Renaissance Rialto, Inc.v.Ky Boyd

Trademark Trial and Appeal Board

Sep 15, 2015

No. 92058035 (T.T.A.B. Sep. 15, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board

______

Renaissance Rialto, Inc.

v.

Ky Boyd
___

Cancellation No. 92058035
___

William J. Arnone, Jr. of Merrill, Arnone & Jones, LLP for Renaissance Rialto, Inc.

Duy Thai for Ky Boyd.
______

Before Bergsman, Ritchie and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
This is the second Board proceeding brought by Renaissance Rialto, Inc.
(“Petitioner”) against Ky Boyd (“Respondent”) involving Mr. Boyd’s
application/registration, issued under Section 2(f) of the Act, for the mark RIALTO
CINEMAS (in standard characters and with “cinemas” disclaimed) for “Movie
theaters” (the “Registration”).1 We dismissed the first proceeding, Opposition No.

1 Registration No. 4405337, issued September 24, 2013.
Cancellation No. 92058035

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91197602 (the “Opposition”), “without prejudice to [Petitioner’s] right to file a
petition for cancellation,” finding that Petitioner was not in privity with the only
party that obtained an extension of time to oppose the RIALTO CINEMAS
application, and that Petitioner therefore did not timely file its notice of opposition.2
In this proceeding, as in the Opposition, Petitioner alleges prior and continuous
use of “the mark and trade name RENAISSANCE RIALTO … for the operation of
movie theaters.” Petition for Cancellation ¶ 7. As grounds for cancellation, as in the
Opposition, Petitioner alleges that use of Respondent’s mark would be likely to
cause confusion with Petitioner’s mark and trade name; that the term RIALTO is
generic for and merely descriptive of Respondent’s services; fraud, in that
“Registrant knew he was not the only user of the term RIALTO in connection with
movie theaters when he filed his application for registration;” and that
Respondent’s mark has not acquired distinctiveness. Id. ¶¶ 8, 10-12. In his answer,
Respondent denies the salient allegations in the petition for cancellation, and
asserts as affirmative defenses that Petitioner does not have standing and that
Respondent’s mark has acquired distinctiveness.3

2 Final Decision issued May 31, 2013 in Opposition No. 91197602 (the “Prior Decision”).
3 Respondent also asserted other “affirmative defenses,” many of which are in fact merely
amplifications of Respondent’s denials, and others of which Respondent failed to explain or
pursue at trial and which are accordingly waived. Miller v. Miller, 105 USPQ2d 1615, 1616
n.3 (TTAB 2013); Baroness Small Estates Inc. v. American Wine Trade Inc., 104 USPQ2d
1224, 1225 n.2 (TTAB 2012). Even if Respondent had pursued its defense that Petitioner’s
claims “are barred under the doctrine of res judicata,” the defense of claim preclusion would
not be applicable here because the Prior Decision was not “on the merits.” Empresa Cubana
Del Tabaco v. General Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1064-65 (Fed. Cir.
2014). Similarly, issue preclusion would not apply because no substantive issues were
“actually litigated” in the Opposition. See B&B Hardware, Inc. v. Hargis Industries, Inc.,
___ U.S. ___, 113 USPQ2d 2045, 2051 (2015).
Cancellation No. 92058035

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The Record and Evidentiary Objections
The parties filed a joint motion to use testimony from the Opposition in this
proceeding, which the Board granted in its order of August 15, 2014. Accordingly,
the record consists of the pleadings, the file of the involved Registration, and the
following:
Petitioner’s notice of reliance (“Petitioner’s NOR,”
TTABVue Dkt. # 11) on the following materials from the
Opposition: portions of the discovery deposition of Mr.
Boyd and the exhibits thereto (“Boyd Disc. Tr.”); the
testimony deposition of Allen Michaan, its president and
“100 percent shareholder,” and the exhibits thereto
(“Michaan Tr.”); and the Final Decision in the Opposition.

Respondent’s notice of reliance (“Respondent’s NOR,”
TTABVue Dkt. # 12) on the following materials from the
Opposition: additional portions of the discovery deposition
of Mr. Boyd; the testimony deposition of Mr. Boyd and the
exhibits thereto (“Boyd Test. Tr.”); and portions of
Petitioner’s responses to Respondent’s interrogatories.

Respondent’s NOR includes dictionary definitions and
Internet printouts obtained in connection with this
proceeding.

Petitioner’s supplemental notice of reliance (“Petitioner’s
Supplemental NOR,” TTABVue Dkt. # 13) on Internet
printouts obtained in connection with this proceeding.

