Automattic, Inc.v.Pearson, Chris

Trademark Trial and Appeal Board

Apr 20, 2017

No. 92061714 (T.T.A.B. Apr. 20, 2017)

Mailed: April 20, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Automattic, Inc.
v.
Pearson, Chris
_____

Cancellation No. 92061714
_____

Marina A. Lewis of Procopio Cory Hargreaves & Savitch LLP, for Automattic, Inc.

Chris Pearson, pro se.

Before Cataldo, Bergsman and Ritchie,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Automattic, Inc. (Petitioner) has petitioned to cancel the following marks issued to
Chris Pearson (Respondent) on the Principal Register in standard characters:
DIYTHEMES for “web site development software” in International
Class 9; and “computer software installation and maintenance;
technical support services, namely, troubleshooting of computer
This Opinion is Not a
Precedent of the TTAB
Cancellation No. 92061714

- 2 -
software problems; website design and development for others” in
International Class 42;1
THESIS THEME for “web site development software” in International
Class 9;2 and
THESIS for “web site development software” in International Class 9.3
As grounds for cancellation, Petitioner alleges that: (1) the intent-to-use
applications underlying the involved registrations are void ab initio inasmuch
as they were filed by Respondent rather than DIY Themes LLC, which is the
owner of the mark and the entity that possessed the requisite bona fide intent to
use the marks in commerce as of the applications’ filing dates; and (2) the mark
THESIS in Registration No 4039583 is merely descriptive under Trademark Act
Section 2 ( e )(1), 15 U.S.C. § 1052(e)(1).
In his answer, Respondent denied the salient allegations of the petition for
cancellation. Petitioner introduced testimony and evidence and filed a brief.
Respondent did not introduce any testimony or evidence, nor did he file a brief.
A. The Record
The record consists of the pleadings and the file of the involved registrations.
Trademark Rule 2.122; 37 C.F.R. § 2.122. Petitioner introduced into the record the

1 Registration No. 4010482 issued on August 9, 2011.
2 Registration No. 4061171 issued on November 22, 2011.
3 Registration No. 4039583 issued on October 11, 2011.
Cancellation No. 92061714

- 3 -
testimony deposition of Respondent, and documents submitted therewith.4 In
addition, Petitioner submitted by notice of reliance the following materials:5
Certain of Petitioner’s second set of interrogatories and requests for production
of documents and Respondent’s responses thereto;
Portions of the April 12, 2016 discovery deposition of Respondent;
Printed copies of official records of the State of Texas regarding DIY Themes
LLC;
Printouts from the Internet webpage of DIY Themes LLC;
Dictionary definitions of the terms “theme” and “thesis;”
Printouts from the Internet webpages of third parties; and
Copies of third-party registrations for marks containing the term “theme(s).”
B. Petitioner’s Standing
Standing is a threshold issue that must be proved in every inter partes case.
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982). In order to meet the standing requirement, a plaintiff need only show
that it has a real interest, i.e., a personal stake, in the outcome of the proceeding.
See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999);
Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2012, 2023-24 (Fed. Cir. 1987). For example, a plaintiff may establish standing as a
competitor. See Books on Tape, Inc. v. The Booktape Corp., 836 F.2d 519, 5 USPQ2d
1301, 1302 (Fed. Cir. 1987).

4 14 TTABVUE.
5 13 TTABVUE.
Cancellation No. 92061714

- 4 -
The purpose of the standing requirement, which is directed solely to the interest
of the plaintiff, is to prevent litigation when there is no real controversy between
the parties. In the case of a cancellation proceeding, the standing requirement has
its basis in Section 14 of the Trademark Act which provides in relevant part that
“[a]ny person who believes that he is or will be damaged … by the registration of a
mark upon the principal register” may file upon payment of the prescribed fee, a
petition to cancel stating the grounds therefor. 15 U.S.C. § 1064. Our primary
reviewing court, the U.S. Court of Appeals for the Federal Circuit, has enunciated a
liberal threshold for determining standing, namely that a plaintiff must
demonstrate that he possesses a “real interest” in a proceeding beyond that of a
mere intermeddler, and “a reasonable basis for his belief of damage.” See Ritchie v.
Simpson, 50 USPQ2d at 1025-26. A “real interest” is a “direct and personal stake”
in the outcome of the proceeding. Id. at 1026. “The facts regarding standing … are
part of a petitioner’s case and must be affirmatively proved. Accordingly,
[petitioner] is not entitled to standing solely because of the allegations in its
petition.” Lipton Industries, 213 USPQ at 189. See also Ritchie v. Simpson, 50
USPQ2d at 1027.
In its petition for cancellation, Petitioner alleges that Respondent filed the
applications underlying the challenged registrations claiming a bona fide intent to
use the marks in commerce and, subsequently, use in commerce.6 Petitioner further
alleges that DIY Themes LLC, an entity of which Respondent presently is the sole

6 1 TTABVUE 3-4.
Cancellation No. 92061714

- 5 -
shareholder, is the party possessing the requisite bona fide intent to use the marks
in commerce, and that, as a result, the applications underlying the involved
registration were filed by the wrong applicant.7 Petitioner alleges in addition that
the term “thesis” merely describes the goods in involved Registration No. 4039583.8
With regard to standing, Petitioner alleges as follows:
18. Mr. Pearson has filed a Uniform Domain Name Dispute Resolution
Policy proceeding, challenging ownership by Petitioner of the domain
name , which domain was acquired by Petitioner in 2014.

