Get It In Writing Inc. (Ariz. Corp.)v.IQ in Tech, Inc. and Get It In Writing, Inc. (Fl. Corp.)

Trademark Trial and Appeal Board

Oct 30, 2008

No. 92046274 (T.T.A.B. Oct. 30, 2008)

Mailed: October 30, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Get It In Writing Inc. (Arizona Corporation)
v.
IQ in Tech, Inc.
and
Get It In Writing, Inc. (Florida Corporation)1
_______

Cancellation No. 92046274
to
Registration No. 3116100

_______

Daniel P. Keller, Pro Se as president and CEO of Get It In
Writing Inc. (Arizona)

Daniel S. Polley, Esq. for IQ in Tech, Inc. and Get It In
Writing, Inc. (Florida)
_______

Before Hairston, Walters and Bucher, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

1 In the Board’s order of May 28, 2008, Get It In Writing, Inc.
(Florida) was joined as a party respondent due to the assignment, after
the commencement of this proceeding, of respondent IQ Tech’s mark and
registration to Get It In Writing, Inc. (Florida). While there are two
respondents herein, the subject mark and registration have been owned
by each party consecutively. Therefore, we refer to respondent in the
singular form.

THIS OPINION
IS NOT A
PRECEDENT OF
THE TTAB
Cancellation No. 92046274
2

Get It In Writing Inc. (Arizona) filed a petition to
cancel the registration of respondent IQ in Tech, Inc. (“IQ
Tech”) for the mark GET IT IN WRITING for “custom writing,
text adaptation, proofreading and language interpreting.”
As grounds for cancellation, petitioner asserts that
respondent’s mark, when applied to respondent’s services so
resembles petitioner’s previously used mark GET IT IN
WRITING for custom writing services as to be likely to
cause confusion, under Section 2(d) of the Trademark Act.
Petitioner also asserts fraud as a ground for cancellation,
alleging that respondent IQ Tech willfully made a
materially false statement in its application declaration
to the effect that its mark was in use in connection with
“text adaptation” and “language interpreting” when, in
fact, the mark was not in such use.
Respondent IQ Tech, in its answer, denied the salient
allegations of the claims and asserted affirmatively that
Cancellation No. 92046274
3
it is the senior user of the mark2 and that petitioner’s
claims are barred by estoppel and unclean hands.3
In an order dated May 28, 2008, the Board denied the
parties’ cross motions for summary judgment on petitioner’s
claims of priority and likelihood of confusion and on the
above-noted basis for petitioner’s claim of fraud.4 On June
27, 2008, the parties submitted a joint stipulation to “the
pre-trial determination of this case on its merits by the
Board’s accelerated case resolution procedure.” They
further stipulated that “their cross motions for summary
judgment shall be treated as the briefs herein and the
evidence of record in such cross-motions for summary
judgment shall be deemed properly of record for purposes of
trial.”

2 Respondents’ mark was registered on January 18, 2006, based on an
application filed September 14, 2004. The date of first use and first
use in commerce listed therein is August 1, 2002. In response to
petitioner’s interrogatories and in their cross motion for summary
judgment, respondents assert a date of first use of the mark in
connection with the identified services of September 4, 2001.

3 Respondent did not again raise the equitable issues of estoppel and
unclean hands. Therefore, we consider these defenses to have been
waived and we have not considered them.

