Tracie Martyn, Inc.v.Tracy Artman

Trademark Trial and Appeal Board

May 1, 2008

No. 91173009 (T.T.A.B. May. 1, 2008)

gcp/jk Mailed: May 1, 2008

Opposition No. 91173009
TRACIE MARTYN, INC.
v.
TRACY ARTMAN

Before Quinn, Holtzman and Walsh,
Administrative Trademark Judges.

By the Board:
Tracy Artman (“applicant”) seeks to register the mark
TRACY'S TREATS NATURAL PRODUCTS FOR REMARKABLE SKIN and design
for “soap bars, foaming soap, shea butter cosmetic creams,
shea butter lotion bars, shea butter lotion melts, scented
linen and room sprays, fragrant body splash, dead sea bath
salts, Mediterranean sea salt body scrubs, lip balm, whipped
shea butter lotion,” in International Class 3.1
On September 20, 2006, Tracie Martyn, Inc. (“opposer”)
filed a notice of opposition to registration of applicant’s
mark. As grounds for opposition, opposer alleges that

1 Application Serial No. 78652615, filed June 16, 2005, based on
an allegation of use of the mark in commerce under Trademark Act
Section 1(a), and alleging a date of first use and date of first
use in commerce of March 1, 2005.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91173009
2
applicant’s mark, when used on the identified goods, so
resembles the following of opposer’s previously used and
pleaded registered marks as to be likely to cause confusion,
mistake or to deceive:
(1) TRACIE MARTYN, in standard characters, for “skin
care treatment salon services and cosmetic and color
analysis, namely, analysis of the color, tone,
texture and appearance of the skin and underlying
tissues and the care and treatment of the skin and
tissue through electrical stimulation of nerves,
tissues, and muscle as well as traditional methods
of skin care treatment and makeup application,”2

(2) TRACIE MARTYN, in standard characters, for “skin
care products namely, facial cleansers, facial
creams, facial emulsions, facial masks, facial
scrubs, body lotions, astringents for cosmetic
purposes, cosmetic pads, eye makeup remover, skin
cleansing lotion, skin conditioners, skin cleansing
cream, skin cream, skin and face lotions, skin
moisturizer, skin clarifiers, skin cleansers, skin
emollients, skin lighteners, skin masks, skin
moisturizer masks, skin soap, skin toners, skin
whitening cream, wrinkle removing skin care
preparations,”3

(3) RESCULPTING BODY TREATMENT BY TRACIE MARTYN, in
standard characters, for “skin care services,
namely, providing skin and body care treatment and
massage,”4 and

(4) RESCULPTING SERUM BY TRACIE MARTYN, in standard
characters, for “cosmetic and skin care products
namely, facial creams, facial emulsions, skin cream,
skin and face lotions, skin moisturizer, skin
clarifiers, skin emollients, skin lighteners, skin
whitening cream, wrinkle removing skin care
preparations,”5

2 Registration No. 2569005, registered May 14, 2002, Section 8
and 15 affidavits accepted December 6, 2007.
3 Registration No. 2845161, registered May 25, 2004.
4 Registration No. 2763314, registered September 16, 2003.
5 Registration No. 2840732, registered on May 11, 2004.
Opposition No. 91173009
3
On June 6, 2007, opposer filed a motion for leave to
amend its notice of opposition concurrently with a copy of its
amended notice of opposition. The Board granted opposer’s
motion to amend, as conceded, on October 24, 2007. In its
amended notice of opposition, opposer repeated the grounds for
opposition based on likelihood of confusion, and set forth an
additional ground for opposition, namely, that applicant,
Tracy Artman was not the owner of the trademark TRACY’S TREATS
NATURAL PRODUCTS FOR REMARKABLE SKIN on June 16, 2005, the
filing date of the subject application.
On December 7, 2007, opposer filed a motion for summary
judgment on the ground that the subject application was void
as filed. In particular, opposer asserts that the application
was void ab initio due to an error in execution which cannot
be corrected by amendment or assignment after the filing date.
Opposer relies on applicant’s answer to certain paragraphs,
namely, paragraphs 17 and 18, in the amended notice of
opposition wherein applicant admitted the following
allegations:
17. On June 16, 2005, Tracy Artman was the president of
Tracy’s Treats Inc.

