Beatstoc, Inc.v.AM:PM Entertainment Concepts, Inc.

Trademark Trial and Appeal Board

Jan 30, 2020

92067773 (T.T.A.B. Jan. 30, 2020)

Mailed: January 30, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ---- Beatstoc, Inc. v. AM:PM Entertainment Concepts, Inc. _____ Cancellation No. 92067773 _____ Scott M. Lowry of Lowry Blixseth APC, for Beatstoc, Inc. Aimee M. Allen and Lawrence E. Abelman of Abelman, Frayne & Schwab, for AM:PM Entertainment Concepts, Inc. ---- Before Wellington, Heasley, and Larkin, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: AM:PM Entertainment Concepts, Inc. (“Respondent”) owns a registration on the Principal Register for the standard character mark BEATSTOCK for the following goods and services: “pre-recorded video tapes featuring music and music concerts; musical sound recordings” in International Class 9; “t-shirts” in International Class 25; “broadcasting of concerts via radio, television, cable television networks, THIS OPINION IS NOT A PRECEDENT OF THE TTAB Cancellation No. 92067773 2 and a global computer network” in International Class 38; and “entertainment services, namely, production of concerts, events, and festivals featuring live musical performances” in International Class 41.1 Beatstoc, Inc. (“Petitioner”) filed a petition to cancel Respondent’s registration as to Classes 9, 38, and 41 only. As grounds for cancellation, Petitioner claims that the application that matured into the subject registration was “filed by a non-existent entity and is void” under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a);2 and that Respondent abandoned the mark under Sections 14(3) and 45 of the Trademark Act, 15 U.S.C. §§ 1064(3) and 1127.3 Petitioner pleads that the USPTO has initially refused to register its mark BEATSTOC in its pending application “under Section 2(d) on the grounds that it was likely to cause confusion with” Petitioner’s registered mark and thus the registration is “causing injury and damage to Petitioner.”4 Respondent filed an answer that, as amended, comprises 7 paragraphs that correspond to the first 7 allegations (paragraphs) of the Petition for Cancellation.5 Respondent does not specifically respond to the latter, numbered paragraphs 8-18 of the Petition for Cancellation. 1 Registration No. 2436246, issued on March 20, 2001. 2 1 TTABVUE 6-8; ¶¶ 4-8. 3 1 TTABVUE 8-10; ¶¶ 9-18. 4 1 TTABVUE 3-6; ¶¶ 1, 3. 5 6 TTABVUE (Respondent’s motion to amend answer). The amended answer was accepted by the Board as “the operative pleading in this proceeding nunc pro tunc.” (11 TTABVUE n.2). Cancellation No. 92067773 3 The parties have fully briefed this proceeding, including a reply brief filed by Petitioner.6 I. Record The record includes the pleadings and, pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Respondent’s subject registration file. The parties did not introduce any evidence.7 II. Standing Standing is a threshold issue that must be proven by the plaintiff in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). 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 it possesses a “real interest” in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his belief of damage.” Id. (citing Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)). A “real interest” is a “direct and personal stake” in the outcome of the proceeding. Ritchie, 50 USPQ2d at 1026. 6 12 TTABVUE (Petitioner’s main brief); 13 (Respondent’s brief); and 14 TTABVUE (Peti- tioner’s reply brief). Respondent’s uncontested motion (15 TTABVUE) requesting that the Board not strike its brief as untimely is granted. Trademark Rule 2.127(a). 7 Respondent attached materials with its amended answer (6 TTABVUE) and with its main trial brief (13 TTABVUE). These materials are not of record. See Trademark Rule 2.122(c), 37 C.F.R. § 2.122(c) (except for pleaded registrations, exhibits attached to pleadings are not evidence and must be otherwise properly introduced) and Trademark Rule 2.121(a), 37 C.F.R. § 2.121(a) (“No testimony shall be taken or evidence presented except during the times assigned, unless by stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board.”). See Trademark Trial and Appeal Board Manual of Procedure (TBMP) §§ 701 and 801.01 (June 2019). Cancellation No. 92067773 4 Petitioner pleads that it owns a trademark application that has been refused registration by the Office based on Respondent’s registration.8 Although Petitioner did not submit any evidence, Respondent has admitted these allegations9 and these admitted allegations are sufficient to establish Petitioner’s standing. See Empresa Cubana del Tabaco, 111 USPQ2d at 1062; ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012) (evidence of Office action showing petitioner’s pending application refused registration based on respondent’s registration established standing); Trademark Rule 2.122(d). III. Nonuse Ground is Time-Barred Once a registration is more than five years old, the only grounds available upon a petition to cancel are those enumerated in Trademark Act Sections 14(3) and 14(5), 15 U.S.C. §§ 1064(3) and 1064(5), and they do not include the claim of nonuse of a mark at the time of registration. See Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., 78 USPQ2d 1899, 1906 n.6 (TTAB 2006) (noting that registration more than 5 years old may not be challenged on ground that mark was not used in commerce at time of application filing); Pennwalt Corp. v. Sentry Chem. Co., 219 USPQ 542, 550 (TTAB 1983) (finding nothing in Section 14 that allows nonuse as a separate ground for cancellation of registration after five years have elapsed, unless misstatement was made with fraudulent intent, which would be grounds for a fraud claim). Because Respondent's Registration No. 2436246, which issued in 2001, was more 8 1 TTABVUE 3-6, ¶¶ 1, 3. 