Thomas D. Millsv.Yvonne R. Sewall

Trademark Trial and Appeal Board

Aug 10, 2001

No. 91104398 (T.T.A.B. Aug. 10, 2001)

8/10/01 Paper No. 43
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Thomas D. Mills
v.
Yvonne R. Sewall
_____

Opposition No. 104,398
to application Serial No. 74/731,584
filed on September 20, 1995
_____

Thomas D. Mills, pro se.1

H. John Campaign and Charles H. Knull of Graham, Campaign
P.C. for Yvonne R. Sewall.2
______

Before Seeherman, Chapman and Rogers, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:

1 Opposer was represented by counsel from the filing of the
opposition through the filing of opposer’s notices of reliance,
at which point opposer revoked the appointment of his initial
attorney and law firm and appointed a new attorney and law firm.
After the close of all trial dates, opposer filed a revocation
of the new power of attorney, and has since proceeded pro se.
2 Applicant was pro se when she filed her application and
throughout the ex parte prosecution thereof. She appointed
counsel at the time her answer to the notice of opposition was
filed with the Board. About two months later she revoked that
power of attorney and appointed new counsel. In the midst of
her testimony period as defendant in the opposition, she revoked
the new power of attorney and proceeded pro se until June 2000
when she re-appointed her second attorney as counsel of record.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 104398
2
An application has been filed by Yvonne R. Sewall
(an individual) to register on the Principal Register the
mark
MAX’S KANSAS CITY for “CD-ROMs, phonograph records, audio
and video cassette tapes, and compact discs, featuring
music and lyrics, poetry, taped interviewed [sic],
photographs, narratives and documentaries, about music
and art” in International Class 9; “T-shirts and jackets”
in International Class 25; and “bar and restaurant
services” in International Class 42. The application for
all three classes of goods and services is based on
applicant’s assertion of a bona fide intention to use the
mark in commerce.3
Thomas D. Mills has opposed the application in all
three classes, alleging that since 1975, long prior to
the filing date of applicant’s application, he has used
the mark MAX’S KANSAS CITY in connection with “CD-ROMs,
phonograph records, audio and video cassette tapes, and
compact discs,
featuring music and lyrics, poetry[,] taped interviewed
[sic], photographs, narratives and documentaries, about
music and art” in International Class 9, “T-shirts and

3 In an Examiner’s Amendment, the Examining Attorney entered the
following statement into the record: “Section 2(f) In Part--The
Opposition No. 104398
3
jackets” in International Class 25, and “bar and
restaurant services” in International Class 42; that by
virtue of his continuous use, the mark MAX’S KANSAS CITY
indicates the single source of said goods and services to
be opposer; that opposer owns application Serial No.
75/096,169, filed April 29, 1996, for the mark MAX’S
KANSAS CITY for “prerecorded music and video records,
prerecorded cassette tapes, compact disks and CD-ROM
disks” in International Class 94; and that applicant’s
mark, when used on or in connection with her goods and
services, would so resemble opposer’s previously used
mark as to be likely to cause confusion, mistake, or
deception.
In her answer applicant admitted “that the services
and products to which Opposer claims it [sic] applies or
seeks to apply the mark are sold or would be sold to the
same class of customers and in the same channels of trade

applicant claims the benefit of Section 2(f) of the Trademark
Act, 15 U.S.C. §1052(f), in part as to KANSAS CITY.”
4 This application is based on opposer’s claimed date of first
use and first use in commerce of January 1975. Opposer
disclaimed “Kansas City.” Action on opposer’s application
Serial No. 75/096,169 has been suspended in Law Office 103.
We note that subsequent to the filing of opposer’s notice of
opposition (and not added to the pleading by motion to amend),
opposer filed on January 20, 1998 application Serial No.
75/420,053, based on opposer’s assertion of a bona fide
intention to use the mark in commerce, for the mark MAX’S KANSAS
CITY for “restaurant, bar, night club and cabaret services.”
Opposition No. 104398
4
as those of Applicant. Applicant further admits that, if
Opposer were to so use the mark, confusion or mistake
among purchaser [sic] will be caused”; and that opposer’s
application Serial No. 75/096,169 is seriously
jeopardized should applicant’s application mature into a
registration. Applicant otherwise denied the allegations
of the notice of opposition, and she also asserted
several “affirmative defenses,” including a claim that
opposer has acquiesced in applicant’s use of the mark;
that opposer is estopped from objecting to applicant’s
use of the mark; that opposer’s undue delay constitutes
laches; and that opposer’s failure to use the mark for
over fifteen years constitutes an abandonment of whatever
rights he may have had.5
The record consists of the pleadings; the file of
the opposed application; opposer’s notices of reliance on
(i) applicant’s responses to opposer’s first set of
interrogatories, (ii) applicant’s documents produced in
response to opposer’s first set of document requests,