Respondent raises several evidentiary objections. It “objects,” not to the
admissibility of Exhibits 7-9 to Mr. Michaan’s testimonial deposition and his
accompanying testimony, or to Exhibits E-T of Petitioner’s Supplemental NOR, but
instead to any reliance on those web printouts to prove the truth of the matters
asserted therein. In response, Petitioner points out that Mr. Boyd testified that he
is familiar with the Cinema Treasures website that comprises Exhibit 7, and argues
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that this constitutes “an admission by a party opponent.” While neither Mr. Boyd
nor Mr. Michaan testified to the authenticity or accuracy of the Cinema Treasures
listings in Exhibit 7, and Mr. Boyd did not admit that the website could be relied on
for the truth of the matters asserted therein, striking the exhibit is inappropriate.
The Internet printouts introduced by both parties are admissible, but will be
considered only for what they show on their face. Safer, Inc. v. OMS Investments,
Inc., 94 USPQ2d 1031, 1039 (TTAB 2010) (Internet printouts admissible “for the
limited purpose of demonstrating what the documents show on their face”). As for
Exhibit 8, a Wikipedia entry for Santikos Theatres, which lists its “Rialto Cinema
Bar and Grill,” Mr. Michaan testified that he has “heard of them,” meaning
Santikos Theatres rather than its Rialto Cinema Bar and Grill, and also testified
that he is not otherwise familiar with Santikos. Michaan Tr. at 27-28. Accordingly,
the document is also admissible for what it shows on its face and Mr. Michaan’s
testimony is admissible for any probative value it may have. Similarly, when asked
about The Rialto Cinemas, the website for which comprises Exhibit 9, Mr. Michaan
testified that “I don’t know who these people are. I’m not familiar with the theater.”
Id. at 29. Accordingly, this website printout is also admissible only for what it
shows on its face.
Respondent also raises a hearsay objection to Mr. Michaan’s testimony that “I’ve
had a number of customers, you know, that I’ve ran into at the Grand Lake ask me
if we were operating the Elmwood Theater, ask me if we had a connection with the
Elmwood Theater.” Id. at 21, 65. The objection is overruled, because as Petitioner
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points out, the testimony is not offered for the truth of what the unidentified
“customers” said, but rather to establish “only that the questions were asked” of Mr.
Michaan. Petitioner’s Closing Brief at 7.
Respondent’s objection to Mr. Michaan’s testimony about the existence of a
number of “Rialto” theaters, and the history of “Rialto” theaters is also overruled.
Mr. Michaan’s lack of specificity and failure to explain the basis of his personal
knowledge about these topics affects the weight of the testimony, but not its
admissibility.
Finally, Respondent’s remaining objections to Mr. Boyd’s testimony on cross-
examination are all overruled. The unexplained objection that certain testimony is
“vague and ambiguous” is itself vague and ambiguous – any vagueness or ambiguity
in the testimony goes to its weight, not its admissibility. And where the witness was
asked about his understanding of his own actions, the questions do not call for a
“legal conclusion.”
Respondent’s Section 2(f) Claim of Acquired Distinctiveness
Respondent’s claim of acquired distinctiveness under Section 2(f) of the Act was
not made in response to an Office Action, or any inquiry or statement by the
Examining Attorney. Rather, Respondent’s voluntary 2(f) claim was included in his
original application, in which Respondent stated: “The mark has become distinctive
of the goods/services through the applicant’s substantially exclusive and continuous
use in commerce for at least the five years immediately before the date of this
Cancellation No. 92058035

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statement.” Respondent did not submit any evidence supporting the claim of
acquired distinctiveness prior to issuance of his involved Registration.
Facts of Record
The record -- the overwhelming majority of which was developed in connection
with the Opposition -- is quite sparse, and contains many “blanks” which the parties
have not “filled in” through the limited “new” evidence they submitted in connection
with this proceeding.
In any event, Petitioner is a “motion picture theater operating company” which
incorporated under the trade name Renaissance Rialto in 1972. Michaan Tr. 7-8.
Mr. Michaan selected the name “Rialto” based on the Rialto Theater in Stanford,
Connecticut, where he grew up. Id. at 9-10.
Petitioner’s first theater, “Rialto Cinema” in Berkeley California, opened in
1972, and eventually became known as “Rialto Cinemas” after adding additional
screens. It closed in approximately 1989. Id. at 9, 34. Its name was intended to
signify “rebirth of the Rialto Theater” in Stanford. Id. at 11. At various times since
its formation, Petitioner has operated “about 35 different theater locations all
within the [San Francisco] Bay area,” and as many as 19 theaters at one time.
Currently, Petitioner only operates one theater, the Grand Lake Fourplex in
Oakland, California, but Petitioner does not specifically use the name “Rialto” in
the theater’s name or advertising. Id. at 8, 38. Petitioner has been “active
continuously since 1972” and it “still is a theater operating company.” Id. at 9.
Petitioner has used its trade name on business cards, letterhead and promotional
Cancellation No. 92058035

