Jerrick Ventures, LLCv.Pamela Weintraub and Penthouse Global Media, Inc.; Penthouse World Media, LLC and Alpha Cygni, Inc.

Trademark Trial and Appeal BoardOct 30, 2020

92063829 (T.T.A.B. Oct. 30, 2020)

Mailed: October 30, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Jerrick Ventures, LLC v. Penthouse World Media, LLC _____ Cancellation No. 92063829 _____ Kenneth J. Rubenstein of Cohen Tauber Spievack & Wagner P.C. for Jerrick Ventures, LLC. Jason A. Fischer of Fischer Law, P.L. for Penthouse World Media, LLC. _____ Before Bergsman, Heasley and Dunn, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Penthouse World Media, LLC (Respondent), is the owner of record of Registration No. 4932689 of the mark OMNI, in standard character form, for “magazines in the field of science, fiction and fantasy,” in International Class 16.1 Jerrick Ventures, LLC (Petitioner) filed a petition to cancel Registration No. 4932689 on the grounds that (i) Respondent’s predecessor-in-interest did not have a 1 Registered April 5, 2016, based on application Serial No. 85644455 filed June 6, 2012, by Pamela Weintraub, a citizen of the United States. We discuss the chain of title below. This Opinion Is Not a Precedent of the TTAB Precedent of the TTAB PrePrecedent of the TTAB Cancellation No. 92063829 - 2 - bona fide intent to use the OMNI mark when she filed the underlying application, (ii) that Respondent’s predecessor-in-interest was not the owner of the OMNI mark and therefore, the underlying application was void ab initio,2 and (iii) likelihood of confusion. With respect to the likelihood of confusion claim, Petitioner pleaded prior common law use of the “OMNI REBOOT mark for … publishing an online magazine about science and science fiction called OMNI Reboot” and that Respondent’s registration for the mark OMNI for “magazines in the field of science, fiction and fantasy” is likely to cause confusion.3 Respondent, in its Answer, denied the salient allegations in the Petition for Cancellation. I. Preliminary Issues A. Respondent’s chain of title Pamela Weintraub filed the underlying application for registration. On July 3, 2017, after the registration issued, Weintraub assigned her entire right, title and interest in the mark and registration to Alpha Cygni, Inc. Respondent recorded the assignment in the USPTO on July 3, 2017, at reel 6097, frame 0908. 2 Petitioner alleged, in essence, Respondent is not the owner of the OMNI trademark and the underlying application is void ab initio because Petitioner is the rightful owner of the OMNI trademark because it obtained the rights to use the OMNI trademark from the Guccione estate, the owner of the original OMNI trademark for magazines, and Respondent did not acquire a license or other right to use the OMNI trademark. Petition for Cancellation ¶¶28- 41 (1 TTABVUE 11). 3 Petition for Cancellation ¶¶26-29 (1 TTABVUE 9). Cancellation No. 92063829 - 3 - Immediately thereafter, Alpha Cygni, Inc. assigned its entire right, title and interest in the mark and registration to Penthouse Global Media, Inc. Respondent recorded the assignment in the USPTO on July 13, 2017, at reel 6097, frame 0920. Finally, Penthouse Global Media, Inc. assigned its entire right, title and interest to the mark and registration to Penthouse World Media, LLC. Respondent recorded the assignment in the USPTO on June 27, 2018, at reel 6365, frame 0817. David K. Gottlieb represented Penthouse Global Media, Inc. in his capacity as the Chapter 11 Trustee. In its July 17, 2018 and August 3, 2018 orders, the Board joined Pamela Weintraub, Alpha Cygni, Inc., Penthouse Global Media, Inc., and Penthouse World Media, LLC as defendants in this proceeding.4 Inasmuch as discovery and the testimony periods are closed, we substitute Penthouse World Media, LLC as Respondent. TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE §512.01 (2020). B. Pleadings In its brief, Petitioner identified the issues before the Board as follows: 1. Did [Respondent’s predecessor-in-interest] have a bona fide intent to use the OMNI Mark in commerce at the time she filed the intent-to-use trademark application. 2. Did [Respondent’s predecessor-in-interest] make bona fide use in commerce of the OMNI Mark at the time she filed a Statement of Use. 3. Did [Respondent’s predecessor-in-interest] use of the OMNI Mark (or lack thereof) following the filing of the 4 20 TTABVUE and 23 TTABVUE. Cancellation No. 92063829 - 4 - Statement of Use uphold the registration of the OMNI Mark. 4. Should Respondents’ registration of the OMNI Mark be cancelled.5 Respondent, in its brief, identified the issues before the Board as follows: 1. Whether [Respondent’s predecessor-in-interest] had a bona fide intent to use the “OMNI” mark in commerce at the time she filed Application Serial No. 85/644,455. 2. Whether [Respondent’s predecessor-in-interest] made a bona fide use in commerce of the “OMNI” mark prior to expiration of the time for filing a Statement of Use. 3. Whether Penthouse World Media, LLC is the rightful owner of the OMNI Mark. 4. Whether a likelihood of confusion exists with respect to Petitioner’s purported common law rights in “OMNI” and “OMNI REBOOT.”6 Although Petitioner did not allege, in the Petition for Cancellation, that Respondent’s predecessor-in-interest did not make bona fide commercial use of the OMNI mark prior to filing the Statement of Use, Petitioner identified it as an issue in its brief. In addition, in the Board’s November 18, 2019 order denying Petitioner’s motion for summary judgment, we held that although this claim was not “specifically enumerated,” we found the parties treated the issue on the merits and deemed the petition amended by agreement of the parties.7 Because Respondent also identifies as an issue whether its predecessor-in-interest made bona fide use of the OMNI mark 5 Petitioner’s Brief, p. 3 (40 TTABVUE 9). 6 Respondent’s Brief, p. 2 (41 TTABVUE 8). 7 32 TTABVUE 1-2 n.2. Cancellation No. 92063829 - 5 - before filing the Statement of Use, we find that it was tried by implied consent pursuant to Rule 15(b)(2) of the Federal Rules of Civil Procedure. Accordingly, we deem the pleadings amended to conform to the evidence. Id. We turn now to the issue Petitioner identifies as “[d]id [Respondent’s predecessor- in-interest] use of the OMNI Mark (or lack thereof) following the filing of the Statement of Use uphold the registration of the OMNI Mark.” As best we understand Petitioner’s claim, Petitioner contends Respondent’s failure to make subsequent commercial use of the OMNI mark following the purported first use of the OMNI mark is fatal to Respondent’s claim that its predecessor made a bona fide use of the mark.8 Petitioner argues “that where, as here, the registrant makes only a single, exploratory use of the mark without any efforts to commercialize the mark shortly thereafter, there has been no bona fide use in commerce, warranting cancellation,” citing Hydro-Dynamics, Inc. v. George Putnam & Co., 811 F.2d 1470, 1 USPQ2d 1772, 1774 (Fed. Cir. 1987) (“a party may establish that a shipment in commerce was a bona fide commercial transaction by evidence of subsequent events.”); and Tao Licensing LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1055 (TTAB 2017) (the absence of any sales whatsoever under the mark for more than 2 years following Respondent’s sample-related activities underscores their preliminary nature (i.e., advisory consultation) rather than bona fide use in the ordinary course of trade).9 8 Petitioner’s Brief, pp. 20-21 (40 TTABVUE 26-27); Petitioner’s Reply Brief, p. 4-6 (42 (TTABVUE 9-11). 9 Petitioner’s Brief, p. 4 (40 TTABVUE 9). Cancellation No. 92063829 - 6 - Petitioner’s allegations regarding Respondent’s lack of activity following the purported first use of the OMNI mark is an amplification of why Respondent’s predecessor failed to make a bona fide use of the mark when she filed the Statement of Use rather than a separate claim. Finally, we turn to Petitioner’s likelihood of confusion claim. Petitioner did not refer to the likelihood of confusion claim in its brief. Nevertheless, as noted above, Respondent identified it as an issue and specifically argued that Petitioner failed to establish a prima facie case.10 In its reply brief, Petitioner argues, in essence, because Respondent failed to use the mark, Petitioner has priority and because the marks are identical and the goods and services are the same, there is a likelihood of confusion.11 In view of the foregoing, we find that the parties litigated the likelihood of confusion claim. In conclusion, we find that the issues in this proceeding are (i) whether Respondent’s predecessor had a bona fide intent to use the mark when she filed the underlying application, (ii) whether Respondent’s predecessor made a bona fide use of the mark when she filed the Statement of Use, and (iii) likelihood of confusion. II. The Record The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Respondent’s registration file that is the subject of the Petition for Cancellation. The parties introduced the testimony and evidence listed below: A. Petitioner’s testimony and evidence 10 Respondent’s Brief, pp. 16-18 (41 TTABVUE 22-24). 