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  • The purpose of the standing requirement, which is directed solely to the interest of the plaintiff, is to prevent litigation when there is no real controversy between the parties.
    • Michael J. McDermott v. San Francisco Women's Motorcycle Contingent, Opposition No. 91169211, (TTAB 2006).
      • The purpose of the standing requirement, which is directed solely to the interest of the plaintiff, is to prevent litigation when there is no real controversy between the parties. Thus, as a threshold matter, the Board will analyze whether opposer has sufficiently pleaded his standing to bring the instant opposition. However, before launching into our discussion of standing, we will briefly review whether the notice of opposition states a proper ground for opposition.
  • Standing requirement in an opposition.
    • Michael J. McDermott v. San Francisco Women's Motorcycle Contingent, Opposition No. 91169211, (TTAB 2006).
      • In the case of a notice of opposition, the standing requirement has its basis in Section 13 of the Trademark Act which provides in relevant part that "[a]ny person who believes that he would be damaged by the registration of a mark upon the principal register, . . . may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor...." An opposer must also satisfy two judicially-created requirements in order to have standing: the opposer (1) must have a "real interest" in the proceedings, and (2) must have a "reasonable" basis for his belief of damage. See e.g., Ritchie, 50 USPQ2d at 1025.
    • Michael J. McDermott v. San Francisco Women's Motorcycle Contingent, Opposition No. 91169211, (TTAB 2006).
      • As to the "real interest" requirement, the court interpreted this prong as meaning that the opposer must plead "a direct and personal stake in the outcome of the opposition." Ritchie, 50 USPQ2d at 1026. In reaching that conclusion, the court stated the following: "In no case has this court ever held that one must have a specific commercial interest, not shared by the general public, in order to have standing as an opposer. Nor have we ever held that being a member of a group with many members is itself disqualifying. The crux of the matter is not how many others share one's belief that one will be damaged by the registration, but whether that belief is reasonable and reflects a real interest in the issue." Id. at 1027.
    • Marilyn Carano a/k/a Lynn Carano d/b/a Lynn Carano Graphics v. Vina Concha Y Toro S.A., Opposition No. 125,728, (TTAB 2003).
      • Insofar as opposer has alleged that she and not applicant is the proper owner of the design portion of the mark, the parties do not dispute that the Notice of Opposition sets forth facts which, if proved, would constitute standing to oppose. Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752 (Fed. Cir. 1998).
  • The party petitioning to cancel a federally registered trademark must plead and prove that it has standing and that there is a valid ground for the cancellation of the registration.
    • Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007).
      • Furthermore, the party petitioning to cancel a federally registered trademark must plead and prove that it has standing and that there is a valid ground for the cancellation of the registration. Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998) ("Section 14 has been interpreted as requiring a cancellation petitioner to show (1) that it possesses standing to challenge the continued presence on the register of the subject registration and (2) that there is a valid ground why the registrant is not entitled under law to maintain the registration") [internal quotation marks omitted].
    • Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007).
      • Petitioner, through its testimony and related exhibits, has established with respect to its claim of priority of use and likelihood of confusion that it uses the mark DEVONSHIRE in connection with toilets and lavatories. There is thus no issue with respect to petitioner's having proven its standing to bring the petition for cancellation.
  • Standing is liberally construed and if not admitted or conceded requires only proof that the party seeking cancellation or opposing registration is likely to be damaged by the registration.
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • "Standing is the more liberal of the two elements and [if not admitted or conceded] requires only [proof] that the party seeking cancellation [or opposing registration] is likely to be damaged by the registration." Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).13 FOOTNOTE 13 "Young explains that the "linguistic and functional similarities between the opposition and cancellation provisions of the Lanham Act mandate" consistent construction. Young, 47 USPQ2d at 1755. Thus, the Cunningham statement that standing is the more liberal of the two main elements a plaintiff must plead is equally applicable to oppositions."
  • Case Finding: Test to assert standing.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • In the recently decided case of Ritchie v. Simpson, supra, the Federal Circuit discussed at some length the elements necessary to assert an allegation of standing, i.e., a belief that the plaintiff will suffer some kind of damage if the mark is registered; a real interest in the proceedings; and a reasonable basis for his belief of damage. The Ritchie case is different from the one presently before us, in that it involved a motion to dismiss the claim of scandalousness in view of a lack of a sufficient pleading of standing. In deciding such a motion, the Court had to accept as true all well-pled and material allegations of the complaint, and construe the complaint in favor of the complaining party. See Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987). However, the Court pointed out that a plaintiff's "allegations alone do not conclusively establish standing. If challenged, the facts alleged which establish standing are part of the [plaintiff's] case, and, as we said in Lipton [Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982)], must be affirmatively proved." Ritchie at 50 USPQ2d 1029. Thus, the inquiry in the present case is whether opposer Clement has proven his standing, not whether his allegations of standing in the notice of opposition would be sufficient for the proceeding to go forward to trial.
  • Opposer can establish standing by providing status and title copies of pleaded registrations of record.
    • Apple Computer v. TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007).
      • Opposer has submitted copies of its pleaded registrations, prepared by the USPTO, showing the current title to its registrations for its ITUNES and ITUNES MUSIC STORE marks and that such registrations are valid and subsisting. This proof, in addition to establishing that there are no genuine issues of material fact regarding opposer's standing, removes the issue of priority from this case. See King Candy Company v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • Because opposer has properly made its six pleaded registrations of record, opposer has established its standing to oppose registration of applicant's mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • Because petitioner has properly made its pleaded registrations of record, petitioner has established its standing to cancel respondent's registration. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
    • Knight Textile Corporation v. Jones Investment Co., Inc., Opposition No. 91153852, (TTAB 2005).
      • Because opposer has made status and title copies of its pleaded registration of record, we find that opposer has established its standing to oppose. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
    • Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003).
      • Opposer's standing is established by the status and title copies of its pleaded registrations. See Cunningham v. Laser Golf Corp., supra.
  • Opposer can establish standing by submitting copies of its registrations and testimony regarding their use of the marks.
    • Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007)
      • In view of the submission of copies of its pleaded registrations, as well as the testimony regarding opposer's use of the marks BOD MAN and BOD, opposer has established its standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000).
    • DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005).
      • Without doubt, opposer's two registrations and the testimony about its activities establish that opposer has standing to bring this opposition. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000).
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • Opposer has submitted copies of its registrations for BLUE MAN GROUP, and has also shown that it renders musical/comedy entertainment services under the name BLUE MAN GROUP. Therefore, it has established its standing.
  • Opposer can establish standing by making its registrations of record and that the likelihood of confusion claim is not frivolous.
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007)
      • We find that opposer has established its standing to oppose registration of applicant's mark. In particular, opposer has properly made its pleaded registration of record, and opposer's likelihood of confusion claim is not frivolous. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Because opposer has properly made its pleaded registrations of record, and because opposer's likelihood of confusion claim is not frivolous, we find that opposer has established its standing to oppose registration of applicant's mark. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); see also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);
    • Baseball America, Inc. v. Powerplay Sports, Ltd., Opposition No. 91120166, (TTAB 2004).
      • Opposer has established that it is the owner of a valid and subsisting registration of the mark BASEBALL AMERICA. See supra at footnote 5. In view thereof, and because opposer has asserted a non-frivolous likelihood of confusion claim, we find that opposer has established its standing to oppose registration of applicant's marks in both opposition proceedings. See, e.g., Lipton Industries, Inc. v. Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). FOOTNOTE 5 "Issued July 2, 1985. Affidavits under Sections 8 and 15 accepted and acknowledged. The registration was introduced as an exhibit to the testimony deposition of opposer's witness Lee Folger, who testified that the registration is extant and owned by opposer (via assignment). (Folger Depo. at page 22, Exhibit Nos. 3 and 4.)"
  • Opposer can establish standing by submitting submitted a notice of reliance upon certified status and title copies of its pleaded registrations.
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • Because opposer has submitted a notice of reliance upon certified status and title copies of its pleaded registrations, we find that opposer has established its standing to bring the opposition. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ 1842 (Fed. Cir. 2000); Lipton Industries, Inc. v Ralston Purina Co., 670 F.2d 1074, 213 USPQ 185 (CCPA 1982).
  • Proof of ownership of licensed use of registered marks establishes opposer's standing to oppose.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • Because of opposers' proof of ownership or licensed use of the registered marks for BEARS and CHICAGO BEARS, we find that opposers each have established their standing to oppose. See Chemical New York Corp. v. Conmar Form Systems, Inc., 1 USPQ2d 1139, 1142 (TTAB 1986) ("It is obvious that opposer Chemical New York, as owner of the ‘PRONTO' marks and registrations, and opposer Chemical Bank, as licensee and user of the marks, have such a ‘real interest' in this proceeding"). See also William & Scott Co. v. Earl's Restaurants Ltd., 30 USPQ2d 1870, 1873 n.2 (TTAB 1994).
  • Registration for a mark can be made of record by virtue of the counterclaim brought by applicant.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • The registration for the word mark is of record by virtue of the counterclaim brought by applicant.26 See Trademark Rule 2.122(b). Cf. Allied Mills, Inc. v. Kal Kan Foods, Inc., 203 USPQ 390, 396 (TTAB 1979) ("if the counterclaim fails, opposer's registered mark is entitled to all of the presumptions of §7(b) of the statute" including ownership of the mark and validity of the registration). Therefore, opposer's standing has been established, and its priority with respect to these registered marks is not in issue. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
  • Applicant can concede that opposer has standing and priority of use.
