Parley, LLCv.Vi-Jon, Inc.

Trademark Trial and Appeal Board

Feb 27, 2015

No. 92055751 (T.T.A.B. Feb. 27, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed: February 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Parley, LLC

v.

Vi-Jon, Inc.
___

Cancellation No. 92055751
___

Matthew H. Swyers of The Trademark Company, PLLC for Parley, LLC.

Bernard W. Gerdelman and David M. Slaby of Paule, Camazine & Blumenthal, P.C.
for Vi-Jon, Inc.
______

Before Kuczma, Adlin and Hightower, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

Vi-Jon, Inc. (“Respondent”) owns a registration for the mark DIP-IT, in
standard characters, for “Nail polish remover.”1 In its petition for cancellation,
Parley, LLC (“Petitioner”) alleges prior use of, and ownership of a pending
application2 for, an identical mark for identical goods (as well as other nail-related

1 Registration No. 4142435, issued May 15, 2012 from an application filed September 21,
2011, based on first use dates of October 25, 2010.
2 Application Serial No. 85554508, filed February 28, 2012 based on first use on July 1,
2010 and first use in commerce on July 30, 2010. The application’s identification of goods in
its entirety is: “Adhesives for artificial nails; Cosmetic preparations for nail drying; False
Cancellation No. 92055751

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products), and that use of Respondent’s mark would be likely to cause confusion
with Petitioner’s mark. Petitioner specifically alleges that its application was
refused registration based on a finding that use of Petitioner’s mark would cause
confusion with Respondent’s identical registered mark. In its answer, Respondent
admits that it first used its mark on October 25, 2010, but otherwise denies the
salient allegations in the petition for cancellation.3
The Record and Evidentiary Objection
The record consists of the pleadings, the file of the involved registration,
Petitioner’s testimony deposition of Tuan Nguyen, M.D., one of its founders and
owners, and the exhibits thereto (“Nguyen Tr.,” TTABVue Dkt. No. 28), and
Respondent’s testimony deposition of Michael Denklau, its Senior Brand Manager,
and the exhibits thereto (“Denklau Tr.,” TTABVue Dkt. No. 26).
Petitioner objects to Exhibit A to Dr. Nguyen’s deposition, a document which
Respondent’s counsel introduced during cross-examination, on the grounds that it
was not produced during discovery and contains hearsay. While Petitioner failed to
establish that the document was requested and not produced during discovery, the
document is not properly authenticated, the statements included therein about

nails; Nail buffing preparations; Nail care kits comprising nail polish; Nail care
preparations; Nail care preparations, namely, nail softeners; Nail cream; Nail enamel; Nail
enamel removers; Nail enamels; Nail gel; Nail glitter; Nail hardeners; Nail polish; Nail
polish base coat; Nail polish protector in the nature of a thin plastic covering applied to
nails; Nail polish remover; Nail polish removers; Nail polish top coat; Nail strengtheners;
Nail tips; Nail-polish removers.”
3 Respondent also asserted an “affirmative defense” that is in fact an amplification of its
denials, and a purported counterclaim which was found untenable in the Board’s order of
September 7, 2012.
Cancellation No. 92055751

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which Respondent questioned Dr. Nguyen are hearsay and Respondent has not
responded to Petitioner’s objection. Accordingly, Petitioner’s objection is sustained
and neither Exhibit A to the Nguyen deposition, nor testimony about the document,
have been given any consideration.
Relevant Facts
Dr. Nguyen and his family have been in the “nail industry” since 1996, and in
June 2010 Dr. Nguyen and his brother and sister founded Dip-N-Go, LLC to offer
nail products, including an “acrylic dipping system” under the mark DIP-IT.
Nguyen Tr. at 7-8, 13. In July 2010, Dip-N-Go approached Tipsy Salon & Spa in
Jupiter, Florida, which is owned in part by Dr. Nguyen’s brother,4 about offering
DIP-IT products, or, as Dr. Nguyen framed it, using “the product as services” at the
salon. Id. at 7-8, 13, 26. Dr. Nguyen testified that Tipsy Salon first “used” the
“product,” presumably bearing the DIP-IT mark, on July 30, 2010, and that the
mark has been in continuous use since that time. Id. at 9, 13.5 On September 13,
2010, Dip-N-Go filed an application to register DIP-IT, in standard characters, for a
variety of nail products.6 Id. at 11 and Ex. 2. According to Dr. Nguyen, the
application was ultimately abandoned after Dip-N-Go unsuccessfully “tried to
change the ownership of the company from Dip-N-Go, LLC to [Petitioner] Parley,
LLC.” Id. at 11.

