Moto Venture, Inc.v.Ride Oklahoma, L.L.C.Download PDFTrademark Trial and Appeal BoardSep 25, 2009No. 91181926 (T.T.A.B. Sep. 25, 2009) Copy Citation Mailed: 25 September 2009 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Moto Venture, Inc. v. Ride Oklahoma, L.L.C. _____ Opposition No. 91181926 to application Serial No. 77216126 _____ Daniel R. Scardino of Jackson Walker L.L.P. for Moto Venture, Inc. Ride Oklahoma, L.L.C., pro se. ______ Before Grendel, Holtzman, and Drost, Administrative Trademark Judges. Opinion by Drost, Administrative Trademark Judge: On June 26, 2007, applicant Ride Oklahoma, L.L.C. filed an application to register the mark Ride Oklahoma, in standard character form, on the Principal Register for “general feature magazine” in Class 16. The application contains an allegation of a date of first use anywhere and in commerce of October 1, 2006, and a disclaimer of the term Oklahoma. On January 16, 2008, Moto Venture, Inc. (opposer) opposed the registration of applicant’s mark on the ground THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91181926 2 that applicant’s mark is likely to cause confusion with opposer’s mark RIDE TEXAS. Opposer claimed common law rights in the mark “RIDE TEXAS for a magazine featuring motorcycles, motorcycling, touring and related topics.” Notice of Opposition at 1. Opposer also claimed ownership of Serial No. 77273057 for the mark RIDE TEXAS, in standard character form. Opposer also alleged that it was using the mark RIDE TEXAS at least as early as 1998. As a result, opposer submits that there is a likelihood of confusion between its mark and the opposed mark. Subsequently, on May 20, 2008, the mark RIDE TEXAS, in standard character form, issued as Registration No. 3430388 under the provision of Section 2(f) of the Trademark Act for “magazines featuring motorcycles, motorcycling, touring and related topics” in Class 16. The dates of first use are listed as 1998 and the application was filed on September 6, 2007. Applicant, in effect, has denied the allegations of the notice of opposition. The Record The record consists of the pleadings, the file of the involved application; and opposer’s Notice of Reliance filed December 19, 2008. Applicant did not submit any evidence during the testimony period. We will discuss the evidence opposer submitted by notice of reliance in the next section. Opposition No. 91181926 3 Evidence Opposer has submitted the following documents with its notice of reliance. A. Applicant’s Answer to the Opposition (Ex. 1) B. Applicant’s Response to Opposer’s Interrogatories, Requests for Production of Documents, and Requests for Admissions (Exhibits 2 and 3) C. Registration and Date of Use (Ex. 4) D. Printed publications (Ex. 5) E. Opposer’s subscriber database (Ex. 6) F. Opposer’s magazine distributor list (Ex. 7) H. Declarations of Miguel and Valerie Asensio (Exhibits 8 – 10) We begin by noting that Exhibit 1, applicant’s answer, is already of record as part of the pleadings in this case. Exhibit 2, which contains applicant’s “Response to Request for Documents”1 and “Response to Interrogatories,” is properly submitted by notice of reliance. 37 CFR 2.120(j)(3)(i) and (5). Exhibit 3, while identified in the Notice of Reliance as “Applicant’s Response to Opposer’s Request for Production June 17, 2008” is actually “Opposer MotoVenture, Inc.’s Discovery Answers to Applicant Ride Oklahoma L.L.C.’s First Set of Interrogatories.” Inasmuch as applicant has not submitted any evidence and answers to interrogatories can be “made part of the record only by the 1 No documents were attached to this response. Opposition No. 91181926 4 receiving or inquiring party,” we will not consider opposer’s submission of its own responses to interrogatories (Ex. 3). 37 CFR § 2.120(j)(5). Exhibit 4 is identified as opposer’s “Registration Certificate and Application File” (Ex. 4). This exhibit consists of a cover letter from opposer’s counsel to opposer forwarding a copy of the recently issued registration certificate, a copy of the registration certificate issued by the USPTO, a notice of publication of opposer’s mark with “Trademark Snap Shot Publication & Issue Review Stylesheet,” and a printout of opposer’s trademark application. There is no basis to submit the letter of opposer’s counsel by notice of reliance so we will not consider it. More importantly, opposer’s registration is a plain copy of the registration certificate issued on May 20, 2008, and submitted by notice of reliance on December 19, 2008. A registration of the opposer or petitioner pleaded in an opposition or petition to cancel will be received in evidence and made part of the record if the opposition or petition is accompanied by an original or photocopy of the registration prepared and issued by the United States Patent and Trademark Office showing both the current status of and current title to the registration, or by a current printout of information from the electronic database records of the USPTO showing the current status and title of the registration. 