Threshold.TV, Inc. and Blackbelt TV, Inc.v.Metronome Enterprises, Inc.

Trademark Trial and Appeal Board

Jul 27, 2010

No. 91152662 (T.T.A.B. Jul. 27, 2010)

Mailed:
July 27, 2010
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Threshold.TV, Inc. and Blackbelt TV, Inc.

v.

Metronome Enterprises, Inc.1
_____

Opposition No. 91152662 to application Serial No. 76256094,
filed on May 10, 2001
_____

Peter C. Beirne of Law Office of Peter C. Beirne for
Threshold.TV, Inc. and Blackbelt TV, Inc.

Marc J. Kesten of Marc J. Kesten, P.L. for Metronome
Enterprises, Inc.
______

Before Bucher, Zervas and Wellington, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

1 On July 7, 2009, during the trial period, the Office recorded
nunc pro tunc assignments of the opposed application from (i)
Metronome Corporation, the original applicant, to Erik Jones, and
(ii) from Erik Jones to Metronome Enterprises, Inc. See Reel No.
4018, Frame Nos. 0284 and 0287. In view of the assignments and
their recordation, Metronome Enterprises, Inc. is substituted as
a party defendant for Metronome Corporation. See Binney & Smith
Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003, 1004 n.1
(TTAB 1984); and TBMP § 512.01 (2d ed. rev. 2004).

THIS OPINION IS
A PRECEDENT
OF THE TTAB
Opposition No. 91152662
2
Metronome Enterprises, Inc. (“applicant”) is the owner
of record of an application for registration on the
Principal Register of the mark

for “entertainment in the nature of television programming
in the field of martial arts, namely, providing martial arts
television network programming that will bring martial arts
education and entertainment to homes throughout the United
States 24 hours a day, seven days a week” in International
Class 41. The application was filed on May 10, 2001 as an
intent to use application, and an amendment to allege use
was filed on February 8, 2002. Applicant claims December
31, 1999 as its date of first use anywhere and January 20,
2000 as its date of first use in commerce. Applicant has
disclaimed the term “TV.”
Blackbelt TV, Inc., which is identified in the amended
notice of opposition as the successor in interest to
Threshold.TV, Inc.2 (collectively “opposer”), opposes

2 In its September 30, 2008 order, the Board joined Blackbelt TV,
Inc. as a plaintiff.
Opposition No. 91152662
3
registration of applicant’s mark alleging, inter alia, that
it has used BLACKBELT TV since February 1999 as a mark in
interstate commerce in connection with digital broadband
delivery over the Internet of information, content,
entertainment and audio-visual programming relating to
fighting and martial arts, and featuring sports and
entertainment events in the fields of fighting and martial
arts.3 Opposer additionally alleges (a) priority and
likelihood of confusion with opposer's BLACKBELT TV
designation; (b) that applicant is not offering and has
never offered the services which are recited in its
application; and (c) that applicant committed fraud on the
Office in connection with two filings with the USPTO,
namely, its amendment to allege use and declaration
accompanying its motion to amend its dates of use, in which
applicant stated, under oath, that the mark has been used in
connection with the services recited in the application.
Applicant filed an answer which denied the salient
allegations of the original notice of opposition and raised
several affirmative defenses including the doctrines of
estoppel and unclean hands.

3 Opposer has also alleged use of BLACKBELT, BLACKBELT.TV and
BLACKBELT.COM. Because opposer has not discussed these
designations in its main brief, we consider opposer to have
waived its claims based on these designations.
Opposition No. 91152662
4
The Record
In addition to the pleadings, the file of the opposed
application is part of the record without any action by the
parties. Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b).
Opposer introduced the following:4
(i) the testimonial deposition of Josh
Wexler, president of Blackbelt TV, and
exhibits;

(ii) a memorandum and order from Metronome
Corp. v. Threshold TV, Inc., Civil
Action No. CV 03-2550 GAF, dated
October 20, 2004, in the Central
District of California;5 and

(iii) excerpts from the transcript of
Metronome Corporation’s discovery
witness, Erik Jones, identified as
“president of Metronome” and
applicant’s predecessor, in the
California civil action, submitted by
notice of reliance.

