New Jersey Basketball, LLCv.Cybervillage Corporation

Trademark Trial and Appeal Board

Dec 3, 2013

No. 91201370re (T.T.A.B. Dec. 3, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
December 3, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

New Jersey Basketball, LLC
v.
Cybervillage Corporation
_____

Opposition No. 91201370
to application Serial No. 76662605
filed on June 28, 2006
_____

Request for Reconsideration

Anil V. George, Ayala Deutsch, Erik J. Levin and Jason J. Porta of NBA Properties,
Inc. for New Jersey Basketball, LLC.

Ambassador Dr. François de Cassagnol for Cybervillage Corporation pro se.
_____

Before Seeherman, Kuhlke and Wellington, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On October 4, 2013, applicant filed a request for reconsideration of the
Board’s decision issued on September 9, 2013, in which the Board sustained
opposer’s opposition against registration of applicant’s mark based on the grounds
of no bona fide use, and priority and likelihood of confusion.
The purpose of a request for reconsideration is to point out errors made by
the Board in rendering its decision. Reconsideration may not be used to introduce
Opposition No. 91201370

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into the record additional evidence or to reargue points presented in the requesting
party’s brief on the case. Thus, the evidentiary exhibits attached to the request for
reconsideration will not be considered.1
By its decision, the Board found that opposer had established its standing
and priority based on its registrations and common law use of its NETS marks and
that applicant’s mark is likely to cause confusion with opposer’s NETS marks. The
Board specifically did not base its decision on any of opposer’s registrations for the
mark BROOKLYN NETS. In addition, the Board found that applicant did not have
sufficient bona fide use in commerce for its recited services to support Federal
registration.
Applicant’s request for reconsideration, for the most part, is directed at issues
that are not relevant to this proceeding. Specifically, all argument regarding
opposer’s failure to establish priority based on opposer’s use of BROOKLYN NETS
is irrelevant because the decision is not based on those marks as they were not
made a part of this proceeding.2 Rather, the decision is based on opposer’s pleaded
and proven registrations and common law use of NETS by itself, with a design, and
with the geographic designation New Jersey. Thus, regardless of whether applicant
had established a “10-year-old Brooklyn-Nets Brand” prior to opposer’s use of
BROOKLYN NETS, opposer’s use of its NETS marks predates such use by decades.

1 To the extent the evidentiary exhibits are simply copies from the trial record, they have
been considered.

2 Although one of opposer’s applications for BROOKLYN NETS had been pleaded, the
Board did not sua sponte amend the pleadings to include the subsequently issued
registration.
Opposition No. 91201370

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The only issue applicant perhaps addresses with regard to opposer’s NETS
marks is the finding of fame. Applicant takes issue with that finding because “the
NJNets has [sic] been the worst NBA Team before the NJNets’ Official Relocation to
Brooklyn in 2001, the team was and still is one of the worst team [sic] in the NBA
… and after they started to use the Petitioner/Applicant’s Brooklyn Nets’ iSignature
Brands and the Petitioner’s Brooklyn Nets’ Intellectual Assets without the
Petitioner’s permission, the team is now worth a bit over $500 Million.” Req. Recon.
p. 10. After review of the record, we find no error. The issue of fame pertains to the
mark NETS and that mark became famous long prior to the team’s move to
Brooklyn. Whether or not the team is excellent, good, bad or “the worst,” does not
detract from the finding of fame. In addition, the fact that the team has increased
in value since 2011, does not detract from the finding that it became famous prior to
that date.
Applicant’s arguments regarding the prosecution of opposer’s applications
and registrations that are not part of this proceeding are also not relevant, as noted
in the Board’s decision. Similarly, applicant’s assertions that Dr. Cassagnol
(applicant’s sole owner and founder) filed petitions to cancel opposer’s registrations
for BROOKLYN NETS marks, and complaint that the petitions were not instituted,
are not relevant to this specific proceeding. As explained in the decision, these
marks of opposer are not part of this proceeding and are not relevant to the
disposition in this case. This proceeding was based on opposer’s NETS marks.3

3 We note that the Board’s electronic file system, TTABvue, indicates the petitions were not
considered because petitioner did not include proof of service on the registrant as required
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With regard to the Board’s findings that the record did not support use by
applicant sufficient to support Federal registration, the Board finds no error in its
decision. Applicant argues that the Board improperly disregarded applicant’s
Louisiana state registrations as evidence of use to support Federal registration.
However, the state registration system is separate from the Federal registration
system. The state registration is not proof of interstate use, as required for Federal
registration. Thus, a state registration has no bearing on whether applicant had
made bona fide use in interstate commerce at the time it filed its application based
on Section 1(a) of the Trademark Act. However, the fact that the Board determined
that applicant did not have sufficient use to support Federal registration does not
“nullify the State of Louisiana Constitutional Rights to issue legal documents.”
Cover Letter for Req. for Recon. p. 2. The decision in no way affects the Louisiana
registrations. We further note the Louisiana registrations are not in the name of
applicant Cybervillage Corporation.
Applicant again asserts it used the applied-for mark to promote “the
candidacies of former Sen. Barack Obama, Former Sen. Hillary Clinton.” However,
the services recited in its application do not include political campaign services. In
any event, the evidence of record consisting of pictures of the candidates and
assorted wording, including WWW.BROOKLYN-NETS.TV, does not serve to show
use of the applied-for mark in the manner of a trademark for the applied-for
services.

