`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`This Decision is a
`Precedent of the TTAB
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`Pologeorgis
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` Mailed: March 15, 2010
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`Opposition No. 91183362
`Opposition No. 91186156
`
`American Express Marketing &
`Development Corp.
`
`
`v.
`
`
`Gilad Development Corporation
`
`
`
`Before Bucher, Mermelstein, and Bergsman,
`Administrative Trademark Judges.
`
`By the Board:
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`These consolidated proceedings now come before the
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`
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`Board for consideration of (1) applicant’s motion for leave
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`to amend its answers to assert “noncommercial use” as an
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`affirmative defense to opposer’s claims under the Trademark
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`Dilution Revision Act of 2006 (“the TDRA”), (2) applicant’s
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`motion for summary judgment based on the affirmative defense
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`of “noncommercial use,” and (3) opposer’s cross-motion for
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`summary judgment on its claims of likelihood of confusion
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`and dilution.
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`
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`Opposition No. 91183362
`Opposition No. 91186156
`
`Applicant filed two applications for registration; one
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`for the mark GRAND AMERICAN EXPRESS1 in standard character
`
`format and the other for the mark GRAND AMERICAN EXPRESS
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`RAILROAD CLEVELAND AND COLUMBUS and design,2 as illustrated
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`below. The services identified in both applications are
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`“transportation services, namely, transporting passengers by
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`means of a 19th century replica train” in International
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`Class 39.
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`
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`On April 3, 2008, and September 3, 2008, respectively,
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`opposer filed notices of opposition to registration of
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`applicant’s marks. These opposition proceedings were
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`consolidated by Board order dated October 29, 2008. As grounds
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`for each of the oppositions, opposer alleges ownership of a
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`family of famous AMERICAN EXPRESS marks, and alleges: (1)
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`priority of use and likelihood of confusion and (2) dilution.
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`
`1 Application Serial No. 77200844, filed on June 7, 2007, based on
`an allegation of a bona fide intent to use the mark in commerce
`under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b).
`2 Application Serial No. 77439287, filed on April 3, 2008, based
`on an allegation of a bona fide intent to use the mark in
`commerce under Trademark Act Section 1(b), 15 U.S.C. § 1051(b).
`
`2
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`
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`
`
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`Opposition No. 91183362
`Opposition No. 91186156
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`Applicant, in its answers, denied the salient
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`allegations of the notices of opposition. Additionally,
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`applicant asserted the affirmative defenses: (1) that
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`opposer failed to state a claim upon which relief can be
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`granted and (2) that the use and registration by third
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`parties of marks incorporating or consisting of the terms
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`AMERICAN and EXPRESS preclude opposer from claiming the
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`exclusive right to the use of those terms.
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`Initially, we note that applicant filed its motion for
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`leave to amend its answers to include the affirmative
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`defense of “noncommercial use” subsequent to its motion for
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`summary judgment being fully briefed and only after opposer,
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`in opposition to applicant’s motion for summary judgment,
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`noted that a party may not file a motion for summary
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`judgment on an unpleaded claim or defense.
`
`We recognize that a defendant may not obtain summary
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`judgment on an unasserted defense. Fed. R. Civ. P. 56(a)
`
`and 56(b); see also Giant Food, Inc. v. Standard Terry
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`Mills, Inc., 229 USPQ 955, 961 (TTAB 1986). Indeed, the
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`Board has long recognized that summary judgment is not
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`appropriate on an unpleaded issue. See TBMP § 528.07 (2nd
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`ed. rev. 2004). A party, however, is permitted to file a
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`motion for summary judgment on an unpleaded issue
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`concurrently with a motion to amend its pleading to include
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`the unpleaded issue. Societe des Produits Marnier
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`
`
`3
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`
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`Opposition No. 91183362
`Opposition No. 91186156
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`Lapostolle v. Distillerie Moccia S.R.L., 10 USPQ2d 1241,
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`1242 n.4 (TTAB 1989) (motion to amend to add new ground,
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`filed simultaneously with motion for summary judgment,
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`granted and allegations in new ground deemed denied).
