StrongVolt, Inc.v.Matey Michael Ghomeshi

Trademark Trial and Appeal Board

Nov 23, 2018

No. 92061629 (T.T.A.B. Nov. 23, 2018)

Mailed: November 23, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

StrongVolt, Inc.
v.
Matey Michael Ghomeshi
_____

Cancellation No. 92061629
_____

Charles F. Reidelbach, Jr. and Justine K. Wong of Higgs Fletcher & Mack LLP for
StrongVolt, Inc.

Matey Michael Ghomeshi, pro se.
_____
Before Wolfson, Adlin and Heasley,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Respondent Matey Michael Ghomeshi owns Registration No. 3798681 for the
mark: for goods ultimately amended to “audio speakers
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92061629
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for computers; analog and digital audio signal transmitters” in International Class
9.1
In its petition to cancel, Petitioner pleads ownership of an application to register
BLKBOX in International Class 9 for:
cell phone battery chargers; solar battery chargers; stand-
alone audio speakers; carrying cases, holders, protective
cases and stands featuring power supply connectors,
adaptors, stand-alone speakers and battery charging
devices, specially adapted for use with handheld digital
electronic devices, namely, cell phones, tablets and MP3
players2
and that its application was refused based on a finding that use of its mark would be
likely to cause confusion with Respondent’s mark.3 As grounds for cancellation,
Petitioner alleges nonuse “on each and every good recited in [Respondent’s] ‘681
Registration….”
Specifically, Registrant has not used the trademark in its
‘681 Registration in United States commerce in conjunction
with the following goods: “audio speakers for computers;
portable electronic devices for recording, organizing,
transmitting, manipulating and reviewing text, data,
image and audio files; audio-video media players for

1 Filed August 3, 2009 under Section 1(a) of the Act; registration issued June 8, 2010; Section
8 affidavit accepted. The description of the mark reads: “The mark consists of a speaker icon
with the stylized text ‘MobileBlackBox’.” Color is not claimed as a feature of the mark.
2 Serial No. 86312338, filed June 17, 2014; suspended.
3 Petition for Cancellation ¶5, 1 TTABVUE 4. Citations in this opinion will be to the
TTABVUE docket entry number and, where applicable, the electronic page number where
the document or testimony appears. Because the Board primarily uses TTABVUE in
reviewing evidence, the Board prefers that citations to non-confidential parts of the record
include the TTABVUE docket entry number and the TTABVUE page number. For material
or testimony that has been designated confidential and which does not appear on TTABVUE,
the TTABVUE docket entry number where such material or testimony is located should be
included in any citation. See RxD Media, LLC v. IP Application Devel. LLC, 125 USPQ2d
1801, 1804 (TTAB 2018); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014);
Trademark Trial and Appeal board Manual of Procedure (TBMP) § 801.03.
Cancellation No. 92061629
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automobiles; audio and video recorders; digital video and
event recorders that activate from automotive impact;
transmitters for video signals for transmission over twisted
pair cables” since its alleged dates of first use of January
16, 2003, or even since the filing of its trademark
application for the ‘681 Registration on August 3, 2009.
Accordingly, the ‘866 Registration is void in its entirety, or
at least with respect to the goods described above.4
Respondent filed an Answer admitting that the only goods in the registration on
which he used the mark were “portable electronic devices for transmitting data and
sound files, audio players for automobiles, and analog and digital audio signal
transmitters’”5 but later sought to amend his Answer to assert that he used his mark
on “audio speakers for computers” but not on “audio players for automobiles.”6
Respondent also moved to amend the identification of goods in his registration to
“audio speakers for computers” and “analog and digital audio signal transmitters.”7
The motion to amend the Answer included a new affirmative defense that the
petition was untimely filed. The Board accepted Respondent’s motion to amend the
identification of goods,8 and denied Respondent’s motion to amend to include the new

4 Petition for Cancellation ¶ 6, 1 TTABVUE 4-5. Although “analog and digital audio signal
transmitters” are not per se among the goods specified in the petition to cancel as not having
been in use, because these goods are related to “portable electronic devices for recording,
organizing, transmitting, manipulating and reviewing text, data, image and audio files” as
well as “transmitters for video signals for transmission over twisted pair cables,” and because
the parties treat the petition as asserting nonuse on these goods, we have done the same.
5 4 TTABVUE 3.
6 26 TTABVUE.
7 16 TTABVUE. Petitioner filed its consent to the amendment, 19 TTABVUE; and the motion
was granted by the Board, 24 TTABVUE.
8 24 TTABVUE.
Cancellation No. 92061629
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affirmative defense,9 but did not reach Respondent’s motion to amend his statement
admitting nonuse as to some of the goods.10 In view thereof, and of the amended
identification of goods, Respondent’s statement in his Answer that he did not use his
mark on “audio speakers for computers” is considered retracted and has not been
taken as an admission.
The parties’ respective trial briefs each appear to assert unpleaded claims. To the
extent Petitioner intends to state an abandonment claim, that claim is unpleaded and
the petition has not been amended or deemed amended pursuant to Fed. R. Civ. P.
15(a) or (b) to include the claim. See, e.g., Syngenta Crop Protection Inc. v. Bio-Chek
LLC, 90 USPQ2d 1112, 1115 n.3 (TTAB 2009); TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE (TBMP) § 314 (2018) (“A party may not rely on an unpleaded
claim.”). Respondent’s assertion that Petitioner infringed Respondent’s mark is not
cognizable in Board proceedings. See, e.g., FirstHealth of the Carolinas Inc. v.
CareFirst of Md. Inc., 479 F.3d 825, 81 USPQ2d 1919, 1921 (Fed. Cir. 2007); General
Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1591 (TTAB
2011) (“The Board has no authority to determine the right to use, or the broader
questions of infringement, unfair competition[.]”).We have given no consideration to
arguments, testimony, or evidence directed to these purported claims.

