Nadine Moonv.Schenequa Tillman .

Trademark Trial and Appeal Board

Sep 18, 2013

No. 92054016 (T.T.A.B. Sep. 18, 2013)

Mailed: September 18, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Nadine Moon

v.

Schenequa Tillman
_____

Cancellation No. 92054016
_____

J. Goodwille Pierre for Nadine Moon.

Eric Stenshoel of Curtis Mallet Prevost Colt & Mosle LLP for Schenequa
Tillman.
______

Before Bucher, Wellington, and Adlin,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Nadine Moon (hereinafter “petitioner”) filed a petition to cancel
Schenequa Tillman’s (hereinafter “respondent”) registration for the mark
shown below for “custom baking services, namely, manufacture of bakery
products to the order and/or specification of others; custom cake decorating
services” in International Class 40:1

1 Registration No. 3375352 issued on January 29, 2008.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92054016

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.
Petitioner has alleged priority and likelihood of confusion as a ground for
cancellation. Specifically, petitioner has alleged that she is “in the business of
‘retail bakery shops’ and ‘custom cake decorating services.’” She further
alleged that she filed an application for registration of the mark WHO MADE
THE CAKE for “retail bakery shops” and “custom cake decorating services,”
but the application was refused registration based on a finding of likelihood
of confusion with respondent’s registration.2 Petitioner has pleaded that her
date of first use (January 1995) precedes respondent’s date of first use
(March 31, 2006). In addition, petitioner also pleaded abandonment as a
ground for cancellation and that she will be “harmed by the appearance of
and, indeed, actual dilution or diminution of [her] right to oppose other
applications to federally register marks confusingly similar to [her own
mark].”
Respondent, in her answer, denied the salient allegations in the petition.
Petitioner filed a trial brief. Although respondent has not filed a trial
brief, we are mindful of the fact that it is petitioner, as plaintiff, who bears
the burden of proving her pleaded grounds for cancellation in this proceeding.
Cancellation No. 92054016

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See Cerveceria Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d 1021,
13 USPQ2d 1307, 1309 (Fed. Cir. 1989); Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000).
The Record
The pleadings are automatically of record and, by operation of Trademark
Rule 2.122, so is the file of the subject registration.
In addition, petitioner filed a notice of reliance on the following
materials:3
1. Copies of petitioner’s requests for admission that have been deemed
admitted under Fed. R. Civ. P. 36(a)(3) due to respondent’s failure to
timely respond to them;

2. A copy of the Board’s June 27, 2012 order in this proceeding;

3. Petitioner’s declaration;

4. A copy of the subject registration file;

5. A copy of respondent’s motion for an order of dismissal (filed in this
proceeding on April 30, 2012) that included copies of petitioner’s
responses to respondent’s discovery requests, petitioner’s initial
disclosures to respondent, and a copy of petitioner’s first set of
interrogatories (without responses thereto);

6. A copy of respondent’s initial disclosures to petitioner.

2 Petitioner identifies her application as Serial No. 85100220, filed under Section
1(a) of the Trademark Act.
3 The notice of reliance was actually framed by petitioner as a motion “for
administrative relief to enter testimony and evidence into the record”; the Board, in
an order issued on January 24, 2013, stated that said motion was being construed in
part as a filing of a notice of reliance and concluded that the notice of reliance was
timely filed.
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On the due date for her pretrial disclosures, respondent filed her signed
“statement” attesting to matters involved in this proceeding.With the
exception of respondent’s deemed admissions and respondent’s initial
disclosures, the bulk of the materials submitted by the parties constitute
inadmissible evidence or were improperly introduced. As discussed further
below, the inadmissible or improperly introduced materials are not
considered of record and may not be relied upon in this proceeding.
Trademark Rule 2.123(l).
With regard to the declarations of petitioner and respondent, submitted
respectively on their own behalf, these contain statements by the parties
concerning their version of events or use of their marks and, as such,
constitute improper testimony. Absent a stipulation by the parties to the
contrary, which is not of record, testimony may be taken only “by depositions
upon oral examination,” as set forth in Trademark Rule 2.123; See also, Tri-
Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914
(TTAB 2007) (declaration cannot be submitted in lieu of testimony deposition
absent a stipulation of the parties); and TBMP § 703.01(b) (3rd ed. rev. 2013).
It is also impermissible for petitioner to submit her own responses to
respondent’s discovery requests by notice of reliance when respondent,
herself, has not introduced any such discovery responses. Trademark Rule
2.120(j); see also, TBMP § 704. Regardless of whether respondent relied on
these materials in support of an earlier-filed motion, any evidence submitted
Cancellation No. 92054016

