New York State Department of Economic Developmentv.I Love Santa Barbara, Inc.

Trademark Trial and Appeal Board

Oct 31, 2007

No. 91165648 (T.T.A.B. Oct. 31, 2007)

Mailed: 10/31/07

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

New York State Department of Economic Development fka The
New York State Department of Commerce
v.
I Love Santa Barbara, Inc.
_____

Opposition No. 91165648
to application Serial No. 78364580
filed on February 9, 2004
_____

Lawrence V. Molinar of CMG Worldwide, Inc. for The New York
State Department of Economic Development fka The New York
State Department of Commerce.

Jeffrey Furr for I Love Santa Barbara, Inc.
______

Before Quinn, Holtzman and Taylor, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

I Love Santa Barbara, Inc. filed an application to
register the mark shown below

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91165648
2
for services identified as “promoting Santa Barbara,
California as a place to live and visit and the economic
development thereof” in International Class 35.1
The New York State Department of Economic Development
opposed registration, alleging that since 1977 opposer and
its predecessors have engaged in a program to promote travel
and tourism in the state of New York; that since 1977 it has
been engaged in the sale and distribution of a wide spectrum
of goods and services under its I♥NY marks; that I♥NY marks
have become synonymous with the state of New York and its
various attractions, commercial markets and entertainment
venues; that opposer owns registrations of various I♥NY
marks for a variety of goods and services, including printed
and paper products, apparel, jewelry, toys, advertising and
multimedia; that opposer’s marks are famous; and that
applicant’s mark is likely to cause confusion or mistake or
to confuse the public into believing that applicant’s goods
are associated with opposer, in violation of Section 2(d) of
the Trademark Act.2

1 Application Serial No. 78364580, filed on February 9, 2004,
alleging March 1, 2002 as the date of first use anywhere and in
commerce.
2 Opposer also asserted that registration of applicant’s I♥SB
mark would likely dilute the distinctive quality of opposer’s
I♥NY marks, in violation of Section 43(c) of the Trademark Act.
However, opposer never discussed this ground in its brief, and,
moreover, it identified likelihood of confusion as the only issue
in the case. (Brief, p. 13). Accordingly, we consider the
dilution claim to have been waived.
Opposition No. 91165648
3
In its answer to the notice of opposition, applicant
“does not deny” that opposer “obtained” its pleaded
registrations, but applicant goes on to essentially deny the
validity of several of the registrations by indicting that
they are either expired or canceled. (Paragraph 5). In
addition, applicant “does not deny” that opposer’s
registrations are prima facie evidence of the validity of
the registered marks and of opposer’s exclusive right to use
I♥NY in commerce in connection with the goods and services
listed in the registrations. (Paragraph 6). Applicant
denied the other salient allegations of the notice of
opposition. Applicant also pleaded certain affirmative
defenses, and further set forth allegations that serve to
amplify its denials.
The Record
There are numerous critical problems with the record
sought to be introduced by opposer. Opposer did not take
any testimony, but rather sought to make of record,
essentially by notice of reliance, a number of exhibits. We
note, however, that almost all of these exhibits are not
appropriate for introduction under a notice of reliance.3

3 These evidentiary problems are virtually identical to the ones
the Board encountered in Opposition No. 91162024, The New York
State Department of Economic Development v. Michael Nnamdi
Stewart (final decision dated March 13, 2007). In that decision,
the Board stated that the evidentiary matters were reminiscent of
the ones in Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d
1400 (TTAB 1998), wherein the opposer also attempted to submit,
Opposition No. 91165648
4
In this connection, applicant, in its brief, objected to
several of the exhibits on a variety of grounds. (Brief,
pp. 2-4).
In order to determine what constitutes the record upon
which we must decide this case, we will examine the parties’
notices of reliance.
Opposer has submitted printouts from various websites.
Webpages may not be made of record, however, by notice of
reliance. As the Board stated in Alfacell Corp. v.
Anticancer Inc., 71 USPQ2d 1301, 1302 n.3 (TTAB 2004):
Internet evidence is not proper subject
matter for introduction by notice of
reliance because the evidence is not
self-authenticating. As the Board has
stated in the past, the element of self-
authentication cannot be presumed to be
capable of being satisfied by
information obtained and printed out
from the Internet. Raccioppi v. Apogee
Inc., 47 USPQ2d 1368, 1370 (TTAB 1998).
See also TBMP §704.08 (2d ed. rev. 1
March 2004).

