ESTTA Tracking number: ESTTA1123855 03/30/2021

Trademark Trial and Appeal Board Electronic Filing System.

ESTTA Tracking number: ESTTA1123855

Filing date:

03/30/2021

Proceeding Party

Correspondence Address

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

91254096

Defendant Swanson Tool Co., Inc.

MICHAEL K JOHNSON NORVELL IP LLC PO BOX 2461 CHICAGO, IL 60690 UNITED STATES Primary Email: officeactions@ Secondary Email(s): mjohnson@, ecruz@, jnorvell@ 888-315-0732

Submission Filer's Name Filer's email

Signature Date Attachments

Reply in Support of Motion Michael K. Johnson officeactions@, jnorvell@, mjohnson@, jnicholas@ /Michael K. Johnson/ 03/30/2021 210330 Swanson Cross MSJ Reply Brief File Copy.pdf(3805139 bytes )

Ref. No. 9727-1325

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In re Application Ser. No. 88/462,425 Filed: June 6, 2019 Mark: SPEEDGRIP Published in the Official Gazette (Trademarks) on: August 20, 2019

SCG ACQUISITIONS COMPANY LLC,

Opposer,

v.

Opposition No. 91254096

SWANSON TOOL CO., INC.,

Applicant.

APPLICANT SWANSON TOOL CO., INC.'S REPLY IN FURTHER SUPPORT OF ITS CROSS-MOTION FOR SUMMARY JUDGMENT AND LEAVE TO AMEND ANSWER

Based on recent filings and documents just produced by Opposer, it is now clear that Opposer SCG owns no valid trademark rights to the SPEEDGRIP trademark. Specifically, SCG produced for the first time both an Asset Purchase Agreement and a subsequent Confirmatory Assignment that each failed to transmit any active or valid trademark rights from any predecessor in interest to SCG. As a result, SCG's Opposition fails, as a matter of law, and the Board should enter judgment in Swanson's favor. Regardless, the record is clear that there is no likelihood of confusion based on the sole fact that SCG's claimed custom machinery components are so dissimilar from Swanson's identified and applied-for "pliers," which are sold in hardware stores alongside of Swanson's family of SPEED hand tools and nearly 100-year old SPEED marks. Moreover, there have been no instances of actual confusion despite Swanson's ongoing use since at least June 2019. Finally, to the extent that the Board denies Swanson's

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Ref. No. 9727-1325

Cross-Motion and resumes the proceedings, Swanson concurrently requests the Board to permit Swanson to amend its Answer for good cause, pursuant to FRCP 15(a). I. ARGUMENT

A. SCG's Just-Produced Asset Purchase Agreement and Confirmatory Assignment Confirms that SCG Owns No Valid Rights to SPEEDGRIP.

In light of SCG's documents first produced with its Combined Response and Reply, the record now shows that SCG does not own any valid rights to its claimed SPEEDGRIP mark, and that any rights associated with the mark are abandoned.

1. The Asset Purchase Agreement Did Not Transfer Any Rights to SPEEDGRIP.

SCG just produced an Asset Purchase Agreement from 2015 ("APA") that sets "forth a true, correct and complete list and description of all of Sellers' Intellectual Property." Dkt. 21, Ex. G-1 at 18 (emphasis added). This APA that allegedly transferred rights to the SPEEDGRIP mark to SCG makes no mention of the SPEEDGRIP trademark, and the attached Intellectual Property List at Schedule 4.12A to the APA includes no references to the SPEEDGRIP trademark. Dkt. 21, Ex. G-1. The fact that the controlling APA states that the Intellectual Property Schedule lists "all" of the seller's intellectual property, and because this Schedule makes no reference to the SPEEDGRIP mark, the seller in the APA clearly did not own or transfer any rights to SPEEDGRIP to SCG at the time of the sale in 2015. This is consistent with the fact that the seller properly allowed its two U.S. trademark registrations for SPEEDGRIP (Reg. Nos. 1,141,069; 539,730) to be cancelled. Therefore, this Asset Purchase Agreement has no bearing on this dispute, and fails to support that Opposer acquired any rights in the SPEEDGRIP trademark from any predecessor in interest in 2015.

