Screaming Eagle, LLCv.John I. Wascher

Trademark Trial and Appeal Board

Apr 30, 2019

92067358 (T.T.A.B. Apr. 30, 2019)

MW
April 30, 2019

Cancellation No. 92067358

Screaming Eagle, LLC

v.
John I. Wascher

Before Kuhlke, Cataldo, and Kuczma,
Administrative Trademark Judges.

By the Board:

Screaming Eagle, LLC (“Petitioner”) seeks cancellation of the registered mark
FLIGHT in standard characters for “wine” in International Class 33.1 In its amended
petition for cancellation (filed August 16, 2018), Petitioner asserts the following
grounds for cancellation: (1) nonuse of the mark; (2) fraud; and (3) abandonment.
Petitioner alleges that its pending application for the mark THE FLIGHT for
“alcoholic beverages except beers” has been refused registration based on a likelihood

1 Registration No. 4582714 issued on August 12, 2014 with claims of first use of the mark
anywhere at least as early as October 24, 2010 and first use of the mark in commerce at least
as early as October 12, 2012.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92067358

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of confusion with the involved registration.2 In his answer, John I. Wascher, dba
Flight Winery (“Respondent”) denies the salient allegations in the amended petition.
This case now comes up for consideration of Petitioner’s motion (filed November
16, 2018) for summary judgment on its nonuse claim and Respondent’s cross-motion
(filed December 16, 2018) for summary judgment on the fraud and abandonment
claims. Respondent’s response to Petitioner’s motion and his cross-motion for
summary judgment were filed in a single brief.3 On January 7, 2019, Petitioner filed
a reply in support of its motion for summary judgment. Although Petitioner did not
file a brief in response to Respondent’s cross-motion and does not address the cross-
motion, we do not consider the cross-motion conceded and have considered
Petitioner’s arguments in its reply in connection with the cross-motion.
I. Summary Judgment Standard
Summary judgment is an appropriate method of disposing of cases in which there
are no genuine disputes as to any material facts and the moving party is entitled to
judgment as a matter of law. Fed. R. Civ. P. 56(a). In reviewing a motion for summary
judgment, the evidentiary record and all justifiable inferences to be drawn from the
undisputed facts must be viewed in the light most favorable to the non-moving party.

2 Application Serial No. 87536563 was filed on July 20, 2017. 8 TTABVUE 11. Petitioner also
pleads ownership of Registration No. 4259215 for the mark SECOND FLIGHT for “alcoholic
beverages except beers” in International Class 33.
3 Respondent’s combined brief does not meet the requirements for submissions to the
Trademark Trial and Appeal Board because it is not double-spaced. Trademark Rule
2.126(a)(1), 37 C.F.R. § 2.126(a)(1) (Text in a submission to the Board “must be filed in at
least 11-point type and double-spaced). The Board, in its discretion, may refuse to consider
any future submissions which are not in compliance with Rule 2.126. See TBMP § 106.03
(June 2018).
Cancellation No. 92067358

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See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029-30
(Fed. Cir. 1993); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d
1542, 1546 (Fed. Cir. 1992). We may not resolve disputes of material fact; we may
only ascertain whether a genuine dispute regarding a material fact exists. See Lloyd’s
Food Prods., 25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1544.
The party moving for summary judgment has the burden of demonstrating that a
particular fact cannot be disputed by citing to the record, including affidavits or
declarations, admissions or interrogatory answers; or showing that the cited
materials do not establish the absence or presence of a genuine dispute, or that the
adverse party cannot produce admissible evidence to support the fact. Fed. R. Civ. P.
56(c)(1). See generally Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the moving
party carries its burden, the nonmoving party may not rest on mere allegations, but
must designate specific portions of the record or produce additional evidence showing
the existence of a genuine dispute of material fact for trial. See Venture Out Props.
LLC v. Wynn Resort Holdings LLC, 81 USPQ2d 1887, 1890 (TTAB 2007); see also
Fed. R. Civ. P. 56(c)(1).
II. Petitioner’s Motion for Summary Judgment
Petitioner’s motion for summary judgment is predicated on Respondent’s failure
to respond to Petitioner’s requests for admission. Petitioner contends that because
Respondent failed to respond to Petitioner’s admission requests, under Fed. R. Civ.
P. 36(a), Respondent has admitted that his mark “was not used in commerce on or
before the May 10, 2013 filing date or at any time thereafter, that no goods bearing
Cancellation No. 92067358

