TV Azteca, S.A.B. de C.V.v.Jeffrey E. Martin

Trademark Trial and Appeal Board

Dec 7, 2018

No. 92068042 (T.T.A.B. Dec. 7, 2018)

Mailed: December 7, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
TV Azteca, S.A.B. de C.V.
v.
Jeffrey E. Martin
————
Cancellation No. 92068042
————
John M. Murphy of Arochi Marroquin & Lindner SC, for TV Azteca, S.A.B. de C.V.
Jeffrey E. Martin, appearing pro se.
————
Before Wolfson, Adlin and Hightower, Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
Jeffrey E. Martin (Respondent) owns a registration for the mark depicted below
for “entertainment services, namely live performances by a musical group.”1

On March 7, 2018, TV Azteca, S.A.B. de C.V. (Petitioner) petitioned to cancel the
registration on the ground of abandonment. In his answer, Respondent denies the
salient allegations of the petition to cancel.2

1 Reg. No. 1990874, issued August 6, 1996; renewed.
2 Although Respondent’s mark MYST is displayed in stylized letters, the parties do not
This Opinion is a
Precedent of the TTAB
Cancellation No. 92068042
2
The Trademark Trial and Appeal Board recently established a pilot program to
explore procedures for expediting certain cancellation proceedings to further the
USPTO’s goal of maintaining the accuracy and integrity of the U.S. Trademark
Register. This newly established “expedited cancellation” procedure is initiated by
the Board.3 On an on-going basis, the Board identifies cancellation cases, such as this
one, that have not resulted in disposition by default and in which the only claims are
abandonment or nonuse (or both). Cases with counterclaims are ineligible for the
program. Once a case is identified as a candidate for the expedited cancellation
program, the Board participates in the parties’ discovery conference to discuss
voluntary stipulation to one or more of the Board’s several Accelerated Case
Resolution (ACR) options, including pretrial final disposition on the merits, see
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 528.05(a)(2)
(2018), or abbreviated trial on the merits, see TBMP § 702.04.

address what, if any, impact this may have on Petitioner’s claim or Respondent’s alleged
nonuse. We find that the stylization does not affect the outcome of our decision.
3 The USPTO earlier explored the possibility of establishing a procedure, known as a
“streamlined cancellation proceeding,” that would be initiated by a potential petitioner when
it filed its petition to cancel. Under the streamlined plan, the petition would be limited to the
grounds of nonuse or abandonment (or both), and the petition would be accompanied by any
evidence or testimony in support of the claim(s).Counterclaims would not be permitted, very
limited discovery would be allowed only when granted by the TTAB for good cause shown,
proceedings would be conducted on an abbreviated schedule, there would be no oral hearing,
and the TTAB would issue a decision within an expedited timeframe. The Office published a
Request for Comments on streamlined proceedings in the Federal Register, 82 Fed. Reg.
22517 (May 16, 2017). However, consideration of the streamlined procedure is presently on
hold while we explore the efficacy of the current pilot, the “expedited cancellation
proceeding.” Unlike the streamlined model, the stipulations into which parties may enter in
an expedited cancellation proceeding include all options available under the Board’s general
ACR procedures.
Cancellation No. 92068042
3
This case was identified as a candidate for expedited cancellation, the Board
participated in the parties’ discovery conference, and the parties agreed to litigate
this case as an expedited cancellation proceeding.4 The parties agreed to exchange
initial disclosures but dispense with formal discovery. Both parties filed testimony
and documentary evidence together with their main briefs, and Petitioner filed a
rebuttal brief.5
I. The Pleadings
Petitioner pleads ownership of Application Serial No. 87427925 to register the
mark MYST (in standard characters) for “entertainment in the nature of theater