11 Petitioner’s Reply Brief, pp. 9-10 (42 TTABVUE 14-15). Cancellation No. 92063829 - 7 - 1. Notice of reliance on the discovery deposition of Pamela Weintraub, the applicant for the underlying application for the registration at issue;12 2. Notice of reliance on copies of documents and materials obtained through the Internet;13 3. Notice of reliance on Pamela Weintraub’s responses to Petitioner’s first set of interrogatories;14 4. Notice of reliance on Petitioner’s application Serial No. 85972230 for the stylized mark OMNI REBOOT and the notice suspending action on Petitioner’s application pending the disposition of Respondent’s application for the mark OMNI that became the registration at issue in this proceeding;15 5. The testimony declaration of Jeremy Frommer, Petitioner’s Chief Executive Officer.16 B. Respondent’s testimony Respondent introduced the testimony declaration of Pamela Weintraub. III. Statutory entitlement to a cause of action To establish entitlement to a statutory cause of action under Sections 13 or 14 of the Trademark Act, a plaintiff must demonstrate a real interest in the proceeding and a reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020); see also 12 36 TTABVUE 2-211. Petitioner improperly introduced a condensed version of the Pamela Weintraub discovery deposition. Trademark Rule 2.126(g)(1), 37 C.F.R. § 2.126(g)(1), provides “[t]he deposition transcript must be submitted in full-sized format (one page per sheet), not condensed (multiple pages per sheet).” 13 36 TTABVUE 212-295. 14 36 TTABVUE 296-319. 15 36 TTABVUE 320-327. 16 37 TTABVUE. Cancellation No. 92063829 - 8 - Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).17 To prove its statutory entitlement to a cause of action, Petitioner introduced evidence that the USPTO cited Respondent’s registration for the mark OMNI as a bar to the registration of Petitioner’s application Serial No. 85972230 for the stylized mark OMNI REBOOT, reproduced below.18 Evidence that the USPTO refused to register Petitioner’s application based on Respondent’s registration is sufficient to prove that Petitioner is entitled to a statutory cause of action under Section 2(d) of the Trademark Act. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) (“Thus, to have standing in this case, it would be sufficient that [plaintiff] prove that it filed an application and that a rejection was made because of [defendant's] registration.”); Tri-Star Mktg., LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB 17 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections 13 and 14 remain applicable. 18 Frommer Testimony Decl. ¶11 (37 TTABVUE 4); 36 TTABVUE 326-327. Cancellation No. 92063829 - 9 - 2007) (“petitioner has standing to bring the petition for cancellation based on the fact that its application to register [its mark] was refused registration by the office under Section 2(d) based on a likelihood of confusion with respondent's previously registered mark.”). Respondent, in its brief, did not challenge Petitioner’s statutory entitlement to bring a cause of action. Having established its standing with respect to its likelihood of confusion claim, Petitioner may assert any other legally sufficient ground as well, including that Respondent’s predecessor lacked a bona fide intent to use the mark when she filed the application and that Respondent’s predecessor failed make bona fide use of the mark when she filed the Statement of Use. See Poly-America, L.P. v. Ill. Tool Works Inc., 124 USPQ2d 1508, 1512 (TTAB 2017) (if petitioner can show standing on the ground of functionality, it can assert any other grounds, including abandonment); Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1479 (TTAB 2017) (standing established based on surname claim sufficient to establish standing for any other ground); Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1481 (TTAB 2017) (opposer established its standing as to genericness ground of certification mark and was entitled to assert any other ground). IV. Background Pamela Weintraub filed application Serial No. 85644455 for the mark OMNI, in standard character form, for “magazines in the field of science, fiction and fantasy,” in International Class 16, on June 6, 2012. She filed the application under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on her claim that she had a Cancellation No. 92063829 - 10 - bona fide intent to use the mark in commerce. The USPTO registered the OMNI mark on April 5, 2016, as Registration No. 4932689 now involved in this proceeding. Weintraub spent her working life in the publishing industry. She earned a Masters in Science Journalism from Boston University.19 During graduate school, Weintraub worked for a trade newspaper, Metal Working News.20 From 1982 through 1998, Weintraub worked at OMNI magazine as an editor. OMNI magazine “was a magazine of science fact and science fiction.”21 She eventually became the editor-in- chief of OMNI magazine.22 After she stopped working at OMNI magazine, Weintraub formed Event Horizon, a think tank for creating media companies.23 Through Event Horizon, Weintraub formed and worked for Tools for Health, a media company that morphed into a telephony company.24 Subsequently, she worked for Psychology Today and Discover Magazine.25 Weintraub was a senior editor, feature editor, and executive editor at Discover Magazine.26 In fact, she helped launch Discover 19 Weintraub Discovery Dep., p. 5 (36 TTABVUE 8). 20 Weintraub Discovery Dep., pp. 5-6 (36 TTABVUE 8-9). 21 Weintraub Discovery Dep. p. 15 (36 TTABVUE 11). 22 Weintraub Discovery Dep., pp. 6-7 (36 TTABVUE 9). 23 Weintraub Discovery Dep., p. 7 (36 TTABVUE 9). 24 Weintraub Discovery Dep., pp. 7-8 (36 TTABVUE 9). 25 Weintraub Discovery Dep., p. 8 (36 TTABVUE 9). 26 Weintraub Discovery Dep., p. 9 (36 TTABVUE 9). Cancellation No. 92063829 - 11 - Magazine.27 Weintraub currently works for AEON, a website in the field of science, culture, and “big ideas.”28 Pamela Weintraub is familiar with how the publishing industry works. Q. Is it fair to say you have a lot of experience working at publishing magazines? A. Yes. Q. So you are familiar with how the industry works? A. Yes, although with the caveat that the industry is always changing but I’m familiar with it. I worked in the industry.29 To support her bona fide intent to use the OMNI mark as of the filing date of the OMNI application, Weintraub testified, For many months prior to filing the ‘455 application, I had discussions with others, including my business partner, Corey Powell, concerning my intent to launch a magazine, website, and media enterprise under the “OMNI” mark. Exhibit 1 to this declaration consists of true and correct copies of a handful of emails, from before the ‘455 application was filed, which show my intent.30 27 Weintraub Discovery Dep., p. 34 (36 TTABVUE 16). Time, Inc. published Discover Magazine. Id. 28 Weintraub Discovery Dep., pp. 8-9 (36 TTABVUE 9). 29 Weintraub Discovery Dep., p. 9 (36 TTABVUE 9). 30 Weintraub Testimony Decl. ¶3 and Exhibit 1 (39 TTABVUE 2 and 5-12). Weintraub further testified that in 2015, “I continued to hone our plan with my partner [Corey Powell] who was working with me.” Weintraub Discovery Dep., p. 20 (36 TTABVUE 12). At that time, only Weintraub and Powell had an equity stake in the venture. Id. Even as late as December 2015, Weintraub and Powell were the only people with an equity stake in the venture. Id. at p. 42 (36 TTABVUE 19). Cancellation No. 92063829 - 12 - Corey Powell “is a science journalist who was the editor of Discover Magazine.”31 Respondent identified Corey Powell as having information regarding the subject matter of this cancellation proceeding, including Respondent’s bona fide intent to use the mark when Weintraub filed the application.32 After the USPTO published for opposition the OMNI mark, the USPTO issued a Notice of Allowance on January 22, 2013. The time for filing a Statement of Use was extended, and ultimately allowed Weintraub until January 22, 2016 to make use of the OMNI mark in commerce. In July 2015, Weintraub continued to hone the plans for OMNI magazine with her partner Corey Powell.33 Throughout 2015, Weintraub compiled articles and artwork for two issues of OMNI magazine aiming for publication in early 2016.34 Weintraub worked through Alpha Cygni, Inc., a licensee. The principals of Alpha Cygni, Inc. are Weintraub, Corey Powell, Ellen Datlow, and Robert Killheffer.35 Although other publications previously published all of the articles appearing in the initial issues of 31 Weintraub Discovery Dep., p. 21 (36 TTABVUE 12). 