Jeffrey Simon dba M3K Enterprisesv.James Holda and Beach ATM Services, LLC

Trademark Trial and Appeal Board

Mar 26, 2019

CANC (T.T.A.B. Mar. 26, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: March 26, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____
TRADEMARK TRIAL AND APPEAL BOARD
_____

Jeffrey Simon dba M3K Enterprises
v.
James Holda and Beach ATM Services, LLC

Cancellation No. 92066602

Sada Sheldon of the Law Offices of Khalil & Sheldon
for Petitioner, Jeffrey Simon dba M3K Enterprises.

Duncan G. Byers of Pender & Coward PC
for Respondents, James Holda and Beach ATM Services, LLC.
_____

Before Kuhlke, Kuczma and Goodman,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Jeffrey Simon dba M3K Enterprises ( “Petitioner”) filed an Amended Petition for
Cancellation of James Holda’s and Beach ATM Services, LLC’s1, (jointly referred to
as “Respondent”), Trademark Registration No. 5127645 for the mark:

1 Trademark Registration No. 5127645 was issued to James Holda as registrant. Subsequent
to the filing of the Petition for Cancellation, Registration No. 5127645 was assigned
retroactive to May 25, 2016 (the filing date of the underlying application for the Registration),
from James Holda to Beach ATM Services, LLC. See Exhibit A to Registrant’s Response to
Cancellation No. 92066602

- 2 -

(“ATM” and “est 2015” disclaimed) for:
Automated teller machine services; Rental of cash
dispensers or automated-teller machines, in International
Class 36.2
Petitioner contends that: Respondent is not the rightful owner of the registered
mark; Petitioner has priority of ownership over an identical mark for overlapping
services with which the registered mark is likely to cause confusion; and Respondent
made several material misrepresentations of fact in its trademark application in
order to secure Registration No. 5127645.

Petitioner’s Motion for Leave to File an Amended Petition for Cancellation. (10 TTABVUE 7-
8). (The TTABVUE citations used herein refer to the docket.) See Reel/Frame: 006195/0479,
recorded: 11/02/2017. In light of the execution of the Assignment after this Cancellation was
initiated, Beach ATM Services, LLC was joined as a respondent and party defendant. See 12
TTABVUE 1-2 citing 37 C.F.R. § 3.73(b) and TRADEMARK TRIAL AND APPEAL BOARD MANUAL
OF PROCEDURE (“TBMP”) § 512.01 (June 2017).
Therefore, Mr. Holda and Beach ATM Services, LLC are jointly referred to as “Respondent”
unless otherwise specifically identified.
2 Registration No. 5127645 issued on January 24, 2017, based on Application Serial No.
87049809, filed May 25, 2016, alleging first use and first use of the mark in commerce as of
May 22, 2015 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). The mark
consists of the literal element “ATM 2 GO” with a stylized “2” in an oval and a ribbon below
the “2” containing the literal element “est 2015” in the ribbon.
Cancellation No. 92066602

- 3 -
Except for admitting likelihood of confusion, Respondent denies the salient
allegations in its Answer to the Amended Petition for Cancellation; the affirmative
defenses it alleged in its Answer to the Amended Petition were stricken by the Board.3
I. Preliminary Matters – Accelerated Case Resolution
The parties agreed to resolve this proceeding by Accelerated Case Resolution
(“ACR”) in lieu of a trial stipulating that “the Board may resolve any issues of
material fact upon the filing of cross motions for summary judgment . . . .”4 The
Board’s Order of November 1, 2017, approved the use of ACR for this proceeding
including the following additional stipulations5:
1. The parties agree that there will be no discovery
depositions.
2. The parties agree to stipulate to a set of facts, to
the extent they can.
3. The Parties may offer into evidence testimony by
declaration and/or affidavit.
4. Expert disclosures will not be necessary in this
proceeding.
II. The Record
Pursuant to the parties’ ACR stipulation, Petitioner’s testimony was presented by
declaration with accompanying exhibits. Thus, the record includes the pleadings and,

