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`Baxley
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
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`January 15, 2021
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`Opposition No. 91265770
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`Devonna W Johnson
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`v.
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`Comercializadora Petexpress, Sa De Cv
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`Andrew P. Baxley, Interlocutory Attorney:
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`Pursuant to Fed. R. Civ. P. 26(f) and Trademark Rules 2.120(a)(1) and (2), the
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`parties to this proceeding conducted a discovery conference with the parties on
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`January 11, 2021, after Applicant requested Board participation by telephone on
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`January 6, 2021. Present during the conference were Opposer Devonna W. Johnson,
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`Applicant’s attorney Michael P. Eddy, and Board attorney Andrew P. Baxley.
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`The Board is an administrative tribunal that is empowered solely to determine
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`the right to register and which has no authority to determine the right to use a mark
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`or any infringement or unfair competition issues. See TBMP § 102.01 (June 2020). A
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`Board inter partes proceeding, such as this case, is similar to a civil action in a
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`Federal district court. There are pleadings, a wide range of possible motions,
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`discovery (a party’s use of discovery depositions, interrogatories, document requests,
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`and requests for admission to ascertain the facts underlying its adversary's case), a
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`trial, and briefs, followed by a decision on the case.
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`Opposition No. 91265770
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`The Board does not preside at the taking of testimony. Rather, all testimony is
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`taken out of the presence of the Board during the assigned testimony, or trial, periods,
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`and the written transcripts thereof, together with any exhibits thereto, are then filed
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`with the Board. No paper, document, or exhibit will be considered as evidence in the
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`case unless it has been introduced in evidence in accordance with the applicable rules.
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`The Board encourages the parties to discuss settlement. The Board is generous in
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`granting consented extensions of the schedule and per iods of suspension to
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`accommodate any settlement pursuits.
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`Any party filing an unconsented motion to extend or suspend should notify the
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`Board by telephone upon the filing thereof so that such motion can be resolved
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`promptly by telephone conference. See Trademark Rule 2.120(i)(1); TBMP §
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`502.06(a). The parties should review the Trademark Board Manual of Procedure
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`(TBMP)
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`and
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`the
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`Trademark
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`Rules
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`of
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`Practice,
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`online
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`at
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`https://www.uspto.gov/trademarks-application-process/trademark-trial-and-appeal-
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`board. The Board expects all parties appearing before it, whether or not they are
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`represented by counsel, to comply with the Trademark Rules of Practice and where
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`applicable, the Federal Rules of Civil Procedure.
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`The Board’s standard form protective order is in effe ct in this proceeding to govern
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`the exchange of confidential information and materials. See Trademark Rule 2.116(f).
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`The
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`standard
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`protective
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`order
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`is
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`online
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`at
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`https://www.uspto.gov/sites/default/files/documents/Standard%20Protective%20Ord
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`er_02052020.pdf. While Opposer is appearing pro se, she may not review information
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`2
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`Opposition No. 91265770
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`designated “confidential – attorney’s eyes only” or “trade secret/commercially
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`sensitive.” See TBMP § 412.01.
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`Neither party may serve discovery requests nor file a motion for summary
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`judgment, except on certain limited grounds not at issue in this case, until that party
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`has served its initial disclosures. See Trademark Rules 2.120(a)(3) and 2.127(e)(1). If
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`the parties become involved in any other litigation, they should notify the Board
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`immediately so that the Board can take appropriate action. See Trademark Rule
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`2.117(a); TBMP §§ 510.02 and 511.
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`All service must be made by e-mail, unless otherwise stipulated. See Trademark
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`Rule 2.119. The parties’ e-mail addresses of record are petreligionbrand@gmail.com
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`and road2judah@yahoo.com for Opposer and meddy@patent.org for Applicant.
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`In this proceeding, Applicant seeks to register the mark PET RELIGION for goods
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`in International Class 18 and services in International Class 35. In the notice of
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`opposition to registration of Applicant’s mark in International Class 35 only,1 1
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`TTABVUE, Opposer adequately alleges entitlement to pursue a cause of action 2 and
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`1 The services in International Class 35 are: “On-line retail store services featuring pet foods,
`pet supplements, pet beds and blankets, pet toys, pet bowls and utensils, pet jewelry and
`clothing, pet strollers, pet care products including brushes, shampoos and odor removers,
`backpacks for pets, pet diapers and bags for disposing of pet waste, pet accessories including
`leashes and collars; Retail store services featuring pet foods, pet supplements, pet beds and
`blankets, pet toys, pet bowls and utensils, pet jewelry and clothing, pet strollers, pet care
`products including brushes, shampoos and odor removers, backpacks for pets, pet diapers
`and bags for disposing of pet waste, pet accessories including leashes and collars.”
