Birdwell Cleaning Products, Inc.v.Rick Russell

Trademark Trial and Appeal Board

Dec 2, 2014

No. 92055813 (T.T.A.B. Dec. 2, 2014)

This Opinion is not a
Precedent of the TTAB

Mailed: December 2, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Birdwell Cleaning Products, Inc.
v.
Rick Russell
_____

Cancellation No. 92055813
_____

Mark J. Zimmerman of Dealey Zimmerman Clark Malouf & Blend PC for Birdwell
Cleaning Products, Inc.

Amanda Patterson and William E. Chaltraw Jr. of Fishman Larsen Chaltraw &
Zeitler for Rick Russell.
_____

Before Seeherman, Cataldo and Adlin,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Petitioner, Birdwell Cleaning Products, Inc., has petitioned to cancel
Registration No. 2584141 owned by Respondent, Rick Russell, for the mark RING
AWAY in typed form, “RING” disclaimed.1 The registration issued on June 18, 2002

1 “Prior to November 2, 2003, ‘standard character’ drawings were known as ‘typed’
drawings. The mark on a typed drawing had to be typed entirely in capital letters. A typed
Cancellation No. 92055813
2
on the Supplemental Register.2 The goods are identified therein as “toilet ring
cleaner,” in International Class 3.
In its petition for cancellation, Petitioner alleges that it has made prior common-
law use of the designation RING AWAY as a mark for “a toilet cleaner”3 in the
nature of “an abrasive scouring screen”4 and that continued registration of
Respondent’s mark is likely to cause confusion, to cause mistake, or to deceive.5
In his answer, Respondent denied the salient allegations of the petition to
cancel. Respondent further asserted the affirmative defense of laches, and also
asserted as “affirmative defenses” matters that are more in the nature of
amplifications of his denials and have been so construed.6
The Record
By operation of the rules, the record in this case includes the pleadings and the
file of Respondent’s involved Registration No. 2584141. In addition, pursuant to
Trademark Rule 2.123(b), the parties stipulated that the testimony of any witness

mark is the legal equivalent of a standard character mark.” Trademark Manual of
Examining Procedure (“TMEP”) § 807.03(i) (October 2014).
2 Registration No. 2584141 originally issued to Jack Russell, Respondent’s father, who
subsequently assigned the entire interest in the registration to Respondent, recorded on
December 15, 2006 at Reel/Frame 3445/0203.
3 1 TTABVue 3. Citations to the briefs and record refer to TTABVUE, the Board’s publicly-
accessible online proceeding file, by prosecution history entry and page numbers.
4 7 TTABVue 8.
5 Petitioner’s likelihood of confusion claim is timely inasmuch as the involved registration
issued on the Supplemental Register. 15 U.S.C. § 1092. See also TBMP § 307.01 (June
2014) and authorities cited therein. In its petition to cancel, Petitioner further alleges that
the involved registration was obtained by fraud. However, this ground was not pursued at
trial and is deemed waived.
6 Respondent also asserted the equitable defenses of estoppel and unclean hands but did not
pursue them at trial. Accordingly, they are deemed waived.
Cancellation No. 92055813
3
could be presented by affidavit or declaration. The parties further stipulated to the
introduction of documentary evidence by affidavit or declaration, while reserving
the right to otherwise object to the evidence itself on any basis other than its
manner of submission.7
Pursuant to the above, during its assigned testimony period, Petitioner
submitted declarations, with exhibits, from the following individuals: Petitioner’s
President, David Birdwell; and Clint Blackmon, a former salesman for a third party
who assisted in development of packaging for Petitioner’s RING AWAY product.
Petitioner also submitted declarations from the following individuals: George Bond,
a former employee of Petitioner and its predecessor who built displays for
Petitioner’s products, including its RING AWAY product, and also worked as a
route salesman and plant manager for Petitioner; Dan Drysdale, a former route
driver for Petitioner; and Sadie Beth Hall, a former secretary and clerk, and later
Vice President and CFO for Petitioner.8
During his assigned testimony period, Respondent, Rick Russell, submitted his
declaration, with exhibits, in his capacity as President and co-owner of Clovis

