The Learning Journey International, L.L.C. v. Hua Yongfu

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

THIS ORDER IS A P.O. Box 1451

PRECEDENT OF THE TTAB Alexandria, VA 22313-1451

General Contact Number: 571-272-8500

General Email: TTABInfo@uspto.gov

Kim

September 6, 2024

Cancellation No. 92082654

The Learning Journey International, L.L.C.

v.

Hua Yongfu

Before Heasley, Pologeorgis and Elgin,

Administrative Trademark Judges.

By the Board:

This matter comes up on The Learning Journey International, L.L.C.’s

(“Petitioner’s”) motion for summary judgment on all of the grounds asserted in its

petition for cancellation. The motion is fully briefed.1

1 10 TTABVUE, 14 TTABVUE and 15 TTABVUE. The format of Respondent’s brief in

opposition to the motion is improper in that it is single-spaced. All briefs electronically

submitted to the Board must be in at least 11-point type and double-spaced. See Trademark

Rule 2.126(a)(1), 37 C.F.R. § 2.126(a)(1). While the Board may refuse to consider filings that

do not meet the requirements of Trademark Rule 2.126(a)(1) or any other applicable rule, in

this instance, we exercise our discretion to consider the filing in view of the potentially

dispositive nature of Petitioner’s motion and because the two-page submission, were it

properly spaced, clearly would fall well within the page limitations for briefs under

Trademark Rule 2.127(a), 37 C.F.R. § 2.127(a).

Citations in this order to the briefs and other materials in the case docket refer to

TTABVUE, the Board’s online docketing system. See New Era Cap Co. v. Pro Era, LLC, 2020

USPQ2d 10596, at *2 n.1 (TTAB 2020).

Cancellation No. 92082654

Background

On June 29, 2023, Petitioner filed a petition to cancel Registration No. 5949378

for the mark LEARN-JOURNEY in standard characters for “blackboards; bunting of

paper; canvas for painting; cardboard; chalks; corrugated paper; craft paper; desk

stands and holders for pens, pencils, and ink; document holders; erasers; fiber paper;

file pockets; fluorescent paper; greeting cards; holiday cards; luminous paper; musical

greeting cards; note books; note paper; packing paper; paintings; paper; paperboard;

pen stands; pencils; pens; postcards; self-adhesive tapes for stationery and household

purposes; stationery; stickers; washi; white paperboard; adhesive note paper;

painting sets for children” in International Class 16.2

Petitioner identified priority and likelihood of confusion under Section 2(d) of the

Trademark Act, 15 U.S.C. § 1052(d); nonuse under Section 1(a) of the Trademark Act,

15 U.S.C. § 1051(a); abandonment under Section 14(3) of the Trademark Act, 15

U.S.C. § 1064(3); fraud under Section 14(3) of the Trademark Act; and that the mark

never was used in commerce under Section 14(6) of the Trademark Act, 15 U.S.C.

§ 1064(6), as grounds for cancellation on the ESTTA-generated cover sheet to the

petition for cancellation.3

2 The underlying application was filed on June 14, 2019, under Section 1(a) of the

Trademark Act, 15 U.S.C. § 1051(a), and matured to registration on the Principal Register

on December 31, 2019.

3 1 TTABVUE 2.

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Cancellation No. 92082654

On August 8, 2023, Hua Yongfu (“Respondent”) filed an answer to the petition for

cancellation denying its salient allegations.4 Discovery opened on September 7, 2023.5

Following the disposition of Petitioner’s motion to compel6 Respondent’s initial

disclosures, the close of discovery was reset to March 28, 2024.7

On December 5, 2023, Petitioner served Respondent with its first set of discovery

requests, including requests for admission.8 Responses to the discovery requests were

due by January 4, 2024. See Trademark Rule 2.120(a)(3), 37 C.F.R. § 2.120(a)(3).

Respondent, however, did not respond to the discovery requests, including

Petitioner’s admission requests.9 Consequently, Petitioner took its requests for

admission as admitted under Fed. R. Civ. P. 36(a)(3)10 and, based on the admissions,

moved for summary judgment on each of its claims on February 16, 2024.11

4 4 TTABVUE.

5 2 TTABVUE 3.

6 6 TTABVUE.

