David S. Beasleyv.William H. Howard d/b/a The Ebonys

Trademark Trial and Appeal Board

Dec 9, 2014

No. 92057071 (T.T.A.B. Dec. 9, 2014)

Mailed: December 9, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

David S. Beasley
v.
William H. Howard d/b/a The Ebonys
_____

Cancellation No. 92057071
_____

David S. Beasley, pro se.

William H. Howard, d/b/a The Ebonys, pro se.
_____

Before Zervas, Ritchie and Adlin, Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

This is a cancellation proceeding in which Mr. David S. Beasley
(Petitioner) seeks to cancel Registration No. 4170469, owned by Mr. William
H. Howard, d/b/a The Ebonys (Respondent), for The Ebonys,1 in standard
character format, on the Principal Register, for “entertainment services in
the nature of live performances by singing vocalists; entertainment in the

1 Registered on the Principal Register on July 10, 2012, alleging dates of first use on
April 17, 1998, and first use in commerce in 2003.
This Opinion is Not a
Precedent Of The TTAB
Cancellation No. 92057071
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nature of vocal musical group; live performances by a musical group,” in
International Class 41.
The sole pleaded ground for cancellation is fraud.2 Specifically, Petitioner
alleges that he is an original member of the group The Ebonys, which
“continu[es] to receive quarterly royalty statements.” (petition at para. 1, 2).
He further alleges that Respondent is not an “original member” and did not
perform “any original live recordings.” Id., at para 3. Petitioner alleges that
he “continues to manage goods and services involving the name “The Ebonys”
and that he “never relinquished in writing or verbally his rights of [sic] the
‘The Ebonys’ name to registrant, any other individual and/or group to provide
profit to themselves for services or goods.” Id. at paras. 5, 6. Finally,
petitioner alleges that he “continues with on-going projects as an original
member/owner of ‘The Ebonys.” Id., at para. 7.
Respondent filed an answer denying the salient allegations of the petition
and setting forth some purported “affirmative defenses,” including that
“Petitioner failed to disclose that The Ebonys was resurrected with new
members in 1997 and the Registrant and the Petitioner were members of
that resurrected group.” (Answer, affirm. def, 4.c.).

2 With his initial petition to cancel, Petitioner checked off several grounds for
cancellation on the ESTTA cover sheet but did not include a petition elucidating the
grounds. In his amended petition, filed July 8, 2013, the sole ground stated was
fraud. Since no other grounds were pursued nor pleaded with particularity, we
consider any such grounds to have been waived. Furthermore, based on the lack of
proper briefing and evidence, we do not find that any other claims were tried by
implied consent.
Cancellation No. 92057071
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Petitioner filed a paper during his briefing period through ESTTA, the
Board’s electronic filing system, titled “Amended Petition to Cancel.” The
ESTTA cover sheet identified the paper filed as “Brief on the Merits for
Plaintiff.” Petitioner’s paper was not accompanied by a motion for leave to
amend. Because Petitioner filed the paper during its briefing period and
because the ESTTA cover sheet identified the filing as a “Brief,” we treat the
filing as Petitioner’s brief.
The Record
Pursuant to Trademark Rule 2.122(b); 37 C.F.R. § 2.122(b), the record in
this case includes the pleadings and the file of the involved registration. The
parties both made submissions during their trial periods,3 and Petitioner
during his rebuttal period. These consist of the following:
During Petitioner’s Trial Period:
1. A state service mark registration issued by the State of New Jersey for
The Ebonys, listing Petitioner as owner, with the filing date listed as
March 7, 2003;
2. Management contract between Petitioner and Lynn Gross, d/b/a
Octagon Development Group, dated November 14, 2004;