9 30 TTABVUE.
10 The Board also struck Respondent’s affirmative defenses of failure to state a claim, waiver,
estoppel, laches, and acquiescence.
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I. DESCRIPTION OF THE RECORD
The record includes the pleadings, and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the involved Registration. In addition, both parties
filed testimony and evidence to which the other has objected.
A. Petitioner’s Testimony and Evidence
Petitioner filed the testimony declaration of its attorney, Charles F. Reidelbach,
Jr.11 Respondent objects to the Reidelbach declaration on the ground that it was
improper for Petitioner’s attorney to testify, as he would then improperly be acting in
the dual role of attorney and as a witness.
Under Patent & Trademark Office Rule 11.307, a practitioner shall not act as
advocate at a proceeding in which he or she is likely to be a necessary witness unless
“the testimony relates to an uncontested issue” or “disqualification of the practitioner
would work substantial hardship on the client.”12 Mr. Reidelbach testified that he
received certain documents from Respondent and a voice mail from Respondent’s
assistant. His testimony simply authenticates these documents. We overrule
Respondent’s objection to the Reidelbach declaration on the ground that Petitioner’s
attorney improperly testified in this proceeding.
Respondent also alleges that the exhibits accompanying the Reidelbach
declaration were not introduced by Petitioner during its main testimony period and

11 35 TTABVUE.
12 Although Respondent based his objection on ABA Model Rule 3.7, the governing rule is
Patent & Trademark Office Rule 11.307. See TBMP § 101.01 (rules relating to the conduct of
practitioners are found in Part 11 of 37 C.F.R.).
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constitute improper rebuttal evidence. There are four exhibits to the declaration:
copies of Respondent’s initial disclosures; a recording of a voice mail message from
Respondent’s assistant to Mr. Reidelbach; an email from Respondent to Mr.
Reidelbach regarding Respondent’s upcoming deposition; and two emails from
Respondent to Mr. Reidelbach stating that Respondent had already provided his
discovery; the latter email including an additional sales receipt not previously
submitted with Respondent’s initial disclosures. Mr. Reidelbach’s testimony
regarding Respondent’s initial disclosures (Exhibit A) and the additional sales receipt
(Exhibit D) properly rebuts Respondent’s assertion that documents identified as
Exhibit F to his Notice of Reliance had been provided as part of his initial disclosures.
The voice mail and email regarding Respondent’s upcoming deposition (Exhibits B
and C) properly identified Respondent’s witness as his assistant, in rebuttal to her
testimony declaration wherein she did not identify herself. We overrule Respondent’s
objection to the Reidelbach declaration and accompanying exhibits on the ground of
improper rebuttal.13

13 We also overrule Respondent’s objection to Exhibit A (Respondent’s initial disclosures) on
the ground of confidentiality. If Respondent believed any portion of his initial disclosures
were confidential, he was under an obligation to have clearly designated the exhibit as such,
marking those portions he considered confidential before sending the initial disclosures to
Petitioner. Respondent’s mention of confidentiality, buried within his submission, 35
TTABVUE 10, failed to sufficiently notify Petitioner that Respondent considered the
submission confidential. See. e.g., Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629,
1633 n.6 (TTAB 2007) (where party fails to designate a discovery response or submission as
confidential under the terms of the protective order and/or redact confidential portions
thereof, the confidentiality of the information is deemed waived).
We also overrule Respondent’s objection, made in his brief, to the audio recording of Ms.
Means’ voice mail (Exhibit B) on the ground that he could not listen to the recording because
his copy contained no readable files. The alleged defect was a curable omission that should
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Petitioner also filed the testimony declaration of Ian Sells, its chief executive
officer, verifying results of a Lexis/Nexis public records search, attached to the
declaration as Sells Exhibit A.
In addition Petitioner filed, without objection, a Notice of Reliance14 on:
1. The official file wrapper of its pleaded application
(Exhibit A);
2. Respondent’s Answer (Exhibit B);15
3. Respondent’s admissions to Petitioner’s First Set of
Requests for Admissions (Exhibit C);
4. Respondent’s written responses to Petitioner’s First
Set of Interrogatories (Exhibit D);16
5. Respondent’s written responses to Petitioner’s First
Set of Requests for Production of Documents
(Exhibit E);
6. Petitioner’s Second Set of Interrogatories (Exhibit
F);17

have been raised in Respondent’s motion to strike. See TBMP § 532 and authorities cited in
that section.
14 31 TTABVUE.
15 This filing was unnecessary, as the pleadings form part of the record without any further
action from the parties.
16 Petitioner included as part of Exhibit D, emails sent by Petitioner’s counsel to Respondent
(31 TTABVUE 585-588). These emails have not been authenticated by testimony and are
improper subject matter for introduction under notice of reliance. Trademark Rule 2.122(e).
We have, however, considered the emails attached to the Reidelbach declaration and those
submitted by Respondent under his declaration; some of which are duplicated in Exhibit D.
17 Respondent did not respond to Petitioner’s second set of interrogatories. Two emails and a
letter sent from Petitioner’s counsel to Respondent were included with Petitioner’s Exhibit
F. These have been disregarded as they do not qualify under Trademark Rule 2.122(e) as
either official documents or printed publications.
Cancellation No. 92061629
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7. Petitioner’s Second Set of Requests for Production of
Documents (Exhibit G);18
8. Pages from Respondent’s initial disclosures (Exhibit
H);19
9. Declaration of Use under Section 8 for Respondent’s
involved registration (Exhibit I);
10. Declaration filed by Respondent with his application
for registration (Exhibit J);20
11. Lexis/Nexis report (Exhibit K).
B. Respondent’s Testimony and Evidence
Respondent filed his evidence as Exhibits A-J to a Notice of Reliance.21 Although
the majority of the documentation does not qualify under Trademark Rule 2.122(e)
as suitable for filing through a notice of reliance, each of Exhibits A-J, with the
exception of Exhibit F, was accompanied by a sworn testimony declaration signed
either by Respondent or by Debra E. Means, Respondent’s assistant. The Board
struck Exhibit F,22 but allowed Respondent time to submit a declaration to
authenticate the Exhibit F documents, which Respondent did.23 Thus, Exhibits A-J
are deemed as all having been filed under testimony declaration.

