Bison Designs, LLC v. Lejon of California, Inc.

Filing 74

ORDER 50 Motion to Dismiss is GRANTED in part; 66 Motion for Summary Judgment is GRANTED; 67 Motion for Summary Judgment is GRANTED; 68 Report and Recommendations is ADOPTED. by Chief Judge Marcia S. Krieger on 3/14/16.(pglov)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Chief Judge Marcia S. Krieger
Civil Action No. 14-cv-02885-MSK-NYW
BISON DESIGNS, LLC,
Plaintiff,
v.
LEJON OF CALIFORNIA, INC.,
Defendant.
______________________________________________________________________________
OPINION AND ORDER
______________________________________________________________________________
THIS MATTER comes before the Court pursuant to the Magistrate Judge’s
Recommendation (# 68), that the Plaintiff’s (“BD”) Motion to Dismiss Counterclaims (# 50) be
granted, to which no party has filed Objections; the Defendant’s (“Lejon”) Motion for Summary
Judgment (# 66), BD’s response (# 69), and Lejon’s reply (# 72); and BD’s Motion for Summary
Judgment (# 67), Lejon’s response (# 70), and BD’s reply (# 73).
FACTS
The Court summarizes the pertinent facts here, and elaborates in its analysis1. Since
approximately 1988, BD has manufactured leather belts, which it sells under the brand name
“Bison.” In or about 2003, BD registered the trademark BISON for such use.2 BD uses the term
fancifully – as the Court understands, BD does not allege that its belts are made of actual bison
leather.
1

In conjunction with the motions for summary judgment, the Court construes the evidence
most favorably to the non-movant.
2
Both parties actually registered several marks that are variants of their primary mark.
For purposes of convenience, the Court will refer to both sides’ “mark” in the singular.
1

Lejon also manufactures belts. In or about 2012, it began manufacturing belts from bison
leather. In 2013, it obtained a trademarks in the term “VINTAGE BISON,” used in conjunction
with a drawing of a bison.3
In or about 2014, the parties became aware of the others’ marks, and this litigation
ensued. BD’s Complaint (# 1) asserts two4 substantive claims: (i) trademark infringement, and
(ii) unfair competition, both under the Lanham Act, 15 U.S.C. § 1051 et seq. BD’s Complaint
asserts three additional “claims,” which are more in the nature of requests for certain types of
relief: (i) a request for an accounting, (ii) a request for injunctive relief against Lejon’s further
use of a mark containing the word “bison,” and (iii) imposition of a constructive trust on Lejon’s
profits that have been wrongfully obtained through use of the BISON mark.
Lejon responded by filing an Answer and counterclaims against BD. The operative
pleading, Lejon’s Second Amended Counterclaim (# 45), asserts claims and requests for specific
relief: (i) seeking a declaration that BD’s mark is invalid based on a range of theories including
fraud on the Patent & Trademark Office, that the marks are merely descriptive (and misdescriptive, in that BD does not make the belts out of actual bison hide), and failure of BD to
police its mark, among others; (ii) seeking cancellation of BD’s mark, for essentially the same
reasons; and (iii) a claim for a declaration of non-infringement.
BD moved (# 50) to dismiss Lejon’s first and second counterclaims on various grounds.
The Court referred the matter to the Magistrate Judge, and upon due consideration, the
Magistrate Judge issued a Recommendation (# 68) that BD’s motion be granted in part (with

3

Lejon’s mark is registered on the Supplemental Register and is accompanied by a
disclaimer of any intention to use the term BISON other than as part of the combined mark.
4

A third claim, sounding in trademark counterfeiting, was dismissed by the Court (# 46).
2

