Capital City, LLCv.Select Brands LLC

Trademark Trial and Appeal Board

Aug 26, 2013

No. 92054587 (T.T.A.B. Aug. 26, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: August 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Capital City, LLC
v.
Select Brands LLC
_____

Cancellation No. 92054587
against Registration No. 2247855
_____

Asia Johnson for Capital City, LLC.

Julianne M. Hartzell of Marshall, Gerstein & Borun LLP for Select Brands LLC.
_____

Before Quinn, Wellington and Shaw,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Capital City, LLC (hereinafter “petitioner”) filed a petition to cancel the regis-
tration of Select Brands LLC (hereinafter “respondent”) for the mark MUMBO in
typed character format for “barbeque sauce” in International Class 36.1 As ground
for cancellation, petitioner asserts that “the term mumbo has been and continues to
be a generic term for a well-known and widely available condiment, not a proprie-

1 Registration No. 2247855 issued on May 25, 1999 and has been renewed.
Cancellation No. 92054587

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tary barbeque sauce.”2 In particular, petitioner alleges that “mumbo” is a term that
“has been used throughout the Washington, D.C. metropolitan area since at least as
early as the 1960’s and such use continues today by local area Washingtonians.”
With regard to its standing, petitioner asserts that it is “a new business entity en-
gaged in the sale and promotion of a condiment, well-known and widely available in
the Washington, DC area for decades” and that respondent has sent letters to peti-
tioner “demanding [petitioner’s] business to cease and desist its sale and promotion
of mumbo sauce.”
With its complaint, petitioner attached several exhibits containing materials it
alleges are evidence of generic usage of the term “mumbo.” However, except for
certain types of copies of pleaded registrations, exhibits attached to pleadings are
not considered of record and may not be relied upon by parties on final decision un-
less otherwise properly introduced during trial. Trademark Rule 2.122(d); see also
TBMP § 317 (3d ed. rev.2 2013) (Exhibits to Pleadings).
Respondent, in its answer to the amended pleading, denied the salient allega-
tions in the complaint.
The parties have filed trial briefs.
Evidentiary Submissions
During its initial trial period, petitioner filed the following:

2 Petitioner also alleged a ground for cancellation asserting that respondent “has aban-
doned its mark by failing to police its use.” However, petitioner did not pursue this allega-
tion at trial and acknowledged in its trial brief that the “Issue Presented” in this proceeding
is “[w]hether the Board should cancel [the registration] on the grounds that word is gener-
ic.” Brief at (unnumbered) p. 6. Accordingly, any possible abandonment ground based on
an alleged failure to police the use of the mark is considered to have been waived and has
been given no further consideration.
Cancellation No. 92054587

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• 1st Notice of Reliance on printouts from various third-party websites with
a stated relevance of showing “generic use of the term mumbo”;

• 2nd Notice of Reliance on respondent’s responses to petitioner’s Interroga-
tory Nos. 8 and 9, with copies of correspondence involving respondent’s
requests for third parties to cease and desist from using the term “mum-
bo” or the phrase “mumbo sauce” and replies thereto;

• 3rd Notice of Reliance on copies of correspondence labeled “confidential”
between respondent’s counsel and third parties involving use of the term
“mumbo”;3

• 7th Notice of Reliance4 on copies of printouts from various websites: The
Social Skinny, Social Media in Business, Twitter, Facebook, Wikipedia,
Yelp, GreaterGreaterWashington, Washington City Paper, Georgetown
University and U.S. Census Bureau. The subject matter of the materials
involves demographic information, statistics involving the general use of
the websites, etc.; the notice of reliance does not contain a statement re-
garding the relevance or reasons for reliance upon these materials.

Respondent filed the following during its trial period:
• Testimonial deposition of Ms. Allison Collins, respondent’s manager and
owner, with attached exhibits;

• 1st Notice of Reliance on printouts from various dictionaries with the
stated relevance of showing an absence of a defined meaning for the term
“mumbo” as a generic reference to a type of sauce;

• 2nd Notice of Reliance on petitioner’s responses to Admission Requests
Nos. 2, 9, and 11-4; and

• 3rd Notice of Reliance on excerpts taken from the Rule 30(b)(6) deposition
of petitioner (Ms. Arsha Jones testifying on behalf of petitioner).