4 Dr. Nguyen acquired an ownership interest in Tipsy Salon & Spa in 2013. Nguyen Tr. at
27.
5 As discussed, infra, Petitioner did not clearly establish whether Tipsy made trademark
use of DIP-IT, offered services incorporating a DIP-IT product, both or neither.
6 Application Serial No. 85127910. The application itself is of record but the rest of the
application’s file history is not.
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In September 2010, Dr. Nguyen and his brother and sister (the same brother
and sister which founded Dip-N-Go) founded Petitioner, because “[w]e wanted to
change the company name from Dip-N-Go, LLC to Parley, LLC; hence why we
wanted to change the company name on the trademark” application. Id. at 12.
According to Dr. Nguyen, Petitioner is the “successor in interest” to Dip-N-Go.
During the first week of October 2010, Petitioner began promoting DIP-IT
products on its website accessible at “parleyllc.com,” and later promoted DIP-IT
products at trade shows. Id. at 17-20.7 However, the printout from Petitioner’s
website about which Dr. Nguyen testified is dated 2012, and Petitioner did not
participate in a trade show before 2011. Id. and Exs. 4-6. Similarly, the receipts
which Petitioner introduced and which according to Dr. Nguyen reflect sales of DIP-
IT products, are all dated 2011 or 2012. Id. at 13-15, 45 and Ex. 3.8 Petitioner
produced all documents in its possession which support its “claim of when DIP-IT
was first used.” Id. at 27.

7 Although Petitioner pleaded prior use of DIP-IT for nail polish remover, and sought
registration of the mark for nail polish remover, it has never in fact offered DIP-IT nail
polish remover. Nguyen Tr. at 40-44.
8 Petitioner designated the receipts “Confidential.”
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Id. at 45.
Respondent has sold its DIP-IT product continuously since October 25, 2010.
Denklau Tr. at 19-23 and Ex. D.9
Standing
Although Petitioner failed to prove, as alleged in its petition for cancellation,
that its application was refused based on Respondent’s registration, the mere
existence of Petitioner’s application for an identical mark for identical products
establishes its standing under the circumstances of this case. Toufigh v. Persona
Parfum Inc., 95 USPQ2d 1872, 1874 (TTAB 2010) (Petitioner’s standing established
by use of and ownership of an application to register an identical mark for related
goods, and “evidence of such a refusal [to register a petitioner’s mark] is not a
requirement to establish standing”). In any event, Petitioner established use of DIP-
IT prior to the filing date of its petition for cancellation. Giersch v. Scripps
Networks, Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (“Petitioner has established his
common-law rights in the mark DESIGNED2SELL, and has thereby established his
standing to bring this proceeding.”) and Syngenta Crop Prot. Inc. v. Bio-Chek LLC,
90 USPQ2d 1112, 1118 (TTAB 2009) (testimony that opposer uses its mark “is
sufficient to support opposer’s allegations of a reasonable belief that it would be
damaged …” where opposer alleged likelihood of confusion).
Priority

