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

This Opinion is a

Precedent of the TTAB

Mailed: December 7, 2018

U NITED STATES P ATENT AND T RADEMARK O FFICE

Trademark Trial and Appeal Board

————

TV Azteca, S.A.B. de C.V.

v.

Jeffrey E. Martin

————

Cancellation No. 92068042

————

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 by 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

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

1 Reg. No. 1990874, issued August 6, 1996; renewed.

2 Although Respondent’s mark MYST is displayed in stylized letters, the parties do not

Cancellation No. 92068042

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.

address what, if any, impact this may have on Petitioner’s claim or Respondent’s alleged

nonuse. We find that the stylization does not affect the outcome of our decision.

3 The USPTO earlier explored the possibility of establishing a procedure, known as a

“streamlined cancellation proceeding,” that would be initiated by a potential petitioner when

it filed its petition to cancel. Under the streamlined plan, the petition would be limited to the

grounds of nonuse or abandonment (or both), and the petition would be accompanied by any

evidence or testimony in support of the claim(s).Counterclaims would not be permitted, very

limited discovery would be allowed only when granted by the TTAB for good cause shown,

proceedings would be conducted on an abbreviated schedule, there would be no oral hearing,

and the TTAB would issue a decision within an expedited timeframe. The Office published a

Request for Comments on streamlined proceedings in the Federal Register, 82 Fed. Reg.

22517 (May 16, 2017). However, consideration of the streamlined procedure is presently on

hold while we explore the efficacy of the current pilot, the “expedited cancellation

proceeding.” Unlike the streamlined model, the stipulations into which parties may enter in

an expedited cancellation proceeding include all options available under the Board’s general

ACR procedures.

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Cancellation No. 92068042

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

4 5 TTABVUE. Citations in this opinion are to the TTABVUE docket entry number and,

where applicable, the electronic page number where the document or testimony appears.

Because the Board primarily uses TTABVUE in reviewing evidence, it prefers that citations

to non-confidential parts of the record include the TTABVUE docket entry number and the

TTABVUE page number. For material or testimony that has been designated confidential

and which does not appear on TTABVUE, the TTABVUE docket entry number where such

material or testimony is located should be included in any citation. See RxD Media, LLC v.

IP Application Dev. LLC, 125 USPQ2d 1801, 1804 (TTAB 2018); Turdin v. Trilobite, Ltd., 109

USPQ2d 1473, 1476 n.6 (TTAB 2014); TBMP §§ 801.01, 801.03.

5 Respondent unnecessarily filed his initial disclosures with the Board. Even under expedited

procedures, parties should not file their initial disclosures with the Board; initial disclosures

are not admissible evidence unless resubmitted at trial under a notice of reliance, where

appropriate, or through testimony. Trademark Rule 2.120(k)(8), 37 C.F.R. § 2.120(k)(8).

Thus, although Respondent’s initial disclosures were not of record, because Petitioner

referred to and relied on them in presenting its case-in-chief, we consider them stipulated

into evidence. See Bayer Consumer Care AG v. Belmora LLC, 110 USPQ2d 1623, 1627 (TTAB

2014) (“Because both parties submitted (in whole or in part) Mr. Belcastro’s declaration, we

deem them to have stipulated the declaration into the record, and we hereby consider the

entire declaration for whatever evidentiary value it may have….”), rev’d on other grounds, 84

F.Supp.3d 490, (E.D.Va. 2015), vacated and remanded, 819 F.3d 697 (4th Cir. 2016), cert.

denied, 137 S.Ct. 1202, U.S. (2017), aff’d on remand __ F. Supp.3d __ , 2018 WL 4390731

(E.D.Va. 2018), on appeal 4th Cir. (filed October 19, 2018). Cf. Azeka Bldg. Corp. v. Azeka, 122

USPQ2d 1477, 1478 n.4 (TTAB 2017) (Board deemed materials not proper subject matter for

a notice of reliance as having been stipulated into the record because adverse party treated

them as such).