32 Respondent’s response to Petitioner’s Interrogatory No. 1 (36 TTABVUE 303-304). Respondent also identified Weintraub, Ellen Datlow, and Robber Killheffer. 33 Weintraub Discovery Dep., p. 20 (36 TTABVUE 12). 34 Weintraub Testimony Decl. ¶7 (39 TTABVUE 3). 35 Respondent’s response to Petitioner’s interrogatory No. 7 (36 TTABVUE 309-310). Respondent also identified 3001 Media LLC, a licensee of Respondent, as having responsibility for publishing the magazine prior to Alpha Cygni, Inc. Id. Cancellation No. 92063829 - 13 - Respondent’s OMNI magazines, Weintraub edited the articles to bring them up-to- date.36 In addition, the OMNI magazines feature original artwork.37 Skin Cancer Foundation, a nonprofit organization, placed the only advertisements in the two print editions of OMNI magazine. Respondent did not charge Skin Care Cancer Foundation for placing the advertisements in the magazines. Weintraub’s husband works for the Skin Cancer Foundation.38 Weintraub created two issues of OMNI magazine, Spring and Winter, during her Christmas break from her job at AEON.39 On January 4, 2016, Weintraub ordered 500 print copies of OMNI magazine: 250 copies for the two issues.40 The issues were SIP models of print magazines. A SIP is a special edition bookazine that is on a particular topic. And that’s what these were, one was just fiction and one was just interviews, and we modeled them after the SIP. So it would be not unusual in the SIP business to do it like this.41 It is normal to print multiple issues of SIP-type publications and distribute them at the same time.42 36 Respondent’s response to Petitioner’s interrogatory Nos. 10-12 (36 TTABVUE 312-313); Weintraub Discovery Dep., pp. 23-24 (36 TTABVUE 13). 37 Weintraub Discovery Dep., p. 23 (36 TTABVUE 13) (“we commissioned it.”). 38 Weintraub Discovery Dep., pp. 24-25 (36 TTABVUE 13). 39 Weintraub Discovery Dep., p. 40 (36 TTABVUE 17). 40 Weintraub Testimony Decl. ¶8 (39 TTABVUE 3); Respondent’s response to Petitioner’s interrogatory No. 13 (36 TTABVUE 313-314). 41 Weintraub Discovery Dep., p. 62 (36 TTABVUE 23). 42 Weintraub Discovery Dep., p. 60 (36 TTABVUE 22). Cancellation No. 92063829 - 14 - Q. But normally when you have a, say spring issue of a magazine, that issue would be released in spring or short before, correct? A. Well, that was our intent for these issues to be released in a sequential way and we, did view these more like -- and print OMNI in general as an SIP, which is like a bookazine. Q. Again, typically a winter issue of a magazine would be printed and distributed in winter or shortly before, correct? A. You know, usually magazines run with a three month, a three month lag, so that you would normally actually do a winter, you would actually have the winter issue printed in like - - October. That’s typical of the way a magazine would function. … And the bookazine people, the SIP people, they always do these multiples. They do like Animal Mind 1, Animal Mind 2, it’s very conventionally done these days.43 Weintraub intended the release to be a “test run” as a “soft launch” to measure enthusiasm for the magazine. Q. What do you mean by test run? A. I meant that we were going to put it out there and, you know, and get magazines out and try to build, you know, enthusiasm and work with some of these bookstores that we knew and publish a small print run of OMNI. It was within our, that was within our budget of our own investment. Q. So this was essentially like an exploratory run of what OMNI print magazine would look like? 43 Weintraub Discovery Dep., pp. 60-61 (36TTABVUE 22). Cancellation No. 92063829 - 15 - A. It was a soft launch. I would say, within our means. It was a launch within our means.44 ___ Q. …[Y]ou’re going to do a very, very small first run of about 200 copies for the tri-state area just to see how it flies? A. Yes. Q. What did you mean by just to see how it flies? A. I wanted to see is there really – like I really felt there was a lot of enthusiasm for OMNI, and especially for us to do an authentic OMNI. … I wanted to see if there was enthusiasm for this. Q. So you were exploring whether or not this was going to be a viable – A. This was a launch and, like I said, it was a soft launch that we did within or own means. So it was small because we were just using, we were just investors in ourselves.45 ___ Q. When you write to gauge interest, would you describe this as exploratory? A. Well, we were trying to get the, we were trying to see the enthusiasm out there. I would say this was a marketing, it was a marketing tool to inspire enthusiasm and for us to see the enthusiasm.46 Since the launch was to gauge enthusiasm for a science magazine, Weintraub did not charge the bookstores for the magazines. 44 Weintraub Discovery Dep., pp. 26-27 (36 TTABVUE 14). 45 Weintraub Discovery Dep., p. 43-44 (36 TTABVUE 18). 46 Weintraub Discovery Dep., p. 77 (36 TTABVUE 26). Cancellation No. 92063829 - 16 - Q. … [W]e are not charging for this OMNI, it’s totally free. A. Well, we were planning to let the, we had a price on it, and we were going to let the stores sell it, but they could keep the money, and we were just -- this was a marketing, getting the word out, you know, seeing the enthusiasm, that’s what this was for us.47 ___ A. … this was intended to be the launch of a much bigger plan.48 ___ Q. So in order to do a real proper relaunch, you would need to have significantly more funding? A. In order to do a large-scale relaunch, and in order to create in order to relaunch a media company, you would need, we would need our funder to come through for us.49 On January 13, 2016, Weintraub shipped the two issues of OMNI magazine via Federal Express to bookstores in five states: Delaware, New Hampshire, Minnesota, Oregon, and California. She also delivered copies of the two issues of OMNI magazine to bookstores in New York.50 This was a small launch. Q. Would you say that this is an unusually small run for the launch of a magazine? A. No. I would say that it was very targeted to specific fan bases. It was within our budget, this is what we could do. 47 Weintraub Discovery Dep., p. 45 (36 TTABVUE 18). 48 Weintraub Discovery Dep., p. 46 (36 TTABVUE 19). 49 Weintraub Discovery Dep., p. 49 (36 TTABVUE 19). 50 Weintraub Testimony Decl. ¶9 and Exhibit 4 (39 TTABVUE 3 and 23-31); Respondent’s response to Petitioner’s Interrogatory No. 6 36 (TTABVUE 309) (“The Magazine was first printed on January 7, 2016 and first available for purchaser on or before January 13, 2016.”). Cancellation No. 92063829 - 17 - Q. Sure. A. So if any investor had come through at this point, I would have done a bigger run. But this is just what we could afford with our own investment in ourselves.51 ___ Q. But you would agree that the sample run that you were anticipating was much, much smaller than what was done for Discover Magazine? A. Of course it was smaller. How could you not -- yes, it was smaller.52 ___ Q. So if this exercise, let’s say that there was a lot of enthusiasm for the magazine, that would have helped you to get funding to do a larger launch, would that be correct? A. To continue our launch so that would, yeah, on a bigger scale, yes yes. Despite purportedly receiving favorable feedback,53 Weintraub did not immediately distribute additional copies or issues of the magazine or “bookazine” to any bookstores.54 However, in 2016, “we bought the URL OMNImagazine.com and we took on two new partners [Ellen Datlow and Robert Killheffer] who invested in 51 Weintraub Discovery Dep., pp. 33-34 (36 TTABVUE 15-16). 52 Weintraub Discovery Dep. p. 36 (36 TTABVUE 16). “I’m aware that Discover when it launched, it had hundreds of thousands of copies and now we’re doing 200 and 200.” Id. at p. 47 (36 TTABVUE 19). 53 Weintraub Discovery Dep., pp. 80 and 83 (36 TTABVUE 27-28). 54 Weintraub Discovery Dep., pp. 82 and 97 (36 TTABVUE 28 and 31). Cancellation No. 92063829 - 18 - us.”55 “We created a website that was very, very rich and robust” as “an addition” to the “bookazine” “because a media brand is not one thing today.”56 As noted above, after the OMNI registration issued, Weintraub assigned the mark and registration to Alpha Cygni, Inc. and Alpha Cygni, Inc. assigned the mark and registration to Penthouse Global Media, Inc. In the fall of 2017, approximately 20 months after Respondent’s first use of the OMNI mark, Penthouse Global Media “printed and distributed throughout the United States and Canada 100,000 copies of another OMNI magazine issue.”57 V. Whether Pamela Weintraub had a bona fide intent to use OMNI when she filed her application? As noted above, both parties identified as an issue whether Pamela Weintraub had a bona fide intent to use the OMNI mark when she filed the application. However, in its brief, Petitioner did not expressly argue that Pamela Weintraub did not have a bona fide intent to use OMNI when she filed the application. For example, ● In its “Preliminary Statement,” Petitioner explains, “the intent-to-use trademark application filed by Respondent Pamela Weintraub ( ‘Weintraub’) for the OMNI Mark was void ab initio because the OMNI Mark was never used in commerce at the time the Statement of Use was filed.”58 Petitioner does not refer to whether Weintraub had a bona fide intent to use the mark when she filed the application; 55 Weintraub Discovery Dep., p. 95 (36 TTABVUE 31). 