Stress Less, Inc.v.Ekornes ASA

Trademark Trial and Appeal Board

Aug 17, 2007

No. 91165936 (T.T.A.B. Aug. 17, 2007)

Mailed: 8/17/07

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Stress Less, Inc.
v.
Ekornes ASA
_____

Opposition No. 91165936
to application Serial No. 78197167
filed on December 22, 2002
_____

Al D. Kitchen for Stress Less, Inc.

Michael J. Hughes of Intellectual Property Law Offices for
Ekornes ASA.
______

Before Quinn, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Ekornes ASA to register the
mark shown below

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91165936
2
for “furniture, chairs, seats, recliner chairs, [and]
recliner chairs with footstools” in International Class 20;
and “retail outlet and store services in the field of
furniture and furnishings” in International Class 35.1
Stress Less, Inc. opposed registration in International
Class 35 only. As grounds for opposition under Section 2(d)
of the Trademark Act, opposer alleges that applicant’s mark,
when used in connection with applicant’s services, so
resembles the mark shown below

for goods and services relating to stress reduction and
relaxation2 as to be likely to cause confusion. More
specifically, the registration covers the following goods
and services:

1 Application Serial No. 78197167, filed December 22, 2002,
alleging an intention to use the mark in commerce and claiming a
right of priority under Section 44(d) of the Trademark Act based
on Norwegian application no. 200210613, filed December 11, 2002.
Applicant subsequently filed an amendment to allege use
indicating that the mark was first used anywhere on January 31,
2003, and in commerce on March 31, 2003.
2 Registration No. 2299052, issued December 7, 1999; combined
affidavit under Sections 8 and 15 filed and accepted. The word
“Stress” is disclaimed. The stippling in the drawing is a
feature of the mark and is not intended to indicate color.
Opposition No. 91165936
3
videotapes, video and audio recordings
and cassettes featuring music; and
compact disks and CD ROMs that provide
stress information and stress reduction
techniques, programs, and tests and
exercises (in International Class 9);

newsletters and catalogs that provide
stress and stress reduction techniques,
programs and practices (in International
Class 16);

clothing, namely, t-shirts, sweaters,
sports shirts, hats, jump suits, pants
[and] robes (in International Class 25);
and

retail store services and catalog mail
order services featuring goods and
services in the field of stress
reduction, relaxation, exercise,
ergonomics, environment, bio-feedback,
medicine, psychology, nutrition, and
weight loss (in International Class 42).

Opposer, in the notice of opposition, specifically relies
upon its services identified in International Class 42.
Opposer alleges that its services include the sale of
“furniture items.”
Applicant, in its answer, denied the salient
allegations of likelihood of confusion.
The Board, in an order dated February 16, 2006, granted
applicant’s unopposed request to divide out Class 20, that
is, the class that was not opposed. Thus, the opposition
proceeded against only the services recited in Class 35.
Unfortunately, the actual division was never completed; this
inaction is regretted. In view of the decision herein, and
Opposition No. 91165936
4
so as to avoid any additional delay, the application will
proceed as a combined application.
At the outset, we must address the critical problems
that exist relative to the evidentiary record in this case.
On the last day of opposer’s testimony period, opposer
submitted its “brief” accompanied by a stack of documents.
The brief includes the following preface:
Due to uncontrollable circumstances,
[opposer] has not been able to enlist
the services of our previous legal
counsel regarding this matter and have
undertaken to prepare this case
ourselves. Therefore, we pray that the
TTAB will consider the merits of our
content and supporting arguments and be
lenient with our shortcomings in legal
protocol.

