Carole A. Faulkner and Christopher A. Faulknerv.Gary Domel

Trademark Trial and Appeal Board

May 19, 2015

No. 91210234 (T.T.A.B. May. 19, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: May 19, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Carole A. Faulkner and Christopher A. Faulkner
v.
Gary Domel
_____

Opposition No. 91210234
to application Serial No. 85703135
_____

Andy Nikolopoulos of David Goodman & Madole PC for Carole A. Faulkner
and Christopher A. Faulkner.

Robert Voigt of Winstead PC for Gary Domel.
______

Before Kuhlke, Cataldo and Adlin,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Gary Domel (“Applicant”) filed an application to register on the Principal
Register the mark CI HOST, in standard characters with a disclaimer of
“HOST” for
designing and implementing web sites for others on a global
computer information network; hosting the web sites of others
on a computer server for a global computer network; graphic art
design; computer software design for others; and computer
consultation

Opposition No. 91210234

2
in Class 42.1
Carole A. Faulkner and Christopher A. Faulkner (collectively, “Opposers”)
filed a notice of opposition to the registration of Applicant’s mark on the
grounds of likelihood of confusion pursuant to Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d), and fraud, based on the allegation that Applicant
knowingly made false statements of material fact, upon which the Examining
Attorney relied, in connection with the involved application. In addition, on
the ESTTA cover sheet comprising part of their notice of opposition, Opposers
list as a third ground for opposition “Same as Opposers’, Carole A. Faulkner,
individually and d/b/a C I Host, and Christopher Faulkner, individually and
d/b/a C I Host, business entity name and common law trademark.”2 We
interpret this as an amplification of their assertion of likelihood of confusion
as a ground for opposition.
Applicant, in his Answer, denied the salient allegations in the Notice of
Opposition. In addition, Applicant asserted certain affirmative defenses, but
did not pursue them at trial. Accordingly, they are deemed waived. Miller v.
Miller, 105 USPQ2d 1615, 1616 n.3 (TTAB 2013); Baroness Small Estates
Inc. v. American Wine Trade Inc., 104 USPQ2d 1224, 1225 n.2 (TTAB 2012).

1 Serial No. 85703135 was filed on August 14, 2012, based upon Section 1(a) of the
Trademark Act, 15 U.S.C. §1051(a), asserting April 1, 1995 as the date of first use of
the mark anywhere and in commerce in connection with the services.

2 1 TTABVUE 2. Record citations are to TTABVUE, the Trademark Trial and Appeal
Board’s publically available docket history system. See Turdin v. Trilobite, Ltd., 109
USPQ2d 1473, 1476 n.6 (TTAB 2014).

Opposition No. 91210234

3
Evidentiary Issue
The parties submitted numerous exhibits with their notice of opposition
and answer. However, with one exception not applicable here, exhibits to
pleadings are not evidence on behalf of the party to whose pleading they are
attached unless they are thereafter, during the time for taking testimony,
properly identified and introduced in evidence. Trademark Rule 2.122(c), 37
CFR §2.122(c). See, e.g., Republic Steel Co. v. M.P.H. Manufacturing Corp., 312
F.2d 940, 136 USPQ 447, 448 (CCPA 1963); Baseball America Inc. v. Powerplay
Sports Ltd., 71 USPQ2d 1844, 1846 n.6 (TTAB 2004). Accordingly, the exhibits
submitted with the pleadings will be given no consideration.
The Record
In view of the foregoing, the record includes the pleadings and, by operation
of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Applicant’s application file.
In addition, Opposers introduced the following testimony and evidence:
by notice of reliance pursuant to Rule 2.122(e),
TESS printout showing Opposers’ now Cancelled Registration
No. 2893070 for the C I Host mark;
TESS printout showing Opposers’ current application Serial No.
85780225 for the C I Host mark;
GoDaddy.com printout showing opposer’s ownership of the
domain name “cihost.com”;
Opposers’ C I Host Press Releases and Articles;
Opposers’ Texas Franchise Tax Public Information Reports, and
Assumed Name Certificate;
Opposers’ C I Host Copyright Information and Registrar
Accreditations Agreement with ICANN;
Texas Secretary of State formation documents for C I Host, Inc.;
Texas Secretary of State formation documents for C I Host
Corp.; and
Opposition No. 91210234

