Nick Youngv.SMAC, Inc.

Trademark Trial and Appeal Board

Aug 31, 2010

No. 91184724 (T.T.A.B. Aug. 31, 2010)

Mailed:
August 31, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Nick Young

v.

SMAC, Inc.
_____

Opposition No.91184724
to application Serial No. 77382630
filed on January 28, 2008
_____

Charles L. Grotts of Law Office of Charles L. Grotts for
Nick Young

Yuching Huang of Law Offices of Yuching Huang for SMAC, Inc.
______

Before Seeherman, Kuhlke and Cataldo, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

This proceeding started off in the ordinary way.
Opposer, Nick Young, filed a notice of opposition to SMAC,
Inc.’s application to register the mark C LABEL, in standard
character format and with LABEL disclaimed, for shoes.1 The
ground asserted in the notice of opposition was likelihood

1 Application Serial No. 77382630, filed January 28, 2008, based
on Section 1(b) of the Trademark Act (intent-to-use).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91184724
2
of confusion, with opposer alleging that he has prior rights
to the “C LABEL” mark, having used the mark and trade name C
LABEL for the sale and distribution of shoes since at least
as early as December 20, 2003, which is earlier than the
January 2008 filing date of applicant’s intent-to-use
application; that the goods, channels of trade and
purchasers of the parties’ goods are the same and
applicant’s mark is identical in sound and appearance to
opposer’s “C LABEL”; that opposer had, on February 10, 2006,
filed an application, Serial No. 78806536, to register “C
LABEL,” and this application was unintentionally abandoned
because of opposer’s failure to timely file a response to an
Office action, and that he filed a second application to
register C LABEL on February 23, 2008; and that applicant’s
use of C LABEL is likely to cause confusion with opposer’s
mark.
Applicant filed an answer on July 24, 2008 denying the
allegations in the notice of opposition.
At that point the proceeding stopped being “normal.”
Instead, opposer filed a series of papers that were not in
accordance with the trademark rules. On April 16, 2009 he
filed with the Board a copy of his pretrial disclosures.
The Board paralegal issued an order, on April 23, 2009, that
characterized the disclosures as initial disclosures, which
should not be routinely filed with the Board, and advised
Opposition No. 91184724
3
that the Board would give no consideration to these
disclosures.2
On May 22, 2009, three days before the end of opposer’s
testimony period, opposer filed the declaration of his
counsel, Charles L. Grotts, although the parties had not
stipulated that testimony could be submitted in the form of
declarations. See Trademark Rule 2.123(b). Thus, this
declaration cannot be treated as evidence on behalf of
opposer.3
The next event in the proceeding history is the Board’s
show cause order, mailed on November 30, 2009, noting that
opposer had failed to file his brief on the case, and
allowing opposer thirty days to show cause why the Board
should not treat his failure to file a brief as a concession
of the case. Opposer responded to the show cause order on
December 30, 2009 by submitting his brief and the
declarations of himself and his attorney. The brief
actually has two parts: one is titled “Good Cause for Late

2 Even if the disclosures had been correctly referenced by the
paralegal as pretrial disclosures, it remains true that the
disclosures would not be further considered by the Board, i.e.,
pretrial disclosures do not need to be filed and are not
considered evidence, as initial disclosures could be, if properly
filed as evidence. See Trademark Rule 2.120(j)(3).
3 We point out that even if properly of record, opposer’s
counsel’s declaration has little probative value, since
everything that he stated, except for the fact that he had been
unable to contact opposer because Mr. Young was and had been in
China for several months, was on information and belief. The
proper procedure, if opposer was unable to be present for a
testimony deposition during opposer’s testimony period, would
have been to request an extension of the testimony period.
Opposition No. 91184724
4
Filing of Opposer Nick Young’s Main Brief,” and the second
is titled “Grounds for Opposition.”4 Opposer claims in his
brief that there is good cause for the late filing of the
brief, because opposer had not received a copy of
applicant’s answer, and that, because opposer “has clearly
shown that he used C-LABEL for many years before SMAC, Inc.
application was filed, there were grounds to believe that
SMAC, Inc. had lost interest in pursuing its application.”
Brief, unnumbered page 2. Mr. Grotts’ declaration clearly
goes toward the first section, it supports what is
essentially opposer’s request that his late-filed brief be
accepted. Mr. Grotts states that he never received any
notice that applicant had filed its answer, and therefore
did not know that the 60-day time period for filing
opposer’s brief “had started to run,” and that he first
found out that applicant had filed an answer when he
received the Board’s show cause order.
On May 18, 2010 the Board discharged the show cause
order, implicitly accepted opposer’s brief, and set the time
for applicant to file its brief and opposer to file his
reply brief. Applicant timely filed its brief on June 10,
2010. In the brief applicant has responded to opposer’s
arguments regarding the late filing of his brief, and

4 Although opposer has asserted “good cause” for the late filing
of his brief, because the brief was filed after the due date for
the brief, the actual standard is “excusable neglect.”
Opposition No. 91184724
5
applicant’s attorney has submitted a declaration stating,
inter alia, that he served a copy of the answer on opposer’s
counsel on July 24, 2008; and that details his interactions
with opposer’s counsel in terms of applicant’s attorney
visiting opposer’s counsel’s office to inspect and pick up
documents for discovery: “During my visits or phone
conversations, Opposer’s counsel has never questioned the
purposes of my visits and never indicated that he has not
received the Answer.” Applicant’s attorney’s declaration,
¶ 7.
We appreciate that applicant may not have been aware
that opposer’s brief, although not explicitly styled as
such, included what was essentially a motion to reopen his
time to file his brief, and therefore may not have been
aware that it should have filed an opposition to that motion
at that time, rather than waiting until its own brief to
traverse opposer’s arguments and evidence. It was
understandable that applicant did not file a paper in
opposition within fifteen days of the filing of opposer’s
brief, the time period for filing a paper in opposition to a
motion, both because opposer did not file a separate motion
to reopen his time to file his brief and it was not clear
that the show cause order would even be discharged.

