Alcatraz Media, Inc.v.Chesapeake Marine Tours Inc. dba Watermark Cruises

Trademark Trial and Appeal Board

Jul 2, 2013

No. 92050879 (T.T.A.B. Jul. 2, 2013)

Oral Hearing: June 13, 2012 Mailed: July 2, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Alcatraz Media, Inc.

v.

Chesapeake Marine Tours Inc. dba Watermark Cruises
_____

Cancellation No. 92050879

against Registration No. 3048114

_____

E. Michelle Tyde and Rebeccah Gan of the Tyde Law Group, LLC for
Alcatraz Media Inc..

H. Jay Spiegel of H. Jay Spiegel & Associates for Chesapeake
Marine Tours Inc. dba Watermark Cruises.
______

Before Seeherman, Kuhlke, and Lykos, Administrative Trademark
Judges.

Opinion by Lykos, Administrative Trademark Judge:

On April 30, 2009, Alcatraz Media, Inc. (“petitioner”)
filed a petition to cancel Chesapeake Marine Tours Inc. dba
Watermark Cruises’s (“respondent” or “Watermark”) registration
on the Principal Register for the mark ANNAPOLIS TOURS, in
THIS OPINION IS A
PRECEDENT OF THE TTAB
Cancellation No. 92050879
2
standard character format, for “conducting guided tours of
historic districts and other areas of cities” in International
Class 41.1 The registration alleges March 1993 as the date of
first use in commerce based upon use by respondent’s predecessor
in interest, Three Centuries Corporation (“Three Centuries”).2
According to the underlying application which matured into the
involved registration, the mark is used on “invoices, brochures,
rack cards, business cards, advertising in publications and on a
web site.”3 Respondent disclaimed exclusive rights to the word
“TOURS.” The mark is registered pursuant to Section 2(f), 15
U.S.C. § 1052(f), based solely on a declaration of at least five
years of continuous and substantially exclusive use prior to
making the declaration.4 The Section 2(f) declaration was
executed by respondent’s President, Ms. Debbie Gosselin, on
August 18, 2005 and reads as follows:
That the mark has become distinctive of the services
through substantially exclusive and continuous use in

1 Registration No. 3048114, registered on January 24, 2006; Section 8
affidavit acknowledged and accepted.

2 Concurrent with the underlying application which matured into
registration, respondent submitted an assignment of the mark signed by
the President of Three Centuries, Paula Fishback, claiming “common law
rights from the date of first use of October, 1992, and in interstate
commerce since March 1993.”

3 Application Serial No. 76622508, filed November 29, 2004, p. 4.

4 During ex parte examination, the examining attorney refused
registration of the mark on the ground that it is geographically
descriptive of the identified services under Section 2(e)(2) of the
Trademark Act. In response thereto, respondent amended the application
to seek registration pursuant to Section 2(f).
Cancellation No. 92050879
3
commerce by Applicant and its predecessor for at least
the five years immediately before the date of this
statement.

As set forth in the amended petition to cancel, the grounds
for cancellation are as follows: (1) respondent’s registered
mark is generic; (2) the mark is merely descriptive and has not
acquired distinctiveness under Section 2(f); (3) the mark is
primarily geographically descriptive and has not acquired
distinctiveness under Section 2(f); and (4) respondent committed
fraud in connection with the execution of its Section 2(f)
declaration. More specifically, petitioner’s claim that
registrant’s mark has not acquired distinctiveness is based on
the following allegations:
29. Given that Registrant’s Mark is primarily, and
thus highly descriptive, as noted by the examining
attorney, actual evidence that “ANNAPOLIS TOURS” is
perceived as a mark for the relevant goods or services
is required to establish distinctiveness.

30. The evidence does not establish that “ANNAPOLIS
TOURS” is perceived as a mark for the relevant goods
or services, i.e., conducting guided tours in
Annapolis.

Petitioner’s claim of fraud is based on allegations that:5

37. As of August 18, 2005, Registrant and its
predecessor, Three Centuries Tours of Annapolis, had
not “used” the term “Annapolis Tours” as a service
“mark” in commerce “substantially exclusive and
continuous for the previous five (5) years….”

5 The quotation marks in the following paragraphs are part of the
petition to cancel.
Cancellation No. 92050879
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38. As of August 18, 2005, Registrant knew that other
companies, including Petitioner, were using the term
“Annapolis Tours” in connection with tour services,
and therefore knew that its use of the mark was not
“substantially exclusive.”

39. Since Respondent did not conduct any search or
investigation of third party use prior to selecting
and adopting the mark, Respondent had no basis to
declare that its use of the mark was “substantially
exclusive.”

40. Since Ms. Gosselin knew she did not conduct any
search or investigation of third party use prior to
making her sworn declaration, Ms. Gosselin knew she
had no basis to declare that its use of the mark was
“substantially exclusive.”

41. At the time Ms. Gosselin made her sworn
declaration, she was an officer of registrant, acting
within the scope of her authority and her false
declaration is attributable to Registrant by the
doctrine of respondeat superior.

42. Based on false averments of five years of use of
Registrant’s mark prior to the filing of the
declaration, and five years of substantially exclusive
use, Registrant committed fraud.

Respondent, in its answer to the amended petition to
cancel, denied the salient allegations therein.6

6 In addition, respondent asserted the affirmative defense of failure
to state a claim upon which relief may be granted. Insofar as
respondent neither filed a formal motion to dismiss pursuant to Fed R.
Civ. P. 12(b)(6) during the interlocutory phase of this proceeding,
nor argued this asserted affirmative defense in its brief, it is
hereby deemed waived. Respondent also asserted the affirmative
defenses of “waiver, estoppel, acquiescence, ratification and laches”
in its amended answer. Respondent had previously asserted these
identical affirmative defenses in its answer to the original
complaint. During briefing of petitioner’s motion for summary
judgment, respondent stated that it took no issue with the striking of
these defenses and therefore the Board struck these defenses in its
November 15, 2010 order.
Cancellation No. 92050879
5
The parties have fully briefed the case, and both were
represented at an oral hearing before the Board.
I. Claims Argued Before the Board
Insofar as petitioner has not argued the descriptive or
geographically descriptive claims in its brief, we find, in
accordance with the Board’s usual practice, that those claims
have been waived. See, e.g., Knight Textile Corp. v. Jones
Investment Co., 75 USPQ2d 1313, 1314 n.4 (TTAB 2005). In any
event, we note that registration of respondent’s involved
registration under Section 2(f) constitutes a concession that
its mark is not inherently distinctive. See The Cold War
Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92
USPQ2d 1626, 1629 (Fed. Cir. 2009) (“an applicant’s reliance on
Section 2(f) during prosecution presumes that the mark is
descriptive.”) (“Cold War Museum”).
II. Petitioner’s Motion to Strike Respondent’s Brief
In Appendix 2 to respondent’s trial brief, which is 16
pages in length, respondent has lodged numerous evidentiary
objections. Petitioner in its reply brief argues that
respondent’s 16-page appendix constitutes “a subterfuge to avoid
the page limit” by “cloaking whole argument sections of its
brief under the guise of an appendix.” Petitioner’s Reply
Brief, p. 7. Petitioner requests that the Board either strike
respondent’s trial brief in whole or in part.
Cancellation No. 92050879
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Trademark Rule 2.128(b) provides that without prior leave
of the Board, a party’s main brief cannot exceed 55 pages.
Section 801.03 of the Trademark Manual of Board Procedure
(“TBMP”) (3rd ed. rev.2 2013), citing the Board’s decision in
Harjo v. Pro-Football Inc., 45 USPQ2d 1789, 1792 (TTAB 1998),
sets forth, in relevant part, the following guidance in
interpreting this rule:
The parts of the brief that fall within the length
limit include the table of contents, index of cases,
description of the record, statement of the issues,
recitation of facts, argument, and summary. …
[exhibits] or appendices to a brief, not being part of
the brief itself, are not included within the page
limit. In addition, evidentiary objections that may
properly be raised in a party’s brief on the case may
instead be raised in an appendix or by way of a
separate statement of objections. The appendix or
separate statement is not included within the page
limit. Nevertheless, appendices to a brief may not be
used to avoid the page limitation.

See also, Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d
1321, 1326 (TTAB 1992) (“Marshall Field”).
We find that respondent’s main brief complies with the
requirements set forth above. Appendix 2 is devoted solely to
asserting and arguing respondent’s evidentiary objections as
opposed to any of the substantive claims before us. In view of
Cancellation No. 92050879
7
the foregoing, petitioner’s motion to strike respondent’s brief,
in whole or in part, is denied.7
III. The Record
Pursuant to Trademark Rule 2.122, the record includes
respondent's registration file and the pleadings.
In addition, the parties introduced the following:
A. Petitioner’s Evidence
1. Petitioner’s Notice of Reliance (filed April 14,
2011)8 comprised of the following items:

a. Printed publications consisting of excerpts
from books and travel guides on the Mid-
Atlantic region (Exs. A-G);

b. Printed publications consisting of newspaper
articles dated 1984-2007 retrieved from the
Lexis/Nexis database (Ex. H);

c. Printed publications consisting of newspaper
articles dated 2002-2010 retrieved from the
Lexis/Nexis database (Ex. I);

d. Printed publications consisting of newspaper
articles dated 1997-2009 retrieved from the
Lexis/Nexis database (Ex. J);

e. Printed publications consisting of printouts
from Internet web sites (Ex. K);

f. Discovery materials consisting of Respondent’s
Responses to Petitioner’s Interrogatories and
Requests for Admissions, as supplemented,
dated November 12, 2009, February 4, 2010,
February 25, 2010 and March 7, 2011 (Ex. L);

7 In view of our determination, petitioner’s response to each of
respondent’s evidentiary objections set forth in Appendix 1 of its
reply brief has not been counted towards petitioner’s page limit.

