Recent TTAB Decisions and Activity of Note (5/14 – 5/20/2012)

During the week of May 14 – 20, 2012, the TTAB issued one precedential decision [in which our firm is involved as counsel]. It also issued several important findings on procedure and discovery – including a sanction of dismissal for failure to comply with discovery requirements;  a ruling that a “free service” is still a use in commerce; the denial of multiple requests for suspensions; and the denial of one mark due to an act of Congress.

Here is a rundown of the activity of note from the TTAB in the week [visit to view any of the proceeding and documents]:

Proceeding No.






05/17/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED N Opposer (LA MORENTI BRAND & Design for cheese) asserted likelihood of confusion and fraud. Applicant (MORENITO and LA MORENITA for tortillas and other foods) moved for summary judgment on issue of priority. Applicant’s argument based on the fact that Opposer’s sales information came from third parties (Wal-Mart) and is hearsay and/or inadmissible. Board overruled hearsay objection, but found genuine issue of material fact at dispute.


05/17/2012 BD`S DECISION: FAVORABLE TO APPLICANT N Thompson Cree sought concurrent use registration of TRUST YOUR HOME TO THOMPSON CREEK in all areas except California. The submitted agreement between the parties deemed acceptable by the Board and concurrent registrations granted.


05/17/2012 BOARD`S DECISION: AFFIRMED N Refusals to register SPOTLIGHT and SpotLight & Design for animal tracking/locating devices and services under Sect. 2(d) for likelihood of confusion with SPOTLIGHT for pet leashes affirmed. Mark found virtually identical and leashes and GPS collars found to be sold by the same source or in same channels of trade.


05/15/2012 BOARD`S DECISION: AFFIRMED N Refusal to register AST for supplements in class 5 under section 2(d) as likely to be confused with AST SPORTS SCIENCE for supplements affirmed.


05/17/2012 BOARD`S DECISION: AFFIRMED N Refusal to register WEBASSSETS for “computer software for management of energy industry asset related data” under Section 2(e)(1) affirmed


05/16/2012 BOARD`S DECISION: AFFIRMED N Refusal to register WEBOMS for computer software for outage management under Sect. 2(e)(1) affirmed. Term deemed to be combination of “web” and “OMS” [outage management system].


05/16/2012 BOARD`S DECISION: AFFIRMED N Application for RUDI’S GLUTEN-FREE BAKERY for bakery products refusd under Section 2(d) as likely to be confused with RUDI’S and RUDI’S & Design for ‘bakery products.’ Prior consent agreement did not cover the mark at issue. Refusal affirmed dispute Applicant’s prior registrations for related marks an identical goods.


05/18/2012 BOARD`S DECISION: REVERSED N Quicksilver’s application for SURF COUTURE for “Optical goods, namely, eyewear, sunglasses, spectacles and goggles for sports; recorded materials, namely, digital video discs and CDROMs featuring sports, recreational activities, music and fashion” (Class 9) and “Travel bags, luggage, carry-all bags, handbags, beach bags, tote bags, bath bags, namely, bags used to carry goods used in the bath, sports bags, backpacks, purses, wallets, satchels, brief cases, attaché cases, suitcases, key cases, valises; umbrellas” (Class 18) and clothing in Class 25 refused as descriptive under 2(e)(1). Refusal reversed by Board: “the evidence made of record by the examining attorney is insufficient to support a finding that, as applied to applicant’s goods, the mark SURF COUTURE would immediately describe, without conjecture or speculation, a significant characteristic or feature thereof.” Notably, two of five Nexis articles used by Ex. Atty. were from outside US.


05/14/2012 BOARD`S DECISION: REVERSED N Christian Dior’s application for a design patter for optical goods, furniture and other items refused as ornamental under Sect. 1,2, and 45 of the Trademark Act Applicant argued that its mark should be registered because its two prior registrations establish secondary source. Applicant’s prior registrations were pursuant to Section 44(e), Section 8 affidavits of use had been submitted. Board reversed the refusal: “in view of the fact that applicant is the owner of two registrations, issued under Section 44 and for which affidavits of use under Section 8 have been accepted, for a mark that is identical to the applied-for mark, this shall be accepted as showing of secondary source, applicant has shown that its mark serves a source-identifying function. TMEP § 1202.03 (c).


