throbber

`
`
`
`THIS OPINION IS NOT A
`PRECEDENT OF THE TTAB
`
`Mailed: June 30, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`Primerica, Inc.
`v.
`How Money Works, LLC
`_____
`
`Cancellation No. 92071945
`_____
`
`Sabina Vayner of Greenberg Traurig LLP and William H. Brewster of Kilpatrick
`Townsend & Stockton LLP for Primerica, Inc.
`
`
`Thomas M. Williams of Barack Ferrazzano Kirschbaum & Nagelberg LLP and
`Kimberly A. Scouller of Jade Law Offices of Kim Scouller, LLC
`for How Money Works, LLC.
`
`
`
`
`Before Bergsman, Goodman, and Lynch,
`Administrative Trademark Judges.
`
`_____
`
`
`Opinion by Bergsman, Administrative Trademark Judge:
`
`How Money Works, LLC (“Respondent”) is the owner of Registration No. 5157937
`
`for the mark HOW MONEY WORKS, in standard character form, on the Principal
`
`Register for “advertising, marketing and promotion services in the field of financial
`
`services,” in International Class 35.1
`
`
`1 Registered March 7, 2017, based on application Serial No. 87020832 filed on May 1, 2016.
`
` Citations to the record and briefs reference TTABVUE, the Board’s online docket system.
`See, e.g., New Era Cap Co., Inc. v. Pro Era, LLC, 2020 USPQ2d 10596, *2 n.1 (TTAB 2020).
`
`

`

`Cancellation No. 92071945
`
`Primerica, Inc. (“Petitioner”) filed a Petition for Cancellation under Section 2(d) of
`
`the Trademark Act, 15 U.S.C. § 1052(d), alleging use of the mark HOW MONEY
`
`WORKS “since at least as early as March 1990 in connection with various financial
`
`services, including but not limited to financial education and information services;
`
`financial consulting and advisory services; marketing and advertising services in the
`
`field of finance; and research services in the field of finance.”2
`
`Petitioner also alleges that the HOW MONEY WORKS mark has a “high degree
`
`of distinctiveness.”
`
`4. Because of the high degree of distinctiveness of the HOW
`MONEY WORKS Mark, the length of time and extent to
`which Primerica has used the HOW MONEY WORKS
`Mark, the substantial trading area in which the HOW
`MONEY WORKS Mark is used, and the high degree of
`consumer recognition of the HOW MONEY WORKS Mark,
`the HOW MONEY WORKS Mark is a well-known and
`strong trademark, deserving of a broad scope of legal
`protection.3
`
`In addition, Petitioner alleges that Respondent’s registration for the mark HOW
`
`MONEY WORKS is void ab initio on the ground of non-use because Respondent does
`
`not render its purported “advertising, marketing and promotion services in the field
`
`of financial services” for the benefit of others.4
`
`In its Amended Answer, Respondent admits that Thomas Mathews, a Member
`
`and Manager of Respondent “was an independent contractor sales representative for
`
`
`2 Amended Petition for Cancellation ¶ 2 (16 TTABVUE 6-7).
`
`3 Id. at ¶ 4 (16 TTABVUE 7).
`
`4 Id. at ¶¶ 37-46 (16 TTABVUE 12-14).
`
`- 2 -
`
`

`

`Cancellation No. 92071945
`
`[Petitioner’s] predecessor-in-interest, A.L. Williams & Associates, until early 1990,5
`
`and that Respondent first used its HOW MONEY WORKS mark for “advertising,
`
`marketing and promotion services in the field of financial services” as of May 6, 2016,6
`
`but denies the salient remaining allegations in the Amended Petition for
`
`Cancellation.
`
`Respondent also pleaded, as an affirmative defense, that “Petitioner’s claims are
`
`barred by the equitable defense of laches.”7
`
`I. Preliminary Issues
`
`A. Deposition mini-pages are not permitted.
`
`Respondent introduced counter designations from the Thomas Mathews, George
`
`Horner, and Stephen Siebold discovery depositions and excerpts from the Danny
`
`Woodward discovery deposition in miniscript form. “The deposition transcript must
`
`be submitted in full-sized format (one page per sheet), not condensed (multiple pages
`
`per sheet).” Trademark Rule 2.123(g)(1), 37 C.F.R. § 2.123(g)(1). While we will
`
`consider deposition excerpts in the prohibited miniscript form, we advise counsel to
`
`familiarize themselves with the Trademark Rules of Practice in Title 37 of the Code
`
`of Federal Regulations.
`
`
`5 Amended Answer ¶¶ 10 and 11 (19 TTABVUE 4).
`
`6 Id. at ¶ 36 (19 TTABVUE 8).
`
`7 Id. at ¶ 1 (19 TTABVUE 11).
`
`- 3 -
`
`