Applicant introduced the following evidence:
(i) the testimonial depositions of (a) Erik
Jones; (b) Sheldon Altfeld, a former
consultant to Mr. Jones; and (c) Darryl
Moore, who assisted Mr. Jones with
budgeting issues and financing efforts;
and

4 As discussed infra, applicant has objected to some of these
materials.
5 Opposer submitted the memorandum and order electronically with
only a cover sheet identifying its filing as a notice of
reliance. The Board did not receive an actual notice of reliance
describing the memorandum and order or indicating the relevance
thereof. See Trademark Rule 2.122(e); and TBMP § 704.02 (2d ed.
rev. 2004)(“The notice of reliance must include a description of
the proffered materials and, in some instances, must indicate the
relevance of those materials to the case.”). Because applicant
did not object on the basis that opposer failed to submit an
actual notice of reliance with its cover sheet, we have not
excluded the memorandum and order on this basis.
Opposition No. 91152662
5
(ii) documents, which applicant characterizes
as “publications of general circulation”
but which in actuality are search
results from godaddy.com regarding the
domain name blackbelt.tv, submitted by
notice of reliance.6

Evidentiary Objections
Applicant’s objections to opposer's evidence:
1. Applicant’s objection to the California district
court’s memorandum and order is overruled because applicant
itself relies on this memorandum and order in its brief.
(See applicant’s brief at 14, where applicant stated,
“First, the District Court agreed with the U.S. Patent and
Trademark Office’s assessment of opposer’s mark, and found
that the words ‘BLACKBELT TV,’ if intended to describe
television martial arts programming, are merely
descriptive.”)
2. We sustain applicant’s objection to the excerpts of
Mr. Jones’s April 22, 2004 discovery deposition in the
California civil action (submitted by notice of reliance).7
Testimony from another proceeding must be introduced

6 The search results show web addresses, and opposer's attorney
has provided the date when the information was accessed. See
Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB
2010)(“if a document obtained from the Internet identifies its
date of publication or date that it was accessed and printed, and
its source ( e.g., the URL), it may be admitted into evidence
pursuant to a notice of reliance in the same manner as a printed
publication in general circulation in accordance with Trademark
Rule 2.122(e).”) (emphasis in original).
7 Applicant’s objection to references to Mr. Jones’s past in
these excerpts is moot in view of our exclusion of this
deposition evidence.
Opposition No. 91152662
6
pursuant to a stipulation of the parties approved by the
Board or by motion granted by the Board, and the Board has
construed the term "testimony," as used in Trademark Rule
2.122(f), as meaning only trial testimony,

or a discovery
deposition which was used, by agreement of the parties, as
trial testimony in the other proceeding. See TBMP §§ 530
and 704.13 (2d ed. rev. 2004).
3. Applicant objected to Exhs. 1 and 4 to Mr. Wexler’s
testimonial deposition, namely, Mr. Wexler’s entire
discovery deposition transcript in the California civil
action (Exh. 1), and Mr. Wexler’s summary judgment
declaration filed in the same proceeding (Exh. 4).
Applicant objected to Exh. 1 on the ground that the
deposition comprises testimony from another proceeding for
which opposer had not obtained permission under Trademark
Rule 2.122(f) to introduce into evidence, and to Exh. 4 on
the ground that the statements therein constitute
“inadmissible hearsay.” Mr. Wexler testified at trial that
Exhs. 1 and 4 were copies of his deposition and declaration,
respectively, and that he provided “truthful answers” to the
questions in the deposition and that the statements in the
declaration are “true and accurate.” Wexler at 9, 10 and
16.
Trademark Rule 2.122(f) has no applicability in this
situation. Opposer introduced Mr. Wexler’s prior discovery
Opposition No. 91152662
7
deposition as an exhibit to his trial deposition, and Mr.
Wexler, through his testimony at trial, authenticated the
transcript. Trademark Rule 2.122(f) is intended to offer a
party a means for introducing testimony from a prior
proceeding without having to call a witness to authenticate
the testimony. The rule thereby allows a party a relatively
quick and simple means by which to introduce testimony from
another proceeding into evidence.8 It is not intended as
specifying the only means by which oral or written
statements from another proceeding can be introduced at
trial in a Board proceeding.
Applicant’s objection to Exh. 4 on the basis of hearsay
is also not an appropriate objection. Because Mr. Wexler
testified as to the truth and accuracy of his statements in
his declaration, the statements in the declaration are not
hearsay.
We note too that the record does not reflect that
applicant had any notice from opposer that opposer was
considering introducing the prior deposition and declaration
as exhibits to the testimony deposition. It is possible
that an adversary might object at a testimony deposition to
a witness’s authentication of such material from another

