Trio Selection Inc.v.Nancita K. Fashions, Inc.

Trademark Trial and Appeal Board

May 15, 2008

No. 91173816 (T.T.A.B. May. 15, 2008)

Mailed: May 15, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Trio Selection Inc.
v.
Nancita K. Fashions, Inc.
_____

Opposition No. 91173816
_____

Jeffrey M. Furr, Esq. for Trio Selection Inc.

Brett Green, Esq. for Nancita K. Fashions, Inc.
_____

Before Hairston, Rogers and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by Nancita K. Fashions,
Inc. to register the mark KOVETTE (in standard character
form) for “shoes.”1
Registration has been opposed by Trio Selection Inc.
Opposer alleges that it uses the mark COVET in commerce in
connection with shoes and various clothing items; that it is
the owner of application Serial No. 78460248 for said mark

1 Serial No. 78830780, filed on March 7, 2006, which alleges
dates of first use of August 19, 2004.
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91173816
2
and goods; that this application was filed on August 2, 2004
with a Trademark Act Section 44 priority date of July 7,
2004; and that applicant’s mark, when applied to applicant’s
goods, so resembles opposer’s COVET mark as to be likely to
cause confusion.
Applicant, in its answer, admitted that the “types of
goods in Defendant’s application set forth in Paragraph 3 of
the Notice of Opposition are identical to one of the
multitude of goods that Plaintiff alleges use of.”
Applicant denies the remaining allegations in the notice of
opposition.
Neither opposer nor applicant took testimony or
introduced any other evidence during their respective
testimony periods. Only opposer filed a main brief on the
case. Attached to opposer’s brief is a notice of reliance,
which we discuss infra, consisting of four exhibits. After
the filing of its brief, opposer filed another notice of
reliance, which we discuss infra, consisting of one exhibit.
The party opposing registration must prove two
elements: (1) that it has standing, and (2) that there is a
valid ground to oppose registration. Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000). Opposer has failed to prove its standing in this
case, so as to be heard on its likelihood of confusion
claim.
Opposition No. 91173816
3
The trial order in this case set opposer’s 30-day
testimony period to close August 24, 2007. As noted,
opposer failed to take any testimony or introduce any other
evidence during its testimony period. Rather, with its main
brief on the case, opposer attached a notice of reliance
consisting of a copy of Registration No. 3265232 owned by a
third-party; a TESS copy of Registration No. 3179237 which
issued from opposer’s Application Serial No. 78460248; a
TESS copy of applicant’s involved application Serial No.
78830780; a copy of opposer’s Canadian Registration No.
TMA665882; and copies of opposer’s interrogatories and
requests for production of documents which opposer maintains
applicant failed to respond to. Also, after the filing of
its brief, opposer filed a notice of reliance on a certified
copy of its Registration No. 3179237.
Apart from the fact that certain of the evidence does
not relate to opposer’s standing,2 both notices of reliance
are untimely. A notice of reliance introducing evidence in
support of a party’s case in chief should be filed during
the offering party’s testimony period. See TBMP §704.02 (2d
ed. rev. 2004). Also, so as to be clear, exhibits attached
to a party’s brief on the case can be given no consideration

2 In particular, the third-party registration; the TESS copy of
applicant’s involved application; and the copies of opposer’s
interrogatories and requests for production of documents do not
relate to opposer’s standing.
Opposition No. 91173816
4
unless they were properly made of record during the party’s
testimony period. See TBMP §704.05(b). Thus, in this case,
where opposer failed to make the evidence of record during
its testimony period, we can give it no consideration.
Further, applicant’s admission in its answer that its
goods are identical to “one of the goods that Plaintiff
alleges use of” does not excuse opposer from having to
prove, as an element of its case in chief, its standing to
be heard in this proceeding.
In sum, opposer failed, at trial, to take any testimony
or introduce any other evidence to prove its standing to
bring this opposition proceeding.
Under the circumstances, the opposition must be
dismissed.3 In view thereof, we elect not to consider the
merits of the pleaded ground. See American Paging Inc. v.
American Mobilphone Inc., 13 USPQ2d 2036 (TTAB 1989), aff’d,
923 F.2d 869, 17 USPQ2d 1726 (Fed. Cir. 1990); and American
Forests v. Sanders, 54 USPQ2d 1860, 1864 (TTAB 2000).
Decision: The opposition is dismissed for opposer’s
failure to prove its standing.

3 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. See TBMP §704.06(b). Thus, the statement
in opposer’s brief relating to opposer’s standing, namely that it
is the owner of a valid and subsisting registration, i.e.,
Registration No. 3179267 for the mark COVET for various clothing
items and shoes, remains unproven. Further, the Board does not
take judicial notice of registrations residing in the USPTO. See
TBMP §704.03(b)(1).