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materials. However, other than revealing that certain trade name and service mark
uses of RIALTO occurred, and that certain promotional materials bearing
Petitioner’s trade name were distributed in the 1970’s and early 1980’s, the record
does not reveal exactly when these trade name or service mark uses occurred, or
whether the use has been continuous since 1972. Id.at 11-19 and Exs. 1-5.4
The record does reveal, however, that Grand Lake Theater movie tickets “often”
bear the “Renaissance Rialto” name, and that the name appears on tickets to an
antique fair run by Petitioner’s affiliate. Id. at 39. Furthermore, the web address for
the Grand Lake Theater is “renaissancerialto.com,” and the “History” page of the
theater’s website states that “In 1980, Allen Michaan, owner of Renaissance Rialto,
Inc. purchased the ground lease, opening the theater as a single screen Movie
Palace.” Id. Exs. 10, 11.
Respondent Mr. Boyd is president of Great Falls Entertainment Inc., which is
the managing member, and an owner, of both Sonoma Motion Picture Company
(“Sonoma”) and Pleasantown Motion Picture Company (“Pleasantown”). Boyd Test.
Tr. at 7-8. Pleasantown, which formed in 2002 but did not become active until 2007,
operates Rialto Cinemas Elmwood in Berkeley, California, which opened in June
2007, and Rialto Cinemas Cerrito in El Cerrito, California, which opened in July
2009. Sonoma operated Rialto Cinemas Lakeside from January 2000 through
August 2010, when its lease on the theater expired and the lease was offered to

4 Mr. Michaan testified that Petitioner did not have a practice of retaining copies of its
advertisements bearing its trade name or service marks because “it would take up a huge
amount of space.” Michaan Tr. at 19.
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another operator. Id. at 9-10, 16-17. In the process of selecting the RIALTO
CINEMAS mark prior to its first use in January 2000, Mr. Boyd discovered from a
dictionary definition that “rialto” means “theater district, specifically the theater
district in Venice, Italy.” Id. at 18-19; Respondent’s NOR Ex. 7; see also,
Respondent’s NOR Exs. 5, 6. Since 2000, Respondent has promoted his Rialto
theaters on the Internet, through print and radio advertisements and in other ways,
and from approximately 2002-2012, Respondent spent “probably about $8- or
$900,000” promoting his Rialto Cinemas brand. Id. at 37-56 and Exs. 5-12.
In or “around 2002,” Respondent became aware that Petitioner’s trade name was
Renaissance Rialto, Inc., and in 2006 Mr. Boyd learned that Petitioner operated a
theater called Renaissance Rialto. Id. at 61; Boyd Disc. Tr. at 66. In addition, Mr.
Boyd reads Variety, an entertainment publication, which Mr. Boyd testified uses the
word “rialto” to “describe the live stage,” and perhaps movie theaters as well. Id. at
20, 68-70. Mr. Boyd is aware that nonparties have operated theaters in the United
States under names which include “Rialto.” Boyd Test. Tr. at 70-78; Boyd Disc. Tr.
at 55.
According to Mr. Michaan, there are many movie theaters in the United States
which include the word “Rialto” in their names:
Any – almost any big city in this country during the
golden age of the movie palaces, which, you know, started
in the teens and went up into the ‘30’s, you could almost
never find a big city that did not have a Rialto Theater
there.

And it was a very popular name. I guess the genesis for
the name came from a bridge in Venice, the Ponte di
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Rialto. For whatever reason, American exhibition liked
the sound of the words, picked it up and it was
everywhere …

There still exists today in the country probably dozens
and dozens and dozens of theaters that operate under the
name “rialto.”

Michaan Tr. at 21-27. Petitioner has introduced additional evidence that third-
parties operate movie theaters in the United States which include the word “Rialto”
in their names. Id. at 25-29 and Exs. 7 (printout from “cinematreasures.org” website
listing theaters around the world which include “Rialto” in their name, and their
operating status), 8 (printout from “Wikipedia.org” entry for Santikos Theatres,
which indicates that one of its theaters is the Rialto Cinema Bar & Grill in Texas)
and 9 (printout from “earlans.net” website listing showtimes for The Rialto Cinemas
in Macomb, Illinois); Petitioner’s Supplemental NOR Exs. H-T.
Standing
Petitioner first used the trade name Renaissance Rialto, Inc. in connection
with movie theaters in 1972, and currently uses the trade name. This establishes
Petitioner’s standing. Books on Tape, Inc. v. Booktape Corp., 836 F.2d 519, 5
USPQ2d 1301, 1302 (Fed. Cir. 1987); Kistner Concrete Products, Inc. v. Contech
Arch Technologies, Inc., 97 USPQ2d 1912, 1918 (TTAB 2011); Stuart Spector
Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1553 (TTAB
2009); Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1428 (TTAB 2007); Plyboo
America Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1634 (TTAB 1999); Ipco Corp.
v. Blessings Corp., 5 USPQ2d 1974 (TTAB 1988).
Cancellation No. 92058035

