James Barnardv.Mandal Wear, LLC

Trademark Trial and Appeal Board

Jun 16, 2021

91252489 (T.T.A.B. Jun. 16, 2021)

Mailed: June 16, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

James Barnard

v.

Mandala Wear, LLC
_____

Opposition No. 91252489
_____

Michael Harris of SoCal IP Law Group LLP,
for James Barnard.

Karen Kreider Gaunt of Dinsmore & Shohl LLP,
for Mandala Wear, LLC.
_____

Before Bergsman, Wolfson, and Greenbaum,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Applicant, Mandala Wear, LLC, seeks registration on the Principal Register of the
standard character mark MANDALAEVERYWEAR for “marketing consulting
services for charitable and non-profit entities; marketing consulting, namely,
designing promotional and marketing campaigns for charitable and for non-profit
entities; retail and online store services featuring co-branded apparel, sportswear,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91252489
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sporting good accessories, and promotional goods; providing a searchable website
featuring the goods and services of other vendors and of third party charitable and
non-profit entities,” in International Class 35.1
James Barnard (“Opposer”) opposes registration of Applicant’s mark, alleging that
he filed an application for the MANDALA mark (in standard characters) that has
been refused registration because of potential likelihood of confusion with Applicant’s
mark;2 that he has priority of use of the mark MANDALA (use alleged since October
2018); and that there is a likelihood of confusion under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d) between his mark and Applicant’s mark. 1 TTABVUE 5.3
Opposer did not specifically plead use of MANDALA with respect to specific goods or
services, but referred to his application, which was filed for:
Brand concept and brand development services for
corporate and individual clients; Brand evaluation
services; Brand positioning services; Branding services,
namely, consulting, development, management and
marketing of brands for businesses and/or individuals;
Business consultation services, namely, business process
improvement and enterprise architecture design; Business
development services, namely, providing start-up support
for businesses of others; Business support services,
namely, business consulting to freelancers, start-ups,
existing businesses and non-profit organizations;

1 Application Serial No. 88357257, filed March 26, 2019, based on Applicant’s allegation of a
bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b).
2 Serial No. 88503503, filed July 8, 2019, claiming first use and use in commerce of October
2018.
3 Citations to the opposition record refer to TTABVUE, the Board’s online docketing system.
See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the
number preceding “TTABVUE” corresponds to the docket entry number, and any number(s)
following “TTABVUE” refer to the page number(s) of the docket entry where the cited
materials appear.
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Consulting services in the field of human resources
development, namely, utilizing technology for the
promotion of employee retention, career growth and
increased productivity for employees and employers;
Consulting services in the fields of business management,
human resources, and business organizational design;
Consulting in the field of sales methods, sales
management, and sales improvement; Corporate image
development consultation; Dissemination of advertising,
scheduling and managing of training courses and programs
for others via a global computer network; Incubation
services, namely, providing work space containing
business equipment to freelancers, start-ups, existing
businesses and non-profits; Management consulting and
advisory services in the areas of corporate growth strategy,
innovation and growth processes, organizational
transformation, and talent management and development
strategies; New business venture development and
formation consulting services; Promoting public interest in
education, recognition, career advancement, and
leadership for elite managers and executives in
corporations and professional service firms; Providing
consulting services in the field of facilitating the planning,
buying, and selling of media; Providing consumer news and
information in the field of educational products and
services that help individuals and businesses make and
save money; Turnkey retail start-up services, namely,
coordination and assumption of responsibility for all
aspects of the store-opening process of others; Management
services, namely, on-line business development services,
namely, providing start-up support for businesses of
others,
in International Class 35. The application includes the following translation
statement: “The English translation of mandala in the mark is circle.”
In its answer, Applicant denied the salient allegations in the Notice of Opposition
and asserted that Opposer failed to state a claim upon which relief can be granted;
that Opposer’s alleged use was not “in interstate commerce;” that Opposer committed
fraud; and further advanced the affirmative defenses of estoppel, unclean hands and
Opposition No. 91252489
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bad faith. Applicant did not pursue any of alleged affirmative defenses at trial; they
are therefore waived and will be given no further consideration.4 See Joel Gott Wines
LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1426 n.3 (TTAB 2013); Miller v.
Miller, 105 USPQ2d 1615, 1616 n.3 (TTAB 2013); Baroness Small Estates Inc. v. Am.
Wine Trade Inc., 104 USPQ2d 1224, 1225 n.2 (TTAB 2012).
I. THE RECORD
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. Only Opposer filed additional
evidence, and only Opposer filed a brief. Opposer ’s evidence consists of the
testimonial deposition of James Barnard and the following accompanying exhibits:
1. Printout from the Trademark Electronic Search System (TESS) of Opposer’s
application for the mark MANDALA, Serial No. 88503502, including a copy of the
September 28, 2019 Office Action suspending Opposer’s application based on
Applicant’s “prior-filed potentially conflicting pending application.” 8 TTABVUE 57;
2. Printout of Opposer’s application Serial No. 88503502 from the USPTO
Trademark Electronic Application System (TEAS Plus), including a copy of the
specimen submitted in that application;
3. Copy of pages from Opposer’s website;

