Vartan Khazadianv.Triple B Construction Inc.

Trademark Trial and Appeal Board

Feb 16, 2017

No. 92063123 (T.T.A.B. Feb. 16, 2017)

Baxley Mailed: February 16, 2017 Cancellation No. 92063123 Vartan Khazadian v. Triple B Construction Inc. Before Taylor, Masiello, and Hightower, Administrative Trademark Judges. By the Board: Triple B Construction Inc. (“Respondent”) obtained a registration on the Supplemental Register for the mark HANDI HOOK in standard characters for “Coated metal all-purpose hook with handle that fits over door knobs and/or the interior above-door hanger in any motor vehicles and is used to carry or hang shopping bags, dry cleaned or laundered clothing, and miscellaneous household items” in International Class 6.1 Vartan Khazadian (“Petitioner”), appearing pro se, filed a petition to cancel Respondent’s registration. The ESTTA cover form of the petition to cancel indicates 1 Registration No. 3238468, issued May 1, 2007, based on an application filed October 30, 2004, and alleging October 2006 as the date of first use anywhere and as the date of first use in commerce. The registration includes a disclaimer of HOOK. 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 This decision is not a precedent of the Trademark Trial and Appeal Board. Cancellation No. 92063123 2 that Petitioner seeks cancellation on the ground of abandonment under Trademark Act Section 45, 15 U.S.C. § 1127. The entire text of the petition to cancel is as follows: 1) I am entitled to relief and thus filing this petition for cancellation of Trademark registration # 3238468 because the owner of the mark Handi Hook, is not in lawful use of this mark or product in commerce today. 2) The specimen that the owner of this mark supplied to the Commissioner of Trademarks, on March 16, 2013, in support of its continued registration, is no longer found in commerce. 3) The registrant’s mark and product are not able to be located for sale anywhere on the internet. 4) The registrant’s mark and product are not able to be located for sale in retail establishments. 5) The registrant’s mark and product are not able to be located for sale in mail order catalogs. 1 TTABVUE 3. Respondent, in its answer, denied the salient allegations of the petition to cancel. 4 TTABVUE 2-3. This case now comes up for consideration of Respondent’s motion (filed November 3, 2016) for judgment on the pleadings and, alternatively, motion for summary judgment. The motion has been fully briefed. Respondent’s motion was filed between the close of discovery and the due date for Petitioner’s pretrial disclosures. The motion for judgment on the pleadings is based on an allegation of failure to state a claim upon which relief can be granted. Although the Board prefers that an allegation of failure to state a claim be raised through a motion to dismiss under Fed. R. Civ. P. 12(b)(6) filed prior to, or concurrently with a defendant’s answer (see Fed. R. Civ. P. 12(b); TBMP § 503.01), such an allegation may also be raised by a motion for judgment on the pleadings filed prior to the deadline Cancellation No. 92063123 3 for pretrial disclosures for the first testimony period, as originally set or as reset.2 See Fed. R. Civ. P. 12(h)(2); TBMP § 504.01. To state a claim upon which relief can be granted, Petitioner need only allege such facts which, if proved, would establish that Petitioner is entitled to the relief sought; that is, (1) Petitioner has standing to bring the proceeding, and (2) a valid statutory ground exists for denying registration or cancelling an existing registration. See Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007). The starting point for a standing determination in a cancellation proceeding is Trademark Act Section 14, 15 U.S.C. Section 1064, which provides that “[a] petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged ... by the registration of a mark on the [P]rincipal [R]egister.” To have standing, a plaintiff must plead facts sufficient to indicate that he has a real interest in the proceeding, i.e., a personal interest in the outcome of the proceeding, and a reasonable basis for a belief of damage. See, e.g., Universal Oil Prod. Co. v. Rexall Drug & Chem. Co., 463 F.2d 1122, 1123, 174 USPQ 458, 459 (CCPA 1972). In the petition to cancel, Petitioner has pleaded merely a series of allegations which support his assertion that Respondent’s involved mark is not currently in use. Petitioner has failed to set forth any basis for asserting that he believes that he will 2 To the extent that either party has relied upon matters outside of the pleadings in connection with the motion for judgment on the pleadings those matters have received no consideration. See TBMP § 503.04. Such matters, however, are considered in connection with the alternative motion for summary judgment. Cancellation No. 92063123 4 be damaged as a result of the continued registration of Respondent’s mark. Therefore, Petitioner has failed to plead his standing to maintain this proceeding. Regarding whether Petitioner has pleaded a valid ground for cancelling the registration at issue, Federal Rule of Civil Procedure 8(a)(2) requires that a pleading contain a “short and plain statement of the claim showing that the pleader is entitled to relief.” Rule 8(a)(2) does not require detailed factual allegations, but requires more than labels, conclusions, formulaic recitations of the elements of a cause of action, and naked assertions. See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). Indeed, “a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Id. (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged. Ashcroft, 556 U.S. at 678. The plausibility standard is not akin to a “probability requirement,” but it asks for more than a sheer possibility of the allegations asserted. Id. Indeed, a plaintiff need not allege specific facts that would establish a prima facie case for the claim(s) asserted. See Bell Atlantic Corp., 550 U.S. at 547 (citing Swierkiewicz v. Sorema N. A., 534 U.S. 506, 508 (2002)). In the context of Board inter partes proceedings, a plaintiff need only allege enough factual matter to suggest that its claim is plausible and to “raise a right to relief above the speculative level.” Bell Atlantic Corp., 550 U.S. at 555-56. Although the Board, in deciding a motion for judgment on the pleadings on the ground of failure Cancellation No. 92063123 5 to state a claim, must accept as true all factual allegations in the complaint, it is not bound to accept as true a legal conclusion couched as a factual allegation. Id. at 555. Regarding the pleaded abandonment claim, a mark is abandoned “[w]hen its use has been discontinued with intent not to resume such use. … Nonuse for 3 consecutive years shall be prima facie evidence of abandonment.” Trademark Act Section 45, 15 U.S.C. § 1127. A mark is in “use in commerce” on goods when “it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and ... the goods are sold or transported in commerce.”3 Id. An abandonment claim requires a pleading of ultimate facts pertaining to the alleged abandonment. See Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1930 (TTAB 2014); Otto Int’l Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007). To adequately plead such a claim, a plaintiff must recite facts which, if proven, would establish at least three consecutive years of nonuse, or alternatively, a period of nonuse less than three years coupled with proof of intent not to resume use. See id. Petitioner cannot rely on nonuse that precedes the February 6, 2007 filing of the amendment to allege use in support of the application for the challenged registration in alleging abandonment. See Consolidated Cigar Corp. v. Rodriguez, 65 USPQ2d 1153, 1155 (TTAB 2002). 3 “The word ‘commerce’ means all commerce which may lawfully be regulated by Congress.” Trademark Act Section 45. Cancellation No. 92063123 6 In the petition to cancel, Petitioner fails to set forth a sufficient claim of abandonment. In particular, Petitioner merely alleges current nonuse and does not allege facts which would show either three consecutive years of nonuse or discontinuation of use with intent not to resume use. Although Petitioner alleges that Respondent no longer uses the mark in the manner shown on the specimen submitted by Respondent on March 16, 2013,4 a specimen of use is merely intended to show the mark as used on or in connection with the goods or services (Trademark Rule 2.56(a)) and in no way limits a registrant to a manner of use of the registered mark shown in a particular specimen. Further, even if we assume that the identified goods sold under Respondent’s involved mark “are not able to be located” on the internet, in retail establishments, and in mail order catalogs, as Petitioner alleges in the petition to cancel , these allegations would not establish three consecutive years of nonuse or discontinuation of use with intent not to resume use. Based on the foregoing, we find that Petitioner has failed to state a claim upon which relief can be granted. Respondent’s motion for judgment on the pleadings is therefore granted. In the interest of completeness, we have also considered Respondent’s motion in the alternative for summary judgment on the abandonment claim on the ground that Respondent has not discontinued use of the involved mark. In support thereof, Respondent contends that it has had