District Enterprises, Inc.v.Independence Towing & Recovery, Inc.

Trademark Trial and Appeal Board

Oct 23, 2015

No. 92055302 (T.T.A.B. Oct. 23, 2015)

This Opinion is not a
Precedent of the TTAB
Mailed: October 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

District Enterprises, Inc.
v.
Independence Towing & Recovery, Inc.
_____
Cancellation No. 92055302
_____
Szymon M. Gurda of Cherskov Flaynik & Gurda, LLC for District Enterprises, Inc.

Kenneth J. Vanko and Eric J. Ryan of Clingen Callow & McLean, LLC for
Independence Towing & Recovery, Inc.
_____

Before Masiello, Goodman, and Heasley, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:

District Enterprises, Inc. (“Petitioner”) has filed a petition to cancel Registration
No. 3840150 for the service mark shown below (the “Registration”),1 owned by
Independence Towing & Recovery, Inc. (“Respondent”).

1 Issued on the Principal Register on August 31, 2010, based on an application filed August
19, 2009 under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), with a claim of first use
and first use in commerce as of March 10, 2008.
Cancellation No. 92055302
2

The mark is registered for “Vehicle towing,” in International Class 39.
As grounds for cancellation, Petitioner alleged priority of use and likelihood of
confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d); fraud upon
the USPTO in obtaining the Registration; and misrepresentation by Respondent as
to the source of its services, under Trademark Act Section 14(3), 15 U.S.C. §
1064(3).2 In its reply brief, Petitioner affirmatively stated that it has waived its
claim of misrepresentation of source.3
Respondent’s answer4 to the petition for cancellation establishes some relevant
background facts. Petitioner was a family-operated company, ¶¶ 1, 6, a subsidiary
of which performs towing services. ¶ 5. The company employed two sons of the
family, Dan Radwanski and Dennis Radwanski, as drivers and managers of several
other employees. ¶¶2, 19. On February 17, 2008, Sherry Radwanski, Dennis and
Dan’s mother, terminated Dennis’s employment. ¶ 6. Dennis and Dan thereafter
established a competing business, ¶ 2, incorporating Respondent within two weeks
of their departure from the family company, ¶ 7, and apparently began use of the
registered mark in March 2008. ¶ 8. Respondent’s facilities are within 13 miles of
those of Petitioner, and the two parties compete for both towing and repair

2 The cover sheet of the petition for cancellation also refers to “False suggestion of a
connection” under Trademark Act Section 2(a), 15 U.S.C. 1052(a), as a ground for
cancellation, and the petition itself makes passing reference to “false suggestion of a
connection” without adequately stating such a claim. In an order of June 29, 2012, the
Board advised that it would treat such references as part of Petitioner’s claim of
misrepresentation of source. 8 TTABVUE 4.
3 Reply brief at 4, 39 TTABVUE 6.
4 5 TTABVUE.
Cancellation No. 92055302
3

customers. ¶ 10. Respondent has denied other salient allegations of the petition for
cancellation. The case is fully briefed.
I. The record.
The record includes the pleadings5 and, by operation of Trademark Rule 2.122,
37 C.F.R. § 2.122, the registration history of Respondent’s Registration. In addition,
Petitioner has made of record the following testimony:
- Testimony deposition of Sherry Radwanski, Petitioner’s president, with
exhibits (19 TTABVUE 4-50).

- Testimony deposition of Richard Rubin, Petitioner’s employee, with exhibits
(19 TTABVUE 51-126).

- Testimony deposition of Robert Zolner, Petitioner’s employee (19 TTABVUE
127-154).

- Rebuttal testimony deposition of Richard Rubin, Petitioner’s employee, with
exhibits (20 TTABVUE).

Respondent has made of record the following testimony:

- Testimony deposition of Daniel Radwanski, Respondent’s co-owner (18
TTABVUE 4-56).

- Testimony deposition of Dennis Radwanski, Respondent’s co-owner, with
exhibits (18 TTABVUE 57-131).

We will cite the three Radwanski depositions as “Sherry,” “Daniel,” and “Dennis,”
respectively. We cite the other depositions as “Rubin Testimony,” “Zolner,” and
“Rubin Rebuttal.”

