Brad Frankv.This Way Up, L.L.C.

Trademark Trial and Appeal Board

Jun 26, 2008

No. 92046007 (T.T.A.B. Jun. 26, 2008)

Mailed:
June 26, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Brad Frank
v.
This Way Up, L.L.C.
_____

Cancellation No. 92046007
_____

Robert Sperry, Esq. for Brad Frank.

Jonathan A. Bay, Esq. for This Way Up, L.L.C.
_____

Before Holtzman, Cataldo and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

This Way Up, L.L.C. (“respondent”) is the owner of
Registration No. 2269641 for the mark BAND-BOX for “musical
amusement machines which are similar to a juke box, namely,
machines combining loudspeakers with miniature, automated,
electro-mechanical musician figurines, and replacement parts
therefore.”1
Brad Frank (“petitioner”) filed a petition to cancel
respondent’s registration on the ground that the mark BAND-

1 Registration No. 2269641, issued August 10, 1999; Section 8
affidavit accepted.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Cancellation No. 92046007
2
BOX for a musical amusement machine similar to a juke box is
a generic term. Respondent denied the salient allegation in
the petition for cancellation.
Preliminary Issues
A. Issues to be decided.
During the prosecution of this cancellation proceeding,
petitioner filed a motion for summary judgment arguing that
respondent’s mark is generic, that respondent wrongly
obtained the registration through fraud, that respondent is
not using the mark as shown in the subject registration, and
that respondent is misusing the registration. In the March
19, 2007 Order denying the motion for summary judgment, the
Board specifically noted that it would not consider
unpleaded grounds. Despite this warning, petitioner failed
to file a motion to amend its petition for cancellation,
and, in his brief on the case, asserted the same unpleaded
grounds. Respondent objected to petitioner’s assertion of
the unpleaded grounds.2
Because petitioner may not rely on unpleaded claims, we
must determine whether petitioner’s attempt to argue that
respondent wrongly obtained the registration through fraud,
that respondent is not using the mark as shown in the
registration, and that respondent is misusing the
registration were tried by implied consent.

2 Respondent’s Brief, p. 28.
Cancellation No. 92046007
3
Implied consent to the trial of an
unpleaded issue can be found only where
the nonoffering party (1) raised no
objection to the introduction of
evidence on the issue, and (2) was
fairly apprised that the evidence was
being offered in support of the issue.

TBMP §507.03(b) (2nd ed. rev. 2004). See also Fed. R. Civ.
P. 15(b). Because respondent lodged an objection to the
unpleaded claims, they were not tried by implied consent.
Long John Silver’s, Inc. v. Lou Scharf Inc., 213 USPQ 263,
266 n.6 (TTAB 1982).
In view of the foregoing, the only issue to be decided
in this cancellation proceeding is whether the mark BAND-BOX
used in connection with a musical amusement machine similar
to a juke box is generic.
B. Evidentiary issues.
To support his claim that respondent’s mark BAND-BOX is
generic, petitioner submitted a notice of reliance with the
following documents:3
1. Exhibits A – S appear to be excerpts from a
website (marvin3m.com/arcarde/bandbox.htm).
2. Exhibit T appears to be an email between
petitioner and a potential customer.

