Bruce Kirby, Inc.v.Velum Limited

Trademark Trial and Appeal Board

Feb 8, 2019

CANC (T.T.A.B. Feb. 8, 2019)

This Opinion is not a Precedent of the TTAB Hearing: December 11, 2018 Mailed: February 8, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Bruce Kirby, Inc. v. Velum Limited _____ Cancellation No. 92057217 _____ Wesley W. Whitmyer, Jr., Walter B. Welsh, and Benjamin Luehrs of Whitmyer IP Group LLC, for Bruce Kirby, Inc. Jude A. Fry and Colleen Flynn Goss of Faye Sharpe LLP, for Velum Limited. _____ Before Peter, Deputy Director, United States Patent and Trademark Office, and Adlin and Heasley, Administrative Trademark Judges. Opinion by Heasley, Administrative Trademark Judge: Petitioner Bruce Kirby, Inc. petitions to cancel Respondent Velum Limited’s registration on the Principal Register of the standard character mark LASER for use in connection with “organizing sporting events, namely, sailing competitions and regattas” in International Class 41.1 1 Registration No. 3459524 (the “’524 Registration,” for services) issued on the Principal Register on July 1, 2008. Renewed. A “regatta” is a series of boat races. Macmillan Dictionary.com. The Board may take judicial notice of definitions from dictionaries, including online dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014) aff’d 823 F.3d 594, 118 USPQ2d 1632 Cancellation No. 92057217 - 2 - As grounds for cancellation, Petitioner alleges that Respondent has abandoned the LASER mark because it ceased (or never began) using the mark in connection with the identified services and intends not to resume any use, and also because it has allowed numerous third parties to use the mark in connection with the services without authorization or license for over three years.2 Additionally, Petitioner alleges that Respondent obtained the ‘524 Registration fraudulently by submitting specimens of use of the mark by third parties that organized sailing events without authorization or license from Respondent.3 In its Answer, Respondent denies the salient allegations.4 It also raises several affirmative defenses, which were not pursued at trial and are accordingly waived.5 See TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1100-01 (TTAB 2019). The parties, by counsel, briefed the issues thoroughly and appeared for oral argument. For the reasons that follow, the petition is denied. I. Background A. Origins of the Parties’ Dispute This case traces its origins to 1969, when Petitioner’s namesake, Bruce Kirby, and (Fed. Cir. 2016); University of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). 2 Petition ¶¶ 4-5, 8-9; 1 TTABVUE 4-5. 3 Id. ¶¶ 6-7, 10; 1 TTABVUE 4-5. 4 Answer, ¶¶ 4-10, 6 TTABVUE 3. 5 Respondent’s pleaded affirmative defenses were waiver, laches, and acquiescence. Aff. Def. ¶ 3; 6 TTABVUE 4. The remaining “affirmative defenses”-asserting that the Petition failed to state a claim upon which relief can be granted, claiming that Petitioner lacks priority, and reserving the right to assert other defenses and counterclaims-are not true affirmative defenses. Cancellation No. 92057217 - 3 - a colleague, Ian Bruce, began to design and develop a small sailing dinghy that came to be known as the “LASER” sailboat. They began to use the LASER mark on sailboats in 1971, and commenced use in commerce in 1973. The small, portable, and affordable LASER sailboat quickly became popular among sailors worldwide, especially in racing competitions, as shown below: 6 It appears that Bruce Kirby and Ian Bruce effectively divided the intellectual property rights in the LASER sailboat between themselves, with Mr. Kirby retaining copyright in the boat’s design and Mr. Bruce retaining rights in the LASER trademark. Mr. Bruce formed a company, Performance Sailcraft Inc., which in 1974, applied for and was granted Registration No. 1038170 for LASER (in standard characters) for sailboats, parts and accessories, as well as sails.7 That registration (the ‘170 Registration, for goods) has been assigned eleven times, ultimately coming to rest in the possession of Respondent, Velum Limited. The LASER sailboat became so popular worldwide that in 1974 owners of the 6 Respondent’s first notice of reliance, 58 TTABVUE 125. 7 Reg. No. 1038170 issued on April 20, 1976 for “sailboats, and parts and accessories for sailboats - namely, spars, booms center board, rudder covers and boat covers” in International Class 12 and “sails” in International Class 22, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on claimed first use in January 1971 and first use in commerce in March 1973. Renewed. Cancellation No. 92057217 - 4 - sailboats formed the International Laser Class Association (“ILCA”), a nonprofit international organization that oversees sailing events and ensures that sailboats in the LASER Class adhere to one uniform design, so races are won on the basis of sailing skill, not differences in boat design.8 ILCA is recognized by international sailing governing bodies, including the International Yacht Racing Union, which granted International status to the LASER Class in 1974.9 Nine years after ILCA’s formation, it entered into a 1983 agreement with the International Yacht Racing Union, which reaffirmed ILCA’s status. Other parties to the 1983 agreement were the then-owner of the ‘107 LASER Registration for goods and the owners of the copyright to the design of the LASER sailboat, Bruce Kirby and Petitioner.10 That same year, 1983, Bruce Kirby and Petitioner entered into an agreement (the “Head Agreement”) with the then-current owner of the ‘107 LASER Registration for goods by which, as intellectual property owners, they jointly undertook to license specified builders around the world to build sailboats bearing the LASER mark and conforming to the single uniform design. The builders were to pay royalties for the licenses. The Head Agreement also provided, in pertinent part, that the trademark owner would not contest the validity of the copyright, and Bruce Kirby and Petitioner would not contest the LASER trademark or seek to invalidate any registration thereof 8 Declaration of Eric Faust ¶ 8, 47 TTABVUE 6. See July 8, 1974 Agreement relating to the International Laser Class Boat (“1974 ILCA Agreement”), ex. C to Declaration of William Crane, 55 TTABVUE 34, et seq. 9 World Sailing (UK) Limited, the international governing body for the sport of sailing, and The International