Isaco International Corporationv.EZ, Inc.

Trademark Trial and Appeal Board

Jul 17, 2013

No. 91195367 (T.T.A.B. Jul. 17, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
July 17, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Isaco International Corporation
v.
EZ, Inc.
_____
Opposition No. 91195367
_____
Max Shaftal of Patzik, Frank & Samotny Ltd. for Isaco International Corporation.

Michael Clerkin of Clerkin & Sinclair LLP for EZ, Inc.
_____

Before Cataldo, Wolfson, and Masiello, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:

EZ, Inc. (“applicant”) filed an application to register the trademark
EUROPAPI, in standard character form, for:
Handbags, in International Class 18;
Bed and table linen, in International Class 24; and
Belts; Hats, Jackets, Pants; Shirts; Shoes; Wristbands, in
International Class 25. 1

1 Application Serial No. 77847089, filed on October 12, 2009.
Opposition No. 91195367

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The application was initially filed under Trademark Act § 1(a), 15 U.S.C.
§ 1051(a), claiming dates of first use and first use in commerce of April 2, 2009 for
all classes; and under Trademark Act § 44(e), 15 U.S.C. § 1126(e), claiming
ownership of Spanish Registration No. 8196479. Applicant deleted Section 44(e) as
a basis for the application by amendment filed on March 9, 2010.
Isaco International Corporation (“opposer”) opposed registration of the mark
on grounds that (i) when applicant filed its application under Trademark Act § 1(a),
it had not commenced use of its mark in U.S. commerce in connection with any of
the goods identified in the application; and (ii) applicant’s mark, as used in
connection with applicant’s goods, so resembles opposer’s previously registered
mark PAPI as to be likely to cause confusion, mistake or deception, under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d).2 Opposer also pleaded a claim of
fraudulent procurement of the application; however, opposer has not argued that
claim in its briefs and, indeed, has affirmatively abandoned it. See opposer’s reply
brief at 10 (“… Opposer is not asserting fraud.”) The fraud claim is accordingly
waived. Applicant denied the salient allegations of the Renewed First Amended
Notice of Opposition. The case has been fully briefed.
The Record
The record includes the pleadings and, by operation of Trademark Rule
2.122, 37 C.F.R. § 2.122, the application file for applicant’s mark. Opposer has
made of record its two pleaded U.S. registrations by filing with its Notice of

2 Renewed First Amended Notice of Opposition, filed May 19, 2011 (referred to hereinafter
as the “Notice of Opposition”), Counts II and III.
Opposition No. 91195367

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Opposition copies of the registrations, with information as to their status and title,
from the online database records of the U.S. Patent and Trademark Office. Neither
party has filed any testimony, but both have filed notices of reliance upon
documentary evidence as set forth below:3
A. Opposer’s notice of reliance on:
1. Applicant’s answers to certain interrogatories propounded by opposer.
2. Dictionary definitions of the term “Euro.”
3. Published news items relating to applicant.
4. Internet materials relating to applicant.
B. Applicant’s notice of reliance on:
1. Opposer’s responses to certain interrogatories propounded by applicant
and discovery documents identified therein, consisting of advertising
materials for opposer’s goods.

2 Internet materials relating to applicant’s goods.

Standing
Petitioner has made of record its pleaded U.S. registrations and has thereby
shown that it is not a mere intermeddler and has established its standing to bring
these proceedings. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 185 (CCPA 1982). If a plaintiff can show standing on one ground, it has
the right to assert any other grounds in an opposition or cancellation proceeding.

