Lloyd Eric Cotsenv.Sun Sportswear, Inc.

Trademark Trial and Appeal Board

Mar 30, 1999

No. 91101584 (T.T.A.B. Mar. 30, 1999)

Paper No.28
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 30,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Lloyd Eric Cotsen, substituted for Desiree Chardas
v.
Sun Sportswear, Inc.
_____
Opposition No. 101,584
to application Serial No. 74/643,021
filed on March 6, 1995
_____
C. Dennis Loomis of Troop Steuber Pasich Reddick & Tobey,
LLP for Lloyd Eric Cotsen.
Don R. Mollick of for Sun Sportswear, Inc.
______
Before Sams, Cissel and Quinn, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On March 6, 1995, applicant filed the above-referenced
application to register the mark “GRRLS RULE” on the
Principal Register for “women’s and children’s clothing
namely knit and woven tops, bottoms, shorts, and
nightshirts,” in Class 25. The basis for the application
was applicant’s assertion that it possessed a bona fide
intention to use the mark in commerce.
Opposition No. 101584
2
Following publication of applicant’s mark in the
Official Gazette on October 10, 1995, a timely Notice of
Opposition was filed by Desiree Chardas, an individual doing
business in Los Angeles, California. As grounds for the
opposition, she alleged that she was engaged in the
manufacture, production and distribution of various items of
women’s apparel; that at least as early as January of 1995,
prior to applicant’s filing of the opposed application,
opposer had used the trademark “GIRLS RULE” as a trademark
for the same kinds of products in interstate commerce; that
opposer had filed application S.N. 74/690,588 on June 19,
1995, seeking registration of opposer’s mark based on first
use in January of 1995; and that applicant’s mark, if used
in connection with the goods set forth in the application,
would so resemble opposer’s mark, as used in connection with
opposer’s goods, that confusion would be likely.
Applicant’s answer denied the salient allegations set
forth in the Notice of Opposition.
Opposer subsequently assigned her rights in her
trademark and the goodwill represented by it to Lloyd
Cotsen, who was substituted for her in this proceeding.
Counsel and the trial schedule were both changed
accordingly. Counsel for applicant then sought to withdraw
on the basis that Sun Sportswear had merged with another
entity, but the assignment records in the Patent and
Trademark Office did not reflect this change, so the Board’s
Opposition No. 101584
3
ruling on the motion to withdraw was deferred until counsel
for the alleged assignee, Brazos, Inc., submitted
documentation to establish his client’s clear chain of title
to the opposed application. The motion was subsequently
denied on May 5, 1998 because it was not clear that the
motion had been filed by an attorney.
The trial period closed with neither party’s taking
testimony or having submitted evidence. Opposer did file a
brief, but applicant did not file a brief responsive to it,
and neither party requested an oral hearing before the
Board.
Opposer argues in his brief that the marks are likely
to cause confusion because they are virtually identical and
the goods set forth in the opposed application are the same
as the goods on which opposer has used his mark. Opposer
claims he has established priority because the earliest date
upon which applicant may rely is the March 6, 1995 filing
date of its intent-to-use application, whereas opposer’s
application to register his mark, although filed on June 19,
1995, asserted actual use of opposer’s mark in commerce in
January of that year, which is clearly before the March date
on which applicant can rely.
The burden of proof in an opposition proceeding is on
the opposer. When an opposer fails to take testimony or
introduce any evidence in support of its pleaded claims, it
Opposition No. 101584
4
cannot prevail. Hester Industries Inc. v. Tyson Foods,
Inc., 2 USPQ2d 1646 (TTAB 1987).
In the case at hand, opposer appears to take the
position that the Board can consider the application
referred to in opposer’s pleading and argued in opposer’s
brief as if it were of record, even though opposer did not
even attempt to make it of record, and further, that the
identification of the goods therein and the claim of first
use set forth in that application are sufficient to
establish opposer’s use on such goods prior to the filing
date of the opposed application.
This is plainly not so. The application referred to by
opposer in both his complaint and his brief is not part of
the record in this proceeding. Opposer took no action to
introduce it into the record. Moreover, even if the
application had been properly made part of the record in
this case, it is well settled that “[t]he allegation in an
application for registration, or in a registration, of a
date of use is not evidence on behalf of the applicant or
registrant; a date of use of a mark must be established by
competent evidence.” Rule 2.122(b)(2) of the Trademark
Rules of Practice. As stated in Section 704 of the
Trademark Trial and Appeal Board Manual of Procedure (TMBP),
“Allegations must be established by competent evidence
properly adduced at trial, and the documents and other
things in an application or registration file are not
Opposition No. 101584
5
evidence, in an inter partes proceeding, on behalf of the
applicant or registrant unless they are identified and
introduced in evidence as exhibits during the testimony
period.”
The identification of opposer’s goods and the claim of
opposer’s first use of his pleaded mark which were made in
opposer’s application, even if the application were properly
before the Board in this proceeding, would therefore not
establish opposer’s first use of the mark on such goods on
the date claimed. To be relied upon by opposer, the nature
of the goods and the claimed date of use of a mark must be
established by competent evidence. See: Levi Strauss & Co.
v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).
In a similar sense, the declaration supporting
opposer’s application cannot be relied upon, in this
proceeding, as evidence of the truth of the statement made
therein. Again, these facts must be established by
competent evidence at trial. See British Seagull Ltd. v.
Brunswick Corp., 28 USPQ2d 1197 (TTAB 1993), aff’d.,
Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32
USPQ2d 1120 (Fed. Cir. 1994).
Because opposer had the burden of proving his claim of
priority and likelihood of confusion, but in the instant
case has provided no evidence whatsoever of his use of the
Opposition No. 101584
6
mark on goods referred to in his pleading, much less
evidence that opposer’s use on such products was prior to
the filing of the opposed application, opposer cannot
prevail. Accordingly, the opposition is dismissed.
J. D. Sams
R. F. Cissel
T. J. Quinn
Administrative Trademark Judges
Trademark Trial & Appeal Board