18 Respondent did not respond to Petitioner’s second set of document production requests.
19 A complete copy of Respondent’s initial disclosures is attached to the Reidelbach
declaration as Exhibit A.
20 Also automatically forms part of the record and need not have been filed. Trademark Rule
2.122(b).
21 32 TTABVUE.
22 40 TTABVUE.
23 41 TTABVUE 3.
Cancellation No. 92061629
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By the same Board order, Exhibits A, B, and C (in part) were stricken from the
record and have not been considered.24 Petitioner’s other objections were deferred to
final disposition; we now consider those which have been preserved by Petitioner in
its separate statement of objections accompanying its trial brief.25
1. EXHIBIT C
Exhibit C is the declaration of Debra E. Means and accompanying exhibits: a
Certification of Vital Record from the Los Angeles County Department Of Health
Services and a photograph of a gravesite. The Board has already stricken the
photograph from the record. Petitioner objects to admission of the Means declaration
and the Certification of Vital Record on the ground that Debra Means was not
identified as a witness prior to Respondent’s pretrial disclosures, resulting in unfair
surprise that Petitioner asserts is neither harmless nor substantially justified.
Respondent counters that Ms. Means testified as a rebuttal witness to the Sells
declaration to refute Petitioner’s assertion that Wilton Champ Means, one of the
alleged recipients of a product sold by Respondent, had passed away before the date
of the purported sale. To the extent the Means declaration refutes the assertion that
Wilton Champ Means died prior to the sale, the declaration is rebuttal evidence and
has been considered for that purpose. However, to the extent the information is
presented as part of Respondent’s case-in-chief for the purpose of supporting his
defense of use prior to the filing date, we do not consider Ms. Means’ testimony. For

24 32 TTABVUE 7-12 (Exhibit A); 32 TTABVUE 13-17 (Exhibit B); 32 TTABVUE 20 (Exhibit
C, photograph).
25 43 TTABVUE.
Cancellation No. 92061629
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her statement as to the purported date of sale to be admissible, Respondent would
have had to have identified Ms. Means as a potential witness in his pretrial
disclosures.
2. EXHIBIT D
Exhibit D is a copy of a page taken from the Wayback Machine Internet Archive.26
Petitioner objects to Respondent’s declaration introducing Exhibit D, and Exhibit D
itself, because the exhibit does not display the mark and because it comes from the
Internet archives of the Wayback Machine, which the Board has held is generally
unreliable. See, e.g., Paris Glove of Canada Ltd. v. SBC/Sporto Corp., 84 USPQ2d
1856, 1858-59 (TTAB 2007) (questioning the reliability of Wayback Machine
evidence). We overrule Petitioner’s objection. The evidence has been introduced under
Respondent’s declaration wherein he testifies to the access date and address from
which the Internet page has been retrieved. See Safer Inc. v. OMS Investments Inc.,
94 USPQ2d 1031, 1039 (TTAB 2010) (holding document obtained from the Internet
admissible if access date and source (e.g., the URL) are identified). However, the
exhibit has no probative value because on its face it does not pertain to Respondent’s
mark, and neither the methodology nor reliability of the Wayback Machine has been
established.
3. EXHIBIT E
Exhibit E is in two parts; the first is a summary list Respondent prepared of his
domain names, and the second is a copy of GoDaddy.com printouts showing

26 32 TTABVUE 25.
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information about Respondent’s domain names.27 Petitioner objects to Respondent’s
declaration introducing Exhibit E, and Exhibit E itself, on the ground that domain
name use does not constitute use in commerce. We overrule the objection. The
printouts are admissible under Safer Inc., and the list is admissible as an attachment
to Respondent’s declaration attesting to its veracity. Nonetheless, this Exhibit has
very little probative value because registration of a domain name alone, without
further evidence, does not establish use in commerce. Most of the domain names
mentioned in the exhibit bear no resemblance to Respondent’s mark, and the five
purported registrations of “MobileBlackbox” domain names do not show that
Respondent is using the term as a mark on the identified goods. See United Global
Media Grp., Inc., v. Tseng, 112 USPQ2d 1039, 1046 (TTAB 2014) (invoice for domain
name does not show trademark use); cf. Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723,
1726 (TTAB 2010) (registration of domain name does not evidence bona fide intent to
use mark); In re Eilberg, 49 USPQ2d 1955, 1957 (TTAB 1998) (domain name does not
function as a service mark).28
4. EXHIBIT H
Exhibit H is Respondent’s declaration refuting the statement in his Answer that
he does not use his mark on “audio speakers for computers.” Petitioner objects to
Exhibit H because it relates to an alleged inaccuracy in Respondent’s Answer that
was not permitted to be amended by prior Board order. We admit the declaration but,

