Randall A. Terryv.Troy Newman

Trademark Trial and Appeal Board

Jul 10, 2013

No. 92047809re (T.T.A.B. Jul. 10, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: Mailed:
February 12, 2013 July 10, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Randall A. Terry
v.
Troy Newman
_____
Cancellation No. 92047809

on Reconsideration
_____

Michael S. Culver of Millen, White, Zelano & Branigan, P.C. for Randall A. Terry.

Brian R. Gibbons, Esq. for Troy Newman.
_____

Before Mermelstein, Kuczma and Masiello, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:

Randall A. Terry (“Petitioner”) has filed a request for reconsideration (cited
herein as “Recon.”) of the Board’s decision of April 2, 2013 (the “Decision”),
dismissing his petition to cancel U.S. Registration No. 3179591, owned by Troy
Newman (“Registrant”), on grounds that the Board misapplied the law in
determining whether the registered mark OPERATION RESCUE “Consists of or
comprises … matter which may … falsely suggest a connection with persons, living
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or dead….” 15 U.S.C. § 1052(a). Registrant filed a brief in response, and Petitioner
filed a reply brief. Petitioner has also requested an oral hearing on his request for
reconsideration.
It is not the practice of the Board to hold an oral hearing on a request for
reconsideration. See TBMP § 502.03 (“It is the practice of the Board to deny a
request for an oral hearing on a motion unless, in the opinion of the Board, an oral
hearing is necessary to clarify the issue or issues to be decided. Ordinarily,
arguments on a motion are, and should be, adequately presented in the briefs
thereon, and therefore the Board rarely grants a request for an oral hearing on a
motion.”) Petitioner’s claims and arguments have been amply aired in his briefs
and in an earlier oral hearing before the Board. The Board sees no need for
clarification of the issues to be decided. Accordingly, Petitioner’s request for an oral
hearing is denied.
By way of introduction in his request for reconsideration, Petitioner
acknowledges the “four familiar elements” set forth as the standard for a finding of
a false suggestion of a connection in University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), but
argues that the Board “focuse[d] almost exclusively on the second element of
whether the mark OPERATION RESCUE points uniquely and unmistakably to
Terry.” Recon. at 1-2. The Board’s four-factor test is not a balancing test whereby a
successful showing of one factor may cancel out the failure to show one or more of
the other factors. Rather, each of the four factors of the test is a required element
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for a finding of a false suggestion of a connection. Accordingly, the Board’s finding
that Petitioner failed to demonstrate that the designation OPERATION RESCUE
points uniquely and unmistakably to Petitioner ineluctably compelled a judgment
against Petitioner.1 Accordingly, the Board’s attention to this factor was fully
warranted.
Petitioner also argues that the Board, having observed that it is not
inconceivable that the name of an organization might be sufficiently strongly
associated with one of its leaders as to suggest a “connection,” failed to “make a
‘separate finding’” as to this point. Recon. at 2. Yet the Board’s entire Decision was
dedicated to making a finding on this point.
Petitioner’s introduction also argues that the Board failed to “analyze the
proof or arguments” relating to Petitioner’s fame. Yet the Board’s decision devoted
more than five pages to a discussion of Petitioner’s accomplishments, his renown
and his notoriety, with 37 citations to the record. Decision at 12-17. The Board
gave due regard to Petitioner’s fame in reaching its decision.
Petitioner then enumerates four errors in the Board’s analysis of his claim,
which we discuss below.
A. Registrant’s “Intent to Usurp” Petitioner’s Identity.
Petitioner points to the following guidance in Notre Dame, supra:
This conclusion could be changed if the evidence showed
that [defendant] intended to identify the [plaintiff] ….

