Recent TTAB decisions and activity of note (Feb. 13 – 20, 2012)

Last week (2/13 – 2/20), the TTAB issued two precedential decisions, including one on remand from a District Court, several final decisions and numerous discovery and other procedural rulings.

Several important and interesting decisions or interesting 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?
92051344 2/14/2012 PLAIN`S MOT. FOR SUMMARY JUDGMENT GRANTED Yes Respondent, from Pakistan, filed the underlying application based on an a registration from the European Union, claiming the registration was from his country of origin; Respondent had also claimed ownership of Pakistani application which had not matured to a registration at the time the US registration was issued. The Board found “as a matter of law, that respondent has not established the European Union as his country of origin, and that respondent’s ownership of Community Trade Mark Registration No. 005662887, issued by the European Union, cannot serve as a basis for registration under Section 44(e). Accordingly, respondent has no issued foreign registration on which he could rely at the time his U.S. registration issued under Section 44(e).” As a result, Petitioner’s MSJ granted and the registration was cancelled.
91192917 2/13/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED n Opposer’s motion to strike or to test sufficiency of Applicant’s responses to Requests for Admissions denied; Opposer’s MSJ denied; Motion to Compel Applicant’s appearance at deposition granted
Concurrent use agreement between the parties accepted
76511652 2/17/2012 BOARD`S DECISION: AFFIRMED Y Applicant’s application to register FUTURE refused for many goods in Class 12 and 35 for likelihood of confusion with registered mark FUTURA for  “tires” and for “automotive
accessories, namely, vehicle wheel caps and hub caps.” Applicant’s application to register FUTURE MOTORS refused for goods and services in Class 12, 35, and 40 for the same conflict. Prior Opposition involving Applicant found to have preclusive effect regarding FUTURE but not FUTURE MOTORS. Section 2(d) refusals both affirmed.
77522109 2/13/2012 BOARD`S DECISION: AFFIRMED n Refusal of Application for UNIDRIVE for “metal screws”  under Sect. 2(d) for likelihood of confusion with UNA-DRIV for “threaded fasteners-namely, bolts” affirmed.
77848452 2/13/2012 BOARD`S DECISION: AFFIRMED n Refusal of application for TRANSLATIONAL EDUCATION MULTIMEDIA in Class 16 and 41 under Section 2(e)(1) affirmed; Applicant’s brief stricken for failure to comply with requirements regarding spacing and page length
77531855 2/13/2012 BOARD`S DEC: AFFD IN PART/RVRSD IN PART n Refusal of MIRIAD undder Section 2(d) due to registered mark MirriAD affirmed as to Classes 9 and 35; denied as to Classes 36, 40 and 42.
91170148 2/14/2012 RECONSIDERATION DENIED n Request for reconsideration of Board order sustaining the Opposition denied
91196998 2/17/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT  n Motion to reopen discovery for Applicant only after documents disclosed in deposition that taken day before the close of discovery; Board denied motion but proceedings suspended to allow opposer time to supplement its document production and discovery responses, and to allow applicant time in which to review opposer’s supplemental discovery and decide whether it needs a reopened discovery period in view of such discovery.
91179637 2/14/2012 RESPONSE DUE 30 DAYS (DUE DATE) n Applicant cannot change to the party that purchased its rights in the applied-for mark without the filing of an assignment of the application
91192408 2/17/2012 TRIAL DATES RESET n
Applicant’s motion to strike testimony deposition on basis of inadequate notice denied.
91201716 2/16/2012 TRIAL DATES RESET n Opposer’s motion to strike applicant’s response to the notice of opposition and to issue a notice of default granted and Applicant allowed 30 days to file an answer. Applicant’s response failed to comply with the Board rules for a number of reasons: it was a letter, submitted by a representative but not an attorney, and sent without proof of service on opposer.
91188863 2/16/2012 BOARD`S DECISION: DISMISSED n Opposer’s registered mark: MANGO (& Design) for “body soaps, perfumery, essential oils for personal use, cosmetics, hair lotions, and dentifrices” and other goods. Applicant’s mark: MANGO BEACH for “hand creams, body creams, face complexion creams and toners, massage oils, bubble baths, body cleansing gels, bath powders, soap, bath beads, skin moisturizing creams, sachets, body splash, light cologne and perfumes, room fragrances, and lip balms. Opposer’s claim of a famous mark failed. The common element found to be highly suggestive. Applicant’s mark, including the term BEACH, found to have a look and sound different from opposer’s mark, and as a result the Opposition was dismissed.
