Nextstage Entertain-ment Corp.v.Stages Theatre Co.

Trademark Trial and Appeal Board

Jan 18, 2005

No. 91121402 (T.T.A.B. Jan. 18, 2005)

Mailed: January 11, 2005
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Nextstage Entertainment Corporation
v.
Stages Theatre Company
_____
Opposition No. 91121402
_____
Mark A. Tidwell of Bracewell & Patterson, L.L.P. for Nextstage
Entertainment Corporation.
Barry A. Gersick of Maslon Edelman Borman & Brand, LLP for Stages
Theatre Company
______
Before Seeherman, Walters and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by Stages Theatre Company
(applicant) to register the mark NEXT STAGE on the Principal
Register for the following services (as amended): "entertainment
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opp. No. 91121402
2
in the nature of theater production in the fields of dramatic
arts, music, literature, and dance."1
On July 12, 2000, Nextstage Entertainment Corporation
(opposer) filed an opposition to registration of the above
application. As grounds for opposition, opposer asserts that it
was formed in 1998; that in 1997 it acquired from its predecessor
in interest, NextStage Development, L.P., rights in the mark
NEXTSTAGE; that since as early as January 1998, opposer has been
using NEXTSTAGE in connection with the promotion of live
entertainment events including shows and musical events and the
development and operation of live entertainment venues; and that
applicant's mark for the services identified in the application
so resembles opposer's previously used mark as to be likely to
cause confusion, mistake or deception.
Applicant filed an answer denying the salient allegations in
the opposition. In addition, applicant affirmatively asserted
that its date of first use of the mark was at least as early as
June 15, 1997 and that applicant is the senior user of the mark.
Then on May 7, 2001, during the discovery period, applicant
filed a motion to amend its application to change the date of
first use and first use in commerce from May 11, 1998, to April
15, 1997 and June 15, 1997, respectively. In support of the

1 Application Serial No. 75528682 filed on July 31, 1998, alleging
dates of first use and first use in commerce on May 11, 1998.
Opp. No. 91121402
3
motion, applicant submitted an affidavit, with exhibits, executed
September 13, 2000 by its producing director, Steve Barberio.
The Board deferred consideration of the motion until final
decision.
Opposer did not take any testimony, but on the last day of
its testimony period submitted a notice of reliance on various
materials. Applicant took no testimony nor introduced any other
evidence in its own behalf. Only opposer filed a brief. An oral
hearing was not requested.
As a preliminary matter, we need to address the
admissibility of the materials offered into the record by
opposer's notice of reliance.
The documents sought to be introduced by the notice of
reliance include the following items: a filing receipt from the
USPTO for application Serial No. 75798583 filed by Nextstage
Entertainment Corporation (opposer herein) on September 14, 1999
based on an intent to use the mark NEXTSTAGE for, inter alia,
"promoting the sports competitions, concerts, and live events of
others"; an Office action indicating suspension of that
application pending disposition of the subject application;
applicant's motion to amend its dates of use along with a copy of
the same September 13, 2000 affidavit of Steve Barberio, with
attachments, that had been submitted by applicant in support of
its motion to amend; and applicant's responses to opposer's
Opp. No. 91121402
4
interrogatories and admission requests, and its written responses
to opposer's document requests (but not the documents
themselves).2
The Office action and filing receipt are admissible by
notice of reliance (see Trademark Rule 2.122(e)) as are
applicant's responses to opposer's interrogatories and requests
for admissions (see Trademark Rule 2.120(j)(3)(i)). Also
considered of record under the notice of reliance are applicant's
written responses to opposer's document production requests.
See, e.g., NASDAQ Stock Market Inc. v. Antartica S.r.l., 69
USPQ2d 1718, 1722 n.6 (TTAB 1998) (Trademark Rule 2.120(j)(3)(ii)
does not prohibit introduction of a response to a request for
production that states that no responsive documents exist). We
note that in response to several of opposer's interrogatories,
applicant stated that it "incorporates by reference in this
answer the Affidavit of Steve Barberio dated September 13, 2000,
with attached exhibits." Therefore, the Barberio affidavit with
supporting materials, while not otherwise admissible as a
separate submission, is considered as forming part of applicant's
answers to the interrogatories and thus properly of record by
notice of reliance under Trademark Rule 2.120(j)(3)(i).

