South Central Community Services, Inc.v.William R. Wood

Trademark Trial and Appeal Board

Aug 18, 2011

No. 92048239 (T.T.A.B. Aug. 18, 2011)

Mailed:
August 18, 2011
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

South Central Community Services, Inc.
v.
William R. Wood
________

Cancellation No. 92048239
against Registration No. 2836536
_______

Julie Nichols Matthews, Shannon T. Harell and Jami A. Gekas
of Wildman Harrold Allen & Dixon LLP for South Central
Community Services, Inc.

William R. Wood, pro se.
_______

Before Bucher, Grendel and Wolfson, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
South Central Community Services, Inc. (petitioner) has
petitioned to cancel the registration owned by William R.
Wood (respondent) for the following mark:

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92048239
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The parties to this litigation:
William R. Wood filed Application Serial Number
78226693 for the composite mark shown above on March 18,
2003, basing the application on use in commerce under
Section 1(a) of the Act in connection with services
eventually recited as “entertainment services in the nature
of a series of on-going
television programs in
the field of variety
shows and lip syncing
contests.” Mr. Wood’s
specimen of record,
however, was simply an
advertisement for a lip
synching contest held
at “Moose
McGillycuddy’s Pub &
Cafe” in San Diego, CA.
Despite the mismatch, the Office did not require a specimen
demonstrating use of the claimed design mark in connection
with a series of ongoing television programs, and
Registration No. 2836536 (the “‘536 mark”) issued to
respondent on April 27, 2004.
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Three years later, on April 9, 2007, petitioner filed
Application Serial No. 77148623 for the mark Puttin’ On The Hits
(in standard character format), claiming use at least as early
as March 1, 1986, in connection with “entertainment in the
nature of visual and audio performances, and musical,
variety, news and comedy shows” in International Class 41.
The Office refused registration on the ground that there
would be a likelihood of confusion with respondent’s ‘536
mark. Very soon thereafter, on October 2, 2007, petitioner
filed the current petition for cancellation, alleging that
respondent had ceased using the cited mark many years
earlier, was not using the mark as of the petition date, and
thus had abandoned the rights, if any, that he may have
owned at some earlier date.
In the cancellation case at hand, petitioner filed on
July 17, 2009 a motion for summary judgment based upon
respondent’s abandonment of the mark. Although the motion
for summary judgment was denied on November 20, 2009, a
panel of this Board found that petitioner had established as
a matter of law that respondent had not made use of his
claimed mark for the services recited in the registration
(e.g., for “a series of ongoing television programs”) for a
period in excess of three years subsequent to the date of
Cancellation No. 92048239
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registration.1 This finding is now law of the case.
Furthermore, this prima facie showing of abandonment shifted
the burden to respondent to demonstrate that he had an
intent to resume use of the mark.
Then, on June 3, 2010, the Board granted petitioner’s
motion of March 16, 2010, to amend its petition for
cancellation to include a claim of non-use.
Finally, the record shows that Registration No. 2836536
was cancelled under Section 8 of the Trademark Act on
December 3, 2010.2 Nonetheless, both parties have requested,
in response to a show cause order of the Board, that the
Board issue a judgment on the merits of the amended petition
to cancel based upon the claims of non-use and abandonment.
The record:
Petitioner introduced the testimony of Dr. Felicia
Blasingame, Petitioner’s President and Chief Executive

