Thomas v. Auxier, 91219618
| Decision Date | 27 September 2019 |
| Docket Number | 91219618,91221893 |
| Parties | William P. Thomas, III and Carolyn Thomas Walters v. Robert E. Auxier Opposition No. 91219618 91221893 |
| Court | Trademark Trial and Appeal Board |
THIS OPINION IS NOT A PRECEDENT OF THE TTAB
Hearing: May 1, 2019
Jeffrey L. Van Hoosear of Knobbe, Martens, Olson & Bear LLP for William P. Thomas, III and Carolyn Thomas Walters.
Bradley P. Hartman and John D. Titus of Hartman Titus PLC for Robert E. Auxier.
Before Kuhlke, Taylor and Pologeorgis, Administrative Trademark Judges.
Applicant, Robert E. Auxier, seeks registration of the marks shown below filed under Section 1(b) of the Trademark Act, 15 U.S.C. §1051, based on allegations of an intention to use the marks in commerce:
| Opposition No. | 91219618 | 91221893 |
Application Serial No.
85831767
85887151
Filing Date
January 24, 2013
March 26, 2013
The mark consists of a shield containing six 5-point unshaded stars at the top on a shaded background, with the shaded word "CHEETAH" below, with a stylized drawing of a cheetah below the word "CHEETAH" on a background containing 6 shaded vertical bars, with the unshaded wording "BTM" below in all caps, with the letter "T" larger than the letters, "B" and "M", on a shaded background.
The mark consists of an irregularly shaped oval outline enclosing the words "Bill Thomas Race Cars" and "510 E. Julianna Anaheim, Calif." and several drawing instruments
Clothing, namely, jackets, hats, caps, sweatshirts and t-shirts (International Class 25)
Clothing, namely, jackets, hats, caps, sweatshirts and t-shirts (International Class 25) Providing information on racing, racing results, racing facts, racing films, and racing pictures; provision of a web site featuring information on racing, racing results, racing facts, racing films, and racing pictures; and provision of a web site featuring information on 1956 thru 1970 historical racing films and pictures, production history of replica Bill Thomas Cheetah race cars, and racing facts about the original Bill Thomas Cheetah race cars (International Class 41)
Opposers, William P. Thomas, III and Carolyn Thomas Walters, have opposed registration of Applicant's marks in each of the consolidated proceedings on the ground that, as used in connection with Applicant's goods and services, the marks so resemble Opposers' previously used and registered marks discussed below for a variety of goods and services, including clothing, race car parts, race car restoration services and providing information on racing related to Bill Thomas, as to be likely to cause confusion under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).[1]Proceedings were consolidated during the rebuttal testimony period, and may be presented on the same record and briefs, while maintaining their separate character. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 511(2019).
In Opposition No. 91219618, Opposers pleaded the following mark:
Applicant admits the allegations that:
Answer ¶¶ 2, 3, 4, 10 TTABVUE 3.
Applicant denies the remaining salient allegations, and asserts as an affirmative defense that "any rights that Opposers may have had in the Cheetah BTM and Design mark have been abandoned."[2] Answer ¶ 3, 10 TTABVUE 6.
In Opposition No. 91221893, Opposers pleaded the following marks:
Applicant admits that:
Answer ¶¶ 2, 3, 4, 5, and 6, 6 TTABVUE 3-4.
Applicant denies the remaining salient allegations, and asserts as an affirmative defense that any rights that Opposers may have had in the marks CHEETAHS ALWAYS WIN and design, BILL THOMAS RACE CARS and design, BILL THOMAS CHEETAH, CHEETAH BTM and design, BILL THOMAS, and BILL THOMAS MOTORS have been abandoned and that Opposers are not successors-in-interest to any rights in any of those marks.[4]
For reference, we refer to the word and design marks in the following manner:
The record includes the pleadings and, by operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the files of the applications subject to the notices of opposition.
In Opposition No. 91219618, Opposers attached to their Notice of Opposition a USPTO Trademark Status & Document Retrieval (TSDR) printout of their pleaded Application (85957268). During their main trial period, Opposers submitted under notices of reliance: USPTO Trademark Electronic Search System (TESS) and TSDR printouts of their Registration Nos. 3169065 and 5105313 (from serial no. 86063410) (both pleaded in Opposition No. 91221893); a court ruling and amended judgment from the U.S. District Court, Central District of California, Southern Division; and printouts from Opposers' Facebook page and website with corresponding URLs and date stamps.[5]
In Opposition No. 91221893, Opposers attached to their Notice of Opposition TSDR printouts of their pleaded Registration No. 3169065, and Application Serial Nos. 85958204, 86063410 and 85957268. During their main trial period, Opposers submitted under notices of reliance: USPTO TESS and TSDR printouts of pleaded Registration Nos. 3169065 and 5105313 (from serial no. 86063410)[6]; a court ruling and amended judgment from the U.S. District Court, Central District of California, Southern Division; printouts from Opposers' Facebook page and website with corresponding URLs and date stamps; excerpts from printed publications (magazines and newspapers) featuring articles on Bill Thomas, Bill Thomas Motors, Bill Thomas Race Cars and the Cheetah car.
In both Oppositions, during the main trial period, Opposers submitted the deposition testimony with accompanying exhibits of William P. Thomas, III (one of the named Opposers).[7]
In both Oppositions, Applicant submitted under notice of reliance printouts of articles from magazines featuring Applicant; a printout from Wikipedia for the definition of "Continuation Car"; printouts from Applicant's website; TSDR printouts of the file histories of Application Serial Nos. 76440275, 76440276, 76470097 and assignment documents for Registration No. 3169065; the court amended judgment from the U.S. District Court, Central District of California, Southern Division; Stipulation of Undisputed Facts filed in the civil action in the U.S. District Court for the Central District of California, Southern Division.[8] Applicant also submitted the testimony declaration of Robert E. Auxier, Jr. with accompanying exhibits.[9]
The Oppositions were consolidated by Board order on May 22, 2018, and Opposers submitted during their consolidated rebuttal period the testimony declarations with accompanying exhibits of Dean Klein, Frank Thomas, William P. Thomas, III, William M. Scherer, Carolyn Thomas Walters, Ron Keck, and Fred Yeakel;[10] and a notice of reliance on excerpts from a catalog and a magazine article.[11]
Applicant objects to Opposers' rebuttal testimony declarations on the ground that they are improper rebuttal because they are "offered to bolster their case-in-chief and establish a new and earlier first use date." App. brief appx A, 79 TTABVUE 71. Evidence which should constitute part of a plaintiff's case in chief, but which is made of record during the rebuttal period, is not considered when a defendant objects. United States Playing Card Co. v Harbro, LLC, 81 U.S.P.Q.2d 1537 (TTAB 2006). A defendant is entitled to an opportunity to rebut, during its testimony period, any testimony and evidence proffered in support of the allegations in the notice of opposition. This opportunity is foreclosed if a plaintiff withholds the evidence until...
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