This Opinion is not a
Precedent of the TTAB

Mailed: May 7, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Cheerleader Pub and Grill, Inc.
v.
Private Label and The Bugarie Group LLC
1

________

Opposition No. 91216816
_______

Vivek Puri, Esq. for Cheerleader Pub and Grill, Inc.

Taimark Walkine, pro se owner, for Private Label and
The Bugarie Group LLC.
_____

Before Zervas, Bergsman and Masiello,
Administrative Trademark Judges.

1“Private Label” is identified as the applicant in the original application. On August 16, 2014,
the USPTO recorded an assignment of application Serial No. 86015800 (“the ‘800
application”) involved in this proceeding from Private Label LLC to The Bugarie Group LLC
and The Bugarie Group LLC AKA Bugarie. On June 19, 2015, the USPTO recorded a
corrective assignment “removing the second receiving party previously recorded,” and
identifying The Bugarie Group LLC as the assignee of the ‘800 application.
Opposer states that Private Label LLC “was administratively dissolved on 9/26/2014.”
Opposer’s brief at 6, 101 TTABVUE 9. However, Opposer’s evidence from the Florida
Department of State identifies “9/26/2014” as “Event Date Filed” and it is not clear what this
entry means, and Private Label LLC’s status on the material from the Florida Department
of State is identified as “inactive.” 97 TTABVUE 31.
In view of the foregoing, and because September 26, 2014 is after the assignment of the
application to The Bugarie Group LLC, The Bugarie Group LLC is joined as a party
defendant. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”)
§512.01 (June 2017).
Opposition No. 91216816

Opinion by Zervas, Administrative Trademark Judge:

The Bugarie Group LLC is the owner by assignment of an application to register

the standard character mark CHEERLEADERS BAR & GRILL on the Principal

Register filed on July 22, 2013 by Private Label (alone or together with The Bugarie

Group LLC identified as “Applicant”) under Section 1(b) of the Trademark Act, 15

U.S.C. §1051(b). The application identifies the following goods and services:

“clothing, for women, men and children, namely, shirts,
long-sleeved shirts, T-shirts, under shirts, night shirts,
rugby shirts, polo shirts, cardigans, jerseys, uniforms,
scrubs not for medical purposes, smocks, dress shirts,
pants, trousers, slacks, jeans, culottes, cargo pants, stretch
pants, denim jeans, overalls, coveralls, jumpers, jump
suits, shorts, boxer shorts, tops, stretch tops, tube tops,
crop tops, tank tops, tankinis, halter tops, sweat shirts,
hooded sweat shirts, sweat jackets, sweat shorts, sweat
pants, wraps, warm-up suits, jogging suits, track suits,
play suits, blouses, skirts, dresses, gowns, sweaters, vests,
fleece vests, pullovers, snow suits, parkas, capes, anoraks,
ponchos, cloaks, shrugs, shawls, pashminas, jackets,
dinner jackets, reversible jackets, wind-resistant jackets,
shell jackets, sports jackets, golf and ski jackets, jean
jackets, coats, heavy coats, over coats, top coats, petticoats,
blazers, suits, tuxedos, cummerbunds, cuffs, collars,
removable collars, collar protectors, turtlenecks, cloth ski
bibs, swimwear, beachwear, tennis wear, surf wear, ski
wear, layettes, infant wear, infants sleepers, booties, baby
bibs not of paper, caps, swim caps, berets, beanies, hats,
visors, headbands, wrist bands, sweat bands, headwear,
ear muffs, aprons, scarves, bandanas, belts, suspenders,
neckwear, ties, neckerchiefs, pocket squares, ascots,
underwear, briefs, swim and bathing trunks, bras, sports
bras, panties, thongs, G-strings, socks, loungewear, robes,
underclothes, pajamas, sleepwear, night gowns, nighties,
lingerie, camisoles, negligees, chemises, chemisettes, slips,
sarongs, leg warmers, hosiery, pantyhose, body stockings,
knee highs, leggings, tights, leotards, body suits, unitards,
body shapers, gloves, mittens, rain slickers, rainwear,
footwear, shoes, mules, sneakers, boots, galoshes, sandals,
flip-flops, and slippers, sports wear [sic], namely, T-shirts,

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Opposition No. 91216816

shorts, sweaters, hats, pants, skirts, jackets, sneakers,
sports bras” in International Class 25; and

“restaurant and bar services; food catering; and carry out
restaurant services” in International Class 43.2

Applicant disclaimed the exclusive right to use the term BAR & GRILL.

On July 31, 2013, Applicant filed an Amendment to Allege Use in which it asserts

April 6, 2010 as the date of first use anywhere and July 26, 2013 as the date of first

use of the mark in commerce for the goods and services in both International Classes.

The USPTO accepted the Amendment to Allege Use on December 10, 2013.

Cheerleader Pub and Grill, Inc. (“Opposer”) asserts in its second amended Notice

of Opposition that it used the mark CHEERLEADER PUB AND GRILL for

restaurant and bar services through certain pre-market activities since at least as

early as December 2007; that it is the owner of application Serial No. 86097044 for

the mark CHEERLEADER PUB AND GRILL and Design, filed October 21, 2013, and

claiming first use anywhere on June 10, 2013 and first use in commerce at least as

early as July 5, 2013; and priority and likelihood of confusion between its marks and

Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. §1052(d). In addition,

Opposer asserts (i) non-use of Applicant’s mark for “‘restaurant and bar service[s]’

and upon a lengthy list of clothing” set forth in its Amendment to Allege Use;3 and

(ii) fraud because Applicant submitted a specimen with its Amendment to Allege Use

2 Application Serial No. 86015800.
3The Board characterized Opposer’s claim in its denial of Opposer’s summary judgment
motion on December 28, 2015 as “nonuse at the time Applicant filed its Amendment to Allege
Use of the applied-for mark for restaurant and bar services, and galoshes and mittens.”
45 TTABVUE 3.

