THIS OPINION IS NOT A
`PRECEDENT OF THE TTAB
`
`
`Hearing: February 23, 2022
`
`
`Mailed: March 21, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`John P. Bertoldi
`v.
`Majestics Car Club, Inc.
`_____
`
`Cancellation No. 92065546
`_____
`
`
`Nedeen Nasser of Nasser Law,
`for John P. Bertoldi.
`
`Gordon E. Gray of the Gray Law Firm,
`for Majestics Car Club, Inc.
`
`
`Before Bergsman, Larkin, and Dunn,
`Administrative Trademark Judges.
`
`_____
`
`
`Opinion by Bergsman, Administrative Trademark Judge:
`
`Majestics Car Club, Inc. (“Respondent”) is the owner of record of a registration of
`
`the mark MAJESTICS and design, reproduced below, registered on the Principal
`
`Register for “car accessories, namely, car plaques,” in International Class 20.1
`
`
`1 Registration No. 4109381, registered March 6, 2012, from application Serial No. 77939505
`filed February 19, 2010, claiming October 2, 2011 as the date of first use anywhere and
`October 26, 2011 as the date of first use in commerce.
`
`

`

`Cancellation No. 92065546
`
`Respondent describes the mark as follows:
`
`
`
`The mark consists of the stylized word “majestics” with a
`stylized underline.
`
`Color is not claimed as feature of the mark.
`
`In his Petition for Cancellation, John P. Bertoldi (“Petitioner”) seeks cancellation
`
`of Respondent’s registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d),
`
`on the ground of likelihood of confusion with the mark MAJESTICS CC for car
`
`plaques and social club services and on the ground of fraud.
`
`In addition, in the ESTTA cover sheet filed with the Petition for Cancellation,
`
`Petitioner identified the following grounds for cancellation:2
`
`● Dilution by blurring;
`
`● Registrant is not the rightful owner of mark for identified goods; and
`
`● Deceptiveness.
`
`In its Answer, Respondent admitted that there is a likelihood of confusion between
`
`the marks of the parties but denied the remaining salient allegations of the Petition
`
`
`2 1 TTABVUE 1.
`
`The Board views the ESTTA filing form and the attached pleading as comprising a single
`document or paper being filed with the Board. Urock Network, LLC v. Sulpasso, 115 USPQ2d
`1409 n.2 (TTAB 2015); Hunt Control Sys. Inc. v. Koninklijke Philips Elec. N.V., 98 USPQ2d
`1558, 1561 (TTAB 2011); PPG Indus. Inc. v. Guardian Indus. Corp., 73 USPQ2d 1926,
`1928 (TTAB 2005).
`
`- 2 -
`
`

`

`Cancellation No. 92065546
`
`for Cancellation.3 As affirmative defenses, Respondent pleaded estoppel, laches and
`
`acquiescence and abandonment.
`
`I. Preliminary Issues
`
`A. Chain of title to the registration at issue.
`
`On February 19, 2010, Carlos Ramirez, an individual U.S. citizen, filed application
`
`Serial No. 77939505 to register the MAJESTICS mark at issue in this proceeding for
`
`car plaques. The registration issued to Mr. Ramirez on March 6, 2012.
`
`On March 6, 2017, Petitioner filed the Petition for Cancellation.
`
`On April 17, 2017, Respondent recorded the assignment of Registration No.
`
`4109381 for the MAJESTICS mark at issue in this proceeding to Respondent, a
`
`California corporation,4 from Carlos Ramirez. The assignment was recorded at reel
`
`6036, frame 0446. The assignment document is dated December 11, 2015. In the
`
`assignment document, Carlos Ramirez identified himself as the owner of the
`
`trademark.
`
`Because the assignment occurred prior to the commencement of the petition for
`
`cancellation, the Board substituted Respondent for Carlos Ramirez as the defendant.5
`
`B. Numerous objections.
`
`Respondent lodged hundreds of objections during the depositions of Petitioner’s
`
`witnesses, including the discovery deposition of Carlos Ramirez. In “Appendix A –
`
`
`3 Answer ¶ 21 (4 TTABVUE 4).
`
`4 Ramirez has served as Vice President of Respondent from 2010 to the present. 29 TTABVUE
`97.
`
`5 24 TTABVUE 2.
`
`- 3 -
`
`