37 CFR § 2.122(d) (2007). Opposition No. 91181926 5 This copy is not a status and title copy of the registration and we cannot consider it unless an exception applies. Even prior to the change to Trademark Rule 2.122(d) in 2007, there were several ways for a party to introduce a registration it owns into evidence during a board proceeding besides attaching status and title copies to the notice of opposition. A party may also introduce its registration into the record in the following ways: by identification and introduction during the testimony period by a qualified witness who testifies concerning the status and title of the registration; by admission in the applicant’s answer; or by the applicant treating the registration as being of record in its brief. TBMP § 702.03(a) (2d ed. rev. 2004). Inasmuch as opposer did not call any witnesses and applicant’s answer did not contain a relevant admission on this point, the next question is whether applicant treated the registration as being of record. In its brief, applicant does indeed treat the registration as being of record: Opposition No. 91181926 6 Key dates Ride Oklahoma L.L.C. files trademark application Moto Venture files for Ride Texas Ride Oklahoma trademark application published Moto Venture files opposition to Ride Oklahoma Moto Venture awarded Ride Texas trademark June 26, 2007 September 6, 2007 December 4, 2007 January 26, 2008 May 20, 2008 Applicant’s Brief at 4. Inasmuch as applicant discusses the registration, we deem the pleadings to be amended and conclude that applicant has treated this registration as being of record. Exhibit 5 consists of covers of opposer’s magazines, which are printed publications, and they are proper subject of submission by notice of reliance. 37 CFR § 2.122(e). However, “magazine articles … are hearsay in nature and thus are probative not for the truth of the matters contained therein but rather only for what they show on their face.” Logicon, Inc. v. Logisticon, Inc., 205 USPQ 767, 768 n.5 (TTAB 1980). Opposer’s Exhibits 6 and 7 are a list of addresses of its subscribers and its magazine distributors. These are not “[p]rinted publications, such as books and periodicals, available to the general public in libraries or of general circulation among members of the public or that segment of Opposition No. 91181926 7 the public which is relevant under an issue in a proceeding.” 37 CFR § 2.122(e). See, e.g., Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 12 USPQ2d 1270 n.5 (TTAB 1989) (“[P]rinted material in the nature of annual reports is not considered printed publications available to the general public such that it may be relied on pursuant to Rule 2.122(e)”), aff'd, 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990); Andrea Radio Corp. v. Premium Import Co., 191 USPQ 232, 234 (TTAB 1976): Opposer also attempted to introduce into the record by its notice of reliance the following: copies of its annual reports for the years 1967 and 1971; copies of four of its brochures; a copy of its price list; a reprint of an advertisement alleged to have been published by a retailer; reprints of advertisements alleged to have been published; and copies of advertising mats alleged to have been furnished by opposer to its retailers for use in newspaper and magazine advertising. These items are not shown to be printed publications available to the general public in libraries or of general circulation and are not in evidence. Therefore, we will not consider Exhibits 6 and 7. Finally, opposer has submitted three declarations from Miguel and Valerie Asensio. “By written agreement of the parties, the testimony of any witness or witnesses of any party, may be submitted in the form of an affidavit by such witness or witnesses.” 37 CFR § 2.123(b). Inasmuch as there is no written stipulation of record, we will not consider these declarations. Opposition No. 91181926 8 Ultimately, we will only consider opposer’s Exhibits 1, 2, 4 and 5 to be of record. We point out that opposer “may not reasonably presume evidence is of record when that evidence was not offered in accordance with the Trademark Rules.” See Original Appalachian Artworks Inc. v. Streeter, 3 USPQ2d 1717, 1717 n.3 (TTAB 1987). Similar to this case, the board held that “applicant, an individual acting pro se, filed neither evidence nor a brief on the case; we cannot say, therefore, that as the result of any action or statement, he treated as being of record the material improperly offered by notice of reliance.” Id. Nothing in applicant’s brief indicates that applicant treated the excluded evidence to be of record. Preliminary Issues “Opposer requests dismissal sanction for applicant’s failure to provide discovery.” Brief at 8. Opposer contends that applicant’s response to its interrogatories and requests for production of documents consisted of “prevarications, derisive jokes, and general evasion. Applicant has employed childish tactics in an apparent effort to mock this forum.” Brief at 9. Opposer further “asks that the Board strike any evidence not submitted in accordance with the Board rules. Applicant [sic] also requests that the Board submit a default judgment for Opposer in the instant proceeding as a sanction for Opposition No. 91181926 9 Applicant’s