DJ Depot, LLCv.DJ Depot Inc.

Trademark Trial and Appeal Board

Jun 17, 2021

92068891 (T.T.A.B. Jun. 17, 2021)

Mailed: June 17, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

DJ Depot, LLC
v.
DJ Depot Inc.
_____

Cancellation No. 92068891
_____

Morris E. Turk of YourTrademarkAttorney.com for DJ Depot, LLC.

Stefan Feuerherdt, Esq. for DJ Depot Inc.
_____

Before Zervas, Bergsman and English, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

DJ Depot Inc. (Respondent) is the owner of the mark DJ DEPOT, in standard
character form, registered on the Supplemental Register for “on-line retail store
services featuring audio and audiovisual equipment; retail store services featuring
audio and audiovisual equipment,” in International Class 35.1 Respondent disclaims
the exclusive right to use the word “Depot.”

1 Registration No. 4705445, registered March 17, 2015, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), based on Respondent’s claim of first use of its mark anywhere and
in commerce as of January 1, 1999. Respondent filed the underlying application on June 3,
2013 for registration on the Principal Register. On November 26, 2013, Respondent amended
This Opinion Is Not a
Precedent of the TTAB
Precedent of the TTAB
PrePrecedent of the TTAB
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DJ Depot, LLC (Petitioner) filed a petition to cancel Respondent’s registration on
the ground of likelihood of confusion under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), alleging prior use of the mark DJ DEPOT for retail and
distributorship services featuring audio equipment, audiovisual equipment, and
lighting products. In addition, Petitioner alleges that Respondent’s registration is
void ab initio because Respondent did not use the mark DJ DEPOT as of the filing
date of its application for registration or as of the date Respondent amended its
application to the Supplemental Register.
Respondent, in its Answer, admits that the marks are similar and that the
services are related but otherwise denies the salient allegations in the petition for
cancellation.2
I. The Record
The record includes the pleadings, and pursuant to Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Respondent’s registration file. Only Petitioner introduced
testimony or evidence. We list below the testimony and evidence Petitioner
introduced:
● Notice of reliance on Respondent’s responses to Petitioner’s interrogatories;3

the application to the Supplemental Register. Accordingly, the effective filing date of the
application is November 26, 2013.
2 Amended Answer ¶¶12 and 13 (9 TTABVUE 3).
3 15 TTABVUE.
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● Notice of reliance on Respondent’s responses to Petitioner’s request for
production of documents;4
● Notice of reliance on Respondent’s admissions to Petitioner’s requests for
admission;5 and
● Testimony deposition of Azim Patel, Petitioner’s member, manager and
founder.6
II. Entitlement to a statutory cause of action7
Petitioner’s entitlement to a statutory cause of action, formerly referred to as
“standing” by the Federal Circuit and the Board, is an element of the plaintiff’s case

4 16 TTABVUE. Responses to a request for production of documents introduced through a
notice of reliance are admissible solely for purposes of showing that a party has stated that
there are no responsive documents; documents produced in response to the requests are
generally not admissible by notice of reliance alone. Trademark Rule 2.120(j)(3)(ii), 37 C.F.R.
§ 2.120(j)(3)(ii); see also City Nat’l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI Inc.,
106 USPQ2d 1668, 1674 n.10 (TTAB 2013) (responses to document production requests are
admissible solely for purposes of showing that a party has stated that there are no responsive
documents); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 n.7 (TTAB 2012) (written
responses to document requests indicating that no documents exist may be submitted by
notice of reliance). Thus, we consider Respondent’s responses to Petitioner’s request for
production of documents only to the extent that they say there are no responsive documents.
5 17 TTABVUE. A party may introduce only an admission to a request for admission through
a notice of reliance. Trademark Rule 2.120(k)(3)(i), 37 C.F.R. § 2.120(k)(3)(i). A denial or
statement that the responding party cannot respond to the request does not establish the
truth or falsity of the assertion, but rather leaves the matter for proof at trial. Life Zone Inc.
v. Middleman Grp. Inc., 87 USPQ2d 1953, 1957 n.10 (TTAB 2008) (denials to requests for
admission inadmissible because “unlike an admission (or a failure to respond which
constitutes an admission), the denial of a request for admission establishes neither the truth
nor the falsity of the assertion, but rather leaves the matter for proof at trial.”). As such, we
have considered only the admissions to the requests for admission.
6 23 TTABVUE.
7 Our decisions have previously analyzed the requirements of Sections 1063 and 1064 under
the rubric of “standing.” We now refer to this inquiry as entitlement to a statutory cause of
action. Despite the change in nomenclature, our prior decisions and those of the Federal
Circuit interpreting “standing” under §§ 1063 and 1064 remain applicable.
Cancellation No. 92068891

