Monday, April 29, 2013

Precedential No. 17: Use of TREASURYNET Mark Only Internally Results in Cancellation due to Abandonment

The Board sustained a petition for cancellation of OPGI's registration (issued under Section 44(e)) for the service mark TREASURYNET for "providing information on financial information, namely corporate treasury and loan information and commercial real estate property management information via a global computer network," finding that OPGI had used the mark only internally and had therefore abandoned the mark. City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668 (TTAB 2013) [precedential].

Evidentiary rulings: The Board first dealt with an issue regarding discovery deposition testimony taken by Petitioner City of OPGI's Rule 30(b)(6) designee, one Mr. Smart, its in-house counsel. Trademark Rule 2.120(j)(4) provides that "if only part of a discovery deposition is submitted and made part of the record by a party, an adverse party may introduce under a notice of reliance any other part of the deposition which should in fairness be considered so as to make not misleading what was offered by the submitting party."

City argued that OPGI's counter-designations exceeded the scope of the testimony excerpts that it had submitted, but the Board disagreed. City also contended that the testimony, concerning a period of time before Mr. Smart's employment by OPGI, constituted hearsay, but the Board overruled that objection too, pointing out that a designed Rule 30(b)(6) witness is testifying on behalf of the party and not himself: Rule 30(b)(6) provides that the party’s designated witness shall "testify about information known or reasonably available to the organization," and it is therefore not inappropriate for him to testify as to matters not within his personal knowledge.

Next, the Board overruled Petitioner City's objection to a certain third-party publication downloaded from the Internet, ruling that under Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB 2010), the document was properly submitted via notice of reliance. However, the Board emphasized, the third-party document has limited probative value because it is admissible solely for what it shows on its face. It cannot be considered to prove the truth of any matter stated therein.

City also objected to Mr. Smart's trial testimony regarding any events occurring before his employment by OPGI in 2008, on the grounds of hearsay and lack of foundation. OPGI maintained  that Mr. Smart had "sufficient reliable knowledge" based on his investigations and discussions "regarding intent and the like with the persons with the most knowledge of those issues and by reviewing relevant documents."

Federal Rule of Evidence 602 provides that "[a] witness may not testify to matter unless evidence is introduced sufficient to support a finding that the witness has personal knowledge of the matter." The Board has held that a witness may not offer testimony regarding company history unless he or she has personal knowledge thereof:

[T]he [business record hearsay exception] rule does not provide for the admission into evidence of the testimony of a person who lacks personal knowledge of the facts, who is unable to testify to the fulfillment of the conditions specified within the rule, and who is testifying only about what he has read or has been allowed to review. Olin Corp. v. Hydrotreat, Inc., 210 USPQ 63, 67 (TTAB 1981).

The Board concluded that OPGI failed to demonstrate that Mr. Smart had personal knowledge regarding Respondent’s history prior to May 2008, or its use of the term TREASURYNET prior to that date. Furthermore, his testimony revealed that OPGI could have produced a witness with the requisite personal knowledge of matters for those years, and OPGI did not explain why that person could not have testified. Nor did OPGI show that, as in-house counsel, Mr. Smart would have had knowledge of the pre-employment matters regarding which he was testifying. And so the Board sustained City's objection and refused to consider Mr. Smart's testimony regarding pre-2008 matters.

Use in Commerce: The crux of Petitioner City's abandonment claim was that any use by OPGI of the term TREASURYNET had been solely for OPGI’s internal use, not for use by others, and thus the term was never used in commerce in connection with the recited services. The Board agreed.

"Use in commerce" is defined, in pertinent part, in Section 45 of the Trademark Act (15 U.S.C. § 1127) as follows:

[T]he bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce-- ... on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, orthe services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

Respondent OPGI is a Canadian company that owns an intranet website whereby its employees may access an informational database identified as "TreasuryNet." Mr. Smart testified that third parties cannot directly access the information in the TREASURYNET database; only OPGI's employees may do so.

OPGI relied on several decisions in which the provision of services to employees (administration of an annuity plan, in-house sales training) under a particular mark was deemed to be use of the mark in interstate commerce. It contended that it "provides tangible services directly to its employees under the TREASURYNET mark." The Board, however, pointed out that OPGI "is the real beneficiary and not its employees who are accessing the TREASURYNET database in order to perform their jobs."

Respondent’s employees are not being offered a benefit and otherwise taught skills that are transferrable to other positions outside of their employment with respondent. Rather, respondent’s employees are merely using respondent’s proprietary database as a source of information in performing their work; they would not have access to this database upon leaving their job with respondent. The record in this proceeding provides no indication how respondent’semployees would personally benefit from having access to the TREASURYNET database other than the satisfaction of knowing that they are fulfilling their employment duties on behalf of respondent.

Abandonment: Under Section 45 of the Trademark Act (15 U.S.C. § 1127), a mark is considered to be abandoned when "its use has been discontinued with intent not to resume such use." Furthermore, under Section 45, a mark shall be deemed to be abandoned when, inter alia, "its use has been discontinued with intent not to resume such use." Nonuse for 3 consecutive years gives rise to a prima facie case of abandonment.

The Board concluded that OPGI "has not used TREASURYNET as a mark in commerce in connection with the recited services" and therefore it abandoned its mark. More specifically, OPGI did not use TREASURYNET in commerce since at least the date of issuance of its registration, February 20, 2007, resulting in over three years of nonuse. The record therefore established a prima facie case of abandonment, which OPGI did not rebut.

Finally, the Board noted that Mr. Smart's disallowed testimony regarding pre-2007 activities would not have made a difference. Any use prior to 2008 would not erase the three-year period of abandonment subsequent to 2007, and furthermore his testimony would only confirm that same internal use of the mark for an even longer period of time.

And so the Board granted the petition for cancellation.

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Text Copyright John L. Welch 2013.


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