Katz Communications, Inc.v.Katz Marketing Solutions LLC

Trademark Trial and Appeal Board

Feb 21, 2013

No. 91191178 (T.T.A.B. Feb. 21, 2013)

Hearing: Mailed:
April 25, 2012 February 21, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Katz Communications, Inc.

v.

Katz Marketing Solutions LLC
_____

Opposition No. 91191178
to application Serial No. 77649608
filed on January 14, 2009
_____

Pamela B. Huff, Bart W. Huffman and Marissa Helm of Cox
Smith Matthews Incorporated for Katz Communications, Inc.

Roger A. Gilcrest of Schottenstein Zox & Dunn Co., LPA for
Katz Marketing Solutions LLC.
______

Before Seeherman, Bucher and Greenbaum, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Katz Communications, Inc. has opposed the application
of Katz Marketing Solutions LLC to register the mark:
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91191178
2

for “business marketing consulting services.” Applicant
seeks registration pursuant to Section 2(f) of the
Trademark Act.1
The grounds for opposition are likelihood of confusion
and fraud. Specifically, opposer has alleged that since
long prior to applicant’s claimed date of first use,
opposer has established customer recognition of the term
KATZ as the common thread in a family of registered marks
used in connection with independent media sales
representation services in the fields of radio and
television broadcasting and consulting services in
connection therewith; that opposer has used and obtained
federal registrations for KATZ, KATZ RADIO, KATZ
TELEVISION, KATZ. THE BEST., KATZ COMMUNICATIONS, and KATZ
HISPANIC MEDIA;2 and that applicant’s mark so resembles

1 Application Serial No. 77649608, filed January 14, 2009, and
asserting first use on May 27, 2004 and first use in commerce on
June 1, 2004.
2 In the notice of opposition opposer pleaded ownership of
Registration No. 2658151 for KATZ HISPANIC MEDIA. However, this
registration, as opposer acknowledged at footnote 8 of its main
brief, was cancelled pursuant to Section 8 shortly before the
filing of the notice of opposition. Opposer stated in its brief
that it had obtained a new registration, No. 3825925, for KATZ
HISPANIC MEDIA for the same services as those in Registration No.
2658151. Registration No. 3825925 issued on July 27, 2010,
during the pendency of this proceeding. Opposer neither pleaded
nor submitted the then-pending application, nor did it submit a
Opposition No. 91191178
3
opposer’s KATZ family of marks that, when used in
connection with applicant’s services, there is a likelihood
of confusion. Further, with respect to the fraud claim,
opposer has alleged that, at the time applicant’s chief
executive officer signed the oath in its application
swearing that no other entity had the right to use the mark
in commerce, opposer had already contacted this person,
giving applicant actual notice of opposer’s rights in the
KATZ family of marks. Opposer therefore alleges that
applicant’s signature and submission of the oath was a
fraud on the Patent and Trademark Office.3

copy of the registration when it issued, which was coincidentally
the same date that opposer filed its notice of reliance on its
pleaded registrations. Normally in these circumstances we would
not treat the newly issued registration for KATZ HISPANIC MEDIA
of record, nor deem the pleadings amended to assert this later
registration. However, applicant made the file of this
registration of record through its notice of reliance filed
October 25, 2010, and in its brief lists this registration as one
of opposer’s six registrations. We therefore treat the pleading
amended to assert this registration.
3 In its brief on the case opposer asserts, for the first time,
that there were “prosecution irregularities”, p. 19, apparently
because the examining attorney did not cite opposer’s
registrations as a bar to the registration of applicant’s mark,
and because the examining attorney did not require a disclaimer
of MARKETING SOLUTIONS, despite the fact that the examining
attorney, in the first Office action, had stated that this term
was generic for applicant’s services. We point out that these
are ex parte issues, and do not form grounds for opposition. Cf.
Century 21 Real Estate Corp. v. Century Life of America, 10
USPQ2d 2034 (TTAB 1989), rev’d on other grounds, Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992) (Board stated, with respect to opposer’s
claim that specimens were insufficient, that it was not the
Board’s function to review the work of examining attorney). To
the extent that opposer believes that MARKETING SOLUTIONS is a
Opposition No. 91191178
4
In its answer applicant admitted that opposer obtained
the federal registrations pleaded in the notice of
opposition, that KATZ is the surname of one of applicant’s
principals or owners, and that opposer’s attorney sent a
letter to applicant dated January 12, 2009 mentioning
various trademarks allegedly owned by opposer. Applicant
otherwise denied the salient allegations in the notice of
opposition.
We sustain the opposition on the ground of likelihood
of confusion and dismiss it on the ground of fraud.
Objections
With its trial brief opposer submitted a thirteen-page
motion to strike a large number of applicant’s documentary
submissions and testimony related to them, as well as
documents submitted by notice of reliance. Many of
opposer’s objections are that the materials were not
provided in discovery. As a general comment, there is no
requirement that an adverse party provide in discovery any
and all documents on which it intends to rely, it need
produce only those documents that are validly part of
initial disclosures, pre-trial disclosures or that have
been requested pursuant to a valid discovery request; thus,

generic term that is not registrable absent a disclaimer, opposer
never pleaded that as a ground, and therefore we give it no
consideration.
Opposition No. 91191178
5
a party is not precluded from making evidence of record
simply because it was not provided to the adverse party
during discovery.
The first group of exhibits to which opposer objects
is applicant’s exhibits 1-5, introduced during the cross-
examination of opposer’s witnesses, and consisting of the
websites of third parties. Opposer claims that these
exhibits should have been produced in response “to at least
one document request or interrogatory propounded by
Opposer.” Motion to strike, p. 3. Opposer identifies the
relevant document production request as Request No. 11, for
“All documents … concerning, constituting or related to any
formal or informal search, opinion, or recommendation
concerning the right of [Applicant] to use KATZ MARKETING
SOLUTIONS or the registrability of KATZ MARKETING
SOLUTIONS.” Id. We find that a reasonable interpretation
of this request was that opposer was seeking search
reports/results that were obtained in connection with
applicant’s adoption of its mark. The third-party website
evidence would not be responsive to this request and,
indeed, based on the copyright dates appearing on some of
Opposition No. 91191178
6
the website pages, they had not been created at the time
applicant adopted or applied to register its mark.4
Moreover, the various objections to these exhibits--
for example, they were not described in applicant’s initial
disclosures, they are hearsay, and they are not
authenticated--are academic in view of the fact that
opposer itself wrote cease and desist letters to the
companies named in the exhibits. These letters state that
the third-party users “are conducting business under [the
particular mark] as evinced by your website [URL given],”
and that “[y]our use of [the mark] in association with your
own marketing and consulting services will cause customer
confusion….” Applicant’s ex. K, submitted with deposition
of Tammy Katz. We treat opposer’s sending these cease and
desist letters as an admission by opposer that the websites
are genuine and that the various third parties are
conducting business under their respective marks. However,
we do not accept the exhibits as evidence of the truth of
the statements made in the websites, such as the
particulars of the third-party businesses and activities.

