Christopher Wadev.Riles & Co.

Trademark Trial and Appeal Board

Sep 6, 2001

No. 92021869 (T.T.A.B. Sep. 6, 2001)

9/6/01
Paper No. 64
TEH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Christopher Wade
v.
Riles & Company
_____

Cancellation No. 21,869
_____

David J. Davis of Baker & McKenzie for Christopher Wade.

David R. Shaub of Shaub & Williams for Riles & Company, Inc.
_____

Before Quinn, Walters and Holtzman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

On June 2, 1993, Christopher Wade, an individual, filed a
petition to cancel a registration assigned to Riles & Company,
Inc., ("Riles"), a California corporation, for the mark THREE-
PEAT for "shirts, jackets and hats."1
Petitioner alleges in the petition that he sells t-shirts
and other apparel items and that he has "a bona fide intent"

1 Registration No. 1,552,980; issued August 22, 1989; Section 8
affidavit accepted. The underlying application was filed by P.d.P.
Paperon de Paperoni S.p.A. and was assigned to Riles in May 1989.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 21,869
2
to produce and sell apparel which includes the word THREE-PEAT
as
part of the ornamental design. Petitioner also alleges that
THREE-PEAT has become a generic slang word meaning "to perform
an action or feat three consecutive times" particularly in
relation to athletic events; that the designation is an
informational and ornamental feature of respondent’s goods and
does not function as a mark; that the designation is generic
or descriptive as used on respondent’s goods and has not
acquired distinctiveness; that the designation has been
abandoned as the result of an invalid assignment of the
underlying application to Riles by the former owner of the
mark; and that the designation has been abandoned as the
result of nonuse by respondent for a period of at least two
years.
Respondent admits that the underlying application was
assigned to Riles and denies the remaining allegations.
Petitioner did not take any testimony but filed a notice
of reliance on printed publications consisting of stories
retrieved from the NEXIS database purporting to show generic
and informational use of THREE-PEAT; respondent’s responses to
certain interrogatories; documents including copies of
representative license agreements between petitioner and

Although the assignment was recorded in the Office on July 11, 1989,
Cancellation No. 21,869
3
various companies for the use of THREE-PEAT on goods such as
hats and t-shirts, copies of "apparel designs" for the
asserted mark, and correspondence "produced by Registrant
during discovery" to illustrate the ways in which THREE-PEAT
is "used or proposed to be used" by respondent on its goods.2
(Petitioner's brief, p. 3-4).
Respondent in turn filed a notice of reliance on
petitioner’s responses to certain discovery requests and
printed publications obtained from the WESTLAW and NEXIS
databases to show public recognition of THREE-PEAT as a mark.
In addition, respondent submitted the testimony (with
exhibits) of Bijan Khezri, former president of P.d.P. Paperon
De Paperoni, the original owner and assignor of the underlying
application to Riles; Christine Riley, vice-president and
director of respondent; and respondent's financial consultant
and business manager, John Aldrich, an account manager for
AYCO Company, LP.3 The exhibits introduced during the
examination of Mr. Aldrich include a declaration of
Christopher Wade dated July 14 1994, duplicates of the

the registration issued in the name of the original owner.
2 None of these documents is proper subject matter for a notice of
reliance. See, for example, Trademark Rules 2.120(j)(3)(ii),
2.122(e), and TBMP § 711. However, as explained in footnote 6,
infra, these materials are being treated as being of record in this
case.

3 Petitioner did not attend any of these depositions.

Cancellation No. 21,869
4
"apparel designs" previously submitted under petitioner’s
notice of reliance, and petitioner's own examples of use of
THREE-PEAT on shirts.
Both parties filed trial briefs but an oral hearing was
not requested.
In his brief, petitioner states that he is a seller of t-
shirts, that he intends to sell apparel which includes the
word "three-peat" as part of the ornamental design, and that
he
believes he should not be required to pay a royalty fee to
respondent in order to do so. Petitioner argues that the
registration for THREE-PEAT should be cancelled "on the
grounds that it fails to function as a trademark and is
generic." (Brief, p. 13). Petitioner contends that the term
serves an informational and ornamental function in view of the
"location, size, prominence and significance" of the asserted
mark on respondent's goods. (Brief, p. 11). Petitioner relies
on the NEXIS evidence to show that the public would view
THREE-PEAT as a generic term meaning a third successive
accomplishment or to perform an act for a third consecutive
time, rather than to identify respondent's apparel.
Petitioner contends that respondent’s license agreements show
that THREE-PEAT is always used in combination with other

