Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1073064 Filing date: 08/05/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91246647 Party Defendant Tetra Capital Management LLC Correspondence M KEITH BLANKENSHIP Address DA VINCI'S NOTEBOOK LLC 9000 MIKE GARCIA DR NO 52 MANASSAS, VA 20109 UNITED STATES Primary Email: [email protected] 703-581-9562 Submission Motion for Summary Judgment Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule 2.120(a); OR the motion for summary judgment is based on claim or issue pre- clusion, or lack of jurisdiction. The deadline for pretrial disclosures for the first testimony period as originally set or reset: 10/01/2020 Filer's Name M. Keith Blankenship Filer's email [email protected] Signature /M. Keith Blankenship/ Date 08/05/2020 Attachments MSJ_Motion.pdf(100514 bytes ) MSJ_Brief.pdf(3309682 bytes ) MKB Declaration_Combined_Opt.pdf(6004513 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD U.S. TM App. No.: 88/132,655 Mark: HEADLEY GRANGE THE NATIONAL GRANGE OF THE ORDER OF PATRONS OF HUSBANDRY Proceeding No. 91246647 Opposer, v. TETRA CAPITAL MANAGEMENT LLC AppliCant. MOTION FOR SUMMARY JUDGMENT Upon the Complaint, a brief in support of this motion for summary judgment Containing a statement in aCCordance with Rule 56(B) of the Local Rules of this Court, and the deClarations submitted herewith, AppliCant Tetra Capital Management, LLC moves for an order granting AppliCant summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure, on the ground that there is no genuine issue as to any material faCt, and that AppliCant is entitled to judgment as a matter of law. 1 Dated: August 5, 2020 RespeCtfully submitted, By _____________________ M. Keith Blankenship, Esq. Attorney for AppliCant VSB# 70027 Da Vinci’s Notebook, LLC 9000 Mike Garcia No. 52 Manassas, VA 20109 703-581-9562 [email protected] 2 CERTIFICATE OF SERVICE I hereby certify that a true and complete copy of the foregoing document has been served on counsel for Opposer via email. James L. Bikoff Smith, Gambrell & Russell, LLP 1055 Thomas Jefferson Street, NW Suite 400 Washington, DC 20007 This 5th day of August 2020 By : _________________________ M. Keith Blankenship 1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD U.S. TM App. No.: 88/132,655 Mark: HEADLEY GRANGE THE NATIONAL GRANGE OF THE ORDER OF PATRONS OF HUSBANDRY Proceeding No. 91246647 Opposer, v. TETRA CAPITAL MANAGEMENT LLC AppliCant. BRIEF IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT TABLE OF CONTENTS TABLE OF AUTHORITIES…………………………………………………………………….1 STATEMENT OF THE ISSUES PRESENTED………………………………………………...3 INTRODUCTION……………………………………………………………………………….4 BACKGROUND AND UNCONTESTED FACTS……………………………………………..6 ARGUMENT…………………………………………………………………………………….11 I. HEADLEY GRANGE V. THE GRANGE FAMILY OF MARKS…………………………..11 A. The Mark The Grange, IrrespeCtive of Notoriety, is Weak …………………….…...11 B. The Grange Cannot “Bridge the Gap”……………………………………………….14 C. The Grange’s Notoriety Works Against It…………………………………………...15 D. Grange’s Notoriety PreCludes Likelihood of Confusion Concerning “SpeCulation” ServiCes………………………………………………………………….16 E. It is Appropriate to Hold The Grange to Its Representations………………………..18 F. Maybe Two Out of Three Is Bad……………………………………………………..20 II. HEADLEY GRANGE V. HEADLEY GRANGE…………………………………………...20 A. HEADLEY GRANGE is a Conceptually Weak Trademark For Opposer………..…20 B. HEADLEY GRANGE is a Weak Trademark Overall For Opposer………………..21 III. APPLICANT CANNOT BE SHOWN TO HAVE REGISTERED THE TRADEMARK IN BAD FAITH……………………..…………………………………….……22 IV. CONCLUSION………………………………………………………………………………23 2 TABLE OF AUTHORITIES Cases 24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness, 277 F. Supp. 2d 356(S.D.N.Y. 2003)……………………….………………………….……..12 American Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F.2d 3 (5th Cir. 1974)………21 Armstrong Cork Co. v. World Carpets, Inc., 597 F.2d 496 (5th Cir. 1979)………………….21 Arrow Fastener Co., Inc. v. Stanley Works, 59 F.3d 384 (2d Cir. 1995)……………………..12 Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008)…………....21 B.V.D. Licensing Corp. v. Body Action Design, Inc., 846 F.2d 727 (Fed. Cir. 1988)………..14 Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033 (2d Cir. 1992)…………....20 Brown v. Piper, 91 U.S. 37, 42, 23 L. Ed. 200 (1875)………………………..………………11 Castle Oil Corp. v. Castle Energy Corp., 26 U.S.P.Q.2d 1481 (E.D. Pa. 1992)……………..12 E. I. DuPont de Nemours & Co. v. Yoshida Internat'l, Inc., 393 F. Supp. 502, 517-18 (E.D.N.Y.1975)……………………………………………………13 Hair Assoc. v. National Hair Replacement Services, 987 F. Supp. 569 (W.D. MiCh. 1997)….12 Haven Capital Management, Inc. v. Havens Advisors, 965 F. Supp. 528 (S.D.N.Y. 1997)…..12 Holiday Inns, Inc. v. Holiday Out in America, 481 F.2d 445 (5th Cir. 1973)………………….21 In re Jack's Hi-Grade Foods, Inc., 226 U.S.P.Q. (BNA) 1028 (TTAB 1985)…………..