Recent TTAB Decisions and Activity of Note (3/12 – 3/18/2012): One case re-instituted after 10 year delay

Catching up on decisions from last month still!

During the week of March 12 – March 18, 2012, the TTAB issued one precedential decision regarding service of process. It also issued many other decisions and rulings which cover important substantive and procedural issues..

Several important and interesting decisions or interesting procedural and discovery issues are highlighted in bold. Of particular interest is the case that has been on hold for more than 10 years – the Board believes the file has been lost and has asked the parties for help to reconstruct it.

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

Board’s Action

Precedent?

Notes

92052101

03/16/2012 DEF`S. MOT. FOR SUMMARY JUDGMENT GRANTED

N

Petitioner seeks to cancel STEAK OF THE MONTH for “electronic retailing services via computer featuring food and food related products” as generic. Petitioner previously lost a suit to respondent and is barred from operating any site or domain containing “STEAK OF THE THE MONTH,” thus the Board found Petitioner had no standing. Furthermore, the claim was litigated previously and is barred by res judicata. Respondent’s Motion for Summary judgment granted.

91188283

03/14/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED

N

Motion for summary judgment denied.

91195692

03/12/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED

N

Applicant’s motion for summary judgment on Opposer’s claim of likelihood of confusion denied; Opposer’s partial mostion for summary judgment regarding Applicant’s affirmative defenses granted in part and multiple affirmative defenses stricken.

91197260

03/16/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED

N

Cross-motions for summary judgment denied. Board scolds parties for their misconduct: We believe the parties’ use of wording such as “misguided and  ludicrous” (motion, p. 3); “audacity” (reply, p. 4);  “personal vendetta” (reply, p. 12); “frivolous and harassing” (motion, p. 9; reply, p. 12); and “appallingly,” “baseless,” and “astounding” (brief in opposition, p. 4) is unnecessary and reveals a lack of decorum.  Moreover, such behavior at

this early stage in the proceeding is roublesome and does not further the orderly disposition thereof.

92051437

03/16/2012 PLAIN`S MOT. FOR SUMMARY JUDGMENT GRANTED

N

Petitioner’s motion for summary judgment on 2(d) claim granted; JEWELRY FOR LIFE (for jewelry) cancelled due to priority and confusion with Petitioner’s JEWELERS FOR LIFE (jewelry store services)

92052150

03/13/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED

N

Petitioner’s Motion for Summary Judgment denied where civil action between the parties was settled but did not cover trademark issues.

92053072

03/13/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED

N

Motion for Summary Judgment denied.

91190276

03/15/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED

N

Cross-Motions for Summary Judgment denied.

94002238

03/13/2012 BD`S DECISION: FAVORABLE TO APPLICANT

N

Consent agreements and concurrent used accepted

94002403

03/12/2012 BD`S DECISION: FAVORABLE TO APPLICANT

N

Consent agrement regarding concurrent use accepted

77404047

03/14/2012 BOARD`S DECISION: AFFIRMED

N

Refusal of BIONICAM for failure to provide proper specimen affirmed where specimen only showed use on 1 of 2 classes of goods

77531829

03/15/2012 BOARD`S DECISION: AFFIRMED

N

Refusal of WHISPER and WHISPER DRIVE for window blinds and shades affirmed due to 2(d) conflict with registered mark WHISPERSHADE for motorized window shades and WHISPERTRAC for motorized track components for window coverings

77757688

03/15/2012 BOARD`S DECISION: AFFIRMED

N

Refusal of BEIJING BEEF (for ‘prepared chinese food’) under Sect 2(e)(1) affirmed: “Such term immediately conveys, without speculation or conjecture, that the goods are of a category of food prepared using the Beijing style of cooking.”

77910810

03/12/2012 BOARD`S DECISION: AFFIRMED

N

Refusal of iCookbook for portable electronic reading device under Sect 2(d)(1) affirmed: “As shown by the evidence of record, the combination iCookbook has no other unique or incongruous meaning in relation to applicant’s recited goods and services apart from the descriptive significance of the two separate terms themselves.” Applicant’s additional evidence was improperly submitted and not verified.

77932193

03/14/2012 BOARD`S DECISION: AFFIRMED

N

Refusal to register EL OBSERVADOR DE UTAH and two designs containing the wording  (for newspapers and electronic publications) under Sect 2(d) due to registration of EL OBSERVADOR & Design” for publications affirmed.

