Recent TTAB decisions and activity of note (5/29 – 6/10/2012)

Between May 29 and June 10, 2012, the TTAB issued many decisions Only was was precedential – it was actually the redesignation of a decision from a few weeks earlier.

There are many interesting and important rulings during this period, however including:

– motion to strike entire notice of opposition under FRCP 8 granted in part

– Opposition to the word CAVEMAN sustained based on a design mark consisting of a caveman

– ROLEX successfully opposed RALPH LAUREN RLX and RLX RALPH LAUREN

– refusal of CARDANO as primarily merely a surname reversed

– refusal of ATTORNEYYELLOWPAGES.COM reversed; decision included discussion of relevance of a very brief consent agreement

– refusal of registration of mark for failure to comply with Examining Attorney’s information requests affirmed

Here is a rundown of the activity of note from the TTAB during this period [visit http://ttabvue.USPTO.gov to view any of the proceeding and documents]:

Proceeding No.

Date

TTAB Disposition

Precedent?

Notes

92048578

05/23/2012 COURT`S DECISION: DISMISSED

N

Parties consented to dismiss the CAFC appeal. Note that appellant has earlier failed to file its appeal brief and Respondent/Appellant’s registration has been cancelled by the USPTO.

92050834

06/04/2012 PLAIN`S MOT. FOR SUMMARY JUDGMENT GRANTED

N

Parties, both using DOGTOPIA for dog daycare services, had earlier stipulated that marks and services were similar and that sole issue was priority. The parties cross-moved for summary judgment – Defendant’s motion was based on the concurrent use application and proceeding it filed. Plaintiff found to have priority – even if its prior use was only in Cleveland, Ohio area that is sufficient under Section 2(d) for cancellation – and the petition to cancel granted. As to Defendant’s concurrent use request, the Board found material facts in dispute regarding whether there is confusion despite the geographic territories set forth in the concurrent use application.

94002441

05/31/2012 BD`S DECISION: FAVORABLE TO APPLICANT

N

Concurrent use agreement between the parties accepted by Board. Note that the Board’s order contains a good summary of the agreement and the  key provisions of a concurrent use agreement.

76676618

05/29/2012 BOARD`S DECISION: AFFIRMED

N

Application for COCO LOCO (translation: crazy coconut) for fruit juices refused under Sect. 2(d) as likely to be confused with THE CRAZY COFFEE COMPANY COCO LOCO ESRESSO & Design (translation of COCO LOGO ESPRESS = crazy coffee) for coffee and tea. As a procedural issue, Board noted that the refusal was not improper merely b/c the prior pending serial number (at the time, now the cited registration) was not listed in the suspension order during prosecution of the application; Board found applicant was not prejudiced as the examining attorney has previously noted the possible refusal. Board found that THE CRAZY COFFEE COMPANY was not the dominant feature of registered mark, but rather that the mark is comprised of two “memorable and distinct elements: THE CRAZY COFFEE COMPANY and the COCO LOGO ESPRESSO logo.” Board affirmed refusal (“the marks are similar, the goods are related, move in the same channels of trade and are sold to the same consumers”).

77314375

05/31/2012 BOARD`S DECISION: AFFIRMED

N

Refusal of TEEN PSYCHIC for a variety of services in Class 41 and 45 including psychic services as merely descriptive under Section 2(e)(1). Board affirmed the refusal.

77500870

06/07/2012 BOARD`S DECISION: AFFIRMED

N

BUCKET O’ RIBS for ‘pork ribs’ refused as generic and/or merely descriptive. Generic refusal affirmed: “The record in this case clearly establishes that BUCKET O’ RIBS is commonly used by restaurants as a generic reference to a portion or serving of ribs.” Applicant’s evidence of 14 registrations of BUCKET O ____ or similar phrases, 10 of which have been cancelled, not persuasive.

77713799

06/06/2012 BOARD`S DECISION: AFFIRMED

N

Refusal of THE BLACK SERIES for electric massage appliances as merely descriptive under Sect. 2(e)(1) because the items feature the color black affirmed. Applicant’s argument that black denoted luxury or premium quality was not persuasive.

