Mandarin Music Pty Ltd.v.Joseph Alan Kalman Greenbaum

Trademark Trial and Appeal Board

Aug 31, 2004

No. 91118664 (T.T.A.B. Aug. 31, 2004)

Mailed: 8/31/2004
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Mandarin Music Pty Ltd.
v.
Joseph Alan Kalman Greenbaum
_____
Opposition No. 91118664
to application Serial No. 75655561
filed on March 8, 1999
_____
Richard Lehv and Michael Chiappetta of Fross Zelnick Lehrman
& Zissu for Mandarin Music Pty Ltd.
Joseph Alan Kalman Greenbaum, pro se.
______
Before Seeherman, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed to register the mark shown
below
for “prerecorded compact discs, audio cassettes and audio
tapes all featuring music and other sound recording devices,
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91118664
2
namely audio discs, video discs, and video cassettes all
featuring music.”1
Mandarin Music Pty Ltd. opposed registration on the
ground that applicant failed to have a bona fide intention
to use the mark in commerce. More specifically, opposer
alleged, in pertinent part, that it is the owner of the mark
TAXIRIDE used in connection with entertainment services in
the nature of live musical performances, and for musical
sound recordings and musical video recordings featuring a
musical group, and for clothing “and other goods and
services”; that it has filed application serial no. 75758060
to register the mark TAXIRIDE for such goods and services;
that applicant’s original application listed both goods and
services, but that at the time he filed his application,
“Applicant did not have a bona fide intent to use the mark
in commerce on the foregoing goods and services”; that
applicant later deleted the services from the application,
but that at the time of the amendment, “Applicant did not
have a bona fide intent to use the mark in commerce on such
goods”; and that “[u]nder Section 1(b) of the Lanham Act, 15
U.S.C. 1051(b), and Section 45 of the Lanham Act, 15 U.S.C.
1127, Applicant is therefore not entitled to registration of
the mark sought to be registered.” Lastly, opposer alleged
1 Application Serial No. 75655561, filed March 8, 1999, based on
an allegation of a bona fide intention to use the mark in
commerce.
Opposition No. 91118664
3
that in connection with its application, the examining
attorney indicated that registration of opposer’s mark might
be refused under Section 2(d) in the event that applicant’s
application serial no. 75655561 matured into a registration.
Opposer also stated that its application serial no. 75758060
later was suspended pending the disposition of applicant’s
application involved herein.
Applicant, in his answer, admitted allegations in the
paragraphs of the notice of opposition regarding the filing
date of his application and the identification of goods set
forth therein, and stated that “the Applicant had or
continues to have a bona fide intent to use the mark in
commerce on the goods and services listed in his original
application filed on March 8, 1999 and in the goods listed
in his amended application filed on September 20, 1999.”
Applicant also affirmatively claimed that he has since
commenced use of the mark for the goods listed in his
application. Applicant otherwise denied the allegations in
the notice of opposition.
The record consists of the pleadings; the involved
application file; trial testimony, and related exhibits, of
two individuals taken by opposer by way of depositions upon
written questions.2 Applicant did not take any testimony or
2 Opposer also filed a notice of reliance on two excerpts
retrieved from Internet websites. However, this type of evidence
is not admissible by notice of reliance under Trademark Rule
Opposition No. 91118664
4
introduce any other evidence. Only opposer filed a brief.3
An oral hearing was not requested.
Section 13(a) of the Trademark Act 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).
The standing question is an initial and basic inquiry
made by the Board in every inter partes case. That is,
standing is a threshold inquiry. Standing is an essential
element of an opposer’s case which, if it is not proved at
trial, defeats an opposer’s claims. See Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982); and No Nonsense Fashions, Inc. v. Consolidated
2.122(e). Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d
1633, 1634 n. 3 (TTAB 1999); and TBMP §704.08 (2d ed. rev. 2004).
Even if considered, however, this evidence is irrelevant to
opposer’s standing in this case; rather, it pertains to the claim
of no bona fide intent to use the mark.
3 While it is indeed the better practice for a defendant, if it
believes that the plaintiff has failed to sustain its burden of
proof in the case, to file a brief indicating the inadequacy of
the plaintiff’s evidence and arguments, there is no requirement
that a defendant do so. Trademark Rule 2.128(a)(3); and TBMP
§801.02 (2d ed. rev. 2004) [“The filing of a brief on the case is
optional, not mandatory, for a party in the position of
defendant.”]. Consequently, it cannot be said that applicant has
conceded the issues herein, including opposer’s standing, by
failing to file a brief on the case.
Opposition No. 91118664
5
Foods Corp., 226 USPQ 502 (TTAB 1985). See also:
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1848 (Fed. Cir. 2000); and Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
In the present case, the notice of opposition includes
a proper allegation of opposer’s standing. More
specifically, paragraph 1 of the notice of opposition, as
noted above, contains allegations of opposer’s use of the
mark TAXIRIDE in connection with certain goods and services.
The problem is that opposer has failed to prove its standing
in this case to be heard on any issue.
Firstly, applicant did not make any admissions in his
answer that would excuse opposer from having to prove, as an
element of its case in chief, its standing to be heard in
this proceeding. Allegations alone do not establish
standing.
Secondly, opposer failed, at trial, to take any
testimony or introduce any other evidence to prove its
standing to bring this opposition proceeding. Opposer took
two testimony depositions on written questions, one of a
private investigator specializing in intellectual property
matters, and the other of an attorney at a Canadian law
firm. The entireties of both depositions center on
opposer’s claim of applicant’s failure to have a bona fide
intention to use the mark in commerce. The testimony is
Opposition No. 91118664
6
devoid of any facts and/or exhibits that bear on opposer’s
standing.4
Because opposer has not proven its standing, the
opposition must be dismissed.5 In view thereof, we elect
not to consider the merits of the pleaded ground. See
American Paging Inc. v. American Mobilphone Inc., 13 USPQ2d
2036 (TTAB 1989), aff’d, 923 F.2d 869, 17 USPQ2d 1726 (Fed.
Cir. 1990); and American Forests v. Sanders, 54 USPQ2d 1860,
1864 (TTAB 2000).
Decision: The opposition is dismissed for opposer’s
failure to prove its standing.
4 Further, opposer did not make its application serial no.
75758060 of record, and the Board does not take judicial notice
of files of applications and/or registrations, where no copies
thereof are filed, and where they are not the subject of the
proceeding. Beech Aircraft Corp. v. Lightning Aircraft Co., 1
USPQ2d 1290 (TTAB 1986).
5 Although 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, it is interesting to note that
opposer’s brief does not include even a single sentence setting
forth a fact which is relevant to opposer’s standing.