Jomandi Productions, Inc.v.Thomas W. Jones, II et al.

Trademark Trial and Appeal Board

Jul 19, 2004

No. 92041105 (T.T.A.B. Jul. 19, 2004)

Mailed:
July 19, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Jomandi Productions, Inc.
v.
Thomas W. Jones, II, Diana Jones Stevens, and Andrea Fuller-
Ruffin
_____
Cancellation No. 92041105
_____
Auma N. Reggy and Michael D. Hobbs, Jr. of Troutman Sanders
LLP for Jomandi Productions, Inc.
Thomas W. Jones, II, Diana Jones Stevens and Andrea Fuller-
Ruffin, pro se.
_____
Before Hairston, Rogers and Drost,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Thomas W. Jones, II, Diana Jones Stevens and Andrea
Fuller-Ruffin [respondents] registered the mark JOMANDI for
services identified as "production of theatrical shows,
audio recordings, video recordings, television shows, and
movies," in Class 41. The registration issued October 23,
2001, based on an application claiming first use of the
mark, and first use of the mark in commerce, for the
identified services, as of October 25, 1978.
This Opinion is Not
Citable as Precedent
of the TTAB
Cancellation No. 92041105
2
Jomandi Productions, Inc. [petitioner] asserts in its
petition to cancel that it is a non-profit corporation; that
respondents were founding members of petitioner and are
former members of petitioner's Board of Directors; that
respondents "were not individually or collectively
authorized by Petitioner to file for or obtain" the involved
registration; that petitioner "is the owner and the first
and senior user" of the registered mark, since on or about
October 25, 1978; and that petitioner uses the mark in
connection with providing firms, organizations and
individuals with consultation and other related assistance
in the development and promotion of the performing arts
through workshops, seminars, publications and educational
productions within the mass communications media" as well as
"promotion and advancement of art and of artistic principles
co-joined with the training and development of artists."
Petitioner asserts it will be damaged by continuing
registration of the mark in respondents' names and prays
that it be cancelled.
Respondents essentially deny petitioner's claim of
ownership of the registered mark, explaining that they are
"the surviving members of the Jones family," created the
mark as an amalgam of certain family names, "are the
legitimate owners … [and] senior users and hold all rights
to its usage." Respondents assert they first used the mark
Cancellation No. 92041105
3
even prior to the date of first use recited in their
registration and by petitioner in the petition to cancel,
specifically, the mark "was coined in June of 1978" and
first used in August of 1978. Respondents assert "the
family retained ownership of the name" which "always
retained rights to ownership" and it is petitioner that was
"granted permission" to use the mark and it must obtain
consent from the family to continue to use the mark.
Respondents deny petitioner's allegation that it has
standing to seek cancellation.
Nothing further was filed with the Board until
petitioner filed a notice of reliance during its assigned
testimony period. All that petitioner introduced thereby
were copies of its requests for admissions from respondents
and petitioner's statement that no responses were provided.
Petitioner filed a brief on the case, but respondents did
not. Neither side requested time for oral argument.
Except for the first two, which relate only to the
addresses of the parties, all the requests for admissions
are set forth below:
3.
Registrants were founding members of Petitioner, Jomandi
Productions, Inc.
4.
Registrants were former members of the Board of Directors of
Petitioner, Jomandi Productions, Inc.
Cancellation No. 92041105
4
5.
Registrants did not individually or collectively create an
oral license agreement with Jomandi Productions, Inc. for
use of the JOMANDI Mark.
6.
Registrants did not individually or collectively create a
written license agreement with Jomandi Productions, Inc. for
use of the JOMANDI Mark.
7.
Registrants did not challenge Petitioner's use of the
JOMANDI Mark between 1978 and 2002.
8.
Any rights, title and interest in and to the JOMANDI Mark
that Registrants claim, were assigned to Jomandi
Productions, Inc. at the time of incorporation of Jomandi
Productions, Inc.
9.
Registrants had no intention to retain any rights to use the
JOMANDI Mark at the time Registrants assigned all rights in
the JOMANDI Mark to Jomandi Productions, Inc.
10.
The JOMANDI Mark was adopted with the intention that, upon
incorporation of Jomandi Productions, Inc., it would be used
exclusively by Jomandi Productions, Inc.
11.
Prior to leaving the Board of Directors of Jomandi
Productions, Inc., Registrants never intended to use the
JOMANDI Mark apart from Jomandi Productions, Inc.'s use of
the JOMANDI Mark.
12.
At the time of incorporation of Jomandi Productions, Inc.,
Registrants fully consented to Jomandi Productions Inc.'s
adoption and use of the JOMANDI Mark.
13.
Cancellation No. 92041105
5
Registrants are no longer affiliated with Petitioner,
Jomandi Productions, Inc.
14.
Registrants were not individually or collectively authorized
by Petitioner to file for or obtain a registration for the
