Jeanette K. Danielsv.TGN Services, LLC

Trademark Trial and Appeal Board

Feb 18, 2015

No. 91204462 (T.T.A.B. Feb. 18, 2015)

WINTER Mailed: February 18, 2015

Opposition No. 91204462
Jeanette K. Daniels
v.
TGN Services, LLC

Before Quinn, Mermelstein, and Lykos,
Administrative Trademark Judges.

By the Board:

Applicant seeks registration of the mark “ProGenealogists” in standard
characters for a variety of services in International Classes 41 and 42,
including, inter alia, “providing online publications in the nature of
newsletters, reports and magazines” and “providing research services” in the
field of genealogical historical data, family history data, census data, birth,
marriage and death records.”1 In her amended notice of opposition (filed
September 9, 2013), Opposer opposes registration of the applied-for mark on

1 Application Serial No. 85331574 filed May 26, 2011, under Section 1(a) of the
Trademark Act, claiming November 30, 1988, as its first date of use anywhere, and
January 31, 1999, as its first date of use in commerce. Applicant seeks registration
under Section 2(f) of the Trademark Act and, in support thereof, claims that the
mark has become distinctive of the identified services through its substantially
exclusive and continuous use of the mark in commerce for at least the five years
preceding the filing date of the application. Applicant also claims ownership of U.S.
Reg. No. 3051870 for “ProGenealogists” on the Supplemental Register for related
services.
United States Patent And Trademark Office
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91204462

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the grounds that the mark is merely descriptive of applicant’s services and
has not acquired distinctiveness (amended notice of opp., ¶¶ 5, 9), and that
the mark is generic (Id. at ¶ 8). Opposer also alleges that she is a professional
genealogist, has common-law rights in the terms “professional genealogist”
and “pro genealogist” (Id. at ¶¶ 1, 4, 9), and that she has used the terms “pro”
and “genealogist” (and other similar terms) descriptively longer than
Applicant has used the designation sought to be registered. (Id. at ¶4).
Applicant has denied the salient allegations in the amended notice of
opposition. This case now comes up for consideration of Applicant’s fully
briefed motion (filed September 11, 2014) for summary judgment on the
ground that Opposer lacks the requisite standing to bring this case.
Decision
Summary judgment is an appropriate method of disposing of cases in
which there is no genuine dispute with respect to any material fact, thus
leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c)(1).
A party moving for summary judgment has the burden of demonstrating the
absence of any genuine dispute as to a material fact, and that it is entitled to
judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986); Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4
USPQ2d 1793, 1796 (Fed. Cir. 1987). A factual dispute is genuine if, on the
evidence of record, a reasonable fact finder could resolve the matter in favor
of the non-moving party. See Opryland USA Inc. v. Great American Music
Opposition No. 91204462

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Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme
Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir.
1992). Additionally, the evidence of record and all justifiable inferences that
may be drawn from the undisputed facts must be viewed in the light most
favorable to the non-moving party. See Lloyd’s Food Products Inc. v. Eli’s
Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); and Opryland USA, 23
USPQ2d at 1472.
Standing is a threshold issue that must be proven by a plaintiff in every
inter partes case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-
26 (Fed. Cir. 1999); and Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185 (CCPA 1982). The Court of Appeals for the Federal
Circuit has enunciated a liberal threshold for determining standing, namely,
whether a plaintiff's belief in damage has a reasonable basis in fact and
reflects a real interest in the case. See Ritchie v. Simpson, 50 USPQ2d at
1030. See also Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 853 F.2d
888, 7 USPQ2d 1628 (Fed. Cir. 1988). Further, when a plaintiff challenges a
registration on the ground of descriptiveness or genericness, as is the case
here, the plaintiff may establish its standing by pleading and proving that it
is engaged in the sale of the same or closely related products or services (or
that the product or service in question is within the normal expansion of the
plaintiff's business), and that the plaintiff has a competitive need or equal
right to use the term in a descriptive manner, that is, that plaintiff is in a
Opposition No. 91204462