4 5 TTABVUE. Citations in this opinion are to the TTABVUE docket entry number and,
where applicable, the electronic page number where the document or testimony appears.
Because the Board primarily uses TTABVUE in reviewing evidence, it prefers that citations
to non-confidential parts of the record include the TTABVUE docket entry number and the
TTABVUE page number. For material or testimony that has been designated confidential
and which does not appear on TTABVUE, the TTABVUE docket entry number where such
material or testimony is located should be included in any citation. See RxD Media, LLC v.
IP Application Dev. LLC, 125 USPQ2d 1801, 1804 (TTAB 2018); Turdin v. Trilobite, Ltd., 109
USPQ2d 1473, 1476 n.6 (TTAB 2014); TBMP §§ 801.01, 801.03.
5 Respondent unnecessarily filed his initial disclosures with the Board. Even under expedited
procedures, parties should not file their initial disclosures with the Board; initial disclosures
are not admissible evidence unless resubmitted at trial under a notice of reliance, where
appropriate, or through testimony. Trademark Rule 2.120(k)(8), 37 C.F.R. § 2.120(k)(8).
Thus, although Respondent’s initial disclosures were not of record, because Petitioner
referred to and relied on them in presenting its case-in-chief, we consider them stipulated
into evidence. See Bayer Consumer Care AG v. Belmora LLC, 110 USPQ2d 1623, 1627 (TTAB
2014) (“Because both parties submitted (in whole or in part) Mr. Belcastro’s declaration, we
deem them to have stipulated the declaration into the record, and we hereby consider the
entire declaration for whatever evidentiary value it may have….”), rev’d on other grounds, 84
F.Supp.3d 490, (E.D.Va. 2015), vacated and remanded, 819 F.3d 697 (4th Cir. 2016), cert.
denied, 137 S.Ct. 1202, U.S. (2017), aff’d on remand __ F. Supp.3d __ , 2018 WL 4390731
(E.D.Va. 2018), on appeal 4th Cir. (filed October 19, 2018). Cf. Azeka Bldg. Corp. v. Azeka, 122
USPQ2d 1477, 1478 n.4 (TTAB 2017) (Board deemed materials not proper subject matter for
a notice of reliance as having been stipulated into the record because adverse party treated
them as such).
Cancellation No. 92068042
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productions; entertainment, namely, a continuing variety show broadcast over
television; presentation of variety shows” in International Class 41,6 and alleges that
its application was refused registration based on a likelihood of confusion with the
mark in Respondent’s registration. As the sole ground for cancellation, Petitioner
alleges that Respondent abandoned his MYST mark by discontinuing its use “for at
least three years preceding the filing of this Petition to Cancel,” with no intent to
resume use.7
Respondent asserts that he has continually used the mark MYST for a musical
group, and that “the group MYST performed live 8 times” from March 25, 2015 to
September 4, 2017.8 Respondent also asserts that he has performed live as an acoustic
solo artist using the mark MYST.9
II. Description of the Record
The pleadings and, pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b),
the registration file of Respondent’s mark are automatically of record.
A. Petitioner’s Testimony and Evidence
Petitioner filed the following testimony and evidence:
• Declaration of John M. Murphy, Petitioner’s counsel, and accompanying
exhibits Nos. 1-25.10

6 Filed April 27, 2017, under Section 44(e), 15 U.S.C. § 1126(e), on the basis of Mexican
Reg. No. 1744966.
7 1 TTABVUE 3.
8 9 TTABVUE 3. Respondent’s Statement, as discussed more fully below, is not properly
sworn or otherwise verified under Trademark Rule 2.20, 37 C.F.R. § 2.20.
9 9 TTABVUE 4.
10 8 TTABVUE. Mr. Murphy’s testimony introduces and identifies the exhibits as published
Cancellation No. 92068042
5
• Copies of the New Jersey Revised Statutes Title 33, Sections 33:1-12; 33:1-
12.18; 33:1-18; 33:1-19; 33:1-19.1; 33:1-2; and 33:1-26 (2013), on the
issuance of licenses for intoxicating liquors.11
B. Respondent’s Testimony
Respondent filed an unsworn statement with accompanying exhibits A-K.12

