The Shark Rest. Corp.v.Raymond Miranda

Trademark Trial and Appeal Board

Aug 9, 2000

No. 91105056 (T.T.A.B. Aug. 9, 2000)

Paper No. 23
BAC
8/9/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
The Shark Rest. Corp.
v.
Raymond Miranda, dba Shark Bar
_____
Opposition No. 105,056
to application Serial No. 75/076,035
filed on March 19, 1996
_____
Baila H. Celedonia and Kieran G. Doyle of Cowan,
Liebowitz & Latman, P.C. for The Shark Rest. Corp.
Raymond Miranda, pro se.
______
Before Cissel, Chapman and Bucher, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Raymond Miranda, dba Shark Bar, filed an application
to register the mark SHARK BAR on the Principal Register
for “restaurant services.” The application is based on
applicant’s assertion of a bona fide intent to use the
mark in commerce in connection with the specified
services. The word “bar” has been disclaimed.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 105056
2
The Shark Rest. Corp. has opposed registration of
applicant’s mark, alleging that continuously since
December 3, 1986 it has operated a restaurant/bar in New
York City under the mark THE SHARK BAR; that on September
25, 1996, opposer filed application Serial No. 75/171,968
for the mark THE SHARK BAR for “bar and restaurant
services”; and that applicant’s mark, if used in
connection with the services specified in his
application, would so resemble opposer’s previously used
mark as to be likely to cause confusion, mistake, or
deception.
Applicant essentially denies the salient allegations
of the notice of opposition.
The record consists of the pleadings; the file of
the opposed application; the testimony, with exhibits, of
Brian Hinchcliffe, president and chief executive officer
of opposer’s parent company1; and several notices of
reliance filed by opposer. Applicant did not take any
testimony or offer any evidence.2 Only opposer filed a

1 Applicant did not attend the deposition of Mr. Hinchcliffe.
2 Opposer stated in its brief that on October 18, 1999, it
received a document from applicant titled “Rebuttal Testimony.”
There is no such document of record in this case. However, even
if the Board had received applicant’s “rebuttal” document, it
would not have been considered in reaching our decision herein.
Applicant’s testimony period had closed in this case on August
30, 1999, and any testimony or evidence submitted by applicant
outside of his testimony period would have been untimely. See
Opposition No. 105056
3
brief. An oral hearing was not requested by either
party.
Opposer submitted a notice of reliance on a status
and title copy of its Registration No. 2,099,352 for the
mark THE SHARK BAR for “bar and restaurant services.”3
Because
opposer owns a valid and subsisting registration of its
pleaded mark, the issue of priority does not arise. See
King Candy Company v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974); and Humana Inc. v.
Humanomics Inc., 3 USPQ2d 1696 (TTAB 1987). Moreover,
through applicant’s answers to opposer’s first set of
interrogatories (made of record by opposer through a
notice of reliance) it is clear that applicant has not
used his mark in commerce, and the evidence clearly
proves opposer used its involved mark prior to the filing
date of applicant’s involved application.
The marks are essentially identical (the appearance
of the word “THE” in opposer’s mark is of no trademark
significance), and the services are essentially

Trademark Rule 2.121(a)(1). Furthermore, the rebuttal testimony
period is for the plaintiff (opposer), not the defendant
(applicant). See Trademark Rule 2.121(b)(1).
3 Registration No. 2,099,352 issued September 23, 1997 (from
application Serial No. 75/171,968 pleaded by opposer). The word
“bar” is disclaimed. The claimed date of first use is December
3, 1986.
Opposition No. 105056
4
identical. We therefore find that there is a likelihood
of confusion in this case where the identical mark is
used by both opposer and applicant in connection with the
same services. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Opposition No. 105056
5
Decision: The opposition is sustained, and
registration to applicant is refused.
R. F. Cissel
B. A. Chapman
D. E. Bucher
Administrative Trademark Judges,
Trademark Trial and Appeal Board