`

`Cancellation No. 92071945
`
`B. Over designation of testimony and evidence as confidential.
`
`The parties grossly over designated testimony and other evidence as confidential.
`
`Pursuant to Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g), “[t]he Board may treat as
`
`not confidential that material which cannot reasonably be considered confidential,
`
`notwithstanding a designation as such by a party.” Accordingly, we treat only trade
`
`secret and commercially sensitive information as confidential.
`
`II. Evidentiary Issues
`
`Respondent objects on the basis of improper rebuttal to the online articles and
`
`social media posts Petitioner introduced “to rebut Respondent’s testimony and other
`
`evidence concerning Respondent’s asserted ‘lack of knowledge of [Petitioner’s] . . . use
`
`of HOW MONEY WORKS.’”8
`
`Petitioner argues that the online articles and social media posts rebut Thomas
`
`Mathews’ testimony that Respondent was unaware of Petitioner’s use of HOW
`
`MONEY WORKS as a mark prior to Respondent’s adoption and first use of the HOW
`
`MONEY WORKS mark.9
`
`Petitioner expressly alleges that Respondent knew about Petitioner’s use of HOW
`
`MONEY WORKS before Respondent adopted and used the mark.
`
`14. Because [Petitioner] adopted and began using the HOW
`MONEY WORKS Mark in 1990, Mr. Mathews had direct
`knowledge of [Petitioner’s] rights in this mark as of the
`date of its first use by [Petitioner].
`
`
`8 Respondent’s Brief, Appendix A (81 TTABVUE 57) (citing 74 TTABVUE 9-46).
`
`9 Petitioner’s Rebuttal Brief, Appendix A (82 TTABVUE 29).
`
`- 4 -
`
`

`

`Cancellation No. 92071945
`
`15. Furthermore, because Mr. Mathews is the founder of
`both WealthWave and Respondent, Respondent’s
`predecessor-in-interest
`(WealthWave)
`had
`actual
`knowledge of [Petitioner] and its HOW MONEY WORKS
`Mark prior to selecting and adopting the infringing HOW
`MONEY WORKS mark.
`
`16. Respondent’s predecessor-in-interest (WealthWave)
`also had actual knowledge of [Petitioner] and its HOW
`MONEY WORKS Mark prior to filing the Application that
`matured into the Registration.
`
`17. Respondent’s predecessor-in-interest (WealthWave)
`also had actual knowledge of [Petitioner] and its HOW
`MONEY WORKS Mark prior to commencing use of the
`infringing HOW MONEY WORKS mark in interstate
`commerce.10
`
`The online articles and social media posts at issue relate to facts Petitioner alleged
`
`in its Amended Petitioner for Cancellation and, therefore, are part of Petitioner’s
`
`case-in-chief and should have been introduced during its initial trial period. We
`
`sustain Respondent’s objection to the online articles and social media posts and give
`
`them no consideration.
`
`Likewise, we sustain Respondent’s objection to the Danny Woodward Rebuttal
`
`Testimony Declaration ¶ 7 regarding Petitioner’s use of HOW MONEY WORKS to
`
`teach its independent representatives how to use the HOW MONEY WORKS
`
`educational materials and services to teach consumers and potential future team
`
`members.11 This testimony should have been introduced as part of Petitioner’s case-
`
`in-chief.
`
`
`10 Amended Petition for Cancellation (16 TTABVUE 8-9).
`
`11 Woodward Rebuttal Testimony Decl. ¶ 7 (76 TTABVUE 3-4).
`
`- 5 -
`
`

