Ashland Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp.

• Decision Date: 26 April 2019
• Docket Number: 92057294
• Court: Trademark Trial and Appeal Board
• Parties: Ashland Licensing & Intellectual Property LLC and Valvoline Licensing and IP LLC v. Sunpoint International Group USA Corp.

Ashland Licensing & Intellectual Property LLC and Valvoline Licensing and IP LLC v. Sunpoint International Group USA Corp.

No. 92057294

United States Patent and Trademark Office, Trademark Trial and Appeal Board

April 26, 2019

This Opinion Is Not a Precedent of the TTAB

Bruce Tittel of Wood Herron & Evans LLP for Ashland Licensing & Intellectual Property LLC and Valvoline Licensing and IP LLC.

Jeffrey M. Furr of the Furr Law Firm for Sunpoint International Group USA Corp.

Before Zervas, Bergsman and Goodman, Administrative Trademark Judges.

OPINION

BERGSMAN, ADMINISTRATIVE TRADEMARK JUDGE

Sunpoint International Group USA Corp. (Respondent) is the owner of the registered MAXVOLINE trademarks set forth below for "lubricants for automobiles," in International Class 4:

1. Registration No. 3450454 for the mark MAXVOLINE in standard characters;^[1]and

2. Registration No. 3454800 for the mark MAXVOLINE and design shown below:^[2]

(Image Omitted)

Ashland Licensing & Intellectual Property LLC and Valvoline Licensing and IP LLC (Petitioners) initially filed a petition to cancel Respondent's registrations on the grounds of likelihood of confusion, dilution, and abandonment. The operative pleading, however, is Petitioners' Third Amended Petition for Cancellation alleging

(i) likelihood of confusion;

(ii) dilution;

(iii) nonuse at the time of filing the Statements of Use and at the expiration of the time for filing of the Statements of Use of the underlying applications for Respondent's registrations;

(iv) abandonment by nonuse, and

(v) that the assignments of Respondent's registrations were naked assignments because they failed to include goodwill.^[3]

Because Petitioners did not argue dilution or abandonment by nonuse in their brief, those claims are waived.^[4] See Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 U.S.P.Q.2d 1750, 1753 (TTAB 2013) (petitioner's pleaded descriptiveness and geographical descriptiveness claims not argued in brief deemed waived), aff'd, 565 Fed.Appx. 900 (Fed. Cir. 2014) (mem.); see also TPI Holdings, Inc. v. TrailerTrader.com LLC, 126 U.S.P.Q.2d 1409, 1413 n.28 (TTAB 2018); Tao Licensing, LLC v. Bender Consulting Ltd., 125 U.S.P.Q.2d 1043, 1046 (TTAB 2017).

With respect to the likelihood of confusion claim, Petitioners pleaded ownership of, inter alia, Registration No. 53237 for the mark VALVOLINE (in typed drawing form) for "lubricating oils," in International Class 4 ^[5] and Registration No. 2621773 for the mark MAX LIFE (in typed drawing form) for "motor oils, lubricants and greases all for motor vehicles," in International Class 4.^[6] Because of Petitioners' purported "prior and continuous use" of VALVOLINE and MAX LIFE in connection with lubricants for automobiles, the public has associated those marks with Petitioners and therefore, Respondent's MAXVOLINE marks for "lubricants for automobiles" is likely to cause confusion with Petitioners' VALVOLINE and MAX LIFE trademarks.^[7] To be clear, Petitioners are not alleging that Respondent's MAXVOLINE marks are likely to cause confusion with either of Petitioners' VALVOLINE or MAX LIFE trademarks; rather, Petitioners allege that "Respondent's trademarks MaXvoline [and design] and Maxvoline are confusingly similar to Petitioners' conjointly used trademarks Valvoline and Max Life, when the 'Max' in Max Life is combined with 'voline' from Valvoline to form MaXvoline."^[8]

With respect to the nonuse at the time of registration, Petitioners allege that Respondent had not used its MAXVOLINE marks when it filed the Statements of Use and by the respective expiration dates for filing the Statements of Use and, therefore, "the Registrations should be cancelled for failure to use the marks in commerce on goods in trade."^[9]

Finally, Petitioners allege that Respondent's MAXVOLINE registrations should be cancelled because "the Registrations at issue were transferred to Respondent were 'naked assignments,' otherwise known as 'transfers in gross,' because the purported assignments of the trademark rights failed to also include an assignment of the goodwill associated with those trademarks."^[10] A claim for cancellation based on an invalid assignment is, in essence, an abandonment claim. See Visa, U.S.A. v. Birmingham Trust Nat'l Bank, 696 F.2d 1371, 216 U.S.P.Q. 549 (Fed. Cir. 1982), cert. denied, 464 U.S. 826, 220 U.S.P.Q. 385 (1983).

The rule against assignment of a mark in gross thus reflects "the need, if consumers are not to be misled from established associations with the mark, that it continue to be associated with the same or similar products after the assignment."

