de la Cruz Gonzalezv.The Youssef Mehanna and Susana de la Cruz Joint Venture

Trademark Trial and Appeal Board

Apr 22, 2011

No. 92048199 (T.T.A.B. Apr. 22, 2011)

Hearing: Mailed:
December 9, 2010 April 22, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

de la Cruz Gonzalez

v.

The Youssef Mehanna and Susana de la Cruz Joint Venture
_____

Cancellation No. 92048199
_____

Jeffrey M. Furr, Esq. for Juan Antonio de la Cruz Gonzalez

Sherry L. Singer, Esq. for The Youssef Mehanna and Susana de
la Cruz Joint Venture
______

Before Quinn, Zervas and Lykos, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

On September 7, 2004, Registration No. 2881888 (“the
‘888 registration”) for the mark KUZ (in standard character
form) issued on the Principal Register to The Youssef
Mehanna and Susana de la Cruz joint venture (“respondent”)
for “Hair care preparations, namely shampoos, conditioners
and hair dyeing preparations” in International Class 3,
based on an application filed on November 17, 2003. The
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Cancellation No. 92048199
2
‘888 registration claims first use anywhere and first use in
commerce on August 24, 2003. The Office accepted an
affidavit under Section 8 of the Trademark Act on
September 9, 2010.
Juan Antonio de la Cruz Gonzalez (“petitioner”) filed a
petition to cancel the ‘888 registration on September 26,
2007, alleging that he is the owner of a registration for
the mark KUZ in the Dominican Republic; that he “started
sending his products, under the KUZ mark, as a provider to
Susana de La Cruz … for distribution in the United States”;
and that he “ended his commercial relationship with Susana
de La Cruz as she defaulted on payments to Petitioner.”
Complaint ¶ 3. Petitioner pleads likelihood of confusion
under Section 2(d) of the Trademark Act, and alleges various
other claims.1
Petitioner did not specify on what goods he claims
trademark rights. In petitioner’s discovery deposition,
which respondent made of record during its testimony period,
petitioner testified that he is asserting trademark rights

1 In addition to likelihood of confusion, the complaint alleges
misrepresentation of source, deceptiveness and false suggestion
of a connection. Because petitioner has only referred to
misrepresentation of source and false suggestion of a connection
in passing in his brief, we consider these claims to have been
waived by petitioner. Also, petitioner has not discussed his
claim of deceptiveness at all in his brief; we consider the claim
of deceptiveness to also have been waived.
Petitioner discusses fraud in its brief. Because fraud was not
pleaded in the complaint, and fraud was not tried by the consent
of the parties, we do not further consider petitioner’s arguments
regarding fraud. See Fed. R. Civ. P. 15(b)(2).
Cancellation No. 92048199
3
in connection with shampoo, conditioner, finishing gloss and
lotion. JA Disc. dep. at 7. Because respondent did not
object to this testimony and indeed made this testimony of
record during the trial period, and because respondent has
discussed likelihood of confusion in its brief, we find that
the issue of priority based on use of KUZ by petitioner on
shampoo, conditioner, finishing gloss and lotion has been
tried by the implied consent of the parties. See Fed. R.
Civ. P. 15(b)(2). The petition to cancel is deemed amended
accordingly.
Although petitioner pleaded likelihood of confusion,
his real claim is a lack of ownership of the mark; he has
not alleged a priority date or even that he used his mark
prior to the filing date of respondent’s application which
matured into respondent’s registration. Rather, he pleads
that he has sent “his products” to Susana de La Cruz, a
member of respondent joint venture. We find that the
parties have tried the claim of a lack of ownership of the
mark by implied consent and deem the pleadings to have been
amended to assert a lack of ownership of the mark. Id.
Respondent’s counsel agreed in the oral hearing that the
claim of lack of ownership had been tried by the consent of
the parties.
Cancellation No. 92048199
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Respondent answered the petition to cancel by denying
the salient allegations thereof.2
The Record
The record consists of the pleadings; the file of the
involved registration; and the following testimony and
documentary evidence:
Petitioner’s evidence:
• petitioner’s testimony deposition, with exhibits
(hereinafter “JA Trial Dep.”);

• petitioner’s testimony deposition, as a witness
for Adovi Cosmetica Capilar, S.A., manufacturer of
petitioner’s goods, with exhibits (hereinafter
“ACC Trial Dep.”);

• notices of reliance on the discovery depositions
of Susana de la Cruz (hereinafter “SC Disc. Dep.)
and Youssef Mehanna;

• notice of reliance on respondent’s application
which matured into the ‘888 registration;3 and

• notice of reliance on a copy of Dominican
Republic Trademark Registration No. 127035 for the
mark KUZ with a certified translation into
English.

