Michael A. Robinson v. Hot Grabba Leaf, LLC

THIS OPINION IS A

PRECEDENT OF

THE TTAB

Hearing: September 20, 2018 Mailed: April 25, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

_____

Robinson

v.

Hot Grabba Leaf, LLC

_____

Cancellation No. 92060394

_____

Louis R. Gigliotti of Louis R. Gigliotti PA,

for Michael A. Robinson.

Daniel A. Tesler of Law Offices of Daniel A. Tesler, LLC,

for Hot Grabba Leaf, LLC.

_____

Before Ritchie, Hightower, and Larkin, Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Hot Grabba Leaf, LLC (“Respondent”) owns Registration No. 4263417 on

the Principal Register for HOT GRABBA NATURAL TOBACCO LEAF, in

standard character format, for “leaf tobacco,” in International Class 34,1

disclaiming the exclusive right to use “GRABBA NATURAL TOBACCO

1 Registration No. 4263417 issued from Serial No. 85464616, filed November 4, 2011,

and claiming March 1, 2011 as date of first use and first use in commerce.

Cancellation No. 92060394

LEAF” apart from the mark as shown, which registration issued on

December 25, 2012.

Michael A. Robinson (“Petitioner”) has petitioned to cancel Respondent’s

registration. In his amended petition for cancellation, Petitioner asserts that

“since at least as early as November 1, 2006, Petitioner has been using

GRABBA LEAF as a trademark in connection with tobacco and tobacco

related products and since at least as early as July 11, 2009, Petitioner has

been using GRABBA LEAF as a trademark in connection with tobacco and

tobacco related products in commerce . . . .”2 Petitioner further alleges that he

is the owner of Registration No. 44871173 for GRABBA LEAF for cigar wraps

and of Registration No. 44610934 for GRABBA LEAF and design, also for

cigar wraps, both in International Class 34, and both disclaiming the term

“LEAF” apart from the mark as shown.5 The latter mark is depicted as

follows:

The description of the mark states:

2 20 TTABVUE 3.

3 Issued February 25, 2014 from Application No. 85772297, filed November 6, 2012

and claiming dates of first use on November 1, 2006, and first use in commerce on

July 10, 2009.

4 Issued January 7, 2014 from Application No. 85772332, filed November 6, 2012

and claiming dates of first use on November 1, 2006, and first use in commerce on

July 10, 2009.

2

Cancellation No. 92060394

The mark consists of an ovate shaped leaf with a tapered point

having multiple veins occurring along a single main vein shaded

with a copper brown hue towards the apex of the leaf and a russet

brown at the lower end. The ovate leaf also consists of a black stem

which radiates up through the leaf. The words “Grabba Leaf” are

positioned on the center and right side of the leaf with the word

“Grabba” above and slightly to the left of the word “Leaf”. The “G”

in “Grabba” is centered on the leaf. The wording has a dark green

outline and a marigold yellow fill.

Petitioner alleges priority of use and likelihood of confusion with his marks

under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).6

The answer to the amended petition denies the salient allegations, except

as to the issuance by the Office of the parties’ respective registrations.7 The

answer to the amended petition also contains several affirmative defenses,

including that “[p]etitioner’s claims are barred by the doctrine of laches,

estoppel, and/or acquiescence,” and that the registrations asserted by

Petitioner “are invalid because the term ‘Grabba Leaf’ is merely descriptive

and lacks secondary meaning.”8

Respondent further filed a counterclaim to cancel both of Petitioner’s

pleaded registrations on the ground that they are merely descriptive without

having acquired distinctiveness in that “[t]he term ‘grabba’ is commonly used

5 20 TTABVUE 3.

6 20 TTABVUE 4. The amended petition also includes claims of abandonment

through non-use, fraud in the procurement of Respondent’s registration, and that

Respondent’s mark is merely descriptive. 20 TTABVUE 5, 6, 11. However, as

Petitioner did not pursue any of these claims with its brief, we deem them to be

waived. Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1422

(TTAB 2014). Specifically, as confirmed during the oral hearing, Petitioner’s brief

pursues only his claim of likelihood of confusion, and his defense to Respondent’s

counterclaim that Petitioner’s marks are not merely descriptive.

7 21 TTABVUE 3.

