Reece R. Halpernv.Grand Media, LLC

Trademark Trial and Appeal Board

Sep 4, 2008

No. 91165362 (T.T.A.B. Sep. 4, 2008)

Mailed: September 4, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Reece R Halpern
v.
Grand Media, LLC1
_______

Opposition No. 91165362
to Application No. 78389660
filed on March 24, 2004
_______

Reece R. Halpern, Esq., Pro Se, with Harvey I. Wittenberg,
Esq. as co-counsel for Reece R. Halpern.

David L. Sigalow of Allen, Syer, Doppelt, Milbrath &
Gilchrist for Grand Media, LLC.

_______

Before Quinn, Walters and Kuhlke, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Reece R Halpern filed his opposition to the application
of Grand Media, LLC to register the standard character mark

1 By change of name from Currier Palmer Publishing.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91165362
2
GRAND for a “magazine of interest to grandparents raising
their grandchildren,” in International Class 16.2
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s previously used mark GRAND TIMES for a
magazine for older adults as to be likely to cause
confusion, under Section 2(d) of the Trademark Act.
Applicant, in its answer, denied the salient
allegations of the claim and asserted, affirmatively, that
opposer’s mark is abandoned.
We note that there are several motions outstanding in
this case and we begin by considering these motions. First,
applicant has strongly objected to the evidence submitted by
opposer during his testimony period, contending that this
evidence is inadmissible and moving to strike it from the
record. The only evidence submitted by opposer during his
testimony period was his affidavit, which was accompanied by
23 exhibits. Opposer argues, essentially, that he misread
the requirements for submitting evidence and that not
accepting his affidavit and exhibits exalts form over
substance. We disagree. The procedures for the
introduction of evidence in inter partes proceedings before
the Board are clearly spelled out in the Trademark Rules of

2 Application Serial No. 78389660, filed March 24, 2004, based upon an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods.
Opposition No. 91165362
3
Practice. Trademark Rule 2.123(a)(1), 37 CFR §2.123(a)(1),
states that witness testimony must be by deposition upon
oral examination; and Trademark Rule 2.123(b), 37 CFR
§2.123(b), states that witness testimony may be in the form
of an affidavit by written agreement of the parties. Oral
testimony by deposition allows for the foundation and
authentication of exhibits introduced in connection with the
testimony and it permits cross examination of the witness by
opposing counsel. These are important aspects of the trial
process that are not merely form over substance, and we
expect parties to familiarize themselves with these
procedures for practicing before the Board. We agree with
applicant that opposer’s affidavit and accompanying exhibits
are inadmissible. Applicant’s motion to strike is granted,
this evidence is not part of the record, and opposer’s
affidavit and accompanying exhibits have been given no
consideration.3
In its brief, applicant objected to, and moved to
strike, the exhibits attached to opposer’s brief. It is
well established that all evidence must be properly
introduced into evidence during the trial period. See
Trademark Rules 2.121(a) and 2.122(e), 37 CFR §§2.121(a) and
2.122(e). Therefore, applicant’s motion is granted, the

3 Applicant argues that this evidence should be excluded also because,
in his brief, opposer neither described the record nor referred to his
Opposition No. 91165362
4
exhibits attached to opposer’s brief are not part of the
record, and these exhibits have been given no consideration.
Applicant filed a motion to “strike” opposer’s co-
counsel as well as his cross examination of applicant’s
witnesses. Opposer represents that he is an attorney and he
has proceeded with this case pro se. He states that he
obtained the services of an attorney, Harvey I Wittenberg,
whom he characterized as “co-counsel,” to represent him at
the depositions of applicant’s two witnesses and he
introduced Mr. Wittenberg as his co-counsel at the
depositions. Mr. Wittenberg subsequently filed his notice
of appearance on behalf of opposer. The notice of
appearance is dated prior to the depositions and was
received by the USPTO eight days after the depositions. The
notice indicates that correspondence should continue to be
directed to opposer. Applicant argues that the notice of
appearance should have been filed with the Board before Mr.
Wittenberg could properly appear at the depositions on
opposer’s behalf. The relevant rule follows (emphasis
added):
§ 2.17 Recognition for representation.
(a) When an attorney as defined in § 10.1(c) of
this chapter acting in a representative capacity
appears in person or signs a document in practice
before the United States Patent and Trademark Office
in a trademark case, his or her personal appearance
or signature shall constitute a representation to

affidavit and exhibits. Applicant has provided no valid basis for this
argument and it is not persuasive.
Opposition No. 91165362
5
the United States Patent and Trademark Office that,
under the provisions of § 10.14 and the law, he or
she is authorized to represent the particular party
in whose behalf he or she acts. Further proof of
authority to act in a representative capacity may be
required.
. . .

(c) To be recognized as a representative, an
attorney as defined in § 10.1(c) of this chapter may
file a power of attorney, appear in person, or sign
a document on behalf of an applicant or registrant
that is filed with the Office in a trademark case.

Opposer’s co-counsel appeared in person at applicant’s
deposition with opposer, who, on the deposition record,
introduced Mr. Wittenberg and stated that he had retained
Mr. Wittenberg as his co-counsel. While it may be unusual
for a pro se applicant to retain “co-counsel,” it is not at
all unusual for counsel representing a party before the
Board to bring in co-counsel. Therefore, Mr. Wittenberg’s
appearance is proper and applicant’s motion to strike Mr.
Wittenberg’s appearance and his cross examination of the
witnesses is denied.
Opposer makes numerous references to the Board’s
decision denying applicant’s motion for summary judgment and
the evidence submitted in connection with that motion. To
be perfectly clear, the standard for deciding a motion for
summary judgment is quite different from the standard for a
final decision in an opposition proceeding after trial. In
this case, the burden is clearly upon opposer to establish
by a preponderance of the evidence his standing, his
Opposition No. 91165362
6
ownership of a valid (pleaded) mark in connection with the
pleaded goods, his priority, and that a likelihood of
confusion exists. Massey Junior College, Inc. v. Fashion
Institute of Technology, 492 F.2d 1399, 181 USPQ 272 (CCPA
1974). This burden is not met by mere allegations in the
pleading and brief.
The record in this case consists of the pleadings; the
file of the involved application; various documents made of
record by applicant’s notices of reliance; and the testimony
depositions by applicant of Christine Crosby and Jonathan
Micocci, principal’s of applicant, with accompanying
exhibits. Both parties filed briefs on the case.
Because opposer submitted no evidence during its trial
periods, we consider the evidence submitted by applicant to
determine if applicant has established or admitted the
elements of opposer’s case. In this regard, representations
made by opposer’s co-counsel during cross examination of
applicant’s witnesses do not establish facts upon which
opposer can rely; and exhibits shown by opposer’s co-counsel
to applicant’s witnesses are without proper foundation and
authentication for purposes of establishing any elements of
opposer’s case.
Having considered the evidence of record and the
parties’ briefs, we conclude that opposer has not met its
Opposition No. 91165362
7
burden of establishing any of the elements of its case and,
therefore, the opposition must fail.
Decision: The opposition is dismissed.