Delson Group, Inc.v.GSMA Ltd. GSMA Ltd. v. Delson Group, Inc.

Trademark Trial and Appeal BoardSep 30, 2015

No. 91207134 (T.T.A.B. Sep. 30, 2015)

coggins Mailed: September 30, 2015 Opposition No. 91207134 (parent) Opposition No. 91215222 Delson Group, Inc. v. GSMA Ltd. --------------------and ----------------- Opposition No. 91210585 Cancellation No. 92056084 GSMA Ltd. v. Delson Group, Inc. Before Bergsman, Shaw, and Hightower, Administrative Trademark Judges. By the Board: Now before the Board are the parties’ cross-motions for summary judgment. I. Board Proceedings The parties are involved in four consolidated proceedings. A. Opposition No. 91207134 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 General Contact Number: 571-272-8500 THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 2 In Opposition No. 91207134, Delson Group, Inc., (“Delson”) opposes GSMA Ltd.’s (“GSMA”) application Serial No. 85576711 for the mark for the following services: Advertising services; business data analysis of telecommunications companies; providing business information about telecommunications companies, in Class 35; Telecommunications services, namely, transmission of voice, data, graphics, images, audio and video; audio and video broadcasting services; providing information in the field of telecommunications and telecommunications services, in Class 38; and Entertainment and educational services, namely, providing online classes, conferences, congresses, exhibitions, webinars, symposia and workshops in the field of telecommunications; entertainment services, namely, production of television programs; providing podcasts in the field of telecommunications; educational services, namely, online seminars in the field of telecommunications, in Class 41. As grounds for opposition, Delson alleges1 priority and likelihood of confusion under Section 2(d), and dilution under Section 43(c), based on the following three pleaded registrations: Registration No. 2558973 for the mark WORLD WIRELESS CONGRESS (in typed form) for “organizing and conducting business conferences, trade shows and exhibitions in the field of wireless communications,” in Class 35; Supplemental Registration No. 2982473 for the mark WORLD MOBILE CONGRESS (in standard characters) for “organizing and conducting business conferences, trade shows and exhibitions in the field of mobile wireless communications,” in Class 35; and Registration No. 3533730 for the mark MOBILE WORLD CONGRESS (in standard characters) for “organizing, conducting and arranging 1 Delson also alleged fraud as a ground for opposition, but that claim was dismissed by the Board on March 29, 2013, upon determination of GSMA’s motion to dismiss under Fed. R. Civ. P. 12(b)(6). See 13 TTABVUE. Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 3 conferences, congresses, exhibitions, seminars, symposia and workshops in the fields of mobile wireless communications; provision of educational services, namely, classes, conferences, congresses, exhibitions, seminars, symposia and workshops in the fields of mobile wireless communications; training services in the fields of mobile wireless communications,” in Class 41. Delson further alleges priority and likelihood of confusion under Section 2(d) based on common law rights in the mark MOBILE WORLD CONGRESS (see Notice of Opp., para 22 (1 TTABVUE 7)); and dilution under Section 43(c) based on common law rights in the marks WORLD WIRELESS CONGRESS, WORLD MOBILE CONGRESS, and MOBILE WORLD CONGRESS (see Notice of Opp., para 25 (1 TTABVUE 7-8)); for services described as: Organiz[ing] international conferences on wireless mobile products and technologies ... and conduct[ing] related educational, business and commercial activities (see Notice of Opp., para 2 (1 TTABVUE 3)), and Conduct[ing] live interviews, entertainment, on-line courses, business analysis, business information, discussions, business and educational sessions, and ... live product demonstrations (see Notice of Opp., para 20 (1 TTABVUE 6)). GSMA denied the salient allegations and alleged, inter alia, as an affirmative defense that Delson “has no bona fide use in commerce of the terms ‘mobile world congress’ and ‘world mobile congress,’ as it is enjoined by federal court order from using these terms in commerce as trademarks.” Answer, affirmative defense para. 4 (14 TTABVUE 9). GSMA also counterclaimed to cancel Registration Nos. 2982473 and 3533730 based on “abandonment by unlawful use” (under the same theory as its affirmative defense that Delson can have no bona fide use of the terms “mobile world congress” and “world mobile congress” because Delson is enjoined by federal Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 4 court order from using those terms), genericness, and priority and likelihood of confusion; and further alleged that the mark in Registration No. 3533730 is merely descriptive and lacks acquired distinctiveness. B. Opposition No. 91215222 In Opposition No. 91215222, Delson opposes GSMA’s application Serial No. 79112842 for the mark MOBILE WORLD CAPITAL (in standard characters) for the following goods and services: Automatic vending machines and mechanisms for coin operated apparatus; cash registers; pre-recorded digital media featuring content in the field of telecommunications; software downloadable from the Internet for use in planning, scheduling, navigating, and providing information for conference attendees for use in the telecommunications industry; software downloadable from the Internet that allows users to conduct electronic business transactions on mobile devices for use in the telecommunications industry; downloadable electronic publications in the nature of newsletters and electronic books in the field of telecommunications; compact discs featuring information related to the field of telecommunications; digital music telecommunications devices and apparatus, namely, portable media players; computer game consoles adapted for use with an external display screen or monitor; mouse pads; mobile phone accessories, namely, cases for mobile phones, battery chargers, cell phone holders, snap covers, hands-free devices, in Class 9; Clothing, namely, shirts, T-shirts, neckties, jackets, coats, scarves, sweatshirts, pants, shorts, uniforms; footwear; headgear, namely, hats, caps, in Class 25; Business consultancy