Deniro Marketing LLCv.Mark Pescatore

Trademark Trial and Appeal Board

Oct 13, 2011

No. 92050964 (T.T.A.B. Oct. 13, 2011)

Mailed: October 13, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Deniro Marketing LLC

v.

Mark Pescatore
_____

Cancellation No. 92050964
_____

Kevin R. Martin of Patton Martin & Sullivan LLP, for Deniro
Marketing LLC.

Mark Pescatore, pro se.
_____

Before Grendel, Ritchie, and Shaw, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

This is a cancellation proceeding in which Deniro
Marketing LLC (petitioner) seeks to cancel Registration No.
2604872, owned by Mark Pescatore(respondent), for MATCHDATE,
for “computer on-line dating and introduction services
provided by means of a global computer network.”1

1 Registered on the Principal Register on August 6, 2002,
alleging first use and first use in commerce on July 28, 1997.
Section 8 affidavit accepted.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92050964
2
The grounds for cancellation asserted in the petition
are abandonment and fraud. (Pet. Para. 7 and 12). However,
petitioner did not pursue the ground of fraud on brief, and
we deem that ground to have been waived.2 For standing,
petitioner alleged that it has a “use in commerce” pending
application, Serial No. 77714859 for DATEMATCH for “online
dating services.” (Pet. Para. 2).
Respondent filed an answer denying the salient
allegations of the petition. Petitioner filed a brief.
Respondent did not.
The record in this case includes the pleadings and the
file of the involved registration as well as the testimonial
deposition of Allan Henning, petitioner’s CEO, dated October
21, 2010, together with exhibits thereto. Respondent did
not submit any evidence or testimony.
Standing

Petitioner’s CEO testified that petitioner runs “an
online dating site” under the mark DATEMATCH and at the URL
“Datematch.com” (Henning depo. at 20 and Ex 6). We note
also that petitioner alleged in the petition to cancel that
petitioner is the owner of Application Serial No. 77714859

2 As we discuss herein, it is not clear whether petitioner
intended to plead the ground of priority and likelihood of
confusion. The ground is not mentioned in petitioner’s
transmittal papers, yet it appears to be referred to in the
petition, the deposition of Mr. Henning, and petitioner’s brief.
As discussed herein, to the extent it was pleaded and tried, the
ground fails.
Cancellation No. 92050964
3
for the mark DATEMATCH which “has not received an office
action” but that “it has a reasonable belief that
registration of its application will be refused because of
the currently active status of Respondent’s nearly identical
registration for MATCHDATE as identified in U.S. Reg. No.
2,604,872.” (Petitioner Para. 3). Standing cannot be based
on mere allegations. See Toufigh v. Persona Parfum, 95
USPQ2d 1872 (TTAB 2010) (finding standing where office
action was not submitted into evidence). However, we find
here that petitioner has sufficiently alleged as a
competitor that it has a reasonable belief of damage and a
real interest in this proceeding. Therefore petitioner is
not a mere intermeddler, and it has established its
standing. 15 U.S.C. §1064; Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 188 (CCPA
1982).
Time Bar
Paragraph 14 of the petition sets out petitioner’s
contention that “Petitioner’s mark so resembles Respondent’s
Reg. No. 2,604,872 for MATCHDATE as to be likely to cause
confusion,” and that petitioner has “priority of use.”
(Pet. Para. 14). Petitioner uses the same type of wording
in its brief. See brief at 5 (“[t]his date of first use
predates any date upon which Pescatore may rely . . . ”).
To the extent that petitioner has pleaded and tried a claim
Cancellation No. 92050964
4
of priority and likelihood of confusion, the claim is time
barred.
Petitioner filed this cancellation proceeding on May
13, 2009. Respondent’s registration issued on August 6,
2002, over five years earlier. Section 14 of the Trademark
Act, 15 U.S.C. §1064 lists acceptable grounds for
cancellation of a trademark subsisting on the Principal
Registrar. In accordance with the statute, a petition may
be filed “within five years from the date of the
registration of the mark under this chapter.” Id. Certain
grounds are exempt from the five year time bar (including
abandonment, which we allow to proceed on the merits in this
decision). Likelihood of confusion is not one of them.
Accordingly, the claim, having been filed in a petition more
than five years after respondent’s registration date, is
time barred.
Abandonment
Section 14(3) of the Trademark Act, (15 U.S.C.
§1064(3), lists, as one of the grounds for cancellation,
abandonment, and Section 45 of the Act, 15 U.S.C. §1127, in
pertinent part, defines “abandonment” of a mark as follows:
When its use has been discontinued with
intent not to resume such use. Intent
not to resume may be inferred from
circumstances. Nonuse for 3 consecutive
years shall be prima facie evidence of
abandonment. “Use” of a mark means the
bona fide use of such mark made in the
Cancellation No. 92050964
5
ordinary course of trade, and not made
merely to reserve a right in a mark.