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Opposition No. 91216816

that depicts a third-party’s sports bar, and the specimen was submitted with the

intent to deceive the USPTO.

Applicant, in its Answer, denied the salient allegations in the amended Notice of

Opposition and raised certain “affirmative defenses,” including fraud in connection

with Opposer’s application, laches, unclean hands, acquiescence and estoppel. Most

are amplifications of Applicant’s denials. Additionally, Applicant’s allegation

regarding Opposer’s fraud in connection with its application is not one we entertain;

the Board has no jurisdiction over a pleaded application that is still pending before

an examining attorney. See Home Juice Co. v. Runglin Cos., 231 USPQ 897, 898 n.7

(TTAB 1986) (“The Board has no jurisdiction over petitioner’s application for

registration.”); Int’l Telephone and Telegraph Corp. v. Int’l Mobile Machines Corp.,

218 USPQ 1024, 1026 (TTAB 1983) (counterclaim to refuse plaintiff’s pending

applications was improper in view of Board’s lack of jurisdiction over applications).

As for the remaining “affirmative defenses,” Applicant did not pursue them in its

appeal brief and thereby waived such defenses. Harry Winston, Inc. v. Bruce Winston

Gem Corp., 111 USPQ2d 1419, 1422 (TTAB 2014).

I. The Record

In addition to the pleadings, the record automatically includes the involved

application file pursuant to Trademark Rule 2.122(b)(1), 37 C.F.R. §2.122(b)(1). The

parties have submitted the following evidence:

? The depositions upon written questions of Raman Puri, Opposer’s

attorney, vice-president and CFO; George Esser, principal and owner of SBWE

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Opposition No. 91216816

Architects; and Vivek Puri, Opposer’s vice-president, secretary and general

counsel, and exhibits for each deponent. 85 TTABVUE.

? Opposer’s first notice of reliance identifying Applicant’s statements in its

application and pleadings, and Applicant’s exhibits to pleadings (but not

identifying any particular statements). 90 TTABVUE.4

? Opposer’s second notice of reliance (submitting exhibits 48-63 consisting

of pages from Twitter and Facebook, and webpages). 91 TTABVUE.

? Opposer’s third notice of reliance (submitting exhibits 64-69 consisting of

official records). 92 TTABVUE.

? Opposer’s fourth notice of reliance (submitting exhibits 8-13, 15-19, 22,

41-47 consisting of pages from printed publications, the affidavit of Mr. Esser,

the affidavit of Raman Puri, official records, Facebook pages, webpages, a

photograph, Internet postings from an unidentified source, correspondence

from the City of Columbia, Boone County, Missouri to Mr. Esser regarding

plans submitted for Holiday Inn Express Cheerleaders Bar and Grill, pages

identified as “Radios [sic] Script,” contracts, invoices, and a ledger showing

“Spot Times” and “Program Log”). 94 TTABVUE.

? Opposer’s fifth notice of reliance (generally identifying Applicant’s

answers to Opposer’s interrogatories, “Admission” and “RFPD” but not

4As previously noted, the application and pleadings are of record pursuant to Trademark
Rule 2.122(b)(1).

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Opposition No. 91216816

submitting any documents with the notice or identifying any particular

answers). 93 TTABVUE.5

? Applicant’s first notice of reliance (submitting exhibits A-N consisting of

official records, business documents, local ordinances, Raman Puri’s affidavit,

Mr. Esser’s affidavit and a webpage). 95 TTABVUE.

? Applicant’s second notice of reliance (submitting exhibits O-Y consisting

of material taken from the Internet, official records, Opposer’s answers to

Applicant’s interrogatories, the transcripts of depositions upon written

questions of Mr. Esser, Vivek Puri and Raman Puri, with exhibits, and a

photograph). 96 TTABVUE.6

? Applicant’s third notice of reliance (submitting exhibits 1-20 consisting of

Opposer’s pleadings, official records, Internet search results on the GoDaddy

website, screenshots of webpages, and an “Investor’s Presentation” for

Cheerleaders Bar & Grill). 97 TTABVUE.

5 The Board did not receive any documents accompanying the notice of reliance. It is a party’s
responsibility to ensure that documents it desires to be entered into the record have been
uploaded into the evidentiary record. See Weider Publ’ns, LLC v. D&D Beauty Care Co., 109
USPQ2d 1347, 1350-51 (TTAB 2014). If Opposer intended us to hunt through the record to
locate any such documents or their answers, we point out that the Board’s order denying the
summary judgment motion stated, “the evidence submitted in connection with their motions
for summary judgment is of record only for consideration of these motions. To be considered
at final hearing, any such evidence must be properly introduced in evidence during the
appropriate trial periods.” 45 TTABVUE 12.
6 Exhibits U, V and W are duplicate copies of the transcripts and exhibits of the testimonial
depositions upon written questions of Messrs. R. Puri, V. Puri and Esser. Because Opposer
submitted this evidence, Applicant need not have submitted these items again. Once
testimony or any other evidence is introduced, it is of record for any purpose, and the adverse
party need not take any action in order to rely on it. See Bos. Athletic Ass’n v. Velocity, LLC,
117 USPQ2d 1492, 1494 n.7 (TTAB 2015) (testimony deposition made of record by plaintiff
need not have been filed under Notice of Reliance by defendant); Am. Lebanese Syrian Assoc’d
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1025 (TTAB 2011).

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Opposition No. 91216816

? Applicant’s fourth notice of reliance (submitting exhibits 21-40 consisting

of screenshots of Internet pages, the USPTO copy of Applicant’s Answer to

Opposer’s amended Notice of Opposition (with exhibits), transfer agreements,

the declaration of Juan Martinez, a former potential business partner of Mr.

Walkine, the affidavits of Jessica Philbrook, a business partner of Mr. Walkine,

and Pascal Desir, graphic designer and printer commissioned by, inter alia,

The Bugarie Group).7 98 TTABVUE.

