Bennettv.City of Canton, Texas

Trademark Trial and Appeal Board

Jun 6, 2001

No. 92027927 (T.T.A.B. Jun. 6, 2001)

6/6/01 Paper No. 24
GDH/gdh
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Bennett
v.
City of Canton, Texas
_____
Cancellation No. 27,927
_____
Ben H. Bennett, pro se.
Dan L. Tucker and Kristin Jordan Harkins of Locke Liddell & Sapp
LLP for City of Canton, Texas.
_____
Before Cissel, Hohein and Holtzman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Ben H. Bennett, d.b.a. World Wide First Monday, has
petitioned to cancel the registration owned by the City of
Canton, Texas for the mark "FIRST MONDAY" for the services of
"organizing, promoting and conducting flea markets for others".1
As grounds for cancellation, petitioner alleges in his amended
pleading that respondent's "mark was and is generic" for its
services in that such mark "was and is in concurrent use by
1 Reg. No. 1,277,326, issued on May 8, 1984 from an application filed
on October 16, 1981, which sets forth a date of first use anywhere of
1873 and a date of first use in commerce of 1960. The registration
issued pursuant to the provisions of Section 2(f) of the Trademark
Act.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 27,927
2
several communities" which "sponsor activities virtually
identical to those of the registrant, and have done so during the
relevant period of time"; that "petitioner has and does publish
an on-line magazine furnishing information on the activities of
these various community markets"; that petitioner "has made
application for and has been refused protection afforded by
registration of his mark, used in the publishing field, due to
perceived conflicts by the examining attorney"; and that
"[c]ancellation of the registrant's mark is necessary to preserve
the rights of other communities with 'first Monday' traditions
and to allow the protection of the publishing mark of the
petitioner."
Respondent, in its answer, has denied the salient
allegations of the amended petition to cancel.
The record consists of the pleadings; the file of the
involved registration; and, as petitioner's case-in-chief, five
notices of reliance on various newspaper articles which mention
the term "first Monday(s)" or "First Monday" in connection with
community trade and barter events, i.e., flea markets, held on
the first Monday of a month in the towns of Scottsboro, Alabama
and Trenton, Tennessee.2 Petitioner, however, did not furnish
2 Because the accompanying certificates of service indicate that the
notices of reliance were served directly upon respondent rather than
its counsel as required by Trademark Rule 2.119(b), the Board on June
20, 2000 granted respondent's contested motion to extend its testimony
period. Petitioner was allowed until June 30, 2000 to serve its
notices of reliance upon respondent's counsel and, in a communication
received on June 22, 2000, advised the Board that it had done so, but
since the communication failed to indicate proof of service of a copy
thereof upon respondent's counsel, the Board on October 2, 2000
Cancellation No. 27,927
3
any proof of its standing to bring this proceeding and respondent
did not take testimony or otherwise present any evidence. Only
petitioner filed a brief and neither party requested an oral
hearing.
Whether the evidence submitted by petitioner with its
notices of reliance is sufficient to establish that respondent's
"FIRST MONDAY" mark is generic for the services recited in its
registration is an issue which we need not decide in view of
petitioner's failure to provide any evidence of his standing to
bring this case. Specifically, petitioner has offered no proof
that, as alleged in the amended cancellation petition and denied
in respondent's answer, he is in fact the owner of an application
for a mark for an on-line magazine that furnishes information on
the activities of various community flea markets and which has
been refused registration in light of respondent's involved
registration.3 Petitioner, therefore, has not proven his
standing to be heard that he is damaged by the continued
existence of such registration. Such proof, just as is the case
further extended respondent's testimony period "to avoid possible
prejudice to respondent."
3 Although we note the statement in his brief that "petitioner has and
does publish an on-line magazine offering information on the
activities of various community markets and sales, and has made
application for, and has been refused protection afforded by,
registration of his mark, used in the publishing field, due to
perceived conflicts by the examining attorney," such statement does
not constitute proof of petitioner's standing. As stated in TBMP
§706.02, "[f]actual statements made in a party's brief on the case can
be given no consideration unless they are supported by evidence
properly introduced at trial." Here, as pointed out above, petitioner
has failed to introduce any evidence to establish his standing and the
Board does not take judicial notice of applications filed in (or
registrations issued by) the United States Patent and Trademark Office
which are not the subject of an inter partes proceeding. See, e.g.,
In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974), and TBMP §703.03.
Cancellation No. 27,927
4
with proof of the genericness of respondent's mark, is an
essential element of petitioner's case-in-chief and, in the
absence thereof, petitioner cannot prevail.
Accordingly, inasmuch as petitioner is the party who
bears the burden of proof in this proceeding, and since
petitioner has failed to present proof of his standing to be
heard herein, it is adjudged that the petition to cancel must
fail.
Decision: The petition to cancel is denied.