Antonio Canedo v. Mad Man Motor Sports, L.L.C. d/b/a Mad Man Motorsports

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 24, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Antonio Canedo

v.

Mad Man Motor Sports, L.L.C.
d/b/a Mad Man Motorsports
_____

Opposition No. 91218197
_____

William S. Bernheim of Bernheim Gutierrez and McCready,
for Antonio Canedo.

Charles E. Clos of Clos, Russell & Wirth, P.C.,
for Mad Man Motor Sports, L.L.C. d/b/a Mad Man Motorsports.
_____

Before Taylor, Greenbaum and Hudis,
Administrative Trademark Judges.

Opinion by Hudis, Administrative Trademark Judge:

Applicant, Mad Man Motor Sports, L.L.C. d/b/a Mad Man Motorsports (“MMM”)

seeks registration on the Principal Register of the mark PLAY’N FOR KEEPS (in
Opposition No. 91218197

standard characters) for “entertainment services, namely, performing and competing

in motor sports events” in International Class 41.1

Although not expressed in the most artful and clear manner, in his Amended

Notice of Opposition,2 Opposer, Anthony Canedo (“Canedo”), asserts a claim of

priority and likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C.

§ 1052(d).3 Canedo asserts his standing to oppose registration of the PLAY’N FOR

KEEPS mark to MMM, because (1) Canedo applied to register the same mark for

essentially the same services,4 and (2) Canedo’s service mark application was placed

in suspension pending the disposition of MMM’s application.5 Canedo further alleges

priority of rights in the PLAY’N FOR KEEPS mark either by technical service mark

use or by use analogous to service mark use before any priority date that MMM could

claim.6

1Serial No. 86231422, filed on March 25, 2014, and based on Applicant’s claim of first use
and first use in commerce (as amended by way of an unopposed motion – 5 TTABVUE – that
we herein grant) of March 1, 2014, under Trademark Act Section 1(a), 15 U.S.C. § 1051(a).
Citations to the record or briefs in this opinion are to TTABVUE, the Board’s electronic
docketing system. See, e.g., Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n. 6 (TTAB
2014). The number preceding “TTABVUE” corresponds to the docket entry number; the
number(s) following “TTABVUE” refer to the page, paragraph or exhibit number(s) of that
particular docket entry.
2 7 TTABVUE.
3 In his briefs, at 74 TTABVUE 10 – 18, 38 – 45 and 76 TTABVUE 12 – 16, 19-20, Canedo
also challenges the adequacy of (1) the specimen MMM filed with its PLAY’N FOR KEEPS
service mark application as not sufficiently showing MMM’s use of the mark in commerce,
and (2) MMM’s proof of use of the PLAY’N FOR KEEPS mark in commerce at all. We decline
to address these claims for two reasons. First, Canedo did not plead either claim in his
Amended Notice of Opposition, and on this basis alone he cannot move forward at trial on
these claims. See Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1103 n.3 (TTAB
2007) (unpleaded allegations will not be heard). Second, the adequacy of a specimen is solely
a matter of ex parte examination, Century 21 Real Estate Corp. v. Century Life of Am., 10
USPQ2d 2034, 2035 (TTAB 1989), and the insufficiency of a specimen, per se, does not
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Opposition No. 91218197

In its Answer to the Amended Notice of Opposition,7 MMM denies the salient

allegations of Canedo’s claim, but notably admits that Canedo has standing to

maintain this Opposition.8 MMM’s Answer also asserts numerous affirmative

defenses. Certain of MMM’s defenses are mere amplifications of its denials to

Canedo’s priority and likelihood of confusion allegations.9 Other defenses asserted by

MMM concern the parties’ respective rights to use the PLAY’N FOR KEEPS mark,

or broader questions of infringement or unfair competition – matters over which the

Board does not have jurisdiction. General Mills Inc. v. Fage Dairy Processing Industry

SA, 100 USPQ2d 1584, 1591 (TTAB 2011) (the Board has no authority to determine

the right to use, or the broader questions of infringement, unfair competition,

damages or injunctive relief).10

constitute valid grounds for opposition or cancellation. Marshall Field & Co. v. Mrs. Fields
Cookies, 11 USPQ2d 1355, 1358 (TTAB 1989).
4Serial No. 76716159, filed on April 7, 2014 based on use, stating a date of first use and first
use anywhere of July 1, 2007 and a date of first use in commerce of July 11, 2009. The services
recited in Canedo’s application are “entertainment services, namely, participation in Monster
Truck competitions, exhibitions and events.”
5 7 TTABVUE 1, ¶ 1.
67 TTABVUE 1 and 7, ¶¶ 1, 2(1)-2(2), 11. Canedo also alleges that MMM was not the rightful
owner of the PLAY’N FOR KEEPS mark when MMM filed its application to register the mark
with U.S. Patent and Trademark Office (“USPTO”). We view this allegation as part and
parcel of the priority dispute, and not as a stand-alone claim.
7 8 TTABVUE.
8 8 TTABVUE 1, ¶ 1.
9 8 TTABVUE 8, Defenses 1, 2, 4, 5 and 6.
10 8 TTABVUE 8, Defenses 3, 7 and 8.

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MMM waived its asserted defense that Canedo failed to state in his Amended

Notice of Opposition a claim upon which relief may be granted,11 because MMM did

not follow up with a motion to dismiss under Fed.R.Civ.P. 12(b)(6). Harry Winston,

Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1422 (TTAB 2014) (“As applicant

did not pursue the affirmative defense[] of failure to state a claim … by motion, [this

defense is] waived.”); see also Alcatraz Media Inc. v. Chesapeake Marine Tours Inc.,

107 USPQ2d 1750, 1753 (TTAB 2013), aff’d, 565 Fed. Appx. 900 (Fed. Cir. 2014) (“in

accordance with the Board’s usual practice, claims [not argued in a party’s brief] have

been waived”). MMM also waived its asserted defense of laches12 for failing to pursue

this defense during trial or in its brief. TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d

1097, 1100-1101 (TTAB 2018) (affirmative defenses waived because not pursued at

trial or argued in brief).

The above discussion regarding MMM’s affirmative defenses dispenses with all of

them except one, of which we here make special note. MMM’s Ninth affirmative

defense states that “[g]ranting [Canedo’s] Application for Registration [of the PLAY’N

FOR KEEPS mark] would create confusion in the monster truck community and with

the public at large.”13 We do observe MMM’s denials of the salient allegations in

Canedo’s Amended Notice of Opposition, and MMM’s arguments against Canedo’s

likelihood of confusion claim in its brief.14 However, considering that the parties’

11 8 TTABVUE 8, Defense 10.
12 8 TTABVUE 8, Defense 11.
13 8 TTABVUE 8, Defense 9.
14 75 TTABVUE 21-25.

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Opposition No. 91218197

marks, services, target audience and channels of trade (as alleged in the pleadings

and the parties’ respective service mark applications) are identical,15 we treat MMM’s

Ninth affirmative defense as a concession of likelihood of confusion under In re E. I.

du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In

short, deciding this Opposition comes down to resolving the parties’ competing claims

of service mark priority.

