Tuesday, December 27, 2005

"DAYTONA" Licensee Hits Standing Barrier in TTAB 2(d) Opposition

Opposer HBP, Inc. claimed to be the exclusive licensee of a family of DAYTONA marks, but it barely got off the starting line in its failed opposition to registration of the mark DAYTONA THUNDERWEAR for "clothing, namely women's blouses and shorts" ["DAYTONA" disclaimed]. Opposer alleged likelihood of confusion and dilution, but was shown the black flag when it failed to prove its standing. HBP, Inc. v. Becker Designs, Inc., Opposition No. 91154068 (December 16, 2005) [not citable].

HBP attempted to rely on 31 registrations owned by International Speedway Corporation for the mark DAYTONA in various forms for auto racing events and assorted goods, but it neglected to submit status and title copies of the registrations. Applicant discussed nine of the registrations in its brief "in a manner that we deem to be an admission that these nine referenced registrations are valid and subsisting and, thus, of record."

However, Applicant did not admit that HBP owns those registrations, or that "opposer is otherwise entitled to rely on these registrations, as alleged in the notice of opposition." In fact, Applicant expressly stated that "opposer has not established its relationship to the record owner of the registrations." The Board agreed with Applicant:

"Opposer has not introduced any evidence or testimony to establish any relationship to the record owner of the registrations or its right to rely on such registrations. We, therefore, conclude that opposer has not established its standing herein and, thus, cannot prevail on its claim of priority and likelihood of confusion."

The Board further observed that, even if HBP had established its standing (by proving its exclusive license), it provided no evidence of its own use of the registered marks. Since HBP is not the owner of the pleaded registrations, it could not rely merely on the registrations, but was required to prove prior use. See Chemical New York v. Conmar Form Systems, Inc., 1 USPQ2d 1139 (TTAB 1986).

HBP's dilution claim was also fatally flawed because HBP failed to allege that its marks became famous prior to the filing date of the involved application. See Polaris Indus. Inc. v. DC Comics, 59 USPQ2d 1798 (TTAB 2000).

Text Copyright John L. Welch 2005.


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