Recent TTAB decisions and activity of note (3/26 – 4/01/2012)

Still catching up a bit on a lot of recent activity from the Board. Between 3/26/12 and 04/01/2012), the TTAB issued many decisions, as well as several discovery and other procedural rulings.0

Here is a rundown of the activity of note from the TTAB for the period [visit http://ttabvue.USPTO.gov to view any of the proceeding and documents]:

[I have highlighted interesting cases and decisions in bold]

Proceeding  No. Date TTAB disposition Prec-edent? Notes
In re PBM Products, Inc, 77368754 3/29/2012 BOARD`S DECISION: AFFIRMED No Refusal to register VERMONT ORGANICS for organic baby food from Vermont affirmed as primarily geographically descriptive, 2(e)(2).
In re Pearson Dental Supplies, Inc. 77470466 3/29/2012 BOARD`S DECISION: AFFIRMED No SYLK for dental floss refused for LOC with SILK also for floss; affirmed by Board. Board also affirms refusal on deceptively misdescriptive grounds because silk is not used in applicant’s floss and is used in the industry and would be a relevant factor to some consumers purchasing decision.
In re Chubby’s, Inc. 77493297 3/30/2012 BOARD`S DECISION: AFFIRMED No EA refused registration of CHUBBYS for bar and restaurant services based on LOC with EL CHUBBY’S for restaurant services featuring Mexican food. Board affirms refusal to register.
In re Guisto’s Specialty Foods LLC 77528795 3/30/2012 BOARD`S DECISION: AFFIRMED No EA refused registration of VITA-GRAIN for cooking ingredients based on LOC with VITOGRAIN for nearly identical products. Board affirms refusals.
In re American Express Marketing & Development Corp. 77538456 3/30/2012 BOARD`S DECISION: AFFIRMED No EA refused registration for MONEYEXCHANGE for stored value cards in Class 9, various financial services in Class 36, and online account services in Class 38, all cited as descriptive under 2(e)(1). Applicant made amendment seeking Supplemental Registration. Class 9 published, but Classes 36 and 38 refused for genericness. Board affirmed refusals to register.
In re Coty US LLC 77631330 3/29/2012 BOARD`S DECISION: REVERSED No EA refused registration for TEMPEST for perfumes, soaps, and body washes in Class 3, but registration was refused based on likelihood of confusion with TEMPEST for “indoor tanning preparations” in Class 3. Board reversed refusal to register citing that the registered mark includes only a very narrow set of goods and these goods are marketed and sold to sophisticated professionals.
In re Sonatt Nutritionals 77827420 3/27/2012 BOARD`S DECISION: AFFIRMED No EA refused registration of stylized SONŪ mark for dietary supplements in Class 5 based on likelihood of confusion with stylized SONU for beferages in Class 32. Board affirmed refusal and noted that the applicant repeatedly made improper collateral attacks on the registered mark during prosecution.
In re CellCorp USA LLC 77860793 3/28/2012 BOARD`S DECISION: AFFIRMED No EA refused registration for the configuration of a backpack with exterior pockets holding a water bottle and a flashlight citing that the product design had not acquired distinctiveness. The Board affirmed refusal noting that the applicant has a “heavy burden in establishing the distinctiveness of a product design.” Despite the presence of significant sales figures, there was no media attention and customers were not likely to look at the design as a trademark.
In re Nissan North America, Inc. 77865978 3/30/2012 BOARD`S DECISION: REVERSED No EA refused registration of ONE-TO-ONE SERVICE mark and same mark in stylized form for vehicle maintenance repair services citing LOC with ONE-TO-ONE SERVICE.COM and same mark in stylized form for online customer service management services. The Board reversed the refusal after analyzing similarity of the marks, similarity of the services, channels of trade and class of purchasers, and buyer sophistication and finding that the factors weigh in favor of registration.
In re William Coden 77899687 3/26/2012 BOARD`S DECISION: AFFIRMED No EA refused registration of FIDO’S FENCES for batteries in Class 9 and “installing pet containment systems” in Class 37 citing likelihood of confusion with FIDO-SHOCK for “pet deterrant electric fences.” The Board affirmed refusal citing that FIDO is the dominant part of the marks and that even batteries (presumably to be used in the fences) are likely to be confused.
