Hearing: September 7, 2017 Mailed: September 19, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Peoples Club of Nigeria International Princeton Junction, NJ Branch, Inc.,
Peoples Club of Nigeria International-Miami Branch, and
Peoples Club of Nigeria International-Chicago Branch
v.
Peoples Club of Nigeria International
_____
Cancellation No. 92059944
_____
Craig S. Hilliard of Stark & Stark PC,
for Petitioners.
Peoples Club of Nigeria International, pro se.
_____
Before Ritchie, Shaw and Adlin, Administrative Trademark Judges.
Opinion by Shaw, Administrative Trademark Judge:
Peoples Club of Nigeria International Princeton Junction Branch, Miami
Branch, and Chicago Branch (“Petitioners”) have petitioned to cancel
Registration No. 4591874 for the mark,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92059944
2
(“PCNI mark”) owned by Peoples Club of Nigeria International
(“Respondent”).1 The registration issued on August 26, 2014 on the Principal
Register for services identified as “Social club services, namely, arranging,
organizing, and hosting social events, get-togethers, and parties for club
members,” in International Class 41. The description of the mark reads: “The
mark consists of the black letters ‘PEOPLES CLUB OF NIGERIA
INTERNATIONAL’ above a blue circle bordered in black linked to a red circle
bordered in black linked to a yellow circle bordered in black.” The term
“CLUB OF NIGERIA INTERNATIONAL” has been disclaimed and the colors
black, blue, red, and yellow are claimed as features of the mark.
In their petition for cancellation, Petitioners allege that they will be
damaged by Respondent’s continuing ownership of the registration, and,
further, that Respondent “fails to recognize Petitioners’ lawful and long-
standing right to use the Mark and threatens to initiate litigation to prevent
Petitioners’ use of the Mark.”2 As grounds for cancellation, Petitioners allege
priority of use of the mark over Respondent, and fraud on the USPTO in
procuring the registration.
The true issue in this proceeding is ownership of the PCNI mark. When,
as here, the parties both claim the same mark for the same services, based in
part on long affiliation, a likelihood of confusion is inevitable, and the dispute
1 Application Serial No. 86116372, which matured into the registration at issue, was
filed on November 12, 2013, claiming first use and first use in commerce as of 1994.
2 Petition for cancellation, para. 24, 1 TTABVUE 14.
Cancellation No. 92059944
3
centers on ownership. UVeritech, Inc. v. Amax Lighting, Inc., 115 USPQ2d
1242, 1244 (TTAB 2015). We note further that both parties specifically
addressed the issue of ownership in their briefs.3 Accordingly we deem the
issue to have been tried by consent and the pleadings to have been amended
pursuant to Fed. R. Civ. P. 15(b) to include non-ownership as a ground. See
Nahshin v. Prod. Source Int’l LLC, 107 USPQ2d 1257, 1258 (TTAB 2013)
citing P.A.B. Produits et Appareils de Beaute v. Satinine Societa In Nome
Collettivo di S.A. e.M. Usellini, 570 F.2d 328, 196 USPQ 801, 804 (CCPA
1978) (“Normally, if evidence were submitted on an issue without objection by
registrant, and both sides presented arguments thereon, then, in accordance
with Fed. R. Civ. P. 15(b), the Petition for Cancellation would be treated as
amended to conform to the evidence.”).
Respondents denied the salient allegations of the petition. Both parties
filed briefs and Petitioners filed a reply brief. An oral hearing was held at
Petitioners’ request. Respondent did not attend the hearing.
Evidentiary Objections
Respondent objects to consideration of documents submitted under
Petitioners’ Supplemental Notices of Reliance, and certain exhibits
introduced during Dr. Mgbako’s Deposition. Petitioners object to
3 22 TTABVUE 17; 23 TTABVUE 5.
Cancellation No. 92059944
4
Respondent’s reliance on certain exhibits “marked, but never used” during
witnesses’ depositions.4
Petitioners’ documents submitted under its Supplemental Notices of
Reliance were filed outside of Petitioners’’ assigned testimony period, thus,
they are untimely. Accordingly, the documents are stricken, and have not
been considered in reaching our decision.
