Leo Stollerv.Karen Ponce

Trademark Trial and Appeal Board

Jan 22, 2004

No. 91120339 (T.T.A.B. Jan. 22, 2004)

Mailed: 1/22/04
Hearing: Paper No. 42
October 28, 2003 ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Leo Stoller
v.
Karen Ponce
_____
Opposition No. 91120339
to application Serial No. 75678039
filed on April 9, 1999
_____
Leo Stoller, pro se.
Karen Ponce, pro se.
______
Before Seeherman, Holtzman and Drost, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Leo Stoller has opposed the application of Karen Ponce
to register STEALTH SHELF, with the word "Shelf" disclaimed,
as a trademark for "shelving, namely, a spacing device
having four non-metal spacers attached to a rigid frame, the
spacing device being used for stacking electronics
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91120339
2
equipment."1 As grounds for opposition, opposer has alleged
that he has priority of use of the mark STEALTH in numerous
classes of goods and services including on similar goods as
those of applicant; that opposer has used STEALTH as a trade
name, corporate name, service mark and trademark since at
least 1981; that applicant made no bona fide use of her mark
in commerce prior to the filing of her application; that
opposer owns a number of registrations for STEALTH and marks
in which STEALTH is a component, as well as for applications
for STEALTH marks; that applicant's use of STEALTH SHELF for
her identified goods is likely to cause confusion with
opposer's marks and name; that applicant's statement in her
application that she had a bona fide intent to use her mark
in commerce was false and fraudulent; that at the time
applicant signed her application she was aware that another
party had a right to use the mark on the same or similar
goods; that applicant's drawing of her mark in her
application is not a substantially exact representation of
the mark, and does not show the mark as intended to be used
in connection with the goods; that applicant's mark is
merely descriptive or deceptively misdescriptive of her
goods; that applicant's mark does not function as a
trademark, but as a functional configuration; that
1 Application Serial No. 75678039, filed April 9, 1999, based on
an asserted bona fide intention to use the mark in commerce.
Opposition No. 91120339
3
applicant's mark is a mere design which does not function as
a mark "separate and apart from its display thereon."
In her answer, applicant denied the salient allegations
of the notice of opposition.
Opposer and applicant both filed briefs, and opposer
filed a reply brief.2 Both parties were present at an oral
hearing before the Board.3
Before discussing the substantive issues in this
proceeding, there are several pending motions which we must
address. On September 17, 2002, opposer, Leo Stoller, filed
a motion to amend the notice of opposition to join or
substitute Central Mfg. Co., noting that in another
proceeding before the Board, No. 91117894, the Board granted
such a motion. However, the circumstances in the two
proceedings are very different. Unlike Opposition No.
91117894, in this case the question of whether Central Mfg.
2 Applicant has objected to the exhibits attached to opposer's
trial brief as not being properly in the record. We agree. None
of the exhibits has been considered.
3 At the oral hearing it was discovered that both opposer's
reply brief and the "Testimonial Deposition" of Leo Stoller had
not been associated with the file, and the Board had no
indication that they had ever been received. Opposer provided
copies of these documents; the Notice of Reliance accompanying
the testimonial deposition bears a certificate of mailing and a
certificate of service dated September 13, 2002, and the reply
brief bears a certificate of mailing and certificate of service
dated April 17, 2003. Applicant was given the opportunity to
advise the Board as to whether she had ever received copies of
the Stoller deposition or the reply brief and, if not, whether
she wished to object to them as having not been served on her.
No word having been received from applicant, we have considered
the deposition and the reply brief to be part of the file. We
discuss the admissibility of the deposition infra.
Opposition No. 91120339
4
Co. should be an opposer was answered in the negative by Leo
Stoller himself earlier in this proceeding. The original
notice of opposition identified the opposer as "Leo Stoller,
d/b/a Central Mfg. (a Delaware Corporation)." Opposer was
advised by the Board, in an order dated March 15, 2001, that
because a corporation is a separate and distinct legal
entity from its owners or shareholders, opposers were
allowed thirty days to pay an additional opposition fee or
to inform the Board which entity would go forward with the
matter, failing which Central Mfg. would be dropped as a
named opposer. Leo Stoller then informed the Board, on
March 28, 2001, that he would be the opposer. Thus, opposer
had the opportunity to join or substitute Central Mfg. Co.
in the early stages of this proceeding, and he specifically
declined to do so. Instead, he waited until discovery was
closed to file his motion. To grant such a motion at this
point would clearly be prejudicial to applicant, as well as
against the interests of judicial economy. The motion to
join or substitute Central Mfg. Co. is therefore denied.
