UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
THIS ORDER IS NOT A Alexandria, VA 22313-1451
PRECEDENT OF THE General Contact Number: 571-272-8500
General Email: [email protected]
TTAB

January 2, 2019

DUNN
Cancellation No. 92063979

CBB Group, Inc.

v.

Trademark Tools Inc.

Before Zervas, Bergsman, and Kuczma, Administrative Trademark Judges.

By the Board:

This case comes up on Petitioner’s motion for summary judgment on its likelihood

of confusion claim and Petitioner’s motion to strike Respondent’s opposition to the

motion for summary judgment as a Fed. R. Civ. P. 11 sanction. Both motions are

contested.

RELEVANT FACTS

Respondent is the owner of Registration No. 3999007 for the mark TOOLMASTER

and design, shown below, for “metal tool boxes” and “hand tools, namely, hammers,

saws, screwdrivers, pliers and wrenches.” The mark consists of the word

TOOLMASTER which has a grey background and a black foreground. There is a red

line through all the letters except for the T. The color(s) black, grey and red are

claimed as a feature of the mark.
Cancellation No. 92063979

On June 24, 2016, CBB Group, Inc. filed a petition to cancel Respondent’s

TOOLMASTER registration pleading ownership of the common law mark TOOL

MASTER, prior use, and a claim of likelihood of confusion. Respondent’s answer

denies the salient allegations of the petition for cancellation, and pleads the

affirmative defenses of laches, acquiescence, and estoppel.

Discovery closed April 6, 2017. On May 17, 2017, Petitioner filed a motion for

summary judgment on its likelihood of confusion claim. On August 7, 2017, the Board

issued an order granting Respondent’s motion for discovery under Fed. R. Civ. P.

56(d) to the extent that Respondent was allowed to depose Raymond Hung,

Petitioner’s founder and president, who provided a declaration in support of

Petitioner’s motion for summary judgment.

PETITIONER’S MOTION FOR FED. R. CIV. P. 11 SANCTIONS

Where a paper filed in an inter partes proceeding before the Board violates the

provisions of Fed. R. Civ. P. 11, any party to the proceeding may file a motion for the

imposition of an appropriate sanction.1 “A formal order of sanction of any kind

1 Fed. R. Civ. P. 11 states, in part:
(b) By presenting to the court a pleading, written motion, or other paper–whether by signing,
filing, submitting, or later advocating it–an attorney or unrepresented party certifies that to
the best of the person’s knowledge, information, and belief, formed after an inquiry
reasonable under the circumstances:
(1) it is not being presented for any improper purpose, such as to harass, cause
unnecessary delay, or needlessly increase the cost of litigation;
(2) the claims, defenses, and other legal contentions are warranted by existing law or
by a nonfrivolous argument for extending, modifying, or reversing existing law or for
establishing new law;

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Cancellation No. 92063979

imposed by a court necessarily tarnishes an attorney’s professional reputation [and

so] it is the duty of the court imposing sanctions to do so only when truly warranted.”

1–10 Indust. Assocs. v. United States, 528 F.3d 859, 867 (Fed. Cir. 2008). The Advisory

Committee Note accompanying the 1993 amendment Fed. R. Civ. P. 11 lists the

factors to be considered in deciding whether to impose a sanction for a Rule 11

violation, or what sanction to impose:

Whether the improper conduct was willful, or negligent; whether it was
part of a pattern of activity, or an isolated event; whether it infected the
entire pleading, or only one particular count or defense; whether the
person has engaged in similar conduct in other litigation; whether it was
intended to injure; what effect it had on the litigation process in time or
expense; whether the responsible person is trained in the law; what
amount, given the financial resources of the responsible person, is
needed to deter that person from repetition in the same case; what
amount is needed to deter similar activity by other litigants.

Here, Petitioner contends that Respondent’s motion for discovery under Fed. R. Civ.

P. 56(d) was filed in bad faith, and warrants striking Respondent’s opposition to the

motion for summary judgment.

