Karen B. Donovanv.Courtney L. Bishop

Trademark Trial and Appeal Board

Jan 6, 2009

No. 92047757 (T.T.A.B. Jan. 6, 2009)

Mailed:
January 6, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Karen B. Donovan
v.
Courtney L. Bishop
_____

Cancellation No. 92047757
_____

David H. E. Bursik, Esq. for Karen B. Donovan.

Clifford W. Browning of Krieg DeVault LLP for Courtney L.
Bishop.
_____

Before Zervas, Bergsman and Wellington, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Karen B. Donovan (“petitioner”) has filed a petition to
cancel the registered mark MAJOR TAYLOR and design, shown
below, for the following services:

1. “Financial and insurance underwriting services
pertaining to fund raising associations, foundations,
charitable not for profit organizations covering activities
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Cancellation No. 92047757
2
held within the normal scope of operations for these
organizations, namely fundraisers,” in Class 36;1 and,
2. “Retail store and/or on-line computerized ordering
services featuring bicycles, bicycle equipment, bicycle
clothing, shoes and apparel; promoting bicycle sports,
bicycle competitions and/or events of others,” in Class 35.2
As grounds for cancellation, petitioner has alleged
that Courtney L. Bishop (“respondent”) committed fraud
during the prosecution of his applications for registration
by attesting that “no other person, firm, corporation, or
association has the right to use the above identified mark
in commerce,” when at the time he signed the declarations,
respondent knew that the statement was not true. In
addition, petitioner has alleged that respondent’s use of
his mark is not in lawful commerce. Specifically,
petitioner has asserted that the Indiana State Code relating
to the right of publicity prohibits the commercial use of
the name of a deceased individual without the written
consent of the estate of the deceased person; that
respondent is an Indiana resident; and that because
respondent did not obtain the written consent of Major

1 Registration No. 2701247, issued March 25, 2003. Respondent
stated that “‘Major Taylor’ does not represent a living
individual.”
2 Registration No. 2791896, issued December 9, 2003. Respondent
stated that “[t]he name of the mark does not identify a living
individual.”
Cancellation No. 92047757
3
Taylor’s estate, respondent’s use of his mark is in
violation of the Indiana State Code, and therefore the mark
is not used in lawful commerce.
Respondent denied the salient allegations in the
petition for cancellation.
Evidentiary Issue
During her rebuttal testimony period, petitioner
submitted the following evidence:
1. A notice of reliance on the declaration of Lynne
Tolman, an employee of the Major Taylor Association,
purportedly to authenticate an e-mail from respondent;
2. A notice of reliance on the declaration of Linda
Fink, an employee of the Major Taylor Velodrome, regarding
respondent’s visits to the Major Taylor Velodrome; and,
3. A notice of reliance on the declarations of Dallas
C. Brown, purportedly the grandson of Major Taylor, and
petitioner, purportedly the great granddaughter of Major
Taylor.
In his brief, respondent objected to the above-noted
notices of reliance on the grounds that the declarations
were improper rebuttal and because respondent did not
stipulate to the introduction of testimony by affidavit or
declaration.
Trademark Rule 2.123(b), 37 CFR §2.123(b), reads, in
pertinent part, as follows:
Cancellation No. 92047757
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By written agreement of the parties, the
testimony of any witness or witnesses of
any party may be submitted in the form
of an affidavit by such witness or
witnesses. The parties may stipulate in
writing what a particular witness would
testify to if called, or the facts in
the case of any party may be stipulated
in writing.