Opposition No. 91184724
6
In any event, we need not revisit the Board’s May 18,
2010 order at this point. It was clearly appropriate to
discharge the show cause order, since opposer’s submissions
show that he has not lost interest in the case. As for
accepting opposer’s late-filed brief, there is no point in
reconsidering whether opposer did, in fact, show excusable
neglect; the brief portion of opposer’s filing merely
repeats the allegations set forth in the notice of
opposition, and does not include any argument, and therefore
the brief itself has no effect on our decision herein.
As part of his late-filed brief on the case Mr. Young
also submitted his own declaration, bearing a date of
execution of May 6, 2009. It is not entirely clear for what
purpose this declaration was submitted since, aside from
listing it as part of the caption (“Opposer’s Main Brief;
Declaration of Charles L. Grotts Filed and Declaration of
Nick Young Concurrently Herewith”), the brief makes no
mention of it. The declaration contains the same language
as opposer’s counsel’s declaration of May 21, 2009, except
that it does not include the prefatory language “I am
informed and believe.” To the extent that the declaration
was submitted in connection with the show cause order, that
order has been discharged. To the extent that opposer
submitted it to be considered as his evidence in this
proceeding, this submission is improper for many reasons.
Opposition No. 91184724
7
First, as noted, absent a written stipulation, testimony
cannot be submitted in the form of a declaration. Second,
it is clearly untimely, having been submitted over seven
months after the close of opposer’s testimony period.5
Accordingly, this declaration is not of record, and has not
been considered.
With respect to his reply brief, opposer demonstrated
yet another failure to follow the Trademark Rules of
Practice. Opposer submitted a second declaration, with
numerous exhibits, that he executed on July 7, 2010. As we
have already stated, evidence, including testimony and
exhibits, must be filed during a party’s testimony period,

5 We are also troubled by the fact that the declaration states
that it was executed by opposer on May 6, 2009, but Mr. Grotts,
in his May 21, 2009 declaration, stated that “Nick Young has
been in China on business matters for months. I am unable to
contact him by phone, fax or email.”
It seems strange that, if Mr. Young had been able to execute
his declaration on May 6, 2009, it was necessary for Mr. Grotts
to provide an almost identical declaration on May 21, 2009, and
give the explanation that Mr. Young had been in China for several
months as the reason that Mr. Grotts was not submitting a
declaration from Mr. Young himself. If Mr. Grotts was unable to
contact Mr. Young for months prior to May 21, 2009, we fail to
understand how Mr. Young could have executed on May 6, 2009 a
declaration that was clearly prepared for him by Mr. Grotts. We
also note that, with his reply brief, opposer submitted a copy of
this same declaration, which he cites in the brief; however, the
copy that was submitted with the reply brief, although signed by
Nick Young, does not have the date filled in. And although in
the reply brief opposer states that the declaration was signed on
May 6, 2009 and was “prepared, filed with the Board, and served
on Defendant during Defendant’s [sic] 30-day Trial Period which
ended on May 25, 2009, the declaration was not filed with the
Board at that time (it was not filed until opposer filed his
brief on December 30, 2009), nor do any of the copies of the
declaration that were filed with the Board bear a certificate of
service on applicant; all that is shown are the words CERTIFICATE
Opposition No. 91184724
8
and testimony may not be submitted by declaration without a
written stipulation by the parties. Therefore, the
declaration and accompanying exhibits are not of record, and
we have not considered them.
Opposer has failed to make any evidence properly of
record, and therefore has failed to prove any of the
allegations set forth in his notice of opposition, and
specifically priority of use and likelihood of confusion.6
Accordingly, the opposition is dismissed.
Decision: The opposition is dismissed.

OF SERVICE on the signature page, but there is no actual
certificate.
6 We note that in its brief applicant has referred to some of
the statements made by opposer in the declaration attached to
opposer’s brief. These statements are not sufficient to have us
deem applicant to have stipulated to the submission of the
declaration. Because, as noted, opposer did not submit with his
brief a motion to accept his late-filed brief, applicant was not
aware that it could have filed an opposition to the acceptance of
the brief at the time the brief was filed, nor was it aware that
the Board would simply accept opposer’s brief, instead of merely
finding that the show cause order was discharged. Therefore,
applicant’s brief on the case was the first opportunity it had to
object to opposer’s brief, and its brief on the case, including
the declaration of applicant’s attorney detailing that opposer
had engaged in the proceeding as though he had received
applicant’s answer, shows that it has continued to object to the
consideration of opposer’s brief. In fact, its brief actually
begins with the statement that “Defendant, SMCA, INC. [sic],
objects to the Opposer’s Main Brief of Opposer, Nick Young.” We
regard applicant’s objection as being to the entirety of
opposer’s brief, including the attachments.