regard to Lejon’s counterclaims for invalidity or cancellation based on descriptiveness and misdescriptiveness), and denied in part (with regard to the counterclaims premised on fraud on the
Trademark Office, abandonment for failure to police, and on genericness). More than 14 days
have passed since the issuance of that Recommendation, and neither party has filed Objections
pursuant to Fed. R. Civ. P. 72(b).
Separately, both sides moved for summary judgment. Lejon moves (# 66) for judgment
arguing: (i) BD cannot establish its claim for trademark infringement, insofar as Lejon’s use of
the mark BISON is in a descriptive and generic capacity to identify its belts made of bison
leather; (ii) BD cannot establish its claim for unfair competition for essentially the same reasons;
(iii) BD’s cannot establish its “claims” for various forms of relief because it cannot establish a
trademark violation for the reasons set forth above; and (iv) Lejon is entitled to summary
judgment on its counterclaim for a declaration of non-infringement, for the same reasons.
Separately, BD moves (# 67) for summary judgment on Lejon’s counterclaims for
invalidity and cancellation based on fraud, genericness, misdesignation, or abandonment, for
various reasons.
ANALYSIS
A. Motion to Dismiss
Neither party has filed timely Objections to the Magistrate Judge’s Recommendation that
BD’s motion to dismiss Lejon’s counterclaims be granted in part and denied in part. In the
absence of timely objections, the Court reviews the Recommendation under whatever standard of
review it deems appropriate. Summers v. State of Utah, 927 F.2d 1165, 1167 (10th Cir. 1991).
The Court has reviewed the Recommendation under the otherwise-applicable de novo standard
of Fed. R. Civ. P. 72(b). Upon such de novo review, the Court reaches the same conclusions as

3

the Magistrate Judge and for the same reasons. Accordingly, the Court adopts the
Recommendation, and grants in part and denies in part BD’s motion to dismiss on the terms set
forth in the Recommendation.
B. Summary judgment motions5
1. Standard of review
Rule 56 of the Federal Rules of Civil Procedure facilitates the entry of a judgment only if
no trial is necessary. See White v. York Intern. Corp., 45 F.3d 357, 360 (10th Cir. 1995).
Summary adjudication is authorized when there is no genuine dispute as to any material fact and
a party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). Substantive law governs
what facts are material and what issues must be determined. It also specifies the elements that
must be proved for a given claim or defense, sets the standard of proof and identifies the party
with the burden of proof. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986);
5

Both parties expend significant effort accusing the other side of violating this Court’s
Practice Standards, particularly those governing the formatting of dispositive motions and
responses. The Practice Standards exist to advise parties how to present their arguments in a
format that will allow the Court to assess them most efficiently and effectively. Violation of the
standards does not typically warrant striking of the offending document or denial of the
requested relief – that is, the Standards are not “gotchas” that one party can use against its
opponent to score a technical knockout, rather than succeeding on the merits. The natural
consequence for a party’s violation of the Practice Standards is that the party’s evidence and
arguments are not presented to the Court in the optimal way. The inevitable loss of persuasive
power that results when an argument is presented in a fragmented or unclear way is the primary
sanction that results from a violation of the Practice Standards.
That being said, the Court is obligated to observe that, besides violating the
undersigned’s Practice Standards, both sides are also guilty of violating D.C. Colo. L. Civ. R.
7.1(d), which states that “A motion shall not be included in a response or reply to the original
motion. A motion shall be made in a separate document.” Improperly embedded within BD’s
Motion for Summary Judgment is a distinct “Request for Judicial Notice” and supporting
exhibits (# 66-8); Lejon’s summary judgment response contains both a Request for Judicial
Notice (# 70-15) and a document purporting to be “objections to and a motion to strike” BD’s
proffered evidence (# 70-22); and Lejon’s reply brief contains similar “objections” (# 72-2).
Because these filings request relief beyond that sought by the summary judgment motions
themselves, they are required to be made in a separately-filed motion. The Court has disregarded
such requests as improper.
4

Kaiser-Francis Oil Co. v. Producer=s Gas Co., 870 F.2d 563, 565 (10th Cir. 1989). A factual
dispute is Agenuine@ and summary judgment is precluded if the evidence presented in support of
and opposition to the motion is so contradictory that, if presented at trial, a judgment could enter
for either party. See Anderson, 477 U.S. at 248. When considering a summary judgment
motion, a court views all evidence in the light most favorable to the non-moving party, thereby
favoring the right to a trial. See Garrett v. Hewlett Packard Co., 305 F.3d 1210, 1213 (10th Cir.
2002).
If the movant has the burden of proof on a claim or defense, the movant must establish
every element of its claim or defense by sufficient, competent evidence. See Fed. R. Civ. P.
56(c)(1)(A). Once the moving party has met its burden, to avoid summary judgment the
responding party must present sufficient, competent, contradictory evidence to establish a
genuine factual dispute. See Bacchus Indus., Inc. v. Arvin Indus., Inc., 939 F.2d 887, 891 (10th
Cir. 1991); Perry v. Woodward, 199 F.3d 1126, 1131 (10th Cir. 1999). If there is a genuine
dispute as to a material fact, a trial is required. If there is no genuine dispute as to any material
fact, no trial is required. The court then applies the law to the undisputed facts and enters
judgment.
If the moving party does not have the burden of proof at trial, it must point to an absence
of sufficient evidence to establish the claim or defense that the non-movant is obligated to prove.
If the respondent comes forward with sufficient competent evidence to establish a prima facie
claim or defense, a trial is required. If the respondent fails to produce sufficient competent
evidence to establish its claim or defense, then the movant is entitled to judgment as a matter of
law. See Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986).

