Citizens for the Fair Use of “Ocala Horse Properties”v.Ocala Horse Properties, LLC

Trademark Trial and Appeal Board

Sep 26, 2019

92061767 (T.T.A.B. Sep. 26, 2019)

This Opinion is Not a
Precedent of the TTAB

Oral Hearing: April 15, 2019 Mailed: September 26, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Citizens for the Fair Use of “Ocala Horse Properties”
v.
Ocala Horse Properties, LLC
_____

Cancellation No. 92061767
_____

Frank Herrera and Gustavo Sardiña of H New Media Law for,
Citizens for the Fair Use of “Ocala Horse Properties.”
Erik M. Pelton of Eric M Pelton & Associates PLLC for,
Ocala Horse Properties.
_____

Before Kuhlke, Taylor and Dunn,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Ocala Horse Properties LLC (“Respondent”) owns a registration on the Principal
Register for the standard character mark OCALA HORSE PROPERTIES for “Real
estate agencies; Real estate brokerage” in International Class 36.1 The registration

1 Registration No. 4054934 issued on the Principal Register on November 15, 2011, based
upon application Serial No. 85124725, filed on September 8, 2010. The registration claims
February 2007 as the date of first use of the mark anywhere and in commerce.
Cancellation No. 92061767
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includes a disclaimer of the words HORSE PROPERTIES, and a claim of acquired
distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1141(f), in part,
as to the word OCALA.
Citizens for the Fair Use of “Ocala Horse Properties” (“Petitioner”), identifying
itself on the ESTTA generated cover sheet as a Florida association, filed a petition to
cancel the registration of Respondent’s mark on the grounds of genericness under
Trademark Act Section 23 and descriptiveness under Trademark Act 2(e)(1), 15
U.S.C. § 1052(e)(1). Petitioner specifically alleges, inter alia, the following:
• “Citizens for the Fair Use of “Ocala Horse Properties” (consists[]) of
members Golden Film Production & Photography, LLC, Horse Country
Realty, Inc. d/b/a/ Showcase Properties of Central Florida, LLC, Joan
Pletcher, Realtor, LLC, Pegasus Realty & Associates, Inc., Homes to
Ranches Realty, Inc., Ocala Homes & Farms, Inc., and Southern Charm
Realty of Central Florida, LLC.) and file the Petition for Cancellation of
Federal Registration No. 4,054,934 [for the mark] “OCALA HORSE
PROPERTIES” [Mark] because the mark is generic or at best merely
descriptive of “real estate agencies; real estate brokerage” services offered
by Registrant in Ocala, Florida.”2

• “Member Golden Film Production & Photography, LLC (‘Golden Film’) is a
film and photography production company that specializes in filming and
producing videos, which promote the sale of horse properties in Ocala,
Florida.”3

• The remaining members listed above are “real estate compan[ies] that
specialize in horse properties in Ocala, Florida.” 4

• The Mark is generic because the relevant purchasing public understands
the phrase primarily as the common or class name for the goods or services.
Thus, the Mark is incapable of functioning as a registrable trademark-

2 1 TTABVUE 3. Citations in this opinion are to the TTABVUE docket entry number and,
where applicable, the electronic page number where the document or testimony appears.
3 Id. (Pet. for Cancel. ¶ 2)
4 Id. at 3-4 (Pet. for Cancel. ¶¶ 3-8).
Cancellation No. 92061767
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denoting source, and therefore should not be registrable on the Principal
Register under §2(f) or on the Supplemental Register.”5

• The Mark is descriptive because it “merely describes Ocala horse
properties offered for sale” and “under 15 U.S.C. § 1052(e)(1) should have
been refused registration on the Principal Register. Since it was registered
under § 2(f) based upon false statements by Registrant, it should now be
cancelled.6

• Because members of the Citizens for the Fair Use of “Ocala Horse
Properties” should have the right to use “Ocala horse properties” to
advertise their services relating to the sale of horse properties located in
Ocala, they have been harmed and will continue to be harmed if
Registration No, 4.054,934 remains registered.”7

Respondent, in its answer, has denied the salient allegations in the petition for
cancellation.
I. Grounds for Cancellation
A. Whether the Issue of Fraud was Tried by Consent of the Parties
Petitioner, in the “Statement of Issues” portion of its brief, lists “[w]hether the
registration was procured by fraud” as one of the issues to be determined in this case,
arguing that the issue was not known until after the pleadings were closed. Petitioner
goes on to argue that the parties have conducted discovery and taken testimony of
the issue. In other words, that this issued has been tried by consent.
Respondent maintains that “the fraud claim was neither pleaded by Petitioners
nor tried by the parties,” arguing that the ESTTA cover page does not identify a claim

