Larry Paletzv.DOXA Group AG

Trademark Trial and Appeal Board

Jan 11, 2019

91224067 (T.T.A.B. Jan. 11, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 11, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Larry Paletz
v.
DOXA Group AG (substituted for Tielsa GmbH)1
_____

Opposition No. 91224067
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Larry Paletz, pro se.

Daniela Fuessel of Fuessel Law, for DOXA Group AG (substituted for Tielsa
GmbH).
_____

Before Bergsman, Greenbaum and Coggins,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
DOXA Group AG (substituted for Tielsa GmbH) (“Applicant”) filed an application
for registration on the Principal Register of the standard character mark TIELSA for
numerous goods and services including electronic apparatus, kitchen and bath

1 TTAB records have been updated to reflect the change in ownership of the International
registration underlying the subject application (see n.2, infra) from Tielsa GmbH to DOXA
Group AG, received from the International Bureau on March 15, 2018, effective February 26,
2018.
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appliances, building products, furniture, computer and Internet services, and medical
services in International Classes 9, 10, 11, 19 and 20, 38 and 44, respectively.2
Larry Paletz (“Opposer”) opposes registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used on or in
connection with Applicant’s goods and services, so resembles Opposer’s previously
used mark TIELSA THE EXCLUSIVE KITCHEN for furniture and accessories
therefor as to be likely to cause confusion.3
Applicant, in its answer, denied the salient allegations in the Amended Notice of
Opposition, including all allegations about Opposer’s ownership and use of the
pleaded mark.4

2 Application Serial No. 79143534 was filed on September 11, 2013 as a request for an
extension of protection of an International registration under Trademark Act Section 66(a),
15 U.S.C. § 1141(f).
3 18 TTABVUE. This is Opposer’s third Amended Notice of Opposition. Opposer filed this
pleading at the Board’s direction, following the Board’s participation in the parties’ discovery
conference and the ensuing April 19, 2016 Board Order (“Discovery Conference Order”).
16 TTABVUE. During the discovery conference, the Board encouraged Opposer to seek
counsel, and repeated this recommendation three times in the Discovery Conference Order.
Id. at 1 n.1, 2 and 13. Referencing Opposer’s second Amended Notice of Opposition, the Board
also explained that “the exhibits attached to the amended notice of opposition have been
given no consideration” because they “are matters for proof, not for pleading,” and they are
not evidence “unless identified and introduced in evidence as an exhibit during the period for
the taking of testimony. Trademark Rule 2.122(c).” Id. at 7-8. The third Amended Notice of
Opposition is the operative pleading. The original and two prior notices of opposition, and
any attachments thereto, have been given no consideration because none of the exhibits were
introduced pursuant to Trademark Rule 2.122(c).
4 19 TTABVUE. The allegations are set forth in paragraphs 2-6 and 8-9 of the third Amended
Notice of Opposition, 18 TTABVUE 5-7.
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I. Background and Evidentiary Issues
Parties may submit testimony and evidence only during assigned times. See
Trademark Rule 2.121(a); 37 C.F.R. § 2.121(a). As last reset in the Discovery
Conference Order, expert disclosures were due by September 22, 2016, discovery
closed on October 22, 2016, Opposer’s pretrial disclosures were due by December 6,
2016, and Opposer’s 30-day trial period ended on January 20, 2017.5
On September 22, 2016, the deadline for expert disclosures but well before
Opposer’s trial period opened, Opposer filed “expert testimony” declarations of a
graphic designer and himself. 20 TTABVUE. We do not consider the “expert
testimony” declarations because they were not submitted during Opposer’s testimony
period and the record does not show that the parties agreed to any other timeline. See
Trademark Rule 2.121(a) (“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.”).
On December 6, 2016, Opposer filed pretrial disclosures. 21 TTABVUE. The Board
advised the parties that the Board will not further consider Opposer’s disclosures
because they were not filed for any reason enumerated in Trademark Rule 2.120(j)(8),

