Fishing Unlimited Production, Inc.v.Richard Johnson

Trademark Trial and Appeal Board

Sep 28, 2000

No. 92027719 (T.T.A.B. Sep. 28, 2000)

9/28/00
KRyan
Cancellation No. 27,719
Fishing Unlimited Production, Inc.
v.
Richard Johnson
Before Quinn, Wendel, and Bottorff, Administrative Trademark
Judges.
By the Board.
Introduction And Background
This case now comes up for consideration of respondent’s
October 5, 1998 motion for judgment on the pleadings which,
pursuant to the Board’s February 4, 1999 order we are treating
as a motion for summary judgment pursuant to Fed. R. Civ. P.
12(c).
Respondent Richard Johnson is the owner of Registration
No. 2,142,487 for the mark THE FISHING LINE in typed form.
Respondent’s registration, which issued on March 10, 1998,
covers “educational radio programs on the subject of fishing”
in class 41.1 The date of first use identified in the
registration is April 1, 1995.

1 The registration arose from application Serial No. 75/241,443, filed February 13,
1997.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
2
On May 18, 1998, Fishing Unlimited Productions, Inc.
petitioned to cancel respondent’s registration. As its sole
ground for cancellation, petitioner alleges likelihood of
confusion under Trademark Act Section 2(d), 15 U.S.C.
§1052(d). Specifically, petitioner alleges that it has
continuously used the marks THE FISHING LINE and THE FISHING
LINE WITH KEVIN MINEO throughout the western United States
since as early as May 2, 1996 in connection with petitioner’s
weekly talk radio program directed to fishing and related
topics, and that respondent’s mark, as used in connection with
educational radio programs on the subject of fishing, so
resembles petitioner’s marks as to be likely to cause
confusion, to cause mistake, or to deceive.2
In his answer to the petition to cancel, respondent
admits that he owns Registration No. 2,142,487, that said
registration issued on March 10, 1998, and that the
registration sets forth a date of first use in interstate
commerce of April 1, 1995. Respondent denies all other
essential allegations in the petition to cancel.
Additionally, respondent asserts as affirmative defenses that
petitioner has failed to state a claim upon which relief may
be granted, that petitioner has failed to state facts
sufficient to establish its standing to petition to cancel

2 Petitioner also has alleged “substantial common law rights and interest in its mark”
and “valuable goodwill” developed “through substantial advertising and promotion.”
In the petition to cancel, petitioner does not expressly allege priority of use,
fraud, or ownership of any U.S. registrations or applications for related marks.
3
respondent’s mark, and that respondent, not petitioner, has
priority of use in the asserted mark THE FISHING LINE. These
affirmative defenses form the bases for the motion now before
us.3
The Board initially considered respondent’s October 5,
1998 motion for judgment on the pleadings on February 4, 1999.
By order of that date, the Board indicated that respondent’s
October 5, 1998 motion would be treated as a motion for
summary judgment and also decided several other outstanding
contested motions in this proceeding. Specifically, the Board
granted respondent’s September 29, 1998 motion to extend time
to respond to petitioner’s discovery requests, denied
petitioner’s October 22, 1998 motion to amend the petition to
cancel to add a fraud claim, denied petitioner’s October 22,
1998 cross-motion for summary judgment on the proposed fraud
claim, set a schedule for supplemental briefing of
respondent’s October 5, 1998 motion under Fed. R. Civ. P. 56,
and allowed petitioner time to file a motion under Fed. R.
Civ. P. 56(f).
In response to the Board’s February 4, 1999 order,
respondent filed a supplemental brief on March 8, 1999 which
attached additional evidence and incorporated arguments and
evidence previously submitted by respondent on October 5, 1998
and November 12, 1998. Petitioner did not file a motion under

4
Fed. R. Civ. P. 56(f); however, on April 9, 1999, petitioner
filed its additional brief in opposition to respondent’s
motion for summary judgment. In that brief, petitioner sought
to incorporate by reference petitioner’s briefs of October 22,
1998 and December 7, 1998, both which were filed in opposition
to respondent’s motion for judgment on the pleadings. Then on
April 22, 1999, respondent filed a supplemental reply brief.
The Parties’ Arguments And Evidence
In support of his motion for summary judgment, respondent
argues that petitioner cannot succeed on its pleaded claim
under Section 2(d) of the Trademark Act because respondent is
the senior user of the mark THE FISHING LINE and because
petitioner has neither alleged, nor proven through affidavit
or documentary evidence or otherwise, that petitioner has
prior use of its mark THE FISHING LINE. Respondent further
contends that he is entitled to summary judgment in his favor
because there are no genuine issues of material fact in this
case and that respondent’s priority evidence is unrebutted.
Respondent has proffered into evidence a declaration and
supplemental declaration of respondent Richard Johnson with
attached exhibits.4 Mr. Johnson, as “creator, producer and

