Sherlock Technologies Limitedv.Apple Inc.

Trademark Trial and Appeal Board

Aug 2, 2018

No. 92063457 (T.T.A.B. Aug. 2, 2018)

JK
August 2, 2018

Cancellation No. 92063457

Sherlock Technologies Limited

v.
Apple Inc.

Before Kuhlke, Cataldo and Kuczma,
Administrative Trademark Judges.

By the Board:

Apple Inc. (Respondent) owns Registration No. 2336753, registered on March 28,
2000, for the mark SHERLOCK (typed1) for the following International Class 9 goods:
feature of computer software that utilizes multiple search engines to
search global communication networks and provides results ranked by
relevance, with summaries, and searches hard disks by content as well
as file name.

Sherlock Technologies Limited (Petitioner), a Private Limited Company of the
United Kingdom, filed a petition to cancel the registration on the grounds of
abandonment, and fraud on the USPTO in the filing of the declaration of use and

1 A “typed” drawing is the legal equivalent of a “standard character” drawing. Prior to
November 2, 2003, “standard character” drawings were known as “typed” drawings. TMEP
§ 807.03(i).
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. 92063457

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application for renewal under Trademark Act Sections 8 and 9.2 19 TTABVUE 2-6.
Petitioner pleads ownership of:
1) Application Serial No. 86971901 for the mark SHERLOCK (standard
characters), based on Trademark Act Section 44(d) and claiming priority on a
Lithuania application, for

computer hardware; computer peripherals; computer software, namely,
recorded computer operating programs, computer software for
processing digital music files, for processing digital images, for creating
digital animation and special effects of images, for manipulating digital
audio information for use in audio media applications, computer
software to enhance the audio-visual capabilities of multimedia
applications, namely, for the integration of text, audio, graphics, still
images and moving pictures, computer software for wireless content
delivery, for controlling and managing access server applications, for
monitoring and controlling communication between computers and
automated machine systems, for the collection, editing, organizing,
modifying, book marking, transmission, storage and sharing of data and
information, and software that provides real-time, integrated business
management intelligence by combining information from various
databases and presenting it in an easy-to-understand user interface, in
International Class 9,

telecommunications services, namely, television broadcasting,
computerized transmission of messages and images, and streaming of
audio, video, audiovisual material on the Internet, in International
Class 38, and

entertainment services, namely, production of radio and television
programs; preparation of photos, namely, photography services, photo
editing, photographic composition for others, and photographic
computer imaging; organization of shows for entertainment purposes, in
International Class 41; and

2) Application Serial No. 87173184 for the mark SHERLOCK.COM (standard
characters), based on Trademark Act Section 44(d) and claiming priority on a
United Kingdom application, for

2 Record citations are to TTABVUE, the Trademark Trial and Appeal Board’s publically
available docket history system. Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB
2014).
Cancellation No. 92063457

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computer hardware; computer software, namely, downloadable
computer software for word processing, computer software for document
and database management, computer search engine software for
searching computer and internet contents and providing sortable results
by various categories, namely, relevance, file name, file size, date of
creation, and source, computer software for creating searchable
databases of information and data, for the collection, editing, organizing,
modifying, book marking, transmission, storage and sharing of data and
information, for application and database integration, for producing
financial models, for use as a spreadsheet, for authorizing access to
databases, for use in customer relationship management (CRM) and
software that provides real-time, integrated business management
intelligence by combining information from various databases and
presenting it in an easy-to-understand user interface; computer
peripherals; electronic data processing apparatus; computer networking
and data communications equipment, namely, electronic
communications systems comprised of computer hardware for the
transmission of data between two points, computer network adapters,
switches, routers, and hubs; computer components and parts, namely,
electronic components for computers; electronic memory devices,
namely, memory boards, cards, and modules electronic control
apparatus, namely, microcontrollers, electric control panels, electronic
controllers for computer hardware and peripherals excluding gaming
apparatus, in International Class 9,

