Recent TTAB Decisions and Activity of Note (4/09 – 4/15/2012)

During the week of April 9 – April15, 2012, the TTAB issued no precedential decisions. But it did issue several important findings regarding discovery, surnames, geographic descriptiveness, concurrent use, and more in cases that involved Michael Jackson’s estate and the band Creed.

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 week [visit http://ttabvue.USPTO.gov to view any of the proceeding and documents]:

Proceeding No.

Date

Board Disposition

Precedent?

Notes

91191947

04/12/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED N Opposition to WOOFDORF-ASTORIA DOG HOSTEL & DAY SPA for pet boarding services brought by the owner of the WALDORF-ASTORIA hotel based on likelihood of confusion and dilution. Applicant moved for summary judgment on 2(d); opposer moved for summary judgment on claim of dilution by blurring. Applicant’s 2(d) MSJ was based solely on an attempted “parody” defense. Since “parody” as a matter of law does not avoid a likelihood of confusion, applicant’s MSJ denied. As to Opposer’s MSJ, board found “that there is a genuine dispute as to whether applicant’s mark would be viewed by the consuming public as a parody, as applicant asserts, or as an attempt by applicant to achieve his own branding goals by conveying that his services provide a level of luxury” and thus denied the motion.

94002361

04/12/2012 BD`S DECISION: FAVORABLE TO APPLICANT N Concurrent use proceeding regarding TIRE FACTORY marks. In May 2011 the Board issued an order in which it reviewed the parties 2005 agreement and found it unsatisfactory for a concurrent use registration, and allowed the parties time to prepare and file a concurrent use agreement. No such agreement having been filed, the Board resumed the proceedings. After the proceedings resumed, the Board now reconsidered and reverses its earlier decision, noting that in Holmes Oil Co. v. Myers Cruizers of Mena Inc., 101 USPQ2d 1148 (TTAB 2011), it permitted an agreement that was more of a consent agreement than a concurrent use. Thus the Board now finds the 2005 agreement acceptable for concurrent use: “Considering the parties’ consent agreement, taken together with the parties’ statements in the record, we find that this agreement between parties who are familiar with trade and market practices for their respective services is adequate evidence that confusion is unlikely, and supports TFI’s right to register the mark in question and the restriction of NWTF’s registration.”

76699882

04/10/2012 BOARD`S DECISION: AFFIRMED N AIRIA for “night clubs” refused under Section 2(d) confusion with AREA registered for “night clubs.” Key finding: “While a mark has no correct pronunciation, especially a coined term, applicant’s mark AIRIA is likely to be pronounced as “area.””

77484850

04/11/2012 BOARD`S DECISION: AFFIRMED N PITTSBURGH GLASS WORK for “glass and laminate windshield and windows for vehicles excluding aircraft” was refused as primarily geographically descriptive. Board affirmed the refusal: “the presence of the highly descriptive term GLASS WORKS in applicant’s mark does not detract from the primary geographical significance of the mark as a whole”  Furthermore, Applicant’s headquarters are located in Pittsburgh

77517867

04/11/2012 BOARD`S DECISION: AFFIRMED N Application for BOND NO. 9’s DUBAI for perfumes, soaps and cosmetics refused for failure to disclaim DUBAI on grounds that it is geographically descriptive. The Board found DUBAI clearly geographically descriptive and did not find the mark unitary, and affirmed the refusal.

77697443

04/10/2012 BOARD`S DECISION: AFFIRMED N Section 44(e) application for CROMWELL medical products in Class 9 refused as primarily merely a surname under SEection 2(e)(4). Applicant argued that “CROMWELL is not primarily merely a surname because its primary significance is Oliver Cromwell, a British general, Puritan statesman, and Lord Protector of England from 1653-1658.” Applicant relied in part on a survey of British citizens placing Oliver Cromwell in the ten greatest Britons, but evidence not relevant because it was not US citizens. Board affirmed refusal: “In view of the foregoing, we find that surname “Cromwell” is more akin to McKinley than Da Vinci” and “the evidence of “Cromwell” as a surname is greater than the evidence that “Cromwell” has any other significance.”

79080056

04/10/2012 BOARD`S DECISION: AFFIRMED N BELUGA & Design for ‘fishing tackle’ refused as merely descriptive. Refusal affirmed: “we find that BELUGA will be understood as immediately and directly describing a purpose of the identified “fishing tackle,” and that the mark is merely descriptive of the goods.”

77571488

04/12/2012 BOARD`S DECISION: REVERSED N Application for DOG GAMES (for “pet toys”) was refused  as generic and, alternatively, as highly descriptive and not having acquired distinctiveness under Section 2(f). Board found the mark not generic; “Doubt on the issue of genericness is resolved in favor of the applicant.” Board further found the mark descriptive, not “highly descriptive” as asserted by Examiner. “Given that DOG GAMES is not highly descriptive of pet toys, we are persuaded by the evidence of record that the term DOG GAMES has acquired distinctiveness for “pet toys.””

91199530

04/10/2012 RECONSIDERATION DENIED N Opposer moved for reconsideration of Board’s order denying summary judgment. Board found no error it its decision and denied the motion.

92053554

04/12/2012 RESPONSE DUE 30 DAYS (DUE DATE) N More than a year after proceeding commenced, Petitioner filed a motion for leave to file an amended petition to cancel, after it inadvertently filed the petition to cancel in the name under which it does business rather than its proper name (from Cabot Watch Company to Cabot Company Limited). The Board was not clear whether or not the change was to a different legal entity, and thus denied the motion without prejudice so Petitioner could re-move to amend and provide more details.

