Meritage Real Estate Develop-ment Group, Inc.v.Andrie F. Grimaud and Michael R. Marquardt

Trademark Trial and Appeal Board

Aug 30, 2006

No. 91162276 (T.T.A.B. Aug. 30, 2006)

Mailed: August 30, 2006
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Meritage Real Estate Development Group, Inc.
v.
Andrie F. Grimaud and Michael R. Marquardt
_____

Opposition No. 91162276 to application Serial No. 78180707
filed on October 31, 2002
_____

Michael J. Tunink of Tunink Law Firm for Meritage Real Estate
Development Group, Inc.

Christopher J. Day of Law Office of Christopher Day for Andrie F.
Grimaud and Michael R. Marquardt.
______

Before Hohein, Walters and Grendel Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Andrie F. Grimaud and Michael R. Marquardt, hereinafter
collectively referred to in the singular as "applicant," have
filed an application to register the mark "STORE MORE! SELF
STORAGE" and design, as shown below,

for "providing self storage or mini storage services."1

1 Ser. No. 78180707, filed on October 31, 2002, which alleges a date of
first use anywhere of September 1, 2002 and a date of first use in
commerce of September 2, 2002. The terms "STORE" and "SELF STORAGE"
are disclaimed.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91162276
2
Meritage Real Estate Development Group, Inc.,
hereinafter referred to as "opposer," has opposed registration on
the ground that prior to both the filing date of applicant's
application and "[a]pplicant's alleged [first] use date of
September 1, 2002, Opposer has been, and is now, using the
trademark 'STORE MORE AMERICA' ... since at least February 1,
2002, in connection with storage services and facilities"; that
such use "has been valid and continuous since February 1, 2002,
and has not been abandoned"; that opposer has "filed an
application in the USPTO to register Opposer's mark 'STORE MORE
AMERICA' on November 21, 2003, for the services of 'storage
services, namely, refrigerator storage, wine storage, wine barrel
storage, cigar storage, vehicle storage, warehouse storage, and
providing storage space," which was "assigned Serial No.
76561594"; that in an "Office Action dated April 6, 2004, the
USPTO has refused registration of Opposer's mark, in part, based
on a likelihood of confusion with Applicant's mark"; and that
"[i]n view of the similarity of Opposer's mark and Applicant's
mark, the identical or closely-related nature of the services ,
and the similar channels of trade, ... Applicant's mark so
resembles Opposer's mark [as] previously used in the United
States, and not abandoned, that Applicant's mark is likely to
cause confusion, or to cause mistake, or deception with Opposer's
mark."
Applicant, in its answer, has admitted the allegations
that opposer has filed application Ser. No. 76561594 in the USPTO

Opposition No. 91162276
3
on November 21, 2003 to register the mark "STORE MORE AMERICA"
for the various storage services identified in connection
therewith and that the USPTO has refused registration of such
mark in an Office Action dated April 6, 2004 based, in part, on a
likelihood of confusion with Applicant's mark, but has otherwise
denied the salient allegations of the notice of opposition,
including the allegations opposer has had prior use of its mark
since at least February 1, 2002 in connection with storage
services and facilities, that such use has been valid and
continuous, and that opposer's mark has not been abandoned.
The record consists of the pleadings; the file of
applicant's involved application; and, as opposer's case-in-
chief, a notice of reliance on, among other things, "[e]xcerpts
from the April 2002 Issue of SBC Pacific Bell Smart Yellow Pages
published for Santa Cruz County, California," which opposer
asserts are "relevant to show that Opposer's first use [anywhere]
and first use in commerce of Opposer's STORE MORE AMERICA mark
occurred prior in time to Applicant's alleged first use of
Applicant's Mark," and certain official USPTO records pertaining
to application Ser. No. 76561594, which opposer maintains are
"relevant to show that Applicant's Mark has been cited by the
USPTO as grounds for the potential refusal to register Opposer's
Mark" and that "[o]pposer's application has been suspended
pending the disposition of Applicant's application." Applicant
did not submit any evidence. Only opposer filed a brief and
neither party requested an oral hearing.
Opposition No. 91162276
4
The issues to be determined on this record are whether
the evidence of record establishes that opposer has priority of
use and is the owner of the "STORE MORE AMERICA" mark and, if so,
whether applicant's "STORE MORE! SELF STORAGE" and design mark
for it services of "providing self storage or mini storage
services" so resembles opposer's "STORE MORE AMERICA" mark for
opposer's various storage services as to be likely to cause
confusion as to the source or sponsorship of the parties'
respective services.2
Turning first to whether the record establishes that
opposer has priority of use and is the owner of its pleaded
"STORE MORE AMERICA" mark for the various storage services which
it has alleged, we note that the official records of the USPTO
which opposer made of record by its notice of reliance, and upon
which it solely relies in its brief, show on their face that with
respect to an Office Action issued on April 6, 2004 in connection
with application Ser. No. 76561594, such application is for
registration of the mark "STORE MORE AMERICA" for "storage
services" and identifies the applicant therein as "Meritage Real
Estate Development Group, ETC."3 Further, such action, in part,
indicates that "[t]here may be a likelihood of confusion between

