Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1010825
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`Filing date:
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`10/23/2019
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92068344
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Defendant
`Great Lakes Proud, LLC
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`REBECCA L WILSON
`THE DOBRUSIN LAW FIRM PC
`29 W LAWRENCE ST, STE 210
`PONTIAC, MI 48342
`UNITED STATES
`bwilson@patentco.com, tmmail@patentco.com
`248-292-2920
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`Opposition/Response to Motion
`
`Rebecca Wilson
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`bwilson@patentco.com, tmmail@patentco.com
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`/Rebecca L. Wilson/
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`10/23/2019
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`Response to Motion for Summary Judgement.pdf(183974 bytes )
`Exhibit 1-7.pdf(3007164 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Brass Reminders Company, Inc.
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`Petitioner
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`-v-
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`Great Lakes Proud, LLC
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`Respondent
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`Cancellation No. 92068344
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`Registration No. 5075255
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`RESPONDENT’S BRIEF IN OPPOSITION TO PETITIONERS’ MOTION FOR SUMMARY
`JUDGEMENT
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`Respondent/Registrant Great Lakes Proud, LLC (GLP), by and through their undersigned
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`counsel, hereby opposes the motion for Summary Judgement filed by Petitioners Brass Reminders
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`Company, Inc. (Brass Reminders) pursuant to Rule 56(a) of the Federal Rules of Civil Procedure,
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`15 U.S.C.
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`
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`I.
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`INTRODUCTION AND BACKGROUND
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`Respondent applied for and received U.S. Trademark Registration No. 5,075,255 (“the ‘255
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`mark”), on November 1, 2016, for “a pictorial depiction of the great lakes” in class 16, for
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`“Stickers and Decals.” The mark is currently registered on the Supplemental Register. The
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`Respondent has been using this trademark in commerce since as early as 2011.
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`1
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`Respondent also has a valid trademark in the State of Michigan, which they have held
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`since February 21, 2013. Registration No. M10724. (Exhibit 1) The mark:
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`The Respondent, Great Lakes Proud LLC, is a company founded on the idea of giving
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`back and has done so since 2011. Yes, on the Respondent’s website www.greatlakesproud.com
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`they refer to their decal or sticker as the “original.” This was clearly done by the Respondent to
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`put the public on notice that there are infringers selling decals using the Respondent’s trademark.
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`Any trademark owner would do the same thing, they warn the public that purchases their products
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`for a purpose to be careful because of imitations. They want the Great Lakes Proud consumer to
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`be comfortable that they are purchasing from the source indicated by the Mark. The Respondent
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`takes great pride in the fact that they give back to non-profits supporting preservation efforts.
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`(See Exhibit 2) Any trademark owner can attest that sometimes defending your mark can be
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`compared to playing whack a mole, whereas you get rid of one and then next one pops up. This
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`doesn’t mean that the defendant was “allowing” anyone to use their mark as is implied by the
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`Petitioner. In fact, the Respondent will show that they were in fact diligently enforcing their mark
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`to the best of their abilities.
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`The Petitioner goes on to point out that the Respondent offers decals with the image of the
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`Great Lakes in a variety of different designs, and colors and goes on to say “These decals are
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`designed for placement on the rear window of a car or truck” which is an inaccurate statement.
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`(Petitioner’s Motion Pg 2 ¶ 4) All vinyl decals and stickers offered by the Respondent can be
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`applied or placed on virtually any hard surface, they are not specifically designed for placement
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`on the rear window of a car or truck. The color scheme or pattern which is used with the applied-
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`2
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`for mark has no bearing on whether the mark is protectable when color is not claimed as part of
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`the mark. When applying for a mark in black and white, it is common practice to apply for the
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`mark in black and white but proceed to use the mark in any color the Registrant determines as
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`long as the design remains as applied-for.
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`It is not argued that Petitioner Brass Reminders also sells decals, as asserted in their
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`motion (Petitioner’s Motion Pg 3 ¶2). Brass Reminders stated that “With the exception of this
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`issue” they [Brass Reminders] “never had anyone challenge their productions of deal in the shape
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`of a state or body of water.” (Petitioner’s Motion Pg 3 ¶2) but in fact we have no way of actually
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`knowing the validity of that statement. This may just be the first time that someone had a
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`registered trademark and chose to assert their rights against this large company. Regardless, this
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`point brought up by the Petitioner has nothing to do with matter at hand.
