Reid v. Monster, Inc.
| Decision Date | 26 January 2017 |
| Docket Number | Opposition 91218973 |
| Court | United States Patent and Trademark Office. United States Patent and Trademark Office, Trademark Trial and Appeal Board |
| Parties | Donald Reid v. Monster, Inc. |
THIS OPINION IS NOT A PRECEDENT OF THE TTAB
Wendy Peterson of Not Just Patents LLC for Donald Reid.
Andrew S. Mackay of Donahue Fitzgerald LLC for Monster, Inc.
Before Cataldo, Bergsman and Goodman, Administrative Trademark Judges.
Goodman, Administrative Trademark Judge.
Monster Inc., ("Applicant") filed an application to register the marks GO DJ (in standard characters) [1] GODJ (in standard characters), [2] and GODEEJAY (in standard characters)[3] all for "computer software and hardware for music mixing; audio and video cables; cases for consumer electronic products, namely, cases for audio speakers, mobile computers, and portable DJ equipment; audio speakers; headphones" in International Class 9.
Donald Reid opposes registration of Applicant's marks on the ground that Applicant lacks a bona fide intent to use the marks in commerce.
Applicant filed an answer in which it denied the salient allegations in the notice of opposition. Each party filed a trial brief and Opposer filed a reply brief. I. Record
The record includes the pleadings, and by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Applicant's application file. In addition, the parties introduced the following testimony and evidence listed below.
A. Opposer's Evidence.
Applicant's evidence.
II. Preliminary Issues
In the course of this proceeding, Applicant filed a withdrawal of application Serial No. 86047984 without Opposer's written consent. The Board entered judgment against Applicant on the claim relating to this application pursuant to Trademark Rule 2.135, 37 CFR § 2.135.
Opposer has objected to Applicant's reference in its trial brief to declaration testimony submitted by Applicant on summary judgment at 19 TTABVUE. Inasmuch as this evidence was not submitted during Applicant's trial period, the objection is sustained. Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 U.S.P.Q.2d 1464 (TTAB 1993).
Opposer also has objected to portions of Applicant's arguments in its trial brief as unsupported by evidence. We have accorded no evidentiary value or consideration to any unsupported factual statements made by Applicant in its brief, except to the extent that such statements may be considered admissions against interest. See TBMP §§ 704.06(a) and (b) (2017). See also Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 U.S.P.Q.2d 1323, 1328 (TTAB 2007) ().
Opposer objects to the testimony of Chang "Robin" Lee and accompanying exhibits based on hearsay and lack of personal knowledge and alternatively argues that, at a minimum, the testimony and evidence should be given little weight.
We overrule Opposer's objection to Mr. Lee's testimony. We find that Mr. Lee was competent to testify regarding the GO DJ/GODJ products. In 2013 Mr. Lee was the President of JD Sound and had as his primary responsibility the marketing and selling of a portable DJ product (PDJ). (36 TTABVUE 13). Mr. Lee sought and obtained a partnership with Applicant in connection with the portable DJ device in which JD Sound was the licensee and Applicant the licensor. (36 TTABVUE 12-13, 19). Early in the partnership, the portable DJ device was renamed GO DJ/GODJ/GO-DJ (hereinafter GO DJ) in conjunction with discussions between Applicant and JD Sound. (36 TTABVUE 17-18). Later, in 2014, Mr. Lee joined Applicant as Business Development Director, continuing to work on the GO DJ project (36 TTABVUE 10). In 2015, Mr. Lee was still working on the GO DJ project, but at a higher level, with two other individuals assigned to work on the project on a day-to-day basis. (36 TTABVUE 115).
As to Opposer's hearsay objections in connection with Mr. Lee's testimony, we have only considered non-hearsay statements and testimony where it has been demonstrated that Mr. Lee's testimony is based on his personal knowledge of the subject matter.[4] As to the exhibits that accompanied Mr. Lee's testimony, we find they are not hearsay as the testimony demonstrates that Mr. Lee had personal knowledge of the contents of these documents and was competent to testify as to the contents therein. Therefore, Opposer's hearsay objection as to these exhibits also is overruled. To the extent that Mr. Lee's testimony regarding the nature of any exhibit is based solely on hearsay, such testimony and the characterizations made regarding the exhibit have been given no consideration.
Opposer's, objection, to Applicant's alternative request, in its trial brief, to amend the application, is well taken. Applicant's alternative request to amend is denied as untimely. See Personnel Data Systems, Inc. v. Parameter Driven Software, Inc., 20 U.S.P.Q.2d 1863 (TTAB 1991) (defendant's motion to restrict identification of goods in involved registration, filed with brief on case, denied).
Applicant's objection on the basis of relevance to Opposer's submission under notice of reliance of Applicant's intent-to-use applications for other marks is overruled.
Opposer filed a notice of reliance indicating his intention to rely on unpleaded Registration No. 4669143 and unpleaded application Serial No. 86467434. Because Applicant did not object to the introduction of Opposer's unpleaded registration and application and because Applicant treated the registration and application as being of record by arguing in its brief on the case that substantively the registration and application should not be considered for purposes of Opposer's standing, we find that Opposer's reliance on the registration and application was tried by implied consent. We accordingly deem the pleadings to be amended to include Opposer's Registration No. 4669143 and application Serial No. 86467434. See Fed. R. Civ. P. 15(b); Boise Cascade Corp. v. Cascade Coach Co., 168 U.S.P.Q. 795, 797 (TTAB 1970) ("Generally speaking, there is an implied consent to contest an issue if there is no objection to the introduction of evidence on the unpleaded issue, as long as the adverse party was fairly informed that the evidence went to the unpleaded issue").
III. Standing
A threshold question in every Board inter partes case is whether the plaintiff has established standing. In a Board proceeding, the plaintiff is required to show that it has a "real interest"; that is, a "direct and personal stake, " in the outcome of the proceeding. See Ritchie v. Simpson, 170 F.3d 1092, 50 U.S.P.Q.2d 1023, 1025 (Fed. Cir. 1999); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 U.S.P.Q. 185, 189 (CCPA 1982).
To prove his standing, Opposer references his Registration No. 4699143 for GODJ and his application Serial No. 86467434 for GODDJ, which has been suspended because of Applicant's GODJ application.[5] (32 TTABVUE; 33 TTABVUE; 35 TTABVUE 10; 39 TTABVUE 10). Opposer further points to application Serial No. 86397296 and Registration No. 4699143 as having related services to Applicant's goods (music mixing and music listening). (32 TTABVUE; 33 TTABVUE; 35 TTABVUE 10).
Applicant argues that Opposer failed to prove damage with regard to his allegations in the notice of opposition relating to application Serial No. 86397296 since Applicant's applications were not cited as a bar to registration, and the application was published for opposition.[6] Applicant further argues that Opposer's later-filed applications (Serial No. 86467434 and Registration No. 4699143) have no impact on standing since they both were filed subsequent to the filing of the opposition.
Even assuming that Applicant is correct that application Serial No. 86397296 does not now provide a basis for standing although initially providing standing at the commencement of the proceeding, [7] we find that the filing of Opposer's application Serial No. 86467434 and the Office's action taken in regard to that application provides Opposer with standing. Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 U.S.P.Q.2d 1111, 1112 (TTAB 2010) (opposer's standing may be based on the Office's provisional refusal of opposer's application based on prior pending applications), citing Life Zone Inc. v. Middleman Group Inc., 87 U.S.P.Q.2d 1953, 1959 (TTAB 2008) (); see also Lipton Industries, Inc. v. Ralston Purina Co., 213 U.S.P.Q. at 189. Contrary to...
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