7 9 TTABVUE 1.

8 10 TTABVUE 9 and Exhibit H (10 TTABUE 75-83); Declaration of Mario C. Vasta (“Vasta

Declaration”), ¶ 5 and Exhibit A (10 TTABVUE 72-74).

9 Vasta Declaration at ¶ 5. 10 TTABVUE 72.

10 The Federal Rules of Civil Procedure are made applicable to Board proceedings under

Trademark Rule 2.116(a), 37 C.F.R. § 2.116(a).

11 On March 7, 2024, a motion to extend the time to respond to the motion for summary

judgment by sixty (60) additional days was filed by Respondent. 12 TTABVUE. No reason

was given for the request. Petitioner opposed the motion on March 8, 2024. 13 TTABVUE.

Prior to the Board’s disposition of the motion for extension, Respondent, on March 14, 2024,

timely filed a response to the motion for summary judgment. 14 TTABVUE. In view thereof,

Respondent’s motion for extension is denied as moot and will be given no further

consideration.

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Cancellation No. 92082654

Summary Judgment Standard

A motion for summary judgment is a pretrial device intended to save the time and

expense of a full trial when the moving party is able to demonstrate, prior to trial,

that there is no genuine dispute of material fact, and that it is entitled to judgment

as a matter of law. See Fed. R. Civ. P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317,

323 (1986); Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23

USPQ2d 1471, 1472 (Fed. Cir. 1992); Sweats Fashions Inc. v. Pannill Knitting Co.,

833 F.2d 1560, 4 USPQ2d 1793, 1795-96 (Fed. Cir. 1987). The evidence must be

viewed in a light most favorable to the non-moving party, and all justifiable

inferences are to be drawn in the non-movant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s,

Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23

USPQ2d at 1472. A factual dispute is genuine if, on the evidence of record, a

reasonable fact finder could resolve the matter in favor of the non-moving party. See

Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed.

Cir. 1992). The Board does not resolve disputes of material fact on summary

judgment; rather, the Board only ascertains whether disputes of material fact exist.

See Univ. Book Store v. Univ. of Wis. Bd. of Regents, 33 USPQ2d 1385, 1389 (TTAB

1994); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986) (“at the

summary judgment stage the judge’s function is not … to weigh the evidence and

determine the truth of the matter but to determine whether there is a genuine issue

for trial.”).

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Where, as here, the party moving for summary judgment on a claim bears the

burden of proof at trial on that claim, the moving party “must lay out the elements of

its claim, citing the facts it believes satisfies those elements, and demonstrating why

the record is so one-sided as to rule out the prospect of the nonmovant prevailing.”

10A C. WRIGHT, A. MILLER & M. KANE, FEDERAL PRACTICE AND PROCEDURE Civil

§ 2727.1 (4th ed. 2024 update).

If the moving party successfully discharges its initial burden of production, the

burden shifts to the nonmovant to demonstrate the existence of a genuine dispute for

trial. See Celotex, 477 U.S. at 324. This requires more than a mere showing “of a

scintilla of evidence in support of the [nonmovant’s] position …; there must be

evidence on which the [factfinder] could reasonably find for the [nonmovant],” and

what may be considered reasonable for a factfinder “necessarily implicates the

substantive evidentiary standard of proof that would apply at the trial on the merits.”

Anderson, 477 U.S. at 252. Thus, the Board must, on summary judgment, “view the

evidence presented through the prism of the substantive evidentiary burden” in

determining if a genuine dispute exists. Id. at 254. If the nonmovant’s showing is

insufficient to demonstrate that a genuine dispute exists on an essential element of

the subject claim, the moving party is entitled to judgment as a matter of law. See

Celotex, 477 U.S. at 322.

Respondent’s Deemed Admissions

Fed. R. Civ. P. 36(a)(3) provides that “[a] matter is admitted unless, within 30

days after being served, the party to whom the request is directed serves on the

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requesting party a written answer or objection addressed to the matter and signed by

the party or its attorney.” Respondent did not respond to Petitioner’s requests for

admission in any manner and does not dispute that it failed to timely do so.

Consequently, the requests are deemed admitted by operation of law. See Giersch v.

