Otter Products LLCv.BaseOneLabs LLC

Trademark Trial and Appeal Board

Dec 18, 2012

No. 91200510 (T.T.A.B. Dec. 18, 2012)

Mailed: December 18, 2012

Opposition No. 91200510

Otter Products LLC

v.

BaseOneLabs LLC

Before Quinn, Kuczma and Adlin, Administrative Trademark Judges

Opinion by Adlin, Administrative Trademark Judge:

Applicant seeks registration of IMPACTBAND, in standard characters, for
“Cell phone and handheld computing device covers.”1 In its notice of opposition,
opposer alleges prior use of the mark IMPACT SERIES, and ownership of a
Supplemental Register registration for the mark in standard character format for
“Protective cases for interactive, handheld electronic devices, namely, portable
music players, portable video players, phones and computers,”2 and that use of
applicant’s mark would be likely to cause confusion with opposer’s mark. In its
answer, applicant denies the salient allegations in the notice of opposition.

1 Application Serial No. 85205858, filed December 27, 2010, alleging first use
in commerce on September 10, 2010.
2 Supplemental Registration No. 3795187, issued May 25, 2010 with SERIES
disclaimed, from an application filed December 2, 2008 and alleging first use dates
of November 4, 2008 (“Opposer’s Supplemental Register Registration”).