77777885

05/31/2012 BOARD`S DECISION: AFFIRMED

N

Applicant’s BITE ME mark for pet food stuff, namely edible greetings in the form of panels, biscuits and chips refused under Section 2(d) as likely to be confused with 3 cited registrations owned by 2 entities. The cited marks contained BITE ME and were for pet goods or services. Refusals affirmed.

77785797

06/05/2012 BOARD`S DECISION: AFFIRMED

N

YUMMY TUMMY for “potato chips; potato crisps; potato crisps and chips” refused under Sect. 2(d) due to likelihood of confusion with ORGANIC YUMMY TUMMY INTSANT OATMEAL for instant oatmeal. “Yummy Tummy” found dominant feature of registered mark; evidence of two other registrations using the phrase not persuasive that the term is weak and diluted.  Third party registration evidence showed that several marks are used in connection with both goods. Refusal affirmed.

NOTE – the third party registration showing the goods are similar appear to be house marks or store names that cover many products.

77920248

05/29/2012 BOARD`S DECISION: AFFIRMED

N

PROGRADE for safety aids (“Safety aids, namely, non-metal television, door, window, appliance, and drawer latches for child safety, non-metal toilet seat locks for child safety, non-metal corner guards for child safety; safety aids, namely, top of door locks and cabinet locks not made of metal for childproofing.”) refused under Sect 2(d)due to likelihood of confusion with PROGRAD for metal locks. Registrations submitted by Applicant during appeal were not considered. Find goods related – and without any restrictions on channels of trade – and offered for sale at same locations, Board affirmed refusal.

79081140

05/31/2012 BOARD`S DECISION: AFFIRMED

N

Applicant for LA PIEVE & Design for “Wines, spirits, liqueurs and alcoholic beverages, namely distilled spirits and aperitifs, consisting of wine, sparkling water and liqueurs” refused under Sect. 2(d) as likely to be confused with PIEVE DI SPALTENNA for wines. The marks had differing translation statements, which the Board took judicial notice that English translation of Italian word “pieve” is “parish.” Given that the goods are overlapping, Board found the marks similar in appearance and sound and affirmed the refusal.

85015573

05/29/2012 BOARD`S DECISION: AFFIRMED

N

Application for CHESTER’S CHOPHOUSE & WINE BAR (& Design) for ““restaurant and bar services featuring fine dining and table service; wine bar services,” refused under Sect. 2(d) due to likelihood of confusion with CHESTER’S and CHESTER’S & design mark for restaurant services (same owner) as well as CHESTER’S HAMBURGERS & Design for restaurant services. Board affirmed, finding the services overlapping and the dominant terms in all the marks identical.

85021590

05/31/2012 BOARD`S DECISION: AFFIRMED

N

Application for THE CHAMPAGNE LODGE & LUXURY SUITES for “hotels” refused as likely to be confused under Sect. 2(d) with CHAMPAGNE TOWERS registered for “resort hotel and restaurant services.” Board noted that applicant’s “hotel” services must be interpreted to include “resort hotel” services, and that neither the application nor registration featured any limitation on channel of trade. Finding CHAMPAGNE the dominant feature of both marks, Board affirmed refusal.

85034692

06/07/2012 BOARD`S DECISION: AFFIRMED

N

Application for TRITUM for “battery operated flashlights and headlamps” refused under Sect. 2(e)(1) as merely descriptive, as well as alternate ground of deceptively misdescriptive, and also for failure to comply with information request. Finding applicant failed to comply with information request (stating products had not yet been made), Board affirmed the refusal and did not need to consider the other grounds of refusal.

85063769

06/06/2012 BOARD`S DECISION: AFFIRMED

Y

Prior decision of April 19, 2012, re-designated as precedential

85079173

05/29/2012 BOARD`S DECISION: AFFIRMED

N

Applicant for COMFORT PLUS for a variety of medical products refused under Sect 2(d) for likelihood of confusion with COMFORTPLUS for “orthopedic braces.” Marks found nearly identical; goods found to possibly emanate from single source. Despite applicant’s attempted submission of third party registrations, Board found no evidence of extensive third party use of COMFORT and/or PLUS. Refusal affirmed.