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Cancellation No. 92068042

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

6 Filed April 27, 2017, under Section 44(e), 15 U.S.C. § 1126(e), on the basis of Mexican

Reg. No. 1744966.

7 1 TTABVUE 3.

8 9 TTABVUE 3. Respondent’s Statement, as discussed more fully below, is not properly

sworn or otherwise verified under Trademark Rule 2.20, 37 C.F.R. § 2.20.

9 9 TTABVUE 4.

10 8 TTABVUE. Mr. Murphy’s testimony introduces and identifies the exhibits as published

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Cancellation No. 92068042

• 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 USPQ2d 1058, 1062 (Fed. Cir. 2014) (citing Ritchie v.

Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)); Lipton Indus.,

Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 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 USPQ2d 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

articles and official records, but does not address the content of the exhibits.

11 7 TTABVUE 16-30.

12 9 TTABVUE.

13 The pleaded application and refusal were made of record under the Murphy Declaration at

8 TTABVUE 6-19, Exhibits 1 and 2.

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Cancellation No. 92068042

registration, there is no question that petitioner has standing to bring this petition

for cancellation.”); LifeZone Inc. v. Middleman Grp., Inc., 87 USPQ2d 1953, 1959

(TTAB 2008); see also Lipton Indus., Inc., 213 USPQ 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 USPQ2d 1526, 1532 (TTAB 2018); see also On-

Line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed.

Cir. 2000); Exec. Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 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 USPQ2d at 1533; see also On-line Careline, 56 USPQ2d

at 1476. If the petitioner presents a prima facie case of abandonment, the burden of

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Cancellation No. 92068042

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 USPQ2d

1374, 1376 (Fed. Cir. 1998); Cerveceria Centroamericana S.A. v. Cerveceria India Inc.,

892 F.2d 1021, 13 USPQ2d 1307, 1311 (Fed. Cir. 1989). The burden of persuasion,

however, always remains with the petitioner. Rivard, 45 USPQ2d at 1376. Because

abandonment is a question of fact, any inference of abandonment must be based on

proven fact. Cerveceria Centroamericana, 13 USPQ2d 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 USPQ 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.”

14 6 TTABVUE.

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Cancellation No. 92068042

• 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

15 8 TTABVUE 154-61. The actual date of the festival is not provided in the article or

photograph. While Respondent included an Internet link to the article, the article is of record

only because Petitioner submitted a copy of it under declaration of its counsel. The Board

does not accept Internet links as a substitute for submission of a copy of the resulting page.

See In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1194 n.21 (TTAB 2018); In re Olin

Corp., 124 USPQ2d 1327, 1332 n.15 (TTAB 2017) (“Because the information displayed at a

link’s Internet address can be changed or deleted, merely providing a link to a website is

insufficient to make information from that site of record.”); In re Planalytics, 70 USPQ2d

1453, 1458 (TTAB 2004).

16 Petitioner argues that “the only documents Mr. Martin may use to prove his use or

excusable nonuse of the mark MYST & Design are those identified in or attached to his initial

disclosures of June 27, 2018.” 7 TTABVUE 4. Although the parties dispensed with pretrial

disclosures, Respondent identified a “Dave Dillman of D-Toxin Productions” (no title

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Cancellation No. 92068042

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

USPQ2d 1895, 1897 n.4 (TTAB 1989) (“unsworn statement does not constitute

testimony”); In re Dermahose Inc., 82 USPQ2d 1793, 1797 (TTAB 2007) (“In effect,

the common feature of oaths, sworn statements, unsworn declarations under penalty

of perjury, and declarations under Rule 2.20 is that the person making the statement

is subjecting himself or herself to criminal penalties for making statements that the

person knows are not true.”); see also TBMP § 703.01(h) (stating that testimony by

affidavit or declaration pursuant to 37 C.F.R. § 2.20 must be made in conformance

with the Federal Rules of Evidence). Although the initial disclosures are deemed

stipulated into the record, Respondent’s unsworn statements are not.18

Petitioner focuses on Exhibit C, the flyer from Pennant East. The flyer mentions

“March 25th” as the date MYST was scheduled to perform. Petitioner contends that

provided) as a potential witness in his initial disclosures. 6 TTABVUE 2. If Respondent had

chosen, he could have called Mr. Dillman to introduce additional documents under his

testimony, subject to cross-examination, during his ACR testimony/briefing period.

