Cutino v. Nightlife Media, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
MICHAEL J. CUTINO,
Appellant,
v.
NIGHTLIFE MEDIA, INC.,
Appellee.
______________________
2013-1541
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board, in Opposition
No. 91186025.
______________________
Decided: August 7, 2014
______________________
MICHAEL J. CUTINO, of Ronkonkoma, New York, pro
se.
KENNETH S. MCLAUGHLIN, JR., Law Offices of
McLaughlin & Associates, P.C., of Aurora, Illinois, for
appellee.
______________________
Before MOORE, REYNA, and TARANTO, Circuit Judges.
2 CUTINO v. NIGHTLIFE MEDIA, INC.
PER CURIAM.
Michael J. Cutino appeals pro se from the decision of
the Trademark Trial and Appeal Board (“Board”) of the
Patent and Trademark Office (“PTO”) dismissing Mr.
Cutino’s opposition to Trademark Application No.
77/325,174 for the mark NIGHTLIFE TELEVISION. 1
For the reasons below, we vacate the Board’s decision and
remand for further proceedings.
BACKGROUND
Mr. Cutino owns three federal trademark registra-
tions obtained between 1982 and 1995. Registration No.
1207169 covers the mark NEW YORK’S NIGHTLIFE for
“Monthly Magazine Dealing Primarily with Things to Do
and See and Places to Go in the State of New York.”
Registration No. 1324398 covers the mark LONG
ISLAND’S NIGHTLIFE for “Monthly Magazine Dealing
Primarily with Things to Do and Places to Go in the Long
Island and Surrounding Areas and Also Featuring Other
Articles of General Interest.” Finally, Registration No.
1908411 covers the mark NIGHTLIFE for “magazines of
general interest” and “television programming services.”
On August 22, 2008, Mr. Cutino filed a Notice of Op-
position to Application No. 77/325,174 for the mark
NIGHTLIFE TELEVISION. The application, filed in
2007 by Nightlife Media, Inc. (“Applicant”), sought to
register NIGHTLIFE TELEVISION for the following
services:
Video-on-demand transmission services, Internet
broadcasting services, Broadcasting services via
mobile and handsets, Satellite television broad-
casting, and Television broadcasting.
1 Cutino v. Nightlife Media, Inc., Opposition No.
91186025 (T.T.A.B. Apr. 25, 2013) (“Board Decision”).
CUTINO v. NIGHTLIFE MEDIA, INC. 3
As grounds for opposition, Mr. Cutino asserted likelihood
of confusion under Section 2(d) of the Lanham Act be-
tween Applicant’s mark and Mr. Cutino’s three registered
marks. Mr. Cutino also asserted deceptiveness and false
suggestion under Section 2(a).
Mr. Cutino attached to his Notice of Opposition pho-
tocopies of the registration and renewal certificates for his
three marks. Mr. Cutino also attached printouts from the
PTO’s electronic database showing current status and
title, but only for two of his registrations, LONG
ISLAND’S NIGHTLIFE and NEW YORK’S NIGHTLIFE.
In its answer, Applicant admitted that Mr. Cutino is the
owner of the three marks and that the pleaded registra-
tions identify the goods and services alleged by Mr. Cu-
tino in his opposition. Applicant did not counterclaim for
cancellation of any of the registrations.
Although Mr. Cutino was represented by counsel at
the time he filed his opposition, the record shows that his
counsel withdrew from representation in March 2011, and
Mr. Cutino elected to proceed pro se. Mr. Cutino did not
take any testimony or introduce any evidence during his
testimony period, which was scheduled to close on No-
vember 22, 2011. Mr. Cutino served his pretrial disclo-
sures after the testimony period had closed and the
October 8, 2011, deadline for pretrial disclosures had
passed. Applicant filed a motion to strike as untimely Mr.
Cutino’s pretrial disclosures, and a motion to dismiss for
failure to prosecute under Trademark Rule 2.132(a). In
response, Mr. Cutino filed a number of documents and
evidence purporting to support his opposition.
In an order dated May 20, 2012, the Board granted
the motion to strike but denied the motion to dismiss.