4 Opposer also points to its Interrogatory No. 15, but this
interrogatory did not require the identification of any third-
party use, nor did opposer require, as part of its document
production request, that applicant provide copies of documents
that related to opposer’s interrogatories or applicant’s
responses thereto.

Opposition No. 91191178
7
The next group of objections is directed to certain
exhibits introduced during the deposition of applicant’s
witness Tammy Katz. First, opposer has made general
comments objecting to the numbering of these exhibits.
Apparently opposer believes that these documents should
have shown Bates stamp numbers so that opposer could easily
determine whether or not the exhibits had previously been
produced during discovery. However, there is no Board
requirement to this effect. It also appears that opposer
considers the exhibits improperly numbered, either because
applicant had previously numbered its exhibits with the
letter “A” during the testimony deposition of its witness
Stacy Katz, and also started numbering the exhibits for the
deposition of Tammy Katz with the letter “A,” or because
applicant had used numbers for the exhibits it identified
during the cross-examination of opposer’s witnesses, and
then switched to letters to identify the exhibits during
the testimony depositions of its own witnesses. If either
of these points is in fact the basis for opposer’s
objection, we must say that we think it ultimately is far
more wasteful of the Board’s time to have to consider the
objection than any technical problem with applicant’s
numbering of its exhibits might have caused. First,
Trademark Rule 2.123(g) does not specifically state that
Opposition No. 91191178
8
exhibits cannot be numbered starting with (1) or (A) for
each witness, rather than having the exhibits for all
witnesses be consecutively numbered. The purpose of the
rule is to make the exhibits easy to locate, without the
Board panel of judges having to laboriously fish through
pages and pages of randomly assigned numbers as we review
the testimony depositions. Clearly that was not the
problem in this case. Nor did the numbering present an
actual problem for opposer’s attorney; in fact, during the
testimony of Stacy Katz, when applicant’s attorney was
trying to understand why opposer’s attorney had a problem
with the numbering so that he could address the objection,
opposer’s attorney basically said that the reason she was
raising the objection was just to be able to preserve it
for final hearing. Stacy Katz dep., p. 12-13.
As for the substantive objections, opposer objects to
exhibits E, F, G, H, I, J, Q and R because they were not
produced in discovery, and are hearsay, and, in a footnote,
opposer states that “a number of these exhibits may also be
struck for lack of foundation.” Motion, p. 7. As we have
already discussed, documents do not have to be produced in
discovery unless there is a document production request for
such documents. Further, it does not appear that these
exhibits had been obtained by applicant during the
Opposition No. 91191178
9
discovery period. Exhibit E is a search summary of company
names, bearing a print date of July 16, 2010, after
opposer’s testimony period had already begun. The
remaining exhibits are pages from third-party websites that
show on their face KATZ formative names or marks. Exhibits
F, G, H, I and J are websites of companies that were the
subject of cease and desist letters written by opposer on
July 21, 2010; clearly there was no prejudice to opposer by
the submission of these exhibits, since opposer was aware
of the websites and companies months prior to the exhibits
being introduced at Tammy Katz’s deposition. We also note
that, as recounted in the Board’s September 10, 2010 order,
applicant was not aware of these third parties during the
discovery period, that “applicant first became aware of the
existence of the involved third parties as early as the
beginning of July 2010 which was the beginning of opposer’s
testimony period.” p. 4. As for exhibits Q and R, they
are a collection of pages from third-party websites. We
will not burden this opinion with a discussion of each web
page, but suffice it to say that we are satisfied that the
documents were not required to be produced to opposer
during discovery, and that Tammy Katz’s testimony was
sufficient to authenticate them. Also, opposer should note
that the requirements discussed in Safer Inc. v. OMS
Opposition No. 91191178
10
Investments Inc., 94 USPQ2d 1031 (TTAB 2010), for
submitting Internet printouts by notice of reliance are not
applicable to making such documents of record through their
introduction by the testimony of a witness.
Although we deny opposer’s motion to strike the
exhibits, applicant cannot rely on these exhibits to prove
the truth of the statements contained in them, as that
would violate the proscription against introduction of
hearsay. Accordingly, we treat the exhibits as showing
only that these web pages are available on the Internet
and, insofar as opposer has written cease and desist
letters to certain of the third parties, we treat the
statements made by opposer about the third parties as
admissions, as indicated supra.
Opposer has objected to exhibits A and A2 to Tammy
Katz’s deposition as improperly numbered, not produced
during discovery, hearsay and incomplete because they are
only portions of an entire work. We will not again discuss
the numbering and discovery objections, but say only that
they are overruled. The Board considers the single page of
a textbook (Exhibit A) and the slides from a PowerPoint
presentation (Exhibit A-2) as acceptable; in fact, the
Board frowns on the submission of extraneous material as
Opposition No. 91191178
11
needlessly adding to the bulk of the record.5 Applicant
stated that it had supplied the materials that were
submitted as these exhibits during discovery, and opposer
did not dispute this in its reply brief. Therefore, to the
extent that opposer believed that other pages in these
materials contradicted what was submitted, opposer could
have made them of record during its rebuttal testimony
period. As for the hearsay objection, applicant states
that the exhibits served only as “demonstrative exhibits to
assist in the organization and understanding of Ms.
Katz[’s] testimony.” Applicant’s brief in opp., unnumbered
p. 8. We therefore regard these materials as not being
used to prove the truth of the statements made therein, but
as reflecting only the opinion of the authors.
Finally, opposer has moved to strike the third-party
registration and application materials and third-party
website materials submitted by applicant under a notice of
reliance. In reviewing the objections, we note that
opposer has identified the documents (App. N.R. at 3-9 &
Docs 7-24; App. N.R. 109-18 and Docs. 25-45) submitted with
the notice of reliance filed by applicant on May 3, 2011,

5 We also note that during the testimony of opposer’s witness
James Beloyianis opposer introduced exhibit 14, which Mr.
Beloyianis stated he created by pulling pages out of larger
marketing presentations. p. 52.

