Edward Wilsonv.Shannon McCabe

Trademark Trial and Appeal Board

Sep 28, 2018

No. 91229878 (T.T.A.B. Sep. 28, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: September 28, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Wilson
v.
McCabe

_____

Opposition No. 91229878
_____

Edward Wilson, pro se.

Shannon McCabe, pro se.

_____

Before Mermelstein, Ritchie, and Goodman,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
On April 6, 2016, Shannon McCabe (“Applicant”) applied to register NURTURED
WITH NATURE, in standard character form, for “essential oils,” in International
Class 3.1 Edward Wilson (“Opposer”) filed a notice of opposition, which as amended,
alleges that he is using the mark “Nurture with Nature”; that he has used the mark
“consistently and continuously in interstate commerce”; and that his mark is “entitled

1 Application Serial No. 86965805 was filed on April 6, 2016 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging dates of use and first use in commerce on June
1, 2015.
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to common law protection from at least as early as July 12, 2013.”2 Opposer further
alleges that “Opposer has priority” over Applicant and that “[t]here is a high
likelihood of consumer confusion or mistake as to the source or sponsorship of goods
and services due to the similarity in Opposer’s and Opposed Marks, goods and
services, and trade channels.”3
Applicant denied the salient allegations of the notice, except that Applicant
admitted the following in response to Opposer’s allegations in paragraph 3 of the
notice:4
Paragraph 3: The Opposer has a pending United States Patent and
Trademark Office (USPTO) application (serial number 87139613) for
the mark “Nurture With Nature.”

Response: Applicant admits the allegations contained within paragraph
3 of the Notice of Opposition, but notes that the USPTO refused
registration on November 26, 2016 because the specimen Opposer
submitted does not show the applied-for mark in use in commerce in
International Class 25.5

2 7 TTABVUE 2 (paragraphs 1, 2).
3 Id., at 3, 5 (paragraphs 5, 14). Opposer additionally alleged that Applicant’s use “does or is
likely to falsely suggest a relationship between Opposed goods and services and the Opposer’s
goods and services contrary to 15 USC 1125.” Id. at 5 (paragraph 15). The cited section of the
Lanham Act refers to a “civil action.” To the extent that Opposer intended to refer to a false
suggestion of a connection claim under Section 2(a) of the Trademark Act, he did not pursue
this claim on brief, and thus we deem it to be waived. See Alcatraz Media, Inc. v. Chesapeake
Marine Tour Inc., 107 USPQ2d 1750, 1753 (TTAB 2013) (petitioner’s pleaded descriptiveness
and geographical descriptiveness claims not argued in brief deemed waived); aff’d, 565 F.
App’x 900 (Fed. Cir. 2014) (mem.); Knight Textile Corp. v. Jones Inv. Co., 75 USPQ2d 1313,
1314 n.4 (TTAB 2005) (pleaded dilution ground not pursued on brief deemed waived).
4 The amended answer also contains several affirmative defenses. As the Board stated with
its Discovery Conference Order, these are “not true affirmative defenses” but will be
construed as “amplifications of [Applicant’s] denials.” 6 TTABVUE 4.
5 8 TTABVUE 3.
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Only Opposer filed a brief.6
I. The Record and Evidentiary Issues
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the subject application.
Neither party submitted any evidence or testimony during their testimony
period.7 Opposer did attach thirty pages of documents to his trial brief. Opposer
referenced these documents, as well as his own application file, in his brief. Although
Applicant did not file a brief or any objections to the evidence submitted by Opposer,
we find all such evidence to be untimely submitted.
Testimony and evidence may only be submitted during assigned times. See
Trademark Rule 2.121(a); 37 C.F.R. § 2.121(a), which reads, in relevant part, as
follows:
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