In re Strategic Partners, Inc. 77903451 3/28/2012 BOARD`S DECISION: REVERSED Yes EA refused registration of stylized ANYWHERE mark for footwear citing likelihood of confusion with stylized ANYWHERE BY JOSIE NATORI for jackets, skirts, pants, tees, and stoles. Applicant has argued that the marks and goods are different, but also cites ownership and coexistance for more than five years of standard character mark ANYWEARS mark for footwear and socks, but not other clothing items. Board stated that under normal circumstances likelihood of confusion was likely between the marks, but considering the applicant’s existing registrations and the thirteenth du Pont factor (any other established fact probative of the effect of use), confusion is not likely.
In re Republic Bike Inc. 77909077 3/26/2012 BOARD`S DECISION: AFFIRMED No EA refused registration for REPUBLIC for bicycles and parts, excluding tires citing likelihood of confusion with REPUBLIC for tires (a brand owned by Goodyear). The board affirmed refusal citing identical marks and the fact that registration is for “tires”, generally, which could include bicycle tires. Goodyear in fact made bicycle tires until 2006 and various companies make both bicycle tires and car tires (Continental, Michelin, Kenda, etc.). The evidence also shows that  marks used to identify bikes are also used to identify bicycle tires.
In re Sketchers U.S.A., Inc. II 77922983 3/30/2012 BOARD`S DECISION: AFFIRMED No EA refused registration of TWINKLE TOES for “Dolls, excluding dolls relating to characters from children’s books; doll clothing; and doll accessories” citing likelihood of confusion with TWINKLE TOES for children’s books. Board affirmed refusal.
In re Steamboat Springs Chamber-Resort Association, Inc. 77939915 3/31/2012 BOARD`S DECISION: REVERSED No EA refused registration of BIKE TOWN USA mark (BIKE and USA disclaimed) for organizing bicycle races in Class 41 citing likelihood of confusion with BIKETOWN for bicycle promotion services and contests in Class 35. The Board, after balancing the factors including a lengthy discussion of the dissimilarity of the services, reversed the refusal to register.
In re Fedrigoni S.p.A. 79069010 3/27/2012 BOARD`S DECISION: AFFIRMED No EA refused registration of MULTILEVEL for printer supplies in class 2; printed holograms and encoded cards in Class 9; currency and currency making paper and the like in Class 16; and security threads and the like in Class 17 citing that the mark is merely descriptive. Board affirmed refusal for Classes 9 and 16 and affirmed EA’s requirement for more specificity in the descriptions for ID cards in Class 16. The Board reversed the refusal to register for goods in Classes 2 and 17 and reverse the requirement for more specificity in the identification of goods in Class 17.
In re Equine Natural Choice, L.L.C. 85056406 3/27/2012 BOARD`S DECISION: AFFIRMED No EA refused registration of EQUINE NATURAL CHOICE (EQUINE NATURAL disclaimed) for animal feed supplements and the like for LOC with EQUINE CHOICE for horse feeds. Board affirmed refusal to register after balancing the du Pont factors.
In re Big Time Holdings, Inc. 85057799 3/29/2012 BOARD`S DECISION: AFFIRMED No EA refused registration of BLIZZARD for gloves based on likelihood of confusion with BLIZZARD and similar design mark (of BLIZZARD ENTERTAINMENT) for “clothing, namely hats and shirts”, both in Class 25. Board affirmed refusal to register after balancing the du Pont factors.
In re International Christian Broadcasting, Inc. 85058128 3/29/2012 BOARD`S DECISION: REVERSED No EA refused HEROES UNDER GOD design mark for retail store services citing that the specimin submitted fails to show use of the mark in commerce with the identified services, noting that the specimins tend to show the mark with specific goods rather than to identify the services. Board reversed the refusal to register citing that the applicant’s specimin of use is adequate to support their contention that the mark is used to promote retail services.
