No. 92054040 (T.T.A.B. Feb. 27, 2015)

Lundinv.Svoboda

Trademark Trial and Appeal BoardFeb 27, 2015

No. 92054040 (T.T.A.B. Feb. 27, 2015)

This Opinion is Not a Precedent of the TTAB Mailed: February 27, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Lundin v. Svoboda _____ Cancellation No. 92054040 _____ David M. Adler of Adler Law Group for Cary Lundin. Rafael Bernardino of Hobson, Bernardino & Davis, LLP for Julia Svoboda. _____ Before Bucher, Zervas and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Julia Svoboda (“Respondent”) has registered on the Principal Register the mark Citizen Kate (in standard characters) for Digital media, namely, pre-recorded video cassettes, digital video discs, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital discs featuring comedy; Downloadable films and television programs featuring comedy provided via a video-on-demand service; Downloadable motion pictures and television shows about comedy; DVDs featuring comedy; Motion picture films about comedy, International Class 9.1 1 Registration No. 3960356 registered May 17, 2011 based on application Serial No. 77801059 filed August 10, 2009. Respondent claimed first use of her mark anywhere at least as early as January 2007 and first use in commerce at least as early as February 1, 2007. Cancellation No. 92054040 - 2 - Carey Lundin (“Petitioner”) filed a petition to cancel Respondent’s registration on the ground of likelihood of confusion under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), and that Respondent committed fraud on the USPTO during the prosecution of her application for registration. With respect to the likelihood of confusion claim, Petitioner alleged, in essence, that she first used the mark CITIZEN KATE “on or about July 25, 2006,” in connection with a television series about “an affable yet naïve reporter following the Obama campaign for the 2008 presidential race entitled ‘Citizen Kate’” and that Respondent’s registration of the mark Citizen Kate is likely to cause confusion with Petitioner’s mark CITIZEN KATE.2 With respect to the fraud claim, as best we understand the pleading, Respondent committed fraud on the USPTO in prosecuting her application for registration because when she filed her application, Respondent knew that Petitioner was the owner of the mark CITIZEN KATE.3 In her Answer, Respondent denied the salient allegations in the Petition for Cancellation.4 2 Petition for Cancellation ¶¶ 2, 3 and 19 (1 TTABVUE 4 and 6). Citations to the record in this opinion are to the TTABVUE docket entry number and the electronic page number where the document or testimony appears. Because the Board primarily uses TTABVUE in reviewing evidence, the Board prefers that citations to material or testimony in the record that has not been designated confidential include the TTABVUE docket entry number and the TTABVUE page number. For material or testimony that has been designated confidential and which does not appear on TTABVUE, the TTABVUE docket entry number where such material or testimony is located should be included in any citation. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). 3 Petition for Cancellation ¶ 25 (1 TTABVUE 7). 4 23 TTABVUE. Cancellation No. 92054040 - 3 - This case is a cautionary tale demonstrating what can happen when the participants in a start-up business venture do not expressly identify the ownership of the intellectual property at the beginning of the business venture. This is particularly prevalent in the entertainment industry as demonstrated below. See 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 16:45 (4th ed. 2014). The record suggests that “Citizen Kate” is the made-up character portrayed by Ms. Saboda but created by Ms. Lundin. However, both parties have failed to focus their testimony, evidence and arguments on the facts most relevant to the registration of the trademark at issue. For example, as discussed below, neither party expressly testified to and pointed to any specific evidence demonstrating the first use of the mark at issue. Actually, Petitioner seems to be arguing that the registration should be cancelled because Respondent qua Applicant failed to satisfy the requirements of Section 1(a) of the Act, in particular that Respondent is the owner of the mark, that no other person has the right to use the mark, and that Respondent made actual use of the mark as of the claimed date of first use. Hence, we find that traditional concepts of priority and likelihood of confusion, or even whether Respondent intentionally offered material misrepresentations in its dealing with the United States Patent and