85123800

06/05/2012 BOARD`S DECISION: AFFIRMED

N

Application for PLATFORM EQUINIX for variety of computer services refused under Sect. 6(a) for failure to disclaim “PLATFORM” as descriptive. Applicant’s arguments that its mark unitary and alliterative failed and refusal affirmed.

77005059

06/07/2012 BOARD`S DECISION: REVERSED

N

Refusal of application made under Section 2(f) for ATTORNEYPAGES for “providing a searchable directory of lawyers, legal service providers and information about the same through electronic means on a global computer network” based on (i) Sect. 2 (d) with ATTORNEYYELLOWPAGES.COM for online directory of attorneys registered on the supplemental register and (ii) lack of acquired distinctiveness. Applicant owned prior supplemental registration of its mark. Board found the cited registration extremely descriptive and weak and found the differences between applicant’s mark and the cited mark sufficient to be distinguishable. Applicant also cited a settlement agreement which Examining Attorney discounted as “naked” and lacking any real detail. However, Board said agreement should not be ignored because it was the result of litigation and was an “arms-length agreement.” Board thus found the marks not likely to be confused. Board also found the evidence of acquired distinctiveness sufficient under 2(f). Both refusals were thus reversed.

85230910

06/07/2012 BOARD`S DECISION: REVERSED

N

Application for CARDANO for variety of financial services refused as primarily merely a surname under Sect. 2(e)(4). In reviewing the rareness of the name, Board found that the number of entries submitted by Examiner Attorney was less than stated and contained duplicates; Board thus found that it is “extremely rare surname.” Board also found no evidence that it had look and sound of a surname, and other factors neutral. The rareness outweighed the other factors, and all doubts resolved in favor of applicant. Refusal reversed.

77440023

06/05/2012 BOARD`S DEC: AFFD IN PART/RVRSD IN PART

N

Refusal of HH HUDSON PRODUCTS & Design for machine and vehicle parts in Class 7, 9, 11, and 12 under Sect. 2(d) as likely to be confused with RLHUDSON & Design for engines and other vehicle parts. Despite differences in marks and designs, Board found marks rather similar. While evidence of 3 third parties making overlapping goods was shown by examiner, Board discounted as two of them were car manufacturers making replacements parts for their vehicles and one was the largest parts company with a very broad range of goods. Evidence from the three “would not show that consumers would expect these same goods to emanate from “regular” automotive parts manufacturers and suppliers and be sold under marks that are not the brand of the automobile manufacturer or automobile for which they are designed.” Board found goods in Class 11 (headlamps) not as similar as the other goods to the cited registrant’s goods. Refusal reversed as to Class 11, affirmed as to Classes 7, 9, and 12.

92055368

06/01/2012 SUSPENDED PENDING DISP OF CIVIL ACTION

N

Respondent’s motion to dismiss on the basis of insufficient service of process [FRCP 12(b)(5)]denied; even thought the petition filing was only the electronic cover sheet and exhibits. Respondent’s Motion to Dismiss under FRCP 12(b)(6) for failure to state a claim granted without prejudice; Petitioner stated no facts. Proceeding suspended pending civil action.

91199964

05/29/2012 RESPONSE DUE 30 DAYS (DUE DATE)

N

Applicant’s second proposed amendment to the identification of good is accepted as clearly limiting in nature. Applicant’s amendment to the drawing is accepted as not a material alteration; the addition of the wording “Standard No.” is an unregistrable component and has been disclaimed.

91198172

06/01/2012 TRIAL DATES RESET

N

Opposer moved to reopen its time in which to serve pretrial disclosures. Board determined that the parties did not inadvertently omit an extension of the deadline in its earlier filings with the Board. Finding that Opposer did not have ‘excusable neglect’ the motion was denied.