continuous sales of the identified goods under the mark HANDI HOOK since 2005. In particular, Respondent contends that it has 4 The USPTO file for the involved registration indicates that Respondent filed the Section 8 declaration and supporting specimen of use in connection with that registration on March 16, 2013. Cancellation No. 92063123 7 used the mark in product shipments to customers, in point-of-sale displays, in television commercials, and on its website; and that use of its mark in the region in which its principal operations are based is sufficient to avoid abandonment. Based on the foregoing, Respondent contends that there is no genuine dispute that it never discontinued use of the mark and therefore asks that summary judgment be entered in its favor. As evidence in support of the motion for summary judgment, Respondent submitted the affidavit of its president, Philip E. Blackburn (7 TTABVUE 14-15), who avers that: (1) Respondent began selling the identified goods under the mark HANDI HOOK in 2005 in College Station, Texas; (2) in each year since 2005, Respondent has sold approximately 100 of the identified goods under the mark; (3) since 2005, Respondent has delivered goods sold under the mark HANDI HOOK directly to customers in Texas, Louisiana, and Kansas; (4) all packages for sales of the identified goods sold under the mark have included the mark on the exterior of the packaging; (5) each of the identified goods sold under the mark HANDI HOOK which are shipped to customers has an affixed tag that includes the mark; (6) the mark appears on point- of-sale displays in three dry cleaning establishments in Texas; (7) in 2011, Respondent engaged Media Corp. Advertising & Distribution (“Media Corp.”) to provide television advertising spots for the involved goods sold under the mark HANDI HOOK, which ran in California, Florida, New Jersey, and Texas in 2011-12, and to process orders for those goods through a website referenced in those advertising spots; and (8) the identified goods sold under the mark are available Cancellation No. 92063123 8 through the website www.handihook.net. Respondent’s exhibits in support of its motion include (1) a summary of Respondent’s annual sales under the mark HANDI HOOK (7 TTABVUE 21); (2) photographs of point-of-sale displays which show the mark near the identified goods (7 TTABVUE 23-24); (3) photographs of the mark on a tag affixed to one of the identified goods (7 TTABVUE 26 and 28); (4) a photograph showing the mark on a box used in shipping the identified goods (7 TTABVUE 28); (5) a copy of a tentative schedule (dated October 25, 2011) prepared by Media Corp. for television advertising for the mark HANDI HOOK (7 TTABVUE 30-51); and (6) an excerpt from Respondent’s current website www.handihook.net (7 TTABVUE 53- 54).5 In response, Petitioner contends that his application was refused registration based on Respondent’s involved registered mark;6 that, although Respondent stated in discovery that it did not know when it created its current website, publicly available information shows that Respondent did not create its current website until May 17, 2016, i.e., after the commencement of this proceeding; that, during discovery, Respondent stated that it had no documents to produce in response to Petitioner’s request for information concerning distributors, resellers or retail establishments to 5 The copy of the excerpt from Respondent’s website does not include the source from which it was accessed, i.e., the URL, and the date on which it was accessed. Accordingly, that excerpt is not properly before the Board. See Trademark Rule 2.122(e)(2); Safer Inc. v. OMS Invs. Inc., 94 USPQ2d 1031, 1039 (TTAB 2010). 6 Had Petitioner pleaded that his application for a particular mark was refused registration on the ground of likelihood of confusion with Respondent’s registered mark, that could have been an adequate pleading of standing herein. See Empresa Cubana del Tabaco v. General Cigar Co., 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (plaintiff’s application refused based on defendant’s registrations); TBMP § 309.03(b). Cancellation No. 92063123 9 whom Respondent ships the identified goods sold under the mark HANDI HOOK (9 TTABVUE 10); that Respondent otherwise refused to respond to many of Petitioner’s discovery requests; and that Respondent did not produce any documents dated after 2011. Based on the foregoing, Petitioner asks that the Board deny Respondent’s motion. Petitioner’s exhibits include: (1) a copy of an excerpt from Respondent’s website accessed September 4, 2016 (8 TTABVUE 8-9); (2) a copy of a whois.com search in connection with Respondent’s domain name handihook.net (8 TTABVUE 