Daniel P. Matthewsv.Black Clouds

Trademark Trial and Appeal Board

Jul 31, 2015

No. 92058978 (T.T.A.B. Jul. 31, 2015)

RK

Mailed: July 31, 2015

Cancellation No. 92058978
Daniel P. Matthews
v.
Black Clouds

Before Seeherman, Ritchie and Masiello,
Administrative Trademark Judges

By the Board:
This proceeding was instituted on April 8, 2014, based on a petition to
cancel Registration No. 42334331 for the mark BLACK CLOUDS in standard
characters. As grounds for the petition, Petitioner asserted priority and
likelihood of confusion based on Petitioner’s common law use of THE BLACK
CLOUDS in connection with “audio and video recordings via hard media,
streaming and download” and “entertainment services in the nature of
musical performances.” Petitioner later filed an amended petition in response

1 Underlying application filed on March 9, 2012, and registered on October 30,
2012, for “audio and video recordings featuring music and artistic performances;
audio recordings featuring music; compact discs featuring music; digital music
downloadable from the internet; downloadable music files; downloadable musical
sound recordings; downloadable music via the Internet and wireless devices; musical
recordings; musical sound recordings; musical video recordings; sound recordings
featuring music; video recordings featuring music” in International Class 9.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
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to a motion to dismiss filed by Respondent. The Board accepted the amended
petition on June 3, 2014, and Respondent answered on July 11, 2014.
This matter now comes up on Petitioner’s motion (filed January 16, 2015)
for summary judgment on his pleaded claim of priority and likelihood of
confusion.2 The motion is fully briefed.
Petitioner’s Motion for Summary Judgment
A motion for summary judgment is a pretrial device intended to save the
time and expense of a full trial when the moving party is able to
demonstrate, prior to trial, that there is no genuine dispute of material fact,
and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P.
56(a); Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Opryland USA Inc. v.
Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir.
1992); and Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4
USPQ2d 1793 (Fed. Cir. 1987). If the moving party is able to meet this initial
burden, the burden shifts to the nonmoving party to demonstrate the
existence of specific genuinely disputed facts that must be resolved at trial.
The nonmoving party may not rest on mere allegations or assertions but
must designate specific portions of the record or produce additional evidence
showing the existence of a genuine dispute of material fact for trial. Should
the nonmoving party fail to raise a genuine dispute of material fact as to an