and advisory services; business management services; provision of information on businesses; provision of analyses of businesses and business performance; business management consultancy services; organization of exhibitions or trade fairs for commercial or advertising purposes; personnel management services, in Class 35; Telecommunications services, namely, mobile data transmission services, wireless broadcasting services; transmission of messages, Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 5 sound or images; radio and television broadcasting services; consultation and advisory services in relation to all of the foregoing; advisory services in relation to the use of telecommunications by businesses, namely, telecommunications consultation, in Class 38; and Arranging, conducting and organizing educational, entertainment, and cultural conferences, congresses, exhibitions, seminars, symposia and workshops in the field of telecommunications; provision of educational and training services, namely, providing classes, seminars, and instruction in the field of telecommunications; provision of educational and training services, namely, providing classes, seminars, and instruction in the field of technology and mobile telephony; entertainment services in the nature of competitions in the field of mobile communications, online video games, television news shows, providing recognition and incentives by the way of awards to demonstrate excellence in the field of mobile communications; arranging, conducting and organizing community cultural events, in Class 41. As grounds for opposition, Delson alleges priority and likelihood of confusion under Section 2(d), and dilution under Section 43(c), based on the following four pleaded registrations: Registration No. 2558973 for the mark WORLD WIRELESS CONGRESS (in typed form) for “organizing and conducting business conferences, trade shows and exhibitions in the field of wireless communications,” in Class 35; Supplemental Registration No. 2809615 for the mark GLOBAL MOBILE CONGRESS (in typed form) for “organizing and conducting business conferences, trade shows and exhibitions in the field of mobile communications,” in Class 35; Supplemental Registration No. 2982473 for the mark WORLD MOBILE CONGRESS (in standard characters) for “organizing and conducting business conferences, trade shows and exhibitions in the field of mobile wireless communications,” in Class 35; and Registration No. 3533730 for the mark MOBILE WORLD CONGRESS (in standard characters) for “organizing, conducting and arranging conferences, congresses, exhibitions, seminars, symposia and Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 6 workshops in the fields of mobile wireless communications; provision of educational services, namely, classes, conferences, congresses, exhibitions, seminars, symposia and workshops in the fields of mobile wireless communications; training services in the fields of mobile wireless communications,” in Class 41. Delson further alleges priority and likelihood of confusion under Section 2(d) based on common law rights in the marks MOBILE WORLD CONGRESS and WORLD MOBILE CONGRESS (see Notice of Opp., paras. 27-28 (1 TTABVUE 13)); and dilution under Section 43(c) based on common law rights in the marks MOBILE WORLD CONGRESS, WORLD MOBILE CONGRESS, and WORLD WIRELESS CONGRESS (see Notice of Opp., paras. 8, 29-30 (1 TTABVUE 9, 13-14)); for services described as: Organiz[ing] international conferences and exhibitions on wireless mobile products and technologies ... and conduct[ing] related educational, business and commercial activities including marketing, advertising, consulting, management, publication as well as providing services of online downloading, mobile data transmission, message transmission or providing event shirts or caps during, before or after the conferences or exhibitions (see Notice of Opp., para. 2 (1 TTABVUE 8)). Additionally, Delson alleges false suggestion of a connection under Section 2(a). See Notice of Opp., para. 32 (1 TTABVUE 14). GSMA denied the salient allegations and alleged, inter alia, as an affirmative defense that Delson “has no bona fide use in commerce of the terms ‘mobile world congress’ and ‘world mobile congress,’ as it is enjoined by federal court order from using these terms in commerce as trademarks.” Answer, affirmative defense para. 5 (4 TTABVUE 11). GSMA also counterclaimed to cancel Registration Nos. 2982473 Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 7 and 3533730 based on “abandonment by unlawful use” (under the same theory as its affirmative defense that Delson can have no bona fide use of the terms “mobile world congress” and “world mobile congress” because Delson is enjoined by federal court order from using those terms) and genericness; and further alleged priority and likelihood of confusion against Supplemental Registration No. 2982473, and fraud against Registration No. 3533730. C. Opposition No. 91210585 In Opposition No. 91210585, GSMA opposes Delson’s application Serial No. 85703025 for the mark MOBILE WORLD CONGRESS (in standard characters) for the following services: Organizing, conducting and arranging business and advertising exhibitions in the fields of mobile wireless communications and mobile wireless technologies; organizing, conducting, arranging and hosting business competitions in the fields of mobile wireless communications and mobile wireless technologies; organizing, conducting and arranging business conferences, trade shows and exhibitions in the field of mobile wireless communications and mobile wireless technologies; advertising and marketing services; business data analysis; promotional services; business networking; business monitoring and consulting services, namely, tracking users and advertising of others to provide strategy, insight, marketing guidance, and for analyzing, understanding and predicting consumer behavior and motivations, and market trends; providing information regarding careers, employment, and job placement; providing market information in relation to consumer products; sales promotion (for others); business information services; preparing and placing of advertisements; advertising publication services; advertising and advertisement services; advertisement and publicity services by television, radio, websites, mails