UPS v. Unigroup Worldwide, Inc. 91175419 3/26/2012 BOARD`S DECISION: DISMISSED No Unigroup sought to register two design marks with content “UNIGROUP WORLDWIDE UTS” for business management and consulting in Class 35 and transportation, warehousing, storage, and freight services in Class 39. UPS opposed the application citing its own registrations of UPS for similar services in classes 35 and 39. The board considered the relevant du Pont factors and determined that confusion is not likely, citing to a significant difference in the marks.
Amazon Technologies, Inc. v.Wax 91187118 3/30/2012 BOARD`S DECISION: SUSTAINED No Amazon.com opposed registration of AMAZON VENTURES mark for venture capital services. The Board affirmed the opposition citing a likelihood of confusion.
RIM v. Sensors in Motion Inc. 91188320 3/26/2012 BOARD`S DECISION: DISMISSED No RIM opposed registration of SENSORS IN MOTION mark (SENSORS disclaimed) for automated process control systems related to industrial and electrical machinery and processes, GPS, remote controls, game controllers, and and the like alleging likelihood of confusion with goods and/or services offered under RIM’s RESEARCH IN MOTION mark. Board dismissed the opposition.
Byrn v. Culinaria, Ltd. 91189139 3/30/2012 BOARD`S DECISION: SUSTAINED No Byrn opposed registration of Culinaria’s applied for-mark, DINNER DOCTOR, for education and entertainment services relating to food and cooking, namely radio, tv, internet, etc. Opposition was based on likelihood of confusion and fraud. Opposer claims prior use (but no federal registration of) THE DINNER DOCTOR for television, radio, and print cooking information as well as claims ownership of registered mark THE CAKE MIX DOCTOR for cookbooks and for educational cooking services. Opposer established by a preponderance of the evidence that she has priority, and there is a likelihood of confusion. As such, the board sustained the opposition.
Fred’s Capital Management Company v. Fred Beverages, Inc. 91193052 3/30/2012 PROCEEDINGS RESUMED No FBI had application denied because of likelihood of confusion with FCMC registration, so FBI filed for partial cancellation of FCMC mark in Class 32. Partial cancellation was granted and FBI’s mark was approved for publication. FCMC subsequently opposed the FBI mark. Board analyzed issue of standing of applicant to seek cancellation because of abandonment after they surrendered the Class at issue in the LOC refusal, but the Board rejected this argument. The Board did grant opposer’s motion to strike one of the allegations from applicant’s amended petition because the paragraph only related to the already cancelled Class 32.
Edom Laboratories, Inc. v. Lichter 91193427 3/30/2012 BOARD`S DECISION: SUSTAINED Yes Opposer, Edom, objected to application of applicant for SUPER CHIRO TEA based on opposer’s registration for CHIRO-KLENZ citing LOC between the products. Parties agreed to ACR. The Board gave an interesting discussion of the similarity of the marks and, citing evidence of actual confusion and applicant’s bad faith intent, sustained the opposition.
91194106 3/26/2012 BD`S DECISION: DISMISSED W/ PREJUDICE No Two car clubs fighting over “LONG ISLAND VETTES” mark.  Parties agreed to ACR including several stipulated facts. Applicant found to have priority based on use for several years prior to Opposer’s incorporation, as a result, the Opposition was dismissed.
91195989 3/27/2012 BD`S DECISION: DISMISSED W/ PREJUDICE No Opposition to “HipRoc” for clothing based on Opposer’s marks HIP ROCK & Design and HIP ROCK AUTHORITY & Design for clothing. Opposer’s pleading and Brief actually aruged that there is no confusion as though responding to an Office Action or seeking a declaratory judgment. Neither party introduced any testimony or evidence. Opposer did not prove standing or priority, and Opposition dismissed with prejudice.
91196106 3/26/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED No Opposer filed MSJ; Applicant moved to repopen time to respond to Requests for Admissions or to withdraw such admissions, claiming it did not receive the RFA’s until after the time to respond expired (Applicant is a South Korean corporation and blamed delay on its agent). Board found Applicant found to have failed to establish excusable neglect and RFA’s are deemed admitted, but Applicant’s motion to withdraw its admissions is granted. Because the MSJ rested solely on the RFA admissions, it was denied.