`

`Cancellation No. 92071945
`
`Respondent objects to the Danny Woodward Rebuttal Testimony Declaration in
`
`its entirety as improper rebuttal. However, with the exception of Paragraph No. 7,
`
`discussed above, we find that the Woodward rebuttal testimony declaration explained
`
`or clarified mischaracterizations Thomas Mathews made about Petitioner’s
`
`predecessor-in-interest and business model. In addition, Woodward addressed factual
`
`issues related to Respondent’s laches affirmative defense that Petitioner was not
`
`required to address until Respondent introduced testimony and evidence regarding
`
`the affirmative defense.
`
`We overrule Respondent’s objection to the Danny Woodward Rebuttal Testimony
`
`Declaration in total.
`
`With respect to Respondent’s remaining objections, none of the other evidence
`
`sought to be excluded is outcome determinative. Given this fact, coupled with the
`
`number of objections, we see no compelling reason to discuss the specific objections.
`
`Suffice it to say, we have considered all of the testimony and exhibits submitted and
`
`not otherwise excluded. In doing so, we have kept in mind the various objections
`
`raised by Respondent and we have accorded whatever probative value the subject
`
`testimony and evidence merit.
`
`III. The Record
`
`The record includes the pleadings, and pursuant to Trademark Rule 2.122(b),
`
`37 C.F.R. § 2.122(b), Respondent’s registration file.
`
`The parties stipulated that “all documents produced by either party pursuant to
`
`Rule 34 of the Federal Rules of Civil Procedure during the discovery phase of this
`
`- 6 -
`
`

`

`Cancellation No. 92071945
`
`proceeding are true and accurate copies, are authenticated for purposes of this
`
`cancellation proceeding, and will therefore be deemed as properly made of record to
`
`the extent any such documents are introduced as part of either party’s testimony
`
`evidence or pursuant to a Notice of Reliance.”12
`
`The parties introduced the following testimony and other evidence:
`
`A. Petitioner’s testimony and evidence.
`
`1. Notice of reliance on Respondent’s responses to Petitioner’s first
`set of interrogatories;13
`
`2. Notice of reliance on Respondent’s amended responses to
`Petitioner’s first set of interrogatories;14
`
`3. Notice of reliance on the discovery deposition of Thomas Mathews,
`founder, Member and Manager of Respondent;15
`
`4. Notice of reliance on the discovery deposition of George Horner, co-
`owner of Respondent;16
`
`
`
`
`12 27 TTABVUE.
`
`13 20 TTABVUE 6-19.
`
`14 20 TTABVUE 21-24.
`
`15 36 TTABVUE. The Board posted the portions of the Mathews discovery deposition the
`parties designated confidential at 21 TTABVUE.
`
`Because Petitioner introduced the entire discovery deposition, Respondent did not have to
`designate counter designations of the Mathews discovery deposition in a separate notice of
`reliance. 70 TTABVUE 27-26. “When evidence has been made of record by one party in
`accordance with these rules, it may be referred to by any party for any purpose permitted by
`the Federal Rules of Evidence.” Trademark Rule 2.122 (a), 37 C.F.R. § 2.122(a).
`
`16 23 TTABVUE. The Board posted the portions of the Horner discovery deposition the parties
`designated confidential at 24 TTABVUE.
`
`Because Petitioner introduced the entire discovery deposition, Respondent did not have to
`designate counter designations of the Horner discovery deposition in a separate notice of
`reliance. 70 TTABVUE 38-42.
`
`- 7 -
`
`