Yacht Racing Union, which recognized the LASER Class of sailboats. Faust decl. ¶ 9, 47 TTABVUE 6; 10 November 1983 Agreement relating to the International LASER Class Boat, Crane decl. ex. E, 55 TTABVUE 62 et seq. Cancellation No. 92057217 - 5 - in any country of the world, including the ‘170 Registration for goods in the United States.11 Ultimately, the ‘170 LASER Registration for goods was assigned to Respondent. Respondent later applied to register the subject LASER mark for services in February 2006, based on its assertion of a bona fide intent to use the mark for organizing sporting events, namely sailing competitions and regattas.12 After a notice of allowance issued, Respondent submitted a Statement of Use on April 16, 2008, with specimens of use of the LASER mark in connection with championship sailing competitions hosted by local yacht clubs, (such as the Brant Beach Yacht Club in New Jersey, the Mallets Bay Boat Club in Vermont, and the Alamitos Bay Yacht Club in California), all overseen by ILCA. The subject ‘524 LASER service mark Registration issued to Respondent on July 1, 2008. In that same year, 2008, Bruce Kirby and Petitioner entered into an “Intellectual Property Purchase and License Agreement” by which they conveyed their intellectual property rights in the LASER sailboats to Global Sailing Ltd. of New Zealand.13 When LASER sailboat builders failed to pay royalties to Global Sailing, after having paid them for years to Petitioner, Petitioner eventually backtracked, attempting to reassert intellectual property rights in the LASER sailboats. Litigation ensued on many fronts. 11 Head Agreement ¶¶ 4.1, 4.2, 55 TTABVUE 158. In view of the outcome of this proceeding, it is unnecessary to address Respondent’s substantive claims under the Head Agreement. 12 Application Serial No. 78810758. 13 Crane decl. ¶ 89, 55 TTABVUE 30; 56 TTABVUE 280 et seq. Cancellation No. 92057217 - 6 - B. Related Proceedings Involving the Parties 1. The District Court Lawsuit In March 2013, Bruce Kirby and Petitioner filed a complaint (amended a month later) in the U.S. District Court for the District of Connecticut against Respondent, Respondent’s principal, Farzad Rastegar, and three entities affiliated with Respondent: Karaya (Jersey) Limited, and two sailboat builders, LaserPerformance (Europe) Limited, and Quarter Moon, Inc., which were licensed to build the LASER sailboats in exchange for royalties previously owed to Bruce Kirby and Petitioner.14 Although the amended complaint raised a variety of claims, such as counterfeiting, breach of contract, trademark infringement and unfair competition, the gravamen of the claims is that the sailboat builders, induced and abetted by the other defendants, continued to build and sell sailboats meeting the LASER sailboat specifications without paying royalties to plaintiffs Bruce Kirby and Petitioner, even though the plaintiffs purported to terminate the builders’ rights to build the one-design sailboats. The amended complaint acknowledged that Karaya (Jersey) Limited owned the registration for LASER for goods in the United States, and that Respondent owned the LASER mark in the United Kingdom and the European Community.15 Respondent and Karaya successfully moved to dismiss the amended complaint against them based on lack of personal jurisdiction, as they were based in Antigua and Barbuda and the Channel Islands, respectively, and were merely holding 14 Bruce Kirby, et al. v. LaserPerformance (Europe) Limited et al., 3:13CV00297 in the United States District Court for the District of Connecticut (the “District Court action”). The amended complaint also named as defendants the International Sailing Federation Limited (successor to the International Yacht Racing Union), and ILCA. 15 Id. Amended Complaint ¶¶ 45-48, Docket entry 38. Cancellation No. 92057217 - 7 - companies that own and license their trademarks to others. On motions for summary judgment by the sailboat builders, the District Court found, “Amidst a sea of claims, counterclaims, and competing motions for summary judgment, the builders assert that neither Kirby nor his corporate namesake have standing to sue them, because Kirby and Bruce Kirby, Inc. sold their contractual and intellectual property rights to another company who has not been joined as a plaintiff in this action. I agree, and therefore will grant defendants’ motions for summary judgment on plaintiffs’ claims.”16 Specifically, the Court found that: In 2008, Kirby decided to sell his rights in the Laser boat. He and his company entered into a sales contract with a New Zealand company called Global Sailing Limited (GSL) to receive $2.6 million for all of his interest in the Kirby Sailboat design, including all intellectual property rights and all rights under agreements entered into between plaintiffs and third parties relating to the Kirby Sailboat.17 As the Court put it: “Plaintiff Bruce Kirby intended to ‘get out of the Laser biz’ with this sale.”18 Accordingly, the Court granted the sailboat builders’ motions for summary judgment “in light of my conclusion that plaintiffs Bruce Kirby and Bruce Kirby, Inc. have no standing to maintain their claims.”19 16 District Court ruling on motions for summary judgment, 56 TTABVUE 279 et seq., 58 TTABVUE 493 et seq. 17 Id. 56 TTABVUE 280, 58 TTABVUE 494. 18 Id. 56 TTABVUE 284-285, 58 TTABVUE 499. 19 Id. 56 TTABVUE 291-292. The Court observed that in 2011 Petitioner obtained a license from GSL for the purpose of servicing existing contracts, but that the license agreement “did not confer on plaintiffs the right to sue to enforce the contractual and intellectual property rights that belong to GSL-I conclude that plaintiffs have no standing or right of action as to any of their claims against LPE and QMI.” 56 TTABVUE 289. The Court later amended its ruling, finding that “[t]he parties do not dispute that the BRUCE KIRBY® trademark was not sold to GSL.” 60 TTABVUE 9. There is no allegation in this case that Respondent is using the mark BRUCE KIRBY. Cancellation No. 92057217 - 8 - 2. The ‘170 Registration Cancellation Proceeding In a Board proceeding brought in May 2013, Petitioner sought to cancel the ‘170 registration for LASER for sailboats and parts on the ground of abandonment.20 Petitioner claimed standing based on its intent-to-use application, filed in early 2013, for LASER for “boats,” registration of