Life Enhancement Centerv.CR License, LLC

Trademark Trial and Appeal Board

Aug 1, 2014

No. 92057149 (T.T.A.B. Aug. 1, 2014)

This Opinion is Not a Precedent of the TTAB Mailed: August 1, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Life Enhancement Center v. CR License, LLC _____ Cancellation No. 92057149 against Registration No. 2066095 _____ Jamie Carpenter of J. Carpenter Law Offices PLLC for Life Enhancement Center. Jennifer A. Van Kirk, Sean D. Garrison and Cindy Villanueva of Lewis Roca Rothgerber LLP for CR License, LLC. _____ Before Seeherman, Taylor and Lykos, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: On April 27, 2013, Life Enhancement Center (“Petitioner”) filed a petition to cancel CR License, LLC’s (“Respondent” or “CR License”) registration on the Principal Register for the mark LIFE ENHANCEMENT CENTER, in typed format,1 for “health club services, namely providing exercise classes to others and conducting classes in exercise and physical conditioning” in International Class 41 1 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. A typed mark is the legal equivalent of a standard character mark. Trademark Manual of Examining Procedure (“TMEP”) § 807.03(i) (April 2014). Cancellation No. 92057149 - 2 - and “medical, nutritional and therapeutic services and counseling on behavior modification and stress management; health resort and spa services” in International Class 42.2 The mark is registered pursuant to Section 2(f), 15 U.S.C. § 1052(f),3 with a disclaimer of the word CENTER. As set forth in the amended petition to cancel, the grounds for cancellation are as follows: Respondent’s registered mark is generic “as it relates to counseling services,” (Amended Petition to Cancel ¶ 17) or alternatively, the mark is merely descriptive and has not acquired distinctiveness under Section 2(f) for “counseling services, nutrition or any other service…” (Petition to Cancel ¶ 14);4 and that the involved registration and underlying application were improperly assigned. With regard to Petitioner’s claims of genericness and improper assignment, Respondent denied the salient allegations. As to Petitioner’s claim in the alternative of mere descriptiveness and lack of acquired distinctiveness, Respondent asserted the affirmative defense that “Petitioner has failed to state a claim that the mark LIFE ENHANCEMENT CENTER is merely descriptive, as this ground fails as a 2 Registration No. 2066095 issued June 3, 1997 from an application filed March 7, 1994 pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). The registration alleges October 31, 1988 as the date of first use anywhere and in commerce; Sections 8 and 15 affidavits accepted and acknowledged; renewed. 3 During the prosecution history of the application which ultimately matured into registration for the mark LIFE ENHANCEMENT CENTER, the Trademark Examining Attorney found acquired distinctiveness on the basis of Respondent’s Section 2(f) declaration of five years of “substantially exclusive and continuous use” immediately preceding the date of execution made with the application. 4 Respondent incorrectly asserts in its main ACR Brief that Petitioner failed to plead this claim in the amended petition to cancel. Respondent’s ACR Brief, p. 11. Cancellation No. 92057149 - 3 - matter of law because the mark has been registered more than five years.” Answer ¶ 18. I. Accelerated Case Resolution (“ACR”) The parties stipulated to resolve this proceeding under the summary judgment model of the Board’s Accelerated Case Resolution (“ACR”) procedure. “Stipulated ACR Schedule and Request for Phone Conference” (TTABVUE Entry #10) (hereinafter referred to as “ACR Stipulation”). See, e.g., Chanel Inc. v. Makarczyk, 106 USPQ2d 1774, 1775 (TTAB 2013) (ACR stipulation approved by Board). See also Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 528.05(a)(2) (“Accelerated Case Resolution”) and § 702.04(b) (“ACR using Summary Judgment Briefs”) (2014). Under the ACR model selected by the parties, in lieu of separate assigned testimony and briefing periods, each party submitted a summary judgment style main brief and rebuttal brief with evidentiary submissions attached thereto, effectively merging the trial and briefing periods into a single phase. The parties also agreed to various efficiencies, including, for example, the presentation of direct testimony from witnesses by affidavit or declaration, with the adverse party or parties reserving the right to utilize live cross-examination through deposition testimony, and waiver of the right to submit expert testimony. ACR Stipulation ¶¶ 3 and 4. There appears, however, to be some confusion regarding the nature of ACR on the part of