This Opinion is Not a
Precedent of the TTAB

Oral Hearing: April 15, 2019 Mailed: September 26, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Citizens for the Fair Use of “Ocala Horse Properties”
v.
Ocala Horse Properties, LLC
_____

Cancellation No. 92061767
_____

Frank Herrera and Gustavo Sardiña of H New Media Law for,
Citizens for the Fair Use of “Ocala Horse Properties.”

Erik M. Pelton of Eric M Pelton & Associates PLLC for,
Ocala Horse Properties.

_____

Before Kuhlke, Taylor and Dunn,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Ocala Horse Properties LLC (“Respondent”) owns a registration on the Principal

Register for the standard character mark OCALA HORSE PROPERTIES for “Real

estate agencies; Real estate brokerage” in International Class 36.1 The registration

1Registration No. 4054934 issued on the Principal Register on November 15, 2011, based
upon application Serial No. 85124725, filed on September 8, 2010. The registration claims
February 2007 as the date of first use of the mark anywhere and in commerce.
Cancellation No. 92061767

includes a disclaimer of the words HORSE PROPERTIES, and a claim of acquired

distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1141(f), in part,

as to the word OCALA.

Citizens for the Fair Use of “Ocala Horse Properties” (“Petitioner”), identifying

itself on the ESTTA generated cover sheet as a Florida association, filed a petition to

cancel the registration of Respondent’s mark on the grounds of genericness under

Trademark Act Section 23 and descriptiveness under Trademark Act 2(e)(1), 15

U.S.C. § 1052(e)(1). Petitioner specifically alleges, inter alia, the following:

• “Citizens for the Fair Use of “Ocala Horse Properties” (consists[]) of
members Golden Film Production & Photography, LLC, Horse Country
Realty, Inc. d/b/a/ Showcase Properties of Central Florida, LLC, Joan
Pletcher, Realtor, LLC, Pegasus Realty & Associates, Inc., Homes to
Ranches Realty, Inc., Ocala Homes & Farms, Inc., and Southern Charm
Realty of Central Florida, LLC.) and file the Petition for Cancellation of
Federal Registration No. 4,054,934 [for the mark] “OCALA HORSE
PROPERTIES” [Mark] because the mark is generic or at best merely
descriptive of “real estate agencies; real estate brokerage” services offered
by Registrant in Ocala, Florida.”2

• “Member Golden Film Production & Photography, LLC (‘Golden Film’) is a
film and photography production company that specializes in filming and
producing videos, which promote the sale of horse properties in Ocala,
Florida.”3

• The remaining members listed above are “real estate compan[ies] that
specialize in horse properties in Ocala, Florida.” 4

• The Mark is generic because the relevant purchasing public understands
the phrase primarily as the common or class name for the goods or services.
Thus, the Mark is incapable of functioning as a registrable trademark-

21 TTABVUE 3. Citations in this opinion are to the TTABVUE docket entry number and,
where applicable, the electronic page number where the document or testimony appears.
3 Id. (Pet. for Cancel. ¶ 2)
4 Id. at 3-4 (Pet. for Cancel. ¶¶ 3-8).

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Cancellation No. 92061767

denoting source, and therefore should not be registrable on the Principal
Register under §2(f) or on the Supplemental Register.”5

• The Mark is descriptive because it “merely describes Ocala horse
properties offered for sale” and “under 15 U.S.C. § 1052(e)(1) should have
been refused registration on the Principal Register. Since it was registered
under § 2(f) based upon false statements by Registrant, it should now be
cancelled.6

• Because members of the Citizens for the Fair Use of “Ocala Horse
Properties” should have the right to use “Ocala horse properties” to
advertise their services relating to the sale of horse properties located in
Ocala, they have been harmed and will continue to be harmed if
Registration No, 4.054,934 remains registered.”7

Respondent, in its answer, has denied the salient allegations in the petition for

cancellation.

I. Grounds for Cancellation

A. Whether the Issue of Fraud was Tried by Consent of the Parties

Petitioner, in the “Statement of Issues” portion of its brief, lists “[w]hether the

registration was procured by fraud” as one of the issues to be determined in this case,

arguing that the issue was not known until after the pleadings were closed. Petitioner

goes on to argue that the parties have conducted discovery and taken testimony of

the issue. In other words, that this issued has been tried by consent.

