The Starfield Group, Inc.v.Ergostar, Inc.

Trademark Trial and Appeal Board

Jun 5, 2009

No. 91174800 (T.T.A.B. Jun. 5, 2009)

Mailed: June 5, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

The Starfield Group, Inc.
v.
Ergostar, Inc.
_____

Opposition No. 91174800
to application Serial No. 78781372
_____

Keith Stubblefield of The Starfield Group. Inc., pro se.

Frederick Gotha of the Law Offices of Frederick Gotha for
Ergostar, Inc.
______

Before Zervas, Cataldo and Ritchie,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Ergostar, Inc. filed an application to register the
mark shown below for “office furniture; namely, chairs” in
International Class 20.1

1 Application Serial No. 78781372 was filed December 28, 2005,
alleging first use anywhere on April 17, 2005 and first use in
commerce on December 7, 2005. Applicant submitted the following
description of the mark: “The mark consists of the words ERGO
and STAR in block letters with a star centered between the
words.”
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91174800
2

The Starfield Group, Inc. opposed registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant’s mark, when used in connection
with applicant’s goods, so resembles opposer’s previously
used mark ERGOSTAR for “a computer work area ergonomic
adjustment kit”2 and other goods including ergonomic chairs
as to be likely to cause confusion.
Applicant, in its answer, denied the salient
allegations in the notice of opposition.3
THE RECORD
In its brief, opposer asserts that the record in this
case includes the file of the involved application; the
notice of opposition; the parties’ discovery requests and
responses thereto;4 opposer’s motion for summary judgment
and applicant’s response in opposition thereto; the parties’
other motion papers filed in this case; Board orders issued
in this case; and opposer’s testimony deposition of its Vice

2 Notice of opposition, paragraph a.
3 In addition, applicant asserted several affirmative defenses
but did not pursue them either by motion or at trial.
Accordingly, they will not be considered.
4 Opposer submitted these discovery materials to the Board during
the parties’ discovery period.
Opposition No. 91174800
3
President, Mr. Keith Stubblefield. These assertions are
addressed below.
By operation of rule, the file of opposed application
Serial No. 78781372 automatically forms part of the record
of this proceeding. See Trademark Rule 2.122(b)(1).
Similarly, the parties’ pleadings, namely, opposer’s notice
of opposition and applicant’s answer, automatically form
part of the record of this proceeding. However, the
exhibits attached to opposer’s notice of opposition are not
evidence on behalf of opposer, and do not form part of the
record in this proceeding except to the extent that they
were properly identified and introduced as exhibits during
opposer’s assigned testimony period. See Trademark Rule
2.122(c); see also TBMP §317 and the authorities cited
therein.5
With regard to the parties’ discovery requests and
responses, simply filing these materials with the Board
during the discovery period of this proceeding does not make
them of record. While the parties to Board inter partes
proceedings may stipulate to a wide variety of matters,
including a stipulation that materials filed outside the
parties’ testimony periods may be considered evidence
properly made of record, no such stipulations were filed in

5 The only exception to this rule is a current status and title
copy of a plaintiff’s pleaded registration. See Id. Opposer did
not submit any such registration with its notice of opposition.
Opposition No. 91174800
4
this case. See, for example, Trademark Rules 2.120(d)(2)
and 2.123(b). See also TBMP §501.01. As a result, the
parties’ discovery requests and responses, which were not
properly made of record during either party’s testimony
period, are not evidence in this case.
Further, it is well-settled that the evidence submitted
in connection with opposer’s motion for summary judgment and
applicant’s response is of record only for consideration of
that motion. Absent a stipulation by the parties, any such
evidence to be considered at final hearing must be properly
introduced in evidence during their appropriate trial
periods. See Levi Strauss & Co. v. R. Josephs Sportswear
Inc., 28 USPQ2d 1464 (TTAB 1993); and Pet Inc. v. Bassetti,
219 USPQ 911 (TTAB 1983). As noted above, no such
stipulations were filed in this case.6 In addition, neither
the remaining motion papers nor Board orders contain any
evidence or otherwise are probative of the issues under
consideration herein.

6 We further reject opposer’s assertion in its reply brief that
it may incorporate certain discovery responses and summary
judgment evidence into the record “by reference of Applicant”
(reply brief, p. 5) in applicant’s brief on the case and
opposer’s responses to such references in its reply brief. To
the extent opposer contends that applicant’s recital of
objections to testimony of Mr. Stubblefield and exhibits filed
therewith in its brief serves to make documents filed outside the
testimony period of record due to opposer’s reliance upon them in
its response to such objections, opposer’s contention is
unsupported by any authority.

