Klique Car Club Inc. v. Klique E.L.A. Car Club
| Docket Number | Cancellation 92074470 |
| Decision Date | 12 April 2023 |
| Parties | Klique Car Club Inc. v. Klique E.L.A. Car Club |
| Court | Trademark Trial and Appeal Board |
This Opinion is Not a Precedent of the TTAB
Edward C. Schewe of Cotman IP Law Group, PLC for Klique Car Club Inc.
Zachary Levine of Wolk &Levine, LLP for Klique E.L.A. Car Club.
Before Larkin, Coggins, and English, Administrative Trademark Judges.
This case involves two car clubs in southern California vying for the same parking place on the Principal Register. Klique E.L.A. Car Club ("Respondent") currently occupies that coveted spot because it owns Registration No. 5730618 of the standard character mark KLIQUE ELA (ELA disclaimed) for "Association services, namely, promoting the interests of car enthusiasts and members of a car club who engage in community service, charity events, and car shows; Association services, namely, organizing chapters of a car club and promoting the interests of members thereof Club services, namely, promoting the interests of car enthusiasts and members of a car club who engage in community service, charity events, and car shows" in International Class 35.[1]
Klique Car Club Inc. ("Petitioner") has been denied a place on the Principal Register because of Respondent's registration and seeks to cancel it based on Petitioner's claimed prior use of the KLIQUE ELA mark and the existence of a likelihood of confusion, under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).
Petitioner and Respondent agree that only one of them can register the KLIQUE ELA mark, so "[t]his is a priority dispute." JNF LLC v. Harwood Int'l Inc., 2022 U.S.P.Q.2d 862, at *1 (TTAB 2022). The case is fully briefed.[2] We grant the Petition for Cancellation.
The record includes the pleadings,[3] the file history of Respondent's registration, by virtue of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), and the following declarations submitted by the parties:[4]
Respondent
Neither party cross-examined the other's witnesses.
Petitioner has asserted multiple evidentiary objections in its main brief. 20 TTABVUE 11-14. Respondent does not respond to these objections in its brief, but it objects to the Cardiel Declaration, 21 TTABVUE 3, and moves to reopen its trial period. Id. at 3-4. In its reply brief, Petitioner opposes Respondent's motion to reopen. 22 TTABVUE 2-4.
We turn first to Petitioner's objections. In ruling on them, we are not writing on an entirely clean slate. Petitioner previously moved for summary judgment on its Section 2(d) claim, and the motion involved some of the same evidence that is in the trial record. In denying the motion, the current panel ruled on several of the same objections that Petitioner reasserts in its trial brief against the same evidence. Absent changed circumstances, we will be guided by our evidentiary rulings on summary judgment to the extent that Petitioner's objections here are the same as those that it asserted against the same evidence that we addressed on summary judgment.
Petitioner asserts several objections to the October 2, 2017 declarations of Bernard Colacion and Armando Romo (18 TTABVUE 4-8). First, Petitioner claims that Mr. Colacion's declaration is hearsay because he died "in or around 2019." 20 TTABVUE 11 (citing Hess Rebuttal Decl. ¶ 3 (19 TTABVUE 3)). Second, Petitioner argues that both declarations are from another proceeding, and that Respondent never made a motion under Trademark Rule 2.122(f), 37 C.F.R. § 2.122(f), to use the declarations in this case. Id. at 11-12. Finally, Petitioner argues that both declarants lack personal knowledge with respect to various portions of their testimony and that their testimony constitutes inadmissible hearsay to the extent that it involves what they heard from others. Id. We sustain Petitioner's objections based on the fact that the declarations are from another proceeding, and do not reach the other objections.