5 Id. at 6-7 (Pet. for Cancel. ¶ 20).
6 Id. at 7. (Pet. for Cancel. ¶¶ 25-27).
7 Id. at 6 (Pet. for Cancel. ¶ 18).
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of fraud on the USPTO and the testimonies of Christopher and Robert Desino do not
include any specific reference to such a claim.
It is well settled that a petitioner may not rely on an unpleaded claim in its brief,
and that to pursue an unpleaded claim, a petitioner’s pleading must be amended
under Fed. R. Civ. P. 15(b) to assert the claim, or the claim must have been tried by
express or implied consent. Fed. R. Civ. P. 15(b); see e.g., Hornby v. TJX Cos. Inc., 87
USPQ2d 1411, 1415 (TTAB 2008). Implied consent can only be found where the non-
offering party (1) raised no objection to the introduction of evidence on the issue, and
(2) was fairly apprised that the evidence was being offered in support of the issue.
Citigroup Inc. v. Capital City Bank Grp. Inc., 94 USPQ2d 1645, 1656, aff’d, 637 F.3d
1344, 98 USPQ2d 1253 (Fed. Cir. 2011) (quoting TRADEMARK TRIAL AND
APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 501.03(b)). “The question
of whether an issue was tried by consent is basically one of fairness. The non-moving
party must be aware that the issue is being tried, and therefore there should be no
doubt on this matter.” Morgan Creek Prods. Inc. v. Foria Int’l Inc., 91 USPQ2d 1134,
1139 (TTAB 2009).
Respondent notes that Petitioner has not amended its petition for cancellation to
plead fraud, and affirmatively denies being apprised of the claim or testifying as to
that claim. Respondent also asserts that it was not put on notice that Petitioner’s (or
its own) evidentiary materials would be used to support the unpleaded fraud claim.
See Levi Strauss & Co. v. R. Josephs Sportswear, Inc., 28 USPQ2d 1464, 1471 n.11
(TTAB 1993) (party was not fairly apprised that evidence used for a pleaded claim of
Cancellation No. 92061767
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descriptiveness was also being offered in support of unpleaded likelihood of confusion
claim); see also TBMP § 507.03(b) (June 2019) (“fairness dictates whether an issue
has been tried by consent — there must be an absence of doubt that the nonmoving
party is aware that the issue is being tried”). Here, the testimony surrounding the
Section 2(f) claim offered by Respondent in the application that matured into the
involved registration is pertinent to the allegations set forth in “COUNT II – THE
MARK IS MERELY DESCRIPTIVE” portion of the Petition, which, as noted, includes
the allegation that: “under 15 U.S.C. § 1052(e)(1), the Mark should have been refused
registration on the Principal Register. Since it was registered under § 2(f) based upon
false statements by Registrant, it should now be cancelled.”8 In the context of a mere
descriptiveness claim, this allegation can reasonably be read as pertaining to whether
Respondent’s mark had acquired distinctiveness at the time of registration. Under
these circumstances, we cannot conclude that fraud was tried by implied consent
under Fed. R. Civ. P. 15(b)(2).9
B. Was Respondent Required to Plead Acquired Distinctiveness as an
Affirmative Defense
Petitioner objects to Respondent’s evidence insofar as it pertains to the issue of
acquired distinctiveness, arguing that it is irrelevant because Respondent did not

8 1 TTABVUE 7.
9 We hasten to add that intent to deceive is an indispensable element of the analysis in a
fraud case. See In re Bose Corporation, 476 F.3d 1331, 91 USPQ2d 1938, 1941 (Fed. Cir.
2009). Petitioner has not questioned the dates of use Respondent asserted in its § 2(f)
statement of use. That the Office did not appreciate that the dates did not add up to five years
belies an intent to deceive. “There is no fraud if a false misrepresentation is occasioned by an
honest misunderstanding or inadvertence without a willful intent to deceive.” 91 USPQ2d at
40 (citing Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981)).
Cancellation No. 92061767
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plead acquired distinctiveness as an affirmative defense. We construe this objection,
discussed, infra, as asserting that Respondent was required to raise the issue of
acquired distinctiveness as an affirmative defense, and because Respondent did not
do so, it is an unpleaded issue. However, as one of its grounds for cancellation,
Petitioner alleges that Respondent’s mark is merely descriptive. Inasmuch as the
mark registered with a disclaimer of the words HORSE PROPERTIES, and with the
benefit of a claim of acquired distinctiveness under Section 2(f), in-part, as to the
remaining word OCALA, Respondent effectively conceded that its mark is merely
descriptive in total, but had acquired sufficient distinctiveness for registration. Under
these circumstances, the issue of acquired distinctiveness of the registered mark is
inherent in Petitioner’s mere descriptive claim. Moreover, as just stated, we consider
Petitioner’s allegations surrounding the § 2(f) claim made by Respondent in the
underlying application to raise the issue of whether Respondent’s mark had acquired
distinctiveness at the time of registration.
We therefore find that the issues involved in this proceeding are:
(1) Whether Respondent’s mark is generic for its identified
services; and
(2) If the mark is not found to be generic, that it is merely
descriptive, with no acquired distinctiveness.
II. Evidentiary Objections
Petitioner has interposed numerous objections against Respondent’s joint
declaration (and the accompanying exhibits) of Christopher and Robert Desino,10