10);7 and (3) Respondent’s responses to Petitioner’s discovery requests8 and the documents that Respondent produced in discovery (8 TTABVUE 12-54, 9 TTABVUE 4-46). Petitioner did not submit a declaration which points to any evidentiary conflict in the record. In reply, Respondent contends that Petitioner has selectively picked through Respondent’s discovery responses in trying to manufacture a genuine dispute of material fact; that even if Respondent did not create its current website until after the commencement of this proceeding, the date on which Respondent created that website has no bearing on the issue of abandonment; and that Respondent produced documents which show sales of the identified goods under the mark HANDI HOOK from 2005 to present. 7 The website excerpts that Petitioner submitted do not include the source from which they were accessed, i.e., the URL, and are therefore not properly before the Board. See Trademark Rule 2.122(e)(2); Safer Inc., 94 USPQ2d at 1039. 8 Petitioner served one combined set of discovery requests in which he mixed interrogatories and document requests. Cancellation No. 92063123 10 Summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c). The party moving for summary judgment has the initial burden of demonstrating that there is no genuine issue of material fact remaining for trial and that it is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1987); Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). The nonmoving party must be given the benefit of all reasonable doubt as to whether genuine issues of material fact exist, and the evidentiary record on summary judgment, and all inferences to be drawn from the undisputed facts, must be viewed in the light most favorable to the nonmoving party. See Opryland USA, Inc. v. Great American Music Show, Inc., 970 F. 2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). When the moving party’s motion is supported by evidence sufficient to indicate that there is no genuine issue of material fact, and that the moving party is entitled to judgment,9 the burden shifts to the nonmoving party to demonstrate the existence 9 Fed. R. Civ. P. 56(c)(1) states: A party asserting that a fact cannot be or is genuinely disputed must support the assertion by: (A) citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for purposes of the motion only), admissions, interrogatory answers, or other materials; or (B) showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact. Trademark Rule 2.127(e)(2) states: Cancellation No. 92063123 11 of specific genuinely-disputed facts that must be resolved at trial. The nonmoving party may not rest on the mere allegations of its pleadings and assertions of counsel, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine issue of material fact for trial. In general, to establish the existence of disputed facts requiring trial, the nonmoving party “must point to an evidentiary conflict created on the record at least by a counterstatement of facts set forth in detail in an affidavit by a knowledgeable affiant.” Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 941, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990). As a defendant moving for summary judgment in its favor on the ground of abandonment, Respondent has the initial burden of establishing that there is no genuine dispute that its use of the involved mark has not been discontinued or, if such use has been discontinued, that there is no genuine dispute that it has no intent not to resume such use. See Trademark Act Section 45, 15 U.S.C. § 1127. If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it would have the burden of proof at trial, judgment as a matter For purposes of summary judgment only, the Board will consider any of the following, if a copy is provided with the party’s brief on the summary judgment motion: written disclosures or disclosed documents, a discovery deposition or any part thereof with any exhibit to the part that is filed, an interrogatory and answer thereto with any exhibit made part of the answer, a request for production and the documents or things produced in response thereto, or a request for admission and any exhibit thereto and the admission (or a statement that the party from which an admission was requested failed to respond thereto). Cancellation No. 92063123 12 of law may be entered in favor of the moving party. See Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. at 322-23. Respondent has met its initial burden of establishing that there is no genuine dispute of material fact that it did not discontinue use of the mark HANDI HOOK following the February 6, 2007 filing of the amendment to allege use. Respondent has