8 Portions of the notice of reliance were designated confidential. A
redacted version for public view was filed on April 15, 2011.
Cancellation No. 92050879
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g. The first discovery deposition of Debbie
Gosselin, respondent’s owner, dated February
2, 2010 (“Gosselin Discovery Deposition I”)
with Ex. 1-21 attached thereto (Ex. M); and

h. The second discovery deposition of Ms.
Gosselin dated March 29, 2011 (“Gosselin
Discovery Deposition II”) with Ex. 23-55
attached thereto (Exs. N and O).

2. The testimony deposition of Ryan Windsor, founder
and CEO of petitioner (“Windsor Deposition”),
with petitioner’s Trial Exs. 72-88 attached
thereto.

3. The testimony deposition of Katherine C. Summers,
owner of K.C. Summers Communications, a media
consulting company specializing in travel, and
former travel journalist and editor for The
Washington Post (“Summers Deposition”),
identified by petitioner as its expert witness,
with petitioner’s Trial Exs. 23-31 attached
thereto.

4. The third-party testimony depositions of the
following individuals:

a. Michael Carter, owner and operator of
Annapolis Ghost Tours, formerly Ghosts of
Annapolis Tours (“Carter Deposition”) with
petitioner’s Trial Exs. 1-22 attached thereto;

b. George Palmer, owner of Annapolis Urban
Adventures, (“Palmer Deposition”) with
petitioner’s Trial Exs. 32-34 attached
thereto; and

c. Susan Lynn Denis, former tour guide for
respondent’s predecessor in interest, Three
Century Tours (“Denis Deposition”) from 1998-
2005, with petitioner’s Trial Exs. 35-71
attached thereto.

5. The rebuttal testimony deposition of Ms. Denis
(“Denis Rebuttal Deposition”).

Cancellation No. 92050879
9
B. Respondent’s Evidence

1. Respondent’s Notice of Reliance (filed June 13,
2011) comprised of printouts from respondent’s
Internet website at annapolis-tours.com printed
on June 11, 2011 (Exs. 2, 5 and 6) and printouts
from third-party websites (Exs. 1, 3, and 4);

2. The testimony deposition of Debbie Gosselin
(“Gosselin Testimony Deposition”); and

3. The third-party testimony depositions of the
following individuals:

a. Matthew Grubs, owner and operator of Discovery
Annapolis Tours (“Grubs Deposition”);

b. Hillary Gonzales, former employee of
respondent, (“Gonzales Deposition”); and

c. Mary Jo McCulloch, President and CEO of the
Maryland Tourism Council (“McCulloch
Deposition”).

4. Respondent’s Trial Exs. 1-18 of which Exs. 7, 8,
10 and 15 were designated confidential.

IV. Respondent’s Evidentiary Objections
The record in this case is voluminous, and respondent has
interposed numerous evidentiary objections. To the extent an
objection has not been specifically addressed below, we have
considered the objected-to evidence, keeping in mind the
objections, and have accorded it whatever probative value it
merits.
A. Respondent’s Objections to Petitioner’s Trial Witnesses
Cancellation No. 92050879
10
Respondent objects to the testimony of petitioner’s fact
witnesses, Mr. Carter, Mr. Palmer,9 Ms. Denis, and Mr. Windsor on
the grounds of hearsay, opinion testimony and bias, and moves to
strike such testimony. Respondent also objects to the testimony
of Ms. Denis as a rebuttal witness as opinion testimony.
The Board does not ordinarily strike testimony taken in
accordance with the applicable rules on the basis of substantive
objections; rather, such objections are considered by the Board
in its evaluation of the probative value of the testimony at
final hearing. See Krause v. Krause Publications Inc., 76
USPQ2d 1904, 1907 (TTAB 2005) (“Krause”); Marshall Field, 25
USPQ2d at 1326. In accordance with our practice, we have not
stricken any of the testimony offered by Mr. Carter, Mr. Palmer,
Ms. Denis, and Mr. Windsor. Nonetheless, we have considered the
probative value of each witness’ trial testimony in light of
respondent's objections. For example, we have disregarded any
opinion testimony regarding the ultimate disposition of the
claims asserted herein.10 See, e.g., Steiger Tractor, Inc. v.

9 As per the Board’s March 24, 2011 interlocutory order, Mr. Palmer’s
testimony is not to exceed the scope of the matters stated in his
affidavit.

10 We have also disregarded any opinions on the legal claims asserted
in this proceeding proffered in any of the affidavits attached as
exhibits to witness testimony.

Cancellation No. 92050879
11
Steiner Corp., 221 USPQ 165, 169 (TTAB 1984); The Mennen Co. v.
Yamanouchi Pharm. Co., 203 USPQ 302, 305 (TTAB 1979).11
We have also weighed the probative value of each witness’
testimony against any potential bias, hostility or animus given
that some of the witnesses are competitors of respondent.
Consistent with our practice, “[w]here we have relied on
testimony to which respondent objected, it should be apparent to
the parties that we have deemed the material both admissible and
probative to the extent indicated in the opinion.” Krause, 76
USPQ2d at 1907.
Respondent also moves under Fed. R. Evid. 702 to strike the
entirety of the testimony deposition of Katherine C. Summers as
expert testimony on the ground that petitioner failed to lay the
foundation necessary to establish her as a qualified expert
witness regarding how the public perceives the term ANNAPOLIS
TOURS.12 More specifically, respondent contends that Ms. Summers
never conducted a survey of the relevant purchasing public,

11 See also Jones & Laughlin Steel Corp. v. Jones Eng’g Co., 292 F.2d
294, 130 USPQ 99, 100 (CCPA 1961) (“The witnesses did not cite any
instances of actual confusion but merely expressed an opinion as to the
origin of the goods. Such opinions are not controlling.”); The Quaker
Oats Co. v. St. Joe Processing Co., 232 F.2d 653, 109 USPQ 390, 391 (CCPA
1956) (“[W]e deem it necessary to comment on the weight to be given the
witnesses’ opinions that the marks would be likely to cause confusion.
In this respect it has been held that such testimony amounts to nothing
more than an expression of opinion by the witness, which obviously is not
binding upon either the tribunals of the Patent Office or the courts.”).
12 Petitioner had previously disclosed William D. Neal as an expert
witness in this case but then substituted Ms. Summers as an expert
witness in a supplemental disclosure.

Cancellation No. 92050879
12
personally visited or toured Annapolis, or interviewed tour
operators in that city. In the alternative, respondent argues
that she only be considered a fact witness. In response,
petitioner maintains that Ms. Summers’ professional experience
as a travel editor and writer “has afforded her ‘special
knowledge’ of … Mid-Atlantic tourism services.” Petitioner’s
Reply Brief, p. 30. Petitioner further asserts that based on
her interactions with tourists and residents from the Washington
D.C.-Baltimore area, she is qualified to “give her views as to
the manner in which the media uses the phrase ‘Annapolis Tours’
in newspaper articles and other publications,” and as such, her
testimony is probative as to petitioner’s genericness claim.
Petitioner’s Reply Brief, pp. 30-1. Respondent also objected to
some of Ms. Summers’ testimony as inadmissible hearsay.
Fed. R. Evid. 702, made applicable to Board proceedings by
Trademark Rule 2.116(a), provides:
A witness who is qualified as an expert by knowledge,
skill, experience, training, or education may testify
in the form of an opinion or otherwise if:

(a) the expert’s scientific, technical, or other
specialized knowledge will help the trier of fact to
understand the evidence or to determine a fact in
issue;

(b) the testimony is based on sufficient facts or
data;

(c) the testimony is the product of reliable
principles and methods; and

Cancellation No. 92050879
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(d) the expert has reliably applied the principles and
methods to the facts of the case.

Rule 702 does not specify any particular means for
qualifying an expert, requiring only that the witness possess
the “knowledge, skill, experience, training, or education”
necessary to “assist” the trier of fact. Fed. R. Evid. 702;
Notes of Advisory Committee of Proposed Rule.13 However, as
explained in the advisory committee notes to Rule 702, “[i]f the
witness is relying solely or primarily on experience, then the
witness must explain how that experience leads to the conclusion
reached, why that experience is a sufficient basis for the
opinion, and how that experience is reliably applied to the
facts.”
According to her testimony, Ms. Summers received her B.A.
in journalism and political science from George Washington
University in 1980. Summers Deposition, 10:1-10. She worked as
an assistant editor for the travel section of The Washington
Post for ten years. Id. at 12:14-13:8. She was then promoted
to the position of editor where she served for eight years. Id.
at 13:9-16. As part of her duties as travel editor, she

