Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1167855
`10/22/2021
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92071703
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Jimmy's Contractor Services, Inc.
`
`RHETT V BARNEY
`LEE & HAYES PC
`601 W RIVERSIDE AVENUE, SUITE 1400
`SPOKANE, WA 99201
`UNITED STATES
`Primary Email: rhettb@leehayes.com
`Secondary Email(s): shellyg@leehayes.com, ethan.vodde@leehayes.com, litig-
`ation@leehayes.com
`509-944-4642
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
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`Date
`
`Attachments
`
`Opposition/Response to Motion
`
`Rhett V. Barney
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`shellyg@leehayes.com, ethan.vodde@leehayes.com,
`caleb.hatch@leehayes.com
`
`/Rhett V. Barney/
`
`10/22/2021
`
`JCS - Response in Opp to Petitioners MSJ.pdf(395351 bytes )
`JCS -Dec of Ethan Vodde iso Response to MSJ.pdf(147180 bytes )
`EXS A - D.pdf(859446 bytes )
`Ex E PART 1.pdf(5698651 bytes )
`Ex E PART 2.pdf(4332648 bytes )
`Ex F Redacted.pdf(794233 bytes )
`EXS G - I.pdf(4712877 bytes )
`EXS J - M.pdf(1138518 bytes )
`
`

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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Servi-Tek, Inc.
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`v.
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`Jimmy’s Contractor Services, Inc.
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`
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`Petitioner,
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`Cancellation No. 92071703
`Registration No. 5044774
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`
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`Registrant.
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`REGISTRANT’S RESPONSE TO PETITIONER’S
`MOTION FOR SUMMARY JUDGMENT
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`INTRODUCTION
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`Petitioner contends in its Motion for Summary Judgment (“Motion”) that there is no issue
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`of material fact concerning its argument that Registrant’s Mark is likely to cause confusion with
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`Petitioner’s mark; this is incorrect, unsupported, and based on disputed facts. Petitioner’s
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`purported “undisputed facts” are irrelevant, immaterial to the issue on which it seeks summary
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`judgment, or contradicted by documents and witness testimony.
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`There is a genuine issue of material fact concerning Petitioner’s purported priority based
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`on continuous use, and there is a genuine issue of material fact concerning the DuPont likelihood
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`of confusion factors. Specifically , there is a genuine issue of material fact concerning: (i) the
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`similarity of the marks in their entireties as applied to the relevant services and (ii) Petitioner’s
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`purported strength of its mark, which is relevant when considering (1) the number and nature of
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`similar marks in use for similar services; (2) the extent to which Petitioner has the right to exclude
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`others from use; (3) the nature and extent of any actual confusion; and (4) the length of time during
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`and the conditions under which there has been concurrent use without evidence of actual
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`

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`
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`confusion. Additionally, there are genuine issues of material fact concerning the relatedness of the
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`identified goods and services.
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`The undisputed material facts demonstrate there is no likelihood of confusion between
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`Registrant’s use of its SERV-TECH Mark used in connection with “Roofing services; Roofing
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`consultation; Roofing contracting; Roofing installation; Roofing repair; Roofing services, namely,
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`waterproofing” and Petitioner’s SERVI-TEK Mark used in connection with “janitorial” and
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`“building maintenance” services. Petitioner’s unsupported attempt to conflate the two should be
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`rejected.
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`Notably, the facts, Petitioner’s own arguments and purported facts, and the relevant
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`evidence demonstrate that there is no likelihood of confusion between the marks. Because of the
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`significance of the factors showing Petitioner’s mark is weak as applied to its identified services
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`in a crowded field of marks featuring SERV and TEC (or TEK or TECH), the Trademark Trial
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`and Appeal Board should, pursuant to TBMP § 528.08, sua sponte render summary judgment in
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`Registrant’s favor, finding no likelihood of confusion.
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`STATEMENT OF DISPUTED MATERIAL FACTS
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`1.
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`Registrant disputes Petitioner’s statement that it has “continuously used in
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`commerce the SERV-TECH mark with Petitioner’s Services since at least as early as March 1,
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`2006.” See 21 TTABVUE 5. Petitioner has never alleged it has used Registrants’ SERV-TECH
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`mark.1 Moreover, Petitioner has not presented evidence it has used the SERVI-TEK mark
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`continuously in commerce since at least as early as March 1, 2006.
