Tuesday, November 20, 2007

"MONSTER" Mistake: 2(d) Opposer Fails to Get Registrations Into Record, Loses on Priority

The recent TTAB Rule changes came a bit too late to save Opposer Monster Cable. The Board dismissed its opposition to registration of the mark MONSTER in the design form shown below, for "multi-purpose steam cleaners for domestic use," because Opposer failed to make properly of record any of its 50 registrations. Monster Cable Prods., Inc. v. Euroflex S.R.L., Opposition No. 91161150 (October 24, 2007) [not precedential].

Rule 2.122(d) was amended, effective August 31, 2007, to allow a party to submit its pleaded registration in the form of photocopies from the PTO TARR and assignment databases, attached to its original pleading. However, that change applied only to proceedings commenced on or after that date. Thus Opposer Monster was subject to the old rule, which required either status-and-title copies or live testimony as to ownership and status of the registrations.

Monster submitted, as exhibits during its testimony period, plain photocopies of its registrations. Unfortunately, its accompanying testimony failed to establish ownership or validity. Monster's witness "was simply asked to identify the mark and indicate as to each whether the mark is still in use."

Although Applicant Euroflex did not attend the deposition, the Board ruled that it did not waive its objection by failing to object at the time of the testimony. In contrast, Applicant did waive its objection to certain website evidence for lack of authentication because, had it objected at the deposition, Opposer could have cured the deficiency. In the latter case, "opposer had a reasonable expectation that the evidence was properly of record." As to the registrations, however, "opposer may not reasonably presume evidence is of record when that evidence is not offered in accordance with the Trademark Rules."

Of course, Monster still could have relied on its common law rights, but the testimony of its witness was limited to the current use of its marks, with no testimony as to when the marks were first used or whether they were used prior to the filing date of the opposed application.

Ruling that Monster had failed to introduce properly any evidence that its marks were used prior to Applicant's filing date, the Board dismissed the opposition for lack of proof of standing.

TTABlog comment: It is simply amazing how often parties fail to follow the Rules in introducing pleaded registrations into evidence. Will the amended Rule 2.122(d) eliminate the problem? All one has to do is attach to the initial pleading a photocopy of the TARR and assignment database printouts for each pleaded registrations. No need to order a status-and-title copy of the registration.

I suggest, however, that the problem will not go away completely. Some parties will undoubtedly submit a photocopy of the registration certificate, rather than the corresponding TARR and assignment database printouts. or the will submit a TESS printout, without the assignment page. As a result, they will find themselves in the same boat as Monster, foundering on the rocks of Rule 2.122(d).

Text Copyright John L. Welch 2007.


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