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`But, in instances where, as here, a party has filed a
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`motion for summary judgment on an unpleaded issue and
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`subsequently files a motion to amend its pleading to add the
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`unpleaded issue only after the non-moving party has
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`responded by noting that a party may not obtain summary
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`judgment on an unpleaded claim or defense, the Board has
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`found that an acceptable cure for the procedural defect
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`would be to withdraw the motion for summary judgment and re-
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`file it on a date subsequent to the filing of the moving
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`party’s motion to amend its pleading. See Karsten
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`Manufacturing Corp. v. Editoy AG, 79 USPQ2d 1783, 1785-86
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`(TTAB 2006). Applicant herein, however, did not follow the
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`accepted procedure in Karsten nor did it argue that its
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`failure to follow the Karsten approach should be excused.
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`Nonetheless, while the Board could summarily deny
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`applicant’s motion for summary judgment on the ground it is
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`based on an unpleaded issue and then consider on the merits
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`only applicant’s subsequently-filed motion to amend, such a
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`course of action would be inefficient, as it could
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`potentially lead to the approval of applicant’s amended
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`pleadings followed by the re-filing of applicant’s motion
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`
`
`4
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`Opposition No. 91183362
`Opposition No. 91186156
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`for summary judgment. Accordingly, in the interest of
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`judicial economy and given the need for a slight
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`clarification of procedure in this area, we will, in this
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`case, first entertain applicant’s motion for leave to amend
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`its answers despite the fact that the motion for leave to
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`amend was filed subsequent to applicant’s motion for summary
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`judgment.
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`We note that the Karsten decision stated, in regard to
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`the timing of the motion to amend, “Here, opposer has
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`corrected the problem of seeking summary judgment on an
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`unpleaded ground by moving to amend its pleading prior to
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`the Board acting on the initial motion for summary
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`judgment.” Karsten, 79 USPQ2d at 1786. This statement may
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`be read to suggest that, so long as a party that has moved
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`for summary judgment on an unpleaded issue moves to amend
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`its pleading prior to the Board’s consideration of the
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`motion for summary judgment, the motion to amend would
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`correct the problem presented by the summary judgment
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`motion. Therefore, in this case, we have considered both
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`applicant’s motion to amend and its motion for summary
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`judgment. However, in future cases, the Board will not
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`hesitate to deny any motion for summary judgment on an
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`unpleaded claim or defense unless the motion for summary
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`judgment is accompanied by an appropriate motion to amend or
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`is withdrawn and refiled with such a motion to amend.
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`
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`5
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`
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`Opposition No. 91183362
`Opposition No. 91186156
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`Before entertaining the merits of applicant’s motion
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`for leave to amend, some review of applicant’s explanation
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`of why it wishes to invoke the “noncommercial use” exception
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`defense is in order. Applicant contends that in 1855 the
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`lithographers Currier & Ives published a print depicting an
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`express train rolling through the rural American countryside
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`titled American “Express” Train. See p. 1 of applicant’s
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`motion for summary judgment. Aware of and inspired by this
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`Currier & Ives lithograph, applicant selected its GREAT
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`AMERICAN EXPRESS and GREAT AMERICAN EXPRESS RAILROAD
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`CLEVELAND AND COLUMBUS and design marks as an allusion to
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`the American “Express” Train lithograph itself, as well as
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`the nineteenth century history and era it evokes. Id. at
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`pp. 1-2. In light of the foregoing, applicant contends that
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`its marks, in addition to their intended service mark usage,
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`serve as a form of artistic expression. Id. at p. 2.
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`Insofar as applicant filed its motion to amend its
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`answers months after it filed its original answers in each
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`respective opposition proceeding, applicant may amend its
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`answers only by written consent of opposer or by leave of
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`the Board. Fed. Civ. P. 15(a); TBMP § 507.02(a) (2d ed.
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`rev. 2004). The Board liberally grants leave to amend
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`pleadings at any stage of a proceeding when justice so
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`requires, unless entry of the proposed amendment would
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`violate settled law or be prejudicial to the rights of the
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`
`
`6
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`
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`Opposition No. 91183362
`Opposition No. 91186156
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`adverse party or parties. Id. See also American Optical
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`Corp. v. American Olean Tile Co., 168 USPQ 471 (TTAB 1971).
`
`In deciding whether to grant leave to amend, a tribunal may
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`consider undue delay, prejudice to the opposing party, bad
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`faith or dilatory motive, futility of the amendment, and
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`whether the party has previously amended its pleadings. See
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`Foman v. Davis, 371 U.S. 178, 182 (1962).
