Nadine Moonv.Schenequa Tillman

Trademark Trial and Appeal BoardJan 9, 2014

No. 92054016re (T.T.A.B. Jan. 9, 2014)

Mailed: January 9, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Nadine Moon v. Schenequa Tillman _____ Cancellation No. 92054016 _____ J. Goodwille Pierre for Nadine Moon. Eric Stenshoel of Curtis Mallet Prevost Colt & Mosle LLP for Schenequa Tillman. ______ Denial of Request for Reconsideration _____ Before Bucher, Wellington, and Adlin, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: On October 17, 2013, petitioner filed a request for reconsideration of the decision issued on September 18, 2013 (the “decision”), in which the Board dismissed the petition to cancel the registration of respondent’s mark under Section 2(d) of the Trademark Act. As petitioner acknowledges in her request, the premise underlying a request for reconsideration under Trademark Rule 2.129(c) is that, based on the evidence of THIS OPINION IS NOT A PRECEDENT OF THE TTAB Cancellation No. 92054016 2 record and the prevailing authorities, the Board erred in reaching the decision it issued. See TBMP § 543 (2013) and the authorities cited therein. Petitioner cannot introduce additional evidence via the request and the Board will not entertain arguments previously made in her brief on the case. With the aforementioned principles in mind, we address the points raised by petitioner in her request for reconsideration. Board Refusal to Consider Declaration of Petitioner Petitioner takes issue with the Board’s evidentiary determination that the declarations filed by the parties either constituted improper testimony or were otherwise improperly submitted and could not be considered. Specifically, in the decision, the Board cited to Rule 2.123 and held that “[a]bsent a stipulation by the parties to the contrary, which is not of record, testimony may be taken only ‘by depositions upon oral examination.’” Petitioner admits that no such stipulation is of record, but argues that “it is clear that the parties intended to treat the declarations as testimony and that each party relied on that intent.” Request, p. 2. Petitioner relies on two Board decisions, Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993) and Plus Products v. Don Hall Laboratories, 191 USPQ 584 (TTAB 1976). In Hilson, the Board considered declarations without any stipulation because the non-offering party “made no objection on this basis, but rather, in its briefs, [it] considered the evidence as if properly of record. We therefore view [non-offering party’s] conduct to be a waiver of any objection.” Hilson at 1425, N. 8. Cancellation No. 92054016 3 In Plus Products, the Board considered notices of reliance filed by both parties that were improperly submitted or otherwise untimely, finding: ...[O]pposer filed a notice of reliance on its discovery efforts during its rebuttal period, but since applicant took no testimony, there obviously was nothing to rebut. Applicant, in turn, filed a notice of reliance on its discovery efforts after the close of its testimony period which is manifestly contrary to the intent and purpose of Rule 2.120(b). Once again, however, neither party has objected to the other's notice of reliance for the reasons indicated. Rather, each party has utilized the results thereof in furtherance of his respective position. cf. Rule 2.127(a). Accordingly, this material has been considered in resolving the issue joined by the parties. Plus Products, 191 USPQ at 585, Note 2 (emphasis in bold added). Also, in Plus Products, both parties briefed the issues and relied on the evidence submitted pursuant to the notices of reliance. Upon review of petitioner’s argument, case law, and the facts of this proceeding, we do not believe we erred in the decision by not considering the declarations. The circumstances of this proceeding are significantly different from those in the two decisions that petitioner relies upon. It is clear from the Hilson and Plus Products decisions that both parties in each proceeding had briefed the case and relied on certain non-conforming or otherwise objectionable evidence. In contrast, only one party in this proceeding, petitioner, filed a trial brief and expressly sought to rely on the non-conforming evidence at final decision. Respondent’s intentions with regard to her “statement” remain unclear because it was submitted two weeks prior to her testimony period and self-described as a “response to the petition of [petitioner] to cancel [the subject registration].” Under these circumstances, we find no implicit agreement between the parties or tacit acceptance to the submission of a Cancellation No. 92054016 4 declaration as a substitute for trial testimony by deposition in accordance with the Board’s rules. We also point out that petitioner did not argue in her trial brief that there was an understanding between the parties to accept declarations as testimony. Rather, this was asserted by petitioner for the first time in her request for reconsideration and respondent has not filed a response thereto. While it may have been better practice for respondent to respond to the request for reconsideration for purposes of clarification