SST Records, Inc.v.Ubisoft Entertainment

Trademark Trial and Appeal Board

May 9, 2016

No. 92059467 (T.T.A.B. May. 9, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 9, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

SST Records, Inc.
v.
Ubisoft Entertainment
_____

Cancellation No. 92059467
_____

Cheryl L. Hodgson of Hodgson Legal
for SST Records, Inc.

Joel D. Leviton of Stinson Leonard Street LLP
for Ubisoft Entertainment.
_____

Before Seeherman, Wellington, and Goodman,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
SST Records, Inc. (“Petitioner”) seeks to cancel Registration No. 4516085 for the
standard character mark BLACK FLAG for “Game software and electronic game
programs, namely, software games recorded on CD-ROM and digital video discs for
computers; software games recorded on CD-ROM and digital video discs for console;
software games that are downloadable from a remote computer site and electronic
game software for mobile phones, personal digital assistants, and handheld
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computers” in International Class 9, owned by Ubisoft Entertainment
(“Respondent”).1
Petitioner alleges likelihood of confusion under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), between its mark BLACK FLAG and Respondent’s registered
mark.2 In the Petition for Cancellation, Petitioner pleads ownership of Registration
No. 4549987 for the mark BLACK FLAG for “audio and video recordings featuring
music and artistic performances” in International Class 9 and “entertainment,
namely, live performances by a musical band” in International Class 41.3 Petitioner
also pleads that it “and its predecessors in interest have continuously marketed
audio, video, and live musical performances under the Mark [BLACK FLAG]
throughout the US and internationally since at least as early as 1978.”4 Petitioner
further alleges, inter alia, that “In view of the identical nature of the respective marks
and the similar and related nature of the goods and services of the respective parties,

1 Registration No. 4516085 issued on April 15, 2014 based on an application (Serial No.
85865388) filed on March 4, 2013, and with a claimed first use of the mark anywhere and in
commerce in October 31, 2013.
2 Petitioner also asserted a claim that Respondent’s mark “falsely suggest[s] a connection
with Petitioner,” citing Section 2(a) of the Act. 1 TTABVUE 6 (Pet. for Cancel. ¶ 6). However,
Petitioner did not pursue this ground in its final brief and, in view thereof, we consider any
false suggestion of a connection claim to be waived.
Record citations are to TTABVUE, the Trademark Trial and Appeal Board’s publically
available docket history system, by entry and, where applicable, page number. See Turdin v.
Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
3 Registration No. 4549987 issued on June 14, 2014, based on an application filed on
September 7, 2012.
4 1 TTABVUE 7 (Pet. for Cancel. ¶ 2).
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Petitioner alleges that Respondent’s registered mark so resembles Petitioner’s
registered mark as to be likely to cause confusion, or to cause mistake, or to deceive.”5
Respondent denies the salient allegations in the Petition for Cancellation.
I. Petitioner’s Motion to Amend the Petition for Cancellation
Petitioner filed, concurrently with its reply trial brief, a motion to amend the
petition for cancellation to include an allegation of ownership of Registration No.
4801857,6 that issued on September 1, 2015, after the close of Petitioner’s trial period.
In support, Petitioner argues that while it did not plead ownership of the application
that matured into the registration in the original petition for cancellation, it
submitted a copy of the application under its notice of reliance. Petitioner argues that
Respondent will not be prejudiced because “the newly pleaded registration was
already included [in the notice of reliance].”7
Respondent opposes Petitioner’s motion, arguing that Petitioner “has not acted
expeditiously” and that although Petitioner submitted a copy of the underlying
application under its notice of reliance, “the purpose for doing so was not clear.”8
Respondent further argues that permitting Petitioner to amend the complaint to

5 Id. at 5 (Pet. for Cancel. ¶ 4).
6 Reg. No. 4801857 matured from Application Serial No. 85967025 that was filed on June 21,
2013, and covers the following goods and services: “series of sound recordings and video
featuring music” in International Class 9; “caps, t-shirts, jackets, hooded sweatshirts, [and]
baseball jerseys” in International Class 25; and “live performances by a musical group” in
International Class 41.
7 19 TTABVUE 3.
8 20 TTABVUE 2.
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allege ownership of the registration would be futile because the registration cannot
serve as basis for priority and likelihood of confusion since the filing date of the
underlying application does not precede the filing date of the underlying application
for Respondent’s registration.
Trademark Rule 2.115, 37 C.F.R. § 2.115, and Fed. R. Civ. P. 15(a) encourage the
Board to look favorably on motions to amend pleadings, stating that “leave shall be
freely given when justice so requires.” In deciding whether to grant leave to amend,
the Board may consider undue delay, prejudice to the opposing party, bad faith or
dilatory motive, futility of the amendment, and whether the party has previously
amended its pleadings. Foman v. Davis, 371 U.S. 178, 182 (1962); Am. Express Mktg.
& Dev. Corp. v. Gilad Dev. Corp., 94 USPQ2d 1294, 1297 (TTAB 2010). In
determining whether the opposing party would be prejudiced by allowance of the
proposed amendment, the timing of the motion for leave to amend plays a large role.
Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1486 (TTAB 2007).
We find that Petitioner unduly delayed in filing its motion to amend. The
underlying application for Reg. No. 4801857 was filed over one year before Petitioner
filed the petition for cancellation; Petitioner states that it did not plead ownership of
the underlying application “since the application had not issued as of the date of filing
of the Petition [for cancellation].”9 However, Petitioner could still have pleaded