III. Discussion
A. Standing
Standing is a threshold issue that must be pleaded and proven by the plaintiff in
every inter partes case. Petitioner must establish that it has a “real interest,” i.e., a
“reasonable” basis for its belief of damage. See Empresa Cubana Del Tabaco v. Gen.
Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (citing Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)); Lipton Indus.,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (TTAB 1982). Here, the
refusal of Petitioner’s pleaded application based on Respondent’s registration
establishes its real interest and standing in this proceeding.13 Weatherford/Lamb
Inc. v. C&J Energy Servs. Inc., 96 USPQ2d 1834, 1837 (TTAB 2010) (“Inasmuch as
petitioner has made of record the USPTO Office action suspending its pleaded
application pending the possible refusal to registration under Section 2(d) of the
Lanham Act based on an alleged likelihood of confusion with respondent’s

articles and official records, but does not address the content of the exhibits.
11 7 TTABVUE 16-30.
12 9 TTABVUE.
13 The pleaded application and refusal were made of record under the Murphy Declaration at
8 TTABVUE 6-19, Exhibits 1 and 2.
Cancellation No. 92068042
6
registration, there is no question that petitioner has standing to bring this petition
for cancellation.”); LifeZone Inc. v. Middleman Grp., Inc., 87 USPQ2d 1953, 1959
(TTAB 2008); see also Lipton Indus., Inc., 213 USPQ at 189.
B. Abandonment
1. Statement of the Law of Abandonment
The Trademark Act provides for the cancellation of a registration if the registered
mark has been abandoned. See Section 14 of the Trademark Act, 15 U.S.C. § 1064.
Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a mark is deemed
abandoned:
When its use has been discontinued with intent not to
resume such use. Intent not to resume may be inferred
from circumstances. Nonuse for 3 consecutive years shall
be prima facie evidence of abandonment. “Use” of a mark
means the bona fide use of such mark made in the ordinary
course of trade, and not made merely to reserve a right in
a mark.
As the Board has explained, “[b]ecause registrations are presumed valid under
the law, the party seeking their cancellation bears the burden of proving a prima facie
case of abandonment by a preponderance of the evidence.” Yazhong Investing Ltd. v.
Multi-Media Tech. Ventures, Ltd., 126 USPQ2d 1526, 1532 (TTAB 2018); see also On-
Line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed.
Cir. 2000); Exec. Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1180-81
(TTAB 2016). Proof of nonuse for three consecutive years constitutes prima facie
evidence of abandonment “because it supports an inference of lack of intent to resume
use.” Yazhong Investing, 126 USPQ2d at 1533; see also On-line Careline, 56 USPQ2d
at 1476. If the petitioner presents a prima facie case of abandonment, the burden of
Cancellation No. 92068042
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production, i.e., of going forward, then shifts to the trademark holder to rebut the
prima facie showing with evidence of either: (1) use of the mark during the statutory
period; or (2) an intent to resume use. Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d
1374, 1376 (Fed. Cir. 1998); Cerveceria Centroamericana S.A. v. Cerveceria India Inc.,
892 F.2d 1021, 13 USPQ2d 1307, 1311 (Fed. Cir. 1989). The burden of persuasion,
however, always remains with the petitioner. Rivard, 45 USPQ2d at 1376. Because
abandonment is a question of fact, any inference of abandonment must be based on
proven fact. Cerveceria Centroamericana, 13 USPQ2d at 1310 (“The protection due
the registrant is provided by requiring that the inference [of abandonment] have an
adequate foundation in proven fact. Whenever an inference is based on pure
speculation and ‘there is no basis … to infer nonuse,’ a prima facie case of
abandonment must fail.”) (quoting P.A.B. Produits et Appareils de Beaute v. Satinine
Societa in Nome Collettivo di S.A. e. M. Usellini, 570 F.2d 328, 196 USPQ 801, 804-
05 (CCPA 1978)).
2. Evidence of Abandonment
We begin with Respondent’s initial disclosures.14 Respondent’s disclosures consist
of the following:
• Exhibit A – A copy of a letter dated May 8, 2018 from “Dave
Dillman, D-Toxin Productions” addressed to Respondent.
The letter reads, in pertinent part: “Enclosed is the balance
of the payment for Myst performing at my show on May 3rd.
… That’s the third time in the last four years you saved my
ass when a band canceled at the last minute.”