19. For each and every reason stated above, Petitioner believes that it
will be damaged by continued registration and maintenance of Pearson
Registrations as protested of herein.9

However, the petition to cancel does not contain any allegations regarding the
nature of Petitioner’s business or the marks under which such business is
conducted. Further, Petitioner does not explain, either in its petition to cancel or
otherwise, how it is or will be damaged by continued registration of Respondent’s
marks. Respondent’s answer to the petition for cancellation does not include any
admissions regarding Petitioner’s alleged business activities or Petitioner’s interest
in any of the marks in Respondent’s challenged registrations. To the contrary, in its
answer Respondent asserts:
18. Respondent admits to the allegations contained in Paragraph 18
insofar that he did file the UDRP proceeding. However, that case has
been resolved and Respondent is unaware of any other on-going
litigation between the parties except for this Trademark cancellation.

7 Id. at 4.
8 Id. at 5.
9 Id.
Cancellation No. 92061714

- 6 -
19. Respondent denies the allegations in Paragraph 19. Respondent
questions how Petitioner has standing to attempt to cancel
Respondent’s marks. Petitioner in particular makes no allegation of
how it will be harmed, particularly regarding DIYTHEMES. Thus
Petitioner lacks standing to bring these claims. Petitioner has failed to
allege anything that gives it any direct or personal stake in the
registration of DIYTHEMES and the claims against that trademark
appear to be brought in bad faith. See Petroleos Mexicanos v. Intermix
S.A., 97 U.S.P.Q.2d 1403 (T.T.A.B. 2010) (quoting Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023, 1027 (Fed. Cir. 1999)). 10

In its brief, Petitioner does not address its standing to bring the instant
cancellation. Petitioner’s only arguments in its brief regarding its asserted business
activities are as follows under its Statement of Facts:
A. Automattic and the WordPress® Platform

Petitioner Automattic Inc. is a Delaware corporation having a principal
place of business at 132 Hawthorne Street, San Francisco, California
94107. Since 2005, Petitioner has continuously commercialized and
marketed WordPress.com, a hosted version of the most popular online
Content Management System (CMS), WordPress®. WordPress.com
allows nearly anyone, from bloggers, to photographers, artists,
plumbers, doctors and restaurant owners to easily create and maintain
websites which Petitioner hosts and supports. Petitioner also offers a
number of other products and services related to WordPress software,
and actively contributes to the WordPress® open source project.
WordPress users can easily choose the look or feel of their websites by
incorporating one of hundreds of available WordPress® themes. A
WordPress® theme is a collection of files that work together to produce
a graphical interface with an underlying unifying design for a website.
These underlying files are called template files, and modify the way
the site is displayed, without modifying the underlying software.
Because WordPress is highly customizable, and the code is open
sourced, anyone can develop and provide themes for WordPress users;
many businesses have been built around creating WordPress themes.11

B. DIY Themes LLC and its Company History

10 4 TTABVUE 5.
11 16 TTABVUE 7.
Cancellation No. 92061714

- 7 -
One such entity in the business of providing WordPress® themes is
DIY Themes LLC, a Texas limited liability company that offers website
design software and services under the marks THESIS, THESIS
THEME, and DIY THEMES. (See Pet. First Not. Rel., Exhibit E.) On
July 10, 2008, Respondent – together with another individual named
Brian Clark – formed DIY Themes LLC. (Pet. First Not. Rel., Exhibit
C.) The Company Agreement filed with the Texas Secretary of State
listed the ownership of DIY Themes LLC as follows: 60% by
Respondent, and 40% by Brian Clark. Id.12

However, Petitioner does not allege that is a competitor of Respondent or has
engaged in its asserted business activities, and neither party introduced any
testimony or evidence regarding trademarks used, registered or applied for by
Petitioner.13 Thus, none of Petitioner’s statements in its brief, either individually or
as a whole, support Petitioner’s allegation of its standing.
We must therefore examine the testimony and evidence submitted by Petitioner to
ascertain whether Petitioner has proven its standing to bring the instant
cancellation against Respondent’s registered marks.
The testimony of Respondent discusses Respondent, its business, and DIY
Themes, LLC. Neither the testimony nor the attached exhibits mention Petitioner.14

