Precedential No. 9: TTAB Rules That Testimony Declarations Must Be Executed During Testimony Period

Petitioner Michael A. Robinson saw his petition for cancellation go up in smoke when the Board granted respondent's counterclaim for cancellation of Robinson's registrations for the mark GRABBA LEAF, in standard character and design form, for cigar wraps. Robinson alleged that respondent's mark HOT GRABBA NATURAL TOBACCO LEAF for leaf tobacco would likely cause confusion with his registered marks. The Board, however found his marks to be merely descriptive, and so it granted the counterclaim and dismissed Robinson's petition for cancellation. Robinson v. Hot Grabba Leaf, LLC, 2019 U.S.P.Q.2d 149089 (TTAB 2019) [precedential] (Opinion by Judge Lorelei Ritchie).

Testimony Declaration: During his testimony period, Petitioner Robinson submitted a declaration that had been filed in the applications that matured into his two registrations. He asserted that Rule 2.123(a)(1) permits testimony to be submitted in affidavit or declaration form. Respondent argued that these declarations were inadmissible as untimely because Rule 2.121(a)(1) states that "[no] testimony shall be taken or evidence presented except during the times assigned, except by stipulation of the parties approved by the Board, or upon granted by the Board, or by order of the Board." The Board agreed with respondent:

Absent a stipulation or Board order, a testimony affidavit or declaration must be taken—that is, executed—during the assigned testimony period, as required by Rule 2.121(a).

The Board, however, pointed out that this problem may be avoided by submitting such a declaration "under a timely taken affidavit or declaration attesting to the continued accuracy of the information residing therein." The Board also noted that, had the declaration been considered, it would not have changed the outcome of the case.

Mere Descriptiveness: In response to the counterclaim, Petitioner Robinson argued only that his marks are inherently distinctive and did not claim acquired distinctiveness. Robinson had disclaimed any rights in the word LEAF, and the Board took that disclaimer as an admission that LEAF is merely descriptive of cigar wraps.

Third-party website evidence submitted by respondent showed the terms "grabba" and "grabba leaf" used in connection with tobacco products, including cigar wraps. A definition of "grabba" from the Urban Dictionary was also probative: "A Jamaican term used to describe something mixed with marijuana when smoked so as to keep the sent [sic] down and to get rid of the bad aftertaste."

Moreover, statements made by Robinson in the declaration from his application files were also pertinent, since they contradicted his claim of non-descriptiveness:

Paragraph 6: Since my use of the GRABBA LEAF trademarks, the term GRABBA has entered pop culture vernacular, through amongst other things, the use in songs in the Caribbean, namely Vybz Kartel featuring Popcaan – Hot Grabba, released June 2010.

Paragraph 7: The entry of the term GRABBA into pop culture vernacular postdates my use of the GRABBA LEAF trademarks.

The Board observed that [w]hether Petitioner was the first user of the term is irrelevant, since we evaluate the question of whether a term is merely descriptive as of the time of trial."

Petitioner further admitted in his trial brief that "[o]nly after Robinson, have second comers and junior users adopted the GRABBA term as part of a trademark, or worse, to describe a tobacco cigar wrap product." (emphasis supplied by the Board). The Board considered these statements to be admissions that "grabba" is "currently viewed by the relevant public as, at a minimum, immediately conveying information about an ingredient or characteristic of tobacco, or tobacco products, including cigar wraps."

Considering all the evidence, we find that "the term “GRABBA LEAF,” when viewed in relation to Petitioner’s “cigar wraps,” immediately conveys information about them, namely that they may be used as a leaf to wrap grabba tobacco, or that grabba leaf tobacco is an ingredient in the cigar wraps.

The Board found that Robinson's word-plus-design, which includes a drawing of a tobacco leaf, engenders the same commercial impression as the word mark GRABBA LEAF and is likewise merely descriptive of cigar wraps.

The Board therefore granted the counterclaim for cancellation of Robinson's pleaded registrations. Moreover since Robinson has no rights in the mark GRABBA LEAF, his claim under Section 2(d) must fail, and so the Board denied his petition for cancellation.

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TTABlog comment: If the "File Declaration" was considered as evidence of the meaning of GRABBA LEAF, shouldn't that declaration be admissible for all purposes?

Text Copyright John L. Welch 2019.