Alpha Kitty/Boss Pussycatv.Big Momma Holdings, LLC

Trademark Trial and Appeal Board

Mar 15, 2011

No. 91184311 (T.T.A.B. Mar. 15, 2011)

Mailed: March 15, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Alpha Kitty/Boss Pussycat International
v.
Big Momma Holdings, LLC
_____

Opposition No. 91184311
to application Serial No. 77209654
_____

Michael R. Tucci of Mansour, Gavin, Gerlack & Manos for
Alpha Kitty/Boss Pussycat International.

David Donahue of Fross Zelnick Lehrman & Zissu, P.C. for Big
Momma Holdings, LLC.
______

Before Walters, Cataldo and Wellington,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Big Momma Holdings, LLC (“applicant”) filed an
application to register in standard characters on the
Principal Register the mark ALPHA KITTY for goods and
services including
Sound recordings, audiovisual recordings, DVDs,
downloadable sound recordings, downloadable video
recordings, all of the foregoing featuring
information on topics of personal empowerment,
success, self-esteem, fashion, beauty,
inspiration, college, school and personal
relationships; downloadable electronic
publications, namely, books, magazines and
newsletters, all of the foregoing featuring
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91184311
2
information on topics of personal empowerment,
success, self-esteem, fashion, beauty,
inspiration, college, school and personal
relationships; computer screen saver software,
wallpaper software, and downloadable graphics

in International Class 9; and
Entertainment services, namely, providing a web
site featuring film clips, photographs, and other
multimedia materials featuring information on
topics of personal empowerment, success, self-
esteem, fashion, beauty, inspiration, college,
school and personal relationships; entertainment
in the nature of an on-going special variety,
news, music or comedy show featuring information
on topics of personal empowerment, success, self-
esteem, fashion, beauty, inspiration, college,
school and personal relationships broadcast over
television, satellite, audio, and video media

in International Class 41.1
Alpha Kitty/Boss Pussycat International opposed
registration solely as to the goods in Class 9 and the
services in Class 41 under Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d), on the ground that applicant’s
mark, when used in connection with applicant’s Class 9 goods
and Class 41 services, so resembles opposer’s previously
used mark ALPHA KITTY for “(i) sound recordings since
September 20, 1999; and (ii) entertainment services since
July 7, 2000”2 as to be likely to cause confusion.

1 Application Serial No. 77209654 was filed on June 19, 2007
based upon applicant’s assertion of a bona fide intent to use the
mark in commerce in connection with all classes of goods and
services. The application recites goods in Class 16 and 25 and
services in Class 38 that are not subject to this opposition.
2 Notice of opposition, paragraph 3.
Opposition No. 91184311
3
Applicant, in its answer, denied the salient
allegations in the notice of opposition.3
THE RECORD
By operation of rule, the file of opposed application
Serial No. 77209654 automatically forms part of the record
of this proceeding. See Trademark Rule 2.122(b)(1).
Similarly, the parties’ pleadings, namely, opposer’s notice
of opposition and applicant’s answer, automatically form
part of the record of this proceeding. In addition, during
its assigned testimony period opposer noticed and took the
testimony deposition of applicant’s founder, Ms. Atoosa
Rubenstein.
Opposer further submitted exhibits with its main brief,
consisting of photocopies of opposer’s asserted musical CD
and cassette tape; images of artwork assertedly submitted by
opposer to a guitar art show; a copyright application by
opposer for a musical sound recording entitled “Alpha Kitty
Songbook #1”; copies of email messages regarding opposer’s
registration of the domain name alphakitty.com and
alphakitty.net; and printouts from informational Internet
websites containing articles concerning Ms. Rubenstein.

