Investment Management Consultants Association, Inc.v.Alta Cima Advisors, LLC

Trademark Trial and Appeal BoardOct 5, 2012

No. 91190390 (T.T.A.B. Oct. 5, 2012)

Mailed: October 5, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Investment Management Consultants Association, Inc. v. Alta Cima Advisors, LLC _____ Opposition No. 91190390 to application Serial No. 76691880 filed on August 7, 2008 _____ Benjamin B. Lieb and James M. Burke of Sheridan Ross P.C. for Investment Management Consultants Association, Inc. Scott Olle of Alta Cima Advisors, LLC (pro se). ______ Before Bucher, Zervas and Ritchie, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: Applicant, Alta Cima Advisors LLC, filed an application (Serial No. 76691880) for registration on the Principal Register of the mark ALTA CIMA ADVISORS, LLC (in standard character form) for the following services: “financial advisory and investment management services” in International Class 36. Applicant claims first use and THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91190390 2 first use in commerce on December 9, 2004, and has entered a disclaimer of “ADVISORS, LLC”; and a translation statement providing that a translation of “Alta Cima” is “high top.” Investment Management Consultants Association, Inc. (“opposer”) filed an opposition to the registration of applicant's mark. In its amended notice of opposition, opposer pleads (i) ownership of Registration No. 1891540 for the certification mark CIMA for “certifying experienced professionals who provide consulting services in the field of investment management after the completion of certain educational and examination requirements”; (ii) common law use of CIMA since 1988 for providing certification in the field of investment management consulting services; (iii) that applicant’s mark for its services is likely to cause confusion or mistake or to deceive, Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d); and (iv) that applicant does not provide the services set forth in the application. Applicant has filed an answer in which it denied the salient allegations of the notice of opposition. Opposer filed a brief; applicant filed a one page “Response” in which applicant pointed out that opposer’s brief “is two months past the trial dates reset by the Board on 11/10/2010,” but made no arguments on the merits of the case. (Opposer’s brief (filed on August 29, 2011) is timely; Trademark Rule 2.128(a)(1) allows a plaintiff not Opposition No. 91190390 3 more than sixty days after the close of the rebuttal period to file a brief, and the close of the rebuttal period was on June 30, 2011). In its brief, opposer did not discuss its likelihood of confusion claim; it only discussed non-use of applicant’s mark. Hence, opposer waived its likelihood of confusion claim based upon its asserted registration and common law use of its mark. The record consists of the pleadings; the file of the involved application;1 and opposer's single notice of reliance. In addition, applicant filed on March 31, 2011, during its trial period, a document titled, “Pretrial Disclosures and Exhibits.” In a motion filed concurrently with its brief, opposer seeks to strike applicant’s filing. In view of our decision in this case, opposer’s motion to strike is moot. We first consider the question of opposer’s standing to oppose applicant’s application. Standing is a threshold issue that must be proved in every inter partes case. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) (“The facts regarding standing … must be affirmatively proved. Accordingly, [plaintiff] is not entitled to standing solely because of 1 Opposer need not have submitted a copy of applicant’s application with its notice of reliance. Opposition No. 91190390 4 the allegations in its [pleading].”). To establish standing in an opposition proceeding, petitioner must show both “a real interest” in the proceedings as well as a “reasonable” basis for its belief of damage. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). See also, TBMP § 309.03(b) (3d ed. 2012). Opposer submitted with its notice of reliance a photocopy of the original registration certificate that opposer asserted in its complaint. This photocopy does not indicate the current status and owner of the registration as required by Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(2). (The registration issued in 1995). In addition: 1. Opposer did not take advantage of Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), and provide a current status and title copy of opposer’s registration with the original or amended notices of opposition. See also TBMP § 405(a) (3d ed. 2011). 2. None of applicant’s responses to opposer's requests for admissions that opposer submitted into the record with its notice of reliance make an admission directed to the ownership and status of the registration, and applicant has not made any admissions regarding the ownership and status of opposer's registration in its answer. Opposition No. 91190390 5 3. Opposer’s statement in its brief regarding ownership of its registration is not evidence that opposer indeed is the owner. See, e.g., Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1725 n.7 (TTAB 2010) (assertions in brief not evidence unless supported by evidence introduced at trial or except as admission against interest). 4. Opposer’s statement at p. 1 of its notice of reliance – which was signed by opposer’s attorney - that “This registration is valid, subsisting, owned by Oppose[r] …” is not evidence of the same. A notice of reliance is essentially a cover sheet for the materials sought to be introduced. TBMP § 704.02. 5. Opposer did not introduce any evidence into the record establishing common law use. Because opposer, as the party bearing the burden of proof in this proceeding, has not established the status and title of its alleged registration or evidence of use of its alleged mark, it is adjudged that opposer has not established its standing in this case. Because opposer has not established its standing, opposer’s motion to strike is moot. Decision: The opposition is dismissed.