Cooking with Bubba, Inc.v.Jack W. Deason

Trademark Trial and Appeal Board

Jul 22, 2008

No. 91170880 (T.T.A.B. Jul. 22, 2008)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB Mailed: July 22, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Cooking With Bubba, Inc.

v.

Jack W. Deason
_______

Opposition No. 91170880
to Application No. 78687320
filed on August 7, 2005
_______

Cooking With Bubba, Inc., pro se (brief filed by Melony
Lipsey, Secretary-Treasurer).

Jack W. Deason, pro se.
_______

Before Rogers, Walsh, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Applicant seeks registration of the mark COOKING WITH
BUBBA (standard characters) for
Providing a database in the field of recipes
and cooking information in International
Class 43.1

Cooking With Bubba, Inc., filed an opposition to
registration, alleging that applicant’s mark, when used in
connection with the identified services, is likely to cause
confusion in light of opposer’s previous use of the mark

1 Alleging first use and first use in commerce of the mark as of
July 25, 2005.
Opposition No. 91170880

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“Cooking With Bubba.” Trademark Act § 2(d); 15 U.S.C.
§ 1052(d). By its answer,2 applicant denied the allegations
of the notice of opposition.
Evidentiary Matters
Pursuant to Trademark Rule 2.122, the record in this
case includes the pleadings and the file of the involved
application.
As required by the applicable rules, on May 15, 2006,
the Board mailed to the parties an order instituting this
proceeding and setting out dates for discovery and trial
periods. Pursuant to that order, opposer was assigned the
thirty-day period ending March 1, 2007, for taking testimony
or submitting notices of reliance in support of its case.
On March 29, 2007, opposer filed a three-page letter to
the Board (identified in opposer’s brief as “testimony of
the plaintiff”), signed by Melony Lipsey, an officer of
opposer. The letter sets out in narrative form some
information and argument with respect to opposer’s claim
that applicant’s registration and use of its mark would give
rise to a likelihood of confusion with opposer’s previously-

2 Filed June 12, 2006, applicant’s paper was titled “Answer and
Counterclaim.” The only counterclaim the Board may entertain is
a counterclaim for cancellation of a trademark registration owned
by the adverse party. Trademark Rule 2.106(b). Applicant’s
paper does not seek such relief or set out any grounds for doing
so, nor did applicant pay the required fee for a counterclaim.
Indeed, it is not clear from this record that opposer owns any
registration which could be subject to cancellation.
Accordingly, we consider applicant’s paper to be an answer,
without a counterclaim.
Opposition No. 91170880

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used mark. Enclosed with the letter were a number of
“[e]xamples showing [opposer’s] use of the mark ‘Cooking
with Bubba.’ Exh. A-U (“In closing, I have enclosed
examples showing Cooking With Bubba, Inc., has clearly
established a common law use of the mark since 1998. My
opposition to Mr. Deason is based on protecting our product
brand name and company name.”).
There are two problems with opposer’s submission:
First, it is untimely. While a notice of reliance on
certain materials may be submitted, such a submission may
not be considered if it is submitted outside the period set
by the Board for that party’s testimony. Trademark Rule
2.120(j)(3)(i); 2.122(e)(“The notice of reliance shall be
filed during the testimony period of the party that files
the notice.”). Further, testimony must be taken during the
offering party’s testimony period.3 Opposer’s testimony
period ended on March 1, 2007. However, opposer’s
submission is dated March 25, 2007, and was filed on March
29, 2007. Whether considered to be testimony or a notice of
reliance, this matter is untimely, and has not been
considered.
Second, even if it were timely, opposer’s evidence has

3 Unlike a notice of reliance, testimony may be filed outside the
testimony period, so long as it was taken during the period. To
the extent applicant intended its submission to be testimony, but
see discussion below, it is untimely because it is dated outside
the testimony period.
Opposition No. 91170880