9 Respondent designated Exhibit D to the Denklau deposition as “Confidential.”
Cancellation No. 92055751

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“A party claiming prior use of a registered mark may petition to cancel the
registration on the basis of such prior use pursuant to section 14 of the Lanham Act.
15 U.S.C. Section 1064.” West Florida Seafood, Inc. v. Jet Restaurants, Inc., 31 F.3d
1122, 31 USPQ2d 1660, 1662 (Fed. Cir. 1994). However, “a presumption of validity
attaches to” Respondent’s involved registration, and Petitioner, the alleged prior
user, bears the burden of proving its claim of priority by a preponderance of the
evidence. Id.; Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d
1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989); Kohler Co. v. Baldwin Hardware
Corp., 82 USPQ2d 1100, 1105-06 (TTAB 2007).
“As a general matter, priority in a Trademark Act § 2(d) case goes to the
party which made first use of its mark on the relevant goods.” Cent. Garden & Pet
Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1139 (TTAB 2013). Here, Respondent
has established, and Petitioner does not dispute, that Respondent has continuously
used its mark for nail products since October 25, 2010. Denklau Tr. at 19-23 and
Ex. D; Petitioner’s Trial Brief at 1, 8. The question, therefore, is whether Petitioner
can establish its own priority date earlier than October 25, 2010.
“To establish priority, the petitioner must show proprietary rights in the
mark that produce a likelihood of confusion…. These proprietary rights may arise
from a prior registration, prior trademark or service mark use, prior use as a trade
name, prior use analogous to trademark or service mark use, or any other use
sufficient to establish proprietary rights.” Herbko International, Inc. v. Kappa
Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) [internal
Cancellation No. 92055751

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citations omitted]; Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 1320,
209 USPQ 40, 43 (CCPA 1981).10 Here, Petitioner does not claim to own a prior
registration or to use DIP-IT as a trade name.
Moreover, while Dr. Nguyen testified that Petitioner took certain actions
which could arguably, if they took place prior to Respondent’s date of first use, tend
to support a claim of use analogous to trademark use, such a claim must be pleaded
or tried by implied consent. Cent. Garden, 108 USPQ2d at 1142. It was neither. In
fact, Petitioner pleads prior “use” of DIP-IT, and that it “is the owner of the mark
DIP-IT,” but never pleads use analogous to trademark use. Petition for Cancellation
¶¶ 1-16 (emphasis added). Similarly, Petitioner alleges “priority of use” in its Trial
Brief, but never mentions or argues use analogous to trademark use. In short,
Petitioner did not introduce evidence intended or sufficient to prove use analogous
to trademark use, and even if it did, Respondent was not “fairly apprised” of
Petitioner’s intent to rely on analogous use and it would therefore be unfair to find
that the issue was tried by implied consent. TBMP § 507.03(b) (2014).
Petitioner must therefore establish prior trademark use. A mark is deemed to
be used in commerce on goods such as DIP-IT nail products when “it is placed in

10 There is no evidence, and Respondent does not argue, that DIP-IT is anything other than
inherently distinctive. See, e.g., Giersch, 90 USPQ2d at 1023 (“Respondent has not raised
an issue as to the distinctiveness of petitioner’s mark or otherwise put petitioner on notice
of this defense, and therefore we find that the mark is distinctive.”) (citing Wet Seal Inc. v.
FD Mgmt., Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) (absent argument or evidence from
applicant, opposer’s mark deemed distinctive)); Chicago Corp. v. N. Am. Chicago Corp., 20
USPQ2d 1715, 1717 n.5 (TTAB 1991) (rejecting applicant’s argument that opposer failed to
prove that its mark was distinctive where applicant failed to plead the issue or introduce
evidence of non-distinctiveness).

