SST Records, Inc.v.Ubisoft EntertainmentDownload PDFTrademark Trial and Appeal BoardMay 9, 2016No. 92059467 (T.T.A.B. May. 9, 2016) Copy Citation 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 Cancellation No. 92059467 - 2 - 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). Cancellation No. 92059467 - 3 - 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. Cancellation No. 92059467 - 4 - 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 Cancellation No. 92059467 - 5 - 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. Cancellation No. 92059467 - 6 - 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. Cancellation No. 92059467 - 7 - 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. Cancellation No. 92059467 - 8 - 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). Cancellation No. 92059467 - 9 - 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). Cancellation No. 92059467 - 10 - 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). Copy with citationCopy as parenthetical citation