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Descriptiveness and Acquired Distinctiveness
Where, as here, “an applicant seeks registration on the basis of Section 2(f), the
mark’s descriptiveness is a nonissue; an applicant’s reliance on Section 2(f) during
prosecution presumes that the mark is descriptive.” Cold War Museum, Inc. v. Cold
War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009).
Accordingly, there is no issue with respect to descriptiveness. We presume that
Respondent’s mark is merely descriptive.5 The question is whether it has acquired
distinctiveness.
In Cold War Museum, our primary reviewing court set forth the burdens of proof
and persuasion in cancellation proceedings grounded in Section 2(f) of the Act:
The party seeking to cancel registration of a mark always
bears the burden of persuasion, that is, the ultimate
burden of proving invalidity of the registration by a
preponderance of the evidence. Initially, the party seeking
cancellation also bears the “burden to establish a prima
facie case” that the registration is invalid. Yamaha [Int’l
Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6
USPQ2d 1001, 1007 n.9 (Fed. Cir. 1988)]. In a Section 2(f)
case, the party seeking cancellation bears the initial
burden to “establish a prima facie case of no acquired
distinctiveness.” Id. at 1576. To satisfy this initial burden,
the party seeking cancellation must “present sufficient
evidence or argument on which the board could
reasonably conclude” that the party has overcome the
record evidence of acquired distinctiveness – which
includes everything submitted by the applicant during
prosecution. Id. at 1576-77. The burden of producing
additional evidence or argument in defense of registration
only shifts to the registrant if and when the party seeking
cancellation establishes a prima facie showing of
invalidity. The Board must then decide whether the party

5 Respondent relies on the Merriam-Webster dictionary definition of “rialto,” the second
entry of which defines “rialto” as meaning “a theater district.” Respondent’s NOR Ex. 7.
Cancellation No. 92058035

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seeking cancellation has satisfied its ultimate burden of
persuasion, based on all the evidence made of record
during prosecution and any additional evidence
introduced in the cancellation proceeding.

Id. at 1629-30.
We often frame the issue as whether an involved mark had acquired
distinctiveness at the time it was registered. Harsco Corp. v. Electrical Sciences
Inc., 9 USPQ2d 1570, 1571-72 (TTAB 1988) (“We believe that the critical date is the
date of registration, because if a mark which is not registrable in the absence of
proof of distinctiveness was not in fact distinctive at the time of the issuance of the
registration thereof, then the registration was invalidly issued.”) In this case,
however, because the involved Registration was less than five years old at the time
the petition was filed, we also consider whether Respondent’s mark had acquired
distinctiveness at the time of trial. Kasco Corp. v. Southern Saw Service Inc., 27
USPQ2d 1501, 1506 n. 7 (TTAB 1993) (petitioner “could prevail in this action if the
record revealed that either as of [the registration date] or as of the present time, the
green wrapper lacked acquired distinctiveness”).
Here, as indicated, “the record evidence of acquired distinctiveness” is quite
limited. It consists of Respondent’s unsupported statement during prosecution that
“The mark has become distinctive of the goods/services through the applicant’s
substantially exclusive and continuous use in commerce for at least the five years
immediately before the date of this statement.” In addition, during the Opposition
Respondent submitted evidence, later reintroduced in this proceeding, that it used
RIALTO CINEMAS from January 2000 through August 2010 and that from
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approximately 2002-2012 it spent “probably about $8- or $900,000” ($800,000-
$900,000) promoting the Rialto Cinemas brand. Boyd Test. Tr. at 9-10, 16-17, 37-56
and Exs. 5-12. Respondent also introduced limited evidence of apparently
unsolicited media attention from Sonoma County, California publications and its
own promotional materials, but did not provide evidence regarding how widely
these materials were distributed. Id. Exs. 4, 6-10, 12.
Petitioner has overcome this record evidence of acquired distinctiveness. In fact,
Petitioner has established that Respondent’s use of RIALTO in connection with
movie theaters is not “substantially exclusive.” To the contrary, Petitioner first used
the trade name Renaissance Rialto, Inc. in connection with movie theaters in 1972,
and currently uses the trade name for a movie theater. Furthermore, Petitioner has
introduced website printouts which on their face establish that third-parties are
described or identified as operating or owning Rialto-branded movie theaters, or
that Rialto-branded movie theaters promote themselves online and include current
movie listings online. Specifically:
Santikos Theatres, which Mr. Michaan is familiar with, is
listed in Wikipedia as owning a number of “current
theatres,” including Rialto Cinema Bar & Grill in Texas.
Michaan Test. Tr. at 27-28 and Ex. 8. See also,
Petitioner’s Supplemental NOR Ex. R. The Wikipedia
entry is dated prior to the date the involved Registration
issued.

