CAFC Vacates and Remands TTAB's NIGHTLIFE TELEVISION Decision: Board Ignored Pleaded Registration

The U.S. Court of Appeals for the Federal Circuit has vacated the Board's decision in Cutino v. Nightlife Media, Inc., Opposition No. 91186025 (April 25, 2013) [not precedential], in which the Board dismissed a Section 2(d) opposition to registration of NIGHTLIFE TELEVISION for "Video-on-demand transmission services, Internet broadcasting services, broadcasting services, namely, broadcasting programs over a global computer network to mobile telephones and computers, Satellite television broadcasting, and Television broadcasting," in view of the two registered marks LONG ISLAND’S NIGHTLIFE (Stylized) [LONG ISLAND disclaimed] and NEW YORK'S NIGHTLIFE [NEW YORK'S disclaimed] for monthly magazines. The CAFC found that the Board erred in refusing to consider Opposer Cutino's pleaded NIGHTLIFE registration (for "magazines of general interest" and for "television programming services") because, the court found, applicant had admitted the current ownership and active status of that registration. The case was remanded to the TTAB for consideration of the NIGHTLIFE registration. Cutino v. Nightlife Media, Inc., Appeal No. 2013-1541 (Fed. Cir. August 7, 2014) [not precedential].

Opposer Cutino pleaded three registrations, but as to the NIGHTLIFE registration he submitted only an ordinary copy of the registration (rather than copies of the PTO database entries or a status-and-title copy of the registration). See Rule 2.122(d)(1). Therefore the Board ruled that the NIGHTLIFE registration was not of record. As to the two registered marks that were of record, the Board noted that they included words that referred to a specific geographic location, making Cutino's two marks "look and sound significantly different than applicant's mark." Moreover, Cutino failed to prove that his local-area magazines were related to applicant's broadcasting services.

The CAFC pointed out that applicant admitted in its answer that Cutino is the owner of the three pleaded marks and that the pleaded registrations identify the goods and services alleged by Cutino in his opposition. The Board, however, found that applicant's admission of Cutino's ownership of the NIGHTLIFE mark was not enough to make the registration of record.

The CAFC concluded that the Board had abused its discretion in disregarding the NIGHTLIFE registration. "The Board's own procedures and this court's precedent recognize that an opposer's registration will be deemed of record if the applicant's answer contains admissions sufficient to establish the current status of the registration and the plaintiff's ownership of the registration."

The court found that applicant's admissions in its answer were sufficient "to treat the NIGHTLIFE registration as part of the record."

While Applicant purported to admit only that Mr. Cutino is the owner of the "mark" NIGHTLIFE, Applicant did not deny that Mr. Cutino owns the corresponding pleaded registration. *** An answer that fails to deny a portion of an allegation is deemed admitted as to that portion."

Moreover, the court found that the admission regarding ownership "not only establishes current title, but also the current status of the NIGHTLIFE registration, i.e., that it is active." The court explained that one "technically does not own a registration unless it is in force and effect." And applicant's denial that the registration was "subsisting" was not a clear denial of its current status, particularly since applicant made the identical denials with regard to the other two pleaded registrations for which Cutino submitted records establishing current status.

The CAFC remanded the case to the TTAB to consider the likelihood of confusion between the registered NIGHTLIFE mark and applicant's mark.

Read comments and post your comment here.

TTABlog note:  Well, with opposer's NIGHTLIFE registration, which covers "television programming sevices," back in play, this is a whole new ballgame.

Text Copyright John L. Welch 2014.