THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB

Mailed: September 12, 2006
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Giocar America, Inc. d/b/a Galfer, Galfer USA and Galfer
Braking Systems
v.
Braking Italia, s.r.l.
_____

Opposition No. 91159338
to application Serial No. 78164297
filed on September 16, 2002
_____

Thomas J. Daly of Christie, Parker & Hale, LLP for Giocar
America, Inc.

Michael J. Hughes of Intellectual Property Law Offices for
Braking Italia, s.r.l.
______

Before Hairston, Bucher and Grendel, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Braking Italia, s.r.l. (an Italian corporation) has

filed an application to register the mark WAVE for “brake

discs for land vehicles.”1

Giocar America, Inc. d/b/a Galfer, Galfer USA and

Galfer Braking Systems has opposed registration of

1
Serial No. 78164297, filed September 16, 2002, which alleges a
date of first use anywhere and in commerce of October 31, 2000.
Opposition No. 91159338

applicant’s mark on the ground that for many years it has

been engaged in the manufacture and sale of brake products

for vehicles; that prior to applicant’s priority date

opposer has continuously used the mark WAVE in commerce in

the manufacture and sell of brake products for vehicles; and

that applicant’s mark, as applied to the goods identified in

applicant’s application, so resembles opposer’s WAVE mark,

as to be likely to cause confusion.

Applicant, in its answer, “admits that the goods are

identical and asserts that the circumstances go beyond this,

as the goods upon which Opposer claims usage are indeed

Applicant’s goods” and “admits that the marks are identical

and asserts that the circumstances go beyond this, as the

mark which Opposer claims to have used is indeed Applicant’s

mark on Applicant’s goods.” (Answer, paragraph nos. 5 and

6). Applicant otherwise denies the salient allegations of

the notice of opposition. In addition, applicant asserts as

“affirmative defenses” that it created, developed and used

the WAVE mark in connection with its brake products in Italy

long before any use of the mark by opposer; that opposer was

aware of applicant’s use; that opposer obtained the brake

products it sold in the U.S. from applicant and effectively

acted as applicant’s U.S. sales operation; and that all use

of the WAVE mark by opposer inured to the benefit of

applicant.

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Opposition No. 91159338

The record includes the pleadings; the file of the

involved application; and the testimony (with exhibits) of

opposer’s General Manager, Allesandro Milesi. Applicant did

not take testimony or submit any other evidence.

Only opposer filed a brief. An oral hearing was not

requested.

At the outset, in view of applicant’s admissions in its

answer that the marks and goods are identical, there is no

dispute that contemporaneous use of the parties’ marks on

their respective goods would be likely to cause confusion.

Further, because applicant did not present any evidence or

argument directed to its affirmative defenses, we deem them

waived and haven given them no consideration. Thus, the

sole issue to be decided in this proceeding is priority.

Where, as here, opposer does not own a registration and

is relying on common law rights in its mark, opposer must

establish by competent evidence that it has used its mark

prior to the earliest date on which applicant may rely for

priority purposes. Because the applicant herein did not

present evidence of use which predates the application

filing date, the earliest use date on which applicant can

rely for priority purposes is its application filing date,

September 16, 2002. See David Crystal, Inc. v. Estee

Lauder, Inc., 167 USPQ 411 (TTAB 1970), aff’d, 476 F.2d

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Opposition No. 91159338

1373, 177 USPQ 461 (CCPA 1973); and Levi Strauss & Co. v. R.

Josephs Sportswear, Inc., 36 USPQ2d 1328 (TTAB 1994).

Opposer maintains that it first used the WAVE mark in

connection with brake products, specifically brake rotors,

in early 1999. In support thereof, opposer offered the

testimony of its General Manager, Alessandro Milesi. Mr.

Milesi testified that he is responsible for all marketing,

sales, and internal operations of opposer. (Milesi dep., p.

8). According to Mr. Milesi, opposer purchases most of the

brake products it sells from its parent company, Industrias

Galfer of Barcelona Spain. (Milesi dep., pp. 9-10). In

1998, opposer began hearing about a new type brake rotor

with an irregular outer surface. (Milesi dep., p. 11). In

late 1998 opposer purchased these brake rotors from

Industrias Galfer for sale in the United States. (Milesi

dep., p. 13). Mr. Milesi acknowledges that the brake rotors

were manufactured by applicant, Braking Italia, s.r.l., who

in turn supplied them to Industrias Galfer. (Milesi dep., p.

15).

With respect to the adoption of the WAVE mark, Ms.

Allesandro testified that:

Q. And whose idea was it to use “Wave rotor” as
the designator for this product in the United
States?

A. Well, we caught on to the idea right away.
It was my father and myself that called it
Wave rotor. And again, Umberto, my uncle,

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Opposition No. 91159338

who also thought that was a great name, you
know.

Q. And as far as you know, were you the first
ones to use that name in connection with
rotors in the United States?

A. As far as I know, yes.
(Milesi dep., p. 19)

In early 1999 opposer began promoting the WAVE brake

rotors at its website and by direct mail to existing

customers to encourage them to attend an industry trade show

in Indianapolis to see the new type brake rotor. (Milesi

dep., pp. 16-17). Mr. Milesi testified that opposer

displayed a WAVE rotor at this industry trade show in

February 1999 (Milesi dep., p. 19), and on February 17, 1999

opposer shipped a WAVE brake rotor to one of its customers,

a motorcycle shop in Bellevue Washington. (Milesi dep., p.

23 and Exhibit 3). Mr. Milesi identified an invoice for

this sale and eleven additional invoices dated from February

1999 to April 2002 for sales of WAVE brake rotors to

different customers. (Exhibits 3 and 4). In each of these

invoices, the brake rotors are referred to as “WAVE.” Mr.

Milesi testified that opposer has continued to sell brake

rotors under the WAVE mark. (Milesi dep., p. 78).

Oral testimony, even of a single witness, if

“sufficiently probative,” can suffice to prove priority.

Powermatics, Inc. v. Global Roofing Products Co., Inc., 341

F2d. 127, 144 USPQ 430 (CCPA 1965). In this case, Mr.

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Opposition No. 91159338

Milesi’s testimony with respect to opposer’s first uses of

the WAVE mark was clear and consistent. Further, Mr.

Milesi’s pertinent testimony was accompanied by documentary

evidence which was consistent with the testimony.

Applicant has not challenged or rebutted any of

opposer’s evidence pertaining to opposer’s first uses of its

WAVE mark on brake rotors. We find the evidence sufficient

to establish that opposer has used the WAVE mark since

February 1999. This date is earlier than applicant’s

priority date, and therefore, priority lies with opposer.

In view thereof, and there being no dispute regarding

the identity of the marks and goods, contemporaneous use of

the marks on the respective goods is likely to cause

confusion.

Decision: The opposition is sustained.

6