Recent TTAB decisions and activity of note (Feb. 20 – 26, 2012)

Last week (2/20 – 2/26), the TTAB issued two precedential decisions, numerous final decisions and several 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 [visit http://ttabvue.USPTO.gov to view any of the proceeding and documents]:

Proceeding No.

Date

TTAB Disposition

Precedent?

Notes

91197030

02/24/2012

PLAIN`S MOT. FOR SUMMARY JUDGMENT GRANTED

N

Opposer’s motion for summary judgment granted: AA & Design for “ammunition, gun and rifle cases, rifles and related Products” found confusingly similar with AA for “ammunition and parts thereof”

76693637

02/24/2012

BOARD`S DECISION: AFFIRMED

N

Refusals of application for DOUBLE-LOK for “ammunition and parts thereof” as generic and as descriptive without having acquired distinctiveness are affirmed.

77522433

02/22/2012

BOARD`S DECISION: AFFIRMED

Y

Refusals of application to register COLUMBIANO COFFEE HOUSE “providing food and drink” as descriptive and as confusingly similar with registration of COLUMBIAN for “coffee” affirmed.

77724746

02/22/2012

BOARD`S DECISION: AFFIRMED

N

Applicant’s Mark: WHOLE SOUL for goods in Class 25Cited Registration: WHOLE SOUL for “wearable full body towels and all purpose towels”  (class 24) and “apparel, namely, robes” Class 25

Decision: refusal affirmed

77784815

02/22/2012

BOARD`S DECISION: AFFIRMED

N

Refusal of application for MULTIINFLUENTIALS for “business networking services” under Section 2(d) affirmed.

85017693

02/21/2012

BOARD`S DECISION: AFFIRMED

N

Applicant’s mark: DIRECTO.COM & Design for telecommunication servicesCited registrations: DIRECOR IDEAS TELCEL / DIRECTO DE TELCEL / DIRECTO IDEAS for telecommunications services

Decision: Refusal Affirmed

92053724

02/21/2012

RECONSIDERATION DENIED

N

Petitioner’s request for reconsideration of board order granting Respondent’s MSJ is denied

92053982

02/23/2012

RECONSIDERATION DENIED

N

Petitioner’s request for reconsideration of order granting respondent’s motion to dismiss is denied.

91196299

02/23/2012

SUSPENDED PENDING DISP OF OUTSTNDNG MOT

N

Many procedural motions ruled on; party’s response to motion for partial summary judgment stricken for exceeding page limit.

91190899

02/23/2012

RESPONSE DUE 30 DAYS (DUE DATE)

N

Opposer’s Motion to compel granted regarding many issues. Applicant compelled to respond to the extent Applicant provided unexplained objections, to the extent Applicant objected to meaning of ‘similar term,’ to the extent Applicant had objected that the mark ONSHARP cannot be dissected, and on regarding other issues as well. Opposer’s motion to test sufficiency of response to requests for admissions granted in part. Opposer’s request for entry of modified protective order (to provide for confidential and highly confidential designations) is granted, and applicant advised it would need to retain outside counsel in order to have access to materials designated “highly confidential” by Opposer.

91200645

02/21/2012

RESPONSE DUE 30 DAYS (DUE DATE)

N

Consented motion to amend applicant’s mark from standard character “G” to a specific font stylized lowercase letter “G” is granted.

91200818

02/23/2012

RESPONSE DUE 30 DAYS (DUE DATE)

N

Applicant’s motion to strike paragraphs from the complaint to the extent they refer to marks beyond those pleaded by Opposer is granted – Opposer’s statements regarding ‘related marks’ and various designs were too vague – and Opposer given leave to amend the pleading.

92050787

02/23/2012

TRIAL DATES RESET

N

Motion to strike part of petitioner’s notice of reliance to the extent it include materials that are not self-authenticating. Motion granted with regard to one exhibit that did not meet the requirements for internet printouts under Safer, but Petitioner allowed 20 days to correct the deficiency.

92053298

02/24/2012

TRIAL DATES RESET

N

Respondent’s motion to extend time to answer granted.

92053789

02/21/2012

TRIAL DATES RESET

N

Motion to dismissed amended petition for cancellation for failure to state a claim upon which relief may be granted.

