ESTTA906240 06/28/2018 in the UNITED STATES PATENT and TRADEMARK OFFICE BEFORE the TRADEMARK TRIAL and APPEAL BOARD Proceeding 9

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA906240 Filing date: 06/28/2018 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92057217 Party Plaintiff Bruce Kirby, Inc. Correspondence WESLEY W WHITMYER JR Address WHITMYER IP GROUP LLC 600 SUMMER STREET STAMFORD, CT 06901 UNITED STATES Email: [email protected], [email protected] Submission Brief on Merits for Plaintiff Filer's Name Wesley W. Whitmyer, Jr. Filer's email [email protected], [email protected], [email protected] Signature /Wesley W. Whitmyer, Jr./ Date 06/28/2018 Attachments BKI Opening Brief - REDACTED FINAL.pdf(3024832 bytes )

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

In the matter of Trademark Registration No. 3,459,524 for the mark LASER Registered on July 1, 2008

Bruce Kirby, Inc., : : Petitioner, : : Cancellation No. v. : 92057217 : Velum Limited, : : Registrant. :

TRIAL BRIEF OF PETITIONER BRUCE KIRBY, INC.

Table of Contents

I. INTRODUCTION ...... 1 II. DESCRIPTION OF THE RECORD ...... 2 A. BKI’s Evidence of Record ...... 2 B. Velum’s Evidence of Record ...... 3 III. STATEMENT OF THE ISSUE ...... 3 IV. RELEVANT FACTUAL BACKGROUND ...... 3 A. The Parties and Registration at Issue ...... 3 B. Velum’s Sole Witness, William Crane, and “the LaserPerformance Companies” ...... 4 C. Velum’s Allegations of Use of the Laser Service Mark ...... 5 V. ARGUMENT ...... 7 A. BKI has Standing to Cancel Velum’s Trademarks ...... 9 B. The Board Should Cancel the Laser Service Mark Registration Because Velum Abandoned the Mark ...... 11 1. Velum Did Not License the Laser Service Mark to ILCA ...... 12 2. Velum Has Never Licensed the Laser Service Mark to the LaserPerformance Companies ...... 18 3. Velum Has Never Licensed the Laser Service Mark to ISSA or ISCA ...... 19 C. The Board Should Cancel the Laser Service Mark Because the LaserPerformance Companies, ISCA, and ISSA Have Never Used the Mark ...... 19 1. The LaserPerformance Companies Have Never Used the Laser Service Mark ...... 20 2. Velum is Not Related to the LaserPerformance Companies ...... 23 3. ISSA and ISCA Have Never Used the Laser Service Mark ...... 25 D. The Board Should Cancel the Laser Service Mark Because Velum Never Intended to Use the Mark ...... 26 E. The Board Should Cancel the Laser Service Mark Because Velum Has Never Controlled the Use of the Mark ...... 27 F. The Board Should Cancel the Laser Service Mark Because Velum Committed Fraud on the US Patent and Trademark Office in Registering the Mark ...... 30 VI. CONCLUSION AND SUMMARY ...... 31

TABLE OF AUTHORITIES

Cases

Barcamerica Intern. USA Trust v. Tyfield Importers, Inc., 289 F.3d 589, 62 U.S.P.Q.2d 1673, 52 Fed. R. Serv. 3d 415 (9th Cir. 2002) ...... 27

Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, 88 USPQ2d 1581, 2008 WL 4149008 (TTAB Sept. 9, 2008) ...... 26

Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042 (Fed. Cir. 2015) ...... 8

Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000) ...... 7

Ennis, Inc. v. Joel L. Beling d/b/a Supa Characters Pty Ltd, Opposition No. 91203884, 2017 WL 412412 (TTAB Jan. 12, 2017) ...... 7, 9, 11

Esrt Empire State Bldg., L.L.C. (Substituted for Empire State Bldg. Co. L.L.C.) v. Michael Liang, Opposition No. 91204122, 2016 WL 3771775 (TTAB June 17, 2016) ...... 9-10

Great Seats, Inc. v. Great Seats, Ltd, 100 U.S.P.Q.2d 1323 (TTAB 2011) ...... 37, 38

Hurricane Fence Co. v. A-1 Hurricane Fence Co., 468 F. Supp. 975, 208 USPQ 314 (S.D. Ala. 1979) ...... 27

In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009) ...... 30

In-Flight Phone Corp. v. J. Anselmo, Inc., Cancellation No. 92024090, 1998 WL 80134 (TTAB Feb. 26, 1998) ...... 21, 25

Jeanette K. Daniels v. TGN Services, LLC, Opposition No. 91204462, 2016 WL 6648972 (TTAB Oct. 11, 2016) ...... 9

Jonathan L. Fox v. JMIR Publications Inc., Cancellation No. 92056565, 2015 WL 2412171 (TTAB Apr. 29, 2015) ...... 7

Linkedin Corp. v. Int’l Council for Educ. Reform and Dev. (ICERD), Opposition No. 91225285, 2018 WL 529851 (TTAB Jan. 19, 2018) ...... 8, 26, 27

M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368 (Fed. Cir. 2015)...... 26

Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 U.S.P.Q.2d 1413, 2016 WL 3357265 (TTAB Apr. 4, 2016) ...... 24, 25

Nougat London Ltd. v. Carole Garber, Cancellation No. 92040460, 2003 WL 21206253 (TTAB May 14, 2003) ...... 30, 31

Panda Travel, Inc. v. Resort Option Enterprises, Inc., 94 U.S.P.Q.2d 1789 (TTAB 2009) ...... 36, 37

Quality Candy Shoppes/Buddy Squirrel of Wisconsin, Inc. v. Grande Foods, 90 U.S.P.Q.2d 1389 (TTAB 2007) ...... 37

Robinson Co. v. Plastics Research & Development Corp., 264 F. Supp. 852, 153 U.S.P.Q. 220 (W.D. Ark. 1967) ...... 15

ShutEmDown Sports Inc. v. Lacy, 102 U.S.P.Q.2d 1036 (TTAB Feb. 22, 2012) ...... 8, 11, 19, 30

Spier Wines (PTY) Ltd. v. Ofer Z. Shepher, 105 U.S.P.Q.2d 1239 (TTAB 2012) ...... 36

Spirits Int'l, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 U.S.P.Q.2d 1545, 2011 WL 2909909 (TTAB July 6, 2011) ...... 8, 26

Warner Bros. Entm’t Inc. v. Akke Wagenaar, Opposition No. 91186293, 2012 WL 6654126 (TTAB 2012)...... 37

Statutes 15 U.S.C. § 1051 ...... 11 15 U.S.C. § 1064 ...... 7, 8 15 U.S.C. § 1127 ...... 8, 23 37 C.F.R. § 2.116 ...... 10, 37 37 C.F.R. § 2.122 ...... 2 37 C.F.R. § 2.88 ...... 11

Rules Fed. R. Civ. P. 37 ...... 6, 18, 34, 37 Fed. R. Civ. P. 8 ...... 10 TBMP § 309.03 ...... 26 TBMP § 408.01 ...... 36

iii

TBMP § 527.01 ...... 6, 18, 34, 36 TMEP § 1201.03 ...... 27

Other Authorities 3 McCarthy on Trademarks and Unfair Competition § 18 (5th ed.) ...... 15, 27

I. INTRODUCTION

The Board should cancel U.S. Trademark Registration 3459524 (“the Laser Service

Mark” or “the Mark”), owned by Velum Limited (“Velum” or “Registrant”), for any one of five independent reasons. First, the Board should cancel the Laser Service Mark because Velum has never used the mark in commerce. It is undisputed that Velum itself has never used the Mark.

Neither has Velum used the Mark through a related company or licensee. Velum therefore abandoned the Laser Service Mark.

Second, the Board should cancel the Laser Service Mark because Velum never even intended to use the Laser Service Mark when it applied for registration. Velum’s complete lack of a bona fide intention to use the Laser Service Mark application renders its application void.

Third, even if Velum’s unsupported allegations of licenses and legal relationships are taken as true, Velum has failed to prove that its related companies or licensees use the Laser

Service Mark. Velum has failed to provide any evidence that related companies or licensees use the Laser Service Mark for registered services, namely organizing sailing events and sailing schools.

Fourth, even if the Board finds that Velum used the Laser Service Mark through related companies or licensees, Velum has never exercised any control over the use the Mark by its related companies and licensees. Velum is a mere holding company that never exercises control over any of its alleged licensees or related companies. Velum has therefore abandoned the Laser

Service Mark for failing to exercise control over use of the Mark.

Fifth, and finally, Velum committed fraud upon the USPTO when it filed its first statement of use because Velum knew it had no legal relationship with third parties that were using the Mark, but submitted evidence of third-party use anyway. Velum’s intentional 1 submission of specimens purportedly showing unlicensed and unrelated third-party use of the

Laser Service Mark to obtain registration is pure fraud that warrants cancellation of the registration.

Accordingly, for at least these reasons, the Board should cancel the Laser Service Mark registration.

II. DESCRIPTION OF THE RECORD

Pursuant to 37 C.F.R. § 2.122, the record includes the pleadings in this proceeding and the file history of Registrant’s application. Objections to Registrant’s Testimony and Exhibits are attached hereto as Appendix A. The following additional evidence was offered during the testimony periods:

A. BKI’s Evidence of Record

1. Redacted Testimonial Declaration of Eric Faust (“Faust Decl.”), filed January 11,

2018 (TTABVUE #47) (unredacted version of Faust Decl. filed on January 11, 2018

(TTABVUE #48).

2. Petitioner’s First Notice of Reliance, and documents therein, filed January 11,

2018 (TTABVUE #49).

3. Petitioner’s CONFIDENTIAL Second Notice of Reliance, and CONFIDENTIAL documents therein, filed January 12, 2018 (TTABVUE #50).

4. Petitioner’s Third Notice of Reliance, and documents therein, filed January 16,

2018 (TTABVUE #51).

5. Petitioner’s Fourth Notice of Reliance, and documents therein, filed April 27,

2018 (TTABVUE #58).

6. Petitioner’s Fifth Notice of Reliance, and documents therein, filed April 27, 2018

(TTABVUE #59).

7. April 19, 2018 Redacted Testimony Deposition of William Crane (“Crane Tr.”), pp. 1-94, with Exhibits 1-11, submitted to the Board on June 12, 2018 (TTABVUE #61)

(unredacted version of William Crane’s April 19, 2018 Testimony submitted to the Board on

June 12, 2018 (TTABVUE #62).

B. Velum’s Evidence of Record

1. Redacted Testimonial Declaration of William Crane (“Crane Decl.”), filed March

15, 2018 (TTABVUE #55) (unredacted version of Crane Decl. filed March 15, 2018

(TTABVUE #56).

2. Registrant Velum’s First Notice of Reliance, and documents therein, filed March

15, 2018 (TTABVUE #58).

3. March 5, 2018 Redacted Testimony Deposition of Eric Faust (“Faust Tr.”), pp. 1-

171 , with Exhibits, submitted to the Board on June 27, 2018 (TTABVUE #63) (unredacted version of Eric Faust’s March 5, 2018 Testimony submitted to the Board on June 27, 2018

(TTABVUE #64).

III. STATEMENT OF THE ISSUE

The issue presented in this cancellation proceeding is whether the Board should cancel the Laser Service Mark because Registrant Velum Limited abandoned the Laser Service Mark, never intended to use the Mark, and/or committed fraud upon the United States Patent and

Trademark Office in securing the Mark’s registration.

IV. RELEVANT FACTUAL BACKGROUND

A. The Parties and Registration at Issue

On May 7, 2013, BKI filed a Petition to Cancel the Laser Service Mark, owned by

Velum. (BKI001A.) The Laser Service Mark is registered in International Class No. 41 for

“organizing sporting events, namely, sailing competitions, and regattas; sailing schools.”

(Petitioner’s First Notice of Reliance at 102.)1 BKI seeks cancellation based on non-use, lack of intent to use, and fraud upon the United States Patent and Trademark Office.

BKI is actively engaged in the design and licensing of boat designs for use in international sailing competitions, and has an interest in maintaining the integrity of those competitions, including without limitation the trademarks used in connection with those competitions. (Id. at 1-2 ¶ 3.) Velum is a holding company organized under the laws of Antigua and Barbuda, with an address of P.O. Box 1699 17, rue du Cendrier Geneva 1 Switzerland 1211.

(Id. at 1 ¶ 2; Crane Decl. at 2 ¶ 5.) As a mere holding company, Velum itself has never used the

Laser Service Mark. (Crane Decl. at 16 ¶ 55; Crane Tr. at 67:20-68:15.) This is undisputed.

Instead, Velum alleges that it has used and uses the Laser Service Mark through licensees.

B. Velum’s Sole Witness, William Crane, and “the LaserPerformance Companies”

Velum’s only testimony is provided by William Crane, who was cross-examined by BKI.

Mr. Crane has never worked for Velum and has no knowledge of Velum’s corporate activities.

Specifically, Mr. Crane testified:

• He has never been an employee of Velum (Crane Tr. 12:5-20); • He has never been a director of Velum (Id.); • He has never been a chairman of Velum (Id.); • He has no knowledge of Velum’s corporate structure, other than the name of Velum’s director (Id. at 38:18-39:4); and • He has no knowledge of Velum’s controlling powers, (Id. at 39:17-19).

Mr. Crane states that he is the Director of third-party Quarter Moon, Incorporated

(“Quarter Moon”) and presently holds the title of Chairman with respect to third-parties

LaserPerformance (Europe) Limited (“LaserPerformance (Europe)” or “LPE”), Quarter Moon,

Laser Sailboats Limited, and LaserPerformance LLC. (Crane Decl. at 1 ¶ 2.) Per Mr. Crane,

1 Citations to Notices of Reliance utilize the PDF page numbers as some exhibits are unnumbered. 4

Velum is “a related company to Quarter Moon, Laser Sailboats Limited, and LaserPerformance

[LLC]2 as they are all owned by the same group ownership and shareholders.” (Crane Decl. at 2

¶ 2.) Importantly, Mr. Crane defines Quarter Moon, Laser Sailboats Limited, and

LaserPerformance LLC and “other companies that make up the LP Topco family” as “the

LaserPerformance Companies.” (Id. at 2 ¶ 4.) Thus, LaserPerformance (Europe) is specifically excluded from Mr. Crane’s definition of “LaserPerformance Companies” and his description of companies “related” to Velum. (Id. at 2 ¶¶ 2 and 4.)

C. Velum’s Allegations of Use of the Laser Service Mark

It is undisputed that Velum itself has never used the Laser Service Mark, yet Velum alleges it has used and uses the Mark through licensees. During discovery, BKI served interrogatories to specifically identify these licensees. (See BKI002B.) As shown below, Velum alleged only three: the International Laser Class Association (“ILCA”), the Interscholastic

Sailing Association (“ISSA”) and the Intercollegiate Sailing Association (“ISCA”):

Interrogatory

No. BKI’s Interrogatory Velum’s Alleged Licensees “Identify all third parties you 1 have allowed to use Registrant's ILCA; ICSA; ISSA Mark.” “Fully describe in detail your 5 relationship with all third parties ILCA; ICSA; ISSA that use Registrant's Mark.” “Identify all third parties using “Authorized uses of Registrant’s Mark in 7 Registrant's Mark without a the United States are governed by license from you.” agreements.” “Identify all third parties using 8 Registrant's Mark under a license “See Registrant’s response to Interrogatory No. 1.” from you.”

2 Mr. Crane refers to “LaserPerformance (Europe) Limited” as “LaserPerformance (Europe)” and “LaserPerformance LLC” simply as “LaserPerformance.” (Crane Decl. at 1 ¶ 2.) 5

(See BKI002B.) During trial, however, Velum identified new alleged “licensees” that were never disclosed in response to BKI’s interrogatories.3 Specifically, Mr. Crane alleges that:

ILCA claims in the Faust Declaration that “Registrant” has never organized a sailing competition, regatta, or sailing school (with or without the use of the LASER trademarks). While this may be true of Velum—a holding company—it is not a true statement as applied to other of the LaserPerformance Companies. Velum has licensed the LaserPerformance Companies to act in this way so that Velum has been very much been [sic] a critical party to this arrangement.

(Crane Decl. at 16 ¶ 55 (emphasis added).) As explained in more detail below, none of Velum’s licensing allegations hold water.

D. The International Laser Class Association

At trial, BKI introduced into evidence a declaration by Eric Faust, Executive Secretary of the International Laser Class Association (“ILCA”). (See Testimony Declaration of Eric Faust

(“Faust Declaration”).) ILCA is a self-administered, self-funded, non-profit international organization that provides coordination, organization, and communication for owners, worldwide, of a class of sailboat called “Laser” (“Laser Class” or “the Class”). (Faust Decl. at 2

¶ 8.) ILCA consists of hundreds of volunteers around the world who work year-round at sailing clubs, offices, and sailing federations to organize Laser events spanning from club regattas to training camps to national, world, and Olympic championships for sailors of the Laser Class sailboat. (Id. at 3 ¶ 10.)

ILCA also runs sailing events and promotes and develops the Laser Class in the United

States and throughout the world, (Id. at 3 ¶ 13), organizing many races and events each year (see, e.g., BKI012). ILCA was founded in the early 1970s and commenced use of the term “Laser”

3 As explained in Appendix A, Velum’s allegations of a license with “the LaserPerformance Companies” and/or use by these companies are barred under Fed. R. Civ. P. 37(c)(1) and TBMP § 527.01(e). 6 for sailing events, services, and regattas at that time, including in the United States. (Faust Decl. at 3 ¶ 13.) Since its inception, ILCA has used and continues to use the term “Laser” in the organization, promotion and conduct of all sanctioned Laser Class events, races and competitions in the United States and around the world. (Id. at 3 ¶ 14.) ILCA’s use of the term “Laser” has been continuous and widely publicized over the last 45 years as the Laser Class has grown in size and popularity. (Id. at 4 ¶ 14.)

ILCA does not have, and has never had, any agreement in the United States with any entity, whether written, oral, implied, or otherwise, for ILCA’s use of the term “Laser” for sailing and other events. (Id. at 4 ¶ 15.) ILCA has never required permission to use the term

“Laser” in the United States and has never used the term “Laser” on behalf of another person or entity. (Id.) As it applies to this case, ILCA does not have, and has never had, a license agreement in the United States with Velum for the use of the term “Laser,” whether written, oral, implied, or otherwise. (Id. at 7 ¶ 26.)

V. ARGUMENT

To cancel a registration, a petitioner must show both standing and valid grounds for cancellation. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.

2000). A petitioner has standing if he “believes that he is or will be damaged” by the registration at issue. 15 U.S.C. § 1064 (emphasis added); Jonathan L. Fox v. JMIR Publications Inc.,

Cancellation No. 92056565, 2015 WL 2412171, at *4 (TTAB Apr. 29, 2015) (“To establish standing in a cancellation proceeding, Petitioner must show both a real interest in the proceedings as well as a reasonable basis for its belief of damage.”) (internal quotations omitted).

“A belief in likely damage can be shown by establishing a direct commercial interest.” Ennis,

Inc. v. Joel L. Beling d/b/a Supa Characters Pty Ltd, Opposition No. 91203884, 2017 WL

412412, at *10 (TTAB Jan. 12, 2017). 7

A service mark is “any word, name, symbol, or device . . . (1) used by a person . . . in commerce.” 15 U.S.C. § 1127. The term “use in commerce” means “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” Id.

Accordingly, a service mark is “used in commerce” when “it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.” Id.; see also, e.g., Couture v.

Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042, 2043 (Fed. Cir. 2015) (“On its face, the statute is clear that a mark for services is used in commerce only when both [1] ‘it is used or displayed in the sale or advertising of services and [2] the services are rendered ....”’), cert. denied, 136 S. Ct. 88 (2015).

A registration can be canceled at any time if the registered mark has been “abandoned.” See

15 U.S.C. § 1064(3). “There are two elements to an abandonment claim that a plaintiff must prove: nonuse of the mark and intent not to resume use.” ShutEmDown Sports Inc. v. Lacy, 102

USPQ2d 1036, 1042 (TTAB Feb. 22, 2012) (precedential); see 15 U.S.C. § 1127. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. Id.

Abandonment may also be established by proving that a registrant has never used a mark,

ShutEmDown Sports, 102 U.S.P.Q.2d at 1043, or never intended to use the mark, Linkedin Corp. v. Int’l Council for Educ. Reform and Dev. (ICERD), Opposition No. 91225285, 2018 WL

529851, at *7 (TTAB Jan. 19, 2018); Spirits Int'l, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim

Satis Kooperatifleri Birligi, 99 U.S.P.Q.2d 1545, 2011 WL 2909909, at *3-4 (TTAB July 6,

2011) (sustaining opposition based on failure to provide evidence of intent to use).. Moreover, a trademark registration can be cancelled at any time if the mark was obtained fraudulently. 15

U.S.C. § 1064(3). 8

A. BKI has Standing to Cancel Velum’s Trademarks

BKI easily satisfies the threshold requirement of standing to cancel Velum’s Laser

Service Mark registration. BKI alleges that it is actively engaged in the field of sailing and the design and licensing of boat designs for use in international sailing competitions, including the

Olympics. (See BKI001A at 1-2 ¶ 3.) BKI further alleges that it has an interest in maintaining the integrity of those competitions, including without limitation, the trademarks used in connection with those competitions. (Id.) Velum’s Laser Service Mark relates to organizing sporting events, namely, sailing competitions, and regattas and unquestionably affects BKI’s interest in maintaining the integrity of sailing competitions. Ennis, Inc., 2017 WL 412412, at

*10. Bruce Kirby designed the Laser sailboat, (see VELUM1011 at 13), and Velum has fraudulently obtained a trademark for organizing events using the trademark “Laser” without using the trademark or exercising any control over the use of the mark. BKI’s interest will be damaged unless the Laser Service Mark registration is cancelled.

The Board already found that BKI has standing to cancel the Laser Service Mark at the summary judgment stage of these proceedings. (BKI0027 at 7 (“The Board finds this sufficient evidence of Petitioner’s allegation that he is engaged in the design of boats for use in international sailing competitions.”)). There is no reason for the Board to re-assess its finding now. See, e.g., Jeanette K. Daniels v. TGN Services, LLC, Opposition No. 91204462, 2016 WL

6648972, at *2 (TTAB Oct. 11, 2016) (“The Board found earlier, on consideration of Applicant’s motion for summary judgment, that Opposer has standing.”); Penguin Books Ltd. v. Rainer

Eberhard DBA Penguin Computer Consultants, 48 U.S.P.Q.2d 1280 (TTAB Apr. 27, 1998) (“In

[a] decision on opposer’s motion for summary judgment, the Board determined that there were no genuine issues as to opposer’s standing or its priority.”); Esrt Empire State Bldg., L.L.C.

(Substituted for Empire State Bldg. Co. L.L.C.) v. Michael Liang, Opposition No. 91204122, 9

2016 WL 3771775, at *4 (TTAB June 17, 2016) (same). Velum did not argue at summary judgment that BKI’s pleading is insufficient to establish standing. In fact, Velum never even denied BKI’s allegations of standing in its Answer. (See BKI001B at 2 (failing to specifically deny the allegations set forth in paragraph 3 of BKI’s Petition to Cancel, namely BKI’s allegations of activities in sailing and boat design)); Fed. R. Civ. P. 8(b)(6) (providing that an allegation is admitted if a responsive pleading is required and the allegation is not denied).4 The

Board should affirm BKI’s standing for these reasons alone.

Indeed, Velum never challenged BKI’s allegations of standing because Velum knows

BKI is still active in the sailing industry. For instance, BKI has four “live” trademarks for use in relation to boats and yachts. (BKI016-BKI019.) Each of these trademarks has a declaration of use and specimen in support thereof filed after BKI filed its Notice of Cancellation in this case.

(See Petitioner’s Fourth Notice of Reliance at 25, 88, 169, and 255.) BKI’s trademarks are also used in relation to sailing events, such as races involving Pixel® and Sonar® boats. (See, e.g.,

BKI014, BKI026.) As it relates to Laser sailing events, Bruce Kirby designed the Laser sailboat.

(See, e.g., VELUM1011 at 13).

Furthermore, Velum’s own evidence establishes BKI’s standing. The Crane Declaration includes a copy of an Order dated August 12, 2016 issued in a lawsuit between BKI, Quarter

Moon, and LaserPerformance (Europe). (Crane Decl. Ex. LL.) In that case, the Court determined over three years after BKI filed its Notice of Cancellation in May 2013 that BKI sold its rights in the design of a “Kirby Sailboat” in June 2008. (Id. at 2.) However, the Court issued another Order on June 12, 2017 that clarifies the August 12 summary judgement order,

4 Fed. R. Civ. P. 8(b)(6) is made applicable to Board proceedings pursuant to Trademark Rule 2.116(a), 37 C.F.R. § 2.116(a). 10 specifically that BKI still owns its BRUCE KIRBY® trademark and has standing to pursue its trademark infringement claims against QMI and LPE. (See BKI024 at 3-4.) BKI’s case against

LaserPerformance (Europe) and Quarter Moon therefore remains active, (BKI024), as does another, more recent case against Quarter Moon and LaserPerformance LLC concerning their infringement of the BRUCE KIRBY® trademark, (see BKI025). BKI’s reasonable belief in likely damage is further evidenced by these litigations. Ennis, Inc., 2017 WL 412412, at *10 (“A belief in likely damage can be shown by establishing a direct commercial interest.”).

Pursuant to the foregoing, BKI has established it has a real interest in the outcome of these proceedings and a reasonable basis for its belief that it will be damaged. The Board should therefore reaffirm its finding on summary judgement that BKI has standing to cancel the Laser

Service Mark registration.

B. The Board Should Cancel the Laser Service Mark Registration Because Velum Abandoned the Mark

Velum has never used the Laser Service Mark, by itself or through a related company or licensee. A trademark registration is abandoned and/or void ab initio when the mark does not meet the use in commerce requirement. ShutEmDown Sports, 102 U.S.P.Q.2d at 1043. In an application based on an applicant’s intent to use [a] mark in commerce under Section 1(b) of the

Trademark Act, the applicant must begin using the mark in commerce on or in connection with the goods or services listed in the application as of the expiration of its time to file its statement of use, including any extensions of the initial six-month period. 15 U.S.C. § 1051(d); 37 C.F.R.

§ 2.88(a)(1); ShutEmDown Sports, 102 U.S.P.Q.2d at 1043 (abandonment may be established by proving that a registrant has never used its mark).

It is undisputed that Velum itself never used the Laser Service Mark. (Crane Decl. at 16

¶ 55; Crane Tr. at 67:20-68:15.) Instead, Velum relies on alleged use of ILCA, ISCA, ISSA, and

11 the LaserPerformance Companies, but none of these entities have a license to use the Laser

Service Mark from Velum. Accordingly, Velum has abandoned the Laser Service Mark registration.

1. Velum Did Not License the Laser Service Mark to ILCA

Velum alleges that it licensed the Laser Service Mark to ILCA through an agreement entered in 1998 (“1998 Agreement”) between ILCA and another company called Performance

SailCraft Europe Limited (“PSE”). The 1998 Agreement is the sole basis for Velum’s alleged license with ILCA. (BKI002B at 5 (“Registrant is the successor to an agreement between

Performance SailCraft Europe Limited and the ILCA. Under that agreement, ILCA is granted the right to supply services such as the organization and promotion of Laser class sailing, race meetings, and regattas.” (emphasis added)); see also id. at 7 (same) and 8 (same).)

There is no support in the record for Velum’s alleged “license” with ILCA. In fact, Mr.

Faust never even heard of Velum until 2012 when he was independently researching the

USPTO website, (Faust Tr. 35:1-6), and he still “[doesn’t] know anything about Velum

Limited,” (id. at 57:21). Velum is not a party to the 1998 Agreement and has no relationship with ILCA or PSE.

There is no evidence to support this post hoc theory. Indeed, Velum’s arguments can be readily dismissed as a baseless, last-ditch effort to conjure up a license to maintain its void and abandoned trademarks.

i. Velum is Not a Party to the 1998 Agreement and Does Not Have A Legal Relationship with a Party to the Agreement

The 1998 Agreement between ILCA and PSE cannot provide a basis for use by Velum because Velum is in no way involved with the 1998 Agreement. Velum is not a party to the agreement. (See Crane Decl. Ex. J5.) While Velum makes the unsupported assertion that PSE became LPE by “a simple name change,”6 this does not mean PSE or LPE’s agreement with

ILCA inures to the benefit of Velum. There is no evidence that Velum has a legal relationship to

PSE or LPE as these companies are not described by Mr. Crane as a “related” company or a

“LaserPerformance” company. (See Crane Decl. at 2 ¶¶ 2 and 4.) Thus, the following relationships result:

1998 Agmt.

5 The 1998 Agreement is also attached to the Faust Declaration as Exhibit G. 6 There is no evidence in the record showing this “name change,” and Mr. Crane affirmed as much during his cross- examination. (Crane Tr. at 21:9-20.) 13

(See Crane Decl. at 2 ¶¶ 2 and 4 (dotted lines representing Mr. Crane’s allegations of relationships and affiliations, which are unsupported).) Accordingly, ILCA’s alleged use of the

Laser Service Mark through an agreement with PSE (or LPE) cannot be considered “use” by

Velum.

ii. The 1998 Agreement Expressly Excludes the United States and Was Never Broadened or Expanded

Regardless of Velum’s legal relationship with LPE, the 1998 Agreement still cannot provide a basis of use by Velum because the Agreement expressly excludes the United States.

The 1998 Agreement defines the “Territory” in which the Agreement applies as “[a]ll countries of the world other than those the subject of undisputed trademark ownership by Vanguard

Sailboats, Performance Sailcraft Japan, and Performance Sailcraft Australia.” (Crane Decl. Ex. J at 5.)

Therefore, the 1998 Agreement expressly excluded the United States when the

Agreement was signed. (Faust Decl. at 8 ¶ 36; Crane Decl. at 12 ¶ 42.)

Now, however, twenty years after the Agreement was entered and for the first time,

Velum makes the post hoc argument that

7 Velum never argued for this interpretation on summary judgment. 14

Second, the 1998 Agreement does not define the licensed trademarks to include the Laser

Service Mark. (See Crane Decl. Ex. J at 5, Schedule 1.) Velum cannot now define the scope of the term “Laser” to include new trademarks twenty years later to suit its current needs. (See

BKI027 at 6 (construing another agreement and holding that “the reference in the disputed

15 provision of the agreement to ‘the trademark LASER’ with no reference to goods or services cannot reasonably be construed as referring to unlimited trademark rights to the term LASER as that would grant trademark right in gross”).

(BKI013.) The Laser Service Mark was not registered until July 1, 2008, and Velum has sworn (falsely) that it only first used the Mark in 2004. (See Petitioner’s First Notice of Reliance at 128.) The timeline below summarizes Velum’s baseless allegations:

(See also BKI027 at 6.)

. . .

, ILCA testified that “the [1998

Agreement] was never broadened by express agreement or implication to include any other trademarks, trademark classes or territories, and ILCA has not entered another agreement regarding Laser trademarks.” (Faust Decl. at 9 ¶ 36.) Indeed, ILCA expressly refutes that it has or has ever had a license agreement with Registrant (or any other entity) in the United States for use of the term “Laser,” whether written, oral, implied, or otherwise. (Faust Decl. at 7 ¶¶ 26 and

28.)

2. Velum Has Never Licensed the Laser Service Mark to the LaserPerformance Companies

As explained above, the first time Velum alleged that “the LaserPerformance

Companies” were licensees was during trial. As further shown in Appendix A, these allegations are therefore barred under Fed. R. Civ. P. 37(c)(1) and TBMP § 527.01(e). In any event, Velum has presented no evidence of any licensing relationship with the LaserPerformance Companies— because there is none. During his cross-examination, Mr. Crane could not provide any evidence that Velum has (1) written licenses regarding the Laser Service Mark with the companies referenced in his declaration, (Crane Tr. 50:19-52:3)9; (2) oral licenses or agreements regarding the Laser Service Mark (Crane Tr. 52:4-9; 52:21-54:11), or (3) written or oral U.S. licenses regarding the term “Laser” in International Class 41 (Crane Tr. 55:16-58:5). Mr. Crane’s statements unequivocally confirm that Velum has never licensed the Laser Service Mark to the

LaserPerformance Companies. Thus, even if the Board finds that the LaserPerformance

9 The Laser Service Mark was referred to as “the ’524 Registration” during Mr. Crane’s cross-examination. 18

Companies have used the Laser Service Mark (they have not), such use does not inure to the benefit of Velum.

3. Velum Has Never Licensed the Laser Service Mark to ISSA or ISCA

Though Velum stated in an interrogatory response that ISSA and ISCA have a license to use the Laser Service Mark, (BKI002B at 5, 7 and 8), neither Velum nor Mr. Crane repeat this groundless allegation at trial. See ShutEmDown Sports, 102 U.S.P.Q.2d at 1045 (“A party’s response to an interrogatory is not without evidentiary value, but generally is viewed as self- serving.”). Instead, Mr. Crane references agreements between LaserPerformance LLC and ISSA and LaserPerformance LLC and ISCA merely to support allegations that LaserPerformance LLC sponsored high school and college level races. (Crane Decl. at 20 ¶¶ 67 and 68; id. at 22-23 ¶¶

73-77.)

To be clear, LaserPerformance LLC’s agreements with ISSA and ISCA

are not licenses to use the Laser Service Mark.

Thus, any alleged use of the Laser Service Mark by ISSA and/or

ISCA pursuant to the above-referenced agreements cannot be considered licensed use by Velum.

C. The Board Should Cancel the Laser Service Mark Because the LaserPerformance Companies, ISCA, and ISSA Have Never Used the Mark

Even if Velum has a license with the LaserPerformance Companies, ISCA, or ISSA,

Velum still has not shown any use of the Laser Service Mark by these entities. Velum has therefore abandoned the Laser Service Mark registration. (See ShutEmDown Sports, 102

U.S.P.Q.2d 1043) (abandonment may also be established by proving that a registrant has never used its mark). Indeed, Velum presented no evidence at trial that these entities have been the responsible party for organizing events using the Laser Service Mark. Lack of use by Velum’s

19 alleged licensees is yet another reason the Board should cancel the Laser Service Mark registration.

