Tiffany and Company v. Columbia Industries, Inc.

• Decision Date: 02 March 1972
• Docket Number: Patent Appeal No. 8643.
• Citation: 173 USPQ 6,455 F.2d 582
• Parties: TIFFANY AND COMPANY, Appellant, v. COLUMBIA INDUSTRIES, INC., Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

173 USPQ 6, 455 F.2d 582 (1972)

TIFFANY AND COMPANY, Appellant, v. COLUMBIA INDUSTRIES, INC., Appellee.

Patent Appeal No. 8643.

United States Court of Customs and Patent Appeals.

March 2, 1972.

Milo G. Coerper, Washington, D. C., attorney of record, for appellant; Coudert Brothers, Washington, D.C., of counsel.

John C. Stahl, San Antonio, Tex., attorney of record, for appellee.

Before RICH, ALMOND, BALDWIN, and LANE, Judges, and ROSENSTEIN, Judge, United States Customs Court, sitting by designation.

LANE, Judge.

This is an appeal from the decision of the Trademark Trial and Appeal Board¹ dismissing the opposition on the ground that opposer had neither taken testimony nor offered evidence and had therefore failed to prove its case. We reverse and remand the case for further proceedings consistent herewith.

Appellee had filed an application for the registration of TIFFANY for bowling balls.² The trademark examiner initially refused registration on the ground that as applied to appellee's goods, the mark so resembles the mark TIFFANY for playing-cards and chips and cribbage-boards, Registration No. 137,722, registered November 30, 1920, by Tiffany & Company, "as to be likely * * * to cause confusion, or to cause mistake, or to deceive."³ A copy of the cited registration was attached to the examiner's action. Appellee successfully urged that there was no likelihood of confusion. The mark was published, and appellant filed a notice of opposition. Opposer's pleadings alleged ownership of, inter alia, Registration No. 137,722 and asserted that "there is likelihood to cause confusion in the minds of customers and impair the general good will which Opposer has built up since 1868 for the trademarks `TIFFANY' and `TIFFANY & CO.'" Appellee denied any likelihood of confusion, but did state that it "admits the registrations referred to in the notice of opposition."

Testimony periods were fixed, and upon the passage of opposer's closing testimony date, appellee moved for dismissal of the opposition under Rule 2.132(a)⁴ of the Trademark Rules of Practice on the ground that the testimony period had expired without opposer having taken testimony or having offered any evidence. The Patent Office required appellant to show cause why judgment by default should not be entered against it. Appellant responded by noting that the time for filing briefs had not expired, alleging a meritorious cause, and moving for a reopening of the testimony period since it was through inadvertence that opposer failed to take testimony. After further replies by appellee and appellant, the Trademark Trial and Appeal Board rendered its decision holding that inadvertence was not sufficient reason to reopen the testimony period. The board then said:

When a party predicates its claim of damage upon ownership of pleaded registrations, it may make these registrations of record by furnishing two copies of each along with its notice of opposition in accordance with Rule 2.122(b) or by filing a notice of reliance thereon in which the registrations in question are specified and by submitting copies of these registrations to the Patent Office before the close of its testimony period in accordance with the provisions of Rule 2.123(c).

Inasmuch as opposer did not file copies of its pleaded registrations along with its complaint and since applicant in its answer to the notice of opposition did not concede opposer\'s allegations of ownership thereof, opposer\'s record consists only of its pleadings. See: Roman Meal Company v. Hunt Foods and Industries, Inc., 131 USPQ 236 (TT & A Bd., 1961).

Having failed to take any testimony or to introduce any other evidence during the time prescribed therefor, opposer has not proved its case.

On this appeal, appellant contends that the board erred in refusing to consider Registration No. 137,722 to be in evidence. Appellant wishes to have the board consider the merits of its opposition and determine whether or not the mark TIFFANY as applied to bowling balls is likely to cause confusion with the registered mark TIFFANY for playing-cards and chips and cribbage-boards. The sole issue before us is, therefore, whether the board was correct in concluding that appellant's registered mark is not in evidence.

It is appellant's position that Registration No. 137,722 is in evidence on either of two theories. Appellant first relies upon Rule 2.122(a) which reads in relevant portion:

Matters in evidence. (a) The files * * * of the application against which an opposition is filed * * * form part of the record of the proceeding without any action by the parties, and may be referred to for any relevant and competent purpose.

Appellant contends that because its registration is in the file of appellee's application by virtue of the examiner's initial refusal to register TIFFANY for bowling balls on the ground of likelihood of confusion with TIFFANY for playing-cards and chips and cribbage-boards, the mark is likewise in evidence in this opposition. Alternatively, appellant regards appellee's admission of "the registrations referred to in the notice of opposition" as a concession of appellant's ownership of the mark. Appellant distinguishes the Roman Meal case cited by the board in this case on the ground that there the applicant had denied opposer's allegation of ownership.

In the brief before this court, appellee basically adopts the position taken by the board. Appellee additionally urged at oral hearing that appellant should be estopped from raising these arguments since they were not, it is asserted, raised below.

OPINION

The board recognized that an opposition can be predicated solely on a prior registration, and neither testimony need be taken nor further evidence introduced since under § 7(b) of the Lanham Act, 15 U.S.C. § 1057(b), a certificate of registration is "prima facie evidence of the validity of the registration, registrant's ownership of the mark, and registrant's exclusive right to use the mark in commerce in connection with the goods or services...