               NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition is not
                     citable as precedent. It is a public record.


 United States Court of Appeals for the Federal Circuit
                                        06-1198
                              (Opposition No. 91/159,343)


                                  EL ENCANTO, INC.
                           (doing business as Bueno Foods),

                                                               Appellant,

                                            v.

                            LA TORTILLA FACTORY, INC.,

                                                               Appellee.


                            __________________________

                              DECIDED: October 6, 2006
                            __________________________



Before MICHEL, Chief Judge, LOURIE and SCHALL, Circuit Judges.

MICHEL, Chief Judge.

       El Encanto, Inc. d/b/a Bueno Foods (“Bueno Foods”) appeals from a decision of

the United States Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal

Board (“Board”) dismissing Bueno Foods’ opposition to registration of the mark SOY

BUENO by La Tortilla Factory, Inc. (“La Tortilla”). El Encanto, Inc. v. La Tortilla Factory

Inc., Opposition No. 91159343 (T.T.A.B. October 20, 2005). On appeal, Bueno Foods

challenges the Board’s ruling that two of Bueno Foods’ marks, Reg. No. 1,538,311 and

Reg. No. 2,374,448, were not properly put in evidence. Without them, the opposition,
which was heavily based upon those marks, was deficient and had to be dismissed.*

Because Bueno Foods failed to offer proof as required by the Board’s regulations and

our precedent, we affirm, for the Board did not abuse its discretion in refusing to

consider the alternative evidence that was submitted.

                                     BACKGROUND

      La Tortilla filed an intent-to-use application with the USPTO to register the mark

SOY BUENO for tortillas. Bueno Foods filed a notice of opposition on the basis that La

Tortilla’s proposed mark was confusingly similar to several of its marks for tortillas and

other goods, including the two marks at issue in this appeal: (1) Reg. No. 1,538,311 for

the mark shown below,




and Reg. No. 2,374,448 for the mark BUENO in standard character form (collectively,

“the ‘311 and ‘448 marks”).       Bueno Foods attached photocopies of its pleaded

registrations to the notice of opposition pursuant to 37 C.F.R. § 2.122(d). No testimony

was taken by either party. La Tortilla objected to the photocopies of the registrations,

arguing that they were not admissible evidence because they did not show the current

status of, and Bueno Foods’ title to, the registrations. The Board agreed with La Tortilla,

and excluded the photocopies from the record before it. Accordingly, Bueno Foods

      *
            Bueno Foods has not appealed the Board’s ruling that that no likelihood of
confusion would result from the contemporaneous use of La Tortilla’s SOY BUENO
mark and Bueno Foods’ registered mark Reg. No. 2,190,265 (GRANDMA’S BUENO
FROM OUR FAMILY TO YOURS SINCE 1951 and Design, for tortillas).


06-1198                                     2
could not prove its case of a likelihood of confusion between La Tortilla’s SOY BUENO

mark and the ‘311 and ‘448 marks.

                                      DISCUSSION

       This court reviews evidentiary rulings under an abuse of discretion standard.

Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1256 (Fed. Cir. 2000) (citation

omitted).

       A party that wishes to rely on its ownership of a Federal registration in an

opposition proceeding must make the registration of record by offering evidence

sufficient to show that the registration is still subsisting, and that it currently owns the

registration. See 37 C.F.R. § 2.122(d). A registration may be entered into evidence by

(1) furnishing two copies of each registration prepared and issued by the USPTO

showing both the current status of and current title to the registration; (2) appropriate

identification and introduction of the registration during the taking of testimony; or (3)

filing a notice of reliance on the registration during Opposer’s testimony period. Id.; see

also Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 1554 (Fed. Cir. 1991).

Registrations not offered into evidence in compliance with this regulation are generally

not considered. See 37 C.F.R. § 2.123(l).

       Bueno Foods concedes that it did not introduce evidence of its pleaded

registrations in accordance with 37 C.F.R. § 2.122(d). Bueno Foods argues, however,

that the registrations should nonetheless be considered part of the record because La

Tortilla had “fair notice” that both the ‘311 and ‘448 marks were current and owned by

Bueno Foods. Bueno Foods argues that La Tortilla demonstrated its familiarity with

Bueno Foods’ registrations by (1) providing the USPTO during ex parte prosecution of




06-1198                                      3
SOY BUENO with printouts from Bueno Foods’ website allegedly showing the marks,

(2) requesting that the Board take judicial notice of several other terminated opposition

proceedings involving the ‘311 and ‘448 marks in which Bueno Foods was the plaintiff,

and (3) “accepting” Bueno Foods’ responses during discovery regarding status and title

in the ‘311 and ‘448 marks and submitting those responses to the Board for the record.