Respondent’s evidence:

• testimony deposition of Susana de la Cruz, with
exhibits (hereinafter “SC Trial Dep.”); and

• respondent’s notice of reliance on a number of
petitioner’s responses to respondent’s first and
second sets of interrogatories; petitioner’s
response to respondent’s requests for admissions;

2 Respondent pleaded an affirmative defense of laches but did not
discuss the defense in its brief. We therefore consider
respondent to have waived its affirmative defense.
3 The file of the ‘888 registration is automatically of record
under Trademark Rule 2.122(b); petitioner did not need to file a
notice of reliance on the underlying application.
Cancellation No. 92048199
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and petitioner’s discovery deposition, with
exhibits (hereinafter “JA Disc. Dep.”).

The proceeding has been fully briefed. An oral argument was
conducted before the Board on December 9, 2010.

Background
1. Petitioner is the owner of a Dominican Republic
registration (Industrial Registry No. 22095, issued December
6, 2001, renewed, and valid from December 15, 2000 to
December 15, 2010)4 for the mark KUZ for “beauty and
cleaning products.” See petitioner’s notice of reliance; JA
Trial Dep. at 5; and petitioner’s response to respondent’s
Interrogatory No. 14.
2. Petitioner is president and a shareholder of Adovi
Cosmetica Capilar, S.A. (“ACC”), a corporation of the
Dominican Republic.5 “He’s in charge” of, and “runs,” ACC.
SD Disc. Dep. at 14; Mehanna at 8. ACC manufactures KUZ
branded hair products. ACC was formed in 2001 from a
predecessor corporation, and has been manufacturing such

4 The trial period closed on January 10, 2010 pursuant to the
parties’ stipulation filed on October 23, 2009, thus we consider
the Dominican registration to be valid.
5 There is a dispute between the parties as to how many shares of
ACC petitioner and Ms. de la Cruz own; petitioner maintains that
he owns 99.6 percent of the shares. Petitioner’s response to
respondent’s Interrogatory No. 3. We need not resolve this
dispute; it is sufficient for our purposes to find that both
petitioner and Ms. de la Cruz owned some shares of stock in Adovi
Cosmetica Capilar, S.A.

Cancellation No. 92048199
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products in the Dominican Republic since its creation. JA
Trial Dep. at 12; JA Disc. Dep. at 53.
3. In 1999, ACC’s predecessor corporation manufactured
and first sold wax and shine drops, both of which are hair
products, in the Dominican Republic under the KUZ mark. JA
Disc Dep. at 15 and 24; and petitioner’s response to
respondent’s Interrogatory No. 5.
4. Petitioner, as the owner of the mark in the
Dominican Republic, has the right to license the mark to
distributors. JA Trial Dep. at 5 - 6.
5. Ms. de la Cruz is petitioner’s sister, Mr.
Mehanna’s wife and a cosmetologist who owned two salons in
New York. SD Trial Dep. at 4 and 7. She is also an ACC
shareholder.
6. Ms. de la Cruz is the owner of Adovi Cosmetica
Capilar International, Inc., a United States company. SD
Disc. Dep. at 6 and 7; Mehanna Dep. at 6. Adovi Cosmetica
Capilar International, Inc., created in 2003, produces
shampoo, conditioners and colors in the United States. SD
Disc. Dep. at 14 and 18; Mehanna Dep. at 6 and 10.
7. ACC sent products to Adovi Cosmetica Capilar
International, Inc. from approximately 2003 to 2005. SD
Disc. Dep. at 18; Mehanna Dep. at 12.
8. Ms. de la Cruz received in the United States three
shipments of KUZ branded goods from ACC. See invoices dated
Cancellation No. 92048199
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July 19, 2003, November 1, 2003 and January 7, 2004, for
67,098, 25,467 and 25,000, respectively, presumably in U.S.
dollars.6 SC Trial Dep. ex. 1. The invoices identify
shampoos, conditioners, masks, hair lotions, hair oils and
drops. ACC manufactured the products that Ms. de la Cruz
received. SC Trial Dep. at 23 and 34.
9. ACC sent KUZ branded goods to “Adovi Cosmetica
Capilar International, Inc. P.R.” in Puerto Rico on June 14,
2003 and again on August 26, 2003. ACC Trial Dep. ex. 1 and
2.7
10. Ms. de la Cruz has not paid for any of the goods
that were sent to her. Ms. de la Cruz maintains that the
goods sent to her as reflected in the July 19, 2003 invoice
were part of a promotion and that she did not need to pay
for them. She testified:
Q. Did you ever not pay Adovi Cosmetic Capilar for
any products, specifically five containers sent to
you in 2003?