Accordingly, Exhibits A, C, D, CC, EE, FF, UU and VV, and
the copy of the Kwigy-Bo website that is part of Exhibit Q
are not properly of record, and have not been considered.
Opposer has submitted “soft” copies of its pleaded
trademark registrations. Trademark Rule 2.122(d) provides

by notice of reliance, declarations of the opposer’s officer and
photocopies of goods on which the opposer’s marks appeared. The
Board found that those exhibits were not properly made of record
by opposer’s notice of reliance, and they were not considered.
Opposition No. 91165648
5
the manner in which an opposer may properly make its
registration(s) of record:
(1) A registration of the opposer or
petitioner pleaded in an opposition
or petition to cancel will be
received in evidence and made part
of the record if the opposition or
petition is accompanied by two
copies (originals or photocopies)
of the registration prepared and
issued by the Patent and Trademark
Office showing both the current
status of and current title to the
registration. For the cost of a
copy of a registration showing
status and title, see §2.6(b)(4).

(2) A registration owned by any party
to a proceeding may be made of
record in the proceeding by that
party by appropriate identification
during the taking of testimony or
by filing a notice of reliance,
which shall be accompanied by a
copy (original or photocopy) of the
registration prepared and issued by
the Patent and Trademark Office
showing both the current status of
and current title to the
registration. The notice of
reliance shall be filed during the
testimony period of the party that
files the notice.

Further, the Board’s June 30, 2006 decision denying
opposer’s motion for summary judgment indicated that
“opposer did not submit sufficient evidence of its ownership
of its pleaded registrations,” specifically noting that
opposer did not submit status and title copies of its
registrations, and referring opposer to Trademark Rule
2.122(d)(1) and TBMP §528.05(d) (2d ed. rev. 2004). The
Opposition No. 91165648
6
Board thus found that priority of use remained an issue for
trial. The registrations submitted by opposer during its
testimony period are not copies prepared by the Office
showing current status of and current title to the
registrations.4 Accordingly, opposer’s registrations are
not properly of record. Exhibits MM, NN, OO, PP, QQ, RR, SS
and TT have not been considered.
Opposer submitted the declarations of Thomas Regan and
Danielle Luhmann; these declarations were also submitted in
connection with its motion for summary judgment. Evidence
submitted with a motion for summary judgment is of record
only for purposes of that motion. Thus, to be part of the
evidentiary record to be considered at final hearing, the
evidence must be properly introduced in evidence during the
appropriate testimony period. TBMP §528.05(a) (2d ed. rev.
2004). Further, Trademark Rule 2.123(b) provides, in part,
that “[b]y written agreement of the parties, the testimony
of any witness or witnesses of any party, may be submitted
in the form of an affidavit by such witness or witnesses.”

