Friday, January 14, 2011

TTAB Refuses to Cancel ATL'S BADDEST CHICKS Registration: Petitioner Failed to Prove Ownership or Fraud

Petitioner Littel Concepts apparently had little concept of how to win a TTAB cancellation proceeding. Littel sought to strike a registration for the mark ATL'S BADDEST CHICKS for "presentation of live performances," claiming prior rights in the same mark for similar services, and accusing Respondent Striker of fraud. But after barely clearing the miniscule standing hurdle, Littel failed to prove ownership of its alleged mark and, even if it had, failed to prove fraud. Littel Concepts, LLC v. Striker Records, Inc., Cancellation No. 92050431 (December 27, 2010) [not precedential].

(click on photo for larger picture)

Standing: Petitioner claimed standing based on the refusal of its application over the Respondent's registration. That would have sufficed, but Littel put in no evidence at all, not even a copy of the office action refusing its application to register. However, the file of the targeted registration, which was automatically of record, included the specimen of use submitted by Respondent (the poster above). Near the bottom, that poster includes the wording "For more info log on to,, or call 404-607-8772."

Petitioner Littel claimed in its petition and in its brief that it was the producer of the concert referred to in the poster. Respondent denied it. Despite the lack of testimony from Littel, the Board decided to "assume and find (charitably to petitioner) that the URL and the telephone number appearing on the poster are petitioner's." Therefore, the Board concluded, Littel has "some sort of connection" to the concert and is not a mere intermeddler here. Under the lenient standard for standing, Littel passed the test.

Ownership: However, Littel failed to meet the "more stringent" standard for proving that it owned common law rights in the mark ATL'S BADDEST CHICKS. The only evidence of record was the concert poster, which "does not establish that Littel was the producer of the concert, any more than the similarly-placed reference to the website of the radio station." Petitioner's logo appears at the bottom of the poster, but only along with six similarly-sized logos, and various other entities are also identified on the poster. And so the Board could not conclude that Littel, rather than any of the other entities, was the producer of the concert. And even Little were the producer, the poster does not establish that Littel owned the mark or that it has any prior rights vis-a-vis Respondent.

Because of this lack of proof of ownership, Littel's claims of likelihood of confusion and fraud were dead.

Fraud: Nonetheless, the Board went on the review what it considered to be a fraud claim asserted by Littel.

We construe petitioner’s allegation that respondent’s registration should be cancelled because respondent filed its application for registration of the mark “with full knowledge of Petitioner’s prior use...” as an allegation that respondent committed fraud in executing the application declaration verifying that

"To the best of the verifier’s knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive..."

Trademark Act Section 1(a)(3)(D), 15 U.S.C. §1051(a)(3)(D).

Even if Littel had proven superior rights in its mark, it did not prove that Striker had actual knowledge that "petitioner's asserted rights in the mark were superior to its own and that, due to such knowledge, respondent had no reasonable basis for believing that it was entitled to the registration it applied for."

Ownership of the Registration: In one final bizarre twist, Littel pointed to Respondent's answer, wherein Striker's general denials included a denial of an allegation that it owned the registration at issue. The Board refused to credit that denial because Littel did not assert lack of ownership as a ground for cancellation and because any purported admission by Striker was offset by Littel's assertion in its petition that Respondent is the owner.

Additionally, respondent’s “admission” that it was not the owner of the registration is not an admission that it was not and is not the owner of the registered mark itself, which would actually be a ground for cancellation of the registration. [Would someone please explain this statement to me? I don't get it. - ed.]

The Board therefore concluded that Respondent's admission "does not suffice as a ground for cancellation."

TTABlog comment: If Littel really thought that it could win on the basis of Striker's admission of lack of ownership, why didn't Littel move for summary judgment or judgment on the pleadings? Maybe it didn't want to red-flag the issue too early, lest Respondent correct its answer.

Text Copyright John L. Welch 2010.


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