What happens when a trademark application is opposed and then the Opposer does not follow the rules? In the case of West Indies Trading Company LLC v. Nicole Averette, a quick dismissal that is a lesson in the importance of form over substance.
In West Indies, the trademark Opposer filed a trademark opposition against Applicant’s mark NIKKI VS NICOLE for dresses, shirts, shorts, and swimwear in International Class 25. The mark was opposed based upon a likelihood of confusion under Trademark Act Section 2(d) based on Opposer’s six trademark registrations for marks containing the words NIKKI BEACH for a wide variety of goods and services as well as Opposer’s alleged common law mark NIKKI BEACH for “clothing, sun care products and related merchandise that have included fragrances.” The Opposer cited as additional grounds that its NIKKI BEACH mark had become famous and that Applicant’s mark would dilute the distinctive value of Opposer’s marks. Applicant filed an Answer but neither side submitted any evidence or took testimony during their trial period. Opposer did, however, file a brief in the case.
The Record on which the Board rendered its decision consisted only of the pleadings and Applicant’s trademark application. Most importantly, Opposer’s trademark registrations were not made of record nor was there any other testimony or evidence. In ruling against the Opposer, the Board made the following observations on how Opposer missed several opportunities to introduce its registrations into evidence. For example:
- opposer could have attached to its Notice of Opposition status and title copies of its registrations; or
- a current copy of its registrations from the USPTO’s electronic database; or
- introduced the registrations through its notice of reliance or through its witnesses during the testimony period
Although Opposer did submit copies of its registrations with its brief, the Board held that it was too late in the proceeding to do so and therefore the registrations were inadmissible. In addition, the Board ruled that the Opposer failed to establish its standing but nonetheless recognized Opposer’s standing to bring its opposition based on admissions in Applicant’s answers. In the end, however, Opposer’s failure to present admissible evidence of its registrations or prior use doomed its Opposition without it ever proceeding to a decision on the merits.
The lesson? Always be sure to follow the rules as found in the Trademark Board Manual of Procedure.