Alliance Entertain-ment Corporationv.Eric Russ

Trademark Trial and Appeal Board

Sep 13, 2007

No. 92045555 (T.T.A.B. Sep. 13, 2007)

DUNN
Mailed: 9/13/2007

Cancellation No. 92045555

ALLIANCE ENTERTAINMENT
CORPORATION, by change of
name from AEC ONE STOP
GROUP INC.1

v.

ERIC RUSS

Before Hairston, Grendel, and Cataldo, Administrative
Trademark Judges.

By the Board:

On March 1, 2006, AEC One Stop Group Inc. filed a
petition to cancel Registration No. 2971705 for the mark

for “general interest men's multimedia magazine not having a
permanent or significant portion of its content directed to
computer and/or video games or snowboarding” in

1 The change of name is recorded with the USPTO Assignment Branch
at Reel 3346, Frame 0241.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451

THIS OPINION IS NOT
CITABLE AS PRECEDENT OF
THE T.T.A.B.
Cancellation No. 92043109
2
International Class 16 on the grounds of nonuse and
likelihood of confusion with petitioner’s pleaded
registrations. Respondent Eric Russ filed an answer denying
the salient allegations of the petition to cancel.
This case now comes up on the parties’ cross-motions
for summary judgment on the issues of nonuse and likelihood
of confusion.2 We turn first to the issue of nonuse, and
whether on March 16, 2005, the date that respondent filed
its statement of use, respondent was using the AMPED THE
MAGAZINE mark in commerce on its general interest men's
multimedia magazine.
An exhaustive review of the record will not be
provided. It is presumed that the parties are familiar with
the record. Indeed, the facts in this matter largely are
undisputed. The parties disagree as to the conclusion to be
drawn from those facts. The Board has carefully reviewed
the motions for summary judgment, the responses, and all
accompanying evidence. Because respondent’s evidence was
designated confidential, to the extent description is
necessary, it will be made in general terms.
The evidence submitted by respondent shows that, as of
the filing date of the statement of use, respondent had

2 Petitioner’s cross-motion also seeks summary judgment on the
ground that respondent committed fraud in the procurement of its
registration. Inasmuch as a party may not obtain summary
judgment on an issue that has not been pleaded, the Board will
not consider this claim.
Cancellation No. 92043109
3
registered the domain name ampedmag.com, and at the website
had a screen bearing the mark AMPED THE MAGAZINE. At the
same time, respondent was using the mark AMPED THE MAGAZINE
on his paper and electronic communications involving
advertisements of his upcoming magazine launch and
arrangements for a photo shoot involving a studio, models,
and hair and makeup stylists. Respondent also was using the
mark AMPED THE MAGAZINE to identify the client when signing
contracts for studio space and model release forms. There
is no evidence that at the time the statement of use was
filed the mark AMPED THE MAGAZINE was in use with the goods
listed in the registration, namely a general interest men's
multimedia magazine.
In fact, the evidence submitted by respondent confirms
that on March 16, 2005 use of the mark was limited to
preparations for a magazine launch. Respondent’s September
25, 2006 declaration submitted in support of his motion for
summary judgment does not state that the mark AMPED THE
MAGAZINE was in use with a magazine but avers (paragraph 6)
“Since at least as early as May 2004, I have conducted my
business under AMPED THE MAGAZINE, and I continue to use the
mark in commerce throughout the United States.” We note
respondent’s April 13, 2005 email to a contributor stating
“I will of course notify you when AMPED THE MAGAZINE
launch[es]”, his August 5, 2005 letter to a publicist
Cancellation No. 92043109
4
stating “We are interested in doing a feature on … for our
October 2005 launch”; and his August 11, 2005 letter to a
publicist stating “You can view our teaser trailer at
www.ampedmag.com. We are interested in featuring … in a
player profile and fashion shoot for our October 2005
launch.”
In support of its cross-motion for summary judgment,
petitioner submitted the November 21, 2006 declaration of
Katy Schanz, an employee of petitioner’s law firm, averring
that on February 25, 2006 and June 29, 2006, she printed out
every screen available from the www.ampedmag.com website and
on both occasions there was a loop of screens limited to
several single flashing words, a screen with a photo and the
mark AMPED THE MAGAZINE, and a screen with the words “Coming
Soon.”
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine issue of material fact, and that it
is entitled to summary judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548
(1986).
Cancellation No. 92043109
5
As a preliminary matter, we find that petitioner has
established its standing to seek cancellation of
respondent’s registration inasmuch as petitioner submitted
its pleaded registrations. 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).
A registration issued under Section 1 of the Trademark
Act requires use in commerce either at the time that the
use-based application is filed, or, for an application filed
under intent to use, at the time applicant’s allegation of
use is filed. Trademark Act Sec 1; 15 U.S.C. §1051. The
registration is subject to cancellation if, at the time the
application or allegation of use is filed, the mark is not
in use on goods sold or transported in commerce or in
connection with services being rendered in commerce.3

