Major League Baseball Properties, Inc.v.Christopher Webb

Trademark Trial and Appeal Board

Jul 26, 2017

No. 92060903 (T.T.A.B. Jul. 26, 2017)

MW Mailed: July 26, 2017

Cancellation No. 92060903
Major League Baseball Properties, Inc.

v.
Christopher Webb

Before Richey, Deputy Chief Administrative Trademark Judge,
Mermelstein, and Shaw, Administrative Trademark Judges.

By the Board:

On February 19, 2015, Major League Baseball Properties, Inc. (“Petitioner”) filed
a petition for cancellation of the following registered word and design mark

for “clothing, namely, short and long sleeve t-shirts, sweatshirts, jackets, baseball
hats, and beanies” in International Class 25.1 In its amended petition, filed October

1 Registration No. 4472701 registered on the Supplemental Register on January 21, 2014.
Respondent filed an amendment to allege use on November 26, 2013 claiming December 1,
2012 as the date of first use anywhere and the date of first use in commerce.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92060903

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5, 2016, Petitioner claims the following grounds for cancellation: (1) lack of bona fide
use in commerce; (2) fraud; (3) likelihood of confusion; and (4) dilution by blurring.2
Respondent denied the salient allegations in the amended petition.
This case now comes before the Board for consideration of Petitioner’s motion
(filed March 9, 2017) for partial summary judgment on the grounds of lack of bona
fide use and fraud. The motion is fully briefed.
The Pleadings
As an initial matter, a decision on summary judgment necessarily requires a
review of the operative pleadings to determine the legal sufficiencey of the asserted
claims. See Fed. R. Civ. P. 56(a); Asian & Western Classics B.V. v. Lynne Selkow, 92
USPQ2d 1478, 1478 (TTAB 2009). Upon review of the amended petition for
cancellation, we find that the amended pleading is legally sufficient to the extent that
it contains allegations which, if proven, would establish the claims pursued in the
motion for partial summary judgment, namely, lack of bona fide use and fraud. In
addition, we find that the allegations in the amended petition for cancellation are
sufficient to support Petitioner’s asserted claims of likelihood of confusion and
dilution by blurring.
Standing
Standing is a threshold issue that must be pleaded and proven by the plaintiff in
every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d

2 On November 14, 2016, the Board granted as conceded Petitioner’s motion (filed October 5,
2016) for leave to amend its pleading.
Cancellation No. 92060903

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1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015);
Ritchie v. Simpson, 171 F.3d. 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999); see
also Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1037 (TTAB 2007).
Here, Petitioner has asserted a prima facie claim of likelihood of confusion based
on prior use in commerce and ownership of existing registrations. In addition,
Petitioner has introduced status and title copies of pleaded registrations with its
motion. Thus, Petitioner has demonstrated a belief in likely damage by establishing
a direct commercial interest in the proceeding and, therefore, has established its
standing to maintain the proceeding. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Research in Motion Ltd. v. Defining
Presence Mktg. Grp. Inc., 102 USPQ2d 1187, 1190 (TTAB 2012) (standing established
by pleaded registrations of record). Moreover, once standing is established as to one
ground, the Petitioner may pursue any legally sufficient claim which negates
Respondent’s right to the subject registration. Jewelers Vigilance Committee, Inc. v.
Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2024 (Fed. Cir. 1987); see also
Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1877 (TTAB 2011) (because
petitioners alleged standing as to at least one ground, they may assert any other
legally sufficient claims).
The Record
For purposes of the summary judgment motion, the evidentiary record includes
the pleadings and, by rule, the file of the involved registration. Trademark Rule
2.122(b). In support of the claims in its motion for partial summary judgment,
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Petitioner introduced Respondent’s written responses to Petitioner’s first set of
requests for production3 and first set of interrogatories along with the declaration of
Petitioner’s counsel.4 In addition, Petitioner submitted an article published in
Bloomburg Businessweek regarding the sales of a San Francisco T-shirt maker.5
In response to the motion, Respondent submitted a declaration in which he
testifies that he was not aware that the mark must be used on all of the goods in the
application at the time of filing the amendment to allege use. In addition, Respondent
has introduced documents as evidence of sales of his products.6
Summary Judgment
We turn next to the merits of Petitioner’s motion for summary judgment.
Petitioner argues that based on Respondent’s responses to Petitioner’s
interrogatories and requests for production, Respondent has not used its mark on or
in connection with “sweatshirts, jackets, baseball hats, and beanies.” In addition,
because Respondent has only sold a total of thirty-three T-shirts (short and long-
sleeve) since he began selling the goods in 2012, Petitioner contends that
Respondent’s use of the mark is not “typical use” in the T-shirt industry and is
insufficient to constitute bona fide use of the mark in the ordinary course of trade for
purposes of trademark registration.