`

`Cancellation No. 92065546
`
`Objections” attached to its brief, “Respondent maintains its objections from oral
`
`depositions and oral cross-examination depositions made of record.6
`
`A cancellation proceeding is akin to a bench trial, with the Board as the trier of
`
`fact, and the Board is capable of assessing the proper evidentiary weight to be
`
`accorded admissible testimony and evidence. As necessary and appropriate, we will
`
`point out any limitations in the evidence or otherwise note that we cannot rely on the
`
`evidence in the manner sought. We have considered all of the testimony and evidence
`
`properly introduced into the record. In doing so, we have kept in mind the various
`
`objections the parties have raised and we have accorded whatever probative value
`
`the subject testimony and evidence merit. See Luxco, Inc. v. Consejo Regulador del
`
`Tequila, A.C., 121 USPQ2d 1477, 1479 (TTAB 1017), appeal dismissed per
`
`stipulation, No. 17-00345 (E.D. Va. Aug. 24, 2017); U.S. Playing Card Co. v. Harbro,
`
`LLC, 81 USPQ2d 1537, 1540 (TTAB 2006). See also Poly-America, L.P. v. Ill. Tool
`
`Works Inc., 124 USPQ2d 1508, 1510 (TTAB 2017) (where the objections refer to
`
`probative value rather than admissibility and the evidence that is subject to the
`
`objections is not outcome determinative, “we choose not to make specific rulings on
`
`each and every objection.”).
`
`Because the Board is capable of assessing the proper evidentiary weight accorded
`
`admissible testimony and evidence, parties are discouraged from maintaining
`
`objections that are not outcome-determinative. Carefirst of Maryland Inc. v.
`
`FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1495 (TTAB 2005) (“At the oral
`
`
`6 81 TTABVUE 36.
`
`- 4 -
`
`

`

`Cancellation No. 92065546
`
`hearing, pursuant to the Board’s inquiry, counsel indicated that none of the objected-
`
`to evidence is outcome determinative. Several of the parties’ objections merely
`
`reiterate what was raised in their motions to strike, and, thus, these evidentiary
`
`issues have already been handled above in deciding the various motions. … The
`
`parties spent an inordinate amount of effort on evidentiary disputes. The
`
`gamesmanship during discovery, which then carried over into certain aspects of the
`
`trial phase, is breathtaking, and both sides are guilty of participating in this wasteful
`
`behavior.”). Cf. Spiritline Cruises LLC v. Tour Mgm’t Servs., Inc., 2020 USPQ2d
`
`48324, at *3 (TTAB 2020) (Board is “well equipped to assess the testimony and the
`
`degree of accuracy of any subsequent characterization of it without resorting to
`
`striking testimony or questions,” denying opposer’s objection and motion to strike a
`
`question of counsel, asked during a Rule 30(b)(6) discovery deposition, that had been
`
`submitted as trial evidence).
`
`In this regard, inasmuch as Respondent lodged hundreds of objections during the
`
`depositions and did not specify in the appendix which of those objections were
`
`meaningful and were being pursued, we consider the objections waived. Suffice it to
`
`say, Respondent cannot preserve objections by merely referring in a cursory manner
`
`to hundreds of objections and then leaving it to the Board to figure out on which
`
`objections we should rule. Cf. N.Y. Rehab. Care Mgmt., LLC v. NLRB, 506 F.3d 1070,
`
`1076 (D.C. Cir. 2007) (“It is not enough to merely mention a possible argument in the
`
`most skeletal way, leaving the court to do counsel’s work.”); Schneider v.
`
`Kissinger, 412 F.3d 190, 200 n.1 (D.C. Cir. 2005) (same); U.S. v. Zannino, 895 F.2d 1,
`
`- 5 -
`
`

