SMITH v. ENTREPRENEUR MEDIA, INC., 92053982 (TTAB 9-22-2011)
Cancellation No. 92053982United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: September 22, 2011Page 1
Before Walters, Cataldo and Wellington, AdministrativeTrademark Judges.
By the Board:
On May 6, 2011, petitioner filed a petition to cancel respondent’s registration for the mark ENTREPRENEUR MAGAZINE’S SMALL BUSINESS EXPO for “promoting and arranging shows and exhibitions pertaining to fields of entrepreneurial interest, franchising, and the initiation and operation of small business enterprises” and for “educational services, namely, conducting seminars and work shops on subjects relevant to starting and operating small businesses, including computer technology, telecommunications, marketing, financing options, franchising, tax planning and insurance.”[fn1] A disclaimer of SMALL BUSINESS EXPO is of record.
Respondent’s registration issued on November 28, 2000. Its renewal (Trademark Act ? 9) and ten-year declaration of continuedPage 2
use (Trademark Act ? 8) were due by November 28, 2010. The grace period for filing the required statements expired on May 28, 2010. On May 6, 2011, three week prior to the expiration of the grace period, petitioner filed his petition to cancel.
As grounds for cancellation,[fn2] petitioner alleges abandonment and that respondent committed fraud in connection with its November 6, 2006 Section 8 filing. With respect to the latter, petitioner specifically alleges that respondent submitted a specimen from which the date, time and place of the expo were intentionally removed; that respondent had not used the specimen in commerce or in connection with the goods and services as registered; that the postcard specimen displayed a return address for respondent that appeared to be respondent’s address in 1999; that respondent, in 2000, filed a change of address to a different street address; that respondent submitted the specimen misrepresenting that its mark was in use in commerce; and that such misrepresentation was made with the intent to deceive the USPTO.
With respect to his standing, petitioner alleges that he owns the domain names www.smallbusinessexpo.info and www.smallbusinessexpose.info. Petitioner further alleges that, because of the litigious history between the parties, any steps he would take to use his domain names containing the phrase “smallPage 3
business expo” would be met with retribution and court action by respondent.
This case now comes up on the following motions and matters:
1) petitioner’s fully briefed motion, filed June 5, 2011, for an order to show cause under Trademark Rule 2.134(b)
2) respondent’s fully briefed motion, filed June 20, 2011, to dismiss the cancellation based on petitioner’s lack of standing; and
3) respondent’s motion to consolidate the instant cancellation with Cancellation No. 92053724.
Respondent’s motion to dismiss
In support of its motion, based solely on petitioner’s purported lack of standing, respondent states that petitioner has been permanently enjoined from using the term ENTREPRENEUR; that respondent has disclaimed the term SMALL BUSINESS EXPO as part of its mark at issue here, ENTREPRENEUR MAGAZINE’S SMALL BUSINESS EXPO; and that petitioner is free to use the phrase “small business expo.” Respondent argues that, as a consequence of the disclaimer, petitioner cannot be harmed by respondent’s registration (now cancelled). Respondent contends that petitioner’s use of his domain names cannot be affected by respondent’s registration because of the disclaimer and that, because petitioner is prohibited from using the term ENTREPRENUER, petitioner does not have a real interest in cancelling respondent registration.
In response, petitioner argues that, because he bases his standing on use of his domain names which include the termPage 4
“smallbusinessexpo,” the permanent injunction concerning the term ENTREPRENEUR does not bar him from seeking to cancel respondent’s registration; that he has stated a reasonable belief in damage based on the parties’ history of litigation; and that, because the words SMALL BUSINESS EXPO are part of respondent’s mark, petitioner may seek to cancel registration of the entire mark.
To allege standing within the meaning of Section 14 of the Trademark Act, 15 U.C.S. ? 1064, a petitioner must plead facts sufficient to show that it has a direct and personal stake in the outcome of the cancellation and a reasonable basis for its belief that it will be damaged. See Ritchie v.Simpson, 170 F.3d 1092, 1098, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999). The focus must be on whether petitioner has shown a reasonable basis for its belief in damage, and there is no requirement that any actual “damage” be pled or proved to establish standing or even to prevail in a cancellation proceeding. In a case involving assertion of an equal right to use a term, the question is whether the presumptions flowing from the respondent’s registration are damaging to petitioner’s right to legal and continuous use of that term.
A disclaimer of a term is essentially an admission of the merely descriptive nature of that term, as applied to the goods or services in connection with which it is registered, and an acknowledgment of the lack of an exclusive right therein at the time of the disclaimer. See Quaker State Oil Refining Corp.v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972). APage 5
disclaimer shows that the defendant enjoys no exclusive rights to the disclaimed symbols apart from the composite mark.See Dena Corp. v. Belvedere Intern., Inc.,950 F.2d 1555, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991).
