TTAB Dismisses SURVIVAL BRACELET Opposition for Lack of Standing

Bison Designs opposed an application to register the mark SURVIVAL BRACELET for "bracelets" [BRACELET disclaimed] on the grounds of genericness and mere descriptiveness. However, Bison failed to plead and prove standing, and so the Board dismissed the opposition. Bison Designs LLC v. Tough Gear, Inc., Opposition No. 91201036 (February 5, 2015) [not precedential].

The Board first dealt with Opposer Bison's motion to strike applicant's final brief because it was filed (one day) after the due date and was improperly formatted (according to Bison, applicant listed only about 46% of its cited cases in its Table of Authorities). The Board, however, observed that all 13 cases cited in applicant's brief were listed. The ones not listed were in its appendix, which is not part of the brief. In any event, failure to include a Table of Authorities is not a ground for striking a brief. And although the brief was tardy, the Board applied the Pioneer factors (Pioneer Inv. Serv. Co. v. Brunswick Assoc. Ltd., 507 U.S. 380 (1993)) in concluding that there was excusable neglect on the part of applicant, and it therefore accepted the brief.

As to the issue of standing, this "threshold" issue must be alleged and proven in every inter partes case. When mere descriptiveness is alleged, opposer's standing "is presumed if it has a sufficient interest in using the descriptive term in its business." The same standard applies to a claim of genericness.

Here, Opposer Bison neither properly pled nor proved standing. Bison stated in the preamble to its Notice of Opposition that it "believes that it will be damaged by the above-identified application if it were to proceed to registration," but it never alleged that it sells or manufactures anything, nor did it state any other reason why it has the requisite "real interest" in this proceeding.

Even if standing had been properly pled, Bison did not submit any probative evidence to establish its standing. In its notice of reliance, Bison did not refer to any of its exhibits as establishing standing. However, in its reply brief Bison pointed to two exhibits included in its notice of reliance, in an attempt to counter applicant's argument. But those exhibits, on their faces, were not probative of the issue, and attorney argument in opposer's brief could not substitute for timely submitted and properly identified evidence.

Simply put, Opposer did not state its relevance or characterize this evidence in its Notice of Reliance as involving Opposer’s own use of the term “survival bracelet.” Opposer cannot state in its brief for the first time that this evidence involves Opposer, and proceed to rely on the evidence for the same reason. Applicant was not put on notice and thus did not have the opportunity to verify such an assertion and, if it were to contest the assertion, submit rebuttal evidence, e.g., showing that the reference involves an unrelated third party with a similar name.

In short, applicant raised "timely and genuine arguments as to the limitations of the probative value of Opposer’s evidence for purposes of showing its standing."

And so the Board dismissed the opposition for lack of standing.

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TTABlog note: I suggest that every TTAB practitioner, if he or she wants his or her opposition or cancellation to survive, wear a bracelet that says PROVE STANDING.

Text Copyright John L. Welch 2015.