In-Flight Phone Corp.v.J. Anselmo, Inc.

Trademark Trial and Appeal Board

Feb 26, 1998

No. 92024090 (T.T.A.B. Feb. 26, 1998)

Paper No. 13
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 2/26/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In-Flight Phone Corporation
v.
J. Anselmo, Inc.
_____
Cancellation No. 24,090
_____
Robert M. Ward and Joseph P. Reagen of Hill, Steadman &
Simpson for In-Flight Phone Corporation.
Joseph Anselmo for J. Anselmo, Inc.
_____
Before Simms, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
In-Flight Phone Corporation has petitioned to cancel
the registration owned by J. Anselmo, Inc. for the mark
shown below
Cancellation No. 24,090
2
for “transportation of passengers by limousine, vans, buses
and cars.”1
As grounds for cancellation, petitioner asserts that
respondent has been dissolved by the Illinois Secretary of
State; that the registered mark has been abandoned by
respondent; and that the specimens submitted to the Office
in support of a statement of use are fraudulent. Petitioner
also alleges that its application to register SKYLIMO was
refused registration under Section 2(d) on the basis of
respondent’s registration.
Respondent, in an answer filled with factual
allegations, admitted that “the mark is not currently
advertised.” However, respondent went on to essentially
deny the claims of abandonment and fraud.
The record consists of the pleadings; the file of the
involved registration; trial testimony, with related
exhibits, taken by petitioner; and a discovery deposition
taken by petitioner, with certain related exhibits, and
respondent’s answers to interrogatories made of record by
way of petitioner’s notice of reliance. Respondent neither
took testimony nor offered any other evidence. Both parties
filed briefs on the case.
Petitioner is engaged in the business of providing an
interactive computer system that is available to passengers

1 Registration No. 1,840,093, issued June 14, 1994.
Cancellation No. 24,090
3
on commercial aircraft. This system, according to Daniel
Theriault, petitioner’s director of marketing, is called
FLIGHTLINK and is installed at every seat. The system
comprises a computer screen and a telephone handset. With
the use of petitioner’s system, a passenger, during his or
her flight, can make telephone calls, order flowers or other
products (SKYMALL), play video games (e.g., SKYGOLF) or
arrange for travel services such as rental cars or limousine
transportation at the passenger’s destination. In
connection with the arranging of limousine service,
petitioner has used the designation INFLTLIMO. Petitioner
planned on identifying this service as SKYLIMO, but a last-
minute change to INFLTLIMO was made due to the controversy
with respondent. Sometime prior to September 1992,
petitioner purchased from MCI the rights to the phone number
1-800-SKYLIMO. Mr. Theriault testified that petitioner
still owns the rights to the number, but that petitioner has
refrained from using either 1-800-SKYLIMO or SKYLIMO due to
the present dispute with respondent.
According to the discovery deposition testimony of
Joseph Anselmo, he is the president, sole owner and only
employee of respondent. Respondent began as a private
contractor for hire by others to transport passengers by
motor vehicle in 1976. In 1989, respondent began his own
business, calling it Black & White Limousine. During the
Cancellation No. 24,090
4
early 1990s, respondent provided limousine services to the
upper management of petitioner. When respondent lost
petitioner’s account and other business as well, the number
of vehicles operated by respondent dropped from four to one.
In 1996, respondent changed its name to Skylimo, Inc.
ABANDONMENT
At the outset, we note that petitioner pleaded its
claim in terms of abandonment due to nonuse of the mark.
However, the gist of petitioner’s claim, as tried by the
parties, and as articulated by petitioner in its brief on
the case, is that respondent failed to use in commerce,
prior to issuance of the involved registration, the specific
logo mark that is registered. Therefore, petitioner
concludes that the registration is void ab initio.
Respondent based its underlying application for
registration on a bona fide intention to use the logo mark
in commerce as provided by Section 1(b) of the Act. After
receipt of a notice of allowance, respondent filed a
statement of use, claiming a date of first use anywhere of
1993 and a date of first use in interstate commerce of
January 14, 1994.
Use in commerce is defined in Section 45 of the Act.
Use in commerce means the bona fide use of a mark in the
ordinary course of trade, and not made merely to reserve a
right in a mark. Under Section 45, a service mark is in
Cancellation No. 24,090
5
“use in commerce” if (i)the mark is used or displayed in the
sale or advertising of services and (i)either the services
are rendered “in commerce,” or the services are rendered in
more than one state or in the United States and a foreign
country and the user is engaged in commerce in connection
with the services.
The pertinent facts surrounding respondent’s use are
largely not in dispute; rather, it is the legal conclusion
to be drawn from these facts where the parties differ. The
relevant facts are ascertained from Mr. Anselmo’s discovery
deposition and accompanying exhibits, and from his answers
to interrogatories.2
Mr. Anselmo began operating a limousine service in
1989-1990 under the name Black & White Limousine. Although
Mr. Anselmo filed an application with the Illinois Secretary
of State in January 1992 to begin operating under the name