`
`While applicant waited until approximately ten months
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`after the filing of its answer in Opposition No. 91183362
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`and until approximately five months after the filing of its
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`answer in Opposition No. 91186156 before filing its motion
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`for leave to amend, the delay, while substantial, is not
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`prejudicial to opposer, inasmuch as these consolidated
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`proceedings are still in the discovery stage and opposer
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`could be afforded time in which to take discovery on the
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`newly asserted defense if it chooses to do so. Moreover, we
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`find that applicant has not acted in bad faith nor has
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`applicant abused its amendment privileges since this is the
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`first time applicant has sought to amend its pleadings. The
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`only significant question before us is whether applicant’s
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`proposed amendment is futile.
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`Applicant contends that since the Board may entertain a
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`dilution claim under the TDRA and because the TDRA expressly
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`includes “noncommercial use” as a defense to a dilution
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`claim, the application of the affirmative defense in a Board
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`
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`7
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`Opposition No. 91183362
`Opposition No. 91186156
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`opposition proceeding would not violate settled law. In
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`response, opposer contends the statutory “noncommercial use”
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`exception cannot be asserted in an opposition proceeding
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`because the Board’s jurisdiction extends only to issues
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`concerning registrability while the “noncommercial use”
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`exception requires a determination of applicant’s right to
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`use its marks, and the proposed amendment therefore is
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`futile. In reply, applicant claims that a party that uses
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`its mark in commerce may still avail itself of the
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`“noncommercial use” exception since the two concepts are not
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`mutually exclusive. Applicant argues that there is no
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`reason why use of a mark cannot be both “use in commerce”
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`for purposes of registration and a “noncommercial use” for
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`purposes of a dilution analysis. Finally, applicant
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`contends that opposer is unable to cite to any authority
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`which holds that the dilution exceptions under the TDRA are
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`beyond the Board’s consideration in an opposition
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`proceeding.
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`Sections 13 and 14 of the Trademark Act permit a party
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`to bring a dilution claim under the TDRA in inter partes
`
`proceedings before the Board. 15 U.S.C. §§ 1063 and 1064.
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`Section 43(c) of the TDRA provides defenses to such a
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`claim, as follows:
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`(3) Exclusions.--The following shall not be actionable
`as dilution by blurring or dilution by tarnishment
`under this subsection:
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`
`
`8
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`Opposition No. 91183362
`Opposition No. 91186156
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`(A) Any fair use, including a nominative or
`descriptive fair use, or facilitation of such fair
`use, of a famous mark by another person other than
`as a designation of source for the person's own
`goods or services, including use in connection with-
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`(i) advertising or promotion that permits
`consumers to compare goods or services; or
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`(ii) identifying and parodying, criticizing, or
`commenting upon the famous mark owner or the goods
`or services of the famous mark owner.
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`(B) All forms of news reporting and news commentary.
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`(C) Any noncommercial use of a mark.
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`15 U.S.C. § 1125(c)(3)(C)(emphasis added).
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`
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`We note that the applicability of the “noncommercial
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`use” exception as an affirmative defense to a dilution claim
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`is an issue of first impression before the Board. For the
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`reasons set forth below, the Board finds that the exception
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`is inapplicable in Board dilution cases.
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`First, the definition of a “service mark” precludes the
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`applicability of the “noncommercial use” exception in an
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`inter partes proceeding.
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`Service mark. The term “service mark”
`means any word, name, symbol, or device,
`or any combination thereof –
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`(1) used by a person, or
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`(2) which a person has a bona fide
`intention to use in commerce and applies
`to register on the principal register
`established by this chapter,
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`to identify and distinguish the services
`of one person, including a unique
`service, from the services of others and
`to indicate the source of the services,
`even if that source is unknown.
`
`
`
`9
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`
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`Opposition No. 91183362
`Opposition No. 91186156
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`Trademark Act Section 45, 15 U.S.C. §1127.
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`By filing its two service mark applications, applicant
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`is seeking to obtain federal service mark registrations
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`which would afford applicant nationwide protection of, and
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`exclusive rights in, its marks as source indicators for the
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`services identified in its applications. In order to obtain
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`such registrations, applicant must demonstrate, prior to
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`registration, use of its marks as service marks in commerce.
