First Pacific Insurance Brokers, Inc.v.Kayvanfar Nader

Trademark Trial and Appeal Board

Mar 2, 2010

No. 91171202re (T.T.A.B. Mar. 2, 2010)

Mailed: March 2, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

First Pacific Insurance Brokers, Inc.
v.
Kayvanfar Nader
_____

Opposition No. 91171202
_____

Matthew A. Sumrow of the Law Office of Matt Sumrow for First
Pacific Insurance Brokers.

Kayvanfar Nader, pro se.
______

Before Holtzman, Walsh and Wellington, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Reconsideration
The Board, on June 24, 2008, issued a final decision
sustaining the opposition to register the mark 4ALL INSURANCE
SERVICES ("Insurance Services" disclaimed) for "insurance brokerage
and financial services, namely retirement planning" in Class 36.1
The Board found that applicant's mark is merely descriptive of his
services under Section 2(e)(1) of the Trademark Act. The Board

1 Serial No. 78632811, filed May 18, 2005, alleging a date of first use of
July 18, 1980 and a date of first use in commerce of July 18, 1985.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91171202
2
also found that to the extent that applicant alternatively alleged
that the mark has acquired distinctiveness under Section 2(f) of
the Act, there was no evidence of record to support that claim.
On July 23, 2008, applicant filed an uncontested motion for
relief from judgment under Fed. R. Civ. P. 60(b)(3) and (6).2
Inasmuch as the motion was filed within a month of the final
decision, and in view of the nature of applicant's arguments, we
construe the motion as one for reconsideration of this decision
under Trademark Rule 2.129(c). Nevertheless, whether considered
under the identified provisions of Federal Rule 60(b) or under
Trademark Rule 2.129(c) the result would be the same.
The premise underlying a motion for reconsideration under
Trademark Rule 2.129(c) is that, based on the evidence properly of
record and the applicable law, the Board erred in reaching the
decision it issued. To begin with, the motion may not be used to
introduce additional evidence. See TBMP § 543 (2d ed. rev. 2004).
Thus, we have not considered the website printout attached to
applicant's motion. Moreover, this printout, which relates to the
domain name "cyberfinancial.net," is not relevant to any issue in
this case.3 Nor will we consider arguments based on evidence which
was not properly of record.

2 The Board regrets the long delay in acting on this matter.

3 Applicant's argues based on this evidence that "some references the
court used as evidence is not correct," apparently objecting to the
Board's citation to In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791
Opposition No. 91171202
3
Furthermore, applicant for the most part merely reargues
points raised in his brief on the case which is not a proper basis
for reconsideration. Applicant continues to argue that the mark is
fanciful or at most suggestive and alternatively that the mark has
acquired distinctiveness. In addition, applicant continues to
assert that because he has registered the business name "4All
Insurance Services" with the County of Los Angeles, California,
"among other jurisdictions," opposer is prohibited from using the
name; and that opposer violated anti-cybersquatting laws and
various other laws that are not relevant and/or applicable to this
case.4
As we stated in the decision, applicant's registration of
"4All Insurance Services," as a business name is not relevant to
the question of whether applicant is entitled to register the term
as a trademark. The statute prohibits the registration of merely
descriptive marks. We add, moreover, that even assuming that
opposer is prohibited from using the term as a business name, it
would not defeat opposer's standing. That is, whether or not
opposer is entitled to use the term as a business name has no

n.3 (TTAB 2002), on p. 8, fn. 3 of the decision. Applicant's argument is
not understood. In re CyberFinancial.Net Inc. is not evidence in the
case, it is the name of a case. It is irrelevant whether the company
named in the title of the case actually exists or whether that domain name
is actually in use.

4 Applicant's claims of unfair competition and false designation of origin
are beyond the scope of the Board's jurisdiction. TBMP §102.01 (2nd ed.
rev. 2004).
Opposition No. 91171202
4
effect on opposer's right to use the term descriptively in
connection with its business. Applicant admitted, and by his
allegations of infringement acknowledged, that opposer is providing
the same or related services as applicant. Opposer's status as a
competitor is sufficient to establish opposer's standing. See
Eastman Kodak Co. v. Bell & Howell Document Management Products
Co., 23 USPQ2d 1878, 1879 (TTAB 1992) (where the ground is mere
descriptiveness, "the plaintiff may establish its standing
by...proving that it is engaged in the manufacture or sale of the
same or related products."), aff'd 994 F.2d 1569, 26 USPQ2d 1912
(Fed. Cir. 1993). As a competitor, opposer has an interest in
ensuring that any other competitor in the field does not attempt to
register a descriptive term. Registration would give applicant the
right to claim that "4all Insurance Services" used descriptively by
opposer in connection with the same or related services constituted
an infringement of applicant's mark, as applicant asserts here, and
applicant's competitors have "the right to be free from claims of
exclusive right by others and from harassment based on such
claims." Armour & Co. v. Organon, Inc., 245 F.2d 495, 114 USPQ
334, 338 (Rich, J., concurring) (CCPA 1957). See also Dena Corp.
v. Belvedere International Inc., 950 F.2d 1555, 21 USPQ2d 1047,
1051 (Fed. Cir. 1991) citing DeWalt, Inc. v. Magna Power Tool, 289
F.2d 656, 129 USPQ 275, 281 (CCPA 1961); and In re Gray Inc., 3
USPQ2d 1558, 1558 (TTAB 1987).
Opposition No. 91171202
5
Applicant also essentially argues that opposer did not carry
its burden of proof in this case. Although opposer did not
introduce any evidence of its standing, it was appropriate for the
Board to consider the admissions in applicant's answer for this
purpose, and we found based on such admissions that sufficient
facts regarding standing were established. See Lipton Industries,
Inc. v. Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185, 190
(CCPA 1982) ("the answers, which appellant, itself, placed in the
record, were properly considered by the board for any relevant
purpose..."). As to the merits of opposer's claim, we found that
the plain meaning of the mark, as confirmed by applicant's specimen
in the application, established that the mark is merely descriptive
of applicant's services.5 We see no reason to disturb these
findings.
Furthermore, the burden was on applicant to prove his claim
that the mark has acquired distinctiveness, and as we found in the
decision there was no evidence of record or at least properly of
record to support that claim.6 As to applicant's contention that

