TV Azteca v. Martin

TV Azteca, S.A.B. de C. V. v. Jeffrey E. Martin

No. 92068042

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

December 7, 2018

John M. Murphy of Arochi Marroquin & Lindner SC, for TV Azteca, S.A.B. de C.V.

Jeffrey E. Martin, appearing pro se.

Before Wolfson, Adlin and Hightower, Administrative Trademark Judges.

OPINION

Wolfson, Administrative Trademark Judge

Jeffrey E. Martin (Respondent) owns a registration for the mark depicted below for "entertainment services, namely live performances by a musical group."^[1]

(Image Omitted)

On March 7, 2018, TV Azteca, S.A.B. de C.V. (Petitioner) petitioned to cancel the registration on the ground of abandonment. In his answer, Respondent denies the salient allegations of the petition to cancel.^[2]

The Trademark Trial and Appeal Board recently established a pilot program to explore procedures for expediting certain cancellation proceedings to further the USPTO's goal of maintaining the accuracy and integrity of the U.S. Trademark Register. This newly established "expedited cancellation" procedure is initiated by the Board.^[3] On an on-going basis, the Board identifies cancellation cases, such as this one, that have not resulted in disposition by default and in which the only claims are abandonment or nonuse (or both). Cases with counterclaims are ineligible for the program. Once a case is identified as a candidate for the expedited cancellation program, the Board participates in the parties' discovery conference to discuss voluntary stipulation to one or more of the Board's several Accelerated Case Resolution (ACR) options, including pretrial final disposition on the merits see Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 528.05(a)(2) (2018), or abbreviated trial on the merits, see TBMP § 702.04.

This case was identified as a candidate for expedited cancellation, the Board participated in the parties' discovery conference, and the parties agreed to litigate this case as an expedited cancellation proceeding.^[4] The parties agreed to exchange initial disclosures but dispense with formal discovery. Both parties filed testimony and documentary evidence together with their main briefs, and Petitioner filed a rebuttal brief.^[5]

I. The Pleadings

Petitioner pleads ownership of Application Serial No. 87427925 to register the mark MYST (in standard characters) for "entertainment in the nature of theater productions; entertainment, namely, a continuing variety show broadcast over television; presentation of variety shows" in International Class 41, ^[6] and alleges that its application was refused registration based on a likelihood of confusion with the mark in Respondent's registration. As the sole ground for cancellation, Petitioner alleges that Respondent abandoned his MYST mark by discontinuing its use "for at least three years preceding the filing of this Petition to Cancel," with no intent to resume use.^[7]

Respondent asserts that he has continually used the mark MYST for a musical group, and that "the group MYST performed live 8 times" from March 25, 2015 to September 4, 2017.^[8] Respondent also asserts that he has performed live as an acoustic solo artist using the mark MYST.^[9]

II. Description of the Record

The pleadings and, pursuant to Trademark Rule 2.122(b), 37 C.F.R § 2.122(b), the registration file of Respondent's mark are automatically of record.

A. Petitioner's Testimony and Evidence

Petitioner filed the following testimony and evidence:

• Declaration of John M. Murphy, Petitioner's counsel, and accompanying exhibits Nos. 1-25.^[10]

• Copies of the New Jersey Revised Statutes Title 33, Sections 33:1-12; 33:1-12.18; 33:1-18; 33:1-19; 33:1-19.1; 33:1-2; and 33:1-26 (2013), on the issuance of licenses for intoxicating liquors.^[11]

B. Respondent's Testimony

Respondent filed an unsworn statement with accompanying exhibits A-K.^[12]

III. Discussion

A. Standing

Standing is a threshold issue that must be pleaded and proven by the plaintiff in every inter partes case. Petitioner must establish that it has a "real interest," i.e., a "reasonable" basis for its belief of damage. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 U.S.P.Q.2d 1058, 1062 (Fed. Cir. 2014) (citing Ritchie v. Simpson, 170 F.3d 1092, 50 U.S.P.Q.2d 1023, 1025-26 (Fed. Cir. 1999)); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 U.S.P.Q. 185 (TTAB 1982). Here, the refusal of Petitioner's pleaded application based on Respondent's registration establishes its real interest and standing in this proceeding.^[13] Weatherford/Lamb Inc. v. C&J Energy Servs. Inc., 96 U.S.P.Q.2d 1834, 1837 (TTAB 2010) ("Inasmuch as petitioner has made of record the USPTO Office action suspending its pleaded application pending the possible refusal to registration under Section 2(d) of the Lanham Act based on an alleged likelihood of confusion with respondent's registration, there is no question that petitioner has standing to bring this petition for cancellation."); LifeZone Inc. v. Middleman Grp., Inc., 87 U.S.P.Q.2d 1953, 1959 (TTAB 2008); see also Lipton Indus., Inc., 213 U.S.P.Q. at 189.