There are two elements to an abandonment claim: non-
use and an intent not to resume use. A plaintiff must show
both of these elements unless it can show three years of
nonuse, which prima facie establishes abandonment, in which
case the burden shifts to the defendant to show either that
it has used the mark, or that it has an intent to resume
use. See Cerveceria Centroamericana S.A. v. Cerveceria
India Inc., 892 USPQ2d 1307, 1309 (Fed. Cir. 1989).
To show nonuse of respondent’s mark, petitioner
submitted the deposition testimony of its CEO. The
allegations of abandonment consist of one page of deposition
testimony, with no exhibits.
Q: Did you have any interaction with the
MatchDate.com website?

A: Basically when we went to look – when we heard
that there was a MatchDate market, we went to
MatchDate.com. And it was a parked domain which
means that basically they let their registrars
park it to hold the domain, just advertising from
keywords is my guess.

Q: Okay. And when you say it was a parked domain,
this is something you saw at the MatchDate.com
URL?

A: Yes.

Q: And did you have a [sic] opportunity to go back
and look at it later?

A: Yes. When we went back later, it was – they
had signed up like a white label company, and they
want you to use theirs. So it was more of a site
than before.
Cancellation No. 92050964
6

Q: Did you ever have occasion to click on the
MatchDate.com and see that it transfers you to the
MyDate.com site?

A: Yeah. As far as I can tell the MatchDate is
just transferring you to another site.

Q: When was that that you took a look at the
MatchDate.com website, if you can remember? Was
it around the time that you filed or instructed
your counsel to file the cancelation proceeding?

A: Yes.

Q: Okay. And just for the record – the petition
to cancel was filed around May 13th of 2009. Does
that sound about the time that you took a look at
the MatchDate.com website and saw that it was a
parked site?

A: Yes.
(Henning depo. at 27-28)

Apparently, from this, petitioner deduced that
respondent has abandoned the mark MATCHDATE for the services
for which it is registered, with no intent to resume use.
Petitioner points out that respondent has not submitted
any evidence into the record. However, the burden does not
shift to respondent unless petitioner has made a prima facie
case of abandonment. In short, petitioner must first make
its case by showing that petitioner has not used the
MATCHDATE mark on the identified services for at least three
consecutive years, as set forth in the statute, or by
showing non-use with no intent to resume use. This,
petitioner has not done.
Cancellation No. 92050964
7
In particular, petitioner has failed to show that
respondent has not used the mark MATCHDATE for his
identified services for a period of at least three
consecutive years. Petitioner did testify to having checked
respondent’s website more than once. (Henning depo. at 27-
28). However, there is no evidence that he checked over a
period of at least three years. To the contrary, since the
first time he checked was “around the time” the petition to
cancel was filed On May 13, 2009, and the second was clearly
before the date of the deposition on October 21, 2010, the
incidents were less than three years apart. Furthermore,
Mr. Henning’s testimony as to the status of a website, or
lack thereof, at the URL on matchdate.com is simply not
sufficient to show nonuse of respondent’s mark in commerce.
Petitioner noted no other type of investigation into other
possible sales channels for the mark MATCHDATE, including
via other websites, such as the one that Mr. Henning
testified as having been directed to by matchdate.com on one
occasion. See Threshold.TV Inc. v. Metronome Enterprises
Inc., 96 USPQ2d 1031, 1040 (TTAB 2010) ("Simply put, we are
not persuaded that applicant has not used its mark in
commerce simply because Mr. Wexler says he is not familiar
with applicant and its television programming services.");
acc. Toufigh v. Persona Parfum, 95 USPQ2d 1872, 1875 (TTAB
2010).
Cancellation No. 92050964
8
In sum, we find that petitioner has not established a
prima facie case that respondent has not used his mark for
at least three consecutive years. Accordingly, it was not
necessary for respondent to submit rebuttal testimony or
other evidence. Petitioner has failed to establish its
claim of abandonment, and the petition to cancel on this
basis is dismissed.
Decision: The petition to cancel is dismissed with
respect to both the ground of priority and likelihood of
confusion and the ground of abandonment.