Apaus Inc.v.The Halcyon Community, LLC

Trademark Trial and Appeal BoardFeb 28, 2020

91241971 (T.T.A.B. Feb. 28, 2020)

This Opinion is Not a Precedent of the TTAB Mailed: February 28, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Apaus Inc. v. The Halcyon Community, LLC _____ Opposition No. 91241971 to Serial No. 87761098 _____ Jonathan Minerick of WeWork c/o Homecoin.com for Apaus Inc. Michael Martin of Fischbach Perlstein Lieberman & Almond for The Halcyon Community, LLC. _____ Before Kuczma, Goodman and Johnson, Administrative Trademark Judges. Opinion by Kuczma, Administrative Trademark Judge: The Halcyon Community, LLC (“Applicant”) filed an intent to use-based application to register the mark HOMECOIN (standard character mark) for: Downloadable software in the nature of a mobile application to send, receive, store, and safeguard digital currency; Downloadable cloud-based software for sending, receiving, storing and safeguarding digital currency for use in the real estate and mortgage industries; Computer software for sending, receiving, storing and safeguarding Opposition No. 91241971 - 2 - digital currency for use in the real estate and mortgage industries, in International Class 9; and providing temporary use of non-downloadable computer software that allows users to send, receive, store, and safeguard digital currency; providing a secure, web-based service featuring technology that enables users to remotely access, send, receive, store, and manage digital currency; providing a website that gives users the ability to create customized web pages featuring user-defined profiles; application service provider featuring application programming interface (API) software for integration of financial transactions into websites and mobile applications; Computer software research, design and development; Computer software design, computer programming, and maintenance of computer software, in International Class 42.1 Apaus Inc. (“Opposer”) opposes the registration of Applicant’s mark on the ground of priority and likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on its alleged prior use of “HomeCoin” and homecoin.com for “software related to real estate.”2 1 Application Serial No. 87761098 was filed on January 18, 2018, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). 2 Notice of Opposition filed on June 23, 2018. (1 TTABVUE). Although the Notice of Opposition cover sheet also identifies additional grounds for opposition, including: dilution by blurring and tarnishment, Applicant [is] not rightful owner of mark for identified goods or services, and deceptiveness, no such grounds were pleaded. Inasmuch as Opposer did not pursue these claims at trial nor argue them in its trial brief, even if those claims were properly pleaded they are deemed waived. See Swatch AG (Swatch SA) (Swatch Ltd.) v. M.Z. Berger & Co., 108 USPQ2d 1463, 1465 n.3 (TTAB 2013), aff’d, 787 F.3d 1368, 114 USPQ2d 1892 (Fed. Cir. 2015); Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1753 (TTAB 2013, aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.). Record citations are to TTABVUE, the Board’s publically available docket history system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Opposition No. 91241971 - 3 - In its “Answer to Notice of Opposition,” Applicant denied the salient allegations and alleged Affirmative Defenses,3 some of which are not true affirmative defenses but constitute amplifications of Applicant’s denials of the allegations of likelihood of confusion. See Trademark Rule 2.106(b)(1), 37 CFR § 2.106(b)(1); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 311.02(b) (2018).4 However, because Applicant did not pursue its “affirmative defenses” they are deemed waived. See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1422-23 n.7 (TTAB 2014); see also Alcatraz Media v. Chesapeake Marine Tours, 107 USPQ2d at 1753 n.6. I. The Record The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the involved application. Inasmuch as Opposer and Applicant did not submit any admissible evidence during their respective testimony periods,5 the record includes only the pleadings and the application file for Applicant’s mark. Additionally, only Opposer submitted a trial brief. 3 4 TTABVUE 3-4. 4 This is the edition of the TBMP in force as of the filing date of Applicant’s Answer to the Amended Notice of Opposition. 5 In an interim Order dated October 11, 2018, the Board advised that the Initial Disclosures filed by Opposer would be given no further consideration. (6 TTABVUE). Opposition No. 91241971 - 4 - II. Standing Opposer bears the burden of proving both standing to oppose and at least one valid ground for refusal of registration. John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010) citing Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). Our primary reviewing court, the U.S. Court of Appeals for the Federal Circuit, has enunciated a liberal threshold for determining standing, namely that a plaintiff must demonstrate that it possesses a “real interest” in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his 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; Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). A “real interest” is a “direct and personal stake” in the outcome of the proceeding. Ritchie v. Simpson, 50 USPQ2d at 1026. 