and mobile devices, in Class 35. As grounds for opposition, GSMA alleges “abandonment by unlawful use” (under the theory that Delson can have no bona fide use of the terms “mobile world Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 8 congress” and “world mobile congress” because Delson is enjoined by federal court order from using those terms), the mark is generic, the mark is merely descriptive, and priority and likelihood of confusion based on common law rights in the mark MOBILE WORLD CONGRESS for services described as: Arranging, conducting and organizing conferences, congresses, exhibitions, seminars, symposia and workshops in the fields of mobile telephone communications and mobile communication technology; provision of education services, namely, classes, conferences, congresses, exhibitions, seminars, symposia and workshops in the fields of mobile telephone communications and mobile communication technology; training services in the fields of mobile telephone communications and mobile communication technology (see Notice of Opp., ESTTA cover sheet (1 TTABVUE 2)). D. Cancellation No. 92056084 In Cancellation No. 92056084, GSMA petitions to cancel the following two registrations owned by Delson: Supplemental Registration No. 2982473 for the mark WORLD MOBILE CONGRESS (in standard characters) for “organizing and conducting business conferences, trade shows and exhibitions in the field of mobile wireless communications,” in Class 35; and Registration No. 3533730 for the mark MOBILE WORLD CONGRESS (in standard characters) for “organizing, conducting and arranging conferences, congresses, exhibitions, seminars, symposia and workshops in the fields of mobile wireless communications; provision of educational services, namely, classes, conferences, congresses, exhibitions, seminars, symposia and workshops in the fields of mobile wireless communications; training services in the fields of mobile wireless communications,” in Class 41. As grounds for cancellation against both registrations, GSMA alleges “abandonment by unlawful use” (under the theory that Delson can have no bona fide use of the terms “mobile world congress” and “world mobile congress” because Delson is Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 9 enjoined by federal court order from using those terms), that the marks are generic, and priority and likelihood of confusion based on common law rights in the mark MOBILE WORLD CONGRESS for services described as: Arranging, conducting and organizing conferences, congresses, exhibitions, seminars, symposia and workshops in the fields of mobile telephone communications and mobile communication technology; provision of education services, namely, classes, conferences, congresses, exhibitions, seminars, symposia and workshops in the fields of mobile telephone communications and mobile communication technology; training services in the fields of mobile telephone communications and mobile communication technology (see Notice of Opp., ESTTA cover sheet (1 TTABVUE 2)). GSMA further alleges that the mark in Registration No. 3533730 is merely descriptive. Delson filed a permissive counterclaim against GSMA’s Registration No. 3941317 for the mark MOBILE WORLD LIVE (in standard characters) for the following services: Advertising services; business data analysis of telecommunications companies; providing business information about telecommunications companies, in Class 35; Telecommunications services, namely, transmission of voice, data, graphics, images, audio and video; audio and video broadcasting services; providing information in the field of telecommunications and telecommunications services, in Class 38; and Entertainment and educational services, namely, providing online classes, conferences, congresses, exhibitions, webinars, symposia and workshops in the field of telecommunications; entertainment services, namely, production of television programs; providing podcasts in the field of telecommunications; educational services, namely, online seminars in the field of telecommunications, in Class 41; Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 10 on the grounds2 that the mark is generic or is merely descriptive and lacks acquired distinctiveness; and priority and likelihood of confusion based on two pleaded registrations, namely, Supplemental Registration No. 2982473 and Registration No. 3533730. E. Consolidation On December 19, 2012, the Board consolidated Opposition No. 91207134 and Cancellation No. 92056084, naming Opposition No. 91207134 as the “parent” case. Proceedings were further consolidated on November 26, 2013, to add Opposition No. 91210585, and on February 2, 2015 to add Opposition No. 91215222. F. Suspension and Resumption Proceedings were suspended pending final determination of a civil action between the parties filed in the United States District Court for the Northern District of California. Upon disposition of Delson’s appeal therefrom to the Ninth Circuit Court of Appeals, the parties sought resumption of Board proceedings. Proceedings were resumed and dates accordingly reset. GSMA then filed the outstanding motion for summary judgment. II. Civil Actions The parties were involved in two civil actions. A. 2008 Civil Action In 2008, GSMA filed Civil Action No. 1:08-CV-2092-ODE against Delson in the United States District Court for the Northern District of Georgia. GSMA’s 2 Delson also alleged fraud as a counterclaim ground for cancellation, but that claim was dismissed by the Board on March 29, 2013, upon determination of GSMA’s motion to dismiss under Fed. R. Civ. P. 12(b)(6). See 13 TTABVUE in 91207134. Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 11 complaint in the civil action alleged unfair competition. After striking Delson’s answer and any purported counterclaims therein (by Order entered August 27, 2008 (28 TTABVUE 64)), the court issued a default judgment (hereafter “2008 Final Judgment”) against Delson enjoining Delson from “advertising, promoting, or marketing conference or event services under the name Mobile World Congress, World Mobile Congress, or any other similar name.” See Final Judgment, entered October 20, 2008 (28 TTABVUE 66). The court subsequently denied Delson’s first motion for reconsideration, see Order entered October 29, 2008 (28 TTABVUE 87), and second motion for reconsideration, see Order entered December 10, 2008 (28 TTABVUE 90). B. 2012 Civil Action In 2012, Delson filed Civil Action No. 3:12-CV-02358-JSW against GSMA in the United States District Court for the Northern District of California. Delson’s complaint in the civil action alleged trademark infringement (of the marks MOBILE WORLD CONGRESS and WORLD MOBILE CONGRESS), unfair competition, false advertising, and abuse of process. The court granted GSMA’s motion to dismiss the 2012 civil action, finding it to be an impermissible collateral attack of the 2008 Final Judgment. See Order Granting Motion to Dismiss, entered August 6, 2012 (28 TTABVUE 125-127). In view thereof, the court dismissed the 2012 civil action. See Judgment, entered August 6, 2012 (28 TTABVUE 128). Delson appealed the dismissal to the United States Court of Appeals for the Ninth Circuit. The court of appeals affirmed the district court, finding no error in Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 12 the district court’s dismissing the 2012 civil action as a collateral attack against the 2008 Final Judgment, and similarly finding no error in the court’s construction of the 2012 civil action complaint as an action seeking relief from the judgment of another court. The court of appeals noted that the 2008 civil action enjoined Delson from using the terms “Mobile World Congress” and “World Mobile Congress” to promote its events.3 See Memorandum, entered April 21, 2014 (28 TTABVUE 130- 132). III. GSMA’s Motion for Summary Judgment GSMA moves for summary judgment on the following three issues based on the 2008 Final Judgment: (1) its affirmative defenses that Delson lacks standing to maintain Delson’s claims and counterclaims against GSMA; (2) its ground of “abandonment by unlawful use” against application Serial No. 85703025, Supplemental Registration No. 2982473, and Registration No. 3533730; and (3) claim preclusion for Delson’s counterclaim against Registration No. 3941317 and opposition to application Serial Nos. 85576711 and 79112842. Included with GSMA’s motion is the declaration of its counsel Sabina Vayner, and fifteen exhibits 3 As noted above, the district court enjoined Delson from “advertising, promoting, or marketing conference or event services under the name Mobile World Congress, World Mobile Congress, or any other similar name.” The word “marketing” is defined, inter alia, as “the process or technique of promoting, selling, and distributing a product or service.” Merriam-Webster online dictionary (merriam-webster.com). 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 (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 Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). In view of the meaning of the word “marketing” and the interpretation of the injunction by the court of appeals, we interpret the injunction as prohibiting Delson from using the name Mobile World Congress, World Mobile Congress, or any other similar name in conjunction with conference or event services. Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 13 attached thereto including orders from the district court in Georgia (Exhibits 4, 5, 8, and 9), orders from the district court in California (Exhibit 12), and a memorandum from the court appeals (Exhibit 13). A. Standard In a motion for summary judgment, the moving party has the burden of establishing the absence of any genuine disputes of material fact and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(a). 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., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993). When cross-motions for summary judgment are presented, the Board evaluates each motion on its own merits and resolves all doubts and inferences against the party whose motion is being considered. Mingus Constructors, Inc. v. United States, 812 F.2d 1387, 1390- 91 (Fed. Cir. 1987); and Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1437 (TTAB 2007). The mere fact that cross-motions for summary judgment are presented does not necessarily mean that there are no genuine disputes of material fact, or that a trial is unnecessary. See Amazon Technologies Inc. v. Wax, 95 USPQ2d 1865, 1871 (TTAB 2010). Summary judgment is appropriate in preclusion cases. See Zoba Int’l Corp. v. DVD Format/LOGO Licensing Corp., 98 USPQ2d 1106, 1108-09 (TTAB 2011). Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 14 B. Standing Standing is a threshold issue that must be proved in every inter partes case. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 188 (CCPA 1982). In the case of a notice of opposition, the standing requirement of a plaintiff has its statutory basis in Section 13 of the Trademark Act, 15 U.S.C. Section 1063, which provides that “[a]ny person who believes that he would be damaged by the registration of a mark upon the principal register . . . may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office . . . .” 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). A plaintiff’s belief in damage must have some reasonable basis in fact. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012). The purpose of the standing requirement, which is directed solely to the interest of the plaintiff, is to prevent litigation when there is no real controversy between the parties. Lipton Indus., 213 USPQ at 189. By the terms of the 2008 Final Judgment, Delson “is enjoined from ... advertising, promoting, or marketing conference or event services under the name Mobile World Congress, World Mobile Congress, or any other similar name.” See Final Judgment, 28 TTABVUE 66. In addition to use and registration of the WORLD MOBILE CONGRESS and MOBILE WORLD CONGRESS marks specifically identified in the 2008 Final Judgment, Delson alleges a direct commercial interest in Opposition No. 91207134 by claiming use and ownership of a Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 15 registration for the mark WORLD WIRELESS CONGRESS, and use of the mark MOBILE WORLD LIVE. See Notice of Opp., paras. 2, 3, 6, 20, 21. Similarly, in Opposition No. 91215222, Delson alleges use and ownership of registrations for the marks WORLD WIRELESS CONGRESS and GLOBAL MOBILE CONGRESS, and use of the mark MOBILE WORLD LIVE. See Notice of Opp., paras. 