Note:  Opposer has subsequently withdrawn the Opposition.

91198440

06/06/2012 TRIAL DATES RESET

N

Opposer moved to test sufficiency of responses to Requests for Admissions. Requests 1 to 14 related to third party uses of similar marks. As this information is not generally within Applicant’s control, the motion is denied regarding these RFAs.

Requests 15 to 25 related to the accuracy of documents produced by Opposer and third parties. The motion was also denied as to these RFAs.

91199529

06/05/2012 TRIAL DATES RESET

N

Applicant filed an abandonment of the opposed Class 25 in its application without consent, and a withdrawal of its counter-claim. As a result, the Opposition is sustained.

91203538

06/04/2012 TRIAL DATES RESET

N

Opposer moved for default judgment. Opposer’s motion denied as applicant filed an Answer even though it was passed the extended deadline.

91204338

06/06/2012 TRIAL DATES RESET

N

Opposer moved to strike Applicant’s answer as deficient. Applicant submitted an amended answer in response. Motion granted as even the amended answer failed to conform to the requirements.

91170868

06/07/2012 BOARD`S DECISION: DISMISSED

N

Opposer (ROLEX) opposed registration of RALPH LAUREN RLX and RLX RALPH LAUREN for “jewelry and watches.” Opposer’s ROLEX mark found to be famous for watches and the goods of the parties identical. Applicant argued that the inclusion of its well known house mark precluded a finding of confusion. Board dismissed the Opposition under Section 2(d). Board found that the RL coming from RALPH LAUREN served to differentiate the marks sufficiently.

Note: The proceeding lasted for 6 years. Opposer’s evidence included a survey.

Will it be appealed?

91191683

05/29/2012 BOARD`S DECISION: DISMISSED

N

Application for LOUISIANA FASTSTART for business training services was opposed under Sect. 2(d) based on a likelihood of confusion with Opposer’s QUICK START mark registered and used with “educational services; namely, industrial training of managers and other employees of companies.” Opposer filed no evidence during its main trail period, but later filed a testimony deposition (taken prior to close of its trial period) and five notices of reliance after the close of its rebuttal testimony period. Opposer failed to introduce proper status and title copy of its registration. The notices of reliance are deemed untimely. The testimony deposition of Opposer was allowed into the record. Board found the Opposer proved it has some common law rights prior to Applicant (because it could not rely on registration) and that the services are very similar. But finding that the terms QUICK START are highly suggestive and are mostly used as “ Georgia Quick Start”, which led to finding that the marks are no similar in sound, appearance, connotation or commercial impression, the Board concluded that “that opposer has failed to shown by a preponderance of the evidence that the use of Louisiana FastStart on applicant’s services will result in a likelihood of confusion with the Quick Start mark” and dismissed the opposition.

91180851

06/07/2012 BOARD`S DECISION: SUSTAINED

N

Registrant’s ICEWEAR & Design for clothing challenged under Section 2(d) based on Petitioner’s registration and use of ICEBERG and ICE for clothing. Opposer’s evidence consisted of its registrations and printed materials showing its mark in connection with its goods. Applicant submitted no evidence and no brief. Board sustained the Opposition finding the marks similar and the goods overlapping.

91192340

05/29/2012 BOARD`S DECISION: SUSTAINED

N

Opposition to CAVEMAN for decals, stickers, and clothing under Sect. 2(d) based on Opposer’s alleged prior use of CAVEMAN for clothing, and registration of a caveman design mark. Board found the design mark to have same meaning and commercial impression as Applicant’s CAVEMAN word mark. Goods in Class 25 found overlapping; goods in Class 16 found not related. Opposition sustained for Class 25, dismissed for Class 16.