Action on this application has also been suspended in Law Office
103.
5 Applicant did not mention any of her affirmative defenses in
her brief on the case, hence, the Board considers acquiescence,
estoppel and laches to have been waived. [Specifically, with
regard to laches in an opposition proceeding, see National Cable
Television Association, Inc. v. American Cinema Editors, Inc.,
937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991).] The question
Opposition No. 104398
5
(iii) a copy of the file of opposer’s application Serial
No. 75/096,169, and (iv) the testimony, with exhibits, of
opposer, Thomas Dean Mills; applicant’s notices of
reliance on (i) a copy of the cover and copyright pages
from her book, (ii) photocopies of certain pages from the
1997-2000 Manhattan Bell Atlantic/Nynex white pages,
(iii) copies of certain pages printed from applicant’s
website, (iv) a photocopy of the January 12, 1998
decision of the U.S. District Court for the Southern
District of New York6, and (v) the transcripts of the
January 8, 1998 depositions of opposer, Thomas D. Mills,
and applicant, Yvonne R. Sewall, taken in the U.S.
District Court case.7

of opposer’s alleged abandonment of his mark will be discussed
later in this decision.
6 The civil action was Yvonne R. Sewall v. Thomas D. Mills, aka
Tommy Dean, Max’s Kansas City, Inc., “John Doe”, Marivi Wolfe in
the United States District Court for the Southern District of
New York, Case No. 97 Civ. 8316 (RPP). In the January 12, 1998
decision of the Court, a motion by plaintiff (applicant in this
Board proceeding) for a preliminary and permanent injunction was
denied.
7 The deposition transcripts from the U.S. District Court case
were submitted pursuant to the stipulation of the parties
(signed in September 1999 by their respective counsel); and both
were filed under seal as “confidential.” Applicant’s cover
letter accompanying this notice of reliance states that “[T]o
the extent that confidential information is disclosed in the
depositions, this information is protected by the order of
confidentiality in the civil action above.” There was no
delineation by either party as to precisely what was considered
confidential information. Therefore, in our decision we have
used discretion in referring to information contained in said
depositions which was not otherwise in the record. See
Trademark Rule 2.27(d) and(e).
Opposition No. 104398
6
In addition, during opposer’s rebuttal testimony
period opposer (pro se) filed on July 26, 2000, three
separate documents, specifically (i) “opposer’s notice of
reliance” (on photocopies of a magazine article from
1995, opposer’s New York state service mark registration,
and a June 25, 1998 letter from the New York Division of
Alcohol Beverage Control regarding approval and formal
processing of the application of MKC New York LLC for a
liquor license), (ii) “opposer’s rebuttal brief,”8 and
(iii) “opposer’s production of documents in response to
applicants [sic] request.”
None of these three documents indicates proof of
service of a copy thereof on counsel for applicant as
required by Trademark Rule 2.119(c). After opposer
revoked his latest power of attorney and thereafter went
forward pro se in this case, the Board repeatedly advised
him of the requirement of complying with the trademark
rule on serving the adverse party’s attorney, but to no
avail. However, it is obvious that applicant’s attorney
obtained copies of at least the latter two documents
either from opposer or by other means because in

8 The document titled “rebuttal brief” (but submitted during
opposer’s rebuttal testimony period) consists primarily of
statements made in “rebuttal” to various quoted sections of the
January 8, 1998 deposition of Yvonne R. Sewall introduced into
the record by applicant.
Opposition No. 104398
7
applicant’s brief on the case she objected to both
opposer’s “rebuttal brief” (and the exhibits attached
thereto) and opposer’s “production of documents” paper.
These two documents have not been made of record as
provided by the Trademark Rules of Practice (indeed, a
brief on the case after trial does not constitute
evidence at all) and they have not been considered by the
Board. Even if they had been considered, it would not
alter our decision herein. We have, however, considered
opposer’s notice of reliance.
Opposer’s untimely brief submitted on March 19, 2001
was stricken by Board order dated March 28, 2001.9
Applicant has filed a brief on the case. Neither party
requested an oral hearing.
The record shows that an individual named Mickey
Ruskin founded a bar and restaurant under the name MAX’S
KANSAS CITY in New York City in 1965. It was “the salon
of the psychedelic era” where one could mingle with the
“underground jet set” including moviemakers, actors,
painters, writers, sculptors and singers; and there was