I. The Evidentiary Record

A. Manner of Submission of the Evidentiary Record

Before discussing the parties’ evidentiary filings, we pause here to observe the

manner in which the record was submitted. On the one hand, the Board applauds

the parties’ cooperative efforts (1) such that not one discovery motion was filed during

the parties’ discovery period, and (2) in their preparation and filing of a Stipulation

to Facilitate the Introduction of Produced Documents16 and a separate 13-page

Stipulation of Undisputed Facts.17

On the other hand, notwithstanding that both parties and all non-party witnesses

in this Opposition are located in the United States, the parties prepared and

15 In any likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). Moreover, “[t]he
authority is legion that the question of registrability of an applicant’s mark must be decided
on the basis of the identification of goods [or services] set forth in the application regardless
of what the record may reveal as to the particular nature of an applicant’s goods [or services],
the particular channels of trade or the class of purchasers to which the sales of goods [or
services] are directed.” Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990).
16 21 TTABVUE.
17 26 TTABVUE.

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Opposition No. 91218197

submitted a rather complex seven-page stipulation for the submission of testimony

by way of depositions on written questions.18 Generally, “a party may, during its

testimony period, take the testimony of a witness: (1) by affidavit or declaration under

Trademark Rule 2.20 [, 37 C.F.R. § 2.20]; (2) by deposition upon oral examination as

provided under Trademark Rule 2.123 [, 37 C.F.R. § 2.123]; or (3) by deposition upon

written questions as provided under Trademark Rule 2.124 [, 37 C.F.R. § 2.124].” See

Trademark Rule 2.123(a)(1) [, 37 C.F.R. § 2.123(a)(1)].” Andrusiek v. Cosmic

Crusaders LLC, 2019 USPQ2d 222984, *2 (TTAB 2019). On the other hand,

“Trademark Rule 2.123(a)(1) permits an affiant or declarant witness located in the

United States to be cross-examined only by oral examination.” Id. at *2-3.

True, the parties can stipulate otherwise, but the Trademark Rules of practice

still contemplate that deposition answers, when given, be transcribed by “a person

authorized to administer oaths” – that is (at least in the United States), a court

reporter:

If the parties so stipulate in writing, depositions may be taken before any
person authorized to administer oaths, at any place, upon any notice,
and in any manner, and when so taken may be used like other depositions.
The parties may stipulate in writing what a particular witness would testify
to if called; or any relevant facts in the case may be stipulated in writing.
(Emphasis added).

Trademark Rule 2.123(b), 37 C.F.R. § 2.123(b).

Regarding depositions on written questions, the Board’s manual of procedure

states:

18 24 TTABVUE.

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Opposition No. 91218197

A deposition on written questions is a cumbersome, time-consuming
procedure. It requires that cross questions, redirect questions, recross
questions, and objections all be framed and served before the questions on
direct examination have even been answered. Moreover, it deprives an
adverse party of the right to confront the witness and ask follow-up
questions on cross examination.

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 703.02(m)

(June 2019).

Pursuant to the parties’ stipulation, they submitted to the Board not the

transcription of testimony elicited by written questions, but rather the witnesses’

handwritten (sometimes illegible), notarized, answers to written testimony

questionnaires. Moreover, submitted with the completed testimony questionnaires

were formal declarations or affidavits of third party witnesses – and in several

instances these same third party witnesses answered their own testimony

questionnaires to verify the truth and accuracy of the declarations or affidavits they

previously signed. Additionally, many of the same exhibits submitted by the parties

with their completed testimony questionnaires, declarations or affidavits were

submitted again attached to their Notices of Reliance. Consequently, the manner in

which the parties submitted the evidentiary record delayed the Board’s review and

ultimate disposition of this Opposition.

The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),

15 C.F.R. § 2.122(b), the file of MMM’s PLAY’N FOR KEEPS service mark

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Opposition No. 91218197

application. The record also includes the parties’ Stipulation of Undisputed Facts

(“SUF”).19

B. Opposer’s Evidence

In addition, pursuant to the parties’ other Stipulations, Canedo introduced the

following evidence:

1. Opposer’s completed testimony questionnaire of Sharlene Borba,
of WGAS Motorsport Entertainment, LLC – a promoter of
monster truck events (“Borba Opp-Q/A”) (38 TTABVUE 15 et
seq.), with exhibits.
2. Opposer’s completed amended testimony questionnaire of Enrico
(“Rick”) Romanini, Manager of MMM (“Romanini Opp-Q/A”) (66
TTABVUE 19 et seq.), with exhibits.
3. Opposer’s completed testimony questionnaire of William (“Bill”)
Payne, a third-party witness (“Payne Opp-Q/A”) (40 TTABVUE
15 et seq.), with exhibits that include:
a. The Declaration of Bill Payne (“Payne Decl.”, Exh.1 to Payne
Opp-Q/A).
4. Opposer’s completed testimony questionnaire of Opposer himself,
Antonio (“Tony”) Canedo (“Canedo Opp-Q/A”) (41 TTABVUE),
with exhibits that include:
a. The Declaration of Opposer Tony Canedo (“Canedo Decl.”,
Exh.1 to Canedo Opp-Q/A).
5. Opposer’s Resubmitted Second Notice of Reliance (“Opp-2nd
NOR”) (46 TTABVUE), with attachments.20
6. Opposer’s Third Notice of Reliance (“Opp-3rd NOR”) (42
TTABVUE), with exhibits.
7. Opposer’s Fourth Notice of Reliance (“Opp-4th NOR”) (43
TTABVUE), with exhibits.
8. Opposer’s Fifth Notice of Reliance (“Opp-5th NOR”) (44
TTABVUE), with exhibits.

19 26 TTABVUE.
20 The Board does not have a record of Canedo filing a “First” Notice of Reliance.

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Opposition No. 91218197

C. Applicant’s Evidence

Also, pursuant to the parties’ Stipulations, MMM introduced the following

evidence:

1. Applicant’s completed testimony questionnaire of Rick Romanini
(“Romanini App-Q/A”) (52 TTABVUE 34 et seq.), with exhibits
that include:
a. The Affidavit of Timothy J. Coitrone, a third-party witness
(“Coitrone Affid.”, Exh. C to Romanini App-Q/A).
b. The Affidavit of Greg Wichenbach, a third-party witness
(“Wichenbach Affid.”, Exh. D to Romanini App-Q/A).
c. The Affidavit of Debra Donley, a third-party witness (“Donley
Affid.”, Exh. E to Romanini App-Q/A).
2. Applicant’s completed testimony questionnaire of Greg
Wichenbach (“Wichenbach App-Q/A”) (52 TTABVUE 74 et seq.),
with exhibits.
3. Applicant’s completed testimony questionnaire of Opposer Tony
Canedo (“Canedo App -Q/A”) (52 TTABVUE 121 et seq.), with
exhibits.
4. Applicant’s completed testimony questionnaire of Laura Canedo,
Tony Canedo’s wife who provides secretarial support for Tony
Canedo’s business (“LCanedo App-Q/A”) (52 TTABVUE 180 et
seq.), with exhibits.
5. Applicant’s completed testimony questionnaire of Sharlene Borba
(“Borba App-Q/A”) (52 TTABVUE 225 et seq.), with exhibits.
6. Applicant’s completed testimony questionnaire of Debra Donley
(“Donley App-Q/A”) (52 TTABVUE 255 et seq.), with exhibits.
7. Applicant’s completed testimony questionnaire of Jeffrey Perrin
(“Perrin App-Q/A”) (52 TTABVUE 286 et seq.).
8. Applicant’s completed testimony questionnaire of Bill Payne
(“Payne App-Q/A”) (52 TTABVUE 309 et seq.), with exhibits.
9. Applicant’s First Notice of Reliance (53 TTABVUE), resubmitted
as Applicant’s Corrected First (or Fifth) Notice of Reliance (57
TTABVUE) (“App-1st NOR”), with exhibits.
10. Applicant’s Second Notice of Reliance (54 TTABVUE) (“App-2nd
NOR”), with an exhibit.

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11. Applicant’s Third Notice of Reliance (55 TTABVUE) (“App-3rd
NOR”), with exhibits.
12. Applicant’s Fourth Notice of Reliance (56 TTABVUE) (“App-4th
NOR”), with exhibits.

D. Opposer’s Rebuttal Evidence

Finally, again pursuant to the parties’ Stipulations, Canedo introduced the

following rebuttal evidence:

1. Opposer’s completed rebuttal testimony questionnaire of Opposer
Tony Canedo (“Canedo Opp-Rebuttal Q/A”) (67 TTABVUE 12 et
seq.), with exhibits.
2. Opposer’s completed amended rebuttal testimony questionnaire
of Rick Romanini (“Romanini Opp-Rebuttal Q/A”) (68 TTABVUE
18 et seq.), with exhibits.
3. Opposer’s Sixth (Rebuttal) Notice of Reliance (“Opp-6th NOR”) (69
TTABVUE), with exhibits.
4. Opposer’s Seventh (Rebuttal) Notice of Reliance (“Opp-7th NOR”)
(70 TTABVUE), with exhibits.

II. Standing

A threshold issue in every inter partes case is the plaintiff’s standing to challenge

registration. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed.

Cir. 1999); John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB

2010). As we noted earlier in this opinion, Canedo, in his Amended Notice of

Opposition, asserts he applied to register the PLAY’N FOR KEEPS mark for

essentially the same services as are recited in MMM’s PLAY’N FOR KEEPS

application, and that Canedo’s service mark application was placed in suspension

pending the disposition of MMM’s application – allegations which MMM admits in

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Opposition No. 91218197

its Answer and to which the parties have stipulated.21 “[Canedo’s] … evidence of [his]

… pending trademark application, and evidence that [his] … application has been

suspended pending resolution of the [MMM’s] application demonstrate that [Canedo]

… has a reasonable belief that [he] … would be damaged by registration of [MMM’s]

… mark, thus establishing [his] … standing.” Life Zone Inc. v. Middleman Group,

Inc., 87 USPQ2d 1953, 1959 (TTAB 2008).

Further, Canedo believes he will be damaged by MMM’s registration of the

identical mark to promote essentially the same services. Accordingly, Canedo has a

real interest in this proceeding and a reasonable basis for his belief that he will be

damaged by the registration of MMM’s identical mark. Spirits Int’l B.V. v. S.S. Taris

Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1548

(TTAB 2011); Toufigh v. Persona Parfum Inc., 95 USPQ2d 1872, 1874 (TTAB 2010).

Canedo is therefore not a mere intermeddler and has standing to maintain this

Opposition. Ritchie v. Simpson, 50 USPQ2d at 1025; Swiss Grill Ltd. v. Wolf Steel

Ltd., 115 USPQ2d 2001, 2008 (TTAB 2015).

III. Likelihood of Confusion

As we also noted earlier in this opinion, MMM contends in the Ninth affirmative

defense to its Answer that “[g]ranting [Canedo’s] Application for Registration [of the

PLAY’N FOR KEEPS mark] would create confusion in the monster truck community

and with the public at large.”22 Considering that the parties’ marks, services, target

21 Notice of Opposition 7 TTABVUE 1, ¶ 1; Answer 8 TTABVUE 1, ¶ 1; SUF 26 TTABVUE
2, ¶¶ 9-10.
22 8 TTABVUE 8, Defense 9.

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Opposition No. 91218197

audience and channels of trade (as alleged in the pleadings and the parties’ respective

service mark applications) are identical,23 we treat MMM’s Ninth affirmative defense

as a concession of likelihood of confusion under DuPont 177 USPQ at 567.

IV. Priority

A resolution of the parties’ competing claims of service mark priority requires

discussion of the history of the PLAY’N FOR KEEPS mark, to which we now turn.

A. Jesse Birgy and the History of the PLAY’N FOR KEEPS Mark

A “monster truck” is an extremely large pickup truck, typically with greatly

oversized tires. Such trucks are often raced across rough terrain or featured in

exhibitions in which they drive over and demolish smaller automobiles.24 Common

activities performed at monster truck competitions include: car crushing; racing;

displays; jumping; freestyling; wheelie competition; donut competition; and pit

parties.25 Racing and freestyle competitions are generally part of monster truck

competitions.26 Some of the basic judging criteria used in monster truck competition

freestyle events include: the amount of allotted time used, the amount of speed

maintained during a run, height, length, and verticality of jumps, use of specific tricks

23To reiterate, “the question of registrability of MMM’s PLAY’N FOR KEEPS … mark must
be decided on the basis of the identification of [services] … set forth [its] … application
regardless of what the record may reveal as to the particular nature of [MMM’s] … [services],
the particular channels of trade or the class of purchasers to which the sales of [MMM’s] …
[services] are directed.” Octocom, 16 USPQ2d at 1787.
24 http://en.wikipedia.org/wiki/Monster_truck, Opp-3rd NOR 42 TTABVUE Exh. 1(3).
25 SUF, 26 TTABVUE 10, ¶ 80.
26 SUF, 26 TTABVUE 8, ¶ 66.

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Opposition No. 91218197

(slap wheelies, donuts, etc.); and getting the truck out of situations which would

otherwise result in a crash (called “saves”).27

More than 25 years ago, the late Jesse Birgy (“Birgy”) was one of the monster

truck racers in the beginning of the sport. Birgy was involved with building monster

trucks and competing in monster truck events. He died in May 2008.28

The mark PLAY’N FOR KEEPS was originated by Birgy at some unspecified date

in the past. Birgy was a well-known originator of the art of monster truck

construction. He used the name PLAY’N FOR KEEPS on several monster trucks

during the course of his career; thus there is more than one PLAY’N FOR KEEPS

truck that is “original” to Birgy. The words PLAY’N FOR KEEPS were widely known

to persons knowledgeable in the art as being associated with Birgy’s monster trucks.