5 We note additionally that while specimens in the file of an application
are not evidence on behalf of the applicant unless they are properly
introduced at trial, they may be used as evidence against the applicant,
that is, as admissions against interest. See Trademark Rule 2.122(b)(2)
and TBMP § 704.04 (2d ed. rev. 2004).

6 Although applicant originally filed his application with a claim of
acquired distinctiveness based on a declaration of five-years' use,
applicant subsequently amended the application to delete that claim, and
the evidence was never reintroduced at trial.
Opposition No. 91171202
6
the mark has been in use since 1980, we further note that while the
file of an application may be of record in a Board proceeding by
operation of 37 CFR § 2.122(b), the allegation in an application of
a date of first use is not evidence on behalf of the applicant; a
date of use of a mark must be established by competent evidence.
Trademark Rule 2.122(b)(2). There was no such evidence of record.
As to applicant's argument that the examining attorney allowed
the mark for publication and registration, the Board is not bound
by decisions of examining attorneys. See In re Nett Designs Inc.,
236 F.3d 139, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); and In re
Sunmarks Inc., 32 USPQ2d 1470, 1472 (TTAB 1994). "The Board must
make its own findings of fact, and that duty may not be delegated
by adopting the conclusions reached by an examining attorney."
Sunmarks, supra at 1472.
After considering all of applicant's arguments, we are not
persuaded that there is any error in the decision.
Turning next to applicant's motion based on Rule 60(b)(3) and
(6), we find neither basis persuasive. Under Rule 60(b)(3) a
judgment can be set aside for "fraud (whether previously called
intrinsic or extrinsic), misrepresentation, or misconduct by an
opposing party." To warrant relief under this rule, the moving
party must demonstrate by clear and convincing evidence that the
adverse party engaged in fraud or other misconduct and that this
conduct prevented the moving party from fully and fairly presenting
Opposition No. 91171202
7
his case. See, e.g., Karak v. Bursaw Oil Corp., 288 F.3d 15 (1st
Cir. 2002); and General Universal Systems Inc. v. Lee, 71 USPQ2d
1769 (5th Cir. 2004). The purpose of Rule 60(b)(3) is to provide
relief from judgments that were unfairly obtained, not those which
are merely factually incorrect. See General Universal Systems Inc.
v. Lee, 71 USPQ2d 1769 (5th Cir. 2004).
Applicant argues generally that he is entitled to relief
"because of [opposer's] and its attorneys' misconduct and
misrepresentations." However, applicant has presented no evidence,
let alone clear and convincing evidence of misconduct. In fact, it
is not clear what misconduct or misrepresentation allegedly
occurred. If applicant is referring to the circumstances
surrounding opposer's registration of its domain name and opposer's
asserted violations of anti-cybersquatting laws, this conduct did
not prevent applicant from fairly presenting his case. Indeed,
these contentions were previously raised by applicant and addressed
by the Board and found to be irrelevant to the case. Thus, to
whatever extent there was misconduct in this regard, it was not the
cause of the entry of judgment against applicant.
Rule 60(b)(6) allows for "any other reason justifying relief
from the operation of judgment." Relief from judgment under Rule
60(b)(6) is available only in extraordinary circumstances and only
when the basis for relief does not fall within any of the other
subsections of Rule 60(b). See Ackermann v. United States, 340
Opposition No. 91171202
8
U.S. 193, 71 S.Ct. 209 (1950); and Fiskars Inc. v. Hunt
Manufacturing Co., 279 F.3d 1378, 61 USPQ2d 1851 (Fed. Cir. 2002).
Applicant has not demonstrated any extraordinary circumstances. To
the extent that applicant is making the argument, the fact that
applicant was not represented by counsel in this matter does not
provide a basis for 60(b)(6) relief.
In view of the foregoing, the motion for reconsideration is
denied, as is the motion for relief under Fed. R. Civ. P. 60(b),
and the Board's June 24, 2008 decision stands as issued.