5 Note, however, that the evidence to Petitioner’s petition for cancellation (photographs and
a sworn statement of Robert Zolner), do not automatically constitute part of the record. See
37 C.F.R. § 2.122(c) (“…an exhibit attached to a pleading is not evidence on behalf of the
party to whose pleading the exhibit is attached unless identified and introduced in evidence
as an exhibit during the period for the taking of testimony.”) See also TBMP § 704.05(a).
Cancellation No. 92055302
4

II. Evidence matters: Respondent’s motion to strike.
We address first Respondent’s motion to strike filed August 7, 2014 (21
TTABVUE).6 Respondent moves to strike the entire deposition of Sherry Radwanski
and portions of the testimony and exhibits in the depositions of Zolner and Rubin.
Petitioner argues that the motion is untimely, but we disagree. The motion relates
not to technicalities that might have been cured if raised prior to or shortly after the
depositions were taken. Rather, it relates to the content of the depositions. Such
substantive matters are best determined at final hearing and may be raised even as
late as the objecting party’s brief on the case. See, e.g., Carl Karcher Enterprises Inc.
v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1373, fn.4 (TTAB 2011); TBMP
§ 527.01(e) (2015).7
A. Testimony deposition of Sherry Radwanski.
The deposition of Sherry Radwanski terminated abruptly during direct
examination. When Respondent’s counsel objected to discussion of records that had
not been disclosed during discovery,8 a discussion off the record ensued. Upon
resumption, Petitioner’s counsel stated that Petitioner had, the previous day,
received “pertinent” information and that “in order to introduce this into evidence,

6 Petitioner’s brief in response to the motion is at 26 TTABVUE. Respondent’s reply brief is
at 27 TTABVUE.
7 Indeed, the Board has already ruled that it would defer consideration of this motion until
final hearing. See Board order of January 5, 2015, 28 TTABVUE.
8 Sherry 32:6-9, 19 TTABVUE 36.
Cancellation No. 92055302
5

we may need to reopen discovery and petitioner will request same from the
[Board].”9 Respondent’s counsel made the following statement:
If I could add, respondent acknowledges that they believe
they have pertinent information. It’s not agreeing or
waiving any argument that the information may not be
relevant and has stated that – has objected to going
forward with any further depositions until we’ve dealt
with the discovery issue and petitioners and respondent
have agreed that that would be proper.10
Respondent argues that the termination of Ms. Radwanski’s deposition left
Respondent “without any opportunity to cross-examine Sherry Radwanski”; that
Respondent was surprised to see that Petitioner filed the deposition transcript with
the Board, in part because Petitioner had never served the transcript on
Respondent in accordance with 37 C.F.R. § 2.123, and because the parties had
discussed resuming Ms. Radwanski’s deposition at a later date.11
The Trademark Rules require that “Every adverse party shall have full
opportunity to cross-examine each witness.” 37 C.F.R. § 2.123(e)(3). However, we do
not agree that Respondent was deprived of its opportunity to cross-examine Ms.
Radwanski. The transcript shows that Respondent agreed to the termination of the
deposition: Respondent actually “objected to going forward” with the deposition and
had “agreed” with Petitioner that this approach was “proper.” In any event,
Respondent could have insisted that it be allowed to cross-examine the witness

9 Id., 32:14-33:1, 19 TTABVUE 36-37. Petitioner did indeed file a consent motion to reopen
the discovery period and reset the remaining trial dates (16 TTABVUE), which the Board
granted (17 TTABVUE).
10 Id., 33:2-9, 19 TTABVUE 37 (emphasis added).
11 Respondent’s motion brief at 5-6, 21 TTABVUE 6-7.
Cancellation No. 92055302
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prior to the termination. Respondent should not have been surprised to see the
transcript filed with the Board, as the Trademark Rules require that all testimony
depositions be filed. 37 C.F.R. § 2.123(h). Respondent’s remedy for Petitioner’ failure
to serve the deposition transcript on Respondent was to move the Board to order
such service. Failing all else, Respondent could have taken Ms. Radwanski’s
testimony during Respondent’s testimony period. The motion to strike Ms.
Radwanski’s testimony is denied.
B. The Rubin testimony and exhibits.
Respondent moves that we exclude Rubin Testimony Exhibits 1 and 9 and Rubin
Rebuttal Exhibits 1 through 4, as well as the portions of the Rubin testimony
relating to such exhibits, for two reasons. First, Respondent argues that the exhibits
consist of documents that had been requested in discovery but were not timely
produced. Second, Respondent argues that Petitioner’s pretrial disclosures were
inadequate, inasmuch as Mr. Rubin’s status as an employee of Petitioner was not
disclosed prior to his first testimony deposition, and the nature of the documentary
evidence that he would seek to introduce (invoices) was not disclosed. Mr. Rubin’s
status as an employee is important, according to Respondent, because Petitioner
sought to use Mr. Rubin’s testimony to introduce the exhibits at issue under the
business records exception to the hearsay rule, Fed. R. Evid. 803(6).
Rubin Testimony Exhibit 1 is a Form W-2 indicating that Mr. Rubin was an
employee of Petitioner. Respondent does not point to any discovery request to which
Cancellation No. 92055302
7