The “earlans.net/rialtocinemas.html” website promotes
The Rialto Cinemas in Macomb, Illinois, including by
promoting “1/2 price Tuesdays on soda and popcorn,” and
listing showtimes. Michaan Test. Tr. at 29 and Ex. 9
(dated February 23, 2011); Petitioner’s Supplemental
NOR Ex. H (dated November 24, 2014). The 2011 website
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printout is dated prior to the date the involved
Registration issued.

The results of a search of “rialto” on the
“cinematreasures.org” website revealed listings for a
number of movie theaters, by location, operating status
(open or closed) and number of screens. Id. at 24-27 and
Ex. 7. These include, in addition to Respondent’s theaters
and the third-party Rialto Cinema Bar & Grill in Texas
and The Rialto Cinemas in Macomb, Illinois listed above,
the following theaters in the United States identified as
“open”: Rialto II Theatre in Geneva, Nebraska; Rialto
Square Theatre in Joliet, Illinois; Rialto Theater in
Aitkin, Minnesota; Rialto Theater in Aransas Pass, Texas,
Rialto Theater in Atlanta, Georgia; Rialto Theater in
Brownfield, Texas; Rialto Theater in Canton,
Pennsylvania; Rialto Theater in Denison, Texas; Rialto
Theater in El Dorado, Arkansas; Rialto Theater in
Grayling, Michigan; Rialto Theater in Hartingen, Texas;
Rialto Theater in Loveland, Colorado; Rialto Theater in
Missouri Valley, Iowa; Rialto Theater in Tacoma,
Washington; Rialto Theater in Three Rivers, Texas; Rialto
Theater in Villisca, Iowa; Rialto Theatre in Casper,
Wyoming; Rialto Theatre in Lancaster, New Hampshire;
Rialto Theatre in Pocahontas, Iowa; Rialto Theatre in
Raleigh, North Carolina; Rialto Theatre in Searcy,
Arkansas; Rialto Theatre in Tucson, Arizona; Rialto
Theatre of Westfield in Westfield, New Jersey; and Rialto
Twin Theatre in Alva, Oklahoma. Id. The website
printout is dated prior to the date on which the involved
Registration issued.

As indicated in connection with our discussion of Respondent’s evidentiary
objections, we recognize that the Internet printouts are only admissible for what
they show on their face. However, these materials show more on their face than
Respondent is willing to concede. Specifically:
Petitioner provided two printouts from the website of the
Rialto Cinemas in Macomb, Illinois, one dated February
23, 2011, and another dated November 24, 2014, almost
three years later. Michaan Tr. Ex. 9; Petitioner’s
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Supplemental NOR Ex. H. The more recent website
printout lists showtimes for movies including Hunger
Games: Mockingjay-Part One, Interstellar, Big Hero 6
and Unbroken. On their face, these printouts reveal that
a website for “Rialto Cinemas” existed in 2011 and 2014,
was accessible to Internet users and indicated that
certain movies were to be shown at the “Rialto Cinemas”
in 2011 and 2014. This 2011 printout is dated prior to the
date the involved Registration issued.

A printout from the “facebook.com” website dated
December 26, 2014 lists movie showtimes for the Rialto
Cinema & Video of Alva Oklahoma, which corroborates
the “cinematreasures.org” website in that both printouts
indicate on their face that at least one third-party Rialto-
branded cinema in Alva, Oklahoma is described online as
offering movie theater services, or promotes its movie
theater services online. Petitioner’s Supplemental NOR
Ex. I.6

Similarly, a printout from the “ambassadorcinemas.com”
website on its face indicates that there is a website for
The Rialto (perhaps also known as Rialto Colony) movie
theater in Raleigh, North Carolina, which corroborates
the “cinematrasures.org” website in that both printouts
indicate on their face that there is at least one third-party
Rialto-branded cinema in Raleigh, North Carolina
described online as offering movie theater services, or
which promotes movie theater services online. Id. Ex. J.
The “ambassadorcinemas.com” website indicates that
“The Rialto has won Best in the Triangle for 2004, 2005,
2006, 2007, 2008,” i.e. before issuance of the involved
Registration. Id.

A printout from the “Wikipedia.org” website indicates
that “Rialto Theater may refer to,” among others, Rialto
Theatre in Tucson, Arizona, Rialto Theatre in El Dorado,
Arkansas, Rialto Theater in Searcy Arkansas, Rialto

6 This printout also corroborates portions of the more recent evidence concerning Rialto
Cinemas in Macomb, Illinois, in that both websites indicate that in late 2014 the following
movies were being shown in theaters: Unbroken; Night at the Museum: Secret of the Tomb;
Exodus: Gods & Kings: Hobbit: Battle of the Five Armies; St. Vincent; Big Hero 6;
Interstellar; and Penguins of Madagascar.

