Tuesday, October 10, 2006

CAFC Okays TTAB's Exclusion of Two Registrations Improperly Submitted, Affirms Opposition Dismissal

Things turned out not so good for El Encanto, Inc. d/b/a Bueno Foods in its appeal from the TTAB's October 20, 2005 decision dismissing its Section 2(d) opposition. (TTABlogged here). The CAFC, in a nonprecedential disposition, affirmed the dismissal, finding no error in the Board's exclusion of two registrations that were not properly put into evidence. El Encanto, Inc. v. La Tortilla Factory, Inc., Appeal No. 06-1198 (Fed. Cir. October 6, 2006).

El Encanto filed a Section 2(d) opposition to registration of the mark SOY BUENO for tortillas, attempting to rely on two registrations for the mark BUENO, one in standard form and on in the design form shown above. It attached photocopies of the two registrations to its notice of opposition. La Tortilla successfully objected to admission of the photocopies because they did not show the current status and title of the registrations. (See Trademark Rule 2.122(d)). The Board agreed with La Tortilla and, as a result, El Encanto was unable to prove likelihood of confusion regarding these two registrations.

On appeal, El Encanto conceded that it did not introduce its registrations in accordance with the Rule, but it argued that, for various reasons, La Tortilla nonetheless had familiarity with the registrations and had "fair notice" that the registrations were subsisting and owned by El Encanto. Moreover, it asserted that La Tortilla admitted via the pleadings "the registrations referred to in the notice of opposition."

La Tortilla, however, pointed out the statement in its answer to the notice of opposition that it "was without knowledge or information to form a belief as to the truth of the averments ... and based thereon denies each and every such averment" regarding the registrations. The Board sided with La Tortilla, finding its response to be "valid denials of the status and title of the pleaded registrations, putting El Encanto on notice that it would have to prove its case." The fact that La Tortilla submitted El Encanto's interrogatory answers did not satisfy Opposer's burden to establish current status and title. [TTABlog note: Under Rule 2.122(d), El Encanto could have introduced the registrations via testimony, or by including status-and-title copies with a notice of reliance].

The court therefore could not conclude that the Board had abused its discretion. "Board decisions recognize that the Board has the authority to require parties to follow a simple, straightforward, and inexpensive procedure to prove ownership and status of pleaded registrations."

TTABlog comment: Is the "status-and-title" provision of Rule 2.122(d) an anachronism? Why not allow an opposer to attach to the Notice of Opposition current printouts from the PTO databases showing that the registration is still alive and owned by the Opposer? Don't those databases contain the very same information that the PTO relies on when it certifies the status and title of a given registration? It seems to me that the main reason why people don't obtain status-and-title copies is because it's a pain in the neck to get them.

Text Copyright John L. Welch 2006.


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