1 The Board explicitly noted that neither the petition to
cancel nor the subsequent motion for summary judgment raised the
question of whether respondent’s mark was in use as of the filing
date of the application or the date of the issuance of the
resulting registration.
2 Respondent seems to misapprehend the basic structure of
maintaining a registration as set out in Section 8 of the Act.
The required declaration during the sixth year of a registration
is a statutory mandate in order to keep a registration alive into
the seventh year. The subsequent Section 8 declarations timed to
match each ten-year renewal under Section 9 represent further
averments needed to maintain a registration – not an alternative
to the sixth year declaration to be exercised at registrant’s
option, as suggested in respondent’s response of December 23,
2010, at p. 2.
Cancellation No. 92048239
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Officer, together with Petitioner’s trial exhibits 1 - 8.
Petitioner also introduced the testimony of Mary Wysocki, a
paralegal at the offices of petitioner’s counsel, Wildman
Harrold Allen & Dixon, together with petitioner’s trial
exhibits 9 - 14. Petitioner also filed a Notice of Reliance
(November 12, 2010) on: the cancelled registration of the
PUTTIN’ ON THE HITS design mark owned by MCA Television, Ltd.;
the Trademark Trial and Appeal Board’s earlier order in this
proceeding (of November 20, 2009); the California Secretary
of State’s “Business Entity Detail” for “Puttin’ on the
Hits, Inc.”; an unpublished Ninth Circuit opinion from 1991;
certain of respondent’s discovery responses in this
proceeding; two dictionary definitions; and correspondence
between respondent and third parties produced during
discovery. Petitioner’s trial exhibits A - H. Respondent
did not submit any testimony, trial exhibits or notices of
reliance. In fact, respondent has not introduced a single
piece of evidence for consideration at trial.
Issues:
There are two issues remaining before us in the case at
hand: (1) Non-Use: Whether respondent was using the
claimed mark at the time of his application and
registration; and (2) Abandonment: Alternatively, whether
respondent has carried his burden of establishing an intent
Cancellation No. 92048239
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to resume use of the claimed mark subsequent to the issuance
of his registration following a period of at least three
years of non-use.
A Timeline
Given the unusual posture of this case, and assuming
that readers of this opinion may not be aware of the twists
and turns surrounding the history of “Puttin’ on the Hits,”
we begin with a timeline of more than twenty-five years of
relevant events surrounding this service mark, as follows:
1984 to
1988
The original “Puttin on
the Hits” television
series was a lip-synching
competition that aired on
television. MCA
Television, Ltd. was the
owner of the mark shown
at right, and distributed
the TV program (co-
produced by Chris Bearde
and Dick Clark).
3
May 1984 Respondent’s Lip Sinc organization proposed to MCA
that respondent would promote the TV series by holding
official series auditions, that respondent would
provide Dick Clark’s organization with videotapes of
the lip synching auditions/local contests, and
respondent would receive compensation through the
licensing of these promotions. No formal written
agreements were ever signed. Relations between the
parties terminated after Dick Clark’s representatives
became dissatisfied with the referral arrangement.

3 Petitioner’s trial exhibit A. Registration No. 1357275
issued on August 27, 1985, reciting “entertainment services in the
nature of a series of television programs,” and based upon claims
of first use anywhere and first use in commerce at least as early
as January 1, 1984; cancelled January 28, 1992 under Section 8
(sixth year) of the Act; registration was never assigned according
to the TARR database reflecting the records of the United States
Patent and Trademark Office assignment division.
Cancellation No. 92048239
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Although Dick Clark no longer referred inquiries to
respondent, respondent continued to hold out his
affiliation with the TV series.
November
1, 1985
A cease-and-desist letter issued from counsel for MCA
Television, Ltd. to respondent, in which MCA explains
that it is “has not ‘endorsed’ any entity to represent
[MCA] in lip-sinc contests . . . and [it] certainly
has not authorized the use of the [original PUTTIN’ ON
THE HITS design mark]” for use in connection with a
lip synch contest hosted by Respondent.4
March 1,
1986
Petitioner, South Central Community Services, Inc., a
community service organization that was founded in
1970, began using “Puttin’ On The Hits” mark to
distinguish its unique charity fundraising shows
featuring an array of musical, variety, news and
comedy performances, as a way to provide funding for
after-school programs and recreational programs for
high-risk youth.5
April 22,
1986
Counsel for MCA sent a telegram to a Houston TV/radio
company explaining that respondent was “not authorized
by MCA nor does it represent MCA in any way.”6
January 7,
1987
Counsel for Dick Clark Productions, in letter to
respondent’s attorney: (i) denied the existence of
any relationship between Clark and respondent; (ii)
stated that respondent falsely represented itself as
an exclusive representative for the auditions for its
“Puttin on the Hits” television series; (iii) stated
that respondent was in no way a joint venturer or
partner with Clark’s production of the television
program; and (iv) stated that respondent did not
create the concept for the TV program.7

