Precedential No. 8: Webpages Alone Insufficient to Prove Priority, Says TTAB

The Board dismissed this Section 2(d) opposition to registration of the mark WEAPON X MOTORSPORTS for various automotive parts, automotive body kits, and conversions services, finding that Opposer failed to prove priority. Opposer relied on several Internet webpages in attempting to show prior use of the mark WEAPONX, but the factual statements made on those webpages are hearsay and opposer failed to provide corroborating testimony. WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034 (TTAB 2018) [precedential] (Opinion by Judge George C. Pologeorgis).

Objection to Testimony: Opposer objected to two testimony declarations submitted by applicant as exhibits to its notice of reliance rather than as separate declarations, thereby supposedly denying opposer the opportunity to cross-examine the witnesses. The Board noted that the two witnesses were properly identified in applicant's pre-trial disclosures.

Although the better practice would have been for Applicant to file and serve separately copies of the Messrs. Herndon and Polter testimony declarations, instead of attaching them as exhibits to its notice of reliance, Applicant’s failure to do so is of no consequence. Opposer was still served with copies of the testimony declarations (which Opposer does not contest) filed during Applicant’s testimony period. Pursuant to Trademark Rule 2.123(c), Opposer could have elected to cross-examine these witnesses by filing and serving its notice of election to cross-examine, but it did not do so.

Observing that opposer's objection "elevates form over substance," the Board overruled it.

Priority: Applicant was unable to show actual use of its mark earlier than its filing date of October 29, 2013, but it was entitled to rely on that date as its constructive first use date.

Opposer relied solely on its Internet evidence submitted with its notice of reliance. However, Internet evidence is admissible only for what it shows on its face, not for proof of any matter stated therein. "[A]ssertions appearing in the printouts submitted by Opposer under notice of reliance cannot be used to demonstrate its priority without testimony corroborating the truth of this matter." Opposer failed to provide such testimony.

Reviewing the Internet evidence, the Board pointed out that entries made by opposer on online community board forums cannot be taken as true. Screenshots bearing the domain name www.weaponxperformance.com that display the mark WEAPONX, on their face do not prove that Opposer was the owner of the websites or that the mark displayed on the websites was being used by Opposer for the goods and services identified on the webpage. A press release on a third-party website stating “WeaponX Performance announced today that its revolutionary new spark plug is now available to consumers on its new Web site, www.weaponxperformance.com” is not evidence of the truth of the matters stated in the press release. 

In sum, Opposer has not proven it is the owner of the mark pleaded in the notice of opposition, and, even if it did prove ownership, it has not demonstrated it has priority. Accordingly, Opposer cannot prevail on its claim of likelihood of confusion

Abandonment: Finally, the Board considered opposer's unpleaded abandonment claim, which the Board found was was tried by consent. Opposer argued that applicant's failure to demonstrate use of its mark from 2001 to 2012 amount to abandonment. However, since opposer itself failed to show prior rights in its pleaded mark, applicant's constructive first use date sufficed and the assertion that Applicant did not use its mark prior to that date is irrelevant. And so the Board dismissed the abandonment claim.

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TTABlog comment: I think it's fair to say that this case was a mess. How simple would it have been for opposer to put in declaration testimony confirming its prior use?

Text Copyright John L. Welch 2018.