Blue Plate Catering, Ltd.v.Seminole Tribe of Florida

Trademark Trial and Appeal Board

Oct 29, 2015

No. 91208485 (T.T.A.B. Oct. 29, 2015)

Mailed: October 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Blue Plate Catering, Ltd.
v.
Seminole Tribe of Florida
_____

Opposition No. 91208485
to application Serial No. 85711441
filed August 23, 2012
_____

Lema A. Khorshid and Perry Gattegno of Fuksa Khorshid, LLC
for Blue Plate Catering, Ltd.

Miriam Richter of Miriam Richter, P.L.
for Seminole Tribe of Florida.
______

Before Seeherman, Bergsman and Masiello,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Blue Plate Catering, Ltd. (Opposer) has opposed, on the ground of
likelihood of confusion, the registration of the mark BLUE PLATE and
This Opinion Is Not a
Precedent of the TTAB
Opposition No. 91208485
2
design, shown below, for restaurant services, filed by Seminole Tribe of
Florida (Applicant).1

In the notice of opposition, Opposer has alleged that it owns a registration
issued on December 29, 2006 by the State of Illinois for BLUE PLATE for
catering services, restaurant services and food preparation services; that
Opposer owns common law rights in the mark and name BLUE PLATE; that
since 1987 Opposer has continuously used BLUE PLATE as a trademark and
service mark as a food service provider; that on January 13, 1994 Opposer
incorporated its business under the name “BLUE PLATE Catering, Ltd.”;
that Opposer has established itself as a food service provider in the City of
Chicago, and Opposer has provided catering and food services in multiple
states; that the BLUE PLATE name and mark have become distinctive and
famous; that Applicant’s mark is similar to Opposer’s mark, and the services
are similar in that the parties are food service providers, and both Applicant’s
application and Opposer’s Illinois state registration list “restaurant services”;
and that Opposer will be damaged by registration of Applicant’s mark.
Applicant has denied the salient allegations in its answer.

1 Application Serial No. 85711441, filed August 23, 2012, and asserting first use and
first use in commerce on May 11, 2004.
Opposition No. 91208485
3
Objections
On May 25, 2015, during its rebuttal testimony period, Opposer filed what
was captioned “Unopposed Motion to Entry of Evidence into the Record”
(Unopposed Motion), along with amended answers to Applicant’s
interrogatories. The original responses were filed by Applicant during its
testimony period under a notice of reliance.2 There is only one change in the
amended responses to the set of six interrogatories. In the original response
to interrogatory 1, which asks for a list of all states in which Opposer has
done business under the mark BLUE PLATE, and the specific dates of
service, Opposer listed the states of Indiana, Wisconsin and Michigan, and
gave dates in 2012 and 2013. The amended answer to interrogatory 1 also
lists the state of Illinois, and lists as dates, “December 1983-present.”
Because at the time the Unopposed Motion was filed it was called
“Unopposed,” and begins, “By agreement of the Parties,” on June 18, 2015 the
Board granted the Unopposed Motion, referring to it as a “consented motion.”
On August 25, 2015, along with its trial brief, Applicant filed a motion to
strike these amended answers.3 As background for how the Unopposed
Motion came to be filed, Applicant explains that during Opposer’s rebuttal

