Failure to Prove "Standing" and Priority Dooms Section 2(d) Cancellation of CHUBB TRAVEL SMART Registration for Mobile Apps

Claiming common law rights in the mark TRAVELSMART for mobile apps related to travel, Petitioner AWP sought cancellation of a registration for the mark CHUBB TRAVEL SMART for similar mobile apps. AWP claim didn't travel very far because it failed to prove its entitlement (f/k/a standing) to bring this cancellation petition and it also failed to prove priority. The Board's opinion smartly analyzes the "standing" issue and the "hearsay" evidentiary rules, leading to a denial of the petition on both grounds. AWP USA Inc. v. Chubb INA Holdings Inc., Cancellation No. 92070407 (June 10, 2021) [not precedential] (Opinion by Judge Christopher Larkin).

Entitlement to a Cause of Action (f/k/a "standing'): "A plaintiff’s entitlement to a statutory cause of action for opposition or cancellation is a threshold issue in every inter partes case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)). A petitioner may petition to cancel a registration if such cancellation is within the zone of interests protected by the statute, 15 U.S.C. § 1064, and if petitioner has a reasonable belief in damage proximately caused by the continued registration of the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *6-7 (Fed. Cir. 2020), cert. denied, ___ U.S. ___ (2021)." 

Petitioner AWP maintained that there were two bases for its "standing." First, because its application to register the mark TRAVELSMART was blocked by a Section 2(d) citation based of Chubb's registration, and second, because it sells a competing product and it will be damaged by continued existence of the registration.

The problem with the first argument was that, although AWP pleaded ownership of the application, it failed to submit the application into the record. AWP argued that Chubb had admitted AWP's ownership of the application in its Answer to the petition for cancellation, but all Chubb admitted was that AWP was listed as the applicant in the USPTO records, and not that AWP owned the application. Since AWP neither made the application of record nor provided testimony as to its ownership, the Board ruled that AWP could not base its "standing" on the refusal to register.

As to the second argument, AWP failed to prove that it owned and was using the mark TRAVELSMART in commerce. AWP relied solely on advertisements and app store screenshots for the app, claiming that these items showed that its TRAVELSMART app was "widely circulated, advertised, and available to the public."  The Board found this evidence to be very similar to that in WeaponX Performance Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034 (TTAB 2018). [TTABlogged here].

Like the pages in WeaponX from the opposer’s reputed website at weaponxperformance.com, the pages here from what Petitioner suggests is its website at allianztravel.com “show on their face that some entity is advertising products and services under the [TRAVELSMART] mark, but absent testimony from a competent witness, they are nonetheless hearsay. They do not prove that [Petitioner] owns its pleaded [TRAVELSMART] mark or that it has offered products or services under that pleaded mark.” WeaponX, 126 USPQ2d at 1040.

Similarly, as to the app store screenshots AWP assumed that the “Allianz TravelSmart” app shown and described on these pages is its own product, but again that fact was not established by the screenshots alone. 

The Board concluded that AWP failed to establish that it has a reasonable belief in damage proximately caused by the continued registration of Chubb's mark arising from AWP's alleged ownership of its pleaded application to register. Therefore AWP did not establish its entitlement to bring this petition for cancellation, and the petition was denied on that ground.

Priority: Although the lack of "standing" was sufficient to resolve the case, the Board went on to discuss the issue of priority, since the same hearsay problems arose there. It again observed that "Internet evidence is only admissible for what it shows on its face ...." Assertions appearing in the Internet printouts must by corroborated by testimony as to the truth of the matter asserted. "WeaponX teaches that it is necessary to connect the dots between a mark displayed on a webpage, its putative owner, and the goods or services with which it is used, by evidence other than the webpage itself, such as 'testimony from a competent witness,' id., but Petitioner offered none here."

“In sum, [Petitioner] has not proven it is the owner of the mark pleaded in the [Petition for Cancellation], and even if it did prove ownership, it has not demonstrated its priority. Accordingly, [Petitioner] cannot prevail on its claim of likelihood of confusion.” WeaponX, 126 USPQ2d at 1041-42. The Petition for Cancellation must be denied for this reason as well.

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TTABlogger comment: A tip of the TTABlog fedora to FOB Jennifer deWolf Paine. BTW: I would have made this decision precedential. PS: A simple testimonial declaration would seemingly have avoided these problems.

Text Copyright John L. Welch 2021.