Wendel v. De Roblin, Inc.

This Opinion is Not a
Precedent of the TTAB

Mailed: July 3, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Bill Wendel

v.

De Roblin, Inc.

_____

Opposition No. 91219899
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Bill Wendel, pro se.

Victor Wu, Law Offices of Victor Wu, for De Roblin, Inc.

_____

Before Taylor, Goodman and Hudis,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:

De Roblin, Inc. (“Applicant”) filed an application to register the mark CARNAVAL

(standard characters) for “acrylic nail art powder” in International Class 3.1 Bill

1 Application Serial No. 85942402 was filed on May 24, 2013 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging a date of first use and first use in commerce of
2008. The English translation of “CARNAVAL” in the mark is “CARNIVAL.”
Opposition No. 91219899

Wendel (“Opposer”) opposes registration of Applicant’s CARNAVAL mark on the

ground of priority and likelihood of confusion pursuant to Trademark Act Section

2(d), 15 U.S.C. § 1052(d).2 Opposer pleaded ownership of the registered mark

CARNAVAL, Registration No. 1601738, for Class 3 goods which “include body

powder.” Opposer did not include with his notice of opposition a certified copy of his

pleaded registration showing status and title nor did he include a current printout of

the status and title of the registration from the electronic database records of the

United States Patent and Trademark Office.3

I. The Record

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

37 C.F.R. § 2.122(b), the file of the subject application. Neither party submitted any

evidence or testimony during their assigned testimony periods. Only Opposer filed a

brief. Even though Applicant filed no testimony, evidence, or a brief, Opposer, as

plaintiff in this proceeding, must nonetheless prove his standing, trademark priority

References to the briefs and the record refer to the Board’s TTABVUE docket system. The
number preceding “TTABVUE” corresponds to the docket entry number; the number(s)
following “TTABVUE” refer to the page number(s) of that particular docket entry.
2 Opposer, in filing the opposition, identified the “entity” type on the ESTTA cover sheet as
“individual.” 1 TTABVUE.
3 The Board does not take judicial notice of a party’s registration. See Corporate Fitness
Programs Inc. v. Weider Health and Fitness Inc., 2 USPQ2d 1682, 1683-84 n.3 (TTAB 1987)
(“The Board does not take judicial notice of registrations that reside in the Patent and
Trademark Office.”). See also Prakash Melwani v. Allegiance Corporation, 97 USPQ2d 1537,
1540 (TTAB 2010) (“The fact that completion of the ESTTA filing form results in the creation
of electronic records in the Board’s TTABVUE system and that such records contain links to
information on a pleaded registration … is insufficient to make the pleaded registrations of
record.”).

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Opposition No. 91219899

and likelihood of confusion by a preponderance of the evidence. Weider Publn’s, LLC

v. D & D Beauty Care Co., LLC, 109 USPQ2d 1347, 1353 (TTAB 2014).

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. TRADEMARK BOARD MANUAL OF

PROCEDURE SECTION (TBMP) Section 704.06(a) (2019) (“statements in pleadings may

have evidentiary value as admissions against interest by the party that made them”).

This review includes whether Applicant made any admissions regarding the title and

status of the pleaded CARNAVAL registration such that the Board will deem the

registration of record. See TBMP Section 704.03(b)(1)(A). We note that statements in

Opposer’s brief have no evidentiary value, except to the extent that they “may have

probative value as admissions against interest” by Opposer. See e.g., Saul Zaentz Co.

v. Bumb, 95 USPQ2d 1723, 1725 n.7 (TTAB 2010); TBMP Section 704.06(b).

Applicant admitted the following allegations (Paragraphs 2 and 3) in the notice of

opposition:4

My mark Carnaval registration number 1601738 is registered in Class
03 the same class De Roblin seeks to register.

My mark Carnaval has goods and services listed which include body
POWDER and De Roblin Inc. lists acrylic nail art POWDER.

On the other hand, Opposer made a statement in his brief that has probative value

as an admission against interest.5

4 1 TTAVUE 3; 4 TTABVUE 2.
5 8 TTABVUE 2.

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Opposition No. 91219899

The mark Carnaval registration number 1601738 is registered in class
003 on June 19, 1990 is owned by Bill Wendel and Amy VanCalsem
Wendel.

