Renaissance Rialto Inc.v.Ky Boyd

Trademark Trial and Appeal Board

May 31, 2013

No. 91197602 (T.T.A.B. May. 31, 2013)

Mailed: May 31, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Renaissance Rialto Inc.1
v.
Ky Boyd
_____

Opposition No. 91197602
to Application No. 85007256
_____

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

Cyrus Wadia of Cooper White & Cooper LLP, for Ky Boyd.

_____

Before Bergsman, Ritchie, and Adlin, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Renaissance Rialto Inc. (opposer) has brought this
proceeding in opposition to the registration by Ky Boyd
(applicant) of the mark “RIALTO CINEMAS,” in standard
characters, for “movie theaters”2 in International Class 41.

1 Asserted successor to the interest of Lakeside Cinema Partners,
LLC for the rights involved in this case.

2 Application No. 85007256, filed April 6, 2010, under Section
1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging first
use and first use in commerce on January 4, 2000.

THIS OPINION IS A PRECEDENT
OF
THE T.T.A.B.
Opposition No. 91197602
2
The application claims acquired distinctiveness under
Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), and
applicant disclaims the exclusive right use the term
“CINEMAS” apart from the mark as a whole.
Opposer initiated the opposition on November 23, 2010,
pleading claims in the alternative. In the notice of
opposition, opposer alleges that the applied-for mark “so
resembles Opposer’s mark previously used in the United
States, and not abandoned, as to be likely to cause
confusion, or to cause mistake, or to deceive.” Notice, at
Para. 5. Opposer further alleges that the term “RIALTO” is
“merely descriptive” of “movie theaters”3 and that
applicant’s mark “has, in fact, become a generic name of
such services.” Id. at Para. 8. The notice further alleges
that applicant knew he was not the only user of the term
“RIALTO in connection with movie theaters when he filed this
application for registration. Accordingly, his claim of
exclusive use in the registration application constitutes a
fraud on the Patent and Trademark Office.” Id. at Para. 9.
In his answer, applicant denied the salient allegations
in the notice of opposition, and set forth several purported
affirmative defenses, including that “[o]pposer is not using
the alleged trademark as a trademark,” (Answer, at

3 Although not explicitly pled, we view this claim as also
alleging that the mark has not acquired distinctiveness, as
further discussed by the parties in their briefs on the merits.
In view thereof, we find that the issue of whether applicant’s
mark has acquired distinctiveness was tried by implied consent
pursuant to Fed. R. Civ. P. 15(b)(2).
Opposition No. 91197602
3
Affirmative Defense No. 4) as well as laches, acquiescence
and estoppel. Id., at Affirmative Defense No. 6.
Both parties submitted briefs, and opposer submitted a
reply brief.
The Record
The record in this proceeding consists of the pleadings
and the file of the application at issue. Additionally,
both parties submitted discovery and testimony depositions
and notices of reliance, as follows:
1. Portions of discovery deposition of applicant
Ky Boyd, dated August 26, 2011, together with
certain exhibits thereto, submitted by
opposer.
2. Additional portions of discovery deposition of
applicant Ky Boyd, for clarification,
submitted by applicant.
3. Testimonial deposition of Allen Michaan, dated
November 15, 2011, together with exhibits
thereto, submitted by opposer.
4. Testimonial deposition of Ky Boyd, dated
January 19, 2012, together with exhibits
thereto, submitted by applicant.
5. Notice of Reliance on opposer’s responses to
applicant’s first set of interrogatories,
submitted by applicant via Notice of Reliance.
Opposition No. 91197602
4
Threshold Jurisdictional Issue: Timeliness of the Notice of
Opposition

The parties dispute whether this opposition proceeding
was timely filed. This is an issue of jurisdictional
significance. See generally Cass Logistics Inc. v. McKesson
Corp., 27 USPQ2d 1075 (TTAB 1993). The deadline to oppose
the involved application expired on October 7, 2010. As
noted earlier, this notice of opposition was filed on
November 23, 2010. While a timely initial request for an
extension of time to oppose was filed and granted, extending
the time to oppose until January 5, 2011, the request was
filed not by opposer, but instead by a third party, Lakeside
Cinema Partners LLC (“Lakeside Cinema”). After receiving
the extension of time to oppose, Lakeside Cinema, instead of
filing an opposition, executed a “Transfer Agreement” with
opposer, dated November 1, 2010, whereby Lakeside Cinema
purported to transfer to opposer, inter alia, its right to
initiate and prosecute this opposition.
This series of events raises the issue of whether
opposer has the right to claim the benefit of the extension
of time granted to Lakeside Cinema. Applicant argues that
no valid rights were actually conferred by Lakeside Cinema
via the November 1, 2010 Transfer Agreement with regard to
this opposition. See Answer at Para. 2 (“Applicant denies
that Lakeside Cinema Partners, LLC is a ‘predecessor in
interest’ to Opposer”); Id., at Affirmative Defense No. 5,
Opposition No. 91197602
5
(“The purported November 1, 2010 ‘Transfer Agreement’ is
invalid”); Appl’s brief at 12 (“Here, Opposer has no
standing to oppose the application because it has not
established the necessary privity with the initial opposer,
in that it is not a new owner or transferee of rights to the
original opposer’s marks.”).4
A party which files an opposition during an extended
opposition period must have obtained the extension in its
own name or must be in privity with the party that filed the
request for an extension of time to oppose. See 37 CFR §
2.102(b); see also TBMP § 206.01 (“A request for a further
extension, or an opposition, filed in a different name will
be accepted if a person in privity with the person granted
the previous extension files it . . . .”) As the Board
said in Cass Logistics, 27 USPQ2d at 1077:
An extension of time to oppose is a personal
privilege, inuring only to the benefit of the
party to which it was granted or a party shown to
be in privity therewith. A party cannot claim the
benefit of an extension granted to another
(unrelated) party. This is so even in those cases
where the two parties, although not in privity
with one another, share the same objection to the
issuance of a registration to applicant....

