Recent TTAB decisions and activity of note (4/30 – 5/6/2012)

During the week of April 30 – May 6, 2012, the TTAB issued no precedential decisions. But it did issue several important findings on procedure and discovery. Note two motion under FRCP 56(d) – one granted and one denied. Microsoft lost and ex parte appeal on several grounds.

Several interesting decisions 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

77860835

05/01/2012 BD`S DECISION SET ASIDE

N

Apple has sought registration of ITUNES LP without disclaimer of “LP.” The Board previously upheld the disclaimer requirement. Applicant subsequently submitted a disclaimer and thus the decision is set aside and the mark will proceed to publication.

91200728

04/30/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED

N

Opposer’s Mark: JUST & Design for food and cosmetic products. Applicant’s Mark: JUST BEE & Design. Applicant’s Motion for Summary Judgment denied because at a minimum “there exists a genuine dispute of material fact as to the degree of similarity, if any, of the parties’ marks and the relevant goods, and the scope of protection to be afforded opposer’s marks.” The Board affirmed the disclaimer requirement: “In view of the foregoing and the evidence in the record, the examining attorney has established that “recycled paper” refers to a sub-genus of goods within the genus of greeting cards.  As such, “recycled paper” is generic for greeting cards composed of recycled paper.”

77252690

05/04/2012 BOARD`S DECISION: AFFIRMED

N

Issue on ex parte appeal was whether Applicant had to disclaim “RECYCLED PAPER” portion of three marks. Applicant applied for the marks under Section 2(f) claiming acquired distinctiveness – and conceding descriptiveness – but still must disclaim any generic wording. Disclaimer requirement affirmed.

77651154

04/30/2012 BOARD`S DECISION: AFFIRMED

N

Application for DA VINCI for clothing was refused under Sect. 2(d) as likely to be confused with the registered marks DON DAVINCI for variety of clothing and L’IL DAVINCI for variety of apparel. In affirming the refusal, the Board noted the overlap between the goods, that all three share a commercial impression of Leonardo Da Vinci, and distinguished the third party registrations: ‘all four of the third-party DAVINCI marks incorporate other matter that serves to distinguish them from each other, as opposed to applicant’s mark which does not, other than a space, which as discussed above does not serve as a distinction.”

77767314

04/30/2012 BOARD`S DECISION: AFFIRMED

N

Application for ACTIVLASH for “eyelash conditioner” refused under Sect. 2(d) as likely to be confused with ACTILASH registered for “cosmetic preparations for eye lashes.” In affirming the refusal, the Board found the goods identical or overlapping, and the marks extremely similar in appearance. “With regard to connotation, consumers are likely to view the prefix ACTI in the cited mark as referring to “active,” a meaning reinforced by the registrant’s company’s name, Active Organics.”

77820474

04/30/2012 BOARD`S DECISION: AFFIRMED

N

Application for a stylized “X” for video game hardware and services refused under Sect. 2(d) with: X (standard character) for video game hardware and software, and with X (standard character) for online game services. “Applicant’s and registrant’s marks are legally identical” since Applicant’s mark could be displayed in any manner, and are pronounced the same. Even following the cited registrant’s cancellation of its registration in class 9, the Board affirmed the refusal as to all of Applicant’s goods and service.

78863190

05/04/2012 BOARD`S DECISION: AFFIRMED

N

Applicant (Microsoft) appealed refusal of WINDOWS RALLY for software on several grounds – ID amendment that exceeded scope of earlier ID; specimen; refusal to provide information about the goods; and disclaimer of ‘WINDOWS.’–    Identification: Refusal affirmed “because the addition of “computer software platform” and “computer software development tools” includes functionality that exceeds the existing identification, the amendment is beyond the scope of the identification.  –    Specimen: refusal affirmed as mark not shown in connection with the applied for goods

–    Request for Information: Refusal affirmed because the information requested by examiner was relevant, and the request was not fully complied with by Applicant

–    Disclaimer of “WINDOWS”: refusal affirmed: e are persuaded by the evidence of record that the phrase WINDOWS is merely descriptive of applicant’s goods, as identified in the last acceptable identification, in that the term immediately describes a significant feature of the goods, namely that they include a GUI that features windows.”

