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Baxley

UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451

Mailed: May 16, 2007

Opposition No. 91162715

Persis International, Inc.

v.

Burgett, Inc.

Before Hohein, Rogers and Bergsman, Administrative Trademark Judges

By the Board:

Burgett, Inc. ("applicant") seeks to register the mark

SOHMER in typed form for "musical instruments, namely

pianos" in International Class 15. 1

Persis International, Inc. ("opposer") has filed a

notice of opposition to the registration of applicant's mark

on the grounds of abandonment and fraud. In particular,

opposer contends that applicant committed fraud by falsely

asserting in a declaration in support of its application

that the mark had become distinctive through the

substantially exclusive and continuous use of the mark by

1 Application Serial No. 76214968, filed February 23, 2001, based on an assertion of a bona fide intent to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b). The application includes a claim of acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C. Section 1052(f).

Opposition No. 91162715

applicant and related companies for at least five years

prior to the date of the declaration.

This case now comes up for consideration of the

following motions: 1) applicant's motion (filed April 28,

2006) for summary judgment in its favor on the grounds that

it has not abandoned the mark and did not commit fraud in

the declaration at issue; 2) applicant's motion (filed April

28, 2006) to exclude as trial evidence information and

documents that opposer did not produce in discovery and

which were obtained by way of nine subpoenas after the close

of the discovery period; 3) opposer's motion (filed May 15,

2006) for entry of judgment as a discovery sanction for

applicant's failure to comply with the Board's March 7, 2006

order compelling discovery; and 4) opposer's cross-motion

(filed May 30, 2006) for summary judgment in its favor on

the ground of fraud.

As an initial matter, applicant's involved application

was filed with the Office based on an assertion of a bona

fide intent to use the mark in commerce under Trademark Act

Section 1(b), 15 U.S.C. Section 1051(b). No amendment to

allege use was filed in connection with the application

prior to the publication for opposition of the application.

Therefore, until applicant amends its application to allege

use in commerce, opposer cannot properly assert an

abandonment claim. See Consolidated Cigar Corp. v.

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Opposition No. 91162715

Rodriguez, 65 USPQ2d 1153, 1155 (TTAB 2002) (petitioner

cannot assert a three-year period of nonuse that began prior

to respondent’s filing of its statement of use). Therefore,

the abandonment claim herein is dismissed.

Further, the Office file for applicant's involved

intent-to-use application indicates that the application was

approved for publication on the basis of a declaration that

the mark has become distinctive of applicant's goods

"through the substantially exclusive and continuous use of

the mark in commerce by the [a]pplicant and related

companies for at least five years before the date of this

statement." 2 An intent-to-use application should not be

approved for publication on the basis of a five years' use

declaration unless an amendment to allege use has been

filed. See TMEP Section 1212.09 (4th ed. 2005).

2 Applicant's contention that the application was approved for publication on the basis of evidence of use and a prior registration is contradicted by a review of the application file. In a January 7, 2003 Office Action, the examining attorney finally refused registration of the mark under Trademark Act Section 2(e)(4), 15 U.S.C. Section 1052(e)(4), finding that applicant's claim of acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C. Section 1052(f), which was based on applicant's expired Registration No. 137464 and evidence of use of the involved SOHMER mark by applicant's predecessors-in- interest, was insufficient. The examining attorney, in a November 20, 2003 Office Action, denied applicant's request for reconsideration of the final refusal of registration, pointing out precisely why applicant could not rely on the prior registration and evidence of use at issue in support of its Section 2(f) claim. Applicant then submitted, on February 5, 2004, the five years' use declaration, which resulted in the application being approved for publication on April 6, 2003. Accordingly, the record indicates that the application was approved for publication under Section 2(f) based solely on the five years' use declaration.

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Opposition No. 91162715

Accordingly, if applicant ultimately prevails in this

proceeding, the involved application will have to be

remanded to the examining attorney for appropriate action.

See Trademark Rule 2.131.

We turn next to the parties' cross-motions for summary

judgment on opposer's fraud claim. 3 After reviewing the

parties' arguments and evidence, we find that there are

genuine issues of material fact which make disposition of

this case by summary judgment inappropriate. See Fed. R.

Civ. P. 56; TBMP Section 528 (2d ed. rev. 2004).

We note

the long-term use of the mark by applicant's predecessors-

in-interest and applicant's activities in connection with

resuming use of the involved mark following acquisition of

the mark. These raise a genuine issue of material fact as

to whether applicant had a good faith belief in the veracity

of the statement in applicant's five years' use declaration

that applicant's mark has become distinctive through

applicant's "substantially exclusive and continuous use of

the mark in commerce by the [a]pplicant and related

3 Applicant's assertion that opposer's cross-motion for summary judgment is untimely is incorrect. Although the Board did not issue an order suspending this proceeding pending disposition of the motions decided herein until May 30, 2006, we treat this case as though it were suspended as of April 28, 2006, the filing date of applicant's motion to exclude and motion for summary judgment. See TBMP Section 510.03(a) (2d ed. rev. 2004). The cross-motion for summary judgment was timely filed in response to applicant's motion for summary judgment. See Trademark Rules 2.119(c) and 2.127(e); TBMP Sections 510.03(a) and 528.03 (2d ed. rev. 2004).