` The time to oppose registration of Applicant’s mark in International Class 18 has expired.
`See Trademark Act Section 13(a), 15 U.S.C. § 1063(a); Trademark Rule 2.101 et seq. Any
`action against the involved application in that class cannot be commenced until after the
`mark becomes registered in that class. See Trademark Act Section 14, 15 U.S.C. § 1064;
`Trademark Rule 2.111 et seq.
`2 Our decisions have previously analyzed the requirements of Trademark Act Sections 13 and
`14, 15 U.S.C. §§ 1063 and 1064, in terms of “standing.” Mindful of the Supreme Court’s
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`3
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`Opposition No. 91265770
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`a claim of likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. §
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`1052(d), based on her prior use of the same mark for “pet products.”3 Applicant in its
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`answer denied the salient allegations of the notice of opposition and provided
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`amplifications of those denials, 4 TTABVUE.
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`To prevail on the Section 2(d) claim, Opposer must establish that: (1) she is the
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`prior user of the mark PET RELIGION for “pet products;” and (2) contemporaneous
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`use of the parties’ respective marks on the goods and services would be likely to cause
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`confusion, mistake or to deceive consumers. See Fram Trak Indus., Inc. v. WireTracks
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`LLC, 77 USPQ2d 2000, 2004 (TTAB 2006). Two key factors in deciding likelihood of
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`confusion issues are the degree of similarity of the parties’ marks and the degree of
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`similarity of their respective goods and services. See id., 77 USPQ2d at 2004-05. The
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`question of registrability of Applicant’s mark must be decided on the basis of the
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`recited services in International Class 35, rather than Applicant’s specific manner of
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`use of the involved mark in connection with those services. See Octocom Sys. Inc. v.
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`Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
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`direction in Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125-26
`(2014), we now refer to this inquiry as entitlement to a statutory cause of action. Despite the
`change in nomenclature, our prior decisions and those of the Federal Circuit interpreting
`Sections 13 and 14 remain equally applicable.
`3 Opposer separately alleges priority of use. However, priority is an element of a likelihood of
`confusion claim. See Trademark Act Section 2(d). Although Opposer did not expressly allege
`use in commerce, purely intrastate use may establish the priority element of a Section 2(d)
`claim. See Nat’l Cable Tele. Ass’n Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19
`USPQ2d 1424, 1429 n.4 (Fed. Cir. 1991).
` Opposer indicated in the ESTTA cover form for the notice of opposition that she intends to
`allege a claim of nonownership, but did not plead that claim in the text of the notice of
`opposition. Merely mentioning a claim in the ESTTA cover form for the notice of opposition
`is insufficient to plead that claim. See Embarcadero Techs. Inc. v. RStudio Inc., 105 USPQ2d
`1825, 1827 n.2 (TTAB 2013). Accordingly, the notice of opposition alleges a Section 2(d) claim
`only.
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`4
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`Opposition No. 91265770
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`In Applicant’s answer, 4 TTABVUE, Applicant denies the salient allegations of
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`the notice of opposition and sets forth affirmative defenses. As a first de fense,
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`Applicant alleges failure to state a claim. However, in view of the above
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`determination that Opposer has adequately alleged entitlement to a cause of action
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`and a valid ground for denying registration of Applicant’s mark, this defense is sua
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`sponte stricken. See Fed. R. Civ. P. 12(f); Fair Indigo LLC v. Style Conscience, 85
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`USPQ2d 1536, 1538 (TTAB 2007) (elements for stating a claim); TBMP § 506.01. As
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`a second defense, Applicant amplifies its denials and provides further information
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`concerning its intended defense of the Section 2(d) claim. See Order of Sons of Italy
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`in America v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1223 (TTAB 1995)
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`(amplification of applicant’s denial of opposer’s claims).
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`Given the relatively straightforward nature of this proceeding, the parties should
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`consider accelerated case resolution (ACR). The parties should review Board
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`materials
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`regarding ACR at https://www.uspto.gov/trademarks-application-
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`process/trademark-trial-and-appeal-board. If the parties want to convert this case to
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`ACR, they should notify the Board as soon as possible.
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`Dates otherwise remain as set in the Board notice instituting this proceeding, 2
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`TTABVUE. The Board thanks the parties for their participation.
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`5
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