3 These technically are not affirmative defenses, but rather go to the sufficiency of
petitioner’s case.
4 We observe an October 1, 1998 declaration and a March 4, 1999 supplemental declaration
of Mr. Johnson. The following exhibits were attached to the first Johnson declaration:
5
show host” of THE FISHING LINE radio program states that the
decision to adopt the involved mark was made on April 1, 1995,
that pre-broadcast publicity and production activities under
the involved mark commenced in April, 1995, that the inaugural
broadcast of his radio show aired on May 6, 1995 on radio
station WGBB, that respondent’s radio program reaches
listeners within and outside the New York state border, and
that respondent in good faith began using the involved mark at
least as early as April 1, 1995 and has continued to use the
involved mark to the present.
As evidence of use of his mark in interstate commerce,
respondent submits with his November 12, 1998 brief a

Exhibit 1: photocopy of the involved registration, U.S. Reg. No. 2,142,487 for
the mark THE FISHING LINE.
Exhibit 2: photocopy of another registration owned by respondent, U.S. Reg.
No. 2,144,451 for a design of fishermen with fishing poles.
Exhibit 3-a: sample copy of a promotional poster for the first broadcast of
respondent’s radio talk show “starting, Saturday, May 6th”.
Exhibit 3-b: copy of April 21, 1995 and May 1, 1995 receipts for the sale of
flyers and posters to respondent “Richard Johnson The Fishing Line.”
Exhibit 3-c: copies of WGBB Liberty Broadcasting of New York Incorporated
invoices for radio air time issued to respondent for a “block show”, including
references to “FISHING LINE” as advertiser and several 1995 start dates, the
earliest of which was listed as “05-06-95.”
Exhibit 3-d: copy of June 8, 1995 invoice allegedly for respondent’s purchase
of letterhead business stamp bearing the concerned mark.
Exhibit 3-e: Letter dated October 1, 1998, from Bernard Spigner, Station
Manager of WGBB to respondent, stating range of broadcast signals of the WGBB
station reaching the tri-state area, extending from New Jersey shore
communities to Westchester County, New York and to Fairfield County,
Connecticut.
An audiocassette was submitted as an exhibit to the supplemental Johnson declaration,
which includes a recording of the inaugural radio broadcast of respondent’s THE FISHING
LINE radio talk show.
6
declaration of Benjamin Lloyd Mevorach, formerly Station
Manager for WGBB. Mr. Mevorach attests to personal knowledge
of the range of signal strength of WGBB broadcasts.
In opposition to respondent’s motion for summary
judgment, petitioner primarily argues that respondent has not
met his summary judgment burden, asserting that a genuine
issue of material fact exists as to the validity of
respondent’s registration and the date of first use of
respondent’s mark. Petitioner contends that respondent’s
actual date of first use remains undetermined and
unestablished by respondent’s own supporting evidence and
exhibits. Further, petitioner asserts that respondent’s
evidence of use is objectionable, uncorroborated, and should
be given little to no evidentiary weight. Petitioner has not
introduced any affidavits or documentary evidence in support
of its opposition to respondent’s summary judgment motion.5
Discussion And Conclusions
The Board has carefully considered the arguments,
submissions, and objections of both parties and the applicable
law in regard to respondent’s motion for summary judgment.
Based on the record now before us and for the reasons

5 We observe, however, that petitioner submitted a proposed amended petition to cancel
as an exhibit to its cross-motion for summary judgment. However, this is irrelevant
to our consideration of respondent’s motion herein in view of the Board’s prior
decision denying petitioner leave to amend its pleading.
7
discussed below, we must conclude that summary judgment is
appropriate in this case.
The purpose of summary judgment is to avoid an
unnecessary trial where additional evidence would not
reasonably be expected to change the outcome. See Pure Gold,
Inc. v. Syntex (U.S.A.) Inc., 730 F.2d 624, 222 USPQ 741 (Fed.
Cir. 1984). See also TBMP §528.01 and cases cited therein.
Generally, summary judgment is appropriate in cases where
the moving party establishes that there are no genuine issues
of material fact which require resolution at trial and that it
is entitled to judgment as a matter of law. Fed. R. Civ. P.
56(c).6 An issue is material when its resolution would affect
the outcome of the proceeding under governing law. See
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S. Ct. 2505
(1986); and Octocom Systems Inc. v. Houston Computers
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir.
1990).

