City National Bankv.OPGI Management GP Inc./Gestion OPGI Inc.

Trademark Trial and Appeal Board

Apr 26, 2013

No. 92050730 (T.T.A.B. Apr. 26, 2013)

THIS OPINION IS A
PRECEDENT OF THE TTAB

Mailed: April 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

City National Bank
v.
OPGI Management GP Inc./Gestion OPGI Inc.
_____

Cancellation No. 92050730
against Registration No. 3209863
_____

David W. Grace of Loeb & Loeb LLP for City National Bank.

Dickerson M. Downing of Crowell & Moring LLP for OPGI Management GP
Inc./Gestion OPGI Inc.
_____

Before Bucher, Wellington and Kuczma,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
City National Bank (hereinafter “petitioner”) filed a petition to cancel the regis-
tration of OPGI Management GP Inc./Gestion OPGI Inc. (a Canadian corporation
and hereinafter “respondent”) for the mark TREASURYNET in typed character
format for services described as “providing information on financial information,
namely corporate treasury and loan information and commercial real estate proper-
Cancellation No. 92050730

2

ty management information via a global computer network” in International Class
36.1 The registration issued pursuant to Section 44(e) of the Trademark Act, based
on a Canadian Registration, and, accordingly, proof of use of the mark in commerce
in the United States was not required.
As grounds for cancellation, petitioner asserts that respondent, and its prede-
cessor-in-interest, lacked the required bona fide intent to use the mark in commerce
at the time of filing the underlying application for registration in the United States,
and that respondent has abandoned the registered mark because it has not been
used in commerce by respondent since registration.2 Petitioner also asserts, with
regard to its standing, that its own trademark applications have been refused regis-
tration by the Office on the basis of a likelihood of confusion with the subject regis-
tration.
Respondent, in its answer to the amended pleading, denied the salient allega-
tions in the complaint.
The parties have filed trial briefs and a hearing was held on September 5, 2012.

1 Registration No. 3209863 was issued on February 20, 2007. A declaration of use pursuant
to Section 8 of the Act has not been filed; with the grace period, respondent has until Au-
gust 20, 2013 to do so.
2 Petitioner filed an amended petition for cancellation on August 2, 2010. In the amended
pleading, petitioner pleaded a “fraudulent procurement of registration” ground for cancella-
tion, as well as other allegations involving “no valid foreign registration” and “invalid as-
signment of intent to use application;” however, petitioner did not pursue any of these alle-
gations at trial. Accordingly, any possible additional grounds for cancellation based on the-
se assertions are considered to have been waived and have been given no further considera-
tion.
Cancellation No. 92050730

3

Evidentiary Objections
Petitioner filed, concurrently with its trial brief, objections to the following evi-
dentiary submissions of respondent: (1) excerpts from the Rule 30(b)(6) discovery
deposition of respondent’s witness, Mr. Gawain Smart; (2) a three-page Hewlett
Packard document identified as a “brochure”; and (3) “all [trial] testimony by Mr.
Smart concerning events prior to the date in 2008 when Mr. Smart’s employment
commenced.”
Rule 30(b)(6) Deposition Counter-designations
During its testimony period, petitioner submitted certain portions of the Rule
30(b)(6) discovery deposition that it took of respondent’s witness, Mr. Gawain
Smart. In response and during its own testimony period, respondent submitted ad-
ditional passages from the same deposition; the parties have referred to respond-
ent’s submissions as “counter-designations.” Normally a party may not rely on a
Rule 30(b)(6) discovery deposition taken by the adverse party. See Trademark Rule
2.120(j)(1). However, Trademark Rule 2.120(j)(4) provides that “if only part of a dis-
covery deposition is submitted and made part of the record by a party, an adverse
party may introduce under a notice of reliance any other part of the deposition
which should in fairness be considered so as to make not misleading what was of-
fered by the submitting party.”
Petitioner objected to all of respondent’s proposed counter-designations. In re-
sponse to these objections, respondent withdrew all but one of its proposed counter-
designations. Brief, p. 3 (“[Respondent] believes that it has obtained the same in-
Cancellation No. 92050730

4

formation through the testimony of Mr. Smart that it sought to obtain through its
challenged counter-designations and, therefore, it is not necessary to contest Peti-
tioner’s objections with one exception”).3 Thus, the remaining relevant discovery
deposition testimony (under questioning by petitioner’s counsel) is as follows:
Q1. When is the first time you saw [the TreasuryNet intranet site]?
A. Well, the first time I saw the site is when I was employed.