Cancellation No. 21,869
5
parties' trademarks such as "CHICAGO BULLS" and "BUFFALO
BILLS" and that the "representative" apparel designs show that
the combined designation is used in an ornamental and
informational manner. Petitioner maintains that as a result
of the use of THREE-PEAT with numerous other parties'
trademarks, consumers would not be able to associate THREE-
PEAT with any particular source and instead would believe that
the clothing on which it is used originates from different
entities such as the source of, for example, a CHICAGO BULLS
shirt. Petitioner further argues that the use of these third-
party marks creates the demand for the goods contending that
THREE-PEAT alone
without any other mark "would not be perceived as an indicator
of
the source of the t-shirt."4 (Brief, p. 12).
Respondent maintains that no evidence has been submitted
to support petitioner's claim that he is a competitor of
respondent or that he has an intention to use THREE-PEAT on
apparel. Noting that petitioner "filed no testimony" in this
case, respondent argues that "[f]or this reason alone, the
Petition should be dismissed" because the "failure to present
testimony is a failure to prove the case-in-chief." (Brief,

4 Although petitioner also pleaded claims of descriptiveness, lack of
acquired distinctiveness, and abandonment on two grounds, none of
Cancellation No. 21,869
6
p. 10). Respondent points to its own testimony and evidence
showing that THREE-PEAT is a coined term which is recognized
as a mark, and contends that although the term may be commonly
used by media, respondent has controlled the use of THREE-PEAT
as a trademark. Respondent argues that THREE-PEAT is not
generic for its goods and contends that the numerous media
stories as well as its own evidence of use demonstrate that
the term functions as a mark and is recognized as an
identification of source.5
We turn first to the issue of standing. Petitioner has
not taken any testimony nor properly introduced any evidence
to prove
his standing in this case. Nevertheless, and quite
surprisingly, petitioner's standing has been established by
evidence made of record by respondent. This evidence consists
of a declaration of Christopher Wade which was submitted by
petitioner in support of an earlier motion for summary
judgment in this case. Ordinarily, evidence submitted in
connection with a motion for summary judgment is not

those claims were pursued or argued in petitioner's brief and have
therefore been considered dropped from the case.

5 Mr. Aldrich has testified as to respondent's ownership of at least
two other registrations for THREE-PEAT for goods including collector
plates, mugs and key chains. Since respondent did not establish the
current status of those registrations, the registrations are not
properly of record and have not been considered. See Trademark Rule
2.122(d)(2) and, generally, TBMP § 703.02(a).
Cancellation No. 21,869
7
considered of record for purposes of the final decision in a
case unless properly introduced at trial. See Hard Rock Cafe
Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB 1998) and TBMP
§ 528.05(a). In this case, respondent has made Mr. Wade's
declaration of record by introducing it as an exhibit to the
testimony of Mr. Aldrich. Having been properly introduced
into evidence, the declaration may be referred to or relied
upon by either party for any purpose permitted by the
applicable rules.
Mr. Wade states in his declaration that he is a seller of
t-shirts and other apparel and that he is entitled to use the
term in an ornamental fashion on his goods. Respondent,
however, maintains that the declaration "is no longer valid
because the declaration is dated July 14, 1994" and that "[I]t
no longer can be assumed that Mr. Wade presently intends to
compete with Riles & Co., currently sells apparel items which
display designs and terms relating to sporting events and
teams, [or] ... still intends to produce, distribute and sell
apparel which includes the words 'THREE-PEAT'...."
(Respondent’s brief, p.5).
The purpose of the standing requirement is to prevent
mere intermeddlers from initiating proceedings. Thus, to meet
this requirement, a plaintiff need only show that it has a
real interest in the outcome of the proceeding. See Ritchie
Cancellation No. 21,869
8
v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999).
Petitioner’s interest in this case is established by the
uncontroverted statement in petitioner's declaration to the
effect that he is engaged in the sale of the same goods as
respondent. See, e.g., Eastman Kodak Co. v. Bell & Howell
Document Management Products Co., 23 USPQ2d 1878 (TTAB 1992),
aff'd 994 F.2d 1569, 26 USPQ2d 1912 (Fed. Cir. 1993).
Respondent has relied on petitioner's responses to
interrogatories presumably to show that petitioner has not
established any "intention" to use the term THREE-PEAT in
connection with any goods. However, for purposes of standing,
petitioner does not need to prove an intention, or even an
interest, in using the asserted mark on his own goods. See,
e.g., Jewelers Vigilance Committee, Inc. v. Ullenberg Corp.,
853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988). It is only
necessary that he has a right to use the asserted mark in his
business. This right is presumed from petitioner's status as
a competitor of respondent. See Plyboo America Inc. v. Smith
& Fong Co., 51 USPQ2d 1633 (TTAB 1999).
We turn then to the merits of the petition. Petitioner
has the burden of proving his claims that THREE-PEAT is
generic and otherwise fails to function as a mark. Although
petitioner has taken no testimony, he has properly introduced
certain evidence in support of his case by way of notice of
Cancellation No. 21,869
9
reliance.6 However, the evidence as a whole is insufficient to
sustain petitioner's burden.
To begin with, the generic meaning of a mark is not
determined in a vacuum but rather in relation to the goods on
which it is used. See, for example, In re Abcor Development
Corp., Inc., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
Notwithstanding that the NEXIS articles may show that THREE-
PEAT is widely used by the media to denote a type of athletic
accomplishment, there is no indication that this term conveys
any meaning, let alone generic meaning, about respondent's
goods.
See, for example, In re Classic Beverage Inc., 6 USPQ2d 1383
(TTAB 1988). There is no indication that the term has
anything other than arbitrary significance with respect to
those goods.

