Volackv.The Enterprise Foundation, Inc.

Trademark Trial and Appeal Board

Aug 24, 2007

No. 91168576 (T.T.A.B. Aug. 24, 2007)

Mailed:
August 24, 2007
JTW

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Volack
v.
The Enterprise Foundation, Inc.
_____

Opposition No. 91168576
to Application Serial No. 78551444
filed on 1/21/2005
_____

Wayne Volack, Pro Se.

Carole R. Klein of Morgan, Lewis & Bockius, and Gregory
Bedward, Esq. for The Enterprise Foundation, Inc.

______

Before Quinn, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Wayne Volack (opposer) has opposed the application by
The Enterprise Foundation, Inc. (applicant) to register the
mark shown below on the Principal Register for services
identified as “housing construction financing” in
International Class 36 and “planning, laying out, and
construction of environmentally-conscious housing
communities” in International Class 37.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91168576
2

The application was filed on January 21, 2005. Applicant
has disclaimed the exclusive right to use “GREEN
COMMUNITIES” in the application. Applicant entered the
disclaimer in response to a requirement to do so based on a
finding that GREEN COMMUNITIES was merely descriptive of the
identified services. Applicant claims first use of the mark
anywhere in both classes on February 23, 2004 and first use
of the mark in commerce in both classes on September 29,
2004.
The Claims
Apparently opposer drafted the notice of opposition
without the help of counsel. Consequently the claims are
difficult to construe. We construe the notice liberally and
afford opposer the benefit of the doubt where possible in
our construction. According to our construction, the notice
asserts claims of likelihood of confusion under Trademark
Act Section 2(d), 15 U.S.C. § 1052(d), and dilution under
Trademark Act Section 1125(c), 15 U.S.C. § 1125(c). Notice
of Opposition at unnumbered pages 1 and 3. Opposer also
appears to assert unfair-competition and infringement
Opposition No. 91168576
3
claims, claims which we have no authority to consider. Id.
at unnumbered page 4. See Trademark Act Section 1 et seq.,
15 U.S.C. § 1051 et seq. Accordingly, we give no further
consideration to opposer’s unfair competition and
infringement claims.
As the basis for his claims opposer appears to assert
that he used the GREEN COMMUNITIES word mark prior to the
filing of the opposed application in conjunction with
services he identified in his abandoned Application Serial
No. 76099278 as “community of environmentally built friendly
structures utilizing green building codes involving like
minded individuals concerning green/environment related
issues.” Notice of Opposition at 1 and attached “fig 1.”
In the notice of opposition opposer also states,
“Petitioner’s distinctness (sic) capable of distinguishing
from other marks (sic) are the words ‘Utilizing Green
Building Codes.’” (Emphasis in the original.)
In its answer applicant has denied the salient
allegations in the notice of opposition.
Both opposer and applicant have filed briefs.
The Record
The record in this case consists of the file of the
opposed application, the pleadings, opposer’s notice of
reliance and opposer’s testimonial depsition of Mr. Volack
with exhibits. We will discuss certain problems with
Opposition No. 91168576
4
opposer’s evidence below. Applicant did not submit any
evidence, nor did applicant object to any of opposer’s
evidence.
Standing
Although applicant has not challenged opposer’s
standing, opposer’s standing is a threshold inquiry we must
consider in every inter partes case. In Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999), the Federal
Circuit has enunciated a liberal threshold for determining
standing, i.e., whether one’s belief that one will be
damaged by the registration is reasonable and reflects a
real interest in the case. See also Jewelers Vigilance
Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021, 2023 (Fed. Cir. 1987); and Lipton Industries, Inc. v.
Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA
1982).
In our discussion above we construe opposer’s notice of
opposition liberally to include a pleading which is
sufficient for standing purposes. Opposer has submitted
evidence he apparently believes would suffice to show his
use of and senior rights in the GREEN COMMUNITIES mark in
connection with certain goods or services. While the
evidence is problematic to say the least for reasons
discussed below, under the liberal standard for standing we
will accept opposer’s evidence as sufficient for this
Opposition No. 91168576
5
limited purpose and proceed to our consideration of
priority.
Likelihood of Confusion - Priority
Because applicant failed to offer any evidence during
its testimony period, the earliest date of first use upon
which applicant can rely is the filing date of its
application, that is, January 21, 2005. Lone Star
Manufacturing Co., Inc. v. Bill Beasley, Inc., 498 F.2d 906,
182 USPQ 368 (CCPA 1974). On the other hand, in the absence
of pleading and showing current ownership of a relevant
registration, opposer must show through competent evidence
that he established rights in his pleaded mark prior to
applicant’s filing date to prevail on his likelihood of
confusion claim. Floralife, Inc. v. Floraline
International Inc., 225 USPQ 683, 684 (TTAB 1984). If
opposer fails to show priority, his likelihood of confusion
claim fails. Opposer bears the burden of establishing his
priority, and other elements of his case, by a preponderance
of the evidence. Bose Corp. v. QSC Audio Products Inc.,
293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002). We conclude
that opposer has failed to establish his priority.
In considering opposer’s evidence regarding priority we
have reviewed the entire record, and in particular, any
evidence which might bear on priority, that is, opposer’s
use of the GREEN COMMUNITIES mark prior to applicant’s
Opposition No. 91168576
6
filing date. We will discuss only the specific evidence
which appears to relate most directly to the issue of
opposer’s use of the GREEN COMMUNITIES mark prior to the
filing date of the opposed application. As our discussion
indicates, even that evidence falls far short of what is
required to show prior use and priority.
First, we will consider evidence which is in any way
relevant to opposer’s use of the mark in Mr. Volack’s
testimonial deposition. Mr. Volack proceeded here without
assistance from counsel. Mr. Volack presented his testimony
by answering questions posed to him by the court reporter.
Applicant did not take part in the testimonial deposition.
Therefore, no objections were raised, and there was no cross
examination. Thus, applicant waived its rights to object
both to the testimony and the exhibits presented during the
testimony. See CareFirst of Maryland Inc. v. FirstHealth of
the Carolinas Inc., 77 USPQ2d 1492, 1500 (TTAB 2005).
The testimony most relevant to the issue of opposer’s
prior use and priority follows:
Q. – Please tell the Court all marketing efforts with
regards to plaintiff’s use of the mark Green
Communities since July 31, 2000.