Opposition No. 91174800
5
As noted above, opposer submitted the testimony
deposition, with accompanying exhibits, of its Vice
President, Mr. Keith Stubblefield. Mr. Stubblefield’s
deposition was noticed and taken during opposer’s assigned
testimony period. Applicant has filed numerous objections
against certain portions of Mr. Stubblefield’s testimony and
exhibits introduced therewith. Applicant’s objections
number thirty; opposer has responded to these objections.
We note, however, that none of the testimony and/or
exhibits sought to be excluded is outcome determinative.
Given this fact, coupled with the number of objections, we
see no compelling reason to discuss the objections in a
detailed fashion. Suffice it to say, we have considered all
of the testimony and exhibits submitted by opposer. In
doing so, we have kept in mind the various objections raised
by applicant, and we have accorded whatever probative value
the subject testimony and exhibits merit.
In view of the foregoing, the record in this case
consists of the pleading and the file of the involved
application, as well as the testimony deposition, and
accompanying exhibits, of Mr. Stubblefield. Applicant did
not submit any testimony or other evidence in this case.
Both parties submitted briefs on the matters under
consideration, and opposer submitted a reply brief.

Opposition No. 91174800
6
DISCUSSION
Section 13(a) of the Trademark Act, 15 U.S.C. §1063(a),
allows for opposition to the registration of a mark by
anyone “who believes that they would be damaged by the
registration of a mark...” The party seeking to oppose 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. See Young v.
AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir.
1998).
Opposer’s Standing
The Board must consider an opposer’s standing as a
threshold issue in every case. In Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999), the Federal
Circuit enunciated a liberal threshold for determining
standing, i.e., whether one’s belief that one will be
damaged by the registration is reasonable and reflects a
real interest in the case. See also Jewelers Vigilance
Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021, 2023 (Fed. Cir. 1987). In the notice of opposition
opposer adequately asserted its standing by claiming prior
common law rights in its ERGOSTAR mark. The only issue is
whether opposer has proven its standing. If opposer’s
pleaded Registration No. 2144286 for the mark ERGOSTAR was
still valid and subsisting, that would have been adequate to
Opposition No. 91174800
7
show standing. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982). However, opposer’s registration was cancelled
under Section 8 of the Trademark Act on March 17, 2004.7
In further support of its claims, opposer has
introduced evidence of one instance of use of ERGOSTAR as a
trademark in relation to, at least, a computer program used
to optimize a user’s comfort and efficiency in a computer
workspace.8 This evidence, consisting of a printout from
opposer’s Internet website dated July 4, 2007, is opposer’s
only evidence of trademark use of ERGOSTAR. However,
opposer has not introduced any additional evidence regarding
its asserted prior or current use of the ERGOSTAR mark. Nor
does the testimony of Mr. Stubblefield establish that
opposer is currently using ERGOSTAR as a mark. As such,
opposer has failed to introduce sufficient evidence of its
standing to bring this proceeding.
In the alternative, we may look to the admissions in
applicant’s answer for this purpose. However, and as noted
above, in its answer applicant denied all of the salient
allegations of the notice of opposition. Thus, even under

7 Stubblefield Testimony, p. 9-10, Exhibits 3, 4.
8 Id. at p. 11-12, Exhibit 6.

Opposition No. 91174800
8
the liberal standard for standing, there are no admissions
in applicant’s answer regarding opposer’s standing.
Accordingly, we conclude that opposer has failed to
make the showing necessary to prove its standing. Our
conclusion that opposer failed to prove standing is a
sufficient basis, by itself, to dismiss the proceeding.
Nonetheless, in order to come to a more complete
determination of this case we will consider opposer’s claim
of priority.
Priority of Use
To establish priority on a likelihood of confusion
claim brought under Trademark Act §2(d), a party must prove
that, vis-à-vis the other party, it owns “a mark or trade
name previously used in the United States … and not
abandoned….” Trademark Act Section 2, 15 U.S.C. §1052. A
party may establish its own prior proprietary rights in a
mark through ownership of a prior registration, actual use
or through use analogous to trademark use which creates a
public awareness of the designation as a trademark
identifying the party as a source. See Trademark Act §§2(d)
and 45, 15 U.S.C. §§1052(d) and 1127. See also T.A.B.
Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879
(Fed. Cir. 1996), vacating Pactel Teletrac v. T.A.B.
Systems, 32 USPQ2d 1668 (TTAB 1994).
Opposition No. 91174800
9
In this case, opposer asserts ownership of its
cancelled Registration No. 2144286 for the mark ERGOSTAR for
computer work area ergonomic adjustment kit
consisting primarily of computer software for use
in solving ergonomic problems in the workplace,
measurement tools, namely, graduated measuring
tape, circular level, mirror and alignment
indicators, and instructional book for adjusting
the computer work area to minimize potential
injuries