3

Cancellation No. 92060394

in the tobacco industry as a synonym for fronto leaf tobacco and fanta leaf

tobacco” and that these terms are “used interchangeably as the common

name of and/or to describe products containing the same.”9 Respondent

further alleges that “[w]hen the terms ‘grabba’ and ‘leaf’ are combined into

‘grabba leaf,’ the term merely describes the main ingredient used in

Petitioner’s products, namely a grabba leaf.”10 Respondent also asserts in its

counterclaim that Petitioner’s pleaded marks are generic.11 Petitioner did not

file an answer to Respondent’s counterclaim filed with its answer to the

amended complaint. Instead, Petitioner filed a motion for summary

judgment,12 which was denied.13 Nevertheless, Petitioner did answer the

original counterclaim filed with Respondent’s answer to the petition, wherein

Petitioner denied the salient allegations of the counterclaim; and the

counterclaim filed with the answer to the amended complaint was

unchanged.14

The case is fully briefed. On request from Petitioner, an oral hearing was

held and presided over by this panel.

I. The Record and Evidentiary Issues

The record consists of the pleadings and the files of the involved

registrations, including Respondent’s registration and both registrations

8 21 TTABVUE 18-19.

9 21 TTABVUE 19.

10 21 TTABVUE 20.

11 21 TTABVUE 21.

12 23 TTABVUE.

13 30 TTABVUE.

4

Cancellation No. 92060394

asserted by Petitioner, which are subject to the counterclaim for cancellation.

Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).

Additionally, the Board discussed the evidence of record, and ruled on

Respondent’s motion to strike, in an order dated April 14, 2017.15 With the

qualifications discussed herein, the following are of record:

By Petitioner:

1. Petitioner’s First Notice of Reliance, stated to be on electronic copies of

his registrations. 36 TTABVUE.16

2. Petitioner’s Second Notice of Reliance, stated to be on electronic copies

of his registrations but attaching only his declaration, dated May 31, 2013,

from the file record of each of his pleaded registrations, titled “Declaration of

Applicant in Support of Registration of Trademark Application.” 37

TTABVUE.17

3. Petitioner’s Third Notice of Reliance, on selected pages from the August

26, 2015 discovery deposition of Bryan Wilson, Respondent’s owner and

agent. 38 TTABVUE.

4. Petitioner’s Fifth Notice of Reliance, on his declaration, dated June 24,

2016, with exhibits thereto. 40 TTABVUE. 18

14 7 TTABVUE.

15 49 TTABVUE. The order granted the motion to strike Petitioner’s Fourth Notice of

Reliance, Petitioner’s Seventh Notice of Reliance, and page 2 of Petitioner’s Sixth

Notice of Reliance.

16 This was unnecessary as they are automatically of record under Trademark Rule

2.122(b), 37 C.F.R. § 2.122, because of Respondent’s counterclaim.

17 See discussion infra.

18 See discussion infra.

5

Cancellation No. 92060394

5. Petitioner’s Sixth Notice of Reliance (except p. 2, which was stricken),

on web pages regarding the registration of domain names. 41 TTABVUE.

6. Petitioner’s Eighth Notice of Reliance, on Respondent’s written

responses to Petitioner’s first set of discovery requests. 43 TTABVUE.

7. Testimonial deposition (for cross-examination) of Bryan Wilson, dated

August 25, 2017. 65 TTABVUE.

By Respondent:

1. Respondent’s First Notice of Reliance, including Petitioner’s responses

to requests for admission. 52 TTABVUE.

2. Respondent’s Second Notice of Reliance, including Petitioner’s

responses to interrogatories. 53 TTABVUE.

3. Respondent’s Third Notice of Reliance, including portions of the

discovery deposition of Bryan Wilson, to provide context for portions

submitted by Petitioner. 54 TTABVUE.

4. Respondent’s Fourth Notice of Reliance, including webpages with

descriptive references to the term “grabba.” 55 TTABVUE.

5. Respondent’s Fifth Notice of Reliance, including web references about

tobacco and its uses. 56 TTABVUE.

6. Respondent’s Sixth Notice of Reliance, including web references to a

song originating from a Jamaican artist. 57 TTABVUE.