A. That is not relevant to the case. That’s
something separate that I’m doing in Santo Domingo
because that was money from my father. Here no

6 Petitioner also introduced invoices for shipments directed to
Ms. de la Cruz, which differed from those introduced by Mr. de la
Cruz. We rely on those invoices submitted by Ms. de la Cruz in
light of her testimony that the invoices she submitted were the
ones that she received from ACC, and because they were
accompanied by bills of lading.
7 Regarding the sales to Puerto Rico, petitioner testified,
“before beginning to commercialize with Susana de la Cruz, I had
sent merchandise to another company”. Because the invoices
identify Ms. de la Cruz’s U.S. company, and petitioner’s
testimony regarding sales to this entity is not clear, these
invoices have limited probative value as reflecting sales to a
third-party.
Cancellation No. 92048199
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one had money. The only one that had money here
was my father.

Q. So is that a yes or a no or refuse to answer?

A. I can’t answer, because he’s not here for
this. He’s here for the brand.

SD Disc. Dep. at 19.
11. ACC created the KUZ labels and placed the KUZ
labels on the hair products brought to the United States.
SC Trial Dep. at 35; ACC Trial Dep. at 21.
12. As reflected in an invoice dated June 20, 2003,
prior to any shipments to Ms. de la Cruz, ACC shipped
shampoo, restructuring creams, revitalizing mixes, repair
drops, conditioners and various hair lotions to an unrelated
third party, “Sr. Jose, Alex y Victor,” in Astoria, New
York.8 ACC Trial Dep. ex. 4 (an invoice). “This was the
first invoice sent to the United States.” ACC Trial Dep. at
12.
13. In 2006, after the ‘888 registration issued, ACC
sent a shipment of KUZ branded beauty products to Kuz Hair
Products, Inc. in Puerto Rico, valued at around $95,000.
U.S. Customs and Border Protection detained the shipment
pursuant to Section 24 of the Trademark Act, 15 U.S.C.
§ 1124, citing the ‘888 registration. ACC Trial Dep. ex. 8.
Petitioner has not shipped products to the United States

8 Ms. De la Cruz testified that she instructed Adovi Cosmetica
Capilar to send that merchandise to the adressees and that “Alex”
paid her.
Cancellation No. 92048199
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since then due to the seizure of his goods. ACC Trial Dep.
at 27.
14. Petitioner at no point transferred any ownership
rights of the trademark. JA Trial Dep. at 6 – 7.
15. The label depicted in respondent’s specimen of use
is an ACC label from the Dominican Republic. ACC Trial Dep.
at 22.
16. No distribution or licensing agreement exists
between petitioner and Ms. de la Cruz or between ACC and Ms.
de la Cruz.
Standing
Petitioner is the owner of the KUZ mark in the
Dominican Republic. His licensee, ACC, manufactures shampoo
and conditioners (which are listed in respondent’s
identification of goods) for sale under the KUZ mark and ACC
has sent KUZ branded goods to Ms. de la Cruz, which Ms. de
la Cruz used and sold to others in the United States.
Further, ACC sent shampoos and other KUZ branded goods to
Kuz Hair Products, Inc. in Puerto Rico, which the U.S.
Customs and Border Protection confiscated, citing
respondent’s registration. This is sufficient to
demonstrate that petitioner has a real interest in this
proceeding and, therefore, has standing. Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); and
Cancellation No. 92048199
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Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982).
Lack of Ownership
The Board stated in Lutz Superdyne, Inc. v. Arthur
Brown & Bro., Inc., 221 USPQ 354, 362 (TTAB 1984):
[I]t has been held that the question of ownership of a
mark as between the manufacture[r] of the product to
which the mark is applied and the exclusive distributor
of the product is a matter of agreement between them,
and that in the absence of an agreement, there is a
legal presumption that the manufacturer is the owner of
the mark. See: Far-Best Corporation v. Die Casting
“1D” Corporation, 165 USPQ 277 (TTAB 1970), and
Audioson Vertreibs-GmbH v. Kirksaeter Audiosonics,
Inc., 196 USPQ 453 (TTAB 1977).

