Winsor Grain, Inc.v.Turf-Seed, Inc.

Trademark Trial and Appeal Board

Aug 17, 2006

No. 91162188 (T.T.A.B. Aug. 17, 2006)

Mailed: August 17, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board

Winsor Grain, Inc.
v.
Turf-Seed, Inc.
_____

Opposition No. 91162188

_____

Richard O. Bartz, Esq. for Winsor Grain, Inc.

Arthur L. Whinston of Klanquist Sparkman, LLP for Turf-Seed,
Inc.
______

Before Bucher, Holtzman and Cataldo, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

On August 8, 2003, applicant, Turf-Seed, Inc., filed an
application to register the mark CALIFORNIA GOLD (“CALIFORNIA”
disclaimed) based upon an allegation of a bona fide intention
to use the mark in commerce for “grass seed” in International
Class 31.1

1 Application Serial No. 76538911.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opp. No. 91162188
2
Registration has been opposed by Winsor Grain, Inc.
(“Winsor”). As grounds for opposition, opposer asserts that it
has used the mark CALIFORNIA GOLD for its agricultural seeds
since a date prior to the August 8, 2003 filing date of the
involved intent-to-use application and that applicant's mark
CALIFORNIA GOLD when used on applicant's goods so resembles
opposer's mark CALIFORNIA GOLD for agricultural seeds as to be
likely to cause confusion.
Applicant's answer consists of a general denial of the
allegations in the opposition.
The record includes the pleadings and the file of the
involved application. In addition, opposer has filed a notice
of reliance on the following:
(1) A certified copy of application Serial No. 76594623
filed by Winsor Grain, Inc. (opposer herein) on June 3, 2004,
for the mark CALIFORNIA GOLD for goods identified as
“agricultural seeds for planting, namely, wheat, barley, Sudan
grass and alfalfa seeds.” The application includes a
disclaimer of “CALIFORNIA” and asserts dates of first use and
first in commerce on August 2, 1992.
(2) An Office action dated January 14, 2005 citing the
application involved herein as a potential bar to registration
of opposer's mark, and refusing registration of the mark as
Opp. No. 91162188
3
primarily geographically descriptive under Section 2(e)(2) of
the Trademark Act.
(3) A “true and correct copy,” according to opposer, of
opposer's response to the Office action which includes argument
by Winsor that the mark is not geographically descriptive of
the goods; and a declaration of Winsor's president and owner,
Mr. William Cook, who attests to, inter alia, the first use of
the mark CALIFORNIA GOLD in 1992, Winsor's market share for the
identified goods, and annual sales under the mark. The
declaration is accompanied by exhibits including a copy of
Winsor's prior registration (No. 1826536) of the mark
CALIFORNIA GOLD for “agricultural seeds for planting; namely,
wheat, barley, Sudan grass and alfalfa seeds” which, according
to Mr. Cook, was “inadvertently cancelled due to failure to
comply with the use and fee requirements of the U.S. Trademark
Law.”2
Opposer did not take any testimony. Applicant did not
take any testimony or submit any other evidence in its own
behalf. Only opposer filed a brief. Neither party requested
an oral hearing.
Opposer argues in its brief that “applicant's failure to
present testimony to support a bona fide intention to use the