……20 In re Loew’s Theatres, Inc., 769 F.2d 764 (Fed. Cir. 1985)……………………………………20 John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 975 (11th Cir. 1983)………….....21 Knights of Ku Klux Klan v. Strayer, 34 F.2d 432 (3d Cir. 1929)……………………………..17 Marshall Field & Co. v. Mrs. Field’s Cookies, 25 U.S.P.Q.2d 1321 (T.T.A.B. 1992)……….13 McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126 (2d Cir. 1979)…..………………….13 1 Oreck Corp. v. U.S. Floor Systems, Inc., 803 F.2d 166……………………………..……….12 Sidco Ind. Inc. v. Wimar Tahoe Corp., 795 F. Supp. 343 (D. Ore. 1992)…………….….…..12 United States v. Merck & Co., 8 Ct. Cust. Appls. 171 (1917)…………………….………….11 United States Jaycees v. Cedar Rapids Jaycees, 794 F.2d 379 (8th Cir. 1986)……………..18 Statutes and Regulations TBMP § 528.01……………………………………………………………………………..….11 TBMP § 528.05(a)(1)…………………………………………………………………………..11 Reference Materials Restatement Third, Unfair Competition § 9(c)(1992)………………………………………13, 20 2 STATEMENT OF ISSUES PRESENTED I. AppliCant’s Headley Grange trademark cannot cause likelihood of confusion with “The Grange Family” of Trademarks. II. AppliCant’s Headley Grange trademark for Financial SpeCulation ServiCes cannot Cause a likelihood of confusion with Opposer’s Headley Grange trademark for cigars. III. AppliCant Cannot Carry its Burden to Prove a laCk of bona fide intent in the AppliCation for its HEADLEY GRANGE TRADEMARK. 3 INTRODUCTION A “grange” is a type of farm – or a farmhouse. The perspeCtive that you adopt depends primarily on your frame of reference, whether historiCal or striCtly modernist grammatiCal. IrrespeCtive of the perspeCtive, “The Grange” is also a well-known organization that lobbies for, and Caters, to rural and agriCultural AmeriCa. Opposer, The National Grange Of The Order Of Patrons Of Husbandry (“The Grange”) adopted a host of marks, all dealing with serviCes provided to rural AmeriCa, and when The Grange explains that they have historiCal signifiCance they are being modest. The Grange is an organization that shaped history, nationally and regionally. The Grange may have shaped history for the better overall, but in the process they speCifiCally they railed against financial speCulation and “jewry” in its various forms. In several well-known instances, The Grange attempted to make Commodity trading a felony. AfriCan-AmeriCans were forbidden membership and Chinese immigration was volubly blasted. In an attempt to ensure that its members understood in no uncertain terms, The Grange issued a Ten Commandments that forbade its members from dealing with Jews, middlemen, and any variety of financial speCulation. AppliCant, Tetra Capital Management, LLC (“Tetra Capital”) is a financial investment serviCes Company that filed an intent-to-use trademark for HEADLEY GRANGE. Headley Grange is a physiCal plaCe in England – an aCtual, historiCal grange. SpeCifiCally, Headley Grange is well- known as the plaCe where the band Led Zeppelin wrote and produced its iConiC, Culture-changing album simply titled “IV.” Headley Grange is a plaCe of inspiration and Creativity. The Grange wanted to adopt HEADLEY GRANGE as its Cigar brand. Tetra Capital is adopting HEADLEY GRANGE for a broad range of financial serviCes. 4 The Grange has been on a legal Crusade to stop all users of “grange” in trademark parlance. Thank God the FARMERS brand of insurance did not have the same inflated aspirations. The Case law does not support the idea that The Grange family of trademarks Can halt all uses of the simply, pre-existing Concept of “grange.” The GRANGE mark is simply too weak. And even though the mark has signifiCant notoriety, that notoriety involves deCrying financial speCulation. Here, their notoriety works against them – and the Case law has poignant thoughts on notorious brands being disingenuous. If Opposer believes that its use of HEADLEY GRANGE for Cigars preCludes AppliCant’s use of HEADLEY GRANGE for financial serviCes, AppliCant hopes that this Board agrees with the Examiner below to find this tenuous conneCtion unpersuasive. 5 BACKGROUND AND UNCONTESTED FACTS Pardon the levity, but if a Court should take judiCial notiCe of any faCt at issue, it is that Led Zeppelin rocks! If not that, then Certainly this Court should take judiCial notiCe that Led Zeppelin is a rock band of widespread, strong appeal to popular Culture. Decl. K Blankenship, par. 2. Ranked as the fourteenth most important musiC aCt of all-time by popular Culture magazine The Rolling Stone, the following praise sums up the band’s signifiCance: “Heavy metal would not exist without Led Zeppelin.” DeCl. K Blankenship, par. 3. Led Zeppelin is not simply transformative, it Could be Credibly argued by the world’s seminal musiC magazine that Led Zeppelin created a genre of music. DeCl. K Blankenship, par.