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From the Gecko - Applicant MSJ Final With Exhibits

From the Gecko - Applicant MSJ Final With Exhibits

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Published by Erik Pelton

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Published by: Erik Pelton on Jan 18, 2009
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08/01/2013

 
IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
GECKO TRADING COMPANY, INC.Opposer,v.BARKING PENGUINS, LLCApplicant.Opposition No. 91179089Application Serial No. 78818325Mark: FROM THE GECKO
 
APPLICANT’S MOTION FOR SUMMARY JUDGMENT ON OPPOSER’S CLAIMS OFDILUTION AND LIKELIHOOD OF CONFUSION
Pursuant to Fed. R. Civ. P. 56 and TBMP § 528, and for the reasons set forth in theattached Memorandum, applicant Barking Penguins, LLC hereby moves for summary judgmenton each of opposer Gecko Trading Company Inc.’s claims in the Notice of Opposition toApplication Serial No. 78818325 on the grounds that no reasonable trier of fact could find thatApplicant’s mark is likely to dilute Opposer’s mark, and on the grounds that no reasonable trierof fact could find that Applicant’s mark is likely to cause confusion as to the source of Applicant’s and Opposer’s respective goods.Dated the
1st 
of 
July
,
2008
.Respectfully Submitted,BARKING PENGUINS, LLCBy:__________________________Erik M. PeltonChristopher R. ShiplettE
RIK
M.
 
P
ELTON
&
 
A
SSOCIATES
,
 
PLLCPO Box 100637Arlington, VA 22210(p) 703-525-8009(f) 703-525-8089
 Attorneys for Applicant 
 
IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
GECKO TRADING COMPANY, INC.Opposer,v.BARKING PENGUINS, LLCApplicant.Opposition No. 91179089Application Serial No. 78818325Mark: FROM THE GECKO
 
APPLICANT’S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARYJUDGMENT ON OPPOSER’S CLAIMS OF DILUTION AND LIKELIHOOD OFCONFUSIONI. INTRODUCTION
Barking Penguins, LLC (“Applicant”), a Florida company, develops children’s boardgames.
See Declaration of Cynthia Jones-Whitcher 
attached as “
 Exhibit A
.” One of those boardgames, titled “FROM THE GECKO,” is an instructional puzzle game that teaches children tocount in English, Spanish, Italian, and Chinese by putting together puzzle pieces containingnumbers in all four languages.
 Id 
. Applicant promotes its FROM THE GECKO game as“especially designed for kids to have a blast while learning, laughing, and making decisions.”
See FROM THE GECKO Product Packing Images
attached as
“Exhibit N.”
In September 2006,Applicant filed an application for a federal registration of the FROM THE GECKO trademark for “board games and puzzles.”
 Application Serial No. 78818325
.Gecko Trading Company (“Opposer”), a Hawaii corporation, sells primarily clothing andbeach accessories under a “surf lifestyle” brand.
See Opposer’s Response to Request for Production
attached as “
 Exhibit B
” at
TBR 310-14, 318-24
. Opposer markets its GECKO brandsas “big surf” brands that “communicate performance, fitness, dependability, and value.”
 Id 
. In
 
Opposition
 
91179089:
 
 Applicant’s
 
Motion
 
 for 
 
Summary 
 
 Judgment 
 
and 
 
Memorandum
 
 p.
 
2
 
furtherance of its business strategy, Opposer has registered or been assigned the FederalTrademarks for the terms GECKO, MAUI GECKO, and GECKO HAWAII for clothing itemsand other related goods.
First Amended Notice of Opposition
, ¶¶ 5-19.In August 2007, Opposer filed a Notice of Opposition claiming that Opposer’s marks arefamous, Applicant’s mark dilutes the fame of those marks, and Applicant’s mark is likely tocause confusion with Opposer’s common law rights and registered marks.
 Id.
at ¶¶ 23-25.Applicant now files this Motion for Summary Judgment on both of Opposer’s claims.Summary judgment should be granted where the movant has shown there is no genuineissue of material fact and that it is entitled to judgment as a matter of law. Fed. R. Civ. P. 56 (c);
Sweats Fashions, Inc. v. Pannill Knitting Co.
, 4 USPQ2d 1793, 1797 (Fed. Cir.1987). It is themovant’s burden to demonstrate no issue of material fact and entitlement to judgment.
CelotexCorp. v. Catrett 
, 477 U.S. 317, 324 (1986). The movant can meet that burden either byproducing affirmative evidence supporting its case or by demonstrating an absence of evidencesupporting the non-movant’s case.
 Id 
;
 Anderson v. Liberty Lobby, Inc.
, 477 U.S. 242 (1986);
Copelands’ Enterprises Inc. v. CNV Inc.
, 20 USPQ2d 1295, 1298 (Fed. Cir. 1991).Opposer makes two claims in support of its allegation that registration of Applicant’smark would cause it damage: 1) Registration would dilute the distinctive quality of Opposer’sGECKO marks;
First Amended Notice of Opposition
, ¶¶ 25; and 2) Registration would be likelyto cause confusion with Opposer’s GECKO marks.
 Id 
. at ¶¶ 23. However, as described below,Opposer has not provided evidence supporting its claims and, regardless of the evidence, cannotprevail on those claims. Opposer’s own evidence demonstrates that its marks are not famous.Opposer’s own evidence demonstrates that, even assuming its marks were famous, registration of Applicant’s mark is not likely to dilute Opposer’s marks. Opposer’s own evidence shows that

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