Recent TTAB decisions & activity of note from TTABulator.com

Last week (1/24 – 1/30), the TTAB issued several final decisions, including numerous ex parte appeals, and also issued several discovery and other procedural rulings.

Several important and interesting decisions on procedural and discovery issues are highlighted in bold.

Here is a rundown of the activity of note from the TTAB in the last week (click link on TTAB action to open Board opinion):

Pro-ceeding  No.

Date

TTAB Action (click link to open PDF from TTABvue)

Marked Prece-dential?

Notes

77753913

01/26/2012 BOARD`S DECISION: AFFIRMED N 2(d) refusal affirmed

77765378

01/24/2012 BOARD`S DECISION: AFFIRMED N 2(d) refusal affirmed

77810266

01/24/2012 BOARD`S DECISION: AFFIRMED N 2(d) refusal affirmed

77853280

01/24/2012 BOARD`S DECISION: AFFIRMED N 2(d) refusal affirmed

77856121

01/27/2012 BOARD`S DECISION: AFFIRMED N 2(d) refusal affirmed

79071083

01/24/2012 BOARD`S DECISION: AFFIRMED N Refusal of KAMPO BOUTIQUE under 2(e)(1) affirmed

91203261

01/24/2012 SUSPENDED PENDING DISP OF CIVIL ACTION N Motion to Consolidate denied; Opposition suspended pending disposition of related cancellation

91166331

01/25/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT N After Board set aside its default on 06/01/2011 in an Opposition, application should not matured to registration and registration will be cancelled as Opposition proceeds.

91178758

01/25/2012 TRIAL DATES RESET N During its testimony, Applicant noticed deposition upon written questions of 5 third-parties regarding their use of “Mc” or “Mac”; Opposer McDonald’s moved to take the depositions by oral examination and to quash requests for production of documents from the third-parties as untimely. Board granted Opposer’s motion to convert the depositions to oral and to quash any requests for production of documents.

91200770

01/26/2012 TRIAL DATES RESET N Applicant’s Motion to Compel discovery denied. By sending one letter to Opopser’s counsel, Applicant did not satisfy its obligation to “make a good faith effort to resolve the discovery disputes” (Trademark Rule 2.120(e)) prior to seeking Board’s intervention.

91192706

01/27/2012 MOT COMPEL DENIED; TRIAL DATES RESET N One of Opposer’s motions denied because Board had earlier ruled that the parties may not file any further papers, other than testimony or final briefs, without prior leave of the Board. Opposer also admonished for having a representative who is not an attorney. Opposer’s Motion to Compel denied as Opposer’s initial disclosures were not timely served prior to sending discovery requests.

91189443

01/25/2012 MOTION GRANTED IN PART; TRIAL DATES REMAIN AS SET N Opposer’s (oral) motion to quash applicant’s notices of testimonial deposition based on applicant’s failure to timely serve pretrial disclosures granted in part. Testimony depositions of nonparty witnesses quashed; testimony depositions of the parties’ representatives allowed but Opposer’s representative may provide testimony by declaration.

91195587

01/23/2012 P`S MOT TO EXTNED TIME DENIED/P`S TIME TO SERVICE DISCOVERY EXTENDED/TRIAL DATES REMAIN AS SET N Opposer’s Motion to extend time to respond to discovery requests and to extend discovery and trial dates by 60 days denied; but Opposer given an 11 day extension to submit objections to discovery and a one month extension to provided substantive responses.

91193201

01/27/2012 P`S MOTION FOR PARTIAL SJ GRANTED N Opposer’s motion for summary judgment to dismiss counterclaim on issue of priority granted. Applicant’s intent-to-use filing date was several years after the filing dates for Opposer’s registrations.

92053398

01/24/2012 PROCEEDINGS RESUMED N Petitioner’s motion to compel granted regarding material withheld due to lack of protective order; Respondent also required to provide dates suitable for deposition of its representative to take place within 60 days and to conduct deposition within that time frame using video or telephone if necessary.
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