14 6 TTABVUE.
Cancellation No. 92068042
8
• Exhibit B – A photograph of Respondent. Petitioner provided
a copy of an article (dated May 8, 2018) about a Maryland
music festival in which the photograph appeared.15
• Exhibit C – A copy of a flyer promoting a “MYST” concert on
“March 25th” [no year specified] at the Pennant East in
Bellmawr, New Jersey.
• Exhibit D – A copy of a photograph of Mr. Martin, shown
holding a microphone, apparently singing. The photograph
is undated. No other persons are in the picture.
• Exhibit E – A copy of the front and back views of a MYST
business card, undated.
• Exhibit F – A photograph of a MYST handstamp, undated.
• Exhibit G – A photograph of three MYST shirts, undated.
• Exhibit H – A photograph of MYST golf balls, undated.
• Exhibit I – A photograph of a page from a yearbook, undated,
including a picture of Respondent and the attribution “Long
live Myst.”
• Exhibit J – Undated photographs of two Pennsylvania
license plates: “MYST” and “MYST ROX.”
• Exhibit K – A copy of a GoDaddy “My Products” page
showing “myst.rocks” and “jeffmartin.us” domains,
undated.16

15 8 TTABVUE 154-61. The actual date of the festival is not provided in the article or
photograph. While Respondent included an Internet link to the article, the article is of record
only because Petitioner submitted a copy of it under declaration of its counsel. The Board
does not accept Internet links as a substitute for submission of a copy of the resulting page.
See In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1194 n.21 (TTAB 2018); In re Olin
Corp., 124 USPQ2d 1327, 1332 n.15 (TTAB 2017) (“Because the information displayed at a
link’s Internet address can be changed or deleted, merely providing a link to a website is
insufficient to make information from that site of record.”); In re Planalytics, 70 USPQ2d
1453, 1458 (TTAB 2004).
16 Petitioner argues that “the only documents Mr. Martin may use to prove his use or
excusable nonuse of the mark MYST & Design are those identified in or attached to his initial
disclosures of June 27, 2018.” 7 TTABVUE 4. Although the parties dispensed with pretrial
disclosures, Respondent identified a “Dave Dillman of D-Toxin Productions” (no title
Cancellation No. 92068042
9
Respondent also made statements about these exhibits in his initial disclosures,
but they are not properly sworn or otherwise verified under Trademark Rule 2.20, 37
C.F.R. § 2.20.17 Therefore, they are not testimony. McDonald’s Corp. v. McKinley, 13
USPQ2d 1895, 1897 n.4 (TTAB 1989) (“unsworn statement does not constitute
testimony”); In re Dermahose Inc., 82 USPQ2d 1793, 1797 (TTAB 2007) (“In effect,
the common feature of oaths, sworn statements, unsworn declarations under penalty
of perjury, and declarations under Rule 2.20 is that the person making the statement
is subjecting himself or herself to criminal penalties for making statements that the
person knows are not true.”); see also TBMP § 703.01(h) (stating that testimony by
affidavit or declaration pursuant to 37 C.F.R. § 2.20 must be made in conformance
with the Federal Rules of Evidence). Although the initial disclosures are deemed
stipulated into the record, Respondent’s unsworn statements are not.18
Petitioner focuses on Exhibit C, the flyer from Pennant East. The flyer mentions
“March 25th” as the date MYST was scheduled to perform. Petitioner contends that