Ms. de la Cruz stated that there was never a contract,
written or oral, between her and her brother. SD Disc. Dep.
at 20. We therefore consider whether petitioner and Ms. de
la Cruz had a manufacturer/distributor relationship, at
least beginning in 2003 and extending until they terminated
their relationship,9 and whether the legal presumption noted
in Lutz Superdyne applies to the parties. In this regard,
we consider respondent joint venture and Ms. de la Cruz to
be one and the same.

9 Ms. de la Cruz testified that beginning in 1999, she brought to
the United States in her luggage certain items bearing the KUZ
mark which she acquired in the Dominican Republic. She testified
that these items were brought here “for me and to sell them at
the salon.” SD Trial Dep. at 34. There is no testimony as to
what the relationship between petitioner and his sister was prior
to 2003. Because of the small quantities of products she likely
placed in her in her luggage, at least in comparison to the
amount of products ACC sent to Ms. de la Cruz, we find that prior
to 2003, Ms. de la Cruz was a reseller of ACC goods, but that
Cancellation No. 92048199
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First, we find that even though petitioner licensed the
mark to ACC and ACC actually manufactured the goods,
petitioner qualifies as a “manufacturer” under the
presumption. The parties agreed during oral argument that
under the law of the Dominican Republic, an owner of a
trademark must be an individual. Thus, the designation of
an individual and not ACC itself as the owner of the mark
was necessary. Also, ACC is at least partially owned by
petitioner, and petitioner is the president and “runs” ACC,
has licensed his mark to ACC, and controls the nature and
the quality of the goods on which the KUZ mark is applied.
Next, we find that Ms. de la Cruz was a distributor of
products manufactured by ACC. She testified that she
received KUZ branded goods reflected in invoices and the
record includes invoices dated July 19, 2003 (showing a
value of 73,098.80), November 1, 2003 (showing a value of
67,098) and July 1, 2004 (showing a value of 25,467.80),
each listing her name and containing a New York delivery
address.10 Additionally, two other invoices in the record
dated June 14, 2003 (showing a value of $7,074.00) and
August 26, 2003 (showing a value of $29,692.56) reflect
shipments by ACC on invoices containing the KUZ mark to
“Adovi Cosmetica Capilar International, Inc. P.R.” in Puerto

relationship changed when ACC set large shipments of KUZ branded
goods to Ms. de la Cruz.
Cancellation No. 92048199
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Rico. (As noted earlier in this decision, Ms. de la Cruz
indicated that she is the owner of Adovi Cosmetica Capilar
International, Inc., formed in 2003.) Also, Ms. de la Cruz
testified that she arranged for the sale of products to a
third party, her friends “Sr. Jose, Alex Y Victor” in
Astoria, New York and that they paid her for the products.
(“I told Adovi Cosmetica Capilar to send that merchandise to
Alex, and Alex who paid, he paid me.” SD Trial Dep. at 22 –
23); and JA Trial Dep. ex. 3 (June 10, 2003 invoice to “Sr.
Jose, Alex Y Victor.”) Further, petitioner testified that
his sister was a distributor for Adovi, JA Trial Dep. at 6;
see also JA Trial Dep. at 14 (Q. “… your sister had
basically distributing rights for Adovi Cosmetica?” A.
“Yes, she was commercializing it.”).11
We therefore find on this record that as of 2003, when
ACC shipped products into the United States, the
relationship between petitioner and Ms. de la Cruz was, in
addition to brother and sister, manufacturer (in light of
petitioner’s ownership of the mark in the Dominican Republic
and control of and position with ACC) and distributor. And,
because there is no agreement between petitioner and
respondent or Ms. de la Cruz that defines their relationship

