Rocco Giordanov.Ferdinand Offray, IV

Trademark Trial and Appeal Board

Mar 8, 2013

No. 91200621 (T.T.A.B. Mar. 8, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: March 8, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Rocco Giordano
v.
Ferdinand Offray, IV
_____

Opposition No. 91200621
to application Serial No. 85208421
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Daniel R. Fuchs for Opposer, Rocco Giordano.

Ferdinand Offray, IV, pro se Applicant.
_____

Before Cataldo, Lykos and Kuczma, Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Applicant, Ferdinand Offray, IV (“applicant”), filed a use-based application to
register the mark FADED ROYALTY with a standard character claim for “athletic
apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms”
in International Class 25.1

1 Application Serial No. 85208421 filed on December 31, 2010, alleging dates of first use
and first use in commerce as of November 25, 2008.
Opposition No. 91200621

2

Opposer, Rocco Giordano, (“opposer”), opposes registration of applicant’s
mark on the ground of priority and likelihood of confusion under § 2(d) of the
Trademark Act of 1946, 15 U.S.C. § 1052(d). Opposer alleges he has used the
identical mark FADED ROYALTY for apparel including hats, shirts, short, pants
and scarves, and for retail store and online retail store services, prior to applicant’s
filing date as well as any date of use of the mark claimed by applicant.
A. The Record
During the time period for making pretrial disclosures, opposer filed a
document entitled Pretrial Disclosures accompanied by copies of documents
identified as Exhibits 1 through 10.2 In its trial brief, opposer relies on Exhibits 1-
10 to prove his alleged priority of use and the likelihood of confusion between the
parties’ marks. Because Exhibits 1-10 were not submitted during opposer’s
testimony period, we must first rule on the admissibility of opposer’s Exhibits.
Other than testimony depositions, a party’s evidence must be filed during its
assigned testimony period. See 37 C.F.R § 2.122(e) (documentary evidence to be
filed with a notice of reliance during testimony period of party that files the notice)
and TBMP §§ 702.02, 703.01(k), 704.02 and 707.02(a) (October 2012). The
documentary Exhibits filed with opposer’s Pretrial Disclosures were filed prior to
the opening of opposer’s testimony period. Our rules clearly provide that evidence
not obtained and filed in compliance with the rules of practice governing inter partes

2 A party making a pretrial disclosure is not required to file routinely a copy of such
disclosure with the Board. See 37 C.F.R. § 2.120(j)(8) and TBMP § 702.01.
Opposition No. 91200621

3

proceedings before the Board will not be considered by the Board. See 37 CFR §
2.123(l) and TBMP § 706.
We also note that applicant did not object to the Exhibits either at the time
they were filed or after opposer’s trial brief, which relied on the Exhibits, was filed.
In certain circumstances where the non-offering party has made no objection, the
Board has admitted material not ordinarily admissible via a notice of reliance by
treating it as having been stipulated into the record for whatever probative value it
may have. In those circumstances however, the conduct or papers of the opposing
party could fairly be interpreted as a stipulation that the evidence be considered of
record. See Jeanne-Marc, Inc. v. Cluett, Peabody & Co., Inc., 221 USPQ 58, 59 n. 4
(TTAB 1984). The Trademark Rules of Practice (in particular Rules 2.120(j) and
2.122) are quite clear about the sort of evidence that may be introduced by notice of
reliance. Here, applicant, an individual acting pro se, filed neither evidence nor a
brief on the case. Therefore, we cannot say, that as the result of any action or
statement, he treated the material improperly offered by notice of reliance as being
of record. See Original Appalachian Artworks Inc. v. Streeter, 3 USPQ2d 1717, 1718
n. 3 (TTAB 1987).
In view of the foregoing, opposer’s Exhibits were filed prematurely and are
not admitted into evidence.3

3 Cf. Plus Products v. Natural Organics, Inc., 204 USPQ 773, 775 n.5 (TTAB 1979)
(evidence submitted with premature filing of notice of reliance prior to applicant’s
testimony period considered where no objection was raised and error was not prejudicial).
Plus Products is distinguishable from this case. Opposer in Plus Products objected to the
evidence submitted with the notice of reliance, but on grounds unrelated to the premature
submission of the evidence. Therefore, because opposer had the opportunity to object to the
Opposition No. 91200621