1 Petitioner’s effort to banish from his brief the words “uniquely and unmistakably” by
defining the phrase “points to” to mean “points uniquely and unmistakably to” (Recon. at 1,
fn1) is a curious one.
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Evidence of such intent would be highly persuasive that
the public will make the intended false connection.
Notre Dame, 217 USPQ at 509.
Petitioner urges that we may infer Registrant’s intent from the fact that the
registered mark is identical to OPERATION RESCUE, which is Petitioner’s
asserted identity. We find that no such inference may fairly be made. Many facts
of record interfere with the logic of such an inference, including the fact that there
was a proliferation of autonomous groups undertaking clinic protests under names
that incorporated the designation OPERATION RESCUE (Decision, Part V(A)); and
the fact that the designation OPERATION RESCUE could reasonably be perceived
as indicating “not an individual endeavor of Petitioner, but a movement of
activists.” (Decision at 23.) It is not a foregone conclusion that adoption of the
name OPERATION RESCUE demonstrates an intent to suggest a connection with
the individual Randall Terry.
As “additional evidence,” of intent, Petitioner points to Registrant’s purported
theory “that he assumed the mantle of leadership to that name with Terry’s
blessing.” (Recon. at 3, citing Registrant’s trial brief at 15-16 and White Dep. 37:5-
9.) However, the “blessing” described at White Dep. 37:5-9 was not conferred by
Petitioner alone, but by him together with four others, including someone described
as “another national leader.” White Dep. 37:6. Petitioner also points to a webpage
that Registrant submitted as a specimen of use in his application for registration.
Contrary to Petitioner’s argument, this webpage does not “illuminate[ ] Newman’s
intent to claim Terry’s legacy….” (Recon at 4.) If anything, the webpage seeks to
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downplay Petitioner’s role in Operation Rescue and recognizes the contributions of
others:
In 1986, a cadre of men including Randall Terry and
ORW principle members Rev. Joseph Foreman and Ken
Reed, founded Operation Rescue. … [M]any Operation
Rescue organizations cropped up across the country, each
autonomous in their leadership, including Operation
Rescue of Los Angeles and Operation Rescue of San
Diego. These two independent groups were never under
the authority of Randall Terry.
See Petitioner’s trial brief at 44.
Petitioner also urges that the existence of a “financial motive for usurping his
name” demonstrates that Registrant must have had the intent to do so. Petitioner
points to a news report indicating that the name OPERATION RESCUE carries
with it an “unquestionable ability to raise money.” (Petitioner’s trial brief at 45.)
Neither such a news report, nor even evidence that Registrant has engaged in
fundraising (id. at 45-46), sufficiently illuminates Registrant’s state of mind to
allow us to find that he intended to usurp Petitioner’s identity. We also reject
Petitioner’s argument that the fact that Registrant did not himself testify in the
proceeding should lead to an inference of ill intent. Recon. at 4-5. The burden of
proving Petitioner’s claim lay with Petitioner; and Petitioner had the option of
taking the testimonial deposition of Registrant. Registrant, for his own part, had no
duty to testify or submit any evidence, and his failure to do so is not evidence in
Petitioner’s favor. Neither does the fact that both Petitioner and Registrant
engaged in anti-abortion activism compel a finding of intent. Recon at 5, citing
Hornby v. TJX Companies Inc., 87 USPQ2d 1411, 1426-27 (TTAB 2008). Where the
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record demonstrates that the designation OPERATION RESCUE has been
associated with numerous individuals and groups other than Petitioner and his
group, the fact that Petitioner and Registrant have engaged in similar endeavors
does not indicate Registrant’s intent to associate himself with Mr. Terry.
B. Analysis of Geographic Place Names.
The Board in its Decision was skeptical of Petitioner’s contention that the
proliferation of third-party uses of OPERATION RESCUE in combination with
geographic place names did not detract from the ability of the designation
OPERATION RESCUE, standing alone, to point uniquely and unmistakably to
himself. Decision at 28ff. Petitioner criticizes the Board for saying, in the context
of its discussion of the use of the term OPERATION RESCUE alone, “The absence of
matter is too subtle a feature to function as distinctive matter, at least in this case,
just as the addition of geographic terms to OPERATION RESCUE did not
transform those words into distinguishably different marks.” Id. at 29. Petitioner
seems to take the position that the trademark concept of distinctiveness is entirely
irrelevant to an analysis under Trademark Act § 2(a) and that any reference to it
renders the Board’s analysis erroneous. Recon. at 5-6. Petitioner cites various
authorities for the proposition that analysis under Section 2(a) differs from analysis
under other sections of the Act, but does not explain why the Board’s reference to
distinctiveness is contrary to those authorities. Id. at 6. The one specific error
noted as an example is the requirement, in publicity cases, of a showing of
secondary meaning. Recon. at 6, citing J. Thomas McCarthy, 1 The Rights of
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Publicity and Privacy §5:6 (2d ed. 2012). But the Board has not in any way imposed
on Petitioner a requirement that he demonstrate secondary meaning.
Petitioner argues that the names consisting of OPERATION RESCUE
combined with a geographic name2 were inspired by the rescue missions of the
group called OPERATION RESCUE that was organized by Petitioner. Recon. at 6.
Petitioner compares this situation to In re White, 80 USPQ2d 1654 (TTAB 2006),
wherein various third-party designations that included the term MOHAWK were
found to be “named after” the Mohawk Native American tribe and therefore did not
detract from the association of the MOHAWK name with the tribe. We see
Petitioner’s claim as distinguishable. While the proliferation of groups using
OPERATION RESCUE in various parts of the nation clearly suggests that there
was copying among such groups as to their names, evidence is lacking to
demonstrate that those groups sought to name themselves after Petitioner himself,
Randall Terry. Indeed, the intentional decentralization of the anti-abortion
movement, with the intention of insulating the various groups from Petitioner
himself (for liability reasons) (see Decision at 25-27), makes it highly unlikely that
the groups intended to name themselves after Petitioner. Any conclusion to this
effect is made further unlikely by Petitioner’s own efforts to deny his identification
with the movement called OPERATION RESCUE (see Decision at 35-36); and the
disagreements and disputes that sometimes arose between Petitioner and other

