Bed-Check Corp.v.Paul Newham

Trademark Trial and Appeal Board

Oct 27, 1999

No. 91107711 (T.T.A.B. Oct. 27, 1999)

Paper No. 9
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 27, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Bed-Check Corporation
v.
Paul Newham
_____
Opposition No. 107,711 to application Serial No. 75/187,291
filed on October 24, 1996
_____
Frank J. Catalano of Catalano, Zingerman & Associates for Bed-
Check Corporation.
Mark A. Kammer of Kammer & Huff, PLLC for Paul Newham.
______
Before Hohein, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Paul Newham has filed an application to register the
mark "BED-EX" for an "electronic bed occupancy monitor".1
Bed-Check Corporation has opposed registration on the
ground that opposer is "engaged in the manufacture, distribution
and sale ... of electronic bed and chair monitoring/alarm
systems, designed to monitor the activity of persons in medical

1 Ser. No. 75/187,291, filed on October 24, 1996, which alleges a bona
fide intention to use the mark in commerce.
Opposition No. 107,711
2
or other similar care situations"; that since 1977, opposer has
used the mark "BED-CHECK" in connection with "electronic bed and
chair occupancy monitors in the health and patient care
industry"; and that applicant’s mark, when applied to his goods,
so resembles the mark "BED-CHECK," which opposer has previously
registered for "electronic systems--namely, a pressure-sensitive
bed mat connected by wire to a control unit timer, which is
connected by wire to the existing nurse-call system for
monitoring the activity of persons in beds, for example, medical
patients, nursing home residents, and the like,"2 as to be likely
to cause confusion, mistake or deception.
Applicant, in his answer, has denied the salient
allegations of the notice of opposition.
The record consists solely of the pleadings and the
file of the opposed application. Neither party took testimony or
properly introduced any other evidence.3 Briefs have been

2 Reg. No. 1,152,227, issued on April 28, 1981, which sets forth a date
of first use anywhere of April 15, 1977 and a date of first use in
commerce of September 15, 1977.
3 We note, in this regard, that opposer has failed to utilize any of
the various means for making its pleaded registration properly of
record in this proceeding. In particular, as indicated in TBMP
§703.02(a), a party pleading ownership of a subsisting federal
registration may properly make such registration of record by (i)
filing with its notice of opposition two copies of the registration
which have been prepared and issued by the Patent & Trademark Office
("PTO") and which show both the current status of and current title to
the registration; (ii) filing a notice of reliance, during the party's
testimony period for its case-in-chief, on an accompanying copy of the
registration which has been prepared and issued by the PTO and which
shows both the current status of and current title to the
registration; (iii) introducing a copy of the registration, during the
party's testimony period for its case-in-chief, as an exhibit to the
testimony of a witness who has knowledge of the current status of and
title to the registration and who thus can establish that the
registration is still subsisting and is owned by the offering party;
or (iv) having the adverse party stipulate to such facts. See
Opposition No. 107,711
3
filed,4 but an oral hearing was not requested.
Inasmuch as the issues to be determined in this
proceeding, in light of the denials in applicant’s answer, are
priority and likelihood of confusion, and since opposer, having
the burden of proof, has offered no properly admissible evidence
to prove its case, it is accordingly adjudged that the opposition
must fail.
Decision: The opposition is dismissed.
G. D. Hohein
B. A. Chapman
H. R. Wendel

Trademark Rules 2.122(d)(1), 2.122(d)(2) and 2.123(b). Here, opposer
attached only a plain copy of its pleaded registration to its notice
of opposition and, in any event, such copy does not form part of the
record in this proceeding. See Trademark Rule 2.122(c).
4 Although not made of record at trial, opposer with its initial brief
submitted an accompanying plain copy of its pleaded registration.
Such copy, however, fails in any event to demonstrate that the
registration was subsisting and owned by opposer as of the closing
date of its case-in-chief. Applicant, in his brief, correctly
observes that opposer "has provided no evidence of a likelihood of
confusion and has therefore not met its burden of proof in this
Opposition." Opposer’s statement to the contrary in its reply brief
is unavailing since, as stated in TBMP §705.02, "[e]xhibits and other
evidentiary materials attached to a party's brief on the case can be
given no consideration unless they were properly made of record during
the time for taking testimony." Consequently, as set forth in TBMP
§706.02, the "[f]actual 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." Here, as previously pointed out,
opposer simply failed to make a copy of its pleaded registration,
showing that the registration was subsisting and owned by opposer, of
record during the testimony period assigned for presenting its case-
in-chief. The arguments in its briefs concerning its mark and goods
are thus unsupported.
Opposition No. 107,711
4
Administrative Trademark Judges,
Trademark Trial and Appeal Board