which was barred by the ‘170 Registration.21 The registrant (Karaya (Jersey) Limited, Respondent’s immediate predecessor in the chain of assignments) moved for summary judgment based in part on the Head Agreement, in which Petitioner had agreed not to contest registrations of the LASER trademark. The Head Agreement provides in pertinent part that Petitioner: shall not at any time question or contest directly or indirectly the validity of the trade mark “LASER” or assist any other person to do so, and shall not at any time knowingly do any act directly or indirectly which would or is likely to invalidate the trade mark “LASER” in any country of the world or invalidate any of the trade mark registrations or applications listed in Schedule B annexed hereto [showing registrations or applications for LASER for sailboats and parts in about twenty countries, including the ‘170 Registration in the United States] nor assist any other person to do so.22 The Head Agreement also provides: Neither Bruce Kirby nor Kirby Inc. shall use the trade mark “LASER” or any trade mark which is confusing with the trade mark “LASER” in association with any product, nor assist or encourage any person other than Trade Mark Owner or a licensee of Trade Mark Owner directly or indirectly in any such use.23 Petitioner did not respond to the motion for summary judgment. Instead, it 20 Cancellation No. 92057168. The petition also sought to cancel the registration for a design mark associated with the LASER word mark, Reg. No. 1800653, on the same ground. Petition for Cancellation, 1 TTABVUE. 21 Application Serial No. 85876136. 22 Head Agreement ¶ 4.2, 55 TTABVUE 158. 23 Id. ¶ 6.2. Cancellation No. 92057217 - 9 - withdrew its cancellation petition without the registrant’s consent.24 The Board accordingly dismissed that petition for cancellation with prejudice.25 Petitioner’s intent-to-use application for LASER was abandoned on May 17, 2018. II. Procedural History of This Cancellation Proceeding, Including Motions, the Evidentiary Record and Objections, and the Parties’ Positions In this case, also instituted in May 2013, Petitioner alleged that it had standing to seek cancellation of Respondent’s ‘524 service mark Registration because “Petitioner is actively engaged in the field of sailing and the design, manufacture, production, and licensing of boat designs for use in international sailing competitions including the Olympics, and has an interest in maintaining the integrity of those competitions, including without limitation, the trademarks used in connection with those competitions.”26 A. The Parties’ Motions for Summary Judgment Respondent moved for summary judgment, arguing that “[t]here is no explicit allegation in the Petition to Cancel concerning how [Petitioner] is or will be damaged by the continued registration of the ‘524 Registration.”27 “Even if Petitioner has an ‘interest’ in maintaining integrity of international sailing competitions, Petitioner’s [Head] agreement that it would not challenge the validity of the trademark ‘LASER’ or do any act which would invalidate the trademark ‘LASER’ in the world 24 23 TTABVUE in Cancellation No. 92057168. 25 24 TTABVUE in Cancellation No. 92057168. 58 TTABVUE 343 in this proceeding. 26 Petition for Cancellation ¶ 3, 1 TTABVUE 3-4. 27 Respondent’s motion for summary judgment, 16 TTABVUE 6. Cancellation No. 92057217 - 10 - unquestionably evidences that Petitioner has no standing to bring this Petition to Cancel.”28 Petitioner, citing paragraph 3 of its Petition for Cancellation, responded that “Registrant’s mark for goods [sic] related to organizing sporting events, namely, sailing competitions, and regattas unquestionably affects Kirby’s interest in maintaining the integrity of sailing competitions. Kirby’s interest will be damaged unless Velum’s registration is cancelled.”29 Petitioner further argued that the Head Agreement did not bar its petition because “The Head Agreement and the associated waiver are objectively limited to the LASER trademark as used on boats and related equipment. It cannot be extended to cover unrelated service marks first used in commerce more than twenty years after it was signed.”30 Petitioner also cross-moved for summary judgment in its favor, based on its claims of abandonment and fraud.31 The Board denied both parties’ motions for summary judgment. In the course of denying Respondent’s motion, it found a genuine dispute as to whether the Head Agreement covered both goods and services.32 The Board observed that Petitioner submitted no declaration in support of its motion, although it did submit inter alia a copy of its civil complaint in the District Court action and three exhibits thereto consisting of 2012 letters, signed by Bruce Kirby on behalf of Petitioner, purporting 28 Id. 16 TTABVUE 11. 29 Petitioner’s response and cross-motion for summary judgment. 21 TTABVUE 15. 30 Id., 21 TTABVUE 21. 31 Id., 21 TTABVUE 16-19. 32 Order, 28 TTABVUE 6. Cancellation No. 92057217 - 11 - to terminate licenses to use his copyrighted sailboat design.33 The Board found this sufficient evidence of Petitioner’s allegation that it was engaged in the design of boats for use in international sailing competitions, although it also found there were genuine disputes as to Petitioner’s claims.34 After denying both motions for summary judgment, the Board reminded the parties: The parties should note that evidence submitted in support of or in opposition to a motion for summary judgment is of record only for consideration of that motion. Any such evidence to be considered at final hearing must be properly introduced in evidence during the appropriate trial period. See Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).35 In other words, and contrary to Petitioner’s argument discussed below, the Board did not grant summary judgment to Petitioner on the issue of its standing. B. The Trial Record The record in this proceeding includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Respondent’s registration file. The parties introduced the following testimony and evidence: 1. Petitioner’s Evidence 1. Testimonial declaration of Eric Faust, Executive Secretary of ILCA, with exhibits;36 2. First notice of reliance on the Petition and Answer, Respondent’s answers to interrogatories and responses to requests for admission; USPTO records 33 Id. 28 TTABVUE 7; see exhibits to Petitioner’s motion for summary judgment, 21 TTABVUE 27-54, 161-174. 