telecommunication services, namely, telecommunication access and
gateway services, digital network telecommunications services,
transmission of webcasts and podcasts, providing electronic message
alerts via the internet, personal communication services and, providing
multiple-user access to a global computer network, transmission of
voice, data, graphics, images, audio and video by means of
telecommunications networks, wireless communication networks, and
the Internet; broadcast communication services, namely, transmitting
e-mails, faxes, text messages and telephone voice messages to
designated recipients for others; electronic data transmission, namely,
transmission and streaming of data content via computer and global
information networks; operating of electronic communications
networks, namely, electronic data transmission; providing access to
databases; Internet service provider services, namely, providing access
to online databases via portals; electronic data interchange; Internet
service provider services, namely, telecommunications services for
providing access to computer databases; Internet service provider
services, namely, providing data access to databases for downloading
information via electronic media, in International Class 38, and
Cancellation No. 92063457

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education, namely teaching and training in the fields of art, music and
artistic performances, entertainment, fashion, sports, culture, general
human interest, film production, languages, science and technology,
law; entertainment services, namely, multimedia production services,
organizing, arranging, and hosting social entertainment events,
presenting live musical performances; production of radio and television
shows and programmes; film production services; provision of non-
downloadable films and television programs via a video-on-demand
service; educational services, namely, conducting of workshops,
congresses, and lesson presentations in the field of art, music and
artistic performances, entertainment, fashion, sports, culture, general
human interest, film production, languages, science and technology,
law; organization of exhibitions for cultural and educational purposes;
online electronic publishing of books and journals, in International
Class 41.

19 TTABVUE 2.
Serial No. 86971901 was assigned on September 6, 2016, from original applicant
Bigfoot Properties (Europe) NV, Naamloze Vennootschap of Belgium, to Petitioner.
Serial No. 87173184 matured to Registration No. 5357720 under Trademark Act
Section 44(e) on December 19, 2017.
In its answer, Respondent denied the salient allegations in the petition to cancel.
This proceeding comes up for consideration of Respondent’s fully briefed February
21, 2018 motion for summary judgment pursuant to Fed. R. Civ. P. 56(a) with respect
to Petitioner’s standing.3
Analysis

3 The Board addresses the record on summary judgment only to the extent necessary to set
forth its analysis and findings. The Board does not repeat or address all of the parties’
arguments and evidence. Guess? IP Holder LP v. Knowluxe LLC, 116 USPQ2d 2018, 2019
(TTAB 2015).

Cancellation No. 92063457

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Summary judgment is appropriate where the movant demonstrates that there is
no genuine dispute as to any material fact, and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(a). A party asserting that a fact cannot be true or
is genuinely disputed must support its assertion by either: 1) citing to materials in
the record, or 2) showing that the materials cited do not establish the absence or
presence of a genuine dispute, or that an adverse party cannot produce admissible
evidence to support the fact. Fed. R. Civ. P. 56(c). A factual dispute is genuine if, on
the evidence of record, a reasonable fact finder could resolve the matter in favor of
the non-moving party. Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d
847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc.,
961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). The party seeking judgment
in its favor carries the burden of proof. Celotex Corp. v. Catrett, 477 U.S. 317, 323-24
(1986). The nonmovant must point to an evidentiary conflict at least by a counter
statement of a fact or facts. Embarcadero Techs., Inc. v. Delphix Corp., 117 USPQ2d
1518, 1521 (TTAB 2016), citing Barmag Barmer Maschinenfabrik AG v. Murata
Mach., Ltd., 731 F.3d 831, 221 USPQ 561, 564 (Fed. Cir. 1984) (“The party opposing
the motion must point to an evidentiary conflict created on the record at least by a
counter statement of a fact or facts set forth in detail in an affidavit by a
knowledgeable affiant.”). Evidence on summary judgment must be viewed in a light
most favorable to the non-movant, and all justifiable inferences are to be drawn in
the non-movant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. The Board
Cancellation No. 92063457