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`“Use in commerce means a bona fide use of a mark in the
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`ordinary course of trade.” Trademark Act Section 45. A
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`service mark is used in commerce when the mark “is used or
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`displayed in the sale or advertising of services [in this
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`case transportation services] and the services are rendered
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`in commerce.” Id. As such, applicant cannot claim
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`noncommercial use of its marks when it is required to
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`demonstrate use of its marks in commerce as service marks in
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`order to obtain federal registrations.3 Indeed, it would
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`contradict the purpose of the Trademark Act to allow a
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`defendant in a Board dilution case to assert the
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`“noncommercial use” exception as an affirmative defense when
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`it must establish use of its mark in commerce as a trademark
`
`
`3 The Board notes that use of marks in conjunction with the
`rendering of free services still constitutes a “use in commerce”
`under the Trademark Act. In other words, a for profit sale is
`not required. See Capital Speakers, Inc. v. Capital Speakers
`Club of Washington D.C. Inc., 41 USPQ2d 1030, 1035 fn. 3 (TTAB
`1996).
`
`
`
`10
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`Opposition No. 91183362
`Opposition No. 91186156
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`or service mark in order to obtain a federal trademark or
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`service mark registration. In other words, a party cannot
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`seek to register or maintain a trademark or service mark for
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`its own exclusive use in commerce in association with its
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`identified goods or services and then claim that it is not
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`using its mark commercially as a defense to a dilution
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`claim.
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`Accordingly, we find that the “noncommercial use”
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`exception set out in Trademark Act § 43(c)(3)(C) does not
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`apply in a Board proceeding involving a mark sought to be
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`registered as a trademark or service mark, because an
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`applicant seeking registration is necessarily relying on a
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`claim of use of its mark, or intended use of its mark, in
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`commerce.4
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`Second, one leading trademark scholar has suggested
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`that if a defendant uses an alleged famous mark as a
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`trademark for its own goods and services, then the defendant
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`is disqualified from invoking the “noncommercial use”
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`exception. See J.T. McCarthy, 4 McCarthy on Trademarks and
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`Unfair Competition § 24:128 pp. 1-2 (4th ed. Database
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`updated March 2010). See also, H.R. Rep. No. 104-374 (1995)
`
`
`
` In a federal district court action the defendant whose actions are
`alleged to result in dilution may or may not be engaged in activities
`“in commerce,” and therefore the applicability of the noncommercial use
`defense will depend on the nature of the involved activity.
`
` 4
`
`11
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`Opposition No. 91183362
`Opposition No. 91186156
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`in regard to the previous dilution statute’s noncommercial
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`use exception, unchanged in the TDRA. In other words,
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`regardless of whether the use of the allegedly dilutive
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`designation is in commerce or not, its use as a mark, per
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`se, renders the noncommercial use defense inapplicable.
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`Again, in a Board proceeding, just as every defendant is
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`necessarily claiming use in commerce, or intended use in
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`commerce, so too is the defendant necessarily claiming use
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`as a mark, or intended use as a mark. We agree with
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`Professor McCarthy’s analysis.
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`Even if we were to find that the “noncommercial use”
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`exception under the TDRA were applicable in Board
`
`proceedings, we note that applicant’s use or intended use of
`
`its marks would not qualify as “noncommercial use.”
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`“Noncommercial use” has been referred to as constitutionally
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`protected speech that consists of parody, satire, editorial
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`and other forms of expression that are not part of a
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`commercial transaction. See Mattel, Inc. v. MCA Records,
`
`Inc., 296 F.3d 894, 63 USPQ2d 1715, 1722 (9th Cir. 2002).
`
`Applicant has not alleged that it is using or intends
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`to use its marks as editorial commentary, satire or as a
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`parody, in regard to opposer’s pleaded AMERICAN EXPRESS
`
`marks. Rather, applicant merely relies on several cases
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`arising in Federal courts, none of which addressed the
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`question of registrability. The first, Am. Family Life Ins.
