Randal L. Schwartzv.RMI.NET, Inc.

Trademark Trial and Appeal Board

Jul 30, 2002

No. 92029681 (T.T.A.B. Jul. 30, 2002)

7/30/02 Paper No.
8

GDH/gdh

U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Randal L. Schwartz
v.
RMI.NET, Inc., substituted for Stonehenge Business Systems
Corporation
_____

Cancellation No. 29,681
_____

William E. Goshert of The DuBoff Law Group, LLC for Randal L.
Schwartz.

Sabrina C. Stavish and Robert R. Brunelli of Sheridan Ross PC
for RMI.NET, Inc., respondent and successor to Stonehenge
Business Systems Corporation.
_____

Before Seeherman, Hohein and Bucher, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Randal L. Schwartz has petitioned to cancel the
registration owned by RMI.NET, Inc., as successor to
Stonehenge Business Systems Corporation, of the mark
"STONEHENGE" for "providing multiple-user access to a global
computer information network for the transfer and
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 29,681
2
dissemination of a wide range of information."1 As grounds
for cancellation, petitioner alleges, among other things, that
on or before April 4, 1992, he adopted and has continuously
used the service mark "STONEHENGE CONSULTING SERVICES" for
"educational services, namely conducting classes and seminars
in the field of computer programming and distributing course
materials in connection therewith"; that on or before July
1986, he also adopted and since November 1986 has continuously
used such mark for "consultation [services] in the field of
computers, computer security, video production and technical
writing"; that on September 8, 1998, he filed an application
for registration of such mark for the foregoing services,
which was assigned Serial No. 75/549,453; that "[i]n an Office
Action mailed April 8, 1999, the Examining Attorney refused
Petitioner's pending Application Serial No. 75/549,453 under
Section 2(d) of the Trademark Act" on the basis of the
registration which petitioner seeks to cancel in this
proceeding; that petitioner "has continuously utilized the
service mark 'STONEHENGE CONSULTING SERVICES' ... since ... a
date well prior to the date of first use alleged by the
Respondent for the mark 'STONEHENGE,' which date is March,
1995"; that the respective services of the parties are

1 Reg. No. 2,193,757, issued on October 6, 1998 from an application
filed on August 22, 1997, which sets forth a date of first use
anywhere and in commerce of March 1995.
Cancellation No. 29,681
3
"similar"; and that contemporaneous use of the respective
marks in connection with the parties' services is likely to
cause confusion.
RMI.NET, Inc., in its timely answer,2 admits that it
"purchased the assets of Stonehenge Business Systems
Corporation on November 30, 1998, including all general
intangibles," and thus is the owner of the involved
registration,3 but denies the salient allegations of the
petition to cancel.
The record consists solely of the pleadings4 and the
file of the involved registration. Neither party took
testimony or otherwise presented any evidence at trial. Only
petitioner filed a brief and neither party requested an oral
hearing.

2 In light of the Board's March 23, 2000 order, which among other
things enlarged the time for filing an answer until 40 days from such
date, petitioner's March 14, 2000 motion for a default judgment,
which was subsequently associated with the record file for this
proceeding, is denied as moot.
3 In view thereof, and in light of the accompanying copy, as
requested in the Board's March 23, 2000 order, of the "Excerpts of
the Purchase Agreement" made with Stonehenge Business Systems
Corporation which is dated November 30, 1998, RMI.NET, Inc. is hereby
substituted as the respondent in this proceeding. Fed. R. Civ. P.
25(c) and TBMP §512.01.

4 While petitioner, with his pleading, attached as Exhibit 1 a copy
of the Office Action which is alleged to have issued on April 8, 1999
in connection with his application, Trademark Rule 2.122(c) provides
in relevant part that "an exhibit attached to a pleading is not
evidence on behalf of the party to whose pleading the exhibit is
attached unless identified and introduced in evidence as an exhibit
during the period for the taking of testimony."
Cancellation No. 29,681
4
Petitioner, while admitting in his brief that
"[r]egistrant, "RMI.NET, Inc., is the successor in interest to
Stonehenge Business Systems Corporation," contends among other
things that "there is no issue regarding Petitioner's prior
use of his mark 'STONEHENGE [CONSULTING SERVICES]' and his
right to cancel the mark belonging to Registrant," noting that
on September 8, 1998, he filed an application for registration
thereof which was assigned Serial No. 75/549,453. Petitioner
also asserts in his brief that "no issue exists about ... the
identity of the [respective] services sold, or that the
channel of trade [therefor] ... is similar," pointing out that
"in an Office Action mailed April 8, 1999, the Examining
Attorney refused Petitioner's pending Application Serial No.
75/549,453 under Section 2(d) of the Trademark Act ... citing
Registrant's mark." In view thereof, and in light of the
assertion that "STONEHENGE, as the dominant feature of
Petitioner's mark, is identical in appearance, sound and
meaning to Registrant's mark," petitioner maintains that
confusion as to source is likely.
None of petitioner's contentions, however, is
supported by any evidence which is properly of record in this
proceeding.5 Petitioner, therefore, has neither proven its

5 As set forth in TBMP §706.02: "Factual statements made in a
party's brief on the case can be given no consideration unless they
are supported by evidence properly introduced at trial. Statements
Cancellation No. 29,681
5
standing to be heard that he is being damaged by the continued
existence of the involved registration, nor has he shown that
he has prior and continuous use of the mark "STONEHENGE
CONSULTING SERVICES" for his alleged services such that the
contemporaneous use by respondent of the mark "STONEHENGE" for
its services (which on their face are specifically different
from those which petitioner claims to provide) is likely to
cause confusion as to source or sponsorship. Such proof is an
essential element of petitioner's case-in-chief and, in the
absence thereof, petitioner cannot prevail.
Accordingly, because petitioner, as the party who
bears the burden of proof in this proceeding, has failed to
properly present any evidence herein in support of the
allegations of the petition to cancel which have been denied
by respondent, it is adjudged that the petition to cancel must
fail.
Decision: The petition to cancel is denied.

in a brief have no evidentiary value, except to the extent that they
may serve as admissions against interest." Moreover, as indicated in
TBMP §706.01, while "statements in pleadings may have evidentiary
value as admissions against interest by the party which made them,"
"[s]tatements made in pleadings cannot be considered as evidence in
behalf of the party making them." Instead, "such statements must be
established by competent evidence during the time for taking
testimony." Id. See also footnote 4 herein.