Cancellation No. 92055751

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any manner on the goods or their containers or the displays associated therewith or
on the tags or labels affixed thereto, or if the nature of the goods makes such
placement impracticable, then on documents associated with the goods or their
sale,” and “the goods are sold or transported in commerce.” 15 U.S.C. § 1127.
Here, Petitioner’s attempt to establish prior trademark use is based entirely
on Dr. Nguyen’s testimony. Indeed, Petitioner concedes that it introduced no
documentary evidence of prior trademark use. Petitioner’s Trial Brief at 6-8;
Nguyen Tr. at 27, 45. “While oral testimony, if sufficiently probative, is normally
satisfactory to establish priority of use in a trademark proceeding,” where oral
testimony is characterized “by inconsistencies, contradictions and uncertainties,” it
is not sufficient, standing alone, to establish priority. Powermatics, Inc. v. Globe
Roofing Products Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965); National
Blank Book Co., Inc. v. Leather Crafted Products, Inc., 218 USPQ 827, 828 (TTAB
1983). At the same time, however, we must weigh Dr. Nguyen’s testimony and
Petitioner’s other evidence, more specifically that which postdates Respondent’s
priority date, as a whole, rather than considering each piece of evidence in isolation.
West Florida Seafood, 31 USPQ2d at 1663 (“However, whether a particular piece of
evidence by itself establishes prior use is not necessarily dispositive as to whether a
party has established prior use by a preponderance. Rather one should look at the
evidence as a whole, as if each piece of evidence were part of a puzzle which, when
fitted together, establishes prior use.”).
Cancellation No. 92055751

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Dr. Nguyen’s testimony that Petitioner made prior use of DIP-IT is
characterized by inconsistencies, contradictions and uncertainties. For example:
Dr. Nguyen provided only his lay “opinion” that Petitioner
is the “successor in interest” to Dip-N-Go, rather than any
documentary evidence or even testimony about any
transfer of rights in the DIP-IT mark from Dip-N-Go to
Petitioner. Nguyen Tr. at 11-12.

When asked “How would a consumer receive the product
at a salon?,” Dr. Nguyen was unclear as to whether any
consumers actually purchased DIP-IT branded nail
products or simply received services which might have
involved use of DIP-IT, stating: “It will be services. If the
salon wanted to just do services or sell the products to the
client.” Id. at 15.

Although Dr. Nguyen testified that Petitioner had
multiple distributors of DIP-IT products, he could only
recall one of them. Id. at 16.

Dr. Nguyen testified that Petitioner advertised in a “nail
magazine,” but did not recall the name of the magazine or
when the ad appeared. Id. at 24.

When asked about Petitioner’s failure to produce the
alleged DIP-IT advertisement(s), Dr. Nguyen testified
“There are a couple missing documents in there that we
supplied with advertisement like the brochure. There is a
brochure somewhere. I remember sending it though. It
was kind of blurry, but it was sent, a brochure with the
DIP-IT.” Id. at 28-29.

When asked “Who manufactures the DIP-IT products?,”
Dr. Nguyen testified “It is a company – we bought
multiple powders from other, I guess, companies that
make the powders. I’m – manufacturers, excuse me. And
when we first initially did it, we used a different product
and revised it with our DIP-IT product.” Then when he
was asked “How many different powder manufacturers
have you used,” Dr. Nguyen testified “A lot. Like trial and
run that’s why. Some are good, some are bad.” Id. at 32-
33.
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Dr. Nguyen was asked “There’s no invoices or POs or
anything for the powder, the promoter or any other DIP-
IT product, correct?,” and he responded “Not here, but we
have it,” though it was not produced in discovery or
introduced at trial. Id. at 36-37.

Dr. Nguyen admitted that Petitioner must keep “records
concerning sales” for “accounting purposes,” but
Petitioner failed to produce any records predating
Respondent’s date of first use. Id. at 39.

