Treana Winery, LLCv.Niner Wine Estates, LLC

Trademark Trial and Appeal Board

May 9, 2013

No. 92050787 (T.T.A.B. May. 9, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 9, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Treana Winery, LLC
v.
Niner Wine Estates, LLC
_____

Cancellation No. 92050787
_____

Barry Strike of Strike & Techel for Treana Winery, LLC.

Derek J. Westberg of Westberg Law Offices for Niner Wine Estates, LLC.
_____

Before Bergsman, Ritchie and Kuczma, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Treana Winery, LLC (“petitioner”) filed a petition to cancel Registration No.
3505702 for the mark SUPER PASO, in standard character form, for “wine,” in
Class 33.1 As grounds for cancellation, petitioner alleged that SUPER PASO is
merely descriptive or primarily geographically descriptive pursuant to Sections
2(e)(1) and (2) of the Trademark Act of 1946, 15 U.S.C. §§ 1052(e)(1) and (2).

1 Issued September 23, 2008. Respondent disclaimed the exclusive right to use “Super.”
Cancellation No. 92050787

2

Respondent, in its answer, denied the salient allegations in the petition for
cancellation.
The Record
In addition to the pleadings, the file of the subject registration is part of the
record without any action by the parties. Trademark Rule 2.122(b), 37 C.F.R.
§ 2.122(b).
A. Petitioner’s evidence.
Petitioner submitted a notice of reliance on “publicly-available documents
[that] are a representative sample of publications and websites available that show
that purchasers of wine goods associate the term ‘Paso’ with the Paso Robles wine
region.”
B. Respondent’s testimony and evidence.
1. A notice of reliance on dictionary definitions purportedly showing that
the term “paso” has numerous meanings;
2. A notice of reliance on websites purportedly showing that the term
“paso” has numerous meanings and usages;
3. A notice of reliance on complete copies of websites submitted by
petitioner, who allegedly “submitted only selected portions with its Notice of
Reliance”;
4. Testimony deposition of Richard T. Niner, respondent’s owner; and
5. Testimony deposition of James T. Berger, a marketing consultant, with
attached exhibits.
Cancellation No. 92050787

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Standing
A threshold question in every inter partes case is whether the plaintiff has
established its standing. See TBMP § 309.03(b) (3rd ed. rev. 2012). In a Board
proceeding, the plaintiff is required to show that it has a “real interest”; that is, a
“direct and personal stake,” in the outcome of the proceeding. See Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982).
When descriptiveness of the mark is at issue, plaintiff may plead (and later
prove) its standing by alleging that it is engaged in the sale of the same or related
products and that plaintiff has an interest in using the term descriptively in its
business. See Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2
USPQ2d 2021, 2024 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987),
rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988) (in an opposition based on
Section 2(e), an opposer need only assert an equal right to use the mark); Otto Roth
& Co., Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981);
Kellogg Co. v. General Mills Inc., 82 USPQ2d 1766, 1767 (TTAB 2007) (commercial
interest in allegedly descriptive term); Binney & Smith Inc. v. Magic Marker
Industries, Inc., 222 USPQ 1003, 1010 (TTAB 1984). In this regard, petitioner has
made the following allegations in the petition for cancellation:
4. Petitioner operates a winery in the Paso Robles
area of California.
5. Registrant and Petitioner both make and sell wines
in Paso Robles area.
Cancellation No. 92050787

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* * *
8. The term SUPER PASO was in use by Petitioner on
wine and not abandoned prior to the filing of the
Registrant’s application to register SUPER PASO
for wine.
These allegations alone do not conclusively establish petitioner’s standing
because standing is an element of petitioner’s case which must be affirmatively
proved. Ritchie v. Simpson, 50 USPQ2d at 1029; and Lipton Industries, Inc. v.
Ralston Purina Co., 213 USPQ at 189. Even though respondent had effectively
denied the allegations corresponding to petitioner’s standing, petitioner did not
proffer any direct testimony to establish its standing.2 Accordingly, respondent
contends that petitioner failed to prove that it has standing to prosecute this
cancellation proceeding.3
In its brief, petitioner cited the testimony deposition of Richard T. Niner,
respondent’s owner to support that petitioner operates a winery located in the Paso
Robles area.4 However, Mr. Niner did not testify about petitioner’s business, or the
location of its business. Further, petitioner did not rebut respondent’s contention
regarding its lack of standing in its reply brief. Petitioner did not submit any direct
testimony, and there is no evidence in the record, regarding Petitioner’s business.

2 When the defendant denies an averment in the complaint, the plaintiff is required to
submit evidence to prove that fact. See The Telex Corp. v. The Western Union Telegraph
Co., 140 USPQ 498 (TTAB 1964) (where applicant’s answer denied opposer’s claim of title to
the pleaded registration and opposer failed to offer evidence, the opposition was dismissed
because opposer failed to sustain its burden of proof).
3 Respondent’s Brief, pp. 10-11.
4 Petitioner’s Brief, p. 2.
Cancellation No. 92050787

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In view of the foregoing, we find that petitioner has failed to show that it has
a direct personal interest in the outcome of this proceeding, and therefore it has not
sustained its burden of proving that it has standing to prosecute this cancellation
proceeding.
Decision: The petition for cancellation is dismissed with prejudice.