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF THE
T.T.A.B.
Opposition No. 91200510
2
Pursuant to the Board’s order of July 5, 2011, opposer’s testimony period
closed on June 9, 2012. During its testimony period, opposer submitted a notice
of reliance on Opposer’s Supplemental Register Registration, but opposer did not
submit any testimony or introduce any other evidence. This case now comes up
for consideration of applicant’s contested motion for involuntary dismissal under
Trademark Rule 2.132, filed July 6, 2012.
Applicant argues that the opposition should be dismissed with prejudice
“on the ground that upon the law and the facts Opposer has shown no right to
relief.” Specifically, applicant argues that opposer’s only evidence, a status and
title copy of Opposer’s Supplemental Register Registration, is in fact “evidence of
nothing” because registrations on the Supplemental Register are not entitled to
“any statutory presumptions.” Applicant further claims that Opposer’s
Supplemental Register Registration is effectively an admission that opposer’s
mark is merely descriptive, and points out that opposer has not introduced any
evidence of acquired distinctiveness.
Opposer argues, however, that Supplemental Register registrations are
“registered,” and may “preclude later registration on the Principal Register of
confusingly similar marks by others.” Opposer claims that its Supplemental
Register Registration establishes its standing, and that as a result of its
Supplemental Register Registration, “priority is not an issue in this case.”
Opposer suggests that its Supplemental Register Registration establishes that
opposer’s date of first use in commerce is November 4, 2008, the date claimed in
Opposition No. 91200510
3
Opposer’s Supplemental Register Registration. Finally, opposer argues that the
parties’ marks are confusingly similar.
Before addressing the parties’ substantive contentions, we must first
address a procedural issue. Applicant argues that opposer has “essentially”
introduced no evidence, and that therefore dismissal is appropriate under
Trademark Rule 2.132(a), which applies where a “party has not taken testimony
or offered any other evidence.” We disagree. Notwithstanding applicant’s
argument that Opposer’s Supplemental Register Registration is “evidence of
nothing,” which is addressed below, Opposer’s Supplemental Register
Registration is something, whether or not it is ultimately found sufficient to
establish opposer’s claims in this proceeding. In other words, we find that the
clear language of Trademark Rule 2.132(a) indicates that it applies only where
the plaintiff has not introduced “any” evidence, i.e., no evidence of any kind, and
here opposer has introduced something, regardless of whatever is found with
respect to its ultimate impact. See, Procyon Pharmaceuticals Inc. v. Procyon
Biopharma Inc., 61 USPQ2d 1542 (TTAB 2001); Atlanta-Fulton County Zoo Inc.
v. DePalma, 45 USPQ2d 1858, 1860 (TTAB 1998); TBMP § 534.02 (3d ed. rev.
2012). It is also clear that Trademark Rule 2.132(a) does not apply to this
proceeding because the situation presented here is specifically addressed in
Trademark Rule 2.132(b), which applies where, as here, “no evidence other than
a copy or copies of Patent and Trademark Office records is offered.” In this case,
Opposition No. 91200510
4
opposer has offered a Patent and Trademark Office record, i.e., Opposer’s
Supplemental Register Registration.
Turning then to Trademark Rule 2.132(b), the Rule provides that where an
opposer relies only on Office records, an applicant “may, without waiving its right
to offer evidence in the event the motion is denied, move for dismissal on the
ground that upon the law and the facts the plaintiff has shown no right to relief.”
See TBMP § 534.03; Newhoff Blumberg Inc. v. Romper Room Enter., Inc., 193
USPQ 313, 315 (TTAB 1976). In considering the motion, the Board “may either
render judgment against the plaintiff, or decline to render judgment until all of
the evidence is in the record and decide the case on the merits. If a timely
motion under Rule 2.132(b) is denied, testimony periods and pretrial disclosure
deadlines will be reset for the defendant and for rebuttal.” TBMP § 534.03.
Thus, the ultimate question presented here is whether Opposer’s Supplemental
Register Registration is sufficient to “make out a prima facie case.” Id.
Turning first to the question of standing, opposer must establish that it
has a “real interest,” i.e., a “personal stake,” in the proceeding. Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999); Lipton
Indus., Inc. v. Ralston Purina Co., 213 USPQ 185, 189 (TTAB 1982). We find
that Opposer’s Supplemental Register Registration is sufficient to establish
opposer’s real interest in this proceeding. See generally, Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (finding that
standing is established through a plaintiff’s proof of ownership of a federal
Opposition No. 91200510
5
registration). In fact, while registrations on the Supplemental Register “shall not
be subject to or receive the advantages of” several sections of the Act, in at least
the ex parte context, the provisions of Section 2(d) of the Act apply to
registrations on the Supplemental Register, and therefore, “a mark registered on
the Supplemental Register can be used as a basis for refusing registration to
another mark under § 2(d) of the Act.” In re The Clorox Company, 578 F.2d 305,
198 USPQ 337, 340 (CCPA 1978). It would be inconsistent with Ritchie,
Cunningham and Clorox to find that ownership of a registration on the
Supplemental Register is insufficient to establish standing in an inter partes
proceeding. Therefore, we agree with opposer that its Supplemental Register
Registration establishes its standing to oppose registration of applicant’s mark
under Section 2(d).
As for priority, we need not address the issue in this proceeding. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974). Indeed, under King Candy, priority is not at issue where the
opposer establishes its ownership of an “existing registration.” Id. It is well-
settled that marks registered on the Supplemental Register are “marks
registered in the Patent and Trademark Office” under Section 2(d) of the
Trademark Act. See, In re The Clorox Co., 578 F.2d at 305, 198 USPQ at 339-40.
Accordingly, opposer, which has established its ownership of an “existing
Opposition No. 91200510
6
registration,” need not establish priority in order to prevail on its claim under
Section 2(d).3
Nevertheless, we find that opposer cannot prevail in this proceeding based
solely on its Supplemental Register Registration. In fact, to successfully oppose
registration of a mark under Section 2(d) of the Act, “the opposer must prove he
has proprietary rights in the term he relies upon to demonstrate likelihood of
confusion as to source ….” Otto Roth & Co., Inc. v. Universal Foods Corp., 640
F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); see also, Herbko Int’l, Inc. v. Kappa
Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Towers v.
Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039, 1042 (Fed. Cir. 1990).
Here, however, opposer has failed to introduce any evidence that it has
proprietary rights in its alleged mark. To the contrary, opposer’s only evidence,
its pleaded Supplemental Register Registration, “is not evidence of ownership,
validity, or the exclusive right to use.” In re Bush Bros. & Co., 884 F.2d 569, 12
USPQ2d 1058, 1059 n. 2 (Fed. Cir. 1989). See also, McCormick & Co., Inc. v.
Summers, 354 F.2d 668, 148 USPQ 272 (CCPA 1966) (“registrations on the
Supplemental Register do not receive the advantages of section 7(b) with regard
to prima facie evidence of exclusive right to use”); Loma Linda Food Co. v.
Thomson & Taylor Spice Co., 279 F.2d 522, 126 USPQ 261, 263 (CCPA 1960)