2 Office records show that the registration was cancelled under
Section 8 of the Trademark Act on April 28, 2001.

Opp. No. 91162188
4
trademark in commerce results in Applicant's abandonment of the
mark CALIFORNIA GOLD.” Brief at 5. Opposer argues with
respect to the issue of likelihood of confusion that opposer
has used the mark since August 1992; that applicant's and
opposer's marks, both CALIFORNIA GOLD are identical in all
respects; and that the respective goods are related and could
be marketed in the same trade channels to the same potential
purchasers.
The claim of abandonment was neither pleaded by opposer
nor tried by the parties, and therefore it will not be
considered. See Hilson Research Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993). See also TBMP
§314 (2d ed. rev. 2004) and cases cited therein. Moreover,
opposer did not present any evidence on this claim. The burden
is on opposer, as plaintiff in the proceeding, to come forward
with proof of the essential elements of its claims, regardless
of whether applicant offers any evidence.
As to opposer's pleaded claim of likelihood of confusion,
we must first address the admissibility of the documents
offered into the record by opposer's notice of reliance. The
certified copy of opposer's application and the Office action
are admissible by notice of reliance as official records under
Trademark Rule 2.122(e). That rule requires submission of “the
official record or a copy thereof whose authenticity is
Opp. No. 91162188
5
established under the Federal Rules of Evidence.” The document
that opposer has identified as a “true and correct” copy of a
response to the Office action appears to be opposer's own file
copy of the document and does not even reflect that it was
received by the Office. Consequently this document does not
qualify as an official record, as contemplated by Rule
2.122(e), and it is therefore not admissible by notice of
reliance. See Hard Rock Cafe International (USA) Inc. v.
Elsea, 56 USPQ2d 1504 (TTAB 2000); and Weyerhaeuser Co. v.
Katz, 24 USPQ2d 1230 (TTAB 1992).
However, even assuming that the response, like the
application, does qualify as an official record, such documents
are of record only for what they show on their face. The
statements made in these documents, including the dates of use
asserted in the application and the statements made in Mr.
Cook's declaration, are not admissible for their truth, and do
not constitute evidence in opposer's behalf. See Sunbeam Corp.
v. Battle Creek Equipment Co., 216 USPQ 1101, 1102 n.3 (TTAB
1982) (“statements made in an application for registration do
not constitute admissible evidence in inter partes trademark
proceedings”; Section 2(f) affidavit in application not
admissible). See also Trademark Rule 2.122(b)(2);3 British

3 The rule provides, in relevant part, “The allegation in an
application for registration, or in a registration, of a date of use
Opp. No. 91162188
6
Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1200 (TTAB
1993) (affidavits submitted during prosecution of application
not in evidence on behalf of applicant), aff'd, 35 F.3d 1527,
32 USPQ2d 1120 (Fed. Cir. 1994); and TBMP §704.04, supra, and
cases cited therein. To the extent that opposer intended Mr.
Cook's declaration to constitute testimony, it is improperly
introduced. In the absence of an agreement by the parties, an
affidavit or declaration of a witness is not admissible under a
notice of reliance. Trademark Rule 2.123(b). See also
Trademark Rule 2.123(l) (evidence not obtained and filed in
compliance with the rules of practice will not be considered by
the Board).
Thus, neither the dates of use alleged in the application
nor the statements made in Mr. Cook's declaration can serve
opposer’s purpose of proving the date of first use of opposer's
mark. See TBMP §704.07, supra.
On the basis of the evidence that is properly of record,
opposer has demonstrated its standing, that is, its real
interest in the proceeding, by the submission of an Office
action showing that the subject application has been cited as a
potential bar to the registration of opposer's mark. See
Cunningham v. Laser Golf Corp., 222 F.3d 942, 55 USPQ2d 1842

is not evidence on behalf of the applicant or registrant; a date of
use of a mark must be established by competent evidence.”
Opp. No. 91162188
7
(Fed. Cir. 2000); and, e.g., The Hartwell Co. v. Shane, 17
USPQ2d 1569 (TTAB 1990).
However, opposer has failed to properly introduce any
evidence that its mark CALIFORNIA GOLD was used prior to the
August 8, 2003 filing date of the involved application.4
Accordingly, inasmuch as we find that opposer has not
established its priority, opposer cannot prevail on its claim
of likelihood of confusion.
Decision: The opposition is dismissed.

4 In addition, opposer's now cancelled registration is not evidence of
anything except that it issued. See TBMP §704.03(b)(1)(A), supra,
and cases cited therein. See also Time Warner Entertainment Co. v.
Jones, 65 USPQ2d 1650 (TTAB 2002). Any benefits conferred by the
registration, including the evidentiary presumptions afforded by
Section 7(b) of the Trademark Act were lost when the registration was
cancelled. See, e.g., Anderson, Clayton & Co. v. Krier, 478 F.2d
1246, 178 USPQ 46 (CCPA 1973).