`

`Cancellation No. 92071945
`
`5. Notice of reliance on the discovery deposition of Stephen Siebold, a
`Member Director of Respondent;17
`
`6.
`
`Testimony Declaration of Danny Woodward, Petitioner’s
`Executive Vice President
`and Creative Director
`–
`Communications;18 and
`
`7. Testimony Declaration of Bunny Sandefur Howell, Petitioner’s
`Assistant General Counsel, Privacy & Technology;19
`
`B. Respondent’s testimony and evidence.
`
`1. Notice of reliance on Petitioner’s responses to Respondent’s
`document request Nos. 21, 23, 36 and 40;20
`
`2. Notice of reliance on Petitioner’s responses to Respondent’s
`interrogatory Nos. 18, 21, 23, 27, 28, 29, 30, and 31;21
`
`3. Notice of reliance on excerpts from the discovery deposition of
`Danny Woodward;22
`
`4. Notice of reliance on copies of Petitioner’s HOW MONEY WORKS
`applications pending in the USPTO along with USPTO Office
`Actions refusing to register Petitioner’s marks;23
`
`
`
`
`17 25 TTABVUE. The Board posted the portions of the Siebold discovery deposition the parties
`designated confidential at 26 TTABVUE.
`
`Because Petitioner introduced the entire discovery deposition, Respondent did not have to
`designate counter designations of the Siebold discovery deposition in a separate notice of
`reliance. 70 TTABVUE 44-51.
`
`18 30-32 TTABVUE. The Board posted the portions of the Woodward Testimony Declaration
`Petitioner designated confidential at 37 TTABVUE.
`
`19 38 TTABVUE.
`
`20 68 TTABVUE 14-26. 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). However, because of the parties’ stipulation,
`Petitioner’s responses to Respondent’s request for production of documents are of record.
`
`21 68 TTABVUE 31-47.
`
`22 58 TTABVUE 52-200 (improperly designated confidential).
`
`23 69 TTABVUE 111-254.
`
`- 8 -
`
`

`

`Cancellation No. 92071945
`
`5. Notice of reliance on copies of third-party registrations and
`applications, including the specimen of use, if available, for marks
`containing the term “How Money Works”;24
`
`6. Notice of reliance on the pleadings and an order relating to
`Petitioner’s civil action filed against Respondent in the federal
`district court for the Northern District of Georgia based on its use
`of Respondent’s Mark, captioned as Primerica, Inc. v. How Money
`Works, LLC et. al, Case No. 21-CV-01613-ELR (N.D. Ga.);25
`
`7. Notice of reliance on copies of internet materials consisting of web
`pages downloaded from Petitioner’s website on July 18, 2020
`relating to its use of Petitioner’s mark;26
`
`8. Notice of reliance on copies of third-party Internet materials;27
`
`9.
`
`Testimony Declaration of Thomas Mathews;28
`
`10. Testimony Declaration of George Horner;29 and
`
`
`
`
`
`
`
`
`
`11. Testimony Declaration of Stephen Siebold.30
`
`
`C. Petitioner’s rebuttal testimony.31
`
`
`
`
`
`
`
`
`24 69 TTABVUE 256-267.
`
`25 69 TTABVUE 169-363.
`
`26 69 TTABVUE 366-380.
`
`27 70 TTABVUE 4-25.
`
`28 72 TTABVUE. The Board posted the portions of the Mathews Declaration Petitioner
`designated confidential at 60-63 TTABVUE.
`
`Mathews Declaration Exhibit 2 is a video file and Exhibit 20 is a DVD file.
`
`29 71 TTABVUE. The Board posted the portions of the Horner Declaration Petitioner
`designated confidential at 65 TTABVUE.
`
`30 73 TTABVUE. The Board posted the portions of the Seibold Declaration Petitioner
`designated confidential at 64 TTABVUE.
`
`31 Petitioner designated portions of the Mathews discovery deposition as rebuttal. As noted
`above, because that deposition has been introduced in its entirety, either party may rely on
`it for any purpose permitted by the Federal Rules of Evidence. Trademark Rule 2.122 (a),
`37 C.F.R. § 2.122(a).
`
`- 9 -
`
`

`

`Cancellation No. 92071945
`
`Petitioner introduced the rebuttal testimony declaration of Danny Woodward.32
`
`IV. Entitlement to a Statutory Cause of Action
`
`A plaintiff’s entitlement to invoke a statutory cause of action for opposition or
`
`cancellation is a necessary element in every inter partes case. Chutter, Inc. v. Great
`
`Mgmt. Grp., LLC, 20201 USPQ2d 1001, at *10 (TTAB 2021) (citing Corcamore, LLC
`
`v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *6-7 (Fed. Cir. 2020), cert.
`
`denied, 141 S. Ct. 2671 (2021)). To establish entitlement to a statutory cause of action
`
`under Trademark Act Section 14, 15 U.S.C., § 1064, a plaintiff must demonstrate “an
`
`interest falling within the zone of interests protected by the statute and … proximate
`
`causation.” Corcamore, 2020 USPQ2d 11277, at *4 (citing Lexmark Int’l, Inc. v. Static
`
`Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067-70 (2014)).33 Stated
`
`another way, a plaintiff is entitled to bring a statutory cause of action by
`
`demonstrating a real interest in the proceeding and a reasonable belief of damage.
`
`Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370,
`
`2020 USPQ2d 10837, at *3 (Fed. Cir. 2020), cert. denied, 142 S. Ct. 82 (2021); see also
`
`Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,
`
`1062 (Fed. Cir. 2014).
`
`
`32 76 TTABVUE.
`
`33 Our decisions have previously analyzed the requirements of Trademark Act Sections 13
`and 14, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this inquiry as
`entitlement to a statutory cause of action. Despite the change in nomenclature, our prior
`decisions and those of the Federal Circuit interpreting Trademark Act Sections 13 and 14
`remain applicable. Spanishtown Enters., Inc. v. Transcend Res., Inc., 2020 USPQ2d 11388,
`at *2 (TTAB 2020).
`
`- 10 -
`
`

