New Jersey Basketball, LLCv.Cybervillage Corporation

Trademark Trial and Appeal Board

Sep 9, 2013

No. 91201370 (T.T.A.B. Sep. 9, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
September 9, 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
_____

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:

Applicant, Cybervillage Corporation, seeks registration of the mark
WWW.BROOKLYN-NETS.TV in standard characters for services ultimately
identified in the application as:
Promoting the goods and services of others, namely, the Dr. Cassagnol
signature-lines of fine arts and higher technologies products and
services thru the Dr. Cassagnol publishing house, studios and museum
group by means of online and offline ordering and cataloging of those
goods and services in fine arts and high technologies, distributing
advertising materials through a variety of online and offline marketing
methods and promotional contests of the Dr. Cassagnol publishing
Opposition No. 91201370

2

house, studios and museum groups, and by arranging for sponsors to
affiliate their goods and services with the Dr. Cassagnol publishing
house, studios and museum group’s activities through the Dr.
Cassagnol organizational global high-tech network of the Dr.
Cassagnol publishing house, studios and museum group’s duly
registered web addresses

in International Class 35 on the Principal Register.1
Opposer, New Jersey Basketball, LLC, has opposed registration of applicant’s
mark on the ground that, as used in connection with applicant’s services, the mark
so resembles opposer’s previously used and registered marks NETS, NEW JERSEY
NETS, NETS and design, NEW JERSEY NETS and design, NEW YORK NETS,
and NEW YORK NETS and design for entertainment services in the nature of
rendering live basketball games and basketball exhibitions, broadcasting basketball
entertainment television and radio programs, printed materials in the field of
basketball entertainment, and a variety of collateral merchandise, as to be likely to
cause confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).
Amended Notice of Opposition (November 4, 2011). Opposer pleaded several
registrations and applications for the above-noted NETS-formative marks. Opposer
alleges that its marks are famous. In addition, opposer asserted the grounds of
false suggestion of a connection under Section 2(a) of the Trademark Act, 15 U.S.C.
§ 1052(a), and dilution under Sections 13(a) and 43(c) of the Trademark Act, 15
U.S.C. §§ 1063(a) and 1125(c). We further find, as discussed infra, that the parties
have tried the claim of nonuse by implied consent.

1 Serial No. 76662605, filed on June 28, 2006, alleging 1979 as the date of first use and first
use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a).

Opposition No. 91201370

3

We construe applicant’s answer as a general denial.
THE RECORD
As a preliminary matter, we address an evidentiary issue. On December 14,
2011, the Board issued an order memorializing the results of a discovery conference
held on November 30, 2011. Board participation in the conference was requested by
applicant. The parties stipulated to: (1) service by e-mail and facsimile
transmission; (2) written discovery only; and (3) submission of testimony by
affidavit with evidentiary documents attached thereto. Bd. Order p. 4 (December
14, 2011).2 Applicant, in its testimony affidavit of Ambassador Dr. François
Cassagnol (Cassagnol Aff.), filed on October 9, 2012, states that:
Opposer has also ignored the Applicant’s multiple requests for their
officials in past contacts with me to be deposed in order for me to
reconfirm and to further prove that the Opposer has had zero interest
in the Brooklyn Nets’ Brands until 2011 while I’ve had full functional
control and full intellectual property rights of the Brooklyn Nets’
Brands under Louisiana Trademark Law… Cassagnol Aff. ¶ 21.

The stipulation in the Board order is clear on its face; discovery will be in
written form only, i.e., there can be no depositions, and testimony is to be submitted
only in affidavit form. There is no reserved right in the stipulation to call a witness

2 In view of opposer’s proven prior registrations, priority is not in issue, as discussed, infra.
However, we note that the parties also stipulated “that, subject to proof, applicant intends
to rely upon the 2003 filing date of its application to register the involved mark in the State
of Louisiana as its date of first use herein.” Id. The Board order included a footnote
explaining the type of evidence that could be used to support a showing of first use,
including evidence of annual sales figures and evidence of first sales. In direct conflict with
this stipulation, applicant, in its brief, discusses a variety of first use dates that pertain to
other matter, including the 1979 date listed in its application, which applicant attempts to
link to the applied-for mark. To the extent applicant believes the filing date of a state
trademark application serves to prove use of a mark sufficient to support federal
registration, applicant is mistaken and, as discussed infra, this record does not
demonstrate bona fide use of the applied-for mark for the recited services.
Opposition No. 91201370

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for an oral examination, even for cross examination. It was simply too late for
applicant to withdraw that stipulation during applicant’s testimony period, after
testimony for plaintiff had closed on September 10, 2012. Applicant could have filed
with the Board a motion to withdraw the stipulation any time after December 14,
2011 up until opposer’s testimony period, but did not do so.3 In view thereof, to the
extent this statement in the affidavit could be construed as a request to withdraw
its consent to the stipulation, it is denied as untimely.4
The pleadings herein are automatically of record and, by operation of the
Trademark Rules, the file of the opposed application is of record. Trademark Rule
2.122, 37 C.F.R. § 2.122. Opposer submitted, pursuant to the stipulation of the
parties memorialized in the December 14, 2011 Board order, testimony by affidavit,
with exhibits, of the following witnesses:

3 While applicant indicates in the Cassagnol affidavit that it sent letters to the Trademark
Commissioner’s Office, that Office does not have jurisdiction over an inter partes proceeding
and such letters are not motions before the Board. Indeed, these letters were only made of
record in this proceeding during applicant’s testimony period and it appears these letters
were sent to the Commissioner also at a time which would in any event have been too late
to request a withdrawal of that stipulation. Further, many of applicant’s arguments seem
to go to opposer’s applications for and subsequent registration of various BROOKLYN
NETS marks, which have filing dates that postdate applicant’s filing date. These
registrations were not pleaded and, as such, are not part of this proceeding. If applicant
objected to these applications applicant could have filed opposition proceedings against
those applications during their individual publication periods.

