Recent TTAB decisions & activity of note

Last week (2/04 – 2/12), the TTAB issued several final decisions and numerous 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 No. Date TTAB Action Precedent?


91196216 OPP 2/8/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED n Variety of motions decided in Opposition to OXIMIZE (Class 5 goods) based on OXY (acne medication); Applicant’s motion to amend identification denied as not limiting in scope; Opposer’s motion for leave to file  amended notice of opposition granted but amended fraud claim still found lacking required specificity and Opposer allowed to file second amended notice of Opposition; Applicant’s request to have OXY found to be generic denied as in improperly raised collateral attack that can only be raised by counterclaim and b/c these grounds existed at the time of filing the answer they would not be untimely; Applicant’s MSJ denied.
91200255 OPP 2/8/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED n Applicant’s MSJ on issue of collateral estoppel denied; prior Opposition was for SOY BUENO mark, current Opposition is for BIEN BIENO & Design
94002248 CNU 2/10/2012 BD`S DECISION: FAVORABLE TO APPLICANT n Applicant’s request for a concurrent use registration granted ater the named excepted user defaulted and Applicant demonstrated that concurrent use of its mark is not likely to lead to confusion, mistake or deception.
94002498 CNU 2/6/2012 BD`S DECISION: FAVORABLE TO APPLICANT n Concurrent use registrations granted “Based upon the parties’ Consent Agreement and Joint Motion, we find that concurrent use of the involved marks is not likely to cause confusion, mistake or deception under 15 U.S.C. § 1052(d).”
77256390 EXA 2/6/2012 BOARD`S DECISION: AFFIRMED n

Refusal of AIRESCUE (for ‘ “fixed wing aircraft medical service transport anywhere in the world’) as (i) generic and (ii) not shown to have acquired distinctiveness affirmed. While Board gave some weight to customers statements regarding non-genericness, the mark was found generic as it is the phonetic equivalent of AIR RESCUE; furthermore, Board found that   “in view of the highly descriptive nature of the term AIRESCUE, applicant’s evidence of acquired distinctiveness is insufficient to show that it has acquired distinctiveness.”

