Great Seats, Inc.v.Great Seats, Ltd.

Trademark Trial and Appeal Board

Aug 12, 2013

No. 91189540 (T.T.A.B. Aug. 12, 2013)

Hearing: May 30, 2013 Mailed: August 12, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Great Seats, Inc.
v.
Great Seats, Ltd.
_____

Opposition No. 91189540
to application Serial No. 75733290
_____

P. Jay Hines of Cantor Colburn LLP for Great Seats, Inc.

Adam M. Cohen and Sarah B. Yousuf of Kane Kessler PC for
Great Seats, Ltd.
______

Before Cataldo, Wolfson and Adlin,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Opposer, Great Seats, Inc., opposes registration of
application Serial No. 75733290 for the mark GREAT SEATS
(standard characters, “SEATS” disclaimed). Applicant, Great
Seat, Ltd., filed the application on June 21, 1999 on the
Principal Register, based upon its assertion of August 1,
1992 as a date of first use of the mark anywhere and in
commerce, and with a claim of acquired distinctiveness under
Trademark Act Section 2(f). The services are identified
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Opposition No. 91189540
2
therein as “arranging for ticket reservations for shows and
other entertainment events,” in International Class 41.
In its notice of opposition, opposer alleges that it
has made prior use analogous to trademark use of GREAT
SEATS, as well as common-law use of GREAT SEATS as a mark,
in connection with ticket agency services for concerts,
theatrical performances and sporting events; that its mark
acquired distinctiveness prior to applicant’s; and that as a
result of the similarity between the parties’ marks as
applied to their respective services, confusion is likely
among consumers as to the source of those services. In
addition, opposer alleges that applicant’s mark is highly
descriptive of the recited services, and that its showing of
acquired distinctiveness under Section 2(f) is insufficient.
In its answer, applicant denied the salient allegations
of the notice of opposition.1
Evidentiary Issue
On September 21, 2011, the Board issued an order
finding that opposer’s failure to supplement its response to
applicant’s interrogatory number 1 to disclose twenty-six
potential witnesses was neither harmless nor substantially
justified, and imposed an estoppel sanction against opposer

1 Applicant also asserted numerous affirmative defenses. Certain
defenses were stricken by a Board order issued on June 25, 2009.
Applicant did not pursue the remainder at trial. Accordingly,
they are deemed waived.

Opposition No. 91189540
3
to the extent that opposer was not permitted to take the
testimony of these witnesses.2 Great Seats Inc. v. Great
Seats Ltd., 100 USPQ2d 1323 (TTAB 2011). On April 5, 2012,
opposer submitted the rebuttal testimony deposition of its
owner/shareholder Enrique D. (hereinafter “Danny”) Matta,
introducing as evidence written statements from twenty-three
of the same twenty-six individuals whose testimony was
excluded in the Board’s September 21, 2011 order, as well as
four additional individuals not included in opposer’s
initial or pretrial disclosures.
On June 18, 2012, applicant filed a motion to strike
the written statements, as well as Mr. Matta’s rebuttal
testimony to the extent that it pertains to those
statements, on the grounds that by introducing written
statements from twenty-three of the individuals whose
testimony was precluded by the Board’s order, opposer seeks
to circumvent the Board’s ruing therein. In addition,
applicant seeks to strike the statements of the four
additional individuals because they were never disclosed to
applicant. Further, applicant argues that the entirety of
opposer’s testimony constitutes improper rebuttal, inasmuch
as applicant’s own testimony and evidence, including
statements from third parties introduced by applicant, all

2 That decision also provided, inter alia, that opposer may rely
upon the testimony of an additional witness, Michael Kelly.

Opposition No. 91189540
4
are directed toward applicant’s own use of its GREAT SEATS
mark and opposer’s rebuttal evidence is unrelated thereto.
Opposer, for its part, argues that applicant has known
since the parties briefed their cross-motions for summary
judgment that opposer would be relying upon such third-party
statements. Opposer argues in addition that the Board’s
September 21, 2011 order quashed the testimony deposition of
the twenty-six witnesses in question not for failure to name
them in initial disclosures, but for failure to supplement
written discovery; that, as a result (opposition to motion
to strike, p. 2) “23 of the 26 individuals that provided
written statements were properly disclosed to Applicant”
inasmuch as opposer disclosed these individuals in its
amended and supplemental pretrial disclosures. Opposer
further argues (id.) that
Although generally in the context of
limitations to discovery, the Board has a Goose-
Gander Rule. A party will not be heard to contend
what it does is proper when propounded by the
party itself but improper when propounded by its
adversary. TBMP § 402.01 and Note 9 thereto.
Thus, in all fairness, Opposer should not be
estopped from doing on a key issue virtually what
Applicant has done.
Under the circumstances herein, where the
case of Opposer is based on use analogous to
trademark use, and oral evidence being the only
means of demonstrating that use, Opposer maintains
that the estoppel sanction as to the third party
statements would be patently too strict and do a
grave injustice to Opposer.