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`2.
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`Registrant disputes that the term “serv” in its Mark was chosen as an abbreviation
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`of the word “service.” See 21 TTABVUE 8. As Petitioner is well aware from the produced
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`1 Registrant understands this may be a typo. See n. 2, supra.
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`

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`documents and deposition testimony, the term “serv” is not an abbreviation, but an acronym.
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`Declaration of Ethan Vodde ("Vodde Decl.") at ¶ 3.
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`3.
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`Registrant disputes Petitioner’s statement that “Registrant’s Services include . . .
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`maintenance, graffiti removal, internal ceiling tile replacement, and light ceiling cleaning.” See 21
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`TTABVUE 8. Petitioner’s purported fact is directly refuted by the relevant identified services of
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`Registrant’s registration and the declaration and deposition testimony of Jimmy Stroh. See 17
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`TTABVUE 86 at ¶ 3; see also 21 TTABVUE 8 at ¶ 23. Petitioner’s purported fact is also not
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`relevant to the issue at hand; the services at issue are “janitorial” and “building maintenance”
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`services and roofing services, as identified in the relevant registration and application. Before the
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`Board, “likelihood of confusion must be based on the [services] identified in the application” and
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`registration. See Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 1370, 101 U.S.P.Q.2d
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`1713, 1722 (Fed. Cir. 2012). Whether Registrant “can” or occasionally engages in particular
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`services is not relevant to determine the meaning of a registration’s identified services.
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`4.
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`Registrant disputes Petitioner’s unsupported position that “Petitioner’s Services
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`Are Related To Registrant’s Services.” See 21 TTABVUE 9. Notably, Petitioner does not actually
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`allege any undisputed fact in support of its conclusion that the services are related; rather,
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`Petitioner generally states that companies may provide roofing services as well as building
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`maintenance and janitorial services. See id. Petitioner attempts to frame a disputed issue of material
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`fact as undisputed, despite having no admissions or statement of law to support this proposition.
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`STATEMENT OF UNDISPUTED MATERIAL FACTS
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`1.
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`Registrant’s relevant services are “Roofing services; Roofing consultation; Roofing
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`contracting; Roofing installation; Roofing repair; Roofing services, namely, waterproofing” in
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`connection with its SERV-TECH Mark (“Registrant’s Services). 1 TTABVUE 1, 5 at ¶ 15.
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`

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`2.
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`Registrant provides services within the definition of roofing services in connection
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`with its SERV-TECH Mark. See 21 TTABVUE 85 at ¶ 3.
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`3.
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`Registrant has used its SERV-TECH Mark in commerce in connection with
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`Registrant’s Services at least as early as May 2015. 17 TTABVUE 85-86 at ¶¶ 5-7.
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`4.
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`Registrant’s Services were and are currently offered in Washington and Idaho. 17
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`TTABVUE 86 at ¶ 6.
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`5.
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`Registration No. 3,273,571 for SERVI-TEK in association with “Janitorial and
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`building maintenance services” and owned by Servi-Tek, LLC registered on August 7, 2007, and
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`was cancelled for failure to file appropriate maintenance documents on March 9, 2018. Vodde
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`Decl. at ¶ 4; see also 21 TTABVUE 22. Registration No. 3,273,571 was valid and existing at the
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`time Registrant was granted registration of Registrant’s mark on September 20, 2016. See Vodde
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`Decl. at ¶ 5. Servi-Tek, LLC was converted into a corporation, Servi-Tek, Inc., in June 2010. Id. at
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`¶ 6, Interrogatory No. 2.
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`6.
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`Petitioner’s relevant services are “Janitorial services; building maintenance
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`services.” 1 TTABVUE 1, 2 at ¶ 4. Petitioner describes these services as being, specifically,
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`“internal and external cleaning, pressure washing, carpentry, painting, and maintenance and repair
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`of electrical, plumbing, and ventilation systems.” 21 TTABVUE 18; Vodde Decl. at ¶ 6,
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`Interrogatory No. 3.
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`7.