4
California Secretary of State formation documents for C I Host
Corp.;3

by notice of reliance pursuant to Rule 2.120 (j),
Applicant’s Responses to Opposers’ First Set of Interrogatories;4

by notice of reliance pursuant to Rule 2.120 (j),
Transcript of discovery deposition of Applicant Gary Domel;5

by notice of reliance pursuant to FRE 201(b),
“Request for Judicial Notice” of Ch. 9 of the Texas Business &
Commerce Code;6 and

Transcript of trial testimony of Opposer Carole A. Faulkner.7

Applicant did not submit any testimony or evidence. Only Opposers filed a
trial brief.
Issues in this Proceeding
As discussed above, Opposers, in their notice of opposition, plead likelihood
of confusion and fraud as grounds for opposition. In their trial brief, Opposers
further advance arguments that Applicant abandoned the mark in the
involved application. However, abandonment was not pleaded by Opposers,
nor is there any indication in the record that the issue of abandonment was
tried by implied consent. In addition, we would be remiss not to observe that
the record of this case clearly indicates there exists a history between the

3 11 TTABVUE.

4 9 TTABVUE.

5 10 TTABVUE.

6 12 TTABVUE.

7 13 TTABVUE.
Opposition No. 91210234

5
parties. Indeed, Applicant’s assertion of ownership rights in the mark CI
HOST appears to stem from the terms of an agreement between the parties
underlying his foreclosure on a loan to Opposers or entities controlled by
Opposers.8 Again, however, the issue of ownership of the CI HOST mark was
not pleaded by Opposers and there is no clear indication that the issue of
ownership was tried by implied consent. We cannot infer from Applicant’s
silence that he consents to trial of unpleaded issues. See. e.g., Hornby v. TJX
Companies Inc., 87 USPQ2d 1411, 1415 (TTAB 2008) (unpleaded claims were
not tried by express or implied consent of the parties such that pleadings
could be treated as amended pursuant to Fed. R. Civ. P. 15(b)). Finally, and
significantly, the types of documents upon which we might decide the issue of
ownership were not properly made of record in this proceeding.
Accordingly, Opposers’ arguments directed toward abandonment and
ownership of the CI HOST mark will be given no consideration except to the
extent that they serve to amplify arguments based on the pleaded grounds of
likelihood of confusion and fraud.
Standing
Standing is a threshold issue that must be proved in every inter partes case.
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185,
189 (CCPA 1982). In order to meet the standing requirement, a plaintiff need
only show that it has a real interest, i.e., a personal stake, in the outcome of
the proceeding. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023,

8 4 TTABVUE 3-5.
Opposition No. 91210234

6
1026 (Fed. Cir. 1999); and Jewelers Vigilance Committee, Inc. v. Ullenberg
Corp., 823 F.2d 490, 2 USPQ2d 2012, 2023-24 (Fed. Cir. 1987).
Opposers have proven they have made use of the term CI HOST as a mark
to identify various Internet hosting and related computer services. Opposers’
reasonable belief that Applicant’s application for the identical mark for
various computer and Internet related services is likely to cause confusion,
mistake, or deception within the meaning of Section 2(d) of the Trademark
Act is sufficient to show that Opposers have a real interest in this proceeding
and, therefore, have standing. Giersch v. Scripps Networks, Inc., 90 USPQ2d
1020, 1022 (TTAB 2009) (“Petitioner has established his common-law rights
in the mark DESIGNED2SELL, and has thereby established his standing to
bring this proceeding.”); Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90
USPQ2d 1112, 1118 (TTAB 2009) (testimony that opposer uses its mark “is
sufficient to support opposer’s allegations of a reasonable belief that it would
be damaged …” where opposer alleged likelihood of confusion).
Priority
In his involved application, Applicant asserts April 1, 1995 as the date of
first use of the CI HOST mark anywhere and in commerce. However,
Applicant has not introduced any testimony or evidence to support his
assertion of the first use dates in his application. In his discovery responses,
Applicant appears to assert that he acquired rights in the CI HOST mark
from predecessors-in-interest, namely, Opposers and/or entities controlled by
Opposition No. 91210234

