My My Star, Inc.v.MobileSoft Technology, Inc.

Trademark Trial and Appeal Board

Sep 13, 2019

91236066 (T.T.A.B. Sep. 13, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 13, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

My My Star, Inc.

v.

MobileSoft Technology, Inc.
_____

Opposition No. 91236066
(Applications Serial Nos. 87184374 and 87309628)
_____

Omid E. Khalifeh, Ariana Santoro and Lara A. Peterson of Omni Legal Group PLC
for My My Star, Inc.
Michelle M. Kallenbach, Esq.
for MobileSoft Technology, Inc.
_____

Before Thurmon, Deputy Chief Administrative Trademark Judge,
Mermelstein and Wellington, Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
MobileSoft Technology, Inc. (“Applicant”), has filed applications seeking
registration on the Principal Register of the mark MYMY in standard characters for
various goods and services, including computer software, sound and video
broadcasting, entertainment, and providing downloadable software, in International
Opposition No. 91236066

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Classes 9, 38, 41 and 42;1 and the mark for essentially the same goods
and services in Classes 9, 38 and 41.2
My My Star, Inc. (“Opposer”) opposes registration of the applied-for marks in all
classes on the grounds of dilution and likelihood of confusion.3 Specifically, Opposer
alleges, inter alia, that “[b]eginning at least fifteen (15) years before the filing dates
of the Applications opposed herein, Opposer has continuously used and promoted its
MY MY STAR mark” (Not. of Opposition ¶ 6); that “Opposer relies on its superior
common law trademark rights, which predate the filing dates of the intent to use
Applications by many years” (Id., ¶ 8); that “Applicant’s Marks, as used on the
services identified in the Application, would dilute, or be likely to dilute, the
distinctiveness of Opposer’s Mark” (Id., ¶ 13); and that “Applicant’s Marks so
resemble Opposer’s MY MY STAR mark, in which Opposer owns superior common
law trademark rights, as to be likely, when used on or in connection with the goods
and services identified in the Applications, as to cause confusion, or to cause mistake,
or to deceive consumers and potential consumers within the meaning of Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d).” (Id., ¶ 14).

1 Application Serial No. 87184374 was filed on September 27, 2016 under Section 1(b) of the
Trademark Act (“the Act”), 15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide
intention to use the mark in commerce on or in connection with the identified goods and
services.
2 Application Serial No. 87309628 was filed on January 22, 2017, and is also based on
Applicant’s claim of a bona fide intention to use the mark in commerce on or in connection
with the identified goods and services under Section 1(b) of the Act.
3 1 TTABVUE (Notice of Opposition).
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Applicant’s Answer denies the salient allegations of the Notice of Opposition.
Specifically, Applicant either directly denies the allegations or, with regard to
Opposer’s allegations concerning its putative common law rights in a trademark,
Applicant states that it is “without knowledge or information sufficient to form a
belief as to the truth of the allegations … and thus, denies the same.”4
The parties have briefed this opposition proceeding.
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
Applicant's application files.
In its main trial brief, Opposer states that record not only includes the pleadings
and involved application files, but also “consists of … the United States Patent and
Trademark Office (USPTO) Trademark Search & Document Retrieval (TSDR) and
Trademark Electronic Search System (TESS).”5 With its reply trial brief, Opposer
submitted the declaration of Len Wilson, Opposer’s Chief Executive Officer.6
Opposer’s assertion that the TSDR and TESS electronic databases are of record is
incorrect. See Trademark Rule 2.122; see also Trademark Trial and Appeal Board
Manual of Procedure (TBMP) § 704.07 (June 2019), regarding manner of introducing
official records, including those obtained from USPTO databases. During its assigned
trial periods, Opposer did not submit any records from TESS or TSDR, let alone the

4 See Answer (4 TTABVUE), ¶¶ 6-9.
5 9 TTABVUE 9.
6 11 TTABVUE 23-24.
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entire databases. To the extent that Opposer is contending that the Board can take
judicial notice of any files, whether they be applications, registrations or papers filed
in conjunction therewith, this is also incorrect. See In re House Beer, LLC, 114
USPQ2d 1073, 1075 (TTAB 2015) (Board does not take judicial notice of files of
applications or registrations residing in the USPTO); Edom Labs Inc. v. Lichter, 102
USPQ2d 1546, 1550 (TTAB 2012).
As to Opposer’s submission of the Wilson declaration with its reply brief, this is
clearly improper and the declaration is not considered of record. Testimony by
declaration must be taken and submitted during the assigned testimony period.
Trademark Rule 2.121; see also, TBMP § 703 (“Taking and Introducing Testimony”).
A brief may not be used as a vehicle for the introduction of evidence. TBMP
§ 704.05(b) (“Exhibits and other evidentiary materials attached to a party’s brief on
the case can be given no consideration unless they were properly made of record
during the time for taking testimony.”)
Finally, Opposer attached two exhibits to the Notice of Opposition7 and makes
reference to these materials in its trial brief. The first exhibit (“Exhibit A”) consists
of ten numbered paragraphs describing Opposer’s pleaded common law trademark
and various applications that Opposer purportedly owns. The applications are
identified by their serial numbers, but copies of the applications are not attached. The
second exhibit (“Exhibit B”) is a list of various companies under the caption
“Opposer’s Notable Clients.” Except as provided in Rule 2.122(d)(1) (involving copies

7 1 TTABVUE 13-19.
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of pleaded registrations), exhibits attached to notices of opposition are not evidence
on behalf of the party submitting them; if that party wants to rely on them it must
identify and properly introduce the materials during its assigned testimony period.
Trademark Rule 2.122(c). See also TBMP §§ 317 and 704.05 (“Exhibits to Pleadings”).
Accordingly, the exhibits attached to Notice of Opposition are not considered of
record.
In sum, and as Applicant correctly pointed out in its trial brief,8 the record is
devoid of any properly submitted evidence from the parties and consists solely of the
pleadings and the involved application files.
II. Opposer’s Failure to Prove Standing
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
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

8 10 TTABVUE 8.
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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 its standing and its
claims 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.”).
As discussed supra, Opposer failed to properly introduce any evidence or
testimony. We further find that the pleadings, with a particular emphasis on
Applicant’s Answer and any admissions made therein, does not overcome Opposer's
failure to provide any evidence regarding its standing, let alone the merits of grounds
for opposition or even that Opposer has common law rights in a trademark. TBMP §
704.06(a) (“statements in pleadings may have evidentiary value as admissions
against interest by the party that made them”). To be clear, we have carefully
reviewed the pleadings and there are no allegations to which Applicant has admitted
that can be construed as conferring standing upon Opposer.
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Because Opposer has not demonstrated with evidence that it has a “real interest,”
i.e., a “direct and personal stake” in the outcome of the proceeding or that Opposer is
more than a “mere intermeddler,” it has failed to prove its standing to oppose
registration of Applicant’s marks. Empresa Cubana, 111 USPQ2d at 1062; Ritchie v.
Simpson, 50 USPQ2d at 1026. See generally TBMP § 309.03(b). Accordingly, we
dismiss Opposer's claims on this basis.9 See Lumiere Prods., Inc. v. Int’l Tel. & Tel.
Corp., 227 USPQ 892, 893 (TTAB 1985).
Decision: The opposition is dismissed.

9 We need not and do not discuss or otherwise reach the merits of the asserted claims of
dilution and likelihood of confusion.