II. Applicable Law

A threshold issue in every inter partes case is the plaintiff’s standing to challenge

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

USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish standing in an opposition, a

plaintiff must show both a real interest in the proceeding as well as a reasonable

belief of damage. Id. at 1062 (citation omitted).

To prevail on the likelihood of confusion ground under Section 2(d) of the

Trademark Act, it is Opposer’s burden to prove by a preponderance of the evidence

both priority of use, or prior registration, and likelihood of confusion. Cunningham v.

Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000).

III. Discussion

Applicant admitted that Bill Wendel, an individual, is the owner of a valid and

subsisting registration, Registration No. 1601738, for goods that include Class 3 body

powder. However, Opposer’s admission in his brief creates a discrepancy and calls

into question his sole ownership of Registration No. 1601738, because Opposer

admits that he is only a co-owner. When a mark is owned by two joint owners, one

owner cannot be considered the sole owner of the mark. Cf. Conolty v. Conolty

O’Connor NYC LLC, 111 USPQ2d 1302, 1309 (TTAB 2014) (finding that because

applicant and opposer are “partners,” applicant is not the sole owner of the mark and

therefore the application is void).

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Opposition No. 91219899

There is no evidence in the record as to the nature of the ownership arrangement

(e.g., partnership, joint venture etc.) between Bill Wendel and Amy Van Calsem

Wendel nor is there any evidence as to whether Bill Wendel, in his individual

capacity, has the right to bring this opposition on behalf of the other co-owner. Absent

any other evidence, we find Applicant’s admissions to paragraphs 2 and 3 of the notice

of opposition insufficient to confer standing on Opposer. See Ritchie v. Simpson, 170

F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999) (“in order to have standing–the

opposer must have a ‘real interest’ in the proceedings and must have a ‘reasonable’

basis for his belief of damage”); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d

1024, 213 USPQ 185, 189 (CCPA 1982) (“The facts regarding standing … must be

affirmatively proved. Accordingly, [plaintiff] is not entitled to standing solely because

of the allegations in its [pleading].”).6 Accordingly, Opposer has not established his

standing and the opposition must be dismissed.

We also find that Opposer is not entitled to rely on any presumptions that would

be accorded the owner of Registration No. 1601738 under Trademark Act Section 7(b),

15 U.S.C. § 1057(b) (i.e., that registrant is the owner of the registered mark, that the

registration is valid and subsisting, and that the registrant has the exclusive right to

use the subject mark in commerce). This is because, by Opposer’s own admission in

his brief, he is not the sole owner of the pleaded registration and thus cannot rely on

this registration for purposes of trademark priority. See TBMP Section

6 Opposer cannot rely on common law use pleaded in the notice of opposition to confer
standing because Opposer has presented no evidence of his use of the CARNAVAL mark, and
Applicant has made no admissions as to Opposer’s prior use.

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Opposition No. 91219899

704.03(b)(1)(B) (“[T]he § 7(b) presumptions accorded to a registration on the Principal

Register accrue only to the benefit of the owner of the registration, and hence come

into play only when the registration is made of record by its owner.”); see also Fuld

Bros., Inc. v. Carpet Technical Service Institute, Inc., 174 USPQ 473, 475-76 (TTAB

1972) (“Notwithstanding the relationship of Associated Just Distributors, Inc. to

petitioner, it is nevertheless a separate legal entity, it is the record owner of the

registration, and, in view of the express language of Section 5 of the Statute, only the

registrant can rely upon the prima facie presumptions afforded a registration under

Section 7(b)”). Cf. Conolty v. Conolty O’Connor, 111 USPQ2d at 1309 (one individual

in a partnership is not considered the “owner” of a mark); Maybelline Company v.

Matney, 194 USPQ 438, 440 (TTAB 1977) (opposer could not rely on a pleaded

registration where it failed to prove that the pleaded registration was still existing or

that the title presently resides in opposer).

To prevail upon his Section 2(d) claim, Opposer, being unable to rely on the

pleaded registration, would have had to prove priority of use. See Chemical New York

Corp. v. Conmar Form Systems, Inc., 1 USPQ2d 1139, 1142 (TTAB 1986). But, as

stated, there is no evidence in the record nor admissions by Applicant of Opposer’s

prior use of CARNAVAL.

Accordingly, Opposer failed to prove two critical elements namely, standing and

trademark priority (whether by registration ownership or by use). Thus, Opposer

cannot prevail on his likelihood of confusion claim.

Decision: The opposition is dismissed.

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