2 Mr. Anselmo spent a good deal of time with petitioner’s upper
management as he transported them around in his limousine,
usually to and from the airport. It was during these rides that
Mr. Anselmo shared with them his business ideas about a
partnership with petitioner whereby respondent would expand
nationally to be the exclusive limousine service offered by
petitioner’s FLIGHTLINK system. According to Mr. Anselmo, Jack
Goeken, petitioner’s chief executive officer, agreed at one point
to help Mr. Anselmo: “As our trust grew for each other over
time, I felt I could come to him, almost as a father figure, and
ask him anything concerning my idea about advertising on the
planes.” Mr. Anselmo asserts that Mr. Goeken “showed gross
negligence in not following through with his duty to complete the
contract between Jack Goeken and Joseph Anselmo, and help Joseph
with the completion of the SKYLIMO project as promised.” (answer,
interrogatory no. 2) The evidence relating to any relationship
between petitioner and Mr. Anselmo is irrelevant to the issue at
Cancellation No. 24,090
6
Skylimo Ltd., the effort toward a name change failed. Mr.
Anselmo continued to operate as Black & White Limousine or
J. Anselmo, Inc. until January 1996 when respondent formally
changed its name to Skylimo, Inc. The reason for the
change, according to Mr. Anselmo, was the filing of the
petition for cancellation which “just kind of woke me up. .
. to protect the name Skylimo, Inc. and the trademark.”
(Anselmo dep., pp. 24-25)
The record includes a letter with the letterhead
SKYLIMO (Anselmo dep., ex. 54) dated November 26, 1991 and a
correspondence from AT&T to “SKYLIMO” regarding an
advertisement run by Mr. Anselmo in an AT&T phone directory.
Respondent has pointed to these documents as evidence of its
first use of its registered mark. (answer, interrorgatory
no. 2) Upon closer questioning at his deposition, however,
Mr. Anselmo identified stationery used in December 1995 as
evidence of first use of the mark in commerce. (Anselmo
dep., p. 157)
A review of respondent’s testimony and evidence
confirms that the registered mark was not actually used
until well after the registration was issued. Respondent’s
correspondence dated November 26, 1991 to Ralph Trevino
(Anselmo dep., ex 54) which bears the name SKYLIMO in the
letterhead was sent to Mr. Trevino as a solicitation to

hand, namely, whether respondent used the registered logo mark in
Cancellation No. 24,090
7
become a business partner. The letter does not evidence use
of SKYLIMO in connection with the rendering of any
transportation services in commerce. It is significant to
note as well that the letter uses only the name SKYLIMO;
there is no use of the registered mark SKYLIMO and design.
Further, the letterheads submitted as specimens in the
case were never actually used in commerce prior to
registration. Mr. Anselmo admitted that the letterheads
bearing the logo mark (and a toll free number that
respondent did not own) were for “internal use” only and
were never sent to customers in connection with providing
transportation services.
Respondent also points to its advertisement in a phone
directory as evidence of use prior to issuance of the
registration. Respondent placed the following listing in
the 1992 AT&T Toll-Free 88 Travel Directory:
(Anselmo dep., ex. nos. 30-31) Again, it is significant to
note that the advertisement includes only the name SKYLIMO.
Mr. Anselmo testified that the registered logo mark had not
yet been designed at the time of the ordering of this
advertisement. (Anselmo dep., p. 71) The advertisement was

commerce prior to registration.
Cancellation No. 24,090
8
not renewed for the following year.3 Mr. Anselmo explained
the reason for the discontinuance as follows: “I felt that
Skylimo, it was just too premature to do what I wanted to
do. It was part of the business plan, but not totally in
focus with the business plan, and I just felt that it needed
more work, because it was just a little too early. Things
just weren’t coming together as I wanted, especially In-
Flight Phone Corporation taking a lot longer to put it
together.” (Anselmo dep, p. 116) In any event, during this
entire period respondent continued to operate as Black &
White Limousine or J. Anselmo, Inc. with no actual use in
commerce of the specific logo mark registered by respondent
until December 1995-January 1996. Later in his deposition,
Mr. Anselmo conceded that the registered logo mark was never
advertised prior to mid-1995. (Anselmo dep., p. 204)
Also significant is the fact that respondent did not
collect any revenue for transportation services rendered
under the registered mark until January 1996. Respondent’s
answer to interrogatory no. 13 is telling:
State Registrant’s annual sales (a) in
the United States in U.S. dollars and
(b) in Canada in U.S. dollars from goods

