ESTTA Tracking number:
`
`Filing date:
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`ESTTA1390619
`10/20/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`92084149
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`Party
`
`Correspondence
`address
`
`Plaintiff
`Get Spiffy, Inc.
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`SCOTT J. MAJOR
`MILLEN WHITE ZELANO & BRANIGAN, PC
`2200 CLARENDON BLVD., 14TH FLOOR
`ARLINGTON, VA 22201
`UNITED STATES
`Primary email: docketing@mwzb.com
`Secondary email(s): major@mwzb.com, accounting@mwzb.com,
`mail@mwzb.com
`703-465-5356
`
`Submission
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`Motion for Summary Judgment
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`Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule
`2.120(a); OR the motion for summary judgment is based on claim or issue pre-
`clusion, or lack of jurisdiction.
`
`The deadline for pretrial disclosures for the first testimony period as originally set
`or reset: 04/11/2025
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`Scott J. Major
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`major@mwzb.com, docketing@mwzb.com, mail@mwzb.com
`
`/Scott J. Major/
`
`10/20/2024
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`SJ Motion 10-20-24 - final.pdf(258295 bytes )
`exhibits.pdf(4655210 bytes )
`
`Filer's name
`
`Filer's email
`
`Signature
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`Date
`
`Attachments
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Get Spiffy, Inc.
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`Petitioner;
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`v.
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`Bubble Down, LLC,
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`Respondent.
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`Cancellation No. 92084149
`Reg. No.: 6666573
`Mark: SPIFFY SHIELD & Design
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`PETITIONER’S MOTION FOR SUMMARY JUDGMENT
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`
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` Pursuant to Federal Rule of Civil Procedure Rule 56(c), Trademark Rule
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`2.127(e), 37 C.F.R. § 2.127(e), and Trademark Trial and Appeal Board Manual of
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`Procedure (TBMP) § 528, Get Spiffy, Inc. (“Petitioner”) hereby moves for summary
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`judgment on its claim for cancellation of Registration No. 6666573 (“Respondent’s
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`Registration”) on the ground of likelihood of confusion under Section 2(d) of the
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`Trademark Act. Petitioner had previously filed on March 20, 2024 a motion styled as
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`one for summary judgment (“the Prior Motion”). Due to its timing, the Board treated
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`the Prior Motion as for judgment on the pleadings, and issued an order on August 15,
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`2024 denying the motion and resetting the case schedule.
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` This motion is based upon the pleadings on file in this proceeding (including
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`Petitioner’s Registration No. 5114933 (“Petitioner’s Registration”)), a declaration of
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`Petitioner’s Chief Executive Officer and attachments thereto, a declaration of the
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`undersigned counsel for Petitioner and attachments thereto, and upon this brief. As
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`shown below, summary judgment in favor of Petitioner on its claim of likelihood of
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`

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`confusion is required. Indeed, the logo that is the subject of Respondent’s
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`Registration should not have been allowed to register over, and coexist on the registry
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`with, Petitioner’s SPIFFY mark.
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`I.
