West Indies Trading Company LLCv.In Private Inc.

Trademark Trial and Appeal Board

Feb 24, 2017

No. 91220924 (T.T.A.B. Feb. 24, 2017)

Mailed: February 24, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
West Indies Trading Company LLC
v.
In Private Inc.
————
Opposition No. 91220924
to Application No. 86346070
filed: July 23, 2014
————
Steven Savola, West Indies Trading Company LLC, for Opposer.
Ali R. Latifi, Tucker & Latifi LLP, for Applicant.
————
Before Mermelstein, Hightower, and Lynch, Administrative Trademark
Judges.
Opinion by Mermelstein, Administrative Trademark Judge:
Alleging an intent to use its mark in commerce, In Private Inc. filed an applica-
tion to register the mark TIKI BEACH and design (BEACH disclaimed), as set out
below, for “[m]ens’s and women’s clothing, namely, swimwear and beach cover-ups.”

West Indies Trading Company, LLC opposed registration, alleging a likelihood of
This Opinion is not a
Precedent of the TTAB
Opposition No. 91220924

2

confusion under Trademark Act § 2(d) and dilution under Trademark Act § 43(c)1 in
view of its registered and previously used marks consisting of or comprising the terms
NIKKI or NIKKI BEACH for various goods and services, including some items of
clothing. Applicant denied Opposer’s allegations in its answer.
Upon filing of the notice of opposition, this proceeding was instituted, and the
Board issued an order setting out discovery and trial dates. Nothing further was
heard from either party as discovery and trial dates passed. After Opposer missed its
deadline for filing a brief on the case, the Board issued an order directing Opposer to
show cause why its failure to submit a brief should not be treated as a concession of
the case. Opposer responded to the show cause order, indicating that it had not lost
interest in the case, and that its failure to file a brief was due to docketing error and
corporate restructuring. The show cause order was discharged and Opposer was al-
lowed time to file a trial brief, which it did. (Applicant did not file a brief.)
Opposer bears the burden to prove both its standing and a ground for refusal of
the application by a preponderance of the evidence. Bose Corp. v. QSC Audio Prods.
Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002) (“[t]he burden of proof
rests with the opposer . . . to produce sufficient evidence to support the ultimate con-
clusion of [priority of use] and likelihood of confusion”); Sanyo Watch Co. v. Sanyo
Elec. Co., 691 F.2d 1019, 215 USPQ 833, 834 (Fed. Cir. 1982) (“[a]s the opposer in this

1 The ground of deceptiveness under Trademark Act § 2(a) was also indicated on the elec-
tronic form accompanying the notice of opposition, but was not mentioned in Opposer’s at-
tached pleading or in its brief.
Opposition No. 91220924

3

proceeding, appellant bears the burden of proof which encompasses not only the ulti-
mate burden of persuasion, but also the obligation of going forward with sufficient
proof of the material allegations of the Notice of Opposition, which, if not countered,
negates appellee’s right to a registration”).
The record in this case consists of the pleadings, and pursuant to Trademark Rule
2.122(b)(1), the file of the subject application. Neither party submitted testimony or
a notice of reliance during its assigned trial period. While a registration owned by
Opposer would have been accepted in evidence if attached to the notice of opposition,
Trademark Rule 2.122(d)(1), there were no attachments to Opposer’s notice of oppo-
sition other than its written pleading. Statements made in a notice of opposition are
— unless admitted — merely allegations, subject to proof at trial. In this case, Appli-
cant did not admit any allegations of Opposer’s notice of opposition, and Opposer sub-
mitted no trial evidence. Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017,
2020 n.10 (TTAB 2003) (“Although petitioner pleaded ownership of common-law
marks in the petition to cancel, such matters were denied in respondent’s answer,
and are therefore subject to proof. Without such evidence, petitioner can prove nei-
ther its standing nor its substantive claims.”).
In its brief, Opposer makes a number of statements about its purported use and
registration of its marks, and the fame they have achieved. But these statements
cannot be considered because they have no support in the record. Galen Med. Assocs.,
Inc. v. United States, 369 F.3d 1324, 1339 (Fed. Cir. 2004) (“Statements of counsel . . .
are not evidence.”); In re Simulations Publ’ns, Inc., 521 F.2d 797, 187 USPQ 147, 148
Opposition No. 91220924

4

(CCPA 1975) (“Statements in a brief cannot take the place of evidence.”). Finally, we
note that Opposer attached to its brief copies of two registrations printed from the
electronic database records of the Office, showing their current status and title. These
documents would have been acceptable if attached to the notice of opposition, filed
under a notice of reliance during Opposer’s trial period, or introduced during Op-
poser’s trial period through the testimony of a competent witness. Trademark Rule
2.122(d)(1)–(2). But evidence attached to a trial brief is untimely and cannot be con-
sidered. Starbucks U.S. Brands LLC v. Ruben, 78 USPQ2d 1741, 1748 (TTAB 2006).
We conclude that Opposer has submitted no evidence at all in support of its stand-
ing or its pleaded claims of likelihood of confusion and dilution. Without proof of (at
least) ownership of its pleaded registrations or prior use of a mark likely to cause
confusion or to dilute, Opposer cannot prevail.

Decision: The opposition to registration of Application Serial No. 86346070 for the
mark TIKI BEACH and design is DISMISSED.