Brathibbe Sethuramanv.Ramesh Sethuraman

Trademark Trial and Appeal Board

Sep 24, 2008

No. 91178534 (T.T.A.B. Sep. 24, 2008)

Faint
Mailed: September 24, 2008

Opposition No. 91178534

Brathibbe Sethuraman

v.

Ramesh Sethuraman

Opposition No. 91180875

Ramesh Sethuraman

v.

Brathibbe Sethuraman

Before Bucher, Kuhlke and Bergsman,
Administrative Trademark Judges.

By the Board:

This case comes up on Dr. Brathibbe Sethuraman’s
(hereinafter “Dr. B”) motion to amend the notice of
opposition in Opposition No. 91178534 to add claims of
deceptiveness and false association under Trademark Act
Section 2(a), and Ramesh Sethuraman’s (hereinafter “Mr. R”)
motion for summary judgment filed in each proceeding on the
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition Nos. 91178534 & 91180875
2
claims of priority and likelihood of confusion.1 All
motions have been briefed.
On April 17, 2008, the Board consolidated the two
above-captioned proceedings because they involve the same
parties and common questions of fact and law (i.e., while
the parties are reversed in each opposition, the issues of
priority and likelihood of confusion to be decided by the
Board are identical).
On August 17, 2006, Mr. R filed an intent-to-use
application to register the mark

for “restaurant, cafeterias and catering services,” in
International Class 43.2
On October 30, 2006, Dr. B filed an intent-to-use
application for the mark

1 In its April 17, 2008 consolidation order, the Board informed
the parties that Mr. R’s motion for judgment on the pleadings
would be treated as a motion for summary judgment and allowed
additional briefing by the parties.
2 Application Serial No. 78954836. A disclaimer of “BHAVAN” is
of record. A translation statement for “Bhavan” as “House” is of
record.
Opposition Nos. 91178534 & 91180875
3

for “restaurant services,” in International Class 43.3
Motion to Amend in Opposition No. 91178534
The motion to amend the notice of opposition seeks to
add claims under Section 2(a) of the Trademark Act of 1946,
15 U.S.C. § 1052(a), for deceptiveness and false suggestion
of a connection.4
The Board liberally grants leave to amend pleadings at
any stage of a proceeding when justice so requires, unless
entry of the proposed amendment would violate settled law,
would be prejudicial to the rights of the adverse party, or
parties, or would be futile. See Fed. R. Civ. P. 15(a); and
TBMP § 507.02 (2d ed. rev. 2004). In deciding a motion for
leave to amend, the Board must consider whether there is any
undue prejudice to the non-movant and whether the amendment
is legally sufficient and not futile. See, e.g.,

3 Application Serial No. 77032288. A disclaimer of "BHAVAN",
"UNAVAGAM" and "SEIVA SUVAIYAGAM” is of record. A translation
statement for “Bhavan” as “House” is of record. A
transliteration statement for the non-Latin characters in the
mark is of record and notes that “Unavagam” translates as “Eating
Place,” and “Seiva Suvaiyagam” translates as “Vegetarian Eating
Place.”
4 The pleading also seeks to add a count under Section 14 of the
Trademark Act of 1946, 15 U.S.C. § 1064, that use of the mark
“misrepresents the source of the goods or services.” However,
Section 14 of the Trademark Act is not applicable to opposition
proceedings because it is limited to registered marks. Moreover,
the claim appears to duplicate the allegations with respect to
Opposition Nos. 91178534 & 91180875
4
Leatherwood Scopes International Inc. v. Leatherwood, 63
USPQ2d 1699, 1702-03 (TTAB 2002)(finding motion for leave to
amend opposition futile where proposed amended claims lack
essential elements and are legally insufficient).
The amended notice of opposition seeks to add in part,
the following factual allegations in support of its claims
under Section 2(a):
1. Opposer is using the MEENAKSHI BHAVAN
logo in franchising of restaurants in the United
States for restaurant services and plans to open
restaurants in the United States under the
MEENAKSHI BHAVAN name and logo.
2. The principal of MEENAKSHI BHAVAN, LLC
is also the Managing Partner of ‘Sriram
Caterers’, a catering service provider that has
been running an Indian Vegetarian Restaurant in
India, under the brand name of ‘MEENAKSHI
BHAVANI’ since January 27, 1998. The restaurant
in India has been operating at the same address
since its inauguration in 1998 which is 141
Collector Office Road, Anna Bus Stand, Maduai
[sic] – 625020, Taiml [sic] Nadu, India. It can
be accessed in the United States through its
website www.sr-cat.com. This is a family owned
business with international rights given to
Opposer.
3. The Respondent filed for the MEENAKSHI
BHAVAN logo, serial number 78954836, which
involves the exact same logos and trademarks
used by Sriram Caterers since 1998.
4. Applicant had previous knowledge of
Opposer’s rights in the ‘MEENAKSH BHAVAN’ [sic]
marks as a relative of the family.
5. Applicant had previous knowledge that
Applicant’s use of the MEENAKSHI BHAVAN logo
falsely suggests an association with, or
approval by Sriram Caterers, and will inevitably
create confusion in the marketplace, as
customers will assume Applicant’s goods are

