Svalto, LPv.Handlebar Coffee Roasters, Inc.

Trademark Trial and Appeal Board

Jan 28, 2020

91227050 (T.T.A.B. Jan. 28, 2020)

This Opinion is not a Precedent of the TTAB Mailed: January 28, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Svalto, LP v. Handlebar Coffee Roasters, Inc. _____ Opposition No. 91227050 _____ James L. Anderson III and Marvin Kirby Roberts III of Anderson Roberts, PLLC, for Svalto, LP. Kim R. McDaniel of Howell Moore & Gough LLP, for Handlebar Coffee Roasters, Inc. Before Ritchie, Adlin, and English, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: On October 22, 2014, Handlebar Coffee Roasters, Inc. (“Applicant”) applied to register HANDLEBAR, in standard character form, for “Coffee shop and café services,” in International Class 43.1 Svalto, LP (“Opposer”) filed a notice of opposition, alleging a likelihood of confusion with Opposer’s previously used HANDLEBAR mark. Specifically, Opposer alleged ownership of a United States 1 Application Serial No. 86431946 was filed on October 22, 2014 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging dates of first use and first use in commerce on November 7, 2011. Opposition No. 91227050 - 2 - trademark registration, a Texas state registration, and common law rights, as follows: Paragraph 3: [Opposer] owns the U.S. registration for the mark HANDLEBAR in connection with “restaurant, bar, and catering services” as registered in Registration No. 4,608,851 on September 23, 2014 claiming first use and first use in commerce since at least December 7, 2011.2 Paragraph 4: In addition, [Opposer] owns the Texas state registration for the mark HANDLEBAR in connection with “Bar services; restaurant services; catering services” as registered in Registration Serial No. 801,920,602 on January 23, 2014 claiming first use and first use in commerce since at least December 7, 2011.3 Paragraph 5: In addition, [Opposer] owns common law rights in the HANDLEBAR name and mark in connection with Opposer’s Services.4 Applicant denied the salient allegations of the amended notice, except as follows: Paragraph 4: Applicant has accessed the publicly available information on the United States Patent and Trademark Office concerning the existence of Registration No. 4608851 and admits that the current status is as stated, but is without sufficient information to admit or deny the allegations concerning the dates of first use contained in paragraph four of the Notice. Therefore, on that basis, such allegations are denied.5 We note that although Applicant made this statement in referencing Paragraph 4 of the Notice, Opposer’s allegations regarding its ownership of U.S. Registration No. 4,608,851 were actually contained in Paragraph 3 of the Notice, not Paragraph 4. The 2 1 TTABVUE 4 (para. 3). In the Notice of Opposition, Opposer refers to itself as “Handlebar” as well as “Opposer.” For clarity, and since the term “Handlebar” is the mark at issue in this proceeding, as well as being part of Applicant’s trade name, we refer to the parties as Applicant and Opposer. 3 1 TTABVUE 4 (para 4). 4 1 TTABVUE 4 (para 5). 5 9 TTABVUE 10 (para. 4). Applicant also admitted paragraphs 6 and 7, which refer to the existence and status of Applicant’s application. Opposition No. 91227050 - 3 - answer denies the allegations in Paragraph 3 based on lack of sufficient knowledge and information. We note further that while acknowledging “the current status is as stated” according to the “publicly available information on the United States Patent and Trademark Office,” Applicant goes on to deny the allegations in the paragraph based on lack of sufficient knowledge and information.6 See Fed. R. Civ. P. 8(b)(5); Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 311.02(a) (June 2019) (“If the defendant does not have sufficient information to admit or deny an allegation, the defendant may so state, and this statement will have the effect of a denial as to that allegation.”) Finally, we note that Applicant pleaded several “affirmative defenses,” including that “Opposer has not previously used a mark which is likely to be confused with the Applicant’s mark,” and alternatively, “nor is there any likelihood of confusion, mistake or deception because Applicant’s mark and the pleaded registered mark of Opposer are not confusingly similar.”7 We construe these statements as amplifications of Applicant’s denial of Opposer’s claim of likelihood of confusion. See Morgan Creek Prods. Inc. v. Foria Int’l Inc., 91 USPQ2d 1134, 1136 (TTAB 2009); TBMP § 311.02(d) (“An answer may include affirmative assertions that, although they may not rise to the level of an affirmative defense, nevertheless state the reasons for, and thus amplify, the defendant’s denial of one or more of the allegations in the complaint. These amplifications of denials, whether referred to as ‘affirmative defenses,’ ‘avoidances,’ ‘affirmative pleadings,’ or ‘arguments,’ are permitted by the 6 9 TTABVUE 10 (para. 4). 7 9 TTABVUE 11 (second affirmative defense). Opposition No. 91227050 - 4 - Board because they serve to give the plaintiff fuller notice of the position which the defendant plans to take in defense of its right to registration.”) Only Opposer filed a brief. I. The Record and Evidentiary Issues The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the subject application. Neither party submitted any evidence during their respective trial periods. Opposer argues, in its brief, that “[i]n accordance with the parties’ stipulations and applicable law and regulation” the record includes “the file of U.S. Registration No. 4,608,851 for HANDLEBAR.” There are, however, no stipulations of record. There are several means by which Opposer could have entered its pleaded registration into the record, including as an attachment to its Notice of Opposition, via a Notice of Reliance, as an exhibit to a testimonial declaration, affidavit, or deposition; or, indeed, via stipulation of the parties.8 Opposer did not avail itself of any of these options, and its pleaded Registration No. 4,608,851 is therefore not of record. See UMG Recordings Inc. v. O'Rourke, 92 USPQ2d 1042, 1046 (TTAB 2009) ("The Board does not take judicial notice of registrations that reside in the Patent and Trademark Office.") (citing Corporate Fitness Programs Inc. v. Weider Health and Fitness Inc., 2 USPQ2d 1682, 1683-84, n.3 (TTAB 1987)); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1485 n.4 (TTAB 2007); See also TBMP § 704.03(b)(1)(A) (“The Board does not take judicial notice of a party’s registration.”) 8 37 C.F.R. § 2.122(d)(1) and (d)(2); 37 C.F.R. § 2.123(b). Opposition No. 91227050 - 5 - II. Standing and Priority Standing is a threshold issue that must be proven in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); see also Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) (“The facts regarding standing . . . must be affirmatively proved.”) To have standing, a plaintiff must have a real interest, i.e., a personal stake in the outcome of the proceeding and a reasonable basis for its belief that it will be damaged. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025- 28 (Fed. Cir. 1999). Opposer pleaded ownership of a trademark registration as well as common law rights to the mark HANDLEBAR. As noted, however, Opposer did not introduce into the record any evidence of its use of its alleged HANDLEBAR mark, nor of its ownership of the pleaded registration. Neither did Opposer otherwise establish its standing to bring this opposition. Having failed to establish standing and priority, Opposer cannot prevail in this proceeding. Decision: The opposition is dismissed.