Power-Selles Imports, Inc.v.Bodegas y Vinedos Neo, S.L.

Trademark Trial and Appeal Board

Feb 14, 2014

No. 91205976 (T.T.A.B. Feb. 14, 2014)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: February 14, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Power-Selles Imports, Inc
v.
Bodegas y Vinedos Neo, S.L.
_____

Opposition No. 91205976
to application Serial No. 85359141
_____

Michael Dundas of Oaktown Legal for Power-Selles Imports,
Inc.1

D. Peter Hochberg of D. Peter Hochberg Co., L.P.A. for
Bodegas y Vinedos Neo, S.L.
______

Before Cataldo, Taylor and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Bodegas y Vinedos Neo. S.L., filed an
application to register on the Principal Register the mark

1 Opposer, acting pro se, filed the original notice of
opposition. Above-listed counsel filed opposer’s trial brief
and, accordingly, is accepted as opposer’s counsel of record.
See Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212,
1216 (TTAB 2012) (law firm that filed motion to dismiss
recognized as counsel of record for respondent); and Djeredjian
v. Kashi Co., 21 USPQ2d 1613, 1613 n.1 (TTAB 1991) (appearance
made by filing motion on behalf of respondent).
Opposition No. 91205976

2
MATIZ in standard characters for “wines” (International
Class 33).2
Opposer, Power-Seller Imports, Inc., opposed
registration under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when
used in connection with applicant’s goods, so resembles
opposer’s previously used and registered mark MATIZ in
standard characters for the following goods:
Fruit paste; Olive oil; Processed almonds;
Processed artichokes; Processed olive puree;
Processed olives; Processed peppers; Processed
quince; Processed seafood
(International Class 29); and

Bread sticks; Edible salt; Flat bread; Fruit
breads; Rice; Sauces; Sea salt for cooking
(International Class 30)3

as to be likely to cause confusion, to cause mistake or to
deceive.
Applicant, in its answer, denied all of the allegations
in the notice of opposition.4
The record consists of the pleadings and the file of
the involved application. Neither party took testimony nor

2 Application Serial No. 85359141 was filed June 29, 2011, based
upon applicant’s assertion of a bona fide intent to use the mark
in commerce. “The English translation of ‘MATIZ’ is ‘nuance’ and
‘shade.’”

3 Registration No. 4167770 issued on July 3, 2012. “The English
translation of ‘MATIZ’ in the mark is ‘NUANCE.’”

4 In addition, applicant asserted certain affirmative defenses
but did not pursue them by motion or at trial. Accordingly, they
are deemed waived except to the extent they may be construed as
amplifications of applicant’s denials of opposer’s allegations.
Opposition No. 91205976

3
filed any other evidence during their respective testimony
periods. On the final day of its testimony period, as
amended,5 opposer filed its final brief on the merits of the
case. Applicant did not file a brief.
Section 13(a) of the Trademark Act, 15 U.S.C.
§ 1063(a), allows for opposition to the registration of a
mark by anyone “who believes that they would be damaged by
the registration of a mark...” The party seeking to oppose
the registration of the mark must prove two elements: (1)
that it has standing, and (2) that there is a valid ground
to prevent the registration of the opposed mark. Young v.
AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir.
1998). As indicated above, opposer made absolutely no
evidence of record during its testimony period. Thus, the
opposition must fail for lack of proof of standing and lack
of proof of the ground of likelihood of confusion. Our
reasons follow.
The Board, in our institution order dated July 9, 2012,
stated the following (emphasis in original):
Proceedings will be conducted in accordance with
the Trademark Rules of Practice, set forth in
Title 37, part 2, of the Code of Federal
Regulations ("Trademark Rules"). These rules may
be viewed at the USPTO's trademarks page:

5 Opposer’s October 3, 2012 consented motion to suspend
proceedings for 180 days to allow the parties to pursue
settlement negotiations was granted by Board order on the same
day. Per the revised trial schedule submitted as part of the
motion, opposer’s trial period ended on December 11, 2013.
Opposer filed its brief on that date.
Opposition No. 91205976

4
http://www.uspto.gov/trademarks/index.jsp. The
Board's main webpage (http://www.uspto.gov/
trademarks/process/appeal/index.jsp) includes
information on amendments to the Trademark Rules
applicable to Board proceedings, on Alternative
Dispute Resolution (ADR), Frequently Asked
Questions about Board proceedings, and a web link
to the Board's manual of procedure (the TBMP).

The TBMP includes information on the introduction
of evidence during the trial phase of the case,
including by notice of reliance and by taking of
testimony from witnesses. See TBMP §§ 703 and
704. Any notice of reliance must be filed during
the filing party's assigned testimony period, with
a copy served on all other parties. Any testimony
of a witness must be both noticed and taken during
the party's testimony period. A party that has
taken testimony must serve on any adverse party a
copy of the transcript of such testimony, together
with copies of any exhibits introduced during the
testimony, within thirty (30) days after the
completion of the testimony deposition. See
Trademark Rule 2.125.

Thus, the parties herein were apprised of the rules
applicable to, inter alia, introducing testimony and
evidence at the very institution of this proceeding, and
also were directed to authorities and resources to aid them
in so doing. Strict compliance with the Trademark Rules of
Practice and where applicable, the Federal Rules of Civil
Procedure is expected of all parties before the Board,
whether or not they are represented by counsel. A party may
represent itself as opposer did in the early stages of this
proceeding but, as expected of all parties, whether or not
represented by counsel, they are charged with familiarity
with the rules governing practice and procedure before the
Opposition No. 91205976

5
Board. Nonetheless, opposer, as plaintiff and having the
burden of proof, has failed to follow the rules governing
the introduction of testimony and evidence in meeting its
burden.
Statements made in pleadings cannot be considered as
evidence on behalf of the party making them; such statements
must be established by competent evidence during the time
for taking testimony. Times Mirror Magazines, Inc. v.
Sutcliff, 205 USPQ 656, 662 (TTAB 1979); and TBMP
§ 704.06(a) (3d ed. rev.2 2013). Further, applicant did not
make any admissions in its answer that would excuse opposer
from having to prove its standing and a ground for relief.
Finally, opposer’s brief on the case is just that; a
presentation of its arguments in support of its position.
There is no basis for us to construe opposer’s brief as a
notice of reliance and, even if we did so construe opposer’s
brief, it does not introduce any evidentiary submissions.6
Opposer’s brief contains a number of factual
allegations in support of its claim.7 However, factual

6 We also observe that opposer does not indicate in its brief
that it made any testimony or evidence of record or make
reference therein to any testimony or record evidence that
inadvertently was not associated with the proceeding file.

7 Opposer asserts in its brief (p. 3) that applicant failed to
respond to “Opposer’s First Set of Special Interrogatories, and
has not filed any Initial Disclosures.” However, the record
indicates that opposer did not file any pre-trial motions whereby
we might have addressed applicant’s asserted failure to respond
to discovery or serve initial disclosures.

Opposition No. 91205976

6
statements made in a party’s brief on the case can be given
no consideration unless they are supported by evidence
properly introduced at trial. Statements in a brief have no
evidentiary value. Electronic Data Systems Corp. v. EDSA
Micro Corp., 23 USPQ2d 1460, 1462 n.5 (TTAB 1992); and TBMP
§704.06(b) (3d ed. rev.2 2013).
In short, the record is devoid of any testimony or
evidence in support of opposer’s claim. Opposer has the
burden of coming forward with evidence to support its case.
It is manifestly clear that opposer has not done so here.
Decision: The opposition is dismissed.