Beling v. Ennis, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
JOEL L. BELING, DBA SUPA CHARACTERS PTY
LTD,
Appellant
v.
ENNIS, INC.,
Appellee
______________________
2015-1157
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Nos.
91203884, 92055374.
______________________
Decided: June 3, 2015
______________________
JOEL L. BELING, Dallas, Victoria, Australia, pro se.
DANIEL J. CHALKER, Chalker Flores, LLP, Dallas, TX,
for appellee.
______________________
Before PROST, Chief Judge, BRYSON and HUGHES, Circuit
Judges.
2 BELING v. ENNIS, INC.
PER CURIAM.
Joel Beling appeals from the Trademark Trial and
Appeal Board’s dismissal on summary judgment of his
petition to cancel Ennis, Inc.’s trademark. Mr. Beling
alleged that Ennis’s trademark is generic and merely
descriptive of Ennis’s printing services, and was fraudu-
lently procured. Because Mr. Beling failed to produce
evidence sufficient for a reasonable person to find in his
favor, we affirm.
I
On May 18, 2011, Mr. Beling filed an application to
register COLOR WARS based on his intent to use the
mark in commerce. On February 15, 2012, Ennis filed an
opposition to Mr. Beling’s application, alleging a likeli-
hood of confusion with its trademark, the stylized version
of COLORWORX shown below. Ennis had previously
registered this mark for “printing services.”
On March 25, 2012, in response to Ennis’s opposition,
Mr. Beling filed a claim to cancel Ennis’s registration for
COLORWORX. Mr. Beling alleged that Ennis’s mark
should be cancelled because it was generic, merely de-
scriptive, and inherently incapable of distinguishing
Ennis’s services 1; and because Ennis submitted fraudu-
1 Mr. Beling’s “inherently incapable of distinguish-
ing” claim is redundant of his genericness claim. See In
re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d
1567, 1569 (Fed. Cir. 1987) (“Generic terms, by definition
incapable of indicating source, are the antithesis of
BELING v. ENNIS, INC. 3
lent statements in the registration process. The Board
consolidated the opposition and cancellation proceedings
on July 13, 2012.
On April 16, 2014, Mr. Beling petitioned this court for
a writ of mandamus. See In re Joel L. Beling, 562 Fed.
Appx. 984 (Fed. Cir. 2014). He asked this court “to direct
the [Board] to reopen discovery, to ‘create new laws’ based
on the proposals he suggested before the [Board], to
review his requests for disqualification, and to refund
certain fees he paid.” Id. at 985. This court denied the
petition, id., as well as Mr. Beling’s subsequent petition
for rehearing en banc, In re Joel L. Beling, No. 14-135
(Fed. Cir. July 22, 2014), ECF No. 9 (order denying re-
hearing en banc).
Meanwhile, the parties filed cross-motions for sum-
mary judgment in the cancellation proceeding. On Sep-
tember 30, 2014, the Board granted Ennis’s motion for
summary judgment, denied Mr. Beling’s cross-motion for
summary judgment, and dismissed Mr. Beling’s cancella-
tion petition with prejudice. The Board found that
Mr. Beling failed to produce evidence to support each
element of his fraud claims. The Board also found that
Mr. Beling failed to produce any probative evidence of the
public’s perception of Ennis’s mark to support its allega-
tions that the mark was generic or merely descriptive.
Finally, the Board denied Mr. Beling’s motion to exclude
evidence as an estoppel sanction under Fed. R. Civ. P.
37(c)(1). Mr. Beling appeals. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(B).
II
We review the Board’s decision to grant or deny sum-
mary judgment de novo. Lens.com, Inc. v. 1-800 Contacts,
trademarks, and can never attain trademark status.”).
We therefore do not address it separately.
4 BELING v. ENNIS, INC.
Inc., 686 F.3d 1376, 1378–79 (Fed. Cir. 2012). “Summary
judgment is appropriate where the movant has estab-
lished that there is no genuine issue as to any material
fact and that . . . the movant is entitled to judgment as a
matter of law.” Lincoln Logs Ltd. v. Lincoln Pre-Cut Log
Homes, Inc., 971 F.2d 732, 734 (Fed. Cir. 1992) (citations
omitted).
A
A petitioner seeking to cancel a trademark based on
fraudulent procurement bears a heavy burden of proof. In
re Bose Corp., 580 F.3d 1240, 1243 (Fed. Cir. 2009). The
petitioner must prove with clear and convincing evidence
that the applicant knowingly made a false, material
representation, with the intent to deceive the PTO. Id. It
is not enough that the applicant “should have known” the
statement was misleading. Id. at 1244.
Here, Mr. Beling alleged that Ennis fraudulently rep-
resented that no other party had superior rights to the
COLORWORX mark. In support, Mr. Beling points to
webpage printouts and PTO records showing separate
uses of either COLORWORKS, COLORWORX, or a cross-
hair design roughly similar to the features in Ennis’s
stylized mark. Mr. Beling also relies on alleged inconsist-
encies in Ennis’s discovery responses as evidence of a
fraudulent scheme.