34 Id. 28 TTABVUE 7 et seq. 35 Id. 28 TTABVUE 12 n. 3. 36 47 TTABVUE, 48 TTABVUE (confidential). Cancellation No. 92057217 - 12 - regarding the ‘170 Registration; Rhode Island Secretary of State official records of Respondent’s affiliate Quarter Moon, Inc.’s fictitious name “Vanguard Sailboats”; USPTO records relating to the subject ‘524 Registration, including Respondent’s Statement of Use and specimens of use;37 3. Second notice of reliance on the 1998 agreement between ILCA and Performance Sail Craft Europe Limited (PSE);38 4. Third notice of reliance on an ILCA calendar showing major regattas;39 5. Fourth notice of reliance on official records regarding Respondent’s predecessor, Karaya Holdings Limited; screenshots from Petitioner’s “Kirby Torch” website; screenshots from Petitioner’s “Bruce Kirby Marine” website; USPTO status and file histories for Registration Nos. 3042725, 3532451, 31718738, 3202055, and Application Serial Nos. 85779037 (abandoned), 85822681 (abandoned), 87424545, and 87424573.40 6. Fifth notice of reliance on docket entries and orders from the District Court action; Internet screen shots from Sailing.org and Sonar.org; Board Order in this proceeding denying the parties’ cross-motions for summary judgment; Internet screenshots and notices of race for 2011 Laser slalom championship and 2018 Laser Gulf Coast championship; trademark registrations listed in the 37 49 TTABVUE. 38 50 TTABVUE (confidential). Respondent did not object to Petitioner’s introduction of materials not typically admissible under Notice of Reliance alone, and we have therefore considered the evidence. 39 51 TTABVUE. 40 59 TTABVUE. Cancellation No. 92057217 - 13 - Head Agreement.41 7. Testimonial cross-examination deposition of William Crane, Respondent’s witness, with exhibits.42 2. Respondent’s Evidence 1. Testimonial declaration of William Crane, Director of Respondent’s affiliated company Quarter Moon, Inc., and chairman of affiliated entities LaserPerformance (Europe) (formerly known as Performance Sailcraft Limited), Quarter Moon, Laser Sailboats Limited, and LaserPerformance LLC, with exhibits.43 2. First notice of reliance on USPTO records regarding the subject ‘524 Registration, the ‘170 Registration, and Registration Nos. 1800653 and 5246379; Petitioner’s answers to interrogatories, responses to requests for admission, and responses to requests for production of documents; ILCA Handbook, Constitution and Laser Class Rules; TTABVUE docket entries from Cancellation No. 92057168, the ‘170 Registration cancellation proceeding; docket entries from the District Court action; ILCA North American Region Grand Prix rules; web page from Laser.org: “A Brief Introduction to Laser Sailing”; The Laser Sailor Winter 2015 ed.; ILCA North America Region Guidelines for Laser regattas; webpage from LaserInternational.org “What is the ILCA?”;44 41 60 TTABVUE. 42 61 TTABVUE, 62 TTABVUE (confidential). 43 55 TTABVUE (confidential), 56 TTABVUE. 44 58 TTABVUE. Cancellation No. 92057217 - 14 - 3. Testimonial cross-examination deposition of Eric Faust, Petitioner’s witness, with exhibits.45 3. Evidentiary Issues Before proceeding to the merits, we address evidentiary objections. Petitioner’s Objections Respondent, a holding company, submitted evidence that it uses the LASER service mark through its affiliated companies, which it calls the “LaserPerformance Companies”-specifically, LaserPerformance (Europe) Limited, and Quarter Moon, Inc. (both of which were named as defendants in the District Court action), as well as Laser Performance LLC and Laser Sailboats Limited. Petitioner objects that these affiliated companies were not identified during discovery in response to Petitioner’s interrogatory nos. 1, 5, 7 and 8, all of which required Respondent to identify “third parties” that it allowed to use the LASER service mark.46 As Respondent correctly notes, however, the instructions and definitions to Petitioner’s interrogatories defined “You,” “Velum,” “Registrant,” or “Velum Limited” as: Velum Limited, and each of its predecessors, successors, subsidiaries, and affiliates, their officers, directors, employees, brokers, agents, attorneys, investigators, affiliates, parent corporations, holding companies, subsidiaries, franchisees, licensees, and successors, whether past or present, and all other persons who have acted or purport(ed) to act on their behalf.47 45 63 TTABVUE, 64 TTABVUE (confidential). 46 Petitioner’s objections, 65 TTABVUE 40-44. 47 49 TTABVUE 19; see Respondent’s response, 67 TTABVUE 4. Cancellation No. 92057217 - 15 - The “LaserPerformance Companies” were thus not “third parties,” within the meaning of Petitioner’s interrogatories. Petitioner’s objection is overruled. Petitioner then lodges a “table of objections” to the Crane declaration, to Respondent’s first notice of reliance, and to Respondent’s cross-examination of Mr. Faust.48 Petitioner objects to 55 items of evidence, with its multiple objections ranging from relevance, lack of personal knowledge, and lack of authentication to speculation, assuming facts not in evidence, and lack of foundation. In cases of this sort, the Board has treated analogous objections in the following manner: The parties have lodged numerous objections. None of the evidence sought to be excluded is outcome determinative. Moreover, the Board is capable of weighing the relevance and strength or weakness of the objected to testimony and evidence, including any inherent limitations. As necessary and appropriate, we will point out any limitations in the evidence or otherwise note that the evidence cannot be relied upon in the manner sought. In doing so, we have kept in mind the various objections raised by the parties and we have accorded whatever probative value the subject testimony and evidence merit. … We have noted where we have not considered evidence proffered. RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801, 1804 (TTAB 2018) (citing Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1479 (TTAB 2017)). So too here. Respondent’s Objections Respondent objects to the exhibits attached to Petitioner’s fourth and fifth Notices of Reliance, on multiple grounds. To begin with, Respondent argues, Petitioner’s fourth and fifth Notices of Reliance do not state their relevance, aside from stating 48 Petitioner’s objections, 