7 The Board commends the parties for utilizing such evidentiary stipulations. See TBMP
§ 702.04(e) and authorities cited therein.
8 We note that Respondent has filed numerous objections against certain testimony and
exhibits introduced by Petitioner, largely on the basis of relevance. Ultimately, the Board is
capable of weighing the relevance and strength or weakness of the objected-to testimony
and evidence in this case, including any inherent limitations, and this precludes the need to
strike the testimony and evidence. Given the circumstances herein, we choose not to make
specific rulings on each and every objection. As necessary and appropriate, we will point out
in this decision any limitations applied to the evidence or otherwise note that the evidence
cannot be relied upon in the manner sought. While we have considered all the evidence and
arguments of the parties, we do not rely on evidence not discussed herein.
Cancellation No. 92055813
4
Janitorial Supply, Inc. (“CJS”).9 Respondent also submitted declarations from the
following individuals: Gracie Russell, co-owner and Chief Financial Officer of CJS;
Ana Arreola, a self-employed housekeeper; Wesley Cox, owner of Mirror Image
Janitorial Supply; Dianne Maynard, owner of the janitorial business Personal
Touch; Wallace Abbott, owner of the cleaning business Master Clean; Tony Lanni,
owner of California Building Maintenance; Don Casey, owner of Casey’s Building
Maintenance; and Alan Wahlstrom, owner of Sundance Janitorial Services.
Petitioner and Respondent filed main briefs.
Petitioner’s Standing
Standing is a threshold issue that must be proved in every inter partes case.
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982). In order to meet the standing requirement, a plaintiff need only show
that it has a real interest, i.e., a personal stake, in the outcome of the proceeding.
See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999); and
Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2012, 2023-24 (Fed. Cir. 1987).
Petitioner has proven it has made use of the term RING AWAY to identify an
abrasive mesh screen used to clean toilets. Petitioner’s reasonable belief that
Respondent’s registration of the mark RING AWAY, for a chemical toilet cleaning

9 In 1991, CJS was purchased by Respondent’s father, Jack Russell, from Irv Shackelford,
who founded CJS in 1979. In 2006, Respondent and his wife Gracie Russell purchased CJS
from Jack Russell. Respondent and Gracie Russell market and sell, inter alia, the goods
identified in the subject registration under the RING AWAY mark through CJS. 10
TTABVue 6-7.
Cancellation No. 92055813
5
product, is likely to cause confusion, mistake, or deception within the meaning of
Section 2(d) of the Trademark Act is sufficient to show that Petitioner has a real
interest in this proceeding and, therefore, has standing. See Toufigh v. Persona
Parfum Inc., 95 USPQ2d 1872, 1874 (TTAB 2010) (standing found where a
petitioner holds a reasonable belief that “there is a likelihood of confusion between
the marks, or that the presence on the register of the respondent’s mark may hinder
the petitioner in using or registering [its] mark”).
Additionally, Respondent sent a cease and desist letter to Petitioner asserting
his rights in the registered mark and requesting that Petitioner “immediately cease
and desist from infringing upon the trademark of Mr. Russell.”10 This cease and
desist letter provides additional evidence that Petitioner has business interests that
have been affected, i.e., a real interest in the proceeding, and thus, has standing.
See Ipco Corp. v. Blessings Corp., 5 USPQ2d 1974, 1976-77 (TTAB 1988).
Laches
Before addressing Petitioner’s ground for cancellation, we first must consider
Respondent’s affirmative defense of laches. To prevail on this defense, Respondent
must establish that Petitioner unduly or unreasonably delayed in asserting its
rights, and prejudice to Respondent resulted from the delay. Bridgestone/Firestone
Research Inc. v. Automobile Club de l'Ouest de la France, 245 F.3d 1359, 58
USPQ2d 1460 (Fed. Cir. 2001). There is testimony that Petitioner first became
aware of Respondent and his involved mark on or about August 31, 2011, upon

