Desktop Technologies, Inc.v.FLM Graphics Corp.

Trademark Trial and Appeal Board

Sep 1, 1999

No. 91104845 (T.T.A.B. Sep. 1, 1999)

Paper No. 10
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT. 1, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Desktop Technologies, Inc.
v.
FLM Graphics Corporation
_____
Opposition No. 104,845
to application Serial No. 75/072,159
filed on March 13, 1996
_____
Richard O. Church for Desktop Technologies, Inc.
Gary J. Zalarick of Sammarro & Zalarick, P.A. for FLM
Graphics Corporation
______
Before Seeherman, Chapman and Bucher, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Desktop Technologies, Inc. has opposed the application
of FLM Graphics Corporation to register COLORWORKS as a
trademark for computer generated color prints.1 In its
notice of opposition opposer has alleged prior use of the

1 Application Serial No. 75/072,159, filed March 13, 1996 and
asserting first use and first use in commerce on July 1, 1993.
Opposition No. 104,845
2
mark COLORWORKS for color separation services; ownership of
a Pennsylvania state registration for COLORWORKS and a
federal registration for COLORWORKS for color separation
services; and that applicant’s use of COLORWORKS for
computer generated color prints is likely to cause confusion
or mistake or to deceive.
Applicant filed a reply to the notice of opposition
which the Board characterized as argumentative and failing
to properly respond to the notice of opposition.
Accordingly, applicant was allowed 30 days in which to file
a proper answer. Applicant timely filed such an answer in
which it denied the salient allegations of the notice of
opposition.
The record consists only of the pleadings and the file
of the opposed application. Neither opposer nor applicant
submitted any testimony, and only opposer filed a brief.2
An oral hearing was not requested.
Opposer has utterly failed to establish that it has
priority. Specifically opposer has not submitted any
evidence regarding its prior use of the mark COLORWORKS.

2 Attached to the brief are various exhibits. Exhibits A and B
are submitted here for the first time and are clearly untimely.
Exhibits C, D, and E are brochures which applicant has submitted
as part of its informal reply. The reply, although part of the
proceeding file, does not constitute evidence of record. The
Trademark Rules of Practice have specific provisions for making
evidence of record. Exhibits to answers, let alone exhibits to
"informal" answers, do not form part of the evidentiary record.
See Trademark Rule 2.122(c).
Opposition No. 104,845
3
Nor has it made of record its asserted federal registration.
The copy of the registration filed with its brief has not
been considered. An opposer may make its registration of
record in three ways: submitting two status and title
copies of the registration with its notice of opposition;
submitting, during its testimony period, a status and title
copy under a notice of reliance; or submitting a copy of the
registration as an exhibit to the testimony of a witness
competent to testify as to the status and title of the
registration.
In view of opposer’s failure to establish its priority,
which is an essential element of a Section 2(d) ground, we
need not consider the question of likelihood of confusion.
Decision: The opposition is dismissed.
E. J. Seeherman
B. A. Chapman
D. E. Bucher
Administrative Trademark Judges
Trademark Trial and Appeal Board