Wednesday, October 11, 2006

Stoller Wins One: CAFC Reverses TTAB's "STEALTH" Lawn Mower Decision

Not much has been going right for Leo Stoller and his trademark portfolio these days, but last week he managed to convince the CAFC to overturn a TTAB decision, at least "in part." In Stoller v. Sutech U.S.A., Inc., Appeal No. 06-117 (October 5, 2006) [not precedential], the CAFC affirmed in part and vacated in part the Board's decision (TTABlogged here) dismissing Stoller's opposition to registration of the mark STEALTH for lawn mowers. The court remanded the case to the TTAB to reconsider its finding that Stoller failed to establish his standing to oppose.

The court affirmed the Board's conclusion that applicant Sutech was "the proper party to register the mark," and that the mark was not merely descriptive of lawn mowers (despite Stoller's argument that the front of Applicant's lawn mower resembled the military's Stealth bomber). Likewise, it rejected Stoller's assertions premised on Sutech's use of the STEALTH mark prior to its application date, noting that the application was filed on the basis of intent-to-use. And it rejected Stoller's puzzling contention that the STEALTH word mark is unregistrable because it is functional.

However, Stoller's primary basis for opposition was likelihood of confusion. The Board found that Stoller had failed to establish use of his marks or ownership of any validly subsisting registrations. Consequently, it ruled that he had not established the requisite standing or priority of use.

Stoller attached copies of 20 certificates of registration to his notice of opposition, but those copies did not indicate the current status or title of the registrations, as required by rule 2.122 (d). And although Stoller provided some evidence of prior use, the Board found that evidence insufficient.

On appeal, Stoller asserted that Sutech had "stipulated" to the entry of various documents, including "The true and correct copy of the list of attached STEALTH Federal Trademark Registrations which are owned by Leo Stoller and herein relied upon in support of the Opposer's Notice of Opposition." The list included Registration No. 2,024,889 for the mark "The Stealth" for use on lawn sprinklers. The court noted that, "on its face, the notice of reliance appears to indicate that Sutech conceded that Mr. Stoller owns the marks listed in the attachment to the notice of reliance." The Board's opinion did not mention the notice of reliance or the stipulation contained in it. Therefore, the court found itself unable to determine whether the Boards had overlooked this evidence, or had found it insufficient to establish ownership of the registrations.

"We therefore remand for the Board to consider whether Sutech stipulated to Mr. Stoller's rights in the "stealth" marks referred to in his notice of opposition and whether the stipulation was sufficient to satisfy his burden to prove his ownership of registered "stealth" marks. If the board finds that, in light of the evidence of record, the stipulation is sufficient to satisfy Mr. Stoller's burden of proof on standing, the Board should address the merits of Mr. Stoller's likelihood of confusion claim."

TTABlog comment: Note that Registration No. 2,024,989 is one of the registrations that Judge Lindberg ordered to be canceled in the Pure Fishing litigation (blogged here). Therefore, this may indeed prove to be a hollow victory for Mr. Stoller.

Text Copyright John L. Welch 2006.


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