Mr Daniel B Cichlar Jrv.Phibian Gear, Inc.

Trademark Trial and Appeal BoardAug 4, 2021

91245007 (T.T.A.B. Aug. 4, 2021)

Mailed: August 4, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Daniel B. Cichlar, Jr. v. Phibian Gear, Inc. _____ Opposition No. 91245007 _____ Bryan K. Wheelock and Joel R. Samuels of Harness, Dickey & Pierce, P.L.C. for Daniel B. Cichlar, Jr. Anthony M. Verna III, of Verna Law, P.C. for Phibian Gear, Inc. _____ Before Zervas, Bergsman and Greenbaum, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Opposer and Applicant’s principals purportedly had a business relationship. Now the only thing they have in common is that each believes it owns the stylized letter “P” mark at issue in connection with scuba fins. This Opinion Is Not a Precedent of the TTAB Precedent of the TTAB PrePrecedent of the TTAB Opposition No. 91245007 - 2 - Phibian Gear, Inc. (Applicant) seeks registration on the Principal Register of the stylized letter “P,” reproduced below, for “scuba fins,” in International Class 28.1 The description of the mark in the application reads as follows: The mark consists of an oval or egg shaped circle encompasses a representation of the letter “P” that is meant to depict an evolutionary amphibian emerging from the water. Color is not claimed as a feature of the mark. Daniel B. Cichlar, Jr. (Opposer) opposes the registration of Applicant’s mark under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), on the ground that Applicant’s mark may falsely suggest a connection with Opposer, and under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles Opposer’s stylized “P” logo, reproduced below, for scuba fins as to be likely to cause confusion. 1 Serial No. 87834477 filed March 14, 2018, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use of its mark anywhere as of May 16, 2016 and first use of its mark in commerce as of July 14, 2017. Opposition No. 91245007 - 3 - In addition, Opposer alleges that Applicant is not the owner of the mark and that Applicant has not made use of the mark based on the following allegations: ● Paul Robinson, James “Jay” Atherton, Chris Donahue (Opposer’s brother), and Opposer formed X Factor Engineering Group, LLC “for the purpose of manufacturing, marketing and selling the retractable [scuba] fin.”2 ● Paul Robinson, Jay Atherton, Chris Donahue and Opposer “jointly developed the stylized letter “P” logo as part of the X Factor Engineering Group LLC’s business venture.”3 ● “On or around March 15, 2016, [Paul Robinson and Jay Atherton] formed Applicant Phibian Gear, Inc. for the purpose of selling the retractable fin product. [Chris Donahue and Opposer] are not members, shareholders or officers of Applicant. [Chris Donahue and Opposer] did not provide [Paul Robinson and Jay Atherton] with approval or authorization to create Applicant.”4 and 2 Notice of Opposition ¶¶1, 2, and 4 (1 TTABVUE 3-4). Opposer, in its brief, admits that Opposer “is a former business partner of the two partners who have formed the entity that is the Applicant in this case.” Applicant’s Brief, p. 5 (36 TTABVUE 6). 3 Notice of Opposition ¶5 (1 TTABVUE 4). 4 Notice of Opposition ¶11 (1 TTABVUE 5). Opposition No. 91245007 - 4 - ● “On information and belief, Applicant does not have exclusive rights to use the Stylized P logo, and is not the sole owner of the Stylized P logo, and has not made bona fide use of the Stylized P logo in commerce.”5 (Emphasis added). Applicant, in its Answer, denies all the allegations in the Notice of Opposition. I. The Record The record includes the pleadings, and pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Applicant’s application file. Opposer introduced his testimony declaration with attached exhibits.6 5 Notice of Opposition ¶20 (1 TTABVUE 6). Opposer’s claim that “Applicant does not have the exclusive right to use the Stylized P logo, and is not the sole owner of the Stylized P logo, and has not made bona fide use of the Stylized P logo in commerce” is an allegation that Applicant’s application is void ab initio because Applicant is not the owner of the