91189160 2/17/2012 BD`S DECISION: DISMISSED W/ PREJUDICE n Opposer responded to show cause order after if failed to file its main brief; opposer did not show excusable neglect and its brief was not considered. Since Opposer had not entered any testimony or other evidence, the Opposition was dismissed with prejudice.
Opposition to GUANTANAMERA for “tobacco, namely, cigars” on grounds that mark is primarily geographically descriptive under Sect. 2(e)(3) was sustained by TTAB in 2008. Case was then appealed to U.S. District Court of District of Columbia, and remanded back to the Board on Aug. 5, 2010 ‘so it may
apply the proper legal standard to the third part of the test for primarily geographically deceptively misdescriptive terms.” The Board sustained the Opposition, finding that “consumers would be materially influenced in the decision to purchase applicant’s cigars due to the geographic meaning of the mark in the Spanish language.  The case is also notable because the parties submitted more than 3,000 pages of evidence of this issue, and the Board ruled on several evidentiary issues.  In addition, a Motion to disqualify Applicant’s expert was denied, but Opposer’s objections to reliability of expert report concerning (a) the advertising and selling of Cuban cigar brands in US, and (b) consumer perception of the GUANTANAMERA brand, were sustained because the report was not reliable and did not explain methodology. “
92054462 2/14/2012 BOARD`S ORDER Respondent’s motion for relief from judgment after a default was entered against respondent for failure to file an answer is granted.
91197238 2/14/2012 D`S MOTION FOR RULE 56(D) DISCOVERY GRANTED, IN PART, DENIED, IN PART n Applicant’s motion for Rule 56(d) discovery following Opposer’s filing of MSJ granted in part so that Applicant may conduct discovery regarding Opposer’s continuous use, chain of title, and trade channels.
91202980 2/15/2012 D`S MOTION TO DISMISS DEEMED MOOT; D`S MOTION TO SUSPEND FOR CIVIL ACTION GRANTED n Applicant’s motion to dismiss for failure to state a claim (FRCP 12(b)6)) denied after Applicant amended its pleading to cure deficiencies. Applicant’s motion to supsend pending district court action seeking a declaratory judgment and involving Applicant’s mark is granted since the court could rule that Applicant’s mark has not acquired secondary meaning and such a ruling would impact the opposition claim of mere descriptiveness.
91190328 2/14/2012 MOTION DENIED; TRIAL DATES REMAIN AS SET n Applican’ts motion to consolidate two oppositions with different opposers denied despite being conceded by opposer’s since they did not file responses to the motion.
91193987 2/14/2012 SUSPENDED PENDING PETITION DECISION n Opposer’s motion to suspend proceeding pending action on Opopser’s petition for review of Board’s order by the Director (the order denied opposer’s motion to amend its pleading) is granted.
91201141 2/17/2012 PROCEEDINGS RESUMED n Applicant’s mark: MODS V ROCKERS for clothing and patches; Opposer’s claims common law rights in MODS V ROCKS in connection with organization and hosting of motorcycle and scooter events, and clothing and patches in connection therewith. Applicant filed motion to dismiss for failure to state a claim; Opposer filed an amended notice of opposition in response.  Opposer’s motion for leave to amend granted and Applicant’s motion to dismiss for failure to state a claim denied.
91202010 2/16/2012 PROCEEDINGS RESUMED n Applicant filed a combined motion to strike, to dismiss the dilution claim, and for partial judgment on the pleadings. To motion to strike sought to strike several lines from the notice of opposition referencing possible co-sponsorship of hte NCAA basketball tournement by the parties; because it was not clear if the statements were made in the context of settlement discussions, the Board denied the motion to strike. Regarding the motion to dismiss the dilution claim, Opposer fialed to allege that its mark became famous prior to applicant’s filing date; Opposer is granted leave to amend its pleading.  Applicant’s motion to for judgment on the pleadings regarding the claim of a lack of bona fide intent was denied by the Board, but the Board found the pleading insufficient and granted Opposer leave to amend.

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