GFBC, Inc. v. A Sun Down Enterprise, LLC d/b/a Sun Up Brewing Company

This Opinion is Not a
Precedent of the TTAB

Mailed: June 28, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

GFBC, Inc.
v.
A Sun Down Enterprise, LLC
d/b/a Sun Up Brewing Company
_____

Opposition No. 91234503
_____

Karen K. Gaunt and Leanthony Edwards Jr. of Dinsmore & Shohl LLP,
for GFBC, Inc.

Anthony M. Verna III, Verna Law, P.C.
_____

Before Shaw, Hightower, and English,
Administrative Trademark Judges.

Opinion by English, Administrative Trademark Judge:

Applicant, A Sun Down Enterprise, LLC, d/b/a Sun Up Brewing Company, seeks

registration on the Principal Register of the standard character mark RED FLASH

for “beer.” Opposer, GFBC, Inc., opposes registration on the ground of likelihood of

confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on

alleged prior use and registration of the marks: (1) GREEN FLASH for “beer” and
Opposition No. 91234503

“non-metal taps for beer kegs”;1 (2) GREEN FLASH BREWING CO. for “bar services

featuring craft beer”;2 and (3) FLASH OF GENIUS for “beer”3 and “t-shirts.”4 (The

marks in items 1 and 2 are collectively referred to as the “GREEN FLASH Marks.”)

In its answer, Applicant denies the salient allegations in the notice of opposition.5

I. The Record

The record consists of the pleadings and the file of Applicant’s involved application

by operation of Trademark Rule 2.122(b), 37 C.F.R § 2.122(b). In addition, Opposer

submitted the amended testimony declaration,6 with one exhibit, of Michael Hinkley,

“co-founder of Green Flash Brewing and current advisor to [Opposer],”7 and a notice

of reliance on the following evidence:

• The prosecution file histories for the pleaded registrations;

• Printouts from the USPTO Trademark Status and Document Retrieval

(TSDR) database for the GREEN FLASH Marks; and

• Sixteen Internet printouts of articles, press releases, customer reviews, and

media references to Opposer and goods offered under the GREEN FLASH

1 Registration No. 4766676, in standard characters; registered July 7, 2015.
2Registration No. 5057034, in standard characters; registered October 11, 2016; “Brewing
Co.” disclaimed.
3 Registration No. 4786191, in standard characters; registered August 4, 2015.
4 Registration No. 4993665, in standard characters; registered July 5, 2016.
5 Answer, 5 TTABVUE.
6Opposer amended the declaration to include a certificate of service. 13 TTABVUE 2. The
amended declaration otherwise appears to be identical to the original declaration at 12
TTABVUE.
7 Hinkley Declaration, 13 TTABVUE 3, ¶ 1.

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Opposition No. 91234503

Marks.

Applicant did not introduce any testimony or evidence. Nor did Applicant file a brief.8

II. Standing and Priority

As the plaintiff in this proceeding, Opposer bears the burden of establishing its

standing and Section 2(d) claim by a preponderance of the evidence. Cerveceria

Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309

(Fed. Cir. 1989); Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1107 (TTAB 2007).

Where, as here, an opposer’s sole claim is priority and likelihood of confusion, an

opposer may establish standing and priority by proving ownership of a subsisting

federal registration or “any one of a number of types of use sufficient to establish prior

proprietary rights.” Demon Int’l LC v. Lynch, 86 USPQ2d 1058, 1060 (TTAB 2008).

Applicant did not make any admissions in its answer regarding Opposer’s pleaded

registrations or common law rights, and for the reasons explained below, the evidence

of record does not establish by a preponderance of the evidence that Opposer owns

the pleaded registrations or has prior proprietary rights in the pleaded marks.

The TSDR records for the GREEN FLASH Marks submitted into the record by

Opposer show that the registrations are owned by WC IPA LLC (“WC IPA”), not by

Opposer GFBC, Inc.9 Specifically, the TSDR records show that on:

8Because Opposer has the burden of proof, Applicant had no obligation to submit evidence
or a brief, and we do not construe its decision not to do so as a concession of the case.
Trademark Rule 2.128(a)(1), 37 C.F.R. § 2.128(a)(1); Yazhong Investing Ltd. v. Multi-Media
Tech. Ventures, Ltd., 126 USPQ2d 1526, 1531 n.13 (TTAB 2018).
9 Notice of Reliance, Exhibit 3, 14 TTABVUE 268-71, and Exhibit 4, 14 TTABVUE 330-32.