A. – I have used primarily the channels of trade of the
Internet with all five related Green Communities
suffixes. Examples of the suffixes are .com, .net,
.info, .org, and .us. I have been advertising green
communities built by third parties and utilizing third-
party verifiable green building codes. I have an
exhibit also to submit to the Court.

Opposition No. 91168576
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(Discussion off the record.) (Deposition exhibits A
through E, 2, 4, 6, 8, 10, F, 43, 54, 55, 58 through
60, 64, 13 through 25, and 28 through 33 were marked.)
…

Q. – Plaintiff’s mark appears to be descriptive.
Please tell the Court why Green Communities is not
descriptive.

A. - The text word “Green Communities” has become
suggestive and distinctive with plaintiff over the last
five years with continuous Internet use with third
parties relating to construction and financing
utilizing state green building codes. State green
building codes are the distinctive element to
Plaintiff’s mark. And I would like to submit Exhibit C
to the Court to show the distinctiveness of Plaintiff’s
mark Green Communities.

Q. – Please tell the Court if Plaintiff is aware if
Green Communities Internet suffixes, i. e., .com, .net,
.org, .us, and .info have any relevant significance to
this case.

A. – Yes, they do. I monitor and own all suffixes with
this domain, Green Communities. I would like to submit
Exhibit D to the Court.

