The opinion
Mailed:
THIS OPINION IS A March 18, 2009
PRECEDENT OF THE TTAB Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Kathleen Hiraga
v.
Sylvester J. Arena
________
Cancellation No. 92047976
against Registration No. 3125129
_______
Don Thornburgh of Don Thornburgh Law Corporation for
Kathleen Hiraga.
Sylvester J. Arena, pro se.
_______
Before Hairston, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Kathleen Hiraga has filed a petition to cancel a
registration owned by Sylvester J. Arena for the mark Garden
Organics (in standard character format) for goods identified as
“fertilizers, soil conditioners and soil amendments for
domestic use” in International Class 1.1
1
Registration No. 3125129 issued on the Supplemental Register
on August 1, 2006.
Cancellation No. 92047976
As grounds for cancellation petitioner asserts that
respondent fraudulently obtained this registration inasmuch
as he had not used the mark in commerce, as defined by the
Lanham Act, on the date claimed in his application.2
Respondent, in his answer, denies the essential
allegations in the petition for cancellation.
The Parties’ Submissions
Petitioner filed a notice of reliance on June 5, 2008,
pursuant to 37 C.F.R. § 2.120(j), seeking to make of
record certain of respondent’s responses to petitioner’s
first set of interrogatories and portions of respondent’s
responses to petitioner’s first set of requests for
production of documents, including a postage statement,
catalogue and invoices. Petitioner then filed another
notice of reliance on June 6, 2008, pursuant to 37 C.F.R.
§ 2.122(e), making of record in this proceeding certain
documents obtained from the Internet archive of the
www.arenaroses.com website.
For his case-in-chief, respondent filed three notices
of reliance on August 5, 2008, seeking to make of record
2
Although the petition for cancellation, as filed, is grounded
in fraud, abandonment, and priority of use/likelihood of
confusion, the sole issue petitioner raises in her brief is that
of fraud.
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Cancellation No. 92047976
portions of respondent’s registration file, petitioner’s
application file, petitioner’s petition for cancellation
and copies of certain pieces of correspondence with the
United States Patent and Trademark Office relating to the
registration, application and this proceeding; certain of
respondent’s responses to petitioner’s first set of
interrogatories; and certain documents obtained from the
Internet archive of websites.
Only petitioner filed a final brief.
Preliminary evidentiary matters
Respondent filed no brief, nor has he objected to any
of the documents made of record by petitioner. However, we
do not deem respondent to have agreed to petitioner’s
submission of documents not contemplated within the
Trademark Rules of Practice and Procedure for such
submissions by way of a notice of reliance (e.g.,
unauthenticated web pages, sales catalogues, invoices, blank
forms of the United States Postal Service (USPS), a
responding party’s own discovery responses, etc.).
Web pages are not the equivalent of “printed
publications,” and hence are not admissible under a notice
of reliance. See Paris Glove of Can. Ltd. v. SBC/Sporto
Corp., 84 USPQ2d 1856, 1858-59 (TTAB 2007); and Raccioppi v.
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Cancellation No. 92047976
Apogee Inc., 47 USPQ2d 1368 (TTAB 1998). However, inasmuch
as both parties to this proceeding have used notices of
reliance to introduce Internet evidence, we treat these
Internet screen-prints as having been stipulated into the
record. Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d
1953, 1956 (TTAB 2008).
The categories of materials that may be submitted under
a notice of reliance are quite limited. For example, under
37 CFR § 2.120(j)(3)(ii), a party that has obtained
documents from another party may not make the produced
documents of record by notice of reliance alone. Evidence
not obtained and filed in compliance with this and other
sections of the Trademark Rules will not be considered. Cf.
Trademark Rule 2.123(l), 37 C.F.R. § 2.123(l).
An exception applies to produced documents, for
example, to the extent that they are admissible by notice of
reliance under the provisions of Trademark Rule 2.122(e) –
“Printed publications and official records,” 37 C.F.R.
§ 2.122(e). This rule provides that the parties may
introduce through a notice of reliance printed publications,
such as books and periodicals, routinely available to the
general public in libraries or of general circulation among
relevant members of the public, and official records.
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Cancellation No. 92047976
The following four documents were enumerated in
petitioner’s notice of reliance of June 5, 2008:
• Item #3: a copy of the Arena Roses 2004 catalogue
having the Garden Organics labeled products on the back
cover;
• Items #2 and #5: a copy of an invoice from
Colorgraphics, Inc. for the printing of 50,000
catalogues, and a copy of an invoice from Accurate
Mailing Service for list management and handling
services for the mailing of 19,555 catalogues on
December 8, 2003; and
• Item #4: a Form PS 3602-R, “Postage Statement—
Standard Mail Letters and Flats.” The copy shows
that this form was completed by Accurate Mailing
Service on December 8, 2003 as part of a transaction
with the United States Postal Service (USPS) for the
mailing of 19,555 catalogues.
