IP Law Daily, TRADEMARK—TTAB: Opposition to JEWEL HUNTER mark was rejected in absence of entitlement to oppose the application, (Sep 13, 2022)

By Robert B. Barnett Jr., J.D.

Failure to include the phrase “under the laws of the United States of America” in declarations was fatal to the Chinese company’s opposition to registration of the mark JEWEL HUNTER.

A petition seeking to oppose an application by Superbox, Inc. to register the mark JEWEL HUNTER for computer games and smart phone app software filed by a Chinese company that allegedly had common law trademark rights to JEWEL HUNTER for an online game app was rejected because the Chinese company failed to establish that it was entitled to file the opposition, the Trademark Trial and Appeal Board has ruled. After the Board ruled that the first and second declarations by the Chinese company’s president failed to comply with the requirements of declarations testimony and that the third was untimely, the record lacked any proof of the Chinese company’s real interest in the proceedings and its reasonable belief of damages. An opposer is not entitled to rest on mere allegations in its complaint or arguments in its brief to prove entitlement (Shanghai Zhenglang Technology Co., Ltd. v. Superbox, Inc., September 2, 2022, English, C.).

Background. SuperBox, Inc., sought registration of mark JEWEL HUNTER for recorded computer game software, downloadable smart phone application software, downloadable computer game programs, and downloadable music files, digital photos, and electronic publications.

Shanghai Zhengland Technology Co., Ltd. (SZT), filed an opposition to the registration based on a likelihood of confusion with its prior common law rights in the mark JEWEL HUNTER for an online game app. SZT alleged that its mark was in use since January 2015 and that it was “very famous” in the U.S. and in China.

Evidence problems. In support of its opposition, SZT offered three testimony declarations from its president, Ruihua Ji. Questions arose about whether the three declarations were timely filed. The Board ruled that the first two declarations were timely filed but that the third was not because it was filed after the close of SZT’s trial period and before the opening its rebuttal trial period. It also failed to include proof of service. The first two declarations were arguably also untimely filed but the Board ruled that it would consider them timely filed because SuperBox treated them as part of the record, thus presumably waiving any argument that they were untimely. Because SuperBox did not treat the third declaration as part of the record, however, the Board deemed the third declaration untimely and gave it no consideration.

Even though the first two declarations were deemed timely filed, they still faced additional problems. Trademark Rule 2.20 requires that testimony be either in the form of a sworn affidavit or a declaration that uses specific language from 28 U.S.C. 1746 regarding the truth and veracity of the unsworn declaration. Neither the first nor the second declarations were under oath. Furthermore, neither the first nor the second declarations used the language required by Trademark Rule 2.20.

Did the declarations comply with the requirements of 28 U.S.C. 1746? The statute requires a statement that “I declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct.” The declarations actually said, “I Ruihua Ji, declare under penalty of perjury the following to be true….” It also said that, “The above statements were translated to me in my preliminary language, Mandarin. I fully understand and under penalty of perjury, the above statements are true and correct.”

The Board rejected the two declarations because the attestations did not include the phrase “under the laws of the United States of America,” as 28 U.S.C. 1746 required. In prior rulings, the Board had held that this phrase was a “critical element of a declaration under 28 U.S.C. §1746 executed outside the United States” (M/S R.M. Dhariwal, 2019 USPQ2d 149090, at *2, citing Jack v. Trans World Airlines, 854 F. Supp. 654, 658 n.3 (N.D. Cal 1994)).

As a result, the Board also refused to consider the first and second declarations.

Record remaining. The burden was on SZT to prove its opposition. Opposition is established by evidence that (1) the opposition is within the zone of interests protected by 15 U.S.C. §1063 and (2) the plaintiff has a reasonable belief in damage that is proximately cause by registration of the mark (Meenaxi Enter., Inc. v. Coca-Cola Co., 2022 USPQ2d 602, at *2 (Fed. Cir. 2022)). The Board ruled that “the record lacks proof of Opposer’s real interest in the proceeding and its reasonable belief of damage.” Given that the three declarations were rejected and that Superbox made no admissions that SZT was entitled to bring its action, SZT was not left with any evidence to support its right to oppose the registration.

The Board also noted that an “[o]pposer cannot rest on mere allegations in its complaint or arguments in its brief to prove entitlement.” SZT, therefore, left with only allegations in its complaint and arguments in its brief, failed to establish that it was entitled to oppose the application.

The Board dismissed the opposition in the absence of any proof that the opposer was entitled to bring the statutory cause of action.

The Case is Serial No. 91251457.

Attorneys: Shan Zhu (Shan Zhu Law Group, PC) for Shanghai Zhenglang Technology Co., Ltd. Stephen R. Barrese (Dilworth & Barrese LLP) for Superbox, Inc.

Companies: Shanghai Zhenglang Technology Co., Ltd.; Superbox, Inc.

Cases: Trademark USPTO