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`In fact, in ¶10 of Petitioner’s Motion for Summary Judgment, Petitioner states they sold
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`their first decal in the shape of the Great Lakes in 2013. This seems to infer that the Petitioner is
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`stating that they sold a decal using a design similar or the same to the Respondent’s trademark
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`some two years after the Respondent began using their trademark for decals, which would be
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`considered infringement.
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`The Petitioner stated that they received a letter from Respondent on February 3, 2018, but
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`in fact that email was dated February 23, 2018. (See Exhibit 3) The Respondent reached out in a
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`cordial manner as they usually did with third parties. Mr. Holsinger, owner of Great Lakes Proud,
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`is not a litigious person and this is why he tried to resolve the issue by informing the Petitioner of
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`his federally registered trademark. In fact, as noted in the email, Mr. Holsinger actually knew of
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`the Petitioner because they had attended the same trade shows, and usually are familiar with each
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`others products. It should be noted, that the Respondent is not an attorney, and should not be
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`punished for it. For the Petitioner to pick apart any or all language of this informal letter from one
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`3
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`business owner to another is petty at best. Petitioner themselves had language in their response
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`which indicated they don’t perform trademark searches before taking orders, “It is Brass
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`Reminders policy to make any highway sign, state, island or lake shape requested by any
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`customer.” (Brass Reminder email February 23, 2018 Exhibit 3)
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`The Petitioner states: “Austin Holsinger responded on February 27, stating that Great
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`Lakes Proud had “applied for and received a registration for the rending of our logo back in
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`2016.” The email went on to say that “according to our attorneys any similar marks/logos used on
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`the same products can be considered infringing.” The email also noted that Great Lakes Proud has
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`“continuously reached out to individuals and/or companies that may not be aware of our
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`trademarked logo, so that they understand that a federal registration does exist and is being
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`monitored for decals/sticker …”” (Petitioner’s Motion Pg 5 ¶1)These are accurate excerpts from
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`the email chain and essentially enforces the Respondent’s argument that they have been and will
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`continue to assert their rights in their Mark.
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`The Petitioner has admitted that they have not used the Great Lakes Proud trademark on
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`the actual packaging of their decals but they use it on the decals themselves. We are failing to see
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`the logic in that assertion, because it still implies trademark infringement. (Petitioner’s Motion Pg
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`5 ¶4) Is the Petitioner stating that it’s ok to use someone else’s trademark as long as they argue
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`they are only using it ornamentally? The Petitioner goes onto argue that GLP is attempting to stop
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`others from selling a decal in a common shape. GLP is protecting their trademark rights in a hand
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`drawn design, which they have a registered trademark(s) on and therefore they are allowed to
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`enforce pursuant to their established rights in their trademark Registration. The Petitioner also
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`included in their exhibits a letter from Patrick at Great Lakes Proud to a third party,
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`RustyNailDesignCo. The Petitioner once again points out the general language used by
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`Respondent in his communication the fact remains that both the Petitioner and
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`4
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`RustyNailDesignCo. were using Respondent’s trademark without permission. Again, the
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`Respondent chose to send letters themselves to these third parties because it comes off a bit more
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`personal rather than having an attorney shoot off blanket cease and desist letters. Regardless of its
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`wording, the emails sent to third parties, still prove the Respondent’s point that they are actively
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`enforcing their mark.
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`According to the record on April 12, 2018, Brass Reminders filed the Petition for
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`Cancellation. A Default Judgement was issued on July 17, 2018. On July 20, 2018, Respondent
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`filed a Motion to Set Aside the Default Judgement, and an answer to the Petition for Cancellation.
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`The Board vacated the Default Judgement on February 27, 2019 and reset the matter for trial.
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`Petitioners assertions in their Motion, that the Respondents’ Mark in question is generic or
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`ornamental, are unfounded and the Petitioners fall short of their burden in this Motion.
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`Respondent opposes the Motion for Summary Judgment since there are genuine issues of
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`material fact. Petitioner has failed to meet the standard as required by law and therefore they are
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`not entitled to judgment as a matter of law.
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`II.
