The opinion
UNITED STATES PATENT AND TRADEMARK OFFICE
This Decision is a Precedent
Trademark Trial and Appeal Board
of the TTAB P.O. Box 1451
Alexandria, VA 22313-1451
Butler Mailed: December 29, 2010
Opposition No. 91190682
PRAKASH MELWANI
v.
ALLEGIANCE CORPORATION
Before Walters, Walsh and Ritchie, Administrative Trademark
Judges.
By the Board:
Applicant seeks to register the mark ROYALSILK for "non-
woven medical gowns and non-woven surgical drapes."1 As grounds
for the opposition, opposer alleges priority of use and
likelihood of confusion, that applicant's mark is deceptively
misdescriptive, dilution, fraud, and bad faith. Opposer pleads
ownership of three registrations, two for the word mark ROYAL
SILK for 1) "handkerchiefs, piece goods, all made in whole or in
substantial part of silk" and "providing information in the
fields of silk, the folklore of silk, the history of silk, and
the proper care of silk via websites on a global computer
1
Application Serial No. 77400376, filed on February 19, 2008, claiming
a bona fide intent to use the mark in commerce.
Opposition No. 91190682
network";2 and 2) "wearing apparel made wholly or substantially
of silk, namely, tops, shorts, skirts, boxers, scarves, sashes,
mufflers";3 and one for the mark ROYAL SILK and design for
"wearing apparel made wholly or substantially of silk, namely,
scarves, ties, boxer shorts, skirts, tee shirts, long-sleeved
shirts, and shirts for suits."4 Opposer also pleads ownership of
application Serial Nos. 78796502 and 78969040 for the mark ROYAL
SILK for "body cream; hair conditioner; hair rinses; hair
shampoo," and "watches" and "handbags," respectively.
In its answer, applicant admits that its goods are not made
in whole or in part of silk, nor is it anticipated that they will
be,5 and that the marks ROYAL SILK and ROYALSILK are similar in
appearance and sound.6 Applicant otherwise denies the essential
allegations of the notice of opposition, asserts affirmative
defenses, and moves to strike Count V (bad faith) on the basis
that the claim is an improper attempt to include a claim of
unfair competition, which is unavailable in a Board proceeding.7
Applicant's motion to strike Count V is embedded in its answer.
2
Registration No. 2944124.
3
Registration No. 2338016.
4
Registration No. 3578997.
5
Paragraph Nos. 14 and 43 of the answer.
6
Paragraph No. 22 of the answer.
7
The parties are reminded that the Board is not authorized to decide
broader questions of infringement or unfair competition. See TBMP §
102.01 (2d ed. rev. 2004).
2
Opposition No. 91190682
This case now comes up on applicant's motion, filed June 15,
2010, for involuntary dismissal under Trademark Rule 2.132(a), 37
C.F.R. § 2.132(a), for opposer's failure to take any trial
testimony or offer any other evidence in support of his claims.
Opposer filed a response thereto on July 13, 2010.
In support of its motion, applicant argues that, since
filing its answer, it has not received any communications from
opposer; no discovery conference was scheduled; opposer did not
conduct any discovery; and opposer did not take any testimony.
Applicant points out that opposer did not introduce evidence
showing ownership and record title in the pleaded registrations.
In response, opposer argues that he believed proceedings
were suspended pending a ruling on applicant's motion to strike.
Opposer states that his belief was reasonable because he was not
contacted by applicant to arrange the discovery conference or
served with applicant's initial disclosures. Opposer asks that
the Board rule on applicant's motion to strike Count V and reset
the entire schedule or that the Board find excusable neglect due
to opposer's belief that the proceeding was suspended and reopen
and reset all dates subsequent to the answer.
In response to the merits of applicant's motion for
involuntary dismissal, opposer argues that, even though he did
not conduct discovery or take testimony, sufficient evidence
exists in the official record "to overcome applicant's challenge
of lack of evidence." More particularly, opposer points to
3
Opposition No. 91190682
applicant's admission that it does not intend to produce its
goods in whole or in part of silk. Opposer contends that he is
the owner of the ROYAL SILK trademarks as evidenced by his
opposition papers and "the process of filing a notice of
opposition." With respect to the latter point, opposer states
that, when filing his extension of time to oppose on March 16,
2009, he was asked to select the mark upon which he is basing his
standing; he selected his registered trademarks; and such
selections were accepted by the online filing system. Opposer
argues that this should be sufficient evidence to find his
standing. Opposer states that, on June 17, 2009, when he filed
his notice of opposition via the TTAB's online filing system, he
was required to identify the marks upon which he based his notice
of opposition; he referenced his registrations, which were
recognized by the filing system and "automatically included in
Opposer's Notice of Opposition along with automatically generated
record descriptions of the goods and services related to each
mark." Opposer contends that, considering both this information
and the search conducted and referenced by applicant in
responding to the April 7, 2008 Office Action, applicant must be
familiar with opposer's ownership of his registered marks.
