Tuesday, April 26, 2022

TTAB Dismisses "PAWTY PACK" Opposition Due to Failure to Establish Entitlement to a Statutory Cause of Action (f/k/a "Standing")

In this opposition to registration of the mark PAWTY PACK for "beverages for pets; edible pet treats," Opposer Snowcats LLC alleged and pursued a claim of mere descriptiveness under Section 2(e)(1). It also pleaded its entitlement to a statutory cause of action. Unfortunately for Snowcats, it failed to prove facts to support the allegation of "standing." And so, the Board dismissed the opposition. Snowcats LLC v. Trendsetters Direct, LLC, Opposition No. 91256075 (April 22, 20220 [not precedential] (Opinion by Judge David K. Heasley).

In every inter partes proceeding, the plaintiff must plead and prove its entitlement to a statutory cause of action. This is true even if the defendant doesn't not contest the issue. A party pleading mere descriptiveness may prove "standing" by means of evidence that it is engaged in the manufacture or sale of the same or related goods as those covered by the challenged mark, and thus has the right to use the wording in a merely descriptive manner.

Opposer Snowcats pleaded its entitlement to a cause of action, and alleged that it used the identical mark for pet beverages. "That sort of evidence can prove that the plaintiff, like other competitors, has the right to use the wording in a merely descriptive manner, and may bring a proceeding to prevent its exclusive registration by the applicant."

Allegations of standing are not enough. Snowcast failed to adduce any evidence to support its claim of entitlement to a statutory cause of action. "As the Board has noted before, decisions to forego testimony and rely instead on notices of reliance alone often prove fateful. That proves to be the case here."

Snowcats submitted a single notice of reliance containing printouts from 18 third-party websites showing various uses of "party pack" and "pawty pack," but it failed to provide any testimony authenticating those printouts or linking any of them to Snowcats. An internet printout is admissible only to show what has been printed, not the truth of what has been printed. Snowcats asserted that it was not offering this evidence for the truth of what was printed, but only to show that third parties are using these terms to describe their goods.

The problem was that none of the evidence proved anything about Opposer Snowcats or its business, and nothing established that Snowcats presently or prospectively makes or sells goods that are the same as or related to those of applicant.

Consequently, Opposer, bearing the burden of proof, fails to demonstrate an interest falling within the zone of interests protected by the Trademark Act or a reasonable belief of damage proximately caused by registration of Applicant’s proposed trademark. For these reasons, Opposer has not shown its entitlement to the statutory cause of action it asserts here.


Read comments and post your comment here.

TTABlogger comment: Ouch! Can Snowcats file a civil action for review under Section 1071, and add the proofs of its standing?

Text Copyright John L. Welch 2022.


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