Respondent submitted the same Colacion and Romo declarations in defense of Petitioner's motion for summary judgment. 15 TTABVUE 3 &n.5 (citing 13 TTABVUE 71-75). They were taken from Cancellation No. 92063670 noted above between Respondent and Jesse Frausto, who owned Registration No. 4948839 of the mark KLIQUE CAR CLUB for various car club services. In Cancellation No. 92063670, the Board cancelled Mr. Frausto's registration on the ground that he was not the owner of the KLIQUE CAR CLUB mark when he filed the use-based application that matured into the registration. 31 TTABVUE 10-11 (Cancellation No. 92063670).
On Petitioner's summary judgment motion in this case, the panel noted that the proper procedure for the admission of testimony from another proceeding was a motion under Trademark Rule 2.122(f), and that "Respondent's submission of the declarations from the prior Board proceeding and state court action was not accompanied by a motion to use such testimony," but that "[n]otwithstanding the absence of a motion, Petitioner does not object to introduction of these declarations on this basis and has even cited to some of them." 15 TTABVUE 4 (citation omitted). The panel concluded that "[b]ecause the parties have discussed these declarations and treated them as if they were of record, the Board finds that the parties have stipulated by their actions to introduction of the declarations for purposes of the motion." Id.
Petitioner gets a second bite at this apple, however, because the Colacion and Romo declarations were deemed stipulated into the record on summary judgment only "for purposes of the motion," id. (emphasis added), and the panel advised the parties in its order that "evidence submitted in support of or in opposition to a motion for summary judgment is of record only for consideration of that motion," and that "[t]o be considered at final hearing, any such evidence must be properly introduced during the appropriate trial period." Id. at 14 n.14. Petitioner and its counsel learned their lesson from the summary judgment motion, but Respondent and its counsel did not. At final hearing, Respondent has again failed to make a motion under Trademark Rule 2.122(f) for admission of the Colacion and Romo declarations, but this time Petitioner has "object[ed] to introduction of these declarations on this basis." Id. at 4. Because the Colacion and Romo declarations from Cancellation No. 92063670 have neither been admitted into the record by the Board on motion, nor stipulated into the record by Petitioner, we sustain Petitioner's objections to them and will give them no consideration in our decision.[6]
Petitioner also objects to Respondent's remaining two declarations of Eddie Pacheco and Jose Martinez on the grounds that both declarants lack personal knowledge as to matters before the time during which they were members of the Klique ELA car club, and that the portions of the Pacheco declaration regarding another car club lack relevance. 20 TTABVUE 13-14. Petitioner cites the testimony of its own witnesses that it claims contradicts the Pacheco and Martinez declarations. Id. at 14-15.
"Because a cancellation proceeding is akin to a bench trial, the Board is capable of assessing the proper evidentiary weight to be accorded the testimony and evidence, taking into account the imperfections surrounding the admissibility of such testimony and evidence." Rapid Inc. v. Hungry Marketplace, Inc., 2022 U.S.P.Q.2d 678, at *10 (TTAB 2022) (quoting Peterson v. Awschucks SC, LLC, 2020 U.S.P.Q.2d 11526, at *11-12 (TTAB 2020)).
Petitioner's objections directed to the relevance of Mr. Pacheco's testimony, and to conflicts between Mr. Pacheco's and Mr. Martinez's testimony and the testimony of Petitioner's own witnesses, are overruled, although we will keep Petitioner's "objections in mind as we review the evidence in this case." Id.
Petitioner's objections based on the declarants' lack of personal knowledge echo those asserted by Petitioner on its motion for summary judgment. Petitioner argued there, as it does here that "the declarants lack personal knowledge regarding the club's creation; that each declarant joined after the club's inception in 1964; and that statements regarding events from before the declarant joined the club are inadmissible hearsay." 15 TTABVUE 5 (footnote omitted). The panel sustained Petitioner's personal knowledge objections "regarding statements in the noted declarations about club events prior to when the declarant joined the club ...." Id. The panel noted that the "declarants could have testified to events prior to their membership had they provided sufficient foundational testimony to show that despite not having firsthand knowledge of those events, each declarant's activities or position with the club provided the declarant with sufficient personal knowledge of the facts related to those...
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