10 50-54 TTABVUE.
Cancellation No. 92061767
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(Joint declaration) as well as other objections to various trial testimony. Petitioner’s
first objection is on the ground that the Joint declaration does not clearly state on
whose knowledge each statement is made and therefore it should be stricken.
Similarly, in the event that the declaration is not stricken in its entirety, Petitioner
objects to the paragraphs in the Joint declaration which begin with the pronoun “I.”
We overrule these objections. The prefatory language to the Joint declaration states
that “each” of the declarants attests to all of the statements made therein, all of the
statements made were based upon their personal knowledge or are based upon
information received from persons upon whom they rely in the normal course of
business and/or the business records of Ocala Horse Properties.11 As such, we
consider the pronouns “I” or “we” to refer to the personal knowledge of both
declarants.
Petitioner also objects to the portion of the Joint declaration offering testimony
and documents to establish that the registered mark has acquired distinctiveness,
because that argument should have been raised as an affirmative defense. As noted
above, whether the involved registration has acquired distinctiveness is at issue in
this proceeding, being a subset of Petitioner’s descriptiveness claim. Accordingly, we
overrule this objection.
The remaining objections to the Joint declaration are based primarily on hearsay,
lack of personal knowledge of the witness, lack of authentication of documents and
lack of foundation. Some of these objections are not outcome determinative of the

11 50 TTABVUE 2.
Cancellation No. 92061767
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merits of this case and therefore we see no compelling reason to address each of the
objections one by one except insofar as they relate to the outcome determinative
evidence and testimony. The Board is capable of weighing the relevance and strength
or weakness of the objected-to testimony and evidence, including any inherent
limitations, and this precludes the need to strike the testimony and evidence. We add
that we have considered the entirety of the Joint declaration and exhibits keeping in
mind Petitioner’s objections and have accorded whatever probative value the
testimony and evidence merits. Notwithstanding the foregoing, we will specifically
rule on certain objections, as appropriate, during our discussion.
Finally, Petitioner, in Appendix I of its brief stated: “[e]xcept as specifically relied
upon by Petitioners in the Trial Brief, Petitioners object to the admission in evidence
of those portions of the trial testimony of any party to which counsel for Petitioners
objected during the taking of testimony as reflected in the transcript of that
testimony.”12 An objection to trial testimony must be raised promptly and, in order to
preserve an objection that was seasonably raised during the taking of a testimony
deposition, a party should maintain the objection in its brief on the case, as an
appendix to its brief on the case or in a separate statement of objections filed with its
brief on the case. 7-Eleven, Inc. v. Wechsler, 83 USPQ2d 1715, 1718 n.25 (TTAB 2007)
(objection to deposition exhibit waived because not renewed in trial brief) See also
TBMP § 707.03, and cases cited therein. Petitioner’s short statement in its appendix
neither identifies the objections with specificity nor argues the validity thereof. We

12 62 TTABVUE 30 (Br. p. 29).
Cancellation No. 92061767
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do not consider petitioner’s blanket statement to be sufficient to maintain the
objections. Therefore, any objections not otherwise individually addressed herein that
were made by Petitioner during the trial depositions are considered to have been
waived.
III. The Record
The record consists of the pleadings and, without any action by the parties, the
file of Respondent’s involved registration. Trademark Rule 2.122(b), 37 C.F.R.
§ 2.122(b).
During its testimony period, Petitioner made of record the following evidence:
• Testimony deposition, with exhibits, of Christopher Desino13
• Testimony deposition of Robert Desino14
• Petitioner’s Notice of Reliance on: the 30(b)(6) declaration, with exhibits, of
Christopher Desino; certain of its responses to Respondent’s interrogatory
requests; a copy of cancelled Registration No. 3591862 from the TESS data
base of the USPTO, the file history for the involved registration, dictionary
definitions, a Wikipedia entry, certain publically electronically available
business records15
• Testimony declaration of Joan Pletcher16