trademark at issue and that Applicant has not used the trademark in issue in violation of Section 1(a) of the Trademark Act, 15 U.S.C. § 10511(a) (“The owner of a trademark used in commerce may request registration of its trademark on the principal register.”). Opposer expressly enumerated the statutory basis for the claim in the ESTTA cover sheet. We read the content of the ESTTA cover sheet as an integral component of the notice of opposition. See PPG Indus. Inc. v. Guardian Indus. Corp., 73 USPQ2d 1926, 1928 (TTAB 2005) (the Board views the ESTTA filing form and any attachments thereto, including the formal notice of opposition, as comprising a single document or paper filed with the Board). 6 16 TTABVUE. Opposer posted Exhibits 1-45 at 16 TTABVUE 60-327, Exhibits 46-90 at 13 TTABVUE, Exhibits 91-150 at 14 TTABVUE, and Exhibits 151-179 at 15 TTABVUE. However, Opposer identified his exhibits by the Bates numbers used to identify its discovery document production and not by exhibit number, thus, making it difficult to identify the documents in the record. “Because the Board primarily uses TTABVUE in reviewing evidence, the Board prefers that citations to material or testimony in the record that has not been designated confidential include the TTABVUE docket entry number and the TTABVUE page number. For material or testimony that has been designated confidential and which does not appear on TTABVUE, the TTABVUE docket entry number where such material or testimony is located should be included in any citation.” Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Opposition No. 91245007 - 5 - Because Applicant did not timely file its testimony and other evidence, the Board granted Opposer’s motion to strike Applicant’s notices of reliance and testimony in its December 15, 2020 order.7 Therefore, Applicant did not introduce any testimony or other evidence. Inasmuch as the Board struck Applicant’s testimony and other evidence, we will not consider Opposer’s rebuttal testimony with attached exhibits, as there is nothing to rebut. See Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1632 (TTAB 2007) (the proper purpose of the rebuttal period is to introduce evidence denying, explaining, or discrediting applicant's evidence, not to prove opposer's case-in-chief). II. Underlying Facts In August 2009, Opposer and his brother, Chris Donahue developed a versatile, user-friendly scuba fin with a retractable blade portion.8 In December 2012, Chris Donahue and Opposer drafted a business plan for marketing the scuba fin, referred to as the PHIBIAN scuba fin, on behalf of X Factor Engineering Group, LLC.9 The plan identifies the management team of X Factor Engineering Group as Christopher Donahue, Opposer, Paul Robinson, and a yet to be named individual with an MBA or similar degree.10 Paul Robinson acknowledged See also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE §§ 106.03, 801.01, 803.03 (2021). 7 30 TTABVUE. 8 Opposer’s Testimony Decl. ¶2 (16 TTABVUE 3). 9 Opposer’s Testimony Decl. ¶¶11, 28 and Exhibit 4 (16 TTABVUE 5, 8-9, and 71-89). 10 16 TTABVUE 75 and 83. Opposition No. 91245007 - 6 - receipt of the business plan in an email dated December 27, 2012 and recommended Jay Atherton for the open management position.11 On January 4, 2013, Jay Atherton registered the domain name on behalf of X Factor Engineering Group, LLC.12 On January 5, 2013, Opposer, Chris Donahue, and Paul Robinson created X Factor Engineering Group, LLC. Opposer, Chris Donahue, and Paul Robinson were the founding members. They divided their responsibilities as follows: Chris Donahue – Chairman and COO Jay Atherton – CEO Paul Robinson – President and CMO Opposer – CFO13 Jay Atherton registered X Factor Engineering Group, LLC with the Indiana Secretary of State on January 5, 2013.14 Jay Atherton listed himself as the registered agent. Opposer owns 19% of the shares of X Factor Engineering.15 On January 5, 2013, Jay Atherton assigned email addresses to the X Factor Engineering Group members at .16 11 Opposer’s Testimony Decl. ¶¶12 and 29 and Exhibit 5 (16 TTABVUE 5, 9, and 90). 