91195088

06/04/2012 BOARD`S DECISION: SUSTAINED

N

Opposition to FEDERAL FIDELITY BANK & TRUST [& design] based on Opposer’s use and registration of many FIDELITY marks. Applicant submitted no testimony and no brief, and Opposer’s testimony included unanswered Requests for Admissions to applicant. Board, based on the record, sustained the Opposition: “[T]he absence of any evidence of third-party use or registration of FIDELITY in connection with similar services suggests that FIDELITY is a unique term in the financial field, and thus more likely to create confusion when used in both applicants’ and opposer’s marks.” [NOTE: USPTO records actually show many third party registrations containing FIDELITY for financial services.]

91195090

06/04/2012 BOARD`S DECISION: SUSTAINED

N

Opposition to “FIDELITY FEDRAL BANK AND TRUST OF FLORIDA” for banking services on 2(d) grounds. A pplicant submitted no testimony and no brief, and Opposer’s testimony included unanswered Requests for Admissions to applicant. Board, based on the record, sustained the Opposition: “[T]he absence of any evidence of third-party use or registration of FIDELITY in connection with similar services suggests that FIDELITY is a unique term in the financial field, and thus more likely to create confusion when used in both applicants’ and opposer’s marks.” [NOTE: USPTO records actually show many third party registrations containing FIDELITY for financial services.]

92053739

06/04/2012 BOARD`S DECISION: DISMISSED W/ PREJUDICE

N

Petition to Cancel LAKESIDE for a musical band’s services based on alleged prior use of identical mark for identical services. Respondent moved to dismiss for failure to prosecute as Petitioner submitted no testimony. Board ruled that “[P]etitioner’s testimony period has expired and petitioner has neither taken any testimony nor submitted any other admissible evidence.  Without testimony or other admissible evidence, petitioner has not met and cannot meet its burden of proof.  Accordingly, respondent’s motion to dismiss under Trademark Rule 2.132(a) is hereby GRANTED, judgment is entered against petitioner and in favor of respondent and the petition for cancellation is dismissed with prejudice

91192645

05/29/2012 BD`S ORDER RE TELEPHONE CONFERENCE; TRIAL DATES REMAIN AS SET

N

Applicant moved for a protective order, Opposer cross-moved for sanctions. Applicant’s counsel indicated its witness was unavailable for scheduled deposition (pursuant to an earlier Board order) due to a head injury. Opposer’s counsel relayed suspicions. Applicant’s counsel confirmed (after the date of the scheduled deposition) that the witness had traveled to Germany for a conference. Motion for sanctions denied as premature; parties indicated they were cooperating to complete the deposition, and motion for protective order deemed moot.

91125116

06/08/2012 BOARD`S ORDER TRIAL DATES REMAIN AS SET

N

Applicant’s motion for reconsideration and motion to extend its testimony period both denied. Applicant did not show good cause for extension. “In particular, the Board is troubled by applicant’s failure to provide any information regarding its diligence in deposing the witness in the face of time constraints which had not only been articulated by opposers but which were set down in an agreement and then the subject of reminders to applicant during the deposition”

91176159

06/01/2012 BOARD`S ORDER TRIAL DATES RESET

N

Opposer moved for reconsideration of Board order denying its motion to compel as untimely. The motion to reconsider is denied.

91194679

05/29/2012 CROSS-MOTIONS; DENIED; PROCEEDINGS RESUMED

N

Opposition to INDEPENDENT NATION & Design for publication of electronic magazines, blog, etc. Opposed by user and registrant of INDEPENDENT NATION for “advertising and promotion” of his book of the same name, as well as for an “Internet news portal” and “online community,” and a Web site, “online forum” and blog in the fields of news, politics, media, social issues, public affairs and entertainment. Opposer moved for Summary Judgment and applicant cross-moved. Opposer’s motion based in part on unanswered requests for admission it sought to have deemed admitted. But Applicant had submitted late response to the RFAs which Board deemed a motion to withdraw the deemed admissions and granted such motion. Finding genuine issues of material fact, Board denied the cross motions for summary judgment.