the Form W-2 would have been responsive. Moreover, we deem its admission
harmless to Respondent.
Rubin Testimony Exhibit 9 and Rubin Rebuttal Exhibits 1-4 are five invoices of
Digistitch Embroidery & Design, Inc. These exhibits would have been responsive to
Requests Nos. 2 and 4 of Respondent’s first set of document requests,12 to which
Petitioner responded that it would produce all non-privileged documents, to the
extent they exist.13 But Petitioner did not produce these documents during the
discovery period. Respondent contends, and Petitioner does not deny, that Rubin
Testimony Exhibit 9 was first disclosed to Respondent at Mr. Rubin’s first,
testimonial deposition; and that Rubin Rebuttal Exhibits 1-4 were first shown to
Respondent on June 4, 2014,14 two days before Mr. Rubin’s rebuttal deposition and
almost two months after the April 11, 2014 close of Respondent’s testimony period.
Petitioner’s disclosure of Rubin Testimony Exhibit 9 and Rubin Rebuttal Exhibits
1-4 was manifestly untimely. In addition, the pretrial disclosures were clearly
inadequate. An appropriate pretrial disclosure should set forth:
general identifying information about the witness, such as
relationship to any party, including job title if employed

12 Respondent’s motion to strike, Exhibit 2, 21 TTABVUE 32. The requests were as follows:
2. Invoices, receipts, purchase orders, or similar documentation that
demonstrates money spent by the Petitioner before February 2008 concerning
the mark “DR.”
…
4. Invoices, receipts, purchase orders, or similar documentation that
demonstrates money spent by the Petitioner before February 2008 concerning
the registered mark (i.e., “DR” with the birth and death years listed below).

13 Id., Exhibit 3, 21 TTABVUE 36-37.
14 Motion to strike at 5 and Ex. 19, 21 TTABVUE 6, 259-263.
Cancellation No. 92055302
8

by a party, … a general summary or list of subjects on
which the witness is expected to testify, and a general
summary or list of the types of documents and things
which may be introduced as exhibits during the testimony
of the witness.
37 C.F.R. § 2.121(e) (emphasis added). As of February 1, 2013, Petitioner had
assured Respondent that Mr. Rubin was not an employee of Petitioner,15 a
statement that was apparently false at the time.16 Petitioner’s pretrial disclosures
of August 16, 201317 and December 27, 201318 said no more than that Mr. Rubin
had taken certain photographs, could testify as to their dates, and had first-person
knowledge of the use of the trademark at issue since at least 2006. The April 25,
2014 pretrial disclosure,19 relating to the Rubin rebuttal deposition, made no
reference to any invoices or other documents similar to them.
“[A] party that fails to provide information via disclosure or appropriate response
to a discovery request may, upon motion or objection by its adversary, be precluded
from using that information or witness at trial, ‘unless the failure was substantially
justified or is harmless.’” Spier Wines (PTY) Ltd. V. Shepher, 105 USPQ2d 1239,
1242 (TTAB 2012), citing Fed. R. Civ. P. 37(c)(1); Trademark Rule 2.116(a). To
determine whether Petitioner’s failure is substantially justified or harmless, we
consider the five factors set forth in Great Seats Inc. v. Great Seats Ltd., 100
USPQ2d 1323, 1327 (TTAB 2011):

