[FEL-L] Long Island Ocelot Club Trademark

[Jeanne Hall]

In 2002 the LIOC-Endangered Species Conservation Federation embarked on
organizational changes including the name change to FCF.

At that time, some of the members chose to create the Long Island Ocelot
Club and I filed for Federal trademark on the name on behalf of
the Long Island Ocelot Club (2002).

This trademark was granted to the Long Island Ocelot Club (2002) and
published by the USPTO to allow anyone who opposed the granting of the
trademark to file an opposition.  The FCF, aka LIOC-Endangered Species
Conservation Federation, filed an opposition in April 2004.

I have been representing the Long Island Ocelot Club in the Opposition
proceedings and Lynn Culver has been representing the FCF during the entire
time of the proceedings (2002-2007).

The matter has now been settled by the USPTO Trademark Trial and Appeal
Board.

The FCF's Opposition has been dismissed.

Below is the statement by the Judge.

The document and all information on the proceedings can be found on the
USPTO websites.
(Long Island Ocelot Club (2002) is the applicant and FCF is the Opposer in
this document)

Hopefully, all who have been involved or concerned about this issue can now
put concerns aside and move forward and Lynn and I can shake hands and move
on to other issues just as any representatives or lawyers do in any other
legal proceeding or court of law.

Jeanne


http://ttabvue.uspto.gov/ttabvue/v?pno=91160291&pty=OPP&eno=28
Mailed: July 9, 2007
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
LIOC Endangered Species Conservation Federation
v.
Long Island Ocelot Club, 2002
_____
Opposition No. 91160291
to application Serial No. 76461860
filed on October 28, 2002
_____
LIOC Endangered Species Conservation Federation, appearing
pro se.
Long Island Ocelot Club, 2002, appearing pro se.
______
Before Hohein, Hairston and Wellington, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Long Island Ocelot Club, 2002 (applicant) seeks to
register the mark LONG ISLAND OCELOT CLUB in standard
character form for "educational services, namely, providing
training in the field of all species of exotic felines;
organizing sporting exhibitions featuring all species of
exotic felines; [and] organizing community cultural events

featuring all species of exotic felines" in International
Class 41.1
LIOC Endangered Species Conservation Federation
(opposer) has filed a notice of opposition against
registration of applicant's mark on the grounds that (1)
applicant's mark is likely to cause confusion with opposer's
previously used mark LONG ISLAND OCELOT CLUB for membership
in an organization of feline owners, bi-monthly newsletters,
Internet website, annual convention and members only
Internet discussion list under Trademark Act Section 2(d),
15 U.S.C., Section 1052(d), and (2) applicant committed
fraud upon the USPTO.
Applicant, in its answer, has effectively denied the
allegations in the notice of opposition.
We first must address several evidentiary matters. On
August 9, 2006, opposer filed a notice of reliance on (a)
applicant's responses to opposer's interrogatories, requests
for admissions, and requests for production of documents;
1 Application Serial No. 76461860, filed October 28, 2002, based
on an assertion of use in commerce under Trademark Act Section
1(a), 15 U.S.C. Section 1051 (a), and alleging September 4, 2002
as the date of first use and date of first use in commerce. The
application contains a disclaimer of the words OCELOT CLUB apart
from the mark as shown.

(b) documents produced by applicant in response to opposer's
requests for production of documents, (c) applicant's answer
to the notice of opposition, (d) applicant's brief in
response to opposer's motion for summary judgment,
(e) documents produced by opposer in response to applicant's
request for production of documents; and (f) the affidavit
of Lynn Culver, opposer's director of legal affairs, and
additional documents produced by opposer in response to
applicant's request for production of documents. On October
16, 2006, applicant filed a notice of reliance wherein it
states that it wishes to rely upon (a) the file of the
involved application, and (b) "the statement of reliance
filed by Opposer." On November 27, 2006, opposer filed a
rebuttal notice of reliance on (a) an affidavit of Ms.
Culver and (b) additional documents produced by opposer in
response to applicant's request for production of documents.
Finally, on January 8, 2006, applicant filed a motion to
"dismiss" opposer's rebuttal notice of reliance as untimely.
With respect to opposer's initial notice of reliance,
we note that a party may not ordinarily introduce into
evidence by notice of reliance (a) an adverse party's
response to a summary judgment motion, or (b) its own
responses to an adverse party's interrogatories, requests
for admissions, and requests for production of documents.
See Trademark Rule 2.122(e); See also TBMP §§704.10 and

