Essence Communi-cations, Incv.The Cato Institute

Trademark Trial and Appeal Board

Mar 27, 2003

No. 91118596 (T.T.A.B. Mar. 27, 2003)

Hearing: Mailed: 27 MAR 2003
14 JAN 2003 Paper No. 33
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Essence Communications, Inc.
v.
The Cato Corporation
_____
Opposition No. 118,596
to application Serial No. 75/721,195
_____
Robert L. Sherman of Paul, Hastings, Janofsky & Walker LLP
for Essence Communications, Inc.
W. Thad Adams, III of Adams, Schwartz & Evans, P.A. for The
Cato Corporation.
______
Before Cissel, Walters, and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
The Cato Corporation (applicant) applied to register
the mark BLACK ESSENCE in typed form on the Principal
Register for “cosmetics, namely, lipstick and nail polish”
in International Class 3.1
1 Serial No. 75/721,195, filed June 3, 1999. The application
contains an allegation of a date of first use and a date of first
use in commerce of May 1, 1999.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Opposition No. 118,596
2
Essence Communications, Inc. (opposer) has opposed
registration on the ground that it “used the mark ‘ESSENCE’
as the title of magazine devoted to chronicling issues and
concerns of black women[,] … for the sale of various retail
products that are targeted to women of African descent … and
the mark ‘ESSENCE AWARD.’” Notice of Opposition at 2-3.
Opposer attached soft copies of seven registrations to its
Notice of Opposition. The first is for the mark ESSENCE in
typed form for a “magazine concerning matters of interest to
women” in International Class 16.2 The second registration
is for the mark shown below for “retail mail order services
for women’s clothing and accessories, jewelry, and home
furnishing accessories” in International Class 42.3
The third registration is for the mark ESSENCE BY MAIL in
typed form for “retail mail order services for clothing and
accessories, shoes, jewelry and home furnishing accessories”
in International Class 42.4 The fourth and fifth
registrations are both for the mark ESSENCE in typed form
2 Registration No. 1,131,774, issued March 11, 1980.
3 Registration No. 1,235,902, issued April 26, 1983.
4 Registration No. 1,373,090, issued November 26, 1985.
Opposition No. 118,596
3
for “women’s sportswear, namely, pants, skirts, blouses,
shirts, knit tops, jackets and sweaters” in International
Class 255 and for “jewelry” in International Class 14.6 The
sixth registration is for the mark ESSENCE ART shown below
for ”providing art prints through wholesale distribution
services and through mail order services” in International
Class 42.7
The seventh registration is for the mark ESSENCE AWARD in
typed form for “entertainment and educational services;
namely, promoting, encouraging and recognizing exceptional
achievements and excellence of black women through the
presentation of an award” in International Class 41.8
Applicant filed an answer and denied the salient
allegations of opposer’s notice of opposition.
Specifically, the answer sets out that applicant
acknowledges “that Exhibits C through I [including copies of
trademark registrations] are attached to the Notice of
5 Registration No. 1,485,362 issued April 19, 1988.
6 Registration No. 1,508,051 issued October 11, 1988.
7 Registration No. 1,641,629 issued April 16, 1991.
8 Registration No. 1,712,328 issued September 1, 1992.
Opposition No. 118,596
4
Opposition but otherwise denies any of the allegations” in
that paragraph. Answer at 2.
The record consists of the file of the involved
application; the trial testimony deposition, with
accompanying exhibits, of David Allan Slack, applicant’s
buyer; applicant’s notice of reliance on status and title
copies of third-party registrations, a December 2001 issue
of Essence magazine, and Internet printouts of websites that
use the term “essence”; and opposer’s notice of reliance on
TESS printouts of seven registrations, pages from Essence
magazine and other publications and Audit Bureau of
Circulations Reports on Essence magazine.
The issues have been briefed9 and an oral hearing was
held on January 14, 2003.
Discussion
We dismiss the opposition.
Initially, we must address whether opposer has standing
to bring this opposition. “[A] party opposing a
registration pursuant to Section 13 of the Lanham Act must
show (1) that he has standing and (2) a statutory ground
which negates the applicant’s entitlement to registration.”
Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1755
(Fed. Cir. 1998). Opposer has submitted seven registrations
9 Opposer did not timely submit its main brief so the only brief
opposer was able to file was its reply brief. See Orders dated
May 31 and July 11, 2002.
Opposition No. 118,596
5
with its notice of opposition. Establishing ownership of an
allegedly confusingly similar registration is sufficient to
prove standing. Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (“In this case,
as stated earlier, Laser Golf owns two prior registrations.
These registrations and the products sold under the mark
they register suffice to establish Laser Golf's direct
commercial interest and its standing to petition for
cancellation of Cunningham's LASERSWING mark”). While
opposer has alleged ownership of seven trademark
registrations, its evidence is not sufficient to establish
the status and title of these registrations.10
There are several ways for a party to introduce
registrations it owns into evidence in a Board proceeding.
The most common way is to attach to the notice of opposition