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • Applicant has conceded that opposer has standing and priority of use, and we agree that the record establishes this.
    • Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006).
      • With regard to whether petitioner has standing to maintain this proceeding, we note that respondent has not challenged petitioner's standing to cancel the involved registration. We find that the evidence of petitioner's use of the WIRE TRAK mark and the fact that respondent's involved mark was cited as a bar to registration of petitioner's WIRE TRAK and design mark as set forth in petitioner's pending application is sufficient to establish petitioner's standing in this case. No genuine issue of material fact exists on this issue.
    • DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005).
      • Moreover, applicant has not contested opposer's standing.
  • Applicant's admission that opposer owns its pleaded trademark registrations establishes opposer's standing.
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007)
      • As an initial matter, applicants have admitted in their answer that opposer owns its pleaded registration. Thus, opposer's standing, that is, its real interest in this proceeding, has been established. See Lipton Industries Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007)
      • As an initial matter, respondent has admitted in its responses to petitioner's first request for admissions that petitioner owns, uses, and has not abandoned its pleaded marks. Thus, petitioner's standing, that is, its real interest in this proceeding, has been established. See Lipton Industries Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
  • Opposer can establish standing where parties stipulate to status and title of opposer's registrations and applications and if the opposer's likelihood of confusion claim is not frivolous.
    • Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006).
      • Because the parties have stipulated to the status and title of opposer's pleaded registrations and applications, and because opposer's likelihood of confusion claim is not frivolous, we find that opposer has established its standing to oppose registration of applicant's mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
  • Opposer's prospective interest in one day using the proposed mark, is a sufficient pleading of standing.
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • Opposer's prospective interest in one day using the proposed mark, is a sufficient pleading of standing. Cf. Windsurfing International Inc. v. AMF Inc., 828 F.2d 755, 4 USPQ2d 1052 (Fed. Cir. 1987) (The Federal Circuit distinguishes USPTO proceedings from declaratory judgment actions in the federal district courts, explaining that those courts do not issue advisory opinions and mere interest alone by a competitor does not establish standing to initiate a declaratory judgment action).
  • Opposer has standing where its registrations have been made of record and has shown that it is not a mere intermeddler.
    • Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007)
      • Opposer has established its standing to oppose registration of the involved application. In particular, opposer has properly made its pleaded registrations of record, and opposer further has shown that it is not a mere intermeddler. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Petitioner has established its standing to seek cancellation of respondent's registration. In particular, petitioner has properly made its pleaded registrations of record, and petitioner further has shown that it is not a mere intermeddler. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • Because opposer has properly made its pleaded registrations of record, and further has shown, by its use and registration of marks that are at least arguably similar to applicant's mark that it is not a mere intermeddler, we find that opposer has established its standing to oppose registration of applicant's mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
  • Opposer can demonstrate it is not a mere intermeddler with evidence of ownership of its registrations and marks containing the term in dispute.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • Opposer's evidence of its ownership of its "Gulp" registrations and of its use of various marks containing the word "Gulp" shows that opposer is not a mere intermeddler. Therefore, opposer has established its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
  • Opposer has standing where it is engaged in the manufacture and/or sale of the same or related goods and that the product in question be one that could be produced in the normal expansion of opposer's business.
    • Target Brands, Inc. v. Shaun N.G. Hughes, Opposition No. 91163556, (TTAB 2007)
      • It is recognized that a party need not be a manufacturer or seller of the goods in connection with which a descriptive, misdescriptive, or merely ornamental designation is used in order to object to the registration thereof. It is sufficient that the party objecting to such registration be engaged in the manufacture and/or sale of the same or related goods and that the product in question be one that could be produced in the normal expansion of that person's business. If the designation in question is found to be merely descriptive, merely ornamental or the like, damage is presumed since a registration thereof with the statutory presumptions afforded the registration would be inconsistent with the right of another person to use these designations or designs in connection with the same or similar goods as it would have the right to do when and if it so chooses. Thus, opposer as a competitor of applicant is a proper party to challenge applicant's right of registration. Federal Glass Co. v. Corning Glass Works, 162 USPQ 279, 282-83 (TTAB 1969). See also 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §20:11 (4th ed. 2007) ("Standing to oppose is presumed when the mark sought to be registered is allegedly descriptive of the goods and the opposer is one who has a sufficient interest in using the descriptive term in his business").
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • Opposer's evidence of its use, by itself or through its subsidiaries, of various colors on coated abrasives establishes its standing to oppose this application. "It is recognized that a party need not be a manufacturer or seller of the goods in connection with which a descriptive, misdescriptive, or merely ornamental designation is used in order to object to the registration thereof. It is sufficient that the party objecting to such registration be engaged in the manufacture and/or sale of the same or related goods and that the product in question be one that could be produced in the normal expansion of that person's business. If the designation in question is found to be merely descriptive, merely ornamental or the like, damage is presumed since a registration thereof with the statutory presumptions afforded the registration would be inconsistent with the right of another person to use these designations or designs in connection with the same or similar goods as it would have the right to do when and if it so chooses… Thus, opposer as a competitor of applicant is a proper party to challenge applicant's right of registration." Federal Glass Co. v. Corning Glass Works, 162 USPQ 279, 282- 83 (TTAB 1969). See also 3 McCarthy on Trademarks and Unfair Competition, § 20:11 (4th ed. 2007) ("Standing to oppose is presumed when the mark sought to be registered is allegedly descriptive of the goods and the opposer is one who has a sufficient interest in using the descriptive term in his business").
    • Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003).
      • To establish its standing to assert a mere descriptiveness or genericness ground of opposition or cancellation, "a plaintiff need only show that it is engaged in the manufacture or sale of the same or related goods as those listed in the defendant's involved application or registration and that the product in question is one which could be produced in the normal expansion of plaintiff's business; that is, that plaintiff has a real interest in the proceeding because it is one who has a present or prospective right to use the term descriptively [or generically] in its business." Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003, 1010 (TTAB 1984). "All that is necessary is that petitioner be in a position to have a right to use" the mark in question. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §20:50 (4th ed. 2001). See also No Nonsense Fashions, Inc. v. Consolidated Foods Corporation, supra, and Southwire Company v. Kaiser Aluminum & Chemical Corporation, 196 USPQ 566 (TTAB 1977). This test logically also applies to the question of whether petitioner has standing to assert its claim that respondent's mark has been abandoned (and therefore is in the public domain) due to its loss of significance as a mark.
    • Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003).
      • It appears that petitioner's claim to standing is based entirely on the fact that Mr. Kaser has an idea for a product, which may or may not ever be brought to market. He testified that the product is "in development," but we cannot determine from this record what that means, if it means anything. All we know is that the product is "not close" to being ready for market, and that petitioner has no time frame for completing the product's development and introducing it into the marketplace. On this record, we cannot conclude that petitioner is (as McCarthy says) "in a position" to use (or have the right to use) the Bell symbol in its business, or that petitioner is engaged in any "business" at all which would give it a real interest in the outcome of this proceeding. In short, although the threshold for determining standing generally is quite low, we find that petitioner has failed to clear it in this case.
  • Opposer has standing by alleging and showing that it is a direct competitor of applicant and the goods are those which are also the subject matter of the marks applicant claims here.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Standing is not an issue in this case. Opposer has alleged and shown that it is a direct competitor of applicant in the sale of closure systems, the goods which are also the subject matter of the marks applicant claims here. See generally Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed. Cir. 1987).
  • Petitioner has standing to bring a cancellation proceeding where his mark was refused based on liklihood of confusion with respondent's previously registered mark.
    • Tri-Star Marketing, LLC v. Nino Franco Spumanti S.R.L., Cancellation No. 92043953, (TTAB 2007)
      • As a threshold matter, petitioner has standing to bring the petition for cancellation based on the fact that its application to register the mark VINO RUSTICO was refused registration by the Office under Section 2(d) based on a likelihood of confusion with respondent's previously registered mark. Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 1185, 189 (CCPA 1982).
  • Petitioner's allegation of alleged ownership of registered marks and its belief of resulting damage from concurrent use of its marks and registrants marks was sufficient to demonstrate standing because it shows that petitioner has a "real interest" and a "direct and personal stake" in the outcome of the proceeding.
    • Otto International, Inc. v. Otto Kern GMBH, Cancellation No. 92046167, (TTAB 2007)
      • Standing Petitioner has alleged ownership of three registrations for the marks OTTO and OTTO and Design,3 and its belief that damage will result from "any concurrent use of petitioner's marks and that of registrant." The ownership of these registrations would show that petitioners have a "real interest" and a "direct and personal stake" in the outcome of the proceeding. Ritchie, 50 USPQ2d at 1025. (Fed. Cir. 1999). Accordingly, we find that petitioner has sufficiently alleged its standing to maintain this cancellation proceeding.