65 TTABVUE 44-51. Cancellation No. 92057217 - 16 - that they rebut Mr. Crane’s testimonial declaration.49 Petitioner correctly notes, however, that this is a procedural objection that could have been raised and cured earlier.50 As the Board has stated: [t]he failure to properly “indicate generally the relevance of the material being offered” . . . is an evidentiary defect that can be cured by the propounding party as soon as it is raised by any adverse party, without reopening the testimony period of the propounding party. If the adverse party believes that the propounding party has not met the requirement to “indicate generally the relevance of the material being offered,” the adverse party must lodge an objection before the opening of the next testimony period following that in which the material was offered into the record, or risk a finding that any objection on this basis has been waived. Apollo Medical Extrusion Technologies, Inc. v. Medical Extrusion Technologies, Inc., 123 USPQ2d 1844, 1846-47 (TTAB 2017) (quoting Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1040 (TTAB 2010)); see generally Trademark Rule 2.122(g), TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 707.02(b) (June 2018). Respondent’s objection on this ground is accordingly waived. Respondent objects that the documents in the fourth and fifth notices of reliance were not timely produced during discovery in response to Respondent’s request for production no. 18, requesting “All documents, things and ESA that Petitioner intends to offer into evidence during the course of these proceedings.”51 Petitioner objected to Respondent’s requests as overbroad,52 and responded that “[s]ubject to and without waiving the foregoing and continuing objections, Petitioner will produce non- 49 Respondent’s objections, 69 TTABVUE 57-62. 50 Petitioner’s reply brief, 70 TTABVUE 34. 51 See Respondent’s objections, 69 TTABVUE 61. 52 Petitioner’s “Continuing Objections” to requests for production ¶ 8, 58 TTABVUE 95. Cancellation No. 92057217 - 17 - privileged responsive documents.”53 A request for production of documents must describe each item or category of items to be inspected with “reasonable particularity.” Fed. R. Civ. P. 34(b)(1)(A); TBMP § 406.03. A general request for all documents a party intends to introduce into evidence does not meet this standard. See Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1103 (TTAB 2018) (“A party is not required, in advance of trial, to disclose each document or other exhibit it plans to introduce.”). Respondent’s objection on this ground is accordingly overruled. Respondent objects to several exhibits relating to Petitioner’s KIRBY TORCH, SONAR, PIXEL and Torch design marks on the grounds of relevance. Respondent objects that “The Kirby Torch and Sonar sailboats as well as the activity associated with those boats are not relevant to the current proceedings. It appears that the Kirby Torch and Sonar are each a separate boat distinguished from the Laser sailboat, each with their own class association and each raced under separate rules. However, because [Petitioner] never offered witness testimony relating to how these exhibits are material to this case, the evidence presented in these Exhibits should be excluded. … Nor is there evidence of record showing how the continued registration of the LASER mark might harm the trademarks allegedly contained within [these] Exhibits”54 This objection goes more to the weight of the evidence than its admissibility. We remind Respondent, as we advised Petitioner above, that the Board can weigh the evidence and accord it its proper probative value. RxD Media v. IP Application, 125 53 Id. at 101. 54 Respondent’s objections, 69 TTABVUE 68, 69. Cancellation No. 92057217 - 18 - USPQ2d at 1804. As the Board has emphasized, “We also remind the parties that our proceedings are tried before judges not likely to be easily confused or prejudiced. Objections to trial testimony on bases more relevant to jury trials are particularly unnecessary in this forum.” Grote Inds., Inc. v. Truck-Lite Co., LLC, 126 USPQ2d 1197, 1200 (TTAB 2018) (citing U.S. Playing Card Co. v. Harbro LLC, 81 USPQ2d 1537, 1540 (TTAB 2006) (“[B]ecause an opposition is akin to a bench trial, the Board is capable of assessing the proper evidentiary weight to be accorded the testimony and evidence, taking into account the imperfections surrounding the admissibility of such testimony and evidence.”)). For these reasons, this objection is also overruled. Finally, Respondent maintains that documents in the fourth Notice of Reliance relating to Petitioner’s claim of standing are inadmissible, first because they are improper rebuttal, as they should have been submitted in Petitioner’s case in chief, and second because they contain inadmissible hearsay. Specifically, exhibits BK1014 and BK1015 consist of Internet printouts advertising Petitioner’s KIRBY TORCH mark and purporting to show “Feedback” from unidentified users.55 Respondent objects that documents obtained through the Internet may not be used to demonstrate the truth of what has been printed; absent testimony from a competent witness who can discuss [Petitioner’s] business activities, the document is impermissible hearsay; and “The ‘Feedback’ appears to consist of out-of-court statements of unknown origin made by unknown persons who added them under circumstances that cannot be described, all of which makes them inherently 55 59 TTABVUE 7-17. Cancellation No. 92057217 - 19 - unreliable and should be excluded.”56 As our analysis below makes clear, standing is an important element of Petitioner’s case in chief. Although some of the evidence to which Respondent objects appears to have been adduced improperly in rebuttal, it is not outcome- determinative, and we consider it for what it is worth, according it whatever level of probative value it deserves. The Internet printouts designated as exhibits BK1014 and BK1015, however, are admissible only for what they show on their face. As the Board declared in a similar case: [T]he printouts from the various websites submitted by Opposer with its notice of reliance show on their face that some entity is advertising products and services under the … mark, but absent testimony from a competent witness, they are nonetheless hearsay. They do not prove that Opposer owns its pleaded … mark or that it has offered products or services under that pleaded mark. … Opposer’s Internet evidence is only probative for what it shows on its face and not the truth of what has been printed. In sum, Opposer has failed to submit any evidence to prove its standing. WeaponX Perf. Prods. Ltd v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1040 (TTAB 2018) (citing Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1467 n.30 (TTAB 2014) (Internet webpage evidence admissible only to show what has been printed and not for the truth of what has been printed)). In particular, the comments designated as ‘Feedback’, allegedly posted by anonymous writers,57 are quintessential hearsay, which will be given no consideration. 