CAFC Affirms TTAB Entry of Summary Judgment on COLOR WARS Cancellation Petition

The CAFC affirmed the TTAB's decision (here) summarily dismissing pro se Appellant Joel E Beling's petition for cancellation of Respondent Ennis, Inc.'s registration for the mark COLORWORX & Design for printing services. Mr. Beling alleged that respondent's mark was generic or merely descriptive, and its registration obtained by fraud. The CAFC agreed with the Board that Beling failed to produce evidence "sufficient for a reasonable person to find in his favor." Joel L. Beling, dba Supe Characters Pty Ltd, Appeal No. 2015-1157 (June 3, 2015) [not precedential].

When Ennis, Inc. opposed Beling's application to register the mark COLOR WARS in classes 16, 28, and 41, Beling filed a petition to cancel Ennis's registration for its COLORWORX & Design mark. The two proceeding were subsequently consolidated. The parties filed cross-motions for summary judgment in the cancellation proceeding, the Board granting Ennis's motion and denying Beling's motion, finding that Beling had failed to produce evidence to support each element of his fraud claim, and failed to produce any probative evidence of the public perception of Ennis's mark to support the genericness or mere descriptiveness claims. The CAFC reviewed the Board summary judgment rulings de novo.

Fraud: A party claiming fraud must provide clear and convincing evidence that the accused party knowingly made a false, material representation with the intent to deceive the USPTO. Beling alleged that Ennis fraudulently stated that it was not aware of any other party that had superior rights in the COLORWORX mark. Beling pointed to webpages and PTO records showing uses of either COLORWORKS, COLORWORX, or a cross-hair design, as well as to supposed inconsistencies in Ennis's discovery responses.

However, none of Beling's evidence suggested that Ennis knew that a confusingly similar mark was already in use, or that Ennis intended to deceive the PTO. In fact, Ennis's witness disclaimed any such knowledge. As to the inconsistent discovery responses, they were attributable to differences in the questions asked, and in any case were not relevant to Ennis's knowledge or intent.

Genericness or Mere Descriptiveness: Mr. Beling failed to submit any evidence to show that the relevant public would understand Ennis's stylized mark or the literal component of the mark to be generic or merely descriptive. Third-party uses of COLORWORKS, COLORWORX, or a cross-hair design did not demonstrate whether a consumer would recognize them as generic or merely descriptive of printing services. In fact, some of the marks were registered on the Principal Register, suggesting that the PTO did not consider them to be generic or merely descriptive.

Estoppel Sanction: Finally, Beling maintained that the Board had abused its discretion when it denied his motion to exclude some of Ennis's evidence as an estoppel sanction for failure to produce the evidence in response to discovery requests. However, the only such evidence not publicly available was a certain affidavit, which affidavit was not materially inconsistent with the testimony given by the same person. And so the CAFC ruled that the Board did not abuse its discretion in denying the motion to exclude.

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TTABlog comment: So the opposition part of the case continues. Do you think the marks are confusingly similar? How are Ennis's printing services related to class 28 games and toys, or class 42 educational and entertainment services?

Text Copyright John L. Welch 2015.