2 Opposer also submitted these responses with its own notice of reliance but, as
Applicant points out, absent an exception which is not applicable here, a party
cannot make its own responses to interrogatories of record by notice of reliance See
Trademark Rule 2.120(j)(5) (“…an answer to an interrogatory…may be submitted
and made part of the record only by the … inquiring party”).
3 Applicant has styled its objection as a “motion to quash.” The Board treats this
paper as a motion to strike the answers. See September 4, 2015 Board order
(“Consideration of Applicant’s motion (filed August 25, 2015) to strike Opposer’s
amended responses to Applicant’s interrogatories”).
Opposition No. 91208485
4
testimony period Opposer attempted to notice the deposition of Calvin Gin to
testify “as to the facts alleged in the Opposer’s opposition and Applicant’s
Notices of Reliance, including use and ownership of the Opposer’s mark;
Opposer’s business operations and activities; and Opposer’s goods and
services.” Notice to Take Deposition, submitted as Exhibit C to Applicant’s
motion to strike. 29 TTABVUE 17. Because Applicant believed that such
testimony should have been part of Opposer’s case-in-chief, and therefore was
improper rebuttal testimony, it made an informal objection directed to
Opposer. According to Applicant, Opposer agreed to withdraw its notice of
deposition if its responses to interrogatories could be amended. Applicant
agreed, Opposer drafted the Unopposed Motion that was subsequently filed
on May 22, 2015, and “Applicant informed Opposer that it was unopposed
and the proposed amended answers were acceptable.”
Opposer then filed the Unopposed Motion, along with the amended
interrogatory answers, under the docket entry “Stipulated Facts.” Applicant,
in its motion to strike, asserts that it never stipulated to any facts or agreed
to the entry of any evidence in the record. It claims that the only thing it
stipulated to was what was stated in the actual document (as opposed to the
ESTTA cover sheet with the “Stipulated Facts” title): Opposer was allowed to
amend its answers to interrogatories and the deposition notice was
withdrawn.
Opposition No. 91208485
5
Opposer responded to the Applicant’s motion to strike on September 9,
2015, at the same time it filed its reply trial brief, asserting that it “relied on
Applicant’s agreement to the entry of the evidence to its detriment, foregoing
the opportunity to enter rebuttal evidence in exchange for Applicant’s
agreement.” Opposer contends that Applicant agreed to entry of the
Unopposed Motion “knowing that Opposer was filing it in lieu of direct
rebuttal testimony.” 34 TTABVUE 3. Opposer also asserts that Applicant’s
objection to the Unopposed Motion is “untimely and disingenuous,” noting
that Applicant did not object to the Unopposed Motion within 15 days of the
filing of that motion, and indeed waited until three months to file its
objection, well after Opposer prepared its trial brief which relied on the
amended answers in that brief. Opposer argues that, as shown by the parties’
exchanges prior to the filing of the Unopposed Motion, “Applicant had every
opportunity to voice its current objections and chose to reserve those
objections until it felt it would be strategically advantageous.” Id. at 4.
After reviewing the motion papers, including the emails between the
parties that led to the filing of the Unopposed Motion which Opposer
submitted with its opposition to Applicant’s motion, it is clear that Opposer
believed that the Unopposed Motion was designed to make certain evidence
of record. During the email exchange, Opposer referred to the motion as a
“stipulated motion for the entry of evidence into record.” See May 19, 2015
6:17 pm email from Perry Gattegno to Miriam Richter. 33 TTABVUE 23. The
Opposition No. 91208485
6
draft motion attached to the emails was captioned as a “Stipulated Motion to
Entry of Evidence into the Record.” Id. at 26. Ultimately, the title of the
motion was changed, apparently because of Applicant’s May 22, 2015 email to
Opposer to file the motion as “unopposed.” 33 TTABVUE 31. However, the
title still refers to the entry of evidence into the record: “Unopposed Motion to
Entry of Evidence into the Record.”
Whether or not there were some strategic machinations occurring, or
merely misunderstandings, we must look at the language of the actual paper
filed on May 22, 2015. Although the paper was styled as a “Stipulation of
Facts” in the ESTTA cover sheet, there is nothing in the paper itself that
shows that Applicant was stipulating that the amended interrogatory
responses were indeed “facts.” We do not consider Applicant’s failure to object
to the TTABVUE docket title, or the caption in the ESTTA cover sheet, as
changing the Unopposed Motion into a Stipulation of Facts. However, the
Unopposed Motion was very clearly entitled “Unopposed Motion to Entry of
Evidence into the Record” (emphasis added). Whether or not Opposer
might have otherwise been precluded from making its amended interrogatory
answers of record during its rebuttal testimony period since, as noted below,
a responding party cannot normally make its answers of record under a
notice of reliance, or because the information itself may not have been proper
rebuttal, certainly the answers could have been made of record by agreement
of the parties, and that is what we have here. Applicant agreed that the
Opposition No. 91208485
7
amended answers could be entered into evidence. Applicant can claim no
surprise that it was agreeing to the entry of this evidence in view of the
emails and the consistent reference in the titles of the draft motions to “entry
of evidence into the record.”
Accordingly, we treat Opposer’s amended interrogatory responses, filed on
May 22, 2015, as of record.
Applicant has also objected to Opposer’s notice of opposition to the
registration of a third party’s mark, submitted with Opposer’s notice of
reliance. The pleading itself, as an official record, is appropriate subject
matter for a notice of reliance, and has been considered. Trademark Rule
2.122(e). The allegations made in that pleading, however, are only that—
allegations—and are not evidence that the allegations are true. Accordingly,
we have considered the notice of opposition only for the fact that it was filed.
As for the printed publications submitted by Opposer under notice of reliance,
they are properly of record under Trademark Rule 2.122(e). We will discuss
their probative value infra as it relates to our analysis of the issues. In its
trial brief Opposer lists, as evidence of record, a pending trademark
application. We agree with Applicant that Opposer has not made of record
any application that it may own, and we therefore have given any statements
regarding such an application no consideration. Applicant has also objected to
the Recitation of Facts in Opposer’s trial brief that were never offered into
evidence. We have given no consideration to the “facts” asserted by Opposer
Opposition No. 91208485
8
in its briefs that are not established by the evidence in the record, including
the statements in the first and third paragraphs of its recitation of facts
(regarding when Opposer began operations, what the services were, when it
organized itself as a business entity, and information about its own
application) (28 TTABVUE 8).
The Record
By operation of the rules, the record includes the pleadings and the file of
the opposed application. The parties have submitted their evidence solely
through notices of reliance. Opposer made of record a copy of the notice of
opposition it filed against the application, Serial No. 85258741, of a third
party to register the mark BLEU PLATE for bar and restaurant services, and
articles from publications and excerpts from websites. 14 TTABVUE.4
Applicant submitted a copy of its registration No. 4295833 for BLUE PLATE
in standard characters for restaurant services, showing status and title,5 23
TTABVUE, and Opposer’s responses to Applicant’s first set of interrogatories,
consisting of six interrogatories. 24 TTABVUE.6 As noted above, we treat

