Joyce K. Thomasv.Chicago Basketball League Corporation

Trademark Trial and Appeal Board

May 1, 2019

91228767 (T.T.A.B. May. 1, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 1, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Joyce K. Thomas

v.

Chicago Basketball League Corporation
________

Opposition No. 91228767
_______

Joyce K. Thomas (pro se).

R. Peter Spies of Dineff Trademark Law Limited,
for Chicago Basketball League Corporation.

_____

Before Zervas, Kuczma and Ritchie,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Chicago Basketball League Corporation (“Applicant”) seeks to register the mark

Opposition No. 91228767
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for “Entertainment in the nature of basketball games; Entertainment services in the
nature of live professional minor-league basketball games” in International Class 41
on the Principal Register.1 Opposer alleges the following non-ownership claim in her
Notice of Opposition:
4. The Opposer is author, creator of the Windy City Groove mark and
owner of the US Copyright Registration Number VA 1-999-894
(attached here as Exhibit A) with a November 5, 2014 Date of First
publication for this mark. The effective date of copyright registration is
December 23, 2015 for the design of the mark shown in the CBLC
Application Serial No 86819750.

5. Opposer (Thomas) designed the mark “Wind City Groove” for use
in the Midwest Professional Basketball Association (“MPBA”). Thomas
and her husband (C. Edward Schumer) are co-owners of the MPBA.
Thomas granted usage rights for this mark exclusively to the MPBA.

***

8. Thomas began exploration of text layout for “Groove” on
September 7, 2014 (see attached exhibit B). The nickname “Groove” was
first discussed September 11, 2014 by the MPBA management team
including Thomas, Schumer and Craig Fata (see attached Exhibit C).
Thomas began the actual design work for the logo in mid October 2014
(see attached Exhibit D).

***

11. Discussions began in late October 2014 regarding potential
ownership by Applicant of the Windy City Groove team. From the start,
terms of the discussion provided that the MPBA would maintain
ownership of all intellectual property of all teams in the league even

1 Application Serial No. 86819750, filed November 13, 2015 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), claiming first use and first use in commerce on August 1,
2014. Applicant disclaimed the term “WINDY CITY” and entered the following description of
the mark in the application record:
The mark consists of the wording “WINDY CITY GROOVE” in stylized
lettering with two borders underneath the Chicago skyline. The wording
“WINDY CITY” appears above the letters “O” in “GROOVE”. The first letter
“O” in “GROOVE” is replaced by a basketball. A horizontal line runs through
the word “GROOVE” and behind the basketball.
Opposition No. 91228767
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after an agreement was reached. No contractual agreements were ever
finalized.

12. On November 6, 2015 the Applicant severed their relationship
with and withdrew from the MPBA per their attorney.

***

16. In summation, the mark Windy City Groove was not created as
work for hire and Opposer never transferred ownership to the Applicant.
Their use was permissive through November 6, 2014 when they left the
league and Thomas retained ownership of the mark throughout their
usage.2

Opposer’s brief identifies “No Bona Fide Use in Commerce on Filing Date of
Statement of Use” as an additional issue for decision in this case. Applicant, however,
never filed a Statement of Use; the application was filed under Section 1(a) of the
Trademark Act based on use in commerce. Also, “No Bona Fide Use in Commerce on
Filing Date of Statement of Use” was not pleaded and is not identified as an issue in
the Board’s August 5, 2016 order which indicates that the only sufficiently pleaded
claim in the Notice of Opposition was Opposer’s non-ownership claim,3 and is not an
issue mentioned in the Board’s September 22, 2017 order stating, “the Board
indicated [in its August 5, 2016 order] that the proceeding would go forward solely on
the remaining claim of non-ownership.”4 Applicant objected to our consideration of
any claim other that the one raised in the Notice of Opposition.5 Thus, we give no

2 Testimony identifies this date as November 5, 2015. Second Schumer Decl. ¶ 3(G), 27
TTABVUE 5.
3 6 TTABVUE 6.
4 19 TTABVUE 4.
5 Applicant’s Brief at 6, 39 TTABVUE 7.
Opposition No. 91228767
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further consideration to a putative claim of “No Bona Fide Use in Commerce on Filing
Date of Statement of Use.”
Applicant, in its amended answer, denied the salient allegations of the Notice of
Opposition.6 The parties have fully briefed the proceeding.
I. The Record
In addition to the pleadings, the record automatically includes the involved
application file pursuant to Trademark Rule 2.122(b)(1), 37 C.F.R. §2.122(b)(1).7 The
parties submitted the following evidence during their assigned testimony periods:
A. Opposer’s trial submissions:
• Opposer’s First Notice of Reliance submitting a copy of Copyright
Registration No. VA 1-999-894, effective December 23, 2015, for
“Windy City Groove” (Exhibit 1). 8