Petitioner, and in particular the meaning of the following paragraph in the Parties’ ACR Stipulation: Cancellation No. 92057149 - 4 - 5. The Parties hereby stipulate to utilize summary judgment format and that the Board will be able to resolve any genuine disputes of material fact that are presented by the record or which may be discovered by a panel of judges working on a final decision for this case. (emphasis added). Petitioner contends that the highlighted language in ¶ 5 means that this designated panel of judges may conduct independent research outside of the record to further substantiate Petitioner’s claim that Respondent’s registered mark is generic. Petitioner’s ACR Rebuttal Brief, p. 2. Petitioner’s assertion reflects a misunderstanding of the ACR process. We interpret the highlighted phrase above as referring to any genuine disputes of material fact not identified by the parties but rather identified by the Board. This language does not mean that the panel of Board judges has the authority or obligation to engage in independent fact-finding outside of the record. Indeed, when read in conjunction with the remainder of the ACR Stipulation, it is clear that the evidentiary record is limited to the parties’ submissions. See ACR Stipulation, ¶ 2. As plaintiff in this proceeding, Petitioner bears the burden of proving its standing and claims by a preponderance of the evidence, and election by the parties to utilize ACR does not alter this standard of proof, nor does it grant to the Board the authority to initiate its own factual investigation. See TBMP § 702.04(a) (“The standards of proof in an ACR proceeding are the same as the standards of proof in a traditional Board proceeding.”) (citing Dan Robbins & Associates, Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105 (CCPA 1979)). The purpose of this paragraph is to make clear that, although the evidence and briefing follows a summary judgment format, the Board may resolve Cancellation No. 92057149 - 5 - genuine disputes of material fact, and it may do so whether one of the parties asserts such disputes or the Board determines on its own that there are any. II. Evidentiary Objections Respondent objects to Petitioner’s submission with its main ACR Brief of printouts from various official state government web sites (for example, the Arizona State Commission State of Arizona Public Access System, South Carolina Secretary of State “Corporate Search Results,” and Secretary of State North Dakota “Business Records Search”) on grounds of relevance, foundation, hearsay and authenticity. Petitioner’s ACR Brief, Ex. E. The objection is overruled. Paragraph No. 2 of the parties’ ACR Stipulation reads as follows: The Parties agree that the affidavits and exhibits before the Board for purposes of the pending motion and cross-motion for summary judgment shall be the testimony and evidence of the parties for purposes of final hearing; that the briefs in support of and in opposition to the pending motion and cross-motion for summary judgment shall be deemed to be the briefs at final hearing pursuant to Trademark Rule 2.128 and that all office records, matters of public record, discovery deposition excerpts and the like incorporated in or annexed as exhibits to the briefs or affidavits shall be deemed to have been properly filed pursuant to notice of reliance pursuant to Trademark Rule 2.122(e). (emphasis added). To the extent that Petitioner obtained this evidence from the public corporate name records from Internet web sites of the states of the United States, it falls within the category of “matters of public record” and is therefore admissible by the terms of the Parties’ ACR Stipulation. For this reason, the printouts are deemed to be properly of record. As for Respondent’s other objections to this evidence, these materials are admissible to show that the various Cancellation No. 92057149 - 6 - corporations have been incorporated under the listed corporate names, and trade names or “doing business as” names have been registered. Respondent also objects on grounds of relevance, foundation and hearsay to Petitioner’s submission with its main ACR Brief of a Wikipedia entry regarding the Canadian Television version of the Oprah Winfrey Network using the term “life enhancement” in connection with television programming. Petitioner’s ACR Brief, Ex. F. More specifically, Respondent contends that because the entry relates to television programming in a foreign country with no evidence of exposure to the U.S. television audience, it has no bearing on Petitioner’s genericness claim as it applies to the U.S. public. All statements in the article describing the nature of the television programming on the