Cristiano Di Thiene S.p.A.v.Lazaridis E. Panagiotis

Trademark Trial and Appeal Board

Jul 8, 2013

No. 91197328 (T.T.A.B. Jul. 8, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: July 8, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Cristiano Di Thiene S.p.A. v. Lazaridis E. Panagiotis _____ Opposition No. 91197328 _____ Miriam D. Trudell of Sheridan Ross P.C. for Cristiano Di Thiene S.p.A. Lazaridis E. Panagiotis pro se. _____ Before Kuhlke, Bergsman, and Hightower, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Lazaridis E. Panagiotis (“applicant”) filed an intent-to-use application to register the mark AERONAUTICA MILITARE, in standard character form, for a wide variety of clothing items in Class 25. Cristiano Di Thiene S.p.A. (“opposer”) lodged an objection to the registration of applicant’s mark on the grounds of (1) likelihood of confusion, (2) dilution, (3) that applicant did not have a bona fide intent to use his mark in commerce as of the filing date of the application, and (4) fraud. Opposition No. 91197328 2 There were problems regarding applicant’s answer because applicant filed its answer pro se. The answer was argumentative and not in compliance with Fed.R.Civ.P. 8(b) or Trademark Rule 2.106(b)(1), 37 CRF § 2.106(b)(1). Applicant did not admit or deny each of the allegations set forth in the notice of opposition, let alone specifically address every numbered paragraph; rather applicant filed a general denial of opposer’s claims. For example, applicant requested that the opposition be denied by stating that “[t]he objection to the registry of U.S. Trademark Application Serial No. 77/887960 is overruled” and that “Opposer has no prior rights.” In addition, applicant alleged that opposer is not using the mark in the United States. 2) The Opposer failed to proof [sic] either a use of the sign “Aeronautica Militare” in business affairs or the importance of not limited to location of a trade in business affairs before the registry of the U.S. Trademark sufficiently. It is undisputed that there are no older rights from registered brands (mentioned brands) and this is not the matte [sic] of the objection proceedings. The Opposer is furthermore not the owner of the sign “AERONAUTICA MILTARE.” * * * 5) Contrary to the opinion of the Opposer the enclosures of Exhibit 1, 2, 3 do not proof [sic] sufficiently an actual use of the sign “Aeronautica Militare” in business affairs within the United States of America. Thus, it does not appear, if the claimed business activities, sales contracts and publications actually are assigned to the assignor of the objection leader CRISTIANO DI THIENE S.P.A. … 6) The Opposer can not present explicit documents (e.g., offers, bills, packing, labels, catalogs, balance sheets) to Opposition No. 91197328 3 show a sufficient use of importance not limited to location also inside the United States of America. The requirements of the obligation to produce supporting documents are not fulfilled. Although Fed.R.Civ.P. 8(b) provides that an answer that fails to deny a portion of an allegation may be deemed admitted to that portion, we exercise our discretion to interpret applicant’s answer as denying all of the salient averments in the notice of opposition. See Fed.R.Civ.P. 8(e) (“Pleadings must be construed so as to do justice.”). Applicant’s answer was sufficient to put opposer on notice that its claims were being challenged and that opposer would be required to prove its case. See Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 1713 (Fed. Cir. 1991). Inasmuch as the opposition has proceeded through trial and briefing, opposer must have been aware that applicant was denying opposer’s clams and that opposer was required to prove its case. Moreover, there was no attempt by applicant to evade the pleading requirements of Rule 8 by equivocal admissions or denials. Thus, opposer’s argument that “all assertions in the Notice of Opposition are deemed admitted,” is not creditable.1 Evidentiary Issues A. Declaration of Armando Sperotto. Opposer submitted the Declaration of Armando Sperotto, opposer’s Chief Executive Officer, pursuant to Trademark Rule 2.122, 37 CRF § 2.122. However, 1 Opposer’s Brief, p. 8. If opposer did not understand applicant’s answer, opposer could have filed a motion to strike from the answer any insufficient defense or any redundant or immaterial matter pursuant to Fed.R.Civ.P. 12(f). Opposition No. 91197328 4 Rule 2.122 does not provide for the introduction of testimony through affidavits or declarations by a notice of reliance. Moreover, Trademark Rule 2.123(b), 37 CFR § 2.123(b) expressly provides that “[b]y written agreement of the parties, the testimony of any witness or witnesses of any party, may be submitted in the form of an affidavit by such witness or witnesses.” Trademark Rule 2.123(l), 37 CFR § 2.123(l) provides that “[e]vidence not obtained or filed in compliance with these sections will not be considered.” Because there is no written agreement between the parties providing for testimony by declaration, we may not consider the declaration of Armando Sperotto.2 