10 The currency is not stated; presumably the currency is U.S.
dollars.
11 We do not find Ms. de la Cruz’s and Mr. Mehanna’s self-serving
and conclusory testimony that respondent is the owner of the mark
dispositive of this issue.
Cancellation No. 92048199
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and ownership of the KUZ mark in the United States, in view
of the manufacturer/distributor relationship between
petitioner and his sister, we apply the legal presumption
regarding ownership noted in Lutz Superdyne and presume that
petitioner is the owner of the mark.
This presumption may be rebutted. In such
circumstances, courts look to various factors when
determining which party has the superior right of ownership
including:
1. which party invented or created the mark;

2. which party first affixed the mark to the
goods;

3. which party's name appeared on packaging and
promotional materials in conjunction with the
mark;

4. which party exercised control over the nature
and quality of the goods on which the mark
appeared;

5. to which party did customers look as standing
behind the goods (e.g., which party received
complaints for defects and made appropriate
replacement or refund); and,

6. which party paid for advertising and promotion
of the trademark product.

2 McCarthy On Trademarks and Unfair Competition §16:48 (4th
ed. 2006). We therefore consider whether the record
establishes a superior right by respondent and/or Ms. de la
Cruz to the mark.
1. Under the first factor, petitioner’s testimony as
to who created the mark differs from Ms. de la Cruz’s
Cancellation No. 92048199
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testimony on the same point. Petitioner testified that he
created the mark, JA Trial Dep. at 6, and Ms. de la Cruz
testified that “KUZ is a mark, a brand that exist[s] already
but it was found through the internet by the family, my
father, my brother.” SD Trial Dep. at 5. Ms. de la Cruz
has not stated that she created the mark, and she
acknowledges that her brother was involved in the creation
of the mark. This factor hence is neutral, or slightly
favors petitioner.
2. With respect to the second factor, we find that
petitioner, as the licensor of the KUZ mark to ACC and as
the individual who “runs” ACC, placed the mark on the
products that respondent acquired from ACC. See, e.g.,
JA Trial Dep. at 22. Accordingly, the second factor weighs
in favor of petitioner.
3. The third factor (which party's name appears on
packaging and promotional materials) weighs in petitioner’s
favor. Of course, the KUZ branded products shipped from ACC
contain ACC’s labels and ACC’s name. Even the label forming
respondent’s specimen of use submitted with its original
application is ACC’s label.12 JA Trial Dep. at 22.
4. The fourth factor (i.e., which party exercised
control over the nature and quality of the product) weighs

12 And, of course, when respondent began manufacturing products in
the United States, respondent used its own labels.

Cancellation No. 92048199
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in favor of petitioner because respondent purchased ACC’s
products until respondent began manufacturing its products
in the United States. In fact, Ms. de la Cruz testified
that she sometimes commented to her brother on how the goods
functioned, “and they [petitioner and/or ACC] would change …
the way the product worked.” SD Trial Dep. at 12.
5. Neither party introduced any testimony regarding
the party to whom customers look to as standing behind the
products. We consider the fifth factor to be neutral
because of a lack of evidence.
6. The sixth factor (which party paid for advertising
and promotion of the trademark products) is neutral; there
is no testimony or evidence in the record regarding
advertising or promotion of KUZ branded products.
Accordingly, of the six “McCarthy factors,” three
factors favor petitioner, one is neutral or slightly favors
petitioner and the remaining two factors are neutral. None
of the “McCarthy factors” points towards respondent as the
owner of the KUZ mark, while two of the four factors on
petitioner's side strongly favor petitioner as the owner of
such mark. We conclude, therefore, that it is petitioner
who, at all relevant times, was and is the true owner of the
KUZ mark. Respondent's involved registration was and is
void ab initio.
Cancellation No. 92048199
16
In view of our finding that petitioner is the owner of
the mark, we need not reach petitioner's priority and
likelihood of confusion claims. However, if we were to
consider such claims, we would award priority to petitioner
because petitioner has established ownership and use of the
mark at least as early as June 20, 2003, when ACC invoiced
“Sr. Jose, Alex Y Victor” in New York, and respondent has
not established a priority date earlier than the filing date
of its application through the evidence it introduced at
trial.
DECISION: The petition to cancel Registration
No. 2525957 is granted on the ground of lack of ownership.
The registration will be cancelled in due course.