Timothy Teylan, et. al.v.Daniel Flam

Trademark Trial and Appeal Board

Feb 14, 2020

92068879 (T.T.A.B. Feb. 14, 2020)

Mailed: February 14, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ---- Timothy Teylan, Julian Raphael Sanchez, Mark Andy Joya, Jonathan Anthony Gamra, Anthony Albert Ramon Rodrigues,1 and Dean William Thompson v. Daniel Flam ---- Cancellation No. 92068879 ________ Mark L. Edrman of Hermelee Law PL, for Timothy Teylan, et al. Thomas M. Wilentz of Thomas M. Wilentz Attorney at Law PLLC, for Daniel Flam. ---- Before Shaw, Pologeorgis, and Lebow, Administrative Trademark Judges. Opinion by Pologeorgis, Administrative Trademark Judge: Daniel Flam (“Respondent”) is the owner of a registration on the Principal Register for the standard character mark CONSOUL for “Entertainment, namely, live performances by musical bands” in International Class 41.2 1 In the first paragraph of the petition to cancel, Anthony Albert Ramon Rodrigues was not identified as one of the plaintiffs. We assume this was an inadvertent omission because Mr. Rodrigues is identified as one of the plaintiffs in a subsequent paragraph. 2 Registration No. 5181195, issued on April 11, 2017. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Cancellation No. 92068879 2 Timothy Teylan, Julian Raphael Sanchez, Mark Andy Joya, Jonathan Anthony Gamra, Anthony Albert Ramon Rodrigues and Dean William Thompson (“Petitioners”) have petitioned to cancel Respondent’s registration on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based, in part, on Petitioners’ alleged ownership of pending application Serial No. 79206293 for the composite mark, displayed below, for various goods and services in International Classes 9, 25 and 41.3 In his answer to the petition, Respondent denied most of the salient allegations;4 but, Respondent admitted the allegations regarding Respondent’s address, the identification of services recited in his subject registration, the date his subject registration issued, as well as the filing date and claimed dates of use set forth in the 3 1 TTABVUE. Petitioners further allege that their pleaded pending U.S. application and claim of priority are purportedly based on an Australian registration and an International Registration issued by the Word Intellectual Property Offices (WIPO). Petition to Cancel ¶¶ 8-9 and 22, 1 TTABVUE 5-6. Citations to the record or briefs in this opinion also include citations to the publicly available documents on TTABVUE, the Board’s electronic docketing system. See, e.g., Turdin v. Trilobite, Ltd., 109 USPQ2d 1473 (TTAB 2014). The number preceding “TTABVUE” corresponds to the docket entry number; the number(s) following “TTABVUE” refer to the page number(s) of that particular docket entry. 4 5 TTABVUE. Cancellation No. 92068879 3 corresponding underlying application of his subject registration.5 Additionally, Respondent, in his answer, stated that he “is only aware that Petitioner has filed a single trademark application with the USPTO under Serial No. 79206293 to register a single trademark, which application did not claim use in commerce.”6 I. The Record The record includes the pleadings and, pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Respondent’s subject registration file. Petitioners attached six exhibits to their pleading, including copies of their purported Australian and International registrations. However, subject to certain exceptions inapplicable here,7 exhibits attached to pleadings are not in evidence. See Trademark Rule 2.122(c), 37 C.F.R. § 2.122(c) (exhibits to pleadings are not in evidence and instead “must be identified and introduced in evidence as an exhibit during the period for the taking of testimony”). Because Petitioners did not submit any of the exhibits attached to their pleading during their assigned testimony period in accordance with Board rules and procedure, these exhibits will be given no 5 Respondent’s Answer, ¶¶ 25-27 and 31, 5 TTABVUE 5-6. 6 Id. at ¶ 24, 5 TTABVUE 5. 