Vincent L. Cohranv.Kenneth Roxberry

Trademark Trial and Appeal Board

Sep 22, 2015

No. 91211915 (T.T.A.B. Sep. 22, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 22, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Vincent L. Cohran
v.
Kenneth Roxberry
_____

Opposition No. 91211915
_____

Annette P. Heller of Heller & Associates,
for Vincent L. Cohran.
Kenneth Roxberry, pro se.

_____

Before Quinn, Greenbaum and Masiello,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
This is an opposition between co-founders of a motorcycle riding club.
Vincent L. Cohran (“Opposer”) opposes registration of an application filed by
Kenneth Roxberry (“Applicant”) for the standard character mark LEGEND
RIDERS RIDING CLUB (RIDERS RIDING CLUB disclaimed) for
Opposition No. 91211915
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Club services, namely, promoting the interests of
motorcycle riders in International Class 35.1
I. Issues Before the Board
Preliminarily, we must determine what grounds and defenses have been tried by
the parties and are before us in this case. Suffice it to say that the record, together
with procedural deficiencies, hardly present a model of clarity.
In the Notice of Opposition, Opposer alleges two grounds for opposition: (1) that
Applicant was not the owner of the LEGEND RIDERS RIDING CLUB mark when
he filed the application, and thus the application is void ab initio pursuant to
Section 1 of the Lanham Act, 15 U.S.C. § 1051, and (2) priority and likelihood of
confusion with Opposer’s common law mark LEGEND RIDERS used “in connection
with arranging and organizing motorcycle riding events for members of Opposer’s
motorcycle riding club” pursuant to Section 2(d) of the Lanham Act, 15 U.S.C.
§ 1052(d).
The ESTTA cover sheet filed with the Notice of Opposition also lists Opposer’s
pending application Serial No. 85846290 for the mark LEGEND RIDERS RC and
Design as a basis for Opposer’s claims. However, Opposer did not mention this
application in the Notice of Opposition, or make a copy of the application file of
record in this proceeding. See Trademark Rule 2.122(e). The Board does not take
judicial notice of a plaintiff’s applications; they must be proved by competent
evidence. See, e.g., Beech Aircraft Corp. v. Lightning Aircraft Company Inc., 1

1 Application Serial No. 85825281 was filed on January 17, 2013, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as March 8, 2012.
Applicant seeks registration on the Principal Register.

Opposition No. 91211915
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USPQ2d 1290, 1293 (TTAB 1986) (“[W]e do not take judicial notice of application
and registration files that reside in the Patent and Trademark Office on the basis of
their mere identification in briefs, pleadings and evidentiary submissions.”).
Further, we do not take judicial notice of the current status of the pleaded
application because it was not properly made of record. Cf., L’Oreal S.A. v. Marcon,
102 USPQ2d 1434, 1436 n.6 (TTAB 2012); Nike Inc. v. WNBA Enters. LLC, 85
USPQ2d 1187, 1192 n.6 (TTAB 2007). While the ESTTA cover sheet forms part of
the pleadings, simply listing Opposer’s application on the ESTTA cover sheet does
not make it of record, and we have not considered it.2 See, e.g., Embarcadero
Technologies, Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1827 n.2, (TTAB 2013)
(“Although the content of the ESTTA cover sheet is read in conjunction with the
notice of opposition as an integral component, the mere mention of a ground therein
is insufficient.”) (internal citations omitted). Thus, Opposer’s Notice of Opposition
must be based solely on his claimed common law rights in the mark LEGEND
RIDERS, and Opposer cannot rely on his application as a basis for his standing to
maintain this proceeding.
In his answer, Applicant denied the salient allegations, and asserted ten
“affirmative defenses.” Most of these “affirmative defenses” are merely
amplifications of his denials (e.g., priority) or they have been waived because
Applicant failed to pursue them at trial (e.g., laches, waiver) See Krause v. Krause

2 Nonetheless, because Opposer also states that he intends to assign his pending
application to the club (20 TTABVUE 2), we direct Opposer’s attention to TMEP
§ 1201.02(c) (July 2015).
Opposition No. 91211915
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Publications, Inc., 76 USPQ2d 1904, 1906 n.2 (TTAB 2005). We consider below
Applicant’s “affirmative defenses” to the extent appropriate and necessary to reach
a decision on the merits.
In his brief, Opposer asserts for the first time a claim of fraud. This issue was
not pleaded, and fraud was not tried by the parties, either explicitly or impliedly.
Accordingly, we do not treat the pleadings to be amended pursuant to Fed. R. Civ.
P. 15(b) to include this claim.
The parties have filed trial briefs and, pursuant to the Board’s July 28, 2015
order,3 we have considered both parties’ corrective briefs as well as Opposer’s
supplemental reply brief.
II. Evidentiary Issues
Before turning to the merits of this proceeding, we sua sponte address several
evidentiary issues.
A. Requests for Admission (“RFAs”)
Pursuant to the Board’s November 4, 2013 order, discovery closed on May 29,
2014.4 On May 28, 2014, Opposer served on Applicant Opposer’s RFAs.5 Rather
than answering Opposer’s RFAs, on July 5, 2014, Applicant served on Opposer
“Applicant’s Request for Clarification and Admission,” and filed a copy thereof with
the Board.6 In the first paragraph of this document, Applicant states:

3 21 TTABVUE.
4 7 TTABVUE 1.
5 Opposer submitted his RFAs as Exhibit A to his Notice of Reliance. 13 TTABVUE 5.
6 12 TTABVUE.
Opposition No. 91211915
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I have been advised to not respond to Opposer’s request
for admissions as it references Federal Rules of Civil
Procedure and this is an issue/procedure dealing with the
United States Patent and Trademark Office, least wise
[sic] not until the Opposer responds to the following
Requests for Admission.7
The document then sets forth seven RFAs, referencing “my statement” and eight
attachments thereto.8 As Opposer’s attorney pointed out in her July 7, 2014 email to
Applicant, Fed. R. Civ. P. 36 applies to this proceeding, and Applicant was required
to answer Opposer’s RFAs.9 However, as Opposer’s attorney also points out,
Opposer was not required to respond to Applicant’s RFAs because Applicant served
them after discovery was closed.10
Because Applicant did not respond to Opposer’s RFAs, they are deemed admitted
by operation of Fed. R. Civ. P. 36(a)(3). Moreover, Applicant has not sought to
reopen his time to serve his responses or moved to withdraw his admissions. On the
other hand, because Applicant’s RFAs were untimely, having been served outside
the discovery period, Opposer was not required to respond, and Applicant’s RFAs
are not deemed admitted. Thus, the effects of each party’s failure to respond to the
other’s RFAs are different, to Applicant’s detriment.

7 12 TTABVUE 2.
8 Applicant did not submit his “statement” or any of the referenced attachments.
9 Opposer submitted the July 7, 2014 email as Exhibit B to Opposer’s Notice of Reliance. 13
TTABVUE 9.
10 Id.
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B. Attachments to Opposer’s Reply and Supplemental Reply Briefs
Opposer submitted, for the first time, evidence attached to his reply brief, and
his Declaration attached to his supplemental reply brief.11 Exhibits and other
evidentiary materials attached to a party’s brief can be given no consideration
unless they were properly made of record during the time for taking testimony. See,
e.g., Syngenta Crop Prot., Inc. v. Bio-Chek, LLC, 90 USPQ2d 1112, 1116 (TTAB
2009); Bass Pro Trademarks, LLC v. Sportsman’s Warehouse, Inc., 89 USPQ2d
1844, 1848 (TTAB 2008); see Trademark Rule 2.123(l), 37 C.F.R. § 2.123(l)
(“Evidence not obtained and filed in compliance with these sections will not be
considered.”). In addition, there is no written agreement between the parties
providing for testimony by declaration. See Trademark Rule 2.123(b), 37 C.F.R.
§ 2.123(b) (“[b]y written agreement of the parties, the testimony of any witness or
witnesses of any party, may be submitted in the form of an affidavit by such witness
or witnesses.”). Accordingly, we have given no further consideration to this evidence
or Opposer’s Declaration.12

11 16 TTABVUE 5-8. Exhibit A to Opposer’s Reply Brief comprises an email announcing the
January 10, 2013 election of Opposer as President and Applicant as Vice President of the
club, and an email from Applicant sent later that day in which he declines the position of
Vice President and resigns from the club. Exhibit B is a screen shot from the club’s
Facebook page.
12 We note that we would have reached the same result on the merits even if we had
considered the evidence and Opposer’s Declaration.
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III. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 CFR § 2.122(b), the file of the subject registration. In addition, the record
includes Opposer’s Notice of Reliance on his Requests for Admission.
Applicant did not submit evidence or testimony.
IV. Standing
Standing is a threshold issue that must be proven in every inter partes case. See
Lipton, 213 USPQ at 189 (CCPA 1982). To establish standing in an opposition, an
opposer must show that he has a “real interest” in the outcome of the proceeding;
that is, that he has a direct and personal stake in the outcome of the opposition. See
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Jewelers
Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed.
Cir. 1987).
Opposer may rely on his RFAs, which have been deemed admitted by Applicant,
to establish Opposer’s standing. See Fed. R. Civ. P. 36(a)(3). In particular, through
RFA No. 3, which reads as follows:
Vincent L. Cohran and Kenneth W. Roxberry were the
founders of the LEGEND RIDERS Riding Club which had
its first meeting on February 8, 2012 per your statement
attached to an email dated February 4, 2014 sent to the
Board and Counsel for Opposer,13