With regard to applicant’s contention that the proffered
testimony and evidence is improper rebuttal, opposer argues
Opposition No. 91189540
5
(id.) that “Applicant relies on the scripted statements of
35 individuals first presented in response to Opposer’s
Motion for Summary Judgment” and that (id. at 3) “Opposer’s
introduction of 27 third party statements directly rebuts
Applicant’s claim that its mark acquired distinctiveness
prior to that of Opposer” and thus is proper rebuttal.
Finally, opposer argues that to the extent applicant relies
in its trial brief upon the third-party statement of Mr.
Glen Melcher, submitted with the rebuttal testimony of Mr.
Matta, applicant has waived its right to object to the
introduction of these statements.
In reply, applicant argues that the third-party
statements upon which it relies were submitted by
stipulation of the parties, whereas the statements submitted
by opposer with its rebuttal testimony were precluded as an
estoppel sanction issued by the Board. As a result,
applicant argues (reply in support of motion, p. 2) “the
Board’s general ‘Goose-Gander Rule’ cannot serve as a basis
for disregarding a specific ruling of the Board imposing a
sanction on Opposer.” Applicant argues in addition that
because opposer is required to prove priority, including the
prior acquired distinctiveness of GREAT SEATS in connection
with its services, the third-party statements submitted with
Mr. Matta’s rebuttal testimony go to opposer’s case in
chief, and not to rebut applicant’s evidence of acquired
Opposition No. 91189540
6
distinctiveness. Finally, applicant argues that it relies
in its brief not on the statement of Mr. Melcher, which is
part of the evidence it seeks to strike, but rather its own
cross-examination of Mr. Matta.
We note initially that in our September 21, 2011 order,
we declined
to quash the notice of testimony deposition of Mr.
Kelly or the twenty-six other new potential
witnesses named in opposer’s pretrial disclosures
and exclude their testimony based on opposer’s
failure to name them in initial disclosures.

Great Seats Inc. v. Great Seats Ltd., 100 USPQ at 1326.
Rather, we found that
Opposer’s failure to name Mr. Kelly until service
of its original pretrial disclosures more than a
month after the close of discovery and failure to
name the twenty-six additional potential witnesses
until service of opposer’s amended and
supplemental pretrial disclosures more than seven
months after the close of discovery was neither
harmless nor substantially justified. In view
thereof, the Board finds that it is appropriate to
apply the estoppel sanction. Applicant’s motion
to quash and to exclude testimony is granted to
the extent that opposer may not take testimony of
the twenty-six potential witnesses that were first
disclosed in opposer’s February 2011 amended and
supplemental pretrial disclosures. However,
opposer may rely on the testimony of Michael
Kelly, who was first disclosed in opposer’s
initial pretrial disclosures on August 9, 2010,
provided that applicant has an opportunity to take
Mr. Kelly’s discovery deposition prior to his
appearance for a testimony deposition.

Id. at 1328. Thus, while the prohibition against the
testimony of the twenty-six individuals named in its amended
and supplemental pretrial disclosures resulted from its
Opposition No. 91189540
7
“failure to supplement discovery,” we nonetheless found that
the estoppel sanction was justified due to opposer’s
“correspondingly late disclosures of these witnesses.” Id.
As a result, we disagree with opposer’s position that the
witnesses were properly or timely disclosed to applicant.
However, regardless of the precise reason for the exclusion
of the testimony of these witnesses, the September 21, 2011
order unequivocally estops opposer from taking their
testimony.
Opposer argues (brief, p. 18) that
these third parties have not testified. They have
provided third party statements very similar to
the ones relied upon by the Applicant, albeit in
their words and Mr. Matta has verified how and
when he knew these people and their first-hand
knowledge of him and his business.

In other words, despite being estopped by the Board’s
September 21, 2011 order from taking their oral testimony,
opposer has attempted to introduce the written statements of
twenty-three of the same individuals, on the same subject
matter that would have been encompassed by their oral
testimony, namely, use by Mr. Matta and others of the term
“Great Seats” to identify him and his activities.3

3 Applicant’s Interrogatory No. 1 reads as follows: Identify
each person having firsthand knowledge of Matta being known as
“GREAT SEATS” at any time during the period from January 1, 1978
to January 1, 1993, and for each person identified, describe
his/her relationship to Matta, both currently and over said time
period.
In its response, opposer interposed objections and identified
“Mr. Tim Lee, a long time acquaintance” and “Mr. Donald Phillips,
a long time acquaintance.”
Opposition No. 91189540
8
Opposer’s introduction of these statements, from witnesses
whose testimony clearly was prohibited, and Mr. Matta’s
testimony with regard thereto, exalts form over substance
and violates the Board’s September 21, 2011 order. Whether
written or oral, the substance of these witnesses’
statements remains the same. In addition, the introduction
of the statements of the additional four individuals not
disclosed by opposer clearly is not permitted.
We are not persuaded by opposer’s argument that its
submission of these statements is proper because applicant
was on notice that opposer would be relying on such
statements and that the individuals in question were
eventually disclosed to applicant. Even if true, the
testimony of these individuals, and their equivalent written
statements, is prohibited by opposer’s conduct as discussed
in the Board’s September 21, 2011 order. As a result,
applicant’s knowledge of these individuals does not compel a
different result. We further are unpersuaded by opposer’s

