Recent TTAB decisions and activity of note (5/21 – 5/28/2012)

During the week of May 21 – 28, 2012, the TTAB issued no precedential decisions. But it issued several dispositive rulings as well as important findings on procedure, evidence, and discovery. Also note that one appeal to the CAFC was instituted.

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

TTAB Disposition

Precedent?

Notes

91164764

05/21/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED

N

Opposer, owner of registrations for BRINKS and BRINK’S for security products, moved for partial summary judgment in its Opposition to BRINKMANN, for home security systems and components therefor, on applicant’s Morehouse defense regarding Opposer’s dilution claim. Opposer argued that the goods in the Applicant’s registrations are not the same or essentially the same as the goods recited in applicant’s involved application. Applicant contends that the Morehouse defense applies to the dilution claim given Opposer’s failure to challenge its prior registrations and various third party registrations.  Board found that while there are no relevant material facts at issue, Opposer was essentially seeking an advisory opinion as to whether or not applicant’s modified Morehouse defense is applicable to opposer’s dilution claim. Board refused to issue such an opinion before trial as it would not address the pleaded likelihood of confusion claim which may be dispositive.

Note that Opposition was instituted more than seven (7) years ago and Opposer on June 15, 2012, moved the Board to extend discovery by an additional 60 days.

91198922

05/23/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED

N

Plaintiff (The Clorox Co.) moved for summary judgment in its opposition against CLOROTEC & Design (diamond shaped) for “electrolysis cell for use in the manufacture of various ionic solutions.” Motion denied as Board found material facts in dispute as to relatedness of goods and similarity of marks.

91202371

05/24/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED

N

Opposer moved for summary judgment on res judicata and collateral estoppel grounds based on prior decision of the Board in a different Opposition. Board found that claim preclusion did not apply because of the addition of design elements in Applicant’s mark. As to issue preclusions, Board granted motion in part as to the similarity of the good and services since they are identical to prior proceeding, and denied it as to any other issues.

77509917

05/24/2012 BOARD`S DECISION: AFFIRMED

N

The BENTHRASHER mark of Applicant Ben Thrasher refused under 2(d) as likely to be confused with two registrations issued to High Speed Productions, Inc. (“HSP”) for THRASHER and a third registration issued to the Atlanta Hockey Club, Inc. (“AHC”) for THRASHERS, between whom there is a consent agreement. The applied for mark and the cited marks are all for clothing. Third party registrations submitted for first time with Applicant’s brief were ignored as untimely. Applicant’s attempts to limit the scope of the registrants goods improper (“The law is clear that the question of likelihood of confusion must be determined based on the identification of goods in the application and cited registration, regardless of what the record may reveal as to the actual nature of the goods, the particular channels of trade or the class of purchasers to which the goods are directed.” Evidence of third party registrations by Applicant dismissed because none of them were for the relevant goods. Evidence of use of the term THRASHERS by others in the field dismissed as being insufficient. As a result, Board affirmed the refusal.

[NOTE: I disagree with the finding as I believe the commercial impression of BENTHRASHER is that of a personas name, not of an activity or a thing, and that it is further distinguished by the lack of space between the words. Furthermore, the register is already somewhat diluted by the two registrants even if there is a consent agreement between them.]

77709106

05/22/2012 BOARD`S DECISION: AFFIRMED

N

Refusal of BONE YARD INDUSTRIES & Design for gloves, shirts, hats and sweatshirts under Section 2(d) as likely to be confused with registrations, both from same entity, for BONE YARD & Design (tshirts and hats) and BONEYARDS (belts, footwear, pants, shirts, shorts, tshirts). Applicant argued that the cited registrant is not using the mark, but this argument refused as an impermissible collateral attack. Refusal affirmed: marks found similar and goods overlapping.

77738221

05/23/2012 BOARD`S DECISION: AFFIRMED

N

THE BIG RIG MATTRESS refused as descriptive under Sect. 2(e)(1) for mattresses (with MATTRESS disclaimed). Applicant’s double entendre argument fell short; Board affirmed refusal. (“To qualify as a double entendre, the second non-descriptive meaning of the mark must be immediately apparent to the consumer.”