3 The documents were filed without a notice of reliance cover page. However, respondent
acknowledges in its trial brief that these are “portions of [respondent’s] document produc-
tion.”
4 Petitioner filed a “Seventh” notice of reliance without any intervening notices of reliance
filed since the “Third” notice of reliance. In its motion to strike (filed December 28, 2012),
respondent noted that it had not received any notices of reliance numbered “4, 5, or 6” filed
by petitioner. In its response to the motion to strike, petitioner acknowledged that no such
notices of reliance numbered “4, 5, or 6” were filed.
Cancellation No. 92054587

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In its rebuttal period, petitioner filed nine additional notices of reliance,
namely, Notices of Reliance 8-16, on the following:
• Copies of printouts from third-party restaurant websites and a travel guide
with the stated relevance of showing “generic use of the term MUMBO since
2007” (Notice of Reliance 8);
• Copies of excerpts from books and magazines with the stated relevance of
showing “generic use of the term MUMBO within the last 23 years” (Notice of
Reliance 9);
• Printouts from the internet websites Wikipedia and Urban Dictionary, as
well as copies of pages from a book titled “Hip Hoptionary,” with the stated
relevance of showing “generic use of the term MUMBO in a dictionary” (No-
tice of Reliance 10);
• Printouts from third-party websites, including Twitter, Washington Post, Fa-
cebook, food-related websites, etc., with stated relevance of showing “a rele-
vant generic use of the term MUMBO…[or] in 2007 or earlier…[or] in the
Washington, DC area [or] in the last 23 years” (Notices of Reliance 11-15);
and
• Petitioner’s responses to respondent’s Admission Requests Nos. 1-27 (Notice
of Reliance 16).

Respondent’s Motions to Strike Petitioner’s Submissions
Respondent has filed two motions to strike the materials submitted by petition-
er during trial. The Board, in two separate orders, informed the parties that de-
termination of the motions would be deferred until final hearing. We now address
these motions.
Motion to Strike Materials Submitted with Petitioner’s
Notices of Reliance Nos. 1 and 7

On December 28, 2012, two weeks after petitioner filed its last notice of reliance
in its initial trial period, respondent moved to strike the documents submitted via
petitioner’s Notices of Reliance Nos. 1 and 7. As to Notice of Reliance No. 1, re-
spondent argues the documents submitted therewith were “responsive to [respond-
ent’s] discovery requests but were not produced” and thus petitioner should not be
Cancellation No. 92054587

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allowed to introduce these documents at trial. With respect to the materials sub-
mitted with petitioner’s Notice of Reliance No. 7, respondent asserts that petitioner
failed “to indicate the relevance of any of the documents,” citing to Trademark Rule
2.122(e).
Petitioner filed its opposition to this motion, arguing that any objection by re-
spondent to the introduction of documents on the basis that they were not previous-
ly produced in response to discovery requests is unavailing. Specifically, petitioner
notes that it raised several objections to respondent’s discovery requests and re-
spondent did not move to compel such materials. As to the respondent’s objection
based on petitioner’s failure to state the relevance of the documents with petition-
er’s Notice of Reliance No. 7, petitioner asserts that “[t]he titles of the articles them-
selves make clear the relevance of the information in those articles to the issues
presented here.” Petitioner, however, does not articulate the relevance of the docu-
ments in its opposition to the motion.
As a sanction for improper discovery practice, a party that responds to a request
for discovery by indicating that it does not have the documents or information, or
merely fails to provide the discovery sought, may be barred by its own action from
later introducing the information or documents sought as part of its evidence on the
case. See TBMP § 527.01 (Estoppel Sanction); see also, TBMP § 411 (Remedy for
Failure to Provide Disclosures or Discovery). However, several key procedural facts
in this proceeding show that such sanctions are not warranted. In particular, we
note that petitioner did raise various objections to respondent’s aforementioned dis-
Cancellation No. 92054587