In this case, petitioner has not shown he has a real interest in cancelling respondent’s registration for the entire mark ENTREPRENEUR MAGAZINE’S SMALL BUSINESS EXPO based on his general interest in future use of only the terms SMALL BUSINESS EXPO, which are disclaimed and which comprise only a portion of that mark. Cf. Kellogg Co. v. Pack’Em Enterprises,Inc., 14 USPQ2d 1545, 1549 (TTAB 1990) (where it is alleged that only an undisclaimed portion of a mark registered for less than five years is descriptive, a valid ground for cancellation exists that the mark should not be registered without a disclaimer of that portion).[fn3] Respondent has made it clear that it recognizes that petitioner and other parties may use the term SMALL BUSINESS EXPO. Thus, petitioner has not adequately pled his standing.
In view thereof, respondent’s motion to dismiss because petitioner lacks standing is granted.
Petitioner’s motion for judgment because the registrationcancelled after the proceeding commenced
Petitioner requested entry of judgment against respondent on all claims because the registration was cancelled after the petitionPage 6
to cancel was filed. Petitioner’s motion was filed on June 5, 2011, after the expiration of the grace period, on May 28, 2011. Petitioner argues that respondent deliberately failed to renew the registration in order to moot the proceeding and to avoid judgment.
In response, respondent argues that its renewal and ten-year declaration of continued use were due November 28, 2010; that it made a business decision before that time, and before petitioner filed the petition to cancel on May 6, 2011, not to renew the registration; and that, because such decision was made long before the petition to cancel was filed, respondent was not attempting to avoid any judgment when it elected not to renew its registration. Respondent contends that petitioner purposely chose to file a petition to cancel just weeks before the renewal grace period elapsed in an attempt to obtain a judgment. Respondent provides the declaration of its general counsel that respondent decided not to renew the registration for business reasons.
In reply, petitioner argues that respondent asserted the registration as late as February 24, 2010 in another opposition proceeding and that respondent has not supplied a time-line for its business decision to let the registration expire.
Trademark Act ? 9(a) provides in relevant part as follows:
. . . each registration may be renewed for periods of 10 years at the end of each successive 10-year period following the date of registration upon payment of the prescribed fee and the filing of a written application, in such form as may be prescribed by the Director. Such application may be made at any time within 1 year before the end of each successive 10-year period for which the registration was issued or renewed, or it may be made within a gracePage 7
period of 6 months after the end of each successive 10-year period, upon payment of a fee and surcharge prescribed therefore. . . .
Thus, respondent’s registration expired on its tenth anniversary, which preceded the grace period, because respondent did not file a timely renewal.
Accordingly, the petition to cancel is dismissed as moot.[fn4]
Alternatively, if a respondent submits a showing that it permitted its registration to be cancelled under Trademark Act ? 8 or failed to renew the registration under Trademark Act ? 9, because its registered mark had been abandoned, and that the abandonment was not made for purposes of avoiding the proceeding, judgment ordinarily will be entered against it only and specifically on the ground of abandonment. See
Trademark Rule 2.134(b); and TBMP ?? 535 and 602.02(b) (3d ed. 2011).
In this case, respondent’s decision not to renew its registration was made long before the petition to cancel was filed. Although petitioner asserted a claim of abandonment, because the Board has determined that petitioner does not have standing, petitioner’s motion for entry of judgment (which would only be directed to the abandonment claim) against respondent pursuant to Trademark Rule 2.134(b) is denied.Page 8
In view of the dismissal occasioned herein, respondent’s motion for consolidation is moot.
The petition to cancel is dismissed with prejudice.
***[fn1] Registration No. 2408039. A claim of acquired distinctiveness as to the term ENTREPRENEUR is of record.
[fn2] Petitioner’s amended petition to cancel, filed on May 16, 2011, is noted and entered and is petitioner’s operative pleading for this case. See Fed.R.Civ.P. 15(a); and TBMP ? 507.02 (3d ed. 2011). [fn3] Once a registration is more than five years old, as here, a plaintiff may not seek, as a remedy, entry of a disclaimer of an undisclaimed term, alleged to be generic, which composes only a portion of the mark. See Montecash LLC v. AnzarEnterprises, Inc., 95 USPQ2d 1060, 1064 (TTAB 2010). [fn4] Petitioner’s motivation in filing the petition to cancel just three weeks before the expiration of the grace period is perplexing. The Board can only conclude that petitioner, recognizing that respondent was unlikely to submit a ten-year Section 8 declaration and Section 9 renewal was attempting to obtain a judgment simply to have one, particularly in light of the extensive litigation between the parties, referenced by both parties. The registration was more than five years old. Thus, petitioner was not facing a statutory time bar; and the claims petitioner asserted are available at any time. Had petitioner waited the three weeks until grace period expired, he would have conserved economic and judicial resources.