ESTTA Tracking number: ESTTA1048983 04/14/2020...In re Fiesta Palms LLC , 85 USPQ2d 1360 (TTAB...

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA1048983

Filing date: 04/14/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 91248802

Party PlaintiffScribe Opco, Inc. d/b/a BIC Graphic

CorrespondenceAddress

PHILIP R BAUTISTATAFT STETTINIUS & HOLLISTER LLP200 PUBLIC SQUARE, SUITE 3500CLEVELAND, OH 44114UNITED [email protected], [email protected], [email protected], [email protected], [email protected]

Submission Opposition/Response to Motion

Filer's Name Elizabeth Z. Baumhart

Filer's email [email protected], [email protected], [email protected], [email protected]

Signature /Elizabeth Z. Baumhart/

Date 04/14/2020

Attachments Opposition to Motion to Amend Goods - Publicly Filed Version.pdf(873755 bytes)

http://estta.uspto.gov

27058044.1 1


BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

SCRIBE OPCO, INC. DBA BIC

GRAPHIC

Opposer,

vs.

BRIAN P. IRWIN, individual,

Applicant.

OPPOSITION NO. 91248802

MARK: FUNNEL KOOZIE

SERIAL NO. 88154815

PUBLISHED: May 14, 2019

OPPOSITION TO APPLICANT’S MOTION TO AMEND ITS STATEMENT OF

GOODS AND SERVICES PURSUANT TO 37 C.F.R. § 2.133

Dated: April 14, 2020 /s/: Elizabeth Z. Baumhart

Philip R. Bautista

[email protected]

William A. Doyle

[email protected]

Taft Stettinius & Hollister LLP

200 Public Square, Suite 3500

Cleveland, Ohio 44114

(216) 241-2838 (telephone)

(216) 241-3707 (fax)

Jonathan G. Polak, Esq.

[email protected]

Elizabeth Z. Baumhart

[email protected]

Neil R. Peluchette

[email protected]

Taft, Stettinius & Hollister LLP

One Indiana Square, Suite 3500

Indianapolis, Indiana 46204

Telephone: (317) 713-3500

Fax: (317) 713-3699

Attorneys for Opposer

mailto:[email protected]

27058044.1 2

INTRODUCTION

Opposer Scribe Opco, Inc. dba Bic Graphic (“Scribe”) opposes Applicant Brian P. Irwin’s

(“Applicant”) Motion to Amend its (sic) Statement of Goods and Services Pursuant to 37 C.F.R.

§ 2.133 (12 TTABVUE)(Applicant’s “Motion”). The Motion seeks to amend the identification of

goods and services in trademark application Serial No. 88154815 for FUNNEL KOOZIE (the

“Application”) from:

“Apparatus for containing drips of liquid from funnels, comprising a ceramic drip

containment vessel”

to:

“Apparatus for containing drips of liquid petroleum products from funnels, comprising a

ceramic drip containment vessel, to be sold to do-it-yourself mechanics through channels

of trade that primarily sell automotive parts and tools”

in International Class 21. (the “Amendment”).

As described below, Applicant’s request does not meet the requirements for amendment

under 37 C.F.R. § 2.133, TBMP § 514, or Trademark Trial and Appeal Board (“TTAB”) precedent.

Thus, Applicant’s Motion should be denied or, in the alternative, held in abeyance until a final

decision or until the proceeding is decided upon summary judgment.

LAW AND ARGUMENT

I. Standard of Review

An application may not be amended in substance except with the consent of the other party

and the approval of the Board, or upon motion. 37 C.F.R. § 2.133(a). The TTAB has established a

framework for evaluating unconsented amendments in opposition proceedings. See Wisconsin

Cheese Group, LLC v. Comercializadora de Lacteos y Derivados, 118 USPQ2d 1262 (TTAB

2016)(citing Johnson & Johnson v. Stryker Corp., 109 USPQ2d 1077 (TTAB 2013)). Under the

27058044.1 3

framework, the TTAB will only grant a motion for an unconsented amendment if the applicant

makes the following prima facie showing:

(i) that the amendment is limiting or narrower than the broader description of goods;

(ii) that the applicant consents to the entry of judgment of the original description of

goods; and

(iii) that the applicant shows that the proposed amendment changes the nature and

character of the goods or restricts the channels of trade, so as to introduce a

substantially different issue in the proceeding.1

Id.