`FACTUAL BACKGROUND
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`A. Petitioner’s Mark and Registration
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`The details of Petitioner’s Registration, which is of record in this proceeding,
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`are as follows:
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`SPIFFY
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`Mark:
`5114933
`
`Reg. No.:
`January 3, 2017
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`Reg. Date:
`Application Date: June 17, 2014
`Goods and Services:
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`International Class (“IC”) 9: Computer software and downloadable mobile
`applications for use in automated scheduling of washing, cleaning and
`detailing services and for dispatching of mobile washing, cleaning and
`detailing units to the scheduled appointments
`
`IC 37: Providing washing, cleaning and detailing services for vehicles;
`providing a website featuring information regarding washing, cleaning and
`detailing services
`
`IC 38: Providing an online forum for transmission of messages among
`computer users concerning vehicle washing, cleaning and detailing and the
`industries of vehicle washing, cleaning and detailing; telecommunication
`services, namely, routing calls, emails, SMS messages, push-notifications and
`electronic messages to local third-party providers of car washing services in
`the vicinity of the caller or messager
`
`IC 42: Providing temporary use of online, non-downloadable software for
`automated scheduling of vehicle washing, cleaning and detailing service
`appointments and dispatching mobile washing, cleaning and detailing units
`to the appointments; providing a website featuring technology that allows
`users to schedule appointments to have their vehicles washed, cleaned and
`detailed; computer services, namely, creating an on-line community for
`registered users to participate in discussions relating to vehicle washing,
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`
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`2
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`

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`cleaning and detailing and the industries of vehicle washing, cleaning and
`detailing
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`
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` Petitioner’s constructive use date arising from Petitioner’s Registration,
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`which enjoys incontestable status, is June 17, 2014 (“the Constructive Use
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`Date”). Petitioner has been using its SPIFFY mark in commerce since February
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`5, 2014 (“the Launch Date”) for providing washing, cleaning and detailing services
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`for vehicles and related goods and services. Declaration of Karl S. Murphy, Chief
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`Executive Officer and Co-Founder of Petitioner (“Murphy Decl.”; attached as
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`Exhibit 1) at ¶ 2.
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` Petitioner’s Registration was attached to the Petition for Cancellation that
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`initiated this proceeding. Thus, it is of record for this proceeding pursuant to 37
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`C.F.R. § 2.122(c) and (d)(1). Petitioner also owns pending Application No.
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`97274782, filed on February 18, 2022, to register the SPIFFY mark for various
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`goods and services (“Petitioner’s Application”). Petitioner’s Application has been
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`refused registration on the ground of likelihood of confusion with Respondent’s
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`Registration, and is suspended pending disposition of this proceeding.
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`Declaration of Scott J. Major (“Major Decl.”; attached as Exhibit 2) at ¶ 2. A true
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`and correct copy of the Final Office action refusing registration of Petitioner’s
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`Application is attached. Id. at ¶ 2 (Attachment 1 to Major Decl.).
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` Petitioner has used the SPIFFY mark in commerce continuously since the
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`Launch Date for washing, cleaning and detailing services for vehicles, related vehicle
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`care services and a mobile application. Murphy Decl. at ¶ 3. Since the Launch Date,
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`Petitioner has expanded the geographic territory in which it renders services and
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`3
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`

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`provides goods under the SPIFFY mark. It currently provides goods and services,
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`including washing, cleaning and detailing services for vehicles, under the SPIFFY
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`mark, either directly or through franchisees, in over 30 metropolitan areas located
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`in 12 States within the United States. Id. at ¶ 4. By April 8, 2018, Petitioner was
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`providing its mobile application and services, including washing, cleaning and
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`detailing services for vehicles, under the SPIFFY mark in the following metropolitan
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`markets in the United States: Atlanta, Charlotte, Dallas, Los Angeles, and Raleigh.
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`Id. at ¶ 5.
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` Since at least as early as August 1, 2015, Petitioner has promoted its mobile
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`application and services, including washing, cleaning and detailing services for
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`vehicles, under the SPIFFY mark via its website at getspiffy.com. Id. at ¶ 6. A true
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`and accurate representation of a page from the website at getspiffy.com from August
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`1, 2015, as retrieved from the Internet Archives, is attached. Id. at ¶ 7 (Attachment
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`1 to Murphy Decl.). Also attached is a true and accurate representation of a page
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`from the website at getspiffy.com from June 29, 2016 that was submitted to the
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`Patent and Trademark Office (“PTO”) as a specimen of use in support of the
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`Statement of Use filed for the application underlying Petitioner’s Registration No.
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`5114933 for the SPIFFY mark. Id. at ¶ 8 (Attachment 2 to Murphy Decl.).