? Applicant’s fifth notice of reliance (submitting exhibits 408-47 consisting

of the declaration or affidavits of Kayla M. Golden, Joshua Domond and

Cassandra Thomson, three of Applicant’s clients, invoices, marketing material

and documents from Opposer’s trademark application (Serial No. 86079044)).

99 TTABVUE.

? Applicant’s sixth notice of reliance submitting Mr. Walkine’s affidavit,

and exhibits thereto. 100 TTABVUE.

II. Preliminary Issues

A. The Parties’ Evidentiary Submissions/Opposer’s Evidentiary Objections

Many submissions by both parties pursuant to the notice of reliance procedure do

not comply with Trademark Rule 2.122(g). Because both parties have submitted non-

7 The declarations should have been submitted as testimony and not under a notice of
reliance. See WeaponX Perf. Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034,
1037 (TTAB 2018) (“Although the better practice would have been for Applicant to file and
serve separately copies of the Messrs. Herndon and Polter testimony declarations, instead of
attaching them as exhibits to its notice of reliance, Applicant’s failure to do so is of no
consequence.”).
8Two different exhibits are labeled as Exhibit 40. One was submitted with Applicant’s fourth
notice of reliance and the other was submitted with Applicant’s fifth notice of reliance.

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Opposition No. 91216816

compliant evidence, we consider the parties to have consented to the submission by

the other party of non-complying evidence and have considered all of such evidence.

See TBMP §704.02.

In addition, Opposer objected to those affidavits submitted by Applicant which do

not state that they are under oath and “the notary acknowledgement is insufficient

to convert these unsworn statements into a valid affidavit.” Opposer, however, with

its fourth notice of reliance, submitted the affidavits of Messrs. Esser and R. Puri9

which both bear a statement by a notary and which do not state that the affidavit is

made under oath. Because both parties have submitted statements that are not under

oath, we do not exclude any of them from our consideration. Opposer’s evidentiary

objections10 set forth in an appendix to Opposer’s main brief are therefore overruled.

B. Assignment of Intent-to-Use Application11

Private Label filed an Amendment to Allege Use on July 31, 2013, but on July 25,

2013 assigned the applied-for mark to The Bugarie Group, identified as the parent

company of Private Label LLC. The assignment document states in relevant part:

9 94 TTABVUE 7-9, 12-13.
10 101 TTABVUE 29-33.
11The second amended Notice of Opposition does not include a claim regarding an improper
transfer of an intent-to-use application, but Opposer raises arguments regarding such an
improper transfer in its brief. Fed. R. Civ. P. 15(b) provides, in pertinent part, that when
issues not raised by the pleadings are tried by the express or implied consent of the parties,
they shall be treated in all respects as if they had been raised in the pleadings. Implied
consent to the trial of an unpleaded issue can be found only where the non-offering party (1)
raised no objection to the introduction of evidence on the issue, and (2) was fairly apprised
that the evidence was being offered in support of the issue. TBMP §507.03(b). We find that
the issue was tried by the implied consent of the parties. While Applicant does not discuss
the issue in its brief, Applicant introduced transfer documents concerning the transfer of the
business of Private Label LLC to The Bugarie Group.

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Opposition No. 91216816

The record also includes a Company Transfer Agreement dated July 25, 2013,

between Private Label LLC (“Company” or “Transferor”) and The Bugarie Group LLC

(“Transferee”), stating in relevant part:12

The Transferor hereby [t]ransfer[s] to the Transferee the
entire Private Label Company, all of Company’s property13
including all Intellectual property and all right, title and
interest in the Company, and to any and all of the following
that exist as of this 25th day of July, 2013, including all the
goodwill associated with the Company and all other rights,
including all common-law rights, relating to the Company
to the extent such rights exist: (a) Intellectual Property and
any common law rights relating to the Company (b) any
and all Intellectual Property Rights claiming or covering
such Intellectual Property and common law rights and (c)
any and all causes of action that may have accrued to the
undersigned in connection with such Intellectual Property
and common law rights and/or Intellectual Property Rights
and (d) any and all Company documents, menus,
restaurant concepts and ideas, entities and all other
divisions of the Company. Company further agrees to
execute and deliver the Assignment of all patents and
patent applications, all trademarks and pending
applications, and copyrights. The rights Transferee holds
are the same as the rights that would have been held by
Transferor if this Transfer had not been made. Those rights

1298 TTABVUE 219-222. Because both parties have been referring to Applicant as Private
Label LLC, we assume that Private Label, identified as the applicant in the application, is
intended to be Private Label LLC but was misidentified in the application.
13“Company Property” is defined to include “trademark applications.” See ¶ 4, 98 TTABVUE
219-220.

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Opposition No. 91216816

include all the goodwill associated with the Company, all
claims for royalties for licensing of the Company’s
Intellectual Property and damages by reason of past
infringements of the Company’s Intellectual Property, with
the right to sue for and collect the same for its own use and
benefit, for the use, benefit and on behalf of its successors,
assigns, and other legal representatives.14

An applicant cannot assign an application under §1(b) of the Trademark Act, 15

U.S.C. §1051(b), before the applicant files either an Amendment to Allege Use under

15 U.S.C. §1051(c) or a Statement of Use under 15 U.S.C. §1051(d), except to a

successor to the applicant’s business, or portion of the business to which the mark

pertains, if that business is ongoing and existing. Section 10 of the Trademark Act,

15 U.S.C. §1060; 37 C.F.R. §3.16. See also TRADEMARK MANUAL OF EXAMINING

PROCEDURE (“TMEP”) §501.01(a) (Oct. 2017). The assignment of an intent-to-use

application to someone who is not the successor to the applicant’s business before

filing an allegation of use renders the application and any resulting registration void.