2, 3, 4, 7-9, 24, 26, 29, 30, and 34. In view thereof, GSMA has not demonstrated the absence of a genuine dispute as to Delson’s standing to bring Opposition No. 91207134 or 91215222. At a minimum, genuine disputes exist as to whether Delson has a legitimate commercial interest in the marks WORLD WIRELESS CONGRESS, GLOBAL MOBILE CONGRESS, and MOBILE WORLD LIVE. Accordingly, GSMA’s motion for summary judgment is denied to the extent it seeks judgment on the basis that Delson lacks standing to maintain Opposition Nos. 91207134 and 91215222. As the counterclaim plaintiff in Cancellation No. 92056084, Delson need not allege its standing to challenge the pleaded registrations because its standing is inherent. See Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1479 (TTAB 2007); see also Bankamerica Corp. v. Invest Am., 5 USPQ2d 1076, 1078 (TTAB 1987) (defendant seeking to cancel pleaded registration on ground of descriptiveness or genericness in an opposition based on likelihood of confusion need not allege that it has an interest in using the term sought to be cancelled). Accordingly, GSMA’s motion for summary judgment is denied to the extent it seeks Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 16 judgment on the basis that Delson lacks standing to maintain the counterclaim in Cancellation No. 92056084. C. Abandonment by “Unlawful Use” Pursuant to the 2008 Final Judgment, Delson “is enjoined from ... advertising, promoting, or marketing conference or event services under the name Mobile World Congress, World Mobile Congress, or any other similar name.” See Final Judgment, 28 TTABVUE 66. GSMA argues that the 2008 Final Judgment prohibits Delson from using the marks MOBILE WORLD CONGRESS and WORLD MOBILE CONGRESS, “or any other similar name,” and, in view thereof, Delson has “abandoned by unlawful use” any purported rights it may have had in those marks. Delson argues that the 2008 Final Judgment is void, that it has continually used the marks MOBILE WORLD CONGRESS and WORLD MOBILE CONGRESS in commerce in the ordinary course of trade notwithstanding the 2008 Final Judgment, and that GSMA relies on a legal fiction that Delson’s continued use of the marks is not bona fide. Delson’s argument that the 2008 Final Judgment is invalid is a collateral attack on that judgment and is improper in this venue. When Delson raised the same validity arguments4 in the 2012 civil action, the California district court informed Delson that “[t]o the extent Delson seeks to challenge the validity of the judgment issued by the district court in Georgia, Delson should request relief from that court.” Order Granting Motion to Dismiss, 28 TTABVUE 127. The court of appeals agreed, similarly stating “considerations of comity and 4 “Delson devotes the majority of its opposition brief to arguing that the judgement entered against it in Georgia should be considered void.” See Order Granting Motion to Dismiss, entered August 6, 2012 (28 TTABVUE 128). Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 17 orderly administration of justice demand that the nonrendering court should decline jurisdiction of such an action and remand the parties for their relief to the rendering court.” Memorandum, 28 TTABVUE 131 (quoting Lapin v. Shulton, Inc., 333 F.2d 169, 172 (9th Cir. 1964)). We also agree. If Delson disputes the validity of the 2008 Final Judgment, its remedy is to return to the court that issued it – not attack it in these consolidated Board proceedings. The term “trademark” includes any word, name, symbol, or device, or any combination thereof used by a person. Trademark Act Section 45, 15 U.S.C. § 1127 (internal division omitted). In order to obtain a federal registration, an applicant must demonstrate use of its mark as a trademark or service mark in commerce. “Use in commerce means a bona fide use of a mark in the ordinary course of trade.” Trademark Act Section 45. It has been the consistent position of the Board and the USPTO that a bona fide use of a mark in commerce means a “lawful use in commerce.” See John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1948 (TTAB 2010) (citing In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) and Clorox Co. v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB 1982)). Further, “[a] term that may not be lawfully used may not be registered as a trademark or service mark.” In re Kayser-Roth Corp., 29 USPQ2d 1379, 1381 (TTAB 1993). 1. Opposition No. 91210585 Opposition No. 91210585 concerns Delson’s subject application Serial No. 85703025 for the mark MOBILE WORLD CONGRESS for services identified as: Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 18 Organizing, conducting and arranging business and advertising exhibitions in the fields of mobile wireless communications and mobile wireless technologies; organizing, conducting, arranging and hosting business competitions in the fields of mobile wireless communications and mobile wireless technologies; organizing, conducting and arranging business conferences, trade shows and exhibitions in the field of mobile wireless communications and mobile wireless technologies; advertising and marketing services; business data analysis; promotional services; business networking; business monitoring and consulting services, namely, tracking users and advertising of others to provide strategy, insight, marketing guidance, and for analyzing, understanding and predicting consumer behavior and motivations, and market trends; providing information regarding careers, employment, and job placement; providing market information in relation to consumer products; sales promotion (for others); business information services; preparing and placing of advertisements; advertising publication services; advertising and advertisement services; advertisement and publicity services by television, radio, websites, mails and mobile devices, in Class 35. (Emphasis added.) Because the 2008 Final Judgment enjoins Delson from “advertising, promoting, or marketing conference or event services under the name Mobile World Congress...,” Delson cannot make lawful use of the applied-for MOBILE WORLD CONGRESS mark in commerce for advertising, promoting, or marketing conference or event services. Accordingly, Delson is, as a matter of law, prohibited from making the use required to obtain a federal trademark registration for the following services recited in the application (underlined above): Organizing, conducting and arranging business and advertising exhibitions in the fields of mobile wireless communications and mobile wireless technologies; organizing, conducting, arranging and hosting business competitions in the fields of mobile wireless communications and mobile wireless technologies; organizing, conducting and arranging business conferences, trade shows and exhibitions in the field of mobile wireless communications and mobile wireless technologies. Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 19 In view thereof, we find that no genuine dispute of material fact exists as to GSMA’s claim that Delson cannot make lawful use in commerce of the mark MOBILE WORLD CONGRESS for those services, and we grant the motion for summary judgment to the extent that these services will be stricken from application Serial No. 85703025. However, the 2008 Final Judgment does not appear to enjoin Delson’s use of the applied-for mark for the remaining services in the application, namely: Advertising and marketing services; business data analysis; promotional services; business networking; business monitoring and consulting services, namely, tracking users and advertising of others to provide strategy, insight, marketing guidance, and for analyzing, understanding and predicting consumer behavior and motivations, and market trends; providing information regarding careers, employment, and job placement; providing market information in relation to consumer products; sales promotion (for others); business information services; preparing and placing of advertisements; advertising publication services; advertising and advertisement services; advertisement and publicity services by television, radio, websites, mails and mobile devices. GSMA has not met its burden to show that no genuine dispute of material fact exists as to whether these services are within the scope of the 2008 Final Judgment; and, in view thereof, the motion for summary judgment is denied to that extent. These services will remain in application Serial No. 85703025. 2. Cancellation No. 92056084 Cancellation No. 92056084 concerns Delson’s subject Registration No. 3533730 for the mark MOBILE WORLD CONGRESS for services identified as: organizing, conducting and arranging conferences, congresses, exhibitions, seminars, symposia and workshops in the fields of mobile wireless communications; provision of educational services, namely, Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 20 classes, conferences, congresses, exhibitions, seminars, symposia and workshops in the fields of mobile wireless communications; training services in the fields of mobile wireless communications, in Class 41 (emphasis added); and subject Supplemental Registration No. 2982473 for the mark WORLD MOBILE CONGRESS for services identified as: organizing and conducting business conferences, trade shows and exhibitions in the field of mobile wireless communications, in Class 35. As an initial matter we note that the 2008 Final Judgment does not direct the USPTO to cancel either of Delson’s registrations, and GSMA does not allege that it has returned to the district court in Georgia to seek either a modification of the 2008 Final Judgment or a new contempt order against Delson for violating the 2008 Final Judgment. “A registered trademark may be cancelled if it has been abandoned.” On-Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000) (citing Section 14(3) of the Trademark Act, 15 U.S.C. § 1064(3)). A mark shall be deemed abandoned under Section 45 of the Trademark Act, 15 U.S.C. § 1127: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in the mark. As we noted earlier, the Board has consistently held that a bona fide use of a mark means a “lawful use in commerce.” Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 21 There are two elements to an abandonment claim that a plaintiff must prove: nonuse of the mark and intent not to resume use. If GSMA can show three consecutive years of nonuse, it can establish a prima facie showing of abandonment. Such a prima facie showing creates a rebuttable presumption that Delson has abandoned the marks without intent to resume use. See Crash Dummy Movie LLC v. Mattel Inc., 601 F.3d 1387, 94 USPQ2d 1315, 1316 (Fed. Cir. 2010). GSMA’s claims in the 2008 civil action were based, in part, on the Trademark Act. See civil action Complaint, para. 1, 28 TTABVUE 32. The federal district court in Georgia had jurisdiction over the claims arising under the Trademark Act under Section 39(a) of the Act, 15 U.S.C. § 1121(a). The district court in Georgia is a court of competent jurisdiction which entered a final judgment “in favor of [GSMA] and against [Delson] as to all counts of [GSMA]’s [c]omplaint.” See Final Judgment, 28 TTABVUE 66. Inasmuch as Delson has been enjoined since 2008 from “advertising, promoting, or marketing conference or event services under the name Mobile World Congress, World Mobile Congress, or any other similar name,” Delson could not have lawfully used the mark MOBILE WORLD CONGRESS or WORLD MOBILE CONGRESS for conference or event services since that time. Although Delson states that it has used, and continues to use, these marks in commerce, any such use for conference or event services could not inure to Delson’s benefit since it would be in clear and direct violation of the district court’s 2008 Final Judgment. GSMA has met the first element of an abandonment claim, namely, that the marks MOBILE WORLD CONGRESS and WORLD MOBILE CONGRESS could Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 22 not have been used by Delson in lawful commerce for conference or event services since 2008. There is no genuine dispute that GSMA has established a prima facie showing of abandonment as to Supplemental Registration No. 2982473 and as to the following services recited in Registration No. 3533730 (underlined above): organizing, conducting and arranging conferences, congresses, exhibitions, seminars, symposia and workshops in the fields of mobile wireless communications; provision of educational services, namely, classes, conferences, congresses, exhibitions, seminars, symposia and workshops in the fields of mobile wireless communications. However, the 2008 Final Judgment does not appear to enjoin Delson’s use of the applied-for mark for the remaining services in Registration No. 3533730, namely, “training