13 37 TTABVUE.
14 38 TTABVUE.
15 39-40 TTABVUE. Because Respondent did not object to the manner in which Petitioner
made of record any of the evidence attached its notice of reliance, we consider it all properly
of record and it has been considered in this decision.
16 41 TTABVUE.
Cancellation No. 92061767
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During its testimony period, Respondent made of record the following evidence:
• Redacted testimony depositions, with exhibits, of the following alleged
members of Petitioner, namely, Pegasus Realty and Associates, Inc. by
George DeBenedicty, owner (DeBenedicty); Ocala Homes & Farms by Carla
Lord, owner (C. Lord); Southern Charm Realty of Central Florida, Inc., by
Jeanne Ritt, owner (Ritt); Homes to Ranches Realty, Inc. by Gregory Lord,
owner (G. Lord); Horse Country Realty, Inc. by Valerie Dailey (Dailey) and
Joan Pletcher Realtor, LLC by Joan Pletcher, owner (“Pletcher”)17
• Joint Declaration of Christopher and Robert Desino, with exhibits18
Both Petitioner and Applicant filed briefs and Petitioner filed a reply brief. An
oral hearing was held on April 15, 2019.
IV. Standing
To prevail in the cancellation proceeding, it is Petitioner’s burden to prove by a
preponderance of the evidence the substantive grounds alleged in its petition for
cancellation. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848
(Fed. Cir. 2000); Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ
40, 43 (CCPA 1981); WeaponX Performance Prods. Ltd. v. Weapon X Motorsports, Inc.,
126 USPQ2d 1034, 1040 (TTAB 2018).
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB

17 48-49 TTABVUE.
18 50-54 TTABVUE.
Cancellation No. 92061767
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2010) citing Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir.
1999). Our primary reviewing court, the U.S. Court of Appeals for the Federal Circuit,
has enunciated a liberal threshold for determining standing, namely that a plaintiff
must demonstrate that it possesses a “real interest” in a proceeding beyond that of a
mere intermeddler, and “a reasonable basis for his belief of damage.” Empresa
Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed.
Cir. 2014); Ritchie v. Simpson, 50 USPQ2d at 1025; Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). A “real interest” is a
“direct and personal stake” in the outcome of the proceeding. Ritchie v. Simpson, 50
USPQ2d at 1026. A belief in likely damage can be shown by establishing a direct
commercial interest. Cunningham v. Laser Golf Corp., 55 USPQ2d at 1844.
The Petitioner in this case is identified as Citizens for the Fair Use of “Ocala Horse
Properties,” a Florida association, comprised of the following members: Golden Film
Production & Photography, LLC; Horse Country Realty, Inc. d/b/a/ Showcase
Properties of Central Florida, LLC; Joan Pletcher, Realtor, LLC; Pegasus Realty &
Associates, Inc.; Homes to Ranches Realty, Inc.; Ocala Homes & Farms, Inc.; and
Southern Charm Realty of Central Florida, LLC. Petitioner, who alleges that it has
been harmed because its members should have the right to use “Ocala horse
properties” to advertise their services relating to the sale of horse properties located
in Ocala, Florida, will only have standing if it proves these allegations of “real
interest” and a “belief in damage.” See Baseball America Inc. v. Powerplay Sports,
Ltd., 71 USPQ2d 1844, 1846 n.6 (TTAB 2004) (factual allegations made in the
Cancellation No. 92061767
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pleadings are not evidence of the matters alleged, except insofar as they might be
deemed to be admissions against interest).
Under Trademark Act Section 14, 15 U.S.C. § 1064, “[a]ny person who believes
that he is or will be damaged … by the registration of a mark” may file a petition to
cancel. The term person includes “a juristic person” which includes associations.
Trademark Act Section 42, 14 U.S.C. § 1127. An “association” is a recognized juristic
entity when it is organized under state laws or federal statutes that govern this form
of organization. TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)
§ 803.03(c) (2019). An association has standing if it proves that: (1) its members would
otherwise have standing to sue in their own right; (2) the interest it seeks to protect
are germane to the organizations’ s purpose; and (3) neither the claim asserted nor
the relief requested requires the participation of individual members in the lawsuit.
See Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021,
2025 (Fed. Cir. 1987).
After a careful review of the proceeding records, we find that Petitioner has not
demonstrated prong 3 of the association test set forth in Jeweler’s Vigilance. The
testimony depositions of most of its “members” and, in particular, the testimony
declaration of Joan Pletcher satisfies prong 1 of the test. Of particular note, Ms.
Pletcher, in her testimony declaration states, inter alia, that she is a Real Estate
Agent located in Ocala, Florida and would suffer a “hardship … if a Real Estate
Agent in Ocala, Florida [is] not allowed to use the term ‘OCALA HORSE
Cancellation No. 92061767
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PROPERTIES’ as a whole or separately to describe the services that they provide.”19
Notably, she makes no mention in her declaration of any affiliation with Petitioner.
In her testimony deposition Ms. Pletcher stated that although she is a member of the
citizens for the Fair Use of “Ocala Horse Properties,” she is not the director and she
did not know of one,20 yet she was instrumental in prosecuting the cancellation.21
As to prong 2, the interest sought to be protected by the “association” is also
satisfied by the Pletcher declaration; that being the right to use the terms “Ocala,”
“Horse,” and “Properties” separately or as a whole to advertise real estate services
and describe the properties relating to these services.22
Petitioner, however, has failed to demonstrate that neither the claim asserted nor
the relief requested requires the participation of individual members in the lawsuit.
Specifically, Petitioner has failed to demonstrate that it is an association under the
laws of Florida. Indeed, the testimony of its purported members belies the fact. For
example, Mr. DeBenedicty, in his declaration on behalf of Pegasus Realty and
Associates, Inc., affirmatively responded to the question of whether he is a member
of the group called “Citizens for the Fair Use of ‘Ocala Horse Properties,’” but
answered the question “[i]s citizens For the Fair Use of ‘Ocala Horse Properties’ a
partnership or corporation?” in the negative.23 When asked how he would describe