Opposition No. 91191178
12
which notice of reliance was the subject of opposer’s
motion to strike filed on May 10, 2011. The Board ruled on
that motion on May 26, 2011, ordering that “applicant’s
May 3, 2011 notice of reliance will be given no
consideration.” p. 6. Since that notice of reliance does
not form part of the record of this proceeding, opposer’s
motion to strike these materials is deemed moot.6
Accordingly, opposer’s motion to strike is denied,
although, as noted, the probative value of some of the
exhibits is limited.
We must also comment on the exhibits submitted by
opposer. Opposer submitted numerous multi-page
confidential exhibits. In submitting redacted copies of
these exhibits, opposer submitted a separate page for each
page in the exhibit, with the word REDACTED on each page.
As a result, the record includes literally hundreds of
blank pages with just the word REDACTED on each. If an
entire exhibit is confidential, it is necessary only to
submit one page giving the exhibit number and the notation
that the exhibit is confidential.

6 To the extent that any of the third-party registrations in the
May 3, 2011 notice of reliance are also part of the October 25,
2010 notice of reliance, we have, for the reasons discussed
infra, considered those registrations.

Opposition No. 91191178
13
Moreover, the record submitted by opposer is
extraordinarily and unnecessarily large. For example,
opposer’s exhibit 13 was introduced during the testimony of
Robert Damon, the chief financial officer of opposer’s Katz
Media Group. It consists of more than 600 pages. On
direct testimony, and before applicant’s counsel interposed
an objection, the totality of Mr. Damon’s testimony about
this exhibit was:
…this is a printout of the pages of our Katz
website as well as printouts of documents that
are attached or linked to the website as either,
you know, pieces that were prepared by us,
research pieces or informational pieces as well
as I believe links to industry, some industry-
related websites and information contained on
those websites.

Test, p. 38. As a result of applicant’s counsel’s
questioning, Mr. Damon went through the documents and
further testified that five of the pages were links from
third-party sites, and that “the rest of the pages would be
Katz’ website and attachments to Katz’ website and Katz’
documents.” p. 39. Mr. Damon did not highlight any
information in these 600-plus pages of the exhibit that was
relevant to the opposition.
Even more egregious is opposer’s exhibit 31, which was
introduced during the testimony of Amanda Austin, a
corporate communications assistant at petitioner. It
Opposition No. 91191178
14
consists of 3039 pages. The testimony about this exhibit
was essentially Ms. Austin responding “yes” to petitioner’s
counsel’s questions about the contents, e.g.,
Q. Do these records also contain broadcast
calendars used by Katz?

A. Yes.

Q. Do they also contain various PowerPoint
presentations that have been used by Katz over
the years?

A. Yes.

Q. Do they also contain some archived corporate
documents –

A. Yes.

Q. – which have some historical value, but are
not maintained by you for corporate purposes?

A. Yes.

Q. Do they also contain some instances of the
Katz PluggedIn newsletter?

A. Yes.
...
Q. Are there also some instances of printouts
from historical websites of Katz?

A. Yes.

Q. In fact, even a few letters to customers?

A. Yes.

Q. Are some – do some of the records include
advertisements and trade publications through the
years?

A. Yes, those are in there.

Opposition No. 91191178
15
Austin, test, 7-9. No attempt was made to highlight any
particular item or business record within these 3000-plus
pages. There is not even testimony that provides the Bates
numbers indicating the types of documents mentioned by Ms.
Austin. And many of the pages of news articles do not even
mention KATZ or any variation of KATZ, since the clipping
service obviously provided articles that contained a
mention of any of the companies that were associated with
opposer, including Clear Channel and Continental TV.
The Board has previously criticized the practice of
“dumping” evidence into the record with the idea that the
Board will sort through the evidence and possibly find
something that will support the submitting party’s
position. See In re Thermo LabSystems Inc., 85 USPQ2d
1285, 1290 n. 7 (TTAB 2007)(“it is unfair to the examining
attorney and the Board to ‘dump’ hundreds and hundreds of
pages of information and expect the Board and the examining
attorney, with their limited resources, to ferret through
such pages ….”) Although Thermo LabSystems involved an
appeal, the comments about the Board’s limited resources
apply to an inter partes proceeding as well. See American
Speech-Language-Hearing Assn. v. National Hearing Aid
Society, 224 USPQ 798, 800 (TTAB 1984) (“The record that we
now have in this case is quite unwieldly [sic] and has been
Opposition No. 91191178
16
extremely damaging to the Board’s resources in terms of
time and manpower.”) We can think of no clearer example of
a “dump” of evidence than Exhibit 31.
The Record
In view of our rulings above, the record includes the
pleadings; the file of the opposed application; the
testimony, with exhibits, of opposer’s witnesses Robert
Damon, James Beloyianis, Chickie Bucco, Amanda Austin,
Robert McCurdy and Bonnie Press (all of whom are officers
or employees of one of opposer’s companies or divisions),
and of applicant’s witnesses Tammy Katz, applicant’s CEO,
and Stacy Katz, a third-party witness whose business is
called Katz Media Consulting.7 In addition, opposer has
made of record, under notice of reliance, status and title
copies of its five pleaded registrations, details of which
are provided infra. Applicant has made of record, under
notice of reliance, the portions of the files of opposer’s
pleaded registrations, as well as the file of opposer’s
Registration No. 3825925 for KATZ HISPANIC MEDIA,8 the files
of certain third-party registrations for marks that include

7 We note that opposer objected to Stacy Katz’s testimony in its
entirety at the beginning of her deposition, as well as making
specific objections during the course of her deposition.
However, opposer did not maintain the objections in its brief or
the 13 page motion to strike filed with its brief, and therefore
we deem the objections to her testimony waived.
8 See footnote 2.
Opposition No. 91191178
17
the name KATZ, and certain third-party registrations for
marks that include the name KATZ. (Notice of reliance filed
October 25, 2010, and supplemented on May 11, 2011).
The opposition has been fully briefed,9 and an oral
hearing was held at which both parties appeared.
The Parties
Opposer, or more accurately, the company that was
opposer’s original predecessor-in-interest, was founded in
1888 by Emanuel Katz, under the name E. Katz Advertising
Agency. At that time, it represented various newspapers,
selling advertising space in those papers. It expanded its
advertising representation to radio stations in the 1920s,
and to television stations in 1949, and stopped

9 In its reply brief opposer asked us to take judicial notice of
U.S. Census Bureau data from Census 2000 regarding frequently
occurring surnames, in an attempt to show that Katz is not a very
common surname. Opposer also listed various registrations for
these other surnames, which are not of record. We decline to
take judicial notice of any of this material. First, the Board
does not take judicial notice of records residing in the U.S.
Patent and Trademark Office. Second, although opposer provided
the URL for where the census information could be found, opposer
did not provide the particular web pages so that we could
ascertain the accuracy of the information that was merely written
in opposer’s brief. In general, when parties wish the Board to
take judicial notice of information, they supply a copy of the
reference material that they want the Board to consider. In this
regard, because opposer did not provide the full information
regarding KATZ from the information on the Census site, but
merely listed the statistical ranking, applicant had no
opportunity to reply to this point, or put the information into
context, such as by pointing out the number of people with the
KATZ surname in the 2000 census, rather than just the ranking of
the surname. Finally, even if we were to take judicial notice of
this information, it would not affect our decision herein.

