TTAB decisions and activity of note (3/5 – 3/12/2012)

Catching up here on a lot of recent activity from the Board. Between 3/05/12 and 03/12/2012), the TTAB issued many decisions, numerous final decisions and several discovery and other procedural rulings.

Here is a rundown of the activity of note from the TTAB in the last week [visit to view any of the proceeding and documents]:

Parties Proceeding # Date TTAB Disposition Precedent? Notes
Rameriez v. Staves 91196016 3/7/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED N
In case with two parties fighting over right to registration of MAJESTIC CAR CLUB mark, summary judgment was denied because numerous issues of material fact exist as to ownership, membership, right to register, and priority.
Caterpillar, Inc. v. Alan Sadler 91198643 3/8/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED N

Because applicant was found to have no bona fied intention to use the mark in connection with the services listed in the application, the Board did not consider Applicant’s motion for summary judgment, and it was denied.
Caterpillar, Inc. v. Alan Sadler 91198463 3/5/2012 PLAIN`S MOT. FOR SUMMARY JUDGMENT GRANTED N Applicant admitted in interrogatory responses and deposition that he had no bona fied intent to use the mark in connection with the services listed in his application. Opposer’s motion summary judgment granted. Opposition of Caterpillar sustained. Marks: Caterpillar, CAT, and various other marks for earth-moving machinery and the like; LAWNCAT for lawn care services.
The Independent Feature Project, Inc. v. Gotham City Networking, Inc. 92052896 3/7/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED N Gotham owns GOTHAM FILM FESTIVAL mark, which was cited in LOC denial of IFP’s applications for GOTHAM INDEPENDENT FILM AWARDS and GOTHAM AWARDS marks. Summary judgment was requested by IFP for for priority and determination of no LOC, but it was denied. Alternatively, IFP requested leave to amend pleadings, which was gratned.
In Touch Ministries, Inc. v. Franklin 91200407 3/7/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED N
Opposer did not appropriately serve its requests for admissions because the mail requests were not sent to the proper address of the attorney of record and the electronic request were only sent as a courtesy because there had been no agreement between the parties to rely on electronic transmission for official correspondence. Therefore, Opposer’s request for summary judgment was denied.
Critical Homecare Solutions, Inc. v. Catholic Healthcare Services of Long Island and/or CHS Home Support Services 94002351 3/6/2012 BD`S DECISION: FAVORABLE TO APPLICANT N

