Title Chaser LLCv.Robert Rosberg

Trademark Trial and Appeal Board

Mar 28, 2019

CANC (T.T.A.B. Mar. 28, 2019)

DUNN/JMM March 28, 2019 Cancellation No. 92069360 Title Chaser LLC v. Robert Rosberg Before Cataldo, Taylor, and Greenbaum, Administrative Trademark Judges. By the Board: This case comes before the Board for consideration of Petitioner’s motion, filed October 26, 2018, for partial judgment on the pleadings and Respondent’s motion, filed November 10, 2018, to amend his answer. Both motions are contested. RELEVANT FACTS On May 21, 2013, Registration No. 4339433 issued to Robert Rosberg (Respondent), for the standard character mark TITLE CHASE, with an alleged date of first use anywhere of January 10, 2012 and of first use in commerce of March 14, 2012 for: sport coats; sports bra; sports bras; sports caps and hats; golf gloves; sports jackets; sports jerseys; sports over uniforms; sports pants; sports shirts; sports shirts with short sleeves; sports vests in International Class 25. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 General Contact Number: 571-272-8500 General Email: TTABInfo@uspto.gov THIS ORDER IS NOT A PRECEDENT OF THE TTAB Cancellation No. 92069360 2 On August 15, 2018, Respondent filed a Trademark Act Section 8 declaration averring that the mark is in use in commerce on all of the goods listed in the existing registration. On August 23, 2018, Title Chaser LLC (Petitioner), filed a petition to cancel Registration No. 4339433 on the ground of abandonment and pleaded ownership of pending application Serial No. 87681742, for the standard character mark TITLE CHASER for apparel in Class 25, which has been refused based on Respondent’s registration. On October 1, 2018, Respondent filed his informal answer which did not admit or deny the 15 numbered allegations of the petition to cancel, but which “specifically denies these allegations and would show that [Respondent] has engaged in the bona fide use of the mark TITLE CHASE in the ordinary course of trade on a non-stop basis from the date of application through and including the present date.”1 The informal answer, in addition to this general denial, states, in part: 7. The fact that only golf caps and golf gloves bearing the mark TITLE CHASE have actually been used by Respondent in trade since registration, and not other products falling within International Class 025, such as coats, bras, jackets, jerseys, uniforms, pants, shirts, and vests, is immaterial. Petitioner’s burden is to show that the mark has not been used at all in the International Class for which the Registration was granted. Respondent has used the mark on two products falling within the appropriate class, and fully intends to use the mark on other products falling within International Class 025 in the future. Petitioner cannot meet his burden of proof to show abandonment or that the application was filed in bad faith.2 On October 4, 2018, following issuance of a Board order noting that Respondent’s 1 5 TTABVUE 2-3. 2 5 TTABVUE 4. Cancellation No. 92069360 3 answer had failed to include proof of service, Respondent filed an amended informal answer adding a statement that “[t]his Response is being amended solely to add a certificate of service showing that the original response was timely served on opposing counsel” and including the same statement that “only golf caps and golf gloves bearing the mark TITLE CHASE have actually been used by Respondent in trade since registration . . . .”3 On October 26, 2018, Petitioner filed its motion for partial judgment on the pleadings seeking cancellation of Registration No. 4339433 as to all listed goods except “golf caps and golf gloves.”4 On November 12, 2018, Respondent filed an opposition to entry of judgment on the pleadings and a motion to amend his answer. Respondent seeks to file a second amended answer because his “First Amended Response contains an erroneous statement of fact that requires correction, and also omits the exhibits that are referenced therein.”5 The accompanying second amended answer lists two additional items with which the registered mark has been used: 7. The fact that only golf caps, golf gloves, sport shirts and jerseys bearing the mark TITLE CHASE have actually been used by 3 8 TTABVUE 2-3. 4 Petitioner also seeks cancellation of the entire registration based on fraud, which Petitioner raises for the first time with its motion. Because Respondent was given no notice of a fraud claim by the petition to cancel, this unpleaded ground for judgment on the pleadings will be given no consideration. See Saint-Gobain Abrasives Inc. v. Unova Indus. Automation Sys. Inc., 66 USPQ2d 1355, 1360 (TTAB 2003). To the extent Petitioner may seek to amend the petition to cancel to add a fraud claim, Petitioner is advised that the fraud decision cited in its motion includes a discussion of fraudulent intent which no longer applies in Board proceedings. See In re Bose Corporation, 476 F.3d 1331, 91 USPQ2d 1938, 1940-41 (Fed. Cir. 2009) (discussing Medinol v. Neuro Vasx, Inc. 67 USPQ2d 1205 (TTAB 2003)). 