4 Opposer also lists as an item in its notice of reliance, “a copy of Opposer’s Notice of
Opposition to the applicant for the infringing mark BLEU PLATE, dated March 20,
2012.” Opposer did not submit a copy of such a document, and there is no indication
that Applicant filed an application for the mark BLEU PLATE. If Opposer meant to
identify its notice of opposition in the current proceeding, that pleading is, as
indicated, of record by operation of the rules.
5 This registration was not the subject of the notice of opposition referenced in
footnote 4. Aside from the mark being BLUE PLATE (not BLEU PLATE), the
application that resulted in this registration was not filed until October 17, 2012,
which was after the March 20, 2012 date that Opposer indicates as the filing date of
its notice of opposition.
6 These are the same interrogatories and responses that Opposer sought to introduce
through its own notice of reliance, and which were later amended.
Opposition No. 91208485
9
Opposer’s amended answers to Applicant’s interrogatories to be of record by
consent of the parties.
Standing
Opposer has stated, in its answer to Applicant’s interrogatory 1, that it
has done business under the mark BLUE PLATE in certain states. Although
this response does not provide information as to the nature of Opposer’s
business, given the liberal standard shown by the case law for meeting the
standing threshold, we find that Opposer, by this response, has shown its
standing. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.
1999).
Likelihood of Confusion Ground
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), prohibits the
registration of a trademark that “consists of or comprises a mark which so
resembles a mark registered in the Patent and Trademark Office, or a mark
or trade name previously used in the United States by another and not
abandoned, as to be likely, when used on or in connection with the goods of
the applicant, to cause confusion, or to cause mistake, or to deceive.” Section
3 of the Act extends this provision to services. Thus, there are two elements
which must be proved to succeed on the ground of likelihood of confusion:
priority and likelihood of confusion.
Opposition No. 91208485
10
Priority
Because Applicant has submitted no evidence of use of its mark, the
earliest date on which it may rely is August 23, 2012, the filing date of its
application. Orange Bang, Inc. v. Olé Mexican Foods, Inc., 116 USPQ2d 1102,
1115 (TTAB 2015) Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107
USPQ2d 1424, 1429 (TTAB 2013). Therefore, in order to show that it has
priority, and because it does not have a registration, Opposer must rely on its
common law rights, and show that it established such rights through prior
use of a mark or trade name that has not been abandoned. Opposer’s original
interrogatory answers state that it “has done business under the mark BLUE
PLATE” in the state of Indiana on October 21, 2012; Wisconsin on June 22,
2013; and Michigan on June 29, 2013. In other words, all of these uses are
subsequent to the August 23, 2012 filing date of Applicant’s application.
However, in Opposer’s amended interrogatory answer Opposer has added
“Illinois: December 1983-present.”
Thus, in terms of evidence of use prior to Applicant’s use, we have
Opposer’s responses that “Opposer has done business under the mark BLUE
PLATE” in Illinois from December 1983 to the present,7 (response to
Interrogatory 1) and that “opposer operated a delicatessen using the BLUE
PLATE mark as the primary name of the establishment in the City of