85001018

03/16/2012 BOARD`S DECISION: AFFIRMED

N

Refusal of ATLANTA TREND for “providing information and news in the field of business” under Section 2(d) due to registered mark GEORGIA TREND for “magazines dealing with Georgia business and finance” affirmed: “Despite the fact that the geographic indicators are different, the marks convey the same overall commercial impression, and the similarities in appearance caused by the inclusion of the identical dominant word element “Trend” in both marks outweigh the differences.”

77445394

03/14/2012 BOARD`S DECISION: REVERSED

N

Applications for GREEN CONNECT in standard character and logo for “promoting consumer awareness in the field of renewable energy…” refused under Section 2(d) due to registration of GREEN CONNECTED and GreenConnected logo for similar environmental services. Applicant’s also refused under Sect 1 and 45 lack of use in connection with the services; and logo refused on the ground that mark on the specifmes differs from the drawing. Board found that because GREEN is weak, confusion not likely and reversed refusal. Board found the specimens of use acceptable. Board found the variation between drawing page and specimen an “inconsequential variation,” and thus reversed all three grounds of refusal.

91194188

03/13/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT

N

Plaintiff seeks to cancel registration of SPRINKLES for “bakery goods” and “retail shopes featuring baked goods” on grounds of priority and likelihood of confusion with its use of SPRINKLES for baked goods and retail store. Following Plaintiff’s Motion for Summary Judgment, Defendant filed Rule 56(d) motion for disovery seeking: depositions that it noticed prior to the MSJ filing; deposition of delcarants in support of the MSJ; responses to document requests; and other claims. Defendant’s affirmative defenses of laches, waiver, acquiescence and estoppel deemed insufficient and stricken. Defendant’s motion for Rule 56(d) discovery granted; but only to the extent that defendant allowed 60 days to take depositions of certain persons regarding certain subjects.

91199038

03/16/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT

N

Opposer filed motion to compel after Applicant’s motion for summary judgment was pending; The motion to compel will not be considered as parties should have known the Board will suspend the proceeding pending outcome of potentially dispositive motion.

92053377

03/16/2012 RESPONSE DUE 30 DAYS (DUE DATE)

N

Defendant’s motion to dismiss the amended petition for cancellation for failure to state a claim granted as to some grounds of fraud and denied as to other grounds.

92053554

03/16/2012 TRIAL DATES RESET

N

Defendant brought motion to dismiss proceeding on grounds that Petition did not exist as a U.K. corporation when the petition was filed and thus lack standing. Respondent failed to plead such a defense it its answer or seek leave to amend the answer; failed to produce any evidence of such and motion denied, and also failed to serve initial disclosures before filign the motion. Motion denied.

92053693

03/12/2012 TRIAL DATES RESET

N

Petition sought to amend its pleading to add a claim of abandonment and to expand 2(d) claim to include a second Class of goods. Regarding the expansion of goods in the 2(d) claim, Petitioner failed to show any reason for delay, and motion to leave to amend denied. Regarding abandonment claim, Petitioner’s claim based on an announcement on respondent’s website avaiable at the time of filing. But because no new discovery is sought there is no prejudice and motion to amend to add claim of abandonment is granted.

91173784

03/14/2012 TRIAL DATES RESET

N

Applicant moved for judgment as a sanction for Opposer’s failrue to provide a properly verified responses to interrogatories as required in a board order many months earlier. The verification provided by Opposer did not include the title of the signatory or state and did not state conclusively that all responses are true. Board construed the verification as sufficient and denied motion for sanctions, but imposed a lesser sanction regarding discovery.

91201847

03/13/2012 TRIAL DATES RESET

N

Three weeks after the Board issued notice of default of application for failure to file an answer, Applicant filed an answer and motion to set aside default. Motion granted as default was not willful nor the result of gross neglect.

91191370

03/12/2012 BOARD`S DECISION: SUSTAINED

N

HAC logo for cosmetic and beauty products opposed based on registered MAC and MAC logo for cosmetic and beauty products. Opposer’s marks found famous. Applicant’s 3rd party registration evidence attached to answer not considered b/c not properly submitted. Marks found similar in sight and in sound, especially considering fame of Opposer’s marks. Result: Opposition sustained.

91116517

03/14/2012 BOARD`S COMMUNICATION

N

No action had been taken in the proceeding since 2001; Board presumed its filed to be lost. Board order requests assistance constructing a duplicate file if Opposer wishes to continue the proceeding.