5 11 TTABVUE 2. Cancellation No. 92069360 4 Respondent in trade since registration, and not other products falling within International Class 025, such as coats, bras, jackets, uniforms, pants and vests, is immaterial. Petitioner’s burden is to show that the mark has not been used at all in the International Class for which the Registration was granted. Respondent has used the mark on three products falling within the appropriate class, and fully intends to use the mark on other products falling within International Class 025 in the future. Petitioner cannot meet his burden of proof to show abandonment or that the application was filed in bad faith.6 Moreover, in opposition to the motion for judgment on the pleadings, Respondent argues that “Petitioner’s motion ignores the fact that both Respondent’s First and Second Amended Responses to Petition to Cancel further alleged that he retains an intent to use the Mark on the other goods identified in his application and registration, specifically, sport coats, sports bras, sports jackets, sports uniforms, sports pants, and sports vests.”7 On December 3, 2018, Petitioner filed its opposition to the motion to amend and its reply brief on the motion for judgment on the pleadings. In opposition to amendment, Petitioner points out that the second proposed answer does not admit or deny the allegations of the petition to cancel, and therefore is legally insufficient.8 Petitioner’s reply brief on the motion for judgment on the pleadings points out that Respondent does not dispute that his mark has not been used on all of the registered goods. 6 11 TTABVUE 6. 7 12 TTABVUE 2-3. 8 Petitioner contends the answer does not comply with “Section 311.01(a) of the TBMP.” Both parties are advised that the Trademark Trial and Appeal Board Manual of Procedure (2018), or TBMP, offers practical suggestions on practice before the Board, but is not a substitute for any statutes, rules or decisional law. See Barclays Cap. Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 1167 n.15 (TTAB 2017) and TMBP § 101.03. Cancellation No. 92069360 5 MOTION TO AMEND THE ANSWER Trademark Rule 2.115 and Fed. R. Civ. P. 15(a) encourage the Board to look favorably on motions to amend pleadings, stating that “leave shall be freely given when justice so requires.” In deciding whether to grant leave to amend, the Board may consider undue delay, prejudice to the opposing party, bad faith or dilatory motive, futility of the amendment, and whether the party has previously amended its pleadings. Embarcadero Techs., Inc. v. Delphix Corp., 117 USPQ2d 1518, 1523 (TTAB 2016). The primary purpose of the pleadings, under the Federal Rules of Civil Procedure, is to give fair notice of the claims or defenses asserted, and a party is allowed reasonable latitude in its statement of its claims and defenses. Ohio State Univ. v. Ohio Univ., 51 USPQ2d 1289, 1292 (TTAB 1999); Harsco Corp. v. Elec. Sci. Inc., 9 USPQ2d 1570, 1571 (TTAB 1988). With its opposition to amendment, Petitioner contends that the second amended answer does not admit or deny the allegations of the petition to cancel in accord with Fed. R. Civ. P. 8(b), the same defect present in the two earlier versions of the answer. Petitioner also contends that it is entitled to judgment with respect to the broader admission in Respondent’s earlier answer. While Respondent has been mistaken as to the requirements for registration, the Board disagrees that Respondent is bound by his first admission. Respondent now states plainly in his motion to amend that he made “an erroneous statement of fact” and narrows the scope of his admission of nonuse. Justice requires that Respondent be allowed to correct his error, and Petitioner remains free to seek information during discovery regarding Respondent’s Cancellation No. 92069360 6 assertion of use as to the remaining goods. Accordingly, Respondent’s motion to amend his answer is granted. The second amended answer is accepted as the operative answer, and, as discussed below, is construed as a general denial of the abandonment claim with respect to golf caps, golf gloves, sport shirts and jerseys, and as an admission of abandonment with respect to all other listed goods.9 MOTION FOR JUDGMENT ON THE PLEADINGS A motion for judgment on the pleadings under Fed. R. Civ. P. 12(c) is a test solely of the undisputed facts appearing in all the pleadings, supplemented by any facts of which the Board will take judicial notice. Kraft Group LLC v. Harpole, 90 USPQ2d 1837, 1840 (TTAB 2009). A judgment on the pleadings may be granted only where, on the facts as deemed admitted, there is no genuine issue of material fact to be resolved, and the moving party is entitled to judgment on the substantive merits of the controversy, as a matter of law. Id; Baroid Drilling Fluids Inc. v. Sun Drilling Prods., 24 USPQ2d 1048, 1049 (TTAB 1992). Motions for partial judgment on the pleadings are appropriate. Kraft Group LLC, 90 USPQ2d at 1840. Here, Petitioner seeks judgment on the pleadings as to its claim of abandonment with respect to those goods with which Respondent admits the mark has not been used. If it has been more than three years since the filing of an allegation of use (i.e., a use-based application, amendment to allege use, or statement of use, as the case may be), the allegation that the mark has never been used on the listed goods is 9 Respondent is advised that if Petitioner amends the petition to cancel, any future answer must comply with Fed. R. Civ. P. 8(b). See also Trademark Rule 2.114. Cancellation No. 92069360 7 sufficient to plead abandonment. See SaddleSprings Inc. v. Mad Croc Brands Inc., 104 USPQ2d 1948, 1952 (TTAB 2012); ShutEmDown Sports, Inc. v. Carl Dean Lacy, 102 USPQ2d 1036, 1042 (TTAB 2012). Furthermore, a claim for partial abandonment pleads that the mark has never been used on some of the listed goods, and those goods must be deleted from the registration. Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1435 (TTAB 2014); see Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1395 (Fed. Cir. 1990) (abandonment found where mark had never been used); Procter & Gamble Co. v. Sentry Chemical Co., 22 USPQ2d 1589, 1592 (TTAB 1992) (abandonment may be established by proving that a registrant is not using or has never used its mark on certain goods). Turning to the instant case, because the notice of allowance issued March 13, 2012, and Respondent was granted an extension, Respondent was allowed until March 13, 2013, or before the expiration of the deadline for filing the statement of use, to meet the requirements for the statement of use. Embarcadero Techs., Inc., 117 USPQ2d at 1524. Respondent’s statement of use was filed September 12, 2012 and accepted on April 18, 2013. With his second amended answer, Respondent admits that he has not used the mark in commerce with any of the goods listed in the registration except “golf caps, golf gloves, sport shirts and jerseys.” Because more than three years have passed since the filing of Respondent’s statement of use, Respondent has admitted that the registered mark has been abandoned as to the remaining listed goods. Cancellation No. 92069360 8 Accordingly, on the facts admitted, there is no genuine issue of material fact to be resolved as to abandonment of the listed goods except “golf caps, golf gloves, sport shirts and jersey,” and Petitioner is entitled to partial judgment as a matter of law on its claim that the mark has been abandoned as to all registered goods except “golf caps, golf gloves, sport shirts and jerseys.” With the grant of this motion, Registration No. 4339433 is limited to “golf caps, golf gloves, sport shirts and jerseys.”10 If Petitioner is successful in its abandonment claim against “golf caps, golf gloves, sport shirts and jerseys”, Registration No. 4339433 will be cancelled in its entirety. DISCOVERY REGARDING USE IS RELEVANT TO ABANDONMENT CLAIM The Board notes that Respondent has argued in each of his answers that his Trademark Act Section 8 filing (Section 8) is sufficient to defeat the claim of abandonment based on nonuse. The Section 8 filing is required to maintain the registration, which otherwise will be cancelled automatically by the USPTO. See Trademark Rules 2.160-2.166. The Section 8 filing does not equate to evidence of use in an inter partes proceeding, and therefore is not sufficient to prove that Respondent’s mark was not abandoned. In addition, the per curiam opinion from the Fifth Circuit cited by Respondent does not support a different result. As has often been stated, each case is determined upon its own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). The Fifth Circuit opinion, however, does not set forth the facts on which the court concluded that “the district 10 The registration will be amended in due course. Cancellation No. 92069360 9 court did not err in concluding that there was an inadequate basis for cancelling the trademark because of the affidavit of use filed pursuant to 15 U.S.C.A. § 1058(a).” Maltina Corp. v. Cawy Bottling Co., 491 F.2d 1391 (5th Cir. 1974). Respondent also has argued that nonuse as a separate claim is not available against a registration more than five years old. The Board agrees. See Maids to Order of Ohio Inc. v. Maid-to-Order Inc., 78 USPQ2d 1899, 1906 n.6 (TTAB 2006) (“[W]here as here, MTO’s registration is incontestable, MTO-Ohio may not challenge the registration on the ground that the mark was not used in commerce.”). However, abandonment, of which nonuse is an essential element, remains available throughout the life of a registration. Trademark Act Section 14(3). The nature and extent of Respondent’s use of his mark is highly relevant to the pleaded claim of abandonment, and thus is an appropriate subject of discovery. PROCEEDINGS RESUMED Proceedings herein are resumed. Disclosure, discovery, and trial dates are reset as follows: Expert Disclosures Due 8/11/2019 Discovery Closes 9/10/2019 Plaintiff’s Pretrial Disclosures Due 10/25/2019 Plaintiff’s 30-day Trial Period Ends 12/9/2019 Defendant’s Pretrial Disclosures Due 12/24/2019 Defendant’s 30-day Trial Period Ends 2/7/2020 Plaintiff’s Rebuttal Disclosures Due 2/22/2020 Plaintiff’s 15-day Rebuttal Period Ends 3/23/2020 Plaintiff’s Opening Brief Due 5/22/2020 Defendant’s Brief Due 6/21/2020 Plaintiff’s Reply Brief Due 7/6/2020 Request for Oral Hearing (optional) Due 7/16/2020 Cancellation No. 92069360 10 Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is taken and introduced out of the presence of the Board during the assigned testimony periods. The parties may stipulate to a wide variety of matters, and many requirements relevant to the trial phase of Board proceedings are set forth in Trademark Rules 2.121 through 2.125. These include pretrial disclosures, matters in evidence, the manner and timing of taking testimony, and the procedures for submitting and serving testimony and other evidence, including affidavits, declarations, deposition transcripts and stipulated evidence. Trial briefs shall be submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at final hearing will be scheduled only upon the timely submission of a separate notice as allowed by Trademark Rule 2.129(a).