Wednesday, September 10, 2008

TTABlog Practice Pointer: Properly Submit Evidence or Lose Your Opposition

What simple lesson can be gleaned from the following two Section 2(d) oppositions? Both went off the road at the testimony stage because the Opposer failed to get any evidence properly into the record. Lesson learned? Read the Rules of the Road, i.e., the Trademark Rules, before heading down TTAB Boulevard.

In the first case, H. Michael Bishop v. Marina Flournoy, Oppositions Nos. 91175625 and 91175737 (September 5, 2008) [not precedential], Opposer Bishop did not file testimony or a notice of reliance during his testimony period. He did file a trial brief, to which he attached evidence. Not considered, said the TTAB, since the evidence was not properly submitted during Bishop's assigned testimony period. And so, since Bishop had no properly-submitted evidence, the Board dismissed the oppositions for failure to prove standing or any pleaded ground for relief.

In the second case, Reece R Halpern v. Grand Media, LLC, Opposition No. 91165362 (September 4, 2008) [not precedential], Opposer Halpern submitted only his own affidavit with exhibits during his testimony period. Halpern, an attorney, argued that he misread the requirements for submitting evidence and that "not accepting his affidavit and exhibits exalts form over substance." The Board was not sympathetic. It granted Applicant's motion to strike that evidence, since testimony must be taken by oral deposition, absent a stipulation permitting affidavit testimony. See Rules 2.123(a) and (b).

The Board then considered the evidence submitted by Applicant during its testimony period "to determine whether it has established or admitted the elements of Opposer's case." The Board observed that:

"In this regard, representations made by opposer’s co-counsel during cross examination of applicant’s witnesses do not establish facts upon which opposer can rely; and exhibits shown by opposer’s co-counsel to applicant’s witnesses are without proper foundation and authentication for purposes of establishing any elements of opposer’s case."

Concluding that Opposer Halpern had not established any of the elements of his case, the Board dismissed his opposition.

Text and Photograph Copyright John L. Welch 2008.


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