56 Weintraub Discovery Dep., pp. 96-97 (36 TTABVUE 31). 57 Weintraub Testimony Decl. 13 (39 TTABVUE 4); Weintraub Discovery Dep., p. 83 (36 TTABVUE 28). 58 Petitioner’s Brief, p. 1 (40 TTABVUE 7). Cancellation No. 92063829 - 19 - ● Petitioner’s discussion regarding “Weintraub’s Registration of the OMNI Mark,” does not refer to whether Weintraub had a bona fide intent to use the mark;59 and ● In its “Legal Argument,”60 Petitioner argues, “it is incontrovertible that Weintraub did not make use of the OMNI Mark in commerce by the date the Statement of Use was filed,”61 without referring to whether Weintraub had a bona fide intent to use the mark when she filed the application.62 Nevertheless, Respondent argued, “Ms. Weintraub had a bona fide intent to use the OMNI mark in commerce at the time she filed the ‘455 Application.”63 Here, for many months prior to filing the ‘455 Application, Ms. Weintraub had discussed with others, including her business partner, Corey Powell, concerning her intent to launch a magazine, website, and media enterprise under the OMNI Mark. (39 TTABVIEW at p. 1, ¶ 3 & Ex. 1.) Petitioner has introduced no evidence to dispute Ms. Weintraub’s pre-filing intent and presents no argument that Ms. Weintraub lacked a bona fide intent prior to filing the ‘455 Application. Even if the Board finds that Ms. Weintraub’s pre-filing emails are insufficient to demonstrate her intent, she can also prove a bona fide intention to use the OMNI Mark with evidence that she had some experience in the field of magazine publishing in the past and had the immediate 59 Petitioner’s Brief, pp. 7-8 (40 TTABVUE 13-14). 60 Petitioner’s Brief, pp. 15-24 (40 TTABVUE 21-30). 61 Petitioner’s Brief, p. 15 (40 TTABVUE 21). 62 In arguing that Weintraub never made bona fide commercial use of the OMNI mark, Petitioner contends that Weintraub’s pre-filing emails regarding her intent to use the OMNI mark are mere proclamations that do not confer trademark rights especially when she did nothing to commercialize the magazine thereafter. Petitioner’s Brief, pp. 22-23 (40 TTABVUE 28-29). 63 Respondent’s Brief, p. 14 (41 TTABVUE 14). Cancellation No. 92063829 - 20 - ability to market the goods or services listed in the application.64 In its Reply Brief, Petitioner reiterated that Weintraub failed to make bona fide commercial use of the OMNI trademark without referring to whether Weintraub had a bona fide intent to use the mark when she filed the application. Generally, when a plaintiff fails to pursue a claim in its brief, we deem that claim waived. See Alcatraz Media, Inc. v. Chesapeake Marine Tour Inc., 107 USPQ2d 1750, 1753 (TTAB 2013) (petitioner’s pleaded descriptiveness and geographical descriptiveness claims not argued in brief deemed waived); aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Knight Textile Corp. v. Jones Inv. Co., 75 USPQ2d 1313, 1341 n.4 (TTAB 2005) (pleaded dilution ground not pursued on brief deemed waived). In this case, however, we consider whether Weintraub had a bona fide intent to use the mark in commerce when she filed the application because both parties identified it as an issue and Respondent expressly addressed that issue in its brief.65 With the exception of the Weinstraub emails inquiring as to investors in the magazine and the availability of the mark, Respondent did not introduce any documents probative of Weintraub’s intent to the use OMNI trademark prior to her filing the underlying application. “[A]bsent other facts which adequately explain or outweigh the failure of an applicant to have any documents supportive of or bearing 64 Respondent’s Brief, p. 9 (41 TTABVUE 15). 65 As noted above, Pamela Weintraub testified that she “had discussions with others, including my business partner, Corey Powell, concerning my intent to launch a magazine, website, and media enterprise under the OMNI mark.” Weintraub Testimony Decl. ¶3 and Exhibit 1 (39 TTABVUE 2 and 5-12). Respondent referred to that testimony in its brief. Respondent’s Brief, p. 9 (41 TTABVUE 15). Cancellation No. 92063829 - 21 - upon its claimed intent to use its mark in commerce, the absence of any documentary evidence on the part of an applicant regarding such intent is sufficient to prove that the applicant lacks a bona fide intention to use its mark in commerce as required by Section 1(b).” Commodore Elect. Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993). See also Societé des Produits Nestlé S.A. v. Cándido Viñuales Taboada, 2020 USPQ2d 10893, *8 (TTAB 2020) (quoting Research in Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1930 (TTAB 2009). However, the sparseness of documentary evidence does not ipso facto prove that Pamela Weintraub did not have a bona fide intent to use the mark when she filed the underlying application. Societé des Produits Nestlé S.A., 2020 USPQ2d at *8-9 (“The absence of documentary evidence, however, must be considered in context of the evidentiary record as a whole.”). The Board determines whether an applicant has a bona fide intention to use the mark in commerce on a case-by-case basis considering the totality of circumstances, and requires objective evidence of intent. Although the evidentiary bar is not high, the circumstances must indicate that the intent to use was firm and not merely an intent to reserve a right in the mark. M. Z. Berger & Co. v. Swatch AG, 787 F.2d 1368, 114 USPQ2d 1892, 1898 (Fed. Cir. 2015). See also Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008); Lane Ltd. v. Jackson Int’l Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994) (“the determination of whether an applicant has a bona fide intention to use the mark in commerce is to be a fair, objective determination based on all the circumstances”). Cancellation No. 92063829 - 22 - The evidence necessary to support finding a bona fide intent to use differs in each case, depending on the circumstances. Honda Motor Co. v. Winkelmann, 90 USPQ2d 1660, 1664 (TTAB 2009). The Board considers the evidence as a whole, and any clear interrelationships that exist between the several pieces of evidence of record, to determine whether the evidence, in its totality, establishes a bona fide intent to use the mark for the identified goods. Cf. West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994). As noted above, Pamela Weintraub has extensive experience in the publishing industry and is familiar with how it works.66 Weintraub spent her working life in the publishing industry.67 From 1982 through 1998, Weintraub worked at an earlier iteration of OMNI magazine as an editor.68 She eventually became the editor-in-chief of OMNI magazine.69 In addition, Weintraub was a senior editor, feature editor, and executive editor at Discover Magazine.70 In fact, she helped launch Discover Magazine.71 An applicant’s ability, capacity, resources, and knowledge with respect to producing or providing the goods claimed in its application is an important consideration in a determination of an applicant’s bona fide intent to use a mark. See 66 Weintraub Discovery Dep., p. 9 (36 TTABVUE 9). 67 Weintraub Discovery Dep., p. 5 (36 TTABVUE 8). 68 Weintraub Discovery Dep. p. 15 (36 TTABVUE 11). 69 Weintraub Discovery Dep., pp. 6-7 (36 TTABVUE 9). 70 Weintraub Discovery Dep., p. 9 (36 TTABVUE 9). 