Dolanv.Fiore

Trademark Trial and Appeal Board

Mar 22, 2018

No. 91224173 (T.T.A.B. Mar. 22, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: March 22, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Dolan

v.

Fiore
_____

Opposition No. 91224173
_____

Ntazyel E. Mufwene of Mufwene Legal, LLC,
for Christine A. Dolan.

Vincent Fiore, pro se.
_____

Before Ritchie, Goodman, and Lynch,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
On April 9, 2015, Vincent Fiore (“Applicant”) applied to register DINNER WITH
THE MOB, in standard characters, for “entertainment services in the nature of live
visual and audio performances, namely, musical, variety, news and comedy shows,”
in International Class 41.1 Christine A. Dolan (“Opposer”) filed an opposition to the

1 Application Serial No. 86592875 was filed on April 9, 2015 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), claiming dates of first use and first use in commerce on
April 9, 2015.
Opposition No. 91224173
- 2 -
registration of Applicant’s mark on the ground that Applicant’s mark is likely to cause
confusion with Opposer’s mark, DINNER WITH THE MOB.2
Opposer alleged in the Notice of Opposition that she “has owned and operated a
highly successful ‘Dinner with the Mob’ live dinner show including merchandise sales
since 2011-2012,” and that she will be damaged by Applicant’s use of the mark.3
Applicant denied the salient allegations of the notice of opposition.
Both parties filed briefs, and Opposer filed a reply brief.4
I. Stipulation and Background Issues
The parties filed briefs during what was designated as their trial periods. Based
on the understanding of the Board attorney during the parties’ discovery conference,5
it appears that the parties intended to proceed by attaching what would otherwise be
submitted as evidence during their trial periods as instead, evidence to their briefs.
This was confirmed by the Board in an order dated November 2, 2017, notifying the
parties that if the Board did not hear from the parties in “THIRTY DAYS,” then the

2 The amended notice of opposition, which is the operative pleading, includes several grounds.
These include copyright infringement (5 TTABVUE 8), which is not within our jurisdiction.
We note that there was no claim raised on the ground that Applicant’s applied-for mark is a
single creative work under Trademark Act Section 1, 2, and 45, 15 U.S.C. §§ 1051, 1052, and
1127, nor was this raised as a refusal during prosecution. See Trademark Manual of
Examining Procedure (TMEP) (October 2017) § 1202.08 (“The title of a single creative work
is not registrable on either the Principal or Supplemental Register.”)
3 5 TTABVUE 8-11.
4 Applicant filed a sur-reply brief. 30 TTABVUE. This is not permitted under Board rules and
has been given no consideration. See Trademark Trial and Appeal Board Manual of
Procedure (TBMP) (June 2017) § 801.02(d) (“There is no provision for filing a reply brief,
rebuttal brief, rejoinder brief, etc. by a party in the position of defendant. If a party in the
position of a defendant files such a brief, it may be stricken, or given no consideration, by the
Board.”)
5 18 TTABVUE.
Opposition No. 91224173
- 3 -
Board would accept the submissions on the basis that the parties “stipulated to
submit trial briefs with accompanying evidence,” and the case would be submitted for
decision on the merits.6 The parties did not respond to the order, and the only further
correspondence from the parties was a change of correspondence address from
Opposer’s counsel, dated January 30, 2018 (almost two months later), notifying the
Board of a change to counsel’s email address only.7 Thus, the Board accepts the briefs
and attached evidence as having satisfied the trial and briefing schedule.
As noted above, Opposer pointed to several claims in her notice, which she
pursued in her amended notice of opposition. However, with her final brief, Opposer
only discussed likelihood of confusion, and thus all other claims are waived. See
Alcatraz Media, Inc. v. Chesapeake Marine Tour Inc., 107 USPQ2d 1750, 1753 (TTAB
2013) (petitioner’s pleaded descriptiveness and geographical descriptiveness claims
not argued in brief deemed waived); aff’d, 565 F.App’x 900 (Fed. Cir. 2014) (mem.);
Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1314 n.4 (TTAB 2005)
(pleaded dilution ground not pursued on brief deemed waived). That said, it appears
that both parties base their discussion very much on their rights in copyright, which
is not within our jurisdiction.
To the extent that this is a case about likelihood of confusion of trademark rights,
Applicant has conceded that “the marks are unquestionably identical,”8 they are