3 Petitioner did not identify any of the documents. In addition,
petitioner did not label many of the documents.
Cancellation No. 92046007
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3. Exhibit U appears to be an advertisement for
“Chicago Coin’s Bandbox Puppets” from a third
party in an unidentified source.
4. Exhibits V-Z are excerpts from the eBay website
advertising “Band Box” devices.
5. Exhibit AA is a “cease and desist” letter from
respondent to petitioner.
6. Exhibit BB appears to be an advertisement for
respondent’s product dated May 2006 from an
unidentified source.
7. Exhibit CC appears to be a quote for an
unidentified product by respondent.
8. There were two unlabeled third-party registrations
on the Principal Register for the mark BAND BOX
printed from the Trademark Office electronic
database:
a. Registration No. 0743452 for “grooved
phonograph records”; and,
b. Registration No. 0800703 for “accessory
instruments for organ, namely,
percussive instruments actuated by organ
controls” (expired).
Cancellation No. 92046007
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9. Exhibit 1F appears to be an email from petitioner
to a potential vendor of parts.4
Respondent lodged objections to the admissibility of
the documents in petitioner’s notice of reliance on the
grounds that the documents are not self-authenticating and,
therefore, they are not properly admitted through a notice
of reliance and that the documents are hearsay because
petitioner is relying on them for the truth of the matter
asserted therein. Petitioner did not address respondent’s
objections in its Reply Brief.
Trademark Rule 2.122(e) provides, so far as pertinent
that “[p]rinted publications, such as books and periodicals,
available to the general public in libraries or of general
circulation among members of the public or that segment of
the public which is relevant under an issue in a proceeding,
and official records . . . may be introduced in evidence by
filing a notice of reliance on the material being offered.”
Only the two third-party trademark registrations (public
records) fall within the category of documents that may be
introduced into evidence by filing a notice of reliance.
See also Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370
(TTAB 1998).

4 There were several other unlabeled documents that were
cumulative or duplicates of other previously identified
documents.
Cancellation No. 92046007
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With the exception of the third-party trademark
registrations, respondent’s objection to the admissibility
of the documents in petitioner’s notice of reliance is
sustained and the documents in the notice of reliance will
be given no consideration.
Standing
“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, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982). Because the only evidence of
record is two third-party trademark registrations,
petitioner has failed to prove that it has standing to
challenge the validity of respondent’s registration.5

5 Petitioner submitted his declaration attesting to the fact that
petitioner “has been in the business of reproducing and
manufacturing parts for replicas of Chicago Coin Machine Co.
‘Band-Box’ machines” as an attachment to the petition for
cancellation. However, exhibits attached to a pleading are not
evidence on behalf of the party to whose pleading the exhibit is
attached unless it is identified and introduced into evidence as
an exhibit during the period of the taking of testimony.
Trademark Rule 2.122(c). To the extent that we may treat
petitioner’s declaration as the operative petition for
cancellation as we did in determining petitioner’s motion for
summary judgment, petitioner still failed to take any testimony
or introduce any other evidence to prove its standing. Moreover,
in this regard, we note that in the March 19, 2007 Order, the
Board advised petitioner that the materials attached to the
pleading would not be considered as evidence unless timely and
properly introduced in evidence during petitioner’s testimony
period. See the March 19, 2007 Order, p. 4 n.3.
Cancellation No. 92046007
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Genericness
The registration of respondent’s mark on the Principal
Register is prima facie evidence of the validity of that
registration and that the mark identified in the
registration is not generic. Accordingly, petitioner has
the burden of proving that respondent’s mark is invalid
because it is generic. Stocker v. General Conference Corp.,
39 USPQ2d 1385, 1392 (TTAB 1996) (“the burden of proof rests
squarely on petitioners who are asserting invalidity”).
There is a two-part test used to determine whether a
designation is generic: (1) what is the class of goods or
services at issue? and (2) Does the relevant public
understand the designation primarily to refer to that class
of goods or services? H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., 782 F.2d 987, 990, 228
USPQ 528, 530 (Fed. Cir. 1986). The test turns upon the
primary significance that the term would have to the
relevant public. Our primary reviewing court has stated
that a party asserting genericness must prove its claim by a
preponderance of the evidence. Therefore, petitioner has
the dual burden of overcoming the registration’s validity
and he must also prove by a preponderance of the evidence
that the term BAND-BOX is used or understood by the relevant
class of consumers primarily to refer to the class of goods
Cancellation No. 92046007
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with which the term is registered. Stocker v. General
Conference Corp., 39 USPQ2d at 1392.
Because the only admissible evidence petitioner
introduced into the record were the two third-party
trademark registrations, petitioner failed to meet its
burden of proving that BAND-BOX is generic.
Decision: The petition for cancellation is dismissed
with prejudice.