Message in a Bottle, Inc., f/k/a Gold Shells, Inc.v.Keith Cangiarella

Trademark Trial and Appeal Board

Sep 7, 2010

No. 91162780re (T.T.A.B. Sep. 7, 2010)

Mailed:
September 7, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Message in a Bottle, Inc. f/k/a Gold Shells, Inc.

v.

Keith Cangiarella
_____

Opposition No. 91162780
to application Serial No. 78229875
filed on March 25, 2003
_____

Request for Reconsideration
_____

Mark R. Leonard of Davis & Leonard, LLP for Message in a
Bottle, Inc. f/k/a Gold Shells, Inc.

Keith Cangiarella, pro se.
_____

Before Seeherman, Cataldo and Taylor, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

On June 15, 2010 the Board issued a decision denying
applicant Keith Cangiarella’s counterclaim to cancel opposer
Message in a Bottle, Inc.’s Registration No. 2243269 and
granting opposer’s opposition to the registration of
applicant’s mark solely with respect to the issue of
likelihood of confusion.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91162780
2
On July 13, 2010 applicant timely filed a request for
reconsideration of that decision. Opposer has filed a brief
in response.
We turn first to applicant’s arguments with respect to
our findings regarding certain exhibits that he submitted.
First, applicant contends that the Board improperly
characterized his exhibit H as being a document from the
registration file that applicant sought to cancel, when it
was an Office action for a different application, Serial No.
76556304, also filed by opposer. Applicant is correct.
However, this mischaracterization does not affect our
decision herein; the Office action is part of the record and
we did consider it. However, the fact that a different
examining attorney considered the mark MESSAGE IN A BOTTLE
merely descriptive of goods does not prove that opposer
committed fraud in obtaining its registration for the mark
for services. As we explained at length in our June 15,
2010 decision, the specimen submitted with opposer’s
Statement of Use for the registration at issue clearly
indicated the nature of opposer’s services to the examining
attorney. Therefore, opposer did not make a
misrepresentation in the prosecution of its underlying
application. Moreover, even if opposer had made a material
misrepresentation, it is not sufficient for a finding of
Opposition No. 91162780
3
fraud that a statement be false or even material, there must
also be an intent to deceive.
Applicant also takes issue with our sustaining, because
they are not printed publications as contemplated by
Trademark Rule 2.122(e), opposer’s objections to his
Exhibits W, X and Y. We pointed out in our June 15, 2010
decision that, in responding to opposer’s objections to
these exhibits, applicant addressed only opposer’s relevancy
objection, and not whether the exhibits constitute printed
publications. Applicant should have responded to the
admissibility of the exhibits at the time opposer objected
to them, rather than waiting until a decision had issued.
In any event, we find no error in our ruling on
opposer’s objections. With respect to applicant’s argument,
raised for the first time in the motion for reconsideration,
that because the articles are marked “© Nexis,”[sic], this
makes them acceptable as printed publications, this is
incorrect. As applicant himself recognizes, “the notice of
reliance may be accompanied by an electronically generated
document which is the equivalent of the printed publication
or relevant portion, as, for example, by a printout from the
NEXIS computerized library of an article published in a
newspaper or magazine of general circulation.” Motion for
reconsideration, p. 3, emphasis in original. An “article,”
although taken from the NEXIS database, must still have been
Opposition No. 91162780
4
published in a newspaper or magazine of general circulation.
It is not sufficient that it shows a copyright notice by
LexisNexis. Exhibits W and Y, as applicant concedes, are
business wire reports, and there is no evidence that the
wire service reports ever appeared as an article in a
printed publication.1 And there is no indication that the
Dun & Bradstreet reports (Exhibit X) were ever published.2
As we stated in our June 15, 2010 opinion, even if we
had considered these exhibits, they would not have changed
our decision. Therefore, although we are not persuaded of
any error in our rulings on these exhibits, there can be no
error in our not considering them.

1 Applicant makes the statement that these reports “clearly
demonstrate that Exhibit V would have been available to the
general public as the information was released to the general
public via Press Releases.” Motion for reconsideration, p. 3.
Whether or not the press releases were used in the preparation of
the Bell Laboratories article that is the subject of Exhibit V
(and it is certainly not clear that this is the case), Exhibit V
was treated as part of the record. However, we see no error in
our considering the Bell Laboratories article, published in a
journal called “Computer Networks and ISDN Systems” as being in a
technical publication that would not be viewed by the ordinary
public that are the consumers of opposer’s and applicant’s goods
and services.
2 Because applicant did not discuss the admissibility of these
exhibits in his response to opposer’s objections, we did not
discuss in our opinion the various reasons why the exhibits were
not admissible as printed publications. For the sake of
completeness, we point out that Exhibits W, X and Y are not
admissible under Safer Inc. v. OMS Investments Inc., 94 USPQ2d
1031 (TTAB 2010), as Exhibit X does not bear a URL address or the
date it was downloaded, and Exhibits W and Y do not bear complete
URL addresses, nor did applicant, in response to opposer’s
objection, provide any information about whether the website is
publicly available.