1. The LaserPerformance Companies Have Never Used the Laser Service Mark

LaserPerformance LLC is the only LaserPerformance Company that Mr. Crane alleges uses the Laser Service Mark in the United States. However, LaserPerformance LLC has never been the party responsible for organizing an event using the Laser Service Mark. The following table summarizes Mr. Crane’s allegations:

Event Name/Alleged Use Crane Decl. Does not include term 10 Year Para. No. Did Not “Organize Sporting Event” “Laser” by Itself 56 X X 2010 57 X X 2009 58 X X 2009 59 X X 2010 60 X “operated” sailing school 2011 61 N/A X 2011 62 2011 “World Laser Master’s X Championships” 63 “helped to organize and run . . . in 2011 “2011 Laser Slalom”11 conjunction with Maclaren” 65 2015 “2015 Laser Radial Women’s X World Championships” 66 2018 “2018 Laser Gulf X Championships” 67 X X 2012 68 X X 2013 69 X X 2015 70 X X 2016 71 X X 2017 72 X X 2014 73 X X 2013 74 X X 2014 75 2015 X “The event was organized by the ISSA in conjunction with Whatcom

10 See Goods and Services description for the Laser Service Mark. 11 This event was an “invitation-only event of 32 competitors.” (Crane Decl. 18 at ¶ 63.) 20

Community Sailing and title sponsor LaserPerformance.” 76 X X 2017 77 X X 2018

Thus, in each instance of alleged use by LaserPerformance LLC, the relevant event either does not use the Laser Service Mark or is organized by other entities. See In-Flight Phone Corp. v. J. Anselmo, Inc., Cancellation No. 92024090, 1998 WL 80134, at *3 (TTAB Feb. 26, 1998)

(trademark registration cancelled in part because registration did not use “the specific logo mark registered”). In addition, many of Mr. Crane’s allegations of LaserPerformance’s use relate to

LaserPerformance’s supplying boats for events, but Mr. Faust explained during his cross- examination that this does not constitute use by LaserPerformance:

Q: If LaserPerformance (Europe) Limited or one of its affiliated companies supplied sailboats for that championships they did organize and coordinate that event, correct?

A: No.

Q: Why is that? Why do you say that?

A: Providing charter boats for rent is a commercial venture that is carried out by a third party and does not imply that the charter provider had any role in the organization or the conduct or coordination of the event.

Q: Well, you can’t have an event with the charter boats, correct?

A: No, You can have an event without charter boats.

(Faust Tr. 96:25-97:17.) Notably, Mr. Faust also testified that he knows nothing about

LaserPerformance LLC, which further undermines Velum’s theory that LaserPerformance LLC ever ran or organized Laser sailing events. (See Faust Tr. 32:1-10.)

Even if the Board finds that LaserPerformance LLC has used the Laser Service Mark in the events above pursuant to a license agreement with Velum, there is no evidence in the record that LaserPerformance LLC used the mark before (1) registration of the Laser Service Mark on

July 1, 2008 or (2) Velum’s April 16, 2008 deadline to submit its statement of use. (Petitioner’s

First Notice of Reliance at 140.) While Velum filed a statement of use and specimens on the appropriate date, the specimens (and Mr. Crane’s Declaration) fail to show use of the Laser

Service Mark by Velum or the LaserPerformance Companies:

Crane Decl. ons of Use of Laser Event Name Mr. Crane’s Allegati Year Para. No. Service Mark in April 2008 Specimens 79 “2006 Laser Radial NONE – “Vanguard Sailboats supplied 2006 World Championships” boats for this event” 80 “2007 US Laser National NONE – “LaserPerformance supplied the 2007 Championships”12 LASER boats” 81 “World Laser 4.7 Youth NONE - “LaserPerformance was a sponsor 2008 Championships” of ILCA-NA during the time of this event” 82 2008 “Atlantic Coast NONE - Championship Laser, “LaserPerformance was a sponsor of ILCA-NA during the time of this event” Radial and 4.7” 83 2008 “International Laser NONE - Class 2008 U.S. National “LaserPerformance was a sponsor of ILCA-NA during the time of this event” Championship”

(See also Petitioner’s First Notice of Reliance at 128-138.)

Moreover, Velum’s statement of use provides that Velum first used the Laser Service

Mark in 2004, but Velum simultaneously alleges

In addition, the events discussed in paragraphs 56 - 77 in Mr. Crane’s declaration likewise do not show use prior to registration as they all occurred after Velum’s April 16, 2008

12 This event took place in Togir, Croatia. 22 deadline to file its statement of use. Accordingly, Velum has provided no evidence of use at the time of registration. As a result, the Board should cancel the Laser Service Mark registration.

2. Velum is Not Related to the LaserPerformance Companies

Even if the Board finds that the LaserPerformance Companies use the Laser Service

Mark, there is no evidence that Velum is related to the LaserPerformance Companies as there is no evidence that Velum controls them. Section 45 of the Act, 15 U.S.C. §1127, defines a

“related company” as “any person13 whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.” (emphasis added). Mr. Crane was asked repeatedly during his cross-examination if there was any evidence in the record to support his allegations that Velum and the

LaserPerformance Companies are legally related:

Q: So you’ve testified about an alleged affiliation between Velum and quote “the LaserPerformance companies.” Correct?

A: Yes. I think it’s in the first paragraph of my declaration.

Q: And there are no documents showing this affiliation. Correct?

A: And I think that’s incorrect. I know, in fact, there are documents that show that affiliation.

Q: No such documents were included in your declaration or attached to your declaration. Correct?

A: They were not included but they do exist. And I think in the first half paragraph or the first page of this, we cover that, that it’s an affiliated company.

13 The term “person” means “a juristic person as well as a natural person. The term ‘juristic person’ includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.” See 15 U.S.C. § 1127. 23

Q: You also testify that, or allege that Velum is related to – as opposed to affiliated, related to [the] LaserPerformance companies. Correct?

A: They also share mutual ownership.

Q: And there is no documents showing a legal relationship between Velum and –

A: There are documents that show that.

Q: And no such documents were included in your declaration. Correct?

A: Correct.

(Crane Tr. 73:10-74:17.) In fact, Mr. Crane testified that another parent controls the

LaserPerformance Companies:

Q: There are no documents evidencing “authorization” by Velum of representatives. Correct?

A: I don’t know that documents are necessary within subsidiary companies. We all work for the same parent company, so we’re told what to do by the parent.

(Crane Tr. 37:12-18 (emphasis added).)

This case is like Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC 118

U.S.P.Q.2d 1413, 2016 WL 3357265 (TTAB Apr. 4, 2016). There, the Board determined after trial that the subsidiary company was not using the mark in any way and the parent company was the sole user, finding that only the parent was identified as the source of the goods. Id. at *6-9.

There was no license agreement between the parent and subsidiary or other indication of control by the subsidiary. Id. at *11. The Board found use of a trademark by a parent of a subsidiary

(the registrant) did not inure to the benefit of the subsidiary because the subsidiary did not control the parent. Therefore, the Board found that the registrant abandoned the mark. Id. As the Board explained:

Furnco International Corporation [the parent] chose to structure its business using a legally distinct subsidiary, which counts as a “person” under the Trademark Act. 15 U.S.C. § 1127, Trademark Act § 45 (“The term ‘person’ and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this Act includes ... a ... corporation ... or other organization capable of suing and being sued in a court of law.”). Such a business structure may offer some advantages, but it also comes with some strictures, and the existence of a separate and distinct legal entity (e.g., in this case a limited liability company) cannot be turned on or off at will to suit the occasion.

Id. at *10.

The Board should hold the same here. There is no evidence in the record to demonstrate that Velum is legally related to the LaserPerformance Companies. There is no evidence that

Velum exercises any control of the LaserPerformance Companies or use of the Laser Service

Mark. Velum is a separate legal entity, and is allegedly itself controlled by a parent company.

(Crane Tr. 37:12-18; see Noble House, 2016 WL 3357265 at *10.) Velum has never been identified as a source of use of the Laser Service Mark. Accordingly, any alleged use by the

LaserPerformance Companies does not inure to the benefit of Velum.

3. ISSA and ISCA Have Never Used the Laser Service Mark

ISSA and ISCA have never used the Laser Service Mark for the same reasons the

LaserPerformance Companies have never used the Mark. First, the races related to ISSA and

ISCA that allegedly implicate the mark do not use the term “Laser”:

Crane Decl. Year Para. No. Event Name/Alleged Use Does not include term “Laser” by Itself 67 X 2012 68 X 2013 73 X 2013 74 X 2014 75 X 2015 76 X 2017 77 X 2018

See In-Flight Phone, 1998 WL 80134, at *3 (trademark registration cancelled in part because registration did not use “the specific logo mark registered”). Moreover, any use of the term 25

“Laser” by ISSA or ISCA occurred after the date of registration of the Laser Service Mark and the April 16, 2008 deadline for Velum to file its statement of use. Indeed, ISSA allegedly signed an agreement with LaserPerformance LLC , and ISCA allegedly signed an agreement with LaserPerformance LLC

D. The Board Should Cancel the Laser Service Mark Because Velum Never Intended to Use the Mark

Velum never intended to use the Laser Service Mark at the time Velum filed its application on February 9, 2006. (Petitioner’s First Notice of Reliance at 73.) It is well settled that a registration derived from a trademark application based on Section 1(b) of the Trademark

Act may be cancelled based on a lack of an intent to use the mark. See Linkedin Corp., 2018 WL

529851, at *7; Spirits Int'l, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri

Birligi, 99 U.S.P.Q.2d 1545, 2011 WL 2909909, at *3-4 (TTAB July 6, 2011) (sustaining opposition based on failure to provide evidence of intent to use); see also TBMP § 309.03(c)(5)

(defendant’s lack of a bona fide intent to use a mark in commerce is an appropriate ground for an opposition or cancellation). “To be bona fide, [Registrant’s] intent must be firm, demonstrable with objective evidence of intent and more than a mere subjective belief.” Linkedin Corp., 2018

WL 529851, at *7 (internal quotations omitted). The applicant’s intentions are considered at the time the relevant application is filed. See M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1376

(Fed. Cir. 2015) (“[W]e hold that whether an applicant had a ‘bona fide intent’ to use the mark in commerce at the time of the application requires objective evidence of intent”) (emphasis added); Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, 88

USPQ2d 1581, 2008 WL 4149008, at *6 (TTAB Sept. 9, 2008) (“Applicant has submitted no

26 evidence, documentary or otherwise, to support or have a bearing on his claimed bona fide intention to use the mark when the application was filed.”) (emphasis added).

As shown above, Velum has never used the Laser Service Mark, by itself or through related companies or licensees. However, Velum never even intended to use the Laser Service

Mark, and the record is devoid of any firm, objective evidence that it did. See Linkedin Corp.,

2018 WL 529851, at *7 (opposer may meet initial burden that applicant lacked a bona fide intent to use the mark on the identified services “by establishing that there is an absence of any document evidence on the part of [Registrant] regarding such intent.” (internal quotations omitted)). Here, Velum’s only evidence of intent to use the Laser Service Mark is (1) a unilateral, post hoc interpretation of a contract between third-parties and (2) use by unrelated third-parties.

E. The Board Should Cancel the Laser Service Mark Because Velum Has Never Controlled the Use of the Mark

Even if Velum has a license with ILCA or the LaserPerformance Companies (it does not), Velum has failed to exercise any control over these entities’ use of the Mark. Failure to exercise sufficient control over licensees or franchisees may result in abandonment of the mark.

TMEP § 1201.03(e) (citing Hurricane Fence Co. v. A-1 Hurricane Fence Co., 468 F. Supp. 975,

986, 208 USPQ 314, 325 (S.D. Ala. 1979)); see also 3 McCarthy on Trademarks and Unfair

Competition § 18:48 (5th ed.) (citing Barcamerica Intern. USA Trust v. Tyfield Importers, Inc.,

289 F.3d 589, 62 U.S.P.Q.2d 1673, 52 Fed. R. Serv. 3d 415 (9th Cir. 2002) (“naked licensing is inherently deceptive and constitutes abandonment of any rights to the trademark by the licensor”) (emphasis in original) (internal quotations omitted)).

Mr. Crane confirmed that Velum has never taken steps to control the use of the Laser

Service Mark in the U.S. In fact, Mr. Crane admits that (1) he has no specific knowledge of any control exercised by Velum, and (2) Velum is nothing more than a mere holding company.

First, Mr. Crane walked back his sworn statement that Velum has “attended numerous racing events . . . to ensure compliance with” sailing rules and guidelines, (Crane Decl. at 14 ¶

49):

Q: Velum has never attended a race event to ensure compliance with rules and guidelines. Correct?

A: I don’t know if Velum’s gone there or not. I don’t work for Velum.

(Crane Tr. 37:3-7.) Mr. Crane then confirmed that there is no evidence in the record that

Velum has “authorized” its representatives to attend events to ensure compliance:

Q: You’re not aware of any documents evidencing Velum’s authorization for representatives to attend race events to ensure compliance with rules and guidelines. Correct?

A: Correct.

Q: And you haven’t attached any such documents to your declaration. Correct?

A: I have not.

. . .

Q: Velum never informed ILCA that it was sending any authorized representatives to any race events. Correct?

A: I don’t know.

(Crane Tr. 37:20-38:4; 40:21-24.) Mr. Crane has no knowledge of Velum ever contacting ILCA regarding any noncompliance issues. (Crane Tr. 43:18-21.)

Furthermore, Mr. Crane confirmed that Velum has never trained another entity to ensure compliance with sailing rules and guidelines:

Q: Velum hasn’t conducted any trainings to report noncompliance issues. Correct?

A: Not that I know of.

Q: There’s no document that evidences that Velum authorized any trainings for detecting noncompliance issues. Correct?

A: Not to my knowledge.

(Crane Tr. 41:18-42:2.) In Mr. Crane’s own words, Velum is nothing but a holding company that has no corporate activities, including exercising control over any alleged licensees:

Q: -- do you have knowledge of Velum’s actions, let’s start with ever?

A: Other than as a holding company?

Q: Do you have any knowledge of Velum’s corporate activities?

A: Velum is a holding company. They hold the trademarks. Other than that I don’t know what they do.

(Crane Tr. 38:15-22.)14

Likewise, Mr. Faust testified to Velum’s lack of control of ILCA’s use of the term

“Laser” for sailing events. Specifically, Mr. Faust testified that Velum “has never controlled or exercised any control over ILCA’s use of the term ‘Laser.’ ” (Faust Decl. at 7 ¶ 30.)

Furthermore, Mr. Faust testified that “[a]ll Laser Class rules, standards, and guidelines are drafted, enacted, and enforced exclusive of [Velum’s] influence, input, or control. [Velum] has no ability to enforce or amend any of ILCA’s rules, standards, or guidelines.” (Id. at 8 ¶ 33.)

Neither has Velum “attended a Laser sailing event held in the United States with the intention of monitoring ILCA’s compliance with ILCA’s rules, standards, and guidelines,” nor

14 See also Crane Tr. 67:20-24:

Q: To your knowledge, Velum has never organized a sailboat race. Correct?

A: Velum a holding company? No. Holding companies don’t organize sailing events.

“communicated to ILCA any allegation of non-compliance with ILCA’s rules, standards, or guidelines, [or] . . . enforced or attempted to enforce them.” (Id. at 8 ¶¶ 34 and 35.)

Put simply, Velum is not a party to any agreements that govern use of the Laser Service

Mark in the U.S. and has never taken steps to control the manner in which the Laser Service

Mark is used. Thus, even if the registration was valid, Velum has utterly failed to exercise sufficient control over the Laser Service Mark’s use, thereby abandoning the mark and subjecting it to cancellation.

F. The Board Should Cancel the Laser Service Mark Because Velum Committed Fraud on the US Patent and Trademark Office in Registering the Mark

Velum committed fraud when it applied for the Laser Service Mark. A trademark registration can be cancelled at any time if the mark was obtained fraudulently. 15 U.S.C. §

1064(3). Fraud in procuring a trademark registration occurs when an applicant for registration knowingly makes a false, material representation of fact in connection with an application to register with the intent of obtaining or maintaining a registration to which it is otherwise not entitled. ShutEmDown Sports, 102 U.S.P.Q.2d at 1046 (reciting four elements of fraud derived from In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009)).

Here, Velum intentionally submitted false representations to the USPTO regarding its use and intent to use the Laser Service Mark. As described above, it is undisputed that Velum itself never used the Mark. See Nougat London Ltd. v. Carole Garber, Cancellation No. 92040460,

2003 WL 21206253 (TTAB May 14, 2003) (granting summary judgment as to fraud in light of material misstatements in registrant’s statement of use). Velum never used the Mark and never even intended to use the Mark when Velum filed its application. Velum intentionally submitted a sworn statement of use showing use by ILCA despite knowing that ILCA was not a licensee or related company of Velum. This statement of use was material to the registration of the Laser

Service Mark and submitted with the intent to deceive the USPTO. See id. at *4 (finding statements made in a statement of use material to registration because “[a]n application based on intent-to-use will not issue as a registration until a Statement of Use has been filed.”). The Board should cancel the Laser Service Mark based on Velum’s fraudulent representations.

VI. CONCLUSION AND SUMMARY

Pursuant to the foregoing, the Board should cancel the Laser Service Mark registration.

Velum has no right to maintain ownership of the Laser Service Mark registration. It is undisputed that Velum itself has never used the Mark. Neither has Velum used the Mark through a related company or licensee. Velum had no bona fide intention to use the Mark when it applied for registration. Velum has failed to prove that related companies or licensees used the

Laser Service Mark for registered services. Even if the Board finds that Velum used the Laser

Service Mark through related companies or licensees, Velum has never exercised any control over the use the Mark by its related companies and licensees. Moreover, Velum committed fraud upon the USPTO when it filed its first statement of use because Velum knew it had no legal relationship with third parties that were using the Mark, but submitted evidence of third- party use anyway. For each of these reasons, alone or in combination, the Board should cancel the Laser Service Mark registration.

Respectfully submitted,

June 28, 2018 /s/ Wesley W. Whitmyer, Jr. Date Wesley W. Whitmyer, Jr. Walter B. Welsh Benjamin N. Luehrs WHITMYER IP GROUP LLC 600 Summer Street Stamford, CT 06901 Tel: 203 703-0800 Fax: 203-703-0801 Email: [email protected] [email protected] [email protected]

Attorneys for Petitioner, Bruce Kirby, Inc.

APPENDIX A

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

In the matter of Trademark Registration No. 3,459,524 for the mark LASER Registered on July 1, 2008

Bruce Kirby, Inc., : : Petitioner, : : Cancellation No. v. : 92057217 : Velum Limited, : : Registrant. :

STATEMENT OF OBECTIONS TO REGISTRANT’S EVIDENCE OF RECORD

BKI hereby objects to and respectfully requests that the Board exclude and/or strike certain testimony and exhibits submitted into evidence by Velum. BKI’s objections are set out in the table below. In addition, BKI further submits evidence and argument regarding Velum’s introduction of information that it failed to produce in response to BKI’s interrogatories. Velum did not fully reveal information about its allegations of licensing and use of the Laser Service

Mark in response to BKI’s interrogatories. Indeed, Velum has improperly shifted its theory of the case after the close of discovery to allege that “the LaserPerformance Companies” have a license from Velum and/or authorization to use the Laser Service Mark. Such a clear example of unfair surprise should not be tolerated by the Board. Accordingly, pursuant to Federal Rule of

Civil Procedure 37(c)(1) and TBMP § 527.01(e), the Board should exclude from Velum’s

34 evidence of record any reference, allegation, or discussion of use by an entity other than ILCA,

ISSA, or ISCA, and strike all testimony related thereto.

A. BKI served Interrogatories on Velum in an Effort to Identify All Third-Parties that Have Used the Laser Service Mark with Velum’s Authorization

On December 13, 2013, BKI served interrogatories on Velum specifically directed to its allegations of licensing the Laser Service Mark. As shown below, Velum alleged only three licensees and authorized users: the International Laser Class Association (“ILCA”), the

Interscholastic Sailing Association (“ISSA”) and the Intercollegiate Sailing Association

(“ISCA”):

Interrogatory

(See BKI002B.) During trial, however, Velum identified new alleged “licensees” that were never disclosed in response to BKI’s interrogatories. Specifically, Registrant submitted a declaration by William Crane who alleged, for the first time, that “the LaserPerformance

Companies” are also licensees:

Companies to act in this way so that Velum has been very much been [sic] a critical party to this arrangement.

(Crane Decl. at 16 ¶ 55 (emphasis added).) Mr. Crane defines “the LaserPerformance

Companies” as Quarter Moon, Laser Sailboats Limited, and LaserPerformance LLC and “other companies that make up the LP Topco family.” (Id. at 2 ¶ 4.)

B. The Board Should Exclude from Velum’s Evidence of Record All Theories of Use That Were Not Properly Disclosed During Discovery, and Should Strike Testimony that Is Based on Such Theories

Before the Board, as before other Federal Courts, “[a] party served with a request for discovery has a duty to thoroughly search its records for all information properly sought in the request, and to provide such information to the requesting party within the time allowed for responding to the request.” Panda Travel, Inc. v. Resort Option Enterprises, Inc., 94 U.S.P.Q.2d

1789, 1791 (TTAB 2009). In addition, the Board has reminded parties that “disclosure, from initial through pretrial, and discovery responses should be viewed as a continuum of communication designed to avoid unfair surprise.” See TBMP § 408.01(b) (citing Spier Wines

(PTY) Ltd. v. Ofer Z. Shepher, 105 U.S.P.Q.2d 1239, 1246 (TTAB 2012)). Because parties are duty-bound to cooperate in discovery, the failure to do so rightly has significant consequences.

The Trademark Board Manual of Procedure provides that in the face of a failure to provide requested, relevant discovery, a party may move to prohibit the disobedient party from introducing designated matters into evidence or may seek an estoppel sanction striking evidence not properly produced. TBMP § 527.01(e). As the Board explained in Spier Wines (PTY) Ltd. v.

Ofer Z. Shepher, “[u]nder the estoppel sanction, a party that fails to provide information via disclosure or appropriate response to a discovery request may, upon motion or objection by its adversary, be precluded from using that information or witness at trial, ‘unless the failure was substantially justified or is harmless.”’ 105 U.S.P.Q.2d at 1242 (TTAB 2012) (quoting Fed. R.

Civ. P. 37(c)(1); 37 C.F.R. § 2.116(a)). To determine whether a discovery failure was substantially justified or harmless the Board relies on the five-factor test endorsed in Great Seats,

Inc. v. Great Seats, Ltd.: “1) the surprise to the party against whom the evidence would be offered; 2) the ability of that party to cure the surprise; 3) the extent to which allowing the testimony would disrupt the trial; 4) the importance of the evidence; and 5) the non-disclosing party's explanation for its failure to disclose the evidence.” 100 U.S.P.Q.2d 1323, 1327 (TTAB

2011).

Furthermore, “[a] responding party which … provides an incomplete response to a discovery request, may not thereafter rely at trial on information from its records which was properly sought in the discovery request but was not included in the response thereto (provided that the requesting party raises the matter by objecting to the evidence in question) unless the response is supplemented in a timely fashion.” Panda Travel, 94 U.S.P.Q.2d at 1791; see also

Quality Candy Shoppes/Buddy Squirrel of Wisconsin, Inc. v. Grande Foods, 90 U.S.P.Q.2d

1389, 1394 (TTAB 2007) (explaining that “Respondent cannot rely on information that was not properly disclosed during discovery” and noting that Respondent “has given no viable reason for delaying its supplementation of its discovery responses to after trial had commenced”); Warner

Bros. Entm’t Inc. v. Akke Wagenaar, Opposition No. 91186293, 2012 WL 6654126, at *2

(TTAB 2012) (“A large number of exhibits (and related testimony) has been stricken because they consist of documents that opposer requested during discovery but that applicant failed to produce at that time.”).

Here, BKI made a deliberate effort in discovery to avoid being surprised at trial by requesting information concerning Velum’s allegations of use of the Laser Service Mark. (See

BKI002B.) Velum, however, changed its theories after discovery closed to allege that “the

LaserPerformance Companies” have a license to use the Laser Service Mark. Such unfair surprise and sandbagging is not acceptable. Moreover, Velum had ample time amend its responses to cure its discovery deficiencies during the discovery period, but it chose not to do so, and it has made no explanation for its failure to disclose such clearly responsive evidence. See

Great Seats, Inc., 100 U.S.P.Q.2d at 1327. In addition, reopening discovery so as not to prejudice BKI would unnecessarily disrupt the trial. See id. For at least these reasons, Velum should be estopped from presenting evidence and testimony concerning allegations of use of the

Laser Service Mark by the LaserPerformance Companies.

TABLE OF OBJECTIONS

Evidence Description Objection(s) Crane Decl. The Registrant has no Not based on first-hand paragraph 5 ownership connection with or knowledge (FRE 601); lacks control over authentication (FRE 901) Performance Sailcraft Japan or Performance Sailcraft Australia Crane Decl. "Velum’s registered LASER Relevance (FRE 401) paragraph 7 trademark rights extend to use of the LASER trademark on goods such as sailboats (including parts and accessories) in International Class 12, sails in International Class 22 . . . ." Crane Decl. "The LASER trademarks have Relevance (FRE 401 and 402); paragraph 8 been used by the not identified during discovery; LaserPerformance Companies excluded pursuant to Fed. R. Civ. in connection with the P. 37(c)(1); TMBP Section distribution, promotion, sales, 527.01(e). marketing and manufacturing of LASER sailboats . . . ."

Crane Decl. "Velum is the present owner of Relevance (FRE 401 and 402) paragraph 10 the ‘170 Registration." Crane Decl. "2016 Olympic Sailing Relevance (FRE 401 and 402) paragraph 28 Competition-Class Agreement" and Exhibit F

Crane Decl. Entire paragraph Lack of personal knowledge Paragraph 29 (FRE 602); Lack of foundation; Lack of Authentication (901); speculation Crane Decl. Entire paragraph and exhibit Hearsay (FRE 802); Lack of paragraph 31 personal knowledge (FRE 602). and Exhibit G Crane Decl. Entire paragraph and exhibit Relevance (FRE 401 and 402) paragraph 32 and Exhibit H Crane Decl. Entire paragraph Relevance (FRE 401 and 402) paragraph 33 Crane Decl. Entire paragraph Relevance (FRE 401 and 402) paragraph 34 Crane Decl. Entire paragraph and exhibit Relevance (FRE 401 and 402) paragraph 35 and Exhibit I Crane Decl. Entire paragraph Relevance (FRE 401 and 402) paragraph 36 Crane Decl. "PSE is the predecessor Lack of authentication (FRE 901) paragraph 37 company to LaserPerformance (Europe) Limited by a simple name change." Crane Decl. Lack of personal knowledge paragraph 42 (FRE 602); Lack of foundation; Lack of Authentication (901); assumes facts not in evidence

Crane Decl. Lack of personal knowledge paragraph 43 (FRE 602); Lack of foundation; Lack of Authentication (901); speculation; assumes facts not in evidence Crane Decl. Entire paragraph Lack of personal knowledge paragraph 44 (FRE 602); Lack of foundation; Lack of Authentication (901)

Crane Decl. Entire paragraph Lack of personal knowledge paragraph 45 (FRE 602); Lack of foundation; Lack of Authentication (901); speculation; assumes facts not in evidence Crane Decl. Entire paragraph Lack of personal knowledge paragraph 46 (FRE 602); Lack of foundation; Lack of Authentication (901); assumes facts not in evidence Crane Decl. Entire paragraph Lack of personal knowledge paragraph 49 (FRE 602); Lack of foundation; Lack of Authentication (901); assumes facts not in evidence Crane Decl. Entire paragraph Lack of personal knowledge paragraph 50 (FRE 602); Lack of foundation; Lack of Authentication (901); assumes facts not in evidence

Crane Decl. "ILCA is presently in a dispute Lack of relevance (FRE 401 and paragraph 51 with the LaserPerformance 402); Lack of personal Companies regarding the ILCA knowledge (FRE 602); Lack of License Agreement. . . . I foundation; Lack of believe that ILCA’s Authentication (901); assumes Constitution required that ILCA facts not in evidence hold a vote prior to filing the Faust declaration, since Section 5 of the Constitution explicitly states that ILCA’s powers 'shall be vested in and carried out by the World Council.' Moreover, this particular declaration was filed by ILCA in opposition to the interests of one of the members of its World Council and potentially impacts the sport of LASER sailing."

Crane Decl. Entire paragraph and Exhibit Lack of relevance (FRE 401 and paragraph 53 402); hearsay (FRE 802); lack of and Exhibit K foundation; lack of authentication (FRE 901); assumes facts not in evidence

Crane Decl. Entire paragraph Lack of relevance (FRE 401 and paragraph 54 402); assumes facts not in evidence Crane Decl. Entire paragraph Lack of foundation; excluded paragraph 55 pursuant to Fed. R. Civ. P. 37(c)(1); TMBP Section 527.01(e). Crane Decl. Entire paragraphs and Exhibits Lack of relevance (FRE 401 and paragraphs 56- 402); hearsay (FRE 802) as to the 66 and Exhibits exhibits; lack of foundation; not M-Y identified during discovery; excluded pursuant to Fed. R. Civ. P. 37(c)(1); TMBP Section 527.01(e).

Crane Decl. Entire paragraph and Exhibit Lack of relevance (FRE 401 and paragraph 67 402); and Exhibit Z Crane Decl. Entire paragraphs and Exhibits Lack of relevance (FRE 401 and paragraphs 68- 402); hearsay (FRE 802) as to the 72 and Exhibits exhibits; lack of foundation AA-EE and L Crane Decl. Entire paragraph and Exhibit Lack of relevance (FRE 401 and paragraph 73 402) and Exhibit FF Crane Decl. Entire paragraphs and Exhibits Lack of relevance (FRE 401 and paragraphs 74- 402); hearsay (FRE 802) as to the 77 and Exhibits exhibits; lack of foundation HH-KK Crane Decl. Entire paragraph Lack of relevance (FRE 401 and paragraph 78 402); not identified during discovery; excluded pursuant to Fed. R. Civ. P. 37(c)(1); TMBP Section 527.01(e). Crane Decl. Entire paragraph Lack of relevance (FRE 401 and paragraph 79 402); not identified during discovery; excluded pursuant to Fed. R. Civ. P. 37(c)(1); TMBP Section 527.01(e).

Crane Decl. ". . . LaserPerformance supplied Lack of relevance (FRE 401 and paragraph 80 the LASER boats. 402); not identified during LaserPerformance was a major discovery; excluded pursuant to sponsor of ILCA-NA during Fed. R. Civ. P. 37(c)(1); TMBP this year, providing financial Section 527.01(e). support and a non-voting representative to ILCA-NA class and executive committee meetings." Crane Decl. "LaserPerformance was a Lack of relevance (FRE 401 and paragraph 81-83 sponsor of ILCA-NA during the 402); not identified during time of this event, providing discovery; excluded pursuant to financial support and a non- Fed. R. Civ. P. 37(c)(1); TMBP voting representative to ILCA- Section 527.01(e). NA class and executive committee meetings."

Crane Decl. "LaserPerformance supplied Lack of relevance (FRE 401 and paragraph 84 boats and assistance for this 402); not identified during event through its dealer, West discovery; excluded pursuant to Coast Sailing." Fed. R. Civ. P. 37(c)(1); TMBP Section 527.01(e). Crane Decl. Entire paragraph and Exhibit Lack of relevance (FRE 401 and paragraph 90 MM 402); hearsay (FRE 802); lack of and Exhibit MM foundation; lack of authentication (FRE 901); speculation; assumes facts not in evidence Crane Decl. Entire paragraphs Lack of relevance (FRE 401 and paragraph 91-94 402); hearsay (FRE 802); lack of foundation; lack of authentication (FRE 901); speculation Crane Decl. "The ‘170 Registration for the Lack of relevance (FRE 401 and paragraph 95 LASER mark is explicitly 402); hearsay (FRE 802); lack of identified in Schedule B foundation; lack of annexed to the Head Agreement authentication (FRE 901); as a trademark registration that speculation; assumes facts not in Kirby Inc. cannot seek to evidence invalidate under Article 4.2."

Crane Decl. Entire paragraphs Lack of relevance (FRE 401 and paragraphs 96- 402); hearsay (FRE 802); lack of 97 foundation; lack of authentication (FRE 901); speculation; assumes facts not in evidence Velum’s First Dkt. 1 (Petition to Cancel); Dkt. Lack of relevance (FRE 401 and Notice of 18 (Registrant’s Motion for 402); hearsay (FRE 802); lack of Reliance, Summary Judgment); Dkt. 23 foundation; lack of VELUM1014 (Petitioner’s Withdrawal of authentication (FRE 901); Cancellation Proceeding) improper documents for notice of reliance (TBMP § 704.06); assumes facts not in evidence Velum’s First Dkt. 183 (ILCA Motion for Lack of relevance (FRE 401 and Notice of Summary Judgment and 402); hearsay (FRE 802); lack of Reliance, accompanying documents) foundation; lack of VELUM1015 authentication (FRE 901); improper documents for notice of reliance (TBMP § 704.06); assumes facts not in evidence Faust Tr. 32:1- Questions by Counsel for Objections as stated on the 34:20; 36:12- Velum record: Assumes facts not in 37:1 evidence; calls for legal conclusion; calls for speculation; lack of foundation; vague; outside the scope of Mr. Faust's direct testimony; asked and answered. Faust Tr. 43:8- Questions by Counsel for Objections as stated on the 44:25; 47:2- Velum record: Assumes facts not in 50:8 evidence; calls for legal conclusion; calls for speculation; lack of foundation; vague; outside the scope of Mr. Faust's direct testimony; asked and answered; calls for hearsay; attorney-client privilege.