3 While it is not necessary for opposer to establish priority, opposer is in error
when it argues that proof of owning Opposer’s Supplemental Register Registration
constitutes proof of the date of first use asserted therein. Dates of use recited in an
application or registration “must be established by competent evidence.” Trademark
Rule 2.122(b)(2).

Opposition No. 91200510
7
(“[T]he Lanham Act does not contemplate that … registrations on the
supplemental register … shall constitute constructive notice of the registrant’s
claim of ownership”); Copperweld Corporation v. Arcair Company, 200 USPQ
470, 474 (TTAB 1978) (Ownership of a registration on Supplemental Register
“does not constitute prima facie evidence of registrant’s ownership of the mark,
or of its exclusive right to use the mark in commerce. In fact, it is not prima facie
evidence of anything except that the registration issued.”); Hi-Shear Corp. v.
National Automotive Parts Association, 152 USPQ 341, 344 (TTAB 1966) (a
supplemental registration “cannot be considered as evidence of a proprietary
right in the registered mark”). Because the mark in Opposer’s Supplemental
Register Registration is presumed to be merely descriptive, and opposer has
introduced no evidence of use of its mark sufficient to prove that its alleged mark
has acquired distinctiveness, it cannot prevail based solely on its ownership of
this registration. See, In re Medical Disposables Co., 25 USPQ2d 1801, 180
(TTAB 1992)(“a registration issued on the Supplemental Register is not entitled
to the presumptions of Section 7(b) of the statute. It does not constitute prima
facie evidence of registrant’s ownership of the mark, or of its exclusive right to
use the mark in commerce …”); see also, Perma Ceram Enterprises Inc. v. Preco
Indus., Ltd., 23 USPQ2d 1134, 1137 n. 11 (TTAB 1992) (mark registered on
Supplemental Register constitutes an implied admission that the term is
descriptive, at least at the time of registration); In re Hunke & Jochheim, 185
USPQ 188, 189 (TTAB 1975) (supplemental registration “may be considered to
Opposition No. 91200510
8
establish prima facie that, at least at the time of registration, the registered
mark possessed a merely descriptive significance”).
Indeed, in Aloe Creme Laboratories, Inc. v. Bonne Bell, Inc., 168 USPQ 246
(TTAB 1970), the petitioner sought to cancel a registration on the ground of
priority and likelihood of confusion, but relied solely on its own Supplemental
Register registration of a competing mark. As recognized in that case, “[a]
registration affected on this register, however, is evidence only of the fact that it
issued, and, unlike a registration on the Principal Register, does not constitute
prima facie evidence of the ‘registrant’s ownership of the mark’ or ‘of registrant’s
exclusive right to use the mark in commerce.’” Accordingly, “it is clear that
petitioner has failed to establish any right to the relief which it seeks.” Id. at
247. See also, 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 20:29 (4th ed. 2012) (“Neither an opposer nor a petitioner for
cancellation can rely merely upon a Supplemental Registration, for it does not
constitute prima facie evidence of ownership or right to use.”).4
Furthermore, in McCormick & Co., 354 F.2d at 668, 148 USPQ at 272, the
applicant, owner of a Supplemental Register registration for the mark THE