27 32 TTABVUE 29.
28 All of the domain name registrations except for “mobileblackbox.biz” have expired. 32
TTABVUE 77-83.
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as noted, we have not considered the statement in Respondent’s Answer to constitute
an admission and therefore Exhibit H is moot.
5. EXHIBIT F
Exhibit F consists of dated sales receipts and product advertising or literature.29
Petitioner objects to all but three of the sales receipts under Fed. R. Civ. P. 37(c)(1),
because Respondent did not provide them during the discovery period in response to
Petitioner’s discovery requests. Petitioner argues that “[s]uch behavior unfairly
prejudices [Petitioner] because it is denied the opportunity to obtain additional
discovery related to the late produced evidence, and to otherwise prepare a
comprehensive defense.”30
In essence, Petitioner has moved for application of the estoppel sanction. Under
the estoppel sanction, a party that fails to provide information may, upon motion or
objection by its adversary, be precluded from using that information or witness at
trial, “unless the failure was substantially justified or is harmless.” Fed. R. Civ. P.
37(c)(1). See also Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d
1750, 1757 (TTAB 2013); Panda Travel, Inc. v. Resort Option Enters., Inc., 94
USPQ2d 1789, 1791-92 (TTAB 2009) (documents not produced until after the start of
trial stricken); Byer California v. Clothing for Modern Times Ltd., 95 USPQ2d 1175,
1177 (TTAB 2010) (party warned during teleconference that it may be subject to the
preclusion sanction where it “claimed” to have produced all responsive documents in

29 41 TTABVUE 5-42. The exhibit contains pages that display product images and product
advertisement literature, none of which is probative because none of it is dated.
30 43 TTABVUE 6.
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its possession); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000); Bison Corp.
v. Perfecta Chemie B.V., 4 USPQ2d 1718, 1720 (TTAB 1987) (“Each party has an
obligation to thoroughly check its records in order to provide the requested
discovery”); TBMP § 408.02.
Petitioner is correct that Respondent did not provide all of the sales receipts
contained in Exhibit F during the discovery period, and that Respondent consistently
maintained that all documents in his possession or control were already provided to
Petitioner as part of Respondent’s initial disclosures.31 Petitioner submitted its
interrogatories, requests for production of documents, and admissions together with
Respondent’s responses as evidence of having asked for, and not having received, the
relevant information.
Specifically, Petitioner made of record Respondent’s answers to Interrogatory Nos.
2, 4, 5, 6, 11 and 17. None of these interrogatories request sales receipts; rather, they
seek, for example, information about the adoption of Respondent’s mark, post-2009
information and information about “continuous use.”
Petitioner also introduced Respondent’s written responses to Document Request
Nos. 1, 2, 3, 4, 9, and 17.32 Request No. 2 asks Respondent to produce “all documents
which record, refer to, or relate to Respondent’s commencement of actual use in
connection with the sale or distribution of goods listed in [Respondent’s]

31 See, e.g, Respondent’s answer to Petitioner’s document production request No. 4: “All
documents relating to products sold by Respondent were provided to Petitioner as part of
initial disclosure[s].” 31 TTABVUE 600.
32 31 TTABVUE 600-01.
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Registration.” This request seeks information concerning Respondent’s first sale. In
response, Respondent states:
Petitioner has already acknowledged in its initial
disclosure statement that it had in its possession all
documents relating to Respondent’s website and products
sold by Respondent. Respondent has additionally provided
documents relating to any products currently out of stock
or under revision that may not appear on the website(s).
Also, see Response to Request No. 1.33
The documents contained in Respondent’s initial disclosures include two sales
receipts for “headphones” that are responsive to Request No. 2. Moreover, the
document contained in Exhibit F that shows Respondent’s first sale of “transmitters”
(email notification of payment received from PayPal sent 3/1/05) is responsive to this
Request. But Respondent did not produce this document in response to the discovery
request; thus, it is excluded from consideration.
Petitioner’s Request for Document Production No. 3 ask Respondent to produce
all documents that relate to Respondent’s “continuous use” of his mark. In response,
Respondent states, “See response to Request No. 2, which addresses Respondent’s
commencement of use.” Taken together, these requests seek evidence of Respondent’s
sales of audio speakers and transmitters.
Petitioner followed-up its discovery requests with two emails to Respondent
seeking any supplemental discovery that would show Respondent’s use of the mark

33 Request No. 1 sought documents relating to “any products currently sold and/or
distributed” by Respondent. This request does not seek information for the relevant time
frame.
Cancellation No. 92061629
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on speakers and transmitters prior to August 2009.34 Respondent’s response was that
everything supporting his alleged use of his mark was contained in the initial
disclosures he had already submitted to Petitioner; he did however specify that he
was “resending” them under cover of his October 18, 2016 email.35 Copies of the three
receipts that Respondent had earlier produced were attached to the email. None of
the other receipts in Respondent’s Exhibit F were included.
A party who fails to amend a prior disclosure or discovery response as required by
Rule 26(e) of the Federal Rules of Civil Procedure may be barred from using the
evidence proffered. Fed. R. Civ. P. 37(c)(l). The USPTO’s Trademark Rules of Practice
governing inter partes proceedings track the Federal Rules in this regard. Evidence
not obtained and filed in compliance with the Rules of Practice will not be considered
by the Board. Trademark Rule 2.123(k), 37 C.F.R. § 2.123(k). There are nineteen
receipts contained in Exhibit F evidencing sales of Respondent’s products; the
remainder are undated or do not mention the mark. Such a small number of
documents could easily have been produced in response to Request Nos. 2 and 3, or
in response to Petitioner’s emails. Because Respondent did not produce the nineteen
relevant documents that make up Exhibit F, with the exception of three receipts, in