Volack Test. at 5-7.
Throughout his testimony, as evidenced by this excerpt,
Mr. Volack fails to lay a foundation for, or otherwise
discuss, his exhibits. Therefore, we consider the specific
exhibits without the benefit of any information with regard
to their origin or significance. Here again, we have
considered any exhibit which could in any way arguably
relate to opposer’s use of the GREEN COMMUNITIES mark. The
exhibits filed with Mr. Volack’s testimony appear to bear
additional markings which do not correspond precisely to the
letters and numbers he identifies in his testimony. Under
Opposition No. 91168576
8
the circumstances, it is not possible to ascertain whether
all of the exhibits under the numbers referenced in his
testimony were filed.
An exhibit marked Exhibit 1 and “fig 1” consists of a
copy of a USPTO automated record from the TESS data base
showing certain information regarding Application Serial No.
76099278, referenced above. This appears to be the
application opposer filed on July 31, 2000 for the GREEN
COMMUNITIES mark for “community of environmentally built
friendly structures utilizing green building codes involving
like minded individuals concerning green/environment related
issues.” The application was apparently amended to the
Supplemental Register on July 30, 2001 and became abandoned
on November 22, 2002. This abandoned application has no
probative value with regard to opposer’s use of the GREEN
COMMUNITIES mark or priority. Even if the application were
active, it would not serve as evidence of the facts alleged
in the application, but only of the fact that the
application was filed. Lasek & Miller Assoc. v. Rubin, 201
USPQ 831, 833 n.3 (TTAB 1978). Cf. Bonomo Culture
Institute, Inc. v. v. Mini-Gym, Inc., 188 USPQ 415, 416
(TTAB 1976) (expired registration is not evidence of rights
in a mark).
An exhibit marked as Exhibit A and “fig A” consists of
a single page showing use of the GREEN COMMUNITIES mark at
Opposition No. 91168576
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the top with a TM symbol. It appears to be a copy of an
Internet web page, though it does not include a URL line.
It includes the statement “Welcome – Green communities are
energy efficient communities constructed utilizing
established green building codes.” It also includes what
appear to be “buttons” linked to additional pages and links
to related sites, a list of states and news items. The only
dated item on the page states, “Congress members call for
support of State Global Warming Clean Car Efforts
(9/26/06).” There is no mention of opposer. This page has
no probative value with regard to opposer’s use of the
phrase GREEN COMMUNITIES as a mark or priority.
An exhibit marked as Exhibit D and “fig D” consists of
copies of what appear to be Internet pages associated with
GO DADDY.com, again without URL lines, with the notation
“Search the whois database.” at the top of each. The pages
appear to reflect domain name registrations for the
GREENCOMMUNITIES.COM, GREENCOMMUNITIES.NET,
GREENCOMMUNITIES.ORG, GREENCOMMUNITIES.INFO, and
GREENCOMMUNITIES.US Internet domain names. Each shows only
an address after “Registrant” with no name, with the
exception of the GREENCOMMUNITIES.INFO page which shows
Wayne Volack as registrant with the same address as listed
in the other records. Each page identifies “volack, wayne”
as both the administrative and technical contacts. These
Opposition No. 91168576
10
pages have no probative value with regard to opposer’s use
of the phrase GREEN COMMUNITIES as a mark or priority.
The mere registration of a term as a domain name does
not establish any trademark rights. Brookfield
Communications Inc. v. West Coast Entertainment Corp., 174
F.3d 1036, 50 USPQ2d 1545, 1555 (9th Cir. 1999).
Furthermore, the mere use of a domain name, only as a domain
name, likewise does not establish trademark use. In re
Eilberg, 49 USPQ2d 1955, 1956 (TTAB 1998).
Turning to opposer’s notice of reliance, we note at the
outset that many of the documents opposer submitted under
his notice of reliance are not the types of documents which
the rules permit to be filed in this manner. Trademark Rule
2.122), 37 C.F.R. § 2.122. Nonetheless, in the absence of
any objection, we have exercised our discretion and
considered all of the documents opposer filed under the
notice of reliance.
The first set of documents opposer submits under the
notice consists of copies of applicant’s responses to
opposer’s interrogatories. We have considered all of the
responses. We find nothing in these responses which in any
way constitutes evidence of opposer’s use of its mark, let
alone use prior to applicant’s filing date.
Secondly, in his notice of reliance opposer refers to a
group of documents he submitted previously attached to his
Opposition No. 91168576
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notice of opposition, but opposer does not include copies of
those documents with the notice of reliance. Opposer
apparently expected that we would simply refer to the notice
of opposition for this purpose.
We note that, subject to certain exceptions not
relevant here, “… an exhibit attached to a pleading is not
evidence on behalf of the party to whose pleading the
exhibit is attached unless identified and introduced in
evidence as an exhibit during the period for the taking of
testimony.” 37 C.F.R. § 2.122(c). Again, in the absence of
any objection, we will exercise our discretion and we will
consider the exhibits attached to opposer’s notice of
opposition as if they had been submitted with its notice of
reliance.
We also note for the record that most of the exhibits
are not proper subject matter for submission under a notice
of reliance. The rule, in relevant part, limits documents
filed in this manner to:
(e) Printed publications and official records. Printed
publications, such as books and periodicals, available
to the general public in libraries or of general
circulation among members of the public or that segment
of the public which is relevant under an issue in a
proceeding, and official records, if the publication or
official record is competent evidence and relevant to
an issue, may be introduced in evidence by filing a
notice of reliance on the material being offered. The
notice shall specify the printed publication (including
information sufficient to identify the source and the
date of the publication) or the official record and the
pages to be read; indicate generally the relevance of
the material being offered; and be accompanied by the
Opposition No. 91168576
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official record or a copy thereof whose authenticity is
established under the Federal Rules of Evidence, or by
the printed publication or a copy of the relevant
portion thereof. A copy of an official record of the
Patent and Trademark Office need not be certified to be
offered in evidence. The notice of reliance shall be
filed during the testimony period of the party that
files the notice.