Arena Roses’ annual catalogue (Item #3) is
inappropriate for submission under a notice of reliance.
While this limited-circulation sales catalogue may be a
publication in the broadest sense of the word, it does not
qualify as a work “available to the general public in
libraries or of general circulation among members of the
public” and is thus not a “printed publication” within the
meaning of Trademark Rule 2.122(e). See Hunter Publ’g Co.
v. Caulfield Publ’g Ltd., 1 USPQ2d 1996, 1997 n.2 (TTAB
1986) [while subject matter may be of interest to the
general public, such materials are not necessarily in
general circulation].
As to Items #2 and #5, invoices of respondent’s vendors
are clearly not “printed publications” or official records
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Cancellation No. 92047976
and are therefore inappropriate for submission under a
notice of reliance.
Finally, we find that the USPS form (Item #4) is not an
official record. It appears to be a form completed by the
publisher/mailer of respondent’s catalogues. There are no
official markings or signature on this form and it is not a
record “prepared by a public officer.” Conde Nast
Publications Inc. v. Vogue Travel, Inc., 205 USPQ 579, 580
n.5 (TTAB 1979).
Hence, under the Trademark Rules, these documents,
which have not been otherwise authenticated, may not be made
of record by notice of reliance alone. Such evidence not
obtained and filed in compliance with the Trademark Rules
has not been considered.3
We turn then to evidentiary matters raised by
respondent’s case-in-chief. Petitioner has not objected
to respondent’s first notice of reliance in which
respondent sought to make of record portions of
respondent’s registration file and petitioner’s application
file, and petitioner’s petition for cancellation.
3
Had we considered these documents, it certainly would not
have changed our decision. Ironically, in fact, as will be seen
infra, had these documents been considered, they would merely have
added to the evidence (i.e., interrogatory responses) already
properly in the record that respondent had clearly used this mark
in commerce prior to his application filing date.
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Cancellation No. 92047976
Moreover, it was unnecessary to introduce into evidence
under a notice of reliance respondent’s registration file as
it automatically forms part of the record of the proceeding
by operation of the Trademark Rules without any action by
the parties. 37 C.F.R. § 2.122(b)(1).
However, petitioner does object to respondent’s attempt
to introduce his own discovery responses into evidence.
Ordinarily, an answer to an interrogatory may be
submitted and made part of the record by only the inquiring
party, i.e., a party generally may not rely on his own
responses to discovery requests. Trademark Rule
2.120(j)(5).4 On the other hand, if fewer than all of the
4
(j) Use of discovery deposition, answer to interrogatory,
admission or written disclosure…
(5) Written disclosures, an answer to an
interrogatory, or an admission to a request for
admission, may be submitted and made part of the record
only by the receiving or inquiring party except that,
if fewer than all of the written disclosures, answers
to interrogatories, or fewer than all of the
admissions, are offered in evidence by the receiving or
inquiring party, the disclosing or responding party may
introduce under a notice of reliance any other written
disclosures, answers to interrogatories, or any other
admissions, which should in fairness be considered so
as to make not misleading what was offered by the
receiving or inquiring party. The notice of reliance
filed by the disclosing or responding party must be
supported by a written statement explaining why the
disclosing or responding party needs to rely upon each
of the additional written disclosures or discovery
responses listed in the disclosing or responding
party’s notice, and absent such statement the Board, in
its discretion, may refuse to consider the additional
written disclosures or responses.
37 C.F.R. § 2.120(j)(5).
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Cancellation No. 92047976
answers to a set of interrogatories are offered into
evidence by the inquiring party (petitioner herein), the
responding party (respondent herein) may introduce, under a
notice of reliance, any other answers to interrogatories
that should be considered so as to avoid an unfair
interpretation of the responses offered for the record by
the inquiring party. In such a case, the responding party’s
notice of reliance must be supported by a written statement
explaining why the responding party needs to rely on each of
the additional interrogatory answers listed in the
responding party’s notice, failing which the Board, in its
discretion, may refuse to consider the additional responses.
See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
§ 704.10 (2d ed. Rev. 2004).
In this case, although petitioner made of record only a
very few of respondent’s answers to her interrogatories,
respondent filed additional responses under his notice of
reliance. However, we agree with petitioner that these
additional discovery responses were not properly made of
record by respondent, as he failed to offer any
explanation as to why he needs to rely upon each of these
additional discovery responses, nor is it obvious to us in
what way they avoid any unfairness from what petitioner
submitted. Accordingly, under these circumstances, we have
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Cancellation No. 92047976
refused to consider any of these additional written
responses.
