El Dorado Park Self Storagev.Marc Yelenich

Trademark Trial and Appeal Board

Jan 18, 2008

No. 91159837 (T.T.A.B. Jan. 18, 2008)

Decision Mailed:
January 18, 2008
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

El Dorado Park Self Storage
v.
Marc Yelenich
_____

Opposition No. 91159837 to application Serial No. 78202724
filed on January 13, 2003
_____

Cleveland R. Williams, Esq. for El Dorado Park Self Storage.

Mark Rogers, Esq. for Marc Yelenich.
______

Before Hohein, Holtzman and Wellington, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Marc Yelenich has filed an application to register the
mark "TOOMUCHSTUFF SELF STORAGE" in standard character form on
the Principal Register for "providing self storage services" in
International Class 39.1
El Dorado Park Self Storage has opposed registration on
the ground that "well prior to" the filing date of applicant's
application, opposer "has promoted ... self-storage services in

1 Ser. No. 78202724, filed on January 13, 2003, which is based on an
allegation of a bona fide intention to use such mark in commerce. The
words "SELF STORAGE" are disclaimed.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Opposition No. 91159837
2
the United States under the mark 'TOO MUCH STUFF?'"; that "[a]s a
result of OPPOSER'S promotional efforts and commercial success,
OPPOSER'S 'TOO MUCH STUFF?' mark has achieved such widespread
public recognition that it has become well known and associated
with OPPOSER'S self storage facilities and services"; that, in
particular, opposer "has used the mark 'TOO MUCH STUFF?' in the
United States since at least November, 1998"; and that "[i]n view
of the similarity of the parties' marks and the identical and/or
closely related nature of the parties['] services, applicant's
mark 'TOOMUCHSTUFF SELF STORAGE' is likely to cause confusion ...
with OPPOSER'S mark 'TOOMUCHSTUFF?'."2
Applicant, in his answer, has denied the salient
allegations of the opposition.
While neither party took testimony, at a minimum the
record consists of the pleadings, the file of the involved
application and a notice of reliance timely filed by applicant
during his assigned testimony period on "copies of pages from the
February 2004 SBC telephone directory for Little Rock and North
Little Rock, Arkansas."3 Although opposer, as its intended case-

2 Although opposer also has pleaded and respectively attached, as
Exhibits A through D, copies of "a testimonial letter of Mr. Mark L.
BIXBY," "a website advertising 'TOOMUCHSTUFF?' that was created on or
before October 25, 1999," "a marketing Brochure that has advertised
the mark 'TOOMUCHSTUFF?' since on or before April 30, 1999" and "a
telephone book advertisement of OPPOSER'S mark [in use] since on or
before January 26, 1999," Trademark Rule 2.122(c) provides that,
except in a situation not pertinent herein, any "exhibit attached to a
pleading is not evidence on behalf of the party to whose pleading the
exhibit is attached unless identified and introduced in evidence as an
exhibit during the period for the taking of testimony."

3 Applicant states in his notice of reliance that such pages "are
relevant to show that Opposer's alleged mark does not function as a
trademark and ... that Opposer has no proprietary rights in the words
or question 'TOO MUCH STUFF?'."
Opposition No. 91159837
3
in-chief, submitted by mail on the last day of its assigned
initial testimony period a notice of reliance on what it
characterizes as various "official records and things that
establish the date of use of Opposer's mark prior to the filing
date of applicant's [application for his] mark,"4 such notice--
although bearing a so-called certificate of mailing--was not
actually received by the U.S. Patent and Trademark Office until
three days after opposer's initial testimony period had closed.

