Priority: A party that bases its Section 2(d) claim on common law rights in a mark must prove that it has priority of use. See, e.g., Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720, 1721 (Fed. Cir. 2001). The evidence showed that applicant made its first sale of a MOKE brand vehicle on August 10, 2015.Therefore, opposer had to demonstrate ownership and use of its pleaded common law mark prior to that date. See Giersch v. Scripps, 90 USPQ2d 1020, 1023 (TTAB 2009). See also Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981).
Opposer acquired the MOKE trademark from Mini Mania, Inc. on November 14, 2016, through an assignment and license back, but contended that it was entitled to rely on Mini Mania’s prior use of the mark. Opposer’s CEO provided copies of certain sales records obtained from Mini Mania covering the period 1993-2016, and he testified that he understood that, based on information performed by his lawyer, Mini Mania had used the mark since 1971.
Applicant objected to the admission of the Mini Mania sales documents on the ground of hearsay, arguing that the business records exception did not apply because opposer’s CEO was not the custodian of the documents and could not authenticate them. The Board, however, found this objection to be untimely since it was not raised until applicant’s brief. Applicant claimed that the objection was substantive, not procedural, and therefore need not be previously raised, but the Board found it to be procedural. Therefore, applicant should have raised it promptly after the testimony of the CEO, so that opposer could attempt to cure the deficiency in authentication.
The Board then addressed the question of when such an objection must be raised when the testimony is submitted via declaration rather than orally. The Board explained that it depends on the “circumstance of the case.” For example, the defending party may seek oral cross-examination, inquire regarding the foundation for the other party’s testimony, and then object on the deposition record. Or it may serve an objection on the other party, file a copy with the Board, and assert the objection in its brief. The offering party may seek an extension or re-opening of its testimony period in order to cure the defect. Finally, the defending party may file a motion to strike no later than the 20 days permitted for an election of cross-examination.
The key aspect is that a timely objection is lodged. The manner in which it is raised may vary depending on the circumstances. The above-noted process for raising procedural objections regarding testimony by affidavit or declaration is applicable to all pending and future inter partes cases before the Board.
The Board overruled applicant’s objection and considered the sales documents as falling within the business records exception to the hearsay rule.
Turning to the CEO’s testimony regarding prior use of the mark, his testimony that he was aware of Mini Mania’s MOKE-branded products for years was not hearsay because he was testifying as to his personal knowledge. See F.R.E. 602. However his testimony regarding use since 1974, based on what his attorneys told him, was inadmissible hearsay.
The Board then considered the evidence as a whole, “as if each piece of evidence were part of a puzzle which, when fitted together, establishes prior use,” W. Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994). It found that opposer’s evidence fell short. The November 14, 2016 assignment without any evidence of use did not prove priority.
The Board found the CEO’s testimony “simply too vague with respect to when and how Mini Mania used the MOKE trademark. It is also inconsistent and contradictory. Consequently, it fails to move us.” The Mini Mania sales records merely listed a product description (e.g., speedo cable) next to the word MOKE, and thus did not prove use of the mark on any goods sold in commerce. Moreover, opposer’s CEO lacked personal knowledge as to whether Mini Mania ever labeled its products with the mark.
If there is no proof that Mini Mania used the trademark in commerce prior to the assignment to Opposer, then there is no proof that Opposer obtained any trademark rights through the assignment. See, e.g., Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783, 1790 n.9 (TTAB 2006) (“the law is well established that an assignee stands in the shoes of its assignor”). See also A & L Labs., Inc. v. Bou-Matic LLC, 429 F.3d 775, 77 USPQ2d 1248, 1252 (8th Cir. 2005) (“Trademark ownership may be assigned, but the assignor may transfer only what it owns. Before Bou-Matic may be declared owner of all sixty-seven marks, it must show DEC owned or used all sixty-seven.”) (citation omitted).
The Board therefore did not reach the merits of the likelihood of conclusion claim.
Implied Consent: The Board then turned to opposer’s other claim, asserted in opposer’s brief, that the opposed application was void ab initio because applicant was not the owner of the mark. Applicant objected to consideration of this claim since it was not raised in the pleadings.
Opposer pointed to its failed summary judgment motion, where it had raised this issue, arguing that applicant had thus been put on adequate notice of this claim. The Board, however, had denied that motion as untimely (after the deadline for pretrial disclosures had passed), even before applicant had filed its opposition to the motion.
The Board found it clear that from applicant’s objection in its brief that applicant did not expressly consent to trial of this issue. “The Board may find implied consent of an unpleaded issue where the nonmoving party: (1) raised no objection to the introduction of evidence on the issue, and (2) was fairly apprised that the evidence was being offered in support of the issue. TBMP § 507.03(b); see also Morgan Creek Prods. Inc. v. Foria Int’l Inc., 91 USPQ2d 1134, 1138 (TTAB 2009).”
The Board relied on “the dictates of fairness to determine whether the following facts establish whether there was an absence of doubt that Applicant was aware that Opposer was trying the
Opposer asserted that if first learned of the claim during from applicant’s testimony that the MOKE & Design logo was created by an independent agency and therefore applicant was not the owner of the copyright in the logo, and thus not the owner of the mark.
The Board found that neither this testimony nor opposer’s untimely summary judgment motion apprised applicant that opposer was asserting this new claim. The claim was not mentioned by the Board in its denial of the motion. Applicant did not introduce any testimony or evidence on the issue. And opposer did nothing to put applicant on notice that it would re-raise this claim after the motion was denied. When the Board then re-opened opposer’s testimony period (after the failed motion), opposer did not submit any testimony or evidence on this issue. Nothing in the trial record put applicant properly on notice of this claim.
“The non-moving party must be aware that the issue is being tried, and therefore there should be no doubt on this matter.” Morgan Creek Prods. Inc., 91 USPQ2d at 1139. * * * [W]e find that the parties did not try by implied consent the claim that Applicant’s application was void ab initio and, therefore, we will not amend the pleadings to include that claim.
Conclusion: And so the Board dismissed the opposition.
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TTABlogger comment: Why didn’t Mini Mania, who has a license back, testify regarding it prior use of the mark?
Text Copyright John L. Welch 2020.