9 We note that even if opposer’s brief on the case had been
considered, the arguments and statements therein would not alter
our decision because factual statements made in a party’s brief
on the case can be given no consideration unless they are
supported by evidence properly introduced at trial. See BL Cars
Ltd. v. Puma Industria de Veiculos S/A, 221 USPQ 1018 (TTAB
Opposition No. 104398
8
live music, frequently by then-unknown artists/musical
groups. However, Mickey Ruskin’s MAX’S KANSAS CITY bar
and restaurant was losing money by 1974, and it closed in
December 1974. In 1975 opposer, Thomas D. Mills (aka
Tommy Dean) and his partners purchased the bar and
restaurant, and reopened it using the name MAX’S KANSAS
CITY. This new MAX’S KANSAS CITY bar/restaurant operated
from 1976 to 1981. In January 1977 J.M.K.C. Inc.
obtained Registration No. 1,135,914 for MAX’S KANSAS CITY
for “restaurant and bar services.”10 However, when no
Section 8 affidavit of use was filed, the registration
was cancelled pursuant to Section 8 of the Trademark Act.
Applicant met Mickey Ruskin in 1967, and she worked
briefly as a waitress at his MAX’S KANSAS CITY
bar/restaurant in the late sixties. Yvonne Sewall and
Mickey Ruskin were a couple for about seven years
(separating in about 1973), and they had two children
together. Mr. Ruskin died in 1983.

1983); and Abbott Laboratories v. TAC Industries, Inc., 217 USPQ
819 (TTAB 1981). See also, TBMP §706.02.
10 According to opposer’s testimony, the “partners” who
purchased the bar/restaurant in 1975 were opposer, his wife
(Laura Dean), Joseph Vogel and Murray Lawrence; and that it was
this “partnership” that obtained a registration. However, the
registration issued to J.M.K.C. Inc. (a corporation of New
York). Opposer was the vice president of the corporation and
the on-site person at the bar/restaurant.
Opposition No. 104398
9
Opposer submitted under a notice of reliance a copy
of the file history of his application Serial No.
75/096,169 for the mark MAX’S KANSAS CITY for goods in
International Class 9, including the Office action
suspending action on opposer’s application pending the
outcome of applicant’s prior-filed application Serial No.
74/731,584 (the subject of this opposition proceeding).
This evidence establishes opposer’s standing. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000); and Lipton Industries, Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA
1982).
Applicant essentially admitted that there is a
likelihood of confusion, and we agree in view of
opposer’s alleged use of and applicant’s intent-to-use
application for the identical mark on identical goods and
services. Thus, the issue to be decided by the Board is
whether opposer has proven prior rights, which are “not
abandoned,” in the mark MAX’S KANSAS CITY for “CD-ROMs,
phonograph records, audio and video cassette tapes, and
compact discs, featuring music and lyrics, poetry[,]
taped interviewed [sic], photographs, narratives and
documentaries, about music and art” in International
Class 9, and/or “T-shirts and jackets” in International
Opposition No. 104398
10
Class 25, and/or “bar and restaurant services” in
International Class 42.
Section 2(d) of the Trademark Act reads, in relevant
part, as follows (emphasis added):
No trademark by which the goods of the
applicant may be distinguished from
the goods of others shall be refused
registration on the principal register
on account of its nature unless it—

...(d) consists of or comprises a mark
which so resembles a mark registered
in the Patent and Trademark Office, or
a mark or trade name previously used
in the United States by another and
not abandoned, as to be likely, when
used on or in connection with the
goods of the applicant, to cause
confusion, or to cause mistake, or to
deceive: ...

In the absence of proof of actual use at an earlier
date, and applicant has provided no such evidence, the
earliest date of use of the mark MAX’S KANSAS CITY on
which applicant can rely for purposes of this proceeding
is the filing date of her application, specifically,
September 20, 1995, which is deemed to be the
constructive use date of her mark for her identified
goods and services. See Section 7(c) of the Trademark
Act.
Some of the testimony submitted in this case is not
a model of clarity; however, the record is clear that
Opposition No. 104398
11
after opposer closed MAX’S KANSAS CITY bar/restaurant in
1981, he engaged in no use of the mark MAX’S KANSAS CITY
in connection with a bar/restaurant, and he did not
reopen any bar/restaurant prior to the filing date of
applicant’s application. For example, opposer testified
as follows in the January 8, 1998 civil action deposition
(pp. 54-55):
Q. And could you tell me what your use
of the name [MAX’S KANSAS CITY] in the
commercial area of restaurants has
been?
A. Max’s Kansas City, 213 Park Avenue
South.
Q. And what years was that restaurant
in existence?
A. I believe it was 1975 to 1981 or
’82. I think it’s ’81.
Q. Have you ever operated any other
restaurant establishment under that
name?
A. No.
Q. Have you owned any other restaurants
since 1981?
A. No.
Q. Have you been a part owner of any
other restaurant?
A. No.