Oprah Winfrey Network, whether in the United States or Canada, would be hearsay if used to prove what type of television programming takes place on the network. However, the article can be considered for the exposure of the article itself to readers in the United States, although the extent of such exposure is unknown and, therefore, the article has little probative value. Lastly, Respondent objects to Petitioner’s discussion in its rebuttal brief of Google search engine results of “19 links …of businesses using the term Life Enhancement who provide counseling, health and nutrition related type services” as failing to comply with the guidelines for submission of evidence obtained from the Internet as set forth in the case of Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB 2010). However, we need not even reach this objection because Petitioner did not submit the actual printouts from the Internet, but only links to Cancellation No. 92057149 - 7 - webpages. Because the webpages were not actually submitted, they are not before us and we can give them no consideration. See ACR Stipulation ¶ 2. Accordingly, we have not considered any of Petitioner’s arguments made in connection therewith. III. The Record The record includes the pleadings,5 and pursuant to Trademark Rule 2.122(b), Respondent’s registration file. As per the Parties’ ACR stipulation, Petitioner filed a summary judgment styled ACR brief with the following evidence attached thereto: visitor guide entitled “This Week at Canyon Ranch: March 2-8, 2014” (Ex. A); search results from the Arizona Corporation Commission State of Arizona Public Access System for “Corporate Inquiry” of CR License, LLC (Ex. B); copies of assignment documents showing chain of title of the involved registration and USPTO Assignment Recordation Sheets, (Ex. C); Affidavit of Barbara A. Hosler, founder and owner of Center for Life Enhancement located in Monroe, Michigan (“Hosler Affidavit”); Affidavit of Lynn Denson, Chief Executive Officer of the Life Enhancement Center located in Riverside, California (“Denson Affidavit”); Affidavit of Russell C. Gaede and Jason H. King, Executive and Clinical Directors of Life Enhancement Center located in Utah (“Gaede and King Affidavit”) (Ex. D); search results for “Life Enhancement” from all 50 official state government Internet web sites of registered business or 5 The list of Respondent’s and third-party registrations obtained from the Trademark Electronic Search System (“TESS”) attached to Petitioner’s amended petition to cancel was not properly made of record. See ACR Stipulation ¶ 2. In Board inter partes proceedings, only a plaintiff’s pleaded registration can be made of record by attaching it to a complaint, and then only if it shows status and title. Trademark Rule 2.122(d). The Parties’ ACR Stipulation did not provide that exhibits attached to pleadings would be considered as part of the record. Cancellation No. 92057149 - 8 - trade names (Ex. E); entry for “Oprah Winfrey Network (Canadian TV channel)” from Wikipedia (Ex. F); and printout from the USPTO “Trademark Electronic Search System” (“TESS”) showing a list of applications and registrations owned by CR License LLC (Ex. G). Petitioner attached to its ACR Rebuttal Brief an advertisement for Canyon Ranch, Tucson entitled “Canyon Ranch. Power of Possibility.” Respondent submitted a summary judgment styled ACR brief accompanied by the following affidavits with exhibits attached thereto: (1) Jerrold I. Cohen, President of JC Management (manager of CR License LLC d/b/a Canyon Ranch) (“Cohen Affidavit”); (2) Jim Eastburn, Director of the Life Enhancement Center at Canyon Ranch (“Eastburn Affidavit”); and (3) Erin Dougherty, Director of Marketing at Canyon Ranch (“Dougherty Affidavit”). VI. Background The underlying application of the involved registration in this proceeding was filed by Canyon Ranch, Inc. The application and subsequently issued registration were assigned on three separate occasions “to new operating companies as part of corporate reorganizations…all part of the Canyon Ranch family of companies,” and each assignment was properly recorded with the Assignment Division of the USPTO. Cohen Affidavit ¶ 6, Ex. 6; Petitioner’s ACR Brief, Ex. C (USPTO Assignment Division Records). The first assignment took place on May 6, 1997, prior to issuance of the registration, from Canyon Ranch, Inc. to Cohen Enterprises, LLC and provided for the assignment of “all … right, title and interest in and to the Cancellation No. 92057149 - 9 - tradenames, trademarks and copyrights described [therein] together with all of the goodwill arising out of or relating to such tradenames, trademarks and copyrights.” Cohen Affidavit ¶ 6, Ex. 6; Petitioner’s ACR Brief, Ex. C (“Assignment and Assumption of Tradenames, Trademarks and Copyrights” dated May 6, 1997.). The second assignment occurred on June 27, 1997, shortly after the mark was registered, from Cohen Enterprise, LLC to ZC Investments, LLC and provided for the sale, transfer, assignment and conveyance of all of Cohen Enterprises’ “right, title and interest in and to the tradenames, trademarks and copyrights” described [therein] “together with all of the goodwill arising out of or relating to such tradenames, trademarks and copyrights.” Cohen Affidavit ¶ 6, Ex. 6; Petitioner’s ACR Brief, Ex. C (“Assignment and Assumption of Tradenames, Trademarks and Copyrights” dated June 27, 1997.). Finally, on July 1, 2004, the mark was assigned from ZC Investments to the present owner CR License, LLC. Cohen Affidavit ¶ 6, Ex. 6; Petitioner’s ACR Brief, Ex. C (“U.S. Trademark Assignment” dated July 1, 2004.). This assignment document provides in relevant part: WHEREAS, Assignee wishes to acquire whatever rights Assignor may possess in the trademarks listed below and the corresponding applications and registrations (the “Marks”), NOW THEREFORE, for good and valuable consideration, the receipt of which is hereby acknowledged Assignor agrees to hereby irrevocably assigns to Assignee any and all right, title and interest in the Marks, together with any goodwill symbolized by the Marks and the corresponding trademark applications and registrations set forth [therein]. Id. Cancellation No. 92057149 - 10 - The Canyon Ranch health resort located in Tucson, Arizona is the entity which “sells, advertises and distributes goods and services bearing the Life Enhancement Center mark nationwide and worldwide.” Dougherty Affidavit ¶ 4, Ex. A. Canyon Ranch has advertised the registered mark in a “broad range of media, including brochures, newspapers, magazines, the internet and broadcast media.” Id. at ¶ 5, Ex. B. The “Life Enhancement Center” facility has continuously provided the services identified in the involved registration for “[o]ver the last 25 years” under the mark LIFE ENHANCEMENT CENTER from the Canyon Ranch health resort in Tucson. Cohen Affidavit ¶ 3. The present owner of the registered mark, CR License, uses the d/b/a designation “Canyon Ranch” when sending cease and desist letters policing third-party use of the mark. Cohen Affidavit ¶ 11, Ex. I. V. Standing Respondent’s admission “that it sent Petitioner a cease and desist letter” (Answer ¶ 15) in response to Petitioner’s allegation that it “has been threatened with legal action” by Respondent if it “does not cease and desist using its name ‘Life Enhancement Center’” (Amended Petition to Cancel ¶ 15), suffices to confer Petitioner standing to bring the instant cancellation proceeding. See Ipco Corp. v. Blessings Corp., 5 USPQ2d 1974, 1976-77 (TTAB 1988) (cease and desist letter sent by applicant found sufficient to demonstrate opposer’s standing). See generally Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999) (the threshold for determining standing is liberal, namely, whether a plaintiff's belief in damage has a reasonable basis in fact and reflects a real interest in the case). Cancellation No. 92057149 - 11 - VI. Genericness Claim Turning now to the substantive matters before us, we first direct our attention to Petitioner’s genericness claim. A mark is treated as generic if it refers to the class or category of goods and/or services on or in connection with which it is used. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) (citing Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986)). The test for determining whether a mark is generic is its “primary significance . . . to the relevant public.” Section 14(3) of the Trademark Act, 15 U.S.C. § 1064(3) (emphasis added); In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991); Marvin Ginn, supra. It is Petitioner’s burden to establish that the mark LIFE ENHANCMENT CENTER is generic by a preponderance of the evidence. Magic Wand Inc., 19 USPQ2d at 1554.6 To determine whether a mark is generic, first we determine the genus of the goods or services at issue; second, we determine whether the term sought to be registered would be understood by the relevant public primarily to refer to that genus of goods or services. See Marvin Ginn, supra. 