On the same day, opposer also filed a request to extend its
testimony period “due to delay in receiving PTO documented
trademark status.” Opposer then filed, on May 25, 2006, a
status and title copy of its pleaded Registration No.
2299052. Opposer’s motion to extend, to which applicant
raised no objection, is granted.
Applicant filed, on May 26, 2006, a paper captioned
“Applicant’s Technical Response to Plaintiff’s Case Brief.”
In this paper, applicant objected to opposer’s brief and
accompanying documents for two main reasons, namely that a
non-attorney filed the papers, and that the papers did not
comply with the rules of practice governing the introduction
of evidence in Board proceedings. Applicant nevertheless
Opposition No. 91165936
5
added that it “is not enamored with undue reliance on ‘legal
protocol,’” and that it “would actually prefer to present
and resolve matters in a minimally formalized manner and
without dealing with the technical rules of evidence.”
Applicant went on to suggest a “reciprocal agreement,” which
essentially would have allowed the parties to submit
evidence in an informal fashion, with applicant’s pointing
out that it is difficult to take testimony of its principals
located in Norway. Applicant stated that, if opposer’s
submissions were accepted, the Board should provide guidance
to applicant regarding its proposal to litigate the case in
an informal manner. But, applicant added, “in the event
that such an informal procedure is disapproved, then
Applicant reluctantly objects to the evidence and
submissions of Opposer in this matter.”
Applicant, on the last day of its testimony period,
submitted the declaration of its group marketing director.
Applicant also filed on the same date a paper captioned
“Case Presentation” which essentially is its brief on the
case. This paper includes the following introductory
statement:
As the documents and evidence
submitted by Opposer are not supported
by sworn testimony and do not comply
with normal rules of evidence, and since
the Board has not acted on Applicant’s
Technical Response dated 25 May 2006,
Applicant is submitting this Case
Presentation somewhat in a vacuum.
Opposition No. 91165936
6
Applicant elects to present its evidence
based on documents and testimony via
declaration and to handle the matter in
as informal a manner as is feasible.
Further, Opposer’s non-attorney
representative, Mr. Al Kitchen, has
raised numerous matters not at issue
before this Board. Applicant will
address these issues only in passing and
should not be seen as acquiescing in any
issues.