The record shows that while opposer (as an officer
of J.M.K.C., Inc.) was involved in the ownership and use
of the mark MAX’S KANSAS CITY for a bar/restaurant from
1975 to 1981, that use completely ceased in 1981. While
the record does show some activity in working on
reopening a restaurant, all such evidence involves
activity after September 20, 1995, the filing date of
Opposition No. 104398
12
applicant’s application. Once a person abandons a mark,
others are free to claim future possession and property
rights therein. See 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §§17:1 and 17:2 (4th
ed. 2000). Even assuming opposer as an individual was
the owner of the mark MAX’S KANSAS CITY for the
bar/restaurant (1975-1981), he abandoned the mark by the
cessation of use for at least 15 years; and he testified
that he has not used the mark in connection with
bar/restaurant services since 1981. Thus, opposer has
not established priority with regard to bar and
restaurant services.
The record is also clear that opposer has not sold
clothing under the mark MAX’S KANSAS CITY since 1984.
Specifically, opposer testified as follows in the January
8, 1998 civil action deposition (pp. 17-18):
Q. Okay. Now, aside from your music
activity, which you cited, you had no
other merchandise or anything that you
sold bearing Max’s Kansas City; true?
A. Some T-shirts, some jackets that
were remnants of inventory that we
had, some memorabilia. No storefront
or no mail order or no website, no.
Q. Okay. And these items were
leftovers—
A. Exactly.
Q. –-from your store?
A. Exactly.
Q. Okay
A. No new purchases.
Opposition No. 104398
13
Q. Okay. Did the distribution of these
items take place shortly after you
closed or when?
A. It -– it was going on for
approximately a year and a half to two
years.
Q. So sometime to maybe ’83, ’84 –
A. Exactly.
Q. –-when you wound down?
A. Exactly.
Opposer (or the corporation) ceased use of the mark
MAX’S KANSAS CITY on clothing items in 1984, and he has
not used the mark on or in connection with clothing since
that date. Thus, opposer has not established priority
with regard to T-shirts and jackets.
The more difficult question before us is the issue
of priority as to the goods in International Class 9
(e.g., CD-ROMs, phonograph records, audio and video
cassette tapes, and compact discs). There is no question
that musicians/bands were featured at MAX’S KANSAS CITY
bar/restaurant between 1975 and 1981, some of whom, such
as Debra Harry, Blondie, Devo, and the B-52’s, later
became quite successful. During that time frame of 1975-
1981, about $100,000 dollars per year was spent on
advertising the bar/restaurant and promoting the
musicians/bands playing there; about 11 record albums
were made (most were recorded at studios, but a few were
recorded live at MAX’S); and approximately 5000 such
recordings were sold, primarily in the United States, in
Opposition No. 104398
14
1981. Opposer testified that between 1975 and 1981 he
had 55 separate agreements with performing artists; that
these are not current agreements; and that he does not
have copies of any of those agreements. (Civil action
deposition, p. 45-46.) A “Farewell To Max’s” album was
released in 1982, and opposer has not issued any further
albums under the mark MAX’S KANSAS CITY. There is no
evidence of opposer’s use of the involved mark on CDs,
records or tapes between 1982 and applicant’s September
20, 1995 date of constructive use.
Opposer testified regarding use of the mark MAX’S
KANSAS CITY that as a record producer, he “continued to
stay in the business from a marketing standpoint and re-
releasing Max’s Kansas City records, looking for new
talent, and being very much interested in that portion of
Max’s Kansas City, not the restaurant business, but the
marketing of merchandise, the marketing of records.”
(Board proceeding deposition, pp. 18-19.) He also
testified in the civil action (pp. 11-12) as follows:
Q. When you closed Max’s Kansas City
back in 1981 how did you continue to
use the trademark Max’s Kansas City?
A. Restaurant closed in 1981.
Q. Right.
A. There were some records and
licensing agreements that needed to be
maintained for the next two years. I
was in the studio making a record
Opposition No. 104398
15
called Farewell to Max’s which did not
come out until 1982.
Q. Okay.
A. That was my only ongoing in 1982.
Q. Okay. And how about in the years
subsequent to that, what was the use
of the trademark?
A. The use of the trademark basically
was in the music industry, which would
be licensing agreements.