• Opposer’s Second Notice of Reliance submitting Exhibits 2-10, 14
and 15 consisting of printouts of webpages.9

6 7 TTABVUE 2–5.
7 Opposer attached exhibits to its Notice of Opposition. Trademark Rule 2.122(c)(2) provides,
“[e]xcept as provided in paragraph (d)(1) of this section, an exhibit attached to a pleading is
not evidence on behalf of the party to whose pleading the exhibit is attached, and must be
identified and introduced in evidence as an exhibit during the period for the taking of
testimony.” The exception does not apply here, and the exhibits are not part of the evidentiary
record. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) §§ 317
and 704.05(a) (June 2018).
8 22 TTABVUE 24.
9 22 TTABVUE 114-166. The Board’s April 17, 2018 order (26 TTABVUE) struck Exhs. 11-
13 to Opposer’s Second Notice of Reliance as not being appropriate submissions through the
notice of reliance procedure. The Board’s order also struck Exhs. A-E and H-K to Opposer’s
early-filed “Trial Brief” submitted on December 22, 2017 (22 TTABVUE), but allowed
Opposer to resubmit them with exhibits under an appropriate declaration. Exhibits F, G, L,
M and N are declarations by Messrs. Schumer, Fata and Hollaway; the Board did not strike
these declarations.
Opposition No. 91228767
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• First (June 30, 2017)10 and Second (December 14, 2017)11
Declarations of C. Edward Schumer, Opposer’s husband and owner
of MPBA, and exhibits.

• First (June 28, 2017)12 and Second (December 14, 2017)13
Declarations of Craig Fata, Associate Commissioner and Chief
Communications Officer of MPBA, and exhibits.

• Declaration of Steve Hollaway, Chief Technology Officer of MPBA,
and exhibits.14

B. Applicant’s trial submissions:
• Declaration of LaChelle Sanders,15 wife of Steven Sanders, Owner
of Chicago Basketball League Corporation and exhibits, including
Opposer’s Responses to Applicant’s Interrogatories.16

• Declaration of Damon Stewart, the Sanders’ commercial attorney,
and single exhibit.17

• Declaration of Claudia Gunter, a partner in Panther Training, a
selected service provider for MPBA’s inaugural season (no
exhibits).18

C. Opposer’s rebuttal submissions:
• Opposer’s Third Notice of Reliance submitting an Internet article.19

10 22 TTABVUE 50-56 (resubmitted with exhibits at 28 TTABVUE).
11 22 TTABVUE 68-75 and 22 TTABVUE 95-102 (resubmitted with exhibits at 27
TTABVUE).
12 22 TTABVUE 43-48 (resubmitted with exhibits at 30 TTABVUE).
13 22 TTABVUE 77-87 and 22 TTABVUE 103-113 (resubmitted with exhibits at 29
TTABVUE).
14 22 TTABVUE 89-94 (resubmitted with exhibits at 31 TTABVUE).
15 32 TTABVUE 132-137.
16 32 TTABVUE 36-40. Ms. Sanders states that she was involved in the negotiations with the
MPBA and Mr. Schumer, and the marketing and management of the WINDY CITY GROOVE
and Chicago Force Basketball teams. 32 TTABVUE 132.
17 33 TTABVUE.
18 34 TTABVUE.
19 35 TTABVUE.
Opposition No. 91228767
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• Third Declaration of Mr. Schumer (dated July 17, 2018) and
exhibits.20

• Opposer’s Declaration and exhibits.21

II. Opposer’s Evidentiary Objections
Applicant objects to testimony from each of Opposer’s declarants.22 Applicant’s
objections are overruled because the stated objections are largely directed to the
weight of the testimony. We have considered the declarations in their entirety, and
have considered Applicant’s objections in weighing the probative value of the
declarants’ statements.
III. Standing
A threshold issue in every inter partes case is the plaintiff’s standing to challenge
registration. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94
USPQ2d 1942, 1945 (TTAB 2010). Section 13 of the Trademark Act permits an
opposition by “[a]ny person who believes that he would be damaged by the
registration of a mark upon the principal register ….” 15 U.S.C. § 1063. To establish
its standing, Opposer must demonstrate that it possesses a “real interest” in this
proceeding beyond that of a mere intermeddler, and a “reasonable basis” for its belief
of damage. “A ‘real interest’ is a ‘direct and personal stake’ in the outcome of the
proceeding.” Exec. Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1179