In its initial disclosures, opposer indicates that only Mr.
Matta “may testify regarding the history of Great Seats, Inc.,
the nature of it’s business, the history and use of the GREAT
SEATS mark, website screen shots and information regarding the
GREATSEATS.COM website, channels of trade, early use of the
designation GREAT SEATS by the public, early advertising on the
part of Mr. Matta’s business, and his decision to adopt the
designation as his business name.”
In its amended pretrial disclosures, opposer indicates with
regard to the originally disclosed and additional witnesses that
“The foregoing witnesses may testify regarding their first hand
knowledge of the appellation GREAT SEATS in connection with the
sales of tickets to entertainment and sports events by Mr. Matta
Opposition No. 91189540
9
assertion of the Board’s so-called “Goose-Gander Rule” as
applied to discovery matters and discussed in TBMP § 402.01
(2013), and authorities cited in fn. 9. Opposer is correct
in observing that a party generally will not be heard to
complain that discovery is excessive when propounded by its
opponent, but not by itself. See id. However, in this
case, applicant introduced into evidence a number of third-
party statements by stipulation of the parties to this
proceeding. Such evidentiary submission by applicant does
not, by itself or viewed in the totality of the
circumstances of this case, justify opposer’s submission of
evidence substantially identical to testimony that was
prohibited by Board order.
Finally, we note opposer’s argument that preclusion of
this evidence is too strict a result and works a grave
injustice upon opposer. Nonetheless, we are not persuaded
that this panel should disturb the September 21, 2001 order
or interpret it in such a way as to allow the evidentiary
submission in question. Almost by definition, any
application of the estoppel sanction resulting in the
exclusion of potentially outcome-determinative evidence
could be said to work a “grave injustice” to the estopped
party, but if that was a ground for ignoring or overruling a
Board sanctions order, the Board’s discovery and pretrial

and the level of recognition on the part of the public of Mr.
Opposition No. 91189540
10
Rules would become ineffective at best, with a corresponding
negative impact on the fairness, predictability and cost of
Board proceedings.
We further agree with applicant that the twenty-seven
third-party statements and Mr. Matta’s rebuttal testimony
with regard thereto constitute improper rebuttal. As
plaintiff in this proceeding, opposer must demonstrate that
it has made prior use analogous to trademark use and/or
common law trademark use of the designation GREAT SEATS.
The third-party statements and Mr. Matta’s rebuttal
testimony regarding such statements go to opposer’s
assertions regarding its prior use of such designation,
rather than to rebut applicant’s showing. Again, we are not
persuaded that simply because applicant submitted third-
party statements about applicant and its use of the
designation GREAT SEATS as a mark, opposer’s submission of
statements regarding opposer’s use thereof somehow rebuts
them rather than proving opposer’s case in chief on issues
in dispute in this proceeding.
In view thereof, we find that opposer’s submission of
twenty-seven third-party statements, and Mr. Matta’s
rebuttal testimony concerning such statements, both violates
the Board’s September 21, 2011 order and constitutes
improper rebuttal. As a result, such statements, and Mr.

Matta as GREAT SEATS.”
Opposition No. 91189540
11
Matta’s corresponding testimony, have been given no
consideration. Any discussion in either party’s brief
regarding such statements and testimony similarly has been
given no consideration.
The Record
By rule, the record in this case consists of the
pleadings and the file of applicant’s involved application.
In addition, pursuant to Trademark Rule 2.123(b) the parties
stipulated to the use in this proceeding of materials from
prior Cancellation No. 92032534, involving the parties
herein. The parties further stipulated that evidence
submitted by opposer in connection with its notice of
reliance, exhibits A – J, shall be deemed admissible for
trial and of record; exhibits and evidence submitted in
connection with applicant’s response to opposer’s motion for
summary judgment and cross-motion for summary judgment,
exhibits 1 – 25, shall be deemed admissible for trial and of
record, and that all documents produced by the parties in
discovery in the cancellation and all evidence submitted as
exhibits to opposer’s notice of reliance and applicant’s
summary judgment brief shall be deemed authentic.4
Pursuant to the parties’ stipulation, during its
assigned testimony and rebuttal testimony periods, opposer