2 The motion fails to indicate proof of service on Respondent as required by
Trademark Rule 2.119. However, as Respondent confirms that it has received a
service copy of the motion and has opposed the motion on the merits, we have
considered the motion.
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essential element of the moving party’s case, judgment as a matter of law
may be entered in the moving party’s favor.
A factual dispute is genuine if, on the evidence of record, a reasonable fact
finder could resolve the matter in favor of the non-moving party. See Olde
Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544
(Fed. Cir. 1992). The evidence must be viewed in a light most favorable to the
non-moving party, and all reasonable inferences are to be drawn in the non-
movant’s favor. Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, supra. The Board does
not resolve disputes of material fact but rather only ascertains whether
disputes of material fact exist. See Lloyd’s Food Products, 25 USPQ2d at
2029; Olde Tyme Foods, 22 USPQ2d at 1542.
In order for Petitioner to prevail on his motion, he must establish that
there is no genuine dispute that he has standing to maintain the proceeding,
that he has prior proprietary rights in his pleaded mark, and that
contemporaneous use of the parties’ respective marks on their respective
goods and/or services would be likely to cause confusion or mistake or to
deceive consumers. See Hornblower & Weeks, Inc. v. Hornblower & Weeks,
Inc., 60 USPQ2d 1733, 1735 (TTAB 2001).
Standing
Turning first to the question of standing, it is a threshold issue that must
be proven by a plaintiff in every inter partes case so as to prevent litigation
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when there is no real controversy between the parties. See Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA
1982). To establish standing, the plaintiff must demonstrate that it has a
“real interest,” i.e., a direct and personal stake, in the outcome of the
proceeding and a reasonable basis for its belief of damage. Ritchie, 50
USPQ2d at 1025-26.
In his amended petition, Petitioner has alleged prior use of and goodwill
in a mark similar to that of Respondent in connection with related goods and
services and damage resulting from Respondent’s use of its mark. Amended
Petition for Cancellation, 6 TTABVUE ¶¶ 2, 3, 5, 7, 8 and 10. In support
thereof, Petitioner has submitted a declaration attesting to the same and
provided evidence of CD and digital sales of his albums since 2005 and pages
from various third-party web sites offering for sale Petitioner’s albums.
Declaration of Daniel P. Matthews (“Matthews Declaration”) and Exhibits B,
C, F and G, 9 TTABVUE 17-24, 31-185, 194-203. These averments and
supporting evidence are sufficient to demonstrate a reasonable basis for
Petitioner’s belief of damage. See Giersch v. Scripps Networks Inc., 90
USPQ2d 1020, 1022 (TTAB 2009) (finding standing based on common law
use). Further, as Respondent has not otherwise disputed Petitioner’s
standing, we find no genuine dispute of material fact concerning Petitioner’s
standing to bring this cancellation proceeding. See Cunningham v. Laser Golf
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Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).
Priority
Trademark Rule 2.122(b)(2) provides that “[t]he allegation ... in a
registration[] of a date of use is not evidence on behalf of the ... registrant; a
date of use of a mark must be established by competent evidence.” Thus,
notwithstanding Respondent’s first use dates of its mark anywhere (October
5, 2011) and in commerce (November 20, 2011) as set forth in its registration,
Respondent has failed to submit any evidence establishing such first use.
Respondent, therefore, may not rely on such dates to establish its priority.
Nevertheless, Respondent may rely, without further proof, upon the filing
date of its registration’s underlying application as a “constructive use date”
for purposes of priority. See 15 U.S.C. § 1057(c); Zirco Corp. v. American
Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991). As such,
Respondent’s priority date is March 9, 2012, for purposes of this motion.
As for Petitioner, he relies on his rights in THE BLACK CLOUDS mark
accrued at common law. Petitioner has averred in his declaration first use of
the mark in 2005 [Matthews Declaration, ¶¶ 7-8] and the release of three
music albums under the mark THE BLACK CLOUDS in 2005, 2008 and
2012 [¶¶ 8, 9, 12; see also Exh. F and G]. Petitioner has also submitted as
exhibits several sales reports of his music under the mark through a third-
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party distributor. Petitioner’s evidence reflects CD sales since 2005 [Exh. B],
digital CD sales since 2008 [Exh. B], and sales of digital singles from
Petitioner’s albums since 2006 [Exh. C].
Respondent contends in response that any prior use of the mark by
Petitioner was de minimis and therefore insufficient to bestow trademark
rights. Alternatively, Respondent contends that even if Petitioner is able to
establish prior trademark rights, he abandoned such rights between 2009
and 2013. Respondent’s Opposition, 11 TTABVUE 3-4. These contentions are
neither well taken nor supported by the record.
Respondent’s contention of de minimis use is based on Petitioner’s digital
and non-digital CD sales data, which are arguably minimal. However,
Respondent’s position fails to account for the digital sales of songs from
Petitioner’s albums since 2006. See Exh. C. While recognizing the “sheer heft”
of the digital sales data, Respondent discounts such evidence as merely
representing “streamed plays of music” rather than actual sales,
notwithstanding actual sales information shown in the exhibit, such as
amounts payable to Petitioner. Indeed, Respondent fails to explain or
otherwise demonstrate why streamed music does not represent sales of
Petitioner’s music under Petitioner’s mark. Respondent’s suggestion that
such streams and downloads could have all been made by Petitioner is mere
speculation and unsupported by evidence.
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The same can be said concerning Respondent’s assertion of abandonment.
Respondent argues that the digital sales data is insufficient to show use of
the mark, but as discussed above, we find that this is mere argument and
therefore does not raise a genuine dispute. There is nothing in the record to
suggest that Petitioner abandoned his mark between 2009 and 20133, or to
raise a genuine dispute. Thus, we find no genuine dispute that Petitioner has
priority of use over Respondent.
Likelihood of Confusion
We determine the question of likelihood of confusion based on the factors
set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177
USPQ 563, 567 (CCPA 1973). We consider all du Pont factors for which there
is evidence of record but “may focus ... on dispositive factors, such as
similarity of the marks and relatedness of the goods.” Han Beauty, Inc. v.
Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001).
Here, aside from the definite article THE (which has no trademark
significance) in Petitioner’s mark, there is no genuine dispute that the
parties’ marks are identical. See, e.g., In re Thor Tech, Inc., 90 USPQ2d 1634,
1635 (TTAB 2009) (definite article “The” at the beginning of a mark has no
trademark significance). Nor is there a genuine dispute as to the relatedness

3 Indeed, we note significant and consistent digital sales of Petitioner’s songs under
Petitioner’s mark during this time period, see Exh. C, 9 TTABVUE 60-165, as well as
the release of Petitioner’s third album in 2012. See Matthews Declaration, ¶ 12 and
Exh. G.
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of the goods as both parties use their marks in connection with audio
recordings in downloadable and CD form. This is undisputed by Respondent.
There is also no genuine dispute that the parties’ goods travel in the same
trade channels as evidenced by Petitioner’s printouts from third-party retail
music websites offering both parties’ albums. See Exh. D – G. Respondent’s
contention that the differences in musical styles will serve to distinguish the
marks among consumers is unavailing. Respondent’s Opposition, 11
TTABVUE 4. The nature and scope of a party’s goods must be determined on
the basis of the goods recited in the party’s registration. Since there is no
limitation in Respondent’s registration as to the goods’ nature, type, channels
of trade, or class of purchasers, it is presumed that the registration
encompasses all goods of the type described, that they move in all normal
channels of trade for such goods, and that they are available to all classes of
purchasers of such goods. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch
Trading Co., 719 F.3d 1367, 1373, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013).
Finally, we note that the record contains no evidence or arguments
regarding a genuine dispute of material fact as to any other factors bearing
on the issue of likelihood of confusion, as set forth in du Pont. Where priority
and likelihood of confusion are established as to a particular good in a class,
then the petition must be granted as to the entire class. See Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981) (once likely confusion found as to one item, registration
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refused as to entire class); see also The B.V.D. Licensing Corp. v. Rodriguez,
83 USPQ2d 1500, 1507 (TTAB 2007); Baseball America Inc. v. Powerplay
Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004).
We find that Petitioner is entitled, as a matter of law, to a judgment in his
favor as to his claim of priority and likelihood of confusion. Petitioner’s
motion for summary judgment is hereby GRANTED and judgment is
entered against Respondent on the ground of priority and likelihood of
confusion. Registration No. 4233433 will be cancelled in due course.
* * *