Opposer, in its rebuttal brief, made no response to
either applicant’s evidentiary objections or applicant’s
suggestion for an agreement covering the informal
introduction of evidence in this case.
We first turn our attention to applicant’s objection
relating to the ability of Mr. Kitchen to represent opposer,
a corporation. Rule 10.14(e) provides that if a party
electing to represent itself is a corporation, the party may
act through any individual who is an officer of the party
and who is authorized to represent it. See TBMP §114 (2d
ed. rev. 2004). In this case, Mr. Kitchen states that he is
an officer (president and co-owner) of opposer, and is
authorized to represent opposer in that capacity. Thus,
although Mr. Kitchen may not be an attorney, the rules do
not prohibit him from representing opposer, a corporation,
in his capacity as an officer of the corporation.
We next turn to applicant’s evidentiary objections and
the critical problems, of which there are many, relating to
opposer’s submissions. Board inter partes proceedings are
Opposition No. 91165936
7
governed by, inter alia, the Lanham Trademark Act of 1946,
as amended, the Trademark Rules of Practice, the Federal
Rules of Civil Procedure and the Federal Rules of Evidence.
The Trademark Act and the various rules provide a framework
for the orderly conduct of litigation before the Board.
Because the Board is an administrative tribunal empowered to
determine only the right to register, its rules and
procedures necessarily differ in some respects from those
prevailing in the Federal district courts. However, within
the rules, there are a number of ways to properly introduce
evidence into the record of a Board proceeding, none of
which opposer utilized.
We initially note that Mr. Kitchen chose to appear on
behalf of his corporation. While, as discussed above, this
representation is permissible, it is generally advisable for
a person not acquainted with the technicalities of the
procedural and substantive law involved in an opposition
proceeding to secure the services of an attorney who is
familiar with such matters. Litigants and their
representatives, such as Mr. Kitchen, are obligated to
review and become familiar with the Trademark Rules of
Practice and the Trademark Manual of Board Procedure, which
are readily available on the Internet at
http://www.uspto.gov. Strict compliance with the Trademark
Rules of Practice is expected of all parties before the
Opposition No. 91165936
8
Board, whether or not they are represented by counsel
familiar with Board practice. See McDermott v. San
Francisco Women’s Motorcycle Contingent, 81 USPQ2d 1212
(TTAB 2006), aff’d, (Fed. Cir., No. 07-1101, July 11, 2007).
Failure to follow the Board’s well-established and widely-
disseminated practice and procedure is at the party’s peril.
As noted above, opposer submitted its final brief on
the case, accompanied by a stack of documents, on the last
day of its testimony period. Applicant objected to the
several exhibits attached to the brief as being improperly
submitted.
Evidentiary material attached to a brief on the case
can be given no consideration unless it was properly made of
record during the testimony of the offering party. Plus
Products v. Physicians Formula Cosmetics, Inc., 198 USPQ
111, 112 n.3 (TTAB 1978); and TBMP § 539 (2d ed. rev. 2004).
Opposer acknowledged that there may be problems with its
submission when it invited the Board to “be lenient with our
shortcomings in legal protocol.” Given the Board’s well-
established rules and the Board’s inherent authority to
conduct inter partes proceedings in an orderly fashion,
opposer’s invitation is declined. Firstly, inasmuch as
opposer did not take any testimony, none of the documents
were identified and introduced during the taking of
testimony. Secondly, the documents were not accompanied by
Opposition No. 91165936
9
a notice of reliance and, even if they were, all of the
documents, save one, comprise improper subject matter for
introduction by a notice of reliance.
Certain types of evidence need not be introduced in
connection with the testimony of a witness but may instead
be made of record by filing the materials with the Board
under cover of one or more notices of reliance during the
testimony period of the offering party. TBMP § 704 (2d ed.
rev. 2004). In the present case, more specifically, the
following documents are not subject to introduction by way
of a notice of reliance: a “schedule” of opposer’s marks
(ex. no. I); a listing of applicant’s marks (ex. no. II); a
listing of opposer’s “furniture type items” (ex. no. III);
opposer’s catalogs (ex. nos. IV, V, and VII); a listing of a
few customer orders (ex. no. VI); an agreement between the
parties to settle another Board proceeding (ex. no. VIII);
copies of email correspondence between the parties (ex. no.
IX); a listing of various URL names obtained by the parties
and others (ex. no. X); advertisements of applicant (ex.
nos. XI, XI and XIII); opposer’s internal documents (ex. no.
XIV); promotional materials of a third-party (ex. no. XV);
an excerpt from applicant’s website (ex. no. XVI);
additional email communications between the parties (ex. no.
XVII); a listing of opposer’s “trademark filings to date”
(ex. no. XVIII); an example of opposer’s product packaging
Opposition No. 91165936
10
(ex. no. XIX); and a side-by-side comparison of the parties’
marks, goods and services, slogans, URLs and advertisements
(ex. no. XX). So as to be clear, even if a notice of
reliance had accompanied these documents, none of them is
subject matter for introduction by a notice of reliance.
And, as indicated earlier, there is no testimony deposition
in which the documents were identified and introduced as
exhibits.
That leaves the only other document opposer submitted
during its testimony period, namely the status and title
copy of opposer’s pleaded registration. Trademark Rule
2.122(d)(2) provides that a registration owned by any party
to a proceeding may be made of record by that party by
appropriate identification and introduction during the
taking of testimony or by filing a notice of reliance, which
shall be accompanied by a copy (original or photocopy) of
the registration prepared and issued by the Patent and
Trademark Office showing both the current status of and
current title to the registration. The status and title
copy of opposer’s registration, although proper subject
matter for introduction into the record by a notice of
reliance, was not accompanied by the notice as required by
the rules of practice. See TBMP 704.02 (2d ed. rev. 2004).
Accordingly, none of the documents submitted by opposer
was properly introduced into the record.
Opposition No. 91165936
11
Insofar as the pleadings are concerned, statements made
in pleadings cannot be considered as evidence in 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) (2d ed. rev. 2004). In
applicant’s answer, applicant “acknowledges that [opposer]
has used its two word version of the mark STRESS LESS for
various goods for several years...”, but that applicant
“first established use of its one word STRESSLESS mark for
furniture items in 1971 and has been well known in the
retail furniture field for more than 30 years under the
STRESSLESS brand.” (Answer, ¶ 1). In response to opposer’s
allegations relating to opposer’s Registration No. 2299052,
applicant “denies that [opposer] has any trademark rights in
class 020 or for furniture, nor has it established rights
for sales of furniture.” (Answer, ¶ 2). Thus, there is no
admission in the answer regarding the status and title of
opposer’s pleaded registration or any prior common law
rights upon which opposer could rely in this proceeding.
Rather, allegations relating thereto were subject to proof
at trial, an exercise that opposer failed to undertake.
Opposer’s brief contains numerous factual allegations
relating to the merits of the pleaded claim. Indeed, as
correctly pointed out by applicant, certain of opposer’s
Opposition No. 91165936
12
statements are tantamount to unsworn “testimony.” Factual
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) (2d ed. rev. 2004).
In sum, inasmuch as opposer did not take any testimony
or properly introduce any other evidence, none of opposer’s
documents has been considered.3
To allow opposer’s documents into the record would work
a substantial injustice to applicant. Although applicant
indicated that it shared opposer’s view toward “legal
protocol,” it readily recognized that none of opposer’s
evidence was properly submitted and, thus, it objected to
the improper introduction. Applicant recognized the
uncertainty regarding opposer’s record, and it would be
unfair to expect applicant to have mounted a vigorous
defense not knowing the strength of opposer’s case. This
dilemma made it impossible for applicant to know how to
respond when it came to its case in chief.