19 41 TTABVUE 4.
20 49 TTABVUE 17.
21 See generally, 49 TTABVUE.
22 Id.
23 48 TTABVUE 15.
Cancellation No. 92061767
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the organization, he replied “[i]t’s not an organization as such, it’s several plaintiffs
that have basically agreed to come together for this lawsuit.”24
Similarly, Ms. Lord, representing, Ocala Homes & Farms, indicates that she is a
plaintiff in the proceeding and, in response to the question “[i]s the plaintiffs a
collection of real estate professionals and firms that goes under the name citizens for
the Fair Use of ‘Ocala Horse Properties,’” answered “I guess it is. I have not met with
anyone else. This is my first meeting with counsel here….”25
Jean Ritt of Southern Charm Realty of Central Florida, LLC likewise indicates
that she is a member of citizens for the Fair Use of “Ocala Horse Properties,” but goes
on to testify that there are no written agreements between her and other participants
in the group, nor has the group conducted any business outside of the law suit.26
Gregory Lord, the owner of Homes to Ranches Realty, Inc., testified that he is a
“part of Citizens for the Fair Use of ‘Ocala Horse Properties,’” but also indicated that
there were no written agreements between the parties, that the case has not been
discussed with other individuals that are a part of Citizens for the Fair Use of “Ocala
Horse Properties,” and that from the time of the original decision to go ahead with
the case as part of the group, he has done nothing related to this case.27
Finally, Valerie Dailey, of Horse Country Realty, Inc. d/b/a Showcase Properties
of Central Florida states that she is a member of citizens for the Fair Use of “Ocala

24 Id. at 16.
25 Id. at 47.
26 Id. at 76.
27 Id. at 107, 112 and 123.
Cancellation No. 92061767
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Horse Properties,”28 but that she did not have any meetings with the other members,
and that she did not have any documents or agreements or exchange any emails with
the members.29
Under the circumstances, we find that the organization known as Citizens for the
Fair Use of “Ocala Horse Properties” has not demonstrated that it is a juristic
association under the laws of Florida that could assert the claims alleged or the relief
requested in this cancellation proceeding without the participation of individual
members in the lawsuit. Indeed, instead of referring to the single entity of an
association, the parties in the record refer to plaintiff in the plural, as Petitioners.
Accordingly, Petitioner, Citizens for the Fair Use of “Ocala Horse Properties,” “an
asserted Florida association,” has not proven standing to bring the petition.
Because Petitioner has not demonstrated the threshold requirement of standing,
we need not and do not reach the substantive claims of the petition for cancellation.
Decision: The cancellation is dismissed.

28 Id. at 148.
29 Id. at 149. Ms. Dailey also averred that that there is no “one person responsible for making
decisions” but because there appears to be a typographical error in the questions, we have
given the decision making comment little weight.