services in the fields of mobile wireless communications.” In view thereof GSMA has not met its burden to show that no genuine dispute of material fact exists as to whether these services are within the scope of the 2008 Final Judgment or could not have been offered under lawful use of the mark; and, in view thereof, the motion for summary judgment is denied to the extent it seeks abandonment of the “training services in the fields of mobile wireless communications” services of Registration No. 3533730. Because GSMA has met the first element of an abandonment claim as to Supplemental Registration No. 2982473 and the services underlined above in Registration No. 3533730, the burden shifts to Delson, as the non-moving party, to demonstrate the existence by sufficient evidence to show that it has an intent to resume lawful use of the marks MOBILE WORLD CONGRESS and WORLD MOBILE CONGRESS in commerce for conference or event services. See Cerveceria Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 23 Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1310-11 (Fed. Cir. 1989), and Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376-77 (Fed. Cir. 1998). Delson argues that the 2008 Final Judgment is void and that it has never stopped using its marks. Delson points to the 2012 civil action it filed in California and states that it “has no plans to stop using the” marks and “[i]f GSMA comes to California to enforce the [2008 Final] Judgment, Delson plans to invalidate the [2008 Final] Judgment....” Lu declaration, para. 10 (31 TTABVUE 54). Delson’s arguments must fail. The Georgia district court’s 2008 Final Judgment remains in effect, and both the District Court for the Northern District of California and the United States Court of Appeals for the Ninth Circuit have declined to modify or set aside that judgment. Thus, any intent by Delson to resume use of the mark in commerce must be unlawful as well, in light of the Georgia district court’s 2008 Final Judgment. See John W. Carson Found., 94 USPQ2d at 1948 (where district court injunction enjoins use of a mark “as a matter of law, applicant cannot make lawful use of its mark in commerce. Therefore, it is a legal impossibility for applicant to have a bona fide intent to use its mark in commerce.”). See also Imperial Tobacco Ltd. v. Philip Morris Inc., 14 USPQ2d 1390, 1394 (Fed. Cir. 1990) (“[A]ffirmative desire by the registrant not to relinquish a mark is not determinative of the intent element of abandonment under the [Trademark] Act.”). In view thereof, we find that Delson has not raised a genuine dispute as to its intent to resume lawful use, and GSMA’s motion for summary judgment is granted to the Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 24 extent it seeks entry of judgment on its ground of “abandonment by unlawful use” against Supplemental Registration No. 2982473 and the services underlined above in Registration No. 3533730. D. Claim preclusion GSMA argues that claim preclusion bars Delson’s counterclaim against Registration No. 3941317 in Cancellation No. 92056084, Delson’s opposition to application Serial No. 85576711 in Opposition No. 91207134, and Delson’s opposition to application Serial No. 79112842 in Opposition No. 91215222. Under the doctrine of claim preclusion, “a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies based on the same cause of action.” Jet Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n.5 (1979)). For claim preclusion to apply, therefore, there must be: (1) identity of parties or their privies, (2) an earlier final judgment on the merits of a claim, and (3) a second claim based on the same set of transactional facts as the first. Id. The Board acts with cautious restraint when applying the equitable doctrine of claim preclusion. Urock Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1411 (TTAB 2015). See also Be Sport, Inc. v. Al-Jazeera Satellite Channel, 115 USPQ2d 1765, 1768 (TTAB 2015) (quoting Kearns v. Gen. Motors Corp., 94 F.3d 1553, 39 USPQ2d 1949, 1952 (Fed. Cir. 1996) (“[P]recedent weighs heavily against denying litigants a day in court unless there is a clear and persuasive basis for that denial.”)). Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 25 As to the first factor, there is no dispute that parties to the 2008 civil action are the same as the parties to these consolidated Board proceedings. As to the second factor, Delson argues that the 2008 Final Judgment is invalid. Such argument is a collateral attack on that judgment and is improper in this venue. When Delson raised the same validity arguments5 in the 2012 civil action, the California district court informed Delson that “[t]o the extent Delson seeks to challenge the validity of the judgment issued by the district court in Georgia, Delson should request relief from that court.” Order Granting Motion to Dismiss, 28 TTABVUE 127. The court of appeals agreed, similarly stating “considerations of comity and orderly administration of justice demand that the nonrendering court should decline jurisdiction of such an action and remand the parties for their relief to the rendering court.” Memorandum, 28 TTABVUE 131 (quoting Lapin v. Shulton, Inc., 333 F.2d 169, 172 (9th Cir. 1964)). We also agree. If Delson disputes the validity of the 2008 Final Judgment, its remedy is to return to the court that issued it – not attack it in these consolidated Board proceedings. In view thereof, there can be no dispute that the 2008 Final Judgment is an earlier final judgment on the merits of a claim and may trigger claim preclusion. See Nasalok Coating Corp. v. Nylok Corp., 86 USPQ2d 1369, 1376 (Fed. Cir. 2008) (default judgments can give rise to claim preclusion). See also Urock, 115 USPQ2d at 1411-12 (citing, inter alia, Wells Cargo, Inc. v. Wells Cargo, Inc., 606 F.2d 961, 203 USPQ 564, 566 (CCPA 1979) (“Default judgments generally operate as res judicata . . . .”) (citations 5 “Delson devotes the majority of its opposition brief to arguing that the judgement entered against it in Georgia should be considered void.” See Order Granting Motion to Dismiss, entered August 6, 2012 (28 TTABVUE 128). Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 26 omitted) and USOC v. Bata Shoe Co., 225 USPQ 340, 342 (TTAB 1984) (“default judgments generally operate as res judicata”)). As to the third factor, we need only look at the first element of whether the Board proceedings are based on the same set of transactional facts as the Georgia civil action, namely, whether the mark involved in the first proceeding is the same mark, in terms of commercial impression, as the marks involved in these consolidated Board proceedings. GSMA has not shown that it is. Specifically, GSMA’s mark involved in the Georgia civil action was the logo shown below: See civil action Complaint, paras. 2 and 12 (28 TTABVUE 33 and 37). This logo includes the term GSMA and a black, square carrier therefor. None of GSMA’s marks MOBILE WORLD LIVE (subject to Delson’s counterclaim against Registration No. 3941317 in Cancellation No. 92056084), (subject to Delson’s opposition to application Serial No. 85576711 in Opposition No. 91207134), or MOBILE WORLD CAPITAL (subject to Delson’s opposition to application Serial No. 79112842 in Opposition No. 91215222) contain the term CONGRESS, the term GSMA, or a black, square design element which was present in civil action logo. Moreover, of the marks in these consolidated proceedings, two contain the term LIVE (or L!VE) and one contains the term CAPITAL, but neither term appears in the logo involved in the civil action. In view thereof, we find that the civil action logo creates a genuine dispute as to the similarity of the MOBILE Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 27 WORLD LIVE, and MOBILE WORLD CAPITAL marks at issue in these consolidated proceedings. Accordingly, the third element of claim preclusion has not been met with respect to any of the consolidated oppositions or cancellation, and GSMA’s motion for summary judgment is denied with respect to claim preclusion.6 IV. Delson’s Cross-Motion for Summary Judgment Delson cross-moves for partial summary judgment on GSMA’s grounds of “abandonment by unlawful use” against Delson’s application Serial No. 85703025, Supplemental Registration No. 2982473, and Registration No. 3533730. Included with Delson’s motion are, inter alia, the declarations of its chief executive officer Willie Lu, and its counsel J. James Li. In favor of its cross-motion, Delson argues that “[t]he Board should reject the relevance of the [2008 Final] Judgment. Or in the alternative, the Board should refuse to enforce the [2008 Final] Judgment because the judgment is null and void as a matter of law.” As we discussed, above, such arguments are a collateral attack on the 208 Final Judgment and are improper in this venue. Notwithstanding that Delson devoted only three sentences to its cross-motion, which appears to be nothing more than a “throw away” motion in response to GSMA’s motion for summary judgment, we have carefully considered Delson’s arguments. We find that Delson has not met its burden of showing that it is entitled 6 In view of our denial based on the first element of the third factor, there is no need to consider the second element of that factor (i.e., whether the evidence of likelihood of confusion between the parties’ marks at issue in the civil action would be identical to the evidence of likelihood of confusion between the parties’ marks in each respective Board proceeding). Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 28 to summary judgment on the grounds of “abandonment by unlawful use.” Specifically, Delson has failed to establish that there is no genuine dispute that we should “reject” or “refuse to enforce” the 2008 Final Judgment. Further, even though we have denied GSMA’s motion as to certain services in application Serial No. 857030257 and Registration No. 35337308, Delson has similarly not met its burden to show that no genuine dispute of material fact exists as to whether those excepted services are not within the scope of the 2008 Final Judgment. In view thereof, the cross-motion for summary judgment is denied. V. Future Motions In view of our consideration of the issues raised by the cross-motions determined herein, we will not consider any further motion for summary judgment in these consolidated cases. VI. Schedule Proceedings are resumed. The Board will not consider another motion for summary judgment in these consolidated cases. Dates are reset on the following schedule. Expert Disclosures Due January 27, 2016 7 They are: “advertising and marketing services; business data analysis; promotional services; business networking; business monitoring and consulting services, namely, tracking users and advertising of others to provide strategy, insight, marketing guidance, and for analyzing, understanding and predicting consumer behavior and motivations, and market trends; providing information regarding careers, employment, and job placement; providing market information in relation to consumer products; sales promotion (for others); business information services; preparing and placing of advertisements; advertising publication services; advertising and advertisement services; advertisement and publicity services by television, radio, websites, mails and mobile devices.” 8 They are: “training services in the fields of mobile wireless communications.” Opposition Nos. 91207134, 91210585, 91215222; Cancellation No. 92056084 29 Discovery Closes February 26, 2016 Delson as Plaintiff Pretrial Disclosures April 11, 2016 30-day testimony period for plaintiff’s testimony to close May 26, 2016 GSMA as defendant and counterclaim plaintiff Pretrial Disclosures June 10, 2016 30-day testimony period for defendant and plaintiff in the counterclaim to close July 25, 2016 Counterclaim Defendant’s and Plaintiff’s Rebuttal Disclosures Due August 9, 2016 30-day testimony period for defendant in the counterclaim and rebuttal testimony for plaintiff to close September 23, 2016 Counterclaim Plaintiff’s Rebuttal Disclosures Due October 8, 2016 15-day rebuttal period for plaintiff in the counterclaim to close November 7, 2016 Brief for plaintiff due January 6, 2017 Brief for defendant and plaintiff in the counterclaim due February 5, 2017 Brief for defendant in the counterclaim and reply brief, if any, for plaintiff due March 7, 2017 Reply brief, if any, for plaintiff in the counterclaim due March 22, 2017 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 2.125. 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 2.129.

Delson Group, Inc. v. GSMA Ltd. GSMA Ltd. v. Delson Group, Inc.