Hits From Bong, Inc. v. Mitchell

• Decision Date: 26 July 2017
• Docket Number: 91224802
• Parties: Hits From the Bong, Inc. v. Javen Mitchell
• Court: Trademark Trial and Appeal Board

Hits From the Bong, Inc. v. Javen Mitchell

No. 91224802

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

July 26, 2017

THIS OPINION IS NOT A PRECEDENT OF THE TTAB

James D. Weinberger and Emily Weiss of Fross Zelnick Lehrman &amp Zissu PC for Hits From the Bong, Inc.

Javen Mitchell, pro se.

Before Bergsman, Hightower, and Larkin, Administrative Trademark Judges.

OPINION

Larkin, Administrative Trademark Judge

Javen Mitchell ("Applicant"), appearing pro se seeks registration of the mark shown below on the Principal Register for "Entertainment services by a musical artist and producer, namely, musical composition for others and production of musical sound recordings; Entertainment services in the nature of recording, production and post-production services in the field of music; Entertainment services in the nature of live music performances Entertainment, namely, live music concerts; Entertainment, namely, live performances by musical bands; Music production services, " in International Class 41.^[1]

(IMAGE OMITTED)

Hits From the Bong, Inc. ("Opposer") has opposed registration on the basis of claims of priority and likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based upon Registration No. 4662290 of the mark DR. GREENTHUMB in standard characters for "musical sound recordings; downloadable musical sound recordings; audiovisual recordings featuring music and musical performances; downloadable audiovisual recordings featuring music and musical performances, " in International Class 9, ^[2] and alleged common law use of that mark and related marks; and a false suggestion of a connection with Applicant under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a).

Only Opposer submitted evidence and filed a brief.^[3] We sustain the opposition on the basis of Opposer's claim under Section 2(d), and do not reach Opposer's claim under Section 2(a).^[4]

I. Evidentiary Record

The record consists of the pleadings, the file history of Applicant's application, by operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), and two Notices of Reliance filed during Opposer's testimony period. 5 TTABVUE; 6 TTABVUE. Opposer also made its pleaded registration of record by attaching as Exhibit A to its Notice of Opposition a printout from the Patent and Trademark Office's Trademark Status & Document Retrieval database showing its current status and title. 1 TTABVUE 8-11. Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1).

Opposer filed its Notice of Opposition on November 1, 2015. 1 TTABVUE. Applicant's Answer, filed on December 14, 2015, 4 TTABVUE, denied most of the material allegations of the Notice of Opposition, but also contained amplifications of certain denials, 4 TTABVUE 3-5 (Answer ¶¶ 14, 16), the purported affirmative defenses of laches and unclean hands, 4 TTABVUE 5 (Answer ¶ 20), ^[5] and a number of paragraphs that did not admit or deny specific allegations in the Notice of Opposition, but made affirmative statements or indirectly referenced various allegations. 4 TTABVUE 5-6 (Answer ¶¶ 21-28).^[6]

Opposer filed two Notices of Reliance during its testimony period. The first made of record the entire file history of Opposer's pleaded Registration No. 4662290, 5 TTABVUE, while the second covered 25 exhibits. The first 15 exhibits are "Internet printouts, " which Opposer claims "are relevant to show the biography and history of Opposer's principal and the use, promotion, notoriety, and strength of Opposer's DR GREENTHUMB mark." 6 TTABVUE 2. The next four are "printed publications consisting of online and print articles, " which Opposer claims "are relevant to show the use, promotion, notoriety, and strength of Opposer's DR. GREENTHUMB mark." 6 TTABVUE 4. The final six are "Internet printouts from social media websites, which are relevant to show the use, promotion, notoriety, and strength of Opposer's DR. GREENTHUMB mark." 6 TTABVUE 4. We describe this evidence below.

Internet Printouts From Websites

• September 30, 2016 printouts from the website at wikipedia.com pertaining to the performer identified as "B-Real" (Ex. HB2), the song Dr. Greenthumb by the musical group Cypress Hill (Ex. HB3), the Cypress Hill group (Ex. HB4), and the album Skull & Bones by Cypress Hill (Ex. HB5), 6 TTABVUE 6-27;

• A September 30, 2016 printout of a biography of "B Real" from the website at billboard.com, 6 TTABVUE 28-31 (Ex. HB6);

• A September 30, 2016 printout from the website at azlyrics.com of the lyrics to the song Dr. Greenthumb, 6 TTABVUE 32-35 (Ex. HB7);

• September 30, 2016 printouts from the website at musixmatch.com of the lyrics of the songs Stix & Stones, Only When I'm High, Mile High, Dabs, Start a Fire, and Money Up on It, 6 TTABVUE 36-87 (Ex. HB8);

• A September 30, 2016 printout from the website at hotnewhiphop.com, 6 TTABVUE 88-90 (Ex. HB9);

