2156775 Ontario Inc.v.GI Group, Inc.

Trademark Trial and Appeal Board

Aug 20, 2015

No. 92058047re (T.T.A.B. Aug. 20, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed:
August 20, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

2156775 Ontario Inc.
v.
GI Group, Inc.
_____

Cancellation No. 92058047
_____

Motion for Modification
_____

Ronald E. Shapiro of Shapiro and Silverstein PLLC,
for 2156775 Ontario Inc.

John A. James of Law Offices of John A. James,
for GI Group, Inc.
_____

Before Cataldo, Wellington, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On June 15, 2015, Petitioner 2156775 Ontario Inc. timely filed a motion for
modification of the Board’s final decision issued May 15, 2015, in which the Board
dismissed the petition to cancel with prejudice based on Petitioner’s failure to prove
Cancellation No. 92058047

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its standing. Petitioner contends that, pursuant to Federal Circuit precedent, the
dismissal should have been made without prejudice and asks us to modify our
decision to that extent. Respondent did not respond to the motion.
Generally, the premise underlying a request for rehearing, reconsideration, or
modification of a final decision under Trademark Rule 2.129(c), 37 C.F.R. § 2.129(c),
is that, based on the evidence of record and the prevailing authorities, the Board
erred in reaching the decision it issued. The request should not be devoted simply to
a reargument of the points presented in the requesting party’s brief on the case.
Rather, the request should be limited to a demonstration that, based on the
evidence of record and the applicable law, the Board’s ruling is in error and requires
appropriate change. See Trademark Trial and Appeal Board Manual of Procedure
(TBMP) §§ 543 and 804 (2015).
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025
(Fed. Cir. 1999); John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945
(TTAB 2010). Pursuant to Section 14 of the Trademark Act, 15 U.S.C. § 1064, a
party has standing to seek cancellation of a registration if the party believes it is or
will be damaged by the registration. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
In this case, Petitioner alleged that its own application to register the mark
STAR for beer has been refused due to a likelihood of confusion with Respondent GI
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Group, Inc.’s registration of the mark STARZ for beer and lager,1 and that
Petitioner has appealed that refusal. Proof that Petitioner filed an application that
was rejected because of Registrant’s registration would be sufficient to establish its
standing. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185,
189 (CCPA 1982). At trial, however, Petitioner introduced no evidence regarding its
application or otherwise establishing its direct commercial interest in this
proceeding, apparently under the misapprehension that the file of its application
was of record automatically.2
On careful consideration, we do not agree with Petitioner that our final decision
in this case erred in dismissing the petition with prejudice. Petitioner quotes our
primary reviewing court, the U.S. Court of Appeals for the Federal Circuit, as
stating: “Ordinarily, dismissal for lack of standing is without prejudice.” Fieldturf
Inc. v. Southwest Recreational Indus. Inc., 357 F.3d 1266, 69 USPQ2d 1795, 1798
(Fed. Cir. 2004). Neither Fieldturf nor the other cases cited by Petitioner, however,
involved the Board; rather, all were appeals from federal district courts established
under Article III of the U.S. Constitution. In a court created pursuant to Article III,
standing is a jurisdictional requirement, without which the court has no power to
render judgment on the merits of the substantive claim. As the Federal Circuit
explained in Ritchie v. Simpson, in Article III courts, a plaintiff must make out a

1 Registration No. 3624412, issued May 19, 2009 from an application filed May 15, 2008.
2 Although the file of a respondent’s registration “forms part of the record of the proceeding
without any action by the parties,” a petitioner’s application does not. Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b); TBMP 704.03(b)(2).
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“case or controversy” between itself and a defendant to have standing. Id., 50
USPQ2d at 1025 (citing Warth v. Seldin, 422 U.S. 490, 498-99 (1975)).
In contrast, “case” and “controversy” restrictions for standing do not apply to
matters before administrative agencies and boards, including the Trademark Trial
and Appeal Board. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1727 (Fed. Cir. 2012); see also 13B CHARLES ALAN WRIGHT ET AL.,
FEDERAL PRACTICE & PROCEDURE § 3531.13 (April 2015) (“Administrative agencies
are not established under Article III and should not be bound by judicial rules of
standing in determining what parties to admit to adjudicatory or rulemaking
proceedings, any more than they are bound by other judicial rules of procedure.”). It
is Trademark Act Section 14 which confers standing to petition to cancel a
registration of a mark before the Board.
In a cancellation proceeding, moreover, a petitioner bears the burden of proving
standing at trial as an essential element of its case in chief. Lipton, 213 USPQ at
189 (“The facts regarding standing, we hold, are part of a petitioner’s case and must
be affirmatively proved.”); see also No Nonsense Fashions, Inc. v. Consolidated
Foods Corp., 226 USPQ 502, 504 (TTAB 1985) (stating that “an essential element of
proof in any opposition or cancellation proceeding is that the opposer or petitioner
possess a ‘real interest’ in the proceeding”). Petitioner’s failure to prove the
essential element of its standing at trial results in a judgment on the merits. Thus,
dismissal with prejudice was appropriate.
Decision: Petitioner’s motion for modification of our final decision is denied.