Hamptons United Multimedia Productions, Inc.v.Faro Media, Inc.

Trademark Trial and Appeal Board

Dec 22, 2004

No. 91153610 (T.T.A.B. Dec. 22, 2004)

Mailed: December 22, 2004
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Hamptons United Multimedia Productions, Inc.
v.
Faro Media, Inc.
_____
Opposition No. 91153610 to application Serial No. 76134926
filed on September 25, 2000
_____
Mark M. Kratter of Law Offices of Mark M. Kratter for Hamptons
United Multimedia Productions, Inc.
Terence A. Dixon of Dechert LLP for Faro Media, Inc.
______
Before Hohein, Chapman and Bottorff, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Faro Media, Inc. has filed an application to register
the mark "HAMPTONS STYLE" for "general interest magazines
concerning luxury lifestyles in East Hampton, Southampton and
surrounding communities in New York."1
Hamptons United Multimedia Productions, Inc. has
opposed registration essentially on the grounds that opposer,
rather than applicant, is the owner of the mark "HAMPTONS STYLE"
1 Ser. No. 76134926, filed on September 25, 2000, which is based on an
allegation of a bona fide intention to use such mark in commerce. The
word "HAMPTONS" is disclaimed.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91153610
2
for magazines inasmuch as opposer, inter alia, has been using
such mark "since March 3, 2000[,] which is when it was published
on the website netStyleTV.com and published in Advertising Media
Kits"; that "[o]n May 28, 2000, the Mark further appeared in the
following magazines: Dan's Papers; Hamptons Country Magazine;
and Hamptons Magazine"; that, on the same date, "press releases
were sent to all major media"; that "Joseph DeChristofaro of Faro
Media, Inc. was the publisher of Hamptons Country Magazine on May
28, 2000; that such date is "when he first saw the Mark 'Hamptons
Style'"; that "[h]e simply copied the Mark"; that opposer will
"not be entitled to register the Mark 'Hamptons Style' if Faro
Media, Inc. obtains registration of same"; and that confusion
will be likely "if two separate entities publish a luxury
lifestyles magazine ... using the same Mark."
Applicant, in its answer, has admitted that "Joseph
DeChristofaro was the publisher of a magazine entitled Hamptons
Country"; that "if Applicant's application matures into a
registration, it is likely that the U.S. Patent and Trademark
Office would refuse registration to a subsequent application for
registration of HAMPTONS STYLE by Opposer for the same or similar
goods"; and that "consumers might be confused as to the origin,
sponsorship, approval of or the affiliation, connection,
association between two luxury lifestyles magazines published by
two different entities which are distributed in the same
geographic locale under the same title"; but otherwise has denied
the remaining salient allegations of the opposition.
Opposition No. 91153610
3
The record consists of the pleadings; the file of the
involved application; and, as opposer's case-in-chief, notices of
reliance on newspaper and magazine excerpts.2 Applicant did not
take testimony or otherwise submit any evidence. Both parties
have filed briefs,3 but an oral hearing was not requested.
The principal issue to be determined herein, since both
parties claim to possess prior rights in the same mark for the
same goods, is which party is the owner of the mark "HAMPTONS
STYLE" for general interest magazines concerning luxury
lifestyles in East Hampton, Southampton and surrounding
communities in New York.
Opposer asserts in its brief that, based on the
evidence of record, it "has demonstrated that it clearly used the
mark [at issue] in interstate commerce prior to the application
[filing] date of the applicant," which provides a date of
constructive use of September 25, 2000. Such date, we note, is
the earliest date upon which applicant can rely in this
2 While opposer also submitted a notice of reliance on its "Media Kit"
advertising, such evidence was stricken from the record by the Board
on February 9, 2004, pursuant to applicant's uncontested motion to
strike such notice, as constituting improper subject matter for a
notice of reliance under Trademark Rule 2.122(e).
3 Although applicant, in its brief, contends among other things that,
as to the newspaper and magazine excerpts submitted with opposer's two
remaining notices of reliance, "it is far from clear that these
materials are admissible in this proceeding," the procedural
objections asserted by applicant pursuant to Trademark Rule 2.122(e)
(e.g., failure to submit a copy of the publication) are considered to
have been waived. Applicant failed to seasonably raise such
objections at a time which, if such were considered to be valid,
opposer would have been permitted an opportunity by the Board to cure
the alleged deficiencies with respect to its notices of reliance. See
TBMP §§532 and 707.02 (2d ed. rev. 2004). Accordingly, no further
consideration will be given to the procedural objections asserted by
applicant in its brief.