7. Respondent’s Seventh Notice of Reliance, including web references from

Jamaican news media. 58 TTABVUE.

6

Cancellation No. 92060394

8. Respondent’s Eighth Notice of Reliance, including USPTO records

showing the cancelled status of Petitioner’s prior, nonpleaded registration,

and listing it as cancelled, and web references to the term “grabba.” 59

TTABVUE.

9. Testimonial declaration of Bryan Wilson, dated June 29, 2017, with

exhibits. 60 TTABVUE.

Regarding Petitioner’s May 31, 2013 declaration (the “File Declaration”)

submitted with his Second Notice of Reliance, the File Declaration was

originally included in the files of both of the applications that matured into

Petitioner’s two pleaded registrations. The parties dispute whether the File

Declaration constitutes testimony for purposes of this proceeding.

Respondent argues that it is properly construed as part of the application

files, but that it is not admissible as “testimony” in this proceeding. In

support of this argument, Respondent cites amended Trademark Rule

2.122(b)(2), 37 C.F.R. § 2.122(b)(2), which as revised in 2017 provides in

relevant part that “[s]tatements made in an affidavit or declaration in the file

of an application for registration, or in the file of a registration, are not

testimony on behalf of the applicant or registrant.”19

Petitioner counters that the File Declaration is indeed properly construed

as “testimony” in this proceeding since he submitted it during his trial

19 70 TTABVUE 14-15.

7

Cancellation No. 92060394

period,20 pursuant to Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1),

which as revised in 2017 provides in relevant part:

The testimony of witnesses in inter partes cases may be

submitted in the form of an affidavit or a declaration pursuant

to § 2.20 and in conformance with the Federal Rules of Evidence,

filed during the proffering party’s testimony period, subject to

the right of any adverse party to elect to take and bear the

expense of oral cross-examination of that witness . . . .

We note, however, that these two rules are not the only authority relevant

to the question of whether we can accept a file declaration as testimony in a

proceeding. In particular, Trademark Rule 2.121(a)(1), 37 C.F.R. § 2.121(a),

which applies to all evidence submitted in inter partes proceedings, provides

in relevant part as follows:

The Trademark Trial and Appeal Board will issue a trial order

setting a deadline for each party’s required pretrial disclosures

and assigning to each party its time for taking testimony and

presenting evidence (“testimony period”). No testimony shall be

taken or evidence presented except during the times assigned,

unless by stipulation of the parties approved by the Board, or

upon motion granted by the Board, or by order of the Board.

Under the revised rules, Trademark Rule 2.123(a)(1) allows parties to

submit “testimony” by “an affidavit or a declaration.” Absent a stipulation or

Board order, a testimony affidavit or declaration must be taken—that is,

executed—during the assigned testimony period, as required by Rule

2.121(a).21 Thus the File Declaration that Petitioner seeks to introduce as

20 71 TTABVUE 2-3.

21 This is consistent with Trademark Rule 2.123(a)(2), which discusses “[t]estimony

taken in a foreign country,” and provides, as amended, that such testimony “shall be

taken” in one of three ways, including “by affidavit or declaration.” Similar language

is included in Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §

8

Cancellation No. 92060394

testimony under his Second Notice of Reliance is not appropriately

considered as such since it was dated over three years prior to Petitioner’s

testimony period.

The requirement to take testimony during the testimony period is well-

established. See e.g., M-Tek Inc. v. CVP Sys. Inc., 17 USPQ2d 1070, 1072

(TTAB 1990). In that case, the Board considered a motion to strike witness

testimony taken by the petitioner. The Board noted that it had reopened

petitioner’s testimony period for a limited purpose of noticing certain specific

depositions. Petitioner, however, also took the deposition of a witness “whose

deposition had not previously been noticed.” Although the respondent did not

object until after the deposition (via a motion to strike), the Board found that

the motion to strike “is based not on insufficient notice but rather on the

ground that the deposition in question was taken untimely.” In this regard,

the Board cited Trademark Rule 2.121(a), finding the deposition to be outside

petitioner’s assigned testimony period, and not by Board order or by

stipulation of the parties. Thus, the deposition was stricken and “given no

consideration.” See also Carefirst of Md. Inc. v. FirstHealth of the Carolinas

Inc., 77 USPQ2d 1492, 1497 (TTAB 2005) (denying applicant leave to take

testimony after the close of the testimony period.). But see Of Counsel Inc. v.

