Makiki Electronicsv.Douglas Mervyn Gray and David William Holloway

Trademark Trial and Appeal Board

Feb 14, 2005

No. 92041178re (T.T.A.B. Feb. 14, 2005)

Mailed:
February 14, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Makiki Electronics
v.
Douglas Mervyn Gray and David William Holloway
_____

Cancellation No. 92041178
_____

Edward A. Sokolski, Esq. for Makiki Electronics.

Douglas Mervyn Gray and David William Holloway, pro se.
_____

Before Chapman, Bottorff and Rogers,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Douglas Mervyn Gray and David William Holloway,
individual citizens and residents of Australia, are the
owners of Registration No. 2562987 for the mark TERMOUT for
goods identified as "biocidal preparations for control and
extermination of insects, pests and larvae, pesticides,
insecticides and termiticides, all for agricultural,
domestic, and horticultural use; insect repellents; and pest
repellents," in Class 5. The registration issued April 23,
2002 based on Section 44(e) of the Trademark Act, 15 U.S.C.
§ 1126(e), and respondents' ownership of an Australian
This Opinion is Not
Citable as Precedent
of the TTAB
Cancellation No. 92041178
2
registration for their mark. The USPTO application which
resulted in issuance of respondents' United States
registration included a claim of priority under Section
44(d), 15 U.S.C. § 1126(d), so that respondents' priority
filing date is September 28, 1999.
Makiki Electronics has petitioned for cancellation of
respondents' registration. In the petition to cancel,
Makiki Electronics was identified as a partnership composed
of David H. Miller and Joseph W.O. Lee. Petitioner's brief,
however, reports that the partnership was dissolved during
the pendency of this proceeding and that Makiki Electronics
is now a sole proprietorship of David Miller. Brief, p. 6.
References in this decision to petitioner include both the
partnership and the sole proprietorship.
The petition for cancellation is based on petitioner's
claim of use of "the mark TERM-OUT in connection with the
sale of insecticide for the extermination of insects," such
use having been "in connection with sales in intra-state
commerce since at least July, 1971 and in connection with
sales in inter-state commerce since at least January, 1992."
Petitioner also alleges its "use has been valid and
continuous" and that it has not abandoned use of its mark.
Finally, petitioner alleges that there exists a likelihood
that consumers will be confused, mistaken or deceived about
the source of the parties' respective goods, because of the
Cancellation No. 92041178
3
"identity of the respective marks and the related nature of
the goods." Petitioner attached various materials to its
petition, but items attached to a pleading (with one
exception not relevant herein) do not form part of the trial
record in a Board inter partes proceeding, in the absence of
an admission of their authenticity by the non-offering party
in a responsive pleading, or by a stipulation of the
parties, or by proper introduction during trial. See
Trademark Rule 2.122(c) and (d), 37 C.F.R. §2.122(c) and
(d); see also TBMP Sections 317, 704.05, 704.06 and 706 (2d
ed. rev. 2004).
Respondents, appearing pro se, submitted an answer
alleging that they were not aware of petitioner or its
product until they received notice of this proceeding; that
they believe their mark is legally registered and they want
to maintain the registration; that petitioner was neglectful
in not seeking to register a mark that it claims to have
used since 1971; that they "examined the 'exhibits'"
attached to petitioner's pleading and find them insufficient
to prove continuous use by petitioner of its mark since
1971; and that the exhibits appear to substantiate
"interstate sales … only … in 4 or 5 states." Respondents
also provided a detailed critique of the exhibits attached
to the petition; state that it is not in their best interest
to have a product on the market with a similar brand name;
Cancellation No. 92041178
4
note that petitioner's mark has a hyphen while respondents'
mark does not; assert that their product is a "termiticide
dust specifically formulated for subterranean termite
eradication, to be used by professional pest control
operators," while petitioner's product is used for
eradication of drywood termites, cockroaches and ants, can
be purchased "off the shelf" by non-professionals, and is
sold in aerosol cans; and respondents' hope not "to have to
go through the … time-consuming and costly process of
finding and registering another trademark." Respondents
attached a joint declaration and two exhibits to their
answer. As we have already observed, exhibits attached to a
pleading, including declarations, do not form part of the
record except as already noted, usually by being properly
made of record during trial.
A Board attorney noted the filing of, and accepted,
respondents' answer, without characterization or assessment
of its contents. Petitioner apparently concluded that the
answer included an affirmative defense that petitioner had
abandoned use of its mark and filed a motion for summary
judgment seeking a ruling that it had not abandoned its
mark. The motion was fully briefed by the parties and then
denied by a panel of this Board. The Board order dated
November 4, 2003 denying petitioner's motion specifically
noted that evidence submitted in conjunction with the
Cancellation No. 92041178
5
briefing of a motion for summary judgment did not by virtue
of such submission become part of the record.1
That Board order also reset trial periods.
Petitioner's testimony (or trial) period was set to close on
January 29, 2004. Because the trial period is a 30-day
period, it opened on December 31, 2003.
On December 30, 2003, petitioner filed and served a
"Notice of Reliance on Evidence Submitted With Petition to
Cancel and Motion for Summary Judgment Under 37 CFR
2.122(c)," whereby petitioner stated that it was relying on
(1) the declaration of David Miller and accompanying
exhibits A-E previously submitted with the petition to
cancel, and (2) exhibit F submitted with petitioner's motion
for summary judgment. The notice of reliance was received
by the USPTO on January 2, 2004. Subsequently, and with 20
days still remaining in its trial period, petitioner filed
and served a notice that it would take the deposition of
David Miller on written questions on January 20, 2004.2 The
deposition was taken as scheduled and resulted in a four-
page transcript with five exhibits. The transcript and