6 Respondent, relying on an excerpt from 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:12 (4th ed. 2014), incorrectly argues that Petitioner is required to provide “persuasive and clear evidence” that Respondent’s registered mark is generic. Respondent’s ACR Brief, p. 1. This is not the standard of proof in a Board inter partes proceeding. Cancellation No. 92057149 - 12 - With regard to the first prong, although the registration is for services in Classes 35, 41 and 42, Petitioner pleaded genericness only as to a portion of the services, “counseling services” in Class 42 (Amended Petition to Cancel ¶ 17). In its brief Petitioner argued that the mark was generic for “counseling services or nutrition or yoga classes.” Petitioner’s ACR Brief, p. 4. Respondent maintains that Petitioner’s claim applies only to the services identified in International Class 42 based on Petitioner’s amended complaint and arguments presented in its ACR Brief, and does not apply to the services identified in International Class 41, which would include yoga classes. Respondent’s ACR Brief, p. 3 n.1. Since the operative complaint gave no notice to Respondent that its mark was being attacked as generic for any of the services identified in Class 41, we agree, and therefore limit our analysis to the services identified in Class 42, delineated as “medical, nutritional and therapeutic services and counseling on behavior modification and stress management; health resort and spa services.” We further find that the genus of services at issue in this case is adequately defined by the identification as set forth in relevant part in the registration. See Magic Wand, 19 USPQ2d at 1552 (“The Lanham Act permits cancellation when a ‘registered mark becomes the generic name for the goods or services…for which it is registered…’”) (quoting 15 U.S.C. § 1064(3)). Our next task is to define the “relevant purchasing public.” Both Petitioner and Respondent refer to the general public or “general purchaser” as the relevant public. This categorization is overly broad. The “relevant purchasing public” means “the Cancellation No. 92057149 - 13 - relevant public which does or may purchase the goods or services in the marketplace.” Magic Wand, 19 USPQ2d at 1552-53. Therefore, we find the relevant public to be comprised of members of the general public who are consumers or prospective consumers of “medical, nutritional and therapeutic services and counseling on behavior modification and stress management; health resort and spa services.” We further determine that the mark LIFE ENHANCEMENT CENTER is a phrase and should be analyzed according to the test set forth by the Court of Appeals for the Federal Circuit, our primary reviewing court, in In re American Fertility Society, supra, and further clarified in In re Dial-A-Mattress Operating Corp., supra, 57 USPQ2d at 1810: [W]here the proposed mark is a phrase (such as “Society for Reproductive Medicine”), the board “cannot simply cite definitions and generic uses of the constituent terms of a mark”; it must conduct an inquiry into “the meaning of the disputed phrase as a whole.” In re The Am. Fertility Soc’y, 188 F.3d at 1347, 51 USPQ2d at 1836. Respondent’s disclaimer of the individual word CENTER in its Section 2(f) registration constitutes a tacit admission that this individual term is generic for the identified services. See In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986). Nonetheless, as explained above, the evidence must show that the registered mark LIFE ENHANCEMENT CENTER “as a whole” is generic. Petitioner argues that the term “Life Enhancement” is a generic term when used alone or in combination with “center” or “program.” Competent sources to show the relevant purchasing public’s understanding of a contested term include purchaser Cancellation No. 92057149 - 14 - testimony, consumer surveys, dictionary definitions, trade journals, newspapers and other publications. In re Dial-A-Mattress Operating Corp., supra; In re Bed & Breakfast Registry, 791 F.2d 157, 160, 229 USPQ 818, 819 (Fed. Cir. 1986); Magic Wand, 19 USPQ2d at 1553. With the exception of a single entry from Wikipedia,7 Petitioner did not submit any of the foregoing evidentiary materials.8 Instead, Petitioner primarily relies on the following three affidavits from competitors in the industry, which state in relevant part: Hosler Affidavit: 3. The name of my business is CENTER FOR LIFE ENHANCMENT. 4. I chose to use the name “Life Enhancement” as a part of my business name because I believe the name is a general term used by many businesses who provide services such as counseling, education and so forth, the term is descriptive of a category of services used to improve or enhance one’s life. Denson Affidavit: 3. Our business Life Enhancement Center has been in operation since approximately March of 2006. 5. We chose the term Life Enhancement Center because in our opinion, Life Enhancement is a descriptive and generic term signifying overall wellbeing, which can be accomplished through health services, counseling or perhaps nutrition. 