4 The Board commends the parties for utilizing such evidentiary
stipulations and ACR type efficiencies. See TBMP § 705 (2013)
and authorities cited therein.
Opposition No. 91189540
12
submitted from the prior cancellation proceeding:
applicant’s answers to written discovery; opposer’s answers
to written discovery; portions of the discovery deposition
and testimony of its shareholder Danny Matta and corporate
counsel Steven H. Oram; the 1999, 2005 and 2009 declarations
of Danny Matta; and excerpts from the application file
history for opposer’s prior, cancelled, Registration No.
2339519. Opposer further submitted a notice of reliance
upon the discovery deposition of applicant’s principal, Mr.
Gary Shapiro; printouts from the internet home pages of the
parties’ websites; the statements of third parties Mr. Tim
Lee and Mr. Donald Phillips; the first pages of opposer’s
1990 and 1991 S Corporation income tax returns;
advertisements from New York magazine; the testimony of Tim
Lee and Donald Phillips; and the rebuttal testimony of Mr.
Matta, except as the portions thereof excluded above.
Applicant, for its part, submitted from the prior
cancellation proceeding: various exhibits from both party’s
notices of reliance; the Board’s decision in that case,
cancelling opposer’s registration; and the discovery
depositions of Danny Matta and Steven H. Oram. Applicant
further submitted the testimony of Gary Shapiro, Danny
Matta, Tim Lee and Donald Philips; printed advertisements
and promotional materials of both parties.
Opposition No. 91189540
13
Opposer and applicant filed main briefs and opposer
filed a reply brief. In addition, counsel for the parties
presented arguments at an oral hearing before this tribunal
on May 30, 2013.
Opposer’s Standing
Opposer, through its testimony and related exhibits,
has established that it uses the mark GREAT SEATS in
connection with ticket agency services for concerts,
theatrical performances and sporting events. Opposer has
asserted a likelihood of confusion claim directed toward
applicant’s use of an identical mark for services that are
essentially identical, namely, “arranging for ticket
reservations for shows and other entertainment events.”
Thus, opposer has demonstrated it possesses a real interest
in this proceeding beyond that of a mere intermeddler, and a
reasonable basis for its belief of damage. See Ritchie v.
Simpson, 170 F.3d 1902, 50 USPQ2d 1023 (Fed. Cir. 1999).
See also Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185 (CCPA 1982). We find, therefore,
that opposer has proven its standing.
We note in addition that applicant does not dispute
opposer’s standing.
Likelihood of Confusion
As discussed above, the parties are using identical
marks to identify essentially identical services. Opposer
Opposition No. 91189540
14
asserts (brief, p. 1) that “the parties agree that there is
a likelihood of confusion between their identical marks for
identical services.” Applicant, for its part, asserts
(brief, p. 3) that “in this proceeding involving parties
offering identical services, there is no dispute that there
is a likelihood of confusion between their identical GREAT
SEATS marks.”
We agree. There is no question that a likelihood of
confusion exists between the parties’ use of identical marks
for services that the parties acknowledge are identical.
There is no evidence of record that any of the du Pont
factors favor a finding of no likelihood of confusion under
these circumstances. We turn then to the issue of priority.
Priority of Use
Priority is the key issue in this case. We begin by
addressing applicant’s position that opposer must prove
priority by clear and convincing evidence. In a case
involving common law rights, the Federal Circuit has held
that “the decision as to priority is made in accordance with
the preponderance of the evidence.” Hydro-Dynamics Inc. v.
George Putnam & Company Inc., 811 F.2d 1470, 1 USPQ2d 1772,
1773 (Fed. Cir. 1987). See also Standard Knitting Ltd. v.
Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1929 (TTAB
2006) (“In order to establish priority based on common law
rights, opposer’s burden is to demonstrate by a
Opposition No. 91189540
15
preponderance of the evidence proprietary rights in TUNDRA
and TUNDRA SPORT for clothing prior to June 1, 1998, the
filing date of applicant’s intent-to-use application”).
Opposer is not asserting ownership of a pending
application, and thus is not seeking to allege an earlier
date of use than the one set forth in such an application.
Hydro-Dynamics, 1 USPQ2d at 1774 (“Where an applicant seeks
to prove a date earlier than the date alleged in its
application, a heavier burden has been imposed on the
applicant than the common law burden of preponderance of the
evidence”). “When a party seeks to carry the date of first
use back to a date prior to that stated in the application,
the proof of an earlier date must be by clear and
convincing evidence.” American Hygienic Laboratories Inc.
v. Tiffany & Co., 12 USPQ2d 1979, 1984 (TTAB 1989). This is
because of the change of position from one “considered to
have been made against interest at the time of filing of the
application.” Hydro-Dynamics, 1 USPQ2d at 1773. In this
case, opposer is relying only upon common-law use of the
designation GREAT SEATS as a mark as well as use analogous
to trademark use thereof. Therefore, the question is
whether opposer has shown that it has established its
priority in the mark GREAT SEATS in the United States before
applicant by a preponderance of the evidence.
Opposition No. 91189540
16
A party opposing registration of another’s mark on the
basis of likelihood of confusion with its own unregistered
mark must establish that the unregistered mark is
distinctive of its goods or services either inherently or
through the acquisition of secondary meaning. See Towers v.
Advent Software, Inc., 913 F.2d 942, 945, 16 USPQ2d 1039,
1041 (Fed. Cir. 1990); and Otto Roth & Co. v. Universal
Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43-45 (CCPA 1981).
As discussed above, both parties use the designation
GREAT SEATS for arranging ticket reservations or ticket
agency services. As further noted above, applicant seeks
registration of the involved application with a claim of
acquired distinctiveness under Section 2(f) and a disclaimer
of “SEATS.” “Where an applicant seeks registration on the
basis of Section 2(f), the mark’s descriptiveness is a
nonissue; an applicant’s reliance on Section 2(f) during
prosecution presumes that the mark is descriptive.” Cold
War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d
1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009). Opposer’s
prior, cancelled, Registration No. 2339519 for the mark
GREAT SEATS INC. and design also was registered with a claim
of acquired distinctiveness under Section 2(f) with a
disclaimer of “INC.” In addition, both parties acknowledge
in their briefs that the term GREAT SEATS is not inherently
distinctive of their services. Therefore, we find the
Opposition No. 91189540
17
designation GREAT SEATS not to be inherently distinctive,
but rather to convey information about the nature of
opposer’s and, for that matter, applicant’s services,
namely, that they provide great seats at concerts, shows and
sporting events. Thus, GREAT SEATS is merely descriptive of
the parties’ services under Section 2(e)(1).
Under the rule of Otto Roth, having determined that
GREAT SEATS is not inherently distinctive of opposer’s
ticket agency services, we must review the record to
determine whether or not opposer has demonstrated that such
term has acquired distinctiveness as a source-indicator for
its services and, if so, when. In this regard, we note that
the degree of acquired distinctiveness that must be shown
varies directly with the degree of descriptiveness of the
mark. In re Bongrain International (American) Corp., 894
F.2d 1316, 13 USPQ2d 1727, 1728 (Fed. Cir. 1990); and Yamaha
International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988). See also
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,
189 USPQ 759 (2d Cir. 1976). Based on the record in this
case, we find that GREAT SEATS, while acknowledged by the
parties to be merely descriptive of the services, is not so
highly descriptive thereof that opposer must meet a
heightened showing of acquired distinctiveness.
Opposition No. 91189540
18
We turn then to the evidence of record to determine
opposer’s priority date. Testimony and documentary evidence
establishes that opposer used GREAT SEATS as a service mark
in association with common-law ticket agency services as
early as 1995.5 Applicant does not dispute this date.
However, opposer also argues that the evidence of
record establishes that it has made prior use analogous to
trademark use. Specifically, opposer argues (brief, p. 4)
that it
has now made of record testimony and third party
statements establishing not only that a
significant segment of the purchasing public in
the Baltimore/Washington area knew Mr. Matta as
“Great Seats” long before Applicant’s alleged date
of first use of August 1, 1992, but that Mr. Matta
himself answered to the nickname, used the
nickname and referred to himself and his business
as such from approximately 1980 forward.