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in connection with a motion, such as a motion for summary judgment or to
dismiss, are ordinarily only considered for purposes of the motion and do not
form part of the evidentiary record to be considered at final hearing. See, e.g.,
Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 USQP2d
1106, 1115 n.10 (TTAB 2011).
In sum, we are left with a record consisting of the pleadings, the subject
registration file, petitioner’s admission requests (deemed admitted), and the
materials submitted with respondent’s initial disclosures. For ease of
reference, the admission requests are as follows:
1. Admit that Registrant was aware of the existence of Who Made The
Cake at the time Registrant sought to register the mark “Who Made
That Cake” with the United States Patent and Trademark Office.4

2. Admit that Registrant was aware of the existence of the Who Made
The Cake Mark at the time Registrant began manufacturing and
selling a goods and services
under the name ‘Who Made That Cake.”5

3. Admit that Registrant received a Cease and Desist Letter from
Petitioner on or before May 30, 2011.

4. Admit that the Registrant did not start using the mark “Who Made
That cake” in commerce until after March 1, 2006.

5. Admit that there is very little distinction between the marks, “Who
Made The Cake” and ‘Who Made That cake.”

4 In the preamble of petitioner’s requests for admission, “Who Made The Cake” is
defined as meaning “Who Made The Cake and any of its officers, directors,
employees, agents and representatives and all persons acting or purporting to act on
its behalf.” In a separate definition, “petitioner” is defined as “Who Made The
Cake…” Taken together, these definitions may be construed as equating “Who
Made The Cake” with petitioner.
5 In the preamble of petitioner’s requests for admission, “Who Made The Cake Mark”
is defined as meaning “the name Who Made The Cake.”
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6. Admit that Registrant Does not have a “Brick and Mortar” place to sell
her Goods and Services.

7. Admit that, Registrant is registered in International Class 40 with the
United States Patent and trademark Services for the mark “Who Made
that Cake”

8. Admit that, Registrant is not registered in International Class 35 with
the United States Patent and trademark Services for the mark “Who
Made that Cake”

9. Admit that Registrant's use of the name "Who Made That Cake"
causes consumers who hear or read that name to think of Who Made
The Cake.

