UNITED STATES PATENT AND
`TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
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`Mailed: March 25, 2016
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`Cancellation No. 92059305
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`MWR Holdings, LLC
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`v.
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`Theodore A. Stoner
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`Before Quinn, Zervas, and Bergsman,
`Administrative Trademark Judges.
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`By the Board:
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`This case comes up on cross-motions for summary judgment on the claim that the
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`application underlying the subject registration was void ab initio for nonuse prior to
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`registration and Respondent’s motion for summary judgment on the claims of fraud,
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`likelihood of confusion, and abandonment. The motions are fully briefed.
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`On February 10, 2006, Theodore A. Stoner (Respondent) filed an application based
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`on Trademark Act Section 1(b) to register the mark BONGO BI-LINGO BUDDY
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`(standard characters) for goods and services in International Classes 9, 16, 21, 25, 28,
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`and 41. On March 25, 2008, the notice of allowance issued, and Respondent obtained
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`two six-month extensions of time to file the statement of use, or until September 25,
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`2009. On September 1, 2009, Respondent filed his statement of use restricting the
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`DUNN
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`Cancellation No. 92059305
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`application to “entertainment in the nature of live theatrical performances by mixed
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`media of live characters, puppetry and animation for children; organizing cultural
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`events for children; education services, namely, providing professional training in the
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`field of bilingual learning” in International Class 41, and alleging June 8, 2004 as the
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`date of first use of the mark and June 18, 2008 as the date of first use of the mark in
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`commerce. On October 20, 2009, Registration No. 3700403 issued.
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`On June 5, 2014, MWR Holdings, LLC filed a petition to cancel Registration No.
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`3700403 on the grounds of priority of use and likelihood of confusion, and
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`abandonment. Discovery closed March 5, 2015. On May 21, 2015, the Board granted
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`as uncontested Petitioner’s motion to amend the petition to cancel to add the claims
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`of nonuse and fraud based on nonuse. Respondent’s answer denied the salient
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`allegations of the amended petition to cancel.
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`I.
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`Motion For Summary Judgment Moot As To Insufficient Fraud Claim
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`A decision on summary judgment necessarily requires a review of the operative
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`pleadings. Asian and Western Classics B.V. v. Selkow, 92 USPQ2d 1478, 1478 (TTAB
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`2009). If a claim or defense has not been properly pleaded, summary judgment cannot
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`be granted thereon. Blansett Pharmacal Co. v. Carmrick Laboratories Inc., 25
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`USPQ2d 1473, 1477 (TTAB 1992) (insufficient Morehouse defense); Intermed
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`Communications, Inc. v. Chaney, 197 USPQ 501, 503 n. 2 (TTAB 1977) (insufficient
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`nonuse claim). A motion for summary judgment is moot as to any claim or defense
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`which is legally insufficient. Asian and Western Classics B.V. v. Selkow, 92 USPQ2d
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`at 1480.
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`2
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`Cancellation No. 92059305
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`Upon review, the amended petition to cancel does not include a legally sufficient
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`claim of fraud. The amended petition to cancel alleges (13 TTABVUE Par. 15-18):
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`15. Had Stoner not filed a Statement of Use, the USPTO would not have issued
`the '403 Registration.
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`16. Upon information and belief, in making and submitting his Statement of
`Use, Stoner knowingly and intentionally made the misrepresentation to the
`USPTO that he was using the services listed in the '403 Registration in
`commerce, even though he was not.
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`17. Upon information and belief, Stoner was aware that the above
`misrepresentations were false at the time they were made.
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`18. Upon information and belief, Stoner made the statements in his Statement
`of Use with the intention that the USPTO would accept and rely on them and
`register the BONGO BILINGO BUDDY mark in connection with the services
`listed in the '403 Registration.
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`Fraud in procuring a trademark registration occurs when an applicant knowingly
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`makes false, material representations of fact in connection with his application. In re
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`Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009) (Bose). The Board
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`has applied Bose to require specific allegations of the necessary intent to deceive the
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`USPTO to claim fraud. See Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925,
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`1928 (TTAB 2014) (“the amended counterclaim neither generally alleges intent to
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`deceive the USPTO, nor pleads supporting facts from which we may reasonably infer
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`that Opposer intended to deceive the USPTO”). Pleadings of fraud “based on
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`information and belief” without allegations of specific facts upon which the belief is
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`reasonably based are insufficient. See NSM Res. Corp. v. Microsoft Corp., 113
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`USPQ2d 1029, 1034 (TTAB 2014) and Asian and Western Classics B.V. v. Lynne
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`Selkow, 92 USPQ2d at 1479. See also Exergen Corp. v. Wal-Mart Stores Inc., 575 F3d
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`3
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`Cancellation No. 92059305
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`1312, 91 USPQ2d 1656, 1670 (Fed. Cir. 2009) (patent infringement case discussing
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`when pleading on information and belief under Fed. R. Civ. P. 9(b) is permitted). The
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`fraud claim is legally insufficient inasmuch as it rests on “information and belief,”
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`and not the facts upon which the belief in Respondent’s fraudulent intent is
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`reasonably based. Bose Corp., 91 USPQ2d at 1942 (“fraud can only be found if there
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`is a willful intent to deceive”).
