Sanyo Watch Co., Inc. v. Sanyo Elec. Co., Ltd., 82-554

• Decision Date: 29 October 1982
• Docket Number: No. 82-554,82-554
• Citation: 691 F.2d 1019,215 USPQ 833
• Parties: SANYO WATCH CO., INC., Appellant, v. SANYO ELECTRIC CO., LTD., Appellee. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1019

691 F.2d 1019

215 U.S.P.Q. 833

SANYO WATCH CO., INC., Appellant, v. SANYO ELECTRIC CO., LTD., Appellee.

Appeal No. 82-554.

United States Court of Appeals, Federal Circuit.

Oct. 29, 1982.

Myron Amer, Mineola, N.Y., attorney of record, for appellant. Bauer & Amer, P.C., Mineola, N.Y., of counsel.

Charles M. Marmelstein, Washington, D.C., attorney of record, for appellee. Armstrong, Nikaido, Marmelstein & Kubovcik, Washington, D.C., of counsel.

Before DAVIS, BENNETT and NIES, Circuit Judges.

NIES, Circuit Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board (board) dismissing Opposition No. 64,079 with prejudice, pursuant to a motion under 37 CFR 2.132(a), ¹ because of appellant's failure to offer evidence to support the allegations of the Notice of Opposition. Appellant contends that the board erred in entering judgment, as by default, because of an admission by appellee in its Answer. We affirm.

Facts

This appeal relates to an opposition to application serial No. 177,457, filed July 7, 1978, by Sanyo Electric Co., Ltd., a Japanese corporation (hereinafter Sanyo/Japan), to register the trademark SANYO for "digital electronic watches; watch movements; watch cases; watch hands and parts and accessories; and all other watches and clocks." The application sets forth an alleged date of first use in July, 1976. Sanyo Watch Co., Inc., a New York corporation (hereinafter Sanyo/New York), filed a Notice of Opposition to the above application alleging that it had prior use of SANYO WATCH for watches and that Sanyo/Japan had abandoned its rights by failing to use the mark SANYO for the above goods for a period of at least two years preceding the Included in the Notice of Opposition was the following paragraph:

filing of the opposition. Likelihood of confusion between the respective uses was asserted.

3. Opposer has applied to register SANYO WATCH for watches under Application Serial No. 193,299 filed November 14, 1978.

In response to the Notice, Sanyo/Japan (appellee) admitted that confusion between the respective uses of the parties was likely and admitted the allegations of paragraph 3 quoted above. All other allegations were denied.

Sanyo/New York (appellant) served interrogatories upon appellee which, appellant does not dispute, were answered. During appellant's testimony period, which closed September 25, 1981, appellant submitted no evidence. On October 9, 1981, appellee filed a motion under 37 CFR 2.132(a) for a judgment by default because of such failure. Appellant filed a response to the motion on October 16, 1981, asserting that the pleadings raised factual and legal issues which made it inappropriate to grant the motion. On October 23, 1981, the board issued an order to show cause why judgment should not be entered against appellant. No reply to the order was made by appellant.

On December 11, 1981, the board entered judgment against appellant and dismissed the opposition with prejudice. In its opinion, the board reviewed the proceedings and concluded that Sanyo/New York had failed to meet its burden of proof in the opposition.

In a request for reconsideration, appellant asserted that it was unable to prove abandonment except by cross-examination of witnesses which appellee should call to prove its use and that appellee's motion was premature, having been filed before appellee "has declared how it proves use prior to opposer." Appellant further asserted that its application was made of record by the pleadings and appellant was, therefore, not required to proffer any additional proof.

OPINION

It is undisputed that appellant failed to submit any evidence during its testimony period. Accordingly, under 37 CFR 2.132(a) appellee was entitled to seek an immediate judgment from the board. Thereupon, the board properly issued an order to show cause why judgment should not be rendered against appellant and in rendering its judgment considered all of the circumstances of the case.

In essence, it is appellant's position that appellant has established use of the mark SANYO WATCH for watches since November 14, 1978, and that it is incumbent upon appellee to prove use prior to that date. Appellant fails on both points.

As an initial matter, we are in agreement with the board that appellant's "application," meaning the official application file, is not in evidence. Unlike the file of the opposed application, which is made part of the record by rule, ² the application of an opposer must be brought into the record as any other evidence.

Moreover, even if appellant's position were correct that the admission placed the application into evidence, an application file of an opposer, unlike the registration of an opposer, does not establish an opposer's prima facie rights in the mark. Thus, the decision in Tiffany & Co. v. Columbia Industries, Inc., 455 F.2d 582, 173 USPQ 6 (Cust. & Pat.App.1972), with respect to an admission by the adverse party of the existence of an opposer's registration, affords no support for appellant here.

Finally, if it were correct that the pleadings established that appellant had been using SANYO WATCH since at least November 14, 1978, this appeal would be...