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` Since November 11, 2014, Petitioner has offered under its SPIFFY mark at
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`blog.getspiffy.com a blog featuring information on, among other things, vehicle
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`washing, cleaning and detailing. The blog now features over 360 postings, including
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`more than 60 that were posted before April 9, 2018. Id. at ¶ 9. Petitioner also
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`4
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`promotes its mobile application and services, including its washing, cleaning and
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`detailing services for vehicles, under the SPIFFY mark via various social media
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`platforms.
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`For
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`example,
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`its
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`YouTube
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`channel
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`at
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`https://www.youtube.com/@Getspiffy/videos currently features 281 videos, and
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`featured more than 25 videos as of April 8, 2018. A video posted on Petitioner’s
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`YouTube channel on January 19, 2017 promoting SPIFFY car washing and detailing
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`services has more than 46,000 views, and a video posted on January 5, 2018
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`promoting SPIFFY oil change services has more than 324,000 views. In addition,
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`the LinkedIn page at https://www.linkedin.com/company/get-spiffy-inc was launched
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`in 2014, currently has more than 3900 followers, and includes hundreds of posts
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`relating to washing, cleaning and detailing services for vehicles and the car care
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`industry. Id. at ¶ 10.
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` Petitioner launched its franchise model in early 2021. By March 16, 2021,
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`Petitioner had entered into franchise agreements with five franchisees to bring
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`SPIFFY services to seven additional markets in the United States in the States of
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`California, Delaware, North Carolina, Ohio and South Carolina. Petitioner currently
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`has 15 franchisees, as well as 28 company-owned locations. Id. at ¶ 11.
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` Petitioner has garnered numerous
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`industry awards and unsolicited
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`recognition. These include “Best Car Wash” in Best of Durham for each year from
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`2021-2023, Carfax Top Service Center award for each year from 2019-2022, Tech
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`Tribune Best Tech Startups rating for each year from 2021-2023, and articles in
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`publications such as Forbes, Entrepreneur, Auto Rental News and Auto Marketing.
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`5
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`In September 2023, Newsweek magazine featured Petitioner and its SPIFFY brand
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`in an article naming it as one of the 100 Most Loved Workplaces in the United States.
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`Petitioner’s founders also have been interviewed by dozens of other media outlets.
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`Id. at ¶ 12.
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` Petitioner generally does not release financial data, but had revenue in excess
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`of $49 million in 2022 under its SPIFFY mark. As of August 2024, Petitioner had
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`performed more than three million services under its SPIFFY mark. Id. at ¶ 13.
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`Petitioner is genuinely concerned that the use and registration by Respondent
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`Bubble Down, LLC of a logo that features the term “spiffy” in connection with
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`competing services is damaging, and will continue to damage, Petitioner and its
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`SPIFFY mark. Id. at ¶ 14.
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`B. Respondent’s Logo and Registration
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` On May 13, 2021, Respondent filed Application No. 90708934, which
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`ultimately matured on March 8, 2022 into Respondent’s Registration for the
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`following logo (“the Logo”) for “automobile cleaning and car washing” (“Respondent’s
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`Services”) in IC 37:
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`
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`Respondent claims first use and first use in commerce of the Logo at least as early as
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`April 9, 2018. 4 TTABVUE at p. 3 (¶ 5). Tas noted above, the PTO has refused
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`6
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`registration of Petitioner’s Application on the ground of likelihood of confusion with
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`Respondent’s Registration.
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`C. Third-Party Applications/Registrations in IC 37
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` A search of the online records of the PTO disclosed only one live, third-party
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`registration for a mark consisting in whole or in part of the term “spiffy” for any
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`service in IC 37. Declaration of Scott J. Major (Exhibit 2). That registration is U.S.
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`Reg. No. 6613425 for the mark CAPTAIN SPIFFY for “[r]epair, maintenance and
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`modification of golf carts”. Id. (attachment thereto).
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`D. Respondent’s Concessions
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`
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`In challenging the Prior Motion, Respondent conceded standing, and for
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`purposes of that motion that Petitioner has priority of right. 7 TTABVUE at pp. 6-7.
