Recent TTAB decisions and activity of note (2/27 – 3/5/2012)

Last week (2/27 – 3/05/12), the TTAB issued one precedential decision, 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
92052572 3/1/2012 PLAIN`S MOT. FOR SUMMARY JUDGMENT GRANTED N Petitioner’s motion for partial summary judgment on grounds of abandonment granted as respondent could not rebut evidence of no use in commerce over several years
91199530 2/28/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED N Applicant’s motion to withdraw or amend its responses to requests for admissions that were deemed admitted due to failure to timely respond is granted; as a result of allowing the late serve responses to reuests for admission, Opposer’s MSJ is denied
94002473 2/29/2012 BD`S DECISION: FAVORABLE TO APPLICANT N Applicant’s marks: (1) TWO RIVER COMMUNITY BANK and (2) TWO RIVER COMMUNITY BANK logo, for bankding services. Opposer’s mark: (i) TWO RIVERS BANK & TRUST and (ii) TWO RIVERS BANK & TRUST logo, for banking services. Concurrent use agreement between the parties approved.
77840784 2/27/2012 BOARD`S DECISION: AFFIRMED N Applicant’s mark, R.S.V.P. INTERNATIONAL, INC. for use with “hand tools, namely, manually operated tools for inserting stuffing into olives; scissors for cutting fruits and  vegetables; hand tools, namely, fruit and vegetable wedge cutters, egg slicers, potato ricers; hand operated fruit and vegetable peelers, strawberry hullers, tomato hullers, pizza cutters, ice tongs, mortar and pestles, cheese slicers; hand tools, namely, coffee tampers, crab crackers, saute tweezers” in Class 8 refused under Sect. 2(d) due to conflict with R.S.V.P. for “flatware” in Class 8. Applicant’s effort to introduct evidence, on appeal from prosecution of a third party registration, denied. Board found that both “applicant’s and the registrant’s goods can be sold by the same entities under a single mark, and that consumers can encounter both types of products together.” Refusal to register affirmed.
77860835 2/29/2012 BOARD`S DECISION: AFFIRMED N Refusal to register ITUNES LP for computer software and other goods and services without a disclaimer of ‘LP’ is affirmed even though the goods are not records.
91191681 2/28/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT N Applicant’s motion to quash rebuttal testimonial deposition denied.
91192072 2/27/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Consented motion to restrict the identification granted; motion to amend design mark denied becaue it added the words NEW YORK which material alters the commercial impression
91200110 2/28/2012 TRIAL DATES RESET N Applicant’s motion to dismiss under FRCP 12(b)(6) denied. Applicant also directed that its answer fails to conform to the FRCP 8(b) and its counterclaims are not cognizant.
91202732 2/27/2012 TRIAL DATES RESET N Applicant’s motion to dismiss under FRCP 12(b)(6) for failure to state a claim denied.
91190420 2/28/2012 BD`S DECISION: DISMISSED W/ PREJUDICE N Applicant moved for judgment under Trademark Rule 2.132(b) after Opposer did not file any testimony or brief, its only evidence of record was the 15 registrations it pleaded. Board entered judgment for Applicant, finding that thee parties’ marks are dissimilar and the relationship, if any, between opposer’s goods and applicant’s goods and services is not apparent from the pleaded registrations.
91178668 2/27/2012 BOARD`S DECISION: SUSTAINED Y RIM (Blackberry) Opposition to CRACKBERRY for variety of goods and services sustained on 2(d) and dilution by blurring grounds under Trademark Act § 43(c)(2)(B).
91202721 2/28/2012 D`S MOTION TO DISMISS DENIED; TRIAL DATES RESET N Applicant moved to dismiss opposition on grounds that the opposition was filed by a party not authorized to practice before the Board; motion denied as original pleading was signed by officer of Opposer and amended pleading was signed by US counsel.
91201367 3/1/2012 MOTION DENIED; TRIAL DATES REMAIN AS SET N Applicant’s motion to consolidate 3 oppositoin with 3 opposer’s denied; there is no indication “that the three opposers have reduced to writing a specific unified approach to discovery and trial, or have designated one
lead counsel for the three oppositions
91203112 3/2/2012 P`S MOTION TO STRIKE GRANTED; TRIAL DATES RESET N Opposer’s motion to strike several affirmative defenses granted.
91194864 2/29/2012 PROCEEDINGS RESUMED N Applicant’s motion to strike Opposer’s testimony deposition of Opposer’s witness because witness not identified in intitial disclosures or expert disclosures. Board treated the parties’ mutual failure to serve timely initial disclosures as their having waived such disclosures. Opposer made timely pretrial disclsoures. As a result, Applicant’s motion denied.
91194918 3/3/2012 PROCEEDINGS RESUMED Opposer’s motion to compel mostly granted; Applicant’s objections insufficient. Opposer’s motion to compel deposition of Applicant’s manager granted.
91198432 3/3/2012 PROCEEDINGS RESUMED Opposer’s motion to compel responses from Applicant without objections because they were overdue is denied. Applicant’s response to motion filed several weeks late and not considered.
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