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may not resolve genuine disputes as to material facts; it may only ascertain whether
genuine disputes as to material facts exist. Lloyd’s Food Prods., 25 USPQ2d at 2029;
Olde Tyme Foods, 22 USPQ2d at 1542. See also TBMP § 528.01, and cases cited
therein.
Respondent seeks summary judgment on the basis that Petitioner does not have
standing. To prevail on summary judgment, Respondent must demonstrate that
there is no genuine dispute of any material fact that Petitioner does not have standing
to bring this proceeding.
Any person who believes it is or will be damaged by registration of a mark has
standing to file a petition to cancel. Trademark Act Section 14, 15 U.S.C. § 1064.
Standing is a threshold issue that must be proven by a plaintiff in every inter partes
case. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d
1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015); Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). To establish standing
in an opposition or a cancellation proceeding, a plaintiff must show both a real
interest in the proceeding as well as a reasonable belief of damage. Empresa Cubana
Del Tabaco v. Gen. Cigar, 111 USPQ2d at 1062; Ritchie v. Simpson, 50 USPQ2d at
1025. Facts alleged at the pleading stage must be proven in order to establish
standing. Lipton Indus., Inc. v. Ralston Purina Co., 213 USPQ at 188.
Regarding a petitioner’s obligation to establish “a reasonable belief of damage,”
the Board looks to and considers the particular circumstances that underlie a
Cancellation No. 92063457

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petitioner’s alleged belief that a respondent’s involved registration would damage it
by way of the Office’s issuance of a refusal under Section 2(d). Toufigh v. Persona
Parfum Inc., 95 USPQ2d 1872, 1874 (TTAB 2010). The Board stated therein,
it is sufficient if the circumstances are such that it would be reasonable
for a petitioner to believe that the existence of the respondent's
registration would damage him, e.g., a reasonable belief that there is a
likelihood of confusion between the marks, or that the presence on the
register of the respondent's mark may hinder the petitioner in using or
registering his mark.

Id.
Here, in addition to pleading its two applications, one of which has since matured
into Registration No. 5357720, Petitioner alleges, in sole support of its standing, that:
Petitioner’s Sherlock Applications are currently in suspension and due
to the similarity in sight, sound and commercial impression, as well as
the similar nature of goods and services, Petitioner has a good-faith and
reasonable belief that its Sherlock Applications will receive Office
Actions citing a Section 2(d) refusal based on a likelihood of confusion
with the Sherlock Registration. (19 TTABVUE 3)

In moving for summary judgment, Respondent argues, inter alia,4 that
Petitioner’s applications were not refused on the basis of Respondent’s registration,
nor did Respondent threaten to file an opposition, nor can Petitioner rely on a belief
that Serial No. 87173184 (based on a United Kingdon application) will be refused
inasmuch as that application matured to registration. 26 TTABVUE 25-27.

4 Among other arguments, Respondent asserts that Petitioner does not have a bona fide
intent to use the marks underlying its applications and characterizes Petitioner’s activities
as being “for the sole purpose of applying for thousands of trademark and domain name
registrations around the globe, without any intention to use such marks in commerce.” 26
TTABVUE 3. In view of our findings below, we need not address these allegations.
Cancellation No. 92063457

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Petitioner can no longer have a reasonable basis for believing that Respondent’s
involved registration will be cited against its application Serial No. 87173184
inasmuch as it has already issued as Registration No. 5357720. Contesting the
motion, Petitioner submits the declaration of Michael Gleissner, founder and director
of Petitioner, who states, inter alia:
I have a firm belief that due to the identical nature between Petitioner’s
SHERLOCK Application and Apple’s SHERLOCK Registration,
combined with the high degree similarity between the goods outlined in
each, there is a substantial likelihood of the SHERLOCK Application
receiving a 2(d) refusal citing Apple’s SHERLOCK Registration.

