The Tiffin Company, Inc.v.John Slattery

Trademark Trial and Appeal Board

Sep 29, 2009

No. 91180682 (T.T.A.B. Sep. 29, 2009)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB Mailed: September 29, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

The Tiffin Company, Inc.

v.

John Slattery
_______

Opposition No. 91180682
to Application No. 78966273
filed September 1, 2006
_______

Jesshill E. Love, III, Ropers, Majeski, Kohn & Bentley, for
opposer.

Laura J. Zeman, Snell & Wilmer, LLP, for applicant.
_______

Before Taylor, Mermelstein, and Ritchie, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Applicant seeks registration of the mark WHITE TRASH
WITH LOTS OF CASH (in standard characters) for “clothing,
namely, pants, shirts, shorts, jackets, caps, socks,
sweatshirts and hats,” in International Class 25.1
Opposer, The Tiffin Company, Inc., filed an opposition
to registration alleging priority and a likelihood of
confusion with opposer’s previously used mark, BLANCO

1 Alleging a bona fide intent to use the mark in commerce.
Opposition No. 91180682

2
BASURA.2
By his answer, applicant denied the salient allegations
of the notice of opposition.
We dismiss the opposition.
I. Record
Pursuant to Trademark Rule 2.122(b), the record in this
case includes the pleadings and the file of applicant’s
subject application. In addition, during its testimony
period, opposer submitted a document styled “Testimony of
Scott D. Gold...,” with attachments.
Mr. Gold’s “testimony” consists of a declaration in
support of opposer’s case. Testimony in an opposition
proceeding may be taken in accordance with Trademark Rule
2.123; absent a stipulation to the contrary, however,
parties may not present testimony by declaration or
affidavit. Life Zone Inc. v. Middleman Group Inc., 87
USPQ2d 1953, 1956 (TTAB 2008); Boyds Collection Ltd. v.
Herrington & Co., 65 USPQ2d 2017, 2020 (TTAB 2003);
Trademark Rule 2.123(l) (“Evidence not obtained and filed in
compliance with these sections will not be considered.”).

2 In its notice of opposition, opposer alleged that its mark was
the subject of an application for registration. However, neither
the application nor any resulting registration was introduced in
evidence. An application or registration must be proved by
competent evidence; we do not take judicial notice of
applications or registrations that reside in the USPTO. Beech
Aircraft Corp. v. Lightning Aircraft Co. Inc., 1 USPQ2d 1290,
1293 (TTAB 1986).
Opposition No. 91180682

3
Mr. Gold’s declaration is accordingly inadmissible, and we
have not considered it.
The attachments to Mr. Gold’s declaration consist of
opposer’s discovery requests (interrogatories, requests for
production of documents, and requests for admission) and
applicant’s responses to them. Admissions and responses by
an adverse party to interrogatories may be introduced during
trial by way of a notice of reliance.3 Trademark Rule
2.120(j)(3)(i). Since they were submitted as attachments to
the Gold declaration, applicant’s admissions and
interrogatory responses are thus admissible only if the
declaration can be considered a notice of reliance.
We find that under the facts of this case the Gold
declaration fulfills the requirements for a notice of
reliance, since it “notif[ies] opposing parties that the
offering party intends to rely on the materials submitted
thereunder in support of its case ... and ... indicate[s]
the relevance of those materials to the case.” TRADEMARK
TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 704.02 (2d
ed. rev. 2004). Here, the materials are clearly identified,
Gold Dec. ¶ 12, and their relevance is explained, albeit in
a general manner, Gold Dec. ¶ 13.

3 Responses to requests for the production of documents are not
admissible under a notice of reliance as such. Trademark Rule
2.120(j)(3)(ii). We have accordingly given no consideration to
applicant’s responses to opposer’s requests for the production of
documents.
Opposition No. 91180682

4
The record in this matter thus consists of the subject
application, the pleadings, and applicant’s responses to
opposer’s interrogatories and requests for admission.
II. Analysis
The plaintiff in an inter partes proceeding before the
Board must prove by a preponderance of the evidence (1) its
standing to pursue the case, i.e., that it has a reasonable
belief that it would be damaged by registration of
applicant's mark; and (2) a valid ground for refusal of
registration. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 187
(CCPA 1982). Standing will usually be found in an
opposition based on likelihood of confusion when the opposer
establishes its registration or use of a trademark, which
right might be plausibly harmed by registration of
applicant’s mark. Syngenta Crop Protection, Inc. v. Bio-
Chek LLC, 90 USPQ2d 1112, 1118 (TTAB 2009). Standing may
also be found when an opposer alleges and proves that the
applicant’s mark was cited by the USPTO as a bar to
registration of opposer’s mark. See Cerveceria Modelo S.A.
de C.V. v. R.B. Marco & Sons Inc., 55 USPQ2d 1298, 1299-1300
(TTAB 2000)(proof of opposer’s use and that respondent’s
mark was cited as a bar to opposer’s registration sufficient
to establish standing).
Opposition No. 91180682