Opposer argues that likelihood of confusion exists because the
parties' marks are virtually identical in sound, appearance,
connotation, and overall commercial impression and both parties
offer clothing items.
4
Opposition No. 91190682
I. We consider first whether opposer's pleaded registrations are
of record due to opposer's action of inputting the registration
numbers during the ESTTA filing protocol.8
Prior to August 31, 2007, the submission with the notice of
opposition or petition to cancel by a plaintiff of two copies of
its pleaded registration prepared and issued by the USPTO showing
both the current status of and current title to such registration
was sufficient to allow such registration to be received into
evidence and made part of the record for all purposes without any
further action by the plaintiff. See Trademark Rule 2.122(d)(1),
37 C.F.R. § 2.122(d)(1), prior to its amendment effective August
31, 2007; and TBMP §§ 317 and 704.03(b)(1)(A) (2d ed. rev.
2004).9 The registration copies "prepared and issued by the
Patent and Trademark Office showing both the current status of
and title to the registration," as contemplated by Trademark Rule
2.122(d)(1) prior to amendment, were printed copies of the
registrations on which the USPTO had entered the information
contained in its records at the time it prepared and issued the
status and title copies. TBMP § 704.03(b)(1)(A). Neither plain
copies of the registration certificates nor electronic copies
thereof (e.g., printouts of the registrations from the electronic
8
ESTTA is an acronym for "Electronic System for Trademark Trials and
Appeals." ESTTA is the system for filing papers electronically with
the Board.
9
Alternatively, a plaintiff could elect to introduce its pleaded
registrations, showing status and title, during its testimony period,
by way of a notice of reliance or by way of the testimonial deposition
of its witness. See Trademark Rule 2.122(d)(2), 37 C.F.R. §
2.122(d)(2); and TBMP § 704.03(b)(1)(A) (2d ed. rev. 2004).
5
Opposition No. 91190682
records of the USPTO's automated search system) were sufficient.
TBMP § 704.03(b)(1)(A). See also Bausch & Lomb Inc. v. Karl
Storz GmbH & Co. KG, 87 USPQ2d 1526, 1530 at n.4 (TTAB 2008); and
Teledyne Technologies Inc. v. Western Skyways Inc., 78 USPQ 2d
1203, 1205-6 (TTAB 2006).
Recognizing the increased reliability of the USPTO's
publicly available electronic records, advances in technology,
and society's evolving dependence on electronic media, the Board
amended Trademark Rule 2.122(d)(1), 37 C.F.R § 2.122(d)(1),
effective August 31, 2007, to expand the means for proving a
pleaded registration. The rule now reads, in relevant part, as
follows:
A registration of the opposer or petitioner pleaded in
an opposition or petition to cancel will be received
in evidence and made part of the record if the
opposition or petition is accompanied by an original
or photocopy of the registration prepared and issued
by the United States Patent and Trademark Office
showing both the current status of and current title
to the registration, or by a current printout of
information from the electronic database records of
the USPTO showing the current status and title of the
registration.10
Thus, a plaintiff, with a pleading filed on or after August 31,
2007, is now permitted to submit "a current printout of
information from the electronic database records of the USPTO
showing the current status and title of the registration" as an
10
In any particular case, the opposer or petitioner may have to access
to and retrieve records from various and multiple USPTO databases,
such as TARR ("Trademark Applications and Registrations Retrieval"),
TESS ("Trademark Electronic Search System") or AOTW ("Assignments on
the Web").
