Recent TTAB Decisions and Activity of Note (6/24 – 7/1/2012)

Between June 24 and July 1, 2012, the TTAB issued manydecisions. None were precedential. There were a few interesting and important rulings during this period, including:

– whether the use of a mark as a color name for paint is a trademark use;

– Appeal of a decision regarding Apple, Inc. and VIDEO POD to the C.A.F.C.;

– a finding the METRO LIVING & Design is not merely descriptive for real estate brokerage services;

– an extension sought so that, in part, counsel for the Los Angeles Dodgers could attend the MLB All-Star Game;

– a Notice of Appeal that was not really a notice of appeal;

– a motion to quash a deposition; and

– and to compel against UNDER ARMOUR granted with some colorful language from the Board

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

94002373

06/29/2012 BD`S DECISION: FAVORABLE TO APPLICANT N Concurrent use agreement with two excepted users accepted.

77555997

06/26/2012 BOARD`S DECISION: AFFIRMED N Refusal of GUARD-WRAP for “coatings and chemical compounds, namely, anti-corrosion and protective coatings for metal structures, pipes, piping, bridges, and aboveground and underground utility structures” under Sect. 2(d) as likely to be confused with GUARDWRAP for “barrier material, namely, flexible plastic sheeting, used in the construction industry to protect structures from wind and moisture” affirmed. The Board fond the marks virtually identical and the goods having a “viable relationship.” “We recognize that GUARDWRAP, as a suggestive mark, is not entitled to the broadest scope of protection.  However, the mark is at least entitled to protection against the registration of a virtually identical mark used on related goods.”

77861639

06/29/2012 BOARD`S DECISION: AFFIRMED N Application for MADETOORDER for “on-line design services for others in the field of personalized and custom design transfers, namely, text, pictures and graphics for imprinting on apparel” refused as generic and, in the alternative, if descriptive failing to demonstrate acquired distinctiveness. Board reversed the generic refusal finding the mark “describes how the services are rendered or performed, while providing no information as to what the services are, namely the provision of “design transfers . . . for imprinting on apparel.”  In other words, the mark does not refer primarily to the genus to which the services belong.” But board affirmed the finding of a lack of acquired distinctiveness under 2(f): “a bare statement of five years’ use is insufficient for us to conclude that the public has come to perceive applicant’s highly descriptive mark as an indication of source, rather than as a mere description of a feature or characteristic of the services.  The record does not reveal, for instance, the nature and extent of any advertising or promotional efforts applicant has made using the mark, the level of applicant’s sales under the mark, or applicant’s market share.”

77902194

06/26/2012 BOARD`S DECISION: AFFIRMED N Application for I/O ANYWHERE for “high density enclosures for computer servers and computer equipment” refused regarding disclaimer of “I/O.” Applicant’s argument that its products are storage vessels, not computer equipment failed: “We conclude that the term I/O is merely descriptive of a characteristic or use of applicant’s goods, and that the term must be disclaimed pursuant to Trademark Act § 6(a).”

77946129

06/26/2012 BOARD`S DECISION: AFFIRMED N Application for HAUT COZEES for clothing refused under Section 2(d) as likely to be confused with 3 registrations for COZEEZ for slippers, for pajamas, baby and newborn layette apparel. The Board affirmed as third party registrations submitted by examiner showed the goods to be related; and similarities of the marks outweighed the differences.

85267214

06/26/2012 BOARD`S DECISION: AFFIRMED N Application for DON’T CARE SPORTS WEAR for athletic apparel refused under Section 2(d) as likely to be confused with registration for IDC I DON’T CARE WEAR for clothing. Board affirmed finding the goods overlapping and found the marks similar, especially in commercial impression.

85309094

06/28/2012 BOARD`S DECISION: AFFIRMED N Application for POCKET HAT for hats (“HAT” disclaimed) refused under Sect. 2(e)(1) as merely descriptive. Applicant’s evidence of two expired registrations for POCKET HAT and POCKETHAT were not persuasive; Board affirmed refusal.