Q2. In 2008?
A. In 2008.

Q3. So do you know what it looked like at any time before that?
A. I do not know.

Q4. You do not know?
A. I’m told though that the site provided the same level of information, per-
haps less than it does today.

Q5. Who told you?
A. I had discussions with members of our Treasury group that are responsi-
ble for operating and maintaining the site.

Smart Dep. 23:13-24:4.
The first three questions and responses were submitted by petitioner, and filed
under a notice of reliance, as testimony that it intends to rely upon at trial. The lat-
ter two questions and responses constitute the counter-designated testimony that
respondent intends to rely upon.

3 The now-withdrawn, proposed counter-designations (Smart Discov. Dep. 10:6-11, 24:18-
25:1, 73:23-25, and 75:1-6) are not further considered.
Cancellation No. 92050730

5

Petitioner argues the counter-designation exceeds the scope of petitioner’s des-
ignated testimony, consists of hearsay, and deponent does not have personal
knowledge to make such statements. Respondent argues that the counter-
designation is an elaboration of Mr. Smart’s initial two answers regarding his
knowledge of the intranet site and thus is both “relevant and responsive.” Respond-
ent’s Response to Objections, p. 4.
The counter-designation, namely, the last two questions and answers, clearly of-
fer context and elaborate on Mr. Smart’s responses to the initial three questions
that petitioner is relying upon. In that respect, it meets the requirements of Trade-
mark Rule 2.120(j)(4). As for the hearsay objection, to the extent that Mr. Smart’s
knowledge of the intranet site pre-2008 is not based on personal knowledge but is
within respondent’s realm of information, this is not entirely inappropriate because,
as respondent’s designated Rule 30(b)(6) witness, he is testifying on behalf of re-
spondent and not himself. Rule 30(b)(6) provides that the party’s designated witness
shall “testify about information known or reasonably available to the organization.”
Fed. R. Civ. P. 30(b)(6).4 We therefore overrule the objection and respondent’s coun-
ter-designation is allowed.

4 Rule 30(b)(6) anticipates that a party’s designated witness will not necessarily have per-
sonal knowledge of all matters but will nonetheless offer testimony regarding information
that the “party” should be able to provide; indeed, one purpose of this rule is that it “will
curb the ‘bandying’ by which officers or managing agents of a corporation are deposed in
turn but each disclaims knowledge of facts that are clearly known to persons in the organi-
zation and thereby to it.” See note to subdivision (b)(6), Fed. R. Civ. P. 30(b)(6). We further
note that a party being deposed under Rule 30(b)(6) cannot use such testimony as a means
to circumvent the hearsay exclusion rule. Such deposition is a discovery tool and, as de-

Cancellation No. 92050730

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Hewlett Packard Brochure
The document in question, as mentioned, consists of three pages and apparently
was published by a third party, Hewlett-Packard Company (also called “HP”), and
begins “HP and Notable Solutions, Inc. deliver a more efficient and cost-effective
customer service infrastructure to Oxford Properties.” At the end of the document is
a copyright notice dated 2003.
In its notice of reliance, respondent states that this document is “available to
the general public in libraries and/or of general circulation among members of the
public through the Internet or that segment of the public which is relevant to the
issues of this proceeding.”
Petitioner has objected to the introduction of this document by way of notice of
reliance because it “has not been authenticated by a competent witness and ... is not
a ‘printed publication’ within the meaning of [Rule 2.122(e)].” Petitioner’s objec-
tions, p. 4. Respondent, on the other hand, points out the document’s copyright no-
tice date and counters that it was downloaded via the internet. In its response to
the objections, respondent provided a URL (internet address) where the document
may be accessed along with printouts from the website. Respondent also cites to the
Board’s decision in Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB
2010), in support of its contention that the document is publicly available through
the internet.

scribed above, any submission of testimony by the testifying party is strictly limited to that
allowed under Rule 2.120(j)(4).
Cancellation No. 92050730

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Trademark Rule 2.122(e) provides that printed publications and official records
may be introduced in evidence by filing a notice of reliance. In Safer, the Board lib-
eralized the practice and interpretation of Rule 2.122(e) by “expanding the types of
documents that may be introduced by notice of reliance to include not only printed
publications in general circulation, but also documents such as [printouts from]
websites, advertising, business publications ... prepared for or by a party or non-
party, if, and only if, they can be obtained through the Internet as publicly available
documents.” Safer at 1039 (emphasis in italics added).
We find that the three-page Hewlett Packard document in question is of the
type that may be submitted by notice of reliance. It is clearly a business publication
or brochure prepared by a third party. Furthermore, respondent has demonstrated,
albeit in response to petitioner’s objections, that the document may be readily ac-
cessed via the internet. Any shortcomings in respondent’s original submission of the
HP document under notice of reliance, such as its failure to identify the URL and
when the document was actually accessed (either printed out or downloaded), are
procedural deficiencies that were not timely raised by petitioner and thus have been
waived.5
Accordingly, petitioner’s objection to respondent’s submission of the HP docu-
ment is overruled.