However, Birgy never registered the name PLAY’N FOR KEEPS with the USPTO.29

People who worked with Birgy on his PLAY’N FOR KEEPS monster trucks during

Birgy’s career attested to the one-of-a-kind components (e.g., unique suspension and

frame) that Birgy developed.30 Birgy kept building new versions of his PLAY’N FOR

KEEPS truck because it made people mad that his “old junk” trucks would beat all

newer trucks. As he “broke” an old truck he would update it or build a new one.31

27 SUF, 26 TTABVUE 8-9, ¶¶ 66-67; Canedo Decl., 41 TTABVUE ¶ 25(a).
28 Romanini App-Q/A, 52 TTABVUE 34-35, ¶¶ 3, 4 and 6.
29 SUF, 26 TTABVUE 2, ¶¶ 2-6; 4, ¶ 30; 5, ¶ 36; 7, ¶ 58.
30Coitrone Affid., 52 TTABVUE 38, Exh. C ¶ 4; Wichenbach Affid., 52 TTABVUE 39, Exh.
D ¶¶ 4-8.
31 Payne Opp-Q/A, 40 TTABVUE 25, ¶¶ 60-61.
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Opposition No. 91218197

B. Legal Principles Regarding the Acquisition
or Licensing of Service mark Rights from Another

As we discuss below later in this decision, the parties’ competing claims to the

PLAY’N FOR KEEPS mark in part involve whatever rights each of them allegedly

acquired in the mark from Birgy – whether by assignment, license or otherwise. We

therefore now set out the principles involving the acquisition or licensing of service

mark rights.

1. Assignment of Service Mark Rights

“Unlike patents or copyrights, [service] … marks are not separate property rights.

They are integral and inseparable elements of the goodwill of the business or services

to which they pertain. ‘Since goodwill is inseparable from the business with which it

is associated’ (citations omitted), when one speaks of the transfer of goodwill that

accompanies a mark, one necessarily means the transfer of the portion of the business

or service with which the mark is associated.” Visa, U.S.A., Inc. v. Birmingham Trust

Nat’l Bank, 696 F.2d 1371, 216 USPQ 649, 651 (Fed. Cir. 1982). “[T]he shorthand

description of goodwill as ‘the expectancy of continued patronage’ (citation omitted),

provides a useful label with which to identify the total of all imponderable qualities

that attract customers to the business.” Newark Morning Ledger Co. v. United States,

507 U.S. 546, 26 USPQ2d 1427, 1428 (1993). “The consequence is that a mark may

be transferred only in connection with the transfer of the goodwill of which it is a

part. A naked transfer of the mark alone – known as a transfer in gross – is invalid.”

Visa, U.S.A., 216 USPQ at 651-52.

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Opposition No. 91218197

Thus, a mark is “assignable with the goodwill of the business in which the mark

is used, or that part of the goodwill of the business connected with the use of and

symbolized by the mark.” Trademark Act Section 10(a)(1), 15 U.S.C. § 1060(a)(1).

Assignments of federally registered marks or applications must be in a signed

writing. Trademark Act Section 10(a)(3), 15 U.S.C. § 1060(a)(3). “A valid transfer of

a mark, however, does not require the transfer of any physical or tangible assets. All

that is necessary is the transfer of the goodwill to which the mark pertains[,] … [and

that] … transfer … requires only that the services be sufficiently similar to prevent

consumers of the service offered under the mark from being ‘misled from established

associations with the mark.’” Visa, U.S.A., 216 USPQ at 652. Moreover, one “need not

assign his entire business to effect a valid assignment of a [service] mark and the

goodwill appurtenant thereto; and the absence of a sale of the entire business does

not constitute an abandonment of the [service] mark or … marks used therein.”

Gentry Canning Co. v. Blue Ribbon Growers, Inc., 138 USPQ 536, 538 (TTAB 1963)

2. Licensing of Service Mark Rights

“A [service] mark informs the public of a source of the [services] … and assures

them of [their] … quality. … [T]he public need not know the name of the owner of the

mark.” In re Polar Music Int’l AB, 714 F.2d 1567, 1571, 221 USPQ 315, 317 (Fed. Cir.

1983). Since [the mark owner] … controls the quality of the [services], it is the source

of the … [services]. … The source of the [services] does not depend on the public’s

perception; the public need not know [the mark owner’s] role. Id.

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Opposition No. 91218197

Where, however, the mark owner gives permission to another person or entity to

use the mark, its “failure to exercise control over the nature and quality of the

[services] … marketed under the mark[,]” can result in the abandonment of rights to

the mark. Geo. A. Hormel & Co., v. Hereford Heaven Brands, Inc., 341 F.2d 158, 144

USPQ 493, 494 (CCPA 1965). In this context, quality control can be found, for

example, by the express terms of the parties’ written agreement, the mark owner’s

continued knowledge of the licensee’s use of the mark, or a close relationship between

the mark owner and the licensee, Stock Pot Rest., Inc. v. Stockpot, Inc., 737 F.2d 1576,

222 USPQ 665, 668 (Fed. Cir. 1984). See also, Nestle Co. v. Nash-Finch Co., 4 USPQ2d

1085 (TTAB 1987) (sufficient actual quality control was found in licensing of food

mark to delicatessens, even though there was no written license).

C. Canedo’s Claim to Acquisition
of Service Mark Rights from Birgy, as brokered by Payne

Bill Payne (“Payne”) is a resident of Washington State. He is a co-owner of

Straight Up Racing, an independent monster truck team. Payne is familiar with the

sport of monster truck competition and of the construction details of monster trucks.32

Payne met Birgy in Roswell, New Mexico and was in contact with him as a friend and

student for many years. Birgy shared his knowledge with Payne and helped him to

improve his skill in the monster truck field.33

32 Payne Decl., 40 TTABVUE Exh. 1, ¶¶ 1-2.
33 Payne Decl., 40 TTABVUE Exh. 1, ¶ 6.
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Opposition No. 91218197

Opposer, Canedo, is a California resident. As an adult, Canedo had raced in

different types of vehicles. After seeing a monster truck event, Canedo decided he

wanted to participate in such competitions.34

Payne met Canedo at an event in Northern California in around 2005. After that,

Payne had Canedo drive one of Payne’s trucks on occasion. During this time, Canedo

informed Payne that he would like to buy a monster truck.35

During the few months of doing shows with Canedo, Payne would still talk with

Birgy by phone. At that time, Birgy said he was not running his truck in competitions

much and was working a day job. During these conversations, Birgy made comments

of wanting to sell everything and be done with monster trucks.36

Payne thereupon called Canedo and told him that Birgy wanted to retire and to

sell his monster truck PLAY’N FOR KEEPS.37 Since Canedo told Payne that he had

always wanted a monster truck and would like to build one someday, Payne informed