2 The record shows that groups existed having names that included OPERATION RESCUE
combined with the terms California, Atlanta, Idaho, San Francisco Bay Area, Chicago,
Milwaukee, Boston, West, National, and Binghamton. See Decision at 26-27.
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members of the movement. See Terry Dep. 182:18-184:8; and Decision at 19-20; 36-
38.
Petitioner also takes issue with the Board’s analysis of evidence of uses of the
designation OPERATION RESCUE to refer to persons other than Petitioner.
Recon. at 7-10. Petitioner’s arguments merely second-guess the Board’s
interpretation and weighing of such evidence rather than stating any specific error.
The Board fully considered all of the evidence of record and is not persuaded that it
has misinterpreted it in any significant way.
C. “Flawed Analysis of a Movement.”
Petitioner criticizes the Board for using the word “movement” in describing
the anti-abortion activism of Petitioner and others. The Board was warranted in
using such a term, because the record is replete with references to those activities
as a “movement,” including Petitioner’s own words: “But the way that I came to
grips with it was to say I will surrender the name Operation Rescue to the
movement….” Terry Dep. I 207:22-24.
Petitioner next contends that the Board failed to address Petitioner’s
argument that Registrant should be estopped from asserting that Operation Rescue
is the name of a movement. Recon. at 10. Petitioner argued in his trial brief that
Registrant, in contending “that Operation Rescue identifies the rescue movement
as a whole… is arguing that the term Operation Rescue is generic,” and that the
genericness of the term OPERATION RESCUE is inconsistent with the verified
declaration made by Registrant in applying for the registration at issue in this
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proceeding. Petitioner’s trial brief at 20, citing Registrant’s trial brief at 34-35, 36.
We have reviewed closely Registrant’s trial brief at 34-36, and see no use of the
word “generic.” To this extent, Petitioner’s allegation of inequitable conduct is
merely a straw man designed to be easily knocked down. The rest of Petitioner’s
argument depends on a mischaracterization of Registrant’s arguments in his trial
brief. Registrant’s arguments clearly related to the historical uses of the
designation OPERATION RESCUE (“The evidence of record clearly states that
Operation Rescue was used historically to identify the movement in general.”
Registrant’s trial brief at 34.). The use of a designation by third-parties in the past
is not necessarily inconsistent with Registrant’s claim, in its application for
registration, that he was at the time of application the owner of the mark. We see
no merit in Petitioner’s argument for equitable estoppel.3
Petitioner appears to argue that the roles of other individuals in the
organization he founded, the fact that he “disbanded” that organization, the
continuation of “[a] movement in the pro-life field” under different leadership, and
Petitioner’s involvement in a variety of activities other than demonstrations at
abortion clinics were, in some way, erroneously interpreted by the Board. Recon. at
10-11. Where the error lies remains obscure:
Terry’s separation from or involvement with the successor
organizations had no impact on Terry’s identity which
remained active with his own supporters, unless one