2 Opposer states in its notice of reliance that the discovery responses
have been submitted to show the nature of applicant's services and the
market for those services.
Opp. No. 91121402
5
Opposer has also attempted to introduce by notice of
reliance a number of purported "publications" which opposer has
relied on to show, among other things, the date of first use of
opposer's mark. These "publications" consist of, or have been
identified in the notice of reliance as: a "concert industry
consortium" employee name tag; a "schedule of costs" of opposer's
affiliates relating to "trade name promotion"; a "client/contact
list"; memoranda regarding "artist information"; a NextStage
Development, L.P. "contact log"; a NextStage Development L.P.,
"Information" sheet; a copy of a July 30, 2001 assignment of the
mark NEXT STAGE from Constituent Arts, Ltd. to opposer;
brochures, newsletters, performance schedules and programs for
various years; and a copy of an application for the mark
NEXTSTAGE dated September 14, 1999 purportedly filed by opposer
in the Office.
None of these documents is admissible by a notice of
reliance. They do not qualify as either printed publications,
such as books and periodicals, available to the public, or as
official records, as contemplated by Rule 2.122(e). See Wagner
Electric Corporation v. Raygo Wagner, Inc., 192 USPQ 33 (TTAB
1976) and The Conde Nast Publications Inc. v. Vogue Travel, Inc.,
205 USPQ 579 (TTAB 1979). See also, for example, Colt Industries
Operating Corp. v. Olivetti Controllo Numerico S.p.A., 221 USPQ
73, 74 n.2 (TTAB 1983) (an agreement between applicant and a
Opp. No. 91121402
6
third party, press releases, and a shipping document are not
acceptable for a notice of reliance); Glamorene Products
Corporation. v. Earl Grissmer Company, Inc., 203 USPQ 1090, 1092
n.5 (TTAB 1979) (private promotional literature is not presumed
to be publicly available within the meaning of the rule); and
Hunt-Wesson Foods, Inc. v. Riceland Foods, Inc., 201 USPQ 881,
883 (TTAB 1979) (brochures and other promotional literature are
not admissible by notice of reliance).
In addition, the document which appears to be opposer's own
file copy of an application and which does not even reflect that
it was received by the Office is not admissible as an official
record. See Hard Rock Cafe International (USA) Inc. v. Elsea, 56
USPQ2d 1504 (TTAB 2000) and Weyerhaeuser Co. v. Katz, 24 USPQ2d
1230 (TTAB 1992).
As provided in Trademark Rule 2.123(l), evidence not
obtained and filed in compliance with the rules of practice will
not be considered by the Board. On occasion, the Board has
considered improperly filed evidence to be of record where there
has been no objection by the adverse party and where the conduct
of, or papers filed by, the adverse party could be fairly
interpreted as a stipulation that the evidence be considered of
record. See, e.g., Southwire Co. v. Kaiser Aluminum & Chemical
Corp., 196 USPQ 566, 569 n.1 (TTAB 1977). However, in this case,
since applicant filed no evidence or a brief or any other papers,
Opp. No. 91121402
7
we cannot presume that the evidence was treated as being of
record. See Original Appalachian Artworks Inc. v. Streeter, 3
USPQ2d 1717 (TTAB 1987). Accordingly, these materials have been
given no consideration.
On the basis of the evidence that is properly of record,
opposer has demonstrated its standing, that is, its real interest
in the proceeding, by the submission of an Office action showing
that opposer's application has been suspended as a result of the
application herein. See Cunningham v. Laser Golf Corp., 222 F.3d
942, 55 USPQ2d 1842 (Fed. Cir. 2000); and, e.g., The Hartwell Co.
v. Shane, 17 USPQ2d 1569 (TTAB 1990).
With respect to priority, we turn first to applicant's claim
of prior use and its proposed amendment to the dates of use in
its application. The exhibits submitted with Mr. Barberio's
affidavit consist of a 1997-1998 season schedule and a printer's
invoice for the schedule. The affidavit states only that the
schedule was "ordered" on April 15, 1997 and "sent through the
United States mails to [applicant's] constituency on or about
June 15, 1997."
An applicant is entitled to prove an earlier use than the
date alleged in its application but its proof must be clear and
convincing and must not be characterized by contradiction,
inconsistencies and indefiniteness. See Hydro-Dynamics, Inc. v.
Opp. No. 91121402
8
George Putnam & Co., Inc., 811 F.2d 1470, 1 USPQ2d 1772 (Fed.
Cir. 1987).
Applicant's submission is insufficient to establish that
applicant used NEXT STAGE on April 15, 1997 and in commerce on
June 15, 1997. The mere ordering of promotional materials from
the printer clearly does not amount to technical service mark use
or use analogous to service mark use. Further, the distribution
of a season schedule that advertises upcoming performances
without evidence that the performances actually occurred on the
dates stated in the schedule does not constitute technical
service mark use. See Section 45 of the Trademark Act ("...a
mark shall be deemed to be in use in commerce ... on services
when it is used or displayed in the sale or advertising of
services and the services are rendered in commerce...").
Thus, applicant's motion to amend the dates of first use is
denied. Because applicant did not otherwise submit any
convincing evidence of its use, the earliest date upon which
applicant is entitled to rely for purposes of priority is the
July 31, 1998 filing date of its application.
However, opposer, for its part, has failed to properly
introduce any evidence that its mark NEXTSTAGE was used at all,
Opp. No. 91121402
9
let alone used prior to the filing date of applicant's
application.3
Accordingly, inasmuch as we find that opposer has not
established its priority, opposer cannot prevail on its claim of
likelihood of confusion.
Decision: The opposition is dismissed.

3 Opposer's request, in its brief, that the Board take judicial notice
of two applications (other than the application submitted with its
notice of reliance) namely, application Serial No. 75421657, filed by
opposer's predecessor and subsequently abandoned and Serial No.
75646852 filed by opposer, is denied. The Board does not take judicial
notice of applications filed in the Office. See In re Consolidated
Cigar Co., 35 USPQ2d 1290 (TTAB 1995). Even if these applications were
properly of record, they would only be admissible and probative for
what they show on their face and not for proving the truth of any
statements made therein. See TBMP §§ 704.07 and 704.08 For example,
any dates of use alleged in these applications would not be evidence of
such use.