6 Rule 56 of the Federal Rules of Civil Procedure is made applicable to proceedings
before the Trademark Trial and Appeal Board by 37 C.F.R. §2.116(a) (1989). Rule 56
provides in pertinent part:
(c) ... The judgment sought shall be rendered forthwith if the pleadings,
depositions, answers to interrogatories, and admissions on file, together with the
affidavits, if any, show that there is no genuine issue as to any material fact and
that the moving party is entitled to judgment as a matter of law....
....
(e) ... When a motion for summary judgment is made and supported as provided in this
rule, an adverse party may not rest upon the mere allegations or denials of the
adverse party's pleading, but the adverse party's response, by affidavits or as
otherwise provided in this rule, must set forth specific facts showing that there is
a genuine issue for trial. If the adverse party does not so respond, summary
judgment, if appropriate, shall be entered against the adverse party.
8
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); Olde Tyme Foods
Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
1992).
Where a motion for summary judgment is made and supported
in accordance with Fed. R. Civ. P. 56, it is incumbent on the
non-movant in a summary judgment proceeding to proffer
countering evidence sufficient to create a genuine factual
dispute. A dispute is genuine, only if, on the entirety of
the record, a reasonable jury could resolve a factual matter
in favor of the non-movant. See Octocom Systems Inc. v.
Houston Computers Services Inc., supra at 1786, citing, Sweats
Fashions v. Pannill Knitting Co., 833 F.2d 1560, 1562, 4
USPQ2d 1793, 1795 (Fed. Cir. 1987). The party opposing a
motion for summary judgment 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. See Barmag Barmer Maschinenfabrik AG
v. Murata Machinery, Ltd., 731 F.2d 831, 836, 221 USPQ 561,
9
564 (Fed. Cir. 1984). See also Pure Gold, Inc. v. Syntex
(U.S.A.), Inc., supra.
In this case, respondent has met his burden of proof for
establishing his entitlement to summary judgment. Respondent
submitted competent evidence of respondent’s pre-broadcast
publicity and production activities relative to his radio
program as early as April, 1995 and competent evidence that
his mark, THE FISHING LINE, was used in interstate commerce in
connection with a radio program broadcast on fishing-related
subjects, as early as May 6, 1995.
Inasmuch as respondent raised the issue of priority in
his motion for summary judgment, it is incumbent on petitioner
to show there is a genuine issue as to priority in this
proceeding.7 Based on the record now before us, it is our
conclusion that petitioner has failed to proffer countering
evidence sufficient to create a genuine factual dispute as to
respondent’s asserted use of his mark and as to priority. See
Octocom Systems Inc. v. Houston Computers Services Inc., supra
at 1786.
It is our view that petitioner’s arguments consist of
nothing more than mere criticisms of respondent’s evidence.

