Rugnur, LLCv.Hills Point Industries, LLC

Trademark Trial and Appeal Board

Jun 29, 2020

91243873 (T.T.A.B. Jun. 29, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 29, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Rugnur, LLC
v.
Hills Point Industries, LLC
_____

Opposition No. 91243873
Serial Nos. 87853969 and 87872352

_____

Vladimir T. Sirkin of Vladimir T. Sirkin & Associates
for Rugnur, LLC.

David S. Jacobson of Gordon & Jacobson PC
for Hills Point Industries, LLC.
_____
Before Cataldo, Wolfson, and Lebow, Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

Hills Point Industries, LLC (“Applicant”) seeks registration on the Principal
Register of the standard character mark GRIPMAX for:1

1 Application Serial No. 87853969 was filed on March 28, 2018 based on Applicant’s alleged
intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b). The application covers all listed goods except for “Fitted furniture covers” in Class
Opposition No. 91243873

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“Incontinence pads” in International Class 5;
“Drawer liners” in International Class 16;
“Animal carriers; Luggage inserts, namely, packing cubes;
Pet products, namely, pet restraining devices consisting of
leashes, collars, harnesses, restraining straps, and leashes
with locking devices” in International Class 18;
“Bath pillows; Beds for household pets; “Fitted furniture
covers” in International Class 20;
“Cutting boards; Scoops for the disposal of pet waste” in
International Class 21;
“Mattress pads; Unfitted fabric furniture covers; Bed pads;
Unfitted furniture covers not of paper” in International
Class 24; and
“Anti-fatigue floor mat; Bath mats; Bathroom rugs; Carpet
underlays, namely, rug grippers; Door mats; Floor mats;
Pet litter pan floor mats; Rugs; Shower mats; Floor mats in
the nature of non-slip pads for use under apparatus to
prevent slippage; Underlays for rugs” in International
Class 27.
By its Notice of Opposition, Rugnur, LLC (“Opposer”) opposes registration based
on alleged priority and likelihood of confusion under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), with Opposer’s composite mark ,
which Opposer alleges it has used on or in connection with the following goods, and
for which it asserts it owns a pending application:2

