Kajane McManusv.Steven G. Lisa, Ltd.

Trademark Trial and Appeal Board

Sep 16, 2008

No. 91166249 (T.T.A.B. Sep. 16, 2008)

Mailed: 9/16/08

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Kajane McManus
v.
Steven G. Lisa, Ltd.
_____

Opposition No. 91166249
to application Serial No. 78436516
filed on June 16, 2004
_____

Kajane McManus, pro se.

Jon. E. Kappes for Steven G. Lisa, Ltd.
______

Before Quinn, Cataldo and Ritchie de Larena, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Steven G. Lisa, Ltd. filed an application to register
the mark PATENT IT! (“PATENT” disclaimed) for “legal
services.”1
Kajane McManus, in an amended notice of opposition,
opposed registration under Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d), on the ground that applicant’s
mark, when used in connection with applicant’s services, so

1 Application Serial No. 78436516, filed June 16, 2004, alleging
first use anywhere and first use in commerce on January 29, 1994.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91166249
2
resembles opposer’s previously used mark PATNTIT for
intellectual property law services as to be likely to cause
confusion.
Applicant, in its answer, denied all of the allegations
in the amended notice of opposition.
The record consists of the pleadings and the file of
the involved application. Neither party took testimony nor
filed any other evidence during their respective testimony
periods. At the briefing stage, after the expiration of the
testimony periods, opposer contemporaneously filed a “Trial
Brief” and “Opposer’s First Notice of Introduction of
Evidence Under Rule 2.122” (with accompanying materials).
Applicant then filed its brief wherein it argues that the
opposition should be dismissed due to opposer’s failure to
take testimony or introduce any other evidence. Opposer
filed a reply brief wherein she indicates that she “did not
take testimony for the simple reason that, in its replies to
Opposer’s discovery papers, Applicant could not prove a date
of first use prior to that of Opposer.” (Reply Brief, p.
1). Opposer goes on to state:
Opposer is a patent agent. As such, her
knowledge of Trademark Trial and Appeal
Rules, etc. is minimal, at best.
Opposer earnestly has endeavored, to the
best of her ability, to follow the vague
and rather confusing guidelines
available to her in regard to trademark
oppositions, but this is not her forte,
and she is probably way out of her
league, so to speak, in this matter,
Opposition No. 91166249
3
where her errors which may be deemed
minor in nature compared to the overall
outcome of this matter, may only harm
her and not any other party. Opposer
read pertinent rules of practice in this
matter and tried to apply them to the
best of her ability based on her
knowledge of procedures in patent
matters. Patent matters are all she has
thorough knowledge of, as she has been a
patent agent for almost 25 years.
Therefore, Opposer submits she has not
in any manner ignored the rules, but may
have followed them imperfectly due to
her lack of expertise in this field,
outside of her day to day endeavors in
patent matters. Opposer believes she
has met her burden of proof and she
should not have her opposition go to the
wayside because she may not have
understood all the rules...She should
not lose her right to what was hers
first, due to her confusion in studying
the rules. The law is to provide
justice, more than it is to provide for
proper form, from an individual.
Surely, one cannot be denied justice
based on minor “pro forma”
discrepancies. (Reply Brief, p. 3).

Section 13(a) of the Trademark Act, 15 U.S.C. §1063(a),
allows for opposition to the registration of a mark by
anyone “who believes that they would be damaged by the
registration of a mark...” The party seeking to oppose the
registration of the mark must prove two elements: (1) that
it has standing, and (2) that there is a valid ground to
prevent the registration of the opposed mark. Young v. AGB
Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir. 1998).
As indicated above, opposer made absolutely no evidence of
record during its testimony period. Thus, the opposition
Opposition No. 91166249
4
must fail for lack of proof of standing and lack of proof of
the ground of likelihood of confusion. Our reasons follow.
The Board, early on in this proceeding in a pre-trial
order dated January 17, 2007, stated the following:
“[S]trict compliance with the Trademark Rules of Practice
and where applicable, the Federal Rules of Civil Procedure
is expected of all parties before the Board, whether or not
they are represented by counsel,” and “[o]pposer should also
familiarize herself with the Trademark Rules of Practice.”
Despite this admonition, opposer, as plaintiff and having
the burden of proof, has failed to follow the rules in
meeting her burden. A party may represent itself as opposer
did in this proceeding but, as expected of all parties,
whether or not represented by counsel, they are charged with
familiarity with the rules governing practice and procedure
before the Board.
Statements made in pleadings cannot be considered as
evidence in behalf of the party making them; such statements
must be established by competent evidence during the time
for taking testimony. Times Mirror Magazines, Inc. v.
Sutcliff, 205 USPQ 656, 662 (TTAB 1979); and TBMP §704.06(a)
(2d ed. rev. 2004). Further, applicant did not make any
admissions in its answer that would excuse opposer from
having to prove its standing and a ground for relief.
Opposition No. 91166249
5
In reviewing the file we note that the parties
submitted voluminous materials in connection with various
motions (and responses thereto). The materials include
affidavits and discovery responses. None of these
materials, however, was later introduced at trial. In
denying applicant’s motion for summary judgment, the Board
clearly stated:
The parties should note that the
evidence submitted in connection with
the motion for summary judgment is of
record only for consideration of that
motion. To be considered at final
hearing, any such evidence must be
properly introduced in evidence during
the appropriate trial period. See Levi
Strauss & Co. v. R. Josephs Sportswear
Inc., 28 USPQ2d 1464 (TTAB 1993); Pet
Inc. v. Bassetti, 219 USPQ 911 (TTAB
1993); American Meat Institute v. Horace
W. Longacre, Inc., 211 USPQ 712 (TTAB
1981).

Opposer submitted exhibits, as indicated above, at the
time she filed her final brief on the case. Evidentiary
material accompanying a brief on the case can be given no
consideration unless it was properly made of record during
the testimony of the offering party. Plus Products v.
Physicians Formula Cosmetics, Inc., 198 USPQ 111, 112 n.3
(TTAB 1978); and TBMP §539 (2d ed. rev. 2004). Because
opposer neither took testimony nor introduced any other
evidence, the evidence submitted with the brief obviously is
not of record. Thus, this material has not been considered.
Opposition No. 91166249
6
Lastly, opposer’s brief contains numerous factual
allegations in support of her claim. However, factual
statements made in a party’s brief on the case can be given
no consideration unless they are supported by evidence
properly introduced at trial. Statements in a brief have no
evidentiary value. Electronic Data Systems Corp. v. EDSA
Micro Corp., 23 USPQ2d 1460, 1462 n.5 (TTAB 1992); and TBMP
§704.06(b) (2d ed. rev. 2004).
The record is devoid of any testimony or evidence in
support of opposer’s claim. Opposer has the burden of
coming forward with evidence to support its case. It is
manifestly clear that opposer has not done so here.
Decision: The opposition is dismissed.