The opinion
THIS OPINION IS A
PRECEDENT OF THE TTAB
Hearing: Mailed: 8/28/07
February 7, 2007
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Tri-Star Marketing, LLC
v.
Nino Franco Spumanti S.R.L.
_____
Cancellation No. 92043953
_____
J. Scott Gerien and Megan Healy of Dickenson, Peatman &
Fogarty for Tri-Star Marketing, LLC.
Martin P. Hoffman of Hoffman, Wasson & Gitler for Nino
Franco Spumanti S.R.L.
_____
Before Quinn, Rogers and Drost, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
Tri-Star Marketing, LLC filed a petition to cancel a
registration owned by Nino Franco Spumanti S.R.L. of the
mark RUSTICO for “wines and sparkling wines”1 in
International Class 33. As grounds for cancellation
petitioner alleges, in an amended petition for cancellation,
that respondent committed fraud on the Office in first
1
Registration No. 2282461, issued October 5, 1999 pursuant to
Section 2(f) of the Trademark Act; Section 8 affidavit filed and
accepted. The registration indicates as follows: “The English
translation of ‘rustico’ is ‘rustic’ or ‘rural.’”
Cancellation No. 92043953
obtaining and then maintaining the involved registration.
More specifically, petitioner asserts that respondent has
only used the mark RUSTICO on “sparkling wine” and, thus,
respondent’s statement, both in the original underlying
application and the Section 8 affidavit of continued use,
that it was using the mark RUSTICO on “wines and sparkling
wines” is false and fraudulent.
By way of background, the original petition for
cancellation, filed December 1, 2004, was based on a claim
of priority and likelihood of confusion under Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d). The Board
erroneously instituted the proceeding, failing to note that
the registration sought to be cancelled was over five years
old and that, therefore, a likelihood of confusion claim was
barred under Section 14 of the Trademark Act, 15 U.S.C.
§1064. See TBMP §307.02 (2d ed. rev. 2004). Respondent
filed an answer wherein it asserted, inter alia, that the
claim of likelihood of confusion was untimely raised
inasmuch as its registration had passed the five-year
anniversary date. Shortly thereafter, petitioner filed a
motion to amend its petition for cancellation, accompanied
by a proposed amended pleading grounded on fraud. In
support of the motion, petitioner stated that it conducted
an investigation of respondent’s use of the registered mark,
and that based on the investigation, “it appears that
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Cancellation No. 92043953
respondent has only ever used the mark in association with
sparkling wine and not in association with still wine.” The
Board granted the motion to amend as conceded, and the case
proceeded to trial solely on the issue of fraud.
Respondent, in its answer to the amended petition for
cancellation, denied the salient allegations of fraud.
Before turning to the merits, evidentiary matters
require our attention. Firstly, petitioner moved to strike
certain portions of respondent’s notice of reliance on the
ground that respondent failed to indicate generally the
relevance of certain materials being offered. The Board
granted the motion to the extent that respondent was allowed
an opportunity to file an amended notice of reliance that
provided the general relevance of certain materials being
offered. Respondent subsequently filed an amended notice of
reliance in accordance with the Board’s order. Accordingly,
the notice of reliance is procedurally in compliance with
Trademark Rule 2.122(e). Secondly, petitioner specifically
objected to nine of the twelve items (Document Nos. 2, 3, 4,
5, 8, 9, 10, 11 and 12) listed in respondent’s notice of
reliance (see “Appendix to Petitioner’s Main Brief”).
Petitioner objected to six of the nine as not proper subject
matter for introduction into the record by a notice of
reliance. Petitioner also objected to several of the nine
as hearsay, specifically that the documents were submitted
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Cancellation No. 92043953
to prove the truth of the matter asserted, and/or on the
ground that the evidence is irrelevant.
No. 2 is an excerpt of a third-party website retrieved
from the Internet and, as such, is not proper subject matter
of a notice of reliance.2
No. 3 is an excerpt from a wine atlas and is proper
subject matter as a printed publication. Nos. 4 and 5 are
articles from The New York Times and Chicago Tribune
newspapers, respectively; these newspapers qualify as
printed publications and, thus, this evidence is admissible
by way of a notice of reliance. Trademark Rule 2.122(e).
No. 8 is a third-party’s promotional literature and,
thus, is not properly introduced by way of a notice of
reliance.
No. 9 is a declaration of Nino Franco, one of
respondent’s officers, and No. 10 is an English translation
thereof. Inasmuch as the parties did not enter into a
written agreement to allow testimony by such means, Nos. 9
and 10 constitute improper testimony. Trademark Rule
2.123(b). This declaration, with related exhibits, has not
2
Accompanying respondent’s brief on the case is a declaration
from counsel’s secretary who retrieved this Internet evidence.
