John Rocco Robertov.John Daniel Lees

Trademark Trial and Appeal Board

Oct 3, 2001

No. 91114399 (T.T.A.B. Oct. 3, 2001)

10/3/01

Paper No. 15

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

John Rocco Roberto

v.

John Daniel Lees
_____

Opposition No. 114,399
to application Serial No. 75/440,968
filed on February 26, 1998
_____

Charles H. Knull of Graham & Campaign for John Rocco
Roberto.

Alan B. Samlan of Knechtel, Demeur & Samlan for John
Daniel Lees.
______

Before Seeherman, Holtzman and Rogers,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Opposer failed to file a brief and failed to respond
to an order to show cause why this opposition should not
be dismissed under Trademark Rule 2.128, 37 C.F.R.
§2.128. The Board then entered judgment dismissing the
opposition. However, the proceeding also includes a
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 114,399
2
counterclaim by applicant for cancellation of opposer’s
pleaded Registration No. 2,132,356. Opposer and
applicant both filed notices of reliance during assigned
testimony periods, and applicant filed a brief in support
of his counterclaim. Applicant now seeks “a favorable
decision on its counterclaim.”
Opposer’s registration is for the mark G-CON in a
stylized form of lettering for “entertainment services,
namely, arranging and conducting conventions and/or
exhibitions in the field of Japanese science fiction and
fantasy.” The registration issued January 27, 1998 based
on an application filed January 13, 1997, and lists
January 1, 1995 as the date of opposer’s first use and
first use of the mark in commerce.
Applicant’s counterclaim for cancellation is based
on two grounds. First, applicant asserts that opposer is
not the owner of the G-CON mark. Specifically, he
asserts that his business, Daikaiju Enterprises of
Manitoba, Canada, “was the first entity to use the
servicemark ‘G-CON’ in association with organizing,
promoting, and conducting conventions and exhibitions in
the field of science fiction movies, books and
characters”; that Daikaiju Enterprises [hereinafter
Daikaiju] “has become identified as the source of the
Opposition No. 114,399
3
services” for which the G-CON mark has been used; that
opposer, after having been employed by applicant, began
doing business in Brooklyn, New York, as Daikaiju
Enterprises and Productions [hereinafter DEP]; that
opposer filed for and obtained the involved registration;
that applicant’s Daikaiju “did not assign its trademark
rights, title, and/or interest in the ‘G-CON’ service
mark”; and that opposer is not the owner of the G-CON
mark which he registered and, therefore, the registration
should be canceled.
Second, applicant asserts that opposer obtained the
registration through fraud on the U.S. Patent and
Trademark Office. Specifically, applicant relies on the
allegations proffered in support of its claim that
opposer is not the owner of the G-CON mark and asserts
that opposer acknowledged, in a January 22, 1997 letter
to applicant, that applicant and Daikaiju were “free to
use the mark ‘G-CON’” in conjunction with applicant’s
services; that the parties, “[i]n May of 1997”
contractually agreed to a joint use arrangement; that
opposer falsely represented in the declaration of the
application which resulted in issuance of opposer’s
registration that “no other person, firm, corporation or
association” had the right to use the G-CON mark; that
Opposition No. 114,399
4
opposer knew of applicant’s right to use the mark and
therefore knew his declaration was false; that opposer
intended the Office to rely on the false declaration; and
that the Office did rely on the false declaration in
issuing the involved registration.
Opposer, in his response to the counterclaim, admits
that both parties, through their respective businesses,
are engaged in the business of organizing and conducting
conventions and exhibitions in the field of science
fiction movies, books and characters in the United
States; that opposer began doing business as DEP in
November 1996; that “the letter of January 22, 1997
exists”; and that “the agreement of May of 1997 exists.”
Opposer otherwise denied the allegations of the
counterclaim, denied that the letter and agreement have
“force or effect,” and asserted certain affirmative
defenses to the counterclaim. Opposer did not, however,
file a brief as defendant in the counterclaim and,
therefore, did not pursue the affirmative defenses.
Thus, we have not considered the defenses.
Turning to the record, we note that there are
deficiencies with the evidence proffered by the parties.
For example, each party has introduced printouts from
Internet web pages without the testimony of the
Opposition No. 114,399
5
individual who searched for and retrieved the pages.
See, in this regard, Raccioppi v. Apogee Inc., 47 USPQ2d
1368 (TTAB 1998). Also, applicant has offered testimony
in declaration form without a stipulation of the parties
allowing this or a motion for leave to do so. See TBMP
§§ 713.01, 713.02 and 716. Without any supporting
testimony, applicant introduced with its notice of
reliance copies of the letter and letter agreement that
were already proffered in conjunction with the pleading
of the counterclaim. Finally, although the printed
publications introduced by each party may be made of
record by notice of reliance1, the articles and
information in such publications are hearsay and
applicant has not identified any exception to the hearsay
rule that may be applicable. Thus, the publications have
limited probative value in that they do not serve to
prove the truth of the statements made therein. See
Midwest Plastic, 12 USPQ2d at 1270 n.5; see also, Flowers
Industries Inc. v. Interstate Brands Corp., 5 USPQ2d