The Board found that Mr. Cutino’s pretrial disclosures
were untimely and also failed to comply with Trademark
Rule 2.121(e). The Board also found that the materials
submitted by Mr. Cutino after the close of his testimony
4 CUTINO v. NIGHTLIFE MEDIA, INC.
period were untimely and otherwise inadmissible. As a
result, the evidence on record supporting Mr. Cutino’s
opposition consisted only of the records of his pleaded
registrations. The Board found that, pursuant to Trade-
mark Rule 2.122(d)(1), only the registrations for the
marks LONG ISLAND’S NIGHTLIFE and NEW YORK’S
NIGHTLIFE were properly introduced. The Board denied
Applicant’s motion to dismiss, finding that the two regis-
trations were sufficient to make out a prima facie case
with respect to standing and priority.
On July 16 and August 1, 2012, Mr. Cutino submitted
additional documents and evidence. Invoking Trademark
Rule 2.127(a), the Board granted Applicant’s motions to
strike Mr. Cutino’s submissions because Mr. Cutino failed
to respond to the motions to strike. The Board noted that,
even if not stricken, it would decline to consider Mr.
Cutino’s filings because they were not accompanied by
certificates of service and they were either late or prema-
ture if intended as evidence or Mr. Cutino’s final brief,
respectively.
In its final decision dated April 25, 2013, the Board
dismissed Mr. Cutino’s opposition. First, the Board ruled
that Mr. Cutino’s NIGHTLIFE registration was not part
of the record because Mr. Cutino failed to submit docu-
ments showing the current status and title of the registra-
tion as required by the Trademark Rules. The Board also
excluded certain submissions made by Mr. Cutino during
December 2012 and January 2013 because they were
untimely, and concluded that the record in the opposition
proceedings consisted solely of: (1) the pleadings; (2) the
file of the opposed application; (3) Mr. Cutino’s registra-
tions for the marks LONG ISLAND’S NIGHTLIFE and
NEW YORK’S NIGHTLIFE; and (4) the deposition of
Applicant’s owner and founder introduced by Applicant.
Second, the Board found that Mr. Cutino failed to
pursue and waived his claims for deceptiveness and false
CUTINO v. NIGHTLIFE MEDIA, INC. 5
suggestion under Section 2(a), because he could not
establish the required elements of either claim based on
the record. Regarding likelihood of confusion, the Board
found that Mr. Cutino had established standing and
priority based on the two properly-introduced registra-
tions.
Proceeding to examine the DuPont 2 factors, the Board
found that the dissimilarities between Mr. Cutino’s and
Applicant’s marks outweigh the similarities. The Board
acknowledged that the terms LONG ISLAND’S and NEW
YORK’S are disclaimed and are descriptive, but found
that they still make Mr. Cutino’s marks look and sound
significantly different than NIGHTLIFE TELEVISION.
Finding that the term NIGHTLIFE is at best suggestive
of the parties’ goods and services, the Board concluded
that the addition of the descriptive terms LONG
ISLAND’S, NEW YORK’S and TELEVISION sufficiently
distinguish the parties’ marks and weigh against finding
likelihood of confusion.
The Board also found that the parties’ goods and ser-
vices and channels of trade weigh against finding likeli-
hood of confusion. The Board noted that Mr. Cutino’s
registrations for LONG ISLAND’S NIGHTLIFE and NEW
YORK’S NIGHTLIFE cover monthly magazines focused
on particular geographic areas, while Applicant sought to
register its mark for television and other broadcasting
services. Because there was no additional evidence of a
relationship between the goods and services or that their
channels of trade overlap, the Board concluded that these
factors did not favor finding likelihood of confusion.
Given the absence of evidence on the remaining
DuPont factors, the Board found them to be neutral. The
2 In re E.I. DuPont de Nemours & Co., 476 F.2d
1357, 1361 (CCPA 1973).
6 CUTINO v. NIGHTLIFE MEDIA, INC.
Board therefore concluded that there is no likelihood of
confusion between Mr. Cutino’s and Applicant’s marks.