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Opposition No. 91234503

• August 12, 2015, Opposer granted a security interest in the GREEN FLASH

Marks to Comercia Bank;

• March 30, 2018, Opposer assigned the “entire interest” in the GREEN FLASH

Marks to Comercia Bank; and

• March 30, 2018, Comercia Bank assigned the “entire interest” in the GREEN

FLASH Marks to WC IPA.10

There is no evidence in the record to explain what relationship, if any, Opposer has

with WC IPA, and Opposer did not address the assignment of the GREEN FLASH

Marks in its brief. In any event, only the record owner of a registration may rely on

it to establish standing and priority. See Trademark Act Section 7(b), 15 U.S.C.

§ 1057(b) (“A certificate of registration of a mark upon the principal register … shall

be prima facie evidence of … the owner’s ownership of the mark, and of the owner’s

exclusive right to use the registered mark ….”) (emphasis added).

As to the FLASH OF GENIUS mark, Opposer did not make status and title copies

of the pleaded registrations of record through any of the means available to it under

the Trademark Rules. The mere prosecution file histories for the registrations are

insufficient because they do not show that Opposer currently owns the registrations

or that the registrations are subsisting. Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90

USPQ2d 1112, 1116-17 (TTAB 2009) (plain copy of registration certificate

insufficient); Indus. Adhesive Co. v. Borden, Inc., 218 USPQ 945, 947-48 (TTAB 1983)

(photocopy of registration without status and title information insufficient to

10 Id.

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Opposition No. 91234503

establish prima facie showing).

Mr. Hinkley testifies that:

• Opposer “owns the … federally registered [pleaded] trademarks[.]”11

• “Since beginning operations in 2002, [Opposer] has sold in excess of an

estimated 200 million USD ($200,000,000.00) worth of beer and related

merchandise bearing the [pleaded marks] within the United States of

America.”12

• “Since launch, [Opposer] has spent in excess of 20 million USD

($20,000,000.00) on marketing beer and related merchandise under the

[pleaded marks] throughout the United States of America.”13

• “As a result of [Opposer’s] marketing and brand building efforts around the

mark GREEN FLASH, [Opposer] has established one of the most recognizable

brands in its industry. [Opposer] is ranked in the top 50 of over 6,600 breweries

in the U.S. on social media platforms Facebook, Twitter, and Instagram.”14

It is well established that the oral testimony of a single witness with personal

knowledge may establish a party’s ownership or use of a mark, but only if it is

sufficiently probative. Exec. Coach Builder, Inc. v. SPV Coach Co., 123 USPQ2d 1175,

11Hinkley Declaration, 13 TTABVUE 3-4, ¶ 4. Mr. Hinkley has not testified as to the current
status of the pleaded registrations. Alcan Aluminum Corp. v. Alcar Metals Inc., 200 USPQ
742, 744 n.5 (TTAB 1978) (plain copies of registrations introduced through testimony which
established ownership of the registrations but failed to establish that they were currently
subsisting were not considered).
12 Id. at 4, ¶ 5.
13 Id. at ¶ 6.
14 Id. at ¶ 8.
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Opposition No. 91234503

1184 (TTAB 2017); GAF Corp. v. Amatol Analytical Servs., Inc., 192 USPQ 576, 577,

583 (TTAB 1976). The testimony “should not be characterized by contradictions,

inconsistencies, and indefiniteness but should carry with it conviction of its accuracy

and applicability.” B.R. Baker Co. v. Lebow Bros., 150 F.2d 580, 66 USPQ 232 (CCPA

1945); Nationstar Mortg. LLC v. Ahmad, 112 USPQ2d 1361, 1372 (TTAB 2014).

Corroborating evidence strengthens oral testimony. Executive Coach, 123 USPQ2d at

1184.