`

`Cancellation No. 92065546
`
`17 (1st Cir. 1990) (“It is not enough merely to mention a possible argument in the
`
`most skeletal way, leaving the court to do counsel’s work, create the ossature for the
`
`argument, and put flesh on its bones. As we recently said in a closely analogous
`
`context: ‘Judges are not expected to be mind readers. Consequently, a litigant has an
`
`obligation ‘to spell out its arguments squarely and distinctly,’ or else forever hold its
`
`peace.’”).
`
`II. The Record
`
`The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
`
`37 C.F.R. § 2.122(b), Respondent’s registration file.7 The parties introduced the
`
`testimony and evidence listed below:
`
`A. Petitioner’s testimony and evidence.
`
`1. Carlos Ramirez’s responses to Petitioner’s requests for admission;8
`
`
`7 Because Respondent’s registration file is automatically of record by operation of the
`Trademark Rules of Practice, there was no need for Petitioner to re-introduce portions of it
`through a notice of reliance. 45 TTABVUE 5-40.
`
`8 29 TTABVUE 59-81. Petitioner identified Carlos Ramirez as the defendant when he filed
`the Petition for Cancellation because Ramirez was then the record owner of the registration
`at issue. Subsequently, Ramirez recorded the assignment of the registration which
`purportedly was executed prior to the filing of the Petition for Cancellation and, as noted
`above, the Board substituted Majestics Car Club, Inc. as Respondent.
`
`A party may introduce only an admission in response to a request for admission through a
`notice of reliance. Trademark Rule 2.120(k)(3)(i), 37 C.F.R. § 2.120(k)(3)(i). A denial or
`statement that the responding party cannot respond to the request does not establish the
`truth or falsity of the assertion, but rather leaves the matter for proof at trial. Life Zone Inc.
`v. Middleman Grp. Inc., 87 USPQ2d 1953, 1957 n.10 (TTAB 2008) (denials to requests for
`admission inadmissible because “unlike an admission (or a failure to respond which
`constitutes an admission), the denial of a request for admission establishes neither the truth
`nor the falsity of the assertion, but rather leaves the matter for proof at trial.”). Because
`Ramirez objected to each request on the grounds that he was not a party and made no
`substantive response, Ramirez’ responses include no admissions.
`
`- 6 -
`
`

`

`Cancellation No. 92065546
`
`2. Carlos Ramirez’s responses to Petitioner’s first set of interrogatories;9
`
`3. Carlos Ramirez’s responses to Petitioner’s request for production of
`
`documents;10
`
`4. Carlos Ramirez’s responses to Petitioner’s second set of interrogatories;11
`
`5. Notice of reliance on a copy of Registration No. 4566868 for the mark
`
`MAJESTICS and design (the same mark as the mark at issue here) for
`
`“social club services, namely, arranging, organizing, and hosting social
`
`events, get-togethers, and parties for club members,” in International Class
`
`41, printed from the USPTO Trademark Status and Document Retrieval
`
`system (TSDR) showing the current status and title to the registration;12
`
`6. Discovery deposition (January 3, 2019) of Carlos Ramirez;13
`
`7. Testimony deposition (October 8, 2019) of John P. Bertoldi, Petitioner;14
`
`
`9 29 TTABVUE 84-101.
`
`10 29 TTABVUE 104-132.
`
`Generally, responses to a request for production of documents introduced through a notice of
`reliance are admissible solely for purposes of showing that a party has stated that there are
`no responsive documents; documents produced in response to the requests are generally not
`admissible by notice of reliance alone. Trademark Rule 2.120(j)(3)(ii), 37 C.F.R.
`§ 2.120(j)(3)(ii); see also City Nat’l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI Inc.,
`106 USPQ2d 1668, 1674 n.10 (TTAB 2013) (responses to document production requests are
`admissible solely for purposes of showing that a party has stated that there are no responsive
`documents); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 n.7 (TTAB 2012) (written
`responses to document requests indicating that no documents exist may be submitted by
`notice of reliance). Accordingly, we consider Carlos Ramirez’s responses only for the limited
`purpose of showing that he did not have any responsive documents.
`
`11 29 TTABVUE 133-152.
`
`12 29 TTABVUE 155-162.
`
`13 30 TTABVUE. Petitioner introduced the deposition a second time at 45 TTABVUE 127-
`336.
`
`14 43 TTABVUE 3-178.
`
`- 7 -
`
`