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`
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`Summary Judgement Standard
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`A movant is entitled to “summary judgment if the movant shows that there is no genuine
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`dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R.
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`Civ. P. 56(a). Federal Rule of Civil Procedure 56 permits the Court to grant summary judgment
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`only where the moving party demonstrates (1) the absence of genuine issue of material fact and
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`(2) entitlement to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322
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`(1986). The term “material” meaning that the fact, under governing law, could affect the outcome
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`of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Freeman v. Arapaio, 125
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`f. 3d. 732, 735 (9th Cir. 1997). Anderson also discussed that for a dispute to be “genuine,” a
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`reasonable jury must be able to return a verdict for the nonmoving party. Anderson 477 U.S. at
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`5
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`248.
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`In considering a motion for summary judgement, the Board must view the facts in the light
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`most favorable to the Respondent (Registrant), drawing all inferences in its favor, and find that
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`Petitioner is entitled to summary judgement because no reasonable fact finder could decide its
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`case in Respondent(Registrants) favor. See Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477
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`U.S. 317, 322-23 (1986); Anderson v. Liberty Lobby, Inc. 477 U.S. 242,247 (1986); Milliken &
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`Company v. Image Industries, Inc., 39 U.S.P.Q.2D (BNA) 1192, 1196 (TTAB 1996).
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`Furthermore, “summary judgment is generally disfavored in the trademark area,” and the issue of
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`trademark validity is considered “an intensely factual issue.” KP Permanent Make-Ip, Inc., v.
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`Lasting Impression I, Inc., 74 U.S.P.Q.2d 1897, 1900 (9th Cir. 2005).
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`The Petitioner’s Motion asserts that because there are multiple copycats of the
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`Respondent’s Mark that this means the mark is generic. “To determine that a trademark is generic
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`and thus pitch in into the public domain is a fateful step. It penalizes the trademark’s owner for
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`his success in making the trademark a household name and forces him to scramble to find a new
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`trademark.” Ty, Inc., v. Softbelly’s Inc., 353 F.3d 528 (7th Cir. 2003). The Petitioner then claims
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`in the alternative argument that the Respondent’s Mark is ornamental. Neither of these arguments
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`have been proven and they are both certainly contested.
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`The Petitioner avers that the main facts are known, and summary judgement is therefore,
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`appropriate, but it is obvious this Motion falls well short of the standard established under Rule 56
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`and is only being filed by the Petitioner to penalize the Respondent for their success and allow the
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`Petitioner’s unauthorized use of the Registered Mark.
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`6
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`III. Legal Arguments
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`A The Mark is NOT Generic as asserted by Petitioner
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`1.
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`Legal Standard
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`Terms that are generic are not capable of acquiring distinctiveness and accordingly are not
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`subject to registration on the Supplemental Register. 15 U.S.C § 1091; see Princeton Vanguard,
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`LLC v. Frito-Lay North Am., Inc., 114 U.S.P.Q.2d 1827, 786 F.3d 960, 965 (Fed. Cir. 2015). “A
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`mark is generic if its primary significance to the relevant public is the class or category of goods or
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`services on or in connection with which it is used.” TMEP §1212.02(i). The assumption in the matter
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`before us is that the Respondent’s Mark is not generic because it is registered on the Supplemental
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`Register. The analysis for genericness continues in that we look to a two-step inquiry:
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`A. What is the genus of goods and/or services at issue?
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`B.
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`Does the relevant public understand the designation primarily to refer to that genus
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`of goods and/or services?
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`H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 228 U.S.P.Q. 528, 782 F.2d 987,
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`990 (Fed. Cir. 1986).
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`Petitioner argues that “A term “can be generic for a genus of goods or services if the relevant
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`public . . . understands the term to refer to a key aspect of that genus,” such as a category of goods
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`or services within the genus. In re Cordua Rests., Inc., 118 U.S.P.Q.2d 1632, 823 F.3d 594, 603
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`(Fed. Cir. 2016); see also TMEP § 1209.03(v)(Oct. 2016)” (Petitioners Motion Pg 10 ¶1) The true
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`test was stated in 1800matress, “ It is not necessary to show that the relevant public uses the term
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`to refer to the genus. The correct inquiry is whether the relevant public would understand the term
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`to generic.” In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir.