05/16/2012 BOARD`S DECISION: REVERSED N Refusal of FIREBRIX (for fire lighters; solid fire starters) under 2(d)(1). The Board reversed, finding Wikipedia and other definitions relevant, and finding examining attorney’s evidence (definitions and 5 webpages showing use) insufficient.


05/14/2012 RESPONSE DUE 30 DAYS (DUE DATE) N The Board reviewed a concurrent use agreement between 3 parties. The board found several discrepancies and unclear terms in the agreement and gave the parties 30 days to file an amended agreement.


05/17/2012 RESPONSE DUE 30 DAYS (DUE DATE) N The mark which was subject to the Opposition was filed under Trademark Act Sect. 66(a). During the proceeding, the USPTO received notification from the International Bureau that the international registration, upon with the US application was based, had been cancelled. As a result, Board issued a show cause order for Applicant to show cause why its failure to maintain the international registration should not be the equivalent of an abandonment without consent. “If, in response to this order, applicant submits a showing that the failure to maintain the international registration was the result of inadvertence or mistake, judgment will not be entered against it.”


05/17/2012 TRIAL DATES RESET N Plaintiff allowed some of its registrations to lapse by failing to file a Section 8. Board entered judgment as to those registrations on 2(d) grounds rather than abandonment: Plaintiff “failed to show that discontinuation of use of that mark was not made for the purpose of avoiding a judgment with regard to that registration on Television’s pleaded claim under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).”


05/14/2012 TRIAL DATES RESET N Applicant moved to extend time to serve initial disclosures for a 2nd time after its first such motion was granted. Applicant showed good cause and motion granted, though Applicant cautioned regarding additional extensions.


05/17/2012 TRIAL DATES RESET N Applicant moved to extend time to serve initial disclosures. Applicant’s recent change of counsel found to constitute good cause and motion granted.


05/14/2012 TRIAL DATES RESET N Applicant counterclaimed seeking to deny Opposer’s pending applications. Board found that any opposition to the registrations is premature and denied motion.


05/14/2012 BD`S DECISION: DISMISSED W/ PREJUDICE N Board issued an order to show cause why Opposition should not be dismissed due to Opposer’s failure to submit a brief. Opposer responded and showed continued interest and the show cause order was discharged. However, “because opposer failed to file a motion to reopen pursuant to Fed. R. Civ. P. 6(b)(1)(B), the brief on the case will be given no consideration.” Opposer submitted no testimony or evidence. Applicant’s answer did not admit any dispositive allegations. “In view thereof, judgment is hereby entered against opposer, and the opposition is dismissed with prejudice.”


05/14/2012 BOARD`S DECISION: SUSTAINED N Opposition on 2(d) and dilution grounds to LYNXMASTER and logos for metal garage door hardware and electric garage openers. Opposer alleged prior use and registration of LIFTMASTER and LIFT-MASTER in connection with “overhead door operating systems.”Evidentiary issues:“Opposer objects to the introduction of information pertaining to previous oppositions, cancellations and settlement agreements involving opposer and unrelated third parties as irrelevant to the present action.  We have previously noted that the settlement agreements are not admissible as they were submitted under notice of reliance; such evidence may only be submitted as an exhibit to a testimony deposition or by stipulation.  On the other hand, information pertaining to prior oppositions and cancellations that is contained in the TTABVUE printouts or file histories thereof is relevant to the issue of the strength of opposer’s mark, as it serves to show opposer’s enforcement efforts.” Opposer’s submission of foreign trademark registration found irrelevant and excluded from consideration.Likelihood of confusion: Parties found to operate in same channels of trade, and their products, while not identical, found complimentary. Board found the marks similar. Opposer’s found famous among professionals and commercially strong among homeowners. Accordingly, the Board sustained the Opposition. Note: Applicant’s motion to amend its description of goods denied as well: “Amendment of the identification of goods to restrict the trade channels in applicant’s applications would not avoid a likelihood of confusion because both parties sell directly to this professional market.”


05/17/2012 BOARD`S DECISION: SUSTAINED N IKEA (furniture and related goods/services) Opposed NIKEA for chocolates, candy. Board found the marks similar and goods identical in relevant part (“Opposer sells, among its other products, “sweets and chocolates.” These are sold via restaurants at every IKEA store and also as retail products at each one.”). Board found IKEA not shown to be famous on the record: “We conclude that while opposer has shown a fair amount  of market exposure over the time period provided, opposer has not provided clear context for its sales and advertising numbers with regard to the industry, nor as to how the fame.” Board sustained the Opposition.