The TTAB usually may hold an unconsented motion to amend in abeyance pending a final

decision or a ruling on summary judgment. However, the TTAB may only exercise that discretion

when the applicant consents to the entry of judgment on the opposer’s claim of likelihood of

confusion between the opposer’s mark and the applicant’s mark on the broader recitation of

services (element (ii) above). See Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433

(TTAB 2007)(holding that a failure to consent to entry of judgment, among other things, did “not

allow the Board either to exercise its discretion to enter the amendment now or to defer

determination of the proposed amendment until final decision.”). An opposer has a right to a

determination of the issues based on the identification of services of the mark as it was published

for opposition. See Peopleware Sys., Inc. v. Peopleware, Inc., 226 USPQ 320 (TTAB 1985).

Applicant cannot make a prima facie showing that he is entitled to amendment here because

he fails to satisfy elements (ii) and (iii) of the Stryker framework above. Thus, Applicant’s Motion

should be denied.

1 If the application is a use-based application, the applicant must also confirm that any specimens of use must support

the amended goods. As the Application at issue in this proceeding is an intent-to-use application, this factor is not

relevant. Id. at 1078.

27058044.1 4

II. Applicant never consented to the entry of judgment of the original description of

goods.

Applicant has not consented to the entry of judgment of the original description of goods.

Applicant’s Motion does not convey his consent to the entry of judgment, nor did Applicant offer

to enter into a consent judgment in his February 27, 2020 email seeking Scribe’s consent. (Exhibit

A, February 27, 2020 e-mail from Applicant’s counsel to Scribe’s counsel.) Applicant fails to meet

the second Stryker requirement for allowing amendment on an unconsented application. See Drive

Trademark Holdings, 83 USPQ2d at 1433 (proposed amendment not approved because applicant

did not consent to entry of judgment as to the broader recitation of services).

Thus Applicant has failed to satisfy this element of the Stryker framework and the Motion

should be denied for this first reason.

III. Applicant has not shown that the proposed amendment changes the nature and

character of the goods or restricts the channels of trade, so as to introduce a

substantially different issue in the proceeding.

In his Motion, Applicant does not even attempt to argue that the Amendment changes the

nature and character of the goods in the Application or restricts the channels of trade. The only

argument Applicant makes is his conclusory assertion that “the restrictions recited in the presently

requested amendment will further avoid a likelihood of confusion with” Scribe’s KOOZIE®

trademarks, which include U.S. Reg. Nos. 3240989, 3793699, 4714580, and 4714581 (the

“KOOZIE® Marks”). (12 TTABVUE 2) As an initial matter, this naked statement, offered with

no witness or documentary evidence, should fail on its face. Although this alone is sufficient to

deny the Motion, Applicant has also failed to establish how the Amendment, if allowed, would

introduce a substantially different issue in the proceeding; by Applicant’s own express admission,

the proceeding will still center on the likelihood of confusion between the KOOZIE® Marks and

Applicant’s mark.

27058044.1 5

Additionally, Scribe’s KOOZIE® Marks and applicable registrations are not limited to a

particular trade channel and, thus, Scribe’s KOOZIE® Marks are presumed to travel in all usual

channels of trade, including automotive stores or stores geared toward do-it-yourself types. Levi

Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373, 107 USPQ2d 1167,

1173 (Fed. Cir. 2013)(“presuming, absent specific limitations from the applicant, that the

registration encompasses all goods or services of the type described, that they move in all normal

channels of trade, and that they are available to all classes of purchasers”)(citation omitted); In re

Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009)(same).

Thus, while Applicant attempts to narrow the scope of its goods to “channels of trade that

primarily sell automotive parts and tools,” Scribe’s KOOZIE® Marks are presumed to already

travel in this narrow channel of trade and confusion is still likely. In re Linkvest S.A., 24 USPQ2d

1716 (TTAB 1992)(when a mark has broad identification of goods or services, an applicant does

not avoid likelihood of confusion merely by more narrowly identifying its related goods.); In re

Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007)(holding mark for casino services, and

competing mark sought to be narrowed for casino services offered to preferred customers, still

likely to cause confusion). Indeed, KOOZIE® branded products do travel in this narrow channel

of trade. Scribe has customers in the automotive industry—including WaWa Gas Stations, Ford

Motor Company, Toyota Automotive, and Nissan, among others—that already sell KOOZIE®

branded products in various retail settings with their custom logos imprinted on the products.