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`2009). Further, it is well established that the relevant public for the genericness analysis is the
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`consumers who may purchase the goods in the marketplace. Magic Wand, Inc. v. RDB, Inc. 940
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`F.2d 638, 640 (Fed. Cir. 1991); Horizon Mills Corp. v. QVC, Inc., 161 F. Supp 2d 208, 212-13
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`(S.D.N.Y 2001. Petitioners have not submitted any type of evidence to support their contentions of
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`genericness. There is no survey or other direct consumer evidence to back up their position and
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`usually such survey evidence is vital in establishing genericness. McCarthy § 12:14. The non-
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`existence of evidence such as surveys or other direct consumer evidence enforces the idea that there
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`is no meaningful evidence of genericness. Magic Wand, 940 F.2d at 641 (affirming TTAB’s denial
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`of petition for cancellation, noting that petitioner supplied no survey evidence of consumer
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`understanding, no letters or testimony from consumers, and no affidavits from consumers showing
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`generic use or understanding).
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`Petitioners go on to argue that a logo or design can also be found to be generic, and they try
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`and relate the present case to that of the facts in Bell South, but that argument fails. In Bell South
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`Corp., AT&T “allowed” the third parties to use the walking fingers logo, therefore essentially giving
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`up any rights (albeit common law) they had in the mark to begin with, then after years of companies
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`randomly using the mark, Bell South decided to apply for the mark. By the time Bell South applied
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`for the mark, the mark had been used by multiple sources for an extensive period of time, therefore
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`making the mark generic for the goods it represented. Bell South Corp. v. Data National Corp., 35
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`U.S.P.Q.2d 1554, 60 F.3d 1565, 1570 (Fed. Cir. 1995) This can be differentiated from the case
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`before us as the Respondent in this case is doing everything in their power to constantly police and
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`enforce their mark. They applied for the Mark at the beginning of use, filing the state mark first,
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`then the federal Mark, they have never allowed others to use the mark unless they were properly
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`licensed, and they have sent out numerous letters and filed multiple take down notices with Etsy
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`and Amazon to date. (See Exhibit 4) Showing the list of third-parties as well as Etsy sellers and
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`Amazon ASIN numbers.
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` The Petitioner asserts “A mark that is an image of the Great Lakes is generic for a decal
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`8
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`that is an image of the Great Lakes,” which seem misconstrued. The Respondent is registering their
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`mark for stickers and decals as stated in the applied-for registration. The Mark is indicative of those
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`very things, stickers and decals, from a specific source, Great Lakes Proud. Even more so, stickers
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`and decals which serve a purpose. The Mark is not generic for all stickers and decals.
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`This leads us to the actual two-step genericness inquiry:
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`a.
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`Genus of the goods in question
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`The genus of the goods is determined by focusing on the identification of goods in
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`the subject applications. In re Cordua Rests., Inc., 826 F.3d 594, 118 USPQ2d 1632, 1636 (“Fed.
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`Cir. 2016). Therefore, we must consider whether the Mark is the generic name for: stickers and
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`decals as noted in the Registration 5075255. As stated in In re Cordua Rests, Inc., the correct
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`question is not whether the Respondent’s Mark is generic as applied to their own goods, but rather
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`whether the term is understood by the purchasers or consumers to refer to the wider genus of
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`decals/stickers. The answer is obviously no, in that the purchasers for goods do not understand the
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`Mark as being representative of all stickers and decals, but instead that of stickers and decals which
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`originate from the Respondent.
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`The Petitioner wants to argue that you must access this “genus” based on extrinsic or outside
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`evidence but that is not mandatory and if the goods are clear enough, as they are in this case, they
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`should stand on their own. “Sometimes an applicant’s description of goods/services is simple and
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`clear enough that it may be used verbatim as the ‘genus.’ Other times, … distillation of a
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`complicated or lengthy description of goods/services into a clear, more succinct ‘genus’ greatly
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`facilitates the determination of whether a term is generic.” ActiveVideo, 111 USPQ2d at 1602.
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`There is no reason in this case to assume what we don’t know, when we can take into consideration
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`what we do know, which is that the goods are stickers and decals, nothing more, nothing less.
