Symetrix, Inc.v.Lucid Corp.

Trademark Trial and Appeal Board

Nov 14, 2000

No. 92024639 (T.T.A.B. Nov. 14, 2000)

Hearing: Paper No. 48
June 22, 2000 BAC
11/4/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Symetrix, Inc.
v.
Lucid Corporation, by change of name from Portable
Computer Support Group, Inc.1
_____
Cancellation No. 24,639
_____
KiSong Kim Lang-Caditz and Kevan L. Morgan of Christensen
O’Connor Johnson Kindness, PLLC for Symetrix, Inc.
Thomas A. Roberts of McGlinchey Stafford, PLLC for Lucid
Corporation, by change of name from Portable Computer
Support Group, Inc.
_____
Before Simms, Chapman and Wendel2, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:

1 In a Board order dated January 11, 2000, the parties were
advised that the defendant portion of the caption of this
proceeding had been changed to reflect respondent’s change of
name. [The original registrant, Axon Development Corporation (a
Canadian corporation) assigned the registration to Portable
Computer Support Group, Inc. (a Texas corporation) in 1988, and
the change of name from Portable Computer Support Group, Inc. to
Lucid Corporation was recorded with the Assignment Branch of
this Office in 1997.]
2 Administrative Trademark Judge Wendel has been substituted for
Administrative Trademark Judge McLeod, who was on the panel at
the oral hearing but left government service before the case was
decided. See In re Bose Corporation, 772 F.2d 866, 227 USPQ 1
(Fed. Cir. 1985); and Jockey International, Inc. v. Bette Appel
Unltd., 216 USPQ 359 (TTAB 1982). See also, TBMP §§802.04 and
803.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 24,639
2
Symetrix, Inc. has filed a petition to cancel
Registration No. 1,433,593 on the Principal Register for
the
Cancellation No. 24,639
3
mark LUCID for “computer programs.”3
As grounds for cancellation petitioner alleges that
it “has a bona fide intention to use the trademark LUCID
in conjunction with the sale of computer software in the
broadcast, video, film and music industries”; that
respondent has never used the mark LUCID “in conjunction
with the sale of computer software in the broadcast,
video, film or music industries”; that to the extent
respondent ever owned any rights to the mark LUCID in
conjunction with the sale of computer software in the
broadcast, video, film and music industries, respondent
has abandoned those rights as respondent “has never used
the mark to identify software sold in those industries”;
that respondent has not used the mark LUCID in
conjunction with the sale of computer software in the
broadcast, video, film and music industries for a period
in excess of three years; and that respondent has
abandoned the mark LUCID for “computer software in the
broadcast, video, film and music industries” (petition to
cancel, paragraphs 4, 5, 7 and 8).

3 Registration No. 1,433,593 issued March 24, 1987, under
Sections 44(d) and (e) of the Trademark Act based on a Canadian
application, and subsequently, a Canadian registration; Section
8 affidavit accepted, Section 15 affidavit acknowledged.
Cancellation No. 24,639
4
Petitioner requests that the registration be
cancelled in its entirety, or in the alternative, that it
be partially cancelled.
Respondent, in its answer, denies the salient
allegations of the petition to cancel.
The record consists of the pleadings4; the file of
the involved registration5; and petitioner’s notice of
reliance filed October 16, 1998.6 On April 27, 1999,
respondent formally advised the Board and petitioner that
it “intentionally elected not to take any testimony or
file any Notices of Reliance on any evidence” during its
testimony period. Consequently, petitioner offered no
rebuttal evidence. Both parties filed briefs on the
case.7 Only petitioner’s attorney attended the oral
hearing before this Board.