provided) as a potential witness in his initial disclosures. 6 TTABVUE 2. If Respondent had
chosen, he could have called Mr. Dillman to introduce additional documents under his
testimony, subject to cross-examination, during his ACR testimony/briefing period.
17 For example, Respondent states that Exhibit D is a photograph “showing MYST performing
on March 15th, 2016.” 6 TTABVUE 3. However, the photograph is of a single individual in an
undisclosed location, and bears no date. Inasmuch as Respondent’s statement is unverified,
it does not cure the deficiency in the exhibit.
18 Respondent submitted duplicate copies of his initial disclosures under a different, but also
unsworn, statement “declaring” that the group MYST performed eight times during the
relevant period (including the disputed Pennant East performance and several “private
parties”). 9 TTABVUE 2-6. Although the parties agreed that testimony would be presented
by affidavit, 5 TTABVUE, the statement at the end of Respondent’s declaration that he
“declare[s]” that “the foregoing is true and correct” is not in affidavit form and therefore the
unsworn statement has not been considered.
Cancellation No. 92068042
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because Pennant East permanently closed on September 11, 2011, the year for any
such performance could not have been within the three years preceding the filing of
the cancellation petition on March 7, 2018. In an attempt to establish that Pennant
East closed on September 11, 2011, Petitioner submitted six newspaper articles and
a blog post discussing its closure, but without supporting testimony or other evidence
that we may consider for the truth of the matter asserted.19 Respondent has objected
to these articles as hearsay.
Although news articles may be used as evidence for what they show on their face,
they may not be relied on for truth of the statements contained therein. Fed. R. Evid.
802; Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1117 n.7 (TTAB
2009) (“A printed publication is only admissible for what it shows on its face; unless
it falls within an exception to the hearsay rule it will not be considered to prove the
truth of any matter stated in the publication.”) (citing 7-Eleven Inc. v. Wechsler, 83
USPQ2d 1715, 1717 n.2 (TTAB 2007)). Petitioner argues that the news articles and
blog post fall within Fed. R. Evid. 807(a), the “residual hearsay” rule.20 That rule
provides an exception for statements that have “equivalent circumstantial
guarantees of trustworthiness” analogous to those of a public record and are “more
probative on the point for which it is offered than any other evidence that the
proponent can obtain through reasonable efforts.” Id. The residual hearsay exception
is intended to “be used only rarely, in truly exceptional cases.” Pozen Inc. v. Par

19 8 TTABVUE 20-42.
20 By operation of Trademark Rule 2.116(a), 37 C.F.R. § 2.116(a), the Federal Rules of
Evidence and Federal Rules of Civil Procedure apply to Board proceedings.
Cancellation No. 92068042
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Pharm. Inc., 696 F.3d 1151, 104 USPQ2d 1969, 1976 n.6 (Fed. Cir. 2012) (applying
Fifth Circuit law and citing United States v. Walker, 410 F.3d 754, 757 (5th Cir.
2005)). Even assuming no reasonable effort could have discovered more probative
evidence, the articles and blog post do not possess “circumstantial guarantees of
trustworthiness” equivalent to official records or witness testimony. We therefore
sustain Respondent’s objection to the news and blog articles.21
Petitioner also relies on official records in an attempt to show that Pennant East
closed in 2011. Petitioner’s counsel declares that he “diligently searched [the Borough
of Bellmawr, New Jersey’s website and the Courier-Post’s website]22 for references to
liquor licenses held by the owner or owners of the Pennant East nightclub in
Bellmawr, New Jersey…” and located minutes from three Council meetings “in which
other licenses were renewed, but not the license for the Pennant East.”23 Counsel
states: “I infer from this fact that the Pennant East license lapsed during these
terms.”24 A review of the public records of the Borough of Bellmawr attached to
counsel’s declaration shows that the required liquor license granted to “Rt. 130
Entertainment, Inc. t/a Pennant East” was allowed to lapse twice from 2012 to June

