Recent TTAB decisions and activity of note (June 11-17, 2012)

Between June 11 and 17, 2012, the TTAB issued numerous decisions. None were precedential – but one modified an earlier precedential decision to redact, upon an unopposed request from a party, several sentences from the Opinion.

There were a variety of interesting and important rulings during this period, including:

– Google successfully opposed SOOGLE

– Applicant’s prior registration on the supplemental register provided no help getting the mark re-registered and overcoming a generic refusal

– Petitioner Levi Strauss & Co has appealed to the CAFC the denial of its petition to cancel the jeans pocket design mark of Abercrombie & Fitch Trading Co.

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

91198926

06/11/2012 PLAIN`S MOT. FOR SUMMARY JUDGMENT GRANTED N Google’s motion for summary judgment in its Opposition to SOOGLE for “Arranging and coordinating travel arrangements for individuals and groups, namely … Online trip and travel reservations services ….” granted under Section 2(d). GOOGLE mark found to be famous and coined, and the services at least related.

91199515

06/11/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED N Opposer’s moved for summary judgment on grounds of priority and likelihood of confusion denied; Board found genuine issue of material fact regarding the marks’ commercial impressions (POLLO CAMPERO v POLLO CAMPESINO).

77582484

06/11/2012 BOARD`S DECISION: AFFIRMED N Application for THE COLLECTORS TABLE for “Business consultation in the field of sales and marketing of alcoholic beverages; import agency services for others in the field of alcoholic beverages; promoting and marketing the alcoholic beverages of others; alcoholic beverage procurement services for others; and distributorships in the field of alcoholic beverages” refused under Sections 1 and 45 for specimens which fail to show use of the mark for the identified services. The refusal was affirmed; the Board found the specimens did not relate to the identified services. “[W]hen a service mark is used in advertising the services the specimen must show an association between the mark and the services for which registration is sought in order to comply with the statutory requirement that the mark “identify and distinguish the services.””

77650780

06/11/2012 BOARD`S DECISION: AFFIRMED N Refusal of WHO’S WHO ONLINE for an online directory as generic under Section 23 affirmed: “The record shows that WHO’S WHO is a unitary generic term.  The record also establishes that the term ONLINE is simply a designation for a type of information available on the Internet, and lacking source-identifying capability.”  And “Thus, Gould-type evidence showing the generic nature of the two terms is sufficient to establish that the separate terms retain their generic significance when joined to form a compound that has “a meaning identical to the meaning common usage would ascribe to those words as a compound.”” Applicant’s prior registration of the mark on the Supplemental Register irrelevant: “While it is unfortunate that applicant’s prior registration was not maintained, our precedent is clear; a cancelled or expired registration has no probative value other than to show that it once issued…. Applicant is not entitled to favorable treatment because it inadvertently allowed its prior registration to be cancelled.”

77902174

06/15/2012 BOARD`S DECISION: AFFIRMED N Refusal of BACKYARD CLASSIC for patio furniture under Sect. 2(e)(1) as merely descriptive (with “CLASSIC” disclaimed) affirmed. Three third party registrations for similar goods featuring disclaimers of “BACKYARD” given weight by the Board: “Although small in number, these third-party registrations are illustrative of the fact that the Office recognizes the term “backyard” as merely descriptive when used in connection with patio furniture.”

77954823

06/15/2012 BOARD`S DECISION: AFFIRMED N Application for WHO’S CALLING ME? for application service provider services related to phone call tracking refused as likely to be confused under Sect. 2(d) with registrations for WHO’S CALLING and Who’s Calling logo for software goods and services in the field of marketing and including measuring calls. Goods and services found to be overlapping and sold in same channels of trade; addition of ME? “does very little to distinguish the marks.” Refusal affirmed.

78767343

06/12/2012 BOARD`S DECISION: AFFIRMED N Application for SK (for alarm products,  variety of goods made of metal, and more) refused under section 2(d) as likely to be confused with three registrations for SK & Design owned by one registrant (for tool repair, metal boxes, alarm and camera products, and more). Marks found very similar; goods found overlapping, except in Classes 17 and 20. Refusal affirmed in Classes 6, 7, 8 and 9, will be allowed to proceed to registration in Classes 17 and 20.

85127067

06/14/2012 BOARD`S DECISION: AFFIRMED N Application for FIREBIRD X for guitars refused  under Section 2(d) as likely to be confused with registration of FIREBIRD for “electric audio equipment, namely, musical instrument sound processors comprising one or more of the following components, namely, amplifiers, equalizers, and speakers.” Dozens of third party registrations featuring goods of applicant and of registrant were submitted by Examining Attorney; goods found to be related and complementary. Refusal affirmed.

85152285

06/14/2012 BOARD`S DECISION: AFFIRMED N Refusal of ANNABELLE’S NATURAL ICE CREAM & Design (for ice cream) under Section 2(d) as likely to be confused with registration of ANNABELLE’S (for candy) affirmed. ANNABELLE’S found to be dominant part of Applicant’s mark and goods found to frequently emanate from same source (based on evidence from 5 third party registrations and 3 websites). Applicant’s ownership of prior registration for same mark and same goods irrelevant (“While it is unfortunate that applicant’s prior registration was not maintained, our precedent is clear; a cancelled or expired registration has no probative value other than to show that it once issued  and is not entitled to any of the statutory presumptions of Section 7(b) of the Trademark Act.”)