`

`Cancellation No. 92065546
`
`8. Testimony deposition (October 1, 2019) of Carlos Ramirez;15
`
`9. Testimony deposition of Kim Anthony Romero;16
`
`10. Testimony deposition of Juan Luis Vasquez;17
`
`11. Testimony deposition of Fred Tapia;18
`
`12. Testimony deposition of Michael Wright;19
`
`13. Testimony declaration of Luis Alex Rodriguez;20
`
`14. Testimony declaration of Petitioner ;21
`
`15. Testimony declaration of Randall Gamble;22
`
`16. Testimony declaration of Reaon Thomas;23
`
`17. Testimony declaration of Richard Gomez;24
`
`
`15 43 TTABVUE 179-491.
`
`16 43 TTABVUE 492-638. Kim Anthony “Chino” Romero became a member of the Majestics
`Car Club in January 1982. Romero Testimony Dep., p. 11 (43 TTABVUE 501).
`
`17 43 TTABVUE 639-713. Juan Luis Vasquez was an original member of the Majestics Car
`Club. Vasquez Testimony Dep., pp. 9, 39, 64-65 (43 TTABVE 646, 676, and 701-702).
`
`18 43 TTABVUE 714-842. Fred Tapia was an original member of the Majestics Car Club.
`Tapia Testimony Dep., pp. 8-9 (43 TTABVUE 721-722).
`
`19 43 TTABVUE 843-973. Michael Wright joined the Majestics Car Club about two months
`after Petitioner founded it. Wright Testimony Decl. ¶ 8 (44 TTABVUE 53); Wright Testimony
`Dep., p. 8 (43 TTABVUE 850).
`
`20 44 TTABVUE 3-7. Luis Alex Rodriguez is the Director of the Arizona Super Show, an
`organization that conducts the Low Rider Magazine car show. Rodriguez Testimony Decl. ¶
`4 (44 TTABVUE 3).
`
`21 44 TTABVUE 9-20.
`
`22 44 TTABVUE 22-26. Randall Gamble was an original member of the Majestics Car Club.
`Gamble Testimony Decl. ¶ 8 (44 TTABVUE 22-23).
`
`23 44 TTABVUE 28-34. Reaon “China Man” Thomas is a member of the San Fernando Valley
`Chapter of the Majestics Car Club. Thomas Testimony Decl. ¶ 8 (44 TTABVUE 29).
`
`24 44 TTABVUE 36-42. Richard “Big Rich” Gomez is the President of the Los Angeles Chapter
`of the Majestics Car Club. Gomez Testimony Decl. ¶ 8 (44 TTABVUE 37).
`
`- 8 -
`
`

`

`Cancellation No. 92065546
`
`18. Testimony declaration of Wayne Day;25
`
`19. Testimony declaration of Michael Wright;26
`
`20. Testimony declaration of Darwin Wilson;27
`
`21. Notice of reliance on portions of the prosecution history file for Registration
`
`No. 4565858 for the mark MAJESTICS and design (the same as
`
`Respondent’s mark) registered for “social club services, namely, arranging,
`
`organizing, and hosting social events, get-togethers, and parties for club
`
`members,” in International Class 41, also filed by Carlos Ramirez and
`
`assigned to Respondent;28
`
`22. Notice of reliance on documents from Opposition No. 91196116 (Carlos
`
`Ramirez v. Frederick J. Staves);29
`
`23. Testimony deposition of Ernest Alonzo Lopez;30
`
`24. Petitioner’s rebuttal testimony declaration;31
`
`25. Petitioner’s rebuttal cross-examination testimony deposition;32 and
`
`
`25 44 TTABVUE 44-50. Wayne “Hauncho” Day is a Majestics Car Club member since 1978.
`Day Testimony Decl. ¶ 6 (44 TTABVUE 45).
`
`26 44 TTABVUE 52-60.
`
`27 44 TTABVUE 62-71. Darwin “D Mack” Wilson is Vice President of the Majestics Car Club
`Compton chapter. Wilson Testimony Decl. ¶¶ 10 and 34 (44 TTABVUE 63 and 66).
`
`28 45 TTABVUE 41-75.
`
`29 45 TTABVUE 75-126.
`
`30 49 TTABVUE 4-176. Ernest Alonzo Lopez is an original 1973 member of the Majestics Car
`Club. Lopez Testimony Dep., p. 8 (49 TTABVUE 11).
`
`31 76 TTABVUE 3-10.
`
`32 79 TTABVUE 2-80.
`
`- 9 -
`
`

`

`Cancellation No. 92065546
`
`26. Rebuttal testimony declaration of Fred Tapia.33
`
`B. Respondent’s testimony and evidence.
`
`1. Notice of reliance on excerpts from Petitioner’s discovery deposition
`
`(August 10, 2018);34
`
`2. Testimony declaration of Michael Cabral;35
`
`3. Cross-examination deposition of Michael Cabral;36
`
`4. Testimony declaration of Angel Santana;37
`
`5. Cross examination deposition of Angel Santana;38
`
`6. Testimony declaration of Carlos Ramirez;39
`
`7. Cross-examination deposition of Carlos Ramirez (February 23, 2021);40
`
`
`33 76 TTABVUE 11-17.
`
`34 55 TTABVUE 9-142. Respondent proffered numerous other documents in this notice of
`reliance (55 and 56 TTABVUE) to which Petitioner lodged an objection. We consider those
`documents in accordance with the Board’s January 21, 2021 order (66 TTABVUE).
`
`Respondent resubmitted the notice of reliance at 67 and 68 TTABVUE.
`
`35 57 TTABVUE. Michael Cabral was a co-founder of the Majestics Car Club in Santa Fe
`Springs, California in 1963. Cabral Testimony Decl. ¶ 2 (57 TTABVUE 2). This was a
`precursor of the Majestics Car Club formed by Petitioner. According to Petitioner the original
`Majestics Car Club dissolved after its members were drafted into the armed forces because
`of the Vietnam war. Petitioner’s Testimony Dep., pp. 10-11 (43 TTABVUE 11-12). Cabral
`became inactive in the precursor club in 1969 and has no recollection of what occurred after
`he left. Cabral Cross-examination Testimony Dep., pp. 18-21 (74 TTABVUE 22-25).
`
`36 74 TTABVUE 5-105.
`
`37 58 TTABVUE.
`
`38 75 TTABVUE 2-100. Angel Santana is Fred Tapia’s older brother. Santana Testimony Decl.
`¶ 3 (58 TTABVUE 2). Angel Santana was an original 1973 member of the Majestics Car Club.
`Id. at ¶ 4 (58 TTABVUE 3).
`
`39 59 TTABVUE.
`
`40 74 TTABVUE 106-249.
`
`- 10 -
`
`