7 It is well established that likelihood of confusion under section 2(d) of the
Trademark Act cannot be recognized where one claimed to be aggrieved by that
confusion does not have a right superior to his opponent's. In this case as in all
cancellation proceedings founded on §2(d), petitioner must prove it has proprietary
rights in its pleaded marks to demonstrate likelihood of confusion, whether by
ownership of a registration, prior use of a technical "trademark," prior use in
advertising, prior use as a trade name, or whatever other type of use may have
developed a trade identity. See Otto Roth & Co., Inc. v. Universal Foods Corp., 640
F.2d 1317, 209 USPQ 40, 43, 44, 45 (CCPA 1981).
10
Further, petitioner disputes certain factual issues which are
immaterial to those raised and petitioner raises unwarranted
objections to respondent’s evidence of first use. Petitioner
has not presented any affidavit or documentary evidence to
rebut respondent’s asserted use in opposition to respondent’s
motion for summary judgment. Additionally, no evidence of
petitioner’s date of first use of petitioner’s mark was
introduced. Petitioner neither pleads, nor argues that it has
priority in the mark THE FISHING LINE.
Respondent has submitted evidence of activities in
connection with his radio program as early as April, 1995 and
evidence of use of the involved mark on the air during a May
6, 1995 broadcast. Any use by respondent during 1995, whether
in April, or May 1995, clearly precedes respondent’s filing
date of his application to register the involved mark and the
May 2, 1996 pleaded date of first use of petitioner’s mark.
Accordingly, even if we were to assume different dates of
first selection, first promotion, first radio broadcast in
interstate commerce of respondent’s mark, and first use as
recited in U.S. Reg. No. 2,142,487, these differences are
legally immaterial to the issue of priority in this case.
Moreover, we are not persuaded by petitioner’s contention that
differences between these asserted “first dates” casts a cloud
of general uncertainty over respondent’s evidence of use such
that all of respondent’s evidence should be disregarded. We
see no basis in the record for so doing. The simple
11
undisputed fact remains that each of these dates precedes the
earliest date upon which respondent is entitled to rely.
We reject as improper petitioner’s renewed arguments that
respondent is not entitled to judgment in his favor on the
grounds of alleged fraud and alleged false statements by
respondent during prosecution of application Serial No.
75/241,443, the application which eventually registered under
U.S. Reg. 2,142,487. In the Board’s February 4, 1999 order,
the Board already considered, and denied, petitioner’s motion
to amend the petition to cancel to add a fraud claim. The
Board also denied petitioner’s cross-motion for summary
judgment on that proposed fraud claim. Under the
circumstances, we decline to reconsider petitioner’s asserted
fraud and bad faith arguments.
Furthermore, we need not resolve the issue of whether
respondent’s precise date of first use was sometime in April,
1995 or in May, 1995. Nor must we determine the effect of
respondent’s pre-broadcast publicity and production activities
on respondent’s date of first use and priority. In deciding
a motion for summary judgment, the Board may not resolve an
issue of fact; it may only determine whether a genuine issue
of material fact exists. See Meyers v. Brooks Shoe Inc., 912
F.2d 1459, 16 USPQ2d 1055 (Fed. Cir. 1990).
While we agree with petitioner’s statement that the dates
of first use included in the involved registration are not
12
competent evidence of the date of first use of respondent’s
mark8, we view petitioner’s objections to respondent’s
evidence overall unwarranted and unsubstantiated. We find no
persuasive evidence of record which might cause us to question
the credibility of the declarants, Mr. Johnson and Mr.
Mevorach, the accuracy of the declarants’ statements, or the
accuracy of the evidence attached to the proffered
declarations. Nor do we find the exhibits attached to the
proffered declarations to be ambiguous or misleading. The
proffered declarations adequately describe and authenticate
these exhibits and there is nothing in these exhibits that
negates or contradicts the declarants’ statements.9
Accordingly, the Board finds, as a matter of law, that
there is no genuine dispute as to respondent’s use of the mark
THE FISHING LINE sometime in 1995 and at least as early as May
6, 1995. Inasmuch as petitioner has failed to introduce
evidence of the date of first use of its own mark and to rebut
the asserted prior use of respondent’s mark by contrary
evidence, we conclude that priority lies with respondent in
this case and there are no genuine issues of material fact in

8 Although respondent need not submit a status and title copy of his involved
registration U.S. Reg. 2,142,487 in order for us to consider that registration
herein, we cannot consider respondent’s Exhibit 2 (the photocopy of U.S. Reg. No.
2,144,451) inasmuch as a proper status and title copy of that design registration has
not been submitted. See Trademark Rules 2.122(b)(1) and (d)(2). See also TBMP §§703
and 704.
9 Although we find no merit in petitioner’s objections, we note that our decision to
grant summary judgment herein would be unchanged had we excluded from evidence
respondent’s Exhibit 3-d of the October 1, 1998 Johnson declaration (the copy of the
13
dispute that require trial for their resolution. Under the
circumstances, petitioner cannot prevail on its claim under
section 2(d) of the Trademark Act.
We grant respondent’s motion for judgment on the
pleadings which we have treated as a motion for summary
judgment and accordingly, grant summary judgment in favor of
respondent. See Fed. R. Civ. P. 12(c) and 56(c).
Judgment is hereby entered against petitioner and the
petition to cancel is dismissed with prejudice.
T. J. Quinn
H. R. Wendel
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board

business stamp receipt) and Exhibit 1-a of the supplemental Johnson declaration (the
audiocassette).