8 We reiterate that the Board has construed the term "testimony,"
as used in Trademark Rule 2.122(f) as meaning only trial
testimony, or a discovery deposition which was used, by agreement
of the parties, as trial testimony in the other proceeding.

Opposition No. 91152662
8
proceeding because the adversary had no prior opportunity to
review the material and, therefore, was unable to prepare to
effectively cross-examine the witness as to his prior
statements. However, in this case applicant did not object
to Exhs. 1 and 4 during the testimony deposition or at any
point during opposer’s testimony period, and only raised
these objections in its brief. Applicant did not timely
place opposer on notice of the objections and afford opposer
an opportunity to either address the objections or elicit
direct testimony from Mr. Wexler in lieu of reliance on the
exhibits.
For the foregoing reasons, applicant’s objections to
Exhs. 1 and 4 are overruled.
4. Applicant's objections to statements in opposer’s
brief regarding Mr. Jones’s past are sustained. Because we
have stricken the evidence on which opposer relies in
support of such statements (see no. 2 above), there is no
evidentiary support in the trial record for these statements
in opposer's brief.
Opposer's objections to applicant’s evidence
In its main brief, opposer did not object to any of
applicant's evidence. In its reply brief, however, opposer
raised four pages of objections to applicant's evidence.
Many of opposer's objections are on the basis of lack of
foundation and authenticity and pertain to a number of
Opposition No. 91152662
9
exhibits to the testimony depositions of applicant’s
witnesses. Because opposer did not raise its objections in
its main brief, we deem opposer's objections to be waived.9
Opposer cannot be allowed to wait until its reply brief to
raise objections. Such a tactic effectively forecloses
applicant from responding to the objections. We have
considered, however, opposer's arguments regarding the
weight we should accord to applicant’s evidence, including
the weight to be accorded to the testimony of applicant’s
witnesses.
Preliminary Issue: Motion to Amend First Use Dates
Early in this proceeding, applicant filed a motion to
amend its dates of use set forth in the amendment to allege
use filed while the application was pending, prior to
opposition. The motion to amend was accompanied only by a
supporting declaration from Mr. Jones. Applicant, which
prosecuted its application without the assistance of
trademark counsel, asserted that “[o]nly recently, upon
consulting with newly-retained trademark counsel, did
Applicant learn and understand what the term ‘use’ means.”
Motion at 2. The Board deferred consideration of the motion
until summary judgment or final decision, citing TBMP 514.03
(2d ed. rev. 2004).

9 Moreover, the objections go to the probative value of the
evidence, rather than their admissibility. Even if we were to
Opposition No. 91152662
10
Applicant seeks to amend its date of first use anywhere
from December 31, 1999 to August 25, 1985, and its date of
first use in commerce from January 20, 2000 to July 5, 1987.
An applicant is entitled to prove an earlier date of
use than the date alleged in its application, but its proof
must be clear and convincing and must not be characterized
by contradiction, inconsistencies or indefiniteness. See
Hydro-Dynamics, Inc. v. George Putnam & Co., Inc., 811 F.2d
1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987). The reason for
this evidentiary burden on applicant is because “a change of
position [to earlier dates of use] from one ‘considered to
have been made against interest at the time of filing the
application,’ (internal citation omitted), requires enhanced
substantiation.” Id. Because there is no evidence in the
trial record directed to either of the specific dates
proposed by applicant as its amended first use dates,
applicant has not established such first use dates by clear
and convincing evidence.10 Applicant’s motion to amend the
dates of use in its application is therefore denied.
Opposer's Standing
“Any person who believes that he would be damaged by
the registration of a mark upon the principal register …