`

`Cancellation No. 92065546
`
`8. Testimony declaration of Kim Anthony Romero;41 and
`
`9. Cross-examination deposition of Kim Anthony Romero.42
`
`III. Entitlement to a Statutory Cause of Action43
`
`Entitlement to a statutory cause of action, formerly referred to as “standing” by
`
`the Federal Circuit and the Board, is an element of the plaintiff’s case in every inter
`
`partes proceeding. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d
`
`11277 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 2671 (2021); Australian Therapeutic
`
`Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 (Fed. Cir.
`
`2020), reh’g en banc denied 981 F.3d 1083, 2020 USPQ2d 11438 (Fed. Cir. 2020), cert.
`
`denied, 142 S. Ct. 82 (2021); Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
`
`1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish entitlement to a
`
`statutory cause of action, a plaintiff must demonstrate: (i) an interest falling within
`
`the zone of interests protected by the statute and (ii) a reasonable belief in damage
`
`proximately caused by the registration of the mark. Corcamore, 2020 USPQ2d 11277
`
`at *4. See also Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d
`
`1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina
`
`Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982); Spanishtown Enters.,
`
`
`41 60 TTABVUE.
`
`42 74 TTABVUE 250-413.
`
`43 Even though we now refer to standing as entitlement to a statutory cause of action, our
`prior decisions and those of the Federal Circuit interpreting “standing” under §§ 1063 and
`1064 remain applicable. See Spanishtown Enters., Inc. v. Transcend Resources, Inc.,
`2020 USPQ2d 11388, at *2 (TTAB 2020).
`
`- 11 -
`
`

`

`Cancellation No. 92065546
`
`2020 USPQ2d 11388, at *1. To assess whether Petitioner proved his entitlement to a
`
`statutory cause of action, we must first discuss the record evidence in some detail.
`
`Petitioner founded the Majestics Car Club in 1973,44 and he became the first
`
`President of the club.45 Petitioner was the President of the car club until 1980 or
`
`1981.46 “In about 1982, Robert ‘Boy’ Elias took over as president of the SoCal chapter
`
`after [Petitioner].”47 “The Majestics car club is currently overseen by a national board
`
`consisting of members from various chapters.”48
`
`
`44 Petitioner’s Testimony Decl. ¶ 4 (44 TTABVUE 9); Petitioner’s Testimony Dep., p. 8 and
`Exhibit 3 (43 TTABVUE 9 and 134). Exhibit 3 is an email dated February 25, 2011, from
`Carlos Ramirez to Petitioner acknowledging Petitioner founded the club and was responsible
`for starting the chapters. See also the Testimony Decl. of Luis Alex Rodriguez ¶ 5 (44
`TTABVUE 4) (“It is generally known in the lowriding community that Majestics low rider car
`club was founded by [Petitioner].”); Testimony Decl. of Randall Gamble ¶¶ 8-9 (44 TTABVUE
`22-23) (Petitioner is the founding president of the Majestics car club); Testimony Decl. of
`Michael Wright ¶ 3 (44 TTABVUE 52) (Petitioner founded the Majestics car club in 1973);
`Testimony Dep. of Juan Luis Vasquez, pp. 9 and 39 (43 TTABVUE 646 and 676) (co-founded
`the Majestics Car Club with Petitioner in 1973); Testimony Dep. of Fred Tapia, pp. 8-9, 12
`and 15 (43 TTABVUE 721-722, 726, and 728) (met Petitioner at first meeting of the Majestics
`Car Club in 1973).
`
`45 Gamble Testimony Decl. ¶ 9 (29 TTABVUE 23); Wright Testimony Decl. ¶ 5 (29 TTABVUE
`50); Vasquez Testimony Dep., p. 14 (43 TTABVUE 651); Tapia Testimony Dep., p. 20
`(43 TTABVUE 733); Wright Testimony Dep., p. 7 (43 TTABVUE 849).
`
`46 Petitioner’s Testimony Dep., p. 22 (43 (TTABVUE 23) (“In or about 1981.”); Petitioner’s
`Testimony Decl. ¶ 7 (44 TTABVUE 10) (“From 1973 until about late 1980 or 1981, I was
`president of the Southern California Majestics.”).
`
`47 Wright Testimony Decl. ¶ 12 (44 TTABVUE 53). See also Ramirez Discovery Dep., pp. 27-
`28 (30 TTABVUE 11).
`
`The Majestics Car Club is a loose confederation of low-rider car clubs. The SoCal chapter is
`the “Mother chapter” because it was the first chapter and created the other chapters. The
`subsequent chapters manage their own affairs. Petitioner’s Testimony Dep., pp. 22-24
`(43 TTABVUE 23-25). See also Wright Testimony Decl. ¶¶ 6-7 and 10 (44 TTABVUE 53).
`
`48 Petitioner’s Testimony Decl. ¶ 16 (44 TTABVUE 10); Wilson Testimony Decl. ¶ 14 (44
`TTABVUE 63); “The Majestics car club is overseen by a national board which started around
`about 2013 and consisted of members from various chapters.” Wright Testimony Decl. ¶ 29
`(44 TTABVUE 56).
`
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`
`