See Trademark Act §10(a)(1) (“no application to register a mark under section 1051(b)

of this title shall be assignable prior to the filing of an amendment under section

1051(c) of this title to bring the application into conformity with section 1051(a) of

this title or the filing of the verified statement of use under section 1051(d) of this

title, except for an assignment to a successor to the business of the applicant, or

portion thereof, to which the mark pertains, if that business is ongoing and

existing.”); Clorox Co. v. Chem. Bank, 40 USPQ2d 1098, 1104 (TTAB 1996). In this

case, the Company Transfer Agreement provides for the transfer of “all of Company’s

14 98 TTABVUE 219.

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Opposition No. 91216816

property including all Intellectual property and all right, title and interest in the

Company” to The Bugarie Group LLC. Thus, the ‘800 application and Private Label

LLC’s business has been transferred to The Bugarie Group LLC. We find that the

‘800 application was not improperly assigned because The Bugarie Group LLC is a

successor to the business of Private Label LLC.

C. Applicant’s Evidentiary Objections

The Board’s suspension order dated November 25, 2016 ordered that any redirect

questions to the depositions on written questions must be served no later than

November 28, 2016. On April 4, 2017, Applicant filed a Notice of Objections to

“Opposer’s Redirect of Written Questions”15 stating that “the service of the Opposer’s

redirect questions [for Mr. Esser’s deposition upon written questions] was January

4th, 2017, which is well outside the November 28th, 2016 deadline and the redirect

questions are therefore untimely.”16 The record does not reflect when “Opposer’s

Redirect of Written Questions” was served on Applicant; Applicant’s motion does not

include any supporting materials. In view thereof, Applicant’s objection is overruled.

Applicant’s Notice of Objections also raises objections on the basis of speculation

to four of Mr. Esser’s answers in his deposition upon written questions.17 Applicant’s

objections are overruled, and we have given the answers the weight they are due.

15 “Opposer’s Redirect of Written Questions” is located at 85 TTABVUE 43 et seq.
16 87 TTABVUE 2-3.
17 Id. at 3.

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Opposition No. 91216816

III. Standing

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

registration. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111

USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94

USPQ2d 1942, 1945 (TTAB 2010). Section 13 of the Trademark Act permits an

opposition by “[a]ny person who believes that he would be damaged by the

registration of a mark upon the principal register . . . .” 15 U.S.C. §1063. To establish

its standing, Opposer must demonstrate that it possesses a “real interest” in this

proceeding beyond that of a mere intermeddler, and a “reasonable basis” for its belief

of damage. “A ‘real interest’ is a ‘direct and personal stake’ in the outcome of the

proceeding.” Exec. Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1179

(TTAB 2017) (quoting Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026

(Fed. Cir. 1999)). “A claim of likelihood of confusion that ‘is not wholly without merit,’

including prior use of a confusingly similar mark, may be sufficient ‘to establish a

reasonable basis for a belief that one is damaged.’” Id. (quoting Lipton Indus., Inc. v.

Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982)).

Applicant admitted in its Answer to the second amended Notice of Opposition that

Opposer is the owner of application Serial No. 86097044 for the mark

; and that “Opposer’s application has received an Office

Action from its examiner and the examiner of that application has advised of a

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Opposition No. 91216816

potential refusal for likelihood of confusion under §2d over the Applicant’s mark

CHEERLEADERS BAR & GRILL, App. No. 86015800, and a suspension of Opposer’s

application.”18 We therefore find that Opposer has shown a real interest in this

proceeding and a reasonable basis for its belief of damage from registration of

Applicant’s mark, and thus has standing. See Empresa Cubana Del Tabaco, 111

USPQ2d at 1062; Weatherford/Lamb Inc. v. C&J Energy Servs. Inc., 96 USPQ2d

1834, 1837 (TTAB 2010) (standing established by submission of USPTO Office action

suspending pleaded application pending the possible refusal to registration based on

an alleged likelihood of confusion).

Applicant argues that “it is apparent that Puri Group of Enterprises, Inc. has no

standing to bring any claims as it relates to this opposition proceeding.”19 Puri Group

of Enterprises, Inc., described by Applicant as “a sister concern of the Opposer” with

a “vested interest in, Opposer,”20 is not a plaintiff in this proceeding and hence the

question of standing by Puri Group of Enterprises, Inc. is a non-issue in this

proceeding.

IV. Fraud

We now turn to Opposer’s fraud claim because a claim of fraud concerns all of the

goods or services in a particular International Class. In this case, Opposer’s fraud

18Answer to second amended Notice of Opposition ¶ 3, 70 TTABVUE 5. See also 99 TTABVUE
55-67.
19 103 TTABVUE 20.
20 103 TTABVUE 19.

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Opposition No. 91216816

claim does not involve Applicant’s International Class 25 goods; it concerns only the

International Class 43 services. Opposer pleads:

10. On July 31, 2013, Applicant submitted with its
Amendment to Allege Use of its application signed by Mr.
Taimark Walkine a specimen of a photograph of the
Peppermill Resort Hotel sports bar in Reno, NV, an
establishment not owned by Applicant.21

11. Before submission of Applicant’s Amendment to Allege
Use, a warning from the TEAS system preceded the
signature of Mr. Walkine on the Amendment to Allege Use,
the warning includes in part, “18 U.S.C. §1001” and “all
statements made of his/her own knowledge are true; and
that all statements made on information and belief are
believed to be true.”

12. After the warning from TEAS, Mr. Walkine knowingly
signed the Amendment to Allege Use with intent to deceive
the Office by uploading the photograph of the Peppermill
Resort Hotel sports bar and by doing so following the above
warning, about statements being true in a filing, over the
name and signature of Mr. Taimark Walkine.

13. For the above reasons, the Applicant submitted a
specimen by fraud and has not made a showing of use of
the mark CHEERLEADERS BAR & GRILL in commerce
for “restaurant and bar service”, and the Opposer will be
damaged by the registration of the mark
CHEERLEADERS BAR & GRILL to the Applicant. 22

Applicant’s specimens of use, a screenshot of a Facebook page and a Twitter page,

which Applicant submitted on July 31, 2013, are depicted below:

21In its Answer to the second amended Notice of Opposition, Applicant states, “Applicant
admits the allegations set forth in Paragraph 10 of Opposer’s Second Amended Notice of
Opposition; however, only to the extent that the use of the specimen stated therein was
uploaded by mistake, which has since been rectified.” Applicant denied the allegations in
paragraph Nos. 11-13. 70 TTABVUE 7.
22 69 TTABVUE 5-6.