(Exhibit B, Declaration of Melissa Ralston (“Ralston Decl.”), ¶¶ 7-11, Ex. 1.)

Finally, the sought-after amendment to the identification of goods contravene Applicant’s

deposition testimony. For instance, the Amendment states that the “apparatus” is for containing

“liquid petroleum products.” But during his deposition, Applicant testified that

27058044.1 6

.2 (Exhibit C, Excerpts of the Deposition of Brian P. Irwin,

Dated February 17, 2020 (“Irwin Dep.”), 64:4-66:14.) The Amendment also states that the

apparatus will be sold “through channels of trade that primarily sell automotive parts and tools.”

. (Irwin Dep. 61:2-7, 67:17-68:1, 85:4-11.) In other words, the Amendment’s

proposed uses and channels of trade are belied by what Applicant testified to less than two months

ago.

Thus, allowing the Amendment will not introduce a different issue in this proceeding—let

alone a substantially different issue—as this matter will still focus on the likelihood of confusion

between the KOOZIE® Marks and Applicant’s mark. Applicant has failed to satisfy this additional

element of the Stryker framework and the Motion should be denied.

CONCLUSION

Applicant’s Motion should be denied because Applicant has not shown (i) that he consents

to the entry of judgment of the original description of goods in the Application, and (ii) that the

Amendment changes the nature and character of the goods or restricts the channels of trade, so as

to introduce a substantially different issue in the proceeding.

If the Board does not deny the Motion, then Scribe requests that the TTAB hold a ruling

on Applicant’s Motion in abeyance until the final hearing or determination in this proceeding. See

Zachry Infrastructure LLC v. American Infrastructure Inc., 101 USPQ2d 1249, 1255-56 (TTAB

2011)(noting TTAB’s preference for holding contested motions to amend identification of goods

and services in abeyance until the final hearing or motion for summary judgment).

2 Unredacted versions of this Opposition have been filed under seal, in accordance with TBMP 502.02(c).

27058044.1 7

Dated: April 14, 2020 /s/: Elizabeth Z. Baumhart

Philip R. Bautista

[email protected]

William A. Doyle

[email protected]

Taft Stettinius & Hollister LLP

200 Public Square, Suite 3500

Cleveland, Ohio 44114

(216) 241-2838 (telephone)

(216) 241-3707 (fax)

Jonathan G. Polak, Esq.

[email protected]


[email protected]

Neil R. Peluchette

[email protected]

Taft, Stettinius & Hollister LLP

One Indiana Square, Suite 3500

Indianapolis, Indiana 46204

Telephone: (317) 713-3500

Fax: (317) 713-3699

Attorneys for Opposer

mailto:[email protected]

27058044.1 8

CERTIFICATE OF SERVICE

I hereby certify that on April 14, 2020, I served a true and accurate copy of the foregoing

Opposition by e-mail upon the following party:

John Roberts, Esq.

Roberts IP Law

3129 25th Street #295

Columbus, IN 47203

[email protected]

[email protected]

[email protected]

Attorney for Applicant

/s/: Elizabeth Z. Baumhart


One of the Attorneys for Opposer

mailto:[email protected]:[email protected]:[email protected]

Exhibit A

1

From: John Roberts

Sent: Thursday, February 27, 2020 5:34 PM

To: Doyle, William A.

Cc: Bautista, Philip; Baumhart, Elizabeth; [email protected];

[email protected]; Peluchette, Neil

Subject: Request for Consent to Motion re. Trademark Trial and Appeal Board Opposition

Proceeding Number 91248802 – FUNNEL KOOZIE

Dear Will:

Please advise whether Opposer will consent to Applicant's motion to amend its statement of goods from:

"Apparatus for containing drips of liquid from funnels, comprising a ceramic drip containment vessel"

to:

"Apparatus for containing drips of liquid petroleum products from funnels, comprising a ceramic drip containment vessel, to be sold to do-it-yourself mechanics through channels of trade that primarily sell automotive parts and tools".

Thank you.

--John

--------------------------------

John Roberts

Attorney at LawMain: 317-663-3138

Direct: 812-418-3663

Fax: 440-448-4348

Email: [email protected]

Schedule a Meeting in Carmel, Fishers, Noblesville, Plainfield, or Greenwood - Learn More at IndianaPatentLawyer.com

Mail Center: 3129 25th St. #295, Columbus, IN 47203-2436

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Exhibit B

27059110.1


TRADEMARK TRIAL AND APPEAL BOARD

SCRIBE OPCO, INC. d/b/a BIC

GRAPHIC,

Opposer,

vs.