Opposer has moved for reconsideration of the Board
order dated July 17, 2002, and specifically the Board's
trial order stating that discovery was closed. This motion
is also denied. No purpose would be served at this stage of
the proceeding to allow opposer to take additional
discovery. Moreover, in view of our reasons for dismissing
Opposition No. 91120339
5
this opposition proceeding, as discussed hereafter, opposer
has suffered no prejudice by the Board's not allowing
additional time for discovery in its July 17, 2002 order.
Applicant has moved for sanctions, and opposer has
opposed the motion and has cross-moved for sanctions. Much
of applicant's motion is, in actuality, an objection to
opposer's testimony depositions, and this objection will be
discussed in connection with that testimony. With respect
to the request for sanctions, applicant contends that
opposer signed certificates of service with false statements
as to the date of service, as shown by the postmark dates on
such documents.4 Opposer has cross-moved for sanctions on
the basis that applicant failed to provide a "safe harbor"
to opposer. Opposer contends that applicant should have
given opposer an opportunity for correction in order for
opposer to "withdraw its pleading." Opposer contends that
sanctions should be imposed against applicant for the filing
of its "frivolous" motion under Rule 11.
With respect to applicant's contentions that opposer
has falsely asserted service dates in two of its
4 Applicant also points out that opposer's motion for
reconsideration filed August 16, 2002 identifies opposer as
"potential opposer" instead of "opposer," and that on August 20,
2002 opposer served on applicant notices to take testimony by
deposition in which the signature line identified the signer of
"Leo Stoller d/b/a Central Mfg." (although opposer is correctly
identified in the caption of the proceeding). We consider these
misidentifications to be in the nature of typographical errors,
and deny applicant's motion for sanctions on this basis.
Opposition No. 91120339
6
certificates of service that are belied by the postmark
dates on the envelopes for those papers, opposer has not
provided any explanation as to the discrepancies between the
dates shown in the certificates of service and the dates
stamped on the respective envelopes by the U. S. Postal
Service. Nor has opposer offered to withdraw these papers.
However, because applicant did not comply with the safe
harbor provisions of Fed. R. Civ. P. 11, we decline to
impose sanctions on opposer. We also deny opposer's cross-
motion for sanctions. It is true that applicant had
previously been advised, in connection with her motion for
sanctions because of "unfounded claims" in opposer's notice
of opposition, as to the "safe" harbor" provisions of Rule
11. However, because applicant is acting pro se, and this
is presumably the first Board proceeding in which she has
been involved (unlike opposer), and because her complaint in
the current motion differs in nature from the prior motion,
we decline to enter any sanctions against applicant. In
particular, we believe that opposer's suggested sanction of
denying applicant the registration of her mark would be too
harsh a sanction in these circumstances.
Opposer has captioned its brief on appeal as "trial
brief and request for leave to amend the complaint to
conform to the evidence." Opposer has not indicated in his
brief in what manner he believes the notice of opposition
Opposition No. 91120339
7
should be amended (nor has any evidence been submitted which
would warrant any amendment), and therefore the request for
leave to amend the complaint is denied.
Finally, on September 5, 2003, after briefing was
completed, opposer filed a request that the Board take
judicial notice of the Board's decision in Opposition No.
120,339, in which opposer herein was the opposer. Although
the Board may take judicial notice of decisions it has
rendered, there is nothing in this decision that may be
considered pertinent to the present proceeding. That is,
any findings of fact in that opinion would be limited to
that proceeding; this is a separate proceeding, involving a
different defendant, and opposer must therefore establish in
this proceeding any fact on which he wishes to rely. Nor is
the decision in the prior proceeding relevant for any
conclusions of law, since that decision was specifically
marked as "Not Citable as Precedent of the TTAB."
This brings us to the evidence in the present
proceeding. The file of applicant's application is
automatically of record. See Trademark Rule 2.122(b).
Applicant has not made any evidence of record.
Opposer has submitted the "testimonial depositions" of
Leo Stoller and Gene Marculis. Applicant has objected to
this evidence on a number of bases. Prior to the taking of
the depositions, applicant contended that she was not given
Opposition No. 91120339
8
adequate notice, and that both depositions were noticed for
the same time, in contravention of Trademark Rule 2.123(c).5
Applicant has continued to object to any consideration of
the testimony depositions, both in her trial brief and at
the oral hearing. In her brief, applicant also makes the
point that none of the attachments to the testimony
depositions was authenticated.