4 Failure to state a claim upon which relief must be granted is not a true affirmative defense
“because it relates to an assertion of the insufficiency of the pleading of opposer’s claim rather
than a statement of a defense to a properly pleaded claim.” John W. Carson Found. v.
Toilets.com, Inc., 94 USPQ2d 1942, 1949 (TTAB 2010). Since Applicant did not file a formal
motion to dismiss, Applicant’s assertion that Opposer failed to state a claim upon which relief
may be granted is considered waived.
Opposition No. 91252489
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4. Printout from the Trademark Electronic Search System (TESS) of Applicant’s
application;
5. Copy of a marketing proposal prepared by Opposer; and
6. Copy of a September 28, 2019 Office Action in Serial No. 88503502.
II. Entitlement to a Statutory Cause of Action
Entitlement to a statutory cause of action5 is a threshold issue in every inter
partes case. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965
F.3d 1370, 2020 USPQ2d 10837, *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static
Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)). A party
in the position of plaintiff may oppose registration of another’s mark where such
opposition is within the zone of interests protected by the statute, 15 U.S.C. § 1063,
and the plaintiff’s reasonable belief in damage is proximately caused by registration
of the defendant’s mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d
11277, *6-7 (Fed. Cir. 2020), cert denied, ___ S.Ct. ___ (2021).
Opposer has established his statutory entitlement to bring this opposition
proceeding based on the suspension of his application on the ground of likelihood of
confusion with Applicant’s application. See Lipton Indus., Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 189 (CCPA (1982) (“To establish a reasonable basis
for a belief that one is damaged by the registration sought to be cancelled, a petition

5 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in
nomenclature, our prior decisions and those of the Federal Circuit interpreting Section 13
and 14 remain applicable. See Spanishtown Enters., Inc. v. Transcend Resources, Inc.,
2020 USPQ2d 11388, *2 (TTAB 2020).
Opposition No. 91252489
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may assert … a rejection of an application during prosecution.”); Fiat Grp. Autos.
S.p.A. v. ISM, Inc., 94 USPQ2d 1111, 1112 (TTAB 2010) (“The filing of opposer’s
application and the Office’s action taken in regard to that application [a
provisional refusal based on the involved application] provides opposer with a basis
for pleading [entitlement to a statutory cause of action].”). Cf. Weatherford/Lamb
Inc. v. C&J Energy Servs. Inc., 96 USPQ2d 1834, 1837 (TTAB 2010) (finding
“standing” in cancellation proceeding based on Office action suspending plaintiff’s
trademark application pending possible refusal based on alleged likelihood of
confusion with defendant’s registration made of record).
III. Likelihood of Confusion
To prevail on the ground of likelihood of confusion under Section 2(d) of the
Lanham Act, based on a previously used mark, it is the opposer’s burden to prove
both priority of use and likelihood of confusion by a preponderance of the evidence.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir.
2000). A party who opposes a registration under Section 2(d) must prove that it has
proprietary rights in the term it relies upon to demonstrate likelihood of confusion as
to source. Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43
(CCPA 1981). A party may establish its own prior proprietary rights in a trademark
through ownership of a registration, through actual use, or through use analogous to
trademark use. T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed.
Cir. 1996), vacating Pactel Teletrac v. T.A.B. Sys., 32 USPQ2d 1668 (TTAB 1994).
Here, because Opposer has not pleaded use analogous to trademark use, or
ownership of any prior registrations, he must rely on his asserted common law rights,
Opposition No. 91252489
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which must precede Applicant’s actual or constructive use of its mark. WeaponX
Performance Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1040-41
(TTAB 2018). Although Applicant did not submit evidence of use, it may rely on
March 26, 2019, as its constructive use priority date. See Syngenta Crop Prot. Inc. v.
Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009) (“applicant may rely without
further proof upon the filing date of its application as a ‘constructive use’ date for
purposes of priority”); Zirco Corp. v. Am. Tel. and Tel. Co., 21 USPQ2d 1542, 1544
(TTAB 1991) (“[T]here can be no doubt but that the right to rely upon the constructive
use date comes into existence with the filing of the intent-to-use application and that
an intent-to-use applicant can rely upon this date in an opposition brought by a third
party asserting common law rights.”). Accordingly, Opposer must show that he used
his mark prior to March 26, 2019.
Section 45 of the Trademark Act, 15 U.S.C. § 1127, reads, in pertinent part, as
follows:
Use in commerce. The term “use in commerce” means the
bona fide use of a mark in the ordinary course of trade, and
not made merely to reserve a right in a mark. For purposes
of this chapter, a mark shall be deemed to be in use in
commerce--