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`
`
`12
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`Opposition No. 91183362
`Opposition No. 91186156
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`Co. v. Hagan, 266 F. Supp. 2d 282, 64 USPQ2d 1865 (N.D. Ohio
`
`2002), involved a gubernatorial candidate who, as part of
`
`his campaign, broadcast through a website commercials
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`featuring an animated character named “TaftQuack.” 64
`
`USPQ2d at 1867. While the court found the duck’s sounds to
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`be highly reminiscent of the “AFLAC” sound made by
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`plaintiff’s duck, it held that the defendant’s speech was
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`noncommercial in nature as it discussed public issues and
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`challenged the qualifications of a candidate for political
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`office. 64 USPQ2d at 1875. Although visitors to
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`defendant’s website could donate money to his campaign, the
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`court reasoned that it was arguable whether the defendant’s
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`speech proposed any commercial transaction at all. Id. The
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`court held that since contributions to a political campaign
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`are some of the most fundamental activities protected by the
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`First Amendment, they are “properly classified not as
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`commercial transactions at all, but completely
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`noncommercial, political speech.” Id.
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`Here, applicant is not using or intending to use its
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`marks as constitutionally protected political speech.
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`Accordingly, applicant’s reliance on Am. Family Life Ins.
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`Co. is misplaced. Rather, the services identified in
`
`applicant’s application are to be rendered in commerce,
`
`namely, transporting passengers by means of a 19th century
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`replica train.
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`
`
`13
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`Opposition No. 91183362
`Opposition No. 91186156
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`The next case upon which applicant relies is Mattel,
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`Inc. v. MCA Records, Inc., 296 F.3d 894, 63 USPQ2d 1715 (9th
`
`Cir. 2002). Applicant argues, based on this Ninth Circuit
`
`case, that speech is protected by the First Amendment if it
`
`does something more than propose a commercial transaction.
`
`In Mattel, the defendant, a Danish musical band, produced
`
`the song “Barbie Girl.” 63 USPQ2d at 1717. The court found
`
`that plaintiff’s BARBIE doll was “not just a toy but a
`
`cultural icon,” and that defendant’s song pokes fun at the
`
`“Barbie” image. Id. at 1717, 1723. The court further found
`
`that “[t]he song does not rely on the Barbie mark to poke
`
`fun at another subject but targets Barbie herself.” Id. at
`
`1719. The court, therefore, held that the defendant’s
`
`“Barbie Girl” song, although sold for profit, was protected
`
`under the First Amendment since it lampooned the “Barbie”
`
`image and commented humorously on the cultural values she
`
`represents. Id. at 1723.
`
`In this instance, applicant is not using or intending
`
`to use its marks to parody or to make any type of social
`
`commentary regarding opposer, opposer’s pleaded marks or the
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`services associated therewith. Rather, applicant is merely
`
`seeking exclusive rights to use its marks as a source
`
`indicator for its identified commercial services.
`
`Accordingly, applicant’s reliance on the Mattel decision is
`
`also misplaced.
`
`
`
`14
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`Opposition No. 91183362
`Opposition No. 91186156
`
`Applicant also relies on the decision in Louis Vuitton
`
`Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 84
`
`USPQ2d 1969 (4th Cir. 2007), to support its argument that a
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`party may use its mark commercially while at the same time
`
`invoking the “noncommercial use” exception defense under the
`
`TDRA. Applicant, however, has misinterpreted the holding in
`
`the Louis Vuitton decision and its relevance to the issues
`
`before the Board. The court in Louis Vuitton specifically
`
`held that “although the TDRA does provide that fair use is a
`
`complete defense and allows that a parody can be considered
`
`fair use, it does not extend the fair use defense to
`
`parodies used as a trademark.” 84 USPQ2d at 1978 (emphasis
`
`added). “Under the statute’s plain language, parodying a
`
`famous mark is protected by the fair use defense only if the
`
`parody is not ‘a designation of source for the person’s own
`
`goods or services.’” Id.
`
`We further note that the Louis Vuitton decision
`
`concerns the “fair use” exception and not the “noncommercial
`
`use” exception under the TDRA. On this point alone, the
`
`case is inapposite to the issue before the Board. Moreover,
`
`the court in Louis Vuitton held that if a party is using its
`
`mark as a trademark, as is the case herein with applicant,
`
`the “fair use” exception is inapplicable. Accordingly, if
`
`we were to analogize the “fair use” exception with the
`
`“noncommercial use” exception, the Louis Vuitton case would
`
`
`
`15
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`Opposition No. 91183362
`Opposition No. 91186156
`
`contradict applicant’s position, because applicant here
`
`intends to use and seeks to register its designations as
`
`service marks. Finally, unlike the defendant in the Louis
`
`Vuitton case, applicant is not using or intending to use its
`
`marks as a parody.
