Sharp Kabushiki Kaishav.Micro Sharp, Inc.

Trademark Trial and Appeal Board

Mar 30, 2004

No. 91125257 (T.T.A.B. Mar. 30, 2004)

Mailed:
March 30, 2004
Paper No. 12
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Sharp Kabushiki Kaisha a/t/a Sharp Corporation
v.
Micro Sharp, Inc.
_____
Opposition No. 91125257
to application Serial No. 76010222
filed on March 27, 2000
_____
Robert W. Adams of Nixon & Vanderhye, P.C. for Sharp
Kabushiki Kaisha a/t/a Sharp Corporation.
Kevin S. Costanza of Seed Intellectual Property Law Group
PLLC for Micro Sharp, Inc.
______
Before Quinn, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
This opposition proceeding involves applicant’s
application to register the mark depicted below
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91125257
2
on the Principal Register for services recited in the
application (as amended) as “distributorship, retail store,
and online retail services for computer hardware and
software products, computer systems, and audio-video
equipment” in Class 35.1 The application is based on
applicant’s asserted bona fide intent to use the mark in
commerce. Trademark Act Section 1(b), 15 U.S.C. §1051(b).
Opposer has opposed registration on the ground that
applicant’s mark, as used in connection with the recited
services, so resembles opposer’s previously-used and
registered mark SHARP as to be likely to cause confusion, to
cause mistake, or to deceive. Trademark Act Section 2(d),
15 U.S.C. §1052(d).2
Applicant filed an answer in which it denied the
salient allegations of the notice of opposition. At trial,
1 The application includes the following lining statement: “The
drawing is lined for shading only. Color is not claimed as part
of the mark.”
2 Opposer also mentions “dilution” in its notice of opposition,
but we find that opposer has not sufficiently pleaded dilution as
a separate ground of opposition. Although opposer has alleged
that its mark is famous, opposer has failed to allege
specifically that its mark became famous prior to the filing date
of applicant’s application, which is applicant’s constructive
first use date. Absent such an allegation, the pleading fails to
state a claim for dilution. See Enterprise Rent-A-Car Company v.
Advantage Rent-A-Car, Inc., 330 F.3d 1333, 66 USPQ2d 1811 (Fed.
Cir. 2003); NASDAQ Stock Market Inc. v. Antartica S.r.l., 69
USPQ2d 1718 (TTAB 2003); Toro Co. v. ToroHead Inc., 61 USPQ2d
1164 (TTAB 2001). Accordingly, we have given no consideration to
the references to “dilution” in opposer’s notice of opposition.
Opposition No. 91125257
3
opposer submitted evidence,3 but applicant did not. Opposer
and applicant filed trial briefs, and opposer filed a reply
brief. No oral hearing was requested.
3 We note, however, that opposer has failed to make its pleaded
registrations of record. On the last day of opposer’s testimony
period (February 24, 2003), opposer filed a notice of reliance in
which it identified seventeen registrations (including three
registrations which had not been pleaded in the notice of
opposition), and asserted that “[a]n order for certified copies
of the above-identified registrations identified in items 1
through 17 was placed with the United States Patent and Trademark
Office on February 24, 2003. The certified copes [sic] will be
submitted as soon as they are received.” On March 4, 2003, after
the close of opposer’s testimony period, opposer filed a
“supplemental notice of reliance” to which status and title
copies of the registrations were attached. These status and
title copies are untimely, because they were submitted after the
close of opposer’s testimony period. “A party’s submission, with
a notice of reliance on its registration, of an order for status
and title copies of the registration is not sufficient to make
the registration of record. Although that procedure was once
permitted, it is no longer allowed. The status and title copies
themselves must accompany the notice of reliance.” TBMP
§704.03(b)(1)(A)(2d ed. June 2003). See Trademark Rule
2.122(d)(2), 37 C.F.R. §2.122(d)(2); Jean Patou Inc. v. Theon
Inc., 18 USPQ2d 1072, 1075 (TTAB 1990); Edison Brothers Stores,
Inc. v. Brutting E.B. Sport-International GmbH, 230 USPQ 530, 531
n.3 (TTAB 1986). Indeed, the rule which allowed registrations to
be made of record by timely submission of an order for status and
title copies has not been in effect for over twenty years. See
Trademark Rule 2.122(d), 37 C.F.R. §2.122(d); Notice of Final
Rulemaking published in the Federal Register on May 23, 1983 at
48 FR 23122, and in the Patent and Trademark Office Official
Gazette of June 21, 1983 at 1031 TMOG 13; and In re Inter-State
Oil Co., 219 USPQ 1229, 1230 n.1 (TTAB 1983).
Thus, the only evidence properly of record in this case is
opposer’s first set of Requests for Admissions, which were
submitted with the timely-filed first notice of reliance. (The
remainder of the items submitted with the notice of reliance,
i.e., copies of the notice of opposition, the Board’s institution
order, opposer’s interrogatories and document production requests
(to which applicant did not respond), and a Board decision in
another case to which applicant was not a party, have no
evidentiary value in this case.) Because applicant failed to
answer or object to the Requests for Admissions, the requested
admissions are deemed admitted (see Fed. R. Civ. P. 36(a)), and
are conclusively established for purposes of this proceeding only
(see Fed. R. Civ. P. 36(b)). See also Trademark Rule 2.116(a),
37 C.F.R. §2.116(a). Applicant’s argument to the contrary is
