Beau L. Tardyv.Wild Brain Entertainment, Inc.Download PDFTrademark Trial and Appeal BoardDec 13, 2016No. 91205896 (T.T.A.B. Dec. 13, 2016) Copy Citation This Opinion is Not a Precedent of the TTAB Hearing: December 8, 2016 Mailed: December 13, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Beau L. Tardy v. Wild Brain Entertainment, Inc. _____ Opposition No. 91205896 _____ Wendy Peterson of Not Just Patents LLC, for Beau L. Tardy. Jonathan D. Reichman and William M. Merone of Kenyon & Kenyon LLP, for Wild Brain Entertainment, Inc. _____ Before Zervas, Kuczma and Greenbaum, Administrative Trademark Judges. Opinion by Greenbaum, Administrative Trademark Judge: Wild Brain Entertainment, Inc. (“Applicant”) seeks registration on the Principal Register of the mark DIZZY (in standard characters) for a variety of electrical and scientific apparatus including “motion picture films featuring music, animated cartoons, live-action performances and live action performances by costumed Opposition No. 91205896 - 2 - characters all in the field of children’s education” in International Class 9.1 In his Fourth Amended Notice of Opposition, Beau L. Tardy (“Opposer”) opposes registration of Applicant’s mark on the ground of no bona fide intent to use the mark in commerce.2 Applicant, in its answer, denied the salient allegations of the notice of opposition.3 Both parties filed briefs on the case, and Opposer filed a rebuttal brief. The Board held an oral hearing on December 8, 2016. I. Evidentiary Issues Applicant has objected to three of the six exhibits that Opposer submitted under his three Notices of Reliance (“NOR”) on grounds of admissibility or hearsay. We address these objections in turn. Exhibit B: Opposer submitted Applicant’s Responses and Supplemental Responses to Opposer’s Document Requests as Exhibit B to Opposer’s First NOR.4 Responses to requests for documents are only admissible to show that a party affirmatively has stated that there are no responsive documents. See City Nat’l Bank v. OPGI Mgmt GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1674 n.10 (TTAB 1 Application Serial No. 85509929 was filed on January 5, 2012, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. 2 32 TTABVUE (Fourth Amended Notice of Opposition). In an April 28, 2014 Board Order, the Board accepted the Fourth Amended Notice of Opposition as the operative pleading. 36 TTABVUE 1. 3 37 TTABVUE. Applicant also denied the salient allegations of the three prior notices of opposition. See 4 TTABVUE, 19 TTABVUE, and 31 TTABVUE. 4 60 TTABVUE 48. Opposition No. 91205896 - 3 - 2013); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1038 n.7 (TTAB 2012). However, as Applicant points out, none of Applicant’s responses contain such a statement. In fact, Applicant objected to most of the requests as irrelevant or responded “not applicable.” And in its supplemental response to Opposer’s request for documentary evidence of Applicant’s “firm plans for marketing and selling” the goods identified in the involved application, Applicant stated that it would produce whatever non-privileged and responsive documents it had in its possession, custody, or control.5 Applicant’s Responses and Supplemental Responses to Opposer’s Document Requests therefore are not admissible, and will be given no further consideration. Exhibit E: Opposer attempted to submit testimony in the form of his declaration (with exhibits) as Exhibit E to Opposer’s Second NOR.6 Under the Board’s present rules, parties may only introduce testimony by declaration or affidavit upon written stipulation. Trademark Rule 2.123(b), 37 C.F.R. § 2.123(b). See Joel Gott Wines LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1427 (TTAB 2013) (motion to strike declaration of corporate officer and accompanying exhibits granted where parties did not stipulate to the submission of testimony by declaration or affidavit); Tri-Star Mktg. LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB 2007) (cannot submit declaration in lieu of testimony deposition unless parties so stipulate). Cf. N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1500 (TTAB 5 60 TTABVUE 67-68 (Supplemental Response to Request No. 25). 