7
Opposers, through foreclosure and that Opposers’ dates of first use inure to
his benefit.9 However, in his discovery deposition Applicant states “Be real
clear. I – I have never publicly used the trademark”10 and provides conflicting
and otherwise unsupported testimony regarding the extent, if any, to which
Opposers are his predecessors-in-interest such that he may base his first use
dates on their use of the CI HOST mark.11 Further, Applicant has not
properly made of record any documentary evidence in support of his
contentions. In addition, Applicant’s assertions that he is the successor-in-
interest to Opposers or entities controlled by them are unequivocally denied
by Opposer Carole A. Faulkner in her trial testimony.12 Thus, we find
inadequate support for Applicant’s assertion of April 1, 1995 as his date of
first use of the CI HOST mark.
Inasmuch as Applicant has not established use of his mark in connection
with his services prior to the filing date of his application, the earliest date
upon which Applicant may rely for priority purposes is August 14, 2012,
which is his constructive use (filing) date. Syngenta, 90 USPQ2d at 1119
(“applicant may rely without further proof upon the filing date of its
application as a ‘constructive use’ date for purposes of priority.”).

9 9 TTABVUE 6-8.

10 10 TTABVUE 32.

11 10 TABVUE 29-68.

12 13 TTABVUE 20-71.
Opposition No. 91210234

8
We therefore must determine whether Opposers have established
proprietary rights in their mark CI HOST prior to August 14, 2012. Because
Opposers have not pleaded ownership of any live and subsisting
registrations, Opposers must rely on their common-law use to establish
priority.13
In order for a plaintiff to prevail on a claim of likelihood of confusion based
on its ownership of common law rights in a mark, the mark must be
distinctive, inherently or otherwise, and plaintiff must show priority of use.
See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40
(CCPA 1981). “Thus, even if something is used as a trademark, if it is not
distinctive, the user does not have a trademark because he has no existing
trademark rights.” Id. at 44.
Under the rule of Otto Roth, a party opposing registration of a
trademark due to a likelihood of confusion with his own
unregistered term cannot prevail unless he shows that his term
is distinctive of his goods, whether inherently or through the
acquisition of secondary meaning or through “whatever other
type of use may have developed a trade identity.” Otto Roth, 640
F.2d at 1320, 209 USPQ at 43. The Otto Roth rule is applicable
to trademark registration cancellation proceedings as well.

13 The filing date of Opposers’ pleaded application Serial No. 85723638 is September
19, 2012, which is subsequent to the filing date of Applicant’s involved application.
In addition, Opposers’ pleaded Registration No. 2893070, cancelled on May 13, 2011
prior to the commencement of this proceeding, is not evidence of anything except
that it issued. See TBMP §704.03(b) and cases cited therein. See also Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002). Any benefits conferred
by the registration, including the evidentiary presumptions afforded by Section 7(b)
of the Trademark Act were lost when the registration expired. See, e.g., Anderson,
Clayton & Co. v. Krier, 478 F.2d 1246, 178 USPQ 46 (CCPA 1973).
As a result, neither Opposers’ pleaded application nor their pleaded registration
may form the basis for Opposers’ claim of priority.

Opposition No. 91210234

9
Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039, 1042 (Fed.
Cir. 1990). Accordingly, a party opposing the registration of another’s mark
on the basis of likelihood of confusion with its own unregistered mark must
establish that the unregistered mark is distinctive of its goods or services
either inherently or through the acquisition of secondary meaning. Id.
In this case, neither party addressed the issue of the distinctiveness of
Opposers’ unregistered CI HOST mark. Rather, it appears that because both
parties purport to use the designation CI HOST as a mark, they view it as a
distinctive mark, and the question of lack of distinctiveness never occurred to
either. Inasmuch as the parties have treated their marks as being inherently
distinctive, and have viewed the issue of priority as turning on when each
party first began using the mark CI HOST, we will do the same in making
our determination. See, e.g., Giersch, 90 USPQ2d at 1023 (“Respondent has
not raised an issue as to the distinctiveness of petitioner’s mark or otherwise
put petitioner on notice of this defense, and therefore we find that the mark
is distinctive.”) (citing Wet Seal Inc v. FD Mgmt., Inc., 82 USPQ2d 1629, 1634
(TTAB 2007) (absent argument or evidence from applicant, opposer’s mark
deemed distinctive)); Chicago Corp. v. N. Am. Chicago Corp., 20 USPQ2d
1715, 1717 n. 5 (TTAB 1991) (rejecting applicant’s argument that opposer
failed to prove that its mark was distinctive where applicant failed to plead
the issue or introduce evidence of non-distinctiveness).
Opposition No. 91210234