7 The entry from Wikipedia for the Oprah Winfrey Network (Canadian Television) using the phrase “life enhancement” is not relevant to the extent that it does not include the entire mark at issue here. 8 For example, Petitioner contends that Respondent’s mark is generic based on “dictionary meaning” (Petitioner’s ACR Brief, p. 4) but submits no dictionary definitions in support thereof. Similarly, Petitioner argues that “[t]he term life enhancement appears online in hundreds of web sites under google, yahoo or Bing type searches and describes generally a class of services” but has submitted no such printouts from the Internet. Petitioner’s ACR Brief, p. 6. Cancellation No. 92057149 - 15 - 6. We believe Life Enhancement is a very common term to identify types of services. Gaede and King Affidavit: 4. We chose to use the name Life Enhancement Center for our business because I believed that the term “Life Enhancement” is a type of generic, descriptive term symbolizing a category of services including counseling, mental health and overall wellbeing. In addition, we performed several searches online and found many other companies using the name for the same types of services in other States, with no registered trademarks. Respondent argues that these affidavits carry “no evidentiary weight” because they are not from the consuming public and essentially constitute legal opinion testimony. We agree. None of the affiants states that he/she is a member of the relevant public or a consumer of the relevant services. Instead, each affiant discusses why he/she chose the phrase “life enhancement” or “life enhancement center” as the trade name for his/her business. Indeed, such statements call into question whether the affiants understand the legal concept of genericness. In addition, none of the affiants addresses the phrase “life enhancement center” in relation to Respondent’s identified services. As such, the affidavits are of minimal probative value for determining genericness of Respondent’s registered mark. Petitioner also relies on evidence that the term “Life Enhancement” is used “in over 500 business names registered across 50 states” based on searches of the Internet websites of U.S. state agencies storing registered trade names. Petitioner’s ACR Brief, p. 6; Ex. E. Such evidence, however, merely shows that these businesses use the term “Life Enhancement” either alone or in combination with other terms to designate their business or trade names. It does not constitute evidence regarding Cancellation No. 92057149 - 16 - actual use of the phrase “life enhancement center” as a designation for the genus of the relevant services identified in Respondent’s registration. As such this evidence has limited probative value. Petitioner also points to one of Respondent’s own advertisements purporting to show generic use of the phrase LIFE ENHANCMENT CENTER. Petitioner’s ACR Rebuttal Brief, Ex. A. An examination of the ad shows use of the mark to also identify the name of a building at the Canyon Ranch health resort in Tucson. This evidence by itself fails to show generic usage of Respondent’s mark. Accordingly, based on the record before us, Petitioner falls short of demonstrating by a preponderance of the evidence that Respondent’s registered mark LIFE ENHANCMENT CENTER “as a whole” is generic for “medical, nutritional and therapeutic services and counseling on behavior modification and stress management; health resort and spa services.” See In re Tennis Industry Ass’n, 102 USPQ2d 1671, 1680 (TTAB 2012). The petition for cancellation on the claim of genericness is therefore dismissed. VII. Alternative Claim of Mere Descriptiveness and Lack of Acquired Distinctiveness In view of our dismissal of Petitioner’s genericness claim, we now turn to Petitioner’s claim in the alternative that Respondent’s registered mark is merely descriptive and lacks acquired distinctiveness under Section 2(f) as applied to “medical, nutritional and therapeutic services and counseling on behavior Cancellation No. 92057149 - 17 - modification and stress management; health resort and spa services” in International Class 42.9 As a threshold matter, we address Respondent’s affirmative defense that because its mark LIFE ENHANCEMENT CENTER has been registered for over five years, it cannot be challenged on a claim of mere descriptiveness and lack of acquired distinctiveness. Respondent is correct. As set forth in the provisions of Section 14 of the Trademark Act, once a registration is more than five years old, the grounds on which it may be cancelled are limited, and they do not include the ground of mere descriptiveness.10 In this instance, the involved mark was registered on June 3, 1997, but the petition to cancel was filed nearly sixteen years later on April 27, 2013. Thus, as a matter of law, Petitioner’s claim that Respondent’s mark is merely descriptive and lacks acquired distinctiveness is time-barred under Section 14(3). Judgment is granted in Respondent’s favor on its affirmative defense and Petitioner’s claim is dismissed. 