56 Respondent’s objections, 69 TTABVUE 64, 67. 57 59 TTABVUE 11-13. Cancellation No. 92057217 - 20 - C. Summary of the Parties’ Arguments The following synopsis of the arguments is intended as a summary, to provide some perspective on the issues in this proceeding. 1. Petitioner • Standing-Petitioner alleges that it is actively engaged in the field of sailing and the design and licensing of boat designs for use in international sailing competitions, and that it has an interest in maintaining the integrity of those competitions, including the trademarks used in connection with those competitions.58 It states that Respondent’s LASER service mark relates to organizing sailing competitions, and affects Petitioner’s interest in maintaining the integrity of sailing competitions.59 Petitioner has four ‘live’ trademarks, such as PIXEL and SONAR, for use in relation to boats and yachts, it contends, and retained the BRUCE KIRBY mark, as noted in the District Court action.60 Petitioner argues its interest will be damaged unless the ‘524 Registration is cancelled.61 In fact, it contends, Respondent’s Answer did not deny Petitioner’s allegation of standing.62 Paragraph three of Respondent’s Answer, corresponding to the allegation 58 Petition, ¶ 3, 1 TTABVUE 3-4; Petitioner’s brief, 65 TTABVUE 15. 59 Petitioner’s brief, 65 TTABVUE 15. 60 Petitioner’s brief, 65 TTABVUE 16-17; Petitioner’s Reply brief, 70 TTABVUE 6-9, citing Crane decl. ex. LL, District Court Order granting summary judgment to LaserPerformance (Europe) Limited and Quarter Moon, Inc. based on Bruce Kirby and Petitioner’s lack of standing. 56 TTABVUE 278 et seq. 61 Id. 62 Id. 65 TTABVUE 16. Cancellation No. 92057217 - 21 - of standing in paragraph three of the Petition, states “Registrant is without knowledge or information sufficient to form a belief as to the truth of the averments raised in paragraph 4 of the Petition to Cancel and, therefore, denies the same.”63 Finally, Petitioner argues that the Board found it had standing when it denied the motions for summary judgment, and should not reassess that finding. 64 • Abandonment-In support of its abandonment claim, Petitioner contends that Respondent has never used the ‘524 LASER mark in commerce to organize sailing events, either directly or through a related company or licensee.65 Although Respondent claims to license ILCA, Petitioner introduced the declaration of Eric Faust, Executive Secretary of ILCA, who testified that Respondent has never licensed, controlled, monitored, or supervised ILCA’s organization and conduct of LASER sailing events.66 The Faust declaration acknowledges that ILCA has a license agreement with a United Kingdom company, but emphasized that that agreement excluded the United States.67 63 6 TTABVUE 3 (emphasis added). 64 Petitioner’s brief, 65 TTABVUE 15-16; Petitioner’s Reply brief, 70 TTABVUE 5-6. 65 Petitioner’s brief, 65 TTABVUE 7, 10. 66 Faust decl. ¶¶ 26, 28, 30, 33-34, 47 TTABVUE 11-12. 67 “ILCA has entered an agreement regarding a LASER trademark, but the agreement explicitly excludes the United States. On February 27, 1998, ILCA entered an agreement with the UK company Performance Sailcraft Europe Limited regarding ILCA’s use of, among other things, a “Laser” trademark (“the PSE-ILCA agreement”). … However, the PSE-ILCA agreement defines the “territory” in which the agreement applies as “[a]ll countries of the world other than those the subject of undisputed trademark ownership by Vanguard Sailboats, Performance Sailcraft Japan, and Performance Sailcraft Australia.” … At the time the PSE-ILCA agreement was signed, Quarter Moon, Inc. d/b/a Vanguard Sailboats was the undisputed owner of the LASER trademark in the United States. Accordingly, the PSE-ILCA agreement explicitly excludes the United States, and no one can enforce the agreement or its terms there, including Registrant. Furthermore, the PSE-ILCA agreement was never Cancellation No. 92057217 - 22 - Although Respondent also claims to license the LASER service mark to college and high school organizations-the Intercollegiate Sailing Association and the Interscholastic Yacht Racing Association-which oversee LASER sailboat races, Petitioner points out that these license agreements, made by one of Respondent’s affiliated companies, merely provide for sponsoring and furnishing sailboats, not organizing the sailing events.68 And Respondent does not control its allegedly affiliated companies, which in any event have not organized sailing competitions, Petitioner argues.69 • Fraud- Petitioner argues that Respondent committed fraud upon the USPTO when it filed its first Statement of Use, because it had no legal relationship with the third parties that were using the LASER mark to organize sailing events.70 2. Respondent • Standing-Respondent argues that “Petitioner has not affirmatively proved its allegation of standing, primarily because it has not made any evidence of record that can support a finding of standing,”71 Allegations in pleadings are not evidence, broadened by express agreement or implication to include any other trademarks, trademark classes or territories, and ILCA has not entered another agreement regarding Laser trademarks.” Faust decl. ¶ 36, 47 TTABVUE 12-13; see also Petitioner’s brief, 65 TTABVUE 18-22. 68 Petitioner’s brief, 65 TTABVUE 25, 27, 31. 69 Petitioner’s brief, 65 TTABVUE 25, citing Crane dep. 50:19-52:3, 52:4-9; 52:21-54:11, 55:16- 58:5. 70 Petitioner’s brief, 65 TTABVUE 7-8, 28, 36-37, citing Crane decl. ¶¶ 79-83. Petitioner also argues that Respondent lacked a bona fide intent to use the LASER mark for services when it applied to register the mark, but this claim was never pleaded or tried by consent, so we give it no consideration. See Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.3 (TTAB 2009); TBMP § 314 (2018). 