Faust Tr. 51:17- Questions by Counsel for Objections as stated on the 54:7 and Exhibit Velum and Exhibit record: lack of foundation; 6 vague; partial document; no authentication; calls for speculation; misstates the witness' testimony

Faust Tr. 68:8- Questions by Counsel for Objections as stated on the 20 Velum record: lack of foundation; vague; calls for legal conclusion; calls for speculation Faust Tr. 76:7- Questions by Counsel for Objections as stated on the 81:23 and Ex. 8 Velum and Exhibit record: document not produced in discovery; document not authenticated; calls for a legal conclusion; calls for speculation; lack of foundation; prejudicial; irrelevant; vague; hearsay; document speaks for itself; misstates witness' testimony; argumentative; assumes facts not in evidence; compound

Faust Tr. 96:10- Questions by Counsel for Objections as stated on the 24 Velum record: assumes facts not in evidence; compound; calls for a legal conclusion; calls for speculation Faust Tr. Questions by Counsel for Objections as stated on the 110:13-114:23 Velum record: lack of foundation; calls for a legal conclusion; seeking testimony on a document not in evidence; prejudicial; calls for speculation; assumes facts not in evidence; document speaks for itself (assuming it exists); compound; calls for hearsay

Faust Tr. Questions by Counsel for Objections as stated on the 114:24-116:17 Velum and Exhibit record: lack of foundation; and Exhibit 6 assumes facts not in evidence; mischaracterizes the document; calls for speculation; calls for legal conclusion; calls for hearsay Faust Tr. Questions by Counsel for Objection as stated on the record: 118:16-24 and Velum and Exhibit lack of authentication Exhibit 9 Faust Tr. Questions by Counsel for Objection as stated on the record: 120:25-121:12 Velum calls for hearsay

Faust Tr. 141:6- Questions by Counsel for Objections as stated on the 147:11 and Velum and Exhibit record: lack of foundation; Exhibit 10 document not produced in discovery; calls for hearsay; not authenticated; prejudicial; calls for legal conclusion

Faust Tr. 148:7- Questions by Counsel for Objections as stated on the 149:22 Velum record: calls for hearsay; lack of foundation; calls for speculation; vague; assumes facts not in evidence Faust Tr. 153:13 Questions by Counsel for Objections as stated on the - 155:20 Velum record: vague; asked and answered; argumentative; assumes facts not in evidence; calls for speculation; calls for legal conclusion; compound; misstates witness' testimony; lack of foundation Faust Tr. Questions by Counsel for Objections as stated on the 158:22-159:4 Velum record: misstates the witness' testimony Faust Tr. Questions by Counsel for Objections as stated on the 159:19-162:7 Velum record: assumes facts not in evidence; lack of foundation; calls for a legal conclusion; calls for speculation; vague; argumentative; misstates the witness' testimony; compound; confusing Faust Tr. 162:8- Questions by Counsel for Objections as stated on the 164:11 Velum record: calls for speculation; calls for legal conclusion; assumes facts not in evidence; misstates the witness' testimony; vague; asked and answered

APPENDIX B

Case AppxB#

Ennis, Inc. v. Joel L. Beling d/b/a Supa Characters Pty Ltd, AppxB001-015 Opposition No. 91203884, 2017 WL 412412 (TTAB Jan. 12, 2017) Esrt Empire State Bldg., L.L.C. (Substituted for Empire AppxB016-027 State Bldg. Co. L.L.C.) v. Michael Liang, Opposition No. 91204122, 2016 WL 3771775 (TTAB June 17, 2016) In-Flight Phone Corp. v. J. Anselmo, Inc., AppxB028-032 Cancellation No. 92024090, 1998 WL 80134 (TTAB Feb. 26, 1998) Jeanette K. Daniels v. TGN Services, LLC, AppxB033-046 Opposition No. 91204462, 2016 WL 6648972 (TTAB Oct. 11, 2016) Jonathan L. Fox v. JMIR Publications Inc., AppxB047-054 Cancellation No. 92056565, 2015 WL 2412171 (TTAB Apr. 29, 2015) Linkedin Corp. v. Int’l Council for Educ. Reform and Dev. (ICERD), AppxB055-062 Opposition No. 91225285, 2018 WL 529851 (TTAB Jan. 19, 2018) Nougat London Ltd. v. Carole Garber, AppxB063-067 Cancellation No. 92040460, 2003 WL 21206253 (TTAB May 14, 2003) Warner Bros. Entm’t Inc. v. Akke Wagenaar, AppxB068-075 Opposition No. 91186293, 2012 WL 6654126 (TTAB 2012)

ENNIS, INC. v. JOEL L. BELING D1B1A SUPA..., 2017 WL 412412 (2017)

2017 WL 412412 (Trademark Tr. & App. Bd.)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)

ENNIS, INC. v. JOEL L. BELING D/B/A SUPA CHARACTERS PTY LTD

Opposition No. 91203884 to application Serial No. 85324443 January 12, 2017 *1 Daniel J. Chalker of Chalker Flores LLP for Ennis, Inc. Joel L. Beling, pro se

Before Cataldo, Bergsman and Adlin Administrative Trademark Judges Opinion by Cataldo Administrative Trademark Judge:

Ennis, Inc. (“Opposer”) has opposed Joel L. Beling's (“Applicant”) application to register COLOR WARS (in standard characters) for the following goods in International Class 16: 1 Adhesive bands for stationery or household purposes; Adhesive foils stationery; Adhesive tape dispensers for household or stationery use; Adhesive tapes for stationery or household purposes; Adhesive tapes for stationery purposes; Adhesives for stationery and household use; Adhesives for stationery or household purposes; Adhesives for stationery purposes; Adhesives in the form of tape for stationery; Art prints; Automatic paper clip dispensing machines for office or stationery use; Books in the field of superhero and cartoon characters; Brochures about superhero and cartoon characters; Cartoon prints; Cartoon strips; Color pencils; Color prints; Colorboard; Colored craft and art sand; Coloring books; Comic books; Comic magazines; Comic strips; Comic strips appearing in newspapers and other media; Comic strips' comic features; Comics; Desk mounted stationery cabinets; Desktop stationery cabinets; Dispensers for adhesive tapes for stationery or household purposes; Educational publications, namely, educational learning cards, flash cards, activity cards, workbooks, textbooks, activity books, story books, puzzle books, printed puzzles, teacher guides, manuals, posters and educational booklets in the field of superhero and cartoon characters; Envelopes for stationery use; File pockets; Glitter glue for stationery purposes; Glitter pens for stationery purposes;

Glue for stationery or household purposes; Glue for stationery or household use; Glue pens for stationery purposes; Glue sticks for stationery or household use; Graphic fine art prints; Graphic prints and representations; Gummed tape for stationery or household use; Liquid paint felt tip marking and coloring applicators; Magazine columns about superhero and cartoon characters; Magazine sections in the field of superhero and cartoon characters; Magazine supplements to newspapers in the field of superhero and cartoon characters; Magazines in the field of superhero and cartoon characters; Newsletters in the field of superhero and cartoon characters; Newspaper cartoons; Newspaper comic strips; Office paper stationery; Office stationery; Organizational kit used in planning the design and apparel for special events containing color selection sample sheets, planning folders and fabric swatches; Organizational kits containing calendars, stationery, planning folders, templates and printed guidelines for planning social events; Organizers for stationery use; Packaged kits comprising printed instructional, educational, and teaching materials for educational activities in the field of superhero and cartoon characters; Paper stationery; Paper stationery with inspirational messages imprinted thereon;

Partially printed forms; Paste for handicraft, for stationery or household purposes (banjakunori); Paste for stationery or household purposes; Pastes and other adhesives for stationery or household purposes; Pencil ornaments;

*2 Personalized coloring books for children; Photographic prints; Pictorial prints; Polyester film for use as a paper substitute for dry toner xerographic imaging, namely, laser printing, color copier printing, dry toner printing, screen printing, and offset printing; Print engravings; Print letters and blocks; Printed art reproductions; Printed calendars; Printed certificates; Printed certificates for sports and/or entertainment fans; Printed certificates in the field of sports and/ or entertainment; Printed children's coloring pages; Printed collector cards made primarily of paper and also including metal; Printed collector cards made primarily of paper but also including metal; Printed emblems; Printed forms; Printed graphs; Printed greeting cards with electronic information stored therein; Printed holograms; Printed material in the nature of color samples; Printed materials, namely, curricula in the field of superhero and cartoon characters; Printed materials, namely, journals featuring superhero and cartoon characters; Printed materials, namely, novels and series of fiction books and short stories featuring scenes and characters based on video games; Printed materials, namely, press releases featuring superhero and cartoon characters; Printed materials, namely, written articles in the field of superhero and cartoon characters; Printed matter, namely, paper signs, books, manuals, curriculum, newsletters, informational cards and brochures in the field of superhero and cartoon characters;

Printed music books; Printed news releases in the field of superhero and cartoon characters; Printed pamphlets, brochures, manuals, books, booklets, leaflets, flyers, informational sheets and newsletters, adhesive backed stickers, and kits comprising one or more of the foregoing materials in the field of superhero and cartoon characters; Printed paper labels; Printed paper signs; Printed patterns; Printed periodicals in the field of movies; Printed periodicals in the field of music; Printed periodicals in the field of plays; Printed periodicals in the field of tourism; Printed wine and beer bottle labels incorporating a feature that changes color in response to fluctuation in temperature of the contents of the bottle to which the label is affixed; Prints; Prints in the nature of superhero and cartoon characters; Protractors; Publications, namely, brochures, booklets, and teaching materials in the field of superhero and cartoon characters; Publications, namely, books, journals, magazines and comic books in the fields of superhero and cartoon characters; Red algae gelatine glue, for stationery or household purposes (funori); Reinforced stationery tabs; Seals; Self- adhesive tapes for stationery and household purposes; Souvenir programs concerning superhero and cartoon characters; Stationery; Stationery boxes; Stationery cases; Stationery folders; Stationery writing paper and envelopes; Stationery- type portfolios; Stickers; Syndicated columns dealing with superhero and cartoon characters; Syndicated magazine sections dealing with superhero and cartoon characters; Syndicated newspaper columns dealing with superhero and cartoon characters; Workbooks directed to superhero and cartoon characters.

The Pleadings.

*3 The sole ground for opposition is likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). 2 Opposer pleaded ownership of Registration No. 3372884 for the mark displayed below, in connection with “printing services” in International Class 40: 3

Applicant's answer denied the salient allegations contained in the Notice of Opposition and asserted amplifications of his denials as “affirmative defenses.” 4 Applicant also filed a separate petition to cancel Opposer's pleaded registration on various grounds which the Board treated as a counterclaim. Opposer denied the salient allegations in the counterclaims.

Procedural History.

On September 30, 2013, the Board issued a decision addressing the parties' cross-motions for summary judgment on Applicant's counterclaim, which dismissed Applicant's counterclaim petition to cancel Opposer's pleaded registration. 5

On February 27, 2015, the Board issued a decision addressing: Opposer's motion for summary judgment on its pleaded claim of likelihood of confusion or, in the alternative, to amend the opposed application; Applicant's motion for leave to amend its answer to add as “affirmative defenses” Opposer's lack of standing and that Opposer is a trademark bully; and Applicant's motion for summary judgment on its proposed new defenses. 6 In that decision, the Board:

• denied Applicant's motion to add his proposed affirmative defenses on the basis that standing is an element of Opposer's claim and not an affirmative defense, and that as Applicant acknowledges, trademark bullying is not recognized as an affirmative defense;

• held that, in view thereof, Applicant's summary judgment motion on its proposed defenses was moot;

• dismissed the opposition with prejudice as to Applicant's Class 41 services based upon Opposer's withdrawal thereof without Applicant's written consent after answer was filed;

• granted Opposer's summary judgment motion with regard to its standing and priority as to the mark and services identified in its pleaded registration;

• denied Opposer's summary judgment motion with regard to likelihood of confusion; and

• denied Opposer's unconsented motion in the alternative to amend the involved application.

With regard to Opposer's motion to amend, we stated: Opposer contends (Motion for Summary Judgment, p. 15) that it is “entitled to judgment as a matter of law that a likelihood of confusion between Opposer's mark COLOR WORX and design for printing services and Applicant's mark COLOR WARS in International Class 16 for a multitude of goods will be minimized if the Board enters an order amending Applicant's identification of goods... .” This was not a pleaded allegation in the notice of opposition. Moreover, Opposer cites to no rule or case law, and the Board is aware of none, for the proposition that, in lieu of Opposer meeting

© 2018 Thomson Reuters. No claim to original U.S. Government Works. 3 AppxB003 ENNIS, INC. v. JOEL L. BELING D1B1A SUPA..., 2017 WL 412412 (2017) its burden of proving likelihood of confusion, Opposer may simply assert that confusion is likely and the Board will order an amendment of the opposed application without applicant's consent. See Trademark Rule 2.133.

*4 Opposer is advised that the Board will exercise its authority under Trademark Act Section 18 to “modify the application or registration by limiting the goods or services specified therein ... as the rights of the parties under this chapter may be established in the proceedings” only where the issue of possible restriction has been raised by the pleadings and/or is tried by the parties. Eurostar, Inc. v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1272 (TTAB 1995). 7

Opposer's Motions to Amend its Pleading.

Section 18 Modification of Involved Application

Opposer argues in its brief that Ennis did not plead a Section 18 remedy in its Notice of Opposition. (TTABVUE #122, pg. 13). But such an issue can be tried by express or implied consent of the parties. See TMBP § 507.03(b). “Implied consent to the trial of an unpleaded issue can be found only where the nonoffering party (1) raised no objection to the introduction of evidence on the issue, and (2) was fairly apprised that the evidence was being offered in support of the issue” Id.; see e.g., UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1872 n.3 (TTAB 2011). In this case, the Section 18 remedy to amend some of the goods in Mr. Beling's application to specify “in the field of superhero and cartoon characters” was argued in Ennis' Motion for Summary Judgment. (TTABVUE #107, pg. 3). Although Mr. Beling rejected any amendment of his application, he did not object to it as a non-pleaded issue. Moreover, the issue was raised during discovery. (ONR Exh. 6, Interrogatory No. 22). Furthermore, the USPTO required Applicant to amend some of its goods and services to recite the limitation of “in the field of superhero and cartoon characters.” (TTABVUE #107, pg. 3). As a result, Mr. Beling raised no objection to the introduction of evidence on the issue and was fairly apprised of the issue. Accordingly, Ennis' alternative remedy under Section 18 to amend Mr. Beling's description of goods in International Class 16 was and is being tried by implied consent. 8

Ennis requests the Board to consider this as a motion to amend the pleadings pursuant to Fed. R. Civ. P. 15(b) and TBMP § 507.03(b) since there is no doubt that Mr. Beling is aware the issue is being tried. 9

Opposer acknowledges that it did not plead a request to modify the identification of goods in the involved application under Section 18 of the Trademark Act, 15 U.S.C. § 1068. Thus, we must determine whether the issue was tried by implied consent. As noted above, Opposer first raised the issue of its proposed amendment in its motion for summary judgment. 10 Applicant addressed Opposer's request to amend the involved application in his response and cross-motion for summary judgment, arguing that “opposer's demand that applicant further amend his application to settle this proceeding are inappropriate and improper.” 11 Further, in his objections to Opposer's evidence, filed contemporaneously with his main brief in the opposition, Applicant *5 objects to Opposer's untimely and prejudicial attempt to restrict applicant's description of goods pursuant to § 18 of the Lanham Act, (147 TTABVUE 33-39), on the basis that it was not pleaded in opposer's notice of opposition and applicant had no notice whatsoever that opposer would attempt to introduce it in his final brief as a pleaded issue. 12

Applicant further argues that Opposer did not amend its pleading to assert a § 18 restriction after the Board's denial thereof in our February 27, 2015 order 13 “despite a period of at least eight months within which to do so,” and that

Applicant's express or implied consent “are denied and have been denied from the first time opposer raised the attempted resolution.” 14 Applicant did not address Opposer's proposed restriction to Applicant's recited goods on the merits.

Opposer essentially argues that while Applicant objected to Opposer's proposed amendment of his application in his response to Opposer's summary judgment motion, he did not object on the basis that such amendment was an unpleaded issue. Opposer also argues that because the issue of amendment was raised during discovery, and Applicant was required to amend its identification of Class 16 goods during examination, he was apprised that the issue was being tried and consented thereto. However, Applicant argued in his summary judgment response and cross-motion that the proposed amendment was “inappropriate and improper,” and strenuously objects to the proposed amendment in his objections accompanying his brief on the ground that it is “untimely and prejudicial,” that Applicant “had no notice whatsoever” that the issue of the amendment was being tried, and that any asserted consent to trial of the issue was repeatedly denied.

We disagree with Opposer's contention that Applicant raised no objection to the introduction of evidence on Opposer's proposed restriction of the involved application. To the contrary, Applicant objected to Opposer's interjection of its motion to amend when it was first raised at summary judgment and in Opposer's brief. We will not infer from Applicant's failure to specifically object on the basis that the issue was untried that he somehow waived that objection or otherwise consented to trial thereof. Clearly, Applicant objected to the introduction of evidence on this issue. Therefore, the issue was not tried by implied consent and will be given no further consideration.

Common Law Rights in Colorworx Mark

In a footnote in its brief, Opposer also moved to amend its pleading to assert common law rights as to the word mark, Colorworx. 15 Ennis has asserted its common law rights in its COLORWORX word mark and provided evidence of same at least in its Motion for Summary Judgment and the Declarations and Deposition of Steven Osterloh. (TTABVUE #107). In the event the Board determines that this is an unpleaded issue, Ennis requests the Board to consider this as a motion to amend the pleadings pursuant to Fed. R. Civ. P. 15(b) and TBMP § 507.03(b) since there is no doubt that Mr. Beling is aware the issue is being tried. Mr. Beling's challenges to the evidence based on estoppel have been repeatedly denied. (See e.g., TTABVUE #44, 83, 103 at 4-5). 16

*6 In his objections to Opposer's evidence, Applicant objects to the sixth and seventh paragraphs on page 2 of the affidavit of Mr. Steven Osterloh dated May 16, 2015, concerning opposer's reliance on its common law rights to the mark COLORWORX (word only) (128 TTABVUE 6), to all other evidence submitted by opposer showing the mark COLORWORX (word only), and to all references in opposer's brief to opposer's common law rights to the mark COLORWORX (word only) (147 TTABVUE 19-21, 24-25, 29-31, 34, 39), on the basis that these rights were not pleaded by opposer in its notice of opposition and in fact cause significant prejudice and surprise to applicant. TTABVUE #1. Opposer cannot obtain judgment on an unpleaded issue. TBMP § 528.07(a). Similarly, opposer's untimely and prejudicial motion to amend pleadings, buried in a footnote, should also be denied. 147 TTABVUE 20-21 n. 3. 17

In reply, Opposer argues Mr. Beling objected to Ennis' reliance on its common law rights to the COLORWORX word mark because “these rights were not pleaded by opposer in its notice of opposition and in fact cause significant prejudice and surprise to applicant.” (TTABVUE #151 at 1; TTABVUE #150 at 7n.2). The phrase “common law rights” was not used in the Notice of Opposition, but Ennis defined the term “Opposer's Mark” to refer its trademark registration (design plus words), and also used the undefined term “COLORWORX Mark.” (See e.g., TTABVUE #1 at 6). Even if the use of

© 2018 Thomson Reuters. No claim to original U.S. Government Works. 5 AppxB005 ENNIS, INC. v. JOEL L. BELING D1B1A SUPA..., 2017 WL 412412 (2017) the two terms in the Notice of Opposition is not found to provide proper notice of Ennis' common law rights to the COLORWORX word mark, Mr. Beling was aware of the issue, has tried the issue before the Board and will not be prejudiced by amending the pleadings to conform to the evidence. 18

***

In this case, Mr. Beling has not been disadvantaged in presenting his case because he deposed Ennis' witness on the issue and argued the issue at trial. Mr. Beling asked, during the deposition of Mr. Osterloh, whether Ennis was claiming rights to the separate portions of the mark (i.e., the word COLORWORX separately from the design element) in addition to the registered mark (i.e., the design plus words): Q. Okay. So you're not claiming -- like, you are claiming, obviously, rights to the mark as a whole, but you are also claiming rights to the two distinct portions?

A. I -- We claim the rights to the word, “COLORWORX,” all one word, as well as to the design mark itself. Separately, yes.

(TTABVUE 132 at 4 (deposition page 11)). In response to Ennis' Motion for Summary Judgment, Mr. Beling objected to the use of common law rights to show standing (TTABVUE #110 at 10), but argued no likelihood of damage or harm based on an analysis of the words in the respective marks. 19

***

Based on the foregoing, Mr. Beling conducted discovery regarding Ennis' claim to rights in its COLORWORX word mark, and argued both before and during trial that the words were allegedly dissimilar and not likely to cause confusion. As a result, Mr. Beling had notice of the issue before trial, and has presented evidence and arguments at trial to prove his case. Mr. Beling has not and cannot show the Board that: (a) the evidence of Ennis' common law rights to the COLORWORX word mark would prejudice his defense on the merits pursuant to Fed. R. Civ. P. 15(b)(1); or (b) the issue has not been tried by the parties' express or implied consent pursuant to Fed. R. Civ. P. 15(b)(2). Accordingly, the Board should: (a) overrule Mr. Beling's objections to Ennis' evidence and arguments relating to its common law rights in the COLORWORX word mark; (b) treat the issue in all respects as if raised in the pleadings; and (c) permit the Notice of Opposition to be amended. 20

*7 We address Opposer's arguments in turn. In its notice of opposition, Opposer alleges Opposer is the owner of U.S. Trademark Registration No. 3,372,884 for the mark COLORWORX® (“Opposer's Mark”). Opposer's Mark is valid, subsisting, and in full force and effect. Since as early as August, 2002, Opposer, its predecessors, or its related companies have continuously used the COLORWORX Mark in interstate commerce as a trademark for a variety of printing goods and printing services including, but not limited to, business cards, letterhead, sell sheets, rack cards, postcards, brochures and posters (“Opposer's Goods”). Opposer's Mark has also continuously appeared in substantial advertising and promotion of Opposer's printing goods and printing services, such that the mark is closely identified with Opposer's Goods and has gained very valuable public recognition. Opposer has established an outstanding reputation as to the quality of its products sold under the COLORWORX Mark. 21

Opposer's allegations regarding its “COLORWORX Mark” in this paragraph relate to “the mark COLORWORX® (‘Opposer's Mark’)” in its pleaded registration. We find nothing in this allegation, or in the other allegations comprising the notice of opposition, to indicate that Opposer also asserted common-law rights to the word mark Colorworx or another mark consisting in part of Colorworx. Similarly, it is not clear from Opposer's assertions regarding use of its “COLORWORX Mark” in connection with “a variety of printing goods and printing services” that it is asserting use of such mark in connection with printed goods separate from its printing services that create such goods. Nor do we find that Applicant's answer or any of its filings recognize such assertions.

Mr. Osterloh states in his testimony affidavit that Opposer “is the owner of the common law mark COLORWORX (word only)” in connection with various printed goods and printing services. 22 This appears to be the first clear indication that Opposer asserts ownership of such a mark. During his deposition by Applicant, Mr. Osterloh somewhat ambiguously states that Opposer is claiming rights to the term Colorworx and the design element in its pleaded registration “separately.” 23 However, there is no indication, prior to a footnote in Opposer's brief, that Opposer intended to rely upon common law rights in a Colorworx word mark as a basis for its pleaded claim of likelihood of confusion. While it is clear Opposer claims, and pleads, the mark COLORWORX and design, it was not clear during trial whether Opposer also claims rights in the term Colorworx separate from the design and/or the design separate from the wording. The remainder of Mr. Osterloh's affidavit and discovery deposition sheds little further light on the issue. Similarly, we do not infer from Applicant's argument at summary judgment directed toward differences in the wording in Opposer's mark and Applicant's mark that Applicant acknowledged Opposer's common-law rights in a Colorworx word mark. Indeed, such an inference is inconsistent with Applicant's arguments in its summary judgment response and cross motion that “Opposer cannot rely on its common law rights to show standing because these were not pleaded in its Notice of Opposition.” 24 Again, in addition to Applicant's objections to the introduction of evidence on this issue, there is considerable doubt on the record regarding Applicant's awareness that Opposer intended to rely upon common law rights in a Colorworx word mark. See Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1927 (TTAB 2011), on appeal, No. 1:11-cv-01623-RC (D.D.C.); Safer Inc. v. OMS Investments Inc., 94 USPQ2d at 1034-35.

*8 “Fairness dictates whether an issue has been tried by consent -- there must be an absence of doubt that the nonmoving party is aware that the issue is being tried.” TBMP § 507.03, citing Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d at 1927 (petitioner's “family of marks” claim, raised for the first time in its brief not considered because it was neither pleaded nor tried by the parties), on appeal, No. 1:11-cv-01623-RC (D.D.C.); Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1034-35 (TTAB 2010) (applicant was not aware opposer intended to rely on registration to prove likelihood of confusion until opposer filed rebuttal notice of reliance). In this case, Opposer first asserts its reliance upon common-law rights in a Colorworx word mark in a footnote in its brief and did not fully articulate its position until its reply brief. In view of the foregoing, Opposer's motion to amend its pleading to assert its alleged common law rights is denied, Opposer's proposed amendment will be given no further consideration and Opposer's arguments in its brief directed toward its putative word mark will not be further considered. 25

Applicant's Motion for Reconsideration.

In his brief, Applicant requests renewed reconsideration of several interlocutory orders issued in this proceeding, relating to his proposed affirmative defense of trademark bullying. We agree with Opposer that because the interlocutory decisions complained of all issued more than one month prior to Applicant's filing of his motion, it is untimely. Trademark Rule 2.127(b); 37 C.F.R. § 2.127(b). See Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Manufacturing Co., 55 USPQ2d 1848, 1854 (TTAB 2000). See also TBMP § 518 and authorities cited therein. We further agree with Opposer that because Applicant's previous requests for reconsideration of these orders were denied, and Trademark Rule 2.127(b) does not contemplate a second request for reconsideration of the same basic issue, Applicant's renewed motion for reconsideration is improper. See Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626, 631 n.11

(TTAB 1986); Avedis Zildjian Co. v. D.G. Baldwin Co., 181 USPQ 736, 736 (Comm'r 1974). In view thereof, Applicant's renewed motion for reconsideration will be given no further consideration.

Trademark Bullying or “Overenforcement.”

As discussed above, in an interlocutory decision the Board previously denied Applicant's motion to add this proposed affirmative defense. 26 Nonetheless, Applicant devotes a considerable portion of his brief 27 to arguing what he acknowledges is his novel theory of trademark bullying or “overenforcement” “for the purposes of creating a new affirmative defense aimed at protecting trademark applicants by preventing overenforcement of rights held in a mark and discouraging abusive litigation tactics.” 28 However, as we previously held, trademark bullying or “overenforcement” is not a cognizable affirmative defense in inter partes proceedings before the Board. Accordingly, Applicant's arguments directed toward trademark bullying and overenforcement will be given no consideration.

Evidentiary Issues.

*9 Opposer filed a motion to strike 29 Applicant's June 19, 2015 notice of reliance on 64 putative “facts” and the documents upon which they are based 30 on several grounds, including that the facts in question are not adjudicative facts of which the Board takes notice. In response, Applicant consented to strike the notice of reliance as to alleged “facts” 1-59. 31 Alleged “fact” 60 is based upon a page from Opposer's 2015 Annual Report. This document is sufficiently identified; however, it is relevant only to Applicant's claim of trademark bullying, and as such will be given no consideration. Alleged “facts” 61-64 are based upon documents that appear to have been created by Applicant from an underlying Internet dictionary, although the documents indicate a URL and access date. Because it is not clear from Applicant's notice of reliance whether documents 61-64 are copies of Internet web pages or documents created by Applicant based upon those web pages, they will be given no consideration. Accordingly, Opposer's motion to strike is moot as to “facts” 1-59 and the documents upon which such facts are based, and granted as to “facts” 60-64 and the documents upon which they are based.

In its reply brief, 32 Opposer moves to strike Applicant's notice of reliance upon dictionary definitions of “color,” “work,” “war,” and “bully,” 33 on the ground that it is untimely. The motion is granted because this notice of reliance was filed after the close of testimony and is untimely. Trademark Rule 2.122(e). We further observe that the Board has previously taken judicial notice of the terms “color” and “work” comprising the word portion of Opposer's pleaded mark. 34 The notice of reliance accordingly will be given no consideration.

The parties' remaining evidentiary objections are largely rendered moot as a result of our determination above to not consider Applicant's proposed affirmative defense of trademark bullying, or Opposer's proposed restriction to the involved application or assertion of common law trademark rights in a “Colorworx” mark. The parties' remaining evidentiary objections are not outcome determinative; we thus find no reason to discuss them in detail. Suffice it to say that the parties' testimony and evidence will be considered for its probative value.

Evidence of Record.

The record includes the pleadings, and by operation of Trademark Rule 2.122(b), 37 CFR § 2.122(b), the application file of the opposed application. In addition, the parties introduced testimony as well as notices of reliance. Opposer's testimony and evidence: The testimony affidavit of Mr. Steven Osterloh, Opposer's Vice President of Marketing, with attachments. 35

*10 Notice of reliance on printouts showing the status and title of Opposer's pleaded registration and pending application Serial No. 76698743; printouts of the record for Opposer's pleaded registration; copies of certain of Opposer's written discovery requests and Applicant's objections and responses thereto. 36

Rebuttal notice of reliance on Opposer's supplemental responses to certain of Applicant's written discovery requests. 37

Applicant's Testimony and Evidence. The confidential testimony declaration of Applicant, Joel E. Beling, and exhibits thereto. 38

Notice of reliance on portions of Mr. Osterloh's discovery deposition. 39

Notice of reliance on certain of Opposer's responses to Applicant's written discovery requests. 40

Both parties filed briefs. 41

Standing and Priority.

Standing is a threshold issue that must be proven by the plaintiff in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1061-62 (Fed. Cir. 2014) cert. denied, 135 S. Ct. 1401, 191 L. Ed. 2d 360 (2015); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 187-89 (CCPA 1982). In order to meet the standing requirement, a plaintiff need only show that it has a real interest, i.e., a personal stake, in the outcome of the proceeding. See Ritchie v. Simpson, 170 F.3d 1092, 1095, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727(Fed. Cir. 2012). A belief in likely damage can be shown by establishing a direct commercial interest. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).

Applicant acknowledges in his brief that Opposer is the owner of its pleaded registration. 42 Applicant argues nonetheless that it “does not follow that opposer has a real interest in the outcome of the proceeding, that opposer has discharged its burden, and that, as particularized below, opposer would be damaged by applicant's registration.” 43 Applicant is incorrect.

As discussed above, we previously found as a matter of law on summary judgment that because Opposer's pleaded registration is properly of record, is valid and subsisting and owned by Opposer, Opposer's standing is established. 44 Further, because the registration is properly of record, priority is not in issue as to the services identified therein. King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).

Likelihood of Confusion.

*11 The issue before us is whether Applicant's applied-for mark so resembles Opposer's registered mark as to be likely, when used on or in connection with the goods identified in Applicant's application, to cause confusion, mistake, or deception. 15 U.S.C. § 1052(d). In determining this issue, based on the evidence and arguments presented, we consider the relevant factors bearing on likelihood of confusion enunciated in In re E.I. DuPont de Nemours & Co, 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”) (cited in B&B Hardware, Inc. v. Hargis Ind., Inc., 135 S.Ct.1293, 113 USPQ2d 2045, 2049 (2015)) and in In re Majestic Distilling Co. Inc., 315 F.3d 1311, 1314-15, 65 USPQ2d 1201, 1203

(Fed. Cir. 2003). We have considered each DuPont factor that is relevant and for which there is evidence of record. See M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. and H.J. Heinz Co. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). We treat as neutral any DuPont factors for which there is no evidence or argument of record.

In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1086 (TTAB 2016).

Opposer bears the burden of proving likelihood of confusion by a preponderance of the evidence. Cunningham v. Laser Golf Corp., 55 USPQ2d at 1844. As detailed below, we conclude that Opposer has not met its burden.

Goods and Services, Channels of Trade and Classes of Consumers.

We evaluate the relatedness of the parties' respective goods and services based on their identification in the subject application and registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014), quoting Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Paula Payne Prods. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods”).

*12 The services recited in Opposer's pleaded registration are “printing services.” Opposer argues that the involved application “includes goods that result from printing services.” 45 Opposer's witness, Mr. Osterloh, testified in his affidavit that The identification of goods in International Classification 016 of U.S. Trademark Application Serial No. 85/324,443 for the mark COLOR WARS lists numerous items that are printed goods and are not restricted to the ‘field of superhero and cartoon characters.’ Ennis produces many of these non-field restricted printed goods as part of its printing services provided under its mark ... COLORWORX and design.... Moreover, many of these non-field restricted printed goods fall within the target market of Ennis and its distributors under the mark ... COLORWORX and design.... 46

Mr. Beling's non-filed restricted printed goods are so related to the printed goods provided by Ennis' printing services under its mark COLORWORX and design ... that they are likely to be encountered by the same people under circumstances that will likely give rise to confusion as to the source of the goods. 47

With his affidavit, Mr. Osterloh introduced pages from Opposer's Internet website showing that Opposer's services include printing business cards, bookmarks, card holders, envelopes, gift cards, greeting cards and photo cards, pocket folders, postcards, posters, folders and brochures. 48

Applicant argues that the printed materials produced by Opposer's printing services “are for the most part different and dissimilar” 49 from Applicant's goods. Applicant further argues that “opposer has produced no evidence of record concerning any actual sales of printed goods or services in fact sold under its COLORWORX mark and design, which renders the respective similarity or dissimilarity and nature of the goods or services moot.” 50

Opposer's argument regarding the relatedness of the parties' goods and services is grounded in its position that certain of Applicant's goods are produced by printing services such as those provided by Opposer. Opposer's only support for this position is Mr. Osterloh's affidavit and documentary evidence showing that Opposer's services produce printed goods

© 2018 Thomson Reuters. No claim to original U.S. Government Works. 10 AppxB010 ENNIS, INC. v. JOEL L. BELING D1B1A SUPA..., 2017 WL 412412 (2017) that are similar to some of the goods identified in the involved application. However, Opposer has not included any evidence that its services and Applicant's goods emanate from a common source. For instance, Opposer has introduced no evidence of use or registration by third parties of a common term as a mark to identify its services and Applicant's goods. Nor has Opposer introduced any testimony or evidence to support a finding that it is typical industry practice to identify its services and Applicant's goods under a single mark. Mr. Osterloh's opinion and examples of printed goods produced by Opposer are not sufficient to demonstrate the relatedness of the parties' goods and services for purposes of our likelihood of confusion determination. Cf. In re Peebles, Inc., 6 USPQ2d 1795, 1796 (TTAB 1992) (“the mere fact that an applicant's goods are of a type sold in a registrant's outlet is, in itself, insufficient to support a holding of likelihood of confusion if the marks are dissimilar.”); Harvey Hubble Inc. v. Tokyo Seimitsu Co. 188 USPQ 517, 520 (TTAB 1975) (“In determining whether products are identical or similar, the inquiry should be whether they appeal to the same market, not whether they resemble each other physically or whether a word can be found to describe the goods of the parties.”). The mere fact that Opposer offers printing services and that certain of Applicant's goods are printed materials falls short of demonstrating that the parties' goods and services are related.

*13 Opposer's “printing services” do not recite any limitations as to their trade channels or the classes of consumers to which they are offered. See Octocom Systems, Inc. v. Houston Computers Services Inc., 16 USPQ2d at 1787. As a result, and in accordance with our established case law, we must presume that Opposer's services move in all channels of trade that are normal therefor and are available to all the usual purchasers thereof.

However, and as discussed above, Opposer has failed to introduce sufficient evidence to support a finding that its services under its mark are related to Applicant's goods in his involved application. As such, we cannot presume that the channels of trade for its services are the same as or overlapping with those in which Applicant's goods may be encountered. Cf. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties' goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade.”). Further, neither the nature of the goods and services themselves nor the evidence of record supports a finding that such goods and services travel in common trade channels or are made available to the same customers.

We find, as a result, that the du Pont factors of the similarity of the goods and services, and their channels of trade and classes of consumers favor a finding of no likelihood of confusion.

Comparison of the Marks.

We next consider the similarity or dissimilarity of the parties' marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. Palm Bay Imports, 73 USPQ2d at 1692.