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Opposition No. 91162715

companies for at least five years before the date of this

statement." 4 Cf. Maids to Order of Ohio Inc. v. Maid-to-

Order Inc., 78 USPQ2d 1899 (TTAB 2006) (president of

cancellation respondent had reasonable belief use being made

of mark qualified as use in interstate commerce). In view

thereof, applicant's motion for summary judgment and

opposer's cross-motion for summary judgment are both

denied. 5

We turn next to applicant's motion to exclude as trial

evidence any information that opposer did not disclose

during discovery, as well as documents that opposer

obtained by way of nine subpoenas after the close of the

discovery period, because opposer has neither served

substantive responses to applicant's interrogatories nor

produced documents relating thereto. Such information and

documents are not properly excluded by way of a pretrial

4 However, the five-year period at issue in a five years' use declaration is the five years immediately preceding the date of the declaration, as opposed to any five-year period preceding such date. See TMEP Section 1212.05 (4th ed. 2005).

5 The fact that we have identified only one genuine issue of material fact as a sufficient basis for denying the motion for summary judgment should not be construed as a finding that this is necessarily the only issue which remains for trial. The parties should note that the evidence submitted in connection with their motions for summary judgment is of record only for consideration of those motions. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial period. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB (1983); American Meat Institute v. Horace W. Longacre, Inc., 211 USPQ 712 (TTAB 1981).

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Opposition No. 91162715

motion. 6 Rather, a party seeking to exclude such evidence

must object at trial to the evidence in question on that

basis and preserve any such objection in its brief on the

case. See Fed. R. Civ. P. 37(c)(1); TBMP Section 527.01(e)

(2d ed. rev. 2004). Accordingly, the motion to exclude is

denied as premature.

Notwithstanding the foregoing, the parties are advised

that evidence based on discovery which was taken outside our

standard discovery process, such as the discovery that

opposer took by way of nine subpoenas issued after the close

of the discovery period, will not be accepted at trial.

However, opposer would not be precluded from reissuing the

subpoenas at issue and retaking testimony based on that

evidence during its testimony period.

We turn next to opposer's motion for entry of judgment

as a discovery sanction for applicant's alleged failure to

comply with the Board's March 7, 2006 order compelling

further responses to opposer's interrogatory nos. 5-8, 12-

16, and 24-26 and document request nos. 3, 4, 9, 14, and 20.

Trademark Rule 2.120(g)(1) states, in relevant part, as

follows: "If a party fails to comply with an order of the

Trademark Trial and Appeal Board relating to discovery, …

6 Instead of filing the motion to exclude, applicant should have filed a motion to compel discovery, in regard to the discovery sought from opposer, after having made a good faith effort to resolve its discovery dispute with opposer. See Trademark Rule 2.120(e)(1); TBMP Section 523 (2d ed. rev. 2004).

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Opposition No. 91162715

the Board may make any appropriate order, including any of

the orders provided in Rule 37(b)(2) of the Federal Rules of

Civil Procedure…." The certificates of service attached to

the amended responses to the discovery requests at issue

indicate that those responses were timely served by mail on

April 6, 2006. See Trademark Rule 2.119.

In the amended responses to the document requests at

issue, applicant stated that, subject to objections, it

would produce pertinent documents. See Fed. R. Civ. P.

34(b); TBMP Section 406.04(b) (2d ed. rev. 2004). The

record indicates that applicant subsequently produced such

documents. 7 Accordingly, we find that applicant's amended

responses are in sufficient compliance with the Board's

March 7, 2006 order. 8

7 Opposer contends that applicant's compliance with the March 7, 2006 order was untimely because opposer did not receive the responsive documents at issue until April 24, 2006. While the March 7, 2006 order allowed applicant thirty days to serve amended responses to certain interrogatories and document requests, applicant also should have produced responsive documents within that time frame. However, we decline to enter judgment as a sanction based on late production of documents. Opposer could have filed a motion to extend testimony periods prior to the May 2, 2006 commencement of its testimony period under the trial schedule set forth in the March 7, 2006 order to allow its attorneys more time in which to review those documents. See Fed. R. Civ. P. 6(b); TBMP Section 509 (2d ed. rev. 2004). Opposer also could have sought resolution of such a motion through a telephone conference. See Trademark Rule 2.120(i)(1); TBMP Section 502.06(a) (2d ed. rev. 2004).