4 Similarly, a party seeking to enforce its rights in a mark in federal court
must establish that it owns a valid mark, which it may accomplish by establishing
ownership of a registration on the Principal Register, but not a registration on the
Supplemental Register. ERBE Elektromedizin GmbH v. Canady Technology LLC,
629 F.3d 1278, 97 USPQ2d 1048, 1055-56 (Fed. Cir. 2010)(applying Third Circuit
law). A registration on the Supplemental Register is not sufficient, by itself, to
establish that the subject mark is valid, because “[r]egistration of a mark on the
Supplemental Register does nothing to enlarge the substantive rights of the
registrant.” Clairol Inc. v. The Gillette Co., 389 F.2d 264, 156 USPQ 593, 596 (2d
Cir. 1968).
Opposition No. 91200510
9
HOUSE OF FLAVORS, sought to register the same mark on the Principal
Register. The Board found that applicant’s mark had acquired distinctiveness,
despite the opposer’s use of the same mark, but the predecessor to our primary
reviewing court reversed, holding that because the applicant’s Supplemental
Register registration did not constitute “prima facie evidence of exclusive right to
use,” or “constructive notice of ownership,” the opposer’s “use of the mark was not
illegal in any sense and must be considered in determining whether secondary
meaning has been established.” Id., 148 USPQ at 276. Ultimately, the opposer’s
use of the term, despite the applicant’s ownership of a Supplemental Register
registration, was found to be “strong evidence militating against a finding that
the term in question has become distinctive of [applicant’s] goods in commerce.”
Id.
Our holding herein distinguishes inter partes cases from ex parte cases,
where, as noted, a mark on the Supplemental Register can be cited as a basis for
refusing registration to another mark under Section 2(d) of the Act pursuant to
Clorox. We believe that this distinction is consistent with the Act and the
differences between ex parte examination and inter partes proceedings. In the ex
parte context, the Office does not and cannot question the validity of a mark in a
registration cited against another under Section 2(d). By contrast, in the inter
partes context, under Otto Roth, a petitioner or opposer must establish the
validity of a mark it asserts against a pending application or existing registration
in order to prevail on a claim of likelihood of confusion. See, Copperweld, 200
Opposition No. 91200510
10
USPQ at 474; see also, Towers v. Advent Software, 913 F.2d at 942, 16 USPQ2d
at 1042 (“To the extent there is a different result in an ex parte proceeding if the
first term is registered on the Supplemental Register, such a result may be an
added advantage of federal registration.”) (citing Universal Foods Corp. v. Otto
Roth & Co., 215 USPQ 1140, 1143-44 (TTAB 1982)).
Indeed, this view finds support in Fluid Energy Processing & Equipment
Co. v. Fluid Energy, Inc., 212 USPQ 28 (TTAB 1981), which makes clear that
“absent the existence of a registration and the presumptions attendant thereto
under Section 7(b) … a party claiming to be aggrieved under Section 2(d) cannot
prevail where he has not proved a prior and proprietary right in the term or
designation on which it relies.” Id. at 35 (emphasis supplied).5 By referencing
the “presumptions attendant thereto under Section 7(b),” Fluid Energy makes
clear that only proof of ownership of a registration on the Principal Register may
excuse a plaintiff from establishing a “proprietary right” through evidence of use
of a valid mark. Opposer has not established that it owns a “proprietary right” in
the asserted mark.
Therefore, while opposer’s evidence, consisting solely of Opposer’s
Supplemental Register Registration, establishes that opposer has standing to
oppose registration of applicant’s mark, and priority need not be proven because

5 Under Section 7(b), registrations on the Principal Register “shall be prima
facie evidence of the validity of the registered mark and of the registration of the
mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use
the registered mark in commerce … subject to any conditions or limitations stated in
the certificate.”

Opposition No. 91200510
11
opposer owns an “existing registration,” Opposer’s Supplemental Register
Registration does not establish that opposer owns a proprietary interest in a
mark. Opposer’s failure to prove its ownership of a valid mark means that
opposer cannot prevail on its claim under Section 2(d) of the Act. Accordingly,
applicant’s motion for involuntary dismissal pursuant to Trademark Rule
2.132(b) is hereby GRANTED, judgment is hereby entered against opposer and
the notice of opposition is dismissed with prejudice under Trademark Rule
2.132(b).
***