4 The Board’s new rules allow proof of a pleaded registration by
submission of a “current printout of information from the
electronic database records of the USPTO showing the current
status and title of the registration” as an alternative to
submission of a status and title copy of the registration. See
Trademark Rule 2.122(d) (effective August 31, 2007, by Final Rule
Notice, 72 Fed. Reg. 42242 (August 1, 2007)). However, the rule,
as now amended, applies only to cases filed on or after the
effective date of August 31, 2007, and it is not applicable here.
Further, and in any event, the copies submitted by opposer are
mere photocopies of the registrations, and are not copies
retrieved from a USPTO electronic database.
Opposition No. 91165648
7
No stipulation has been submitted to allow opposer to submit
the testimony of its witnesses by affidavit or declaration.
Accordingly, Exhibits F and G are not properly of record,
and have not been considered.
Opposer submitted several photo prints of what it
asserts to be licensed products. While opposer cites to
Trademark 2.122 in submitting these exhibits, there is
nothing in this rule that provides for the submission of
photo prints of products under a notice of reliance. As
previously discussed, Trademark Rule 2.122(d)(2) concerns
registrations, and Trademark Rule 2.122(e) provides for the
introduction of printed publications and official records
under a notice of reliance. Photo prints of products do not
fall under any of these categories. See Hard Rock Cafe
Licensing Corp. v,. Elsea, 48 USPQ2d at 1403-05.
Accordingly, Exhibits I, J, K, L, M, N, O, P, Q, R, S, T, U,
V and DD have not been considered.
Opposer also submitted copies of license agreements for
several of the products shown in the above-mentioned
exhibits. Because these agreements are not printed
publications or official records, they cannot be made of
record by a notice of reliance. Accordingly, Supplemental
Exhibits K, L, M, N, O, P, Q, R, S, T, U, V, W, X and Y have
not been considered.
Opposition No. 91165648
8
Similarly, the photo prints of a storyboard for a
television commercial, and the photo prints of “image
captures” and artwork attributable to the production of two
motion pictures and a television program, are not proper
subject matter for introduction by way of a notice of
reliance. Accordingly, Exhibits GG, HH, II and JJ have not
been considered.
Opposer also submitted copies of license agreements
related to the uses in the above media. As indicated above,
because license agreements are neither printed publications
nor official records, they cannot be made of record by a
notice of reliance. Accordingly, Supplemental Exhibits Z,
AA, BB and CC have not been considered.
The fact that opposer has accompanied its notice of
reliance with counsel’s affidavit is of no moment. Mr.
Molinar affirms in his affidavit “the authenticity of the
photo prints submitted as true and accurate images of said
specimens, as well as the existence of agreements.”
Firstly, the affidavit in itself is inappropriate inasmuch
as the parties did not agree thereto. See Trademark Rule
2.123(b). Secondly, as indicated earlier, the photo prints
and license agreements are not proper subject matter for
introduction by way of notice of reliance, and Mr. Molinar’s
affidavit does not cure opposer’s failure to follow the
Opposition No. 91165648
9
proper procedures for making this evidence of record in a
Board proceeding.
Exhibit H, opposer’s listing of advertising
expenditures, and Exhibit WW, copies of written
communications between the parties’ attorneys, cannot be
made of record by a notice of reliance, and these exhibits
have not been considered.
Opposer also has submitted with its notice of reliance
copies of catalogs that appear to be catalogs of some of its
licensees or sub licensees. However, because there is no
evidence that these catalogs are available to the general
public in libraries or of general circulation among members
of the public, they cannot be treated as printed
publications. See Daggett & Ramsdell, Inc. v. Procter &
Gamble Co., 275 F.2d 955, 125 USPQ 236 (CCPA 1960) [finding
that Fuller Brush catalogs should not be admitted into
evidence by notice of reliance]. The assumption that
printed publications, such as books and periodicals, may be
submitted by notice of reliance is that a party is or may
readily become familiar with printed matter in libraries
open to the public or in general circulation. Glamorene
Products Corp. v. Earl Grissmer Co., Inc., 203 USPQ 1090
(TTAB 1979). See also Wagner Electric Corp. v. Raygo
Wagner, Inc., 192 USPQ 33, 36 n.10 (TTAB 1976) [“Applicant’s
objections to opposer’s catalogs and house publications are
Opposition No. 91165648
10
well taken because it has not been shown that they are
‘available to the general public in libraries or of general
circulation’”); and Standard Pressed Steel Co. v. Midwest
Chrome Process Co., 183 USPQ 758, 760 n.2 (TTAB 1974)
[Brochures and price lists distributed by third parties do
not constitute printed publications, such as books and
periodicals, available to the general public in libraries or
of general circulation]. Accordingly, Exhibits W, X, Y, Z,
AA and BB are not properly of record, and have not been
considered.
There are a few exhibits that opposer submitted under
notice of reliance that are properly of record. They are
Exhibit B, excerpts from a book; Exhibit E, a newspaper
article; and Exhibit KK, applicant’s responses to opposer’s
interrogatories. Opposer also attempted to introduce
applicant’s responses to opposer’s request for production of
documents, Exhibit LL. Trademark Rule 2.120(j)(3)ii)
provides, however, that “[a] party which has obtained
documents from another party under Rule 34 of the Federal
Rules of Civil Procedure may not make the documents of
record by notice of reliance alone, except to the extent
