`
`Baxley
`
`
`
`
`
`
`
`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
`
`July 1, 2021
`
`Opposition No. 91268921
`
`The Diva Lawyers Social Club Inc.
`
`v.
`
`
`Lonita K. Baker
`
`
`Andrew P. Baxley, Interlocutory Attorney:
`
`
`Pursuant to Fed. R. Civ. P. 26(f) and Trademark Rules 2.120(a)(1) and (2), the
`
`parties to this proceeding conducted a discovery conference with the parties on July
`
`1, 2021, after Opposer requested Board participation by telephone on June 21, 2021,
`
`5 TTABVUE. Present during the conference were Opposer’s attorney Atyria S.
`
`Clark,1 Applicant’s attorney Andrea H. Evans, and Board attorney Andrew P. Baxley.
`
`The Board is an administrative tribunal empowered solely to determine the right
`
`to register; it has neither injunctive authority nor authority to determine the right to
`
`use a mark or any infringement or unfair competition issues. See TRADEMARK BOARD
`
`MANUAL OF PROCEDURE (TBMP) § 102.01 (June 2021). A Board inter partes
`
`proceeding, such as this case, is similar to a civil action in a Federal district court.
`
`There are pleadings, a wide range of possible motions, discovery (a party’s use of
`
`
`1 Ms. Clark also states in the notice of opposition that she is an “officer and director” of
`Opposer, 1 TTABVUE 3.
`
`

`

`Opposition No. 91268921
`
`
`discovery depositions, interrogatories, document requests, and requests for admission
`
`to ascertain the facts underlying its adversary's case), a trial, and briefs, followed by
`
`a decision on the case.
`
`The Board does not preside at the taking of testimony. Rather, all testimony is
`
`taken out of the presence of the Board during the assigned testimony, or trial, periods,
`
`and the written transcripts thereof, together with any exhibits thereto, are then filed
`
`with the Board. No paper, document, or exhibit will be considered as evidence in the
`
`case unless it has been introduced in evidence in accordance with the applicable rules.
`
`The Board encourages the parties to discuss settlement. The Board is generous in
`
`granting consented extensions of the schedule and periods of suspension to
`
`accommodate any settlement pursuits. However, the Board will not suspend for
`
`settlement negotiations other than by agreement of the parties.
`
`Any party filing an unconsented motion to extend or suspend should notify the
`
`Board by telephone upon the filing thereof so that such motion can be resolved
`
`promptly by telephone conference. See Trademark Rule 2.120(j)(1), 37 C.F.R. §
`
`2.120(j)(1); TBMP § 502.06(a). The parties should review the TBMP and the
`
`Trademark Rules of Practice, online at https://www.uspto.gov/trademarks/ttab. The
`
`Board expects all parties appearing before it, whether or not they are represented by
`
`counsel, to comply with the Trademark Rules of Practice and where applicable, the
`
`Federal Rules of Civil Procedure.
`
`The Board’s standard form protective order is in effect in this proceeding to govern
`
`the exchange of confidential information and materials. See Trademark Rule 2.116(g).
`
`
`
`2
`
`

`

`Opposition No. 91268921
`
`
`The
`
`standard
`
`protective
`
`order
`
`is
`
`available
`
`online
`
`at
`
`https://www.uspto.gov/trademarks/ttab. As an in-house counsel, Opposer’s attorney
`
`may not be able to review information and documents designated “trade
`
`secret/commercially sensitive” so long as she is involved with Opposer’s competitive
`
`decision-making activities. See Georgia-Pacific Corp. v. Solo Cup Co., 80 USPQ2d
`
`1950, 1951-54 (TTAB 2006).
`
`Neither party may serve discovery requests nor file a motion for summary
`
`judgment, except on certain limited grounds not at issue in this case, until that party
`
`has served its initial disclosures. See Trademark Rules 2.120(a)(3) and 2.127(e)(1). If
`
`the parties become involved in any other litigation, they should notify the Board
`
`immediately so that the Board can take appropriate action. See Trademark Rule
`
`2.117(a); TBMP §§ 510.02 and 511.
`
`All service must be made by e-mail, unless otherwise stipulated. See Trademark
`
`Rule 2.119. The parties’ e-mail addresses of record are divalawyers@gmail.com and
`
`atyriasclark@gmail.com
`
`for Opposer and andrea.evans@evansiplaw.com
`
`for
`
`Applicant.
`
`Applicant filed an intent-to-use application to register the mark DIVA
`
`ATTORNEY LONITA BAKER and design in the following form,
`
`,
`
`for “Providing legal information, namely, legal information about civil rights,
`
`personal injury, business law, and criminal law proffered to clients hired by an
`
`individual attorney and not pertaining to membership of any social club organization”
`
`
`
`3
`
`