85104508

05/01/2012 BOARD`S DECISION: AFFIRMED

N

Refusal of LA CASITA MEXICAN GRILL for “restaurant services” under Section 2(d) due to likelihood of confusion with registrations LA CASITA MEXICANA for restaurant services. Finding “LA CASITA” to be the part of the mark with source-identifying significance and to be identical in the marks. Board dismissed relevance of a third party with registrations of LA CASITA CHILANGA and LA CASITA CHILANGA RESTAURANT also for restaurant services. Board noted that different geographic locations, a claim cited by Applicant, are irrelevant since this is not a concurrent use proceeding.Note that the Board also affirmed requirement of applicant to submit $50 fee because the TEAS Plus application did not include a translation.

77723599

05/04/2012 BOARD`S DECISION: REVERSED

N

Appeal of “deceptively misdescritptive” refusal under 2(e)(1) of TATER DOG for ““freshly prepared sandwich consisting of meat with or without condiments inserted into the hollowed cavity of an edible bread roll” was refused. Applicant “confirmed that his sandwich basically comprises a hot dog inserted into a hollowed cavity of a potato roll; according to applicant, the hot dog product is designed to minimize condiment spills.” The Board reversed the refusal, finding the mark “just suggestive.”Interesting notes: Applicant was represented by the Vanderbilt Legal Clinic. For more on what a “Tater Dog” is, see Applicant’s website: http://www.thetaterdog.com/

91196105

05/02/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT

N

Following Opposer motion for summary judgment, Applicant moved for additional discovery under FRCP 56(d). Applicant’ motion granted in part. “[B]ecause opposer relies on quite limited evidence in support of its motion, and applicant is by this order allowed only limited discovery under Fed. R. Civ. P. 56(d), the Board is extremely wary of allowing open-ended or wide-ranging discovery on these limited topics” and “applicant’s Rule 56(d) discovery is limited to no more than 10 interrogatories, 10 requests for production of documents and 10 requests for admission”

91201070

05/04/2012 RESPONSE DUE 30 DAYS (DUE DATE)

N

Following Applicant’s motion for summary judgment, Opposer filed a 56(d) motion for additional discovery. Specifically opposer sought to depose the applicants, one who had provided a declaration in support of the MSJ and one who had not. Finding that “this is a run-of-the-mill likelihood of confusion case made even more uncomplicated because the involved application is based on intent to use, rather than actual use,” the Board denied the motion.

91202150

04/30/2012 TRIAL DATES RESET

N

On 12/14/2011, Board issued a show cause order regarding Applicant’s lack of answer. On 01/17/2012, Applicant filed a response and moved to extend the time to answer. The notice of default was set aside by the Board as Applicant found to have shown good cause and “The record thus far does not evidence evasive conduct, bad faith or gamesmanship on applicant’s part, and does not suggest that the failure to timely answer was the result of willful behavior or inattentiveness to this proceeding.”

91203255

05/01/2012 TRIAL DATES RESET

N

Opposer moved for default judgment based on applicant’s failure to file an answer by the date set in parties’ earlier stipulation and an earlier Board order. Applicant stated it believe settlement negotiations were ongoing. Finding no prejudice to Opposer, the Board dismissed the motion.

91178996

04/30/2012 BOARD`S DECISION: DISMISSED

N

Applicant’s mark: BENCHMARK RELIANCE for “issuance and administration of annuities.” Opposer’s mark: RELIANCE STANDARD for insurance underwriting and issuance of annuities.Although it was unpleaded, Opposer also claimed use of “Reliance” by itself as a mark; Applicant found to have tried the issue by consent. Applicant introduced third party evidence showing use of “Reliance” during testimony. Opposer objected that the materials were within the scope of a request for production and that no such documents were produced during discovery. While Applicant did not timely supplement, Opposer was not prejudiced, and the documents were permitted by the Board. Applicant’s counterclaim for fraud failed due to lack of “clear and convincing” evidence regarding Opposer’s intent.Opposer’s claims regarding the term “Reliance” alone failed because it failed to prove priority of use as a trade name or service mark prior Applicant’s priority date.

Finding: Opposition dismissed based on “the lack of any reported instances of actual confusion is relevant because there has been a reasonable opportunity for confusion to have occurred;” a high degree of care exercised by consumers; and differences between the marks.

91178953

05/02/2012 BD`S DECISION: DISMISSED W/ PREJUDICE

N

In a consolidated Opposition regarding numerous ____ ZERO marks including COKE ZERO, the issue was whether the marks, which were published with a claim of acquired distinctiveness of “ZERO” under Section 2(f), had indeed acquired distinctiveness. The descriptiveness of the mark was conceded by Coca-Cola when it selected 2(f). Board found that while “zero” is common in the beverage industry, Coca-Cola’s use of ZERO is so huge and extensive that it qualifies as “substantially exclusive” even though others have used it.  As to the timing of relevant evidence, “The filing date or even the publication date is not a cutoff for any evidence developing after that time.  Evidence of sales and advertising after the filing date of the application will be considered.”