Cancellation No. 92058035

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Theater in Loveland, Colorado, Rialto Square Theatre in
Joliet, Illinois or Rialto Theater in Tacoma, Washington.
Id. Ex. K. These listings appear to corroborate the
identical or highly similar listings in the
“cinematreasures.org” website printout. While the second
word in the names of a few of these theaters is spelled
“theater” on the Wikipedia printout and “theatre” on the
Cinema Treasures printout, or vice versa, we note that the
Rialto Square Theatre in Joliet, Illinois is listed
identically on each website and that both sites identify
“Rialto Theatre” in Tucson, Arizona using the more
uncommon spelling, “theatre.”

A November 24, 2014 printout from the
“rialtoiitheater.org” website lists showtimes for the Rialto
II Theater in Geneva, Nebraska, including showtimes for
Big Hero 6, Interstellar, Penguins of Madagascar and
Hunger Games: Mockingjay Part 1, which corroborates
the identical listing in the “cinematreasures.org” website,
and establishes that movie theater services from RIALTO
II THEATER in Geneva, Nebraska are being promoted
online. Id. Ex. L.

A November 24, 2014 printout from the “aitkinrialto.com”
website lists showtimes for Hunger Games: Mockingjay Pt
1, indicates that Aitkin has had a movie theater for 112
years, and refers to the Rialto Theater as a “movie
palace.” Id. Ex. M. This corroborates the identical listing
in the “cinematreasures.org” website. The “History of the
Rialto Theatre” section of the website is dated 2010,
which is before issuance of the involved Registration.

A printout from the “arnoldne.org/rialto-theatre” website
reveals that movie theater services from The Rialto
Theatre in Arnold, Nebraska are promoted online. Id. Ex.
N.

A printout from the website of the Rialto Theatre in
Pocahontas, Iowa (“pocahontasrialto.com”) corroborates
the “cinematreasures.org” listing of the same theater, and
reveals that movie theater services from the Rialto
Theatre in Pocahontas are promoted online. Id. Ex. O.
Petitioner printed this theater’s website on the same day
it printed the website of The Rialto Theatre in Arnold,
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Nebraska, and both theaters list showtimes for Gone Girl
and Alexander and the Terrible, Horrible, No Good, Very
Bad Day.

A printout from the website of the Rialto Theatre in
Lancaster, New Hampshire (“lancasterrialto.com”)
corroborates the “cinematreasures.org” listing of the same
theater, and reveals that movie theater services from the
Rialto Theatre in Lancaster are promoted online. Id. Ex.
P. Like many of the other theaters about which there is
record evidence, in late 2014 this theater was described
online as showing The Hunger Games: Mockingjay Pt 1.

A printout from the Rialto Theatre in Westfield, New
Jersey’s website (“westfieldtoday.com/rialtotheater”)
corroborates the “cinematreasures.org” listing of the same
theater, and reveals that movie theater services from the
Rialto Theatre in Westfield are promoted online. Id. Ex.
Q. Like many of the other theaters about which there is
record evidence, in late 2014 this theater was described as
showing The Hunger Games: Mockingjay Pt 1, Big Hero 6,
Interstellar and Alexander and the Terrible Horrible No
Good Very Bad Day.

A printout from the website of the Santikos Rialto in San
Antonio, Texas (“santikos.com”) corroborates the
“cinematreasures.org” and Wikipedia listings of the same
theater, and reveals that movie theater services from the
Santikos Rialto are promoted online. Id. Ex. R. Like many
of the other theaters about which there is record evidence,
in late 2014 this theater was described as showing The
Hunger Games: Mockingjay Pt 1, Big Hero 6 and
Interstellar.

A printout from the website of the Rialto Theatre in The
Villages, Florida (“thevillagestheatres.com/RIALTO.
html”) reveals that movie theater services from this
theater are promoted online, and like many of the other
theaters about which there is record evidence, in late
2014 this theater was described as showing Interstellar,
Gone Girl and The Judge. Id. Ex. S.

A printout from the website of the Rialto Theatre in
Tucson, Arizona (“rialtotheatre.com”) corroborates the
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“cinematreasures.org” and Wikipedia listings of the same
theater. Id. Ex. T. The “History” page of the website
states: “Like all Rialtos (and there are many extant
worldwide) the name hearkens to a medieval covered
bridge in Venice around which novelty shops were built,
providing a de facto ‘entertainment district’ when no such
thing existed. ‘Rialtos’ were plazas where the common
man could go for fun, as ‘Theatres’ and ‘Operas’ were
reserved for the nobility and the wealthy.” Id. The
“History” page also indicates that the theater operated
under the RIALTO name prior to issuance of the involved
Registration.

