Tuesday, January 20, 2009

TTAB Dismisses Tootsie Roll's "MISTER FLUFFY" Opposition for Failure to Establish Priority

Tootsie Roll swung and missed in its opposition to registration of the mark MISTER FLUFFY for candy. Tootsie's own registrations for FLUFFY STUFF and FLUFFY STUFF COTTON CANDY POPS were not properly submitted and it failed to prove prior common law use. Ergo, the Board dismissed the opposition. Tootsie Roll Industries LLC v. Cormorant Group LLC, Opposition No. 91178031 (January 6, 2009) [not precedential].

Standing: The threshold issue for the Board was Tootsie's standing: Tootsie alleged ownership of the two registrations, as well as common law rights. It attempted to submit its registrations with a Notice of Reliance but provided only ordinary copies rather than the status-and-title copies required by Rule 2.122. The Board therefore refused to consider the two registrations.

"If opposer had introduced acceptable evidence of its ownership of the asserted registrations, that would have been adequate to show standing."

The Board then looked to Tootsie's requests for admissions. Applicant had failed to answer, and so the requests were deemed admitted. One request made reference to "Opposer's Marks FLUFFY STUFF and FLUFFY STUFF COTTON CANDY POPS," and the Board construed that language as sufficient to show that Tootsie owns those two marks. It thus concluded that Tootsie had made "the minimal showing necessary to establish its interest in the case, and thus its standing. "

Priority: Of course, an opposer must establish priority in order to prevail on a Section 2(d) claim. "Here, too, if opposer had introduced acceptable evidence of its ownership of the asserted registrations, priority would not be an issue. See King Candy Co. v. Eunice King's Kitchen, Inc., 182 USPQ 108, 110 (CCPA 1974)."

The only other evidence of record consisted of the admissions. However, "[c]onspicuous by its absence from the admissions is any mention of opposer's use of the FLUFFY STUFF or FLUFFY STUFF COTTON CANDY POPS marks prior to the filing date of the opposed application."

Therefore, Tootsie failed to prove priority and the Board dismissed its likelihood of confusion claim.

TTABlog Practice Pointer: Read Rule 2.122(d). As shown here, failure to comply may be fatal to your claim.

TTABlog comment: Barack Obama will be sworn in today as Presidential No. 44, and I'm blogging about MR. FLUFFY? There something out of kilter here.

Text Copyright John L. Welch 2009.


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