5

2. Lejon’s motion
Lejon seeks summary judgment on BD’s trademark infringement and unfair competition
claims, arguing that BD cannot show that Lejon’s use of VINTAGE BISON mark infringes upon
BD’s BISON mark because Lejon uses its own mark descriptively – that is, on products that are
actually made from bison leather.
To establish a claim of trademark infringement, BD has the burden of establishing that:
(i) it has a protectable mark; and (ii) Lejon used an identical or similar mark in circumstances
where confusion among customers is likely. Donchez v. Coors Brewing Co., 392 F.3d 1211,
1215 (10th Cir. 2004). Lejon’s argument that it is entitled to use the term BISON in a descriptive
capacity is essentially an argument that BD’s BISON mark is not entitled to protection in the
circumstances presented here. Marks are entitled to protection according to their degree of
distinctiveness, with fanciful, arbitrary, or suggestive marks receiving greater protection, and
descriptive and generic marks receiving less. Id.
The record is not particularly clear as to precisely how BD uses the BISON mark in
conjunction with its products. The most significant depiction of how BD actually uses the mark
in commerce is buried deeply within an appendix to one of Lejon’s expert’s reports. Docket #
70-11 at 73. That depiction appears to be a screenshot of BD’s website, displaying the various
belts it offers. As best the Court can tell, the BISON mark appears only in BD’s logo at the top
of the page; none of the images of BD’s belts appear to conspicuously display any particular
BISON mark.6 In such circumstances, the Court will assume, for purposes of this motion, that
BD’s use of the mark BISON to describe belts made from cow leather or similar materials is, at
least, suggestive or arbitrary. BD does not use the mark to describe its belts, as it is undisputed
6

The Court’s informal examination of BD’s belts via its website at
www.bisondesigns.com/catalog/leather yields the same conclusion.
6

that none of BD’s belts are actually made from bison leather. As such, BD’s use of the BISON
mark in conjunction with its belts would seem to be somewhat distinctive, and thus, protected.
Lejon argues that a mark that could be distinctive when used in one context can still be
generic – and thus, not entitled to protection – when used in another.7 It points to Genesee
Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 147 (2d Cir. 1997), for the proposition that “[a]
word may be generic of some things and not of others.” There, the plaintiff devised a new type
of beer, brewed with honey, for which it sought a trademark that included the words “honey
brown.” The defendant later began producing its own honey-sweetened beer (of a different type)
under a name that also contained the words “honey brown.” The plaintiff brought claims of
trademark infringement, but the trial court granted summary judgment to the defendant. In
affirming, the Second Circuit explained that “[a] mark that is descriptive, suggestive, arbitrary,
or fanciful when applied to some products may nonetheless be generic when applied to certain
other products, namely those products that require the use of the mark in order to convey their
nature to the consumer.” Id. It conceded that the “honey brown” mark might be distinctive as to
the plaintiff’s product, but the defendant’s use of that phrase was necessarily made in a generic
sense, solely to describe the characteristics of its own beer. Id. at 148.
Similarly, in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 11 (2d Cir.
1976), the court found that the plaintiff might have some protectable interest in its use of the
mark “safari” in conjunction with its clothing, but found that the defendant was nevertheless
entitled to use the term “safari” in a descriptive sense to identify certain articles of its clothing