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`Accordingly, Respondent’s motion for summary judgment is moot as to the fraud
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`claim.
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`II. Motions for Summary Judgment on Remaining Claims
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`Summary judgment is an appropriate method of disposing of cases in which there
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`is no genuine dispute with respect to any material fact, thus leaving the case to be
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`resolved as a matter of law. See Fed. R. Civ. P. 56(c)(1). A party moving for summary
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`judgment has the burden of demonstrating the absence of any genuine dispute as to
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`a material fact, and that it is entitled to judgment as a matter of law. See Celotex
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`Corp. v. Catrett, 477 U.S. 317, 323 (1986). The evidence of record and all justifiable
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`inferences that may be drawn from the undisputed facts must be viewed in the light
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`most favorable to the non-moving party. See Lloyd’s Food Products Inc. v. Eli’s Inc.,
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`987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993). When cross-motions for summary
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`judgment are presented, the Board evaluates each motion on its own merits and
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`resolves all doubts and inferences against the party whose motion is being considered.
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`Mingus Constructors, Inc. v. United States, 812 F.2d 1387, 1390–91 (Fed. Cir. 1987).
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`a. Standing
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`4
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`Cancellation No. 92059305
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`Standing is a threshold issue that must be proven by a plaintiff in every inter
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`partes case. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed.
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`Cir. 1999). Petitioner pleads that Respondent’s registration was cited as a bar under
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`Trademark Act Sec. 2(d) to registration of Petitioner’s mark. While Petitioner
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`submitted no evidence to demonstrate its standing, Respondent submitted a copy of
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`the electronic file history for Petitioner’s application, including the Office action
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`refusing registration. 18 TTABVUE 415-434. Lipton Industries, Inc. v. Ralston
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`Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) (“to have standing in
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`this case, it would be sufficient that appellee prove that it filed an application and
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`that a rejection was made because of appellant’s registration.”). Accordingly,
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`Petitioner’s standing has been established by Respondent’s submission. See Toufigh
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`v. Persona Parfum, Inc., 95 USPQ2d 1872, 1874 (TTAB 2010) (“petitioner did not
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`submit a copy of the office action, nor did he testify about such refusal in his
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`testimony. If he had, this would have been sufficient to establish his standing.”).
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`b. Nonuse
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`Where, as here, the subject registration issued from an application based on
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`Respondent’s allegation of a bona fide intent to use, the nonuse claim requires proof
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`that Respondent did not use the mark with the services listed in the registration
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`within the time for filing its statement of use. Here, the statement of use filing date
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`was extended, and Board will consider evidence of use prior to the extended
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`statement of use filing date of September 25, 2009. See Embarcadero Technologies,
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`Inc. v. Delphix Corp., 117 USPQ2d 1518, 1526 (TTAB 2016). The use in commerce
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`5
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`Cancellation No. 92059305
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`requirement is met for service marks when a mark is “used or displayed in the sale
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`or advertising of services” and the services are “rendered in commerce.” Trademark
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`Act Sec. 45; Aycock Engineering, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301,
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`1305 (Fed. Cir. 2009) (“The registration of a mark that does not meet the use
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`requirement is void ab initio.”). A for-profit sale is not required; the use of marks in
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`conjunction with the rendering of free services still constitutes a “use in commerce”
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`under the Trademark Act. American Express Marketing & Development Corp. v.
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`Gilad Development Corp., 94 USPQ2d 1294, 1298 n.3 (TTAB 2010).
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`Petitioner contends that Respondent has admitted “the services serve only as an
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`advertising conduit for other goods sold by Stoner,” that Respondent cannot
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`demonstrate that the services have been the subject of separate sales, and that
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`Respondent can produce “no documents” to show that the mark was used in the sale
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`or advertising of the services. In support of its motion Petitioner submits copies of
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`Respondent’s other BONGO BI-LINGO BUDDY registrations for toys, clothing, and
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`entertainment media for children, and Respondent’s discovery responses, including
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`the following:
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`INTERROGATORY NO. 5:
`For each month from Registrant's date of first use of Registrant's Mark until
`the present, state the sales volume of services provided by Registrant under
`Registrant's Mark.
`ANSWER:
`Registrant does not have any sales figures relating to Registrant’s Services at
`issue in this proceeding as the International Class 41 services are offered to
`promote Registrant’s Mark in connection with Registrant’s other goods.
