Fuji Television Network, Inc.v.Brian Prince

Trademark Trial and Appeal Board

Jan 8, 2021

92068100 (T.T.A.B. Jan. 8, 2021)

mbm/Bukrinsky January 8, 2021 Cancellation No. 92068100 Fuji Television Network, Inc. v. Brian Prince Before Zervas, Wolfson, and Greenbaum, Administrative Trademark Judges. By the Board: This proceeding comes before the Board on the parties’ cross-motions for summary judgment. Petitioner filed its motion on August 7, 2020. 33-34 TTABVUE. Respondent filed his combined response and cross-motion on September 8, 2020. 35- 38 TTABVUE. Petitioner filed its combined response to the cross-motion and reply in support of its own motion on October 8, 2020. 40 TTABVUE. Background Respondent owns Registration No. 4376833 for the standard character mark ALLEZ CUISINE in connection with the following goods in Class 29: “Cooked and Frozen ready to heat and serve prepackaged entrees consisting primarily of meat, chicken, fish, seafood, or vegetables, namely, beef steaks, ground beef patties, beef chop suey, Salisbury steak, beef with gravy, Bar-B-Q sauces, sliced beef, beef steaks, 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 General Email: TTABInfo@uspto.gov THIS OPINION IS NOT A PRECEDENT OF THE TTAB Cancellation No. 92068100 2 buttered beef steaks, ground beef patties, breaded veal chop lets, breaded pork chop lets, chop suey with rice, stuffed cabbage with tomato sauce and beef, turkey with dressing, chicken with noodles, stuffed peppers with tomato sauce, beef with tomato sauce, chicken with spaghetti, chicken with pasta, chicken with dumplings, chicken in green salad, veal parmigiana, chicken parmigiana, meat balls with pasta, meat loaf with gravy, and turkey with gravy.” The underlying application was filed under Section 1(b), 15 U.S.C. §1051(b), on October 21, 2010. Respondent obtained three extensions of time to file his statement of use, with the final deadline expiring on August 16, 2013. On May 29, 2013, Respondent filed his statement of use. The registration issued on July 30, 2013. Respondent filed a Declaration of Use under Section 8, 15 U.S.C. § 1058, on January 30, 2020. In its amended petition to cancel, Petitioner asserts claims of abandonment, that Respondent’s registration is void ab initio due to nonuse, and that Respondent committed fraud on the USPTO. 17 TTABVUE 10-19. In his answer to the amended petition to cancel, Respondent denied the salient allegations therein. 26 TTABVUE. Petitioner now moves for summary judgment on its nonuse and abandonment claims. 33 TTABVUE. Respondent cross-moves for summary judgment on Petitioner’s claims of abandonment, nonuse, and fraud. 35 TTABVUE.1 1 We have considered the parties’ briefs and evidence, but address the record on summary judgment only to the extent necessary to set forth our analysis and findings, and do not repeat or address all of the parties’ arguments or evidence. Guess? IP Holder LP v. Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015). Cancellation No. 92068100 3 Legal Standard Summary judgment is an appropriate method of disposing of cases in which there is no genuine dispute with respect to any material fact, thus allowing the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(a). A party moving for summary judgment has the burden of demonstrating the absence of any genuine dispute as to a material fact, and that it is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987). 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 Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). The evidence of record must be viewed in the light most favorable to the non-moving party, and all justifiable inferences must be drawn from the undisputed facts in favor of the non- moving party. See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. When a moving party’s motion for summary judgment is supported by evidence sufficient to indicate that there is no genuine dispute as to any material fact and the moving party is entitled to judgment, the burden shifts to the non-moving party to demonstrate the existence of a genuine dispute regarding at least one material fact which requires resolution at trial. Embarcadero Techs., Inc. v. Delphix Corp., 117 USPQ2d 1518, 1521 (TTAB 2016). The non-moving party, however, may not rest on Cancellation No. 92068100 4 the mere allegations of its pleadings and assertions, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine dispute as to a material fact for trial. See Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.3d 831, 221 USPQ 561, 564 (Fed. Cir. 1984) (“The party opposing the motion must point to an evidentiary conflict created on the record at