The Board dismissed this opposition to registration of the design mark shown below for air fresheners, finding that Opposer Julius Sämman (owner of the "Little Trees" design marks) failed to carry its burden of proof to show that applicants had not theirmark as of the filing date of the opposed application. Julius Sämman Ltd. v. Ibrahim Nasser and Serious Scents, Inc., Opposition No. 91210658 (October 31, 2016) [not precedential].

Click here to view the image.

Applicants did not introduce any testimony or other evidence during their assigned trial period, but they attached certain documents to their trial brief. The Board pointed out once again that materials attached to a trial brief can be given no consideration unless they were properly made of record during the time for taking testimony. See, e.g., TBMP Section 704.04(b).

Ibrahim Nasser filed the subject application on June 1, 2002, based on actual use. The Board observed that a Section 1(a) application is void ab initio if the mark was not in use in commerce at the time of filing. If an opposer establishes a prima facie case of non-use, the burden would shift to applicants to rebut that evidence.

In short, opposer bore the burden of proof to show by a preponderance of the evidence that Nasser was not using the applied-for mark at the time he filed the subject application.

Opposer relied on the deposition testimony of Mr. Nasser and on certain interrogatory responses. It claimed that Nasser's testimony regarding use was unclear. Nasser stated that he sold the goods "first in 2012, I think, 2012 or early 2013. I think 2012." The Board, however, discerned no admission that Mr. Nasser was not using the mark on the identified goods in June 2012.

Opposer argued that Nasser had no documents to prove use, but Nasser stated that he did. Applicants refused to produce them because they perceived the standard protective order to be insufficient. Opposer never moved to compel production.

Nasser's testimony indicated that he was at least advertising air freshener products under the mark. Although not enough to evidence actual trademark use, the advertising did support the assertion that the grenade design was in use.

In sum, the evidence presented by opposer did not create a prima facie showing that Mr. Nasser was not using the applied-for mark at the time of filing. The fact that applicants did not submit any evidence at trial is irrelevant because they did not have the burden of proof.

And so the Board dismissed the opposition.