Evolutionary Guidance Media R&D Inc. v. Cyberman Sec., 91249427

• Court: United States Patent and Trademark Office. United States Patent and Trademark Office, Trademark Trial and Appeal Board
• Writing for the Court: ALLARD, ADMINISTRATIVE TRADEMARK JUDGE
• Decision Date: 06 July 2022
• Docket Number: 91249427,91253845
• Parties: Evolutionary Guidance Media R&D Inc. v. Cyberman Security, LLC AKA The CyberHero Adventures: Defenders of the Digital Universe Cyberman Security, LLC AKA The CyberHero Adventures: Defenders of the Digital Universe v. Evolutionary Guidance Media R&D Inc.

Evolutionary Guidance Media R&D Inc.
v.
Cyberman Security, LLC AKA The CyberHero Adventures: Defenders of the Digital Universe

Cyberman Security, LLC AKA The CyberHero Adventures: Defenders of the Digital Universe
v.
Evolutionary Guidance Media R&D Inc.

Nos. 91249427, 91253845

United States Patent and Trademark Office, Trademark Trial and Appeal Board

July 6, 2022

THIS OPINION IS NOT A PRECEDENT OF THE TTAB

Hearing: May 18, 2022

Meredith Lowry of Wright Lindsey & Jennings LLP, for Evolutionary Guidance Media R&D Inc.

Maxim H. Waldbaum of Rimon PC, for Cyberman Security, LLC AKA The CyberHero Adventures: Defenders of the Digital Universe.

Before Kuczma, Goodman, and Allard, Administrative Trademark Judges.

OPINION

ALLARD, ADMINISTRATIVE TRADEMARK JUDGE

This case comprises two consolidated opposition proceedings.^[1]

1

First, in Opposition No. 91249427 (the "'427 proceeding"), Evolutionary Guidance Media R&D Inc. ("EGM") opposes an application filed by Cyberman Security, LLC AKA The CyberHero Adventures: Defenders of the Digital Universe ("Cyberman") to register the mark THE CYBERHERO ADVENTURES DEFENDERS OF THE DIGITAL UNIVERSE (in standard characters) for "comic books" in International Class 16 on the Principal Register.^[2]

EGM opposes registration of Cyberman's mark on the ground of likelihood of confusion^[3] pursuant to § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on its registered CYBERHERO LEAGUE mark,^[4] which identifies the following services:

Interactive educational and entertainment services, namely providing a web-based virtual educational theme-park featuring individuals, companies, and organizations engaged in charitable activities, which actively use the Internet to help other people, animals, or the environment, in Class 41 and

Providing a social networking website at which a user can give charitable gifts to others; [p]roviding a social

2

networking website for entertainment purposes, featuring individuals, companies, and organizations engaged in charitable activities, which actively use the Internet to help other people, animals, or the environment, in Class 45.^[5]

EGM also alleges rights in the common law marks CYBERHEROES, CYBERHERO, and CYBERHERO LEAGUE ADVENTURE SERIES,^[6] which it alleges are used with various interactive educational, entertainment, and social networking services, particularly providing web-based games and toys, that encourage the user to use the Internet to help others.^[7]

In its Answer, Cyberman denies the salient allegations of the Notice of Opposition and asserts seven affirmative defenses.^[8] Cyberman's sixth affirmative defense asserts that the '427 proceeding is barred as the term CYBERHERO is generic and EGM's attempts to broaden the scope of its mark by ignoring this clear limitation constitutes

3

unclean hands.^[9] However, in its brief, Cyberman limits its genericness argument to the other opposition proceeding^[10] (as discussed in more detail herein below), so it is deemed waived in the '427 proceeding. As the remainder of the asserted affirmative defenses were not pursued, they are not before us. Alcatraz Media, 107 U.S.P.Q.2d at 1753 n.6.

In the second proceeding, Opposition No. 91253845 (the "'845 proceeding"), Cyberman opposes EGM's application to register one of the common law marks EGM asserted in the '427 proceeding: the CYBERHERO mark (in standard characters).^[11] Although in the first opposition proceeding, EGM alleged common law rights in the CYBERHERO mark with certain services,^[12] its involved application seeks registration of the CYBERHERO mark for the following goods:

downloadable video game programs; downloadable electronic game software for cellular telephones; downloadable computer game software via a global computer network and wireless devices, in Class 09; and

toys, namely game cards or tokens for use with downloadable video game programs; cases for play accessories; protective carrying cases specially adapted for hand-held video game systems; hand-held games with liquid crystal displays; hand-held units for playing electronic games, in Class 28.