least by a counter statement of a fact or facts set forth in detail in an affidavit by a knowledgeable affiant.”). Consequently, factual assertions, without evidentiary support, are insufficient to defend against a motion for summary judgment. See Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1739 (TTAB 2001) (“applicant has produced no evidence, or raised any expectation that at trial it could produce evidence”); S & L Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221, 1225 n.9 (TTAB 1987). When cross-motions for summary judgment are presented, the Board evaluates each motion on its own merits and resolves all doubts and inferences against the party whose motion is being considered. Ava Ruha Corp. v. Mother's Nutritional Ctr., Inc., 113 USPQ2d 1575, 1579 (TTAB 2015). The mere fact that both parties have filed motions for summary judgment does not necessarily mean that there are no genuine disputes of material fact, and that trial is unnecessary. See Univ. Book Store v. Univ. of Wis. Bd. of Regents, 33 USPQ2d 1385, 1389 (TTAB 1994). Decision For the reasons explained below, we grant Petitioner’s motion for summary judgment on its nonuse claim, and deny Respondent’s cross-motion for summary Cancellation No. 92068100 5 judgment on that claim. Inasmuch as our decision on this claim is dispositive of the proceeding, we do not reach Petitioner’s motion for summary judgment on its claim of abandonment, nor Respondent’s cross-motion for summary judgment on abandonment and fraud. Petitioner’s Entitlement to a Statutory Cause of Action2 Entitlement to a statutory cause of action is a threshold issue in every inter partes case. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)). A party in the position of plaintiff may petition for cancellation of a registered mark where such cancellation is within the zone of interests protected by the statute, 15 U.S.C. § 1064, and the party’s reasonable belief in damage is proximately caused by continued registration of the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *6-7 (Fed. Cir. 2020). In its amended petition for cancellation, Petitioner pleaded that it was entitled to bring this cancellation proceeding because Respondent’s registration had been cited as a bar to registration of Petitioner’s Application Serial No. 86181115 for the mark ALLEZ CUISINE, under Section 2(d), 15 U.S.C. § 1052(d). 17 TTABVUE 11. With its 2 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections 13 and 14 remain applicable. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *7-8 (Fed. Cir. 2020); Spanishtown Enters., Inc. v. Transcend Res., Inc., 2020 USPQ2d 11388, at *2 (TTAB 2020). Cancellation No. 92068100 6 summary judgment motion, Petitioner submitted the Final Office Action issued in connection with its pending application, citing Respondent’s involved registration as a bar to registration under Section 2(d). 33 TTABVUE 40-45. In view thereof, we find no genuine dispute of material fact that Petitioner has demonstrated an interest falling within the zone of interests protected by the statute, and a reasonable basis for its belief of damage proximately caused by continued registration of Respondent’s mark.3 See Empresa Cubana del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (“Because the USPTO refused Cubatabaco’s registration based on a likelihood of confusion with General Cigar’s Registrations, Cubatabaco has a real interest in cancelling the Registrations and a reasonable belief that the Registrations blocking its application are causing it damage.”). Accordingly, we find that Petitioner is entitled to a statutory cause of action. See Corcamore, 2020 USPQ2d 11277 at *4; Australian Therapeutic Supplies, 2020 USPQ2d 10837 at *3; Weatherford/Lamb Inc. v. C&J Energy Services Inc., 96 USPQ2d 1834, 1837 (TTAB 2010); Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1959 (TTAB 2008). Nonuse To prevail on its claim of nonuse, Petitioner must establish that there is no genuine dispute of material fact that Respondent had not used the mark ALLEZ CUISINE in commerce on the goods identified in the registration as of August 16, 2013, the deadline for filing his statement of use. See Tao Licensing, LLC v. Bender Consulting Ltd, 125 USPQ2d 1043, 1055 (TTAB 2017); Ashland Licensing & 3 Moreover, Respondent does not dispute Petitioner’s entitlement to a statutory cause of action. Cancellation No. 92068100 7 Intellectual Property LLC v. Sunpoint Int’l Grp. USA Corp., 119 USPQ2d 1125, 1131 (TTAB 2016); Embarcadero Techs., 117 USPQ2d at 1524 (“[T]he actual filing of a statement of use does not cut off the deadline for meeting the requirements for a statement of use” so the focus in a nonuse claim is whether the mark was in use as of the deadline to file a statement of use). Section 45 of the Trademark Act defines “use in commerce” for goods as: the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.... A mark shall be deemed to be in use in commerce ... on goods when-- (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes it impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce[.] 