NY SHOOTS ITS FOOT IN FRONT OF THE TTAB

Everyone is familiar with the advertising slogan I ♥ NY. It is subject of multiple Trademark Registrations. Therefore it would seem filing an opposition before the Trademark Trial and Appeals Board (TTAB) to the intended registration of I ♥ NC would be a no brainier. (A good question is how did this get by the trademark examiner.)

However, the State of New York stumbled badly in attempting to introduce evidence into the record. In fact, New York could not even get their own prior trademark registrations into the record. This was in spite of the applicant (I ♥ NC) admitting to the prior New York trademark registrations. The applicant appeared pro se.

What is also puzzling is that the TTAB has a published set of procedures governing all aspects of practice in trademark opposition or cancellation disputes.

In regard to the NY trademark registrations, the rules require that two copies be offered, provided the copies are prepared by the USPTO showing both the current title to the registration.

Another area that caused NY to stumble over was the practice offering evidence under a “Notice of Reliance”. See §704.02 of the TBMP. The notice of reliance is essentially a cover sheet and places the other party that the offeror that it intends to rely upon the listed documents. Unfortunately, it is applicable only to official records and printed publications. NY attempted to use the procedure to introduce copies of web pages and copies of declarations submitted in a prior summary judgment.