Modern House Wines LLCv.Hidden Wineries Inc.

Trademark Trial and Appeal BoardAug 7, 2017

No. 92058885 (T.T.A.B. Aug. 7, 2017)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Hearing: June 20, 2017 Mailed: August 7, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Modern House Wines LLC v. Hidden Wineries Inc. _____ Cancellation No. 92058885 _____ Melville Owen, Kathleen E. Letourneau, and Lawrence Townsend of Owen Wickersham & Erickson, P.C., for Modern House Wines LLC.1 Hidden Wineries Inc. dba Hidden Wineries, pro se. _____ Before Quinn, Wolfson, and Shaw, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Hidden Wineries Inc. dba Hidden Wineries (“Respondent”) owns Registration No. 3771513, issued April 6, 2010 for the mark THANK YOU (in standard characters) 1 Mr. Owen and Ms. Letourneau appeared on the briefs on behalf of Petitioner and Mr. Townsend appeared for Petitioner at the oral hearing. Cancellation No. 92058885 2 for “Red wine; Red wines; Table wines; White wine; Wine; Wines; Wines [ and liqueurs ]; Wines and sparkling wines” in International Class 33. Modern House Wines LLC (“Petitioner”) filed a petition to cancel Respondent’s registration on the ground of abandonment under Trademark Act Section 14, 15 U.S.C. § 1064. Petitioner’s allegation of abandonment, primarily set forth in Paragraph 9 of the petition to cancel, reads as follows: On information and belief, based on the results of Petitioner’s investigation, Petitioner avers that: (A) Registrant has never made use of the Registered Mark in interstate commerce in the United States on any of the goods claimed in its registration; (B) Registrant has not made use of the Registered Mark in the United States on any of the goods claimed in its registration over the past three years; and (C) Registrant has no intent to begin or resume use of the Registered Mark in the United States on any of the goods claimed in its registration.2 Petitioner further alleges that Respondent does not currently have an online business presence (Paragraph 10) and that Respondent’s non-use of its mark “renders the registration abandoned.” (Paragraph 11). Respondent, in its answer, denied the salient allegations of the petition to cancel. I. The Record The record comprises the pleadings; the file of the involved registration; and the following evidence, all introduced by way of Petitioner’s notice of reliance: • Respondent’s Responses to Interrogatory Nos. 1 – 16, and the documents provided as all or part of the interrogatory answers; 2 1 TTABVUE 5. Cancellation No. 92058885 3 • Respondent’s Responses to Requests for Admissions Nos. 1 – 15; and • Excerpts of Internet websites from www.web.archive.org and www.gotcheers.com. Respondent neither took testimony nor introduced any other evidence. Both parties filed briefs. With respect to the briefs, Respondent attached documents to its brief that were not made of record at trial and to which Petitioner objects. Testimonial affidavits or declarations,3 including exhibits, attached to a brief that were not made of record during a party’s testimony period are untimely, and will not be considered. Trademark Rule 2.123(a)(l) (testimony of witnesses in inter partes cases must be filed during the proffering party’s testimony period); cf. Trademark Rule 2.122(g) (notice of reliance must be filed during the testimony period of the party that files the notice); see also Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 704.05(b) (June 2017) (Exhibits to Briefs) and authorities cited in that section. Petitioner’s objection is sustained. We have not considered the declaration of Respondent’s president and accompanying exhibits, or the three third-party statements of individuals identified, respectively as a website developer, a Vons/Safeway company employee, and a “Nevada sales rep.” 3 Effective January 14, 2017, Trademark Rule 2.123(a)(1), 37 CFR 2.123(a)(1) was amended to allow parties to submit the testimony of witnesses in inter partes cases in the form of an affidavit or a declaration “pursuant to §2.20 and in conformance with the Federal Rules of Evidence, filed during the proffering party’s testimony period….”