David J. Deacyv.Michelle D. Kraft

Trademark Trial and Appeal BoardOct 22, 2012

No. 92051046 (T.T.A.B. Oct. 22, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: October 22, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ David J. Deacy v. Michelle D. Kraft _____ Cancellation No. 92051046 to Registration No. 3438595 registered on May 27, 2008 _____ Panagiota Betty Tufariello of The Law Offices of PB Tufariello PC for David J. Deacy. Michelle D. Kraft, pro se. _____ Before Holtzman, Kuhlke and Bergsman, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: David J. Deacy (petitioner) seeks to cancel Michelle D. Kraft’s (respondent) registration for the standard character mark PET YELLOW PAGES for “telephone directories” in International Class 16 on the Supplemental Register.1 Petitioner asserts a claim of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on the allegations that, as applied to 1 Registration No. 3438595, filed on November 18, 2007, issued on May 27, 2008. The registration includes a disclaimer for the words “YELLOW PAGES.” Cancellation No. 92051046 2 respondent’s goods, the mark so resembles petitioner’s previously used and registered marks “PET PAGES & DESIGN” and “PET PAGES” for “the publication and distribution of yellow page pet resources directories” and “a website featuring pet ads, pet directory, pet forums, a pet gallery and pet news” as to be likely to cause confusion. Petitioner pleaded ownership of two applications and has alleged that respondent’s registration was cited by the Trademark Office as a bar to registration under Section 2(d). Petitioner also pleaded ownership, by way of assignment, of Registration No. 2963259 for the mark PETPAGES and design for a “website featuring pet ads, pet directory, pet forums, pet gallery and pet news.” Respondent filed an answer by which she admitted that petitioner filed an application for the mark PET PAGES & DESIGN on November 30, 2007 and that application is still pending; that petitioner filed an application for the mark PET PAGES on November 30, 2007, in International Class 16 and the Office refused registration because of a likelihood of confusion with respondent’s mark; and that petitioner owns, by way of assignment, the pleaded registration. Respondent otherwise denied the remaining allegations. On June 30, 2011, the Board struck petitioner’s notice of reliance, the only evidence submitted, as being untimely.2 In this order, the Board noted that respondent admitted petitioner’s ownership of the pleaded registration in her answer and, therefore, the Board deemed it of record. Petitioner filed a main brief. 2 Petitioner’s main testimony period closed on July 29, 2010 and the rebuttal testimony period was set to close on November 11, 2010. Petitioner filed its notice of reliance on December 31, 2010. Cancellation No. 92051046 3 Respondent did not file testimony or any evidence under notice of reliance, and did not file a brief. In its brief, petitioner frames the issues by stating that the subject registration should be cancelled because “either respondent has abandoned such registration, or such registration would likely cause considerable confusion, dilution, mistake and/or deception.” Pet. Br. p. 2. However, the only pleaded claim is likelihood of confusion under Section 2(d), thus, references to other possible claims have not been considered. Further, inasmuch as petitioner’s notice of reliance was stricken from the record, petitioner’s recitation of the facts supported by documents submitted under that notice of reliance have not been considered. By operation of the Trademark Rules, the record includes the pleadings and the file of respondent’s registration. With regard to petitioner’s registration, we find the Board order deeming it of record to be incorrect. In her answer, respondent only admits to petitioner’s ownership of the registration but not to its status. However, even if we were to consider this registration, the Office records now show that this registration was cancelled on March 8, 2012. When a Federal registration owned by a party has been made of record, and the status of the registration changes between the time it was made of record and the time the case is decided, the Board will take judicial notice of the current status for the registration, as shown by the records of the Office. Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1192 n. 6 (TTAB 2007). See also Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 704.03(b)(1) (3d ed. 2012). A cancelled registration is not Cancellation No. 92051046 4 evidence of anything except that the registration issued; it is not evidence of any presently existing rights in the mark shown in the registration or that the mark was ever used. Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307 (Fed. Cir. 1989). See also TBMP § 704.03(b)(1). Accordingly, the cancelled registration cannot serve to establish petitioner’s alleged prior rights in the PET PAGES marks. Thus, what remains are: (1) the subject registration file; and (2) respondent’s admissions that petitioner filed an application for PET PAGES and design on November 30, 2007 and that application is pending, and that petitioner filed an application for PET PAGES on November 30, 2007 “in International Class 16” and her registration was cited as a bar to this application.3 While these admissions may 3 We note that because the subject registration is on the Supplemental Register, it is not entitled to the presumptions of validity, ownership or priority. In re Federated Dep’t Stores, 3 USPQ2d 1541 (TTAB 1987); Copperweld Cor. v. Arcair Co., 200 USPQ 470 (TTAB 1978); Andrea Radio Corp. v. Premium Import Co., Inc., 191 USPQ 232 (TTAB 1975); Nabisco, Inc. v. George Weston Limited, 179 USPQ 503 (TTAB 1973). See also ERBE Electromedizin GmbH v. Canady Technology LLC, 629 F.3d 1278, 97 USPQ2d 1048 (Fed. Cir. 2010); McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition § 19:36 (4th ed. 2012) and cases cited therein. A Supplemental Register registration is incompetent as evidence to establish priority of use of defendant’s mark; the Supplemental Registration is evidence of nothing more than the fact that the registration issued on the date printed thereon. Andrea Radio Corp. v. Premium Import Co., Inc., 191 USPQ 232 (TTAB 1975); Nabisco, Inc. v. George Weston Limited, 179 USPQ 503 (TTAB 1973). Thus, a later-filed application on the Principal Register could establish priority contingent upon registration of that application if there is no evidence of respondent’s prior use. The allegations of use and the specimen of use in a subject registration, without more, are not evidence on behalf of the registrant. The date of use must be established by competent evidence, properly adduced at trial and the specimen in an application or registration file is not evidence in an inter partes proceeding on behalf of the registrant unless it has been identified and introduced in evidence as an exhibit during the testimony period. UMG Recordings, Inc. v. Charles O’Rourke, 92 USPQ2d 1042, 1047 (TTAB 2009); Osage Oil & Transportation, Inc. v. Standard Oil Co., 226 USPQ 905, 906 n. 4 (TTAB 1985); Eikonix Corp. v. CGR Medical Corp., 209 USPQ 607, 613 n.7 (TTAB 1981). See also TBMP § 704.04. Cancellation No. 92051046 5 suffice to establish petitioner’s standing, they do not serve to make these applications of record, to establish priority (there is no allegation or admission as to the Register for which these applications were filed, Principal or Supplemental), or to establish any of the likelihood of confusion factors (for example, there are no admissions as to the exact nature of the marks or as to the goods or services identified in the applications). In view thereof, and because the record is devoid of any other evidence, petitioner has not met its burden to prove its claim by a preponderance of the evidence. Decision: The petition for cancellation is dismissed.