6
Opposition No. 91190682
alternative way to make any pleaded registration of record with
the pleading or at trial.11 See Research in Motion Ltd. v. NBOR
Corp., 92 USPQ2d 1926, 1928 (TTAB 2009). Although the policy set
forth by Trademark Rule 2.122(d)(1) as amended liberalizes the
nature of the documentation that must be submitted, the plaintiff
still must submit with its pleading such documentation. The
amendment does not contemplate a plaintiff's mere inputting of a
registration number when prompted by ESTTA, the Board's on-line
filing system, to list any registration upon which the plaintiff
relies. Instead, if opposer in this case intended to rely on
printouts from the USPTO's electronic databases to introduce his
pleaded registrations, opposer was required to electronically
attach copies of such printouts as exhibits to its on-line
submission of its notice of opposition, which attachments would
then form part of the record; or make these registrations
properly of record, in the form required by the amended rule,
during trial.12 The fact that completion of the ESTTA filing
form results in the creation of electronic records in the Board's
11
The Board also removed the requirement for two copies. Only a
single copy is now necessary.
12
The procedures specified in Trademark Rule 2.122(d)(1) are not
complicated, costly or time-consuming. The Board has the authority to
require parties to follow simple, straightforward, and inexpensive
procedures to prove ownership and status of pleaded registrations.
See Volkswagenwerk Aktiengesellschaft v. Clement Wheel Co., 204 USPQ
76, 81 (TTAB 1979).
7
Opposition No. 91190682
TTABVUE system,13 and that such records contain links to
information on a pleaded registration, is for administrative ease
and it is insufficient to make the pleaded registrations of
record.
In view thereof, opposer's pleaded registrations are not of
record and cannot be relied upon by opposer in support of his
claims, or to establish that dismissal under Trademark Rule 2.132
is not warranted. Thus, the opposition must be dismissed unless
opposer has established that excusable neglect exists to reopen
the periods which have closed or, if not, unless applicant's
admissions and the evidence of record by way of the application
file are sufficient to establish opposer's claims.
II. We now consider whether opposer has established excusable
neglect so as to warrant a reopening of all periods.
Pursuant to Fed. R. Civ. P. 6(b)(1)(B), the requisite
showing for reopening an expired period is that of excusable
neglect. In Pioneer Investment Services Company v. Brunswick
Associates Limited Partnership, 507 U.S. 380, 395 (1993), the
Supreme Court set forth four factors to be considered, within the
context of all the relevant circumstances, to determine whether a
party’s neglect of a matter is excusable. Those factors are:
(1) the danger of prejudice to the non-moving party; (2) the
length of delay and its potential impact on judicial proceedings;
13
TTABVUE refers to the "Trademark Trial and Appeal Board Inquiry
System," which is the electronic record of proceedings before the
Board.
8
Opposition No. 91190682
(3) the reason for the delay, including whether it was within the
reasonable control of the moving party; and, (4) whether the
moving party has acted in good faith. In subsequent applications
of this test by the Circuit Courts of Appeal, several courts have
stated that the third factor may be considered the most important
factor in a particular case. See Pumpkin Ltd. v. The Seed Corps,
43 USPQ2d 1582, 1586 at fn.7 (TTAB 1997).
Applying Pioneer to this case, there does not appear to be
any measurable prejudice to applicant should the Board reopen the
proceeding. Applicant has made no showing of lost evidence or
unavailable witnesses. Applicant will bear no greater cost in
defending this matter than it would have if opposer had properly
presented its case. See HGK Industries, Inc. v. Perma-Pipe,
Inc., 49 USPQ2d 1156 (TTAB 1998). Nor has applicant shown that
it has borne any costs which would be duplicated if reopening was
granted.
There is no doubt that the length of delay and impact to
this proceeding occasioned by opposer’s failure to take testimony
is significant. Reopening all periods and returning this
proceeding back to the settlement and discovery planning
conference would be necessary.
As to the reasons for the delay in acting, opposer's belief
that proceedings were suspended pending disposition of
applicant's motion to strike Count V was not reasonable. The
motion to strike, although separately captioned, was embedded in
9
Opposition No. 91190682
applicant's answer at page 8 of 13, rather than presented as a
separate filing and, therefore, could be easily overlooked by the
Board. It is not the Board's practice, in most cases,14 to
review pleadings for sufficiency or for the inclusion of embedded
motions or requests.15 To be clear, a party should not embed a
motion in another filing, with the possible exception of a cross-
motion that may be included in a response to an existing motion.
That is, all new motions should be separately filed and briefed,
to ensure they receive the proper attention.