. However, at the time Respondent submitted the documents attached to its brief, testimony of witnesses could be submitted in the form of an affidavit only upon written agreement of the parties. Since the parties did not stipulate to testimony being filed in this form, even if Respondent had timely submitted the documents attached to its brief, they would not have been considered. Cancellation No. 92058885 4 At the outset we note Respondent’s decision to proceed pro se and its remarks (by way of Madonna White, Respondent’s Chief Executive Officer), that Petitioner suppressed evidence, “misused the intent of the law” and improperly used “tactics” designed to prevent Respondent from presenting testimony.4 Although we appreciate the good faith attempt of Respondent to take the depositions of several witnesses, Respondent’s notices did not comply with Rules 26 and 30 of the Federal Rules of Civil Procedure and Trademark Rule 2.123(c), relating to procedures for taking testimony depositions. Specifically, Respondent’s first notice to take depositions, dated June 12, 2105, failed to name the intended witnesses and was quashed on this basis.5 Respondent’s second notice, dated June 22, 2015, identified eight individuals from whom Respondent sought testimony. Five of these had not been disclosed in Respondent’s pretrial disclosures. The Board, in an order dated October 10, 2015, granted Petitioner’s motion to quash the notices directed to these five witnesses on this basis. In considering factor four6 in the 5-factor test used to decide if Respondent’s non-disclosure of intended witnesses was excusable, the Board agreed 4 Respondent’s Brief, 37 TTABVUE 2, 4. 5 Board order dated June 25, 2015, recapping June 17, 2017 telephone conference, 23 TTABVUE. 6 Factor four is the significance of the testimony that would be excluded if the motion to quash were granted. As the Board explained: “In determining whether Respondent’s failure to timely disclose the five witnesses is substantially justified or harmless, the Board is guided by the following five-factor test: ‘1) the surprise to the party against whom the evidence would be offered; 2) the ability of that party to cure the surprise; 3) the extent to which allowing the testimony would disrupt the trial; 4) importance of the evidence; and 5) the nondisclosing party's explanation for its failure to disclose the evidence.’ Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327 (TTAB 2011) (quoting Southern States Rack & Fixture, Inc. v. Sherwin-Williams Co., 318 F.3d 592, 597 (4th Cir. 2003)).” 28 TTABVUE 5. Cancellation No. 92058885 5 that “the testimony of the five witnesses may be important to Respondent’s defense of the pleaded abandonment and nonuse claims,” but noted that “Respondent has three other witnesses – Sara Estrada, John Samarjian, and Ken Shea – who were named in its original pretrial disclosures and whose testimony depositions were also noticed in the June 22, 2015 notice of deposition.”7 The Board did not grant Petitioner’s motion to quash with respect to these three remaining witnesses and extended Respondent’s trial period by 10 days. The trial period ran without any additional depositions being noticed. Respondent’s subsequent motion to re-open its testimony period was denied. Thus Respondent, by its own actions, has shaped the record by not taking testimony or filing evidence of its purported use of the THANK YOU mark during its extended trial period. On this record, we find that there has been no undue suppression of evidence. II. Standing Standing is a threshold issue that must be proven by a plaintiff in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). The plaintiff must show that it has a real interest in the proceeding beyond that of a mere intermeddler, and that it has a reasonable basis for its belief of damage resulting from registration of the subject mark. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 188 (CCPA 1982). The purpose of the standing requirement, which is 7 28 TTABVUE 6. Cancellation No. 92058885 6 directed solely to the interest of the plaintiff, is to prevent litigation when there is no real controversy between the parties. Lipton Indus., Inc., 213 USPQ at 189. Petitioner alleges that it has standing because its applications Serial Nos. 85957031 and 85957013 to register the marks MERCI and THANK YOU MODERN HOUSE WINES and design for “wine” were refused registration under Section 2(d) on the basis of Respondent’s registration sought to be cancelled in this proceeding.8 A petitioner can establish its standing by pleading and making of record a copy of the application file of an application that it has filed and which has been refused registration based on a likelihood of confusion with the registration, owned by respondent, that is the subject of the cancellation proceeding. See, e.g., ShutEmDown Sports, Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012 (petitioner introduced evidence of its pending application which has been refused registration); cf. Life Zone Inc. v Middleman Group, Inc., 87 USPQ2d 1953, 1959 (TTAB 2008) (opposer’s standing demonstrated by showing pending trademark application suspended pending resolution of subject