77809223

06/28/2012 BOARD`S DECISION: REVERSED N Refusal of application for candy bar configuration as functional reversed by TTAB. See:https://ttabulator.com/2012/07/02/ttab-finds-that-configuration-of-a-hershey-bar-is-registrable-trademark/

77967242

06/29/2012 BOARD`S DECISION: REVERSED N Application for MONTICELLO for paint refused on the ground that the mark serves solely as a color designation and does not serve a trademark function. Specimen submitted was “front and back of the paint card found at point of purchase display” and a point-of-purchase placard. Refusal reversed: “We find that consumers who receive this point-of-sale placard will perceive applicant’s use, through its licensee, of the term “Monticello” as a term used uniquely by applicant to identify and distinguish applicant as the source of that particular paint.”

85027087

06/29/2012 BOARD`S DECISION: REVERSED N Application for XTREME HEAT “cheese flavored snacks, namely, cheese curls” refused under Sect. 2(e)(1) as merely descriptive. “[A]pplicant introduced copies of over 100 third-party Principal Register registrations of marks incorporating EXTREME or XTREME for food and beverage products in Classes 29, 30 and 32; not one of the registrations shows either a disclaimer of the term or a claim of acquired distinctiveness of the term.” Refusal reversed: “We find that applicant’s mark XTREME HEAT falls on the suggestive side of the line.  The mark does not immediately describe any specific characteristic or feature of applicant’s snack foods with any degree of particularity.  At most, the mark is highly suggestive that the snack foods are very spicy.”

91176027

06/18/2012 APPEAL TO CAFC N Applicant Sector Labs, Inc. filed appeal to CAFC of decision sustaining opposition by Apple, Inc. to VIIDEO POD under 2(e)(1) and 2(d).

92054850

06/29/2012 SUSPENDED PENDING DISP OF CIVIL ACTION N Motion to suspend pending civil proceeding granted.

92054468

06/28/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT N Petitioner filed a motion to (1) dismiss the counterclaim of fraud under Fed. R. Civ. P. 12(b)(6) for failure to state a claim upon which relief may be granted; and (2) strike the three  affirmative defenses.  Motion to dismiss fraud claim granted: “Allegations of mere knowledge of another entity’s existence, and of that entity’s use of a mark, or allegations of a plaintiff’s own belief in and communication of its belief in its rights in a mark do not equate to a pleading of this necessary element.  A sufficient pleading of the third element must consist of more than a mere conclusory allegation that the defendant “knew” about a third party’s superior rights in the mark.” Affirmative defense of fraud stricken – must be raised as counterclaim. Affirmative defense of estoppel also stricken as respondent set forth no details regarding the claim. Affirmative defense seeking amendment of registration also stricken; proper procedure would be a motion to amend or to delete services from the registration.

91200347

06/28/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Opposer moved to dismiss the counterclaim for failure to state a claim under Fed. R. Civ. P. 12(b)(6). Motion granted: “it is not wholly clear to us what particular claim or claims applicant is alleging as the basis of his counterclaim” and “it appears that applicant has simply taken a “shotgun” approach to pleading in the hope that he can hit upon a claim.”

91202204

06/26/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Applicant’s proposed amendment to its identification of goods was not acceptable as it broadened the original ID and is indefinite.

92054457

06/25/2012 TRIAL DATES RESET N Respondent’s motion to set aside default grant; Respondent’s motion to consolidate denied.

91198063

06/28/2012 TRIAL DATES RESET N Opposer’s motion to compel granted in part as to several interrogatories and to the extent that Applicant must provide an English translation of all documents produced.

91200245

06/27/2012 TRIAL DATES RESET N Opposer’s motion to compel certain interrogatory responses, requests for document production, and to test the sufficiency of responses to requests for admission. Motion denied; Applicant’s responses found sufficient.

91202383

06/28/2012 TRIAL DATES RESET N Applicant’s motion to dismiss under 12(b)(6) for failure to state a claim denied. However, Board required Opposer to submit a new pleading: “while the substance of the likelihood of confusion claim is legally sufficient under Fed. R. Civ. P. 8(a), its form does not comply with Fed. R. Civ. P. 10(b).”

91203260

06/25/2012 TRIAL DATES RESET N Opposer sought reconsideration of the Board’s order granting Applicant’s motion to change the listed Applicant entity. Opposer’s alleged that the original Applicant entity did exist, despite Applicant’s contention that it does not. Motion denied as the evidence from Opposer appeared to refer to a different entity altogether.

91203612

06/26/2012 TRIAL DATES RESET N Parties stipulation for accelerated case review (ACR) procedures accepted

91204288

06/25/2012 TRIAL DATES RESET N Applicant’s motion to for leave to file a late answer is granted, and notice of default is set aside.