Despite the deficiencies in this evidence – website printouts by themselves are
not competent to prove the truth of the matters asserted therein and the printouts
do not establish the extent of any impact the websites might have had on the minds
of the purchasing public – we may not ignore it. See Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., ___ F.3d ___, ___
USPQ2d ___, 2015 WL 4934553 (Fed. Cir. Aug. 19, 2015) and Juice Generation, Inc.
v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015) (both
addressing the impact of third-party use on likelihood of confusion analyses, and
reversing Board decisions for failing to adequately consider evidence of third-party
use). Here, while the issue is more whether Respondent’s use is “substantially
exclusive” rather than whether consumers have learned to distinguish between
similar marks, at the same time, as in Juice Generation and Jack Wolfskin, “[t]he
specifics as to the extent and impact of use of the third parties’ marks may not have
been proven, but in the circumstances here, [Petitioner’s] evidence is nonetheless
powerful on its face.” Juice Generation, 115 USPQ2d at 1674; Jack Wolfskin, 2015
WL 4934553 *8 (evidence of widespread third-party use should be considered “even
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where the specific extent and impact of the usage has not been established”). But
see In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448 (“Likewise,
the fact that Newbridge, Ireland, is mentioned on some internet websites does not
show that it is a generally known location. The internet (and websites such as
Wikipedia) contains enormous amounts of information: some of it is generally
known, and some of it is not … Further, it is simply untenable that any information
available on the internet should be considered known to the relevant public.”)
In fact, Petitioner’s evidence on its face establishes that third-parties are widely
described or identified as operating or owning Rialto-branded movie theaters, or
that Rialto-branded movie theaters have been promoted online with current movie
listings. Movie theaters generally, and the movie theaters specifically identified in
Petitioner’s evidence, have seats for numerous moviegoers. They presumably
attempt to attract as many moviegoers as will fit in their seats. Here, a significant
number of the RIALTO-branded movie theaters appearing on the face of Petitioner’s
evidence are described as having been in business for years. This case is therefore
unlike Newbridge, in that the evidence is not simply “any information available on
the internet,” but information specifically intended to inform tens or hundreds of
consumers (or much more), and to provide them with specific actionable information
like showtimes, of which there are generally several per day, every day (or most
days) of the week. It is simply not credible that multiple movie theaters which have
remained in business for years have not attracted a substantial number of
consumers to movies or their websites over those years. The evidence is so extensive
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(and on its face has clearly had some impact on a substantial number of United
States consumers), that we view it more like the Internet evidence of widespread
third-party use in Juice Generation and Jack Wolfskin than just “any” Internet
evidence such as in Newbridge.
While many of the third-party Rialto-branded theaters depicted on the face of
the Internet evidence are named either “Rialto Theater” or “Rialto Theatre,” it
appears clear from the descriptions of and other evidence about these theaters that
most if not all of them are owned by separate entities.7 In any event, at a minimum,
there is uncontradicted, corroborated testimony or other evidence that at least
Petitioner Renaissance Rialto, Inc., Rialto Cinema Bar & Grill, The Rialto Cinemas,
The Rialto, Rialto Theatre in Tucson, Arizona, Rialto II Theater and Aitkin Rialto
are identified online by RIALTO trade names or service marks in connection with
movie theater services, or are described online as offering movie theater services
under RIALTO trade names or service marks. See In re Broadway Chicken Inc., 38
USPQ2d 1559, 1565 n. 16 (“We realize, of course, that the record does not reveal the
extent of the use made by the listed third-party businesses; that some of the
businesses may never have gotten off the ground, or may have gone out of business;
that some of the businesses may be small enterprises, in remote locations, that have
affected only a miniscule portion of the general purchasing public … Nevertheless,
the magnitude of applicant’s evidentiary record is such that even allowing for these
possibilities, there is still a significant body of evidence of third-party use.”).