13 In 2000, Fed. R. Evid. 702 was amended in response to the Supreme
Court’s decision in Daubert v. Merrell Dow Pharmaceuticals, Inc., 509
U.S. 579 (1993) (“Daubert”), and to the subsequent cases applying
Daubert, including Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999)
(“Kumho”). Committee Notes on Rules – 2000 Amendment. As the Supreme
Court stated in Daubert, the trial court must determine whether the
proposed expert possesses “a reliable basis in the knowledge and
experience of [the relevant] discipline.” Daubert, 509 U.S. at 592.
Cancellation No. 92050879
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supervised a staff of seven to eight people as well as freelance
writers, and was responsible for coming up with topics for
articles, assigning stories, and editing. Id. at 13:15-14:9.
She estimated that she has written during her thirty years as a
journalist “over a thousand” articles on travel and tourism.
Id. at 18:14-22. In addition, she ran an Internet chat/blog
once a week responding in real time to emails from the public on
the subject of travel. Id. at 14:16-15:12. Ms. Summers
testified that in her professional opinion travel editors and
writers have an occupational need to use the wording “Annapolis
Tours” in order to accurately reference the travel and tourism
industry around Annapolis. Id. at 53:12-20, Ex. 23. She
further testified that based on her experience as a travel
writer and editor, her opinion was that “the words Annapolis
Tours are generic…and I think the average traveler plus the
average travel journalist would see those words and think they
were describing tours of Annapolis.” Id. at 43:13–48:5.
However, she also testified that she has never reviewed the
legal concepts of trademark law (Summers Deposition, 56:8-12);
and that in preparation for her testimony, she neither visited
Annapolis nor personally interviewed other tour guide operators
but instead “just Googled Annapolis Tours.” Id. at 58:1-8. Ms.
Summers further testified that she did not conduct any formal
consumer surveys, studies or focus groups but rather formulated
Cancellation No. 92050879
15
her opinion of “the average American consumer of travel” from
her casual conversations with people online or by telephone
about visiting Annapolis, and that she did not record any data
regarding these conversations (for example, the number of people
she communicated with; their age, and their gender). Id. at 59-
62.
We find that based on her professional experience as a
travel writer and editor, Ms. Summers is qualified as an expert
in the field of travel writing and journalism. We further find
that, based on her professional experience, she is qualified as
an expert as to how to convey travel information to readers and
potential tourists, and how travel writers believe such
information will be perceived and understood. See UMG
Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1876-77 (TTAB
2011) (opposer’s objection to witness’ testimony regarding his
opinion that MOTOWN is a descriptive term used to identify a
musical style or genre on the grounds of lack of personal
knowledge overruled; opinion is based on witness’ “musicological
research” and Fed. R. Evid. 703 permits an expert to give an
opinion based on matters not in evidence). However, we cannot
accept Ms. Summers as an expert regarding actual consumer
perception. Nor can Ms. Summers’ opinion serve as a substitute
for the Board’s judgment on the legal claims before us.
Accordingly, we have treated her as an expert as explained above
Cancellation No. 92050879
16
and have accorded her testimony the appropriate probative
value.14
B. Respondent’s Objections to Petitioner’s Trial Exhibits
Respondent moves to strike the following exhibits
introduced in connection with petitioner’s third-party witness
testimony on the basis that respondent failed to produce the
documents during discovery or supplement its discovery responses
after the close thereof: Carter Deposition Exs. 2, 4, 7-10, 15-
17; Denis Deposition Exs. 36, 37, 41, 52, 57, 58, 60, and 61.
In response thereto, petitioner maintains that because Ms.
Fishback, the owner of respondent’s predecessor in interest,
was incapable of testifying, petitioner had to rely on the
testimony of third-party witnesses; that said third-party
witnesses are not attorneys and therefore incapable of
determining the relevance of documents in their possession; that
the documents in question were not found until after the close
of discovery; and that respondent had ample opportunity to
cross-examine the witnesses. Petitioner further asserts that
“petitioner’s counsel spent hours plumbing the basements of its
witnesses, seeking out documents supporting or contradicting the
parties’ respective positions, and produced them accordingly to
[r]espondent during discovery.” Petitioner’s Reply Brief, n.18.

14 To the extent that any of her testimony consists of hearsay, we have
disregarded it.
Cancellation No. 92050879
17
In essence, respondent has moved for application of the
estoppel sanction. Under the estoppel sanction, a party that
fails to provide information may, upon motion or objection by
its adversary, be precluded from using that information or
witness at trial, “unless the failure was substantially
justified or is harmless.” Fed. R. Civ. P. 37(c)(1). See e.g.,
Panda Travel, Inc. v. Resort Option Enterprises, Inc., 94 USPQ2d
1789, 1792-93 (TTAB 2009) (documents not produced until after
the start of trial stricken). See also TBMP § 527.01(e) (3rd ed.
rev.2 2013) and cases cited therein. Parties have a duty to
supplement discovery responses “in a timely manner if the party
learns that in some material respect the disclosure or response
is incomplete or incorrect, and if the additional or corrective
information has not otherwise been made known to the other
parties during the discovery process or in writing.” Fed. R.
Civ. P. 26(e)(1)(A). However, requests for production of
documents can only be served on a party to the proceeding.
Trademark Rule 2.120(a)(3).
After considering all the relevant circumstances, we
decline to apply the estoppel sanction. In this particular
case, Mr. Carter and Ms. Denis did not become available
witnesses in this proceeding until after the close of discovery.
Mr. Carter testified that he was reluctant to appear as a
witness in this proceeding, fearing retribution as a competitor
Cancellation No. 92050879
18
against respondent. Carter Deposition, 65:21-66:7. Similarly,
Ms. Denis was reluctant to testify until she sold her company.15
Thus, because these witnesses are not parties to the proceeding
and were initially unwilling to testify, any documents they had
in their possession did not become available to petitioner until
after the close of discovery. While the preferable practice
would have been for petitioner to supplement its discovery
responses prior to the taking of Mr. Carter’s and Ms. Denis’
testimony depositions, petitioner certainly cannot be said to
have refused to produce the trial exhibits in question during
discovery as they were not then in petitioner’s possession. As
such, we deny respondent’s motion to strike Carter Exs. 2, 4, 7-
10, 15-17; and Denis Exs. 36, 37, 41, 52, 57, 58, 60, and 61.
We note, however, that even if the motion were granted and the
exhibits were not considered, it would not make any difference
to the ultimate result herein.
Respondent also objected to petitioner’s Trial Exs. Q-ZZ
which are comprised of copies from Three Centuries’ internal
monthly newsletter for tour guides, The Tattler, from the period
1995-2004. Insofar as Ms. Denis, a former tour guide for Three

15 Respondent had previously moved to quash the testimony of Ms. Denis
and Mr. Carter on the grounds that they were not identified as
witnesses in this proceeding until pretrial and amended pretrial
disclosures were served. The Board, taking into account Mr. Carter’s
and Ms. Denis’ initial reluctance to testify in this case and the fact
that respondent knew during the discovery period that petitioner was
actively seeking the participation of third-party witnesses in this
proceeding, denied the motion to quash. Board Order (March 24, 2011).
Cancellation No. 92050879
19
Centuries, properly identified and authenticated the documents
during her testimony, respondent’s objection is overruled.
C. Respondent’s Objections to Petitioner’s Notice of
Reliance

Respondent objects to the admissibility of Exs. A-G
(excerpts from third-party book and travel guides on the Mid-
Atlantic region, e.g. Fodor’s Virginia and Maryland, Landmarks
of the Chesapeake Bay) of petitioner’s notice of reliance on the
grounds that the documents are illegible, obscured or poorly
copied. Petitioner, however, argues that respondent waived its
right to object as it was not timely asserted by way of a motion
to strike filed promptly after petitioner filed its notice of
reliance. Petitioner maintains that because the objection is
procedural in nature and it could have been cured had respondent
promptly filed a motion to strike, it should be overruled.
We disagree, finding that respondent’s objections raised
for the first time in its main brief are in fact timely.
Petitioner has a duty to ensure that the evidence it submits is
legible. Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d
1400, 1404 (TTAB 1998) (“It is reasonable to assume that it is
opposer's responsibility to review the documents it submits as
evidence to ensure that such submissions meet certain basic
requirements, such as that they are legible…,” finding that
applicant’s objections, raised for the first time in its trial
Cancellation No. 92050879
20
brief, to illegible exhibits submitted with opposer’s notice of
reliance, to be timely).16 For example, petitioner should have
made sure that excerpts photocopied near the binder of the
publications were readable and not obscured by thick black
lines. Nonetheless, we decline to strike the documents in their
entirety because some portions thereof are legible. That being
said, the Board can only review evidence that is clear and
unobstructed so we have considered this evidence to the extent
it is legible and we are able to read the entire context of the
evidence.
Respondent moved to strike Exs. A-G, Exs. H-J (articles
obtained from the Lexis/Nexis database), Ex. K (Internet print
outs from petitioner’s website) and certain documents in Ex. M
(Gosselin Deposition, Exs. 28, 31-34 which consist of articles
obtained from the Lexis/Nexis database) on the grounds of
irrelevance and immateriality. Respondent’s objections on these
grounds are overruled. These articles and Internet printouts

