Richard Poindexterv.Vincent E. Ballard

Trademark Trial and Appeal Board

Jul 11, 2008

No. 92046121 (T.T.A.B. Jul. 11, 2008)

Mailed: July 11, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Richard Poindexter
v.
Vincent E. Ballard
_______

Cancellation No. 92046121
to Registration No. 3124162
issued on August 1, 2006
_______

Duane Harley of D. Harley for Richard Poindexter.

Vincent E. Ballard, Pro se.
_______

Before Quinn, Walters and Taylor, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Richard Poindexter (“petitioner”) filed his petition to
cancel the registration of Vincent E. Ballard (“respondent”)
for the mark THE PERSUADERS for “entertainment services,
namely, live performances by a musical and vocal group,” in
International Class 41.1

1 Registration No. 3124162, issued August 1, 2006, on the Principal
Register.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Cancellation No. 92046121
2
Petitioner stated in its electronic filing that “the
grounds for cancellation … are due to registrants (sic)
registered the name under fraud, immoral scandalous matter,
deceptiveness and false suggestion of a connection.”
Petitioner did not supplement this statement with an
allegation of standing or any factual allegations.
Nonetheless, respondent filed his answer and “denied
the unnumbered single allegation” and asserted as
“affirmative defenses” unclean hands, estoppel and that the
petition should be dismissed “based upon fraud and
misrepresentation of the facts relevant to this trademark.”2
The record consists of the pleadings and the file of
the involved registration. Petitioner did not file any
testimony, but he did file a number of documents by notice
of reliance.3 With the exception of an excerpt from
Billboard Magazine, none of the documents submitted thereby
is amenable to submission by notice of reliance. See
Trademark Rule 2.122(3), 37 CFR §2.123(e), and TBMP §704.
Petitioner submitted his own responses to respondent’s
interrogatories, which may not be submitted without
respondent’s consent, and which was not given either
explicitly or implicitly. Petitioner submitted statements

2 Respondent also requested damages and attorney’s fees, which the Board
has no authority to grant.

3 Petitioner also filed documents by notice of reliance prior to his
trial period and, pursuant to the Board order of May 22, 2007, this
filing has not been considered.
Cancellation No. 92046121
3
signed by petitioner and various individuals that are not
noticed depositions nor are they in the proper form of a
declaration or affidavit as required by Trademark Rule 2.20,
37 CFR §2.20, and respondent did not consent to submission
of testimony by affidavit. Petitioner also submitted, inter
alia, advertisements and promotional flyers and various
other documents, none of which is properly introduced into
evidence by notice of reliance because these documents lack
a proper foundation and authentication. Aside from the
BillBoard Magazine excerpt, which is not probative of any
claim before the Board, none of the evidence submitted by
petitioner has been considered for the reasons noted above.
Even if we were to find that respondent implicitly consented
to the submission of petitioner’s evidence in this form,
which we do not, due to the form and nature of the
submission, the evidence is not of any probative value.
Trademark Rule 2.123, 37 CFR §2.123, and TBMP §703. In
particular, we do not find the facts stated in the personal
statements to be credible because the individuals have not
been subject to cross examination, the statements are not in
the proper form of a declaration or affidavit as required by
Trademark Rule 2.20, 37 CFR §2.20, and respondent’s signed
statement, discussed below, includes allegations contrary to
the allegations stated therein.
Cancellation No. 92046121
4
Finally, also pursuant to its notice of reliance,
petitioner submitted a document that appears to be an
amended pleading, alleging various facts and claims of
unfair competition, passing off and misappropriation. Aside
from the fact that this filing is untimely, it does not
allege claims that may be considered by the Board and it has
not been considered.
By notice of reliance, respondent submitted a signed
statement entitled “testimony” which is not a noticed
deposition nor is it in the form of a declaration or
affidavit as required by Trademark Rule 2.20, 37 CFR §2.20.
Respondent also submitted various exhibits that are not
amenable to submission by notice of reliance. Respondent’s
submissions suffer from the same infirmities noted above in
connection with petitioner’s submissions and, for the same
reasons, respondent’s submissions have not been considered.
Both parties filed briefs on the case.
It is clear from the briefs that this is a case
involving conflicting claims of ownership of the same mark,
THE PERSUADERS, in connection with entertainment services in
the nature of live performances by a musical and vocal
group.
Considering, first, petitioner’s pleading, we find that
petitioner has failed to allege either standing or facts
that, if proven, would establish petitioner’s asserted
Cancellation No. 92046121
5
claims. Petitioner also did not plead fraud with
particularity, as required. See FRCP 9. See generally
Commodore Electronics Ltd. v. CBM Kaushiki Kaisha, 26 USPQ2d
1503 (TTAB 1993); Kelly Services Inc. v. Greene’s
Temporaries, Inc., 25 USPQ2d 1460, 1463-1464 (TTAB 1992);
and J. Thomas McCarthy, Trademarks and Unfair Competition,
§§ 20.04[2] and 20.07 (3rd ed. 1996).
Further, even if we consider respondent to have
implicitly consented to the trial of the asserted claims
before the Board in view of his answer, filings and brief,
petitioner has not established either his standing or any
claim reasonably pleaded by petitioner.
Regarding standing, for a petitioner to prevail in a
cancellation proceeding, it must establish that it possesses
standing to challenge the registration and that there is a
valid ground why the registration should not be maintained.
See, Lipton Industries, Inc. v. Ralston Purina Company, 670
F.2d 1024, 213 USPQ 185 (CCPA 1982). Even if we were to
find that respondent has somehow admitted petitioner’s
standing, petitioner’s lack of probative evidence results in
his failure to meet his burden of proof of the asserted
claims.
Decision: The petition to cancel is denied.