NOTE: This disposition is nonprecedential.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 registrations 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 Opposition 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 broadcasting, 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 between 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 photocopies 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 registrations identify the goods and services alleged by Mr. Cutino 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 November 22, 2011. Mr. Cutino served his pretrial disclosures 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 Trademark 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 registrations 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 premature 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 documents showing the current status and title of the registration 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 registrations 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 registrations. 

Proceeding to examine the DuPont2 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 services and channels of trade weigh against finding likelihood 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. Cutino’s NIGHTLIFE registration, even in the face of Applicant’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, opposer 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 therefore 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 registration.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, Registration 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 cur4 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. Cutino’s NIGHLIFE registration and address the likelihood 

of confusion between the NIGHTLIFE mark and Applicant’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 refusing to consider registrations when applicant did not deny 

opposer’s ownership and admitted the existence of the 

pleaded registrations).