Thursday, December 18, 2008

TTAB Dismisses "Sopranos" Opposition: HBO Neglects to Prove Standing

The standing "hurdle" is usually easy to clear in a TTAB opposition, but it does require some effort: i.e., one has to submit some evidence to get the case off the ground, so to speak. In this opposition, Opposer Home Box Office apparently believed it had a slam-dunk fraud case based on Applicant's answer to the notice of opposition, but HBO failed to prove its own standing to oppose. As a result, the Board dismissed the opposition. Home Box Office, Inc. v. Vanderbilt Trading Partnership, Opposition No. 91167861 (December 3, 2008) [not precedential].

HBO challenged Vanderbilt's use-based application to register SOPRANO CREATIONS for various clothing items, including shirts and sweaters, alleging likelihood of confusion and dilution vis-a-vis its registered mark THE SOPRANOS for clothing and for a television program. In its answer, Applicant asserted that it "has not sold any shirts or sweaters and does not intend to do so in the future." HBO then amended its notice of opposition to add the grounds of lack of use and fraud.

The case moved to the trial stage, during which neither party submitted testimony. Opposer HBO did file a notice of reliance, consisting of Vanderbilt's answer (already of record) and an unauthenticated letter from Vanderbilt's counsel (inadmissible via notice of reliance).

HBO submitted a trial brief, but addressed only the fraud and lack-of-use issues. The Board deemed the other issues waived.

The Board then observed that "[s]tanding is a threshold issue that must be proven in every inter partes case." An opposer must show both a "real interest" in the proceeding and a reasonable basis for its belief that it will be damaged. Here, HBO provided no evidence of its standing. Although HBO pleaded several registrations in its notice and its amended notice of opposition, it never introduced them into evidence. (see Rule 2.122(d)). The Board does not take judicial notice of registrations. Applicant did not admit HBO's standing in its answer. Thus there was not evidence in the record to show that HBO had a real interest in the case or that it would be damaged by the registration of the subject mark.

The Board therefore dismissed the opposition.

TTABlog practice pointer: Don't forget to prove standing! Mere allegations in a notice of opposition (unless admitted) prove nothing. At a minimum, properly introduce your registration(s) into the record per Rule 2.122(d).

Text Copyright John L. Welch 2008.


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