Opposer further argues (brief, p. 16) that its
corroborated testimony confirms that the
appellation GREAT SEATS acquired distinctiveness
and secondary meaning referring to Mr. Matta, the
founding principal of Opposer, and his ticket
broker business at least as early as 1980.

In support of this argument, opposer made of record the
testimony depositions and declarations of Mr. Matta, and the
testimony depositions of Mr. Lee and Mr. Phillips. The
following excerpts are illustrative:

Q. How did you come to adopt the name Great Seats?

5 Matta testimony at 36; Applicant’s Notice of Reliance, Exhibits
F, G.
Opposition No. 91189540
19
A. I was always called Great Seats. When I
started in this business in 1978, '79, there was a
lot of selling out in front of the buildings. And
back then the computer programs used to do a test
run, because computers were new in '78, '79, as
Ticket Master was. And I always had the first
couple of spots. I would tie them down at the
Capital Center, which was our local arena which is
gone now, and I always had the first five rows.
So, people, I remember people coming, I used to
sell out in front of the building a lot. I
remember people yelling across the lot, hey, Great
Seats, Great Seats. It was almost what I was
known as was Great Seats. I didn’t start in
sports. I started completely in concerts, now it
is everything. But, when you started in concerts
everything was about having the first few rows.
And I was always know [sic] for all the shows.

Q. So, you were known as Great Seats even before
you started advertising as Great Seats.

A Oh, yes. I never thought of it, you know, but,
yes.

Q. Even before the first refrigerator magnet
distribution?

A. Even before I had Wholesale Tickets. I date
back, people used to call me Great Seats.

Q. And Wholesale Tickets was the late '80's.

A. The paperwork says '90, and I thought it was
'89. But the paperwork says '90.

Q. So, even though at that time you were
incorporated as Wholesale Tickets, people knew you
as Great Seats?

A. I carried a nickname of Great Seats .... I
never thought of naming the company Great Seats,
or I would have done it right from the beginning,
because it doesn't sound like a company name. It
didn’t at first, when I first went Wholesale
Tickets, and it just didn’t sound like a company
Opposition No. 91189540
20
name or I would have called myself Great Seats
from the very beginning.6

_____

A. I was called “Great Seats” before 1990.

Q. What do you mean by that?

A. I've always been known as “Great Seats.”

Q. Could you explain that, please?

A. “Great Seats” has been a term that’s been
affiliated with me since I first started in 1978
.... because I always had great seats, and
everybody knew that. ...

Q. Why did you pick the Great Seats mark?

A. It’s me.

Q. It's you. And you've indicated, it tells
members of the public that they can get “great
seats”?

A. Well, it tells members of the public that it’s
me.

Q. That it’s you?

A. That - and they know they can trust where to
get great seats ....

I’ve always had the title, being called “Great
Seats.” Since I first camped out for concerts in
1978, I’ve been called “Great Seats.”7

_____

6 Opposer’s Notice of Reliance, Exhibit H, 2004 Deposition of
Danny Matta, p. 293-5.
7 Opposer’s Notice of Reliance, Exhibit H, 2006 Matta Testimony,
p. 30-31, 54.

Opposition No. 91189540
21
Q. Do you recall when you first heard the term
Great Seats in connection with Danny Matta?

A. Not an exact date, but it was back in the day.
It would have been in the late seventies, going to
concerts and selling tickets out front.

Q. What are the circumstances of how that came up?

A. Danny would sit there. He’d always get the, I
don’t know how he did it, but he always got the
seats up front, and we’d be out in the street
doing a Statue of Liberty play hollering, “Great
seats. Who needs great seats?” And then it kind
of evolved that occasionally, he would be over one
entrance and I’d be at another entrance and some
of the customers would come up and say, “Where’s
Great Seats?” And I’d say, “He's over at Stars and
Stripes.” Because I’d be over like at the Capital
entrance, and he’d be over at Stars and Stripes.

Q. What is Stars and Stripes?

A. I’m sorry. That’s -- there was four entrances
at the old Capital Centre. Stars and Stripes was
where the main box office was.

