Recent TTAB Decisions and Activity of Note (6/18 – 6/24/2012)

Between June 18 and 24, 2012, the TTAB issued numerous decisions. None were precedential, but one was on remand from the CAFC.

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

– As a discovery sanction, a party was prohibit from introducing evidence that it did not produce in discovery, and all of its documents produced will be treated automatically as authentic and admissible.

– In an new oppsoition by Motorola against Nextel’s “chirp” sound mark, Board found that neither claim nor issue estoppel prevented the claim, which is based on a different set of ‘transactional facts’ since it relates to telecommunications services, not phone goods that were at issue in prior TTAB proceeding.

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

91196412

06/20/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED

N

Opposer (COCO DELICE for chocolates) moved for summary judgment on priority and likelihood of confusion against Applicant’s COCO DELICES CHOCOLATERIE & Design mark for chocolates. Finding genuine dispute as to nature and extent of opposer’s common law rights and priority, as well as the strength of opposer’s mark, Board denied the motion.

77534583

06/20/2012 BOARD`S DECISION: AFFIRMED

N

Refusal of registration of SULFREEN for “building, installation and maintenance of industrial plants” in International Class 37; and “research and development in the field of chemistry, in particular in the field of sulfur recovery from sulfur-containing gases; services of an engineer; development, planning, construction design and technical project planning of industrial plants, devices and methods in the field of analytical chemistry and synthesis, as well as corresponding advice, namely, technical consulting in the technology field of sulphur-containing gases, in particular in the field of sulfur recovery from sulfur-containing gases; performance and evaluation of chemical analysis; performance and evaluation of chemical synthesis; issuance of technical expert opinions in the technology field of sulphur recovery from sulphur-containing gases” in International Class 42 for failure to submit proper specimens showing use of the mark with the applied-for services affirmed. “It is settled that if a term is used only as the name of a process it does not function as a mark. However, a term can be used as the name of a process and also function as a mark for services. That is to say, use of a term in connection with a process does not prevent such term from designating more than a process.” Here, the Board found that the “specimen does not display SULFREEN in such a manner that it would be readily perceived as identifying the source of the identified services.”

77671449

06/22/2012 BOARD`S DECISION: AFFIRMED

N

Application for JOHN SHOPE’S SINISTER INDUSTRIES for motorcycles, parts, and related services refused under Section 2(d) as likely to be confused with registration for SINISTER CYCLES for “retail store services featuring motorcycle parts and accessories.” Finding goods and services related and SINISTER arbitrary and strong; the Board likened addition of JOHN SHOPE to addition of a house mark, and insufficient to avoid confusion. Fame of application JOHN SHOPE irrelevant. Refusal affirmed.

77832668

06/18/2012 BOARD`S DECISION: AFFIRMED

N

Application for ADMEDIA for a variety of advertising services refused under Section 23(c) as generic. Board affirmed: The Examining Attorney’s evidence included 38 third party registraitions featuring disclaimer of “ad” and/or “media.” “Despite the minimal evidence of use of the compound term “admedia,” there is ample evidence to support the relevant public’s understanding of the term ADMEDIA to refer to the genus of services. “ “[T]he joinder of the words “ad” and “media” into a single term creates no additional meaning, impression or nuance other than the meaning associated with the individual words as used together. Viewers would recognize the mark as consisting of the separate elements AD and MEDIA

77921755

06/21/2012 BOARD`S DECISION: AFFIRMED

N

Application for MY SMILEKIDS refused for ““providing a website featuring information in the field of dental care; providing information in the field of dental care” refused under Section 2(d) as likely to be confused with registration of MYSMILE for “providing health information.” Board found services overlapping; marks similar and sound and appearance; and affirmed the refusal. Applicant’s registration of SMILEKIDS for same services did not help it overcome the refusal; “The focus of the analysis in this case must be on the mark applicant seeks to register, MY SMILEKIDS, and not on the other mark applicant already registered.”

85064187

06/21/2012 BOARD`S DECISION: AFFIRMED

N

Application for MAXWELL for leather furniture refused under Section 2(d) as likely to be confused with MAXWELL for fabric products and MAXWELL HOME & GARDEN for fabrics. Refusal affirmed: “In balancing the relevant du Pont factors in this case, we find that because the marks are identical and very similar, the goods are related, the channels of trade and the classes of consumers overlap, confusion is likely between applicant’s mark and the marks in the cited.”

85065751

06/21/2012 BOARD`S DECISION: AFFIRMED

N

Application for MUZZIE’S & Design for retail clothing boutiques refused under Section 2(d) as likely to be confused with MUZZYS & Design registered for clothing and for store and wholesale services featuring motorcycle parts and clothing manufactured by others.

Refusal affirmed. Applicant’s prior registration irrelevant: “Applicant also raises the argument in its brief that that its predecessor in interest previously owned a registration for the same mark for “retail clothing boutiques” which was inadvertently cancelled due to the failure to file a Section 8 affidavit. Applicant’s Brief, p. 3. Applicant contends that the marks coexisted on the register for over six years without any instances of actual confusion. We are not persuaded.”