`

`Cancellation No. 92065546
`
`Petitioner was active in the club from 1973 through late 1980 or 1981. Even
`
`though he was inactive from 1981 through 2010, Petitioner considers himself a
`
`lifetime member because he founded the Majestics Car Club.49 In view of his activities
`
`in founding and running the Majestics Car Club, Petitioner has become a central
`
`figure in low riding and has been called as the “Godfather of Low Riding.” For
`
`example,
`
`● “THE GODFATHER IS BACK,” Low Rider Happening Magazine (November
`
`1979) reads so far as pertinent, as follows:50
`
`Lil’ John Named to Promote N.L.R.A.
`
`Lil John, a onetime president of the Majestics who has
`since earned the title of the Godfather of low riding, has
`been appointed by the National Low Riders Association
`(N.L.R.A.) to promote low riding in the United States.
`
`The N.L.R.A. … that sanctions car shows and low rider car
`hops, feels Lil John is the ideal candidate to promote low
`riding because of his widespread respect among car clubs
`and independent low riders.51
`
`___
`
`Lil John is a successful businessman whose heart has
`always been in low riding. The proud winner of a long line
`of show cars that have won many trophies (Candy Girl and
`
`
`49 Petitioner’s Testimony Decl. ¶¶ 13 and 15 (44 TTABVUE 10); Petitioner’s Testimony Dep.,
`pp. 87, 91 (43 TTABVUE 88, 92) (after stepping away in 1980 or 1981, Petitioner became “an
`honorary member and I remain that.”). The record does not show that there is any formal
`“lifetime member” status conferred by the Majestics Car Club, but other witnesses confirmed
`that all members maintain an informal lifelong affiliation with the club. See also Testimony
`Dep. of Juan Luis Vasquez, p. 30 (43 TTABVUE 667) (a retired member of the Majestics Car
`Club is welcome at club events); Testimony Dep. of Fred Tapia, pp. 32-33 and 41
`(43 TTABVUE 745-46 and 754) (when you join the Majestics, you join for life).
`
`50 Petitioner’s Testimony Dep., p. 64 and Exhibit 9 (43 TTABVUE 65 and 148-150).
`
`51 Id. at TSDR 149.
`
`- 13 -
`
`

`

`Cancellation No. 92065546
`
`the Italian Stallion), Lil’ John originated the concept of
`franchising car clubs throughout the state.52
`
`● “Majestics,” Low Rider Magazine (May 1979), provides the following:53
`
`As the “Godfather,” (as Little John, the president of the
`Majestics is called by members) stated, “We are one big
`happy family and we plan to be all over California before
`we retire from low riding. When asked what was the reason
`for the organization, the Godfather said, “So people can see
`that not all low riders are a bunch of kids.”
`
`We reproduce below the photograph of Petitioner’s vehicle that the article featured:54
`
`● “low rider insights,” Low Rider Magazine (May 2002), provides:55
`
`Talking with the “Godfather of Lowriding” and the
`
`
`
`
`52 Id. at TSDR 150.
`
`53 Petitioner’s Testimony Dep., pp. 65-66 and Exhibit 10 (43 TTABVUE 66-67 and 151-154).
`
`54 Id. at 154.
`
`55 Petitioner’s Testimony Dep., pp. 69-71 and Exhibit 13 (43 TTABVUE 70-71 and 158-160).
`
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`