3 14 TTABVUE 7-11, 19 TTABVUE.
4 8 TTABVUE. While the parties stipulated in the Joint Stipulation and Request for
Accelerated Case Resolution that “the Board may resolve any issues of material fact upon the
filing of cross motions for summary judgment . . . ,” Respondent did not file a motion for
summary judgment.
5 8 TTABVUE 2-3; 9 TTABVUE.
Cancellation No. 92066602

- 4 -
by operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file history
for Respondent’s Registration No. 5127645 which is the subject of this proceeding,
and the following evidence submitted by Petitioner:
1. Declaration of Jeffrey Simon with Exhibits A-D, (20 TTABVUE 15-27):
- Exhibit A: images dated May 7, 2015 of Steve Snelling of True Colors
at computer screen showing ATM2GO (stylized) (20 TTABVUE 20-
24),

- Exhibit B: image taken by Jeffrey Simon showing an ATM at the
Lava Music Festival on which Mr. Simon placed the mark at issue
(20 TTABVUE 25),

- Exhibit C: image of a kiosk Mr. Simon retained from the partnership
with Respondent (20 TTABVUE 26),

- Exhibit D: Pender & Coward letter dated April 24, 2017 addressed to
Mr. Jeff Simon, 4987 Cleveland St., Suite 103, Virginia Beach, VA
23462 (20 TTABVUE 27);

2. Declaration of Sada Sheldon of The Law Offices of Carl Khalil & Sada Sheldon,
PLC, counsel of record for Petitioner with Exhibits 1-4 (20 TTABVUE 28-46):

- Exhibit 1: Registrant’s6 Answers to Interrogatories 1-5, 7 and 10, and
Response to Request for production of Documents (20 TTABVUE 30-
34),

- Exhibit 2: Petitioner’s First Request for Admissions to Registrant
dated November 3, 2017 Admissions 15-16, 20-21, 24 and Exhibits A-
C (20 TTABVUE 35-41),

- Exhibit 3: Registrant’s Answers to Request for Admissions 5-6, 10-
12, 14-16, 18-24, 28-34 and 36, dated December 4, 2017 (20
TTABVUE 42-46),

- Exhibit 4: copy of application from Trademark Status and Document
Retrieval system (TSDR) for the subject mark filed by James Holda
(20 TTABVUE 47-55).

6 “Registrant” identifies Respondent James Holda.
Cancellation No. 92066602

- 5 -
Respondent submitted no evidence. Only Petitioner submitted a brief entitled
Motion for Summary Judgment Pursuant to Accelerated Case Resolution.
III. Background
Petitioner Jeffrey Simon dba M3K Enterprises, and Respondent, Beach ATM
Services, LLC (“Beach ATM”), formed a partnership in November or December 2014
to provide mobile cash dispensing through automated teller machines (“ATM”) placed
at festivals and similar events where ATM services were needed.7 In May 2015, the
partnership adopted the logo (ATM-2-GO & Design) designed by
Steven Snelling of True Colors in Virginia Beach, Virginia for use in offering the
partnership’s ATM services.8 On May 16, 2015, the mark was first used in interstate
commerce by the partnership and its agents being displayed on a stationary ATM at
the Lava Music Festival in Suffolk, Virginia.9
From May through November 2015, the partnership provided ATM services at
over 20 events in Virginia and North Carolina.10 Several months later, around the

7 Sheldon Decl., Exhibit 1, Answer to Interrogatory No. 1 of Registrant’s Answers to
Interrogatories and Response to Request for Production of Documents (20 TTABVUE 30); see
also Declaration of Jeffrey Simon (“Simon Decl.”) ¶ 3 (20 TTABVUE 15-16).
8 Registrant’s Answer to Interrogatory No. 2 states that the mark was created on May 15,
2015. See Sheldon Decl., Exhibit 1 Answer to Interrogatory No. 2 (20 TTABVUE 31); while
Petitioner’s evidence states that the mark was “created on or about May 7, 2015 . . . .” Simon
Decl. ¶¶ 4, 6, 7, Exhibit A (20 TTABVUE 16, 20-24).
9 Sheldon Decl. Exhibit 1, Answers to Interrogatory Nos. 3-4 (20 TTABVUE 31); Simon Decl.
¶ 8 (20 TTABVUE 16). Additionally, the mark was also used “concurrently, at the Wings for
Warriors event in Virginia Beach, Virginia.” Answer to Interrogatory No. 4 (20 TTABVUE
31).
10 Simon Decl. ¶ 9 (20 TTABVUE 17).
Cancellation No. 92066602