The Board reiterated that it could not consider Mr. Cu-
tino’s NIGHTLIFE registration, even in the face of Appli-
cant’s admissions:
While applicant admits in its answer that opposer
owns the mark NIGHTLIFE, Answer ¶ 4, that is
as far as applicant’s admission goes, and because
the registration for this mark is not of record, op-
poser is not entitled to any of the presumptions
which arise out of a registration. In other words,
there is no evidence concerning when opposer
used NIGHTLIFE, whether the mark is still in
use or what goods or services are or were offered
under the mark. Applicant’s admission is there-
fore not enough for us to consider the
NIGHTLIFE mark in connection with opposer’s
likelihood of confusion claim.
Board Decision at 8, n.8.
Mr. Cutino timely appealed. We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(4)(B).
DISCUSSION
We review the Board’s evidentiary rulings for abuse of
discretion. 3 In this case, we find that the Board abused
its discretion in disregarding Mr. Cutino’s NIGHTLIFE
registration. The Board’s own procedures and this court’s
precedent recognize that an opposer’s registration will be
deemed to be of record if the applicant’s answer contains
admissions sufficient to establish the current status of the
3 Crash Dummy Movie, LLC v. Mattel, Inc., 601
F.3d 1387, 1391 (Fed. Cir. 2010).
CUTINO v. NIGHTLIFE MEDIA, INC. 7
registration and the plaintiff’s ownership of the registra-
tion. 4
Applicant’s admissions in its answer are sufficient to
treat the NIGHTLIFE registration as being part of the
record. The Notice of Opposition specifically alleged that
Mr. Cutino is the owner of, and would rely on, Registra-
tion No. 1908411 for the mark NIGHTLIFE. Notice of
Opposition at ¶ 4, Opp. No. 91186025 (Aug. 22, 2008).
While Applicant purported to admit only that Mr. Cutino
is the owner of the “mark” NIGHTLIFE, Applicant did not
deny that Mr. Cutino owns the corresponding pleaded
registration. See Answer at ¶ 4, Opp. No. 91186025 (Jan.
2, 2009). An answer that fails to deny a portion of an
allegation is deemed admitted as to that portion. 5
Applicant’s admission regarding ownership not only
establishes current title, but also the current status of the
NIGHTLIFE registration, i.e., that it is active. One
technically does not own a registration that is not in force
and effect. 6 We do not read Applicant’s denial that the
NIGHTLIFE registration is “subsisting” as a clear denial
of the current status of the registration, particularly in
view of the identical denial made with respect to Mr.
Cutino’s other two registrations for which he attached
records establishing current status. See id. at ¶¶5–7.
Hence, unlike Hewlett-Packard Co. v. Olympus Corp.,
where an admission that the registrations “originally
issued” to the opposer was insufficient to establish cur-
4 See Tiffany & Co. v. Columbia Indus., Inc. 455
F.2d 582, 585 (CCPA 1972); Trademark Trial and Appeal
Board Manual of Procedure (TBMP) § 704.03(b)(1)(A)
Note.
5 See Fed. R. Civ. P. 8(b)(6); TBMP § 311.02(a).
6 See Trademark Manual of Examining Procedure
(TMEP) § 812.
8 CUTINO v. NIGHTLIFE MEDIA, INC.
rent title, 7 here Applicant admitted current ownership
and the active status of the pleaded registrations. The
Board therefore committed legal error in ignoring the
evidentiary effect of Applicant’s admissions and abused
its discretion in refusing to consider the registration for
the NIGHTLIFE mark. 8
On remand, we direct the Board to consider Mr. Cu-
tino’s NIGHLIFE registration and address the likelihood
of confusion between the NIGHTLIFE mark and Appli-
cant’s mark. Mr. Cutino does not appeal, and therefore
we do not disturb, the Board’s other evidentiary rulings.
We also do not address the remaining aspects of the
Board’s determination that Mr. Cutino does not challenge,
namely, the likelihood of confusion between Applicant’s
mark and Mr. Cutino’s LONG ISLAND’S NIGHTLIFE
and NEW YORK’S NIGHTLIFE marks.
VACATED AND REMANDED
COSTS
Each party shall bear its own costs.
7 931 F.2d 1551, 1554 (Fed Cir. 1991).
8 See Tiffany, 455 F.2d at 585 (Board erred in refus-
ing to consider registrations when applicant did not deny
opposer’s ownership and admitted the existence of the
pleaded registrations).