Q. These were not people that you knew that came
up to you, these were strangers looking for
tickets?

A. Yeah. Because Danny had done the street a lot
more than I had at that point and had more regular
customers than I did.

Q. I would like to show you the one exhibit I have
today and see if you remember this document.

A. Yes. It’s an e-mail I wrote for Danny, a letter
to him.

Q. Is that dated? Is there any date?

A Yeah. Monday, January 18th, 2010.

Q. Would you mind reading it out for us? Take
your time, but just read the statement.

A. I have known Danny Matta for 31 years. In 1979
I went to the Capital Centre in Landover, Maryland
Opposition No. 91189540
22
to wait in line for tickets to a Boston concert
that was going on sale there. Danny was already
there and first in line. Over the next few years,
I camped out for many concerts there and got to
know him very well. He was always there and one
of the first three people in line. The first two
rows were always held back and sold at the arena.
Danny was known as Great Seats by everyone because
he always had the seats up front at every show.
He has been Great Seats for as long as I have
known him.

Q. Do you still stand by that statement today?

A. Yes, I do.8

_____

Q. When did you first hear the term Great Seats in
connection with Danny Matta?

A. Somewhere around 1979, 1980, because he always
had great seats. We knew where to go to get great
seats, and we were going to help him camp and get
great seats ....

Q. How widespread would you say was this
association of the phrase Great Seats with Danny?

A. I would say it was fairly widespread. I mean,
it was a term we associated with him, friends, and
then people, when we were out places, going to
shows, you heard it.

Q. Did the phrase become a nickname for Danny
Matta?

MR. COHEN: Objection. Leading question.

THE WITNESS: Yeah. I would say it, you know, when
I think about it, yeah, I think about Great Seats
and Danny. They’re almost synonymous, if that's
the right word, but they sound together.

FURTHER EXAMINATION BY COUNSEL FOR OPPOSER BY MR.
HINES:

8 Lee Testimony, p. 7-9; Exhibit 1.
Opposition No. 91189540
23

Q. Mr. Phillips, I just have a couple. Would you
say that an appreciable number of your high school
classmates knew Danny Matta as Great Seats?

A. Yes.

Q. With respect to your firsthand personal
observations as a concert goer in the 1980s in the
D.C. region, would you say that an appreciable
number of concert goers knew Dan Matta as Great
Seats?

A. Yes.9

It is settled that a party may establish prior rights
in a mark through use analogous to trademark use, such as
trade name use, which creates a public awareness that the
designation serves as a trademark and identifies the party
as a source. TAB Sys. v. PacTel Teletrack, 37 USPQ2d 1879,
1882 (Fed. Cir. 1996), vacating Pac Tel Teletrack v. TAB
Sys., 32 USPQ2d 1668 (TTAB 1994) (such use must be
“sufficiently clear, widespread and repetitive to create the
required association in the minds of potential purchasers
between the mark as an indicator of a particular source and
the service to become available later.”); and American Stock
Exchange, Inc. v. American Express Company, 207 USPQ 356,
364 (TTAB 1980)(“use of a mark in a manner analogous to
trademark use, such as use in advertising, use as a grade
mark, use as the salient or distinguishing feature of a
trade name, use of an acronym or of the initial letters of a
corporate name, etc., may be considered in computing the
Opposition No. 91189540
24
length of use for determining ownership of a mark.”). To
establish trade name identification, an “organization need
only to have used a name or acronym in a manner that
identifies the company by that name or acronym to the public
... no particular formality of adoption or display is
necessary to establish trade name identification.” Martahus
v. Video Duplication Servs., Inc., 27 USPQ2d 1850 (Fed. Cir.
1993).
In this case, however, there is no documentary evidence
that opposer or Mr. Matta used the designation GREAT SEATS
prior to 1995.
Q: Now, isn’t it a fact that in neither the
cancellation proceeding or this proceeding, you
produced a single piece of paper that was
created before 1995 to show that you were known as
Great Seats.
Correct?

A: Correct.10

Simply put, the testimony and evidence adduced by opposer
fails to support a finding that a clear or widespread
association exists between “Great Seats” and opposer or Mr.
Matta in the minds of the purchasing or potential purchasing
public prior to opposer’s first use of GREAT SEATS as a
trademark in 1995.
Nonetheless, this tribunal has held that in certain
limited circumstances a nickname or a trade name for a