`
`Applicant herein has merely chosen to adopt the marks
`
`GRAND AMERICAN EXPRESS and GRAND AMERICAN EXPRESS RAILROAD
`
`CLEVELAND AND COLUMBUS and design to evoke an historical era
`
`in connection with its identified transportation services
`
`based upon a lithograph by Currier & Ives. The mere fact
`
`that applicant may have chosen its marks for their
`
`historical significance or their evocation of another’s art
`
`does not in and of itself create protected artistic
`
`expression or speech. If it were so, every dilution
`
`defendant employing a mark with any historical significance
`
`or artistic lineage could claim that its mark constitutes a
`
`form of artistic expression, and the exception would swallow
`
`the rule.
`
`In sum, because Board proceedings are by their nature
`
`limited to issues regarding the registrability of trademarks
`
`or service marks, rather than song titles, product reviews,
`
`and other non-mark uses, and the involved marks necessarily
`
`are used or intended to be used in commerce as indicators of
`
`source for goods or services, the “noncommercial use”
`
`exception under the TDRA is not applicable as an affirmative
`
`
`
`16
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`
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`Opposition No. 91183362
`Opposition No. 91186156
`
`defense to a claim of dilution brought under the TDRA in
`
`Board proceedings
`
`In view thereof, applicant’s motion for leave to file
`
`an amended answer to include the affirmative defense of the
`
`“noncommercial use” exception is denied as futile.
`
`Applicant’s initial answers to the notices of opposition
`
`remain as the operative pleadings herein. Accordingly,
`
`applicant’s motion for summary judgment based on the
`
`inapplicable defense is denied.
`
`The Board next turns to opposer’s cross-motion for
`
`summary judgment on its asserted claims of likelihood of
`
`confusion and dilution.
`
`In seeking summary judgment on its likelihood of
`
`confusion claim, opposer first contends that it has priority
`
`of use. Opposer also argues that its pleaded marks are
`
`similar to applicant’s marks in sound, appearance, and
`
`commercial impression and that the parties’ respective
`
`services are related. Specifically, opposer contends that
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`applicant’s marks completely encompass opposer’s pleaded
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`AMERICAN EXPRESS marks and that the mere addition, in one
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`application, of the laudatory term GRAND is insufficient to
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`distinguish the marks. Moreover, opposer argues that while
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`it does not provide transportation services in the form of
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`transport in a nineteenth century replica train, it
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`nonetheless provides related travel services, including
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`17
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`Opposition No. 91183362
`Opposition No. 91186156
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`transportation reservation and booking services. Opposer
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`also contends that the parties’ respective services will be
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`provided to the same consumers and will travel through the
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`same channels of trade.
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`In support of its dilution claim, opposer contends that
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`the parties’ respective marks are quite similar, that
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`opposer’s marks are famous, and that opposer’s marks became
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`famous prior to the filing dates of applicant’s two subject
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`applications and, as such, applicant’s marks will dilute the
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`distinctive quality of opposer’s pleaded family of famous
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`AMERICAN EXPRESS marks. In support of its motion for
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`summary judgment on its asserted claims of likelihood of
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`confusion and dilution, opposer has submitted the
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`declarations of (1) Dianne K. Cahill, assistant secretary of
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`opposer’s marketing and development and (2) Boris Umanksy,
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`counsel for opposer, both with accompanying exhibits.
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`In response, applicant contends that the parties’
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`respective marks are dissimilar in appearance, pronunciation
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`and commercial impression. Specifically, applicant argues
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`that the addition of a design element in one of its marks,
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`as well as the inclusion of the terms GRAND, RAILROAD, and
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`CLEVELAND AND COLUMBUS, sufficiently distinguish the marks
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`visually and aurally. Further, applicant contends that the
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`term EXPRESS contained in applicant’s marks, when viewed in
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`the context of the services being provided under the marks,
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`
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`18
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`Opposition No. 91183362
`Opposition No. 91186156
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`conveys a commercial impression understood by consumers to
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`be that of a train. Moreover, applicant argues that it
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`provides actual transportation services while opposer only
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`provides the arrangement of travel services and, therefore,
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`the parties’ respective services are not related. With
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`respect to opposer’s dilution claim, applicant merely relies
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`on the “noncommercial use” exception under the TDRA as a
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`genuine issue of material fact.
