Berta Hesen-Mintenv.Emma L. Petersen and Susan L. Aucoin

Trademark Trial and Appeal Board

Feb 26, 2013

No. 91192706 (T.T.A.B. Feb. 26, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
February 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Berta Hesen-Minten
v.
Emma L. Petersen and Susan L. Aucoin
_____

Opposition No. 91192706

_____

Berta Hesen-Minten, pro se.

Emma L. Petersen and Susan L. Aucoin, pro se.
_____

Before Kuhlke, Shaw, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:

On January 25, 2005, applicants applied to register the following composite
mark:

Opposition No. 91192706

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for goods identified after amendment as “Collectables in the nature of Bears, Dolls
and Animals, all the forgoing [sic] jointed and crocheted, sewn, felted and soft
sculpted from various fibers and materials,” in International Class 28.1 The
application was filed pursuant to Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), with January 24, 2005 alleged as the date of first use and first use in
commerce. Applicants ultimately accepted required disclaimers of both the unitary
phrases “THREAD TEDS” and “THREAD BEARS.”2
Opposer bases her opposition on the claim of priority and likelihood of
confusion.3 Opposer relies on her common-law use of the trademark and trade
name THREADTEDS in the stylized form below:

for goods of a type essentially identical to the applied-for goods.4

1 Application Serial No. 78553324.
2 The examining attorney required disclaimer of “THREAD TEDS” on the ground of
descriptiveness. See September 12, 2005 Office action. After first publication, in response
to a Letter of Protest, the examining attorney also required disclaimer of “THREAD
BEARS” on the ground that it is generic for applicants’ goods. See February 14, 2007 Office
action.
3 Opposer also alleged mere descriptiveness, but that allegation has been stricken from the
pleading. Board Order of May 24, 2011, at 2 n.2.
4 Opposer also pled her pending application for this mark, Serial No. 78573528, filed
approximately one month after the opposed application. Amended Notice of Opposition at
6 ¶ 15. However, opposer did not make that application or its file history of record.
Applicants essentially admit only that opposer filed this application and that it is
suspended; their admissions do not encompass the reason for the suspension. See Answer
(filed November 4, 2010) at 7 ¶ 5, 5 ¶ 15; Applicants’ Brief at 5, 7.
Opposition No. 91192706

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Opposer submitted evidence via notice of reliance. Both parties filed trial
briefs, and opposer submitted a reply brief.
Issues
We begin by clarifying the issues before us and the scope of our jurisdiction
due to the unusual nature of this case and the fact that both parties are proceeding
pro se.
Although opposer is a resident of the Netherlands, the materials she
submitted indicate that the parties are competitors in the U.S. market for collectible
crocheted miniature teddy bears. There appears to be a lively trade on eBay.com for
such goods, which are offered in artistic configurations comprising a wide variety of
sizes, styles, materials, accessories, and pricing.
It is apparent from the submitted materials that the parties have been
engaged in a serious trademark dispute for several years, including a previous
appearance before the Board. On June 19, 2008, we denied opposer’s petition to
cancel5 applicants’ registration of the mark THREAD BEARS for “dolls and soft
sculpture figures made of textiles” in International Class 28.6
We must emphasize to the parties that our ruling herein will not resolve the
dispute between them. In this proceeding, we are empowered to decide only
whether applicants have the right to register the composite mark that is the subject
of their pending application, THREAD TEDS BY THREAD BEARS and design. We
are not authorized to determine the rights of either party to use the applied-for

