Amer Group, Inc.v.Duvall Daniels

Trademark Trial and Appeal Board

Sep 17, 2018

No. 91223967 (T.T.A.B. Sep. 17, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 17, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Amer Group, Inc.
v.
Duvall Daniels
_____

Opposition No. 91223967
_____

Mark B. Harrison, Rebecca Liebowitz and Catherine Mitros of Venable, LLP,
for Amer Group, Inc.
Clyde Vanel of Vanel Law Firm PC,
for Duvall Daniels.
_____

Before Cataldo, Wellington, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Applicant, Duval Daniels, seeks registration of the standard character mark UN
for “athletic shirts; athletic shorts; bathing suits; belts for clothing; blouses; business
wear, namely, suits, jackets, trousers, blazers, blouses, shirts, skirts, dresses and
footwear; coats; denims; dress shirts; footwear; golf pants, shirts and skirts; hooded
sweat shirts; jackets; jump suits; knit shirts; men’s suits, women’s suits; pants; shirts;
shorts; socks; sports caps and hats; sweat shirts; sweat suits; t-shirts; women’s
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clothing, namely, shirts, dresses, skirts, blouses,” in International Class 25 on the
Principal Register.1
Opposer, Amer Group, Inc., has opposed registration of Applicant’s mark on the
ground that, as applied to Applicant’s goods, the mark so resembles Opposer’s
previously-used and registered MobileUN and Miss UN marks for entertainment,
beauty competition, and other services, as to be likely to cause confusion under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Opposer pleaded ownership
of two registrations: 4720569 (Miss UN) and 4756491 (MobileUN).
By his answer, Applicant denies the salient allegations.2
I. Record
The record includes the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file of the application subject to the notice of
opposition.
Aside from the pleadings and the involved application file, there is no other
pertinent evidence of record. To be clear, the only evidentiary submission is a copy of
Opposer’s first set of requests for admission, and this was filed without any
accompanying response thereto from Applicant.3 Opposer acknowledged the
deficiency of that submission in its most recent request to reopen the testimony

1 Application Serial No. 86488656 was filed on December 22, 2014, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as September 13,
2013.
2 Applicant asserted various “affirmative defenses” in his answer; however, these are deemed
waived because Applicant did not pursue them at trial.
3 7 TTABVUE.
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periods (“The evidence, however, did not appear to actually include responses to the
request for admission.”).4 We further note that Opposer’s request to reopen the
testimony periods was granted by the Board,5 but the only submission thereafter from
either party was Opposer’s trial brief.
We specifically point out that Opposer’s pleaded registrations are not of record.
Although Opposer attached various exhibits to its brief, including copies of the
pleaded registrations, the TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (“TBMP”) makes clear such practice cannot substitute for properly
introducing evidence. See TBMP §704.05(b) (2018) (“Exhibits and other evidentiary
materials attached to a party’s brief on the case can be given no consideration unless
they were properly made of record during the time for taking testimony”) and
authorities cited therein, including Trademark Rule 2.123(k), 37 C.F.R. § 2.123(k)
(“Evidence not obtained and filed in compliance with these sections will not be
considered”); see also The Maytag Co. v. Luskin’s, Inc., 228 USPQ 747, 748 (TTAB
1986); Binney & Smith Inc. v. Magic Marker Ind., Inc., 222 USPQ 1003, 1009 n.18
(TTAB 1984). Accordingly, we give no consideration to the evidence submitted by
Opposer with its trial brief.6

4 19 TTABVUE 2.
5 20 TTABVUE. The trial dates and times for the parties to introduce evidence in this
proceeding were reset on two previous occasions. See 8 and 13 TTABVUE.
6 Similarly, although some of the same materials attached to Opposer’s brief were also
attached to Opposer’s notice of opposition, this does not mean they were properly introduced
into evidence. Trademark Rule 2.122(c), 37 C.F.R. § 2.122(c) (exhibits to pleadings are not in
evidence and instead “must be identified and introduced in evidence as an exhibit during the
period for the taking of testimony”).
Opposition No. 91223967
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II. Standing Not Proven
Standing is a threshold issue that must be pleaded and proven by the plaintiff in
every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 171 F.3d. 1092,
50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999); see also Sinclair Oil Corp. v. Kendrick, 85
USPQ2d 1032, 1037 (TTAB 2007). In order to demonstrate standing, a plaintiff must
show that it has a “real interest” in the proceeding and “a reasonable basis for his
belief of damage.” Empresa Cubana Del Tabaco, 111 USPQ2d at 1062 (citing Ritchie
v. Simpson, 50 USPQ2d at 1025-26.
Here, Opposer failed to submit any evidence to prove its standing. Without any
testimony or copies of its pleaded registrations, or any relevant admissions, Opposer
cannot demonstrate it is the owner of the putative, confusingly similar marks. While
it may be obvious, we hasten to add that “[a]ttorney argument is
no substitute for evidence.” Enzo Biochem Inc. v. Gen-Probe Inc., 424 F.3d 1276, 76
USPQ2d 1616, 1622 (Fed. Cir. 2005). Applicant made no admission in his answer
regarding Opposer’s ownership of the pleaded registrations, or any other admission
that can be construed as evidencing Opposer’s real interest in this proceeding.
In view of Opposer's failure to prove its standing, we find this is a sufficient basis
on which to dismiss the proceeding and hereby do so. See Lumiere Prods., Inc. v. Int'l
Tel. & Tel. Corp., 227 USPQ 892, 893 (TTAB 1985). We further note that, even
if Opposer's standing had been established, and it was not, the lack of evidence also
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means that Opposer failed to carry the burden of proof with respect to all aspects of
its likelihood of confusion claim.
Decision: The opposition is dismissed.