8 If responsive documents do not exist, applicant is not obligated to create such documents solely to satisfy opposer's document requests. See Washington v. Garrett, 10 F.3d 1421, 1437-38 (9 th Cir. 1993). Nonetheless, applicant is reminded that it has a duty to make a good faith effort to satisfy opposer's discovery requests. See TBMP Section 408.01 (2d ed. rev. 2004).

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Opposition No. 91162715

With regard to applicant's interrogatories at issue in

the March 7, 2006 order, opposer contends that applicant's

responses to interrogatory nos. 5-7 and 12(e) remain

deficient and that applicant has not responded to

interrogatory nos. 24-26. Interrogatory nos. 5-7 seek

information and the identity of documents regarding the

circumstances of applicant's first use and first use in

commerce of the mark. Applicant's responses that its first

use and first use in commerce of the mark occurred when the

assets of its predecessor-in-interest were conveyed to it by

the bankruptcy court is nonresponsive because acquisition of

a mark does not constitute use or use in commerce. Rather,

use of a mark in commerce on goods occurs when "it is placed

in any manner on the goods or their containers or the

displays associated therewith or on the tags or labels

affixed thereto, or if the nature of the goods makes such

placement impracticable, then on documents associated with

the goods or their sale, and

the goods are sold or

transported in commerce." 9 Trademark Act Section 45, 11

Furthermore, a party which has responded to a discovery request has a duty to supplement or correct that response. See Fed. R. Civ. P. 26(e). The parties are also reminded that, when a party, without substantial justification, fails to disclose information required, or fails to amend or supplement a prior response, as required, that party may be prohibited at trial from using as evidence the information not so disclosed. See Fed. R. Civ. P.

37(c)(1).

9 Use of the mark in connection with promotional, advertising or other activities undertaken prior to the actual sale or transportation of the goods in the ordinary course of business

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Opposition No. 91162715

U.S.C. Section 1127. Applicant is directed to serve amended

responses to interrogatory nos. 5-7 which set forth the

circumstances under which applicant first used and used in

commerce the involved SOHMER mark on pianos and which

identify documents supporting such use and use in commerce.

Interrogatory no. 12(e) and 26 asks applicant to

provide the sales figures in dollar amounts of sales for

goods and services under the involved mark. Applicant's

responses that the total dollar volume of sales of repair

parts and residual inventory and services under the mark is

unknown is evasive and not credible. Applicant is directed

to provide such annual sales figures in dollar amounts

stated in round numbers for the involved goods, i.e.,

pianos, under the involved SOHMER mark for each year since

1996 under the protective order that was imposed on the

parties in an August 10, 2005 order. If applicant fails to

provide such numbers, the Board may draw an adverse

inference and presume that applicant sold no pianos under

the involved SOHMER mark in the years at issue.

does not constitute "use in commerce." Cf. In re Port Authority of New York, 3 USPQ2d 1453 (TTAB 1987); In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983). Contrary to applicant's assertion, minimal sales to maintain rights in a mark, i.e., token use, is no longer recognized as being sufficient to constitute use of a mark in commerce. See Trademark Act Section 45, 15 U.S.C. Section 1127; S. Rep. No. 101-515, 100th Cong., 2d Sess. (1988); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 fn.10 (TTAB 1993).

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Opposition No. 91162715

Interrogatory nos. 24-25 seek information regarding

publications in which applicant has advertised SOHMER pianos

and trade shows at which applicant has promoted SOHMER

pianos. The Board construes applicant's amended responses

thereto as stating that it has not so advertised and

promoted SOHMER pianos. Accordingly, we find that

applicant's amended responses to these interrogatories are

acceptable.

The record herein convinces us that, for the most part,

applicant has deliberately sought to evade and frustrate

opposer's attempts to secure discovery. However, we find

that imposition of a sanction in the form of judgment

against applicant would be an unduly harsh remedy at this

time. If applicant continues to evade its discovery

obligations, however, then such a sanction may yet be found

appropriate.

In view thereof, opposer's motion for sanctions in the

form of judgment is hereby denied. Nonetheless, applicant

is ordered to serve amended responses to interrogatory nos.

5-7, 12(e) and 26 within thirty days of the mailing date set

forth in the caption of this order. Applicant will not be

permitted any extensions of time to so serve.

The burden of complying with this order lies with

applicant. If applicant fails to comply fully with this

order, judgment will be entered against applicant, upon

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Opposition No. 91162715

motion by opposer. See Unicut Corporation v. Unicut, Inc.,

222 USPQ 341 (TTAB 1984).

Proceedings herein are resumed. Testimony periods are

reset as follows.

Plaintiff's 30-day testimony period to close:

8/17/07

Defendant's 30-day testimony period to close:

10/16/07

Plaintiff's 15-day rebuttal testimony period to close:

11/30/07

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.

Briefs shall be filed in accordance with Trademark

Rules 2.128(a) and (b). An oral hearing will be set only

upon request filed as provided by Trademark Rule 2.l29.

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