05/14/2012 BOARD`S DECISION: SUSTAINED N Applicant’s motion to suspend denied: applicant did not establish good cause and it was previously advised that it if its representative was outside the country it had a duty to appoint someone in the representative’s absence. Applicant’s motion to compel denied: Applicant failed to make a good faith effort to resolve the discovery dispute first. Opposer’s motion for sanctions granted: In March 9, 2012 Board order, Applicant was directed to serve initial disclosures and responses to discovery requests within 20 days. While applicant provided initial disclosures by the deadline, it did not serve discovery responses or seek an extension, and failed to offer any explanation. As a result: “opposer’s motion for sanctions in the form of entry of judgment is granted”


05/14/2012 BOARD`S DECISION: GRANTED N Petitioner, Ralph Lauren, filed for cancellation under 2(d) for respondent’s design mark featuring a polo player falling of a horse for use with clothing. Evidence: Respondent’s objection to a rebuttal declaration granted as Respondent claims it never was served a copy and the filing with the Board does not indicate any certificate of service. 2(d): Board found the goods overlapping and the marks very similar. Board found that parody is not a defense.


05/17/2012 BOARD`S COMMUNICATION N Applicant’s motion to dismiss dilution claim granted (opposer failed to allege when its mark became famous) and Opposer given time to amend. Applicant’s time to answer suspended until after Opposer’s amended pleading is filed.


05/14/2012 DATES REMAIN AS PREVIOUSLY SET N Applicant (pro se) moved to extend discovery for 60 days. Board denied the motion: “The Board finds that applicant’s motion to extend is vague and provides no detailed factual information. In particular, applicant has not provided any specific information about what discovery was taken during the nearly 10 month discovery period, why the necessary discovery was not or could not be completed during the time already allotted, and what discovery remains uncompleted and outstanding, so as to support an extension of the discovery period. With regard to the taking of depositions, applicant has not explained his efforts to complete the depositions prior to proceedings being suspended for withdrawal of counsel, nor has he explained his efforts to schedule and complete the depositions after proceedings resumed in January 2012”


05/14/2012 D`S MOTION FOR SJ GRANTED IN PART; DENIED IN PART N Applicant’s Marks: GOTHAM BATMAN and GOTHAM BATMAN & Design for use with  “general business networking referral services, namely, promoting the goods and services of others by passing business leads and referrals among group members” in International Class 35 and “entertainment in the nature of amateur softball games” in International Class 41.DC Comics opposed. The parties cross-moved for summary judgment on 2(d) grounds, which Board denied: there is a genuine dispute of material fact as to whether applicant’s marks would be perceived as a parody.  We also find that there are genuine disputes of material fact as to the relatedness of the parties’ respective goods and services and the channels of trade of such goods and services. As to dilution, Applicant claimed that its mark was a parody and thus avoided any claim of dilution, but Board was not convinced: “Under the statute’s plain language, parodying a famous mark is protected by the fair use exclusion only if the parody is not “a designation of source for the person’s own goods or services.”  Here, applicant is clearly using its GOTHAM BATMEN and GOTHAM BATMEN and design marks as source indicators for its identified services.  Accordingly, the parody exclusion under Section 43(c)(3) of the Trademark Act is not applicable in this case.” But Board denied the MSJ finding “there is a genuine dispute as to whether applicant’s marks would be viewed by the consuming public as a parody, as applicant asserts.”Applicant also moved to dismiss the claim of lack of bona fide intent to use the mark and, of course, the Board found genuine disputes of material fact as to whether Applicant had bona fide intent to use its mark with networking services. But the Board found “that applicant is entitled to judgment in its favor as a matter of law with respect to opposer’s claim of lack of bona fide use as of the filing date of applicant’s applications solely in regard to applicant’s recited entertainment services in the nature of amateur softball games.” Use of the mark in connection with the rendering of free services still constitutes use in commerce under the Trademark Act.