91204961

06/27/2012 TRIAL DATES RESET N In discovery conference including the interlocutory attorney, it was noted that Opposer’s claim of lack of bona fide intent was deficiently pleaded, as were several of Applicant’s affirmative defenses. Both parties given time to resubmit pleadings.

91185619

06/26/2012 BOARD`S DECISION: DISMISSED N Opposition to METRO LIVING (& Design) for real estate brokerage services on grounds that the mark is merely descriptive or primarily merely descriptive denied. “We acknowledge at the outset that this is a fairly close case.  After review of the record, we find that the record falls short of establishing, by a preponderance of the evidence, that METRO LIVING merely describes applicant’s real estate brokerage services.  Rather, we find the mark to be only suggestive.”[full disclosure: Erik M Pelton & Associates represented applicant in this matter]

91191848

06/26/2012 BOARD`S DECISION: SUSTAINED N Opposition to CORVUS & Design for wine based on prior use and registration of CORVO for wine. Opposer’s mark not treated as famous, but found to be strong. Goods found overlapping – even if channels of trade might be little different, the identifications are not limiting. Board sustained the opposition: “although the marks have some differences in appearance, when they are compared in their entireties the similarities outweigh the differences.”

91199900

06/29/2012 BOARD`S ORDER TRIAL DATES REMAIN AS SET N Opposer’s motion to strike applicant’s first and second affirmative defenses granted as conceded. Consented motion to extend the discovery conference deadline granted.

91172812

06/26/2012 BOARD`S ORDER TRIAL DATES RESET N Applicant moved to amend the identification of goods to delete certain goods and services. Opposer did not oppose the motion, provided the abandonment of the good/services is with prejudice and would result in judgment with prejudice entered against applicant with respect to the abandoned goods. Because Applicant did not consent to such a judgment, the motion to amend the goods and services is deferred until trial.

91193201

06/27/2012 BOARD`S ORDER TRIAL DATES RESET N Applicant moved to reopen the discovery period. Applicant’s motion based on the fact that opposer had filed to amend its pleaded registration under Section 7 after the close of discovery and had not advised applicant in any way. Board granted the motion, finding “that applicant has made the requisite showing of excusable neglect and that it is appropriate to reopen the discovery period for  approximately three months.”

91193904

06/29/2012 BOARD`S ORDER TRIAL DATES RESET N Board’s show cause order for Opposer’s failure to file a brief is discharged after Opposer responded in a timely manner. Applicant’s motion to reopen its trial period to conduct a deposition upon written questions granted.

91204016

06/28/2012 BOARD`S ORDER TRIAL DATES RESET N Opposer moved to strike applicant’s affirmative defenses; motion granted in part.  Applicant’s allegations regarding lack of bona fide use and/or uncontrolled licensing of Opposer’s pleaded marks constitutes a collateral attack, which is not permissible except as a counterclaim. Board also found that Opposer’s claims of dilution or false suggestion of a connection were not properly pleaded and Opposer given time to amend the Notice of Opposition.

91197307

06/26/2012 CROSS-MOTIONS FOR SUMMARY JUDGEMENT DENIED N Cross-motions for summary judgment denied. Marks: Opposer’s mark is CUP OF HOPE for coffee; Applicant’s mark is CAFÉ HOPE for coffee. “In this case, genuine disputes of material fact exist,  at a minimum, as to the similarities and public perception of the parties’ respective marks CUP OF HOPE and CAFÉ HOPE, including appearance, connotation, and commercial impression”

91198037

06/28/2012 DATES REMAIN AS PREVIOUSLY SET N Opposer moved for 2 week extension to respond to requests for admissions. “Opposer [Los Angeles Dodgers LLC] requests the extension because its in-house and outside counsel will be on vacation in the coming weeks and because its in-house counsel plans to attend, but apparently not to work during, the Major League Baseball All-Star game.” Extension granted, but Opposer cautioned regarding further delays.

91204521

06/30/2012 DISCOVERY CONFERENCE ORDER; AMENDED PLEADINGS DUE; TRIAL DATES RESET N Order following discovery conference between the parties and with interlocutory attorney notes that Opposer’s pleading of dilution, fraud, and false suggestion of a connection were insufficient. Opposer given 30 day to file amended pleading. Order also noted that Applicant’s Answer was also insufficient.

