Recent TTAB Decisions & Activity of Note

Last week (1/31 – 2/03), the TTAB issued several final decisions 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):

Proceeding Number Date  TTAB Action (click link to open PFD from TTABvue) Precedent Notes


77704628 EXA 1/30/2012 BOARD`S DECISION: AFFIRMED n Refusal to register DOMINANT BUCKS as descriptive affirmed
77803520 EXA 2/1/2012 BOARD`S DECISION: AFFIRMED n ORTHOROBITS for ‘medical surgery’ descriptiveness refusal affirmed
77907213 EXA 1/31/2012 BOARD`S DECISION: AFFIRMED n
refusal of YOUR PATHWAY TO SUCCESS ( “estate planning; financial planning; financial planning for retirement; insurance information and consultancy”) under Sect 2(d) with PATHWAYS TO SUCCESS (for variety of services related to the financial field) affirmed
77929696 EXA 2/3/2012 BOARD`S DECISION: AFFIRMED n refusal of LUCKY PAWS (pet treats) under Sect 2(d) with LUCK PAWZ (“pet boarding services; pet day care services”) affirmed
77943347 EXA 2/2/2012 BOARD`S DECISION: AFFIRMED n descriptiveness refusal of SMART VAC (manufacture of industrial vacuum vehicles to order and/or specification of others”) affirmed
77842712 EXA 1/31/2012 BOARD`S DEC: AFFD IN PART/RVRSD IN PART n PETTICOAT VINTAGE (women’s clothing) refusal as descriptive affirmed; refusal as deceptively misdescriptive reversed
92053902 CAN 2/1/2012 TRIAL DATES RESET  n amendments to registrations filed prior to filing of petition for cancellation were proper; petitioner’s granted leave to amend the petitions to correlate with the amended descriptions
91196684 OPP 2/3/2012 TRIAL DATES RESET n Applicant’s objection to telephone conference with intelocutory attorney denied;  regarding Opposer’s motion to strike portions of Applicant’s reply brief, “The Board finds that applicant’s statements in her reply impugn opposer’s counsel’s moral character and are impertinent and scandalous, and therefore, improper” and thus disregarded but did not strike them; Applicant’s motion to discovery santions found to be premature and given no consideration; Applicant’s motion to compel denied as applicant failed to make good faith effort to meet and confer prior to filing the motion; Applicant required to obtain leave of the Board prior to the filing of any pretrial motions.
92046786 CAN 1/30/2012 BOARD`S DECISION: DISMISSED Y Petitions to canel SWISS and SWISS made for certification marks for time pieces and parts denied on several grounds.
92052285 CAN 2/3/2012 BOARD`S DECISION: DISMISSED W/ PREJUDICE n Previous show cause order issued after petitioner failed to file brief is rescinded; but briefing period not reopened and since Petitioner failed to submit brief or any testimony or a motion to suspend for settlement discussions, the Petition to Cancel is dismissed with Prejudice.
92054111 CAN 2/3/2012 BOARD`S DECISION: DISMISSED W/O PREJ n Respondent’s amendment to the restrict the goods in its registration is granted; proceeding dismissed without prejudice
94002137 CNU 2/2/2012 AMDTS APPROVED; RESPONSE DUE 60 DAYS n The parties’ concurrent use settlement agreement submitted found insuffiicent to resolve the parties’ concurrent rights; parties allowed 60 days to submit a revised agreement
91196220 OPP 2/3/2012 AMENDMENT TO APPLICATION; DENIED n Applicant’s motion to amend design mark denied as it constitutes a material alteration
92053537 CAN 1/27/2012 CONSOLIDATED – CHILD OF 91193970 n proceedings consolidated; defendant’s motion for summary judgment denied
91202367 OPP 1/30/2012 D`S MOTION TO DISMISS DENIED; PROCEEDINGS RESUMED; TRIAL DATES RESET n Applicant’s motion to dismiss opposition for lack of service denied; non-receipt of a service copy does not negate prima facie proof of service
92051860 CAN 2/4/2012 D`S MTN FOR LEAVE TO SERVE INITIAL DISCLOSURES DENIED; TRIAL DATES REMAIN AS PREVIOUSLY RESET n Respondent moved to leave to submit for late submission of its initial disclosures so that it can require Petition to respond to its discovery requests and submit testimony is denied
91201098 OPP 2/1/2012 MOTION TO DISMISS; DENIED; PROCEEDINGS RESUMED; TRIAL DATES RESET n Applicant’s motion to dismiss for failure to state a claim regarding the Opposition its registration of VEGGIE POP for popcorn, flavored popcord and pretzels on ground of descriptiveness is denied
Respondent’s motion to dismiss for failure to state a claim denied; rsepondent ordered to file a new Answer
91202203 OPP 2/2/2012 SHOW CAUSE ORDER n Applicant allwoed 30 days to show cause why judgment should not be entered against Applicant for his refusal to schedule or participate in discovery conference
Proposed amendments to the application filed by Applicant with the Trademark Examining Operation refused and Applicant allowed time to seek Oposer’s consent and to serve the proposed amendment on Opposer’s counsel
91201560 OPP 2/2/2012 PROCEEDINGS RESUMED n Opposer’s motion for default judgment denied even though Applicant’s second answer did not comply with Board’s earlier order; Applicant’s late-filed answer is accepted

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