9 6 TTABVUE 2-3, ¶¶ 1, 3. Cancellation No. 92067773 5 than five years old when Petitioner filed the Petition for Cancellation in 2018, the nonuse use claim against this registration is time barred under Section 14. Accordingly, we give no further consideration to that claim. An abandonment claim, on the other hand, is not time-barred under Section 14. IV. Abandonment A. Applicable Law Under Section 45 of the Trademark Act, a mark shall be deemed to be abandoned: When its use has been discontinued with intent not to re- sume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. 15 U.S.C. § 1127. Further, since a registration is presumed valid, 15 U.S.C. § 1057(b), the party seeking its cancellation must rebut this presumption by a preponderance of the evidence. Cold War Museum v. Cold War Air Museum, 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009); W. Fla. Seafood Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1665-66 (Fed. Cir. 1994). “If plaintiff can show three consecutive years of nonuse, it has established a prima facie showing of abandonment, creating a rebuttable presumption that the registrant has abandoned the mark without intent to resume use. The burden of production (i.e., going forward) then shifts to the respondent to produce evidence that it has either used the mark or that it has intended to resume use (e.g., a convincing demonstration of ‘excusable non-use’ that Cancellation No. 92067773 6 would negate any intent not to resume use of the mark). The burden of persuasion remains with the plaintiff to prove abandonment by a preponderance of the evidence.” Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1417 (TTAB 2016) (citing Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1393 (Fed. Cir. 1990)). B. Petitioner’s Reliance on the Pleadings to Prove Abandonment In support of its argument that Respondent has abandoned its registered mark, Petitioner relies exclusively on Respondent’s failure to “respond to the allegations set forth in ¶¶ 8-18 of the Petition for Cancellation.”10 Citing Fed. R. Civ. P. 8(b)(6), Petitioner asserts that, in view of this failure, “each of the allegations set forth in ¶¶ 8-18 have been affectively admitted by Respondent.”11 Paragraphs 8-18 of the Petition for Cancellation read: 8. As such, upon information and belief, the purported owner of the Abandoned Mark is not a viable entity. Accordingly, there is no owner, and there was never an owner, and the Abandoned Mark should be cancelled because it was void ab initio for these reasons. The Abandoned Mark Has Also Been Abandoned 9. In addition to being void, the Abandoned Mark does not appear to have been used in commerce since 2011. 10. Petitioner’s counsel has researched the Abandoned Mark to attempt to determine whether it is still used in commerce. An internet search using the Google® search engine reveals that Respondent has a website: http://ampmentertainmentconcepts.com (the “Website”). 11. The Website’s most recent use of the Abandoned Mark was a flash page that said, for 2012, a BEATSTOCK live event was “Coming Soon”: 10 12 TTABVUE 13. 11 Id. Cancellation No. 92067773 7 [screenshot image]. 13. A further google search revealed that it would appear that the most recent BEATSTOCK live event was in 2011: [screenshot image]. 14. Finally, a review of a Facebook® page apparently related to the Abandoned Mark - https://www.facebook.com/Beatstock/ - does not reveal any current events bring promoted under the trademark BEATSTOCK. 15. In sum, the entity that purports to own the Abandoned Mark does not appear to exist and the Abandoned Mark does not appear to have been used in the last seven (7) years, and certainly appears to have been abandoned for at least 3 or more consecutive years. 16. Upon information and belief there does not appear to be any intent to resume the use of the Abandoned Mark. 17. Accordingly, upon information and belief, the Abandoned Mark has been abandoned pursuant to Section 45 of the Trademark Act. 18. Petitioner requests that Registration No. 2,436,246 be cancelled on the grounds that it was void ab initio and that the subject mark has been abandoned and hence that this Petition for Cancellation be sustained in favor of Petitioner.12 Respondent acknowledges that its counsel “inadvertently did not include responses to ¶¶ 8-18 of the Petition [for Cancellation] in its Amended Answer,” but argues that “this was in no way intended as a reflection of the substance of Respondent’s categorical denials of the claims that are the basis of the cancellation.”13 In particular, Respondent contends that its Answer includes “a general denial that it had abandoned the BEATSTOCK mark.”14 Respondent points, in particular, to its 12 1 TTABVUE 8-10. We note there is no allegation paragraph numbered “12” in the Petition for Cancellation. 13 13 TTABVUE 10 (n. 3). 