UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
`
`
` Mailed: February 11, 2013
`
`Opposition No. 91197571
`Opposition No. 91197573
`Opposition No. 91197574
`
`
`
`Chase Brass, LLC
`
`
`v.
`
`
`Sipi Metals Corp.
`
`
`
`
`
`DUNN
`
`
`
`
`
`
`
`Before Kuhlke, Wellington, and Lykos, Administrative
`Trademark Judges:
`
`By the Board:
`
`
`This case comes up on applicant’s motion, filed October
`
`14, 2011, to dismiss the amended notice of opposition for
`
`failure to state a claim upon which relief can be granted.
`
`Briefing was suspended while the parties discussed
`
`settlement. Settlement discussions ceased, and the motion
`
`has been fully briefed.
`
`
`
`Sipi Metals Corp. filed three applications pursuant to
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`Trademark Act Sec. 1(b) for the marks ECOBRONZE, ECO BRONZE,
`
`and ECO-BRONZE, all to be used on “bronze and bronze alloy
`
`in bars, billets and sheets for use in manufacturing by
`
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
`
`
` Mailed: February 11, 2013
`
`Opposition No. 91197571
`Opposition No. 91197573
`Opposition No. 91197574
`
`
`
`Chase Brass, LLC
`
`
`v.
`
`
`Sipi Metals Corp.
`
`
`
`
`
`DUNN
`
`
`
`
`
`
`
`Before Kuhlke, Wellington, and Lykos, Administrative
`Trademark Judges:
`
`By the Board:
`
`
`This case comes up on applicant’s motion, filed October
`
`14, 2011, to dismiss the amended notice of opposition for
`
`failure to state a claim upon which relief can be granted.
`
`Briefing was suspended while the parties discussed
`
`settlement. Settlement discussions ceased, and the motion
`
`has been fully briefed.
`
`
`
`Sipi Metals Corp. filed three applications pursuant to
`
`Trademark Act Sec. 1(b) for the marks ECOBRONZE, ECO BRONZE,
`
`and ECO-BRONZE, all to be used on “bronze and bronze alloy
`
`in bars, billets and sheets for use in manufacturing by
`
`
`
`Opposition No. 91197571 (parent)
`
`
`machining, casting or forging.” Chase Brass, LLC filed a
`
`notice of opposition against all three applications
`
`asserting claims of false suggestion of a connection under
`
`Trademark Act Sect. 2(a) and likelihood of confusion under
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`Trademark Act Sec. 2(d) between applicant‘s marks and its
`
`common law marks ECO BRASS and ECOBRASS.1 Opposer also
`
`pleaded Registration Nos. 2474958 and 2479029, two
`
`registrations which it does not own, asserting that it is a
`
`licensee of the third party owner. In each case applicant
`
`filed a motion to dismiss and an answer denying the salient
`
`allegations of the notice of opposition, and a counterclaim
`
`seeking cancellation of the pleaded registrations.
`
`
`
`On February 1, 2011, the Board consolidated the three
`
`oppositions. On July 1, 2011, the Board issued an order
`
`granting applicant’s motion to dismiss as to the claim of
`
`false suggestion of a connection, denying applicant’s motion
`
`for a more definite statement of the likelihood of confusion
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`claim, and denying applicant’s counterclaim inasmuch as the
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`registrations were owned by a third party (opposer’s
`
`licensor) and opposer’s rights (as exclusive licensee) are
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`limited to its common law use. The Board found applicant’s
`
`argument that the owner of the registrations is an
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`“indispensable party” who should be joined pursuant to Fed.
`
`
`1
`The notice of opposition also included a dilution claim
`which was withdrawn.
`
`
`
`
`2
`
`
`
`Opposition No. 91197571 (parent)
`
`
`R. Civ. P. 19(a) unpersuasive, and held that applicant must
`
`bring any claims for cancellation of the registrations
`
`against the owner in a separate proceeding. The Board
`
`allowed opposer time to file an amended notice of opposition
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`properly asserting a Sec. 2(a) claim, failing which the
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`proceeding would go forward only as to the claim of priority
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`and likelihood of confusion.
`
`
`
`On July 18, 2012, opposer filed an amended consolidated
`
`notice of opposition. The first eight paragraphs
`
`essentially were the same as the first eight paragraphs in
`
`the three original notices of opposition, but the single
`
`filing in the parent case now refers to all three marks.