71 Weintraub Discovery Dep., p. 34 (36 TTABVUE 16). Time, Inc. published Discover Magazine. Id. Cancellation No. 92063829 - 23 - Swatch AG (Swatch SA) (Swatch Ltd.) v. M. Z. Berger & Co., 108 USPQ2d 1463, 1477 (TTAB 2013), aff’d, M. Z. Berger & Co. v. Swatch AG, 114 USPQ2d 1892; Wet Seal, Inc. v. FTD Mgt., Inc., 82 USPQ2d 1629, 1643 (TTAB 2007) (“it is clear from Mr. Rolleston’s testimony that applicant had the capacity to market and/or manufacture shampoos and color products, having produced them in the past under different marks, which would tend to affirmatively rebut any claim by opposer regarding applicant's intent.”). Cf. Lincoln Nat’l Corp. v. Anderson, 110 USPQ2d 1271, 1278 (TTAB 2014) (applicant did not to have the ability, resources, or knowledge to provide his broadly identified services and thus lacked bona fide intent to use). An applicant ’s previous capacity to market or manufacture the identified goods is evidence that weighs against a finding that an applicant lacked bona fide intent to use. Swatch, 108 USPQ2d at 1477. Under the circumstances, the record falls far short of demonstrating by a preponderance of the evidence that Weintraub lacked a bona fide intention to use the mark in connection with the identified magazine at the time she filed the underlying application. We deny the claim in the Petition for Cancellation that Respondent did not have a bona fide intent to use the mark in commerce with Respondent’s predecessor-in-interest filed the underlying trademark application. For purposes of completeness, we turn to whether Pamela Weintraub made a bona fide use of the OMNI mark when she filed the Statement of Use. This analysis presupposes that Pamela Weintraub was the proper applicant for the OMNI Cancellation No. 92063829 - 24 - trademark and that she had a bona fide intent to use the mark on her own when she filed the application. VI. Whether Pamela Weintraub made a bona fide use of the OMNI mark when she filed the Statement of Use. “It is clear that an applicant cannot obtain a registration under Section 1 of the Trademark Act for goods or services upon which it has not used the mark. 15 U.S.C. 1051.” Tao Licensing, 125 USPQ2d at 1051 (quoting Grand Canyon West Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1698 (TTAB 2006)). The Trademark Act provides that “[t]he term ‘use in commerce’ means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. 1127; see also Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986, 120 USPQ2d 1640, 1642 (Fed. Cir. 2016) (providing an overview of the statutory use in commerce requirement); Tao Licensing, 125 USPQ2d at 1051; Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1773-75 (TTAB 1994) (reviewing the legislative history), aff'd without published opinion, White v. Paramount Pictures Corp., 108 F.3d 1392 (Fed. Cir. 1997) (opinion available at 1997 WL 76957). In other words, bona fide commercial use is a type of use common to the particular industry in question. See Paramount Pictures, 31 USPQ2d at 1774. The Trademark Act further specifies that a trademark is used in commerce when the goods bearing the mark “are sold or transported in commerce.” 15 U.S.C. 1127. Thus, a sale is not required. Petitioner contends that Respondent did not make bona fide commercial use of the OMNI mark. Weintraub produced two slapdash test issues of a magazine that she distributed, for free (without any Cancellation No. 92063829 - 25 - attempts to sell), as part of her attempt to give an appearance of use in commerce to support a Statement of Use filing. Thereafter, Weintraub did nothing to commercialize the OMNI Mark. She never again printed or distributed any copies of the sample edition she put together from previously published articles and never published any new material.72 ___ Weintraub’s token, one-time shipment of a magazine with regurgitated content, for free, without any attempt -- either before the Statement of Use filing deadline or thereafter -- to sell or even attempt to sell a single magazine, advertisement, or otherwise make any commercial use of the Omni Mark, is completely insufficient to uphold her registration of the OMNI Mark.73 Respondent argues to the contrary. Here, Ms. Weintraub used the OMNI Mark “in commerce.” Specifically, on January 13, 2016, prior to the filing of the Statement of Use, Ms. Weintraub distributed four hundred OMNI magazines bearing the OMNI Mark to several bookstores in six states.74 ___ According to Ms. Weintraub, who has an abundance of experience in the magazine publishing business (36 TTABVIEW at Ex. A, p. 2-3), it was not unusual in the magazine publishing industry of 2016 to launch a magazine with four hundred magazines (36 TTABVIEW at Ex. A, pp. 9-10).75 The issue is whether Weintraub’s simultaneous distribution, at no cost, of two issues of 200 copies of OMNI magazine on January 13, 2016, nine days before the due date for the Statement of Use, was for legitimate commercial purposes in the ordinary 72 Petitioner’s Brief, p. 1 (40 TTABVUE 7). 73 Petitioner’s Brief, p. 2 (40 TTABVUE 8). 74 Respondent’s Brief, p. 11 (41 TTABVUE 17). 75 Respondent’s Brief, p. 12 (41 TTABVUE 18). Cancellation No. 92063829 - 26 - course of trade or were they token distributions to reserve the mark for registration. If the distributions were for legitimate marketing or other commercially reasonable reasons in the ordinary course of trade (i.e., genuine use of the mark), then we must find that the distributions constitute bona fide use of the mark in commerce. Depending on the particular facts and industry practice, some types of promotional activities, such as distributing samples, may qualify as use in commerce. See Automedx, Inc. v. Artivent Corp., 95 USPQ2d 1976, 1981 (TTAB 2010) (observing that “[u]se in commerce should be interpreted with flexibility to account for different industry practices.”); McDonald’s Corp. v. McKinley, 13 USPQ2d 1895, 1898 n.6 (TTAB 1989) (actual sales are not required for statutory use in commerce) (citing Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983) (balloons given away as promotional items). The determination is a fact-based inquiry as to whether the activity in question is bona fide use in the ordinary course of trade. Tao Licensing, 125 USPQ2d at 1054; Paramount Pictures, 31 USPQ2d at 1774. Pamela Weintraub has extensive experience in the publishing industry, including participating in the launch of Discover Magazine, owned by Time, Inc.76 Petitioner, itself, adduced during the Weintraub discovery deposition that Ms. Weintraub is familiar with how the publishing industry works.77 Petitioner did not proffer any countervailing testimony or evidence regarding standards and practices in the publishing industry thereby leaving Weintraub’s testimony unchallenged. Thus, we 76 Weintraub Discovery Dep., p. 34 (36 TTABVUE 16). 77 Weintraub Discovery Dep., p. 9 (36 TTABVUE 9). Cancellation No. 92063829 - 27 - accept that publishers may distribute multiple issues of publications as Weintraub did when she first used the OMNI trademark.78 The small number of magazines comprising the two issues distributed by Weintraub does not disqualify Weintraub’s distribution as a bona fide commercial use. See Christian Faith Fellowship, 120 USPQ2d at 1641 (holding the sale of two hats in interstate commerce sufficient to support the requisite use in commerce). As noted above, “use in commerce” means the bona fide use of a mark in the ordinary course of business. See Paramount Pictures, 31 USPQ2d at 1774. Thus, even a single sale or shipment of a product under a mark may be sufficient to lay a foundation for registration provided the initial transaction is bona fide in nature and followed by activities indicating a continuing effort to place the product on the market on a commercial scale within a reasonable time. Id. Petitioner points out that the two issues of OMNI magazine that Weintraub prepared and distributed did not contain any original articles; they simply reprinted materials from prior versions from the earlier incarnation of OMNI magazine.79 Petitioner did not proffer any testimony or evidence that reprinting articles is unacceptable, improper, or otherwise frowned upon in the publishing industry. Nothing in the record disqualifies Weintraub’s OMNI magazines featuring previously published articles as being in bona fide commercial use. 78 Weintraub Discovery Dep., pp. 60-61 (36 TTABVUE 22) (“That’s typical of the way a magazine would function” and “the SIP people, they always do these multiples. … it’s very conventionally done these days.”); id. at p. 62 (36 TTABVUE 23) (“it would be not unusual in the SIP business to do it like this.”). 79 Weintraub Discovery Dep., pp. 23 (36 TTABVUE 13). Cancellation No. 92063829 - 28 - The two issues of OMNI magazine that Weintraub prepared and distributed were a test run, given away free to gauge interest and determine the viability of the science magazine.80 Petitioner contends that exploratory use of the magazine to determine its commercial viability is not sufficient to support finding a bona fide commercial use, citing Tao Licensing, 125 USPQ2d at 1055 (“We find Mr. Bender’s sharing of these samples with the three parties was more in the nature of a preliminary advisory consultation than bona fide use of the TAO VODKA mark in the ordinary course of trade. Thus, Respondent failed to make the requisite use of the mark in commerce prior to the Statement of Use deadline.”); and Hydro-Dynamics, Inc. v. George Putnam & Co., 811 F.2d 1470, 1 USPQ2d 1772, 1774 (Fed. Cir. 1987) (box of samples sent interstate to an independent distributor did not qualify as use in commerce, even though the distributor sold the samples to customers, because the purpose of the shipment was an “advisory consultation on the merits of a proposed trademark”) .81 The facts in Tao Licensing are not analogous to the facts before us. In Tao Licensing, respondent’s witness lacked credibility. Tao Licensing, 125 USPQ2d at 1053. Respondent’s principal distributed two or three complimentary bottles of vodka to three entities, one of whom was a shareholder in a related company. Tao Licensing, 125 USPQ2d at 1054. A distribution within an organization does not constitute public use of a mark. Id. The distribution to a second entity “was a way to begin the process of finding out if we could actually solicit a distributor and create more product” “a 80 Weintraub Discovery Dep., pp. 44-46, 50-51, and 77-78 (36 TTABVUE 18-20 and 26-27). 