34 35 TTABVUE 136-39 and 32 TTABVUE 133-34. We rely on the emails that were submitted
under Respondent’s testimony declaration and under the Reidelbach testimony declaration.
We have not considered any additional emails that were submitted only through Petitioner’s
Notice of Reliance. In its June 2, 2016 email, 35 TTABVUE 137, Petitioner specifically
requests “receipts indicating the sale of speakers [and] transmitters” bearing Respondent’s
mark. On October 17, 2016, Petitioner advised that because it had not received any additional
receipts, it would assume that Respondent had no “additional material to support your
discovery responses.” 35 TTABVUE 138.
35 35 TTABVUE 138.
Cancellation No. 92061629
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response to Petitioner’s discovery request Nos. 2 and 3 and its follow-up emails, we
sustain Petitioner’s objection to the documents contained in Exhibit F (excepting the
three receipts).36 See also TBMP §§ 527.01(e) and 408.03.
Disregarding evidence that has been stricken, Respondent introduced, under his
testimony declarations, the following evidence:
Exhibit D – archived Internet webpage from the Wayback
Machine Internet Archive;
Exhibit E – summary list of domain names and
GoDaddy.com printouts;
Exhibit F – three sales receipts;
Exhibit G – webpage “How does Bluetooth work?”;37
Exhibit H – Respondent’s declaration regarding his
Answer;
Exhibit I – emails exchanged between the parties dated
October 17 and 18, 2016; and
Exhibit J – Respondent’s declaration regarding Petitioner’s
Exhibit A to the Sells declaration.
Respondent also introduced the declaration of Debra E. Means and accompanying
exhibit (Certification of Vital Record).

36 Even if we considered the documentation, it would not support Respondent’s use of his
mark on “audio speakers for computers” prior to the filing date of the application for
registration. Because Respondent filed his application on August 3, 2009, those Exhibit F
receipts that post-date August 3, 2009 are irrelevant. This leaves two receipts. For the
reasons more fully discussed below, these two receipts are insufficient to show use of
Respondent’s mark in commerce on “audio speakers for computers” prior to August 3, 2009.
37 As noted above, this webpage was introduced in support of Respondent’s counterclaim that
Petitioner infringed Respondent’s mark, and although admissible under Safer Inc. has been
disregarded because the Board does not adjudicate claims of unfair competition or
infringement.
Cancellation No. 92061629
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II. Standing
Petitioner has standing because its pleaded application was refused based on
Respondent’s involved registration. Lipton Indus., Inc. v. Ralston Purina Co., 670
F.2d 1024, 1028, 213 USPQ 185, 189 (CCPA 1982) (“Thus, to have standing in this
case, it would be sufficient that [plaintiff] prove that it filed an application and that
a rejection was made because of [defendant’s] registration.”); Tri-Star Mktg., LLC v.
Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB 2007) (“petitioner has
standing to bring the petition for cancellation based on the fact that its application to
register [its mark] was refused registration by the office under Section 2(d) based on
a likelihood of confusion with respondent’s previously registered mark”); see also
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,
1062 (Fed. Cir. 2014) (plaintiff’s application refused based on defendant’s
registrations).38
III. Burden of Proof
“Because a trademark owner’s certificate of registration is ‘prima facie evidence of
the validity of the registration’ and continued use of the registered mark, the burden
of proof is placed upon those who seek cancellation. 15 U.S.C. § 1057(b) … the
petitioner’s burden is to establish the case for cancellation by a preponderance of the
evidence.” Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021,
13 USPQ2d 1307, 1309 (Fed. Cir. 1989). See also On-line Careline Inc. v. Am. Online

38 See TSDR copy of Petitioner’s BLKBOX application that indicates the application has been
refused, 31 TTABVUE 8-11, and copy of the Final Office Action refusing the application on
the basis of likelihood of confusion with Respondent’s MOBILEBLACKBOX and design
registration, 31 TTABVUE 20-351.
Cancellation No. 92061629
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Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000) and 7-11 Sales, Inc. v.
Perma, S.A. 225 USPQ 170 (TTAB 1984).
IV. Whether Respondent Used His Mark Prior to the Filing Date
Under Section 1(a) of the Trademark Act, 15 U.S.C. § 1151(a), a mark may not be
registered unless it is “used in commerce.” Section 45 of the Trademark Act, 15 U.S.C.
§ 1127, provides that “[t]he term ‘use in commerce’ means the bona fide use of a mark
in the ordinary course of trade, and not made merely to reserve a right in a mark.”
The Trademark Act further specifies that a trademark shall be deemed to be in use
in commerce when the goods bearing the mark “are sold or transported in commerce.”
15 U.S.C. § 1127. Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986, 120
USPQ2d 1640, 1642 (Fed. Cir. 2016) (providing an overview of the statutory use in
commerce requirement); Freki Corp. N.V. v. Pinnacle Ent., Inc., 126 USPQ2d 1697,
1702 (TTAB 2018) (“a claim of nonuse is a claim that a defendant did not use its mark
on some or all of the identified services as of the filing date of its application”);
Intermed Commc’ns, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977) (application void ab
initio where mark had never been used in the United States on or prior to the filing
date in association with the services described in the application).
Where it is found that there has been no use of the mark in connection with any
of the applied-for goods prior to the filing of an application filed under Section 1(a) of
the Trademark Act, the application is void ab initio. ShutEmDown Sports Inc. v. Lacy,
102 USPQ2d 1036, 1045 (TTAB 2012); Am. Hygienic Labs. Inc. v. Tiffany & Co., 12
USPQ2d 1979, 1984 (TTAB 1989) (citing Pan Am. Life Ins. Co. v. Federated Mutual
Ins. Co., 226 USPQ 914, 918 (TTAB 1985); see also Grand Canyon West Ranch, LLC
Cancellation No. 92061629
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v. Hualapai Tribe, 78 USPQ2d 1696, 1698 (TTAB 2006) (“It is clear that an applicant
cannot obtain a registration under Section 1 of the Trademark Act for goods or
services upon which it has not used the mark.”), quoted in Tao Licensing, LLC v.
Bender Consulting Ltd., 125 USPQ2d 1043, 1064 (TTAB 2017) (nonuse as of the
statement of use provides “independent basis to cancel Respondent’s registration”).
On the other hand, where use was made on some, but not all of the goods, prior to the
filing date of a pending application, the application may be amended to delete those
goods on which no use was made, and registration issue for the remaining goods.
Grand Canyon West, 78 USPQ2d at 1698 (applicant allowed to amend use-based
application to delete services for which no use was made as of the filing of the
application); cf. Am. Hygienic Labs., 12 USPQ2d at 1981 (granting partial summary
judgment on ground of nonuse of the mark as of the filing date). In requesting the
amendment to delete the goods on which the mark had not been used, Respondent
accepted judgment with respect to those deleted goods or services. Grand Canyon
West, 78 USPQ2d at 1698.39
A. Audio Speakers for Computers
Based on the evidence of record, or more accurately the lack thereof, we find that
Respondent did not make a bona fide use of his mark on “audio speakers for
computers” prior to the filing date of his application. First, Respondent’s initial
disclosures consist mostly of undated documents that do not display Respondent’s