12 Opposer’s Testimony Decl. ¶41 and Exhibit 17 (16 TTABVUE 13 and 120-122). 13 Opposer’s Testimony Decl. ¶¶7, 56, and Exhibit 32 (16 TTABVUE 4, 19-20, and 162-178). 14 Opposer’s Testimony Decl. ¶¶20, 44 and Exhibit 20 (16 TTABVUE 7, 14, and 125-128). 15 Opposer’s Testimony Decl. ¶91 and Exhibit 67 (16 TTABVUE 32-33 and 13 TTABVUE 248- 250). 16 Opposer’s Testimony Decl. ¶45 Exhibit 21 (16 TTABVUE 14 and 129-130). Opposition No. 91245007 - 7 - On January 9, 2013, Paul Robinson emailed sketches of logo ideas, including the stylized letter “P” logo at issue in this case, to Jay Atherton, Chris Donahue and Opposer based on the above-noted draft business plan.17 On January 24, 2013, Paul Robinson posted a “Phibian Airborne Video” on YouTube.com. In the comments, Mr. Robinson referred to the collapsible fin developed for the Seal Teams as “the first of many revolutionary products that The X Factor Engineering Group, LLC has under patent.”18 On January 31, 2013, Jay Atherton created a PowerPoint presentation for X Factor Engineering Group, LLC identifying the following roster of people and positions:19 ● Christopher Donahue, Chairman and COO ● Jay Atherton, CEO ● Paul Robinson as President and CMO ● J. Mike Williams, as Special Advisor for Engineering and Manufacturing ● Opposer as CFO On February 7, 2013, Jay Atherton, Chris Donahue, Mike Williams, and Opposer met and agreed to adopt that the stylized “P” logo designed by Paul Robinson.20 “The 17 Opposer’s Testimony Decl. ¶¶14, 49 and Exhibit 25 (16 TTABVUE 6, 15, and 142-145). 18 Opposer’s Testimony Decl. ¶168 and Exhibit 151 (16 TTABVUE 57-58 and 15 TTABVUE 4). 19 Opposer’s Testimony Decl. ¶56 and Exhibit 32 (16 TTABVUE 19-20 and 162-178). 20 Opposer’s Testimony Decl. ¶15 (16 TTABVUE 6). Opposition No. 91245007 - 8 - logo was then used by all team members in marketing the Phibian Fin, including promotional videos.”21 Since the creation of the stylized “P” logo in 2013, Opposer has “used the logo on marketing materials such as shirts, stickers, website, Facebook page, and brochures have been purchased or created using the stylized ‘P’ logo.”22 On February 13, 2013, Paul Robinson emailed Jay Atherton, Chris Donahue and Opposer draft screen shots of the website featuring the stylized “P” logo at issue.23 The draft website includes the following:24 Phibian Scuba Find Is A Product of X Factor Engineering Group LLC. Management Team CEO Jay Atherton COO Chris Donahue CFO Christine President Marketing Sales [Opposer] Executive Vice President Marketing Sales Paul Robinson 21 Opposer’s Testimony Decl. ¶16 (16 TTABVUE 6). 22 Opposer’s Testimony Decl. ¶22 (16 TTABVUE 7). Because Opposer previously testified “The logo was then used by all team members in marketing the Phibian Fin, including promotional videos” (note 22 supra), we find that Opposer used the marketing materials to promote the scuba fin. 23 Opposer’s Testimony Decl. ¶63 and Exhibit 39 (16 TTABVUE 22 and 208-211). 24 16 TTABVUE 210. Opposition No. 91245007 - 9 - On April 17, 2013, Jay Atherton set up a LinkedIn X Factor Engineering Group, LLC business profile identifying Chris Donahue as administrator.25 On July 30, 2014, Paul Robinson called for a sales meeting with Opposer and Jay Atherton.26 In an email dated May 19, 2015, from G. Pascal to Chris Donahue, Chief Engineer of X Factor Engineering Group, LLC, Mr. Pascal requested a quotation for “2x Phibian fins” for delivery to Japan.27 In an email dated October 29, 2015, Paul Robinson reported to Chris Donahue that “we sold 4 pair of fins that shipped out to japan [sic] last week they received them and had a broken buckle on one” and requested a replacement buckle.28 On March 15, 2016, Paul Robinson registered the articles of incorporation for Applicant naming himself as the registered agent.29 In an email dated April 15, 2016, from Chris Donahue to Christina Burk, Chris Donahue reported that X Factor Engineering Group, LLC dissolved, that Donahue is starting new entity in his name only for manufacturing, and that the Seals have sent a purchase order for 11 pair of fins, and that there are “5 military vendors that are 25 Opposer’s Testimony Decl. ¶73 and Exhibit 49 (16 TTABVUE 25 and 13 TTABVUE 11). 