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`With respect to the services at issue, Respondent also conceded that its services –
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`namely, “Automobile cleaning and car washing” -- “are similar to” the services of
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`“Providing washing, cleaning and detailing services for vehicles’” as set forth in
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`Petitioner’s Registration. Id. at p. 11. In addition, Respondent conceded in
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`responding to the Prior Motion that “there are no limitations as to channels of trade
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`or classes of purchasers in either Petitioner’s Registration or Respondent’s
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`Registration.” Id. at p. 12.
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`II.
`LEGAL STANDARD FOR SUMMARY JUDGMENT
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` The granting of summary judgment under Fed. R. Civ. P. 56 is appropriate
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`where the pleadings, depositions, answers to interrogatories, admissions on file,
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`together with any supporting affidavits, show that there is no genuine issue of
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`
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`7
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`material fact in dispute, and that the moving party is entitled to judgment in its favor
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`as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986). “The burden on
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`the moving party may be discharged by … pointing out … that there is an absence of
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`evidence to support the nonmoving party.” Id. at 322. “[T]he dispute about a material
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`fact is ‘genuine,’ … if the evidence is such that a reasonable jury could return a verdict
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`for the nonmoving party.” Anderson v. Liberty Lobby, 477 U.S. 242, 248 (1986).
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`
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`"[T]he mere existence of some alleged factual dispute between the parties will
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`not defeat an otherwise properly supported motion for summary judgment; the
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`requirement is that there is no genuine issue of material fact." Id. at 247-48 (emphasis
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`in original). The nonmoving party must do more than “simply show that there is
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`some metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co., Ltd.
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`v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). “[T]he nonmoving party must come
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`forward with ‘specific facts showing that there is a genuine issue for trial.’” Id. at 587
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`(emphasis in original, quoting Rule 56(e) pre-2007 amendment). “If the evidence
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`[favoring the nonmoving party] is merely colorable, or is not significantly probative,
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`summary judgment may be granted.” Anderson, 477 U.S. at 249-50 (citations
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`omitted).
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` A determination that a likelihood of confusion exists is appropriate for
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`resolution by summary judgment. See, e.g., Herbko Int’l, Inc. v. KappaBooks, Inc., 308
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`F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002); Apple Computer v. TVNet.net Inc., 90
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`USPQ2d 1393 (TTAB 2007). In order to prevail on its Section 2(d) claim on summary
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`judgment, Petitioner must establish that there is no genuine dispute that (1) it has
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`8
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`standing to maintain this proceeding; (2) that it is the prior user of its pleaded mark;
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`and (3) that contemporaneous use of the parties’ respective marks on their respective
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`services would be likely to cause confusion, mistake, or to deceive consumers. Fram
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`Trak Indus., Inc. v. WireTracks LLC, 77 USPQ2d 2000, 2005 (TTAB 2006), (citing
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`Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1735 (TTAB
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`2001)); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir.
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`2012) (“the verbal portion of a word and design mark likely will be the dominant
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`portion ... given that the literal component of brand names likely will appear alone
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`when used in text and will be spoken when requested by consumers.”).
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`III.
`ARGUMENT
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`
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` Petitioner clearly is entitled to statutory relief and enjoys priority of right.
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`Applying the appropriate factors, there also
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`is no genuine dispute that
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`contemporaneous use of the parties’ respective marks for their respective services
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`would be likely to cause confusion, mistake, or to deceive consumers. Accordingly,
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`the Board must grant summary judgment in favor of Petitioner on its likelihood of
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`confusion claim.
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`
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`A.
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`Entitlement to Statutory Relief (formerly “Standing”)
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` Petitioner has established its entitlement to statutory relief by submitting with
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`its petition for cancellation a copy of Petitioner’s Registration, prepared by the
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`USPTO, showing the current title to such registration for the SPIFFY mark and that
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`such registration is valid and subsisting. Apple Computer v. TVNET.net, Inc., 90
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`USPQ2d 1393, 1396 (TTAB 2007). Petitioner also is entitled to statutory relief
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`9
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`because a USPTO Examining Attorney has preliminarily refused registration of
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`Petitioner’s Application for the mark SPIFFY on the ground of likelihood of confusion
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`with the Logo as reflected in Respondent’s Registration. TPI Holdings, Inc. v.