9 Phillips Testimony, p. 6-8, 17.
10 Matta Deposition, p. 36.
Opposition No. 91189540
25
product or service may acquire trademark significance when
the public has come to know and use it as such “even if the
company itself has made no use of the term.” American Stock
Exchange, 207 USPQ at 364 (“AM EX CO” protectable
abbreviation for American Express Company). See also Big
Blue Products, Inc. v. International Business Machines
Corp., 19 USPQ2d 1072 (TTAB 1991) (“Big Blue” could be
protectable nickname for IBM); VolkswagenwerkAG v. Advance
Welding & Mfg. Corp., 193 USPQ 673 (TTAB 1976) (petitioner
acquired a proprietary right and hence a protectable right
in BUG as an associative term for its vehicles
notwithstanding that it never used BUG alone in a trademark
sense); and Peiper v. Playboy Enterprises, Inc., 179 USPQ
318 (TTAB 1973) (“Bunny Club” protectable nickname for
Playboy’s clubs).
In this case, opposer’s evidence of public use of the
designation GREAT SEATS as a nickname for Mr. Matta to
designate his services falls short for several reasons.
First, it is not at all clear from opposer’s testimony and
evidence whether the appellation “Great Seats” was applied
to Mr. Danny Matta as a nickname, or simply described him as
someone “to go to get great seats,” or merely described the
seats he obtained for resale to concerts. Second, and more
importantly, there is insufficient evidence that a
sufficient level of public awareness was created such that
Opposition No. 91189540
26
the nickname operated as a source identifier for the
services rendered by Mr. Matta. Specifically, while the
testimony and evidence suggests that Mr. Matta was known as
someone who had tickets for “great seats” for resale at
concerts and was, on occasion, referred to by concert goers
as “Great Seats” as a result of his possession of such
tickets, the record is unclear whether the public called him
“Great Seats” in a manner that created more than a de
minimus public association of the term with the services
offered by Mr. Matta. Cf. Pieper, 197 USPQ at 320 (BUNNY
CLUB being used in newspaper articles synonymously with
PLAYBOY CLUB and such use “was not a de minimis use but, as
the record shows, quite extensive.”).
In the Volkswagenwerk AG case relied upon by opposer,
the plaintiff therein “consistently used the terms ‘BUG’ and
‘BEETLE’ in [promotional] material as terms of reference for
its vehicles.” 193 USPQ at 675. That is to say, the record
in that case clearly supported a finding that the term “BUG”
identified certain of plaintiff’s vehicles “as a result of
[plaintiff’s] long and extensive use in its advertising and
material and many years use in a similar manner in the trade
and by the news media, … notwithstanding that [plaintiff],
insofar as this record shows, has never used “BUG” alone in
a trademark sense.” Id.
Finally, opposer observes (brief, p. 3-4) that
Opposition No. 91189540
27
In prior Cancellation Proceeding No. 92032524 the
Board made a finding that Mr. Matta “eventually
acquired the nickname ‘Great Seats’ due to his
ability to obtain and sell ‘great seats’ to
entertainment events.” Great Seats, 84 USPQ2d at
1237. In its decision of May 10,2010 in the
instant proceeding on the cross-motions for
summary judgment, the Board noted that Opposer had
not established when its president acquired the
nickname “Great Seats” or to what extent the
public was aware of the nickname.

However, our earlier findings did not indicate that Mr.
Matta’s acquisition of the nickname “Great Seats” amounted
to use of GREAT SEATS in a manner analogous to trademark
use, or establish when the acquisition of rights in GREAT
SEATS as a mark due to its public use as a nickname
occurred. For the reasons discussed above, we find that
even if we accept that Mr. Matta acquired the nickname
“Great Seats” and that his acquisition thereof inures to the
benefit of opposer, opposer’s evidence is insufficient to
show that opposer acquired such proprietary right prior to
applicant, or that GREAT SEATS acquired distinctiveness
before applicant’s priority date.
Opposer urges that we should not consider its evidence
piecemeal, but “should look at the evidence as a whole, as
if each piece of evidence were part of a puzzle which, when
fitted together, establishes prior use.” West Florida
Seafood Inc. v. Jet Restaurants Inc., 31 USPQ2d 1660, 1663
(Fed. Cir. 1994). In this case, viewing the evidence as a
Opposition No. 91189540
28
whole, we find that the earliest date of use upon which
opposer may rely for the purposes of priority is 1995.
Now that we have determined opposer’s priority date, we
turn to applicant’s date of actual or constructive first
use. Applicant filed its involved application on June 21,
1999. Thus, it is entitled to rely on the filing date of
this application as its constructive use date. Zirco Corp.
v. American Telephone and Telegraph Co., 21 USPQ2d 1542,
1544 (TTAB 1991) (“[T]here can be no doubt but that the
right to rely upon the constructive use date comes into
existence with the filing of the intent-to-use application
and that an intent-to-use applicant can rely upon this date
in an opposition brought by a third party asserting common
law rights”).
In addition, applicant has asserted a date of first use
in commerce of August 1, 1992, and submitted testimony and
evidence that shows that applicant used its mark as early as
1992 and acquired distinctiveness as early as 1993 or 1994.
Applicant’s evidence includes the following:
Applicant announced its formation and services in
weekly display ads appearing in Women’s Wear Daily beginning
the Wednesday after applicant was formed and continuing for
the following consecutive six weeks.11

11 Shapiro Testimony. P. 9, 13; Ex. A2.
Opposition No. 91189540
29
Applicant’s principal threw a party in the Hamptons to
announce applicant’s formation, and distributed at that
party a business card, which was made to look like a
ticket.12 The ticket-shaped business card has been in use
consistently from 1992 to the present.13
Beginning in November 1992, applicant began advertising
on a regular basis in New York Magazine. In applicant’s
advertisement which appeared in the November 30, 1992 and
December 21-28, 1992 issues of New York Magazine, “Great
Seats Ltd.” is set out as the lead line in prominent type.14
Applicant’s advertisements in this same format appeared
in subsequent issues of New York Magazine in 1993.15
Applicant continued to advertise its services under its
GREAT SEATS mark in 15 to 20 issues of New York Magazine per
year from 1992 through 2002.16
Applicant also has advertised in other publications
including The Wall Street Journal, The Washington Post, and
Hamptons Magazine.17
Beginning in 1992-1993, applicant also began sending
monthly brochures to all of its customers.18