- 6 -
end of November 2015, the partnership dissolved.11 Upon termination of the
partnership, the partners agreed that they would both continue to provide ATM
services under the ATM-2-GO & Design mark.12 Petitioner continued using the mark
on additional ATM’s at various events since the termination of the partnership.
Petitioner also continued to use the mark on his website and on the three ATM-2-GO
& Design branded kiosks retained from the partnership to promote ATM services.13
Unbeknownst to Petitioner, about six months after the partnership dissolved, on
May 25, 2016, Respondent James Holda filed a trademark application to register the
mark ATM-2-GO & Design for “automated teller machine services” and “rental of
cash dispensers of automated teller machines” in International Class 36 which
eventually matured into Registration No. 5127645. On November 2, 2017,
Respondent Holda retroactively assigned any interest he owned in the mark as of the
filing date of the application to Respondent Beach ATM Services, LLC.
IV. Standing
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111

11 Sheldon Decl. Exhibit 1, Answers to Interrogatory Nos. 1 & 7 (20 TTABVUE 30, 32); Simon
Decl. ¶ 10 (20 TTABVUE 17). Paragraph 10 of Petitioner’s Simon Declaration states “Around
the end of November 2015, the Partnership terminated. Petitioner and I discussed that we
would both continue to provide ATM services under the ATM-2-GO mark.” It is clear that
there is an error in that sentence. “Respondent” (or Registrant), not “Petitioner,” discussed
continuing to provide ATM services with Mr. Simon who is the Petitioner in this case.
Therefore, “Petitioner” is read as “Respondent” in this instance.
12 Simon Decl. ¶ 10 (20 TTABVUE 17); Sheldon Decl. Exhibit 1, Answer to Interrogatory No.
7 (20 TTABVUE 32).
13 Simon Decl. ¶¶ 12-13 (20 TTABVUE 17).
Cancellation No. 92066602

- 7 -
USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94
USPQ2d 1942, 1945 (TTAB 2010) (citing Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023, 1025 (Fed. Cir. 1999)). Our primary reviewing court, the U.S. Court
of Appeals for the Federal Circuit, has enunciated a liberal threshold for determining
standing, namely that a plaintiff must demonstrate that it possesses a “real interest”
in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his
belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar, 111 USPQ2d at 1062;
Ritchie v. Simpson, 50 USPQ2d at 1025; Lipton Indus., Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). A “real interest” is a “direct and
personal stake” in the outcome of the proceeding. Ritchie v. Simpson, 50 USPQ2d at
1026. A belief in likely damage can be shown by establishing a direct commercial
interest. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.
Cir. 2000).
The Declaration of Jeffrey Simon submitted with Petitioner’s ACR Summary
Judgment Brief establishes Petitioner’s interest in the service mark
based on his continuing use of that mark in connection with his ATM services which
are identical to those covered in the subject Registration.
Based on this, Petitioner believes that he will be damaged by the continued
registration of the identical mark to promote identical services. Accordingly,
Petitioner has a real interest in this proceeding and a reasonable basis for his belief
that he will be damaged by the continued registration of Respondent’s identical mark.
Spirits Int’l B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi,
Cancellation No. 92066602