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`Trailertrader.com, LLC, 126 USPQ2d 1409, 1413 (TTAB 2018). Finally, as noted
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`above, in responding to the Prior Motion, Respondent conceded standing. 7
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`TTABVUE 7. Accordingly, there is no genuine dispute of material fact regarding
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`Petitioner's entitlement to a statutory cause of action.
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`
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`B.
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`Priority
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` Petitioner’s Registration, which was submitted with the Petition to Cancel and
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`is of record, establishes Petitioner’s constructive use priority as of date of June 17,
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`2014. Trademark Action Section 7(c), 15 U.S.C. § 1057(c). In addition, Petitioner
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`has established priority based on actual use of its SPIFFY mark since the Launch
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`Date – that is, February 5, 2014 -- by the declaration of its Chief Executive Officer
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`(Murphy Decl. at ¶¶ 2-9 (Exhibit 1)). Finally, Respondent conceded priority in
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`responding to the Prior Motion.1 7 TTABVUE 8.
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`
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`Petitioner’s constructive use date of June 17, 2014 and the Launch Date are
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`earlier than May 13, 2021, Respondent’s constructive use date of March 8, 2022, and
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`April 9, 2018, which is the date of first use alleged in Respondent’s Registration.
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`Accordingly, there is no genuine dispute of material fact regarding Petitioner’s
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`priority.
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`1 Although Respondent conceded priority for purposes of responding to the Prior Motion,” Respondent
`otherwise responded to the Prior Motion, in part, by arguing that there are genuine disputes of
`material fact regarding certain likelihood of confusion factors. Significantly, Respondent did not argue
`that genuine disputes of material fact exist with respect to priority.
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`10
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`C.
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`Likelihood of Confusion
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` There is no genuine dispute that there is likelihood of confusion in this instance
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`as a matter of law. In fact, it is apparent that the PTO Examiner assigned to review
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`the application that ultimately matured into Respondent’s Registration committed
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`clear error in not citing Petitioner’s Registration as an obstacle under Section 2(d) of
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`the Trademark Act, 15 USC § 1052(d).
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` Likelihood of confusion is analyzed by applying the factors set forth In re E. I.
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`Du Pont de Nemours & Co., 177 USPQ 563, 476 F.2d 1357 (CCPA 1973). The Board
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`should consider only the “DuPont factors for which there is evidence of record” and
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`may “focus . . . on dispositive factors.” NASDAQ Stock Market Inc. v. Antartica S.r.l.,
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`69 USPQ2d 1718, 1727-28 (TTAB 2003) (citations omitted). A review of the relevant
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`factors is set forth below.
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`
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`1.
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`Similarity of Marks
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` Petitioner’s mark is SPIFFY in standard characters. Respondent’s Logo
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`comprises the wording SPIFFY SHIELD in conjunction with a design. Thus, the Logo
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`encompasses Petitioner’s SPIFFY mark in its entirety. Coca-Cola Bottling Co. v.
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`Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (affirming
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`Board’s finding on summary judgment that BENGAL LANCER with a Bengal Lancer
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`soldier design for club soda, quinine water and ginger was likely to cause confusion
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`with BENGAL for gin). The presence of the design element in the Logo is insufficient
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`to create a genuine issue of material fact as to the similarities of the marks. See Fram
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`Trak Indus., 77 USPQ2d at 2005 (summary judgment finding of likelihood of
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`confusion) (citing Herbko Int’l, 64 USPQ2d 1375 (Fed. Cir. 2002) (words are dominant
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`11
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`portion of mark); Ceccato v. Manifatura Lane Gaetano Marzetto & Figli S.p.A., 32
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`USPQ2d 1192 (TTAB 1994) (literal portion of mark makes greater and long-lasting
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`impression).