established, through the declaration of Mr. Blackburn, that Respondent began selling the identified goods under the mark HANDI HOOK in 2005 in College Station, Texas; that, in each year since 2005, Respondent has sold approximately 100 of the identified goods under the mark; and that, since 2005, Respondent has delivered goods sold under the mark HANDI HOOK directly to customers in Texas, Louisiana, and Kansas. Mr. Blackburn's declaration is internally consistent and not characterized by uncertainty. See Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1736 (TTAB 2001). As such, we find his declaration credible and persuasive. Although Petitioner challenges Respondent’s testimony, he fails to show the existence of a genuine dispute as to any material fact. To begin with, Respondent need not have a website to have ongoing use of its mark in commerce. Petitioner also asserts that, in response to one of his discovery requests, Respondent stated that it has no documents which identify retail establishments, distributors or resellers of the involved goods sold under the mark HANDI HOOK. However, Respondent need not use retail establishments, distributors or resellers to have ongoing use of its mark in commerce. Cancellation No. 92063123 13 Likewise, Petitioner’s assertion that Respondent’s failure to respond in full to his discovery requests “shows that he has abandoned use of his mark in commerce” is incorrect. 8 TTABVUE 5. If Petitioner believed that any of Respondent’s discovery responses were improper, his remedy was to file a motion to compel discovery after having made a good faith effort to resolve the parties’ discovery dispute. See Trademark Rule 2.120(f)(1); TBMP § 523. If Petitioner believed that he could not respond to Respondent’s motion without obtaining further discovery from Respondent, his remedy was to file a motion to take discovery under Fed. R. Civ. P. 56(d) prior to filing his brief in response to the motion for summary judgment. See TBMP § 528.06. Petitioner further contends that, in discovery, Respondent did not “produce any documents or pictures that prove [it] is involved in the current use of [its] mark in commerce. No documents or pictures had current dates. ... In fact, the most current date on any document that [Respondent] supplied was dated in 2011.” A review of Respondent’s discovery responses and documents produced in discovery indicates that photographs showing the mark on shipping packaging, tags affixed to the goods, and point-of-sale displays are undated and that the only dated documents in connection with specific transactions are from 2011. However, in response to Petitioner’s discovery request where he sought annual sales and advertising figures, Respondent also provided a summary of annual sales figures between January 2005 Cancellation No. 92063123 14 and September 19, 2016, broken down into annual sales by Briarcrest Cleaners,10 “Individual/Retail,”11 and Media Corp.12 Such annual sales range from 40 in 2010 to 170 in 2016. While Respondent’s annual sales are relatively small, there is no rule of law that the owner of a trademark must reach a particular level of success, measured either by the size of the market or by its own level of sales, to avoid abandoning a mark. See Person’s Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1481-82 (Fed. Cir. 1990). Based on the foregoing, we find that Petitioner has failed to present evidence which would create a genuine dispute of material fact as to whether Respondent discontinued use of the involved mark for the identified goods. In view thereof, Respondent’s motion for summary judgment is granted. In sum, Respondent’s motion for judgment on the pleadings and its alternative motion for summary judgment are both granted. The petition to cancel is dismissed with prejudice. 10 In his declaration, Mr. Blackburn avers that Respondent provided point-of-sale displays to “three dry cleaning establishments ... in Bryan, Texas and College Station, Texas” and that Respondent provides the identified goods under the involved mark “to the dry cleaners for these point-of-sale transactions.” 7 TTABVUE 15. 11 In his declaration, Mr. Blackburn avers that “[s]ince 2005,” Respondent has delivered the identified goods under the mark HANDI HOOK “directly to customers in Texas, Louisiana and Kansas.” 7 TTABVUE 14. 12 In his declaration, Mr. Blackburn avers that, in 2011, Respondent engaged Media Corp. to provide television advertising spots for the involved goods sold under the mark HANDI HOOK which ran in California, Florida, New Jersey, and Texas in 2011-12, and to process orders for those goods through a website referenced in those advertising spots. 7 TTABVUE 15.