4 We further note that the information applicant seeks is not dispositive of the case,
inasmuch as the fact that “Opposer did not show any interests in the Applicant’s Brooklyn
Nets; Brands/Marks” is not an element in the claims or defenses to the claims. The issue is
whether or not applicant had rights in the mark WWW.BROOKLYN-NETS.TV and/or what
rights opposer has established to various NETS-formative marks. In any event, to the
extent opposer’s rejection of applicant’s attempts to engage in a business opportunity with
applicant are relevant, applicant’s other evidence establishes these contacts and opposer’s
rejection of applicant’s offers.
Opposition No. 91201370

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Michael Allen, Vice President of Interactive Services at NBA
Properties, Inc. (Allen Aff.) (responsible for overseeing the Internet
content of NBA member teams, including opposer);

Ayala Deutsch, Senior Vice President and Chief Intellectual Property
Counsel at NBA Properties, Inc. (Deutsch Aff.) (responsible for
overseeing the global intellectual property rights for all NBA member
teams, including opposer);

Lisa Piken Koper, Vice President of Licensing in the Global
Merchandising Group at NBA Properties, Inc. (Koper Aff.) (responsible
for sales, licensing and distribution of consumer products under team
names, including NETS); and

Emilio Collins, Senior Vice President of Global Marketing
Partnerships at NBA Properties, Inc. (Collins Aff.) (responsible for
overseeing the global marketing partner relationships).

Opposer’s rebuttal witness is:
Daniel Meiseles, Executive Vice President and Executive Producer of
Production, Programming, and Broadcasting at NBA Properties, Inc.
(Meiseles Aff.) (responsible for overseeing the television broadcasts,
marketing, and branding of the NBA and its member teams).

All of the testimony affidavits include exhibits that consist of printouts from
the USPTO Trademark Electronic Search System (TESS) of opposer’s pleaded
registrations, which show that the registrations are subsisting and owned by
opposer.5
In addition, opposer submitted under notices of reliance the specimens of use
and the outgoing office actions in the subject application file. Opposer is advised
that this was unnecessary inasmuch as these specimens and office actions were

5 Pleaded registrations may be made of record by submitting “a current printout of
information from the electronic database records of the USPTO showing the current status
and title of the registration.” Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d).

Opposition No. 91201370

6

already of record, as indicated above. Trademark Rule 2.122. See also Cold War
Museum Inc. v. Cold War Air Museum Inc., 92 USPQ2d 1626 (Fed. Cir. 2009).
Applicant submitted the testimony affidavit of its owner, Ambassador Dr.
Cassagnol, and accompanying exhibits, including what appears to be applicant’s
domain name registrations,6 pages showing various depictions of
WWW.BROOKLYN-NETS.TV, applicant’s proposal to a Mr. Randall Toure, Vice
President Community Affairs for Forest City Ratner Companies, documents that
are described as marketing materials, marketing artwork and lists of “global
brands,” cease and desist letters to opposer and others, documents showing
ownership of various Louisiana state trademark registrations in Dr. Cassagnol
Institute of Research, Inc., and letters to the USPTO.7 8

6 We note the second page in Exhibit B is faded and basically illegible.

7 Throughout his testimony affidavit Dr. Cassagnol discusses various matters that are not
germane to the case at hand; e.g., possible future civil and criminal complaints applicant
may bring, and the allowance by the Trademark Office of other applications not subject to
this proceeding (opposer’s registrations for BROOKLYN NETS that were not pleaded and
that have filing dates that postdate applicant’s filing date). As explained above, to the
extent applicant believed certain of opposer’s applications should not have been published
or registrations ultimately issued, applicant could have filed notices of opposition or
petitions for cancellation; however, these applications and registrations are not part of this
proceeding and the Board does not have jurisdiction to investigate the issuance of
registrations unless they are the subject of a Board proceeding. Further, applicant’s
request that we dismiss this case due to opposer’s “flagrant contempt of the [Board’s]
Order” is denied. Applicant asserts that opposer entered applicant’s “old corporate
financial statements” into the record without obtaining applicant’s permission as required
under the Board order. There is no such requirement in the Board’s December 14, 2011
order. Nor would this generally be a requirement in a Board proceeding. Perhaps
applicant is referring to the Board’s reference to the standard protective order that simply
provides for the handling of confidential information. If so, the protective order does not
require that the offering party obtain consent from the adverse party to submit such
information. We further note, the only financial statements submitted by opposer were
already of record under Trademark Rule 2.122(b) because they had been submitted as
specimens of use with the subject application. As to applicant’s proposals to opposer, at
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THE PARTIES
Opposer is a professional men’s basketball team. Opposer was a founding
member of the American Basketball Association, became a member team of the
National Basketball Association (NBA) in 1976, and has had a “continuous presence
in the New York metropolitan area for nearly half a century.” Meiseles Aff. ¶ 3.
Opposer has used various NETS marks in connection with its basketball
entertainment services and a variety of related services and collateral goods since
1968. Deutsch Aff. ¶ 7. Throughout this time, opposer has used NETS in
connection with or prefaced by its geographic locations, i.e., New York, New Jersey
and now Brooklyn. From 2003, opposer was in the process of being relocated to
Brooklyn and in 2012 completed that move and began use of its NETS mark with
BROOKLYN (BROOKLYN NETS).
As early as August, 2003, reports of opposer’s possible relocation from New
Jersey to Brooklyn garnered widespread attention in the media, in particular in the
New York area. Deutsch Aff. ¶ 8. See, e.g., Deutsch Aff. Exh. C (The New York
Times (August 8, 2003) “If YankeeNets dissolves … it could ultimately result in the

least one of these proposals was also provided by applicant as a specimen of use in the
subject application and others were submitted under applicant’s testimony affidavit. None
of these materials was provided by applicant under seal, i.e., as confidential.

