Arab Film & Media Institutev.KARAMA

Trademark Trial and Appeal Board

Jul 9, 2021

92073748 (T.T.A.B. Jul. 9, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: July 9, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Arab Film & Media Institute
v.
Karama
_____

Cancellation No. 92073748
_____

Feras Mousilli of Lloyd Mousilli, LLC,
for Petitioner.
Respondent pro se.
_____

Before Zervas, Taylor, and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
I. Procedural Background
Respondent Karama, a nonprofit public benefit corporation organized under the
laws of the State of California, owns a Supplemental Register registration for the
standard character mark SAN DIEGO ARAB FILM FESTIVAL, for “entertainment
services, namely, planning and conducting a series of film festivals; organizing film
festivals for cultural or entertainment purposes,” in International Class 41.1 It

1 Registration No. 5645512, issued on the Supplemental Register on January 1, 2019.
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disclaims “ARAB FILM FESTIVAL” as generic for its services.2 See In re the
Consumer Prot. Firm Pllc, 2021 USPQ2d 238, *23-24 (TTAB 2021) (“Applicant
disclaimed FIRM.COM on the Supplemental Register and therefore has conceded it
is generic.”) (citing TMEP § 1213.03(a)); see also In re Haden, 2019 USPQ2d 467424,
at *5 (“Generic matter must be disclaimed to permit registration on the Supplemental
Register.”).
Petitioner, Arab Film & Media Institute (formerly named “Arab Film Festival
Inc.”),3 another nonprofit public benefit corporation organized under the laws of the
State of California, petitions for cancellation of Respondent’s registration under
Trademark Act Section 2(d), on the basis of likelihood of confusion with its claimed
common law mark ARAB FILM FESTIVAL for entertainment services, namely,
planning and conducting a series of film festivals. 15 U.S.C. §§ 1052(d), 1064, 1092.4
In its Answer, Respondent denies most of the salient allegations of the petition for
Cancellation, although it admits, in pertinent part, that the parties’ services are
identical, and that Petitioner applied to register the standard character mark ARAB
FILM FESTIVAL (with “FILM FESTIVAL” disclaimed) on the Supplemental
Register for use with “entertainment services, namely, planning and conducting a
series of film festivals” in International Class 41, but received a nonfinal office action

2 See Respondent’s ACR brief, 23 TTABVUE 3, 8.
3 Petitioner filed its Petition for Cancellation under its former name, Arab Film Festival Inc.
1 TTABVUE. During the course of this proceeding, it submitted a document showing a change
of its corporate name, as filed with the State of California, to Arab Film & Media Institute.
So the Board, on its own initiative, changed the caption of this proceeding to reflect the name
change. 12 TTABVUE 2.
4 Petition for Cancellation, 1 TTABVUE.
Cancellation No. 92073748
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refusing registration and suspending consideration of Petitioner’s application based
in part on likelihood of confusion with Respondent’s mark.5 Respondent further
pleads, however, that Petitioner’s claimed common law mark, ARAB FILM
FESTIVAL, is merely descriptive and has not acquired distinctiveness, as
“[p]etitioner has never enjoyed exclusive use of the term ‘Arab Film Festival’ in
commerce,’ and ‘cannot proscribe others from using the term ‘Arab Film Festival.’”6
Respondent pleads that the term “is not a protectable mark the use of which would
establish priority over any registered mark.” Indeed, Respondent pleads, it “has
disclaimed the term ‘Arab Film Festival,’ intentionally to recognize that other
organizers of Arab film festivals may want to offer similar services and to distinguish
themselves by combining that term with other unique identifiers.”7
In view of Respondent’s admissions that Petitioner’s application to register ARAB
FILM FESTIVAL for identical services has been suspended and could be refused
registration due to Respondent’s subject Registration, there is no dispute that
Petitioner is entitled to a statutory cause of action, formerly known as “standing.”8
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.2d 1270, 111 USPQ2d 1058,
1062-63 (Fed. Cir. 2014) cited in TPI Holdings, Inc. v. Trailertrader.com, LLC, 126
USPQ2d 1409, 1413 (TTAB 2018) (standing established by USPTO Office Action