In concurrent use proceeding, Board found no bad faith in adoption of CHS mark by petitioner and approved registration and use by petitioner throughout the US, with the exception of New York counties Nassau, Suffolk, and Queens.
Planet Coffee Roasters, Inc. v. Souper Salad, Inc. 94002456 3/9/2012 BD`S DECISION: FAVORABLE TO APPLICANT N SSI has mark PLANET COFFEE for the entire US exept California and PCRI is requesting PLANET COFFEE ROASTERS, INC. and similar design mark for state of California only. A consent agreement to concurrent use was signed by the parties, so PCRI’s application for PLANET COFFEE ROASTERS, INC. and similar design mark for coffee and coffee beans is approved with geographic restriction to the state of California.
In re OurPet’s Company 76699927 3/5/2012 BOARD`S DECISION: AFFIRMED N EA’s final refusal citing descriptiveness for ON DEMAND for automated pet food dispensers and waterers affirmed by Board. In their brief, Applicant raised 1700+ examples of third party evidence of registrations of same or similar mark  for different sorts of on-demand goods or services, and the Board gave no weight to the argument because it was unsupported by any evidence in the record. Regarding Wictionary: “The Board will generally not take judicial notice of definitions or entries found only in online dictionaries or reference works not available in a printed format or having a regular fixed edition.”
In re Valmark Corp 76700150 3/5/2012 BOARD`S DECISION: AFFIRMED N Board affirmed EA’s 2(e)(1) refusal for descriptiveness of AUTHENTICATION TO SOURCE mark for counterfeit-prevention goods identification services.
In re Continental Frangrances, Ltd. 77677661 3/8/2012 BOARD`S DECISION: AFFIRMED N EA’s 2(d) LOC refusal of applicant’s INVISIBLE mark for “hair care preparations” was affirmed in light of existing registration of same mark for “cosmetics” owned by a different entity.  EA presented six registrations for marks that cover both cosmetics and hair care preparations and owned by the same entity. Interestingly, Unilever owns 3 of these 6 marks, a second entity owns 2 of the 6, and a third entity owns 1 of the 6. The EA also relies on 2 webpages offering both classes of products under the same name. The Board found this evidence from the EA to be sufficient. Although INVISIBLE was found to be weak for cosmetics, the other significant du Pont factors weigh in favor of affirming EA’s refusal to register.
In re Universal Rice Company Limited 77760488 3/6/2012 BOARD`S DECISION: AFFIRMED N
Registration refused for SAWAT-D  HEALTHY GRAIN and design mark for rice due to LOC with standard character SAWATDEE BRAND mark for dried fruit and vegitables. Similarity of the marks and similarity of the goods found in favor of denying registration and EA’s determination affirmed.
In re ICS Systems, Inc. 77906086 2/28/2012 BOARD`S DECISION: AFFIRMED N Board affirmed denial of registration of applicant’s mark ICS SYSTEMS, INC. for various computer software goods and services based on LOC with existing registrations owned by other firms for ICS and AUTONOMY ICS for “computer software design [and] installation” and ICS GUARDIAN and design for “technical support services” in relation to computing.
In re Market America Inc. 77949723 3/7/2012 BOARD`S DECISION: AFFIRMED N Board affirmed refusal to register LOREN and LOREN JEWELS for “jewelry; precious and semi-precious stones” in class 14 citing LOC with LOREN and LOREN plus design for “manufacture of castings for jewelry to the specifications of others” in class 40.
In re DBC, LLC 85155603 3/6/2012 BOARD`S DECISION: AFFIRMED N Board affirmed refusal to register ACTIVE DEFENSE COMPLEX for ingredients for dietary supplements, dietary supplements, and fruit extracts citing LOC with registered ECHINAMIDE ACTIVE DEFENSE for dietary supplements.
Bello Fitness LTDA v. Body Up Fitness LLC 92049838 3/2/2012 APPEAL TO DISTRICT COURT N
Body Up served notice of appeal of TTAB decision to the Court of Appeals for the District of Columbia seeking review of Board’s decision to grant petition for cancellation of BODY UP  and design mark.
E. & J. Gallo Winery v. Trigo Corp. 91200322 3/5/2012 SUSPENDED PENDING DISP OF CIVIL ACTION N
Trigo claims that the outcome of a federal case over the trade dress of competing wines  will have a bearing of whether they can continue with their application, but Gallo points out that this opposition is based on LOC of word marks (Gallo’s FRUTEZIA and Trigo’s D’FRUTA, both for wine) while the federal case is based on trade dress. Per Trademark Rule 2.117(a), the opposition was suspended because the federal case may have a bearing on this one., Inc. v. Dropbox, Inc. 91200450 3/5/2012 SUSPENDED PENDING DISP OF CIVIL ACTION N
Board found in favor of opposer to not consolidate with other oppositions of the mark because the oppositions are with different companies, with different records and briefs, may be argued on differing interests, and will not necessarily result in any judicial economy or time savings for the Board.
