Emma Lee Petersen and Susan Lynn Aucoin

Trademark Trial and Appeal Board

Jun 19, 2008

No. 92046025 (T.T.A.B. Jun. 19, 2008)

Mailed: June 19, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Berta Hesen-Minten

v.

Emma Lee Petersen and Susan Lynn Aucoin
_____

Cancellation No. 92046025
_____

Julie K. Morriss of Morriss O’Bryant Compagni, P.C. for
Berta Hesen-Minten.

Emma Lee Petersen and Susan Lynn Aucoin, appearing pro se.
______

Before Grendel, Rogers, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Berta Hesen-Minten, an individual, has petitioned to
cancel a registration owned by Emma Lee Petersen and Susan
Lynn Aucoin, individuals and joint-owners, for the mark
THREAD BEARS (“BEARS” disclaimed) covering “dolls and soft
sculpture figures made of textiles” in International Class
28.1 The registration issued based on a claim of acquired

1 Registration 2146208 issued on March 24, 1998 to Our Secrets,
Ltd., a New Mexico corporation. An assignment of the
registration to Emma Lee Petersen and Susan Lynn Aucoin was
recorded with the USPTO on April 10, 2003 (recorded at reel 2943,
frame 0326).
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Opposition No. 92046025
2
distinctiveness under Section 2(f) of the Trademark Act.
Petitioner’s ground for cancellation is that respondents’
mark has “always been generic for miniature bears made of
thread” and, “to the extent that the [registered mark] might
have ever been considered other than generic, the
[registered mark] has now become generic through wide, non-
exclusive and unpoliced use of the term “thread bears.”2
In their answer, respondents admitted several
allegations but denied the salient allegations regarding
genericness of the mark. As to the allegations admitted,
respondents admit that petitioner “is a designer and maker
of miniature bears and other animals made out of thread and
similar fiber materials” (Answer, para. 1); that petitioner
“sells her miniature bears made from thread under the mark
ThReAdTeDs (upper and lower case lettering used), which is
the subject of pending [application] Serial No. 78573528,
filed February 23, 2005” (Answer, para. 2); and that
respondents filed a Section 15 declaration for the subject
registration which was not approved by the USPTO, and that
they have not re-filed a Section 15 declaration (Answer,
paras. 7 and 8).

2 Petitioner also states that the registered mark should be
cancelled “under the equitable principles of laches, estoppel and
acquiescence.” The grounds for cancellation in a Board
proceeding are limited solely to those based in the Trademark
Act. See TBMP § 309.03 (2d ed. rev. 2004) and authorities cited
therein. Equitable defenses are not grounds for cancellation.
Opposition No. 92046025
3
The Record
By rule, the record consists of the pleadings and the
file of the registration sought to be cancelled. Petitioner
has filed several notices of reliance in order to introduce
evidence and respondents filed a communication with attached
materials during their testimony period. The timing and
manner in which these submissions were filed requires some
discussion.
On June 6, 2007, the Board issued an order that, inter
alia, denied petitioner’s summary judgment motion as
untimely (it was filed during petitioner’s testimony period)
and rescheduled the remaining five days of petitioner’s main
trial period for June 25-29 of 2007. The first 25 days of
the trial period had previously passed without any apparent
action by petitioner. When the Board issued the June 6
order, petitioner's trial period was not then open and
running. Following issuance of the Board's June 6 order,
but well prior to the opening of its rescheduled testimony
period, petitioner filed four notices of reliance on June 8,
2007.3 Thus, these were prematurely filed outside of
petitioner’s testimony period.
Trademark Rule 2.122(e) requires that notices of
reliance be filed during the filing party’s testimony

3 We note these notices of reliance are, in part, redundant
inasmuch as petitioner identified the same materials or documents
in more than one of the notices of reliance.
Opposition No. 92046025
4
period. In addition, the Board expressly informed the
parties in the June 6 order that “the summary judgment
evidence may not form part of the evidentiary record to be
considered at trial unless it is properly introduced during
the appropriate testimony period. Evidence not obtained and
filed in compliance with the rules of practice governing
inter partes proceedings before the Board will not be
considered.” (Emphasis added here, citations to authorities
were provided in order as well as an address for the USPTO’s
website where the rules are available.) Because petitioner
did not heed our warning and filed the notices of reliance
outside the testimony period, they have not been considered
and the materials identified therein do not form part of the
record.4
Even if we were to consider petitioner’s notices of
reliance as timely filed, we note that nearly all of the
documents and materials identified in these notices of
reliance are not of a type that may be introduced into
evidence by notice of reliance alone. By way of her notices
of reliance, petitioner submitted copies of three affidavits
that were originally filed by petitioner on April 26, 2007
in support of her motion for summary judgment. In each