5 Answer, ¶¶ 6, 12, 14; Petitioner’s involved application was Application Serial No. 87793324,
filed on February 11, 2018, and suspended pending disposition of this cancellation
proceeding.
6 Answer, “Defenses” ¶¶ 2-3, 13 TTABVUE 6.
7 Answer, ¶¶ 8, 11, 13 TTABVUE 3-5.
8 See Respondent’s ACR brief, 23 TTABVUE 5-6 (recounting the admissions in Respondent’s
Answer).
Cancellation No. 92073748
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suspending application pending possible refusal to register based on alleged
likelihood of confusion)); see also Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1383
& n.2 (TTAB 1991) (standing established by defendant’s admission in its answer).
Petitioner’s cause of action is within the zone of interests protected by the applicable
statutes, and it has a reasonable belief in damage proximately caused by continued
registration of Respondent’s mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298,
2020 USPQ2d 11277, at *6-7 (Fed. Cir. 2020), cert. denied, ___ U.S. ___ (2021);
Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020
USPQ2d 10837, at *3 (Fed. Cir. 2020).
The parties stipulated that the case should proceed via Accelerated Case
Resolution (ACR) in a modified cross motion for summary judgment format, whereby
“the Board may resolve genuine disputes of material fact and issue a final ruling
based on the parties’ ACR submissions.”9 See generally Sections 528.05(a)(2) and
702.04(b) of the TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(TBMP) (June 2021) cited in Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1602
(TTAB 2018). The Board approved the parties’ stipulation, stating that “[t]he Board
will expedite determination of this matter and render a final decision in accordance
with the evidentiary burden at trial, that is, by a preponderance of the evidence. See,
e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir.
2000).”10

9 Board Order, 18 TTABVUE 8.
10 Board Order, 18 TTABVUE 9.
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Petitioner’s ACR brief consisted of thirty paragraphs alleging, in essence, that
Respondent “fraudulently and maliciously” registered Petitioner’s common law
trademark, ARAB FILM FESTIVAL, which, it claims, has acquired distinctiveness.11
(Its Petition sounds in priority and likelihood of confusion, not fraud, so we take this
as an allegation that Respondent purposely adopted its mark knowing of Petitioner’s
claimed rights. See generally J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d
1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991) (“Whether there is evidence of intent
to trade on the goodwill of another is a factor to be considered….”)).
Petitioner’s brief, however, was deficient in at least two ways. First, as the Board
noted a week after Petitioner filed its brief, “It has come to the Board’s attention that
the filing does not include a certificate of service as required by Trademark Rule
2.119, 37 C.F.R. § 2.119. Petitioner is allowed until 10 DAYS from the date of this
order to submit its filing with a proper certificate of service, failing which the filing
will not be considered.”12 Petitioner never responded to this order, and filed nothing
further.
Second, Petitioner’s ACR brief contained no testimonial declaration, affidavit,
deposition or other form of evidence supporting the thirty allegations made in its
brief.13 It prefaces the allegations by stating that it is “stipulating to the following
State [sic] of Fact and Statements as to Procedure.”14 But a stipulation, by definition,

11 Petitioner’s ACR brief, 21 TTABVUE.
12 Board Order, 22 TTABVUE.
13 Petitioner’s ACR brief, 21 TTABVUE.
14 Petitioner’s ACR brief, 21 TTABVUE 2.
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is “[a] voluntary agreement between opposing parties concerning some relevant
point.” Covidien LP v. Erbe Electromedizin GmbH, 2019 USPQ2d 265006, at *2n.2
(TTAB 2019) (quoting BLACK’S LAW DICTIONARY (10th ed. 2014)). Here, aside from the
admissions Respondent made in its Answer, there was no such voluntary agreement.
As Respondent noted in its rebuttal brief, Petitioner “has made numerous allegations
of fact that Defendant disputes as false or misleading. [Petitioner] has not submitted
any evidence supporting its allegations of fact.”15
We accordingly deny the petition for cancellation.
II. Failure to Comply with Board Order Requiring a
Certificate of Service

Trademark Rule 2.119(a) requires that “Except for the notice of opposition or the
petition to cancel, every submission filed in the Office in inter partes cases, including
notices of appeal to the courts, must be served upon the other party or parties. Proof
of such service must be made before the submission will be considered by
the Office.” 37 C.F.R. § 2.119(a) (emphasis added). The TBMP echoes this
requirement: “When a party to an inter partes proceeding before the Board files a
submission required by 37 C.F.R. §2.119(a) to be served upon every other party to the
proceeding, proof that the required service has been made ordinarily must be
submitted before the filing will be considered by the Board.” TBMP § 113.02
(emphasis added).
The Board addressed this very issue in Coffee Studio LLC v. Reign LLC, 129
USPQ2d 1480 (TTAB 2019), a cancellation proceeding in which the respondent filed