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). Because Opposer has not introduced any evidence supporting its prior rights or interest in its alleged use of “HomeCoin” or homecoin.com for “software related to real estate,” Opposer has failed to establish its standing to oppose registration of Applicant’s mark. Mere allegations of a party’s basis for standing are insufficient without proof. Lipton Indus. v. Ralston Purina, 213 USPQ at 189; Abraham’s Seed v. John One Ten, 1 USPQ2d 1230, 1233 (TTAB 1986); Lumiere Productions, Inc. v. Int’l Telephone and Telegraph Corp., 227 USPQ 892, 893 (TTAB 1985). Accordingly, Opposition No. 91241971 - 5 - Petitioner has not proved that it has any real interest in the proceeding and the proceeding must be dismissed for Petitioner’s lack of standing. III. Substantive Grounds Although Opposer’s failure to prove standing precludes it from prevailing in this matter, we consider the substantive grounds of this cancellation proceeding, i.e., priority and likelihood of confusion, for purposes of completeness. Priority The question of priority is an issue in this case because Opposer does not own an existing registration upon which it can rely under § 2(d). Therefore, Opposer must establish proprietary rights in its pleaded common-law mark. Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981). “To establish its priority under Section 2(d), opposer must prove that, vis-à-vis applicant, it owns ‘a mark or trade name previously used in the United States . . . and not abandoned . . . .’” Threshold.TV, Inc. v. Metronome Enters., Inc., 96 USPQ2d 1031, 1036 (TTAB 2010) (citing Trademark Act Section 7(c), 15 U.S.C. § 1057(c)). If Opposer cannot prove by a preponderance of the evidence that it used the mark as a trademark, or in a manner analogous to a mark, before the filing date of Applicant’s application, Opposer cannot establish priority. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto Roth v. Universal, 209 USPQ at 43; Threshold.TV v. Metronome Enters., 96 USPQ2d at 1036- 37; Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711, 1714 (TTAB 1993). Opposition No. 91241971 - 6 - Under Section 7 of the Trademark Act, Applicant is entitled to rely upon the January 18, 2018 filing date of its application for purposes of establishing a date of first use of its mark. 15 U.S.C. § 1057(c); Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1140 (TTAB 2013); Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840, 1844 (TTAB 1995) (parties may rely on the constructive use (filing) dates for purposes of priority). Thus, Opposer must prove that it has a proprietary interest in its alleged mark that it obtained prior to the January 18, 2018 constructive use date (i.e., the filing date) underlying Applicant’s application. See Herbko Int’l Inc. v. Kappa Books Inc., 64 USPQ2d at 1378; Otto Roth v. Universal, 209 USPQ at 43; L. & J.G. Stickley Inc. v. Cosser, 81 USPQ2d 1956, 1966 (TTAB 2007). Although Opposer cites to various documents filed with its Initial Disclosures, such materials were not submitted into evidence during Opposer’s Trial Period and are not considered.6 Thus, there is no support in the record for Opposer’s arguments. We can accord no evidentiary value or consideration to any statements made by a party in its brief which are not supported by competent evidence in the record. Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 TTAB 2004); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 704.06(b) (2019). Inasmuch as Opposer has filed no admissible evidence in support of its position, it has not established priority and cannot prevail. 6 See Conference, Discovery, Disclosure and Trial Schedule set forth in the Notice of Institution issued June 23, 2018 (2 TTABVUE 3); and interim Order dated October 11, 2018. (6 TTABVUE). Opposition No. 91241971 - 7 - Likelihood of Confusion As the plaintiff in this proceeding, Opposer bears the burden of proof which encompasses the obligation of going forward with sufficient proof of the material allegations of the Notice of Opposition. Sanyo Watch Co., Inc. v. Sanyo Elec. Co., Ltd., 691 F.2d 1019, 215 USPQ 833, 834 (Fed. Cir. 1982) (in a proceeding to test likelihood of confusion opposer “bears the burden of proof which encompasses not only the ultimate burden of persuasion, but also the obligation of going forward with sufficient proof of the material allegations of the Notice of Opposition”); see also Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1007 (Fed. Cir. 1988) (because § 2(d) of the Trademark Act “provides that no trademark shall be refused unless it is shown that there is a likelihood of confusion with another mark, the requirement that the opposer both establish a prima facie case of likelihood of confusion and carry the ultimate burden of persuasion on that issue is proper”). In support of its likelihood of confusion claim, Opposer asserts numerous “facts” in its appeal brief, but fails to introduce any admissible evidence related to its allegations. As set forth above, there is no evidentiary support in the record for Opposer’s arguments. Accordingly, it has not shown a likelihood of confusion. Inasmuch as there is no evidence in the record and no pertinent admissions by Applicant, Opposer has failed to prove any of its pleaded claims, including standing, priority and likelihood of confusion. Decision: The opposition against Application Serial No. 87761098 is dismissed.