Applicants' mark, COLOR WARS in standard characters, and the mark

© 2018 Thomson Reuters. No claim to original U.S. Government Works. 11 AppxB011 ENNIS, INC. v. JOEL L. BELING D1B1A SUPA..., 2017 WL 412412 (2017) in Opposer's registration are similar to the extent that the first word in Applicant's mark, namely COLOR, forms the first term in the COLORWORX word portion of Opposer's mark. This results in similarity in sound, especially if the marks are not articulated clearly so that the differences in the second word are not noted.

We are mindful, however, that our analysis cannot be based on a dissection of the involved marks into their various components. See Jack Wolfskin Ausrustung Fur Draussen GmbH KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015). As the Federal Circuit has declared: The relevant DuPont factor requires examination of “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” DuPont, 476 F.2d at 1361. As is apparent from the plain language of this factor, marks must be viewed “in their entireties,” and it is improper to dissect a mark when engaging in this analysis, including when a mark contains both words and a design. In re Shell Oil Co., 992 F.2d 1204, 1206 [26 USPQ2d 1687] (Fed. Cir. 1993) (“The marks are considered in their entireties, words and design.”). Although the court may place more weight on a dominant portion of a mark, for example if another feature of the mark is descriptive or generic standing alone, the ultimate conclusion nonetheless must rest on consideration of the marks in total.

*14 In re Viterra, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012).

The marks differ in appearance as a result of the crosshair design in Opposer's mark, as well as the dissimilarities between WARS and WORX. Overall, there are clear differences in how the marks look.

Most importantly, the marks are distinctly different in meaning. The term COLOR is defined as “a quality such as red, blue, green, yellow, etc., that you see when you look at something; something used to give color to something: a pigment or dye.” 51 WORK, which appears to be a form of the term called to mind by WORX, is defined as “a job or activity that you do regularly especially in order to earn money; the place where you do your job; the things that you do especially as part of your job.” 52 WAR is defined as “a conflict carried on by force of arms, as between nations or between parties within a nation.” 53 COLORWORX, a stylized spelling of “color works,” suggests that the job of Opposer's printing services is to create color printed objects. This meaning is quite different from COLOR WARS, which suggests fighting between groups of colors such as red, blue, green and yellow, or a fight in which the participants are dressed in different colors. Thus, the plain meaning of Applicant's mark is clearly different from any meaning that may be ascribed to Opposer's mark. As a result, the marks are highly dissimilar in connotation.

Overall, the significant dissimilarity in the meanings of the marks outweighs the fact that the marks begin with the same word. The marks convey dissimilar commercial impressions. We agree with Opposer that the word portion of its mark is more significant than the design in our evaluation of the similarity or dissimilarity of the marks. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding that “if one of the marks comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services”); see also In re Viterra Inc., 101 USPQ2d at 1911 (“the verbal portion of a word and design mark likely will be the dominant portion”). However, we are not persuaded by Opposer's argument that the differences between the marks do not “alter the overall commercial impression of the marks sufficiently to avoid similarity and confusion.” 54

In sum, the parties' marks are dissimilar in their entireties as to connotation, appearance and commercial impression. This weighs against Opposer's claim of likelihood of confusion. Palm Bay Imports, 73 USPQ2d at 1692.

Consumer Sophistication.

*15 Opposer argues that Applicant's goods and the printed products produced through its printing services “are not expensive, luxury goods requiring consumers to exercise great care or expertise in their purchase.” 55 Applicant, on the

© 2018 Thomson Reuters. No claim to original U.S. Government Works. 12 AppxB012 ENNIS, INC. v. JOEL L. BELING D1B1A SUPA..., 2017 WL 412412 (2017) other hand, argues that Opposer's witness, Mr. Osterloh, testified that Opposer produces customized printed goods in accordance with its customers' specifications and that, as a result, “a high degree of purchasing care, planning and choice is undertaken before a printed product, such as a customized postcard or calendar, is purchased.” 56

There is nothing in the identification of Applicant's goods to indicate that these are purely custom-made products, offered at only high prices and purchased only by consumers with specialized knowledge. Similarly, there is nothing inherent in Opposer's services to indicate that it provides only high cost printing services for discerning purchasers. Furthermore, there is nothing in the record beyond Mr. Osterloh's testimony that Opposer offers customized printing services to the order and specification of its customers to support a finding that Opposer's services and their purchasing process are of such a nature that purchasers are necessarily careful. See, e.g., Electronic Design & Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992) (record confirms that opposer's services are expensive and are purchased only by experienced corporate officials after significant study and contractual negotiation and that the evaluation process used in selecting applicant's products requires significant knowledge and scrutiny). Moreover, the applicable standard of care is that of the least sophisticated consumer. Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004). As noted above, both parties market to the general public. We find this fourth du Pont factor to be neutral.

Third Party Use.

The sixth DuPont factor concerns the number and nature of similar marks in use on similar goods. E. I. DuPont, 177 USPQ at 567. See also Lloyd's Food Prods., Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993). Evidence of thirdparty use or registration bears on the commercial or conceptual strength of an opposer's mark, respectively. “The weaker an opposer's mark, the closer an applicant's mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” Jack Wolfskin, 116 USPQ2d at 1136 (quoting Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)). See also Palm Bay Imports., 73 USPQ2d at 1693 (“Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.”).

*16 Applicant argues that the number and nature of similar marks in use on similar goods or services mitigates against a finding of likelihood of confusion. Applicant relies upon the following third-party registrations in support of his contention: Reg. No. 2373935 for COLOR WORKSHOP for artists' materials, namely, arts and craft paint kits comprising paint boxes; paint brushes; pens, pencils, crayons and drawing instruments; stencils, drawing pads; pictures, posters;

Reg. No. 2476288 for the mark COLOR WORKS for paint color cards; and

Reg. No. 3632494 for COLORWORKS for storage and organization systems comprising binders, folders, colored stickers, labels, adhesive notes and tabs for organizing, sorting, storing, and acting upon documents and the like. 57

It has often been said that the “existence of [third party] registrations is not evidence of what happens in the market place or that customers are familiar with them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). See also Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 116 USPQ2d at 1136. Nonetheless, third-party registrations can be used to “show the sense in which a mark is used in ordinary parlance.” Juice Generation, Inc. v. GS Enters. LLC, 115 USPQ2d at 1674; In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006). In this case, Applicant has introduced evidence of three third-party registrations, one of which is for a mark, COLOR WORKSHOP, that is arguably less similar to Opposer's mark than Applicant's mark. The existence of two registrations for COLOR WORKS for paint color cards and COLORWORKS for binders, folders, stickers and notes is insufficient to persuade us that Opposer's mark is conceptually weak and entitled to such a narrow scope of protection

© 2018 Thomson Reuters. No claim to original U.S. Government Works. 13 AppxB013 ENNIS, INC. v. JOEL L. BELING D1B1A SUPA..., 2017 WL 412412 (2017) as to permit registration of a confusingly similar mark for related goods or services. Cf. Jack Wolfskin, 116 USPQ2d at 1136 (third-party weakness evidence characterized as “voluminous”).

Applicant has failed to demonstrate extensive registration or use of COLOR WORX-formative marks by third parties for goods or services related to Opposer's “printing services.” In view thereof, this factor is neutral.

Balancing the Factors.

We have considered all of the arguments and evidence of record, including those not specifically discussed herein, and all relevant DuPont factors. Opposer has failed to show that the marks are so similar in appearance, sound, connotation, and commercial impression as to be likely to cause confusion. Similarly, Opposer has failed to show that its printing services are sufficiently related to Applicant's various printed goods, or that such goods and services move in common channels of trade and are offered to the same classes of consumers. On balance, and taking into account the totality of the evidence of record, we find that Opposer has failed to prove by a preponderance of the evidence that the parties' marks so resemble one another as to be likely to cause confusion, or to cause mistake, or to deceive under Section 2(d) of the Trademark Act.

*17 Decision: The opposition is dismissed.

Footnotes 1 Application Serial No. 85324443 was filed on May 18, 2011 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), with a claim of priority under Section 44(d), 15 U.S.C § 1126(d), subsequently amended to seek registration under Trademark Act Section 44(e), 15 U.S.C. § 1126(e), based upon Applicant's assertion of ownership of Australian Registration Nos. 1408389 (Registered on February 11, 2011); 1414546 (Registered on March 16, 2011); and 1411544 (Registered on March 16, 2011). The application also recites goods in International Class 28 that were never opposed and services in International Class 41 that are no longer at issue as a result of Opposer's withdrawal of the notice of opposition thereto. 2 1 TTABVUE. 3 Registration No. 3372884 issued on January 22, 2008. Section 8 affidavit accepted; Section 15 affidavit acknowledged. “Color is not claimed as a feature of the mark.” 4 4 TTABVUE. 5 103 TTABVUE. 6 122 TTABVUE. 7 Id. at 13. 8 147 TTABVUE 34-5. 9 Id. at 35, n.4. 10 107 TTABUVE 16-21; 122 TTABVUE 13. 11 110 TTABVUE 14-15. 12 151 TTABVUE 4-5. 13 122 TTABVUE 13. 14 151 TTABVUE 5 (emphasis in original). 15 Clearly, the better practice would have been to make such a request by way of separate motion identified as such, rather than in a footnote to Opposer's brief. 16 147 TTABVUE 21-2, n.3. 17 151 TTABVUE 2. 18 154 TTABVUE 8. 19 Id. at 9-10. 20 Id. at 12-13. 21 1 TTABVUE 9. 22 128 TTABVUE 6-7.

23 132 TTABVUE 5. 24 110 TTABVUE 11. 25 We note nonetheless that even if we had granted Opposer's motion to amend its pleading, the result, as discussed below, would be the same. 26 122 TTABVUE 4-6. 27 150 TTABUVE 14-45. 28 Id. at 14. 29 142 TTABVUE. 30 135 TTABVUE. 31 143 TTABVUE. 32 154 TTABVUE 17. 33 153 TTABVUE. 34 103 TTABVUE 19-20 n.6. 35 128 TTABVUE. The parties stipulated to the submission of testimony by affidavit or declaration. 68 TTABVUE 1-3. 36 127 TTABVUE. 37 146 TTABVUE. 38 137 TTABVUE. 39 131, 132 TTABVUE. 40 133, 134 TTABVUE. 41 147 TTABVUE, 150 TTABVUE, 154 TTABVUE. 42 150 TTABVUE 11-12. 43 Id. at 12. 44 122 TTABVUE 8. 45 147 TTABVUE 27. 46 128 TTABVUE 8. 47 Id. 48 Id. at 12-159, 195-396. 49 150 TTABVUE 47. 50 Id. at 48. 51 103 TTABVUE 20, n. 6. Merriam-Webster.com. Merriam-Webster, n.d. Web. 29 Sept. 2014. 52 Id. 53 We hereby take judicial notice of this definition of “war” from Random House Dictionary (2017). The Board may take judicial notice of dictionary definitions, including online dictionaries which exist in printed format. See, e.g., In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014). 54 147 TTABVUE 26. 55 147 TTABVUE 32. 56 150 TTABVUE 49. 57 139 TTABVUE 38-73. Applicant further relies upon an additional cancelled registration, as well as one pending and six abandoned applications. However, expired registrations and pending and abandoned applications possess no probative value. See Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A] cancelled registration does not provide constructive notice of anything”); Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463 (TTAB 2003) (applications show only that they have been filed). 2017 WL 412412 (Trademark Tr. & App. Bd.)

2016 WL 3771775 (Trademark Tr. & App. Bd.)

This Opinion is not a Precedent of the TTAB

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)

ESRT EMPIRE STATE BUILDING, L.L.C. (SUBSTITUTED FOR EMPIRE STATE BUILDING CO. L.L.C.) 1 v. MICHAEL LIANG

Opposition No. 91204122 to application Serial No. 85213453 June 17, 2016 *1 Eric J. Shimanoff of Cowan Liebowitz & Latman PC for ESRT Empire State Building Co. L.L.C. David Yan of Law Offices of David Yan for Michael Liang

Before Cataldo, Taylor and Wellington Administrative Trademark Judges Opinion by Cataldo Administrative Trademark Judge:

Michael Liang (“Applicant”) seeks registration on the Principal Register of the mark displayed below for Alcohol-free beers; Beer; Beer, ale and lager; Beer, ale and porter; Beer, ale, lager, stout and porter; Beer, ale, lager, stout, porter, shandy; Beers; Black beer; Brewed malt-based alcoholic beverage in the nature of a beer; Coffee-flavored beer; De-alcoholised beer; Extracts of hops for making beer; Flavored beers; Ginger beer; Hop extracts for manufacturing beer; Imitation beer; Malt beer; Malt extracts for making beer; Malt liquor; Non-alcoholic beer; Pale beer; Porter

in International Class 32. 2

The application includes the following description of the mark: The mark consists of a building resembling the Empire State Building surrounded by three concentric circles. The middle circle is wide and contains the wording “NYC BEER” in the interior. The circles are surrounded by a wreath with a wheat pattern. At the bottom is a banner with the term “LAGER” inside.

Pleadings

ESRT Empire State Building, L.L.C. (“Opposer”) opposes registration of Applicant's mark on the grounds of dilution under Trademark Act Section 43(c), 15 U.S.C. § 1125(c), false suggestion of a connection under Trademark Act Section 2(a), 15 U.S.C. § 1052(a) and likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d). 3

Opposer claims ownership of two registrations issued on the Principal Register for the mark EMPIRE STATE BUILDING (standard characters, “BUILDING” disclaimed): Registration No. 2411972 for “entertainment services, namely, providing observation decks in a skyscraper for purposes of sightseeing” in International Class 41; 4 and

Registration No. 2413667 for “real estate services, namely the management and leasing of real estate” in International Class 36. 5

*2 Opposer also claims ownership of two registrations, issued on the Principal Register with a claim of acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), for the mark shown below:

The registrations include the following description of the mark: The mark consists of the shape of the exterior of a skyscraper with a pointed, spindled top. The lining shown in the drawing is a feature of the mark and is not intended to indicate color.

Registration No. 2429297 for “real estate services, namely the management and leasing of real estate” in International Class 36; 6 and Registration No. 2430828 for “entertainment services, namely, providing observation decks in a skyscraper for purposes of sightseeing” in International Class 41. 7

With regard to its claim of dilution, Opposer asserts that its marks are distinctive and famous; that its marks were distinctive and famous prior to Applicant's constructive first use date of January 8, 2001; and that registration of Applicant's mark will injure Opposer as a result of dilution by blurring of the distinctive qualities of Applicant's marks. 8

Applicant, in his answer, denied the salient allegations in the notice of opposition except to the extent discussed below.

Evidentiary Matters

At the outset, we note that each party has filed objections against certain testimony and evidence introduced by its adversary. Ultimately, the Board is capable of weighing the relevance and strength or weakness of the objected-to testimony and evidence in this specific case, including any inherent limitations, and this precludes the need to strike any of the testimony and evidence. Given the circumstances herein, we choose not to make specific rulings on each and every objection. As necessary and appropriate, we will point out in this decision any limitations applied to the evidence or otherwise note that the evidence cannot be relied upon in the manner sought. While we have considered all the evidence and arguments of the parties, we do not rely on evidence not discussed herein.

The Record

The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Applicant's application file. The parties introduced the testimony and evidence identified below. In this decision, we will endeavor to discuss confidential testimony and evidence in general terms and only as necessary to support our determination.

A. Opposer's Evidence.

Testimony deposition of Applicant Michael Liang, taken March 13, 2015, and Exhibits 1 through 5.

Testimony deposition of Stacey-Ann Hosang, Opposer's Public Relations Manager, taken March 25, 2015 and Exhibits 6 through 62.

*3 Testimony deposition of Crystal Persaud, Opposer's Legal Counsel, taken March 26, 2015 and Exhibits 63 through 83.

Testimony deposition transcript of Celeste Beatty, Owner of Harlem Brewing Company, taken March 27, 2015 and Exhibits 84 through 85.

Opposer's First Notice of Reliance upon Opposer's Registrations, dated March 30, 2015, consisting of current printouts from the electronic database records of the USPTO's Trademark Status and Document Retrieval (“TSDR”) records, showing the current status and title (owner) of Opposer's pleaded registrations attached as Exhibit A.

Opposer's Second Notice of Reliance upon Official Records, dated March 30, 2015 consisting of Applicant's application and Petition to Revive Abandoned Application from the TSDR records for the involved application attached as Exhibit A.

Opposer's Third Notice of Reliance upon Internet Materials, dated March 30, 2015, and the following Exhibits:

(a) Exhibit A - printouts of various website pages available online with articles dated prior to January 8, 2011, concerning Opposer's EMPIRE STATE BUILDING Marks and/or the Empire State Building.

(b) Exhibit B - printouts of various website pages available online with articles dated after January 8, 2011, concerning Opposer's EMPIRE STATE BUILDING Marks and/or the Empire State Building.

(c) Exhibit C - printouts of various website pages available online with artwork available to purchase by the public depicting the visual equivalent of the Empire State Building.

(d) Exhibit D - printouts of various website pages available online with tourist and general information concerning Opposer's marks and/or the Empire State Building.

(e) Exhibit E - printouts of various website pages available online showing merchandise bearing Opposer's EMPIRE STATE BUILDING marks and images depicting the visual equivalent of the Empire State Building in connection with a variety of goods.

Opposer's Fourth Notice of Reliance upon Printed Materials, dated March 30, 2015, and the following Exhibits:

(a) Exhibit A - printed articles dated prior to January 8, 2011, concerning

Opposer's EMPIRE STATE BUILDING marks and/or the Empire State Building.

(b) Exhibit B - excerpts from books about and/or showing images depicting the visual equivalent of the Empire State Building.

Opposer's Fifth Notice of Reliance upon Applicant's Discovery Responses, dated March 30, 2015, and the following Exhibits:

(a) Exhibit A - Applicant's Response to Opposer's First Set of Requests for Admission Nos. 4, 5, 7 and 8.

(b) Exhibit B - Opposer's First Set of Interrogatories and Request for Production of Documents and Things, Interrogatory Nos. 1, 2, 4-6, 8-11, 13, 15 and 16 and Document Request Nos. 1-14, 17, 18, 20-23.

*4 (c) Exhibit C - Applicant's Response to Opposer's First Set of Interrogatories and Request for Production of Documents and Things, Interrogatory No. 13 and Document Request Nos. 4, 14, 21, and 22.

(d) Exhibit D - Applicant's Amended Response to Opposer's First Set of Interrogatories and Request for Production of Documents and Things, Interrogatory Nos. 1, 2, 4-6, 8-11, 13, 15 and 16 (a typographical error lists Response 16 as Response 10), and Document Request Nos. 1-14, 17, 18 and 20-23.

(e) Exhibit E - Applicant's e-mail response to Interrogatory No. 16 and attached document to Opposer's e-mail request to supplement Applicant's Amended Response to Opposer's Interrogatories.

Opposer's Rebuttal Notice of Reliance upon Official Records, dated July 8, 2015, consisting of a printout of information from the electronic database records of the USPTO, namely, the TSDR record, showing that the current status of the registration for the mark NY and Design, Reg. No. 1247058, is expired.

Opposer's Second Rebuttal Notice or Reliance upon Applicant's Discovery Responses, dated July 13, 2015, consisting of Applicant's Responses to Opposer's Request to Admit No. 3.

B. Applicant's Evidence.

Testimony deposition transcript of Applicant's friend, Xuefeng Yang, taken May 22, 2015, and Exhibits 1 through 6.

Testimony deposition transcript of Applicant Michael Liang, taken May 22, 2015 and Exhibits 7 through 8.

Applicant's First Notice of Reliance upon Official Records, dated May 27, 2015, and Exhibits A through C.

Standing

Standing is a threshold issue that must be proven by a plaintiff in every inter partes case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). To establish standing in an opposition, an opposer must show both a real interest in the proceedings as well as a reasonable belief of damage. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 50 USPQ2d at 1025.

In light of Applicant's admission in its answer 9 of Opposer's ownership of its pleaded registrations, and further in view of Opposer's pleading of a reasonable claim of likelihood of confusion, the Board, in a January 20, 2015 order otherwise denying Opposer's summary judgment motion, found no genuine issue regarding Opposer's standing. 10 Further, because Opposer established its standing with respect to its pleaded ground of likelihood of confusion, it has the right to assert any other ground as well, that also has a reasonable basis in fact. See Lipton Indus., Inc. v. Ralston Purina Co., 213 USPQ at 188.

Dilution by Blurring

Findings of Fact

*5 The testimony and evidence establish the following: Opposer owns and operates the Empire State Building, a distinctively-styled art deco skyscraper featuring multiple setbacks, that was completed in 1931 and located in the heart of the City of New York; 11

For 40 years, the Empire State Building was the tallest building in the world, and presently is the fifth tallest building in the United States; 12

The Empire State Building has been featured in hundreds of motion pictures and television shows, including King Kong, An Affair to Remember and Sleepless in Seattle. 13

The Empire State Building features a famous observation deck on its 103 rd floor that is visited by millions of guests each year, including numerous celebrities, athletes and political figures. 14

Numerous third parties seek licenses from Opposer to use its pleaded marks to advertise, promote and sell their goods and services, including a wide range of merchandise, television programs and motion pictures, all acknowledging Opposer's rights in its pleaded marks and providing source attribution for such use. 15

For over 40 years, Opposer has provided lighting displays on the Empire State Building, alone and pursuant to licensing agreements with such partners as Reebok, Warner Brothers, ASPCA, NFL, Cartier, Mercedes-Benz, and Boy Scouts of America, and frequently feature celebrity lighting ceremonies attracting significant media attention. 16

For over 30 years, a major New York radio station has broadcast from the top of the Empire State Building, and since September 11, 2001, nearly all of New York's commercial broadcast television and radio stations have transmitted from antennae located on the top of the building. 17

Since 1931, Opposer and its predecessors in interest have used EMPIRE STATE BUILDING and the design thereof as marks in connection with a wide variety of goods and services. 18

Since 1990, visitors to the Empire State Building exit through a licensed gift shop featuring such goods as apparel, glassware, candy, beverage holders, water bottles, toys, books, holiday ornaments branded with or sold under the EMPIRE STATE BUILDING mark and design mark displayed above. 19

The Empire State Building gift shop sells non-alcoholic beverages as well as wine and champagne. 20

Opposer's pleaded marks appear on carpets, elevator interiors and exteriors, wall décor, signage, tickets, kiosks and brochures within the Empire State Building. 21

Opposer's annual sales and advertising and promotional expenditures for Internet, magazine, newspaper, billboard and poster advertisements in connection with the Empire State Building and its pleaded marks are very significant. 22

*6 The Empire State Building and Opposer's goods and services under its pleaded marks have a strong social media presence, with 750,000 “likes” on Facebook, 70,000 followers on Twitter, and accounts on Pinterest, Yelp and Instagram, where a search of #empriestatebuilding displays over 650,000 photographs. 23

Since 1931, the Empire State Building and Opposer's pleaded marks have received significant press and media coverage in such papers as The Wall Street Journal, The New York Times, The Boston Globe and The Miami Herald, and such television programs as CNN Headline News, FOX News, Live! With Regis and Kelly and Good Morning America. 24

Articles and media references to the Empire State Building recognize the structure as an iconic, world-famous architectural and cultural landmark. 25

Applicant acknowledges that the Empire State Building is famous. 26

Applicant acknowledges that his “intention to put a - a - a building in there [his mark] that resembles the Empire State Building is simply because the - the building is - is such an emblem of New York City... .” 27

Applicant's witness, Mr. Xuefeng Yang, acknowledges that the building displayed in Applicant's mark “It's the Empire State Building. It looks like Empire State Building. ... Everything about it. With the ... tapering roof, it looks like Empire State Building.” 28

Analysis

The Trademark Act provides a cause of action for the dilution of famous marks. See Sections 13 and 43(c) of the Trademark Act, 15 U.S.C. §§ 1063 and 1125(c). Section 43(c) provides as follows:

Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

Opposer contends that Applicant's mark, displayed below, will dilute the distinctiveness of Opposer's marks.

For purposes of our analysis, we will concentrate our determination based upon Opposer's pleaded registrations for its design mark, displayed below.

The Trademark Act defines dilution by blurring as follows: “[D]ilution by blurring” is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.

*7 Section 43(c)(2)(B) of the Trademark Act, 15 U.S.C. § 1125(c)(2)(B). “Dilution diminishes the ‘selling power that a distinctive mark or name with favorable associations has engendered for a product in the mind of the consuming public.”’ Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1182 (TTAB 2001) (internal citation omitted).

Our primary reviewing court, the Court of Appeals for the Federal Circuit, has set forth the following four elements a plaintiff must prove in order to prevail on a claim of dilution by blurring in a Board proceeding: (1) that plaintiff owns a famous mark that is distinctive;

(2) the defendant is using a mark in commerce that allegedly dilutes the plaintiff's famous mark;

(3) the defendant's use of its mark began after the plaintiff's mark became famous; and

(4) the defendant's use of its mark is likely to cause dilution by blurring.

Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1723-4 (Fed. Cir. 2012) (“Coach Services”). In this case, the involved application is based on intent-to-use. As a result, Opposer's burden is to show that its mark became famous prior to the filing date or constructive use date of Applicant's application. 29 Cf. Toro Co. v. ToroHead Inc., 61 USPQ2d at 1174 (“We hold that in the case of an intent-to-use application, an owner of an allegedly famous mark must establish that its mark had become famous prior to the filing date of the trademark application or registration against which it intends to file an opposition or cancellation proceeding.”). See also Midwestern Pet Foods Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1439 (Fed. Cir. 2012); Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1294-5 (TTAB 2016); Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013, 2024 (TTAB 2014).

Dilution by blurring occurs when a substantial percentage of consumers, upon seeing the junior party's use of a mark on its goods, are immediately reminded of the famous mark and associate the junior party's use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark's owner. See e.g., National Pork Board v. Supreme Lobster and Seafood Co., 96 USPQ2d 1479 (TTAB 2010). In addition, we must determine not only whether there is an ‘association’ arising from the similarity of the marks, but whether such association is likely to ‘impair’ the distinctiveness of the famous mark. Nike Inc. v. Maher, 100 USPQ2d 1018, 1023 (TTAB 2011) (“Nike v. Maher”).

The Alleged Fame of Opposer's Design Mark Prior to January 8, 2011

*8 Applying the first and third Coach elements to this proceeding, Opposer must show that the mark comprising the design of the Empire State Building became famous before the January 8, 2011 filing date of the involved intent-to-use application, inasmuch as there is no evidence that Applicant is entitled to an earlier constructive use date.

It is well-established that dilution fame is different from fame for likelihood of confusion purposes, and the burden of proof is significantly more difficult. Coach Services, Inc., 101 USPQ2d at 1713 (“Fame for likelihood of confusion and fame for dilution are distinct concepts, and dilution fame requires a more stringent showing.”) Indeed, “[i]t is well- established that dilution fame is difficult to prove.” Id. at 1724. Also, in contrast to likelihood of confusion fame, dilution fame is not determined in the context of a certain field of goods or services; rather, the party asserting dilution fame of its mark “must show that, when the general public encounters the mark ‘in almost any context, it associates the term, at least initially, with the mark's owner.” Id. at 1725. In other words, a famous mark is one that has become a “household name.” Id.

The statute sets forth the following four factors for determining whether a mark is famous for dilution purposes: i. The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties. ii. The amount, volume, and geographic extent of sales of goods or services offered under the mark; iii. The extent of actual recognition of the mark; and iv. Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

15 U.S.C. § 1125(c)(2)(A). See also, New York Yankees Partnership v. IET Products and Services, Inc., 114 USPQ2d 1497, 1502 (TTAB 2015); McDonald's Corp. v. McSweet LLC, 112 USPQ2d 1268, 1286 (TTAB 2014).

With respect to the first factor, Opposer has used the mark comprising the design of the Empire State Building since 1931. This mark has received considerable public exposure through Opposer's advertising and mentions in national media. Opposer has spent very significant sums on advertising since then, including the placement of the mark. Opposer's activities under its mark, including the operation of its world-famous observation deck, which has been featured in several iconic movies and received millions of visitors each year, its wide range of branded products and services under its marks, its cosponsored celebrity lighting ceremonies, its licensing of its mark to third parties with full attribution, and more recently, its strong social media presence, have garnered strong recognition of its mark since at least the 1980s to 1990.

*9 With respect to factor two, Opposer's revenues under its mark is also very significant. Visitors from around the world visit the Empire State Building every day, and are exposed to multiple uses of Opposer's mark on everything from tickets to uniforms to gift items to decorations for the building itself. Opposer's observation deck receives daily visits from visitors worldwide, and is frequented by numerous celebrities from music, film, sports and governments.

As to the third factor, Opposer's mark regularly receives extensive media exposure in print, radio, television and the Internet.

Finally, with respect to the fourth factor, Opposer owns its two pleaded registrations for its design mark, issued on the Principal Register. Upon consideration of the four factors and the record before us, we find that Opposer's design mark became famous for dilution purposes well prior to 2011.

Likelihood of Applicant's Mark to Cause Dilution by Blurring

The Trademark Act enumerates six non-exhaustive factors a court or tribunal may consider in determining whether a mark is likely to cause dilution by blurring: i. The degree of similarity between the mark or trade name and the famous mark. ii. The degree of inherent or acquired distinctiveness of the famous mark. iii. The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark. iv. The degree of recognition of the famous mark. v. Whether the user of the mark or trade name intended to create an association with the famous mark. vi. Any actual association between the mark or trade name and the famous mark.

Section 43(c)(B)(i)-(vi).

In applying and weighing these factors, we find it is likely that Applicant's mark will cause dilution by blurring of Opposer's design mark. With regard to the first factor, Applicant's involved mark prominently features, as indicated in the description of the mark, “a building resembling the Empire State Building.” While Applicant asserted in his testimony that the design could be of another building, 30 his assertions are belied by the description of his mark in his application. Furthermore, there is no evidence of record to suggest that the building depicted in Applicant's mark could be other than the Empire State Building displayed in Opposer's design mark. Applicant's witness, Mr. Yang, unequivocally stated that the building in Applicant's mark is the Empire State Building. While Applicant's mark includes additional wording and design elements, these do not serve to diminish the similarity of the building design therein to Opposer's design mark.

With regard to the second factor, there is nothing in the record to suggest that Opposer's design mark lacks inherent distinctiveness. Furthermore, even if we were to find that Opposer's design mark lacks inherent distinctiveness, the record is replete with evidence that the mark has acquired distinctiveness due to Opposer's long use, promotional efforts, and unsolicited media recognition.

*10 Moreover, taking into account the third factor above, the record shows that Opposer is engaging in ‘substantially exclusive’ use of its mark. Although Applicant has relied upon a third-party registration consisting in part of the design of the Empire State Building, such registration was cancelled in 2014 and lacks any significant probative value. 31 Any benefits conferred by the registration, including the evidentiary presumptions afforded by Section 7(b) of the Trademark Act were lost when the registration expired. See, e.g., Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 178 USPQ 46 (CCPA 1973). There is no other evidence of record to suggest that Opposer's use of its design mark is not “substantially exclusive.”

With respect to the fourth factor, we have no direct evidence, e.g., a survey, showing a level of recognition of Opposer's mark. However, Opposer's evidence of strong and consistent mention in printed, radio, television and Internet media, as well as its popularity on various social media, suggest that Opposer's mark has attained a significant level of recognition. Certainly, some of this media attention involves the Empire State Building itself, contrasted with Opposer's mark and the goods or services offered thereunder. However, Opposer's evidence of its efforts in branding, co-sponsorship, and licensing use of its design mark to third parties with attribution, support its efforts to create and maintain recognition not only of the Empire State Building, but of its activities under its mark related thereto.

With regard to the fifth factor involving an intention to create an association with the Opposer's mark, the evidence is insufficient to support a finding that Applicant is intentionally attempting to associate his mark with Opposer's mark.

Finally, as to the sixth factor, there is no evidence of actual association between Applicant's mark and Opposer's design mark, particularly given that Applicant has not yet commenced use of his mark.

Dilution by Blurring - Conclusion

After considering all of the evidence of record in regard to the Section 43(c) false suggestion of a connection factors, we find that Applicant's mark is likely to cause dilution by blurring of Opposer's mark. We find in particular that Opposer's mark is famous for purposes of dilution, that its mark is inherently distinctive or, if not, have acquired distinctiveness through Opposer's efforts, that Opposer is engaging in substantially exclusive use of its mark, and that its efforts suggest a strong degree of recognition for its mark. While we find the evidence does not support a finding that Applicant intended to create an association with Opposer's mark, or that there has been any opportunity for actual association, these factors are insufficient to overcome a finding of dilution in this case.

Because we have found Applicant's mark dilutes by blurring Opposer's design mark, we need not analyze Opposer's claims that Applicant's mark is likely to cause confusion with the marks in Opposer's pleaded registrations, or create the false suggestion of a connection with Opposer.

*11 Decision: The opposition is sustained and registration to Applicant is refused.

Footnotes 1 Empire State Building Company L.L.C. (“Original Opposer”), is no longer in existence and all of Original Opposer's rights and title to the pleaded registrations and common law trademarks were assigned to ESRT Empire State Building, L.L.C. (“Opposer”), as recorded in the Assignment Services Division of the United States Patent and Trademark Office (USPTO) at Reel/Frame Nos. 5139/0027 and 5136/0116. Accordingly, the Board granted Original Opposer's motion to substitute in an order issued on January 20, 2015. 2 Application Serial No 85213453 was filed on January 8, 2011, based upon Applicant's allegation of a bona fide intent to use the mark in commerce. “NYC BEER” and “LAGER” are disclaimed apart from the mark as shown. Color is not claimed as a feature of the mark. 3 Opposer also asserted a claim that Applicant lacked a bona fide intent to use his mark in commerce, but did not pursue this ground at trial. Accordingly, it is deemed waived. 4 Issued December 12, 2000. Section 8 affidavit accepted; Section 15 affidavit acknowledged. First renewal. 5 Issued December 19, 2000. Section 8 affidavit accepted; Section 15 affidavit acknowledged. First renewal. 6 Issued February 20, 2001. Section 8 affidavit accepted; Section 15 affidavit acknowledged. First renewal. 7 Issued on February 27, 2001. Section 8 affidavit accepted; Section 15 affidavit acknowledged. First renewal. 8 24 TTABVUE 20. 9 7 TTABVUE 3. The citations to “TTABVUE” throughout the decision are to the Board's public online database that contains the proceeding file, available on the USPTO website, www.USPTO.gov. The first number represents the prosecution history number listed in the electronic case file and the second represents the page number(s). 10 41 TTABVUE 3. 11 66 TTABVUE 18-19 (confidential); 87 TTABVUE 15-26 (confidential). 12 Id. 13 87 TTABVUE 15-26 (confidential). 14 Id. 15 66 TTABVUE 24-33 (confidential); 87 TTABVUE 15-26 (confidential). 16 Id. 17 Id. 18 Id. 19 Id. 20 Id. 21 Id. 22 87 TTABVUE 136-162. 23 Id. at 167-179. 24 Id. at 136-162. 25 Id. 26 Id. at 127. 27 94 TTABVUE 111. 28 94 TTABVUE 17-18. 29 With regard to the second factor, Applicant has not commenced use of his mark in commerce. However, in a Board inter partes proceeding, a plaintiff that establishes its ownership of a distinctive and famous mark may prevail upon a showing of likelihood of dilution against a Section 1(b) application, even though the plaintiff cannot show actual dilution. See Toro Co. v. ToroHead Inc., 61 USPQ2d at 1174 (“an application based on an intent to use the mark in commerce satisfies the commerce requirement of the [Federal Trademark Dilution Act] for proceedings before the Board.”).

