George Garciav.George K. Setka

Trademark Trial and Appeal Board

Jul 13, 1998

No. 92023554 (T.T.A.B. Jul. 13, 1998)

Paper No. 17
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 13, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
George Garcia
v.
George K. Setka
_____
Cancellation No. 23,554
_____
Irving Keschner for George Garcia.
George K. Setka appearing pro se.
_____
Before Simms, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
George Garcia has petitioned to cancel George K.
Setka’s Registration No. 1,849,716 for DUDA MAN and design
for “men [sic] and womens [sic] clothing, namely, T-shirts.”
This registration issued on the Supplemental Register on
August 9, 1994. The issue before us is whether respondent
is the owner of the mark, petitioner having alleged, in the
petition for cancellation, that in 1990 he and respondent
formed a partnership under the name Wetsun Sportswear, which
Cancellation No. 23,554
2
was in the business of designing logos, other designs and
silk-screening operations for their clients. Petitioner
also alleged that during the time Wetsun was operating,
respondent developed the design DUDA MAN; that this design
was an asset of the partnership; that respondent initially
applied to register this mark under Serial No. 74/206,083,
stating that the applicant was “George K. Setka: a
partnership composed of George Setka and George Garcia”
which statement accurately reflected the ownership of the
trademark as being the partnership, although the name of the
partnership was misstated; that this application was
abandoned; that respondent filed application Serial No.
74/230,454 (which ultimately issued into the registration
which is the subject of this proceeding); that respondent
named himself as the applicant and stated therein that the
prior application had been a mistake because the design was
his rather than the partnership’s; and that respondent is
not and never was the sole owner of the trademark, which
belongs to the partnership. Petitioner has also alleged he
is damaged because the profits derived from the use of the
trademark are revenue of the partnership.
Respondent answered the petition for cancellation by
admitting that petitioner and respondent had formed a
partnership in or about 1990 under the fictitious name
Wetsun Sportswear, which was in the business of designing
Cancellation No. 23,554
3
logos, other designs, and silk-screening operations for
their clients; that on September 23, 1991 respondent filed
trademark application Serial No. 74/206,083 for DUDA MAN and
design; and that in April 1993 this application was
abandoned and on December 16, 1991 respondent filed
application Serial No. 74/230,454 naming himself as
applicant and stating that the prior application was a
mistake in that the design was his and not that of the
partnership. Respondent denied the remaining allegations in
the petition.1
Because of problems with the evidentiary submission by
both parties, we will discuss the record in some detail.
The registration file which is the subject of this
proceeding is automatically of record by virtue of Trademark
Rule 2.122(d). In addition, petitioner has submitted his
testimony deposition, with exhibits, properly taken during
petitioner’s testimony period.
Petitioner referred, in his brief, to respondent’s
responses to interrogatories and requests for admission
served by petitioner, but the Office has no record of
receipt of such papers during petitioner’s testimony period.