15 U.S.C. § 1127. Accordingly, two requirements must be satisfied for use in commerce: (1) display of a mark in a manner to associate it with the goods; and (2) sale or transportation of the goods in commerce. Id. As an initial matter, Petitioner cites the wrong standard in its petition to cancel, alleging that Respondent’s mark is void ab initio because “Respondent had no bona fide use of his ALLEZ CUISINE mark in commerce prior to or at the time of filing the May 29, 2013 Statement of Use.” 17 TTABVUE 12 ¶ 7 (emphasis added). Inasmuch as Petitioner also alleges that Respondent never used his mark however, we find Petitioner’s claim of nonuse to include an allegation that Respondent did not use his mark as of the deadline for filing a statement of use. See id. ¶ 9 (“Petitioner has confirmed in discovery that Respondent has no documents that credibly evidence any use whatsoever of the ALLEZ CUISINE mark by Respondent.”). See also Cancellation No. 92068100 8 Embarcadero Techs., 117 USPQ2d at 1524 (cutoff date for a nonuse claim is the deadline to file a statement of use). Accordingly, the complaint is construed to sufficiently plead a nonuse claim. See IdeasOne Inc. v. Nationwide Better Health, 89 USPQ2d 1952, 1953 (TTAB 2009) (pleading must be examined in its entirety, construing the allegations therein liberally, as required by Fed. R. Civ. P. 8(f), to determine whether it contains any allegations which, if proved, would entitle plaintiff to the relief sought). Further, Petitioner cites the correct standard in its motion, and Respondent has not objected to Petitioner’s motion on the ground that it is based, in part, on an unpleaded issue, but rather has treated the issue on its merits. Accordingly, to the extent that it may be necessary to do so, we deem Petitioner’s pleading to be amended, by agreement of the parties, to assert the proper standard.4 See Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1772, (TTAB 1994). Petitioner relies on Respondent’s discovery responses and document production (or lack thereof) to argue that Respondent had not used his mark in commerce as of August 16, 2013. See 33 TTABVUE 14-16, 64-120; 34 TTABVUE 121-164.5 In response to Petitioner’s interrogatory asking Respondent to “identify by month, since the date of adoption of the ALLEZ CUISINE Mark, the total revenue for each of Respondent’s ALLEZ CUISINE goods,” Respondent responded only by pointing to documents labeled PRINCE_0139 - PRINCE_0150. 33 TTABVUE 76-77. These 4 To the extent necessary, we also deem Respondent’s answer to be amended to deny the allegation. 5 34 TTABVUE is the confidential version of Petitioner’s motion. We cite to the parties’ public filings wherever possible and refer only generally to the types of documents and evidence designated confidential. Cancellation No. 92068100 9 documents consist of bank statements from 2017. 34 TTABVUE 121-132. Further, in response to Petitioner’s interrogatory asking that Respondent “[i]dentify by month, since the date of adoption of the ALLEZ CUISINE Mark, the total number of Respondent’s ALLEZ CUISINE Goods sold,” Respondent stated only that he “does not recall the total number of goods sold on a monthly basis.” Id. at 77-78.6 Petitioner further states that Respondent produced no documents evidencing sales or transportation of the registered goods prior to May 2014, even though these documents would have been responsive to Petitioner’s discovery requests. 33 TTABVUE 8-10, 102-107. Finally, Petitioner argues that the specimen of use submitted by Respondent in connection with Respondent’s application was never used in commerce, as evidenced by the fact that it contains gibberish placeholder text where the ingredients list and product description should be. 33 TTABVUE 5, 60-61. In response, Respondent submits two declarations of Brian Prince. The first declaration is dated November 5, 2018, and was originally submitted in connection with Respondent’s first motion for summary judgment (see 8 TTABVUE 9-13). 