that they are admissible by notice of reliance under the
provisions of §2.122(e).” The produced documents are not
admissible by notice of reliance. Accordingly, Exhibit LL
Opposition No. 91165648
11
is not properly of record, and these documents have not been
considered.
Applicant, for its part, did not take testimony or
introduce any other evidence. Applicant did, however,
attach to its brief notices of reliance accompanied by
exhibits. There are problems with applicant’s evidentiary
submissions as well.
The overriding problem with applicant’s submission is
its untimeliness. A notice of reliance must be filed during
the offerer’s testimony period; applicant failed to take
this action during the appropriate time period. See TBMP
§704.02 (2d ed. rev. 2004). Further, exhibits attached to a
brief can be given no consideration unless they were
properly made of record during the time for taking
testimony. See TBMP §704.05(b) (2d ed. rev. 2004).
Accordingly, none of the exhibits accompanying applicant’s
brief have been considered in reaching our decision.
In addition to opposer’s Exhibits B, E and KK, the
record includes the pleadings and the file of the opposed
application. Both parties have filed briefs.
Facts
As is readily apparent from the above rulings, there is
very little factual information that is properly of record
about the parties. With respect to opposer and its
activities, the book and newspaper article (Exhibits B and
Opposition No. 91165648
12
E), the only documents of record that contain any
information about opposer, cannot be used to prove the truth
of the statements made therein.
With respect to applicant and its activities, we have
only the interrogatory answers that it provided to opposer.
Applicant was incorporated in 2002, and since that time “has
been actively developing the core business of PhotoTours,
Inc. which has been designed to promote the sale of real
estate and tourism in and around Santa Barbara, California,
using both online and print outlets.” (No. 1). Applicant
states that it “is currently using [its mark] online and
intends to use [its mark] in connection with various
tangible goods once it has been registered,” and that
“[w]hile there are prototypes of such goods and services and
the actual use of [its mark] online, to date there has been
no actual offer of sale of these goods or services bearing
applicant’s mark.” (No. 3). Further, applicant states that
the trade channels for its products are “print media and
Internet” (No. 8), and that its customers are “local
businesses, real estate brokers and agents; and tourists and
real estate consumers from a global audience” (No. 9).
Standing
A threshold requirement to bring an opposition
proceeding is that the plaintiff must establish its
standing. See Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d
Opposition No. 91165648
13
1023 (Fed. Cir. 1999). We find that opposer has failed to
do so in this case.
We note applicant’s statements, in its answer, that it
“does not deny” that opposer obtained certain registrations
(Paragraph 5), and that opposer’s registrations are prima
facie evidence of the validity of the registered marks and
of opposer’s exclusive right to use I♥NY in commerce in
connection with the goods and services listed in the
registrations (Paragraph 6). We find, however, that the
answer did not relieve opposer of its burden of proof
relative to standing. There is no clear admission by
applicant and, in fact, applicant went on in the next
sentence of its answer to point out that several specific
registrations were canceled.
Opposer has the burden to prove its standing. Opposer
failed to meet this burden because it did not make its
evidence properly of record. It is very apparent that
opposer itself did not consider applicant’s answer as an
admission of any aspect of opposer’s case, including
standing or priority. Thus, opposer did not rely on any
perceived “admissions” made by applicant in its answer such
that opposer believed it had no need to file evidence to
prove its standing. Further, opposer, in its brief, relied
upon its improperly submitted evidence rather than on any
perceived admissions by applicant. Thus, opposer was not
Opposition No. 91165648
14
under a mistaken belief that it did not need to file
evidence to prove its standing. And, indeed, opposer,
during its testimony period, attempted to make certain
evidence of record, including its registrations. However,
as discussed above, the evidence was improperly submitted
and thus cannot be considered.
In sum, the record is devoid of any probative evidence
to establish that opposer is more than a mere intermeddler.
Accordingly, we find that opposer has failed to prove its
standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842 (Fed. Cir. 2000).
Priority and Likelihood of Confusion
Even assuming opposer had proven it standing, opposer
has failed to establish priority. For the same reasons as
set out above in finding a lack of proof regarding standing,
opposer has failed to prove that it has priority.
Opposer, during its testimony, attempted to introduce
evidence bearing on priority. Opposer’s burden in this
regard should have been clear to opposer when it received
the Board’s pre-trial order denying opposer’s motion for
summary judgment. In the order, the Board reviewed the
pleadings and opposer’s evidence bearing on priority. The
Board found that priority remained an issue for trial
because “opposer did not submit sufficient evidence of its
ownership of its pleaded registrations.” Thus, opposer was
Opposition No. 91165648
15
on notice that it needed to take affirmative action during
its testimony period to make the registrations of record or
to otherwise prove its priority. See King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974).
Because opposer did not prove priority, it cannot
succeed on the ground of likelihood of confusion.
Decision: The opposition is dismissed.