3 23 TTABVUE 46-66.
4 23 TTABVUE 68-86.
5 23 TTABVUE 1357-1362.
6 We note that none of the documents identifies the year the sale was made. The second
document indicates a transaction on September 8, 2014, which is after the filing date of
Respondent’s amendment to allege use.
Cancellation No. 92060903

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With respect to the fraud claim, Petitioner argues that given the small number of
sales of Respondent’s products, he “must have known exactly what goods he had sold
(and not sold) at the time he signed his Amendment to Allege use.” 23 TTABVUE 17.
Thus, according to Petitioner, Respondent knowingly made a false representation of
a material fact when he averred in his amendment to allege use that he was using
the mark in connection with all of the goods in the application. Petitioner further
argues that Respondent made the misrepresentation with the specific intent to
induce the USPTO into approving his application for registration.
In response to the motion, Respondent argues that his discovery responses alone
are insufficient to conclude that there is no genuine dispute of material fact that he
did not use his mark on the majority of the goods in the application because he
reserved the right to amend his responses to include additional discovery responses
in the event that such information was uncovered.7
With respect to the fraud claim, Respondent argues that, unlike the case cited by
Petitioner in its motion, Respondent never testified orally or attested in writing
regarding his knowledge of the verification in the document he signed. Thus,

7 Respondent notes that his discovery responses include objections. However, because
Respondent’s general and boilerplate objections to the discovery requests do not state with
any specificity the grounds for the objections to each interrogatory, the objections are
overruled. See Medtronic, Inc. v. Pacesetter Sys., Inc., 22 USPQ 80, 83 (TTAB 1984) (burden
is on objecting party to show that interrogatories should not be answered); see also Covington
v. Sailormen, 274 F.R.D. 692, 693 (N.D. Fla. 2011) (boilerplate “shotgun-style” objections
incorporated into every answer are not consistent with Fed. R. Civ. P. 33(b)(4)’s directive for
specificity); Sanchez-Medina v. UNICCO Serv. Co., 265 F.R.D. 24, 27 (D.P.R. 2009) (mere
statement that interrogatory was overly broad, burdensome, oppressive, and irrelevant is not
an adequate objection).
Cancellation No. 92060903

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according to Respondent, there is insufficient evidence that he knowingly
misrepresented facts or that he intended to decieve the USPTO.
In its reply in support of the summary judgment motion, Petitioner argues that
despite Respondent’s statement that he may amend his responses to include
additional information or documentary evidence, Respondent has failed to cite to or
provide any evidence showing use of his mark on any of the goods in the application
other than T-shirts. Petitioner further argues that there is no factual dispute
regarding Respondent’s level of use in commerce on T-shirts; thus the Board should
conclude that, in view of his de minimus sales, Respondent has not made bona fide
use in connection with T-shirts.
Summary judgment is an appropriate method of disposing of cases in which there
are no genuine disputes as to any material facts and the moving party is entitled to
judgment as a matter of law. Fed. R. Civ. P. 56(a). In reviewing a motion for summary
judgment, the evidentiary record and all justifiable inferences to be drawn from the
undisputed facts must be viewed in the light most favorable to the non-moving party.
See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029-30
(Fed. Cir. 1993); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d
1542, 1546 (Fed. Cir. 1992). In addition, the Board may not resolve disputes of
material fact; it may only ascertain whether a genuine dispute regarding a material
fact exists. See Lloyd’s Food Prods., 25 USPQ2d at 2029; Olde Tyme Foods, 22
USPQ2d at 1544.
Cancellation No. 92060903