6 31 TTABVUE.
7 33 TTABVUE.
8 28 TTABVUE 15.
Opposition No. 91224173
- 4 -
“unquestionably used in identical or substantially similar goods or services,”9 “the
goods are offered in the same channels of trade,”10 and “[t]here have been instances
of confusion between consumers and business clients who have mistaken the
Applicant’s award winning show with that of the Opposer’s.”11 Thus, there is no
dispute that there is a likelihood of confusion between the marks. The only question
is as to priority.
II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the subject application, as well as the following:
A. Evidence Submitted by Opposer
• Opposer’s copyright registration for “Dinner with the Mob,” dated July 25,
2012;
• Letters from Opposer offering licenses for “Dinner with the Mob”;
• Applicant’s Facebook page;
• A printed timeline of Opposer’s productions from 2011-2015;
• Letters from Opposer referring to “franchise agreement” for “Dinner with the
Mob”;
• An email to Opposer from Groupon, dated October 6, 2015;
• A transcribed phone message; and
• Other emails.

9 28 TTABVUE 15.
10 28 TTABVUE 18.
11 28 TTABVUE 18.
Opposition No. 91224173
- 5 -
B. Evidence Submitted by Applicant
• A copy of the cease and desist letter sent by Opposer’s counsel, dated April 7,
2015;
• A partially executed agreement with Blackrock Entertainment LLC, dated
July 1, 2017;
• Marketing information;
• Evidence submitted by Opposer;12
• An email from R. Chappell Phillips, Assistant General Counsel & Assistant
Secretary of Golden Corral Corporation, dated July 5, 2017;
• Applicant’s copyright registration for “Dinner with the Mob,” dated April 9,
2015;
• Online reviews of Opposer’s “Dinner with the Mob” show, dated July 8, 2012
and July 17, 2012;
• Georgia state filings regarding Dolantry Productions, LLC; and
• Online articles regarding Applicant’s “Dinner with the Mob” show, from 2013
to 2017.
III. Standing
To have standing, a plaintiff must have a real interest, i.e., a personal stake in the
outcome of the proceeding and a reasonable basis for its belief that it will be damaged.
See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d

12 Evidence already submitted by Opposer was duplicative, and it was unnecessary for
Applicant to re-submit it, since once evidence is submitted by one party, it may be referred
to by any party. Trademark Rule 2.122(a), 37 CFR § 2.122(a).
Opposition No. 91224173
- 6 -
1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015); Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023, 1025-28 (Fed. Cir. 1999).
Opposer has established that it has a commercial interest in using the term
DINNER WITH THE MOB. Applicant admits in his answer as well as in his brief to
having received a cease and desist letter from counsel for Opposer “[o]n April 7,
2015.”13 Applicant further attached the letter as Exhibit A to his brief.14 While
questioning priority, Applicant refers in his brief to Opposer’s use of the term
DINNER WITH THE MOB,15 as well as referring to Opposer’s trademark application
filing “on April 13, 2015.”16 Accordingly, we find that Opposer has established her
standing in this proceeding.
IV. Priority
To establish priority on a likelihood of confusion claim brought under Trademark
Act Section 2(d), a party must establish that, vis-à-vis the other party, it owns “a
mark or trade name previously used in the United States … and not abandoned….”
Trademark Act Section 2(d), 15 U.S.C. §1052(d). A party may establish its own prior
proprietary rights in a mark through ownership of a prior registration, actual use or
through use analogous to trademark use, such as use in advertising brochures, trade
publications, catalogues, newspaper advertisements and Internet websites which
create a public awareness of the designation as a trademark identifying the party as

13 4 TTABVUE 5; 28 TTABVUE 19.
14 28 TTABVUE 26.
15 28 TTABVUE 11.
16 28 TTABVUE 12.
Opposition No. 91224173
- 7 -
a source. See Trademark Act §§2(d) and 45, 15 U.S.C. §§ 1052(d) and 1127. See also
T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996),
vacating PacTel Teletrac v. T.A.B. Systems, 32 USPQ2d 1668 (TTAB 1994).
Inasmuch as Opposer has not pleaded ownership of any registered trademark,
Opposer relies on her common law use of DINNER WITH THE MOB as a trademark
to prove priority. In order for a plaintiff to prevail on a claim of likelihood of confusion
based on its ownership of common law rights in a mark, the mark must be distinctive,
inherently or otherwise, and Opposer must show priority of use. See Otto Roth & Co.
v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). No issue has
been raised as to the distinctiveness of the term “DINNER WITH THE MOB” and
based on the record before us, we find it to be inherently distinctive for the services
at issue in this proceeding.
In a case involving common law rights, priority is determined by a preponderance
of the evidence. Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1023 (TTAB
2009). Applicant is entitled to a constructive use date of the filing date of his
application, which is April 9, 2015. See Trademark Act Section 7(c); 15 U.S.C. §
1057(c); Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840, 1844 (TTAB
1995).17 To establish her prior rights, Opposer must show that she has performed the
alleged services “as a regular and recurring activity associated with the mark.”