1 These are excerpts from Daikaiju’s G-FAN magazine or, in one
instance, an entire copy of one issue of the magazine. Both
parties have introduced excerpts from this magazine. See, in
regard to their proffer, Midwest Plastic Fabricators Inc. v.
Underwriters Laboratories Inc., 12 USPQ2d 1267, 1270 n.5 (TTAB
1989) (When both parties introduced annual reports by notice of
reliance and neither objected, the Board considered the material
to be of record “in the same manner as if it had been stipulated
into evidence.”)
Opposition No. 114,399
6
1580, 1582 n.4 (TTAB 1987), and Logicon, Inc. v.
Logisticon, Inc., 205 USPQ 767, 768 n.6 (TTAB 1980).
We have not considered the Internet pages, or
applicant’s declaration, for the reasons stated above.
We have considered the printed publications, but only to
the extent outlined above. The letter from opposer to
applicant and the parties’ letter agreement regarding
their respective uses of the G-CON mark have been
considered as part of the record, since opposer admitted
their existence in his answer to the counterclaim.
Again, however, they have been given little weight, since
they are not the subjects of any testimony and opposer
has denied their “force or effect”. Finally, we have
considered the copies of Canadian documents regarding the
legal status of Daikaiju as official records. See
Trademark Rule 2.122(e).
Based on the pleadings and the materials in the
record, we make the following findings of fact:
Applicant’s business Daikaiju Enterprises was formed
as a sole proprietorship in February 1994 and is the
publisher of a magazine titled G-FAN;
Opposer worked as Associate Editor of G-FAN from at
least January 1995 through November or December 1995;

Opposition No. 114,399
7
Opposer and applicant both were involved in the
planning or promotion of G-CON conventions in the United
States in 1995 and 1996, though the type and extent of
their respective activities and responsibilities is
unclear;
Opposer and applicant parted ways no later than some
time after the 1996 convention and likely had differences
of opinion resulting from the conduct of that convention;
Opposer filed his application to register the G-CON
mark on January 13, 1997;
Opposer, in his letter to applicant on January 22,
1997, wrote that applicant “may plan any events you wish,
and can even use the name G-CON for all I care…”;
In May 1997, the parties agreed that neither party
would take any adverse action regarding the other’s
convention and that “either party is free to use the G-
CON mark with respect to their own convention,” such
letter agreement being signed by opposer on June 11, 1997
and by applicant on July 17, 1997;
Daikaiju, previously a sole proprietorship of
applicant, was incorporated in April 1998.

Turning to the two claims made by applicant, we
cannot find, on this record, that opposer was not the
Opposition No. 114,399
8
owner of the G-CON mark when he applied for registration.
The record is unclear on the precise nature of the
relationship between opposer and applicant, and the
division of responsibilities between them in regard to
the planning, promotion and running of conventions. The
documents regarding the legal status of Daikaiju are
probative only to the extent that they show that any use
of G-CON by Daikaiju, the sole proprietorship, would have
inured to applicant’s benefit. See In re Hand, 231
USPQ 487 (TTAB 1986) (Use of mark by corporation wholly-
owned by individual presumed to inure to individual’s
benefit). However, there is no evidence of use of the G-
CON mark for convention services by Daikaiju; as noted
above, the statements contained in the copies of excerpts
from Daikaiju’s magazine regarding conventions are
hearsay, and do not prove applicant’s or Daikaiju’s use
of the mark for convention services.
The letter and letter agreement also are of little
aid in determining whether opposer was owner of the G-CON
mark when he applied for its registration.2 Neither

