Thursday, May 28, 2009

On Remand from CAFC, TTAB Re-Jettisons Bishop v. Flournoy Oppositions

Opposer H. Michael Bishop recently returned to the TTAB for another Board paddling. In September 2008, the Board dismissed two oppositions brought by Bishop because he had failed to timely submit any evidence and thus failed to prove standing or to establish either of his pleaded grounds for relief. [TTABlogged here]. On appeal, the CAFC remanded the case to the Board to consider in the first instance whether certain “admissions” made by Flournoy in her Answer to the notice of opposition provided Bishop with standing and satisfied his burden of proof to establish his claims of likelihood of confusion and fraud. As to standing, they did, but as to the claims, they didn't. H. Michael Bishop v. Marina Flournoy, Opposition Nos. 91175625 and 91175737 (May 15, 2009) [not precedential].

Reviewing Marina Flournoy’s answer, the Board found that she had admitted only that Bishop “used the mark in his artwork,” but she expressly denied that he had “a priority right in the mark.” [In light of the first admission regarding use, the Board assumed that Bishop had standing to bring his two claims.]

As to the likelihood of confusion claim, the burden to prove priority remained with Bishop in view of Flournoy’s denial. But Bishop failed to submit any competent evidence, and so he failed to meet that burden and his likelihood of confusion claim was dead.

As to Bishop's fraud claim, that was based on the assertion that the declaration accompanying Flournoy’s application was false in stating that she believed herself to be the owner of the applied-for mark and that no other person had the right to use the mark in commerce. Bishop had the burden to prove “not only that applicant’s declaration was false (i.e., that applicant did not have superior rights in the mark), but also that applicant knew or should have known that her oath was false.”

However, in her answer, Flournoy denied that Bishop’s rights were superior to hers.

Thus the burden was on Opposer Bishop to affirmatively prove the elements of his fraud claim: that he possessed superior rights to the mark and that Flournoy knew this to be the case. But because Bishop did not submit any evidence, he failed to meet that burden.

And so the Board again dismissed the oppositions.

Tip from the TTABlog: As previously stated, read the rules of the road before entering onto TTAB Boulevard.

Text Copyright John L. Welch 2009. Photograph Copyright John L. Welch 2008.


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