Home Box Office, Inc.v.Vanderbilt Trading Partnership

Trademark Trial and Appeal Board

Dec 3, 2008

No. 91167861 (T.T.A.B. Dec. 3, 2008)

Mailed: December 3, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Home Box Office, Inc.
v.
Vanderbilt Trading Partnership
_____

Opposition No. 91167861
_____

Sharon A. Ceresnie and Douglas N. Masters of Loeb & Loeb
LLP, for Home Box Office, Inc.

Shmuel D. Taub, Esq., for Vanderbilt Trading Partnership

_____

Before Holtzman, Drost, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Vanderbilt Trading Partnership applied to register the
mark, “SOPRANO CREATIONS” for “boys and mens clothing,
namely suits, pants, shirts, vests, jackets, sweaters,
coats,” in International Class 25.1
Home Box Office, Inc. opposed the registration. In its
original notice of opposition, opposer alleged that

1 Serial No. 76533668, filed on July 31, 2003, under Section 1(a)
of the Trademark Act, 15 U.S.C. § 1051(a), alleging first use and
first use in commerce on November 1, 2002, and disclaiming the
exclusive right to use “CREATIONS” apart from the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91167861
2
applicant's mark as used on its goods is likely to cause
confusion with, and to dilute, opposer's previously used and
registered mark THE SOPRANOS for, inter alia, “clothing,
namely, shirts, t-shirts, turtlenecks and hats” in
International Class 25 (Registration No. 2539014) and
“ongoing dramatic television program” in International Class
41 (Registration No. 2366388).
Applicant filed an answer denying the salient
allegations in the opposition, and moreover stating that
“[a]pplicant has not sold any shirts or sweaters and does
not intend to do so in the future.” In view of the
statements made in applicant's answer, opposer amended the
notice of opposition to allege the additional grounds of
lack of use of the mark in commerce, and fraud. Applicant,
in its answer to the amended pleading, reiterated that
“[a]pplicant has not sold any shirts or sweaters and does
not intend to do so in the future.” Applicant otherwise
denied the salient allegations of the amended notice of
opposition.

The Record
The record in this opposition proceeding consists of
the pleadings and the application file by operation of
Trademark Rule 2.122(b), 37 CFR §2.122(b). Neither party
submitted testimony or other evidence. Opposer did file a
notice of reliance, consisting solely of applicant’s
Opposition No. 91167861
3
responsive pleadings, which are already of record, as well
as an unauthenticated letter purportedly from applicant’s
counsel, which was not properly submitted via notice of
reliance. See Trademark Rule 2.122(e), 37 CFR §2.122(e)
(providing for the filing of printed publications and
official records through a notice of reliance). Since the
pleadings included in opposer’s notice of reliance are
already of record and since the letter is not admissible by
means of a notice of reliance, and otherwise consists of
inadmissible hearsay, we do not consider opposer’s notice of
reliance at all in this decision. Indeed, opposer did not
even mention its notice of reliance in its “Description of
the Record” in its trial brief, instead listing the record
as consisting solely of applicant’s responsive pleadings.
(Opposer’s Trial Brief at 1).
Only opposer filed a trial brief. We note that
opposer, in its trial brief states:

“Opposer only addresses Count III [lack of use in
commerce] and IV [fraud] of the Amended Notice of
Opposition in this trial brief, as it believes
Opposer prevails on these counts based on the
clear record in this proceeding.”
(Opposer’s Trial Brief at n. 2).
Furthermore, opposer’s “Statement of the Issues” in its
trial brief reads:

“The primary issue before the Board is whether
Applicant committed fraud on the PTO by declaring
that it had used the mark in commerce for all of
the applied-for goods when, in fact, it knew that
it had not, thereby rendering the application void
ab initio.”
Opposition No. 91167861
4
(Opposer’s Trial Brief at 1).

We therefore consider that opposer has waived its
claims of likelihood of confusion and likelihood of
dilution.
Standing
Standing is a threshold issue that must be proven in
every inter partes case. See Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982) ("The facts regarding standing . . . must be
affirmatively proved. Accordingly, [plaintiff] is not
entitled to standing solely because of the allegations in
its [pleading]."). To establish standing in an opposition,
opposer must show both “a real interest in the proceedings
as well as a ‘reasonable’ basis for his belief of damage.”
See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025
(Fed. Cir. 1999). It is not necessary that opposer
establish its own prior rights in the mark at issue in order
to prove standing. Id.
Nevertheless, opposer here has provided no evidence of
its standing to oppose applicant’s registration. Having
introduced no evidence into the record, opposer has failed
to establish any information regarding opposer or its
business and how opposer may be damaged by applicant’s
registration. Opposer pleaded several registrations in its
Opposition No. 91167861
5
original and amended notices of opposition. However,
opposer did not introduce those registrations into the
record. That is, 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 in accordance with Trademark Rule 2.122(d); 37
CFR §2.122(d). The Board does not take judicial notice of
registrations, and opposer must properly introduce its
pleaded registrations into the record. See, e.g., 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); Weyerhaeuser Co. v. Katz, 24
USPQ2d 1230, n.2 (TTAB 1992). Furthermore, there is nothing
in applicant’s pleadings that admits opposer’s standing.
Accordingly, we find that opposer has not established
its standing to oppose the registration. Because opposer
has not established its standing, opposer has shown no right
to relief on its claims.
DECISION: The opposition is dismissed.