As clearly stated in the Board order the only issue here is applicant’s right to register the
mark WWW.BROOKLYN-NETS.TV; not applicant’s other domain names or opposer’s
rights in the phrase BROOKLYN NETS. Board Order p. 2.

8 The notice of reliance submitted on the same day as applicant’s brief, May 23, 2012, is
untimely and has been given no consideration. Trademark Rule 2.123(l); Baseball America
Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1846 n.8 (TTAB 2004). We note that the
documents under this notice of reliance would not alter our decision.
Opposition No. 91201370

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relocation of the New Jersey Nets … to New York … individual owners and suitors
are exploring the idea of bringing the Nets to Brooklyn … Lewis Katz, a wealthy
businessman from New Jersey and a principal owner of the Nets, could join with the
developer Bruce Ratner in moving the teams to downtown Brooklyn … Katz has
been having more success in his discussions with Ratner about Brooklyn, where the
two men figured that a large-scale real estate project could jolt the downtown
neighborhood … The site, which includes a rail yard and public and private land,
strikes a historical echo in Brooklyn. In the 1950’s, Walter O’Malley, the owner of
the Brooklyn Dodgers, wanted to build a stadium there to replace Ebbets Field.
When he failed to gain permission, O’Malley moved the Dodgers to Los Angeles,
leaving a hole in the Brooklyn psyche. Brooklyn Borough President Marty
Markowitz has already embraced the Nets … ‘It would be returning to Brooklyn
that which was unceremoniously taken away from us in 1957’”); The New York
Times (September 16, 2003) “YankeeNets Officially put the Nets up for sale
yesterday … There are three possible buyers for the team. Lewis Katz, an owner of
the Nets, has aligned himself with the real estate developer Bruce Ratner to buy the
team and move it to downtown Brooklyn”); The New York Times (October 15, 2003)
(Pro Basketball; Nets in Brooklyn? These Stars Support It”); The New York Times
(January 25, 2004) “By Wednesday morning, Bruce C. Ratner had nearly sealed his
$300 million offer to buy the Nets and move them to Brooklyn.”); PRO
BASKETBALL (January 24, 2004) “At a news conference yesterday that was filled
with hugs, jokes and unabashed good cheer, Bruce C. Ratner announced that he had
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officially signed a contract to take control of Nets, whom he plans to move to
Brooklyn in about three years.”; Daily News (August 12, 2004) “NBA owners
unanimously approved the sale of the New Jersey Nets to developer Bruce Ratner
yesterday … Ratner and his partners, who plan to relocate the team to Brooklyn,
are expected to finalize the deal next week.”). Fans and the general public, at least
in the New York area, have been made aware of relocation plans to Brooklyn since
at least as early as August, 2003. Deutsch Aff. Exh. C and Collins Aff. ¶ 5.
Applicant, Cybervillage Corporation, was founded and is solely owned by
Ambassador Dr. François Cassagnol. Cassagnol Aff. ¶ 1. Both are located in New
York City. One of Dr. Cassagnol’s other corporate entities, the Dr. Cassagnol
Institute of Research Inc., owns a variety of Louisiana State trademark
registrations. Specifically, applicant asserts “[a] new trademark application was
applied for in April 15th 2003 and a Louisiana Trademark Certificate was issued in
May 17th, 2004 under The B’Klyn Pro-Sports Association, and thereafter this latter
was converted into this present Brooklyn Nets Entertainment Network, and this
last Louisiana Trademark With Validation Certificate # 10244605#DSL73 …” App.
Br. p. 3. However, there is no evidence of any Louisiana trademark registration
showing a filing date of April 15, 2003. The record includes a Louisiana trademark
certificate for the mark “THE B’KLYN PRO-SPORTS ASSOCIATION
WWW.BROOKLYN-NETS.TV; .INFO; .US; .ORG; WS;BIZ; .SHOP; AND ALL…
PROMOTING NEW YORK CITY AS THE PRO-SPORTS CAPITAL OF THE
WORLD! & LOGO” that was “filed and recorded” on May 17, 2004. That
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registration asserts a first use date of February 14, 1996. The record also includes a
separate Louisiana trademark with the certificate number ending DSL73 which is
for the mark “THE BROOKLYN NETS ENTERTAINMENT NETWORK LOGO.”
This registration asserts a first use date of April 15, 2003, and was “filed and
recorded” on February 10, 2012. App. Exh. J. It appears that the April 15, 2003
date referred to in applicant’s brief is simply an asserted first use date, not a filing
date. The earliest Louisiana state trademark filing for a mark that incorporates
“BROOKLYN NETS” that is of record is May 17, 2004. Thereafter, applicant filed
the subject application on June 28, 2006. Both dates are long after public
announcement by certain developers to move the NETS from New Jersey to
Brooklyn. In addition, the record shows that applicant’s web address
WWW.BROOKLYN-NETS.TV was inactive, at least at the time of trial, and that
applicant owns 314 other web addresses.
STANDING
Opposer has made of record its pleaded U.S. registrations, as detailed infra,
and has thereby established its standing to bring this proceeding. Cunningham v.
Laser Golf Corp., 222 F.3d 55 USPQ2d 1842 (Fed. Cir. 2000). If a plaintiff can show
standing on one ground, it has the right to assert any other grounds in an
opposition or cancellation proceeding. TBMP § 309.03(b).
NO BONA FIDE USE
The amended notice of opposition includes the following allegation:
Upon information and belief, Applicant has not made genuine use of
the Mark in commerce in connection with the relevant services.
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Therefore, the Nets have prior and superior rights based on the earlier
use of the Nets Marks.