5 Specifically, respondent filed the notice of reliance on May 3, 2011, and petitioner did not
file its objections until August 17, 2011. See TBMP Section 707.02(b) and cases cited there-
in regarding the waiver of procedural objections.
Cancellation No. 92050730

8

We hasten to add, however, that the HP document has limited probative value
inasmuch as it is admissible solely for what it shows on its face. It cannot be consid-
ered to prove the truth of any matter stated therein. See, e.g., 7-Eleven Inc. v.
Wechsler, 83 USPQ2d 1715, 1717 n.2 (TTAB 2007) (materials made of record by no-
tice of reliance under 37 C.F.R. § 2.122(e) not admissible for the truth of the matters
contained therein, unless a competent witness has testified to the truth of such
matters); Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 12
USPQ2d 1267, 1270 n.5 (TTAB 1989) (annual report in evidence only for what it
showed on its face), aff'd, 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990). Alt-
hough Mr. Smart offered testimony concerning this document, as later discussed in
this decision, his testimony does very little to expand the document’s probative val-
ue to this proceeding.
Testimony of Mr. Smart (As to events prior to May 2008)
Petitioner has objected to respondent’s reliance on the trial testimony of Mr.
Smart “as to any and all events occurring prior to 2008 when Mr. Smart’s employ-
ment by [respondent] began.” Petitioner’s objections at 6. Petitioner contends that
“[a]ny testimony by him about activities before 2008 is incompetent hearsay evi-
dence admissible under no recognizable hearsay exception.” Petitioner’s reply at 4.
In support, petitioner cites to the Board’s decision in American Express Company v.
Darcon Travel Corporation, 215 USPQ 529 (TTAB 1982). Throughout Mr. Smart’s
trial deposition, petitioner timely raised objections as to “lack of foundation” when
Mr. Smart testified to matters involving respondent prior to May 2008.
Cancellation No. 92050730

9

Respondent argues that Mr. Smart has “sufficient reliable knowledge” and is
capable of testifying to matters, including those prior to his employment, based on
his “investigating this matter and discussing issues regarding intent and the like
with the persons with the most knowledge of those issues and by reviewing relevant
documents.” Brief at 22.
Federal Rule of Evidence 602 provides that “[a] witness may not testify to mat-
ter unless evidence is introduced sufficient to support a finding that the witness has
personal knowledge of the matter.” While there are exceptions to this hearsay ex-
clusion rule, including the introduction of business records into evidence, the Board
has held that a witness may not offer testimony regarding company history unless
said witness has personal knowledge thereof:
[T]he [business record hearsay exception] rule does not provide for the admis-
sion into evidence of the testimony of a person who lacks personal knowledge
of the facts, who is unable to testify to the fulfillment of the conditions speci-
fied within the rule, and who is testifying only about what he has read or has
been allowed to review.

Olin Corporation v. Hydrotreat, Inc., 210 USPQ 63, 67 (TTAB 1981). Cf., Kohler Co.
v. Baldwin Hardware Corporation, 82 USPQ2d 1100, 1103 (TTAB 2007) (petition-
er’s witness “began employment ... prior to the earliest date upon which respondent
relies”).
Respondent has not demonstrated that Mr. Smart has personal knowledge re-
garding respondent’s history prior to May 2008 or its use of the term TREAS-
URYNET prior to that date. Indeed, Mr. Smart testified that he worked for several
law firms prior to May 2008 and he had no dealings with respondent or its affiliates
Cancellation No. 92050730