10. Admit that the Registrant did not start using the mark “Who Made
That cake” anywhere until after March 1, 2006.

Standing
Standing is a threshold issue in every inter partes proceeding before the
Board; to establish her standing, petitioner must prove that she has a real
interest in the outcome of this proceeding and a reasonable basis for her
belief that she will be damaged by the continued registration of respondent's
mark. Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2
USPQ2d 2021, 2023 (Fed. Cir. 1987); see also, Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Petitioner has pleaded allegations that, if proven at trial, would establish
her standing such as her assertion that she is “in the business of ‘retail
bakery shops’ and ‘custom cake decorating services.’” Petitioner also pleaded
ownership of an application that was refused registration based on
respondent’s registration and a likelihood of confusion between the marks.
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However, petitioner did not prove these allegations or even introduce a copy
of her pleaded application.
Nevertheless, based on several deemed admissions by respondent and
construing these admissions liberally, we are able to conclude that petitioner
has a ‘real interest’ in this proceeding and a ‘reasonable basis’ for her belief
that she will be damaged. Specifically, respondent has admitted that she
received a “cease and desist” letter from petitioner on or before May 30, 2011.
(Admission No. 3). Respondent also admitted that “there is very little
distinction between the marks, ‘Who Made the Cake’ and ‘Who Made That
Cake’” (Admission No. 5). In the preamble to petitioner’s requests for
admission (see footnotes 4 and 5 infra), the term “Who Made The Cake” is
associated with petitioner. When read together, these admissions show that
respondent recognizes petitioner as more than just a mere intermeddler in
this proceeding and, thus, that petitioner has standing.
We now address the grounds for cancellation.
Abandonment and Dilution Grounds
As noted above, petitioner set forth allegations of abandonment and
dilution in the petition to cancel. As to the abandonment ground, petitioner
does not argue this claim in her trial brief nor can we conclude that such a
claim was pursued at trial. In fact, none of the deemed admissions relate to
abandonment of the registered mark, which is found where “its use has been
discontinued with intent not to resume such use.” 15 U.S.C. § 1127.
Accordingly, petitioner waived the abandonment claim.
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As to the dilution claim, we initially note that it was not adequately pled
because, inter alia, there is no allegation by petitioner that her mark is
famous, let alone that the mark became famous prior to the filing date of the
involved registration’s underlying application or prior to respondent’s first
use of her mark. See Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1172-1173
(TTAB 2001); Polaris Industries Inc. v. DC Comics, 59 USPQ2d 1798 (TTAB
2000). The sufficiency of the pleading of the dilution claim has not been
raised, but we cannot conclude that a properly pleaded claim has been tried
by implicit consent of the parties. In her trial brief, petitioner merely lists one
issue as “whether the use and continued registration of Registrant’s mark is
likely to cause dilution of the distinctive quality of the Petitioner’s mark.”
However, petitioner does not further argue this issue in her brief or
otherwise argue that any evidence supports the dilution claim. This claim
was therefore also waived.
Priority and Likelihood of Confusion
To establish priority on a likelihood of confusion claim brought under
Trademark Act § 2(d), a party must prove that, vis-à-vis the other party, it
owns “a mark or trade name previously used in the United States … and not
abandoned ….” Trademark Act Section 2, 15 U.S.C. § 1052(d). A party may
establish its own prior proprietary rights in a mark through ownership of a
prior registration, actual use or through use analogous to trademark use
which creates a public awareness of the designation as a trademark
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identifying the party as a source. See Trademark Act §§ 2(d) and 45, 15
U.S.C. §§ 1052(d) and 1127. See also T.A.B. Systems v. PacTel Teletrac, 77
F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996), vacating Pactel Teletrac v.
T.A.B. Systems, 32 USPQ2d 1668 (TTAB 1994).
In this case, petitioner has done none of the above; that is, she has not
demonstrated by a preponderance of the evidence that she has acquired prior
rights in the pleaded mark. The only admission that involves the mark WHO
MADE THE CAKE is found in Admission No. 2; however, this admission
merely establishes that respondent was “aware of the existence” of the mark
at the time respondent sought to register her own mark. There is no
admission, or any other evidence, regarding any rights that petitioner may
have in the pleaded mark WHO MADE THE CAKE for particular goods or
services. In fact, petitioner has not established when she began rendering
any services under the pleaded mark.
Having failed to prove prior rights in her pleaded mark, petitioner cannot
possibly prevail on the ground of priority and likelihood of confusion.
Nevertheless, for the sake of completeness, we address whether petitioner
has shown that there is a likelihood of confusion between her pleaded mark
and respondent’s registered mark.
Our likelihood of confusion determination under Section 2(d) 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 and Co., 476 F.2d 1357,
Cancellation No. 92054016

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177 USPQ 563 (CCPA 1973). In considering the evidence of record on these
factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). However,
in this proceeding and as already mentioned, petitioner has not demonstrated
what services, if any, she has been rendering under the pleaded mark. There
is no evidence that petitioner has used her pleaded mark in connection with
any of her pleaded retail or custom bakery services. Without such evidence,
we are unable to assess the similarity of the parties’ services. Respondent’s
admissions that “there is very little distinction between” the marks and that
respondent’s use of her mark “causes consumers who hear or read that name
to think of” petitioner (or petitioner’s mark) does not overcome this
deficiency. That is, even if we were to conclude that the marks are identical,
and they are not, we would still need to weigh the relationship of the parties’
respective services as well as other du Pont factors in order to determine if
there is a likelihood of confusion. Simply put, we cannot find a likelihood of
confusion when petitioner has not presented any evidence that she has
rendered any of the pleaded services in her petition for cancellation.
Decision: The petition for cancellation is dismissed.