91179951

04/30/2012 BD`S DECISION: DISMISSED W/ PREJUDICE

?

Decision not available on TTABvue: http://ttabvue.uspto.gov/ttabvue/v?pno=91179951

91189499

05/04/2012 BOARD`S DECISION: SUSTAINED

N

Applicant’s mark: FANTRIP for travel agency services. Opposer’s mark: common law use of ‘Fan Trips’ for travel agency services. Opposer claim grounds under 2(d) and 2(e)(1).Evidentiary issues:— Opposer’s motion to strike applicant’s testimony exhibits consisting of applicant’s discovery responses was granted: “Trademark Rule 2.120(j)(5) provides that an answer to an interrogatory or a response to a request for admission may be submitted and made part of the record by only the inquiring party, except in limited circumstances.”

— Opposer’s interrogatory response have no probative value since they were unverified by Opposer.

— Declarations submitted by Opposer in rebuttal testimony were deemed not admissible.

Substantive Issues: Board found Applicant’s FANTRIP mark descriptive. As a result, the board did not reach the issue of likelihood of confusion and sustained the opposition.

91179108

04/30/2012 BOARD`S COMMUNICATION

N

Opposer moved to compel discovery. Board already issued judgment last year on issue of priority and likelihood of confusion. Motion granted as to interrogatories related to dilution; Motion denied as to document requests at issue since Oppose did not identify which of the requests pertained to the remaining ground of dilution.

91202567

05/02/2012 BOARD`S ORDER MOTION DEFERRED TRIAL DATES REMAIN AS RESET

N

Applicant moved, without opposer’s consent, to restrict its identification. Board deferred decision on the proposed amendment until final decision or motion for summary judgment.

91192645

05/01/2012 BOARD`S ORDER OPPOSER`S MOTION TO COMPEL IS DENIED TRIAL DATES ARE RESET

N

Cross-motions to compel depositions denied by the Board: neither party has demonstrated the requisite good faith effort to support their respective motions to compel.” But Board also ordered both parties to make their witnesses available within 30 days or face sanction (essentially granting the motions).

91153147

04/30/2012 ORDER ON REBUTTAL TESTIMONIAL DEPOSITIONS

N

Opposer’s motion to reschedule noticed rebuttal witness testimony depositions from applicant granted in part.

91201263

05/01/2012 P`S MOT. TO EXTEND GRANTED; TRIAL DATES RESET

N

Opposer’s motion to extend discovery granted as it was uncontested by Applicant.

92051849

05/04/2012 PROCEEDINGS RESUMED

N

Respondent moved to quash deposition of respondent. Petitioner cross-moved to take foreign deposition orally. Petitioner’s motion to take foreign deposition orally granted as Board was not pleased with behavior of respondent or its former counsel: “especially since respondent formally admitted shortly after the email exchange ended that Mr. Rosen is a managing partner of respondent, that Mr. Rosen resides in the United States, and that Mr. Rosen has a place of business in the United States.” Respondent’s behavior was also deemed to be sanctionable, ordering respondent “to (1) serve, within thirty days of the mailing date of this order, complete responses to discovery, without objection, as compelled by the Board’s August 31, 2011 order; (2) serve, within thirty days of the mailing date of this order, its initial disclosures upon petitioner; (3) make available, within sixty days of the mailing date of this order, its managing partner James Rosen for a discovery deposition under Fed. R. Civ. P. 30(b)(1) within the Federal judicial district where he resides or is regularly employed, or at some other location to which the parties agree; and (4) make available, within sixty days of the mailing date of this order, its Fed. R. Civ. P. 30(b)(6) witness for an oral deposition either in the Cayman Islands or at some other location to which the parties agree.  As further sanctions, respondent (5) may not suspend or extend its time for complying with its written discovery, disclosure, or deposition obligations under this order, except with the consent of petitioner; (6) may not file any paper in this proceeding without first telephoning the Board, at 571-272 9467, to obtain permission for making the filing; (7) must provide, within thirty days of the mailing date of this order, the Board and petitioner with Mr. Rosen’s current telephone number; and (8) must be prepared to participate in a telephone conference with petitioner and the Board to resolve any future issues that may arise in this case and that are determined by the Board to be appropriate for resolution by telephone.”
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