No. 91201431 (T.T.A.B. Feb. 24, 2014)

M.S.B.H. Alliance, LLCv.Kabbalah Centre International, Inc.

Trademark Trial and Appeal BoardFeb 24, 2014

No. 91201431 (T.T.A.B. Feb. 24, 2014)

Goodman Mailed: February 24, 2014 Opposition No. 91201431 M.S.B.H. Alliance, LLC v. Kabbalah Centre International, Inc. Before Taylor, Bergsman, and Kuczma, Administrative Trademark Judges. By the Board: As background, on July 29, 2013, we found no genuine dispute that the involved mark was generic and that opposer appeared to be entitled to summary judgment in its favor on that issue. However, we also found that in order to prevail in this proceeding opposer must establish not only a valid ground for opposition, but that it has standing to oppose. As opposer failed to provide evidence of standing in its motion, we allowed opposer time to submit such evidence and to explain why it is entitled to summary judgment on that issue, and for applicant to file a response and evidence thereto. On August 27, 2013, opposer filed a paper and supporting declaration, and applicant filed a response. In UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91201431 2 addition, opposer filed, on October 7, 2013, another paper which we construe as a reply, and applicant filed, on October 16, 2013, an objection and further response, which we construe as an objection and improper sur-reply.1 We turn first to applicant’s objection to opposer’s filing of October 7, 2013. Applicant argues that this filing is improper as the Board’s order of July 29, 2013 did not provide for the submission of a reply. We agree that the order of July 29, 2013, did not provide for a reply, and therefore, the October 7, 2013 filing has not been considered. The Board also has not considered the remaining portion of applicant’s October 16, 2013 filing which is an improper sur-reply. With regard to the ultimate issue of standing, the moving party on summary judgment has the burden of establishing the absence of any genuine dispute of material fact and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(a). All reasonable inferences must be viewed in the light most favorable to the non- 1 We note that opposer’s August 27, 2013 and October 7, 2013 filings fail to follow the Board’s form and format requirements as both of these filings are in the form of a letter, are single spaced, and lack the proper heading for papers filed with the Board. TBMP Sections 106.01 and 106.03 (3d ed. rev.2 2013). Similarly, applicant’s filing of October 16, 2013, is also in an improper letter format. Any further correspondence from either party should adhere to Board format requirements. Opposition No. 91201431 3 moving party. See Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). Opposer argues that the declaration of Barry Mellinger, founder of opposer, establishes opposer’s standing. Mr. Mellinger avers that he designs and sells diamond rings and pendants which merge “Kaballistic teachings” with jewelry designs and that he has used “Kaballah red string” to describe the diamond pendants that hang on a red string. Mr. Mellinger avers that he uses “Kaballah red string” in the packaging of his jewelry and the “chest that houses the pendant” where the “parchment scroll bound by a Kaballah red string describes the unique characteristics of the diamond.” Mr. Mellinger further avers that he intends to expand his use of “Kaballah red string” by introducing other diamond designs on a red string and that to refer to these pendants as a “Kaballah red string” in advertising “is essential.” In response, applicant argues that the declaration testimony of Mr. Mellinger alone is insufficient without supporting evidence of use in connection with the term Kaballah red string. Applicant points to opposer’s Kaballah red string trademark applications for which no statement of use has yet to be filed and submits that opposer’s evidence of standing is insufficient as opposer Opposition No. 91201431 4 has provided no evidence of designs using a red string or an attempt to use designs with a red string in the last five years.2 To establish its standing to assert a mere descriptiveness or genericness ground, “a plaintiff need only show that it is engaged in the manufacture or sale of the same or related goods as those listed in the defendant's involved application or registration and that the product in question is one which could be produced in the normal expansion of plaintiff's business; that is, that plaintiff has a real interest in the proceeding because it is one who has a present or prospective right to use the term descriptively [or generically] in its business.” Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003, 1010 (TTAB 1984). “All that is necessary is that petitioner be in a position to have a right to use” the mark in question. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §20:50 (2014). 2 This argument is unsupported by any evidence. The only evidence submitted by applicant is a declaration of its counsel accompanied by two letters as exhibits that relate to applicant’s attempts at settlement and its argument that this opposition is brought by opposer for the purposes of harassment and to “pressure Applicant into paying money to Opposer.” To the extent that applicant had doubts about opposer's intentions to use “Kaballah red string,” it could have sought leave to take discovery or to cross-examine Mr. Mellinger regarding the contents of his Declaration but chose not to do so. Opposition No. 91201431 5 Testimony of a party alone is sufficient to establish standing. Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112 (TTAB 2009)(testimony sufficient to support standing); Panda Travel Inc. v. Resort Option Enterprises Inc., 94 USPQ2d 1789 (TTAB 2009)(testimony sufficient to support standing). Having carefully considered the arguments and evidence submitted by the parties, we find that there is no genuine dispute of material fact that opposer has standing to oppose. In this case, Mr. Mellinger’s Declaration testimony establishes that opposer presently uses Kaballah red string in the packaging of its jewelry, pendants and rings, and intends to market diamond pendants on a red string and refer to them in advertising as Kaballah red string. This testimony is sufficient to establish that opposer is not a mere intermeddler; opposer is engaged in the manufacture and sale of related goods to applicant’s involved application goods (red string bracelets) and has both a present and prospective right to use Kaballah red string descriptively in its business.3 See Board’s order dated 3 While Mr. Mellinger’s Declaration contains testimony in the first person, it is clear that the Declaration was intended to serve as sworn testimony attesting to the facts stated in the Notice of Opposition concerning opposer’s design and intention to Opposition No. 91201431 6 July 29, 2013 (finding the term “Kaballah red string” generic for a string tied around the wrist to use as a bracelet). Accordingly, there is no genuine dispute of material fact with regard to opposer’s standing. In view thereof, summary judgment is granted with respect to standing. Summary judgment already having been granted on the ground of genericness by the Board’s order dated July 29, 2013, judgment is hereby entered against applicant, the opposition is sustained, and registration to applicant is refused. sell diamond jewelry utilizing red string marketed as “Kabbalah Red Strings.” Decl Para. 3.