UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
`
`
`
`
`DUNN
`
` Mailed: June 28, 2011
`
`
`Opposition No. 91197571
`Opposition No. 91197573
`Opposition No. 91197574
`
`
`
`Chase Brass, LLC
`
`v.
`
`Sipi Metals Corp.
`
`
`Before Kuhlke, Wellington, and Lykos, Administrative
`Trademark Judges:
`
`By the Board:
`
`
`This case comes up on applicant’s combined motions,
`
`filed January 3, 2011 in each consolidated opposition, to
`
`dismiss the false association claim pursuant to Fed. R. Civ.
`
`P. 12(b)(6) and for a more definite statement of the
`
`likelihood of confusion claim pursuant to Fed. R. Civ. P.
`
`12(e). The motions have been fully briefed. The Board sua
`
`sponte addresses the sufficiency of applicant’s counterclaim
`
`to cancel Registration Nos. 2474958 and 2479029, which are
`
`owned by a third party.
`
`
`
`Sipi Metals Corp. filed three applications pursuant to
`
`Trademark Act Sec. 1(b) for variants of the same mark, all
`
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
`
`
`
`
`DUNN
`
` Mailed: June 28, 2011
`
`
`Opposition No. 91197571
`Opposition No. 91197573
`Opposition No. 91197574
`
`
`
`Chase Brass, LLC
`
`v.
`
`Sipi Metals Corp.
`
`
`Before Kuhlke, Wellington, and Lykos, Administrative
`Trademark Judges:
`
`By the Board:
`
`
`This case comes up on applicant’s combined motions,
`
`filed January 3, 2011 in each consolidated opposition, to
`
`dismiss the false association claim pursuant to Fed. R. Civ.
`
`P. 12(b)(6) and for a more definite statement of the
`
`likelihood of confusion claim pursuant to Fed. R. Civ. P.
`
`12(e). The motions have been fully briefed. The Board sua
`
`sponte addresses the sufficiency of applicant’s counterclaim
`
`to cancel Registration Nos. 2474958 and 2479029, which are
`
`owned by a third party.
`
`
`
`Sipi Metals Corp. filed three applications pursuant to
`
`Trademark Act Sec. 1(b) for variants of the same mark, all
`
`
`
`Opposition Nos. 91197571, 91197573, and 91197574
`
`to be used on the same goods, namely “bronze and bronze
`
`alloy in bars, billets and sheets for use in manufacturing
`
`by machining, casting or forging.”
`
`App. Serial No. 779476061
`(Opp. No. 91197571)
`
`Application Serial No.
`(Opp. No. 91197573)
`
`Application Serial No.
`(Opp. No. 91197574 )
`
`
`ECOBRONZE
`
`
`ECO BRONZE
`
`
`ECO-BRONZE
`
`
`Chase Brass, LLC filed an ESTTA notice of opposition
`
`
`
`comprising the ESTTA notice of opposition form and nine
`
`numbered allegations which are essentially the same for each
`
`proceeding. The ESTTA form lists Trademark Act Sec. 2(a),
`
`2(d), and 43(c) as grounds for opposition and cites
`
`Registration Nos. 2474958 for the mark ECOBRASS for “copper
`
`and copper alloy in bars, billets and sheets for use in
`
`future manufacturing by machining, casting or forging” and
`
`2479029 for the mark ECO BRASS for “copper alloy in the
`
`nature of brass in bars, billets and sheets for use in
`
`future manufacturing by machining, casting and forging.”2
`
` In each proceeding the attached numbered paragraphs
`
`allege that applicant seeks registration of its respective
`
`marks (¶1); that opposer’s licensor Sambo registered the
`
`
`1
`App. Serial No. 77947606 is the basis for International
`Registration No. 1046194 issued July 30, 2010.
`2
`On April 1, 2008, original registrant Sambo Copper Alloy
`Co., Ltd. merged with Mitsubishi Shindoh Co., Ltd., and on May
`26, 2011, the merger was recorded with the Office Assignment
`Branch (Registration No. 2474958 at Reel 4549, Frame 0529, and
`Registration No. 2479029 at Reel 4549/0495).
`
`
`
`2
`
`
`
`Opposition Nos. 91197571, 91197573, and 91197574
`
`pleaded registrations for ECO BRASS and ECOBRASS prior to
`
`applicant’s filing of its application (¶2-3); that opposer
`
`has a license to use the registered marks (¶4); that opposer
`
`used the mark ECO BRASS for “copper alloys in rods for use
`
`in, among other things, manufacturing by machining, casting
`
`and forging” prior to applicant’s filing of its application
`
`(¶5); that opposer’s use of ECO BRASS predates applicant’s
`
`filing of its application and any actual use applicant may
`
`have (¶6); and that applicant should be denied registration
`
`based on opposer’s priority of use (¶7).