deception and false association. Accordingly, the motion to
amend is denied with respect to this count.

Opposition Nos. 91178534 & 91180875
5
authorized or endorsed by Sriram Caterers and
Opposer. Such false association will cause harm
to Opposer.

As to the deceptiveness claim, the deceptiveness must
be as to the nature or meaning of the mark in relation to
the services. See e.g., In re Budge Manufacturing Co., 857
F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988).
The proposed amended pleading has no allegations as to
how the use of the mark by Mr. R would be deceptive in
relation to the services, and there is nothing in the
proposed amendments that would allege plausibility or
materiality of a Section 2(a) deceptiveness claim.
As to the false suggestion of a connection claim, BS
must plead (and prove) the following:
1. Defendant’s mark is the same or a close
approximation of plaintiff’s previously used name
or identity;
2. That the defendant’s mark would be recognized as
such;
3. That the plaintiff (Dr. B) is not connected with
the activities performed by the defendant under
the mark; and,
4. That plaintiff’s (Dr. B) name or identity is of
sufficient fame or reputation that when the
defendant’s mark is used in connection with its
services, a connection with the plaintiff would be
presumed.

Consolidated Natural Gas Co v. CNG Fuel Systems, Ltd., 228
USPQ 752, 754 (TTAB 1985), citing Buffett v. Chi Chi's, 226
USPQ 428, 429 (TTAB 1985). However, Dr. B has not pleaded
any facts that would establish that the defendant’s mark is
Opposition Nos. 91178534 & 91180875
6
the same or a close approximation of the plaintiff’s
previously used name or identity, that the defendant’s mark
would be recognized as a close approximation of the
plaintiff’s previously used name or identity, or the fame or
reputation of her mark in the United States, nor even fame
in India, and these are necessary elements of the claim.
Accordingly, because we find that the proposed claims
under Section 2(a) are legally insufficient, the motion to
amend the notice of opposition is denied.5
Motion for Summary Judgment
We turn now to Mr. R’s motions for summary judgment in
his favor in each of these proceedings on the ground of
priority and likelihood of confusion.
Summary judgment is appropriate when there is no
genuine issue of material fact in dispute and the moving
party is entitled to judgment as a matter of law. See Fed.
R. Civ. P. 56(c). A genuine dispute with respect to a
material fact exists if sufficient evidence is presented
that a reasonable fact finder could decide the question in
favor of the non-moving party. See Opryland USA Inc. v.
Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471
(Fed. Cir. 1992). Thus, all doubts as to whether any
particular factual issues are genuinely in dispute must be

