Recent TTAB Decisions and Activity of Note (7/2 – 7/8/2012)

Between July 2 and July 8, 2012, the TTAB issued several interesting decisions. None were precedential. There were a few interesting and important rulings during this period, including:

– Whether the  pleading of a claim under Section 14(3) of the Trademark Act for “misrepresentation of source” was sufficient;

– A motion to compel after the internet printouts provided by a party did not contain dates or URLs;

– Reversal of 2(d) refusal of DRILL WIZARD for “athletic training equipment, namely, computerized controls sold as a component of ball-delivery training machines for setting up and executing machine assisted training routines for ball sports” based on cited SHOT WIZARD mark for “basketball training devices, namely, devices for placing over basketball rims to aid in shot training;”

– Granting applicant’s Motion for Summary Judgment seeking dismissal of the opposition on the grounds of Claim Preclusion resulting from a prior civil action; and

– Consented amendment to drawing accepted, even though it moved position of word INSURANCE

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]:

Pro-ceeding No.

Date

TTAB Disposition

Prece-dent?

Notes

91204318

07/05/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED N Applicant moved to summary judgment on grounds of res judicata based on Board decision in a prior action between the parties.

Prior action: Opposition to Applicant’s NEUROGENESIS mark for water beverages; Applicant moved to dismiss under 12(b)(6); motion granted as conceded and opposition dismissed with prejudice. Current proceeding: Opposition to Applicant’s NEUROGENESIS HAPPY WATER mark for water beverages. Board found the doctrine of res judicata did not apply: different transactional facts in the current proceeding: “we find that applicant’s NEUROGENESIS mark, which was involved in the Prior Action, is a different mark, in terms of commercial impression, from NEUROGENESIS HAPPY WATER, the mark involved in this proceeding, and that the evidence of likelihood of confusion would not necessarily be the same in this case as it would have been in the Prior Action.”

91154103

07/02/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED N Parties filed cross-motions for summary judgment on issue of claim preclusion following a settlement that dismissed the civil action between the parties which has suspended the TTAB proceeding. Opposer’s motion denied and Applicant’s motion granted. ” Opposer now moves for summary judgment on the ground that the district court judgment was based on different transactional facts than are present in the opposition, and thus opposer is not barred from challenging applicant’s attempt to register its ULTRASHARP mark.  Applicant also moves for summary judgment, contending that opposer’s claims to the district court were based on allegations regarding the opposed ULTRASHARP application and opposer sought an injunction barring applicant’s registration, and since opposer agreed to dismissal of its claims with prejudice, opposer is barred from again challenging applicant’s ULTRASHARP application.”
“In sum, because the district court’s judgment dismissed with prejudice opposer’s claims regarding both applicant’s use and registration of its ULTRASHARP mark, opposer is barred by the doctrine of claim preclusion from bringing this action to oppose applicant’s application.  Accordingly, there are no genuine disputes as to any material fact and entry of judgment as a matter of law is appropriate.  Opposer’s motion for summary judgment is denied; applicant’s motion for summary judgment is granted; and the notice of opposition is dismissed.”

77663407

07/05/2012 BOARD`S DECISION: AFFIRMED N Refusal of I-BID LIVE (LIVE disclaimed) for online auction services under Section 2(d) with registration of “ibid motors” & Design for “online retail store services… and internet auctions” affirmed. Board found services similar and both marks dominated by same I-BID term and “Purchasers in general are inclined to focus on the first word or portion in a trademark, especially where the first word is followed by a highly descriptive term” “Further, to the extent that applicant’s argument based on an alleged overbroad recitation of services in the cited registration constitutes a collateral attack on the registration, we agree with the examining attorney’s assessment that such attack is impermissible.”

85171209

07/05/2012 BOARD`S DECISION: AFFIRMED N Refusal of SHAPE for painter’s masking tape under Section 2(d) with registration of SHAPE for paints and lacquers affirmed: marks identical; goods are complementary and sold together at stores as shown by examining attorney’s website evidence.