4
Respondent’s Mark were ever shipped, sold or transported to any customer or location
outside the state of California, and that no goods bearing Respondent’s Mark have
ever been shipped across state lines.”4 9 TTABVUE 8.
In support of its motion, Petitioner has attached a copy of its requests for
admission with a certificate of service dated June 27, 2018. Id. at 39-45. In addition,
Petitioner submitted a copy of an email correspondence between the attorneys for the
parties discussing, inter alia, their August 21, 2018 telephone conference and
Respondent’s failure to respond to the admission requests. Id. at 45-46.5
In opposition to the motion, Respondent contends that Petitioner “fails to meet its
initial burden on summary judgment to produce admissible evidence sufficient to
make a prima facie showing.” 12 TTABVUE 3. Respondent states that “the parties
stipulated to amend the pleadings re-setting the dates originally scheduled for this
proceeding and [] conducted little meaningful discovery to date with no depositions
or proper answers to discovery requests.” Id. at 3. Respondent appears to argue that
because the Board reset the discovery period on August 16, 2018, Respondent’s time
to respond to Petitioner’s discovery requests was reset and his responses are not

4 We note that interstate shipment is not a requirement for establishing use in commerce.
Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986, 120 USPQ2d 1640, 1642-43
(Fed. Cir. 2016) (“Because one need not direct goods across state lines for Congress to regulate
the activity under the Commerce Clause, there is likewise no such per se condition for
satisfying the Lanham Act’s ‘use in commerce’ requirement.”).
5 Respondent objects to the introduction into evidence of the email correspondence between
the parties’ attorneys on the ground that the email “falls under the protection for privileged
settlement negotiation communications.” 11 TTABVUE 4. The objection is unsupported. See
Fed. R. Evid. 103(a)(1)(B). Moreover, Petitioner submitted the email to show that
“Respondent’s counsel acknowledged that Respondent’s failure to respond resulted in the
Requests being admitted,” 9 TTABVUE 5, not to provide evidence of settlement offers.
Cancellation No. 92067358

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untimely.6 Thus, according to Respondent, “Petitioner’s motion appears to consist
mostly of attorney argumentation which suggests wild and unsubstantiated
conclusions in light of the facts stated [in Respondent’s response].” Id.
In support of his claim that he has used the mark and continues to use the mark,
Respondent has submitted his signed declaration and accompanying exhibits, which
include three sales invoices. Id. at 35-36, 39 (Exhibits B and C).7
In its reply in support of its motion, Petitioner argues that Respondent does not
provide any information or explanation about the invoices from which the Board could
infer that the mark was in use in commerce at the time the subject application was
filed. Petitioner further argues that even if the Board accepts that Respondent’s
documents establish bona fide commercial transactions, “there is still no evidence
establishing that FLIGHT was in use [in] commerce at the time Respondent’s
App[lication] was filed on May 10, 2013.” 13 TTABVUE 4.
a. Petitioner’s Standing
Standing is a threshold issue that must be pleaded and proven by the plaintiff in
every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 171 F.3d. 1092,

6 See Declaration of Eric Hanscom at ¶ 6 (unnumbered) (“It was my understanding that the
filing of an amendment to the petition would re-trigger the discovery deadlines, hence I did
not furnish responses to Petitioner’s Requests for Admissions, nor did I pursue Petitioner to
supply its responses to our First Request For The Production Of Documents And Things,
which it never supplied.”). 12 TTABVUE 11.
7 Although unclear, it appears that Respondent submitted the evidence in support of its cross-
motion on the fraud and abandonment claims, not in response to Petitioner’s motion for
summary judgment. The invoices identify sales on April 24, 2010, October 29, 2012, and April
10, 2018.
Cancellation No. 92067358