Ace Café London Limited v. ROCKERSync, Inc. 91199984 3/6/2012 TRIAL DATES RESET N Applicant defaulted twice in filing an answer, and opposer made motion to set aside late answer and requested summary judgment. Because the law strongly favors determination of cases on their merits, and because applicant asserts a meritorious defense of priority, opposer is not being prejudiced, and applicant’s default was not the result of gross neglect, applicant’s amended answer and counterclaim are accepted and trial dates are reset.
H.J. Heinz Co., L.P. v. Stonyfield Farm, Inc. 91200411 3/7/2012 TRIAL DATES RESET N
Opposer Heinz’s motion to strike affirmative defenses granted in-part and denied in-part and trial dates reset
philosophy, inc. v. Wilson 91189376 3/7/2012 BOARD`S DECISION: DISMISSED N Opposer “philsophy” provided no evidence of acquired distinctiveness of its unregistered and undefined “baby image mark” trade dress, so it is insufficient to support a basis for opposition. Opposer also cites common law rights in PHILOSOPHY mark for books and written material as well as for clothing, but the evidence does not support this contention. Opposer does own an unrestricted registration for PHILOSOPHY for publishing services, though.When balancing all of the factors, they weigh in favor of the applicant, and the opposition is dismissed.
Mendez v. Dita, Inc. 91167828 3/8/2012 BD`S DECISION: DISMISSED W/ PREJUDICE N Opposer’s testimony that she is a celebrity who manufactures and sells jewelry, clothing, bags, etc. under the mark DITA is enough to establish her standing to oppose. Opposer’s testimony related to use was unconvincing and unsupported by any documentary evidence. Opposer failed to establish herr priority, and opposition dismissed with prejudice.
O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A. 91190886 3/8/2012 BOARD`S DECISION: SUSTAINED N Opposer Seacrets Nightclub in Ocean City, MD had “attained a substantial degree of reknown in the Mid-Atlantic region,” but the evidence shows that they fall short of demonstrating nationwide fame. Thus, SEACRETS is a “strong mark with significant regional reknown which should accord a wider scope of protection.” Registration barred with Board sustaining a finding of LOC after balancing du Pont factors.
Allergan Inc. v. Boot Ox Pty Ltd. 91193303 3/6/2012 BOARD`S DECISION: SUSTAINED N
Opposer, owner of BOTOX pharmaceutical solution, successfully opposed BOOTOX mark for shoe horns, shoe stretchers, etc under Section 2(d); applicant provided not evidence
Bio-One, Inc. v. A.L.E.G., Inc. 92052195 3/8/2012 BOARD`S DECISION: GRANTED N
Petition for cancellation alleged fraud but failed to properly argue the necessary elements to show fraud. But, when balancing the factors, LOC likely and Petitioner has show priority, so registration is cancelled. Petitioner’s mark: BIO-ONE; respondent’s mark: BIO1ONE; both for use in connection with fertilizers
Kaplan v. Proctor & Gamble 92052998 3/6/2012 MOTION GRANTED; TRIAL DATES REMAIN AS SET Board explained to pro se petitioner that he must answer questions in his deposition.
Max Mara Fashion Group, S.r.l. v. Macays Stores Limited 91201523 3/5/2012 MOTION TO STRIKE; GRANTED; PROCEEDINGS RESUMED; TRIAL DATES RESET N
Motion by opposer Max Mara to strike the affirmative defenses of Mackay. Mackay sought 66(a) extension of protection for mark M&CO. for clothing items. Max Mara opposed based on existing MAX & CO.  and MAX&CO. marks for clothing and retail store services. Mackay’s six affirmative defenses were unsupported, insufficiently pleaded, non-specific,  or otherwise not actually affirmative defenses, and Max Mara’s motion to strike was granted for all six affirmative defenses.
Coyne, et al. v. Dervaes Institute; Denver Urban Homesteading, LLC v. Dervaes Institute 92053837 3/6/2012 PROCEEDINGS RESUMED; TRIAL DATES RESET N Respondent owns registration for URBAN HOMESTEADING for educational services, entertainment services, online journals, etc. Denver Urban Homesteading’s motion to test the sufficiency of respondent’s responses to requests for admission is denied without prejudice.
Amylin Pharma, Inc. v. Amlin Health LLC 91199018 3/9/2012 PROCEEDINGS RESUMED; TRIAL DATES RESET N
Board analyzed Pioneer Investment factors for excusable neglect and found that applicant has not established excusable neglect to reopen time to answer. Applicant sanctioned and given twenty days to serve its initial disclosures.
Beats Electronics, LLC v. Merkury Innovations, LLC 91203192 3/6/2012 P`S MOT. TO STRIKE GRANTED, IN PART, DENIED, IN PART; TRIAL DATES REMAIN AS SET N Eight of applicant’s affirmative defenses are not affirmative defenses; they are mere “amplifications fo applicant’s denials.” Because they put the opposer on notice in more detail of applicant’s position, there is no harm in leaving them in the record. The remainder of the affirmative defenses do not have the factual support of the record and the motion to strike them is granted.
JobDiva, inc. v. Jobvite, Inc. 92050828 3/9/2012 PROCEEDINGS RESUMED N Petitioner failed to fulfill its obligation under Trademark Rule 2.120(e)(1)  with respect to revised discovery requests, so its motion ro request production responses is denied. Overall, parties did a poor job of communicating with each other and following the schedule.
Red Bull Gmbh v. Anhing Corporation 92053993 3/6/2012 PROCEEDINGS RESUMED N
Petitioner Red Bull’s motion to strike affirmative defenses is granted.

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