4 Petitioner pleaded a second ground of fraud, alleging that prior to
registration, respondent IQ Tech intentionally did not disclose
material information about its knowledge of petitioner’s senior use of
the same mark for the same services. In its May 28, 2008 order, the
Board granted respondent’s motion for summary judgment on this
particular ground of fraud.
Cancellation No. 92046274
4
Issues
The issues for final determination are whether
petitioner has established its standing; whether petitioner
has established its priority and that a likelihood of
confusion exists; and whether petitioner has established
its allegation that, at the time of filing its application,
respondent IQ Tech was not using its mark in connection
with all of the services identified therein and, if not,
whether it knew or should have known of this non-use, and,
if so, whether this constitutes fraud.
While the record herein is the same record submitted
in connection with the parties’ cross motions for summary
judgment, the standard for the Board’s final determination
is different from the standard for a determination upon
summary judgment. In connection therewith, we found that
there were genuine issues of material fact in dispute and,
thus, the case could not be resolved as a matter of law.
Fed. R. Civ. P. 56(c). In so concluding, we did not
resolve issues of material fact; rather we viewed the
evidence in a light most favorable to the respective non-
movants and drew all justifiable inferences in the non-
movant’s favor with respect to each cross motion.
In issuing its decision herein, the Board has
considered the same record and made both findings of fact
Cancellation No. 92046274
5
and a final determination. We have considered whether
petitioner established its case by a preponderance of the
evidence. Hydro-Dynamics Inc. v. George Putnam & Company
Inc., 811 F.2d 1470, 1 USPQ2d 1772 (Fed. Cir. 1987). To
the extent that respondent has claimed a first use date
earlier than the date listed in its registration, we have
considered whether respondent established the earlier use
date by clear and convincing evidence. See Martahus v.
Video Duplication Services Inc., 3 F3d 417, 27 USPQ2d 1846
(Fed. Cir. 1993) and cases cited therein.
The Record
We note that, in connection with its motion for
summary judgment, petitioner objected to consideration of
the two third-party declarations submitted by respondent.
Although evidentiary objections may be permitted in a case
submitted for Accelerated Case Resolution, in the case
before us, the parties have stipulated that “the evidence
of record in such cross-motions for summary judgment shall
be deemed properly of record,” and this includes the two
client declarations. Therefore, we have considered the two
client declarations to be properly in the record for this
final decision and we have accorded them whatever probative
value they warrant.
Cancellation No. 92046274
6
Additionally, we note that both parties have submitted
declarations by their principals in support of their
respective dates of first use. While, as we stated in our
denial of summary judgment, these declarations are self-
serving, we accept these declarations for whatever
probative value they may have.
Therefore, the record consists of the pleadings; the
file of the involved registrations; the declaration of
respondent’s principal, Allison Nazarian, with several
exhibits, the declarations of two clients, and copies of
print and website articles written by Daniel Keller, all
submitted by respondent; and the declaration of
petitioner’s principal, Daniel Keller, with several
exhibits, a copy of petitioner’s 2002 sole proprietor tax
filing, and an excerpt from petitioner’s website containing
a list of clients, all submitted by petitioner.
Factual Findings
1. Petitioner
Petitioner’s president and CEO, Daniel Keller, began
using the mark GET IT IN WRITING in California as an
individual and sole proprietor on April 30, 2002 (motion
for summary judgment “MSJ” Exh. A, Keller Decl.). Mr.
Keller filed a 2002 Schedule C tax form identifying his
principal business as “public relations” and his “dba” as
Cancellation No. 92046274
7
“GET IT IN WRITING” (MSJ Exh. 1). Mr. Keller moved his GET
IT IN WRITING business from California to Arizona and, on
March 4, 2004, incorporated and transferred all of his
business assets, including the mark, to petitioner herein
(MSJ Exh. A). Petitioner operated a website, www.Get-It-
In-Writing.net, beginning in April 2002, and promoted
petitioner’s services thereon (id.); on June 14, 2004,
petitioner transferred its website to
www.GetItInWriting.net (id.); and this later domain name
was created on July 15, 2002 (MSJ Exh. 5). Petitioner has
copies of invoices from itself to third parties - an
invoice dated June 14, 2002, for services specifically
identified as “product sheet – sounding board” and
“presentation script – anima speakers” (MSJ Exh. 6) and an
invoice dated July 22, 2002, for services specifically
identified as “on tour with Shure Weezer interview.”
Petitioner’s use of its mark since its first use has been
continuous (MSJ Exh. A). In a March 21, 2007 excerpt from
petitioner’s website, petitioner identifies numerous prior
and existing projects, which involve writing for third
parties, and clients (MSJ Exh. 8). In this website
excerpt, petitioner also includes the following promotional
statements:
Cancellation No. 92046274
8
Offering Public Relations and Marketing
Communications Services to the Professional
Music, Audio, Video and Multimedia Industries …

We can help you get your message across and
increase product and brand visibility by
providing:
Marketing and Promotional Copy, Ad Copy …, Press
Releases, Articles and Interviews, … White Papers
and Case Studies, Product Manuals.

Contact
Want to Get It In Writing?
Please call or email us for a quote on your next
project.