exclude the evidence, our resolution of this case would not be
any different.
10 Mr. Jones’s declaration accompanying the motion to amend in and
of itself is not sufficient evidence of the earlier dates of use
sought by applicant.
Opposition No. 91152662
11
may, file an opposition … stating the grounds therefor.”
Section 13 of the Trademark Act of 1946, 15 U.S.C. §1063(a).
Thus, a party has standing to oppose in a Board proceeding
if it can demonstrate a real interest in the proceeding.
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982), citing Universal Oil
Products Co. v. Rexall Drug and Chemical Co., 463 F.2d 1122,
174 USPQ 458 (CCPA 1972).
Opposer uses the designation BLACKBELT TV which appears
in applicant’s mark in connection with entertainment
programming relating to martial arts, including digital
broadband delivery over the Internet of information,
content, entertainment and audio-visual programming.11 This
is sufficient to demonstrate that opposer has a real
interest in this proceeding, and therefore has standing.
Priority
The question of priority is an issue in this case
because opposer has asserted common law rights to
BLACKBELT TV and does not own an existing registration upon
which it can rely under Section 2(d). Cf., King Candy Co.,
Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974). To establish its priority under Section
2(d), opposer must prove that, vis-à-vis applicant, it owns

11 See exh. 4, para. 3, and exh. 19 (opposer’s response to
applicant’s Interrogatory No. 21) to Mr. Wexler’s testimonial
deposition.
Opposition No. 91152662
12
“a mark or trade name previously used in the United States …
and not abandoned….” Applicant, however, may rely on the
filing date of its application, which is May 10, 2001. See
Trademark Act Section 7(c), 15 U.S.C. §1057(c); and Larami
Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840 (TTAB
1995).12
In order to establish priority of use,13 opposer must
prove that it acquired trademark rights prior to the
applicant’s first use. Thus, opposer must prove that its
trademark is inherently distinctive, or acquired
distinctiveness before the date on which applicant can
establish its rights. See Otto Roth & Co. v. Universal
Foods Corp., 640 F.2d 1317, 209 USPQ 40, 44 (CCPA 1981)
(“[I]t is equally clear that if an opposer's alleged means
of trade designation is not distinctive -- does not identify
source -- then there is no basis upon which to compare such
a thing with the applicant's mark to determine whether
confusion as to source is likely”). Thus, “[u]nder the rule
of Otto Roth, a party opposing registration of a trademark

12 Applicant introduced testimony and documentary evidence to
establish that its actual date of first use of its mark in
connection with its identified services is earlier than the
filing date of the application. Because we find, infra, that
opposer has not established that its pleaded mark became
distinctive prior to the filing date of applicant’s application,
we need not consider the evidence of applicant’s use prior to its
filing date.
13 Because opposer is relying on common-law rights, “the decision
as to priority is made in accordance with the preponderance of
the evidence.” Hydro-Dynamics Inc. v. George Putnam & Co., Inc.,
1 USPQ2d at 1773.
Opposition No. 91152662
13
due to a likelihood of confusion with his own unregistered
term cannot prevail unless he shows that his term is
distinctive of his goods [or services], whether inherently
or through the acquisition of secondary meaning or through
‘whatever other type of use may have developed a trade
identity.’” Towers v. Advent Software, Inc., 913 F.2d 942,
16 USPQ2d 1039, 1041 (Fed. Cir. 1990), citing Otto Roth, 209
USPQ at 43.
A designation asserted as a mark is not inherently
distinctive if it is merely descriptive or generic. Because
the parties in their briefs have discussed whether BLACKBELT
TV is a merely descriptive designation, we consider whether
the term BLACKBELT TV is merely descriptive of services on
which opposer maintains it uses BLACKBELT TV, and, if it is
merely descriptive, whether opposer has established that
BLACKBELT TV has acquired distinctiveness, prior to the
filing date of applicant’s application.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).