Notice of Opposition ¶ 13.
Opposer then specifically recites Sections 2(a), 2(d) and 43(c) as the statutory
bases for its opposition but does not reference Sections 1, 2 or 45, the statutory
bases for a claim of nonuse. Notice of Opposition ¶ 17. Thus, to the extent opposer
did not adequately plead nonuse as a separate claim, we address whether the
parties have tried this claim by implied consent.
“Implied consent to the trial of an unpleaded issue can be found only where
the nonoffering party (1) raised no objection to the introduction of the issue, and (2)
was fairly apprised that the evidence was being offered in support of the issue.”
Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1656, aff’d, 637
F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011), quoting, TBMP § 501.03(b).
Applicant did not lodge an objection to any evidence or testimony introduced
by opposer on the basis that it was outside the scope of the pleadings.9 In addition,
applicant was fairly apprised that opposer intended to prove that applicant did not
use its proposed mark. Opposer made such allegations in its pleading, submitted
exhibits in support of these allegations, and argued the merits of the nonuse claim
in a separate section of its brief (II. D.) Further, applicant submitted exhibits to
rebut these allegations and presented argument in its brief in response to opposer’s
assertions regarding applicant’s possible nonuse of its proposed mark. Moreover, as

9 As noted above, applicant did, based on a different ground, make an untimely objection to
the submission of its financial statements and business proposals as being confidential, but
applicant itself had already placed all of the financial statements and most, if not all, of the
business proposals in the public record (including in its application as specimens of use).
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we stated in ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1045 (TTAB
2012):
[W]e acknowledge that the petition for cancellation did not include a
separate claim alleging that respondent’s nonuse of the mark at the
time of filing rendered the application void ab initio. Nonetheless,
paragraphs 11 and 13 of the petition for cancellation clearly put
respondent on notice that petitioner had alleged nonuse by respondent,
in particular, “on all recited goods at the time of the application” (¶13).
Such separate pleading of a nonuse claim, while preferable, is not,
however, critical, and the Board has found applications to be void ab
initio even when nonuse was not pleaded as a separate claim or issue.

In view of the above, we find the parties have tried the issue of nonuse by
implied consent.
Under Section 1(a) of the Trademark Act, a mark may not be registered
unless it is “used in commerce.” 15 U.S.C. § 1051(a)(1). “The term ‘use in
commerce’ means the bona fide use of a mark in the ordinary course of trade … on
services when it is used or displayed in the sale or advertising of services and the
services are rendered in commerce, or the services are rendered in more than one
State or in the United States and a foreign country and the person rendering the
services is engaged in commerce in connection with the services.” 15 U.S.C. § 1127.
“The word ‘commerce’ means all commerce which may lawfully be regulated by
Congress.” 15 U.S.C. § 1125. Mere use in intrastate commerce10 does not constitute
use in commerce regulated by Congress (that is, the type of use essential to

10 We hasten to add that services provided in one state may rise to the level of interstate
commerce and as such fall within the definition of commerce. See, e.g., Larry Harmon
Pictures Corp. v. The Williams Restaurant Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir.
1991).
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obtaining a federal registration of a mark). In re Mother Tucker’s Food Experience
(Canada) Inc., 925 F.2d 1402, 17 USPQ2d 1795 (Fed. Cir. 1991).
Where it is found that there has been no use of the mark in connection with
any of the applied-for services prior to the filing of an application filed under
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), the application is void ab
initio. ShutEmDown Sports, 102 USPQ2d 1036.
The services recited in the application are:
Promoting the goods and services of others, namely, the Dr. Cassagnol
signature-lines of fine arts and higher technologies products and
services thru the Dr. Cassagnol publishing house, studios and museum
group by means of online and offline ordering and cataloging of those
goods and services in fine arts and high technologies, distributing
advertising materials through a variety of online and offline marketing
methods and promotional contests of the Dr. Cassagnol publishing
house, studios and museum groups, and by arranging for sponsors to
affiliate their goods and services with the Dr. Cassagnol publishing
house, studios and museum group’s activities through the Dr.
Cassagnol organizational global high-tech network of the Dr.
Cassagnol publishing house, studios and museum group’s duly
registered web addresses.