10

prior to his employment with respondent. Respondent acknowledges that Mr. Smart
does not have personal knowledge about respondent’s history prior to May 2008,
and that he only learned about such matters through “discussions” and “investi-
gat[ions].” Subsequent to being asked about events prior to 2008, Mr. Smart was
asked about the “basis of [his] knowledge” and he replied, “[h]aving spoken to our
former general counsel, as well as members of the treasury group and other people
internally at the company.”6
We acknowledge there may be some difficulty for a company involved in a
trademark dispute to produce witnesses with personal knowledge of the company’s
use of its trademarks, especially if such use dates back many years. In certain cas-
es, testimony by a person that his job responsibilities require him to be familiar
with the activities of the company that occurred prior to his employment may be
sufficient to lay a foundation for his subsequent testimony. However, this situation
is not present here. Mr. Smart was testifying to matters pertaining to respondent
that occurred between 2000 and May 2008. This is not ancient history given the
trial in this matter took place in 2010-2011. Mr. Smart’s testimony reveals that re-
spondent could have produced a witness with the requisite personal knowledge of
matters for those years, but respondent did not have this person testify, or provide
any reason why he could not testify.7 Moreover respondent has not shown that Mr.
Smart’s position, as respondent’s in-house counsel, required him to have knowledge,

6 Smart Tr. 22:3-8.
7 Mr. Smart identified, by name, the head of respondent’s “treasury group” as a person
with knowledge of respondent’s activities during the “early 2000’s.” Smart Tr. 60:16-19.
Cancellation No. 92050730

11

let alone knowledge of the particular details, of the matters for which he was testi-
fying and which pre-dated his employment. For example, Mr. Smart offered testi-
mony regarding the content and appearance of respondent’s intranet site for the
years preceding 2008, but it was not shown how this type of information would nec-
essarily be obtained through the normal course of his employment as in-house coun-
sel.
In sum, it has not been shown that Mr. Smart has sufficient personal knowledge
regarding respondent and any use of the term TREASURYNET, prior to his em-
ployment in May 2008. Any testimony provided by Mr. Smart in this regard is
based on discussions with respondent’s former general counsel or other employees of
respondent and clearly constitutes inadmissible hearsay. Respondent has not
demonstrated that such testimony may be admitted through any possible exception
to the hearsay exclusion rule. Mr. Smart also offered testimony regarding a docu-
ment identified as a Thomson & Thomson search report for “TreasuryNet” over pe-
titioner’s objections due to “lack of foundation.” While petitioner did not specifically
object to the introduction of the search report itself, it did object to Mr. Smart’s tes-
timony regarding the exhibit because the search report was produced prior to Mr.
Smart’s employment and he stated that the basis for his knowledge of the report
was discussions with other employees of respondent. Thus, the search report is of
record and has been considered; however, for reasons already provided, Mr. Smart’s
testimony concerning the search report constitutes impermissible hearsay and is
disregarded.
Cancellation No. 92050730

12

In view thereof, petitioner’s objection is sustained and Mr. Smart’s testimony
concerning respondent and its activities prior to May 2008 has not been given fur-
ther consideration. See, Coach Services Inc. v. Triumph Learning LLC, 96 UPSQ2d
1600, 1603 (TTAB 2010), aff’d in relevant part, 668 F.3d 1356, 101 USPQ2d 1713,
1730 (Fed. Cir. 2012) (Board sustained opposer’s objection by limiting testimony
from applicant’s witness “only for purposes of authenticating documents kept by
applicant in the ordinary course of business” and excluding testimony regarding
events that pre-existed the witness’ employment and for which the witness did not
otherwise have personal knowledge).
The Record
The record, by operation of the rules, includes the pleadings and the file of the
subject registration.
In addition, petitioner has submitted the testimony, with exhibits, of Mr. Steven
Wildemuth, a Senior Vice President for petitioner.
In its initial and rebuttal testimony periods, petitioner filed several of notices of
reliance on the following materials: copies of the file history for petitioner’s trade-
mark applications for the marks TREASURY NET8 and CITY NATIONAL TREAS-
URY NET9; copies of respondent’s responses to petitioner’s first set of document re-

8 Application Serial No. 78225993.
9 Application Serial No. 78225994.
Cancellation No. 92050730

13

quests10 and first set of interrogatories; excerpts of the discovery deposition of Mr.
Smart, as supplemented; copies of the file histories for applications and registra-
tions currently or previously owned by respondent, obtained from the Trademark
Office database; and copies from the Canadian CIPO trademark database involving
applications and registrations currently or previously owned by respondent.
As previously noted, respondent filed a copy of the testimonial deposition of Mr.
Smart and a notice of reliance. In accordance with petitioner’s sustained objections,
Mr. Smart’s testimony is limited to testimony that does not involve respondent’s
history prior to May of 2008, and the only evidence considered of record by way of
the notice of reliance is the HP document.
Standing
Respondent has conceded petitioner’s standing. Brief at 15. In any event, the
record includes petitioner’s applications in which the subject registration has been
cited against registration of petitioner’s marks and this demonstrates that petition-
er is not a “mere intermeddler” and that it has standing to petition to cancel re-
spondent’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).

