Recent TTAB Decisions and Activity of Note (4/23 – 4/29/2012)

During the week of April 23 – April29, 2012, the TTAB issued no precedential decisions. But it did issue several important findings on procedure and discovery. Note that motions may be granted as conceded if a response is not filed or is untimely. And repeated extensions may not be granted without a detailed showing of the progress made.

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

Doc Text

Precedent?

Notes

91198943

04/25/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED

N

Opposer moved to amend its pleading to add claim of equitable estoppel and Trademark Rule 2.135. The Board denied the Rule 2.135 claim as legally insufficient because the prior action did not result in a board entry of judgment. Board also denied the equitable estoppels claim as futile as pleaded.

Applicant’s motion for summary judgment of priority and likelihood of confusion denied due to a host of dispute material facts.

91186206

04/25/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED

N

Opposer’s motion for partial summary judgment on grounds of priority and likelihood of confusion denied due to issues of material fact. The Board sua sponte noted that Opposer’s dilution claim was not well-pled and allowed it time to amend the claim of dilution.

77917959

04/23/2012 BOARD`S DECISION: AFFIRMED

N

Application for POLY-SIL for “elastomeric silicone roof coating” refused under Section 2(d) as likely to be confused with registration for POLY-SIL for “solid surface polymer suspended in silicone caulking for use as sealant/adhesive.” Refusal affirmed: “even weak marks are entitled to protection against registration of a confusingly similar mark”

77946290

04/27/2012 BOARD`S DECISION: AFFIRMED

N

KUTT CALHOUN (stage name of recording artist) refused registration for clothing under Section 2(d) as likely to be confused with CALHOUN registered for “sports shirts” on the supplemental register. Board affirmed refusal.

92054976

04/26/2012 SUSPENDED PENDING DISP OF CIVIL ACTION

N

Motion to suspending pending disposition of civil action granted.

91196808

04/24/2012 SUSPENDED PENDING DISP OF CIVIL ACTION

N

Proceeding re-suspended pending civil proceeding.

91202162

04/25/2012 SUSPENDED PENDING DISP OF CIVIL ACTION

N

Applicant’s motion to suspending pending outcome of civil action granted.

91188800

04/23/2012 RESPONSE DUE 30 DAYS (DUE DATE)

N

Parties stipulated to amend applicant’s mark from WILD HARE ON ST. ANDREWS to WILD HARE. The Board denied the amendment as a material alteration.

91199170

04/25/2012 RESPONSE DUE 30 DAYS (DUE DATE)

N

Proposed consented amendment to applicant’s goods denied; “The proposed amendment of the identification of goods is unacceptable because it seeks to amend “chocolate pudding” to “pudding,” and as such seeks to expand the identification of goods.”

91194658

04/27/2012 TRIAL DATES RESET

N

Opposer moved for leave to extend time to designate a rebuttal expert witness and to reopen expert discovery. Motion granted: “On balance, the Board finds that opposer has established excusable neglect to reopen its time to serve expert rebuttal disclosures and to reopen expert discovery.”

91194870

04/27/2012 TRIAL DATES RESET

N

Applicant filed motion to compel. Neither party had served initial disclosures but both parties had served and responded to discover. Applicant moved to compel supplemental responses.  Due to the failure to serve disclosures before discovery, the motion was denied.

In discussing general discovery obligations, the Board noted “it is unhelpful to state in response to a document request that “[t]o the extent that such documents are in Applicant’s possession, Applicant will produce whatever documents he has within his control.”  This type of written response calls into question whether a party actually searched for documents and whether he has any responsive documents to produce.  For the sake of clarity,  increasing the usefulness of discovery and avoiding the necessity of contested discovery motions, the parties should simply indicate whether or not responsive documents exist and if they exist, the documents should be identified by Bates number or produced as kept in the ordinary course of business. Amazon Technologies Inc. v. Wax, 95 USPQ2d 1865, 1868 (TTAB 2010).”

91166331

04/27/2012 BD`S DECISION: DISMISSED W/ PREJUDICE

N

Applicant (Discovery Channel) moved for summary judgment. Opposer’s response was untimely and without any demonstration of excusable neglect, therefore it was ignored. As a result, the motion for summary judgment was granted as conceded. [Note that Opposition had been ongoing for more than 6 years including suspension during a civil action.]

92054994

04/24/2012 BOARD`S DECISION: DISMISSED W/ PREJUDICE

N

Respondent Omaha Steak filed a motion to dismiss under FRCP 12(b)(6). Petitioner’s request for a 90 day extension of time to file a response was denied as “unreasonable and unnecessarily excessive.” As a result, the motion to dismiss was granted as conceded.

92049781

04/25/2012 BOARD`S DECISION: GRANTED

N

Petitioner alleged use and priority in SENSATIONAL SKIN standard character and design marks for use with skin cosmetic and laser medical services, against respondent’s SENSATIONAL SKIN BY JATA mark for “skin case salons.”

Board noted that section 2(d) only requires prior use; it does not require use in commerce. Opposition sustained: “Because the marks are similar, the services are legally identical and the channels of trade and classes of consumers are similar, we find that applicant’s mark SENSATIONAL SKIN BY JATA for “skin care salons” so resembles petitioner’s SENSATIONAL SKIN marks for medical aesthetics and cosmetic dermatology services as to be likely to cause confusion”

91203998

04/26/2012 BOARD DISCOVERY CONFERENCE ORDER

N

In discovery conference with Board interlocutory attorney,  Board sua sponte noted that fraud claim was inadequately pleaded “inasmuch as the claims of fraud are based solely on information and belief” and gave Opposer time to amend.

