MG Financial, LLCv.Kiran Sureshbhai Shah

Trademark Trial and Appeal Board

Aug 31, 2021

91250316 (T.T.A.B. Aug. 31, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 31, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

MG Financial, LLC
v.
Kiran Sureshbhai Shah
_____

Opposition No. 91250240 (parent)
Opposition No. 91250316
_____

Marina A. Lewis of Lewis Kent LLP
for MG Financial, LLC.

Alexander Lazouski of Lazouski IP LLC
for Kiran Sureshbhai Shah.

_____

Before Cataldo, Bergsman, and English,
Administrative Trademark Judges.

Opinion by English, Administrative Trademark Judge:

Applicant, Kiran Sureshbhai Shah, seeks registration on the Principal Register of
the following stylized marks:
 for “tea, cocoa, sugar, rice, tapioca, sago, flour and bread, pastry
and confectionary, namely, candy, cookies, chocolates, brownies, cakes, fudge,
Opposition Nos. 91250240 (parent) and 91250316

2

toffees, peanut brittle, chocolate truffles, hard boiled fruit-based sweets, nougats;
frozen desserts, namely, flavored shaved ice, flavored freezer pops, Italian ice,
sorbets; honey, treacle; yeast, baking powder, salt, mustard; vinegar; spices”;1 and
 for “tea, cocoa, sugar, rice, tapioca, sago, flour and preparations
made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast,
baking powder; salt, mustard; vinegar, sauces[,] condiments; spices.”2
Opposer, MG Financial, LLC, opposes registration on the ground of likelihood of
confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on
alleged prior use and registration of the mark OLD HARBOR for “coffee.”3 In his
answers, Applicant admits part of paragraph 1 of the notice of oppositions:4
Notice of Opposition, ¶ 1: Opposer MG Financial is the owner of U.S.
Trademark Registration No. 4,976,770 for the mark OLD HARBOR in
standard characters (“Opposer’s Mark”) for “coffee” in International
Class 30. Opposer’s registration was issued by the U.S. Patent and
Trademark Office (the “USPTO”) on June 14, 2016 and asserts a date of
first use in commerce of September 1, 2010.

1 Serial No. 79975456, filed May 9, 2018 under Section 66(a) of the Trademark Act, 15 U.S.C.
§ 1116(a), seeking an extension of protection of his International Reg. No. 1418044, issued
May 9, 2018.
2 Serial No. 79975446, filed March 8, 2018 under Section 66(a) of the Trademark Act seeking
an extension of protection of his International Reg. No. 1410996, issued March 8, 2018.
3 Registration No. 4976770; issued June 14, 2016.
4 Notice of Opp., 1 TTABVUE 3, ¶ 1; Answer, 5 TTABVUE 2, ¶ 1. Unless otherwise noted, we
cite to the record in the parent opposition proceeding (Opposition No. 91250240).
Citations to the record and briefs reference TTABVUE, the Board’s online docket system.
See, e.g., Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476, n.6 (TTAB 2014). Citations to the
prosecution records for the involved applications are to the TSDR system by page number in
the downloadable .pdf versions of the documents.
Opposition Nos. 91250240 (parent) and 91250316

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Answer, ¶ 1: Applicant admits that Opposer is listed as the owner of
the marks [sic] according to the Trademark Status & Document
Retrieval (TSDR) listed in this allegation. Applicant lacks sufficient
information to admit or deny the remaining allegations, and therefore
denies such allegations.

Applicant otherwise denies the salient allegations in the notices of opposition.
For the reasons explained herein, the oppositions are dismissed.
I. The Record
The record consists of the pleadings and the file of Applicant’s involved
applications by operation of Trademark Rule 2.122(b), 37 C.F.R § 2.122(b). In
addition, Opposer introduced by notice of reliance: (1) a copy of the certificate of
registration for pleaded Registration No. 4976770 issued to “MGF, Financial
(Vermont Corporation)”; (2) a copy of an April 17, 2016 assignment conveying to
Opposer “all of [MGF Financial Inc.’s] right, title and interest in and to the
Trademark” OLD HARBOR, recorded August 14, 2019 at Reel/Frame 006720/0539-
42; and (3) screenshots and printouts from third-party websites.5
Applicant did not introduce any evidence. Nor did Applicant file a brief.6
II. Analysis
Opposer bears the burden to prove by a preponderance of the evidence its
entitlement to a statutory cause of action and a ground on which relief may be

5 12 TTABVUE.
6 Because Opposer has the burden of proof, Applicant had no obligation to submit evidence
or a brief, and we do not construe his decision not to do so as a concession of the case.
Trademark Rule 2.128(a)(1), 37 C.F.R. § 2.128(a)(1); Yazhong Investing Ltd. v. Multi-Media
Tech. Ventures, Ltd., 126 USPQ2d 1526, 1531 n.13 (TTAB 2018).
Opposition Nos. 91250240 (parent) and 91250316

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granted. Sterling Jewelers, Inc. v. Romance & Co., 110 USPQ2d 1598, 1062 (TTAB
2014). As stated, Opposer’s likelihood of confusion claims are based on alleged
ownership of pleaded Registration No. 4976770 and prior common law rights in the
mark OLD HARBOR for “coffee.” Opposer, however, has not proven these allegations.
The copy of the certificate of registration for pleaded Registration No. 4976770
and the April 17, 2016 assignment of the registration to Opposer, recorded August
14, 2019, are not sufficient to make Registration No. 4976770 of record in these
consolidated proceedings because these documents do not demonstrate the current
status and title of the registration. Trademark Rule 2.122(d), 37 C.F.R. § 2.122(d);
United Global Media Grp. v. Tseng, 112 USPQ2d 1039, 1041-42 (TTAB 2014)
(explaining the ways in which a pleaded registration may be made of record); Sterling
Jewelers, v. Romance & Co., 110 USPQ2d at 1061 (Trademark Rule 2.122(d) is
“simple and clear”; “The Board has routinely held that the submission of a photocopy
of a pleaded registration, by itself, is insufficient for purposes of establishing a party’s
current ownership, or the current status, of the registration, and therefore does not
suffice to make the registration of record.”).
The partial admission in Applicant’s answers also is insufficient to make the
registration of record. Although Opposer pleaded and Applicant admitted ownership
of Registration No. 4976770 for the mark OLD HARBOR, Opposer did not plead and
Applicant did not admit that the registration is subsisting. United Global Media Grp.
v. Tseng, 112 USPQ2d at 1042 (“[A]pplicant admitted only opposer’s ownership of the
registrations, not the status of the registrations per se, and opposer, though
Opposition Nos. 91250240 (parent) and 91250316

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represented by counsel, did not include allegations relating to the validity of the
registrations it claimed to own.”); see also Sterling Jewelers v. Romance & Co., 110
USPQ2d at 1061-62 (admission that opposer “is listed” as the owner of the
registration not sufficient to make pleaded registration of record).
Because Opposer has not proven the status of the pleaded registration, it may not
rely on it to prove its entitlement to a statutory cause of action or its likelihood of
confusion claims. Opposer also has not proven common law rights in the mark OLD
HARBOR because it did not introduce any evidence regarding its use of the mark.
Accordingly, Opposer has failed to prove its entitlement to a statutory cause of
action or that it is entitled to relief under its asserted claims of likelihood of confusion.
Decision: The oppositions are dismissed.