10 We note that petitioner submitted respondent’s responses to the requests and not any
produced documents. Responses are admissible solely for purposes of showing that a party
has stated that there are no responsive documents; documents produced in response to the
requests are generally not admissible by notice of reliance alone. Rule 2.120(j)(3)(ii); see also
TBMP Section 704.11.
Cancellation No. 92050730

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The Grounds For Cancellation/Issues
Although the grounds for cancellation were pleaded to be abandonment (i.e.,
non-use plus lack of intent to resume use) and lack of a bona fide intent to use the
mark in commerce, the underlying basis for both of petitioner’s claims in this pro-
ceeding is that any use by respondent of the term TREASURYNET has thus far
been solely for respondent’s internal use, not for use by others, and thus the term
was never used in commerce in connection with the services recited in the registra-
tion. Likewise, petitioner contends that respondent’s predecessor-in-interest lacked
the requisite bona fide intent to use the mark in commerce because the actual man-
ner in which it intended to use (and later did use) the term TREASURYNET was,
and is, not proper use in commerce.
As a result, a threshold issue in this proceeding is whether respondent’s, or its
predecessor-in-interest’s, use of TREASURYNET constitutes use in commerce in
connection with the recited services of providing information on financial infor-
mation, namely corporate treasury and loan information and commercial real estate
property management information via a global computer network. We note that the
issue of how respondent is actually using the term TREASURYNET is not really in
dispute; rather, the crux of the parties’ disagreement involves the legal conclusions
that should be drawn therefrom, i.e., whether such use constitutes service mark use
in commerce in connection with the recited services.
Respondent and Its Use of TREASURYNET
Cancellation No. 92050730

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Before addressing the merits of the grounds for cancellation, and necessarily the
above-mentioned threshold issue in this proceeding, a brief discussion of the record
and respondent’s activities, with an emphasis on its manner of use of the term
TREASURYNET, is in order. In this regard, we note that nearly all pertinent factu-
al findings are based on the testimony of Mr. Smart inasmuch as he is the sole wit-
ness with personal knowledge of respondent’s activities, at least since his employ-
ment began in May 2008.
Respondent is “part of the property management group of OMERS (the Ontario
Municipal Employees Retirement System), a large pension fund headquartered in
Ontario, Canada” and manages approximately US$65 billion in assets. Brief, p. 5,
citing to Smart Tr. 6:13-20. Respondent manages approximately US$16 billion in
property located in the United States for OMERS and has approximately 1,300 em-
ployees located in Canada, the United States and elsewhere. Respondent is also the
successor-in-interest to the original registrant, Oxford Development Group, Inc.,
which was purchased by OMERS circa 2001.11
Respondent, in conducting its business, owns an intranet website whereby re-
spondent’s employees may access an informational database identified as “Treas-
uryNet.” The database contains financial information concerning the various prop-
erties owned or co-owned by OMERS and/or managed by respondent. Mr. Smart has
testified that “TreasuryNet is a service that’s provided principally for third-party co-

11 An assignment of “an undivided part of assignor’s interest” in Registration No. 3209863
to respondent was recorded with the Office on November 21, 2002 (reel/frame 2624/0096),
with an assignment execution date of October 15, 2001.
Cancellation No. 92050730

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owners who own real estate with [respondent or OMERS], and it provides up-to-
date cash management information on the inflows and outflows for each of our
properties.”12 However, Mr. Smart also testified that third parties cannot directly
access the information in the company’s TREASURYNET database; rather, only re-
spondent’s employees have access to the intranet site and the TREASURYNET da-
tabase. According to Mr. Smart, in order for third parties, such as property co-
owners, to access any information from the TREASURYNET database, they would
“speak to one of our property managers and they get a report that’s generated based
on TreasuryNet.”13 Again, the information obtained from the TREASURYNET da-
tabase is “not available electronically [to third parties], although the information –
reports can be generated from the site and made available to outside people.”14
Respondent does not “advertise under the TreasuryNet mark.”15 There is no ev-
idence that TREASURYNET was even identified or mentioned on respondent’s ex-
ternal website prior to end of 2010,16 or that third parties regard respondent’s use of
TREASURYNET as a service mark used in connection with the recited services. In-
deed, under cross-examination, Mr. Smart testified that he has no personal
knowledge of any third party using the term TREASURYNET in connection with
respondent. Specifically, while Mr. Smart testified that he himself accesses the

