No. 92065144 (T.T.A.B. Oct. 17, 2018)

Rocco Giordanov.Ferdinand Offray, IV

Trademark Trial and Appeal BoardOct 17, 2018

No. 92065144 (T.T.A.B. Oct. 17, 2018)

This Opinion is not a Precedent of the TTAB Mailed: October 17, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Rocco Giordano v. Ferdinand Offray, IV Cancellation No. 92065144 Rocco E. Giordano, pro se for Petitioner. Ferdinand Offray, IV, pro se for Respondent. _____ Before Cataldo, Lykos and Kuczma, Administrative Trademark Judges. Opinion by Kuczma, Administrative Trademark Judge: Rocco E. Giordano (“Petitioner”) filed a Petition for Cancellation of Ferdinand Offray IV’s (“Respondent”), Trademark Registration No. 4394536 for the mark FADED ROYALTY (standard characters) for “athletic apparel, namely, shirts, pants, Cancellation No. 92065144 - 2 - jackets, footwear, hats and caps, athletic uniforms” in International Class 25,1 alleging that Respondent’s mark is likely to be confused under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), with Petitioner’s previously used common law mark FADED ROYALTY for clothing.2 Respondent denies the salient allegations in his Answer to the Petition. Respondent also asserts allegations relating to a prior opposition filed by Petitioner against the same mark3 that matured into the Registration that is the subject of this Petition for Cancellation. We construe these allegations as constituting an affirmative defense of claim preclusion, also known as res judicata. However, inasmuch as Respondent did not pursue this defense at trial, we deem it to be waived. See Alcatraz Media, 107 USPQ2d at 1753. 1 Registration No. 4394536 issued on September 3, 2013, based on Application Serial No. 85208421, filed on December 31, 2010, alleging first use and first use of the mark in commerce as of November 25, 2008 under § 1(a) of the Trademark Act. 2 In the Petition to Cancel, Petitioner alleged ownership of Application Serial No. 87268193 filed on December 14, 2016, for the mark FADED ROYALTY for “Headwear; Hoodies; Jackets; Sweaters, T-shirts; Caps; Crew Neck sweaters; Short-sleeved or long-sleeved t- shirts; Skullies” in International Class 25. Petitioner’s application was subsequently abandoned by the USPTO on May 18, 2018 for failure to respond to an outstanding Office Action and can no longer serve as a basis for Petitioner’s allegations of standing or his asserted grounds for cancellation. Petitioner also asserted claims of fraud and lack of ownership. Insofar as these claims were neither tried by implied consent under Fed. R. Civ. P. 15(b) nor argued by Petitioner in his brief, we find, in accordance with the Board’s usual practice, that those claims have been waived. See Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1753 (TTAB 2013, aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Swatch AG (Swatch SA) (Swatch Ltd.) v. M.Z. Berger & Co., 108 USPQ2d 1463, 1465 n.3 (TTAB 2013), aff’d, 787 F.3d 1368, 114 USPQ2d 1892 (Fed. Cir. 2015). 3 Before Registrant’s mark was registered, Petitioner opposed registration of the mark based on his alleged prior use of an identical mark. See Opposition No. 91200621. On March 8, 2013, the opposition was dismissed for failure to prove priority and likelihood of confusion. Cancellation No. 92065144 - 3 - I. The Record The record includes the pleadings and, by operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file history for Respondent’s Registration No. 4394536 which is the subject of this proceeding. Inasmuch as Petitioner and Respondent did not submit any admissible evidence during their respective testimony periods,4 the record includes only the pleadings and the registration file for Respondent’s mark. Additionally, only Petitioner submitted a trial brief. II. Standing Standing is a threshold issue that must be proven by the plaintiff in every inter partes case. John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010) citing Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). Our primary reviewing court, the U.S. Court of Appeals for the Federal Circuit, has enunciated a liberal threshold for determining standing, namely that a plaintiff must demonstrate that it possesses a “real interest” in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 50 USPQ2d at 1025; Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). A “real interest” is a 4 In an interim Order dated April 27, 2017, the Board advised that the Initial Disclosures filed by Respondent would be given no further consideration. 6 TTABVUE. Record citations are to TTABVUE, the Board’s publically available docket history system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Cancellation No. 92065144 - 4 - “direct and personal stake” in the outcome of the proceeding. Ritchie v. Simpson, 50 USPQ2d at 1026. A belief in likely damage can be shown by establishing a direct commercial interest. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Standing may be established through evidence that a petitioner’s trademark application has been refused due to a likelihood of confusion with the mark in the subject registration. See, e.g., Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., 126 USPQ2d 1526, 1532 (TTAB 2018); Toufigh v. Persona Parfum, Inc., 95 USPQ2d 1872, 1874 (TTAB 2010). However, and as noted above, Petitioner’s asserted application was abandoned on May 18, 2018 and no longer serves as a basis for Petitioner’s allegations of standing. Petitioner also failed to introduce any evidence of prior common law rights in his mark FADED ROYALTY in connection with clothing as alleged in the Petition for Cancellation. Although the Petition contains numerous allegations concerning how Petitioner’s commercial interests may be adversely affected by maintenance of Respondent’s registration on the Register, mere allegations of a party’s basis for standing are insufficient, without proof. Lipton Indus. v. Ralston Purina, 213 USPQ at 189; Abraham’s Seed v. John One Ten, 1 USPQ2d 1230, 1233 (TTAB 1986); Lumiere Productions, Inc. v. Int’l Telephone and Telegraph Corp., 227 USPQ 892, 893 (TTAB 1985). Accordingly, Petitioner has not proved that it has any real interest in the proceeding and the proceeding must be dismissed for Petitioner’s lack of standing. Cancellation No. 92065144 - 5 - III. Substantive Grounds Although Petitioner’s failure to prove standing precludes him from prevailing in this matter, we consider the substantive grounds of this cancellation proceeding, i.e., likelihood of confusion, for purposes of completeness. A. Priority To establish priority on his likelihood of confusion claim under § 2(d) of the Trademark Act, Petitioner must prove by a preponderance of the evidence that, vis- à-vis Respondent, he owns “a mark or trade name previously used in the United States . . . and not abandoned . . . .” Threshold.TV, Inc. v. Metronome Enterprises, Inc., 96 USPQ2d 1031, 1036-37 (TTAB 2010) (citing Otto Roth & Co. v. Universal Foods Corp., 640 F. 2d 1317, 209 USPQ 40, 44 (CCPA 1981)). If Petitioner cannot prove that he used the mark as a trademark, or in a manner analogous to a mark, before the filing date of Respondent’s application, Petitioner cannot establish priority. Cf. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto Roth v. Universal, 209 USPQ at 43; Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711, 1714 (TTAB 1993). Under Section 7 of the Trademark Act, Respondent is entitled to rely upon the December 31, 2010 filing date of the application underlying his Registration for purposes of establishing a date of first use of his registered mark. 15 U.S.C. § 1057(c); Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1140 (TTAB 2013); Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840, 1844 (TTAB 1995) (parties may rely on the constructive use (filing) dates for purposes of priority). Thus, Cancellation No. 92065144 - 6 - Petitioner must prove that he has a proprietary interest in his alleged mark FADED ROYALTY that he obtained prior to the December 31, 2010 constructive use date (i.e., the filing date) of the application underlying Respondent’s Registration. See Herbko Int’l Inc. v. Kappa Books Inc., 64 USPQ2d at 1378; Otto Roth v. Universal, 209 USPQ at 43; L. & J.G. Stickley Inc. v. Cosser, 81 USPQ2d 1956, 1966 (TTAB 2007). Inasmuch as Petitioner has filed no evidence in support of his position, he has not established priority and cannot prevail. B. Likelihood of Confusion As the plaintiff in this proceeding, Petitioner bears the burden of proof which encompasses the obligation of going forward with sufficient proof of the material allegations of the Petition for Cancellation. Sanyo Watch Co., Inc. v. Sanyo Elec. Co., Ltd., 691 F.2d 1019, 215 USPQ 833, 834 (Fed. Cir. 1982) (in a proceeding to test likelihood of confusion opposer “bears the burden of proof which encompasses not only the ultimate burden of persuasion, but also the obligation of going forward with sufficient proof of the material allegations of the Notice of Opposition”); see also Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1007 (Fed. Cir. 1988) (because § 2(d) of the Trademark Act “provides that no trademark shall be refused unless it is shown that there is a likelihood of confusion with another mark, the requirement that the opposer both establish a prima facie case of likelihood of confusion and carry the ultimate burden of persuasion on that issue is proper”). In support of his likelihood of confusion claim, Petitioner asserts numerous “facts” in his appeal brief, but fails to introduce any evidence related to his allegations. Thus, Cancellation No. 92065144 - 7 - there is no support in the record for such statements. We can accord no evidentiary value or consideration to any statements made by a party in his brief which are not supported by competent evidence in the record. Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 TTAB 2004); TRADEMARK BOARD MANUAL OF PROCEDURE § 704.06(b) (2018). Inasmuch as there is no evidence in the record and no pertinent admissions by Respondent, Petitioner has failed to prove any of his pleaded claims, including standing, priority and likelihood of confusion. Decision: The petition to cancel Registration No. 4394536 is dismissed with prejudice.