10 7 TTABVue 49.
Cancellation No. 92055813
6
receipt of the above-noted cease and desist letter.11 However, precedential case law
by the Board and our primary reviewing court, the Federal Circuit, has made clear
that for purposes of determining whether a party has “slept on its rights,” we
measure delay from the date upon which a plaintiff could have taken action against
a defendant. See National Cable Television Ass’n, Inc. v. American Cinema Editors,
Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991) (laches runs from the
time from which action could be taken against the trademark rights inhering upon
registration); and Bridgestone/Firestone, 58 USPQ2d at 1462-63.
The earliest possible date for purposes of determining whether there has been
undue delay is the June 18, 2002 date the subject registration issued on the
Supplemental Register. Petitioner brought this cancellation proceeding on July 2,
2012, approximately ten years after the registration date. While we observe that the
Trademark Act allows a cancellation action to be brought at any time in the case of
a registration issued on the Supplemental Register, a ten year delay in bringing
such an action is significant. See, e.g., Teledyne Technologies Inc. v. Western
Skyways Inc., 78 USPQ2d 1203 (TTAB 2006) (three and one-half year delay in
bringing petition to cancel constituted undue delay). In addition, Petitioner does not
offer any explanation regarding the delay, and absence of a reasonable excuse for its
inaction weighs against it in our determination of whether its delay may be
considered reasonable. See Id. at 1211. Respondent has not made of record evidence
of the extent of commercial use of his mark, nor has Petitioner acknowledged such

11 Id.
Cancellation No. 92055813
7
use. Cf. Bridgestone/Firestone, 58 USPQ2d at 1463. Nonetheless, the length of
elapsed time between registration of Respondent’s mark and Petitioner’s
commencement of this cancellation action itself is sufficient to find that Petitioner
has delayed in seeking to cancel Respondent’s registration, in terms of meeting the
first element of the test.
As for prejudice resulting to Respondent from Petitioner’s delay in asserting its
rights, it is settled that “two general categories of prejudice may flow from
unreasonable delay: prejudice at trial due to loss of evidence or memory of
witnesses; and economic prejudice based on loss of time or money or foregone
opportunity.” Id., citing A.C. Aukerman Co., v. R.L. Chaides Constr. Co., 960 F.2d
1020, 22 USPQ2d 1321 (Fed. Cir. 1992) (en banc). Respondent states in his brief
that in reliance on Petitioner’s silence, Respondent
by and through the prior owners of Clovis Janitorial, has marketed
and sold its toilet cleaning product using the “RING AWAY” mark for
several decades. Russell, as well as the prior owners of Clovis
Janitorial, invested their time and money in development of the Ring
Away product. Upon his purchase of Clovis Janitorial, Russell’s father,
the prior owner of Clovis Janitorial, marketed Clovis Janitorial’s own
line of cleaning chemicals under the brand “CJ’s” to further distinguish
its products from that of its competitors. (Declaration of Rick Russell,
Exhibit “H” attached thereto.) In doing so, Russell hired professional
personnel, including a chemist and Mission Laboratories, to assist with
branding CJ’s products, including Ring Away (Declaration of Rick
Russell, Exhibits “G” and “H” attached thereto.) Russell has continued
to market and sell CJ’s Ring Away product since his purchase of Clovis
Janitorial in 2006.12

The exhibits supporting Respondent’s assertions consist of copies of three printed
invoices, dated March 9, 2001, for purchase of a single container of Respondent’s

12 15 TTABVue 13.
Cancellation No. 92055813
8
RING AWAY product and a copy of a printed article from an unknown source, hand
dated February 20, 1997, discussing Respondent obtaining a loan from the Small
Business Administration to purchase Clovis Janitorial Supply. The article contains
the following reference to the mark and goods at issue:
Clovis Janitorial Supply is a small business, employing seven people,
including himself and his wife, Beverly Russell. But it has developed
its own line of 10 cleaning chemicals called CJ’s, developed by a
chemist whom Russell turns to when he needs a new product. For
example, “Ring Away” was developed to fight calcium deposits caused
by hard water in the central Joaquin Valley.13