`
`The ninth and final numbered paragraph, which was the
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`dilution claim in the three original notices of opposition,
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`now states:
`
`9. The grant of a registration to Applicant for
`ECOBRONZE as sought in the ‘606 Application, for
`ECO BRONZE as sought in the ‘618 Application, and
`for ECO-BRONZE as sought in the ‘614 Application
`should be denied on the grounds that Applicant’s
`ECOBRONZE, ECO BRONZE, and ECO-BRONZE are a close
`approximation of Sambo’s ECO BRASS mark or name of
`Sambo products. ECO BRASS uniquely points to
`Sambo and Sambo products. Sambo has no connection
`with Applicant and/or the activities performed by
`Applicant, or Applicant goods marketed under the
`ECOBRONZE, ECO BRONZE, and ECO-BRONZE marks. When
`used in connection with Applicant’s “bronze and
`bronze alloy in bars, billets and sheets for use
`in manufacturing by machining, casting or
`forging,” the public will presume that Applicant’s
`ECOBRONZE, ECO BRONZE, and ECO-BRONZE goods are
`connected to Sambo and/or goods sold under the
`recognizable ECO BRASS mark. This is all to the
`
`
`
`3
`
`
`
`Opposition No. 91197571 (parent)
`
`
`damage and injury of the purchasing public and to
`the damage and injury of Sambo and Chase.
`
`
`
`The Board agrees with applicant’s contention that the
`
`new Paragraph 9 improperly asserts the rights of third party
`
`Sambo, and not Chase Brass, LLC. Accordingly, because
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`Paragraph 9 of the amended notice of opposition pleads a
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`claim of a false suggestion of a connection with an
`
`institution which is not the opposer, the Sec. 2(a) claim is
`
`legally deficient. See Heroes Inc. v. The Boomer Esiason
`
`Hero’s Foundation Inc., 43 USPQ2D 1193, 1197 (TTAB 1997)
`
`(“[T]o raise a claim that a mark falsely suggests a
`
`connection with an institution under Sec. 2(a), the
`
`challenger must be the institution itself.”).
`
`
`
`Applicant also moves to dismiss (Motion, p. 5) because
`
`the amended notice of opposition pleads opposer’s license
`
`with Sambo, Sambo no longer owns the registration, and thus
`
`opposer is not a “rightful licensee.” More specifically,
`
`applicant cites the April 1, 2008 merger of Sambo Copper
`
`Alloy Co., Ltd with Mitsubishi Co., Ltd., and the assignment
`
`of Registration Nos. 2474958 and 2479029 to Mitsubishi Co.,
`
`Ltd., which is recorded with the USPTO Assignment Branch at
`
`Reel 4549 Frame 0529. Applicant’s argument is premature.
`
`The assignment recording the merger of the licensor does not
`
`make the pleading deficient. It is not until trial that
`
`opposer must prove its pleaded allegations regarding
`
`
`
`4
`
`
`
`Opposition No. 91197571 (parent)
`
`
`standing, including whether it is a lawful licensee, and its
`
`claim of priority of use and likelihood of confusion.2
`
`The motion to dismiss includes four pages of argument
`
`which largely reiterate applicant’s “affirmative defense,”
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`filed as part of the answer and argued in the first motion
`
`to dismiss, that the owner of the registrations must be
`
`joined as an indispensable party to this proceeding. As
`
`noted above, the Board’s July 1, 2011 order denied the
`
`request, denied applicant’s proposed counterclaim to cancel
`
`the registrations owned by a third party, and held that
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`applicant must bring any claims for cancellation of the
`
`registrations against the owner in a separate proceeding.
`
`If a party disagrees with a Board decision on a motion, the
`
`party must file a request for reconsideration within thirty
`
`days of the order. See Trademark Rule 2.127(b). Applicant
`
`did not seek reconsideration.
`
`Applicant is further advised that in the case of
`
`opposition proceedings, unlike the district court
`
`
`2
`Opposer, as the licensee and not the owner of the pleaded
`registration, must prove its common law rights prior to
`applicant's priority date. Hydro-Dynamics Inc. v. George Putnum
`and Company Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir.