17 Applicant attached a copy of Opposer’s trademark application to the answer, and referred
to it therein. 4 TTABVUE 6, 31-32. Opposer constructive use date is April 13, 2015, which is
a date subsequent to Applicant’s constructive use date.
Opposition No. 91224173
- 8 -
Giersch, 90 USPQ2d at 1023. Implicit in that finding is that any use as a mark must
be continuous and not abandoned. Id.
Applicant admits in his brief that Opposer used the term DINNER WITH THE
MOB in 2011, stating: “Opposer had abonded [sic] her use of the mark DINNER
WITH THE MOB in 2011 and has never used the mark publicly”;18 “Opposer has not
promoted, marketed or performed her dinner show since 2011”;19 and “[t]he Opposer
has not used the mark DINNER WITH THE MOB beyond 2011.”20 However, we do
not take these as admissions by Applicant that Opposer has established priority of a
mark through regular and recurring use such as to establish identification of source.
Rather, Applicant disputes that Opposer has trademark rights, and notes that
Opposer seems to be resting her case on copyright rather than trademark rights,
saying “Opposer has made numerous claims in her brief that she holds the copyright
to DINNER WITH THE MOB . . . Opposer also contacted Applicant’s clients through
a Cease and Desist Letter mailed to them by Opposer’s attorney accusing Applicant
of the same.”21
Indeed, Opposer attached her copyright registration as an exhibit to her brief.
While relevant perhaps to copyright infringement, this does not factor into
establishment of trademark rights. See In re Cooper, 254 F.2d 611, 117 USPQ 396,
400 (CCPA 1958) (“The right to copy which the law contemplates includes the right

18 28 TTABVUE 9.
19 28 TTABVUE 11.
20 28 TTABVUE 12.
21 28 TTABVUE 19.
Opposition No. 91224173
- 9 -
to call the copy by the only name it has and the title cannot be withheld on any theory
of trademark right therein.”); Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1142
(TTAB 2011). Opposer also attached letters from 2011 and 2012 wherein she appears
to offer permission to a third party to use the copyright in her show “Dinner with the
Mob.”22 These letters appear to refer to copyright not trademark licenses, however.
Furthermore, as with all of the exhibits to Opposer’s brief, they are unauthenticated.
While parties may submit testimony by declaration or affidavit in accordance with
Trademark Rule 2.123(a), 37 CFR § 2.123(a), there is no declaration or affidavit
included with the evidence. Thus, even accepting the exhibits as having been
stipulated into evidence despite not being appropriate material for notice of reliance,
as there was no objection thereto, we still cannot accept the evidence for the truth of
the matter asserted therein. See WeaponX Performance Products Ltd. v. Weapon X
Motorsports, Inc., __ USPQ2d ___, Opposition No. 91221553 (TTAB March 13, 2018)
(opposer failed to establish priority since without accompanying testimony, material
submitted with notice of reliance admissible only for what they “show on their face,”
and not for truth); Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d
1160, 1165 (TTAB 2017) (material submitted with notice of reliance “may be used for
what they show on their face and not for the truth of the matter asserted”); General
Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1592 (TTAB
2011) (as to matter submitted under notice of reliance, Board “not considering them
for the truth of the matter asserted therein, inasmuch as the statements therein

22 27 TTABVUE 26-29.
Opposition No. 91224173
- 10 -
constitute hearsay”). Thus, the various letters and emails submitted by Opposer do
not prove that Opposer was using the term DINNER WITH THE MOB as a mark.
Likewise, the timeline submitted by Opposer as Exhibit D, with unidentified
handwritten notes, cannot be accepted for the truth of what is stated in the timeline,
and thus does little to tell us about Opposer’s use, if any, of DINNER WITH THE
MOB as a mark.
In short, Opposer has failed to prove by a preponderance of the evidence that she
has prior unabandoned trademark rights in the term DINNER WITH THE MOB,
such as to establish priority of use. Without such priority, Opposer cannot prevail in
her claim of likelihood of confusion.
Decision: The opposition is dismissed.