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

mbm/WTF Mailed: March 20, 2019

Opposition No. 91241478

Entrepreneurial Ventures Capital Co., LLC

v.

Wet Holdings (Global) Ltd.

Before Bergsman, Wellington and Goodman,
Administrative Trademark Judges.

By the Board:

This proceeding now comes before the Board for consideration of (1) Wet Holdings

(Global) Ltd.’s (“Applicant”) motion for summary judgment (filed August 9, 2018)

against Entrepreneurial Ventures Capital Co., LLC’s (“Opposer”) pleaded likelihood

of confusion claim and (2) Opposer’s combined motion to seal and to strike (filed

September 13, 2018).1 The motions are fully briefed.

1 Applicant states that it served its initial disclosures on Opposer concurrently with its
summary judgment motion on August 9, 2018. 6 TTABVUE 6. Accordingly, the motion for
summary judgment is timely. See Trademark Rule 2.127(e)(1), 37 C.F.R. § 2.127(e)(1).
Opposition No. 91241478

I. BACKGROUND

Applicant seeks to register the mark WET WATER ENHANCING

TECHNOLOGIES and Design, as shown below:2

The application lists the goods in International Class 11 as follows:

Apparatus for the cleansing, purification and pH enhancement of water; water
conditioning apparatus for producing coherent water; apparatus for cleansing
grey water; apparatus for the recovery of water waste; water treatment apparatus,
namely, water conditioning units for changing the structure and resonance of
water molecules for the enhancement of residential, commercial, and industrial
water supplies.

On May 30, 2018, Opposer filed a notice of opposition opposing registration of

Applicant’s mark on the ground of likelihood of confusion pursuant to Section 2(d) of

the Trademark Act, 15 U.S.C. § 1052(d). In support of its likelihood of confusion claim,

Opposer has pleaded ownership of Registration No. 3541668 for the standard

2 Application Serial No. 87582805, filed August 24, 2017, based on an allegation of a bona
fide intent to use pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
“WATER ENHANCING TECHNOLOGIES” is disclaimed. The description of the mark is as
follows: “The mark consists of a blue drop of water with the stylized word ‘WET’ spelled in
the drop of water and with the gray stylized wording ‘WATER ENHANCING
TECHNOLOGIES’ appearing underneath the drop of water. The color white appears as
background only and is not a claimed feature of the mark.”

2
Opposition No. 91241478

character mark WHET for “bottled drinking water; bottled water; drinking water;

spring water; [and] table water,” in International Class 32.3

Additionally, Opposer has attempted to plead prior common law rights in a water

droplet design mark, as shown below:

In its answer, Applicant denies the salient allegations in the notice of opposition

and files counterclaims for cancellation of Opposer’s pleaded registration.4

In support of its motion for summary judgment, Applicant submitted a

declaration of Edwin D. Schindler (“Schindler”), counsel for Applicant, who attaches,

inter alia, the following: (1) a copy of the complete electronic file wrapper for

Applicant’s pending application (Ser. No. 87582805)5; (2) a copy of Opposer’s

registration certificate (Reg. No. 3541668); (3) a copy of email correspondence from

Opposer’s counsel, Gregg Zegarelli (“Zegarelli”), to Mr. Schindler dated February 28,

2018; (4) a copy of Mr. Zegarelli’s follow-up emails sent to Mr. Schindler on February

3Registration No. 3541668, issued December 2, 2008, claiming August 21, 2008 as both the
date of first use and the date of first use in commerce. Section 8 and 9 declarations accepted
December 17, 2018.

4The Board has not reviewed the counterclaims for purposes of determining Applicant’s
motion for summary judgment or Opposer’s combined motion to strike and seal.

5 Pursuant to Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), “[t]he file of each
application … of the application against which a notice of opposition is filed … forms part of
the record of the proceeding without any action by the parties and references may be made
to the file for any relevant and competent purpose in accordance with paragraph (b)(2) of this
section.”

3
Opposition No. 91241478

28, 2018, April 6, 2018, and May 23, 2018; and (5) copies of third-party trademark

registration certificates incorporating water droplet designs. 6 TTABVUE 19-119.

In support of its response to Applicant’s motion for summary judgment, Opposer

submitted a declaration of Mr. Zegarelli. Additionally, Opposer attached the

following: (1) a copy of the failed delivery auto-response email Mr. Zegarelli received

on February 28, 2018; (2) screenshots of web pages; and (3) an image of Opposer’s

water product bearing the WHET mark and accompanying design.6 8 TTABVUE 12-

18.