1 Respondent’s answer was acknowledged by the Board on June 20,
1995. On January 2, 1996 respondent submitted, inter alia, a
document stated to be in response to the petition to cancel. The
Board, in its decision of March 4, 1996 commenting on the January
2 communication, did not treat this document as an amended
answer, and we reiterate that, in view of the fact that
respondent never moved to amend his pleading, the answer filed on
June 20, 1995 will stand.
Cancellation No. 23,554
4
Upon inquiry by the Board, petitioner submitted, on June 15,
1998, a copy of a notice of reliance which bears, on a
certificate of service on respondent, a date of April 19,
1996. However, this copy does not bear a certificate of
mailing, nor has petitioner provided any evidence showing
that the notice of reliance was received by the Patent and
Trademark Office during the testimony period. Therefore,
petitioner’s notice of reliance and accompanying papers have
not been considered.
Respondent’s testimony period was originally scheduled
to run from December 6, 1995 to January 5, 1996. On
January 2, 1996 respondent filed a collection of papers. On
March 4, 1996 the Board, in the course of ruling on
petitioner’s motion to compel discovery, commented on the
January 2, 1996 submission and indicated that trial evidence
should be filed under a notice of reliance and explained the
procedure therefor. The Board also reset testimony periods
for both parties, and on June 24, 1996, during its reset
testimony period, respondent filed another set of papers,
many of which were the same as those submitted on January 2,
1996.
We have determined that the following papers submitted
on January 2, 1996 and June 24, 1996, during respondent’s
original and reset trial periods, are official records and
may be made of record under a notice of reliance:
Cancellation No. 23,554
5
PTO filing receipt, and Office Action
mailed December 27, 1990, in connection
with Application Serial No. 74/081,309
for the mark WET SUN and design applied
for by George K. Setka;
Two notices of incomplete trademark
applications filed by George K. Setka
for WET SUN and WET SUN and design;
Notice of application filing fee
deficiency and filing receipt for
Application Serial No. 74/230,454 (the
application which matured into the
registration which is the subject of
this proceeding;
Registration No. 1,849,716 for DUDA MAN
and design (this registration is also of
record pursuant to Trademark Rule
2.122(d));
State of California trademark
registration certificate for DUDA MAN
and design, issued to George K. Setka on
July 21, 1992;
California State Board of Equalization
Seller’s Permit issued to Duda Man
Activewear, George Kenneth Setka, on
August 17, 1992
A Fictitious Business Name Statement for
Los Angeles County by which George K.
Setka registered as an individual doing
business under the name Duda Man Active
Wear on July 31, 1992. The statement
indicates that Mr. Setka commenced
transacting business on July 25, 1992;
The other materials submitted by respondent, including
catalogs, invoices, sales items, affidavits and copies of
correspondence, may not be made of record pursuant to a
notice of reliance, and they have not been considered.
Moreover, to the extent that respondent’s explanation of the
Cancellation No. 23,554
6
relevance of the materials consists of mere argument, it has
not been considered.
Petitioner and respondent filed briefs, and respondent
filed a reply brief. With his brief, respondent submitted
two exhibits. These particular exhibits were not previously
made of record and have not been considered. Further, we
note that many of the “factual” statements made in the
briefs are not supported by the evidence of record. We
would point out that we have based our decision only on the
evidence, and not on what the parties have asserted the
facts to be. The parties did not request an oral hearing.
According to the testimony of petitioner, George
Garcia, he and respondent have known each other since high
school, a period of about 20 years. In 1987 the two of them
established a business named Garset Graphics, which acted as
a small advertising agency and designed brochures and logos
for others. Petitioner considered this business to be a
partnership, although there was no written agreement.
Petitioner’s contribution was primarily financial, while
respondent’s contribution was primarily artistic. They
agreed to share profits and losses equally.
In 1989 they started silk screening designs on T-
shirts, and changed the business name to Wetsun Sportswear.
Respondent then created the DUDA MAN design. Petitioner
Cancellation No. 23,554
7
testified that the logo was to further the business
activities of Wetsun Sportswear.
With his testimony petitioner has made of record a
number of exhibits, including a brochure distributed by
Wetsun Sportswear showing available screenprints and
featuring the mark DUDA MAN and various versions of the DUDA
MAN design. The cover of the brochure shows DUDA MAN and
design, as it appears in the registered mark, but the
figure’s hand is touching a logo that includes the words WET
SUN. Petitioner also made of record a promotional letter on
WET SUN SPORTSWEAR stationery that began, “With this letter,
Wet Sun Sportswear proudly introduces a bright and new
design, “DUDA MAN” the character.” This letter was signed
by both petitioner and respondent.2 A promotional brochure
Wetsun Sportswear put together in January 1992 features DUDA
MAN and design, as well as other designs. It contains the
following text:
Wet Sun sportswear is a partnership
owned by George Setka and George Garcia.
Both partners have lived in San Pedro
all their lives and have been in
business for over four years. ... George
Setka has currently created a new
charactor [sic] named “DUDA MAN”.
George Garcia created the story behind

