Recent TTAB decisions and activity of note (4/2 – 4/8/2012); case suspended since 2004 denied motion to continue suspension

During the week of April 2 – April 8, 2012, the TTAB did not issue any precedential decisions – however it issued many other decisions and rulings which cover important substantive and procedural issues. In one very interesting ruling, the Board denied a motion to continue the suspension of a proceeding that was instituted in 2004 and has been suspended ever since.

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

Precedent?

Notes

92053426

04/03/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED

N

Cross motions for summary judgment denied.

76664409

04/05/2012 BOARD`S DECISION: AFFIRMED

N

Pro se applicant appealed descriptiveness refusal of ORPHAN’S FUND FOUNDATION for education fund services; assertion of 2(f) acquired distinctiveness claim raised for 1st time in applicant’s brief denied; 2(e)(1) refusal affirmed. Final refusal of services description (“wildflower — educational fund for higher

education”) also affirmed.

77435929

04/06/2012 BOARD`S DECISION: AFFIRMED

N

Applications for SONEX for “internal combustion engines” for manned and unmanned aerial vehicles. Refusal issued due to likelihood of confusion with SONEX for “aircraft, and aircraft kits comprised of aircraft parts and

plans to build complete aircraft.” Finding goods related and no limitations to channels of trade, board affirmed refusal. Specimen refusal (including a press release) also affirmed.

77747951

04/06/2012 BOARD`S DECISION: AFFIRMED

N

PURE JAVA THE ORIGINAL ENERGY DRINK logo (for coffee) refused (A) under Sect. 2(d) due to PurJava logo for coffee, and (B) due to disclaimer requirement for ‘PURE JAVA THE ORIGINAL ENERGY DRINK.” Refusal affirmed on both grounds.

77819705

04/03/2012 BOARD`S DECISION: AFFIRMED

N

Applications for SCORED

NOVELLA , SCORED SHORT STORY, SCORED STORY and SCORED NOVEL, for “audio books” and related goods, refused as descriptive. Refusals affirmed.

77910055

04/02/2012 BOARD`S DECISION: AFFIRMED

N

Application for “e-volve technology systems, inc. [logo]” for variety of services including IT and computer services  refused due to similarity with I-VOLVE TECHNOGY SERVICES for computer services. Refusal affirmed.

77911173

04/03/2012 APPEAL TO CAFC

N

Board decision affirming disclaimer requirement for “MUNICH” for variety of business and financial services appealed to CAFC.

92031743

04/04/2012 RESPONSE DUE 30 DAYS (DUE DATE)

N

After last suspension order for 60 days expired without any filings by the parties and the case overall had been suspended since 2005, Board order required Petitioner to note what efforts had been made to resolve the issues in the pending motion to compel (filed in 2005).

92053616

04/02/2012 TRIAL DATES RESET

N

Respondent’s motion to compel discovery and petitioner failed to meet deadlines after several extensions and failed to appear at a scheduled phone conference. Motion to compel additional responses and documents granted.

91192141

04/02/2012 TRIAL DATES RESET

N

Motion to test the sufficiency of opposer’s responses to applicants’ 2nd set of requests for admissions. Opposer has responded to RFA’s by objecting to vagueness of several terms; while objections were without merit, the Board found the requests for admissions at issue were propounded for an improper purpose and thus denied the motion.

91197447

04/04/2012 TRIAL DATES RESET

N

Motion to reopen discovery filed by opposer after discovery ended (and had previously been extended 4 times by consent); Motion denied as “excusable neglect” was not demonstrated by opposer.

91197947

04/04/2012 TRIAL DATES RESET

N

91199160

04/04/2012 TRIAL DATES RESET

N

Opposer’s motion to compel granted based on applicant’s failure to respond to opposer’s discovery requests was due to excusable neglect.

91200478

04/05/2012 TRIAL DATES RESET

N

Motion for leave to amend answer granted b/c motion was prior to trial and prior to close of discovery; motion to extend discovery dates granted in part.

91201989

04/03/2012 TRIAL DATES RESET

N

Applicant filed response to notice of default 14 days after the deadline set by the Board, and was given another deadline to show good cause as to why default should be set aside. Applicant’s default was found not willful nor the result of gross neglect. Entry of default set aside and proceeding resumed.

91195999

04/04/2012 AMDT GRANTED IN PART; PROC. REMAIN SUSPENDED

N

Consented motion to amend drawing of logo mark denied as a material alteration.