12 Id. at 8.
13 We note that the Board does not take judicial notice of applications or registrations; they
must be proved by competent evidence. See, e.g., In re Johnathan Drew Inc., 97 USPQ2d
1640, 1644 n. 11 (TTAB 2011) (stating that “the Board’s well-established practice is not to
take judicial notice of registrations that reside in the USPTO”); Beech Aircraft Corp. v.
Lightning Aircraft Co., 1 USPQ2d 1290, 1293 (TTAB 1986) (“[W]e do not take judicial notice
of application and registration files that reside in the Patent and Trademark Office on the
basis of their mere identification in briefs, pleadings and evidentiary submissions.”). Cf. In
re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681 (Fed Cir. 2010) See also
Trademark Board Manual of Procedure (TBMP) § 1208.02 (2015) and authorities cited
therein.
14 14 TTABVUE.
Cancellation No. 92061714

- 8 -
Exhibit A to Petitioner’s notice of reliance consists of Petitioner’s second set of
interrogatories and requests for production of documents and Respondent’s
responses thereto.15 These exhibits make no mention of Petitioner, any trademarks
owned, registered or applied for by Petitioner, or its asserted business activities.
Exhibit B consists of portions of the April 12, 2016 discovery deposition of
Respondent. The deposition testimony makes no mention of Petitioner.16
Exhibits C and D consist of official documents from the State of Texas regarding
Respondent and DIY Themes LLC and make no mention of Petitioner.17
Exhibit E consists of printouts from the Internet webpage of DIY Themes LLC.18
Some of these documents mention WordPress, but make no mention of Petitioner or
its asserted relationship thereto.
Exhibits F – H consist of printouts from Internet dictionaries and provide
definitions of “theme” and “thesis.”19 These exhibits make no mention of Petitioner
or its asserted business activities.
Exhibits I – L consist of third-party websites discussing various WordPress
themes available for sale.20 These documents make no mention of Petitioner, its
asserted relationship to WordPress, or its asserted business activities.

15 13 TTABVUE 7-23.
16 Id. at 24-42.
17 Id. at 43-50.
18 Id. at 51-60.
19 Id. at 61-71.
20 Id. at 72-97.
Cancellation No. 92061714

- 9 -
Exhibits M – Q consist of third party registrations for marks that include the term
“THEME(S).”21 None of these registrations are issued to Petitioner or discuss
Petitioner.
We note in addition that even if any of the Internet website evidence made of
record by Petitioner via notice of reliance discussed its business activities, such
evidence would not be admissible for the truth of the matters asserted therein. See
37 C.F.R. § 2.122(e); Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB
2010); TBMP § 704.08(b) and authorities cited therein. See also Syngenta Crop
Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1117 n.7 (TTAB 2009); 7-Eleven
Inc. v. Wechsler, 83 USPQ2d 1715, 1717 n.2 (TTAB 2007); Midwest Plastic
Fabricators Inc. v. Underwriters Laboratories Inc., 12 USPQ2d 1267, 1270 n.5
(TTAB 1989), aff’d, 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990). The rule
against hearsay mandates that an out-of-court statement cannot be offered as
evidence of the truth of the matter asserted in that statement. Insofar as none of
the exceptions to the hearsay rule apply, we would not consider such submissions to
prove the truth of any matter stated therein.
The record is devoid of any evidence concerning the nature of Petitioner’s
commercial activities and its interest in Respondent’s registered marks. “Proof of
standing in a Board proceeding is a low threshold.” Syngenta Crop Protection Inc. v.
Bio-Check LLC, 90 USPQ2d 1112, 1118 (TTAB 2009). For example, Petitioner could
have submitted testimony or competent documentary evidence as to its asserted

21 Id. at 98-111.
Cancellation No. 92061714

- 10 -
need to use the terms comprising the marks and nature of its business activities to
establish its standing. See, e.g., Panda Travel Inc. v. Resort Option Enterprises Inc.,
94 USPQ2d 1789, 1793 (TTAB 2009) (testimony that opposer has used the mark
PANDA TRAVEL continuously since June 1981 to identify its travel agency services
sufficient to prove standing to bring Section 2(d) claim); Automedx Inc. v. Artivent
Corp., 95 USPQ2d 1976, 1978 (TTAB 2010) (testimony that opposer has been
manufacturing and selling portable ventilators sufficient to prove standing to bring
2(d) claim). Petitioner neglected to do so. Thus, on the record before us, Petitioner
has failed to establish a “real interest” and “reasonable belief in damage.”
Accordingly, the cancellation proceeding is dismissed for Petitioner’s lack of
standing. See, e.g., Lumiere Productions, Inc. v. International Telephone and
Telegraph Corp., 227 USPQ 892, 893 (TTAB 1985).