B. Opposer’s responses to applicant’s first set of interrogatories and first set of requests for admission. By notices of reliance, opposer introduced its responses to applicant’s first set of interrogatories and applicant’s first set of requests for admission. With the exception of circumstances not relevant to this case, responses to interrogatories or requests for admission may be submitted and made part of the record by only the inquiring party. Trademark Rule 2.120(j)(5), 37 CFR § 2.129(j)(5). See also Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802, 804 n.8 (TTAB 1982); Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ 949, 950 (TTAB 1981). Accordingly, we will not consider opposer’s responses to applicant’s 2 On January 23, 2012, the parties filed a stipulation to extend opposer’s testimony period because the parties anticipated “reaching an agreement on methods of introducing testimony.” However, as indicated above, the parties did not file a stipulation permitting testimony by affidavit or declaration. Opposition No. 91197328 5 first set of interrogatories or first set of requests for admission filed by opposer through a notice of reliance. C. Opposer’s Exhibits I, J and K introduced through a notice of reliance. Opposer introduced into the record through notices of reliance correspondence, invoices, a trademark license, and what appears to be a Power Point presentation. There is no provision in the Trademark Rules of Practice for the introduction of correspondence, invoices, a trademark license, and a Power Point presentation through a notice of reliance. Accordingly, we may not consider Opposer’s Exhibits I, J and K.3 D. Applicant’s responses to opposer’s request for production of documents and opposer’s responses to applicant’s request for production of documents. Opposer introduced into the record through notices of reliance applicant’s responses to opposer’s request for production of documents and opposer’s responses to applicant’s request for production of documents. Documents produced in response to document production requests cannot be made of record by notice of reliance. See Trademark Rule 2.120(j)(3)(ii), 37 CFR § 2.120(j)(3)(ii). Accordingly, we may not consider applicant’s responses to opposer’s requests for production of documents. However, to the extent that any of the documents were printed from the Internet and meet the requirements set forth in Safer Inc. v. OMS Investments, 3 Exhibit K also included some unidentified documents in a foreign language. The documents do not appear to be of a type that would be admissible through a notice of reliance. However, assuming that the documents were admissible through a notice of reliance, because they are in a language other than English, they have no probative value. Opposition No. 91197328 6 Inc., 94 USPQ2d 1031 (TTAB 2010),4 we will consider those documents for whatever probative value they may have.5 The Record 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.6 In addition, opposer introduced the following evidence through a notice of reliance: 1. A copy of opposer’s European Registration for the mark AERONAUTICA MILITARE for a variety of products including clothing; 2. Applicant’s responses to opposer’s first set of requests for admission and interrogatories; 3. Documents printed from the Internet included in opposer’s responses to applicant’s first request for production of documents; 4. Other pending U.S. and foreign trademark applications filed by applicant.7 4 The document must display the date of publication or date that it was accessed and printed and its source (e.g., the URL). 94 USPQ2d at 1039. 5 Documents printed from the Internet have little probative value. They are admissible only to show what has been printed, not the truth of what has been printed. 94 USPQ2d at 1040. 6 Accordingly, it was not necessary for opposer to introduce the application through a notice of reliance. 7 Although information concerning a party’s foreign use of its involved marks is usually irrelevant to the issues in a Board proceeding, exceptions may arise where, for example, there is an issue as to whether a party’s adoption and use of the mark in the United States was made in bad faith for the purpose of forestalling a foreign user’s expansion into the United States, or where the foreign mark is famous, albeit not used, in the United States. See Mastic Inc. v. Mastic Corp., 230 USPQ 699, 702 (TTAB 1986) (in view of applicant's knowledge of opposer’s claim to mark in foreign countries and of opposer's intention to enter U.S. market, it appears that applicant intended to preclude opposer from entering Opposition No. 91197328 7 Applicant did not introduce any testimony or evidence during his testimony period. Opposer filed a brief on the case. Applicant did not file a brief. Standing A threshold question in every inter partes case is whether the plaintiff has established its standing. See TBMP § 309.03(b) (3rd ed. rev.2 2013). In a Board proceeding, the plaintiff is required to prove that it has a “real interest”; that is, a “direct and personal stake,” in the outcome of the proceeding. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Opposer has alleged common law trademark rights in the mark AERONAUTICA MILITARE in connection with clothing in commerce between Italy and the United States.8 Specifically, opposer has alleged that it has used the mark AERONAUTICA MILITARE in connection with the shipping and sale of clothing from Italy to the United States since as early as March 2007.9 Also, opposer alleged the mark AERONAUTICA MILITARE became famous in the United States for clothing before the filing date of the application at issue.10 Opposer introduced the following evidence to support its standing:11 U.S. market). Both of the illustrative examples noted above appear to be relevant in this proceeding. 8 Notice of Opposition ¶3. 9 Notice of Opposition ¶5. 10 Notice of Opposition ¶¶ 20-21. 11 See Opposer’s Brief, pp. 10-11. Opposition No. 91197328 8 1. A copy of European Trademark Registration No. 008425514 for the mark AERONAUTICA MILITARE for, inter alia, “clothing, footwear, headgear,” in Class 25.12 This registration establishes that opposer has a registration for the mark AERONAUTICA MILITARE in the European Trademark Office; it does not prove that opposer is using the mark AERONAUTICA MILITARE in the United States. 2. Applicant admitted that “[t]o the extent Opposer requests an admission that Applicant was aware that Opposer applied the words ‘AERONAUTICA MILTARE’ to items of clothing, at least in some parts of Europe, on or before December 7, 2009, then Request for Admission No. 3 is Admitted in part.”13 Applicant’s response to this request for admission establishes that applicant is aware that opposer used the mark AERONAUTICA MILITARE in Europe; it does not serve as an admission that applicant is aware of opposer’s use of AERONAUTICA MILITARE in the United States or that applicant is or was aware that opposer intended to use that mark in the United States. However, the response is sufficient to establish that opposer has used the mark in Europe. 3. The documents identified below were submitted by opposer in response to applicant’s request for production of documents discussed in the previous section. a. A screen shot presumably from opposer’s website purporting to show two addresses of retailers in the United States that sell opposer’s clothing.14 12 Issued February 7, 2010. (TTABVue 15). 13 TTABVue 16, p. 3. 14 TTABVue 31, p. 42 (Opposer’s Exhibit E, p. 119). Opposition No. 91197328 9 However, the document does not comply with the requirements for introducing Internet documents because it does not display the URL and date the document was printed. 94 USPQ2d at 1039. b. Screen shots from opposer’s website (cristianodithiene.com/aeronautica/ca.asp?=Ita), dated May 9, 2011, promoting “AERONAUTICA MILITARE - collezione private.”15 The web pages are essentially illegible. Even though the web pages are in English, they do not prove that opposer is selling or has been selling clothing in the United States. As noted above in footnote No. 5, documents printed from the Internet are admissible only to show what has been printed, not the truth of what has been printed. 94 USPQ2d at 1040. However, the web pages show that opposer is advertising a line of AERONAUTICA MILITARE clothing. c. An article about opposer, dated February 18, 2011, posted in Fashionmag.com.16 The article states the following: The brand is in the process of expanding in North America with the help of Antoine di Capua, an Italian established in New York and Los Angeles. Although products are already sold in France and in America, the first real collection is going to launch during Autumn/Winter 2011-12. d. A web page from opposer’s website (cristianodithiene.com/aeronautica/ca.asp?=Ita), dated May 9, 2011 purporting to 15 TTABVue 31, pp. 43-56 (Opposer’s Exhibit E, pp. 120-133). 16 TTABVue 31, pp. 57-58 (Opposer’s Exhibit E, pp. 134-135). Opposition No. 91197328 10 list two retailers that sell opposer’s AERONAUTICA MILITARE clothing.17 Because documents printed from the Internet are admissible only to show what has been printed, not the truth of what has been printed (94 USPQ2d at 1040), the web page shows only the addresses of two companies listed in opposer’s website under the heading “United States.” The web page is not sufficient to prove that opposer is using the mark AERONAUTICA MILITARE in connection with clothing in the United States. e. A screen shot of the website YOOX.com advertising the sales of clothing.18 However, the text is illegible so that the viewer cannot identify what brand is being advertised or when the screen shot was copied. Opposer also introduced the Wikipedia entry for YOOX which is identified as an “Italian internet mail order retailer of men’s and women’s multibrand clothing and accessories.”19 Nothing about the YOOX.com provides evidence that opposer is using the mark AERONAUTICA MILITARE in the United States. f. A copy of an undated web page from opposer’s website promoting what appears to be recognition by “Cool Brands” dated April 16, 2010.20 This web page does not prove that opposer is using the mark AERONAUTICA MILITARE in the United States. 