3 Respondent, in its brief on the case, makes unsupported
allegations regarding use of the name SKYLIMO in a one line ad in
the 1993 telephone directory. Suffice it to say that these
allegations, as well as certain other allegations made by
respondent in its brief, all of which are highlighted by
petitioner in its reply brief, are not supported by the record,
but rather contradict the testimony and evidence that properly is
of record.
Cancellation No. 24,090
9
or services sold or licensed under its
mark for each year of sales since the
date of first use of Registrant’s Mark
anywhere and specifying the sources from
which the income is derived and any
formula(s) or method(s) used for
computing the amount of income. For
purposes of answering this order,
Registrant may provide a dollar amount
of annual sales actually attained,
provided that the amount given is
sufficient to indicate the general
magnitude of sales.
Due to an incomplete business plan,
Registrant’s annual sales were
curtailed.
1991 $0.00
1992 $0.00
1993 $0.00
1994 $0.00
1995 $0.00
Mr. Anselmo, in his deposition, admitted that he never
generated any revenues under SKYLIMO prior to December 1995.
Rather, any revenue was generated by rendering
transportation services under the name Black & White
Limosusine. (Anselmo dep., pp. 157-158)
In sum, the registered logo mark was not used until
after the mark issued as a registration. And, according to
Mr. Anselmo’s testimony, a main reason that respondent began
actual use of the logo mark only then was the filing of the
present petition for cancellation. The registration is void
ab initio for failure to actually use the specific logo mark
in commerce in connection with transportation services prior
Cancellation No. 24,090
10
to issuance of the registration. Thus, the registration of
the logo mark must be canceled.
FRAUD
Petitioner’s claim is that respondent committed fraud
on the Office when it submitted a statement of use with
false dates of first use and supporting specimens that were
never actually used in commerce. The gist of petitioner’s
claim is that respondent knew or should have known that it
was not using the mark sought to be registered and that the
specimens were never used in commerce.
In considering the charge of fraud here, the following
principles control:
Fraud implies some intentional deceitful
practice or act designed to obtain
something to which the person practicing
such deceit would not otherwise be
entitled. Specifically, it involves a
willful withholding from the Patent and
Trademark Office by an applicant or
registrant of material information
which, if disclosed to the Office, would
have resulted in disallowance of the
registration sought or to be maintained.
Intent to deceive must be "willful." If
it can be shown that the statement was a
"false misrepresentation" occasioned by
an "honest" misunderstanding,
inadvertence, negligent omission or the
like rather than one made with a willful
intent to deceive, fraud will not be
found. Fraud, moreover, will not lie if
it can be proven that the statement,
though false, was made with a reasonable
and honest belief that it was true or
that the false statement is not material
to the issuance or maintenance of the
registration. It does appear that the
Cancellation No. 24,090
11
very nature of the fraud requires that
it be proven "to the hilt" with clear
and convincing evidence. There is no
room for speculation, inference or
surmise and, obviously, any doubt must
be resolved against the charging party.
First International Services Corp. v. Chuckles Inc., 5
USPQ2d 1628, 1634 (TTAB 1988); and Smith International, Inc.
v. Olin Corp., 209 USPQ 1033, 1043-44 (TTAB 1981). See
also: Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1
USPQ2d 1483, 1484 (Fed. Cir. 1986). See generally: J. T.
McCarthy, McCarthy on Trademarks and Unfair Competition §§
31:76-31:77 (4th ed. 1996).
The record in the present case falls short of proving
fraud to the hilt. Although we have found, as discussed
above, that there was no use in commerce of the registered
logo mark prior to issuance of the registration, we believe
that this case involves false misrepresentations as opposed
to statements made with a willful intent to deceive the
Office. Mr. Amselmo appears to be less than knowledgeable
about the technicalities of trademark law, including the
legal nuances surrounding actual use of a service mark in
commerce. Further, during his testimony, Mr. Anselmo
appears to be confused on certain critical facts. (see,
e.g., pp. 195-196)
We find, based on the record before us, that Mr.
Anselmo’s representations about the use of respondent’s mark
were made based on a misunderstanding of and/or confusion
about the trademark law governing such matters. Mr.
Cancellation No. 24,090
12
Anselmo’s explanations convince us that he made the
representations with a reasonable and honest belief that
they were true. Petitioner’s evidence on this point is less
than clear and convincing, and we have resolved any doubt
raised by the record in respondent’s favor.
Decision: The petition for cancellation is granted,
and Registration No. 1,840,093 will be canceled in due
course.4
R. L. Simms
T. J. Quinn
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

4 In the event that respondent ever would ultimately prevail in
this proceeding, the appropriate change of name documents from J,
Anselmo, Inc. to Skylimo, Inc. should be filed with the Office
for recordation relative to the registration.