Opposition No. 91191178
18
representing newspapers at some point well in the past.
Opposer was purchased by Clear Channel in 2000. It
currently represents 4000 radio stations and 500 television
stations. Its revenue comes from commissions from the sale
of advertising time on the radio and television stations it
represents. That is, it sells advertising time to
advertisers, usually dealing with the advertiser’s
advertising agencies, and the stations pay it a commission.
Opposer has gone through a variety of corporate
organizations, with divisions becoming subsidiaries, or
subsidiaries or divisions being divided into further
divisions. It has used a variety of names for these
companies or divisions throughout the years, most of which
have included the element KATZ.
Applicant is a sole proprietorship, and Tammy Katz is
its CEO. It gives guidance on the entirety of marketing—
product, price, distribution and promotion.
Standing
In view of opposer’s registrations for marks
containing the name KATZ, as well as the testimony
regarding the use of KATZ in various company names and
marks, opposer has established its standing. Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir.
Opposition No. 91191178
19
2000); Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185 (CCPA 1982).
Priority
Federal Registrations
Of record are opposer’s registrations for KATZ,10 KATZ.
THE BEST.,11 KATZ COMUNICATIONS12 and KATZ HISPANIC MEDIA,13
all for “independent media sales representation services in
the fields of radio and television broadcasting and
consulting services in connection therewith”; for KATZ
RADIO for “independent media sales representation services
in the field of radio broadcasting and consulting services
in connection therewith”14; and for KATZ TELEVISION for
“independent media sales representation services in the
field of television broadcasting and consulting services in
connection therewith.”15 Accordingly, priority is not in
issue with respect to these marks for their respective

10 Registration No. 1786989, issued August 10, 1993, pursuant to
Section 2(f) of the Act; Section 8 affidavit accepted; Section 15
affidavit received; renewed.
11 Registration No. 1788403, issued August 17, 1993, with BEST
disclaimed; Section 8 affidavit accepted; Section 15 affidavit
received; renewed.
12 Registration No. 1801030, issued October 26, 1993 pursuant to
Section 2(f) of the Act; COMMUNICATIONS disclaimed; Section 8
affidavit accepted; Section 15 affidavit received; renewed.
13 Registration No. 3825925, issued July 27, 2010, with HISPANIC
MEDIA disclaimed and under Section 2(f) with respect to KATZ.
14 Registration No. 1788400, issued August 17, 1993, pursuant to
Section 2(f) of the Act; RADIO disclaimed; Section 15 affidavit
accepted; Section 15 affidavit received; renewed.
15 Registration No. 1788401, issued August 17, 1993, pursuant to
Section 2(f) of the Act; TELEVISION disclaimed; Section 8
affidavit accepted; renewed.
Opposition No. 91191178
20
services. King Candy Company v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).16
Common Law Marks
Opposer also claims common law rights in various KATZ
formative marks. However, we find opposer’s witnesses’
testimony about common law marks to be too vague for us to
ascertain when, or for what services, opposer used a
particular mark, or whether the use of a particular mark
has been continuous. Since the founding of opposer’s
predecessor in 1888, the company has undergone a series of
name changes and corporate reorganizations and the creation
and merger of divisions, and the adoption of trademarks and
trade names and division names and company names, none of
which is clearly spelled out in the testimony in a way that
we can make a finding of fact as to the date of use and
continuing use of particular trademarks for particular
services, and a finding of law as to opposer’s common law
rights in any of its asserted marks.
Opposer’s Claimed Family of Marks
Opposer has also asserted that it has a family of KATZ
marks. We discuss this claim in the context of priority

16 Opposer also mentioned, for the first time in its brief, that
it owned an application for another KATZ formative mark. p. 7.
However, the application was neither pleaded nor tried, and there
is no evidence to support that such a registration even exists.
We have given this supposed application no consideration.
Opposition No. 91191178
21
because opposer began using the trade name/mark KATZ
MARKETING SOLUTIONS, the same mark that applicant seeks to
register, after applicant began using it. However, if
opposer can show that it had established a family of marks
prior to applicant’s first use, and that KATZ MARKETING
SOLUTIONS is part of that family, then opposer would have
priority with respect to that name/mark.
We note that opposer has worded its claim of a family
in a variety of ways. In the notice of opposition, opposer
claimed a “family of federally registered marks”, and
listed each of its pleaded registrations as constituting
that family. ¶ 2. In its brief it states it has a “family
of registered (‘KATZ Registrations’) and common-law
trademarks (‘KATZ Common Law Marks’),” p. 1, later stating
that the KATZ registrations are “within a larger family of
KATZ Common Law Marks.” p. 7.
In order to establish a family of marks, it is not
sufficient to show that one has registered or used several
marks having a common characteristic:
A family of marks is a group of marks having a
recognizable common characteristic, wherein the
marks are composed and used in such a way that
the public associates not only the individual
marks, but the common characteristic of the
family,, with the trademark owner. Simply using
a series of similar marks does not of itself
establish the existence of a family. There must
be a recognition among the purchasing public that
Opposition No. 91191178
22
the common characteristic is indicative of a
common origin of the goods.