1 We agree with the statement in the order denying summary
judgment that respondents' answer must be viewed as constituting
a denial of the allegations of the petition, insofar as
respondents' critique of the petition (with exhibits) did not
contain any admissions.

2 Petitioner's notice that it would take a deposition on written
questions was filed and served by first class mail on January 9,
2004 and was received by the USPTO on January 13, 2004.
Cancellation No. 92041178
6
exhibits were filed May 27, 2004, two weeks after the close
of the rebuttal testimony period.
Respondents' main 30-day testimony period was scheduled
to close on March 29, 2004. Thus, it opened on April 30,
2004. With a cover letter dated March 24, 2004, respondents
filed and served their "testimony." The submission was
received by the USPTO on April 2, 2004. Respondents'
testimony consists of a nine-page joint declaration with
numerous exhibits.
In their declaration, respondents acknowledge receipt
of petitioner's notice of reliance and state, in regard to
the material the notice seeks to introduce into the record,
that "[t]hese documents have previously been commented upon
in our Answer and Summary Judgment." In addition,
respondents acknowledge their "receipt of a Copy of the
Deposition of David Miller on Written Questions." In regard
to this item, they state that they understand "that the
Questions 1-16 have been compiled by the petitioner's
Attorney" and then outline "questions which we would like
answers to (some of which were asked of the Petitioner in
the Discovery Period, but not answered)." Respondents'
"testimony" then recites 15 questions. Following these
questions, respondents' declaration sets out their defense,
Cancellation No. 92041178
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including a critique of petitioner's submissions3 and an
explanation of the significance of respondents' submissions,
some previously submitted by their answer or response to
petitioner's motion for summary judgment and others
submitted for the first time with the joint declaration
intended as testimony.
The parties' procedurally irregular trial activities,
and their trial submissions, raise a host of questions. The
first question is whether petitioner's notice of reliance is
timely, in that it was filed and served one day prior to the
commencement of its testimony period. We find that it was.
While the notice of reliance was filed and served one
day prior to the opening of petitioner's testimony period,
it did not arrive at the USPTO until after the testimony
period had opened. Under the certificate of mailing
procedure utilized by petitioner, see 37 C.F.R. § 1.8,4 the
filing would have been considered "timely" if petitioner was
trying to meet a looming deadline, see 37 C.F.R. §§

3 One general criticism is that petitioner's evidence is
insufficient and that petitioner failed to provide requested
information or material in response to discovery requests. Of
course, the proper way to deal with an adversary that does not
answer discovery requests is to file a motion to compel under
Trademark Rule 2.120(e), 37 C.F.R. § 2.120(e). Having failed to
do so, respondents cannot now complain about petitioner's refusal
to answer discovery requests.