With respect to whether opposer provided adequate
notice for the testimony depositions, applicant has
acknowledged that she received the notices on August 26,
2002 for depositions that were scheduled for September 4,
2002. We consider such notice to be adequate.
Opposer also scheduled both testimony depositions for
12:00 on September 4, 2002. This is a technical violation
of Trademark Rule 2.122(c), which provides, inter alia, that
"No party shall take depositions in more than one place at
the same time, nor so nearly at the same time that
reasonable opportunity for travel from one place of
examination to the other is not available." However,
because both depositions were scheduled for the same place,
and apparently were taken one after the other (the
5 Applicant filed this as a combined motion, and captioned it as
a motion for sanctions. As a result, the Board did not recognize
the time-sensitive nature of the motion. Applicant is advised
that the preferable procedure to object to testimony depositions
before they are taken is to file a motion to quash, identified as
such, and to contact the Board by telephone to advise the
interlocutory motions attorney that an immediate ruling is
required.
Opposition No. 91120339
9
"transcripts" of the depositions do not indicate the time at
which they were taken), there was no prejudice to applicant.
That is, applicant was not required to defend two different
depositions taking place at the same time. Thus, these
objections are overruled.
However, the so-called testimony submitted by opposer
is not admissible as evidence and cannot be considered.
Each of the "testimonial depositions" submitted by opposer
are essentially the same. They appear to have been prepared
by Mr. Stoller, rather than a court reporter. The "Direct
Examination" of opposer consists of the following "question"
by Leo Stoller: "I am submitting into evidence the attached
affidavit of Leo Stoller in support of the Opposer's
Opposition." It is signed before Jack B. Brodnicki,
identified as a Notary Public for the State of Illinois.
Attached to it is the Affidavit of Leo Stoller which, again,
is signed before a notary public.
The "deposition" of Gene Marculis consists of the
following questions and answers on "Direct Examination"
taken by Leo Stoller:
Q. Mr. Marculis, I am submitting to you
a true and correct copy of an affidavit
which I would like you to identify.
Have you seen that affidavit before?
A. Yes.
Q: Is that your signature at the bottom
of the affidavit?
Opposition No. 91120339
10
A. Yes.
Q. I would like to submit the attached
affidavit and offer it into evidence in
support of the Opposer's case.
This is followed by the sentence, "I do subscribe and make
oath that the same is a true and correct copy of my
affidavit so given as aforesaid," below which is Mr.
Marculis's signature. It was subscribed and sworn to before
Jack B. Brodnicki, a notary public for the State of
Illinois. Attached to it is the "Affidavit of Gene
Marculis," also notarized by Jack B. Brodnicki, as a notary
public.
Opposer is seeking to submit as testimony the
affidavits of himself and of Gene Marculis. However,
affidavits may be submitted as evidence only if stipulated
to by the parties. See Trademark Rule 2.123(b). There is
clearly no stipulation by applicant to the submission of Mr.
Stoller's and Mr. Marculis's affidavit as evidence; on the
contrary, applicant has continued to object to opposer's
entire submissions.
We note that these affidavits purport to be submitted
as exhibits to the so-called testimony depositions.
However, opposer cannot circumvent the proper method for
making evidence of record in such a fashion. Trademark Rule
2.123(b) clearly states that the testimony of a witness may
be submitted in the form of an affidavit by written
Opposition No. 91120339
11
agreement of the parties, and subsection (l) of that rule
states that evidence not obtained and filed in compliance
with Trademark Rule 2.123 will not be considered. Because
there is no agreement by applicant to opposer's submission
of affidavit evidence, and because applicant has not treated
this evidence of record (by which we could deem it to have
been stipulated into the record) and, moreover, has
continued to object to it, we find that this affidavit
evidence is inadmissible.
We would also point out that the "testimony
depositions" do not appear to have been taken as prescribed
by Trademark Rule 2.123. Subsection (e)(2) of that rule
provides, in part:
The deposition shall be taken in answer
to questions, with the questions and
answers recorded in their regular order
by the officer, or by some other person
(who shall be subject to the provisions
of Rule 28 of the Federal Rules of Civil
Procedure) in the presence of the
officer except when the officer’s
presence is waived on the record by
agreement of the parties.
Although Mr. Marculis's "deposition" is in a question-
and-answer format, it appears that the "testimony" was not
taken before a court officer, with the questions and answers
recorded in their regular order. The deposition was
scheduled for noon on September 4, 2002, and the notary's
stamp shows that the document was signed before the notary
Opposition No. 91120339
12
on September 4, 2002. Thus, it appears that the
"transcript" was prepared in advance of the so-called
deposition, and was not a transcript of questions and
answers that were asked and answered at the "deposition."
