidence that the terms BULLETPROOF, BULLET PROOF, and BULLET PROOF
`
`DIESEL had been used by Respondent and acquired secondary meaning in Texas
`
`prior to Petitioner’s first use of those terms, or that Petitioner infringed Respondent’s
`
`registered marks BULLETPROOFDIESEL.COM in standard characters and with a
`
`
`2 The TTABVUE references pertain to the electronic file for Cancellation No 92067945.
`
`
`
`3
`
`
`
`Opposition No. 91239608 and Cancellation No. 92067945
`
`design. The jury also found that Respondent proved by a preponderance of the evi-
`
`dence that Petitioner committed unfair competition, that the conduct was willful, and
`
`not a fair use, and awarded $100,000 to Respondent. 8 TTABVUE 1-10. On January
`
`20, 2017, the court issued a final judgment and mandate awarding Respondent
`
`$253,000 on its unfair competition claim, and entering a permanent injunction
`
`against Petitioner’s use of the terms BULLETPROOF, BULLET PROOF, and
`
`BULLET PROOF DIESEL in connection with goods or services of the same type of-
`
`fered by Respondent. 7 TTABVUE 136-139.
`
`CONSOLIDATION OF BOARD PROCEEDINGS
`
`On February 15, 2018, Petitioner, acting pro se, filed the petition to cancel Regis-
`
`tration Nos. 5130772 and 5220129 for the marks BULLETPROOF and BULLET
`
`PROOF. As noted above, Respondent has not filed its answer.
`
`On February 21, 2018, Petitioner, acting pro se, filed the notice of opposition
`
`against application Serial No. 87610052 for the mark DARN-NEAR BULLET
`
`PROOF.
`
`Respondent seeks to suspend its time to file an answer, as well as all other dates,
`
`in each proceeding.
`
`Because consolidation avoids the risk of inconsistent or duplicative action by the
`
`Board as well as the parties, the Board exercises its discretion and sua sponte orders
`
`the consolidation of the above-captioned proceedings.3 In view thereof, Opposition No.
`
`91239608 and Cancellation No. 92067945 are hereby consolidated.
`
`
`3 When cases involving common questions of law or fact are pending before the Board, the
`Board may order the consolidation of the cases. See Fed. R. Civ. P. 42(a); see also, Regatta
`
`
`
`4
`
`
`
`Opposition No. 91239608 and Cancellation No. 92067945
`
`
`The consolidated cases may be presented on the same record and briefs. See Helene
`
`Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989) and Hilson
`
`Research Inc. v. Society for Human Resource Management, 26 USPQ2d 1423 (TTAB
`
`1993). The Board file for these consolidated cases will be maintained in Opposition
`
`No. 91239608 as the "parent" case. As a general rule, from this point on only a single
`
`copy of any paper or motion should be filed herein; but that copy should bear both
`
`proceeding numbers in its caption.4 The parties are further advised that despite being
`
`consolidated, each proceeding retains its separate character. The decision on the con-
`
`solidated cases shall take into account any differences in the issues raised by the
`
`respective pleadings and a copy of the final decision shall be placed in each proceeding
`
`file.
`
`PETITIONER’S BANKRUPTCY PROCEEDING
`
`On February 26, 2018, the district court, which retained jurisdiction to enforce the
`
`permanent injunction, issued a show cause order on Respondent’s motion for con-
`
`tempt, noting that shortly after the court entered its final judgment and permanent
`
`injunction, Petitioner filed for bankruptcy, which resulted in a stay of the district
`
`court action. The court also noted that the bankruptcy proceeding concluded October
`
`12, 2017. 7 TTABVUE 141-143.
`
`On April 6, 2018, the court held a show cause hearing regarding alleged contempt
`
`of the court’s order. An excerpt from the transcript shows that counsel for Petitioner
`
`
`Sport Ltd. v. Telux-Pioneer Inc., 20 USPQ2d 1154 (TTAB 1991) and Estate of Biro v. Bic
`Corp., 18 USPQ2d 1382 (TTAB 1991).
`4 One exception is the need for separate pleadings in each consolidated case. Should Re-
`spondent’s time to file an answer be reset, separate answers will be required.
`
`
`
`5
`
`
`
`Opposition No. 91239608 and Cancellation No. 92067945
`
`informed the court that Petitioner has ceased doing business, that Petitioner was
`
`unable to continue making payments under the Chapter 11 plan and is awaiting fur-
`
`ther action from the bankruptcy court. 7 TTABVUE 145-147.
`
`RESPONDENT’S MOTION TO SUSPEND
`
`In support of its motion to suspend this proceeding, Respondent submits its mo-
`
`tion to the bankruptcy court alleging that the bankruptcy reorganization plan for Pe-
`
`titioner provides for conversion or dismissal in the event of debtor default; that Peti-
`
`tioner has defaulted under the reorganization plan; and Respondent seeks conversion
`
`of the bankruptcy proceeding to a liquidation under Bankruptcy Act Chapter 7 or
`
`dismissal of the reorganization proceeding with prejudice to filing further bankruptcy
`
`petitions. Petitioner filed no opposition to the motion to suspend, and has taken no
`
`action before the Board in either proceeding since filing its petition to cancel and
`
`notice of opposition.
`
`In these circumstances where a court order may affect Petitioner’s ability to bring
`
`its claims against Respondent, the Board finds that Respondent has shown good
`
`cause to suspend this consolidated proceeding pending final determination of the
`
`bankruptcy case involving Petitioner. Respondent’s motion to suspend is GRANTED.
`
`PROCEEDINGS ARE SUSPENDED FOR GOOD CAUSE
`
`Within twenty days after the final determination of the bankruptcy case, Respond-
`
`ent should notify the Board so that this case may be called up for appropriate action.
`
`During the suspension period the Board should be notified of any address or email
`
`address changes for the parties or their attorneys.
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