26 Opposer’s Testimony Decl. ¶110 and Exhibit 88 (16 TTABVUE 39 and 13 TTABVUE 351). 27 Opposer’s Testimony Decl. ¶122 and Exhibit 100 (16 TTABVUE 42 and 14 TTABVUE 20- 26). 28 Opposer’s Testimony Decl. ¶123 and Exhibit 103 (16 TTABVUE 42 and 14 TTABVUE 42). 29 Opposer’s Testimony Decl. ¶124 and Exhibit 107 (16 TTABVUE 42-43 and 14 TTABVUE 55-56). Opposition No. 91245007 - 10 - ordering 15 pair a piece for a total of 75 pair and ADS wants a hundred pair ASAP.”30 Nevertheless, in an email dated July 22, 2016, from Chris Donahue to Paul Robinson regarding “upgraded engineering designs for Phibian Collapsible Fins,” Donahue identified himself as the “Chief Engineer” of X-Factor Engineering Group, LLC.31 In an undated email exchange between Opposer and Chris Donahue, Donahue stated that the money for the Seals order came through and that Paul Robinson said to keep manufacturing the fins because they can sell as many as Donahue can build.32 On April 20, 2016, Paul Robinson sent an email to Chris Donahue with “new percentage breakdowns on fin sales, 30% to Paul Robinson 70% to Chris Donahue.”33 In a text message exchange on May 2, 2016, between Chris Donahue and Opposer, Donahue and said that Paul Robinson wanted “11 pair by the 20th May” and Jay Atherton “is working on another contract as we speak for 50 pair.”34 Opposer asked 30 Opposer’s Testimony Decl. ¶125 and Exhibit 109 (16 TTABVUE 43 and 14 TTABVUE 63). 31 Opposer’s Testimony Decl. ¶143 and Exhibit 128 (16 TTABVUE 49 and 14 TTABVUE 114). In the attached specifications, Donahue described himself as the Chief Engineer for Phibian Gear. (14 TTABVUE 116). Subsequently, in an August 1, 2016 email from Chris Donahue to Paul Robinson, Donahue identified himself as the Chief Engineer for Industry Solutions, LLC. Opposer’s Testimony Decl. ¶144 and Exhibit 129 (16 TTABVUE 49 and 14 TTABVUE 118). In an August 4, 2016 email from Chris Donahue to Paul Robinson, Donahue again identified himself as the Chief Engineer of X-Factor Engineering Group, LLC. Opposer’s Testimony Decl. ¶145 and Exhibit 130 (16 TTABVUE 50 and 14 TTABVUE 121). Based on these documents, Christopher Donahue designs scuba fins in his capacity as Chief Engineer for X Factor Engineering Group, LLC, Applicant, and Industry Solutions, LLC. 32 Opposer’s Testimony Decl. ¶126 and Exhibit 111 (16 TTABVUE 43 and 14 TTABVUE 66). 33 Opposer’s Testimony Decl. ¶127 and Exhibit 112 (16 TTABVUE 43-44 and 14 TTABVUE 67-69). 34 Opposer’s Testimony Decl. ¶131 and Exhibit 116 (16 TTABVUE 35 and 14 TTABVUE 73). Opposition No. 91245007 - 11 - Donahue “[a]re we getting personal accounts set up for dividends?” to which Donahue replied, “[y]ou can set one up whenever you want.”35 On August 8, 2016, Paul Robinson sent an email to Chris Donahue, “Chief Engineer X-Factor Engineering Group, LLC,” reporting on the quality issues with the scuba fins.36 On August 25, 2016, Paul Robinson sent an email to Chris Donahue and Jay Atherton with a demonstration video of how to work and set up the scuba fin.37 On November 2, 2016, Paul Robinson sent Chris Donahue an email transmitting an offer to purchase all the rights in the scuba fin.38 On March 14, 2018, Applicant filed its application for the stylized letter “P” logo at issue in this proceeding. As noted above, Paul Robinson created the stylized “P” logo,39 which the members of X Factor Engineering Group, LLC. approved and used in marketing the scuba fin.40 35 Id. 36 Opposer’s Testimony Decl. ¶146 and Exhibit 131 (16 TTABVUE 50 and 14 TTABVUE 122). 37 Opposer’s Testimony Decl. ¶148 and Exhibit 133 (16 TTABVUE 51 and 14 TTABVUE 126). 38 Opposer’s Testimony Decl. ¶152 and Exhibit 138 (DC760-762) (16 TTABVUE 52 and 14 TTABVUE 142-143). 39 Opposer’s Testimony Decl. ¶¶14, 49 and Exhibit 25 (16 TTABVUE 6, 15, and 142-145). 40 Opposer’s Testimony Decl. ¶16 (16 TTABVUE 6). Opposition No. 91245007 - 12 - III. Entitlement to a statutory cause of action41 Opposer’s entitlement to a statutory cause of action, formerly referred to as “standing” by the Federal Circuit and the Board, is an element of the plaintiff’s case in every inter partes case. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277 (Fed. Cir. 2020) ), cert. denied, ___ S. Ct. ___ (2021); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 (Fed. Cir. 2020), reh’g en banc denied 981 F.3d 1083, 2020 USPQ2d 11438 (Fed. Cir. 2020), petition for cert. filed; Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish entitlement to a statutory cause of action, a plaintiff must demonstrate: (i) an interest falling within the zone of interests protected by the statute and (ii) a reasonable belief in damage proximately caused by the registration of the mark. Corcamore, 2020 USPQ2d 11277 at *4. See also Empresa Cubana, 111 USPQ2d at 1062; 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, 189 (TTAB 1982). To prove an interest falling within the zone of interests protected by the statute, “a plaintiff need only show that it has a real interest, that is, a personal stake in the outcome of the proceeding.” Ritchie v. Simpson, 50 USPQ2d at 1026. Opposer has demonstrated a real commercial interest in the stylized letter “P” logo at issue 41 Even though we now refer to standing as entitlement to a statutory cause of action, our prior decisions and those of the Federal Circuit interpreting “standing” under §§ 1063 and 1064 remain applicable. Opposition No. 91245007 - 13 - through Opposer’s testimony disputing Applicant’s ownership of the mark. For example, ● Opposer testified he used the stylized letter “P” logo before the filing date of Applicant’s application.42 ● Opposer testified he “personally used the fin logo on the prototype made which is depicted in the “specimen” submitted along with [Applicant’s] trademark application for the Stylized P logo.”43 ● Opposer testified that the members of X Factor Engineering Group, LLC also used the logo prior to the filing date of Applicant’s application.44 Accordingly, Opposer concluded, “[b]ased on my personal history and involvement with the Stylized P logo, I do not believe that [Applicant] has the exclusive right to use the Stylized P logo.”45 See Uveritech, Inc. v. Amax Lighting, Inc., 115 USPQ2d 1242, 1245 (TTAB 2015) (“The dispute over ownership of the mark also establishes standing.”). Opposer has a reasonable basis in its belief that registration of Applicant’s mark will damage Opposer because Opposer is using the stylized letter “P” logo to identify scuba fins he is trying to sell.46 See Australian Therapeutic Supplies, 2020 USPQ2d 42 Opposer’s Testimony Decl. ¶¶17-18, 22 (16 TTABVUE 6-7). 43 Opposer’s Testimony Decl. ¶17 (16 TTABVUE 6). 44 Opposer’s Testimony Decl. ¶¶15-16 (16 TTABVUE 6). 45 Opposer’s Testimony Decl. ¶23 (16 TTABVUE 7). 46 See note 29. See also Opposer’s Testimony Decl. ¶24 (16 TTABVUE 7-8) (“Further, if [Applicant’s] application for the Stylized P logo is allowed to register[,] I will encounter a Opposition No. 91245007 - 14 - 10837, *4 (“A petitioner may also demonstrate a real interest and reasonable belief of damage by producing and selling merchandise bearing the registered mark.”) (citing Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (citing Int’l Order of Job’s Daughters v. Lindeburg & Co., 727 F.2d 1087, 220 USPQ 1017, 1020 (Fed. Cir. 1984))); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) (“To establish a reasonable basis for a belief that one is damaged by the registration sought to be cancelled, a petition may assert a likelihood of confusion which is not wholly without merit.”); Executive Coach Builders, Inc. v. SPV Coach Co., Inc., 123 USPQ2d 1175, 1179 (TTAB 2017) (same). By demonstrating that he has a real commercial interest in the stylized letter “P” logo and that he has a reasonable basis in his belief that he will damaged by the registration of Applicant’s mark, Opposer has proven his entitlement to a statutory cause of action. Applicant contends that Opposer does not have standing. Opposer discusses developing the Mark at its previous business entity. However, Opposer does not discuss the use of the Mark in commerce at the previous business entity. And Opposer does not discuss the use of the Mark after the previous business entity broke up. Even Opposer’s website contains a version of the Mark from the USPTO file – it was obviously copied from the file – therefore, Opposer’s website cannot show use of the Mark.47 First, as noted above, Opposer testified about his “personal” use of the mark. monetary loss and a loss of valuable time over the past ten years that I have spent designating, building, and creating marketing material for the fin.”). 