J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460,
18 USPQ2d 1889, 1891 (Fed. Cir. 1991). “Recognition of the
family is achieved when the pattern of usage of the common
element is sufficient to be indicative of the origin of the
family. It is thus necessary to consider the use,
advertisement, and distinctiveness of the marks….” Id.
The burden is on opposer to prove that its marks have
been promoted in such a way that purchasers would recognize
that KATZ is a surname of a family of marks. Although
opposer has made some general statements that it “has used
its family of KATZ marks on advertisements, letterhead, and
other promotional materials associated with its services,
on the Internet, and in other ways customary in the trade,”
brief, p. 9, opposer has not pointed to any specific
evidence in which several KATZ marks have been used or
promoted together that would result in the recognition of a
family. As previously noted, opposer has “dumped” as
Exhibit 31 over 3000 pages of documents from its files,
without providing any testimony as to which documents show
that it has promoted a family of marks. Even in its brief
opposer has not identified specific documents that it
Opposition No. 91191178
23
believes demonstrate the promotion of a family of KATZ
marks.
Because opposer could not take the trouble to identify
particular advertisements or other promotional materials
that it asserts shows it has established a family of marks,
we will not discuss in detail why this evidence is
insufficient. We do point out that many of the documents
are internal pieces and there is no indication that they
were distributed outside of the company or, if so, to what
extent they reached potential consumers. Hundreds of pages
that were submitted are press releases relating to
personnel moves, and it is not clear that these press
releases were ever picked up in publications. Other
personnel changes are the subject of published articles,
but there is mention of only a single company or division
name.
Many of the articles were apparently clipped merely
because they contained a mention of a Katz company, even if
it is a company that does not have “Katz” in its name, or
because they contain a mention of one of opposer’s
employees, even if there was no mention of “Katz.” Most of
the articles refer to opposer or one of its divisions only
in passing, such that the reference to a single Katz
company name would not make an impression on the reader,
Opposition No. 91191178
24
e.g., a TVIndustry.com February 3, 2000 article on Building
the Local Station Brand includes a quote by “Bill Carroll,
VP and director of programming at media rep firm Katz
Television,” Exhibit 31, Bates # KATZ000310-11.17 To the
extent that there are articles that include a reference to
a Katz trade name, it is only one trade name, so obviously
they do not show a family of marks.
Of the very few instances in which more than one KATZ
name or mark appears, it is difficult to tell what the
material is, or how it was distributed or the number of
people it might have reached. Again, when Ms. Austin
identified Exhibit 31, she gave no testimony about any
particular pages in the exhibit. For example, at Bates
# KATZ002387 there is a page on which there is a square in
the middle, and in the square the phrase “KATZ
COMMUNICATIONS INC” appears at the top, with a list of
companies or divisions beneath, i.e., Banner Radio Christal
Radio, Eastman Radio, Katz Radio, Katz Hispanic Radio, Katz
American Television, Katz Continental Television, Katz
Independent Television,” and a “K” logo at the bottom, with

17 The number of articles that were apparently supplied by a
clipping service and form part of Exhibit 31 remind us of what
the Federal Circuit said in In re Societe Generale des Eaux
Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 1451 (Fed.
Cir. 1987): It is indeed remarkable to see the thoroughness with
which NEXIS can regurgitate a placename casually mentioned in the
news.

Opposition No. 91191178
25
the slogan “Katz. The best” below the logo. The preceding
page is a copy of what appears to be the cover of a
document with the words “Directory of New York State Radio
and Television Stations 1991-1992” at the top, and in large
letters over the bottom half of the document, “The New York
State Broadcasters Association, Inc.” To the extent that
KATZ002387 is an advertisement in the Directory (and we
have no information to this effect other than the pages
themselves), there is no information about the distribution
of this document. Further, we cannot conclude that anyone
viewing it would understand that opposer was promoting a
KATZ family of marks. The names on the list would most
likely be understood as company names, not marks, and
because of the presence of so many non-Katz names, it would
not make an impression on purchasers that KATZ is the
“surname” of a family of trademarks.
As for opposer’s Exhibit 13, as we discussed above,
the 600 pages are a combination of the web pages on
opposer’s website as well as articles that are linked to
the website, and third-parties’ materials that are linked
to the website. The only term that appears consistently as
a trademark in the webpages is KATZ MEDIA GROUP. Other
listings of Katz names are generally not as trademarks, but
as company or division names, e.g., “Chad Brown, President,
Opposition No. 91191178
26
Katz Radio.” To the extent that more than one of opposer’s
marks appears on the website (and opposer has not
identified any pages on which specific marks appear), we do
not regard the presence of KATZ-formative marks at
different points in a 600-page exhibit as establishing a
family of marks. It is extremely unlikely that purchasers
or prospective purchasers would review 600 webpages, let
alone draw any conclusion from the fact that individual
KATZ-formative marks appear on separate web pages scattered
throughout the website that KATZ has been promoted as the
basis of a family of marks.
In short, opposer has failed to meet its burden of
showing that it has established a family of marks based on
the element “KATZ,” and therefore it cannot rely on such a
family to establish priority for the mark KATZ MARKETING
SOLUTIONS, or as a basis for its likelihood of confusion
claim.
Likelihood of Confusion
In view of our findings above that opposer has failed
to establish a family of marks based on the element KATZ,
and that opposer has failed to show that it has established
common law rights in any particular KATZ-formative mark for
particular services, we confine our likelihood of analysis
to opposer’s registered marks. We further focus our
Opposition No. 91191178
27
discussion on opposer’s registration for KATZ for
“independent media sales representation services in the
fields of radio and television broadcasting and consulting
services in connection therewith,” as in that registration
appears to be the closest to applicant’s mark as there are
no terms modifying the name KATZ, thereby adding a
potentially distinguishing element, and the identification
of services is as broad as or broader than those in the
other registrations.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003).
We turn first to the du Pont factor of “the similarity
or dissimilarity and nature of the goods or services as
described in an application or registration or in
connection with which a prior mark is in use.” 177 USPQ at
567. As noted, opposer’s services are identified in its
registration as “independent media sales representation
services in the fields of radio and television broadcasting
and consulting services in connection therewith.”
Opposition No. 91191178
28
Applicant makes much of the fact that opposer obtains its
revenue by commissions paid to it by the television and
radio stations that it represents, and contends that
opposer’s consulting services are limited to services it
offers the radio and television stations. It is true that
one of opposer’s classes of customers is the radio or
television station or broadcaster for which it sells
advertising space. However, the companies that place the
ads, and the advertising agencies that place commercials on
behalf of these companies, must also be considered as
consumers of opposer’s services. Although the primary
purpose of opposer’s consulting services is to sell more ad
time on the stations that it represents, these services
also benefit the advertisers and advertising agencies. As
Mr. Beloyianis, the president of Katz Television Group,
testified, the consultation services include working with
advertisers “as to how they should spread these media
dollars.” p. 22-23. Ms. Bucco, the president of Katz
Direct Marketing, testified that in addition to providing
consulting services to radio and television stations to
help them set pricing and help them with programming
decisions, p. 28, her division also advises advertisers
“where something should run, maybe the time of day, maybe
the time of the month ….” p. 32. We view applicant’s
Opposition No. 91191178
29
interpretation of opposer’s services to be too narrow; the
identification of media representation sales services in
the registration includes services rendered to advertisers,
even though the advertisers do not pay opposer directly for
such services, and we find that the consulting services in
connection with the independent media representation
includes advising advertisers as to how their television
and radio advertising dollars should be spent.
Applicant’s services are identified as “business
marketing consulting services.” Tammy Katz described
marketing consulting services as an “array of things”:
In general, it is experts in marketing either
holistically marketing in brand management, like
my company, or specialists in aspects of
marketing who charge for their expertise to their
clients. We typically give guidance on market--
holistic marketing issues, which tends to include
the entirety of marketing, which are all the
cross-functional aspects of executing the
marketing strategy within the company and all
aspects of the marketing mix, being product,
price, distribution, and promotion.