Canedo about Birgy’s truck. Interested, Canedo wanted more information.38

Payne ended up being the middle man in the eventual deal. Payne would talk to

Birgy and forward the information to Canedo, and vice versa.39 Canedo eventually

called and spoke with Birgy a few times during the summer and fall of 2006. They

34 Canedo Decl., 41 TTABVUE Ex1. 1, ¶¶ 2-3.
Payne Decl., 40 TTABVUE Exh. 1, ¶ 7; Canedo Decl., 41 TTABVUE Ex1. 1, ¶ 4; Payne
35

App-Q/A 52 TTABVUE 301, ¶ 9.
36 Payne Decl., 40 TTABVUE Exh. 1, ¶¶ 8-9.
37 Canedo Decl., 41 TTABVUE Ex1. 1, ¶ 5.
38 Payne Decl., 40 TTABVUE Exh. 1, ¶ 10
39 Payne Decl., 40 TTABVUE Exh. 1, ¶ 11

17
Opposition No. 91218197

discussed the truck and Canedo possibly buying it from Birgy. During these

discussions, Canedo and Birgy decided on the basic terms of sale and set a date for

Canedo to travel to Birgy’s home in Michigan to finish the deal there.40

Canedo traveled to Michigan on December 18, 2006. Canedo asked Payne to use

one of his monster truck haulers to bring the PLAY’N FOR KEEPS truck back to

California for him; Payne agreed.41

After arriving at Birgy’s home, Birgy, Payne and Canedo went out to Birgy’s shop

where the PLAY’N FOR KEEPS truck was stored. Birgy and Canedo agreed upon

final terms to complete the sale; all witnessed by Payne.42 It was at this time when

Canedo asked Birgy about the name of the truck, and what it meant to “get the name.”

Birgy told Canedo that “with the truck goes the name too” and that Canedo could

“run it or not,” Birgy “was done [with monster truck racing] after this”. Canedo told

Birgy then that he (Canedo) would keep the name of the truck.43 The parties agree

that “Birgy granted [to Canedo the] right of use of the PLAY’N FOR KEEPS name as

long as [Canedo] owned and utilized the vehicle [Birgy] sold to [Canedo].”44

In view of Birgy’s above-noted comments at the time of the December 18, 2006

sale of his truck to Canedo that “with the truck goes the name too,” that Canedo could

“run it or not,” and that Birgy “was done [with monster truck racing] after this [sale,]”

40 Canedo Decl., 41 TTABVUE Ex1. 1, ¶¶ 6-7.
41 Canedo Decl., 41 TTABVUE Ex1. 1, ¶¶ 8-9; Payne Decl., 40 TTABVUE Exh. 1, ¶ 12.
42 Canedo Decl., 41 TTABVUE Ex1. 1, ¶ 14.
Payne Decl., 40 TTABVUE Exh. 1, ¶ 14; Canedo App-Q/A 52 TTABVUE 133, ¶ 48; Canedo
43

Opp-Rebuttal Q/A 67 TTABVUE 13, ¶ 7.
44 SUF, 26 TTABVUE ¶ 44.
18
Opposition No. 91218197

it appears that, as of that date, Birgy discontinued use of the PLAY’N FOR KEEPS

mark with an intent not to resume such use. That is, Birgy abandoned the mark

within the meaning of Trademark Act Section 45, 15 U.S.C. § 1127.

Canedo gave Birgy two checks totaling the full payment of $25,000.00 that Canedo

paid for the truck with the PLAY’N FOR KEEPS logo on it. Birgy signed over to

Canedo the Certificate of Title issued to Birgy for the truck by the state of Michigan.

Birgy also hand wrote a bill of sale, which both Canedo and Birgy signed, stating as

follows:45

Dec. 18, 2006
I Jesse E. Birgy sold to Tony Canedo my monster truck known as Play’n
for Keeps Vin # M 12140A333K050196. In signing this he assumes all
responsibility and liability for this vehicle from this day forward.

Tony Canedo Jesse E. Birgy
s/ Tony Canedo s/ Jesse E. Birgy

As noted previously, Jesse Birgy died in 2008. Prior to and subsequent to the sale

of the PLAY’N FOR KEEPS truck from Birgy to Canedo, Debra Donley (“Donley”)

was Birgy’s “significant other” and they lived as husband and wife for thirty years

until his death.46 Donley claims to have personal knowledge of the facts involving the

December 2006 sale of the PLAY’N FOR KEEPS truck by Birgy to Canedo.47 While

45Canedo Decl., 41 TTABVUE Exh. 1, ¶¶ 15-18; Signed-over Certificate of Title, Handwritten
Bill of Sale and Payment Checks – Canedo Opp-Q/A, 41 TTABVUE Attachment C; SUF, 26
TTABVUE ¶¶ 7, 57.
46 Donley Affid., 52 TTABVUE Exh. E, ¶ 3.
47 Donley Affid., 52 TTABVUE Exh. E, ¶ 2.

19
Opposition No. 91218197

Canedo and Payne acknowledge that Donley was present during the transaction,48

Payne believes that Donley was also attending to other household matters at the

time, was in and out of the table area where the negotiations occurred, and would not

have heard the whole conversation among Birgy, Canedo and Payne.49 Canedo

further states that (1) Donley was not present during the negotiations of the sale

between him and Birgy,50 and (2) during the time that Donley was present for the

discussions, she never mentioned any limitations on Canedo’s ownership of the

PLAY’N FOR KEEPS mark or his rights to use it after the sale.51

For her part, Donley states that (1) at the time Birgy sold the truck to Canedo in

2006, Canedo asked Birgy if he could “use the name PLAY’N FOR KEEPS” on the

truck he purchased, (2) Birgy gave Canedo permission to “use” the name only, (3)

Birgy did not sell the name PLAY’N FOR KEEPS to Canedo or grant him the

exclusive use of the name, (4) Birgy continued to use the PLAY’N FOR KEEPS name

on his trucks, (5) any claim by Canedo that he was granted the rights to the name

PLAY’N FOR KEEPS created by Birgy is ridiculous, and (6) she has no objection to

Canedo using the name, PLAY’N FOR KEEPS, as long as Canedo owns and utilizes

the truck he purchased from Mr. Birgy.52

48Canedo Decl., 41 TTABVUE Exh. 1, ¶¶ 10-13; Payne Decl., 40 TTABVUE Exh. 1, ¶¶ 17
and 19.
49 Payne App-Q/A 52 TTABVUE 314, ¶ 33.
50 Canedo App-Q/A 52 TTABVUE 136-7, ¶ 64.
51 Canedo Opp-Rebuttal Q/A 67 TTABUVE 13-14, ¶¶ 9-10.
52 Donley Affid., 52 TTABVUE Exh. E, ¶¶ 5-7.