in International Class 9. As noted above, opposer’s
registration issued on March 17, 1998 and was cancelled
under Section 8 of the Trademark Act on March 17, 2004. If
opposer’s pleaded registration was valid and subsisting,
Section 2(d) priority would not be an issue in this case as
to the mark therein and goods and services covered thereby.
See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974). However, because it is
cancelled, opposer’s registration is not evidence of
anything except that it issued. See TBMP §704.03(b) (2d ed.
rev. 2004) and cases cited therein. See also Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002). Any
benefits conferred by the registration, including the
evidentiary presumptions afforded by Section 7(b) of the
Trademark Act, were lost when the registration expired.
See, e.g., Anderson, Clayton & Co. v. Krier, 478 F.2d 1246,
178 USPQ 46 (CCPA 1973). As such, opposer may not rely upon
its cancelled registration to support its claim of priority.
Opposer must therefore demonstrate by competent evidence
Opposition No. 91174800
10
that it has made use of ERGOSTAR prior to the earliest date
upon which applicant may rely for purposes of priority.
Applicant filed its involved application on December
28, 2005. Inasmuch as applicant has not introduced evidence
of use of its mark in connection with its goods prior to the
filing date of its application, the earliest date upon which
applicant may rely for priority purposes is December 28,
2005. See Levi Strauss & Co. v. R. Josephs Sportswear Inc.,
36 USPQ2d 1328, 1332 (TTAB 1998), quoting Alliance
Manufacturing Co., Inc. v. ABH Diversified Products, Inc.,
226 UPSQ 348, 351 (TTAB 1985)(“an applicant is entitled to
rely upon the filing date of its application as a
presumption of use of the mark subject of the application as
of that date”). Thus, in order to establish priority,
opposer must show that it used ERGOSTAR as a mark prior to
December 28, 2005.
Opposer asserts that it has used the Internet website
ergostar.com since 1996,9 and introduced evidence of its
registration of that domain name since November 25, 2002.10
However, opposer’s evidence of use and registration of
ERGOSTAR as a domain name is not evidence of use of ERGOSTAR
as a trademark or use analogous to trademark use on or in
connection with any goods or services. While a domain name
may attain trademark status, its use as an address does not

9 Brief, p. 16.
Opposition No. 91174800
11
support trademark use. See In re Eilberg, 49 USPQ2d 1959
(TTAB 1998). “When a domain name is used only to indicate
an address on the Internet, the domain name is not
functioning as a trademark … domain names, like trade names,
do not act as trademarks when they are used merely to
identify a business entity; in order to infringe they must
be used to identify the source of goods or services.”
Lockheed Martin Corp. v. Network Solutions, Inc., 985 F.
Supp. 949, 956, 44 USPQ2d 1865, 1871 (C.D. Cal. 1997). See
also Data Concepts Inc. v. Digital Consulting Inc., 150 F.3d
620, 47 USPQ2d 1672, concurring opinion, Merritt (6th Cir.
1998); and J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition, §7:17.50 (4th ed. updated June 2008).
Opposer has also introduced a copy of a page from its
ergostar.com website advertising “The ErgoStar®!” apparently
in relation to computer software used to optimize computer
work areas so they are more comfortable for the user.11
However, there is no testimony or evidence regarding the
date of this Internet posting to indicate whether it was
used prior to applicant’s filing date.12

10 Stubblefield Testimony, p. 7-9, Exhibit 2.
11 Id. at 11-12, Exhibit 6.
12 Exhibit 6 indicates that it was printed on July 4, 2007, which
is subsequent to the filing date of the involved application.
Further, we do not construe the copyright notice at the bottom of
the page (1996 – 2007 © The Starfield Group, Inc.) as indicating
a date of first use of ERGOSTAR as a mark.
Opposition No. 91174800
12
Similarly, the remaining evidence made of record by
opposer fails to establish that opposer made prior use of
ERGOSTAR as a trademark or otherwise made use analogous to
trademark use which would create a public awareness of
ERGOSTAR as a trademark identifying opposer as the source of
goods or services thereunder. In point of fact, aside from
the document discussed above, the record contains little, if
any, evidence that opposer has used the designation ERGOSTAR
as a mark. Nor does the testimony of Mr. Stubblefield
establish use of ERGOSTAR as a trademark or use analogous to
trademark use that is prior to applicant’s filing date.
Simply put, opposer’s evidentiary showing demonstrates
only that opposer created the Internet website ergostar.com
in 1996. Opposer’s evidence fails to show trademark use of
ERGOSTAR that is prior to applicant’s filing date.
Opposer asserts in its notice of opposition that it has
made prior use of ERGOSTAR as a trademark.13 However,
statements made in pleadings cannot be considered as
evidence on behalf of the party making them; such statements
must be established by competent evidence during the time
for taking testimony. See Times Mirror Magazines, Inc. v.
Sutcliff, 205 USPQ 656, 662 (TTAB 1979); and TBMP §704.06(a)
(2d ed. rev. 2004). Further, applicant did not make any

13 Notice of opposition, paragraphs a-d.
Opposition No. 91174800
13
admissions in its answer that would excuse opposer from
having to prove its priority of use.
Lastly, opposer’s brief contains numerous factual
allegations in support of its claim. However, factual
statements made in a party’s brief on the case can be given
no consideration unless they are supported by evidence
properly introduced at trial. Statements in a brief have no
evidentiary value. See Electronic Data Systems Corp. v.
EDSA Micro Corp., 23 USPQ2d 1460, 1462 n.5 (TTAB 1992); and
TBMP §704.06(b).
In short, the record is devoid of any testimony or
evidence in support of opposer’s claim of priority. Opposer
has the burden of coming forward with evidence to support
its claim, but has failed to do so.
Likelihood of Confusion
Because opposer has failed to prove either its standing
to bring this proceeding or priority, its claim under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d) must
fail, and we need not consider its claim of likelihood of
confusion.
Decision: The opposition is dismissed.