Scripps Networks, Inc., 85 USPQ2d 1306, 1307 (TTAB 2007). The effect of such

admissions is that the subject matter of the requests is “conclusively established

unless the [Board], on motion, permits the admission[s] to be withdrawn or amended”

under Fed. R. Civ. P. 36(b), or reopens the time to respond to the admission requests

“so that the admissions would not be deemed admitted as put.” Id.

Notwithstanding these guidelines for relief from deemed admissions, which

admissions are relied on by Petitioner to support its motion for summary judgment,

the whole of Respondent’s opposition to the motion is its contention that “Petitioner

cannot rely on Rule 36(a)(3) as their requests for admission asked Respondent to

admit what it had already denied in a responsive pleading.”12 In support, Respondent

relies on Perez v. Miami-Dade Cty., 297 F.3d 1255 (11th Cir. 2002), specifically the

court’s observation that “[o]nce a defendant has answered, … it continues to be

inappropriate for a plaintiff to re-serve the complaint in the form of a request for

admissions ….” Id. at 1269. Respondent misconstrues Perez.

In Perez, the central question considered by the appellate court was whether the

district court abused its discretion in denying the defendants’ motion to withdraw

their deemed admissions under Fed. R. Civ. P. 36(b). Although the appellate court, in

12 14 TTABVUE 2.

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reference to the statement relied on by Respondent, commented on the impropriety

of a plaintiff using Rule 36 requests to “harass the other side” or as “a weapon, [to]

drag[] out the litigation and wast[e] valuable resources,” the focus of the appellate

court’s determination that the district court abused its discretion in denying a motion

to withdraw admissions was the lower court’s failure to observe the two-part test for

withdrawal or amendment of admissions as set forth in Rule 36(b).13 There are no

similar considerations here.

Unlike the defendants in Perez, Respondent did not move to withdraw its

admissions. Instead, Respondent unilaterally deemed Petitioner’s requests for

admission to be inappropriate and did not respond to them. This was improper. See

Perez, 297 F.3d at 1269 (“[t]he mere fact that a party has previously denied the matter

about which an admission is sought does not obviate the need to respond to a Rule 36

request for admissions”) quoting U.S. v. Young, 1990 WL 135734, at *2 (S.D.N.Y.

Sept. 10, 1990). If Respondent believed any of the requests to be inappropriate, it was

incumbent upon Respondent to object to them and to otherwise respond to those

requests that remained, and to do so within the time allowed for response lest the

requests be deemed admitted under Rule 36(a)(3). See Emilio Pucci Int’l BV v.

Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016) (“The responding party is expected to

13 Fed. R. Civ. P. 36(b) provides that a court, “on motion, … may permit withdrawal or

amendment if it would promote the presentation of the merits of the action and if the court

is not persuaded that it would prejudice the requesting party in maintaining or defending

the action on the merits.”

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provide the information sought in the requests or portions of requests that it believes

to be proper, and state its objections to those that it believes to be improper.”).

Having failed to do so with the consequence that the unanswered requests were

deemed admitted by operation of Rule 36(a)(3), Respondent had “two separate

avenues for relief: … either (1) move to reopen its time to respond to the admission

requests because its failure to timely respond was the result of excusable neglect

under Fed. R. Civ. P. 6(b)[(1)(B)], or (2) move to withdraw and amend its admissions

pursuant to Fed. R. Civ. P. 36(b).” Giersch, 85 USPQ2d at 1307. Respondent failed to

avail itself of either avenue for relief. While the Board generally takes a liberal

approach in construing responses to motions based on deemed admissions as motions

to withdraw or amend the admissions or, to a lesser degree, to reopen time,

Respondent has made no showing that we can construe as going to the two-part test

prescribed under Rule 36(b) or to a showing of excusable neglect as required under

Rule 6(b)(1)(B).

Since Respondent did not move to amend or withdraw its admissions, or to reopen

its time to respond to Petitioner’s admission requests, and there is nothing in

Respondent’s response to the motion for summary judgment that we could reasonably

construe as such,14 Petitioner’s requests for admission stand admitted, and the

matters admitted under the requests are conclusively established. See Fed. R. Civ. P.

