Andi Theav.Scribble Press, Inc.

Trademark Trial and Appeal Board

Mar 16, 2015

No. 92054875 (T.T.A.B. Mar. 16, 2015)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: March 16, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Andi Thea v. Scribble Press, Inc. ________ Cancellation No. 92054875 _______ Richard M. Blank for Andi Thea. John P. Margiotta and Leo Kittay of Fross Zelnick Lehrman & Zissu, P.C. for Scribble Press, Inc. _______ Before Richey, Deputy Chief Administrative Trademark Judge, and Wolfson and Goodman, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Andi Thea (“Petitioner”) has filed a petition to cancel the standard character mark SCRIBBLE PRESS1 and a petition to cancel the design mark 2 filed by Scribble Press, Inc. (“Respondent”), each petition alleging that Respondent’s marks so resemble Petitioner’s marks SCRIBBLE 1 Reg. No. 3969853, filed September 27, 2010; registered May 31, 2011. 2 Reg. No. 3590418, filed March 17, 2009; registered March 17, 2009. Cancellation No. 92054875 2 MATS!3 and 4 as to cause a likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).5 Respondent’s SCRIBBLE PRESS marks are registered for: entertainment services, namely, providing use of facilities, supplies and equipment to allow customers to write, illustrate and publish books for children; ‘do it yourself’ publishing of books for children; organizing and conducting parties to create instant children’s books; educational services, namely, offering workshops, classes, after-school programs and camp programs on writing and illustration of books in International Class 41. Petitioner alleges prior use of her marks6 and ownership of registrations7 for her marks for goods in International Classes 16, 24 and 28.8 Petitioner further 3 Reg. No. 4224024, filed March 4, 2011; registered October 16, 2012. 4 Reg. No. 4093005, filed September 25, 2010; registered January 31, 2012. 5 The petitions were filed in a single electronic transaction via the Board’s Electronic System for Trademark Trials and Appeals (ESTTA). Petitioner indicated on the ESTTA filing form that she was asserting two additional claims: a claim under Section 2(a) and a dilution claim under Section 43(c). While the ESTTA filing form is considered part of a plaintiff’s initial pleading, PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1928 (TTAB 2005), here neither claim was properly pled, they were not tried, and Petitioner did not argue either in her brief. Therefore, we have not considered the allegations as grounds for cancellation herein. Embarcadero Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1827 n.2 (TTAB 2013); cf. SmithKline Beecham Corp. v. Omnisource DDS LLC, 97 USPQ2d 1300, 1301 n.2 (TTAB 2010) (dilution claim not pursued at trial or argued in brief deemed waived). In addition, while Petitioner argues in her trial brief that Respondent has abandoned its marks, there is no pleading of abandonment and therefore we will not entertain the claim. Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.3 (TTAB 2009); TBMP § 314 (“A party may not rely on an unpleaded claim.”). 6 Although Petitioner claims “Petitioner is a well-known provider of the goods and services,” 1 TTABVUE at 10, no services have been identified in either complaint. Accordingly, we treat the complaint as not alleging use of SCRIBBLE MATS! (with or without a design) in association with any services. 7 We note that in the petitions to cancel, Petitioner pleaded ownership of the underlying applications for these registrations. The registrations issued after commencement of this Cancellation No. 92054875 3 proceeding, prior to the opening of Petitioner’s testimony period. As the pleading of the applications is viewed as providing sufficient notice to Respondent of Petitioner’s intention to rely on any registrations that issue from the pleaded applications, Petitioner does not have to amend her pleadings to assert the registrations. TBMP § 704.03(b)(1)(A) (2014). Cf. UMG Recordings, Inc. v. Charles O'Rourke, 92 USPQ2d 1042, 1045 n.12 (TTAB 2009) (when an opposer pleads ownership of the underlying application in the notice of opposition, the opposer may make the registration which issues during the opposition of record without having to amend the notice of opposition to assert reliance on the registration). While Petitioner does not have to amend the pleadings to assert the subsequently issued registrations, she was required to properly introduce the registrations to make them of record and rely on them at trial. 8 The goods covered by Petitioner’s registrations are the same in both Reg. No. 4224024 (standard character mark) and Reg. No. 4039005 (design), with a few exceptions, as noted. In International Class 16, the goods are: educational and creative activities to color, read and learn, namely, paper place mats and paper floor mats; children’s books; children’s learning and activity books; flash cards; magnetic and wipe off boards in the nature of dry erase writing boards; school supply kits containing various combinations of selected school supplies, namely, writing instruments, pens, pencils, mechanical pencils, erasers, markers, crayons, highlighter pens, folders, notebooks, paper, protractors, paper clips, pencil sharpeners, writing grips, glue and book marks; crayons; book covers; book markers; blackboards and scrap books; book ends; children’s activity books; children’s interactive educational books; coloring books; comic books; educational publications, namely, educational learning cards, flash cards, activity cards, workbooks, textbooks, activity books, story books, puzzle books, printed puzzles, teacher guides, manuals, posters and educational booklets in the field of educational and creative activities to color [Reg. No. 4093005 also includes “[to] read and learn about arts, crafts and creativity”]; appointment books; birthday books; book covers; book markers; book marks; children’s activity books; children’s books; children’s interactive educational books; coloring books; comic