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • We turn now to the merits of opposer's claims. Initially, we find that opposer has established its standing to bring this proceeding. Opposer has presented evidence of its ownership of its various ROAD RUNNER registrations and of its use of its ROAD RUNNER marks on a variety of goods, as well as evidence sufficient to show that its likelihood of confusion claim is not wholly without merit. In view thereof, we find that opposer has established that it has a real interest in the outcome of this proceeding and that it has a reasonable basis for its belief that it would be damaged by registration of applicant's mark. Accordingly, we find that opposer has standing to bring this opposition. See Trademark Act Section 13, 15 U.S.C. §1063; Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999).
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • First, we note that with regard to the threshold inquiry of Starbucks' standing in this opposition proceeding, opposers have alleged and proven at trial a real commercial interest in the STARBUCKS and STARBUCKS COFFEE marks, as well as a reasonable basis for the belief that opposers would be damaged by the registration of applicant's LESSBUCKS mark. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999).
    • Seculus Da Amazonia S/A v. Toyota Jidosha Kabushiki Kaisha t/a/ Toyota Motor Corporation, Opposition No. 152,062, (TTAB 2003).
      • Turning first to the question of standing, we find that, applicant's assertions to the contrary notwithstanding, opposer has pleaded a real interest in the outcome of this proceeding. Specifically, opposer alleges that, as a consequence of the mark in application Serial No. 75/918,983, it has experienced damage in the form of unlawful seizure by the U.S. Customs Service and potential forfeiture of its merchandise bearing its LEXUS and design mark; and that the mark in any registration resulting from application Serial No. 75/918,983 may be the basis for lawful seizure by the U.S. Customs Service of opposer's goods bearing its LEXUS and design mark, to the further damage of opposer. Thus, opposer has sufficiently alleged that it is not a mere intermeddler, but rather has a real interest in this proceeding and a reasonable basis for its belief of damage. See Section 13 of the Act (15 U.S.C. §1063). See also Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987); and Lipton Industries, supra.
  • Petitioner who is an heir and a member on a committee to defend the rights of a famous individual has standing to cancel a mark which allegedly falsely suggests a connection with the famous individual.
    • ASSOCIATION POUR LA DEFENSE ET LA PROMOTION DE L'OEUVRE DE MARC CHAGALL dite COMITE MARC CHAGALL v. Bondarchuk, Cancellation No. 92042323, (TTAB 2007)
      • Petitioner has standing to bring this proceeding. Ms. Meyer testifies that Marc Chagall died in 1985, that she is the granddaughter of and one of the heirs of Marc Chagall, that she is a member of the petitioner committee and that the purpose of the petitioner committee is to defend the rights and the work of the painter Marc Chagall. Ms. Meyer confirms that, "…the committee's rights derived through inheritance through the artist Marc Chagall." Meyer testimony at 5. This testimony, together with petitioner's claim that the mark in the registration petitioner seeks to cancel falsely suggests a connection with Marc Chagall, establishes petitioner's standing. See generally Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed. Cir. 1987).
  • To establish standing in a proceeding for disparagement or brining into contempt, the court looks to the opposer's own assessment of how he believes he is damaged, as set forth in the notice of opposition, and the evidence which he has submitted in support thereof.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • In considering the issue of standing, we do not reach the question of whether, in a proceeding brought on the grounds of disparagement or bringing into contempt, a person who is not a member of the group alleged to be disparaged or brought into contempt can ever establish standing to object to a mark. Rather, we look only to Mr. Clement's own assessment of how he believes he is damaged, as set forth in paragraphs 38 and 39 of the notice of opposition, and the evidence which he has submitted in support thereof.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • Clearly opposer Clement is not a member of the black or other minority community; the allegations in the notice of opposition state just the opposite. The only argument with respect to Mr. Clement's interest is the mere statement in the brief that he would suffer if there were a worsening in relations between the majority and the minority community. However, he has not provided any evidence in support of this claim.
  • A counterclaim plaintiff need not allege its standing because said standing is inherent.
    • CONSOLIDATED: Opposition No. 91161028, FINANZ ST. HONORE, B.V. v. JOHNSON & JOHNSON; Cancellation No. 92044444, JOHNSON & JOHNSON v. FINANZ ST. HONORE, B.V. (TTAB 2007)
      • As a counterclaim plaintiff, Johnson need not allege its standing to challenge the pleaded registrations because its standing is inherent. Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492 (TTAB 2005) ("Applicant, by virtue of its position as defendant in the opposition, has standing to seek cancellation of the pleaded registrations," citing Ohio State University v. Ohio University, 51 USPQ2d 1289, 1293 (TTAB 1999)); Bankamerica Corp. v. Invest America, 5 USPQ2d 1076, 1078 (TTAB 1987) (defendant seeking to cancel pleaded registration on ground of descriptiveness or genericness in an opposition based on likelihood of confusion need not allege that it has an interest in using the term sought to be cancelled); M. Aron Corporation v. Remington Products, Inc., 222 USPQ 93, 95 (TTAB 1984) (counterclaimant clearly has personal stake in the controversy); Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852, 856 (TTAB 1981) (damage assumed, and with properly pleaded ground is sufficient to place validity of registration in issue); and General Mills, Inc. v. Natures Way Products, 202 USPQ 840, 841 (TTAB 1979); see also TBMP § 313.03 (2d ed. rev. 2004).
  • Pending applications are evidence only that applications were filed on a certain date; and not evidence of use of the marks.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • Thus, opposer's standing has been established, and its priority with respect to the registered marks for the goods and/or services identified therein is not in issue.8 King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).

        FOOTNOTE 8 "Opposer submitted TESS and TARR records of certain of its pleaded applications with its notice of reliance. The Office records now show that all of those applications, except Serial No. 74468405 for STARTER S and design for "luggage; namely, back packs, knapsacks, all purpose sport bags, duffel bags, gym and novelty tote bags" in Class 18 and Serial No. 74428320 for RUGGED TERRAIN S STARTER and design for wearing apparel in Class 25, have been abandoned. In any event, pending applications are evidence only that the applications were filed on a certain date. They are not evidence of use of the marks. See Viking Boat Co. v. Viking Camper Supply, Inc., 191 USPQ 297 (TTAB 1976). Further, applicant's admissions in its answers of opposer's ownership of the pleaded applications and opposer's "ownership and status" of application Serial No. 74468405 are not admissions that the marks in the applications are in use."

  • Standing can be established to challenge an application by virtue of common law rights arising from use of the mark.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • We also find that opposer, by virtue of its common law rights arising from use of the mark ARDEN B on clothing and in connection with retail clothing stores, has established a real interest or standing to challenge the involved application. Contrary to applicant's contention, no more is necessary for standing. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 1028, 213 USPQ 185 (CCPA 1982).
  • Lack of standing is not an affirmative defense; rather, standing is an essential element of petitioner's case which, if it is not proved at trial, defeats petitioner's claim.
    • Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003).
      • Contrary to petitioner's argument, respondent did not waive its right to challenge petitioner's standing by waiting until its brief on the case to do so. "Lack of standing" is not an affirmative defense; rather, standing is an essential element of petitioner's case which, if it is not proved at trial, defeats petitioner's claim. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); No Nonsense Fashions, Inc. v. Consolidated Foods Corporation, 226 USPQ 502 (TTAB 1985).8 FOOTNOTE 8""Lack of standing" might be the basis for a defendant's motion to dismiss for failure to state a claim, under Fed. R. Civ. P. 12(b)(6), but the "defense" of failure to state a claim is not one which is waived if it is not asserted by motion. See Fed. R. Civ. P. 12(h)(2), which is applicable to Board proceedings under Trademark Rule 2.116(a), 37 C.F.R. 2.116(a)."
  • The purpose in requiring standing is to prevent litigation where there is no real controversy between the parties, where a plaintiff, petitioner or opposer, is no more than an intermeddler.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • "The purpose in requiring standing is to prevent litigation where there is no real controversy between the parties, where a plaintiff, petitioner or opposer, is no more than an intermeddler." Id.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • "The purpose in requiring standing is to prevent litigation where there is no real controversy between the parties, where a plaintiff, petitioner or opposer, is no more than an intermeddler." Id.
  • To establish a reasonable basis for a belief that one is damaged by the mark sought to be registered, a plaintiff may assert a likelihood of confusion which is not wholly without merit.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • To establish a reasonable basis for a belief that one is damaged by the mark sought to be registered, a plaintiff may assert a likelihood of confusion which is not wholly without merit. Id.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • To establish a reasonable basis for a belief that one is damaged by the mark sought to be registered, a plaintiff may assert a likelihood of confusion which is not wholly without merit. Id.
  • A party has standing to oppose or petition to cancel if it can demonstrate a real interest in the proceeding.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • Thus, a party has standing to oppose or petition to cancel if it can demonstrate a real interest in the proceeding. Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • Thus, a party has standing to oppose or petition to cancel if it can demonstrate a real interest in the proceeding. Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
  • Any person who believes that he would be damaged by the registration of a mark upon the principal register may, file an opposition stating the grounds therefor.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • "Any person who believes that he would be damaged by the registration of a mark upon the principal register . . . may, file an opposition . . . stating the grounds therefor." Section 13 of the Trademark Act of 1946, 15 U.S.C. §1063(a). See also Section 14 of the Trademark Act of 1946, 15 U.S.C. §1064 in regard to cancellation proceedings.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • "Any person who believes that he would be damaged by the registration of a mark upon the principal register . . . may, file an opposition . . . stating the grounds therefor." Section 13 of the Trademark Act of 1946, 15 U.S.C. §1063(a). See also Section 14 of the Trademark Act of 1946, 15 U.S.C. §1064 in regard to cancellation proceedings.