- 8 -
99 USPQ2d 1545, 1548 (TTAB 2011); Toufigh v. Persona Parfum Inc., 95 USPQ2d
1872, 1874 (TTAB 2010). Petitioner is therefore not a mere intermeddler and has
established his standing in this cancellation proceeding. Ritchie v. Simpson, 50
USPQ2d at 1025; Lipton Indus. v. Ralston Purina, 213 USPQ at 189; Swiss Grill Ltd.
v. Wolf Steel Ltd., 115 USPQ2d 2001, 2008 (TTAB 2015).
V. Ownership of the Registered Mark
Section 1(a)(1) of the Trademark Act, 15 U.S.C. § 1051(a)(1), provides:
The owner of a trademark used in commerce may request
registration of its trademark on the principal register by
paying the prescribed fee and filing in the Patent and
Trademark Office an application and a verified statement
…
Thus, an application based on use in commerce under 15 U.S.C. §1051(a) must be
filed by the party who owns the mark on the application filing date. If the applicant
does not own the mark on the application filing date, the application is void and
registration must be refused. Therefore, only the owner of a mark may file an
application. See In re Wella A.G., 787 F.2d 1549, 229 USPQ 274, 277 (Fed. Cir. 1986)
(C.J. Nies concurring) (“Under section 1 of the Lanham Act, only the owner of a mark
is entitled to apply for registration.”); In re Deister Concentrator Co., 289 F.2d 496,
129 USPQ 314, 320 (CCPA 1961) (“Under section 1, only ‘The owner of a trademark’
can apply for registration.”); Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1303 (TTAB
2015).
Accordingly, a trademark application is void ab initio if filed by an individual or
entity who is not the owner of the mark as of the filing date. Conolty v. Conolty
Cancellation No. 92066602

- 9 -
O’Connor NYC LLC, 111 USPQ2d 1302, 1309 (TTAB 2014) (an application filed by
one who is not the owner of the mark sought to be registered is a void application);
Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1239 (TTAB 2007) (only the
owner of the mark may file the application for registration of the mark; if the entity
filing the application is not the owner of the mark as of the filing date, the application
is void ab initio); Am. Forests v. Sanders, 54 USPQ2d 1860, 1862 (TTAB 1999) aff’d,
232 F.3d 907 (Fed. Cir. 2000) (application filed in the name of an individual, when it
was actually owned by a partnership composed of the individual and her husband,
was void ab initio); see also 37 C.F.R. § 2.71(d) ( . . . An application filed in the name
of an entity that did not own the mark as of the filing date of the application is void.).
“Neither the Board nor the courts can waive this statutory requirement.” Huang v.
Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335, 1336 (Fed. Cir. 1988)
(affirming Board’s holding that a trademark application was void ab initio where
applicant was not the owner of the mark on the filing date).
Respondent Holda filed an application to register the mark for
“automated teller machine services” and “rental of cash dispensers or automated
teller machines” together with three specimens of use.14 The uncontested evidence
presented shows that Respondent’s application was void ab initio because
Respondent Holda, as an individual, was not the owner of the mark on the filing date.
He filed the used-based application for the mark under his own name even though he

14 Sheldon Decl. Exhibit 3, Registrant’s Answers to Request for Admissions Nos. 15, 20, 24
(20 TTABVUE 44).
Cancellation No. 92066602

- 10 -
has “never individually used the mark in connection with [the] ATM services;”15 and
he has only used the mark “as an agent of Beach ATM Services, LLC.” Inasmuch as
Respondent Holda has never used the mark independently, he was never the owner
of the mark and incorrectly filed the application in his name.
A closer look at the specimens filed with the application in light of the evidence
confirms that they do not show Respondent Holda’s use of the mark. The first
specimen is a photo of an ATM enclosure taken on August 15, 2015, at the Caribfest
in Norfolk, VA, an event serviced by the partnership. Respondent Holda admits that
he did not individually use the mark at that event.16 The second specimen is a photo
of a mobile cart bearing the mark taken on July 25, 2015, at Jerk Fest in Virginia
Beach, VA, an event serviced by the partnership. Respondent Holda admits that he
did not individually use the mark at that event either.17 The third specimen consists
of a screenshot of Petitioner’s website. Petitioner owned and controlled the website
on the date that Respondent Holda filed the specimen with the USPTO. Respondent
Holda admits he did not own, have access to, or control the website on (or before) the
day he filed the application.18 While the insufficiency of the specimens, per se, does
not constitute grounds for cancelling the registration, the evidence regarding them

15 Sheldon Decl. Exhibit 1, Answer to Interrogatory No. 5 (20 TTABVUE 32); Exhibit 3,
Answer to Request to Admit Nos. 10-12, 14 (20 TTABVUE 43).
16 Sheldon Decl. Exhibit 3, Answers to Request for Admissions Nos. 15-16, 18-19 (20
TTABVUE 44).
17 Sheldon Decl. Exhibit 3, Answers to Request for Admissions Nos. 20-23 (20 TTABVUE 44).
18 Sheldon Decl. Exhibit 3, Answers to Request for Admissions Nos. 24, 28-31 (20 TTABVUE
44-45).
Cancellation No. 92066602