Dr. Cassagnol testified that he is “the Founder & Chairman of the Board of
Directors of a 33-year-old corporation registered in Delaware and is currently
permitted to do business in Louisiana as a Foreign Corporation and both entities
are presently in good standing and of which the CyberVillage Corporation and The
Brooklyn Nets Entertainment Network are both legally registered and bona fide
Louisiana Trademarks registered thru the Dr. Cassagnol Institute of Research, Inc.
… All corporate assets from this 33-year-old corporation, are fully owned and
control by Ambassador Dr. François de Cassagnol, a Certified New York State
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Minority Business Enterprise and the principal applicant and listed owner of this
Brooklyn Nets’ Mark #76/662.605.” Cassagnol Aff. ¶ 1.
Regarding its use of the applied-for mark, applicant has submitted testimony
that:
(1) Dr. Cassagnol presented numerous proposals to opposer and the
NBA beginning in 2005;

(2) Multiple “Brooklyn Nets; Brands are currently registered live
Louisiana Trademarks … almost ten years ago”;

(3) There are “20+ Web Extensions that are fully registered on and off
the Internet since their inceptions and I’ve [applicant and Dr.
Cassagnol] maintained my portfolio of Web Addresses with
GoDaddy.Com Register”; and

(4) “I’ve continuously used my Brooklyn Nets; Network On and Off the
Internet thru my Commercial ArtWorks, my Music Promoting others
thru my Dr. Cassagnol Designer’s Artworks and related Musikal
Tracks and this is to confirm that any day from now, a series of our Dr.
Cassagnol Designer’s Products … will globally reach our targeted
marks thru the Apple Stores’ and the TuneCore Stores’ & related
Commercial Platforms.”

Cassagnol Aff. ¶¶ 1-4, 13.
In connection with the Louisiana trademarks, applicant explains, through
the testimony of Dr. Cassagnol, that it has “fully registered Louisiana Brooklyn
Nets’ Trademarks & its Brooklyn Nets; Brands as a valid and bona fide set of
Brooklyn Nets; Marks/Brands as registered thru the State of Louisiana Trademark
Office, and valid until 2022 thru the Applicant’s 33-year-old parent corporation: the
Dr. Cassagnol Institute of Research, Inc.,” Cassagnol Aff. ¶ 10. Further, applicant
asserts that “from 1979 to 2012 for 33 years that the Dr. Cassagnol Institute of
Research, Inc. has had the Brooklyn Nets’ Brands and the Brooklyn Nets’ Marks
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under the organizational umbrella of its parent corporation for almost 10 years
[and] legally valid Louisiana Brooklyn Nets’ Marks that I’ve been using for more
than 9 years under the organizational umbrella of my 33 years old parent
corporation, the Dr. Cassagnol Institute of Research, Inc.” Cassagnol Aff. ¶¶ 11-12.
Dr. Cassagnol further testifies that he has “full ownership of such Brooklyn Nets’
Marks, from which 21 of my global Web Addresses and extensions are registered
thru major Internet Registrars in the US, in China, in Europe, in the Pacific Islands
and in Canada and I’ve maintained full control of these Brooklyn Nets;
Entertainment Network’s Trademarks that are valid until 2022 thru my
trademarks registered thru the Louisiana Office of Trademark.” ¶ 15.
None of the described “uses” constitutes the type of bona fide use sufficient to
support federal registration. Presenting proposals is not “rendering” a service. The
state trademark registrations have no legal effect on these proceedings because they
are not proof of commercial use of a mark and the state registrations themselves
confer no rights to applicant relevant to federal registration. The act of registering
one’s own domain names is not a registrable service mark use. We further note that
the record establishes that at the time of trial applicant’s web address
www.brooklyn-nets.tv “links to an inactive website” and applicant is listed as
owning 314 domain addresses on whois.domaintools.com. Deutsch ¶ 8, Exh. F.
Finally, there is no evidence to support the statement that applicant used the
applied-for mark to promote others. The documents merely show the domain name
www.brooklyn-nets.tv displayed on what may be a website, in conjunction with Dr.
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Cassagnol’s name and the names of his other entities. Such a listing does not
constitute a service for the benefit of others and there is nothing in these documents
to demonstrate online and offline ordering or cataloging or distribution of
advertising materials for others. Moreover, the statement “any day from now, a
series of our Dr. Cassagnol Designer’s Products … will globally reach” indicates use
commencing in the future, i.e., not at the filing date, and confirms the use is not for
others but for applicant’s founder and sole owner.
As the evidence of record shows applicant’s mark was not in use in commerce
in connection with any of the services identified in the application at the time the
application was filed, we find that the application, based on Section 1(a), is void ab
initio and must be refused.
Although we have determined that applicant did not make bona fide use of
the mark in connection with the recited services as of the filing date of its
application, we also take up for consideration the claim of likelihood of confusion
under Section 2(d) of the Trademark Act.
PRIORITY AND LIKELIHOOD OF CONFUSION
The pleaded registrations made of record,11 which are in full force and effect
and are owned by opposer, are summarized as follows:
Registration No. 2603964 for the mark for “Computerized on-
line store, ordering, retail, electronic retailing, catalog, and mail order
catalog services featuring audio recordings; video recordings; computer
accessories; computer games; computer software; computer databases;
video games; telephones; binoculars; eyewear; magnets; collectible and

11 Allen Aff. Exh. B.
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novelty items; collectible coins; medallions; albums; scrapbooks; photo
frames; sports memorabilia; timepieces; jewelry; jewelry boxes; credit
cards; calling cards; publications; calendars; catalogs; organizers;
directories; stationery; school supplies; giftware; gift sets; portfolios;
posters; photos; trading cards; books; card holders; pamphlets;
pennants; flags; banners; souvenirs; catalogs; bank checks; bags; travel
bags; travel cases; sports bags; lunch boxes; wallets; umbrellas;
clothing; toys; games; sporting goods; Christmas ornaments;
decorations; housewares; lamps; lighting fixtures; beverageware;
kitchenware; household supplies; containers; boxes; bed, bath and
table linens; furniture; office furniture and accessories; lockers and
footlockers” in International Class 35, filed on December 8, 2000,
issued on August 6, 2002, Sections 8 and 15 combined declaration
accepted and acknowledged, renewed;

Registration No. 1209110 for the mark for “Entertainment
Services-Namely, Presentation of Basketball Games and Exhibitions”
in International Class 41, filed on March 27, 1981, issued on
September 14, 1982, Sections 8 and 15 combined declaration accepted
and acknowledged, last renewed May, 2003;

Registration No. 1209109 for the mark NEW JERSEY NETS in typed
form, with “NEW JERSEY” disclaimed, for “entertainment services,
namely presentation of basketball games and exhibitions,” in
International Class 5, Sections 8 and 15 combined declaration accepted
and acknowledged, renewed; and

Registration No. 2179495 for the mark for “entertainment
services in the nature of rendering live basketball games and
basketball exhibitions and the production and distribution of radio and
television broadcasts of basketball games and exhibitions” in
International Class 41, Sections 8 and 15 combined declaration
accepted and acknowledged, renewed.