Opposition No. 91152662
14
Whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods or services for
which registration is sought, the context in which it is
being used on or in connection with those goods or services,
and the possible significance that the term would have to
the average purchaser of the goods or services because of
the manner of its use. That a term may have other meanings
in different contexts is not controlling. In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Moreover, it is
settled that “[t]he question is not whether someone
presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who
knows what the goods or services are will understand the
mark to convey information about them.” In re Tower Tech
Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re
Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB
1998); In re Home Builders Association of Greenville, 18
USPQ2d 1313 (TTAB 1990); and In re American Greetings Corp.,
226 USPQ 365 (TTAB 1985).
The dictionary definition of “black belt” is “one who
holds the rating of expert in various arts of self defense
(as judo and karate), also; the rating itself”; and the
definition of TV is “television.”14 Opposer maintains that

14 We take judicial notice of these definitions of “black belt”
and “tv” from the website merriam-webster.com. The Board may
take judicial notice of dictionary definitions, including online
Opposition No. 91152662
15
it uses BLACKBELT TV in connection with “entertainment
programming relating to fighting and martial arts, including
digital broadband delivery over the Internet of information,
content, entertainment and audio-visual programming relating
to fighting and martial arts, and featuring sports and
entertainment events in the fields of fighting and martial
arts.” Wexler summary judgment declaration para. 3,
submitted as Exh. 4 to Wexler test. dep. BLACKBELT in
opposer's designation immediately informs purchasers that
opposer's services feature individuals who are experts in
martial arts (of which karate is one). TV informs
purchasers that opposer's services offer programming
suitable for viewing on television, or through any other
means for watching television programming, as on a computer.
The combination of these two descriptive terms does not
evoke a new and unique commercial impression; the combined
terms merely retain their descriptive significance. Thus,
we find that BLACKBELT TV describes a feature of opposer’s
services, and BLACKBELT TV is not inherently distinctive for
opposer's services. It is therefore opposer’s burden to
demonstrate that its designation has acquired
distinctiveness prior to the May 10, 2001 filing date of

dictionaries which exist in printed format. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002).
See also University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Opposition No. 91152662
16
applicant's application. See Tone Brothers Inc. v. Sysco
Corp., 28 F.3d 1192, 31 USPQ2d 1321, 1327 (Fed. Cir. 1994)
(Opposer, “as the party attempting to establish legal
protection for its unregistered trade dress, has the burden
of proving secondary meaning by a preponderance of the
evidence”). See also Perma Ceram Enterprises Inc. v. Preco
Industries Ltd., 23 USPQ2d 1134, 1136 (TTAB 1992) (“[W]here
the mark relied upon by a plaintiff in support of its
priority of use and likelihood of confusion claim is merely
descriptive (or deceptively misdescriptive), then the
plaintiff must establish priority of acquired
distinctiveness”).
To establish acquired distinctiveness of its
designation, opposer relies on the district court’s
memorandum and order. In the civil action, applicant, as
plaintiff, alleged, inter alia, common law infringement of
“the ‘Black Belt TV’ mark.” Order at 2. In deciding
opposer's summary judgment motion, the district court stated
in the memorandum and order:
The Court concludes that Defendant’s [opposer’s]
motion is meritorious. Plaintiff [applicant] has
been unable or unwilling to present any evidence,
beyond its CEO’s assertion, that the “Black Belt
TV” mark was ever used, let alone evidence that
the mark is distinctive rather than merely
descriptive, or that the mark has acquired
secondary meaning through any degree of consumer
recognition or association with Plaintiff. In
contrast, Defendant has presented considerable

Opposition No. 91152662
17
evidence that it has used its “Blackbelt TV” mark
in commerce and that the mark has achieved fame
and association with Defendant. For these
reasons, the Court GRANTS Threshold’s motion for
summary judgment on all of Plaintiff’s claims.