Daniel Keller wrote numerous articles that appear both
in print and online during the period from at least January
2002 to December 2008. Several of these articles identify
Mr. Keller as the author and as “a writer and independent
producer and engineer.” None of these articles contain any
reference to petitioner, Get It In Writing, Inc. (Arizona).
On January 8, 2007, petitioner filed application
Serial No. 77078350 (MSJ Exh. 12) under Section 1(a) to
register the standard character mark GET IT IN WRITING for
“custom writing services.” The application has been
suspended pending the outcome of this proceeding.5

5 On July 16, 2005, petitioner filed application Serial No. 78671862
(MSJ Exh. 10) under Section 1(b) to register the standard character
mark GET IT IN WRITING for “custom writing services.” The application
was abandoned on March 2, 2007, for failure to respond to an office
action.
Cancellation No. 92046274
9
2. Respondent
Allison Nazarian registered the domain name
GetItInWriting.biz on March 16, 2003 (MSJ Petitioner’s
Reply Exh. 1). Ms. Nazarian is an officer of respondent IQ
Tech and president of respondent Get It In Writing
(Florida) (MSJ Respondent’s Response “Resp.” Exh. 1 –
Declaration of Ms. Nazarian). Ms. Nazarian began offering
writing services under her individual name and “Get It
Write” in approximately 1995 (id. and MSJ Resp. Exh. B).
Respondent has a copy of an invoice to a third party, dated
March 31, 1996, in the name of “Get It Write” for services
identified as “essay writing, editing, typing” (MSJ Resp.
Exh. A). Respondent has distributed a promotional sheet
identifying its writing services company as Get It In
Writing Inc. (MSJ Resp. Exh. E) since at least as early as
January 2005 (MSJ Resp. Exh. 1).
In April 2003, Ms. Nazarian registered Get It In
Writing as a fictitious name of IQ Tech (MSJ Resp., Exh.
1). In 2007, the Florida Division of Corporations listed
IQ TECH as a corporation for which Ms. Nazarian was the
registered agent and officer, with annual reports filed in
2003 through 2007 and a “domestic profit” reported for 2002
(MSJ, Exh. 14, respondent’s discovery responses). Also in
2007, the Florida Division of Corporations listed Get It In
Cancellation No. 92046274
10
Writing, Inc. (Florida) as a corporation for which Ms.
Nazarian was the registered agent and officer, with annual
reports filed in 2005 through 2007 and a “domestic profit”
reported for 2004 (MSJ, Exh. 14). On December 20, 2004,
Get It In Writing, Inc. (Florida) was incorporated (MSJ
Resp., Exh. 1).
Clients of respondent’s writing services under the
mark GET IT IN WRITING are primarily businesses, including,
Cleveland Clinic Florida, Office Depot, American Bancard,
Arizona State University and Worldwide Financial (id.).
Respondent promotes its services through its website,
www.getitinwriting.biz, its blog,
www.getitinwriting.biz/blog/, in local and online
directories, magazines, and through conducting seminars and
distributing electronic newsletters (id. and MSJ, Exh. 14).
Ms. Nazarian also attends trade shows and networking events
on respondent’s behalf (id.). Respondent does not license
its mark to others (MSJ, Exh. 14, Interrogatory Response
No. 19).
Analysis
A. Standing
Because petitioner has properly submitted evidence of
its use of the mark GET IT IN WRITING in connection with
custom writing services, and because petitioner has a
Cancellation No. 92046274
11
pending application for the same that is suspended, we find
that petitioner has established its standing in this
cancellation proceeding. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982).
B. Priority and Likelihood of Confusion
The record clearly establishes that “custom writing
services” encompass preparing text and written materials
for marketing, communications and sales purposes (MSJ Resp.
Exh. 1); that “marketing and promotional services” utilize
custom writing services (MSJ Exh. 8); and that both
parties’ services include custom writing services in the
context of business marketing and promotion. Thus, there
is no question that the parties’ marks, GET IT IN WRITING,
and their custom writing services are identical. There is
no need to further consider respondent’s other identified
services in this context. Thus, the resolution of this
claim turns on which party can demonstrate priority of the
mark GET IT IN WRITING in connection with “custom writing
services.”
Petitioner has established April 2002 as its date of
first use by a preponderance of the evidence. Mr. Keller’s
statement in his declaration that petitioner first used the
Cancellation No. 92046274
12
mark GET IT IN WRITING in connection with custom writing
services in April 2002 is further supported by petitioner’s
additional evidence. Moreover, the fact that Mr. Keller
may have written articles under his own name rather than
under petitioner’s corporate name, does not contradict his
statement that petitioner first used the mark GET IT IN
WRITING for custom writing services in April 2002.
As previously noted, respondent supports its claim of
use as of September 4, 2001 with a statement in the
declaration of respondent’s principal, Allison Nazarian,
and statements in the declarations of two clients. The
evidence submitted in addition to these declarations,
including the evidence regarding both respondents’
corporate status and annual reports, does not support these