2 It is noted that opposer, in its statement of the issues in its
brief, frames the issues herein as follows: "Whether Opposer's Mark
had a date of 'first use' and a date of 'first use in commerce' that
preceded the dates of Applicant's Mark"; and "[w]hether there is a
likelihood of confusion between Opposer's Mark and Applicant's Mark."
3 Such name is clearly that of opposer, Meritage Real Estate
Development Group, Inc., inasmuch as it is obvious that because of the
length of opposer's name, the USPTO has simply truncated the name due
to space limitations in the standardized format of Office Action
captions.

Opposition No. 91162276
5
the applicant's mark" and, inter alia, the mark which is the
subject matter of application Ser. No. "78180707," which is
indeed the application which opposer has opposed in this
proceeding. Such action, citing Trademark Rule 2.83, also
indicates that because "[t]he filing dates of the [several]
referenced applications," including application Ser. No.
78180707, "precede the applicant's filing date," "the examining
attorney may refuse registration in this case under Section 2(d)
[of the Trademark Act]," on the basis of likelihood of confusion,
"[i]f one or more of the referenced applications matures into a
registration." In addition, a "NOTICE OF SUSPENSION," issued on
June 22, 2005 in connection with application Ser. No. 76561594,
filed by "Meritage Real Estate Development Group, ETC.," states
on its face that "[a]ction on this application is suspended
pending the disposition of, inter alia, "Application Serial
No(s). 78180701," which opposer insists in its notice of reliance
is a typographical error which is meant instead to refer to
application Ser. No. 78180707,4 and that because opposer's
"effective filing date is subsequent to the effective filing date
of the above-identified application(s), the latter, if and when
it registers, may be cited against this application."
Moreover, although not relied upon or otherwise even
mentioned by opposer in its brief, the record in any event
contains the previously noted admissions by applicant in its

4 Specifically, opposer contends therein that "the Notice of Suspension
incorrectly identifies Applicant's application as Application Serial
No. 78/180701, even though the correct number is Application Serial
No. 78/180707."
Opposition No. 91162276
6
answer that opposer has filed application Ser. No. 76561594 in
the USPTO on November 21, 2003 to register the mark "STORE MORE
AMERICA" for the various storage services, including "providing
storage space," alleged by opposer with respect thereto in the
notice of opposition and that the USPTO has refused registration
of such mark in an Office Action dated April 6, 2004 based, in
part, on a likelihood of confusion with Applicant's mark. These
admissions, irrespective of the evidence discussed above from
opposer's notice of reliance, are sufficient to establish that
opposer not only has a proprietary interest in the mark "STORE
MORE AMERICA" for the services of "providing storage space", but
it has standing to bring this proceeding because its application
to register such mark has been refused in light of applicant's
prior-filed involved application for the mark "STORE MORE! SELF
STORAGE" and design for legally identical services of "providing
self storage or mini storage services." See, e.g., Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185, 189 (CCPA 1982) [to have standing, "it would be sufficient
that appellee prove that it filed an application and that a
rejection was made because of appellant's registration"].
However, neither applicant's admissions in its answer nor the
above discussed evidence provided by opposer with its notice of
reliance constitutes proof that opposer has priority with respect
to its mark, that is, it possesses an equal or superior right to
the use thereof vis-à-vis applicant.

