Monday, December 30, 2013

TTABummer: Pro Se Opposer Fails To Get Registration, Other Evidence Into Record

The Board dismissed this Section 2(d) opposition to registration of the mark SUN BUM for stickers, clothing, and toy animals, because Opposer Donald A. Gagne, appearing pro se, failed to get his evidence of priority into the record. Gagne relied on a registration (issued in 1996) for the mark SUNBUM for lounge chairs, and on common law use of that mark for lounge chairs and shirts. However, he failed to properly submit the registration into evidence, and the Board rejected his other proffered evidence as inadmissible under the hearsay rule. Donald A. Gange v. Agility Sports, LLC, 91194831 (December 23, 2013) [not precedential].

Mr. Gagne took no testimony, but submitted a photocopy of his registration, a photocopy of papers from the ex parte prosecution file of the registration, and a printout from the USPTO assignment database. However he did not submit any document showing the current status of the registration. Therefore the registration was not properly made of record. See Trademark Rule 2.122(d)(1).

Opposer Gagne did not plead priority by analogous use, nor was that issue tried by consent. Therefore, to establish priority, he had to prove actual trademark use of the SUNBUM mark. His evidence, submitted via notice of reliance, consisted of newspaper articles and transcripts of radio and television shows discussing his products, Facebook and Twitter pages, and other Internet documents. However, these documents "constitute hearsay as per Federal Rules of Evidence 801 and 802, if they are offered for the truth of the matter asserted, i.e., that opposer was using [his] pleaded mark SUNBUM on the dates that the articles were written or the dates that the television or radio shows were broadcasted."

In short, the fact that the SUNBUM mark appeared on the various Internet documents was not proof that the mark was in trademark use on the date of the document. Testimony was required to establish that fact. "Opposer could have testified as to his use of his pleaded mark to establish priority, preferably corroborated with documentary evidence authenticated by opposer (for example, sales figures or invoices)."

The Board acknowledged that Opposer Gange entered the trial phase of this opposition without the benefit of legal counsel (who had died). "Nonetheless, the rule against hearsay is a long-established safeguard of the common-law system, serving to exclude evidence which cannot be tested by cross-examination."

Read comments and post your comment here.

TTABlog note: The Internet pages submitted by Gagne might have established priority via use analogous to trademark use. If you were to appeal or seek review of this decision, what route affords the opportunity to add evidence?

Text Copyright John L. Welch 2013.


At 11:32 AM, Anonymous Anonymous said...

It is fine that the Board holds pro se parties to abide by the rules governing Board proceedings. After all, the rules apply to every party (with or without counsel).
Often, pro se parties are not ignorant of Board practice and procedure. To the contrary, they are frequently fully aware of Board practice, but they use "pro se" status as an excuse for not following the rules.
In this case the Board allowed the plaintiff time to appoint new counsel and he chose not to do so and the case moved forward in the trial phase. Whether to hire counsel is a business decision and pro se parties should have to live with the decision they make.

At 12:13 PM, Anonymous Anonymous said...

I generally agree with the previous comments regarding pro se parties with one major exception: I have never understood why the TTAB, a tribunal of the PTO, cannot take judicial notice of its own records, i.e., the current status of a registration. That is Alice in Wonderland absurd and patently unfair, especially since that info is now a keystroke away. I, and many others, have been asking for that change in the rules for years, to no avail.

At 12:29 PM, Anonymous Anonymous said...

Agree entirely with first poster. The Board bends over backwards for pro se parties. There is no reason that parties represented by counsel who must comply with the rules should waste time and money because the other side decides to do it on the cheap or simply refuses to read the rules. This isn't like the right to counsel in a criminal proceeding. The Board is not reluctant to hammer a client and the attorneys with a "gotcha" on the rules. To me a pro se party must be treated the same. The Board should not penalize clients who hire competent counsel that play by the rules.

At 8:26 AM, Anonymous Anonymous said...

In general the rules are too formalistic. Both the TTAB and the parties should be given some slack. It is a waste of attorney time, read money, and judicial time and can be unjust to all.


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