B. Abandonment

1. Statement of the Law of Abandonment

The Trademark Act provides for the cancellation of a registration if the registered mark has been abandoned. See Section 14 of the Trademark Act, 15 U.S.C. § 1064. Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a mark is deemed abandoned:

When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

As the Board has explained, "[b]ecause registrations are presumed valid under the law, the party seeking their cancellation bears the burden of proving a prima facie case of abandonment by a preponderance of the evidence." Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., 126 U.S.P.Q.2d 1526, 1532 (TTAB 2018); see also OnLine Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 U.S.P.Q.2d 1471, 1476 (Fed. Cir. 2000); Exec. Coach Builders, Inc. v. SPV Coach Co., 123 U.S.P.Q.2d 1175, 1180-81 (TTAB 2016). Proof of nonuse for three consecutive years constitutes prima facie evidence of abandonment "because it supports an inference of lack of intent to resume use." Yazhong Investing, 126 U.S.P.Q.2d at 1533; see also On-line Careline, 56 U.S.P.Q.2d at 1476. If the petitioner presents a prima facie case of abandonment, the burden of production, i.e., of going forward, then shifts to the trademark holder to rebut the prima facie showing with evidence of either: (1) use of the mark during the statutory period; or (2) an intent to resume use. Rivard v. Linville, 133 F.3d 1446, 45 U.S.P.Q.2d 1374, 1376 (Fed. Cir. 1998); Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 U.S.P.Q.2d 1307, 1311 (Fed. Cir. 1989). The burden of persuasion, however, always remains with the petitioner. Rivard, 45 U.S.P.Q.2d at 1376. Because abandonment is a question of fact, any inference of abandonment must be based on proven fact. Cerveceria Centroamericana, 13 U.S.P.Q.2d at 1310 ("The protection due the registrant is provided by requiring that the inference [of abandonment] have an adequate foundation in proven fact. Whenever an inference is based on pure speculation and 'there is no basis … to infer nonuse,' a prima facie case of abandonment must fail.") (quoting P.A.B. Produits et Appareils de Beaute v. Satinine Societa in Nome Collettivo di S.A. e. M. Usellini, 570 F.2d 328, 196 U.S.P.Q. 801, 804-05 (CCPA 1978)).

2. Evidence of Abandonment

We begin with Respondent's initial disclosures.^[14] Respondent's disclosures consist of the following:

• Exhibit A - A copy of a letter dated May 8, 2018 from "Dave Dillman, D-Toxin Productions" addressed to Respondent.

The letter reads, in pertinent part: "Enclosed is the balance of the payment for Myst performing at my show on May 3rd. … That's the third time in the last four years you saved my ass when a band canceled at the last minute."

• Exhibit B - A photograph of Respondent. Petitioner provided a copy of an article (dated May 8, 2018) about a Maryland music festival in which the photograph appeared.^[15]

• Exhibit C - A copy of a flyer promoting a "MYST" concert on "March 25th" [no year specified] at the Pennant East in Bellmawr, New Jersey.

• Exhibit D - A copy of a photograph of Mr. Martin, shown holding a microphone, apparently singing. The photograph is undated. No other persons are in the picture.

• Exhibit E - A copy of the front and back views of a MYST business card, undated.

• Exhibit F - A photograph of a MYST handstamp, undated.

• Exhibit G - A photograph of three MYST shirts, undated.

• Exhibit H - A photograph of MYST golf balls, undated.

• Exhibit I - A photograph of a page from a yearbook, undated, including a picture of Respondent and the attribution "Long live Myst."

• Exhibit J - Undated photographs of two Pennsylvania license plates: "MYST" and "MYST ROX."

• Exhibit K - A copy of a GoDaddy "My Products" page showing "myst.rocks" and "jeffmartin.us" domains, undated.^[16]

Respondent also made statements about these exhibits in his initial disclosures, but they are not properly sworn or otherwise verified under Trademark Rule 2.20, 37 C.F.R. § 2.20.^[17] Therefore, they are not testimony. McDonald's Corp. v. McKinley, 13 U.S.P.Q.2d 1895, 1897 n.4 (TTAB 1989) ("unsworn statement does not constitute testimony"); In re Dermahose Inc., 82 U.S.P.Q.2d 1793, 1797 (TTAB 2007) ("In effect, the common feature of oaths, sworn statements, unsworn...