16 The particular nature of the objection raised here is
distinguishable from those types of objections which, if timely raised
during trial, may be seasonably cured. See, e.g., Corporacion Habanos
SA v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1093 (TTAB 2012)( “As
for opposer's objection to the pages bearing the Internet address
www.cigarcyclopedia.com...on the basis that the pages were not
identified in the supplemental notice of reliance and applicant did
not indicate the relevance of these documents, opposer's objection is
overruled.”). See also TBMP §§ 532 and 707.02 (3rd ed. rev.2 2013) and
cases cited therein. In the situation exemplified by the present case,
the onus is on the party making the submissions to ensure that, at a
minimum, all materials are clearly readable by the adverse party and
the Board.
Cancellation No. 92050879
21
are competent evidence of exposure of “Annapolis Tours” to the
public and the meaning the public is likely to associate with
the term. See In re Bed & Breakfast Registry, 791 F.2d 157,
160, 229 USPQ 818, 819 (Fed. Cir. 1986) (“Bed & Breakfast
Registry”) (competent sources to show the relevant purchasing
public's understanding of a term may include trade journals,
newspapers and other publications). That being said, we note
that such materials are only probative of what they show on
their face, not for the truth of the matters contained therein.
Respondent moved to strike Exs. H-J, and certain documents
in Ex. M which consist of articles obtained from the Lexis/Nexis
database, on the grounds that petitioner did not testify
regarding the search criteria used, petitioner did not submit
all the publications obtained from the search, and the words
“Annapolis” and “Tours” appear in bold or underlined form.
Respondent’s objections are overruled. The Board routinely
accepts printouts of articles obtained from the Lexis/Nexis
database, when filed under notice of reliance, so long as the
date and source of each article are clear. See Int'l Assn. of
Fire Chiefs v. H. Marvin Ginn Corp., 225 USPQ 940, 942 n.6 (TTAB
1985), rev'd on other grounds, 782 F.2d 987, 228 USPQ 528 (Fed.
Cir. 1986) (“Marvin Ginn”) (excerpts from the Lexis/Nexis
database were admissible through notice of reliance because the
materials “clearly identify the excerpted articles by their
Cancellation No. 92050879
22
dates of publication and sources, all of which are readily
available in published materials”). In addition, as part of the
Board’s longstanding practice, parties are permitted to submit a
representative sample of relevant articles obtained from an
Internet database search. See, e.g., ProQuest Information and
Learning Co. v. Island, 83 USPQ2d 1351, 1353 (TTAB 2007)
(evidence in case included a notice of reliance consisting of a
representative sample of articles from printed publications
available to the general public from a search conducted in the
Lexis/Nexis database). A party is under no obligation, and
indeed is discouraged, from making all search results of record.
Only a relevant, representative sample need be submitted.17
Lastly, the fact that the words “Annapolis” and “Tours” are
underlined or in bold type does not affect the authenticity of
the documents but merely shows the search criteria used.
Respondent also objected to the following documents within
petitioner’s Trial Ex. M: (1) Gosselin Deposition, Ex. 35 which
consists of excerpts from telephone books and (2) Gosselin
Deposition Exs. 15-16 which consist of GOOGLE search results
printouts. Both objections are overruled. It is well
established that excerpts from telephone directory pages are
admissible under notice of reliance. Manpower, Inc. v. Manpower

17 Had respondent believed that petitioner’s submissions were not
representative, during its testimony period respondent could have
submitted other articles as rebuttal evidence.
Cancellation No. 92050879
23
Information Inc., 190 USPQ 18, 21 (TTAB 1976). Although Google
search results are not by themselves admissible under notice of
reliance, they were properly authenticated by Ms. Gosselin
during her testimony. See Calypso Technology, Inc. v. Calypso
Capital Management, LP, 100 USPQ2d 1213, 1219 (TTAB 2011) (“The
Safer holding allowing documents printed from internet websites
to be made of record by notice of reliance does not apply to
[GOOGLE] search summaries, which are more in the nature of
listings of documents, i.e., the website pages that the summary
links to, than to the documents per se.”). In general, search
results obtained from GOOGLE have limited evidentiary value due
to their truncated nature insofar as the search summary does not
show the context in which the term or phrase is used on the
listed web pages and may not include sufficient surrounding text
to provide the necessary context for the use. In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed.
Cir. 2007); In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715
(TTAB 2011); In re Thomas, 79 USPQ2d 1021, 1026 (TTAB 2006).
Respondent’s objection to Ex. K, which consists of Internet
printouts from petitioner’s website showing the dates accessed
and printed and URL information, on the grounds that petitioner
failed to authenticate the documents by testimony is overruled.
Pursuant to Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031
(TTAB 2010) (“Safer”), a document obtained from the Internet may
Cancellation No. 92050879
24
be admitted into evidence pursuant to a notice of reliance in
the same manner as a printed publication in general circulation,
in accordance with Trademark Rule 2.122(d), so long as the date
the Internet documents were accessed as well as their source
(the Internet address or URL) is provided and the party filing
the notice of reliance indicates the general relevance of the
documents.
V. The Parties
Petitioner is an online booking agent and reseller of tour
and destination travel activities provided by other entities.
Windsor Deposition, 9:16-10:10; Petitioner’s Trial Exs. 73-74;
Petitioner’s Notice of Reliance, Ex. K. In connection
therewith, petitioner owns and operates over 2000 Internet web
sites comprised of different domain names for different cities.
Windsor Deposition at 27-28. Petitioner commenced operating the
website www.annapolistours.us in 2005 for the purpose of selling
guided tours of Annapolis, MD. Id. at 25:15-25:23, 25:15-27:12;
Petitioner’s Trial Exs. 84-86. As petitioner testified, it
chose the name for its website “as part of our business model to
market and sell the tours based on the cities themselves” in
order to obtain a “competitive advantage.” Windsor Deposition,
27:22-28:22; 28:24.
Respondent’s predecessor in interest was Three Centuries
Corporation (“Three Centuries”), a company which provided guided
Cancellation No. 92050879
25
tours of Annapolis. Gosselin Discovery Deposition I, 49:16-
49:20; Gonzales Deposition, 40:8-13. In November 2004, Debbie
Gosselin, the president and sole owner of respondent, acquired
the assets by merger of Three Centuries from its owner, Paula
Fishback.18 Gosselin Discovery Deposition II, 61:13-62:9,
Gosselin I Ex. 43. Prior to the merger, respondent operated
under the name Watermark and engaged in the business of
providing boat cruises, charters, and tours. Gosselin Discovery
Deposition I, 17:20-24. During 2006-7, respondent rebranded the
two merged entities as Watermark. Gosselin Discovery Deposition
II, 62; Gosselin Discovery Deposition II, Ex. 43.
In 2005, petitioner and respondent entered into a business
arrangement. As part of this arrangement, petitioner purchased
tickets of respondent’s guided tours of Annapolis and re-sold
them to consumers on its website. Windsor Deposition, 31:6-
34:20. Respondent testified that during the course of its
business relationship with petitioner, it was unaware of
petitioner’s ownership and use of the website named
www.annapolistours.us. Gosselin Discovery Deposition, 67:18-
68:12. Respondent terminated its relationship with petitioner
on February 17, 2009. Windsor Deposition, 33:7-33:22;
Petitioner’s Trial Ex. 88. Shortly thereafter, respondent sent