91199381

02/22/2012

TRIAL DATES RESET

N

Petition to cancel alleges fraud related to registrant’s ownership of the mark; Respondent’s motion to dismiss for failure to state a claim upon which relief may be granted as the amended petition to cancel does not properly allege standing and also fails to state a claim for fraud upon which relief may be granted. Motion to dismiss granted, if Petitioner fails to file a further amended petition for cancellation the petition will be dismissed with prejudice.

91201386

02/22/2012

TRIAL DATES RESET

N

MSJ premature before initial disclosures have been served and thus dismissed.

91201529

02/23/2012

TRIAL DATES RESET

N

Applicant’s motion to set aside the notice of default for failure to file a timely answer is granted.

91181440

02/21/2012

BOARD`S DECISION: DISMISSED

N

Consolidated opposition and cancellation:-          Applicant’s marks: BERYLL & Cross Designs for (a) jewelry, leather accessories and furniture, (b) sunglasses, cloths and clothing, and (c) sunglasses jewelry, leather items and clothing

–          Opposer’s mark: PLUS SYSTEM and 3 different cross designs for sunglasses

–          Claims: Likelihood of confusion and priority; lack of use on sunglass and eyeglass goods; and fraud regarding one of the registrations

Opposer moved to strike a variety of evidence. Excluded evidence included: references to third party registrations without the registration certificates (“The Board does not take judicial notice of registrations that reside in the USPTO”); hearsay from a telephone conference from receptionist at a store;

Regarding Wikipedia evidence: the board considered it but noted that probative value is limited. Information about logos from a logo website are not considered for “the truth of any matters stated therein, such as proving that any of the depicted goods have been, or are being, offered for sale or distribution.”

Regarding Opposer’s statements made in the prosecution of one of its registrations regarding a lack of confusion, they may be used as evidence as an admission against interest but will not relieve the Board of its burden to reach its own conclusion.

Opposer objected to testimony of a third party witness as biased since Opposer has filed a petition to cancel the 3rd parties’ registration was denied.

Ruling: Fraud claim fell short and was dismissed, and the marks at issue “simply too dissimilar to support a finding of likelihood of confusion.” As a result, the Petition/Opposition was dismissed.

91199336

02/24/2012

BOARD`S DECISION: DISMISSED

N

Applicant motion for judgment on the pleadings regarding Section 2(d) claim granted as the board found the two winged design marks too dissimilar despite nearly identical goods “and that a likelihood of confusion cannot exist as a matter of law based on the dispositive nature of the first du Pont factor in this case; furthermore the Board rules sua sponte that the dilution by blurring claim – although not part of the motion – also cannot exist as a matter of law, and Opposition dismissed in its entirety.

91185011

02/23/2012

BD`S DECISION: DISMISSED W/ PREJUDICE

N

Opposer submitted no evidence during its testimony period. Applicant moved to dismiss for failure to prosecute; Opposer moved to reopen its testimony period. Board denied Opposer’s motion to reopen and applicant’s motion to dismiss granted.

92049692

02/22/2012

BOARD`S DECISION: GRANTED

Y

Petition to cancel Respondent’s mark (“Shut It Down” for clothing and related goods) on grounds of abandonment and fraud. Respondent failed to follow rules of practice and failed to submit a valid brief or any testimony. Respondent admitted it never used many of the goods listed in the registrations description, and those are deemed abandoned. As to goods allegedly in use, Respondent showed no evidence of sales for several years prior to the filing of the petition for cancellation and abandonment also found. The registration was also found to be void ab initio as Respondent showed no real use on any goods and admitted non-use on over 100 listed goods.

92054628

02/23/2012

BOARD`S DECISION: GRANTED

N

Petitioner sought partial cancellation of registration for HIGHWAY HAWK for “motorcycle helmets” on grounds of abandonment and no bona fide intent to use the mark; via subsequent limitation of the underlying international registration at WIPO, the USPTO registration limited to delete “motorcycle helmets.” As a result of the amendment without consent to Petitioner, the judgment is entered against respondent and the registration cancelled as to “motorcycle helmets.”

91161363

02/22/2012

MOTION TO AMEND GRANTED

N

Motion for leave to amend Plaintiff’s pleading filed just before commencement of testimony granted.

91194906

02/22/2012

PROCEEDINGS RESUMED

N

Opposer moved to compel supplemental discovery responses and to reopen discovery for opposer only. Motion denied by the Board.
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