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`As clearly listed in Registration 5075255, the Respondent has applied-for and registered
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`9
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`their Mark to cover “Stickers and Decals” in Class 016. They did not have to state what kind, what
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`color, what they were for, where they should go etc. The goods are “Stickers and Decals.” The
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`Petitioner would like to go on and infer more, but as stated in In re Cordua Rests the standard is
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`clear. The Respondent contacted numerous sellers requesting that they not use the Respondent’s
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`Mark for stickers and decals. The Respondent had the right to do so given they applied for and
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`registered the Mark for stickers and decals, this means on the products, on the product packaging,
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`on the inserts for the products, on the instructions for the products, anything related to the products
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`is assumed to be protectable. If a mark is not protectable for the goods it is registered for, then that
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`defeats the purpose of having a trademark.
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`The Petitioner goes on to discuss the distinctiveness/descriptiveness continuum, definitions
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`of descriptiveness and then genericness and stating in part:
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`“A mark is considered merely descriptive if it describes an ingredient, quality, characteristic,
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`function, feature, purpose, or use of the specified goods or services. See In re TriVita, Inc., 783 F.3d
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`872, 114 USPQ2d 1574 (Fed. Cir. 2015) (NOPALEA held descriptive of dietary and nutritional
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`supplements).” TMEP 1209.01(b). “Similarly, a mark is considered merely descriptive if it
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`immediately conveys knowledge of a quality, feature, function, or characteristic of an applicant’s
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`goods or services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d
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`1217, 1219 (Fed. Cir. 2012); In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d
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`1828, 1831 (Fed. Cir. 2007).” Id.
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`“Generic terms are terms that the relevant purchasing public understands primarily as the
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`common or class name for the goods or services. In re Dial-A-Mattress Operating Corp., 240 F.3d
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`1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001); In re Am. Fertility Soc'y, 188 F.3d 1341,
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`1346, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999). A generic term is "the ultimate in
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`descriptiveness" under §2(e)(1) and incapable of acquiring distinctiveness under §2(f). H. Marvin
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`10
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`Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir.
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`1986).” TMEP 1209.01(c).
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`The Petitioner states “If a generic term is “the ultimate in descriptiveness” then it stands to
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`reason than an image of the product that is identical with the product is also the ultimate in
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`descriptiveness. It is simply not possible to get more descriptive than a pictorial depiction of the
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`Great Lakes for an object that is nothing but a pictorial depiction of the Great Lakes.” (Petitioner’s
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`Motion Pg 15 ¶1). The Petitioner is arguing a non-existent point. The Mark was registered,
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`therefore inferring that the Mark is not generic. There are no circumstances that have changed to
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`make genericness more of an issue with the exception that the Petitioner wants to justify their
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`infringement of the Mark. The Respondent’s Mark is used as a source indicator of stickers and
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`decals, originating from the Respondents as stated in the Registration and used according as shown
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`by the evidence the mark as used on their packaging, social media, invoices, catalog covers and
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`discussed in non-selected third-party articles.
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`The Petitioner is specifically arguing genericness and in fact, in Dial-A-Mattress, the court
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`found that 1-888-M-A-T-R-E-S-S was not generic as applied to “telephone shop-at-home retail
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`services in the field of mattresses,” because there was no evidence of record that the public
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`understood the term to refer to shop-at-home telephone mattress retailers. TMEP 1209.01(c)(i).
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`Dial-A-Mattress is more straightforward in the fact that the mark correlates with the services,
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`whereas in our case, the Mark has no generic reference to the goods as applied-for.
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`These references to case law and the TMEP are all correct. We know that currently, the
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`Respondent’s Mark is registered on the Supplemental Register. We know that TMEP 801.02(b)
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`states “Certain marks that are not eligible for registration on the Principal Register, but are capable
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`of distinguishing an applicant’s goods or services, may be registered on the Supplemental Register.”
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`Therefore, we can infer that Respondent’s Mark is capable of distinguishing the applicant’s goods.
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`11
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` (b)
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`Relevant Public
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` In the second part of the genericness test we look to whether the relevant public understands
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`the designation primarily to refer to the genus. The relevant public should be the purchasing or
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`consuming public for the identified goods.