`
`With respect to Paragraph 8, the issue to be decided is
`
`whether the allegations set forth below, in combination with
`
`those summarized above, state legally sufficient claims
`
`under Trademark Rule Sec. 2(a) and (d).3 Paragraph 8
`
`states:
`
`The mark sought to be registered by Applicant is
`confusingly similar to the ECO BRASS mark and the
`use of ECOBRONZE by Applicant is likely to cause
`confusion or mistake in the minds of the public
`and lead the public and prospective purchasers to
`believe that applicant’s goods are those of Sambo
`and/or Chase or are endorsed, sponsored, or
`otherwise affiliated or connected with Sambo
`and/or Chase, or that Sambo’s and/or Chase’s goods
`and services are associated with applicant,
`contrary to 15 U.S.C. §1052(d), and all to the
`
`
`3
`Paragraph 9 alleges that applicant’s use and registration
`dilutes the distinctiveness of the famous ECO BRASS mark.
`Applicant’s motion sought dismissal of the dilution claim, and in
`its response, opposer voluntarily withdrew the dilution claim.
`Accordingly, the notice of opposition is amended to strike
`Paragraph 9, the dilution claim is no longer part of this
`consolidated proceeding, and applicant’s motion is denied as moot
`with respect to that claim.
`
`
`
`3
`
`
`
`Opposition Nos. 91197571, 91197573, and 91197574
`
`damage and injury of the purchasing public and to
`the damage and injury of Sambo and Chase.
`
`To survive a motion to dismiss, a complaint must
`
`contain sufficient factual matter, accepted as true, to
`
`“state a claim to relief that is plausible on its face.”
`
`Ashcroft v. Iqbal, _ U.S. _, 129 S.Ct. 1937, 1949 (2009)
`
`quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570
`
`(2007). The pleading is sufficient if it alleges plausible
`
`facts as would, if proved, establish that plaintiff is
`
`entitled to the relief sought, that is, that 1) plaintiff
`
`has standing to maintain the proceeding, and 2) a valid
`
`ground exists for denying or cancelling the registration.
`
`See Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1755
`
`(Fed. Cir. 1998).
`
`
`
`Opposer’s allegations that it uses the term ECO BRASS
`
`are sufficient to plead its standing. William & Scott Co.
`
`v. Earl's Restaurants Ltd., 30 USPQ2d 1870, 1873 n.2 (TTAB
`
`1994)(plaintiff has standing ”even if [its] use of the two
`
`pleaded marks is as a licensee or distributor for [the owner
`
`of the marks], for a plaintiff may have standing in a case
`
`brought under Section 2(d) of the Trademark Act even if it
`
`does not claim ownership of the assertedly similar mark, or
`
`the right to control its use.”).
`
`
`
`With respect to the Sec. 2(a) claim, a plaintiff
`
`asserting a claim that a mark falsely suggests a connection
`
`with persons living or dead, or institutions, must plead (i)
`
`
`
`4
`
`
`
`Opposition Nos. 91197571, 91197573, and 91197574
`
`that the defendant's mark is the same or a close
`
`approximation of plaintiff's previously used name or
`
`identity; (ii) that the mark would be recognized as such;
`
`(iii) that the plaintiff is not connected with the
`
`activities performed by the defendant under the mark; and
`
`(iv) that the plaintiff's name or identity is of sufficient
`
`fame or reputation that when the defendant's mark is used on
`
`the goods or services, a connection with the plaintiff would
`
`be presumed. Association pour la Defense et la Promotion de
`
`l'oeuvre de Marc Chagall Dite Comite Marc Chagall v.
`
`Bondarchuk, 82 USPQ2d 1838, 1842 (TTAB 2007)(citations
`
`omitted). The second factor has been construed to require
`
`that “the name claimed to be appropriated by the defendant
`
`must point uniquely to the plaintiff.” Lesley Hornby a/k/a
`
`Lesley Lawson a/k/a Twiggy v. TJX Companies, Inc., 87 USPQ2d
`
`1411, 1424 (TTAB 2008). While we have not restricted our
`
`consideration to Paragraph 8, the notice of opposition
`
`considered in its entirety pleads none of the required
`
`elements set forth above.
`
`
`
`In each proceeding applicant’s motion to dismiss is
`
`granted with respect to the Sec. 2(a) claim to the extent
`
`that opposer is allowed until TWENTY DAYS from the mailing
`
`date of this order to file an amended notice of opposition
`
`properly asserting a Section 2(a) claim, failing which this
`
`
`
`5
`
`
`
`Opposition Nos. 91197571, 91197573, and 91197574
`
`proceeding will go forward only as to the claim of priority
`
`and likelihood of confusion.
`
`
`
`A motion for a more definite statement is appropriate
`
`only in those cases where the pleading states a claim upon
`
`which relief can be granted, but is so vague or ambiguous
`
`that the movant cannot make a responsive pleading in good
`
`faith or without prejudice to itself. Fed. R. Civ. P.
`
`12(e); Trademark Trial and Appeal Board Manual of Procedure
`
`(TBMP) §505.01 (3rd ed. 2011). With respect to the Sec.