5 Cancellation No. 92046025.
6 Registration No. 2146208.
Opposition No. 91192706

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mark, or any other marks; nor may we decide any broader questions of infringement
or unfair competition. Trademark Trial and Appeal Board Manual of Procedure
(TBMP) § 102.01 (3rd ed. rev. 1 2012); FirstHealth of the Carolinas Inc. v. CareFirst
of Md. Inc., 479 F.3d 825, 81 USPQ2d 1919, 1921 (Fed. Cir. 2007); General Mills
Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 (TTAB 2011).
Moreover, we have no jurisdiction over opposer’s pleaded pending application for
the mark ThReAdTeDs. TBMP § 605.03(c); Home Juice Co. v. Runglin Cos., 231
USPQ 897, 898 n.7 (TTAB 1986). Nor may we take any action with respect to
applicants’ registration of the mark THREAD BEARS. We address herein only
whether applicants’ pending application can proceed to registration.
Opposer bears the burden of proving her claim by a preponderance of the
evidence. Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1959 (TTAB
2008).
Standing
We first consider whether opposer has standing to bring this opposition
proceeding. Standing is a threshold issue that must be proven by a plaintiff in
every inter partes case. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023,
1025 (Fed. Cir. 1999); Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 823 F.2d
490, 2 USPQ2d 2021, 2023 (Fed. Cir. 1987); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 188 (CCPA 1982). The purpose of the standing
requirement, which is directed solely to the interest of the plaintiff, is to prevent
litigation when there is no real controversy between the parties. Lipton Indus.,
Inc., 213 USPQ at 189.
Opposition No. 91192706

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Under Section 13 of the Trademark Act, 15 U.S.C. § 1063, anyone with a
reasonable belief they would be damaged by a registration has standing to oppose.
In the present case, opposer has established that she uses the term ThReAdTeDs
for goods similar to those identified in the application; as such, she possesses a real
interest in the proceeding and is not a mere intermeddler. See Toufigh v. Persona
Parfum Inc., 95 USPQ2d 1872, 1874 (TTAB 2010) (standing found in cancellation
proceeding where petitioner holds a reasonable belief that “there is a likelihood of
confusion between the marks, or that the presence on the register of the
respondent’s mark may hinder the petitioner in using or registering [her] mark”).7
Priority
In order to prevail on her likelihood of confusion claim, opposer must prove
that she acquired proprietary rights in the mark ThReAdTeDs prior to applicants’
first use of the mark THREAD TEDS BY THREAD BEARS and design.
Because applicants have introduced no evidence attempting to prove prior
use of the applied-for mark, the earliest first use date on which they may rely is the
filing date of their use-based application: January 25, 2005. See Levi Strauss & Co.
v. R. Josephs Sportswear, 28 USPQ2d 1464, 1467 (TTAB 1993) (“[I]n the absence of
proof of use, the filing date of the application . . . is treated as the earliest use date
on which the applicant may rely.”); Mason Eng’g v. Mateson Chem., 225 USPQ 956,

7 Opposer could have established her standing by making of record the provisional refusal
of her application based on a likelihood of confusion with applicants’ prior pending
application. Lipton Indus., Inc., 213 USPQ at 189; ShutEmDown Sports, Inc. v. Lacy, 102
USPQ2d 1036, 1041 (TTAB 2012); Life Zone Inc., 87 USPQ2d at 1959. Unlike the file of the
opposed application, opposer’s pleaded application and its file history is not automatically of
record. See TBMP § 704.03(b)(2).
Opposition No. 91192706

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961 (TTAB 1985). Because opposer is relying on an unregistered mark, opposer
must show that she began using and acquired a proprietary interest in
ThReAdTeDs as a trademark or trade name in connection with the sale or
advertising of goods in the United States prior to the filing date of applicants’
application. Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711, 1714
(TTAB 1993); TuTorTape Labs., Inc. v. Halvorson, 155 USPQ 268, 270 (TTAB 1967);
see also Trademark Act Section 2(d), 15 U.S.C. § 1052(d). Opposer submitted no
testimony or direct evidence of any sales (for example, invoices) made under the
ThReAdTeDs mark. We thus begin by examining the record for any evidence
competent to establish the first use date of ThReAdTeDs in the United States by
opposer.
The record herein comprises the pleadings and the application file of the
opposed mark. Opposer also submitted more than 600 pages of materials via
notices of reliance. While we have carefully examined all of the evidence, we focus
our discussion herein specifically on the 82 pages opposer designated as Exhibit A
in support of her priority claim.
Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e), provides in part that a party
may introduce into evidence through a notice of reliance “[p]rinted publications,
such as books and periodicals, available to the general public in libraries or of
general circulation among members of the public or that segment of the public
which is relevant.” Public records also may be introduced through a notice of
reliance. Id. Much of the evidence proffered by opposer, however, is not of the type
Opposition No. 91192706