Id. at 216 U.S.P.Q. at 652 (citing Raufast S.A. v. Kicker's Pizzazz, Ltd., 208 U.S.P.Q. 699, 702 (E.D.N.Y. 1980)); see also Stock Pot Rest., Inc. v. Stockpot, Inc., 737 F.2d 1576, 222 U.S.P.Q. 665, 667 (Fed. Cir. 1984) ("Entwined with the lease to Mrs. Phillips is appellant's claim that appellee abandoned the mark at that time through that lease, i.e., that at best the assignment was of a 'naked trademark' or was a 'naked license,' both signifying abandonment of rights to the mark); Roush Bakery Prods. Inc. v. F.R. Lepage Bakery Inc., 13 U.S.P.Q.2d 1045, 1051 (TTAB 1989) ("We think it is clear from the foregoing that the issue of whether the invalid assignment in this case constituted an abandonment of the collective mark COUNTRY KITCHEN hinges upon the facts concerning such matters as the nature of the use of the mark by respondent and the other members of the collective prior to and after the 1985 assignment of the registration to respondent, and the extent to which (and by whom) control over the use of the mark was actually exercised."). Thus, whether the goodwill is actually conveyed is a question of fact determined by the circumstances surrounding the transfer of rights.

Respondent denied the salient allegations in the Third Amended Petition for Cancellation and asserted the affirmative defense of laches.

I. Preliminary Issues

A. Respondent's motion to strike Petitioners' Reply Brief.

Respondent moves to strike Petitioners' Reply Brief on the grounds that it exceeds the permitted length because it is 27 pages, rather than 25 pages, and because Petitioners attached evidence to the Reply Brief not previously made of record.^[11]

Petitioners admit that they inadvertently exceeded the page limit because they failed to count the Table of Contents and Table of Authorities.^[12] Nevertheless, Petitioners ask the Board to exercise its discretion and accept its Reply Brief because, inter alia, Petitioners responded to Respondent's evidentiary objection lodged in Respondent's brief on the case in Petitioners' Reply Brief instead of utilizing an appendix or separate statement as provided by Trademark Rule 2.128(b), 37 C.F.R. § 2.128(b).

Also, Petitioners contend that they attached evidence to their Reply Brief because it was necessary "to provide the Board with a clear picture of the lengths Registrant has gone in order to misrepresent key facts so as to mislead the Board."^[13]

Without the exhibits it would just be a matter of Petitioners' counsels' unsupported statements versus the unsupported statements made by Registrant's counsel. There is no way that Petitioners could have foreseen a reason to identify the exhibits as trial exhibits.^[14]

Trademark Rule 2.128(b), 37 C.F.R. § 2.128(b), provides that "Without prior leave … a reply brief shall not exceed twenty-five pages in its entirety" and that "[a]ny brief beyond the page limits and that any brief with attachments outside the stated requirements may not be considered by the Board." The rule allows the Board to exercise its discretion in deciding whether to consider an over-length brief. Within that discretion is the ability to strike the brief on the ground that it exceeds the page limit, consider the brief in its entirety, or to consider the brief but not the attached appendices due to their content.

Petitioners' Reply Brief, excluding the exhibits, exceeds the page limitation. Petitioners chose not to respond to the evidentiary issue in an appendix or separate statement as provided by the Rules, nor did Petitioners seek prior leave to exceed the page limit.

Moreover,

the facts and arguments presented in the brief must be based on the evidence offered at trial. A brief may not be used as a vehicle for the introduction of evidence. …Exhibits to briefs are generally unnecessary and are discouraged.

Trademark Trial and Appeal Board Manual of Practice and Procedure (TBMP) § 801.01 (2018). The Board issues a trial order setting the deadlines for each party to present its case. See Trademark Rule 2.121(b)(1), 37 C.F.R. § 2.121(b)(1).

A party may not take testimony or present evidence outside of its assigned testimony period, except by stipulation of the parties approved by the Board, or, on motion, by order of the Board.

TBMP § 701; see also Baseball Am. Inc. v. Powerplay Sports, 71 U.S.P.Q.2d 1844, 1846 n.8 (TTAB 2004) (documentary evidence submitted outside assigned testimony period given no consideration); M-Tek Inc. v. CVP Sys. Inc., 17 U.S.P.Q.2d 1070, 1072 (TTAB 1990) (untimely deposition stricken). Petitioners impermissibly sought to introduce evidence outside their testimony period by attaching it to their brief.

Finally we decide cases based on the testimony and evidence introduced into the record. See In re Merrill Lynch, Fenner, and Smith, 828 F.2d 1567, 4 U.S.P.Q.2d 1141, 1143 (Fed. Cir. 1987) (in determining whether a mark is generic, "[e]vidence of the public's understanding of the term may be obtained from any competent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers, and other publications."); In re E. I. du Pont de Nemours...