15 Id., Exhibit 6, 12 TTABVUE 61.
16 See Rubin Testimony 4:18.
17 Motion to strike, Exhibit 10, 21 TTABVUE 75.
18 Id. Exhibit 11, 21 TTABVUE 81.
19 Id. Unnumbered Exhibit 16, 21 TTABVUE 251.
Cancellation No. 92055302
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1) the surprise to the party against whom the evidence
would be offered; 2) the ability of that party to cure the
surprise; 3) the extent to which allowing the testimony
would disrupt the trial; 4) importance of the evidence; and
5) the non-disclosing party's explanation for its failure to
disclose the evidence.
100 USPQ2d at 1327 (internal quotations omitted). See also TBMP § 533.02(b) n.9
and cases cited therein.
We find that the surprise to Respondent occasioned by late disclosure of the
invoices was substantial. Respondent had had no opportunity to pursue discovery
with respect to the newly disclosed evidence, no time to confer with counsel prior to
confronting the evidence and testimony in the Rubin Testimony deposition, and
only days in which to do so prior to the Rubin Rebuttal deposition. The lack of
disclosure as to Mr. Rubin’s status as an employee exacerbated the surprise: Prior
to the Rubin Testimony deposition (at which Respondent first learned that Mr.
Rubin was an employee of Petitioner), Respondent had no reason to believe that Mr.
Rubin might testify as to the Petitioner’s record-keeping, nor any reason to believe
that he was the “custodian” of such records.
Respondent could, perhaps, have cured the surprise encountered in the Rubin
Testimony deposition, as Respondent’s testimony period was yet to come. However,
Respondent had no practical cure for the surprise encountered in the Rubin
Rebuttal deposition, short of seeking to reopen the discovery period and its own
testimony period. The testimony phase of the proceeding had already been
interrupted once for the purpose of reopening the discovery period. Any further
reopening of discovery after the Rubin Testimony deposition, or of discovery and
Cancellation No. 92055302
10

Respondent’s testimony period after the Rubin Rebuttal deposition, would be a
great disruption to the orderly progress of the trial.
The evidence as to which disclosure was inadequate was of high importance. The
invoices go to the issue of Petitioner’s alleged priority of use.
Finally, Petitioner’s brief on the motion fails to set forth any explanation for its
failure, but merely argues that the disclosures made were adequate.
Our analysis indicates that the exclusion of Rubin Testimony Exhibit 9 and Rubin
Rebuttal Exhibits 1 through 4 is warranted. As for the testimony of Mr. Rubin
relating to the excluded exhibits, we see no need to strike it. The Board is able to
weigh the evidence and testimony appropriately and to avoid consideration of
excluded evidence and inappropriate testimony.
C. The Zolner testimony and exhibits.
The testimony deposition of Robert Zolner includes discussion of the excluded
Rubin exhibits. Respondent moves the Board to exclude such testimony. For the
reasons discussed above, we decline to strike any portion of the Zolner testimony,
while bearing in mind that the excluded Rubin exhibits are not of record.
Respondent’s motion to strike is DENIED in part and GRANTED in part. We
strike Rubin Testimony Exhibit 9 and Rubin Rebuttal Exhibits 1 through 4. We
turn now to the merits of Petitioner’s claims.
III. Standing.
Petitioner has alleged, and Respondent has admitted, that the parties are
competitors and that Respondent has sent a cease-and-desist letter to Petitioner.
Cancellation No. 92055302
11

Answer ¶¶ 10, 12.20 This demonstrates that Petitioner has a real interest in the
outcome of this proceeding. Alcatraz Media Inc. v. Chesapeake Marine Tours Inc.,
107 USPQ2d 1750, 1760-61 (TTAB 2013); Ipco Corp. v. Blessings Corp., 5 USPQ2d
1974, 1976-77 (TTAB 1988). Petitioner has therefore established its standing to
seek cancellation of Respondent’s registration. See Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Having proved its standing to
assert its claim under Section 2(d), Petitioner is entitled as well to assert its claim
of fraud. See Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1877 (TTAB
2011).
IV. Petitioner's claim under Section 2(d).
We first address Petitioner’s claim on the ground of likelihood of confusion. Under
Section 2(d), the United States Patent and Trademark Office may refuse
registration of a mark that “so resembles … a mark or trade name previously used
in the United States by another and not abandoned, as to be likely, when used on or
in connection with the goods [or services] of the applicant, to cause confusion, or to
cause mistake, or to deceive.” 15 U.S.C. § 1052(d). We address first the issue of
Petitioner’s alleged priority.
For purposes of establishing a date of first use of Respondent’s registered mark,
Respondent is entitled, under Section 7 of the Trademark Act, to rely upon the filing
date of the application underlying its Registration. 15 U.S.C. § 1057(c); Cent.

