Denise Snacks, Inc. and Denise Distribution Corp.v.The International Group, Inc.

Trademark Trial and Appeal Board

Jul 17, 2015

No. 91195509 (T.T.A.B. Jul. 17, 2015)

Mailed: July 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Denise Snacks, Inc. and Denise Distribution Corp.

v.

The International Group, Inc.
_____

Opposition No. 91195509
to Application Serial No. 77838572
_____

Bruce W. Baber and Kathleen E. McCarthy of King & Spalding LLP for
Denise Snacks, Inc. and Denise Distribution Corporation.

Harry Schochat of Law Offices of Harry Schochat for The International
Group, Inc.
_____

Before Seeherman, Ritchie, and Shaw, Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On September 30, 2009, The International Group, Inc. (“Applicant”)
applied to register the mark DENISE SNACKS and design, as shown below,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 91195509
2
for “fried pork skins, fried pork rinds, pork crackling, fried chicken skins,” in
International Class 29”1:

On June 30, 2010, Denise Snacks, Inc. and Denise Distribution Corporation
(collectively “Opposers”) filed an opposition to the registration of Applicant’s
mark. In their amended opposition, Opposers allege prior use of the mark
DENISE SNACKS for “candy, nuts, fried pork skin products, plantain chips,
cakes, toys, and other products,” and that use of the mark by Applicant on its
applied-for goods would be likely to cause confusion with Opposers’ mark. 11
TTABVUE at 3-4. Although Applicant did not file an answer to the amended
notice, the answer to the original notice denies the salient allegations and
includes several affirmative defenses. Only Opposers filed a brief.
We note that although the proceeding was brought on the ground of
priority and likelihood of confusion under Section 2(d) of the Trademark Act,
as well as false suggestion of a connection and misrepresentation of source

1 Application Serial No. 77838572, filed under Section 1(a) of the Trademark Act,
claiming dates of first use and first use in commerce of June 1, 2003, and
disclaiming the exclusive right to use the term “SNACKS” apart from the mark as
shown.
Cancellation No. 91195509
3
under Section 2(a), the actual issue in this matter is ownership of the mark
DENISE SNACKS and design for pork skins. See Nahshin v. Product Source
Int’l LLC, 107 USPQ2d 1257, 1258 (TTAB 2013). In particular, Opposers
allege in the Amended Notice: Applicant and/or its related entities served as
a contract manufacturer . . . for Opposers, and neither of
Opposers nor any entity related to Opposers ever granted,
assigned or transferred to Applicant or to any entity related to
Applicant any ownership right in or to any of the DENISE
SNACKS Marks. 11 TTABVUE 4. Opposers further argue in
their brief: “The record in this proceeding demonstrates convincingly that, as
between Opposers and Applicant, Opposers own the Denise Snacks Logo
Mark.” 51 TTABVUE 22. Although Applicant chose not to submit testimony
or evidence, or to submit a brief, we consider that Applicant had fair notice of
the claim of ownership, and we deem the pleadings to be amended pursuant
to Fed. R. Civ. P. 15(b) to include Applicant’s lack of ownership as a ground.
See also Nahshin v. Product Source Int’l LLC, 107 USPQ2d at 1258.
Record
The record in this case includes the pleadings and the file of the involved
application as well as the testimonial deposition submitted by Opposers of
Ramon Hernandez, dated August 22, 2014. Opposers also submitted a Notice
of Reliance on August 25, 20142.
Applicant did not submit any testimony or evidence.

