JA Communicationsv.Jonathan Roche Fitness Ventures (IP) LLC

Trademark Trial and Appeal Board

Apr 22, 2014

No. 92052836re (T.T.A.B. Apr. 22, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 22, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

JA Communications, Inc.
v.
Jonathan Roche Fitness Ventures (IP) LLC
_____

Cancellation Nos. 92052836 and 92052844 (consolidated)
____

Peter J. Ims of Westman, Champlin & Kelly, PA for JA Communications, Inc.

Peter B. Scull of Hamilton, DeSanctis & Cho, LLP for Jonathan Roche Fitness
Ventures (IP) LLC.
_____

Request for Reconsideration

Before Seeherman, Quinn and Greenbaum, Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
On February 28, 2014, respondent filed a request for reconsideration of the
decision issued on January 30, 2014, in which the Board granted petitioner’s
cancellation of respondent’s marks under Section 2(d) of the Trademark Act.
The purpose of reconsideration is to point out errors made by the Board in
rendering its decision. Reconsideration may not be used to introduce into the record
Cancellation Nos. 92052836 & 92052844

2

additional evidence or to reargue points presented in the requesting party’s brief on
the case. See TBMP § 543 (3rd ed. rev.2 2013) and cases cited therein.
In its request for reconsideration, respondent argues that petitioner’s
principal, John Abdo, misrepresented his role as an Olympic athlete, and therefore
none of his testimony is reliable. We have reviewed all of Mr. Abdo’s testimony
regarding his Olympic experience, and based thereon, believe Mr. Abdo’s
characterization of himself as an Olympic athlete is reasonable. Mr. Abdo testified
that he trained for and trained with many members of the 1976 Olympic team,
although he was unable to complete the Olympic trials due to an injury, and that he
coached athletes who competed in the Olympics from 1976 to 1988. Even if Mr.
Abdo’s Olympic experiences do not meet respondent’s definition of an Olympic
athlete, nothing in Mr. Abdo’s testimony about these experiences makes us question
his veracity.
Respondent also makes a number of arguments regarding the testimony of
Gary Chappell, President and CEO of petitioner’s publisher, and in particular, his
testimony about Exhibit KK. However, we did not rely on this exhibit or Mr.
Chappell’s testimony about it at all in reaching our conclusion that petitioner has
priority. We only relied on Mr. Chappell’s testimony to corroborate Mr. Abdo’s
testimony that Mr. Chappell’s company has sold the goods bearing petitioner’s mark
since 2002. We find no inconsistencies or contradictions in that testimony.
Therefore, respondent’s criticism of Mr. Chappell’s testimony about Exhibit KK is
irrelevant.
Cancellation Nos. 92052836 & 92052844

3

In addition, respondent argues that we failed to identify whether petitioner’s
mark is inherently distinctive or whether it has acquired distinctiveness, and that
this determination has a bearing on whether and when petitioner had acquired
proprietary rights in its mark. Because petitioner’s mark is essentially the same as
respondent’s mark, which registered without a claim of acquired distinctiveness, we
did not think it was necessary to specify that petitioner’s mark is inherently
distinctive. However, to the extent this requires clarification, we now state that
petitioner’s NO EXCUSES mark is inherently distinctive, and therefore petitioner
acquired common law rights therein in 2002, based on petitioner’s first of the mark.
Upon review of respondent’s arguments and the facts of this proceeding, we
find no error in the decision.
Decision: Respondent’s request for reconsideration is denied. Both
registrations will be cancelled in due course.