Thursday, November 15, 2007

New York Fails to Prove Standing and Priority, TTAB Dismisses "I ♥ NY" Opposition to "I ♥ SB"

It's déjà vu all over again. In another Section 2(d) confrontation involving the familiar I ♥ NY logo, the State of New York again failed to make its evidence properly of record, and it therefore lost its opposition to registration of the mark I ♥ SB (in the form shown below) for the service of "promoting Santa Barbara, California as a place to live and visit and the economic development thereof." Without its evidence, New York did not establish standing and priority as to its registered I ♥ NY mark for travel and tourism promotion. New York State Dept. of Economic Development v. I Love Santa Barbara, Inc., Opposition No. 91165648 (October 31, 2007) [not precedential].

New York suffered a similar fate earlier this year in an unsuccessful opposition to registration of I ♥ NC for clothing. [TTABlogged here]. In fact, the evidentiary problems that it encountered in that case "are virtually identical" to the ones encountered here.

New York submitted "soft" copies of its pleaded registrations, rather than the required status-and-title copies. [As of August 31, 2007, ordinary photocopies from the PTO database are sufficient under Rule 2.122(d), but that new rule applies only to proceedings commenced on or after that date]. Therefore, the Board ruled that the registrations were not of record. The Board's ruling on that issue seems particularly harsh since the Applicant, in its answer to the Notice of Opposition, stated that it "does not deny" that Opposer "obtained" its pleaded registrations, and that opposer's registrations are prima facie evidence of the validity of the registered marks and of opposer's exclusive right to use them. According to the Board, those statements by Applicant "did not relieve opposer of its burden of proof relative to standing."

Opposer did not take testimony, but instead tried to submit its evidence by way of Notice of Reliance. Bad idea. Website printouts, declarations, photo prints of purported licensed products, copies of license agreements, a storyboard for a television commercial, a listing of advertising expenditures, copies of licensee catalogues, applicant's responses to Opposer's document requests -- all were inadmissible by way of Notice of Reliance. Opposer managed to get an excerpt from a book, a newspaper article, and Applicant's interrogatory responses into the record, but that scanty evidence was not sufficient to prove standing or priority on the part of Opposer.

Strangely, Opposer was on notice of the deficiencies in its evidence when the Board denied its summary judgment motion, stating that "opposer did not submit sufficient evidence of its ownership of its pleaded registrations." Nonetheless, Opposer made no change in course.

Text Copyright John L. Welch 2007.


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