Because opposer has made the pleaded registrations detailed above properly
of record, priority is not in issue as to these marks and the identified goods and
services. See King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
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182 USPQ 108 (CCPA 1974). Moreover, opposer has established prior use of its
common law word mark NETS in connection with entertainment services in the
nature of rendering live basketball games and basketball exhibitions, the
production and distribution of radio and television broadcasts of basketball games
and exhibitions, an online store featuring a variety of goods, and use of the mark on
a variety of collateral merchandise, including clothing, furniture and computer
games. Allen, Deutsch, Koper, and Collins Aff’s. Long prior to the filing date of the
subject application, which is the earliest date on which applicant can rely in view of
the absence of any credible evidence of earlier use of the mark for its identified
services, opposer has engaged in broad licensing and sponsorship programs and
cross-marketing with other’s brands. Id.
In addition, opposer pleaded ownership of application Serial No. 77873194 for
the mark BROOKLYN NETS in standard characters for:
Entertainment and educational services in the nature of ongoing
television and radio programs in the field of basketball and rendering
live basketball games and basketball exhibitions; the production and
distribution of radio and television shows featuring basketball games,
basketball events and programs in the field of basketball; conducting
and arranging basketball clinics and camps, coaches clinics and camps,
dance team clinics and camps and basketball games; entertainment
services in the nature of personal appearances by a costumed mascot
or dance team at basketball games and exhibitions, clinics, camps,
promotions, and other basketball-related events, special events and
parties; fan club services; entertainment services, namely, providing a
website featuring multimedia material in the nature of television
highlights, interactive television highlights, video recordings, video
stream recordings, interactive video highlight selections, radio
programs, radio highlights, and audio recordings in the field of
basketball; providing news and information in the nature of statistics
and trivia in the field of basketball; on-line non-downloadable games,
namely, computer games, video games, interactive video games, action
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skill games, arcade games, adults' and children's party games, board
games, puzzles, and trivia games; electronic publishing services,
namely, publication of magazines, guides, newsletters, coloring books,
and game schedules of others on-line through the Internet, all in the
field of basketball; providing an online computer database in the field
of basketball,

in International Class 41. After opposer’s main trial period, this application issued
into a registration on October 9, 2012.
Although opposer pleaded this application, because it did not register until
after the close of opposer’s trial period we do not sua sponte consider the pleadings
amended to assert this registration such that opposer may rely on it for the Section
7(b) presumptions in this case.12 However, opposer’s pleading includes allegations
regarding opposer’s efforts to move the NETS from New Jersey to Brooklyn, and the
record includes evidence establishing opposer’s ultimate success in that effort, and
subsequent actual service and trademark use of the name BROOKLYN NETS in
connection with basketball services and collateral goods and services. Thus,
opposer’s pleaded and proven BROOKLYN NETS application does add to the
evidence concerning likelihood of confusion, either in terms of similarity of the
marks or applicant’s possible intent, given the public association of opposer’s NETS
marks with the geographic indicator BROOKLYN prior to applicant’s filing date.
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, 177 USPQ 563

12 Similarly, we do not consider the pleadings amended to plead opposer’s other
BROOKLYN NETS registrations which were filed after applicant’s filing date and with one
exception issued during or after trial closed in this proceeding. Thus, opposer’s arguments
with regard to these registrations on the issue of priority have not been considered.
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(CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). Two key considerations are the similarities between
the marks and the similarities between the goods and services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Because opposer’s marks with additional wording arguably contain additional
points of difference with applicant’s mark, we confine our analysis to the issue of
likelihood of confusion between applicant’s mark and opposer’s mark in
Registration Nos. 2603964 and 2179495 and opposer’s common law NETS mark
(NETS marks). See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
Fame
Because fame plays a dominant role in the likelihood of confusion analysis,
we first address opposer’s assertion that its NETS marks are famous. Kenner
Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456
(Fed. Cir. 1992). See also Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894,
1897 (Fed. Cir. 2000). “[T]he fame of a mark may be measured indirectly, among
other things, by the volume of sales and advertising expenditures of the goods
traveling under the mark, and by the length of time those indicia of commercial
awareness have been evident.” Bose Corp. v. QSC Audio Products, Inc., 293 F.3d
1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002).
Opposer has established that its NETS marks are famous for basketball and
related goods and services. As noted above, the NETS marks have been in use since
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1968. The market valuation by Forbes for the NETS marks is three-hundred fifty-
seven million dollars. Deutsch Aff. ¶ 7. Over the years “some of the most famous
players in the history of basketball – including ‘Dr. J’ (Julius Erving)…and Jason
Kidd” have been associated with the team. Meiseles Aff. ¶ 3.
Opposer has had a website under the NBA umbrella since 1995 which is
“widely popular and heavily trafficked.” Allen Aff. ¶ 3. The website is “heavily
trafficked” by fans who purchase NETS marks branded products. Id. Between
October 2006 and August 2012 there have been more than sixty two million page
views from more than twenty-three million daily unique visitors. Allen Aff. ¶ 7,
Exh. C. In addition, there are many viewers of NETS basketball entertainment at
live games and through television programming and other related services. Allen
Aff. ¶ 3.
Opposer places its NETS marks on a wide variety of goods, including
clothing, housewares, furniture, automotive accessories, sporting goods, toys and
games, clocks, bags, jewelry, appliances, electronics, computer and video games, etc.
Koper Aff. ¶ 4. Opposer licenses NETS branded products with many companies,
including Adidas, Spalding, Electronic Arts. Koper Aff. ¶ 5. These goods are offered
online, on the NBA website and several third-party websites, and at retail stores
such as Modell’s, Sports Authority, Dick’s Sporting Goods and Foot Locker. Koper
Aff. ¶ 7. Opposer’s sales of NETS branded merchandise is substantial. Koper Aff.
¶8, Exh. E. The products bear variations of the NETS marks and prominently
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display the name NETS. See Koper Aff. Exh. A and B. A few examples are shown
below:
13
(shot glass)14
The Nets also have sponsorship partner relationships with large well-known
companies, including American Express, Coca Cola, State Farm, Taco Bell, GEICO,
Calvin Klein, Red Bull, McDonalds and Starbucks. Collins Exh. C (listing partners
from 1983-2012). The cross-promotional activities with these companies include
featuring game action footage and/or photographs that depict team logos, including
the various NETS marks. Collins Aff. ¶ 6. Over many years, millions of fans and

