Monday, April 04, 2011

TTAB Dismisses "ALPHA KITTY" Section 2(d) Opposition: Opposer Failed to Prove Standing, Priority

The requirement that a plaintiff prove standing presents a low initial hurdle in TTAB proceedings, but Opposer Alpha Kitty/Boss Pussycat tripped over it and consequently suffered a dismissal of its Section 2(d) opposition involving identical marks and overlapping goods and services. Even had it cleared the standing hurdle, Opposer also failed to prove priority. Poor Kitty. Bad Kitty? Sad Kitty? Alpha Kitty/Boss Pussycat International v. Big Momma Holdings, LLC, Opposition No. 91184311 (March 15, 2011)[not precedential].

Standing: During its testimony period, Opposer submitted only the testimony that it took of Applicant Big Momma's president. It then submitted various documents as exhibits to its final brief. Big Momma objected.

Opposer argued that it had provided Big Momma with the documents during the discovery period. Not good enough, said the Board. Documents produced during discovery are not automatically of record. And so the Board sustained the objection.

Opposer adequately pleaded standing in its notice of opposition, but it failed to prove it.

In this case, opposer has not introduced any admissible evidence regarding its asserted prior or current use of the ALPHA KITTY mark. Nor does the testimony of Ms. Rubenstein [President of Big Momma] establish that opposer is currently using ALPHA KITTY as a mark. As such, opposer has failed to introduce sufficient evidence of its standing to bring this proceeding.

Moreover, there were no admissions by Big Momma that Opposer has standing. And so lack of standing was a sufficient basis, by itself, for dismissal of the opposition.

Priority: For the sake of completeness, the Board also considered Opposer's claim of priority. Opposer, lacking a registration, could win the priority battle if it could prove common law use of ALPHA KITTY prior to Big Momma's first use date (its filing date of June 19, 2007).

Again, however, Opposer's had no admissible evidence other than Ms. Rubenstein's testimony, and that did not suffice. Even if the Board considered Opposer's evidence as properly submitted, it still fell short. A musical cd bearing the date of 2001 was not corroborated by testimony. Registration of the domain names and is not evidence of use of ALPHA KITTY as a trademark or use analogous to trademark use.

While a domain name may attain trademark status, its use as an address does not support trademark use. See In re Eilberg, 49 USPQ2d 1959 (TTAB 1998). “When a domain name is used only to indicate an address on the Internet, the domain name is not functioning as a trademark … domain names, like trade names, do not act as trademarks when they are used merely to identify a business entity; in order to infringe they must be used to identify the source of goods or services.” [citations omitted]

Similarly, neither a certificate of copyright registration nor the entry of artwork in a competition demonstrates trademark use. The allegations of prior use made in the notice of opposition do not, of course, constitute proof, nor do statements in a brief.

Thus, Opposer's priority claim was unproven.

And so the Board dismissed the opposition.

TTABlog comment: Ouch! If you were the Opposer, what route might be you take for appeal? What do you think of the statement quoted above that domain names do not infringe unless they identify source?

Text Copyright John L. Welch 2011.


At 10:09 AM, Blogger Vincent said...

Where were these people during my last case before the TTAB? I lost a motion to dismiss for lack of standing when the opposer's only interest was that it had registered the domain name identical to my client's trade name and that registration would interfere with its ability to use the domain name.


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