91190253

06/30/2012 D`S MTN TO COMPEL GRANTED IN PART, DENIED IN PART; TRIAL DATES RESET N Applicant’s motion to compel granted in part. Applicant entitled to information about the type of businesses its customers engage in. Motion denied as to Opposer’s request to “identify each document in Opposer’s possession that Opposer intends to rely on in this proceeding to evidence Opposer’s use of Opposer’s Mark on Opposer’s services prior to August of 2006.”  “Opposer does not need to identify in advance of trial the evidence it intends to present.” Applicant ordered to identity advertising or other agencies with which it has partnered to provide its services. “However, if such a response would be unduly burdensome, opposer may provide a representative sampling of the agencies/businesses, but opposer must also explain why complete response would be unduly burdensome.”

91201937

06/27/2012 BOARD’S ORDER TRIAL DATES REMAIN AS LAST RESET N Applicant’s notices of appeal found insufficient (no indication of service on the CAFC) and untimely.

92054069

06/28/2012 MOTION FOR SUMMARY JUDGEMENT DENIED Petitioner seeking to cancel registration for SKYDIVE ARIZONA for ‘providing instructions and training in parachuting and skydiving’ which registered under Section 2(f). Respondent moved for Summary Judgment and for Board to take judicial notice of court records from District Court proceeding between the parties. Motion moot as to some of the records since they are ‘official records’ and Board can consider them without taking judicial notice. Other records are authenticated and may be used for the Motion for Summary Judgment. Petitioner was not a party to the civil action; but argues that it is in privity with defendant in the civil action as it purchased the business of the civil action defendant; but because the agreement clearly separated petition from any trademark claims arising out of the former owners business and the civil action related thereto, board found “respondent is now contractually estopped from applying the doctrine of claim preclusion to petitioner.” “Inasmuch as respondent has not shown that petitioner is in privity with Mullins for purposes of the civil action, and petitioner has not shown that petitioner had an opportunity to litigate the issues in the civil action, neither the doctrine of claim preclusion nor issue preclusion from the civil action can be applied to this Board proceeding. In view thereof, the motion for summary judgment is denied.” Respondent’s motion to dismiss the petition for failure to state a claim granted (and Petitioner given leave to amend) where the petition does not include an allegation that the mark has not acquired distinctiveness: “when pleading that the mark is merely descriptive or primarily geographically descriptive, petitioner is required to allege that the mark has not acquired distinctiveness.”

91187023

06/25/2012 P`S MOTION FOR SJ DENIED IN PART; GRANTED IN PART; TRIAL DATES RESET N Opposer, based on a variety of MOUNTAIN DEW and DEW marks, moved for summary judgment on its 2(d) and dilution claims against CAN DEW for nutritional drink mixed ins Class 5 and fruit drinks and carbonated beverages in Class 32. Opposer’s mark found “exceedingly famous” based on sales and other evidence. Opposer’s “mall intercept” survey also considered. Motion for summary judgment on 2(d) claim granted as to Class 32; but denied as to Class 5 goods, for which Board found “that genuine disputes exist as to whether the parties’ goods, customers and channels of trade are similar or related.” Motion for summary judgment on dilution claim denied due to genuine disputes of fact.

91183673

06/29/2012 P`S MTN TO QUASH DENIED IN PART, GRANTED IN PART; SUSPENDED; TRIAL DATES RESET N Opposer Vanderbilt University moved to quash defendant’s notice of deposition and for a protective order; Applicant Vanderbilt Mortgage moved for an extension of discovery period. Opposer moved to quash deposition because it was the 2nd Rule 30(b)(6) deposition of Opposer and the notice featured the same subjects and topics as the prior deposition in a related opposition. Because the allegations and claims in the current proceeding are not identical to the prior proceeding, Board found the noticed deposition not improper; however, the Board order the parties to limit the scope of topics, and the Motion was granted in part, along with the motion for an extension of discovery.

92054016

06/27/2012 PROCEEDINGS RESUMED N Respondent moved for judgment as a sanction for petitioner’s alleged failure to comply with Board order. Prior order ordered petitioner to serve initial disclosures within 30 days; Petitioner served them late. Board denied the motion: “We do not find that any sanctions, let alone judgment, are appropriate.” While petitioner’s disclosures were late, Petitioner did respond to interrogatories on time.