20 5 TTABVUE 3-4.
Cancellation No. 92055302
12

Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1140 (TTAB 2013);
Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840 (TTAB 1995). That
date is August 19, 2009. Accordingly, it is Petitioner’s burden to demonstrate by a
preponderance of the evidence a proprietary interest in its asserted mark prior to
that date or any earlier date of first use proven by Respondent.
A. Petitioner’s testimony and evidence.
Petitioner, which commenced business in approximately 1971, provides roadside
assistance and towing of vehicles.21 Petitioner contends that it made use of the
marks DR and DR accompanied by the dates “1942-99” or “1942-1999” at relevant
times. Petitioner’s president, Sherry Radwanski, who joined the company as an
employee in the mid-1990s, testified as follows in 2013:
Q. … How long did you use the mark “DR” with the vehicles and the
uniforms?
A. For a number of years.
Q. Can you provide an estimate? Was it greater than five?
A. I’d say at least ten years.
…
Q. Did you ever modify the mark “DR”?
A. At a later date, yes, it was modified.
Q. Do you remember when that date would have been?
A. I mean, a few years after my husband’s death.
Q. When did your husband die?
A. He died in January of ’99.
Q. So sometime thereafter. Would you say greater than one year after
his death when you modified the mark “DR”?
A. To the best of my knowledge, it might have been a year or two years
afterwards.
Q. So, from your statement, it would be somewhere between 2001 and
2002; is that a fair statement?
A. That would probably be a good speculation
Q. All right. How did you modify the mark?

21 Sherry 7:6-8, 19 TTABVUE 11.
Cancellation No. 92055302
13

A. We modified the mark by adding 19 - - the 1942 to ’99 on it.
Q. And, in fact, the reading was “DR 1942-99”?
A. To the best of my knowledge, yes.
…
A. It was on the trucks and jackets, and something on the billboards at
the shop.
…
Q. … how many trucks would have displayed the mark “DR” before the
modification?
A. I couldn’t recall.
Q. Greater than two, less than ten?
A. I would say maybe two, to the best of my recall.22

Ms. Radwanski identified photographs of a white shirt with an arm patch reading
DR 1942-99,23 but said nothing about when the shirt came into existence. She
identified a photograph of a dark jacket with DR on the right sleeve as “one of the
jackets my son, Danny, wore.”24 She also identified a substantially different jacket
with a reflective stripe, bearing DR 1942-99 patches, which was designed to comply
with “DOT regulations” that took effect “someplace between ’05 and ’06.”25 However,
there is no clear testimony as to when such a jacket may have been made:
Q. … the uniform, or whatever clothing this is, depicted in this photo,
do you recall when that or a uniform substantially similar to it would
have been purchased? Would it have been sometime after 2002?
A. It would have to be.
Q. Okay. And then would it be sometime after 2005?
A. Could be, yes.26

22 Id. 9:5-11:10, 19 TTABVUE 13-15.
23 Sherry Exhibits 1A and 1B, 19 TTABVUE 45-46.
24 Sherry 23:15-16 and Exhibit 2, 19 TTABVUE 27, 49.
25 Id. 26:22 and Exhibit 3, 19 TTABVUE 30, 50.
26 Id. 29:21-30:5, 19 TTABVUE 33-34.
Cancellation No. 92055302
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Ms. Radwanski identified photographs of two trucks, each of which shows, on its
rear end, two iterations of the designation DR 1942-99.27 However, there is no clear
testimony that these trucks, or other trucks, were so marked at any relevant time.28
Robert Zolner, an employee of Petitioner since 1998, testified that Dennis and Dan
Radwanski wore shirts bearing DR on the right shoulder. “Well they had different
shirts than I did naturally, and they had that markings on them.”29 He stated that
DR first appeared on uniforms “Probably around ’07, ’06 maybe …”30 He testified
that when he was hired, the company had 10 or 12 trucks, and that some of them
were marked with DR on the back end.31 “The markings were put on after his dad
passed away. It wasn’t put on in ’98, but it was, you know --.”32 He confirmed that
when Dan and Dennis were with the company, he saw them wearing DR on their
sleeves, and when asked whether Dan and Dennis drove trucks that had DR
markings on them, he responded, “Danny’s has it and 716 has it, yes,” explaining
that “716” was “a medium duty, a heavy truck.”33
Richard Rubin was a social contact of Petitioner’s president, having met her in
January 2006, and became an employee of Petitioner in January 2013.34 He stated
that in 2006, Dan wore DR on his shirt sleeve; and that “Dennis used to wear his