3 Opposer’s notice of reliance is cited herein as “O-NOR” and applicant’s notice of reliance is
cited as “A-NOR.”
Opposition No. 91195367

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TBMP 309.03(b). Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1877
(TTAB 2011).
Non-Use
We first address opposer’s claim on grounds of non-use. The law is clear that
holding an application to be void ab initio is an appropriate remedy where the
applicant has not used its mark on any of the goods or services identified in the
application prior to the filing of the application. Laboratories du Dr. N.G. Payot
Establissement v. Southwestern Classics Collection Ltd., 3 USPQ2d 1600 (TTAB
1987); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 (TTAB 2012).
Opposer has made of record the following response of applicant to an
interrogatory:
INTERROGATORY NO. 1: Identify by name each
product EZ has offered for sale in commerce under the
EuroPapi designation in the United States, the time
period during which each such product has been sold, the
documents containing such information and the people
having knowledge of such information.
AMENDED RESPONSE: EZ has offered for sale or sold
jackets, pants, t-shirts, hats, and wristbands in it’s [sic]
retail store in the United States since June 15, 2010.
Prior to opening the US store, EZ sold via the internet.
The website launched on or about April 2, 2009 and sales
were available in the United States beginning at that
time. A diary of sales contains such information. Ellie
Ortiz and Rolando Ortiz have knowledge of such
information.
O-NOR, Exhibit 1.
Opposer also made of record a handwritten ledger, apparently setting forth
sales with dates, prices, and items. O-NOR, Exhibit 2 (the “Ledger”). There is some
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question as to whether the Ledger has been properly made of record. Opposer’s
notice of reliance lists the Ledger under the rubric “Applicant’s Interrogatory
Answers,” and refers to it as “Sales referred to in Applicant’s amended response to
Interrogatory 1….” If applicant delivered the Ledger to opposer as part of its
answer to Interrogatory No. 1, it could be properly entered into evidence under the
notice of reliance, in accordance with 37 C.F.R. 2.120(j)(3)(i); see TBMP § 704.10.
However, if the Ledger is merely a document produced during discovery in response
to a document production request and was not in fact delivered in answer to
Interrogatory 1, it would be improper to submit it under a notice of reliance, as it
would be lacking authentication. Opposer’s evidentiary submission is not clear on
this point. We note that applicant has not at any time raised an objection to the
submission of the Ledger in evidence. Nonetheless, we treat the Ledger as not
properly of record and have given it no consideration.
On the issue of non-use, opposer argues:
According to Applicant’s discovery responses, Applicant
did not actually sell any of the goods set forth in its
application until June 16, 2010….4 Applicant has never
supplemented its discovery answers to contradict this
statement. … Neither has Applicant ever used the
EuroPapi mark in commerce on or in connection with
handbags, belts, shorts or shoes.
… In its response to Opposer’s Interrogatories, Applicant
admitted that it launched a website “on or about April 2,
2009 and sales were available in the United States
beginning at that time.” However, Applicant’s own sales
information confirms that no actual sales occurred until

4 We note that applicant’s response to Interrogatory No. 1 states that certain goods were
“offered for sale or sold … since June 15, 2010.”
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at least June 16, 2010.5 Even assuming Applicant’s
statement about the website is accurate, merely including
goods on a website is insufficient to qualify for use under
the Lanham Act as such use requires that the goods be
“sold or transported in commerce.” 15 U.S.C. Section
1127.
Opposer’s brief at 20.
In reply, applicant argues as follows:
Applicant filed a trademark application with the USPTO
on October 12, 2009 based on its foreign registration of its
EUROPAPI trademark with a Section 44(e) and a Section
1(a) application. [Application File History]. The Applicant
was selling its goods outside of the United States prior to
submitting its application to the USPTO and submitted
its date of first use in commerce based on applying for
registration through its foreign registered mark as a
Section 44(e) application.
Applicant’s brief at 8-9.
The Applicant initially filed its application for its
EUROPAPI mark on October 12, 2009 based on its foreign
trademark registration with a Section 44(e) filing as well
as a Section 1(a) filing, which was subsequently changed
to a solely Section 1(a). [Application File History]. The
Applicant’s mark was being validly used, as identified by
its foreign trademark registration, prior to the date of
filing of its U.S. application.
…
The Applicant originally sought registration of its mark in
the United States based on its foreign registration of the
mark as evidenced by its Section 44(e) filing in addition to
it Section 1(a) filing [Applicant File History]. …
The Opposer mischaracterizes Applicant’s discovery
responses….
Interrogatory No. 1 requests information for products sold
in the United States only, it did not seek information for
all sales of products sold bearing the Applicant’s EuroPapi

