Monday, March 16, 2015

WYHM? TTAB Denies Summary Judgment Motion, Says Opposer Has Standing

Nearly three years into this opposition proceeding, Applicant TGN Services moved for summary judgment on the ground that Opposer Jeanette K. Daniels lacked standing to oppose TGN's application to register the mark PROGENEALOGISTS for, inter alia, providing research services in the field of genealogy. Ms. Daniels alleged that the applied-for mark is generic, or alternatively, merely descriptive and lacking in secondary meaning. Jeanette K. Daniels v. TGN Services, LLC, Opposition No. 91204462 (February 18, 2015) [not precedential].

As we know, standing is a threshold issue in every inter partes proceeding. The CAFC in Ritchie v. Simpson established a low threshold for standing: "namely, whether a plaintiff's belief in damage has a reasonable basis in fact and reflects a real interest in the case." A plaintiff who challenges on the ground of mere descriptiveness or genericness has standing if she has a competitive need or equal right to use the term in a descriptive manner.

Opposer Daniels alleged that she is a professional genealogist and an instructor at a genealogy college. In that connection, she has conducted research work for clients since 1977, and she uses the words “pro,” “professional,” “genealogy,” “genealogists,” and “genealogist” in her genealogic business.

In support of her allegations, Opposer submitted a copy of her certification as an “Accredited Genealogist,” issued by The Genealogical Department of The Church of Jesus Christ of Latter-day Saints, and she testified that she was president of the local Association for Professional Genealogists. Opposer also submitted evidence that she uses the phrases “Where Genealogists Become Professionals,” “Professional Genealogy,” and “Professional Genealogical Research Courses” on the college website.

In light of this evidence, the Board concluded that Ms. Daniels "demonstrated a real interest, that is to say, 'a direct and personal stake' in the outcome of this proceeding, and a reasonable basis for belief that she may be damaged by registration of the applied-for mark."

And so the Board denied the summary judgment motion.

Read comments and post your comment here

TTABlog note: WYHM? Would You Have Moved for summary judgment?

Text Copyright John L. Welch 2015.


At 3:47 PM, Anonymous Paul Reidl said...

Summary judgment is difficult to get from the Board on a good case. Given that the standing bar is only about 6 inches off the floor this seemed like a very low likelihood motion.


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