92055302

06/29/2012 PROCEEDINGS RESUMED N Respondent moved to strike Paragraph 9 of the petition to cancel, which discusses prior litigation between the parties. Finding the allegations “may have a bearing upon the issues in this case,” the Board denied the motion.

91199243

06/28/2012 PROCEEDINGS RESUMED N Defendant’s motion to compel initial disclosures is granted. Petitioner’s motion to compel discovery responses denied as there was no proof of petitioner’s service of the any of the documents, or of Respondent’s receipt of them.

91199841

06/25/2012 PROCEEDINGS RESUMED N Opposer moved to compel. As to motion to compel initial disclosures, motion granted. Opposer’s motion to compel responses to certain requests for admissions and interrogatories granted.. Opposer’s motion to compel responses to document requests granted as no responses had been served: “Applicant must provide complete responses to opposer’s requests without objection.”

91200356

06/25/2012 PROCEEDINGS RESUMED N Applicant moved to dismiss under Fed. R. Civ. P 12(b)(5) for opposer’s lack of service of the amended notice of opposition. The amended notice of Opposition contained no proof of service. Applicant’s motion was untimely as it was filed two days after her answer. And the original notice of opposition was properly served.  Motion denied: “The fact that there is a subsequent defect in service of an amended notice of opposition does not invalidate or otherwise nullify a properly instituted proceeding.”

91200459

06/27/2012 PROCEEDINGS RESUMED N Applicant (pro se) moved for sanctions for opposer’s failure to participate in the discovery conference. Motion denied as both parties at least partially at fault: “we find that while opposer is not without blame in the failure to complete the required discovery conference, the imposition of sanctions in the form of judgment is not warranted at this time.” Board ordered a discovery conference be held with Board participation.

91202227

06/27/2012 PROCEEDINGS RESUMED N Applicant moved to compel responses to its interrogatories. Opposer had claimed the interrogatories total more than 75. Opposer’s claim that applicant did not meet and confer before the motion not well taken; as the party objection, opposer had an obligation to do more and be more specific regarding its objection.Opposer taken to task by the Board:

–          Opposer pleads ownership of 92 applications and registrations  “for UNDER ARMOUR and ARMOUR marks for if not everything, than many things under the sun.”

–          Opposer’s 15 page notice of opposition is accompanied by exhibits totally 597 pages.

–          “[U]nless and until opposer pares down its notice of opposition, the scope of discovery in this proceeding could justifiably be extensive, even though it appears that the vast majority of opposer’s pleaded marks and registrations are extremely unlikely to be relevant to any decision on the merits in this case.”

–          “Turning to how many interrogatories applicant served, opposer’s count — whether “at least 180” or “nearly 200” — is, if not disingenuous, unreasonable.”

–          For example, where applicant requests opposer to identify, in Interrogatory No. 12, “all inquiries, investigations, surveys, evaluations and or studies,” opposer counts this as 5 subparts, even though the words are essentially synonyms, a technique which is unfortunately commonplace (and likely employed by opposer on occasion)5 because parties all too often treat discovery as a method of inflicting pain, increasing costs, delaying, obfuscating and harassing, rather than obtaining relevant and necessary information, and parties anticipate their adversaries engaging in such nonsense during discovery.”

–          “[F]ailing to understand part of a request is not a basis upon which to refuse to respond to any of the request, and therefore opposer’s response to, for example, Document Request No. 3, is inappropriate.”

–          “[U]nless and until it pares down its notice of opposition such that only marks for beverage products are pleaded, opposer’s limitation of its responses to “beverage products” may be inappropriate.”

Applicant’s motion granted.

91202779 06/29/2012 PROCEEDINGS RESUMED N Applicant’s motion for judgment on the pleadings denied. Opposition claimed  nonuse.  Applicant’s assertion that it claimed fraud found moot as Opposer indicated in response that it claimed nonuse. Pleading of nonuse found sufficient.

91204016

06/28/2012 PROCEEDINGS RESUMED N Opposer’s motion to strike affirmative defenses granted in part. Granted as to: “failure to state a claim upon which relief may be granted;” “uncontrolled licensing;” and attack on opposer’s registration for lack of bona fide continued use. Board also found that Opposer did not properly plead dilution of false suggestion of a connection. Both parties granted leave to re-file pleadings.

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