Opposition No. 91125257
4
Trademark Rule 2.135, 37 C.F.R. §2.135, provides as
follows:
§2.135 Abandonment of application or mark.
After the commencement of an opposition,
concurrent use, or interference proceeding, if the
applicant files a written abandonment of the
application or of the mark without the written
consent of every adverse party to the proceeding,
judgment shall be entered against the applicant.
The written consent of an adverse party may be
signed by the adverse party or by the adverse
party’s attorney or other authorized
representative.
[48 FR 23141, May 23, 1983, as amended at 54 FR
34900, Aug. 22, 1989]
In applicant’s trial brief and in the accompanying
declaration of its counsel, applicant expressly states that
it has abandoned the mark it seeks to register.
Specifically, applicant asserts as follows:
On September 12, 2002, Applicant offered to drop
the present application and not to seek
registration because Applicant was no longer
without merit. We note, however, that opposer’s Requests for
Admissions (from the second page on) appear to pertain not to
this opposition proceeding but to Opposition No. 113,274, an
unrelated case involving opposer and a third party and involving
goods that appear to be different than those pleaded in the
notice of opposition in this case. Moreover, these admissions
establish status, but not title, of opposer’s pleaded
registrations, and the registrations therefore are not of record
by virtue of the admissions.
Opposer’s counsel would be well-advised to take more care in
the submission of evidence in proceedings before the Board. It
is only because of the special circumstances of this case (i.e.,
applicant’s abandonment of its mark; see discussion infra) that
opposer’s counsel fortuitously is able to escape the consequences
of his sloppy and deficient practice. A different result is
likely to obtain in a case in which these special circumstances
are not present.
Opposition No. 91125257
5
using and was not interested in using or
registering the mark MICROSHARP & PENGUIN
DESIGN. (Costanza Declaration, ¶2.)
On May 21, 2003, as part of a pleading in that
related case, Applicant advised the Board that
it was not using and no longer claimed any
rights in the MICROSHARP & PENGUIN DESIGN mark.
(Costanza Declaration, ¶6.)
Opposer failed to advise the Board in its trial
brief that Applicant had affirmatively abandoned
its rights in the MICROSHARP & PENGUIN DESIGN
mark. Opposer does not even argue abandonment,
an undisputed issue of fact that resolves the
entire controversy between the parties. (Brief,
at 2.)
Accordingly, applicant has no objection to the
Board sustaining Opposer’s opposition solely on
the basis of abandonment. Applicant, however,
submits that the Board should not reach the
merits of issues that are rendered moot by
Applicant’s abandonment. (Id.)
Here, Micro Sharp no longer has a personal
interest or stake in the outcome [of this
proceeding], as Micro Sharp has affirmatively
abandoned any rights in the MICROSHARP & PENGUIN
DESIGN mark. (Id.)
Applicant previously requested that the Board
consolidate the related cases, but did not
request consolidation of the present case
because Applicant had abandoned its interest in
the MICROSHARP & PENGUIN DESIGN mark. (Brief,
at 3.)
These written statements in applicant’s brief and in
counsel’s accompanying declaration, by which applicant
expressly asserts and admits that it has abandoned the mark
depicted in its application, constitute “a written
abandonment of the application or of the mark,” for purposes
Opposition No. 91125257
6
of Trademark Rule 2.135.4 Applicant’s abandonment occurred
after commencement of this opposition proceeding.5
Opposer’s written consent to such abandonment is not of
record, and it is apparent from opposer’s reply brief that
opposer does not consent to such abandonment.
In view thereof, and in accordance with Trademark Rule
2.135, we enter judgment against applicant on opposer’s
pleaded Section 2(d) ground of opposition.6
Decision: The opposition is sustained.
4 Usually, Trademark Rule 2.135 is triggered by the applicant’s
filing of an express abandonment of the application without the
opposer’s written consent. See Trademark Rule 2.68, 37 C.F.R.
§2.68. Applicant has not filed an express abandonment of the
application in this case. However, the wording of Trademark Rule
2.135 is disjunctive – it clearly provides that a written
abandonment “of the application or of the mark” without opposer’s
written consent is sufficient to trigger application of the rule.
5 The opposition proceeding commenced on August 7, 2001 with the
filing of the notice of opposition. See Trademark Rule 2.101(a).
6 Applicant’s argument that its abandonment of the mark renders
opposer’s Section 2(d) likelihood of confusion ground of
opposition moot is not well-taken. Indeed, the purpose of
Trademark Rule 2.135 is to preclude an applicant from attempting
to moot the opposer’s pleaded claim (and thereby avoid entry of
judgment thereon) by unilaterally abandoning the application
after commencement of the opposition proceeding. Opposer is
entitled to a decision on the merits of its pleaded claim. See
generally TBMP §602.01 (2d ed. June 2003). Likewise without
merit is applicant’s argument that its abandonment of its mark
eliminates any “case or controversy” between the parties and thus
deprives the Board of subject matter jurisdiction. The Board has
subject matter jurisdiction in this opposition proceeding by
virtue of Trademark Act Section 13, 15 U.S.C. §1063.