703.01(a) (2018), which states that “[t]estimony is taken out of the presence of the

Board, by affidavit or declaration, or on oral examination or written questions, and

the affidavits, declarations and written deposition transcripts, together with any

exhibits thereto, are then submitted to the Board,” and Section 703.01(b) explains

that “[o]rdinarily, the testimony of a witness may be taken by affidavit, declaration

or on oral examination . . . or by deposition on written questions . . . .”

9

Cancellation No. 92060394

Strictly of Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991)

(overruling objection to testimony taken two days before scheduled trial,

finding that the error was made “in good faith” and objection to timeliness

not seasonably raised is waived).

Petitioner also submitted the File Declaration with the reply in support of

his motion for summary judgment. The declaration was included, however, in

an exhibit as part of the registration file rather than being set forth as a

discrete declaration in support of the motion for summary judgment.

Furthermore, as the Board noted in denying Petitioner’s motion for summary

judgment:

[T]he evidence submitted in connection with a motion for

summary judgment or opposition thereto is of record only for

consideration of that motion. Any such evidence to be considered

at final hearing must be properly introduced in evidence during

the appropriate trial period.22

The order cites Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28

USPQ2d 1464, 1465 n.2 (TTAB 1993) and Pet Inc. v. Bassetti, 219 USPQ 911,

913 n.4. (TTAB 1983). The findings in those cases are consistent with our

finding here under the amended rules. Notably, in order to properly make an

affidavit or declaration of record as trial testimony, absent a stipulation or

Board order, the affidavit or declaration must be executed during the

22 30 TTABVUE 7.

10

Cancellation No. 92060394

assigned testimony period, unless submitted as an exhibit to other testimony

and affirmed therein.23

In accordance with Trademark Rule 2.121(a)(1), therefore, we do not

consider Petitioner’s File Declaration as testimony in this proceeding. It is,

nevertheless, in accordance with Trademark Rule 2.122(b), part of the record

of the proceeding, subject to the Federal Rules of Evidence. The pertinence of

the File Declaration as forming part of the record is discussed further herein,

in our analysis of “Mere Descriptiveness.”

II. Standing

Standing is a threshold issue that must be proven in every inter partes

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

USPQ2d 1058, 1062 (Fed. Cir. 2014). See also Lipton Indus., Inc. v. Ralston

Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) (“The facts

regarding standing . . . must be affirmatively proved. Accordingly, [plaintiff]

is not entitled to standing solely because of the allegations in its [pleading].”).

Our primary reviewing court, the U.S. Court of Appeals for the Federal

23 We note that Petitioner’s June 24, 2016 declaration, submitted with exhibits

under Petitioner’s Fifth Notice of Reliance, was also executed and submitted with

Petitioner’s reply to his motion for summary judgment. 27 TTABVUE 7-8. Thus, this

declaration was executed several months before Petitioner’s assigned trial period,

and was not submitted via other testimony and affirmed therein in the manner

discussed in Levi Strauss. Respondent objected to the submission of Petitioner’s

Fifth Notice of Reliance by motion to strike, and continued that objection in its brief.

We find that the June 24, 2016 declaration was not stipulated into the record, and

do not consider this declaration as trial testimony either. We further note,

nevertheless, that our conclusion in this case would not be different if we had

considered either the File Declaration or the June 24, 2016 declaration. Parties may

submit such declarations under a timely taken affidavit or declaration attesting to

the continued accuracy of the information residing therein.

11

Cancellation No. 92060394

Circuit, has enunciated a liberal threshold for determining standing, namely

that a plaintiff must demonstrate that it possesses a “real interest” in a

proceeding beyond that of a mere intermeddler, and a “reasonable basis for

his belief of damage.” See Empresa Cubana Del Tabaco, 111 USPQ2d at 1062

(citing Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed.

Cir. 1999)). A “real interest” is a “direct and personal stake” in the outcome.

Ritchie v. Simpson, 50 USPQ2d at 1026.

As a result of Petitioner’s submission of status and title copies of his two

pleaded registrations, Petitioner has established his standing. See

Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.