`1987). “Under the rule of Otto Roth, a party opposing
`registration of a trademark due to a likelihood of confusion with
`his own unregistered term cannot prevail unless he shows by a
`preponderance of the evidence that his term is distinctive of his
`goods, whether inherently or through the acquisition of secondary
`meaning or through ‘whatever other type of use may have developed
`a trade identity.”’ Towers v. Advent Software Inc., 913 F.2d 942,
`16 USPQ2d 1039, 1041 (Fed. Cir. 1990), citing Otto Roth & Co. v.
`Universal Food Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981).
`
`
`
`
`5
`
`
`
`Opposition No. 91197571 (parent)
`
`
`proceedings to which applicant refers, once the thirty-day
`
`opposition period closed, any further possible plaintiffs,
`
`even related companies, are statutorily barred from joining
`
`the proceeding. Trademark Act Sec. 13 (“Any person who
`
`believes that he would be damaged by the registration of a
`
`mark upon the principal register…may, upon payment of the
`
`prescribed fee, file an opposition…within thirty days after
`
`the publication…of the mark sought to be registered.”);
`
`Trademark Rule 2.101(c) (“The opposition must be filed
`
`within thirty days after publication of the application
`
`being opposed or within an extension of time for filing an
`
`opposition”); SDT Inc. v. Patterson Dental Co., 30 USPQ2d
`
`1707 (TTAB 1994) (“[O]nce a timely notice of opposition has
`
`been filed, and the time for opposing has expired, the right
`
`to pursue the filed case is a right individual to the timely
`
`filer. Under certain circumstances, this right may be
`
`transferred but it may not be shared.”).
`
`Finally, the Board is not persuaded by the argument
`
`that applicant will be at a disadvantage in defending its
`
`applications if the owner of the registrations is not joined
`
`for the purposes of producing discovery. Opposer will have
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`full information on its own use of the mark, the source of
`
`the only rights asserted here. A party that fails to
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`provide information, or provides an untimely supplement, may
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`be precluded from using that information or witness at trial
`
`
`
`6
`
`
`
`Opposition No. 91197571 (parent)
`
`
`unless the failure to disclose was substantially justified
`
`or is harmless. See ConAgra Inc. v. Saavedra, 4 USPQ2d
`
`1245, 1247 n.6 (TTAB 1987) (exhibits demonstrating
`
`pronunciation not produced during discovery, though
`
`encompassed by discovery requests, excluded from
`
`consideration); and National Aeronautics and Space
`
`Administration v. Bully Hill Vineyards Inc., 3 USPQ2d 1671,
`
`1672 n.3 (TTAB 1987) (opposer’s exhibits identified in
`
`applicant’s brief as within the scope of documents requested
`
`by applicant but not produced by opposer during discovery,
`
`excluded from consideration). Opposer will produce full
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`information on its use of the mark because that use is
`
`integral to its pleaded claim. Accordingly, the Board’s
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`decision denying applicant’s request for third party joinder
`
`remains in effect, and will not be revisited.
`
`
`
`Applicant’s motion to dismiss is granted with respect
`
`to Trademark Act Sec. 2(a) to the extent that Paragraph 9 of
`
`the amended notice of opposition is stricken in its
`
`entirety. This case goes forward solely on opposer’s claim
`
`of priority and likelihood of confusion under Sec. 2(d)
`
`based on its common law use of the marks ECO BRASS and
`
`ECOBRASS.
`
`
`
`Applicant is allowed until THIRTY DAYS from the mailing
`
`date of this order to file its answer to the amended notice
`
`of opposition except for the stricken Paragraph 9.
`
`
`
`7
`
`
`
`Opposition No. 91197571 (parent)
`
`
`
`
`Dates are reset below.
`
`Deadline for Discovery Conference
`Discovery Opens
`Initial Disclosures Due
`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
`
`
`4/12/2013
`4/12/2013
`5/12/2013
`9/9/2013
`10/9/2013
`11/23/2013
`1/7/2014
`1/22/2014
`3/8/2014
`3/23/2014
`4/22/2014
`
`In each instance, a copy of the transcript of testimony
`
`together with copies of documentary exhibits, must be served
`
`on the adverse party within thirty days after completion of
`
`the taking of testimony. Trademark Rule 2.l25.
`
`
`
`Briefs shall be filed in accordance with Trademark
`
`Rules 2.128(a) and (b). An oral hearing will be set only
`
`upon request filed as provided by Trademark Rule 2.l29.
`
`
`
`8
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