7

Lejon carefully frames this issue as one of genericness, perhaps to distinguish its
argument from the affirmative defense of “fair use” under 15 U.S.C. § 1115(b)(4). That defense
permits the use of a competitor’s mark in a descriptive sense, but only when that descriptive use
is “other than as a mark.” Here, because Lejon uses VINTAGE BISON as its own mark, it may
not rely on the fair use defense.
7

that were commonly- and generically-used: e.g. “the safari hat” or “safari jacket.” However, the
court also refused to invalidate the plaintiff’s “SAFARI” mark on grounds of genericness,
finding that the plaintiff’s use of that mark was not descriptive in certain circumstances: “The
generic term for A&F's ‘safari cloth Bermuda shorts', for example, is ‘Bermuda shorts', not
‘safari’.” Id. at 13. The court “ regard[ed] these terms as suggestive rather than “merely
descriptive,’” and thus, denied the defendant’s request to cancel the plaintiff’s marks. Id. at 14.
Lejon contends that it uses the VINTAGE BISON mark descriptively, to designate its
products that are made, in part or whole, from leather derived from bison hide. Lejon has put
submitted the affidavit of its principal, John Shirinian, attesting to the proposition that the
VINTAGE BISON mark is used only on products made from bison leather.
BD does not dispute the general proposition that, legally, Lejon can use the generic term
BISON descriptively. (Indeed, BD also relies upon Genesee.) However, BD argues that, as a
factual matter, Lejon uses the VINTAGE BISON mark on belts and other products that are not
made of bison leather. The Court has carefully reviewed the evidence that BD supplies in
support of this contention and finds that it does not stand for the proposition that BD asserts.
First, BD points to Exhibit 7, a document allegedly containing “numerous examples [of]
goods marketed using the VINTAGE BISON . . . trademark[ ] that specifically include products
made from other types of leather.” However, as Lejon points out, most of the examples cited by
BD in Exhibit 7 – a somewhat haphazard collection of photos and scraps of text, many without
any apparent context -- do not appear to use of the VINTAGE BISON mark. Assuming that
Lejon is the manufacturer or seller of each of the products shown in Exhibit 7, the exhibit merely
establishes that Lejon produces belts (or perhaps other products) that are made of non-bison
leather; what the exhibit does not show is that Lejon has branded any of these non-bison leather

8

belts with the VINTAGE BISON mark. Indeed, only the first page of Exhibit 7 makes any
reference to the VINTAGE BISON mark, and that page refers to “wallets from our VINTAGE
BISON USA brand” that are apparently made from “both BISON LEATHER and
CHROMEXEL OIL TAN COW LEATHER.” Thus, although Exhibit 7 might establish that
Lejon uses non-bison leather to make some of its products, it does not establish that Lejon brands
those non-bison products with the VINTAGE BISON mark.
BD also points to Exhibit 9, an e-mail exchange that its principal, Brian Kelleghan, had
with a seller on the online marketplace eBay.com. The seller had apparently offered for sale a
“Lejon Tucson Brown Bison Leather Belt.” Mr. Kelleghan asked the seller “is the belt made of
bison or gator or cowhide or a combination?” The seller responded that “the belt itself is made
of bison leather, and the gator print accent . . . is probably cow hide made to look like gator
print.” Mr. Kelleghan then asked the seller to photograph the back of the belt, and the seller
obliged. The photograph shows the VINTAGE BISON mark, the words “Made in USA,” the
words “Saddle leather,” and some numerals. Along with the photo, the seller stated “I was
informed that this whole belt, even the gator accent, is actually made of Saddle Leather (horse
hide).” Thus, BD relies upon Exhibit 9 for the proposition that the belt in question (and
presumably others) bears the VINTAGE BISON mark but is actually made of “saddle leather”
(which the seller described as horsehide, but which BD contends is cow leather), not bison hide.
Exhibit 9 is problematic for several reasons. Putting aside the utter lack of any evidence
establishing its foundation (such as an affidavit from Mr. Kelleghan himself attesting to the
exchange), it is not admissible to establish the type of leather used in the belt. BD offers it for
such purpose relying on an assertion by the unnamed seller that “the whole belt . . . is actually

9

made of Saddle Leather”8 . But, the seller’s statement in this regard is classic hearsay and thus,
insufficient to demonstrate a genuine issue of fact sufficient to avoid summary judgment. Argo
v. Blue Cross & Blue Shield of Kansas, 452 F.3d 1193, 1199 (10th Cir. 2006). Similarly, to the
extent that BD wishes to rely upon the photo of the belt -- and, more specifically, the phrase
“Saddle Leather” printed upon it – for the proposition that the belt is not made in part or whole
with bison leather, the phrase “Saddle Leather” on the belt is itself hearsay: an assertion of fact
(“this belt is made of Saddle Leather”) that is being offered for its truth.9
Accordingly, the Court finds that BD has not come forward with evidence demonstrating
a genuine issue of fact that would controvert Mr. Shirinian’s assertion that all Lejon products
bearing the VINTAGE BISON mark contain bison leather. As such, the Court finds that BD has
failed to demonstrate a genuine issue of fact as to whether Lejon’s use of the VINTAGE BISON
mark is thus descriptive, making use of the term BISON solely to designate the character of one
of the product’s components.
BD goes on to argue that “Lejon has no legal obligation to include the generic source
material term(s) of any of its products in the name of any product line” and that “[d]oing so in
fact goes contrary to the doctrine behind why trademarks exist and are valuable.” BD’s
argument appears to be that although a competitor may make use of another’s mark in generic,
descriptive terms, it may not incorporate that mark into its own mark, as doing so “elevate[s] the
word ‘bison’ [to] an indicator of source.” BD does not cite any authority for this proposition,