47 Applicant’s Brief, p. 7 (36 TTABVUE 8). Opposition No. 91245007 - 15 - Second, Opposer did proffer testimony about the use of the mark by “the previous business entity.”48 Third, there is no evidence of record regarding the dissolution of the previous business entity.49 Finally, there is no evidence of record to support Applicant’s contention that Opposer’s website contains a version of the mark from the USPTO file. In fact, Opposer proffered the only testimony related to this point. Opposer testified he made the fin prototype Applicant used as its specimen submitted as part of Applicant’s application.50 IV. Whether Applicant has made use of the stylized “P” logo. As discussed above, Opposer, Christopher Donahue, and Applicant’s principals (Jay Atherton and Paul Robinson) formed X Factor Engineering Group, LLC to market a scuba fin the LLC would identify by the stylized letter “P” logo.51 “The logo was then used by all team members in marketing the Phibian Fin, including promotional videos.”52 X Factor Engineering Group, LLC held itself out to the public 48 Opposer’s Testimony Decl. ¶¶15-16, 168 and Exhibit 151 (16 TTABVUE 6, 57-58 and 15 TTABVUE 4). See also Opposer’s Testimony Decl. ¶122 and Exhibit 100 (16 TTABVUE 42 and 14 TTABVUE 20-21) (an email exchange between Chris Donahue, Chief Engineer for X Factor Engineering Group, LLC, to a prospective customer). 49 There is an email dated April 15, 2016, from Chris Donahue to Christina Burk referring to the dissolution of X Factor Engineering Group, LLC, but it is hearsay. Opposer’s Testimony Decl. ¶125 and Exhibit 109 (16 TTABVUE 43 and 14 TTABVUE 63). 50 Opposer’s Testimony Decl. ¶17 (16 TTABVUE 6). 51 Opposer’s Testimony Decl. ¶¶7, 14, 15, 49, 56, and Exhibits 25 and 32 (16 TTABVUE 4, 6, 19-20, 142-145, and 162-178). 52 Opposer’s Testimony Decl. ¶16 (16 TTABVUE 6). Opposition No. 91245007 - 16 - as the source of the scuba fin.53 In this regard, since the creation of the stylized “P” logo in 2013, Opposer has used the logo on marketing materials such as shirts, stickers, website, Facebook page, and brochures.54 In 2015, X Factor Engineering Group, LLC sold scuba fins to a customer in Japan,55 as well as sales to different entities in 2016.56 The only testimony or other evidence regarding Applicant’s use of the stylized letter “P” logo is Opposer’s testimony that Paul Robinson created the stylized “P” logo,57 which the members of X Factor Engineering Group, LLC. approved and used in marketing the scuba fin.58 Specifically, [Opposer] personally used the fin logo on the prototype made which is depicted in the “specimen” submitted along with Phibian Gear’s trademark application for the stylized P logo. This specimen was created for demonstrative purposes and testing. To the best of my knowledge, at the time that this specimen was made, there were no actual sales of the product. This specimen was not created by Paul Robinson or Jay Atherton. It was manufactured by Chris Donahue and mailed to Jay Atherton. Paul Robinson or Jay Atherton do not have the molds to create a pair of The Phibian Fins. Each mold and all prototype fins were created and built in Bethalto, IL at 53 Opposer’s Testimony Decl. ¶¶56, 73, 168 and Exhibits 32, 49, 151 (16 TTABVUE 19-20, 57- 58, and 162-178, 13 TTABVUE 11, and 15 TTABVUE 4). 54 Opposer’s Testimony Decl. ¶22 (16 TTABVUE 7). 55 Opposer’s Testimony Decl. ¶¶122 and 123 and Exhibits 100 and 103 (16 TTABVUE 42 and 14 TTABVUE 20-26 and 42). 