76699839

07/02/2012 BOARD`S DECISION: REVERSED N Refusal of DRILL WIZARD (DRILL disclaimed) for athletic training equipment under Section 2(d) with registration of SHOT WIZARD (SHOT disclaimed) for basketball training devices reversed: while goods related, there are differences; also no evidence to show they may emanate from single source; purchasers sophisticated; applicant’s products expensive. Marks not identical and additional connotation of WIZARD in applicant’s mark based on computer functions.

92055147

07/05/2012 SUSPENDED PENDING DISP OF CIVIL ACTION N Proceeding remains suspended pending appeal of civil action.

92051949

07/05/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Respondent failed to file Answer to amended petition to cancel. Respondent, acting pro se, has previously filed several tardy filings and/or filings without certificates of service, despite repeated warnings from the Board. While Board denied motion for default since Respondent has not indicated bad faith or complete disregard for the proceeding, it warned that if a proper and timely amended answer was not filed – with proper service – it will enter judgment against respondent.

92054934

07/02/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Respondent moved to dismiss for failure to state a claim under Fed. R. Civ. P. 12(b)(6) regarding claims of fraud and abandonment. Motion denied.

91181288

07/05/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Opposer moved to compel responses to multiple document requests and interrogatories, and to test the sufficiency of responses to requests for admission. Opposer’s motion to compel granted as to the majority of the requests. Opposer’s motion to test the sufficiency of RFA responses granted as to the majority of the requests.

91198266

07/03/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Consented amendment to drawing accepted (even though it moved position of word INSURANCE)

92052696

07/06/2012 TRIAL DATES RESET N Petitioner’s motion to compel denied without prejudice for lack or a good faith effort prior to the filing of the motions.

91201377

07/02/2012 BOARD`S ORDER OPPOSER IS ALLOWED 10 DAYS TO RESPOND N Applicant moved to dismiss claims of “(i) misrepresentation of source, (ii) fraud based on false first use dates, and (iii) fraud based upon nonuse at the time of filing of applicant’s application.” Opposer moved to strike Applicant’s affirmative defenses.

A claim of misrepresentation of source under Section 14(3) of the Trademark Act is a separate claim from fraud.  It pertains to situations where a mark is used to deliberately misrepresent that goods or services originate from the defendant when if act those goods or services originate from the plaintiff.  The term misrepresentation of source, as used in Section 14(3) of the Trademark Act, refers to situations where it is deliberately misrepresented by or with the consent of the defendant that goods and/or services originate from a manufacturer or other entity when in fact those goods and/or services originate from another party.” Opposer’s pleading of the claim found sufficient. Opposer’s motion to dismiss granted as to fraud claim; denied as to nonuse of some of the goods. Affirmative defense of ‘unclean hands’ stricken as “applicant has failed to set forth any allegations of conduct on the part of opposer that would constitute unclean hands.” Statement that applicant may rely on other defenses that ‘may become available’ also stricken

91205546

07/05/2012 BOARD`S ORDER TRIAL DATES RESET N Motion to amend notice of opposition granted; but several claims stricken as insufficiently pleaded; Opposer given leave to file a new amended notice of opposition.

92053461

07/06/2012 MOTION FOR SUMMARY JUDGEMENT DENIED; MOTION TO COMPEL DENIED N Respondent (ONE LOVE registration for restaurant services) moved for summary judgment and to compel against petitioner, which holds the rights to Bob Marley marks. In consolidated case, Respondent has opposed Petitioner’s application for ONE LOVE for music publishing and festival services. Finding genuine issues of material fact; Board denied the MSJ. Motion to compel denied as there was no evidence that moving party first made a good faith effort to resolve.

92053245

07/02/2012 MOTION TO COMPEL GRANTED IN PART/DENIED IN PART; PROCEEDINGS RESUMED; TRIAL DATES RESET N Petitioner moved to compel responses to multiple requests for production and interrogatories. Petitioner noted that web printouts produced by Respondent contained neither dates or URLs, “that respondent’s discovery documents are neither organized or labeled to correspond to the document requests nor organized as they are kept in the ordinary course of business; and that respondent’s document production appears to be based largely on the results of its attorney’s Internet search rather than a search of its records.”