6 62 TTABVUE 2. Opposition No. 91205896 - 4 - 2015) (parties stipulated that witness testimony would be submitted solely by declaration and without cross-examination). However, as Applicant notes, there is no such stipulation of record. Accordingly, Opposer’s declaration and accompanying exhibits are inadmissible and will be given no further consideration. Exhibit F: Opposer submitted as Exhibit F to his Third NOR printouts from the GoDaddy.com database comprising (1) the “Screenshot History” for “Dizzycomics.com,” “Dizzyshop.com,” “Dizzytv.com,” and “Dizzyworldwide.com,” none of which mention Opposer, and (2) the “Whois Records” for those four domains and “Dizzycartoons.com” and “Dizzythecat.com,” which show on their face that Opposer is the Registrant of the domains.7 Applicant objects to the documents as hearsay. In his rebuttal brief, Opposer asserts that “[t]hese are not complicated documents. They are the same type of document that the USPTO accepts on a daily basis to show use in commerce. They were not business documents that require authentication.”8 Without accompanying relevant testimony, the Internet evidence is similar to printed publications, and is admissible only for what it shows on its face. See, e.g., 7- Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1717 n.2 (TTAB 2007) (materials made of record by NOR under Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e) not admissible for the truth of the matters contained therein unless a competent witness has testified to the truth of such matters). Opposer’s printouts from the GoDaddy.com website are admissible because they were printed from the Internet and bear URL 7 63 TTABVUE 3. 8 73 TTABVUE 5. Opposition No. 91205896 - 5 - addresses and the date they were accessed and printed. See Safer Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1039 (TTAB 2010). However, the documents are admissible only to show what has been printed, not the truth of the matter printed on them. Id. at 1040. The factual assertions (if any) set forth in the documents are mere hearsay unless supported by testimony. Fed. R. Evid. 801(c). II. Record The record consists of the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. §2.122(b), the file of involved application Serial No. 85509929. In view of the evidentiary rulings above, the record also includes Applicant’s admissions to Opposer’s Requests for Admission (Exhibit A to Opposer’s First NOR),9 the file of Opposer’s application Serial No. 85741800 for the mark DIZZY (Exhibit C to Opposer’s First NOR),10 TSDR printouts of files of several other abandoned applications owned by Applicant for the marks DIZZY, BIT, UMIGO, and TEAM SMITHEREEN (Exhibit D to Opposer’s First NOR),11 and copies of printouts from the GoDaddy.com website (Exhibit F to Opposer’s Third NOR) discussed above.12 Applicant submitted a Notice of Reliance on status and title copies of four registrations owned by Applicant for the marks UMIGO, WILD BRAIN, and POOCHINI.13 9 60 TTABVUE 8. 10 60 TTABVUE 70. 11 61 TTABVUE 2. 12 63 TTABVUE 3. 13 64 TTABVUE. Opposition No. 91205896 - 6 - Neither party submitted testimony. III. Applicable Law Standing is a threshold issue that must be proven in every inter partes case. See Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) (“The facts regarding standing … must be affirmatively proved. Accordingly, [plaintiff] is not entitled to standing solely because of the allegations in its [pleading].”). To establish standing in an opposition, the plaintiff must show both “a real interest in the proceedings as well as a ‘reasonable’ basis for his belief of damage.” See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). To prove a “real interest” in this case, Opposer must show that he has a “direct and personal stake” in the outcome herein, and that he is more than a “mere intermeddler.”)” Id. at 1026. See also Jewelers Vigilance Comm. Inc. v. Ullenberg Corp., 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988). Opposer must prove his standing (and his claim) by a preponderance of the evidence. Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1988); Cerveceria Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989). Opposer contends that he has standing as a competitor to Applicant based on purported admissions by Applicant that “opposer has cartoons dating from 2006 on his website dizzythecat.com”14 and of “dizzythecat.com, a cartoon character,”15 “publically available internet documents admitted by Opposer in its Notices of 14 65 TTABVUE 9. 15 65 TTABVUE 10. Opposition No. 91205896 - 7 - Reliance on their face [which] show DIZZY products for sale by opposer,”16 and because Opposer owns a trademark application that has been refused registration based on Applicant’s involved application.17 Based on the record before us, however, we find that Opposer has not established standing to be heard on his substantive claim. First, contrary to Opposer’s claim that Applicant has admitted “that Opposer has cartoons dating from 2006 on his website dizzythecat.com,”18 Applicant denied that Opposer owned the website, and stated that “the only content on the website dizzythecat.com appears to be a few very short cartoons dating from 2006 … which does not appear to be on or in connection with any goods or services whatsoever.”19 Applicant’s prior statements therefore are not admissions against interest, as Opposer apparently believes, and they have no probative value. See Kellogg Co. v. Pack’Em Enters. Inc., 14 USPQ2d 1545, 1548 n.6 (TTAB 1990) (pleadings only have evidentiary value if they contain an admission against interest). Likewise, contrary to Opposer’s claim that “Opposer is admitted as the owner of dizzythecat.com, a 16 73 TTABVUE 5. 