The declaration obviously is untimely submitted, and has not been
considered. Even if considered, it would not correct the
procedural defect of respondent’s reliance on improper subject
matter. Further, while webpages may be submitted as exhibits to
testimony, a declaration cannot be submitted in lieu of a
testimony deposition absent a stipulation of the parties.
Trademark Rule 2.123(b); and TBMP § 703.01(b) (2d ed. rev. 2004).
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Cancellation No. 92043953
been considered. TBMP §703.01(b) (2d ed. rev. 2004).
No. 11 is a certificate awarded to Nino Franco from the
Italian government. This document is not an official
record, and is otherwise not authenticated. Thus, the
document is not proper subject matter for a notice of
reliance.
No. 12 is a copy of “Disciplinary Rules” governing wine
production in the geographical area where registrant
produces its wine. This document is not an official record,
and is not properly submitted by way of a notice of
reliance. Thus, this evidence has not been considered.
As a result, the hearsay and relevancy objections are
moot as to six of the nine items. Further, we have not
found it necessary to rely on any of the three remaining
items in reaching our decision. Therefore, we need not
consider the hearsay and relevancy objections in regard to
those items.
The record consists of the pleadings; a copy of the
involved registration; trial testimony, with related
exhibits, taken by petitioner; and the file wrapper of a
pending application owned by petitioner, respondent’s
responses to certain of petitioner’s requests for
admissions, respondent’s responses to certain of
petitioner’s requests for production of documents
(indicating that respondent did not have any documents
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Cancellation No. 92043953
relating to use of its mark in connection with “non-
sparkling wine”),3 and a copy of a dictionary definition of
the word “and,” all introduced by way of petitioner’s notice
of reliance. In view of the evidentiary rulings above,
respondent’s evidence consists of Document Nos. 1, 6, 7
(official records), and Nos. 3, 4, 5 (printed publications)
properly made of record by way of respondent’s notice of
reliance. The parties filed briefs, and both parties were
represented by counsel at an oral hearing held before the
Board.
As a threshold matter, petitioner has standing to bring
the petition for cancellation based on the fact that its
application to register the mark VINO RUSTICO was refused
registration by the Office under Section 2(d) based on a
likelihood of confusion with respondent’s previously
registered mark. Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 1185, 189 (CCPA 1982).
We now turn to consider petitioner’s claim of fraud.
Fraud in procuring a registration occurs when an applicant
knowingly makes false, material representations of fact in
3
It is well settled that documents produced in response to
document requests may not be made of record by notice of
reliance, unless otherwise qualified for introduction by such a
notice. See Trademark Rule 2.120(j)(3)(ii). The rule, however,
does not prohibit introduction of a response to a request for
production that states that no responsive documents exist. See
The Nasdaq Stock Market, Inc. v. Antartica, S.r.l., 69 USPQ2d
1718, 1722 n.6 (TTAB 2003).
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Cancellation No. 92043953
connection with an application to register or, in the case
of maintaining a registration, when a registrant makes
false, material representations of fact in connection with
an affidavit of continued use under Section 8. Torres v.
Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483, 1484
(Fed. Cir. 1986). A party making a fraud claim is under a
heavy burden because fraud must be proved to the hilt with
clear and convincing evidence, leaving nothing to
speculation, conjecture, or surmise. Any doubt must be
resolved against the party making the claim. Sinclair Oil
Corp. v. Sumatra Kendrick, ___USPQ2d___ (TTAB, Opp. No.
91152940, June 6, 2007). Statements regarding the use of
the mark on the identified goods and/or services are
certainly material to issuance of a registration. Id. See
also: Hachette Fillipacchi Presse v. Elle Belle, LLC,
___USPQ2d___ (TTAB, Can. No. 92042991, April 9, 2007);
Hurley International LLC v. Volta, 82 USPQ2d 1339 (TTAB
2007); Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki
Kaisha, 77 USPQ2d 1917 (TTAB 2006); Medinol Ltd. v. Neuro
Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003); and First
International Services Corp. v. Chuckles, 5 USPQ2d 1628
(TTAB 1988).
As set forth in Section 1402.01 of the Trademark Manual
of Examination Procedure (4th ed. April 2005), “[t]he
identification of goods or services must be specific,
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Cancellation No. 92043953
definite, clear, accurate and concise.” Section 1402.03
further states
[a]pplicants frequently use broad terms
to identify the goods or services in an
application...The requirement of use or
a bona fide intent to use is not
necessarily violated by broad
identifying terms. When a mark is used
on a number of items that make up a
homogeneous group, a term that
identifies the group as a whole would be
understood as encompassing products of
the same general type that are
commercially related. As long as a
broad term identifies the goods or
services that are intended to be covered
with reasonable certainty, it will be
reasonable, from a commercial viewpoint,
to consider that the mark has been used
for all the related goods or services
that fall in the designated group...the
appropriateness of any broad
identification depends on the facts in a
particular case. The examining attorney
should permit applicants to adopt terms
that are as broad as the circumstances
justify.