  • A party may establish its standing to oppose by showing that it has a "real interest" in the case, that is, a direct and personal stake in the outcome of the opposition.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • A party may establish its standing to oppose by showing that it has a "real interest" in the case, that is, a direct and personal stake in the outcome of the opposition. See Ritchie v. Simpson, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999); and Lipton Industries, Inc. v. Ralston Purina Co., 213 USPQ 185, 189 (CCPA 1982).
  • Although opposer neither submitted status and title copies of its pleaded registrations nor an affidavit or declaration in support of its allegations of use of its mark, there is other evidence establishing opposer's standing.
    • Honda Motor Co., Ltd. v. Friedrich Winkelmann, Opposition No. 91170552 (TTAB 2009)
      • At the outset, we find that there is no genuine issue of material fact concerning opposer's standing to be heard on its claim. Although opposer neither submitted status and title copies of its pleaded registrations of its CIVIC mark nor an affidavit or declaration in support of its allegations of use of its CIVIC mark, there is other evidence establishing opposer's standing. The record includes applicant's statement that "Honda uses CIVIC only on subcompact automobiles" and "applicant's vehicles may compete with Honda vehicles." (Interrogatory No. 54 response). We find applicant's statements sufficient to establish that opposer has a real interest in the outcome of this proceeding; that is, opposer has a direct and personal stake in the outcome of the opposition. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 999); Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987).
  • As a threshold matter, petitioner must plead and prove that he has standing, in addition to proving that there is a valid ground for the cancellation of the registration.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • As a threshold matter, petitioner must plead and prove that she has standing, in addition to proving that there is a valid ground for the cancellation of the registration. Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998) ["Section 14 has been interpreted as requiring a cancellation petitioner to show (1) that it possesses standing to challenge the continued presence on the register of the subject registration and (2) that there is a valid ground why the registrant is not entitled under law to maintain the registration."]
  • At trial, opposer introduced a certified copy of its registered mark showing the current status of the registration and title in opposer's name. Applicant did not object to the certified copy of the registration. Under these circumstances, we deem the notice of opposition amended to include opposer's registration. Because opposer's registration is of record, it has established its standing to oppose the registration of applicant's mark.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • At trial, opposer introduced a certified copy of its registered mark showing the current status of the registration and title in opposer's name. Applicant did not object to the certified copy of the registration. Under these circumstances, we deem the notice of opposition amended to include opposer's registration. Because opposer's registration is of record, it has established its standing to oppose the registration of applicant's mark. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 213 USPQ 185, 189 (CCPA 1982).
  • Because opposer has properly made its pleaded registrations of record, opposer has established its standing.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Because opposer has properly made its pleaded registrations of record, opposer has established its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
  • But a copy of a pending application is admissible as an official record and could scarcely be objected to merely because it was introduced at trial.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • But a copy of a pending application is admissible as an official record and could scarcely be objected to merely because it was introduced at trial. See Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1957 (TTAB 2008) (copy of opposer's pending application admissible under notice of reliance as official record).
  • Case Finding: The suspension of a party's application, pending final disposition of the involved application of the opposite party also evidences a party's standing.
    • Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (TTAB 2010)
      • Moreover, the suspension of TxDOT's application, pending final disposition of the involved Tucker application also evidences TxDOT's standing.
  • Case Finding: Applicant's admission during pleading of opposer's ownership of its application to register the MOTOWN mark for various items of clothing did not make the resulting registration of record, and we deny each of opposer's requests that we take judicial notice of such registration.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • In sum, applicant's admission during pleading of opposer's ownership of its application to register the MOTOWN mark for various items of clothing did not make the resulting registration of record, and we deny each of opposer's requests that we take judicial notice of such registration.
  • Case Finding: In that case, which involved a false designation of geographic origin claim, the Court explicitly held that Section 211(b) does not apply to such a claim, because it is not based on any ownership claim to a confiscated mark.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • Indeed, in that case, which involved a false designation of geographic origin claim, the Court explicitly held that Section 211(b) does not apply to such a claim, because it is not based on any ownership claim to a confiscated mark.
  • Case Finding: In view of the foregoing, we find that opposer has a "real interest" in the outcome of this proceeding; that opposer, as a Cuban entity, is not restricted from pursuing this opposition; and that opposer has established its standing. So as to be perfectly clear, opposer has standing, although it does not and cannot engage in any business in the United States due to the embargo on Cuban goods.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • In view of the foregoing, we find that opposer has a "real interest" in the outcome of this proceeding; that opposer, as a Cuban entity, is not restricted from pursuing this opposition; and that opposer has established its standing. So as to be perfectly clear, opposer has standing, although it does not and cannot engage in any business in the United States due to the embargo on Cuban goods.
  • Case Finding: Notwithstanding that we therefore do not have this registration properly before us, because opposer properly made of record other registrations for the mark MOTOWN, it has established its standing to oppose the involved application.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • Notwithstanding that we therefore do not have this registration properly before us, because opposer properly made of record other registrations for the mark MOTOWN, it has established its standing to oppose the involved application. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); see also, Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
  • Case Finding: Opposer is entitled to rely upon the evidence it introduced to show use of the mark MOTOWN for clothing items.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • Moreover, opposer is entitled to rely upon the evidence it introduced to show use of the mark MOTOWN for clothing items. Corporate Fitness, supra, 2 USPQ2d at 1683-84 n.3.
  • Case Finding: Opposer's final effort to have the registration made of record was its submission, after completion of briefing, of the status and title copy that it had obtained from the USPTO, with a request that the TTAB take judicial notice of it. We deny the request for the reasons explained above in regard to the request for judicial notice included in opposer's brief.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • Opposer's final effort to have the registration made of record was its submission, after completion of briefing, of the status and title copy that it had obtained from the USPTO, with a request that the Board take judicial notice of it. We deny the request for the reasons explained above in regard to the request for judicial notice included in opposer's brief. See also, Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072, 1075 (TTAB 1990).
  • Case Finding: Though the opposer in Jean Patou also argued that its supplemental notice of reliance should be considered timely because it had requested an extension of its testimony period, the TTAB rejected this argument because the opposer had not requested a general extension but only an extension for the limited purpose of completing a testimony deposition.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • FOOTNOTE 13 "Though the opposer in Jean Patou also argued that its supplemental notice of reliance should be considered timely because it had requested an extension of its testimony period, the Board rejected this argument because the opposer had not requested a general extension but only an extension for the limited purpose of completing a testimony deposition. Jean Patou, 18 USPQ2d at 1075."
  • Case Finding: We find that such use of MITHRIL by opposer's licensee establishes that opposer has a real interest in the outcome of this proceeding and thus a reasonable basis for believing that it would be damaged by issuance of a federal trademark registration of the mark MITHRIL to applicant. We therefore find that opposer has established its standing to oppose registration of applicant's MITHRIL mark.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • We find that such use of MITHRIL by opposer's licensee establishes that opposer has a real interest in the outcome of this proceeding and thus a reasonable basis for believing that it would be damaged by issuance of a federal trademark registration of the mark MITHRIL to applicant. We therefore find that opposer has established its standing to oppose registration of applicant's MITHRIL mark.
  • Defendant has standing to cancel plaintiff's pleaded registration by virtue of being the defendant in the consolidated proceeding, and the fact that plaintiff has asserted its registration against defendant.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • Defendant has standing to cancel plaintiff's pleaded registration by virtue of being the defendant in the consolidated proceeding, and the fact that plaintiff has asserted its registration against defendant. Aries Systems Corp. v. World Book Inc., 26 USPQ2d 1926, 1930 n.12 (TTAB 1993).
  • Discussion of Jean Patou case.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • In Jean Patou, during its testimony period, the opposer had put into the record a poor photocopy of a four-year old status and title copy of a pleaded registration and, one week later, but after the close of the testimony period, filed a supplemental notice of reliance with a current status and title copy prepared by the USPTO. The Board refused applicant's request to strike the timely notice of reliance, though it noted that the question of the competency of a poor photocopy of a four-year old status and title copy remained; but the Board granted applicant's request to strike the notice of reliance submitted after the testimony period had closed. Id. at 1075-76.13
  • Even though applicant did not specifically object to opposer's request that the TTAB take judicial notice, it is well settled that the TTAB does not take judicial notice of USPTO records.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • Second, even though applicant did not specifically object to opposer's request that the Board take judicial notice, it is well settled that the Board does not take judicial notice of USPTO records. 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.").
  • Evidence that the party through its licensees and franchisees, uses the mark in connection with the described services is sufficient to demonstrate that he has a real interest in this proceeding, and therefore has standing.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • Plaintiff, through its licensees and franchisees, uses the mark ANTHONY'S PIZZA & PASTA in connection with restaurant services. This is sufficient to demonstrate that plaintiff has a real interest in this proceeding, and therefore has standing. Id.