application). In the case at hand, although Petitioner pleaded ownership of two applications, one for the mark MERCI and the other for the mark THANK YOU MODERN HOUSE WINES and design, Petitioner did not submit copies of the applications (or at least the pertinent Office Actions therein) under its notice of reliance or introduce them during the taking of testimony. Unlike the file of the registration sought to be cancelled, Petitioner’s pleaded applications and their file histories are not automatically of record. See Trademark Trial and Appeal Board 8 Petition to Cancel, 1 TTABVUE 4. Cancellation No. 92058885 7 Manual of Procedure (TBMP) § 704.03(b)(2) (June 2017). Nor does the Board take judicial notice of applications or registrations; they must be proven by competent evidence. See, e.g., In re Jonathan Drew Inc., 97 USPQ2d 1640, 1644 n.11 (TTAB 2011) (stating that “the Board’s well-established practice is not to take judicial notice of registrations that reside in the USPTO”); Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290, 1293 (TTAB 1986). Petitioner argues that Respondent’s admissions establish that Petitioner’s pleaded applications were provisionally refused because of Respondent’s THANK YOU registration. Respondent does admit in its Answer to Petitioner’s allegations Nos. 3 and 4 that Petitioner filed the applications,9 but Respondent specifically denies Petitioner’s allegation No. 5, which reads: Petitioner received office actions dated September 21 and 22, 2013 refusing registration of its MERCI and THANK YOU marks based on Section 2(d) confusing similarity with Registrant’s registration for THANK YOU (Registration No. 3,771,513). Respondent answered: Answering paragraph 5 of the Petition for Cancellation, (a) Registrant does not have sufficient knowledge of the dates listed or information to form a belief as to allegations therein and accordingly denies the allegations. Respondent also states in response to Petitioner’s Interrogatory No. 1 that Petitioner filed the two trademark applications, but Respondent’s statements are not admissions that the applications have been refused registration because of 9 4 TTABVUE 3. Cancellation No. 92058885 8 Respondent’s prior existing registration.10 Respondent’s response also includes the statement: “(h) Hidden Wineries observes TSDR,” followed by a copy of a screenshot of a portion of a TSDR page showing that a suspension letter was mailed in the MERCI application.11 There is insufficient information from which to determine the reason for the suspension. Petitioner has not proven its standing on the basis of its pending trademark applications. Petitioner further argues that it has standing based on its common law use of the mark MERCI for wine. But in accord with an agreement of the parties (not made of record) designed “to limit the scope of their discovery to issues pertaining to Registrant’s use of THANK YOU in commerce,”12 Petitioner intentionally did not file any evidence to prove that it has common law rights in the mark. The agreement did not render Petitioner unable to prove its standing via a showing of its use of the mark in commerce, however, and regardless of the parties’ agreement not to engage in discovery on the topic, Petitioner must prove common law use of its mark in order to 10 In response to Interrogatory No. 1, Respondent states: “(f) Registrant admits the Petitioner filed an application for the trademark MERCI in International Class 33 on June 11, 2013; Serial No. 85-957031. (g) Registrant admits the Petitioner filed an intent to use application for the trademark THANK YOU MODERN HOUSE WINES in International Class 033, US 047 049 on June 11, 2013; Serial No. 85-95701.” 17 TTABVUE 11-12. 11 Id. 12 Petitioner’s brief, 36 TTABVUE 18, n. 3 reads: “Petitioner also has standing based on its common law rights in a confusingly similar mark, namely, MERCI for wine. However, the parties agreed to limit the scope of their discovery to issues pertaining to Registrant’s use of THANK YOU in commerce. See Trial Dates Reset, Dkt. No. 6, p. 5. Therefore, Petitioner has not filed any evidence regarding Petitioner’s common law rights.” Cancellation No. 92058885 9 rely on its allegation of use. This Petitioner has not done.13 Petitioner has not proven its standing on the basis of its alleged common law use of the MERCI mark. However, Respondent makes the following admissions as part of its response to Interrogatory No. 1: (a) Registrant admits the allegations that Modern House Wines LLC has news articles and website(s) for wine sales in association with Swanson Vineyards. (e) The Registrant points to conflicting messages regarding wine-name sales: See Figures B and