(emphasis in the original.) Order at 2-3. The court noted
that applicant [as plaintiff] had not “submitted an exemplar
of its mark to allow the Court to determine if its design
(as opposed to word) mark is entitled to protection or if it
is substantially similar to Defendant’s design mark.”
(emphasis in original.) Id. at 16 – 17. In a December 20,
2007 Board order addressing the parties’ responses to an
order to show cause issued after the termination of the
district court proceeding, the Board found that the district
court’s decision does not have any issue or claim preclusive
effect in part because the district court did not consider
the mark which is the subject of the involved application.
Opposer, early in its main brief herein, relies on the
district court’s order and argues that the district court
stated that opposer's designation “has achieved fame and
association” with opposer; and that therefore opposer need
not establish that its designation is distinctive. Brief at
5. However, later in its brief, without specifying that it
is arguing in the alternative, opposer takes a different
position and argues that “[t]he fame associated with the
Opposer’s mark as shown by the publicity and acceptance by
the media of the Opposer’s mark and as already found by the
Opposition No. 91152662
18
District Court’s ruling in the civil matter establish that
the Opposer’s mark has acquired distinctiveness through
secondary meaning.” Id. at 11.
We already addressed the question of whether the
district court’s statement has any issue preclusive effect
in this proceeding in our December 20, 2007 order. We
concluded that it does not have any issue preclusive effect
because a determination of whether opposer’s designation has
acquired distinctiveness was not necessary and essential to
the resulting judgment in the civil action. Additionally,
we pointed out that the district court did not expressly
state that opposer's pleaded BLACKBELT TV designation had
acquired distinctiveness.15 Under the law of the case
doctrine, we do not revisit our conclusion.16
We turn then to the remaining evidence that opposer
introduced into the record in this proceeding which bears on
its contention that its designation has acquired
distinctiveness for any of its asserted services. Opposer
relies on Mr. Wexler’s testimony and the exhibits to his