Additionally, on September 10, 2018, Opposer filed a miscaptioned combined

motion to seal and strike titled as a motion in limine. 9 TTABVUE. On September

13, 2018, Opposer filed a corrective motion to seal and strike, stating that its

September 10, 2018 filing was inadvertently titled a motion in limine, and clarifying

that Opposer was seeking only to strike and seal certain evidence submitted in

support of Applicant’s motion for summary judgment. 10 TTABVUE 2.

For purposes of this order, we presume the parties’ familiarity with the pleadings,

the history of the proceedings, and the additional arguments and evidence submitted

with respect to the parties’ motions and responses thereto.

6 Internet materials may only be considered if properly submitted with the date the materials
were accessed and their source (e.g., the URL). Trademark Rule 2.122(e). Inasmuch as
Opposer did not provide the required information, the screenshots are given no consideration.
See TBMP § 704.08(c) and authorities cited therein; TMBP § 528.05(a)(1). Additionally, none
of the remaining exhibits are considered self-authenticating and were not submitted with an
authenticating declaration or affidavit. The exhibits are therefore given no consideration.

4
Opposition No. 91241478

II. PLEADING MATTERS

As an initial matter, the Board finds that Opposer failed to plead properly its claim

of likelihood of confusion based on its purported common law rights. To allege a valid

ground for opposition under Section 2(d) of the Trademark Act, a plaintiff must allege

that it has valid proprietary rights that are prior to those of Applicant and that

Applicant’s mark so resembles Opposer’s mark as to be likely to cause confusion. See

15 U.S.C. § 1052(d); Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209

USPQ 40, 43 (CCPA 1981).

In support of its purported common law rights, Opposer pleads that it uses its

“brand in conjunction with a water droplet” design. Notice of opposition ¶ 2. Opposer

does not plead the dates of first use of its design mark or identify with particularity

the goods or services for which the logo is used.7 This allegation is insufficient to

provide Applicant adequate notice for the basis of the alleged prior rights. See Fair

Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007) (elements of

each claim should include enough detail to give the defendant fair notice).

Accordingly, the Board finds that Opposer has failed to sufficiently plead a claim

of likelihood of confusion based on its prior common law rights in its design mark.

Thus, the insufficiently pleaded allegations of common law rights in connection with

the design mark are hereby stricken.

7Additionally, Opposer pleads generally that it has use of its registered mark in connection
with “water products.” Notice of opposition ¶ 3. The general reference to “water products” is
vague and does not provide Applicant fair notice of the basis of any additional claimed
common law rights for goods beyond those specifically identified in Opposer’s pleaded
registration.

5
Opposition No. 91241478

Consistent with Board policy, however, Opposer is granted leave to amend its

notice of opposition. Opposer is allowed until April 10, 2019 in which to file an

amended notice of opposition that properly pleads a claim of likelihood of confusion

based on its purported common law rights, failing which, the allegations will be

stricken with prejudice and given no further consideration.

In turn, Applicant is allowed until April 30, 2019 in which to file and serve an

answer (and counterclaims) or otherwise respond to the amended pleading, if any.

The Board turns next to Opposer’s combined motion to seal and strike.

III. OPPOSER’S COMBINED MOTION TO SEAL AND STRIKE

Pursuant to Fed. R. Civ. P. 12(f) and Fed. R. Evid. 408, Opposer has motioned the

Board to strike and seal certain material submitted by Applicant in support of its

motion for summary judgment, specifically, email communications sent from Opposer

to Applicant’s counsel regarding the dispute at issue in this proceeding. Fed. R. Civ.

P. 12(f).

In support of its motion for summary judgment, Applicant has submitted copies

of emails sent from Opposer to Applicant’s counsel, which Applicant contends

contradict certain allegations in the notice of opposition. Applicant relies upon these

emails, at least in part, to support its argument that summary judgment should be

entered in Applicant’s favor on Opposer’s claim of likelihood of confusion. Specifically,

Applicant argues that Opposer has admitted in its emails that there is no likelihood

of confusion with respect to “WET” and “WHET.” Applicant contends that Fed. R.

Evid. 408 is “inapplicable to the unsolicited e-mails that [Opposer] took upon itself to

6
Opposition No. 91241478

send to counsel for [Applicant] and therefore the [Opposer’s] e-mails are fully

admissible into evidence.” 6 TTABVUE 11. In other words, Applicant contends that

the emails are admissible to disprove the validity of Opposer’s claim because they

were unsolicited and sent prior to the institution of this proceeding.

Conversely, Opposer argues that Applicant inappropriately divulged Opposer’s

compromise offers to initiate settlement negotiations and that Applicant is

improperly relying upon them in support of its summary judgment motion to disprove

Opposer’s likelihood of confusion claim in contravention of Fed. R. Evid. 408.

Although the emails were sent prior to the institution of this proceeding, Opposer

contends that the emails were sent after Opposer filed an extension of time to oppose

Applicant’s involved application and that the emails were sent in an attempt to settle

the trademark dispute.