`

`Cancellation No. 92071945
`
` There is “no meaningful, substantive difference between the analytical
`
`frameworks expressed in Lexmark and Empresa Cubana.” Corcamore, 2020 USPQ2d
`
`11277 at *4. Thus, “a party that demonstrates a real interest in cancelling a
`
`trademark under [Trademark Act Section 14, 15 U.S.C.] § 1064 has demonstrated an
`
`interest falling within the zone of interests protected by [the Trademark Act] .…
`
`Similarly, a party that demonstrates a reasonable belief of damage by the registration
`
`of a trademark demonstrates proximate causation within the context of § 1064.”
`
`Corcamore, 2020 USPQ2d 11277 at *7.
`
`Danny Woodward, Petitioner’s Executive Vice President and Creative Director –
`
`Communications, testified to the following:
`
`● Since early 1990, Petitioner’s predecessor-in-interest, A.L. Williams, offered
`
`educational seminars on finance-related topics, including print materials, using
`
`HOW MONEY WORKS through its independent sales force.34
`
`● Since 2001, Petitioner regularly published and distributed HOW MONEY
`
`WORKS branded publications and, since 2008, it has published and distributed
`
`electronic versions of the same.35
`
`● “[S]ince at least 2004, [Petitioner] and its independent sales representatives
`
`have used the HOW MONEY WORKS Mark in connection with a variety of
`
`
`34 Woodward Testimony Decl. ¶¶ 9-10 and Exhibits 1-2 (30 TTABVUE 4 and 19-45).
`Woodward Testimony Decl. Exhibit 1 has a 1990 copyright notice. (30 TTABVUE 29).
`
`35 Woodward Decl. Testimony ¶ 23 and Exhibits 6-18 (30 TTABVUE 7-8 and 59-375 and
`31 TTABVUE 19-149).
`
`- 11 -
`
`

`

`Cancellation No. 92071945
`
`educational services, providing finance and financial management-related seminars,
`
`classes, workshops, and trainings to the general public.”36
`
`Danny Woodward’s testimony that Petitioner has used HOW MONEY WORKS,
`
`which it asserts is identical to Respondent’s mark, in connection with educational
`
`publications and services in the field of finance and financial management, proves
`
`Petitioner has an interest falling within the zone of interests protected by the statute.
`
`In addition, Petitioner has a reasonable belief in damage that is proximately
`
`caused by registration of the mark because Petitioner’s likelihood of confusion claim
`
`is not
`
`frivolous. See Lipton Indus., Inc. v. Ralston Purina Co., 607 F.2d
`
`1024, 213 USPQ 185, 189 (CCPA 1982) (plaintiff may establish standing by proving
`
`a real commercial interest in its own marks and a reasonable belief that it would be
`
`damaged
`
`(e.g.,
`
`a
`
`claim
`
`of
`
`likelihood
`
`of confusion that
`
`is
`
`not
`
`wholly without merit)); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020,
`
`1022 (TTAB 2009) (“Petitioner has established his common-law rights in the mark
`
`DESIGNED2SELL, and has thereby established his standing to bring this
`
`proceeding.”); Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112-18 (TTAB
`
`2009) (testimony that opposer uses its mark “is sufficient to support opposer's
`
`allegations of a reasonable belief that it would be damaged ...” where opposer alleged
`
`
`36 Woodward Testimony Decl. ¶ 29 and Exhibits 31-34 (30 TTABVUE 9-10 and 32 TTABVUE
`23-36 and 37 TTABVUE 30-100).
`
`Exhibit 32 (32 TTABVUE 23-36) does not display HOW MONEY WORKS.
`
`Exhibit 33 does not display HOW MONEY WORKS as a trademark or service mark.
`Petitioner uses HOW MONEY WORKS descriptively: “We teach people HOW MONEY
`WORKSsm.” 37 TTABVUE 46 and 51.
`
`- 12 -
`
`