9 Petitioner did not present arguments in support of its claim of descriptiveness and lack of acquired distinctiveness in its main ACR Brief. Nonetheless, we have considered this claim in our decision because it was discussed by Respondent in its main ACR Brief as well as by both parties in their respective ACR Rebuttal Briefs. 10 A petition to cancel a registration issued on the Principal Register under the Act of 1946, on a ground not specified in Trademark Act § 14(3) or Trademark Act § 14(5), 15 U.S.C. § 1064(3) or 15 U.S.C. § 1064(5), must be filed within five years from the date of the registration of the mark. The grounds for cancellation which are thus available in the case of a petition filed within the five-year period, but not thereafter, include all of the grounds specified in Trademark Act § 2(e), 15 U.S.C. § 1052(e), including a claim that respondent's mark is merely descriptive or deceptively misdescriptive, Section 2(e)(1), 15 U.S.C. § 1052(e)(1). Cancellation No. 92057149 - 18 - VIII. Petitioner’s Claim of Invalid Assignment Lastly, we consider Petitioner’s claim that Respondent has lost any protection it may have had in the registered service mark LIFE ENHANCMENT CENTER through improper assignment of the registration. Petitioner’s claim of invalid assignment is based on the following allegations: 1. Registration number 2066095 is an improperly registered and invalid trademark and should not receive protection. 2. The name “Life Enhancement Center”, registration number 2066095 was first registered by Can[y]on Ranch, Inc. 3. Canyon Ranch is a chain of hotels and spas having locations in two or three states including Arizona, Nevada and Michigan. 4. Canyon Ranch provides hotel and spa services offering a variety of services which include programs designed for health, wellness and nutrition. 5. Canyon Ranch has a program called “Life Enhancement Program” (See web link….) 6. Canyon Ranch has a “Life Enhancement Center” that conducts the “Life Enhancement Program” [that] provides services such as health food, counseling and fitness. 14. Defendant has lost any protection he may have had, of the name “Life Enhancement Center” though improper assignment. The trademark “Life Enhancement Center” has been assigned numerous times and the new owners have not or do not themselves provide any products or services that bear the name “Life Enhancement” or “Life Enhancement Center.” The owner of Life Enhancement Center appears to be a company by the name of Canyon Ranch. … Amended Petition to Cancel ¶ 14. Respondent answered these allegations as follows: 1. Respondent denies the allegations in Paragraph 1. Cancellation No. 92057149 - 19 - 2. Respondent admits that the trademark LIFE ENHANCMENT CENTER, Reg. No. 2,066,095, was registered by Canyon Ranch, Inc. 3. Respondent admits that its related company licensees operate a number of health resorts, luxury spas, hotels and communities in a number of states, including Arizona and Nevada. Respondent denies the remaining allegations in Paragraph 3. 4. Respondent admits that its related company licensees provide hotel and spa services, which include programs designed for health, wellness and nutrition. Respondent denies the remaining allegations in Paragraph 4. 5. Respondent admits that its related company licensees provide a program called LIFE ENHANCEMENT PROGRAM.® Respondent admits that the website http://www.canyonranch.com/tucson/health-wellness/life- enhancment-program contains information about this program. Respondent denies the remaining allegations in Paragraph 5. 6. Respondent admits its related licensees offer a variety of programs, including the LIFE ENHANCMENT PROGRAM® that focus on health, nutrition, counseling and fitness under the LIFE ENHANCMENT CENTER® brand. Respondent denies the remaining allegations in Paragraph 6. … 14. Respondent admits that the trademark LIFE ENHANCEMENT CENTER has been assigned three times, with the last assignment of the mark being to Respondent. Respondent denies the remaining allegations in Paragraph 14. Petitioner argues that the mark has been assigned “numerous times along with 30 other trademarks” and that the current owner, CR License LLC, does not “physically own or operate or provide any of the services” identified in the involved registration. Petitioner’s ACR Brief, p. 7. Rather, Petitioner