GMA Accessories, Inc.v.The Black & Decker Corporation

Trademark Trial and Appeal Board

Mar 31, 2008

No. 91166381 (T.T.A.B. Mar. 31, 2008)

Mailed: March 31, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

GMA Accessories, Inc.

v.

The Black & Decker Corporation
_____

Opposition No. 91166381
to application Serial No. 78449003
filed on July 12, 2004
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John P. Bostany of The Bostany Law Firm for GMA Accessories,
Inc.

William G. Pecau and Rachel M. Hofstatter of Steptoe &
Johnson LLP for The Black & Decker Corporation.
______

Before Hairston, Walters and Walsh, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by The Black & Decker
Corporation (applicant) to register the mark CHARLOTTE (in
standard character form) for “metal door hardware, namely,
knobs, levers, lever sets, handles, handle sets, dead bolts,
keys and key blanks; non-electric metal door bells; metal
door knockers; metal door stops; non-magnified metal door
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91166381
2
viewers; metal door hinges; metal door kick plates; metal
house address numbers” in International Class 6.1
Registration has been opposed by GMA Accessories, Inc.
(opposer). Opposer alleges that applicant’s mark, when
applied to applicant’s goods so resembles opposer’s
previously used and registered mark CHARLOTTE for “sacks and
bags, namely, handbags made of textiles and beads,”2 as to
be likely to cause confusion.
Applicant, in its answer, denied the salient
allegations of the notice of opposition.
The record consists of the pleadings and the file of
the involved application. Opposer submitted notices of
reliance on a status and title copy of its pleaded
Registration No. 2217341, a United States Patent and
Trademark Office (USPTO) assignment record for Registration
No. 1135037 (this registration was not pleaded herein), and
two excerpts from printed publications.3

1 Serial No. 78449003, filed on July 12, 2004, based on an
allegation of a bona fide intention to use the mark in commerce.
2 Registration No. 2217341 issued on January 12, 1999. Although
opposer pleaded ownership of several other registrations, as
discussed infra at n. 3, opposer failed to make such
registrations properly of record. We have not considered these
registrations.
3 In an order issued August 20, 2007, the Board granted
applicant’s motion to strike a number of materials submitted by
opposer by way of notice of reliance. The materials included
plain copies of registrations that did not comply with Trademark
Rule 2.122(d); and photographs, invoices, hangtags and labels
that are not proper subject matter for a notice of reliance.

Opposition No. 91166381
3
Neither opposer nor applicant took testimony; applicant
submitted no other evidence on its behalf.
To prevail on its Section 2(d) claim, opposer must
prove that it has priority, and that a likelihood of
confusion exists. See, e.g., Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed.
Cir. 2002) [“[t]he burden of proof rests with the
opposer … to produce sufficient evidence to support the
ultimate conclusion of [priority of use] and likelihood of
confusion”]; and Hoover Co. v. Royal Appliance Mfg. Co., 283
F.3d 1357, 57 USPQ2d 1720, 1722 (Fed. Cir. 2001)[“[I]n
opposition proceedings, the opposer bears the burden of
establishing that the applicant does not have the right to
register its mark”].
Although opposer states in its brief that “plaintiff
has priority over defendant” (Brief at 2), opposer does not
indicate the basis for its claim of priority. We presume
that opposer is relying on its ownership of pleaded
Registration No. 2217341 since opposer has made of record a
status and title copy of this registration.
For a status and title copy to be competent evidence of
the status and title of a registration, the status and title
copy must have been issued by the USPTO at a time reasonably
contemporaneous with the filing of the notice of opposition.
See Marriott Corporation v. Pappy’s Enterprises, Inc., 192
Opposition No. 91166381
4
USPQ 735 (TTAB 1976). The status and title copy of
opposer’s pleaded Registration No. 2217341 was prepared on
July 22, 2001, more than four years prior to the filing of
the notice of opposition on August 26, 2005. This is not
reasonably contemporaneous with the date of filing the
notice of opposition. See Hard Rock Café International
(USA) Inc. v. Elsea, 56 USPQ2d 1504, 1511 (TTAB 2000)
[status and title copies prepared three years prior to
notice of opposition not reasonably contemporaneous with
filing notice of opposition]. Thus, the status and title of
opposer’s pleaded Registration No. 2217341 are not properly
proven by this copy of the registration. Furthermore,
inasmuch as opposer did not offer any testimony herein,
there is no testimony that the pleaded registration is owned
by opposer and is valid and subsisting.
Inasmuch as opposer has not established its priority,
opposer cannot prevail on its claim of likelihood of
confusion.
Decision: The opposition is dismissed.