Further, opposer did not proceed as if applicant’s motion to
strike had an effect on the proceeding. He did not file papers
in opposition to the motion, or question the fact that the Board
did not issue an order suspending proceedings pending disposition
14
The grounds available to petition to cancel a registration which is
more than five years old are limited. Trademark Act §§ 14(3) and (5),
15 U.S.C. §§ 1064(3) and (5). See also Trademark Rule 2.111, 37
C.F.R. § 2.111; and TBMP § 307.01 (2d ed. rev. 2004). Consequently,
ESTTA requires a petitioner to state the statutory basis for
cancellation of a registration more than five years old and presents
only valid options for selection. In the event a petitioner believes
that cancellation is proper upon a ground which does not appear on the
ESTTA form, the petitioner may file a petition to cancel by paper. In
this rare, latter case, it is the Board's routine practice to review
the petition to cancel to ascertain that the petition to cancel a
registration more than five years old is based on a valid ground.
15
It is expected that motions embody or be accompanied by a brief.
Trademark Rule 2.127(a), 37 C.F.R. § 2.127(a). When a party embeds a
motion in another filing, particularly a filing which is not routinely
reviewed by Board personnel at the time of filing and which may be
entered into the docket electronically, such motion does not come to
the attention of the Board for docketing and determination. Cf.,
Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1033 n.2 (TTAB 2007)
("Applicant did not separately caption her motion to amend the filing
basis of her application. Although there is no prohibition on
incorporating a motion into a brief in response to a motion, the
better practice is either to file such motion as a separate submission
or, at a minimum, to caption separately any such motion.").
10
Opposition No. 91190682
of the motion to strike. Cf. Super Bakery Inc. v. Benedict, 96
USPQ2d 1134, 1136 (TTAB 2010) (only an order of the Board
formally suspending proceedings can suspend a case.) If opposer
expected a ruling on the motion to strike, he easily could have
moved the matter forward toward resolution by filing a response
and/or requesting suspension until the matter was resolved.16
Both parties bear the responsibility for following the trial
schedule as ordered unless and until the Board issues a
suspension order or otherwise resets the trial date. In this
case, when no suspension order was issued and the motion was not
decided, each party was equally obligated to contact the Board to
determine the status of the motion and of the case. In addition,
given the passage of time, opposer earlier should have checked on
the status of the motion to strike as well as the status of the
proceeding.17 See Old Nutfield Brewing Co. v. Hudson Valley
Brewing Co., 65 USPQ2d 1701, 1703 (TTAB 2002). Moreover, each
party is equally obligated to ensure that a discovery conference
takes place by the assigned deadline. See Promgirl, Inc. v. JPC
Co., 94 USPQ2d 1759 (TTAB 2009) (responsibility to schedule a
16
Further, because the Board will generally treat an unopposed motion
as conceded, see Trademark Rule 2.127(a), the fact that the Board did
not grant the motion after opposer’s time to respond to it had passed
should have alerted opposer to the fact that the Board was not aware
of the motion.
17
Any party easily may check on the status of a Board proceeding using
the TTABVUE database, available at http://ttabuve.uspto.gov/. A party
may also call the Board during business hours to inquire as to the
status of a Board proceeding.
11
Opposition No. 91190682
conference and to confer on each of the topics outlined in Fed.
R. Civ. P. 26 and the institution order is a shared
responsibility); Guthy-Renker Corp. v. Boyd, 88 USPQ2d 1701, 1703
(TTAB 2008) ("it is the equal responsibility of both parties to
ensure that the discovery conference takes place by the assigned
deadline"); and Influance, Inc. v. Zuker, 88 USPQ2d 1859, 1860
n.2 (TTAB 2008) (holding discovery conference is a mutual
obligation). Thus, opposer's belief that proceedings were
suspended because he was not contacted by applicant to schedule
the conference was not reasonable in the absence of a suspension
order. See, e.g., Super Bakery Inc. v. Benedict, supra.
In considering the fourth Pioneer factor, there is no
evidence that opposer acted in bad faith.
After careful consideration of the Pioneer factors and the
relevant circumstances in this case, the Board finds that
opposer's reasons for not actively participating in this case
fail to establish excusable neglect so as to warrant a reopening
of this case. Although the first and fourth Pioneer factors do
not weigh against opposer, the second and third factors weigh
heavily against opposer.
Accordingly, opposer's request to reopen proceedings is
denied.
III. We now consider whether the effects of the admissions and
the evidence of record are determinative of this case.