C, where the Petitioner indicates only three wines are currently available for sale at this time: With Love, Here’s to You, and Expensive. Currently “Merci” nor “Thank You Modern House Wines” are not appear [sic] to be in actual use for sales at this time.14 (k) Registrant admits the registered mark THANK YOU will prohibit the Petitioner[’]s use of marks that could be misleading, confusing or non-unique to marks previously registered and therefore protected by the laws of the United States Trademark and Patent Office (USPTO). See Figures [sic] D. 15 13 Petitioner’s assertions in its brief that it has standing are not recognized as evidence. See, e.g., In re Teledyne Indus., Inc., 696 F.2d 968, 971, 217 USPQ 9, 11 (Fed. Cir. 1982) (in absence of evidence in the record, mere argument of counsel cannot rebut prima facie case of functionality); In re Simulations Publ’ns, Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975) (“Statements in a brief cannot take the place of evidence.”); Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1725 n.7 (TTAB 2010) (assertions in brief not evidence unless supported by evidence introduced at trial or except as admission against interest); TBMP § 704.06(b). 14 Figure B repeats text apparently found on Petitioner’s website that indicates Petitioner “currently produces three labels – With Love, Expensive and Here’s to You, all available at Target stores nationwide.” 17 TTABVUE 13. Figure C is a screenshot also apparently from Petitioner’s website, showing a picture of three bottles of “Modern House Wines.” Id. 15 17 TTABVUE 13. Cancellation No. 92058885 10 The “Status” of the application, as set forth in this screenshot, reads: “An Office action suspending further action on the application has been sent (issued) to the applicant. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page.” No further pages have been included. In essence, Respondent admits that the parties are direct competitors, both being in the wine business. Petitioner has thus shown that it would suffer injury to a commercial interest in reputation or sales in the event Respondent’s registration is not cancelled. This is sufficient to establish Petitioner’s standing. See, e.g., Baroness Small Estates Inc. v. Am. Wine Trade Inc., 104 USPQ2d 1224, 1225 (TTAB 2012) (Petitioner’s registrations for wine established it as being in the wine business and thus directly competitive with respondent); Stuart Spector Designs Ltd v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1553 (TTAB 2009) (parties were either competitors (guitar manufacturers and/or sellers) or retailers of the goods in the applications at issue); Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660, 1662 (TTAB 2009) (finding applicant’s statements sufficient as other evidence to establish opposer’s standing even though opposer did not submit status and title Cancellation No. 92058885 11 copies of its pleaded registrations nor an affidavit or declaration in support of its allegations of use). III. Abandonment With respect to the pleaded ground for cancellation, a mark is considered to be abandoned as a result of nonuse under Section 1127 of the Trademark Act, 15 U.S.C. § 1127: When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. For a mark to be “used” on goods, the goods must be “sold or transported in commerce.” Id. The term “commerce” is defined as “all commerce which may lawfully be regulated by Congress.” Id. Introduction of evidence of nonuse of the mark in commerce for three consecutive years constitutes a prima facie showing of abandonment, whereby intent not to resume use is inferred, and shifts the burden to the party contesting the abandonment to show either evidence sufficient to disprove the underlying facts showing three years of nonuse, or evidence of an intent to resume use to overcome the presumed fact of no intent to resume use. Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); see also Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989); Exec. Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1180 (TTAB 2017) (“Introduction Cancellation No. 92058885 12 of evidence of nonuse of a mark for three consecutive years constitutes a prima facie showing of abandonment and triggers a rebuttable presumption that a mark was abandoned without intent to resume use.”). The ultimate burden of persuasion remains with the party claiming abandonment to prove abandonment by a preponderance of the evidence. Online Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000); West Florida Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1665-6 (Fed. Cir. 1994). The record before us bearing on the question of Respondent’s use of its THANK YOU mark consists solely of Respondent’s responses to discovery requests propounded by Petitioner. Although these responses assert Respondent’s use of its mark on red, white and sparkling wine since October 1, 2009, no invoices or bills of sale are provided. Moreover, in describing its purported use of the mark, Respondent speaks in terms that suggest that while it may have actively promoted its wines, it has not made any actual sales. For example, in its response to Interrogatory No. 6, Respondent states: “Hidden Wineries Inc. continuously promotes/has-promoted sales, has/had sales calls and schedules/has held sales meetings to retailers for wine-sales across the U.S. with the MARK ‘Thank You.’”16 Likewise, in response to Interrogatory No. 3, Respondent states that it conducts “wine sales calls, meetings and promotions,” but not that it has sold wines bearing the mark; in the same response Respondent presented a list of stores at which it made “sales and sales calls and sales meetings,” 16 17 TTABVUE 20. Cancellation No. 92058885 13 without clarifying whether the list referred to any stores to which it made sales, or only stores to which it made calls or held meetings. Also of record is Respondent’s answer to Interrogatory No. 8, which asks for all “Certificates of Label Approval” secured for wines bearing Respondent’s mark. Respondent identified four such labels, each having been approved in December 2014, more than three years from the registration date (April 6, 2010) of Respondent’s registration. These answers suggest that Respondent did not sell wine bearing its mark, if at all, until after December 2014. Although there are no bills of sale or invoices of record, there are documents purporting to show Respondent’s use of its mark.17 The documents, provided by Respondent as part of its discovery responses, primarily comprise letters from web designers or retail store representatives who purportedly attest to Respondent’s sale of wines since 2009, but conspicuously are silent with respect to actual dates of any sales of THANK YOU brand wines. Significantly, none of the documents are authenticated and all of the statements contained therein purporting to show that Respondent has used the mark THANK YOU in commerce are hearsay. Accordingly, the statements are not considered for the truth of the matter. Petitioner also submitted copies of pages from Respondent’s website. None of the pages from hiddenwineries.com show use of the mark. Several pages are identified as being printed from the website “gotcheers.com,” a website apparently operated by 17 17 TTABVUE 29-41. Cancellation No. 92058885 14 Respondent.18 One of these pages invites the user to choose an occasion for which he or she wants to send a wine gift, and one of the choices is “Thank You.”19 However, the pages all bear an access date of April 29, 2015 and do not give any indication of being accessible prior to that date. The web pages are thus of no help to Respondent. We must base our decision on the trial record before us, and the record does not support a finding that Respondent has used the mark THANK YOU for the goods identified in the registration in interstate commerce. In view thereof, the application that matured into Respondent’s registration is void ab initio inasmuch as it was based on Respondent’s allegation of use prior to the filing date pursuant to Trademark Act Section 1(a). Moreover, such record constitutes a prima facie showing of abandonment. The burden thus shifts to Respondent to show evidence of actual use prior to the filing date or an intent to resume use thereafter, to disprove the presumed fact of no intent to resume use. As noted earlier, Respondent did not take testimony or offer any other evidence at trial. The evidence submitted by Petitioner (i.e., Respondent’s discovery responses), as discussed above, tends to show lack of use or is otherwise inadmissible as hearsay. Accordingly, we find that the circumstances surrounding Respondent’s nonuse warrant a finding that Respondent did not use its mark prior to the filing date of the application that matured into its THANK YOU registration and that its subsequent nonuse for three years was accompanied by the 18 17 TTABVUE 71-6. 19 17 TTABVUE 73. Cancellation No. 92058885 15 absence of any intent to resume (or commence) use of the mark in connection with the listed goods. Based on the trial record before us, we conclude that the application that matured into Reg. No. 3771513 is void ab initio and the registration voidable; moreover Respondent has abandoned the registered mark. Decision: The petition for cancellation is granted. Registration No. 3771513 will be cancelled in due course.