Trademark Office, are ill-suited in resolving this type of internecine dispute. As this Board has done in resolving trademark ownership disputes in previous fact patterns involving splintered family businesses, overlapping circles of not-for-profit companies, fifth- generation band members and past managers, divided auto clubs in neighboring Cancellation No. 92054040 - 4 - towns, etc., we are wont to turn to an analytical framework drawing on evidentiary factors identified in Wrist-Rocket Manufacturing Co. v. Saunders, 379 F. Supp. 902 (D. Neb. 1974), aff’d in part and rev’d in part, 516 F.2d 846, 186 USPQ 5, 9 (8th Cir. 1975), cert. denied, 423 U.S. 870 (1975).5 In Wrist-Rocket, the issue was similar to the issue in this proceeding. The issue here is who, as between the manufacturer and distributor, has ownership of a trademark created after the formation of the business relationship. In this context, the relationship of the parties is clearly relevant, but the underlying and dispositive question remains: which party has priority of appropriation and use of the trademark in connection with his business. 186 USPQ at 8. See also Conolty v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302 (TTAB 2014) (adopting a Wrist-Rocket analysis and recognizing “that our determination concerning the right to register FAIRWAY FOX may not be sufficient to resolve Conolty’s and O’Connor’s larger business dispute, or to answer the many questions raised by Conolty’s and O’Connor’s business relationship and agreements.”). However, the factual record in this case does not provide the evidentiary heft necessary to pursue this type of analysis, so we resort to our traditional analysis of priority and likelihood of confusion. I. Preliminary Issues Trademark Rule 2.123(b), 37 CFR § 2.123(b), provides for the introduction of testimony by affidavit or declaration in lieu of testimony depositions. If the parties so stipulate in writing, depositions may be taken before any person authorized to administer oaths, 5 See Pamela S. Chestek’s helpful analysis at 96 TRADEMARK REP. 681 (2006). Cancellation No. 92054040 - 5 - at any place, upon any notice, and in any manner, and when so taken may be used like other depositions. By written agreement of the parties, the testimony of any witness or witnesses of any party, may be submitted in the form of an affidavit by such witness or witnesses. The parties may stipulate in writing what a particular witness would testify to if called, or the facts in the case of any party may be stipulated in writing. Id. Nevertheless, without a stipulation, both parties filed testimonial affidavits and neither party lodged an objection. Under the circumstances, we construe the affidavits as having been stipulated into the record. In addition, Respondent filed notices of reliance on emails and scripts which are not admissible through a notice of reliance. However, in her affidavit, Respondent referenced the emails and scripts. To the extent that we can associate the references in Respondent’s affidavit with the documents referenced in the notices of reliance, we will consider the notices of reliance to be exhibits to the affidavit. Petitioner proffered an email exchange with Marc Korman, a television agent, purportedly to demonstrate her priority.6 However, as noted above, emails are not admissible through a notice of reliance and Petitioner did not reference the email in her affidavit. Accordingly, we do not give that email exchange any consideration. II. The Record The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), respondent’s registration file. In addition, the parties introduced the testimony and evidence listed below. 6 43 TTABVUE. Cancellation No. 92054040 - 6 - A. Petitioner’s Testimony and Evidence. 1. Notice of reliance on a copy of U.S. Copyright Registration No. TXu1- 363-906, registered April 24, 2007, covering Petitioner’s registration of a literary work entitled “Citizen Kate”;7 2. Notice of reliance on a copy of the GoDaddy.com WHOIS registration for the domain name “Citizenkate.tv.”;8 3. Notice of reliance on a copy of the specimen of use submitted with Respondent’s application for registration;9 4. Notice of reliance on five news articles appearing in ReelChicago.com, an online publication in general circulation;10 and 5. Testimony affidavit of Petitioner;11 B. Respondent’s Testimony and Evidence. Respondent introduced her testimony affidavit.12 As indicated above, to the extent that Respondent referenced any of the documents she filed by a notice of reliance, we will consider those documents to be exhibits to her affidavit. III. Standing A plaintiff in a Board proceeding is required to show that he/she has a “real interest” in the outcome of a proceeding in order to have standing. See, e.g., Ritchie 7 38 TTABVUE 4-5. 