TTAB Grants Dismissal for Failure to Prosecute

Author: Julia Anne Matheson

In Sterling Jewelers Inc. v. Romance & Co., Inc., Opposition No. 91207312 (TTAB March 27, 2014), the Board addressed the evidentiary requirements for making a registration properly of record under the governing Trademark Rules and for obtaining a dismissal for failure to prosecute.

The case came before the Board on a fully briefed motion for involuntary dismissal under the Trademark Rules. Opposer commenced its opposition on likelihood of confusion grounds, attaching a simple photocopy of the registration without either status or title details. Following Opposer’s failure to take discovery, to take testimony, or to submit any evidence during its testimony period, Applicant sought dismissal of the opposition for failure to prosecute. In support of its motion, Applicant argued that by failing to make its registration properly of record or to submit any other evidence in support of its action, Opposer had failed to meet its burden to prove standing and entitlement to relief.

While Opposer did not actively prosecute the opposition, it did actively oppose Applicant’s motion and sought the Board’s leave to file “further evidence of the current status and title of its pleaded registration” or any other “appropriate evidence to support its asserted claims.” The Board denied Opposer’s request because Opposer could not demonstrate that its failure to submit any evidence during its testimony period was the result of excusable neglect.

Trademark Rule 2.132(a) and (b) contemplate two different bases for dismissal for failure to prosecute. Rule 2.132(a) allows a defendant to move for dismissal where a plaintiff has failed to take testimony or offer any evidence in support of its case. Rule 2.132(b), on the other hand, addresses motions for dismissal where the plaintiff has entered PTO records into evidence, but otherwise failed to demonstrate that the facts and law support its claim for relief.

The trademark rules contemplate three different methods for making a pleaded registration properly of record. First, a litigant can attach a printout of the registration’s current status and title from the PTO website to its initial pleading. Second, a registration can be identified and introduced during the taking of testimony. Third, a registration can be submitted under a notice of reliance. Noting that the submission of a mere photocopy of a pleaded registration is insufficient to establish either the registration’s current ownership or its current status, the Board has repeatedly held that such evidence by itself is inadequate for evidentiary purposes, including in this case.

Emphasizing that the opposer has the burden of demonstrating both standing and a ground upon which relief may be granted, the Board concluded Opposer was lacking on both fronts, ruling in applicant’s favor and dismissing the opposition with prejudice.

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