39 The deleted goods are: “portable electronic devices for recording, organizing, transmitting,
manipulating and reviewing text, data, image and audio files; audio-video media players for
automobiles; audio and video recorders; digital video and event recorders that activate from
automotive impact; transmitters for video signals for transmission over twisted pair cables.”
Cancellation No. 92061629
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mark.40 Although one illustration depicting a “6-channel headphone” bears
Respondent’s mark, it is undated.41 The illustration is reproduced below.
42
A threshold issue that was not raised by the parties, but which is evident on the
face of this illustration, is that it shows use of the mark on “headphones,” not on the
listed goods, “audio speakers for computers.” A computer speaker is a hardware
device that connects to a computer to generate sound. Headphones, on the other hand,
are earphones “held over the ear by a band worn on the head” or “a small earphone

40 For example, the “list of persons who are likely to have discoverable non-privileged
information” sheds no light on whether Respondent was using his mark. 35 TTABVUE 6. The
“copy of or description by category of all documents and things” that Respondent may use to
support his defense of use is a list of mostly company names. 35 TTABVUE 10. The unsigned
“Distribution Agreement,” by its terms, appears to provide for the manufacturer to own
whatever trademarks are used with respect to the products. 35 TTABVUE 88-96.
41 35 TTABVUE 68-79 and 35 TTABVUE 98-99. There are additional undated illustrations
of headphones, 35 TTABVUE 84-87, and additional undated illustrations of transmitters, 35
TTABVUE 112-121 and 125-129, none of which display Respondent’s mark.
42 41 TTABVUE 30.
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inserted into the ear : earbud.”43 Because all of Respondent’s evidence refers to his
goods as “headphones,” none of it shows use of his mark on audio speakers for
computers. For this reason alone, the evidence fails to support Respondent’s claim of
use.
The evidence also fails to show bona fide sales of goods, assuming “headphones”
were the appropriate goods. There are two sales receipts for sales of headphones that
indicate samples were sold to two individuals, one in New York and one in California.
The receipts display the mark in their upper-left hand corners, but the photographs
of the goods show that the goods themselves bear only the word mark “MOBILE
BLACKBOX.”
44 45

43 At www.merriam-webster.com/dictionary/headphone, accessed November 14, 2018.
Judicial notice may be taken of dictionary evidence, including on-line dictionaries that appear
in printed format or have regular fixed editions. University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
44 35 TTABVUE 70. The poor quality reproduction is in the original.
45 35 TTABVUE 76.
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In both instances, the receipts are specifically marked “sample” or “evaluation
samples.” One receipt is dated 2007 and identifies “Mobile Black Box 3DVOX 5.1
channel 3DVOX headphones (sample);” the other receipt is dated 2006 and identifies
“Mobile Black Box 501 5. 1 channel 30 headphones (evaluation samples).”
While two sales receipts for sample products are minimal, depending on the
particular facts and industry practice, some types of promotional activities such as
distributing samples may qualify as use in commerce. Tao Licensing, 125 USPQ2d at
1053. It is necessary, however, that such use be “an ‘open and notorious’ use reaching
purchasers or prospective purchasers of the goods in connection with which the mark
is used.” E.I. du Pont de Nemours and Co. v. G.C. Murphy Co., 199 USPQ 807, 812
(TTAB 1987).
And even the sale of samples, in and of itself, does not
necessarily meet the standard. In Hydro-Dynamics, Inc. v.
George Putnam & Co., 811 F.2d 1470, 1 USPQ2d 1772,
1774 (Fed. Cir. 1987), our primary reviewing court held
that sending a box of samples to obtain the opinion of an
independent distributor did not qualify as use in
commerce, even though the distributor sold the samples to
customers, because the purpose of the shipment was
“advisory consultation on the merits of a proposed
trademark.” See also Smith Int’l, Inc. v. Olin Corp., 209
USPQ 1033, 1046 (TTAB 1981) (“a shipment of an article
or a prototype of an article for testing and experimentation
is not a public use upon which trademark rights are
created”). The determination thus is a fact-based inquiry
as to whether the activity in question is bona fide use in
the ordinary course of trade.
Tao Licensing, 125 USPQ2d at 1053-54.
The Board in Tao Licensing indicated that whether the goods are sold or given
away for free “can help inform whether the activity is in the ordinary course of trade.”
Cancellation No. 92061629
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Id. at 1053 n.72. Respondent charged for the goods, but did not add tax, shipping or
handling fees.46 As for the 2007 receipt, the recipient is described in Respondent’s
initial disclosures as a “Person ha[ving] knowledge regarding 3D headphone
prototype development. 3D Headphones project potential investor. Purchased Sample
for evaluation.”47 As for the 2006 receipt, Petitioner called into question the
relationship between the recipient and Respondent by showing that Respondent’s
assistant resides at the same address as the recipient, suggesting the sale may have
been merely an internal transaction from Respondent to his employee’s relative. See,
e.g., Am. Hygienic Labs., 12 USPQ2d at 1981 n.3 (shipments of cosmetics from
opposer’s vice president to himself and to two in-house counsel considered “sham
transaction”); NutraSweet Co. v. K & S Foods Inc., 4 USPQ2d 1964, 1966 (TTAB
1987) (single shipment of product from one corporate officer to another constitutes
intracompany transaction done solely for purposes of qualifying for registration and
not use in commerce); Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1773
(TTAB 1994) (even under prior law, where “token use” was permissible, trademark
rights were not created by “sporadic, casual, and nominal” shipments of goods bearing
a mark. “Rather, there had to be a trade in the goods sold under the mark, or at least
an active and public attempt to establish such a trade, in order for a trademark (and
registrable rights) to exist.”), aff’d without published opinion, White v. Paramount
Pictures Corp., 108 F.3d 1392 (Table) (Fed. Cir. 1997) (opinion available at 1997 WL