discovery abuse.” Brief at 11. Inasmuch as applicant has not submitted any evidence, opposer’s request to strike applicant’s evidence is moot. Regarding opposer’s request for a sanction of a default judgment, we note that “[i]f a party that served a request for discovery receives a response thereto which it believes to be inadequate, but fails to file a motion to test the sufficiency of the response, it may not thereafter be heard to complain about the sufficiency thereof.” TBMP § 523.04 (2d. ed. rev. 2004). Inasmuch as opposer did not challenge applicant’s responses to its interrogatories and requests for production of documents, its request for sanctions is denied. See Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1656 (TTAB 2002) (“We note that, despite her apparent dissatisfaction with opposer’s interrogatory responses, applicant never filed a motion to compel further responses from opposer; applicant will not now be heard to complain that opposer’s discovery responses were inadequate”). Next we must consider whether opposer has standing to bring this opposition proceeding. An opposer must have “a ‘real interest’ in the outcome of a proceeding in order to have standing.” Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). “To establish a reasonable basis for a belief that one is damaged by the registration sought to be cancelled, a petition may assert a Opposition No. 91181926 10 likelihood of confusion which is not wholly without merit.” Lipton Industries v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).2 Opposer’s submission of a registration that sets out a non-frivolous claim of likelihood of confusion shows that it has standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (“These registrations and the products sold under the mark they register suffice to establish Laser Golf’s direct commercial interest and its standing to petition for cancellation of Cunningham’s LASERSWING mark”). Also, as a result of opposer’s registration (No. 3430388) being of record, opposer has priority. See King Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). Likelihood of Confusion The next question is whether there is a likelihood of confusion in a situation where the marks are RIDE TEXAS for magazines featuring motorcycles, motorcycling, touring and related topics and RIDE OKLAHOMA for a general feature magazine. In these cases, we analyze the facts as they relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 2 Because of the linguistic and functional similarities of the opposition and cancellation provisions of the Lanham Act, “we construe the requirements of those two sections of the Lanham Act consistently.” Ritchie, 50 USPQ2d at 1025 n.2. Opposition No. 91181926 11 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). One important factor in likelihood of confusion cases is the relationship between the goods of the parties. We must consider the goods as they are identified in the identification of goods in the application and registration. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed”) and Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods”). We also do not read limitations into a registration’s or application’s identification of goods. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983). Opposition No. 91181926 12 Opposer’s magazine features motorcycles, motorcycling, touring and related topics. Applicant’s goods are a general feature magazine but applicant admits that its magazines feature motorcycles and motorcycling. Applicant’s Brief at 3 (“Our magazine was developed to showcase Oklahoma motorcycle riding destinations and people”). Therefore, the goods are at least overlapping. “When marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). Furthermore, when the goods are identical, the channels of trade and purchasers are also presumed to be the same. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in- part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers”). Opposition No. 91181926 13 Next, we look at the “DuPont factor [that] requires examination of ‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.’” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). Both applicant’s and opposer’s marks are in standard character form so there is no difference based on the display of the mark. They can be presumed to be displayed in the same style. ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351, 1359 (TTAB 2007) (Applicant’s mark “is shown in standard character format. Hence, we must consider that applicant’s mark is not limited to any special form or style as displayed on its goods”); and In re Cox Enterprises Inc., 82 USPQ2d 1040, 1044 (TTAB 2007)(“We must also consider that applicant’s mark, presented in typed or standard character form, is not limited to any special form or style as displayed on its goods”). Thus, the marks are similar because they both begin with the word “Ride” and they differ because the second word in the marks is a different state, TEXAS and OKLAHOMA. We note that opposer has submitted applicant’s response to its interrogatories that includes a list of marks that contain the word “Ride” and their