Respondent’s testimony declaration and exhibits fail to provide any evidence of
Respondent’s efforts to promote or market the goods under his RING AWAY mark
during the approximately ten years from registration thereof to Petitioner’s filing of
its cancellation action, or of any specific prejudice experienced by Respondent as a
result of Petitioner’s delay in bringing the instant cancellation proceeding. Notably,
Respondent provides no details regarding the extent of his expenditures, or those of
the prior owners of CJS, directed toward developing, advertising and marketing his
RING AWAY product (as opposed to products sold under the “CJ’s” mark) such that
we may find Respondent suffered prejudice. In short, Respondent has provided no
evidence of any actions or expenditures on his part that were made related to the
RING AWAY mark, much less in reliance on Petitioner’s inaction. As such, we find
insufficient support for Respondent’s claim that it has experienced economic
prejudice resulting from Petitioner’s delay in bringing this cancellation action. Nor

13 15 TTABVue 31.
Cancellation No. 92055813
9
has Respondent argued or introduced evidence that he has suffered prejudice at
trial due to loss of evidence or memory of witnesses.
In light of the foregoing, we find that Respondent has not demonstrated that
Petitioner’s claim is barred by laches. We turn then to Petitioner’s pleaded ground
of likelihood of confusion.
Priority of Use
Because Petitioner has not pleaded ownership of any registered trademark, it
must rely on its common law use of RING AWAY as a trademark to prove priority.
In order for a plaintiff to prevail on a claim of likelihood of confusion based on its
ownership of common law rights in a mark, the mark must be distinctive,
inherently or otherwise, and plaintiff must show priority of use. See Otto Roth & Co.
v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). “Thus, even if
something is used as a trademark, if it is not distinctive, the user does not have a
trademark because he has no existing trademark rights.” Id. at 44.
Under the rule of Otto Roth, a party opposing registration of a
trademark due to a likelihood of confusion with his own unregistered
term cannot prevail unless he shows that his term is distinctive of his
goods, whether inherently or through the acquisition of secondary
meaning or through “whatever other type of use may have developed a
trade identity.” Otto Roth, 640 F.2d at 1320, 209 USPQ at 43. The Otto
Roth rule is applicable to trademark registration cancellation
proceedings as well.

Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039, 1042 (Fed. Cir.
1990). Accordingly, a party seeking to cancel the registration of another’s mark on
the basis of likelihood of confusion with its own unregistered mark must establish
Cancellation No. 92055813
10
that the unregistered mark is distinctive of its goods or services either inherently or
through the acquisition of secondary meaning. Id.
In this case, neither party addressed the issue of the distinctiveness of
Petitioner’s unregistered RING AWAY mark. Rather, it appears that because both
parties purport to use the designation RING AWAY as a mark, they view it as a
distinctive mark, and the question of lack of distinctiveness never occurred to
either. Inasmuch as the parties have treated their marks as being inherently
distinctive, and have viewed the issue of priority as turning on when each party
first began using the mark RING AWAY, we will do the same in making our
determination.14
In his declaration, David Birdwell, President of Petitioner, asserts that
Petitioner was formed in 1945 and that he purchased it from his father in 1982.15
Mr. Birdwell further asserts that Petitioner “began manufacturing and distributing
the product named “Ring Away” in about 1982”16 and that “sales of the product
commenced nationally within a month of its introduction.”17 Mr. Birdwell further
asserts that Petitioner “experienced a catastrophic fire at its facility”18 and that

14 We hasten to add that even if we treated Petitioner’s unregistered mark and
Respondent’s mark issued on the Supplemental Register as requiring proof of acquired
distinctiveness to show which has priority, the result would be the same. See, e.g., Perma
Ceram Enterprises Inc. v. Preco Indus., Ltd., 23 USPQ2d 1134, 1137 n.11 (TTAB 1992); and
Kwik-Kopy Franchise Corp. v. Dimensional Lithographers, Inc., 165 USPQ 397, 398-99
(TTAB 1970).
15 7 TTABVue 7.
16 Id at 8.
17 Id.
18 Id.
Cancellation No. 92055813
11
many of Petitioner’s records concerning the RING AWAY product were destroyed in
that fire.19 As exhibits to his declaration, Petitioner submitted copies of photographs
from the 1980s and 1990s purporting to show its RING AWAY product in various
settings. However, we agree with Respondent that the quality of the photos is such
that it is impossible to discern whether they include Petitioner’s products branded
with its RING AWAY mark. Simply put, the photographs are too dark to see any of
the details contained therein. As such, we can give these photographs little, if any,
probative value on the issues before us in this case. See, e.g., Hard Rock Café
Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998) (“It is [a party’s]
responsibility to review documents it submits as evidence to ensure that such
submissions meet certain basic requirements, such as that they are legible ... .”).
In his declaration, Mr. Clint Blackmon asserts that “in the early 1980s I assisted
with the development of a packaging card for a product then sold by [Petitioner]
called ‘Ring Away.’”20 As an exhibit to his declaration, Mr. Blackmon submitted a
copy of such a packaging card displaying the designation RING AWAY.21
In his declaration, Mr. George Bond asserts that he first began working for
Petitioner in 1985 building product displays for customers, and that “every display
contained the product called Ring Away. I recall this because Ring Away was one of
our best selling items.”22