30 94 TTABVUE 98-104. 31 51 TTABVUE 5-15. 2016 WL 3771775 (Trademark Tr. & App. Bd.)

1998 WL 80134 (Trademark Tr. & App. Bd.)

THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE T.T.A.B.

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)

IN-FLIGHT PHONE CORPORATION v. J. ANSELMO, INC.

Cancellation No. 24,090 February 26, 1998 *1 Robert M. Ward and Joseph P. Reagen of Hill, Steadman & Simpson for In-Flight Phone Corporation. Joseph Anselmo for J. Anselmo, Inc.

Before Simms, Quinn and Walters Administrative Trademark Judges. Opinion by Quinn Administrative Trademark Judge:

In-Flight Phone Corporation has petitioned to cancel the registration owned by J. Anselmo, Inc. for the mark shown below

for “transportation of passengers by limousine, vans, buses and cars.” 1

As grounds for cancellation, petitioner asserts that respondent has been dissolved by the Illinois Secretary of State; that the registered mark has been abandoned by respondent; and that the specimens submitted to the Office in support of a statement of use are fraudulent. Petitioner also alleges that its application to register SKYLIMO was refused registration under Section 2(d) on the basis of respondent's registration.

Respondent, in an answer filled with factual allegations, admitted that “the mark is not currently advertised.” However, respondent went on to essentially deny the claims of abandonment and fraud.

The record consists of the pleadings; the file of the involved registration; trial testimony, with related exhibits, taken by petitioner; and a discovery deposition taken by petitioner, with certain related exhibits, and respondent's answers to interrogatories made of record by way of petitioner's notice of reliance. Respondent neither took testimony nor offered any other evidence. Both parties filed briefs on the case.

Petitioner is engaged in the business of providing an interactive computer system that is available to passengers on commercial aircraft. This system, according to Daniel Theriault, petitioner's director of marketing, is called FLIGHTLINK and is installed at every seat. The system comprises a computer screen and a telephone handset. With the use of petitioner's system, a passenger, during his or her flight, can make telephone calls, order flowers or other products (SKYMALL), play video games (e.g., SKYGOLF) or arrange for travel services such as rental cars or limousine transportation at the passenger's destination. In connection with the arranging of limousine service, petitioner has used the designation INFLTLIMO. Petitioner planned on identifying this service as SKYLIMO, but a last-minute change to INFLTLIMO was made due to the controversy with respondent. Sometime prior to September 1992, petitioner purchased from MCI the rights to the phone number 1-800-SKYLIMO. Mr. Theriault testified that petitioner still owns the rights to the number, but that petitioner has refrained from using either 1-800-SKYLIMO or SKYLIMO due to the present dispute with respondent.

According to the discovery deposition testimony of Joseph Anselmo, he is the president, sole owner and only employee of respondent. Respondent began as a private contractor for hire by others to transport passengers by motor vehicle in 1976. In 1989, respondent began his own business, calling it Black & White Limousine. During the early 1990s, respondent provided limousine services to the upper management of petitioner. When respondent lost petitioner's account and other business as well, the number of vehicles operated by respondent dropped from four to one. In 1996, respondent changed its name to Skylimo, Inc.

ABANDONMENT

*2 At the outset, we note that petitioner pleaded its claim in terms of abandonment due to nonuse of the mark. However, the gist of petitioner's claim, as tried by the parties, and as articulated by petitioner in its brief on the case, is that respondent failed to use in commerce, prior to issuance of the involved registration, the specific logo mark that is registered. Therefore, petitioner concludes that the registration is void ab initio.

Respondent based its underlying application for registration on a bona fide intention to use the logo mark in commerce as provided by Section 1(b) of the Act. After receipt of a notice of allowance, respondent filed a statement of use, claiming a date of first use anywhere of 1993 and a date of first use in interstate commerce of January 14, 1994.

Use in commerce is defined in Section 45 of the Act. Use in commerce means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. Under Section 45, a service mark is in “use in commerce” if (i) the mark is used or displayed in the sale or advertising of services and (i) either the services are rendered “in commerce,” or the services are rendered in more than one state or in the United States and a foreign country and the user is engaged in commerce in connection with the services.

The pertinent facts surrounding respondent's use are largely not in dispute; rather, it is the legal conclusion to be drawn from these facts where the parties differ. The relevant facts are ascertained from Mr. Anselmo's discovery deposition and accompanying exhibits, and from his answers to interrogatories. 2

Mr. Anselmo began operating a limousine service in 1989-1990 under the name Black & White Limousine. Although Mr. Anselmo filed an application with the Illinois Secretary of State in January 1992 to begin operating under the name Skylimo Ltd., the effort toward a name change failed. Mr. Anselmo continued to operate as Black & White Limousine or J. Anselmo, Inc. until January 1996 when respondent formally changed its name to Skylimo, Inc. The reason for the change, according to Mr. Anselmo, was the filing of the petition for cancellation which “just kind of woke me up. . . to protect the name Skylimo, Inc. and the trademark.” (Anselmo dep., pp. 24-25)

The record includes a letter with the letterhead SKYLIMO (Anselmo dep., ex. 54) dated November 26, 1991 and a correspondence from AT&T to “SKYLIMO” regarding an advertisement run by Mr. Anselmo in an AT&T phone directory. Respondent has pointed to these documents as evidence of its first use of its registered mark. (answer, interrorgatory no. 2) Upon closer questioning at his deposition, however, Mr. Anselmo identified stationery used in December 1995 as evidence of first use of the mark in commerce. (Anselmo dep., p. 157)

A review of respondent's testimony and evidence confirms that the registered mark was not actually used until well after the registration was issued. Respondent's correspondence dated November 26, 1991 to Ralph Trevino (Anselmo dep., ex 54) which bears the name SKYLIMO in the letterhead was sent to Mr. Trevino as a solicitation to become a business partner. The letter does not evidence use of SKYLIMO in connection with the rendering of any transportation services in commerce. It is significant to note as well that the letter uses only the name SKYLIMO; there is no use of the registered mark SKYLIMO and design.

*3 Further, the letterheads submitted as specimens in the case were never actually used in commerce prior to registration. Mr. Anselmo admitted that the letterheads bearing the logo mark (and a toll free number that respondent did not own) were for “internal use” only and were never sent to customers in connection with providing transportation services.

Respondent also points to its advertisement in a phone directory as evidence of use prior to issuance of the registration. Respondent placed the following listing in the 1992 AT&T Toll-Free 88 Travel Directory:

(Anselmo dep., ex. nos. 30-31) Again, it is significant to note that the advertisement includes only the name SKYLIMO. Mr. Anselmo testified that the registered logo mark had not yet been designed at the time of the ordering of this advertisement. (Anselmo dep., p. 71) The advertisement was not renewed for the following year. 3 Mr. Anselmo explained the reason for the discontinuance as follows: “I felt that Skylimo, it was just too premature to do what I wanted to do. It was part of the business plan, but not totally in focus with the business plan, and I just felt that it needed more work, because it was just a little too early. Things just weren't coming together as I wanted, especially In-Flight Phone Corporation taking a lot longer to put it together.” (Anselmo dep, p. 116) In any event, during this entire period respondent continued to operate as Black & White Limousine or J. Anselmo, Inc. with no actual use in commerce of the specific logo mark registered by respondent until December 1995-January 1996. Later in his deposition, Mr. Anselmo conceded that the registered logo mark was never advertised prior to mid-1995. (Anselmo dep., p. 204)

Also significant is the fact that respondent did not collect any revenue for transportation services rendered under the registered mark until January 1996. Respondent's answer to interrogatory no. 13 is telling: State Registrant's annual sales (a) in the United States in U.S. dollars and (b) in Canada in U.S. dollars from goods or services sold or licensed under its mark for each year of sales since the date of first use of Registrant's Mark anywhere and specifying the sources from which the income is derived and any formula(s) or method(s) used for computing the amount of income. For purposes of answering this order, Registrant may provide a dollar amount of annual sales actually attained, provided that the amount given is sufficient to indicate the general magnitude of sales.

Due to an incomplete business plan, Registrant's annual sales were curtailed.

1991 $0.00

1992 $0.00

1993 $0.00

1994 $0.00

1995 $0.00

Mr. Anselmo, in his deposition, admitted that he never generated any revenues under SKYLIMO prior to December 1995. Rather, any revenues was generated by rendering transportation services under the name Black & White Limosusine. (Anselmo dep., pp. 157-158)

*4 In sum, the registered logo mark was not used until after the mark issued as a registration. And, according to Mr. Anselmo's testimony, a main reason that respondent began actual use of the logo mark only then was the filing of the present petition for cancellation. The registration is void ab initio for failure to actually use the specific logo mark in commerce in connection with transportation services prior to issuance of the registration. Thus, the registration of the logo mark must be canceled.

FRAUD

Petitioner's claim is that respondent committed fraud on the Office when it submitted a statement of use with false dates of first use and supporting specimens that were never actually used in commerce. The gist of petitioner's claim is that respondent knew or should have known that it was not using the mark sought to be registered and that the specimens were never used in commerce.

In considering the charge of fraud here, the following principles control: Fraud implies some intentional deceitful practice or act designed to obtain something to which the person practicing such deceit would not otherwise be entitled. Specifically, it involves a willful withholding from the Patent and Trademark Office by an applicant or registrant of material information which, if disclosed to the Office, would have resulted in disallowance of the registration sought or to be maintained. Intent to deceive must be “willful.” If it can be shown that the statement was a “false misrepresentation” occasioned by an “honest” misunderstanding, inadvertence, negligent omission or the like rather than one made with a willful intent to deceive, fraud will not be found. Fraud, moreover, will not lie if it can be proven that the statement, though false, was made with a reasonable and honest belief that it was true or that the false statement is not material to the issuance or maintenance of the registration. It does appear that the very nature of the fraud requires that it be proven “to the hilt” with clear and convincing evidence. There is no room for speculation, inference or surmise and, obviously, any doubt must be resolved against the charging party.

First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1634 (TTAB 1988); and Smith International, Inc. v. Olin Corp., 209 USPQ 1033, 1043-44 (TTAB 1981). See also: Torres v. Cantine Torresella S.r.1., 808 F.2d 46, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986). See generally: J. T. McCarthy, McCarthy on Trademarks and Unfair Competition §§ 31:76-31:77 (4th ed. 1996).

The record in the present case falls short of proving fraud to the hilt. Although we have found, as discussed above, that there was no use in commerce of the registered logo mark prior to issuance of the registration, we believe that this case involves false misrepresentations as opposed to statements made with a willful intent to deceive the Office. Mr. Amselmo

© 2018 Thomson Reuters. No claim to original U.S. Government Works. 4 AppxB031 In-Flight Phone Corporation v J. Anselmo, Inc., 1998 WL 80134 (1998) appears to be less than knowledgeable about the technicalities of trademark law, including the legal nuances surrounding actual use of a service mark in commerce. Further, during his testimony, Mr. Anselmo appears to be confused on certain critical facts. (see, e.g., pp. 195-196)

*5 We find, based on the record before us, that Mr. Anselmo's representations about the use of respondent's mark were made based on a misunderstanding of and/or confusion about the trademark law governing such matters. Mr. Anselmo's explanations convince us that he made the representations with a reasonable and honest belief that they were true. Petitioner's evidence on this point is less than clear and convincing, and we have resolved any doubt raised by the record in respondent's favor.

Decision: The petition for cancellation is granted, and Registration No. 1,840,093 will be canceled in due course. 4

R. L. Simms

T. J. Quinn

C. E. Walters

Administrative Trademark Judges

Trademark Trial and Appeal Board

Footnotes 1 Registration No. 1,840,093, issued June 14, 1994. 2 Mr. Anselmo spent a good deal of time with petitioner's upper management as he transported them around in his limousine, usually to and from the airport. It was during these rides that Mr. Anselmo shared with them his business ideas about a partnership with petitioner whereby respondent would expand nationally to be the exclusive limousine service offered by petitioner's FLIGHTLINK system. According to Mr. Anselmo, Jack Goeken, petitioner's chief executive officer, agreed at one point to help Mr. Anselmo: “As our trust grew for each other over time, I felt I could come to him, almost as a father figure, and ask him anything concerning my idea about advertising on the planes.” Mr. Anselmo asserts that Mr. Goeken “showed gross negligence in not following through with his duty to complete the contract between Jack Goeken and Joseph Anselmo, and help Joseph with the completion of the SKYLIMO project as promised.” (answer, interrogatory no. 2) The evidence relating to any relationship between petitioner and Mr. Anselmo is irrelevant to the issue at hand, namely, whether respondent used the registered logo mark in commerce prior to registration. 3 Respondent, in its brief on the case, makes unsupported allegations regarding use of the name SKYLIMO in a one line ad in the 1993 telephone directory. Suffice it to say that these allegations, as well as certain other allegations made by respondent in its brief, all of which are highlighted by petitioner in its reply brief, are not supported by the record, but rather contradict the testimony and evidence that properly is of record. 4 In the event that respondent ever would ultimately prevail in this proceeding, the appropriate change of name documents from J, Anselmo, Inc. to Skylimo, Inc. should be filed with the Office for recordation relative to the registration. 1998 WL 80134 (Trademark Tr. & App. Bd.)

2016 WL 6648972 (Trademark Tr. & App. Bd.)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)

JEANETTE K. DANIELS v. TGN SERVICES, LLC

Opposition No. 91204462 to Serial No. 85331574 October 11, 2016 Hearing: June 21, 2016 *1 Jeanette K. Daniels, pro se Jordan A. LaVine and Alexis K. Arena of Flaster/Greenberg, P.C. for TGN Services, LLC

Before Cataldo, Adlin and Heasley Administrative Trademark Judges Opinion by Heasley Administrative Trademark Judge:

Applicant TGN Services, LLC applied to register the proposed mark PROGENEALOGISTS (in standard characters) on the Principal Register in connection with the following services: publishing of narratives in electronic manuscript and electronic book forms in the field of genealogical historical data, family history data, census data, birth, marriage and death records; providing online publications in the nature of newsletters, reports and magazines in the field genealogical historical data, family history data, census data, birth, marriage and death records; publishing of books, reports, charts, magazines, newsletters and guides in the field [of] genealogical historical data, family history data, census data, birth, marriage and death records in International Class 41; and providing research services in the field of genealogical historical data, family history data, census data, birth, marriage and death records; consulting and advisory services in the field of genealogical historical data, family history data, census data, birth, marriage and death records in International Class 45. 1

Opposer Jeanette Daniels, a professional genealogist, opposes registration of the PROGENEALOGISTS mark on the ground that it is generic or highly descriptive of Applicant's genealogical services, and has failed to acquire distinctiveness. The matter is fully briefed and the parties appeared at an oral hearing. 2 For the reasons that follow, we sustain the opposition.

I. Background

Applicant's predecessor-in-interest, ProGenealogists, Inc., was founded in 1999 and incorporated in Utah in the next year. 3 In October 2004 ProGenealogists, Inc. applied to register PROGENEALOGISTS as a mark on the Principal

Register for genealogical research services. 4 In 2006, when its application was refused as merely descriptive, it consented to an Examiner's amendment to seek registration of the mark on the Supplemental Register. 5 In 2010, ProGenealogists, Inc. was acquired by Applicant, which is a subsidiary of Ancestry.com, Inc. 6 The next year, 2011, Applicant filed the subject application, claiming that the PROGENEALOGISTS mark had become distinctive of Applicant's services through substantially exclusive and continuous use in commerce. 7 15 U.S.C. § 1052(f).

*2 Opposer, in her amended Notice of Opposition, avers that she is a professional genealogist whose “genealogy college” educates its students to become professional genealogists; she further avers that Applicant's mark is generic or merely descriptive and without acquired distinctiveness, and that “There is a competitive need for Opposer, as well as other competitors in the genealogical industry, to use the informational term ‘pro genealogist,’ ‘progenealogist,’ and ‘pro genealogists' and other similar words in relation to common goods or services or other attributes associated with all aspects of genealogy.” 8 For these reasons, Opposer claims that she would be damaged by registration of the mark on the Principal Register. 9

In its Answer, Applicant admits its ownership of Supplemental Registration No. 3051870 for PROGENEALOGISTS and its existence as a corporate subsidiary of Ancestry.com, Inc., but denies Opposer's other salient allegations. 10

II. Standing

The Board found earlier, on consideration of Applicant's motion for summary judgment, that Opposer has standing. 11 As an accredited professional genealogist, as the head of a college that trains students to become professional genealogists, and as president of the Salt Lake City, Utah chapter of the Association of Professional Genealogists, Opposer clearly has an interest in using the words “pro,” “professional,” and “genealogists,” or combinations or variations thereof for genealogy services. 12 She also has a reasonable apprehension that Applicant will assert rights in the subject PROGENEALOGISTS mark against her. 13 She thus has a real interest in this opposition proceeding, and a reasonable basis in fact for believing that she would suffer damage if the mark is registered. Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012).

Accordingly, Opposer has standing. See Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1760-61 (TTAB 2013) aff'd per curiam 565 Fed. Appx. 900 (Fed. Cir. 2014) (petitioner established standing based on use of descriptive term “Annapolis Tours”) (citing Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 190 (CCPA 1982) (one basis for standing includes “descriptive use of term in registered mark”); Stuart Spector Designs Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1553 (TTAB 2009) (competitors have standing to oppose registration based on alleged genericness and lack of distinctiveness of product configuration); Ipco Corp. v. Blessings Corp., 5 USPQ2d 1974, 1976-77 (TTAB 1988) (cease and desist letter sent by applicant found sufficient to demonstrate opposer's standing)).

III. The Record

*3 Applicant's record evidence consists of: A first notice of reliance upon the subject application and its file history. The file of the subject application is automatically of record. 37 CFR § 2.122(b)(1); TBMP § 704.03.

A second notice of reliance upon Opposer's written responses to Applicant's discovery requests, specifically, written responses to requests for production of documents, responses to requests for admission, and answers to interrogatories.

A third notice of reliance upon the transcript of Opposer's discovery deposition.

A fourth notice of reliance upon exhibits I through K from Applicant's motion for summary judgment, which were also identified as exhibits during Opposer's discovery deposition, specifically: the June 5, 2014 cease and desist letter

Applicant's counsel sent to Opposer's fellow genealogists James and Mary Petty, and web pages from the Pettys' HEIRLINES genealogy website. 14

A fifth notice of reliance upon printouts of news articles demonstrating unsolicited mention of Applicant's mark. 15

The trial testimony of Natalie Cottrill, founder of ProGenealogists, Inc.

The trial testimony of Kory Meyerink, co-founder of ProGenealogists, Inc.

The trial testimony of Antonia Sears, senior director of AncestryProGenealogists (directing ProGenealogists' operations under Ancestry.com).

The trial testimony of Brian Hansen, vice president of emerging businesses at Ancestry.com, with exhibits. 16

Opposer's evidence of record consists of her notices of reliance, submitted on:

August 28, 2014, 35 TTABVUE through 54 TTABVUE;

October 12, 2014, 72 TTABVUE through 86 TTABVUE;

June 3-4, 2015, 96 TTABVUE through 260 TTABVUE.

Opposer's evidence, often duplicative, includes dictionary definitions of “pro” and “genealogist,” among other terms; numerous Internet sites using the terms “pro,” “professional” and “genealogist” together; Internet pages from Applicant's website, ProGenealogists.com; website metatags used by Applicant, such as “professional genealogist” and “genealogists”; readers' comments and postings on Applicant's website and other genealogical websites; pages from Ancestry.com's website referring to Applicant; Applicant's written responses to discovery requests; genealogical and historical narratives that Opposer has published since 1980; Opposer's certificates of accreditation; materials relating to Opposer's genealogical college courses; Applicant's cease and desist letters to professional genealogists James and Mary Petty; the Pettys' HEIRLINES website pages; USPTO file records relating to Applicant's subject and prior application and supplemental registration; materials concerning the Association of Professional Genealogists. This summary is illustrative, not exhaustive.

IV. Applicant's Objections

*4 Applicant objects that Opposer, during her rebuttal period, did not submit additional evidence in rebuttal, but instead filed a “Rebuttal Brief.” 17 This “Rebuttal Brief” lists eight of Applicant's arguments and offers Opposer's rebuttal arguments, citing evidence already of record, much like a reply brief. 18 Applicant cites the Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) for the propositions that evidence may not be introduced by attachment to a party's brief, and statements in a brief have no evidentiary value, unless supported by evidence that has been properly introduced at trial. 19 TBMP §§ 704.05(b), 704.06(b). Although these citations are not entirely on point, neither is Opposer's “Rebuttal Brief.” Simply put, Opposer's filing amounts to a premature brief on the merits of the case.

See Trademark Rule 2.128(a)(1), 37 C.F.R. § 2.128(a)(1). See also TBMP § 801.02(c). We will accordingly give no consideration to the statements made in this filing.

Applicant objects that Opposer's numerous notices of reliance function not as “cover sheet[s] for the materials sought to be introduced,” as provided in TBMP § 704.02, but as unverified declarations containing factual allegations. 20 We recognize that notices of reliance merely serve to introduce the documentary evidence attached thereto, and to indicate their relevance, and will accord them no greater import than that to which they are entitled under the applicable rules.

Applicant next argues that “Opposer has failed to designate in her Notices of Reliance the documents that are relevant to this proceeding. The Notices attach approximately 1,000 pages of documents....” 21 Applicant contends that Opposer had the duty to designate the relevant documents specifically, and that her notices should be stricken on this basis, citing FUJIFILM Sonosite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234, 1237 (TTAB 2014). This argument is not well taken, for two reasons. First, the sole issues in this case are whether Applicant's mark is generic or descriptive without acquired distinctiveness, so determining how Opposer's evidence is relevant to those issues is fairly straightforward. See Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811, 1813 (TTAB 2005) (general statement of relevance sufficient for a collection of materials), rev'd on other grounds, 2008 WL 6862402 (D.D.C. 2008). Second, an objection that a notice of reliance fails to identify the relevance of attached evidence raises a procedural deficiency that could have been cured if the objection had been timely raised. Corporacion Habanos SA v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1093 (TTAB 2012); TBMP §§ 704.08(b), 707.04. This objection is therefore overruled.

*5 Applicant next asserts broadly that “Any documents that do not fall within a category permissible under 37 CFR § 2.122(e), such as correspondence, portions of agreements, documents from an unidentifiable source, portions of manuals or advertising materials, and documents that do not appear to be publicly-available, must be stricken. These documents are also attached to Opposer's Notices, but are improper, unauthenticated, and contain statements made by witnesses who were not subject to cross-examination.” 22 Applicant's broadly-worded motion, however, does not specify the documents to which it refers or indicate with particularity how each document is inadmissible via notice of reliance. The Board encountered a similarly overbroad objection in Starbucks U.S. Brands LLC v. Ruben, 78 USPQ2d 1741 (TTAB 2006): Applicant's brief fails to identify the specific documents that he claims should be stricken from the record or the discovery requests to which such documents were allegedly responsive. The Board will not cull through each deposition and exhibit in order to identify each separate objection.

Id. at 1747.

The bulk of Opposer's documents consist of Internet printouts showing the dates accessed and URL information, which are therefore admissible. See Alcatraz Media, 107 USPQ2d at 1759 (citing Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2010)); TBMP § 704.08(b). Applicant nevertheless objects that Opposer's Internet printouts are unduly voluminous, that many come from “unspecified” or “anonymous” sources that could not be verified online, that many were “outdated,” and that they cannot be used to demonstrate the truth of what has been printed. 23 Under Safer, the documents cannot establish the truth of the matters asserted therein, but Applicant's objections are otherwise baseless. Furthermore, most of these printouts were offered not for the truth of the matter asserted, but because they show on their face third party or media generic or descriptive use of the terms “pro” and “genealogists.” See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1860 (Fed. Cir. 1987) (electronic excerpts are not hearsay because articles were not used to support the truth of the statements therein but to show descriptive usage of term). In short, Applicant's vague objections go more to the weight than the admissibility of this evidence and are accordingly overruled. Ultimately, the Board is capable of weighing the relevance and strength or weakness of the objected-to testimony and evidence, including any inherent limitations, and this precludes the need to strike the testimony and evidence. ... As

© 2018 Thomson Reuters. No claim to original U.S. Government Works. 4 AppxB036 JEANETTE K. DANIELS v. TGN SERVICES, LLC, 2016 WL 6648972 (2016) necessary and appropriate, we will point out in this decision any limitations applied to the evidence or otherwise note that the evidence cannot be relied upon in the manner sought. While we have considered all the evidence and arguments of the parties, we do not rely on evidence not discussed herein.

*6 Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1737 (TTAB 2014).

V. Analysis

A. Descriptiveness

The Lanham Act precludes registration of a term that is merely descriptive of an Applicant's services. 15 USC §§ 1052(e)(1), 1053. A mark is merely descriptive “if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” Coach Services v. Triumph, 101 USPQ2d at 1728 (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007)).

Registration of the mark PROGENEALOGISTS on the Supplemental Register is prima facie evidence of descriptiveness. In re Highlights for Children, Inc., 118 USPQ2d 1268, 1272-73 (TTAB 2016). Where, as here, “an applicant seeks registration on the basis of Section 2(f), the mark's descriptiveness is a nonissue; an applicant's reliance on Section 2(f) during prosecution presumes that the mark is descriptive.” Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009). The statute “accepts a lack of inherent distinctiveness as an established fact.” Yamaha Int'l Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988). The sole remaining issue is whether the appliedfor mark has acquired distinctiveness. Id. See also In re Cordua Rests. LP, 110 USPQ2d 1227, 1233 (TTAB 2014), aff'd 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).

B. Acquired Distinctiveness

Under Section 2(f), matter that is merely descriptive under Section 2(e)(1) may nonetheless be registered on the Principal Register if it has become distinctive of the applicant's goods or services in commerce. 15 U.S.C. § 1052(f); Cold War Museum, 92 USPQ2d at 1629; H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986). “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.” Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1480 (TTAB 2016) (quoting In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed.Cir. 2005)). Although the Opposer must put on prima facie evidence of lack of acquired distinctiveness, “the ultimate burden of persuasion is on the applicant to prove acquired distinctiveness in the mark sought to be registered.” Yamaha v. Hoshino, 6 USPQ2d at 1010. There is no fixed rule for the amount of proof necessary to demonstrate acquired distinctiveness; the evidence required is in proportion to the degree of nondistinctiveness of the proposed mark. Nextel Comm'ns, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1401 (TTAB 2009). “[T]he more descriptive the term, the greater the evidentiary burden to establish acquired distinctiveness.” In re Country Music Ass'n Inc., 100 USPQ2d 1824, 1834 (TTAB 2011).

*7 Here, there is little doubt that PROGENEALOGISTS is highly descriptive. The proposed mark directly and immediately conveys to consumers that Applicant's professional genealogists provide genealogical services. The word “pro” in Applicant's mark implies that its services are provided by professionals. In fact, “pro” is defined as “1. Informal A professional, especially in sports. 2. An expert in a field of endeavor.” 24 See Sunbeam Corp. v. Conair Corp., 220 USPQ 748, 751 (TTAB 1983) (“It is quite clear (and applicant admits) that ‘pro,’ standing by itself, is an accepted abbreviation of the word ‘professional.”’). A “genealogist” is “a person who traces or studies the descent of persons or families.” 25 The plural “s” merely informs prospective purchasers that Applicant offers the services of more than one professional genealogist.

In fact, the evidence demonstrates that Applicant adopted its proposed mark largely because of its descriptiveness. The founder of ProGenealogists, Inc., Natalie Cottrill, testified: [W]e decided to depersonalize the name and come up with a new invented name for the company that simultaneously described what we did, and then just -- you know, it wasn't in the dictionary. It was just kind of a made up name. So we registered the name ProGenealogists.com as a domain name, and we started calling the company that and the general partnership, and in October of 2000 we officially incorporated in the State of Utah As ProGenealogists, Incorporated. 26

She continued: “[O]ur name ProGenealogists, we did expert genealogists. ... It said what we did for a living and what we felt we were good at, but it's not in the dictionary.” 27

Brian Hansen, vice president of emerging businesses at Ancestry.com, testified about his conversation with Ms. Cottrill after ProGenealogists, Inc. was acquired: But I did ask her about it, and she felt like, you know, that -- she said that she felt like it was a good name, and certainly -- and the description seemed to fit what we do. It's very descriptive. And we are the ProGenealogists business, and that's how people already knew the business. 28

He continued: But when people hear the word “progenealogist,” if they've never heard that word before, I think they would assume from it that oh, there are probably some genealogists that work there that are professionals at what they do.

To use a technical term in branding, it's a synthetic brand, you know. We took a couple words and smashed them together to make a brand. 29

The descriptiveness of PRO and GENEALOGISTS is not obviated by “smashing them together” to form the compound PROGENEALOGISTS. See Minnesota Mining & Mfg. Co. v. Addressograph-Multigraph Corp., 155 USPQ 470, 472 (TTAB 1967) (“It is almost too well established to cite cases for the proposition that an otherwise merely descriptive term is not made any less so by merely omitting spaces between the words....”); In re Petroglyph Games Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (“[B]ecause the combination of the terms does not result in a composite that alters the meaning of either of the elements, refusal on the ground of descriptiveness is appropriate”); In re Aquamar, Inc., 115 USPQ2d 1122, 1125 (TTAB 2015).

*8 Applicant relies on Firestone Tire & Rubber Co. v. The Goodyear Tire & Rubber Co., 189 USPQ 348 (CCPA 1976), which found that the telescoped term BIASTEEL was not descriptive. The Court found that the term did not appear in the dictionary, and further stated: The record is also devoid of any evidence that the mark BIASTEEL connotes a particular tire or class of tires or that the purchasing public would associate the terms “bias” and “steel” with a particular

type of tire. In absence of evidence to the contrary, we cannot assume that members of the public at large would attribute the terms “bias” and “steel” to a particular tire construction.

Id. at 350. 30

Firestone, however, is distinguishable on its facts, as the Board noted in In re Cox Ent. Inc., 82 USPQ2d 1040 (TTAB 2007): “The finding [in Firestone]... was based on the lack of evidence of descriptive use of the two words together to describe the particular goods, not whether there was use of the combined terms in the exact form in which they were presented. The marks ... happened to be presented as a single term but the presence or absence of a space between the two words was not a factor....” Id. at 1044.

Applicant's proposed mark is thus highly descriptive. “Highly descriptive terms ... are less likely to be perceived as trademarks and more likely to be useful to competing sellers than are less descriptive terms. More substantial evidence of acquired distinctiveness thus will ordinarily be required to establish that such terms truly function as source-indicators.” Alcatraz Media, 107 USPQ2d at 1767, aff'd per curiam 565 Fed. Appx. 900 (Fed. Cir. 2014). Accord In re Cordua Rests., 110 USPQ2d at 1233-34, aff'd on other grounds, 118 USPQ2d 1632 (Fed. Cir. 2016).

The evidence that may establish acquired distinctiveness ...includes evidence of the trademark owner's method of using the mark, supplemented by evidence of the effectiveness of such use to cause the purchasing public to identify the mark with the source of the product. The courts have provided further guidance, stating that in determining acquired distinctiveness, relevant factors may include “copying, advertising expenditures, sales success, length and exclusivity of use, [and] unsolicited media coverage....

In re Koninklijke Philips Elecs. N.V., 112 USPQ2d 1177, 1180 (TTAB 2014) (citing 37 CFR § 2.41(a)). In this case, Applicant adduces evidence that the PROGENEALOGISTS business has enjoyed strong growth. After Ms. Cottrill founded ProGenealogists, Inc. in 1999 with fellow genealogist Kory Myerink, the company built a significant Internet presence through its website at ProGenealogists.com. 31 Although the quantification of its annual growth has been designated as confidential, it is fair to say that the company grew significantly year by year. 32 When Applicant acquired the company in August 2010, 33 Ancestry.com decided to retain the PROGENEALOGIST mark because it believed the brand had equity and value. 34 Since then, Ancestry.com has marketed ProGenealogists to its user base by means including a monthly email newsletter and a link from the Ancestry.com website. 35 Ancestry.com has expended substantial funds developing the ProGenealogists website, and Applicant expends thousands of dollars every month for online advertising through Google and Bing. 36 Genealogists on Applicant's staff also provided credited research assistance to the television show “Who Do you Think You Are?”, which explores the family history of a celebrity in each episode. 37 After the acquisition, business under the PROGENEALOGISTS brand more than tripled in size, and sales have increased nearly five-fold. 38 The sales, advertising and website view figures have all been designated as confidential, but they are significant. 39

*9 Applicant is unaware of other businesses using PROGENEALOGISTS as a brand name 40 apart from “a few instances of infringement”--such as the use of the term on the HEIRLINES website--which Applicant resolved via trademark enforcement. 41 Applicant claims that this “intentional” copying of the mark by HEIRLINES is evidence of consumer recognition and the value of the mark. 42 Aside from those few instances, Applicant claims over fifteen years of substantially exclusive use of the PROGENEALOGISTS brand. 43 Although it has no consumer studies or surveys

© 2018 Thomson Reuters. No claim to original U.S. Government Works. 7 AppxB039 JEANETTE K. DANIELS v. TGN SERVICES, LLC, 2016 WL 6648972 (2016) directly evidencing secondary meaning, it points to anecdotal evidence of consumers recognizing the name, as well as unsolicited media coverage in over 45 publications. 44

Despite Applicant's success in sales and growth, it is, in fact, using the proposed mark in a descriptive matter, which undercuts its attempts to show the mark has acquired distinctiveness. Applicant and Ancestry.com continue to use the words “pro” and “genealogists” in their descriptive sense--witness its online banner ads, such as this:

Or this:

As one of the founding partners of ProGenealogists testified:

“The demand on our services is a direct result of being a part of Ancestry. They advertise us as the vendor of choice, for lack of a better word, for professional genealogical services on their website.” 47 ...