46 The amount of “sales tax” and of “shipping & handling” on each sales receipt is indicated
as “US$0.00.” 31 TTABVUE 641-42.
47 35 TTABVUE 9.
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76957).48 Given the absence of any information as to the disposition of the
headphones, or testimony from Respondent or the recipients negating the inference
that, as samples, the distributions were exploratory in nature and not arms-length
transactions, we cannot determine that these two receipts evidence distributions
“made for legitimate marketing or other commercially reasonable reasons in the
ordinary course of trade (i.e., genuine use of the mark).” Automedx, Inc. v. Artivent
Corp., 95 USPQ2d 1976, 1982 (TTAB 2010) (sales of ventilators to the military were
for legitimate business reasons (i.e., to test and refine the portable ventilators) and
not merely to reserve the right to register the marks). There is no evidence that
Respondent’s one-time shipments were followed by other shipments or accompanied
by other activities indicating a continuing effort to use the mark and place the
products on the market. Richardson-Vicks Inc. v. Franklin Mint Corp., 216 USPQ
989, 991 (TTAB 1982) (no accrual of proprietary rights based on shipment of one jar
of cold cream where goods to be identified by the mark not otherwise in existence at
the time).
Even if the distribution of sample products were considered bona fide
transactions, there is no evidence in the record that the mark was used on the goods
or their packaging. See Blue Bell, Inc. v. Farah Mfg. Co., 185 USPQ 1, 6 (5th Cir.
1975) quoted in Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d at
1055 (bona fide use in trade requires that the mark “be affixed to the merchandise

48 Tao Licensing, 125 USPQ2d at 1051 n. 58 (“prior case law under the old ‘token use’
requirement is instructive because uses that did not qualify under the token use definition
will not qualify under the newer, more stringent definition”).
Cancellation No. 92061629
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actually intended to bear the mark in commercial transactions”). The headphones
illustrated above display only a word mark on the goods and not Respondent’s
registered composite mark. The single page advertising the headphones, also depicted
above, bears the registered mark, but product or advertising literature does not serve
as point-of-sale material unless there is a means for ordering the goods, and since
there is not, the page does not qualify as a display associated with the goods. See,
e.g., In re Kohr Bros., Inc., 121 USPQ2d 1793, 1795 (TTAB 2017); In re Schiapparelli
Searle, 26 USPQ2d 1520, 1522 (TTAB 1993).
Petitioner sent a second set of document production requests to Respondent.49
Request No. 19 sought all documents relating to the manufacturing or distribution of
“audio speakers for computers.” Request Nos. 20-24 asked for supporting evidence
directed to Respondent’s assertion, in his Section 8 declaration for maintenance of his
registration, that he was excused from using the mark on “audio speakers for
computers.” Respondent did not answer any of the requests in Petitioner’s second set
of document requests.50 Petitioner’s Admission Request No. 1 asks Respondent to
admit that he did not provide “audio speakers for computers” under his mark from
August 3, 2009 to the present; Respondent denied the request but stated that he did
not provide these goods “during any period(s) where product was being revised with
technical updates.”51 In Interrogatory No. 2, Petitioner asked Respondent to identify

49 31 TTABVUE 622.
50 31 TTABVUE 4.
51 31 TTABVUE 560. A denial of a request for admission is merely a refusal to stipulate that
request and establishes neither the truth nor the falsity of the request, thus leaving the
matter asserted in the request to be resolved on the merits. See Phillies v. Phila. Consol.
Cancellation No. 92061629
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all products currently sold under his mark; Respondent answered, “3DVOX 6-channel
headphones (currently out of stock).”52 These exchanges suggest that Respondent did
not commercially produce headphones following the two sample shipments. In any
event, there is no evidence that Respondent sold headphones under the involved mark
prior to the application’s filing date.
In making this determination, we have considered Respondent’s statements in his
declaration that he has used his mark continuously since 2003.53 In some cases,
testimony alone of a single, credible witness is enough to establish common law use of
a mark for the identified goods or services. Powermatics, Inc. v. Glebe Roofing Prods.
Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965); GAF Corp. v. Amatol Analytical
Servs., Inc., 192 USPQ 576, 577 (TTAB 1976) (use of a mark may be established by
the oral testimony of a single witness where such testimony is “clear, consistent,
convincing, circumstantial and uncontradicted.”). However, “oral testimony is
obviously strengthened by documentary evidence which corroborates use.” Nationstar
Mortg. LLC v. Ahmad, 112 USPQ2d 1361, 1372 (TTAB 2014) (citing Elder Mfg. Co.
v. Int’l Shoe Co., 194 F.2d 114, 92 USPQ 330, 333 (CCPA 1952)). Respondent’s
testimony, at least with respect to “audio speakers for computers,” is called into
question by his admission that he did not provide “audio speakers for computers”