JOMANDI Mark.
15.
Registrants, without consent from Petitioner, filed for and
received federal registration for the mark "JOMANDI," U.S.
Registration No. 2,501,078.
16.
The public has, since 1978, come to associate the JOMANDI
Mark with the incorporated not-for-profit entity, Jomandi
Productions, Inc.
17.
Registrants did not use the JOMANDI Mark in commerce prior
to the creation of Jomandi Productions, Inc.
18.
The use of the JOMANDI Mark by Registrants is likely to
cause confusion in the minds of the purchasing public with
respect to Jomandi Productions, Inc.
19.
The use of the JOMANDI Mark by Registrants is likely to
cause the purchasing public to believe that the services
offered under such Mark are sold by, originated by, or are
connected in some way with Petitioner.
20.
All rights, if any, created in the JOMANDI Mark prior to the
incorporation of the not-for-profit entity Jomandi
Productions, Inc., have since been fully assigned to Jomandi
Productions, Inc.
21.
Jomandi Productions, Inc. has been using the JOMANDI Mark
since 1978.
Cancellation No. 92041105
6
22.
No documents exist that reflect the existence of or
reference a license agreement for the use of the JOMANDI
Mark between Registrants and Petitioner.
The requests for admissions submitted by the notice of
reliance include a copy of a certificate of service showing
service of copies on each of the three respondents, prior to
the close of discovery. Similarly, the notice of reliance
includes proof of service of copies on each of the
respondents.
Petitioner argues in its notice of reliance and in its
brief that each of the requests for admissions is deemed
admitted, by virtue of respondents having failed to file any
response whatsoever. We agree and adopt the requests as
findings of fact. Accordingly, we now apply the relevant
law to these facts.
The constructive facts clearly establish that
petitioner has standing to seek cancellation of the involved
registration, that is, it has a personal interest in this
proceeding and a reasonable belief that it will be damaged
if the registration is not cancelled. See Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir.
1999). In particular, we note requests for admission 8-10
and 16, 18 and 19.
As can be seen from the thrust of the latter three
referenced requests, petitioner has approached this case as
Cancellation No. 92041105
7
one involving a substantive claim that it is the prior user
of the registered mark and will be damaged by continued
registration of the mark by respondents because there will
be a likelihood of confusion or mistake by prospective users
of petitioner's and respondents' services. Certainly, that
is the thrust of the arguments presented in petitioner's
brief.1 Petitioner's pleading, however, does not present a
claim of priority of use and likelihood of confusion under
Section 2(d) of the Trademark Act. At most, the pleading
presents a claim that respondents are not the owners of the
registered mark. Thus, we review the constructive facts to
determine whether such a claim has been proven.
The facts show: The JOMANDI mark was adopted with the
intention that, upon incorporation of Jomandi Productions,
Inc., it would be used exclusively by Jomandi Productions,
Inc. (Request for Admission no. 10); all rights, if any,
created in the JOMANDI mark prior to the incorporation of
the not-for-profit entity Jomandi Productions, Inc., have
since been fully assigned to Jomandi Productions, Inc.
1 In the conclusion to its brief, petitioner also asserts that
respondents' "unauthorized misappropriation of the JOMANDI Mark
by the Defendants clearly constitutes trademark infringement,
unfair competition and dilution," under state and federal laws,
as well as being "in violation of their duty and legal
obligations to act in good faith and in the best interests of the
corporation."
Suffice it to say that infringement, unfair competition and
dilution, as well as "violation" by respondents of any sort of
fiduciary duty to petitioner, were not claims pleaded in the
petition for cancellation or proved by the constructive facts
Cancellation No. 92041105
8
(Request no. 20); at the time of incorporation of Jomandi
Productions, Inc., respondents fully consented to Jomandi
Productions Inc.'s adoption and use of the JOMANDI mark
(Request no. 12); any rights, title and interest in and to
the JOMANDI mark that respondents claim, were assigned to
Jomandi Productions, Inc. at the time of incorporation of
Jomandi Productions, Inc. (Request no. 8); respondents had
no intention to retain any rights to use the JOMANDI mark at
the time respondents assigned all rights in the JOMANDI mark
to Jomandi Productions, Inc.; and respondents were not
individually or collectively authorized by petitioner to
file for or obtain a registration for the JOMANDI mark
(Request no. 14).
Based on the effective admissions of the facts listed
above, we conclude that petitioner has proven that
respondents were not the owners of the mark that they
registered and that the registration should therefore be
cancelled.
Decision: The petition for cancellation is granted.
The registration shall be cancelled in due course.
admitted when respondents failed to respond to petitioner's
requests for admissions.