3 In addition, applicant asserted as its first affirmative
defense that the notice of opposition fails to state a claim upon
which relief can be granted, but did not pursue such by motion.
Accordingly, applicant’s first affirmative defense will not be
considered. In its second affirmative defense, applicant asserts
matters that amplify its denials of opposer’s claim of priority
and have been so construed.
Opposition No. 91184311
4
However, the exhibits attached to opposer’s brief were
not made of record by opposer during its assigned testimony
period. Rather, the only testimony or evidence submitted by
opposer during its assigned testimony period is the above-
noted testimony deposition of Ms. Rubenstein. Applicant
submitted no testimony or evidence and opposer submitted no
rebuttal testimony or evidence. However, applicant objected
in its brief to opposer’s submission of exhibits with its
main brief. In its reply brief, opposer argues that it
provided applicant with the exhibits to its main brief “as
pre-trial disclosures, and in response [to] Applicant’s
discovery requests. It had sufficient opportunity to review
them and as such would not be unfairly prejudiced.”4 With
regard to the parties’ disclosures, discovery requests and
responses, simply exchanging these materials during the
discovery period of this proceeding does not make them of
record. Further, while the parties to Board inter partes
proceedings may stipulate to a wide variety of matters,
including a stipulation that materials filed outside the
parties’ testimony periods may be considered evidence
properly made of record, no such stipulations were filed in
this case. See, for example, Trademark Rules 2.120(d)(2)
and 2.123(b). See also TBMP §501.01. As a result, we agree
with applicant that the exhibits attached to opposer’s trial