Respondent maintains that “the fraud claim was neither pleaded by Petitioners

nor tried by the parties,” arguing that the ESTTA cover page does not identify a claim

5 Id. at 6-7 (Pet. for Cancel. ¶ 20).
6 Id. at 7. (Pet. for Cancel. ¶¶ 25-27).
7 Id. at 6 (Pet. for Cancel. ¶ 18).

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Cancellation No. 92061767

of fraud on the USPTO and the testimonies of Christopher and Robert Desino do not

include any specific reference to such a claim.

It is well settled that a petitioner may not rely on an unpleaded claim in its brief,

and that to pursue an unpleaded claim, a petitioner’s pleading must be amended

under Fed. R. Civ. P. 15(b) to assert the claim, or the claim must have been tried by

express or implied consent. Fed. R. Civ. P. 15(b); see e.g., Hornby v. TJX Cos. Inc., 87

USPQ2d 1411, 1415 (TTAB 2008). Implied consent can only be found 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.

Citigroup Inc. v. Capital City Bank Grp. Inc., 94 USPQ2d 1645, 1656, aff’d, 637 F.3d

1344, 98 USPQ2d 1253 (Fed. Cir. 2011) (quoting TRADEMARK TRIAL AND

APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 501.03(b)). “The question

of whether an issue was tried by consent is basically one of fairness. The non-moving

party must be aware that the issue is being tried, and therefore there should be no

doubt on this matter.” Morgan Creek Prods. Inc. v. Foria Int’l Inc., 91 USPQ2d 1134,

1139 (TTAB 2009).

Respondent notes that Petitioner has not amended its petition for cancellation to

plead fraud, and affirmatively denies being apprised of the claim or testifying as to

that claim. Respondent also asserts that it was not put on notice that Petitioner’s (or

its own) evidentiary materials would be used to support the unpleaded fraud claim.

See Levi Strauss & Co. v. R. Josephs Sportswear, Inc., 28 USPQ2d 1464, 1471 n.11

(TTAB 1993) (party was not fairly apprised that evidence used for a pleaded claim of

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Cancellation No. 92061767

descriptiveness was also being offered in support of unpleaded likelihood of confusion

claim); see also TBMP § 507.03(b) (June 2019) (“fairness dictates whether an issue

has been tried by consent — there must be an absence of doubt that the nonmoving

party is aware that the issue is being tried”). Here, the testimony surrounding the

Section 2(f) claim offered by Respondent in the application that matured into the

involved registration is pertinent to the allegations set forth in “COUNT II – THE

MARK IS MERELY DESCRIPTIVE” portion of the Petition, which, as noted, includes

the allegation that: “under 15 U.S.C. § 1052(e)(1), the Mark should have been refused

registration on the Principal Register. Since it was registered under § 2(f) based upon

false statements by Registrant, it should now be cancelled.”8 In the context of a mere

descriptiveness claim, this allegation can reasonably be read as pertaining to whether

Respondent’s mark had acquired distinctiveness at the time of registration. Under

these circumstances, we cannot conclude that fraud was tried by implied consent

under Fed. R. Civ. P. 15(b)(2).9

B. Was Respondent Required to Plead Acquired Distinctiveness as an
Affirmative Defense

Petitioner objects to Respondent’s evidence insofar as it pertains to the issue of

acquired distinctiveness, arguing that it is irrelevant because Respondent did not

8 1 TTABVUE 7.
9 We hasten to add that intent to deceive is an indispensable element of the analysis in a
fraud case. See In re Bose Corporation, 476 F.3d 1331, 91 USPQ2d 1938, 1941 (Fed. Cir.
2009). Petitioner has not questioned the dates of use Respondent asserted in its § 2(f)
statement of use. That the Office did not appreciate that the dates did not add up to five years
belies an intent to deceive. “There is no fraud if a false misrepresentation is occasioned by an
honest misunderstanding or inadvertence without a willful intent to deceive.” 91 USPQ2d at
40 (citing Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981)).

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Cancellation No. 92061767

plead acquired distinctiveness as an affirmative defense. We construe this objection,

discussed, infra, as asserting that Respondent was required to raise the issue of

acquired distinctiveness as an affirmative defense, and because Respondent did not

do so, it is an unpleaded issue. However, as one of its grounds for cancellation,

Petitioner alleges that Respondent’s mark is merely descriptive. Inasmuch as the

mark registered with a disclaimer of the words HORSE PROPERTIES, and with the

benefit of a claim of acquired distinctiveness under Section 2(f), in-part, as to the

remaining word OCALA, Respondent effectively conceded that its mark is merely

descriptive in total, but had acquired sufficient distinctiveness for registration. Under

these circumstances, the issue of acquired distinctiveness of the registered mark is

inherent in Petitioner’s mere descriptive claim. Moreover, as just stated, we consider

Petitioner’s allegations surrounding the § 2(f) claim made by Respondent in the

underlying application to raise the issue of whether Respondent’s mark had acquired

distinctiveness at the time of registration.