77874764

05/21/2012 BOARD`S DECISION: AFFIRMED

N

BIG YANK in Class 18 (luggage) and 25 (clothing) refused under 2(d) with registered marks YANK for clothing and luggage goods. Refusal affirmed: Goods are overlapping; addition of big is not sufficient to differentiate the marks. Applicant’s cited  its ownership of prior registrations, now expired, for BIG YANK. Applicant tried to cite registrant’s statements in its application traversing a 2(d) refusal with the then-registered BIG YANK mark. But the file history was not of record and Board did not take judicial notice; Board hinted that outcome might be different as to some of the goods if such evidence properly of record.

77888783

05/24/2012 BOARD`S DECISION: AFFIRMED

N

Refusal of SIERRA WHITE for granite and stone under Sect. 2(d) with SIERRA STONE registered for “cast stone.” Refusal affirmed; “WHITE” is descriptive and “STONE” generic.

77928112

05/22/2012 BOARD`S DECISION: AFFIRMED

N

Applicant’s mark, CIVITA for real estate development, refused under 2(d) with:

– CIVITAS for “landscape architecture, and urban planning and design”

– SEVITA and SEVITA logo both for financial and real estate services

Board affirmed refusal finding marks similar and the services may emanate from the same source (relying on third party registrations).

(The order was mistakenly identified as precedential in Board’s order, but a subsequent order corrected it.)

77931954

05/23/2012 BOARD`S DECISION: AFFIRMED Refusal of design mark featuring a silhouette skateboarder and a skateboard for clothing under Section 2(d) as likely to be confused with registered design mark  for clothing also featuring silhouette of skateboarder and skateboard. Applicant’s argument that sophisticated purchasers would distinguish the designs fails because the channels of trade are not limited. Refusal affirmed.

77956966

05/23/2012 BOARD`S DECISION: AFFIRMED

N

GROWSMART for soils refused as likely to be confused under 2(d) with SMARTGROW registered for “Animal and human hair used as a fertilizer, for moisture retention, and an all-natural growth enhancement.” Board affirmed finding goods overlapping, and the words in the marks identical but merely reversed.

85024647

05/23/2012 BOARD`S DECISION: AFFIRMED

N

WILD BY NATURE for pet food refused under 2(d) due to several BY NATURE registrations for pet food and similar items owned by one registrant. Applicant’s untimely third-party evidence submitted with its brief not considered. Refusal affirmed “[i] n view of the similarity of the marks, the legal identity of the goods and the presumption that the goods move in the same channels of trade and are sold to the same classes of consumers.”

85028579

05/21/2012 BOARD`S DECISION: AFFIRMED

N

Refusal of NEIGHBORHOODJOINTS for variety of Class 35 services under Sect. 2(e)(1) affirmed: “In short, it would be an impediment for competitors offering restaurant ratings or management services or for the public using such services to try to describe them if applicant were allowed to register “NEIGHBORHOODJOINTS.””

85048891

05/24/2012 BOARD`S DECISION: AFFIRMED

N

Refusal under Section 2(d) of TJ’S PIZZERIA for restaurant services due to likelihood of confusion with TJ’S SUBS for restaurant and fast food services featuring sandwiches and subs is affirmed. TJ’S portion is identical and dominant portion of both marks.

77781694

05/24/2012 BOARD`S DECISION: REVERSED

N

Application for TIF for ‘turfgrass’ refused under 2(d) as likely to be confused with TifBlair The Certified Centipede [& Design] for grass seed. Board permitted consideration of third party registration submitted by Applicant during the appeal for the first time b/c the registration issued after the appeal was commenced. Board reversed the refusal; ‘TifBlair’ is a generic varietal name and thus afforded less weight.