18 As noted previously, Ms. Fishback was incapable of testifying in
this proceeding. Gosselin Discovery Deposition II, 11:4-11:15.
Cancellation No. 92050879
26
petitioner a cease and desist letter, demanding that petitioner
discontinue use of the term “Annapolis Tours.” Windsor
Deposition, 35:12-37:3. Petitioner testified that respondent
never informed petitioner that it owned a registration for the
mark ANNAPOLIS TOURS until after their business relationship was
terminated. Windsor Deposition, 34.
VI. Standing
Respondent does not dispute petitioner’s standing to bring
the instant cancellation proceeding. Nonetheless, plaintiff
must prove its standing as a threshold matter in order to be
heard on its substantive claims. See, for example, Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185 (CCPA 1982). The purpose of the standing requirement is to
prevent mere intermeddlers from initiating proceedings. The
Federal Circuit has enunciated a liberal threshold for
determining standing, namely, whether a plaintiff's belief in
damage has a reasonable basis in fact and reflects a real
interest in the case. See Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023 (Fed. Cir. 1999). See also Jewelers Vigilance
Committee Inc. v. Ullenberg Corp., 853 F.2d 888, 7 USPQ2d 1628
(Fed. Cir. 1988).
Based on the record, we find that petitioner has
established that it is an Internet reseller of tours and
Cancellation No. 92050879
27
destination activities and owns and operates a website,
www.annapolistours.us, comprised in part of respondent’s
registered mark. See discussion supra “The Parties.” In
addition, the record reflects that the parties formerly had a
business arrangement and are now competitors. Id. Indeed,
respondent admitted that petitioner is a competitor, and sent a
cease and desist letter to petitioner requesting that petitioner
cease operation of its www.annapolistours.us web site and domain
name. Id. See also Petitioner’s Notice of Reliance,
Respondent’s Response to Petitioner’s First Set of
Interrogatories (November 12, 2009), Response No. 23. As a
competitor who uses the term “Annapolis Tours” as part of its
domain name, petitioner has shown that it is not a mere
intermeddler, but has a real interest in this proceeding.
Accordingly, petitioner has established its standing to petition
to cancel respondent’s registration. See, e.g., Lipton
Industries, supra, (one basis for standing includes “descriptive
use of term in registered mark”); Stuart Spector Designs Ltd. v.
Fender Musical Instruments Corp., 94 USPQ2d 1549, 1553 (TTAB
2009) (competitors have standing to oppose registration based on
alleged genericness and lack of distinctiveness of product
configuration) (“Stuart Spector v. Fender”). See also Ipco
Corp. v. Blessings Corp., 5 USPQ2d 1974, 1976-77 (TTAB 1988)
Cancellation No. 92050879
28
(cease and desist letter sent by applicant found sufficient to
demonstrate opposer’s standing).
VII. Genericness Claim
First, we consider petitioner’s genericness claim. It is
petitioner’s burden to establish that ANNAPOLIS TOURS is generic
by a preponderance of the evidence. Magic Wand Inc. v. RDB
Inc., 940 F.2d 638, 19 USPQ2d 1551, 1554 (Fed. Cir. 1991)(“Magic
Wand had the burden to show by a preponderance of the evidence
that the primary significance of the TOUCHLESS mark to the
relevant public is the automobile washing service itself, rather
than a washing service provided by a particular entity.”).
A mark is treated as generic if it refers to the class or
category of goods and/or services on or in connection with which
it is used. In re Dial-A-Mattress Operating Corp., 240 F.3d
1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing Marvin Ginn Corp.,
supra. The test for determining whether a mark is generic is
its “primary significance . . .to the relevant public.” Section
14(3) of the Trademark Act (emphasis added), 15 U.S.C.
§ 1064(3); In re American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc., 19 USPQ2d at 1552
(Fed. Cir. 1991); and Marvin Ginn, supra.
To determine whether a mark is generic, we conduct a two-
part factual inquiry: First, we determine the genus of the goods
Cancellation No. 92050879
29
or services at issue; second, we determine whether the term
sought to be registered would be understood by the relevant
public primarily to refer to that genus of goods or services.
See Marvin Ginn, supra.
Our first task is to determine, based on the evidence of
record, the genus of respondent's services. Often, the genus is
defined by the identified goods or services of the involved
registration, which in this case is “conducting guided tours of
historic districts and other areas of cities.” See e.g., In re
Trek 2000 Int’l Ltd., 97 USPQ2d 1106, 1112 (TTAB 2010) (“the
genus of goods at issue in this case is adequately defined by
applicant's identification of goods…”). However, petitioner
takes the position that the proper genus of services should be
more narrowly defined as “guided tours of Annapolis, or simply
tours of Annapolis,” based on record evidence that respondent
provides tours of Annapolis. Petitioner’s Brief, p. 23.
Respondent disagrees, arguing that the genus is adequately
defined by the recitation of services. In support thereof,
respondent points to its testimony that it provides tours of
other regions in Anne Arundel County, Maryland as well as the
city of Baltimore. Gosselin Deposition, 151:21-152:7.
We see no reason in this case to depart from the guidance
provided by our primary reviewing court, the Court of Appeals
for the Federal Circuit, that “a proper genericness inquiry
Cancellation No. 92050879
30
focuses on the description of [goods or] services set forth in
the [application or] certificate of registration.” Magic Wand,
19 USPQ2d at 1552, citing 15 U.S.C. § 1064(3) (“The Lanham Act
permits cancellation when a “registered mark becomes the generic
name for the goods or services…for which it is registered…”).
Implicit in respondent’s argument is the supposition that by
defining the genus to include guided tours of cities other than
Annapolis, MD, respondent can avoid a genericness finding.
Respondent’s argument essentially amounts to a matter of
semantics. Respondent cannot circumvent a genericness finding
on the basis that the mark ANNAPOLIS TOURS may be used to
identify guided tour services of other cities. In re Analog
Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988) (where a mark is
generic for some but not all of the goods identified in an
application, registration is properly refused for all of the
goods). What is crucial to our determination is that the
recitation of services is sufficiently broad to encompass guided
tours of “historic districts” or “other areas” of any city,
including the city of Annapolis. We therefore find that the
genus of services at issue in this case is adequately defined by
respondent's recitation of services, specifically, “conducting
guided tours of historic districts and other areas of cities.”
Turning now to whether the designation ANNAPOLIS TOURS is
understood by the relevant purchasing public primarily to refer
Cancellation No. 92050879
31
to that genus of services, our next task is to define the
“relevant purchasing public.” Petitioner argues that the
“relevant purchasing public” in this instance consists of
“anyone willing to pay money to participate in a guided tour,
and includes leisure travelers who may visit Annapolis from
anywhere in the world.” Petitioner’s Brief, p. 24. Respondent
in its brief does not dispute this. The “relevant purchasing
public” means “the relevant public which does or may purchase
the goods or services in the marketplace.” Magic Wand, 19
USPQ2d at 1552-3. The record shows that purchasers of
respondent’s services are not limited to leisure travelers
visiting Annapolis but also include entities involved in the
travel industry, including petitioner itself which once
purchased respondent’s services, for resale to consumers. See
discussion supra, “The Parties.” We therefore find the relevant
purchasing public to include not only the leisure traveler but
also travel agencies, tour providers and resellers whether they
operate over the Internet or not.
According to the test set forth in the case of In re
American Fertility Society, supra, and further clarified in the
case of In re Dial-A-Mattress Operating Corp., 57 USPQ2d at
1810:
[W]here the proposed mark is a phrase (such as “Society for
Reproductive Medicine”), the Board “cannot simply cite
definitions and generic uses of the constituent terms of a
Cancellation No. 92050879
32
mark”; it must conduct an inquiry into “the meaning of the
disputed phrase as a whole.” In re The Am. Fertility
Soc'y, 188 F.3d at 1347, 51 USPQ2d at 1836.

Thus, we must now ascertain whether the designation
ANNAPOLIS TOURS is understood by the relevant purchasing public
as primarily referring to “conducting guided tours of historic
districts and other areas of cities.” Competent sources to show
the relevant purchasing public's understanding of a contested
term include purchaser testimony, consumer surveys, dictionary
definitions, trade journals, newspapers and other publications.
In re Dial-A-Mattress Operating Corp., supra; In re Bed &
Breakfast Registry, 229 USPQ at 819; Magic Wand, 19 USPQ2d at
1553.
At the outset, we note that respondent’s disclaimer of the
individual word TOURS in its Section 2(f) registration
constitutes a tacit admission that this individual term is
generic for the identified services. See In re Creative
Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986) (“[W]e
conclude that it is within the discretion of an Examining
Attorney to require the disclaimer of an unregistrable component
(such as a common descriptive, or generic, name) of a composite
mark sought to be registered on the Principal Register under the
provisions of Section 2(f).”). The genericness of the word
TOURS is supported by the record as well, including a definition
of “tour” as meaning “a long trip, as for sightseeing.”
Cancellation No. 92050879
33
Webster’s New World College Dictionary from
www.yourdictionary.com (Petitioner’s Notice of Reliance).
To support a finding that the registered mark ANNAPOLIS
TOURS “as a whole” is generic, in addition to the dictionary
definition of “tour,” petitioner has also submitted a definition
of “Annapolis” as “the capital of Maryland.” Id. Petitioner
also introduced the following: newspaper and magazine articles
retrieved from the Lexis/Nexis computer database, the Internet
and other sources dated from 1983-2010 which purport to show
generic third-party use of the phrase “Annapolis tours” (Notice
of Reliance, Ex. H, Petitioner’s Trial Exs. 24-39); newspaper
articles purporting to show third-party use of the phrase
“Annapolis tours” as describing respondent’s business or
activities (Gosselin Discovery Deposition II, Ex. 31, (November
22, 2001 article from The Washington Post referring to Three
Centuries as “an Annapolis tour group”); Gosselin Discovery
Deposition II Ex. 45, (December 21, 2008 article from The
Capital referring to respondent as an “Annapolis tour, charter
and cruise company”); third-party witness testimony as evidence
of the relevant public’s understanding of the term (see, e.g.,
Gonzales Deposition, 188:1-188:12, 189:5-189:8, and 215:4-
215:10; Grubbs Deposition, 86:5-85:9); and the testimony of Ms.
Summers and testimony from competitors (see, e.g., Carter
Deposition, 63:17-64:6; Palmer Deposition, 45:13-46:2). For
Cancellation No. 92050879
34
example, George Palmer, owner/operator of Annapolis Urban
Adventures, testified that since 2010 his company website has
included a hyperlink labeled “Annapolis Tours” which if clicked
provides information on the tours of Annapolis his company
offers. Palmer Deposition, 21:1-15. He also testified that he
believed he would not be able to compete if he were barred from
using the phrase “Annapolis Tours” to identify “walking tours in
and around Annapolis.” Palmer Deposition, 45:13-46:2. In
addition, Michael Carter, owner/operator of Ghosts of Annapolis
Tours, testified that he has a competitive need to use the
phrase “Annapolis Tours” to identify his services. Carter
Deposition, 64:2-6.
To determine if a mark is generic, we examine the evidence
up through the time of trial. See Consorzio del Prosciutto di
Parma v. Parma Sausage Products, Inc., 23 USPQ2d 1894, 1898
(TTAB 1992) (“…these language choices indicate a clear
Congressional intent that a registration may be cancelled
whenever the registered mark becomes generic or is abandoned or
is used by the registrant to misrepresent, no matter when in the
life of the registration that should occur.”). With regard to
the articles submitted by petitioner which purport to show
third-party generic usage of the phrase “Annapolis Tours,” a
close examination of these articles reveals that, in many
instances, the phrase appears in initial capitalization form in
Cancellation No. 92050879
35
combination with other terms to indicate the name of a
particular tour, tour guide company or brand name, such as
“Ghosts of Annapolis Tours” and “Discover Annapolis Tours.”
See, e.g., Petitioner’s Notice of Reliance, Ex. H (excerpt from
The Capital, June 3, 2007, “The recent 2007 Kitchens of
Annapolis Tour …); Ex. J (excerpt from The Capital, August 12,
2007 “Ghosts of Annapolis Tours offers a spooky alternative for
families.”); Ex. J (excerpt from The Capital, May 18, 2009
“while their older brethren rode in a trolley provided by
Discover Annapolis Tours.”); Ex. K (excerpt from The Capital,
October 17, 2001, “THIRD THURSDAY, “Spirit of Annapolis Tour,”
Historic Annapolis Foundation, 7 PM…). Petitioner submitted no
evidence of use from a printed publication of the phrase
“Annapolis tours” per se as a generic designation for
respondent’s services. Petitioner did submit a handful of
articles describing respondent as an “Annapolis tour company” or
“Annapolis tour guide company.” See, e.g., Petitioner’s Notice
of Reliance, Ex. H (The Washington Post, September 1, 2006); Ex.
J (The Capital, July 18, 2009); Ex. K (The Capital, December 21,
2008). Petitioner also submitted a few articles showing use of
the phrase “Annapolis tour” to describe a tour of the city of
Annapolis. See, e.g., Petitioner’s Notice of Reliance Ex. H
(excerpt from The Washington Post, July 25, 1996, “The tours and
programs are finding a market in people such as Anthony
Cancellation No. 92050879
36
Thompson, a Harrisburg, Pa. corrections officer who brought his
church group on the Annapolis tour Saturday.”); Ex. H (excerpt
from The Baltimore Sun, August 5, 1997 “That would be after ‘a
taste of Baltimore’ at the National Aquarium Sunday night…an
optional Annapolis tour…”); Ex. H (excerpt from The Washington
Post, April 17, 1998, “…and no Annapolis tour is complete
without a stop at the academy museum…”). However, when
considered in conjunction with the testimony of respondent’s
competitors, these uses result in at best a mixed record of use
of the phrase both generically and as part of what appear to be
trademarks or trade names. This ambiguous evidence thus fails
to establish that the primary significance of ANNAPOLIS TOURS to
the relevant public is guided tour services of cities, rather
than a guided tour service of cities provided by a particular
entity. See In re Merrill Lynch, Pierce, Fenner, and Smith
Inc., 4 USPQ2d 1141, 1144 (Fed. Cir. 1987) (“Merrill Lynch”).
See also In re America Online, 77 USPQ2d 1618, 1623 (TTAB
2006)(“the evidence of generic use is offset by applicant's
evidence that shows not only a significant amount of proper
trademark use but also trademark recognition” by third parties).
As we have often stated, “[g]enericness is a fact-intensive
determination and the Board's conclusion must be governed by the
record which is presented to it.” In re Country Music Ass’n,
100 USPQ2d at 1832; In re Tennis Industry Ass’n, 102 USPQ2d
Cancellation No. 92050879
37
1671, 1680 (TTAB 2012). After considering the totality of the
record evidence and the parties’ arguments, we conclude that
petitioner has failed to demonstrate by a preponderance of the
evidence that respondent’s registered mark ANNAPOLIS TOURS “as a
whole” is generic for the identified services. See Merrill
Lynch, 4 USPQ2d at 1143 (where “recognition in a substantial
number of publications that the source of the CASH MANAGEMENT
ACCOUNT” was the applicant, the court found that “The mixture of
usages unearthed by the NEXIS computerized retrieval service
does not show, by clear evidence, that the financial community
views and uses the term CASH MANAGEMENT ACCOUNT as a generic,
common descriptive term for the brokerage services to which
Merrill Lynch first applied the term.”). Accordingly, the
petition for cancellation on the ground of genericness is
dismissed.
VIII. Section 2(f)
As noted earlier, respondent’s mark was registered under
Section 2(f). Section 2(f) of the Lanham Act provides that
“nothing…shall prevent the registration of a mark used by the
applicant that has become distinctive of the applicant's goods
[or services] in commerce.” 15 U.S.C. § 1052(f). The
presumption of validity that attaches to a registration issued
pursuant to Section 2(f) includes a presumption that the
registered mark has acquired distinctiveness. To rebut this
Cancellation No. 92050879
38
presumption, a party seeking to cancel such a registration must
produce sufficient evidence for the Board to conclude in view of
the entire record in the cancellation proceeding, that the party
has rebutted the mark's presumption of acquired distinctiveness
by a preponderance of the evidence. Cold War Museum, 92 USPQ2d
at 1630. As more fully explained by the Federal Circuit in Cold
War Museum:
In a Section 2(f) case, the party seeking cancellation
bears the initial burden to “establish a prima facie
case of no acquired distinctiveness.” To satisfy this
initial burden, the party seeking cancellation must
“present sufficient evidence or argument on which the
board could reasonably conclude” that the party has
overcome the record evidence of acquired
distinctiveness—which includes everything submitted by
the applicant during prosecution. The burden of
producing additional evidence or argument in defense
of registration only shifts to the registrant if and
when the party seeking cancellation establishes a
prima facie showing of invalidity. The Board must then
decide whether the party seeking cancellation has
satisfied its ultimate burden of persuasion, based on
all the evidence made of record during prosecution and
any additional evidence introduced in the cancellation
proceeding.