56 Opposer’s Testimony Decl. ¶¶126, 131, and 146 and Exhibits 111, 116, and 131 (16 TTABVUE 43 and 50 and 14 TTABVUE 66, 73, and 122). 57 Opposer’s Testimony Decl. ¶¶14, 49 and Exhibit 25 (16 TTABVUE 6, 15, and 142-145). 58 Opposer’s Testimony Decl. ¶16 (16 TTABVUE 6). Opposition No. 91245007 - 17 - Chris Donahue’s garage facility by Chris or [Opposer]. The molds that created this fin is in [Opposer’s] possession.59 Applicant did not introduce any testimony or evidence with respect to its sales of scuba fins or other use of the stylized letter “P” logo.60 Because Opposer introduced testimony that Applicant did not make use of the mark when it filed its application and Applicant has not countered that testimony, there is no evidence that Applicant made use of the stylized letter “P” logo at the time it filed its use-based application, the application is void ab initio and we sustain the opposition and refuse to register Applicant’s mark. “The registration of a mark that does not meet the use requirement is void ab initio.” Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 157) (Fed. Cir. 2009) (citing Gay Toys, Inc. v. McDonald's Corp., 585 F.2d 1067, 199 USPQ 722, 723 (CCPA 1978) (because applicant did not use the mark in commerce in association with the goods, its application is void)); United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1044-46 (TTAB 2014) (application void ab initio for nonuse in connection with 59 Opposer’s Testimony Decl. ¶17 (16 TTABVUE 6). 60 Pursuant to Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1), “[t]he testimony of witnesses in inter partes cases may be submitted 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, subject to the right of any adverse party to elect to take and bear the expense of oral cross-examination of that witness as provided under paragraph (c) of this section.” “When a party elects to take oral cross-examination of an affiant or declarant, the notice of such election must be served on the adverse party and a copy filed with the Board within 20 days from the date of service of the affidavit or declaration and completed within 30 days from the date of service of the notice of election.” Trademark Rule 2.123(c), 37 C.F.R. § 2.123(c). After reviewing Opposer’s declaration, Applicant did not elect to cross-examine Opposer. Opposition No. 91245007 - 18 - services); Grand Canyon West Ranch, LLC. v. Hualapai Tribe, 78 USPQ2d 1696 (TTAB 2006) (“The case law is clear that holding an application to be void is an appropriate remedy when the pleaded ground either is fraud, or that the applicant has not used the applied-for mark on any of the goods or services identified in the application prior to the filing of the application.”); Am. Hygienic Labs. Inc. v. Tiffany & Co., 12 USPQ2d 1879, 1984 (TTAB 1979) (Because applicant has made no use of the mark TIFFANY on any of the goods set forth in its application, including filled powder compacts, prior to the filing date of its application, the application is void ab initio.”); Greyhound Corp. v. Armour Life Ins. Co., 214 USPQ 473, 474 (TTAB 1982) (application was void because at the time it was filed the mark had not been used in the sale or advertising of existing services). Because we sustain the opposition and refuse registration on the ground that Applicant has not made bona fide use of its mark in commerce as of the filing date of the application at issue, we need not decide the other claims in the notice of opposition. We have “discretion to decide only those claims necessary to enter judgment and dispose of the case,” as our “determination of registrability does not require, in every instance, decision on every pleaded claim.” Multisorb Tech., Inc. v. Pactive Corp., 109 USPQ2d 1170, 1171-72 (TTAB 2013), (citing Am. Paging Inc. v. Am. Mobilphone Inc., 13 USPQ2d 2036, 2039-40 (TTAB 1989)), aff’d, 923 F.2d 869, 17 USPQ2d 1726 (Fed. Cir. 1990) (non-precedential). Decision: We sustain the opposition on the ground that Applicant did not make bona fide use of its mark in commerce as of the filing date of Applicant’s application.

Mr Daniel B Cichlar Jr v. Phibian Gear, Inc.