36 6 Respondent’s interrogatory responses are signed by Respondent’s attorney, and do not appear to be verified by Respondent under oath. Fed. R. Civ. P. 33(b)(3) requires that each interrogatory must, to the extent it is not objected to, be answered under oath. Unsigned and unverified answers to interrogatories do not qualify as answers under Fed. R. Civ. P. 33. Daniel J. Quirk, Inc. v. Vill. Car Co., 120 USPQ2d 1146, 1151 (TTAB 2016) (citing Cabales v. United States, 51 F.R.D. 498, 499 (S.D.N.Y. 1970), aff’d, 447 F.2d 1358 (2d Cir. 1971)). However, Petitioner also attached to its summary judgment motion a copy of Respondent’s declaration originally submitted in connection with Respondent’s November 5, 2018 motion for summary judgment, which corroborates some of the cited interrogatory responses. See, e.g., 33 TTABVUE 128 (“I did not maintain many records of actual use of the ALLEZ CUISINE mark.”). Accordingly, even if we do not consider the interrogatory responses, we reach the same conclusion based on the totality of evidence submitted by Petitioner, as well the evidence submitted by Respondent in response to the motion for summary judgment. We discuss the November 5, 2018 declaration more fully below. Cancellation No. 92068100 10 TTABVUE 2-6. With the November 5 declaration, Respondent submits the following exhibits: corporate registration documents for Allez Cuisine, Inc. dated January 2011; a printout from Whois.com showing a registration for the domain name allezcuisinefoods.com dated October 22, 2010; photographs of what Mr. Prince describes as “frozen meals bearing the ALLEZ CUISINE mark in a freezer of a local grocery store in Los Angeles,” that he placed there “in or about May 2014”; Mr. Prince’s business card identifying him as “President” and bearing the mark ALLEZ CUISINE; a copy of a bill of lading from 2017 (confidential);7 copies of checks dated March 19, 2015 and April 16, 2015, and a check stub dated June 23, 2017, made out to ALLEZ CUISINE (confidential); copies of bank statements for an account owned by “Allez Cuisine Inc.” dated various months in 2016 and 2017 (confidential); photographs of frozen meals bearing the ALLEZ CUISINE mark and Fedex records for shipping those goods in April 2018 to “Kevin Keener”;8 and a screen shot of the website allezcuisinefoods.com dated October 13, 2018. 36 TTABVUE; 38 TTABVUE (confidential exhibits).9 In his second declaration, dated September 8, 2020, Mr. Prince states that Allez Cuisine, Inc. is his “related company.” 35 TTABVUE 15. Mr. Prince also states that 7 The document is largely illegible; however, the date and the recipient name “Allez Cuisine” are visible. 38 TTABVUE 32. It is the filer’s responsibility to ensure that all submissions are legible. See TBMP § 110.02(b). 8 Mr. Keener is Respondent’s counsel. 9 Respondent also attaches Mr. Keener’s declarations verifying many of these same exhibits. It is not necessary for exhibits to be verified by both Respondent and his counsel. Cancellation No. 92068100 11 in 2012, Allez Cuisine, Inc. sponsored a NASCAR car, and attaches a photograph of the car bearing the ALLEZ CUISINE mark. Id. at 15-18.10 Respondent also submits a declaration from Angie Lane, a paralegal employed by Mr. Keener. 36 TTABVUE 48-49. Ms. Lane states that she was the recipient of the April 2018 shipment of frozen meals referenced in Mr. Prince’s November 5, 2018 declaration. 36 TTABVUE 48-49. On the record, there is no evidence, documentary or otherwise, showing that Respondent sold or transported the goods identified in his registration prior to August 16, 2013.11 See In re Quantum Foods, Inc., 94 USPQ2d 1375, 1378-79 (TTAB 2010). In his declaration dated November 5, 2018, Mr. Prince identifies the activities that he took with relation to his mark prior to the August 16, 2013 deadline to file the statement of use: “In or about 2011 I began developing a business for selling and distributing gourmet cooked and frozen meals under the trademark ALLEZ CUISINE.” “On January 5, 2011 I incorporated Allez Cuisine, Inc. in the State of California.” “I have maintained Allez Cuisine, Inc. since 2011.” 10 Mr. Keener also submits a “supplemental declaration.” 37 TTABVUE. The declaration attaches at Exhibit 2 documents produced by Respondent, bates-stamped PRINCE0255-267, which appear to be printouts from the website www.jayski.com showing photographs of NASCAR cars from the 2012 NASCAR Sprint Cup, including an image of a racecar bearing the ALLEZ CUISINE mark. Id. at 47. 