Cir. 2000). Respondent has standing in the counterclaim by virtue of being

the defendant in this cancellation proceeding. See Trademark Act Section 14,

15 U.S.C. § 1064; see also Cunningham v. Laser Golf Corp., 55 USPQ2d at

1844; Del. Quarries, Inc. v. PlayCore IP Sub, Inc., 108 USPQ2d 1331 (TTAB

2013).

III. Mere Descriptiveness

We thus turn to Respondent’s counterclaim that the marks in both of

Petitioner’s asserted registrations are merely descriptive without having

acquired distinctiveness, since the claim is potentially dispositive of the

case.24 If Respondent prevails in this claim, then Petitioner’s asserted

registrations will be cancelled and are unenforceable against Respondent.

24 We note that Petitioner’s registrations are not registered with a Section 2(f) claim

of acquired distinctiveness and Petitioner has not pleaded or argued that his marks

12

Cancellation No. 92060394

The party challenging a registration’s validity bears the burden of proving

that the mark is merely descriptive by a preponderance of the evidence.

DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103

USPQ2d 1753, 1756 (Fed. Cir. 2012). A term is deemed to be merely

descriptive of goods or services, within the meaning of Section 2(e)(1), if it

forthwith conveys an immediate idea of an ingredient, quality, characteristic,

feature, function, purpose or use of the goods or services. See In re Chamber

of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.

2012) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987));

see also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir.

2015); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA

1978). Whether a term is merely descriptive is determined not in the

abstract, but in relation to the goods or services for which registration is

sought, the context in which it is being used on or in connection with those

goods or services, and the possible significance that the term would have to

the average purchaser of the goods or services because of the manner of its

use. In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1952 (TTAB 2018)

(citing In re Chamber of Commerce, 102 USPQ2d at 1219). That a term may

have other meanings in different contexts is not controlling. In re Canine

have acquired distinctiveness. Rather, Petitioner only argues that his marks are

inherently distinctive. In view thereof, the issue of acquired distinctiveness is not

before us as to the counterclaims and there is no evidence or argument to support a

finding of acquired distinctiveness to establish any possible prior proprietary rights

in the context of Petitioner’s claim of likelihood of confusion if these designations

are merely descriptive.

13

Cancellation No. 92060394

Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1598 (TTAB 2018). Moreover,

“[t]he question is not whether someone presented with only the mark could

guess what the goods or services are. Rather, the question is whether

someone who knows what the goods or services are will understand the mark

to convey information about them.” DuoProSS, 103 USPQ2d at 1757 (quoting

In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)); see also In re

Patent & Trademark Servs. Inc., 49 USPQ2d 1537 (TTAB 1998); In re Home

Builders Ass’n of Greenville, 18 USPQ2d 1313 (TTAB 1990); In re Am.

Greetings Corp., 226 USPQ 365 (TTAB 1985). On the other hand, if a mark

requires imagination, thought and perception to ascertain the nature of the

goods or services, then the mark is suggestive. DuoProSS, 103 USPQ2d at

1755 (citing In re Abcor Dev. Corp., 200 USPQ at 218). The relevant public in

this case consists of consumers of tobacco or tobacco products, including the

“cigar wraps” identified by Petitioner in both registrations at issue.

Pursuant to a requirement by the Trademark Examining Attorney during

the application process, Petitioner has disclaimed the exclusive right to use

the term “LEAF” apart from the mark as shown for both registrations. Under

such circumstances, the disclaimer may be considered an admission by

Petitioner that the term “LEAF” is merely descriptive of its identified “cigar

wraps.” See Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89

USPQ2d 1844, 1851 (TTAB 2008). In this regard, the Federal Circuit has

stated that “[t]o determine whether a composite mark [such as the one at

14

Cancellation No. 92060394

issue] is merely descriptive, the Board was required to examine the meaning

of each component individually, and then determine whether the mark as a

whole is merely descriptive.” DuoProSS, 103 USPQ2d at 1758 (citing In re St.

Paul Hydraulic Hoist Co., 177 F.2d 214, 83 USPQ 315 (CCPA 1949)); see also

In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1423 (Fed.

Cir. 2005).