4 In one notice of reliance, petitioner identified materials from
the subject registration file. These materials are unaffected
because, as noted, the registration file forms part of the record
by rule. Thus, no action by the parties was necessary to make
any of its contents of record. Rule 1.122(e).
Opposition No. 92046025
5
affidavit, the particular affiant identifies various
materials (also submitted with the notice of reliance) that
were collected by the affiant and that, for the most part,
were obtained from websites or other internet postings.
Trademark Rule 2.122(e), 37 CFR §2.122(e), provides
that a party may introduce into evidence through a notice of
reliance “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.” Also, public
records may be introduced through a notice of reliance. On
the other hand, internet evidence such as website printouts,
E-Bay auction website listings, chat room communication
printouts, etc., are not self-authenticating and may not be
introduced into evidence by way of a notice of reliance,
even if identified in a supporting affidavit. TBMP § 704.08
(2d ed. rev. 2004) and authorities cited therein. Rather,
the Board has held that internet evidence may only be
introduced by proper testimony of the individual that
conducted the search for the documents. See authorities
collected in Id.; in particular, see Raccioppi v. Apogee,
Inc., 47 USPQ2d 1368 (TTAB 1998). In addition, declarations
of individuals cannot be introduced by notice of reliance,
in the absence of a stipulation of the parties allowing such
submissions. See Trademark Rule 2.123(b). Testimony of
Opposition No. 92046025
6
individuals otherwise is to be provided through testimony
depositions. Trademark Rule 2.123(a). In view thereof,
even if we were to consider petitioner’s notices of
reliance, the declarations and the associated materials
submitted through these notices have not been properly
submitted into evidence and, accordingly, would not have
been accorded any probative value.
Aside from website materials, petitioner identified the
following materials in her notices of reliance that she
seeks to rely on: a copy of respondents’ response (dated
February 27, 2007) to petitioner’s interrogatories;5 copies
of excerpts from “Teddy Bear and Friends” (dated “December
2004” and “February 2005” on the covers); and a copy of the
file for respondents’ application Serial No. 78553324.
Generally, these types of materials may be introduced by
notice of reliance alone under Trademark Rules 2.120(j)
[interrogatory answers] and 2.122(e) [printed publications
and official records]. However, even if we were to consider
these materials, they have very little probative value in
this proceeding.
First, respondents’ discovery response contains very
little in substance and merely states that they’ve already