9 19 TTABVUE 3 (Petitioner’s Motion at p. 2). We also note that Petitioner argues that the
underlying application was abandoned and then revived during the prosecution process. This
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ownership of the application, thereby providing notice to Respondent that Petitioner
intended to rely on any registration that issued from the application. See TBMP
Section 704.03(b)(1)(A) (2015) and authorities cited therein. We further note that the
registration issued on September 1, 2015, and Petitioner could have moved to amend
its pleading prior to opening of Respondent’s trial period, which opened
approximately ten days later.
We further find that the issue of Petitioner’s reliance on Reg. No. 4801857 was not
tried by the implied consent of the parties as a result of Petitioner’s submission of a
copy of the underlying application under notice of reliance. See Fed. R. Civ. P.
15(b)(2). In the notice of reliance, Petitioner merely states that it is submitting a “true
and correct copy” of the application and that its current status is that it was published
for opposition.10 In other words, Petitioner did not indicate the relevance of the
application or that it intended to rely on any maturing registration. See TBMP
Section 704.02 (Notice of Reliance – Generally).
Finally, we agree with Respondent that even if we were to allow Petitioner to
amend the Petition for Cancellation to include an allegation of reliance on Reg. No.
4801857, this would be of no assistance to Petitioner for purposes of establishing
priority for its likelihood of confusion ground. The underlying application for

is true; however, a review of the application’s prosecution record reveals that at the time the
petition for cancellation was filed, on June 27, 2014, the application was in effect.
10 8 TTABVUE 3.
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Petitioner’s registration was filed June 21, 2013 (see footnote 6) and Respondent’s
registration, that Petitioner seeks to cancel, is the result of an application that was
filed on March 4, 2013 (see footnote 1). For purposes of establishing priority, the
parties may rely on the filing dates of the underlying applications of their
registrations. M.C.I. Foods, Inc. v. Bunte, 96 USPQ2d 1544, 1550 (TTAB 2010); see
also, J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 437 (CCPA
1965).
In sum, Petitioner’s motion to amend its petition for cancellation is denied, and
Petitioner’s reliance on Reg. No. 4801857 was not tried by implied consent.
II. Record
The record in this case includes the pleadings and, by rule, the file of the involved
registration. Trademark Rule 2.122.
Petitioner introduced the following materials under a notice of reliance:11 a copy
of its pleaded Registration No. 4459987 that, on its face, shows it issued to “Henry
Garfield (United States Individual)”; a copy of its application Serial No. 85967025;
copies of third-party registrations for purposes of showing a relationship between
Respondent’s goods and Petitioner’s goods and services; printouts from the website
Amazon.com; printouts from the online encyclopedia Wikipedia; printouts from the

11 8-11 TTABVUE.
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YouTube website; and printouts from the website www.sstsuperstore.com featuring
audio recordings for sale.12
For its part, Respondent introduced the following materials under a notice of
reliance:13 printouts from Respondent’s website; printouts from the website
ww.vgchartz.com that purportedly show the popularity and success of Respondent’s
video games; a printout of an online article from the website www.forbes.com
involving Respondent’s video game; a printout from the website www.theinquirer.net
featuring a review of Respondent’s video game; printouts from the Amazon.com
website featuring Respondent’s video games; and copies of third-party registrations
and an application for marks that contain the term BLACK FLAG.
III. Petitioner’s Standing
Petitioner has introduced evidence showing that it is more than a mere
intermeddler and has a personal interest in seeking to cancel the involved registered
mark, BLACK FLAG. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26
(Fed. Cir. 1999); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). In particular, Petitioner made of record printouts from its