8

The Court skips over the additional problems evidentiary problems hidden within the
seller’s use of the passive voice, “I was informed . . . .”
9

In a reply affidavit, Mr. Shirinian explains the “Saddle Leather” notation by stating that
“the Tucson belt is made partially of buffalo leather.” Lejon has asserted that, colloquially, the
words “buffalo” and BISON refer to the same animal. Although BD states that it does not
concede that point, it does not offer any evidence to refute it.
10

and the Court finds it untenable. In Genesee, the defendant did not merely seek to include the
term “honey brown” on its label in a purely descriptive capacity; it sought to register its own
mark in the words “Red River Valley Honey Brown Ale.” 124 F.3d at 141. Similarly, Lejon is
permitted to use the generic term “bison” to describe the characteristics of its bison leather
goods, and it is similarly entitled to incorporate the word “bison” in a descriptive capacity in the
mark “VINTAGE BISON.”
Accordingly, because BD has failed to come forward with admissible evidence to
establish that Lejon’s use of the VINTAGE BISON mark in these circumstances infringes upon a
protectable aspect of BD’s BISON mark, Lejon is entitled to summary judgment on BD’s claims
for trademark infringement and unfair competition. Moreover, Lejon has established that its use
of the VINTAGE BISON mark is permitted in a descriptive, generic capacity on products that
are made in part or whole of bison leather, and has further come forward with evidence that all of
its VINTAGE BISON products share that characteristic. BD has failed to come forward with
contrary evidence sufficient to warrant a trial, and thus, Lejon is entitled to summary judgment
on its counterclaim seeking a declaration of non-infringement.
3. BD’s motion
BD’s motion seeks summary judgment on Lejon’s counterclaims for trademark invalidity
or trademark cancellation. 15 U.S.C. § 1119 permits courts hearing cases involving registered
marks to “determine the right to registration, [or] order the cancellation of registrations.”
Invalidity and cancellation are distinct but related concepts. Invalidity is a defense that an
alleged infringer may raise, challenging whether the mark at issue was validly obtained. A party
may also affirmatively seek to cancel another party’s registration of a mark. In short, invalidity

11

is a shield; cancellation, a sword. 10 The same basic grounds – fraud, abandonment, etc. – can be
asserted in pursuit of invalidity, cancellation, or both, and the relief sought does not materially
change the analysis to be applied. See e.g. Cent Mfg., Inc. v. Brett, 492 F.3d 876, 883 (7th Cir,
2007) (suggesting that a finding of invalidity of a registered mark will often warrant cancellation
of the mark as well).
The Court will briefly examine each of the grounds upon which Lejon seeks a
determination of invalidity and/or cancellation of BD’s BISON mark.
(i) Fraud on the Trademark Office
Lejon alleges that BD committed fraud on the Patent and Trademark Office (“PTO”), in
that BD’s application to trademark the term BISON failed to disclose BD’s knowledge of
numerous other entities already using the BISON mark in commerce.
A party alleging that a trademark has been procured by fraud must show: (i) that the
registrant made a false representation of a material fact in the application for registration; (ii) that
the registrant knew that the statement was false; (iii) that the registrant intended the PTO to rely
upon the false statement; and (iv) that the PTO did, in fact, reasonably rely on the false
statement. See Stanfield v. Osborne Indus., Inc., 52 F.3d 867, 874 (10th Cir. 1995). The burden
on the party asserting fraud is a heavy one and must be established by clear and convincing
evidence. Beer Nuts, Inc. v. Clover Club Foods Co., 711 F.2d 934, 942 (10th Cir. 1983).
Although BD began making commercial use of the BISON mark in 1987, it did not seek
to register the mark with the PTO until June 2002. At that time, Mr. Kelleghan signed a
declaration in the registration application stating “to the best of his/her knowledge and belief, no
10