4 Opposer’s reply brief, p. 4.
Opposition No. 91184311
5
brief were not properly made of record during opposer’s
testimony period, and are not evidence in this case.
Both parties submitted briefs on the matters under
consideration, and opposer submitted a reply brief.
DISCUSSION
Section 13(a) of the Trademark Act, 15 U.S.C. §1063(a),
allows for opposition to the registration of a mark by
anyone “who believes that they would be damaged by the
registration of a mark...” The party seeking to oppose the
registration of the mark must prove two elements: (1) that
it has standing, and (2) that there is a valid ground to
prevent the registration of the opposed mark. See Young v.
AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir.
1998).
Opposer’s Standing
The Board must consider an opposer’s standing as a
threshold issue in every case. In Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999), the Federal
Circuit enunciated a liberal threshold for determining
standing, i.e., whether one’s belief that one will be
damaged by the registration is reasonable and reflects a
real interest in the case. See also Jewelers Vigilance
Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021, 2023 (Fed. Cir. 1987). In the notice of opposition
opposer adequately asserted its standing by claiming prior
Opposition No. 91184311
6
common law rights in its ALPHA KITTY mark. The only issue
is whether opposer has proven its standing.
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
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.
In the alternative, we may look to the admissions in
applicant’s answer for this purpose. However, and as noted
above, in its answer applicant denied all of the salient
allegations of the notice of opposition. Thus, even under
the liberal standard for standing, there are no admissions
in applicant’s answer regarding opposer’s standing.
Accordingly, we conclude that opposer has failed to
make the showing necessary to prove its standing. Our
conclusion that opposer failed to prove standing is a
sufficient basis, by itself, to dismiss the proceeding.
Nonetheless, in order to come to a more complete
determination of this case we will consider opposer’s claim
of priority.
Priority of Use
To establish priority on a likelihood of confusion
claim brought under Trademark Act §2(d), a party must prove
that, vis-à-vis the other party, it owns “a mark or trade
Opposition No. 91184311
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name previously used in the United States … and not
abandoned….” Trademark Act Section 2, 15 U.S.C. §1052. A
party may establish its own prior proprietary rights in a
mark through ownership of a prior registration, actual use
or through use analogous to trademark use which creates a
public awareness of the designation as a trademark
identifying the party as a source. See Trademark Act §§2(d)
and 45, 15 U.S.C. §§1052(d) and 1127. See also T.A.B.
Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879
(Fed. Cir. 1996), vacating Pactel Teletrac v. T.A.B.
Systems, 32 USPQ2d 1668 (TTAB 1994).
In this case, opposer has neither pleaded nor proven
ownership of a registration for its ALPHA KITTY mark and
must, therefore, demonstrate by competent evidence that it
has made common law use of ALPHA KITTY prior to the earliest
date upon which applicant may rely for purposes of priority.
Applicant filed its involved application on June 19,
2007. Inasmuch as applicant has not introduced evidence of
use of its mark in connection with its goods prior to the
filing date of its application, the earliest date upon which
applicant may rely for priority purposes is June 19, 2007.
See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 36
USPQ2d 1328, 1332 (TTAB 1998), quoting Alliance
Manufacturing Co., Inc. v. ABH Diversified Products, Inc.,
226 UPSQ 348, 351 (TTAB 1985)(“an applicant is entitled to
Opposition No. 91184311
8
rely upon the filing date of its application as a
presumption of use of the mark subject of the application as
of that date”). Thus, in order to establish priority,
opposer must show that it used ALPHA KITTY as a mark prior
to June 19, 2007.
Opposer asserts that it has made use of ALPHA KITTY in
interstate commerce on sound recordings since September 20,
1999 and in connection with entertainment services since
July 7, 2000. However, opposer relies upon evidence
attached to its brief in support of such use. As discussed
above, such evidence is not of record. The only evidence
made of record by opposer, namely, the testimony deposition
of applicant’s founder, Ms. Rubenstein, fails to establish
opposer’s use of the ALPHA KITTY mark.
Furthermore, even if the evidence attached to opposer’s
brief was properly of record, it fails to prove that opposer
has made prior use of the ALPHA KITTY mark in commerce. For
example, the musical CD made of record bears the mark ALPHA
KITTY and a date of 2001; however, there is no corroborating
testimony to indicate whether that disc or the “Rough Cuts”
or “Nonny” cassette tapes, which bear no visible dates, were
released or made available in interstate or international
commerce. As such, we cannot determine simply by the date
printed on the submitted compact disc or tapes that opposer
has priority of use.
Opposition No. 91184311
9
Similarly, opposer’s evidence of registration of
alphakitty.com and alphakitty.net as domain names is not
evidence of use of ALPHA KITTY as a trademark or use
analogous to trademark use on or in connection with any
goods or services. 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.” Lockheed Martin Corp. v. Network
Solutions, Inc., 985 F. Supp. 949, 956, 44 USPQ2d 1865, 1871
(C.D. Cal. 1997). See also Data Concepts Inc. v. Digital
Consulting Inc., 150 F.3d 620, 47 USPQ2d 1672, concurring
opinion, Merritt (6th Cir. 1998); and J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, §7:17.50 (4th
ed. updated June 2008). Likewise, opposer’s evidence of its
certificate of copyright registration for ALPHA KITTY
SONGBOOK #1 and its entry of artwork in a guitar artwork
competition fails to demonstrate trademark use of ALPHA
KITTY. Finally, the Internet articles concerning Ms.
Rubenstein, assertedly submitted as evidence of actual
Opposition No. 91184311
10
confusion, fails to indicate use of ALPHA KITTY as a
trademark by opposer.
Thus, even the evidence improperly attached to
opposer’s brief and excluded above fails to establish that
opposer made prior use of ALPHA KITTY as a trademark or
otherwise made use analogous to trademark use which would
create a public awareness of ALPHA KITTY as a trademark
identifying opposer as the source of goods or services
thereunder.
Opposer asserts in its notice of opposition that it has
made prior use of ALPHA KITTY as a trademark.5 However,
statements made in pleadings cannot be considered as
evidence on behalf of the party making them; such statements
must be established by competent evidence during the time
for taking testimony. See Times Mirror Magazines, Inc. v.
Sutcliff, 205 USPQ 656, 662 (TTAB 1979); and TBMP §704.06(a)
(2d ed. rev. 2004). Further, applicant did not make any
admissions in its answer that would excuse opposer from
having to prove its priority of use.
Lastly, opposer’s brief contains numerous factual
allegations in support of its claim. However, factual
statements made in a party’s brief on the case can be given
no consideration unless they are supported by evidence
properly introduced at trial. Statements in a brief have no

5 Notice of opposition, paragraphs 3-6.
Opposition No. 91184311
11
evidentiary value. See Electronic Data Systems Corp. v.
EDSA Micro Corp., 23 USPQ2d 1460, 1462 n.5 (TTAB 1992); and
TBMP §704.06(b).
In short, the record is devoid of any testimony or
evidence in support of opposer’s claim of priority. Opposer
has the burden of coming forward with evidence to support
its claim, but has failed to do so.
Likelihood of Confusion
Because opposer has failed to prove either its standing
to bring this proceeding or priority, its claim under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d) must
fail, and we need not consider its claim of likelihood of
confusion.
Decision: The opposition is dismissed.