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`Petitioner’s services have been offered in California, Nevada, Florida, Arizona, and
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`Hawaii. 21 TTABVUE 8; Vodde Decl. at ¶ 6, Interrogatory No. 16.
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`8.
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`The field of janitorial and building maintenance services crowded with marks
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`featuring a combination of the terms SERV and TEK. Vodde Decl. at ¶ 7.
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`

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`9.
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`Petitioner does not provide roofing services. Indeed, Petitioner admits it does not
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`provide roofing services and any such services are provided through third parties. 21 TTABVUE
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`6 at ¶ 10, 17-18; id. at 22 at ¶ 9.
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`10.
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`Petitioner has no plans to expand its product or service line under its SERVI-TEK
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`mark to include roofing services. Vodde Decl. at ¶ 8, Interrogatory No. 17.
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`11.
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`The Parties are not aware of any instances of actual of suspected consumer
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`confusion involving the Parties’ marks. Id. at ¶ 6, Interrogatory No. 13.
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`12.
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`Petitioner has never had to explain and/or disclaim any association with Registrant.
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`Id., Interrogatory No. 14.
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`13.
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`Petitioner has never enforced its rights in Petitioner’s mark against any third parties.
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`Id., Interrogatory No. 6.
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`ARGUMENT AND AUTHORITIES
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`A.
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`Petitioner fails to meet its burden under the summary judgment standard.
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`Federal Rule of Civil Procedure 56 governs the rendering of summary judgment, made
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`applicable to proceedings before the board by the Trademark Rules of Practice, 37 C.F.R.
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`§ 2.116(a). Summary judgment is only proper where the movant shows there is no genuine dispute
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`as to any material fact and the movant is entitled to judgment as a matter of law. Fed. R. Civ. P.
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`56(a). A genuine factual dispute exists “if the evidence is such that a reasonable jury could return
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`a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
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`“[T]he Board must view the evidence in the light most favorable to the nonmovant.” Olde Tyme
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`Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 202, 22 U.S.P.Q. 1542, 1544 (Fed. Cir. 1992). “Since
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`opposing factual inferences may arise from the same set of undisputed subsidiary facts, the Board
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`must draw all reasonable inferences in favor of the nonmovant.” Id.
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`

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`Additionally, the Board may enter summary judgment sua sponte on the same issue in
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`favor of the nonmoving party even though there is no cross-motion for summary judgment. See
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`TBMP § 528.08. In the case at hand, not only has Petitioner failed to meet its burden and is not
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`entitled to summary judgment as a matter of law, there is no genuine dispute of material fact that
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`Registrant instead is entitled to summary judgment based on the crowded field Petitioner occupies.
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`Lastly, Registrant once again objects to Petitioner’s attempt to support its position based
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`on unreported cases that are not properly cited. See 27 TTABVUE 2; 23 TTABVUE 6 n. 2.
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`B.
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`Petitioner has not proven it is an undisputed fact that it has continually used its mark
`in commerce since 2006.
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`Petitioner claims it is an undisputed fact that “Petitioner has continuously used in
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`commerce the SERV-TECH [sic]2 mark with Petitioner’s Services at least as early as March 1,
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`2006 to the present.” 21 TTABVUE 6. Petitioner defines “Petitioner’s Services” as “janitorial and
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`building maintenance services.” 21 TTABVUE 4.3 Registrant disputes that Petitioner has
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`continuously used SERVI-TEK in commerce since 2006; specifically, Petitioner was asked to
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`“describe in detail the business conducted by Petitioner since its formation.” Vodde Decl. at ¶ 6,
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`Interrogatory No. 3. Objecting, Petitioner simply answered: “Janitorial services; building
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`2 Registrant understands this to be a typo and that Petitioner actually meant to write “SERVI-TEK.”
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`3 For clarity, Registrant notes Petitioner has identified its relevant services as “Janitorial services; building
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`maintenance services.” 1 TTABVUE 2. Petitioner originally applied, on May 4, 2018, to register SERVI-
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`TEK in association with “Janitorial, facilities engineering, and building maintenance services” but amended
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`to the current identification on October 29, 2018. 21 TTABVUE 273, 246. As part of that office action
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`response, Petitioner argued there was no likelihood of confusion with Registrant’s mark because, inter alia,
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`the sight, sound, and similarity of the marks differed and the identified services were not related. See 21
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`TTABVUE 245-46; see also 21 TTABVUE 223-24.