14 Id. at 9. Cancellation No. 92067773 8 response in paragraph 3 of its Answer; the relevant pleading allegation and response are as follows: Petitioner’s Allegation (¶ 3 of Petition for Cancellation) “On September 22, 2017 Petitioner received an Office Action from the United States Patent and Trademark Office (“USPTO”) initially refusing to register Petitioner’s mark under Section 2(d) on the grounds that it was likely to cause confusion with the Abandoned [Respondent’s registered] Mark. The Abandoned Mark is the basis upon which the USPTO has initially refused to register the Petitioner’s Mark. As such, the Abandoned Mark is causing injury and damage to Petitioner.” Respondent’s Response (¶ 3 of Answer) “Respondent admits that Petitioner’s application was refused by the USPTO, on the basis of Respondent’s rights under its valid and subsisting, incontestable Registration No. 2436246 for BEATSTOCK, and denies that it has abandoned this Registration or the mark associated with it (attached hereto as Exhibit A are examples of Respondent’s recent commercial use of its mark). Respondent also denies that Respondent’s registration for BEATSTOCK is causing injury or damage to Petitioner, since Petitioner’s application was filed on an intent-to-use basis and Petitioner therefore has established no rights in any mark relevant to Respondent’s superior rights under its BEATSTOCK mark and registration.” Respondent argues that it has asserted a “general denial” of abandonment in this response because it is “not specified as responding to any specific allegation or speculation from Petitioner that it abandoned its mark, but instead provides a blanket clarification that [Respondent] has used its mark recently in commerce and has not abandoned its mark.”15 Respondent contends that it “refutes all of Petitioner’s speculations about abandonment.”16 Fed. R. Civ. P. 8, in pertinent part, provides as follows: (b) Defenses; Admissions and Denials. 15 Id. at 10. 16 Id. Cancellation No. 92067773 9 (1) In General. In responding to a pleading, a party must: (A) state in short and plain terms its defenses to each claim asserted against it; and (B) admit or deny the allegations asserted against it by an opposing party. (2) Denials-Responding to the Substance. A denial must fairly respond to the substance of the allegation. (3) General and Specific Denials. A party that intends in good faith to deny all the allegations of a pleading-including the jurisdictional grounds-may do so by a general denial. A party that does not intend to deny all the allegations must either specifically deny designated allegations or generally deny all except those specifically admitted. (4) Denying Part of an Allegation. A party that intends in good faith to deny only part of an allegation must admit the part that is true and deny the rest. (5) Lacking Knowledge or Information. A party that lacks knowledge or information sufficient to form a belief about the truth of an allegation must so state, and the statement has the effect of a denial. (6) Effect of Failing to Deny. An allegation-other than one relating to the amount of damages-is admitted if a responsive pleading is required and the allegation is not denied. If a responsive pleading is not required, an allegation is considered denied or avoided. The purposes of subsection 8(b)(6) of the rule are informative in nature - letting the parties know what allegations “will require proof to be established by the plaintiff in order [to] prevail” and also “to avoid surprise by a party who has failed to file a responsive pleading.” 61A Am.Jur.2d Pleading § 295 (November 2019 Update). Accordingly, Fed. R. Civ. P. 8(b)(6) should not be strictly interpreted where the purpose of the rule is otherwise fulfilled. Id. (citing Citizens Concerned for Separation of Church and State v. City and Cty. of Denver, 628 F.2d 1289, 30 Fed. R. Serv. 2d 315 (10th Cir. 1980) and Trotter v. Jack Anderson Enters., Inc., 818 F.2d 431 (5th Cir. 1987) (holding that a defendant in a libel action who failed to deny the complaint’s Cancellation No. 92067773 10 averment of actual malice did not admit malice because his motion for summary judgment, although not a responsive pleading, had given the plaintiff clear notice that the question of actual malice was disputed)). Thus, although 8(b)(6) provides that “an allegation . . . is admitted if a responsive pleading is required and the allegation is not denied,” this must be construed in the context of the entire answer and whether the plaintiff was fairly apprised of the defendant’s stance as to the allegations. “If a defendant intends in good faith to controvert all of the allegations contained in a complaint, including the jurisdictional grounds, the defendant may do so by general denial….” TBMP § 311.02(a). Respondent, by way of its response in paragraph 3 of its Answer, clearly informed Petitioner that it was denying the claim that it had abandoned its registered mark. Moreover, to the extent that Petitioner alleged nonuse of Respondent’s mark in commerce since 2011,17 this was also controverted in Respondent’s answer. That is, in addition to its clear denial of abandonment, Respondent referred to materials that purport to show “examples of Respondent’s recent commercial use of its mark.” Although those materials are not of record (see Note 7 above), the import and substance of this responsive pleading are that Respondent was asserting that it had recently used its mark in commerce. Petitioner was thus put on notice that it must prove nonuse. In sum, we construe Respondent’s response in paragraph 3 of its Answer as a 17 See Paragraphs 9 and 15 of the Petition for Cancellation (set forth in the body of this de- cision). Cancellation No. 92067773 11 general denial of Petitioner’s abandonment ground for cancellation. We find that Respondent was unequivocal in denying the allegation that it had abandoned the registered mark. C. Petitioner Has Failed to Carry Its Burden of Proof Because Respondent has denied Petitioner’s abandonment claim, and no evidence has been introduced supporting this claim, we find that Petitioner has not carried its burden of demonstrating, by a preponderance of the evidence, that Respondent’s subject registration should be cancelled on the ground of abandonment. Decision: The Petition for Cancellation is denied.