20
Opposition No. 91218197

The parties agree that (1) when one purchases a “trade named” vehicle one does

not accrue “ownership” of the company that sold the vehicle, (2) MMM does not have

personal knowledge of any places where or dates on which Birgy used the trade name

PLAY’N FOR KEEPS on a vehicle in the ordinary course of trade, or in any capacity,

after Birgy sold his PLAY’N FOR KEEPS truck to Canedo in December of 2006 up to

the date of Birgy’s death in 2008, (3) the only document provided by MMM to support

that Birgy continued to use the PLAY’N FOR KEEPS “name” on a vehicle in the

ordinary course of commerce, or in any manner, until his death in 2008 lies in

Donley’s affidavit, but no pictures or other documents support this assertion.53

When they were working out the details of Canedo buying the truck, Canedo

explained to Birgy that Canedo wanted to make certain modifications to the truck

that would make it meet higher monster truck event qualification standards and

strengthen it to handle the greater motor power and performance demands. This

pleased Birgy who said he was excited about the changes Canedo planned to make to

the truck.54 After the sale, Payne hauled the Birgy truck back to Canedo’s home in

California, and thereafter assisted Canedo in making modifications to the Birgy truck

between 2006 and 2009.55 There is no evidence in the record that Birgy ever oversaw,

reviewed or approved of these changes after the sale of the truck.

53 SUF, 26 TTABVUE ¶¶ 31, 71-73, 85-87, 89
54 Canedo Decl., 41 TTABVUE Exh. 1, ¶ 20; Payne Decl., 40 TTABVUE Exh. 1, ¶ 18.
55Payne Decl., 40 TTABVUE Exh. 1, ¶ 20; Canedo App-Q/A 124, ¶ 13; SUF, 26 TTABVUE
¶¶ 33-34.

21
Opposition No. 91218197

Based on our review of the Birgy-Canedo transaction documents, the testimony of

Canedo, Payne and Donley, and the parties’ stipulated facts, we find that the sale of

Birgy’s truck did not result in a valid assignment of the PLAY’N FOR KEEPS mark

to Canedo. First, stating the obvious, none of the transaction documents proffered by

Canedo contains express words transferring ownership of the mark. Second, while

Birgy did sell a monster truck bearing the name PLAY’N FOR KEEPS to Canedo,

there is no indication of a transfer of goodwill to the mark. For example, an indicator

that Birgy transferred goodwill in the PLAY’N FOR KEEPS mark to Canedo (which

was not offered into evidence) might have included a list of monster truck events at

which Birgy competed with the truck, together with a list of contacts and contact

information for the sponsors of those events. If we were to deem the Birgy-Canedo

transaction as an assignment in rights to the mark, at best it was a transfer without

accompanying goodwill (that is, the expectancy of continued patronage) thus

constituting a prohibited transfer in gross. Newark Morning Ledger, 26 USPQ2d at

1428; Visa, U.S.A., 216 USPQ at 651-52.

On the other hand, crediting the testimony of Payne, Donley, and the parties’

stipulation of facts, Birgy granted to Canedo the right of use of the PLAY’N FOR

KEEPS name as long as Canedo owned and utilized the vehicle Birgy sold to Canedo.

Subsequent to the sale of the truck, Canedo and Payne made alterations to the

vehicle, but there is no proof that Birgy ever oversaw, reviewed or approved of these

changes nor proof that Birgy in any way controlled how Canedo used the mark in

connection with the truck subsequent to the sale. We find these circumstances evince

22
Opposition No. 91218197

Birgy’s failure to exercise control over the nature and quality of the monster truck

services undertaken by Canedo in connection with truck branded with the PLAY’N

FOR KEEPS name – a naked license – resulting in Birgy’s abandonment of his rights

to the mark.

In sum, Canedo received no valid rights, whether by way of assignment or license,

in the PLAY’N FOR KEEPS mark from Birgy.

D. MMM’s Claim to Acquisition
of Service Mark Rights from Birgy

Timothy Coitrone (“Coitrone”) is a Maine resident. He claims personal knowledge

and familiarity with the monster truck known as PLAY’N FOR KEEPS formerly

owned by Birgy. Coitrone was friends with Birgy for approximately 15-20 years prior

to his death. During the period of their friendship, Coitrone worked with Birgy on the

PLAY’N FOR KEEPS truck and was very familiar with its “one of a kind” components

(unique suspension and frame) that Birgy developed. In approximately 1997-1998,

Coitrone purchased a PLAY’N FOR KEEPS truck directly from Birgy and kept it for

a few years at which time Cointrone sold it to an unidentified person in Maine.56

Enrico John Romanini (“Romanini”), is a Michigan resident and Manager of

MMM. Romanini claims that he purchased a Birgy PLAY’N FOR KEEPS truck in

late 2012; from whom Romanini does not say.57 The only details we have regarding

the chain of title to the Birgy PLAY’N FOR KEEPS truck is within the parties’

stipulation of facts wherein the parties agree that MMM acquired the PLAY’N FOR

56 Coitrone Affid., 52 TTABVUE Exh. C, ¶¶ 1-5.
57 Romanini App-Q/A 52 TTABVUE 34-35, ¶¶ 1-2, 7.

23
Opposition No. 91218197

KEEPS framework and associated parts from Ryan Jones (“Jones”) for $3,000.00

cash, with no receipt for the cash payment and no bill of sale for the truck signed by

Jones.58

Greg Winchenbach (“Winchenbach”) is a Maine resident claiming to have personal

knowledge of the facts and circumstances related to the monster truck known as

PLAY’N FOR KEEPS. Prior to Birgy’s death in 2008, Winchenbach worked closely

with Birgy as the former owner of the PLAY’N FOR KEEPS truck. Winchenbach first

met Birgy and worked for him as a crew member in 1989. In his capacity as a crew

member, Winchenbach not only did mechanical work on the PLAY’N FOR KEEPS

truck, but also on occasion drove the truck. As such, he was acutely aware of and

knowledgeable about all aspects of the truck.59

Somehow (we are not informed of the circumstances), Romanini became aware

that the frame of a Birgy PLAY’N FOR KEEPS monster truck was located in the

woods somewhere in Maine. Romanini sent Winchenbach to Maine to verify that the

truck frame was in fact a Birgy original PLAY’N FOR KEEPS truck. Once

Winchenbach confirmed to Romanini that the truck frame was from a Birgy original

PLAY’N FOR KEEPS vehicle, Romanini funded the purchase of the truck frame

(without the PLAY’N FOR KEEPS name on it) and utilized the frame to reconstruct

58 SUF, 26 TTABVUE ¶¶ 63-65, 74 (emphasis added).
59 Winchenbach Affid., 52 TTABVUE Exh. D, ¶¶ 1, 2, 4, 5, 7, 8.

24
Opposition No. 91218197

a full monster truck, complete with frame, wheels and cab, bearing the PLAY’N FOR

KEEPS name.60

MMM, as an entity, did not come into existence until May 2011.61 Neither MMM

nor any of its agents entered into a business arrangement with Birgy.62 MMM is not

(i) a parent company, subsidiary or a licensee of any entity using or having applied to

use the PLAY’N FOR KEEPS name; (ii) a sister company of a subsidiary company

using or having applied to use the PLAY’N FOR KEEPS name; or (iii) a licensee of,

or a subsidiary of a parent company using or having applied for registration of the