In support of the motion, Petitioner contends that the Board’s order granting

Respondent’s motion for discovery under Fed. R. Civ. P. 56(d) allowed Respondent

until September 10, 2017 to depose witness Hung, and until October 20, 2017 to file

(3) the factual contentions have evidentiary support or, if specifically so identified,
will likely have evidentiary support after a reasonable opportunity for further
investigation or discovery; and
(4) the denials of factual contentions are warranted on the evidence or, if specifically
so identified, are reasonably based on belief or a lack of information.
(c) (1) If, after notice and a reasonable opportunity to respond, the court determines that Rule
11(b) has been violated, the court may impose an appropriate sanction on any attorney, law
firm, or party that violated the rule or is responsible for the violation.

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Cancellation No. 92063979

its response to the motion for summary judgment. Respondent filed three consent

motions extending these periods, with the last (19 TTABVUE) setting the deposition

period to end February 22, 2018 and the brief due date to April 3, 2018. Two weeks

before the scheduled February 22, 2018 deposition of witness Hung, Respondent

opted to depose Hung by written questions in lieu of oral examination, requiring

another extension of deposition and briefing dates. After receipt of Petitioner’s

objections to Respondent’s written deposition questions and Respondent’s cross-

examination questions, Respondent cancelled the deposition as “unlikely to yield

useful information” and filed its opposition to the motion for summary judgment.

Petitioner contends that the representation in the motion for discovery under Fed. R.

Civ. P. 56(d) that the Hung testimony was essential to its opposition was made in bad

faith to delay the proceeding and to increase the costs to Petitioner.

Respondent contends that Petitioner’s motion paints an incomplete picture of

events, that Respondent acted in good faith in both filing the motion for discovery

under Fed. R. Civ. P. 56(d), and cancelling the Hung cross-examination deposition,

and that the motion for sanctions should be denied. We presume familiarity with

Respondent’s explanation of events and do not repeat them.

The loss of time and unnecessary expense in preparing for a deposition which did

not take place is a possibility in any litigation. Here, there is no evidence of bad faith

and the cancellation of the deposition is not part of a pattern of misconduct. Compare

NSM Res. Corp. v. Microsoft Corp.,113 USPQ2d 1029, 1037 (TTAB 2014); Central

Mfg. Inc. v. Third Millennium Tech. Inc., 61 USPQ2d 1210, 1215 (TTAB 2001); Giant

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Cancellation No. 92063979

Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626, 634 (TTAB 1986). In these

circumstances, the Board finds that no Rule 11 sanctions are warranted. Petitioner’s

motion is denied, and the Board will consider Respondent’s response to the motion

for summary judgment.

MOTION FOR SUMMARY JUDGMENT

Petitioner moves for summary judgment, and contends that it sold its first TOOL

MASTER hand tool in 2000, and has continuously used the mark since that date,

establishing its priority over Respondent, based on the January 5, 2010 filing date of

the application which issued as subject Registration No. 3999007. Petitioner contends

that the marks TOOL MASTER and effectively are identical, and

the goods of the two parties likewise are identical or closely related. Petitioner

supports its motion for summary judgment on priority of use and likelihood of

confusion with the declaration of its Chief Executive Officer Raymond Hung

regarding Petitioner’s use of its TOOL MASTER mark and exhibits submitted with

the declaration of counsel, including Respondent’s discovery responses.

Respondent opposes the motion, and submits the declaration of Cyril Brennan,

Chief Financial Officer for Trademark Industries, Inc., an affiliate of Respondent,

regarding Respondent’s use since February 26, 2010 of the registered

mark for the goods listed in the subject registration; dictionary

definitions, and Petitioner’s discovery responses. Respondent argues that the term

TOOL MASTER is laudatory and descriptive, and that based on inconsistencies

between the Hung declaration, exhibits, and Petitioner’ discovery responses,

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Cancellation No. 92063979

Petitioner has failed to demonstrate that its common law mark is inherently

distinctive or has acquired distinctiveness, that Petitioner’s mark was distinctive

before Respondent’s constructive use date for the purpose of establishing the

necessary priority of use, and that Petitioner’s mark was in use prior to Respondent’s

constructive use date.