3 Petitioner submitted his Initial Disclosures, and Respondent submitted his Pretrial
Disclosures, which need not be filed. However, since they were submitted during the
respective trial periods, we construe them as notices of reliance. We note also that
Petitioner attached several items to his petition and his amended petition. However,
unless otherwise properly introduced into the record during trial, exhibits to
pleadings are not evidence for that party, with one exception not applicable here. See
Trademark Rule 2.122(c); 37 C.F.R. § 2.122(c)
Cancellation No. 92057071
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3. Management contract between Petitioner, as “Owner of The Ebonys,”
and Forrest Finney and Michael Mackintosh, dated October 1, 2007;
4. A letter from Jeff Gandel of Royalty Recovery to Clarence Vaughan,
dated September 14, 2010;
5. A letter to Royalty Recovery, Inc., from Petitioner and others, dated
September 14, 2010;
6. A letter from Philadelphia Records, dated August 19, 2013;
7. A Royalty Statement for the period ending June 30, 2013, for “The
Ebonys” c/o David Beasley, from Philadelphia International Records;
and
8. A flyer advertising a concert by Ebony’s Revue; printed from
http://mail.aol.com on October 5, 2013.
During Respondent’s Trial Period:
1. A copy of Respondent’s involved registration and information from the
underlying application file;
2. A copy of an article from The Philadelphia Inquirer, undated;
3. A copy of an article from The Times, dated April 17, 1998;
4. An autographed photograph of The Ebonys;
5. A copy of a ticket printed from Ticketmaster.com for The Ebonys, dated
October 10, 2000;
6. A flyer advertising The Ebonys performing on December 31, 2003;
7. A flyer advertising Ebony’s [undated];
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8. A printout advertising “The Big Show” DVD featuring The Ebonys;
printed from oldies.com, undated;
9. A ticket and flyer advertising The Ebonys, featuring William
“SMOKE” Howard at The Firehouse Café, September 10, 2011;
10. A flyer advertising The Ebonys dated October 27, 2012;
11. A flyer advertising The Ebonys, dated September 14, 2013; and
12. A copy of an article from What’s Inside; Spring/Summer 2012, Vol. 1,
Issue 9.
During Petitioner’s Rebuttal Period:
1. Letter from Kenneth Gamble of Philadelphia International Records to
Petitioner, dated May 12, 2014; and
2. Letter from Philadelphia International Records dated March 3, 2014,
and attached W-9, signed by Petitioner.
Much of this material submitted by both parties is not suitable for the
notice of reliance procedure. See Rule 2.122(e); 37 C.F.R. § 2.122(e)
(permitting notice of reliance on official records, or printed publications
“available to the general public in libraries or of general circulation”); and
Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039 (TTAB 2010)
(permitting notice of reliance on Internet printouts that identify the date of
publication or date accessed as well as the website address). We note,
however, that neither party objected to the other’s submissions, and their
consideration does not affect the outcome of our decision. Accordingly, we
Cancellation No. 92057071
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may include them in our analysis. See Morgan Creek Productions Inc. v. Foria
Int’l Inc., 91 USPQ2d 1134, 1136 (TTAB 2009) (although materials were not
properly made of record, parties treated them as such, and thus Board
deemed the parties to have stipulated the materials into the record); Alfacell
Corp. v. Anticancer Inc.,71 USPQ2d 1301 (TTAB 2004) (evidence not properly
made of record deemed stipulated into the record because it was treated as
such by the parties).
Standing
To establish standing, a petitioner must establish a “personal interest in
the outcome of the proceeding” as well as “a reasonable basis for belief of
damage.” See Books on Tape Inc. v. The Booktape Corp., 836 F.2d 519, 5
USPQ2d 1301, 1302 (Fed. Cir. 1987) (petitioner, as a competitor of
respondent, “clearly has an interest in the outcome beyond that of the public
in general and has standing”). “A belief in likely damage can be shown by
establishing a direct commercial interest.” See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
We must assess whether a plaintiff is a mere intermeddler or has real
interest in the case. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023
(Fed. Cir. 1999); Lipton Indus. Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). Under this liberal standard, Petitioner has shown
that he has a reasonable belief of damage and a real interest in this
proceeding, because Respondent admits that Petitioner was a member of The
Cancellation No. 92057071
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Ebonys, and the record includes Petitioner’s New Jersey service mark
registration. Therefore Petitioner is not a mere intermeddler, and he has
established his standing. Id.; 15 U.S.C. § 1064.
Fraud
The only ground alleged in the amended petition for cancellation is fraud.
Petitioner alleges that the group The Ebonys was formed in 1969 and
consisted of several vocalists, which included Petitioner, but did not include
Respondent. (petition at para. 1). The amended petition further alleges that
The Ebonys was signed to a record deal and “continu[es] to receive quarterly
royalty payments.” Id. at para. 2; and that Respondent “was not and is not an
original member or performed on any original live recordings of The Ebonys
singing/performing group.” Id., at para. 3. The amended petition further
alleges that Petitioner registered The Ebonys with the State of New Jersey in
1997. Id., at 4.
The Court in In re Bose Corp., 476 F.3d 1331, 91 USPQ2d 1938, 1939
(Fed. Cir. 2009), set out the relevant standard for proving fraud:
“Fraud in procuring a trademark registration or
renewal occurs when an applicant knowingly
makes false, material representations of fact in
connection with his application.” Torres v. Cantine
Torresella S.r.l., 808 F.2d 46, 48 [1 USPQ2d 1483]
(Fed. Cir. 1986). A party seeking cancellation of a
trademark registration for fraudulent procurement
bears a heavy burden of proof. W.D. Byron & Sons,
Inc. v. Stein Bros. Mfg. Co., 377 F.2d 1001, 1004
[153 USPQ 749] (CCPA 1967). Indeed, “the very
nature of the charge of fraud requires that it be
proven ‘to the hilt’ with clear and convincing
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evidence. There is no room for speculation,
inference or surmise and, obviously, any doubt
must be resolved against the charging party.”
Smith Int'l, Inc. v. Olin Corp., 209 USPQ 1033,
1044 (TTAB 1981).

Petitioner has failed to submit evidence showing that Respondent made a
false, material representation of fact in connection with his trademark
application, and that he did so with the intent to deceive the Trademark
Office. The claim thus fails.
Decision: The petition to cancel is dismissed.