71 Respondent’s brief, 69 TTABVUE 23. Cancellation No. 92057217 - 23 - Respondent states, and its Answer generally and specifically denied Petitioner’s allegation of standing, it maintains, notwithstanding any minor typographical error.72 The summary judgment order did not dispose of the standing issue either, Respondent argues, as the order did not grant summary judgment to Petitioner on the issue of its standing (or any other issue): “[T]he Board must determine anew whether Petitioner proved standing with sufficient and competent evidence as part of the record submitted in this trial.”73 Petitioner “has failed to root its allegation of standing to any concrete evidence of record,” Respondent concludes, and thus cannot satisfy the threshold requirement of proving standing.74 • Related Companies and Licensees-Respondent acknowledges that, as a holding company, it merely owns and licenses use of its marks, including the LASER service mark in the ‘524 Registration. It maintains, however, that it has not abandoned the LASER service mark, as it makes use of the mark in commerce through its related companies and licensees.75 The LaserPerformance Companies act as authorized agents of Respondent in policing the use of the ‘524 Registration by third parties licensees such as ILCA,76 the Intercollegiate Sailing Association and the 72 Id. 69 TTABVUE 26. 73 Id. 69 TTABVUE 27. 74 Id. 69 TTABVUE 30. 75 See, e.g., Crane decl. ¶ 55, 56 TTABVUE 20. 76 Respondent’s brief, 69 TTABVUE 37, 41 citing Crane dep., 61 TTABVUE 43, 47, 48. In 1998, ILCA entered into an agreement with Performance Sail Craft Europe Limited (“PSE”), which licensed ILCA to use the LASER mark on “[o]rganisation and promotion of Laser class sailing, race meetings, regattas and social events….” PSE became one of Respondent’s Cancellation No. 92057217 - 24 - high school level Interscholastic Yacht Racing Association.77 For these reasons, Respondent concludes, it has not abandoned the LASER service mark by nonuse or naked licensing, and could in good faith submit specimens of use from sailing events organized by or under the auspices of its licensees. We have considered all of the evidence of record and all of the parties’ arguments, including evidence and arguments not specifically discussed in this opinion. The evidence as a whole leads us to find that Petitioner has not carried its burden of proving its standing. III. Standing The starting point for standing before an administrative agency is not Article III; it is the statute that confers standing before that agency. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). In this case, Section 14 of the Lanham Act sets forth the applicable requirements: A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged … by the registration of a mark on the principal register…. 15 U.S.C. § 1064. “[S]tanding is a threshold inquiry directed solely to establishing interest of the party.” Lipton Inds., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 188 affiliated companies, renamed LaserPerformance (Europe) Limited. And the territory covered by the license agreement expanded to encompass the United States, it contends, when Vanguard Sailboats (the d/b/a for Quarter Moon, Inc.) became another one of Respondent’s affiliated companies. PSE/ILCA Agreement, Crane decl. ex. J, 55 TTABVUE 107-112, Recital A, Schedules 1, 4; Crane decl. ¶¶ 37-44, 55 TTABVUE 14-17 (confidential); Respondent’s brief 69 TTABVUE 43-45. 77 Respondent’s brief 69 TTABVUE 47-48; Crane decl. ¶¶ 67, 73, exs. Z, FF, 55 TTABVUE 23-26, 128-146 (confidential). Cancellation No. 92057217 - 25 - (CCPA 1982). This threshold issue must be affirmatively proven by the plaintiff in every inter partes case before it can be heard on its substantive claims. Id. at 188-89; Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) cert. denied, 135 S. Ct. 1401 (2015); Exec. Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1179 (TTAB 2017). To establish standing, a plaintiff must show first, that it has a real interest, that is, a direct and legitimate personal stake in the outcome of the proceeding, and second, that it has a reasonable basis in fact for its belief of damage. Empresa Cubana v. Gen. Cigar, 111 USPQ2d at 1062 (quoting ShutEmDown Sports, Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012)), cert. denied, 135 S. Ct. 1401 (2015); TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1103 (TTAB 2019). “[T]he ‘belief of damage’ required by … the Lanham Act is more than a subjective belief. … The belief must have a reasonable basis in fact.” Ritchie v. Simpson, 50 USPQ2d at 1027 (internal punctuation omitted), quoted in Coach Services Inc. v. Triumph Learning LLC, 101 USPQ2d 1713, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012). “The plaintiff’s belief that it will be damaged ‘must be objectively reasonable’ and if it is not, the case will be dismissed for lack of standing.” 3 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 20:46 (5th ed. Nov. 2018 update). In this case, Petitioner fails to adduce evidence sufficient to cross this threshold. Its pleadings alone, in which it vaguely asserts an interest in the integrity of sailing events conducted under the LASER mark, do not prove its standing. See Lipton v. Ralston Purina, 213 USPQ at 188-89 (“A petitioner’s allegations alone do not Cancellation No. 92057217 - 26 - establish standing. … The facts regarding standing, we hold, are part of a petitioner’s case and must be affirmatively proved”) quoted in WeaponX Performance v. Weapon X Motorsports, 126 USPQ2d at 1039. Respondent’s Answer generally denies the allegations in the Petition, stating “Registrant denies each and every allegation contained in the Petition to Cancel unless otherwise admitted or responded to ….”78 See Trademark Rule 2.114(b)(2), 37 C.F.R. § 2.114(b)(2) (“Denials may take any of the forms specified in Rule 8(b) of the Federal Rules of Civil Procedure.”) and Fed. R. Civ. P. 8(b)(3) (“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.”); TBMP § 311.02(a) (same). Despite the typographical error in paragraph three of Respondent’s Answer, it obviously denies the corresponding allegation of standing in paragraph three of the Petition. See Fed R. Civ. P. 8(e) (“Pleadings must be construed so as to do