24 Mill Corp. v. Bakery HNY

This Opinion is Not a
Precedent of the TTAB

Mailed: July 9, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

24 Mill Corp.
v.
Bakery HNY
_____

Opposition No. 91236490
_____

Albert L. Schmeiser of Schmeiser Olsen & Watts LLP,
for 24 Mill Corp.

Michael D. Stewart, Esq.,
for Bakery HNY.

_____

Before Taylor, Greenbaum and Coggins,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:

Bakery HNY (“Applicant”) seeks registration on the Principal Register of the mark

BAKERY HNY in stylized form displayed as for “Blazers;

Bottoms; Crew necks; Footwear; Gloves; Hats; Headwear; Hooded sweatshirts; Jeans;
Opposition No. 91236490

Pants; Tops; Underwear” in International Class 25.1 24 Mill Corp. (“Opposer”)

opposes registration of Applicant’s mark on the grounds of fraud based on nonuse of

the mark on “footwear,” and likelihood of confusion with Opposer’s mark HNY for

online and retail store services for footwear, use of which Opposer alleges began prior

to the filing date of the opposed application.2 Applicant, in its answer, denied the

salient allegations of the notice of opposition.3

I. Record

Neither party submitted testimony or evidence during its assigned trial period.

See Trademark Rule 2.121(a), 37 C.F.R. § 2.121(a) (“No testimony shall be taken or

evidence presented except during the times assigned….”). The record therefore

consists only of the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R.

§2.122(b), the file of the opposed application.

Opposer attached two exhibits to its Notice of Opposition but, subject to certain

exceptions inapplicable here, exhibits attached to pleadings are not in evidence.

Trademark Rule 2.122(c), 37 C.F.R. § 2.122(c) (exhibits to pleadings are not in

evidence and instead “must be identified and introduced in evidence as an exhibit

during the period for the taking of testimony”); see also TRADEMARK TRIAL AND APPEAL

1 Application Serial No. 86728313 was filed on August 18, 2015, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as January 1, 2015. Color
is not claimed as a feature of the mark.
2 In light of our disposition of this proceeding, we do not address the pleading deficiencies.
3Applicant asserted various “affirmative defenses” in its answer; however, these are deemed
waived because Applicant did not pursue them at trial. See Alcatraz Media Inc. v. Chesapeake
Marine Tours Inc. dba Watermark Cruises, 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d
mem., 565 F. App’x 900 (Fed. Cir. 2014).

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Opposition No. 91236490

BOARD MANUAL OF PROCEDURE (TBMP) § 317 (June 2019). Similarly, the four exhibits

attached to Opposer’s Brief were not properly introduced into evidence and therefore

cannot be considered. Trademark Rule 2.123(k), 37 C.F.R. § 2.123(k) (“Evidence not

obtained and filed in compliance with these sections will not be considered.”); see also

Angelica Corp. v. Collins & Aikman Corp., 192 USPQ 387, 391 n.10 (TTAB 1976)

(evidence submitted for first time with brief not considered).

Opposer filed a trial brief, but Applicant did not.

II. Standing Not Proven

Standing is a threshold issue that a plaintiff must prove in every inter partes case.

See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,

1062 (Fed. Cir. 2014). “The facts regarding standing … are part of [a plaintiff’s] case

and must be affirmatively proved. Accordingly, [plaintiff] is not entitled to standing

solely because of the allegations in its petition.” Lipton Indus., Inc. v. Ralston Purina

Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Our primary reviewing court

has enunciated a liberal threshold for determining standing: a plaintiff must

demonstrate that it has a “real interest” in a proceeding beyond that of a mere

intermeddler, and “a reasonable basis for his belief of damage.” Empresa Cubana,

111 USPQ2d at 1062 (quotation omitted). A “real interest” is a “direct and personal

stake” in the outcome of the proceeding. Ritchie v. Simpson, 170 F.3d 1092, 50

USPQ2d 1023, 1026 (Fed. Cir. 1999).

As plaintiff in this proceeding, Opposer must prove both its standing and its

claims by a preponderance of the evidence. See Bose Corp. v. QSC Audio Prods. Inc.,

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Opposition No. 91236490

293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002) (“The burden of proof rests

with the opposer … to produce sufficient evidence to support the ultimate conclusion

of [priority of use] and likelihood of confusion.”); Sanyo Watch Co. v. Sanyo Elec. Co.,

691 F.2d 1019, 215 USPQ 833, 834 (Fed. Cir. 1982) (“As the opposer in this

proceeding, appellant bears the burden of proof which encompasses not only the

ultimate burden of persuasion, but also the burden of going forward with sufficient

proof of the material allegations of the Notice of Opposition, which, if not countered,

negates appellee’s right to a registration.”).

Although Opposer did not submit evidence or testimony, we must look to the

pleadings to determine if Applicant made any admissions in its answer that would

mitigate Opposer’s failure to prove its case. TBMP § 704.06(a) (“statements in

pleadings may have evidentiary value as admissions against interest by the party

that made them”). Opposer makes several allegations in the Notice of Opposition

about its purported adoption and use of the mark HNY in connection with “online and

retail store services for footwear.” Notice of Opposition ¶¶ 1-3, 1 TTABVUE 4.

Statements made in a notice of opposition are, unless admitted, merely allegations,

subject to proof at trial. Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1725 n.7 (TTAB

2010). Here, Applicant did not admit any allegations of Opposer’s adoption or use of

the pleaded mark and, as noted, Opposer submitted no trial evidence. Boyds

Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017, 2020 n.10 (TTAB 2003)

(“Although petitioner pleaded ownership of common-law marks in the petition to

cancel, such matters were denied in respondent’s answer, and are therefore subject

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Opposition No. 91236490

to proof. Without such evidence, petitioner can prove neither its standing nor its

substantive claims.”).

In its brief, Opposer repeats the unsupported allegations about its purported

adoption and use of the pleaded mark. However, as the Federal Circuit recently

reiterated, “[a]ttorney argument is no substitute for evidence.” Zheng Cai v. Diamond

Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (quoting Enzo

Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005)); see also In re

Simulations Publ’ns, Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975)

(“Statements in a brief cannot take the place of evidence.”).

In sum, there is no record evidence that Opposer has a “real interest,” i.e., a “direct

and personal stake” in the outcome of the proceeding or that Opposer is more than a

“mere intermeddler.” Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 50

USPQ2d at 1026. See generally TBMP § 309.03(b). Accordingly, we find Opposer has

failed to prove its standing to oppose the registration of Applicant’s mark.

Opposer’s failure to prove standing is a sufficient basis to dismiss the proceeding,

and we dismiss Opposer’s claims on that basis alone.4 See Lumiere Prods., Inc. v. Int’l

Tel. & Tel. Corp., 227 USPQ 892, 893 (TTAB 1985).

Decision: The opposition is dismissed.

4Accordingly, we need not and do not discuss or otherwise reach the merits of Opposer’s
purportedly asserted claims of fraud and likelihood of confusion.

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