Educon Int’l.v.Unisys Corp.

Trademark Trial and Appeal Board

Aug 7, 2000

No. 91108306 (T.T.A.B. Aug. 7, 2000)

Paper No. 16
TEH
8/7/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Educon International
v.
Unisys Corporation
_____
Opposition No. 108,306
to application Serial No. 75/170,616
filed on September 23, 1996
_____
Educon International, pro se
Stephanie E. Thier of Unisys Corporation for Unisys
Corporation
______
Before Seeherman, Quinn and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by Unisys Corporation to
register the mark TEAMPLAN for the following services
(quotation marks in original):1
Computer consultation services, namely, analyzing the
significance of information and technology to improve
client competitiveness and profitability, specifically
providing "strategic information opportunity
identification," "business and technology solutions

1 Application Serial No. 75/170,616 filed September 23, 1996 alleging
dates of first use of October 1993.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 108,306
2
definition," "solution justification and approval," and
"program definition."
Registration has been opposed by Educon International
under Section 2(d) of the Trademark Act. In the notice of
opposition, opposer, appearing pro se in this matter, alleges
that its own mark TEAMPLAN! "has been in continuous use in
commerce since 1986." Opposer states that it was the owner of
a prior registration for the same mark,2 that the registration
was cancelled in 1996, and that opposer has now filed a new
application for the same mark. Opposer asserts that its
registration "should adequately establish [opposer's] prior
use and ownership of this mark" and that "[opposer's]
reapplication contains specimens showing continuing use."
Opposer claims that applicant's mark "is in clear conflict
with [opposer's]...use of, and investment in, [opposer's] own
mark...."
Opposer does not identify any goods or services in the
notice of opposition and has attached a copy of its
application (without accompanying specimens) to the pleading.
The goods identified in the application are "books, brochures,

2 Registration No. 1,590,812 issued April 10, 1990; cancelled, Section
8 on October 14, 1996.
Opposition No. 108,306
3
and seminar manuals in the field of organizational
management."
Applicant, in its answer, denies the salient allegations
in the notice of opposition. Applicant has also asserted
affirmatively that it has used its mark since October 1993 in
connection with the identified services and "is not aware of a
single instance of confusion" during the four-year period of
overlapping use; that its mark is used in connection with
highly complex technical services rendered to sophisticated
customers and that these services are unrelated to the goods
of opposer.
Opposer took no testimony depositions, but on June 19,
1998, one day before the close of its testimony period,
opposer filed a document styled "testimony in opposition"
which consists of opposer's arguments on the merits of the
case and several accompanying "exhibits." These exhibits
consist of a photograph of the cover of one of opposer's
manuals, a brochure describing the manuals and their contents,
and a detailed statement of opposer's "long range information
system plan." Opposer submitted nothing else during its
testimony period.
On December 9, 1998, the Board issued an order which,
among other things, acknowledged the confusing nature of this
Opposition No. 108,306
4
document. The Board decided to construe the document as an
"attempt to create a trial record in support of opposer's
case" and in so doing, reset the time for applicant to take
testimony and the time for both parties to file briefs on the
case. Applicant did not take any testimony or introduce any
evidence. Only opposer filed a brief on the case.
As set forth in opposer's June 19 submission, and as
essentially repeated in its brief, opposer asserts use of its
mark prior to applicant's claimed date of first use in 1993,
and bases this claim on the issuance of its now cancelled
registration and its "[prior] and continuing use from 1986
[which] has been documented...in its 1997 re-application."
Opposer maintains that the marks TEAMPLAN! and TEAMPLAN are
virtually identical, the only distinction being the
exclamation point in opposer's mark. Opposer claims that the
parties' goods and services are related, "its own strategic
planning services for corporations embrace and encompass
computer-specific planning services" of applicant. Opposer
"acknowledges that its [mark]...applies only to the published
materials that announce its mission and attract and instruct
its clients" but that "these materials are a vital part of the
service rendered."
The burden is on opposer, in a Section 2(d) case, to prove
priority of use and likelihood of confusion. In other words,
Opposition No. 108,306
5
it is opposer's obligation to come forward, not with just
argument, but with sufficient proof of its allegations which
would negate applicant's right to registration. See Sanyo
Watch Co., Inc. v. Sanyo Electric Co., Ltd., 691 F.2d 1019,
215 USPQ 833 (Fed. Cir. 1982). Opposer has not met this
burden.
First, the statements made in opposer's June 19 document
were not made under oath in accordance with the applicable
rules and, therefore, cannot be considered "testimony,"
notwithstanding opposer's characterization of the document as
such. Moreover, none of the "exhibits" submitted by opposer
have been properly
introduced as evidence in this case.3 The written materials
and photographs of opposer's manuals should have been
introduced, that is, properly identified and authenticated, in
connection with sworn testimony, and the copy of opposer's
pending application should have been submitted in this manner
or by "notice of reliance" as provided in Trademark Rule

3 With one exception which does not exist here, exhibits attached to a
pleading are not evidence on behalf of the party to whose pleading
they are attached unless they are thereafter, during the time for
taking testimony, properly introduced in evidence as exhibits. See
Trademark Rule 2.122(c).
Opposition No. 108,306
6
2.122(e).4 Thus, none of these materials can be considered in
deciding this case.5
Even if we were to consider the exhibits which could have
been submitted by notice of reliance as properly of record, it
would not change the outcome of this case. That is to say,
this evidence fails to establish opposer's priority and, as a
result,
opposer could not prevail on its likelihood of confusion
claim.
The question of priority does not arise in a case where
the opposer is the owner of a valid and subsisting
registration for its mark. See King Candy Co. v. Eunice
King's Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). The

4 A party may not reasonably presume evidence is of record when that
evidence was not offered in accordance with the Trademark Rules. See
Original Appalachian Artworks Inc. v. Streeter, 3 USPQ2d 1717 (TTAB
1987). Since applicant filed neither evidence nor a brief on the
case, this is not a situation where it could be said that, as the
result of any action or statement, applicant treated these materials
as being of record. See, for example, Original Appalachian Artworks
Inc. v. Streeter, supra.
5 The Board, in its December 9 order, also pointed out that the
document "cannot be considered by the Board" until proof of service
is provided. The Board then allowed opposer time to serve a copy of
this document on counsel for applicant. We note opposer's
"assumption" in its brief on the case that "its testimony was
admitted to the trial record upon its compliance with the Board's
[service] instruction." However, the Board, in that order, made no
determination as to the sufficiency of opposer's "evidence" or
whether it was otherwise properly made of record. The Board does not
read testimony or examine other evidence prior to final hearing. See
TBMP § 502.01 and cases cited therein.
Opposition No. 108,306
7
registration on which opposer seeks to rely in this case has
been cancelled, and is therefore not proof of anything.
Moreover, a copy of a trademark application, even properly
introduced, may be used to prove only the fact that such
application was filed on a certain date. It is not proof of
any facts, including the dates of use, that may be alleged in
the application. Lasek & Miller Associates v. Rubin, et al.,
201 USPQ 831 (TTAB 1978); and see, for example, Trademark Rule
2.122(b)(2).
On the record before us, opposer has failed to prove its
claim of priority and likelihood of confusion.
Decision: The opposition is dismissed with prejudice.
E. J. Seeherman
T. J. Quinn
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board