17 TTABVue 28, p. 54 (Opposer’s Exhibit E, p. 207). 18 TTABVue 30, pp. 37-41 (Opposer’s Exhibit E, pp. 36-40). 19 TTABVue 29, pp. 63-70 (Opposer’s Exhibit E, pp. 281-288). 20 TTABVue 30, p. 42 (Opposer’s Exhibit E, p. 41). Opposition No. 91197328 11 While the above-noted evidence does not prove that opposer is using the mark AERONAUTICA MILITARE in the United States, it is sufficient to prove that opposer is a marketer of clothing. As a marketer of clothing, opposer has standing to raise the issue of fraud. See Uziel Gal v. Israel Military Industries of the Ministry of Defense of the State of Israel, 230 USPQ 669, 674 (TTAB 1986) (“UZI R&D Associates … alleges that it is a manufacturer, marketer and seller of arms and ammunition. This is sufficient … to give opposer UZI R&D Associates standing, as a weapons manufacturer, to raise the issues … that applicant's statement to the Office that ‘UZI’ had no meaning in the trade other than as a trademark was fraudulent, in view of applicant's knowledge that said term is the common descriptive designation for a certain type of weapon.”). In this regard, the Board has held the following: It is a settled principle in practice before the Board that, to have standing or real interest in an action based upon fraud or abandonment under Section 14(c), it is necessary for the party in position of plaintiff to plead use of, or be in a position to use, in its own right, the same or a similar mark for the same or similar goods and that the continued registration of the mark sought to be cancelled would be or is in derogation of the plaintiff's right to continue to use its marks to place its goods on the market. Miller v. B & H Foods, Inc., 209 USPQ 357, 359 (TTAB 1981). Once an opposer meets the requirements for standing, it can rely on any of the statutory grounds for opposition set forth in Section 2 of the Trademark Act of 1946, 15 U.S.C. § 1052. See Coach Services, Inc. v. Triumph Learning LLC, 668 F.3rd 1356, 101 USPQ2d 1713 (Fed. Cir. 2012); Petróleos Mexicanos v. Intermix SA, 97 USPQ2d 1403, 1405 (TTAB 2010). Opposition No. 91197328 12 Likelihood of Confusion In order to prevail on the ground of likelihood of confusion under Section 2(d) of the Act, it is the opposer’s burden to prove both priority of use and likelihood of confusion. Because the opposer in this case has not submitted any registrations, it must rely on its common law rights, and is not entitled to any of the presumptions accorded to a registration by Section 7(b) of the Trademark Act. See Trademark Act Section 7(c), 15 U.S.C. § 1057(c). See also Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840 (TTAB 1995). With respect to the issue of priority, applicant did not submit any evidence about its use of its mark, and therefore the earliest date on which it may rely is the filing date of its application, December 7, 2009, which is its constructive use date. Therefore, it is opposer’s burden to show that it acquired trademark rights in the AERONAUTICA MILITARE mark, in the United States, prior to that date, or use analogous to trademark rights prior to that date, and that applicant’s use of its mark for its goods is likely to cause confusion with opposer’s use of its mark for its goods. As pointed out in the discussion regarding opposer’s standing, there is no evidence that proves opposer is using the mark AERONAUTICA MILITARE in the United States. Because opposer has not demonstrated it is using, or it has used, the mark in the United States, it has not established its date of first use, it has not shown that it has priority, and therefore, it cannot prevail on its likelihood of Opposition No. 91197328 13 confusion claim. Therefore, we need not address the issue of likelihood of confusion, the second prong of a Section 2(d) claim. Dilution The Trademark Act provides for a cause of action for the dilution of famous marks. Sections 13 and 43(c) of the Trademark Act of 1946, 15 U.S.C. §§ 1063 and 1125(c). The Trademark Act provides as follows: Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury. There is no evidence regarding the fame of opposer’s mark either in or outside of the United States. Moreover, since opposer did not prove that it had priority of use, it could not prove that its mark became famous before the filing date of the application at issue.21 In view of the foregoing, opposer’s dilution claim is dismissed. Fraud Opposer alleged that at the time applicant filed its application, applicant knew about opposer’s prior rights to use the mark AERONAUTICA MILITARE in the United States and, therefore, applicant’s statement in the application that he 21 We acknowledge “the possibility that, in an unusual case, activity outside the United States related to a mark could potentially result in the mark becoming well-known within the United States, even without any form of activity in the United States.” Petróleos Mexicanos v. Intermix SA, 97 USPQ2d at 1406 n.2. That is not the case presented on this record. Opposition No. 91197328 14 was the owner of the mark and that no other