4

Cyberman opposes registration of the CYBERHERO mark on the following grounds: (1) likelihood of confusion with Cyberman's CYBERHERO ADVENTURES DEFENDERS OF THE DIGITAL UNIVERSE mark under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) (which is the previously discussed involved application of the '427 proceeding),^[13] (2) likelihood of confusion with Cyberman's common law mark CYBERHERO,^[14] and (3) that the CYBERHERO mark is generic and therefore "cannot be protected by any law".^[15]

In its Answer, EGM denies the salient allegations and affirmatively pleads that EGM is the senior user of the CYBERHERO mark^[16] and that it owns a registration for the CYBERHERO LEAGUE mark.^[17] Additionally, EGM alleges three affirmative defenses but only one was advanced in its briefing, i.e., that Cyberman is not the senior user of the term CYBERHERO.^[18] Consequently, the other two affirmative defenses are deemed waived. Harry Winston Inc. v. Bruce Winston Gem Corp., 111 U.S.P.Q.2d 1419, 1422 n.7 (TTAB 2014).

5

By Order dated September 29, 2020, the opposition proceedings were consolidated.^[19]

Both parties filed briefs in their respective positions as both plaintiff and defendant in these consolidated proceedings. In addition, counsel for both parties appeared at the oral hearing.

Each party in the position of plaintiff bears the burden of proving (i) its entitlement to bring a statutory cause of action, and (ii) the elements of its § 2(d) claim. See Jansen Enters. Inc. v. Rind, 85 U.S.P.Q.2d 1104, 1107 (TTAB 2007). In the '845 proceeding, to prevail on its additional claim of genericness, Cyberman bears the burden of proving that the CYBERHERO term is generic when considered in light of the identification of goods in EGM's application. Having considered the evidentiary record, each party's arguments and applicable authorities, as explained below, we find that neither party has carried its burden and dismiss each of the oppositions.

I. Motion to Strike

Before we consider the merits of each case, we first address some evidentiary matters.

Cyberman attached to its trial brief an appendix of evidence.^[20] EGM moved to strike the appendix, which it referred to in its motion as "exhibits," arguing that the exhibits were not properly made of record during Cyberman's trial period.^[21]

6

Consequently, EGM argues, all of the exhibits attached to Cyberman's brief should be stricken and should not be considered by the Board.^[22] Additionally, EGM argues that "[a]s the exhibits are improper as evidence, the Board should also not consider any arguments in Applicant's Trial Brief that are based on this Evidence."^[23] In support of its position, EGM points to § 539 of the Trademark Trial and Appeal Board Manual of Procedure (2022) (TBMP), which states that "any portions of the brief that are found by the Board to be improper will be disregarded."^[24]

Cyberman opposes the motion, arguing that EGM's motion is improper to the extent that it requests that some documents, which are duplicative of documents that are already part of the record, be stricken.^[25] This includes, for example, evidence that was disclosed to EGM as part of Cyberman's pretrial disclosures.^[26] Consequently, Cyberman argues - at a minimum - these documents are of record and should not be stricken.^[27]

Cyberman also argues that the motion to strike has "no ground to stand on to the extent it requests that unspecified portions of the Trial Brief should be stricken."^[28]

7

Continuing, Cyberman argues that § 539 of the TBMP, as cited by EGM, further states that "'when a brief on the case has been regularly filed, the Board generally will not strike the brief, or any portion thereof, upon motion by an adverse party that simply objects to the contents thereof.'"^[29] Cyberman argues that a motion to strike a brief is only appropriate when the brief is not timely filed, exceeds the permissible page length, or violates formatting requirements as specified in Trademark Rule § 2.128(b), 37 C.F.R. § 2.128(b), none of which are present here.^[30] Instead of moving to strike the brief, if EGM wished to object to arguments contained in Cyberman's brief, Cyberman argues, EGM should have filed a responsive brief - not move to strike Cyberman's brief.^[31] Consequently, Cyberman argues, EGM's motion to strike should be denied.

The TBMP is clear that, with the exception of a proper request for judicial notice, evidence may not be submitted with a brief.^[32] Evidentiary material attached to a brief can be given no consideration unless it is properly made of record during the testimony period of the offering party.^[33] Consequently, Cyberman's arguments that it made certain evidence of record by attaching the evidence to its pretrial disclosures is not persuasive. We find that the appendix attached to Cyberman's brief contains evidence that was not filed in compliance with the rules of practice governing inter

8

partes proceedings and therefore grant EGM's motion to strike to the extent that it requests that we strike the appendix. See Hole In 1 Drinks, Inc. v. Lajtay, 2020 U.S.P.Q.2d 10020, *3-4 (TTAB 2020) (exhibits attached to brief stricken); The Maytag Co. v. Luskin's, Inc., 228 U.S.P.Q. 747, 747-48 n.5 (TTAB 1986) (collection of twenty-nine registrations listed in appendix to brief not considered because not in compliance with rules of practice).

However, we deny EGM's motion to the extent that it requests us to strike Cyberman's brief itself. While the brief is not stricken, we note that we accord no evidentiary value or consideration to any factual assertions made by Cyberman in its brief that are not supported by competent evidence in the record. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 U.S.P.Q.2d...