Opposition No. 91153610
4
proceeding since there is no testimony or other proof as to any
actual use of the mark "HAMPTONS STYLE" by applicant. See, e.g.,
Lone Star Mfg. Co., Inc. v. Bill Beasley, Inc., 498 F.2d 906, 182
USPQ 368, 369 (CCPA 1974); Columbia Steel Tank Co. v. Union Tank
& Supply Co., 277 F.2d 192, 125 USPQ 406, 407 (CCPA 1960); Zirco
Corp. v. American Tel. & Tel. Co., 21 USPQ2d 1542, 1544 (TTAB
1991); and Miss Universe, Inc. v. Drost, 189 USPQ 212, 213 (TTAB
1975). In particular, opposer contends that the record shows
that it "used the Mark 'Hamptons Style' in interstate commerce by
publishing the Mark 'Hamptons Style' in Dans Papers News Papers
and Hamptons Country Magazine in May and June of 2000,"4
respectively, and that such publications "are available in
libraries and are generally circulated to members of the public."
Opposer accordingly insists that "it is the opposer and not the
applicant that should be allowed to register the Mark 'Hamptons
Style'" and that, obviously, "it is confusing to the public for
two different entities to use the same trademark ... in the same
marketplace" for the same goods.
We agree with applicant, however, that as set forth in
its brief, the evidence of record fails to establish that opposer
has superior rights to the mark "HAMPTONS STYLE" for lifestyle
magazines. Specifically, as applicant persuasively points out,
"there is nothing in the record to support Opposer's claim that
4 Applicant, in its brief, accurately points out that while opposer, in
its brief, also maintains that it "used the Mark 'Hamptons Style in
interstate commerce by publishing the Mark 'Hamptons Style' in the
Hamptons Style Media Kit of February of 2000," such evidence, as noted
previously, has been stricken from the record. No consideration,
therefore, has been given thereto.
Opposition No. 91153610
5
it has prior rights in the mark" inasmuch as, with respect to the
one-page excerpt from the Memorial Day 2000 issue of "Dans Papers
Newspapers":
[T]he document ... does not establish
that Opposer used the mark ... as a mark on a
rival lifestyles magazine. The text of this
single page -- which appears to be either an
article or possibly a paid advertisement --
focuses primarily on a video project entitled
"Hamptons Video Guide" which is to be
"archived on the new netStyleTV.com web
site." The only references to "Hamptons
Style" in the text is a statement that:
With the launch of netStyleTV.com
(Life styles of the world's premier
destinations -- all based on the
original Hamptons concept) producer
Dee Du Bois has expanded the
original production into a
worldwide multimedia gonglomerate
[sic], following the blueprints for
Hamptons Video Guide, Hamptons
Style (a new tie-in printed
reference guide), Hamptons
Television Network, and
netStyleTV.com ... all registered
trademarks of her new production
company United Multimedia
Productions, Inc. Local businesses
and corporations can participate in
the next release of the Hamptons
Video Guide, Hamptons Style
publication, television broadcasts,
or get on the netStyleTV.com web
site by calling United Multimedia
Productions ....
That statement is certainly not valid
evidence that Opposer has any rights in the
HAMPTONS STYLE mark -- much less that Opposer
made actual use of the mark ... on a luxury
lifestyles magazine prior to the filing date
of Applicant's application. .... ... [T]he
only entity mentioned in the piece is not
Opposer, Hamptons United Multimedia
[Productions], Inc., but rather some company
called "United Multimedia Productions, Inc."
It is also not clear from the text that
anyone -- let alone Opposer -- had actually
Opposition No. 91153610
6
published a publication under the title
"Hamptons Style" as of the date when this
article/advertisement was allegedly
published.
Furthermore, to the extent that this
piece makes any statement about use of the
mark by anyone, it is plainly "a statement,
other than one made by declarant while
testifying at the trial or hearing, offered
in evidence to prove the truth of the matter
asserted." Federal Rules of Evidence, Rule
801(c). .... Consequently, such a statement
would be classic hearsay and inadmissible for
the alleged truth of the matters contained
therein unless a competent witness has
testified to the truth of such matters.
Federal Rules of Evidence, Rule 802; see,
e.g., Otis Elevator Co. v. Echlin
Manufacturing Co., 187 U.S.P.Q. 310, 312 n.4
(TTAB 1975) (magazine article showed only
that goods under the mark were the subject of
an article in that publication); TBMP §
704.08 [(2d ed. rev. 2004)] and cases cited
therein.
The only other use of HAMPTON [sic]
STYLE in this submission is the inclusion of
a stylized version of the term [(in the
format "HamptonsStyle")] in the bottom left
hand corner of the piece. Although this
arguably might represent some form of "use"
of the mark for advertisement purposes, it is
plainly not use ... on the goods for which
Opposer claims rights -- namely a lifestyles
magazine. Nor does it establish that the
mark was actually used on such goods by
Opposer or anyone else prior to the filing
date of Applicant's application.