entity has the right to use the mark was false, applicant knew that statement was false, and made that statement with the intent to deceive that U.S. Patent and Trademark Office.22 However, because opposer was unable to prove that it had a proprietary interest in the mark AERONAUTICA MILITARE in the United States, it cannot prove that applicant knew about that proprietary interest when applicant filed its application. In view thereof, opposer’s fraud claim is dismissed. No Bona Fide Intent to Use the Mark Trademark Act Section 1(b), 15 U.S.C. § 1051(b), states that “a person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce” may apply for registration of the mark. A determination of whether an applicant has a bona fide intention to use the mark in commerce is an objective determination based on all the circumstances. Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994). Opposer has the burden of demonstrating by a preponderance of the evidence that applicant lacked a bona fide intent to use the mark on the identified goods. The absence of any documentary evidence on the part of an applicant regarding such intent constitutes objective proof that is sufficient to prove that the applicant lacks a bona fide intention to use its mark in commerce, unless other facts are presented which adequately explain or outweigh applicant’s failure to provide such documentary evidence. See Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 22 Notice of Opposition, ¶12. Opposition No. 91197328 15 26 USPQ2d 1503, 1507 (TTAB 1993). See also Honda Motor Co. v. Winkelmann, 90 USPQ2d 1660 (TTAB 2009); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008); and L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008). The only evidence of record pertaining to this claim is applicant’s responses to opposer’s interrogatories and requests for admission. Applicant denies that he does not have a bona fide intent to use the mark in commerce.23 However, there is no objective evidence regarding his intent. The sole evidence is subjective, comprised of applicant’s responses to certain interrogatories which confirm that he does not have objective evidence (i.e., he “has no formal business plan but has entered into a written license with contact in Germany”)24 which, without more, has no effect on what his intentions are in the U.S. market. Applicant identifies himself, again without documentary evidence or testimony, as “an importer distributor of clothing in Greece”25 “with a similar company in Germany.”26 Also, applicant states that he intends to use every standard channel of trade to distribute the clothing (i.e. “department stores, men’s and women’s clothiers and specialty stores, outdoors clothiers, mail order and catalogue retailers, and internet retailers as the channels of trade in the United States.”).27 23 Response to Request for Admission Nos. 1, 2, 6, 8 (TTABVue 16, p. 2, 4 and 5). 24 Response to Interrogatory No. 11 (TTABVue 16, p. 11). 25 Response to Interrogatory Nos. 9 and 10 (TTABVue 16, pp. 10-11). 26 Response to Interrogatory No. 10 (TTABVue 16, pp. 10-11). 27 Response to Interrogatory No. 12 (TTABVue 16, p. 11). Opposition No. 91197328 16 While this case is different from Honda and Boston Red Sox Baseball Club in that there is at least an interrogatory response regarding applicant’s intended channels of trade, he has not offered testimony or any objective evidence to explain his failure to have any documents to support his assertion of an intent to use the mark in commerce. L.C. Licensing Inc. v. Berman, 86 USPQ2d at 1892 (applicant offered no facts to explain or outweigh its failure to have documents supporting its claimed intent to use). In this regard, applicant’s statement that he intends to use all the standard channels of trade is no more sufficient to establish his bona fide intent to use the mark than a statement that he has a bona fide intent to use the mark. Finally, we note that applicant also stated that he “searched the United States Patent and Trademark Office and the internet, via Google, and concluded that the mark is available in the United States.”28 In some cases, a trademark clearance search may be persuasive evidence of a bona fide intent to use. However, based on all the circumstances here, this uncorroborated statement does not establish applicant’s intention to use the AERONAUTICA mark in commerce at the time the application was filed. Cf. Research In Motion Ltd., 92 USPQ2d at 1931 (“If the filing and prosecution of a trademark application constituted a bona fide intent to use a mark, then in effect, lack of a bona fide intent to use would never be a ground for opposition or cancellation, since an inter partes proceeding can only be brought if the defendant has filed an application.”). 28 Response to Interrogatory Nos. 18 and 20 (TTABVue 16, pp. 13 and 14). Opposition No. 91197328 17 In view thereof, based on this record we find that applicant does not have the requisite bona fide intent to use the mark in commerce sufficient to support an application. Decision: The opposition is sustained and registration is refused.