81 Petitioner’s Brief, p. 17 (40 TTABVUE 23). Cancellation No. 92063829 - 29 - stepping stone into the first steps of being able to produce the product on a grander scale and be able to then resell it to distributors and importers.” Id. The Board held this to be preliminary and exploratory. Id. Indeed, based on those facts, the Board found that “Respondent was not yet using or even ready to use the mark in the ordinary course of trade, but was merely exploring such use at some point in the future.” Tao Licensing, 125 USPQ2d at 1055. In the case before us, Weintraub distributed 200 copies of two separate issues of OMNI magazine to bookstores in six states, not as a demonstration of what she was going to do, but as a finished product. Obviously, she launched the magazine when she did to secure the registration, but also to gauge the “enthusiasm” for the magazine to attract investors by establishing a record of accomplishment. Weintraub’s distribution of OMNI magazine was more than exploring use at some point in the future. Likewise, the facts in Hydro-Dynamics are not analogous to the facts before us in this case. In that case, the Board held that applicant did not adopt the mark at issue until after it sent a sample of the product to a distributor to obtain the distributor’s opinion of the mark. The applicant did not adopt the mark until after distributor’s favorable reaction. Hydro-Dynamics, 1 USPQ2d at 1774. In this case, Weintraub had adopted the mark and then distributed 200 copies of two issues of OMNI magazine to gauge the enthusiasm for the magazine, not the enthusiasm of the mark. We disagree with the premise of Petitioner’s argument that a “test run” of a product can never be a bona fide commercial use of a mark. Weintraub testified that Cancellation No. 92063829 - 30 - she was distributing the magazine, inter alia, to get magazines out and build enthusiasm.82 Weintraub distributed copies of OMNI magazine to test and evaluate the viability of a science magazine to decide whether there was a market interested in buying a more significant number of magazines in the future. This permitted Weintraub to refine the product to make it commercially attractive, a legitimate commercial purpose. Q. So if this exercise, let’s say that there was a lot of enthusiasm for the magazine, that would have helped you to get funding to do a larger launch; would that be correct? A. To continue our launch so that would, yeah, on a bigger scale, yes, yes.83 ___ Q. So if you distributed 400 total copies … and the bookstores couldn’t give them away for free, would that have affected whether or not you continued with the business of producing and publishing OMNI magazine? A. No, it might have made me tweak my strategy. Q. In what way? A. I might have tried, you know, these were in the style of these bookazines, these SIPs. I might have tried a different kind of theme.84 Petitioner further contends that Weintraub’s failure to produce or distribute any copies of OMNI magazine after January 2016 distribution “underscores that the prior 82 Weintraub Discovery Dep., pp. 26-27, 43-44, 77 (36 TTABVUE 14, 18, 26). 83 Weintraub Discovery Dep., p. 78 (36 TTABVUE 27). 84 Weintraub Discovery Dep., pp. 79-80 (36 TTABVUE 27). Cancellation No. 92063829 - 31 - ‘test run’ was nothing more than an exploratory use of the mark and cannot satisfy the requisite bona fide ‘use in commerce.’”85 Petitioner asserts Respondent did not introduce any testimony or evidence that Weintraub did anything with the OMNI mark after January 2016 until she sold her purported rights to Respondent 18 months later.86 Petitioner relies on Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1306 (Fed. Cir. 2009) (“This ‘bona fide use’ language was intended to eliminate ‘token uses,’ which occurred when applicants used marks in conjunction with selling goods or offering services for the sole purpose of obtaining registration, and with no intention of legitimately using the mark in commerce until a later date.”); and Tao Licensing, 125 U.S.P.Q.2d at 1055 (“The absence of any sales whatsoever under the mark for more than 2 years following Respondent's sample-related activities underscores their preliminary nature.”). Weintraub did not sit idle after distributing the OMNI magazines in January 2016. After the January launch of OMNI bookazine, Weintraub registered the domain name OMNImagazine.com, added Ellen Datlow and Robert Killheffer as partners, and met with Kickstarter.87 Subsequently, the new partnership sold their entire right, title, and interest in the OMNI mark and magazine to Penthouse Global Media, 85 Petitioner’s Brief, p. 19 (40 TTABVUE 25). 86 Petitioner’s Brief, p. 20 (40 TTABVUE 26), citing, Weintraub Discovery Dep., pp. 87 and 97 (36 TTABVUE 29 and 97 ). 87 Weintraub Discovery Dep., pp. 94-96 (36 TTABVUE 31). “Kickstarter, that’s a website that’s used to fund projects.” Id. at pp. 54-55 (36 TTABVUE 21). Cancellation No. 92063829 - 32 - Inc. Shortly thereafter, Penthouse Global Media distributed 100,000 copies of OMNI magazine.88 The Weintraub, Powell, Datlow, and Killheffer “partnership” created a website to complement the magazine.89 Q. Did you prepare any additional contents for the magazine in terms of - - A. The website or the magazine. Q. The print magazine. A. We turned our focus, we created an extremely robust website. We had permission from the past writers of OMNI, including some of the world’s most famous science fiction writers to use their material. We created a website on OMNImagazine.com that was very, very rich and robust, that’s what we turned our attention to. We continued to try to get investment. So it’s not that our attention shifted, but we were able to do the website with the funding that we had. You asked if that funding was enough to do another print magazine, so we needed, we continued to try to get more funding, and we created a website to go with the magazine. Q. So after you published the magazine, the focus shifted to the website? A. I wouldn’t say it was a shift so much as it was an addition, do you know what I’m saying, because a media brand is not one thing today.90 88 Weintraub Testimony Decl. 13 (39 TTABVUE 4); Weintraub Discovery Dep., p. 83 (36 TTABVUE 28). 89 Weintraub Discovery Dep., p. 96 (36 TTABVUE 31). 90 Weintraub Discovery Dep., pp. 96-97 (36 TTABVUE 31). Cancellation No. 92063829 - 33 - Petitioner understands the import of Weintraub’s testimony because the USPTO refused to register Petitioner’s application for OMNI REBOOT, for inter alia, “providing a website featuring blogs and non-downloadable publications in the nature of magazines and journals in the field of science fact, science fiction, fantasy, the occult and the paranormal” and because Petitioner filed this Petition for Cancellation alleging, inter alia, that Respondent’s magazines are related to Petitioner’s website. The new partners, Ellen Datlow and Robert Killheffer, brought substantial experience and, presumably, legitimacy to the new OMNI venture. Ellen Datlow was a former editor of OMNI and a preeminent editor of short fiction.91 Ellen is a super star of the science fiction world, and she has spoken to all of these bookstores and she knows them. She knows the people that run them, and she knows which ones are really good, so we contacted the ones she told us to.92 Robert Killheffer was a former senior editor of OMNI Magazine. Killheffer and Weintraub were co-founders of Event Horizons (a think tank for creating media companies),93 Tools for Health (a media company that morphed into a telephony company),94 and LiveVox.95 These activities took place while Petitioner threatened litigation.96 Petitioner filed this Petition for Cancellation on May 31, 2016, 56 days after the registration issued 91 Weintraub Discovery Dep., pp. 44-45 (36 TTABVUE 18). 92 Weintraub Discovery Dep., p. 56-57 (36 TTABVUE 21). 93 Weintraub Discovery Dep., p. 7 (36 TTABVUE 9). 94 Weintraub Discovery Dep., pp. 7-8 (36 TTABVUE 9). 95 Weintraub Discovery Dep. p 95 (36 TTABVUE 31). 