Thursday, January 31, 2008

TTAB Dimisses 2(d) Opposition for Lack of Evidence: Opposer's Notice of Reliance Mailed to Wrong PTO Address

Another Section 2(d) opposition went off the track when an opposer failed to submit evidence properly into the record. Here, Opposer El Dorado Park Self Service attempted to file a Notice of Reliance, but mailed it to the old PTO address in Arlington, Virginia, rather than the new address in Alexandria. It arrived at the PTO after El Dorado's testimony period had closed and therefore was untimely. And in any case, the evidence that Opposer tried to submit, a telephone directory advertisement, did not show its supposed mark "TOO MUCH STUFF?" used as a source indicator. The Board therefore dismissed the opposition. El Dorado Park Self Storage v. Yelenich, Opposition No. 91159837 (January 18, 2008 [not precedential].

El Dorado did not take testimony but did submit by mail its Notice of Reliance on the last day of its testimony period. However, in addition to improperly including many documents that were not the proper subject matter for a Notice of Reliance, El Dorado addressed the Notice to the PTO's old Arlington, Virginia address. The PTO did not actually receive the notice until three days later. Applicant Yelenich moved for an order striking the Notice as untimely, and for judgment based upon Opposer's failure to submit evidence. Opposer did not contest the motion.

The Board agreed with Applicant Yelenich that the Notice of Reliance was untimely, noting the statement in the TMEP that the certificate of mailing requirements are strictly enforced. It dismissed the opposition under Rule 2.132(a) because El Dorado had not offered any evidence.

Moreover, the Board observed that, even if El Dorado could be permitted to amend the mailing certificate to state the correct mailing address, or even if its testimony period could be reopened to make its Notice of Reliance timely, El Dorado would still fail to meet its burden of proof. The only proper evidence included in its Notice of Reliance was a telephone directory listing (shown above) displaying the phrase "Too Much Stuff?" On its face, however, the directory listing "fails to show ... that as displayed the term 'Too Much Stuff?' functions as a service mark which would be perceived by purchasers and prospective customers of opposer's services as identifying and distinguishing its alleged self-storage services."

"Instead, as used therein, such term appears simply to ask consumers the rhetorical question of whether they have accumulated 'too much stuff' and hence would need to rent space for their 'stuff' in self-storage facilities of the kind offered under the mark and the associated logo 'EL DORADO PARK SELF STORAGE.'"

The Board thus delivered an alternative knockout punch to the already defeated Opposer.

Text Copyright John L. Welch 2008.


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