Applicant’s cancelled registration cannot justify registration

of its current application.

85082505

06/21/2012 BOARD`S DECISION: AFFIRMED

N

Refusal of AMERICA’S FAVORITE for mustard under Section 2(d) due to likelihood of confusion with registrations of  AMERICA’S FAVORITE for “ketchup” and “sauces” from same owner. Refusal affirmed. Applicant’s prior registrations did not help its cause: “Cancelled or expired registrations generally have no evidentiary value, and certainly an applicant cannot claim a right to registration based on its prior ownership of cancelled or expired registrations.”

91199193

06/22/2012 SUSPENDED PENDING DISP OF CIVIL ACTION

N

Motion to Consolidate granted. Fraud claim in counterclaim is stricken as improperly pleaded. Because of excessive number of filings, one party was “ordered to telephone the Interlocutory Attorney prior to the filing of any further interlocutory motions, and seek permission for such filings.”

91192593

06/19/2012 TRIAL DATES RESET

N

 Applicant moved for relief from final judgment for failure to file an answer, contending that its failure to file a timely answer and respond to the notice of default was clerical and entirely inadvertent (Applicant’s counsel blamed his secretary for docketing errors.) Motion granted: “While counsel may have overrelied on his firm’s “safeguard procedure,” we do not find that the record demonstrably shows that counsel willfully defaulted.  Further, since default judgments for failure to timely file an answer are not favored by the law, we generally treat Rule 60(b) motions seeking relief from such judgments more liberally than motions seeking relief from other types of judgments.”

91170112

06/18/2012 BOARD`S DECISION: DISMISSED

N

On remand from CAFC after the appeals court affirmed the Board’s finding of no likelihood of confusion and no dilution and that Applicant’s mark is merely descriptive. However, the appeals court vacated “the Board’s decision solely on its finding of acquired distinctiveness” and remanded for further proceedings. The Board here found that Applicant’s mark has acquired distinctiveness: “We note that while applicant’s COACH mark is merely descriptive, it is not so highly descriptive that applicant has the burden to show a concomitantly high level of acquired distinctiveness.”

91187787

06/22/2012 BOARD`S DECISION: DISMISSED

N

Applicant’s mark: ARMORSTONE for “Clear and pigmented coatings used in the nature of paint; Glazes; House paint; Interior paint; Mixed paints; Paint for concrete floors; Paint primers; Paint sealers; Paint thinner; Paints; Paints and lacquers; Pavement striping paint; Epoxy coating for use on concrete industrial floors.” Opposer owns numerous registrations for STON- marks for epoxies and related good. Board first ruled the because the Application was under Section 1(a), merely checking a ground on the ESTTA cover sheet does not constitute properly pleading the ground. Opposer therefore only properly pleaded a claim under Section 2(d), but the descriptiveness claim was tried by implied consent. Board found the marks create different commercial impressions; the goods closely related; Opposer’s evidence fell short of showing fame; and dismissed the Section 2(d) claim. Board also dismissed the descriptiveness claim.

91195158

06/20/2012 BOARD`S COMMUNICATION

N

Applicant moved for relief from final judgment for failure to file an Answer. Motion denied: “In order to establish that relief from the default judgment is appropriate, applicant “must persuasively show (preferably by affidavits, declarations, documentary evidence, etc., as may be appropriate) that the relief requested is warranted for one or more of the reasons specified in Fed. R. Civ. P. 60(b).”  TBMP § 544 (3d ed. 2011).” “[A]pplicant provides no explanation as to why he neglected to respond or why he waited for a year to seek relief from judgment.”

91203482

06/20/2012 BOARD`S ORDER TRIAL DATES RESET

N

Consented motion to consolidate denied because the marks are not overlapping at all (HOMEWOOD RESIDENCE and a number of marks featuring THE HAMPTON).

92054391

06/21/2012 COURT`S DECISION; REMANDED

N

The CAFC, upon request from Respondent/Appellant, remanded to the TTAB so the Board can rule on his motion for relief from final judgment (a default) under Fed. R. Civ. P 60(b).

NOTE: Board already indicated in an order that “We would be inclined to grant respondent’s Motion for Relief from Final Judgment.”