2 Opposer’s Notice of Reliance included some documents that were produced by
Applicant in response to a document production request. Such documents cannot be
made of record by notice of reliance. See Trademark Rule 2.120(j)(3)(ii); TBMP §
403.05(b) (2015). We note that the consideration thereof would not have changed the
outcome of our decision.
Cancellation No. 91195509
4
Standing

Standing is a threshold issue that must be proven in every inter partes
case. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982) (“The facts regarding standing . . . must be
affirmatively proved. Accordingly, [plaintiff] is not entitled to standing solely
because of the allegations in its [pleading].”). To establish standing in an
opposition, an opposer must show both “a real interest in the proceedings as
well as a ‘reasonable’ basis for his belief of damage.” See Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
Opposers’ owner testified that they have been in “the snack business” for
about twenty years. 54 TTABVUE 13. This includes selling candy, nuts,
chips, toys, and, pork skins. Id. at 14-15. As discussed below, they have used
marks consisting or or containing the name DENISE. Accordingly, we find
that petitioner here has shown that it has a reasonable belief of damage and
a real interest in this proceeding. Therefore it is not a mere intermeddler,
and has established its standing. 15 U.S.C. § 1064. See Lipton Industries, Inc.
v. Ralston Purina Co., 213 USPQ at 189; Cerveceria Modelo S.A. de C.V. v.
R.B. Marco & Sons Inc., 55 USPQ2d 1298 (TTAB 2000); and Hartwell Co. v.
Shane, 17 USPQ2d 1569 (TTAB 1990).
Ownership
Opposers assert that they are the true owners of the mark DENISE
SNACKS, and design for “pork skins,” and that therefore Applicant’s
Cancellation No. 91195509
5
application is void ab initio. We consider the evidence and testimony on this
point.
Opposers’ witness Ramon Hernandez testified that he is the owner, with
his wife, of both of Opposers, and that, in this capacity, he began selling
snack products under the mark DENISE and design, as shown below, in
1993:

54 TTABVUE 12, 25, and Exhibit 101.
Mr. Hernandez further testified that Opposers have used the mark DENISE
SNACKS and design since around 2003. Id. at 33-34. He added pork skins to
the product line in 2003. Id. at 15. Opposers do not manufacture their own
products, but employ contract manufacturers for their various snack
products. Id. at 49. Opposers contracted with Applicant to sell pork skins
under the mark DENISE SNACKS and design, beginning around 2003. Id. at
51. Around 2007, Opposers updated the design of their DENISE SNACKS
Cancellation No. 91195509
6
and design mark to the form shown below, which we find to be substantially
identical to that for which Applicant seeks registration:

Id. at 65, Ex. 111. Opposers have used this mark for nuts, plantain chips,
candy, and other products including, but not limited to, pork skins. Id. and
Exs. 110-114.
Mr. Hernandez testified that he selected the name Denise and created the
various logos used by Opposers, including the DENISE SNACKS and design
mark that was used on pork skins beginning in 2007. Id., at 58. He testified
that Applicant packaged for Opposers fried pork skins under the mark for
which Applicant seeks registration. Id. at 61-63. His testimony includes as an
exhibit a package for fried pork skins which shows that, although packaged
by Applicant, the product states that it was “Packed for Denise Snacks, Inc.
Hialeach [sic], Florida.” Id., and Exhibit 111. Mr. Hernandez has testified
that Denise Snacks is the name of his company. Id. at 10. There is no
testimony or evidence that Denise Snacks is the name of Applicant or any of
Cancellation No. 91195509
7
its affiliates. Finally, included as an exhibit to Mr. Hernandez’s deposition is
a June 25, 2008 letter from Applicant’s principal, Charles Leroux, to Mr.
Hernandez, terminating their business relationship. The letter specifically
notes, “We wish you success with your Denise brand.” Id. at 109, and Ex. 122.
We find that Opposers have established by a preponderance of the
evidence a prima facie showing that they, not Applicant, own the mark for
which Applicant seeks registration, and that Applicant has not rebutted this
prima facie showing. See Nahshin v. Product Source Int’l LLC, 107 USPQ2d
at 1264.3
Decision: The notice of opposition is sustained on the ground that
Applicant is not the owner of the applied-for mark.4

3 As noted above, Applicant did not present any evidence or testimony at all at trial.
Applicant’s statements in its answer to the notice are not evidence of record. See
TBMP § 704.06(a) (2014).
4 Since we have granted the petition on the ground of lack of ownership, we do not
find it necessary to discuss the other pleaded grounds.