19 Id. Petitioner submitted as an exhibit to Mr. Birdwell’s declaration, inter alia, a copy of
the fire report relating to this incident.
20 Id. at 105.
21 Id. at 106.
22 Id. at 108.
Cancellation No. 92055813
12
In his declaration, Mr. Dan Drysdale asserts that from 1984 until 2012 he drove
a delivery truck for Petitioner and that “throughout my entire tenure with Birdwell,
I carried the product Ring Away. Ring Away was in my truck from 1984 until
2012.”23
In her declarations, Sadie Beth Hall asserts that “definitely before 1985,
[Petitioner] brought out the Ring Away product. “I participated in the design of the
packaging of the product as well as coming up with the name.”24
As for Respondent’s evidence of use, in his declaration Respondent asserts “In
1991, Owner Irv Shackelford sold CJS to my father, Jack Russell, at which time I
became an employee of CJS. At the time of this purchase and my employment with
CJS, CJS was selling the Ring Away product.”25 A photocopy of a coupon
advertising the RING AWAY product, submitted with Respondent’s declaration,
includes the hand-written date of April 12, 1997.26 Photocopies of additional
coupons for Respondent’s RING AWAY product indicate that they expire on
December 31. 1995.27 A photocopy of what appears to be a proof for a label for
Respondent’s RING AWAY product is dated September 22, 1997.28 Invoices for
Respondent’s RING AWAY product are dated March 9, 2001.29

23 Id. at 111.
24 Id. at 113.
25 10 TTABVue 5.
26 Id. at 23.
27 Id. at 24.
28 Id. at 25.
29 Id. at 28-30.
Cancellation No. 92055813
13
In her declaration, Gracie Russell asserts that since she and Respondent
purchased CJS in 2006, they have continued to market and sell the RING AWAY
product through CJS.30
In her declaration, Ana Arreola asserts that “from the 1980s through the present
date, I have been self-employed as a professional housekeeper.”31 “I began
purchasing the product Ring Away from Clovis Janitorial Supply in the early 1980s,
and have continued to purchase Ring Away since this time.”32
In his declaration, Wesley Cox asserts that he is the owner of Mirror Image
Janitorial Supply, and that “In the early 1980s, I purchased the Ring Away product
from Irv Shackleford, the prior owner of Clovis Janitorial Supply.”33 “I have
continuously purchased Ring Away from the Clovis Janitorial Supply from the early
1980s up through the present date.”34
In her declaration, Dianne Maynard asserts that she is the owner of Personal
Touch, a janitorial business, and that she “began purchasing the product Ring Away
from Clovis Janitorial Supply in the early 1980s, and have continued to purchase
Ring Away since this time.35
In his declaration, Wallace Abbott asserts that he is the owner of Master Clean,
a full service cleaning business, and that “in the early 1990s, I began purchasing