27 Sherry Exhibits 1C and 1D, 19 TTABVUE 47-48.
28 See Sherry 19:20-22:24, 19 TTABVUE 24-26.
29 Zolner 12:13-19, 19 TTABVUE 139.
30 Id. 10:11, 19 TTABVUE 137.
31 Id. 13:24-14:7, 19 TTABVUE 140-141.
32 Id. 14:18-20, 19 TTABVUE 141.
33 Id. 18:6-18, 19 TTABVUE 145.
34 Rubin Testimony 13:4, 5:3, 19 TTABVUE 64, 56.
Cancellation No. 92055302
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beige shirt with the DR logo on the right sleeve” and a black jacket with DR on the
sleeve.35 In rebuttal testimony, he stated that he had seen Sherry wearing DR on
the sleeve of a jacket when he met her in 2006; and that he did not remember seeing
anyone other than she, Dan, and Dennis wearing the DR designation prior to
2008,36 when Dan and Dennis left the company. He introduced a photograph,37
found in the records of Petitioner, of Dan Radwanski wearing a black garment with
a marking on the sleeve that the witness characterizes as DR.38 (The image in the
record is blurry.) He indicated that the photograph appeared to have been taken
before the late 2006 installation of security cameras on the building shown in the
photograph.39 (Mr. Zolner, however, testified rather uncertainly that the security
cameras were probably installed prior to 2008; but also that they were installed
after Dan and Dennis left the business, which was in February, 2008.)40 He testified
that the company had two tow trucks that bore the DR designation. But when asked
“how long the letters D and R appeared on the equipment,” he responded, “I would
have no knowledge on that whatsoever other than I did see it on the trucks.”41 He

35 Id. 32:9-20, 35:7-23, 19 TTABVUE 83, 86.
36 Rubin Rebuttal 8:15-9:7, 20 TTABVUE 9-10.
37 Rubin Testimony Exhibit 7, 19 TTABVUE 124.
38 Rubin Testimony 32:9-20, 19 TTABVUE 83.
39 Id. 21:22-22:4, 19 TTABVUE 72-73.
40 Zolner 8:16 (“With certainty it probably was before 2008, yeah.”); 9:16-17 (“No, I think it
was after [Dan and Dennis left]. Well no, it could have been. I’m not certain. Let’s put it
that way.”) 19 TTABVUE 135-136. See also Answer ¶ 6 (admitting that “On February 17,
2008 Sherry gave termination letters to Dennis.”) 5 TTABVUE.
41 Rubin Testimony 33:14-23, 19 TTABVUE 84.
Cancellation No. 92055302
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testified that he had seen truck No. 716 with the DR marking shortly after he
started dating Sherry in 2006.42
B. Respondent’s testimony and evidence.
Respondent took the testimony depositions of its two co-owners, Dan and Dennis
Radwanski. Dan testified that he and Dennis worked in Petitioner’s shop since they
were children, but were not issued paychecks until after their father passed away in
1999.43 Thereafter, they undertook operational responsibilities for the business,44
including the purchase of uniforms, which consisted of “Black Dickies pants and
Dickies shirts.”45 The brothers also undertook to have the uniforms embroidered
with “the company name on one side of the chest and then the drivers’ or body
men’s name on the other side.”46 For themselves, the brothers had uniforms marked
with the initials DR.47 According to Dan, he and his brother alone made the decision
to do this. “[W]e wanted to do something to, you know, remember my father for
what he taught us and everything like that, so we wanted to make something
simple just to put on our shoulders to remember him.”48 He testified:
Q. Did the company pay to apply that DR to your uniform?
A. I paid for it.
…

42 Rubin Rebuttal 9:14-10:6, 20 TTABVUE 10-11.
43 Daniel 6:1-10, 18 TTABVUE 9.
44 Id. 6:14-16, 18 TTABVUE 9.
45 Id. 7:22-24, 18 TTABVUE 10.
46 Id. 8:10-12, 18 TTABVUE 11.
47 Id. 9:4-8, 18 TTABVUE 12.
48 Id. 10:1-4, 18 TTABVUE 13.
Cancellation No. 92055302
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Q. And was that something that you were doing to place on all the
uniforms at District Enterprises?
A. No, because my brother and I were the only ones that knew him.
…
Q. What uniforms did you take to have the initials DR placed on?
A. Only my brother’s and I.
Q. And you said before that you paid for that to be done?
A. Yes.
Q. Did you personally pay to have things like your name placed in
script on a uniform?
A. No.
Q. Who paid for that?
A. The company.49