17 For example, Respondent states that Exhibit D is a photograph “showing MYST performing

on March 15th, 2016.” 6 TTABVUE 3. However, the photograph is of a single individual in an

undisclosed location, and bears no date. Inasmuch as Respondent’s statement is unverified,

it does not cure the deficiency in the exhibit.

18 Respondent submitted duplicate copies of his initial disclosures under a different, but also

unsworn, statement “declaring” that the group MYST performed eight times during the

relevant period (including the disputed Pennant East performance and several “private

parties”). 9 TTABVUE 2-6. Although the parties agreed that testimony would be presented

by affidavit, 5 TTABVUE, the statement at the end of Respondent’s declaration that he

“declare[s]” that “the foregoing is true and correct” is not in affidavit form and therefore the

unsworn statement has not been considered.

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Cancellation No. 92068042

because Pennant East permanently closed on September 11, 2011, the year for any

such performance could not have been within the three years preceding the filing of

the cancellation petition on March 7, 2018. In an attempt to establish that Pennant

East closed on September 11, 2011, Petitioner submitted six newspaper articles and

a blog post discussing its closure, but without supporting testimony or other evidence

that we may consider for the truth of the matter asserted.19 Respondent has objected

to these articles as hearsay.

Although news articles may be used as evidence for what they show on their face,

they may not be relied on for truth of the statements contained therein. Fed. R. Evid.

802; Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1117 n.7 (TTAB

2009) (“A printed publication is only admissible for what it shows on its face; unless

it falls within an exception to the hearsay rule it will not be considered to prove the

truth of any matter stated in the publication.”) (citing 7-Eleven Inc. v. Wechsler, 83

USPQ2d 1715, 1717 n.2 (TTAB 2007)). Petitioner argues that the news articles and

blog post fall within Fed. R. Evid. 807(a), the “residual hearsay” rule.20 That rule

provides an exception for statements that have “equivalent circumstantial

guarantees of trustworthiness” analogous to those of a public record and are “more

probative on the point for which it is offered than any other evidence that the

proponent can obtain through reasonable efforts.” Id. The residual hearsay exception

is intended to “be used only rarely, in truly exceptional cases.” Pozen Inc. v. Par

19 8 TTABVUE 20-42.

20By operation of Trademark Rule 2.116(a), 37 C.F.R. § 2.116(a), the Federal Rules of

Evidence and Federal Rules of Civil Procedure apply to Board proceedings.

10

Cancellation No. 92068042

Pharm. Inc., 696 F.3d 1151, 104 USPQ2d 1969, 1976 n.6 (Fed. Cir. 2012) (applying

Fifth Circuit law and citing United States v. Walker, 410 F.3d 754, 757 (5th Cir.

2005)). Even assuming no reasonable effort could have discovered more probative

evidence, the articles and blog post do not possess “circumstantial guarantees of

trustworthiness” equivalent to official records or witness testimony. We therefore

sustain Respondent’s objection to the news and blog articles.21

Petitioner also relies on official records in an attempt to show that Pennant East

closed in 2011. Petitioner’s counsel declares that he “diligently searched [the Borough

of Bellmawr, New Jersey’s website and the Courier-Post’s website]22 for references to

liquor licenses held by the owner or owners of the Pennant East nightclub in

Bellmawr, New Jersey…” and located minutes from three Council meetings “in which

other licenses were renewed, but not the license for the Pennant East.”23 Counsel

states: “I infer from this fact that the Pennant East license lapsed during these

terms.”24 A review of the public records of the Borough of Bellmawr attached to

counsel’s declaration shows that the required liquor license granted to “Rt. 130

Entertainment, Inc. t/a Pennant East” was allowed to lapse twice from 2012 to June

21 Even if these items were admitted, and considered for the truth of the matter asserted,

their use is limited. The closing of a single venue such as Pennant East does not establish

Respondent’s non-use in other commercial venues or private venues.