It is true that respondent’s interrogatory answers not
properly offered in evidence under 37 C.F.R. § 2.120(j) may
nevertheless be considered if the non-offering party
(petitioner) does not object thereto or treats the answers
as being of record. We do not find that to be the case
herein. Respondent’s notices of reliance were filed on
August 5, 2008, the closing date of respondent’s testimony
period. Petitioner did not present rebuttal testimony and
her only filing subsequent to respondent’s testimony
period was her brief, in which she presented her arguments
in support of her case, including her objections to the
additional responses submitted under one of respondent’s
notices of reliance. She objected in a timely manner and
never treated these answers as of record.
Petitioner also objected to certain screen-prints that
respondent obtained from the archives of the Internet
Archive Wayback Machine website (www.web.archive.org).
Despite the general unacceptability of this type of
evidence,5 we noted earlier that both petitioner and
5
Paris Glove of Canada Ltd., 84 USPQ2d at 1858 [the Internet
Archive and its “Wayback Machine” feature are not self-
authenticating and there is no reason to treat its existence as
authenticating the pages in its historical record].
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Cancellation No. 92047976
respondent have relied upon screen-prints of Arena Roses’
website (snapshots of the site on different dates) taken
from this same archival site. Petitioner argues that we
should prohibit respondent from introducing this matter in
evidence inasmuch as respondent did not disclose it during
discovery. Essentially, petitioner argues for application
of the estoppel sanction. See discussion in TBMP Sections
411.04 and 527.01(e) (2d ed. Rev. 2004).6
However, we find that this is appropriate rebuttal
evidence on respondent’s part. This is true notwithstanding
his earlier discovery responses to petitioner’s request for
documents that “he [respondent] has provided all documents
which support his claims and assertions in this matter ….”
During discovery, respondent was not obligated to go to the
Internet archive to search for documents that might be
considered responsive to petitioner’s document requests.
However, once petitioner went to the Internet archive to
obtain evidence for trial, respondent was free to do the
same. Therefore, we have considered the pages respondent
submitted into the record from this same website.
6
Earlier, we stated that we view the introduction by both
parties of archival web page evidence as constituting an effective
stipulation allowing introduction of such evidence by notice of
reliance. Such effective stipulation as to a type of evidence
does not, however, preclude petitioner’s raising an unrelated
objection that the pages introduced by respondent should have been
produced during discovery.
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Cancellation No. 92047976
The Record
Based on the above, the record consists of the file of
the involved registration; petitioner’s pending application
file; petitioner’s petition to cancel and respondent’s
answer; certain of respondent’s responses to petitioner’s
first set of interrogatories; as well as copies of the
Internet Archive placed into the record by both parties.
Facts
According to the record, petitioner appears to be a
specialty grower offering greenhouse seedlings of organic
garden products for culinary purposes. Respondent, an
individual, started developing his line of products (i.e.,
“fertilizers, soil conditioners and soil amendments for
domestic use”) in September 2003. Respondent initially
advertised in the annual catalogue of Arena Roses – a small,
family business he operated with his wife. After Arena
Roses closed in May 2006, respondent continued to market his
Garden Organics products as a sole proprietor.
Petitioner’s Standing
As a threshold matter, petitioner must plead and prove
that she has standing, in addition to proving that there is
a valid ground for the cancellation of the registration.
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Cancellation No. 92047976
Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754
(Fed. Cir. 1998) [“Section 14 has been interpreted
as requiring a cancellation petitioner to show (1) that it
possesses standing to challenge the continued presence on
the register of the subject registration and (2) that there
is a valid ground why the registrant is not entitled under
law to maintain the registration.”]
Petitioner, on May 19, 2005, filed an application,
Serial Number 78632995, with the United States Patent and
Trademark Office for the mark GARDEN ORGANICS (in
standard character format) for “agricultural and
horticultural products, namely, living plants, plant
seeds, and seedlings” in International Class 31, and
“educational services, namely, conducting workshops and
seminars in the fields of methods for growth and maintenance
of edible herbs, flowers, vegetables and fruits, the design
and implementation of organic culinary beds, nutrition,
recipes and distributing course material in connection
therewith” in International Class 41. On February 21,
2007, respondent’s involved registration for the mark Garden
Organics was cited under Section 2(d) of the Lanham Act as
grounds for refusal of petitioner’s application. See TBMP
§ 309.03(b) (2d ed. Rev. 2004).
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Cancellation No. 92047976
Hence, there is no question but that petitioner has
standing to bring this petition for cancellation. Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 1185, 1189 (CCPA 1982).
Allegation of Fraud
Fraud in procuring a trademark registration occurs when
an applicant knowingly makes false, material representations
of fact in connection with the trademark application. The
test is whether applicant “knew or should have known” that
the challenged statements in the application were false.
Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d
1483, 1485 (Fed. Cir. 1986); and Mister Leonard Inc. v.