Respondent argues that Petitioner’s marks GRABBA LEAF and

are merely descriptive because they describe a feature or

characteristic of Petitioner’s goods, namely that (1) grabba is understood by

the relevant public as “a form of tobacco;”25 (2) grabba leaf is commonly

understood as a product that consists of a “grabba-type tobacco leaf;”26 and

(3) the mark with the design element has the same merely

descriptive meaning.

Respondent argues that the record supports a finding that its burden to

rebut the presumption of validity has been met. In particular, Respondent

points to third-party descriptive references to the terms “grabba” and “grabba

leaf” in news articles; song lyrics that refer to “grabba”; a definition from the

25 70 TTABVUE 25.

26 70 TTABVUE 46.

15

Cancellation No. 92060394

Urban Dictionary; and statements by Petitioner himself, regarding the wide-

spread use of the terms.

Various third-party websites submitted by Defendant show the terms

“grabba” and “grabba leaf” used in connection with tobacco products,

including cigar wraps. Examples in the record include the following:27

Fronto leaf is also popularly called ‘grabba leaf’, which is

typically known for it’s [sic] strong/bold smoke.

wholeleaf.com; 55 TTABVUE 5.

Okay, but how do I USE a Fronto Leaf? . .. For those using the

leaf as Grabba, let the leaf dry out completely in the open are

[sic] and crush as needed.

LeafOnly.com; 55 TTABVUE 11.

Looking for Fronto Leaf? You found your way here because you

take your smoke seriously. You enjoy true quality whether you

are ‘rolling your own’ or smoking your fronto leaf as ‘grabba’, or

rolling a cigar.

FrontoLeaf.com; 55 TTABVUE 21.

Fronto tobacco leaf, sometimes known as grabba leaf, or fanta

leaf, is a tobacco wrapper leaf sold by the individual leaf or by

the pound to our customers in Houston.

BuyLeaves.com; 55 TTABVUE 29.

If you are of Caribbean decent [sic], then you are no stranger to

grabba.. . . The gold packages contain lighter grabba leaves,

which will result in a very faint taste. . . . If you’re looking to try

a new way of smoking, roll up your cannabis in an all natural

27 Respondent also included news articles from media that are based in Jamaica. 58

TTABVUE 5-13. While these sources show that “grabba” and “grabba leaf” have an

understood meaning in Jamaica, we do not see in this record a basis to infer that

relevant U.S. consumers would have considered these foreign sources to inform their

own understanding of the meaning of “grabba” and “grabba leaf.” We therefore have

not considered them in assessing the terms’ meaning among relevant U.S.

consumers. See Canine Caviar, 126 USPQ2d at 1596 (“While evidence of foreign use

may in some cases be probative, in this case it does not serve to tell us the norms

specific to pet owners in the United States, who are the relevant consumers.”) (citing

In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed. Cir.

2007)).

16

Cancellation No. 92060394

fronto leaf from Gold Leaf Inc. The lightest, smoothest and first

grabba to be introduced to cannabis industry.

Thehighercontent.com; 55 TTABVUE 33-34.

Grabba Whole Tobacco Fronto Leaf: What is a Fronto Leaf?:

“Fronto,” “Grabba,” and “Fanta” are all just alternative names

for 100% Whole Leaf Tobacco.

Stogywraps.com; 55 TTABVUE 36.

We find these third-party references to be probative evidence that the

relevant public perceives the terms “grabba” and “grabba leaf” to, at a

minimum, immediately convey information about an ingredient or

characteristic of tobacco, or tobacco products, including cigar wraps.

Respondent also submitted into the record the lyrics from a 2003 song

“Pon de River Pon de Bank,” which he states was widely distributed,

including in the United States.28 The relevant lyrics are:

A’right, labba labba

Seh him a get ole, an can badda we di music hit him,

hi drop weed an grabba

60 TTABVUE 29.

We find the use of the term “grabba” in the song to be too vague to be

probative concerning its meaning to the relevant public.

Respondent further submitted evidence of a definition from the Urban

Dictionary for “grabba” as:

A Jamaican term used to describe something mixed with

marijuana when smoked, so as to keep the sent [sic] down and to

get rid of the bad aftertaste.