Id. (citations omitted). We assess first the merits of
petitioner’s claim that respondent’s mark lacked acquired
distinctiveness at the time of registration or, alternatively,
that it now is merely descriptive, i.e., that it lacked acquired
distinctiveness at the time of trial. See Neapco Inc. v. Dana
Corp., 12 USPQ2d 1746, 1747 (TTAB 1989)(“Neapco”). See also
Cancellation No. 92050879
39
Kasco Corp. v. Southern Saw Service, Inc., 27 USPQ2d 1501, 1506
n.7 (TTAB 1993). As the Board stated in Neapco:
In most cases, the time period of primary concern is
the time when the registration issued. If a
petitioner can establish that at that time, the
registered mark was merely descriptive, then it is
incumbent upon the registrant to establish that prior
to the issuance of the registration, the registered
mark had acquired a secondary meaning in the sense
that its primary significance was that of a source
indicator of goods emanating from registrant.

12 USPQ2d at 1747.
Keeping this standard in mind, we will now evaluate whether
petitioner has made a prima facie case that respondent’s mark
lacks acquired distinctiveness. As noted earlier, during the
prosecution history of the application which ultimately matured
into registration for the mark ANNAPOLIS TOURS, respondent did
not submit any actual evidence of acquired distinctiveness (e.g.
advertising expenditures, volume of sales under the mark,
consumer surveys). Instead, the USPTO found acquired
distinctiveness solely on the basis of respondent’s Section 2(f)
declaration of five years of “substantially exclusive and
continuous use” immediately preceding the date of execution of
the declaration.
Petitioner argues that because the term ANNAPOLIS TOURS is
highly descriptive, a heightened showing of acquired
distinctiveness is necessary, and that respondent cannot rely
solely on its declaration of use of its mark. Respondent
Cancellation No. 92050879
40
disputes the contention that its mark is highly descriptive,
pointing to the fact that the only evidence the examining
attorney required respondent to submit in support of its Section
2(f) claim was the declaration attesting to five years of
substantially exclusive and continuous use. As respondent
contends, “[h]ad the Examining Attorney believed the mark was
highly descriptive… he would have required submission of
additional indicia of acquired distinctiveness…. That he did
not do so is strong evidence that the USPTO considers the mark
to be of average descriptiveness, not highly descriptive….”
Respondent’s Brief, p. 32. Respondent then further asserts that
because the examining attorney did not require actual evidence
of acquired distinctiveness, petitioner must, under Cold War
Museum, demonstrate that respondent’s use was not substantially
exclusive and continuous during the relevant time period in
order to satisfy its initial burden of prima facie invalidity.19
We disagree with respondent’s interpretation of Cold War
Museum. The fact that respondent’s mark was registered pursuant to
Section 2(f) based solely on a declaration of use does not preclude
petitioner from introducing evidence that the mark is so highly
descriptive as to require actual evidence of acquired
distinctiveness in order to satisfy its initial burden of proof.

19 Respondent’s purported lack of substantially exclusive and
continuous use for the five years preceding the execution of its
Section 2(f) declaration also is the basis for petitioner’s fraud
claim.
Cancellation No. 92050879
41
To hold otherwise would unduly restrict a plaintiff’s ability to
challenge the validity of a mark registered under Section 2(f) in a
cancellation proceeding based on a declaration of use and fail to
account for changes in the marketplace. Essentially, this would
amount to substituting the examining attorney’s determination,
based on the limited record adduced during ex parte examination, in
lieu of a more expansive record that may be shown in an inter
partes proceeding.
The intent of Cold War Museum was to clarify “the various
burdens at play in a cancellation proceeding” involving claims of
lack of acquired distinctiveness. Cold War Museum, 92 USPQ2d at
1629. We do not read Cold War Museum as implying that where a mark
is registered under Section 2(f) based solely on a declaration of
use, the only recourse for a petitioner in a cancellation
proceeding is to show that the use of the registered mark was not
“substantially exclusive and continuous” for the five years
preceding execution of the 2(f) declaration in order to establish
its initial burden of prima facie invalidity.20 Rather, a
petitioner may carry its initial burden of showing prima facie
invalidity by introducing evidence at trial that the mark is so
highly descriptive that a mere declaration of five years continuous
and substantially exclusive use is insufficient to establish