With its reply brief Petitioner alleges that Respondent’s discovery responses

preclude Respondent from contending that Petitioner’s mark is not distinctive or that

there is no likelihood of confusion, and explains the seeming inconsistencies in the

declaration.

DISCUSSION

Summary judgment is an appropriate method of disposing of cases in which there

is no genuine dispute with respect to any material fact, thus leaving the case to be

resolved as a matter of law. See Fed. R. Civ. P. 56(a). A party moving for summary

judgment has the burden of demonstrating the absence of any genuine dispute as to

a material fact, and that it is entitled to judgment as a matter of law. See Celotex

Corp. v. Catrett, 477 U.S. 317, 323 (1986). The evidence of record and all justifiable

inferences that may be drawn from the undisputed facts must be viewed in the light

most favorable to the non-moving party. See Lloyd’s Food Products Inc. v. Eli’s Inc.,

987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993). This burden is greater than the

burden of proof at trial, which is a preponderance of the evidence, and which permits

appropriate inferences to be drawn from the evidence of record. See Gasser Chair Co.

v. Infanti Chair Mfg. Corp., 60 F.3d 770, 34 USPQ2d 1822, 1824 (Fed. Cir. 1995) (in

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Cancellation No. 92063979

addition to proving elements of laches by preponderance of the evidence, moving

party must also establish no genuine issue of material fact as to those elements).

Evidence that a plaintiff uses a similar common law mark on the same or related

goods or services is sufficient to establish that plaintiff has a real interest in the

proceeding, and therefore has standing. Threshold.TV, Inc. and Blackbelt TV, Inc. v.

Metronome Enterprises, Inc., 96 USPQ2d 1031, 1036 (TTAB 2010). In order for a

plaintiff to prevail on a claim of likelihood of confusion based on its ownership of

common-law rights in a mark, the mark must be distinctive, inherently or otherwise,

and plaintiff must show priority of use. Giersch v. Scripps Networks Inc., 90 USPQ2d

1020, 1023 (TTAB 2009) citing Otto Roth & Co. v. Universal Foods Corp., 640 F.2d

1317, 209 USPQ 40 (CCPA 1981). Likelihood of confusion depends on an analysis of

all of the probative facts in evidence that are relevant to the thirteen factors set forth

in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973)

(du Pont). The Board must deny summary judgment if there are genuine disputes as

to any of these du Pont factors which would be material to a decision on the merits.

For the purpose of this motion, the Board notes that Petitioner’s evidence includes

a sworn statement regarding Petitioner’s common law use of the term TOOL

MASTER, and that Respondent does not challenge Petitioner’s standing to bring its

claim.

The Board is not persuaded that Respondent admitted the distinctiveness of

Petitioner’s mark and likelihood of confusion. Respondent’s answer specifically

denied that Petitioner possesses common law trademark rights in the term TOOL

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Cancellation No. 92063979

MASTER. Petitioner served various requests for admission regarding whether

Respondent’s “composite term TOOLMASTER” is inherently distinctive as a

trademark, or not a generic term, in connection with tool boxes and hand tools, the

goods listed in the registration. In each instance, Respondent responded (8 TTABVUE

65-66) with a variation of the statement:

Admitted. Registrant admits that [its] mark, as registered and used by
Registrant in connection with its products, is inherently distinctive for hand
tools originating from Registrant.

Petitioner’s word mark TOOL MASTER and Respondent’s stylized mark

are not identical as a matter of law, and so the Board finds that

Respondent’s admissions regarding its own mark are not admissions pertaining to

Petitioner’s mark. Similarly, the Board disagrees that Respondent concedes the

issues central to likelihood of confusion. Petitioner’s reference to the facts that

Respondent sells its goods bearing the mark to wholesale customers and markets

through trade shows are not admissions or concessions regarding likelihood of

confusion. While Respondent’s admission that the marks are identical in sound is

relevant to likelihood of confusion, the Board disagrees that Respondent admitted

that there only two visual differences between the marks. In fact, Respondent denied

that the word components of the marks are visually identical and stated (8 TTABVUE

60):

The word components of the [Respondent’s] Mark differ from the CBB Mark in
that [Respondent’s] Mark does not include a space between “TOOL” and
‘MASTER” as in the CBB mark. Additionally, [Respondent’s] Mark includes a
stylized logo that differs from the CBB mark.