91194225

04/24/2012 BOARD`S COMMUNICATION

N

Applicant moved to reopen discovery. Opposer moved for leave to amend its pleading to add claim of lack of bona fide intent to use mark in commerce. Applicant did not obtain timely discovery responses because it failed to serve initial disclosures first. Board denied motion as the reason for delay was within applicant’s control. Opposer’s motion to amend pleading filed one day before trial period was to open; board found Opposer had unduly delayed in filing its motion and denied the motion.

92054391

04/27/2012 BOARD`S ORDER

N

Board had entered default against respondent after service by publication. Respondent filed a motion for relief from final judgment and motion to re-open the proceedings, and then several days later filed an appeal to the Federal Circuit seeking to stay the appeal pending the motion for relief from final judgment. Board order notes that it “would be inclined to grant respondent’s Motion for Relief from Final Judgment, and will provide a fuller analysis of our decision, should the case be remanded by an order of the appellate court.”

91187541

04/27/2012 BOARD`S ORDER TRIAL DATES REMAIN AS LAST RESET

N

Motion to suspend for settlement discussions rejected. Parties repeatedly filed extension suspension requests without an updated progress report as required by an earlier board order. Parties also required to refrain from filing motions to extend via ESSTA and, in any extension request must provide a progress report identifying all contacts made by the parties during the previous period to establish the parties are actively working towards settlement.

92053007

04/25/2012 P`S MTN TO AMEND PLEADING DENIED; TRIAL DATES RESET

N

Petitioner’s motion to amend petition to cancel to add claim that respondent’s mark is geographically descriptive or misdescriptive denied as untimely; Petitioner learned where respondent’s goods were produced more than 1 yr prior to the motion.

92052260

04/24/2012 PROCEEDINGS RESUMED

N

Respondent moved for fourth a fifth extensions of time to hire new counsel after prior counsel’s request to withdraw was granted; the motions were denied for lack of good cause: “The Board finds that respondent’s actions of placing phone calls, leaving messages, speaking with receptionists, and interviewing a few counsel to find that they do not practice trademark law is simply insufficient to establish diligent efforts to hire counsel”.

Note that the parties “surreplies” are not proper and were ignored by the Board.

92053046

04/26/2012 PROCEEDINGS RESUMED

N

A variety of discovery and timing issues addressed.

91193054

04/27/2012 PROCEEDINGS RESUMED

N

Applicant filed motion to compel responses to document requests and interrogatories. Applicant’s motion granted (and opposers objections’ overruled) as to opposer’s sales figures advertising figures, and price lists, and as to transaction information absent customer names. To the extent opposer relied on its documents, it produced more than 38,000 documents and must serve a supplemental response which “must include, at a minimum, identifying by Bates Number or other identifying notation, documents either from its document production already served or located since said service, that opposer considers to be responsive to this interrogatory.”

91194579

04/26/2012 PROCEEDINGS RESUMED

N

Motion by opposer (Polo Ralph Lauren) for sanctions or to compel discovery depositions and responses and to reopen discovery solely for opposer’s benefit. Board fond the actions complained up did not warrant sanctions and that motion to compel too late since testimony period already opened. However, board found that applicant had been uncooperative and granted motion to reopen discovery for opposer.

91195730

04/26/2012 PROCEEDINGS RESUMED

N

Applicant’s motions to strike exhibits from Opposer’s notices of reliance. While deferring of substantive issues, board found regarding procedural issues: “Opposer’s notice of reliance is deficient as it does  not identify the printed publications scattered in various locations in exhibit 30, the pages to be read, or the  relevance of the material offered” “With regard to the Internet documents, the notice of reliance is deficient as it does not indicate the relevance of the Internet documents which are scattered throughout the exhibit.”

Regarding documents introduced because they were produced in response to an interrogatory, “party seeking to take advantage of this practice [of Trademark Rule 2.120(j)(3)(i)] must specify in the notice of reliance that the documents are being introduced pursuant to Trademark Rule 2.120(j)(3)(i), must specify and make of record a copyof the particular interrogatory or interrogatories to which each document was provided in lieu of an interrogatory answer, indicate generally the relevance of the material being offered, and must identify, with some degree of specificity, the nature of each of these documents.”  M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070, 1073 (TTAB 1990).  Other documents stricken because they were produced by Applicant and are not official records, printed publications, or Internet materials. Other internet records from websites stricken as their relevance was not sufficiently provided. Applicant’s motion thus granted in part, but Opposer given time to cure the problems.

91201937

04/24/2012 PROCEEDINGS RESUMED

N

Applicant filed motion to reconsider Board’s decision that Opposer’s 2nd extension of time to oppose was permissible. Applicant’s motion to reconsider denied.

91202005

04/26/2012 PROCEEDINGS RESUMED

N

Applicant – represented by the UNH IP clinic – moved to dismiss opposition for lack of subject matter jurisdiction under FRCP 12(b)(1) on the grounds that Opposer’s 2nd extension of time was untimely and its stated good cause was a misrepresentation. Board found no basis to conclude that Opposer did not have good cause for 2nd extension request and denied motion to dismiss.

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