This Opinion is Not a
Precedent of the TTAB

Mailed: September 13, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

My My Star, Inc.

v.

MobileSoft Technology, Inc.
_____

Opposition No. 91236066
(Applications Serial Nos. 87184374 and 87309628)
_____

Omid E. Khalifeh, Ariana Santoro and Lara A. Peterson of Omni Legal Group PLC
for My My Star, Inc.

Michelle M. Kallenbach, Esq.
for MobileSoft Technology, Inc.
_____

Before Thurmon, Deputy Chief Administrative Trademark Judge,
Mermelstein and Wellington, Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

MobileSoft Technology, Inc. (“Applicant”), has filed applications seeking

registration on the Principal Register of the mark MYMY in standard characters for

various goods and services, including computer software, sound and video

broadcasting, entertainment, and providing downloadable software, in International
Opposition No. 91236066

Classes 9, 38, 41 and 42;1 and the mark for essentially the same goods

and services in Classes 9, 38 and 41.2

My My Star, Inc. (“Opposer”) opposes registration of the applied-for marks in all

classes on the grounds of dilution and likelihood of confusion.3 Specifically, Opposer

alleges, inter alia, that “[b]eginning at least fifteen (15) years before the filing dates

of the Applications opposed herein, Opposer has continuously used and promoted its

MY MY STAR mark” (Not. of Opposition ¶ 6); that “Opposer relies on its superior

common law trademark rights, which predate the filing dates of the intent to use

Applications by many years” (Id., ¶ 8); that “Applicant’s Marks, as used on the

services identified in the Application, would dilute, or be likely to dilute, the

distinctiveness of Opposer’s Mark” (Id., ¶ 13); and that “Applicant’s Marks so

resemble Opposer’s MY MY STAR mark, in which Opposer owns superior common

law trademark rights, as to be likely, when used on or in connection with the goods

and services identified in the Applications, as to cause confusion, or to cause mistake,

or to deceive consumers and potential consumers within the meaning of Section 2(d)

of the Trademark Act, 15 U.S.C. § 1052(d).” (Id., ¶ 14).

1 Application Serial No. 87184374 was filed on September 27, 2016 under Section 1(b) of the
Trademark Act (“the Act”), 15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide
intention to use the mark in commerce on or in connection with the identified goods and
services.
2Application Serial No. 87309628 was filed on January 22, 2017, and is also based on
Applicant’s claim of a bona fide intention to use the mark in commerce on or in connection
with the identified goods and services under Section 1(b) of the Act.
3 1 TTABVUE (Notice of Opposition).

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Opposition No. 91236066

Applicant’s Answer denies the salient allegations of the Notice of Opposition.

Specifically, Applicant either directly denies the allegations or, with regard to

Opposer’s allegations concerning its putative common law rights in a trademark,

Applicant states that it is “without knowledge or information sufficient to form a

belief as to the truth of the allegations … and thus, denies the same.”4

The parties have briefed this opposition proceeding.

I. The Record

The record includes the pleadings and, by operation of Trademark Rule 2.122(b),

Applicant’s application files.

In its main trial brief, Opposer states that record not only includes the pleadings

and involved application files, but also “consists of … the United States Patent and

Trademark Office (USPTO) Trademark Search & Document Retrieval (TSDR) and

Trademark Electronic Search System (TESS).”5 With its reply trial brief, Opposer

submitted the declaration of Len Wilson, Opposer’s Chief Executive Officer.6

Opposer’s assertion that the TSDR and TESS electronic databases are of record is

incorrect. See Trademark Rule 2.122; see also Trademark Trial and Appeal Board

Manual of Procedure (TBMP) § 704.07 (June 2019), regarding manner of introducing

official records, including those obtained from USPTO databases. During its assigned

trial periods, Opposer did not submit any records from TESS or TSDR, let alone the

4 See Answer (4 TTABVUE), ¶¶ 6-9.
5 9 TTABVUE 9.
6 11 TTABVUE 23-24.

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Opposition No. 91236066

entire databases. To the extent that Opposer is contending that the Board can take

judicial notice of any files, whether they be applications, registrations or papers filed

in conjunction therewith, this is also incorrect. See In re House Beer, LLC, 114

USPQ2d 1073, 1075 (TTAB 2015) (Board does not take judicial notice of files of

applications or registrations residing in the USPTO); Edom Labs Inc. v. Lichter, 102

USPQ2d 1546, 1550 (TTAB 2012).

As to Opposer’s submission of the Wilson declaration with its reply brief, this is

clearly improper and the declaration is not considered of record. Testimony by

declaration must be taken and submitted during the assigned testimony period.

Trademark Rule 2.121; see also, TBMP § 703 (“Taking and Introducing Testimony”).

A brief may not be used as a vehicle for the introduction of evidence. TBMP

§ 704.05(b) (“Exhibits and other evidentiary materials attached to a party’s brief on

the case can be given no consideration unless they were properly made of record

during the time for taking testimony.”)

Finally, Opposer attached two exhibits to the Notice of Opposition7 and makes

reference to these materials in its trial brief. The first exhibit (“Exhibit A”) consists

of ten numbered paragraphs describing Opposer’s pleaded common law trademark

and various applications that Opposer purportedly owns. The applications are

identified by their serial numbers, but copies of the applications are not attached. The

second exhibit (“Exhibit B”) is a list of various companies under the caption

“Opposer’s Notable Clients.” Except as provided in Rule 2.122(d)(1) (involving copies

7 1 TTABVUE 13-19.

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Opposition No. 91236066

of pleaded registrations), exhibits attached to notices of opposition are not evidence

on behalf of the party submitting them; if that party wants to rely on them it must

identify and properly introduce the materials during its assigned testimony period.

Trademark Rule 2.122(c). See also TBMP §§ 317 and 704.05 (“Exhibits to Pleadings”).

Accordingly, the exhibits attached to Notice of Opposition are not considered of

record.

In sum, and as Applicant correctly pointed out in its trial brief,8 the record is

devoid of any properly submitted evidence from the parties and consists solely of the

pleadings and the involved application files.

II. Opposer’s Failure to Prove Standing

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

8 10 TTABVUE 8.

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Opposition No. 91236066

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.,

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.”).

As discussed supra, Opposer failed to properly introduce any evidence or

testimony. We further find that the pleadings, with a particular emphasis on

Applicant’s Answer and any admissions made therein, does not overcome Opposer’s

failure to provide any evidence regarding its standing, let alone the merits of grounds

for opposition or even that Opposer has common law rights in a trademark. TBMP §

704.06(a) (“statements in pleadings may have evidentiary value as admissions

against interest by the party that made them”). To be clear, we have carefully

reviewed the pleadings and there are no allegations to which Applicant has admitted

that can be construed as conferring standing upon Opposer.

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Opposition No. 91236066

Because Opposer has not demonstrated with evidence that it 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,” it has failed to prove its standing to oppose

registration of Applicant’s marks. Empresa Cubana, 111 USPQ2d at 1062; Ritchie v.

Simpson, 50 USPQ2d at 1026. See generally TBMP § 309.03(b). Accordingly, we

dismiss Opposer’s claims on this basis.9 See Lumiere Prods., Inc. v. Int’l Tel. & Tel.

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

Decision: The opposition is dismissed.

9We need not and do not discuss or otherwise reach the merits of the asserted claims of
dilution and likelihood of confusion.

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