Andreas Stathopoulosv.MC MC S.R.L.

Trademark Trial and Appeal Board

Jul 21, 2010

No. 91187914 (T.T.A.B. Jul. 21, 2010)

jk Mailed: July 21, 2010 Opposition No. 91187914 Andreas Stathopoulos v. MC MC S.R.L. Before Quinn, Walsh and Taylor, Administrative Trademark Judges. By the Board: MC MC S.R.L. (“applicant”) filed a request for extension of protection of an international registration, under Trademark Act Section 66(a), for the mark MARIA CALLAS (standard characters) for “precious metals and their alloys, namely, gold, silver, platinum; goods made of or coated with gold, silver, platinum, namely, necklaces, rings, bracelets, brooches; jewelry; precious stones; horological and chronometric instruments,” in International Class 14.1 Andreas Stathopoulos (“opposer”) opposes registration on the sole statutory ground that, pursuant to Trademark Act Section 2(a), the mark falsely suggests a connection with opposer and the Estate of Maria Callas. This case now comes up for consideration of 1) opposer’s motion (filed March 26, 2010) for summary judgment, and 2) 1 Request for Extension of Protection, Serial No. 79022561, filed May 11, 2006, based on International Registration No. 0881523. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91187914 2 applicant’s motion (filed January 26, 2010) to reopen time to file its expert rebuttal report. The motions are fully briefed.2 Applicant’s motion to reopen The parties served expert disclosures, and thereafter agreed to an extension of thirty days to serve rebuttal expert reports, and sixty days for all remaining dates. Thus, by their stipulation filed December 2, 2009, which the Board granted, rebuttal expert reports were due by January 10, 2010. Applicant moves to reopen time to file its expert rebuttal report, stating that its counsel failed to accurately docket this deadline, having improperly docketed it for a sixty-day extension rather than the thirty-day extension. It asserts that the resulting delay is not extreme. It also asserts that opposer is not prejudiced, and submits the declaration of its counsel, wherein she states that she “did not forward Opposer’s expert rebuttal report to (applicant’s) expert,” and “did not discuss Opposer’s expert rebuttal report with (applicant’s) expert.” Opposer argues that applicant’s failure to timely serve its rebuttal expert report was entirely avoidable and was within applicant’s control. He further argues that he would be The application includes the statement: “MARIA CALLAS does not identify a living individual.” 2 The Board notes applicant’s motion (filed May 10, 2010) for leave to submit declarations in support of its opposition to opposer’s motion for summary judgment, whereby applicant seeks to submit the declarations of Marco Cornali and Anne M. Sterba on the basis that it inadvertently omitted these declarations from its brief filed May 6, 2010. Applicant’s motion is granted. See Trademark Rule 2.127(a). Opposition No. 91187914 3 substantially prejudiced inasmuch as the timely service of his own report provided applicant an “opportunity to review and adjust its strategy in response to (opposer’s) report,” and inasmuch as additional delay was due to applicant’s failure to seek an extension of time immediately upon receipt of opposer’s report. Fed. R. Civ. P. 6(b), applicable to Board proceedings by Trademark Rule 2.116(a), provides for an enlargement of time after the expiration of the specified time period, "where the failure to act was the result of excusable neglect." As clarified by the Supreme Court in Pioneer Investment Services Company v. Brunswick Associates Limited Partnership, 507 U.S. 380 (1993), and followed by the Board in Pumpkin, Ltd. v. The Seed Corps, 43 USPQ2d 1582 (TTAB 1997), the inquiry as to whether a party's neglect is excusable: at bottom is an equitable one, taking account of all relevant circumstances surrounding the party's omission. These include. . . [1] the danger of prejudice to the [nonmovant], [2] the length of the delay and its potential impact on judicial proceedings, [3] the reason for the delay, including whether it was within the reasonable control of the movant, and [4] whether the movant acted in good faith. See Pioneer, 507 U.S. at 395. In subsequent decisions, courts have stated that the third Pioneer factor, the reason for the delay and whether it was in the reasonable control of the movant, might be considered the most important factor. See Pumpkin Ltd. at 1586, footnote 7 and the cases cited therein. Opposition No. 91187914 4 Applicant’s missed deadline was, indeed, due to circumstances that were under its own control and were, therefore, avoidable. Nevertheless, the danger of prejudice to opposer is minimal inasmuch as applicant has stated that opposer’s rebuttal report was not shared with applicant or applicant’s experts, the delay has had little overall impact on these proceedings, and there is no indication that applicant delayed or withheld its expert report in bad faith or for the purpose of gamesmanship. Moreover, inasmuch as opposer’s standing is in issue (as further discussed below), and inasmuch as the statements and conclusions of the parties’ experts on the foreign laws at issue may bear on the resolution of this threshold question, allowing a full presentation of these matters aids the Board in determining whether opposer has met his burden on summary judgment. In