12 Id. at 9-10; Exs. A12, A13.
13 Id. at 19-20.
14 Applicant’s Notice of Reliance at Ex. A3.
15 Id.
16 Shapiro Testimony, p. 15-16; Applicant’s Notice of Reliance at
Exs. A3 and A4.
17 Shapiro Testimony, p. 14, 18-20, Applicant’s Notice of
Reliance Exs. A5 and A6.
Opposition No. 91189540
30
Applicant’s annual ticket sales under its GREAT SEATS
mark, and its annual advertising and promotional expenses,
have been substantial, increasing from over $1 million in
sales in 1993 to over $9 million in 2008, and from $66
thousand in advertising and promotions in 1997 (the first
year for which such figures are available) to $104 thousand
in 2008.19
Thirty-six individuals signed form statements
indicating that they have been customers of applicant since
1992 and recognized GREAT SEATS as identifying applicant’s
applied-for services.20
Based upon the foregoing testimony and documentary
evidence, we find that applicant commenced use of its GREAT
SEAT mark in 1992. We further find that as a result of
evidence of its promotional and advertising efforts and
customer recognition, applicant’s GREAT SEATS mark acquired
distinctiveness as a source identifier for applicant’s
services as early as 1993 or, at the latest, 1994.
As discussed above, the earliest date opposer made use
of GREAT SEATS as a mark is 1995, and opposer has not proven
an earlier priority date through application of the
analogous or nickname use doctrines. Opposer’s first use of

18 Shapiro Testimony, p. 21, Applicant’s Notice of Reliance Exs.
A7, A8 and A9.
19 Notice of Reliance at Ex. A17.
20 Shapiro Testimony, p. 25, 30-31, Exs. A10, A16.

Opposition No. 91189540
31
GREAT SEATS as a common-law mark is subsequent to
applicant’s date of first use as well as the date on which
GREAT SEATS acquired distinctiveness as a mark identifying
applicant as the source of its recited services. As a
result, opposer has failed to prove priority of use of GREAT
SEATS and cannot prevail on its opposition to the applied-
for mark on the ground of priority and likelihood of
confusion.
Applicant’s Showing of Acquired Distinctiveness
Finally, opposer argues that applicant made an
insufficient showing of acquired distinctiveness under
Trademark Act Section 2(f) during prosecution of its
involved application. Opposer’s arguments (brief, p. 19)
are reproduced below:
Applicant claims that its mark acquired
distinctiveness based on five year’s use
immediately preceding October 24, 2008, the date
of amendment to enter a Section 2(f) claim. See
the Request for Reconsideration after Final Action
refusing registration pursuant to Section 2(e)(1)
of the Trademark Act. In the course of
registering its Word & Design mark, the subject of
Cancellation No. 92032524 and part of the record
herein by stipulation, Opposer was required to put
on actual evidence of acquired distinctiveness for
that specific mark from the claimed use date of
March 1, 1997 to the submission date of November
1, 2000. A key component of that submission was
Mr. Matta’s Declaration, signed on March 23, 1999,
showing rapid escalation of sales and advertising
expenditures over a period of time and putting on
other evidence of acquired distinctiveness.
Opposer's Notice of Reliance, 1999 Declaration of
Danny Matta, Exhibit I. Opposer maintains that,
due to the nature of the mark, Applicant should
also have likewise been required to submit actual
Opposition No. 91189540
32
evidence of acquired distinctiveness rather than
merely relying on the Section 2(f) presumption
based on five years in commerce alone.

These allegations address an ex parte examination
issue, namely, whether the examining attorney should have
required additional evidence of acquired distinctiveness in
support of applicant’s amendment to seek registration under
Section 2(f), and fail to state a proper ground for relief
in an inter partes proceeding. See Phonak Holding AG v.
ReSound GmbH, 56 USPQ2d 1057 (TTAB 2000) (failure to enforce
requirement of filing of foreign registration is examination
error and not a ground for opposition); and Century 21 Real
Estate Corp. v. Century Life of America, 10 USPQ2d 2034,
2035 (TTAB 1989) (the issue of the adequacy of the specimens
is solely a matter of ex parte examination).
Fairness dictates that the ex parte question of the
sufficiency of the Section 2(f) showing during examination
not be a ground for opposition or cancellation. Opposer
does not allege that applicant failed to comply with any
examination requirements. Had the Examining Attorney
rejected the Section 2(f) showing during examination,
applicant would have had an opportunity to submit evidence
in support thereof similar to the evidence submitted herein.
See Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d
1355 (TTAB 1989). “It would be manifestly unfair to
penalize applicant for non-compliance with a requirement
Opposition No. 91189540
33
that was never made by the Examining Attorney.” Saint-
Gobain Abrasives, Inc. v. Unova Industrial Automation
Systems, Inc., 66 USPQ2d 1355, 1358 (TTAB 2003). In any
event, and as discussed above, applicant has submitted
evidence of acquired distinctiveness in the instant
proceeding, and opposer does not argue that such evidence is
insufficient.
DECISION: Based upon our findings above, the notice of
opposition on the ground of priority and likelihood of
confusion, and the sufficiency of applicant’s Section 2(f)
showing, is dismissed.