Opposer has not introduced any evidence into this opposition
record. To the extent opposer seeks a determination on the
12
Opposition No. 91190682
merits of the case, opposer is relying on applicant's admissions
in its answer and on the matters of record in applicant's
application file. We have reviewed such admissions and matters
and find them insufficient to prove either opposer's standing or
opposer's claims.
Applicant has not admitted opposer's title to, or the
current status of, opposer's pleaded registrations. Thus, we
must look to the evidence of record in the application file.
The entire application file, including any evidence therein
submitted by the applicant, becomes part of the record in an
opposition proceeding without any action by the parties.
Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b). See also Cold War
Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92
USPQ2d 1626, 1628 (Fed. Cir. 2009). In this case, opposer is
mistaken that his standing is established because applicant was
somehow made "aware" of opposer's ownership of his registrations
by virtue of a search referenced by applicant in its October 7,
2008 response to the USPTO's April 7, 2008 Office Action. In
that response, applicant listed seven registrations revealed by
the referenced search by mark, registration number, and goods
identified. The listing did not include opposer's registrations
pleaded herein and the application record does not reference what
applicant's search terms were, what was retrieved, and what was
13
Opposition No. 91190682
reviewed by applicant.18 The Board cannot infer that applicant
was "aware" of opposer's registrations and find, on such an
inference, that applicant effectively admitted the ownership and
validity of the pleaded registrations so as to establish
opposer's standing in this opposition.19 It is incumbent upon
opposer to establish his standing, in the absence of an admission
or stipulation from applicant. See Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 188 (CCPA 1982).
Accordingly, opposer does not have standing in this
proceeding because there is neither an admission of standing by
applicant nor record evidence that otherwise establishes
opposer's standing.
Moreover, even if opposer had established its standing,
applicant's admissions in its answer do not establish opposer's
claim of priority and likelihood of confusion. In particular,
applicant's admission that the parties' marks are similar is not
by itself adequate to establish likelihood of confusion. See In
18
As noted, opposer's pleaded registrations are not of record in the
application file. However, even if they were, they would not suffice
to establish the status of or opposer's ownership of such
registrations at the time of filing this inter partes proceeding. The
burden is on opposer to establish its ownership and status of its
pleaded registrations as of the filing of the notice of opposition.
19
The Board notes that if opposer had attached proper copies of his
registrations as exhibits to the notice of opposition, making them of
record, the Board might have been able to determine both standing and
likelihood of confusion, based on a comparison of the marks and goods
listed in the registrations and the application involved herein.
However, the record still would be insufficient to determine opposer's
other claims. See Trademark Rule 2.122(d)(1); King Candy Co. v.
Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974);
and Hurley International LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007).
14
Opposition No. 91190682
re E. I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973) for the factors to be considered in a likelihood of
confusion analysis. There is no evidence of record, for example,
that opposer has priority,20 that the parties' goods are related,
that they travel in the same channels of trade, or of the
conditions under which, and buyers to whom, sales are made.
Applicant also admitted that its goods are not made of silk.
Such admission is inadequate to establish that applicant
committed fraud on the Office. There is no evidence, for
example, concerning applicant's intent to deceive the Office with
respect to a material fact, or that applicant lacked an intent to
use the mark in the United States for the identified goods. See
In re Bose Corp., 476 F.3d 1331, 91 USPQ2d 1938 (Fed. Cir. 2009)
for a discussion of the elements necessary to prove fraud. Nor
does applicant's admission establish that the mark is deceptively
misdescriptive. There is no evidence, for example, that
consumers would likely believe the goods are made of silk. See
Anheuser-Busch, Inc. v. Holt, 92 USPQ2d 1101, 1108 (TTAB 2009)
for the factors to be considered for a mark to be found
deceptively misdescriptive.
Opposer, then, has no evidence of record on which he can
meet his burden of proof as plaintiff. Accordingly, applicant's
motion for involuntary dismissal is granted, judgment is hereby
20
In the absence of proper proof of the status of, and opposer's
ownership of, his pleaded registrations, priority was not removed as
an issue in this case.
15
Opposition No. 91190682
entered against opposer and the opposition is hereby dismissed
with prejudice.21 Trademark Rule 2.132(a), 37 C.F.R. §2.132(a).
☼☼☼
21
In view of the dismissal of the opposition, consideration of
applicant's motion to strike Count V is moot.
16