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Opposition No. 91216816

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Opposition No. 91216816

A claim of fraud requires a plaintiff to allege that an applicant for registration

knowingly made a false, material misrepresentation of fact in connection with the

application with the intent to deceive the USPTO to obtain a registration to which it

otherwise is not entitled. In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941

(Fed. Cir. 2009); Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483,

1484 (Fed. Cir. 1986). Opposer merely alleges that the specimen includes a

photograph of “an establishment not owned by Applicant,” and that Applicant “has

not made a showing of use of the mark CHEERLEADERS BAR & GRILL in commerce

for ‘restaurant and bar service.’” Opposer’s allegation that Applicant “has not made a

showing of use of the mark” only challenges the sufficiency of the specimen (which

the USPTO has accepted) and is not an allegation that Applicant has never used the

mark in connection with restaurant and bar services. Opposer therefore has not

alleged a misrepresentation of fact material to the issuance of a registration for

Applicant’s mark, and we dismiss the fraud claim as improperly pleaded.

Even if the fraud claim had been properly pleaded, Opposer has not carried its

burden to prove that Applicant fraudulently obtained the USPTO’s approval to

register its applied-for mark. A party opposing registration of a trademark on the

basis of fraud bears a heavy burden of proof. In re Bose, 91 USPQ2d at 1939 (citing

W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 377 F.2d 1001, 153 USPQ 749, 750

(CCPA 1967)). Indeed, “the very nature of the charge of fraud requires that it be

proven ‘to the hilt’ with clear and convincing evidence. There is no room for

speculation, inference or surmise and, obviously, any doubt must be resolved against

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Opposition No. 91216816

the charging party.” Id. (quoting Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033, 1044

(TTAB 1981)). As emphasized in In re Bose:

Subjective intent to deceive, however difficult it may be to
prove, is an indispensable element in the analysis. Of
course, “because direct evidence of deceptive intent is
rarely available, such intent can be inferred from indirect
and circumstantial evidence. But such evidence must still
be clear and convincing, and inferences drawn from lesser
evidence cannot satisfy the deceptive intent requirement.”
Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d
1357, 1366 [88 USPQ2d 1001] (Fed. Cir. 2008). When
drawing an inference of intent, “the involved conduct,
viewed in light of all the evidence … must indicate
sufficient culpability to require a finding of intent to
deceive.” Kingsdown [Med. Consultants, Ltd. v. Hollister
Inc., 863 F.2d 867, 9 USPQ2d 1384, 1392 (Fed. Cir. 1988)
(en banc)].

In re Bose, 91 USPQ2d at 1941.

Opposer offers no specific discussion on the element of intent in its brief and

Opposer has no persuasive evidence that Applicant intended to deceive the USPTO

into granting a registration when it submitted the specimens of use with its

Amendment to Allege Use. Opposer at best would have us infer an intent to deceive

because Applicant’s specimen of use was not adequate, although it would have

appeared to be adequate to an examining attorney; or because Applicant sought to

correct its amendment to allege use by filing substitute specimens on July 15, 2014

(see discussion infra) after the Board instituted this opposition proceeding.23 These

facts are not clear and convincing evidence that Applicant had an intent to deceive.

While false statements regarding use of a mark are material, see Nationstar Mortg.

23 101 TTABVUE 14.

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Opposition No. 91216816

LLC v. Ahmad, 112 USPQ2d 1361, 1365 (TTAB 2014) (citing Hachette Filipacchi

Presse v. Elle Belle LLC, 85 USPQ2d 1090, 1093 (TTAB 2007)), “[t]here is no fraud if

a false misrepresentation is occasioned by an honest misunderstanding or

inadvertence without a willful intent to deceive.” In re Bose, 91 USPQ2d at 1942;

Knorr-Nahrmittel Akg. v. Havland Int’l, Inc., 206 USPQ 827, 834 (TTAB 1980) (“The

claim of fraud will not be sustained if it can be proven that the statement, though

false, was made with a reasonable and honest belief that it was true.”). “[A]bsent the

requisite intent to mislead the PTO, even a material misrepresentation would not

qualify as fraud under the Lanham Act . . . .” In re Bose, 91 USPQ2d at 1940 (citing

King Auto., Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 212 USPQ 801, 803 n.4

(CCPA 1981)). Suffice it to say, Opposer offered no evidence regarding Applicant’s

intent on which we could make a finding of fraud.

V. Motion to Amend

We now turn to Applicant’s motion to amend. On July 15, 2014, after the

institution of this proceeding, Applicant filed a “Voluntary Amendment” which was

essentially an amended Amendment to Allege Use with the Trademark Examining

Operation (“TMEO”) in which it submitted substitute specimens, and sought to

amend the identification of goods as well as Applicant’s first use in commerce date.

On July 17, 2014, Applicant submitted an amendment to the identification of services

with the TMEO, also listing an earlier first use in commerce date. The TMEO did not

have jurisdiction of the ‘800 application when Applicant made these filings. See

TBMP §514.01 (“A request to amend an application involved in a Board proceeding

must be filed with the Board, not with the Trademark Operation.”). In addition,

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Opposition No. 91216816

amendments to allege use may only be withdrawn prior to approval of a mark for

publication. See Trademark Rule §2.76(f), 37 C.F.R. §2.76(f). These filings hence are

given no further consideration.

On August 18, 2014, and then again on December 28, 2015, Applicant filed with

the Board motions to amend its International Class 25 goods, to “clothing for women,

men and children, namely, T-shirts” and its International Class 43 services to “food

catering.” The Board, in its order dated September 16, 2014, deferred consideration

of the August 18, 2014 motion until final decision. On January 15, 2016, Opposer filed

its opposition to Applicant’s December 28, 2015 motion.