individual’s statements of use in 2001 of GET IT IN WRITING
by respondent in connection with custom writing services.
We find it odd that, while respondent retained and
submitted an invoice showing use of its earlier mark, GET
IT WRITE, for custom writing services in 1996, it submitted
no invoices for its services rendered under its current
mark, GET IT IN WRITING. Moreover, Ms. Nazarian did not
register GET IT IN WRITING as a fictitious name until 2003
and did not incorporate in this name until 2004. The
Florida Division of Corporation reports show business
Cancellation No. 92046274
13
activity under either the fictitious name or corporate name
only as far back as 2002; and respondent’s domain name has
been registered only since 2003. Respondent’s promotional
sheet in the record has been in use only since 2005.
It is very possible that the two clients whose
declarations are in the record may be mistaken about
exactly when they remember Ms. Nazarian first identifying
herself as GET IT IN WRITING, particularly in view of the
similarities between GET IT IN WRITING and Ms. Nazarian’s
earlier mark, GET IT WRITE, and the fact that the first use
date originally claimed by respondent, August 1, 2002, and
the earlier first use date respondent asserts in this
proceeding, September 4, 2001, are similarly situated in
the past, i.e., approximately a year apart in the late
summer. Therefore, in the absence of any independent
evidence, such as invoices or promotional materials
evidencing dates of origin, to corroborate the first use
assertions of Ms. Nazarian and her two clients, we conclude
that respondent has not met its burden of establishing by
clear and convincing evidence a first use date of its mark
in connection with custom writing services as early as
September 4, 2001.
Thus, petitioner has established its priority in this
case. We conclude that in view of the identity of the
Cancellation No. 92046274
14
marks, their contemporaneous use on the same custom writing
services involved in this case is likely to cause confusion
as to the source or sponsorship of such services.
Fraud
The question herein is whether petitioner has
established that, at the time of filing its application,
respondent IQ Tech was not using its mark in connection
with “text adaptation services” and/or “language adaptation
services,” and, if not, whether respondent knew or should
have known of this non-use. As noted by the Board in its
order of December 5, 2006, fraud may lie where a registrant
knew or should have known that its mark was not in use on
all of the goods and/or services recited in a use-based
application when it filed that application. See Torres v.
Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483
(Fed. Cir. 1986); and Medinol Ltd. v. Neuro Vasx Inc., 67
USPQ2d 1205 (TTAB 2003).
Fraud must be proven with clear and convincing
evidence, and any doubt must be resolved against a finding
of fraud. Giant Food, Inc. v. Standard Terry Mills,
Inc., 229 USPQ 955, 962 (TTAB 1986) and cases cited
therein. Furthermore, fraud will not lie if it can be
proven that the statement, though false, was made with a
reasonable and honest belief that it was true. See
Cancellation No. 92046274
15
Woodstock's Enterprises Inc. (California) v. Woodstock's
Enterprises Inc. (Oregon), 43 USPQ2d 1440 (TTAB 1997).
Respondent contends that “text adaptation” and
“language adaptation” services are encompassed within
“custom writing services” and, moreover, that, as
specifically defined, respondent renders these services and
has done so since prior to the filing date of its
application. In her declaration, Ms. Nazarian described
“text adaptation” services as “taking pre-written text
supplied by clients and adapting it to fit new formats
(e.g., print to web, book to letter, electronic to print,
audio to written, etc.)” and “language adaptation” services
as “taking or translating foreign language marketing/sales
materials into English for business and business owners and
vice versa. I speak Hebrew fluently … [and] include[ing] …
working with a [UK] business to ‘translate’ documents from
UK English to American English.” (MSJ Resp., Exh. 1.)
Without offering different definitions of these
services, petitioner merely disagrees with Ms. Nazarian’s
characterization of these services and argues that these
services must be different from custom writing services or
respondent would not have listed them separately in the
identification of services. We do not find this reasoning
convincing. Petitioner has provided no evidence that these
terms are not defined as indicated by Ms. Nazarian.
Cancellation No. 92046274
16
Moreover, Ms. Nazarian’s definitions of these services are
not inconsistent with the likely ordinary meanings of the
individual terms “text adaptation” and “language
adaptation.” Further, petitioner has not provided any
evidence indicating that respondent has not used its mark
GET IT IN WRITING in connection with these services prior to
the September 14, 2004, filing date of the application.
Therefore, we conclude that petitioner has not met its
burden of proof in establishing its claim of fraud.
Decision: The petition to cancel is granted with
respect to petitioner’s claim of priority and likelihood of
confusion, and denied with respect to petitioner’s claim of
fraud. The registration will be cancelled in due course.