Wednesday, March 30, 2022

Pro Se Intent-to-Use Applicant Wins TTAB Priority Battle in Section 2(d) Opposition to DRIPHOUSE CLOTHING & Design

Another pro se applicant successfully fended off a Section 2(d) opposition, this time despite filing no evidence, testimony or briefs. Carlo Bazan opposed Kiren Williams' Section 1(b) application to register the mark DRIPHOUSE CLOTHING & Design for "Online retail store services featuring clothing and footwear," claiming priority and likelihood of confusion with his mark DRIPHAUS for athletic apparel. He also claimed that Williams lacked a bona fide intent to use the challenged mark. Bazan lost on both counts. Carlo Bazan v. Kiren Williams, Opposition No. 91263383 (March 23, 2022) [not precedential] (Opinion by Judge Karen Kuhlke).

Priority: Opposer Bazan did not file his notice of reliance until the day his main brief was due. Generally, the Board does not consider evidence not filed in accordance with the rules. However, because applicant could have filed a motion to strike but didn't, the Board considered that evidence.

Although Applicant Williams did not submit any evidence or testimony, Opposer Bazan was still required to prove his entitlement to a statutory cause of action (formerly "standing) and prove his claims by a preponderance of the evidence. Bazan's application to register was suspended in view of Williams' earlier-filed application, and that vaulted him over the standing bar.

Although Applicant Williams did not submit any evidence of use of his mark, he was entitled to rely on his application filing date of May 3, 2019 as a constructive first use date. Opposer Bazan filed his application on September 5, 2019, and first used his mark on January 16, 2020. Bazan argued that he is the prior user, since Williams has not used his mark. WRONG! Because Williams filing date beat Bazan's filing date, Bazan failed to prove priority. And so the Board dismissed the Section 2(d) claim.

Lack of Bona Fide Intent: Bazan contended that Williams did not produce any documents or provide any testimony regarding the required bona intent to use the challenged mark. Bazan relied on Williams' failure to respond to interrogatories or provide requested documents, and pointed to his own motion to compel. The Board, however, pointed out that the motion to compel was denied due to Bazan's failure to satisfy the "good faith requirement" of Rule 2.120(f)(1).

In view of Opposer’s failure to timely submit its evidence during its testimony period, we do not infer anything from Applicant’s failure to submit evidence during its testimony period. Indeed, the burden of proof is on Opposer so Applicant was not obligated to introduce evidence. Moreover, Applicant’s failure to respond to discovery where there has been no good faith effort to resolve the discovery dispute does not present a circumstance to infer the absence of documentary evidence. In view thereof, Opposer has not established a prima facie case of no bona fide intent to use.

The Board entered judgment in favor of Applicant Williams on the bona-fide-intent claim. As to the Section 2(d) claim, judgment was entered subject to Williams' "establishment of constructive use." [See Lanham Act Section 18: "no final judgment shall be entered in favor of an applicant under section 1051(b) of this title before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 1057(c) of this title."]

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Text Copyright John L. Welch 2022.


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