We therefore find that the issues involved in this proceeding are:

(1) Whether Respondent’s mark is generic for its identified
services; and

(2) If the mark is not found to be generic, that it is merely
descriptive, with no acquired distinctiveness.

II. Evidentiary Objections

Petitioner has interposed numerous objections against Respondent’s joint

declaration (and the accompanying exhibits) of Christopher and Robert Desino,10

10 50-54 TTABVUE.

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Cancellation No. 92061767

(Joint declaration) as well as other objections to various trial testimony. Petitioner’s

first objection is on the ground that the Joint declaration does not clearly state on

whose knowledge each statement is made and therefore it should be stricken.

Similarly, in the event that the declaration is not stricken in its entirety, Petitioner

objects to the paragraphs in the Joint declaration which begin with the pronoun “I.”

We overrule these objections. The prefatory language to the Joint declaration states

that “each” of the declarants attests to all of the statements made therein, all of the

statements made were based upon their personal knowledge or are based upon

information received from persons upon whom they rely in the normal course of

business and/or the business records of Ocala Horse Properties.11 As such, we

consider the pronouns “I” or “we” to refer to the personal knowledge of both

declarants.

Petitioner also objects to the portion of the Joint declaration offering testimony

and documents to establish that the registered mark has acquired distinctiveness,

because that argument should have been raised as an affirmative defense. As noted

above, whether the involved registration has acquired distinctiveness is at issue in

this proceeding, being a subset of Petitioner’s descriptiveness claim. Accordingly, we

overrule this objection.

The remaining objections to the Joint declaration are based primarily on hearsay,

lack of personal knowledge of the witness, lack of authentication of documents and

lack of foundation. Some of these objections are not outcome determinative of the

11 50 TTABVUE 2.

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Cancellation No. 92061767

merits of this case and therefore we see no compelling reason to address each of the

objections one by one except insofar as they relate to the outcome determinative

evidence and testimony. The Board is capable of weighing the relevance and strength

or weakness of the objected-to testimony and evidence, including any inherent

limitations, and this precludes the need to strike the testimony and evidence. We add

that we have considered the entirety of the Joint declaration and exhibits keeping in

mind Petitioner’s objections and have accorded whatever probative value the

testimony and evidence merits. Notwithstanding the foregoing, we will specifically

rule on certain objections, as appropriate, during our discussion.

Finally, Petitioner, in Appendix I of its brief stated: “[e]xcept as specifically relied

upon by Petitioners in the Trial Brief, Petitioners object to the admission in evidence

of those portions of the trial testimony of any party to which counsel for Petitioners

objected during the taking of testimony as reflected in the transcript of that

testimony.”12 An objection to trial testimony must be raised promptly and, in order to

preserve an objection that was seasonably raised during the taking of a testimony

deposition, a party should maintain the objection in its brief on the case, as an

appendix to its brief on the case or in a separate statement of objections filed with its

brief on the case. 7-Eleven, Inc. v. Wechsler, 83 USPQ2d 1715, 1718 n.25 (TTAB 2007)

(objection to deposition exhibit waived because not renewed in trial brief) See also

TBMP § 707.03, and cases cited therein. Petitioner’s short statement in its appendix

neither identifies the objections with specificity nor argues the validity thereof. We

12 62 TTABVUE 30 (Br. p. 29).

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Cancellation No. 92061767

do not consider petitioner’s blanket statement to be sufficient to maintain the

objections. Therefore, any objections not otherwise individually addressed herein that

were made by Petitioner during the trial depositions are considered to have been

waived.

III. The Record

The record consists of the pleadings and, without any action by the parties, the

file of Respondent’s involved registration. Trademark Rule 2.122(b), 37 C.F.R.

§ 2.122(b).

During its testimony period, Petitioner made of record the following evidence:

• Testimony deposition, with exhibits, of Christopher Desino13

• Testimony deposition of Robert Desino14

• Petitioner’s Notice of Reliance on: the 30(b)(6) declaration, with exhibits, of

Christopher Desino; certain of its responses to Respondent’s interrogatory

requests; a copy of cancelled Registration No. 3591862 from the TESS data

base of the USPTO, the file history for the involved registration, dictionary

definitions, a Wikipedia entry, certain publically electronically available

business records15

• Testimony declaration of Joan Pletcher16

13 37 TTABVUE.
14 38 TTABVUE.
15 39-40 TTABVUE. Because Respondent did not object to the manner in which Petitioner
made of record any of the evidence attached its notice of reliance, we consider it all properly
of record and it has been considered in this decision.
16 41 TTABVUE.