13 Catalogues from 1985-1990.

14 Id.
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the general public have been exposed to NETS branded merchandise. Koper Aff. ¶
9.
Opposer’s NETS marks are widely viewed on television broadcasts of
basketball games, at sports arenas, and through advertising and sponsorships.
Millions of fans are exposed to the NETS branded services and products. Deutsch
Aff. ¶ 6.
From 2001 through 2011 seven million two-hundred-twelve thousand three-
hundred-eighty-five people attended Nets games. Aff. Collins ¶ 4. Millions have
been exposed to NETS branded products and entertainment services and, since
2003, the relocation plans from New Jersey to Brooklyn. Collins Aff. ¶ 5. In
addition, Nets games have been and continue to be televised nationally on broadcast
and cable channels ABC, ESPN, ESPN2, Turner and NBATV. Nets games also
routinely receive television coverage on nightly news shows and sports shows
featuring team scores, game footage, game statistics, and interviews with players
and coaches. Collins Aff. ¶ 5. From 1992 – 2011 at least 36,836,000 people and
28,174,000 households watched televised Nets games. In view of the above, the
fame of opposer’s NETS marks weighs heavily in opposer’s favor.
Similarity of the Marks
We now consider the similarity or dissimilarity of applicant’s mark
WWW.BROOKLYN-NETS.TV and opposer’s NETS mark when compared in their
entireties in terms of appearance, sound, connotation and commercial impression.
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24

There can be no question that the additional elements WWW. and the top
level domain (TLD) .TV in applicant’s mark do not serve to distinguish the mark
from opposer’s NETS mark. These merely indicate that the term is a domain name
or web address. These elements have less significance in determining likely
confusion. See Apple Computer v. TVNET.net Inc., 90 USPQ2d 1391, 1396-7 (TTAB
2007). See also Cunningham v. Laser Golf Corp., 55 USPQ2d at 1846, quoting, In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1983)
(“Regarding descriptive terms, this court has noted that the descriptive component
of a mark may be given little weight in reaching a conclusion on the likelihood of
confusion”); and In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(disclaimed matter is often “less significant in creating the mark’s commercial
impression”).
The marks are similar in appearance in view of the fact that applicant’s mark
incorporates the entirety of opposer’s common law mark NETS and the dominant
element of opposer’s registered mark , only differing by applicant’s
hyphenated addition of the geographic term BROOKLYN. As noted above, for over
four decades, opposer has used the NETS mark with its geographic locations, i.e.,
New York, New Jersey and now Brooklyn. In addition, from 2003 on, the public
was widely exposed to opposer’s relocation process to Brooklyn which was completed
in 2012. Given the fame of the NETS marks, the association of this mark with
different geographic locations in the New York City area, the use of NETS in
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25

applicant’s mark creates a strong similarity in the appearance, sound, connotation
and commercial impression of the marks.
On balance, we find the similarities outweigh the dissimilarities and that
applicant’s mark WWW.BROOKLYN-NETS.TV would be perceived as a variation of
opposer’s NETS marks.
Similarity of Services, Channels of Trade and Classes of Consumers
We turn next to a consideration of the services, channels of trade and classes
of purchasers. We must make our determinations regarding these factors based on
the services as they are recited in the registrations and application. See In re
Elbaum, 211 USPQ 639 (TTAB 1981).
Applicant’s services (emphasis added) are:
Promoting the goods and services of others, namely, the Dr. Cassagnol
signature-lines of fine arts and higher technologies products and
services thru the Dr. Cassagnol publishing house, studios and museum
group by means of online and offline ordering and cataloging of
those goods and services in fine arts and high technologies,
distributing advertising materials through a variety of online
and offline marketing methods and promotional contests of the Dr.
Cassagnol publishing house, studios and museum groups, and by
arranging for sponsors to affiliate their goods and services
with the Dr. Cassagnol publishing house, studios and museum
group’s activities through the Dr. Cassagnol organizational global
high-tech network of the Dr. Cassagnol publishing house, studios and
museum group’s duly registered web addresses.