21 Even if these items were admitted, and considered for the truth of the matter asserted,
their use is limited. The closing of a single venue such as Pennant East does not establish
Respondent’s non-use in other commercial venues or private venues.
22 “The agenda and minutes from meetings of the Bellmawr Borough Council from 2011 to
2017 are available on the website. Legal notices pertaining to the Borough of Bellmawr are
published in the Courier-Post.” Murphy Decl., 8 TTABVUE 3.
23 8 TTABVUE 3. The three exhibits are Exhibit 14 [dated June 27, 2013], Exhibit 17 [dated
July 23, 2015] and Exhibit 22 [dated June 22, 2017].
24 Id.
Cancellation No. 92068042
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30, 2015,25 and that on October 1, 2015, notice was issued in the Courier-Post that an
application was made to renew and transfer the license to Bellmawr Redevelopment
Partners, LLC as an “unsited” license.26 These records do not support Petitioner’s
contention that Pennant East closed. Even if Pennant East twice lost its liquor
license, that alone does not establish that the premises were shuttered, did not move
elsewhere, or did not continue operating as an alcohol-free establishment or in
violation of the licensing laws. Furthermore, even if the evidence could suggest that
Pennant East closed in 2011, it is at best inconclusive as to whether Respondent
discontinued use of his mark from March 2015 to March 2018.
None of the other evidence from Respondent’s initial disclosures assists Petitioner.
The undated exhibits are irrelevant; they simply shed no light on whether
Respondent used his mark at any time from March 2015 to March 2018. The
statement, “that’s the third time in the last four years [that Respondent worked for
Mr. Dillon]” in the Dillon letter (Exhibit A, dated May 2018) is not established as true
by witness testimony, but even if the statement were verified, no dates of performance
are specified; all three purported performances could have taken place before March
2015, after March 2018, or during the relevant time frame.
We recognize that in attempting to prove a negative, as in proving abandonment
through nonuse, “without resort to proper inferences the burdened party could be

25 8 TTABVUE 82.
26 8 TTABVUE 99. The notice was re-posted on October 8, 2015. Id. at 100. An “unsited”
license has no operating place of business. See Alcoholic Beverage Control Handbook for
Municipal Issuing Authorities, State of New Jersey, 8 TTABVUE 102-09.
Cancellation No. 92068042
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faced with an insurmountable task.” Cerveceria Centroamericana, 13 USPQ2d at
1310. But even in expedited proceedings, inferences must be based on proven
foundational facts. Here, drawing all reasonable inferences available based on the
evidence presented by Petitioner or contained in Respondent’s initial disclosures, we
find that Petitioner has failed to establish a prima facie case of Respondent’s non-
use.27
C. Summary
Petitioner has not established a prima facie case of Respondent’s abandonment
of his service mark MYST based on its pleaded claim of nonuse during the three-year
period immediately preceding the filing of the petition to cancel.
Decision: The petition to cancel is denied.

27 Even if the parties stipulated to admit all of the evidence into the record, the result in this
proceeding would not have changed, because were we to consider all the unverified and
hearsay evidence submitted by both Petitioner and Respondent, we would still find that
Petitioner had not proven Respondent’s non-use of his mark between March 7, 2015 and
March 7, 2018. Moreover, the May 8, 2018 article was published close enough in time to the
date Petitioner filed the petition to cancel to support an inference that Respondent intended
to resume use of his mark during the preceding three years. The Board may consider evidence
regarding practices that occurred before or after the three-year period of nonuse to infer
intent to resume use during the three-year period. Crash Dummy Movie LLC v. Mattel Inc.,
601 F.3d 1387, 94 USPQ2d 1315, 1317 (Fed. Cir. 2010). Such proof of an intent to resume use
may have rebutted a prima facie case of abandonment.