2 In its brief respondent suggests that petitioner somehow
altered this letter by adding petitioner’s name. Respondent has
provided no admissible evidence to support this charge. In any
event, it is respondent’s signature on the letter, rather than
petitioner’s, which is of more import in terms of whether the
DUDA MAN mark was regarded as a partnership asset or the property
of respondent.
Cancellation No. 23,554
8
the charactor [sic]. They proudly
display and sell the “DUDA MAN” T-shirts
at the San Pedro location and currently
at J.C. Penneys. ... Along with great
San Pedro local T-shirt designs and
“DUDA MAN” plus custom designs, Wet Sun
is growing and is taking pride in the
work they do. So come in and meet the
guys and see “DUDA MAN” in person. And
I’m sure you’ll like what you’ll see.
Wet Sun Sportswear can do you custom art
work.
An October 16, 1991 invoice on WET SUN SPORTSWEAR stationery
shows a sale to J.C. Penney Company Inc. for various “Duda”
clothing items; the bank statement for “George K Setka or
George Garcia DBA Wetsun” indicates deposit of this payment
on December 19, 1991. A bank savings account passbook was
issued on March 11, 1992 in the name of George K Setka or
George Garcia DBA WETSUN.
Perhaps most telling, petitioner has made of record a
copy of a February 10, 1992 check, drawn on the Wetsun
checking account, signed by respondent and made out to the
“U.S. Dep. of Commerce Patent Trademarks.” The check, which
is for $25, bears the notation “Application Serial No.
74/230,454 DUDA MAN.” That application eventually issued
into the subject registration. Respondent’s own evidence
shows that the Patent and Trademark Office issued on
February 4, 1992, in connection with that application, a
notice of filing fee deficiency in the amount of $25.
The evidence made of record by respondent indicates
that subsequent to the time period of petitioner’s evidence
Cancellation No. 23,554
9
respondent obtained a California state registration for DUDA
MAN and design and filed a fictitious business name
statement for the name “Duda Man Active Wear.” Respondent
has submitted no admissible evidence relating to his
relationship with petitioner. As for Wetsun Sportswear,
respondent claims that at the time he filed the application
for DUDA MAN and design petitioner had been absent for a
year, and that respondent was the sole proprietor of the
Wetsun business and the “Wet Sun mark was in Setka’s name
only....” Brief, p. 2. However, respondent has provided no
evidence to support his assertion that he was the sole
proprietor of the Wetsun business. On the contrary, the
brochures which were produced by the business in January
1992 (the application was filed December 16, 1991) state
that “Wet Sun Sportswear is a partnership owned by George
Setka and George Garcia.” Petitioner’s exhibit 8.
Moreover, the fact that respondent attempted to file
trademark applications for WET SUN and WET SUN and design,
as shown by the notices of incomplete filing, are not proof
of respondent’s ownership of these marks. We also note that
even in Application Serial No. 74/081,309 for WET SUN and
design, respondent identified the applicant as a
partnership.
As indicated above, respondent has admitted in its
answer that he and petitioner formed a partnership in or
Cancellation No. 23,554
10
about 1990 under the fictitious name Wetsun Sportswear, and
were in the business of designing logos, other designs, and
silk-screening operations for their clients. Even without
this admission, however, the evidence of record demonstrates
that such a partnership existed. In particular, the bank
statement and passbook account are in the name of petitioner
and respondent, doing business as WETSUN SPORTSWEAR, and the
language in the promotional brochure, quoted above, is also
evidence that petitioner and respondent were engaged in a
partnership under the name Wetsun Sportswear.
There is no dispute that respondent created the name
and picture which became the trademark DUDA MAN and design.
However, a word or design does not become a trademark sly
because someone has conceived of the idea; to be a
trademark, it must be used in trade, to identify the goods
or services of a party.3 See J.T. McCarthy, McCarthy on
Trademarks and Unfair Competition § 16.04[1] (3d ed. 1992).
The evidence of use of the mark is by Wetsun
Sportswear, which was the trade name of the partnership
composed of petitioner and respondent. Therefore, the
partnership is either the owner of the mark, by virtue of
its use of the mark on clothing, or the partnership is a

3 We recognize that the Trademark Revision Act of 1988, which
became effective November 16, 1989, provided that a trademark
application could be filed on the basis of a bona fide intention
to use the mark in commerce. However, intent-to-use does not
Cancellation No. 23,554
11
licensee which uses the mark under license from the mark’s
owner. However, respondent has not even suggested, let
alone provided any evidence, that he licensed the rights in
the mark to the partnership. On the contrary, the record
shows that respondent, when he filed the application for
DUDA MAN and design, used the partnership funds to pay at
least part of the application filing fee. Moreover,
Wetsun’s promotional brochure featuring the DUDA MAN and
design projects describe the mark as a joint effort by the
partnership: “George Setka has currently created a new
charactor [sic] named :DUDA MAN”. George Garcia created the
story behind the charactor. They proudly display and sell
the “DUDA MAN” T-shirts....” See also, Zanetti v. Zanetti,
77 Cal. App.2d 553, 175 P.2d 603 (1947), which shows that
under California law a patent was considered to be part of
the assets of an “oral” partnership, even though the patent
was taken out in the name of one of the partners, because,
inter alia, the expenses in connection with obtaining the
patent were paid out of the common partnership account; that
the machines made under the patent were used in the
partnership business, and the profit from those sold were
divided equally between the partners.
Because petitioner has proven that the trademark DUDA
MAN and design was an asset of the partnership composed of

come into play in this case, as the application from which the
Cancellation No. 23,554
12
petitioner and respondent, and doing business under the name
Wetsun Sportswear, respondent as an individual was not the
owner of the mark at the time he filed the application which
matured into Registration No. 1,849,716.
Decision: The petition to cancel is granted, and the
registration will be cancelled in due course.
R. L. Simms
E. J. Seeherman
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board

subject registration issued was based on use in commerce.