6 Contrary to respondent's apparent contention, petitioner's NEXIS
evidence, to the extent that it consists of articles published in
newspapers or magazines of general circulation, was properly made of
record by notice of reliance. See Weyerhaeuser Co. v. Katz, 24
USPQ2d 1230 (TTAB 1992). Moreover, the NEXIS material is not
hearsay since it is not relied on by petitioner for the truth of the
statements made in the articles but rather to show the context of use
of the term by the media. We also note that respondent itself has
introduced the same type of evidence by notice of reliance.
To the extent that respondent has objected to the introduction of
other evidence submitted by petitioner under a notice of reliance,
and although such evidence, as noted earlier, was improperly offered
by petitioner, the evidence has been considered by the Board since
respondent has either relied on or introduced the evidence as part of
its own case. See, generally, TBMP §§ 708 and 711.
Cancellation No. 21,869
10
Moreover, petitioner has failed to show that the term is
not used in the manner of a mark or that it otherwise would
not be perceived as a mark indicating source. Petitioner has
failed to produce any evidence that THREE-PEAT is used in an
ornamental manner or that the term is an inseparable part of
other marks or designs on respondent's goods. In fact,
petitioner has submitted no evidence whatsoever of use of
THREE-PEAT on goods. Although Mr. Aldrich admits that one of
the apparel designs relied on by petitioner had been approved
for use, there is no evidence that any of the designs were
ever actually used on or applied to any goods.
In any event, respondent has submitted media articles
demonstrating recognition of THREE-PEAT as a trademark and
clear evidence of use of THREE-PEAT as a mark. In one such
example, the term THREE-PEAT is applied to the front pocket of
a polo shirt where its size and placement on the shirt clearly
demonstrates use in the manner of a mark. There is nothing in
the record to establish that the term used in this manner
would not be recognized as an indication of source.
Finally, the mere fact that respondent has licensed the
use of THREE-PEAT to a number of different companies does not,
in itself, diminish its ability to identify a single source
for respondent's goods. The owner of a trademark is free to
license its mark to as many third parties as it chooses, to be
Cancellation No. 21,869
11
used on goods which it does not itself manufacture, provided
the owner controls licensees as to the nature and quality of
the goods on which the mark is used. See Sections 5 and 45 of
the Trademark Act. Moreover, a mark does not necessarily have
to indicate a single physical source for the goods but may
also indicate a single, i.e., consistent, source of quality,
regardless of the actual physical source or producer of the
goods. J.T. McCarthy, McCarthy on Trademarks and Unfair
Competition § 18:41 (4th ed. 2000) citing In re Abcor
Development Corporation, 588 F.2d 811, 200 USPQ 215, 219 (CCPA
1978). Petitioner has pointed to nothing in respondent's
license agreements or any other evidence which would indicate
that the quality of the goods to which the mark is applied is
not properly or adequately controlled by respondent.
Thus, petitioner has failed to establish that THREE-PEAT
is generic for respondent's goods or that it otherwise would
not be perceived as a mark for those goods.
Decision: The petition to cancel is dismissed.