by Trademark Rule 2.111. See
http://ttabvue.uspto.gov/ttabvue/v?pno=4273135&pty=MIS&eno=2 and
http://ttabvue.uspto.gov/ttabvue/v?pno=4237737&pty=MIS&eno=2.
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Applicant also asserts that it has maintained its domain name for
WWW.BROOKLYN-NETS.TV; however, registration and maintenance of a domain
name is not use of the mark for the applied-for services.
Applicant asserts that, contrary to the decision, applicant “had applied for
the B’Klyn Pro-Sports Association’s Trademark on April 15th, 2003” and that it is
“clear on records thru EXHIBITS M & N.” Req. for Recon. P. 14. While such date
does not appear in those exhibits, a review of the specimens included in the
application file reveals a Louisiana application dated April 15, 2003 for the trade
name or trademark “THE B’KLYN PRO-SPORTS ASSOCIATION;
WWW.BROOKLYN-NETS.TV AND ALL: PROMOTING NEW YORK CITY AS
THE SPORTS CAPITAL OF THE WORLD.” However, the listed trade name or
trademark on the application does not match the mark shown on the May 17, 2004
Louisiana registration, which is shown as “THE B’KLYN PRO-SPORTS
ASSOCIATION WWW.BROOKLYN-NETS.TV; .INFO; .US; .ORG; .WS/ BIZ;
.SHOP; AND ALL… PROMOTING NEW YORK CITY AS THE PROSPORTS
CAPITAL OF THE WORLD! & LOGO. Because these documents are part of the
subject application file they are of record; however, as shown above, the mark
shown in the Louisiana application does not exactly match the mark shown in the
Louisiana registration, and there is no testimony to explain the discrepancy.
Nonetheless, the decision is amended to reflect this Louisiana application is in the
record and that the date on this application is prior to the date of any evidence in
the record showing public announcement of the Nets basketball team moving to
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Brooklyn.4 This does not change the outcome of the decision inasmuch as the claim
of likelihood of confusion is based on the NETS marks which predate the Louisiana
registration and, in any event, the Louisiana registration has no effect on Federal
registration. These facts only have relevance to applicant’s possible bad faith in
filing the Federal registration and the decision was not based on, nor did it include
a determination on any possible bad faith by applicant.
Applicant asserts that opposer presented false information. For example,
applicant’s accusation that opposers are “Liars, Liars! Their pants are on fire,”
appears to concern the events that transpired between Dr. Cassagnol and various
persons associated with opposer between 2005 and 2012; specifically, that in 2005
applicant made an offer “to the Arena’s Developer for a $50 Million Cash Price for
the [applicant’s] Brooklyn Nets’ Assets with an option to develop the [applicant’s]
Brooklyn Nets Assets as a Minority Partner in lieu of cash, [etc.]” (Req. for Recon. p.
8) and opposer through various people had indicated it “had NO intention to use the
[applicant’s] Brooklyn Nets’ Brands” (id. p. 13). The fact that opposer did not
engage in business with applicant does not have any bearing on the Board’s decision
regarding the likelihood of confusion with opposer’s NETS marks (i.e., not opposer’s
subsequent use of NETS with BROOKLYN).
Finally, the Board reiterates its findings that the applied-for services may not
be a registrable service in that they appear to pertain to promoting opposer’s own
products. Applicant takes issue with the characterization of applicant being the

4 We note, however, that the 2006 filing date of the application that is the subject of this
proceeding is after the public announcements regarding opposer’s move to Brooklyn.
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“alter ego of Dr. Cassagnol”; however, applicant’s request for reconsideration simply
serves to support that determination. For example, applicant presents the request
for reconsideration as: “Petitioner/Applicant: Ambassador Dr. Françios de
Cassagnol Founder 7 Chairman of the Board of Directors Dr. Cassagnol Institute of
Research, Inc., A Delaware Corporation, a NYS Certified MBE, DBA: The Brooklyn
Nets Entertainment Network / CyberVillage Corporation / The Dr. Cassagnol
Publishing House, Studios & Museum Group / The Global Diaspora SuperPAC / The
Afro-Hispanic American Chambers of Commerce & The Virtual Churches
International.” The point is that, as written, the services appear not to be for an
independent third party but rather for applicant itself and that is not a registrable
service.
After carefully considering respondent’s request, we have determined that
the findings and legal conclusions that applicant did not establish sufficient use of
the mark in commerce as of the filing date of the application for the recited services,
and that opposer has priority and a likelihood of confusion exists with regard to
opposer’s NETS marks, are clearly supported and we do not find any error in
reaching those findings or legal conclusions. In view thereof, applicant’s request for
reconsideration of the Board’s decision is denied, and the decision of September 9,
2013 stands.