4 Statements made in pleadings cannot be considered as evidence
in behalf of the party making them; such statements must be
established by competent evidence during the time for taking
testimony. See Kellogg Co. v. Pack’Em Enterprises Inc., 14
USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142
(Fed. Cir. 1991); and Times Mirror Magazines, Inc. v. Sutcliff,
205 USPQ 656 (TTAB 1979). See also, TBMP §706.01.
5 Informationally, the parties are advised that the file of the
involved registration is of record to the extent provided in
Trademark Rule 2.122(b)(1).
6 The paper titled “Clarification of Information Presented at
Oral Hearing” filed by petitioner on July 17, 2000 is not
evidence in this case.
7 Factual statements made in briefs on the case can be given no
consideration unless they are supported by evidence properly
introduced at trial. See BL Cars Ltd. v. Puma Industria de
Veiculos S/A, 221 USPQ 1018 (TTAB 1983); and Abbott Laboratories
Cancellation No. 24,639
5
The entire evidentiary submission by petitioner
consists of petitioner’s notice of reliance, filed
October 16, 1998, on the following three named items8:
(1) respondent’s responses to petitioner’s first set
of interrogatories (Nos. 1-11);
(2) respondent’s combined responses to petitioner’s
second set of interrogatories (Nos. 1-2),
request for production of documents (No. 1) and
first set of requests for admission (Nos. 1-2);
and
(3) “the record of pleadings and orders issued in
this matter to date.”9
Petitioner bears the burden of proof in this case,
and must establish both its standing and any pleaded
ground by a preponderance of the evidence. See
Cerveceria Centroamericana, S.A. v. Cerveceria India
Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989).
See also, 3 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition, §20:41 (4th ed. 2000).

v. TAC Industries, Inc., 217 USPQ 819 (TTAB 1981). See also,
TBMP §706.02.
8 Respondent’s answers to discovery included several documents
which petitioner submitted with this notice of reliance. (ftnt
cont.) Normally documents produced by the adverse party are not
admissible by way of a notice of reliance. See Trademark Rule
2.120 (j)(3)(ii); and TBMP §711. However, in this case,
respondent made no objection thereto. Accordingly, we have
considered the documents produced by respondent and submitted by
petitioner with its notice of reliance.
9 We remind the parties that by order dated January 11, 2000 the
Board granted respondent’s motion to strike that portion of
petitioner’s notice of reliance relating to the pleadings, but
we also explained any possible evidentiary value of the
pleadings. (See January 11, 2000 Board order, pp. 2-3).
Cancellation No. 24,639
6
It is not sufficient to plead standing; rather, the
factual allegation(s) which establish standing must be
affirmatively proved. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000); and Lipton Industries, Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Petitioner
submitted no evidence of any type relating to its
standing to bring this petition (e.g., testimony of
petitioner, a notice of reliance on a copy of a pending
application owned by petitioner, a current status and
title copy prepared by the PTO of a federal registration
owned by petitioner). Therefore, petitioner has failed
to prove its standing.
Regarding the ground for cancellation of the
registration (in whole or in part), petitioner pled only
abandonment in the petition to cancel. Further,
petitioner argued in both its brief and reply brief
(e.g., brief, p. 6, and reply brief, pp. 4-5.) that the
issue before this Board is abandonment, not likelihood of
confusion as contemplated in the case of Eurostar Inc. v.
“Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266 (TTAB
1994).10

10 Respondent argued in its brief on the case that petitioner
has not stated a valid claim for partial cancellation under the
Eurostar case. Whether this case is viewed as one based on a
Cancellation No. 24,639
7
Petitioner essentially contends that the evidence
establishes that respondent uses its mark LUCID on
computer programs that generate spreadsheets, function as
desktop and personal information managers and perform
computer utility functions; that the scope of
respondent’s rights is limited to the particular goods on
which it has used its mark; that respondent “has not
shown any use of the mark LUCID on software specifically
designed for sale and use in the broadcast, music, video
or film industries” (brief, p. 4); and that partial
cancellation of the registration is appropriate to ensure
that the registration accurately reflects respondent’s
rights in the mark.11
The problem with petitioner’s position in this case
is that the sparse evidence before us does not establish