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By operation of 37 CFR §2.122(b), the record includes merely the pleadings
and the application file for applicant’s mark.
B. Priority and Likelihood of Confusion
Opposer does not own an existing registration and relies on his alleged
common law rights in the mark FADED ROYALTY. To establish priority on his
likelihood of confusion claim under § 2(d) of the Trademark Act, opposer must prove
by a preponderance of the evidence that, vis-à-vis applicant, he owns “a mark or
trade name previously used in the United States . . . and not abandoned . . . .”
Threshold.TV, Inc. v. Metronome Enterprises, Inc., 96 USPQ2d 1031, 1036-37
(TTAB 2010) citing Otto Roth & Co. v. Universal Foods Corp., 640 F. 2d 1317, 209
USPQ 40, 44 (CCPA 1981). If opposer cannot prove that he used the mark as a
trade mark, or in a manner analogous to a mark, before either the filing date of
applicant’s application or applicant’s proven date of first use (whichever is earlier),
opposer cannot establish priority. Cf. Herbko International, Inc. v. Kappa Books,
Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA 1981); Miller
Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711, 1714 (TTAB 1993).
Without a federal registration and without evidence timely submitted during
his testimony period showing prior use or analogous use, opposer cannot establish
priority and prevail in this proceeding. Moreover, even if opposer’s Exhibits were to

untimeliness but did not do so, applicant’s premature filing error was not deemed
prejudicial, and the mistake of prematurely filing the evidence did not warrant exclusion.
Opposition No. 91200621

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be deemed timely filed and considered, they are insufficient to establish his
priority.4
A number of opposer’s Exhibits do not contain the proper subject matter for
introduction via notice of reliance. Specifically, Exhibits 1-3 are copies of invoices;
Exhibits 4 and 6 consist of copies of domain name registration reports apparently
from GoDaddy.com for the domain names fadedroyalty.com and fadedroyalty.net
which do not bear a URL or the date of printing (nor are the individual parties to
this proceeding identified as the domain name owners);5 Exhibit 5 is a copy of
commercial lease; and Exhibit 7 is a copy of an email allegedly received by opposer
from applicant. It is well-settled that these types of documents do not fall within
the category of printed publications described in 37 C.F.R. § 2.122(e) and TBMP §
704.08 (a)-(c) that can be introduced without witness testimony via a notice of
reliance. Thus, Exhibits 1-7 are inadmissible regardless of whether they were
prematurely filed.
The remaining Exhibits 9 and 10, which are printouts from the website
accessed at www.merchantcircle.com that bear URLs and the printing date,
constitute the type of evidence that is admissible with a timely filed notice of

4 While opposer’s Exhibits are not in evidence and cannot be considered, we note that they
would be sufficient to establish opposer’s standing to bring this proceeding as they show
that opposer has a real interest, i.e., a personal stake, in the outcome of the proceeding. See
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999); and Jewelers
Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2012, 2023-24 (Fed.
Cir. 1987).
5 Cf. Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039 (TTAB 2010) (if a
document obtained from the internet identifies its date of publication or date that it was
accessed and printed, and its source (e.g., the URL), it may be admitted into evidence
pursuant to a notice of reliance in the same manner as a printed publication in general
circulation in accordance with 37 C.F.R. § 2.122(e)).
Opposition No. 91200621

6

reliance.6 See 37 C.F.R. § 2.122(e) and TBMP § 704.08(b). Even if received into
evidence, however, these Exhibits merely show listings for FADED ROYALTY
entities (that apparently correspond to the parties based on the addresses identified
in the pleadings and the websites) with links to “Get Directions,” “Connect to
Merchant” and to “View . . . gallery.” These listings have no relevance to the dates
of first use of the terms FADED ROYALTY by either party, nor do they establish a
trademark or service mark use of the term. Accordingly, they are insufficient to
prove opposer’s prior use of FADED ROYALTY as mark.
While opposer’s failure to prove priority precludes him from prevailing in this
matter, we proceed to consider whether opposer has shown likelihood of confusion
with applicant’s mark for purposes of completeness.
In determining the likelihood of confusion, we must analyze all of the
probative facts in evidence that are relevant to the factors set forth in In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). Two key considerations are the similarities between the marks and the
similarities between the goods and/or services. See Federated Foods, Inc. v. Fort
Howard Paper Co. 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Inasmuch as there is no evidence that opposer has used the term FADED
ROYALTY as either a trademark or a service mark in connection with any products

6 Exhibit 8 appears to be a printout from the USPTO’s TESS electronic database for the
subject application. It does not bear the URL that was accessed or the date of printing, and
accordingly is not admissible. Inasmuch as the application file is in the record pursuant to
37 C.F.R. § 2.122(b), Exhibit 8 if admissible, would be duplicative.
Opposition No. 91200621

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or services, we are unable to assess the similarity of the marks, or the similarity of
applicant’s goods with any goods or services of opposer. This is so even in the event
we were to consider opposer’s untimely filed submissions as evidence in this case.
Nor is there evidence that relates to any of the remaining du Pont factors.
Accordingly, opposer has failed to establish a likelihood of confusion between its
pleaded mark FADED ROYALTY and applicant’s mark.

Decision: The opposition is dismissed.