32 TTABVUE 22. Thus, Mr. Gleissner essentially repeats what Petitioner alleged in
the pleading.
Findings
On this record, there is no genuine dispute of material fact that Petitioner cannot
establish its standing to maintain this cancellation proceeding, and that Respondent
is entitled to judgment as a matter of law.
The record for Serial No. 86971901 indicates that upon initial examination, a
search of the USPTO database for Section 2(d) references was conducted on July 26,
2016, and no refusal was issued. Thereafter, on January 26, 2018, the USPTO
suspended Petitioner’s application solely, without reference to any conflicting or
potentially conflicting mark, under Trademark Act Section 2.34(a)(3)(ii) pending
Petitioner’s filing of a copy of the registration that issued from the foreign application
on which Petitioner claimed priority pursuant to Trademark Act Section 44(d) as a
filing basis, namely, Lithuania Application No. 20160106, filed on January 13, 2016.
Cancellation No. 92063457

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The records of the Database of the Trademarks of the Republic of Lithuania, available
through the website of The State Patent Bureau of the Republic of Lithuania, as well
as the website of the World Intellectual Property Organization (WIPO), available at
http://www.vpb.lt/db/rezult3.php?appnum=2016%200106, reflect that on September
15, 2016, the Lithuania application matured to Registration No. 74250, and issued to
Sherlock Technologies Limited for the mark SHERLOCK in International Classes 9,
38 and 41. Respondent submitted an English translation of this registration with the
declaration of its counsel. (28 TTABVUE 218; Robert Potter decl., Exh. 7)
Respondent notes that Petitioner served a copy of this registration as part of “Exhibit
C” to its response to Interrogatory No. 8, as follows:
INTERROGATORY: Identify all trademark applications to register a
mark incorporating the term “SHERLOCK” filed anywhere in the world
by Petitioner.

RESPONSE: Petitioner responds that the trademark applications
requested pursuant to this interrogatory have been duly identified in
Exhibit C.

(28 TTABVUE 18). Moreover, with its brief, Petitioner submitted a copy of the
English translation as part of Exhibit A to its declaration wherein it states:
To protect the ‘Sherlock’ brand, as it is intended to be used in connection
with the mobile application, entities under my dominion and control,
including Sherlock Technologies, have filed trademark applications for
the term in over 100 jurisdictions. Filing receipts and corresponding
registration certificates from said jurisdictions are annexed hereto as
Exhibit A.

(32 TTABVUE 21, 48-49).

Accordingly, five months after Petitioner filed the petition to cancel, it was issued
the Lithuanian registration required under Trademark Act Section 44(e) to perfect
Cancellation No. 92063457

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its Section 44(d) filing basis and to allow Serial No. 86971901 to proceed to
registration. But for Petitioner’s filing of this registration to perfect the Section 44(e)
basis for registration, Serial No. 86971901 will be in condition for approval.5 This is
further supported by the fact that Petitioner’s other application identifying related
goods and services matured to registration.
On the record revealed and verified by this documentation, for the purpose of
establishing standing Petitioner can no longer rely on its allegation that it has “a
good-faith and reasonable belief that” a statutory refusal pursuant to Trademark Act
Section 2(d) citing a likelihood of confusion with Respondent’s involved registration
will bar the registration of either of its then-pleaded applications. 19 TTABVUE 3.
Under the circumstances that now exist, it is not reasonable for Petitioner to believe
that the existence of Respondent’s registration would damage it. Toufigh v. Persona
Parfum Inc., supra. Thus, Petitioner’s alleged factual basis for establishing that it
has a reasonable belief of damage is no longer viable. Empresa Cubana Del Tabaco
v. Gen. Cigar, 111 USPQ2d at 1062; Ritchie v. Simpson, 50 USPQ2d at 1025.
Accordingly, Petitioner cannot establish its standing to bring this proceeding.
The petition to cancel is accordingly dismissed with prejudice.

5 We note that on January 23, 2018 Petitioner, responded to a suspension inquiry for that
application that “because the country of origin has not yet formally issued the actual
registration certificate, it cannot provide at this time to the USPTO.” However, the record in
this case clearly shows that on January 8, 2018, Petitioner provided an English translation
of this registration to Respondent in response to Interrogatory No. 8. 27 TTABVUE 3; 28
TTABVUE 218-219.