5 This sentence refers to the Ledger.
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mark. The Opposer never sought information regarding
Applicant’s sales outside of the United States.
Applicant’s brief at 13-15.
By making of record applicant’s amended response to Interrogatory No. 1,
opposer has made a prima facie showing that applicant had not used its mark on or
prior to October 12, 2009. Applicant was on notice that the question of its use of the
mark prior to that date was in issue. Yet its response to the interrogatory, while
specific with respect to sales made substantially later than October 12, 2009, is
equivocal with respect to earlier dates. It states that a website “launched on or
about April 2, 2009,” but stops short of stating that any sales were made in the
United States through the website, or that marked goods were transported in
regulable commerce in response to sales through the website. The response is
limited to stating that “sales were available in the United States beginning at that
time [on or about April 2, 2009]”. We interpret the response to mean that applicant
cannot state with any degree of certainty that its marked goods were either sold or
transported in regulable commerce at any time prior to June 15, 2010.
After opposer presented its evidence that the applicant’s mark had not been
used at any date earlier than June 15, 2010, applicant had the opportunity to
submit evidence rebutting this prima facie showing. However, none of the evidence
submitted by applicant demonstrates a sale or transport of applicant’s goods at any
particular date. The evidence showing the offering of applicant’s goods on the
website is undated and accordingly is insufficient to
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demonstrate that the goods were sold or transported in U.S. commerce as of October
12, 2009. A-NOR, Exhibit 5.
Applicant’s arguments in its brief are unavailing. To state that “The
Applicant was selling its goods outside of the United States prior to submitting its
application to the USPTO” (Applicant’s brief at 8) does not help applicant because
sales outside of the United States are not “commerce” as defined in the Trademark
Act (see 15 U.S.C. § 1127)6 and do not create a basis for filing an application under
Section 1(a) (“The owner of a trademark used in commerce may request registration
of its trademark….” 15 U.S.C. § 1051(a)). Applicant’s brief at 13 and elsewhere
suggests that applicant’s foreign trademark registration is evidence of use of its
mark. (“The Applicant’s mark was being validly used, as identified by its foreign
trademark registration, prior to the date of filing of its U.S. application.”) This
suggestion is in error. The effect of a foreign registration in the context of an
application for U.S. registration is defined by Section 44 of the Trademark Act, 15
U.S.C. § 1126. Nowhere does Section 44 indicate that the submission of a foreign
registration can substitute for the requirement of Section 1(a) that the mark be in
use in regulable commerce; nor does Section 44 indicate that a foreign registration
has any relevance at all to an application filed under Section 1(a). The filing of a
foreign registration may create a statutory basis for an application under Section

6 “The word ‘commerce’ means all commerce which may lawfully be regulated by Congress.”
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44(e), 15 U.S.C. § 1126(e), and applicant did originally avail itself of this option.7
However, when applicant deleted its claim under Section 44(e) from the application
on March 9, 2010, the sole remaining statutory support for the application was
Section 1(a). If applicant’s mark was not in use in connection with the goods
identified in the application at the time the application was filed, then the
application did not at any time comply with the requirements of Section 1(a); and as
of March 9, 2010 the application was without any valid statutory basis.
As the evidence of record indicates that applicant’s mark was not in use in
connection with any of the goods identified in the application at the time the
application was filed, we find that the application, insofar as it was based on
Section 1(a), was void ab initio and registration must be refused.
In view of our finding that registration must be refused on grounds of nonuse,
we do not reach opposer’s claim of likelihood of confusion under Trademark Act
§ 2(d).
Decision: The opposition is sustained on the ground that applicant had not
used its mark on any of the goods identified in the application at the time it filed its
application.

7 Whether applicant had a valid statutory basis for its application or for ultimate
registration under Section 44(e) is questionable, in light of the fact that the foreign
registration and the U.S. application were apparently owned by two different entities.