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` Significantly, and as noted previously, the PTO Examiner assigned to review
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`Petitioner’s Application has refused its registration based upon likelihood of
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`confusion with Respondent’s Registration. In the Office action making that refusal
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`“final”, the Examiner asserted inter alia that “[t]he marks are confusingly similar
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`because [Petitioner’s SPIFFY] mark has been fully incorporated into” the Logo, and
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`that the presence of the design in the Logo “does not overcome the similarities
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`between the marks”. Major Decl., Attachment 1 at p. 4. The Examiner’s position is
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`well-reasoned, and is the same position that should have been taken by the Examiner
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`assigned to review the application that ultimately – and improperly -- matured into
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`Respondent’s Registration.
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`
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`In short, when Petitioner’s SPIFFY mark and the Logo are considered in their
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`entireties, there is no genuine issue of material fact that they are substantially
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`similar in appearance, sound, connotation and commercial impression. This factor
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`strongly favors summary judgment.
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`
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`
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`2.
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`Relatedness of Services
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` Petitioner’s Registration covers services in IC 37 that are identical to
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`Respondent’s Services. This factor favors summary judgment as a matter of law.
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`Indeed, the similarities of the marks and overlapping nature of the parties’ services
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`alone should be sufficient to compel a finding of likelihood of confusion. See Federated
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`12
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`Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)
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`(“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of
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`differences in the essential characteristics of the goods and differences in the
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`marks.”). Moreover, Respondent conceded in responding to the Prior Motion that its
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`services “are similar to” Petitioner’s “Providing washing, cleaning and detailing
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`services for vehicles” as set forth in Petitioner’s Registration. 7 TTABVUE 11. Even
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`assuming arguendo that the services are only similar, as opposed to identical, this
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`factor weighs heavily in favor of summary judgment for Petitioner.
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`3.
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`Channels of Trade, Conditions of Purchase and Buyers to
`Whom Sales are Made
`
`
` The services are legally identical (or at least similar) and there are no
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`limitations as to channels of trade or classes of purchasers in either Petitioner’s
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`Registration or Respondent’s Registration. Thus, the Board must presume that the
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`parties’ respective services are sold in the same channels of trade and are bought by
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`the same classes of purchasers. See Viterra, 101 USPQ2d at 1908; Hewlett-Packard
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`Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
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`Respondent conceded this in responding to the Prior Motion in stating that “there are
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`no limitations as to channels of trade or classes of purchasers in either Petitioner’s
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`Registration or Respondent’s Registration.” 7 TTABVUE 12.
`
` Therefore, these DuPont factors also weigh in favor of a finding a likelihood of
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`confusion as a matter of law. Indeed, especially when considered in combination with
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`the similarities of the marks and similar and overlapping services, it is clear that
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`summary judgment in favor of Petitioner must be found as a matter of law. Fram
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`
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`13
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`Trak Indus., 77 USPQ2d at 2005 (“[C]onsidering the substantial similarity in sound,
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`appearance, and commercial impression of the marks and the overlapping nature of
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`the goods, trade channels and purchasers, we find that there is no genuine issue of
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`material fact and that confusion is likely to result.”).
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` As for conditions of purchase, Petitioner concedes solely for the purpose of this
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`motion that the parties’ respective services are of moderate cost and not subject to
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`impulse purchases. It is submitted that this factor is no worse than neutral with
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`respect to Petitioner’s position.
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`
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`
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`4.
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`Fame/Commercial Strength of Petitioner’s Mark
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` Petitioner submits that its SPIFFY mark is well-known and possessive of
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`substantial commercial strength. It has provided evidence of this in the form of the
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`declaration of its Chief Executive Officer. Specifically, the declaration supports a
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`finding that Petitioner has used the mark in commerce for more than ten years; has
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`engaged in significant promotional efforts in connection with the mark and the
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`services provided thereunder; enjoyed commercial success and substantial expansion
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`under the mark; and received industry awards and significant, unsolicited media
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`attention. Murphy Decl. at ¶¶ 2-13 (Exhibit 1). This factor should strongly favor
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`summary judgment in favor of Petitioner. However, even assuming for the limited
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`purpose of this motion that Petitioner’s SPIFFY mark is merely of ordinary strength
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`and distinctiveness, this factor can be considered to be no worse than neutral with
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`respect to Petitioner’s position.