3 As noted in our Decision, all of Petitioner’s claims for cancellation other than his claim
under Section 2(a) were dismissed with prejudice pursuant to the Board’s order of
November 14, 2008. That dismissal included Petitioner’s allegation of fraud in procuring
the registration.
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accepts, as the Opinion appears to do, that the pro-life
organization under Tucci and Benham was synonymous
with the name Operation Rescue as the sole movement in
the pro-life field.
Recon. at 11.
Nowhere in the Board’s decision is there any finding that the organization of Tucci
and Benham was in any sense “the sole movement.” The Board clearly concluded,
to the contrary, that the public perceived OPERATION RESCUE “as pointing to a
movement involving a large number of persons and institutions besides Petitioner,
including other activists, other organizations, and other organizational leaders.”
Decision at 41 (emphasis supplied). Nor was there any need for the Board to make
a finding similar to the purportedly erroneous one. As Registrant notes, “The issue
is not whether Operation Rescue National was perceived as the only Operation
Rescue, the issue is whether Tucci’s/Benham’s organizations were perceived as an
Operation Rescue.” Registrant’s brief at 12.
Finally, Petitioner appears to argue that the Board should have found a false
suggestion of a connection with Petitioner “if more than an insignificant number of
people identify” him with OPERATION RESCUE. Petitioner’s Brief at 12, citing
Ross v. Analytical Technology Inc., 51 USPQ2d 1269, 1276 n.14 (TTAB 1999).
Registrant correctly points out that Ross addressed a claim under Section 2(c), 15
U.S.C. §1052(c), not Section 2(a). Registrant’s brief at 2. Petitioner nonetheless
maintains that the analogy between Sections 2(c) and 2(a) is a valid one, because
both are based on the right of publicity. Petitioner’s reply brief at 1-2. There is
some overlap in the potential applicability of Sections 2(a) and 2(c), as both may
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apply to the use of the name of an individual. Nonetheless, we see no need to
reconcile the two provisions, because they are manifestly different in their coverage.
Section 2(c), by its terms, addresses use of an individual’s “name, portrait or
signature.” By contrast, a false suggestion of a connection under Section 2(a), as
interpreted by the cases, may arise from use of a person’s name or identity or
persona, or a close approximation thereof. Notre Dame, 217 USPQ at 508; Hornby,
87 USPQ2d at 1424; In re Jackson International Trading Co., 103 USPQ2d 1417,
1419 (TTAB 2012); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985). As
the two statutory provisions are clearly not co-extensive, it does not matter if their
standards of proof are inconsistent. There is no question that, in a case under
Section 2(a), we must require that the purported name or identity or persona point
uniquely and unmistakably to the plaintiff. Notre Dame, 217 USPQ at 509.
Petitioner’s argument that the Ross standard “would complement the inquiry as to
whether the mark identifies Terry” (Petitioner’s reply brief at 2) is unavailing,
because even if OPERATION RESCUE is assumed to be Petitioner’s name itself,
Petitioner’s claim must fail if he cannot establish that it points to himself uniquely
and unmistakably. The evidence showed, by a heavy preponderance, that
OPERATION RESCUE did not point uniquely and unmistakably to Petitioner.
D. Analysis of “Founder.”
Petitioner finds fault with the Board’s interpretation of evidence in which
Petitioner was referred to as the “founder” of OPERATION RESCUE. The Board
addressed this evidence with attention because, in the Board’s view, it was among
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the most favorable evidence adduced by Petitioner (“This is clearly the association
with the movement that Petitioner has most successfully maintained in the public