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A party moving for summary judgment has the burden of demonstrating a
particular fact cannot be disputed by citing to particular parts of materials in the
record, including affidavits or declarations, admissions or interrogatory answers; or
showing that the cited materials do not establish the absence or presence of a genuine
dispute, or that the adverse party cannot produce admissible evidence to support the
fact. Fed. R. Civ. P. 56(c)(1). See generally Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986). When the moving party has supported its motion with sufficient evidence
that, if unopposed, indicates there is no genuine dispute of material fact, the burden
of production shifts to the non-moving party to demonstrate the existence of a genuine
dispute of material fact to be resolved at trial. Enbridge, Inc. v. Excelerate Energy LP,
92 USPQ2d 1537, 1540 (TTAB 2009).
A. No Bona Fide Use in Commerce
We first consider Petitioner’s argument that Respondent’s registration is void ab
initio because, based on Respondent’s discovery responses, Respondent has not used
the mark in commerce in connection with “sweatshirts, jackets, baseball hats, and
beanies.” Petitioner relies on Respondent’s responses to several discovery requests as
evidence of Respondent’s lack of bona fide use of the mark in commerce. The relevant
portions of the the specific discovery requests and responses are set forth below:
Interrogatory No. 5
State whether Registrant has made use of any marks comprising or
containing any of Registrant’s Marks … in the United States or in
commerce as of the present date, and if so, identify each product or service
on or in connection with which Registrant (or any person or entity
authorized by Registrant) has made such use.

Cancellation No. 92060903

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Respondent’s response: “Christopher Webb has used the MAJOR LEAGUE
ZOMBIE HUNTER trademark in connection with the following goods: T-
shirts - short sleeve and T-shirts - long sleeve.”8

Interrogatory No. 6(d)
For each of Registrant’s products identified in response to Interrogatory No.
5, identify the annual volume of sales for each year to the present, both by
dollar amounts and unit amount, for each of Registrant’s products/services.

Respondent’s response: “2012: $699.60 – 23 shirts, 2013: $141.70 – 5 shirts,
2014: $82.75 – 5 shirts.”9

In addition, Petitioner’s counsel averred that in response to a request for
documents evidencing use of Respondent’s mark in connection with each of the
identified goods in the application at the time Respondent filed his amendment to
allege use, Respondent only produced documents that showed use of his mark in
connection with T-shirts and did not produce any documents indicating use in
connection with the other identified goods in the registration.10
Based on the foregoing, we find that Petitioner has met its burden of
demonstrating that there is no genuine dispute of material fact that Respondent was
not using the mark in commerce in connection with “sweatshirts, jackets, baseball
hats, and beanies” prior to filing his amendment to allege use. See Trademark Act
Section 1(a), 15 U.S.C. § 1051(a).
Respondent, on the other hand, does not argue that he actually used the mark in
connection with any of the goods other than T-shirts prior to the filing date of his

8 23 TTABVUE 74.
9 Id. at 74-76.
10 Id. at 21-22.
Cancellation No. 92060903

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amendment to allege use.11 Respondent merely contends that the discovery responses
do not prove that he “may not have uncovered information or documentary evidence
of other uses or sales with the remaining goods”12 because Respondent reserved the
right to amend his responses in the event additional information is uncovered.
Timely supplementation of discovery responses under Fed. R. Civ. P. 26(e) is the
duty of the responding party. It is not a right that the responding party may reserve
until trial. See TBMP § 408.03 (June 2017); see, e.g., Galaxy Metal Gear Inc. v. Direct
Access Tech. Inc., 91 USPQ2d 1859, 1861 (TTAB 2009) (Rule 26(e) is not an invitation
to hold back material items and disclose them at the last minute). Further, to the
extent that documentary evidence exists with respect to Respondent’s use on goods
other than shirts, Respondent must produce such evidence in response to the motion
for summary judgment in order to demonstrate that a genuine dispute remains. Fed.
R. Civ. P. 56(c)(1); see also Venture Out Props. LLC v. Wynn Resort Holdings LLC, 81
USPQ2d 1887, 1890 (TTAB 2007) (“The nonmoving party may not rest on the mere
allegations of its pleadings and assertions of counsel, but must designate specific
portions of the record or produce additional evidence showing the existence of a
genuine issue of material fact for trial.”). The mere possibility that Respondent might
at some unspecified time uncover further evidence of his own use is insufficient to
avoid summary judgment.