`

`Cancellation No. 92071945
`
`likelihood of confusion); CPC Int’l, Inc. v. Seven-Up Co., 218 USPQ 379, 380 (TTAB
`
`1983) (“[O]pposer established its standing to raise the issue [of nonuse] by proving
`
`that its assertion of likelihood of confusion was not wholly without merit.”).
`
`Petitioner has established its entitlement to bring this cancellation proceeding.
`
`Once a plaintiff proves an entitlement to a statutory cause of action on one ground,
`
`it has the right to assert any other grounds in an opposition or cancellation
`
`proceeding. See Hole In 1 Drinks, Inc. v. Michael Lajtay, 2020 USPQ2d 10020, at *3
`
`(TTAB 2020) (once standing shown on one ground, plaintiff has right to assert any
`
`other ground in proceeding); Poly-America, L.P. v. Illinois Tool Works Inc.,
`
`124 USPQ2d 1508, 1512 (TTAB 2017) (if petitioner can show standing on the ground
`
`of functionality, it can assert any other grounds, including abandonment); Azeka
`
`Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1479 (TTAB 2017) (standing established
`
`based on surname claim sufficient to establish standing for any other ground).
`
`V. Priority
`
`Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), permits cancellation based
`
`on ownership of “a mark or trade name previously used in the United States . . . and
`
`not abandoned.” Thus, we first consider whether Petitioner has established its
`
`priority of use, a necessary element of any claim under Section 2(d).
`
`In determining priority, we bear in mind that “a presumption of validity attaches
`
`to” Respondent’s involved registration, and Petitioner, the alleged prior user, bears
`
`the burden of proving its claim of priority by a preponderance of the evidence. West
`
`Florida Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1662 (Fed.
`
`- 13 -
`
`

`

`Cancellation No. 92071945
`
`Cir. 1994); see also Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d
`
`1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989); Kohler Co. v. Baldwin Hardware Corp.,
`
`82 USPQ2d 1100, 1105-06 (TTAB 2007).
`
`Under Section 7 of the Trademark Act, parties are entitled to rely upon the filing
`
`dates of applications underlying the pleaded and subject registrations for purposes of
`
`establishing their constructive use dates. 15 U.S.C. §1057(c); Larami Corp. v. Talk to
`
`Me Programs, Inc., 36 USPQ2d 1840, 1844 (TTAB 1995) (parties may rely on the
`
`constructive use (filing) dates for purposes of priority). Accordingly, Respondent may
`
`rely on its registration for the limited purpose of proving that its mark was in use as
`
`of the application filing date (May 1, 2016). As noted above, Respondent admitted
`
`that its date of first use was May 6, 2016.37 Therefore, Respondent’s priority date is
`
`May 1, 2016.38
`
`Because Petitioner does not own a federal trademark registration, it must prove
`
`priority through common law use of its HOW MONEY WORKS mark. Petitioner
`
`introduced the following testimony and evidence:
`
`● In early 1990, Petitioner’s predecessor-in-interest, A.L. Williams offered
`
`educational seminars on finance-related topics, including print materials, using
`
`
`37 Amended Answer ¶ 36 (19 TTABVUE 8). See also Respondent’s response to Petitioner’s
`Interrogatory No. 7 (20 TTABVUE 10).
`
`38 Respondent’s Brief, p. 26 (81 TTABVUE 34) (Respondent concedes that its priority date is
`May 1, 2016, the filing date of its underlying application).
`
`- 14 -
`
`