96 Weintraub Discovery Dep., pp. 97-101 (36 TTABVUE 31-32). Cancellation No. 92063829 - 34 - and five months after the first use of the OMNI mark at issue. The cancellation proceeding and threat of Petitioner’s potential litigation affected Respondent’s ability to publish additional issues of OMNI magazine.97 Weintraub specifically testified that they did not want to get others involved in a litigation,98 “this threat of litigation just became a lot for us to handle,”99 and it discouraged investors.100 “[I]f somebody is suing you and nobody can move, you know, it’s a very uncomfortable situation.”101 Petitioner’s Petition for Cancellation and threat of litigation effected Respondent’s ability to move forward and constitutes excusable nonuse. Cf. Pet Inc. v. Bassetti, 219 USPQ 911, 915 (TTAB 1983) (“There are some cases holding that commercial inactivity may be justified based on the fear that continued sales would risk involvement in a civil action for trademark infringement.”); Penthouse Int’l, Ltd. v. Dyn Elect., Inc., 196 USPQ 251, 257 (TTAB 1977) (“nonuse of a mark pending the outcome of litigation to determine the right to such use or pending the outcome of a party’s protest to such use constitutes excusable nonuse sufficient to overcome any inference of abandonment.”); Monorail Car Wash, Inc. v. McCoy, 178 USPQ 434, 439 (TTAB 1973) (“his delay in marketing the product on a commercial scale was largely occasioned by the institution of Patent Office proceedings wherein his right in and to the mark would be determined was excusable temporary nonuse.”). 97 Weintraub Discovery Dep., pp. 97-102 (36 TTABVUE 31-33). 98 Weintraub Discovery Dep., pp. 98-99 (36 TTABVUE 32). 99 Weintraub Discovery Dep., p. 101 (36 TTABVUE 32). 100 Weintraub Discovery Dep., p. 101 (36 TTABVUE 32). 101 Weintraub Discovery Dep., p. 102 (36 TTABVUE 33). Cancellation No. 92063829 - 35 - Under the existing marketing circumstances, including the filing of this Petition for Cancellation and Petitioner’s threat of litigation, Respondent’s activities after the initial distribution of OMNI Magazine demonstrate that Respondent’s initial distribution of the magazines and subsequent activities are legitimate continuous commercial activities. Finally, Petitioner contends, “the lack of any ordinary business records (e.g., invoices, purchase orders, etc.) for the sample issues demonstrates that it was never intended as a true ‘re-launch’ of OMNI and there was never any bona fide use in commerce.”102 As noted above, the sparse documentary evidence does not ipso facto prove that Respondent’s January 2016 distribution of 200 copies of two issues of OMNI magazine was not bona fide commercial use. At issue is whether Weintraub’s distribution of magazines was a commercial use of the type common to the publishing industry. Paramount Pictures, 31 USPQ2d at 1774. The determination is a fact-based inquiry as to whether the activity in question is bona fide use in the ordinary course of trade. Tao Licensing, 125 USPQ2d at 1054; Paramount Pictures, 31 USPQ2d at 1774. We evaluate Respondent’s use on a myriad of facts introduced by the parties. First, Respondent introduced the following documents to show that the use of the OMNI mark was a bona fide commercial use: ● An invoice from Graphic Lab for printing the copies of the magazine;103 102 Petitioner’s Brief, p. 23 (40 TTABVUE 29). 103 Weintraub Testimony Decl. ¶3 (39 TTABVUE 22). Cancellation No. 92063829 - 36 - ● Federal Express shipping labels and payment receipts for distributing the magazines;104 and ● Excerpts from the OMNI magazines.105 Second, Weintraub’s testimony regarding the first use of the OMNI magazine trademark and subsequent activities, recounted above, is clear, precise, and uncontradicted. Compare Stawski v. Lawson, 129 USPQ2d 1036 (TTAB 2018) (“The presence of business records would strengthen the case that these transactions occurred in the ordinary course of trade, and the absence of such records does the opposite. Here, Applicant’s vague, equivocal, mostly undated evidence of distributing samples is deficient, as it fails to prove bona fide use in the ordinary course of trade.”). We find that the documentary evidence and Weintraub’s testimony sufficient to prove that her January 2016 distribution of the OMNI magazines was bona fide commercial use of the OMNI trademark. We find that Pamela Weintraub made bona fide commercial use of the OMNI trademark. We deny the petition to cancel the registration on the ground that Respondent did not make bona fide commercial use of the mark prior to filing the Statement of Use. VII. Likelihood of Confusion Again, for purposes of completeness, we turn to the issue of likelihood of confusion. 104 Weintraub Testimony Decl. ¶4 (39 TTABVUE 24-31). 105 Weintraub Testimony Decl. ¶5 (39 TTABVUE 33-36). Cancellation No. 92063829 - 37 - A. Priority On August 16, 2013, Petitioner published its first article posted on the OMNI REBOOT website.106 For determining priority, Petitioner’s constructive use priority date is June 21, 2013, the date it filed its intent-to-use application to register its stylized OMNI REBOOT application. See Executive Coach Builders, Inc. v. SPV Coach Co., Inc., 125 USPQ2d 1175, 1180 (TTAB 2017); Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009); Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1288 (TTAB 2008). Respondent’s earlier constructive use date of June 6, 2012 establishes its priority. In the event Respondent could not rely on its constructive use date, we acknowledge that Petitioner would have priority. On January 13, 2016, Weintraub shipped the two issues of OMNI magazine via Federal Express to bookstores in five states: Delaware, New Hampshire, Minnesota, Oregon, and California. She also delivered copies of the two issues of OMNI magazine to bookstores in New York.107 Petitioner’s constructive date of first use, June 21, 2013, precedes Respondent’s January 13, 2016 date of first use. Therefore, in the event Respondent could not rely on its constructive use filing date, Petitioner would have proven that it has priority. B. Likelihood of Confusion We base our determination under Section 2(d) on an analysis of all of the probative 106 Frommer Testimony Decl. ¶7 (37 TTABVUE 3). 107 Weintraub Testimony Decl. ¶9 and Exhibit 4 (39 TTABVUE 3 and 23-31); Respondent’s response to Petitioner’s Interrogatory No. 6 36 (TTABVUE 309) (“The Magazine was first printed on January 7, 2016 and first available for purchaser on or before January 13, 2016.”). Cancellation No. 92063829 - 38 - 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). “In discharging this duty, the thirteen DuPont factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019), quoting In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997), quoting DuPont, 177 USPQ at 567. “Not all of the DuPont factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018), quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). See also 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.”). “Each 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). 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 Cancellation No. 92063829 - 39 - (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, 64 USPQ2d at 1380). 1. Similarity or dissimilarity of the marks. We turn first to the DuPont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d mem., 777 F. App’x 516 (Fed. Cir. Sept. 13, 2019)); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted). In comparing the marks, we are mindful that “[t]he proper test is not a side-by- side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Cancellation No. 92063829 - 40 - Inc., 127 USPQ2d at 1801 (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)). Petitioner’s mark is OMNI REBOOT in a stylized format reproduced below. Respondent’s mark is OMNI in standard character form. Marks presented in standard characters are not limited to any particular depiction. The rights associated with a mark in standard characters reside in the wording, and not in any particular display. Thus, Respondent may depict its mark in any manner, regardless of the font style, size, or color and, at any time in the future, display it in a manner similar to Petitioner’s mark. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909-11 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011); Squirtco v. Tomy Corp., 216 USPQ at 939 (rejecting argument that for purposes of determining whether two marks are similar, a mark in a typed drawing (equivalent to modern standard character format) is distinct from such mark in a logo format; “[b]y presenting its mark in a typed drawing, a difference cannot legally be asserted by that party” (emphasis in original)). In other words, Respondent may display its mark as reproduced below: Cancellation No. 92063829 - 41 - The word “Reboot” in Petitioner’s mark OMNI REBOOT does not distinguish the marks; rather, it reinforces the similarity in the meaning and commercial impression. THE RANDOM HOUSE UNABRIDGED DICTIONARY (2020) defines “Reboot” as, inter alia, “to produce a distinctly new version of (an established media franchise, as a film, TV show, video game, or comic book): The studio is rebooting Spider-Man.”108 Thus, Petitioner’s mark means and engenders the commercial impression that it is a new version of OMNI. We find Respondent’s OMNI mark is similar to Petitioner’s stylized mark OMNI REBOOT in appearance, sound, connotation and commercial impression. 