15 Respondent’s Rebuttal brief, 24 TTABVUE 2.
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a motion to dismiss under Trademark Rule 2.132(a), but relied on the email notice
automatically generated by The Electronic System for Trademark Trials and Appeals
(ESTTA). Rejecting this approach, the Board declared:
Under Trademark Rule 2.119(a), 37 C.F.R. § 2.119(a), every submission
filed in an inter partes proceeding, except for the petition to cancel or notice
of opposition, must be served upon the other party together with a
certificate of service.
…

The automatically generated ESTTA filing notice does not constitute
service and does not relieve a party of its obligation to serve a copy of any
filing pursuant to the Rules; the filing notice and actual service of the
submission are independent of one another.
…

Because Respondent did not effect proper service in accordance with
Trademark Rule 2.119, Petitioner’s motion to strike is granted and
Respondent’s motion to dismiss will not be considered.

Id. at 1482.

Here, a fortiori, the Board repeatedly notified Petitioner of its responsibility to
provide proof of service under Rule 2.119. In its Order of November 18, 2020
acknowledging the parties’ stipulation to proceed via ACR, the Board emphasized:
Trademark Rules 2.119(a) and (b), 37 C.F.R. § 2.119(a) and (b), require that
every submission filed in a proceeding before the Board must be served
upon the other party or parties, and proper proof of such service must be
made before the submission will be considered by the Board. Accordingly,
all submissions filed in this proceeding must be accompanied by a
statement, signed by the attorney or other authorized representative,
attached to or appearing on the original submission when filed, clearly
stating the date and manner in which service was made, the name of each
party or person upon whom service was made, and the email address or
address. See TBMP § 113.03.
…
Strict compliance with the Trademark Rules of Practice and, where
applicable, the Federal Rules of Civil Procedure, is expected of all parties
Cancellation No. 92073748
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before the Board. McDermott v. San Francisco Women's Motorcycle
Contingent, 81 USPQ2d 1212, 1212 (TTAB 2006).16

When Petitioner’s ACR brief failed to comply with this requirement, the Board
reminded Petitioner of its responsibility, and afforded it the opportunity to correct its
error:
It has come to the Board’s attention that the filing does not include a
certificate of service as required by Trademark Rule 2.119, 37 C.F.R.
§ 2.119. Petitioner is allowed until 10 DAYS from the date of this order to
submit its filing with a proper certificate of service, failing which the filing
will not be considered. See Id.17

Petitioner utterly failed to respond, either to this Board Order or to Respondent’s
Rebuttal ACR brief, which observed that “Plaintiff has failed to file a proper ACR
brief even after being allowed additional time by order of the Board to cure the
deficiency of its original filing, failing which, the Board noted, the filing would not be
considered (see 22 TTABVUE).”18
Accordingly, given Petitioner’s failure to follow the applicable rules, despite
repeated reminders and opportunities to comply, its ACR brief will be given no
consideration. 37 C.F.R. § 2.119. See Coffee Studio v. Reign, 129 USPQ2d at 1482.
Although the Board may exercise its inherent authority to consider a filing on its
merits where service issues are present, id. at 1482n. 7, Petitioner’s brief, lacking
evidentiary support, has no merits to consider. We have not considered any
statements made by Petitioner in its brief that are unsupported by evidence in the

16 18 TTABVUE 2-3.
17 22 TTABVUE.
18 24 TTABVUE 2.
Cancellation No. 92073748
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record. See Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1725 n.7 (TTAB 2010).
“Attorney argument is no substitute for evidence.” Zheng Cai v. Diamond Hong, 901
F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (quoting Enzo Biochem, Inc. v.
Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005). “In view of
the foregoing, it is clear that petitioner has failed to establish any right to the relief
which it seeks.” Aloe Creme Labs., Inc. v. Bonne Bell, Inc., 168 USPQ 246, 247 (TTAB
1970) (denying petition to cancel registration on Supplemental Register) quoted in
Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1255 (TTAB 2012).
Petitioner has failed to carry its burden of proof for cancellation of Respondent’s
Registration. See Cunningham v. Laser Golf, 55 USPQ2d at 1848; TBMP § 702.04(a).
III. Decision

The Petition for cancellation is denied.