4 Petitioner’s trial exhibit H, Letter to Randy Wood,
President, Lip Sinc International, Inc.
5 See Blasingame deposition at 12-20; petitioner’s trial
exhibit 5 and 7. The record shows that for more than twenty-five
years, petitioner has extensively and continuously used the mark
in this manner. In recent years, petitioner has raised around
$30,000 from ticket sales for each event. Sponsors include firms
such as Target Corporation, AT&T and State Farm Insurance.
6 Petitioner’s trial exhibit H, Letter to Bill Vandesand of
Taft Television & Radio Co.
7 Petitioner’s trial exhibit H, Letter to G. Byron Jamison,
then respondent’s counsel.
Cancellation No. 92048239
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August 28,
1991
The Ninth Circuit Court of Appeals upheld the U.S.
District Court’s finding that MCA/Bearde/Clark did not
wrongfully deny the existence of any agreement between
themselves and respondent.8
March 2003 Respondent has consistently claimed first use anywhere
and first use in commerce at least as early as March
2003 of the PUTTIN’ ON THE HITS design mark, and that
he has used the mark continuously until the present.
March 18,
2003
Respondent filed Application Serial No. 78226693 for
the PUTTIN’ ON THE HITS design mark in connection with
“entertainment services in the nature of a series of
television programs and in market contests and shows,”
in International Class 41.
July 11,
2003
Respondent files for corporate status with the
California Secretary of State.9
August 29,
2003

The assigned Trademark Examining Attorney completes a
priority action with respondent qua applicant about
amending the recitation of services to make it more
definite and requiring a new special form drawing.
October
19, 2003
The Trademark Examining Attorney issued a final
refusal on respondent’s failure to include the
modifier “a series of on-going” before “television
programs” in amended recitation of services. Hours
later, respondent sent back an email response
confirming the services as “ … a series of ongoing
television programs …”
February
3, 2004
Respondent’s mark was approved for publication (and
then published for opposition) although no mention was

8 Respondent’s Lip Sinc organization asserted trademark
infringement, unfair competition, unjust enrichment and bad faith
denial of contract claims against Dick Clark Productions, Inc.
(“Clark”), MCA Television, Ltd. (“MCA”) and Chris Bearde
Productions, Inc. (“Bearde”). The district court granted
defendant’s motion for summary judgment. Respondent, as a
principal of the earlier-plaintiff/appellant (Lip Sinc) filed this
unsuccessful appeal to the Ninth Circuit Court of Appeals. See
petitioner’s trial exhibit D, Lip Sinc International, Inc. v. Dick
Clark Productions., Inc., 942 F.2d 792 (9th Cir. 1991). See also
respondent’s email of April 4, 2004 to Sandy Frank, petitioner’s
trial exhibit H, and petitioner’s trial exhibit F, Respondent’s
Answer to Petitioner’s First Set of Interrogatories at 13.
9 Petitioner’s trial exhibit C.
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made by the Trademark Examining Attorney about the
inappropriateness of the specimen of record.10
April 27,
2004
Respondent’s application proceeded to issue as
Registration No. 2836536.
July 2004 Respondent explained in several email bids to
potential financiers (all contacts proved ultimately
unsuccessful) that the “‘All New’ Puttin’ on the Hits”
television series “has not yet been produced” and that
he was “looking for funding and distribution” for the
series.11
April 9,
2007
Petitioner filed Application Serial No. 77148623 for
its mark, “Puttin’ On The Hits” in connection with
“entertainment in the nature of visual and audio
performances, and musical, variety, news and comedy
shows” in International Class 41.
July 18,
2007
The United States Patent and Trademark Office refused
petitioner’s application to register on the ground
that there would be a likelihood of confusion with
respondent’s PUTTIN’ ON THE HITS design mark.
October 1,
2007
Petitioner filed this cancellation proceeding.
November
20, 2009
A panel of this Board found as a matter of law that
respondent had not made use of the PUTTIN’ ON THE HITS
design mark for a period in excess of three years
subsequent to the date of registration.
April 2010 According to a document
of record, the
California Secretary of
State’s “Business Entity
Detail” “Puttin on the
Hits, Inc.,” was an
entity having a
“suspended” status.
12

10 We note that while this detail is relevant to petitioner’s
continuing allegations of respondent’s non-use of the mark on the
registered services, the ex parte failure of the United States
Patent and Trademark Office to obtain an appropriate specimen for
these recited services is itself not a basis for cancellation.
Flash & Partners S.p.A. v. I.E. Manufacturing LLC, 95 USPQ2d 1813
(TTAB 2010) [ex parte examination issues do not form a basis for
cancellation].
11 Petitioner’s trial exhibit G.
12 Petitioner’s trial exhibit C.