Dan testified that he left his employment with Petitioner a couple of days after his
brother was fired, in February 2008.50 He stated that DR did not appear on any
trucks or other equipment, on advertising, posters or billboards prior to his
departure from the company;51 that he was involved in deciding how to paint the
trucks, and that no one ever decided to place DR on truck 716 prior to his departure
from the company.52 Although in 2010 or 2011 he saw District’s truck Nos. 716 and
55 repainted and with a DR designation on them, he stated repeatedly that those
markings did not exist prior to February 2008.53 Dan testified that Respondent
commenced use of its registered mark on business cards and uniforms “As soon as
we started the company,”54 in March 2008.55

49 Id. 9:9-11:4, 18 TTABVUE 12-14.
50 Id. 11:19-12:5, 18 TTABVUE 14-15.
51 Id. 13:10-14, 18 TTABVUE 16.
52 Id. 24:6-22, 18 TTABVUE 27.
53 Id. 21:19-22:13; 29:2-23; 31:2-5; 32:23; 33:22-23; 35:9, 18 TTABVUE 24-25, 32, 34-36, 38.
54 Id. 41:4-5, 18 TTABVUE 44.
55 Id. 42:22, 18 TTABVUE 45.
Cancellation No. 92055302
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Dennis testified that his job with Petitioner included taking care of the trucks,
beginning in 1999 or 2000.56 He confirmed repeatedly that DR did not appear on
any trucks prior to his departure in 2008.57 He stated that he first noticed use of DR
on Petitioner’s uniforms “sometime around 2010”;58 and that he first saw truck No.
55 marked with a DR at the “end of 2011 beginning of 2012.”59 He testified that only
he and Dan discussed using DR as a memorial to their father, for sentimental
reasons,60 and that there was no discussion with others regarding use of DR as a
company-wide mark.61 He stated, “It was never on any trucks. It was on my uniform
and my brother’s uniform.”62 He stated repeatedly that only he and his brother wore
the DR designation:
… the only thing the DR was on was my brother and I’s
uniforms. That’s it.
…
So when my brother and I were working there, the DR or
any variation thereof was only my uniform or his
uniform.63

C. Analysis.
In important respects, Petitioner’s version of events and that of Respondent cannot
be reconciled. In an attempt to assign appropriate weight to the testimony of the

56 Dennis 8:5-19, 18 TTABVUE 64.
57 Id. 10:24; 14:3-4;43:9; 45:19-23, 18 TTABVUE 66, 70, 99, 101.
58 Id. 22:10; 22:18-24, 18 TTABVUE 78.
59 Id. 47:4-7, 18 TTABVUE 103.
60 Id. 13:2-11, 18 TTABVUE 69.
61 Id. 13: 24, 18 TTABVUE 69.
62 Id. 14:3-4, 18 TTABVUE 70.
63 Id. 53:15-16; 54:6-8, 18 TTABVUE 109-110.
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various witnesses, we note that the testimony offered on behalf of Petitioner was
characterized by reticence, vagueness, uncertainty, and an overall lack of clarity. In
particular, Petitioner’s witnesses showed uncertainty and confusion regarding the
dates as of which Petitioner claims to have first used the DR designation. On this
point, they offered accounts that are not consistent with one another, and are
sometimes internally inconsistent. Petitioner’s case is also characterized by a nearly
complete lack of documentary evidence dating from relevant time periods. Two
photographs of a single jacket that Dan Radwanski admits to having worn are the
only datable evidence of the display of the mark that Petitioner claims as its own.
As Respondent has argued, the lack of photographs from relevant times is notable,
since it was the custom of the company to document its vehicle recovery operations
with photographs of the scenes to which Petitioner sent its personnel and
equipment. (Mr. Rubin testified that Petitioner’s records include “dozens of boxes of
photographs” containing “probably thousands of photos,” and described his efforts in
searching through those boxes of photographs for evidence.)64
By contrast, Respondent’s witnesses testified knowledgeably about Petitioner’s
business, and with substantially greater clarity and detail. In doing so, they directly
controverted Petitioner’s claims of adoption and use of the mark at issue. Dan and
Dennis admit to having worn the letters DR on their sleeves, as a symbol of
commemoration, while performing their duties for Petitioner. Their account casts
serious doubt on whether Petitioner itself ever intended to adopt any form of the DR