Petitioner has failed to submit a written agreement
between the parties establishing that her testimony may be
submitted in the form of declarations. Accordingly,
respondent’s objection to declarations proffered by
petitioner is sustained.
Moreover, we agree with respondent that the testimony
in the declarations constitutes improper rebuttal.
Introducing facts supporting petitioner’s standing and
respondent’s knowledge regarding prior use of the name MAJOR
TAYLOR were elements of petitioner’s case-in-chief. The
only evidence that respondent introduced was selected parts
of his discovery deposition which respondent proffered to
clarify his use of the name MAJOR TAYLOR, his knowledge of
the use of the name by others, and his search for someone to
authorize his use of the name “so as to make not misleading
what was offered by” petitioner. Trademark Rule
2.120(j)(4), 37 CFR §2.120(j)(4). Simply put, respondent
did not submit any evidence that petitioner’s declarations
rebutted.
Cancellation No. 92047757
5
In view of the foregoing, respondent’s objection to the
declarations submitted by notice of reliance during
petitioner’s rebuttal testimony period is sustained and the
declarations have not been considered.
The Record
By operation of Trademark Rule 2.122, 37 CFR §2.122,
the record includes the pleadings and the registration files
for respondent’s mark.3 The record also includes the
following testimony and evidence:
A. Petitioner’s Evidence.

1. A notice of reliance on respondent’s discovery
deposition, with attached exhibits;4
2. A notice of reliance on excerpts from a book
entitled Major Taylor: The Extraordinary Career of a
Champion Bicycle Rider; and,
3. A notice of reliance on respondent’s answers to
petitioner’s interrogatory No. 1.
B. Respondent’s Evidence.
As noted above, respondent submitted a notice of
reliance on portions of his discovery deposition which he
contends should be considered so as to make those portions
filed by petitioner complete and not misleading.

3 Accordingly, it was unnecessary for petitioner to file a notice
of reliance on portions of the registration files and
respondent’s answer to the petition for cancellation.
4 In addition to the notice of reliance, petitioner submitted a
complete copy of the deposition transcript.
Cancellation No. 92047757
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Standing

A threshold question in every inter partes case is
whether the plaintiff has established her standing. See
TBMP § 309.03(b) (2d ed. rev. 2004). In a Board proceeding,
the plaintiff is required to show that it has a “real
interest,” that is, a “direct and personal stake,” in the
outcome of the proceeding. See Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982). In this regard, petitioner has
made the following allegation:
Petitioner is an individual and a
resident of the State of Hawaii with a
residential address of 51 Betio Place,
Honolulu, Hawaii 96818. Petitioner is a
great-granddaughter of Marshall W.
(“Major”) Taylor and is authorized with
complete authority and responsibility to
act on behalf of the estate of the
deceased individual Marshall W.
(“Major”) Taylor (hereinafter referred
to as “Major Taylor”), and to handle all
affairs concerning the legacy, persona,
memorabilia, records, images,
likenesses, endorsements, trademarks,
copyrights, and all manner of things
relating to the deceased individual
Major Taylor.5

5 Petition for Cancellation, ¶1. As indicated above, respondent
has denied the salient allegations of the petition for
cancellation. Specifically, respondent stated that he was
“without knowledge or information sufficient to form a belief as
to the truth of the averments,” and therefore he denied the
allegations in paragraph No. 1.
Cancellation No. 92047757
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This allegation alone does not conclusively establish
petitioner’s standing because standing is an element of
petitioner’s case which must be affirmatively proved.
Ritchie v. Simpson, 50 USPQ2d at 1029; and Lipton
Industries, Inc. v. Ralston Purina Co., 213 USPQ at 189.
Even though respondent had effectively denied the allegation
corresponding to petitioner’s standing, petitioner did not
proffer any direct testimony to establish her standing.6
Instead, petitioner relied on respondent’s discovery
deposition. Although, the following excerpts identified in
petitioner’s notice of reliance are the most relevant to the
issue of standing, they make no reference to petitioner:
A6. At the time when Registrant Bishop
decided to start using the name Major
Taylor, he was aware that Major Taylor
had a living descendant. Page 19, Lines
11 to 20.

A7. Registrant Bishop has never had any
contact with Major Taylor’s descendant
Sydney Brown. Page 19, Lines 21 to Page
20, Line 2.

* * *

A12. Prior to submitting an application
for registration to the Trademark
Office, Registrant Bishop knew that
Major Taylor had a daughter named Sydney
Brown. Page 33, Lines 1 to 5.