`Cancellation No. 92065546
`
`Founder of the Majestics Car Club.
`
`This month, we are proud to interview Giovanni “Little
`John” Bertoldi, the founder and former president of the
`Majestics Car Club. … I was a happy editor when my phone
`rang and it was Mr. Bertoldi, the man who brought the
`Majestics to life. … 56
`
`We reproduce below the photograph of Petitioner that the article featured:57
`
`
`56 Id. at 159.
`
`57 Id.
`
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`Cancellation No. 92065546
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`In addition, Street Machine Magazine (September 1978),58 and Chevy Power
`
`Magazine (May 1978),59 featured Petitioner’s car “Candy Girl” and referred to
`
`Petitioner as Li’l John Bertoldi, President of the Majestics Car Club of Southern
`
`California.
`
`In September 2016, the National Lowrider Hall of Fame inducted Petitioner.60 In
`
`November 2019, the National Lowrider Hall of Fame awarded Petitioner with the
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`Ford Dog Award, the highest achievement award in low riding.61
`
`As a founding and informal lifetime member of the unincorporated Majestics Car
`
`Club, Petitioner contends in his main brief that he is the true owner of the
`
`MAJESTICS trademark.62 Petitioner testified at his discovery deposition, however,
`
`that the MAJESTICS mark is owned by the club, not Petitioner:
`
`Q.
`
`Do you believe you personally own the Majestics
`trademark?
`
`A.
`
`I believe I’m the founder of the Majestics.
`
`Q.
`
`Do you believe you own the Majestics trademark?
`
`A.
`
`I don’t own the Majestics trademark.63
`
`
`
`___
`
`Q. When you say, “It’s my car club,” are you saying you
`own it?
`
`
`58 Petitioner’s Testimony Dep., pp. 60-61 and Exhibit 7 (43 TTABVUE 61-62 and 141-143).
`
`59 Petitioner’s Testimony Dep., pp. 62-63 and Exhibit 8 (43 TTABVUE 63-64 and 144-147).
`
`60 Petitioner’s Testimony Dep., pp. 72-73 and Exhibit 15 (43 TTABVUE 73-74 and 162).
`
`61 Petitioner’s Testimony Dep., pp. 73-74 and Exhibit 16 (43 TTABVUE 74-75 and 163).
`
`62 Petitioner’s Brief, p. 27 (80 TTABVUE 28).
`
`63 Petitioner’s Discovery Dep., p. 164 (55 TTABVUE 101) (emphasis added).
`
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`

`

`Cancellation No. 92065546
`
`A.
`
`No.64
`
`___
`
`Q.
`
`Do you control the quality of goods or services that
`Majestics Worldwide provides?
`
`A.
`
`The Majestics is doing that.
`
`Q.
`
`So you don’t provide any quality control?
`
`[Objection]
`
`A.
`
`Q.
`
`I don’t understand that.
`
`Do you review the goods they sell?
`
`A.
`
`No.
`
`Q.
`
`Do you review the services that they provide?
`
`A.
`
`No. They have a council for that.65
`
`Petitioner also testified that “I told Mr. Carlos Ramirez that no one person should
`
`try to own the trademark of a car club that was started in 1973 by me.”66
`
`Q.
`
`Do you find it interesting that that he told you that
`[Staves is trying to register the MAJESTICS mark
`to charge each chapter a membership fee]?
`
`___
`
`A.
`
`Yes.
`
`Q. Why?
`
`A.
`
`No one should be making money on the plaque or
`trademark. It’s -- it shouldn’t be owned by anyone.67
`
`
`64 Petitioner’s Discovery Dep., p. 34 (55 TTABVUE 23).
`
`65 Petitioner’s Discovery Dep., pp. 133-134 (55 TTABVUE 88-89).
`
`66 Petitioner’s Discovery Dep., p. 59 (55 TTABVUE 37).
`
`67 Petitioner’s Testimony Dep., pp. 34-35 (43 TTABVUE 35-36).
`
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`Cancellation No. 92065546
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`Petitioner also testified that “I don’t believe that anyone that’s applied for that
`
`trademark [MAJESTICS], Fred Stavos [sic] or Carlos Ramirez, have the right or any
`
`individual that applies for the trademark to own that trademark.”68
`
`Q. Who do you believe has the right to own or use the
`trademark?
`
`___
`
`A.
`
`The Majestics that started in 1973 and are still going
`45 years later.69
`
`Petitioner further testified that “[t]o my knowledge, no individual member of any
`
`chapter owns or controls the use of the MAJESTICS trademark.”70
`
`I’ve been very verbal throughout this opposition [sic] that
`no one person should own the Majestics stylized mark and
`that all Majestics and all chapters should own that mark
`that built the brand and built it over the last 40-some
`years.71
`
`___
`
`Again, I believe that myself and all the members or anyone
`that’s been a member of the Majestics Car Club and
`chapters own the plaque mark.72
`
`Many current and former members of the Majestics Car Club also similarly
`
`testified that “no individual member of any chapter owns or controls use of the
`
`
`68 Petitioner’s Testimony Dep., pp. 113-114 (43 TTABVUE 114-115). See also id. at pp. 86-87
`(43 TTABVUE 87-88) (Petitioner has “common rights” in the Majestics Car Club).
`
`69 Petitioner’s Testimony Dep., p. 114 (43 TTABVUE 115).
`
`70 Petitioner’s Testimony Decl. ¶ 24 (44 TTABVUE 11).
`
`71 Petitioner’s Rebuttal Testimony Cross-examination, p. 12 (79 TTABVUE 13).
`
`72 Id.
`
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`