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position to use the term descriptively. See, e.g., Nobelle.Com, LLC v. Qwest
Comm. Int’l, Inc., 66 USPQ2d 1300 (TTAB 2003); Binney & Smith Inc. v.
Magic Marker Industries, Inc., 222 USPQ 1003, 1010 (TTAB 1984); and Mars
Money Systems v. Coin Acceptors, Inc., 217 USPQ 285 (TTAB 1983). “All that
is necessary is that petitioner be in a position to have a right to use of” the
mark in question. J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition, § 20:50 (2014).
Having carefully considered the arguments and evidence submitted by
the parties and drawing all inferences with respect to the motion in favor of
Opposer, the nonmoving party, we find that there is no genuine dispute of
material fact that Opposer has standing to oppose registration of Applicant’s
applied-for mark. Specifically, Opposer alleges that she is a professional
genealogist and is an instructor at a genealogy college, which assists students
to become professional genealogists (amended notice, ¶¶ 1, 3). As a
professional genealogist, Opposer asserts that she has done genealogical
research work for clients since 1977 (Id.), and uses the words “pro,”
“professional,” “genealogy,” “genealogists,” and “genealogist” in her
genealogic business (Id. at ¶ 4). In support of these allegations, Opposer has
submitted a copy of her certification as an “Accredited Genealogist,” issued by
The Genealogical Department of The Church of Jesus Christ of Latter-day
Saints (TTABVUE #69 at 8, Opposer’s Exh. CC).2 In addition, during

2 We note that Opposer submitted numerous documents on August 28, 2014
(TTABVUE nos. 35-54) entitled “P notice of reliance.” These documents were not
Opposition No. 91204462

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Opposer’s discovery deposition, a copy of which was submitted by Applicant,
Opposer states that she was president of the local Association for
Professional Genealogists (TTABVUE #55 at 66; Applicant’s Exh. E, Daniels
dep. 65:25-66:2); and that she has done genealogical research for students
(TTABVUE #55 at 59; Id. at 40:14-42:6). Further, Opposer (through the
Heritage Genealogical College, which she owns and operates3) submitted
evidence that she uses the phrases “Where Genealogists Become
Professionals,” “Professional Genealogy,” and “Professional Genealogical
Research Courses” on the college website (TTABVUE #55 at 86, Applicant’s
Exh. G). In view of the foregoing evidence, Opposer has demonstrated a real
interest, that is to say, “a direct and personal stake” in the outcome of this
proceeding, and a reasonable basis for belief that she may be damaged by
registration of the applied-for mark. See Ritchie v. Simpson, 50 USPQ2d at
1027.
In view of the foregoing, we find that there are no genuine disputes of
material fact as to the issue of standing, and that Opposer has standing as a
matter of law. Therefore, Opposer’s standing will be treated as established in
the case.

submitted in connection with any motion and were submitted outside of Opposer’s
testimony period. Accordingly, they will not be considered. See Trademark Rules
2.122 and 2.123(l). However, Opposer’s notices of reliance filed on October 12, 2014,
during her testimony period and before the proceeding was suspended, may be
considered by the Board at final hearing.

3 See TTABVUE #55 at 59-60, Daniels dep. 40:6-8.
Opposition No. 91204462

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Accordingly, Applicant’s motion for summary judgment is denied. This
proceeding shall thus move forward solely with respect to Opposer’s claims
that the mark is merely descriptive and generic.4
Proceeding Resumed; Trial Dates Reset
This proceeding is resumed. Trial dates are reset as shown in the
following schedule:5
Defendant's Pretrial Disclosures Due 3/6/2015
Defendant's 30-day Trial Period Ends 4/20/2015
Plaintiff's Rebuttal Disclosures Due 5/5/2015
Plaintiff's 15-day Rebuttal Period Ends 6/4/2015

IN EACH INSTANCE, a copy of the transcript of testimony, together
with copies of documentary exhibits, must be served on the adverse party
WITHIN THIRTY DAYS after completion of the taking of testimony. See
Trademark Rule 2.125, 37 C.F.R. § 2.125.
Briefs shall be filed in accordance with Trademark Rules 2.128(a) and
(b), 37 C.F.R. §§ 2.128(a) and (b). An oral hearing will be set only upon
request filed as provided by Trademark Rule 2.129, 37 C.F.R. § 2.129.

4 The parties are reminded that, absent the parties’ stipulation that the evidence
submitted in connection with the motion for summary judgment is to be considered
of record for trial, said evidence is of record only for consideration of the motion for
summary judgment. See TBMP § 501 (2014) and authorities cited therein. See also
TBMP § 702.04(d). Any such evidence to be considered at final hearing must be
properly introduced in evidence during the appropriate trial periods. See Levi
Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); Pet Inc.
v. Bassetti, 219 USPQ 911 (TTAB 1983); American Meat Institute v. Horace W.
Longacre, Inc., 211 USPQ 712 (TTAB 1981).

5 It is noted that Opposer submitted evidence on the last day of the previously reset
testimony period, October 12, 2014.