Cosmos Grace, Inc.v.True World Holdings LLC

Trademark Trial and Appeal Board

Jun 20, 2018

No. 91229940 (T.T.A.B. Jun. 20, 2018)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: June 20, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Cosmos Grace, Inc.
v.
True World Holdings LLC
________

Opposition No. 91229940
_______

Marc A. Karish, Eric Bjorgum and Daniel Kimbell of Karish & Bjorgum, PC
for Cosmos Grace, Inc.

Deborah A. Wilcox of Baker & Hostetler LLP
for True World Holdings LLC.

_____

Before Zervas, Shaw and Pologeorgis,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
True World Holdings LLC (“Applicant”) seeks to register on the Principal Register
the standard character mark TOYOSU EXPRESS for “seafood, not live” in
Opposition No. 91229940
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International Class 29.1 A translation statement in the record provides that the
English translation of the word “TOYOSU” is “rich ground.”
Cosmos Grace, Inc. (“Opposer”) pleads, inter alia, that Opposer is the owner of the
mark TOYOSU FRESH which is the subject of application Serial No. 87062106 for
“seafood, not live; processed seafood”; that “Opposer is likely to be damaged by the
registration sought by Applicant because such registration will support and assist
Applicant in confusing and misleading consumers as to the source of Applicant’s
goods, and will give color of exclusive statutory rights to Applicant over those of
Opposer, including Opposer’s trademark for TOYOSU FRESH, in violation of
Trademark Act § 2(e), 15 U.S.C. § 1052(e);2 that “Toyosu is a well-known geographic
district in Tokyo, Japan”; and that Applicant’s mark is either primarily
geographically descriptive, or primarily geographically deceptively misdescriptive of
Applicant’s goods.3
Applicant, in its answer, denied the salient allegations in the notice of opposition
but admitted that “Opposer is identified as the applicant of U.S. Application Serial
No. 87/062,106 for the mark TOYOSU FRESH for: SEAFOOD, NOT LIVE;
PROCESSED SEAFOOD in Class 29 on the basis of intent-to-use ….”4 Applicant did
not submit any evidence at trial and did not submit a brief.

1 Application Serial No. 86814683, filed November 10, 2015, pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), asserting a bona fide intent to use the mark in
commerce.
2 Notice of opposition ¶¶ 1, 4 and 8, 1 TTABVUE 3 and 4.
3 Notice of opposition ¶¶ 4 and 7, 1 TTABVUE 4.
4 4 TTABVUE 2.
Opposition No. 91229940
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I. The Record/Evidentiary Issues
In addition to the pleadings, the record automatically includes the involved
application file pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b).
Opposer did not file any evidence with the Board during its 30-day trial period
which ended on Sunday, August 13, 2017.
After Opposer’s trial period ended, Opposer filed the following with the Board:
a. Opposer’s “Statement re Testimony Transcript” submitting to the Board (with
a certificate of filing and service on Applicant dated September 11, 2017):

i. The unsigned declaration of Akio Muranaka (with a certificate of service
on Applicant dated Monday, August 14, 2017);5 and

ii. The “expert” sworn and signed declaration of Yoshihiro Ozonoa, without
any indication that it had previously been served on Applicant.

b. Opposer’s notice of reliance (filed on the same date as Opposer’s brief, on
January 25, 2018) on wikipedia.com webpages and online articles, bearing a
certificate of service on Applicant’s attorney dated Monday, August 14, 2017.

Trademark Rule 2.121(a), 37 C.F.R. 2.121(a), states in relevant part:
The Trademark Trial and Appeal Board will issue a trial
order setting a deadline for each party’s required pretrial
disclosures and assigning to each party its time for taking
testimony and presenting evidence (“testimony period”).
No testimony shall be taken or evidence presented except
during the times assigned, unless by stipulation of the
parties approved by the Board, or upon motion granted by
the Board, or by order of the Board. The deadlines for
pretrial disclosures and the testimony periods may be
rescheduled by stipulation of the parties approved by the