704.11 (2d ed. rev. 2004) regarding the introduction of
responses to discovery requests. However, in this case,
applicant has indicated that it wishes to rely on the
"statement of reliance filed by Opposer." (Applicant's
Notice of Reliance, October 16, 2006). Thus, the improper
materials accompanying opposer's initial notice of reliance
are considered to have been stipulated into the record by
applicant. See Oxford Pendaflex Corp. v. Rolodex Corp., 204
USPQ 249 (TTAB 1979).
Further, to the extent that opposer seeks to rely on
the pleadings herein and applicant seeks to rely on the
involved application, this is unnecessary because the
pleadings and the involved application are automatically of
record without action by either party.
With respect to opposer's rebuttal notice of reliance,
as noted, it was filed with the USPTO on November 27, 2006.
The most recent trial order in this case indicates that
opposer's rebuttal testimony period closed on November 24,
2006. Inasmuch as opposer's rebuttal notice of reliance was
filed outside this period, and without benefit of a
certificate of mailing, it is clearly untimely. We construe
applicant's request to "dismiss" opposer's rebuttal notice
of reliance as a motion to strike. The motion is
accordingly granted, and the materials accompanying
opposer's rebuttal notice of reliance will be given no

further consideration. We should add that even if opposer's
rebuttal notice of reliance had been timely filed, the
accompanying materials would have been given no
consideration because they were not filed in compliance with
the rules of practice. In a Board inter partes proceeding,
a party may submit testimony by affidavit only by written
stipulation with the adverse party, approved by the Board.
See Trademark Rule 2.123(b). See also TBMP §528.05(b) (2d
ed. rev. 2004). In this case, there is no indication that
the parties entered into any stipulation allowing opposer to
introduce trial testimony by affidavit. Thus, the affidavit
of Ms. Culver was not filed in compliance with the rules.
Further, as to the documents which opposer produced in
response to applicant's request for production of documents,
as previously noted, such documents do not fall under the
provisions of Trademark Rule 2.122(e).2 In sum, inasmuch as
opposer's rebuttal notice of reliance was not timely filed,
it will be given no further consideration. See Trademark
Rule 2.123(1). See also Original Appalachian Artworks, Inc.
v. Streeter, 3 USPQ2d 1717, 1717 n.3 (TTAB 1987)[a party may
not reasonably presume evidence is of record when that
evidence is not offered in accordance with the applicable
rules of practice].
2 The documents include, inter alia, newsletters and
correspondence which do not constitute printed publications under
Trademark Rule 2.122(e).

Finally, and in any event, it is obvious that in the
circumstances of this case, in which the sole evidence
pertaining to opposer's case-in-chief consists of the
evidence which has in effect been stipulated into the record
by the parties, opposer cannot be permitted to offer as
"rebuttal" evidence any additional evidence which simply
serves to supplement its case-in-chief, as is the case
herein. Accordingly, the evidence submitted with opposer's
rebuttal notice of reliance constitutes improper rebuttal
and will not be given any further consideration.
The record therefore consists of the pleadings, the
file of the involved application, opposer's initial notice
of reliance on the materials outlined infra, and applicant's
notice of reliance. Only opposer filed a brief on the case.
We turn then to the threshold issue of opposer's
standing. Section 13 of the Trademark Act, 15 U.S.C.
Section 1063, provides that an opposition may be brought by
"[a]ny person who believes that he would be damaged by the
registration of a mark on the principal register . . ." The
term "damage" as used in Section 13 relates to a party's
standing to file an opposition. In order to establish
standing, a party must plead and prove a "real interest" in
the case, that is, a personal interest in the outcome of the
proceeding beyond that of the general public or a mere

intermeddler. See Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1317, 209 USPQ 41 (CCPA 1982).
Opposer has pleaded a real interest in this case by
virtue of its allegation that it uses the mark LONG ISLAND
OCELOT CLUB for membership in an organization of feline
owners, bi-monthly newsletters, Internet website, annual
convention and members only Internet discussion list.
However, opposer has failed to properly introduce any
testimony or evidence to prove its standing. So as to be
perfectly clear, in the absence of corroborating testimony,
statements in opposer's brief and a cease and desist letter,
and uses of the mark LONG ISLAND OCELOT CLUB in newsletters
are not proof of opposer's use of the mark. Moreover, this
is not a case where we can say that there is no issue as to
opposer's standing as a result of admissions in applicant's
answer. Rather, as previously indicated, applicant has
effectively denied the allegations of the opposition. Under
the circumstances, we find that opposer has failed to prove
its standing, that is, opposer has failed to prove that it
has a real interest in this proceeding.

Since opposer has not established its standing to
maintain this proceeding, opposer has shown no right to
relief on its claims of likelihood of confusion and fraud.

Decision: The opposition is dismissed.