4 It would have been a better practice for applicant to have
brought the jurisdictional issue to the Board for a ruling in an
earlier motion. However, jurisdiction remains an issue
throughout a proceeding, and we therefore determine it now. Fed.
R. Civ. P. 12(h)(3) (“If the court determines at any time that it
lacks subject-matter jurisdiction, the court must dismiss the
action.”).
Opposition No. 91197602
6
“[T]he concept of privity generally includes, inter
alia, the relationship of successive ownership of a mark
(e.g., assignor, assignee)….” Id. § 206.02. To determine
whether we have jurisdiction in this opposition, we
therefore look to the terms of the Transfer Agreement to see
whether Lakeside Cinema, which is the only party that filed
a request for extension of time to oppose the subject
application, effectively transferred its right to oppose and
the benefit of its extension of time to do so.
“Typically, the right to go forward with an opposition
may be transferred when the opposer, or its pleaded mark and
the goodwill associated therewith, has been acquired by
another party.” SDT Inc. v. Patterson Dental Co., 30 USPQ2d
1707, 1709 (TTAB 1994).5 Here, the Transfer Agreement6
provides, in relevant part:
Recitals

A. Transferor is the owner of a
leasehold interest in and to a movie
theater in Santa Rosa, California. For
several years prior to Transferor
obtaining said leasehold interest, the
movie theater was operated by a prior

5 See also Huffy Corp. v. Geoffrey Inc., 18 USPQ2d 1240, 1243
(Comm’r Pat. 1990) (affirming Board decision allowing joinder of
opposer where party obtained rights to pleaded mark after
opposition instituted); William & Scott Co. v. Earl’s Restaurants
Ltd., 30 USPQ2d 1870, 1872 (TTAB 1994) (party substitution
granted on ground that pleaded mark had been assigned by the
party who had filed notice of opposition, and therefore assignee
is “real party in interest”).

6 Michaan depo. at 22 and Ex. 6 (affirming signature and terms).
Opposition No. 91197602
7
leaseholder as the Rialto Cinemas.7
When Transferor obtained the leasehold
interest, consideration was given to
continuing operations under the name
Rialto Cinemas, as well as possible
adoption of a new name. While
considering these alternatives,
Transferor learned that an application
was filed with the Federal Trademark
Office to register a claim to ownership
of the alleged mark RIALTO CINEMAS
(Application Serial No. 85007256)…
Transferor filed a Request for Extension
of Time to oppose the Application.

C. … Transferor has now decided to use
a different name to operate its cinema.

Agreement

1. Without admitting that the words
“RIALTO CINEMAS” qualify for
protection as a federally
registrable trademark, Transferor
hereby assigns, transfers and
quitclaims to Transferee any right,
title or interest it may have to
use the name RIALTO CINEMAS as the
name of a movie theater anywhere
within the United States of
America. This transfer includes
any accompanying goodwill that is
Associated with the use of the
words RIALTO CINEMAS in connection
with the operation of a movie
cinema.
2. Transferor also transfers to
Transferee its right to oppose the
pending Application to register the
alleged RIALTO CINEMAS mark
pursuant to the extension of time
filed by Transferor on September
30, 2010. The parties intend that
Transferee shall be the successor-

7 As discussed infra, “the prior leaseholder” from whom Lakeside
Cinema purports in the Transfer Agreement to have obtained rights
to use the mark RIALTO CINEMAS is none other than applicant
himself.

Opposition No. 91197602
8
in-interest to Transferor’s right
to pursue said opposition
proceeding.