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in every inter partes case. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298,
2020 USPQ2d 11277 (Fed. Cir. 2020) ), cert. denied, ___ S. Ct. ___ (2021); Australian
Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d
10837 (Fed. Cir. 2020); Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
111 USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish entitlement to a statutory
cause of action, a plaintiff must demonstrate: (i) an interest falling within the zone of
interests protected by the statute and (ii) a reasonable belief in damage proximately
caused by the registration of the mark. Corcamore, 2020 USPQ2d 11277 at *4. See
also Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d 1092,
50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982).
Petitioner has demonstrated a real commercial interest in the mark DJ DEPOT
through the testimony of Azim Patel, Petitioner’s manager, member and founder. Mr.
Patel testified that since 2000, Petitioner has been selling DJ sound and lighting
equipment using the mark DJ DEPOT.8
Petitioner has a reasonable basis in its belief that Respondent’s registration will
damage Petitioner inasmuch as Respondent has admitted that the marks are similar
and the services are related,9 and there is a likelihood of confusion.10

8 Patel Testimony Dep., pp. 10, 11, 16 and 32 and Exhibits D, E and F (23 TTABVUE 11, 12,
17, 33 and 106-404).
9 Amended Answer ¶¶12 and 13 (9 TTABVUE 3).
10 Respondent’s Admission to Petitioner’s Request for Admission No. 2 (17 TTABVUE 6).
While likelihood of confusion is legal conclusion based on the facts, we include Applicant’s
admission that there is a likelihood of confusion because it corroborates Petitioner’s belief
that it will be damaged by the registration of the mark at issue.
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By demonstrating a real commercial interest in the mark DJ DEPOT and that
Petitioner has a reasonable basis in its belief that it will be damaged by Respondent’s
registration of the mark DJ DEPOT, Petitioner has proven it is an entitled to a
statutory cause of action. See Lipton Indus., 213 USPQ at 189 (“To establish a
reasonable basis for a belief that one is damaged by the registration sought to be
cancelled, a petition may assert a likelihood of confusion which is not wholly without
merit.”); Moke Am. LLC v. Moke USA, LLC, 2020 USPQ2d 10400, *2 (TTAB 2020)
(same).
III. Nonuse
Petitioner alleges that Respondent had not used the mark DJ DEPOT in
connection with “on-line retail store services featuring audio and audiovisual
equipment; retail store services featuring audio and audiovisual equipment” at the
time it filed its application to register the mark DJ DEPOT and, therefore, the
application is void ab initio and the registration must be cancelled.11
To prove Respondent did not use the mark at the time it filed the application to
register DJ DEPOT, Petitioner introduced the following evidence:
● Notice of reliance on Respondent’s responses to Petitioner’s Interrogatory Nos.
2-16 to which Respondent stated that it has no knowledge or recollection of any
individuals or entities to whom Respondent provided its services;12

11 Amended Petition for Cancellation ¶¶17-21 (8 TTABVUE 6-7).
12 15 TTABVUE 6-11.
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● Notice or reliance on Respondent’s responses to Petitioner’s Interrogatory No.
17 to which Respondent stated it has no knowledge or recollection of advertising or
promoting its services under the mark DJ DEPOT in printed publications, electronic
publications, websites, radio stations, or television stations;13 and
● Notice of reliance on Respondent’s responses to Petitioner’s Request for
Production of Documents Nos. 1-15 to which Respondent stated that it has no
documents in its care, custody or control to show Respondent had used the mark DJ
DEPOT in connection with “on-line retail store services featuring audio and
audiovisual equipment; retail store services featuring audio and audiovisual
equipment.”14
We find the evidence is sufficient to prove Respondent had not used the mark DJ
DEPOT for “on-line retail store services featuring audio and audiovisual equipment;
retail store services featuring audio and audiovisual equipment” at the time it filed
the use-based application for registration.
For purposes of completeness, we address Petitioner’s remaining claim of
likelihood of confusion.

