Summersault Enterprises, LLCv.MX Trading Inc.

Trademark Trial and Appeal Board

Nov 6, 2018

No. 91233284 (T.T.A.B. Nov. 6, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: November 6, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Summersault Enterprises, LLC
v.
MX Trading Inc.
_____

Opposition No. 91233284
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Stephen J. Mayfield and Brett W. Hastings of York Howell & Guymon,
for Summersault Enterprises, LLC.
Yuhua Lin, President, for MX Trading Inc.
_____

Before Bergsman, Hightower and Coggins,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
MX Trading Inc. (Applicant) filed an application for the mark THE ESSENTIAL
WELLNESS (standard characters) for the following description of goods:
Massage apparatus, namely, for muscle relaxation and
pain relief; handheld massage apparatus; massage
apparatus for manual rubbing, kneading, and stimulation
of muscles, portable manual massage apparatus, neck
massage apparatus, shoulder massage apparatus and back
massage apparatus. Adult sexual stimulation aids,
namely, vibrators, vibrators with a heating element, anal
beads, anal plugs and probes, erection enhancers, genital
rings, masturbators, penis pumps, artificial penises,
artificial vaginas, fitted sleeves for penis pumps, nipple
Opposition No. 91233284
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clamps, nipple suction devices, dildos and dongs, in Class
10.1
Applicant disclaimed the exclusive right to use the word “Wellness.”
Summersault Enterprises, LLC (Opposer) filed an opposition under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so
resembles Opposer’s registered mark THE ESSENTIAL WELLNESS (standard
characters) for “diffusers for essential oils,” in Class 11, as to be likely to cause
confusion.2 Opposer disclaimed the exclusive right to use the word “Wellness.”
Applicant, in its Answer, denied the salient allegations in the Notice of Opposition.
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicant’s application file.
Opposer filed a “Discovery Conference Statement” in which Opposer expressed its
willingness to discuss Accelerated Case Resolution (ACR) procedures agreeable to all
parties.3 Applicant did not respond. ACR can be implemented only by consent of the
parties and agreement by a Board attorney or judge, and will not be approved by
unilateral motion of one party. TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP) § 702.04(a) (2018). Accordingly, there is no ACR process in place

1 Application Serial No. 87173917 was filed on September 16, 2016, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use anywhere on
December 1, 2015 and first use in commerce on July 1, 2016.
2 Registration No. 5062599, registered October 18, 2016.
3 5 TTABVUE.
Opposition No. 91233284
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and the procedures for noticing, taking, serving and submitting evidence and
testimony set forth in the Board’s March 8, 2017 order remains in effect.4
Neither Opposer, nor Applicant, submitted any evidence during their assigned
testimony periods. However, Opposer filed a brief and attached a photocopy of its
original certificate of registration and Applicant’s responses to Opposer’s written
discovery.5 Applicant did not file a brief.
II. Opposer’s failure to take testimony or introduce evidence
“No testimony shall be taken or evidence presented except during the times
assigned, unless by stipulation of the parties approved by the Board, or upon motion
granted by the Board, or upon order of the Board.” Trademark Rule 2.121, 37 C.F.R.
§ 2.121. The evidence attached to Opposer’s brief is untimely and shall not be
considered by the Board. See M-Tek Inc. v. CVP Sys. Inc., 17 USPQ2d 1070, 1072
(TTAB 1990); Binney & Smith Inc. v. Magic Marker Indus., Inc., 222 USPQ 1003,
1009 n.18 (TTAB 1984) (material attached to brief on the case can be given no
consideration unless it has been properly made of record during the testimony period
of the offering party); Angelica Corp. v. Collins & Aikman Corp., 192 USPQ 387, 391
n.10 (TTAB 1976) (“Evidence submitted by opposer for the first time with its brief
has not been considered because it was not regularly made of record during its
testimony period in chief or rebuttal testimony period.”).

4 2 TTABVUE 6.
5 8 TTABVUE 13 and 24-32.
Opposition No. 91233284
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To prevail on the ground of likelihood of confusion under Section 2(d) of the
Trademark Act, based on a previously used mark, it is the opposer’s burden to prove
by a preponderance of the evidence both priority of use and likelihood of confusion.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir.
2000); Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43
(CCPA 1981); WeaponX Performance Prods. Ltd. v. Weapon X Motorsports, Inc., 126
USPQ2d 1034, 1040 (TTAB 2018).
Also, a threshold issue in every inter partes case is the plaintiff’s standing to
challenge registration. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com
Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). To establish standing in an opposition or
cancellation proceeding, a plaintiff must prove that it has a “real interest” as well as
a “reasonable” basis for its belief of damage. See Empresa Cubana, 111 USPQ2d at
1062; Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999);
Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB
1982).
Because Opposer failed to introduce any testimony or evidence, Opposer failed to
meet its burden of proof and, therefore, the opposition is dismissed.
Even assuming that we could consider Opposer’s evidence, because Opposer
submitted a photocopy of its original certificate of registration which did not show the
current status of and title to the registration, Opposer failed to establish its standing
Opposition No. 91233284
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or priority of use. Trademark Rule 2.122(d), 37 C.F.R. § 2.122(d).6 See also Hewlett-
Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 1713 (Fed. Cir. 1991)
(where opposer’s copies of registrations submitted with notice of opposition did not
show current status or title they were not properly introduced into the record);
Sterling Jewelers Inc. v. Romance & Co., 110 USPQ2d 1598, 1601 (TTAB 2014) (“The
Board has routinely held that the submission of a photocopy of a pleaded registration,
by itself, is insufficient for purposes of establishing a party’s current ownership, or
the current status, of the registration, and therefore does not suffice to make the
registration of record” even when applicant admitted that opposer “is listed” as the
owner of the pleaded registration); Alcan Aluminum Corp. v. Alcar Metals Inc., 200
USPQ 742, 744 n.5 (TTAB 1978) (plain copies of registrations introduced through
testimony which established ownership of the registrations but failed to establish
that they were currently subsisting were not considered).

Decision: The opposition is dismissed.

6 Applicant denied that Opposer used its mark prior to Applicant. Applicant’s response to
Opposer’s request for admission No. 2 (8 TTABVUE 30).