It is clear from the terms of the Transfer Agreement
that Lakeside Cinema intended to transfer to opposer its
“right, title or interest” including “accompanying
goodwill,” if any, to the mark RIALTO CINEMAS. It is not
clear, however, that Lakeside Cinema ever possessed any
rights in the mark for it to transfer. The Transfer
Agreement states ambiguously in the recitals that when
Lakeside Cinema obtained the leasehold interest to the
property formerly known as Rialto Cinemas, “consideration
was given to continuing operations under the name Rialto
Cinemas, as well as possible adoption of a new name.”
(emphasis added). Without further clarification, the
recitals later state that Lakeside Cinema “has now decided
to use a different name to operate its cinema.”
Accordingly, it is not at all clear from the Transfer
Agreement that Lakeside Cinema ever used the mark or had any
goodwill therein to transfer to opposer. Without evidence
of any actual use of the mark, Lakeside Cinema had no
goodwill to give, regardless of what the Transfer Agreement
may say or suggest was intended to be transferred. See
Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB
2009) (A party may establish its own prior proprietary
rights in a mark through actual or constructive use of the
Opposition No. 91197602
9
mark or through use analogous to trademark use, such as use
in advertising brochures, trade publications, catalogues,
newspaper advertisements and Internet websites which create
a public awareness of the designation as a trademark
identifying the party as a source); Trademark Act §§2(d) and
45, 15 U.S.C. §§1052(d) and 1127. See also T.A.B. Systems
v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir.
1996), vacating Pactel Teletrac v. T.A.B. Systems, 32 USPQ2d
1668 (TTAB 1994). Without more, we cannot find that there
was use of a mark by Lakeside Cinema such as to create
trademark rights which could be, or were, transferred to
opposer.
Nor is there anything else in the record that would
indicate to us that Lakeside Cinema did indeed use the mark
RIALTO CINEMAS in a manner that would create rights which
could be transferred via the Transfer Agreement to opposer.
Indeed, applicant steadfastly protested that he was not
aware of anyone other than his own companies using that mark
for movie theaters in the United States during the period of
time 2000 to 2010. (Boyd testimony depo. at 36). He also
testified specifically that he did not license the use of
his mark to Lakeside Cinema during or after the time that he
leased the property where he had run the “Rialto Cinemas
Lakeside” in Santa Rosa, California, the property in which
Opposition No. 91197602
10
he was referred to as the “prior leaseholder” in the
Transfer Agreement:
Q: Did you ever license the use of the name Rialto
Cinemas to the master leaseholder or property
owner?
A: No.
Q: Did you ever license the use of the name Rialto
Cinemas to Lakeside Cinema Partners, LLC?
A: No.
(Boyd testimony depo. at 66)
Opposer did not submit any evidence to contradict
applicant’s evidence or to show use of the mark by Lakeside
Cinema. Rather, opposer’s president indicated he was not
aware that Lakeside Cinema, or its owner Dan Takini, had
used the mark RIALTO CINEMAS:
Q: Do you know if Mr. Takini operated a theater
called “Rialto Cinemas” at that location?
A: No, I believe he was calling it “The Lakeside
Theaters.”
(Michaan depo. at 51)
In this regard, opposer’s president also admitted that
his understanding of the rights transferred by the Transfer
Agreement were not based on any use of a mark by Lakeside
Cinema of the mark RIALTO CINEMAS, or any part thereof,
including RIALTO, but rather on a natural right of a
Opposition No. 91197602
11
competitor to stop applicant from using what opposer deems
to be a generic term:
Q: What did you understand at the time to be Mr.
Takini’s right, title and interest to use the mark
“Rialto”?
A: In my mind?
Q: Yes.
A: The same right as anyone else would have to use
it. And my interest here was to oppose the
application to trademark because I felt it was
absolutely inappropriate for anyone to trademark
the name “Rialto.”
(Id. at 52-53)
Accordingly, we find that there has been an
insufficient showing of use by Lakeside Cinema of the mark
that it purports to transfer in the Transfer Agreement to
opposer. Without that showing, Lakeside Cinema transferred
only the bare right to oppose applicant’s registration.
Opposer is not a successor to any proprietary interest in
the mark. Nor are opposer and Lakeside Cinema in the
position of a parent-subsidiary, licensor-licensee, or any
other relationship in respect of prior rights in the mark.
We therefore hold, on the facts of this case, that
acquisition of another’s right to oppose, independent of a
transfer of rights to a trademark and its associated
Opposition No. 91197602
12
goodwill, is an insufficient basis upon which to claim the
benefit of the transferor’s personal privilege in an
extension of time to oppose an application. See SDT Inc., 30
USPQ2d at 1709. Thus, opposer’s filing date on November 23,
2010, is outside the 30 days allotted for initiating an
opposition or requesting an extension of time to do so.
Since opposer did not file the notice of opposition during
the proper time, and is not in privity with the party that
did so, we have no jurisdiction.
DECISION: The opposition is dismissed without
prejudice to opposer’s right to file a petition for
cancellation, if otherwise appropriate.