- 11 -
supports Respondent Holda’s lack of ownership of the mark at the time the
application was filed.19
Additionally, the nunc pro tunc Assignment executed by Respondent Holda on
November 2, 2017, well-after this proceeding was initiated, assigning the rights in
Registration No. 5127645 and the mark as of the filing date of the application to
Beach ATM Services, LLC, does not alter the outcome.20 While trademark ownership
may be assigned, Respondent Holda, as the assignor, may transfer only what he owns.
See A&L Laboratories, Inc. v. Bou-Matic LLC, 429 F.3d 775, 77 USPQ2d 1248, 1252
(8th Cir. 2005); 3 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 18:15 (5th ed.) (March 2019 Update). As supported by the evidence,
Respondent Holda did not own the trademark when the application was filed. Thus,
he had nothing to transfer to Respondent Beach ATM Services, LLC.

19 See Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1929 n.12 (TTAB 2014) (an
alleged error of the examining attorney in accepting a specimen of use is not a valid ground
for opposition or cancellation, although a plaintiff may allege that the applicant’s mark was
not actually in use when such use was required); Marshall Field & Co. v. Mrs. Fields Cookies,
11 USPQ2d 1355, 1358-59 (TTAB 1989) (the insufficiency of the specimens, per se, does not
constitute grounds for cancellation; the proper ground for cancellation is that the term has
not been used as a mark); Century 21 Real Estate Corp. v. Century Life of Am., 10 USPQ2d
2034, 2035 (TTAB 1989) (the adequacy of specimens is solely a matter of ex parte
examination; the failure to make service mark use (as opposed to a failure of the specimens
to show such use) is a proper ground for opposition).
20 As noted above, all rights, title and interest in Registration No. 5127645 and the mark
were assigned to Respondent Beach ATM Services, LLC as of May 25, 2016, the filing date of
the application. The Assignment was executed on November 2, 2017 by James Holda to Beach
ATM Services, LLC and provides that the “Assignor [James Holda] assigns all rights, title
and interest in the 5,127,645 registration and Mark, along with any associated goodwill
resulting therefrom, as of the effective date that this Assignment has been made, to the
Assignee.” See Reel: 006195 Frame: 0479 Recorded: 11/02/2017.
Cancellation No. 92066602

- 12 -
In a use-based application, if there is no use by applicant on any of the goods or
services specified at the time of filing, the application and any resulting registration
is void ab initio on the ground of nonuse. See Aycock Engineering, Inc. v. Airflite, Inc.,
560 F.3d 1350, 90 USPQ2d 1301, 1305 (Fed. Cir. 2009) (“The registration of a mark
that does not meet the use requirement is void ab initio.”); Holiday Inn v. Holiday
Inns, Inc., 534 F.2d 312, 189 USPQ 630, 636 n.6 (CCPA 1976) (“One must be the
owner of a mark before it can be registered.”).
VI. Conclusion
The application for registration of was improperly filed by James
Holda, who as an individual, never used the mark and accordingly, had no rights in
the mark at the time he filed the underlying application. Thus, the application
resulting in Registration No. 5127645 was void ab initio and this cancellation is
sustained.
Because we find for Petitioner on his claim that Respondent Holda was not the
rightful owner of the registered mark as of the filing date of the application maturing
into Registration No. 5127645, we need not reach the merits of Petitioner’s claims of
priority, likelihood of confusion and material misrepresentation. See Azeka Bldg.
Corp. v. Azeka, 122 USPQ2d 1477, 1478 (TTAB 2017) (the Board has “‘discretion to
decide only those claims necessary to enter judgment and dispose of the case,’ as our
‘determination of registrability does not require, in every instance, decision on every
pleaded claim’”) (quoting Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170,
1171 (TTAB 2013)).
Cancellation No. 92066602

- 13 -
Decision: The Petition to Cancel Registration No. 5127645 is granted and
Registration No. 5127645 will be cancelled in due course.