• September 30, 2016 and October 14, 2016 printouts from the website at youtube.com, including from a YouTube channel designated BREALTV, 6 TTABVUE 91-102 (Ex. HB10);

• A September 30, 2016 printout from the website at dubcnn.com, 6 TTABVUE 103-107 (Ex. HB11);

• September 30, 2016 and October 5, 2016 printouts from the website at cypresshil.com, 6 TTABVUE 108-113 (Ex. HB12);

• October 5, 2016 printouts from the website at brealtv.com displaying screenshots from what are described as archived episodes of The Dr. Greenthumb Show, 6 TTABVUE 114-249 (Ex. HB13);

• An October 5, 2016 printout from the website at livemixtapes.com, 6 TTABVUE 250-253 (Ex. HB14);

• An October 5, 2016 printout from the website at soundcloud.com listing various songs, 6 TTABVUE 254-256 (Ex. HB15); and

• October 5, 2016 printouts from iTunes containing a biography of the group Cypress Hill, a listing of various songs, and thumbnail photographs from various music videos, 6 TTABVUE 257-263 (Ex. HB16).

Internet Printouts From Social Media Pages

• An October 5, 2016 printout from the website at facebook.com of the B-Real of Cypress Hill page, 6 TTABVUE 279-300 (Ex. HB21);

• October 14, 2016 printouts from the website at facebook.com of the Breal TV page, 6 TTABVUE 301-343 (Ex. HB22);

• An October 5, 2016 printout of the Breal account on the website at instagram.com, 6 TTABVUE 344-346 (Ex. HB23);

• An October 5, 2016 printout of the BREAL.TV account on the website at instagram.com, 6 TTABVUE 347-348 (Ex. HB24);

• An October 5, 2016 printout of the Dr. Greenthumb account on the website at twitter.com, 6 TTABVUE 349-372 (Ex. HB25); and

• An October 5, 2016 printout of the BREAL.TV account on the website at twitter.com, 6 TTABVUE 373-395 (Ex. HB26).

Printed Publications

• An August 25, 2016 article entitled Dave Grohl Kicks Out the Jams with Prophets of Rage in Toronto: Watch, from the website at billboard.com, 6 TTABVUE 264-269 (Ex. HB17);

• A May 1, 2016 article entitled Out Came the Sun, show goes on with a vengeance after weather delays, from the May 1, 2016 edition of the Commercial Appeal of Memphis, Tennessee, 6 TTABVUE 270-272 (Ex. HB18);

• An October 30, 2015 article entitled Popular 90s band Cypress Hill still hip and hopping, from University Wire, 6 TTABVUE 273-275 (Ex. HB19); and

• An October 29, 1998 article entitled Cypress Hill Soars Among the Clouds of Ganja-Rap, from the Boston Globe, 6 TTABVUE 276-278 (Ex. HB20).

Probative Value of the Internet Materials and Printed Publications

Before turning to our analysis of Opposer's Section 2(d) claim, we briefly address the limited probative value of the materials made of record under Opposer's Second Notice of Reliance.

Printed Publications

Rule 2.122(e)(1) of the Trademark Rules of Practice provides that "[p]rinted publications, such as books and periodicals, available to the general public in libraries or of general circulation among members of the public or that segment of the public which is relevant in a particular proceeding . . . may be introduced in evidence by filing a notice of reliance on the material being offered in accordance with paragraph (g) of this section. The notice of reliance shall specify the printed publication (including information sufficient to identify the source and the date of the publication) . . . and be accompanied by . . . the printed publication or a copy of the relevant portion thereof." 37 C.F.R. § 2.122(e)(1).

Opposer's Second Notice of Reliance satisfies the authentication requirements of Rule 2.122(e)(1) for admission of the printed publications under notice of reliance, but their probative value is limited. Opposer claims that they "are relevant to show the use, promotion, notoriety, and strength of Opposer's DR. GREENTHUMB mark, " 6 TTABVUE 4, but they are admissible under notice of reliance only for what they show on their faces, not to prove the truth of the statements contained in them. See, e.g., Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 U.S.P.Q.2d 1112, 1117 n.7 (TTAB 2009) ("A printed publication is only admissible for what it shows on its face; unless it falls within an exception to the hearsay rule it will not be considered to prove the truth of any matter stated in the publication."); L.C. Licensing Inc. v. Berman, 86 U.S.P.Q.2d 1883, 1887 (TTAB 2008) ("a newspaper article is probative only for what it shows on its face, not for the truth of the matters contained therein, unless a competent witness testifies to the truth of such matters."); see generally Trademark Board Manual of Procedure Section 704.08(a), n.6 and cases cited therein. Because the printed publications cannot be used to establish the truth of their contents, they are not competent evidence of "the use, promotion, notoriety, and strength of Opposer's DR. GREENTHUMB mark." 6 TTABVUE 4.

Internet Materials

Rule 2.122(e)(2) of the Trademark...