12 Petitioner also submitted printouts from the Google search engine website showing the
search results for the terms “Black Flag Video” and “Black Flag.” 11 TTABVUE 139-144.
Printouts of search engine results submitted under notice of reliance are inadmissible
because they are “essentially links to [other] website pages” rather than printouts or
materials obtained from those websites. Calypso Technology, Inc. v. Calypso Capital
Management, LP, 100 USPQ2d 1213, 1219 (TTAB 2011); see also TBMP § 704.08(b).
Accordingly, these materials have not been considered.
13 15 TTABVUE.
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website that, on their face, show the offering of musical and live performance
recordings (on CD, vinyl, and DVD) as well as “clothing … merchandise …
accessories” with the mark BLACK FLAG prominently displayed on the goods.14 This
is sufficient for purposes of demonstrating Petitioner’s standing in this matter.
IV. Priority
Because this is a cancellation action, priority must be proved. See Brewski Beer
Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1284 (TTAB 1998). Cf. King Candy
Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
As noted in our discussion involving Petitioner’s motion to amend, infra, when the
parties both own registrations, the filing dates of the underlying applications for their
involved or asserted registrations may be relied upon for purposes of priority. M.C.I.
Foods, 96 USPQ2d at 1550. Respondent can thus rely on March 4, 2013 (see footnote
1 infra) as its priority date. Respondent does not assert, let alone prove, an earlier
date of first use.
On the record before us, Petitioner has not demonstrated that it acquired rights
in the mark BLACK FLAG prior to March 4, 2013.
With respect to Petitioner’s pleaded Reg. No. 4549987, the copy of the registration
submitted by Petitioner with its notice of reliance did not show status and title. Such
a “plain copy” is generally insufficient for purposes of making the registration of

14 11 TTABVUE 172-201 (Petitioner’s Notice of Reliance Exhibit 14).
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record.15 The Board, however, has made exceptions and allowed non-status and title
copies of registrations, such as that provided by Petitioner, when the registration’s
issue date is “reasonably contemporaneous” with the filing date of the notice of
opposition or petition for cancellation. See United Global Media Group, Inc. v. Tseng,
112 USPQ2d 1039, 1043 (TTAB 2014). Here, we note that the issue date of Reg. No.
4549987 is June 17, 2014, merely ten days before and thus “reasonably
contemporaneous” with the filing of the petition for cancellation on June 27, 2014.
Thus, we agree to consider the copy of Reg. No. 4549987 as filed by Petitioner.
However, as previously noted, the registration issued to “Henry Garfield (United
States Individual)” and Petitioner, SST Records, Inc., has not submitted any evidence
showing that there has been a transfer of title and the registration has been assigned
to Petitioner. Respondent, in its answer, denied Petitioner’s allegation of ownership

15 See TBMP Section 704.03(b)(1)(A); and Hewlett-Packard Co. v. Olympus Corp., 931 F.2d
1551, 18 USPQ2d 1710, 1713 (Fed. Cir. 1991) (registrations not of record where plaintiff’s
copies of registrations submitted with complaint did not show current status or title); Sterling
Jewelers Inc. v. Romance & Co., 110 USPQ2d1598, 1601 (TTAB 2014) (opposer failed to
comply with “‘simple and clear’ directives of Trademark Rule 2.122(d)” by submitting plain
copy of registration attached to notice of opposition – registration not of record).
The rules and TBMP make it clear that a federal registration owned by the plaintiff in an
opposition or cancellation proceeding, and pleaded by the plaintiff in its complaint, will be
received in evidence and made part of the record in the proceeding if plaintiff files one of the
following either with the complaint or under notice of reliance:
(a) an original or a photocopy of the registration prepared and issued by the Office
showing both the current status of and current title to the registration; or
(b) a current printout of information from the electronic database records of the Office
….
Rule 2.122(d)(1) and (2); and TBMP 704.03(b)(1)(A).

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of Reg. No. 4549987 and made no concessions in its trial brief regarding Petitioner’s
ownership of the registration.16
In sum, Petitioner has failed to prove that it is the owner of Reg. No. 4549987 and
it thus cannot rely on the registration, including for purposes of establishing its rights
in the mark BLACK FLAG.
We have carefully considered the remaining evidence of record and it fails to
establish any prior common law rights of Petitioner in the mark BLACK FLAG.
Printouts from websites, such as Amazon.com, Wikipedia, or even Petitioner’s own
website, without any supporting testimony, do not demonstrate that Petitioner has
acquired rights in the mark BLACK FLAG, let alone prior rights.
Inasmuch as Petitioner has not established that it has priority, it cannot prevail
on the likelihood of confusion ground.
Decision: The petition for cancellation is denied

16 6 TTABVUE 2 (Answer ¶ 1).