In moving to delete all of its goods and services except for “clothing for women,

men and children, namely, T-shirts” and “food catering,” Applicant has “essentially

agreed to accept judgment with respect to those” goods and services which Applicant

seeks to delete. Grand Canyon W. Ranch LLC v. Hualapai Tribe, 78 USPQ2d 1696,

1698 (TTAB 2006). The operative pleading at the time when Applicant moved to

amend its identification of goods and services was the original notice of opposition

which asserted two claims, (i) likelihood of confusion in connection with Applicant’s

goods and services, and (ii) non-use of the mark on “restaurant and bar service” and

“galoshes and mittens.”

With regard to the International Class 25 goods, inasmuch as the proposed

amendment limits the goods, it hereby is approved and entered. See Trademark

Rule 2.71(a). Applicant’s motion to amend is granted and judgment is entered against

Applicant on Opposer’s claim of likelihood of confusion for those goods which

Applicant seeks to delete from its identification of goods. Judgment is also entered

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Opposition No. 91216816

against Applicant on Opposer’s non-use claim, but only for those goods which were

the subject of the non-use claim operative at that time, i.e., galoshes and mittens. See

TBMP §514.

Applicant’s motion is denied with regard to the International Class 43 services,

however, because the specimens of record (which were submitted with the original

Amendment to Allege Use on July 15, 2014 and duplicated above in our discussion of

fraud) do not support “food catering” services. See Trademark Rules 2.56(a) and 2.76,

37 C.F.R. §§2.56(a) and 2.76. See also Drive Trademark Holdings LP v. Inofin, 83

USPQ2d 1433, 1435-36 (TTAB 2007) (amendment to identification denied in part

because not supported by specimens of use). Inasmuch as the amendment is denied

with regard to the International Class 43 services, judgment is not entered against

Applicant for those services at issue under the operative grounds at the time the

motions to amend were filed; see, however, our discussion, infra, of the non-use

ground tried by implied consent.

The goods and services remaining in the application at this point are:

“clothing for women, men and children, namely, T-shirts”
in International Class 25; and

“restaurant and bar services; food catering; and carry out
restaurant services” in International Class 43.

VI. Priority and Likelihood of Confusion

Next, we consider Opposer’s claim of priority and likelihood of confusion. Section

2(d) of the Trademark Act permits an opposer to file an opposition on the basis of

ownership of “a mark or trade name previously used in the United States . . . and not

abandoned.” To establish priority, Opposer must show proprietary rights in a mark

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Opposition No. 91216816

as to which Applicant’s mark gives rise to a likelihood of confusion. Otto Roth & Co.

v. Universal Foods Corp., 640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA 1981). These

proprietary rights may arise from a prior registration, prior trademark or service

mark use, prior use as a trade name, prior use analogous to trademark or service

mark use, or any other use sufficient to establish proprietary rights. Herbko Int’l Inc.

v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002). Opposer

has not pleaded a prior registration or an earlier filed application; it relies on its

common law use of its unregistered CHEERLEADER PUB AND GRILL trademark

and on use analogous to trademark or service mark use of CHEERLEADER PUB

AND GRILL.

Opposer’s acquisition of proprietary rights in its CHEERLEADER PUB AND

GRILL mark must precede Applicant’s actual or constructive use of its mark. See

Larami Corp. v. Talk to Me Programs Inc., 36 USPQ2d 1840, 1845 (TTAB 1995)

(parties may rely on constructive use filing dates for purposes of priority); Zirco Corp.

v. Am. Tel. & Tel. Co., 21 USPQ2d 1542, 1543-45 (TTAB 1991) (constructive use in

Section 7(c) of the Trademark Act, 15, U.S.C. §1057(c), establishes nationwide

priority rights from the filing date of the application). In other words, it is Opposer’s

burden to demonstrate that it owns a trademark that was used, or has made use

analogous to trademark use, prior to Applicant’s first use or constructive use of its

mark. Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009)

(“applicant may rely without further proof upon the filing date of its application as a

‘constructive use’ date for purposes of priority.”); Life Zone Inc. v. Middleman Grp.

Inc., 87 USPQ2d 1953, 1960 (TTAB 2008) (while either party may rely on the filing

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Opposition No. 91216816

date of its application as a “constructive use date” for purposes of priority, when the

opposer’s filing date is later in time it provides the opposer “no basis for . . . priority”).

Opposer therefore must establish a first use date prior to the filing date of Applicant’s

application, July 22, 2013, Applicant’s constructive priority date.24

With regard to actual trademark use, Mr. Vivek Puri unequivocally testified that

Opposer’s Cheerleader Pub and Grill opened to the public on September 2013. This

date is later than Applicant’s July 22, 2013 constructive first use date and hence does

not establish priority for Opposer.

Turning to use analogous to trademark use, “[u]nder the theory of analogous use,

a party may rely upon pre-sale activities in order to ‘tack on’ non-trademark usage

for purposes of establishing priority under Section 2(d).” Westrex Corp. v. New Sensor

Corp., 83 USPQ2d 1215, 1218 (TTAB 2007) (citing 3 MCCARTHY ON TRADEMARKS AND

UNFAIR COMPETITION §20:16 (4th ed. 1996)). The Court of Appeals for the Federal

Circuit summarized the test for the sufficiency of analogous use efforts:

[W]hether [the use] was sufficiently clear, widespread and
repetitive to create the required association in the minds of
the potential purchasers between the mark as an indicator
of a particular source and the [product or] service to become
available later.

T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1882 (Fed. Cir. 1996).

The analogous trademark use also must be shown to have had a substantial impact

on the purchasing public, id., and the user must establish an intent to appropriate

24There is evidence in the record that Applicant used its mark for “food catering” prior to the
date it filed its application. See discussion infra. Because the application also seeks
registration for T-shirts, and there is no evidence regarding the first use of Applicant’s mark
for T-shirts, at a bare minimum, Opposer must beat the filing date of Applicant’s application.