Opposer’s registered services (emphasis added) include:
Computerized on-line store, ordering, retail, electronic retailing,
catalog, and mail order catalog services featuring audio
recordings; video recordings; computer accessories; computer games;
computer software; computer databases; video games; telephones;
binoculars; eyewear; magnets; collectible and novelty items; collectible
coins; medallions; albums; scrapbooks; photo frames; sports
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memorabilia; timepieces; jewelry; jewelry boxes; credit cards; calling
cards; publications; calendars; catalogs; organizers; directories;
stationery; school supplies; giftware; gift sets; portfolios; posters;
photos; trading cards; books; card holders; pamphlets; pennants; flags;
banners; souvenirs; catalogs; bank checks; bags; travel bags; travel
cases; sports bags; lunch boxes; wallets; umbrellas; clothing; toys;
games; sporting goods; Christmas ornaments; decorations; housewares;
lamps; lighting fixtures; beverageware; kitchenware; household
supplies; containers; boxes; bed, bath and table linens; furniture; office
furniture and accessories; lockers and footlockers; and

entertainment services in the nature of rendering live basketball
games and basketball exhibitions and the production and distribution
of radio and television broadcasts of basketball games and exhibitions.

Applicant’s listed services for online ordering of goods are encompassed by
opposer’s online retail store which offers ordering services. It is sufficient for a
finding of likelihood of confusion if the relatedness is established for any item
encompassed by the identification of goods or services within a particular class in
the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986 (CCPA 1981).
In addition, opposer has established common law rights in its NETS mark in
connection with a variety of goods and services for which opposer engages in broad
licensing and sponsorship programs with other companies that include cross-
branding. Under these circumstances, applicant’s services of promoting the goods
and services of others are commercially related to opposer’s goods and services
inasmuch as they also involve “arranging for sponsors to affiliate their goods and
services with the Dr. Cassagnol publishing house,” which is a similar activity to
opposer’s sponsorship programs. At a minimum applicant’s arranging for sponsors
and affiliations could include marketing to opposer’s licensing partners under a
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27

mark that incorporates opposer’s famous NETS mark that is used in broad licensing
and cross-branding programs, as noted below.
Considering the channels of trade and classes of purchasers, because there
are no limitations in the opposer’s registrations and the subject application, we
presume the parties respective services travel in all normal channels of trade and
are offered to all potential consumers for these types of services. In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). See also Hewlett-Packard
Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) and In re
Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). The services of promoting
others’ goods and services through online and offline ordering and cataloging of
goods and services, distributing advertising online and offline and arranging for
sponsors to affiliate their goods and services, overlap with the channels of trade for
applicant’s identified online retail services and its entertainment services that are
viewed on television and online. In addition, opposer’s licensees and sponsors would
also be potential customers of applicant’s services of promoting the goods and
services of others and arranging for sponsors.
Conclusion
In conclusion, because opposer’s NETS marks are famous, the marks are
similar, the services are related and the channels of trade and classes of consumers
overlap, confusion is likely between opposer’s NETS marks and applicant’s proposed
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mark WWW.BROOKLYN-NETS.TV. To the extent we have doubt as to whether
there is a likelihood of confusion, we resolve it in favor of opposer, the prior user and
registrant. Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12
USPQ2d 1901, 1904 (Fed. Cir. 1989) quoting Planter’s Nut & Chocolate Co. v.
Crown Nut Co., Inc., 305 F.2d 916, 134 USPQ 504, 511 (CCPA 1962) (“[T]here is ‘no
excuse for even approaching the well-known trademark of a competitor … and that
all doubt as to whether confusion, mistake, or deception is likely is to be resolved
against the newcomer, especially where the established mark is one which is
famous. …’”). See also In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1691
(Fed. Cir. 1993).
In view of our determinations on the nonuse claim and the likelihood of
confusion claim, we do not reach the claims under Section 2(a) (false suggestion of a
connection) and 43(c) (dilution).
Finally, we note that if, on any possible appeal, our determinations of nonuse
and likely confusion are reversed, we will remand the application for further
examination inasmuch as the evidence adduced during the proceeding has raised
the question of whether applicant is rendering a registrable service. The
identification, while indicating in the first clause that applicant is “promoting the
goods and services of others,” is then limited by the next clause to “namely, for the
Dr. Cassagnol signature-lines of fine arts and higher technologies products and
services.” Dr. Cassagnol is the signatory on the application and is listed as being
the President and Chairman and Founder of Cybervillage Corporation, the
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29

applicant. The record further reveals that Dr. Cassagnol controls all assets of
applicant, thus, it appears that the service is not for others but rather for applicant
itself, the alter ego of Dr. Cassagnol. See Cassagnol Aff. ¶ 1 (“All corporate assets
… are fully owned and control [sic] by Ambassador Dr. François de Cassagnol … the
principal applicant and listed owner of this Brooklyn Nets; Mark # 76/662.605.”). A
service must be performed for the benefit of someone other than the applicant and
must be qualitatively different from anything necessarily done in connection with
the sale of the applicant’s goods or the performance of another service. TMEP §
1301.01(a). To the extent the “others” referred to in the identification are those
entities applicant is attempting to arrange for sponsorship to affiliate with
applicant, this is not a registrable service. TMEP §§ 1301.01(a) and 1301.01(b)(i)
(the promotion of one’s own goods and services is not a service). In addition, a mere
concept of an idea is not a service. Id.
Decision: The opposition is sustained on the grounds of nonuse and
likelihood of confusion under Section 2(d).