The entry is dated March 5, 2008.29 A definition from the Urban Dictionary

may be probative where appropriately considered in context. See In re

17

Cancellation No. 92060394

Brunetti, 877 F.3d 1330, 125 USPQ2d 1072, 1076 (Fed. Cir. 2017), cert.

granted sub nom. Iancu v. Brunetti, 202 L. Ed. 2d 510 (U.S. Jan. 4, 2019); In

re Manwin/RK Collateral Trust, 111 USPQ2d 1311, 1313 n.17 (TTAB 2014);

see also Bikram’s Yoga Coll. of India, LP v. Evolation Yoga, LLC, 803 F.3d

1032, 116 USPQ2d 1357, 1365 n.13 (9th Cir. 2015) (citing Urban Dictionary).

Similarly, in this case, we find that the Urban Dictionary definition

corroborates the other evidence of record which shows the terms “grabba” and

“grabba leaf” as conveying information about an ingredient or characteristic

of tobacco, or tobacco products, including cigar wraps.

Finally, we look at Petitioner’s File Declaration, submitted on May 31,

2013, where Petitioner states:

Paragraph 6: Since my use of the GRABBA LEAF trademarks,

the term GRABBA has entered pop culture vernacular, through

amongst other things, the use in songs in the Caribbean,

namely Vybz Kartel featuring Popcaan – Hot Grabba, released

June 2010.

Paragraph 7: The entry of the term GRABBA into pop culture

vernacular postdates my use of the GRABBA LEAF

trademarks.

As discussed above, Petitioner’s File Declaration is not testimony in this

proceeding. It is, nevertheless, part of the record of the proceeding, in

accordance with Trademark Rule 2.122(b), because the registration is the

subject of Respondent’s counterclaim. In this regard, we find that this

statement made by Petitioner in this File Declaration bears on the probative

28 60 TTABVUE 8.

29 60 TTABVUE 8, 31.

18

Cancellation No. 92060394

value of his defense to the counterclaim of mere descriptiveness. In short,

although Petitioner denies that his marks are merely descriptive, his

statement in his File Declaration is inconsistent with that position and

supports a contrary conclusion. See also Juice Generation, Inc. v. GS Enters.

LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (recognizing

that comments made during prosecution “have significance as ‘facts

illuminative of shade and tone in the total picture confronting the decision

maker’”) (quoting Interstate Brands Corp. v. Celestial Seasonings, Inc., 576

F.2d 926, 198 USPQ 151, 153 (CCPA 1978) and citing, inter alia, Stone Lion

Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d

1157, 1161 (Fed. Cir. 2014)).

In his brief, Petitioner further admits that currently, the relevant public

views the term “grabba” as merely descriptive, arguing, “[o]nly after

Robinson, have second comers and junior users adopted the GRABBA term as

part of a trademark, or worse, to describe a tobacco cigar wrap product.”30

Petitioner repeatedly argues that to the extent “GRABBA LEAF” is

merely descriptive, “[t]he entry of the term GRABBA into pop culture

vernacular postdates my use of the GRABBA LEAF trademarks.”31 Whether

Petitioner was the first user of the term is irrelevant since we evaluate the

question of whether a term is merely descriptive as of the time of trial. See

Grote Indus., Inc. v. Truck-Lite Co., 126 USPQ2d 1197, 1211 (TTAB 2018),

30 69 TTABVUE 9 (emphasis added).

31 37 TTABVUE 5 (File Declaration at paragraph 7).

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Cancellation No. 92060394

(citing Neapco Inc. v. Dana Corp., 12 USPQ2d 1746, 1747 (TTAB 1989)), civil

action filed, No. 1:18-cv-00599-LJV-MJR (W.D.N.Y. May 24, 2018); see also

Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750,

1764 (TTAB 2013); Kasco Corp. v. Southern Saw Serv. Inc., 27 USPQ2d 1501,

1506 n.7 (TTAB 1993) (finding that petitioner could prevail if record revealed

respondent’s registered mark lacked acquired distinctiveness either at time

of registration “or as of the present time”). We view the combination of

Petitioner’s statements in his File Declaration, taken together with the

statements in his brief, as admissions that the term “grabba” is currently

viewed by the relevant public as, at a minimum, immediately conveying

information about an ingredient or characteristic of tobacco, or tobacco

products, including cigar wraps.