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`Summary judgment is an appropriate method of disposing
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`of cases in which there are no genuine issues of material
`
`fact in dispute, thus leaving the case to be resolved as a
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`matter of law. See Fed. R. Civ. P. 56(c). A party moving
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`for summary judgment has the burden of demonstrating the
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`absence of any genuine issue of material fact, and that it
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`is entitled to summary judgment as a matter of law. See
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`Celotex Corp. v. Catrett, 477 U.S. 317 (1986). The
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`nonmoving party must be given the benefit of all reasonable
`
`doubt as to whether genuine issues of material fact exist,
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`and the evidentiary record on summary judgment, and all
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`inferences to be drawn from the undisputed facts, must be
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`viewed in the light most favorable to the nonmoving party.
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`See Opryland USA, Inc. v. Great American Music Show, Inc.,
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`970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
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`After reviewing the arguments and supporting evidence,
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`and drawing all inferences with respect to the motion in
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`
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`19
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`Opposition No. 91183362
`Opposition No. 91186156
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`favor of the nonmoving party, we find that opposer has
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`failed to meet its burden of establishing that there are no
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`genuine issues of material fact for trial.
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`With respect to opposer’s likelihood of confusion
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`claim, genuine issues of material fact exist as to the
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`similarity between the marks at issue, particularly as to
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`the similarity of the commercial impression engendered by
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`applicant’s marks and the commercial impression of opposer’s
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`marks. Further, the relatedness between the parties’
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`respective goods and services, or lack thereof, is another
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`genuine issue of material fact.
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`With respect to opposer’s dilution claim, we also find
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`that opposer, as the moving party, has failed to satisfy its
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`initial burden in establishing that no genuine issue of
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`material fact exists and that it is entitled to judgment as
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`a matter of law. In particular, genuine issues of material
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`fact exist as to whether the marks at issue are sufficiently
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`similar for dilution purposes, specifically, but not limited
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`to, whether the marks evoke similar commercial impressions
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`so that registration of applicant’s marks would impair the
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`alleged distinctiveness of opposer’s pleaded marks.
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`
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`20
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`Opposition No. 91183362
`Opposition No. 91186156
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`In view thereof, opposer’s cross-motion for summary
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`judgment in regard to both its asserted claims of likelihood
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`of confusion and dilution is denied.5
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`Proceedings herein are resumed. Trial dates for these
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`consolidated proceedings, beginning with the deadline for
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`expert disclosures, are reset as follows:
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`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial
`Disclosures
`Plaintiff's 30-day Trial Period
`Ends
`Defendant's Pretrial
`Disclosures
`Defendant's 30-day Trial Period
`Ends
`Plaintiff's Rebuttal
`Disclosures
`Plaintiff's 15-day Rebuttal
`Period Ends
`
`
`6/15/2010
`7/15/2010
`
`8/29/2010
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`10/13/2010
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`10/28/2010
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`12/12/2010
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`12/27/2010
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`1/26/2011
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`In each instance, a copy of the transcript of testimony
`
`together with copies of documentary exhibits, must be served
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`on the adverse party within thirty days after completion of
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`the taking of testimony. Trademark Rule 2.l25.
`
`
`5 The fact that we have identified certain genuine issues of
`material fact as a sufficient basis for denying opposer’s motion
`for summary judgment should not be construed as a finding that
`such issues necessarily are the only issues that remain for
`trial. Also, the parties should note that the evidence submitted
`in connection with the motion for summary judgment is of record
`only for consideration of the motion. To be considered at final
`hearing, any such evidence must be properly introduced in
`evidence during the appropriate trial period. See Hard Rock Cafe
`Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB 1998); Levi
`Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB
`1993).
`
`
`
`21
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`Opposition No. 91183362
`Opposition No. 91186156
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`Briefs shall be filed in accordance with Trademark
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`Rules 2.128(a) and (b). An oral hearing will be set only
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`upon request filed as provided by Trademark Rule 2.l29.
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`22