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50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999); see also Sinclair Oil Corp. v. Kendrick, 85
USPQ2d 1032, 1037 (TTAB 2007). Here, Petitioner has submitted with its motion a
copy of the file of its pleaded application for the mark THE FLIGHT including the
Office Action refusing registration based on a likelihood of confusion with the
involved registration. See ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1041
(TTAB 2012) (evidence of record showing petitioner’s pending application refused
registration based on respondent’s registration). The evidence is sufficient to
establish Petitioner’s standing in this case.
b. Petitioner’s Requests for Admission
Under Fed. R. Civ. P. 36(a)(3), requests for admissions are deemed admitted
unless the responding party provides written answers or objections thereto within
thirty days after service of the requests, or within an alternative time agreed to by
the parties in writing. See Giersch v. Scripps Networks Inc., 85 USPQ2d 1306, 1307
(TTAB 2007). A matter admitted under Rule 36(a) “is conclusively established unless
the court, on motion, permits the admission to be withdrawn or amended.” Fed. R.
Civ. P. 36(b).
In this case, Petitioner’s requests for admission are deemed admitted by operation
of Rule 36(a)(3) because Respondent failed to timely respond to the requests by the
July 27, 2018 due date. The fact that the Board subsequently reset the discovery
period in response to the parties’ stipulation to the filing of an amended petition for
cancellation did not affect the parties’ duty to timely respond to any outstanding
discovery or relieve Respondent of the admissions that were already admitted by
Cancellation No. 92067358

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operation of law.8 In addition, there is no evidence in the record that the parties
agreed in writing to an alternative response time or a reopening of Respondent’s time
to respond to the admission requests.
We note, however, that the declaration of Respondent’s attorney, Eric Hanscom,
includes an explanation for Respondent’s failure to respond to Petitioner’s admission
requests and a statement that Respondent expected to serve discovery responses
during the extended discovery period. 11 TTABVUE 11. In view of the Board’s
preference to decide cases on the merits, the Board construes the statements in Mr.
Hanscom’s declaration as a motion to withdraw its effective admissions under Fed.
R. Civ. P. 36(b).
The Board may permit withdrawal or amendment of admissions upon a motion
under Rule 36(b) “if it would promote the presentation of the merits of the action and
if the [Board] is not persuaded that it would prejudice the requesting party in
maintaining or defending the action on the merits.” Giersch v. Scripps Networks, Inc.,
85 USPQ2d at 1308-09 (motion to withdraw effective admissions granted); see also
TBMP § 525 (June 2018). Here, if Respondent’s effective admissions were allowed to
stand as admitted, he would be deemed to have admitted conclusory factual issues
regarding the claims in the petition. See 8 TTABVUE 4. Respondent disputes the
claims and has submitted evidence in support of his position. Thus, we find that

8 The time for service of discovery responses under Trademark Rule 2.120(a)(3) is separate
from the scheduling of the discovery period under Trademark Rule 2.120(a)(1). See, e.g., Rule
2.120(a)(3) (“The resetting of a party’s time to respond to an outstanding request for discovery
will not result in the automatic rescheduling of the discovery and/or testimony periods.”); see
also TBMP § 403.04 (June 2018).
Cancellation No. 92067358

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allowing Respondent to withdraw the effective admissions would promote the
presentation of the merits of the action. See Johnston Pump/Gen. Valve Inc. v.
Chromalloy Am. Corp., 13 USPQ2d 1719, 1721 (TTAB 1989). In addition, because
time remains in the discovery period and discovery is still ongoing, see 13 TTABVUE
7 n.3, we find that Petitioner will not be prejudiced if the Board allows withdrawal of
the admissions. See Giersch, at 1308, (“prejudice … relates to the special difficulties
a party may face caused by the sudden need to obtain evidence upon withdrawal or
amendment of admission.” quoting Kerry Steel, Inc. v. Paragon Indus., Inc., 106 F.3d
147 (6th Cir. 1997)). See also FDIC v. Prusia, 18 F.3d 637 (8th Cir. 1994) (holding
that the “mere fact that a party may have prepared a summary judgment motion in
reliance on an opposing party’s erroneous admission does not constitute ‘prejudice’
such as will preclude grant of a motion to withdraw admissions.”).
In view of the foregoing, Respondent’s construed motion to withdraw his
admissions is granted.
c. Decision
Inasmuch as Petitioner’s motion for summary judgment on the nonuse claim is
based solely on Respondent’s effective admissions, and because we have allowed
Respondent to withdraw the admissions, we find that Petitioner has failed to carry
its burden, as the party moving for summary judgment, to establish that there is no
genuine dispute of material fact regarding its claim that the subject mark was not in
use in commerce as of the filing date of the underlying application for registration.
Cancellation No. 92067358