10
In her testimony, Opposer Carole A Faulkner testifies that she and
Opposer Chris Faulkner, individually and as CI HOST, Inc. and CI HOST,
Corp., began using CI HOST as a mark as early as 1995 in connection with
web site design and hosting websites of their web design customers.14 Ms.
Faulkner further testifies that Opposers have continuously used CI HOST as
a mark, first to identify web hosting and design services, and later in
connection with additional Internet-based services.15 Ms. Faulkner also
testifies that she owns the Internet domain name cihost.com; that Opposer
Chris Faulkner is regarded as an expert in the field of Internet hosting and
has written a number of articles on the subject; that Opposers have used and
promoted the CI HOST mark for 20 years, and that such promotions include
NASCAR events, world boxing matches, Internet banner advertisements, and
television advertisements.16 In support of her testimony, Ms. Faulkner has
identified and made of record copies of advertisements for services provided
by Opposers and their corporate entities under the mark CI HOST, including
one from 1999, a press release dated October 9, 2006 naming CI HOST the
ninth leading web-hosting company in the world and including a quote from
Opposer Chris Faulkner, and additional articles and press releases

14 13 TTABVUE 12.

15 13 TTABVUE 12-14.

16 13 TTABVUE 18-20.

Opposition No. 91210234

11
concerning Opposers’ and their corporate entities’ use of CI HOST as a mark
from 2000, 2002, 2007 and 2008.17
The testimony of Ms. Faulkner establishes that Opposers, and/or
corporate entities controlled by Opposers, began using the common law mark
CI HOST in connection with web design and hosting services in 1995, and
that the mark has been used continuously since then. In that regard, it is
settled that oral testimony, even of a single witness, if “sufficiently
probative,” may be sufficient to prove priority. Powermatics, Inc. v. Glebe
Roofing Products Co., 341 F.2d 127, 144 USPQ 430 (CCPA 1965); and Kohler
Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1108 (TTAB 2007). In this
case, Ms. Faulkner’s testimony is not “characterized by contradictions,
inconsistencies and indefiniteness,” but rather carries with it “conviction of
its accuracy and applicability.” B.R. Baker Co. v. Lebow Bros., 150 F.2d 580,
66 USPQ 232 (CCPA 1945). See also National Bank Book Co. v. Leather
Crafted Products, Inc., 218 USPQ 826, 828 (TTAB 1993) (oral testimony may
be sufficient to prove the first use of a party’s mark when it is based on
personal knowledge, it is clear and convincing, and it has not been
contradicted). As indicated, Applicant has not introduced any testimony or

17 13 TTABVUE 138-158.

Opposition No. 91210234

12
evidence to cast doubt upon the accuracy of Opposers’ assertion of 1995 as a
date of first use based upon this testimony.18
The accompanying documentary exhibits further support Opposers’ use of
CI HOST since as early as 1999. Because Opposers do not provide an exact
date in 1995 that they began using the CI HOST mark, for purposes of
determining priority of use, Opposers’ date of first use of the mark CI HOST
is construed as December 31, 1995. EZ Loader Boat Trailers, Inc. v. Cox
Trailers, Inc., 213 USPQ 597, 598 n.5 (TTAB 1982) (documentary evidence
showed first use in 1977, the month and day were unknown, therefore, the
Board could not presume any date earlier than the last day of the proved
period). See also Osage Oil & Transportation, Inc. v. Standard Oil Co., 226
USPQ 905, 911 n.22 (TTAB 1985) (evidence established first use in 1968-
1969, therefore December 31, 1969 is date of first use).
As a result, we find on this record that Opposers have established use of
the CI HOST mark as early as December 31, 1995, and that such use is prior
to Applicant’s constructive first use date of August 14, 2012.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the
issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476

18 Indeed, as discussed above, Applicant acknowledges use by Opposers of CI HOST
as a mark as early as 1995 in his own assertions that Opposers are his predecessors-
in-interest.
Opposition No. 91210234

