Edward Wilsonv.Tenacious Venture

Trademark Trial and Appeal Board

Sep 28, 2018

No. 91233086 (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.
Tenacious Venture

_____

Opposition No. 91233086
_____

Edward Wilson, pro se.

Rhett V. Barney, of Lee & Hayes, pllc
for Tenacious Venture.

_____

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

Opinion by Ritchie, Administrative Trademark Judge:
On February 4, 2016, Tenacious Venture (“Applicant”) applied to register
NURTURED BY NATURE, in standard character form, for “dietary food
supplements,” in International Class 5.1 Edward Wilson (“Opposer”) filed a notice of
opposition, alleging that he is using the mark “Nurture with Nature”; that he has

1 Application Serial No. 86897306 was filed on February 4, 2016 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleges a bona fide intent to use the mark in
commerce.
Opposition No. 91233086
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used the mark “consistently and continuously in interstate commerce”; and that his
mark is “entitled 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:
Paragraph 3: The Opposer has a pending United States Patent and
Trademark Office (USPTO) application (serial number 8713963) for the
mark “Nurture with Nature.”4

Response: Applicant admits the allegations contained in paragraph 3 in
that there is an application serial number 87139613 for the mark
NURTURE WITH NATURE. Applicant denies that [sic] validity of any
such application.5

The answer also contains several affirmative defenses, including that the asserted

2 1 TTABVUE 3 (paragraphs 1, 2).
3 Id., at 4, 6 (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 6 (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 1 TTABVUE 4 (paragraph 3).
5 4 TTABVUE 2 (paragraph 3).
Opposition No. 91233086
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trademark application is “void ab initio.”6
Both parties filed briefs.
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. Applicant
objected to the evidence submitted by Opposer on brief as untimely submitted.
Applicant further objected to Opposer’s references to his application file, which is not
of record. Finally, Applicant moved to strike all of Opposer’s references to such
documents.
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
approved by the Board, or upon motion granted by the Board, or by order
of the Board.

6 4 TTABVUE 5.
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. 91233086
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The Institution Order in this case mandates that “Plaintiff’s 30-day Trial Period
Ends” on February 1, 2018. 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.
Applicant’s objection is thus sustained. We give no consideration to the documents
attached to Opposer’s brief, or otherwise referenced by him, as they are not properly
of record. Furthermore, although “[t]he file of . . . the application against which a
notice of opposition is filed . . . forms part of the record of the proceeding without any
action by the parties,” Trademark Rule 2.122(b)(1) (emphasis added), the notice of
opposition in this proceeding was filed “against” Applicant’s application, not
Opposer’s. To the extent Opposer wished to rely on his own application, that
application should have been submitted into the record pursuant to the applicable
rules. As for Applicant’s motion to strike, we disregard Opposer’s arguments to the
extent they rely on evidence which is not in the 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. Id., Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-28 (Fed. Cir.
Opposition No. 91233086
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1999).
Applicant argues that Opposer has not established his standing in this proceeding.
As Applicant notes, neither party submitted any evidence or testimony. Applicant
further acknowledges that “Applicant carefully noted its admission of the existence
of the pleaded mark while not conceding to Opposer’s ownership.”8 In this regard, we
consider the wording of Applicant’s answer, which states:
Applicant admits the allegations contained in paragraph 3 in that there
is an application serial number 8713963 for the mark NURTURE WITH
NATURE. Applicant denies that [sic] validity of any such application.9

Even if we were to construe Applicant’s answer as admitting Opposer’s ownership
of the application, Applicant expressly denied the validity of the application. Thus
there is no admission on standing. Furthermore, Opposer’s application, filed on
August 16, 2016, has a constructive use date after Applicant’s filing date of February
4, 2016. There is no admission by Applicant as to Opposer’s priority, and neither is
there any evidence or testimony thereof. Thus, Opposer has failed to prove either his
standing or his priority in this proceeding. 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.

8 7 TTABVUE 16.
9 4 TTABVUE 2 (paragraph 3).