4
In addition to providing that "[t]he notice of reliance shall be
filed during the testimony period of the party that files the notice,"
Trademark Rule 2.122(e) states in relevant part that: "Printed
publications, such as books and periodicals, available to the general
public in libraries or of general circulation among members of the
public or that segment of the public which is relevant under an issue
in a proceeding, and official records, if the publication or official
record is competent evidence and relevant to an issue, may be
introduced in evidence by filing a notice of reliance on the material
being offered." However, as pointed out in TBMP §704.07 (2d ed. rev.
2004) (footnotes omitted): "The term 'official records' as used in
... [Trademark Rule] 2.122(e) refers not to a party's company business
records, but rather to the records of public offices or agencies, or
records kept in the performance of duty by a public officer. These
official records are considered self-authenticating, and as such,
require no extrinsic evidence of authenticity as a condition to
admissibility." Thus, the copies of various business records of
opposer attached to its notice of reliance are not proper subject
matter for such a notice. Similarly, with respect to Internet
evidence, it is stated in TBMP §704.08 (2d ed. rev. 2004) (footnotes
omitted) that: "The element of self-authentication cannot be presumed
to be capable of being satisfied by information obtained and printed
out from the Internet. Internet postings are transitory in nature as
they may be modified or deleted at any time without notice and thus
are not 'subject to the safeguard that the party against whom the
evidence is offered is readily able to corroborate or refute the
authenticity of what is proffered.' For this reason, Internet
printouts cannot be considered the equivalent of printouts from a
NEXIS search where printouts are the electronic equivalents of the
printed publications and permanent sources for the publications are
identified." Therefore, the copies of opposer's purported former and
current webpages are not proper subject matter for its notice of
reliance. In consequence of the above, the only attachment which even
arguably constitutes proper subject matter for opposer's notice of
reliance, and hence may be considered of record if the notice of
reliance is deemed to have been timely filed, is the copy of what
seems to be a telephone directory advertisement for opposer's self-
storage services.

Opposition No. 91159837
4
Applicant, however, has filed uncontested motions to
strike opposer's notice of reliance and for entry of judgment in
his favor dismissing the opposition for failure of opposer to
take testimony or otherwise offer any proper evidence in support
of its claim of priority of use and likelihood of confusion.
Opposer, in the meantime,5 filed its main brief on the case,6
along with a reply brief pointing out, inter alia, that applicant
has not submitted a brief on the case.7
Turning, therefore, to applicant's motions to strike
and for judgment, applicant maintains that opposer's notice of
reliance was not timely filed and, inasmuch as such notice
consequently should be stricken, the opposition should be
dismissed because of the failure of opposer to offer any proof in

5 Rather than otherwise suspending proceedings pending disposition of
applicant's potentially dispositive motion for judgment, the Board
improvidently allowed trial and briefing dates to continue to run and
subsequently issued a show cause order to opposer under Trademark Rule
2.128(a)(3). In reply, opposer filed an uncontested motion to reopen
the time to file its main brief, as well as copies of such brief, and
the Board granted such motion as conceded, even though the certificate
of service sets forth applicant's counsel's former rather than current
address. As a result, the order to show cause was considered
discharged and due dates for filing remaining briefs were reset,
notwithstanding the pendency of applicant's motions to strike and for
judgment. Nothing further, however, has been heard from applicant.

6
Nonetheless, suffice it to say that as set forth in TBMP §704.06(b)
(2d ed. rev. 2004): "Factual statements made in a party's brief on
the case can be given no consideration unless they are supported by
evidence properly introduced at trial." Moreover, as stated in TBMP
§704.05(b) (2d ed. rev. 2004): "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."

7
Contrary to opposer's assertion therein that "[i]t is Plaintiff's
contention that Defendant has conceded this case by failing to file a
Brief," it is pointed out that as set forth in TBMP §801.02(b) (2d ed.
rev. 2004): "The filing of a brief on the case is optional, not
mandatory, for a party in the position of defendant." In addition, it
is noted that the accompanying declaration of A. Terrance Dickens is
untimely and thus forms no part of the record in this proceeding.
Opposition No. 91159837
5
support of its pleaded claim. Specifically, applicant correctly
notes that, as rescheduled, opposer's initial testimony period
closed on April 8, 2005, but the notice of reliance, which is the
sole evidence submitted by opposer, was not actually received
until April 11, 2005. Applicant contends that the mailing
certificate which accompanies the notice of reliance and which is
dated April 8, 2005, that is, the final day of opposer's initial
testimony period, is invalid and of no legal effect because it
sets forth an incorrect mailing address. In particular, although
bearing the title "CERTIFICATE OF MAILING" and signed by counsel
for opposer, applicant accurately notes that such certificate
states in pertinent part that: "I hereby certify that this
correspondence is being deposited with the United States Postal
Service with sufficient postage as first class mail in an
envelope addressed to: Assistant Commissioner for Trademarks,
2900 Crystal Drive, Arlington, Virginia 22202-3513 on 04-08-05."
Applicant, in support of his position, correctly
asserts in relevant part, however, that:
5. Trademark Rule 2.197 provides that
correspondence will be considered timely
filed if it is mailed ... prior to expiration
of the set period of time by being
"[a]ddressed as set out in [37 C.F.R.] §2.190
and deposited with the U.S. Postal Service
with sufficient postage as first class mail
...." [Trademark] Rule 2.197 also provides
that "[t]he actual date of receipt will be
used for all other purposes."

