No. 91161150re (T.T.A.B. Feb. 25, 2009)

Monster Cable Products, Inc.v.Euroflex S.R.L.

Trademark Trial and Appeal BoardFeb 25, 2009

No. 91161150re (T.T.A.B. Feb. 25, 2009)

Mailed: 2/25/09 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Monster Cable Products, Inc. v. Euroflex S.R.L. _____ Opposition No. 91161150 to application Serial No. 78260191 filed on June 9, 2003 _____ Request for Reconsideration _____ Robert W. Payne and William R. Samuels of LaRiviere, Grubman & Payne for Monster Cable Products, Inc. John S. Egbert and L. Jeremy Craft of Egbert Law Offices for Euroflex S.R.L. ______ Before Quinn, Holtzman and Rogers, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: The Board, in a decision dated October 24, 2007, dismissed the opposition. In its opinion the Board indicated that opposer failed to follow the proper procedure for introducing copies of its registrations. Inasmuch as opposer was unable to rely on these registrations for purposes of priority, the Board reviewed the testimony and THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91161150 2 evidence to determine opposer’s prior common law rights in its pleaded marks, if any. The Board found “[t]here is no testimony or other evidence as to when the marks were first used, or whether the marks were used prior to the filing date of the involved application.” (slip opinion, p. 10). In view of opposer’s failure to prove its priority, the opposition was dismissed. Opposer has filed a request for reconsideration and a subsequent request to suspend further proceedings in this case pending the outcome of a civil action between the parties (filed July 10, 2008). Applicant, in each instance, has opposed the request. Opposer contends, in requesting reconsideration, that applicant, in its answer, admitted the existence of the pleaded registrations. In this connection, opposer points to the following allegation in the notice of opposition regarding one of its pleaded registrations, and applicant’s response thereto in its answer: Opposer owns Federal Trademark Registration No. 2,184,002, which was granted on August 25, 1998, for the trademark MONSTER for Class 9, namely electrical and musical signal transmitting cable and connectors. A true copy of said registration is attached hereto as Opposer’s Exhibit A. [The exhibit is a soft copy of the registration.] Applicant admits the existence of the cited registration, but as to the other allegations set forth therein, Applicant Opposition No. 91161150 3 does not have sufficient knowledge or information as to form a belief as to the truth or accuracy of the allegations contained therein and accordingly denies the allegations. Based on its allegations and applicant’s response thereto opposer contends that “applicant’s admission to the existence of Opposer’s registrations serves to make those registrations of record.” (Request for Reconsideration, p. 3). Thus, opposer argues, the Board erred in not considering the pleaded registrations to have been properly made of record as part of opposer’s proofs. It was reasonable, opposer states, for it to presume that its registrations were made of record based on the pleadings. Opposer further assets that the Board should use a flexible approach in this matter, and that any deficiencies were technical and de minimis. Opposer also points to the Board’s recent amendment to the rules of practice allowing proof of a pleaded registration to be made by filing printouts from the Office’s electronic database. For the reasons set forth by applicant, opposer’s request for reconsideration is not well taken. Simply put, applicant, in its answer, did not admit to the current status and title of any of the pleaded registrations. See Philip Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ 1487, 1488 n.3 (TTAB 1990). Opposition No. 91161150 4 Accordingly, the pleaded registrations were not properly made of record, either at the pleading stage or at trial. The Board stands by its finding that opposer failed to establish its priority and, therefore, the claim of likelihood of confusion must fail. The request for reconsideration is denied. The request to suspend is considered moot. The delay in taking action in this case is regretted.