13 It is unclear whether this “statement” is the same as the one referenced above (see n.9).
In any event, neither this “statement” nor the February 4, 2014 email to which it is
attached has been filed in this proceeding, and the Board has no record of any such
documents. If Applicant did, in fact, send an email to the Board on February 4, 2014,
Applicant is advised that doing so does not make the email of record in this proceeding;
Opposition No. 91211915
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Opposer has established that Opposer and Applicant are co-founders of the Legend
Riders Riding Club. In addition, in his brief, Applicant affirmatively states that the
parties are co-founders of the club. “This is in reference to an opposition between
two parties, one that is the founder of a motorcycle riding club and the other a co-
founder of the motorcycle riding club.”14 As a co-founder of the Legend Riders
Riding Club, Opposer has shown that he is not a mere intermeddler, but has a real
interest, that is to say, “a direct and personal stake” in the outcome of this
proceeding. See Ritchie v. Simpson, 50 USPQ2d at 1027. Opposer therefore has
established his standing to oppose Applicant’s application.
V. Ownership Claim
Pursuant to Section 1(a)(1) of the Trademark Act, 15 U.S.C. 1051(a)(1), only
“[t]he owner of a trademark used in commerce may request registration of its
trademark….” Accordingly, only the owner of the mark may file an application. In
re Wella A.G., 787 F.2d 1549, 229 USPQ 274, 277 (Fed. Cir. 1986) (C.J. Nies
concurring) (“Under section 1 of the Lanham Act, only the owner of a mark is
entitled to apply for registration.”) (emphasis in original); Holiday Inn v. Holiday
Inns, Inc., 534 F.2d 312, 189 USPQ 630, 635 n.6 (CCPA 1976) (“One must be the
owner of a mark before it can be registered.”); In re Deister Concentrator Company,
Inc., 289 F.2d 496, 129 USPQ 314, 320 (CCPA 1961) (“Under section 1, only ‘The
owner of a trademark’ can apply for registration.”). Therefore, “[a]n application filed

although the parties may agree to serve each other by email, the Board does not accept
documents for filing by email. TBMP §§ 106.03 and 107 (June 2015).
14 18 TTABVUE 5.
Opposition No. 91211915
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by one who is not the owner of the mark sought to be registered is a void
application.” In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690 (TTAB 1991)
(citing In re Techsonic Industries, Inc., 216 USPQ 619 (TTAB 1982)). See also
Huang v. Tzu Wei Chen Food Co. Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir.
1988) (affirming Board’s holding that an application was void ab initio because the
applicant was not the owner of the mark on the filing date); Great Seats Ltd. v.
Great Seats Inc., 84 USPQ2d 1235, 1239 (TTAB 2007) (“In a use-based application
under Trademark Act Section 1(a), only the owner of the mark may file the
application for registration of the mark; if the entity filing the application is not the
owner of the mark as of the filing date, the application is void ab initio.”);
Trademark Rule 2.71(d) (“An application filed in the name of an entity that did not
own the mark as of the filing date of the application is void.”).
Just as Opposer was able to rely on Applicant’s deemed admissions to establish
Opposer’s standing to bring this proceeding, Opposer may rely on Applicant’s
deemed admissions to establish that Applicant was not the owner of the mark when
he filed the application. In particular, in Applicant’s admissions to RFA Nos. 1 and
2, Applicant admits that the club is the owner of the mark LEGEND RIDERS
RIDING CLUB:
RFA No. 1: “Page 9 of the Legend Riders Charter and By-
Laws as attached to your statement in an email dated
February 4, 2014 sent to the Board and Counsel for
Opposer, the COPYRIGHT/TRADEMARK STATEMENT
reads as follows: “The name LEGEND RIDERS Riding
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Club or LRRC and logos are the sole property of the
LEGEND RIDERS Riding Club ….”15
RFA No. 2: “The Legend Riders Charter and By-Laws was
signed by Vincent L. Cohran, Vice President, Chuck
Evans, Secretary and Kenneth W. Roxberry, President on
March 8, 2012.”16
In view of these admissions, Opposer has made a prima facie case that Applicant
was not the owner of the mark when he filed the application, and Applicant has not
rebutted this case. Although Applicant argues in his briefs that he is the owner of
the mark because he is a co-founder of the club, Applicant has presented no
evidence of ownership. And, while there undoubtedly are situations where co-
founders of a club are also co-owners of the mark under which the club operates,
there is no evidence that this is such a situation. To be clear, even though both
Opposer and Applicant agree that they are co-founders of the club, that does not, in
itself, mean that either of them is the owner of the mark. Again, through his
admissions to RFA Nos. 1 and 2, Applicant admits that the club is the owner of the
mark.
Decision: The opposition is sustained on the ground that Applicant was not the
owner of the mark when he filed his application. The application therefore is void ab
initio.17

15 13 TTABVUE 5. As noted above (see n.13), the Board has no record of the February 4,
2014 email or any attachments thereto.
16 Id.
17 As a result, we need not and do not reach the Section 2(d) ground.