`

`Cancellation No. 92071945
`
`HOW MONEY WORKS through its independent sales force.39 The cover from
`
`Woodward Testimony Decl. Exhibit 1 is reproduced below:
`
`
`
`● Since 2001, Petitioner regularly published and distributed HOW MONEY
`
`WORKS branded publications and, since 2008, it has published and distributed
`
`electronic versions of the same.40 We reproduce below a webpage from Petitioner’s
`
`website (primerica.com) (August 10, 2012) displaying the HOW MONEY WORKS
`
`mark:41
`
`
`39 Woodward Testimony Decl. ¶¶ 9-10 and Exhibits 1-2 (30 TTABVUE 4 and 19-45).
`Woodward Testimony Decl. Exhibit 1 has a 1990 copyright notice. (30 TTABVUE 29).
`
`40 Woodward Decl. Testimony ¶ 23 and Exhibits 6-18 (30 TTABVUE 7-8 and 59-375 and
`31 TTABVUE 19-149).
`
`41 Woodward Testimony Decl. Exhibit 65 (32 TTABVUE 91).
`
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`Cancellation No. 92071945
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`
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` ● Since 2005,Petitioner has published and distributed both hard copies and
`
`electronic copies HOW MONEY WORKS FOR KIDS, “an educational publication that
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`assists parents with teaching kids about various financial concepts.”42
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`● Since 2001, Petitioner has provided a Spanish version of HOW MONEY WORKS
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`and, since 2005, a Spanish version of HOW MONEY WORKS FOR KIDS. Both are
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`available in electronic versions.43
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`● “[S]ince at least 2004, [Petitioner] and its independent sales representatives
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`have used the HOW MONEY WORKS Mark in connection with a variety of
`
`
`42 Woodward Testimony Decl. ¶ 24 and Exhibits 19-23 (30 TTABVUE 8 and 31 TTABVUE
`151-274).
`
`43 Woodward Testimony Decl. ¶ 25 and Exhibits 24-27 (30 TTABVUE 8-9 and 31 TTABVUE
`276-397).
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`Cancellation No. 92071945
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`educational services, providing finance and financial management-related seminars,
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`classes, workshops, and trainings to the general public.”44
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`The only evidence that Petitioner used HOW MONEY WORKS to identify an
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`alleged advertising service is its advertising handbook it makes available to each of
`
`its individual independent sales representatives.45 Woodward did not testify when
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`Petitioner first made such advertising handbook available. Inasmuch as that
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`document is from 2018, it is not probative of a use date prior to Respondent’s May 1,
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`2016 filing date.
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`Woodward also testified that Petitioner’s predecessor-in-interest used HOW
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`MONEY WORKS in connection with marketing and advertising services by providing
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`its independent sales representative with information and print materials that the
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`representatives could then use to advertise life insurance and other financial services
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`to consumers.46 Woodward Testimony Exhibits 1 and 2 are educational materials that
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`Petitioner’s independent representatives use to advertise/market Petitioner’s
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`financial services. However, Petitioner does not use HOW MONEY WORKS to
`
`
`44 Woodward Testimony Decl. ¶ 29 and Exhibits 31-34 (30 TTABVUE 9-10 and 32 TTABVUE
`23-36 and 37 TTABVUE 30-100). Exhibits 31, 33 and 34 were improperly designated
`confidential. If they were used in connection with educational services, they were publicly
`distributed. In fact, Exhibit 34 (37 TTABVUE 64) states that it is “A Parent’s Guide.”
`
`Exhibit 32 (32 TTABVUE 23-36) does not display HOW MONEY WORKS.
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`Exhibit 33 does not display HOW MONEY WORKS as a trademark or service mark.
`Petitioner uses HOW MONEY WORKS descriptively: “We teach people HOW MONEY
`WORKSsm.” 37 TTABVUE 46 and 51.
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`45 Woodward Testimony Decl. ¶ 37 and Exhibit 51 (30 TTABVUE 12 and 37 TTABVUE 544-
`562) (Petitioner improperly designated Exhibit 51 confidential).
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`46 Woodward Test. Decl. ¶ 10 and Exhibits 1 and 2 (30 TTABVUE 4 and 19-45).
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`- 17 -
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`Cancellation No. 92071945
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`identify HOW MONEY WORKS brand advertising and marketing services and
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`Petitioner’s predecessor-in-interest did not use HOW MONEY WORKS to advertise
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`such services. The marks identify the written materials and the educational services.
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`We find that Petitioner used HOW MONEY WORKS to identify educational
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`materials and services in the field of finance prior to Respondent’s May 1, 2016 filing
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`date of its underlying application. There is no evidence that Petitioner used HOW
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`MONEY WORKS to identify a service for the benefit of others in the nature of
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`“advertising, marketing and promotion services in the field of financial services.”
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`Respondent, in its brief, argues to the contrary as to Petitioner’s priority.
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`Respondent contends that Petitioner does not have priority because Petitioner failed
