No. 92060232 (T.T.A.B. May. 23, 2016)

Zip Local LPv.Zipages

Trademark Trial and Appeal BoardMay 23, 2016

No. 92060232 (T.T.A.B. May. 23, 2016)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: May 23, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Zip Local LP v. Zipages ___ Cancellation No. 92060232 ______ Brick G. Power of Durham Jones & Pinegar, P.C. for Zip Local LP. Zipages, pro se. ______ Before Cataldo, Adlin and Pologeorgis, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Zipages (“Respondent”) owns a registration for the mark shown below for “advertising services” (the “Registration”).1 In its petition for cancellation, Zip Local LP (“Petitioner”) alleges that it owns an application to register and intends to 1 Registration No. 3914047, issued February 1, 2011. Cancellation No. 92060232 2 use the mark ZIPPAGES for marketing services, and that the Office refused its application based on a finding that Petitioner’s mark would be likely to be confused with the mark in Respondent’s involved Registration. As grounds for cancellation, Petitioner alleges nonuse and abandonment, specifically alleging that Respondent “no longer has an active business in California” and “has not ever used” the involved mark. In its answer, Respondent does not specifically respond to each of the allegations in the petition for cancellation. Rather, Respondent makes the following affirmative statements: “Zipages Corporation is a California Corporation that is inactive and was closed by its owner and president, Slade Miller,” after Zipages Inc. was formed as a Delaware corporation. Respondent sought “to have the ownership of this trademark changed from Zipages Corporation to Zipages, Inc.,” but the Office “denied this request” because of this proceeding.2 “Zipages Inc. (and previously Zipages Corporation) have been in the process of developing its website located at the web address of www.zipages.net,” which is a “social networking website” that is “still under development” and “offers marketing services to businesses.” While the site is still under development, a partially functional beta version of it “is live.” Respondent’s Answer (paragraphs not numbered), 4 TTABVue.3 2 In fact, Respondent sought the requested change by filing a request to amend the Registration under Section 7 of the Act, without Petitioner’s consent, rather than an assignment of the mark from Zipages Corporation to Zipages Inc. 3 Citations to the record reference TTABVue, the Board’s online docketing system. Specifically, the number preceding “TTABVue” corresponds to the docket entry number(s), Cancellation No. 92060232 3 The Record and Relevant Evidentiary Rules The record includes the pleadings, the file of the involved Registration and little else. Indeed, neither party took any testimony and Respondent introduced no evidence whatsoever. While Petitioner filed a notice of reliance, 10 TTABVue (“Petitioner’s NOR”), it only contains information about Respondent, and thus Petitioner failed to introduce any evidence about itself or its alleged mark or pleaded application. In any event, through its notice of reliance, Petitioner introduced: a copy of the application underlying the involved Registration, which was automatically of record by operation of Trademark Rule 2.122(b); Internet printouts, one from October 2, 2015, which appear to depict Respondent’s page on “linkedin.com,” which indicates that Respondent is “expecting to launch in late 2011;” and an Internet printout indicating that when Respondent’s “zipages.net” page was accessed on October 2, 2015, it only included the notation “Oops! Internet Explorer could not find www.zipages.net.” As indicated, an involved application or registration is automatically of record under Trademark Rule 2.122(b). However, this is not so with respect to a plaintiff’s pleaded, or third-party, applications or registrations. Rather, those must be introduced through either a testimonial deposition, a declaration or affidavit (if the parties stipulate to the introduction of evidence in that manner) or a notice of and any number(s) following “TTABVue” refer to the page number(s) of the docket entry where the cited materials appear. Cancellation No. 92060232 4 reliance. Trademark Rule 2.122(d) and (e); TBMP § 704.03(b)(1) and (2). In this case, while Petitioner alleged in its pleading that it owns an application to register ZIPPAGES which was refused based on the involved Registration, it failed to prove the allegation because it did not introduce the trademark application or its file history into evidence, nor did Petitioner take any testimony to establish its ownership of its pleaded mark or application. Standing Standing is a threshold issue that must be proven, rather than merely alleged, in every inter partes case. Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 1028, 213 USPQ 185, 189 (CCPA 1982). See also Yamaha Int’l Corp. v. Hoshino Gakki Co., Ltd., 231 USPQ 926, 931 (TTAB 1986), aff’d, 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988). That is, Petitioner must introduce evidence which establishes its standing. See Sterling Jewelers Inc. v. Romance & Co., 110 USPQ2d 1598, 1602 (TTAB 2014). In order to prove its standing, Petitioner must establish that it has a “real interest,” i.e., a “personal stake,” in this proceeding, beyond that of a mere intermeddler. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999); Lipton Industries, 213 USPQ at 189. Petitioner could have established a personal stake in this proceeding by, for example, introducing evidence that it owns common law rights in its pleaded ZIPPAGES mark. Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (“Petitioner has established his common-law rights in the mark DESIGNED2SELL, and has thereby established his standing to bring this Cancellation No. 92060232 5 proceeding.”); Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1118 (TTAB 2009) (testimony that opposer uses its mark “is sufficient to support opposer’s allegations of a reasonable belief that it would be damaged …” where opposer alleged likelihood of confusion). Or, Petitioner could have introduced evidence that it owns its pleaded application which was refused as a result of the involved Registration. Lipton Industries, 213 USPQ at 189 (“Thus, to have standing in this case, it would be sufficient that [plaintiff] prove that it filed an application and that a rejection was made because of [defendant’s] registration); Tri-Star Marketing, LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB 2007) (“petitioner has standing to bring the petition for cancellation based on the fact that its application to register [its mark] was refused registration by the office under Section 2(d) based on a likelihood of confusion with respondent’s previously registered mark”). In fact, simply introducing evidence that it owns its pleaded application may have been sufficient under the circumstances of this case, even without evidence that the application was refused. Toufigh v. Persona Parfum Inc., 95 USPQ2d 1872, 1874 (TTAB 2010) (“evidence of such a refusal is not a requirement to establish standing. Rather, it is sufficient if the circumstances are such that it would be reasonable for a petitioner to believe that the existence of the respondent’s registration would damage him, e.g. … that the presence on the register of the respondent’s mark may hinder the petitioner in using or registering his mark.”). See also, Lipton Industries, 213 USPQ at 189 (“We regard the desire for a registration with its attendant statutory advantages as a legitimate commercial interest.”). Cancellation No. 92060232 6 However, as indicated, Petitioner failed to introduce any evidence about itself, its alleged mark or its alleged application.4 We may not find standing based on the allegations in the petition for cancellation or mere speculation. Evidence is required, but is absent here, and Respondent’s answer does not admit that Petitioner owns its pleaded mark or application. Melwani v. Allegiance Corp., 97 USPQ2d 1537, 1542- 43 (TTAB 2010) (“opposer does not have standing in this proceeding because there is neither an admission of standing by applicant nor record evidence that otherwise establishes opposer’s standing”). Accordingly, Petitioner has failed to establish its standing. Conclusion Because Petitioner failed to introduce any evidence about itself, its mark or its pleaded application, it has not established its standing. See e.g. Lumiere Productions, Inc. v. International Telephone and Telegraph Corp., 227 USPQ 892, 893 (TTAB 1985) (“There is not a scrap of evidence in the record concerning [opposer’s] use of ‘minicom’ as a trademark, or of its use of this term as part of its trade name, or of any commercial activities of this firm in the manufacture or sale of intercom systems … all of the evidence concerns [applicant’s] activities. None concerns [opposer’s]. Accordingly, [opposer] has not proved that it has any real interest in the controversy.”). 4 Petitioner’s identification of its pleaded application on the Electronic System for Trademark Trials and Appeals (“ESTTA”) coversheet submitted with its petition is not sufficient to make the application of record. United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1042 n.11 (TTAB 2014). We do not take judicial notice of applications or registrations. In re Jonathan Drew, Inc., 97 USPQ2d 1640, 1644 n.11 (TTAB 2011); UMG Recordings Inc. v. O’Rourke, 92 USPQ2d 1042, 1046 (TTAB 2009). Cancellation No. 92060232 7 Decision: The petition for cancellation is dismissed.