Recent TTAB decisions and activity of note (5/07 – 5/13/2012)

During the week of May 7 – 13, 2012, the TTAB issued no precedential decisions. But it did issue several important findings on procedure and discovery.

Several interesting decisions are highlighted in bold. Note two cases in which parties were admonished for their behavior and barred from filing unconsented motions without permission from the Board. AMERICA’S STRONGEST MAN was found not likely to be confused with WORLD’S STRONGEST MAN. Product configurations of hand sanitizer dispensers were found not functional, but lacking acquired distinctiveness.

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.

Document Date

Board Disposition

Precedent?

Notes

94002402

05/08/2012 BD`S DECISION: FAVORABLE TO APPLICANT N Concurrent use agreement and amendment accepted.

77308779

05/07/2012 BOARD`S DECISION: AFFIRMED N Prior Board opinion (a) vacated as to 1 cited registration that was cancelled for failure to renew, and (b) modified and affirmed as to the other cited registration.

77408993

05/07/2012 BOARD`S DECISION: AFFIRMED N Refusal of GAME FACE for protective face masks used with several sports under Section 2(d) as likely to be confused with registrations for GAME FACE and GAME FACE & Design for “goggles for use in paintball activities” was affirmed.  Evidence Applicant submitted for the first time in its brief not considered, nor was reference to 3 websites for the first time in the brief.

79063620

05/09/2012 BOARD`S DECISION: AFFIRMED N Application for LION GLOBAL INVESTORS & Design for investment services refused under Sect. 2(d) as likely to cause confusion with LION CAPITAL and LION (same owner) for investment services. Board affirmed the refusal: “While the degree of care factor weighs in favor of applicant, it is not sufficient to outweigh the other factors.”

85066363

05/08/2012 BOARD`S DECISION: AFFIRMED N Application for THE HIGHLINER for ‘restaurant services’ refused under Sect. 2(d) due to likelihood of confusion with HIGHLINER COFFEE CO for ‘café services; and carryout restaurant services featuring coffee, candy and baked goods.’  Board affirmed the refusal: “The fact that the services fall in different international classes does not affect the likelihood of confusion analysis.  The language in the recitation of services, not classification, controls our analysis.”

77701886

05/10/2012 BOARD`S DEC: AFFD IN PART/RVRSD IN PART N 3M appealed refusals of 2 configurations of holders for s “hand-sanitizing antiseptic with moisturizers” on (i) 2(e)(5) ‘functional’  grounds and, alternatively, (ii) they do function as trademarks and have not acquired distinctiveness under 2(f), and (iii) the description of the mark was inadequate.As to functionality:–    “we are not persuaded that the existence of applicant’s utility patents involving the dispenser and its nozzle weighs in favor of finding the proposed dispenser configuration marks as being functional”–    “we find that the examining attorney has not met his burden in establishing a prima facie case that the dispenser configuration marks are functional and, thus, are not registrable on that basis.  While there is some evidence that the shape of the dispenser’s nozzle in the proposed marks may have some utilitarian value, it does not follow that the entire mark is necessarily functional”Regarding acquired distinctiveness:

–    Some of Applicant’s evidence was unspecific and/or unsupported by declarants with personal knowledge, but there was no evidence contradicting the statements and examining attorney did not object to them.

–    Regardless, the Board found “the record does not establish that the dispenser configuration marks have acquired distinctiveness”

–    “Remarkably, there is no evidence showing the number of dispensers sold or dollar figures for such sales.  Likewise, there is no evidence regarding advertising figures and the degree of advertising efforts made to associate applicant’s proposed dispenser configuration marks with the identified goods.”

Regarding the description of the mark

–    “We find that applicant’s descriptions of the marks, as amended and currently reflected in the application, provide accurate characterizations of the marks.  In view of the foregoing, the examining attorney’s requirement for acceptable descriptions of the marks is not well-taken and the refusal to register the marks based thereon is reversed.”

91199964

05/11/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Applicant’s proposed amendment to its goods denied as an impermissible expansion of the scope. Applicant’s proposed amendment to the drawing of the mark denied. If applicant is proposing to add “Standard No.” wording to the mark it must show that “such matter constitutes either informational or genericmatter such that a material alteration will not result fromits addition..”

92051212

05/10/2012 TRIAL DATES RESET N Respondent’s unconsented motion to amend its identification deferred consideration until final hearing.

92053837

05/09/2012 TRIAL DATES RESET N Petitioner’s motion to compel the attendance of four witnesses of respondent granted.

91182644

05/07/2012 BOARD`S DECISION: DISMISSED N Fruit of the Loom opposed registration of BODY FRUIT for “footwear; headwear; jackets; pants; shirts; shorts; sweat shirts; undergarments; coats; tank tops” on grounds of: 2(d); dilution; and lack of bona fide intent to use. Applicant submitted no evidence and no brief. Opposer’s marks found strong and inherently distinctive, but Opposer did not successfully prove its marks famous for 2(d) purposes. (“[I]mportantly, opposer provides no context by which we may ascertain opposer’s market share vis a vis other manufacturers of the goods identified in its pleaded registrations.  As a result, it is impossible to determine, for example, how its sales or advertising expenditures compare to those of its competitors such that we may conclude therefrom that opposer’s pleaded marks are famous.”) However, overall the Board found the marks more similar than dissimilar and sustained the opposition.