  • Formation of Opposer and its continued manufacturing and selling of the goods was sufficient to demonstrate that opposer has a real interest in this proceeding and, therefore, its standing.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • Opposer was formed to commercialize the automated, portable ventilator invented by Sekos, Inc. and since its formation in November, 2004, opposer has been manufacturing and selling SAVe portable ventilators.2 This is sufficient to demonstrate that opposer has a real interest in this proceeding and, therefore, its standing. Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
  • If a pending application issues prior to trial, applicant's prior admission of the pending application in a notice of reliance would not have excused opposer from the need to make the registration properly of record.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • As noted, the pending application was referenced in the notice of opposition and applicant admitted opposer's ownership of such. Such an admission, however, does not dictate that the resulting registration is automatically of record whenever it should issue. An admission obviates the need to prove the admitted allegation of fact, but no more. Thus, had a registration issued prior to trial, applicant's admission would not have excused opposer from the need to make the registration properly of record.12
  • Once the standing threshold has been crossed, opposer may rely on any legal ground that negates applicant's right to the registration it seeks.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • Once the standing threshold has been crossed, opposer may rely on any legal ground that negates applicant's right to the registration it seeks. Estate of Biro v. Bic Corp., 18 USPQ2d 1382 (TTAB 1991).
  • Oposer's introduction of printouts from the TARR database showing the current status and title of opposer's registrations for a variety of goods and services establish that opposer has a real interest in the outcome of this proceeding; that is, opposer has a direct and personal stake in preventing the registration of applicant's mark for applicant's goods.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • As indicated above, opposer properly introduced printouts from the TARR database records of the USPTO showing the current status and title of its pleaded registrations for its BLACKBERRY marks for a variety of goods and services in the wireless telecommunications field. The evidence establishes that opposer has a real interest in the outcome of this proceeding; that is, opposer has a direct and personal stake in preventing the registration of applicant's mark for applicant's goods.
  • Opposer can establish standing by showing that he has used the phrase in connection with the relevant services and as such has demonstrated a real interest in opposing registration of the mark.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • As discussed below, opposer has shown that he has used the phrase THE CAB CALLOWAY ORCHESTRA in connection with live musical performances and as such has demonstrated a real interest in opposing registration of the mark CAB CALLOWAY for the identified services. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Thus, opposer has established his standing.
  • Opposer can show it has a real interest in the proceeding by proving that it has used its mark for the goods/services.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • In any event, opposer has shown that it has a real interest in this proceeding by proving that it has used its mark ONE TRUE FIT for jeans, shorts, capris, pants, jackets, tops, tank tops, camisoles, skirts, shirts, coats, and blazers. Lipton Industries, Inc. v. Ralston Purina Co., 213 USPQ at 189.
  • Opposer's standing may be established by the introduction of the parties' Agreement conerning registration of marks.
    • Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008)
      • As a preliminary matter, "opposer's standing has been adequately established by the introduction" of the parties' Agreement. Vaughn Russell Candy Co. v. Coolies in Bloom Inc., 47 USPQ2d 1635, 1638 n. 7 (TTAB 1998).
  • Petitioner has standing as petitioner has made of record the USPTO Office action suspending its pleaded application pending the possible refusal to registration under Section 2(d) based on an alleged likelihood of confusion with respondent's registration.
    • Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010)
      • Inasmuch as petitioner has made of record the USPTO Office action suspending its pleaded application pending the possible refusal to registration under Section 2(d) of the Lanham Act based on an alleged likelihood of confusion with respondent's registration,6 there is no question that petitioner has standing to bring this petition for cancellation. Cerveceria Modelo S.A. de C.V. v. R.B. Marco & Sons, Inc., 55 USPQ2d 1298, 1300 (TTAB 2000). See also, Hartwell Co. v. Shane, 17 USPQ2d 1569, 1570 (TTAB 1990); and TBMP § 309.03(b) (2d ed. rev. 2004).
  • Standing is a threshold issue that must be proven by a plaintiff in every inter partes case.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • Standing is a threshold issue that must be proven by a plaintiff in every inter partes case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999).
  • Testimony that opposer has used the mark continuously to identify its travel agency services is sufficient to demonstrate that opposer has a real interest in this proceeding and, therefore, has standing.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • Lydia Tsui testified that opposer has used the mark PANDA TRAVEL continuously since June 1981 to identify its travel agency services. This testimony is sufficient to demonstrate that opposer has a real interest in this proceeding and, therefore, has standing. Id.
  • The filing of opposer's application and the Office's action taken in regard to that application provides opposer with a basis for pleading its standing, and opposer is granted leave to amend the notice of opposition to assert standing on this basis.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • The filing of opposer's application and the Office's action taken in regard to that application provides opposer with a basis for pleading its standing, and opposer is granted leave to amend the notice of opposition to assert standing on this basis (see infra). See e.g., Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953 (TTAB 2008) (standing found based on opposer's ownership of pending trademark application and Office action which resulted in suspension of its application due to involved application being cited as a potential bar to registration).
  • The purpose of the standing requirement is to prevent litigation when there is no real controversy between the parties.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • The purpose of the standing requirement is to prevent litigation when there is no real controversy between the parties. Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
  • The standing test set forth therein is for federal court Article III standing is not the same as standing for an opposition proceeding.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • Applicant maintains that opposer lacks standing to bring this proceeding and points to opposer's failure to satisfy the standing requirements set forth in Lujan v. Defenders of Wildlife, 504 U.S. 555, 560, 119 L.Ed.2d 351, 112 S. Ct. 2130 (1992). However, applicant's reliance on Lujan is misplaced inasmuch as the standing test set forth therein is for federal court Article III standing, not standing for an opposition proceeding.
  • The submission of status and title copies of pleaded registrations establishes standing.
    • Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (TTAB 2010)
      • As TxDOT has submitted status and title copies of its pleaded registrations, there is no genuine issue that TxDOT has established its standing to bring these actions. King Candy Company v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1887 (TTAB 2008).
  • The TTAB cannot conclude that applicant's failure to contest opposer's request constituted his agreement that the TTAB could take judicial notice of the anticipated issuance of a registration.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • Given this established practice, we cannot conclude that applicant's failure to contest opposer's request constituted his agreement that the Board could take judicial notice of the anticipated issuance of a registration. See Edison Brothers Stores, Inc. v. Brutting E.B. Sport-International GmbH, 230 USPQ 530, 531 n.8 (TTAB 1986)("Brutting's motion, filed after it received opposer's main brief, requesting us to make its [registration] part of the record of this proceeding is denied…. That opposer did not object is also of no consequence. A party is obviously not required to object to evidence which has not been proffered in accordance with our rules.").
  • To establish its standing to oppose registration of the mark applicant seeks to register, opposer must prove that it has a real interest in the outcome of the proceeding and thus a reasonable basis for its belief that it would be damaged by issuance of a federal trademark registration of the mark to applicant.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • To establish its standing to oppose registration of the MITHRIL mark applicant seeks to register, opposer must prove that it has a real interest in the outcome of this proceeding and thus a reasonable basis for its belief that it would be damaged by issuance of a federal trademark registration of the mark to applicant. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002).
  • To establish standing in an opposition, an opposer must show that it has a "real interest" in the outcome of the proceeding; that is, that it has a direct and personal stake in the outcome of the opposition.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • To establish standing in an opposition, an opposer must show that it has a "real interest" in the outcome of the proceeding; that is, that it has a direct and personal stake in the outcome of the opposition. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987).
  • Under current Trademark Rule 2.122(d)(1), an opposer may make its registrations of record by attaching to its notice of opposition printouts from the Office's electronic database records showing the current status and title of its registrations.
    • Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008)
      • FOOTNOTE 4 "Opposer attempted to make its registrations of record by attaching to its notice of opposition printouts from the Office's electronic database records showing the current status and title of its registrations. While this would have been sufficient to make the registrations of record under the current version of Trademark Rule 2.122(d)(1), it was not sufficient under the version of the Rule in effect at the time opposer filed its notice of opposition."
  • Where opposer has established its standing and its Section 1(b) ground of opposition to registration of applicant's mark, one need not reach opposer's pleaded Section 2(d) ground of opposition.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • FOOTNOTE 5 "Because we find that opposer has established its standing and its Section 1(b) ground of opposition to registration of applicant's mark, we need not and do not reach opposer's pleaded Section 2(d) ground of opposition. See Research In Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926 (TTAB 2009). We note that opposer states in its brief: "This issue of Applicant's bona fide intent to use is dispositive – if Applicant lacks a bona fide intent to use the mark[] at issue, the Board need not expend resources and effort on SZC's likelihood of confusion ground for opposition." (Opposer's brief at 28, n.7.)"
  • Where opposer has made its pleaded registrations of record, he has established its standing to oppose registration of applicant's mark.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • Because opposer has made its pleaded registrations of record, we find that opposer has established its standing to oppose registration of applicant's mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
  • Where respondent's involved registration for the mark was cited under Section 2(d) as grounds for refusal of petitioner's application, petitioner has standing to bring this petition for cancellation.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • On February 21, 2007, respondent's involved registration for the mark Garden Organics was cited under Section 2(d) of the Lanham Act as grounds for refusal of petitioner's application. See TBMP § 309.03(b) (2d ed. Rev. 2004). Hence, there is no question but that petitioner has standing to bring this petition for cancellation. Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 1185, 1189 (CCPA 1982).