“So I do recognize that ad. It says: “If you're looking for your family story, look to the pros.” And the advertisement is one that they've used several times on their websites.” 48

The same witness admitted, “...we are still referred to as pro genealogists, as individuals, when we speak at conferences and such....” 49 Applicant has used the following image:

Its advertising on Ancestry.com follows suit:

Applicant's website has represented to the public that: • “ProGenealogists® is a consortium of professional genealogists who specialize in genealogical, forensic, and family history research.” 52

• “ProGenealogists is pleased to be the place to go on the Internet for professional genealogists!” 53

• “ProGenealogists represents a group of professional genealogists who specialize in Genealogy and family history research” 54

*10 • “ProGenealogists® is the official research firm of Ancestry.com. Our staff consists of professional genealogists with extensive research and genealogical experience....” 55

• “ProGenealogists.com is a subsidiary of Ancestry.com consisting of professional genealogists who specialize in genealogy and family history research.” 56

The ProGenealogists.com domain name is itself highly descriptive. As the Board has noted: It is generally known and not subject to reasonable dispute that adoption and use of website domain names that impart a clear indication of the products or services offered on the website is quite common, for the obvious reason that those searching the Internet will utilize such terms in searching for products or services. There is no evidence of record suggesting petitioner adopted its domain name for any other reason.

Alcatraz Media, 107 USPQ2d at 1767, aff'd per curiam 565 Fed. Appx. 900 (Fed. Cir. 2014). Indeed, Applicant attracts visitors to its website by using key words and metatags such as “professional genealogists.” 57

Even though Applicant's proposed mark PROGENEALOGISTS mark is in standard characters, which may be depicted in any number of fonts, colors, and sizes, it has chosen to capitalize “Pro” and “Genealogists,” to depict these terms in different colors, and to refer to its staff as “pro” or professional” genealogists--all of which emphasizes the descriptive meaning of the terms. So while we recognize that, based on the record evidence, Applicant's growth in sales, advertising, and website views is impressive, those raw numbers do not necessarily mean that consumers have come to recognize its proposed mark as a source indicator. See Mini Melts, 118 USPQ2d at 1480-81. “[S]heer numbers alone are not necessarily enough to prove secondary meaning.” In re Cordua Rests., 110 USPQ2d at 1234, aff'd on other grounds 118 USPQ2d 1632 (Fed. Cir. 2016).

Applicant's decision to retain the brand after it acquired ProGenealogists, Inc., merely perpetuated its descriptive use of the terms “Pro” and “Genealogists.” As noted above, Applicant's compression of the terms into PROGENEALOGISTS does not alter their common descriptive meaning. See In re Aquamar, 115 USPQ2d at 1125. It does nothing more than shorten the term, which the public would tend to do anyway. See In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring: “the users of language have a universal habit of shortening full names -- from haste or laziness or just economy of words”).

*11 In view of the high degree of descriptiveness of Applicant's proposed mark, its fifteen years of use and advertising and sales figures are simply insufficient to establish distinctiveness. See Mag Instruments Inc. v. Brinkmann Corp., 96

USPQ2d 1701, 1723-24 (TTAB 2010) (twenty-seven years of use “simply insufficient” to show distinctiveness either alone or in connection with “substantial sales and advertising”) cited in AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829, 1838 (TTAB 2013).

Moreover, the evidence shows that these terms are ubiquitous in the field. The Association of Professional Genealogists, a national organization, has been in existence since 1979. 58 Opposer, a member of that organization, has adduced numerous examples of the public and genealogists using the terms “pro genealogist” or variations thereof, e.g.: • “How to become a pro genealogist,” 59

• “Pro genealogist Elizabeth Show Mills is taking questions on research,” 60

• “I am a pro genealogist and you can check out my website....” 61

• “‘PRO GENEALOGIST’ sleuth search,” 62

• “Betty Darnell, a pro at genealogy” 63

• “Genealogy pro helps amateur researchers at Redmond Senior Center” 64

• “Genealogist Pro's Present in Plymouth” 65

• “[L]ay the foundation for a pro genealogist to dig deeper for you...” 66

• “botsford was a pro genealogist...” 67

“When the record shows that purchasers are confronted with more than one (let alone numerous) independent users of a term or device, an application for registration under Section 2(f) cannot be successful, for distinctiveness on which purchasers may rely is lacking under such circumstances.” Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 940-41 (Fed. Cir. 1984).

Even though Applicant has shown some evidence of unsolicited media attention, as well as anecdotal evidence of scattered recognition, “a good deal more evidence than that offered here would be necessary to establish the distinctiveness of such a term.” In re The Paint Products Co., 8 USPQ2d 1863, 1867 (TTAB 1988). See Sheetz of Del., Inc. v. Doctor's Assocs. Inc., 108 USPQ2d 1341, 1370 (TTAB 2013) (“The media coverage does not demonstrate that the term ‘Footlong’ has acquired distinctiveness because the news articles use the term ‘Footlong’ generically, not as a trademark ....”).

*12 As for Applicant's contention that other professional genealogists intentionally copied its mark on the HEIRLINES website, “[c]opying is only evidence of secondary meaning if the defendant's intent in copying is to confuse consumers and pass off his [services] as the plaintiff's.” Stuart Spector v. Fender, 94 USPQ2d at1575 quoted in In re Koninklijke Philips, 112 USPQ2d at 1187. Here, the professional genealogists Applicant accuses of copying were merely using common descriptive terms in their descriptive sense. According to the Federal Circuit, “merchants act at their peril in attempting, by advertising, to convert common descriptive names, which belong to the public, to their own exclusive use.” In re Pennington Seed, Inc., 466 F.3d 1053, 80 USPQ2d 1758, 1762 (Fed. Cir. 2006) (generic use). To allow registration of Applicant's proposed mark would inhibit legitimate competition by in effect granting a monopoly to what is essentially

© 2018 Thomson Reuters. No claim to original U.S. Government Works. 11 AppxB043 JEANETTE K. DANIELS v. TGN SERVICES, LLC, 2016 WL 6648972 (2016) very common terminology in the genealogy trade, which Applicant's competitors have an equal right to use. Cf. In re Mars, Inc., 105 USPQ2d 1859, 1866 (TTAB 2013).

In short, “[G]iven the highly descriptive nature of such designation, we would need to see a greater quantity of probative evidence than what applicant has submitted in order to find that the designation has become distinctive of applicant's services. As noted above, the greater the degree of descriptiveness, the greater the evidentiary burden on the user to establish acquired distinctiveness.” In re Tennis Ind. Ass'n, 102 USPQ2d 1671, 1682 (TTAB 2013).

VI. Conclusion

We find by a preponderance of the evidence that Applicant's mark is highly descriptive, and has not acquired distinctiveness. In view of this finding, which is sufficient to sustain the opposition, we do not reach Opposer's claim of genericness.

Decision: The opposition to Applicant's mark PROGENEALOGISTS is sustained and registration to Applicant is refused.

Footnotes 1 Application Serial No. 85331574 was filed on May 26, 2011, based on Applicant's claim of first use anywhere since November 30, 1998 and use in commerce since at least as early as January 31, 1999. 2 After the parties filed their main briefs, pro se Opposer filed a Reply brief, 268 TTABVUE, followed the next day by a second, corrected substitute Reply brief, containing such improvements as a table of contents, a table of authorities, blanks in the prior version filled in, increased footnoting, page numbers, and a certificate of service. 269 TTABVUE. Several days later, after the time to file a reply brief had passed, Opposer filed a third version of her Reply brief, with a motion seeking an extension of time to file based on excusable neglect. 271 TTABVUE, 272 TTABVUE. Applicant has opposed this motion. 273 TTABVUE. The second, substitute Reply brief at 269 TTABVUE is timely, and has been considered. The third, untimely Reply brief will be given no consideration. 37 CFR § 2.128(a)(1); TBMP § 801.02(c). We hasten to note that this makes no difference to the outcome of this proceeding. 3 Cottrill Dep. 4:18-21, 263 TTABVUE 117. 4 Application Serial No. 78500167, filed on October 14, 2004, based on Applicant's claim of first use anywhere since November 30, 1998 and use in commerce since at least as early as January 31, 1999. See Applicant's First Notice of Reliance, 259 TTABVUE 7. 5 Refusal, 52 TTABVUE 45, 232 TTABVUE 5; amendment, 52 TTABVUE 66-67, 234 TTABVUE 6-7; Reg. No. 3051870, issued on the Supplemental Register on January 24, 2006. 6 Meyerink Dep. 8:2-9, 263 TTABVUE 45; Applicant's Answer to Amended Notice of Opposition ¶ 2, 22 TTABVUE 2. 7 Applicant's First Notice of Reliance, 259 TTABVUE 14, 16. 8 Amended Notice of Opposition, 21 TTABVUE 2-5, ¶¶ 1, 3, 5, 8, 9. 9 Id. 21 TTABVUE 5. 10 Applicant's Answer to Amended Notice of Opposition, 22 TTABVUE. 11 Board ruling on motion for summary judgment: “In view of the foregoing, we find that there are no genuine disputes of material fact as to the issue of standing, and that Opposer has standing as a matter of law. Therefore, Opposer's standing will be treated as established in the case.” 90 TTABVUE 5. 12 Daniels Dep. 42:1-6, 44:2-4, 56:3-4, 65:1-7, 65:25-66:3, Applicant's Third Notice of Reliance, 259 TTABVUE 58, 61, 64. 13 Daniels Dep. 37:14-22,120:4-10, Applicant's Third Notice of Reliance, 259 TTABVUE 57, 77, 82-83. See copy of cease and desist letter at 259 TTABVUE 82-83. 14 Although these items of correspondence may not ordinarily be introduced via a notice of reliance, see 37 CFR § 2.122(e), they are admissible as exhibits to Opposer's discovery deposition, and Opposer has interposed no objection to their introduction. 15 259 TTABVUE 92 et seq. 16 259 TTABVUE 4, 263 TTABVUE.

17 “Plaintiff's Rebuttal Brief,” 261 TTABVUE. 18 Id. 19 Applicant's brief, 266 TTABVUE 7-8. 20 Id. 266 TTABVUE 8-9. 21 Applicant's brief, 266 TTABVUE 9. 22 Applicant's brief, 266 TTABVUE 9. 23 Applicant's brief, 266 TTABVUE 10. 24 American Heritage Dictionary of the English Language (4 th ed. 2000), 52 TTABVUE 50-51. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d at 1229n.4, aff'd 118 USPQ2d 1632 (Fed. Cir. 2016); In re Hodgdon Powder Co., 119 USPQ2d 1254, 1256n.5 (TTAB 2016). 25 Merriam-Webster Online Dictionary, 52 TTABVUE 52. 26 Cottrill Dep. 263 TTABVUE 118, 7:6-16 (emphasis added). 27 Cottrill Dep. 263 TTABVUE 119, 10:15-17, 263 TTABVUE 121, 18:23-25. 28 Hansen Dep. 263 TTABVUE 32, 10:8-25 (emphasis added). 29 Hansen Dep. 263 TTABVUE 32,11:9-15, 12:1-8. 30 Applicant's brief, 266 TTABVUE 28. 31 Cottrill Dep. 263 TTABVUE 118, 6:19-20; Meyerink Dep. 263 TTABVUE 45, 7:21-8:2. 32 Applicant's confidential testimony is at 264 TTABVUE; its non-confidential testimony, with redactions of the confidential portions, is at 263 TTABVUE. See Cottrill Dep. 263 TTABVUE 118, 7:22-25. 33 Cottrill Dep. 12:5-6, 263 TTABVUE 119. 34 See Applicant's brief, 266 TTABVUE 30. Applicant's brief with confidential information redacted is at 266 TTABVUE; its brief with the confidential information included is at 267 TTABVUE. 35 Deposition of Antonia Sears, senior director of AncestryProGenealogists' operations, 17:8-23, 263 TTABVUE 8. 36 Hansen Dep., 7:2-25, 263 TTABVUE 31; Meyerink Dep. 14:19-15:10, 263 TTABVUE 47; Applicant's brief, 266 TTABVUE 17. 37 Cottrill Dep. Exhibit 4, 263 TTABVUE 180 et seq., 36-38 TTABVUE. 38 Meyerink Dep. 263 TTABVUE 46, 13:8-15; Cottrill Dep. 53:1-11, 263 TTABVUE 130. 39 Hansen Dep. Exhibit 1, 263 TTABVUE 43; Applicant's brief, 266 TTABVUE 6, 14, 18, 29-30. 40 Sears Dep. 16:23-25, 263 TTABVUE 7; Hansen Dep. 14:21-23, 263 TTABVUE 33; Meyerink Dep. 14:15-18, 263 TTABVUE 47; Cottrill Dep. 18:17-23, 263 TTABVUE 120. 41 Applicant's brief, 266 TTABVUE 32; Meyerink Dep. 11:14-12:11, 263 TTABVUE 46; Cottrill Dep. 20:3-21, 22:9-20, 263 TTABVUE 121-122. 42 Id. 43 Applicant's brief, 266 TTABVUE 30-32. 44 Applicant's Fifth notice of reliance, 259 TTABVUE 93-125. 45 Sears Dep. Exhibit 7, 263 TTABVUE 24. 46 Sears Dep. Exhibit 6, 263 TTABVUE 23. 47 Meyerink Dep. 263 TTABVUE 47, 13:15-19. 48 Meyerink Dep. 263 TTABVUE 50, 28:2-12. 49 Meyerink Dep. 263 TTABVUE 47, 13:25-14:2. 50 Applicant's Response to Request for Admission no. 3, 54 TTABVUE 13, 250 TTABVUE 6. 51 Ancestry.com site, Cottrill Dep., 263 TTABVUE 156. 52 39 TTABVUE 37. 53 100 TTABVUE 5. 54 127 TTABVUE 7, 11. 55 129 TTABVUE 10. 56 www.LinkedIn.com, 239 TTABVUE 4. 57 Cottrill Dep. 10:11-20, 263 TTABVUE 119; Sears Dep. 6:14-22, 263 TTABVUE 5; 35 TTABVUE 5, 15-19.

58 83 TTABVUE 2; Cottrill Dep. 53:24-54:1, 263 TTABVUE 130; Daniels Dep. 46:20-24, Applicant's Third Notice of Reliance, 259 TTABVUE 59. 59 News.Rootsweb.com, 42 TTABVUE 37, 153 TTABVUE 6. 60 Twitter.com/FamilySearch, 42 TTABVUE 33, 152 TTABVUE 10. 61 Boards.Ancestry.com, 42 TTABVUE 35, 153 TTABVUE 3. 62 Claudia'sGenealogyBlog.blogspot.com, 40 TTABVUE 50, 140 TTABVUE 2. 63 Courier-Journal.com, 41 TTABVUE 53, 147 TTABVUE 3. 64 Redmond-Reporter.com, 42 TTABVUE 7, 149 TTABVUE 7. 65 PolishNews.com, 42 TTABVUE 15, 150 TTABVUE 8. 66 Indes.net, 44 TTABVUE 25, 169 TTABVUE 4. 67 Boards.RootsWeb.com, 42 TTABVUE 46, 154 TTABVUE 9 2016 WL 6648972 (Trademark Tr. & App. Bd.)

2015 WL 2412171 (Trademark Tr. & App. Bd.)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)

JONATHAN L. FOX v. JMIR PUBLICATIONS INC.

Cancellation No. 92056565 April 29, 2015 Hearing: March 17, 2015 *1 Luke Brean of Breanlaw LLC, for Jonathan L. Fox Erik M. Pelton and Nicholas T. Santucci of Erik M. Pelton and Associates PLLC, For JMIR Publications Inc.

Before Cataldo, Greenbaum and Goodman Administrative Trademark Judges Opinion by Greenbaum Administrative Trademark Judge:

Jonathan L. Fox (“Petitioner”) seeks to cancel JMIR Publications Inc.'s (“Respondent”) registration for the mark HEALTHBOOK in standard characters for Providing an interactive web site that enables users to enter, access, track, monitor and generate health and medical information and reports; all of the above excluding services related to social networking in International Class 42; and Providing health information; Providing medical information in International Class 44. 1

I. Issues Before the Board

Preliminarily, we must determine what grounds and defenses have been tried by the parties and are before us in this case.

The ESTTA cover sheet filed with the petition for cancellation indicates that the pleaded grounds for cancellation are abandonment of the registered mark, and fraud in the procurement of Respondent's trademark registration. 1 TTABVUE 1. 2 However, the allegations in the petition for cancellation are not entirely clear.

In the petition for cancellation, Petitioner alleges that Respondent “is not currently using, and has not used for at least the past two years, and possibly longer,” the HEALTHBOOK mark for the services identified in the registration “due to a history of the Registrant's healthbook.com site being ‘down for maintenance’ as cataloged by random site screenshots provided by the archive.org Wayback Machine service.” Pet. ¶ 3, 1 TTABVUE 4-5. Petitioner also alleges that Respondent “fraudulently obtained” the registration because Respondent was not using the mark on the services identified in the registration on September 27, 2007, the claimed first date of use of the mark anywhere (Pet. ¶ 4, 1 TTABVUE 5), or on August 1, 2009, the claimed first date of use of the mark in commerce (Pet. ¶ 5, 1 TTABVUE 5), and that the specimen of use “consists of a screenshot of the admin panel of a stock installation of a free or

© 2018 Thomson Reuters. No claim to original U.S. Government Works. 1 AppxB047 JONATHAN L. FOX v. JMIR PUBLICATIONS INC., 2015 WL 2412171 (2015) commercially available social networking software script.” Pet. ¶ 5, 1 TTABVUE 5. In addition, Petitioner alleges that the “Wayback Machine service shows no active consumer facing website on any date archived between 2009-2010.” Pet. ¶ 5, 1 TTABVUE 5. Petitioner further alleges that he will be damaged because the Examining Attorney has refused registration to Petitioner based on likelihood of confusion with Respondent's registration (Pet. ¶ 2, 1 TTABVUE 4), and Respondent's registration “stands as a bar to Petitioner's ability to federally register and protect his HEALTHBOOK mark.” Pet. ¶ 6, 1 TTABVUE 6.

*2 Respondent filed an answer in which it admitted the allegations in paragraph 2 of the petition “insofar as they are supported by the official records of the U.S. Patent and Trademark Office (USPTO),” denied all other allegations in the petition for cancellation, and asserted as “affirmative defenses” that Petitioner lacks standing because his application is based on fraudulent statements as to use in commerce, and a fraudulent specimen, and therefore the application is void ab initio. Ans. ¶¶ 7-20, 4 TTABVUE 3-5.

In the “STATEMENT OF ISSUES” in his brief, Petitioner identifies the following as issues in this case: (1) Petitioner's standing; (2) whether Petitioner committed fraud on the USPTO; (3) nonuse prior to the filing date of Respondent's use- based application, rendering the registration void ab initio; and (4) abandonment of Respondent's registration based on at least three consecutive years of nonuse with intent not to resume such use. Pet. Br. at 2-3, 9 TTABVUE 8-9.

Respondent, for its part, identifies in the “ISSUES PRESENTED” section of its brief the following issues: (1) abandonment; and (2) whether equitable principles should bar Petitioner's claims because false statements in Petitioner's application render Petitioner's application, which is the sole basis for Petitioner's claims, void ab initio. Resp. Br. at 1, 10 TTABVUE 5. The “Summary of Argument” section of Respondent's brief identifies the issues as (1) whether Respondent's registration was void ab initio, or (2) whether it has been abandoned as to all of the registered services in both classes. Resp. Br. at 9; 10 TTABVUE 13. In addition, Respondent submitted as Exhibit 4 to Respondent's Second Notice of Reliance testimony in the form of a declaration 3 pertaining to “Petitioner's allegations of fraud and nonuse/ abandonment, and Respondent's defenses thereto” (8 TTABVUE 2), and Respondent devoted several pages in its brief to arguing that its registration is neither void ab initio nor abandoned. Resp. Br. at 16-24, 10 TTABVUE 12-20.

We observe that while the issue of abandonment 4 is insufficiently pleaded, and the issue of nonuse is unpleaded, 5 both parties argued these issues in their briefs and neither objected thereto. Indeed, Respondent submitted testimony addressing both issues. Accordingly, we consider the issues of abandonment and nonuse to have been tried by the implied consent of the parties, such that we can treat the pleadings to be amended pursuant to Fed. R. Civ. P. 15(b) to include them.

On the other hand, we see no need to detail the deficiencies in Petitioner's pleading with respect to its claim of fraud, as Petitioner did not raise the issue in its brief. Accordingly, we deem the claim of fraud to be waived, and give it no further consideration. See Krause v. Krause Publications, Inc., 76 USPQ2d 1904, 1906 n.2 (TTAB 2005).

*3 In addition, we note that Respondent's “affirmative defenses” of fraud and nonuse pertain to alleged misconduct and other improprieties in connection with Petitioner's pleaded application on which Petitioner relies to establish his standing. The purported misconduct and improprieties stem from Petitioner's filing of his application as a use-based application, rather than an intent-to-use application under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). 6 The “affirmative defenses” are in the nature of an affirmative defense of unclean hands, and Respondent has briefed them as such. Pet. Br. at 20-23, 10 TTABVUE 24-27. However, Respondent has not asserted a viable affirmative defense of unclean hands because such defense must be related to Petitioner's claims. See Tony Lama Company, Inc. v. Anthony Di Stefano, 206 USPQ 176, 179 (TTAB 1980) (“It might be emphasized, however, that the concept of unclean hands must be related to a plaintiff's claim, and misconduct unrelated to the claim in which it is asserted as a defense does not constitute unclean hands.”). In this case, Respondent asserts that Petitioner's unclean hands deprive Petitioner of

© 2018 Thomson Reuters. No claim to original U.S. Government Works. 2 AppxB048 JONATHAN L. FOX v. JMIR PUBLICATIONS INC., 2015 WL 2412171 (2015) his standing to maintain this proceeding. This defense therefore is not related to Petitioner's claims of Respondent's abandonment and nonuse of its mark. See also Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1738 (TTAB 2001) (“Where the conduct alleged to have resulted in unclean hands relates to a plaintiff's acquisition, or attempt to acquire, a registration, the unclean hands defense goes only to the plaintiff's ability to rely on its registration, not to its common law rights.”). Petitioner's pleaded application, as well as his alleged misconduct with regard thereto, is not otherwise before us in this proceeding.

We also note that where the ground for cancellation is abandonment, equitable defenses such as laches, bad faith and unclean hands are not available in light of the overriding public interest in removing abandoned registrations from the register. See, e.g., TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 1313 (TTAB 1989). It follows that equitable defenses, including unclean hands, should not be available against a claim that a registrant's nonuse of the subject mark prior to registration renders the registration void ab initio, since such claim, like abandonment, involves an absence of proprietary rights in a mark. No further consideration, therefore, will be given to Respondent's putative affirmative defenses.

The parties have filed trial briefs, and the Board held an oral hearing on March 17, 2015, which only Respondent attended.

II. The Record

The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 CFR § 2.122(b), the file of the subject registration.

A. Petitioner's Evidence

*4 Petitioner submitted under Notice of Reliance Petitioner's First Set of Interrogatories and Respondent's Answers thereto (5 TTABVUE 5), and Petitioner's Requests for Admissions (“RFA”) and Respondent's Responses thereto (5 TTABVUE 15).

B. Respondent's Evidence

Respondent submitted Notices of Reliance on official records from the USPTO 7 (7 TTABVUE), selected Interrogatories and Petitioner's Responses thereto (6 TTABVUE), and selected Document Requests and Petitioner's Responses thereto. Id. Responses to Document Requests cannot be made of record by notice of reliance. Trademark Rule 2.120(j)(3)(ii). However, Petitioner treated them as being of record (see Pet. Br. at 3, 9 TTABVUE 9), and therefore we deem them to have been stipulated into the record. Additionally, as noted above, the parties stipulated that the testimony of witnesses may be introduced by affidavit or declaration. See Trademark Rule 2.123(b), 37 CFR § 2.123(b). In accordance therewith, Respondent submitted under Notice of Reliance the Declaration (with attached exhibits) of Gunther Eysenbach, predecessor-in-interest to, and currently the Director and sole shareholder of, Respondent. 8 TTABVUE 10.

III. Standing

Standing is a threshold issue that must be proven by a plaintiff in every inter partes case. See Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 188 (CCPA 1982). To establish standing in a cancellation proceeding, Petitioner must show both a “real interest” in the proceedings as well as a “reasonable” basis for its belief of damage. See Ritchie v. Simpson, 170 F.2d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). A petitioner may establish standing by alleging and proving that its pending application was refused registration based on the respondent's registration. Lipton, 213 USPQ at 189 (“Thus, to have standing in this case, it would be sufficient that [plaintiff] prove that it filed an application and that a rejection was made because of [defendant's] registration.”); Fiat Group Automobiles S.p.A. v. ISM Inc., 94 USPQ2d 1111, 1112 (TTAB 2010), citing Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1959

(TTAB 2008) (“The filing of opposer's application and the Office's action taken in regard to that application provides opposer with a basis for pleading its standing ....”).

In this case, Petitioner has alleged that Petitioner's application was refused registration based on Respondent's registration. Pet. ¶ 2. However, Petitioner failed to make of record his pending application for the mark HEALTHBOOK (Serial No. 85261630), and the Office Action refusing registration under Section 2(d) of the Trademark Act based on Respondent's registration for HEALTHBOOK (Reg. No. 4148551). Instead, Petitioner attached as Exhibit A to the petition for cancellation a three-page printout from the USPTO's TSDR electronic database for the application Serial No. 85261630 showing that Petitioner is the named owner of the application for the HEALTHBOOK mark for the above-identified Class 9 goods, that the application was filed based on use of the mark in commerce pursuant to Section 1(a) of the Trademark Act, the claimed date of first use of the mark and first use of the mark in commerce, and a list of the prosecution history, whose most recent entry shows that an Office Action issued on June 29, 2012. The TSDR printout is not a copy of the application file, nor does it establish that registration has been refused based on likelihood of confusion with Respondent's registration. The TSDR printout merely shows that an Office Action currently is pending; it does not show the nature of that Office Action.

*5 However, as part of the discussion concerning the background to this proceeding, Respondent states in its brief that Petitioner filed the pleaded application, and that “[t]he Examining Attorney refused registration of Petitioner's Application Serial No. 85/261,630 on June 29, 2012, based on a likelihood of confusion with Respondent's HEALTHBOOK registration.” App. Br. p. 9, 10 TTABVUE 13. Respondent specifically references the TSDR printout as support for these statements.

Based on these acknowledgements by Respondent, Petitioner has established its standing by concession, and we treat Petitioner's application Serial No. 85261630 as being of record. We further find that Petitioner has established that he is the owner of said application for the mark HEALTHBOOK for “communications software for connecting health care users/providers,” and that Respondent's registration for the identical mark has been cited as a bar to Petitioner's application under Section 2(d) of the Trademark Act. This establishes that Petitioner possesses a real interest in the proceeding and is not a mere intermeddler. See Toufigh v. Persona Parfum Inc., 95 USPQ2d 1872, 1874 (TTAB 2010) (finding standing in a cancellation proceeding where petitioner holds “a reasonable belief that there is a likelihood of confusion between the marks, or that the presence on the register of the respondent's mark may hinder the petitioner in using or registering his mark.”).

Having found that Petitioner has standing to bring this cancellation proceeding, we now turn to the various grounds for cancellation.

IV. Claims Against Class 44 Services

Although Petitioner filed the petition for cancellation against the services identified in Class 42 and Class 44, Petitioner did not seek discovery or present testimony or evidence concerning Respondent's use of the mark for the Class 44 services. Petitioner points to the specimen Respondent provided with its application as support for his argument that the specimen does not constitute proper use of the mark in commerce, and that such use was merely “token” use. Pet. Br. at 7-9 TTABVUE 13-15. However, this is simply argument of counsel, and is not supported by any evidence. Truswal Systems Corp. v. Hydro-Air Engineering Inc., 813 F.2d 1207, 2 USPQ2d 1034, 1037 (Fed. Cir. 1987) (“Arguments of counsel are not evidence.”).

Petitioner also argues that Respondent did not provide evidence of use for the Class 44 services even though it had the opportunity to do so. Pet. Br. at 8-9, 9 TTABVUE 14-15. However, because Respondent's registration is entitled to the prima facie presumptions, under Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), of the validity of the registration, Respondent's ownership of the registered mark, and Respondent's right to exclusive use of the mark in

© 2018 Thomson Reuters. No claim to original U.S. Government Works. 4 AppxB050 JONATHAN L. FOX v. JMIR PUBLICATIONS INC., 2015 WL 2412171 (2015) commerce in connection with the identified services, Petitioner must rebut these presumptions, and establish his pleaded case (as well as his standing), by a preponderance of evidence. Cerveceria Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989). Petitioner's argument is thus an improper attempt to shift his burden of proof to Respondent before Petitioner has made a prima facie case with respect to Respondent's Class 44 services.

*6 Accordingly, the petition for cancellation is dismissed as to the Class 44 services.

V. Claims Against Class 42 Services

A. Whether Respondent's Registration is Void ab Initio for Nonuse?

Under Section 1(a) of the Trademark Act, a mark may not be registered unless it is “used in commerce.” Section 45 of the Trademark Act defines “use in commerce” as follows: The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade ... on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

In addition, “[t]he word ‘commerce’ means all commerce which may lawfully be regulated by Congress.” Id.

Where it is found that there has been no use of the mark in commerce in connection with any of the applied-for services prior to the filing date of an application under Section 1(a) of the Trademark Act, the application is void ab initio. See ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1045 (TTAB 2012) (nonuse by respondent at the time of filing the underlying use-based application, cancellation granted). In this case, the operative date is September 3, 2010, the filing date of the application which issued into the subject registration.

As with the Class 44 services discussed above, Petitioner argues that Respondent did not render any Class 42 services under the HEALTHBOOK mark as of September 3, 2010, and that any use evidenced by Respondent's specimens was merely “token” use. Pet. Br. at 7-9, 9 TTABVUE 13-15. In particular, Petitioner argues that Respondent's specimens were either a mere posting of Respondent's mark and a listing of the services, or a “functional yet almost purposeless website.” Pet. Br. at 8, 9 TTABVUE 14.

Petitioner points to the following responses to Petitioner's RFAs as admissions that Respondent did not render any services under the HEALTHBOOK mark on or before the filing date of its use-based application, and therefore the registration is void ab initio: RFA No. 7: Admit that within the last three years there has not been [ ] “an interactive web site that enables users to enter, access, track, monitor and generate health and medical information and reports” under the HEALTHBOOK brand.

Response: Admitted.

RFA No. 8: Admit that within the last three years that any HEALTHBOOK branded website did not have the capability to generate reports based on user's health information.

Response: Admitted.

RFA No. 9: Admit that within the last three years that any HEALTHBOOK branded website did not have the capability to track and monitor user health information.

*7 Response: Admitted.

Petitioner argues that the “last three years” referenced in the RFAs begins with the August 21, 2013 date on which it served the RFAs on Respondent such that Respondent has admitted nonuse of its mark from August 21, 2010 through August 21, 2013. However, Respondent signed the responses to the RFAs on October 9, 2013. The admissions therefore pertain to the three-year period of October 9, 2010 to October 9, 2013. Petitioner's argument to the contrary is illogical, and would not account for the six weeks between the August 21, 2013 service date of the RFAs and the October 9, 2013 response date. While these admissions might support a finding of abandonment, which we discuss below, they do not establish nonuse on or before September 3, 2010.

In addition, as was the case with the Class 44 services discussed above, Petitioner has pointed to nothing in the record to support a finding that Respondent's use of its mark on its specimens was merely “token” use. Similarly, Petitioner's argument that Respondent had the opportunity to present evidence of its use of the mark in connection with the Class 42 services is an improper attempt to shift Petitioner's burden of proof to Respondent, and will be given no further consideration.

Petitioner simply has failed to make a prima facie case of nonuse. As a result, Petitioner's claim of nonuse fails, and is dismissed with prejudice.

B. Abandonment

A registered trademark may be cancelled if it has been abandoned. See Section 14(3) of the Trademark Act, 15 U.S.C. § 1064(3). Under Section 45 of the Trademark Act, a mark is considered abandoned [w]hen its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from the circumstances. Nonuse for three consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of that mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

Abandonment must be proved by a preponderance of the evidence, and the burden of persuasion remains on the party seeking cancellation even if a statutory prima facie case of abandonment has been established. See On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000); Cerveceria Centroamericana, 13 USPQ2d at 1309.

Since the registration at issue originated from a use-based application, the three-year period of nonuse, proof of which would constitute a prima facie case of abandonment, is deemed to have commenced on September 3, 2010, with the filing of the application. See ShutEmDown Sports, 102 USPQ2d at 1045. Petitioner filed his petition for cancellation on December 13, 2012, less than three years after the filing date of Respondent's application.

*8 To the extent Petitioner has established a prima facie case of abandonment on this record based on Respondent's responses to RFAs, detailed above, we find that such prima facie case has been rebutted, because any nonuse of the mark by Respondent which occurred after the institution of the Opposition brought by Facebook, as well as any nonuse of the mark by Respondent which occurred after the institution of this cancellation proceeding, is excusable nonuse.

The record shows that Facebook sent Respondent a cease and desist letter demanding that Respondent: (1) expressly abandon application Serial No. 85122420 for the mark HEALTHBOOK; (2) cancel Respondent's www.healthbook.com domain name registration; (3) cease any use or intended use of the HEALTHBOOK mark; and (4) avoid using other marks that could be similar to Facebook's FACEBOOK mark. Eysenbach Decl. ¶ 16, 8 TTABVUE 12; Exhibit H, 8 TTABVUE 94. The record further shows that Respondent took down the HEALTHBOOK website on or around August

7, 2011 (Eysenbach Decl. ¶ 18, 8 TTABVUE 12), and that Facebook filed a Notice of Opposition on August 14, 2011 against Respondent's application, alleging likelihood of confusion and dilution. Eysenbach Decl. ¶ 17, 8 TTABVUE 12; Exhibit I, 8 TTABVUE 98. The record also shows that the Opposition concluded on April 24, 2012. Id. ¶ 21, 8 TTABVUE 13; Exhibit L, 8 TTABVUE 185. Petitioner filed the instant proceeding on December 13, 2012.

In view of the allegations and assertions made by Facebook in the Opposition and Petitioner herein that Respondent is not entitled to its registration, and the resulting cloud of uncertainty as to whether Respondent's rights in the registration would survive either proceeding, we find that Respondent was justified in limiting or postponing its use of the mark pending the outcome of both proceedings. See Penthouse Int'l, Ltd. v. Dyn Electronics, Inc., 196 USPQ 251, 257 (TTAB 1977) (“Moreover, nonuse of a mark pending the outcome of litigation to determine the right to such use or pending the outcome of a party's protest to such use constitutes excusable nonuse sufficient to overcome any inference of abandonment.”).

Additionally, to the extent Petitioner has established a prima facie case of abandonment and thus is entitled to an inference that Respondent does not intend to resume use of the mark, such inference is rebutted by the fact that Respondent has actively defended its right to its registration by litigating the Opposition brought by Facebook, and this proceeding. Penthouse, 196 USPQ at 257.