3 We agree with applicant’s assessment that opposer, in its
brief, asks the Board to address numerous issues that are beyond
the Board’s jurisdiction. Thus, even if opposer’s evidence was
considered, much of the relief requested by opposer is not
available herein.
Opposition No. 91165936
13
Applicant’s dilemma is evidenced by its “technical
response” and later statement that it submitted its “Case
Presentation” “somewhat in a vacuum.” Indeed, applicant
simply was not on notice as to the strength of opposer’s
case that applicant needed to rebut during its testimony
period.
Given the parties’ apparent fondness of an informal
trial, the parties could have agreed, in advance of the
testimony periods, on the parameters of such a trial. As
indicated in TBMP § 702 (2d ed. rev. 2004):
[T]he parties may enter into a wide
variety of stipulations concerning the
timing and/or introduction of specified
matter into evidence. For example, the
parties may stipulate that matter
otherwise improper for a notice of
reliance (such as documents obtained by
production under Fed. R. Civ. P. 34) may
be introduced in that manner, that
testimony may be submitted in the form
of an affidavit, that a party may rely
on its own discovery responses or that
notices of reliance can be filed after
the testimony periods have closed.
There may also be circumstances where
improperly offered or otherwise
noncomplying evidence may nevertheless
be deemed stipulated into the record
where, for example, no objection to the
evidence is raised and/or the
nonoffering party treats the evidence as
being of record.

See also TBMP § 705 (2d ed. rev. 2004) [“The use of
stipulated evidence normally results in savings of time and
expense for all concerned.”].
Opposition No. 91165936
14
The parties alternatively could have agreed to an
accelerated case resolution (ACR) in this case. Parties
that file cross motions for summary judgment may stipulate
that their summary judgment motions be treated as the final
record and briefs. In those cases where the parties so
stipulate, the Board will expedite a decision in the case,
but decide the merits in accordance with the evidentiary
burden at trial, that is, by a preponderance of the
evidence.
To effectuate their desire to avoid a formal trial
conducted in accordance with the Board’s rules of practice,
however, it was incumbent upon the parties to stipulate to
such action. Here, there is no agreement between the
parties. Although applicant appeared willing to participate
in some form of an informal trial, applicant clearly
objected, in the first instance, to the improper submission
of evidence by opposer. Thus, there was no stipulation in
place to govern an informal trial in this case.
The burden of proof rests with opposer in this
opposition proceeding. In Board proceedings, the plaintiff
must establish its pleaded case (in this case, priority and
likelihood of confusion), and must do so by a preponderance
of the evidence. Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000). In order for a
plaintiff to prevail on a claim of likelihood of confusion,
Opposition No. 91165936
15
opposer must prove it has proprietary rights in the term it
relies upon to demonstrate likelihood of confusion as to
source.
As the plaintiff in this proceeding, it was incumbent
upon opposer to properly submit evidence to demonstrate its
proprietary rights in its claimed mark. Opposer, having the
burden of proof herein, failed to meet its burden in this
regard, and thus cannot prevail on its claim of likelihood
of confusion based on the marks.
Decision: The opposition is dismissed.