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that can be introduced via notice of reliance. Such documents include emails,8
messages within Yahoo! Groups,9 lists compiled by opposer,10 and covers,
instructions, and related drafts for crochet kits.11
Other submitted documents – including printouts from websites,12 copies of
pages from foreign magazines,13 eBay feedback,14 domain name registration
records,15 and a copy of opposer’s Benelux registration16 – may be properly
introduced via notice of reliance. The admissible documents do not, however,
establish use of the mark ThReAdTeDs by opposer in the United States before
January 2005.
Some of the documents reference opposer, but not her trademark/trade
name,17 while others reflect dates later than January 2005.18 We will address
individually certain other proffered documents.

8 Plaintiff’s Notice of Reliance (Docket No. 60) at A17, A67.
9 Id. at A14-A15, A27-A31, A62-63. There is no evidence that such messages are available
to members of the general public who do not subscribe to the group.
10 Id. at A36, A68.
11 Id. at A1-A13, A60-61.
12 Id. at A20-26.
13 Id. at A37-A41 (pages from magazine Teddy Bear Scene, which opposer states is British;
all but the first page also are dated after applicants’ priority date); A45-A47 (copies are
from a German quarterly magazine Teddys and also are dated after January 2005); A65
(page is from Australian magazine Bear Creations and dated August 2009); A76-A77 (no
evidence provided that magazine is available in the United States, and referenced
addresses are British). See also id. at A78 (undated certificate from Australian foundation).
14 Id. at A16; also see discussion of eBay feedback infra.
15 Id. at A18.
16 Id. at A19. The registration issued November 8, 2006, after applicants’ priority date.
17 See id. at A28, A42-A44, A48. A74 does not reference opposer and, as with A69-A73 and
A75, is submitted as explanatory information regarding awards.
Opposition No. 91192706

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Opposer submits a June 2003 Teddy Bear and Friends magazine19 cover story
about her work titled “THREAD TEDS Crocheted Collectibles” on the cover and
“ThReAdTeDs” on the story itself.20 The document, however, makes no reference to
use by opposer of this term to designate her goods or the source of those goods, that
is, as a trademark or trade name. References to opposer’s contact information –
including email address (threadteds@supermail.nl) and domain name
(threadteds.com) – in small print, not in stylized form, at the end of the article are
insufficient to establish prior use, particularly given that opposer has not provided
evidence establishing actual use of the domain name and website before January
2005.21 See Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036,
50 USPQ2d 1545, 1556 (9th Cir. 1999) (acquisition of a domain name cannot by
itself establish priority of use).
There is no provision in the Trademark Act for establishing priority through
domain name registration or use. Nor is a domain name, per se, similar to a trade