This is further shown by the "legal" language purported to
be said by Mr. Marculis at the end of his deposition: "I do
subscribe and make oath that the same is a true and correct
copy of my affidavit so given as aforesaid." We do not find
it credible that Mr. Marculis would speak in this manner.
In view of the September 4, 2002 date shown by notary's
acknowledgement, Mr. Stoller's "deposition" also appears to
have been prepared in advance, rather than being recorded
before an officer designated by Rule 28 of the Federal Rules
of Civil Procedure. See Trademark Rule 2.123(d).
As opposer points out in his reply brief, applicant did
not move to strike opposer's testimony from the record. It
is possible, of course, that applicant believed that her
earlier objection to the taking of the depositions made the
filing of a motion to strike unnecessary. In any event, we
do not regard the rule for taking testimony by having
questions and answers recorded by an officer to be a merely
technical requirement, which had to be seasonably raised by
applicant. Rather, such a procedure goes to the very heart
of the taking of an oral deposition; it is obviously not an
oral deposition if the witness simply is shown a written
Opposition No. 91120339
13
document and signs it in the presence of a notary public.
Therefore, we find that opposer's failure to comply with
this rule for taking oral depositions provides a further
basis for our not considering the "depositions" of opposer
and of Mr. Marculis.
In general, opposer has not complied with the rules in
connection with testimony taken by depositions upon oral
examination. For example, opposer has utterly failed to
follow the requirements of Trademark Rule 2.123(f):
(f) Certification and filing of
deposition.
(1) The officer shall annex to the
deposition his certificate showing:
(i) Due administration of the oath by
the officer to the witness before the
commencement of his deposition;
(ii) The name of the person by whom the
deposition was taken down, and whether,
if not taken down by the officer, it was
taken down in his presence;
(iii) The presence or absence of the
adverse party;
(iv) The place, day, and hour of
commencing and taking the deposition;
(v) The fact that the officer was not
disqualified as specified in Rule 28 of
the Federal Rules of Civil Procedure.
Although these requirements may be waived, Rule
2.123(f) states that such a waiver must be reflected in
the certificate:
(2) If any of the foregoing requirements
in paragraph (f)(1) of this section are
waived, the certificate shall so state.
Opposition No. 91120339
14
Here, however, no certificates whatsoever were filed in
connection with Mr. Stoller’s and Mr. Marculis’s
depositions.
We find opposer’s failure to comply with this rule
surprising since Mr. Stoller, even though he is appearing
pro se, has been involved in other proceedings at the Board.
The failure to submit the required certificate, which would
require, inter alia, the name of the person by whom the
deposition was taken down, lends further support to our view
that the paper submitted as a testimony deposition was
prepared prior to the witnesses’ appearance at the
“deposition.” (We would also point out that, because there
is no certificate, we cannot determine whether the notary
public who witnessed the signatures administered the oath to
each witness before his “deposition” and whether the notary
public is an officer before whom the deposition could be
taken, that is, an officer within the meaning of Rule 28 of
the Federal Rules of Civil Procedure.
Although opposer has failed to comply with this section
of Rule 2.123, we do not consider the depositions
inadmissible on this basis. Applicant did not object to the
lack of certificates for the depositions (perhaps because
she is acting pro se and is unfamiliar with the way
transcripts of testimonial depositions in Board proceedings
normally appear). As a result, opposer did not have an
Opposition No. 91120339
15
opportunity to cure the deficiency by submitting the
required certificates, assuming he could do so. Therefore,
it is not for this reason, but for the other reasons
discussed previously, that we deem the “testimonial
depositions” to be inadmissible.
Because opposer has not submitted any admissible
evidence, we find that opposer has not demonstrated his
standing in this proceeding. The standing question is a
threshold inquiry made by the Board in every inter partes
case. The opposer must establish that he has "a real
interest, a personal stake, in the outcome of the proceeding
and is more than a mere intermeddler." Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999). See also
Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823
F.2d 490, 2 USPQ2d 2021, 2023 (Fed. Cir. 1987); and Lipton
Industries, Inc. v. Ralston Purina Company, 670 F.2d 1024,
213 USPQ 185 (CCPA 1982). Because there is no evidence
whatsoever in this proceeding, opposer has not shown his
standing.
Nor is there any evidence in support of the grounds
pleaded in opposer's notice of opposition or argued in his
trial brief. Accordingly, opposer has failed to demonstrate
that he is entitled to judgment on any of these grounds.
Decision: The opposition is dismissed.