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covery requests or it did not respond at all. Respondent, faced with these objec-
tions, did not move to compel any of the information or documents requested nor did
respondent move to compel initial or pretrial disclosures. Linville v. Rivard, 41
USPQ2d 1731, 1733 (TTAB 1996) (no estoppel; party should have filed motion to
compel where objections that discovery requests are, for example, ambiguous or
burdensome, or are otherwise not of a nature which would lead propounding party
to believe that the requested information does not exist), aff'd, 133 F.3d 1446, 45
USPQ2d 1374 (Fed. Cir. 1998); see also, British Seagull Ltd. v. Brunswick Corp., 28
USPQ2d 1197, 1201 (TTAB 1993), aff'd, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir.
1994). Lastly, many of the documents introduced under Notice of Reliance No. 1 are
not of the type whereby we can conclude they were solely within the possession of
petitioner prior to trial; rather, many of the documents appear to be publicly availa-
ble on the internet and were acquired by petitioner in anticipation of trial. See
Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1071-72 (TTAB
2011). Under these circumstances, we do not find sanctions are warranted.
Accordingly, respondent’s motion to strike petitioner’s Notice of Reliance No. 1
is denied.
With regard to petitioner’s Notice of Reliance No. 7, Trademark Rule 2.122(e)
provides that a notice of reliance “shall ... indicate generally the relevance of the
material being offered.” (Emphasis added). There is no dispute that petitioner did
not indicate in the notice of reliance what it believed is the relevance of the submit-
ted materials or how it intends to rely on these materials. Petitioner had the oppor-
Cancellation No. 92054587

7

tunity to correct this procedural error when it responded to the motion to strike but
it chose not to. Instead, petitioner argued that “the titles of the articles themselves
make clear the relevance of the information in those articles to the issues presented
here.” Such a response is ill-advised because it contravenes the purpose of the rule
requiring advance notice to the party and, in this case, we disagree with petitioner’s
characterization of the materials’ relevance based on the titles of the articles. It is
not obvious to the Board how the subject matter of these materials have a bearing
in this matter and, to wit, petitioner does not reference any of these materials in its
trial brief.
Accordingly, respondent’s motion to strike petitioner’s Notice of Reliance No. 7
is granted.5
Motion to Strike Materials Submitted with Petitioner’s
Notices of Reliance Nos. 8-16

On May 24, 2013, respondent filed a motion to strike all of the notices of reli-
ance filed by petitioner during its rebuttal trial period, namely, petitioner’s Notices
of Reliance Nos. 8-16. Respondent argues that these submissions constitute im-
proper rebuttal evidence because they are “merely cumulative intended to support
petitioner’s case-in-chief.” Motion at p. 2. In addition, and specifically with respect
to respondent’s own responses to discovery submitted under Notice of Reliance No.
16, respondent argues this is improper because petitioner does not explain how or
why these discovery responses should be considered.

5 We hasten to add that even if we were to consider these materials this would not alter the
outcome of this proceeding.
Cancellation No. 92054587

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Petitioner did not file a response to respondent’s motion or otherwise address
the objections in its trial brief.
The plaintiff's rebuttal testimony period is intended solely for the introduction
of evidence or testimony that denies, explains, or discredits evidence adduced by the
defendant. It is improper for a plaintiff to introduce, for the first time during its re-
buttal testimony period, evidence that relates to facts that might appropriately have
been introduced during the party's case-in-chief. See Carefirst of Maryland Inc. v.
FirstHealth of the Carolina Inc., 77 USPQ2d 1492, 1498 (TTAB 2005); and Ameri-
can Meat Institute v. Horace W. Longacre, Inc., 211 USPQ 712, 719 (TTAB 1981)
(“[i]t is the general rule that a party plaintiff may in his case on rebuttal introduce
facts and witnesses appropriate to deny, explain, or otherwise discredit the facts
and witnesses adduced by the opponent, but not any facts or witnesses which might
appropriately have been introduced during its case-in-chief to sustain its pleading”
and thus “a plaintiff may not utilize its rebuttal period to prove its case-in-chief or
to shore up its principal case in light of a defendant's evidence”). See also, General
Electric Company v. Graham Magnetics Incorporated, 197 U.S.P.Q. 690, 692 n.5
(TTAB 1977); and Western Leather Goods Co. v. Blue Bell, Inc., 178 USPQ 382
(TTAB 1973).
Here, we find the materials submitted by petitioner under its Notices of Reli-
ance Nos. 8-15 constitute improper rebuttal testimony. Petitioner has not explained
how these materials are anything more than just a continuation of its case-in-chief
Cancellation No. 92054587