77865028

05/24/2012 BOARD`S DECISION: REVERSED

N

Refusal of GREEN DOOR for “an adult-themed social club for engaging in adult-themed erotic activities, excluding restaurant and bar services” under 2(d) with THE GREEN DOOR for ‘restaurant and bar services’ reversed. Mark found essentially identical but services found quite different. “Evidence that applicant’s club may in fact include a bar and may provide alcoholic drinks to its members (and the evidence of record is contradictory on these points) does not establish a similarity between applicant’s sex or “swingers” club and registrant’s restaurant and bar.” Board seemingly indicated that finding may have been different if additional evidence made of record.

85135800

05/25/2012 BOARD`S DECISION: REVERSED

N

Descriptiveness refusals of NEWTRITIOUS and INSTANT NEWTRITION for powdered supplement drink mixes reversed by the Board. Evidence submitted by Applicant during appeal ignored. “[A] mark is not merely descriptive if a portion of the mark “creates a separate commercial impression, such that the mark as a whole has a double entendre, with one meaning that is not merely descriptive.”” Examiner’s 3rd party evidence was ambiguous – several of the uses were as a trademark or trade name.

91187118

05/22/2012 APPEAL TO CAFC

N/A

Appeal to CAFC filed by Applicant by AMAZON VENTURES after TTAB sustained Opposition by Amazon.com

91177768

05/21/2012 RECONSIDERATION DENIED

N

Applicant moved for reconsideration of ruled denying summary judgment on a fraud claim. Board denied motion, noted that no new issues or facts were raised.

NOTE that ruling on motion for reconsideration issued 10 months after the filing of the request for reconsideration and 2.25 years after the MSJ was first filed.

92053863

05/22/2012 SUSPENDED PENDING DISP OF CIVIL ACTION

N

Motions to suspend pending civil proceeding and quash deposition granted despite fact that Respondent has already noticed a 30(b)(6) deposition. Board noted that civil action deemed commenced once it is filed, even if it has not yet been served.

91189221

05/25/2013 SUSPENDED PENDING DISP OF CIVIL ACTION

N

Board proceeding suspending pending outcome of a foreign appeal related to the same mark, as the foreign proceeding could potentially affect registration rights in the US.

92055005

05/22/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT

N

Petitioner moved for a 90 days enlargement of time to respond to Respondent’s Motion for Summary Judgment. Motion granted in part:  Petitioner allowed 30 days to respond to MSJ issues or to request suspension at the Board pending the motion to vacate District Court ruling.

91201933

05/22/2012 RESPONSE DUE 30 DAYS (DUE DATE)

N

Applicant’s amendment of correspondence address denied as neither a  proper request for withdrawal of counsel nor a revocation of applicant’s power of attorney was filed.

91204026

05/22/2012 RESPONSE DUE 30 DAYS (DUE DATE)

N

Applicant moved, with consent, to amend its mark from A BULLY FREE WORLD to A WORLD FREE OF BULLYING, and to amend its identification of goods from “Rubber or silicon wristbands in the nature of a bracelet” to “Wrist-bands”. Proposed amendment to drawing denied. Proposed amendment to ID denied as broadening the current ID.

92054205

05/23/2012 TRIAL DATES RESET

N

Respondent moved to compel responses to interrogatories and RFP, and to test sufficiency of Petitioner’s untimely responses to requests for admissions (RFAs). Motion to compel granted as to interrogatories and RFP; Petitioner ordered to respond w/o objections as to the merits. Motion to deem RFAs admitted denied and Petitioner’s motion to withdraw admissions granted.

91202032

05/24/2012 TRIAL DATES RESET

N

Applicant moved to dismiss/strike Opposer’s claim of lack of a bona fide intent to use the mark after Opposer’s pleading referenced statements by Applicant’s attorney made in the course of settlement negotiations. Applicant’s motion denied; Board did not address FRE 408 issues.

92049332

05/21/2012 BOARD`S DECISION: DISMISSED W/ PREJUDICE

N

Opposition to BACKRACK for ‘pick-up truck racks’ on grounds of genericness denied: “We find that the evidence of generic use of respondent’s BACKRACK mark is offset by evidence of the overall context of respondent’s trademark use of the term BACKRACK, a less than rigorous but sufficient level of policing and control over use of the mark by others, recognition of the trademark significance of the mark by competitors and sellers, and a lack of evidence that the primary understanding of the term BACKRACK to end-purchasers of headache racks is as a generic term.”