05/16/2012 MOTION FOR SUMMARY JUDGEMENT GRANTED IN PART N Opposer moved for summary judgment on Applicant’s claim that Opposer’s SUSTAIN is a phantom mark ;Applicant’s claim that SUSTAIN is merely descriptive; and Opposer’s claim of priority and likelihood of confusion. Applicant’s phantom mark claim denied as the applied for mark does not include a blank or dashed line or a placeholder of any kind. Applicant’s descriptiveness claim denied as Applicant’s 2 other registrations containing the SUSTAIN term were issued more than 5 years ago and without any disclaimer. As to the MSJ on grounds of priority and likelihood of confusion, Board denied, finding material facts in dispute


05/16/2012 MOTION TO DISMISS COUNTERCLAIM DENIED Y Plaintiff’s motion to dismiss counterclaim for partial cancellation under FRCP 12(b)(6) denied. Defendant seeks partial cancellation of J&J’s registration as to three goods. “We find the counterclaim is sufficient as a claim of partial abandonment, which does not require any reference to avoidance of a likelihood of confusion.  [Defendant] has sufficiently pleaded a ground for partial cancellation by alleging abandonment of the mark as to particular goods through nonuse with no intent to resume use.”Disclosure: Our firm represents Applicant in this matter.


05/17/2012 MTN TO SUSPEND DENIED; TRIAL DATES RESET N Motion to suspend the proceeding (again after multiple stipulations over approx. 4 years) denied as not containing the required detail report on the progress of negotiations. “No further extension of time or suspension of this proceeding will be granted for the purposes of settlement without a showing of extraordinary circumstances.”


05/15/2012 P`S MTN TO AMEND PLEADING GRANTED; TRIAL DATES RESET; APPLICANT TO FILE AMENDED ANSWER N Opposer’s motion to amend its notice of opposition to remove a cancelled registration and add a recently issued registration is granted as the Board found no substantial prejudice to Applicant. To mitigate any possible harm to Applicant, discovery reopened solely for Application for 30 days to conduct discovery regarding any issues regarding the newly pleaded registration.


05/17/2012 SUSPENDED AND APPLICATION REMANDED TO EXAMINER N Regarding state of Montana’s opposition to “THE LAST BEST PLACE: “Congress has continued to include, in appropriations legislation, clear prohibitions on the expenditure of funds to register or enforce marks that include the phrase “Last Best Place.” Accordingly, the USPTO has issued refusals of registration to applicant in those applications not before the Board in these oppositions.  These oppositions shall remain suspended and the involved applications are remanded to the trademark examining attorney for further action consistent with the appropriations legislation of the Congress.”05/22/2012 Office Action:


05/14/2012 PROCEEDINGS RESUMED N Respondent moved to dismiss the amended pleading of fraud under FRCP 12(b)(6) is denied.


05/18/2012 PROCEEDINGS RESUMED N The parties’ “Consent and Concurrent Use Agreement” is accepted.


05/20/2012 PROCEEDINGS RESUMED N Applicant moved to dismiss for failure to prosecute under Rule 2.132(a) and moved to strike Opposer’s pretrial disclosures. Opposer failed to take testimony or submit any evidence during testimony period, and failed to timely serve pretrial disclosures. After pro se Opposer’s testimony and pretrial disclosure deadlines had passed, Opposer served on applicant docs captions ‘pretrial disclosures.’ Applicant’s motion to strike the ‘pretrial disclosures’ is granted, but motion to dismiss denied – Opposer’s pleaded registration establish standing and priority and make out a prima facie case.


05/16/2012 PROCEEDINGS RESUMED N Applicant moved to “de-designate” certain documents produced by Opposer. Applicant’s motion granted to the extent that emails to customers are re-designated “confidential” rather than “highly confidential.” Opposer moved to compel production of “the identity of and contact information for applicant’s third-party service provider that is in possession of applicant’s emails, asserting, inter alia, that applicant has not produced certain emails from the 2006 – 2007 time period which opposer believes to exist.” Board denied the motion as premature-  4 months of discovery remained – as presuming the applicant’s production and/or supplementation is or will be decifient.


05/15/2012 PROCEEDINGS RESUMED N Applicant (STARZ ENERGY) brought a 12(b)(6) Motion to dismiss the opposition based on ROCKSTAR energy’s marks. Board dismissed the motion finding the pleading sufficient. Further, applicant’s allegations the Opposer is not the owner of the pleaded marks is an impermissible collateral attached which may only be raised by way of a counterclaim or separate petition to cancel.

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