Tammy Katz, p. 8. Applicant states on its website that
its marketing solutions include “Advertising and marketing
communication programs.” Tammy Katz, exhibit B. Opposer’s
witness Bonnie Press described advertising as a subset of
marketing, that “advertising is part of the marketing
equation,” and that in her 34 years of experience,
Opposition No. 91191178
30
advertising within a customer’s organization would fall
within the marketing group. p. 29.
Marketing consulting services are, thus, very broad,
and include product promotion. The identified services
must therefore be interpreted as including advising
companies having a product or service to market about
advertising on television and radio. Accordingly, as
identified, applicant’s services and the services
identified in opposer’s registration overlap. In saying
this, we acknowledge that applicant does not actually
advise or consult on media. “I do not handle media.”
Tammy Katz, p. 21. “[M]ost all of my clients do not
purchase media, to my knowledge.” Tammy Katz, p. 28.
However, it is well settled that in a proceeding such as
this, the question of likelihood of confusion must be
determined based on an analysis of the mark as applied to
the goods and/or services recited in applicant’s
application vis-à-vis the goods and/or services recited in
an opposer’s registration, rather than what the evidence
shows the goods and/or services to be. Canadian Imperial
Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490,
1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
Accordingly, because applicant’s services are broadly
described in its identification, and because this broad
Opposition No. 91191178
31
identification of services can include consulting on the
purchase of television and radio advertising spots, the
identified services must be deemed to overlap with the
consulting services in connection with the radio and
television representation identified in opposer’s
registration.
As for the du Pont factor of “the similarity or
dissimilarity of established, likely-to-continue trade
channels,” opposer has submitted testimony that, in
addition to advertising agencies, it works directly with
the advertisers. See, for example, Press, p. 10.
Applicant works directly with the companies that market a
product. There can also be overlap in the personnel within
a company that encounter the parties’ services. With
respect to its consulting services, opposer’s witness
testified that opposer can deal with an advertiser’s senior
media strategist, brand manager, marketing and advertising
director, director of marketing or chief marketing officer.
For smaller companies, it can even be the owner of the
company. Beloyianis, pp. 29-30. Applicant provides
services directly to the chief executive officer or second-
most senior person in a company. Tammy Katz, p. 17.
Although applicant makes the point that the companies it
works with do not purchase media, and therefore would not
Opposition No. 91191178
32
be the same companies that would use opposer’s particular
type of consulting services, there is nothing in
applicant’s identification that would restrict it from
offering its services to any companies, including companies
that would have the need to buy television and radio
advertising, and obtain consulting services in connection
with such purchases. Again, we note applicant’s argument
that the purchasers of opposer’s services are the radio and
television stations that opposer represents, because
opposer is paid by them, but we are not persuaded by this
argument.
We turn next to consider the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
As part of this analysis, we also consider the strength of
opposer’s mark, the number and nature of similar marks in
use on similar goods or services, and the conditions under
which and buyers to whom sales are made.
First, we note that opposer has not claimed that its
mark is famous, as that term has been interpreted in the
case law. See, for example, Kenner Parker Toys Inc. v.
Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir. 1992). Applicant has submitted evidence of
third-party registrations and third-party use to show that
Opposition No. 91191178
33
opposer’s mark is not entitled to a broad scope of
protection. With respect to the third-party registrations,
such registrations are not evidence of the use of the marks
shown therein. However, they may be used in the same
manner as dictionary definitions, to show that a term has a
particular significance. Interstate Brands Corp. v.
Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 153
(CCPA 1978); The Conde Nast Publications, Inc. v. Miss
Quality, Inc., 507 F.2d 1404, 184 USPQ 422, 425 (CCPA
1975). In this case, they show only what is already
uncontroverted by the evidence submitted by opposer and
applicant, namely, that KATZ is a surname and people with
this surname have adopted and used their name in their
businesses. In this connection, we note the testimony that
opposer’s predecessor, in effect the founder of the company
that eventually became opposer, was named Emanuel Katz, and
applicant is owned by Tammy Greenberg Katz. In addition,
opposer’s registration issued, and applicant has sought
registration, pursuant to the provisions of Section 2(f),
such that both parties have admitted the surname
significance of KATZ.18

18 Opposer has objected that many of the third-party
registrations are for services in different fields, e.g., KATZ’S
DELICATESSEN for restaurant services, WELSH & KATZ, LTD. For
legal services. Although the probative value of such
registrations might be less if the registrations were used to
Opposition No. 91191178
34
Although opposer’s mark consists of KATZ per se, and
“Katz” is a surname, a surname can become a strong mark
through use. In this case, we have relatively little
evidence about opposer’s use of KATZ per se; there is no
specific testimony as to how long this particular mark has
been used,19 or sales made under this mark, or advertising
expenditures. Opposer and its witnesses have in general
referred to “KATZ marks” without specifying any particular
mark, including the mark KATZ. As a result, opposer has
failed to prove that KATZ per se is a strong mark.
We acknowledge that each year opposer distributes
thousands of broadcast calendars bearing the name KATZ to
its own personnel, agencies and advertisers. These
calendars are different from regular calendars; they show
the broadcast month, and can be used “to keep track of when
invoices are due, and so forth.” McCurdy, p. 96. The
calendars are sent to people at advertising agencies at the