92049913

06/05/2012 APPEAL TO CAFC N Petitioner Levi Strauss & Co has appealed to the CAFC the denial of its petition to cancel the jeans pocket design mark of Abercrombie & Fitch Trading Co. due to issue preclusion.

92054315

06/12/2012 SUSPENDED PENDING DISP OF CIVIL ACTION N Respondent’s motion to suspend proceeding pending civil action granted. Note that civil action was filed after Petitioner’s motion for summary judgment was filed.

92053694

06/11/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT N Parties granted one final suspension; Motion for Summary judgment was filed more than 5 months ago and due to extensions no response filed yet. “[N]o further  extensions to respond or suspensions will be granted until respondent’s motion for summary judgment is decided or withdrawn.”

92054736

06/12/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Respondent moved to dismiss petition for cancellation for lack of standing and failure to state a claim upon which relief may be granted. Petitioner then filed an amended Petition substituting corporation for individual as petitioner. Board permitted the substitution, finding no prejudice to Respondent. Petitioner’s amended claims found to be sufficiently pleaded and motion to dismiss denied.

92055365

06/12/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Motion to dismiss for failure to state a claim grated regarding grounds of abandonment (“Petitioner has failed to allege a required element of a claim of abandonment of a mark, namely, that respondent has abandoned use of the mark with intent not to resume use.”)

91199269

06/12/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Applicant moved to strike affirmative defenses in Opposer’s answer to counter-claim. Motion granted in part:“The equitable defenses of laches and acquiescence are not available against claims of abandonment, as well as genericness, descriptiveness, fraud, and functionality… Moreover, the Board has long held that the equitable defense of estoppel is not available against the claim of abandonment because there exists a broader public policy interest in removing abandoned registrations from the register.”

“As for the defense of unclean hands, the Board finds opposer’s pleading of this bare legal conclusion to be insufficient to give applicant notice of the basis for the  defense.  “The elements of a defense should be stated simply, concisely, and directly” and “should include enough detail to give the plaintiff fair notice of the basis for the defense.”  TBMP §311.02(b) (3rd ed 2011).”

92055117

06/14/2012 TRIAL DATES RESET N Respondent’s motion for an extension of time to answer granted, and petitioner’s motion for default judgment denied.

91190109

06/12/2012 BOARD`S DECISION: DISMISSED N Applicant: IT’S HIP TO BE GREEN for stickers and other goods in Class 16. Opposer: IT’S HIP TO BE GREEN registered for shirts and hats and used for online retail and other goods/services.  Opposer had no records of sales prior to 2008 due to a hard drive crash and failed to establish priority of use for stickers and bumper stickers, despite showing priority on other goods and services. Evidence of record was not sufficient to establish the Applicant’s goods are related to those goods/services for which Opposer could establish priority. As a result, the Opposition was dismissed.

91178856

06/15/2012 BD`S DECISION: DISMISSED W/ PREJUDICE N Opposer owns registrations for BLUE NOTE for restaurant and cabaret services. Applicant seeks registration of BLUENOTES & design for variety of goods and services. Opposer failed to take or introduce any testimony or to submit a brief. While the parties were conducting settlement negotiations even after the testimony period and it is clear that Opposer has not lost interest in the proceeding, Opposer’s failure to submit any testimony or to seek a timely extension (it did not seek extension until a year after it closed). “[T]he reason for opposer’s delay, which was within its reasonable control, and the delay’s length and impact on this proceeding establish that opposer’s failure to take testimony or submit evidence during its testimony period is not excusable.” As a result the motion of extension is denied and cross motion to dismiss is granted and Opposition dismissed with prejudice for failure to prosecute.NOTE: Application filed in 2003. Opposition instituted in August 2007.

91152248

06/12/2012 BOARD`S ORDER Y Amendment of precedential decision: Per Opposer’s uncontested motion, the Board removed several sentences from the prudential opinion issued February 16, 2012.

91203113

06/14/2012 D`S MTN TO CORRECT DATES DENIED; TRIAL DATES RESET N Motion to suspend denied: “ the Board generally will not approve a motion or stipulation to suspend or extend time for settlement negotiations that are filed between the filing of an answer and the deadline for the settlement and discovery planning conference “precisely because the discovery conference itself provides an opportunity to discuss settlement.””

92055403

06/12/2012 P`S MOT. FOR RECONSIDERATION DENIED; PROCEEDINGS REMAIN SUSPENDED PENDING OUTCOME OF CIVIL ACTION N Motion for reconsideration of order suspending the cancellation pending outcome of civil action is denied.

91201360

06/12/2012 PROCEEDINGS RESUMED N Applicant moved to dismissed under Fed. R. Civ. P 12(b)(6) for failure to state a claim.  Motion dismissed as the claims were properly pleaded.
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