We find that Mr. Hinkley’s testimony is not credible for several reasons. First,

Mr. Hinkley testifies that he was the founder of Opposer’s predecessor-in-interest

Green Flash Brewing,15 but that he now serves as a “current advisor” to Opposer.16

Mr. Hinkley has not explained in what capacity he advises Opposer, and therefore,

the basis for his testimony that he has the personal knowledge necessary to testify

regarding current ownership of the pleaded registrations and current use of the

pleaded marks is unclear. Fed. R. Evid. 602 (“A witness may not testify to matter

unless evidence is introduced sufficient to support a finding that the witness has

personal knowledge of the matter.”).

Second, the TSDR records Opposer submitted directly contradict Mr. Hinkley’s

testimony that Opposer owns the GREEN FLASH Marks. The recordation of the

assignment of the GREEN FLASH registrations with the Office is prima facie

15Notice of Reliance, Exhibit 3, 14 TTABVUE 268-71, and Exhibit 4, 14 TTABVUE 330-32
(TSDR records reflecting that Green Flash Brewing, Inc., d/b/a Green Flash Brewing
Company merged into GFBC, Inc.).
16 Hinkley Declaration, 13 TTABVUE 3, ¶ 1.

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Opposition No. 91234503

evidence of the execution of the assignment. Trademark Act Section 10(a)(3), 15

U.S.C. § 1060(a)(3). In the absence of evidence rebutting the assignment, we must

treat WC IPA as the owner of the GREEN FLASH Marks.17 See Sonic Distribs., Inc.

v. Int’l Battery, Inc., 175 USPQ 255, 256 (TTAB 1972). Any rights Opposer accrued in

the GREEN FLASH Marks now accrue to WC IPA. Karsten Mfg. Corp. v. Editoy AG,

79 USPQ2d 1783, 1790 n.9 (TTAB 2006) (“[T]he law is well established that an

assignee stands in the shoes of its assignor.”); 3 J. Thomas McCarthy, MCCARTHY ON

TRADEMARKS AND UNFAIR COMPETITION § 18:15 (5th ed. 2019) (“After an assignment,

the assignor has divested itself of its trademark rights. The title of the assignee is

superior.”). The other documentary evidence Opposer has submitted, namely, the

Internet printouts and file histories for the pleaded registrations, does not rebut the

assignment of the GREEN FLASH Marks nor is it sufficient to establish Opposer’s

current ownership or use of the FLASH OF GENIUS mark.18

Third, the implication of Mr. Hinkley’s testimony is that Opposer has been using

the pleaded marks since 2002, but Opposer acknowledges in its brief that it did not

17 If Opposer continued to use the GREEN FLASH Marks notwithstanding the assignment
on March 30, 2018, this would constitute a “new” use after Applicant’s filing and constructive
first use date of September 1, 2016.
18 None of the Internet printouts reference the FLASH OF GENIUS mark. Twelve of the
sixteen Internet printouts consist of content published before the March 30, 2018 assignment
of the GREEN FLASH Marks. 14 TTABVUE 382-86, 392-400, 405-07, 410-12, and 418-31.
The remaining four webpage printouts have limited probative value as we consider them only
for what they show on their face, not for the truth of their contents. Safer, Inc. v. OMS Invs.,
Inc., 94 USPQ2d 1031, 1040 (TTAB 2010).
There is some evidence that Opposer may have used Green Flash as a trade name, but it is
insufficient to establish that Opposer has continued to use the Green Flash trade name after
assignment of the GREEN FLASH Marks.

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Opposition No. 91234503

commence use of its pleaded marks for the pleaded goods and services until much

later.19 Mr. Hinkley’s testimony also is vague and ambiguous; he does not testify that

Opposer’s sales and marketing in connection with the pleaded marks have been

continuous. The ambiguity is glaring in view of the evidence demonstrating that

Opposer has assigned its rights in the GREEN FLASH Marks to an apparently

unrelated party.

III. Conclusion

Considering all of the evidence as a whole, Opposer has failed to prove its

ownership of the pleaded registrations or use establishing prior proprietary rights.

Accordingly, Opposer has not proven its standing or priority.

Decision: The opposition is dismissed for Opposer’s lack of standing and

priority.

19 15 TTABVUE 5.
8