Cancellation No. 92048239
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December
3, 2010
Respondent’s mark is cancelled under Section 8 of the
Act.
Our Findings drawn from this Record:
1. Petitioner has standing to bring this action inasmuch
as it has offered entertainment services to the public
under the mark “Puttin’ On The Hits” for twenty-five years,
as well as the fact that petitioner’s pending
application was refused registration based upon
respondent’s then-extant registration.
NON-USE BY RESPONDENT
2. Respondent has no rights in MCA Television, Ltd’s
PUTTIN’ ON THE HITS design mark, was never assigned or
licensed any rights in MCA Television’s cancelled U.S.
Registration No. 1357275,13 and was never in privity
with MCA Television.
3. From respondent’s informal involvement with MCA
Television, Ltd. from the mid-1980’s through his plan
to launch a new television series in 2003, and more
recently, prior to, at the time of, or since filing his
trademark application (U.S. Application Serial No.
78226693), respondent has never used the PUTTIN’ ON THE
HITS design mark in connection with any “ongoing
television programs,” and makes no legitimate excuse
for his failure to do so.14
4. Respondent’s “specimen of use” submitted with his
PUTTIN’ ON THE HITS design mark application was not a

13 Petitioner’s trial exhibit C.
14 See Petitioner’s trial exhibit F: Responses No. 1; See
Petitioner’s trial exhibit E: Admissions at ¶ 1.
Cancellation No. 92048239
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specimen demonstrating use in connection with the
registered services or any ongoing television series.15
5. Despite amendments to the recital of services
confirming “ … a series of ongoing television
programs …,” the United States Patent and Trademark
Office did not require a new specimen demonstrating use
of the alleged mark in connection with “a series of
ongoing television programs.”
6. In retrospect, respondent has actually described the
“Moose McGillycuddy” specimen as part of “a contest
format to generate revenues in anticipation of
producing a PUTTIN’ ON THE HITS television program.”16
7. At all times prior to and since filing his service mark
application, the only services on which respondent has
ever used the design mark is a non-televised lip
synching contest.17
8. Respondent was not using the PUTTIN’ ON THE HITS design
mark in connection with the recited services at the
time he filed his use-based application in 2003 and,
therefore, his now-cancelled registration was never
valid,18 and respondent never had any rights to use this
mark.

15 As seen above, it was merely an advertisement for a local lip
synching contest held at “Moose McGillycuddy’s Pub & Cafe” in San
Diego, CA. See also petitioner’s trial exhibit E: Respondent’s
Answer to Petitioner’s Request For Admission To Respondent, ¶ 5.
16 See Petitioner’s trial exhibit E: Admissions at ¶ 5.
17 Petitioner’s trial exhibit B: Admissions at ¶ 5.
18 In fact, inasmuch as the mark that was the subject of the
application under Section 1 of the Trademark Act was not in use in
commerce as of the filing date of the application, his application
for registration of March 2003 must be deemed to have been “void
ab initio.”
Cancellation No. 92048239
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ABANDONMENT BY RESPONDENT
9. Alternatively, even if respondent had used the PUTTIN’
ON THE HITS design mark in connection with the
registered services at some point in time (which he has
not), it is the law of the case that respondent did not
make use of the mark for a period in excess of three
years subsequent to the date of registration. After
discontinuing such use for at least a three-year
period, respondent has failed to demonstrate a good
faith intent to resume use of the PUTTIN’ ON THE HITS
design mark in connection with the registered services.
10. Although Respondent claims extensive use of his PUTTIN’
ON THE HITS design mark on www.youtube.com videos and
Internet websites, this is simply not the case.19 The
claimed YouTube clips are short segments of MCA
Television’s original programs from the 1980’s.20
However, none of these video clips from the 1980’s is a
full-length television show, and none appears to
demonstrate respondent’s use of his design mark in
connection with an ongoing television series inasmuch
as these properties do not belong to respondent.21
Accordingly, we find that Internet postings of short,
incomplete snippets of an off-the-air television show
(to which respondent never had any rights), in no way
demonstrate use of respondent’s PUTTIN’ ON THE HITS
design mark in connection with an “ongoing television
program.”