None of Mr. Beling’s evidence suggests that Ennis
knew that a confusingly similar mark was already in use
or that Ennis intended to deceive the PTO that such
marks did not exist. At most, Mr. Beling’s evidence of
third-party marks might suggest that Ennis should have
known that they existed. But to prove fraudulent misrep-
resentation, a party must show actual knowledge, and
Mr. Beling has failed to submit any evidence that tends to
show Ennis actually knew the marks existed. To the
contrary, Steven Osterloh, Ennis’s employee who signed
the trademark application, stated in a deposition and an
BELING v. ENNIS, INC. 5
affidavit that he was unaware of any confusingly similar
third-party uses at the time of the application. Further,
any inconsistencies in Ennis’s discovery responses con-
cerning the first use of Ennis’s mark in 2002 were at-
tributable to differences in the questions being asked, and
are not relevant to Ennis’s knowledge and intent at the
time the application was filed in 2005.
Because Mr. Beling did not produce evidence that En-
nis actually knew of a confusingly similar third-party
mark or intended to deceive the PTO, we affirm the
Board’s grant of summary judgment on the fraudulent
procurement claim.
B
The test for genericness is a two-step inquiry. First,
we determine the genus of goods or services at issue.
Second, we determine whether the mark in question is
understood by the relevant public primarily to refer to
that genus of goods or services. H. Marvin Ginn Corp. v.
Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir.
1986). The genus at issue here is printing services. The
genericness of COLORWORX therefore depends on
whether the public would understand the mark to refer
primarily to printing services.
A mark is merely descriptive “if it immediately con-
veys knowledge of a quality, feature, function, or charac-
teristic of the goods or services with which it is used.” In
re Bayer Aktiengesellschaft, 488 F.3d 960, 963 (Fed. Cir.
2007). Descriptiveness must be considered “in relation to
the particular goods for which registration is sought, the
context in which it is being used, and the possible signifi-
cance that the term would have to the average purchaser
of the goods [or services] because of the manner of its use
or intended use.” Id. at 964.
Here, Mr. Beling failed to submit any evidence that
the relevant public would understand Ennis’s stylized
6 BELING v. ENNIS, INC.
COLORWORX mark or its literal component to be generic
or merely descriptive. Mr. Beling submitted evidence of
third-party uses of a cross-hair design and the terms
COLORWORKS and COLORWORX. But as the Board
recognized, third-party uses of these marks are not proba-
tive of whether a consumer would recognize them to
possess a meaning that is generic or merely descriptive of
Ennis’s printing services. Indeed, some of these marks
were registered on the principal register, suggesting that
the PTO considered these marks not to have generic or
merely descriptive meaning. See 15 U.S.C. § 1052 (pro-
hibiting registration on principal register of marks that do
not distinguish the associated goods or services).
Mr. Beling also submitted dictionary definitions for “color”
and “works.” But Mr. Beling fails to submit any evidence
of how the public understands those words when used
together in a compound form. See Princeton Vanguard,
LLC v. Frito-Lay N. Am., Inc., __ F.3d __, No. 14-1517,
2015 WL 2337417, at *3 (Fed. Cir. May 15, 2015) (noting
that to determine whether compound terms are generic,
“the Board must consider the record evidence of the
public’s understanding of the mark as a whole.”); Duo-
ProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695
F.3d 1247, 1252 (Fed. Cir. 2012) (“When determining
whether a mark is merely descriptive, the Board must
consider the commercial impression of the mark as a
whole.”).
Because Mr. Beling failed to produce evidence of how
the relevant public would understand Ennis’s mark as a
whole, we agree with the Board that Mr. Beling failed to
create a genuine issue of material fact as to whether
Ennis’s mark is generic or merely descriptive. According-
ly, we affirm the Board’s grant of summary judgment on
these issues.
BELING v. ENNIS, INC. 7
III
We review the Board’s evidentiary rulings for abuse of
discretion. Coach Servs., Inc. v. Triumph Learning LLC,
668 F.3d 1356, 1363 (Fed. Cir. 2012). Mr. Beling argues
that the Board erroneously denied his motion to exclude
some of Ennis’s evidence as an estoppel sanction for
failure to produce that evidence in response to discovery
requests. See Fed. R. Civ. P. 37(c)(1). As the Board
found, however, the only evidence not publicly available
was Steven Osterloh’s affidavit. Mr. Beling has not
shown that Mr. Osterloh’s affidavit was materially incon-
sistent with Mr. Osterloh’s responses during his deposi-
tion. Accordingly, we conclude that the Board did not
abuse its discretion in finding that Ennis did not rely on
evidence that was improperly withheld from Mr. Beling.
We therefore affirm the Board’s denial of Mr. Beling’s
motion to exclude.
IV
We have considered Mr. Beling’s remaining argu-
ments and find them without merit. Accordingly, we
affirm the Board’s grant of Ennis’s motion for summary
judgment and dismissal of Mr. Beling’s cancellation claim
with prejudice.
AFFIRMED