contends that the designation “Life Enhancement Center” merely refers to a building located on the Canyon Ranch complex where the “Life Enhancement Program” takes place. Petitioner’s ACR Brief, p. 3, Ex. 8 (Map of Canyon Ranch Tucson, Arizona health Cancellation No. 92057149 - 20 - resort). Petitioner further contends that not all of the services identified in the registration are offered from the Life Enhancement Center building. In addition, Petitioner, relying on the Board’s decision in Central Garden & Pet Co. v. Doskocil Manufacturing Co., 108 USPQ 1134 (TTAB 2013), asserts that the only evidence of transfer of ownership from the original owner Canyon Ranch Inc. is the transfer of the mark and the “‘goodwill’ of the business connected with the mark” and that the “services, goods and facilities were not transferred to any of the five various assignees over the past 15 years.” Id. At the outset we point out that Petitioner’s reliance on Central Garden & Pet Co. v. Doskocil Manufacturing Co., supra, for its claim of invalid assignment of the mark is misplaced. That case involved the prohibition under Trademark Act Section 10(a)(1) of the assignment of a Section 1(b) application prior to the filing of an allegation of use, unless the assignment is “to a successor to the business of the applicant, or portion thereof, to which the mark pertains.” In an application under § 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), the applicant cannot assign the application before the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. § 1051(c) or a statement of use under 15 U.S.C. § 1051(d)), except to a successor to the applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing. Section 10 of the Trademark Act, 15 U.S.C. § 1060; 37 C.F.R. § 3.16. Such is not the case here where the underlying application which matured into the subject registration was not filed as an intent-to-use application under Section 1(b) but Cancellation No. 92057149 - 21 - rather as a use-based application under Section 1(a), and therefore could be assigned prior to a registration issuing. As to the remainder of Petitioner’s arguments, the precise nature of Petitioner’s invalid assignment claim is unclear. It appears that Petitioner may be arguing that Respondent, CR License, LLC, the record owner of the registration, is not using the mark itself, and that, because Canyon Ranch is using it, Canyon Ranch is the true owner of the mark. We agree that the mark is currently being used by Canyon Ranch, Inc. However, that does not affect Respondent’s ownership rights, since Canyon Ranch Inc. is a related company of the present owner CR License. CR License’s Combined Declaration of Use and Renewal states in relevant part that “the owner is using or is using through a related company or licensee the mark in commerce on or in connection with all goods and/or services listed in the existing registration.” This is corroborated by the affidavits presented by Respondent. The use of a registered mark by a related company is a permissible way of maintaining trademark rights. See Section 45 of the Trademark Act, 15 U.S.C. § 1127 (“The term ‘related company’ means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used); and Section 5 of the Trademark Act, 15 U.S.C. § 1055 (“Where a registered mark or a mark sought to be registered is or may be used legitimately by related companies, such use shall inure to the benefit of the registrant or applicant for registration, and such use shall not affect the validity of such mark or of its registration, provided such mark is not used in such Cancellation No. 92057149 - 22 - manner as to deceive the public.”). Petitioner points out that Respondent did not introduce into the record an operating contract or agreement. However, this is unnecessary in light of Respondent’s statement that CR License falls under the same corporate umbrella as Canyon Ranch, Inc., coupled with statements in the Combined Declaration of Use and Renewal that CR License is using the mark through a related company or licensee. See Cohen Affidavit ¶ 6. The fact that the present owner of the registration is a related company which does not physically operate or provide any of the identified services does not impinge on the validity of the registration. There is also evidence that CR License has been actively monitoring and policing uncontrolled third-party use of the mark through cease and desist letters, demonstrating that Canyon Ranch Inc.’s use of the mark LIFE ENHANCMENT CENTER inures to CR License’s benefit. Cohen Affidavit ¶ 11, Ex. I. Accordingly, Petitioner’s claim of invalid assignment is dismissed as well. DECISION: The petition for cancellation is dismissed.