Dr. Nguyen’s testimony about Petitioner’s use of DIP-IT in 2010 (the only use
which is alleged to predate Respondent’s use), is particularly troubling. First, as
Respondent points out, Dr. Nguyen testifies only that Petitioner’s alleged
predecessor-in-interest (whose relationship to Petitioner is entirely unclear from the
record) “approached” Tipsy Salon about using “the product” on July 1, 2010, and
that Tipsy finally used “it” on July 30, 2010. Id. at 9. There is no testimony,
however, much less other evidence, about whether, how, when or how extensively
Tipsy used the mark DIP-IT, as opposed to simply “using” a nail product. Even if
there was such evidence, there is no evidence of any sales or the transport of DIP-IT
products in commerce which predate Respondent’s date of first use, and no evidence
that the DIP-IT mark was placed on any goods, containers, displays, tags, labels or
documents associated with the goods or their sale prior to Respondent’s date of first
use. See Powermatics, 144 USPQ at 432 (“he did not state that he personally
observed the mark applied to any of the goods, nor could he recall for sure the
shipping of any panels marked with either ‘PANELUME’ or ‘PAN-ELUM’ in
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response to the newspaper ad … mere advertising and documentary use of a
notation apart from the goods do not constitute technical trademark use”).
Petitioner’s claim that Tipsy somehow first “used” the “product,” and its
unsupported suggestion that Tipsy used the DIP-IT mark prior to Respondent’s
priority date are problematic for another reason — Dr. Nguyen’s brother was one of
Tipsy’s owners at the time (and Dr. Nguyen himself is now one of Tipsy’s owners).
Id. at 26-27. Sales under or uses of a mark which are “between and within” a party’s
organization, or otherwise not public, “cannot be relied upon” to establish
proprietary rights. See generally McQuay-Norris Manufacturing Co. v. H-P Tool
Mfg. Corp., 141 USPQ 405, 406 (TTAB 1964). Similarly, sales to affiliated
individuals are insufficient.
Jaffe’s early transactions consisted solely of nominal or
token sales to personal friends and relatives. Such
transactions do not constitute “such a bona fide
commercial operation as would entitle him to claim
ownership of the mark.” … Federal trademark laws are
not invoked by a small, isolated shipment of goods
between business associates. A user’s early sales to
friends and relatives do not “actually put the product on
the market,” so that trademark rights will attach.

Jaffe v. Simon & Schuster Inc., 3 USPQ2d 1047, 1050 (S.D.N.Y. 1987); see also
Times Mirror Magazines, Inc. v. Sutcliffe, 205 USPQ 656, 662-63 (TTAB 1979) (to
qualify as a “bona fide” transaction for purposes of establishing priority, “the initial
shipment should not be contrived or fabricated but rather it should be open and
notorious and made as a part of a commercial or related transaction directed to
customers or potential customers for such goods with the purpose of establishing
Cancellation No. 92055751

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goodwill, recognition and association of the mark for the goods originating
exclusively with the shipper”). Here, Petitioner failed to provide evidence regarding
the nature of its relationship with Tipsy, and we therefore cannot determine
whether Tipsy’s acquisition and “use” of the “product” was a bona fide transaction
or whether it was sufficient to confer trademark rights on Petitioner.
Conclusion
In short, even assuming that any sale or shipment from Petitioner to Tipsy
constituted a bona fide transaction for purposes of proving priority, and there is no
such evidence, Dr. Nguyen’s uncorroborated testimony is not sufficient to establish
prior technical trademark use of DIP-IT for nail products. In Thompson Medical
Co., Inc. v. Alberto-Culver Co., 156 USPQ 133 (TTAB 1967) we addressed similarly-
flawed evidence and some of our conclusions in that case are relevant here:
Opposer’s president admitted that invoices and purchase
orders as well as sales records were available. Moreover,
he indicated activity in promoting the “GASTABS”
product in newspapers and that the product has been
listed in “drug books.” Obviously, the “best evidence” in
this proceeding would have been representative
samplings over the years of invoices, purchase orders,
sales records, advertisements, and the like properly
identified and authenticated by someone who had
knowledge of the preparation and contents thereof. None
of this material was forthcoming; and the only deduction
that could be drawn from this omission is that they were
not in fact available or that they could not have
established opposer’s case.

Id. at 135-36.
Decision: The petition is dismissed.