8 39 TTABVUE 4-5. This is a document printed from the Internet and admissible pursuant to Safer Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2010). 9 40 TTABVUE 4. 10 41 TTABVUE 5-17. 11 42 TTABVUE 4-7. 12 49 TTABVUE 39-58. Cancellation No. 92054040 - 7 - v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1000); Universal Oil Prod. Co. v. Rexall Drug & Chem. Co. , 463 F.2d 1122, 174 USPQ 458, 459 (CCPA 1972) (“Standing, within the meaning of Section 13, is found when the opposer establishes a real interest in the proceeding.” (internal citation omitted)); Tanners’ Council of Am., Inc. v. Gary Indus. Inc., 440 F.2d 1404, 169 USPQ 608, 609 (CCPA 1971) (“ [A]n opposition may be filed by anyone having a real interest.”). This “real interest” requirement stems from a policy of preventing “mere intermeddlers” who do not raise a real controversy from bringing oppositions or cancellation proceedings in the PTO. See Ritchie, 50 USPQ2d at 1025; Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1028, 213 USPQ 185, 189 (CCPA 1982). See also Tanners’ Council, 169 USPQ at 609; Singer Mfg. Co. v. Birginal-Bigsby Corp., 319 F.2d 273, 138 USPQ 63, 66 (CCPA 1963) (an opposer who was not an intermeddler was permitted to oppose a mark). Pursuant to the “real interest” requirement, to have standing an opposer or petitioner to a registration is required to have a legitimate personal interest in the opposition. See Ritchie, 50 USPQ2d at 1025; Lipton, 213 USPQ at 189. In other words, the plaintiff must have a direct and personal stake in the outcome of the proceeding. Ritchie, 50 USPQ2d at 1026. Petitioner testified as follows: 1. Petitioner first used the mark CITIZEN KATE in December 2005 in a meeting with a television agent;13 13 Lundin Affidavit ¶ 4 (42 TTABVUE 4). Respondent does not contest Petitioner’s testimony but argues that the pilot script that she presented to Mr. Korman is not trademark use. Svoboda Affidavit ¶ 14 (49 TTABVUE 46). Cancellation No. 92054040 - 8 - 2. Petitioner pitched the CITIZEN KATE television series at the NATPE Bootcamp in July 2006;14 3. Petitioner registered the domain name CITIZENKATE.tv in February 2006;15 4. Petitioner contracted with Jeffery Gordon of the Writers Boot Camp Productions, in April 2007, “for assistance in the commercial exploitation of the CITIZEN KATE television program”;16 and 5. Petitioner has continued to use the mark CITIZEN KATE in connection with development and promotion of the CITIZEN KATE television series.17 We find that Petitioner has been using the mark CITIZEN KATE to identify her television series of that name and, therefore, has a real interest (i.e., a personal stake) in the outcome of this proceeding, is more than an intermeddler, and that Petitioner has established her standing. 14 Lundin Affidavit ¶ 6 (42 TTABVUE 4). Respondent argues that “petitioner is referencing her efforts to create a TV show with the same title but not the same content or concept as the Mark Citizen Kate.” Svoboda Affidavit ¶ 16 (49 TTABVUE 46). 15 Lundin Affidavit ¶ 10 (42 TTABVUE 5). Respondent admits that Petitioner registered the domain name but argues that she designed and managed the website. Svoboda Affidavit ¶ 20 (49 TTABVUE 47). 16 Lundin Affidavit ¶ 14 (42 TTABVUE 5). Respondent argues that this testimony is not relevant because it relates to the CITIZEN KATE pilot, not the CITIZEN KATE character that Respondent purportedly created. Svoboda Affidavit ¶ 24 (49 TTABVUE 48). 17 Lundin Affidavit ¶ 15 (42 TTABVUE 5). Respondent argues that she created the CITIZEN KATE character and that Petitioner is infringing Respondent’s rights. Svoboda Affidavit ¶ 25 (49 TTABVUE 49). Cancellation No. 92054040 - 9 - IV. Priority As noted above in footnote No. 1, Respondent’s registration is based on an application filed August 10, 2009, claiming first use of her mark anywhere at least as early as January 2007 and first use in commerce at least as early as February 1, 2007. However, we do not consider the dates of use set forth in the registration as evidence on behalf of Respondent because the dates of use must be established by competent evidence. Trademark Rule 2.122(b)(2), 37 CFR § 2.122(b)(2). In her Brief, Respondent argues that “she used the Citizen Kate Mark before July 30, 2009 to negotiate deals and gain investors for the production of the Citizen Kate project,” citing paragraph 34 of her affidavit.18 Respondent testified that “[t]he Citizen Kate Mark was used before July 30, 2009 to negotiate deals and gain investors for the production of the Citizen Kate project.”19 However, Respondent does not provide any testimony or evidence as to when she first used the mark in connection with the goods in the registration.20 In fact, Respondent testified that she “designed, wrote and developed the entire experience at www.citizenkate.tv.”21 However, anything posted on that website would inure to the benefit of Petitioner 18 Respondent’s Brief, p. 15 (58 TTABVUE 20). 