RWI Resources, LLCv.Matt Erlich and Shlomo Fried

Trademark Trial and Appeal Board

May 30, 2008

No. 91173658 (T.T.A.B. May. 30, 2008)

Mailed: May 30, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

RWI Resources, LLC
v.
Matt Erlich and Shlomo Fried
_____

Opposition No. 91173658
to application Serial No. 78784098
filed on January 3, 2006
_____

Molly B. Markley of Young Basile Hanlon MacFarlane &
Helmholdt, P.C. for RWI Resources LLC.

Matt Erlich and Shlomo Fried, pro se.
______

Before Taylor, Mermelstein and Bergsman, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Matt Erlich and Shlomo Fried, a partnership organized
under the laws of the state of New York, have filed an
application to register on the Principal Register the mark
ZIPCAL (in standard character form) for “drinking water,
flavored water, carbonated and non-carbonated,” in Class 32.1

1 Serial No. 78784098, filed on January 3, 2006, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Opposition No. 91173658
2
Registration has been opposed by RWI Resources LLC on
the ground of a likelihood of confusion with its mark
ZIPTIDE. Opposer specifically alleges, in pertinent part,
that since at least as early as August 24, 2006, it has used
the mark ZIPTIDE in connection with the sale of beverages;
that it is the owner of pending Application Serial No.
78453223 for the mark ZIPTIDE, filed on July 20, 2004, for
“beverages, namely, flavored and non-flavored sparkling
water, spring water, caffeinated and non-caffeinated drinks
with or without fruit flavoring, smoothies and caffeinated
and non-caffeinated tea”; and that applicant has not used
the ZIPCAL mark on its goods prior to opposer’s filing date
of July 20, 2004, which is well before the January 3, 2006
filing date of applicant’s involved application. Opposer
further alleges that “[i]f applicant is permitted to use and
register the ZIPCAL mark for its goods as specified in the
opposed application, confusion in trade resulting in damage
and injury to Opposer would be caused and would result by
reason of the fact that Applicant’s mark is confusingly
similar to Opposer’s mark.” (Notice of Opposition, ¶ 11).2

2 Opposer also pleaded ownership of Application Serial No.
77000651 for the mark ZIPTEA for use in connection with
beverages. (Notice of opposition, ¶ 7). However, we note that
opposer did not plead a likelihood of confusion with respect to
the mark in that application and only referenced this application
in its brief when describing the record, as explained infra.

Opposition No. 91173658
3
Applicant’s answer is in the nature of a general denial
of the essential allegations of the notice of opposition.
Neither opposer nor applicant took testimony. Rather,
during the testimony period, opposer sought to make of
record, by notice of reliance, four exhibits labeled
Appendixes A through D. Specifically, opposer seeks to rely
on: (A) a “soft” copy and a TESS copy of Registration No.
3177913 which issued from opposer’s pleaded Application
Serial No. 78453223; (B) a Notice of Allowance for
application Serial Number 77000651; (C) a “label of use of
Opposer’s mark on water as listed in ingredients shown on
the label” (Notice of reliance, p. 2); and (D) a copy of
opposer’s first set of requests for admissions which opposer
maintains applicant failed to respond to.3 However, the
exhibits referenced as Appendix A and Appendix C are not
appropriate for introduction under a notice of reliance.
Trademark Rule 2.122(d) provides the manner in which an
opposer may properly make its registration of record. While
subsection (d)(1) of the rule was amended to permit
submission of information from databases of the United
States Patent and Trademark Office (USPTO) pertaining to
current status and title of a pleaded registration as an
alternative to the submission of a formal status and title

3 The two admission requests pertain to applicant’s intention to
use the mark ZIPCAL on water and that such mark had not been used
prior to July 20, 2004.
Opposition No. 91173658
4
copy of such registration, that amendment is applicable only
to proceedings commenced on or after August 31, 2007. See
Trademark Rule 2.122(d)(1) as amended, effective August 31,
2007, Miscellaneous Changes to Trademark Trial and Appeal
Board Rules, 72 Fed. Reg. 42,242 (Aug. 1, 2007).
Accordingly, the text of Trademark Rule 2.122(d) as quoted
below is applicable to this case:
(1) A registration of the opposer or
petitioner pleaded in an opposition
or petition to cancel will be
received in evidence and made part
of the record if the opposition or
petition is accompanied by two
copies (originals or photocopies)
of the registration prepared and
issued by the Patent and Trademark
Office showing both the current
status of and current title to the
registration. For the cost of a
copy of a registration showing
status and title, see §2.6(b)(4).