20 We agree that evidence showing a respondent’s use was not
substantially exclusive, or was not continuous, could allow a
petitioner to meet its initial burden of prima facie invalidity; we do
not agree that this is a requirement.
Cancellation No. 92050879
42
acquired distinctiveness, so that actual evidence of acquired
distinctiveness in the form of sales and advertising information
and the like is necessary. In accordance with Cold War Museum,
upon petitioner meeting this initial burden, the burden of proof
then shifts to respondent to defend its registration.
Applying these standards, the evidence discussed above amply
demonstrates that the mark, while not generic, is highly
descriptive. See discussion, “Genericness Claim” supra. Given the
highly descriptive nature of the mark and the fact that the only
evidence that respondent offered at the time of registration was
the five year period of use we find that petitioner has satisfied
its initial burden of making a prima facie showing of lack of
acquired distinctiveness. See In re Kalmbach Publ’g Co., 14 USPQ2d
1490, 1494 (TTAB 1989) (finding that absent specific evidence of
the extent of the mark’s exposure to the purchasing public and of
the purchasers’ perception of the asserted mark, long use of a
purported mark does not demonstrate requisite acquired
distinctiveness). See also Target Brands, Inc. v. Hughes, 85
USPQ2d 1676, 1681 (TTAB 2007) (“Applicant's continuous use since
1992 is a fairly lengthy period, but not necessarily conclusive or
persuasive on the Section 2(f) showing.”). In accordance with Cold
War Museum, the burden shifts to respondent to now prove acquired
distinctiveness based on any “additional evidence or argument”
produced in this cancellation proceeding, keeping in mind that
Cancellation No. 92050879
43
petitioner bears the ultimate burden of proof by a preponderance of
the evidence. See Cold War Museum, supra.
Turning first to the advertising and sales figures respondent
made of record in this case (Trial Ex. 3, Confidential Trial Exs.
7-8), insofar as the data was designated as confidential, we will
not discuss any specific figures in this opinion. However, we can
say that the numbers alone appear to be quite low. Compare Country
Music Ass’n, 100 USPQ2d at 1834 (acquired distinctiveness found
where, inter alia, “from 2000-2007, applicant engaged in targeted
advertising campaigns, spending approximately $1-3 million annually
on print and television ads, trade shows, promotional events, and
email campaigns…. During that same time period, applicant earned
over $92.8 million in revenues.”).
Respondent points to the “substantial evidence” of unsolicited
media coverage as shown by the exhibits submitted under notice of
reliance. Respondent’s notice of reliance, however, consists only
of respondent’s own promotional materials appearing on its own and
others’ websites (e.g., www.groupon.com and
www.hiddenvacations.com), all of which were downloaded on a single
date. Contrary to respondent’s assertion, these materials do not
constitute evidence that its registered mark has garnered
unsolicited publicity in the media (i.e. from newspapers,
magazines) and renown in the travel and tourism field.
Cancellation No. 92050879
44
In support of its claim of acquired distinctiveness,
respondent also contends that it has been continuously using its
registered mark since 1992. Given the highly descriptive nature
of registrant’s mark, continuous use alone since 1992 would not
be sufficient to establish acquired distinctiveness. Aside from
that, we find problematic the documentary evidence upon which
respondent bases its claim of continuous use. Respondent relies
heavily on its Trial Exs. 2-5 which consist of printouts from
the websites referenced above purporting to show service mark
usage and promotion of its mark ANNAPOLIS TOURS. Because these
materials were printed from the Internet on June 11, 2011, they
have no probative value in showing continuous use prior to that
date, and minimal value regarding respondent’s promotional
efforts. In addition, respondent’s Trial Ex. 7, which consists
of financial reports obtained from respondent’s predecessor in
interest, does not show use of the phrase “Annapolis Tours” as a
source indicator, and therefore has no probative value.
Respondent’s Trial Ex. 8 only shows revenues purportedly
generated under the ANNAPOLIS TOURS mark from 2004-2009; there
is no evidence regarding revenues from any prior time period
and, as we have said, the revenues from 2004-2009 are, on their
face, quite low.
Respondent also bases its claim of continuous use on the
testimony of its witnesses, Ms. Gonzales, Ms. McCulloch, Ms.
Cancellation No. 92050879
45
Gosselin and Mr. Grubs, “particularly in conjunction” with
respondent’s documentary evidence, arguing that “those documents
[Exs. 2-3] speak for themselves.” Respondent’s Brief, p. 33.
Rare are the documents that actually speak for themselves.
Moreover, as we have just explained, respondent’s documentary
evidence does not establish continuous use since 1992, and the
testimony of its witnesses is mixed. For example, Ms. Gonzales,
a former employee of respondent’s predecessor in interest from
1991-2003, testified that employees were told “[w]e were
Annapolis Tours” (Gonazales Deposition, 186:3-6) and that the
Three Centuries website continuously displayed the ANNAPOLIS
TOURS service mark until 2002. Id. at 37:5-38:15; 196:15-
198:8). Petitioner produced contrary evidence on rebuttal,
namely that respondent did not commence use of the mark
ANNAPOLIS TOURS on its website until 2004. Petitioner’s Trial
Ex. CCC. Petitioner further produced evidence that, contrary to
Ms. Gonzales’ testimony, the Three Centuries’ Tour Guide Manual
did not instruct employees to use the mark ANNAPOLIS TOURS to
identify its services and indeed was devoid of any reference to
the registered mark at all. Petitioner’s Trial Ex. DDD. In
addition, petitioner presented testimony from Ms. Denis, a
former tour guide for Three Centuries, that she never recalled
identifying her former employer as “Annapolis Tours,” but that
rather she identified herself to the public as working for
Cancellation No. 92050879
46
“Three Centuries Tours.” Denis Deposition, 28:1-14, 29, 76.
She also authenticated promotional materials such as tour guide
name badges, tour tickets, and tour brochures dated from 1995-
2004 which used “Three Centuries,” not “Annapolis Tours,” to
identify respondent’s predecessor in interest’s services. Id.
at 17-76; Petitioner’s Trial Ex. 36-58. As she testified on
rebuttal, to the extent that respondent’s predecessor in
interest used the phrase “Annapolis Tours” on advertising
materials such as rack cards, it was not as a source-identifier
but rather to identify the nature of their services:
Q: Is it your testimony that Three Centuries Tours
never used the wording Annapolis tours on their
advertising?
A: No, I wouldn’t say that. They used it but not
consistently. And they used it inadvertently, you
know, just – just as I did at Capital City Colonials.
Just to describe what our businesses are doing, are
about.
Denis Rebuttal Deposition, 11:2-9. Ms. Denis’ testimony casts
doubt on whether respondent’s use of its asserted mark has
indeed been continuous since 1992.
In further support of its claim of acquired
distinctiveness, respondent asserts that petitioner copied its
mark by adopting the Internet address “www.annapolistours.us” in
Cancellation No. 92050879
47
2005. See Windsor Deposition, 27:10-12. However, “[c]opying is
only evidence of secondary meaning if the defendant's intent in
copying is to confuse consumers and pass off his product as the
plaintiff's.” Stuart Spector Designs. v. Fender, 94 USPQ2d at
1575, quoting Thomas & Betts Corp. v. Panduit Corp., 65 F.3d
654, 36 USPQ2d 1065, 1072 (7th Cir. 1995). The record shows no
evidence of intentional copying on the part of petitioner with
the intent of deceiving consumers that petitioner was the source
of respondent’s tour guide services. Rather, we are persuaded
that petitioner selected this domain name as part of its overall
marketing strategy of using the name of a city combined with the
word “tour” to gain a competitive advantage. See Windsor
Deposition, 27:22-28:22; 28:24. It is generally known and not
subject to reasonable dispute that adoption and use of website
domain names that impart a clear indication of the products or
services offered on the website is quite common, for the obvious
reason that those searching the Internet will utilize such terms
in searching for products or services. There is no evidence of
record suggesting petitioner adopted its domain name for any
other reason.
“Highly descriptive terms… are less likely to be perceived
as trademarks and more likely to be useful to competing sellers
than are less descriptive terms. More substantial evidence of
acquired distinctiveness thus will ordinarily be required to
Cancellation No. 92050879
48
establish that such terms truly function as source-indicators.”
In re Greenliant Systems Ltd., 97 USPQ2d 1078, 1085 (TTAB 2010).
Accordingly, given the highly descriptive nature of the term
ANNAPOLIS TOURS, we find that the evidence respondent has
submitted is insufficient to rebut the prima facie case of
descriptiveness shown by petitioner, and that petitioner has met
its ultimate burden of proving, by a preponderance of evidence,
that respondent’s mark is highly descriptive and has not
acquired distinctiveness. In other words, on this record, we
cannot find that the relevant public associates the designation
ANNAPOLIS TOURS with respondent alone, or recognizes the
designation as a mark identifying only respondent’s identified
services. In view of our findings, the petition for
cancellation is granted on the ground that respondent’s mark is
merely descriptive and has not acquired distinctiveness.
IX. Fraud
Although we have determined that respondent’s registered
mark lacks acquired distinctiveness, in order to render a
complete decision, we will also address petitioner’s fraud
claim.
Fraud in procuring a trademark registration or renewal
occurs only when an applicant or registrant knowingly makes a
false, material representation with the intent to deceive the
PTO. In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941
Cancellation No. 92050879
49
(Fed. Cir. 2009) (“Bose”). A party seeking cancellation of a
trademark registration for fraudulent procurement bears a heavy
burden of proof. Id., citing W.D. Byron & Sons, Inc. v. Stein
Bros. Mfg. Co., 377 F.2d 1001, 153 USPQ 749, 750 (CCPA 1967).
Indeed, “the very nature of the charge of fraud requires that it
be proven ‘to the hilt’ with clear and convincing evidence.
There is no room for speculation, inference or surmise and,
obviously, any doubt must be resolved against the charging
party.” Id., at 1939, quoting Smith Int'l, Inc. v. Olin Corp.,
209 USPQ 1033, 1044 (TTAB 1981). As emphasized in Bose:
Subjective intent to deceive, however difficult it may
be to prove, is an indispensable element in the
analysis. Of course, “because direct evidence of
deceptive intent is rarely available, such intent can
be inferred from indirect and circumstantial evidence.
But such evidence must still be clear and convincing,
and inferences drawn from lesser evidence cannot
satisfy the deceptive intent requirement.” Star
Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d
1357, 1366 [88 USPQ2d 1001] (Fed. Cir. 2008).

Id. at 1941.

