Devans Modern Breweries LTD.v.John J. Schwartz

Trademark Trial and Appeal Board

Jun 29, 2020

91244250 (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
_____
Devans Modern Breweries LTD.
v.
John J. Schwartz
_____

Opposition No. 91244250

_____

Rebecca L. Wilson of The Dobrusin Law Firm, PC
for Devans Modern Breweries LTD.

Edward S. Wright of Law Offices of Edward S. Wright
for John J. Schwartz.
_____
Before Kuhlke, Lynch, and Coggins, Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

John J. Schwartz (“Applicant”) seeks registration on the Principal Register of the
proposed mark THE DOGFATHER in standard characters1 for “bourbon” in
International Class 33.

1 Application Serial No. 87888976 was filed on April 23, 2018, based on alleged intent to use
the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
Opposition No. 91244250

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By its Notice of Opposition, Devans Modern Breweries LTD. (“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 common law rights in the
“brand” and “trademark” GODFATHER for beer, and its registrations of
GODFATHER in standard characters2 and ,3 both for “beer” in
International Class 32. Opposer did not attach copies of its pleaded registrations to
the Notice of Opposition, so as to enter them into evidence under Trademark Rule
2.122(d)(1), 37 C.F.R. § 2.122(d)(1).
In its Answer, Applicant denies all of Opposer’s allegations except: the filing of
Applicant’s application; that “Applicant did not use THE DOGFATHER mark prior
to April 23, 2018, Applicant’s constructive first use date;” and that “Opposer has not
consented to Applicant’s use or registration of THE DOGFATHER mark.”4 Thus,
Applicant did not admit Opposer’s priority or use of the mark GODFATHER at
common law or the current status and title of Opposer’s pleaded registrations.

2 Registration No. 5522006.
3 Registration No. 4386396.
4 1 TTABVUE 4-6 (Notice of Opposition); 4 TTABVUE 3 (Answer).
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Both parties filed briefs.5 However, neither party submitted evidence during their
respective trial periods, although the submission of evidence is optional for the party
in the position of defendant – but 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 asserts that its pleaded registrations are “incorporated by
reference” and that “[a]ccording to 37 C.F.R. § 2.122, the file or registration is part of
the record of the proceeding without any action by the parties.”6 While the file of the
opposed application automatically becomes part of the record of an opposition
proceeding under Trademark Rule 2.122(b), a pleaded registration does not. 37 C.F.R.
§ 2.122. Opposer introduced no evidence during its testimony period to show that it
is the owner of its pleaded registrations and that the registrations are valid and
subsisting as required by Trademark Rule 2.122(d); 37 CFR §2.122(d). And the Board
does not take judicial notice of registrations. See, e.g., UMG Recordings, Inc. v.
O’Rourke, 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). “Because [O]pposer has failed to comply with the ‘simple and clear’

5 We have exercised our discretion to consider Opposer’s late-filed Reply Brief, given the
explanation and proof of a technical difficulty making a timely filing through ESTTA.
6 7 TTABVUE 9 (Opposer’s Reply Brief).
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directives of Trademark Rule 2.122(d), [O]pposer’s pleaded registration[s are] not of
record.” Sterling Jewelers Inc. v. Romance & Co., 110 USPQ2d 1598, 1601 (TTAB
2014).
Similarly, the “soft” copies of the pleaded registrations attached to Opposer’s
Reply Brief are untimely and cannot be considered. Life Zone Inc. v. Middleman Grp.,
Inc., 87 USPQ2d 1953, 1955 (TTAB 2008) (“Evidence submitted outside of the trial
periods — including that attached to briefs — is untimely, and will not be
considered.”). See also TBMP § 704.05(b) (2020) (“Exhibits and other evidentiary
materials attached to a party’s brief on the case can be given no consideration unless
they were properly made of record during the time for taking testimony.”); Trademark
Rule 2.123(k), 37 C.F.R. § 2.123(k). Moreover, even if the soft copies could be
considered, “[t]he Board has routinely held that the submission of such a copy of a
pleaded registration, by itself, is insufficient for purposes of establishing the
continuing subsistence and the current title of the registration and, therefore, does
not suffice to make the registration of record.” United Global Media Grp., Inc. v.
Tseng, 112 USPQ2d 1039, 1041 (TTAB 2014) (citing Teledyne Techs., Inc. v. W.
Skyways, Inc., 78 USPQ2d 1203, 1026 (TTAB 2006)).
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
Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014).
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Although a pleaded registration, for which status and title is proven, may establish
standing, in this case Opposer failed to introduce its pleaded registrations, so we
cannot rely on them. Demon Int’l, 86 USPQ2d at 1060 (“Because opposer did not
submit proof of ownership and the issuance of its asserted registration, and applicant
did not in its answer admit opposer’s ownership of such registration, opposer has not
satisfied its responsibility for proving its standing”); see also Coach Servs. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012) (pleaded
registration in evidence establishes standing); Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (same). Opposer introduced no
evidence to demonstrate 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 marks (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
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 [O]pposer has failed to submit
any evidence supporting its asserted claim of likelihood of confusion and inasmuch
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as [O]pposer has failed to prove any common law rights in its pleaded mark or that
its pleaded registration[s] … [are] currently owned by [O]pposer and that [they are]
valid and subsisting, [O]pposer has failed to demonstrate its standing or that it is
entitled to any relief under its asserted claim of likelihood of confusion.” Sterling
Jewelers, 110 USPQ2d at 1602. Thus, Opposer’s asserted likelihood of confusion claim
also must fail.
Decision: The opposition is dismissed.