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`
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`14
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`
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`Number and Nature of Similar Marks in Use on Similar
`Services
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`5.
`
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`A search of the USPTO’s online records reveals only one other “spiffy” mark
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`for services in IC 37 – namely, U.S. Reg. No. 6613425 for the mark CAPTAIN SPIFFY
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`for “[r]epair, maintenance and modification of golf carts”. Major Decl. (Exhibit 2).
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`These services are unrelated to the services at issue in this proceeding. Accordingly
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`it is submitted that this factor also supports summary judgment in favor of Petitioner
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`on its likelihood of confusion claim.
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`6.
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`Actual Confusion and Other Remaining Factors
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` For the limited purpose of this motion, Petitioner concedes that there has been
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`no actual confusion, and that the parties’ respective marks have coexisted in the
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`marketplace since Respondent’s alleged date of first use of April 9, 2018 with some
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`degree of geographic overlap. See Apple Computer, 90 USPQ2d at 1397 (actual
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`confusion evidence “is not a prerequisite for finding likelihood of confusion”; lack of
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`such evidence does not raise a genuine issue of material fact that precludes entry of
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`summary judgment). Petitioner also concedes for the limited purpose of this motion
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`that the remaining Dupont factors are not applicable, or do not favor its position.
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`D.
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`Conclusion
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` The similarities of the marks, services, trade channels, purchasing conditions
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`and purchasers all weigh strongly in favor of a finding of likelihood of confusion. In
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`addition, Petitioner’s SPIFFY mark is at least of ordinary strength and
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`distinctiveness, and there is no meaningful dilution of “spiffy” on the registry for
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`relevant services in IC 37. In short, there is no genuine issue of material fact that
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`confusion is likely to result, regardless of how the other DuPont factors are applied.
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`Accordingly, Petitioner submits that the Board must rule in its favor on this motion,
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`and that Respondent’s Registration must be cancelled.
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`Dated: October 20, 2024
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`GET SPIFFY, INC.
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` By: __________________________
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`Scott J. Major
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`Michael Culver
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`Adam D. Mandell
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`Geoffrey M. McNutt
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`Millen, White, Zelano & Branigan, P.C.
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`2200 Clarendon Blvd., Suite 1400
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`Arlington, Virginia 22201
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`Tel: 703-243-6333
`Fax: 703-243-6410
`major@mwzb.com; culver@mwzb.com;
`mandell@mwzb.com; mcnutt@mwzb.com
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`Attorneys for Petitioner
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`CERTIFICATE OF SERVICE
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`It is hereby certified that a true and correct copy of the foregoing document was filed
`electronically with the Trademark Trial and Appeal Board on October 20, 2024, and was emailed to
`counsel for Respondent at wpollack@shutts.com, tpa-ptomail@shutts.com, kchambers@shutts.com on
`that same date.
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`__/Scott J. Major/___________________
`Attorney for Petitioner
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`TABLE OF EXHIBITS
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`1.
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`Declaration of Karl Murphy with Attachments 1 and 2 (11 pages)
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`2.
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`Declaration of Scott J. Major with Attachments 1 and 2 (18 pages)
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`EXHIBIT 1 TO SUMMARY JUDGMENT MOTION
`EXHIBIT 1 TO SUMMARY JUDGMENT MOTION
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Get Spiffy, Inc.
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`Petitioner;
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`v.
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`Bubble Down, LLC,
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`Respondent.
