Gotcha! No Certified Copy of Registration, So TTAB Denies Summary Judgment Motion
Applying its favorite "Gotcha!" rule, the Board denied a summary judgment motion brought by Opposer Omega SA because Omega relied on a mere photocopy of a registration, accompanied by an affidavit. The Board ruled that because Opposer failed to establish current status and title of the registration, a genuine issue of material fact as to the registration precluded summary judgment. Omega SA v. Oldenberg, Opposition No. 91164080 (July 16, 2007) [not precedential].
Applicant sought to register the word mark OMEGA for golf clubs, golf bags, and other golf gear. Opposer, while the opposition was pending, obtained a registration for its OMEGA & Design mark for goods including "golf equipment and accessories." The registration would have provided a constructive first use date earlier than Applicant's priority (filing) date.
Opposer moved for summary judgment, but furnished only a photocopy of its registration, rather than a certified, status-and-title copy. Moreover, its accompanying affidavit failed to confirm status and title. See TBMP Sec. 704.03(b)(1)(A). So the Board found that a genuine issue of material fact precluded summary judgment.
What happens next? Won't Omega simply re-file the motion along with a status-and-title copy? What's the point of the Board's denial of summary judgment? Applicant didn't object to the evidence; the Board raised the issue sue sponte.
Several trademark practitioners on the INTA list-serv have asked why the Board doesn't just take judicial notice of the information on the PTO's own database? When one obtains a status-and-title copy of a registration, the PTO does nothing more than confirm what its database already says. So again, what's the point?
It seems to me that at a minimum, the Board should recognize a rebuttable presumption that the PTO records are accurate and that the status and title of a registration is what the PTO's database says it is.
TTABlog note: Ron Coleman agrees, at his Likelihood of Confusion blog.
Text Copyright John L. Welch 2007