91199519

04/10/2012 TRIAL DATES SET N In regard to a motion to compel, the Board noted that “a party responding to document requests is not required to produce its discovery documents when it responds to those requests.  Document requests initially require only timely written responses.” “Although parties often extend each other the courtesy of copying documents and materials responsive to their respective document requests and forwarding the copies at the propounding party’s expense, a responding party may comply with Federal Rule of Civil Procedure 34 by making documents available for the propounding party’s copying and inspection.  See No Fear v. Rule, supra.  Neither Federal Rule of Civil Procedure 34 nor Trademark Rule 2.120 set forth a specific deadline by which document production must be completed.  However, such production should be completed so as to allow sufficient time for trial preparation. “

92055156

04/09/2012 TRIAL DATES RESET N Plaintiff’s motion for default judgment denied where defendant filed an Answer after the motion was filed, even though it did not file a response to the motion for default.

91198801

04/11/2012 TRIAL DATES RESET N Opposer’s [Record label for the band CREED] motion to compel was filed thirty days after the commencement of its testimony period, and denied as untimely. Opposer’s motion to extend testimony made without any explanation as to the good cause for needing it; as a result, the motion was denied.

91191929

04/11/2012 BOARD`S DECISION: DISMISSED N Opposition to NETGARD by owner of NETGATE, both for computer hardware and software related to network security. Board dismissed the opposition despite similarity of goods and channels of trade: “The marks share similar, but distinguishable, meanings and commercial impressions because they are suggestive of  network security hardware and software.  Under such circumstances, the prior use and registration of a suggestive term should not preclude the subsequent registration of a similarly suggestive, but otherwise distinguishable mark, for related goods.”

91203354

04/12/2012 BOARD`S DECISION: DISMISSED n Opposition dismissed because Opposer sent notice, but not to address of record at USPTO: “Because proof of service presumes actual service on applicant and opposer failed to effect actual service by failing to serve applicant at the correspondence address of record in the Office, opposer did not comply with the service requirement of the Trademark Rule.

91194027

04/13/2012 BD`S DECISION: DISMISSED W/ PREJUDICE N Opposer’s testimony period ended without opposer having filed any evidence or taken any testimony. Opposer did not file brief, but did response to order to show cause why judgment should not be entered against it. Opposer noted the parties were discussing settlement, but Board found: “After careful consideration of the Pioneer factors and the relevant circumstances in this case, the Board finds that opposer’s reasons for not actively participating in this case fail to establish excusable neglect, and do not warrant a reopening of this case for the presentation of evidence or a reopening of opposer’s time to file its main brief.”  Opposition dismissed with prejudice.

91196472

04/11/2012 BD`S DECISION: DISMISSED W/ PREJUDICE N Applicant’s motion to dismiss for failure to prosecute; Opposer’s motion to reopen testimony period. “Applicant argues that opposer’s service of pretrial disclosures belies his claim that he believed that the Board would consider materials from and the final decision in the Prior Oppositions even if opposer introduced no evidence in this case.” Applicant’s motion granted and proceeding dismissed with prejudice.

91187537

04/12/2012 BOARD`S DECISION: SUSTAINED N Applicant’s mark: AmeriCare & Design for “ambulance transport services” Opposer’s mark: AMERICARES and AmeriCares & Design for “charitable fund raising services to support the distribution of food, clothing, medicine and medical services,” and AmeriCares Free Clinic & Design (“Free Clinic” disclaimed). Findings of 2003 WIPO domain dispute between the parties noted as irrelevant. Applicant’s laches/acquiescence claim dismissed as they are generally not available in an opposition. Opposer’s mark found strong, well-known and entitled to broad scope of protection. Some evidence of 3rd party use provided, but probative value limited. Decision: Opposition sustained.

91179013

04/14/2012 DISMISSAL ORDER VACATED IN PART; TRIAL DATES RESET N Procedural ruling in complicated consolidated oppositions vacates part of prior dismissal order to permit counterclaims and some oppositions to proceed.

91201852

04/09/2012 D`S MOT. TO DISMISS DENIED; TRIAL DATES RESET N Applicant filed a motion to dismiss the opposition on the grounds that opposer does not have standing to bring this case and for failure to state a claim upon which relief may be granted under Fed. R. Civ. P. 12(b)(6). Applicant’s motion denied – its allegations attacked the merits not the sufficiency of the pleading.

91200478

04/12/2012 MOTION FOR RECONSIDERATION DENIED N

91202418

04/13/2012 MOTION TO STRIKE; DENIED; PROCEEDINGS RESUMED; TRIAL DATES RESET N Applicant and Opposer are both intellectual property law firms. Applicant moved to strike 2 paragraphs from Notice of Opposition which “bad faith” as irrelevant, potentially scandalous and insufficiently particular. Board denied the motion to strike, finding that the claims “are not irrelevant because opposer pleads likelihood of confusion, and applicant’s intent in adopting his mark may be relevant to that claim.”

92054159

04/11/2012 PROCEEDINGS RESUMED N Petitioner filed to cancel FORTIFIED CUTICLES mark on the Supplemental Register, claiming descriptiveness under 2(e)(1). Defendant’s 1st motion to dismiss for failure to state a claim was granted previously; Defendant brought a 2nd motion to dismiss the amended petition to cancel. Motion denied as petitioner adaquetly set forth grounds of genericness claim.

91198612

04/09/2012 PROCEEDINGS RESUMED N Opposer’s motion to compel granted “to the extent that applicant may answer the Interrogatories using a number range, and applicant may answer the Document Requests by producing an affidavit or declaration instead of business records or documents.”
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