7 The amended interrogatory responses were signed by “One of its [Opposer’s]
Attorneys” on May 22, 2015; we cannot ascertain from the signature who that
attorney is, since the name was not typed under the signature line, and the
signature is not legible. As Applicant points out, the amended responses were not
verified.
Opposition No. 91208485
11
Chicago from 1983 until 1993” in response to interrogatory 4, “State all
locations and dates that you operated a restaurant using the BLUE PLATE
[sic] as the primary name of the establishment.” This evidence is not
sufficient to establish that Opposer had trademark rights in the mark BLUE
PLATE for any particular goods or services as of the filing of Applicant’s
application in August 2012. With respect to Opposer’s response to
interrogatory 1, there is no information in this answer that shows what
business Opposer conducted under the mark BLUE PLATE, or the extent of
any use of the mark. With respect to Opposer’s response to interrogatory 4,
the fact that Opposer operated a delicatessen under the BLUE PLATE mark
from 1983 until 1993 does not show that Opposer had continuing trademark
rights for restaurant services in 2012. Section 45 of the Trademark Act
provides that a mark shall be deemed to be abandoned if its use has been
discontinued with intent not to resume such use, and that “Nonuse for 3
consecutive years shall be prima facie evidence of abandonment.” Nineteen
years of nonuse (from 1993 until 2012) certainly establishes prima facie
abandonment, and the evidence of record does not indicate any intent by
Opposer to resume use.
As for the notice of opposition that Opposer filed on April 12, 2012 against
a third party’s application for BLEU PLATE, the filing of such pleading does
not show that Opposer had any trademark rights of any kind; as previously
stated, allegations in a notice of opposition are not proof. We do not accept
Opposition No. 91208485
12
Opposer’s contention that its opposition to the registration of this third-party
mark months before the filing date of Applicant’s application “is probative of
Opposer’s prior use of the disputed Mark.” Reply brief, 32 TTABVUE 11. The
mere filing of an opposition does not prove that the plaintiff has any
trademark rights; therefore, the April 2012 filing cannot show that Opposer
has priority of use. Opposer’s analogy to the doctrines of issue and claim
preclusion, and the cases involving those doctrines, is inapposite. The
remaining evidence consists of articles in printed publications and excerpts
from third-party websites. These articles can be used to show that they are or
were in circulation, and therefore that there has been some exposure of them
either to the trade or to the public, depending on the nature of the
publication. However, to the extent that they are used to prove the truth of
the statements made in the articles, that is hearsay.
Opposer distinguishes between the information provided in the articles as
to whether the information is hearsay or not. For example, Opposer points to
a profile of Opposer’s founder, James Horan, in the August 25, 1997 issue of
Crain’s Chicago Business, with the title “Hitting high notes in catering
world.” Opposer claims that this article may not be used “to prove that James
Horan is a dynamic businessman, or that Blue Plate Catering, Ltd. had
particular revenues in particular years, or that the company was founded in
1983….” Reply brief, 32 TTABVUE 7. However, Opposer claims that this
Opposition No. 91208485
13
article, and others like it, can be used to show Opposer was using its mark
prior to 2004.
We disagree. Opposer is attempting to use the articles to prove that its
mark was being used for its services during the years prior to 2012. In other
words, they are being offered to prove the truth of the statements made in the
articles. Although Opposer may not be trying to use the articles to prove each
detail recited in the articles, that does not mean that the more general
information in the articles is not hearsay if Opposer is seeking to use the
articles to prove the truth of this information.
Opposer relies on Specht v. Google, Inc., 758 F.Supp. 2d 570 (N.D. Ill.
2010), aff’d 747 F.3d 929, 110 USPQ2d 1319 (7th Cir. 2014), in support of its
statement that “A court (or the Board) may take judicial notice of the
existence of publications which tend to show that a mark has been used, even
if it may not consider the truth of the facts contained within the
publications.” Reply brief, 32 TTABVUE 8. Opposer adds that, although the