Opposition No. 91162780
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Applicant also argues, with respect to his Exhibits O
and V, that “third parties researching trademarks would have
considered the goods and services to point to computers.”
Motion for reconsideration, p. 3. We reiterate that we
treated these exhibits of record, although we found them to
have limited probative value because the articles were
published in technical publications. The fact that the term
“message in a bottle” has been referred to in two technical
journals in connection with Bell Labs’ Metaphorium website,
or that Bell Labs has used the term for its own messaging
system, has limited probative value with respect to
applicant’s fraud claim, which is based on the assertion
that opposer intentionally misidentified and misclassified
its services in obtaining its registration.
Many of applicant’s arguments regarding whether
opposer’s services are properly classified in Class 38, or
that opposer committed fraud in so classifying them and in
its identification of services, were discussed in our
June 15, 2010 decision, and we will not repeat them here. A
motion for reconsideration should not be used to reargue the
points presented in the brief on the case. See TBMP § 543.
We reiterate that a party seeking cancellation of a
trademark registration for fraudulent procurement bears a
heavy burden of proof. W.D. Byron & Sons, Inc. v. Stein
Bros. Mfg. Co., 377 F.2d 1001, 1004, 153 USPQ2d 749, 750
Opposition No. 91162780
6
(CCPA 1967). A trademark registration is obtained
fraudulently only if the applicant/registrant knowingly
makes a false, material representation with the intent to
deceive the USPTO. In re Bose Corp., 91 USPQ2d 1938, 1941
(Fed. Cir. 2009). Therefore, absent the requisite intent to
mislead the USPTO, even a material misrepresentation does
not qualify as fraud, and warrant cancellation of a
registration. See King Auto., Inc. v. Speedy Muffler King,
Inc., 667 F.2d 1008, 212 USPQ 801 (CCPA 1981).
We do want to address one point, newly made in
applicant’s motion for reconsideration. Applicant notes the
statement made by opposer’s attorney in its brief that in
indicating the class of services in opposer’s underlying
application the attorney consulted a trademark treatise by
James E. Hawes, Trademark Registration Practice, which
listed the heading for Class 38 as “Communications.” This
statement is not actually of record nor, after a decision
has issued, can we treat it of record because applicant
relies on it. However, even if this statement were of
record, it would not support applicant’s claim of fraud.
Applicant argues that opposer’s attorney did not do the
correct research to classify the services in opposer’s
application that resulted in the registration applicant
counterclaimed to cancel. However, there is no fraud if a
false misrepresentation is occasioned by an honest
Opposition No. 91162780
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misunderstanding or inadvertence without a willful intent to
deceive. In re Bose Corp., 91 USPQ2d at 1942.
Reasonableness is not part of the analysis. Id.
Applicant’s position simply does not reflect the law
regarding what fraud is.
Applicant has also submitted arguments regarding the
Board’s finding that his mark, as used for his goods, is
likely to cause confusion with opposer’s registered mark.
With respect to the evidence of actual confusion, applicant
states that “the Board has placed great weight and
importance on the emails submitted by Roger Rojas, Ex. X,
Ex. Z and Ex. Y.” Motion for reconsideration, p. 6.
However, although the Board did not discount the evidence,
applicant mischaracterizes what the Board stated:
We recognize that it is difficult to
obtain evidence of actual confusion.
The evidence submitted by opposer,
although perhaps individually not
sufficient to show actual confusion,
when taken together paints a
circumstantial picture that people
consider applicant’s goods sold under
the mark MESSAGE IN A BOTTLE and
opposer’s services rendered under that
identical mark to emanate from the same
source. However, we do not need such
evidence in order to conclude that
applicant’s use of his mark for his
identified goods is likely to cause
confusion with opposer’s mark, although
the evidence submitted by opposer
reinforces that conclusion.

Opposition No. 91162780
8
(emphasis added). It is clear that we did not rest our
decision, or “place great weight,” on the evidence of the
emails. On the contrary, we stated that it merely
reinforced the conclusion that we drew based on the other
evidence of record with respect to other du Pont factors.
Applicant also argues that opposer has only opposed
registration of applicant’s mark for part of his identified
goods. Applicant asserts that opposer does not provide kits
and, therefore, even if the Board is not persuaded by
applicant’s motion for reconsideration, his application
should be registered for “kits comprised of bottles, paper
for creating promotional messages, advertising messages,
greeting messages and invitations and packaging and boxes
for mailing.” However, a plaintiff need not use its mark
for, or prove likelihood of confusion with, all of the goods
listed in an applicant’s single class application in order
to successfully oppose the application. Likelihood of
confusion must be found if there is likely to be confusion
with respect to any item that comes within the
identification of goods in the opposed application. See
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981). As opposer has pointed
out in its response to the motion for reconsideration,
opposer’s notice of opposition was brought against
Opposition No. 91162780
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applicant’s application as a whole, not against only certain
of the goods in Class 16.
Decision: Applicant’s request for reconsideration is
denied.