Holding Corp., 107 USPQ2d 2149, 2152 (TTAB 2013); Life Zone Inc. v. Middleman Group
Inc., 87 USPQ2d 1953, 1957 n.10 (TTAB 2008); Sinclair Oil Corp. v. Kendrick, 85 USPQ2d
1032, 1036 n.8 (TTAB 2007). Therefore, denials of requests for admission are inadmissible.
See Life Zone Inc., 87 USPQ2d at 1957 n.10.
52 31 TTABVUE 579.
53 41 TTABVUE 2.
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under his mark “during any [unspecified] period(s) where product was being revised
with technical updates”54 and that the 3DVOX 6-channel headphones were currently
out of stock.55 The sales receipts on which Respondent relies do not corroborate the
testimony for the reasons discussed above. Finally, Exhibit D, a copy of an archived
page from the WayBackMachine.org website,56 only supports Respondent’s assertion
that he is the “link” for the American office of CompTechnic, Inc. It does not support
Respondent’s statement that “3DVOX computer headphone products were sold under
the MobileBlackBox mark” because Respondent has not proven that he sold 3DVOX
headphones, 3DVOX headphones are not “audio speakers for computers,” and the
word mark MobileBlackBox that may have appeared on any goods is not the same as
the composite design mark that is at issue in this proceeding.
We find that the record as a whole reflects that Respondent was not yet using his
mark on “audio speakers for computers” in the ordinary course of trade as of the filing
date of his registration. Accordingly, the registration is subject to partial cancellation
to delete “audio speakers for computers.”
B. Analog and Digital Audio Signal Transmitters
Turning to the evidence in support of Respondent’s use of the mark on analog and
digital audio signal transmitters, we start with Respondent’s initial disclosures. As
with the audio speakers, there are undated illustrations of transmitters displaying

54 31 TTABVUE 560.
55 31 TTABVUE 579.
56 32 TTABVUE 25.
Cancellation No. 92061629
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the mark, such as the “FM audio Transmitter,”57 as well as other undated documents
that do not bear the mark.58 None of these documents have any probative value.
Although there is one sales receipt that appears to demonstrate a sale of two “Mobile
Black Box FM Audio Transmitter[s]” to an unidentified recipient in Ohio,59 the
receipt is dated 03/19/2013, well after Respondent’s filing date. Other than this single
sales receipt, Respondent has not shown that it used the mark on transmitters.60
Thus, even assuming the transmitter bore the registered mark, which is not apparent

57 35 TTABVUE 100.
58 These include an undated shipping label, 35 TTABVUE 81, price list, 35 TTABVUE 82-83,
packing list, 35 TTABVUE 102, and invoices apparently from Respondent’s manufacturer to
Respondent. 35 TTABVUE 104-5. None of these are probative as they lack dates. In addition,
the document entitled “Application Notes,” the two articles about Bluetooth technology, and
the one report about FM transmitter and radio technology are irrelevant because they have
nothing to do with Petitioner’s nonuse claim; they have been disregarded. 35 TTABVUE 12-
67.
There are three invoices that appear to be for goods shipped from Respondent’s
manufacturer to Respondent. Shipments from a manufacturer to the trademark owner do not
constitute use in commerce. See Avakoff v. Southern Pacific Co., 226 USPQ 435, 436 (Fed.
Cir. 1985) (“[D]elivery of the goods to applicant from the manufacturer … was a shipment of
the goods in preparation for offering the goods for sale. It did not make the goods available
to the purchasing public … . Clearly, the shipment by applicant's manufacturer to the
applicant was not use of the mark by applicant in commerce.”); Tao Licensing, 125 USPQ2d
at 1052 (importation of vodka, whether by registrant or one acting on registrant’s behalf, did
not establish the requisite use or transportation in commerce); Clorox Co. v. Salzar, 108
USPQ2d 1083, 1086-87 (TTAB 2013) (holding that mere shipment of goods from
manufacturer to applicant did not qualify as use in commerce); 3 McCarthy on Trademarks
and Unfair Competition § 19:118 (5th ed.) (“A required element of use in commerce is some
element of open or public use.”). Moreover, two of them are for unrelated goods (e.g., car
chargers) and one bears an illegible date.
59 35 TTABVUE 142.
60 The 2013 receipt was the only receipt of the three admitted receipts that is for the sale of
a transmitter. In excluded Exhibit F, there were five receipts that pre-date Respondent’s
filing date of August 3, 2009. The receipts alone are insufficient, however, to prove
Respondent’s use of his registered mark on the goods. None of them mention the mark; the
only use of “MobileBlackBox” on the receipts is as part of a domain name
(“MobileBlackBox.com”); and Respondent did not verify that the goods shipped under any of
the five receipts were branded with the composite mark.
Cancellation No. 92061629
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from the sales receipt alone, the evidence is insufficient to prove Respondent’s use of
his registered mark as of the filing date of his application. Respondent does not
provide any further information about the transaction, or any admissible evidence
showing use of his mark as of the filing of his application.
The registration is therefore subject to cancellation to delete “analog and digital
audio signal transmitters.”
V. Conclusion
After careful consideration of the parties’ arguments and the evidence properly
made of record, we find that Respondent did not use his mark as of the filing date of
the application on either “audio speakers for computers” or “analog and digital audio
signal transmitters.” Accordingly, on this record, Petitioner has shown that
Respondent’s registration is void ab initio.
Decision: The petition to cancel Registration No. 3798681 for the mark
is granted.