The Cool Girls, Inc.v.Idea Nuova, Inc.

Trademark Trial and Appeal Board

Mar 22, 2007

No. 91120915 (T.T.A.B. Mar. 22, 2007)

Mailed: 3/22/07

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

The Cool Girls, Inc.
v.
Idea Nuova, Inc.
_____

Opposition No. 91120915
to application Serial No. 75729470
filed on June 15, 1999
_____

Steven M. Dorvee of Arnall Golden Gregory for The Cool
Girls, Inc.

Roberta Jacobs-Meadway and Paul G. Gagne of Akin, Gump,
Strauss, Hauer & Feld for Idea Nuova, Inc.
______

Before Seeherman, Quinn and Mermelstein, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed to register the mark COOL
GIRLS for “lamps and novelty lighting fixtures” in
International Class 11.1
The Cool Girls, Inc. opposed registration. Although
opposer did not specifically cite to Section 2(d) of the
Trademark Act, it is apparent that opposer is claiming a

1 Application Serial No. 75729470, filed June 15, 1999, alleging
first use anywhere and first use in commerce on April 1, 1999.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91120915
2
likelihood of confusion pursuant to this section. In that
connection, opposer makes the following pertinent
allegations:
Opposer has used the term COOL GIRLS in
connection with educational and
recreational services, namely,
conducting a girls club for low income
and underprivileged girls offering
various programs including workshops in
the field of self-esteem, personal
safety, cultural awareness, conflict
resolution, sexuality, courtesy, career
choices, personal hygiene, and tutoring
and distribution of course materials in
connection therewith since 1991.
Opposer filed its application for
registration of the term COOL GIRLS on
November 26, 1996. It received a
federal trademark registration for this
mark, Registration No. 2,121,454, on
December 16, 1997.

Pursuant to 15 U.S.C. § 1063(a), Opposer
believes it will be damaged by
Applicant’s registration of its COOL
GIRLS mark because such mark is
identical to Opposer’s COOL GIRLS mark,
and the use and registration by
Applicant of the mark COOL GIRLS in
connection with lamps and novelty
lighting is likely to cause confusion,
deception, and mistake among consumers.

Applicant, in its answer, denied the salient
allegations of the notice of opposition.
The record consists of the pleadings and the file of
the involved application. Neither party took testimony nor
filed any other evidence. When opposer failed to file a
brief on the case at final hearing, the Board issued a show
Opposition No. 91120915
3
cause order under Trademark Rule 2.128(a)(3). Opposer filed
an untimely response wherein it requested leave to file a
late brief on the case. Opposer alleged that a brief was
not timely filed because the parties had essentially settled
the case, and that while applicant had agreed to sign the
settlement agreement, it was never signed.2 The Board
granted the motion to file a late brief as conceded, and the
brief was accepted and entered.3 Applicant did not file a

2 According to the papers filed by opposer in response to the
show cause order, opposer last contacted applicant in a letter
dated February 14, 2003, that is, ten days before the close of
opposer’s testimony period on February 24, 2003. Opposer’s
counsel wrote “[w]e sent a written agreement to you on December
30, 2002 and we are surprised that there has been no response
from your client yet.” Applicant’s counsel, in a letter dated
February 19, 2003 and sent by facsimile and regular mail,
apologized for applicant’s delay. Applicant’s counsel went on to
indicate that his client was traveling overseas and that “[o]ur
client hopes to be able to review and execute the agreement...in
the next couple of days. We will forward the agreement...to you
as soon as we receive it from the client.” Notwithstanding
applicant’s nonresponsiveness, opposer took no follow-up action
to preserve its testimony period. See Old Nutfield Brewing Co.
v. Hudson Valley Brewing Co., 65 USPQ2d 1701 (TTAB 2002) [a party
that fails to timely move for extension or suspension of dates on
the basis of settlement does so at its own risk, and should not
expect that such relief will be granted retroactively].
3 The Board, in its order accepting the brief, also responded to
opposer’s “Motion to Enforce Settlement.” More specifically,
opposer asserted that the parties negotiated and finalized a
settlement agreement in this case. Correspondence between the
parties’ attorneys and a copy of the unexecuted agreement
accompanied the motion. Opposer stated that applicant had not
executed or performed under the agreement “even though the
parties had a meeting of the minds with regards to the
settlement” and that the “only remaining matter is that the
settlement agreement needs to be executed and performed.” In
denying the motion, the Board cited to TBMP § 605.03 (2d ed. rev.
2004) and stated that the Board has no jurisdiction to order the
parties to enter into a settlement agreement or to enforce such
an agreement. The settlement agreement remains unexecuted by the
parties.
Opposition No. 91120915
4
brief.4
Section 13(a) of the Trademark Act 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.
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). Further, applicant did not

4 While generally a defendant, if it believes that the plaintiff
has failed to sustain its burden of proof in the case, will file
a brief indicating the inadequacy of the plaintiff’s case, there
is no requirement that a defendant do so. Trademark Rule
2.128(a)(3); and TBMP §801.02 (2d ed. rev. 2004) [“The filing of
a brief on the case is optional, not mandatory, for a party in
the position of defendant.”]. Consequently, it cannot be said
that applicant has conceded the issues herein by failing to file
a brief on the case. Nor does it validate opposer’s claim that
“[a]pplicant appears to have ceased to use the mark.” (opposer’s
memorandum in support of its motion to be allowed to file brief
out of time, p. 2).
Opposition No. 91120915
5
make any admissions in its answer that would excuse opposer
from having to prove its standing and a ground for relief.
Opposer attached exhibits to its final brief on the
case. 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).
Because opposer neither took testimony nor introduced any
other evidence, the exhibits attached to the brief obviously
are not of record. Thus, this material has not been
considered.
Lastly, opposer’s brief contains numerous factual
allegations in support of its claim. However, 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).
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.