`
`2(d) claim, applicant contends that a more definite
`
`statement is needed because the registered marks licensed to
`
`opposer specify that the copper alloy is in the shape of
`
`“bars, billets and sheets” but the notice of opposition
`
`alleges that opposer uses the mark on copper alloy in
`
`“rods”, and thus applicant is not given sufficient notice of
`
`the rights claimed by opposer. The Board does not find the
`
`difference in the meaning of the terms ROD and BAR to be so
`
`great as to make the Sec. 2(d) claim ambiguous; and finds
`
`adequate notice of opposer’s claim of priority and
`
`likelihood of confusion in connection with its use of the
`
`ECO BRASS mark on goods related to those with which
`
`applicant intends to use the mark. Because we find that the
`
`likelihood of confusion claim is sufficiently definite in
`
`each opposition, applicant’s motion for a more definite
`
`statement is denied.
`
`
`
`6
`
`
`
`Opposition Nos. 91197571, 91197573, and 91197574
`
`
`
`Inasmuch as applicant filed only a partial answer,
`
`applicant is allowed until FORTY DAYS from the mailing date
`
`of this order to file a substitute answer to the notice of
`
`opposition, or any amended notice of opposition, which
`
`complies with Fed. R. Civ. P. 8(b).4
`
`The Board sua sponte addresses the counterclaim to
`
`cancel Registration Nos. 2474958 and 2479029 included in
`
`applicant’s answer. The registrations are owned by a third
`
`party that is not a party to this proceeding. As set forth
`
`above, opposer explained that its use of the mark, which is
`
`the basis for its priority and likelihood of confusion
`
`claim, is through a license from the owner of the registered
`
`marks. Opposer may not rely on the Section 7(b)
`
`presumptions afforded to the owner of the registrations.
`
`Thus, to establish its claim, opposer must prove prior use
`
`of the mark, and likelihood of confusion between the goods
`
`in the application and the rods for which opposer alleges
`
`use. The fact that a third party related to the plaintiff,
`
`such as a parent or licensor of the plaintiff, may also have
`
`an interest in a mark relied on by the plaintiff does not
`
`
`4
`Inasmuch as its partial answer and counterclaim included
`exhibits, applicant is advised that - with the exception of
`pleaded registrations - no consideration is given to exhibits
`attached to pleadings. Trademark Rule 2.122(c)(“Except as
`provided in paragraph (d)(1) of this section, an exhibit attached
`to a pleading is not evidence on behalf of the party to whose
`pleading the exhibit is attached unless identified and introduced
`in evidence as an exhibit during the period for the taking of
`testimony.”).
`
`
`
`7
`
`
`
`Opposition Nos. 91197571, 91197573, and 91197574
`
`mean that the third party must be joined as a party
`
`plaintiff. See Avia Group International Inc. v. Faraut, 25
`
`USPQ2d 1625 (TTAB 1992) (respondent's motion to join
`
`petitioner's licensor as party plaintiff denied); Trademark
`
`Trial and Appeal Board Manual of Procedure (TBMP) §512 (3d
`
`ed. 2011).
`
`Applicant asserts, as an “affirmative defense”, that
`
`the owner of the registrations is an indispensable party who
`
`should be joined pursuant to Fed. R. Civ. P. 19(a), so that
`
`applicant cannot be subject to “double, multiple or
`
`otherwise inconsistent obligations” based on the
`
`registrations. However, cancellation of the registrations
`
`would not preclude opposer’s assertion of its common law
`
`rights in this opposition, and applicant prevailing in the
`
`opposition would not mandate cancellation of Registration
`
`Nos. 2474958 and 2479029, owned by a third party.5 Thus, we
`
`find Fed. R. Civ. P. 19(a) inapplicable here, and applicant
`
`must bring any claims for cancellation against the owner of
`
`the registrations in a separate proceeding.
`
`
`
`In sum, applicant’s motion to dismiss is granted with
`
`respect to Trademark Act Sec. 2(a) and denied as moot with
`
`respect to Sec. 43(c); applicant’s motion for a more
`
`definite statement with respect to Sec. 2(d) is denied.
`
`
`5
`We note that the notice of opposition does not allege that
`opposer is the exclusive licensee of the registered marks.
`
`
`
`8
`
`
`
`Opposition Nos. 91197571, 91197573, and 91197574
`
`Applicant’s proposed counterclaim to cancel the third party
`
`registrations is denied, and should not form any part of the
`
`substitute answer.
`
`
`
`Proceedings herein are resumed and dates are reset
`
`below.
`
`Deadline for Discovery
`Conference
`Discovery Opens
`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial
`Disclosures Due
`Plaintiff's 30-day Trial Period
`Ends
`Defendant's Pretrial
`Disclosures Due
`Defendant's 30-day Trial Period
`Ends
`Plaintiff's Rebuttal
`Disclosures Due
`Plaintiff's 15-day Rebuttal
`Period Ends
`
`
`9/15/2011
`9/15/2011
`10/15/2011
`2/12/2012
`3/13/2012
`
`4/27/2012
`
`6/11/2012
`
`6/26/2012
`
`8/10/2012
`
`8/25/2012
`
`9/24/2012
`
`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.
`
`®®®®®
`
`
`
`9
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
