Friday, May 13, 2005

TTAB Tosses Out Two 2(d) Oppositions For Failure To Make Prima Facie Case

It is a fundamental principle of TTAB inter partes practice and procedure that the party in the position of plaintiff has the burden to establish at least a prima facie case prior to the close of its testimony period. There are various pathways by which a a party may proffer its evidence: testimony deposition, notice of reliance, stipulation, judicial notice, etc. (See, generally, Chapter 700 of the TBMP.) On occasion, however, a plaintiff fails to put in any evidence prior to the close of its testimony period, and when that happens, the party is over.


For example, in Int'l Flora Technologies, Ltd. v. Desert Whale Jojoba Co., Opposition No. 91157402 (April 29, 2005) [not citable], Opposer Flora sought to prevent registration of the mark JOJOBASOMES for soaps, essential oil, cosmetics and hair lotions, alleging a likelihood of confusion with its registered marks METASOMES, FLORASOMES, JOJOBEADS, and JOJOBUTTER. In its answer, Applicant Desert Whale admitted none of the elements of Flora's Section 2(d) claim. Neither side submitted anything further to the Board until Flora filed its brief at final hearing, accompanied by certain exhibits. Desert Whale objected, and the Board ruled in its favor and dismissed the opposition.

The Board pointed out that Flora did not make its registrations of record, and that the Board does not take judicial notice of USPTO records. Nor did Flora introduce any evidence during its assigned testimony period. Evidence that first appears as an attachment to or part of a final brief is untimely and improper.

As a last resort, Flora must have been jojoking when it asked the Board to take judicial notice "as a matter of public record" of Flora's "tremendous reputation in the field of botanically derived goods." That, of course, is not a proper subject for judicial notice.

With no evidence properly in the record and no admissions from Applicant, Flora was finished.

A similar fate befell Opposer Sleepcare in its opposition to registration of the mark shown immediately above for retail and mail order services featuring products to help people sleep. Sleepcare, Inc. v. Sleepco, Inc., Opposition No. 91157829 (March 31, 2005) [not citable].

Sleepcare claimed prior common law rights in the trademark and trade name SLEEPCARE for mattresses and box springs, and contended that confusion would be likely vis-a-vis Applicant's mark. When it came to submitting its evidence, however, Sleepcare fell asleep.

Applicant denied the salient allegations of the notice of opposition. Neither party submitted anything other than Opposer Sleepcare's brief at final hearing, to which it attached an affidavit with exhibits. Of course, as noted, the final brief is not a proper vehicle for the introduction of evidence. Moreover, affidavits are not acceptable as testimony without a stipulation or agreement from the other party.

Ergo, the Board dismissed the opposition because Sleepcare failed to submit proper proof to support its claim.

TTABlog comment: Yikes!

Text ©John L. Welch 2005. All Rights Reserved.


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