None of the remaining evidence sought to be excluded is outcome
determinative. Moreover, the Board is capable of weighing the relevance and
strength or weakness of the objected-to testimony and evidence, including
any inherent limitations. Accordingly, “[w]e have considered all of the
testimony and evidence introduced into the record. In doing so, we have kept
in mind the various objections raised by the parties and we have accorded
whatever probative value the subject testimony and evidence merit.” Luxco,
Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1479 (TTAB
2017).
The Record
The record consists of the pleadings; the file of the involved registration;
testimony depositions submitted by Petitioners, along with exhibits thereto;
and evidence introduced by way of Petitioners’ notices of reliance.
4 Petitioners’ Reply Br., p. 5, 26 TTABVUE 9.
Cancellation No. 92059944
5
For Petitioners:
1. Deposition Testimony of Dr. Ambrose Mgbako dated December 2, 2015,
and Exhibits P-1 through P-3 thereto;
2. Deposition Testimony of Gordian Ndubizu dated December 8, 2015,
and Exhibits PP-1, PP-5, PP-7, and PP-9 through PP-15, thereto;
3. Deposition Testimony of Dr. Anayo Ukeje dated December 11, 2015,
and Exhibits PC-1 through PC-7, thereto; and
4. Various official records, USPTO records, Respondent’s initial written
disclosures and answers to Petitioners’ first set of interrogatories, with
exhibits, and Internet evidence, attached to Petitioners’ Notice of
Reliance submitted on December 21, 2015.
Respondent did not introduce any testimony or evidence.
Standing and Priority
Standing is a threshold issue that must be proven in every inter partes
case. See Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185, 189 (CCPA 1982) (“The facts regarding standing . . . must be
affirmatively proved. Accordingly, [plaintiff] is not entitled to standing solely
because of the allegations in its [pleading].”). See also Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058 (Fed. Cir. 2014).
To establish standing in a cancellation proceeding, a petitioner must show
both “a real interest in the proceedings as well as a ‘reasonable’ basis for his
belief of damage.” See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023,
Cancellation No. 92059944
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1025 (Fed. Cir. 1999). Because Petitioners have shown use of the PCNI mark
they have established a reasonable belief in damage by Respondent’s
continuing ownership of the registration. 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.”); 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. . . .”).
Facts
The Peoples Club of Nigeria was founded in Nigeria in 1971 to promote
individual networking, social events, and charity work.5 The club is
incorporated in Nigeria.6 Eventually, other branches of the club opened in
countries outside of Nigeria, particularly in the United States, Canada, and
the United Kingdom.7 These branches operated under the name Peoples Club
of Nigeria International.8
The first U.S. branch of the Peoples Club of Nigeria International was
formed in Houston, Texas in approximately 1989 or 1990.9 Over time, other
U.S. branches were formed, with Petitioners’ branches being formed between
5 Mgbako test., p. 22, 16 TTABVUE 26.
6 Ndubizu test., p. 22, 17 TTABVUE 23.
7 Mgbako test., p. 23, 16 TTABVUE 27.
8 Id. at 68, 12 TTABVUE 181.
9 Mgbako test., p. 21, 16 TTABVUE 25.
Cancellation No. 92059944
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1996 and 1998.10 Each separate U.S. branch of the club operates under the
name Peoples Club of Nigeria International but is independently organized
under state law.11 Thus, each U.S. branch is a separate legal entity from the
other branches, as well as from the original Peoples Club of Nigeria.
Notwithstanding this separate legal structure, each U.S. branch, upon its
founding, received a “charter” from either the original Peoples Club of
Nigeria12 or the Peoples Club of Nigeria International.13
All of the individual U.S. branches of the Peoples Club of Nigeria
International, including each of Petitioners’ branches, used the PCNI mark in
their activities.14 Petitioners’ branches began using the PCNI mark upon
their inception and continue to use the mark.15
On August 17, 2010, Respondent, the Peoples Club of Nigeria
International, Inc., was incorporated in New Jersey as a non-profit
corporation.16 Dr. Ambrose Mgbako was listed as the Registered Agent of the
corporation.17 On the certificate of incorporation the stated purpose of the
corporation was “To provide and promote recreational and social facilities for
10 Ndubizu test., p. 24, 17 TTABVUE 25.
11 Mgbako test., p. 55, 16 TTABVUE 59.
12 See charter of the Peoples Club of Nigeria International-Miami branch, dated
August 22, 1998, 12 TTABVUE 17.
