Monday, January 26, 2009

Opposer Lays Egg at TTAB: Fails to Prove Priority in Edible Bird's Nest 2(d) Tussle

Royal King's Section 2(d) opposition to registration of the mark ROYAL NEST & Design (shown immediately below) for "edible bird's nests" never took flight because Opposer failed to prove priority. Opposer provided no evidence of priority, failing to properly introduce its registrations into the record and offering inconclusive admissions by Applicant. Royal King, Inc. v. TJ Seven Incorporation, Opposition No. 91178271 (January 12, 2009) [not precedential].

Standing: Proof of standing does not require proof of prior rights, and so Opposer Royal King satisfied the standing requirement by submitting a PTO office action in which its application to register the mark shown below was refused under Section 2(d) in light of the here-opposed application.

Priority: Royal King pleaded several registrations in its notice of opposition but failed to introduce the registrations into evidence in compliance with Rule 2.122(d). It attached copies of some of the registrations to its trial brief, but that was "too little, too late." Not only does the Board not consider evidence submitted for the first time with a final brief, but even if timely submitted, the mere copies were not "status-and-title copies" as required by the applicable version of the Rule. [TTABlog note: The reader will recall that Rule 2.122(d) was changed effective August 31, 2007, to allow submission of electronic records of the registrations with the initial pleading].

Royal King pointed to its requests for admissions, to which Applicant did not respond, thereby making the requests admitted. But those admissions were of no help in proving prior use, nor in proving that Royal King's registrations are valid and subsisting.

The only reference to the pleaded registrations is in Request for Admission No. 5, which asks applicant to: “Admit that Applicant is aware of the existence of the following registrations for ROYAL KING and marks that include ROYAL KING, and the design: [followed by list of pleaded registrations].” At best, this may be deemed to establish status, but it certainly does not establish opposer’s title to any of the pleaded registrations.

The Board concluded that Opposer had failed to prove priority, and so it dismissed the opposition.

Text Copyright John L. Welch 2009.


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