37 C.F.R. § 2.122(e).
Opposer has neither identified the specific documents
nor explained their relevance. Again, we will not enforce
this formality here. We will consider the documents to the
extent we are able to do so without the usual foundation.
The documents consist of: a copy of the USPTO TESS
automated record related to opposer’s abandoned application
for GREEN COMMUNITIES, discussed above; similar records
related to other abandoned applications filed by opposer for
marks other than GREEN COMMUNITIES; a series of what appear
to be email messages from third parties to opposer; and a
series of what appear to be copies of pages obtained from
various Internet sites and similar documents. While certain
of these documents would be excluded under the rules, in the
absence of objection from applicant we have considered them.
We find no evidence in these documents which in any way
establishes opposer’s use of the phrase GREEN COMMUNITIES as
a mark prior to the filing date of the opposed application.
Lastly, with his notice of reliance opposer submitted,
under a claim of confidentiality, what appear to be recent
Opposition No. 91168576
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reports with statistics regarding “views” and “clicks”
related to certain “greencommunities” domain names, and
other domain names. Exhibits XXX and ZZZ. Some of the
reports bear 2006 dates, others are undated. Here too, we
have no foundation for the consideration of these documents.
And again, the documents generally do not appear to be among
the types we would consider proper under a notice of
reliance. However, in the absence of an objection, we have
considered them. We find no evidence in these documents
which supports opposer’s use of GREEN COMMUNITIES as a mark
prior to the filing date of the opposed application.
In sum, we have considered all of the evidence opposer
submitted in this proceeding and find no evidence to support
his claim that he used the phrase GREEN COMMUNITIES as a
mark prior to the filing date of the opposed application
with regard to any goods or services. Accordingly, we
dismiss opposer’s likelihood of confusion claim.
Dilution
Under Section 43(c) of the Trademark Act the threshold
requirement for a party asserting dilution in a Board
proceeding is a showing that the mark at issue is both
distinctive and famous. 15 U.S.C. § 1125(c). Dilution is
an extraordinary remedy which applies to only a select class
of marks which are highly distinctive and which have
achieved the ultimate in fame. Toro Co. v. ToroHead Inc.,
Opposition No. 91168576
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61 USPQ 1164, 1173 (TTAB 2001). A party claiming dilution
must show that its mark became famous before the defendant,
here applicant, filed the opposed application. Id. at 1174
n.9. The Board applies a rigorous test in evaluating
whether the mark is sufficiently distinctive and famous.
Id. at 1176.
In this case opposer has neither pleaded that his mark
is famous nor submitted any evidence to show that he used
the mark prior to the filing date of the opposed application
nor that his mark became distinctive and famous before the
filing date of the opposed application.
In sum, we find that opposer has failed to make the
necessary claims to properly plead dilution and that opposer
has failed to show either prior use or the distinctiveness
and fame required to maintain a dilution claim.
Accordingly, we dismiss opposer’s dilution claim.
Decision: The opposition is dismissed.