Although we additionally observe, however, that the
page from "Dans Papers Newspapers" actually contains two other
instances in which the term "Hamptons Style" is used therein, it
is still the case that none of the usages demonstrates technical
trademark use of such term on or in connection with a lifestyle
magazine of any sort. In particular, the article and/or
advertisement, in referring to "the new netStyleTV.com web site,"
Opposition No. 91153610
7
includes the following statement: "The web site's Hamptonian
news reports which can be found in the Hamptons Style section of
netStyleTV.com will feature investigative news stories, 'that
none of the local papers and magazines will touch, because
they're to [sic] controversial!' stated Ms. Du Bois." Such
statement, like the statement which applicant discussed in its
brief, fails to demonstrate use of "HAMPTONS STYLE" as a mark for
a lifestyle magazine, whether published in printed or electronic
form, and is inadmissible hearsay if considered for the truth of
the content thereof. Moreover, while the article and/or
advertisement contains a picture of "[m]ultimedia creator and
producer Dee Du Bois" and refers to her in the caption thereof as
"the genius behind netStyleTV.com[,] Hamptons Video Guide [and]
Hamptons Style," such clearly is not use of "HAMPTONS STYLE" as a
mark on or in connection with a lifestyle magazine or otherwise
establish that opposer acquired superior rights as the owner of
the mark prior to the filing date of applicant's application.
As to the remaining evidence introduced by opposer,
which principally includes a one-page automobile advertisement,5
we concur with applicant that, as persuasively stated in its
brief (footnote omitted):
The evidence submitted with the other
Notice of reliance is equally unavailing.
The material submitted consists of the cover
and three inside pages from an issue of
Hamptons Country magazine, dated June 2000.
5 The advertising copy for such ad consists entirely of two lines, with
the first reading "call 877 548-4336 FOR INFORMATIONON THE JAGUAR S-
TYPE AND A TEST DRIVE complimentary video with test drive" and the
second reading "HamptonsStyle HAMPTONS VIDEOGUIDE netStyleTV.com."
Opposition No. 91153610
8
The only page that shows the HAMPTONS STYLE
mark is what appears to be an advertisement
for JAGUAR cars. The mark appears in a
stylized form [(i.e., "HamptonsStyle")] at
the bottom on [sic] the advertisement.
Nothing in the advertisement or in any of the
other [three] pages submitted suggests that
the advertisement was [placed or] submitted
by or on behalf of Opposer. ....
Moreover, even if the advertisement were
[placed or] submitted by or on behalf of
Opposer, it is at most evidence of use of the
mark in connection with the advertisement of
automobiles. It does not support the
contention that Opposer has used the mark in
connection with a lifestyles magazine.
Opposer is not the publisher of Hamptons
Country magazine. As Opposer's submission
demonstrates and as [Applicant has admitted
in the answer and] Opposer has acknowledged
[in its brief], that magazine was published
by Applicant's president, Joseph
DeChristofaro. See masthead on page 14 of
submitted extract from Hampton [sic] Country.
Thus, even if Opposer could establish a
connection with the submission -- i.e. that
it had included the mark in an advertisement
for JAGUAR cars which it had inserted into a
third party's magazine -- that does not
constitute use in connection with its own
lifestyles magazine.
Finally, as applicant also properly points out in its
brief, the evidence made of record fails to constitute sufficient
proof by opposer of prior use of the mark "HAMPTONS STYLE" which
is analogous to trademark use. Specifically, as applicant
persuasively notes (underlining in original):
Nowhere in its Brief has Opposer argued
that it had secured prior rights in the mark
by virtue of any use that is analogous to
trademark use. .... ... Opposer has not
presented any testimony or other evidence to
show that its alleged use created any prior
public identification of the term with
Opposer's product -- let alone that such use
was of such a nature and extent to "have
substantial impact on the purchasing public."
Opposition No. 91153610
9
T.A.B. Systems v. PacTel Teletrac, 77 F.3d
1372, 1375-1377[, 37 USPQ2d 1879, 1881-83]
(Fed. Cir. 199[6]).
Accordingly, because opposer, as the party bearing the
burden of proof in this proceeding,6 has failed to demonstrate
that it is the owner of superior rights in the mark "HAMPTONS
STYLE" for a lifestyle magazine, opposer cannot prevail on its
claims herein.
Decision: The opposition is dismissed.
6 See, e.g., Champagne Louis Roederer S.A. v. Delicato Vineyards, 143
F.3d 1373, 47 USPQ2d 1459, 1464 (Fed. Cir. 1998) (Michel, J.
concurring); Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1007 (Fed. Cir. 1988); Sanyo Watch Co., Inc. v.
Sanyo Elec. Co., Ltd., 691 F.2d 1019, 215 USPQ 833, 834 (Fed. Cir.
1982); and Clinton Detergent Co. v. Proctor & Gamble Co., 302 F.2d
745, 133 USPQ 520, 522 (CCPA 1962). It remains opposer's obligation
to satisfy its burden of proof, irrespective of whether applicant
offers any evidence.