claim of abandonment, or as one based on a claim for restriction
of a registration to avoid likelihood of confusion, in the
context of the Eurostar case, makes virtually no difference
because of petitioner’s failure of proof.
For a discussion of the Eurostar case, see 3 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition, §20:44
(4th ed. 2000).
11 In the petition to cancel petitioner requested that the
registration be cancelled as to “software sold in the broadcast,
music, video and film industries.” In its brief on the case
petitioner requested respondent’s identification of goods be
restricted to read either (i) “computer programs, excluding
programs for use in the broadcast, music, video and film
industries”; or (ii) “computer programs that generate
spreadsheets, function as desktop and personal information
managers, and perform computer utility functions”; or (iii)
“computer programs, excluding programs for facilitating the
Cancellation No. 24,639
8
abandonment of the mark LUCID by respondent; and, to the
contrary, it establishes that respondent uses its mark on
a variety of computer software sold in various channels
of trade, including the broadcast, music, video or film
industries. For example, reproduced below are some of
petitioner’s discovery requests, and respondent’s answers
thereto (made of record by petitioner):
(1) First Set of Interrogatories, No. 8 -
Identify each and every customer in
the broadcast, video, film, and music
industries to whom Registrant has sold
computer software in association with
the trademark LUCID.
Answer – Registrant will make
available to petitioner its business
records from which an answer to this
interrogatory may be derived or
ascertained. Such records include
registration cards, computer
database(s), and other similar
accounting records. Also, attached is
Exhibit A that represents a
computerized summary of certain
responsive customers from 1992 to
1996;12
(2) Second Set of Interrogatories, No. 1 –
Identify at least three customers in
the broadcast, video or music
industries to whom Registrant has sold
computer software in association with
the trademark LUCID for each of the

transfer of audio signals into a computer for manipulation of
the audio signals in a post-production environment.”
12 Exhibit A is titled “Partial Customer List” and includes
entities such as Walt Disney World Co., Westwood Studio, Yankee
Music, Jetstream Video Inc., WNOW Radio and Jewish Voice
Broadcasts.
Cancellation No. 24,639
9
calendar years from 1987 to the
present date.
Answer – Records are no longer
maintained that would make such
identification possible. Most of the
products bearing the LUCID trademark
are sold through distributors and
retailers to the general public and a
broad spectrum of businesses and
industries including the broadcast,
video and music industries;
(3) Second Set of Interrogatories, No. 2 –
For each of the sales identified in
response to the preceding
interrogatory, identify all documents
and things that support Registrant’s
allegation that it has sold the
identified customer software in
association with the trademark LUCID.
Answer – See answer to Interrogatory
No. 1 above. However, nothing known
to Registrant would give Registrant
cause to believe that the pattern
shown by the 1993 and 1994 data has
changed and that sales to members of
the broadcast, video and music
industries continue on a regular
basis; and
(4) Request for Admission No. 2- Admit
that the Registrant has not produced
any evidence to show use of the mark
LUCID in association with the sale of
software in the broadcast, video or
film industries during the calendar
years 1987, 1988, 1989, 1990, 1991,
1992, 1995, 1996, 1997 and 1998.
Answer – Denied. Additionally, the
documents informally requested by
Petitioner’s attorney, produced
herewith, evidence products sold to a
vast array of businesses and
industries, including broadcast, video
and film industries.
Cancellation No. 24,639
10
The fact that respondent’s discovery responses do
not show use on certain specific type(s) of computer
program(s) does not establish abandonment of the mark for
the goods as identified in the registration by
respondent. In view of petitioner’s failure to prove
abandonment of the mark by respondent, either in whole or
with respect to the broadcast, video, film or music
industries, the petition to cancel must fail.
Decision: The petition to cancel (including
petitioner’s alternative request for partial
cancellation) is denied.
R. L. Simms
B. A. Chapman
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board