4 Currently, Trademark Rule 2.197, 37 C.F.R. § 2.197, covers the
filing of first class mail in trademark matters. Petitioner,
however, used a certificate invoking Rule 1.8, and Trademark Rule
works in the same manner as Rule 1.8. For convenience, we
discuss the rule on which petitioner relied.
Cancellation No. 92041178
8
1.8(a)(1)(i) and 1.8(b), and filed the notice of reliance on
or shortly before the last day for doing so, even if it
actually arrived after the deadline. In this instance,
however, petitioner was not attempting to ensure compliance
with a looming deadline, and Rule 1.8 specifies that, apart
from determining questions of timeliness when a paper filed
under Rule 1.8 is filed near or on a deadline, the "actual
date of receipt will be used for all other purposes."
Had petitioner filed the notice of reliance in exactly
the way it did, i.e., by first class mail, but without the
certificate of mailing, there would be no question that the
notice was properly filed. We do not see how or why
petitioner can be penalized for filing a notice of reliance
with a certificate of mailing, which only served as, in
essence, an insurance policy. Further, even if this were
not the case, any objection respondents might have had based
on asserted premature filing of the notice should have been
promptly raised. Cf. Of Counsel Inc. v. Strictly of Counsel
Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (where
testimony deposition was taken two days prior to
commencement of testimony period, late objection to
premature taking of deposition held waived, as error could
have been corrected during testimony period had there been a
seasonable objection).
Cancellation No. 92041178
9
In sum, we find petitioner's notice of reliance to have
been properly filed. A separate question, however, is
whether the submissions made under the notice can properly
be introduced into the record by a notice of reliance.
Petitioner used the notice to introduce "the
Declaration of David H. Miller and exhibits 'A' –'E'
submitted therewith with the Petition to Cancel" as well as
photocopied pages, marked together as exhibit F, that
assertedly had previously been submitted with petitioner's
motion for summary judgment. The affidavit or declaration
of a witness, however, may not be submitted by notice of
reliance, absent a stipulation of the parties or upon motion
granted by the Board. See Trademark Rule 2.123(b), 37
C.F.R. § 2.123(b), TBMP Sections 703.01(b) and 705 (2d ed.
rev. 2004) and cases cited therein. Accordingly, neither
the Miller declaration nor the exhibits introduced thereby
(exhibits A-E) can be considered, with the possible
exception of any exhibit that could, on its own be submitted
by notice of reliance, as discussed below. See Trademark
Rule 2.123(1), 37 C.F.R. § 2.123(l), and TBMP Section 706
(2d ed. rev. 2004) and cases cited therein.
Of the exhibits attached to the Miller declaration, one
is a photocopy of a page from the Los Angeles Times of April
21, 1994. The page features a photograph of petitioner's
product and an accompanying article. Though the page bears
Cancellation No. 92041178
10
a heading stating that it is an "Advertising Supplement," it
is nonetheless from a printed publication in general
circulation. Such materials may be introduced by notice of
reliance. See Trademark Rule 2.122(e), 37 C.F.R. §
2.122(e). Therefore this exhibit to the Miller declaration
has been considered.
As for what petitioner has referred to as "exhibit 'F'
filed with the Motion for Summary Judgment," there is a
discrepancy between the submission made in conjunction with
the motion for summary judgment and that made with the
notice of reliance. The former consisted of two photocopied
pages, while the latter consists of four photocopied pages
(specifically, the two pages submitted with the motion for
summary judgment and two additional pages). In any event,
the question whether any of the pages submitted with the
notice of reliance can be considered is unrelated to whether
they were previously submitted with the motion for summary
judgment. As the parties were informed by the Board order
denying petitioner's motion for summary judgment, materials
submitted in conjunction with such a motion are not
considered part of the trial record.
The four pages submitted as exhibit F to the notice of
reliance are (1) a photocopy of the May 1, 2003 application
by petitioner to register TERMOUT as a trade name with the
Department of Commerce and Consumer Affairs in Hawaii; (2) a
Cancellation No. 92041178
11
photocopy of a "domestic limited partnership annual
statement as of December 31, 2001" prepared by petitioner;
and (3) photocopies of two one-page quarterly reports
prepared by petitioner regarding pesticide sales in
California, one covering the quarter ending December 31,
2001, and the other covering the quarter ending March 31,
2002.
We consider petitioner to have submitted the four pages
marked as exhibit F as "official records," in accordance
with Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e). We
note, however, that the rule requires submission of "the
official record or a copy thereof whose authenticity is
established under the Federal Rule of Evidence." Of the
four pages, only one even bears evidence of its actual
filing, as opposed to mere preparation for filing, with a
government agency. That is the May 1, 2003 application for
registration of TERMOUT as a trade name, which bears a
legend that it was filed "5/1/2003 2:14 PM Business
Registration Division Dept. of Commerce and Consumer Affairs
State of Hawaii," which has an assigned registration number,
and which bears a signature from an individual of the Hawaii
Department of Commerce and Consumer Affairs. Though it is
unclear whether the copy of the application/registration is
a photocopy maintained in petitioner's own files or issued
Cancellation No. 92041178
12
by the state of Hawaii, we accept this as an official record
and have considered it.