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`

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`maintenance services; engineering services.” Id. Registrant also asked Petitioner to “[i]dentify
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`each different purchase order, invoice, label, hangtag, wrapper, container, advertisement,
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`brochure, and the like” using Petitioner’s mark. Id., Interrogatory No. 19.
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`Petitioner produced over two hundred documents during the course of discovery. See
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`Vodde Decl. at ¶ 16. However, while Petitioner was asked to describe its conducted business since
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`its formation in 2006, and to identify invoices, labels, hangtags, and other indicia of trademark
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`use, it has failed to provide evidence of at least three consecutive years of use. See id. Which
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`includes 2018, when Petitioner’s mark was cancelled for failure to file appropriate maintenance
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`documents. See id. There exists a question of fact whether Petitioner engaged in continuous use of
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`Petitioner’s mark.
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`C.
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`Considering the entirety of the factors, Petitioner’s mark is not similar enough to
`Registrant’s mark so as to be likely to be confused with Registrant’s Mark, and
`Petitioner is not entitled to judgment as a matter of law for a claim of likelihood of
`confusion.
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`In determining likelihood of confusion, the Board considers the factors set out in In re E.
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`I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973).
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`Relevant here are the following factors:
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`(1)
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`(2)
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`(3)
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`(4)
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`(6)
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`(7)
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`(8)
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`The similarity or dissimilarity of the marks in their entireties as to
`appearance, sound, connotation and commercial impression.
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`The similarity or dissimilarity and nature of the goods or services as
`described in an application or registration or in connection with which a
`prior mark is in use.
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`The similarity or dissimilarity of established, likely-to-continue trade
`channels.
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`The conditions under which and buyers to whom sales are made, i.e.
`“impulse” vs. careful, sophisticated purchasing . . .
`The number and nature of similar marks in use on similar goods.
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`The nature and extent of any actual confusion.
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`The length of time during and conditions under which there has
`been concurrent use without evidence of actual confusion . . .
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`(11) The extent to which [Opposer] has a right to exclude others from use of its
`mark on its goods.
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`(12) The extent of potential confusion, i.e., whether de minimis or substantial.
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`(13) Any other established fact probative of effect of use.
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`Id. (emphasis added).
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`1.
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`The similarity of the appearance, sound, connotation, and commercial
`impression of the relevant marks is an issue of disputed fact.
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`Petitioner pleaded that “Petitioner’s mark SERVI-TEK and Registrant’s mark SERV-
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`TECH” are “different in appearance” but “similar in sound and meaning.” 1 TTABVUE 6. Now,
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`Petitioner contradicts its Petition and argues that “Petitioner’s SERVI-TEK mark and Registrant’s
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`SERV-TECH mark are nearly identical in sound, appearance, connotation, and overall commercial
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`impression.” 21 TTABVUE 13. Petitioner quotes the Examining attorney’s analysis of the
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`similarity of the marks. See id. But Petitioner had also argued that the differences are distinct
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`enough not to warrant a finding of likelihood of confusion. See 21 TTABVUE 223-24, 245-46
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`(Petitioner argued “[Petitioner’s] mark differs from [R]egistrant’s mark . . . by adding an ‘I’ after
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`‘SERV’ and using a ‘K’ instead of the letters ‘CH’ at the end of ‘TEK,’ which makes [Petitioner’s
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`mark] distinct by three (3) different characters . . . Therefore, the potential for confusion is not with
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`the mark itself, but perhaps with the description of services.”).
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`“Because marks, including any suggestive portions thereof, must be considered in their
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`entireties, the mere presence of a common, highly suggestive portion is usually insufficient to
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`support a finding of likelihood of confusion.” Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915,
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`916-17, 189 U.S.P.Q 693, 694 (C.C.P.A. 1976). And “even marks that are identical in sound and/or
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`appearance may create sufficiently different commercial impressions when applied to the
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`respective parties’ goods or services so that there is no likelihood of confusion.” TMEP
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`1207.01(b)(v); Olde Tyme Foods, Inc., 961 F.2d at 202 (concluding that the marks “OLD TIME”
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`and “YE OLD TYME” for various foods were not shown as a matter of law to be similar in their
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`entireties as to appearance, connotation, and commercial impression). Here, Petitioner uses a
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`highly descriptive mark, as applied to its relevant services, that does not share the same meaning
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`as when applied to Registrant’s services.