6 Opposer did not file a trial brief within the prescribed time mandated by the Institution
Order. 10 TTABVUE 2. The Board thus issued an order “to show cause why the Board should
not treat the failure to file a brief as a concession of the case.” 11 TTABVUE 1. On June 12,
2018, Opposer filed a response, with a motion to extend his time to file a brief, stating, among
other things, that he “received and is still operating under military orders that mandated a
relocation and change in mission” and which “limited [Opposer’s] ability to deliver a brief
within the appointed timeline.” 13 TTABVUE 2. The same day, Opposer filed his trial brief.
The Board granted the motion by Opposer, and accepted his brief, stating: “Opposer’s motion,
filed June 12, 2018, to reopen time for filing its [sic] brief is granted as conceded.” 18
TTABVUE 1. The date for filing Applicant’s brief was reset to August 18, 2018, but, as noted,
Applicant did not file a brief.
7 A pleaded registration may be made of record pursuant to Trademark Rule 2.122(d)(1), 37
C.F.R. § 2.122(d)(1). Opposer, however, relies on an application, which is suspended and has
not issued as a registration. Opposer’s application is further discussed, infra, in “Standing
and Priority.”
Opposition No. 91229878
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approved by the Board, or upon motion granted by the Board, or by order
of the Board.

The latest Institution Order in this case mandates that “Plaintiff’s 30-day Trial
Period Ends” on December 7, 2017.8 As noted, Opposer did not submit any testimony
or notices of reliance during this time. There is nothing indicating that the parties
agreed to any other timeline, and there are no further Board orders regarding
submission of testimony or evidence.
We give no consideration to the documents attached to Opposer’s brief, or
otherwise referenced by him, as they are not properly of record.
II. Standing and Priority
Standing is a threshold issue that must be proven in every inter partes case. See
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,
1062 (Fed. Cir. 2014); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982) (“The facts regarding standing . . . must be affirmatively
proved. To have standing, a plaintiff must have a real interest, i.e., a personal stake
in the outcome of the proceeding and a reasonable basis for its belief that it will be
damaged.”); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-28 (Fed. Cir.
1999).
Although Applicant has not filed a brief in this case, Opposer carries the burden
of proof in establishing his standing and priority. Id. As stated, neither party
submitted any evidence or testimony. That said, Applicant admitted with her answer
that Opposer owns a currently-pending application for the mark “Nurture With

8 10 TTABVUE 2.
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Nature,” which was refused registration,9 effectively making Opposer’s application of
record in this proceeding.
As noted, Applicant’s admission further stated that “the USPTO refused
registration on November 26, 2016 because the specimen Opposer submitted does not
show the applied-for mark in use in commerce.” That statement is correct, but
incomplete. While the only basis for the refusal of registration stated in the
Examining Attorney’s first office action was the rejection of Opposer’s specimen of
use, the Examining Attorney further noted three prior-filed applications — including
Applicant’s — as potential bars to registration under Trademark Act § 2(d), should
the cited applications proceed to registration.10
We find this sufficient to establish that Opposer has a “real interest” in this
proceeding. Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1959 (TTAB
2008) (“evidence of [Opposer’s] pending trademark application, and evidence that the
application has been suspended pending resolution of the subject application
demonstrate that opposer has a reasonable belief that it would be damaged by
registration of applicant's mark, thus establishing its standing”).
Applicant made no admissions as to Opposer’s priority, however, and Opposer’s
constructive use date based on his application is August 16, 2016, several months
after Applicant’s filing date of April 6, 2016. (Although Opposer’s application includes

9 8 TTABVUE 3.
10 Serial No. 87139613, Office Action (Nov. 29, 2016). Following Opposer’s response to the
Office Action (which included a substitute specimen), the specimen requirement was
withdrawn, and further examination was suspended pending the disposition of Applicant’s
application, specifically noting the pendency of this proceeding. Id., Suspension Letter (Feb.
27, 2017).
Opposition No. 91229878
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a claim of first use of July 12, 2013, such claims are not evidence of Opposer’s priority.
Trademark Rule 2.122(b)(2).) Thus, Opposer has failed to prove his priority. Further,
Opposer cannot prevail on his claim of likelihood of confusion because he has
submitted no evidence that he owns “a mark registered in the Patent and Trademark
Office, or a mark or trade name previously used in the United States.” Trademark
Act § 2(d).
Decision: The opposition is dismissed.