36(b); Fram Trak Indus., Inc. v. WireTracks LLC, 77 USPQ2d 2000, 2005 (TTAB

14 Indeed, Petitioner, in its reply brief, similarly observes that “Respondent made no

objection to Petitioner’s RFAs when served and has not filed any motion to amend or

withdraw the admissions.” 15 TTABVUE 4.

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2006) (“Respondent failed to respond to petitioner’s requests for admission and failed

to file a motion to amend or withdraw those admissions. Accordingly, those requests

for admission are deemed admitted and conclusively established.”); see also Stine

Seed Co. v. A & W Agribusiness, LLC, 862 F.3d 1094, 1102 (8th Cir. 2017) (“[W]hen a

party has made no filing that could be construed as a motion to withdraw or amend

an admission, the court is required to give the admission conclusive effect.”).

Effect of Respondent’s Deemed Admissions

When matter has been conclusively established under Rule 36, it is taken as a

judicial, rather than an evidential, admission that “cannot be rebutted by contrary

testimony or ignored by the [Board] simply because it finds the evidence presented

by the party against whom the admission operates more credible,” and this “applies

equally to those admissions made affirmatively and those established by default, even

if the matters admitted relate to material facts that defeat a party’s claim.” Am. Auto.

Ass’n (Inc.) v. AAA Legal Clinic of Jefferson Crooke, P.C., 930 F.2d 1117, 19 USPQ2d

1142, 1144 (5th Cir. 1991); see also Made in Nature, LLC v. Pharmavite LLC, 2022

USPQ2d 557, at *10 (TTAB 2022) (in contrast to an evidentiary admission, “a judicial

admission … is incapable of refutation”); Fabriko Acquisition Corp. v. Prokos, 536

F.3d 605, 608 (7th Cir. 2008) (facts conclusively established through deemed

admissions cannot be rebutted with other evidence); see also Fed. R. Civ. P. 36

Advisory Committee Notes (1970 amendment) (“In form and substance a Rule 36

admission is comparable to an admission in pleadings or a stipulation drafted by

counsel for use at trial, rather than to an evidentiary admission of a party.”).

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Deemed admissions are competent to demonstrate that there is no genuine

dispute of material fact on a motion for summary judgment. See Fed. R. Civ. P.

56(c)(1)(A) (“[a] party asserting that a fact cannot be … genuinely disputed must

support the assertion by … citing to particular parts of materials in the record,

including … admissions ….”); see also Kaliannan v. Liang, 2 F.4th 727, 736 (8th Cir.

2021) (“the deemed-admitted Requests for Admission alone demonstrate that

Plaintiffs were entitled to summary judgment”); Batyukova v. Doege, 994 F.3d 717,

724 (5th Cir. 2021) (facts deemed admitted by a party’s failure to respond to requests

for admissions are conclusive as to matters admitted for purposes of summary

judgment).

We turn now to the merits of Petitioner’s motion for summary judgment.

Entitlement to Statutory Cause of Action

Entitlement to a statutory cause of action under Sections 13 or 14 of the

Trademark Act, 15 U.S.C. §§ 1063-64, is a threshold issue in every Board inter partes

case. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *5

(Fed. Cir. 2020); Austl. Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d

1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static

Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)). To

establish its entitlement to a statutory cause of action, a plaintiff must demonstrate

(i) an interest falling within the zone of interests protected by the statute and (ii) a

reasonable belief in damage proximately caused by the registration of the mark. See

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Corcamore, 2020 USPQ2d 11277, at *4; Spanishtown Enters., Inc. v. Transcend Res.,

Inc., 2020 USPQ2d 11388, at *12 (TTAB 2020).

The purpose of this requirement is to avoid litigation where there is no real

controversy between the parties, i.e., to weed out intermeddlers. See Lipton Indus.,

Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Thus, a

plaintiff need only demonstrate that it has a “real interest,” i.e., a personal stake, in

the outcome of the proceeding and a reasonable basis for its belief of damage. See

Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,

1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed.

Cir. 1999). The bar in demonstrating entitlement to a statutory cause of action is not

high. See Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1385 (TTAB 1991) (“[T]here is

a low threshold for a plaintiff to go from being a mere intermeddler to one with an

interest in the proceeding.”).