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`Respondent opposes the motion, contending that there is no admission in its discovery
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`responses; that “use in commerce” for registration purposes does not require
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`6
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`Cancellation No. 92059305
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`rendering services for profit; and that Respondent did produce documents showing
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`use of the mark.
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`The Board disagrees with Petitioner’s argument that Respondent’s discovery
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`response is analogous to an admission that Respondent does not have goods in trade.
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`A claim that goods are not “in trade” is a claim that goods are not independently
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`offered in commerce but are merely incidental to providing services. See Lens.com,
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`Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 103 USPQ2d 1672, 16765 (Fed. Cir. 2012)
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`(“an article does not qualify as a good in trade when that article is simply the conduit
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`through which the applicant renders services”) (citations omitted). Respondent’s
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`BONGO BI-LINGO BUDDY mark identifies a character, and is registered for, among
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`other things, children’s entertainment services. Respondent cites no case law, and the
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`Board is aware of none, for the proposition that entertainment services which also
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`promote the sale of merchandise are not services offered in commerce. Respondent’s
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`discovery response is not an admission that his services are not offered in commerce,
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`and Respondent may demonstrate the necessary use of the mark by showing that
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`BONGO BI-LINGO BUDDY entertainment services have been advertised and
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`rendered, whether or not the services are the subject of sales, and even though the
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`mark also is used on Respondent’s goods.1
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`1 Compare In re Fla. Cypress Gardens Inc., 208 USPQ 288 (TTAB 1980) (name CORKY THE
`CLOWN used on handbills found to function as a mark to identify live performances by a
`clown, where the mark was used to identify not just the character but also the act or
`entertainment service performed by the character); In re Folk, 160 USPQ 213 (TTAB 1968)
`(THE LOLLIPOP PRINCESS functions as a service mark for entertainment services,
`namely, telling children’s stories by radio broadcasting and personal appearances).
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`7
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`Cancellation No. 92059305
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`In support of his cross-motion for summary judgment on nonuse, Respondent
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`submits a status and title copy of the subject registration, his responses to
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`interrogatories and document requests, and documents produced in response to
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`discovery, which include the following documents:
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`Undated Advertisement submitted with September 1, 2009 statement of use:
`Bongo Bi-Lingo Buddy Join Bongo on his Musical Island-Hopping Adventures
`Around Bi-Lingo Bay! First 10 players will receive a free t-shirt! Friday June
`18th Time 10AM-11AM (18 TTABVUE 116)
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`Undated advertisement
`Bongo Bi-Lingo Buddy “Will you be my Bi-Lingo Buddy?” The Children’s
`Museum: Friday, 1212PM to 3PM for a Caribbean Bi-Lingual Adventure
`theatrical performances, Bi-Lingo matching game, coloring and facepainting!
`(18 TTABVUE 222)
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`Undated advertisement
`Join Bongo and his friends on an Island Hopping bilingual language learning
`Adventure Around Bi-Lingo Bay! Bongo Bi-Lingo Buddy Winter Park Library
`Thursday at 10:30AM 460 E. New England Ave. Winter Park, FL 32789 (18
`TTABVUE 225)
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`July 31, 2005 article from Denver Business Journal:
`Bongo’s live show, featuring 17 performers, debuted at the Cherry Creek Arts
`Festival during the July Fourth weekend…The idea of Bongo, whose full name
`is is BONGO BI-LINGO BUDDY comes from several trips Stoner took to Cuba
`in the late 1990s. (18 TTABVUE 139)
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`October 17, 2005 article from Orlando Business Journal
`Now, the Bongo Cats line will include not only the plush toy, but DVDs, CDs,
`books, an internet site where children can also interact with the characters
`and a live-performance show that will travel across the United States … To do
`that, Bongo the Bi-Lingo Buddy centers around the story of the cat and his
`friends… To kick off the concept, Stoner is bringing the Bongo Cats 30-minute
`interactive live performance show to Orlando, Tampa and Miami next summer.
`(18 TTABVUE 142-143).
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`Petitioner’s opposition to the cross-motion contends that Respondent’s documents
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`purportedly showing use are unsupported by testimony, lack vital details such as
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`8
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`Cancellation No. 92059305
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`when and where the advertisements appear, and do not demonstrate that the
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`servicess were rendered.2
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`After careful consideration of the record, the Board finds that neither party has
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`carried its burden of proof with respect to the nonuse claim. The Board finds that, at
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`a minimum, there is a genuine dispute as to whether Respondent was using the mark
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`in commerce with the listed services prior to the extended statement of use filing date
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`of September 25, 2009.
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`c. Abandonment
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`Section 45 of the Trademark Act states that “[a] mark shall be deemed to be
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`‘abandoned’ … [w]hen its use has been discontinued with intent not to resume such
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`use” and “‘Use’ of a mark means the bona fide use of such mark made in the ordinary
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`course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. 1127.