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or that they somehow discredit the evidence and testimony submitted by respond-
ent.
In addition, petitioner’s responses to respondent’s admission requests, submit-
ted under Notice of Reliance No. 16, were not properly introduced into evidence be-
cause petitioner has failed to show how such responses “should in fairness be con-
sidered so as to make not misleading what was offered” by respondent, as required
by Trademark Rule 2.120(j)(5).
Accordingly, respondent’s motion to strike petitioner’s Notices of Reliance Nos.
8-16 is granted and the materials submitted therewith are given no further consid-
eration.
The Record
By operation of the rules, the record includes the pleadings and the file of the
subject registration.
In addition, based on the aforementioned evidentiary submissions and dispo-
sition of respondent’s evidentiary objections, the record also includes petitioner’s
Notices of Reliance Nos. 1-3, the testimony of Ms. Collins with exhibits, and re-
spondent’s Notices of Reliance Nos. 1-3.
Standing
The record establishes that petitioner is a manufacturer of sauces and has used
the term “mumbo sauce” to describe a type of sauce. Respondent acknowledges that
petitioner has “adopted” use of the term “mumbo” in connection with its own prod-
uct. Brief, p. 9. Respondent further acknowledges that it sent a cease and desist
Cancellation No. 92054587

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letter to petitioner requesting that petitioner “cease infringing use of the mark.”
These facts demonstrate that petitioner is not a “mere intermeddler” and that it has
standing to petition to cancel respondent’s mark. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); see also Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Genericness
Section 14 of the Trademark Act provides:
A petition to cancel a registration of a mark... may... be filed...
(3) At any time if the registered mark becomes the generic name for the goods or
services, or a portion thereof, for which it is registered. ... If the registered mark
becomes the generic name for less than all of the goods or services for which it is
registered, a petition to cancel the registration for only those goods or services
may be filed. A registered mark shall not be deemed to be the generic name of
goods or services solely because such mark is also used as a name of or to identi-
fy a unique product or service. The primary significance of the registered mark
to the relevant public rather than purchaser motivation shall be the test for de-
termining whether the registered mark has become the generic name of goods
or services on or in connection with which it has been used. 15 U.S.C. § 1064(3).

A mark is a generic name if it refers to the class or category of goods and/or ser-
vices on or in connection with which it is used. In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H. Marvin Ginn
Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528
(Fed. Cir. 1986) (“Marvin Ginn”). The test for determining whether a mark is ge-
neric is its primary significance to the relevant public. Trademark Act § 14(3); In re
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic
Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991); and Marvin
Ginn, supra. Making this determination “involves a two-step inquiry: First, what
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is the genus of goods or services at issue? Second, is the term sought to be regis-
tered ... understood by the relevant public primarily to refer to that genus of goods
or services?” Marvin Ginn, 228 USPQ at 530. Our primary reviewing court has
stated that a party charging genericness must prove its claim by a preponderance of
the evidence. Magic Wand, 19 USPQ2d at 1554; Stocker v. General Conference
Corp. of Seventh-day Adventists, 39 USPQ2d 1385, 1392 (TTAB 1996).
There is no real dispute that the genus of goods is that identified in the applica-
tion, namely, barbeque sauce, and the relevant public for purposes of our generic-
ness analysis consists of consumers and potential consumers of barbeque sauce.
We now consider whether petitioner has met its burden and shown by a pre-
ponderance of the evidence that consumers, or potential consumers, of barbeque
sauce regard the term “mumbo” as primarily a reference to a type of barbeque
sauce. Evidence of this relevant public's understanding of the term may be ob-
tained from any competent source, including testimony, surveys, dictionaries, trade
journals, newspapers, and other publications. In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985). Furthermore, “evidence of
competitors' use of particular words as the name of their goods or services is, of
course, persuasive evidence that those words would be perceived by purchasers as a
generic designation for the goods and services.” Continental Airlines, Inc. v. United
Air Lines, Inc., 53 USPQ2d 1385, 1395 (TTAB 1999).
The only actual evidence of record submitted by petitioner showing third-party
use of the term “mumbo” as a possible generic reference to a sauce are those mate-
Cancellation No. 92054587

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rials filed under Petitioner’s Notice of Reliance No. 1. These materials consist of in-
ternet printouts from six different retail websites, one Facebook page website, and a
website identified as “The Sauces.” These materials reflect use of the term “Mum-
bo” or “Mumbo Sauce” in connection with what the Board can decipher are three dif-
ferent branded sauces – a “Henry’s Mumbo Sauce”, a “Mumbo Sauce” offered by
Chuck’s Wagon, and a “Steve’s Own Special Sauce (S.O.S.S.) Mumbo Sauce.”6 On
one website called “Green Mountain Grills,” the following description is provided:
There is a very popular sauce in the DC area which they call Mumbo Sauce
(some call it mambo). Local Lore says the Chinese restaurants originated this
for use on wings, ribs, etc., but more accurately, the African-American restau-
rants in that area probably first developed it.