13 See charter of the Peoples Club of Nigeria International-Chicago branch, dated
July 28, 2007, 12 TTABVUE 10.
14 Mgbako test., pp. 32-33 and 69, 12 TTABVUE 172 and 181.
15 Ndubizu test., p. 23, 17 TTABVUE 24.
16 12 TTABVUE 14.
17 12 TTABVUE 14-15.
Cancellation No. 92059944
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its members and the public in general.”18 In 2013, Dr. Mgbako, purporting to
act on behalf of Respondent, instructed its attorney to file the trademark
application which matured into the registration at issue.19 In the trademark
application and subsequent registration, Respondent was incorrectly
identified as a Nigerian corporation, however, no such Nigerian corporation
exists.20
Respondent’s primary purpose appears to be to “coordinate charity
activities in the United States”21 and to hold the rights to the PCNI mark.22
There is no evidence that Respondent is a “branch” of the Nigerian club nor
does it appear to conduct recreational or social activities. According to Dr.
Mgbako, Respondent’s claim to ownership of the PCNI mark is based solely
upon use of the mark by U.S. branches of the Peoples Club of Nigeria
International, including each of Petitioners. Further, Respondent’s claimed
dates of first use as of 1994 are based on use of the PCNI mark by the
Houston branch of the Peoples Club of Nigeria International, whose use,
Respondent claims, inures to Respondent’s benefit.23
In 2012 or 2013, a split arose among the membership of the Peoples Club
of Nigeria regarding the election of senior officers. One group, including
members of Petitioners, believes the leadership of the Nigerian club has been
18 12 TTABVUE 14.
19 Mgbako test., p. 67, 16 TTABVUE 71.
20 Respondent’s Br., p. 17, 23 TTABVUE 18.
21 Mgbako test., p. 35, 16 TTABVUE 39.
22 Id. at 91, 16 TTABVUE 95.
Cancellation No. 92059944
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improperly taken over in violation of the club’s constitution and bylaws. The
other group disagrees and considers themselves to be the lawfully appointed
officers of the Nigerian club. To this end, the latter group claims to have
disbanded Petitioners’ U.S. branches and expelled their members from the
club.24 The issue regarding the rightful leadership of the Peoples Club of
Nigeria is pending in civil court in Nigeria.25 However, despite Respondent’s
naked claims to the contrary, there is no evidence that the Nigerian dispute
has any relationship to this one.
Non-Ownership
We first consider the claim of non-ownership. Petitioners allege that
Respondent was not the true owner of the PCNI mark at the time the
underlying application was filed: “at the time of application, [Respondent] did
not own the Mark it sought to register and thus its application is void ab
initio.”26
Pursuant to Section 1(a)(1) of the Trademark Act, 15 U.S.C. § 1051(a)(1),
only “[t]he owner of a trademark used in commerce may request registration
of its trademark. . . .” Accordingly, only the owner of the mark may file an
application. Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630,
635 n.6 (CCPA 1976) (“One must be the owner of a mark before it can be
registered.”); In re Deister Concentrator Co., 289 F.2d 496, 129 USPQ 314,
23 Id. at 96, 16 TTABVUE 100.
24 Id. at 46, 16 TTABVUE 50.
25 Id. at 77-78, 16 TTABVUE 81-82.
Cancellation No. 92059944
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320 (CCPA 1961) (“Under section 1, only ‘The owner of a trademark’ can
apply for registration.”). Therefore, “[a]n application filed by one who is not
the owner of the mark sought to be registered is a void application.” In re
Tong Yang Cement Corp., 19 USPQ2d 1689, 1690 (TTAB 1991) (citing In re
Techsonic Indus., Inc., 216 USPQ 619 (TTAB 1982)). See also Huang v. Tzu
Wei Chen Food Co. Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988)
(affirming Board’s holding that an application was void ab initio because the
applicant was not the owner of the mark on the filing date); Great Seats Ltd.