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Accordingly, Petitioner’s motion for summary judgment on the nonuse claim is
denied.
Because Respondent has not served amended admission responses, Respondent is
ordered to serve complete responses to Petitioner’s requests for admission without
objection within TWENTY DAYS of the mailing date of this order.
III. Respondent’s Cross-Motion for Summary Judgment
We turn next to Respondent’s cross-motion for summary judgment on the fraud
and abandonment claims. In the petition for cancellation, Petitioner alleges that
Respondent committed fraud in the filing of the underlying use-based application
because Respondent’s mark was not in use in commerce at the time Respondent filed
the application for registration.9 Petitioner further alleges that Respondent has
discontinued use of the mark for a period of three years or more.10
We note initially that Respondent erroneously places the burden of proving the
absence of genuine disputes of material fact regarding the fraud and abandonment
claims on Petitioner.11 Nonetheless, Respondent argues that the evidence submitted
in connection with his cross-motion “shows beyond dispute that Flight Winery used

9 Amended Petition for Cancellation at ¶ 3, 5 TTABVUE 4.
10 Id. at ¶ 4.
11 Under Fed. R. Civ. P. 56(a), the party moving for summary judgment always bears the
initial burden of demonstrating the absence of a genuine dispute of material fact. Celotex
Corp. v. Catrett, 477 U.S. at 323. If the moving party fails to discharge its initial burden of
demonstrating the absence of a genuine dispute, then “summary judgment must be denied
even if no opposing evidentiary matter is presented.” Adickes v. S.H. Kress & Co., 398 U.S.
144, 160-61 (1970) (quoting Fed. R. Civ. P. 56 advisory committee notes to the 1963
amendments); see also Shum v. Intel Corp., 633 F.3d 1067, 97 USPQ2d 1513, 1519 (Fed. Cir.
2010).
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FLIGHT in interstate commerce by virtue of offer for sale, transportation and sale at
least as early as [sic] May 10, 2013 filing date.” 11 TTABVUE 7.12 In his declaration,
Respondent states, “I have made and sold wine as best I can throughout the time I
have claimed ‘use in commerce’ to this date and always in compliance with the
rules.”13 Exhibit B to Respondent’s declaration consists of two invoices that, according
to Respondent, identify shipments of wine on October 24, 2010 and October 15,
2012.14 Exhibit C consists of an invoice dated April 10, 2018.15 Respondent has not
provided any information about this invoice.16
a. Fraud
Fraud in procuring or maintaining a trademark registration may occur when an
applicant for registration or a registrant in a declaration of use or a renewal
application knowingly makes specific false, material representations of fact in
connection with an application to register or in a post-registration filing with the
intent of obtaining or maintaining a registration to which it otherwise is not entitled.
See In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1942 (Fed. Cir. 2009).17

12 Despite arguing that the evidence shows that he was using the mark in commerce prior to
filing the application for registration, Respondent does not seek summary judgment on the
nonuse claim.
13 Wascher Declaration at ¶ 4, 11 TTABVUE 31.
14 Id. at ¶ 3 and 11 TTABVUE 35-36.
15 11 TTABVUE 39.
16 In our determination of Respondent’s cross-motion, we have considered Petitioner’s
arguments in its reply in support of its motion for summary judgment. However, we do not
repeat the arguments here, and we do not address irrelevant arguments. Guess? IP Holder
L.P. v. Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015).
17 We note that Petitioner’s allegation that Respondent “knew or should have known” that
the declaration of use was false is insufficient to support a proper pleading of fraud. In re
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Upon review of the arguments and supporting evidence and viewing the evidence
in the light most favorable to Petitioner as the nonmoving party, we find that
Respondent has carried his burden of establishing that there is no genuine dispute
that he had a good faith belief that he was using the mark in commerce prior to filing
his use-based application. See, e.g., Maids to Order of Ohio, Inc. v. Maid-to-Order,
Inc., 78 USPQ2d 1899, 1907 (TTAB 2006) (no fraud where applicant had a good faith,
reasonable basis for believing that it was using the mark in interstate commerce); see
also Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986, 120 USPQ2d
1640, 1642-43 (Fed. Cir. 2016) (finding evidence of single sale sufficient to support
applicant’s claim of use in commerce prior to filing of use-based application). Because
Petitioner has not introduced any evidence in response to the cross-motion that would
raise a genuine dispute that Respondent knowingly made a false statement with the
intent to commit fraud on the USPTO, no genuine dispute with respect to the material
issues of knowledge and intent remains for trial. Thus, Petitioner cannot establish
the fraud claim. See In re Bose Corp., 91 USPQ2d at 1941 (subjective intent is an
indispensable element of fraud). In view thereof, Respondent’s cross-motion for
summary judgment is granted, in part, with respect to fraud.