20 36 TTABVUE.
21 36 TTABVUE 31.
22 39 TTABVUE 28 et seq.
Opposition No. 91228767
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(TTAB 2017) (quoting Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026
(Fed. Cir. 1999)). “A claim of likelihood of confusion that ‘is not wholly without merit,’
including prior use of a confusingly similar mark, may be sufficient ‘to establish a
reasonable basis for a belief that one is damaged.’” Id. (quoting Lipton Indus., Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982)).
The Board stated in its August 5, 2016 order that “Opposer has sufficiently
pleaded her standing to bring this action by pleading ownership and prior use of ‘the
Windy City Groove mark … for use in the Midwest Professional Basketball
Association,’ i.e., ownership of a similar mark for use with services that are alleged
to overlap with those identified in the subject application,” citing to Paragraphs 4-5
of the Notice of Opposition.23 The Board advised Opposer in its September 22, 2017
order that “standing is an essential element of a plaintiff’s case that must be both
pleaded and ultimately proved,” citing Lipton Indus., Inc. v. Ralston Purina Co., 213
USPQ at 185 (“A [plaintiff’s] allegations alone do not establish standing … [and] it
does not follow that the facts affording a party standing, which as pleaded are
sufficient as a matter of law, do not have to be proved by that party.”) and Nobelle.com
LLC v. Qwest Commc’ns Int’l Inc., 66 USPQ2d 1300, 1303 (TTAB 2003) (standing
must be proved).24
Opposer has not addressed her standing in her main brief, leaving it for us to
search through the record to locate evidence that would establish her standing. We

23 6 TTABVUE 4.
24 19 TTABVUE 7.
Opposition No. 91228767
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look to Opposer’s evidence submitted with her case-in-chief and not in rebuttal,
because standing is an element that Opposer must prove in making her case. Lipton
Indus., Inc. v. Ralston Purina Co., 213 USPQ at 189 (“The facts regarding standing,
we hold, are part of a petitioner’s [or Opposer’s] case and must be affirmatively
proved.”); see also Hester Indus. Inc. v. Tyson Foods Inc., 2 USPQ2d 1645, 1647 (TTAB
1987) (Opposer failed to prove its case-in-chief during time allowed for doing so and
Board refused to consider evidence offered during rebuttal that supported the case-
in-chief). A failure to prove the essential element of its standing at trial results in a
judgment on the merits.
Mr. Schumer stated in his first and second declarations that “Joyce Thomas
maintains ownership of each mark and licenses its usage to the MPBA” and Opposer
created, and is the owner of, the mark shown in Applicant’s application.25 Mr.
Hollaway testified that “[i]t is the MPBA business practice for team logos to be
designed by Joyce Thomas through her business Joyce Thomas Designs with Joyce
Thomas maintaining ownership of the mark and licensing its usage to the MPBA.”26
Applicant admitted in its Answer that Opposer designed the “Windy City Groove
mark” and is the owner of a copyright registration for the design of the mark shown
in Applicant’s application.27 Messrs. Schumer and Hollaway’s testimony and
Applicant’s admissions establish that Opposer has a real interest in this proceeding
and a reasonable basis for her belief of damage from registration of Applicant’s mark,