11 Respondent testifies in his declaration that he was unaware of the requirement that the
mark be used in connection with all of the goods at the time of filing the AAU and that he
believed that his “actual sale of shirt products were [sic] sufficient for the Amendment to
Allege Use.” 29 TTABVUE 3.
12 27 TTABVUE 6.
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In this case, Respondent has failed to produce any evidence in response to the
motion for summary judgment that would raise a genuine dispute of material fact
regarding his use of the mark on sweatshirts, jackets, baseball hats, and beanies.
In view of the foregoing, Petitioner’s motion for partial summary judgment is
GRANTED with respect to the asserted claim of lack of bona fide use in commerce
in connection with the aforementioned goods.
B. Bona Fide Use with T-Shirts
With regard to the remaining goods in the registration, namely, “short and long
sleeve T-shirts,” there is no factual dipute between the parties regarding
Respondent’s volume of T-shirt sales (28 T-shirts between 2012 and 2013) bearing
the involved mark.13 Thus, according to Petitioner, the only disagreement between
the parties is “a question of law,” namely, whether Respondent’s de minimus use
constitutes bona fide use in commerce. Petitioner argues that Respondent’s
“miniscule amount” 14 of sales is not typical for the apparel industry and is insufficient
to constitute bona fide use for purposes of trademark registration. Although
Petitioner characterizes what we must resolve on summary judgment as a question
of law, Petitioner’s argument makes clear that the question is factual in nature, i.e.,
whether Respondent’s level of sales amounts to the typical level of sales that we would
expect to see from a T-shirt merchant.
Under the Trademark Law Revision Act of 1988 (“TLRA”), Congress amended the

13 See Petitioner’s reply brief, 30 TTABVUE 5 (“the parties agree on Registrant’s sales
volume”).
14 23 TTABVUE 13.
Cancellation No. 92060903

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definition of “use in commerce” to add the wording “bona fide use of a mark in the
ordinary course of trade, and not merely to reserve a right in a mark.”15 Trademark
Act Section 45, 15 U.S.C. § 1127. This language was intended to eliminate “token
uses,” which occur when applicants use a mark for the sole purpose of obtaining a
registration with no intention of legitimate use in commerce until a later date. Aycock
Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1306 (Fed. Cir. 2009).
The report of the House Judiciary Committee on the TLRA stated that “‘the ordinary
course of trade’ varies from industry to industry.” H.R. Rep. No. 100-1028, at 15
(1988); see also Senate Judiciary Committee Report, S. Rep. No. 100-515, at 44-45
(1988) (“The committee intends that the revised definition of ‘use in commerce’ be
interpreted to mean commercial use which is typical in a particular industry.”
In support of its argument that Respondent’s volume of use is not typical in the
ordinary course of the T-shirt trade, Petitioner has submitted a single article from an
online business magazine about the business practices of “one of the top T-shirt
sellers in the U.S.”16 We find the evidence regarding the extraordinary success of a
single entity in the industry insufficient to demonstrate what is typical in “the
ordinary course of trade” in the field of retail T-shirt sales. Cf. Automedx Inc. v.
Artivent Corp., 95 USPQ2d 1976, 1981 (TTAB 2010) (Board considered testimony
evidence that sale of demonstration unit constitutes sale in the ordinary course of
trade).17

15 Trademark Law Revision Act of 1988, Public Law 100-667, 102 Stat. 393.
16 23 TTABVUE 1359
17 In support of its position that Respondent’s de minimus use is insufficient to establish bona
Cancellation No. 92060903

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Based upon the record herein and the applicable law, we find that Petitioner has
failed to carry its burden of showing that there is no genuine dispute of material fact
that Respondent’s sales volume and manner of use of its mark in commerce on T-
shirts does not rise to the level of bona fide use of the mark in the ordinary course of
trade in the T-shirt industry and that such use is merely for the purpose of reserving
a right in his mark. Accordingly, Petitioner’s motion for partial summary judgment
on the asserted claim of lack of bona fide use on short and long sleeve T-shirts is
DENIED.
C. Fraud
We turn next to Petitioner’s asserted claim that Respondent committed fraud by
falsely representing in his amendment to allege use that his mark was in use in
commerce on all of the goods in the application. Fraud in procuring or maintaining a
trademark registration may occur when an applicant for registration or a registrant
in a declaration of use knowingly makes specific false, material representations of
fact in connection with an application to register or in a post-registration filing with
the intent of obtaining or maintaining a registration to which it otherwise is not
entitled. See In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1942 (Fed. Cir. 2009).