4
not been properly submitted. Opposer’s letter to the Board
explaining certain facts and making arguments in support of
its claim cannot be considered because it is not testimony
taken pursuant to the applicable rules. In a Board
proceeding, absent a stipulation to the contrary, such a
narrative may only be submitted as part of a timely-
conducted testimonial deposition of a witness, under oath,
and before a court reporter, who will prepare a transcript
of the proceeding for submission to the Board. Such a
procedure may only be undertaken after giving appropriate
notice to all parties to the proceeding, thereby allowing
them the opportunity to appear, to object to testimony (as
appropriate), and to cross-examine the witness. See
generally, Trademark Rule 2.123. Evidence not obtained in
compliance with this rule may not be considered. Trademark
Rule 2.123(l).
Even if we were to consider opposer’s letter to be a
notice of reliance upon the attached exhibits,4 opposer
would fare no better. The categories of materials which may
be submitted under a notice of reliance are limited,
consisting only of an adverse party’s discovery deposition,
answer to an interrogatory, or admission to a request for
admission, Trademark Rule 2.120(j)(3)(i), printed

4 Opposer’s submission is not in the proper form for a notice of
reliance. See Trademark Rule 2.122(e).
Opposition No. 91170880

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publications,5 and official records, Trademark Rule
2.122(e). All other materials must be identified by a
competent witness during a testimonial deposition.
The various exhibits to opposer’s letter consist of
correspondence, business forms, sales invoices, web pages,
and the like. None of these materials may be submitted
under a notice of reliance. The only possible exceptions
are Exhibits M and N, which are occupational tax
certificates (identified by opposer as “business
license[s],”) for opposer’s business for the years 2000 and
2006. While these might be considered official records,
they are of little help to opposer. These certificates
demonstrate that opposer’s corporation exists and has paid
its local taxes (or at least did in the relevant years).
However, they do not demonstrate that opposer provided goods
or services under its asserted trademark; at best they show
only that opposer legally might have done so. Accordingly,
we have given opposer’s May 29, 2007, submission no further
consideration.
Finally, we note that attached to opposer’s notice of
opposition were several pages of documents apparently

5 “Printed publications” are generally defined as “books and
periodicals, available to the general public in libraries or of
general circulation among members of the public or that segment
of the public which is relevant under an issue in a
proceeding....” TBMP § 704.08 (2d ed. rev. 2004)(and cases cited
therein). A web page does not qualify as a printed publication
merely by virtue of its having appeared on the internet.
Opposition No. 91170880

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pertaining to opposer’s business. With one exception not
applicable here, “an exhibit attached to a pleading is not
considered evidence....” Trademark Rule 2.122(c). These
documents have likewise been given no consideration.
Standing and Ground for Opposition
In an opposition proceeding before the Board, the
opposer bears the burden of proving (1) that it has standing
to oppose;6 and (2) that it has a valid ground to prevent
registration of the mark in the subject application. In its
notice of opposition, opposer alleged that it owned common-
law rights to the term “Cooking With Bubba,” and that it
would be harmed by registration of applicant’s mark because
it would give rise to a likelihood of confusion. These
allegations are sufficient, if proven, to merit judgment in
opposer’s favor.
But allegations are not proof, and opposer’s failure to
submit any admissible evidence of its prior use of a
trademark dooms its case,7 because without such evidence,

6 An opposition may not be filed by a member of the public who
simply does not like the mark (or the applicant). “Standing” is
a requirement that a plaintiff show a personal interest in the
case, and is typically demonstrated by showing plaintiff’s
reasonable belief in damage resulting from registration of a mark
by the defendant.
7 When the opposer owns a registered trademark, it need only
submit a proper copy of the registration in order to show that it
owns a valid trademark, and opposer need not prove priority.
King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). On the other hand, where – as here –
opposer does not have a trademark registration, it is opposer’s
burden to demonstrate (by proper testimony or other admissible
Opposition No. 91170880

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opposer can prove neither its standing to oppose nor its
priority of use and a likelihood of confusion with
applicant’s asserted trademark.
Conclusion
After careful consideration of the record,8 we conclude
that opposer has failed to submit admissible evidence which
would establish either its standing or its priority and a
likelihood of confusion with opposer’s alleged trademark.
Decision: The opposition is DISMISSED.

evidence) that it has a valid, distinctive mark, and that it has
priority of use over the opposed applicant.
8 We acknowledge opposer’s brief, filed January 20, 2008. We do
not specifically address applicant’s arguments, however, because
without proof that it owns a trademark, opposer cannot prevail;
arguments in a brief which are not supported by competent
evidence cannot be considered.