Bose Corp., 91 USPQ2d at 1941 (fraud may not be based on finding that a party “knew or
should have known”). Further, Petitioner has not pleaded its allegations of fraud with
particularity as required by Fed. R. Civ. P. 9(b). See, e.g., King Auto., Inc. v. Speedy Muffler
King, Inc., 667 F.2d 1008, 212 USPQ 801, 803 (CCPA 1981) (fraud must be pleaded with
particularity). However, inasmuch as Respondent has brought this cross motion, we consider
the claim on summary judgment.
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b. Abandonment
Turning to the abandonment claim, we find Respondent’s evidence insufficient to
establish that there is no genuine dispute of material fact that he did not abandon
the mark as a result of discontinued use for three years or more. See Trademark Act
§ 45, 15 U.S.C. § 1127; see, e.g., ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036
(TTAB 2012) (more than three years of nonuse established abandonment).
Accordingly, Respondent’s cross-motion for summary judgment is denied, in part,
with respect to the abandonment claim.
IV. Summary
In summary, we find that genuine disputes of material fact remain with respect
to the nonuse and abandonment claims.18 Accordingly, Petitioner’s motion for
summary judgment on the nonuse claim is denied and Respondent’s cross-motion
for summary judgment is denied, in part, with respect to the abandonment claim.
Respondent’s cross-motion is granted, in part, with respect to the fraud claim. In
addition, Respondent’s construed motion to withdraw his admissions is granted.
Respondent is ordered to serve complete responses to Petitioner’s requests for
admission without objection within TWENTY DAYS of the mailing date of this order,

18 The fact that we have identified only certain genuine disputes as to material facts should
not be construed as a finding that these are necessarily the only disputes which remain for
trial. In addition, the evidence submitted in connection with a motion for summary judgment
or opposition thereto is of record only for consideration of that motion. Any such evidence to
be considered at final hearing must be properly introduced in evidence during the appropriate
trial period. See Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB
1993).
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failing which, the Board may entertain a further summary judgment motion from
Petitioner on the issues remaining in this case.
V. Accelerated Case Resolution
In view of the limited issues remaining for trial, the Board recommends that the
parties consider resolution of this proceeding by means of Accelerated Case
Resolution (“ACR”). In ACR cases, parties generally stipulate to relaxation of the
Board’s rules in order to streamline discovery and testimony. If the parties so desire,
they could avoid a formal trial altogether and, for example, stipulate that any or all
of the summary judgment evidence be treated as properly of record for purposes of
final decision. Moreover, the parties may stipulate that the summary judgment
motion and evidence be treated as the final record and briefs in the case, alternately
with supplemental evidence and briefing. Although the Board may not decide
disputed issues of fact when considering a motion for summary judgment, the parties
may stipulate in an ACR proceeding that the Board may resolve genuine disputes of
fact it may find to exist. If the parties agree to ACR, they could realize a very
significant savings in time19 and cost. More information about the Board’s ACR
options can be found on the Board’s website.20 See also TBMP § 528.05(a)(2) and
§ 705, and authorities cited therein. If the parties have questions about their ACR
options, they are urged to contact the assigned interlocutory attorney.

19 Because ACR records are usually more compact than those presented on formal testimony
and notices of reliance, the Board can usually render a final decision more quickly.
20 See http://www.uspto.gov/trademarks/process/appeal/index.jsp.
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VI. Proceeding Schedule
Proceedings are resumed. Discovery, trial, and briefing dates are reset as follows:
Discovery Closes 7/29/2019
Plaintiff's Pretrial Disclosures Due 9/12/2019
Plaintiff's 30-day Trial Period Ends 10/27/2019
Defendant's Pretrial Disclosures Due 11/11/2019
Defendant's 30-day Trial Period Ends 12/26/2019
Plaintiff's Rebuttal Disclosures Due 1/10/2020
Plaintiff's 15-day Rebuttal Period Ends 2/9/2020
Plaintiff's Opening Brief Due 4/9/2020
Defendant's Brief Due 5/9/2020
Plaintiff's Reply Brief Due 5/24/2020
Request for Oral Hearing (optional) Due 6/3/2020

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, matters in
evidence, the manner and timing of taking testimony, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
final hearing will be scheduled only upon the timely submission of a separate notice
as allowed by Trademark Rule 2.129(a).