Bueno Foods argues that these actions serve as an admission of Bueno Foods’

registrations because La Tortilla cannot contend a lack of familiarity with the

registrations or a lack of fair notice of the case it had to meet.

       Bueno Foods relies principally on Tiffany & Co. v. Columbia Industries, Inc., 455

F.2d 582 (C.C.P.A. 1972), to support its contentions that registrations may be entered

into evidence by means other than those enumerated in 37 C.F.R. § 2.122(d).               In

Tiffany, our predecessor court held that an opposer’s failure to provide evidence of its

registration under the Trademarks Rules was not fatal to its case because the applicant

admitted in its pleadings “the registrations referred to in the notice of opposition.” 455

F.2d at 585. La Tortilla argues that Tiffany does not govern here because in its answer

to the opposition, La Tortilla stated that it was “without knowledge or information to form

a belief as to the truth of the averments . . . and based thereon denies each and every

such averment” regarding Bueno Foods’ registrations.            La Tortilla argues that the

circumstances here are indistinguishable from those in Hewlett-Packard Co., in which

we held that an opposer’s failure to submit its registrations in accordance with 37 C.F.R.

§ 2.122(d) was fatal where the applicant denied that the pleaded marks were “valid and

subsisting and . . . in full force and effect” in its answer based upon a “lack of knowledge

or information.” 931 F.2d at 1554.




06-1198                                       4
       We agree with La Tortilla. Unlike the opposer in Tiffany, La Tortilla did not admit

Bueno Foods’ title to, or the current status of, the pleaded registrations. Rather, in

paragraphs 3 and 4 of its answer, La Tortilla stated that it was without knowledge or

information sufficient to form a belief as to the truth of Bueno Foods’ allegations that it

currently offers and sells goods and services under the ‘311 and ‘448 marks. As we

stated in Hewlett-Packard Co., “denials based on lack of knowledge or belief are valid

denials, Fed. R. Civ. P. 8(b); they effectively put [the opposer] on notice that its claim

was being challenged, thereby requiring [the opposer] to prove its case.” 931 F.2d at

1554. Here, La Tortilla’s responses in its answer were valid denials of the current status

of, and Bueno Foods’ title to, the pleaded registrations. Consequently, Bueno Foods

was on notice that it would have to prove its case. Yet, Bueno Foods failed to take any

of the alternative measures to introduce the registrations into evidence, such as take

testimony or file a notice of reliance on the registrations, provided for in 37 C.F.R. §

2.122(d)(2).

       While it is true that registrations not offered into evidence in strict compliance

with 37 C.F.R. § 2.122(d) may nonetheless be deemed by the Board to be of record if

the adverse party treats the registrations as being of record, we do not find that La

Tortilla’s actions in this case constituted an admission of Bueno Foods’ registrations.

We have considered Bueno Foods’ arguments in this regard and find them to be

unpersuasive. Absent such admission, it is incumbent upon the opposer to submit

evidence in the requisite form to demonstrate its proprietary rights in, and the current

status of, its pleaded marks. We therefore cannot conclude that the Board abused its

discretion in holding that the SOY BUENO prosecution file wrapper, the previous




06-1198                                     5
opposition proceedings, and the submission of Bueno Foods’ answers to La Tortilla’s

interrogatories failed to satisfy Bueno Foods’ clear burden to establish current status of,

and current title to, its pleaded registrations.    Nor do they constitute admissions

obviating the need for proof.

       “While it is true that the law favors judgments on the merits wherever possible, it

is also true that the Patent and Trademark Office is justified in enforcing its procedural

[rules].” Hewlett-Packard Co., 931 F.2d at 1554. Board decisions recognize that the

Board has the authority to require parties to follow a simple, straightforward, and

inexpensive procedure to prove ownership and status of pleaded registrations. See

e.g., Volkswagenwerk Aktiengesellschaft v. Clement Wheel Co., Inc., 204 U.S.P.Q. 76,

81 (T.T.A.B. 1979) (“When such minimal requirements have been painstakingly and

repeatedly laid out, and the relevant regulations are so clear, opposer’s failure to follow

them is at its own peril.”). Bueno Foods failed to follow such procedures. The Board’s

exclusion of the evidence was not an abuse of discretion given the several alternatives

Bueno Foods had, but ignored. We therefore must affirm the decision of the Board.




06-1198                                     6