3 Section 45 defines "use in commerce" as follows:
The term “use in commerce” means the bona fide use of a mark in
the ordinary course of trade, and not made merely to reserve a
right in a mark. For purposes of this chapter, a mark shall be
deemed to be in use in commerce—
(1) on goods when—
(A) it is placed in any manner on the goods or their containers
or the displays associated therewith or on the tags or labels
affixed thereto, or if the nature of the goods makes such
placement impracticable, then on documents associated with the
goods or their sale, and
(B) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or
advertising of services and the services are rendered in
commerce, or the services are rendered in more than one State or
Cancellation No. 92043109
6
Avakoff v. Southern Pacific Co., 765 F.2d 1097, 1098, 226
USPQ 435, 436 (Fed. Cir. 1985)(“The evidence of subsequent
sales of programs bearing the marks is not relevant in the
absence of use in commerce prior to filing.”). Here, the
record is bereft of evidence that, at the time the statement
of use was filed, the mark AMPED THE MAGAZINE was used on a
printed magazine which was sold or transported in commerce
or that the mark AMPED THE MAGAZINE was used in connection
with an online magazine.4 So as to be clear, respondent’s
specimen "screen shot", without any magazine content, is
insufficient to establish use of the mark in connection with
an online magazine. In re Port Authority of New York, 3
USPQ2d 1453, 1455 (TTAB 1987)(“The use of a mark in
connection with advertising, promotion and preparatory
activities for services to be available at some time in the
future cannot support registration.”); Intermed
Communications, Inc. v. Chaney, 197 USPQ 501, 507-508
(1977)(“{M]ere publicity about services to be rendered in

in the United States and a foreign country and the person
rendering the services is engaged in commerce in connection with
the services. (emphasis added).

4 The subject registration issued under International Class 16,
the class for printed publications. Online publications are
classified as International Class 41 services. See Trademark
Manual of Examining Procedure §1402.11 (4th ed., rev.
2005)(“TMEP”). Because the USPTO will allow reclassification in
the case of a USPTO error in classification of a registration
that issued based on an application under §1 or §44 of the
Trademark Act (TMEP Section 1609.10), the Board has evaluated all
record evidence to determine whether use in commerce has been
shown as to either a print or an online magazine.
Cancellation No. 92043109
7
the future does not lay a foundation for an application.
The statute requires not only the display of the mark in the
sale or advertising of services but also the rendition of
those services in order to constitute use of the service
mark in commerce.”).
Upon careful consideration of the record, we find that
there is no genuine issue that the registered mark was not
in use in commerce with the goods listed in the registration
as of the filing date of the statement of use, and
petitioner is entitled to summary judgment on that claim.
Accordingly, petitioner’s motion for summary judgment
is granted, and judgment is entered against respondent on
the claim that respondent’s mark was not in use in commerce
as of the filing date of the statement of use.
***