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`While the elements of proof for the claims of nonuse and abandonment differ,
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`Respondent supports its position on both by reliance on the same scant documents.
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`The Board finds that, at a minimum, there is a genuine dispute as to whether
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`2 With his reply brief, Respondent submits Respondent Theodore A. Stoner’s declaration
`averring, in part, “I have rendered the Stoner Services in connection with the BONGO BI-
`LINGO BUDDY mark for the last 11 years at various tradeshows, various children’s
`institutions (most recently summer of 2015), and festivals throughout several different states
`and regions of the United States and abroad.” Petitioner moves to strike this declaration,
`arguing that, if it had been submitted with Respondent’s cross-motion, Petitioner would have
`had the opportunity to seek discovery under Fed. R. Civ. P. 56(d), but such a motion now is
`untimely. See Trademark Rule 2.127(e)(1). The Board agrees. Petitioner’s motion to strike
`Respondent’s declaration is granted. The Board hastens to add that, in view of the dearth of
`detail in the declaration, consideration would not have changed the outcome of Respondent’s
`cross-motion.
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`9
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`Cancellation No. 92059305
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`Respondent has used the BONGO BI-LINGO BUDDY mark on the services listed in
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`the registration in the ordinary course of trade continuously since registration.
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`d. Likelihood of Confusion
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`Where the nonmoving party will bear the burden of proof at trial on a dispositive
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`issue, the moving party may discharge its burden by showing that there is an absence
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`of evidence to support the nonmoving party's case. Celotex Corp. v. Catrett, 477 U.S.
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`at 325; Copelands’ Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1298
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`(Fed. Cir. 1991). Here, Respondent contends that based on Petitioner’s discovery
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`responses, Petitioner will be unable to prove use prior to Respondent’s first use date
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`of June 8, 2004. Petitioner‘s opposition to the motion is supported by the declaration
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`of Petitioner’s Vice President and General Counsel Michael Shafir averring that the
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`BONGO BEAR mark has been used in connection with its entertainment services
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`since at least March 1, 2003. The Board finds that, at a minimum, there is a genuine
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`dispute as to whether Petitioner has prior proprietary rights in the BONGO BEAR
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`mark for entertainment services, and whether contemporaneous use with
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`Respondent’s mark BONGO BI-LINGO BUDDY in connection with his services
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`would be likely to cause confusion or mistake or to deceive consumers. See
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`Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735
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`(TTAB 2001).
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`In sum, the cross-motions for summary judgment on the claim that the application
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`underlying the subject registration was void ab initio for nonuse prior to registration
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`10
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`Cancellation No. 92059305
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`is denied, and Respondent’s motion for summary judgment on the claims of
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`abandonment and likelihood of confusion is denied.3
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`In view of the many factual disputes in this proceeding, the Board determines
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`that disposition by summary judgment is not appropriate. Accordingly, the parties
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`are barred from filing new motions for summary judgment and must proceed to trial.
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`III. Proceedings are Resumed
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`Petitioner is allowed until TEN DAYS from the mailing date of this order to file
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`an amended petition to cancel with a sufficient claim of fraud, failing which this
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`proceeding will go forward only as to the claims of nonuse, abandonment, and
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`likelihood of confusion. With respect to any amended pleading, Petitioner and its
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`counsel are reminded that under Rule 11 of the Federal Rules of Civil Procedure, they
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`are certifying that all claims and other legal contentions asserted therein are
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`warranted by existing law or by a nonfrivolous argument for the extension,
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`modification, or reversal of existing law. See Fed. R. Civ. P. 11.
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`Respondent is allowed until TEN DAYS from the date of service of any amended
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`petition to cancel to serve its answer.
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`Proceedings are resumed, and dates are reset below.
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`Discovery
`Plaintiff's Pretrial Disclosures
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures
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`Closed
`4/22/2016
`6/20/2016
`7/5/2016
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`3 Although we have only mentioned a few genuine disputes of material fact in this decision,
`this is not to say that this is all that would necessarily be at issue for trial. The parties should
`note that evidence submitted in support of or in opposition to a motion for summary judgment
`is of record only for consideration of that motion. Any such evidence to be considered at final
`hearing must be properly introduced in evidence during the appropriate trial period. See Levi
`Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).
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`11
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`Cancellation No. 92059305
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`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures
`Plaintiff's 15-day Rebuttal Period Ends
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`8/19/2016
`9/3/2016
`10/3/2016
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`In each instance, a copy of the transcript of testimony together with copies of
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`documentary exhibits, must be served on the adverse party within thirty days after
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`completion of the taking of testimony. Trademark Rule 2.l25.
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`Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An oral
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`hearing will be set only upon request filed as provided by Trademark Rule 2.l29.
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`12