Peter Turdin, Jr.v.Trilobite, Ltd.

Trademark Trial and Appeal BoardMay 16, 2014

No. 94002505re (T.T.A.B. May. 16, 2014)

Mailed: May 16, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Peter Turdin, Jr. v. Trilobite, Ltd. _____ Concurrent Use No. 94002505 _____ Stephen E. Nevas of Nevas, Capasse & Gerard LLC and Julianne B. Bochinski of the Law Office of Julianne B. Bochinski for Peter Turdin, Jr. W. Scott Harders and Chad Rothschild of Brennan Manna & Diamond, LLC for Trilobite, Ltd. ______ Before Zervas, Kuhlke and Adlin, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: On February 24, 2014, concurrent use applicant Peter Turdin, Jr. (“Turdin”) filed a motion for reconsideration of the Board’s final decision dated January 24, 2014, and Trilobite, Ltd. (“Trilobite”) timely filed a brief in opposition to the motion. In our final decision, we (a) refused registration of Turdin’s Application Serial THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Concurrent Use No. 94002505 2 No. 77706923 for the mark TRILOBITE PICTURES for “motion picture film production, and animation services” for the State of Connecticut and for New York City; and (b) approved for registration (i) Trilobite’s geographically unrestricted application for its mark TRILOBITE for “audio recording and production” (application Serial No. 77689769), and (ii) Trilobite’s geographically restricted application for its mark TRILOBITE for “video production services; video recording services” (Application Serial No. 77689792). In our decision, we found, inter alia, that (a) both parties were using their marks in New York City; (b) Trilobite had not used its mark in Connecticut; (c) Turdin was using his mark in Connecticut; (d) there is a likelihood of confusion from the concurrent use of Turdin’s and Trilobite’s marks for the identified services in New York City; and (e) Turdin had not met his burden to establish that there is no likelihood of confusion under concurrent use of the marks in Connecticut. In considering whether Turdin had met his burden of establishing no likelihood of confusion in Connecticut, we quoted the testimony of Scott Newell, Trilobite’s president, that there is “quite an overlap of people who live in the Connecticut area and work in New York, so I find that sometimes I don’t know if they’re in Connecticut actually or Concurrent Use No. 94002505 3 in New York.” 26 TTABVUE at 9. Turdin states in relevant part in his motion: Newell offers no foundation or evidence for that self-serving claim. Yet, by accepting it as a basis for denying Turdin concurrent use registration in Connecticut[,] the Board, without notice that Newell would be allowed to offer expert testimony and without having required Newell to be qualified as his own expert, validates testimony unsupported by anything but self-interest to testify about a matter for which a qualified expert would be required to establish expertise and offer an evidentiary basis. Motion at 3. In addition, Turdin characterizes Mr. Newell’s testimony as “gratuitous puffery”; and contends that the Board’s finding is without substantial evidence. Turdin asks that we: A. Reconsider [the] decision denying concurrent use registration of TRILOBITE PICTURES in Connecticut, and B. Determine that [] the mark in Connecticut does not pose a likelihood of confusion with the mark TRILOBITE in New York, N.Y. Motion at 6. The premise underlying a request for rehearing, reconsideration, or modification under Trademark Rule 2.129(c), 37 CFR § 2.129(c), is that, based on the evidence of record and the prevailing authorities, the Board erred in its decision. See Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 543 (3d ed. rev. 2 2013) and the authorities cited therein. The request may not be used to introduce additional evidence, nor should it be devoted Concurrent Use No. 94002505 4 simply to a reargument of the points presented in the requesting party's brief on the case. See Amoco Oil Co. v. Amerco, Inc., 201 USPQ 126 (TTAB 1978). Rather, the request normally should be limited to a demonstration that based on the evidence properly of record and the applicable law, the Board's ruling is in error and requires appropriate change. See TBMP § 543. Connecticut The crux of Turdin’s motion is our reliance on Mr. Newell’s testimony, which Turdin characterizes as “expert” testimony. Mr. Newell was not offered as an expert, thus his testimony was not “expert” testimony. Rather, he was a fact witness and his testimony was taken based on his experience. An expert was not needed for testimony of this type. In addition, we do not require evidence that many people who commute to New York City live in Connecticut, any more than we require evidence that New York City is in New York State or that New York and Connecticut are neighboring states. As Trilobite points out, Connecticut is not geographically distinct from New York. Response at 4. With regard to Turdin’s contention that Mr. Newell’s testimony is self-serving, it is no more self-serving than Mr. Turdin’s testimony in this case. We have considered this testimony because it is clear, convincing, and uncontroverted by other evidence. See Liqwacon Corp. v. Concurrent Use No. 94002505 5 Browning-Ferris Ind., Inc., 203 USPQ 305 (TTAB 1979) (“It is settled that oral testimony in situations such as this one where documentary evidence may be insufficient or unavailable for various reasons may be sufficient to establish both prior and continuous use of a designation providing that the testimony is by a witness or witnesses personally conversant with the facts, and that it is clear, convincing, consistent, and sufficiently circumstantial to convince the trier of fact of the probative value thereof.”). The testimony arose in the cross-examination of Mr. Newell by Turdin’s counsel, and Turdin’s counsel did not ask any follow-up questions on this testimony. Turdin also had an opportunity to introduce evidence on rebuttal to counter Mr. Newell’s statement but did not do so. Simply because the testimony favors Trilobite does not make the testimony suspect.1 In addition, our determination was not made on Mr. Newell’s statement alone; we also stated that Trilobite has commercial ties to New York City, which also is not geographically distinct from Connecticut. 1 Turdin also asks us to take judicial notice that New York City and Connecticut “are not contiguous or adjacent”; and “[t]hey are separated by Westchester County, New York, an area comprised of cities, towns and villages with a population of more than 955,000 and occupying 500 square miles.” Motion at 4. Again, we need no evidence of this, but agree with Mr. Turdin’s geographic assertions. The point, however, is that New York City and Connecticut are geographically close and many Connecticut residents work in New York City. Concurrent Use No. 94002505 6 Thus, we find no error in our determination that Turdin did not establish that there was no likelihood of confusion if Turdin is granted Connecticut as his concurrent use territory. New York City We found that both parties are using their marks in New York City, and that Trilobite used its mark in New York City prior to Turdin. As we stated on p. 12 of our decision, “[i]t is well established that where the trading territories of concurrent users overlap in actual use, that fact precludes the granting of concurrent use registrations.” (Citations omitted.) Because Turdin has not indicated any error in our conclusion that both parties are using their mark in New York City, and has not pointed out any fault in our likelihood of confusion analysis at pp. 20 – 27 of our decision, Turdin has not established any basis for reconsideration of our conclusions insofar as they pertain to the concurrent use of the marks by the parties in New York City. Decision: Turdin’s motion for reconsideration of our January 24, 2014 decision is denied, and the Board’s decision stands.