2 Opposer wrote, among other lines, the following to applicant
in his January 22, 1997 letter:

The first use of the Trademark symbol next to the name G-CON
was used on the tickets, produced by myself, months before G-
CON…. I have enough witnesses to back me up that G-CON was my
baby more than yours.
Opposition No. 114,399
9
evidences use of the mark by applicant or Daikaiju prior
to the filing date of the application that resulted in
opposer’s registration. In short, applicant has failed
to prove that he, not opposer, was the owner of the G-CON
mark for convention services when opposer filed his
application for registration.
We also find in favor of opposer in regard to
applicant’s claim of fraud. In our review of this claim,
we have been mindful that fraud is a claim that requires
strict proof. See, e.g., Global Maschinen GmbH v. Global
Banking Systems, Inc., 227 USPQ 862, 867 (TTAB 1985), and
authorities cited therein. Applicant has failed to meet
the standard.
The only basis for the claim of fraud by opposer is
that opposer knew of another party, i.e., applicant, with
a right to use the G-CON mark, so that opposer’s
statement in his application declaration that opposer
knew of no other with the right to use the mark was

Of course, the mere fact that opposer caused “the Trademark
symbol” to be placed on tickets for a G-CON convention did not
necessarily invest opposer with rights to that mark. Likewise,
opposer’s belief that the conventions were his “baby,” does not
necessarily make it so. Nonetheless, it was applicant who
introduced the letter including these statements into the
record, yet failed to provide any real evidence to support his
claim that he, not opposer, acquired rights in the mark based on
use of the mark in conjunction with the running of conventions
in 1995 and 1996.
Opposition No. 114,399
10
knowingly false. Because the pleading of the
counterclaim focuses on the significance of opposer’s
letter and the parties’ subsequent letter agreement, it
is unclear whether applicant is asserting that the
declaration was fraudulent when the application was filed
or only that opposer committed fraud in failing to amend
the declaration after the letter agreement was signed.3
Either way, such a claim requires proof that, inter alia,
the declarant knew of another’s superior right. See Ohio
State University v. Ohio University, 51 USPQ2d 1289, 1293
(TTAB 1999). Based on the evidence of record, we cannot
find that applicant has proved that opposer knew that
applicant had superior rights in the mark when opposer
filed and prosecuted his application.
Even if we assume, arguendo, that the relevant
declaration statement was false at the time opposer filed
its application, it may not have been understood by
opposer to be false and would not, therefore, support a
claim of fraud. See Alcan Aluminum Corporation v. Alcar
Metals Inc., 200 USPQ 742, 746 (TTAB 1978), quoting

3 See In re Sun Refining and Marketing Co., 23 USPQ2d 1072, 1073
(TTAB 1991) (an applicant has a duty to “review and amend the
declaration filed with its application” in certain
circumstances). See also, Space Base Inc. v. Stadis Corp., 17
USPQ2d 1216, 1219 (TTAB 1990) (“[A] person can commit fraud upon
Opposition No. 114,399
11
Rogers Corporation v. Fields Plastics & Chemicals, Inc.,
176 USPQ 280 (TTAB 1972) (“there is a material legal
distinction between a ‘false’ representation and a
‘fraudulent’ one, the latter involving … an intent to
deceive, whereas the former may be occasioned merely by a
misunderstanding, an inadvertence, a mere negligent
omission, or the like.”); see also, Adolphe Lafont, S.A.
v. S.A.C.S.E. Societa Anzioni Confezioni Sportive Ellera,
S.p.A., 228 USPQ 589, 593 (TTAB 1985). For example,
opposer apparently believed, as evidenced by his letter
to applicant, that applicant was not entitled to register
the G-CON mark in the United States. Nor does the letter
agreement prove applicant’s claim of fraud. Opposer’s
agreement to allow applicant to use the mark is not, per
se, a recognition by opposer that applicant had superior
rights in the mark.
Decision: The counterclaim petition for
cancellation of opposer’s registration is denied for
failure of applicant to prove either that opposer was not
the owner of the mark at the time of application or that
opposer procured its registration through fraud on the
Office.

the Office by willfully failing to correct his or her own
misrepresentation, even if originally innocent….”).