fide use in commerce, Petitioner relies heavily on the Board’s decision in Paramount Pictures
Corp. v. White, 31 USPQ2d 1768 (TTAB 1994), aff’d., 108 F.3d 1392 (Fed. Cir. 1997). In
Paramount, the Board found that applicant’s advertising and distribution of his “connect the
dot game” were de minimus. The Board also found, among other things, that the game was
not recognizable as a game; that the game was actually an advertising flier primarily used
for the purpose of promoting applicant’s band; and that the flier/game had no real utilitarian
function as a game. Id. at 1775. In this case, however, there is no dispute regarding the
manner of use of Applicant’s mark as a trademark or whether he is actually using the mark
in connection with T-shirts. The only dispute is whether the volume of use is sufficient to
establish bona fide use in the ordinary course of trade.
Cancellation No. 92060903

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The evidence of deceptive intent must be clear and convincing. Id. at 1941 (citing Star
Sci., Inc. v. R.J. Reynolds Tobacco Co., 537 F2d. 1357, 1366, 88 USPQ2d 1001, 1007
(Fed. Cir. 2008)).
In this case, while the evidence indicates that Respondent’s statements in the
amendment to allege use were false, Petitioner has not introduced any direct evidence
of Respondent’s intent to deceive the Office, and Respondent has denied any such
intent.18 Thus, Petitioner has failed to show the absence of a genuine dispute
regarding Respondent’s intent to deceive the Office. Additionally, we note that the
factual question of intent is particularly unsuited to disposition on summary
judgment. See, e.g., Copelands’ Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d
1295, 1298-99 (Fed. Cir. 1991).
Accordingly, Petitioner’s motion for partial summary judgment on the asserted
claim of fraud is DENIED.
In summary, we find that, at a minimum, genuine disputes of material fact remain
with respect to the asserted claims of lack of bona fide use of the mark in commerce
in connection with “short and long sleeve T-shirts” and Respondent’s intent to deceive
the USPTO.19

18 As noted supra at n. 11, Respondent testifies that that he was unaware of the requirement
that the mark be used in connection with all of the goods at the time of filing the AAU.
19 The fact that we have identified only certain genuine disputes as to material facts should
not be construed as a finding that these are necessarily the only disputes which remain for
trial. In addition, the evidence submitted in connection with a motion for summary judgment
or opposition thereto is of record only for consideration of that motion. Any such evidence to
be considered at final hearing must be properly introduced in evidence during the appropriate
trial period. See Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB
1993).
Cancellation No. 92060903

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Decision
In view of the foregoing, Petitioner’s motion for partial summary judgment is
granted with respect to the asserted claim of lack of bona fide use in commerce in
connection with “sweatshirts, jackets, baseball hats, and beanies.” Accordingly, the
petition for cancellation is granted with respect to the foregoing goods.20 See Grand
Canyon West Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1697-98 (TTAB 2006)
(application not void in its entirety if mark in use on some of the goods).
Petitioner’s motion for partial summary judgment is denied with respect to the
asserted claim of lack of bona fide use in connection with “short and long sleeve T-
shirts.” Petitioner’s motion for partial summary judgment on the claim of fraud is
also denied.
Proceedings herein are resumed. Trial dates are reset as follows:
Plaintiff's Pretrial Disclosures 8/1/2017
Plaintiff's 30-day Trial Period Ends 9/15/2017
Defendant's Pretrial Disclosures 9/30/2017
Defendant's 30-day Trial Period Ends 11/14/2017
Plaintiff's Rebuttal Disclosures 11/29/2017
Plaintiff's 15-day Rebuttal Period Ends 12/29/2017

In each instance, a copy of the transcript of testimony, together with copies of
documentary exhibits, must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule 2.125.

20 This decision is interlocutory in nature. Appeal may be taken within sixty-three days after
the entry of a final decision resolving the remaining issues in the case.
Cancellation No. 92060903

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Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An oral
hearing will be set only upon request filed as provided by Trademark Rule 2.129.