or confirmation, she was not required to do so. See TBMP § 543. Rather, the burden is on petitioner, as plaintiff in this proceeding, to prove its ground for cancellation by a preponderance of the evidence. The Board has reminded parties who improperly introduce or submit non-conforming evidence that they run the risk the proposed evidence “will not be considered even if the adverse party does not specifically object to it, as long as the adverse party does not specifically treat it as of record such that we can say it has been stipulated into the record.” Calypso Technology, Inc. v. Calypso Capital Management, LP 100 USPQ2d 1213,1216 (TTAB 2011). In this case, petitioner acted at her peril by submitting her own testimony in the form of a declaration without obtaining a stipulation from her opponent. This is not the first time petitioner’s failure to comply with the Board’s rules has had adverse consequences. Board’s Order of September 18, 2012. Board’s Refusal to Consider Petitioner’s Own Discovery Responses to Respondent’s Discovery Requests In the request for reconsideration, petitioner asserts the Board erred by not allowing the introduction of petitioner’s responses to respondent’s discovery Cancellation No. 92054016 5 requests. Petitioner seems to acknowledge that the evidence it seeks to introduce was not introduced in compliance with the Board’s rules. (“The Board has relied to what is ordinarily done by stating that petitioner was not allowed to submit her own responses to discovery request (sic) from respondent.” Req. for Recon. at p. 4) In any event, the decision clearly explains the authority for not considering such submissions. Nevertheless, petitioner reasons that her responses should be considered based on respondent’s conduct during the proceeding as well as respondent’s reliance on some of the same discovery responses in support of a motion filed earlier in the proceeding. These issues were already addressed in the Board’s decision and petitioner’s arguments are not persuasive. We remain unconvinced and decline to allow the introduction by petitioner of her own responses to respondent’s discovery requests. Whether the Evidence of Record Supports a Finding of Likelihood of Confusion Petitioner argues that the Board “should reconsider and reverse their decision” with regard to the likelihood of confusion. Req. for Recon. at p. 5. Petitioner conditions this contention, however, on “[i]f the Board reviewed the evidence relied on from Petitioner that [the] Board did not allow.” Id. Inasmuch as our evidentiary determinations remain unchanged, the request for reconsideration is denied. Put simply, and for the reasons stated in our decision, the record does not support a finding that petitioner has priority or that there is a likelihood of confusion. We address petitioner’s assertion that it was “inaccurate” for the Board to state in the decision (on page 9) that, “The only admission that involves the mark WHO MADE THE CAKE is found in Admission No. 2.” We acknowledge that some Cancellation No. 92054016 6 clarification to that statement is necessary. In particular, while Admissions Nos. 1, 5 and 9 make reference to WHO MADE THE CAKE, it is solely Admission No. 2 that refers to the term as a “mark.” Thus, all of the admission requests taken together, and deemed admitted, do not establish certain elements necessary for petitioner to prevail on the ground of priority and likelihood of confusion. Specifically, There is no admission, or any other evidence, regarding any rights that petitioner may have in the pleaded mark WHO MADE THE CAKE for particular goods or services. In fact, petitioner has not established when she began rendering any services under the pleaded mark. (Decision at p. 9)1 Finally, petitioner argues that the Board “committed error because from a public policy perspective the Board is rewarding Respondent for not participating.” Req. for Reconsideration, p. 9. Petitioner does not cite any authority to support this assertion and we reiterate that petitioner, plaintiff, has the burden of proof in this proceeding. Respondent, as defendant, needs only to file an answer denying the essential allegations of the petition to cancel, and was not obligated to present evidence at trial. If respondent failed to perform discovery obligations, the remedy was for petitioner to file a timely motion to compel action and, if appropriate, seeking sanctions. In sum, petitioner cannot rely on respondent’s inactivity as an 1 Because we find that petitioner has not established any trademark rights in WHO MADE THE CAKE, we necessarily disagree with petitioner’s assertion in the request for reconsideration that the Board erred by not addressing the argument that her mark is “strong and entitled to broad protection.” Put simply, we do not address the strength of a purported mark when no rights therein have been established. Cancellation No. 92054016 7 excuse or reason for her failure to properly introduce evidence necessary to prove the pleaded grounds for cancellation. In view thereof, petitioner’s request for reconsideration of the Board’s decision is denied, and the decision of September 18, 2013 stands.