5
In this case, the notice of opposition – generously
construed – alleges that opposer has filed an application to
register the mark “Blanco Basura.” Applicant’s answer
admits – at most – that opposer has filed an application.
Opposer does not allege, and applicant does not admit, that
opposer is using its mark in connection with any particular
goods or services. The only evidence regarding opposer’s
use of its mark is applicant’s response to a request for
admission:
Request for Admission 2
Admit that Opposer’s mark has a priority use
of [sic] YOUR MARK.[4]

Response to Request 2
Applicant admits the Opposer has used its
BLANCO BASURA mark on goods in commerce as
evidenced by its website and that Applicant
has not yet used his WHITE TRASH WITH LOTS OF
CASH mark on goods in commerce.

Thus, while applicant readily admits that opposer is
using its mark (again, with unspecified goods; it is not
clear that the goods “evidenced by [opposer’s] website” are
the same as those goods set out in opposer’s application),
applicant does not admit opposer’s priority of use because
he does not admit when opposer commenced use of its mark.
Although it is admitted that opposer was using its mark and

4 “YOUR MARK” is defined in the requests for admission as “the
mark ‘White Trash With Lots of Cash,’ Application Serial No.
78/966,273 with the United States Patent and Trademark Office, as
well as any spelling or phonetic variation of the same.” By
contrast, “Opposer’s mark” is not defined, nor are the goods or
services it is used with listed.
Opposition No. 91180682

6
applicant was not, this fact alone does not confer priority
upon opposer, since applicant is entitled to rely for
priority on the filing date of its intent-to-use
application. Trademark Act § 7, 15 U.S.C. § 1057
(“Contingent on the registration of a mark on the principal
register ..., the filing of the application to register such
mark shall constitute constructive use of the mark,
conferring a right of priority, ... on or in connection with
the goods or services specified in the registration....”).
Applicant did not admit that opposer commenced use of its
mark prior to applicant’s filing date, nor did he otherwise
admit that opposer had priority.5 As noted above, opposer
did not submit any testimony, nor did it submit its
application or any resulting registration in evidence.
Opposer’s standing in this matter is questionable.
Opposer has introduced no direct evidence of its use or
registration of its mark, nor has it alleged or proven that
its application was refused registration in view of the
subject application. Nonetheless, standing is a low
threshold. Given applicant’s admission that opposer is
using its mark, we conclude that opposer has a legitimate

5 Applicant’s response to opposer’s request for admission was
arguably unresponsive. Nonetheless, opposer did not seek a more
direct response from applicant or seasonably move for a Board
order as it may have been entitled to do. See Trademark Rule
2.120(h) (motion to determine the sufficiency of an admission may
be filed prior to the commencement of the first testimony
period).
Opposition No. 91180682

7
interest in this matter, despite the fact that none of the
particulars of opposer’s use (including the goods or
services in connection with which the mark is in use) are
clear.
Opposer does not fare as well, however, when we
consider the substantive ground for its opposition: priority
and likelihood of confusion. As noted above, opposer has
not proven – nor has applicant admitted – that opposer
possesses a registration or priority of use as contemplated
by Trademark Act § 2(d).
And even if opposer were able to surmount the hurdle of
priority, a key consideration in any likelihood of confusion
analysis is a comparison of the goods or services of the
parties. See, e.g. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks.”). Without proof of the particular goods or services
on which opposer uses its mark, we are unable to find in
opposer’s favor on a critical likelihood of confusion
element. While the degree of the required relationship of
the goods necessary to support a finding of likelihood of
confusion differs from case to case, without a finding of
Opposition No. 91180682

8
any relationship (because the goods are undetermined),
opposer cannot prevail.6
III. Conclusion
Opposer bears the burden of proof in this case.
Construed generously, the sparse evidence supports opposer’s
standing, but little more. Opposer has not introduced any
evidence of its registration or prior use of the mark
“Blanco Basura” on any goods related to those recited in the
subject application. But even assuming opposer’s priority,
opposer has not proven a likelihood of confusion by a
preponderance of the evidence because it has introduced no
evidence of the goods or services in connection with which
it uses its mark.
Decision: The opposition is dismissed.

6 We further note that the similarity of the marks is also
questionable on this record because it is not clear that “BLANCO
BASURA” has the same idiomatic meaning as the English term “WHITE
TRASH.” Applicant admitted that “an Examiner for the [USPTO]
documented the English translation of Opposer’s mark as “white
trash,” Resp. to Admission Req. 5, but Opposer has introduced no
independent evidence of the meaning of the phrase “BLANCO BASURA”
to the relevant consumer.