19 Petitioner’s trial exhibit F: Responses at Prefatory
Statement and ¶ 9.
20 Wyoscki Dep. at 26 - 29; Petitioner’s trial exhibits 13 & 14.
21 Wysocki Dep. at 28 - 29; Petitioner’s trial exhibits 13 & 14.
Needless to say, we have no evidence on this point, nor are we
authorized to make any findings in the area of copyrights.
Cancellation No. 92048239
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11. Despite respondent’s claims that he uses his PUTTIN’ ON
THE HITS design mark at his websites
www.puttinonthehits.org and www.puttinonthehits.tv,
neither of these URL addresses are active websites.22
12. Rather, whatever token uses of respondent’s alleged
mark may have appeared on these sites, such uses were
clearly insufficient to qualify as use under the Lanham
Act.23
13. Respondent is not currently using the PUTTIN’ ON THE
HITS design mark in connection with the registered
services.
14. In fact, since March 2003, respondent has been
unsuccessful in licensing any person or entity to use
the PUTTIN’ ON THE HITS design mark in commerce in
connection with a series of ongoing television
programs.24
15. Although respondent alleges that he has been engaged in
negotiations with “Thunderball Films” to produce a new
television series borrowing the basic concept of the
original television series (e.g., featuring lip
synching), should a television show ever be developed
and aired pursuant to these negotiations, Thunderball
Films planned to call their new show “America’s Lip
Sync Stars,” not “Puttin’ on the Hits.”25

22 See petitioner’s trial exhibit F: Responses No. 1;
Petitioner’s trial exhibit G; Wysocki Dep. at 23 – 25; and
Petitioner’s trial exhibits 10 & 11.
23 Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575,
14 USPQ2d 1390 (Fed. Cir. 1990)
24 Petitioner’s trial exhibit E: Admissions at ¶ 2.
25 Petitioner’s trial exhibit E: Admissions at ¶¶ 3-4;
Petitioner’s trial exhibit 12.
Cancellation No. 92048239
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16. The undisputed evidence establishes that Thunderball
Films has never used respondent’s claimed mark, and
currently has no bona fide intention of using under
license the PUTTIN’ ON THE HITS design mark.26
17. Nonetheless, respondent erroneously contends that he
does not actually need to use his mark in association
with on-air television program, or to demonstrate
objectively his intent to resume, in order to keep and
preserve his registered mark.27
18. Respondent contends that he should not be forced to
actually use this mark in association with television
programming services in order to show that his mark has
not been abandoned, but rather that he should be able
to take as much time as he needs in order to get his
series on the air.28 However, we find that respondent’s
purely subjective aspirations to re-engage a mark at
some indefinite future time is not sufficient proof of
respondent’s intent to resume use.29
19. If contrary to our findings above (¶¶ 2 – 8, supra), it
should be determined that at some point in the past
respondent did have a valid service mark registration,
respondent has failed to use his claimed mark for a
period of years well in excess of the statutory period
required to demonstrate prima facie abandonment under
the Lanham Act. Respondent was placed on notice that

26 Petitioner’s trial exhibit E: Admissions at ¶¶ 3-4.
27 Petitioner’s trial exhibit E: Admissions at ¶ 1.
28 Petitioner’s trial exhibit F: Responses at p. 2.
29 Ideal Toy Corp. v. Cameo Exclusive, 170 USPQ 596, 599 (TTAB
1971); see also MCCARTHY at § 17:13; Conwood Corp. v. Lowe’s
Theatres, Inc., 173 USPQ 829 (TTAB 1971); Volkswagenwerk
Aktiengesellschaft v. Advance Welding & Mfg. Corp., 193 USPQ 673
(TTAB 1976).

Cancellation No. 92048239
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he must produce evidence of intent to resume use within
the reasonably foreseeable future in order to rebut the
presumption of abandonment. Inasmuch as there is not a
single piece of objective evidence in this record that
respondent has a specific intent to resume use of this
mark in connection with the registered services, the
registration would otherwise have to be cancelled as
abandoned.
20. Respondent has failed to submit any records related to
his hypothetical launch of a series of television
programs. To the contrary, the evidence of record
includes, but is not limited to the following: his
permitting his federal registration to be cancelled,
his several websites to become inactive, and his
company’s California business entity to be suspended.
As a result, there is absolutely no way that respondent
would be able to resurrect this cancelled registration; we
find that petitioner has shown continuous use in commerce of
its mark since March 1986; and inasmuch as respondent’s
cancelled registration is no longer a bar to registration of
petitioner’s application, the assigned Trademark Examining
Attorney should determine if it is appropriate for the
current suspension of petitioner’s application for the mark
“Puttin’ On The Hits” to be lifted.
Decision: The cancellation of respondent’s expired
registration should be granted on the merits. We hereby
Cancellation No. 92048239
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enter judgment, with prejudice, against respondent and in
favor of petitioner, in this proceeding.