show the meaning of a term in a particular field, because the
meaning of KATZ is that of a surname, we have considered all of
the registrations.
19 We note that exhibit 1, “a list of names that we compiled that
have been used over the years in our businesses and divisions,”
i.e., “Katz trademarks, trade names, business divisions, d/b/a’s,
et cetera, et cetera,” Damon, p. 12, does not include KATZ per
se, although this list was compiled by asking “all of our
business leaders to send me a list of names that have been used
over the years in various divisions, plus from corporate records
as well.” Id. The list includes almost 90 names, including many
that were not in use as of the time of trial, and many that are
not even for KATZ-formative names or marks.
Opposition No. 91191178
35
buying level, as opposed to those at the most senior level,
and are also sent to trade associations. Id. at 97. The
calendars do not bear any advertising per se, merely the
phrase KATZ STANDARD BROADCAST CALENDAR. Opposer has
submitted evidence of these annual calendars going back to
1984.
We do not regard these calendars as showing that KATZ
is a strong mark for media placement consulting services.
These calendars are not used to promote the consulting
services for which we have found overlap with applicant’s
services. Further, these calendars are not directed to the
senior level people who would be the direct customers or
purchasers of the business marketing consulting services
identified in applicant’s application, and who would be
likely to encounter the services identified in both
opposer’s KATZ registration and applicant’s application.
As for the evidence of third-party use of KATZ marks,
applicant has submitted, as Katz exhibit E, a listing of
company names retrieved by a search by OneSource, all of
which have KATZ in their names. We have given no probative
weight to this document, as it would be hearsay to use the
document to prove the existence of the companies retrieved
by the search. Similarly, much of the third-party website
evidence has limited probative value. Although this
Opposition No. 91191178
36
evidence shows that websites bearing such names exist, we
cannot treat the information about the companies that is
contained in the websites as proving the truth of those
statements. However, as noted in our discussion of
opposer’s objections to applicant’s exhibits, there is
evidence that opposer has written cease and desist letters
to six third-party users of KATZ marks, exhibit K, and we
can accept opposer’s statements as to those third-party
uses. Thus, opposer has provided evidence of the use of
KATZ STRATEGIC SOLUTIONS, KATZ COMMUNICATIONS GROUP, KATZ
GLOBAL MEDIA, KATZ MARKETING COMMUNICATIONS, KATZ DIRECT
MARKETING and KATZ MEDIA CONSULTING for “marketing and
consulting services.” With the exception of KATZ MEDIA
CONSULTING, that is the extent of the information we have
as to those third parties’ use of their marks. For KATZ
MEDIA CONSULTING, applicant took the testimony deposition
of Stacy Katz, the owner of this company. Ms. Katz
testified that she has used the mark KATZ MEDIA CONSULTING
since the summer of 2009, and that she offers personal
brand strategy, for example, helping a consultant or
individual proprietor promote their services by better
articulating their personal brand. In connection with the
media, her services can involve public relations through
Opposition No. 91191178
37
the media, product placement, working with media bloggers,
and obtaining publicity on television, radio and the like.
Third-party use of similar marks for similar goods or
services can be evidence that consumers have become
conditioned to recognize that businesses in a particular
field use a specific term, and that they are able to
distinguish between these businesses based on small
distinctions among the marks. See Steve’s Ice Cream v.
Steve’s Famous Hot dogs, 3 USPQ2d 1477, 1479 (TTAB 1987).
As a result, we approach our comparison of the
parties’ marks with the understanding that consumers are
not likely to believe that every mark that contains the
name KATZ in the general field of marketing or advertising
identifies goods or services emanating from a single
source, and that, simply because marks contain this name is
not a sufficient basis on which to find a likelihood of
confusion.
Applicant’s mark obviously begins with the identical
element that makes up the whole of opposer’s mark.
However, for the reasons discussed above, the fact that
both marks contain this name is not a sufficient basis on
which to find likelihood confusion. The question is
whether consumers will assume that KATZ and KATZ MARKETING
SOLUTIONS identify services of a single source, or separate
Opposition No. 91191178
38
sources, when the marks are used for overlapping services.
Although applicant’s mark includes the words MARKETING
SOLUTIONS, we find that the addition of these descriptive
words is not sufficient to distinguish the marks when they
are used in connection with legally identical services.
That is, although purchasers will certainly notice the
additional words, they will regard them as merely providing
further information about the services, and still view the
marks as indicating services emanating from or sponsored by
the same source. Because KATZ is the dominant term in
applicant’s mark, the marks overall are similar in
appearance, pronunciation, connotation and commercial
impression. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985) (there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties).
We acknowledge that the consumers of opposer’s and
applicant’s services are both sophisticated and careful.
They will clearly notice that applicant’s mark contains the
additional words MARKETING SOLUTIONS. However, because, as
stated above, these words provide additional information
about the services, these discriminating purchasers are
Opposition No. 91191178
39
likely to view KATZ MARKETING SOLUTIONS as a variation of
opposer’s mark KATZ, when used in connection with services
that overlap with opposer’s consulting services. We are
aware that during the process of a company’s decision to
hire a company to place media advertising and obtain
consulting services in connection therewith, or to hire a
company for business marketing consulting, details about
the company will be made known, so that a potential
customer will know that Tammy Katz is the principal of
applicant, and that she is not associated with opposer.20
However, the question is not whether, before the ultimate
purchase is made, the customer knows what company he is
dealing with, but whether the customer is likely to
believe, when he contacts Katz Marketing Solutions, that
the services offered under the KATZ MARKETING SOLUTIONS
mark emanate from the same source as the services offered
under the KATZ mark.
The next du Pont factors we consider are the related
factors of the nature and extent of any actual confusion,
and the length of time during and conditions under which

20 For example, Tammy Katz testified that the hiring process
would typically involve “a one-hour conversation face to face or
on the phone to see if there’s a fit for what their marketing
services needs are and what we provide. If there is a fit, we
provide a proposal, a written proposal, outlining the program,
the plan and the budget for their review, editing, refinement or,
ideally, signature.” p. 40.
Opposition No. 91191178
40
there has been concurrent use without evidence of actual
confusion. There is no evidence of any confusion during
the nine years from when applicant began using the mark
KATZ MARKETING SOLUTIONS in 200221 until the time testimony
was taken in 2011. However, we do not treat the lack of
evidence of actual confusion as indicative that confusion
is not likely. Although we deem applicant’s services, as
identified, to encompass advising on television and media
advertising, including the placement of such ads, applicant
does not in fact engage in such activities. As a result,
we cannot conclude that the parties’ activities have been
such that there would have been an opportunity for
confusion to occur. As a result, we treat these du Pont
factors as neutral.
With respect to the remaining du Pont factors,
applicant treats them in a rather pro forma manner, while
opposer has not addressed them, stating that it has limited
its comments to those factors it deems relevant.
Accordingly, we too will mention these factors only
briefly. In its discussion of the factor of the variety of
goods or services on which a mark is or is not used (factor

