Nat'l Acad. of Television Arts & Scis. v. Kraferd
| Docket Number | 91231183 |
| Decision Date | 21 July 2023 |
| Parties | National Academy of Television Arts & Sciences and Academy of Television Arts and Sciences v. Kraferd |
| Court | Trademark Trial and Appeal Board |
Margaret A Esquenet, B. Brett Heavner, Mary Kate Brennan, and Daniel stringer of Finnegan, Henderson, Farabow, Garrett &Dunner, L.L.P. for National Academy of Television Arts &sciences and Academy of Television Arts and sciences.
Eric J. Goodman of Goodman Mooney LLP for Kraferd.
Before Bergsman, Larkin, and Lebow, Administrative Trademark Judges.
OPINIONLebow Administrative Trademark Judge:
Applicant Kraferd, applied to register EMMY as a standard character mark on the Principal Register for the following services in international Class 36:
insurance consulting in the field of health, disability and life insurance; insurance services, namely, insurance eligibility review and verification and consultation in the health, disability and life industry; insurance services namely, underwriting health, disability and life insurance; insurance services, namely, underwriting, issuance and administration of health, disability and life; insurance underwriting in the field of health, disability and life; Issuance of health, disability and life insurance; Claims administration services in the field of health insurance; Financial administration of health reimbursement arrangements; Health insurance underwriting; Health insurance cooperative services in the nature of underwriting, issuing and administration of health insurance; Underwriting insurance for prepaid health care.[1]
Opposers, the National Academy of Television Arts &Sciences ("NATAS") and the Academy of Television Arts and Sciences LLC ("ATAS"), have opposed the Application on the following grounds: (1) Applicant did not have a bona fide intent to use the applied-for mark in commerce when the Application was filed under 15 U.S.C. § 1051(b); (2) the wrong party was identified as the applicant under 15 U.S.C. § 1051(b); (3) likelihood of confusion with Opposers' EMMY and EMMYS mark under 15 U.S.C. § 1052(d); and (4) likelihood of dilution of Opposers' EMMY and EMMYS mark under 15 U.S.C. 1125(c).[2] Opposers claim ownership and prior use of the following marks registered on the Principal Register:
Applicant, in its answer, denied the salient allegations in the amended notice of opposition.[5] Following the close of testimony, the parties filed their respective trial briefs and an oral hearing was held. After careful consideration of the evidence of record and the parties' arguments, and for the reasons discussed below, we sustain the opposition based solely on Opposers' Section 1(b) ground of opposition.
The record consists of the pleadings, the file of the Application by operation of Trademark Rule 2.122(b)(1),[6] 37 C.F.R. § 2.122(b)(1), and additional evidence introduced by the parties.
o Printouts of status and title pages for Opposers' pleaded registrations, from the USPTO's Trademark Status &Document Retrieval ("TSDR") online database.[7]
o Notice of reliance on news articles discussing Opposers, the Emmy awards and Opposers' brand.[8]
o Notice of reliance on USPTO records in other inter partes proceeding brought against other applicants for EMMY-formative marks.[9]
o Notice of reliance on Applicant's responses to certain interrogatories and admission requests.[10]
o Notice of reliance on portions of the discovery deposition of Gabriel Garcia, Applicant's principal.[11]
o Testimony declaration of Scott Brandt, President of Westbridge Financial & Insurance Services and founder of the Academy Benefits Insurance Agency ("ABIA").[12]
o Testimony declaration of Adam Sharp, President and Chief Executive Officer of Opposer NATAS.[13]
o Testimony declaration of Heather Cochran, Chief Financial Officer and Executive Vice President of Opposer ATAS.[14]
o Testimony declaration of Jack Sussman, Executive Vice President of CBS Entertainment.[15]
o Testimony declaration of John Landgraf, Chairman of FX.[16]
o Testimony declaration of Karen Jones, Executive Vice President of HBO and HBO Max.[17]
o Testimony declaration of David Nevins, Chairman and Chief Executive Officer of Showtime Networks and ViacomCBS Premium Group.[18]
o Testimony declaration of Rick Rosen, Head of Television at William Morris Endeavor.[19]
o Testimony declaration of Laurel Whitcomb, Vice President of Marketing for Opposer, ATAS.[20]
o Rebuttal testimony declaration of Scott Brandt.[21]
o Rebuttal testimony declaration of Kevin Lam, a research assistant employed by the law firm that represents Opposers.[22]
o Notice of reliance[23] on Opposers' responses to Applicant's interrogatories and Opposers' responses to Applicant's admission requests Nos. 1-5;[24] copies of the filings of the Articles of Incorporation of Applicant and another company that Applicant's principal Gabriel Garcia owns called Emmy, Inc, from California's Secretary of State;[25] and copies of Applicant's EMMY logo, benefit plan overview, and presentation.[26]
o Testimony declaration of Gabriel Garcia, Applicant's principal.[27]
As noted above, Opposers assert in their amended notice of opposition that the Application is void ab initio because the wrong party was identified as the applicant. As they explain, "Applicant is not the true owner of the Application because it intended that one or more third-parties, not under Applicant's control, would use the applied-for mark in commerce in connection with the services identified in the Application at the time it filed said Application."[28] However, Opposers do not argue this claim in their main brief, so it is waived. See Swatch AG (Swatch SA) (Swatch Ltd.) v. M.Z. Berger &Co., 108 U.S.P.Q.2d 1463, 1465 n.3 (TTAB 2013) (), aff'd, 787 F.3d 1368, 114 U.S.P.Q.2d 1892 (Fed. Cir. 2015); Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 U.S.P.Q.2d 1750, 1753 (TTAB 2013) (), aff'd, 565 Fed.Appx. 900 (Fed. Cir. 2014) (mem.).[29]
Opposers object to Applicant's logo, benefit plan overview, and employee benefit plan presentation because they were introduced through a notice of reliance, which is "procedurally impermissible and prohibited by the Trademark Rules and TBMP."[30]"[O]nly certain self-authenticating documents are admissible through a notice of reliance," they explain.[31] Documents that are not self-authenticating, such as Applicant's logo, benefit plan overview, and employee benefit plan, "can be introduced into evidence only through the testimony of a person who can clearly and properly authenticate and identify the matter," but they were not so introduced here. "Accordingly, these materials cannot be considered by the Board."[32]
Procedurally, Opposers are correct. Wonderbread 5 v. Gilles, 115 U.S.P.Q.2d 1296, 1300 (TTAB 2015). Applicant's logo, benefit plan overview, and employee benefit plan presentation, are not the types of documents contemplated by the Rule.[33]
However, in this case, Applicant's notice of reliance was filed contemporaneously with its filing of the testimony declaration of Applicant's sole owner and principal, Gabriel Garcia, and his declaration identifies and authenticates each of the documents, cross-referencing them by exhibit number. Under the circumstances, we will consider the documents as if they were exhibits to the Garcia Declaration. Opposers' objection is overruled.[34]
Applicant objects to the August 12, 2019 "Declaration of Kevin Lam in Support of Opposers' Motion for Summary Judgment" that Opposers submitted with a notice of reliance during its case-in-chief on several grounds, including timeliness.[36] Mr. Lam is a research assistant employed by the law firm that represents Opposers. Applicant argues that this declaration "must be stricken for the . reason that it was executed outside of Opposers' trial period.[37] We agree.
Trademark Rule 2.121(a) provides that "[n]o testimony shall be taken or evidence presented except during the times...
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