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Cancellation No. 92063979

While the Board disagrees with Respondent’s characterization of the Hung

declaration as lacking probative value, the declaration sets forth facts regarding sales

of Petitioner’s goods under the mark but does not aver that those sales demonstrate

inherent or acquired distinctiveness of the mark. Otto Roth & Co., Inc. v. Universal

Foods Corp., 209 USPQ at 44 (“even though something is used as a trademark, if it

is not distinctive, the user does not have a trademark because he has no existing

trademark rights.”). Insofar as Respondent presents evidence that Petitioner’s use of

TOOL MASTER is not distinctive as a trademark but descriptive of Petitioner’s

goods, the Board finds that Respondent’s evidence is sufficient to raise a material

dispute regarding the distinctiveness of Petitioner’s mark. Threshold.TV Inc. v.

Metronome Ent. Inc., 96 USPQ2d 1031, 1036 (TTAB 2010) (“In order to establish

priority of use, opposer must prove that it acquired trademark rights prior to the

applicant’s first use. Thus, opposer must prove that its trademark is inherently

distinctive, or acquired distinctiveness before the date on which applicant can

establish its rights.”). As discussed, the Board disagrees with Petitioner that

Respondent admitted that Petitioner’s mark was distinctive, and so Respondent’s

evidence has not been rebutted.

Upon a careful review of the record, the Board finds that there are genuine

disputes of material fact regarding, at a minimum, the distinctiveness of Petitioner’s

mark, whether Petitioner’s mark became distinctive prior to Respondent’s first use,

and whether there is a likelihood of confusion between the parties’ respective marks.2

2The fact that we identify certain material facts that are genuinely in dispute should not be
construed as a finding that these are necessarily the only issues that remain for trial. In

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Cancellation No. 92063979

In denying this motion, we again note that the standard of proof for summary

judgment, the absence of a genuine dispute of any material fact, is more stringent

than the preponderance of evidence standard for trial. Evidence that may be

sufficient to raise a genuine issue, may not be sufficient to rebut a prima facie case.

See Trademark Trial and Appeal Board Manual of Procedure (TBMP) §528.01 (2018).

DECISION

Petitioner’s motions to strike Respondent’s opposition to the motion for summary

judgment as a Fed. R. Civ. P. 11 sanction and for summary judgment on its likelihood

of confusion claim are DENIED.

In view of the factual disputes in this proceeding, the Board determines that

disposition by summary judgment is not appropriate. Accordingly, the parties are

barred from filing new motions for summary judgment and must proceed to trial.

PROCEEDINGS ARE RESUMED

Plaintiff’s Pretrial Disclosures Due 2/14/2019
Plaintiff’s 30-day Trial Period Ends 3/31/2019
Defendant’s Pretrial Disclosures Due 4/15/2019
Defendant’s 30-day Trial Period Ends 5/30/2019
Plaintiff’s Rebuttal Disclosures Due 6/14/2019
Plaintiff’s 15-day Rebuttal Period Ends 7/14/2019
Plaintiff’s Opening Brief Due 9/12/2019
Defendant’s Brief Due 10/12/2019
Plaintiff’s Reply Brief Due 10/27/2019
Request for Oral Hearing (optional) Due 11/6/2019

addition, evidence submitted in support of or in opposition to a motion for summary judgment
is of record only for consideration of that motion. Any such evidence to be considered at final
hearing must be properly introduced in evidence during the appropriate trial period. See Levi
Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464, 1465 n. 2 (TTAB 1993).

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Cancellation No. 92063979

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. An oral hearing will be

set only upon request filed as provided by Trademark Rule 2.129.

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