No. 92063529 (T.T.A.B. Jul. 9, 2018)

Philip J. Terryv.Seymore House of Productions

Trademark Trial and Appeal BoardJul 9, 2018

No. 92063529 (T.T.A.B. Jul. 9, 2018)

This Opinion is Not a Precedent of the TTAB Mailed: July 9, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Philip J. Terry v. Seymore House of Productions _____ Cancellation No. 92063529 _____ Anthony L. Richardson of Richardson Law Firm, LLC for Philip J. Terry. Seymore House of Productions, pro se. _____ Before Lykos, Adlin, and Lynch Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: Philip J. Terry (“Petitioner”) petitions to cancel Registration No. 4923332 for the mark THE INTRUDERS1 in standard characters for “Entertainment in the nature of musical group; live performances by a musical group; production of musical sound recording” in International Class 41 on the grounds that Respondent does not own 1 Issued on the Principal Register on March 22, 2016, under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), from an application filed March 28, 2014. Cancellation No. 92063529 - 2 - the mark and priority and likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1152(d).2 Petitioner pleads ownership of a pending application to register the same mark, THE INTRUDERS in standard characters, for the following services in International Class 41: Entertainment in the nature of live performances by musical band; Entertainment services in the nature of live audio performances by musical band; Entertainment services in the nature of live musical performances; Entertainment services in the nature of live visual and audio performances by musical band; Entertainment services in the nature of live visual and audio performances, namely, musical band, rock group, gymnastic, dance, and ballet performances; Entertainment services in the nature of live visual and audio performances, namely, musical, variety, news and comedy shows; Entertainment services in the nature of live vocal performances by musical band; Entertainment services in the nature of live vocal and musical performances; Entertainment services in the nature of presenting live musical performances; Entertainment, namely, live music concerts; Entertainment, namely, live performances by a musical band; Entertainment, namely, live performances by musical bands.3 In its answer, Respondent generally denied the salient allegations of the petition, but made certain admissions, including:4 • That Petitioner was one of the original members of the musical group The Intruders. Answer ¶ 1. • That “[o]n May 16, 2006, in the U.S. District Court, Southern District of New York, under docket number 02-CV-0407, Petitioner was adjudged to be sole 2 1 TTABVUE (Petition to Cancel). 3 Application Serial No. 86827608 was filed November 20, 2015, and has been suspended pending the disposition of this cancellation proceeding. Petitioner also alleges that it owned cancelled Registration No. 3563066 for the same mark. 4 4 TTABVUE 4-5 (Respondent’s Answer). Cancellation No. 92063529 - 3 - owner of the Mark. A true and correct copy of Order and Judgment is attached [to the Petition to Cancel] as Exhibit ‘A.’” Id. at ¶ 4. • That “[t]he tradename, The Intruders, has acquired and enjoyed for many years past, and still enjoy[s], a reputation for excellence in the music industry which has secured the group large ticket sales throughout the world.” Id. at ¶ 8. The “Mark” as referred to in the Petition to Cancel and the Answer, was defined as “THE INTRUDERS … shown in [involved] U.S. Registration No. 4,923,332.”5 The evidence of record in this case consists, solely, of the pleadings, and, by rule, the file of the challenged registration. See Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1). Neither party submitted any evidence during their assigned trial periods. See Trademark Rule 2.121(a), 37 C.F.R. § 2.121(a) (“No testimony shall be taken or evidence presented except during the times assigned….”). The materials attached to Petitioner’s Brief were not properly introduced into evidence and therefore cannot be considered. Trademark Rule 2.123(k), 37 C.F.R. § 2.123(k) (“Evidence not obtained and filed in compliance with these sections will not be considered”); see also The Maytag Co. v. Luskin’s, Inc., 228 USPQ 747, 748 (TTAB 1986); Binney & Smith Inc. v. Magic Marker Ind., Inc., 222 USPQ 1003, 1009 n.18 (TTAB 1984). Similarly, the materials attached to Petitioner’s Petition to Cancel and motion for summary judgment6 (which was untimely and therefore received no 5 1 TTABVUE 4 (Petition to Cancel); 4 TTABVUE 4 (Respondent’s Answer). 6 18 TTABVUE. Cancellation No. 92063529 - 4 - consideration7) were not properly introduced into evidence8 and therefore cannot be considered. Trademark Rule 2.122(c), 37 C.F.R. § 2.122(c) (exhibits to pleadings are not in evidence and instead “must be identified and introduced in evidence as an exhibit during the period for the taking of testimony”). Petitioner filed a trial brief in this case, but Respondent did not submit a brief. Standing is a threshold issue that must be proved in every inter partes case. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Any person who believes it is or will be damaged by registration of a mark has standing to file a petition to cancel. Trademark Act Section 14, 15 U.S.C. § 1064. “A petitioner is authorized by statute to seek cancellation of a mark where it has ‘both a ‘real interest’ in the proceedings as well as a ‘reasonable’ basis for its belief of damage.’” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports, Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012) and citing Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999)). Respondent’s admission that a federal district court adjudged Petitioner to be the sole owner of Respondent’s registered mark suffices to establish Petitioner’s real interest in this proceeding as well as a reasonable basis for his belief of damage.9 See Estate of Ladislao Jose Biro v. Bic Corp., 18 USPQ2d 1382, 7 19 TTABVUE. 8 While the materials attached to the Petition to Cancel included a copy of Petitioner’s cancelled registration certificate, a cancelled registration carries no probative weight. Black & Decker Corp. v. Emerson Elec. Co., 84 USPQ2d, 1482, 1487 n.9 (TTAB 2007). 9 Although Petitioner pleaded a pending application, Petitioner failed to introduce it into evidence, and we therefore cannot rely on it to establish Petitioner’s standing. Giersch v. Scripps Networks, 90 USPQ2d 1020, 1022 (TTAB 2009) (“we do not rely on petitioner’s Cancellation No. 92063529 - 5 - 1383 & n.2 (TTAB 1991) (standing established by defendant’s admission in its answer). Based on the minimal record in this case, this same admission by Respondent forms the evidentiary basis of Petitioner’s claim of non-ownership. Respondent’s registration is entitled to a presumption of validity. Trademark Act Section 7(b), 15 U.S.C. § 1057(b). Petitioner bears the burden of rebutting that presumption by a preponderance of the evidence. See West Florida Seafood, Inc. v. Jet Restaurants, Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1662 (Fed. Cir. 1994). Trademark Act Section 1 requires that an applicant “be the owner of the mark sought to be registered.” 15 U.S.C. § 1051(a)(3)(A). See also In re Wella A.G., 787 F.2d 1549, 229 USPQ 274, 277 (Fed. Cir. 1986) (C.J. Nies concurring) (“Under section 1 of the Lanham Act, only the owner of a mark is entitled to apply for registration. If one who is not the owner seeks registration, the application must be denied and any registration which issues is invalid.”). “[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 Ind., Inc., 216 USPQ 619 (TTAB 1982)). See also 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.”); application for registration because petitioner did not properly introduce his pending application, nor did petitioner introduce, by testimony or documentation, evidence that the application was refused and suspended pending the outcome of this cancellation proceeding”). Cancellation No. 92063529 - 6 - Trademark Rule 2.71(d), 37 C.F.R. § 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.”). Here, Respondent has admitted that “[o]n May 16, 2006, in the U.S. District Court, Southern District of New York, under docket number 02-CV-0407, Petitioner was adjudged to be sole owner of the Mark.”10 The court’s ruling occurred well before the 2014 filing date of Respondent’s application that matured into the challenged registration. Although Respondent had the opportunity to present testimony or other evidence to show a subsequent change in ownership of “the Mark” following the court’s ruling, Respondent failed to do so. While the file of Respondent’s challenged registration is in the record by rule, Respondent’s underlying declarations regarding ownership “are not testimony on behalf of the … registrant. Establishing the truth of these or any other matters asserted in the files of these … registrations shall be governed by the [applicable rules and statutes].” Trademark Rule 2.122(b)(2), 37 C.F.R. § 2.122(b)(2). Thus, the only evidence of record regarding ownership (other than the involved registration itself) consists of Respondent’s admission that a federal district court held that Petitioner is the sole owner of the mark in the challenged registration. Under the unusual circumstances of this case and based on the lack of any other evidence of any kind or character whatsoever, we find Respondent’s uncontradicted admission sufficient to carry Petitioner’s burden on its claim that the challenged registration should be cancelled because Respondent was not the owner of the mark as of the filing date of the underlying application that matured into the 10 4 TTABVUE 5 (Petitioner’s Answer). Cancellation No. 92063529 - 7 - involved registration. Because 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,” Trademark Rule 2.71(d), Respondent’s application was void, rendering the resulting registration invalid. We need not reach Petitioner’s remaining Section 2(d) claim. Decision: The petition to cancel Registration No. 4923332 is granted. Accordingly, the registration will be cancelled in due course.