  • While an opposer that pleads ownership of an application would have to make any subsequently issued registration of record, it would not have to amend its notice of opposition prior to doing so.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • FOOTNOTE 12 "In contrast, while an opposer that pleads ownership of an application would have to make any subsequently issued registration of record, it would not have to amend its notice of opposition prior to doing so. The pleading of the application would be viewed as having provided sufficient notice to the applicant that the opposer would rely on a registration from the application for its likelihood of confusion claim. Cf. Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1919-20 (TTAB 2006). In Standard Knitting, the notice of opposition put applicant on notice of opposer's reliance on a pending application, and applicant later amended its counterclaim to seek cancellation of the registration that issued based on the pending application. In contrast, when at trial opposer introduced an unpleaded registration by notice of reliance, applicant's objection to it was sustained. Id."
  • In Lipton, the Court discussed at some length what was necessary to establish standing.
    • Anosh Toufigh v. Persona Parfum, Inc., Cancellation No. 92048305 (TTAB 2010)
      • In Lipton, supra, 213 USPQ at 189, the Court discussed at some length what was necessary to establish standing:
        The starting point is the statute. Congress has defined the class in section 14 as "any person who believes he is or will be damaged by the registration." (Emphasis added.) In construing comparable language of section 13, this court stated in Federated Foods, Inc. v. Ft. Howard Paper Co., 544 F.2d 1098, 1101, 192 USPQ 24, 27 (CCPA 1976):
        A party has standing to oppose within the meaning of § 13 if that party can demonstrate a real interest in the proceeding. Universal Oil Products Co. v. Rexall Drug and Chemical Co., 59 CCPA 1120, 463 F.2d 1122, 174 USPQ 458 (1972).
        The same general statement is applicable to cancellation proceedings. The purpose in requiring standing is to prevent litigation where there is no real controversy between the parties, where a plaintiff, petitioner or opposer, is no more than an intermeddler.
  • Standing is a threshold issue that must be proven by a plaintiff in every inter partes case.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • Initially, we must first consider the question of whether genuine issues exist as to opposer's standing to bring this opposition proceeding. Standing is a threshold issue that must be proven by a plaintiff in every inter partes case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999) and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
  • Established of common-law rights in the mark may establish standing to bring a TTAB proceeding.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • Petitioner has established his common-law rights in the mark DESIGNED2SELL, and has thereby established his standing to bring this proceeding.
  • Opposer has established its standing in this proceeding through its registrations and use of the mark.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • Opposer has established its standing in this proceeding through its registrations for MORGAN CREEK and design and its use of this mark. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
  • Inasmuch as opposer has established its standing, opposer may raise any statutory ground for opposition.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Inasmuch as opposer has established its standing, opposer may raise any statutory ground for opposition, including a claim that applicant's mark is immoral or scandalous under Section 2(a) of the Trademark Act. See Lipton Industries, supra at 190.
  • Because opposer has properly made its pleaded registrations of record, opposer has established its standing.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • Because opposer has properly made its pleaded registrations of record, opposer has established its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
  • In asserting a 2(a) claim, a petitioner may have standing by virtue of who petitioner is, that is, its identity.
    • Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010)
      • With respect to the Section 2(a) ground for cancellation, petitioner is not required to allege proprietary rights in its name for standing purposes. See Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1385 (TTAB 1991). In asserting a 2(a) claim, a petitioner may have standing by virtue of who petitioner is, that is, its identity. Id.
  • It is incumbent upon opposer to establish his standing, in the absence of an admission or stipulation from applicant.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • It is incumbent upon opposer to establish his standing, in the absence of an admission or stipulation from applicant. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 188 (CCPA 1982).
  • The burden is on opposer to establish its ownership and status of its pleaded registrations as of the filing of the notice of opposition.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • FOOTNOTE 18 "As noted, opposer's pleaded registrations are not of record in the application file. However, even if they were, they would not suffice to establish the status of or opposer's ownership of such registrations at the time of filing this inter partes proceeding. The burden is on opposer to establish its ownership and status of its pleaded registrations as of the filing of the notice of opposition."
  • To establish its standing, petitioner must prove that it has a "real interest" in the proceeding and a "reasonable basis" for its belief of damage.
    • Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010)
      • To establish its standing, petitioner must prove that it has a "real interest" in the proceeding and a "reasonable basis" for its belief of damage. To plead a "real interest" in the case, it must allege a "direct and personal stake" in the outcome of the proceeding, and the allegations in support of its belief of damage must have a reasonable basis in fact. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1027 (Fed. Cir. 1999); TBMP § 309.03(b)(2d ed. rev. 2004).
  • The filing of opposer's application and the Office's action taken in regard to that application provides opposer with a basis for pleading its standing.
    • Anosh Toufigh v. Persona Parfum, Inc., Cancellation No. 92048305 (TTAB 2010)
      • As the Board stated in a recent precedential decision: "The filing of opposer's application and the Office's action taken in regard to that application provides opposer with a basis for pleading its standing." Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111 (TTAB 2010), citing Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1959 (TTAB 2008).
  • Case Finding: There exists no genuine issue of material fact and we find as a matter of law that petitioner has standing in this cancellation proceeding.
    • DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010)
      • Thus, there exists no genuine issue of material fact and we find as a matter of law that petitioner has standing in this cancellation proceeding. See also TBMP 309.03(b) (2d ed. rev. 2004).
  • Opposer must demonstrate its standing to pursue this opposition, i.e., that it has a reasonable belief that it would be damaged by registration of applicant's mark.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • Opposer must demonstrate its standing to pursue this opposition, i.e., that it has a reasonable belief that it would be damaged by registration of applicant's mark. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
  • Prior cases have found standing to be established by the fact that the petitioner's application has been refused registration on the basis of the respondent's registration.
    • Anosh Toufigh v. Persona Parfum, Inc., Cancellation No. 92048305 (TTAB 2010)
      • As discussed above, prior cases have found standing to be established by the fact that the petitioner's application has been refused registration on the basis of the respondent's registration. See cases discussed supra.
  • Opposer does not have standing in this proceeding where there is neither an admission of standing by applicant nor record evidence that otherwise establishes opposer's standing.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • Accordingly, opposer does not have standing in this proceeding because there is neither an admission of standing by applicant nor record evidence that otherwise establishes opposer's standing.
  • A party meets the statutory requirement of establishing a reasonable belief of damage (and thus establishing standing) by showing that it possesses a real interest in the proceeding.
    • Anosh Toufigh v. Persona Parfum, Inc., Cancellation No. 92048305 (TTAB 2010)
      • The Court thus indicated that a party meets the statutory requirement of establishing "a reasonable belief of damage" (and thus establishing standing) by showing that it possesses a real interest in the proceeding. Id.
  • If petitioner establishes its standing with respect to any pleaded ground for cancellation, it has the right to assert any other ground as well, that also has a reasonable basis in fact.
    • Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010)
      • If petitioner establishes its standing with respect to any pleaded ground for cancellation, it has the right to assert any other ground as well, that also has a reasonable basis in fact. See Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 188 (CCPA 1982); Enbridge Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1543 n.10 (TTAB 2009), citing Liberty Trouser Co., Inc. v. Liberty & Co., 222 USPQ 357, 358 (TTAB 1983).
  • To establish standing, it may be sufficient if the circumstances are such that it would be reasonable for a petitioner to believe that the existence of respondent's registration would damage him.
    • Anosh Toufigh v. Persona Parfum, Inc., Cancellation No. 92048305 (TTAB 2010)
      • Nevertheless, evidence of such a refusal is not a requirement to establish standing. Rather, it is sufficient if the circumstances are such that it would be reasonable for a petitioner to believe that the existence of the respondent's registration would damage him, e.g., a reasonable belief that there is a likelihood of confusion between the marks, or that the presence on the register of the respondent's mark may hinder the petitioner in using or registering his mark.
  • As opposer has submitted status and title copies of its pleaded registrations, there is no genuine issue that opposer has established its standing to bring this action, and priority of use is not an issue.
    • Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009)
      • As opposer has submitted status and title copies of its pleaded registrations, there is no genuine issue that opposer has established its standing to bring this action, and priority of use is not an issue. King Candy Company v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974); L.C. Licensing Inc. v. Berman, 86 USPQ2D 1883, 1887 (TTAB 2008).
  • Standing will usually be found in an opposition based on likelihood of confusion when the opposer establishes its registration or use of a trademark, which right might be plausibly harmed by registration of applicant's mark.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • Standing will usually be found in an opposition based on likelihood of confusion when the opposer establishes its registration or use of a trademark, which right might be plausibly harmed by registration of applicant's mark.
  • Priority is not an issue given the submission of district court's reports and recommendations and rulings and certified copies of the registrations showing that such registrations are valid and subsisting and are owned by opposer.
    • Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008)
      • In addition to the district court's reports and recommendations and rulings, and the decision of the Sixth Circuit, opposer has introduced with its motion for summary judgment certified copies of its pleaded DODGE registrations showing that such registrations are valid and subsisting and are owned by opposer. Consequently, for purposes of this motion for summary judgment, priority is not in issue with respect to such marks. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
  • Case Finding: There is no genuine issue of material fact as to opposer's standing in view of the assignment documents which demonstrate that opposer is the current owner of the right of publicity of John W Carson, including the phrase HERE'S JOHNNY.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • We find that there is no genuine issue of material fact as to opposer's standing in view of the assignment documents which demonstrate that opposer is the current owner of the right of publicity of John W Carson, including the phrase HERE'S JOHNNY.