92023939

05/10/2012 BOARD`S DECISION: DISMISSED N In a petition to cancel MODEL AMERICAN on ground of abandonment filed on May 15, 1995, much of the testimony was more than 10 years old. Declaration evidence stricken: “absent a stipulation, a party may not simply submit a declaration, which does not entitle the other party to cross-examination or even objection.” While respondent was in bankruptcy for some time, it showed evidence of a valid license of its mark. Petitioner claimed that the sub-licensee was not using the mark for the goods in the registration, namely “computer utility program.” Finding the definition of the phrase unclear, the Board found Petitioner did not meet its burden to prove abandonment. And even if it had found that Respondent did not use the mark for a 3 year period, “we still would find that at all relevant times Respondent intended to resume use of the mark,” evidence of which included the renewal filings of the USPTO trademark registration.

92050860

05/08/2012 BOARD`S DECISION: DISMISSED N Petition to Cancel “AMERICA’S STRONGEST MAN” on the supplemental register brought under Section 2(d) by owner of “WORLD’S STRONGEST MAN” registered on the principal register under Section 2(f). The only evidence introduced by Petitioner was its registration. Respondent submitted no evidence; the registration file is automatically of record. “We find that the parties’ marks, unlike their contestants, are weak.” The board found no likelihood of confusion: “we find that these marks have different connotations or commercial impressions and the dissimilarities outweigh the similarities.   In conclusion, based on this very sparse record, we find that petitioner has not carried its burden of proof and respondent’s mark is sufficiently dissimilar to petitioner’s mark so as to make confusion unlikely.”

92051140

05/11/2012 BOARD`S ORDER TRIAL DATES RESET N Respondent moved to strike petitioner’s notice of reliance. Motion granted as to petitioner’s discovery response and documents produced therewith; documents produced by respondent in response to discovery requests; notices of intent to take depositions. Motion denied as to respondent’s discovery requests noting that no documents exist.

91200036

05/08/2012 BOARD`S ORDER TRIAL DATES RESET N Applicant’s motion to set aside notice of default judgment granted: “the Board does not find applicant’s delay to be the result of willful or grossly negligent conduct. Further, because the law favors deciding cases on their merits, the Board is reluctant to grant judgments of default and tends to resolve all doubts by setting aside default, particularly when a proceeding is at such an early stage as is the case here.”

91199483

05/07/2012 CONSOLIDATED; SUSPENDED PENDING DISP OF CIVIL ACTION N Proceedings consolidated and suspended pending civil action

92053712

05/07/2012 CONSOLIDATED; TRIAL DATES RESET N Defendant moved to amend its answer and add affirmative defenses along with counterclaims of non-ownership and fraud, contending that it learned of the basis for the changes during the deposition of petitioner. Respondent’s counterclaim of fraud found to be sufficiently pleaded as to two of Petitioner’s registrations. Respondent’ counterclaim of fraud as to the other registration predicated on erroneous dates of use was denied as legally insufficient. The Board also admonished the parties and counsel: “the conduct of this proceeding by both parties remains unsatisfactory and inappropriate for attorneys who should be focused on advancing determination of a case on its merits not disposition through attempts to frustrate and annoy each other.” And parties barred from filing unconsented motions without permission from the Board: “parties are barred from filing any unconsented motion without the express permission of the Board.”

91178229

05/09/2012 MOTION TO COMPEL; GRANTED; PROCEEDINGS RESUMED; TRIAL DATES RESET N Opposer’s motion to compel granted; discovery requests had been served in 2007 and the Motion to compel had been filed in September 2007 just after Applicant moved for extension of time to file answer.  Note: did Opposer serve its discovery before an answer was even due? Case was filed under old Rules of the Board.

91200673

05/11/2012 MOTION TO COMPEL; GRANTED; TRIAL DATES RESET N Opposer’s motions to compel regarding interrogatories and document requests is granted as conceded. Opposer’s 2nd motion to compel, filed after suspension for consideration of the 1st motion, given no consideration.

92054049

05/11/2012 PROCEEDINGS RESUMED N Respondent’s motion for a more definite statement was granted as grounds claimed by Petitioner were vague. Petitioner’s motion for sanctions was deemed moot.

92054551

05/10/2012 PROCEEDINGS RESUMED N Respondent’s motion for sanctions denied. But Board noted that “petitioner is hereby put on notice that this proceeding is subject to dismissal with prejudice should he file any further papers containing personal attacks on respondent or that are deemed completely irrelevant to the merits of this proceeding.” Petitioner’s motion to compel moot as respondent served responses after the motion, and the responses were not attached to the reply so Board could not evaluate them. Board further cautioned petitioner: “Petitioner, who filed more than a thousand pages since the last Board order, is ordered to cease submitting copies of prior orders and filings in this proceeding as exhibits to motions; to cease making arguments or submitting evidence regarding respondent’s use or registration of his unrelated PANDA marks; and to cease arguing the merits of past Board orders. Any paper filed by petitioner which includes documents already of record, or refers to respondent’s unrelated marks, or argues the merits of past orders, will be refused consideration.  To be clear, if a filing by petitioner violates any of these prohibitions, in its text or in attachments thereto, the entirety of the filing shall be refused consideration.”The Board also barred the parties from filing any unconsented motion without express permission from the Board. “Effective immediately, respondent is ordered to cease unsubstantiated allegations that petitioner falsified certificates of service.  Petitioner provided tracking information indicating refusal of delivery by FedEx courier at respondent’s address of record.” And ‘both parties are ordered to supplement their service of papers with a phone call made the same day of service to the receiving party to notify them that papers have been served”.”

91198414

05/11/2012 PROCEEDINGS RESUMED N Opposer’s motion to compel denied: “In view of opposer’s unexplained five-month delay in acting following applicant’s supplemental discovery, the excessive number of discovery requests at issue in opposer’s motion, and the lack of legal support establishing discoverability of the information and documents sought by those interrogatories and document requests, the Board finds that opposer failed to make a good faith effort to resolve the parties’ discovery dispute prior to seeking Board intervention.”
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