articles in the present case were brought to the Board’s attention via notice of
reliance, as opposed to judicial notice, the same hearsay and non-hearsay
rules apply. Id.
Opposer’s reliance on the decision in Specht is misplaced. The Court did
take judicial notice of “a significant quantity of stories from major
newspapers across the United States that reported on [the defendant’s
announcement of its Android Software Development Kit],” but the Court was
Opposition No. 91208485
14
very clear that it took “judicial notice of the existence of these newspaper
articles, not of the facts contained therein.” 758 F.Supp. at 586.
We acknowledge that the Court treated the existence of these newspaper
articles as evidence concerning whether the public identifies a mark as the
source designator of a party’s goods or services. However, the eleven articles
and web excerpts submitted by Opposer are not sufficient to show that there
was sufficient public exposure of Opposer’s mark for particular services prior
to the filing date of Applicant’s application to establish that Opposer had
prior common law rights. It appears from their content that two of the web
articles were not created until after the filing date of Applicant’s application
(The Knot Best of Winners 2012 in examiner.com is dated January 21, 2013;
the article at www.101bestandbrightest.com is for 2013 award winners),
while two other web articles do not show a creation date, and cannot be
presumed to have been published prior to August 23, 2012. Six other articles
are from trade publications, i.e., four articles from Special Events Magazine,
in issues dated September 1997, September 2002, December 2002 and
September 2003; an article in the 2004 issue of Catersource Magazine; and
an article in the August 25, 1997 issue of Crain’s Chicago Business. In fact,
the only clearly pre-August 2012 article in a publication in general
circulation is from the December 22, 2002 Washington Post, and that article
mentions “Blue Plate” only in passing: the article is about how professionals
with busy schedules at Christmas manage their holiday tasks such as
Opposition No. 91208485
15
shopping and entertaining, and refers to “Blue Plate” only to identify one of
these professionals as the “manager of public relations and marketing for
Blue Plate, a catering company based in Chicago.” Even some of the trade
articles have equally cursory mentions, e.g., the December 2002 Special
Events Magazine article is about catering tents and their installation; the
article briefly mentions the type of tent that was used for the wedding of the
president of “powerhouse caterer Blue Plate.” Such mentions are not
sufficient to establish trademark rights. See Old Swiss House, Inc. v.
Anheuser-Busch, Inc., 569 F.2d 1130, 196 USPQ 808, 810 (CCPA 1978) (the
Court found that “12 articles, each published only once, which appeared in
various newspapers and trade journals…. and in which “in all but one, the
mark … was buried in the body of the articles” … “is not the type of public
exposure of a mark that would be expected to have any significant impact on
the purchasing public”).
In short, Opposer has failed to prove that it has established common law
rights in the trademark BLUE PLATE for any goods and services prior to the
August 23, 2012 filing date of Applicant’s application, and that it currently
has such rights. It is not enough to show that Opposer has done business
under the mark BLUE PLATE without showing the goods or services with
which the mark is used. Trademark rights are not rights in gross. See
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 703
F.2d 1372, 217 USPQ 505, 507 (Fed. Cir. 1983). Common law trademark
Opposition No. 91208485
16
rights are established only when the mark is used for particular goods or
services. Further, any common law rights in BLUE PLATE for delicatessen
services that Opposer established were abandoned long before the filing of
Applicant’s application.
Likelihood of Confusion
Because Opposer has not demonstrated its priority, one of the two
elements necessary to prove the ground of likelihood of confusion, we need
not address the element of likelihood of confusion. However, we note that,
because Opposer has not shown for which goods or services it uses its mark,
it cannot prove likelihood of confusion, since likelihood of confusion is based
on a showing that the applicant’s mark, as used for its identified goods or
services, is likely to cause confusion with the opposer’s mark as used in
connection with its goods or services.
Decision
The opposition is dismissed.