Chinese Media Groupv.Southern Chinese Newspapers Publishing Co.

Trademark Trial and Appeal Board

Mar 29, 2002

No. 92029927 (T.T.A.B. Mar. 29, 2002)

3/29/02 Paper No.
8

GDH/gdh

U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Chinese Media Group
v.
Southern Chinese Newspapers Publishing Company
_____

Cancellation No. 29,927
_____

James E. Griffith of McDermott, Will & Emery for Chinese Media
Group.

John S. Egbert of Harrison & Egbert for Southern Chinese
Newspapers Publishing Company.
_____

Before Sams, Hohein and Holtzman, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Chinese Media Group has petitioned to cancel the
registration owned by the Southern Chinese Newspapers
Publishing Company for the mark "HOUSTON CHINESE YELLOW PAGES"
for "telephone directories."1 As grounds for cancellation,

1 Reg. No. 2,165,903, issued on June 16, 1998 from an application
filed on June 24, 1997, which sets forth a date of first use anywhere
and in commerce of 1979. The words "YELLOW PAGES" are disclaimed.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 29,927
2
petitioner alleges, among other things, that respondent's mark
"HOUSTON CHINESE YELLOW PAGES is the common descriptive name
for a yellow pages telephone directory for the Chinese
community of Houston"; that such mark therefore "does not
function to identify Respondent's goods and distinguish them
from goods offered by others"; that petitioner "is likely to
be damaged by continued registration of said generic term in
that the evidentiary effect of said registration tends to
impair Petitioner's right to legal use of said term"; and that
petitioner "has for some time been involved in publishing and
distributing a yellow pages directory for Houston's Chinese
community and ... has a valid and legal right to refer to
[such a directory] by its common descriptive name."
Petitioner further alleges that respondent's mark
"is merely descriptive or primarily geographically descriptive
when applied to a yellow pages directory for Houston's Chinese
community in that said mark is an apt and common term used to
describe" respondent's goods; that petitioner, "since 1997,
has been involved in publishing and distributing yellow pages
for Houston's Chinese community, and ... has a valid and legal
right to describe [such] using the term registered as a
trademark by Respondent"; that petitioner "is likely to be

The registration issued pursuant to the provisions of Section 2(f) of
the Trademark Act, based upon a claim of five years substantially
exclusive and continuous use of the mark in commerce.
Cancellation No. 29,927
3
damaged by the continued registration of said term in that the
prima facie effect of such registration tends to impair
Petitioner's right to descriptive use of the term"; that
respondent "is not entitled to continue registration of its
alleged mark in that Respondent is not entitled to exclusive
use of said term in commerce on the goods specified"; and that
respondent's "alleged mark has not become distinctive of
Respondent's goods in commerce and no customer recognition of
said term as a valid mark identifying only respondent has been
achieved."2
Respondent, in its answer, has denied the salient
allegations of the petition to cancel, including the
allegations pertaining to petitioner's standing to bring this
proceeding.
The record consists solely of the pleadings and the
file of the involved registration. Neither party took
testimony or otherwise presented any evidence at trial. Only
petitioner filed a brief and neither party requested an oral
hearing.
Petitioner, in the introduction to its brief,
asserts that it "is a publisher of yellow pages to the Chinese

2 Although petitioner also alleges a claim of fraud as a basis for
cancellation, such ground was neither pursued at trial nor argued in
petitioner's brief. Accordingly, the claim of fraud will not be
given further consideration.
Cancellation No. 29,927
4
community in the Houston metropolitan area and believes it has
been and continues to be damaged by the subject registration."
However, such statement, as well as the allegations in the
petition to cancel with respect to petitioner's standing to
bring this case, are unsupported by any evidence demonstrating
that petitioner has a real interest in seeking to cancel
respondent's registration.3 Petitioner, therefore, has not
proven its standing to be heard

3 As set forth in TBMP §706.02: "Factual statements made in a
party's brief on the case can be given no consideration unless they
are supported by evidence properly introduced at trial. Statements
in a brief have no evidentiary value, except to the extent that they
may serve as admissions against interest." The latter, of course, is
not applicable herein. Likewise, as indicated in TBMP §706.01, while
"statements in pleadings may have evidentiary value as admissions
against interest by the party which made them," "[s]tatements made in
pleadings cannot be considered as evidence in behalf of the party
making them." Instead, "such statements must be established by
competent evidence during the time for taking testimony." Id.

Cancellation No. 29,927
5
that it is damaged by the continued existence of the involved
registration. Such proof, just as is the case with proof of
the genericness, mere descriptiveness and/or primary
geographical descriptiveness of respondent's mark, is an
essential element of petitioner's case-in-chief and, in the
absence thereof, petitioner cannot prevail.
Petitioner, in its brief, appears also to request
that, as evidence, judicial notice be taken of the terms
"HOUSTON," "CHINESE" and "YELLOW PAGES" in respondent's mark.
Citing Filipino Yellow Pages Inc. v. Asian Journal
Publications Inc., 198 F.3d 1143, 53 USPQ2d 1001 (9th Cir.
1999), petitioner asserts that "[t]he Ninth Circuit, in a
decision determining the distinctiveness of a mark almost
identical to that of Registrant, found the mark FILIPINO
YELLOW PAGES to be generic for a telephone directory directed
primarily at the Filipino-American community of Southern
California" and that, in support of such holding:
The Ninth Circuit cited several
authorities, including Webster's Ninth New
Collegiate Dictionary, [at] 1367, for the
proposition that both FILIPINO and YELLOW
PAGES are generic terms. The central issue
for the court was determining whether the
combination of generic terms to form a
composite mark created a generic or a
descriptive mark.

Petitioner contends that "[t]he Filipino Yellow
Pages case is strong precedent for the proposition that the
Cancellation No. 29,927
6
combination of a generic geographic designator and the words
'yellow pages' yields a generic name." According to
petitioner:
HOUSTON CHINESE YELLOW PAGES is no
more worthy of trademark protection than
FILIPINO YELLOW PAGES. Both alleged marks
are comprised of only generic terms used to
denote the underlying product sold under
the name, and neither title is capable of
identifying source. Like "FILIPINO,"
"HOUSTON" and "CHINESE" are both generic
terms in the context of the purported mark,
and Registrant has acknowledged the
genericness of the element "yellow pages"
by virtue of the disclaimer contained in
the registration. ....

Nevertheless, to the extent that petitioner bases such
argument upon judicial notice of the dictionary meanings of
the terms comprising respondent's mark, it is pointed out that
a request for judicial notice may not be used at the briefing
stage to remedy petitioner's failure to present adequate
evidence to support its case. See Litton Business Systems,
Inc. v. J. G. Furniture Co., Inc., 190 USPQ 428, 430-31 (TTAB
1976), recon. denied, 190 USPQ 431, 433-34 (TTAB 1976).
Accordingly, inasmuch as petitioner is the party who
bears the burden of proof in this proceeding, and because
petitioner has failed to present any evidence herein,
including proof of its standing to be heard, it is adjudged
that the petition to cancel must fail.
Decision: The petition to cancel is denied.
Cancellation No. 29,927
7