18. On June 16, 2005, Tracy’s Treats Inc. was the owner
of the trademark TRACY’S TREATS NATURAL PRODUCTS FOR
REMARKABLE SKIN for use in connection with the goods set
out in the subject application.

In response, applicant asserts that § 512.04 of the
Trademark Trial and Appeal Board Manual of Procedure (“TBMP”)
Opposition No. 91173009
4
allows applicant, by amendment, to correct the
misidentification in her application, that Tracy Artman,
President of Tracy’s Treats Inc. mistakenly signed the subject
application as the owner of the mark therein, when in fact the
corporation, Tracy’s Treats Inc. owns the mark, and that the
mistake “is easily remedied by filling out a form online and
paying a $40 filing fee.”6
Summary judgment is appropriate when the record shows
that there is no genuine issue of material fact and that the
moving party is entitled to judgment as a matter of law.
See Fed. R. Civ. P. 56(c). A dispute as to a material fact
issue is genuine only if a reasonable fact finder viewing
the entire record could resolve the dispute in favor of the
nonmoving party. See Olde Tyme Foods Inc. v. Roundy’s Inc.,
961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). In
deciding a motion for summary judgment, the Board must view
the evidence in the light most favorable to the nonmovant
and must draw all reasonable inferences from underlying
facts in favor of the nonmovant. Id.
A party seeking summary judgment bears the initial
burden of informing the Board of the basis for its motion
and identifying those portions of the record which it

6 Inasmuch as the USPTO fee for recording the assignment of a
trademark is $40, pursuant to Trademark Rule 2.6(b)(6), we
construe this as an assertion on applicant’s part that the
mistake at issue can be remedied by the recordation of assignment
documents with the USPTO.
Opposition No. 91173009
5
believes demonstrates the absence of a genuine issue of
material fact. See Celotex Corp. v. Catrett, 477 U.S. 317,
106 S. Ct. 2548 (1986). When the moving party’s motion is
supported by evidence sufficient, if unopposed, to indicate
that there is no genuine issue of material fact, and that
the moving party is entitled to judgment, the burden shifts
to the nonmoving party to demonstrate the existence of
specific genuinely disputed facts which must be resolved at
trial. The nonmoving party may not rest on mere allegations
of its pleadings and assertions of counsel, but must
designate specific portions of the record, or produce
additional affidavit evidence, showing the existence of a
genuine issue of material fact for trial. If the nonmoving
party does not so respond, summary judgment, if appropriate,
shall be entered in the moving party’s favor. See Fed. R.
Civ. P. 56(e).
At issue here is the validity of Application Serial No.
78652615 as of its filing date, i.e., June 16, 2005. The
Lanham Trademark Act, 15 U.S.C. § 1051, provides as follows
(emphases added):
(a) Application for use of trademark

(1) The owner of a trademark … may request
registration

The statute requires that an application to register a mark
Opposition No. 91173009
6
be filed with the Patent and Trademark Office by the owner
thereof. The Board cannot waive this statutory requirement,
and does not have the authority to excuse noncompliance with
it. See Huang v. Tzu Wei Chen Food Co. Ltd., 7 USPQ2d 1335,
1336 (Fed. Cir. 1988).
Moreover, Section 1201.02(b) and (c) of the Trademark
Manual of Examining Procedure, 5th Edition (“TMEP”) explains,
in pertinent part, as follows:
1201.02(b) Application Void if Wrong Party Identified
as the Applicant
An application must be filed by the party who is the
owner of (or is entitled to use) the mark as of the
application filing date. See TMEP §1201.
An application based on use in commerce under 15
U.S.C. §1051(a) must be filed by the party who owns
the mark on the application filing date. If the
applicant does not own the mark on the application
filing date, the application is void. 37 C.F.R.
§2.71(d).