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`Notably, Petitioner aptly cites case law for the proposition that “[t]he proper test is not a
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`side-by-side comparison of the marks,” yet almost immediately resorts to a side-by-side
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`comparison in an attempt to make two different marks used with respect to two different services
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`appear similar. See 21 TTABVUE 13, 14.
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`Petitioner has presented evidence that “[t]he term ‘servi’ in Petitioner’s Mark was chosen
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`as an abbreviation of the word ‘service.’” See 21 TTABVUE 7. Notably, the term “Service Tech”
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`is a term of art in the janitorial and building maintenance field; it is used to identify the individuals
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`engaged in, for example, janitorial work and HVAC maintenance. See Vodde Decl. at ¶ 9.
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`“Roofers,” on the other hand, are not identified as “Service Techs.” See id. at ¶ 10. There is a
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`factual dispute whether consumers encountering Registrant’s mark and Petitioner’s mark would
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`be impressed with the same commercial impression. Petitioner’s use of SERVI-TEK as a stand-in
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`for “Service Tech” may give the commercial impression of a trained worker, while Registrant’s
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`use of SERV-TEC gives the commercial impression, as Petitioner concedes, of a roofing
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`contractor’s service department. See 21 TTABVUE 9. Further, the term “Serv” in Registrant’s
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`mark was designed to be an acronym, not an abbreviation of service, and consumers may recognize
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`this when encountering the mark. See Vodde Decl. at ¶ 3, pp. 42-43.4 The commercial impression
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`4 “So ‘S’ stands for stand, stand as a team. ‘E’ is we are examples of integrity. And we have a reputation,
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`so ‘R’ is reputation of excellence. And ‘V’ is for vision. We have vision to achieve our company and
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`personal goals.”
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`of Registrant’s mark is affected by this choice, as well. Registrant should be allowed to argue this
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`factual dispute at trial.
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`2.
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`Petitioner’s mark is weak to the point of allowing the marketplace to be
`saturated with similar marks, and summary judgment should be granted in
`Registrant’s favor.
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`This body’s predecessor held:
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`where a party chooses a trademark which is inherently weak, he will not enjoy the
`wide latitude of protection afforded the owners of strong trademarks. Where a party
`uses a weak mark, his competitors may come closer to his mark than would be the
`case with a strong mark without violating his rights.
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`Sure-Fit Products Co. v. Saltzson Drapery Co., 45 C.C.P.A. 856, 859, 117 U.S.P.Q. 295, 297
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`(C.C.P.A. 1958).
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`“Evidence of widespread third-party use, in a particular field, of marks containing a certain
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`shared term is competent to suggest that purchasers have been conditioned to look to the other
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`elements of the marks as a means of distinguishing the source of goods or services in the field.” In
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`re Broadway Chicken, Inc., 38 U.S.P.Q.2d 1559, 1565-66 (TTAB 1996). Indeed, the TMEP notes
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`“third-party registrations may be relevant to show that a mark or a portion of a mark is . . . so
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`commonly used that the public will look to other elements to distinguish the source of the goods
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`or services.” TMEP 1207.01(d)(iii). The Supreme Court recently approvingly quoted McCarthy:
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`“’[I]n a crowded field of look-alike marks’ (e.g., hotel names including the word ‘grand’),
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`consumers ‘may have learned to carefully pick out’ one mark from another.” United States PTO
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`v. Booking.com BV, 140 S. Ct. 2298, 2307, 220 U.S.P.Q.2D 10729 (2020).
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`Here, there are no allegations that Registrant and Petitioner are competitors. But, even if
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`they were, Petitioner’s field and Registrant’s submitted evidence fit neatly into the holding of
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`Broadway Chicken. See 38 U.S.P.Q.2d at 1565. As noted infra, Petitioner’s mark is highly
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`descriptive of Petitioner’s identified services. See Vodde Decl. at ¶ 9. And Registrant submits 30
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`screenshots of websites with identical services as Petitioner, each of which uses a combination of
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`“serv” and “tec” (or “tek” or “tech”). Vodde Decl. at ¶ 7.