Petitioner's claim of fraud in the petition for
cancellation is based on respondent’s purportedly false
averments in the Section 2(f) declaration that the mark
ANNAPOLIS TOURS had acquired distinctiveness through
“substantially exclusive and continuous use in commerce by
[respondent] and its predecessor for at least the five years
immediately before the date of this statement.” As noted above,
Cancellation No. 92050879
50
the declaration was executed on August 18, 2005, making the
relevant time period the five years preceding that date.
Petitioner argues that respondent’s president, Ms. Gosselin,
took no action prior to signing the declaration (other than
confirming ownership of the Maryland state trade name) to verify
whether its predecessor in interest, Three Centuries, had made
substantial and continuous use of the mark. Petitioner further
maintains that Ms. Gosselin knew that Three Centuries was not
using “Annapolis Tours” as a source identifier when she executed
her declaration. In support thereof, petitioner points to the
fact that respondent publicly referred to the acquisition as the
“merger” of “Three Centuries Tours of Annapolis and Watermark
Cruises.” Petitioner’s Brief, p. 38; Petitioner’s Trial Ex.
CCC. In addition, petitioner contends that Ms. Gosselin was
aware of third-party usage of the phrase “Annapolis Tours” by
respondent’s competitors such as Discovery Annapolis Tours and
Ghost of Annapolis Tours/Annapolis Ghost Tours at the time
respondent executed its Section 2(f) declaration (Grubbs
Deposition, 93), as well as the Annapolis & Anne Arundel County
Conference & Visitor’s Bureau ownership and use of the domain
name www.annapolistours.com until 2005(Gosselin Testimony
Deposition, 40-1; Gosselin Discovery Deposition II, 10).
Petitioner argues that “the requisite intent to deceive the PTO
can be inferred” from Ms. Gosselin’s conduct in this proceeding,
Cancellation No. 92050879
51
including that she alone searched for and reviewed documents
responsive to petitioner’s document production requests without
consulting with her attorney regarding relevancy, and that “at a
minimum, Ms. Gosselin’s execution of the 2(f) Declaration
evidences a reckless disregard for the truth and intent to seek
a registration for which she knew she was not entitled.”
Petitioner’s Brief, p. 40.
Respondent, without further elaboration in its brief,
contends that Ms. Gosselin’s testimony demonstrates that she
lacked the requisite intent to deceive the USPTO (Gosselin
Testimony Deposition, 59:2-66:5), and further maintains that Ms.
Gosselin’s consultation with legal counsel prior to signing and
executing the Section 2(f) declaration mitigates against a
finding of fraud in accordance with the Board’s recent decision
in M.C.I. Foods, Inc. v. Bunte, 96 USPQ2d 1544 (TTAB 2010)
(“M.C.I. Foods”). Respondent’s Brief, p. 35.
Before discussing the relevant testimony, we wish to make
clear that respondent oversimplifies the Board’s ruling in
M.C.I. Foods. In that case, the Board found that while
applicant’s overly expansive identification of goods was false,
applicant did not intend to deceive the USPTO based on testimony
that applicant discussed with legal counsel how to list the
identification of goods prior to filing its application.
However, as the Board then emphasized:
Cancellation No. 92050879
52
We add that our finding here does not mean that mere
assertion that one acted on “advice of counsel” will
make out a good defense to a charge of fraud. Rather,
our finding should be taken as an indication that the
charging party must be able to show at trial that the
defense is inapplicable or inappropriate under the
particular circumstances of the case at hand.

Id. at 1550. In other words, respondent cannot simply avoid a
finding of fraud by merely asserting that it relied on the
advice of counsel in executing the Section 2(f) declaration.
That being said, where a defendant has adduced evidence of its
reliance on advice of counsel, it is incumbent upon the charging
party “to establish such a factual basis [for the
inapplicability of the defense] by, for example, eliciting
further testimony as to the actual advice … received and whether
or to what extent” the advice was relied upon. Id. at 1449.
With this in mind, we will now examine Ms. Gosselin’s
testimony regarding her reliance on counsel in executing the
Section 2(f) declaration. “…[A]bsent the requisite intent to
mislead the PTO, even a material misrepresentation would not
qualify as fraud under the Lanham Act warranting cancellation.”
Bose, 91 USPQ2d at 1940, citing King Auto., Inc. v. Speedy
Muffler King, Inc., 667 F.2d 1008, 1011 n.4, 212 USPQ 801 (CCPA
1981). Thus, we will further focus our analysis on Ms.
Gosselin’s intent, as may be shown by her testimony.
Ms. Gosselin testified that she consulted with her attorney
prior to executing the Section 2(f) declaration, and that at the
Cancellation No. 92050879
53
time she signed the declaration, she believed that the
statements contained therein were true:
Q: Now, when the time came for you to consider
signing this declaration did you consult with anybody
to determine whether or not you should sign it?
A: I consulted with my attorney.
…
Q: I do not want you to testify as to what the
consultation was because that would be within the
attorney/client privilege, but I want to ask you what
you decided to do as a result of that consultation?
A: I signed it, I signed the declaration.
Q: So is it a correct statement that you signed this
declaration on advice of counsel?
A: Yes, it is.
Q: And when you signed it did you believe it to be
true?
A: Yes I did.
Q: And let me be more specific. Did you believe it
to be true that the mark Annapolis Tours, the service
mark Annapolis Tours, had been in substantially
continuous use in commerce for at least the five years
immediately before the date of the signature on this
declaration?
Cancellation No. 92050879
54
A: Yes.
Q: And in saying yes do you understand that the date
of the signature is August 18, 2005 so what we are
talking about is the period from August 18, 2000 to
August 18, 2005?
A: That is correct.
Q: How did you know that it had been so continuously
used, substantially continuously used?
A: Personal observation of the use of the mark,
conversation with the predecessor, the predecessor’s
own declaration, and I think that’s it.
Gosselin Testimony Deposition, 61-62:17.
Counsel for respondent elicited further testimony from
Ms. Gosselin about the specific nature of her personal
observations which formed the basis for her belief that the
statements in the Section 2(f) declaration were indeed true
and accurate:
Q: … [D]id you do any due diligence to assess how
[Watermark, respondent’s predecessor] were using the
mark Annapolis Tours?
A: I did some due diligence, I did due diligence and
I did some in that regard.
Q: What did you do?
…
Cancellation No. 92050879
55
A: I looked at the advertisements and I looked at the
rack cards and the receipts. I looked at the
materials that they were using the mark on.
…
Q: So you looked at the rack cards and the brochures
for the five preceding years?
A: And talked with Paula about that.
Gosselin Testimony Deposition, 119-120:1.
…
Q: What did you personally observe?
A: I personally observed that Paula used Annapolis
Tours. And I when I had done business in Annapolis in
the hospitality industry and got to know other members
and saw other company names and advertising when
looking for mine, I did not ever observe any other use
of the Annapolis Tours as a mark for our services.
Gosselin Testimony Deposition, 126:5-12. Ms. Gosselin was
then asked the following questions:
Q: Do you recall if Paula Fishback as part of the
sale of the assets ever represented in writing other
than the assignment about the usage of Annapolis Tours
as a brand or as a mark?
A: Did she ever represent in writing other than the
assignment?
Cancellation No. 92050879
56
Q: Did she represent and warrant that they were using
it exclusively and continuously at any point –
A. Other than here.
Q: Other than here?
A: No I’m not aware of any other written instrument.
Gosselin Testimony Deposition, 124:21-125:8. Ms. Gosselin went
on to testify, however, that she did not know whether she had
checked Watermark’s web site for proper service mark use of
ANNAPOLIS TOURS prior to the purchase of assets. Gosselin
Testimony Deposition, 191-192.
Based on this record, we find that petitioner has failed to
prove “‘to the hilt’ with clear and convincing evidence” (Bose,
91 USPQ2d at 1939 (citations omitted)) that respondent
fraudulently obtained its registration. “…[T]he involved
conduct, viewed in light of all the evidence… must indicate
sufficient culpability to require a finding of intent to
deceive.” Id. at 1245. Even if respondent’s statements in the
Section 2(f) declaration were false, Ms. Gosselin’s testimony
demonstrates that the statements were not made with the
requisite intent to deceive the USPTO.
As noted above, she testified that she “believed” that the
statements regarding continuous use contained in the Section
2(f) declaration were true based on her personal observations of
use of the mark ANNAPOLIS TOURS on rack cards and brochures, and
Cancellation No. 92050879
57
that she did not merely rely on the advice of counsel to sign
the declaration but undertook “some due diligence” to verify
that the statements were true. Indeed, “[t]here is no fraud if
a false misrepresentation is occasioned by an honest
misunderstanding or inadvertence without a willful intent to
deceive.” Id. at 1942 (internal citation omitted).
With regard to petitioner’s argument that Ms. Gosselin
acted with “reckless disregard,” the Federal Circuit in Bose
left unanswered the question whether recklessness would satisfy
the intent to deceive requirement because there was no basis for
finding in that particular case that the applicant’s conduct was
reckless. Id. at 1942, n.2. Ms. Gosselin’s testimony shows
that she personally observed the use of the mark, and that she
had conversations with Ms. Fishback about the use of the mark.
Further, respondent submitted an assignment of the mark. As a
result, we find that Ms. Gosselin did not act with recklessness,
and therefore, we need not reach that unresolved question.
In addition, with regard to the statements in the Section
2(f) declaration attesting to “substantially exclusive” use, Ms.
Gosselin testified that although she was aware of third-party
use of the marks DISCOVERY ANNAPOLIS TOURS and GHOST TOURS OF
ANNAPOLIS during the five-year period referenced in the Section
2(f) declaration, she did not believe that such use meant that
respondent’s use of the term ANNAPOLIS TOURS alone was non-
Cancellation No. 92050879
58
exclusive. Thus, based on the record evidence, we find that Ms.
Gosselin did not have the requisite intent to commit fraud when
she executed the Section 2(f) declaration. Accordingly, the
petition for cancellation on the ground of fraud is dismissed.
DECISION: The petition for cancellation on the grounds of
genericness and fraud is dismissed; however, it is granted on
the ground that the mark lacks acquired distinctiveness under
Section 2(f). The registration will be cancelled in due course.