30 Id. at 32.
31 Id. at 33.
32 Id.
33 Id. at 34.
34 Id.
35 Id. at 36.
Cancellation No. 92055813
14
the Ring Away product from Clovis Janitorial Supply.”36 “I have continuously
purchased Ring Away from the Clovis Janitorial Supply from the early 1990s up
through the present date.”37
In his declaration, Tony Lanni asserts he is the owner of California Building
Maintenance, and that “I have purchased my janitorial supplies, including the
product Ring Away, from Clovis Janitorial Supply since 1991.”38
In his declaration, Don Casey asserts he is the owner of Casey’s Building
Maintenance, and that “I have purchased my janitorial supplies, including the
product Ring Away, from Clovis Janitorial Supply since the early 1980s” and that
he has continued to purchase such supplies up through the present date.39
In his declaration, Alan Wahlstrom asserts he is the owner of Sundance
Janitorial Services, and that he “began purchasing the product Ring Away from
Clovis Janitorial Supply in the early 1990s” and continues to purchase such
supplies up through the present date.40
The testimony declaration of Mr. Birdwell establishes that Petitioner began
using the common law mark RING AWAY in connection with a toilet cleaning
product “in about 1982,” and that the mark has been used continuously since then.
The additional testimony declarations support this finding inasmuch as all
declarants point to dates in “the early 1980s,” “1984” and “definitely before 1985.”

36 Id. at 37.
37 Id.
38 Id. at 38.
39 Id. at 39.
40 Id. at 40.
Cancellation No. 92055813
15
Because Petitioner does not provide an exact date in 1982 that it began using the
RING AWAY mark, for purposes of determining priority of use, Petitioner’s date of
first use of the mark RING AWAY is construed as December 31, 1982. EZ Loader
Boat Trailers, Inc. v. Cox Trailers, Inc., 213 USPQ 597, 598 n.5 (TTAB 1982)
(documentary evidence showed first use in 1977, the month and day were unknown,
therefore, the Board could not presume any date earlier than the last day of the
proved period). See also Osage Oil & Transportation, Inc. v. Standard Oil Co., 226
USPQ 905, 911 n.22 (TTAB 1985) (evidence established first use in 1968-1969,
therefore December 31, 1969 is date of first use).
It is well-settled that in the absence of any evidence of earlier use, the earliest
date upon which a respondent may rely is the filing date of the application
underlying its challenged registration. See Trademark Act Section 7(c), 15 U.S.C.
§1057(c). See also Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840
(TTAB 1995). In this case, application Serial No. 78076515, that matured into
Respondent’s involved Registration No. 2584141, was accorded a filing date of July
30, 2001. In that underlying application, Respondent asserted December 30, 1992 as
a date of first use and first use in commerce of RING AWAY as a mark. In his brief,
Respondent asserts that “during the 1980s, Clovis Janitorial (now co-owned by
Respondent) marketed and sold a toilet cleaning product by the name of ‘Ring
Away.’”41 In support of his contentions, Respondent submitted the declarations
discussed above. Respondent’s assertion of December 30, 1992 as a date of first use

41 12 TTABVue 7.
Cancellation No. 92055813
16
of RING AWAY in commerce in the application underlying the registration at issue
is supported by his own declaration, as well as those of Mr. Abbott, Mr. Lanni and
Mr. Wahlstrom. Respondent’s assertion of “early 1980s” as a date of first use in his
brief is supported by the declarations of Ms. Arreola, Mr. Cox, Ms. Maynard, and
Mr. Casey.
It further is settled that a party seeking to assert and prove a first use date prior
to the date indicated in its application faces a heavy burden of proof. In that regard,
our primary reviewing Court has stated as follows:
Where an applicant seeks to prove a date earlier than the date alleged
in its application, a heavier burden has been imposed on the applicant
than the common law burden of preponderance of the evidence. See
Rockwood Chocolate, 372 F.2d at 554, 152 USPQ at 600 (“proof of such
earlier date must be clear and convincing”); Elder Mfg. Co. v.
International Shoe Co., 194 F.2d 114, 118, 92 USPQ 330, 332 (CCPA
1952) (“proof must be clear and convincing”). The reason for such an
increased evidentiary burden, supported by common sense, is that a
change of position from one “considered to have been made against
interest at the time of filing of the application”, Stanspec Co. v.
American Chain & Cable Co., 531 F.2d 563, 567, 189 USPQ 420, 424
(CCPA 1967), requires enhanced substantiation.