12 Smart Tr. 22:10-15.
13 Smart Tr. 25:21-23.
14 Smart Tr. 49:4-8.
15 Smart Tr. 54:4-6.
16 Mr. Smart testified that a “pop up box” use of the TREASURYNET term on its external
website was added “in response to [the cancellation proceeding].” Smart Tr. 80:13-15.
Cancellation No. 92050730

17

TREASURYNET database on a fairly regular basis, he has no personal knowledge
of third parties using the TREASURYNET term in requesting financial information
services from respondent.
Mr. Smart offered testimony regarding the HP document. As previously dis-
cussed, this document was submitted via notice of reliance and, over petitioner’s ob-
jections, allowed to be introduced for what it shows on its face. Mr. Smart has char-
acterized this document as evidence showing TREASURYNET being “used on third-
party advertising.”17 However, under cross-examination, he testified that this was
the only “third-party advertisement” that he is aware of that mentions TREAS-
URYNET.18 Furthermore, based on Mr. Smart’s testimony, it is clear that he knows
nothing about this document other than what it shows on its face. He could not
state with certainty how or where the HP document was accessed, whether it was
placed in a magazine, or the number of copies published, if any, or any other infor-
mation relevant to the issue at hand.19 Ultimately, Mr. Smart conceded that “other
than ... it was publicly available, I don’t know anything about it.”20 Even when
asked for his basis for stating it was “publicly available,” he seemed unsure and of-
fered “I believe my attorney did a search and found it on the internet.”21

17 Smart Tr. 55:18-20, Exhibit 13.
18 Id. at 90:13.
19 Id. at 90-91.
20 Id. at 91:5-7.
21 Id. at 91:10-11.
Cancellation No. 92050730

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Upon review of the Hewlett Packard document, and allowing for all reasonable
inferences that may be gleaned therefrom, we do not view this as evidence of re-
spondent’s use of the term TREASURYNET as a service mark or even as a refer-
ence to any services being rendered by respondent under the same term. Rather, the
document appears to be an advertisement or press release issued by HP touting its
ability (and that of an additional company) in assisting respondent through a pilot
program to improve the TREASURYNET database software and create a less-
paper-oriented environment. While the article refers to “[t]he testimony of the users
involved in the TreasuryNet pilot,” we construe this as a reference to users of the
database involved in the pilot program and not actual customers of any services
rendered by respondent.
Whether Respondent’s Use of TREASURYNET
Constitutes Use in Commerce

Based on the aforementioned facts, and indeed the entire record, we find that
respondent has not demonstrated that it has ever used TREASURYNET as a mark
in commerce in connection with the recited services. Rather, the evidence shows
that respondent’s use of TREASURYNET, since at least May 2008, is solely for in-
ternal purposes and not in any manner which can be construed as use in commerce
in connection with the recited services rendered to others.
“Use in commerce” is defined, in pertinent part, in Section 45 of the Act as:
[T]he bona fide use of a mark in the ordinary course of trade, and not
made merely to reserve a right in a mark. For purposes of this chap-
ter, a mark shall be deemed to be in use in commerce--

Cancellation No. 92050730

19

... on services when it is used or displayed in the sale or adver-
tising of services and the services are rendered in commerce, or
the services are rendered in more than one State or in the Unit-
ed States and a foreign country and the person rendering the
services is engaged in commerce in connection with the services.

15 U.S.C. § 1127.

Respondent contends that “there is no question” that it “provides tangible ser-
vices directly to its employees under the TREASURYNET mark.” Brief at 31. Re-
spondent argues that such services are “real and tangible and range from infor-
mation services regarding [respondent’s] various properties and financial infor-
mation to links to other sites where employees can obtain information about market
conditions and the like.” Id. Respondent cites to an article from THE TRADEMARK
REPORTER and several cases to support its position that such exclusive internal use
of a mark may constitute use in commerce.
Respondent’s contention that its provision of the TREASURYNET database via
its intranet site to its employees constitutes services in commerce, as contemplated
by the Lanham Act, is not well taken because the primary beneficiary is respondent
itself. Nearly all authorities that have addressed the issue of whether an entity’s
internal use of a proposed mark constitutes use in commerce for registration pur-
poses have acknowledged that the primary beneficiary of any services provided un-
der the mark should be individuals or entities other than the party rendering the
services. To wit, in the same article from THE TRADEMARK REPORTER referenced by
respondent, the author points out that registration may be refused because “[a] ser-
vice performed by the applicant for itself is not considered a service.” Krizman, Lisa
Cancellation No. 92050730