13 15 TTABVUE 11.
14 16 TTABVUE 6-11.
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IV. Priority
As noted above, Azim Patel testified on behalf of Petitioner that that since 2000,
Petitioner has been selling DJ sound and lighting equipment using the mark DJ
DEPOT.15
Because Respondent’s registration is on the Supplemental Register, Respondent
cannot rely on the filing date of the application that matured into its registration to
establish a constructive use priority date. Section 26 of the Trademark Act, 15 U.S.C.
§ 1094, provides that “registrations on the supplemental register shall not be subject
to or receive the advantages of section[ ] . . . 1057(c),” which provides that
[c]ontingent on the registration of a mark on the principal
register . . . the filing of an application to register such
mark shall constitute constructive use of the mark,
conferring a right of priority, nationwide in effect . . .
against any other person except for a person whose mark
has not been abandoned and who, prior to such filing—(1)
has used the mark; (2) has filed an application to register
the mark which is pending or has resulted in registration
of the mark; or (3) has filed a foreign application to register
the mark on the basis of which he or she has acquired a
right of priority, and timely files an application under
section 1126(d) of this title to register the mark which is
pending or has resulted in registration of the mark.
15 U.S.C. § 1057(c). See Nationwide Mutual Ins. Co. v. Nationwide Realty, LLC,
120 USPQ2d 1618, 1632 (TTAB 2016) (“Respondent’s Supplemental Register
registration, however, is entitled to none of the presumptions of Section 7 of the
Trademark Act … and it is incompetent as evidence of Respondent’s first use of its

15 Patel Testimony Dep., pp. 10, 11, 16 and 32 and Exhibits D, E and F (23 TTABVUE 11, 12,
17, 33 and 106-404).
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mark. 15 U.S.C. §§ 1057(b) and 1094. It is also not entitled to constructive use of the
filing date of the underlying application. 15 U.S.C. § 1057(b).”).
Since Respondent did not introduce any testimony or evidence, Respondent has
not proffered any testimony or evidence regarding its use of DJ DEPOT for “on-line
retail store services featuring audio and audiovisual equipment; retail store services
featuring audio and audiovisual equipment.” Therefore, Petitioner has proven it has
priority.
V. Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the probative
facts in evidence that are relevant to the factors bearing on the likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)
(“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138,
113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor that
is relevant or for which there is evidence of record. See In re Guild Mortg. Co.,
912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); M2 Software, Inc. v. M2
Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark
Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we
have considered each factor for which we have evidence, we focus our analysis on
those factors we find to be relevant.”). “[E]ach case must be decided on its own facts
and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d
1197, 177 USPQ 386, 387 (CCPA 1973).
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“Not all DuPont factors are relevant in each case, and the weight afforded to each
factor depends on the circumstances. … Any single factor may control a particular
case.” Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994,
2020 USPQ2d 10341, *3 (Fed. Cir. 2020). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods or services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d
1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods and differences in the marks.”); see also In re i.am.symbolic, LLC, 866 F.3d
1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis
considers all DuPont factors for which there is record evidence but ‘may focus … on
dispositive factors, such as similarity of the marks and relatedness of the goods’”)
(quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002)).
A. Similarity of the marks.
The marks are identical.16

16 As noted above, Respondent admits the marks are similar. Amended Answer ¶12
(9TTABVUE 3); Respondent’s Admission to Petitioner’s Request for Admission No. 2 (17
TTABVUE 6).
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B. The similarity or dissimilarity and nature of the services.
Respondent has registered the mark DJ DEPOT for “on-line retail store services
featuring audio and audiovisual equipment; retail store services featuring audio and
audiovisual equipment.”
Azim Patel testified that Petitioner has been selling DJ sound and lighting
equipment online using the mark DJ DEPOT,17 including DJ CDJs used to spin the
music, mixers to switch from one song to another, and disco lights.18 See also Patel
Testimony Exhibit D, copies of Petitioner’s website advertising the sale of audio
equipment such as CD players, amps, headphones, microphones, turntables, etc.19
Respondent admits the services are related.20
We find the services are in part legally identical.
C. Established, likely-to-continue channels of trade and classes of
consumers.
Where, as here, there are no restrictions in Respondent’s description of services,
Respondent is presumed to offer the services in all channels of trade that would be
normal for such services and that they will be purchased by all potential purchasers
for such services, including Petitioner’s channels of trade and customers. Citigroup
Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.

17 Patel Testimony Dep., pp. 10 and 11 (23 TTABVUE 11 and 12).
18 Patel Testimony Dep., pp. 16 (23 TTABVUE 17).
19 23 TTABVUE 106-127.
20 Amended Answer ¶13 (9 TTABVUE 3).
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2011); CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983); In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981).
D. Conclusion
Because the marks are identical, the services are in part legally identical, and we
presume the services are offered in the same channels of trade to the same classes of
consumers, we find Respondent’s mark DJ DEPOT for “on-line retail store services
featuring audio and audiovisual equipment; retail store services featuring audio and
audiovisual equipment” is likely to cause confusion with Petitioner’s mark DJ DEPOT
for online sales of audio and lighting equipment.
Decision: We grant the petition to cancel Registration No. 47505445 for the mark
DJ DEPOT on the ground that Respondent had not used the mark at the time it filed
the application for registration and, therefore, the application is void ab initio.
In addition, we also grant the petition to cancel the registration on the ground of
likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).