The Sept. 2, 2022 decision by the Trademark Trial & Appeal Board (TTAB) in Shanghai Zhenglang Technology Co. (SZT), Ltd. v. Superbox is a good reminder than an opposition or cancellation proceeding could be dismissed on procedural technicalities. The SZT case involved an opposition proceeding commenced by Shanghai Zhenglang Technology to oppose registration of the mark JEWEL HUNTER.
Entitlement to a statutory cause of action, known as standing, must be established in every inter partes case before the TTAB. The bar is low for establishing standing. As long as the opposer has a reasonable belief that it would be proximately damaged by registration of the mark and therefore has a real interest in the proceedings, standing will be established. Indeed, the TTAB infrequently dismisses an opposition or cancellation proceeding on lack of standing grounds. Plaintiff has the burden of establishing standing.
SZT opposed the registration of the Applicant’s mark on the ground of likelihood of confusion based on its alleged prior common law rights in the mark JEWEL HUNTER for an online “game app.” In its notice of opposition, SZT alleged use of the mark in the United States since January 2015 and that its mark is “very famous” in the United States and China.
During the testimony period, SZT filed three different testimony declarations by its president. Two of them were untimely as they were filed after the close of SZT’s trial period and also did include proof of service. The second one was made of the record and considered by the TTAB while the third was not. And this is where things get interesting.
Under its rules of procedure, witness testimony may be submitted in the form of a sworn affidavit or an unsworn declaration under Trademark Rule 2.20. Rule 2.20 provides that “[i]nstead of an oath, affidavit, or sworn statement, the language of 28 U.S.C. § 1746, or the following declaration language may be used:
The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001 and that such willful false statements and like may jeopardize the validity of the application submission or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.
Neither of the “of record” declarations by SZT’s president included the above language. Accordingly, the following language of 28 U.S.C. § 1746 was the language that should have been included in the shown statement:
I declare (or certify, verify, or state) under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. Executed on (date).
Instead, the purported declarations, executed in Shanghai, China, stated, “I…declare under penalty of perjury the following to be true” and concluded with the following: “The above statements were translated to me in my primary language, Mandarin. I fully understand and under penalty of perjury, the above statements are true and correct.”
The purported declarations thus missed the essential reference to the United States. As the TTAB has explained, “[w]hen a person executes a document outside the United States, a reference to which country’s perjury laws will be applied provides no assurance of truthfulness because the penalty of perjury may be nonexistent or trivial in the place where the person signed the document.” As such, the First and Second declarations did not comply with the requirements for declaration testimony under U.S. law and were not considered by the TTAB.
As a result of their faultiness, the declarations could not be used to determine if the opposer had standing. Standing cannot be established on mere allegations in its complaint or arguments in its proof to prove entitlement to maintain an opposition proceeding. Additionally, the TTAB noted that even if they had considered the Internet printouts which were attached to the first two declarations, website printouts are hearsay and have little probative value when it comes to establishing an Opposer’s entitlement. Without authentication, such printouts can only be used to demonstrate what the documents show on their face, not the truth of what has been printed. Accordingly, the Plaintiff could not prove that it was entitled to bring the opposition proceeding and the opposition was dismissed.
Conclusions
The decision is a good example of how failure to pay attention to the rules of the agency or court in which a proceeding is filed can have detrimental consequences. It appears that the Plaintiff’s attorney did not read the rules – proof of service was not provided and the declarations were faulty. Also, filing deadlines were missed. Although the proceeding was dismissed on lack of standing grounds, the decision also suggests that plaintiff’s evidence was insufficient for establishing the requisite harm required for preventing registration of applicant’s mark.
Take Home Points
- It’s important to hire an attorney who has experience in opposition and other proceedings before the TTAB and is well-versed in administrative rules and the law.
- Where a declaration is to be executed outside of the United States for presentation before the TTAB, be sure that it includes the proper language for subjecting the declarant or affiant to the perjury laws of the United States. Also for any court proceeding. We recently represented a defendant from Greece in a lawsuit filed in a Florida court where an affidavit was executed in Athens with the language of 28 U.S.C. § 1746.
- Where a declaration is to be signed in the U.S. for presentation to a foreign IP office or court, be sure that it is executed in compliance with the foreign country’s laws.
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Troy & Schwartz, LLC
