TTAB Dismisses CAFE BARBERA Opposition: Pleaded Registration Not Properly Made of Record
Barbera 1870 S.p.A. filed an opposition to registration of the mark shown immediately below for restaurant services, claiming likelihood of confusion under Section 2(d) and false association under 2(a). It relied on alleged ownership and prior use of the mark BARBERA ... DAL 1870 & Design for "providing food and drink," and the registered mark MISCELA BARBERA CAFFE BARBERA DAL 1870 IL MAGO DEL CAFFE & Design for coffee. Both claims failed for lack of proof of ownership and prior use. Barbera 1870 S.p.A. v. Barbera Caffe’ S.p.A., Opposition No. 91201113 (October 2, 2013) [not precedential].
Likelihood of Confusion: Opposer alleged that it owned a pending application and an existing registration, but it put neither into evidence. It may have been relying on the data that it entered into the ESTTA system when it filed its opposition, but that did not make the registration of record. See Melwani v. Allegiance Corp., 97 USPQ2d 1537 (TTAB 2010). [Of course it could have submitted a current printout of the PTO's electronic database records, or proffered the registration via testimony, or provided status-and-title copies issued by the PTO. See Rule 2.122(d)(1)].
Opposer did submit a few items via notice of reliance, but nothing that established its ownership or prior use of its two marks. Applicant, in its answer, denied the salient allegations of the notice of opposition.
And so the Board concluded that opposer had failed to establish standing or priority, and it dismissed this Section 2(d) claim.
False Association: An opposer does not need to establish proprietary rights in a trademark in order to support a Section 2(a) false association claim. [See the TWIGGY decision]. But it must establish that applicant's mark "is the same or a close approximation of opposers previously used name or identity." [See the SEX ROD decision].
Here, Opposer failed to establish a "previously used name or identity."
Moreover, in order to establish a Section 2(a) false association claim, one must prove that its name or identity is sufficiently famous so that, when used in connection with another's goods or services, "a connection would be presumed." Here there was no evidence to establish the fame of opposer's marks.
And so the Board dismissed the Section 2(a) claim.
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TTABlog note: I think keying in the information into ESTTA should suffice to make a registration of record. Why can't this result in a transfer to the TTAB file of the current data/information regarding status and title? Why does the opposer have to print out the PTO database pages and submit them? Seems like more of a "gotcha" rule than anything else.
Text Copyright John L. Welch 2013.
posted by John L. Welch @ 10/18/2013
3 comments
3 Comments:
So, b/c of a technical rule that, with current technology, is disconnected from the original rationale for the rule, a party loses.
Sure, it's easy to comply w/ the rule, so the party is ultimately to blame.
But the USPTO Examining ATtorneys rely on ESTTA all the time; but another branch of the USPTO finds it unreliable?
Ridiculous.
Assume the Board checks plaintiff's pleaded registration(s) for current status and current title. What if there is an assignment not yet recorded or some assignment was recorded incorrectly (by the party or the USPTO), and/or there is an inaccuracy in the Section 8 or Section 9 records, and the Board writes up the decision based on the USPTO records. Lots of wasted effort all because the plaintiff would not print out the TSDR and Assignment records, check them for accuracy, and then submit them to the Board (getting the records corrected in advance, if necessary).
Perhaps the rule is intended to require plaintiffs to review the current status and current title of their pleaded registrations. Further, if there are many registrations, the plaintiff's submission will clarify what registration(s) it intends to rely on for trial purposes.
What about pleaded application(s) that register before final decision, particularly if the pleaded application(s) are not fully mentioned or argued by the plaintiff? Is the Board to guess what the plaintiff wished to rely on at trial?
The rule requiring plaintiffs to prove their pleaded registrations is not onerous or unfair.
Another "Catch 2.122"
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