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`to show trademark or service mark use. Specifically, Respondent asserts that
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`Petitioner uses HOW MONEY WORKS as a book title or descriptively.47 We reject
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`these arguments.
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`First, the evidence shows Petitioner has a series of HOW MONEY WORKS
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`publications, including HOW MONEY WORKS, HOW MONEY WORKS FOR KIDS
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`and the Spanish versions of those two titles.48 In addition, Petitioner uses HOW
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`MONEY WORKS in connection with a variety of educational services, providing
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`47 Respondent’s Brief, pp. 28-29 (81 TTABVUE 35-36).
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`48 Woodward Testimony Decl. Exhibits 1-2 and 6-27 (30 TTABVUE 19-45 and 59-375 and 31
`TTABVUE 19-397).
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`Wood Testimony Decl. Exhibits 6-8 are entitled HOW MONEY WORKS: Secrets To Financial
`Success. (30 TTABVUE 19-177).
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`Woodward Testimony Decl. Exhibits 9-18 are entitled HOW MONEY WORKS: A Common
`Sense Guide to Financial Success. (30 TTABVUE 179-375 and 31 TTABVUE 19-149).
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`- 18 -
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`Cancellation No. 92071945
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`finance and financial management-related seminars, classes, workshops, and
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`trainings to the general public.”49
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`Second, even if Petitioner sometimes uses HOW MONEY WORKS descriptively,
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`as discussed below in the strength of the mark section, it also uses HOW MONEY
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`WORKS as a mark to identify and distinguish its educational publications and its
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`educational services.
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`Finally, in finding Petitioner has made trademark and service mark use, we are
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`obviously aware that to establish priority, the petitioner must show proprietary
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`rights in a mark that causes a likelihood of confusion. Herbko Int’l, Inc. v. Kappa
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`Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) (explaining that
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`proprietary rights are necessary to show priority of use when petitioning for
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`cancellation under section 2(d)); Otto Roth & Co. v. Universal Foods Corp., 640 F.2d
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`1317, 209 USPQ 40, 43 (CCPA 1981) (“[T]he opposer must prove he has proprietary
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`rights in the term he relies upon to demonstrate likelihood of confusion as to source,
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`whether by ownership of a registration, prior use of a technical ‘trademark,’ prior use
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`in advertising, prior use as a trade name, or whatever other type of use may have
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`developed a trade identity.”). That is to say, a likelihood of confusion cannot be
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`recognized where Petitioner does not have a proprietary right in the term upon which
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`it relies to demonstrate likelihood of confusion as to source. Otto Roth, 209 USPQ at
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`40.
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`49 Woodward Testimony Decl. Exhibits 31 and 34 (37 TTABVUE 30-41 and 64-100).
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`

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`Cancellation No. 92071945
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`While it may seem obvious that Petitioner’s use of HOW MONEY WORKS in
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`connection with educational materials and services in connection with financial
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`education conveys the subject matter of Petitioner’s educational products and
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`activities, Respondent never raised that issue in its pleadings as an affirmative
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`defense, nor did Respondent make clear when it was deposing Danny Woodward that
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`it was challenging the distinctiveness of Petitioner’s mark so as to expressly put
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`Petitioner on notice. Applicant never filed a motion to amend its Answer to assert
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`that Petitioner’s HOW MONEY WORKS mark is merely descriptive and has not
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`acquired distinctiveness as an affirmative defense. While such a defense, if proved,
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`might warrant a different result in this case, it was never joined as an issue in this
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`proceeding and the issue was never tried, either expressly or implicitly, by the
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`parties.
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`For Respondent to raise the issue for the first time after trial during briefing
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`would constitute undue surprise for Petitioner who had no notice until well after trial
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`that the defense would be raised. See Wet Seal, Inc. v. FD Mgmt., Inc., 82 USPQ2d
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`1629, 1634 (TTAB 2007) (even though applicant denied the salient allegations in the
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`Notice of

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