PLAY’N FOR KEEPS name.63 More particularly, MMM concedes it never entered

into a “formal” or “codified” business relationship with Birgy prior to his death.64 Yet,

MMM’s claim of ownership of the PLAY’N FOR KEEPS mark and right to file for

registration of the name is based on MMM being a successor in interest to Birgy.65

MMM’s assertion that it is successor in interest to Birgy’s rights in the PLAY’N

FOR KEEPS mark is unsupported. After wading through MMM’s numerous mis-cites

to the record, we find that MMM’s sole claim of superior rights to the PLAY’N FOR

60SUF, 26 TTABVUE ¶¶ 8, 28-29, 52; Romanini App-Q/A 52 TTABVUE 35-37, ¶¶ 8-16, Exhs.
A and B; Wichenbach Affid., 52 TTABVUE Exh. D, ¶ 12. In reality, while Romanini claims
to have funded the PLAY’N FOR KEEPS restoration (77 TTABVUE 9), this work actually
was done by high school students at the Regional Career Training Center of the Ypsilanti,
MI Schools (“RCTC”). Romanini Opp-Q/A 52 TTABVUE 21-23, ¶¶ 16-36, Exhs. 5-7; Opp-7th
NOR, 70 TTABVUE Exh. 1.
61 SUF, 26 TTABVUE ¶ 39.
62 SUF, 26 TTABVUE ¶¶ 40-41.
63 SUF, 26 TTABVUE ¶ 49.
64 Applicant’s Brief, 75 TTABVUE 11.
65 SUF, 26 TTABVUE ¶ 45.

25
Opposition No. 91218197

KEEPS mark stems from the Affidavit signed by Donley; as purported grantor of the

rights on behalf of Birgy’s estate.66

MMM presents no evidence or argument that Donley in fact (whether as

representative of the Birgy estate or otherwise) had any legal authority whatsoever

to assign or license rights in the PLAY’N FOR KEEPS mark to MMM. Even if Donley

had such authority, Donley (as recounted in her affidavit) granted no rights in the

mark to MMM at all. Paragraph 14 of Donley’s affidavit, upon which MMM places

principal reliance, says:

[A]s Mr. Birgy’s significant other for 30 years and the mother of Mr.
Birgy’s daughter, I recognize that Mad Man Motorsports does in fact
own the original frame of the truck, Play’n For Keeps. However, I have
no objection to Mr. Canedo using the name, Play’n For Keeps, as long as
he owns and utilizes the truck he purchased from Mr. Birgy.67

In fact, Donley recognizes as the owner of the PLAY’N FOR KEEPS name “[a]nybody

who poses[ses] any of [the] chas[s]is that were PFK at any point of PFK.”68

Thus, similar to Canedo, MMM does not point us to any document or

undocumented circumstances in which Birgy or his authorized successor(s) ever

assigned to MMM ownership rights in, or granted MMM a license to use, the PLAY’N

FOR KEEPS mark. The Donley testimony, at best, recounts a grant from Donley to

MMM of an improper naked license to use the mark; that is IF she ever had rights in

the mark to grant. In sum, the record does not show that MMM received any valid

66 Applicant’s Brief, 75 TTABVUE 10-11.
67 Donley Affid., 52 TTABVUE Exh. E, ¶ 14.
68 Donley App-Q/A 52 TTABVUE 260, ¶ 36.

26
Opposition No. 91218197

rights, whether by way of assignment or license, in the PLAY’N FOR KEEPS mark

from anyone.

E. Legal Principles Regarding Priority
of Service mark Rights through Use in Commerce

Our summary of, and conclusion from, the above discussion is that neither Canedo

nor MMM acquired any service mark rights to the PLAY’N FOR KEEPS name from

Birgy, his estate, or any authorized successors. Thus, given that neither party can

rely on acquired prior rights in the PLAY’N FOR KEEPS service mark from Birgy,

whatever rights Canedo or MMM have in the PLAY’N FOR KEEPS mark must come

from their own common law use or use analogous to service mark use.69 In addition,

the mark must be distinctive, inherently or otherwise, which neither party herein

disputes. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40,

43 (CCPA 1981).

“A service mark … entails use [of the mark] in conjunction with the offering and

providing of a service … mak[ing] all the more important the use of the [m]ark in

‘sales’ or ‘advertising’ materials of different descriptions.” Lloyd’s Food Prod., Inc.

Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993). Additionally, the

services themselves must have been actually rendered in interstate or foreign

69 Canedo alleged in the alternative in his Amended Notice of Opposition priority of service
mark use and priority by way of use analogous to service mark use. 7 TTABVUE 2, ¶¶ 2(1),
2(2). “Use ‘analogous’ to [service] mark … use means use of a nature and extent such as to
create an association of the term with the user’s [services] … [such as] in advertising
brochures, in catalogues and newspapers, and in press releases and trade publications.”
Malcom Nicol & Co. v. Witco Corp., 881 F.2d 1063, 11 USPQ2d 1638, 1639 (Fed. Cir. 1989).
Whereas, here, we resolve the parties’ competing claims to the PLAY’N FOR KEEPS mark
based upon priority of use, we need not address Canedo’s alternative claim of use analogous
to service mark use.

27
Opposition No. 91218197

commerce. Couture v. Playdom, Inc. 778 F.3d 1379, 113 USPQ2d 2042, 2044 (Fed.

Cir. 2015). In this connection, the services rendered must be those recited in the

application. Cf. On-Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080, 56

USPQ2d 1471, 1476-77 (Fed. Cir. 2000) (the Board’s finding that America Online

used the ONLINE TODAY mark in connection with the services specified in the

registration was supported by substantial evidence).

Our primary reviewing court, the Court of Appeals for the Federal Court, provides

a succinct summary of the requirements for a service mark to be used in commerce:

For service marks, the “use in commerce” requirement is met when (1)
a mark is “used or displayed in the sale or advertising of services” and
(2) either (i) the services are “rendered in commerce” or (ii) the services
are “rendered in more than one State or in the United States and a
foreign country and the person rendering those services is engaged in
commerce in connection with the services.” (Citation omitted). The
registration of a mark that does not meet the use requirement is void ab
initio.

Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1305 (Fed. Cir.

2009). “Furthermore, ‘[m]ere adoption (selection) of a mark accompanied by

preparations to begin its use are insufficient … for claiming ownership of and

applying to register the mark.’” Id. at 1306-07 (citing Intermed Commc’ns, Inc. v.

Chaney, 197 USPQ 501, 507 (TTAB 1977).