`

`Cancellation No. 92065546
`
`MAJESTICS trademark.”73 Even Carlos Ramirez, the original registrant of the
`
`registered mark at issue, testified, in essence, that he owned the right to the
`
`MAJESTICS trademark for car plaques in common with all the member of the car
`
`club.74 Ramirez testified as follows:
`
`Q.
`
`Did you own the mark when it was used on the
`plaques in 1977?
`
`[Objection]
`
`Q.
`
`Did you believe you owned the plaques in general in
`1977?
`
`[Objection]
`
`A.
`
`Yes.
`
`Q.
`
`Did you believe that you had more right to own those
`plaques that the prior 20-some members or whoever
`owned the plaques before you?
`
`[Objection]
`
`A.
`
`I would say no.
`
`
`73 Tapia Testimony Decl. ¶ 30 (29 TTABVUE 13) (“[N]o individual member of any chapter
`owns or controls use of the MAJESTICS trademark. [It] is owned and used by the whole
`club.”); Gamble Testimony Decl. ¶ 22 (29 TTABVUE 24); Thomas Testimony Decl. ¶ 16 (44
`TTABVUE 30); Gomez Testimony Decl. ¶ 33 (44 TTABVUE 39); Day Testimony Decl. ¶ 6 (44
`TTABVUE 45); Wright Testimony Decl. ¶ 39 (44 TTABVUE 57); Wright Testimony Dep., p.
`93 (43 TTABVUE 935) (“So my opinion is that the Majestics Worldwide Organization’s name
`and trademark should be held by the members of the Majestics Organization.”); Vasquez
`Testimony Dep., pp. 29-30 (43 TTABVUE 666-667); Wilson Testimony Decl. ¶ 36 (44
`TTABVUE 66).
`
`74 Ramirez Discovery Dep., pp. 25-26 (30 TTABVUE 11). This testimony contradicts the
`testimony Ramirez gave later in the deposition when he claimed ownership of the mark but
`refused to explain why or how he was the owner. Id. at pp. 70-73 (30 TTABVUE 22-23).
`Subsequently, in a testimony deposition Ramirez testified that in his trademark application
`he stated that he has been using the mark since 1977 because he “was part of the club” and
`he “got permission from people [original members] from that era.” Ramirez Testimony Dep.,
`pp. 306-307 and 308 (43 TTABVUE 287-289). “And they agreed that [Ramirez] would get it
`in [his] personal name.” Ramirez Testimony Dep., p. 310 (43 TTABVUE 291).
`
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`

`

`Cancellation No. 92065546
`
`Q.
`
`No. So they probably had a greater right to those
`plaques than you did at that time, correct?
`
`[Objection]
`
`A.
`
`Yes.75
`
`In addition, Petitioner has testified to the following:
`
`● Once he stepped down as President of the Majestics Car Club in 1980 or 1981,
`
`he consulted for a year or two but stopped going to meetings, although he kept in
`
`touch with other members of the club;76 and
`
`● He did not sell any MAJESTICS branded