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`The evidence is overwhelming that Petitioner’s mark is weak and entitled to a limited scope
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`of protection. See id. at ¶¶ 7, 9. As to the DuPont factors, there is an impressive number of similar
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`marks of the same nature as Petitioner’s in use for similar services. See id. at ¶ 7. Petitioner’s right
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`to exclude others from use, considering the number and nature of concurrent users, is circumspect.
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`See id.; see also id. at ¶ 6, Interrogatory No. 6 (Petitioner has not demanded any third-party cease
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`use of a confusingly similar mark). Given Petitioner’s pleading that Petitioner has been operating
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`since 2006 and Registrant has been operating since 2015, and that both parties use the same
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`channels of trade,5 it is notable that there have been no instances of actual (or suspected) confusion.
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`See id. at ¶ 6, Interrogatory No. 13. Even assuming arguendo Registrant’s channels of trade and
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`services were identical to Petitioner’s, the public has been trained to identify distinct differences
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`in the that industry given the crowded field of “serv” and “tek” and “the marks, considered in their
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`entireties, are readily distinguishable from one another due to the differences in” the elements that
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`are not “serv” and “tek.” See Broadway Chicken, 38 U.S.P.Q.2d at 1566; See Vodde Decl. at ¶ 7.
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`5 There is a genuine issue of material fact concerning the similarities between the parties’ channels of trade
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`and marketing. Cf. 21 TTABVUE 18. Registrant’s primary marketing is through repeat and referral
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`business. 21 TTABVUE 470. Petitioner, on the other hand, utilizes third-parties such as contracted call
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`centers. See 21 TTABVUE 37-55. While there may be some overlap, it appears to be incidental; Petitioner
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`only cites to one trade show attended by Registrant’s principal and, contrary to Petitioner’s assertion, there
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`is no evidence Petitioner markets through “word of mouth.” Compare 21 TTABVUE 19 & 9 with 21
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`TTABVUE 375 & 470.
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`

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`Petitioner twists the definition of “maintenance” to argue that “Registrant’s Services are .
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`. . actually subsumed within[] Petitioner’s Services.”6 21 TTABVUE 17. But Petitioner’s Services
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`are not “maintenance,” but “building maintenance.” See id. And “building maintenance” is a term
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`of art in the industry; the evidence supports Petitioner’s identification associated with building
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`maintenance as for being associated with, inter alia, “HVAC / Mechanical Maintenance &
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`Retrofit[;] . . . Lighting Maintenance & Minor Electrical Repairs[;] . . . Improved Energy
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`Efficiency.” See 21 TTABVUE 72; see also Vodde Decl. at ¶ 7. Petitioner has merely chosen the
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`job title of a janitorial or building maintenance worker, a “Service Tech,” and removed the “ce,”
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`replaced the “ch” with a “k,” and added a hyphen. See Vodde Decl. at ¶ 9. There is no genuine
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`issue of material fact that the field of janitorial and building maintenance services is replete with
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`variations of the “Service Tech” title, and that consumers will look to other identifying
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`characteristics rather than “serv” and “tech.” See id. at ¶¶ 7, 9.
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`Additionally, the relevant consumers here are “owners and facility/property managers of
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`commercial and residential buildings.” 21 TTABVUE 19. This “class of purchasers for the
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`involved [services are] relatively sophisticated and would immediately recognize the significance
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`of the [SERVI and TEK] portion[s] of the marks.” See Dade Behring Inc. v. Bio-Chem Laboratory
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`Systems, Inc., 2001 TTAB LEXIS 147, at *9 (TTAB March 9, 2001) (attached hereto as App'x 1
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`nonprecedential). Like Behring (and the cases cited therein), this is a case where “a single
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`duPont factor [is] dispositive.” See Kellogg Co. v. Pack’Em Enters., 951 F.2d 330, 333, 21
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`U.S.P.Q.2d 1142, (Fed. Cir. 1991). At a minimum, there is a factual dispute. Registrant suggests
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`6 Petitioner makes this argument despite including third-party registrations that identify “building
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`maintenance and repair services, namely” a number of services falling within this umbrella and, separately,
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`“roofing.” See, e.g., 21 TTABVUE 486, 490.