See In re Omega SA, ___F.3d___, 83 USPQ2d 1541 (Fed. Cir.
2007) [“The PTO has discretion to determine whether and how
a trademark registration should include a more
particularized statement of the goods for which the mark is
[to] be used...”]. The U.S. Acceptable Identification of
Goods and Services Manual sets forth both “wine” and
“sparkling wine” as acceptable identifications. The
examining attorney accepted the identification of goods as
filed by respondent in its underlying application for
registration.
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Cancellation No. 92043953
As noted above, the involved registration includes an
identification of goods that reads “wines and sparkling
wines.” Petitioner’s theory of the case is that respondent
has never used its mark on “wines,” and that the only use by
respondent is on “sparkling wines.” The record includes
facts on the differences between still wine and sparkling
wine. Respondent is a producer of Prosecco wine, a
sparkling wine. As established by respondent’s responses to
interrogatories and its admissions in response to requests
for admissions, respondent has never sold “non-sparkling
wine” in the United States or in commerce with the United
States.
The essence of this case is a rule of construction
regarding an identification of goods in an application or
registration. Respondent, in its underlying application,
alleged use on “wines and sparkling wines.” Given that
respondent is making and selling sparkling wine, and
sparkling wine is clearly a specific type of wine,
respondent could obtain and/or maintain a registration for
“wines” and “sparkling wines” on the same record. A bottle
label submitted as a specimen showing use of the mark on
“sparkling wine” would also support a registration covering
“wine.” Further, respondent could have filed two
applications to register its mark, one covering “wines” and
the other covering “sparkling wines,” with each application
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Cancellation No. 92043953
supported by the same label from a bottle of respondent’s
sparkling wine.
As long as the general product terminology encompasses
the specific product terminology in an identification of
goods, and there is use on the specific product, there can
be no fraud; that is, there is nothing fraudulent in
providing an identification of goods that includes both a
broad product term and a specific product term so long as
the applicant/registrant is using its mark on the specific
product, and the specific product is encompassed within the
broad product term (assuming that the broad product term is
sufficiently definite for purposes of registration). In the
present case, inasmuch as respondent could have legitimately
obtained a registration covering the identification of goods
reading “wines” (even though it was using the mark on only
“sparkling wines”), respondent has not obtained any rights
to which it was not entitled.
The converse situation, however, is not true; that is,
if respondent were only using its mark on “wines” other than
“sparkling wines,” then, of course, “sparkling wines” must
not appear in the identification of goods. The present case
involves the reverse fact situation than that which the
Federal Circuit faced in Torres v. Cantine Torresella
S.r.l., 1 USPQ2d at 1485. In that case, respondent was
found to have committed fraud, in pertinent part, in the
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Cancellation No. 92043953
filing of its Section 9 affidavit when it averred that the
registered mark was still in use in interstate commerce for
each of the goods in the registration, namely wine, vermouth
and champagne, when, in fact, respondent knew the mark was
no longer in use on vermouth and champagne. There was no
use on the specific products vermouth and champagne, and
inasmuch as respondent knew that the mark was no longer in
use on such goods, respondent should not have included these
items in the Section 9 affidavit. Here, there is use of the
registered mark in connection with the specific product,
namely “sparkling wines,” which is also included in the more
general designation “wines.”
This is not a case in which the trademark was used on
less than all of the goods. Cf. J.E.M. International, Inc.
v. Happy Rompers Creation Corp., 74 USPQ2d 1526 (TTAB 2005);
and Medinol v. Neuro Vasx, Inc., 67 USPQ2d at 1209. While
respondent’s identification of goods “wines and sparkling
wines” may be redundant or inartfully worded in view of
respondent’s actual use, this identification is not
fraudulent. In saying this, we are mindful, of course, of
the dictionary definition of the word “and” that appears in
respondent’s identification of goods. The word “and” is
defined, in relevant part, as “together with or along with;
also; in addition; as well as; added to; plus.” The
American Heritage Dictionary of the English Language (1978).
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Cancellation No. 92043953
Nevertheless, we find that respondent’s statement in its
application and Section 8 affidavit that it was using the
mark on “wines and sparkling wines,” when it was using the
mark only on sparkling wines, to be a truthful statement.
Thus, petitioner has failed to prove an essential element of
the ground of fraud, namely that the statement is not true.
Although it would have been more succinct had respondent
identified its goods as either “wines” or “sparkling wines,”
the listing of both terms was not fraudulent.
Decision: The petition for cancellation is denied.
12