Monday, April 02, 2007

TTAB Dismisses "I ♥ NY" Opposition to "I ♥ NC" Due to New York's Failure to Prove Priority

In a modern day David v. Goliath story, pro se Applicant Michael Nnamdi Stewart bested the Empire State in a Section 2(d) confrontation involving the familiar I ♥ NY logo. The State of New York failed to make its evidence properly of record, and it therefore lost its opposition to registration of the mark I ♥ NC (in the form shown below) for various clothing items [NC disclaimed]. Without its evidence, New York did not establish priority as to its registered I ♥ NY mark for clothing. New York State Dept. of Economic Development v. Stewart, Opposition No. 91162024 (March 13, 2007) [not precedential].

Getting down to the basics, the Board pointed out that there are two prongs to a Section 2(d) claim: priority and likelihood of confusion. The State of New York got stuck on the first prong: because the State "failed to prove that it has made use of any trademarks, it cannot show priority of use."

New York did not submit any testimony, nor did it properly introduce its registrations into the record. It submitted "soft" copies rather than the "status and title" copies, and otherwise failed to satisfy Trademark Rule 2.122(d).

In addition, New York offered a number of exhibits by way of notice of reliance, but many of them were not appropriate for such a notice: unauthenticated printouts of website pages; declarations used on a summary judgment motion; "photoprints" of its licensed products; license agreements; a listing of advertising expenditures; and copies of licensee catalogs. Those documents do not constitute "printed publications" or "official records" that can be made of record by way of notice of reliance. (See Trademark Rule 2.122(e)).

The State did manage to get a few items into evidence via the notice of reliance: pages from a book, a newspaper article, and Applicant's interrogatory responses. However, the book and the newspaper article cannot be used to prove the truth of the statements made therein. And although Applicant Stewart made a number of admissions in his answer and his brief, those admissions were not enough to save New York:

"Even if we cobble together the various admissions made by applicant, they do not create an overall picture showing that opposer has priority of use of the mark I ♥ NY for any goods or services with which applicant's use of this mark for clothing is likely to cause confusion."

The Board therefore dismissed the opposition.

TTABlog Comment: Wow, talk about snatching defeat from the jaws of victory! The State's problems seemed to stem from the assumption that documents and declarations submitted with a summary judgment motion could be similarly submitted at trial without testimony. Not so. See TBMP Section 528.05(a).

Text Copyright John L. Welch 2007.


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