Although motions to strike are not favored, the Board grants motions to strike in

appropriate cases. See, e.g., Ohio State University v. Ohio University, 51 USPQ2d

1289, 1293 (TTAB 1999); and Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570

(TTAB 1988). See also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE

(“TBMP”) § 506.01 (2018) and cases cited therein. Fed. R. Evid. 408 prohibits, in

relevant part, the admissibility of evidence “either to prove or disprove the validity

or amount of a disputed claim…” See Fed. R. Evid. 408(a). Although the email

communications were sent prior to the institution of this proceeding, they were sent

after Opposer filed an extension of time to oppose the involved application and were

sent with a clear intent of settling the trademark dispute. Applicant is also offering

7
Opposition No. 91241478

the emails specifically in an attempt to disprove the validity of Opposer’s claim of

likelihood of confusion. Thus, the emails fall within the protection of Fed. R. Evid.

408.

In its opposition to the motion to strike and seal, Applicant contends that Rule

408 does not extend to unsolicited offers. In support of its argument, Applicant cites

U.S. v. Davis, 664 F. Supp. 2d 86 (D.D.C. 2009) for the proposition that an unsolicited

offer cannot constitute an offer to settle a dispute or claim under Fed. R. Evid. 408.

However, the Court of Appeals for the District of Columbia overruled the district

court’s decision in U.S. v. Davis and found that Fed. R. Evid. 408 also protects

unsolicited offers provided to prove or disprove the validity of a claim. U.S. v. Davis,

596 F.3d 852 (D.C. Cir. 2010). “If one party attempts to initiate negotiations with a

settlement offer, the offer is excluded from evidence even if the counterparty

responds: ‘I’m not negotiating with you.’” Id. at 859. Thus, the fact that Opposer sent

an unsolicited compromise offer to Applicant to which Applicant never responded is

not dispositive. As the Court of Appeals recognized in U.S. v. Davis, “[o]ffers to settle

are excluded even if no settlement negotiations follow,” because “[i]t makes no sense

to force the party who initiates negotiations to do so at his peril.” Id. at 859. Moreover,

the Board finds that the purpose of Fed. R. Evid. 408 is to promote settlement. See

Fed. R. Evid. 408 advisory committee’s note (1974). Consideration of Opposer’s offers

as evidence to disprove Opposer’s claim would be at odds with the purpose of Fed. R.

Evid. 408.

8
Opposition No. 91241478

The Board finds that the email communications were made as part of an offer to

compromise and that Applicant is specifically presenting the statements as evidence

to disprove the validity of the Opposer’s claim asserted in the notice of opposition.

Accordingly, Rule 408 applies and precludes the presentation of said communications

as evidence.

The Board therefore finds it appropriate to strike the copies of Opposer’s emails

provided by Applicant, as well as all statements derived from Opposer’s emails.

Accordingly, Opposer’s motion to strike said material is GRANTED and the exhibits

and references to their contents contained in Applicant’s motion for summary

judgment are hereby stricken.8

As to the motion to seal, the Board relies on the above-referenced analysis in

finding that the statements should be sealed from the public record and Opposer’s

motion to seal is GRANTED. Accordingly, the motion and supporting materials in

the Board’s docket (6 TTABVUE) will no longer be viewable to the public and

Applicant is required to file a redacted copy of its motion for summary judgment for

the publicly available record by April 10, 2019.

IV. APPLICANT’S MOTION FOR SUMMARY JUDGMENT

A. Summary Judgment Standard

Summary judgment is appropriate where the movant shows that there is no

genuine dispute as to any material fact and that it is entitled to judgment as a matter

8In view of the Board’s finding that the communications should be stricken under Fed. R.
Evid. 408, the Board need not reach a determination regarding Opposer’s alternative
argument that the email communications are subject to the Board’s Standard Protective
Order.

9
Opposition No. 91241478

of law. Fed. R. Civ. P. 56(a). A party asserting that a fact cannot be or is genuinely

disputed must support its assertion by either (1) citing to particular parts of materials

in the record, or (2) showing that the materials cited do not establish the absence or

presence of a genuine dispute, or that an adverse party cannot produce admissible

evidence to support the fact. Fed. R. Civ. P. 56(c).

A movant for summary judgment carries the burden of proof in regard to its

motion. See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). In deciding the

motion, the function of the Board is not to try issues of fact, but to determine if there

are any genuine disputes of material fact to be tried. See TBMP § 529.01 and cases

cited therein. When the moving party has supported its motion with sufficient

evidence that, if unopposed, indicates there is no genuine dispute of material fact and

that the moving party is entitled to judgment as a matter of law, the burden then

shifts to the non-moving party to demonstrate the existence of a genuine dispute of

material fact to be resolved at trial. Enbridge, Inc. v. Excelerate Energy LP, 92

USPQ2d 1537, 1540 (TTAB 2009).