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`As stated previously, “it is not necessary to show that the relevant public uses the
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`term to refer to the genus. The correct inquiry is whether the relevant public would understand the
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`term to be generic. TMEP 1209.01(c)(i) citing to In re 1800Mattress.com IP LLC, 586 F.3d 1359,
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`92 USPQ2d 1682, 1685 (Fed. Cir. 2009). Therefore in this case, the correct inquiry is whether the
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`relevant public would understand the Respondent’s Mark to be generic for decals and stickers. The
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`answer is no.
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`Petitioners have the burden of proving by clear evidence that the Respondent’s Mark
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`is primarily used or understood by the relevant class of consumers to refer to stickers and decals.
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`Stocker v. Gen. Conference Corp., 39 U.S.P.Q.2d 1385, 1392 (TTAB 1996). Even though the
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`burden of proving genericness has been referred to as the preponderance of the evidence standard,
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`the Federal Circuit indicates that genericness findings require “substantial showing…that the matter
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`is in fact generic” and that showing “must be based on clear evidence of generic us.” In re Merrill
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`Lynch, Pierce, Fenner, and Smmith, Inc., 828 F.2d 1567,1571 (Fed. Cir. 1987).
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` The Petitioner briefly discusses the consumer for the Respondent’s goods and then quickly
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`moves on to the declaration of Mr. Brent Durham (See Exhibit 6)(also Petitioner’s Motion’s Exhibit
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`6) who is the owner/President of the Petitioner, Brass Reminders, Company, Inc. He goes on to
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`state his opinion within the declaration (See Declaration pg 2 ¶ 5 and 10) It is unclear from the
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`Declaration if Mr. Durham is speaking to the fact that he sold decals using the Respondent’s Mark
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`(which would be infringement) or if they had a distinctive design of their own that they sold. (See
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`Declaration pg 2 ¶ 4 and 6) The Declaration of Mr. Durham goes on to explain that they have never
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`12
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`used the Respondent’s Mark on their packaging or labels. (See Declaration pg 3 ¶ 9) They are
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`essentially stating that because they only used it on their product and not the packaging for the
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`product, the same products covered by the Respondent’s trademark registration, stickers and decals,
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`that it doesn’t count.
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`- Third party sellers
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`The Petitioner points out that the Respondent is not the only one using Respondent’s Mark
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`for selling stickers and decals.
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`“Great Lakes Proud is not the only company selling decals that are a pictorial depiction of
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`the Great Lakes. As the Board stated in Bell South Corp. v. Data National Corp., 35 U.S.P.Q.2d
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`1554, 60 F.3d 1565, 1570 (Fed. Cir. 1995), “cases have recognized that competitor use is evidence
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`of genericness.” Bell South at 1570. This is a fact that even Great Lakes Proud admits. On its website
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`Great Lakes Proud states, “Often Imitated, Never Duplicated,” and later explains that there “have
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`been several copy-cat brands…” [See Great Lakes Proud Website, page 2, and FAQs, Ex. 2.]”
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`[Petitioner’s Motion Pg 16 ¶2]
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`Yes, the Respondent is transparent to their consumers so that they do not purchase products
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`bearing the Respondent’s Mark assuming they will get the same result, or that those third parties
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`using the Mark will donate to specific causes or give back to non-profits. Respondent has been
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`fighting off infringers since the beginning. They are constantly monitoring and sending notices.
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`The Respondent has sent out numerous letters to third parties, filed complaints with Etsy, and also
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`infringement notices with Amazon. (See Exhibit 4) The Petitioner wants to rely on what the
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`Respondent knows or doesn’t know about third party use as well as what the Respondent does or
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`doesn’t do in terms of enforcement of their Mark. In the Motion, the Petitioner points to Exhibits
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`that were submitted with the now registered trademark for the Respondent’s Mark, but those
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`Declarations do nothing but help to prove the case for the Respondent. (Petitioner’s Motion pg 16
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`¶ 3) (See Exhibit 7) The Motion goes on to discuss whether or not the Respondent knew of infringers
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`as a certain date, and we aren’t quite sure what impact this has on the issue at hand, but even so, it
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`could be possible that the wording in the declaration was meant to infer a date prior to the filing of
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`the Mark or any other time, not specific to the date period specified in the Petitioners Interrogatories.