Because cancellation is a claim, not merely a defense, the party seeking cancellation must
demonstrate that it has proper standing to do so. See e.g. CFE Racing Products, Inc. v. BMF
Wheels, Inc., 793 F.3d 571, 593 (6th Cir. 2015). The Court will assume, without necessarily
finding, that Lejon would have standing to seek the cancellation of BD’s BISON mark.
12

other person, firm, corporation, or association has the right to use the mark in commerce” in a
way that is likely to cause confusion. Lejon has come forward with evidence that demonstrates
that, as of June 2002, several entities had registered trademarks with the PTO that both contained
the word BISON and involved products in a category known as “Class 25” -- that is, clothing.
For example, in 1999, a baseball team in Buffalo, New York had registered the mark “BISONS”
for use in, among other things, the sale of various articles of clothing (although, notably, the
listing of products does not include belts). Similarly, in 1998, Lipscomb University in Tennessee
registered the mark “BISON ATHLETICS” for use in, among other things, the sale of clothing
(again, not listing belts as an anticipated product).
It is undisputed that Mr. Kelleghan did not disclose these other instances of marks
containing the word BISON in his 2002 trademark application, but the Court notes that Lejon has
not come forward with evidence that demonstrates Mr. Kelleghan’s actual knowledge of these
other marks as of June 2002. Instead, Lejon argues that Mr. Kelleghan should be held to
constructive knowledge of these marks, by virtue of their existing registration as of 2002, and
that such constructive knowledge renders BD’s application fraudulent. The Court finds that a
showing of constructive knowledge that a registrant should have had at the time of a trademark
application is not sufficient to show fraud.
Lejon relies primarily on dicta found in Rosso and Mastracco, Inc. v. Giant Food, Inc.,
720 F.2d 1263, 1266 (Fed. Cir. 1983). There, the plaintiff (“RM”) sought to cancel the
defendant’s (“Giant”) mark, arguing that Giant had defrauded the PTO in applying for the mark.
RM’s evidence was that Giant had, at some point in time, entered into a settlement agreement
with a user of a similar mark, by which the parties agreed to certain geographic limits on the use
of their marks. Id. RM argued that the settlement agreement demonstrated Giant’s knowledge of

13

another user of the mark, and that Giant’s failure to disclose that other use of the mark in its
trademark application constituted fraud on the PTO. The Federal Circuit disagreed. It noted
existing precedent that established that the Lanham Act “does not . . .obligate one seeking federal
registration of a mark to investigate and report all other possible users of an identical or
confusingly similar mark.” Id., quoting Money Store v. Harriscorp Finance, Inc., 689 F.2d 666,
671 (7th Cir. 1982). The Federal Circuit went on to note that “in some instances, a senior user
would be making a false oath where he fails to acknowledge conflicting rights of a junior user
which are clearly established, for example, by a court decree, by the terms of a settlement
agreement, or by a registration.” Id.
Lejon seizes on the final word of the quoted phrase, interpreting it to essentially require
applicants to disclose any competing uses of a mark that could be discovered through a search of
existing registrations. Not only is such a construction inconsistent with the Federal Circuit’s
previous statement that the Lanham Act “does not obligate” applicants to conduct such an
investigation, it is dicta insofar as the court did not proceed to cancel Giant’s trademark based on
an existing registration that Giant failed to disclose. Rather, the Federal Circuit found that even
an express settlement agreement between Giant and the other user of the mark did not require
Giant to disclose that other user in its trademark application because the settlement agreement
did not amount to an admission by Giant that “use of the respective marks would be likely to
cause confusion.” Id. at 1266. Because there was a colorable argument to be made that Giant
did not subjectively believe that there could be confusion over the use of the two marks, the
Federal Circuit found that the settlement agreement did not establish that Giant’s declaration in
its trademark application was “knowingly false.” Id.