The nonmoving party must be given the benefit of all reasonable doubt as to

whether genuine disputes of material fact exist, and the evidentiary record on

summary judgment, and all inferences to be drawn from the undisputed facts, must

be viewed in the light most favorable to the nonmoving party. See Opryland USA,

Inc. v. Great Am. Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir.

1992).

10
Opposition No. 91241478

B. Summary Judgment Decision

In support of its motion for summary judgment on Opposer’s claim of likelihood

of confusion, Applicant submits that Opposer’s pleaded mark is weak for the asserted

goods and should be afforded a narrow scope of protection. 6 TTABVUE 12-13.

Additionally, Applicant alleges that its goods and those of Opposer are unrelated. Id.

at 14-15. In response, Opposer contends that “WHET” and “WET” are pronounced the

same and have the same meaning or connotation. 8 TTABVUE 6. Additionally,

Opposer asserts that the parties’ goods are related and that the channels of trade

overlap and submits the Zegarelli declaration in support of its contention. Id. at 9,

15.

Upon careful consideration of the parties’ arguments and evidence, and drawing

all inferences in favor of Opposer as the nonmoving party, we find that Applicant has

not demonstrated the absence of a genuine dispute of material fact for trial and that

Applicant is not entitled to summary judgment under applicable law.

Based on the present record,9 we find that with regard to Opposer’s asserted

Section 2(d) claim, a genuine dispute of material fact exists as to: (1) the similarities

or dissimilarities between the parties’ respective marks for likelihood of confusion

purposes; (2) the similarities or dissimilarities between the parties’ respective goods;

(3) the relatedness of the respective established, likely to persist channels of trade

9 The parties should note that the evidence submitted in connection with a motion for
summary judgment or opposition thereto 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 (TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983).

11
Opposition No. 91241478

and purchasers to whom sales are made; and (4) the strength of Opposer’s pleaded

mark.10

In view thereof, Applicant’s motion for summary judgment on Opposer’s claim of

likelihood of confusion is DENIED.

V. TRIAL SCHEDULE

Proceedings herein are resumed. Remaining dates are reset as follows:

Amended Notice of Opposition (If Any) & 4/10/2019
Redacted Version of Motion for Summary Judgment Due
Answer to Amended Opposition (If Any) 4/30/19
Answer to Counterclaim 5/20/2019
Deadline for Discovery Conference 6/19/2019
Discovery Opens 6/19/2019
Initial Disclosures Due 7/19/2019
Expert Disclosures Due 11/16/2019
Discovery Closes 12/16/2019
Pretrial Disclosures Due for Opposer/Counterclaim-Respondent 1/30/2019
30-Day Trial Period Ends for Opposer/Counterclaim- 3/15/2020
Respondent
Pretrial Disclosures Due for Applicant/Counterclaim-Petitioner 3/30/2020
30-Day Trial Period Ends for Applicant/Counterclaim-Petitioner 5/15/2020
Pretrial Disclosures Due for Rebuttal of Opposer/Counterclaim- 5/30/2020
Respondent
30-Day Trial Periods Ends for Applicant/Counterclaim- 7/13/2020
Petitioner
Pretrial Disclosures Due for Rebuttal for Applicant/ 7/28/2020
Counterclaim-Petitioner
15-Day Trial Period Ends for Applicant/Counterclaim-Petitioner 8/27/2020
Opening Brief for Opposer/Counterclaim-Respondent Due 10/26/2020
Combined Brief for Applicant/Counterclaim-Petitioner Due 11/25/2020
Combined Rebuttal Brief for Opposer/Counterclaim-Respondent 12/25/2020
Due
Rebuttal Brief for Applicant/Counterclaim-Petitioner Due 1/9/2021
Request for Oral Hearing (optional) Due 1/19/2021

10 The fact that we have identified certain genuine disputes of material fact as a sufficient
basis for denying Applicant’s motion for summary judgment should not be construed as a
finding that such disputes necessarily are the only disputes that remain for trial.

12
Opposition No. 91241478

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is

taken and introduced out of the presence of the Board during the assigned testimony

periods. The parties may stipulate to a wide variety of matters, and many

requirements relevant to the trial phase of Board proceedings are set forth in

Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the

manner and timing of taking testimony, matters in evidence, and the procedures for

submitting and serving testimony and other evidence, including affidavits,

declarations, deposition transcripts and stipulated evidence. Trial briefs shall be

submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at

final hearing will be scheduled only upon the timely submission of a separate notice

as allowed by Trademark Rule 2.129(a).

13