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`(Petitioner’s Motion pg 16 ¶ 3)
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`The Petitioner also alleges that they “began offering its Great Lakes decal for sale beginning
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`in 1998, but only began actually selling its Great Lakes image decal in 2013.” (Petitioner’s Motion
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`pg 17 ¶ 2) Aside from the fact that this assertion doesn’t make any sense, the Petition is not
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`asserting a 2(d) argument, so we fail to understand the point, except to reiterate that it is companies
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`like the Petitioner that are part of the problem. The Motion goes on to talk about third parties
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`offering a decal or sticker for sale using the Respondent’s Mark and essentially speaking to the
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`notion that the Respondent isn’t policing their mark. Respondent is policing their Mark, the way
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`they choose to do so, but regardless, there is no test to determine how much is enough, or to what
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`extreme a mark holder must go to in order to enforce their mark. The Petitioner goes on to discuss
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`how they personally, through their Attorney, reached out to these third parties, (some of which
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`contacted the Respondent after these interactions):
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`“Brass Reminders sought to determine the extent to which Great Lakes Proud actively
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`policed it’s mark, and request information regarding Great Lakes Proud’s contacts with any of these
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`companies, and whether Great Lakes Proud had ever initiated legal action against any of these
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`companies. In its responses to interrogatories, Great Lakes Proud claimed that this information is
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`protected by attorney client privilege. [Respondent’s answers to Interrogatories No. 6 & 7, attached
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`as Ex. 15]” (Petitioner’s Motion pg 18 ¶ 2)
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`In naming the third parties that Petitioner found selling decals or stickers using the
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`trademarked logo owned by Great Lakes Proud (or something similar) or that is what we can assume
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`they asked because that would be the only mark which is relevant, the Petitioners Attorney admits
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`that he contacted third parties directly to see if they had been contacted by the Respondent. This
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`feels like more of harassment rather than fact finding in this case, as the Attorney could have just
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`sent the list to the Respondent and asked. Instead, they proceeded to call and potentially harass and
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`incite third party sellers who could have actually been legitimate retailers, the Petitioner didn’t know
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`and those third parties have no obligation to tell him. There is no way to assess the validity of what
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`each party told the Petitioner’s Attorney nor do we know what the attorney said to them because
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`those communications are coincidentally not submitted. Nonetheless, the idea that the Respondent
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`hasn’t contacted a particular seller, has no bearing on whether or not the mark is generic.
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`B.
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`1.
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`Other Arguments
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`Respondent’s Response to Petitioner’s argument regarding the visual aspect of the
`Registered Mark
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`The Petitioner discusses the case, In the case of In re Underwater Connections, Inc., 223
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`U.S.P.Q. 95 (USPTAB 1983) where the TTAB held that the visual depiction of a scuba tank was
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`merely descriptive of travel-tour services involving underwater diving. The Respondent doesn’t see
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`how this is applicable in this case. The case essentially determined that a drawing or depiction of
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`scuba tank was representative of the travel services involving diving. In our case, the trademark is
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`representing decals or stickers. The Respondent is selling decals and stickers, not lakes, drawings
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`of lakes, surrounding areas etc. The same analogy can be made for the other case that the Petitioner
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`brings into play, Ratcliff Hoist Co. which speaks to a drawing of a hoist and the company sold
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`hoists. Ratcliff Hoist Co., 157 U.S. P.Q. 118 (TTAB 1968). These analogies do not work in the
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`present case because the goods are not the drawing and the drawing is not the goods. The
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`Respondent’s Mark is representative of a source indicator.
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`The Petitioner goes on to say, As explained in the TMEP “A visual representation that
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`consists merely of an illustration of the goods, or of an article that is an important feature or
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`characteristic of the goods or services, is merely descriptive under §2(e)(1) of the Trademark Act,
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`just as a merely descriptive word would be.” TMEP § 1209.03(f):
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` “ If the drawing of a hoist is merely descriptive of an actual three-dimensional steel hoists,
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`then a mark that is a flat two-dimensional visual depiction of the Great Lakes must be generic of
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`goods that are a flat decal that is nothing more than a visual depiction of the Great Lakes.”
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`(Petitioner’s Motion pg 22 ¶ 2) This assessment makes no sense in that the mark is not what the
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`Respondent is offering for goods, the Mark is representative of their brand. In fact, if what the
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`Petitioner is arguing is said to be true then this would equate to the Respon