19 49 TTABVUE 51. 20 Paragraph Nos. 4 and 5 of the Svoboda Affidavit are as close as Respondent comes to testifying about the first use of the mark CITIZEN KATE (49 TTTABVUE 43, referencing 50 TTABVUE 83-104 and 48 TTABVUE 6-43). In those paragraphs, Respondent references emails purportedly concerning the promotion and production of “Citizen Kate which demonstrates that the Citizen Kate character for which I received Trademark registration number 3960356.” In any event, none of the documents referenced show use of the mark on the goods in the registration. 21 Svoboda Affidavit ¶ 41 (49 TTABVUE 54). Cancellation No. 92054040 - 10 - as the owner of the website.22 Accordingly, the earliest date upon which Respondent may rely is the filing date of her application for registration (August 10, 2009). As noted in the previous section, Petitioner testified that she has continued to use the mark CITIZEN KATE in connection with development and promotion of the CITIZEN KATE television series,23 and, as noted above, Respondent “designed, wrote and developed the entire experience at www.citizenkate.tv,”24 which inures to the benefit of Petitioner as the owner of the website. While there is no testimony or evidence as to a specific date when the CITIZEN KATE television series was first aired, a news story posted April 5, 2007, on the website ReelChicago.com, reports about the CITIZEN KATE television show. Only a few weeks into her video blog debut, “Citizen Kate” has made waves. The website was included on Jeff Jarvis’ YouTube Prezvid site, assuring her following of millions of fans as she pursues presidential candidates now through November, 2008. Weekly “Citizen Kate” webisodes will be posted until the November, 2008 presidential election. Written and produced by [Petitioner’s] VivaLundin! Company, “the show is aimed at people who don’t know much about the political landscape but feel they should. * * * 22 39 TTABVUE 4-5; Lundin Affidavit ¶ 10 (42 TTABVUE 5). Respondent admits that Petitioner registered the domain name but argues that she designed and managed the website. Svoboda Affidavit ¶ 20 (49 TTABVUE 47). 23 Lundin Affidavit ¶ 15 (42 TTABVUE 5). Respondent argues that she created the CITIZEN KATE character and that Petitioner is infringing Respondent’s rights. Svoboda Affidavit ¶ 25 (49 TTABVUE 49). 24 Svoboda Affidavit ¶ 41 (49 TTABVUE 54). Cancellation No. 92054040 - 11 - During the first six episodes, Kate had traveled to Springfield for Barack Obama’s candidacy announcement. There, she interviewed Springfield Mayor Tim Davlin, Sen. Dick Durbin and a “lobbyist” she met at a post-rally party. In future episodes, “Citizen Kate” will meet up with candidates Clinton, McCain, Guiliani, Edwards and others, in Iowa, New Hampshire, California and Washington, D.C., or wherever the political winds take them. Six episodes have been posted in the past month, sometimes more than once a week, [Petitioner] noted.25 While the above-noted news article constitutes hearsay evidence insofar as it is offered for the truth of the matter asserted therein, Respondent did not object to it on that ground and, in fact, referenced it in paragraph No. 22 of her affidavit.26 Accordingly, we have given limited consideration to the contents of the news article to aid us in determining when Petitioner may have aired her Internet television series. See American Stock Exchange, Inc. v. American Express Co., 207 USPQ 356, 359 n.3 (TTAB 1980). We find that the news article shows public identification of Petitioner with the CITIZEN KATE Internet television series. It is unlikely that the website would publish a news article regarding the CITIZEN KATE Internet television series, if the television shows did not air. Thus, taking into consideration the totality of the evidence, we find that that Petitioner first used the mark CITIZEN KATE to identify a television series published on the Internet between 25 41 TTABVUE 5. 