v. Great Seats Inc., 84 USPQ2d 1235, 1239 (TTAB 2007) (“In a use-based
application under Trademark Act Section 1(a), only the owner of the mark
may file the application for registration of the mark; if the entity filing the
application is not the owner of the mark as of the filing date, the application
is void ab initio.”); Trademark Rule 2.71(d), 37 CFR § 2.71(d) (“An application
filed in the name of an entity that did not own the mark as of the filing date
of the application is void.”).
We find the facts of this case to be analogous to those found in Great Seats
Ltd. v. Great Seats Inc., 84 USPQ2d 1235. In Great Seats, a use-based
application for the mark at issue was filed in the name of a newly-formed
corporation which had never actually used the mark. Ownership of the mark
was found to reside in a different corporation which had been using the mark.
The board ruled that the application underlying the registration was void ab
26 Petitioners’ Br., p. 14, 22 TTABVUE 19.
Cancellation No. 92059944
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initio because the Applicant was not the owner of the mark at the time of
filing. Great Seats, 84 USPQ2d 1242.
Here, the record is clear that Respondent was not the owner of the mark
when it filed the use-based application. Rather, Respondent sought to rely on
use of the PCNI mark by other branches of the club for its claim of ownership
and dates of use. However, absent a transfer of assets and goodwill to
Respondent from the users of the PCNI mark, Respondent simply was not
the owner of the mark.27 See Daltronics, Inc. v. H.L. Dalis, Inc., 158 USPQ
475 (TTAB 1968) (Absent transfer of any goodwill or rights in the mark, use
of a mark did not inure to the benefit of others).
Respondent’s argument that it was given the authority to register the
mark by members of the Peoples Club of Nigeria is untenable because the
Nigerian entity had no U.S. rights or authority to transfer to Respondent. As
for the Houston branch, there is no evidence that it transferred any rights to
Respondent. Thus, Respondent cannot claim to be the owner of the mark. Nor
can it claim to have used the mark since 1994. Id.
We find that Petitioners have made a prima facie case that Respondent
was not the owner of the mark when it filed the underlying application.
Respondent has not rebutted this case. There simply is no evidence that
Respondent owned the mark when the application was filed. The application
underlying the registration therefore is void ab initio.
27 There is no evidence that Respondent licenses the mark.
Cancellation No. 92059944
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Fraud
Although we have determined that the underlying application is void, in
order to render a complete decision, we also will address Petitioners’ fraud
claim. Petitioners claim that Respondent committed fraud in obtaining its
registration. Specifically, Petitioners allege that Respondent misrepresented
its place of incorporation, its dates of first use, its ownership of the mark, and
ownership of the mark by others.
Fraud in procuring a trademark registration occurs only when an
applicant or registrant knowingly makes a false, material representation
with the intent to deceive the United States Patent and Trademark Office. In
re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009).
“Subjective intent to deceive, however difficult it may be to prove, is an
indispensable element in the analysis.” Id. A party seeking cancellation of a
trademark registration for fraudulent procurement bears a heavy burden of
proof. Id., citing W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 377 F.2d
1001, 153 USPQ 749, 750 (CCPA 1967).
Upon review of Petitioners’ arguments and the cited testimony and
exhibits relevant to this claim, we find that Petitioners have failed to make
out a prima facie case of fraud. Nothing in the record addresses or
demonstrates the requisite subjective intent to deceive the USPTO when
Respondent filed the underlying application.
Cancellation No. 92059944
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Based on this record, we find that Petitioners have failed to prove “‘to the
hilt’ with clear and convincing evidence,” Bose, 91 USPQ2d at 1939 (citations
omitted), that Respondent fraudulently obtained its registration.
DECISION: The cancellation is granted as to Registration No. 4591874.