In summary, the statutory presumption does not appear to apply to Petitioner's claim of abandonment because Petitioner filed the petition for cancellation less than three years after Respondent filed its application. Moreover, even if Petitioner had established a prima facie case of abandonment, Petitioner has failed to prove that Respondent has abandoned use of its mark in Class 42 because any nonuse of the mark by Respondent is excused by the pendency of the Opposition brought by Facebook as well as this proceeding, and because we cannot conclude that Respondent has no intent to resume use of the mark. In view thereof, Petitioner's claim of abandonment is dismissed with prejudice as to the Class 42 services.

*9 Decision: The petition for cancellation is dismissed with prejudice as to the Class 42 and Class 44 services identified in the registration.

Footnotes 1 Registration No. 4148551, filed on September 3, 2010, under Section 1(a), 15 U.S.C. § 1051(a), claiming in each class September 27, 2007 as the date of first use of the mark and August 1, 2009 as the date of first use of the mark in commerce. The registration issued on May 29, 2012. 2 Citations to the record or briefs in this opinion also include citations to the TTABVUE docket entry number, and the electronic page number where the document or argument appears. TTABVUE is the Board's electronic docketing system. 3 Respondent also submitted the parties' Stipulation Regarding the Presentation of Evidence as Exhibit 3 to Respondent's Second Notice of Reliance. 8 TTABVUE 7. The Stipulation allows the parties to submit witness testimony and supporting documents by declaration. 4 To set forth a cause of action to cancel a registration which assertedly has been abandoned, a plaintiff must allege ultimate facts pertaining to the alleged abandonment that, if proved, would establish a prima facie case. Otto International, Inc. v. Otto Kern GMBH, 83 USPQ2d 1861, 1863 (TTAB 2007). To provide fair notice to a defendant, such a pleading must allege at least three consecutive years of non-use, or must set forth facts that show a period of nonuse less than three years, together with an intent not to resume use. See Trademark Act § 45, 15 U.S.C. § 1127. Petitioner's pleading does neither. 5 An applicant seeking registration under Section 1(a) of the Trademark Act need only use the mark before the application's filing date. See, e.g., Grand Canyon West Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1698 (TTAB 2006). A claim of nonuse of the mark in commerce requires pleading that the registrant did not use the mark in commerce on all of the goods or services listed in the application as of the filing date. See Trademark Rule 2.34(a)(1)(i); 37 CFR § 2.34(a)(1)(i). The petition for cancellation is devoid of such allegations. 6 We note that Trademark Rule 2.35(b), 37 CFR § 2.35(b) specifically allows an applicant to amend its filing basis from 1(a) to 1(b) under certain circumstances.

7 Respondent's Notices of Reliance include USPTO public records regarding the application underlying Respondent's registration and Opposition 91201187 filed August 15, 2011 by Facebook against said application. 2015 WL 2412171 (Trademark Tr. & App. Bd.)

2018 WL 529851 (Trademark Tr. & App. Bd.)

THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)

LINKEDIN CORP. v. INTERNATIONAL COUNCIL FOR EDUCATION REFORM AND DEVELOPMENT (ICERD)

Opposition No. 91225285 January 19, 2018

*1 Before Adlin, Masiello and Larkin Administrative Trademark Judges Opinion by Adlin Administrative Trademark Judge:

The International Council for Education Reform and Development (“ICERD”) seeks registration of LINKEDED, in standard characters, for: Providing an online website featuring technology which enables users to globally connect with different diverse groups within an education field, and provide tools and venues necessary to break through physical, geographical, political, language, demographics, social, and religious barriers by empowering them to share and disseminate knowledge, services, and educational tools for use in the field of education; Educational services, namely, providing an online website featuring technology which enables users to interact with educators, schools, universities, educational organizations, government educational entities, students, parents, educational consultants, educational professional developers, educational services providers and educational vendors; Providing an online educational platform, namely, providing software platforms for hosting educational content in the nature of educational video, educational audio, educational books, and educational articles of others; Providing an online platform allowing students to communicate with educators and educators to communicate with teachers around the globe, through video, audio, and text for use in the field of education; Providing an online platform, namely, providing a website featuring technology which allows students to communicate with educators and educators to communicate with teachers around the globe, in order to interact, share knowledge, and offer to exchange products or services for use in the field of education; Providing an online platform, namely, providing a website featuring technology for use in performing language translation in the field of education; Providing an online educational platform, namely, providing a website featuring technology that enables students to access academic material and educational content in multiple languages; Providing an online website featuring technology that enables students to communicate with educators and educators to communicate with other educators around the globe, in order to share real time experiences, cultures, educational systems, visuals, and human interactions for use in the field of education; Providing an online website featuring technology for viewing live, virtual academic instruction to students for use in the field of education; Providing an online website featuring technology for viewing educational content which is shown simultaneously to multiple users in multiple languages for use in the field of education; Providing an online website featuring technology that enables teachers to educate students virtually by enabling students to view real-time visual, audio, or textual content delivered digitally for use in the

field of education; Providing an online educational platform, namely, providing a website featuring technology that enables users to assess and evaluate the learning progress of students; Providing an online educational platform, namely, providing a website featuring technology that enables users to assess and evaluate the performance of educators. 1

*2 In its amended notice of opposition, LinkedIn Corp. (“LinkedIn”) alleges prior use and registration 2 of LINKEDIN and variations thereof for “the world's largest business network on the Internet” and a wide variety of related services, including offering “users the opportunity to identify and engage with others on a wide variety of educational topics in the business and professional fields.” As grounds for opposition, LinkedIn alleges that use of ICERD's mark would be likely to cause confusion with, and dilute, LinkedIn's marks, and that ICERD did not have a bona fide intention to use its mark at the time it filed the involved application. In its answer, ICERD denies the salient allegations in the amended notice of opposition.

This case now comes up for consideration of LinkedIn's fully-briefed motion for summary judgment on its claim that ICERD did not have a bona fide intent to use its mark, filed October 25, 2017. The summary judgment record is sparse, consisting primarily of ICERD's written discovery responses and a small number of documents it produced in response to LinkedIn's discovery requests. While ICERD filed a written response to LinkedIn's motion, the only evidence it submitted in opposition was a one-half page declaration from a nonparty.

The Evidence

More than two years after filing its involved intent to use application, and only after being compelled to do so “without objection” by the Board's order of August 31, 2016, 13 TTABVUE 2, 3 ICERD served its initial responses to LinkedIn's first sets of interrogatories and document requests. Therein, ICERD: admitted that it is not offering any goods or services under the LINKEDED mark, and asserted that “LINKEDED is a concept designed to eventually provide online access to educational and video services to elementary and primary educators and students;” 24 TTABVUE 70 (Response to Int. No. 2) (emphasis added); claimed that “LINKEDED is contemplated to primarily market to students and educators in the Middle East and North Africa;” id. (Response to Int. No. 4); asserted that it has no “agreement, contract or license” related to use of the LINKEDED mark, and that there are no “existing or potential business partners or investors” in goods or services to be offered under the mark; 24 TTABVUE 71 (Responses to Int. Nos. 7, 8); admitted that, “other than the previously identified documents,” it has no documents concerning its “use of or intent to use any mark that includes the component ‘LINKED;”’ 24 TTABVUE 78 (Response to Doc. Req. No. 5); as we explain later, none of the “previously identified documents” relate to use of the LINKEDED mark; admitted that it has no documents concerning its “use of the LINKEDED Mark in connection with [its] plans or preparations to develop a good and/or service;” id. (Response to Doc. Req. No. 6); and

*3 admitted that it has no documents showing its “target market for the services identified” in the involved application 24 TTABVUE 79 (Response to Doc. Req. No. 8).

In addition, and perhaps more significantly, ICERD admitted that it has no “business plans,” “proposals,” or marketing or sales plans related to the involved mark or the services allegedly intended to be offered thereunder, and admitted that it has no documents related to anticipated channels of trade for those services or the creation of any website under the involved mark. 24 TTABVUE 79-80, 82, 84 (responses to Doc. Req. Nos. 8-12, 18, 26). ICERD specifically claimed that “LINKEDED's business plan was never developed, and it was placed on hold due to commitment to current projects.” 24 TTABVUE 79 (response to Doc. Req. No. 9).

ICERD initially produced a single document in response to LinkedIn's discovery requests, consisting of a cover letter from Harvard Business Services of Lewes, Delaware to ICERD's attorney, which enclosed newly-formed LinkedEd Inc.'s Certificate of Incorporation, as well as a Statement of Incorporator (Harvard Business Services) and LinkedEd Inc.'s by-laws. Id. at 16 (Lauter Dec. ¶ 10) and 88-99. The enclosed Certificate of Incorporation, Statement of Incorporator and by-laws all appear to be forms, quite possibly used for multiple Harvard Business Services clients. None of these corporate documents reference the LINKEDED mark or the services allegedly intended to be offered thereunder.

LinkedIn then “determined that it would need to serve additional discovery in order to confirm whether Applicant possessed the requisite bona fide intent to use the LINKEDED mark in the United States,” and specifically informed ICERD that “lack of a bona fide intent to use the LINKEDED mark in U.S. interstate commerce constitutes additional grounds for opposition.” Id. at 17, 101 (Lauter Dec. ¶¶ 11, 13 and Ex. G). LinkedIn served its second sets of interrogatories and document requests, as well as requests for admission (“RFAs”) shortly thereafter. Id. at 105-135 (Lauter Dec. Exs. H-J).

In its December 30, 2016 responses to LinkedIn's second set of discovery requests, ICERD produced additional documents which, it alleges, evidence its bona fide intent to use the mark. Specifically, ICERD produced: (1) the involved application itself; (2) a “whois” report for the “linkeded.com” domain name; and (3) the previously-produced incorporation documents. Id. at 138 (Response to Doc. Req. No. 38). ICERD also indicated, for the first time, that it “will use the LINKEDED globally, as stated in its application, which necessarily includes the U.S. market. It will use the mark in its primary work in the Middle East but will also market and use the mark in the United States.” Id. (Response to Int. No. 18). ICERD further stated that “[w]hile the development of ICERD's mark and services offered through the mark are in early stages, ICERD to start the project sometime in the near future.” Id.

*4 ICERD provided additional information about LinkedEd, Inc., specifically that ICERD's founder is also the founder of LinkedEd, Inc., which “has not initiated any business activities as of yet.” However, “[a]t a future date, the necessary steps will be taken to structure the coronation (sic) as ICERD Subsidiary. The only current relationship between the Applicant and LinkedEd, Inc. is that Dr. Ghaly is an officer of and corporate representative of both entities.” Id. at 138-39 (Response to Int. No. 20). ICERD claimed that “LinkedEd, Inc. was created with the plan of future integration under ICERD (as a subsidiary) to manage some of ICERD Projects, no projects have been identified for LinkedEd, Inc. It has not initiated or been engaged in any business activities.” Id. at 139 (Response to Int. No. 21). In fact, ICERD “has not determined the exact use of the corporation.” Id. at 143 (Response to RFA No. 55).

When asked to admit that it possesses no documents “evidencing ... actions to offer or prepare to offer services identified” in the involved application, ICERD responded: “Denied in that Applicant has purchased a domain name for the mark and plans to move forward promptly with the website. Plans to initiate the project are scheduled to commence by the end of January 2017.” Id. at 124, 140-41 (Response to RFA No. 16) (emphasis added). LinkedIn confirmed that ICERD has no website accessible at the “linkeded.com” address, and it “reviewed the archived images available for the domain name on the Internet archive, archive.org,” but was unable “to locate any images of an active website at that domain.” Id. at 18 (Lauter Dec. ¶ 20).

In response to other RFAs, ICERD admitted that it “does not personally have the technology expertise to develop the services identified in the application, but Applicant does have the academic expertise to develop content for such

© 2018 Thomson Reuters. No claim to original U.S. Government Works. 3 AppxB057 LINKEDIN CORP. v. INTERNATIONAL COUNCIL FOR..., 2018 WL 529851 (2018) services.” ICERD claimed that it “will commence the search for an appropriate software development firm by late January 2017.” Id. at 142-43 (Responses to RFAs 44-51) (emphasis added).

On January 31, 2017, almost two and one-half years after filing the involved application, ICERD produced an additional document: a letter it received that same day from Strategic Innovation in Education (“SIE”). The letter “confirms” that SIE and ICERD “entered into a formal agreement for SIE to design and implement the strategic and the development plans for the LinkedEd project, incorporating ICERD's pending LinkedEd trademark.” The services to be provided include “Design of a 5-year Strategic Plan,” “Design and Implementation of 3-year development Plans,” “Design of professional and educational content and programs,” “Recruitment and selection of Website Developers and designers” and “Selection of a partner university and schools.” The letter concludes that “a fee structure for each phase with (sic) be identified and will follow this agreement.” Id. at 159 (emphasis added). Two days after ICERD produced this letter, LinkedIn requested that ICERD also produce any formal agreement between it and SIE, “as well as any related correspondence between” ICERD and SIE. Id. at 165. However, ICERD has not produced any additional documents, SIE-related or otherwise. Id. at 18 (Lauter Dec. ¶ 24).

*5 Thus, ICERD did not produce any evidence establishing what, specifically, it, LinkedEd or SIE do. Nor did it produce any evidence establishing what, specifically, it, LinkedEd or SIE have the capacity to do.

ICERD also failed to introduce any such evidence in response to the motion for summary judgment. The only evidence ICERD submitted in opposition to LinkedIn's motion is the Declaration of James M. Magee, SIE's President, who testified as follows: 3. In 2014 and 2015, both prior to and after ICERD's August 22, 2014 trademark application for LINKEDED, I had numerous discussions with Dr. Ghaly [ICERD's founder] regarding partnering SIE with ICERD and utilizing LINKEDED. These included planning sessions to market and associate LINKEDED both with my firm, SIE, and with potential United States partner universities. It has always been ICERD's and SIE's intent to use the LINKEDED mark both internationally and in U.S. commerce.

4. My January 31, 2017 [letter] summarizing the relationship between SIE and ICERD in developing and marketing the LINKEDED mark was not meant to indicate that the relationship had only started in 2017. The letter was simply summarizing ICERD and SIE's pre-existing relationship regarding LINKEDED. ICERD and SIE have been actively attempting to utilize LINKEDED and the LINKEDED mark in U.S. commerce and internationally before and after ICERD's trademark application in 2014. It is my expectation that if ICERD is permitted to move forward with the LINKEDED mark, SIE will continue to partner with ICERD in utilizing the mark in the United States and internationally.

26 TTABVUE 7.

ANALYSIS

Summary judgment is appropriate only where there are no genuine disputes as to any material fact, thus allowing the case to be resolved as a matter of law. Fed. R. Civ. P. 56(a). The party seeking summary judgment bears the burden of demonstrating the absence of any genuine dispute of material fact, and that it is entitled to judgment under the applicable law. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987). A factual dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter in favor of the non-moving party. See Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy's, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).

The evidence on summary judgment must be viewed in a light most favorable to the non-movant, and all justifiable inferences are to be drawn in the non-movant's favor. Lloyd's Food Prods., Inc. v. Eli's, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. The Board may not resolve genuine disputes as to material facts; it may only ascertain whether genuine disputes as to material facts exist. See Lloyd's Food Prods., 25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1547.

Standing

*6 Turning first to LinkedIn's standing, there is no genuine dispute of material fact. LinkedIn introduced printouts from a Patent and Trademark Office database establishing that it owns its pleaded registrations and that they are valid. 24 TTABVUE 21-44. This proves that LinkedIn has standing. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). ICERD does not claim otherwise.

Whether ICERD Had a Bona Fide Intent to Use the Mark

Before addressing the merits of this claim, we must consider LinkedIn's objection to the Magee Declaration. As LinkedIn points out, Mr. Magee was “never disclosed in Applicant's Rule 26 disclosures and never identified in response to interrogatories specifically seeking information about Applicant's business partners and persons with knowledge of Applicant's business plans.” 27 TTABVUE 3, 13, 20-35 (Lauter Reply Dec. ¶¶ 5-6; Exs. B-C).

“Under the estoppel sanction, a party that fails to provide information may, upon motion or objection by its adversary, be precluded from using that information or witness at trial, ‘unless the failure was substantially justified or is harmless.’ Fed. R. Civ. P. 37(c)(1).” Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1326-27 (TTAB 2011); TBMP § 527.01(e) (2017). The estoppel sanction applies on summary judgment as well as at trial. Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1896-97 n.5 (TTAB 1988).

Here, a Board order compelled ICERD to respond to LinkedIn's discovery requests “without objection,” but despite two sets of interrogatories and other discovery requests seeking Mr. Magee's identity and the information provided in his declaration, ICERD failed to provide or produce either. The Magee Declaration, coming more than a year after ICERD's discovery responses, and only after LinkedIn added a claim of no bona fide intent to use and filed its motion for summary judgment on that claim, was a surprise, which, because discovery was already closed, could not be cured. In fact, while Mr. Magee now claims to have significant knowledge about the most important issues presented by LinkedIn's claim of no bona fide intent to use and its motion for summary judgment, ICERD has failed to provide any explanation whatsoever for failing to identify him earlier or to timely disclose the information about which he now testifies. Under these circumstances, the estoppel sanction applies and we decline to consider the Magee Declaration. Great Seats, 100 USPQ2d at 1327-28. In any event, as explained below, even if we had considered the Magee Declaration, it would not change the ultimate result.

*7 Turning to the merits of LinkedIn's claim that ICERD did not have a bona fide intent to use the involved mark at the time it filed its application, it is settled that “the lack of such intent is a basis on which an opposer may challenge an applicant's mark.” M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892, 1897 (Fed. Cir. 2015). To be bona fide, ICERD's intent must be “firm,” “demonstrable” with “objective evidence of intent” and “more than a mere subjective belief.” Id. at 189798. We have long held, and the Federal Circuit recently affirmed, that our “determination of whether an applicant has a bona fide intention to use the mark in commerce is to be a fair, objective determination based on all the circumstances.” Id.; Lane Ltd. v. Jackson Int'l Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994); Commodore Elec. Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1506 (TTAB 1993).

LinkedIn bears “the initial burden of demonstrating by a preponderance of the evidence that applicant lacked a bona fide intent to use the mark on the identified [services].” Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008). LinkedIn may meet this burden by establishing that there is an “absence of any documentary evidence on the part of [ICERD] regarding such intent.” Commodore, 26 USPQ2d at 1507. If LinkedIn meets this burden, ICERD may “elect to try to rebut the opposer's prima facie case by offering additional evidence concerning the factual circumstances bearing upon its intent to use its mark in commerce.” Id. at 1507 n.11. However, ICERD's “mere statement of subjective intention, without more, would be insufficient to establish [its] bona fide intention to use the mark in commerce.” Lane, 33 USPQ2d at 1355.

Here, there is no genuine dispute that LinkedIn has established a prima facie case of no bona fide intent to use based on the absence of any documentary evidence regarding ICERD's intent. While ICERD has produced some documents, most have nothing to do with ICERD's intent to use the mark, and the scant documentary evidence which does bear on ICERD's intent does not relate to ICERD's intent at the time it filed its application, which is the issue here. See M.Z. Berger, 114 USPQ2d at 1898 (“we hold that whether an applicant had a ‘bona fide intent’ to use the mark in commerce at the time of the application requires objective evidence of intent”) (emphasis added); Boston Red Sox, 88 USPQ2d at 1587 (“Applicant has submitted no evidence, documentary or otherwise, to support or have a bearing on his claimed bona fide intention to use the mark when the application was filed.”) (emphasis added). In fact, here, as in Boston Red Sox, ICERD's evidence was dated “two years after the filing of [its] application and, moreover, after the notice of opposition was amended to assert a claim that applicant lacked a bona fide intent to use the mark.”

*8 More specifically, neither the domain name registration nor the involved application itself are evidence that ICERD had an intent to use at the time it filed the application. Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723 (TTAB 2010); Research in Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1931 (TTAB 2009) (“If the filing and prosecution of a trademark application constituted a bona fide intent to use a mark, then in effect, lack of a bona fide intent to use would never be a ground for opposition or cancellation ....”). And here, as in Saul Zaentz, ICERD “has never taken any steps to construct or operate a website under” the “linkeded.com” domain name. Id. at 1727; 25 TTABVUE 18 (Lauter Dec. ¶¶ 19-20) and 124, 140-41 (Response to RFA No. 16). The corporate documents ICERD produced have nothing to do with the online educational services for which it seeks registration, and therefore also do not establish ICERD's intent at the time it filed the application.

As for the January 31, 2017 letter from SIE, it is “not even remotely contemporaneous with the filing of the application.” Boston Red Sox, 88 USPQ2d at 1587. In fact, far from constituting evidence of ICERD's bona fide intent, it appears to directly contradict ICERD's alleged bona fide intent at the time it filed the application. That is, the letter reveals that almost two and one-half years after filing the application, ICERD finally got around to “enter[ing] into a formal agreement” -- not to begin actually offering the involved services, but instead to “design” and “develop” mere “plans” in the first instance. 24 TTABVUE 159. The “formal agreement” appears to have been so preliminary that the “fee structure for each phase will be identified and will follow this agreement.” Id. 4 The letter has nothing to do with ICERD's intent in August 2014 when it filed the application, and it does not even mention any of the specific services identified in the application. 5 Id; see also SmithKline Beecham Corp. v. Omnisource DDS LLC, 97 USPQ2d 1300, 1304 (TTAB 2010) (“[T]he minutes from applicant's annual meetings contain only vague references to research and development of products in the dental field for consumers and dental professionals ... No reference is made in the minutes ... [to] the oral irrigators identified” in the application). In short, there is no genuine dispute of material fact that there is a complete absence of any documentary evidence of ICERD's bona fide intent, at the time it filed the application, to use the mark for the identified services.

*9 Because LinkedIn has established a prima facie case of no bona fide intent to use, the burden shifts to ICERD “to try to rebut the opposer's prima facie case by offering additional evidence concerning the factual circumstances bearing upon its intent to use its mark in commerce.” Commodore, 26 USPQ2d at 1507 n.11. ICERD has not met this burden.

Indeed, ICERD has presented no evidence, documentary or otherwise, of its intent at the time it filed the application to use the LINKEDED mark for the identified services.

Indeed, when we step back from the individual pieces of evidence, and examine the record as a whole, we can only conclude that ICERD did not have a bona fide intent to use the mark when it filed the application. It unambiguously admitted as much in its original discovery responses. See e.g. 24 TTABVUE 70, 71, 78, 79, 80, 82, 84 (responses to Int. Nos. 4, 7, 8 and Doc Req. Nos. 5, 6, 8-12, 18, 26). In fact, “LINKEDED's business plan was never developed, and it was placed on hold due to commitment to current projects.” Id. at 79 (response to Doc. Req. No. 9). Its subsequently produced evidence is not to the contrary, because at most it establishes initial steps to use the mark starting in 2016, more than two years after the application's filing date.

To the extent ICERD argues that this proceeding has impacted its efforts to offer the identified services, 26 TTABVUE 5, this proceeding was not filed until more than one year after the application's filing date. LinkedIn's challenge to ICERD's application “does not help to establish that applicant had a bona fide intent to use the mark when he filed the application ... which is the issue here.” Saul Zaentz, 95 USPQ2d at 1729; L.C. Licensing Inv. v. Berman, 86 USPQ2d 1883, 1892 (TTAB 2008) (“Applicant's decision to forgo a business model until after the opposition is decided does not explain his failure to have any documents whatsoever at the time the application was filed that showed an intent to use the mark.”).

ICERD's “mere statement of subjective intention” to use the mark in commerce is not sufficient to rebut LinkedIn's prima facie case or establish ICERD's bona fide intent to use the mark. Lane Ltd., 33 USPQ2d at 1355. More is required, but is absent here. 6

While ICERD vaguely claims to have “the academic expertise to develop content for” the identified services, it concedes that it “does not personally have the technology expertise to develop the services identified in the application.” 24 TTABVUE 142-43 (responses to RFAs 44-51). It provides no evidence of its unexplained “academic expertise,” however, or work on projects similar to what is described in its identification of services. ICERD's admitted lack of capacity to provide the identified services themselves, and its failure to even identify a potential partner with the necessary capacity until years after it filed its application further supports a finding that ICERD did not have a bona fide intent to use the mark. M.Z. Berger, 114 USPQ2d at 1899; Lincoln Nat'l, 110 USPQ2d at 1278-79 (“We find that these admissions by applicant that he himself lacks the capacity to provide the identified Class 35 and Class 36 services support a finding of no bona fide intent.”); L'Oreal S.A. v. Marcon, 102 USPQ 1434, 1443 (TTAB 2012); Honda Motor Co. v. Winkelmann, 90 USPQ2d 1660, 1662 n.5 (TTAB 2009).

*10 “To raise a genuine issue of material fact, applicant must rely on specific facts that establish the existence of an ability and willingness to use the mark in the United States to identify its claimed [services] at the time of the filing of the application.” Honda Motor Co., 90 USPQ2d at 1666. Applicant has presented no such specific facts or evidence, and mere “academic expertise to develop content” is far from sufficient to establish a bona fide intent to use for an online educational platform with the functionality described in the identification of services. There is therefore no genuine dispute of material fact and LinkedIn is entitled to judgment as a matter of law on its no bona fide intent to use claim.

Conclusion

LinkedIn has made out a prima facie by establishing that ICERD has no documentary evidence of its bona fide intent to use the involved mark for the identified services at the time the application was filed. ICERD has not rebutted this prima facie case.

To the contrary, the record here is analogous to several other cases in which the applicant had no evidence of its business plans or partners, its capacity to offer the identified goods or services, its concrete steps taken in preparation for using

© 2018 Thomson Reuters. No claim to original U.S. Government Works. 7 AppxB061 LINKEDIN CORP. v. INTERNATIONAL COUNCIL FOR..., 2018 WL 529851 (2018) the mark or its design or marketing preparations at or near the time of filing. See e.g. L'Oreal, 102 USPQ2d at 1443-44; SmithKline Beecham, 97 USPQ2d at 1304-05; Saul Zaentz, 95 USPQ2d at 1729-30. Here, as in those cases, the evidence is consistent not with a bona fide intention to use at the time of filing, but rather with an intention “merely to reserve a right in a mark.” Swatch AG (Swatch SA) (Swatch Ltd.) v. M.Z. Berger & Co., 108 USPQ2d 1463, 1477 (TTAB 2013), aff'd 114 USPQ2d at 1892; Research in Motion, 92 USPQ2d at 1931. “The absence of documentation coupled with applicant's failure to take testimony or offer any evidence supporting its bona fide intent to use ... convince us that applicant did not possess a bona fide intent to use the mark.” SmithKline Beecham, 97 USPQ2d at 1304.

LinkedIn's motion for summary judgment is therefore GRANTED. Judgment is entered against ICERD, the opposition is sustained and registration to applicant is refused. 7

Footnotes 1 Application Serial No. 86375240, filed August 22, 2014 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on an alleged bona fide intent to use the mark in commerce. 2 Registration Nos. 3971642, 4023512, 3959413, 3963244, 4067996, 4158263, 3074241, 3074242, 3971643, 4016685, 3967561 and 3979174. 3 Citations to the record reference TTABVUE, the Board's online docketing system. Specifically, the number preceding “TTABVUE” corresponds to the docket entry number(s), and any number(s) following “TTABVUE” refer to the page number(s) of the docket entry where the cited materials appear. 4 It appears that the January 31, 2017 letter, less than one page long, is itself the “formal agreement.” Indeed, it concludes by indicating that the “fee structure ... will follow this agreement,” and despite LinkedIn's direct request for any formal agreement in addition to the letter, ICERD failed to produce anything. 24 TTABVUE 18 (Lauter Dec. ¶¶ 23, 24). 5 We hasten to add that even if we had considered the Magee Declaration, the result would be the same. While Dr. Magee claims to “have worked with Applicant ICERD and its President Dr. Joseph Ghaly on a number of education related projects in the United States,” he does not reveal anything about the nature of those “projects,” much less that they have anything to do with the services identified in ICERD's application. Similarly, while Dr. Magee claims to have had “numerous discussions” with Dr. Ghaly about “utilizing LINKEDED,” there is no evidence that they discussed “utilizing LINKEDED” in connection with the identified services. 26 TTABVUE 7. See Lincoln Nat'l Corp. v. Anderson, 110 USPQ2d 1271, 1280-81(TTAB 2014) (“We find that these letters provide little or no support for applicant's claim of bona fide intent. None of them refers specifically to any of the identified Class 35 or Class 36 services at issue in this case, but rather only to applicant's general ideas and hopes for his FUTURE project.”). 6 This case calls to mind Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001 (TTAB 2015). As we stated there, “[t]o be blunt, the record as a whole reveals that Applicant is unable to get its story straight.” Id. at 2010 (citing M.Z. Berger, 114 USPQ2d at 1899 (“The Board was within its discretion to disagree with Berger's bottom-line position that it possessed a bona fide intent, given the inability of the Berger witnesses to pull together a consistent story on a number of issues ....”)). Here, as in Swiss Grill, ICERD's “evolving and internally inconsistent story lines read more as after-the-fact rationalizations, than as credible evidence of a bona fide intent to use” the involved mark at the time of filing. Id. While ICERD's credibility is not a basis upon which we may grant summary judgment, and our decision is based not on credibility or the lack thereof but rather on ICERD's lack of any evidence of a bona fide intent to use on the application's filing date, ICERD's difficulty in coming up with a consistent story is a logical consequence of its lack of evidence of a bona fide intent to use. 7 Because the opposition is sustained on the ground of no bona fide intent to use, we need not reach LinkedIn's likelihood of confusion or dilution claims. 2018 WL 529851 (Trademark Tr. & App. Bd.)

2003 WL 21206253 (Trademark Tr. & App. Bd.)

THIS OPINION IS NOT CITABLE AS PRECEDENT OF THE T.T.A.B.

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)

NOUGAT LONDON LTD. v. CAROLE GARBER

Cancellation No. 92040460 May 14, 2003

*1 Before Seeherman, Quinn, and Drost Administrative Trademark Judges

By the Board:

Nougat London Ltd. has petitioned to cancel Registration No. 2,448,393 for the mark NOUGAT for “men's clothing, namely, suits, sweaters, ties, underwear, jackets, coats and belts; women's clothing, namely, dresses, skirts, jackets, pants, t-shirts, sweatshirts, coats and sweaters; children's clothing, namely, dresses, sweaters, coats, jackets and pajamas”. The registration issued May 1, 2001 from an application filed by Carole Garber, an individual and citizen of Canada, on August 2, 1999 based on applicant's assertion of a bona fide intention to use the mark in commerce. A Statement of Use was filed on November 29, 2000, claiming a date of first use in commerce between the United States and Canada of August 13, 2000.

In its amended petition to cancel 1 , petitioner asserts that it is a United Kingdom clothing manufacturer which has used the mark NOUGAT for clothing since long prior to the filing date of the application which matured into Registration No. 2,448,393; that on May 2, 2002, petitioner filed application Serial No. 76/403784 for registration of the mark NOUGAT for, among other things, clothing, based on its assertion of a bona fide intention to use the mark in commerce; that at all relevant times Carole Garber was petitioner's Canadian distributor of petitioner's clothing bearing petitioner's NOUGAT mark; that petitioner did not consent to Garber's U.S. registration of petitioner's NOUGAT mark; that Garber was not the owner of the NOUGAT mark as alleged in the application which matured into Registration No. 2,448,393; that Garber has not used the mark as alleged in her Statement of Use filed November 29, 2000; that Garber knowingly falsely alleged her ownership of the NOUGAT mark in the application which matured into Registration No. 2,448,393 with intent to deceive the U. S. Patent and Trademark Office in order to obtain the registration; that Garber knowingly falsely alleged use in commerce of the NOUGAT mark in the application which matured into Registration No. 2,448,393 with intent to deceive the U. S. Patent and Trademark Office in order to obtain the registration; that Registration No. 2,448,393 is void ab initio because Garber was not the owner of the mark at the time the application which matured into that registration was filed; that Registration No. 2,448,393 is void ab initio because Garber has not used the mark at any relevant time; that Registration No. 2,448,393 was fraudulently obtained by virtue of Garber's knowingly false allegations of ownership of the NOUGAT mark; that Registration No. 2,448,393 was fraudulently obtained by virtue of Garber's knowingly false allegations of use of the NOUGAT mark; and that continued registration will damage petitioner because petitioner cannot use its NOUGAT mark without concern over litigation and because the registration is likely to result in a refusal to register petitioner's pending application.

*2 On December 10, 2002, respondent filed her answer denying the salient allegations of the amended petition to cancel.

This case now comes up on petitioner's motion for summary judgment on the ground that respondent committed fraud in the filing of the Statement of Use, and on the ground that respondent has not used the mark in commerce. To succeed on such a motion, the party moving for summary judgment must show the absence of any genuine issue of material fact, and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c); and Celotex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct. 2548 (1986). The evidence must be viewed in a light favorable to the non-movant, and all justifiable inferences are to be drawn in the non-movant's favor. See Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).

There is no genuine issue that petitioner has standing. Petitioner has made of record a copy of its pleaded application (Exhibit F to petitioner's motion for summary judgment). Thus, petitioner has shown that it is not a mere intermeddler. See Richie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).

Respondent asserts that petitioner lacks standing to bring this action, arguing in its Opposition to Petitioner's Motion for Summary Judgment, page 7: The goods with which petitioner has stated under oath it has a bona fide intention of using the mark NOUGAT encompasses not only goods with which there is a likelihood of confusion with the goods in Reg. No. 2,448,393 but goods that have nothing whatsoever to do with clothing … It is apparent that this ITU application was filed for the express purpose of attempting to obtain standing. Because it is inherently unlikely that the declaration contained in the application is true, or that applicant does have such a bona fide intention, it is submitted that it would constitute an imposition on this Board should the application be considered to confer standing on petitioner.

Respondent contends that petitioner's application to register its NOUGAT mark cannot confer standing because petitioner cannot have a bona fide intention of using the mark NOUGAT with both the clothing and non-clothing goods listed in petitioner's application. Respondent has provided no support for its assertion, and therefore we do not consider it to have raised a genuine issue of material fact.

*3 Turning to the pleaded ground of fraud, petitioner asserts that no genuine issue of material fact remains for trial and that petitioner is entitled to judgment as a matter of law. Specifically, petitioner asserts that respondent's discovery responses unequivocally demonstrate that at the time respondent filed her Statement of Use respondent's use of the mark was limited to a single sale of women's skirts; and that respondent's Statement of Use was therefore fraudulent insofar as it alleged use of the mark in commerce on a range of clothing items with which respondent had not used its mark in commerce. Petitioner's motion is supported by the declaration of Stephen Toff, Managing Director of petitioner, and accompanying exhibits.