2. Similarity or dissimilarity and nature of the goods and services. Petitioner is seeking to register its stylized OMNI REBOOT application is for the services listed below: On-line retail store services featuring downloadable magazines, books, posters, photographs, pictures, key chains, clothing, action figures, tote bags, and pin buttons; on-line retail store services featuring a wide variety of consumer goods of others; promoting the goods and services of others by preparing and placing advertisements in an electronic magazine or journal accessed through a global computer network, in International Class 35; and Multimedia publishing of magazines and electronic publications; providing a website featuring blogs and non- downloadable publications in the nature of magazines and journals in the field of science fact, science fiction, fantasy, the occult and the paranormal; providing on-line electronic publications in the nature of magazines in the field of science fact, science fiction, fantasy, the occult and the paranormal; providing educational and entertainment services, namely, exhibitions and panel discussions at 108 Dictionary.com accessed on October 13, 2020. Cancellation No. 92063829 - 42 - conventions, in the field of science fact, science fiction, fantasy, the occult and the paranormal, in International Class 41. The description of goods in Respondent’s registration is “magazines in the field of science, fiction and fantasy,” in International Class 16. Because Petitioner’s description of services “on-line retail stores featuring downloadable magazines” does not have any restrictions or limitations as to subject matter, it is broad enough to encompass on-line retail stores featuring downloadable magazines in the field of science, fiction and fantasy. We do not read limitations into descriptions of services. In re i.am.symbolic, 123 USPQ2d at 1748 (“the Board may not read limitations into an unrestricted registration or application.”); Squirtco, 216 USPQ at 940 (“There is no specific limitation and nothing in the inherent nature of Squirtco’s mark or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks. The Board, thus, improperly read limitations into the registration”); In re Thor Tech Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions or limitations into the registrant’s description of goods.”). Therefore, we must presume that Petitioner’s “on-line retail stores featuring downloadable magazines” includes all types of downloadable magazines, including magazines in the field of science, fiction and fantasy. “[T]here is no question that store services and the goods which may be sold in that store are related goods and services for the purpose of determining likelihood of confusion.” In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992). See also In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (“it has often been recognized that likelihood of confusion may arise where confusingly similar marks are used on Cancellation No. 92063829 - 43 - goods, on the one hand, and in connection with sales of such goods, on the other.”); Wet Seal,, 82 USPQ2d at 1639-40 (“It is settled that the likelihood of confusion may result from the use by different parties of the same or similar marks in connection with goods, on the one hand, and services which deal with or are related to those goods, on the other.”); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433, 435 (TTAB 1983) (“It is well recognized that confusion in trade is likely to occur from the use of similar or the same marks for goods and products on the one hand and for services involving those goods and products on the other.”). As the Court of Appeals for the Federal Circuit explained in In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988), a case involving furniture and general merchandise store services, Considering the facts (a) that trademarks for goods find their principal use in connection with selling the goods and (b) that the applicant's services are general merchandising- -that is to say selling--services, we find this aspect of the case to be of little or no legal significance. The respective marks will have their only impact on the purchasing public in the same marketplace. We find that Respondent’s “magazines in the field of science, fiction and fantasy” and Petitioner’s “on-line retail stores featuring downloadable magazines” are related. Under this DuPont factor, Petitioner need not prove, and we need not find, similarity as to each product listed in the description of services. It is sufficient for a refusal based on likelihood of confusion that we find any activity or item encompassed by the identification of goods or services in a particular class in the application and registration related. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, Cancellation No. 92063829 - 44 - 209 USPQ 986, 988 (CCPA 1981). See also In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). We now analyze Petitioner’s “providing on-line electronic publications in the nature of magazines in the field of science fact, science fiction, fantasy, the occult and the paranormal” and Respondent’s “magazines in the field of science, fiction and fantasy.” Petitioner’s services and Respondent’s products are essentially the same. The only difference between Petitioner’s “providing on-line electronic publications in the nature of magazines in the field of science fact, science fiction, fantasy, the occult and the paranormal” and Respondent’s “magazines in the field of science, fiction and fantasy” is the medium: that is, Petitioner provides an online magazine and Respondent provides a print magazine. We find Respondent’s “magazines in the field of science, fiction and fantasy” and Petitioner’s “providing on-line electronic publications in the nature of magazines in the field of science fact, science fiction, fantasy, the occult and the paranormal” are so closely related as to be legally identical. 3. Established, likely-to-continue channels of trade and classes of consumers. Because Respondent’s “magazines in the field of science, fiction and fantasy” and Petitioner’s “providing on-line electronic publications in the nature of magazines in the field of science fact, science fiction, fantasy, the occult and the paranormal” are so closely related as to be in part legally identical, we presume that the channels of trade and classes of purchasers are the same. See Viterra, 101 USPQ2d at 1908 (identical goods are presumed to travel in same channels of trade to same class of Cancellation No. 92063829 - 45 - purchasers) (cited in Cai v. Diamond Hong, 127 USPQ2d at 1801 (“With respect to similarity of the established trade channels through which the goods reach customers, the TTAB properly followed our case law and ‘presume[d] that the identical goods move in the same channels of trade and are available to the same classes of customers for such goods….’”); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same). 4. Conclusion Because the marks are similar, Respondent’s goods and Petitioner’s services are so closely related as to be in part legally identical, and the presumption that Respondent’s goods and Petitioner’s services are offered in the same channels of trade to the same classes of consumers, we find that Respondent’s mark OMNI for “magazines in the field of science, fiction and fantasy” is likely to cause confusion with Petitioner’s stylized mark OMNI REBOOT for, inter alia, “on-line retail stores featuring downloadable magazines” and “providing on-line electronic publications in the nature of magazines in the field of science fact, science fiction, fantasy, the occult and the paranormal.” Decision: The Petition for Cancellation is denied under Section 1051(b) of the Trademark Act, 15 U.S.C. § 1051(b), on the ground that Petitioner has failed to meet its burden of proving that the underlying application for Respondent’s registration is void ab initio because Respondent’s predecessor-in-interest did not have a bona fide intent to use the mark when she filed the application. Cancellation No. 92063829 - 46 - The Petition for Cancellation is denied under Section 1051(a) of the Trademark Act, 15 U.S.C. § 1051(a), on the ground that Petitioner has failed to meet its burden of proving that Respondent’s predecessor-in-interest did not make bona fide commercial use of the mark prior to filing the Statement of Use. The Petition for Cancellation is denied under Section 1052(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Petitioner has failed to demonstrate priority of use in addition to likelihood of confusion.

Jerrick Ventures, LLC v. Pamela Weintraub and Penthouse Global Media, Inc.; Penthouse World Media, LLC and Alpha Cygni, Inc.