Thursday, February 21, 2008

Precedential No. 7: TTAB Dismisses 2(d) and Dilution Opposition for Lack of Evidence and Inadequate Pleading

Opposer Demon International had a devil of a time in this Section 2(d)/dilution opposition proceeding. It failed to properly plead the dilution claim and it put in no evidence to establish standing or priority on its likelihood of confusion claim. So it lost. Demon Int'l LC v. Lynch, 86 USPQ2d 1058 (TTAB 2008) [precedential].

Applicant William Lynch sought to register the mark shown above for t-shirts and other clothing items. Opposer claimed likely confusion with its mark DEMON for various clothing items, including t-shirts, which it allegedly used since 1999. It also threw in a dilution claim. In his answer, Lynch stated that he "does not dispute said duration of commerce or items of commerce by Petitioner," but he denied likely confusion.

Opposer's dilution claim was quickly dismissed because it did not include an assertion that Opposer's mark is famous. [Yikes! - ed.]

Opposer failed to put in any evidence to prove its common law rights in the DEMON mark and although a registration issued to Opposer after the opposition was filed, it did not submit the registration into evidence. [Of course, had Opposer pleaded and proved ownership of the registration, that would have removed priority from the case.]

Applicant Lynch's answer that he "did not dispute said duration of commerce or items of commerce" was not a "specific admission" of prior rights, "especially given that applicant has otherwise denied that opposer will be damaged by registration of applicant's mark." Even if this statement were construed as an admission, however, it was not an admission that Opposer was using any particular mark.

The Board ruled that Opposer had failed to prove standing and priority for its 2(d) claim, and so this claim was also dismissed.

TTABlog comment: It seems to me that Applicant Lynch's answer was pretty darn close to an admission that Opposer used its mark on its goods since 1999. But because Opposer failed to put in any evidence, it was not about to get a break from the Board. The lesson here is: treat the Board with respect by putting in a proper case.

Text Copyright John L. Welch 2008.


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