15 Even if the district court's decision could be read as
including a finding that opposer's pleaded BLACKBELT TV
designation had acquired distinctiveness, the district court’s
decision does not specify when such distinctiveness was acquired.
16 The doctrine holds that a court generally should not reopen
issues decided in earlier stages of the same litigation.
Agostini v. Felton, 521 U.S. 203, 236 (1997). The doctrine does
not apply unless the court is “convinced that [its prior
decision] is clearly erroneous and would work a manifest
injustice.” Arizona v. California, 460 U.S. 605, 618, n. 8
(1983). Opposer has not persuaded us that there is an error in
our prior decision.
Opposition No. 91152662
19
testimonial deposition, primarily the two-page declaration
marked as Exh. 4 and to various articles regarding BLACKBELT
TV.
Evidence of acquired distinctiveness can include the
length of use of the mark, advertising expenditures, sales,
survey evidence, and affidavits asserting source-indicating
recognition. See In re Bongrain International Corp., 894
F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990). See also
Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d
1033, 24 USPQ2d 1161, 1166 (2d Cir. 1992)(“Among the factors
that we have found relevant to this inquiry in the past are
advertising expenditures, consumer studies, sales success,
unsolicited media coverage, attempts to plagiarize and
length and exclusivity of use. … There are undoubtedly other
types of evidence that would also be relevant to a claim of
secondary meaning.”).
In this case, the record contains no evidence of sales,
numbers of customers, surveys or affidavits from third
parties asserting source-indicating recognition. There also
is no indication as to how many visitors have visited
opposer's websites. Although Mr. Wexler does state in his
summary judgment declaration that opposer has “expended at
least … $3,000,000 in promotion, wages, distribution
contracts, affiliation agreements, production costs, legal
fees, and the like,” Wexler dep. exh. 4, para. 7, there is
Opposition No. 91152662
20
no indication as to how much of the $3,000,000 opposer spent
on advertising expenditures and for what period of time, let
alone whether and/or how the advertising featured opposer’s
designation. Also, although Mr. Wexler stated that opposer
has used BLACKBELT TV since October 1998, such use for
twelve years in and of itself does not establish acquired
distinctiveness. As applicant points out at p. 15 of its
brief, “there is no documentary evidence, such as television
footage, promotion documents, promotional footage, a
snapshot image of any broadcast(s) showing the mark as
purportedly used in commerce by Opposer, broadcast records,
or additional testimonial evidence from any of his co-
employees, viewers or people who have worked in the cable TV
industry to corroborate Opposer’s claim ….” Mr. Wexler did
not provide any testimony about whether opposer's use is
substantially exclusive. In addition to opposer, applicant
has asserted it has used BLACKBELT TV; the Board has stated
in the case of Flowers Industries Inc. v. Interstate Brands
Corp., 5 USPQ2d 1580, 1588 – 1589 (TTAB 1987), that “long
and continuous use alone is insufficient to show secondary
meaning where the use is not substantially exclusive.” See
also Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222
USPQ 939, 940 – 941 (Fed. Cir. 1984) (“when the record shows
that purchasers are confronted with more than one (let alone
numerous) independent users of a term or device, an
Opposition No. 91152662
21
application for registration under Section 2(f) cannot be
successful, for distinctiveness on which purchasers may rely
is lacking under such circumstances.”) Additionally, Mr.
Wexler’s statement at paragraph 9 of his declaration that
“BLACKBELT TV has received considerable press in its
endeavor to launch a network to broadcast entertainment
programming … including articles in the Wall Street Journal,
The Hollywood Reporter, The New York Times, magazines such
as Maxim, Forbes, Esquire, TV Guide, and Men’s Journal,
among others,” is not persuasive; the articles have limited
probative value because they all indicate that opposer is
gearing up to provide a cable television channel, are from a
limited time period (2002 – 2003), are few in number and say
nothing about the services pleaded in the complaint and
which opposer relies on in claiming priority. Thus, for the
reasons set forth above, we find that opposer has not
established that its designation has acquired
distinctiveness prior to the filing date of applicant's
application. Because opposer cannot establish its priority,
a necessary element of the ground of likelihood of
confusion, opposer's priority and likelihood of confusion
claim is dismissed.
Non-use of Applicant’s Mark
We next consider opposer’s claim that applicant is not
offering and has never offered the services which are
Opposition No. 91152662
22
recited in its application. Opposer, in its main brief,
relies on (i) the district court’s finding that applicant
had not used its mark in commerce, maintaining “[t]his
ruling precludes the necessity of proving the Applicant did
not use their mark in commerce,” and (ii) the following
trial testimony of opposer’s president:
Q. Do you know what products they’re supposed to
be putting out?

A. No.

Q. Have you seen any television shows or
television channels produced by Metronome?

A. No.

Q. In your experience dealing with the cable
market, have you found that Metronome’s Black Belt
TV is producing anything for any cable network?

A. No.

Q. Do you have any reason to believe that
Metronome’s Black Belt TV is actually producing or
airing any sort of television product?

A. No.

In discussing its non-use claim, opposer did not address any
of the testimony or documentary evidence that applicant
placed in the record.
As the plaintiff in this proceeding, opposer bears the
burden of proof which encompasses not only the ultimate
burden of persuasion, but also the obligation of going
forward with sufficient proof of the material allegations of
the notice of opposition, which, if not countered, negate
Opposition No. 91152662
23
applicant’s right to a registration. See Sanyo Watch Co.,
Inc. v. Sanyo Elec. Co., Ltd., 691 F.2d 1019, 215 USPQ 833
(Fed. Cir. 1982). See also, Clinton Detergent Co. v.
Proctor & Gamble Co., 302 F.2d 745, 133 USPQ 520, 522 (CCPA
1962) (“[o]pposer … has the burden of proof to establish
that applicant does not have the right to register its
mark”).
In our December 20, 2007 order, we addressed the
question of whether the district court’s statement that
applicant “has been unable or unwilling to present any
evidence, beyond its CEO’s assertion, that the ‘Black Belt
TV mark was ever used’” has any claim or issue preclusive
effect in this case. We concluded that “the doctrine of
issue preclusion is inapplicable to opposer’s pleaded claim
that applicant ‘is not offering and has never offered’ the
involved services under the mark in applicant’s application”
because the district court’s finding was based on the word
mark BLACK BELT TV and not the word and design mark in the
involved application. December 20, 2007 order at 12 – 13.
We reiterated that conclusion in our September 30, 2008
order addressing opposer's request for reconsideration. Our
conclusion is the law of the case, and we will not revisit
our conclusion.17 Opposer is therefore left with the brief