  • Though opposer failed to properly introduce the pleaded registration, testimony establishing that opposer uses the mark is sufficient to support opposer's allegations of a reasonable belief that it would be damaged by registration of applicant's mark.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • As noted above, opposer failed to properly introduce the pleaded registration. Nonetheless, the testimony of Francis Marier establishes that opposer uses the mark AGROMETER in connection with "a temperature-sensing device that takes that information it gathers on high and low temperatures for the day and calculates out the growing degree units." Marier Test. at 7, 19. This testimony is sufficient to support opposer's allegations of a reasonable belief that it would be damaged by registration of applicant's mark.
  • Opposer, having made of record copies of its pleaded registrations showing the current status of the registrations and their ownership in opposer, has established its real interest in preventing the registration of applicant's mark for the identified goods.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Opposer, having made of record copies of its pleaded registrations showing the current status of the registrations and their ownership in opposer, has established its real interest in preventing the registration of applicant's mark for the identified goods. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
  • The purpose of the standing requirement, which is directed solely to the interest of the plaintiff, is to prevent intermeddlers from initiating proceedings. Thus, to meet this requirement, a plaintiff need only show that it has a real interest in the outcome of the proceeding.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • The purpose of the standing requirement, which is directed solely to the interest of the plaintiff, is to prevent intermeddlers from initiating proceedings. Thus, to meet this requirement, a plaintiff need only show that it has a real interest in the outcome of the proceeding. Ritchie, 50 USPQ2d at 1025.
  • Allegations that a petitioner is engaged in the manufacture or sale of the same or related products as those listed in respondent's involved registration, or that the product in question is one which could be produced in the normal expansion of petitioner's business, constitute a sufficient pleading of standing.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • FOOTNOTE 4 "While we have not considered the parties' respective briefs, we nonetheless draw the parties' attention to the following observations. First, respondent has not submitted any evidence that its ROUGH-IN READY mark would be perceived by the purchasing public as a double entendre. Second, evidence that a mark had acquired distinctiveness as of the date of registration can include "material that came into being after the date of registration provided that such material tended to show that as of the time of registration, the mark had acquired a secondary meaning." Neapco, Inc. v. Dana Corp., 12 USPQ2d 1746, 1747 (TTAB 1989). Third, with respect to respondent's contention that petitioner has not properly pleaded its standing, respondent is referred to Binney & Smith Inc. v. Magic Markers Industries, Inc., 222 USPQ 1003 (TTAB 1984) (allegations that a petitioner is engaged in the manufacture or sale of the same or related products as those listed in respondent's involved registration, or that the product in question is one which could be produced in the normal expansion of petitioner's business, constitute a sufficient pleading of standing)."
  • While opposer's testimony of its use of the mark is sufficient to demonstrate its standing, it is not sufficient to allow it to prevail on its likelihood of confusion claim. Had opposer properly introduced its trademark registrations, the registrations themselves would have been sufficient to remove priority as an issue to be proved.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • While opposer's testimony of its use of the AGROMETER mark is sufficient to demonstrate its standing, it is not sufficient to allow it to prevail on its likelihood of confusion claim. Had opposer properly introduced its trademark registrations, the registrations themselves would have been sufficient to remove priority as an issue to be proved. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
  • On the other hand, applicant may rely without further proof upon the filing date of its application as a constructive use date for purposes of priority.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • The only date mentioned in connection with such use is June 4, 2007. Marier Test. at 18-19. While the clear implication of this testimony is that opposer was using the mark at some time before that date, no such date is specified. On the other hand, applicant may rely without further proof upon the filing date of its application as a "constructive use" date for purposes of priority. See Trademark Act § 7(c) (contingent upon registration); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 36 USPQ2d 1328, 1332 (TTAB 1994).
  • A petition to cancel may be brought by any person who believes he is or will be damaged by the registration of a mark. To meet the standing requirement, a plaintiff need only show that it has a real interest in the outcome of the proceeding.
    • DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010)
      • Respondent's argument that petitioner lacks standing is without merit. A petition to cancel may be brought by any person who believes he is or will be damaged by the registration of a mark. Trademark Act §14, 15 U.S.C. §1064. In order to meet the standing requirement, a plaintiff need only show that it has a real interest, i.e., a personal stake, in the outcome of the proceeding. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); and Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987).
  • Case Finding: Petitioner has shown that he has a real interest in the proceeding, i.e., is not an intermeddler, by the fact that he has filed an application to register the trademark Further, that petitioner has shown a reasonable basis for a belief that he is damaged by the registration sought to be cancelled by virtue of the fact that both parties' marks are identical, and their goods are at least arguably related.
    • Anosh Toufigh v. Persona Parfum, Inc., Cancellation No. 92048305 (TTAB 2010)
      • In the present case, petitioner has shown that he has a real interest in the proceeding, i.e., is not an intermeddler, by the fact that he has filed an application to register the trademark ECSTASY. "We regard the desire for a registration with its attendant statutory advantages as a legitimate commercial interest." Id. Further, we consider that petitioner has shown a reasonable basis for a belief that he is damaged by the registration sought to be cancelled by virtue of the fact that both parties' marks are identical, and their goods are at least arguably related.
  • To have standing, it is sufficient for petitioner to prove that it filed an application and that a rejection was made because of respondent's registration.
    • DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010)
      • Here, petitioner has alleged that its pending application has been refused registration in light of respondent's existing registration. Respondent has admitted such allegation. The rejection of petitioner's trademark application on the basis of the challenged registration is a basis for petitioner's standing. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 1029, 213 USPQ 185, 189 (CCPA 1982) (to have standing, it is sufficient for petitioner to "prove that it filed an application and that a rejection was made because of [respondent's] registration.").
  • Case Finding: Opposer has standing to bring this proceeding by asserting that it is using and that it has filed applications to register the GRAND CANYON WEST RANCH mark, and applicant's witnesses confirm opposer's use of GRAND CANYON WEST RANCH.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • Opposer has standing to bring this proceeding. Opposer asserts that it is using and that it has filed applications to register the GRAND CANYON WEST RANCH mark, and applicant's witnesses confirm opposer's use of GRAND CANYON WEST RANCH. See, e.g., Testimony of Allison Raskansky (Raskansky) at 54. Thus, the registration of applicant's mark could impact opposer's ability to register or to continue to use GRAND CANYON WEST RANCH. Therefore, opposer has established a real interest in this proceeding. See generally Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed. Cir. 1987).
  • While opposer has not proved ownership of a trademark registration, the Trademark Act permits opposition on the basis of prior use of a mark or trade name previously used in the United States by another and not abandoned, i.e., ownership of a common-law trademark right.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • While opposer has not proved ownership of a trademark registration, the Trademark Act permits opposition on the basis of prior use of "a mark or trade name previously used in the United States by another and not abandoned," Trademark Act § 2(d), i.e., ownership of a common-law trademark right. But because unregistered marks are not entitled to the presumptions established by statute, see Trademark Act § 7(b)-(c), it is opposer's burden to demonstrate that it owns a trademark, which was used prior to applicant's mark, and not abandoned. See Trademark Act § 2(d).
        Unfortunately for opposer, there is very little record evidence of its common-law trademarks and no evidence of its priority of use.
        Life Zone, 87 USPQ2d at 1959.
  • Allegations alone do not establish standing.
    • Anosh Toufigh v. Persona Parfum, Inc., Cancellation No. 92048305 (TTAB 2010)
      • Petitioner testified that he applied to register the mark ECSTASY for "bath crystals, bath foams, bath powder, bath salts, bubble bath, and foam bath," as identified in Application Serial No. 77220963. (Toufigh depo. at 7). We note that petitioner alleged in the petition to cancel that his application was "refused registration based upon Registration No. 2944750." (Petition Para. 6). However, allegations alone do not establish standing. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 188 (CCPA 1982) (facts alleged at the pleading stage must be proven at trial to establish standing). Here, petitioner did not submit a copy of the office action, nor did he testify about such refusal in his testimony. If he had, this would have been sufficient to establish his standing.
  • The Board cannot infer that applicant was aware of opposer's registrations and find, on such an inference, that applicant effectively admitted the ownership and validity of the pleaded registrations so as to establish opposer's standing in this opposition.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • The Board cannot infer that applicant was "aware" of opposer's registrations and find, on such an inference, that applicant effectively admitted the ownership and validity of the pleaded registrations so as to establish opposer's standing in this opposition.19 FOOTNOTE 19 "The Board notes that if opposer had attached proper copies of his registrations as exhibits to the notice of opposition, making them of record, the Board might have been able to determine both standing and likelihood of confusion, based on a comparison of the marks and goods listed in the registrations and the application involved herein. However, the record still would be insufficient to determine opposer's other claims. See Trademark Rule 2.122(d)(1); King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974); and Hurley International LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007)."
