Opposition tossed for failure to submit current status and ownership of pleaded registration

In Sterling Jewelers Inc v Romance & Co Inc (Opposition No 91207312, March 27 2014), in a precedential decision, the Trademark Trial and Appeal Board (TTAB) has granted Romance & Co Inc’s motion to dismiss Sterling Jewelers Inc’s opposition because Sterling had failed to prosecute the case.

Sterling opposed registration of the mark WHAT YOUR HEART DESIRES by Romance. Following the close of Sterling’s testimony period, with Sterling having submitted no evidence and taken no testimony, Romance brought a motion for involuntary dismissal of the opposition for failure to prosecute.

Romance alleged that Sterling did not submit a proper copy of its pleaded registration into evidence. Sterling attached only a photocopy of its registration to the notice of opposition. Rule 2.122(d)(1), however, clearly requires that the current status of, and current title to, the registration also be made of record. Thus, the TTAB held that the submitted photocopy was not sufficient. Sterling could have entered the current status and title of its registration by notice of reliance or through testimony, but it did not. Sterling requested the TTAB grant it leave to submit further evidence regarding current status and title, which the TTAB denied because Sterling did not demonstrate that its failure to submit any evidence or take any testimony was the result of excusable neglect.   

Sterling also argued that, because Romance had admitted in its answer that Sterling was the “listed owner of record” of the registration, the ownership of the registration was not in question. The TTAB did not construe Romance’s admission as establishing current ownership of the registration.  Rather, the TTAB viewed the admission as merely establishing that the opponent was identified as the owner on the photocopy attached to the notice of opposition.

Because Sterling failed to submit any evidence supporting its claim of likelihood of confusion, failed to prove any common law rights in its pleaded mark or that it currently owns the pleaded registration or that the registration was valid, the TTAB granted Romance’s motion for dismissal of the opposition.

Diane M Reed, Knobbe Martens Olson & Bear LLP, Orange County