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`
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`the Board sua sponte grant summary judgment in Registrant’s favor. See, e.g., Tonka Corp v.
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`Tonka Tools, Inc., 229 U.S.P.Q. 857, 858 (TTAB 1986); and Visa Int’l Serv. Ass’n v. Life-Code
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`Syst., Inc., 220 U.S.P.Q. 740, 744 (TTAB 1983); see also Lloyd’s Food Products, Inc. v. Eli’s,
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`Inc., 987 F.2d 766, 768, 25 U.S.P.Q.2d 2027, 2029 (Fed. Cir. 1993) (“A service mark . . . entails
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`use in conjunction with the offering and providing of a service. This makes all the more important
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`the use of the [m]ark in ‘sales’ or ‘advertising’ materials of different descriptions.”).
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`3.
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`The relatedness of the identified services is an issue of disputed fact.
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`Petitioner claims that it is undisputed that “Petitioner’s Services Are Related To
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`Registrant’s Services”. 21 TTABVUE 9. Specifically, Petitioner claims that “United States
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`trademark registrations for a mark in connection with ‘roofing services’ often also include[]
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`‘building maintenance and janitorial’ services.” Id. In further support of a claim that this is an
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`undisputed fact, Petitioner offers evidence purporting to prove some “[e]ntities in the United States
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`commonly provide janitorial, maintenance, and roofing services under the same mark.” See id.
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`Petitioner has submitted 13 third-party registrations in support of its claim. See 21
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`TTABVUE 485 - 507. These 13 registrations represent 9 distinct entities: Knight Restorations
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`Services, LP; Vixxo Corporation; Keith Rossberg; Enlightenment, Inc.; Ryan Development, LLC;
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`Nuventus, LLC; Norland Managed Services Limited (and Norland Green); Ascential Service
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`Corporation; and Emcor Group, Inc. Registrant objects to consideration of the four Section 44-
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`based registrations owned by Norland. See In re 1st USA Realty Professionals, Inc., 84 U.S.P.Q.2d
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`1581, 1583 (TTAB 2007) (registrations not based on use in commerce have no probative value
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`and the Board will not consider them). Keith Rossberg’s registration required maintenance by
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`May 19, 2021, and is now in the grace period; his registration may be cancelled shortly after this
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`motion is fully briefed. See Vodde Decl. at ¶ 13. Ryan Development, LLC’s specimen shows use
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`
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`of the mark in association with real estate development, but not in association with roofing,
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`building maintenance, or janitorial work. See id. at ¶ 14. Nuventus, LLC’s specimen only shows
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`use in association with gutter work. See id. at ¶ 15.
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`The remaining 6 registrations (owned by 5 registrants) do not make it an undisputed fact
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`that Petitioner’s services are offered in conjunction with Registrant’s under the same mark. See In
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`re Albert Trostel & Sons Co., 29 U.S.P.Q.2d 1783, 1785-86 (TTAB 1993) (third-party registrations
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`“may have some probative value to the extent that they serve to suggest that the listed goods and/or
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`services are of a type which may emanate from a single source”) (emphasis added). Here, the
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`probative value is limited. See id. at 1786.
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`Registrant hereby submits, via declaration, 20 third-party registrations suggesting that
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`“roofing services” are not commonly identified with “janitorial services” or “building maintenance
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`services,” and 20 third-party registrations suggesting that “janitorial services” and “building
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`maintenance services,” while commonly identified with each other, are not commonly identified
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`with “roofing services.” See Vodde Decl. at ¶ 12, 11.
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`Petitioner’s internet evidence likewise has limited probative value and certainly is not
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`sufficient to satisfy Petitioner’s burden at summary judgment. Petitioner hereby submits, via
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`declaration, printouts from 30 websites describing entities that provide “janitorial” and “building
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`maintenance” services. See Vodde Decl. at ¶ 7. None of these entities also provide roofing services.