91200355

06/18/2012 CROSS-MOTION FOR SUMMARY JUDGEMENT GRANTED

N

In opposition by Motorola to Nextel’s sound mark for telecommunication services, parties filed cross motions for summary judgment on the issue of res judicata and/or collateral estoppel. Board previously ruled that the “chirp” sound for two-way radios failed to function and for cell phones it was not inherently distinctive and had failed to acquire distinctiveness. The Board here ruled that claim preclusion did not apply: “the third element of claim preclusion is not met inasmuch as the instant opposition is not based on the same set of transactional facts that were before the Board in Opposition No. 91164353.  In that proceeding, the core issue before the Board (the issue which was not precluded by the decision in Opposition No. 91161817) was whether the sound had inherent or acquired distinctiveness as a mark with respect to Motorola’s “cellular telephones.”  The Board made no finding as to whether the sound had acquired distinctiveness as a mark as used in connection with any of Nextel’s services…[T]he Board did not rule with respect to whether the sound was inherently distinctive, or had acquired distinctiveness as a mark for Nextel’s services.” As for collateral estoppel/issue preclusion, the Board also found no preclusion of the current claims: “There is no identity of issues inasmuch as the issues resolved in Opposition No. 91164353 differ materially from those presented in the instant opposition.”

91200910

06/18/2012 MOTION FOR DEFAULT JUDGMENT; DENIED; TRIAL DATES RESET

N

Opposer moved for default judgment based on Applicant’s untimely answer filed without explanation. Motion denied: facts indicate delay was willful or the product of gross neglect.

91201549

06/18/2012 MOTION TO SET ASIDE NOTICE OF DEFAULT; GRANTED; TRIAL DATES RESET

N

Applicant moved to set aside notice of default. Applicant’s late answer was served on Opposer but was not properly filed with the Board. Motion granted: “the Board cannot infer either willful delay or gross neglect from applicant counsel’s mistaken belief that the answer was properly filed with the Board.”

91201070

06/21/2012 PL`S MOTION TO REOPEN; GRANTED

N

Opposer filed later response to motion for summary judgment, which Board construed as a motion to reopen opposer’s time to respond to the motion for summary judgment. Response filed just a few minutes past the midnight deadline. Motion granted: “The length of the delay is infinitesimal, and will have absolutely no impact on this proceeding.  And it appears that opposer has acted in good faith and applicant does not contend otherwise.”

91202073

06/18/2012 P`S AMENDED NOTICE OF OPPOSTION DUE THIRTY DAYS

N

Applicant moved to dismiss under 12(b)(6) for failure to state a claim. The notice of opposition consisted of the ESTTA form and a letter from Opposer. Motion granted regarding 2(a) claim and 2(d) claim; Board noted that 2(d) claim contain the proper elements but the form of the notice of opposition was lacking.

91200183

06/21/2012 RESPONSE DUE IN (20) DAYS

N

Competing motions to strike filed; Applicant seeking to strike assignment documents recorded by Opposer. Board declined to rule on the issue on the assignments, noting its power is regarding registrability and the validity of the documents would be an issue for trail. Opposer’s motion to strike dismissed as untimely as it came more than 25 days after the Answer. But Board reviewed the Answer anyways and noted that some claims alleged must be raised in a compulsory counterclaim and that one affirmative defense was insufficient.

92054730

06/18/2012 PROCEEDINGS RESUMED

N

Respondent moved to dismiss petition to cancel under 12(b)(6) for lack of standing. Because petitioner is a competitor of respondent, petitioner is a competitor “with a commercial interest affected by the registration, and the petition to cancel sufficiently sets forth allegations of standing and a ground for cancellation that, if proven, would entitle petitioner to judgment.  Accordingly, respondent’s motion to dismiss the petition to cancel is denied.”

91197005

06/20/2012 PROCEEDINGS RESUMED

N

Applicant moved to dismiss under 12(b)(6) for failure to state a claim. Motion denied.

91197661

06/21/2012 PROCEEDINGS RESUMED

N

Opposer moved for discovery sanctions. Board found many responses supplemented (per earlier Board order) but still insufficient. Board did not grant judgment as sanction but:“As an alternative to judgment, which we do not consider appropriate in the circumstances of this case, we grant opposer’s requested sanction prohibiting applicant’s introduction at trial of any information not provided in response to the Board’s order compelling discovery responses.” “If filed during trial by opposer, the Board will accept any documents produced by applicant as a result of this order as authentic and admissible. However, because those documents were improperly withheld from opposer, applicant is prohibited from using those documents at trial, either as an exhibit to a testimonial deposition or by notice of reliance.”

91198154

06/21/2012 PROCEEDINGS RESUMED

N

Opposer moved to compel discovery responses; motion granted as conceded.

91200806

06/19/2012 PROCEEDINGS RESUMED

N

Applicant moved to strike paragraphs from the amended Notice of Opposition, interpreted as a motion under Rule 12(f) and 12(b)(6). Motion to strike reference to Opposer’s Canadian registrations denied. Motion to Dismiss fraud claim as improperly pleaded granted.

91201858

06/18/2012 PROCEEDINGS RESUMED

N

Applicant moved to dismiss under Fed. R. Civ. P. for failure to state a claim. Opposer’s response was late and attempted to argue the merits and other matters outside the pleadings; Opposer’s brief ignored by Board. Motion granted: Opposer failed to allege standing or descriptiveness. Opposer given time to amend pleading.
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