17 65 TTABVUE 11. 18 65 TTABVUE 9. 19 The underlying allegation appears only in Opposer’s original Notice of Opposition (1 TTABVUE 3, ¶ 1), and Applicant’s response appears only in Applicant’s answer thereto (4 TTABVUE 2-3, ¶ 1). However, Opposer’s Fourth Amended Notice of Opposition is now the operative pleading, and as the Board previously explained, “Applicant’s answer to the original notice of opposition is no longer the operative responsive pleading herein, having been superseded by Applicant’s answer to the fourth amended notice of opposition that Applicant filed on May 28, 2014.” 43 TTABVUE 5. Opposition No. 91205896 - 8 - cartoon character, and has standing under Alcatraz Media Inc. v Chesapeake Marine Tours Inc., 107 USPQ2d 1750 (TTAB 2013),”20 Applicant made no such admissions. Second, while a plaintiff may establish its standing by proving that it owns a pleaded application that was refused registration based on likelihood of confusion with the involved mark, see, e.g., Empresa Cubana Del Tabaco v. Gen. Cigar Co., 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (plaintiff’s application refused based on defendant’s registrations), as Applicant points out, Opposer did not file his application to register DIZZY for goods in Class 9 until three months after he filed his original Notice of Opposition and “after, notably, Applicant denied Opposer’s allegations of standing in its original Answer and put Opposer on notice that standing would be at issue in this case.”21 Opposer has cited no authority, and we are aware of none, that allows a plaintiff to effectively bootstrap its standing by relying on an application that was filed several months after the Board proceeding commenced. Cf. Am Vitamin Prods. Inc. v. DowBrands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992) (plaintiff adequately pleaded standing by alleging that it has a bona fide intent to use the same mark for related goods, it is ready to file an intent-to-use application to register the mark, and it believes defendant’s registration will be cited as a bar to registration). 20 65 TTABVUE 10. 21 70 TTABVUE 15, referencing 4 TTABVUE ¶¶ 1 and 4. As noted above, Opposer submitted his pending application as Exhibit C to his First NOR, 60 TTABVUE 70. Opposition No. 91205896 - 9 - Third, absent testimony from a competent witness, which Opposer did not present, the printouts from the GoDaddy.com website22 are hearsay and do not prove that Opposer owns the DIZZY mark or that he has offered products for sale under that name. Moreover, to the extent Opposer is attempting to demonstrate his standing by relying on the specimens he submitted with his application,23 the specimens are only in evidence for what they show on their face. That the USPTO accepted Opposer’s specimens of use during ex parte examination does not constitute evidence of ownership or use of the mark DIZZY by Opposer. See, e.g., Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1403 n.4 (TTAB 2010) (citing In re Phillips Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002) (pending applications have “no probative value other than as evidence that the application was filed.”). As with the printouts from the GoDaddy.com website, without testimony identifying and authenticating the documents, any factual assertions in the specimens are mere hearsay. In sum, there is no record evidence that Opposer had a “direct and personal stake” in the DIZZY mark when he filed his original Notice of Opposition and that he is more than a “mere intermeddler.” Empresa Cubana Del Tabaco, 111 USPQ2d at 1062; Ritchie v. Simpson, 50 USPQ2d at 1026. See generally TBMP § 309.03(b) (June 2016). Accordingly, we find the Opposer has failed to prove his standing to oppose the registration of Applicant’s mark. 22 63 TTABVUE 3. 23 60 TTABVUE 94. Opposition No. 91205896 - 10 - Opposer’s failure to prove standing is a sufficient basis to dismiss the proceeding, and we dismiss Opposer’s claim on that basis alone.24 See Lumiere Prods., Inc. v. Int’l Tel. & Tel. Corp., 227 USPQ 892, 893 (TTAB 1985). Decision: The opposition is dismissed. 24 Accordingly, we need not and do not reach the merits of Opposer’s claim of no bona fide intention to use the mark. Nor do we need to discuss the remaining evidence of record as it pertains only to his claim, and has no bearing on whether Opposer has established his standing. Copy with citationCopy as parenthetical citation