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Opposition No. 91216816

the mark. Id. at 1883. In addition, the “tacking” theory under which use analogous to

trademark use operates requires that actual technical trademark use must follow

within a commercially reasonable period of time. See Dyneer Corp. v. Auto. Prod. plc,

37 USPQ2d 1251, 1256 (TTAB 1995) (use analogous to trademark use can create

priority but “actual, technical trademark use must follow the use analogous to

trademark use within a commercially reasonable period of time.”).

Opposer pleaded the following with regard to use analogous to trademark use:25

1. Since at least as early as December 2007, Opposer has
utilized the trademark CHEERLEADER PUB AND
GRILL for restaurant and bar services, in international
class 043, said use commencing with discussions of the
name CHEERLEADER PUB AND GRILL for a dining
concept by the development committee of the Puri Group of
Enterprises, Inc. as a sister concern of Opposer, continuing
through engagement of an architect for design of a
restaurant of CHEERLEADER PUB AND GRILL during
2008 and 2009, construction of the CHEERLEADER PUB
AND GRILL restaurant, Opposer being in privity and
lineage with the Puri Group of Enterprises, Inc., Opposer
implementing the dining concept of the development
committee of the Puri Group of Enterprises, Inc., said use
further having been conducted in interstate commerce, and
with Opposer continuing to make use of its trademark upon
said services in commerce. Opposer’s activities have had a
substantial impact on the public associating
CHEERLEADER PUB AND GRILL trademark with
restaurant services. Opposer has invested a substantial
amount of resources in promoting its CHEERLEADER
PUB AND GRILL trademark. As a result, the trademark
has become distinctive of Opposer’s services, and now
represents substantial goodwill for the Opposer.

Opposer relies on activities beginning in 1996 when Mr. Esser was retained to

provide architectural services. Thereafter, a floor plan was drafted in February 2010,

25 69 TTABVUE 2-3.

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Opposition No. 91216816

construction was approved in April 2012, Opposer was incorporated in June 2013, an

application for a business license was submitted in July 2013, and an application for

signage was made and approved in August 2013.26 Potential purchasers were not

exposed to these activities and hence they do not aid Opposer in establishing use

analogous to trademark use. See, e.g., Liqwacon Corp. v. Browing-Ferris Ind., Inc.,

203 USPQ 305, 309 (TTAB 1979) (“while prior use of a trade name may be sufficient

to give rise to superior rights in a mark, the mere act of incorporation, in itself, does

not establish such priority of use.”); Comput. Food Stores Inc. v. Corner Store

Franchises, Inc., 176 USPQ 535, 539 (TTAB 1973) (“These [letters, and negotiations

with architects, builders, and prospective venders of equipment for use in a

contemplated store] were more or less internal or organizational activities which

would not generally be known by the general public and there is nothing to suggest

that an effort was made in this direction during this period.”).

However, Raman Puri, in response to the question “was the general public aware

of Cheerleader Pub and Grill between the years 2009 and 2010,” stated:

Yes, the general public was aware because numerous of the
Puri Group properties’ surveys were given to people that
stayed at our hotels for their response for what kind of
concept they would like, plus what they felt about our
concept itself. These surveys were given as survey cards in
their key packets.”27

This testimony is not sufficient to establish a priority date because there is no

indication of how many surveys were given, how many hotel guests considered the

26Esser Depo., 85 TTABVUE 41-45; Applicant’s First NOR, Exhs. A, B, C, G and G-1, 95
TTABVUE 6-11, 20-21.
27 85 TTABVUE 14-15.

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Opposition No. 91216816

survey and responded to it, and what the survey indicated about the mark

CHEERLEADER PUB AND GRILL, if anything. In addition, Raman Puri pointed

out that “[n]o active marketing was done in 2009 and 2010, as the restaurant was not

open.”28 Vivek Puri testified that construction of the Cheerleader Pub and Grill did

not begin until May or June of 2012.29

Opposer submitted with its fourth notice of reliance a document containing what

appear to be copies of online postings, perhaps from a Facebook page.30 Opposer

identifies this document as “Social Media Printout.”31 Two postings are duplicated

below:32

28 85 TTABVUE 15.
29 85 TTABVUE 67.
30 94 TTABVUE 32-44. See particularly 94 TTABVUE 41.
31 94 TTABVUE 3.
32 94 TTABVUE 41, 42.

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Opposition No. 91216816

Opposer did not discuss these postings in its brief, and there is no indication where

these postings appeared and how many potential purchasers were exposed to them.

In addition, we may not consider the dates set forth because “Internet evidence is

only probative for what it shows on its face and not the truth of what has been

printed.” WeaponX Perf. Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d at

1040. The dates have not been independently verified and hence have no probative

value on the question of priority.

In view of the foregoing, we find that Opposer has not established that its

activities prior to July 22, 2013, had a substantial impact on the purchasing public

that created an association between its mark and services. Herbko Int’l, Inc. v. Kappa

Books, Inc., 64 USPQ2d at 1378. Thus, based on the record before us, Opposer did not

prove that it is the owner of proprietary rights in CHEERLEADER PUB AND GRILL

prior to the filing date of Applicant’s application. Inasmuch as Opposer has not

established its priority, Opposer cannot prevail on its claim of likelihood of confusion

and its claim under Section 2(d) is dismissed.

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Opposition No. 91216816

VII. Non-Use

Opposer’s claim of non-use set forth in the second amended Notice of Opposition

is as follows:

6. On July 31, 2013 Applicant filed an Amendment to
Allege Use in commerce for its CHEERLEADERS BAR &
GRILL application signed by Mr. Taimark Walkine.

7. Upon information and belief, Applicant submitted with
its Amendment to Allege Use a specimen including a
picture photograph of the Peppermill Resort Hotel sports
bar in Reno, NV, an establishment not affiliated in anyway
with Applicant, and did not submit a specimen showing
galoshes and mittens.