64 Rubin Testimony 44:7-10; 48:10-17 19, TTABVUE 95, 99.
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20

designation as its indicator of source. Petitioner admits in its brief that “the mark
was initially conceived of as a memorial for the late Dennis Radwanski …,”65
conceding this aspect of Respondent’s witnesses’ account. The display of a
commemorative symbol is not the use of a trademark. Petitioner contends, however,
that “the mark evolved into a service mark for [Petitioner] in the minds of its
consumers …”66 Yet Petitioner presents no persuasive account, through testimony
or other evidence, as to how or when this supposed transformation of the symbol’s
function occurred.
Even if we overlook the conceptual difficulties raised by the genesis of the DR
designation as a commemorative symbol, most of Petitioner’s testimony and
evidence do not persuasively contradict Respondent’s contention that only Dan and
Dennis used the DR designation for their own personal reasons. Even according to
Petitioner’s version of events, the DR designation was displayed in only an
extremely limited way, on only a few uniforms and trucks, during the relevant time
period.67
In sum, the greater weight of the evidence in this case favors Respondent. We find
that Petitioner has failed to meet its burden of proving, by a preponderance of the

65 Petitioner’s brief at 3, 29 TTABVUE 5.
66 Id.
67 On this point, even the invoice evidence that we have excluded shows (if we interpret it in
the light most favorable to Petitioner) that only a very few garments, such as might have
been worn only by Dan and Dennis, were ever embroidered with a DR designation at any
relevant time. However, Petitioner, as the plaintiff in this case, is not entitled to an
interpretation most favorable to itself. The excluded invoices contain a substantial amount
of commercial jargon and abbreviations whose meaning requires explanation; and we are
not persuaded that Mr. Rubin, who apparently never dealt directly with the issuer of the
invoices, was an appropriate witness to provide such an explanation.
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evidence, a proprietary interest in its asserted mark prior to August 19, 2009.
Because Petitioner cannot establish the requisite priority of use, its claim under
Trademark Act Section 2(d) must fail.
V. Petitioner’s claim of fraud.
We turn next to Petitioner’s claim that Respondent’s registration was obtained
fraudulently. Petitioner alleges that Respondent
had actual knowledge of Petitioner’s use of the “DR 1942-
99” mark and Petitioner’s prior rights in and to the Mark.
For that reason, upon information and belief,
[Respondent’s] several verifications under Lanham Act § 1
were false. Specifically, [Respondent] falsely affirmed that
it was “the owner of the mark sought to be registered” and
also falsely affirmed that “no other person, firm,
corporation, or association has the right to use the mark
in commerce, either in the identical form thereof or in
such near resemblance thereto as to the likely … to cause
confusion, or to cause mistake, or to deceive.”68
Fraud in procuring a trademark registration occurs only when an applicant
knowingly makes a false, material representation with the intent to deceive the
United States Patent and Trademark Office. In re Bose Corp., 580 F.3d 1240, 91
USPQ2d 1938, 1941 (Fed. Cir. 2009). “Subjective intent to deceive, however difficult
it may be to prove, is an indispensable element in the analysis.” Id. A party seeking
cancellation of a trademark registration for fraudulent procurement bears a heavy
burden of proof. Id., citing W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 377 F.2d
1001, 153 USPQ 749, 750 (CCPA 1967).

68 Petition for cancellation ¶ 20, 1 TTABVUE 7.
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We have found that Petitioner has failed to demonstrate its “prior rights in and to
the Mark.” Accordingly, Petitioner cannot demonstrate the alleged falseness of
Respondent’s representations to the USPTO. We note in addition that no testimony
or evidence introduced at trial addressed the subjective intent to deceive on the part
of any person involved in procuring the Registration. We therefore find that
Petitioner has failed to prove its claim of fraud.
VI. Petitioner’s argued claim of nonuse.
Petitioner argued at length in its brief that “[Respondent’s] Registration Should Be
Cancelled Because They Do Not Use The “DR” Logo As A Service Mark.”69 No claim
to this effect was set forth in the petition to cancel the Registration; nor was the
claim tried. Accordingly, we do not entertain it.
Decision: The petition for cancellation is dismissed as to all asserted grounds.

69 Petitioner’s brief, Part III, at 15-20, 29 TTABVUE17-22.