5 Petitioner characterizes the response as “respondents’ answers
to petitioner’s interrogatories and requests for production of
documents”; however, the response is a one page letter that only
makes reference to petitioner’s interrogatories with no mention
of document production requests.
Opposition No. 92046025
7
provided the information requested and as to “any
information about Our Secrets, Ltd. business you
[petitioner] will have to contact them about their products
and how they produced them.” The probative value and weight
that we may accord the “Teddy Bear and Friends” publication
evidence is unclear inasmuch as there is no evidence or
testimony as to circulation or availability of this
publication. In addition, there is no statement of
relevance of the article excerpts in the notice of reliance.
As to the file of respondent’s application (which is not the
subject of this proceeding), such applications are
“generally of very limited probative value.” TBMP §
704.03(b)(2) (2d ed. rev. 2004). The truth of any facts
stated within the contents of the file are subject to proof
in this proceeding. For example, to the extent the file
includes a claim of acquired distinctiveness for the
registered mark, the evidence of distinctiveness submitted
to the examining attorney is not evidence in this
proceeding. Likewise, any statements made by the Office
employees regarding registrability are not probative on the
question of registrability. The Board must make its own
findings of fact, and that duty may not be delegated by
adopting the conclusions reached by the Trademark Office
examining operation. In re Sunmarks, Inc., 32 USPQ2d 1470,
Opposition No. 92046025
8
1472 (TTAB 1994); In re BankAmerica Corp., 231 USPQ 873, 876
(TTAB 1986).
During their testimony period, respondents filed a
communication with the Board which begins “[t]his response
is our testimony as to the matter of our trademark...not
being a generic term.” The communication is signed by both
respondents and includes an unsigned certificate of service
indicating a copy of the communication was mailed to
petitioner’s counsel. Attached thereto is a paper titled
“List of Inclosed (sic) Documents” with copies of a variety
of documents.
Respondents’ submission and the exhibits thereto do not
form part of the record. Respondents’ signed statement is
not proper trial testimony. Rule 2.123(a); see also TBMP §
703 (2d ed. rev. 2004) regarding trial testimony in general.
To the extent that respondents’ submission may be considered
a notice of reliance for the documents attached thereto, we
note that, as with petitioner’s notices of reliance, a
majority of the documents are internet printouts or email
communications which have not been properly authenticated.
Accordingly, these documents have not been considered. The
other documents attached thereto are copies from the file of
the subject registration which, as previously stated, are
already of record by rule.
Opposition No. 92046025
9
In view of the above, neither party has properly
introduced any evidence and the record only consists of the
pleadings and file of the subject registration. And, even
if we were to consider petitioner’s notices of reliance as
timely filed, the only additional evidence which would be
allowed into the record by way of these notices of reliance
would be respondents’ response to petitioner’s
interrogatories, the file of respondents’ application Serial
No. 78553324, and several pages from a “Teddy Bear and
Friends” publication.
Only petitioner filed a trial brief.
Burden of Proof
Although respondents did not file a trial brief, we are
cognizant of their position as defendants herein and that
they are not required to file a brief. Their registration
on the Principal Register of the mark THREAD BEARS is prima
facie evidence of the validity of that registration, “and
that includes the presumption that the mark subject thereof
is not .... generic in relation to the goods [or services
listed in the registration]”. Editorial America, S.A. v.
Gruner & Jahr AG & Co., 213 USPQ 498, 504 (TTAB 1982); see
also Coca-Cola Co. v. Overland, Inc. 692 F.2d 1250, 216 USPQ
579, 582 (9th Cir. 1982). Ultimately, it is petitioner who,
as plaintiff, has the burden of establishing by a
preponderance of the evidence her standing and her ground
Opposition No. 92046025
10
for cancellation, namely, that the mark THREAD BEARS is
generic, or that the mark has become generic. Magic Wand
Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir.
1991).
Standing
Based on the previously noted admissions in
respondents’ answer, we find no issue as to petitioner’s
standing to bring this proceeding inasmuch as petitioner is
a potential competitor of respondents in the same market for
the goods identified in the registration. Plyboo America,
Inc. v. Smith & Fong Co., 51 USPQ2d 1633 (TTAB 1999).
Genericness
The critical issue in determining genericness is
whether members of the relevant public primarily use or
understand the designation sought to be registered or that
is already registered to refer to the genus or category of
goods in question. H. Marvin Ginn Corp. v. Int'l
Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ
528, 530 (Fed. Cir. 1986). Making this determination
“involves a two-step inquiry: First, what is the genus of
goods or services at issue? Second, is the term sought to
be registered … understood by the relevant public primarily
to refer to that genus of goods or services?” Marvin Ginn,
supra, 228 USPQ at 530. The correct legal test for
genericness, as set forth in Marvin Ginn, “requires evidence
Opposition No. 92046025
11
of ‘the genus of goods or services at issue’ and the
understanding by the general public that the mark refers
primarily to ‘that genus of goods or services’.” In re
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832,
1836 (Fed. Cir. 1999). That is, do the members of the
relevant public understand or use the term sought to be
protected to refer to the genus of the goods and/or services
in question?
The genus or category of goods involved in this
proceeding is that set forth in the subject registration’s
identification of goods. Magic Wand, supra, 19 USPQ2d at
1552. Again, the goods, as identified in the subject
registration, are “dolls and soft sculpture figures made of
textiles.”
The next question we must address is whether the
relevant purchasers for the registration’s identified goods
would understand THREAD BEARS to refer only to the genus.
“Evidence of purchaser understanding may come from
direct testimony of consumers, consumer surveys, dictionary
listings, as well as newspapers and other publications.”
Magic Wand, supra, 19 USPQ2d at 1553. See also In re Merrill
Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987), and In re Northland
Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963
(Fed. Cir. 1985).
Opposition No. 92046025
12
As already discussed, the record before us is limited
to the pleadings and file of the subject registration. And,
based on this record, we cannot conclude that petitioner has
met her burden in establishing that the relevant purchasers
of respondents’ identified goods would understand THREAD
BEARS as only referring to dolls and soft sculpture figures
made of textiles. Even if we were to deem petitioner’s
notices of reliance as timely filed and consider the limited
evidence that could permissibly be introduced via these
notices of reliance, the additional evidence has such
limited probative value that we would not change our
conclusion.
Unpleaded Claim
In her trial brief, petitioner argues an unpleaded
ground for cancellation, namely, that respondents’
registered mark has not acquired distinctiveness and,
therefore, registration of the mark is unsupportable.
Brief, pp. 16-17. Petitioner may not rely on an unpleaded
claim. See TBMP § 314 (2d ed. rev. 2004) (“Plaintiff’s
pleading must be amended (or deemed amended) pursuant to
Fed. R. Civ. P. 15(a) or (b), to assert the matter.”) In
this proceeding, allowing an amendment (or deeming the
complaint amended) would be pointless in view of the fact
that the subject registration is over five years old. As
such, any allegation that the registered mark has not
Opposition No. 92046025
13
acquired distinctiveness and is merely descriptive is not
available as a ground for cancellation. See Section 14(1)
of the Trademark Act, 15 U.S.C. §1064(1); see also TBMP §
(2d ed. rev. 2004) regarding grounds available for Principal
Register registrations over five years old.
DECISION: Petitioner’s petition for cancellation of
Registration No. 2146208 is denied.