20; these goods are the subject of Application Serial No. 87872352, filed April 11, 2018 based
on alleged intent to use the mark in commerce. Both marks were published on July 31, 2018.
2 Trademark application Serial No. 87908661, filed May 4, 2018. The application includes a
claim to the colors white and black, and the following description of the mark: “The mark
consists of the white letter ‘GripMAX’ having black contour, whereas first letter ‘G’ and last
three letters ‘MAX’ are in the upper case, and letters ‘rip’ are in the lower case.”
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Anti-fatigue floor mat; Bath mats; Bathroom rugs; Carpet
underlay; Carpet underlays; Carpet underlays, namely,
rug grippers; Rugs; Underlay for carpets; Bathroom mats;
Carpets, rugs, mats and matting, linoleum for covering
existing floors; Door mats; Door mats of textile; Fabric bath
mats; Floor mats; Floor mats in the nature of non-slip pads
for use under apparatus to prevent slippage; Non slip mats
for baths; Non-slip mats for showers; Non-slip bathtub
mats; Non-slip shower mats; Pet feeding mats; Pet litter
pan floor mats; Plastic bath mats; Rubber bath mats;
Rubber mats; Shower mats; Textile bath mats; Textile floor
mats for use in the home; Underlays for rugs
in International Class 27. Opposer alleges that its application has been suspended
pending disposition of Applicant’s applications, which were cited as possible bars to
registration. 1 TTABVUE 5.
In its Answer, Applicant admits that its mark “is confusingly similar to Opposer’s
Mark,” that the marks “sound the same,” that “Federal registration of Applicant’s
Mark and future use of Applicant’s Mark in connection with Applicant’s Goods is
likely to cause confusion, deception, and mistake,” and that Applicant’s applications
are “an impediment to Opposer’s ability to federally register Opposer’s Mark.” 6
TTABVUE 5. Applicant did not admit the validity of Opposer’s pleaded application,
but asserted that Applicant “is without knowledge or information sufficient to form a
belief as to whether [Opposer’s] application was validly filed.” 6 TTABVUE 3.
Applicant further denied that Opposer has standing, and asserted additional
affirmative defenses that were not pursued at trial and are considered waived. See
Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1422-23 n.7
(TTAB 2014) (finding affirmative defense not pursued at trial waived).
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Both parties filed briefs. Neither party submitted evidence during their respective
trial periods. Although the submission of evidence is optional for the party in the
position of defendant, it is required of an opposer. See Trademark Rule 2.132(b), 37
C.F.R. § 2.132(b). Thus, the record consists only of the pleadings and, pursuant to
Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the opposed application.
Opposer mistakenly relies on its pleaded application to support its standing
because it did not properly make the application of record in this proceeding. Unlike
the file of the opposed application, which automatically becomes part of the record of
an opposition proceeding under Trademark Rule 2.122(b), a pleaded application does
not. 37 C.F.R. § 2.122(b). To make the application of record, Opposer could have filed,
“during its testimony period, a copy of the application file, or of the portions which it
wishes to introduce, together with a notice of reliance thereon specifying the
application and indicating generally its relevance as well as associating the
application with one or more issues in the case.” TRADEMARK BOARD MANUAL OF
PROCEDURE (TBMP) § 704.03(b)(2) (June 2020). Opposer could also have introduced
the application through witness testimony. See WeaponX Performance Products Ltd.
v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1040 (TTAB 2018) (plaintiff’s
pleaded pending application is not automatically of record, and may be introduced as
evidence at trial by filing under notice of reliance a copy thereof showing current
status and title, or through witness testimony about its status). Opposer did neither.
Notwithstanding this error, the Board will not take judicial notice of registrations
or applications residing in the USPTO. See, e.g., UMG Recordings, Inc. v. O’Rourke,
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92 USPQ2d 1042, 1046 (TTAB 2009) (“it is well settled that the Board does not take
judicial notice of USPTO records”); Demon Int’l LC v. Lynch, 86 USPQ2d 1058, 1060
(TTAB 2008) (opposition dismissed where opposer failed to submit proper status and
title copies of its pleaded registrations and thus failed to prove standing and priority).
Opposer asserts that it “has shown that it’s been using its Opposer’s Mark in
commerce since as early as the summer of 2016.” However, Opposer presented no
evidence in support of its assertion during its assigned testimony period. Even if
Opposer’s application was in evidence, the date of use stated therein “is not evidence
on behalf of [Opposer]; a date of use of a mark must be established by competent
evidence.” 37 C.F.R. § 2.122(b)(2). The exhibits Opposer attached to its pleading
purportedly showing Opposer’s use of its mark are also not evidence on behalf of
Opposer because they were not properly introduced at trial. See Trademark Rule
2.122(c), 37 C.F.R. § 2.122(c) (“Except as provided in paragraph (d)(1) of this section,3
an exhibit attached to a pleading is not evidence on behalf of the party to whose
pleading the exhibit is attached, and must be identified and introduced in evidence
as an exhibit during the period for the taking of testimony.”). Thus, there is no
evidence of record to support Opposer’s allegation of use.
Given Opposer’s lack of evidence, it has failed to make the requisite showing of
standing to proceed on its claim. An opposer must prove standing by showing a real
interest in the outcome of the proceeding and a reasonable basis for believing that it
would suffer damage if the mark is registered. See 15 U.S.C. § 1063; Empresa Cubana

3 This exception is inapplicable here.
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Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014).
Although a pleaded application that has been refused registration based on perceived
likelihood of confusion with an applicant’s involved mark may establish an opposer’s
standing where ownership of the application and its status has been demonstrated,
here, Opposer failed to introduce its pleaded application during trial. Thus, it cannot
rely on the application to prove its standing. See, e.g., Lipton Inds., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) (“Thus, to have standing
in this case, it would be sufficient that [plaintiff] prove that it filed an application and
that a rejection was made because of [defendant’s] registration.”); Spirits Int'l, B.V.
v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d
1545, 1548 (TTAB 2011) (finding opposer proved standing by properly making a copy
of its application of record by notice of reliance). Moreover, Opposer may not rely on
the exhibits attached to its pleading in support of its standing allegation. Having
introduced no evidence during its testimony period to show that it is the owner of its
pleaded mark or that it used its mark prior to Applicant’s constructive use date,
Opposer has not demonstrated its standing.
Opposer’s failure to prove standing by itself warrants dismissal of the opposition.
See Lumiere Prods., Inc. v. Int'l Tel. & Tel. Corp., 227 USPQ 892, 893 (TTAB 1985).
However, even if Opposer had established its standing, there is no evidence to prove
priority of use of its pleaded mark (a required element in a likelihood of confusion
claim). Opposer therefore could not prevail on its claim of likelihood of confusion
because the record includes no evidence that Opposer owns “a mark registered in the
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Patent and Trademark Office, or a mark or trade name previously used in the United
States.” 15 U.S.C. § 1052(d); see also Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d
1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002) (“The burden of proof rests with the
[plaintiff] ... to produce sufficient evidence to support the ultimate conclusion of
[priority of use] and likelihood of confusion.”). Because Opposer has failed to properly
submit any evidence supporting its asserted claim of likelihood of confusion and has
failed to prove any common law rights in its pleaded mark, Opposer has failed to
demonstrate its standing or that it is entitled to any relief under its asserted claim of
likelihood of confusion. Thus, Opposer’s asserted likelihood of confusion claim also
must fail.
Decision: The opposition is dismissed.