Opposition No. 91162276
7
Rather, as to opposer's alleged prior use of its
pleaded "STORE MORE AMERICA" mark, opposer asserts in its brief
that its "first use of Opposer's Mark occurred six months before
Applicant's first use date." Opposer, in particular, claims that
(italics in original):
In its application and subsequent amendment,
Opposer alleged that its "first use" date and
date of "first use in commerce" was February
1, 2002, which was six months before
Applicant's first use date in September 2002.
(See Opposer's trademark application file.)

Opposer's dates of first use are
confirmed in evidence submitted by Opposer in
this proceeding, namely excerpts from the SBC
Pacific Bell Smart Yellow Pages showing that
Opposer performed advertising of Opposer's
STORE MORE AMERICA mark in connection with
Opposer's storage services, which advertising
occurred approximately six months before
Applicant's own self-admitted first use date
in September 2002. (See Exhibit A to
Opposer's Notice of Reliance.) Applicant has
not submitted any evidence whatsoever to
contradict that Opposer's first use date
preceded Applicant's first use date.

....

Applicant's failure to provide any
evidence whatsoever of the actual use of
Applicant's Mark carries further evidentiary
penalties. With respect to the matter of
prior use and the obligation of parties in
opposition proceedings to provide evidence,
35 CFR §2.122(b)(2), provides:

The allegation in an application for
registration ... of a date of use is not
evidence on behalf of the applicant ...;
a date of use of a mark must be
established by competent evidence.
Specimens in the file of an application
for registration ... are not evidence on
behalf of the applicant ... unless
identified and introduced in evidence as
exhibits during the period for taking of
testimony.
Opposition No. 91162276
8

With respect to submission of evidence of use
in opposition proceedings, McCarthy states
that, "if the applicant in an opposition
proceeding introduces no evidence of prior
use, then the earliest date of first use to
which it is entitled is the filing date of
its use-based application." McCarthy [on
Trademarks & Unfair Competition], 3rd ed.,
§20.09[1] ....

During the testimony period herein,
Applicant did not submit any evidence or
testimony to substantiate or corroborate any
use date of Applicant's Mark. As a result,
Applicant may only rely on its application
filing date of October 31, 2002, as it
priority date, and cannot rely on its alleged
first use dates in September 2002 mentioned
in Applicant's application.

Regardless of what date one assumes
Applicant had first use--either the September
2002 allegation in Applicant's application,
or the October 31, 2002 filing date of
Applicant's application--the evidence ... has
established that Opposer's first use occurred
in early-2002, which was approximately six
months before Applicant's alleged first use.
Because Opposer's use of Opposer's Mark
occurred prior to any use of Applicant's
Mark, this case should be resolved against
the newcomer (Applicant) and in favor of the
prior user (Opposer).

Opposer is correct that because applicant has neither
taken testimony nor otherwise submitted any proof of its alleged
dates of first use anywhere and in commerce of, respectively,
September 1, 2002 and September 2, 2002, the earliest date upon
which applicant is entitled to rely in this proceeding, for
purposes of priority, is the October 31, 2002 filing date of its
involved application. See, e.g., Lone Star Mfg. Co., Inc. v.
Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368, 369 (CCPA 1974);
Columbia Steel Tank Co. v. Union Tank & Supply Co., 277 F.2d 192,
Opposition No. 91162276
9
125 USPQ 406, 407 (CCPA 1960); and Miss Universe, Inc. v. Drost,
189 USPQ 212, 213 (TTAB 1975). Contrary to opposer's arguments,
however, it has failed to prove a date of first use of its "STORE
MORE AMERICA" mark for providing storage services which is as
early as, or earlier than, applicant's priority date of October
31, 2002 and therefore cannot prevail in this proceeding.
Specifically, opposer is incorrect in its assertion in
its brief that its "trademark application file," namely, Ser. No.
76561594, is of record in this proceeding; instead, only certain
excerpts from such file--a copy of an Office Action issued on
April 6, 2004 and a copy of a notice of suspension issued on June
22, 2005--are of record by virtue of opposer's notice of reliance
thereon as official records of the USPTO.5 Neither of those
papers sets forth any date of first use of opposer's pleaded
"STORE MORE AMERICA" mark and, even if such were the case,
Trademark Rule 2.122(b)(2) provides, as correctly noted by
opposer in the case of applicant's involved application, that any
date of first use alleged in an application "is not evidence on
behalf of the applicant" but instead "must be established by
competent evidence." Neither of such papers, moreover, indicates
a specific filing date for opposer's application; instead (and
aside from the hearsay nature of such documents when considered
for the truth of the statements appearing therein), each paper