Opposer testified regarding, and submitted a
photocopy of, a licensing agreement dated July 27, 1995
between opposer (“Tommy Dean”) and ROIR (Reachout
International Records, Inc.). See opposer’s exhibit 4.
In this six-page agreement opposer grants to ROIR an
irrevocable exclusive worldwide license in perpetuity to
the “masters.”11 The agreement includes no listing of the
“masters” involved, either by artist or by any other
means of identification. (The agreement refers to a
“Schedule A” listing of the “masters,” but it was not
included in the exhibits submitted to the Board.)
Moreover, there is no reference in the agreement to the
mark MAX’S KANSAS CITY. Even assuming this July 27, 1995
contract covers recordings involving the mark MAX’S
KANSAS CITY, Paragraph 6 thereof states that “[a]ll
recordings made hereunder and all reproductions from the

11 “Master recording” is defined in the agreement, and
essentially it refers to “the original material object in which
sounds are fixed.” (Opposer’s exhibit 4, p. 4.) That is, the
Opposition No. 104398
16
performances embodied therein and the copyrights therein
and thereto shall be entirely [ROIR’s] property, free of
any claims whatsoever by you or any third party deriving
any rights through or from you. Without limitation of
the foregoing, [ROIR and its designees] shall have the
worldwide right in perpetuity to manufacture ..., to
lease ..., to release same under any trademarks, trade
names or labels ..., to perform the records or other
reproductions publicly ....” This agreement and the
testimony related thereto is not sufficient to establish
opposer’s use of the mark MAX’S KANSAS CITY for
recordings prior to September 20, 1995.

term “master” or “master recording” refers to master recordings
from which other copies are made for distribution and sale.
Opposition No. 104398
17
Mr. Mills also testified that he has continuously
received royalties from 1976 to 1997, and several
documents were introduced into the record relating
thereto. Opposer’s exhibit 11 is a photocopy of an
August 15, 1995 seven-page letter regarding accounting
for royalties payable to opposer from a company in
England, Beggars Banquet Records Limited, for sales from
December 1984 to December 1994 of the “Live At Max’s”
recording. We do not doubt that opposer has received
royalties for this album; however, the problem is that
this evidence does not support use or sales in the United
States. The other documents relating to this aspect of
opposer’s claim (generally those attached as exhibits to
Mr. Mills’ September 17, 1997 testimony in the Board
proceeding) include the following: (i) copies of April
18, 1996 and July 22, 1996 royalty statements from ROIR
regarding the recording “Heartbreakers Live At Max’s,”
(both royalty statements, opposer’s exhibits 5 and 6,
state the release date for that recording of “November
17, 1995,” a date approximately two months after
applicant’s filing date); (ii) a two-page
advertisement/press release on ROIR letterhead (opposer’s
exhibit 7) touting, among other recordings, the re-
release of “Johnny Thunder & The Heartbreakers ‘Live At
Opposition No. 104398
18
Max’s Kansas City ’79’” scheduled “for release on
November 15, 1995”; (iii) several letters either from
persons in England to “Tommy Dean,” or from “Tommy
Dean’s” London representative (acting to assist him in
recovering past royalties) to various persons/companies
in England, or to “Tommy Dean” regarding the money
matters in England (opposer’s exhibits 8-12) (all of
which deal with royalties and use in England, not the
United States, some of which are dated after September
20, 1995 - applicant’s priority date - and some of which
do not specify MAX’S KANSAS CITY or “Live at Max’s” or
relate in some meaningful way to the mark involved before
this Board).
Considering the entire record before us, there is no
evidence of opposer’s use in the United States of the
mark MAX’S KANSAS CITY on CDs, records, and/or tapes
between 1982 and September 20, 1995. The July 27, 1995
agreement between ROIR and opposer establishes only that
he licensed “masters” to ROIR; it does not establish
opposer’s use, or any use inuring to opposer’s benefit,
of the involved mark for CDs, records or tapes. The
evidence of opposer’s receiving royalties for records
(presumably all involving the MAX’S KANSAS CITY mark)
relates to sales in the United Kingdom and hence cannot
Opposition No. 104398
19
establish opposer’s use in the United States. Opposer
has not established, by a preponderance of the evidence,
that he has previously used and not abandoned the mark
MAX’S KANSAS CITY on CD-ROMs, phonograph records, audio
and video cassette tapes, and compact discs. See
Cerveceria Centroamericana, S.A. v. Cerveceria India
Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989).
In summary, opposer has not shown prior use that has
not been abandoned as to any of the goods or services (in
the three involved International Classes 9, 25 and 42).
Therefore, although applicant has admitted that confusion
would be likely, opposer has not established a necessary
element of the likelihood of confusion ground for
opposition.
Decision: The opposition is dismissed.