14

Longstanding precedent makes clear that a trademark applicant’s constructive
knowledge, via registration, of a competing use of the mark is not a sufficient basis, of itself, to
support a finding of fraud. See e.g. Oreck Corp. v. Thompson Consumer Electronics, Inc., 796
F.Supp. 11152, 1160 (S.D.In. 1992) (“can constructive knowledge by a corporation, where there
is no actual knowledge by the individual registrant, of a license or a prior use/registration of a
mark satisfy the first element of a fraudulent obtainment claim? The short answer is no, it
cannot”); In re Bose Corp., 580 F.3d 1240, 1244 (Fed. Cir. 2009) (“despite the long line of
precedents from the Board itself, from this court, and from other circuit courts, the Board went
on to hold that [a] trademark applicant commits fraud in procuring a registration when it makes
material representations of fact in its declaration which it knows or should know to be false or
misleading . . . By equating “should have known” of the falsity with a subjective intent, the
Board erroneously lowered the fraud standard to a simple negligence standard“). Lejon relies
entirely on BD’s constructive knowledge of other registrants using marks containing the word
BISON as of 2002; it does not offer any evidence demonstrating Mr. Kelleghan’s actual notice of
such users as of that date, much less show that Mr. Kelleghan subjective believed in a likelihood
of customer confusion between his proposed BISON marks and the other registered marks.11 As

11

Lejon points to an interrogatory response by BD about a situation that occurred “in or
about 2002,” in which “BD disputed the use of a brand marketed as ‘Bison Sportlights’” by an
entity of that name. BD indicated that during the time it was “evaluating whether to pursue [an
action against] the operator of the Bison Sportlights brand,” the entity ceased operations.
Beyond pointing to the interrogatory response, Lejon has not produced any other evidence
elaborating on these facts.
This is insufficient evidence of fraud on the PTO for several reasons. First, the time
frames involved are unclear. Without evidence (particularly evidence that could rise to the
“clear and convincing” quantum) that clarifies the time frame, the Court cannot say that Lejon
can show that BD’s knowledge of Bison Sportlight preceded its declaration in support of its
trademark application. Second, even assuming that BD was aware of Bison Sportlight prior to
its June 2002 trademark application, it is unclear from this evidence whether the dissolution of
Bison Sportlight also occurred prior to that date. The Court cannot say that BD had an obligation
15

such, the Court finds that Lejon has failed to come forward with evidence sufficient to
demonstrate a genuine issue of fact as to Mr. Kelleghan’s specific intent to deceive the PTO.
BD is therefore entitled to summary judgment on Lejon’s counterclaims for invalidity or
cancellation based on fraud on the PTO.
(ii) Remaining issues
The Court summarily rejects Lejon’s remaining grounds for its invalidity and
cancellation counterclaims. Lejon contend that BD’s BISON mark is “generic” and thus, subject
to invalidity or cancellation pursuant to 15 U.S.C. § 1064(3). As the 10th Circuit explained in
Sally Beauty Company, Inc. v. Beautyco, Inc., 304 F.3d 964, 976 (10th Cir. 2002), a generic mark
is one which “refers to a general class of goods . . . of which an individual article is but a
member.” Lejon’s argument might have some traction if the belts BD sold under the BISON
mark were actually made of bison leather. In such circumstances, the belts would be “but a
member” of the “general class of goods” that are bison leather products, such that use of the
BISON mark could be said to be generic. But it is undisputed that BD’s belts are not made of
bison leather. Thus, BD’s use of the BISON mark on its non-bison leather belts is necessarily

to disclose a historical use of a competing mark if BD believed that the entity engaging in that
competing use was now defunct. Third, and perhaps most importantly, the record does not
disclose facts sufficient to demonstrate that BD actually believed that Bison Sportlight’s use of
the mark was one that would be likely to result in customer confusion. Indeed, the record
reflects that BD was cogitating on that point at the time Bison Sportlight became defunct. As
the Rosso and Mastracco case makes clear, it is not enough to show merely that two entities are
making use of similar marks; rather, it is essential to show that the two marks were so similar
that customer confusion between them was likely (and to show that the applicant recognized that
likelihood of confusion). Because Lejon cannot show the degree of similarity between BD’s
mark and Bison Sportlight’s, much less show BD’s subjective belief that customer confusion
between the marks was likely, this evidence fails to advance Lejon’s counterclaims of fraud.
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suggestive or fanciful, not descriptive, and certainly not generic.12 Accordingly, Lejon’s
challenge to BD’s mark as generic is without merit.
Lejon also asserts that BD’s mark is subject to invalidity or cancellation on the grounds
that it misrepresents the source of the goods sold under the mark. 15 U.S.C. § 1064 provides that
a mark can be cancelled if it is “used by . . . the registrants so as to misrepresent the source of the
goods or services.” Lejon argues that BD’s use of the BISON mark on belts that are not made of
bison leather misrepresents the source of those goods. Lejon points to nothing in the record that
suggests, in the context in which BD presents its goods and makes use of the BISON mark, that
BD is suggesting to customers that its products are made of bison leather. Lejon relies solely
upon a single ambiguous and incongruous statement in a report by its expert. That report
explains that the expert was retained “to determine the extent to which, if at all, there is a
likelihood of confusion between belts sold under VINTAGE BISON and BISON.” Lejon points
to the final sentence of the expert’s report, which states “The tendency [of survey participants] to
make a connection between the Vintage Bison belts and Bison Designs was not meaningfully
different than use of ‘bison’ in informing an observer about the source of the leather that makes
up the belt would cause.” Lejon interprets this statement to suggest that the expert is opining that
BD’s use of the BISON mark confuses customers as to whether BD’s belts are actually made of
bison leather. Having reviewed the entirety of the expert’s report, the Court finds such a
contention entirely specious. At no point did Lejon’s expert purport to survey participants about
their beliefs as to what material BD’s belts were made of. Because Lejon offers no evidence

