Monday, April 07, 2014

Precedential No. 15: TTAB Dismisses Opposition Under Rule 2.132(a) For Failure To Prosecute

In a less than scintillating but precedential ruling, the Board granted applicant Romance's Rule 2.132(a) motion to dismiss this opposition because Opposer Sterling Jewelers failed to prosecute the case. Sterling relied on its prior registration for the mark HEARTS DESIRE for fine jewelry, in claiming that the applied-for mark WHAT YOUR HEART DESIRES for jewelry was likely to cause confusion under Section 2(d). But Sterling took no testimony and offered no evidence other than a photocopy of its registration attached to the notice of opposition. Sterling Jewelers Inc. v. Romance & Co., Inc., 110 USPQ2d 1598 (TTAB 2014) [precedential].

Applicant Romance contended that Sterling's registration was not submitted in compliance with Rule 2.122 because it did not show the current status and title of the registration. Sterling maintained that Romance admitted in its Answer that Sterling is the "listed owner of record" for its pleaded registration, and consequently that Opposer Sterling may rest upon the prima facie case established by the registration. Alternatively, Sterling requested that the Board grant it leave to file "further evidence of the current status and title of its pleaded registration and provide any further evidence, as appropriate." [Fat chance of that! - ed.].

Romance argued that it did not admit that Sterling is the owner of the pleaded registration or that the registration is valid and subsisting, but only that Sterling is the "listed owner of record."

The Board promptly denied Sterling's request to submit further evidence, since it had "failed to argue or demonstrate that its failure to submit any evidence or take any testimony during its assigned testimony period was the result of excusable neglect." See Fed. R. Civ. P. 6(b),

As to the motion to dismiss, Trademark Rule 2.132(a) provides that "[i]f the time for taking testimony by any party in the position of plaintiff has expired and that party has not taken testimony or offered any other evidence, any party in the position of defendant may … move for dismissal on the ground of the failure of the plaintiff to prosecute."

The first question, then, was whether Sterling had proffered any evidence: i.e., whether its registration was properly placed into evidence. Rule 2.122(d) provides for the submission of a registration via several alternative routes, but attaching a mere photocopy of the registration to the notice of opposition is not one of them.

But what about the admission in Romance's Answer that Sterling is the "listed owner" of the registration? The Board refused to construe that admission as establishing Sterling’s current ownership of the registration. "[I]nstead, we view the admission, albeit somewhat ambiguous, as merely establishing that opposer is identified as the owner of the registration in the photocopy of the registration attached as an exhibit to the notice of opposition."

Because Sterling did not properly submit any evidence in support of its Section 2(d) claim, and did not establish that its registration is currently owned by it and is valid and subsisting, Sterling "failed to demonstrate its standing or that it is entitled to any relief under its asserted claim of likelihood of confusion."

And so the Board granted the motion to dismiss.

Read comments and post your comment here.

TTABlog note:  Somebody should have been reading the TTABlog!! The standing hurdle is so low that you have to work at tripping over it.

Text Copyright John L. Welch 2014.


At 8:47 AM, Anonymous Anonymous said...

So, how bad does this prejudice Sterling from petitioning to cancel once the registration issues?

At 9:01 AM, Blogger John L. Welch said...

I believe it is essentially a dismissal with prejudice, barring Sterling from bringing the same claim. A petition for cancellation would be the same claim.

Here's a question: what if Sterling brings a civil action for review, where it theoretically is allowed to add evidence. Can it rectify the error by that route?

At 12:51 PM, Anonymous Anonymous said...

It shouldn't matter whether Romance admitted that Sterling owned the registration.

The admission is not evidence of the fact that needs to be proved. Sterling is the owner or not the owner, regardless of whether Romance admits anything. Romance's admission would not make Sterling the owner if, in fact, Sterling was not the owner.

Sterling still has to prove its the owner with affirmative evidence of the fact. The admission (if it had been actually made) would merely prevent Romance from disputing it.

At 1:30 PM, Blogger John L. Welch said...

If Romance admitted in its answer that Sterling is the owner of the mark and registration, then Sterling would believe, would it not, that it did not need to provide any further proof because it was not a contested issue? Would it then be fair to say to Sterling that, despite the admission, it should have proved ownership anyway? Couldn't you say the same thing about any fact issue that is admitted?

At 2:36 PM, Anonymous Anonymous said...

John, the Board seems to agree with you, which is why it spent time on the issue. But I don't think that is correct in this situation.

Perhaps the issue is better framed in terms of sufficiency and the prima facie case -- meeting the burden of proof. In this sense, the admission could be evidence of the fact, but, if the admitting party actually has no idea and there is an objective record available, that admission would not satisfy the Opposer's burden.

In contrast, an admission can be sufficient evidence of the fact, if the substance of the admission is something the admitting party can speak to.

E.g., Admit that you ran the red light. Or, admit that you said "yes." Or, admit that you accepted the offer.

At 8:30 PM, Blogger John L. Welch said...

I like your point, but if the responder does not know whether a statement is true or false, it shouldn't admit. It should deny on lack of knowledge and information. How is plaintiff supposed to know whether defendant's admission is not based on fact?


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