Stellar Tech-nologies, Inc.v.Kenneth Dale Bristow

Trademark Trial and Appeal Board

Mar 23, 2004

No. 91125770 (T.T.A.B. Mar. 23, 2004)

Mailed: Paper No. 11
March 23, 2004 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Stellar Technologies, Inc.
v.
Kenneth Dale Bristow
_____
Opposition No. 91125770
to application Serial No. 75927446
filed on February 25, 2000
_____
James A. Wahl of Mackall, Crounse & Moore, PLC for Stellar
Technologies, Inc.
Kenneth Dale Bristow, pro se.
______
Before Holtzman, Rogers and Drost,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Kenneth Dale Bristow [applicant] has filed an
application to register the mark shown below:
This Opinion is Not
Citable as Precedent
of the TTAB
Opposition No. 91125770
2
The application is based on applicant's stated intention to
use the mark in commerce for goods now identified as
"products which have the ability, electronically or
mechanically, to locate, acquire and transduce sources of
energy through electronic circuits and gear assemblies,
namely, photovoltaic modules, battery chargers, electric
inverters, electronic pulse generators, and frequency
detectors," in International Class 9.
Stellar Technologies, Inc. [opposer] has opposed
issuance of a registration to applicant, asserting as
grounds therefor a claim under Section 2(d) of the Lanham
Act, 15 U.S.C. § 1052(d). Specifically, opposer asserts
that it has registered the word mark STELLAR TECHNOLOGIES
and a STELLAR TECHNOLOGIES design mark featuring a star and
an oval frame or carrier; that it began using the word mark
in August 1995 and began using it in commerce on October 31,
1995, i.e., both dates prior to applicant's filing date;
that it obtained registrations for both its marks on
February 23, 1999, prior to applicant's filing date; that
applicant's mark "is substantially similar" to opposer's
STELLAR TECHNOLOGIES mark; that applicant's goods "are
substantially similar and related" to opposer's goods1; and
that there is a likelihood of confusion among consumers.
1 Opposer's registrations list its goods as "precision components
for medical devices, namely, components for implantable heart
pacemakers and defibrillators, namely, leads, contacts, connector
Opposition No. 91125770
3
Applicant denied each of the allegations of opposer's
pleading, except that he admitted opposer's allegations
regarding what mark and goods are covered by applicant's
application. The record does not reveal whether the parties
engaged in any discovery. The trial schedule was reset once
on a consented motion filed by opposer.
During its main testimony period, opposer noticed and
took the deposition of applicant. During that deposition,
applicant did not make any admissions that support opposer's
case. Opposer did not take any other testimony or file any
notices of reliance. We note, in particular, that opposer
did not file a notice of reliance on certified copies of its
pleaded registrations.
Applicant, as is his right, did not take any testimony
and did not introduce any evidence by notice of reliance.
Notwithstanding that applicant did not put on a defense,
opposer filed an affidavit and three exhibits from its
director of sales and new technology, Dennis Forcelle,
during the period scheduled for rebuttal.
Opposer filed a brief, but applicant did not. Neither
party requested an oral hearing.
blocks, electrodes and electrode rings; components for
implantable fusion pumps used to deliver and regulate the flow of
drugs, namely, valves, reservoirs, valve seats, filter disks,
inlet cones, plug pump inlets and pump housing; implantable
stents for use in angioplasty; cardiac and medical electrodes;
and medical guide wires," in International Class 10, and for
"manufacturing of precision components for medical devices to the
order and/or specification of others," in International Class 40.
Opposition No. 91125770
4
On this record, we must dismiss the opposition. As
already noted, applicant did not make any admissions, either
in his answer or during his deposition that would excuse
opposer from having to prove, as elements of its case in
chief, its ownership of its pleaded registrations and that
they are valid and uncanceled, or its prior and continuous
use of the registered marks. Proof of either would have
established opposer's standing; proof of neither means
opposer has failed to establish its standing, which is an
element of the case for any plaintiff in a Board proceeding.
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1029
(Fed. Cir. 1999) (Allegations alone do not establish
standing and, if challenged, must be proved as part of the
plaintiff's case). Moreover, by failing to prove ownership
and validity of its pleaded registrations, opposer failed to
remove priority as an issue in this case. Cf. King Candy
Company v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974) (when a plaintiff proves ownership of a
valid and subsisting registration the issue of priority does
not arise). Opposer did not, on the other hand, prove
priority of use.
In stating the above, it is obvious we have not
considered the affidavit of Dennis Forcelle filed during the
period for rebuttal testimony. Absent a written stipulation
of the parties, preferably filed with the Board, a party may
Opposition No. 91125770
5
not submit testimony by affidavit. See Boyds Collection
Ltd. v. Herrington & Co., 65 USPQ2d 2017, 2020 (TTAB 2003)
("[W]e note that the parties may stipulate to the entry of
testimony by affidavit. Trademark Rule 2.123(b) … However,
in the absence of such a stipulation, an affidavit or
declaration is not admissible under a notice of reliance.");
see also TBMP Sections 703.01(b) and 705 (2d ed. June 2003).
Further, even if the parties had agreed to allow submission
of testimony by affidavit, applicant did not put on a
defense, so there is no case of applicant's to rebut and the
Forcelle affidavit in its entirety therefore constitutes
improper rebuttal. Finally, even if applicant had put on a
defense, so that opposer would have had the right to present
rebuttal evidence, much of the Forcelle affidavit, in
particular his statements concerning the status and title of
opposer's registrations, covers matters that are part of
opposer's case in chief. The Ritz Hotel Limited v. Ritz
Closet Seat Corp., 17 USPQ2d 1466, 1469 (TTAB 1990) ("As the
courts have often said, one's proof of standing is a
threshold matter."); Hester Industries Inc. v. Tyson Foods
Inc., 2 USPQ2d 1645, 1647 (TTAB 1987) (Opposer failed to
prove its case-in-chief during time allowed for doing so and
Board refused to consider evidence offered during rebuttal
that supported the case-in-chief).
Opposition No. 91125770
6
Decision: The opposition is dismissed, for opposer's
failure to prove its standing and priority of use.