91202376

04/03/2012 D`S MOT. TO DISMISS/MORE DEF. STATEMENT GRANTED WITH LEAVE TO AMEND; TRIAL DATES RESET

N

Applicant’s combined motion (1) to dismiss false suggestion of connection and dilution claims under FRCP 12(b)(6) and (2) for a more definite statement regarding 2(d) claim. Both motions granted.

91189001

04/03/2012 D`S MOTION TO COMPEL GRANTED; TRIAL DATES RESET

N

Applicant’s motion to compel. Motion to compel discovery responses granted and Opposer is required to schedule the noticed depositions. Also, in response to discovery Opposer had noted ““plaintiff is

not aware with any degree of specificity the customers and channels of trade through which its distributors sell.” Opposer ordered to search its paper records and provide that information which it does have regarding the topic.

91204026

04/04/2012 MOTION TO AMEND DRAWING DENIED; PARTIES ALLOWED 60 DAYS TO SUBMIT THE AMENDED DRAWING

N

Motion to amend drawing of mark from “A BULLY FREE WORLD” to “A WORLD WITHOUT BULLYING” denied.

91195911

04/06/2012 PROCEEDINGS RESUMED; TRAIL DATES RESET

N

Board considered Opposer’s motion to compel and Applicant’s motion to compel. Opposer’s motion denied after Applicant indicated it was not in possession of any additional responsive documents. Applicant’s contention that Opposer’s interrogatories exceeded 75 denied.

“During the conference, the Board attorney underscored that either party’s attempt to introduce or rely on unproduced responsive information, documents or things may result in the Board’s imposition of the estoppels sanction.  That is, a party who responds to a request for discovery by indicating that it does not have the information sought, or by stating objections thereto, may be barred by its own action from later introducing the information sought in the request as part of its evidence on the caseSee Panda Travel, Inc. v. Resort Option Enterprises, Inc., 94 USPQ2d 1789 (TTAB 2009); Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1896 n.5 (TTAB 1988).”

91200672

04/06/2012 P`S MOTION TO COMPEL DENIED; TRIAL DATES RESET

N

Opposer’s motion to compel initial disclosures and discovery responses without objection. Opposer found to have failed to properly meet and confer to try to resolve issue before filing the motion and thus motion denied.

91198059

04/02/2012 P`S MOTION TO COMPEL; MOTION TO RE-OPEN DENIED; TRIAL DATES RESET

N

Opposer’s motion to compel denied as untimely – once the 1st trial period opens, a motion to compel is untimely even if filed prior to the opening of the rescheduled testimony period for plaintiff. Motion to extend discovery construed as one to reopen discovery and denied. Opposer served its request 2 days prior to the close of discovery.

“Applicant is reminded that, if a party provides an incomplete response to a discovery request, that party may be thereafter precluded, upon a motion to strike or objection, from relying at trial on information from its records which was properly sought in the discovery request, but which was not included in the response thereto, unless the response is supplemented in a timely fashion pursuant to Fed. R. Civ. P. 26(e)See Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718 (TTAB 1987); and TBMP § 408.02 (2d ed. rev. 2004)”

92048691

04/03/2012 P`S MOTION TO STRIKE GRANTED; TRIAL DATES RESET

N

Petitioner’s motion to strike affirmative defenses of unclean hands, consent, waiver and estoppels, laches, and acquiescence. Motion granted (“the pleaded affirmative defenses merely plead the legal conclusion, and do not plead facts in connection with each defense which, if proven, would entitle respondent to prevail on the affirmative defense. The defenses plead no facts at all”)

91198793

04/06/2012 P`S MOTION TO SUSPEND DENIED; TRIAL DATES RESET

N

Opposer’s motion to suspend case for 60 days as it is process of being acquired is denied. “The Board

finds that opposer has failed to demonstrate the necessary good cause to suspend this case.  The Board notes that the parties are not currently engaged in settlement negotiations and that, as indicated by applicant, opposer’s mere speculation that the acquisition could result in a heightened possibility of settlement is not enough to suspend proceedings at this time.”

91162953

04/06/2012 PROCEEDINGS RESUMED

N

Motion to suspend denied – case has been pending and suspended since 2004 and answers have yet to be filed. (“efforts presented by opposer do not show extraordinary circumstances”)

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