20

K., But It’s For Internal Use Only! A Guide for Trademark Counsel, 91 TMR 964,
970 (2001), referencing what is now Section 1301.01(a) of the Trademark Manual of
Examining Procedure (TMEP). The current, relevant section of the TMEP elabo-
rates:
To be a service, an activity must be primarily for the benefit of someone other
than the applicant. ... [A] company that sets up a personnel department to
employ workers for itself is merely facilitating the conduct of its own busi-
ness, while a company whose business is to recruit and place workers for oth-
er companies is performing employment agency services.
The controlling question is who primarily benefits from the activity for which
registration [of the mark] is sought. ... if the activity primarily benefits appli-
cant, it is not a registrable service even if others derive an incidental bene-
fit. In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987) (con-
test promoting applicant’s goods not a registrable service, even though bene-
fits accrue to winners of contest); In re Alaska Northwest Publishing Co., 212
USPQ 316 (TTAB 1981).
TMEP Section 1301.01(a)(ii) (October 2012).
Moreover, the cases cited by respondent are not persuasive because they are
based on substantially different circumstances from those in this proceeding. For
example, in Am. Int’l Reinsurance Co. v. Airco, Inc., 570 F.2d 941, 197 USPQ 69, 71
(CCPA 1978), the predecessor of our primary reviewing court found the applicant
therein, a manufacturer of sundry products, was rendering a service in commerce
and acquired trademark rights by using its mark in connection with administering
an annuity pension plan on behalf of its employees. The court pointedly noted that
the employees had the option to use the employer’s services or they could “go to the
marketplace and select a different annuity plan.” The Airco employee, in other
words, was personally the recipient and the primary beneficiary of a retirement
Cancellation No. 92050730

21

pension benefit service and had the option of receiving the same or similar service
from a different company. In contrast, respondent herein is the real beneficiary and
not its employees who are accessing the TREASURYNET database in order to per-
form their jobs. Respondent also cited to the decision in Huthwaite, Inc. v. Sunrise
Assisted Living, Inc., 261 F. Supp.2d 502, 66 USPQ2d 1902 (E.D. Va. 2003), which
may be distinguished based on the nature of the claims as well as the facts. In
Huthwaite, the district court found on summary judgment in a trademark infringe-
ment action that an in-house sales training program constituted a service, as con-
templated by the Lanham Act, because:
First, there is no doubt that Sunrise's employees received a pre-
sumably valuable benefit from the training; they learned the
SPIN Selling method. The purpose of the training program was
to improve their performance as salespeople, and any such im-
provement would almost certainly redound to the individual
salesperson's benefit, whether in the form of a higher salary,
higher commissions, a promotion, or simply greater job security.
Furthermore, employees leaving Sunrise are able to take their
SPIN Selling training experience with them, and Huthwaite
provided evidence suggesting that this may well be a valuable,
marketable credential. This factor is especially relevant given
the high turnover among the Sunrise sales staff. Thus, although
Sunrise's primary purpose in offering the sales training was
surely to increase the performance of its sales staff and thereby
improve its bottom line, rather than to provide a perk for its
employees, the fact that training provided the employees with a
valuable benefit is sufficient to satisfy the “for the benefit of an-
other” test. See Morningside 182 F.3d at 138.

66 USPQ2d at 1912.
Petitioner has raised issues concerning the applicability of the court’s approach
in Huthwaite to this matter because the court was determining “use in commerce”
in the context of a trademark infringement action versus the “use in commerce” re-
Cancellation No. 92050730

22

quired for purposes of registration. Even putting this distinction aside, we find that
the facts of this proceeding are different and respondent’s use of TREASURYNET
does not rise to the level of “use in commerce” contemplated under the more lenient
Huthwaite approach. Respondent’s employees are not being offered a benefit and
otherwise taught skills that are transferrable to other positions outside of their em-
ployment with respondent. Rather, respondent’s employees are merely using re-
spondent’s proprietary database as a source of information in performing their
work; they would not have access to this database upon leaving their job with re-
spondent. The record in this proceeding provides no indication how respondent’s
employees would personally benefit from having access to the TREASURYNET da-
tabase other than the satisfaction of knowing that they are fulfilling their employ-
ment duties on behalf of respondent.
To the extent respondent’s argument is that third-party co-owners, and not just
its own employees, are the intended consumers, there are no facts to support a find-
ing that respondent has used the term TREASURYNET in connection with any ser-
vices recited in the registration with respect to these co-owners. Again, respondent
does not advertise its ability to provide information under the TREASURYNET
mark and only respondent’s employees can access the TREASURYNET database.
Furthermore, based on Mr. Smart’s description, TREASURYNET is merely the
name of a database or tool utilized by its employees to access information and said
information may be passed on to co-owners of respondent’s properties. There is no
evidence showing that the co-owners are even aware of the TREASURYNET data-
Cancellation No. 92050730