5 Even though Opposer’s testimony period ended on Sunday, August 13, 2017, submissions
to the Board and service of such submissions on Monday, August 14, 2017 are deemed timely.
See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 112 (June
2017) (“[I]f, as set by the Board, the close of a testimony period falls on a Saturday, Sunday,
or federal holiday within the District of Columbia, testimony depositions may be taken,
testimony declarations and affidavits may be filed, and other evidence may be offered, on the
next business day.”).
Opposition No. 91229940
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Board, or upon motion granted by the Board, or by order of
the Board.6
Trademark Rule 2.125(a), 37 C.F.R. 2.125(a), states as follows regarding the
submission of testimony declarations and affidavits:
One copy of the declaration or affidavit prepared in
accordance with § 2.123, together with copies of
documentary exhibits and duplicates or photographs of
physical exhibits, shall be served on each adverse party at
the time the declaration or affidavit is submitted to the
Trademark Trial and Appeal Board during the assigned
testimony period.
Trademark Rules 2.121(a) and 2.125(a) make clear that evidentiary submissions
to the Board are to be made during the assigned testimony period – the exception
provided for pursuant to Trademark Rule 2.121(a) only arises upon stipulation of the
parties approved by the Board, or, on motion, by order of the Board. Because none of
Opposer’s evidentiary submissions were made during Opposer’s assigned testimony
period, and the Board has not received (and approved or granted) a stipulation or
motion from Opposer to present evidence outside of its assigned testimony period,
Opposer’s evidentiary submissions are untimely and we do not consider them. See
Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1116 (TTAB 2009)
(sustaining objection and striking notice of reliance filed after Opposer’s testimony
period ended, stating, “[a] notice of reliance must be submitted during the testimony
period of the offering party.”).7 Further, because these rules concern submission of

6 TBMP §701 states, “[a] party may not take testimony or present evidence outside of its
assigned testimony period, except by stipulation of the parties approved by the Board, or, on
motion, by order of the Board.”
7 See also TBMP § 703.01(k), stating “A party who takes testimony by affidavit or declaration
must serve a copy of the declaration or affidavit along with copies of exhibits on each adverse
Opposition No. 91229940
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evidence to the Board and not service on the opposing party, the fact that Opposer
served some if its evidence on Applicant during its testimony period does not compel
a different result.
Opposer also submitted evidence with its trial brief. 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. See, e.g., id.; Bass Pro Trademarks LLC v. Sportsman Warehouse, Inc., 89
USPQ2d 1844, 1848 (TTAB 2008); Life Zone Inc. v. Middleman Group Inc., 87
USPQ2d 1953, 1955 (TTAB 2008). See also Trademark Rule 2.123(l), 37 CFR §2.123(l)
(“Evidence not obtained and filed in compliance with these sections will not be
considered”); TBMP §704.05(b) (“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.”). Accordingly, we have given
no consideration to the evidence submitted by Applicant with its trial brief.
As noted, Applicant did not submit any evidence.
II. Standing
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. To establish standing in an opposition or cancellation proceeding, a
plaintiff must show “both a ‘real interest’ in the proceedings as well as a ‘reasonable
basis’ for its belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753
F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports,

party at the same time the party submits the declaration or affidavit to the Board during the
party’s assigned testimony period.”
Opposition No. 91229940
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Inc., v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012)); Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
Because Opposer has not introduced any evidence which we may consider, we turn
to Applicant’s admission that “Opposer is identified as the applicant of U.S.
Application Serial No. 87/062,106 for the mark TOYOSU FRESH for: SEAFOOD,
NOT LIVE; PROCESSED SEAFOOD in Class 29 on the basis of intent-to-use.”8 In
Sterling Jewelers, Inc. v. Romance & Co., Inc., 110 USPQ2d 1598, 1601-02 (TTAB
2014), the Board found applicant’s admission that opposer is the “listed” owner of its
pleaded registration did not establish opposer’s current ownership of the pleaded
registration; the admission merely established that opposer is identified as the owner
of the registration. Accordingly, the Board did not consider the registration as being
in evidence. Here too, Applicant’s admission that “Opposer is identified as applicant”
does not establish that Opposer is the owner of the pleaded pending application nor
does it establish the current status of that application.
In this case, Opposer has not introduced any timely evidence proving that it has
standing nor do any of Applicant’s admissions establish Opposer’s standing. Because
Opposer has not established its standing to bring this opposition, it cannot prevail on
any of the grounds alleged in its notice of opposition.
Decision: The opposition is dismissed.

8 4 TTABVUE 2.