91201700

06/07/2012 DATES REMAIN AS PREVIOUSLY SET

N

Opposer moved to compel responses to interrogatories and documents requests without objections. Motion granted:  “applicant has made no showing that its failure to respond to the discovery requests in a timely manner was the result of excusable neglect”

91203721

06/04/2012 DISMISSED AS A NULLITY; APPLICANT ALLOWED 30 DAYS TO FILE A REDACTED COPY OF ITS ABN

N

Opposition dismissed as null: Request for extension of time to Oppose was filed by Mann (Suyen’s attorney). Opposition was clearly intended to be filed by Suyen (even though it references Mann in the electronic cover sheet).

91202201

06/04/2012 MOTION TO QUASH AND PROTECTIVE RELIEF GRANTED

N

Opposer’s motion to quash the deposition of Opposer’s counsel granted. Applicant sought to depose Opposer’s counsel on the grounds that counsel signed Opposer’s interrogatory responses. Opposer’s counsel is not an agent of the corporation. Board also noted that the verification signed by Opposer was insufficient: “as it is neither sworn to under oath or notarized and therefore, opposer’s answers are not properly signed by opposer under Fed. R. Civ. P. 33(b)(3) and (5).”

91199542

06/05/2012 P`S MOT. TO COMPEL GRANTED, IN PART, DENIED, IN PART; TRIAL DATES RESET

N

Opposer moved to compel, and the motion was granted in part.

91198263

05/30/2012 P`S MOT. TO COMPEL GRANTED; TRIAL DATES RESET

N

Opposer (the rock band CREED) moved to compel discovery responses. Motion granted. Applicant (CREED COMICS) must response without objection.

92053738

05/29/2012 PROCEEDINGS RESUMED

N

Petitioner moved for judgment as a sanction for Respondent’s alleged failure to comply with prior Board order granting Petitioner’s motion to compel. While Respondent served discovery answered, they were very late. Board granted motion but not the requested judgment. Respondent was sanctioned:

“• respondent’s concession that there is a likelihood of confusion between the parties’ marks is accepted, and petitioner need not prove likelihood of confusion at trial, as it is now established;

• discovery is closed for respondent;”

• petitioner is entitled to follow-up discovery within the time period set herein; and

• petitioner shall promptly bring any further discovery deficiencies to the Board’s attention and the issue will be promptly resolved via teleconference, and in the event respondent fails to participate in such a teleconference, or the discovery process, as ordered, judgment shall be entered against respondent on petitioner’s motion.

In other words, the only issues remaining for trial are priority and laches.

91198182

06/05/2012 PROCEEDINGS RESUMED

N

Opposer moved to compel. Applicant filed an untimely response brief, but Board exercised its discretion to consider the motion on the merits. Finding applicant’s responses to specific document requests and interrogatories insufficient, Opposer’s motion granted. Opposer’s motion to test the sufficiency of applicant’s responses to admission requests at issue is granted to the extent that applicant must serve amended answers to multiple requests.

91200192

06/06/2012 PROCEEDINGS RESUMED

N

Applicant moved to dismiss pursuant to FRCP 12(b)(6). Applicant’s motion to dismiss denied as to opposer’s claim of priority and likelihood of confusion. However, Opposer’s claim of deceptiveness under Sect. 2(a) is stricken.

91201700

06/04/2012 PROCEEDINGS RESUMED

N

Opposer’s motion to compel granted. Applicant ordered to “(1) serve amended responses without objection to opposer’s first set of interrogatories and first set of document requests; (2) select, designate and identify the items and documents, or categories of items and documents, to be produced without objection in response to opposer’s first set of document requests; and (3) notify opposer that the selection, designation and identification of such items and documents has been completed.” Requests for admissions are deemed admitted; while Applicant submitted late responses, it did not show any excusable neglect.

91204116

06/01/2012 PROCEEDINGS RESUMED

N

In response to notice of opposition to the mark EVIL DEAD, Applicant moved to strike the entire notice of opposition under FRCP 8 because it was not a “short and plain” statement, but 61 pages. Motion to strike granted in part: “A review of the pleading shows that it consists of redundant and repetitive allegations as well as immaterial, irrelevant or impertinent matter.”
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