91198679

05/23/2012 BOARD`S ORDER TRIAL DATES ARE RESET

N

Applicant’s motion for sanctions denied; Applicant had not previously filed motion to compel.

92053415

05/23/2012 BOARD`S ORDER TRIAL DATES RESET

N

Respondent’s motion to compel denied b/c Respondent did not make a good faith effort to resolve before filing with Board. Petitioner’s motion to compel discovery deposition appearance of Respondent’s 30(b)(6) witness granted to ensure witness is available before departing U.S. for 2 months.

91204197

05/23/2012 CONSOLIDATED – PARENT; SUSPENDED

N

Motion to consolidate granted; motion to suspend deferred until Answer filed in Civil action.

91201442

05/23/2012 CONSOLIDATED – PARENT; TRIAL DATES RESET

N

Motion to consolidate granted even though one proceeding was almost at end of discovery

91204280

05/21/2012 DISCOVERY CONFERENCE ORDER; D`S AMENDMENT TO APPLICATION DENIED WITHOUT PREJ; TRIAL DATES REMAIN AS

N

Applicant’s proposed amendment to its dates of use denied w/o prejudice; Applicant did not submit requisite declaration.

91204457

05/23/2012 D`S MOT. TO DISMISS GRANTED W/LEAVE TO AMEND; TRIAL DATES RESET

N

Applicant moved to dismiss for failure to state a claim. Motion granted:  Opposer “[m]erely identifying its claims on the notice of opposition, without setting forth factual allegations to support such claims, does not constitute a proper pleading.”

91193955

05/24/2012 MOTION FOR SANCTIONS; DENIED; TRIAL DATES RESET

N

Board earlier granted Opposer’s unopposed motion to compel; Applicant then served supplemental discovery response. Opposer now moved for sanctions. While Board denied motion, it chastised applicant: “in view of applicant’s dilatory and obfuscatory conduct with respect to discovery which, in our view, has resulted in an unnecessary motion to compel and motion for sanctions, some sanctions are warranted in this matter.  While not necessarily a sanction, we initially note that as a general “estoppel” rule, applicant may not rely on any information and documents that are responsive to opposers’ discovery requests but were not disclosed or produced during discovery.”

92054095

05/22/2012 PROCEEDINGS RESUMED

N

Petitioner moved to compel Respondent to designate one or more officer for 30(b)(6) deposition. Board granted motion.

92054870

05/24/2012 PROCEEDINGS RESUMED

N

Respondent’s motion interpreted as a 12(b)(6) motion to dismiss for failure to state a claim. Several claims found sufficient, but fraud claim found lacking: “Here, the petition to cancel fails to sufficiently set forth factual allegations that respondent had no reasonable basis for believing that no one else had the right to use the mark in commerce at the time it filed the application for the mark THE SPICE HOUSE.”

91188847

05/21/2012 PROCEEDINGS RESUMED

N

Opposer moved to test sufficient of responses to requests for admissions. Where applicant admitted or denied the RFA but provided additional clarification as well, Opposer’s motion denied. As to other Requests, Opposer’s motion denied where propounded for an improper purpose: “The requests for admissions at issue are not for purposes of limiting factual issues in this case.”

91200187

05/24/2012 PROCEEDINGS RESUMED

N

Opposer’s motion to compel granted in part and many of Applicant’s objections overruled. Motion to compel regarding requiring Applicant’s signature (“Applicant is an individual, not a corporation, and therefore, applicant’s counsel cannot sign on behalf of applicant as an agent, although objections to interrogatories must be signed by counsel.”)

91202546

05/21/2012 PROCEEDINGS RESUMED

N

Applicant’s 12(b)(6) motion denied as to Section 2(d) claim, granted as to ‘false suggestion of a connection’ claim, dilution claim, and deceptiveness claim.
Tagged

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