6. According to a final rule effective
November 1, 2004, Trademark Rule 2.190 was
amended to call for the use of the following
address: Commissioner for Trademarks, P.O.
Box 1451, Alexandria, VA 22313-1451.

Opposition No. 91159837
6

7. According to a notice published in
the March 29, 2005 Official Gazette,
effective April 4, 2005:

Correspondence in trademark-related
matters, except documents sent to the
Assignment Services Division for
recordation, requests for copies of
trademark documents, and documents
directed to the Madrid Processing Unit,
must be addressed to:

Commission for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451

(emphasis added).

8. MPEP [sic, should be TMEP] Section
305.02(h) states that[:] "The requirements
of 37 C.F.R. §2.197 are strictly enforced,
and the USPTO denies petitions to consider a
document timely filed as of the date on the
certificate if a party fails to comply with
these requirements."

In view thereof, applicant insists that "the notice of reliance
was not addressed as set out in ... [Trademark Rule] 2.190"; that
"[p]ursuant to Trademark Rule 2.197, Opposer is not entitled to
rely upon the April 8, 2005 date of deposit of the notice of
reliance with the United States Postal Service as its filing
date" [thereof]; and that "[i]nstead, the later actual date of
receipt must be used, making the attempted filing of the notice
of reliance untimely." Applicant accordingly urges that because
opposer "took no testimony and offered no evidence before
expiration of Opposer's time for taking testimony, [the notice of
reliance should be stricken as untimely] and Opposer's opposition
should be dismissed under ... [Trademark Rule] 2.132."
Opposition No. 91159837
7
We are constrained to agree with applicant that
opposer's notice of reliance is untimely for the reasons advanced
by applicant. Irrespective thereof, Trademark Rule 2.127(a)
specifies in relevant part that "[w]hen a party fails to file a
brief in response to a motion, the Board may treat the motion as
conceded." Moreover, with respect to applicant's motion for
judgment, Trademark Rule 2.132(a) provides, inter alia, that:
If the time for taking testimony by any
party in the position of plaintiff has
expired and that party has not taken
testimony or offered any other evidence, any
party in the position of defendant may,
without waiving the right to offer evidence
in the event the motion is denied, move for
dismissal on the ground of the failure of the
plaintiff to prosecute. The party in the
position of plaintiff shall have fifteen days
from the date of service of the motion to
show cause why judgment should not be
rendered against him. In the absence of a
showing of good and sufficient cause,
judgment may be rendered against the party in
the position of plaintiff. ....

Furthermore, although applicant filed such a motion with just one
day left in his assigned testimony period, Trademark Rule
2.132(c) provides that while "[a] motion filed under paragraph
(a) ... must be filed before the opening of the testimony period
of the moving party, ... the ... Board may in its discretion
grant a motion under paragraph (a) even if the motion was filed
after the opening of the testimony period of the moving party."
Inasmuch as applicant's motion to strike is not only
uncontested but, in any event, is well taken, such motion is
granted and opposer's notice of reliance is hereby stricken from
the record. Since, in view thereof, the record contains no
evidence in support of opposer's case, applicant's motion for
Opposition No. 91159837
8
judgment, which likewise is not only uncontested but, in any
event, is also well taken, is granted and the opposition is
dismissed.
Nevertheless, even if opposer could be permitted to
amend the mailing certificate accompanying its notice of reliance
so as to state the correct mailing address thereon or if its
initial testimony period could be reopened upon a showing of
excusable neglect until April 11, 2005 so as to make its notice
of reliance timely filed, it is pointed out for the sake of
completeness that opposer would still fail to meet its burden of
proof in this proceeding. Specifically, as noted earlier, the
sole evidence which constitutes proper subject matter for its
notice of reliance is the following advertisement, which bears a
copyright date of 2002 and appears to be taken from a telephone
directory listing for opposer's self-storage services:

Opposition No. 91159837
9
Such advertisement, on its face, fails to show,
however, that as displayed the term "Too Much Stuff?" functions
as a service mark which would be perceived by purchasers and
prospective customers of opposer's services as identifying and
distinguishing its alleged self-storage services. Instead, as
used therein, such term appears simply to ask consumers the
rhetorical question of whether they have accumulated "too much
stuff" and hence would need to rent space for their "stuff" in
self-storage facilities of the kind offered under the mark and
the associated logo "EL DORADO PARK SELF STORAGE." Applicant, by
its notice of reliance, has made of record numerous examples of
telephone directory advertising which show on their face that it
is not unusual or uncommon for such advertising to feature, as
part of the advertising message or copy, rhetorical or other
questions, of which none appear to also function as trademarks or
service marks for the goods or services being advertised.
Consumers viewing the single example furnished by opposer
likewise would regard the words "Too Much Stuff?" as a question
rather than as a service mark. Such example, in short, fails to
plainly show that the words "Too Much Stuff?" function as a
service mark anymore that do such terms as, for instance, "WOW!"
or "Temperature Controlled Environment," which also appear
prominently in the advertisement upon which opposer seeks to rely
to establish its right to relief in this proceeding. Thus, even
if, as the 2002 copyright date would seem to indicate, the
telephone directory advertisement furnished by opposer with its
notice of reliance was in actual use prior to the January 13,
Opposition No. 91159837
10
2003 filing date of applicant's application, and which is the
earliest date upon which applicant can rely in this proceeding,8
opposer has not demonstrated that it possesses proprietary
service mark rights in its pleaded mark "TOO MUCH STUFF?" for the
purpose of there being a likelihood of confusion with applicant's
"TOOMUCHSTUFF SELF STORAGE" mark.
Accordingly, even if its notice of reliance were deemed
or otherwise regarded as being timely filed, it would still be
the case that because opposer, as the party bearing the burden of
proof in this proceeding,9 failed on this record to establish

8 Because applicant has neither taken testimony nor otherwise submitted
any proof that he has commenced use of his mark, the earliest date
upon which applicant is entitled to rely in this proceeding for
purposes of priority is the filing date of the involved application.
See, e.g., Lone Star Mfg. Co., Inc. v. Bill Beasley, Inc., 498 F.2d
906, 182 USPQ 368, 369 (CCPA 1974); Columbia Steel Tank Co. v. Union
Tank & Supply Co., 277 F.2d 192, 125 USPQ 406, 407 (CCPA 1960); Zirco
Corp. v. American Telephone & Telegraph Co., 21 USPQ2d 1542, 1544
(TTAB 1991); and Miss Universe, Inc. v. Drost, 189 USPQ 212, 213 (TTAB
1975).

9 It is settled that opposer, as the plaintiff herein, bears the burden
of proof with respect to its claim of priority of use and likelihood
of confusion. See, e.g., Bose Corp. v. QSC Audio Products Inc., 293
F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002) ["[t]he burden of
proof rests with the opposer ... to produce sufficient evidence to
support the ultimate conclusion of [priority of use] and likelihood of
confusion"]; Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 57
USPQ2d 1720, 1722 (Fed. Cir. 2001) ["[i]n opposition proceedings, the
opposer bears the burden of establishing that the applicant does not
have the right to register its mark"]; Champagne Louis Roederer S.A.
v. Delicato Vineyards, 143 F.3d 1373, 47 USPQ2d 1459, 1464 (Fed. Cir.
1998) (Michel, J. concurring); Sanyo Watch Co., Inc. v. Sanyo Elec.
Co., Ltd., 691 F.2d 1019, 215 USPQ 833, 834 (Fed. Cir. 1982) ["[a]s
the opposer in this proceeding, appellant bears the burden of proof
which encompasses not only the ultimate burden of persuasion, but also
the obligation of going forward with sufficient proof of the material
allegations of the Notice of Opposition, which, if not countered,
negates appellee's right to a registration"]; and Clinton Detergent
Co. v. Proctor & Gamble Co., 302 F.2d 745, 133 USPQ 520, 522 (CCPA
1962) ["[o]pposer ... has the burden of proof to establish that
applicant does not have the right to register its mark"]. It remains
opposer's obligation to satisfy its burden of proof, notwithstanding
that applicant did not file a brief on the case.

Opposition No. 91159837
11
that there is a likelihood of confusion, it could not in any
event prevail on its claim of priority of use and likelihood of
confusion and therefore the opposition must fail.
Decision: The opposition is dismissed.