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Cancellation No. 92061767

During its testimony period, Respondent made of record the following evidence:

• Redacted testimony depositions, with exhibits, of the following alleged

members of Petitioner, namely, Pegasus Realty and Associates, Inc. by

George DeBenedicty, owner (DeBenedicty); Ocala Homes & Farms by Carla

Lord, owner (C. Lord); Southern Charm Realty of Central Florida, Inc., by

Jeanne Ritt, owner (Ritt); Homes to Ranches Realty, Inc. by Gregory Lord,

owner (G. Lord); Horse Country Realty, Inc. by Valerie Dailey (Dailey) and

Joan Pletcher Realtor, LLC by Joan Pletcher, owner (“Pletcher”)17

• Joint Declaration of Christopher and Robert Desino, with exhibits18

Both Petitioner and Applicant filed briefs and Petitioner filed a reply brief. An

oral hearing was held on April 15, 2019.

IV. Standing

To prevail in the cancellation proceeding, it is Petitioner’s burden to prove by a

preponderance of the evidence the substantive grounds alleged in its petition for

cancellation. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848

(Fed. Cir. 2000); Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ

40, 43 (CCPA 1981); WeaponX Performance Prods. Ltd. v. Weapon X Motorsports, Inc.,

126 USPQ2d 1034, 1040 (TTAB 2018).

Standing is a threshold issue that must be proven by the plaintiff in every inter

partes case. John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB

17 48-49 TTABVUE.
18 50-54 TTABVUE.

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Cancellation No. 92061767

2010) citing Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir.

1999). Our primary reviewing court, the U.S. Court of Appeals for the Federal Circuit,

has enunciated a liberal threshold for determining standing, namely that a plaintiff

must demonstrate that it possesses a “real interest” in a proceeding beyond that of a

mere intermeddler, and “a reasonable basis for his belief of damage.” Empresa

Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed.

Cir. 2014); Ritchie v. Simpson, 50 USPQ2d at 1025; Lipton Indus., Inc. v. Ralston

Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). A “real interest” is a

“direct and personal stake” in the outcome of the proceeding. Ritchie v. Simpson, 50

USPQ2d at 1026. A belief in likely damage can be shown by establishing a direct

commercial interest. Cunningham v. Laser Golf Corp., 55 USPQ2d at 1844.

The Petitioner in this case is identified as Citizens for the Fair Use of “Ocala Horse

Properties,” a Florida association, comprised of the following members: Golden Film

Production & Photography, LLC; Horse Country Realty, Inc. d/b/a/ Showcase

Properties of Central Florida, LLC; Joan Pletcher, Realtor, LLC; Pegasus Realty &

Associates, Inc.; Homes to Ranches Realty, Inc.; Ocala Homes & Farms, Inc.; and

Southern Charm Realty of Central Florida, LLC. Petitioner, who alleges that it has

been harmed because its members should have the right to use “Ocala horse

properties” to advertise their services relating to the sale of horse properties located

in Ocala, Florida, will only have standing if it proves these allegations of “real

interest” and a “belief in damage.” See Baseball America Inc. v. Powerplay Sports,

Ltd., 71 USPQ2d 1844, 1846 n.6 (TTAB 2004) (factual allegations made in the

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Cancellation No. 92061767

pleadings are not evidence of the matters alleged, except insofar as they might be

deemed to be admissions against interest).

Under Trademark Act Section 14, 15 U.S.C. § 1064, “[a]ny person who believes

that he is or will be damaged … by the registration of a mark” may file a petition to

cancel. The term person includes “a juristic person” which includes associations.

Trademark Act Section 42, 14 U.S.C. § 1127. An “association” is a recognized juristic

entity when it is organized under state laws or federal statutes that govern this form

of organization. TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)

§ 803.03(c) (2019). An association has standing if it proves that: (1) its members would

otherwise have standing to sue in their own right; (2) the interest it seeks to protect

are germane to the organizations’ s purpose; and (3) neither the claim asserted nor

the relief requested requires the participation of individual members in the lawsuit.

See Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021,

2025 (Fed. Cir. 1987).