In addition, The Sauces website contains descriptions of four different “Mumbo
sauces” based on a stated “vision of Mumbo Sauces is to blend the aromatic flavors
of California’s ethnic cultures into a distinctive International taste.”
Although the aforementioned evidence indicates some generic use of the term
“Mumbo” in connection with sauces, this evidence is of limited probative value for
several reasons. First, the number of uses by third parties may be considered min-
imal inasmuch as the materials are drawn from seven different websites and one
Facebook page. Second, there is no evidence showing the extent of exposure to the-
se uses, i.e., there is no indication whether these are relatively obscure websites nor
is there any way to determine the number of bottles, if any, of “Mumbo” sauce that
have been sold by third parties. That is, there is no testimony or corroborating evi-

6 Photographs of the latter-identified sauce reveal jars with the same label are advertised in
several retail websites and may be referred alternatively as “Steve’s Mumbo Sauce” or “Ste-
ve Mumbo Sauce” or “Mumbo Sauce.”
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dence showing that the aforementioned third-party use of the term “Mumbo” is so
extensive such that we can conclude that the relevant consuming public recognizes
“Mumbo” primarily as a generic reference for a type of barbeque sauce.
Through the testimony of Ms. Collins and other evidence, respondent has shown
that it has engaged in serious efforts to police what it considers improper use of its
MUMBO mark, including successful efforts with respect to some of above-referenced
third-party uses of the term “Mumbo.” For example, Ms. Collins testified that re-
spondent first learned of the Green Mountain Grills’ use of the term “Mumbo” on
barbeque sauces during the course of this proceeding and, shortly thereafter, con-
tacted the owners of the website with a request to “cease and desist” from its use of
the term “Mumbo” on its website. According to Ms. Collins and based on corre-
spondence between respondent and Green Mountain Grills that has been attached
as exhibits to the Collins declaration, the Green Mountain Grills website no longer
contains advertisements for a “Mumbo” sauce.
We have carefully reviewed all of the evidence of record, as well as all of the
parties' arguments, and we find that petitioner has not met its burden by proving
that the consuming public primarily views MUMBO as a generic term for barbeque
sauce.
Because petitioner has failed to meet its burden in this cancellation proceeding,
the subject registration remains prima facie evidence of the validity of the mark and
respondent’s exclusive right to use the mark in commerce. Section 7(b) of the
Trademark Act, 15 U.S.C. § 1057(b). Nevertheless, we would be remiss if did not
Cancellation No. 92054587

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offer a brief history regarding respondent’s acquisition of rights in the mark MUM-
BO. Through the testimony of Ms. Collins, respondent has demonstrated that it is
the successor-in-interest to all rights in the mark MUMBO first acquired by Mr. Ar-
gia B. Collins in the early 1950’s. Mr. Collins was the father of Ms. Collins and was
also a notable African-American entrepreneur who owned several restaurants in
Chicago’s South Side beginning in 1950. Mr. Collins coined the term MUMBO as a
trademark for use on bottles of his barbeque sauce that initially were offered for re-
tail sale in his restaurants and were later sold through independent stores and oth-
er restaurants, and then to larger retail food chains. On September 23, 1958, a reg-
istration for the mark MUMBO for “barbeque sauce” was issued to Mr. Collins (the
registration was not renewed and was cancelled as of September 23, 1978).7 Mr.
Collins and his MUMBO-branded barbeque sauce acquired some notoriety in the
Chicago area and his “Mumbo barbeque sauce” enterprise was identified in a 1968
Time magazine business piece as one of the successful results of a program initiated
by Martin Luther King, Jr.8 In the “early [19]90’s,” Mr. Collins became ill and
“transferred the interest in the [MUMBO] mark and all other assets” to respondent.
Collins 22:8-11. The subject registration of this cancellation proceeding was issued
to respondent in 1999. Based on the testimony of Ms. Collins and supporting exhib-
its, respondent has demonstrated that it has continuously used the MUMBO mark

7 Registration No. 667502 issued from Application Serial No. 72-033058 that was filed on
July 2, 1957.
8 The program, called “Operation Breadbasket,” is described by Ms. Collins as the “brain-
child” of Martin Luther King, Jr. and essentially was an “organization that could advocate
on behalf of black businessmen.” Collins dep. 30:1-5. Mr. Collins was “one of the founding
members” of Operation Breadbasket. Id. at 19-20.
Cancellation No. 92054587

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nationally in advertisements and retail sales of its barbeque sauce since it acquired
rights in said mark.
Decision: The petition to cancel on the ground of genericness is dismissed.