77600178 EXA 2/9/2012 BOARD`S DECISION: AFFIRMED n Refusal to register VENEERSTONE on the Supplemental Register for ‘decorative manufactured stone’ as generic affirmed
77899445 EXA 2/6/2012 BOARD`S DECISION: AFFIRMED n 2(d) refusal affirmed [Applicant: EVOLVE ADVANCED DIGITAL SOLUTIONS & Design for ‘Printing ink products, namely, inks, coating and varnishes, in Class 2; and Printing machines for commercial or industrial use, in Class 7; Cited Registration: EVOLUTION for variety of printing goods]
77911173 EXA 2/9/2012 BOARD`S DECISION: AFFIRMED n Disclaimer requirement for “MUNICH” in THE MUNICH & Design for a vareity of services due to geographic descriptiveness affirmed
77948331 EXA 2/6/2012 BOARD`S DECISION: AFFIRMED Descriptiveness refusal of JOHNNY VEGAS for “alcoholic beverages, namely, alcoholic cocktails containing tequila” is affirmed b/c it is the name of a specific cocktail featuring tequila.
92052522 CAN 2/10/2012 SUSPENDED PENDING DISP OF CIVIL ACTION n Proceeding suspended pending arbitration between the parties per the terms of a license agreement between the parties
91197936 OPP 2/7/2012 RESPONSE DUE 30 DAYS (DUE DATE) n Board denied consented motion to amend Applicant’s mark from ZURICH AWES FINANCIAL MANAGEMENT LIVE THE LIFE YOU LOVE & Design to LIVE THE LIFE YOU LOVE & Design denied as a material alteration 
91198908 OPP 2/8/2012 RESPONSE DUE 30 DAYS (DUE DATE) n Applicant’s Motion to Compel denied b/c applicant failed to satisfy his obligation to make a good faith effort to resolve issues prior to filing of the motion; Counsel for Applicant’s motion to withdraw as counsel denied for failure to comply with all the requirements
92053610 CAN 2/10/2012 TRIAL DATES RESET n Petitioner’s motion for relief from final judgment after it failed to respond to a Motion to Dismiss is granted along with Petitioner’s motion to amend its Petition to Cancel
92054913 CAN 2/10/2012 TRIAL DATES RESET n Petitioner’s Motion for Default is denied
91192456 OPP 2/8/2012 TRIAL DATES RESET n Motion to Suspend denied. After more than two years since the proceeding was instituted and with an answer yet to be filed, further suspension denied. (“This case is now well over two years old and the pleadings have yet to close.  Enough is enough, and therefore applicant’s motion to suspend, filed January 26, 2012, is hereby DENIED.”)
91200421 OPP 2/6/2012 TRIAL DATES RESET n Opposer’s motion to vacate Board’s order denied.
91200643 OPP 2/9/2012 TRIAL DATES RESET n Opposer’s motion to extend its deadline to respond to discovery by 60 days is granted with modification given exceptional circumstances and no evidence of neglect or bad faith by Opposer. [Note: Opposer mark is BUCK ROGERS.]
91161570 OPP 2/8/2012 BOARD`S DECISION: SUSTAINED n Consolidated Opposition and Cancellation proceedings (under old Board rules) related to SHUSTOFF for alcoholic beverages and SHUSTOV for alcholic beverages. Testimony deposition of an expert by Defendant stricken as applicant never supplemented discovery responses to identify the witness. Motion to strike Plaintiff’s testimony consisting of its  own discovery responses denied b/c the responses provided full context to responss submitted as testimony by Defendant. Defendant’s petition to cancel on grounds of fraud for lack of bona fide intent to use the mark at the time the application was filed is Denied. Defendant’s claim of abandonment denied as it was not raised until testimony, was not tried by consent, and was avaialble to Defendant earlier. Petition to Cancel granted.
91197241 OPP 2/9/2012 BOARD`S DECISION: SUSTAINED Y Opposition to TURFECTA (grass seen) based on TRIFECTA (lawn seed) sustained. Parties used ACR (with lengthy discussion on the procedure here and in general by the Board) with stipulations and shortened schedule. Objection to testimony declaration paragraphs referencing settlement discussion sustained as inadmissible under FRE 408. Finding Opposer’s mark arbitry, strong, and used for 25 yrs, and finding no evidence of any use of similar marks on similar goods, Board found that Opposer met its burden of showing a likelihood of confusion.
92053103 CAN 2/10/2012 BOARD`S DECISION: GRANTED n Stipulated motion to amend respondent’s registration from BAZARAC PAWN DESIGN to BAZARAC denied as a material alteration. Purusant to parties’ stipulation, the petition for cancellation is granted.
91193054 OPP 2/8/2012 CROSS-MOTIONS FOR SUMMARY JUDGEMENT DENIED n Cross-Motions for summary judgment denied. Board noted regarding evidence from’s Wayback Machine “the Board has noted that internet archive and “Wayback Machine” documents are not self-authenticating, that such documents do not authenticate the pages in their historical record, and that a declarant often lacks the requisite personal knowledge to establish that the documents are what he proclaims them to be.  See Paris Glove of Canada Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1858-59 (TTAB 2007).”
92054020 CAN 2/7/2012 D`S MOTION TO DISMISS DENIED; TRIAL DATES RESET n Defendant’s Motion to Dismiss amended petition to cancel denied; Petitioner properly set forth grounds alleging fraud given on allegation that at the time Defendant filed its underlying application, it knew it did not have the exclusive right to use the mark.
92053547 CAN 2/7/2012 MOTION TO DISMISS; DENIED; PROCEEDINGS RESUMED; TRIAL DATES RESET n Defendant’s Motion to Dismiss for failure to state a claim upon which relief may be granted denied. Petitioner cannot bring 2(d) claim against registration that is more than 5 yrs old., but Board finds that “that petitioner has sufficiently pled misrepresentation of source under section 14(3)” as well as claim of fraud.
91202757 OPP 2/10/2012 P`S MOTION TO STRIKE GRANTED, IN PART, DENIED, IN PART; TRIAL DATES RESET n Opposer’s motion to strike affirmative defenses granted in part. Defense alleged of  laches, acquiescence and estoppel stricken. Board also found that Opposer’s misrepresntation of source claim under Section 14(3) improperly pleaded and give Opposer time to submit amended pleading.
91198943 OPP 2/7/2012 RESPONSE DUE IN (10) DAYS  n Plaintiff’s motion to defer cross-motion for summary judgment at not germane denied.
92052556 CAN 2/10/2012 PROCEEDINGS RESUMED  Motion to Compel denied given Plaintiff’s failure to make a good faith effort to resolve the discovery issues before motion.

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