8. Applicant has not shown an amount of use, use of a
nature or quality seen in transactions with the public, and
use typical within the restaurant and clothing industries.

9. For the above reasons, the Applicant has not made a
showing of use of the mark CHEERLEADERS BAR &
GRILL in commerce for “restaurant and bar service” and
upon a lengthy list of clothing … when it filed the
Amendment to Allege Use.33

In its Answer to the second amended Notice of Opposition, Applicant states,

“Applicant admits the allegations set forth in Paragraph 7 of Opposer’s Second

Amended Notice of Opposition; however, only to the extent that the use of the

specimen stated therein was uploaded by mistake, which has since been rectified.”

Applicant denied the allegations in paragraph Nos. 6, 8 and 9.34

33 69 TTABVUE 5. Opposer does not specify which clothing items in the “lengthy list of
clothing” on which Applicant did not use its mark. We presume for purposes of our discussion
that Opposer intended to include T-shirts.
34 70 TTABVUE 7.

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Opposition No. 91216816

Opposer’s non-use claim has not been properly pleaded and is therefore dismissed

because Opposer has not alleged that Applicant had not used its mark as of the filing

date of Amendment to Allege Use – Opposer has merely alleged that Applicant “has

not made a showing of use of the mark.” 15 U.S.C. §1051(c); 37 C.F.R. §2.76.

We do find, however, that a claim of non-use of the mark on restaurant and bar

services and carryout restaurant services when Applicant filed its amendment to

allege use has been asserted by Opposer and tried by Applicant’s implied consent in

view of Applicant’s repeated attempts to amend its identification of services to delete

restaurant and bar services and carryout restaurant services after Applicant’s initial

pleading. Fed. R. Civ. P. 15(b)(2); TBMP §314. Because Applicant does not contest

that it has not used its mark on restaurant and bar services and carryout restaurant

services, we enter judgment in favor of Opposer on its claim of non-use of Applicant’s

mark for restaurant and bar services and carryout restaurant services at the time it

filed its amendment to allege use, as tried by the consent of the parties.

Decision:

? The opposition is dismissed with respect to Opposer’s claim of fraud.

? The motion to amend the identification of goods and services is denied in

part and granted in part; the operative identification of goods and services

in the opposed application became:

“clothing for women, men and children, namely, T-shirts”
in International Class 25; and

“restaurant and bar services; food catering; and carry out
restaurant services” in International Class 43.

– 28 –
Opposition No. 91216816

? In view of Applicant’s unconsented amendment to its identification of goods,

the opposition is sustained with respect to Opposer’s claims of priority and

likelihood of confusion as to the following International Class 25 goods:

clothing, for women, men and children, namely, shirts,
long-sleeved shirts, under shirts, night shirts, rugby shirts,
polo shirts, cardigans, jerseys, uniforms, scrubs not for
medical purposes, smocks, dress shirts, pants, trousers,
slacks, jeans, culottes, cargo pants, stretch pants, denim
jeans, overalls, coveralls, jumpers, jump suits, shorts,
boxer shorts, tops, stretch tops, tube tops, crop tops, tank
tops, tankinis, halter tops, sweat shirts, hooded sweat
shirts, sweat jackets, sweat shorts, sweat pants, wraps,
warm-up suits, jogging suits, track suits, play suits,
blouses, skirts, dresses, gowns, sweaters, vests, fleece
vests, pullovers, snow suits, parkas, capes, anoraks,
ponchos, cloaks, shrugs, shawls, pashminas, jackets,
dinner jackets, reversible jackets, wind-resistant jackets,
shell jackets, sports jackets, golf and ski jackets, jean
jackets, coats, heavy coats, over coats, top coats, petticoats,
blazers, suits, tuxedos, cummerbunds, cuffs, collars,
removable collars, collar protectors, turtlenecks, cloth ski
bibs, swimwear, beachwear, tennis wear, surf wear, ski
wear, layettes, infant wear, infants sleepers, booties, baby
bibs not of paper, caps, swim caps, berets, beanies, hats,
visors, headbands, wrist bands, sweat bands, headwear,
ear muffs, aprons, scarves, bandanas, belts, suspenders,
neckwear, ties, neckerchiefs, pocket squares, ascots,
underwear, briefs, swim and bathing trunks, bras, sports
bras, panties, thongs, G-strings, socks, loungewear, robes,
underclothes, pajamas, sleepwear, night gowns, nighties,
lingerie, camisoles, negligees, chemises, chemisettes, slips,
sarongs, leg warmers, hosiery, pantyhose, body stockings,
knee highs, leggings, tights, leotards, body suits, unitards,
body shapers, gloves, mittens, rain slickers, rainwear,
footwear, shoes, mules, sneakers, boots, galoshes, sandals,
flip-flops, and slippers, sports wear [sic], namely, shorts,
sweaters, hats, pants, skirts, jackets, sneakers, sports bras.

– 29 –
Opposition No. 91216816

? In view of Applicant’s unconsented amendment to its identification of

goods, the opposition is sustained with respect to Opposer’s claim of non-

use as to “galoshes and mittens” in International Class 25.

? The opposition is dismissed on the claims of priority, likelihood of

confusion and non-use asserted in the second amended Notice of Opposition

as to the following goods and services, by class:

“clothing for women, men and children, namely, T-shirts”
in International Class 25; and

“restaurant and bar services; food catering; and carry out
restaurant services” in International Class 43.

? The opposition is granted on the claim of non-use at the time the

amendment to allege use was filed as tried by the implied consent of the

parties, as to the following services:

“restaurant and bar services and carry out restaurant
services” in International Class 43.

The application will move forward for registration of the applied-for mark for the

following goods and services:

“clothing for women, men and children, namely, T-shirts”
in International Class 25; and

“food catering” in International Class 43.

-o0o-

– 30 –