91196776 3/29/2012 TRIAL DATES RESET No Applicant’s motion to compel further interrogatory responses and document production. Board found that despite correspondence between counsel, Applicant did not make the requisite good faith effort prior to filing motion. “Choosing to ignore opposer’s invitation to further clarify applicant’s discovery demands in view of opposer’s stated objections and, instead, filing a motion to compel does not meet said burden.”
91197754 3/27/2012 PROCEEDINGS RESUMED No Applicant’s motion for leave to share a document Opposer labeled as confidential “trade secret” document with a translator of its choice. Motion granted; translator should be advised of the terms of the protective order. Board sua sponte noted that several of the claim pleaded by Opposer are insufficient. Board also noted: The hostile and accusatory tone of the parties’ submissions herein, however, has not gone unnoticed.  The parties are reminded to conduct themselves with courtesy and decorum herein.
91199922 3/28/2012 D`S MOT TO DISMISS GRANTED, IN PART, DENIED, IN PART; TRIAL DATES RESET No Applicant’s (Nike, Inc.) application for 20XI & Design for apparel and other goods opposed on a variety of grounds, including the Paris Convention, based on Oppposer’s 20XII THE HONOR OF SPORT mark. Applicant moved to dismiss for failure to state claim: Dilution claim found insufficient; Aricle 8 of Paris Convention claim dismissed with prejudice as not a proper independent basis; claim of ownership of foreign registration dismissed as not in and of intself a ground for opposition; willful trademark infringement claim dismissed as outside jurisdiction of TTAB; claims of priority and likelihood of confusion permitted to go forward.
91200683 3/27/2012 BD`S ORDER RE TELEPHONE CONFERENCE No Opposer’s motion for applicant to supplement initial disclosures granted; Board found applicant’s initial disclosures insufficient as they did not include the location of the identified document and did not identify and potential witnesses.
91202393 3/27/2012 AMENDMENT DENIED/TRIAL DATES RESET No Consented motion to amend mark from PELICAN BAY RUM to PELICAN RUM denied as a material alteration of the mark.
91202567 3/28/2012 P`S MOT TO STRIKE GRANTED, IN PART, DENIED, IN PART; TRIAL DATES RESET No Opposer moved to strike certain affirmative defenses from Applicant’s answer. Defenses of unclean hands, acquiescence, and more stricken as motion granted in part.
91202725 3/29/2012 TRIAL DATES RESET No Applicant’s motion for a more definite statement regarding the Notice of Opposition is denied.
92049165 3/30/2012 CROSS-MOTIONS FOR SUMMARY JUDGEMENT DENIED No Cross motions for summary judgment denied. Note: parties each had an expert and Opposer had a survey conducted.
92049913 3/29/2012 DEF`S. MOT. FOR SUMMARY JUDGMENT GRANTED No Levis’ opposed application of Abercrombie & Fitch for jean pocket stiching pattern on grounds of 1) priority and likelihood of confusion, and 2) dilution. Opposition was suspended pending federal case where Levi’s failed on 2(d) grounds and the dilution grounds were withdrawn after Ninth Circuit overruled district court’s finding of no dilution. A&F moved for sum. judgment on claim preclusion and/or issue preclusion (collateral estoppel). Levi’s argued that the dilution claim The Board found its voluntary dismissal of the dilution claim did not constitute adequate litigation of the issues to give rise to issue preclusion. Board granted A&F’s summary judgment after finding issue preclusion.
92051031 3/30/2012 PETITION TO CANCEL DENIED No Petition to cancel SCIENTIFIC SOLUTIONS & Design (with wording disclaimed) for supplements based on Petitioner’s registration of SCIENTIFIC SOLUTIONS for computer hardware and software. Petitioner’s evidence of actual confusion found vague and given no weight. “Notwithstanding the close similarity of the parties’ marks, when we consider the respective goods of the parties, which are so fundamentally dissimilar and sold in different trade channels to different classes of purchasers, we find that a likelihood of confusion does not exist.  Decision:  The petition to cancel is denied.”
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