perception.” Decision at 38.) Petitioner contends that the Board “diminishes this
use alone as insufficient….” (Recon. at 12.) However, the Board clearly did not
ignore the other evidence of recognition of Petitioner in the press, as is apparent in
the large number of citations to news items in the Decision.
Petitioner next argues that the Board treated “founder of Operation Rescue”
as the identity under analysis. Recon. at 12-13. We see nothing in the Decision
that could create this impression. The Board analyzed the meaning of “founder” in
order to determine whether OPERATION RESCUE pointed uniquely and
unmistakably to Petitioner, because this was a word that the press used in
describing Petitioner’s relationship to OPERATION RESCUE, and because
Petitioner himself alleges that he frequently emphasized his role as the founder of
the organization to third parties and the press. See, e.g., Terry Dep. I 50:22-51:4,
239:10-25. An understanding of the meaning of “founder” was essential to
understanding the meanings of the statements reported in the press.
Petitioner takes issue with the Board’s observation that the dictionary
definition of “founder” did not include any “necessary continuity of relationship”
between the founder and the founded entity. Petitioner suggests that with this
observation the Board imposed on Petitioner a requirement that Petitioner
demonstrate a “continuity of relationship” with the organization he founded. Recon.
at 13-14. There is nothing in the Decision placing such a burden of proof on
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Petitioner. Rather, the Board used the dictionary definition for objective guidance
in understanding what people meant when they referred to Petitioner as the
“founder of Operation Rescue.” With the assistance of the dictionary, the Board
found that people’s use of “founder” did not necessarily indicate a perception of any
continuing relationship, nor a relationship of identity, between Petitioner and
OPERATION RESCUE. Decision at 38 (“Where the evidence indicates that
Petitioner has been perceived as the founder of OPERATION RESCUE, we
interpret such acknowledgements in a manner consistent with the above
definitions.”) If such people meant something else when they said Petitioner was
the “founder of Operation Rescue,” it was Petitioner’s burden to show it. The
burden, however, was not to show that Petitioner had a perpetuity of relationship
with an organization; it was to show that the expression OPERATION RESCUE
pointed uniquely and unmistakably to himself.
Finally, Petitioner faults the Board for focusing on public perceptions as of
2006 (the date of issuance of the registration at issue, and the date as of which a
false suggestion of a connection must be shown), saying that “the Opinion parses
out the individual events of that year alone without recognition of Terry’s past
accomplishments” (Recon. at 14); and also suggesting that evidence of public
perceptions after 2006 should have been considered. Recon. at 15, citing Hornby, 87
USPQ2d at 1416. Petitioner’s criticism is unwarranted. As noted above, the
Decision cites numerous news articles relating to Petitioner from a wide range of
time periods. Hornby addressed whether evidence of fame or reputation that post-
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dated the relevant date of registration should be excluded. As in Hornby, the Board
in the present case did not exclude from evidence any of the news items submitted
by Petitioner: indeed, the Board overruled Registrant’s objections to the first and
second testimonial depositions of Rosemarie Szostak, which contained many such
press notices. Decision at 6-7.
After due consideration of all issues raised in Petitioner’s request for
reconsideration and in his reply brief, including those not specifically addressed
herein, Petitioner’s request for reconsideration is denied and the Board adheres to
its decision of April 22, 2013 dismissing the petition for cancellation.