  • Proof of standing in a TTAB opposition is a low threshold, intended only to ensure that the plaintiff has a real interest in the matter, and is not a mere intermeddler.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • FOOTNOTE 8 "Applicant argues that opposer failed to establish its standing because, while opposer alleges that it uses the AGROMETER mark under license, it failed to introduce that license or any evidence of it. We have found licensees to have standing to oppose registration. E.g., J.L. Prescott Co. v. Blue Cross Labs. (Inc.), 216 USPQ 1127, 1128 (TTAB 1982) (opposer that had assigned mark and obtained exclusive license from assignee held to have standing); Chem. New York Corp. v. Conmar Form Sys., Inc., 1 USPQ2d 1139, 1142 (TTAB 1986). Proof of standing in a Board opposition is a low threshold, intended only to ensure that the plaintiff has a real interest in the matter, and is not a mere intermeddler. E.g., Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999). Evidence of an opposer's actual use of a mark satisfies this requirement, even if that use is purportedly based on a license which has not been clearly established in evidence."
  • Evidence of an opposer's actual use of a mark satisfies this requirement, even if that use is purportedly based on a license which has not been clearly established in evidence.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • FOOTNOTE 8 "Applicant argues that opposer failed to establish its standing because, while opposer alleges that it uses the AGROMETER mark under license, it failed to introduce that license or any evidence of it. We have found licensees to have standing to oppose registration. E.g., J.L. Prescott Co. v. Blue Cross Labs. (Inc.), 216 USPQ 1127, 1128 (TTAB 1982) (opposer that had assigned mark and obtained exclusive license from assignee held to have standing); Chem. New York Corp. v. Conmar Form Sys., Inc., 1 USPQ2d 1139, 1142 (TTAB 1986). Proof of standing in a Board opposition is a low threshold, intended only to ensure that the plaintiff has a real interest in the matter, and is not a mere intermeddler. E.g., Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999). Evidence of an opposer's actual use of a mark satisfies this requirement, even if that use is purportedly based on a license which has not been clearly established in evidence."
Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010) Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010) Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010) The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010) Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (TTAB 2010) Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010) Anosh Toufigh v. Persona Parfum, Inc., Cancellation No. 92048305 (TTAB 2010) The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010) Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010) Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010) DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010) Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009) Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009) Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009) Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009) Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009) UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009) Honda Motor Co., Ltd. v. Friedrich Winkelmann, Opposition No. 91170552 (TTAB 2009) Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009) Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009) Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009) Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009) Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009) Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008) Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008) The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008) Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008) Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008) Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008) Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008) Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008) 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007) Apple Computer v.  TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007) Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007) CONSOLIDATED: Opposition No. 91161028, FINANZ ST. HONORE, B.V. v. JOHNSON & JOHNSON; Cancellation No. 92044444, JOHNSON & JOHNSON v. FINANZ ST. HONORE, B.V. (TTAB 2007) Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007) Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007) Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007) Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007) Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007) Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007) Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007) Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007) Otto International, Inc. v. Otto Kern GMBH, Cancellation No. 92046167, (TTAB 2007) Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007) Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007) Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007) Target Brands, Inc. v. Shaun N.G. Hughes, Opposition No. 91163556, (TTAB 2007) The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007) The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007) The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007) Tri-Star Marketing, LLC v. Nino Franco Spumanti S.R.L., Cancellation No. 92043953, (TTAB 2007) Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, Opposition No. 91150925, (TTAB 2007) Association Pour la Defense et la Promotion de L'Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, Cancellation No. 92042323, (TTAB 2007) Michael J. McDermott v. San Francisco Women's Motorcycle Contingent, Opposition No. 91169211, (TTAB 2006) Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006) Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006) Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006) American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005) DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005) Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005) Knight Textile Corporation v. Jones Investment Co., Inc., Opposition No. 91153852, (TTAB 2005) Baseball America, Inc. v. Powerplay Sports, Ltd., Opposition No. 91120166, (TTAB 2004) Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003) Marilyn Carano a/k/a Lynn Carano d/b/a Lynn Carano Graphics v. Vina Concha Y Toro S.A., Opposition No. 125,728, (TTAB 2003) Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003) Seculus Da Amazonia S/A v. Toyota Jidosha Kabushiki Kaisha t/a/ Toyota Motor Corporation, Opposition No. 152,062, (TTAB 2003) Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002) Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999) Grand Total
Fiat Group Autos. S.p.A. v. ISM Inc., 94 USPQ2d 1111 (TTAB 2010) 1
Research In Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926 (TTAB 2009) 1
Enbridge Inc. v. Excelerate Energy LP, 92 USPQ2d 1537 (TTAB 2009) 1
L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008) 2
Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953 (TTAB 2008) 4
Hurley International LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007) 1
Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006) 1
Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492 (TTAB 2005) 1
Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002) 1
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000) 22
Cerveceria Modelo S.A. de C.V. v. R.B. Marco & Sons, Inc., 55 USPQ2d 1298 (TTAB 2000) 1
Ohio State University v. Ohio University, 51 USPQ2d 1289 (TTAB 1999) 1
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999) 16
Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752 (Fed. Cir. 1998) 4
Vaughn Russell Candy Co. v. Coolies in Bloom Inc., 47 USPQ2d 1635 (TTAB 1998) 1
Levi Strauss & Co. v. R. Josephs Sportwear Inc., 36 USPQ2d 1328 (TTAB 1994) 1
William & Scott Co. v. Earl's Restaurants Ltd., 30 USPQ2d 1870 (TTAB 1994) 1
Aries Systems Corp. v. World Book Inc., 26 USPQ2d 1926 (TTAB 1993) 1
Lujan v. Defenders of Wildlife, 504 U.S. 555, 119 L.Ed.2d 351, 112 S. Ct. 2130 (1992) 1
Estate of Biro v. Bic Corp., 18 USPQ2d 1382 (TTAB 1991) 2
Hartwell Co. v. Shane, 17 USPQ2d 1569 (TTAB 1990) 1
Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072 (TTAB 1990) 1
Neapco, Inc. v. Dana Corp., 12 USPQ2d 1746 (TTAB 1989) 1
Bankamerica Corp. v. Invest America, 5 USPQ2d 1076 (TTAB 1987) 1
Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987) 9
Windsurfing International Inc. v. AMF Inc., 828 F.2d 755, 4 USPQ2d 1052 (Fed. Cir. 1987) 1
Corporate Fitness Programs Inc. v. Weider Health and Fitness Inc., 2 USPQ2d 1682 (TTAB 1987) 1
Chemical New York Corp. v. Conmar Form Systems Inc., 1 USPQ2d 1139 (TTAB 1986) 2
Edison Brothers Stores, Inc. v. Brutting E.B. Sport-International GmbH, 230 USPQ 530 (TTAB  1986) 1
No Nonsense Fashions Inc. v. Consolidated Foods Corporation, 226 USPQ 502 (TTAB 1985) 1
Binney & Smith Inc. v. Magic Marker Industries Inc., 222 USPQ 1003 (TTAB 1984) 2
M. Aron Corporation v. Remington Products Inc., 222 USPQ 93, 95 (TTAB 1984) 1
Liberty Trouser Co., Inc. v. Liberty & Co., 222 USPQ 357 (TTAB 1983) 1
Lipton Industries Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982) 39
J.L. Prescott Co. v. Blue Cross Labs. (Inc.), 216 USPQ 1127 (TTAB 1982) 1
Marcal Paper Mills Inc. v. American Can Co., 212 USPQ 852 (TTAB 1981) 1
Allied Mills Inc. v. Kal Kan Foods Inc., 203 USPQ 390 (TTAB 1979) 1
General Mills Inc. v. Natures Way Products, 202 USPQ 840 (TTAB 1979) 1
Southwire Company v. Kaiser Aluminum & Chemical Corporation, 196 USPQ 566 (TTAB 1977) 1
Federated Foods Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976) 1
Viking Boat Co. v. Viking Camper Supply Inc., 191 USPQ 297 (TTAB 1976) 1
King Candy Co. v. Eunice King's Kitchen Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974) 8
Universal Oil Products Co. v. Rexall Drug and Chemical Co., 463 F.2d 1122, 174 USPQ 458 (1972) 1
Federal Glass Co. v. Corning Glass Works, 162 USPQ 279 (TTAB 1969) 2
Grand Total 1 1 2 4 2 2 5 2 3 5 3 3 1 3 2 2 7 2 2 2 2 8 2 2 2 2 3 1 1 1 2 2 1 2 6 2 1 1 2 1 2 2 2 1 1 1 2 1 2 2 1 1 2 1 1 1 2 2 1 1 3 1 1 1 1 4 2 1 3 144

Sec. 1063. Opposition to registration

  1. (a) Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered. Upon written request prior to the expiration of the thirty-day period, the time for filing opposition shall be extended for an additional thirty days, and further extensions of time for filing opposition may be granted by the Director for good cause when requested prior to the expiration of an extension. The Director shall notify the applicant of each extension of the time for filing opposition. An opposition may be amended under such conditions as may be prescribed by the Director.
  2. (b) Unless registration is successfully opposed--
    1. (1) a mark entitled to registration on the principal register based on an application filed under section 1051(a) of this title or pursuant to section 1126 of this title shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued, and notice of the registration shall be published in the Official Gazette of the Patent and Trademark Office; or
    2. (2) a notice of allowance shall be issued to the applicant if the applicant applied for registration under section 1051(b) of this title.

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