The three other pages submitted as exhibit F to the
notice of reliance, however, have not been considered, as
they do not appear to be anything more than documents
prepared by petitioner for filing with a government agency
and bear no evidence of actual filing. See TBMP Section
704.07 (2d ed. rev. 2004) and cases cited therein.
In sum, all that we consider to have been properly
entered into the record by petitioner's notice of reliance
are a photocopy of a newspaper advertisement from the April
21, 1994 edition of the Los Angeles Times, discussing
petitioner's TERM-OUT product and a featuring a photo
thereof, and petitioner's Hawaii state registration on May
1, 2003 of TERMOUT as a trade name, which specifies the term
of registration to run from May 1, 2003 through April 30,
2004.
Next we consider petitioner's submission of the
transcript of the deposition of David Miller taken on
written questions.
A party proposing to take a deposition on written
questions must file and serve notice of the proposed
deposition within 10 days of the opening of its testimony
period. A copy of the questions to be answered by the
witness must accompany the copy of the notice served on the
Cancellation No. 92041178
13
adverse party. See Trademark Rule 2.124(b), 37 C.F.R. §
2.124(b). The Miller deposition was noticed on January 9,
2004 and taken on January 20, 2004 over the course of less
than 25 minutes. This was improper under Trademark Rule
2.124, insofar as it was premature. A party receiving
notice that an adverse party wishes to take a deposition on
written questions has 20 days from the date of service of
the notice to serve cross questions. See Trademark Rule
2.124(d)(1), 37 C.F.R. § 2.124(d)(1).
Respondents, in their submission of their "testimony,"
and later in their brief, made clear that they would have
liked to have had questions of their own answered by the
witness. Petitioner's taking of the deposition on written
questions was improper. Moreover, it cannot be justified by
the brief delay of respondents in noting their
dissatisfaction with their exclusion from the process, i.e.,
the delay between the taking of the deposition and their
statement of their objections during their testimony period.
Accordingly, we have not considered petitioner's improperly
taken deposition on written questions.
Respondents’ registration is presumed valid and
petitioner bears the burden of proving its claim by a
preponderance of the evidence. Cerveceria Centroamericana
S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307, 1309 (Fed. Cir. 1989); see also, Martahus v. Video
Cancellation No. 92041178
14
Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846, 1850
(Fed. Cir. 1993). Given the legally identical nature of the
involved marks and the legally identical nature of the
involved goods, the likelihood of confusion among consumers
is clear. The burden to be borne by petitioner, however,
includes the critical element of proving its prior and
continuous use of a trademark at common law. Hydro-Dynamics
Inc. v. George Putnam & Company, Inc., 811 F.2d 1470, 1
USPQ2d 1772, 1773 (Fed. Cir. 1987) ("In the usual case the
decision as to priority is made in accordance with the
preponderance of the evidence.").
On the admissible evidence of record, which consists of
a single printed publication showing only that petitioner
advertised its TERM-OUT product in the April 21, 1994
edition of the Los Angeles Times, and an official record
showing that petitioner registered TERMOUT as a trade name
in Hawaii for the period of May 1, 2003 through April 30,
2004, petitioner has failed to establish by a preponderance
of the evidence that it should prevail on the issue of
priority.
The Los Angeles Times advertisement includes a
photograph of applicant's product showing trademark use of
its asserted mark, but the advertisement does not establish
that the goods were sold in commerce, only that they were
offered for sale in 1994. Even if we inferred from the
Cancellation No. 92041178
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advertisement and photograph that petitioner had, in 1994,
made actual sales of its product bearing the trademark, or
if we considered the advertisement to establish use
analogous to trademark use, there is no admissible evidence
to show use of the mark in any manner subsequent to 1994 and
prior to respondent's priority filing date in 1999.
Clearly, such a period of non-use presents a prima facie
case of abandonment. In addition, because petitioner has
been on notice during this case that respondent questioned
whether petitioner's trademark use has been continuous –
indeed, petitioner even moved for summary judgment on this
issue – its failure to provide sufficient, admissible
evidence of prior and continuous use of TERM-OUT, as a mark
or in any manner sufficient to prove priority, is fatal to
petitioner's case. Cf. West Florida Seafood Inc. v. Jet
Restaurants Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1666 (Fed.
Cir. 1994)(plaintiff not put on proper notice of allegation
of abandonment).
As to the evidence showing petitioner registered
TERMOUT (without a hyphen) as a trade name in 2003, this is
a date well after respondent's priority filing date. Even
under the West Florida Seafood decision, supra, which
instructs that the Board must look at admissible evidence
"as a whole, as if each piece of evidence were part of a
puzzle which, when fitted together, establishes prior use,"
Cancellation No. 92041178
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31 USPQ2d at 1663, we do not find that the fitting together
of petitioner's 1994 advertisement of a TERM-OUT product and
its 2003 registration of TERMOUT as a trade name makes a
complete puzzle establishing priority. As petitioner's
proof of priority is insufficient for it to bear its burden
of proof, it cannot prevail on its claim under Section 2(d)
of the Trademark Act.
Decision: The petition for cancellation is denied.