`

`Opposition No. 91268921
`
`
`in International Class 45.2 In the notice of opposition, 1 TTABVUE, Opposer
`
`sufficiently alleges its entitlement to a statutory cause of action3 and a claim of
`
`likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based
`
`on its registered collective membership mark DIVA LAWYERS to “[i]ndicat[e]
`
`membership in a social club organization of female attorneys” in International Class
`
`200.4 See Trademark Act Section 2(d), 15 U.S.C. § 1052(d); Cunningham v. Laser Golf
`
`
`2 Application Serial No. 87939686, filed May 29, 2018. The application includes a disclaimer
`of ATTORNEY, a statement that “[t]he [n]ame ‘LONITA BAKER’ identifies a living
`individual whose consent is of record,” and the following description of the mark: “The mark
`consists of the stylized wording "DIVA ATTORNEY" in black with pink outline with a design
`of silver scales of justice in background with a black silhouette of woman wearing a pink skirt
`in between the words ‘DIVA’ and ‘ATTORNEY.’ Sitting to the bottom right of the woman is
`the wording ‘LONITA BAKER’ in pink. The white in the drawing represents background
`areas only and is not a feature of the mark.” The colors pink, black and silver are claimed as
`features of the mark.
`3 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the
`Trademark Act, 15 U.S.C. §§ 1063 and 1064, under the rubric of “standing.” Despite the
`change in nomenclature, our prior decisions and those of the Federal Circuit interpreting
`Section 13 and 14 remain applicable. See Spanishtown Enters., Inc. v. Transcend Resources,
`Inc., 2020 USPQ2d 11388, at *2 (TTAB 2020).
`4 Registration No. 5769971, issued June 4, 2019, based on an application filed September 4,
`2015 and alleging January 13, 2014 as the date of first use anywhere and May 1, 2018 as the
`date of first use in commerce. The registration includes a disclaimer of LAWYERS.
` To prevail on its Section 2(d) claim, Opposer must establish that: (1) it is the prior user of,
`or owns a registration for, its pleaded mark(s); and (2) contemporaneous use of the parties’
`respective marks on their respective goods would be likely to cause confusion, mistake or to
`deceive consumers. See Trademark Act Section 2(d); King Candy Co., 182 USPQ at 109-10;
`Fram Trak Indus., Inc. v. WireTracks LLC, 77 USPQ2d 2000, 2004 (TTAB 2006). Submission
`of a status and title copy of its pleaded registration obtained from USPTO records will
`generally suffice to establish its entitlement to a cause of action and remove priority as an
`issue in this case with regard to the registered marks for the goods identified in those
`registrations. See Trademark Rule 2.122(d); Cunningham, 55 USPQ2d at 1844.
` Two key factors in deciding likelihood of confusion issues are the degree of similarity of the
`parties’ marks and the degree of similarity of their respective goods and/or services. See Fram
`Trak Indus. Inc., 77 USPQ2d at 2004-05. The question of registrability of Applicant’s mark
`must be decided on the basis of the identification of goods set forth in the involved application
`and the pleaded registrations, regardless of what the record may reveal as to the particular
`nature of those goods, the particular channels of trade or the class of purchasers to which
`sales of the goods and services are directed. See Octocom Sys. Inc. v. Houston Computers
`Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
`
`
`
`4
`
`