(2) A registration owned by any party
to a proceeding may be made of
record in the proceeding by that
party by appropriate identification
during the taking of testimony or
by filing a notice of reliance,
which shall be accompanied by a
copy (original or photocopy) of the
registration prepared and issued by
the Patent and Trademark Office
showing both the current status of
and current title to the
registration. The notice of
reliance shall be filed during the
testimony period of the party that
files the notice.

With regard to the soft copy of Registration No. 3177913, it
is not a copy prepared by the Office showing current status
Opposition No. 91173658
5
of and current title to the registrations. With regard to
the TESS copy of that registration, it may not be submitted
as an alternative to a formal status and title copy of such
registration. Accordingly, opposer’s registration is not
properly of record.
As regards opposer’s product label, inasmuch as it is
neither a printed publication available to the general
public nor an official record, it may not be made of record
by notice of reliance. See Trademark Rule 2.122(e); 37
C.F.R. § 2.122(e). See also, TBMP sections 704.02 and
704.07 (2d ed. rev. 2004).
Thus, Appendix A and C have not been considered in this
decision.
In addition to Appendixes B and D of opposer’s Notice
of Reliance, the record includes the pleadings4 and the file
of opposed Application Serial No. 78784098. Only opposer
filed a brief on the case.
Section 13 of the Trademark Act, 15 U.S.C. Section
1063, provides that an opposition may be brought by “[a]ny

4 While opposer attached to its notice of opposition printouts
from the TESS data base concerning its pleaded Application Serial
Nos. 78453223 (ZIPTIDE) and 77000651 (ZIPTEA), under Trademark
Rule 2.122(c), exhibits attached to pleadings generally are not
evidence on behalf of the party to whose pleading such are
attached unless they are identified and introduced in evidence
during the period for taking testimony. The sole exception, not
applicable in this case, is a current status and title copy,
prepared by the USPTO, of a plaintiff’s pleaded registration.
See Trademark Rule 2.122(d)(1); and TBMP §§ 317, 704.03(b)(1)(A)
and 704.05(a)(2d ed. rev. 2004). Accordingly, the exhibits have
not been considered in this decision.
Opposition No. 91173658
6
person who believes that he would be damaged by the
registration of a mark….” The party opposing 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., 153 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir. 1998).
The standing question is a threshold inquiry made by
the Board in every inter partes case. That is, standing is
an essential element of an opposer’s case which, if not
proved at trial, will defeat 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 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 this case, the notice of opposition includes a
proper allegation of opposer’s standing. More specifically,
as noted previously, opposer has alleged that since at least
as early as August 24, 2006, it has used the mark ZIPTIDE in
connection with the sale of beverages, including water.
Allegations alone, however, do not establish standing. See
Richie v. Simpson, supra at 1029. First, applicant did not
make any admissions in its answer that would excuse opposer
from having to prove, as part of its case in chief, its
Opposition No. 91173658
7
standing in this proceeding. Indeed, opposer, in describing
the record, acknowledged that “the response [to the notice
of opposition] does not clearly admit or deny any of
Opposer’s allegations.” (Brief, p. 2). Second, opposer
failed, at trial, to take any testimony or properly
introduce any other evidence to prove its standing to bring
this opposition (e.g., a copy of its registration prepared
by the Office showing current status and current title to
the registration, or testimony that opposer has used the
mark ZIPTIDE for beverages). As noted earlier, opposer did
not plead likelihood of confusion with respect to the mark
in application Serial No. 77000651. Even if it did so, the
notice of allowance issued in connection therewith would not
give opposer standing. In addition, opposer’s request for
admissions does not relate to opposer’s standing. Under the
circumstances, we find that opposer has failed to prove its
standing.
Since opposer has not established its standing to
maintain this proceeding, opposer has shown no right to
relief on its claim of likelihood of confusion.

Decision: The opposition is dismissed with prejudice
for opposer’s failure to prove its standing.