Jacques Leonard Couture Inc., 23 USPQ2d 1064, 1065 (TTAB
1992). “Materiality” of any false application statement is
determined in the context of whether the false statement is
critical to the Trademark Examining Attorney’s decision to
approve a mark for publication. Standard Knitting, Ltd. v.
Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1926 (TTAB
2006).
Moreover, the standard of proof for a fraud claim is
the rigorous, clear-and-convincing evidence standard, and it
is strictly applied. Id.; Smith International Inc. v. Olin
Corp., 209 USPQ 1033, 1044 (TTAB 1981) [“It thus appears
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Cancellation No. 92047976
that the very nature of the charge of fraud requires that it
be proven ‘to the hilt’ with clear and convincing evidence.
There is no room for speculation, inference or surmise … ”].
Any doubt as to the existence of fraud must be resolved
against a finding of fraud. Giant Food, Inc. v. Standard
Terry Mills, Inc., 229 USPQ 955, 962 (TTAB 1986), and cases
cited therein. Furthermore, fraud will not lie if it can be
proven that the statement, though false, was made with a
reasonable and honest belief that it was true. See
Woodstock's Enterprises Inc. (California) v. Woodstock's
Enterprises Inc. (Oregon), 43 USPQ2d 1440 (TTAB 1997).
Ms. Kathleen Hiraga brings her claim of fraud based
upon Sylvester J. Arena’s allegedly false statement of his
date of first use. However, the critical question in this
case is whether the mark was in use in connection with the
identified goods as of the filing date of his use-based
application. That is, if the mark was in use in commerce as
of the filing date, then the claimed date of first use, even
if false, does not constitute fraud because the first use
date is not material to the Office’s decision to approve a
mark for publication. Standard Knitting, Ltd., 77 USPQ2d at
1926; Colt Industries Operating Corp. v. Olivetti Controllo
Numerico S.p.A., 221 USPQ 73, 76 (TTAB 1983) [“The
[Trademark] Examining Attorney gives no consideration to
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Cancellation No. 92047976
alleged dates of first use in determining whether
conflicting marks should be published for opposition.”].
Accordingly, when faced with petitioner’s claim of fraud,
the only question before us is whether respondent has
established use in commerce as of the filing date of the
application that matured into Registration No. 3125129,
specifically, as of April 14, 2005.
Petitioner’s arguments are directed to the proposition
that respondent, rather than making use in commerce at least
as early as November 1, 2003, as claimed in his application,
actually made use in commerce “at the earliest, sometime in
December 2003.” Petitioner’s brief, at unnumbered 5.
Petitioner argues that this is consistent with other
documentary evidence made of record. Hence, petitioner
acknowledges that respondent used his mark in commerce at
least as early as December 2003, a date well prior to the
April 14, 2005 date on which the involved application was
filed.
Furthermore, petitioner argues that other than usage
in December 2003 in the Arena Roses’ catalogue for 2004,
the only other use of the mark even claimed by respondent
is the promotion and sales of the associated goods through
his website. In support of her position that respondent
was not using the mark, for example, as of two specific
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Cancellation No. 92047976
dates, namely, December 1, 2003 and January 5, 2005,
petitioner relies upon Internet archives of Arena Roses’
website.
However, respondent counters with screen-prints from
the same Arena Roses’ website, researched through the same
Internet Archive Wayback Machine website employed by
petitioner, showing usage of respondent’s mark as of his
trademark application filing date of April 14, 2005.
Petitioner’s own exhibit shows that the website of
respondent’s related company (“Arena Roses”) was updated
thirty times between January 5, 2005 and April 14, 2005. We
find that respondent’s screen-print from April 14, 2005 is
certainly as probative on the question of respondent’s use
as of his April 14, 2005 filing date as any other screen-
prints petitioner has placed into the record from earlier
dates (e.g., December 1, 2003 and January 5, 2005).
In fact, based upon this evidence, we find that Mr.
Arena had a reasonable basis for his belief that he was
using his mark in interstate commerce for fertilizers, soil
conditioners and soil amendments for domestic use at the
time of filing the application. See Maids to Order of Ohio
Inc. v. Maid-to-Order Inc., 78 USPQ2d 1899, 1907 (TTAB
2006). Moreover, even accepting as true the details of
petitioner’s own allegations of respondent’s date of first
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Cancellation No. 92047976
use in commerce, petitioner has not established fraud. Our
conclusion that respondent had made use of the mark in
commerce at least as early as April 14, 2005 is consistent
with all the other documentary evidence petitioner has
propounded at trial. Hence, on this record, we conclude
that respondent did not commit fraud in the procurement of
his Registration No. 3125129.
Decision: Ms. Hiraga’s petition to cancel Mr. Arena’s
trademark registration is hereby denied with prejudice.
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