11 Respondent argues that Petitioner filed its motion for summary judgment four days before the close of discovery, and that Petitioner had several opportunities to take Respondent’s deposition but failed to do so. 35 TTABVUE 2-3. The relevance of these arguments is unclear, inasmuch as Petitioner was under no obligation to take Respondent’s deposition. In view thereof, Exhibit 1 to Mr. Keener’s “supplemental declaration,” which appears to relate only to this argument, is also irrelevant. See 37 TTABVUE 5. Cancellation No. 92068100 12 “To promote the use of ALLEZ CUISINE on cooked and frozen meals I registered the domain name allezcuisinefoods.com. I registered this domain on October 22, 2010.” “I prepared and filed the application to register the mark ALLEZ CUISINE which is the subject of the above captioned proceeding.” 36 TTABVUE 2-3. Mr. Prince’s September 8, 2020 declaration adds that his “related company,” Allez Cuisine Inc., “sponsored Richard Petty” in 2012, which involved displaying the ALLEZ CUISINE mark on Mr. Petty’s NASCAR racecar. 35 TTABVUE 10. See also 36 TTABVUE 2-3. None of these activities constitute sale or transportation of the registered goods, and consequently do not show use in commerce. See Stawski v. Lawson, 129 USPQ2d 1036, 1045 (TTAB 2018) (use of term as an assumed business name, as a domain name, and to advertise the goods does not demonstrate use in commerce sufficient to support registration); In re Quantum Foods, Inc., 94 USPQ2d at 1378-79 (“It long has been held that mere advertising is not sufficient to show trademark use.”). Further, Respondent’s specimen of use filed on May 29, 2013 appears to be a computer-generated mockup of product packaging that contains gibberish placeholder text, and Respondent does not argue in his summary judgment response that this packaging was ever used in commerce. See 35 TTABVUE 9-10. Mr. Prince also states in his November 5, 2018 declaration, “[a]fter the registration of the mark ALLEZ CUISINE, I continued to use of [sic] the ALLEZ CUISINE mark with respect to the goods covered under the subject registration. I did not maintain many records of actual use of the ALLEZ CUISINE mark.” 36 TTABVUE 3. Mr. Prince does not specify what he means by “continued to use” the Cancellation No. 92068100 13 ALLEZ CUISINE mark, and pointedly does not assert that he sold or transported any registered goods before the August 16, 2013 deadline for filing the statement of use. See id. In view of the totality of Mr. Prince’s testimony in his two declarations- and in particular the absence of any testimony regarding activities that could constitute actual use in commerce-the sole reasonable inference is that prior to August 16, 2013 Mr. Prince “continued to use” the mark for promotional and corporate organizational activities only.12 In view thereof, accepting all of Respondent’s concrete factual assertions as true, and giving Respondent the benefit of all reasonable inferences, Respondent has failed to raise a genuine dispute of material fact that he sold or transported any of the registered goods on or before August 16, 2013. See Octocom Sys., Inc. v. Houston Comp. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990); Hornblower & Weeks Inc., 60 USPQ2d at 1739 (factual assertions, without evidentiary support, are insufficient to defend against a motion for summary judgment). Accordingly, we find that there is no genuine dispute of material fact that Petitioner established its entitlement to a statutory cause of action and that Registration No. 4376833 is void ab initio due to nonuse. See 15 U.S.C. § 1127. See also Barbara’s Bakery, Inc. v. Barbara Landesman, 82 USPQ2d 1283, 1289-90 (TTAB 12 The remainder of Mr. Prince’s November 5, 2018 declaration discusses additional activities Respondent “continued” to undertake, including “plac[ing] frozen meals bearing the ALLEZ CUISINE mark in a freezer of a local grocery store in Los Angeles[,]” promotion of the mark, operation under the “trade name ALLEZ CUISINE,” ordering food products and sauces for use in making the registered goods, and operating a bank account under the name ALLEZ CUISINE. 36 TTABVUE 3-5. The attached exhibits are all dated months or years after the August 16, 2013, deadline and accordingly are irrelevant to the issue of nonuse at the time of the deadline. Cancellation No. 92068100 14 2007). We therefore grant Petitioner’s motion for summary judgment on its claim that Registration No. 4376833 is void ab initio due to nonuse. Accordingly, Respondent’s cross-motion for summary judgment on nonuse is denied. In view of this determination, we need not decide Petitioner’s claims of fraud or abandonment. Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., 126 USPQ2d 1526, 1540 n.52 (TTAB 2018) (Board has the “discretion to decide only those claims necessary to enter judgment and dispose of the case”). Judgment is entered against Respondent on the ground of nonuse, and Registration No. 4376833 will be cancelled in due course.