books; flip books; stencil books; educational publications, namely, books, hand-outs, workbooks, journals, playbooks, worksheets and cards in the field of [Reg. No. 4224024 indicates the field as “art”; Reg. No. 4093005 indicates the field as “arts, crafts and creativity”]; calendars; calendars and diaries; maps; crayons; folding laminated paper write-on wipe clean children’s activity and travel mats and books; tote books, namely, children’s books with handles for carrying; chalk books, namely, children’s books that have a surface that can be written on with chalk; sticker books; children’s activity pages, namely, craft activities that are printed on individual paper pages; children’s craft and coloring pages, namely, craft and coloring activities that are printed on individual paper pages; learning books in the field of [Reg. No. 4039005 indicates the field as “arts, crafts and creativity”; Reg. No. 4224024 indicates the field as “reading”]. In International Class 24, the goods are: educational and creative activities to color, read and learn, namely, plastic and vinyl place mats. In International Class 28, the goods are: educational and creative activities to color, read and learn, namely, plastic, vinyl and paper puzzles and toys in the nature of paper dolls; articles of clothing for toys; Cancellation No. 92054875 4 alleges that Respondent’s use of its marks would cause a likelihood of confusion among purchasers because the marks are confusingly similar and the services in association with which Respondent uses its mark are within Petitioner’s “zone of natural expansion.”9 In its answer, Respondent denied the salient allegations of Petitioner’s Section 2(d) claim. bath toys; bathtub toys; cases for toy structures; children’s multiple activity toys; children’s multiple activity toys sold as a unit with printed books; children’s wire construction and art activity toys; construction toys; decorative toy mobiles and plush toys for children made of felt; drawing toys; mobiles; electronic learning toys; fantasy character toys; gift baskets containing plush toys; hand-powered non- mechanical flying toy; inflatable toys; modeled plastic toy figurines; molded toy figures; non-electronic toy vehicles; toy vehicles; party favors in the nature of small toys; play mats for use with toy vehicles; play huts in the nature of toy houses, plush toys; pop up toys; positionable printed toy figures for use in games; positionable printed toy figures for use in puzzles; positionable three dimensional toys for use in games; positionable toy figures; positionable two dimensional toys for use in games; printed positionable toys for use in children’s board games; printing toys; pull toys; children’s educational toys for developing fine motor, oral language, numbers, counting, colors and alphabet skills sold in a fabric bag which has a clear vinyl window for viewing small trinkets and toys securely contained within the bag itself; educational toys for teaching math principles to children, namely, manipulative blocks for displaying patterns and groupings; educational toys for teaching and testing knowledge relating to politics, political process, and history of the United States; educational toys for teaching music principles to children, namely, hand-held music notation symbols and music related figures, such as individual hand-held piano keys; puppets; puzzles; mobiles for children; crib mobiles; children’s dress-up accessories; hobby craft kit for making puppets; dress up kit primarily comprised of children’s dress up accessories [Reg. No. 4093005 also includes “travel toys, namely, plush toys.”]. 9 1 TTABVUE at 7 and 10. Petitioner also pleaded ownership of now-cancelled Reg. No. 2313407 for the mark , registered February 1, 2000; cancelled September 3, 2010. Any benefits conferred by the registration, including the evidentiary presumptions afforded by Section 7(b) of the Trademark Act, were lost when the registration was cancelled. See e.g., Time Warner Entertm’t Co. v. Jones, 65 USPQ2d 1650, 1654 n.6 (TTAB 2002) (expired registration “is not evidence of anything except that it issued”); In re Hunter Publ’g Co., 204 USPQ 957, 963 (TTAB 1979) (cancellation of applicant’s prior registration of mark in issue “destroys the Section 7(d) presumptions and makes the question of registrability ‘a new ball game’ which must be predicated on current thought”). Cancellation No. 92054875 5 The record includes the pleadings, and pursuant to Trademark Rule 2.122(b), Respondent’s registration files. However, the record does not include Petitioner’s registrations. In order to make a party’s pleaded registration of record, it must be introduced in accordance with either subsection of Trademark Rule 2.122(d). Pursuant to subsection 2.122(d)(1), a plaintiff’s registration will be received in evidence and made part of the record if the opposition or petition is accompanied by an original or photocopy of the registration prepared and issued by the United States Patent and Trademark Office showing both the current status of and current title to the registration, or by a current printout of information from the electronic database records of the USPTO showing the current status and title of the registration. Pursuant to subsection 2.122(d)(2), a plaintiff may introduce a pleaded registration by appropriate identification and introduction during the taking of testimony or by filing a notice of reliance, which shall be accompanied by a copy (original or photocopy) of the registration prepared and issued by the Patent and Trademark Office showing both the current status of and current title to the registration. The notice of reliance shall be filed during the testimony period of the party that files the notice. See also TBMP § 704.03(b)(1)(A) and authorities cited in that section. As noted supra, n.7, Petitioner’s pleaded marks were the subject of pending applications at the time the pleadings were filed. Accordingly, Petitioner could not have availed herself of the benefit of Trademark Rule 2.122(d)(1). Although the applications were listed on the ESTTA filing form, the mere inputting of an application or registration number, when prompted by ESTTA to list “Marks Cited by Petitioner as Basis for Cancellation,” does not make the pleaded application or Cancellation No. 92054875 6 subsequent registration of record. See Melwani v. Allegiance Corp., 97 USPQ2d 1537, 1540 (TTAB 2010). Thus, because Petitioner did not introduce the registrations during trial pursuant to Trademark Rule 2.122(d)(2), Petitioner’s registrations are not of record in this case. This failure of evidence impacts Petitioner’s ability to establish standing as discussed below. Standing is a threshold issue that must be proven in every inter partes case. Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). As the plaintiff in this proceeding, Petitioner has the burden of proof to establish, by a preponderance of the evidence, that she has standing and a ground upon which relief may be granted. In the case at hand, there is no record evidence that proves Petitioner’s standing. The live registrations do not provide a basis for Petitioner’s standing because they are not in the record, and Petitioner’s prior registration cannot demonstrate standing because it has expired. Nor can Petitioner rely on the common-law use pleaded in her petitions to cancel because Petitioner has presented no evidence of use of the marks. In the alternative, we may look to the admissions in Respondent’s answer for this purpose, but, as noted above, Respondent denied all of the salient allegations of the petitions to cancel. Fed. R. Civ. P. 8(b). Thus, there are no admissions in Respondent’s answer regarding Petitioner’s validity, ownership or exclusive right to use the marks in her pleaded registrations, and no admissions as to alleged common-law rights to the marks.10 In 10 Curiously, Petitioner’s brief was filed on the last day of her trial period and not during the briefing stage. Nonetheless, as no objection was made to the filing as premature, and inasmuch as it is styled “Petitioner’s Trial Brief,” we have considered Petitioner’s filing as her main trial brief. Cancellation No. 92054875 7 short, Petitioner has failed to prove her standing in this proceeding. Petitioner’s failure to prove her standing is a sufficient basis, by itself, to dismiss the proceeding, and we dismiss Petitioner’s claims on that basis alone.11 In the brief, Petitioner references discovery materials, namely, “Petitioner’s First Set of Interrogatories, Requests for Admissions, and Requests for Production.” These discovery requests form part of the history of the case, but they are not part of the evidentiary record for purposes of trial. First, although these materials were filed with the Board during the discovery stage, they were not accompanied by a motion relating to discovery and would not have been considered even at the discovery stage. See Trademark Rule 2.120(j)(8) (requests for discovery should not be filed with the Board except when submitted with a motion relating to discovery or under notice of reliance during a party’s testimony period). Even had Petitioner’s discovery requests been properly filed in connection with a discovery motion, attaching discovery materials to a motion relating to discovery merely makes them of record for purposes of consideration of the motion only. Cf. Express Mktg. & Dev. Corp. v. Gilad Dev. Corp., 94 USPQ2d 1294, 1301 n.5 (TTAB 2010) (evidence filed in connection with motion for summary judgment is of record only for consideration of the motion); Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1405 n.12 (TTAB 1998) (no consideration given to certain summary judgment evidence because the evidence was not introduced during trial period); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1465 n.2 (TTAB 1993) (same). Further, had Petitioner’s discovery requests been introduced at trial, which they were not, the interrogatories and document production requests themselves have no probative value. As to the requests for admissions, while Petitioner argues in her brief that Respondent did not answer the requests for admission, there is no evidence to support Petitioner’s assertions. “Factual statements made in a party’s brief on the case can be given no consideration unless they are supported by evidence properly introduced at trial.” TBMP § 704.06(b). Although the admissions may be deemed admitted by operation of Fed. R. Civ. P. 36(a)(3) for failure to answer, inasmuch as Petitioner did not file, during her testimony period, a copy of the request for admissions and a statement that Respondent failed to respond thereto, they are not of record in this case. Trademark Rule 2.120(j)(3)(i). Petitioner’s reference in her trial brief to the discovery requests, filed earlier in the Board proceeding, do not make them of record for final decision. TBMP § 801.01 (“A brief may not be used as a vehicle for the introduction of evidence.”). Cf. Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1955 (TTAB 2008) (“Evidence submitted outside of the trial periods - including that attached to briefs - is untimely, and will not be considered”) (referencing TBMP § 704.05(b)). In sum, the discovery requests, including any admissions deemed admitted, are not of record in this case. As to Petitioner’s request, made in her brief, that we find Respondent has forfeited its right to object to the interrogatories on their merits, we deny such request because it has no relevance at this stage in the proceeding, and is untimely. 11 Apart from our conclusion regarding standing, we also find that on this record, Petitioner cannot prevail on the likelihood of confusion ground, as we have no evidence of Petitioner’s ownership of the pleaded marks or registrations therefor, or evidence of Petitioner’s use of her pleaded marks. Thus, neither priority nor likelihood of confusion can be determined. Cancellation No. 92054875 8 Decision: The petitions to cancel Reg. Nos. 3590418 and 3969853 are denied.