12

Lejon complains that “Any other result [except cancellation] would deprive Lejon and
countless other bison leather goods merchants of the right to refer to and/or identify their
products by name.” This argument is somewhat disingenuous in light of Lejon’s prior argument,
accepted by this Court above, that BD’s mark does not prevent Lejon from making descriptive
use of the word BISON to identify its products made from bison leather.
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whatsoever in support of its counterclaims on a theory of misrepresentation of source, BD is
entitled to summary judgment on those counterclaims.
Finally, Lejon argues that BD’s mark is subject to cancellation as abandoned, because
BD has not taken reasonable efforts to prevent others from using the mark. A mark is abandoned
when, due to the acts or omissions of the owner, it has “lost its significance as a mark.” 15
U.S.C. § 1127. This can occur where unpoliced third-party use of the mark operates to convert
the mark into a generic name for the goods or services, or where such use otherwise results in the
mark no longer functioning as indicating the origin of the products. Exxon Corp. v. Oxxford
Clothes, Inc., 109 F.3d 1070, 1079 (5th Cir. 1997). The mere fact that a mark’s owner’s fails to
pursue potential infringers is not enough, of itself, to establish that the mark has lost its
significance. Id. Rather, the party asserting abandonment must show that the mark has actually
lost its ability to identify its owner’s goods. Id.
Lejon’s abandonment arguments all focus solely on the fact that BD allegedly failed to
challenge the use of the word BISON by third parties; Lejon has not offered any evidence that
suggests that the effect of such third-party use has been to so dilute the BISON mark as to
prevent it from operating to identify BD’s particular goods. Indeed, the practical portion of
Lejon’s argument focuses almost entirely on the fact that manufacturers of bison leather make
rampant use of the term BISON in a descriptive sense to identify their own goods. This is, yet
again, a variation on the same theme: BD enjoys the ability to use its BISON mark in suggestive
or fanciful ways to identify itself as the maker of non-bison leather belts. The fact that
manufacturers of belts actually made from bison leather are entitled to use the term BISON in a
descriptive and generic sense has no bearing or consequence on BD’s exclusive right to make
non-descriptive use of the mark.

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Accordingly, the Court grants BD’s motion for summary judgment in its entirety, and BD
is entitled to judgment on Lejon’s counterclaims for invalidity and cancellation.
CONCLUSION
For the foregoing reasons, the Court ADOPTS the Magistrate Judge’s Recommendation
(# 68) and GRANTS IN PART BD’s Motion to Dismiss Counterclaims (# 50). The Court
GRANTS Lejon’s Motion for Summary Judgment (# 66), and the Clerk of the Court shall enter
judgment in favor of Lejon on BD’s claims and in favor of Lejon on its counterclaim for a
declaration of non-infringement, with costs pursuant to Fed. R. Civ. P. 54(d)(1). The Court
GRANTS BD’s Motion for Summary Judgment (# 67), and the Clerk of the Court shall enter
judgment in favor of BD on Lejon’s counterclaims for invalidity and cancellation, with costs
pursuant to Rule 54(d)(1). There being no claims or counterclaims that remain, the Clerk of the
Court shall close this case.
Dated this 14th day of March, 2016.
BY THE COURT:

Marcia S. Krieger
Chief United States District Judge

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