serial and registration numbers. Opposition No. 91181926 14 Since we have no indication of what the goods or services in these registrations3 are, we cannot give this evidence any weight.4 In re Melville Corp., 18 USPQ2d 1386, 1388-89 (TTAB 1991) (“Registrations for goods unrelated to the clothing field are irrelevant to our discussion”); SBS Products Inc. v. Sterling Plastic & Rubber Products Inc., 8 USPQ2d 1147, 1149 n.6 (TTAB 1988) (“[E]ven if evidence of such third-party use were submitted, it would be of no aid to respondent herein where the third-party usage was for goods unrelated to either petitioner’s skin care products or respondent’s stuffing box sealant”); and Anderson, Clayton & Co. v. Christie Food Products Inc., 4 USPQ2d 1555, 1557 n.7 (TTAB 1987) (“The other third-party registrations relating to marks in unrelated fields are of no probative value”). Accord Palm Bay Imports, 73 USPQ2d at 1693 (“Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection”) (emphasis added). When we compare applicant’s and registrant’s marks, we find that they are more similar than different. They both 3 References to trademark applications are not relevant. Glamorene Products Corp. v. Earl Grissmer Co., Inc., 203 USPQ 1090, 1092, n.5 (TTAB 1979) (“The filing of a notice of reliance upon third-party applications is a futile act because copies of those applications or the publication thereof in the Official Gazette is evidence only of the filing of the applications and nothing else”). 4 Applicant’s reference to another RIDE mark in its brief is not evidence and we will not consider it. Brief at 4. Opposition No. 91181926 15 begin with the word “Ride” and the only difference is that the second word is the name of a state, Texas and Oklahoma. The first word is often important in determining whether the marks are similar. Palm Bay, 73 USPQ2d at 1692 (“To be sure, CLICQUOT is an important term in the mark, but VEUVE nevertheless remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label. Not only is VEUVE prominent in the commercial impression created by VCP’s marks, it also constitutes ‘the dominant feature’ in the commercial impression created by Palm Bay’s mark”). Texas and Oklahoma are states that share a common border. Notice of Reliance, Ex. 2, Request No. 2. Applicant’s magazine “occasionally ha[s] a feature about a ride to Texas.” Answer, ¶ 3. The terms RIDE TEXAS and RIDE OKLAHOMA are similar in sound, appearance, meaning, and commercial impression because they begin with the same word Ride. While they end with a difference state name, this is not as significant, particularly regarding their meaning and commercial impression. When used in association with the goods, both have a similar meaning and commercial impression of motorcycling in the South West. Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1283 (Fed. Cir. 1984) (“It is the similarity of commercial impression between SPICE VALLEY and SPICE ISLANDS that weighs heavily against the applicant as applied to Opposition No. 91181926 16 identical goods”). See also Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974) (FROSTY AIR and FROSTEMP similar). Potential readers are likely to assume that there is some association between the source of RIDE OKLAHOMA and RIDE TEXAS magazines, when the subject matter of the magazines is motorcycling. We add that the absence of actual confusion does not mean there is no likelihood of confusion. Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991). The test is likelihood of confusion. Also, the fact that applicant was “very careful in [their] first issue and all subsequent issues to clearly state that Ride Oklahoma Magazine was owned, published and distributed in Oklahoma”5 and that it has “published editorials about the difference between Ride Oklahoma Magazine and Ride Texas Traveler6 so that [their] readers and advertisers don’t confuse the two” (Brief at 3-4) is not significant. None of these features appears in the application, which is what we must consider. An applicant cannot point to other matter that it uses on its specimens or promotional material that are not part of 5 Applicant does acknowledge that it has a distributor of its magazines in Sherman, Texas, and that it mails its magazines to subscribers outside the state of Oklahoma. Notice of Reliance, Ex. 2, Request No. 30 6 The registered mark is RIDE TEXAS. Opposition No. 91181926 17 its mark that it presented for registration to avoid confusion. Dan Robbins & Associates, Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 104 n.6 (CCPA 1979) (“The board improperly emphasized the contents of the book submitted as a specimen… The mark, not the specimen, is submitted for registration”). In this case, when we consider the fact that both applicant’s and opposer’s goods include magazines about motorcycling that are assumed to be sold to the same purchasers in the same channels of trade, when the marks RIDE TEXAS and RIDE OKLAHOMA are used on these goods, we hold that confusion is likely. Decision: The opposition to the registration of application Ser. No. 77216126 is sustained. Copy with citationCopy as parenthetical citation