17 Because the Board’s orders were issued well in advance of
trial, opposer was on notice prior to trial that it could not
Opposition No. 91152662
24
and obviously biased testimony of its president, Mr. Wexler,
set forth above. This evidence falls short of satisfying
opposer's burden of going forward with evidence supporting
the material allegations of its claim that applicant is not
offering and has never offered the services which are
recited in its application. Simply put, we are not
persuaded that applicant has not used its mark in commerce
simply because Mr. Wexler says he is not familiar with
applicant and its television programming services.
Opposer’s claim of non-use of applicant’s mark is
dismissed for failure of proof.
Fraud
The third ground for opposition is fraud in connection
with the filing of two statements alleging dates of first
use with the Office, one during the ex parte prosecution of
the application and one during the pendency of this
proceeding, in which applicant stated, under oath, that the
mark was used in connection with the services in the
application on various dates. According to opposer, the
mark was not used in connection with the services recited in
the application as of any of the dates alleged by applicant.
The Court of Appeals for the Federal Circuit, our
primary reviewing court, handed down In re Bose Corp., 530

rely on the finding of the district court, and that it would have
to submit evidence to substantiate its claim.

Opposition No. 91152662
25
F.3d 1240, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009), prior to
the time when the parties filed their briefs in this
proceeding. In Bose, the court made it clear that for a
fraud claim to be successful, a plaintiff must prove by
clear and convincing evidence that a defendant knowingly
made a false statement with the intent to deceive the USPTO.
Bose, 91 USPQ2d at 1941. It also set out the relevant
standard for proving fraud:
“Fraud in procuring a trademark registration or
renewal occurs when an applicant knowingly makes
false, material representations of fact in
connection with his application.” Torres v.
Cantine Torresella S.r.l., 808 F.2d 46, 48 [1
USPQ2d 1483] (Fed. Cir. 1986). … Indeed, “the
very nature of the charge of fraud requires that
it be proven ‘to the hilt’ with clear and
convincing evidence. There is no room for
speculation, inference or surmise and, obviously,
any doubt must be resolved against the charging
party.” Smith Int'l, Inc. v. Olin Corp., 209 USPQ
1033, 1044 (TTAB 1981).

Id. at 1939.
In support of its claim, opposer again relies on the
finding of the district court in the civil proceeding that
applicant “has been unable or unwilling to present any
evidence, beyond its CEO’s assertion, that the ‘Black Belt
TV’ mark was ever used ….” Opposer's notice of reliance,
decision at 2. As discussed above, this finding has no
issue preclusive effect in this proceeding and the law of
the case doctrine provides that we do not now find a
preclusive effect when we previously did not.
Opposition No. 91152662
26
Because opposer has not demonstrated that any
statements made in applicant's statements of use were false,
let alone proved to the hilt an intention by applicant to
deceive the USPTO, opposer's claim of fraud must fail. Its
claim must also fail because opposer has not established
that applicant’s stated reason for seeking to change its use
dates - that after retaining counsel and after counsel’s
investigation, applicant discovered its stated dates were
not accurate – is false and that applicant intended to
deceive the USPTO. The trial record includes evidence of
use in commerce earlier than the first use dates set forth
in applicant's original amendment to allege use, thus
establishing the basis for applicant’s desire to amend the
dates of use.
Opposer's fraud claim is dismissed.
DECISION: The opposition on the grounds of likelihood
of confusion, non-use and fraud is dismissed; and
applicant’s motion to amend its first use dates is denied.