(2) on services when it is used or displayed in the sale or
advertising of services and the services are rendered in
commerce, or the services are rendered in more than one
State or in the United States and a foreign country and the
person rendering the services is engaged in commerce in
connection with the services.
In this regard, Opposer must establish proprietary rights in his pleaded common-
law mark that precede Applicant’s constructive use of its involved mark. See Otto
Opposition No. 91252489
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Roth & Co., 209 USPQ at 43; Exec. Coach Builders, Inc. v. SPV Coach Co., Inc.,
123 USPQ2d 1175, 1180 (TTAB 2017); Larami Corp. v. Talk To Me Programs,
36 USPQ2d 1840, 1845 (TTAB 1995). In other words, because unregistered marks are
not entitled to the presumptions established under Section 7(b)-(c) of the Trademark
Act, 15 U.S.C. 1057(b)-(c), it is Opposer’s burden to demonstrate that he owns a
trademark that was used prior to Applicant ’s constructive use of its mark and not
abandoned. See Exec. Coach Builders, 123 USPQ2d at 1180; Life Zone Inc. v.
Middleman Grp. Inc., 87 USPQ2d 1953, 1959 (TTAB 2008).
Opposer James Barnard testified that he is the founder of “Infinite Synergy
Learning Systems” (Infinite), a “marketing consulting and website design” company
that has been in business since 2005.6 8 TTABVUE 9. “We’ve done some technology
development, software applications, and events. It’s in the creative field, mostly.” Id.
at 10. Barnard attests that Infinite “first started using MANDALA as a trademark,
service mark” in October 2018. Id. at 12. Barnard authenticated the web pages from
his website that he submitted as a specimen to his trademark application in 2019,
and attested that these webpages were “displayed in 2018,” id. at 13, “[were] in
existence at the time [Opposer] filed the trademark application,” id., and “it is still
there.’ Id. at 14.

6 Opposer alleges that Infinite Synergy Learning Systems is his “d/b/a.” Notice of Opposition,
1 TTABVUE 4. Opposer has not submitted evidence supporting the allegation, but Applicant
affirmed Opposer’s use of his d/b/a in Applicant’s Answer: “James Barnard, dba Infinite
Synergy Learning Systems (hereinafter “Barnard” or “Opposer”), filed a Notice of Opposition
against the Application on November 22, 2019… .” Answer, 4 TTABVUE 2. We note Opposer
also attests to being the “CEO” of Infinite, but there is nothing in the record to suggest that
Infinite is anything other than an informal trade name of Barnard’s, and has no independent
corporate status.
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Mr. Barnard also authenticated Exhibit 5 as “a proposal to a prospect
presentation” that was created in October 2018. Id. at 15. A copy of select slides from
the proposal is reproduced below:7

7 8 TTABVUE 42-55.
Opposition No. 91252489
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The specimen of use that was submitted with Opposer’s trademark application is
reproduced below:8

8 Id. at 31-33.
Opposition No. 91252489
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The webpages and specimen of use support Opposer’s advertising his mark for
“Brand concept and brand development services for corporate and individual clients;
Brand evaluation services; Brand positioning services; Branding services, namely,
Opposition No. 91252489
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consulting, development, management and marketing of brands for businesses and/or
individuals.” However, they do not prove that Opposer has rendered these services.
Barnard’s averments regarding his specimen and website uses relate only to the
offering of Opposer’s services, but not to the rendering of those services. As explained
above, to be considered use in commerce, not only must the mark be used or displayed
in the sale or advertising of the services, the services must be actually rendered.
Opposer never affirmatively asserted that he has rendered brand concept or brand
development services to any customer under the MANDALA mark. Thus, Opposer
has not submitted either a statement of facts set forth in detail in an affidavit by a
knowledgeable affiant (see Octocom Sys., Inc. v. Houston Comput. Servs., Inc., 918
F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990) (internal citation omitted)) or any
additional evidence to demonstrate that Opposer ever rendered his identified services
in commerce.
In view of the foregoing, we find that Opposer has failed to establish a date of
priority before Applicant’s constructive use date, an essential element of any claim
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Accordingly, we need
not reach the issue of likelihood of confusion, because without proof of priority,
Opposer cannot prevail. See Exec. Coach Builders, 123 USPQ2d at 1199.
Decision: We dismiss the opposition.