F. Canedo’s First Common Law Use

The services recited in Canedo’s pending PLAY’N FOR KEEPS service mark

registration (presently suspended) are “entertainment services, namely, participation

in monster truck competitions, exhibitions and events.” Canedo alleges his

participation in such events with the truck he purchased from Birgy that bears the

28
Opposition No. 91218197

PLAY’N FOR KEEPS mark since June 30, 2007.70 The parties agree that Canedo’s

first “public” use of the PLAY’N FOR KEEPS name was on July 1, 2007.71

Canedo has made of record examples of his use of the truck bearing the PLAY’N

FOR KEEPS mark in monster truck competitions in 2007.72 Canedo testified that he

has been participating in monster truck competitions in connection with the PLAY’N

FOR KEEPS branded truck from 2007 through 2016,73 has provided sample

promotional and media exposure of these events during this time period,74 has

provided a list of dates, locations and names of monster truck events in which he has

participated with the PLAY’N FOR KEEPS truck,75 and has made of record

completed IRS 1099 forms issued to Canedo from monster truck promoters for income

he received for monster truck event participations from 2007-2009 and 2011-2015.76

We find that Canedo first used the PLAY’N FOR KEEPS mark in commerce for

the services alleged in the Amended Notice of Opposition and recited in his pending

70 Amended Notice of Opposition, 7 TTABVUE ¶¶ 12-13.
71 SUF, 26 TTABVUE ¶ 37.
72Canedo Decl., 41 TTABVUE Exh. 1, ¶ 25, Attach. A and B; Borba Opp-Q/A 38 TTABVUE
15-17, ¶¶ 2-10, Exhs. 1-3; Borba App-Q/A 52 TTABVUE 228-29, ¶¶ 23-26.
73Canedo Decl., 41 TTABVUE Exh. 1, ¶ 27-28; Canedo App-Q/A 52 TTABVUE 134, ¶ 54. We
note that discovery in this proceeding closed on August 19, 2015, Board Order 10 TTABVUE,
and that Canedo’s rebuttal testimony period closed on December 26, 2017, when Canedo
requested resumption of proceedings following his completion of filing rebuttal evidence.
Canedo’s motion, 71 TTABVUE.
Canedo Opp-Q/A 41 TTABVUE Exhs. 2(1), 2(3), 2(4); Opp-3rd NOR 42 TTABVUE Exh. 1(2);
74

Opp-4th NOR 43 TTABVUE Attach. 5, 7 and 8.
Canedo Opp-Q/A 41 TTABVUE Exh. 2(2); Opp-4th NOR 43 TTABVUE Attach. 6; LCanedo
75

App-Q/A 52 TTABVUE 181-182, ¶¶ 9-17, Exh. A.
76Opp-4th NOR 43 TTABVUE Attach. 1; LCanedo App-Q/A 52 TTABVUE 184, ¶¶ 26-30, Exh.
B.

29
Opposition No. 91218197

service mark application since July 1, 2007,77 and that he continued to use the mark

in this fashion continuing up through the close of the parties’ discovery period in

August 2015.

G. MMM’s First Use

The services recited in MMM’s opposed PLAY’N FOR KEEPS service mark

application are “entertainment services, namely, performing and competing in motor

sports events.” The parties agree that MMM’s date of first use of its PLAY’N FOR

KEEPS truck anywhere and in commerce was March 1, 2014.78 This was at the

Detroit Autorama, a custom car show, not a monster truck competition event.79

Donley attended this event and, according to MMM, at that time gave her blessing

for use of the PLAY’N FOR KEEPS mark.80

MMM does not “race” its PLAY’N FOR KEEPS truck,81 and the truck “does not

compete” in monster truck events.82 MMM’s sole use of its truck branded with the

PLAY’N FOR KEEPS mark at all public events where the truck has been shown was

77 This is the date of Canedo’s first monster truck performance using the PLAY’N FOR
KEEPS truck at the Napa County Fairgrounds in California. Larry Harmon Pictures Corp.
v. Williams Rest. Corp., 929 F.2d 662, 18 USPQ2d 1292, 1295 (Fed. Cir. 1991) (“the BOZO’S
mark has been used in connection with services rendered to customers traveling across state
boundaries. It is not required that such services be rendered in more than one state to satisfy
the use in commerce requirement.”)

78 SUF, 26 TTABVUE ¶¶ 42-43.
79 Romanini Opp-Q/A 66 TTABVUE 21, ¶¶ 16-21, 22, ¶¶ 31-34, Exhs. 5-6.
80 Romanini App-Q/A 52 TTABVUE 39, ¶¶ 31-34.
81 SUF, 26 TTABVUE ¶ 62.
82SUF, 26 TTABVUE ¶¶ 78, 81; Romanini Opp-Rebuttal Q/A 68 TTABVUE 20, ¶¶ 11-12,
Exh. Three (MMM’s answer to Canedo’s Interrogatory No. 33).

30
Opposition No. 91218197

as a display truck;83 that is, displaying MMM’s PLAY’N FOR KEEPS branded truck

for public view and providing information to viewers about monster trucks and

Birgy.84 We do not find that these activities establish MMM’s use in commerce of the

PLAY’N FOR KEEPS mark for the services recited in MMM’s opposed service mark

application.85 Even if these services did constitute use commerce, the parties agree

that MMM’s first use of the mark was seven years after Canedo’s first use in

commerce.

V. Conclusion

The parties agree that Canedo has standing to bring and maintain this opposition.

The parties also agree that a registration issued to one of them for the PLAY’N FOR

KEEPS mark and applied-for services would likely result in confusion with the

identical mark and activities of the other. We find that neither Canedo nor MMM

acquired service mark rights to the PLAY’N FOR KEEPS mark from Jesse Birgy,86

whether by assignment, license or otherwise; and this is notwithstanding each party’s

ownership of a restored vehicle (or chassis thereof) once used by Birgy (bearing the

83Romanini Opp-Rebuttal Q/A 68 TTABVUE 18, ¶ 3; Romanini Opp-Rebuttal Q/A 68
TTABVUE 20, ¶¶ 11-12, Exh. Two(A) (Invoices and Profit & Loss Statement); Exh. Three
(MMM’s answer to Canedo’s Interrogatory No. 33).
84 SUF, 26 TTABVUE ¶ 79.
85Therefore, MMM can only rely for priority on the filing date of its application, March 25,
2014, which also is more than seven years after Canedo’s first use.
86As we noted earlier in this decision, in view of Birgy’s comment at the time of the December
18, 2006 sale of his truck to Canedo that “with the truck goes the name too,” that Canedo
could “run it or not,” and that Birgy “was done [with monster truck racing] after this [sale,]”
as of that date Birgy abandoned the PLAY’N FOR KEEPS mark.

31
Opposition No. 91218197

mark) to compete in monster truck events. We therefore look to the parties’ own uses

of the mark for the identified services to determine which party has priority.

We further find that Canedo established priority over MMM in the PLAY’N FOR

KEEPS mark for the relevant services, whether expressed as “entertainment

services, namely, participation in monster truck competitions, exhibitions and

events” in Canedo’s application or “entertainment services, namely, performing and

competing in motor sports events” in MMM’s application, as of Canedo’s first use of

the mark in 2007. We additionally find that MMM failed to demonstrate any use of

the PLAY’N FOR KEEPS mark in commerce for the identified services; whether in

2014 or at any time thereafter.

Decision: Canedo’s opposition against MMM’s application to register the PLAY’N

FOR KEEPS mark, Application Serial No. 86231422, is sustained, and registration

is refused.

32