Sircle, Inc. v. Sievright

Sircle, Inc. v. Andrew Sievright

No. 92055746

United States Patent and Trademark Office, Trademark Trial and Appeal Board

April 13, 2016

THIS OPINION IS NOT A PRECEDENT OF THE TTAB

Sircle, Inc., pro se.

Andrew Sievright, pro se.

Before Kuczma, Adlin and Goodman, Administrative Trademark Judges.

OPINION

Adlin Administrative Trademark Judge.

Andrew Sievright ("Respondent"), by assignment from Net Visibility, Inc., owns a registration for the mark SIRCLE, in standard characters, for, inter alia "advertising and information distribution services namely, providing classified advertising space via the global computer network; promoting the goods and services of others over the internet; providing on-line computer databases and on-line searchable databases featuring classified listings and want ads" in International Class 35 (the "Registration").^[1] In its amended petition to cancel the Registration for these Class 35 advertising services only, Sircle, Inc. ("Petitioner") alleges use of, and ownership of a pending application to register, an identical mark for advertising services.^[2] As grounds for cancellation, Petitioner alleges nonuse of the involved mark, and that "[t]o the extent Registrant ever used the mark in connection with advertising and information distribution services, he has since abandoned that use, " and "has no intent to resume using the mark in connection with advertising and information distribution services."^[3] Finally, Petitioner alleges fraud, in that Respondent's predecessor/assignor Net Visibility's claim of use of the mark was knowingly false and intended "to help it procure" the Registration. In his answer, Respondent denies the salient allegations in the amended petition for cancellation.

The Record

For the first two years of this proceeding, both parties were represented by counsel, but before the trial began, both parties' attorneys withdrew. Both parties then elected to represent themselves pro se, and this appears to have impacted the trial of this case. Specifically, neither party took any testimony, and neither submitted any evidence in accordance with the Trademark Rules.

Rather, during its testimony period, on June 14, 2015, Petitioner filed and apparently served a letter which inter alia includes statements and arguments in support of Petitioner's claims. 47 TTABVue.^[4] On July 7, 2015, the day its pretrial disclosures were due, Respondent filed his own similar letter, which inter alia includes statements and arguments in support of denying the petition for cancellation. 48 TTABVue. Finally, during its rebuttal testimony period, Petitioner filed another letter, entitled "Rebuttal Outline, " which responds to Respondent's letter and includes more statements and arguments in support of cancelling the Registration. 49 TTABVue.

Generally, letters such as these are not admissible under the Federal Rules of Evidence or the Trademark Rules. See, e.g., Trademark Rules 2.122(a), 2.122(e) and 2.123. While parties may stipulate to the introduction of testimony by declaration or affidavit, Trademark Rule 2.123(b), or to other less formal methods of presenting evidence than provided in the Trademark Rules, TBMP § 705, in this case no such stipulations are of record.

Nevertheless, given the timing and content of the filings, it is apparent that the letters are intended to constitute the parties' "trial" evidence and trial "briefs." Perhaps more importantly, not only did neither party object to the other's submission(s), but each party appears to essentially accept as true the facts alleged in its adversary's letter. Accordingly, we deem the parties' letters submitted during the trial phase of this proceeding to have been stipulated into the record, and will essentially treat them as if they were declaration testimony submitted pursuant to an approved stipulation under Trademark Rule 2.123(b). See e.g., Bayer Consumer Care AG v. Belmora LLC, 110 U.S.P.Q.2d 1623, 1627 (TTAB 2014), rev'd on other grounds, 84 F.Supp.3d 490, 115 U.S.P.Q.2d 1032 (E.D. Va. 2015), vacated and remanded, ___ F.3d ___ (4^th Cir. Mar. 23, 2016); Hilson Research Inc. v. Society for Human Resource Management, 27 U.S.P.Q.2d 1423, 1425 n.8 (TTAB 1993).^[5] The record also includes the pleadings and the file of the involved Registration.

Standing

Petitioner's filing indicates that it is using the trade name and service mark SIRCLE and variations thereof in connection with advertising-related services. 47 TTABVue 4-6. This establishes its standing. Ritchie v. Simpson, 170 F.3d 1092, 50 U.S.P.Q. 1023 (Fed. Cir. 1999); Lipton v. Ralston Purina Co., 670 F.2d 1024, 213 U.S.P.Q. 185, 189-190 (CCPA 1982); Automedx, Inc. v. Artivent Corp., 95 U.S.P.Q.2d 1976, 1978 (TTAB 2010); 7-11 Sales, Inc. v. Perma, S.A. 225 U.S.P.Q. 170 (TTAB 1984).

Petitioner's Burden of Proof

"Because a trademark owner's certificate of registration is 'prima facie evidence of the validity of the registration' and continued use of the registered mark, the burden of proof is placed upon those who seek cancellation. 15 U.S.C. § 1057(b) … Accordingly, in a cancellation for abandonment, as for any other ground, the petitioner bears the burden of proof. Moreover, the petitioner's burden is to establish the case for cancellation by a preponderance of the evidence." Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 U.S.P.Q.2d 1307, 1309 (Fed. Cir. 1989); see also, On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 U.S.P.Q.2d 1471, 1476 (Fed. Cir. 2000); 7-11 Sales, 225 U.S.P.Q. at 170.

Nonuse and Abandonment

As a prerequisite to registration, a service mark "must be actually used in conjunction with the services described in the application for the mark, " and, more specifically, "advertisement and actual use of the mark in commerce are required." Aycock Engineering Inc. v. Airflite Inc., 560 F.3d 1350, 90 U.S.P.Q.2d 1301, 1308 (Fed. Cir. 2009); Intermed Communications, Inc. v. Chaney, 197 U.S.P.Q. 501 (TTAB 1977).

Once a mark is registered, the Trademark Act provides for the cancellation of the registration if the mark has been abandoned. 15 U.S.C. §1064(3); On-line Careline, 56 U.S.P.Q.2d at 1476. A mark is considered abandoned when "its use has been discontinued with intent not to resume such use, " and "[n]onuse for 3 consecutive years shall be prima facie evidence of abandonment." 15 U.S.C. §1127; On-line Careline, 56 U.S.P.Q.2d at 1476.

Petitioner's evidence is incompetent to prove either nonuse prior to Net Visibility's filing of its Statement of Use, or abandonment of the mark at any time thereafter. Indeed, Petitioner's claims of nonuse and abandonment are based on its claims that: (1) Respondent's site sircle.com "has sat at or under 33 members the last couple of years;" (2) the site "does not appear to have a membership fee for these 33 members;" and (3) Petitioner "cannot find Mr. Sievright's Sircle on Facebook, Twitter, Instagram or Pinterest." 47 TTABVue 3. These claims are unsupported by anything other than Petitioner's speculation; they do not account for the possibility that Respondent used and continues or intends to use its mark in ways other than those Petitioner addresses; they do not address Net Visibility's use or nonuse at the time it filed its Statement of Use, or establish nonuse for any particular three year period of time; and they do not establish that Respondent has no intent to resume use, if indeed its use was at some point discontinued. Furthermore, Petitioner concedes that "[t]here may be some small advertising revenue in the sub $10.00 per month range derived from visitors to the site. There is a small ad space box connected to Google AdSense. The Google AdSense program delivers an ad to the home page space." Id.^[6] In short, Petitioner has not established its claims of nonuse or abandonment by a preponderance of the evidence.^[7]

Fraud

"Fraud in procuring a trademark registration occurs when an applicant knowingly makes false, material representations of fact in connection with its application with intent to deceive the USPTO."...