After a careful review of the proceeding records, we find that Petitioner has not

demonstrated prong 3 of the association test set forth in Jeweler’s Vigilance. The

testimony depositions of most of its “members” and, in particular, the testimony

declaration of Joan Pletcher satisfies prong 1 of the test. Of particular note, Ms.

Pletcher, in her testimony declaration states, inter alia, that she is a Real Estate

Agent located in Ocala, Florida and would suffer a “hardship … if a Real Estate

Agent in Ocala, Florida [is] not allowed to use the term ‘OCALA HORSE

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Cancellation No. 92061767

PROPERTIES’ as a whole or separately to describe the services that they provide.”19

Notably, she makes no mention in her declaration of any affiliation with Petitioner.

In her testimony deposition Ms. Pletcher stated that although she is a member of the

citizens for the Fair Use of “Ocala Horse Properties,” she is not the director and she

did not know of one,20 yet she was instrumental in prosecuting the cancellation.21

As to prong 2, the interest sought to be protected by the “association” is also

satisfied by the Pletcher declaration; that being the right to use the terms “Ocala,”

“Horse,” and “Properties” separately or as a whole to advertise real estate services

and describe the properties relating to these services.22

Petitioner, however, has failed to demonstrate that neither the claim asserted nor

the relief requested requires the participation of individual members in the lawsuit.

Specifically, Petitioner has failed to demonstrate that it is an association under the

laws of Florida. Indeed, the testimony of its purported members belies the fact. For

example, Mr. DeBenedicty, in his declaration on behalf of Pegasus Realty and

Associates, Inc., affirmatively responded to the question of whether he is a member

of the group called “Citizens for the Fair Use of ‘Ocala Horse Properties,’” but

answered the question “[i]s citizens For the Fair Use of ‘Ocala Horse Properties’ a

partnership or corporation?” in the negative.23 When asked how he would describe

19 41 TTABVUE 4.
20 49 TTABVUE 17.
21 See generally, 49 TTABVUE.
22 Id.
23 48 TTABVUE 15.

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Cancellation No. 92061767

the organization, he replied “[i]t’s not an organization as such, it’s several plaintiffs

that have basically agreed to come together for this lawsuit.”24

Similarly, Ms. Lord, representing, Ocala Homes & Farms, indicates that she is a

plaintiff in the proceeding and, in response to the question “[i]s the plaintiffs a

collection of real estate professionals and firms that goes under the name citizens for

the Fair Use of ‘Ocala Horse Properties,’” answered “I guess it is. I have not met with

anyone else. This is my first meeting with counsel here….”25

Jean Ritt of Southern Charm Realty of Central Florida, LLC likewise indicates

that she is a member of citizens for the Fair Use of “Ocala Horse Properties,” but goes

on to testify that there are no written agreements between her and other participants

in the group, nor has the group conducted any business outside of the law suit.26

Gregory Lord, the owner of Homes to Ranches Realty, Inc., testified that he is a

“part of Citizens for the Fair Use of ‘Ocala Horse Properties,’” but also indicated that

there were no written agreements between the parties, that the case has not been

discussed with other individuals that are a part of Citizens for the Fair Use of “Ocala

Horse Properties,” and that from the time of the original decision to go ahead with

the case as part of the group, he has done nothing related to this case.27

Finally, Valerie Dailey, of Horse Country Realty, Inc. d/b/a Showcase Properties

of Central Florida states that she is a member of citizens for the Fair Use of “Ocala

24 Id. at 16.
25 Id. at 47.
26 Id. at 76.
27 Id. at 107, 112 and 123.

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Cancellation No. 92061767

Horse Properties,”28 but that she did not have any meetings with the other members,

and that she did not have any documents or agreements or exchange any emails with

the members.29

Under the circumstances, we find that the organization known as Citizens for the

Fair Use of “Ocala Horse Properties” has not demonstrated that it is a juristic

association under the laws of Florida that could assert the claims alleged or the relief

requested in this cancellation proceeding without the participation of individual

members in the lawsuit. Indeed, instead of referring to the single entity of an

association, the parties in the record refer to plaintiff in the plural, as Petitioners.

Accordingly, Petitioner, Citizens for the Fair Use of “Ocala Horse Properties,” “an

asserted Florida association,” has not proven standing to bring the petition.

Because Petitioner has not demonstrated the threshold requirement of standing,

we need not and do not reach the substantive claims of the petition for cancellation.

Decision: The cancellation is dismissed.

28 Id. at 148.
29Id. at 149. Ms. Dailey also averred that that there is no “one person responsible for making
decisions” but because there appears to be a typographical error in the questions, we have
given the decision making comment little weight.

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