7 Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), provides that “[a] registration of the opposer or petitioner pleaded in an opposition or petition to cancel will be received in evidence and made part of the record if the opposition or petition is accompanied by an original or photocopy of the registration prepared and issued by the Office showing both the current status of and current title to the registration, or by a current copy of information from the electronic database records of the Office showing the current status and title of the registration.” This particular Trademark Rule, however, does not apply to foreign or international trademark or service mark registrations. Accordingly, by merely attaching copies of their alleged foreign and international registrations as exhibits to their pleading, Petitioners did not make those registrations of record. Cancellation No. 92068879 4 consideration by the Board. Petitioner also submitted a notice of reliance with accompanying exhibits on the same day it submitted its trial brief, i.e., November 22, 2019.8 Petitioner did not submit any testimony. Pursuant to the Board’s October 25, 2018 order, Petitioners’ 30-day testimony period, as reset, commenced on May 12, 2019 and closed on June 10, 2019.9 Respondent has objected to Petitioners’ notice of reliance on various grounds, including: (1) the notice is untimely since it was not submitted during Petitioners’ assigned testimony period, (2) some of the material submitted with the notice of reliance, i.e., Exhibit A, fails to include a statement regarding the general relevance of the proffered material to the issues in this case, and (3) the Internet material submitted under Petitioners’ notice of reliance did not include both the date the material was accessed and the URL for the websites submitted.10 Pursuant to Trademark Rule 2.122(g), 37 C.F.R. § 2.122(g), “[a] notice of reliance shall be filed during the testimony period of the party that files the notice.” See also Syngenta Crop Protection Inc., v. Bio-Chek, LLC, 90 USPQ2d 1112, 1115 (TTAB 2009) (“A notice of reliance must be submitted during the testimony period of the offering party.”); Plantronics Inc. v. Starcom Inc., 213 USPQ 699 (TTAB 1982) (“[N]otice of reliance must be filed during the period for taking the testimony of the party filing 8 9 TTABVUE. 9 7 TTABVUE. 10 Respondent’s Trial Brief, pp. 1-3, 10 TTABVUE 2-4. Cancellation No. 92068879 5 such notice.”). Trademark Rule 2.122(g) also provides that “[f]or all evidence offered by notice of reliance, the notice must indicate generally the relevance of the evidence and associate it with one or more issues in the proceeding.” Moreover, a document obtained from the Internet may be admitted into evidence pursuant to a notice of reliance in the same manner as a printed publication in general circulation, so long as the date of the Internet documents were accessed as well their source (the Internet address or URL) is provided. See Trademark Rule 2.122(e)(2), 37 C.F.R. § 2.122(e)(2); see also Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1759 (TTAB 2013) (citing Safer, Inc. v. OMS Invests., Inc., 94 USPQ2d 1031, 1059 (TTAB 2010)). Here, Petitioners failed to submit their notice of reliance during their assigned testimony period and did not indicate in their notice the relevance of some of the proffered evidence. Moreover, the Internet material submitted with Petitioners’ notice of reliance does not include the date the material was accessed, as required by Trademark Rule 2.122(e). Accordingly, we sustain Respondent’s objections and have given no consideration to Petitioners’ notice of reliance.11 See Plantronics Inc. v. Starcom Inc., 213 USPQ 699, 700 (TTAB 1982) (“[R]ules of practice clearly provide that evidence not filed in compliance with the rules will not be considered.”). 11 Petitioners could have moved to reopen their testimony period, presenting their reasons as to why they did not submit their notice of reliance during their assigned testimony period, as last reset. See generally Fed. R. Civ. P. 6(b)(1)(B) and TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 509 (2019). Petitioners, however, failed to do so. Cancellation No. 92068879 6 II. Standing Not Proven Standing is a threshold issue that a plaintiff must prove in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). “The facts regarding standing ... are part of [a plaintiff’s] case and must be affirmatively proved. Accordingly, [a plaintiff] is not entitled to standing solely because of the allegations in its petition.” Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). The U.S. Court of Appeals for the Federal Circuit has enunciated a liberal threshold for determining standing: a plaintiff must demonstrate that it has a “real interest” in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his belief of damage.” Empresa Cubana, 111 USPQ2d at 1062 (citations omitted). A “real interest” is a “direct and personal stake” in the outcome of the proceeding. Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999). As plaintiffs in this proceeding, Petitioners must prove both their standing and their asserted claim of likelihood of confusion by a preponderance of the evidence. See Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002) (“The burden of proof rests with the [plaintiff] ... to produce sufficient evidence to support the ultimate conclusion of [priority of use] and likelihood of confusion.”); Sanyo Watch Co. v. Sanyo Elec. Co., 691 F.2d 1019, 215 USPQ 833, 834 (Fed. Cir. 1982) (“As the [plaintiff] in this proceeding, appellant bears the burden of proof which encompasses not only the ultimate burden of persuasion, but also the burden of going forward with sufficient proof of the material allegations of the [petition to cancel], Cancellation No. 92068879 7 which, if not countered, negates appellee’s right to a registration.”). While we have established that Petitioners did not submit any timely evidence or testimony, we must nonetheless look to the pleadings to determine if Respondent made any admissions in his answer that would mitigate Petitioners’ failure to prove their case. As noted above, Respondent acknowledged that Petitioners filed their pleaded application Serial No. 7926293. Respondent, however, made no admissions as to the current ownership or active status of Petitioners’ pleaded application nor did Respondent admit that Petitioners’ pleaded application was refused registration based on Respondent’s subject registration.12 In their trial brief, Petitioners repeat the unsupported allegations about their purported adoption and use of their pleaded mark. The Federal Circuit has consistently stated, however, that “[a]ttorney argument is no substitute for evidence.” Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284 (Fed. Cir. 12 While Petitioners did not allege in their pleading that their pleaded application was refused registration based on Respondent’s subject registration, Petitioners did make this unsupported argument for the first time in their trial brief. Petitioners’ Trial Brief, pp. 1-2, 8 TTABVUE 2-3. Nevertheless, Petitioners failed to submit a copy of their pleaded pending application showing the current status and title of the application or a copy of the Office Action refusing registration of their pleaded mark based on Respondent’s subject registration during their assigned testimony period. See WeaponX Performance Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1040 (TTAB 2018) (“In order for [Petitioners’] pleaded pending application to be received in evidence and made part of the record, Petitioners had to file a copy of [their] pleaded pending application showing the current status and title under their notice of reliance during [their] assigned testimony period.”); see also Giersch v. Scripps Networks, 90 USPQ2d 1020, 1022 (TTAB 2009) (pending application must be properly introduced, and the fact that it was refused pending outcome of proceeding must be documented, before Board will rely upon application in determining plaintiff's standing). Cancellation No. 92068879 8 2005)); see also In re Simulations Publ’ns, Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975) (“Statements in a brief cannot take the place of evidence.”). Moreover, Petitioners state in their trial brief what the evidence “will show” and includes statements such as “Petitioners will provide metrics as evidence.”13 It appears that Petitioners filed their trial brief under the mistaken belief that they still had an opportunity to submit evidence to prove their case. However, any evidence Petitioners intended to rely upon in support of their standing and asserted claim of likelihood of confusion should have been submitted during their assigned testimony period and prior to the filing their trial brief. In sum, there is no evidence properly of record that establishes that Petitioners have a “real interest,” i.e., a “direct and personal stake,” in the outcome of this proceeding or that Petitioners are more than “mere intermeddlers.” Empresa Cubana, 111 USPQ2d at 1062; Ritchie, 50 USPQ2d at 1026; see also TBMP § 309.03(b). Accordingly, we find Petitioners have failed to prove their standing to cancel Respondent’s subject registration. Petitioners’ failure to prove standing is a sufficient basis to deny Petitioners’ petition to cancel. See Lumiere Prods., Inc. v. Int’l Tel. & Tel. Corp., 227 USPQ 892, 893 (TTAB 1985). However, even if Petitioners had proved their standing (which they did not), there is no evidence properly of record to prove any of the elements of their alleged claim of likelihood of confusion. Thus, Petitioners’ asserted likelihood of confusion claim must fail. 13 Id. at pp. 3-4 and 6; 8 TTABVUE 4-5 and 7. Cancellation No. 92068879 9 Decision: The petition for cancellation is denied with prejudice.