25 27 TTABVUE 2; Second Schumer Decl. ¶ 2(A), 27 TTABVUE 2.
26 Hollaway Decl. ¶ 6, 31 TTABVUE 4.
27 Answer ¶¶ 4-5, 7 TTABVUE 2 - 3.
Opposition No. 91228767
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and thus has standing. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 111
USPQ2d at 1062.
IV. Non-Use
Pursuant to Section 1(a)(1) of the Trademark Act, 15 U.S.C. § 1051(a)(1), only
“[t]he owner of a trademark used in commerce may request registration of its
trademark ….” Accordingly, only the owner of the mark may file an application.
Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630, 635 n.6 (CCPA 1976)
(“One must be the owner of a mark before it can be registered.”); 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.”). Therefore, “[a]n
application filed by one who is not the owner of the mark sought to be registered is a
void application.” In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690 (TTAB 1991)
(citing In re Techsonic Indus., Inc., 216 USPQ 619 (TTAB 1982)); see also Huang v.
Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988) (affirming
Board’s holding that an application was void ab initio because the applicant was not
the owner of the mark on the filing date); Great Seats Ltd. v. Great Seats Inc., 84
USPQ2d 1235, 1239 (TTAB 2007) (“In a use-based application under Trademark Act
Section 1(a), 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.”); Trademark Rule 2.71(d), 37 CFR
§ 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.”).
Opposition No. 91228767
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“To acquire ownership of a trademark it is not enough to have invented the mark
first …; the party claiming ownership must have been the first to actually use the
mark in the sale of goods or services.” Sengoku Works Ltd. v. RMC Intern., Ltd., 96
F.3d 1217, 40 USPQ2d 1149, 1151 (9th Cir. 1996), as modified, 97 F.3d 1460 (9th Cir.
1996); see also Parham v. Pepsico, Inc., 927 F. Supp. 177, 40 USPQ2d 1060 (E.D. N.C.
1995), aff’d, 86 F.3d 1151 (4th Cir. 1996) (plaintiff had no trademark rights to assert
because she only had an idea for using the word “crystal” as a trademark and never
sold any product or service using that word as a mark); La Maur Inc. v. Int’l Pharm.
Corp., 199 USPQ 612 (TTAB 1978) (conception of mark and discussion with others
does not establish priority). “Thus, a … concept for a new trademark does not in itself
establish protectable trademark rights.” 2 J. THOMAS MCCARTHY, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 16.11 (5th ed. 2017).28
Opposer is identified as “act[ing] as Chief Creative Officer of the MPBA.”29 Mr.
Schumer, Opposer’s husband, is the owner of the MPBA.30 At least six teams,
including the Windy City Groove, played at an inaugural basketball tournament
event in Chicago on November 16, 2014, an event which was designed to recruit
players for all of the six teams.31 “The league began play in January 2015 ….”32
Evidently, at least two teams, The Chicago Force and The Windy City Groove,

28 Opposer’s brief at 5-6, 47 TTABVUE 9-10.
29 Second Schumer Decl. ¶ 2, 22 TTABVUE 68.
30 Id. at ¶ 4, 22 TTABVUE 68.
31 Id. at ¶ 4, 22 TTABVUE 74.
32 First Schumer Decl. ¶ 6(E), 22 TTABVUE 55.
Opposition No. 91228767
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participated in “the 2014/15 season” of the MPBA.33 On November 6, 2015, Applicant
informed Mr. Schumer of its withdrawal from the MPBA.34 There is no information
in the trial record about seasons after “the 2014/15 season” including what teams
participated, if any.
Opposer maintains that she is the owner of the mark. She alleged that “the mark
Windy City Groove was not created as work for hire and Opposer never transferred
ownership to the Applicant,”35 and argues that “Opposer (Thomas) designed the mark
WINDY CITY GROOVE to be licensed for use in the … [MPBA] with Thomas
retaining ownership of the mark,”36 and “[a]s the original author of this work, the
copyright vests with Joyce Thomas from the date of its fixed form and it has never
been transferred to another entity in whole or in part by any means of conveyance or
by operation of law.”37 Mr. Schumer’s testimony makes clear that the MPBA does not
claim ownership (“The MPBA never owned the Windy City Groove mark ….”).38
Opposer relies on inter alia the declaration of her husband to establish her
ownership claim. Mr. Schumer testified:
3) It is the MPBA business practice for team logos to be designed by
Joyce Thomas through her business Joyce Thomas Designs. Joyce
Thomas maintains ownership of each mark and licenses its usage to the
MPBA.

33 Sanders Decl. ¶ 16, 32 TTABVUE 136.
34 First Schumer Decl. ¶ 7, 22 TTABVUE 55.
35 Notice of Opposition ¶ 16, 1 TTABVUE 6.
36 Opposer’s Brief at 10, 38 TTABVUE 15.
37 Opposer’s Brief at 5, 38 TTABVUE 10-11.
38 Id., 22 TTABVUE 51.
Opposition No. 91228767
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(A) Joyce Thomas developed the mark Windy City Groove and
continues to own the copyright.

(B) Joyce Thomas never transferred the ownership of the Windy
City Groove mark in whole or in part by any means of
conveyance or by operation of law to the MPBA.

(C) Joyce Thomas was not employed by the MPBA to create the
mark.

(D) It was not a work made for hire. There was no written and signed
instrument between Joyce Thomas and the MPBA that the
design would be considered a work made for hire. No monies
were offered or exchanged for the creation of the mark.

(E) The MPBA never owned the Windy City Groove mark, and so
could never transfer the ownership of the Windy City Groove
mark in whole or in part by any means of conveyance or by
operation of law to the CBLC.