18 Id. at A49-A52. The printout submitted dates to September 2010. Opposer points to a
copyright date of May/June 2003 on the final page of the printout, but this is insufficient to
establish that this article was publicly available on that date. Moreover, as discussed infra
with respect to other documents, the article appears to reference only opposer’s domain
name and not her trademark/trade name. See also id. at A64 (referencing website only);
A69-A73.
19 Opposer writes that this magazine is a printed U.S. magazine “available by subscription,
at most libraries, on newsstands, and various other outlets where such print publications
are sold and or available to the relevant trade public.” Id. at 2. Beyond this statement,
there is no evidence or testimony as to circulation or availability of this publication, which
lessens its probative value.
20 Id. at A33-A35. It is not clear whether there is a space between “ThReAd” and “TeDs” in
the article title, but the magazine cover presents the two words “THREAD” and “TEDS” in
all capital letters and on separate lines, in descriptive or generic fashion.
21 The submitted printouts from the “Wayback Machine” (available at Archive.org), A79-
A82, include no content from opposer’s website.
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name; it is more in the nature of a street address. While a domain name may attain
trademark status, its use as an address does not support trademark use. In re
Eilberg, 49 USPQ2d 1955, 1957 (TTAB 1998). Instead, domain names must be used
to identify the source of goods or services:
Like a street address or telephone number, every domain
name serves the purely technological function of locating
a Web site in cyberspace. However, a domain name does
not become a trademark or service mark unless it is also
used to identify and distinguish the source of goods or
services. Out of the millions of domain names, probably
only a small percentage also play the role of a trademark
or service mark.
1 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 7:17.50 (4th ed. 2012) (footnotes omitted). Domain registration and use as a web
address in and of themselves do not serve to establish priority.
Similarly, opposer relies on use of the copyright symbol and year along with
the term ThReAdTeDs at the end of other articles in two issues of Teddy Bear and
Friends magazine from January/February 200422 and December 2004.23 This is not
sufficient to establish trademark or trade name use in association with opposer’s
goods. See In re Astro-Gods Inc., 223 USPQ 621, 624 (TTAB 1984) (finding that
purchasers would not be likely to make an association between a design and
applicant’s name in copyright notice and, on that basis, regard the design as an
indication of the source of the goods).

22 Id. at A53-A56.
23 Id. at A57-A59.
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Opposer also submits an advertisement from the September/October 2004
issue of Teddy Bear and Friends.24 This ad, however, is not for opposer’s goods, but
for a book by opposer called “ThReAdTeDs Secrets & Patterns.” It is well-
established that a title of a single work is, of necessity, descriptive of the work and
does not function as a trademark. See In re Cooper, 254 F.2d 611, 117 USPQ 396,
400 (CCPA 1958); In re Scholastic Inc., 223 USPQ 431, 431 (TTAB 1984). This book
title therefore is insufficient to establish prior trademark rights.
Finally, opposer submits a document that appears to have been printed from
the “Wayback Machine” (Archive.org) showing a page from the website teddy-
peddler.com on August 2, 2002.25 On its face, this page states that a miniature bear
made by opposer will be sent for free to the first person to correctly guess the
number of crochet stitches used to make it. The page includes a picture of the bear
with a tiny tag including opposer’s mark and a design (legible only when the page is
enlarged), and the side of the page includes the statement: “We extend a big hug of
gratitude to ThReAdTeDs!”26
We assume without deciding that this page satisfies the requirements of
Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2010), in which
we held that documents printed from publicly available websites identifying both
their source and the date they were published or accessed and printed may be

24 Id. at A32.
25 Id. at A66. The page does not display the date it was originally printed from Archive.org.
The document submitted by opposer was printed on March 4, 2011 from materials related
to the letter of protest in the file of the opposed application.
26 Id.
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admitted into evidence pursuant to a notice of reliance in the same manner as a
printed publication in general circulation. However, Internet evidence may be
introduced only “for the limited purpose of demonstrating what the documents show
on their face.” Id. Such documents “have little probative value. They are
admissible only to show what has been printed, not the truth of what has been
printed.” Id. at 1040. In other words, although Internet printouts may be admitted
into evidence, the truth of any statements shown in those printouts remains subject
to the rule against hearsay embodied in Federal Rules of Evidence 801 and 802.
The rule against hearsay mandates that an out-of-court statement cannot be offered
as evidence of the truth of the matter asserted in that statement.27
This printout could establish priority only if we were to make several
assumptions about the truth of what it shows on its face. We would have to assume
that the mention of ThReAdTeDs on this page refers to the trade name of a business
operated by opposer, that she had established proprietary rights in that name as
designating the source of her goods, and that such rights had been established
within the United States. Without supporting testimony, this document cannot go
so far as to establish opposer’s trademark or trade name use. Even though this
document is properly of record, it is hearsay with respect to use by opposer of the
mark/name mentioned therein, and, thus, of no probative value for that purpose.

