Carib News, Inc. and Carib World Radio, Inc.v.Hard Beat Communications Inc.

Trademark Trial and Appeal Board

Sep 4, 2012

No. 91190210 (T.T.A.B. Sep. 4, 2012)

Mailed: September 4, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Carib News, Inc. and Carib World Radio, Inc.

v.

Hard Beat Communications Inc.
_____

Opposition No. 91190210
To Application No. 77365018
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Kathleen A. Costigan of Hedman & Costigan PC, for Carib
News, Inc. and Carib World Radio, Inc.

Sacha A. Comrie of Comrie & Assoc. PLLC, for Hard Beat
Communications Inc.
_____

Before Holtzman, Taylor, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Applicant, Hard Beat Communications Inc. (“applicant”),
has applied to register the mark CARIBWORLDNEWS, in standard
character format, for “news syndication reporting excluding
magazines,”1 in International Class 41.

1 Application Serial No. 77365018, filed January 6, 2008,
alleging first use and first use in commerce on January 1, 2005.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 91190210
2
On May 13, 2009, opposers Carib News, Inc. and Carib
World Radio, Inc. (together, “opposers”) filed an opposition
to the application based on the grounds of 1) dilution under
Section 43(c) of the Lanham Act; 2) false suggestion of a
connection under Section 2(a) of the Lanham Act; and 3)
likelihood of confusion under Section 2(d) of the Lanham
Act. Opposers base their claims in the notice of opposition
on two applications, one owned by each opposer.2 In their
trial brief, opposers maintained the first two pleaded
grounds, but did not pursue the claim for likelihood of
confusion, and such claim is accordingly considered waived.
The answer denies certain specific allegations of the
notice of opposition, including denying the priority of
opposer Carib World Radio, Inc.:
“Opposer Carib World Radio, Inc. was launched on
or about August 9, 2005, almost one year after
CARIBWORLDNEWS had already been used in interstate
commerce....Applicant's priority of filing the
CARIBWORLDNEWS mark with the United States Patent
and Trademark Office demonstrate[s] that Opposer
Carib World Radio, Inc. is not entitled to oppose
the registration of Applicant's CARIBWORLDNEWS
mark.”

2 These are Serial No. 77407596 (CARIB NEWS for “newspapers”)
filed February 27, 2008, claiming dates of first use and first
use in commerce on June 29, 1982, owned by opposer Carib News,
Inc. and Serial No. 77407642 (CARIB WORLD RADIO for
“entertainment services, namely providing a radio program
relating to the Caribbean community, providing information
relating to the Caribbean and commentary and articles about the
Caribbean, all on-line via a global computer network”) filed
filed February 27, 2008, claiming dates of first use and first
use in commerce on August 9, 2005, owned by opposer Carib World
Radio, Inc. We note that a Notice of Abandonment was issued in
the latter application on January 29, 2010.
Cancellation No. 91190210
3
Answer Para. 11.

The answer also specifically denies that the goods and
services of applicant and opposers are similar, that they
are in the same “market,” that there is any “likelihood of
confusion,” or that there is any “infringement on the part
of Applicant.” (Answer at Para. 12).
Furthermore, we view the answer, taken as a whole, as
being a general denial of the allegations in the notice of
opposition.
Accordingly, we find that the answer denies all of the
salient allegations of the notice of opposition, including
the allegations of priority for each opposer.
Only opposers filed a brief.
Record
The record in this case includes the pleadings and the
file of the involved application as well as two notices of
reliance filed by opposers, the first of which consists of
the pleadings in this case, along with electronic printouts
of opposers' pleaded applications, and the second of which
consists of two online news articles. Applicant did not
submit any evidence or testimony. Only opposers filed a
brief.
Standing

Standing is established by a party who has “a
reasonable belief of damage” and a “real interest in the
Cancellation No. 91190210
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proceeding.” Lipton Industries, Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). In a
cancellation proceeding with facts similar to those present
here, the Board has found standing based on a party’s
testimony of a live application to register a mark, without
assertion of having been refused registration, with what the
Board described as a “reasonable basis for a belief that he
is damaged by the registration sought to be cancelled by the
fact that both parties’ marks are identical, and their
services are at least arguably related.” Toufigh v, Persona
Parfum Inc., 95 USPQ2d 1872, 1874 (TTAB 2010). Here too, we
have a situation where no registration is pleaded, nor are
common law rights, but only ownership in two applications,
one of which is owned by each of the two named opposers.
Accordingly, we will discuss and consider separately the
standing of each opposer since each must establish its own
standing.
With regard to opposer Carib World Radio, Inc., as
mentioned previously, we note that its pleaded application
for CARIB WORLD RADIO (Serial No. 77407642) was abandoned by
the Office on January 29, 2010 due to applicant's incomplete
response to an Office action and, as a result, has no
probative value. Accordingly, without a live application,
or any testimony or other evidence, opposer Carib World
Radio, Inc. has established no basis for standing in this
Cancellation No. 91190210
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opposition proceeding. We note further that, as discussed
above, applicant specifically denied, in paragraph 11 of the
answer, the priority of opposer Carib World Radio, Inc., and
that opposers in their joint brief made no arguments on
behalf of this opposer as to its mark, its application, or
any of the elements of its pleaded claims.
The opposition is dismissed as to Carib World Radio,
Inc. on the basis of lack of standing.
As for opposer Carib News, Inc. we find, rather, that
with a live application for a similar mark and similar goods
in CARIB NEWS (Serial No. 77407596), this opposer has
established sufficient interest to confer standing in this
proceeding.
Accordingly, we find standing only as to opposer Carib
News, Inc.
Grounds
We therefore examine the question of whether opposer
Carib News, Inc. has established its asserted claims of
Section 43(c) dilution and Section 2(a) false suggestion of
a connection. Priority is a necessary element of both
claims. Carib News, Inc. relies heavily in its brief on
alleged “admissions” made by applicant in the answer as
allegedly establishing its priority over applicant, as well
as supporting the other elements of its substantive claims.
See opposer’s brief at 1. However, we find that applicant
Cancellation No. 91190210
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did not make any salient factual admissions. Rather, as
discussed previously, taken as a whole, we construe the
answer as being a general denial that does not admit to the
priority of either opposer.
Carib News, Inc. has not submitted any evidence that
would demonstrate its priority over applicant in this
proceeding. Because the February 27, 2008 filing date of
Carib News, Inc.'s application is later than the January 6,
2008 filing date of applicant’s application, opposer cannot
rely on its application to prove its priority in this
opposition proceeding. Cf. Larami Corp. v. Talk to Me
Programs, Inc., 36 USPQ2d 1840 (TTAB 1995) (regarding
constructive use filing dates for purposes of priority).
We note also that Carib News, Inc. is not entitled to
rely on the dates of use alleged in its application, but
rather such dates must be proven. 37 CFR § 2.122(e); UMG
Recordings, Inc. v. O’Rourke, 92 USPQ2d 1042, 1047 (TTAB
2009) (dates of use not evidence); Lasek & Miller Associates
v. Rubin, 201 USPQ 831, 833 n.3 (TTAB 1978) (petitioner’s
application is proof only of filing, not of any facts
alleged in the application). Inasmuch as opposer has failed
to establish prior rights in its mark, opposer cannot
succeed on its claims.3

3 In addition to finding that opposer Carib World Radio, Inc.
failed to establish standing, we further note that since it
asserted the same claims and submitted the same evidence, we
Cancellation No. 91190210
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Decision: The opposition is dismissed as to both Carib
News, Inc. and Carib World Radio, Inc.

would have made the same findings for that opposer were we to
consider its substantive claims.