BRIAN P. IRWIN, individual,

Applicant.

OPPOSITION NO. 91248802

SERIAL NO. 88154815

MARK: FUNNEL KOOZIE

PUBLISHED: May 14, 2019

DECLARATION OF MELISSA RALSTON

I, Melissa Ralston, hereby declare under penalty of perjury:

1. I am employed by Opposer Scribe Opco, Inc. d/b/a BIC Graphic (“Scribe”) as Chief

Marketing Officer.

2. I submit this declaration in support of Scribe’s Opposition to Applicant Brian P.

Irwin’s (“Applicant”) Motion to Amend its (sic) Statement of Goods and Services Pursuant to 37

C.F.R. § 2.133 (12 TTABVUE)(Applicant’s “Motion”).

3. I make this declaration based on my personal knowledge of the matters set forth

herein and/or upon my review of business records of Scribe regularly kept and maintained in the

ordinary course of its business.

4. Scribe is a world-class and well-known supplier of custom-imprinted promotional

products, with gross annual sales of .

5. Scribe manufactures and distributes a variety of consumer goods and services,

including but not limited to, insulated beverage holders, coolers, lunch bags, backpacks, chairs,

picnic baskets, pens, souvenirs, calendars, third party custom imprinting services, and more.

14th

Clearwater, Florida

27059155.1

Exhibit B-1

KOOZIE® Goods and Services in the Automotive Industry with Personalization

27059155.1

Toyota Automotive

27059155.1

Nissan

27059155.1

WaWa Gas Stations

27059155.1

Ford Motor Company

Exhibit C

BRIAN P. IRWIN

(440) 340-6161

Molnar Reporting Services, LLC

Page 61

1

25

BRIAN P. IRWIN

(440) 340-6161


Page 64

1

BRIAN P. IRWIN

(440) 340-6161


Page 65

1

BRIAN P. IRWIN

(440) 340-6161


Page 66

1

BRIAN P. IRWIN

(440) 340-6161


Page 67

1 I'm walking us through now and asking for your help

2 with answers on is just kind of what the

3 identification of the goods and services in your

4 application covers and does not cover.

5 So looking again at Exhibit 2, towards the

6 bottom of the page on page 1 in the identification,

7 I think I just asked you about whether this

8 references a particular market right before we went

9 off the record.

10 MR. DOYLE: Do I have that right; Pat?

11 (The requested material was read back by the

12 reporter.)

13 Q And this description, Mr. Irwin, also does not

14 reference a particular type of customer for the

15 product; correct?

16 A Correct.

17 Q And the description of goods and services on page 1

18 of Exhibit 2 doesn't reference a particular price

19 point for the product; correct?

20 A Correct.

21 Q And same question. It doesn't reference a

22 particular point of sale for the product; correct?

23 A Correct.

24 Q So it doesn't say that it has to be sold on the

25 Internet or in retail stores exclusively; right?

BRIAN P. IRWIN

(440) 340-6161


Page 85

1 would refer to in Exhibit 1, specifically in this

2 instance the flag wrapped ceramic containment

3 vessel in the lower right-hand corner.

4 Q Okay. Back to Exhibit 1 and the hydrographically

5 printed versions, do you envision selling this

6 product, like, logo'ed with a retail store's

7 insignia?

8 A Yes, hopefully.

9 Q Like having on the shelves in an O'Reilly's Auto

10 Part with O'Reilly's logo on it somewhere?

11 A That would be a good world, yes.

12 Q Okay. And then under that you say, "Yeah, my

13 attorney shared the update about the trademark

14 application moving forward. 'Funnel Koozie' is a

15 perfect name." Do you see that?

16 A Yes.

17 Q And the part about the application moving forward,

18 is that just related to what you were saying a

19 minute ago, that there had been no oppositions yet,

20 as far as you knew?

21 A As far as I knew, there had been no oppositions

22 filed yet.

23 Q And as best you can remember, that's what you were

24 referring to there?

25 A As best as I can remember, that was what I was

ESTTA Tracking number: ESTTA1048983 04/14/2020...In re Fiesta Palms LLC , 85 USPQ2d 1360 (TTAB...

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