27 There are exceptions to the rule against hearsay, but they do not apply to this document.
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The same analysis applies to the two images of bears with tags printed from
the website foundart.com.28 The documents state on their face that they were
printed on November 28, 2011. Under the hearsay rule, we cannot accept as true
the April 30, 2003 date associated with the text. Nor do these documents address
any sales or advertising of opposer’s goods in the United States. A similar analysis
also applies to the feedback submitted by opposer linked to her eBay ID,
threadteds.29 We may not consider any of the statements made in the feedback as
facts in support of opposer’s assertion of priority.
We are sympathetic to parties appearing pro se before the Board who must
grapple with the requirements of the Federal Rules of Evidence and Civil
Procedure, as well as the Trademark Rules, without benefit of counsel. These rules,
however, govern our proceedings. Trademark Rule 2.122(a), 37 C.F.R. § 2.122(a);
Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1031, 13 USPQ2d 1307,
1311 (Fed. Cir. 1989). The Patent and Trademark Office “has the authority to
assure diligent administration of the rights within its charge, by establishing and
enforcing reasonable rules.” Benedict v. Super Bakery, Inc., 665 F.3d 1263, 1268
(Fed. Cir. 2011). The rule against hearsay is a long-established safeguard of the
common-law system. It serves the important purpose of excluding from evidence
declarations the veracity of which cannot be tested by cross-examination. Olson v.
Ford Motor Co., 410 F. Supp. 2d 855, 860 (D.N.D. 2006).

28 Plaintiff’s Notice of Reliance (Docket No. 60) at A20-21.
29 Id. at C26-C125.
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We have carefully considered the evidence properly introduced into the record
as a whole. See West Florida Seafood, Inc. v. Jet Restaurants, Inc., 31 F.3d 1122, 31
USPQ2d 1660, 1663 (Fed. Cir. 1994). We find that, on the record before us, opposer
has not established, through competent, admissible evidence, proprietary rights in
the term ThReAdTeDs as a mark or trade name in the United States prior to
applicants’ priority date.30 Opposer therefore cannot prevail in her likelihood of
confusion claim against applicants’ composite mark.
Conclusion
Decision: The opposition is dismissed.

30 Opposer notes that applicants essentially agree that she has established a priority date of
February 2002. See Reply Brief at 7, Applicants’ Brief at 9; see also Answer at 5 ¶ 16
(“‘Thread Bears’ was then added to ‘Thread Teds’ at the time of filing, to set our business
apart from the Plaintiff’s.”), 7 ¶ 5 (“We have filed for ‘Thread Teds by Thread Bears’ to
separate our business from the Plaintiff’s, and to prohibit any confusion.”). There are
several problems, however, with these statements. First, the applicants are referring to a
pattern of opposer’s, which she did not plead, rather than sales of the pleaded miniature
crocheted teddy bears, dolls, and animals. Second, even if we accept these statements as an
“admission,” they are insufficient to establish what kind of use opposer was making of the
term ThReAdTeDs, including where any relevant sales were made at that time (i.e., in the
Netherlands, the United States, or elsewhere). Finally, the Board must make the ultimate
conclusion as to whether opposer has established prior proprietary rights in her trademark
or trade name in the United States. Cf. Interstate Brands Corp. v. Celestial Seasonings,
Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978) (“Under no circumstances, may a
party’s opinion, earlier or current, relieve the decision maker of the burden of reaching his
own ultimate conclusion on the entire record.”).