Precedential No. 39: Evidentiary Errors Lead to Dismissal of 2(d) Opposition for Failure to Prove Priority

In this train wreck of a Section 2(d) proceeding, Opposer Life Zone Inc. failed to properly introduce its trademark registrations and failed to provide evidence establishing common law rights in its marks from a date prior to Applicant's filing date. The Board therefore dismissed the opposition for lack of priority. Life Zone Inc. v. Middleman Group, Inc., 87 USPQ2d 1953 (TTAB 2008) [precedential].


Among numerous evidentiary errors, Opposer attempted to submit ordinary copies of its registrations by way of Notice of Reliance. That ran afoul of Rule 2.122(d) as then applicable, because only status-and-title copies could be introduced via Notice of Reliance. [The rule was changed last year to permit the submission of "a current printout of information from the electronic database records of the USPTO showing the current status and title of the registration"with the original pleading].

Both parties annoyed the Board by submitting "extensive evidentiary attachments" to their respective briefs. Although exhibits to briefs are not prohibited by the Rules (See 2.120(c)), "the Board will usually ignore them, because they comprise either untimely evidence or unnecessary copies of timely evidence." In other words, the Board does not want to waste its time figuring out whether a particular exhibit to a brief is just a copy of evidence already introduced.

Opposer's Notice of Reliance also included a printout of its website, which would be inadmissible without authenticating testimony - except that Applicant stated that it would rely on this Exhibit, and so it was admissible

Opposer's brochure, radio ads, radio interviews, newsletters, and seminar materials were all inadmissible by way of Notice of Reliance because they were not "printed publications" under Rule 2.120(e). Written testimonials from customers (even if in affidavit form) were inadmissible via Notice of Reliance, and they were also inadmissible on hearsay grounds.

Applicant's denials of Opposer's admission requests are not admissible: Rule 2.120(j)(3)(i) permits introduction of admissions, but not denials. ["the denial of a request for admission established neither the truth nor the falsity of the assertion, but rather leaves the matter for proof at trial."]

Applicant faced similar problems of proof. Internet search summary results for the term "LifeZone," as well as pages from several websites, were not admissible by notice of reliance. And pages from it marketing materials were not printed publications, and thus were likewise inadmissible.

Opposer's rebuttal testimony was improper and was stricken because it was not confined to evidence rebutting Applicant's case. "A plaintiff may not present its case-in-chief in rebuttal merely because the defendant denies that the plaintiff has made its case during its case-in-chief."

What remained of Opposer's evidence was not enough to establish priority. Although Applicant admitted Opposer's use of its mark on some goods, "it is ultimately of no help to opposer, because opposer has not proven (nor has applicant admitted) when such use commenced." [Emphasis in original].

And so, the Board concluded that Opposer failed to prove priority, prompting dismissal of the proceeding.

TTABlog comment: Rule 2.120 is a bit long, but it is worth reading now and then.

Text Copyright John L. Welch 2008.