justice.”); see also Cadbury UK Ltd. v. Meenaxi Enter., Inc., 115 USPQ2d 1404, 1407 (TTAB 2015) (Board expects parties to use common sense and reason when faced with a typographical error). Hence, the pleadings do not prove standing. Nor is standing established by the Board’s prior order denying the parties’ cross- motions for summary judgment. As the Board noted in that order, “Petitioner submits no declaration in support of its motion.”79 The Board considered Petitioner’s attached copy of its civil complaint and letters purporting to terminate licenses “sufficient evidence of Petitioner’s allegation that he is engaged in the design of boats for use 78 Answer, 6 TTABVUE 2 79 Order, 28 TTABVUE 7. Cancellation No. 92057217 - 27 - in international sailing competitions.”80 There was no declaration averring that the allegations were true, or for that matter even showing how the registration of Respondent’s ‘524 LASER service mark would have any effect, much less a deleterious effect, on Petitioner’s commercial interest. Given that this was a denial, not a grant, of summary judgment, the Order did not find that Petitioner had standing. And in any event, the “law of the case” doctrine does not apply to a denial of summary judgment. Aycock Engineering v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1305 (Fed. Cir. 2009). The issues raised in the motions for summary judgment must now be determined based on the trial evidence, briefing, and oral argument. Id The Board order expressly advised the parties that “evidence to be considered at final hearing must be properly introduced in evidence during the appropriate trial period.”81 [S]tanding is an essential element of petitioner’s case which, if it is not proved at trial, defeats petitioner’s claim.” Nobelle.Com, LLC v. Qwest Communications Int’l, Inc., 66 USPQ2d 1300, 1303 (TTAB 2003); see also No Nonsense Fashions, Inc. v. Consolidated Foods Corp., 226 USPQ 502, 504 (TTAB 1985). 80 Id. (emphasis added). 81 Order, 28 TTABVUE 12 n. 3. The Board order also directed Petitioner to provide further information on what bearing, if any, the civil action might have on this proceeding: “Petitioner is ordered to notify the Board in writing within TEN DAYS of the mailing date of this order whether Respondent remains a party to the civil action, Bruce Kirby, Inc. et al v. Laserperformance (Europe) Limited et al., Case 3:13-cv-00297-RNC, pending in the United States District Court for the District of Connecticut, and whether the pleadings in the civil action have been amended to add any claims regarding the LASER mark.” Id. 28 TTABVUE 12 n. 3. Petitioner answered both inquiries in the negative. See Petitioner’s statement of compliance with Board order, 31 TTABVUE 2. Cancellation No. 92057217 - 28 - Petitioner did not provide this proof at trial. There was no testimony from Bruce Kirby, from any officer, director, or employee of Petitioner or from any witness with knowledge. Even though LASER class sailing competitions have been held since the early 1970’s, there was no evidence that Petitioner has organized sailing competitions, or that it ever attempted or intended to do so. There was no evidence that it filed an application to register a LASER-formative mark for organizing sailing competitions that was barred by Respondent’s registration (as in the ‘170 Registration cancellation proceeding). There was no evidence that Respondent’s registration of the ‘524 service mark had an adverse effect on the quality or integrity of sailing competitions supervised by ILCA; and there was no evidence that cancellation of the ‘524 Registration would have any effect. More to the point, Petitioner failed to provide evidence of a real interest in the outcome of the proceeding, namely a commercial interest or a direct and legitimate personal stake. Further, Petitioner failed to provide any evidence that the ‘524 Registration has caused or will cause any damage to Petitioner, or that its cancellation would avert that damage. If anything, the evidence of record indicates that Bruce Kirby allowed his colleague Ian Bruce and his company to own the LASER goods mark, and watched it pass through eleven assignments, ultimately winding up, unimpeded, in Respondent’s possession. Petitioner filed an intent-to-use application to register LASER for “boats,” registration of which was barred by Respondent’s ‘170 Registration, but abandoned its intent-to-use application and withdrew its cancellation petition against the ‘170 Registration unilaterally, so that its petition Cancellation No. 92057217 - 29 - was dismissed with prejudice. Since Respondent’s ‘170 Registration for LASER covering sailboats and their parts is now unassailable by Petitioner, and since those sailboats bearing Respondent’s LASER mark will participate in every LASER sailing competition and regatta overseen by ILCA, it is hard to discern how Petitioner is in any way incrementally damaged by Respondent’s ‘524 LASER Registration for services. Petitioner may indeed own other marks relating to sailboats, but it fails to show how its ownership interest is damaged by the ‘524 Registration. In sum, during the trial period, Petitioner was required to adduce objective evidence, not subjective speculation, proving a direct and personal stake in the outcome of the proceeding, and a reasonable basis in fact for its belief of damage. Ritchie v. Simpson, 50 USPQ2d at 1027. It failed to do so. See Lipton v. Ralston Purina, 213 USPQ at 189 (“No evidence of such facts was offered by appellee during the trial period.”). Consequently, “although the threshold for determining standing generally is quite low, we find that petitioner has failed to clear it in this case.” Nobelle.Com v. Qwest, 66 USPQ2d at 1304. See also Compuclean Marketing and Design v. Berkshire Prods. Inc., 1 USPQ2d 1323, 1325 (TTAB 1986) (“[S]ince the record falls below threshold levels of proof on the standing issue under any viable criterion of ‘real interest’, we are required to reach such a disposition.”). Petitioner has not met its burden of proving that it “is or will be damaged … by the registration of [Respondent’s] mark….” 15 U.S.C. § 1064. IV. Conclusion For the foregoing reasons, we conclude that Petitioner has not carried its burden of proving standing. Cancellation No. 92057217 - 30 - Decision: The petition to cancel Respondent’s Registration No. 3459524 for LASER is denied.