`

`Opposition No. 91268921
`
`
`Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); King Candy Co. v.
`
`Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109-10 (CCPA 1974).
`
`Applicant in its answer denied the salient allegations of the notice of opposition and
`
`asserts an an affirmative defense that Opposer lacks standing, 4 TTABVUE.
`
`Upon further review of the pleadings after the discovery conference, the Board
`
`notes the following. To begin with, lack of standing, now known as entitlement to a
`
`statutory cause of action, is not a defense. See Blackhorse v. Pro Football Inc., 98
`
`USPQ2d 1633, 1637 (TTAB 2011). Rather, a plaintiff must establish entitlement to a
`
`statutory cause of action as a threshold issue in every inter partes case. See
`
`Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020
`
`USPQ2d 10837, at *3 (Fed. Cir. 2020). Accordingly, that defense is stricken from
`
`Applicant’s answer. See Fed. R. Civ. P. 12(f); TBMP § 506.01.
`
`Opposer also sets forth two insufficiently pleaded claims. Opposer first alleges
`
`that Applicant “has not established a bona fide intent to use” her involved mark for
`
`the pleaded services. 1 TTABVUE 4 and 7. Trademark Act Section 1(b), 15 U.S.C. §
`
`1051(b), states that “a person who has a bona fide intention, under circumstances
`
`showing the good faith of such person, to use a trademark in commerce” may apply
`
`for registration of the mark. An applicant’s bona fide intent to use a mark must reflect
`
`an intention that is firm, though it may be contingent on the outcome of an event
`
`such as market research or product testing, and must reflect an intention to use the
`
`mark in the ordinary course of trade, and not merely to reserve a right in a mark. See
`
`
`
`
`
`
`
`5
`
`

`

`Opposition No. 91268921
`
`
`Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1506 n.7
`
`(TTAB 1993). In deciding whether a party has a bona fide intent to use a mark, the
`
`Trademark Act does not expressly impose “any specific requirement as to the
`
`contemporaneousness of an applicant’s documentary evidence corroborating its claim
`
`of bona fide intention. Rather, the focus is on the entirety of the circumstances, as
`
`revealed by the evidence of record.” See Lane Ltd. v. Jackson Int’l Trading Co., 33
`
`USPQ2d 1351, 1355 (TTAB 1994). However, this claim is insufficiently pleaded
`
`because Opposer has not provided fair notice of the factual basis therefor. See
`
`Ashcroft v. Iqbal, 555 U.S. 662, 678 (2009).
`
`Opposer also alleges false suggestion of a connection under Trademark Act Section
`
`2(a), 15 U.S.C. § 1052(a). The false suggestion of a connection ground emerged from
`
`the right to privacy and right of publicity. See In re Nieves & Nieves LLC, 113 USPQ2d
`
`1629, 1632 (TTAB 2015). A plaintiff alleging false suggestion of a connection must
`
`plead, and later prove, that (i) defendant’s mark is the same or a close approximation
`
`of plaintiff’s previously used name or identity; (ii) defendant’s mark would be
`
`recognized as pointing uniquely to plaintiff; (iii) plaintiff is not connected with the
`
`activities performed by defendant under the mark at issue; and (iv) plaintiff’s name
`
`or identity is of sufficient fame or reputation that when defendant’s mark is used on
`
`its goods or services, a connection with the plaintiff would be presumed. See Miller
`
`Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711, 1712-13 (TTAB 1993); Buffett
`
`v. Chi-Chi's, Inc., 226 USPQ 428, 429 (TTAB 1985). At a minimum, Opposer has not
`
`alleged facts which would indicate that Applicant’s mark would be recognized as
`
`
`
`6
`
`

`

`Opposition No. 91268921
`
`
`pointing uniquely to Opposer and that Opposer’s name or identity is of sufficient fame
`
`or reputation that when Applicant uses its involved mark on the recited services, a
`
`connection with the plaintiff would be presumed. In view of the foregoing, the Board
`
`strikes paragraphs 7, 8 and 17-20 from the notice of opposition.5 See Fed. R. Civ. P.
`
`12(f); TBMP § 506.01.
`
`Dates otherwise remain as set in the Board notice instituting this proceeding, 2
`
`TTABVUE. The Board thanks the parties for their participation.
`
`
`
`
`
`
`
`
`5 If Opposer believes that it has a factual basis for its insufficient claims and wants to replead
`them, its remedy is to file a motion for leave to file an amended notice of opposition. See Fed.
`R. Civ. P. 15(a); TBMP § 507.
`
`
`
`7
`
`