view thereof, applicant’s motion to reopen is hereby granted.3 Opposer’s motion for summary judgment Summary judgment is only appropriate where there are no genuine issues of material fact in dispute, thus allowing the case to be resolved as a matter of law. Fed. R. Civ. P. 56(c). The party seeking summary judgment bears the initial burden of demonstrating the absence of any genuine issue of 3 We note opposer’s statement, in his summary judgment motion, that he did not address applicant’s expert rebuttal report inasmuch as the Board had not ruled on applicant’s motion to reopen time to file said report. Opposer’s challenge to applicant’s report, however, would not alter our determination that genuine issues of law and fact, to which the parties’ expert reports pertain, remain for trial. Opposition No. 91187914 5 material fact. 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 American 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 Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, supra. The Board may not resolve issues of material fact; it may only ascertain whether issues of material fact exist. See, Lloyd’s Food Products, 987 F.2d at 766, 25 USPQ2d at 2029; Olde Tyme Foods, 961 F.2d at 200, 22 USPQ2d at 1542. Opposer argues, inter alia, that he is the sole surviving heir of the estate of Maria Callas, a Greek citizen and well- known opera singer who died intestate in France in 1977, and that he therefore owns all right, title and interest in and to the intellectual property rights in her name and likeness. On this point, he submits decisions issued by the First Instance Court of Athens which determined, applying Greek law, that opposer is the sole testamentary heir to the entire estate of his wife, the surviving sister of Maria Callas. Opposer Opposition No. 91187914 6 asserts that his rights to exercise the publicity rights relating to his sister-in-law, Maria Callas, are valid under either Greek law or French law, and submits the opinions of Greek law expert Dr. Eugenia G. Dacoronia, and of French law experts Alia Aoun and Bernard Schaming. By his declaration, opposer states that he has contracted with two licensing successive companies to act as his agent, and that through such agents he has entered into various license agreements with third parties concerning their commercial use of Ms. Callas’ name and/or likeness. The declaration introduces copies of various license agreements, at least three of which indicate licensing for use of Ms. Callas’ name and/or likeness on goods and in advertising within the United States.4 In response, applicant asserts, inter alia, that opposer lacks standing to bring this action, arguing that he does not possess the publicity rights in the name of Maria Callas. In particular, applicant argues that French law, rather then Greek law, governs the publicity rights relating to the name of Maria Callas inasmuch as she was domiciled in France at the time of her death, and that under applicable French law, opposer does not retain such rights because he, as brother-in-law to Ms. Callas by virtue of his marriage to Ms. Callas’ sister, is not one of her blood relatives and is not one who bore the surname “Callas.” Applicant also argues that even under Greek law, said rights did not pass 4 Opposer filed copies of the licenses and related materials under seal pursuant to Trademark Rule 2.126(c). Thus, we reference them here generally. Opposition No. 91187914 7 to opposer, but rather terminated upon the death of Maria Callas’ sister. Applicant submits the statements of Greek law expert Dr. Michael Paroussis, and of French law expert Julien Blanchard. Analysis To establish his standing, opposer must prove that he has a “real interest” in the proceeding and a “reasonable basis” for his belief of damage. To plead a "real interest" in the case, opposer must allege a “direct and personal stake” in the outcome of the proceeding, and the allegations in support of his belief of damage must have a reasonable basis in fact. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1027 (Fed. Cir. 1999); TBMP § 309.03(b)(2d ed. rev. 2004). Opposer’s claim of damage is based on his assertion that he has authority to exercise the publicity rights in the name and likeness of the deceased Maria Callas. The record reflects that he exercises, through international licensing agencies, a degree of control over the commercial use of the wording MARIA CALLAS, and her likeness, for goods and/or services in various countries, including the United States, and that such use through licensees inures to the benefit of opposer. In view thereof, opposer has established facts that are sufficient to demonstrate that he possesses an interest in this proceeding that is beyond that of the general public. See Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 188 (CCPA 1982). Opposition No. 91187914 8 Moreover, opposer need not assert a proprietary right in the mark in order to have standing. See Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2024 (Fed. Cir. 1987). Thus, we find that there is no genuine issue of material fact as to opposer’s standing to bring this proceeding, and summary judgment with respect to this issue is granted. Opposer’s factual allegation that he is the owner of rights in the mark is predicated on his assertion that he is the sole heir to the Estate of Maria Callas. The parties and their