Carolina Meryv.The Spanish InstituteDownload PDFTrademark Trial and Appeal BoardDec 10, 202091243077 (T.T.A.B. Dec. 10, 2020) Copy Citation Mailed: December 10, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ———— Carolina Mery v. The Spanish Institute _____ Opposition No. 91243077 _____ Samuel A. Mazzeo, Esq. of Wilkinson Mazzeo PC, for Carolina Mery. Kevin J. Keener of Keener & Associates PC, for The Spanish Institute. ———— Before Mermelstein, Pologeorgis, and Dunn, Administrative Trademark Judges. Opinion by Pologeorgis, Administrative Trademark Judge: The Spanish Institute seeks to register on the Principal Register the composite mark (SPANISH INSTITUTE disclaimed) for “Continuing education services, namely, providing live and on-line continuing professional education seminars in the field of Spanish language; Education services, THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91243077 2 namely, providing immersion classes, tutoring, lessons, seminars, and workshops in the field of Spanish language; Providing facilities for educational immersion classes, tutoring, seminars, lessons, and workshops to adults, teenagers and children” in International Class 41.1 Carolina Mery (“Opposer”) filed a notice of opposition to the registration of Applicant’s mark on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on Opposer’s alleged prior use of the composite mark for continuing education services, namely, providing live and on-line continuing professional education seminars in the field of Spanish language; Education services, namely, providing tutoring, classes, workshops, and seminars in the fields of Spanish language.2 In further support of her likelihood of confusion claim, Opposer pleaded ownership of pending application 1 Application Serial No. 87704538, filed on December 1, 2017, based on an allegation of use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming June 1, 2007 as the date of first use and February 10, 2008 as the date of first use in commerce. The description of the mark reads as follows: “The mark consists of a red and blue circle logo containing the wording The Spanish Institute in red and the slogan Immerse Yourself in blue, the wording separated by two blue dots. A blue wave is shown inside the circle over a red globe. The Spanish Institute is written in red again to the right of the circle.” The colors blue, white and red are claimed as a feature of the mark. 2 Notice of Opposition; 1 TTABVUE. Opposition No. 91243077 3 Serial No. 87916365 for the composite mark for her Spanish language educational services.3 As additional grounds for opposition, Opposer alleges the following two claims: (1) that Applicant is not the rightful owner of the mark, i.e., non-ownership,4 and (2) fraud.5 Applicant filed an answer to the notice of opposition in which it denied the salient allegations in the pleading.6 Applicant did admit, however, that Opposer’s pleaded “Application Serial No. 87916365 is for the mark illustrated,” that is, the mark illustrated in the pleaded application.7 3 Id. at ¶ 1; 1 TTABVUE 3. A copy of Opposer’s pleaded pending application showing its current status and title was not submitted at trial. 4 Although Opposer identified as a ground for opposition that Applicant is not the rightful owner of its applied-for mark on the ESTTA filing cover page of her notice of opposition, Opposer did not assert any allegations in her pleading to support the claim. While the content of the ESTTA cover sheet is read in conjunction with the actual pleading as an integral component thereof, see PPG Indus. Inc. v. Guardian Indus. Corp., 73 USPQ2d 1926, 1928 (TTAB 2005), the mere mention of a ground on the cover sheet is insufficient to constitute a properly pleaded claim. Embarcadero Tech. Inc. v. RStudio Inc., 105 USPQ2d 1825, 1827 n.2 (TTAB 2013) (internal citation omitted). Notwithstanding, because Applicant addressed the claim on the merits in its trial brief, we find that the parties have tried by implied consent the claim of non-ownership, and we therefore deem the pleadings to be amended to include allegations that properly assert that claim. See Fed. R. Civ. P. 15(b); Hewlett-Packard Co. v. Human Performance Measurement Inc., 23 USPQ2d 1390, n.7 (TTAB 1991). 5 Id. at ¶¶ 25-28; 1 TTABVUE 7. 6 4 TTABVUE. 7 Applicant’s Answer, ¶ 1; 5 TTABVUE 2. Opposition No. 91243077 4 Additionally, Applicant asserted various putative “affirmative defenses,” including (1) Opposer’s pleading fails to state a claim upon which relief may be granted; (2) acquiescence; (3) Opposer lacks standing; (4) Opposer lacks priority of use; (5) Opposer adopted its current pleaded mark from its prior logo, i.e., , and revised its Spanish language educational services from “conversational” Spanish to “immersion” services only after it became aware of Applicant’s subject mark and identified services; and (6) Opposer assumed the risk of any damage since Opposer could have avoided damage by choosing a different mark.8 With regard to Applicant’s purported “affirmative defense” of lack of standing, we note that “lack of standing” is not an affirmative defense. “Standing” is an element of Opposer’s asserted claims that she must prove as part of her case. See Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); Blackhorse v. Pro Football Inc., 98 USPQ2d 1633, 1637 (TTAB 2011). Moreover, insofar as Applicant neither filed a formal motion to dismiss for failure to state a claim during the interlocutory phase of this proceeding, nor argued this asserted “affirmative defense” in its brief, it is forfeited. Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d mem., 565 F. App’x 900 (Fed. Cir. 2014). Similarly, because Applicant did not pursue its asserted affirmative defense of acquiescence at trial or in its brief, it is also forfeited. 8 5 TTABVUE 3-4. Opposition No. 91243077 5 With regard to the remaining “affirmative defenses,” we construe them as mere amplifications of the denials in Applicant’s answer. See Order of Sons of It. in Am. v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1223 (TTAB 1995). I. Record The record includes the pleadings and, pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Applicant’s involved application file. The record also comprises the evidence summarized below. A. Opposer’s Evidence 1. Purported “Testimony Declaration” of Opposer, Carolina Mery;9 2. Purported “Testimony Declaration” of Lorena Verduzco, owner of Yoyen, a San Diego-based graphic design agency, who was ostensibly hired by Opposer to assist in creating a new brand logo for Opposer’s pleaded services, and the following accompanying exhibits: (i) Ms. Verduzco’s notes and agenda for meeting preparation to discuss logo ideation, (ii) logotype designs created by Ms. Verduzco for Opposer, (iii) an email exchange between Opposer and Ms. Verduzco showing the final logo, and (iv) a receipt showing payment by Opposer to Ms. Verduzco for her design services;10 3. Purported “Testimony Declaration” of R. Dustin Wood, Opposer’s ex-husband, who states, among other things, the process of choosing Opposer’s new logo and the eventual purported use of the new logo.11 B. Applicant’s Evidence Applicant did not submit any testimony or any other type of evidence during its assigned trial period. 9 6 TTABVUE. 10 7 TTABVUE. 11 8 TTABVUE. Opposition No. 91243077 6 Applicant filed a trial brief and Opposer filed a rebuttal trial brief.12 As noted, the only evidence Opposer has submitted is (1) the purported testimony declarations of Opposer, Opposer’s ex-husband, and Ms. Verduzco; and (2) documents attached as exhibits to Ms. Verduzco’s purported testimony declaration. A fatal flaw with Opposer’s evidence is that the purported testimony declarations submitted by Opposer lack the required attestation. Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1), provides that testimony may be submitted in the form of an affidavit or a declaration under Trademark Rule 2.20, 37 C.F.R. § 2.20, and in conformance with the Federal Rules of Evidence. Trademark Rule 2.20 in turn provides that a declaration may use language referencing 18 U.S.C. § 1001.13 Additionally, 35 U.S.C. § 25 authorizes the USPTO to accept a declaration under Trademark Rule 2.20 or the language of 28 U.S.C. § 1746.14 See TRADEMARK MANUAL 12 Per the Board’s August 16, 2018 institution order, Opposer’s trial brief was due by January 3, 2020. See 2 TTABVUE 3. Opposer did not file her trial brief by the set deadline. On February 27, 2020, Opposer filed a motion to reopen her time to file her trial brief, see 10 TTABVUE, which was denied by Board order dated June 18, 2020. 13 TTABVUE. 13 The rule provides the following language for a signed and dated declaration referencing 18 U.S.C. § 1001: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true. 14 A declaration under 28 U.S.C. § 1746 executed within the United States should read as follows: I declare (or certify, verify, or state) under penalty of perjury that the foregoing is true and correct. Executed on (date). (Signature) Opposition No. 91243077 7 OF EXAMINING PROCEDURE (TMEP) § 804.01(b) (October 2018). The purported testimony declarations submitted by Opposer do not comply with any of the foregoing attestation requirements. Instead the purported testimony declarations simply consist of statements without any verification or attestation as to their truth. As such, these statements do not constitute testimony. See Fed. R. Evid. 603 (“Before testifying, a witness must give an oath or affirmation to testify truthfully.”) (emphasis added); McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1897 n.4 (TTAB 1989) (“unsworn statement does not constitute testimony”); see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 703.01(h) (2020) (stating that testimony by affidavit or declaration pursuant to 37 C.F.R. § 2.20 must be made in conformance with the Federal Rules of Evidence). Insofar as all three purported testimony declarations submitted by Opposer comprise statements that are unsworn and are not otherwise verified, they have no probative value, and we give these purported declarations no consideration. As for the documents attached as exhibits to Ms. Verduzco’s purported testimony declaration, we also give them no consideration since Ms. Verduzco’s unsworn statements cannot provide proper authentication of the documents. Moreover, even if we were consider these documents standing alone, these documents are not the type which may be submitted under a notice of reliance. See Trademark Rules 2.122(d)(1) and (2) and 2.122(k), 37 C.R.F. §§ 2.122(d)(1) and (2) and 2.122(k). Because Opposer, as the party bearing the burden of proof in this proceeding, has failed to submit any evidence which we may consider, Opposer has not only failed to Opposition No. 91243077 8 demonstrate her entitlement to bring a statutory cause of action in this opposition proceeding,15 but she has also failed to prove any of her asserted claims. Decision: The opposition is dismissed in its entirety with prejudice. 15 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this inquiry as entitlement to bring a statutory cause of action. Despite the change in nomenclature, our prior decisions and those of the U.S. Court of Appeals for the Federal Circuit interpreting Sections 13 and 14 remain applicable. Copy with citationCopy as parenthetical citation