7 Many of the theaters have websites with apparently unconnected domain names.
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Furthermore, after Respondent testified that he had not objected to anyone’s use of
RIALTO alone for movie theaters, and was asked “why not?,” he testified “Because
our name is Rialto Cinemas. Rialto is a classic movie theater name. There are lots
of closed, former Rialto theaters ….” Boyd Test. Tr. at 36.
Respondent’s mark is not distinctive, and Respondent’s use has not been
“substantially exclusive.” Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222
USPQ 939, 940-41 (Fed. Cir. 1984) (“When the record shows that purchasers are
confronted with more than one (let alone numerous) independent users of a term or
device, an application for registration under Section 2(f) cannot be successful, for
distinctiveness on which purchasers may rely is lacking under such
circumstances.”). See also, ERBE Elektromedizin GmbH v. Canady Technology LLC,
629 F.3d 1278, 97 USPQ2d 1048, 1057 n.4 (Fed. Cir. 2010) (“the record evidence
shows that at least one of ERBE’s competitors, ConMed, uses blue flexible
endoscopic probes for use in argon plasma coagulation and thus ERBE does not
maintain exclusive use”); see also, Racine Industries Inc. v. Bane-Clene Corp., 35
USPQ2d 1832, 1840 (TTAB 1994); Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142,
1145-46 (TTAB 1990). In other words, Petitioner has established a prima facie case
that Respondent’s mark has not acquired distinctiveness.8
Furthermore, the evidence of widespread third-party promotion of RIALTO-
branded movie theater services, and the numerous websites identifying RIALTO-

8 While Respondent often uses RIALTO CINEMAS, “cinemas” is obviously generic or
highly descriptive of movie theater services, as evidenced by Respondent’s disclaimer of the
term and the several third-parties which also use RIALTO CINEMAS, or variations
thereof, in identifying movie theaters online.
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branded movie theaters, tend to establish that RIALTO “carries a suggestive or
descriptive connotation in the movie theater industry.” Juice Generation, 115
USPQ2d at 1675. This is buttressed by the presumption of descriptiveness arising
out of Respondent’s Section 2(f) claim of acquired distinctiveness. It is settled that
“the applicant’s burden of showing acquired distinctiveness increases with the level
of descriptiveness; a more descriptive term requires more evidence of secondary
meaning.” In re Steelbuilding, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir.
2005) (citing In re Bongrain Intern. (Am.) Corp., 894 F.2d 1316, 13 USPQ2d 1727
(Fed. Cir. 1990)); see also, In re Louisiana Fish Fry Products, Ltd., ___ F.3d ___, ___
USPQ2d ___, 2015 WL 491166 (Fed. Cir. Aug. 14, 2015).
In determining whether Respondent has met its burden of overcoming
Petitioner’s prima facie case, we “may examine copying, advertising expenditures,
sales success, length and exclusivity of use, unsolicited media coverage, and
consumer studies (linking the name to a source),” though “no single factor is
determinative.” In re Steelbuilding, 75 USPQ2d at 1424. Here, while Respondent
has introduced a small number of apparently unsolicited articles about its RIALTO
CINEMAS, there is no evidence regarding how widely distributed or viewed those
articles were, they are not in well-known publications and appear to be local in
nature, and as a whole are underwhelming. Respondent’s mere use of RIALTO
CINEMAS for 10 or 12 years and its promotional expenditures of under $1 million
over that period of time is also insufficient where RIALTO and RIALTO CINEMAS
are commonly used by third-parties in identifying movie theaters or movie theater
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services, and various websites and reference materials identify numerous movie
theaters named RIALTO, RIALTO THEATER or variations thereof. In fact, in cases
such as this, significantly higher advertising expenditures and longer use than
Respondent has established for its involved mark have been found insufficient to
establish acquired distinctiveness. See, e.g., In re Louisiana Fish Fry Products, 2015
WL 491166 *4; In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed.
Cir. 1999) ($85,000,000 in annual sales revenue and $2,000,000 in annual
advertising expenditures insufficient); Alcatraz Media Inc. v. Chesapeake Marine
Tours, Inc., 107 USPQ2d 1750, 1765-67 (TTAB 2013), aff’d, 565 Fed.Appx. 900 (Fed.
Cir. 2014); In re Ennco Display Systems, Inc., 56 USPQ2d 1279, 1286 (TTAB 2000)
(while Board may consider evidence of continuous use for more than five years, “the
language of the statute is permissive, and the weight to be accorded this kind of
evidence depends on the facts and circumstances of the particular case”); Goodyear
Tire & Rubber Co. v. Interco Tire Corp., 49 USPQ2d 1705 (TTAB 1998) ($56,000,000
in sales revenue and 740,000 tires sold insufficient).
In short, Petitioner has satisfied its ultimate burden of persuasion, based on
all the evidence of record, that Respondent’s use of RIALTO CINEMAS for movie
theaters is and was not “substantially exclusive;” that the mark had not acquired
distinctiveness when assessed as of the date of registration; and that it is not now
distinctive.

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Conclusion
Because the Registration issued under Section 2(f), Respondent’s mark is not
inherently distinctive. Cold War Museum, 92 USPQ2d at 1629. Petitioner has
established that Respondent’s mark has not acquired distinctiveness. The mark is
therefore not distinctive and we need not reach Petitioner’s remaining claims.

Decision: The petition to cancel is granted and the Registration will be
cancelled in due course.