Hydro-Dynamics Inc. v. George Putnam & Co. Inc. 1 USPQ2d 1772, 1773.
Respondent does not explain why he asserted December 30, 1992 as a date of
first use and first use in commerce of RING AWAY in the application underlying
the involved registration, but subsequently asserts “early 1980s” as such a date in
his brief based upon the testimonial declarations discussed above. We note that,
based upon the testimony and evidence of record, CJS was established in 1979;
Respondent’s father purchased CJS, the company that produces, markets and sells
Respondent’s RING AWAY product, in 1991; Respondent did not begin working at
Cancellation No. 92055813
17
CJS until 1991 and only became the co-owner of CJS in 2006. Thus, it is possible
that the original applicant, Respondent’s father, was not aware of the earlier use by
CJS of RING AWAY by its prior owner at the time he signed the application.
Petitioner argues in its brief that the testimonial declarations introduced by
Respondent in which the declarants indicate use by Respondent of RING AWAY as
early as “the 1980s” is not corroborated by any documentary evidence. We observe,
however, that on the limited record in this case, neither party’s testimonial
declarations are supported by documentation probative of their asserted dates of
first use. Rather, all documentation submitted by both parties points to later dates
of use. Thus, we must rely on each party’s testimonial declarations alone to
determine the issue of priority. In that regard, it is settled that oral testimony, even
of a single witness, if “sufficiently probative,” may be sufficient to prove priority.
Powermatics, Inc. v. Glebe Roofing Products Co., 341 F.2d 127, 144 USPQ 430
(CCPA 1965); and Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1108
(TTAB 2007). In the present case, the testimony declarations of Respondent’s
witnesses Ms. Arreola, Mr. Cox, Ms. Maynard, and Mr. Casey are not “characterized
by contradictions, inconsistencies and indefiniteness,” but rather each carries with
it “conviction of its accuracy and applicability.” B.R. Baker Co. v. Lebow Bros., 150
F.2d 580, 66 USPQ 232 (CCPA 1945). See also National Bank Book Co. v. Leather
Crafted Products, Inc., 218 USPQ 826, 828 (TTAB 1993) (oral testimony may be
sufficient to prove the first use of a party’s mark when it is based on personal
knowledge, it is clear and convincing, and it has not been contradicted). The
Cancellation No. 92055813
18
testimonial declarations relied upon by Respondent to establish “early 1980s” as a
date of first use of his RING AWAY mark in connection with his identified goods are
clear, unambiguous, and devoid of contradictions. Furthermore, while Petitioner
questions the veracity and accuracy of these declarations, it has not submitted any
testimony or evidence to contradict the assertions made therein. That is to say,
Petitioner has not introduced any testimony or evidence to cast doubt upon the
accuracy of Respondent’s assertion of “early 1980s” as a date of first use based upon
these declarations.
We find that the third-party declarations are probative to show that Respondent,
through his predecessor-in-interest, was using the mark RING AWAY for a toilet
bowl cleaner in the early 1980s. Although this date is prior to the date asserted by
Respondent in the application underlying his registration, the circumstances
regarding the transfer of the business from the original user of the mark, and the
unequivocal testimony by the third parties regarding the dates that they used the
product bearing the mark, is sufficient to meet the standard of Hydro Dynamics for
enhanced substantiation of the earlier dates of use now claimed by Respondent.
In light of the foregoing, based upon the testimony of record, the earliest date of
first use we can ascribe to Petitioner of its common-law RING AWAY mark is
December 31, 1982. The earliest date of first use by Respondent of his RING AWAY
mark is “early 1980s.” On this record, we find that Petitioner has failed to meet its
burden of showing by a preponderance of the evidence that it first used the mark
RING AWAY in connection with its goods prior to Respondent’s first use. Simply
Cancellation No. 92055813
19
put, we cannot determine that Petitioner’s use of its mark on December 31, 1982 is
clearly earlier than Respondent’s use of his mark in the early 1980s, and therefore
we cannot find that Petitioner is the prior user of its RING AWAY mark. We
observe in addition that Petitioner had the opportunity to present testimony and
evidence to rebut the testimony and evidence submitted by Respondent, including
the testimony declarations indicating “early 1980s” as his priority date, and failed
to do so.
As plaintiff in this proceeding, it is Petitioner’s duty to clearly establish the
elements of its claim of likelihood of confusion, including priority. Because
Petitioner has not established priority of use, it cannot prevail on its claim of
likelihood of confusion.
Decision: The petition to cancel is dismissed with prejudice.