In opposing entry of summary judgment for petitioner on the ground of fraud, respondent does not dispute that at the time she filed her November 29, 2000 Statement of Use her use of the mark in commerce was limited to a single August 13, 2000 sale of women's skirts. 2 Instead, respondent alleges that the Statement of Use was not fraudulent because of the specific wording used in the statement. Specifically, respondent asserts that she did not say that the mark was being used on all of the goods identified in the Notice of Allowance, but that her statement said only that “Applicant is using the mark in commerce between the United States and Canada in connection with goods identified in the Notice of Allowance”. Respondent further alleges (Opposition to Petitioner's Motion for Summary Judgment, page 9): Of course applicant recognized that she was not using the mark with the goods set forth in the Notice of Allowance. So, she did not say in the SOU that she was using the mark in connection with the goods, just “goods,” i.e. one or more of the goods.

Respondent's opposition is supported by her declaration, and accompanying exhibits.

In order to prevail on a claim of fraud in procuring a trademark registration, petitioner must plead and prove that respondent knowingly made “false, material representations of fact in connection with [its] application.” Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986). To constitute fraud on the U.S. Patent and Trademark Office, a statement must be (1) false, (2) made knowingly, and (3) a material representation. The charge of fraud upon the Office must be established by clear and convincing evidence. See Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955 (TTAB 1986).

There is no genuine issue that at the time respondent filed her Statement of Use she had not made use of her mark on all of the goods listed in the Notice of Allowance, and that she knew she had not made such use. In fact, there is no genuine issue that at the time respondent filed her Statement of Use the only goods on which she had used her mark in commerce were women's skirts.

*4 Nor is there a genuine issue that the verified statements made in a Statement of Use are material to the issuance of a registration. An application based on intent-to-use will not issue as a registration until a Statement of Use has been filed. Moreover, Trademark Rule 2.88(c) provides that the Statement of Use may be filed only when the applicant has made use of the mark in commerce on or in connection with all of the goods or services, as specified in the Notice of Allowance, for which applicant will seek registration in that application, unless the Statement of Use is accompanied by a request to divide out from the application the goods or services to which the Statement of Use pertains.

Thus, it is clear that an intent-to-use application will be approved for registration for all the goods listed in the Notice of Allowance only if the applicant has used the mark in commerce in connection with all of such goods and services. Clearly, statements regarding the use of the mark on goods are material to issuance of the registration. See First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988)(fraud found in applicant's filing of application with verified statement that the mark was in use on a range of personal care products when applicant knew it was in use only on shampoo and hair setting lotion); see also Torres v. Cantine Torresella S.r.l., supra, at 49 (fraud found in registrant's submission of renewal application stating the mark was in use on wine, vermouth, and champagne when registrant knew it was in use only on wine).

The gist of respondent's opposition to the motion for summary judgment is respondent's assertion that the statements in her verified Statement of Use were not false. As noted above, respondent claims that her Statement of Use was not false because she did not assert that she was using her mark on the goods listed in the Notice of Allowance, but only on goods listed in the Notice of Allowance.

Trademark Act Section 1(d)(1) states (emphasis added): Within six months after the date on which the Notice of Allowance with respect to a mark is issued under section 13(b)(2) to an applicant under subsection (b) of this section, the applicant shall file in the Patent and Trademark Office, together with such number of specimens or facsimiles of the mark as used in commerce as may be required by the Director and payment of the prescribed fee, a verified statement that the mark is in use in commerce and specifying the date of the applicant's first use of the mark in commerce, and those goods or services specified in the Notice of Allowance on or in connection with which the mark is used in commerce.

15 U.S.C. Section 1(d)(1). Section 1109.13 of the Trademark Manual of Examining Procedure (3rd ed. 2002) (“TMEP”) provides that “The Statement of Use must either list or incorporate by reference the goods/services specified in the Notice

© 2018 Thomson Reuters. No claim to original U.S. Government Works. 3 AppxB065 Nougat London Ltd. v. Garber, 2003 WL 21206253 (2003) of Allowance on or in connection with which the mark is in use in commerce … To incorporate the goods/services by reference, the applicant may state that the mark is in use on ‘those goods/services identified in the Notice of Allowance’ or ‘those goods/services identified in the Notice of Allowance except … [followed by an identification of the goods/ services to be deleted].”’

*5 It is clear from respondent's statements that she deliberately omitted the word “the” in order to mislead the Office into believing that she had used her mark in commerce on all of the goods listed on the Notice of Allowance when in fact she had not. Suffice it to say, the requirements of the Trademark Act and the Trademark Rules do not permit such semantic games. The provisions of the Trademark Act, the Rules, and the Trademark Manual of Examining Procedure are very clear: the intent-to-use applicant must make use of the mark on all of the goods listed in the Notice of Allowance for which applicant seeks registration, and if an applicant has not used the mark on all of the listed goods, it may either request to divide out those goods from the application, or may state that the mark has been used on all the goods except, followed by a list of goods for which use has not been made, and which must be deleted from the application.

Applicant did not follow either of these procedures, and instead attempted to obtain something to which she was not entitled by taking the specious position that the omission of the word “the” meant that the mark was not in use on all the goods. Respondent cannot, by this sophistry, make a false statement true. We find it particularly ironic, given her own argument, that she would take umbrage at petitioner's reference to her statement: Based on its deliberate misquote, it is as though petitioner is saying that Ms. Garber declared that she was using the mark in connection with all of the goods listed in the Notice of Allowance and, sure enough, petitioner stoops to that allegation…

Opposition to Petitioner's Motion for Summary Judgment, page 9.

Although in general fraud is extremely difficult to establish, and findings of fraud on summary judgment are rare indeed, in this case it is hard to imagine more clear and convincing evidence of fraud than the statements made by respondent herself in her opposition to the summary judgment motion, statements which are fully supported by the record. In her eagerness to avoid the allegation that her Statement of Use falsely claimed use with all goods listed in the Notice of Allowance, respondent readily admits that she willfully omitted the article “the” in her verified Statement of Use to obtain the benefits of a use-based trademark registration covering a wide range of clothing items when her actual use was limited to a single item of clothing.

In summary, we find that there is no genuine issue that respondent's Statement of Use falsely stated the goods on which respondent had used her mark in commerce; that she knew when she made this statement that it was false, and that this statement was material, in that the Office would not have issued the registration for all the goods listed in the Notice of Allowance had it known that respondent had used her mark only on women's skirts. Thus we find as a matter of law that Registration No. 2,448,393 was fraudulently procured.

*6 Respondent has stated in her Opposition to Petitioner's Motion for Summary Judgment, pages 9-10, that “In all candor, it would not be the most tragic remedy if the registration were at this time restricted to women's wearing apparel, and Ms. Garber be accorded her intent to expand her use of the mark to men's and children's wearing apparel in futuro.” Preliminarily, we note that respondent continues to seek a registration to which she is not entitled. As has been discussed above, while an intent-to-use application may specify goods and/or services with which an applicant intends to use its mark in commerce, any registration which issues from that application must specify only those goods and/or services with which applicant actually has used the mark in commerce. Even with the proposed restriction to the registration, it would still include “women's clothing, namely, dresses, skirts, jackets, pants, t-shirts, sweatshirts, coats and sweaters”. However, as previously noted, respondent has used her mark in commerce only on women's skirts.

Even if respondent sought to restrict her registration to women's skirts, this would not cure the fraud upon the Office or avoid cancellation of the registration on such ground. Medinol Ltd. v. Neuro Vasx, Inc., _ USPQ2d _, Canc. No. 40,535 (TTAB May 13, 2003). See also General Car and Truck Leasing Systems, Inc. v. General Rent-A-Car Inc., 17 USPQ2d 1398, 1401 (S.D. Fla. 1990), aff'g General Rent-A-Car Inc. v. General Leaseways, Inc., Canc. No. 14,870 (TTAB May 2, 1998). Thus, in light of the finding of fraud, restriction of the registration is not an appropriate remedy.

Accordingly, petitioner's motion for summary judgment on the ground of fraud in the filing of the Statement of Use is granted, and judgment is entered against respondent. Registration No. 2,448,393 will be cancelled in due course. In view of our decision herein on the fraud claim, we need not address the second ground of petitioner's motion which asserts that respondent has failed to use her mark in commerce.

Footnotes 1 On December 4, 2002, the Board granted petitioner's motion to file an amended petition to cancel which added petitioner's claim of ownership of pending application Serial No.76/403784, filed May 2, 2002. 2 Respondent states (Opposition to Petitioner's Motion for Summary Judgment, page 5) that “Obviously, there were three separate and distinct sales made by [respondent]: (1) the sale on which the Statement of Use is based, made on August 13, 2000, (2) the sale that preceded the invoice dated September 18, 2002, and (3) the sale that preceded the invoice dated October 11, 2003.” 2003 WL 21206253 (Trademark Tr. & App. Bd.)

2012 WL 6654126 (Trademark Tr. & App. Bd.)

This Opinion is NOT a Precedent of the TTAB

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)

WARNER BROS. ENTERTAINMENT INC. v. AKKE WAGENAAR

Opposition No. 91186293 against Serial No. 77241742 December 6, 2012 Hearing: July 17, 2012 *1 Elizabeth H. Cohen, Michael A. Grow and Chiara Giuliani of Arent Fox LLP for Warner Bros. Entertainment Inc. Akke Wagenaar, pro se.

Before Bucher, Kuhlke and Kuczma Administrative Trademark Judges Opinion by Bucher Administrative Trademark Judge:

Akke Wagenaar, a citizen of The Netherlands and a resident of Senegal, seeks registration on the Principal Register of the mark ANIMATRIX for services recited in the application as “entertainment services, namely, the production of computer graphics animations, conducting entertainment exhibitions in the field of computer graphics animations, and providing information via a global computer network about computer graphics animations” in International Class 41. 1

Warner Bros. Entertainment Inc. (hereinafter “opposer” or “WBEI”) opposed registration of Ms. Wagenaar's mark, asserting as its ground for opposition, that her application is void ab initio, alternatively, that applicant abandoned any rights that she may have ever possessed in the term “Animatrix,” and that applicant committed fraud in procuring her trademark registration by knowingly making false, material representations of fact in connection with her application.

Ms. Wagenaar filed an amended answer denying the salient allegations of the notice of opposition. She tried to allege affirmative defenses (e.g., opposer's failure to state a claim, waiver/laches/acquiescence, unclean hands, and estoppel) but there are no facts which support these defenses, and we consider the defenses to have been waived. While both parties submitted evidence for the record, only opposer filed a brief and appeared at a hearing before this panel as requested by opposer herein.

Preliminary Matters

On April 4, 2011, WBEI filed an uncontested motion to strike portions of Ms. Wagenaar's Notice of Reliance of February 24, 2011. This motion was correctly deferred until final decision.

Ms. Wagenaar attempts to introduce into evidence portions of her own discovery deposition taken by WBEI. However, we agree with WBEI that only an adverse party can introduce into evidence the discovery deposition of a party. 37 C.F.R.

§ 2.120(j)(1). Furthermore, her attempted use of her deposition testimony does not fit within any of the exceptions listed in the rule. See TBMP § 704.09 (3rd ed. rev. 2012).

*2 Similarly, Ms. Wagenaar attempts to introduce into evidence her response to WBEI's Interrogatory No. 19. However, we agree with WBEI that only the inquiring party may introduce into evidence interrogatory responses by notice of reliance. 37 C.F.R. § 2.120(j)(5). Furthermore, this does not fit within any of the exceptions listed in the rule. See TBMP § 704.10.

Hence, these portions of applicant's Notice of Reliance have been stricken.

WBEI also filed separate from its main brief a detailed Statement of Objections to the evidence submitted during Ms. Wagenaar's Testimony Period. Although applicant's declaration dated February 14, 2011 (with attendant exhibits) was submitted pursuant to the parties' stipulation (filed April 12, 2011), we strike much of this alleged evidence given the extraordinary number of objectionable statements and exhibits offered by applicant therein. 2 We will summarize briefly the objections, and our reasons for striking the evidence.

A large number of exhibits (and related testimony) has been stricken because they consist of documents that opposer requested during discovery but that applicant failed to produce at that time. See Byer California v. Clothing for Modern Times Ltd., 95 USPQ2d 1175 (TTAB 2010); Panda Travel Inc. v. Resort Option Enterprises Inc., 94 USPQ2d 1789 (TTAB 2009).

Some of the exhibits attached to applicant's declaration appeared to be altered versions of documents that had been produced during discovery (e.g., discrepancies included blurry screenshots of earlier textual versions having additional browser information, additional or different information, added handwriting, etc.). These exhibits have been stricken from the record.

Exhibits that appear to be screenshot printouts of Internet websites crop out important portions of a larger image, and often lack both the URL and the date the document was printed, and this failure of authentication was not ameliorated through the portions of her declaration ultimately made a part of the record herein.

Furthermore, applicant took statements from these websites and clearly placed them into the record for the truth of the statements, although the statements comprised pure hearsay from individuals who were never subject to cross examination. As seen above, this failure was not cured in the portions of her declaration ultimately made a part of the record herein.

In Section A of applicant's testimony, in addition to references to documents that were never produced in discovery, applicant's testimony about six other works of art have nothing to do with the term “Animatrix,” and have no relevance whatsoever to the question of whether she used the term “Animatrix” as a service mark.

In Section B of applicant's testimony (and related exhibits): (i) foreign use of a term creates no rights in the United States and is irrelevant; (ii) in addition to relevancy problems, most of these referenced exhibits were not authenticated, are not the best evidence and suffer from problems of hearsay; (iii) a screenshot of a web page alleged taken from a New York based art archive that references applicant's artwork is irrelevant because it fails to show service mark usage, and there is no evidence that anyone ever accessed that website or viewed this artwork; (iv) we exclude documents recreating “lost evidence,” where the originals were never produced, inasmuch as these replaced versions violate the best evidence rule (FRE 1002) and they cannot be authenticated (FRE 901); (v) documents from archives outside the United States are irrelevant and were not produced during discovery; (vi) documents from U.S. archives were not produced during discovery, are hearsay, violate the best evidence rule and cannot be authenticated; (vii) applicant's statements about alleged TV broadcasts and lectures are irrelevant, were not produced during discovery, are hearsay, violate the best

© 2018 Thomson Reuters. No claim to original U.S. Government Works. 2 AppxB069 WARNER BROS. ENTERTAINMENT INC. v. AKKE..., 2012 WL 6654126... evidence rule, cannot be authenticated, and there is no evidence that anyone in the U.S. viewed these broadcasts; and foreign language materials without translations are also excluded.

*3 In Section C of applicant's testimony (and related exhibits): (i) additional documents were not produced during discovery and have been stricken; (ii) statements drawn from the Internet that were allegedly made by one Michael Arias are hearsay and have been stricken; (iii) that Mr. Arias was present at the SIGGRAPH conference in California in 1993 is irrelevant and completely unsupported by the record; (iv) there is no support for the conclusion that applicant is well- known in Japan, that Mr. Arias ever knew of her single work of art; or that Mr. Arias even had anything to do with opposer's selection of the ANIMATRIX mark.

In Sections D and E of applicant's testimony (and related exhibits): (i) applicant's testimony and exhibits about sending emails on the Internet prior to 1995 are irrelevant because they do not show service mark usage of the term “Animatrix,” reference documents that were not produced in discovery, are cumulative, duplicative, have not been authenticated, are mostly hearsay, Ms. Wagenaar is certainly not qualified as an Internet expert, and applicant's testimony in these sections, taken as a whole, simply creates doubts as to her credibility; (ii) excerpts of applicant's own discovery deposition are inadmissible under 37 C.F.R. § 2.120(j)(1); TBMP § 704.09; (iii) an excerpt of opposer's interrogatory is improper under 37 C.F.R. § 2.120(j)(5); TBMP § 704.10; and (iv) it defies logic to conclude, as Ms. Wagenaar would have us do, that a note of September 29, 1999, on Nettime, a moderated mailing list for net criticism placed by net artist Alexei Shulgin in which he explained to net.art historians where to find “traces of err.org” (Ms. Wagenaar's former website), justifies a finding that applicant is either “quite known” among the general public, or that “people are looking for her.” Wagenaar Test. Decl. at 37, Ex. E013.

In Section F of applicant's testimony (and related exhibits): (i) whether applicant had a reputation among “computer art fans” is irrelevant to any issue in this proceeding; (ii) applicant's references to Japanese art awards that she allegedly won and art books in which she allegedly appeared are all irrelevant since they demonstrate no service mark usage in the U.S.; and (iii) like the other Internet evidence reviewed above, the testimony and exhibits in this section should be stricken on the same grounds as the other Internet evidence, namely, hearsay, lack of authentication (neither self-authentication nor through non-stricken portions of her declaration), lack of personal knowledge, and failure to produce during discovery.

In Section G of applicant's testimony (and related exhibits): (i) applicant's speculation about opposer's selection of the ANIMATRIX mark is completely irrelevant to the issues in this proceeding; (ii) the Internet documents are mere hearsay, they lack authentication or corroborating witness testimony, lack foundation and are cumulative; (iii) this material is stricken inasmuch as applicant has no personal knowledge of the alleged facts, but instead relies upon a series of random web pages (submitted without foundation, dates or URLs), to speculate that opposer's ANIMATRIX film had no title at one point, and then to conclude that it was later known as “Into the Matrix”; (iv) applicant relies upon two of opposer's registrations that are not of record; (v) applicant's strained conclusion that opposer's counsel's privilege log supports an inference that opposer knew about applicant's “Animatrix” artwork is merely speculation and conjecture that is stricken from the record; (vi) applicant's claim that her artwork can no longer be found with an Internet search is irrelevant to the issues presented in this case; (vii) possible foreign registrations by either party have no bearing on the issues presented in this proceeding; and (viii) whether applicant has U.S. trademark applications or registrations for ANIMATRIX is not relevant to opposer's interest in bringing an opposition, given its common law rights.

*4 In Sections I and J of applicant's testimony (and related exhibits): (i) exhibits purporting to show where applicant lived at various times are stricken inasmuch as her résumé was never produced during discovery; (ii) as seen earlier, inadmissible screenshots containing unauthenticated hearsay in the form of unsworn statements printed from the Internet are stricken (and again, many do not contain source and date information); (iii) applicant is not qualified as an expert to offer any opinion as to opposer's adoption or use of its ANIMATRIX mark; and (iv) the mere fact that a third party (e.g., the www.waybackmachine.com online archive) failed to archive a given website does not mean that the website was not live, and in any case, applicant's allegations on this score are immaterial to any issue in this proceeding.

The Record

The record includes the pleadings; the file of the involved application; the Testimony Deposition of Jack A. Hitt (November 17, 2010) and exhibits thereto (“Hitt Dep.”); the Testimony Deposition of David Hedrick (October 28, 2010) and exhibits thereto (“Hedrick Dep.”); the Testimony Deposition of Michael Kory (October 27, 2010) and exhibits thereto (“Kory Dep.”); the Testimony Deposition of Alayne R. O'Neill (June 16, 2011) and exhibits thereto (“O'Neill Dep.”); opposer's Notice of Reliance (November 24, 2010), introducing (i) Excerpts of the discovery deposition of applicant, Akke Wagenaar (“Wagenaar Disc. Dep.”) (August 4, 2009) along with attendant Exhibits B, C and E; and, (ii) applicant's Answers to opposer's First Set of Interrogatories Nos. 1, 2, 7 (with exhibits), 12, 18, 19, 23, 24, 25, 26, 27, 31 and Supplemental Responses to Interrogatories Nos. 12 and 31.

As to applicant's submissions, we refer to pages 11, 18, 35 and 67 of Ms. Wagenaar's testimony declaration (Wagenaar Test. Decl.), as well as the attached Exs. A001 - A028 and Ex. B003. 3

INITIAL FINDINGS OF FACT

The evidence of record establishes the following pertinent facts regarding the parties.

Opposer: WBEI

Opposer, Warner Bros. Entertainment Inc. (or WBEI), is the owner of the enormously successful movie franchise including three motion pictures known as simply “THE MATRIX.” The first movie in the series, also THE MATRIX, was released on March 31, 1999; the second movie, THE MATRIX RELOADED, was released on May 15, 2003; and the third, THE MATRIX REVOLUTIONS, was released on November 5, 2003. All three movies starred famous Hollywood actors, and all were extremely well received by the public in the U.S. (as well as in foreign markets, although that is not relevant herein).

THE MATRIX series is set in the future, when humans have been enslaved by machines that create the illusion that the humans live in a real world, called The Matrix. The movies describe the attempts by humans to escape from and battle the machines.

*5 In addition to their compelling story lines, these movies were noteworthy for their revolutionary film technique referred to as “Bullet Time.” Although the exact figures of revenues generated are confidential, this franchise has earned well in excess of a billion dollars for WBEI.

These effects and the compelling science fiction story line generated an enormous fan base and a keen demand for information about the movie and its film technique. Hedrick Dep. at 17, Ex. 15. In response to that public interest, WBEI released a DVD under the mark THE MATRIX REVISITED, a behind the scenes look at the filming of the movie THE MATRIX. Id.

After the extraordinarily successful release of the first movie in the MATRIX series, WBEI approved the production of a series of nine animated short movies created as a prequel to the famous MATRIX series of movies and initially distributed in June 2003 under the mark ANIMATRIX. Each of the films in this series used the Japanese “anime” style. Hedrick Dep. at 13-14. We find that the ANIMATRIX mark is an obvious play on the words “anime” or “animated” and “Matrix,” which identifies the universe in which all the stories in the animated series takes place.

Although the precise amounts have been filed under seal, the ANIMATRIX films have resulted in tens of millions of dollars of sales in the U.S., plus collateral merchandise has generated millions of dollars in additional royalties.

Applicant: Ms. Akke Wagenaar

Before moving to Senegal, Ms. Wagenaar was a self-styled “media artist” living in the Netherlands. Wagenaar Disc. Dep. 11-13. She currently works for a company she refers to as “Air Fall,” described as promoting business and cultural connections between Senegal and The Netherlands. Id. After receiving a Bachelor of Arts degree in audio-visual art in Amsterdam (1990-92), applicant studied for a Master of Media Arts degree at the Institute for New Media (INM) in Frankfurt, Germany. Wagenaar Test. Decl. at 11; Wagenaar Disc. Dep. at 9-10 (Plaintiff's Notice of Reliance, Ex. 1). During that time, Wagenaar learned to design and program computer graphic animations. Id. Between 1991 and 1996, Wagenaar created seven works of computer graphic art. Id. The titles of these works are: “Automated Animations I,” “Automated Animations II,” “25 Objects Meet,” “7 Objects Meet,” “Animatrix,” “5Animals: Tiger,” and “VBody RBody.” Id.

The single audio-visual work that Ms. Wagenaar called “Animatrix” was created in 1993. Id. at 14-15, 18. According to Ms. Wagenaar, this is a “computer graphics animation work” consisting of seven moving arms, each consisting of 18 elongated or flattened pink spheres, all fixed at two shoulder points, and whose movements were otherwise restricted to normal arm and hands movements.” Id. at 14:9-20. The work included music that played while the arms were moving. Viewers could use a joystick at the art shows to alter the movements. Id. at 14, Ex. A013. Ms. Wagenaar describes her “Animatrix” work as a “computer dancer reminiscent of Bodhisattva, a Buddhist creature.” Id. Ex. B003; Hitt Dep. at 14-15, Ex. 40.

*6 In fact, Ms. Wagenaar consistently refers to the “Animatrix” as a “work of art,” and even tried to register it as a trademark. Ms. Wagenaar states that she exhibited her “Animatrix” art work years ago at computer art shows. The work was first shown in 1993 at Ars Electronica, a computer art festival (Linz, Austria). Wagenaar Test. Decl. at 18. The second showing, and the only showing in the United States, was at a computer graphics conference called SIGGRAPH ACM in 1993 (Anaheim, California). Id. Ms. Wagenaar states that she showed her work in Canada and Europe in 1994 and she admitted that the last exhibition was seventeen years ago at the Dutch Cultural Center in Munster, Germany (1995). Id. She states that images showing her work have been included in various art text books and art archives in Europe, Japan, Canada, and the United States. Id. at 18-21.

Between 1995 and 1996, Ms. Wagenaar created a website where she placed an excerpt of her “Animatrix” work. Id. at 35, and Ex. A011-015. The site shows an image of the moving arms. The website is a static piece, and hence unlike the exhibit she displayed in Anaheim, the viewer of the website cannot use a joystick to alter the movement of the image. Wagenaar Disc. Dep. at 51.

After adding her “Animatrix” work to the website in 1995 or 1996, Ms. Wagenaar admits that she never changed the work shown on the site. The website has been hosted on several different servers linked to distinct domain names, but the content has remained unchanged since it was first posted. Wagenaar Disc. Dep. at 47-48. Thus, the portion of Ms. Wagenaar's website featuring the single work entitled “Animatrix” has never changed since 1995, and the artwork looks the same today as when she first added it to the website. Wagenaar Test. Decl. at 35; Wagenaar Disc. Dep. at 47-48.

On applicant's website, the term “Animatrix” is never used as a mark to identify the source of any goods or services. Wagenaar Test. Decl. at Ex. A001-A028. Rather, “Animatrix” is used as the name of a specific work of art. The term appears in a list of her other works, with the same prominence as the names of other works of art. Id. at Ex. A014. In the section of the website referring to the “Animatrix” computer graphics animation, the term “Animatrix” appears on the first page, under her name, but in a smaller font, to identify the specific work. Id. at Ex. A011. In other places on the website, the word “Animatrix” is always used as a noun, namely, as the title or name of the moving arms or “computer dancer” created by Wagenaar, and never as a mark identifying the source of any goods or services. Id. at Ex. A013. Indeed, Ms. Wagenaar states that she used “[Animatrix] in connection with the specific interactive installation

© 2018 Thomson Reuters. No claim to original U.S. Government Works. 5 AppxB072 WARNER BROS. ENTERTAINMENT INC. v. AKKE..., 2012 WL 6654126... and I used it in connection with the documents I put on my website about these specific computer graphics animations.” Wagenaar Disc. Dep. at 19.

*7 At the beginning of 2003, Ms. Wagenaar claims to have seen an advertisement for WBEI's soon to be released ANIMATRIX series of animated movies. Id. at 70. However, she did not object to WBEI's use of ANIMATRIX nor did she assert that she had any trademark rights at that time. Instead, she waited until September 2006, more than three years after she first became aware of WBEI's ANIMATRIX, before filing a U.S. trademark application and sending WBEI a cease and desist letter. Id. at 73, Ex. C. In that letter, applicant's counsel demanded that WBEI immediately discontinue any use of ANIMATRIX, and give an accounting of all profits derived from the sale of the DVD or any other use of ANIMATRIX. Wagenaar Disc. Dep. at Ex. C; Hedrick Dep. at 10-11, Ex. 7. Ms. Wagenaar claimed that WBEI's use of the mark ANIMATRIX was infringing her alleged rights in the work of art that she called “Animatrix.” The attorney referred to his client as a “Dutch media artist,” and admitted that “Animatrix” was merely the title of a single work of media art, namely, an interactive computer graphics installation created in 1993. Id.

The letter did not allege that Ms. Wagenaar had ever used “Animatrix” as anything other than the title of a single work of art, and never alleged that Ms. Wagenaar had used “Animatrix” as a trademark or service mark in connection with the sale of any product or service. Id.

Despite Ms. Wagenaar's obvious lack of trademark rights in the title of her artwork, the cease and desist letter stated that Ms. Wagenaar had filed a trademark application for the alleged mark ANIMATRIX. In the letter, Ms. Wagenaar's attorney claimed that WBEI's use of ANIMATRIX in connection with its series of animated films infringed Ms. Wagenaar's alleged “common law rights” in “Animatrix.” Id. Through her attorney, Ms. Wagenaar demanded that WBEI immediately cease any use of its allegedly confusingly similar mark ANIMATRIX and provide an accounting of all revenues derived in the past three years from any sales. Id. The letter threatened further legal action if WBEI did not promptly comply with Ms. Wagenaar's demands. Id. Despite the fact that WBEI acquired prior common law rights by using ANIMATRIX as a trademark, Ms. Wagenaar claimed that her prior use of “Animatrix” as the title of a single work of art supported her demand for a monetary payment from WBEI. See Wagenaar Disc. Dep. at 74.

In April 2007, WBEI sent a reply letter to Ms. Wagenaar's attorney, rejecting the claim that Ms. Wagenaar had any rights in her alleged “Animatrix” title, and inquiring as to why Ms. Wagenaar had waited over three years after the release of WBEI's series of ANIMATRIX films before objecting, especially since there was no actual confusion evidence. Id. at 11, Ex. 8. After Ms. Wagenaar's application was published for opposition WBEI filed a timely notice of opposition on the ground that applicant had merely used “Animatrix” as the title of a single work of art, that she never established any source-indicating rights in that term, and WBEI would be damaged by the issuance of a registration.

*8 Ms. Wagenaar first applied to register the term “Animatrix” on September 21, 2006, for a “device for recording, transmission and/or reproduction of sound and/or images and/or computer graphics; animation films; computer programs; computer games; magnetic data carriers; disc shaped sound and/or image carriers; electronic publications.” When that application was refused on Section 2(d) grounds, Wagenaar abandoned the application.

However, on July 30, 2007, Ms. Wagenaar filed a second application to register the term “Animatrix” as a service mark. This application, which is the basis for this proceeding, is based on use in commerce. This application was based on services that are obviously different than the goods listed in the prior application because, as Ms. Wagenaar states, her lawyers told her that “You can't register a single artwork.” Wagenaar Disc. Dep. at 64. This second application she filed pro se. Id. at 64-65.

Standing

We find that WBEI, by virtue of its common law rights arising from use of the ANIMATRIX mark on a series of films has established a real interest or standing to challenge the involved application. No more is necessary for standing. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).

Is Ms. Wagenaar's application void ab initio?

In short, the evidence of record convinces us that despite Ms. Wagenaar's claim that her alleged mark was in use in commerce in connection with the services identified in the application, she never used the term “Animatrix” to identify and distinguish any of the services listed therein prior to the filing date of the involved application. Accordingly, her use- based application is void ab initio, and we hereby sustain this opposition.

The Lanham Act “requires not only the display of the mark in the sale or advertising of services but also the rendition of those services in order to constitute use of the service mark in commerce.” Intermed Commc'ns, Inc. v. Chaney, 197 USPQ 501, 507-08 (TTAB 1977).

Ms. Wagenaar was unable to produce any evidence that she has ever used or displayed “Animatrix” in the advertising or sale to others of the production of computer graphics animations. During discovery, Ms. Wagenaar admitted that the phrase “the production of computer graphics animations” in her application merely refers to the creation of her own single work of art entitled “Animatrix.” Wagenaar Disc. Dep. at 52-53. She also admitted that her only “sale” of services in the United States using the term “Animatrix” was her exhibition of the interactive installation entitled “Animatrix” at the SIGGRAPH Conference in Anaheim in August 1993. Wagenaar Interrog. Answer Nos. 7, 23, 26, 31. Later she conceded that the organizers of the conference merely invited her to exhibit her single work of art without any fee at this conference, and then reimbursed her lodging, travel expenses and equipment rental costs. Wagenaar Disc. Dep. at 53-54. These admissions confirm that Ms. Wagenaar never engaged in the sale of the “production of computer graphics animations” for others.

*9 Furthermore, Ms. Wagenaar was unable to produce any evidence that she ever used or displayed the term “Animatrix” in connection with the advertising of any services. The record shows a copy of Ms. Wagenaar's website that has not changed since 1995. However, this site contains no advertisement for, or offer to provide, the production of computer graphics animations for others. There is no description of any such services, no price list, and no contact information through which any potential customer could order the production of computer graphics animations.

Secondly, Ms. Wagenaar never produced any evidence that she ever used or displayed the term “Animatrix” in the sale or advertising of “conducting entertainment exhibitions in the field of computer graphics animations” (either before or after the filing of her application). She failed to produce any evidence that she ever organized an exhibition for others in the field of computer graphics animations. As seen earlier, Ms. Wagenaar only displayed her single work entitled “Animatrix” at the SIGGRAPH Conference in August 1993. Wagenaar Interrog. Answer. No. 31. However, the mere display of one's own work of art does not constitute providing a service to others.

Finally, Ms. Wagenaar failed to produce any evidence that she used the term “Animatrix” in connection with the “providing of information about computer graphics animation” before or after the filing of her application.

To prove that the alleged mark has been used in connection with the providing of “information about the field of computer graphics information,” Ms. Wagenaar was obligated to show that she had provided such information to others. Again, the only evidence of record is her own website, which displays the term “Animatrix” in reference to her single work of art. However, that site contains no information whatsoever about the field of computer graphics information. The site does not convey any information as to the meaning of the term, or as to the history of the field, or as to the manner in which an animated work of art is created, or as to the names of anyone who has established a reputation in

© 2018 Thomson Reuters. No claim to original U.S. Government Works. 7 AppxB074 WARNER BROS. ENTERTAINMENT INC. v. AKKE..., 2012 WL 6654126... this field. She admitted that the inclusion of the term “providing information” in the recitation of services was intended only to refer to the display of her own single work of art.

Having found that the involved application is void ab initio, it is unnecessary for us to reach opposer's alternative claims, namely, that applicant abandoned any rights that she may have ever possessed in the term “Animatrix,” and that applicant committed fraud in procuring her trademark registration by knowingly making false, material representations of fact in connection with her application.

Decision: Opposer is entitled to prevail in this proceeding inasmuch as the involved application is void ab initio, the opposition is sustained, and registration to applicant is hereby refused.

Footnotes 1 Application Serial No. 77241742 was filed on July 30, 2007, based upon Ms. Wagenaar's claim of use anywhere and use in commerce since at least as early as August 1, 1993. 2 The same is true for a paper that applicant submitted on May 12, 2011. 3 We hasten to add that even if we had found reasons to consider Ms. Wagenaar's entire testimony declaration, it would not have changed our determination herein. 2012 WL 6654126 (Trademark Tr. & App. Bd.)

IN THE MATTER OF U.S. Trademark Registration No. 3459524 LASER

BRUCE KIRBY, INC., : : Petitioner, : Cancellation No. 92057217 : v. : : VELUM LIMITED, : : Registrant. :

CERTIFICATE OF SERVICE

This is to certify that on this 28th day of June, 2018, true and correct copies of the foregoing TRIAL BRIEF OF PETITIONER BRUCE KIRBY, INC., APPENDIX A and

APPENDIX B (confidential and non-confidential versions) are being sent by electronic mail to counsel for Registrant at the address below.

Jude A. Fry Colleen Flynn Goss FAY SHARPE LLP The Halle Building, 5th Floor 1228 Euclid Avenue Cleveland, Ohio 44115 [email protected] [email protected] [email protected] [email protected]

June 28, 2018 /s/ Joan M. Burnett Date Joan M. Burnett