21 Tammy Katz testified that applicant began using the name KATZ
MARKETING SOLUTIONS in July 2002;, although use of KATZ MARKETING
SOLUTIONS in the applied-for stylized format came some years
later. We have considered the period of contemporaneous use as
starting with the non-stylized mark, since that mark is even
closer to opposer’s mark.
Opposition No. 91191178
41
9), and the factor of the market interface between
applicant and opposer (factor 10), it concludes that “this
factor [10] does not appear to weigh favorably in Opposer’s
favor,” brief, pp. 15-16, and “this factor [10] cannot be
said to favor Opposer.” Brief, p. 16. Although it later
states that these factors favor applicant, there is nothing
in the record that would show this. As for factors 11 (the
extent to which applicant has a right to exclude others
from use of its mark on its goods) 12 (the extent of
potential confusion, i.e., whether de minimis or
substantial) and 13 (any other established fact probative
of the effect of use), applicant says that there is no
direct testimony on these factors. To the extent that any
of these factors are relevant, we treat them as neutral.
After considering all of the relevant du Pont factors,
and the evidence and arguments submitted in connection with
them, we find that applicant’s mark used for its identified
“business marketing consulting services” is likely to cause
confusion with opposer’s mark KATZ for the consulting
services in connection with independent media sales
representation services in the fields of radio and
television broadcasting identified in its registration. We
make this finding because the consulting services
identified in opposer’s registration must be deemed to be
Opposition No. 91191178
42
encompassed by the “business marketing consulting services”
identified in applicant’s application. Because these
services are legally identical, when the highly similar
marks KATZ and KATZ MARKETING SOLUTIONS are used therewith,
consumers are not likely to distinguish the source of the
services based on the additional descriptive wording
MARKETING SOLUTIONS in applicant’s mark. We want to make
clear, though, that we are not finding that KATZ is a
strong mark, or that it is entitled to a broad scope of
protection, even for related goods or services, or even
against other marks consisting of the name KATZ and
descriptive wording. Nor are we finding that applicant’s
mark is likely to cause confusion if it were used solely
for the services in connection with which applicant
actually uses its mark, as opposed to the services recited
in its application. Our decision is solely that the
additional descriptive words MARKETING SOLUTIONS in
applicant’s mark KATZ MARKETING SOLUTIONS is not sufficient
to distinguish applicant’s mark from opposer’s mark KATZ
when the marks are used for the legally identical services
identified in their respective application and
registration.
Fraud
Opposition No. 91191178
43
We turn now to the second ground on which this
opposition is based. Opposer contends that applicant
committed fraud in filing the trademark application because
applicant knew that opposer had superior rights to various
KATZ marks, and nevertheless Tammy G. Katz, applicant’s
chief executive officer, signed on behalf of applicant the
declaration in the application stating that she “believes
applicant to be the owner of the trademark/service mark
sought to be registered…; [and] to the best of his/her
knowledge and belief no other person, firm, corporation, or
association has the right to use the mark in commerce,
either in the identical form thereof or in such near
resemblance thereto as to be likely, when used on or in
connection with the goods/services of such other person, to
cause confusion, or to cause mistake, or to deceive….”
Opposer asserts that applicant had knowledge that opposer
had superior rights because opposer had sent her a cease
and desist letter shortly before it filed its application.
“Fraud in procuring a trademark registration or
renewal occurs when an applicant knowingly makes false,
material representations of fact in connection with its
application.” In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
1938, 1941 (Fed. Cir. 2009) (“Bose”), quoting Torres v.
Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483, 1484
Opposition No. 91191178
44
(Fed. Cir. 1986). “The very nature of the charge of fraud
requires that it be proven ‘to the hilt’ with clear and
convincing evidence. There is no room for speculation,
inference or surmise and, obviously, any doubt must be
resolved against the charging party.” Id., at 1939,
quoting Smith Int'l, Inc. v. Olin Corp., 209 USPQ 1033,
1044 (TTAB 1981).
In Qualcomm, Inc. v. FLO Corp., 93 USPQ2d 1768, 1771
(TTAB 2010), the Board set out the allegations necessary to
state a claim of fraud that is based on statements made in
a declaration:
A plaintiff claiming that the declaration or oath
in a defendant's application for registration was
executed fraudulently, in that there was another
use of the same or a confusingly similar mark at
the time the oath was signed, must allege
particular facts which, if proven, would
establish that: (1) there was in fact another use
of the same or a confusingly similar mark at the
time the oath was signed; (2) the other user had
legal rights superior to applicant's; (3)
applicant knew that the other user had rights in
the mark superior to applicant's, and either
believed that a likelihood of confusion would
result from applicant's use of its mark or had no
reasonable basis for believing otherwise; and
that (4) applicant, in failing to disclose these
facts to the U.S. Patent and Trademark Office,
intended to procure a registration to which it
was not entitled. Intellimedia Sports Inc. v.
Intellimedia Corp., 43 USPQ2d 1203, 1205 (TTAB
1997).

Opposer bases its claim of fraud on its assertion that
applicant had actual notice of opposer’s superior rights
Opposition No. 91191178
45
due to a cease and desist letter it states it sent to
applicant shortly before applicant filed its application.
Surprisingly, though, opposer did not make a copy of the
cease and desist letter of record. The only way we know
that a letter was sent was because applicant admitted in
its answer that “Opposer’s attorney sent a letter to
Applicant dated January 12, 2009, mentioning various
trademarks allegedly owned by Opposer,” and during her
testimony, Tammy Katz acknowledged receiving such a letter:
Q. (cross-examination by opposer’s counsel):
And you filed—-you filed the application upon
receiving or after receiving a letter from my
client, Katz Communications, regarding the Katz
Communications marks.

A.: Yes.

Tammy Katz, p. 166. However, there is virtually no
information about what opposer stated in its letter, except
that Tammy Katz said, “Well, in their letter it said they
were an independent media representation company.” Id. at
167.
Given that fraud must be proven to the hilt, we find
that opposer has failed to prove that applicant knew that
opposer had rights in any KATZ or KATZ-formative mark,22 let

22 As noted, applicant’s admission was limited to stating that
opposer’s letter mentioned “various trademarks allegedly owned by
Opposer.” This is not an admission that opposer owned any
trademarks, nor is it an admission that opposer claimed rights in
any particular trademarks.
Opposition No. 91191178
46
alone that opposer had rights superior to applicant's, or
that applicant believed that its use of its mark would be
likely to cause confusion.
Opposer’s evidence falls far short of meeting the
standard of proof for fraud, and its ground that applicant
committed fraud in executing the application is therefore
dismissed.
Decision: The opposition is sustained on the ground
of likelihood of confusion, and dismissed on the ground of
fraud.