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`See id. Petitioner appears to have scoured the internet to find 9 entities that engage in both
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`“janitorial” and “roofing” services. See 21 TTABVUE 552 – 582; Registrant’s evidence shows
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`that the services are not commonly found together or, at the very least, there is a genuine issue of
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`material fact concerning their relatedness.
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`CONCLUSION
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`Petitioner’s Motion for Summary Judgment should be denied. The Board should act sua
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`sponte and grant summary judgment in Registrant’s favor, dismiss the Petition in its entirety, and
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`dismiss this proceeding.
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`DATED this 22nd day of October, 2021.
`
`
`
`/Rhett V. Barney/
`RHETT V. BARNEY
`Lee & Hayes, P.C.
`601 W. Riverside Avenue, Suite 1400
`Spokane, WA 99201
`Attorneys for Registrant Jimmy’s Contractor Services,
`Inc.
`
`
`
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`
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`

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`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on 22nd day of October, 2021, the foregoing Response to Petitioner’s
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`Motion for Summary Judgment was filed with the Trademark Trial and Appeal Board’s ESTTA
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`system, and was served upon Petitioner’s attorney of record at the following email addresses:
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`mhdonovan@duanemorris.com
`
`
`
`
`
`/Rhett V. Barney/
`RHETT V. BARNEY
`Lee & Hayes, P.C.
`601 W. Riverside Avenue, Suite 1400
`Spokane, WA 99201
`Telephone: (509) 944-4642
`Fax: (509) 323-8979
`rhettb@leehayes.com
`
`Attorneys for Registrant Jimmy’s Contractor Services, Inc.
`
`
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`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Servi-Tek, Inc.
`
`
`Petitioner,
`
`v.
`
`Jimmy’s Contractor Services, Inc.
`
`
`Registrant.
`
`Cancellation No. 92071703
`Registration No. 5044774
`
`
`
`DECLARATION OF ETHAN VODDE IN SUPPORT OF REGISTRANT’S
`RESPONSE TO PETITIONER’S MOTION FOR SUMMARY JUDGMENT
`
`ETHAN VODDE declares under the penalty of perjury as follows:
`
`1.
`
`I am an attorney at Lee & Hayes, P.C., the firm representing Registrant
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`Jimmy’s Contractor Services, Inc. in the above captioned matter.
`
`2.
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`I am over the age of 18 years and I make the following declaration based
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`upon my personal knowledge and the books and records of my firm.
`
`3.
`
`I attach as Exhibit A true and correct copy of the following pages of
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`excerpts of the deposition transcript of Jim Stroh, Jimmy’s Contractor Services, Inc.’s Rule
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`30(b)(6) deponent, conducted on February 23, 2021, via videoconference, and reported by
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`certified reporter Elaine Smith, RMR: 1, 2, 3, 6, 42, 43, 73, 74, and correction page.
`
`4.
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`I attach as Exhibit B a true and correct copy of the TSDR detail of
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`prosecution history for Reg. No. 3,273,571.
`
`5.
`
`I attach as Exhibit C a true and correct copy of the TSDR detail of
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`prosecution history for Reg. No. 5,044,774.
`
`1
`
`

`

`6.
`
`I attach as Exhibit D a true and correct copy of Petitioner’s Responses to
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`Registrant’s First Set of Interrogatories, dated November 13, 2020, with a Certificate of
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`Service on Registrant’s counsel dated November 13, 2020.
`
`7.
`
`Pursuant to Trademark Rule 2.122(e) and TBMP 528.05(e), I attach as
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`Exhibit E true and correct copies of screen captures from websites that I personally last
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`visited on or around October 19, 2021 and October 22, 2021 and viewed on the date and at
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`the URL depicted on each page of the relevant screen captures. These websites each depict
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`different entities using a variant of SERV and TEK to advertise janitorial or building
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`maintenance services.
`
`8.
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`I attach as Exhibit F a true and correct copy of Petitioner’s Supplemental
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`Responses to Registrant’s First Set of Interrogatories, dated February 12, 2021, with a
`
`Certificate of Service on Registrant’s counsel dated February 12, 2021, and the production
`
`accompanying same, Bates Nos. SERVI-TEK_000225-228. Four pages of this production
`
`