With its motion for summary judgment, Petitioner submitted printouts from the

USPTO’s electronic database showing the status and title of its two pleaded

registrations.15 Since the registrations and the goods thereunder are sufficient to

show Petitioner’s direct commercial interest by demonstrating that Petitioner has a

plausible claim for likelihood of confusion, see Cunningham v. Laser Golf Corp., 222

F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000), Petitioner has established that

there is no genuine dispute of material fact regarding its entitlement to a statutory

15 10 TTABVUE 27-29 (Registration No. 2168074 for THE LEARNING JOURNEY in typed

form) and 31-33 (Registration No. 2767253 for THE LEARNING JOURNEY and design).

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cause of action and accordingly may rely on any statutory ground for cancellation.

See Lipton Indus., 213 USPQ at 190.

Abandonment

To prevail on a claim of abandonment, a plaintiff must show that the party against

whom the claim of abandonment is made “is not using the mark with its goods and

services, and has no intent to resume use.” Lewis Silkin LLP v. Firebrand LLC, 129

USPQ2d 1015, 1020 (TTAB 2018). A showing of three consecutive years of nonuse is

sufficient to establish a prima facie case of abandonment. See Trademark Act Section

45, 15 U.S.C. § 1127; Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409,

at *15 (TTAB 2019).

By way of the deemed admissions, Respondent has admitted that “at the time of

registration of Respondent’s Mark, [Respondent] [was] not using Respondent’s Mark

on any goods that fall under the categories of goods listed in Respondent’s

Registration,”16 that Respondent “ha[s] not sold goods that fall under all of the

categories of goods listed in Respondent’s Registration under or in connection with

Respondent’s Mark for a period of at least three (3) consecutive years,”17 that

Respondent “ha[s] not sold goods that fall under any of the categories of goods listed

in Respondent’s Registration under or in connection with Respondent’s Mark for a

period of at least three (3) consecutive years,”18 and that Respondent “d[oes] not have

16 Request for Admission (“RFA”) No. 9. 10 TTABVUE 81.

17 RFA No. 3. Id. at 80.

18 RFA No. 4. Id. at 81.

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an intent to use Respondent’s Mark on or in connection with goods that fall under

any of the categories of goods listed in Respondent’s registration.”19 These deemed

admissions are sufficient for Petitioner to demonstrate that there is no genuine

dispute of material fact on its claim of abandonment.

While we are cognizant of evidence that Petitioner placed into the record on

summary judgment to support its likelihood of confusion claim that could be argued

to suggest there has been use of the mark by Respondent in connection with some of

the goods in the registration,20 such evidence cannot raise a genuine dispute as to the

material facts that have been conclusively established through Respondent’s deemed

admissions. See In re Carney, 258 F.3d 415, 420 (5th Cir. 2001) (“Since Rule 36

admissions, whether express or by default, are conclusive as to the matters admitted,

they cannot be overcome at the summary judg[]ment stage by contradictory affidavit

testimony or other evidence in the summary judgment record.”).

Decision

In view thereof, Petitioner’s motion for summary judgment on its claim of

abandonment is GRANTED and Registration No. 5949378 will be cancelled in due

course.21

19 RFA No. 6. Id.

20 We note that Respondent has made no such argument.

21 Because the petition for cancellation has been granted on the ground of abandonment, we

need not reach Petitioner’s claims under 15 U.S.C. § 1052(d) or 15 U.S.C. § 1064(6), or its

claims of nonuse and fraud. See Multisorb Techs., Inc. v. Pactiv Corp., 109 USPQ2d 1170,

1171 (TTAB 2013) (“Like the federal courts, the Board has generally used its discretion to

decide only those claims necessary to enter judgment and dispose of the case. [Thus,] the

Board’s determination of registrability does not require, in every instance, decision on every

pleaded claim.”); see also Venture Out Props. LLC v. Wynn Resorts Holdings LLC, 81 USPQ2d

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***

1887, 1894 (TTAB 2007) (“In view of our decision finding a likelihood of confusion, we need

not reach the issue of dilution.”); Interglo AG v. Abrams/Gentile Ent. Inc., 63 USPQ2d 1862,

1864 (TTAB 2002) (“Having found that there exists a likelihood of confusion, we elect to

sustain the opposition on this basis alone.”).

14