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`Cancellation No. 92084149
`Reg. No.: 6666573
`Mark: SPIFFY SHIELD & Design
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`DECLARATION OF KARL MURPHY IN SUPPORT OF
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`PETITIONER’S MOTION FOR SUMMARY JUDGMENT
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`I, Karl Murphy, hereby state as follows:
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`1.
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`I am the Chief Executive Officer and co-founder of Get Spiffy, Inc. (“Petitioner”), and I
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`make this declaration based upon personal knowledge and Petitioner’s records.
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`2.
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`Petitioner began using the SPIFFY mark in commerce on or about February 5, 2014 (“the
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`Launch Date”) in connection with washing, cleaning and detailing services for vehicles, related vehicle
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`care services and a mobile application.
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`3.
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`Petitioner has used the SPIFFY mark in commerce continuously since the Launch Date
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`for washing, cleaning and detailing services for vehicles, related vehicle care services and a mobile
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`application.
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`4.
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`Since the Launch Date, Petitioner has expanded the geographic territory in which it
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`renders goods and services under the SPIFFY mark. It currently provides goods and services, including
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`washing, cleaning and detailing services for vehicles, under the SPIFFY mark, either directly or through
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`franchisees, in over 30 metropolitan areas in 12 States.
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`5.
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`By April 8, 2018, Petitioner was providing its mobile application and services, including
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`washing, cleaning and detailing services for vehicles, under the SPIFFY mark in the following
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`metropolitan markets in the United States: Atlanta, Charlotte, Dallas, Los Angeles, and Raleigh.
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`6.
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`Since at least as early as August 1, 2015, Petitioner has promoted its mobile application
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`and services, including washing, cleaning and detailing services for vehicles, under the SPIFFY mark via
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`its website at getspiffy.com.
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`7.
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`Attachment 1 hereto is a true and accurate representation of a page from the website at
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`getspiffy.com from August 1, 2015, as retrieved from the Internet Archives at
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`https://web.archive.org/web/20150801152930/http://getspiffynow.com/.
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`8.
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`Attachment 2 hereto is a true and accurate copy of a page from the website at
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`getspiffy.com from June 29, 2016 that was submitted to the Patent and Trademark Office as a specimen
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`of use in support of the Statement of Use filed for the application underlying Petitioner’s Registration No.
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`5114933 for the SPIFFY mark.
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`9.
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`Since November 11, 2014, Petitioner has offered under its SPIFFY mark a blog at
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`blog.getspiffy.com featuring information on, among other things, vehicle washing, cleaning and detailing.
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`The blog now features over 360 postings, including more than 60 that were posted before April 9, 2018.
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`10.
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`Petitioner also promotes its mobile application and services, including washing, cleaning
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`and detailing services for vehicles, under the SPIFFY mark via various social media platforms. For
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`example, its YouTube channel at https://www.youtube.com/@Getspiffy/videos currently features 281
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`videos, and featured more than 25 videos as of April 8, 2018. A video posted on Petitioner’s YouTube
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`channel on January 19, 2017 promoting SPIFFY car washing and detaining services has more than 46,000
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`views, and a video posted on January 5, 2018 promoting SPIFFY oil change services has more than
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`324,000 views. As another example, Petitioner’s LinkedIn page at
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`https://www.linkedin.com/company/get-spiffy-inc was launched in 2014, currently has more than 3900
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`followers, and includes hundreds of posts relating to washing, cleaning and detailing services for vehicles
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`and the car care industry.
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`11.
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`Petitioner launched its franchise model in early 2021. By March 16, 2021, Petitioner had
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`entered into franchise agreements with five franchisees to bring SPIFFY services to seven additional
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`markets in the United States in the States of California, Delaware, North Carolina, Ohio and South
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`Carolina. Petitioner currently has 15 franchisees nationally, as well as 28 company-owned locations.
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`2
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`Petitioner has garnered numerous industry awardsand unsolicited recognition. These
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`include “Best Car Wash”in Best ofDurham for each year from 2021-2023, Carfax Top Service Center
`award for each year from 2019-2022,