23

base. Finally, the “financial information services” as recited in the subject registra-
tion are described as being rendered “via a global computer network” whereas re-
spondent, by its own admission, only provides TREASURYNET database-derived
information “manually” in reports to the co-owners of properties.22 In other words,
the co-owners would not be acquiring the information directly from a global com-
puter network.
With the above in mind, we now address the abandonment ground for cancella-
tion.
Abandonment
The Trademark Act provides for the cancellation of a registration if the regis-
tered mark has been abandoned. See Section 14 of the Trademark Act, 15 U.S.C.
§ 1064. Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a mark is consid-
ered abandoned when “its use has been discontinued with intent not to resume such
use.” The definition of abandonment is found in this provision, as follows:
A mark shall be deemed to be "abandoned" if either of the following occurs:
(1) When its use has been discontinued with intent not to
resume such use. Intent not to resume may be inferred
from circumstances. Nonuse for 3 consecutive years shall
be prima facie evidence of abandonment. “Use” of a mark
means the bona fide use of such mark made in the ordi-
nary course of trade, and not made merely to reserve a
right in a mark.
…

See 15 U.S.C. §1127.

22 Smart Tr. 85:13-16.
Cancellation No. 92050730

24

A presumption of abandonment based on three years nonuse may be invoked
against a Section 44(e) registrant who never begins use of the mark or who discon-
tinues using the mark. Saddlesprings, Inc. v. Mad Croc Brands, Inc., 104 USPQ2d
1948 (TTAB 2012). See also, Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d
1575, 14 USPQ2d 1390, 1395 (Fed. Cir. 1990).
Because registrations are presumed valid under the law, the party seeking to
cancel a registration on the ground of abandonment must rebut this presumption by
a preponderance of the evidence. See On-Line Careline Inc. v. America Online Inc.,
229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); and Cerveceria Centroamericana
S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989). If
petitioner makes a prima facie case of abandonment, the burden of production, i.e.,
going forward, then shifts to the registration holder to rebut the prima facie show-
ing with evidence. Id.
Based on the entire record, including the discussed findings of fact and conclu-
sion that respondent has not used TREASURYNET as a mark in commerce in con-
nection with the recited services, we necessarily find that respondent has aban-
doned its mark. Specifically, respondent has not used TREASURYNET in commerce
in connection with the recited services since at least the date of issuance of the reg-
istration, February 20, 2007, resulting in over three years of nonuse. Thus the rec-
ord more than supports a prima facie case of abandonment and respondent has not
rebutted this showing.
Cancellation No. 92050730

25

Even assuming, arguendo, that we were to extend respondent’s current activi-
ties and its use of TREASURYNET as dating back to 2000 – and we do not do so be-
cause the record does not support this – we would reach the same conclusion as to
abandonment. That is, because we find that respondent’s use of TREASURYNET
since 2007 does not constitute use in commerce in connection with the recited ser-
vices, then logically any previous use of TREASURYNET by respondent (e.g., 2000
to 2007) cannot establish use in commerce subsequent to 2007. Similarly, our ex-
clusion for hearsay reasons of Mr. Smart’s testimony regarding respondent’s activi-
ty prior to his employment is not determinative on the ultimate outcome of this pro-
ceeding. Mr. Smart’s testimony regarding pre-2008 activities would only serve to
confirm that respondent has used the term TREASURYNET in the identical, non-
service mark manner for many more years. Thus, allowing his testimony would on-
ly establish an even longer period of non-use as a service mark.
Decision: The petition to cancel on the ground of abandonment is granted, and
Registration No. 3209863 will be cancelled in due course.23

23 Because we find that respondent has abandoned its mark and the registration is can-
celled on this ground, we need not, and do not, reach the second ground involving an alleged
lack of bona fide intent to use the applied-for mark at the time of filing the underlying ap-
plication for registration in the United States.