(F) The final fixed form of the Windy City Groove logo was first used
when it was uploaded to the MPBA website and Facebook page
on November 5, 2014.39

Opposer’s evidence supporting her case-in-chief does not indicate that Opposer
ever used the mark for any services. Opposer notably relies on Messrs. Hollaway’s
and Fata’s testimony that the mark was first publicly displayed on November 5, 2014
when Mr. Hollaway uploaded the mark to the www.theMPBA.com website40 and
when Mr. Fata placed the mark on the MPBA and ‘Windy City Groove Professional
Basketball” Facebook pages.41 Both Mr. Hollaway and Mr. Fata have positions with
the MPBA, were not employed by Opposer, and there is no evidence that they
uploaded the mark on Opposer’s behalf, or even at her instruction. In addition, it

39 First Schumer Decl. ¶ 3, 22 TTABVUE 51.
40 Hollaway Decl. ¶ 5, 31 TTABVUE 4.
41 Fata Decl. ¶ 10, 30 TTABVUE 6.
Opposition No. 91228767
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appears that it was not contemplated that Opposer would own the team bearing the
WINDY CITY GROOVE mark; Mr. Schumer testified that “[d]uring the months of
September and October 2014 conversations were ongoing about the Sanders entry
into the league with ownership of their existing team the FORCE and the possibility
of managing a second Chicago team to be owned and financed by the league.”42
We consider then whether Opposer ever licensed use of the mark to the MPBA or
to Applicant. Mr. Fata testified that “[i]t is the MPBA business practice for team logos
to be designed by Joyce Thomas through her business Joyce Thomas Designs with
Joyce Thomas maintaining ownership of the mark and licensing its usage to the
MPBA.”43 The record contains no signed agreements (such as licenses) pertaining to
the subject mark, or any other mark, demonstrating this business practice.44 There
is no evidence of any fees paid to Opposer by Applicant (or any other entity), including
for use of a mark. We find no basis for an implied license by Opposer to Applicant or
to the MPBA.
We also consider who controlled the nature and quality of the services provided
under the mark, if at all. As explained by Judge Nies in a concurring opinion in In re
Wella A.G., 787 F.2d 1549, 229 USPQ 274, 278 (Fed. Cir. 1986), “the one entity which
controls the nature and quality of the goods [or services] sold under the mark is the
owner,” (emphasis in original); see also Trademark Act §§ 5 and 45, 15 U.S.C. §§ 1055

42 Frist Schumer Decl. ¶ 5(A), 22 TTABVUE 52.
43 First Fata Decl. ¶ 11, 22 TTABVUE 47.
44 Mr. Schumer testified that “[t]he league began play in January 2015 with no executed
league agreement or signed contracts.” First Schumer Decl. 6(E), 22 TTABVUE 55.
Opposition No. 91228767
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and 1127. Opposer does not include any evidence regarding her efforts to maintain
the nature and quality of the services offered under the mark. She does include
evidence of the MPBA’s efforts though; Mr. Schumer testified:
2) From it’s [sic] inception, the MPBA has intended to control all of
the league’s team logos and intellectual property in order to insure
quality and continuity.

(A) Ownership of a team or an interest in a team was intended to
include a licensed agreement as to the policies regarding
intellectual property and other league guidelines.

(B) These policies were being advanced as the league formed to
insure continuity of the league identity and so team names and
logos would be static as the league developed.

(C) League policy is for a team to be charged a one-time license fee
when joining the league. Annual league fees are also charged for
administrative costs, marketing costs, and support services such
as television production, league meetings and events, and
assorted other items.45

Opposer does not identity any expenses she incurred in connection with the mark,
and the only evidence she submitted regarding expenses is Mr. Schumer’s limited
testimony regarding expenses covered by the MPBA for officiating fees, uniform fees,
“Play-by-Play/TV talent,” “TV/Streaming fees,” other “unreimbursed expenses” and
an unexplained “license fee,” presumably to the MPBA.46 To be clear, Opposer does
not state that any of these expenses were paid by or to Opposer.
In sum, Opposer argues that she is the true owner of the subject mark. In view of
the foregoing, however, we find that the evidence Opposer adduced at trial in her

45 First Schumer Decl. ¶ 2, 22 TTABVUE 50.
46 First Schumer Decl. ¶ 8(A), 22 TTABVUE 56.
Opposition No. 91228767
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case-in-chief fails to establish prima facie that Applicant is not the owner of the
applied-for mark. Opposer has thus not met her burden of proof and Opposer’s claim
is dismissed.
Decision: Opposer’s non-ownership claim is dismissed.