22 “The agenda and minutes from meetings of the Bellmawr Borough Council from 2011 to

2017 are available on the website. Legal notices pertaining to the Borough of Bellmawr are

published in the Courier-Post.” Murphy Decl., 8 TTABVUE 3.

23 8 TTABVUE 3. The three exhibits are Exhibit 14 [dated June 27, 2013], Exhibit 17 [dated

July 23, 2015] and Exhibit 22 [dated June 22, 2017].

24 Id.

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Cancellation No. 92068042

30, 2015,25 and that on October 1, 2015, notice was issued in the Courier-Post that an

application was made to renew and transfer the license to Bellmawr Redevelopment

Partners, LLC as an “unsited” license.26 These records do not support Petitioner’s

contention that Pennant East closed. Even if Pennant East twice lost its liquor

license, that alone does not establish that the premises were shuttered, did not move

elsewhere, or did not continue operating as an alcohol-free establishment or in

violation of the licensing laws. Furthermore, even if the evidence could suggest that

Pennant East closed in 2011, it is at best inconclusive as to whether Respondent

discontinued use of his mark from March 2015 to March 2018.

None of the other evidence from Respondent’s initial disclosures assists Petitioner.

The undated exhibits are irrelevant; they simply shed no light on whether

Respondent used his mark at any time from March 2015 to March 2018. The

statement, “that’s the third time in the last four years [that Respondent worked for

Mr. Dillon]” in the Dillon letter (Exhibit A, dated May 2018) is not established as true

by witness testimony, but even if the statement were verified, no dates of performance

are specified; all three purported performances could have taken place before March

2015, after March 2018, or during the relevant time frame.

We recognize that in attempting to prove a negative, as in proving abandonment

through nonuse, “without resort to proper inferences the burdened party could be

25 8 TTABVUE 82.

26 8 TTABVUE 99. The notice was re-posted on October 8, 2015. Id. at 100. An “unsited”

license has no operating place of business. See Alcoholic Beverage Control Handbook for

Municipal Issuing Authorities, State of New Jersey, 8 TTABVUE 102-09.

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faced with an insurmountable task.” Cerveceria Centroamericana, 13 USPQ2d at

1310. But even in expedited proceedings, inferences must be based on proven

foundational facts. Here, drawing all reasonable inferences available based on the

evidence presented by Petitioner or contained in Respondent’s initial disclosures, we

find that Petitioner has failed to establish a prima facie case of Respondent’s non-

use.27

C. Summary

Petitioner has not established a prima facie case of Respondent’s abandonment

of his service mark MYST based on its pleaded claim of nonuse during the three-year

period immediately preceding the filing of the petition to cancel.

Decision: The petition to cancel is denied.

27 Even if the parties stipulated to admit all of the evidence into the record, the result in this

proceeding would not have changed, because were we to consider all the unverified and

hearsay evidence submitted by both Petitioner and Respondent, we would still find that

Petitioner had not proven Respondent’s non-use of his mark between March 7, 2015 and

March 7, 2018. Moreover, the May 8, 2018 article was published close enough in time to the

date Petitioner filed the petition to cancel to support an inference that Respondent intended

to resume use of his mark during the preceding three years. The Board may consider evidence

regarding practices that occurred before or after the three-year period of nonuse to infer

intent to resume use during the three-year period. Crash Dummy Movie LLC v. Mattel Inc.,

601 F.3d 1387, 94 USPQ2d 1315, 1317 (Fed. Cir. 2010). Such proof of an intent to resume use

may have rebutted a prima facie case of abandonment.

13