13
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling
Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
We turn to the first du Pont factor, i.e., whether Opposers’ mark and
Applicant’s mark are similar or dissimilar when viewed in their entireties in
terms of appearance, sound, connotation and overall commercial impression.
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). There is no dispute
but that the parties’ marks, CI HOST, are identical, which strongly supports
a finding of likelihood of confusion. Furthermore, “even when goods or
services are not competitive or intrinsically related, the use of identical
marks can lead to an assumption that there is a common source.” Id. at 1689.
See Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981)
(When both parties are using or intend to use the identical designation, “the
relationship between the goods on which the parties use their marks need not
be as great or as close as in the situation where the marks are not identical or
strikingly similar”).
With respect to the parties’ services, it is well-established that the goods or
services of the parties need not be similar or competitive, or even offered
through the same channels of trade, to support a holding of likelihood of
confusion. It is sufficient that the respective goods or services of the parties
are related in some manner, and/or that the conditions and activities
surrounding the marketing of the goods or services are such that they would
Opposition No. 91210234

14
or could be encountered by the same persons under circumstances that could
give rise to the mistaken belief that they originate from the same source. See
Hilson Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993); and In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978). The issue, of course, is not whether
purchasers would confuse the goods or services, but rather whether there is a
likelihood of confusion as to the source thereof. In re Rexel Inc., 223 USPQ
830 (TTAB 1984).
Opposer, Carole Faulkner, testifies that Opposers provide the following
services under the CI HOST mark:
We do implementation and installation of the software on the
colocation machines and the dedicated services as we need it.
And are -- we have – provide technical support for the
equipment. We do web design and implementation, search
engine optimization. It’s a lot broader now than it was in 1999,
on that last thing that you read. It's – we do web hosting for U.S.
customers and international, I have both. Let’s see, web hosting
-- creation of the web sites and web designs.19

As identified in his application, Applicant’s services are
designing and implementing web sites for others on a global
computer information network; hosting the web sites of others
on a computer server for a global computer network; graphic art
design; computer software design for others; and computer
consultation.20

19 13 TTABVUE 8-9.

20 We observe that Applicant’s recitation of services is identical to the Class 42
services recited in CI HOST, Corp.’s cancelled Registration No. 2893070.
Opposition No. 91210234

15
Opposers have introduced testimony that they provide, inter alia, web site
design and implementation, and web site hosting.21 Thus, as recited, the
services in the involved application are identical in part to the services
Opposers provide under their common-law CI HOST mark.22
Because the services identified in the application and provided by Opposers
are in-part identical, we must presume that the channels of trade and classes
of purchasers are the same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“Given the in-part identical and in-part related nature of the
parties’ goods, and the lack of any restrictions in the identifications thereof as
to trade channels and purchasers, these clothing items could be offered and
sold to the same classes of purchasers through the same channels of trade”);
In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to travel in the same
channels of trade, and be sold to the same class of purchasers”).
As a result, the second and third du Pont factors also strongly support a
finding of likelihood of confusion.

21 11 TTABVUE 46-63; 13 TTABVUE 8-9, 139-156.

22 We need not make a determination as to the relatedness of Applicant’s and
Opposers’ remaining services, as it is sufficient for a finding of likelihood of
confusion if relatedness is established for any item encompassed by the recitation of
services within a particular class in the involved application. Tuxedo Monopoly, Inc.
v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981); Inter IKEA
Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); General Mills Inc. v.
Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1588 n.1 (TTAB 2011),
judgment set aside on other grounds, slip op. 91118482 (TTAB Jan. 22, 2014);
Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB
2004).

Opposition No. 91210234

16
Conclusion
We have carefully considered all of Opposers’ testimony and evidence
pertaining to standing, priority of use and the relevant du Pont factors, as
well as all of the parties’ arguments with respect thereto, including any
evidence and arguments not specifically discussed in this opinion. Applicant
failed to introduce any evidence whatsoever.
We conclude that Opposers have established priority of use and that
consumers familiar with Opposers’ services under their common law CI
HOST mark would be likely to believe, upon encountering Applicant’s CI
HOST mark for its in-part identical services, that the parties’ services
originate with or are associated with or sponsored by the same entity. In
making our determination, we have balanced the relevant du Pont factors.
The factors of the identity of the marks and the identity in part of the
services and presumed identity in trade channels and consumers weigh
strongly in Opposers’ favor.
Because we have found that there is a likelihood of confusion between
Opposers’ mark and Applicant’s mark as applied to their respective services,
we do not need to decide Opposers’ fraud claim.
Decision: The opposition is sustained and registration to Applicant is
refused.