Overall, considering all of the evidence of record, we find that the term

“GRABBA LEAF,” when viewed in relation to Petitioner’s “cigar wraps,”

immediately conveys information about them, namely that they may be used

as a leaf to wrap grabba tobacco, or that grabba leaf tobacco is an ingredient

in the cigar wraps.32 Thus, we find that Respondent has shown by a

preponderance of the evidence that Petitioner’s standard character mark

GRABBA LEAF, considered as a whole, is merely descriptive of cigar wraps.

32 We note, in this regard, that Petitioner, himself, argues in his reply brief that “the

Board must find that raw tobacco leaf and cigar wraps are nearly identical, and to

even argue otherwise is not only unsubstantiated, but is nearly disingenuous.” 71

TTABVUE 3.

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Cancellation No. 92060394

Similarly, we find that the design mark , which contains the

merely descriptive term GRABBA LEAF along with a design of what appears

to be a tobacco leaf, when considered as a whole, gives the same commercial

impression and is also merely descriptive of Petitioner’s cigar wraps. See

DuoProSS, 103 USPQ2d at 1756 (noting that “[w]hen determining whether a

mark is merely descriptive, the Board must consider the commercial

impression of a mark as a whole” and should have considered the design

element as well as the literal elements, finding the mark thus to be merely

descriptive); Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d

1375, 1380 (Fed. Cir. 2002) (noting that crossword puzzle design reinforces

connotation created by wording CROSSWORD COMPANION); In re Singer

Mfg. Co., 255 F.2d 939, 118 USPQ 310, 311-12 (CCPA 1958) (“It is, of course,

true that a design consisting merely or essentially of a pictorial

representation of the goods on which it is used is descriptive, and is not a

valid trademark.”) (citation omitted).

Petitioner argues in his brief that his marks are at worst suggestive,

stating that “[i]incongruity is a strong indication that a mark is suggestive

rather than merely descriptive.”33 And Petitioner stated in his response to

Respondent’s First Set of Interrogatories, No. 13 that “GRABBA LEAF

achieves a parody-like double entendre using GRABBA as both a verb and as

33 69 TTABVUE 11.

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Cancellation No. 92060394

a noun at the same time.”34 However, Petitioner does not mention in his

briefing the term “double entendre.” Nonetheless we note that, as our

precedent dictates, the meaning of the mark, in creating a double entendre,

must be self-evident from the face of the mark. See In re Calphalon Corp.,

122 USPQ2d 1153 (TTAB 2017). As the Board stated therein:

The multiple interpretations that mark an expression a ‘double

entendre’ must be associations that the public would make fairly

readily, and must be readily apparent from the mark itself.”

Id. at 1163 (citations omitted).

Petitioner cites no evidence that the relevant public would find that the

double entendre alleged by Petitioner in his interrogatory response is “readily

apparent” from the mark itself. Here, as in Calphalon, we find that

Petitioner’s marks are merely descriptive, and that there is no double

entendre to render the marks not so.35

Respondent’s counterclaim for cancellation is granted as to both of

Petitioner’s pleaded registrations on the ground that they are merely

descriptive.36

Moreover, we find that since Petitioner has not pleaded or argued that his

marks have acquired distinctiveness, he cannot establish the existence of

prior rights at common law for purposes of his claim of likelihood of

34 53 TTABVUE 7.

35 As discussed, infra, Petitioner does not argue that if we find his marks to be

merely descriptive, that they have acquired distinctiveness, and we therefore do not

consider that possibility.

36 Since we have cancelled Petitioner’s registrations on the ground that they are

merely descriptive, we need not also consider Respondent’s alternative ground that

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Cancellation No. 92060394

confusion, and thus he cannot prevail on his sole ground for cancellation of

Respondent’s mark under Section 2(d) of the Trademark Act. Giersch v.

Scripps Networks Inc., 90 USPQ2d 1020, 1023 (TTAB 2009).

Decision: Petitioner’s petition for cancellation is denied.

Respondent’s petition for cancellation on its counterclaim is granted as to

both Registration Nos. 4487117 and 4461093, on the ground that the marks

therein are merely descriptive. The registrations will be cancelled in due

course.

they are generic. Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171

(TTAB 2013).

23