5 We hasten to add, however, that even if the amendment had been
allowed, it would have no effect on our summary judgment decision
which follows.
Opposition Nos. 91178534 & 91180875
7
resolved in the light most favorable to the non-moving
party. See Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d
200, 22 USPQ2d 1542 (Fed. Cir. 1992).
When the moving party's summary judgment motion is
supported by evidence sufficient, if unopposed, to indicate
that there is no genuine issue of material fact, and that
the moving party is entitled to judgment as a matter of law,
the nonmoving party may not rest on mere denials or
conclusory assertions, but rather must proffer countering
evidence, by affidavit or as otherwise provided in Fed. R.
Civ. P. 56, showing that there is a genuine factual dispute
for trial. See Fed. R. Civ. P. 56(e); Copelands'
Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295
(Fed. Cir. 1991); and Octocom Systems Inc. v. Houston
Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cir. 1990).
A party moving for summary judgment in its favor on a
priority and likelihood of confusion claim must establish
that there is no genuine dispute that (1) it has standing to
maintain the proceeding; (2) it is the prior user of its
pleaded mark or marks or the owner of a valid and subsisting
federally registered mark; and (3) contemporaneous use of
the parties' respective marks on their respective goods or
services would be likely to cause confusion, mistake or to
deceive consumers. See Hornblower & Weeks, Inc. v.
Opposition Nos. 91178534 & 91180875
8
Hornblower & Weeks, Inc., 60 USPQ2d 1733 (TTAB 2001); see
also, King Candy Co., Inc. v. Eunice King's Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
There are no questions as to standing or similarity of
the marks and services in these cases, as each of the
parties has filed an intent-to-use trademark application for
nearly identical marks, and legally identical services. The
sole issue that remains is one of priority.
To establish priority on a likelihood of confusion
claim brought under Section 2(d) of the Trademark Act, a
party must prove that, vis-à-vis the other party, it owns “a
mark or trade name previously used in the United States …
and not abandoned ….” 15 U.S.C. § 1052(d).
A party who has filed an intent-to-use application may
rely on the filing date of its application to establish
priority. See Larami Corp. v. Talk To Me Programs Inc., 36
USPQ2d 1840, 1845 n. 7 (TTAB 1995) (constructive use
provisions may be used both defensively and offensively to
establish priority); see also, Zirco Corp. v. American
Telephone & Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991)
(right to rely on constructive use date comes into existence
with filing of intent-to-use application).
Mr. R argues that because his application has the
earlier filing date, and because Dr. B has not provided
Opposition Nos. 91178534 & 91180875
9
evidence of any earlier use in the United States, Mr. R is
entitled to judgment as a matter of law.
In response, Dr. B argues that there are a number of
disputed facts that still need to be decided, including
first use of the mark in the United States, rights in the
marks and whether or not Mr. R has unclean hands or
committed fraud based on his knowledge of Dr. B’s prior
rights to the mark.6 The only evidence she provides in
support, however, are letters from principals of Sriram
Caterers in India. These letters were not supported by any
affidavits or declarations and will not be considered.7 See
Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1369-70 (TTAB
1998). There is no evidence to establish any use of Dr. B’s
mark in the United States for a date prior to the intent-to-
use application filing date of October 30, 2006.
Because Mr. R’s intent-to-use application has the
earlier filing date of August 17, 2006, he may rely on this
constructive use date to establish his priority. Thus even
viewing the arguments and evidence in a light most favorable

6 We note that fraud has not been pled, and was not part of the
proposed amended pleading.
7 Documents or other exhibits that are not self-authenticating
may be admissible as evidence on a motion for summary judgment
pursuant to Fed. R. Civ. P. 56(e), provided that they are
authenticated by and attached to an affidavit or declaration.
See 10A Charles A. Wright, Arthur R. Miller and Mary Kay Kane,
Fed. Prac. & Proc. Civ. 3d § 2722 (WESTLAW update 2008). Even if
these letters were considered they are not sufficient to raise a
genuine issue regarding priority inasmuch as they do not provide
any information about use of the mark in the United States. See
Person’s Co. Ltd. v. Christman, 14 USPQ2d 1477 (Fed. Cir. 1990).
Opposition Nos. 91178534 & 91180875
10
to the non-movant, we find that there are no genuine issues
of material fact as to this issue.
Accordingly, the motions for summary judgment are
granted and judgment in favor of Mr. R is hereby entered,
subject to Mr. R’s establishment of constructive use through
the registration of his mark. The time for filing an appeal
or for commencing a civil action will run from the date of
the present decision. See Trademark Rules 2.129(d) and
2.145; and TBMP § 901.02(b) (2d ed. rev. 2004). In
Opposition No. 91178534, the notice of opposition is
dismissed and Application Serial No. 78954836 will go
forward for issuance of a Notice of Allowance. In
Opposition No. 91180875, the opposition is sustained and
registration as to application Serial No. 77032288 is
refused. When Mr. R’s mark has been registered or the
application becomes abandoned, Mr. R should inform the
Board, so that appropriate action may be taken to terminate
these proceedings.
***