respective experts have provided conflicting opinions as to opposer’s claim as heir under the laws of Greece and France with respect to the Estate of Maria Callas. These experts also present differing conclusions on the issue of whether opposer has the right to control the use of the mark MARIA CALLAS. Both parties ask the Board to reject the statements and opinions proffered by the other, and both seek to discredit the adversary’s alleged experts on various theories. Accordingly, on the present record, a genuine issue of material fact remains with respect to ownership of the mark.5 Turning to the Section 2(a) claim, to prevail on summary judgment on this claim, opposer must prove that: 5 In order to prevail at trial, opposer must, in addition to proving the elements of his statutory claim, prove his ownership rights in the mark in the United States. Opposition No. 91187914 9 1) applicant’s mark is the same as or a close approximation of the name or identity of a person or institution, namely, Maria Callas; 2) the mark would be recognized as such; 3) opposer is not connected with the goods sold by applicant under the mark; and 4) Maria Callas’ name or identity is of sufficient fame or reputation that when applicant’s mark is used on the goods, a connection with opposer would be presumed. See Assoc. pour la Defense et la Promotion de l’Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838, 1842 (TTAB 2007); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985). Upon thorough review of the record on summary judgment, we find that opposer has failed to demonstrate that he is entitled to judgment as a matter of law with respect to his statutory claim. At a minimum, there is a genuine issue of fact with respect to the extent to which there is an existing association between Maria Callas and jewelry among the general public in the United States, and with respect to whether the fame or reputation of Maria Callas is such that it may be presumed that consumers in the United States would draw a connection between the late Ms. Callas and applicant’s products bearing the mark MARIA CALLAS. For example, while the exhibits are relevant to the notoriety of Maria Callas as a great operatic soprano whose life and career are of interest, they fail to demonstrate that she or her name carry such a degree of fame or reputation for jewelry that a connection with her identity would be presumed when consumers in the United States marketplace encounter the mark MARIA CALLAS on goods of this type. Opposition No. 91187914 10 In summary, on the present record, genuine issues of fact remain with respect to whether the mark MARIA CALLAS is registrable for the identified goods in view of Trademark Act Section 2(a). Accordingly, opposer has not demonstrated that he is entitled to judgment as a matter of law with respect to the statutory claim, and his motion for summary judgment is hereby denied.6 As a final matter, opposer seeks summary judgment on the basis that the involved application is void ab initio because applicant is a mere licensee that owns no rights in the mark MARIA CALLAS. However, the notice of opposition does not plead a claim that the application is void ab initio on this basis, or on any basis other than Trademark Act Section 2(a). A party may not obtain summary judgment on a claim that has not been pleaded. See Fed. R. Civ. P. 56(a) and 56(b); see also TBMP § 528.07(a) (2d ed. rev. 2004).7 Furthermore, an opposition to an application based on Trademark Act Section 66(a) may not be amended to assert a new claim. See Trademark Rule 2.107(b). Thus, opposer is precluded from amending his 6 The parties should note that the evidence submitted in connection with the motion for summary judgment is of record only for consideration of that motion. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial period. See, e.g., Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1438 fn 14 (TTAB 2007); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993). Furthermore, the fact that we have identified certain genuine issues of material fact sufficient to deny opposer’s motion should not be construed as a finding that these are necessarily the only issues which remain for trial. 7 Moreover, we note that applicant argues, in its brief, that opposer never pled this ground, and objects to opposer’s request Opposition No. 91187914 11 pleading so as to allege that the application is void ab initio because applicant is not the owner of the mark. Accordingly, to the extent that opposer seeks summary judgment on this issue, the motion is denied. Schedule Proceedings are hereby resumed. Pretrial disclosure and trial dates are reset as follows: Plaintiff's Pretrial Disclosures 8/27/2010 Plaintiff's 30-day Trial Period Ends 10/11/2010 Defendant's Pretrial Disclosures 10/26/2010 Defendant's 30-day Trial Period Ends 12/10/2010 Plaintiff's Rebuttal Disclosures 12/25/2010 Plaintiff's 15-day Rebuttal Period Ends 1/24/2011 In each instance, a copy of the transcript of testimony, together with copies of documentary exhibits, must be served on the adverse party within thirty days after completion of the taking of testimony. Trademark Rule 2.l25. Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An oral hearing will be set only upon request filed as provided by Trademark Rule 2.l29. for judgment on his assertion that the application is void ab initio.