Wednesday, August 06, 2014

Napa Vintners Association Fails to Prove Standing, TTAB Dismisses 2(d) Opposition to NOPA for Wines

Standing is a threshold issue that must be proven in every inter partes proceeding. In this opposition to registration of the mark NOPA for wines, applicant Wine Vision, a Portuguese company appearing pro se, did not file a brief or introduce testimony or other evidence - you might say that NOPA used the Ropa Dopa defense - but the Napa Valley Vintners Association failed to prove its standing to oppose. How did it all go sour? Read on, MacDuff. Napa Valley Vintners Association v. Wine Vision, Lda., Opposition No. 91189310 (July 29, 2014) [not precedential].

Opposer claimed to own the common law certification marks NAPA and NAPA VALLEY for wine, and it alleged that applicant's mark NOPA would likely cause confusion under Section 2(d), comprises a geographical indication that identifies a place other than the origin of the goods under Section 2(a), is geographically deceptive under 2(a), and is geographically deceptively misdescriptive under Section 2(e)(3). Applicant admitted that "Napa" is a geographic indication for wine, but otherwise denied opposer's allegations.

Opposer argued in its brief that it had standing, claiming that it is a non-profit trade association promoting the interest of Napa Valley wineries and owner of a pending certification mark application for NAPA VALLEY for wine - but it failed to cite any evidence in support of those assertions. There was "no evidence of record that Opposer is a trade association, what its responsibilities are, who its members are or whether it certifies anything and if it does so, much less whether it owns the alleged certification mark NAPA VALLEY." Its alleged application to register was not of record, and anyway it did not plead ownership of that application. There was no evidence that opposer owns any mark.

Opposer's evidence consisted of certain sections of the Code of Federal Regulations referring to the Napa Valley viticultural area, and book excerpts referring to the Napa Valley. There was a passing book reference to the formation of the Napa Valley Vintners Association in 1943, but no evidence to establish opposer's current activities.

Applicant made no admissions that would establish opposer's standing.

Therefore the Board concluded that opposer failed to establish standing, and the opposition was dismissed.

Read comments and post your comment here.

TTABlog note:  So now what does the Association do?

Text Copyright John L. Welch 2014.


At 9:59 AM, Anonymous Paul Reidl said...

To answer your rhetorical question, they should probably head to Federal Court and submit additional evidence on the standing issue. It would seem like a simple thing to prove.

At 10:45 AM, Anonymous Anonymous said...

A good lesson in practicing before the TTAB. Although it doesn't take much to establish standing (See, e.g., Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (common-law use sufficient to establish standing)), it still needs to be plead and proved by "status and title."

At 5:01 PM, Anonymous Scott Smith said...

It looks like the Napa Vintners Assn's attorney may have totally bungled their TTAB case. If so, they should fire him and demand a full refund!

At 5:21 AM, Blogger John L. Welch said...

If you are relying on common law use, there is no "status and title."

At 7:26 PM, Anonymous Anonymous said...

But here the association DID have a pending application, but did not submit a status and title copy.

Why not at least have admissions form the other side?

I bet they took no discovery?

At 7:40 PM, Blogger John L. Welch said...

The term "status and title" copy comes from Rule 2.122(d)(1) and refers to registrations, not applications. That's why your comment is off the mark. Napa should have put in a copy of the PTO official record of its pending application. See 2.122(e). Doesn't need to be certified.


Post a Comment

<< Home