6 When the defendant denies an averment in the complaint, the
plaintiff is required to submit evidence to prove that fact. See
The Telex Corp. v. The Western Union Telegraph Co., 140 USPQ 498
(TTAB 1964) (where applicant’s answer denied opposer’s claim of
title to the pleaded registration and opposer failed to offer
evidence, the opposition was dismissed because opposer failed to
sustain its burden of proof).
Cancellation No. 92047757
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A13. When Registrant Bishop submitted an
application for registration of a Major
Taylor trademark, he knew that Major
Taylor had been a living person and that
he had a living descendant. Page 33,
Lines 12 to Line 24.7

Accordingly, respondent contends that petitioner failed
to prove that she has standing to prosecute this
cancellation proceeding.8 Petitioner, relying on
respondent’s testimony set forth below, argues that
respondent admitted that petitioner is the granddaughter of
Sydney Brown, the daughter of Major Taylor.9
Q. What contact with any other Major
Taylor relatives other than Sydney
Brown [did you have]?

A. I did not initiate contacts with
anyone. However, I did receive an
email - - I take that back, I take
that back. During the course of my
- - during the course of
establishing Team Major Taylor [a
bicycle racing team], I wanted to
do something to kind of give back,
and I had sent out a couple of
emails to, I want to say - - what
was his name? I want to say it's
Dallas Brown.

Q. Sydney's son, Karen's father?

A. Right, was, I believe, a general in
the United States Army. Trying to
get some responses so that, you
know, - - I had a few ideas.10

7 Notice of Reliance By Petitioner Upon Deposition Testimony of
Registrant Courtney L. Bishop.
8 Respondent’s Brief, pp. 6 and 9.
9 Petitioner’s Reply Brief, pp. 4-6.
10 Bishop Dep., p. 38. As indicated above, although petitioner
only relied on portions of the Bishop deposition, she filed the
entire deposition.
Cancellation No. 92047757
9
Setting aside the issue of whether petitioner may rely
on an excerpt from respondent’s discovery deposition that
was not identified through a notice of reliance by either
party, we do not find that respondent admitted that
petitioner has standing to prosecute this proceeding.11
First, petitioner has not laid the proper foundation that
respondent is competent to testify regarding petitioner’s
relationship with Major Taylor. The Federal Rules of
Evidence provide that “[a] witness may not testify to matter
unless evidence is introduced sufficient to support a
finding that the witness has personal knowledge of the
matter.” Fed. R. Evid. 602. Nowhere in the record does
respondent testify regarding the basis of his knowledge of
the Taylor family tree. In other words, we have no basis on
which to infer that respondent has any knowledge regarding
the descendants of Major Taylor.
Moreover, even if we accept that petitioner is Major
Taylor’s great granddaughter, it is possible that there are
other descendants with an equal or greater claim to control
the right of publicity in connection with Major Taylor’s

11 Because petitioner filed respondent’s entire discovery
deposition transcript and because respondent did not object to
our consideration of those portions of the transcript that were
not identified in petitioner’s notice of reliance, we will
consider the entire transcript as having been properly introduced
into the record.
Cancellation No. 92047757
10
name which petitioner has alleged as her standing in her
petition to cancel.
Finally, we do not find that respondent’s testimony
regarding the identity of petitioner is clear and specific.
The testimony at issue is more of an aside or footnote than
a direct admission or statement that petitioner is Major
Taylor’s great granddaughter and that she is authorized to
control the right of publicity in connection with Major
Taylor’s name. Respondent was trying to recall who had sent
him an email - - “I want to say it’s Dallas Brown” - - and
then identify that person, when petitioner’s counsel
interjected - - “Sydney’s son, Karen’s father?” To which
respondent replied “Right,” and continued with the thought
he had started before counsel’s interjection. The
interjection and response appears to have been made in the
midst of respondent’s thought, and not in direct response to
the question.
In view of the foregoing, we find that petitioner has
failed to show that she has a direct personal interest in
the outcome of this proceeding, and therefore she has not
sustained her burden of proving that she has standing to
prosecute this cancellation proceeding.
Decision: The petition for cancellation is dismissed
with prejudice.