5 16 TTABVUE 12. The Board reset dates based on the rules that were then in effect. New
rules became effective on January 14, 2017, but the changes do not affect the outcome of this
proceeding.
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37 C.F.R. § 2.102(j)(8) (now Trademark Rule 2.120(k)(8), 37 C.F.R. § 2.120(k)(8)). 22
TTABVUE.6
Opposer filed nothing during his trial period, and he missed his deadline for filing
a brief on the case. On September 22, 2017, the Board issued an order directing
Opposer to show cause under Trademark Rule 2.128(a)(3), 37 C.F.R. § 2.128(a)(3),
why his failure to submit a brief should not be treated as a concession of the case.
24 TTABVUE. Opposer responded that he had not lost interest in the case, and that
his failure to file a brief was due to “misunderstanding” the Board’s rules and the
portion from the Discovery Conference Order about Opposer’s disclosures that
instructed Opposer not to file his written disclosures and discovery requests and
responses with the Board (“Opposer understood from this that he should not file a
Brief with the Board, and regrets this misunderstanding.”). 25 TTABVUE 7.
The Board discharged the show cause order “[d]espite Opposer’s scant explanation
and dubious reason for failing to file his brief.” 26 TTABVUE 1. But the Board did
not reopen Opposer’s time to file a brief, explaining that a reopening was neither
warranted nor would it be fruitful, and that “Opposer did not argue, let alone
demonstrate, that his failure to file his brief was the result of excusable neglect.”
26 TTABVUE 2. The Board then reset Applicant’s time to file a brief, and Opposer’s
time to file a reply brief, specifically cautioning Opposer “to confine his reply brief to
addressing only the issues raised in Applicant’s main brief. Opposer should not

6 Although Opposer’s paper copy of this order was returned undeliverable (23 TTABVUE),
Opposer clearly read it, as he directly quotes the order in his response (25 TTABVUE 7) to
the Board’s show cause order (24 TTABVUE), discussed below.
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attempt to utilize the reply brief as a subterfuge to introduce arguments that should
have been raised in his main brief had it been timely filed.” 26 TTABVUE 2 n.2.
Applicant filed a brief, and Opposer filed a reply and an amended reply. We do not
consider any of the documents attached to either party’s brief because they were not
made of record during the assigned testimony periods. See Trademark Rule 2.121(a)
(“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.”).
On December 31, 2018, more than seven months after Opposer filed his amended
reply brief, Opposer filed a document titled “Submission of New Evidence”7 with
several exhibits in German that Opposer asserts show that “Applicant is not using
the ‘Tielsa’ Mark anywhere.” 31 TTABVUE 5. We do not consider this submission
because it is manifestly untimely (and Opposer has not moved or established the
requisite excusable neglect to reopen his testimony period to make the documents of
record),8 and, as the Board explained to Opposer in the Discovery Conference Order,

7 In the Certificate of Service, Opposer refers to this document as his “Response to Board
Notice Dated September 22, 2017.”
8 We also note that the documents are in German with no English translation (despite
Opposer’s assertion to the contrary), and thus would be of limited probative value even if
Opposer had filed them during his assigned trial period. See Swiss Watch Int’l Inc. v. Fed’n
of the Swiss Watch Indus., 101 USPQ2d 1731, 1734 n.8 (TTAB 2012) (noting that printed
publications submitted in a foreign language without translations are of limited probative
value).
With respect to Opposer’s implication that he introduced translations of the German
language documents, see 31 TTABVUE 3 (“Opposer certifies under penalty of perjury of the
laws of the State of California that the translations provided are accurate.”), it is the
responsibility of the party making submissions to the Board via the electronic database to
ensure that the testimony or evidence has, in fact, been properly made of record. See RxD
Media, LLC v. IP Application Dev. LLC, 125 USPQ2d 1801, 1805 n.16 (TTAB 2018); Weider
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Opposer also advances allegations regarding Applicant’s
use of the mark in commerce. However, Opposer is
reminded that unlike applications filed under Section 1, an
Applicant under Section 66(a) is not required to use its
mark in United States commerce (or declare that the mark
is in such use) at any time prior to registration. See
Trademark Act Section 68(a)(3), 15 U.S.C. § 1141(a)(3); cf.
Trademark Act Section 66(a), 15 U.S.C. § 1141(a)
(requiring a declaration of “bona fide intention to use the
mark in commerce”). 16 TTABVUE 4, n.5.
II. Record
The record consists only of the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file of Applicant’s application. Neither party
submitted testimony or a notice of reliance during its assigned trial period. And as
explained above, we have considered none of the documents submitted by either
party.
III. Standing and Priority
Standing is a threshold issue that a plaintiff must prove 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). “The facts regarding standing … are part of [a plaintiff’s] case
and must be affirmatively proved. Accordingly, [plaintiff] is not entitled to standing
solely because of the allegations in its petition.” Lipton Indus., Inc. v. Ralston Purina

Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1350-51 (TTAB 2014); Alcatraz
Media v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1758 n.16 (TTAB 2013) (“the
onus is on the party making the submissions to ensure that, at a minimum, all materials are
clearly readable by the adverse party and the Board”); Hard Rock Cafe Licensing Corp. v.
Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998) (“It is reasonable to assume that it is opposer’s
responsibility to review the documents it submits as evidence to ensure that such
submissions meet certain basic requirements, such as that they are legible and identified as
to source and date.”).
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Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Our primary reviewing court
has enunciated a liberal threshold for determining standing: a plaintiff must
demonstrate that it has a “real interest” in a proceeding beyond that of a mere
intermeddler, and “a reasonable basis for his belief of damage.” Empresa Cubana,
111 USPQ2d at 1062 (quotation omitted). A “real interest” is a “direct and personal
stake” in the outcome of the proceeding. Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023, 1026 (Fed. Cir. 1999).
As plaintiff in this proceeding, Opposer must prove both his standing and his
claim by a preponderance of the evidence. See Bose Corp. v. QSC Audio Prods. Inc.,
293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002) (“The burden of proof rests
with the opposer … to produce sufficient evidence to support the ultimate conclusion
of [priority of use] and likelihood of confusion.”); Sanyo Watch Co. v. Sanyo Elec. Co.,
691 F.2d 1019, 215 USPQ 833, 834 (Fed. Cir. 1982) (“As the opposer in this
proceeding, appellant bears the burden of proof which encompasses not only the
ultimate burden of persuasion, but also the burden 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.”).
Opposer makes many allegations in his third Amended Notice of Opposition about
his purported ownership and use of the mark TIELSA THE EXCLUSIVE KITCHEN.
18 TTABVUE 5-7, ¶¶ 2-6, 8-9. Statements made in a notice of opposition are, unless
admitted, merely allegations, subject to proof at trial. Saul Zaentz Co. v. Bumb, 95
USPQ2d 1723, 1725 n.7 (TTAB 2010). Here, Applicant did not admit any allegations
Opposition No. 91224067
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of Opposer’s ownership or use of the pleaded mark, and Opposer submitted no trial
evidence. Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017, 2020 n.10
(TTAB 2003) (“Although petitioner pleaded ownership of common-law marks in the
petition to cancel, such matters were denied in respondent’s answer, and are
therefore subject to proof. Without such evidence, petitioner can prove neither its
standing nor its substantive claims.”).
Likewise, Opposer makes many unsupported statements in his reply brief about
his purported ownership and use of the pleaded mark. As the Federal Circuit recently
reiterated, “Attorney argument is no substitute for evidence.” Zheng Cai, d/b/a Tai
Chi Green Tea Inc. v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799
(Fed. Cir. 2018) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284
(Fed. Cir. 2005)). This maxim applies equally to arguments from pro se parties like
Opposer. Cf. In re Simulations Publ’ns, Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA
1975) (“Statements in a brief cannot take the place of evidence.”).
In short, as Applicant states in its brief, “Opposer has not presented in the
proceeding and has not proved by evidence that he has trademark rights to the name
‘TIELSA THE EXCLUSIVE KITCHEN,’ in particular that such right [sic] still exists
[sic] at the time of the opposition and today.” 27 TTABVUE 3, ¶ 8.
IV. Conclusion
There is no evidence of record on which Opposer can meet his burden of proving
his standing or his pleaded claim of likelihood of confusion, and Applicant has
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admitted neither Opposer’s standing nor his priority. Without proof of his prior use
of a mark likely to cause confusion, Opposer cannot prevail.
Decision: The opposition is dismissed.