It doesn't often happen that an opposer fails to prove "standing" - i.e., entitlement to bring a statutory cause of action - but that's what happened in this opposition to registration of the mark JEWEL HUNTER for game software. Opposer Shanghai Zhenglang Technology claimed likelihood of confusion with its identical common law mark for a "game app", but it failed to properly submit any evidence. And so the Board dismissed the opposition due to lack of standing.  Shanghai Zhenglang Technology Co., Ltd. v. Superbox, Inc., Opposition No. 91251457 (September 2, 2022) [not precedential] (Opinion by Judge Christen M. English).  


Opposer Shanghai submitted three testimony declarations from its president. However, the third declaration was filed outside of opposer's testimony period, and so the Board gave it no consideration. The other two declarations did not comply with the applicable requirements for testimony declarations, and so they too were given no consideration. 

The Board pointed out that, under Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1), witness testimony may be submitted in the form of a sworn affidavit or an unsworn declaration under Trademark Rule 2.20. Trademark 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 the 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.

The first and second declarations were not under oath and did not use the language of Rule 2.20. 

The purported declarations were executed in Shanghai, China. Under 28 U.S.C. § 1746, the following language may be used for unsworn declarations executed outside the United States: "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)." 

Both the first and second declarations begin with the statement "I, Ruihua Ji, declare under penalty of perjury the following to be true" and conclude with the following: "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." Neither declaration specified that the statements were made under penalty of perjury "under the laws of the United States of America," as required by 28 U.S.C. § 1746. That language is a "critical element" for declarations made outside the United States. And so the declarations were unacceptable. 

Although applicant did not plead lack of standing as a defense, the Board pointed out that lack of entitlement to bring a cause of action is not an affirmative defense that can be waived. "Rather, it is an essential element of the plaintiff's claim that the plaintiff must prove as part of its case."

Here, the record lacks proof of Opposer's real interest in the proceeding and its reasonable belief of damage. As explained above, we cannot consider the Ji Declarations because the first two declarations were improperly executed and the third declaration was untimely. Applicant did not make any admissions in its answer or introduce any evidence demonstrating Opposer's entitlement to bring a statutory cause of action.

And so the Board dismissed the opposition.

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