When an application is filed in the name of the wrong
party, such that the application is void, this defect cannot
be cured by amendment or assignment. 37 C.F.R. §2.71(d); TMEP
§ 803.06. However, if the application was filed by the owner,
but there was a mistake in the manner in which the applicant’s
name was set forth in the application, this may be corrected.
TMEP § 1201.02(c) provides examples of both “Correctable
Errors” and “Non-Correctable Errors” in the manner in which an
Opposition No. 91173009
7
application identifies an applicant, and gives the following
example of a correctable error:
Inconsistency in Original Application as to Owner
Name or Entity. If the original application reflects
an inconsistency between the owner name and the entity
type, e.g., an individual and a corporation are each
identified as the owner in different places in the
application, the application may be amended to clarify
the inconsistency.

In the same vein, the TMEP provides the following example
(emphasis added) of a non-correctable error:
President of Corporation Files as Individual. If the
president of a corporation is identified as the owner of
the mark when in fact the corporation owns the mark, and
there is no inconsistency in the original application
between the owner name and the entity type (such as a
reference to a corporation in the entity section of the
application), the application is void as filed because
the applicant is not the owner of the mark.

Application Serial No. 78652615 does not evidence an
inconsistency either between the owner name and the entity
type, or in any other manner. The entity “Tracy’s Treats
Inc.” appears nowhere on the subject application form, and the
application includes no apparent mistake in the manner in
which it sets forth the applicant for and owner of the mark
TRACY’S TREATS NATURAL PRODUCTS FOR REMARKABLE SKIN. The
applicant is identified as “Artman, Tracy.” The legal entity
of the applicant is given as an individual United States
citizen. The application includes the electronic signature of
this named individual with no reference to or mention of her
capacity as an officer of Tracy’s Treats Inc.
Opposition No. 91173009
8
Thus, inasmuch as we find no inconsistency in the
application itself which would constitute a correctable
mistake, and inasmuch as the record in the opposition
proceeding before us indicates that Tracy’s Treats Inc. was
the owner of the trademark on June 16, 2005, we must deem the
application void as filed because the applicant identified
therein, Tracy Artman, was not, on that date, the owner of the
mark. Accordingly, on the issue of whether the subject
application is void ab initio, we find that opposer has
demonstrated that it is entitled to judgment as a matter of
law.
With respect to applicant’s argument that her application
is correctable pursuant to TBMP § 512.04 (2d ed. rev. 2004),
we note that this provision is inapplicable. In particular,
TBMP § 512.04 governs situations where a party to a Board
proceeding is misidentified at the institution of or during
the course of such Board proceeding. The cited section does
not provide applicant with an avenue through which she can now
correct the information provided in her application filed on
June 16, 2005.
In view of our finding, opposer’s motion for summary
judgment is granted, the opposition is sustained on the sole
ground that the application is void ab initio, and
registration to applicant is refused.
Opposition No. 91173009
9
As a final matter, noting that the opposition before us
sets forth the additional ground for opposition based on
priority and likelihood of confusion, we acknowledge that
opposer might potentially find itself in the position of
asserting these same grounds for opposition against a future
application for the same mark and the same goods, if filed.
In the interest of judicial economy, the Board exercises its
inherent authority to effectuate a just result and allows
opposer thirty days from the mailing date of this order in
which to inform the Board whether it wishes to further
pursue this opposition and seek a determination on the
merits of its likelihood of confusion claim, or withdraw its
likelihood of confusion claim without prejudice as moot in
light of the Board’s finding that the subject application is
void ab initio. See, e.g., C.H. Guenther & Son Inc. v.
Whitewing Ranch Co., 8 USPQ2d 1450, 1452 (TTAB 1988) (upon
finding that the expiration of respondent’s involved
registration, for failure to renew, was the result of
unintentional inadvertence or mistake, Board determined that
petitioner was entitled to elect whether it preferred to
dismiss its petition for cancellation without prejudice, or
to go forward with the proceeding to obtain a determination
of the pleaded issues); Bank of America National Trust &
Savings Association v. The First National Bank of Allentown,
220 USPQ 892, 894 n. 6 (TTAB 1984) (opposed application was
Opposition No. 91173009
10
held void ab initio due to applicant’s concession that use
of mark was not made until after filing date, but
proceedings were continued based upon opposer's election to
adjudicate the pleaded issues).
In the event that the Board receives no response from
opposer on this point, the likelihood of confusion claim
will be dismissed as moot.