2. The Confirmatory Assignment Further Confirms That the SPEEDGRIP 2

Ref. No. 9727-1325

Mark Was Abandoned and the Assignment is Void. In an effort to resolve this chain of title defect following the execution of the APA, SCG concurrently produced for the first time a "Confirmatory Assignment" with its Combined Response and Reply that was executed on July 13, 2020. Dkt. 21, Ex. G-2. This Confirmatory Assignment also fails to function as a valid assignment because: (1) it assigned common law trademark rights to SPEEDGRIP that are jointly owned by two owners, and a trademark is abandoned and fails to function as a single-source identifier when it is simultaneously owned by two separate entities; and (2) the assignment does not assign the good will associated with the SPEEDGRIP mark, and, therefore the assignment is void ab initio and the SPEEDGRIP trademark was abandoned on this basis as well. Specifically, the Confirmatory Assignment defines the Assignors as two separate entities: (a) Cetol, LLC; and (b) Cetol Leasing, LLC. These two entities are listed as the joint owners and collective Assignors of the claimed prior common law rights to the SPEEDGRIP trademark. Id. Joint ownership of a trademark is at direct odds to anticonfusion, single-source identifying purpose of trademark law, and courts routinely find that two related parties cannot claim to concurrently own the same trademark, and that the mark at issue is abandoned in circumstances such as these. See Durago Herald, Inc. v. Riddle, 719 F. Supp. 941 (D. Colo. 1988) (enjoining both joint venture parties from using trademark after dissolution based on absence of agreement as to individual ownership of trademark). Indeed, as Professor McCarthy properly notes: Multiple ownership of legally recognized rights in a single mark appears to be directly contrary to the basic definition of a mark as identifying and distinguishing a single seller's goods or services. See J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition, ? 16.40. For

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Ref. No. 9727-1325

this reason alone, the Assignors to the Confirmatory Assignment owned no exclusive rights to SPEEDGRIP that they could possibly assign to Opposer SCG.

In addition, the Confirmatory Assignment did not assign the required good will in the SPEEDGRIP trademark to SCG, and therefore this agreement is an assignment of the trademark rights in gross, which also results in the abandonment of the SPEEDGRIP trademark. See Liquid Glass Enterprises, Inc. v. Liquid Glass Industries, Ltd., (registration cancelled for abandonment resulting from an assignment in gross). If anything, the Assignors have always had, and still retain the good will associated with the SPEEDGRIP mark to the extent that separate legal entities could share a trademark. Because the Assignors were actively assigning the rights to SPEEDGRIP as recently as July 2020, the Assignors and Opposer SCG may be simultaneously using the SPEEDGRIP mark, which also results in the abandonment of trademark rights. In fact, there is public evidence on showing that Cetol Leasing, LLC is still actively using the SPEEDGRIP trademark or at least Bloomberg is confused as to source. See Johnson Decl. ? 4, Ex. 1M. For these reasons, the Confirmatory Assignment also failed to document any valid transfer of SPEEDGRIP to SCG, and the record now shows that SCG cannot claim any active rights to SPEEDGRIP.

Moreover, the Schedule to SCG's recently-executed Confirmatory Assignment claims to assign two cancelled U.S. trademark registrations for SPEEDGRIP (Reg. Nos. 1,141,069; 539,730). These two registrations expired in 2001 and 2002--long before the Confirmatory Assignment was executed--and no valid assignments for these registrations were previously recorded with the USPTO. Further, the TBMP makes clear that expired or cancelled registrations are given no weight in Board proceedings. See TBMP ? 704.03(b)(1) (a cancelled registration "is not evidence of anything except that the

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