Tuesday, January 19, 2016

TTAB Dismisses CIGAR SNOB Cancellation For Failure to Prove Priority, Fraud

The Board dismissed this petition for cancellation of a registration for the mark THE $NOB, in standard character form, for "multimedia publishing of books, magazines, journals, software, games, music, and electronic publications," on the ground of likelihood of confusion and fraud, ruling that petitioner had failed to prove priority for its pleaded mark CIGAR SNOB, and failed to provide any evidence that Respondents made false statements with the requisite intent to deceive the USPTO. Lockstock Publications, Inc. d/b/a Cigar Snob Magazine v. J. Thomas Investments, Inc. and Jeffrey Thomas Gomez, Cancellation No. 92057753 (January 15, 2016) [not precedential].

Priority: Petitioner claimed common law rights arising out of its alleged prior use of CIGAR SNOB for magazines. However, its only proof of prior use was introduced by notice of reliance, without testimony or other evidence. Specifically, Petitioner relied on the cover pages and mastheads of several issues of CIGAR SNOB magazine from 2006-2007.

The problem is that printed publications introduced through notice  of reliance alone are not competent to establish the truth of the matters asserted therein. We consider unexplained, unauthenticated printed publications such as these only for what they show on their face. See Safer Inc. v. OMS Investments Inc., 94 USPQ2d1031, 1039-40 (TTAB 2010). *** On their face, the copies of what appear to be portions of certain editions of CIGAR SNOB magazine are insufficient to establish that Petitioner controlled the nature and quality of the magazines; where and when they were distributed, if ever; that anyone purchased or was exposed to the magazines or the CIGAR SNOB mark; or any other fact supporting a finding that Petitioner owns or used the mark CIGAR SNOB for magazines.

Respondent made no admission regarding Petitioner's use of the CIGAR SNOB mark. The magazine excerpts submitted by Petitioner were insufficient to prove use prior to Respondents' constructive first use date (the filing date of its underlying application) in June 20007. Therefore the Section 2(d) claim was dismissed.

Fraud: To establish a fraud claim, intent to deceive the USPTO must be proven by clear and convincing evidence. "Here, Petitioner has not presented any evidence, direct, indirect or circumstantial, let alone the requisite 'clear and convincing'' evidence." Co-respondent Gomez testified that he believed he was using the involved mark THE $NOB for magazines and other products prior to the filing date of Respondents' underlying application. "Whether this belief was accurate or reasonable is not relevant to the fraud inquiry."

Even if Petitioner was correct that Respondents should have known that they were not using the mark on some of the goods identified in the Registration, that, without more, does not reflect an intent to deceive much less prove such an intent “to the hilt” as required by Bose.

And so Petitioner's fraud claim was dismissed.

Read comments and post your comment here.

TTABlog comment: The U.S. District Court for the District of Maryland recently applied B&B v. Hargis in giving preclusive effect to the issue of priority. [TTABlogged here]. The Eastern District of Virginia recently applied B&B to the issue of fraud [TTABlogged here]. Petitioner might want to file an civil action for review of the Board's decision, which would permit the submission of additional evidence.

Text Copyright John L. Welch 2016.


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