26 Svoboda Affidavit ¶ 22 (49 TTABVUE 47). Respondent argues that ReelChicago.com was run by a friend of Petitioner who has no knowledge of who owns the CITIZEN KATE trademark.Id. Thus, Respondent did not challenge the authenticity of the news article or when it was printed; rather, she challenged the accuracy of its content. Thus, Respondent has impliedly stipulated that the article was posted on ReelChicago.com on April 5, 2007. Cancellation No. 92054040 - 12 - February and April of 2007. See West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994) (“whether a particular piece of evidence by itself establishes prior use is not necessarily dispositive as to whether a party has established prior use by a preponderance. Rather, one should look at the evidence as a whole, as if each piece of evidence were part of a puzzle which, when fitted together, establishes prior use.”). In view of the foregoing, Petitioner has proven her priority of use of the mark CITIZEN KATE. V. Likelihood of Confusion. Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). A. The similarity or dissimilarity of the marks in their entireties in terms of their appearance, sound, connotation and commercial impression. The marks are identical. Cancellation No. 92054040 - 13 - B. The similarity or dissimilarity and nature of the goods and services. The description of goods in Respondent’s registration reads as follow: Digital media, namely, pre-recorded video cassettes, digital video discs, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital discs featuring comedy; Downloadable films and television programs featuring comedy provided via a video-on-demand service; Downloadable motion pictures and television shows about comedy; DVDs featuring comedy; Motion picture films about comedy. Petitioner uses the mark CITIZEN KATE to identify an Internet television series about “an affable, politically naïve producer who works on Chicago democratic campaigns in a political media firm.”27 We must look to the goods and services as identified in the involved registration, not extrinsic evidence of actual use. See, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (stating that “[i]t was proper ... for the Board to focus on the application and registrations rather than on real-world conditions”); Octocom Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed.”). 27 Lundin Affidavit ¶¶ 3, 7, and 15 (42 TTABVUE 4-5). Cancellation No. 92054040 - 14 - Respondent’s “downloadable audio and video recordings, DVDs, and high definition digital discs featuring comedy” and “downloadable motion pictures and television shows about comedy” are broad enough to encompass Petitioner’s Internet television series about “an affable, politically naïve producer who works on Chicago democratic campaigns in a political media firm.” In other words Respondent’s television shows about comedy may include a comedy Internet series about a young, political consultant. Respondent’s testimony regarding the differences in the character that she purportedly developed and the character that Petitioner purportedly developed is unavailing because as indicated above, we must restrict our analysis regarding the similarity and dissimilarity and nature of the goods and services to the goods in Respondent’s description of goods and may not consider the differences in the character as described by Respondent. We find that Respondent’s goods and Petitioner’s services are related. C. Established, likely-to-continue channels of trade. Since Petitioner’s Internet television series is viewed through the Internet and Respondent’s downloadable television shows about comedy are viewed through the Internet, the goods and services of the parties move through the same channels of trade.28 28 The word “downloadable” is the adjectival form of the verb “download” which is defined as “to transfer (as data or files) from a usually large computer to the memory of another device (as a smaller computer).” Merriam-Webster online (merriam-webster.com). The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. Cancellation No. 92054040 - 15 - D. Balancing the factors. Because the marks are identical and because the goods and services are related and move through the same channels of trade, we find that Respondent’s mark CITIZEN KATE for the goods set forth in the registration is likely to cause confusion with Petitioner’s mark CITIZEN KATE for an Internet television series. Given our disposition of the issue of priority and likelihood of confusion, we do not reach the question of whether Respondent committed fraud on the United States Patent and Trademark Office. Decision: The petition for cancellation is granted and Registration No. Registration No. 3960356 for the mark Citizen Kate will be cancelled in due course. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).