two copies of the registration prepared and issued by the
U.S. Patent and Trademark Office showing both current status
10 Opposer’s Reply Brief (the only brief it filed) refers to the
first six registrations discussed earlier. Opposer also
attempted to submit status and title copies of these six
registrations in a “Request to Allow Cure of Procedural Defects
in Notice of Reliance.” Opposer’s motion was denied as untimely
and because opposer’s “notice of reliance can be viewed as not
defective at all, since the copies are admissible, albeit not to
demonstrate the ownership or status of the registrations…
opposer’s failure is not procedural, but evidentiary.” Order
dated May 31, 2002, pp. 3-4. In addition, we note that the Order
held that opposer “has not sought to reopen its testimony period,
nor has it provided any reason (let alone met the ‘excusable
neglect’ standard) for its failure to timely submit the proffered
documents during its testimony period.” Id. at 4.
Opposition No. 118,596
6
and title or to submit such copies under notice of reliance.
37 CFR § 2.122(d). Opposer has not provided such copies.
Other ways a party’s registration will be considered to
be of record include by identification and introduction
during the testimony period by a qualified witness who
testifies concerning the status and title of the
registrations; by admission in the applicant’s answer; or by
the applicant treating the registration as being of record
in its brief. TBMP § 702.03(a). Inasmuch as opposer took
no testimony in this case and applicant’s witness,
applicant’s buyer, did not testify about the status and
title of the registrations, and because applicant did not
admit the status and title of these registrations in its
answer, in its admissions, or in a brief, the registrations
were not made of record by any of these means.11
Opposer argues that cases should be decided on the
merits; that it has attached copies of its registrations
(albeit not status and title copies); and that it has
presented Office website printouts showing the status and
title of these registrations. These arguments are not
persuasive.
The Trademark Rules provide a means for implementing
this proof of a prima facie case. They require that,
11 Applicant indicates that “[t]o the extent this brief refers to
any mark for which Opposer has presented a TESS printout as
evidence of ownership, the reference is made for the purpose of
thoroughness only and Applicant does not thereby concede the
validity or ownership of the mark referred to.” Brief at 14.
Opposition No. 118,596
7
in an opposition proceeding, registrations may be
entered into evidence by (1) furnishing two copies of
each registration prepared and issued by the Patent and
Trademark Office showing both the current status of and
current title to the registration; (2) appropriate
identification and introduction of the registrations
during the taking of testimony; or (3) filing a notice
of reliance on the registrations during Opposer's
testimony period. 37 C.F.R. § 2.122(d) (emphasis
added). These rules are simple and clear, but Hewlett
did not follow them.
Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18
USPQ2d 1710, 1713 (Fed. Cir. 1991) (Federal Circuit affirmed
the Board’s dismissal of an opposition for failing to
present a prima facie case of likelihood of confusion when
opposer failed to submit current status and title copies of
its registrations).
Applicant’s self-generated copies of registrations are
not status and title copies prepared by the Office. See 37
CFR §§ 2.122(d) and 2.6(b)(4) (Cost of status and title
copies of registration). “When a party seeks to introduce
its own registrations under a notice of reliance, so as to
benefit from the evidentiary presumptions that attach
thereto pursuant to Trademark Act Sections 7(b) or 15, soft
copies or T-Search printouts may not be used. Instead, the
notice of reliance must be accompanied by copies of the
registrations, prepared and issued by the Patent and
Trademark Office, showing both current status and title to
the registrations.” Weyerhaeuser Co. v. Katz, 24 USPQ2d
1230, 1232 n.2 (TTAB 1992). Also, “[w]hile it is true that
Opposition No. 118,596
8
the law favors judgments on the merits whenever possible, it
is also true that the Patent and Trademark Office is
justified in enforcing its procedural deadlines.” Hewlett-
Packard, 18 USPQ2d at 1713. Similarly, even if there were a
lack of prejudice to applicant as opposer alleges, that
would not excuse opposer’s failure to submit the required
evidence of ownership and title of the registrations on
which it is attempting to rely.
Therefore, the registrations to the extent that they
are in the record do not establish opposer’s ownership and
status of these registrations. Because there is no evidence
of record regarding opposer’s standing either based on its
ownership of a federal registration, common law rights, or
any other reason, we hold that opposer has failed to prove
its standing to oppose this application and therefore, we
must dismiss this opposition. See Volkswagenwerk
Aktiengesellschaft v. Clement Wheel Co., 204 USPQ 76, 81
(TTAB 1979) (The exhibits “do not show ownership of or title
to the registrations as of the date of attestation … and
therefore do not serve as evidence in support of opposer’s
claim of damage”).12
Decision: The opposition is dismissed.
12 Because opposer has not proven that it has standing, we have
not addressed any other issues raised by this proceeding.