“Respondent’s document production, as described by petitioners in their reply brief, indicates that respondent does not appear to have conducted the requisite thorough search of its records in preparing such production.” Respondent’s objections to discovery requests on grounds of vagueness, etc., were also overruled as inapplicable. Board granted motion and ordered respondent to conduct a thorough search of its records.

91169489

07/02/2012 MOTION TO COMPEL; DENIED; PROCEEDINGS RESUMED; TRIAL DATES RESET N Opposer moved to compel supplemental discovery responses and moved to exceed page limit requirement for briefing. Motion denied: “[Opposer] filed a 144 page motion to compel supplemental responses to sixty five disputed discovery requests, namely fourteen interrogatories (Nos. 1, and 3-15), and fifty-one document requests (Nos. 1-12, 14-17, 19-20, 27, 29-35, 38-57, 59-73).  The motion is largely single-spaced, and includes more than 300 pages of exhibits.” The Board thus denied the motion, but took both parties to task for their discovery behavior: “While FCC’s discovery requests were over-reaching in the extreme, it is clear to the Board that EFI made boilerplate objections and evasive and incomplete responses, and it is not clear to the Board that EFI has served plainly relevant and requested information.  The Board holds both parties responsible for ensuring that this proceeding goes forward in a more cooperative and productive manner.

92054337

07/05/2012 P`S CROSS-MOTION DENIED; D`S MOTION FOR SJ GRANTED N The parties cross-moved for summary judgment on the claim that respondent’s mark was abandoned. Respondent argued that an attack by Petitioner in a different opposition between the parties make its non-use excusable pending the outcome of that proceeding. Board agreed that the prior proceeding has some affect: “In the interest of fairness, any nonuse of the PHACET mark by Farmaco during the six-month pendency of TriZetto’s counterclaim seeking to cancel the PHACET registration in Opposition No. 91184047 should not be counted in determining whether there has been three consecutive years of nonuse.” But presumption of abandonment was rebutted: “Even if we were to assume that Farmaco’s activities with respect to its PHACET mark undertaken after the institution of the cancellation proceeding of this consolidated case do not constitute technical use of the PHACET mark in commerce, these activities certainly preclude any finding that Farmaco has abandoned all claims to its PHACET mark or that FARMACO has no intent to commence use of its mark in commerce.” Respndent’s MSJ granted and the petition dismiss (related consolidated petition will continue).

Note that reply brief which was over the page limit given no consideration –and attempt to amend it also given no consideration since it was after the reply brief deadline.

92048691

07/05/2012 P`S MOTION TO AMEND PETITION TO CANCEL; GRANTED N Petitioner moved to amend the 2nd amended petition to cancel to bring a claim of nonuse granted when petitioner because aware of possible nonuse of some of registrants goods during testimony.

92055444

07/03/2012 PROCEEDINGS RESUMED N Default set aside and motion for default denied.

92055588

07/06/2012 PROCEEDINGS RESUMED N Respondent moved to dismiss for failure to state a claim. Motion granted (with leave to amend): Petitioner failed to allege grounds sufficient for standing. (“Petitioner does not set forth, for example, the nature of its business and/or its business activities, the basis for its commercial interest in the mark, its status as a competitor of respondents, or the nature of its use or any specific goods and/or services on which it alleges use of WORLD CUP or formatives thereof.”) Petitioner’s abandonment claim also found insufficient.

91179460

07/05/2012 PROCEEDINGS RESUMED N Opposer moved to strike Exhibit B-X of applicant’s notice of reliance “on the ground that applicant has failed to state the general relevance of these exhibits in compliance with Trademark Rule 2.122(e). Motion granted to as to part of the exhibits because the NOR included no statement setting forth their general relevance: “Even if the third-party registrations submitted under notice of reliance are essentially redundant of third-party registrations submitted through applicant’s testimony, that notice of reliance should be in compliance with applicable rules.”

91204897

07/02/2012 PROCEEDINGS RESUMED N See 91204941, below: same disposition in related proceeding.

91204941

07/03/2012 PROCEEDINGS RESUMED N Applicant filed motion to dismiss for failure to state a claim under Fed. R. Civ. P. 12(b)(6). Board granted the motion (with leave to amend) as to claims of deceptiveness, mere descriptiveness, and fraud; and denied the motion as to claim of geographic descriptiveness.
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