94002503

03/16/2012 BOARD`S ORDER

N

Board found concurrent use agreement between the parties insuficient, but Board makes suggestions for amending the agreement.

91203607

03/16/2012 D`S MOTION TO DISMISS DENIED; TRIAL DATES RESET

N

Applicant’s motion to dismiss opposer’s asserted claim of priority and likelihood of confusion under Fed. R. Civ. P. 12(b)(6) for failure to state a claim upon which relief can be granted is denied.

91194974

03/16/2012 MOT TO EXTEND GRANTED; MOTION TO COMPEL DENIED

N

Board granted applicant’s motion to extend time to provide rebuttal expert disclosures and denied opposer’s motion to compel such disclosures.

92052419

03/16/2012 MOTION FOR SANCTIONS; DENIED; SUSPENDED

N

Respondent, after several extensions and delays due to withdrawal of counsel, failed to respond to discovery requests. Pettitioner’s motion for sanctions denied where respondent has not failed to comply with a Board order; Respondent ordered to provide disvoery responses by a certain date.

92054121

03/12/2012 MOTION TO DISMISS GRANTED

Y

Defendant’s motion to dismiss for failure of service granted. Petitioner served Brad D. Rose of the law firm Pryor Cashman LLP, an attorney who was never respondent’s counsel of record, but who responded in writing to a cease and desist letter that petitioner’s counsel had sent to the counsel of record listed for respondent during ex parte examination, Brian R. McGinley of the law firm Sonnenschein, Nath & Rosenthal LLP. But since it was clear that respondent is on notice of this proceeding, proceding institututed by the Board with a later institution date.

92053102

03/16/2012 MOTIONS GRANTED; TRIAL DATES RESET Respondent Reebok’s motion for leave to amend its answer and add claims filed 8 days prior to close of discovery is granted. Respondent’s motion to compel discovery esponses hwere petition objected to a whole set of discovery requests as irrelevant is granted to the extent the request are relevant to the amended answer.

91198117

03/14/2012 MOTIONS TO COMPEL; DENIED; PROCEEDINGS RESUMED; TRIAL DATES RESET Both parties filed motions to compel. Regarding opposer’s motion, opposer failed to provide a statement of good faith effort to resolve the issues or any indication of making such an effort, and the motion was denied. Regarding Applicant’s motion, applicant fialed to provide a statemetn of good faith effort and the only effort to reolve was the sending of one letter, and the motion was also denied.

92054050

03/16/2012 PROCEEDINGS RESUMED; RESPONSE DUE IN (20) DAYS Reply brief which was 12 pages, more than the allowed limit of 10, was not considered. Respondent’s motion to dismiss is granted regarding pleading of fraud.

91194774

03/05/2012 SUSPENDED FOR SETTLEMENT; DATES RESET Opposer’s motion to amend protective order granted; the amendment allows in house counsel to review trade secret materials with restrictions: “No emails which involve such materials may be sent or received by opposer’s (or any of opposer’s related companies’) domains, servers, or computer systems; Dr. Westerlund must use an outside email system such as Yahoo, Gmail, or the like.  And, if it is necessary to print such information, Dr. Westerlund may not print using opposer’s (or any of opposer’s related companies’) printers, but may print using her work-at-home printer.”

Opposer’s motion to compel denied as opposer has not met burden to make a good faith effort to resolve the issues fist.

92050171

03/14/2012 PROCEEDINGS RESUMED Petitioner moved for sanctions alleging that 30(b)(6) witnesses were unprepared to answer questions on multiple topics at deposition. Board denied sanctions requested but permitted petitioner to conduct an additional deposition regarding some of the topics.

91194574

03/13/2012 PROCEEDINGS RESUMED Applicant’s motion for sanctions denied as premature. Applicant’s motion to compel denied as “procedurally deficient because applicant failed to provide the required certification of good faith effort under 37 CFR § 2.120(e).”

91198579

03/13/2012 PROCEEDINGS RESUMED Applicant’s second counterclaim is a new claim of fraud alleging that Opposer filed a press release as a specimen but describe it as advertising; the counterclaim is stricken as “there are no general or specific allegations regarding opposer’s knowledge and intent to deceive the USPTO to procure a registration to

which opposer was not entitled, which is required for a pleading of fraud against the USPTO.” Applicant’s 3rd counterclaim related to Opposer’s Section 8 and 15 filing and was similarly stricken.

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