5 While applicant's involved application is automatically of record
pursuant to Trademark Rule 2.122(b)(1), it is pointed out that such
rule does not operate to make opposer's application of record herein
inasmuch as the language thereof pertains in relevant part solely to
the file "of the application against which a notice of opposition is
filed."

Opposition No. 91162276
10
refers only to the generalized fact that the filing date of
opposer's application is subsequent to, inter alia, the filing
date of what is presently the application involved in this
proceeding.
Although, for the purpose of establishing priority of
use, opposer principally relies upon copies of three pages from
the SBC Pacific Bell Smart Yellow Pages as serving to confirm its
alleged February 1, 2002 date of first use of its "STORE MORE
AMERICA" mark anywhere and in commerce for providing storage
services or, at a minimum, demonstrating its use thereof at least
six months before the October 31, 2002 filing date of applicant's
involved application, such evidence fails to support opposer's
position. The yellow pages excerpts consist of the front cover
of an "April 2002 Issue" of a telephone directory for "Santa Cruz
County; a full page display ad on page 688 thereof under the
heading "Storage" which touts "STOREMORE America" as "YOUR
SECURE STORAGE SOLUTION" with, among other things, "STATE OF THE
ART FACILITIES"; and a separate listing on page 697 under the
heading "Storage - Self Service" of "STOREMORE AMERICA" which
includes the reference to "See Display Ad Page 688." However,
aside from the fact that the service mark illustrated is
"STOREMORE AMERICA" rather than "STORE MORE AMERICA" as alleged
by opposer in the notice of opposition (as well as the hearsay
nature of such excerpts when considered for the truth of the
statements appearing therein), there is nothing in the excerpts
which demonstrates that the advertisement and listing were placed
by opposer and that the services being promoted are indeed being
Opposition No. 91162276
11
offered or rendered by opposer. Nothing in such excerpts proves
the following statements in opposer's notice of reliance, which
in essence are unsworn testimony by which opposer claims that the
excerpts establish prior use by opposer (emphasis added):
.... Excerpts from the April 2002 issue
of SBC Pacific Bell Smart Yellow Pages
published for Santa Cruz County, California,
showing publication of Opposer's STORE MORE
AMERICA mark .... Page 697 shows Opposer's
STORE MORE AMERICA mark under the Yellow
Pages category entitled "Storage-Self
Service"; after Opposer's listing on page 697
are the words: See Display Ad Page 688";
Page 688 shows the mark in a full page
advertisement that publicizes Opposer's
services and other relevant information.
Among other things, this printed publication
is relevant to show that Opposer's first use
and first use in commerce of Opposer's STORE
MORE AMERICA mark occurred prior in time to
Applicant's Mark. ....

Given such failure of proof of priority of use by
opposer, as the party bearing the burden of proof in this
proceeding,6 it cannot prevail herein on its claim of priority of
use and likelihood of confusion even assuming that the record
otherwise is sufficient to establish that there is a likelihood
of confusion from contemporaneous use by opposer of the mark
"STORE MORE AMERICA" for providing storage services and by
applicant of the mark "STORE MORE! SELF STORAGE" and design for
providing self storage or mini storage services.
Decision: The opposition is dismissed.

6 See, e.g., Champagne Louis Roederer S.A. v. Delicato Vineyards, 143
F.3d 1373, 47 USPQ2d 1459, 1464 (Fed. Cir. 1998) (Michel, J.
concurring); Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1007 (Fed. Cir. 1988); Sanyo Watch Co., Inc. v.
Sanyo Elec. Co., Ltd., 691 F.2d 1019, 215 USPQ 833, 834 (Fed. Cir.
1982); and Clinton Detergent Co. v. Proctor & Gamble Co., 302 F.2d
745, 133 USPQ 520, 522 (CCPA 1962).