Recent TTAB decisions and activity of note (7/9-7/15/2012)

Between July 9 and July 15, 2012, the TTAB issued one precedential decision (regarding a 2(a) false suggestion claim) and several other interesting decisions:

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

– Zynga’s request to extend discovery in a proceeding by 180 days was denied;

– a consented extension was denied because the parties failed to show any activity regarding settlement discussion since the previous extension grant;

– a deposition upon written questions of an involuntary witness was denied on notice alone; party must obtain a subpoena;

– a challenge to the famous “goats of a roof” registration was dismissed with prejudice;

– a motion to disqualify counsel of the adversary was denied in a detailed 17 page opinion authored by Chief Administrative Trademark Judge Rogers;

Below is a full rundown of the activity of note from the TTAB during this period. Decisions I found particularly interesting are highlighted in bold.

Visit http://ttabvue.USPTO.gov to view any of the proceeding and documents.

Proceeding #

Date

TTAB Disposition

Precedent?

Notes

91200237

07/10/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED N Applicant’s moved for summary judgment that there is no likelihood of confusion, based in part on deemed admissions made when Opposer failed to respond to requests for admission. Opposer responded by request and extension of time to submit its admission responses, noting health issues of its principal. Opposer’s motion to withdraw its deemed admissions and accept its late-filed response to requests for admission was granted, and as a result the motion for summary judgment was denied.

77600412

07/11/2012 BOARD`S DECISION: AFFIRMED Y Board affirmed refusal based on false suggestion of association with BENNY GOODMAN pursuant to Section 2(a). Application was for BENNY GOODMAN COLLECTION THE FINEST QUALITY & Design for fragrances, cosmetics, leather good, and clothing (“COLLECTION and “THE FINEST QUALITY” disclaimed). “In view of the facts that applicant’s mark is a close approximation of the name of the musician Benny Goodman, that applicant’s mark points uniquely and unmistakably to him, that Benny Goodman has no connection with applicant’s business, and Benny Goodman is sufficiently famous that a connection with him (or his estate) would be presumed if applicant’s mark were used in connection with fragrances and cosmetics, leather goods, and clothing, we find that applicant’s mark falsely suggests a connection with Benny Goodman.”

77906902

07/11/2012 BOARD`S DECISION: AFFIRMED N Application for STAYS FLUFFY LONGER for pillows, featherbeds, comforters, and blankets refused as merely descriptive under Section 2(e)(1). Finding “fluffy” descriptive and “stays” and “longer” used in a laudatory manner, Board affirmed refusal.

85059377

07/12/2012 BOARD`S DECISION: AFFIRMED N Application for MY MUSIC SKOOL for retail and education services in the field of music (“MUSIC SCHOOL” disclaimed) refused under Section 2(d) as likely to be confused with MY KIDS MUSIC SCHOOL for music education services (“KIDS MUSIC SCHOOL” disclaimed). Refusal affirmed, finding services identical and marks similar: “The misspelling of SKOOL in applicant’s mark is an insignificant difference from that of registrant’s mark, because SKOOL and SCHOOL are pronounced the same and the substitution of the letter K for the letters CH does not materially change the appearance of the word or impart it with any different meaning.”

NOTE: Application allowed to proceed for services that were not part of the refusal (franchising).

85120587

07/13/2012 BOARD`S DECISION: AFFIRMED N Applicant for RED CARPET RED VELVET CAKE for “frozen concoctions” refused under Section 2(d) as likely to be confused with RED CARPET CUPCAKE for “bakery goods.” Finding dominant element – RED CARPET – identical and the goods related and overlapping channels of trade, Board affirmed. “However, the record does show a relationship between these goods that goes beyond the mere fact that they are both dessert items. The web page excerpts submitted by the examining attorney show other ice cream companies selling ice cream with red velvet cake pieces folded into the ice cream.”

85143186

07/10/2012 BOARD`S DECISION: AFFIRMED   Application for 24 HR LOCKOUTS for ““locksmithing, namely, opening of locks” refused under Section 2(e)(1): Board affirmed: “We find that when combined the terms 24, HR and LOCKOUTS do not lose their descriptive significance and, in fact, make clear that applicant provides lockout services on a 24 hour basis.”

85320832

07/10/2012 BOARD`S DECISION: AFFIRMED N Application for OIVA for cutlery, utensils, and other kitchen items refused as merely descriptive under Section 2(e)(1). OIVA means “excellent.” Applicant argued that the term is also the name for a place or a person. Board found that Finnish speakers in the US would translate OIVA as the laudatory term “excellent,” and affirmed the refusal.

92055517

07/10/2012 SUSPENDED PENDING DISP OF CIVIL ACTION N Respondent moved to suspend pending a civil action, and Board granted motion. Board sua sponte notes that fraud claim is insufficiently pled and descriptiveness claim is time-barred.

91190703

07/09/2012 SUSPENDED PENDING DISP OF CIVIL ACTION N Applicant moved to remove suspension. Inasmuch as the civil action is not final, resumption is premature.

91201118

07/10/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT N Opposer (Zynga, Inc.) moved to extend discovery by 180 days. Applicant responded and moved for partial summary judgment. “[A]pplicant contends that opposer has failed to diligently pursue discovery in this case and has therefore failed to show good cause for the extension sought,” and board agreed: Opposer has not established good cause for the extension sought. Motion to extend discovery denied; proceeding suspended pending Applicant’s motion for partial summary judgment.

91189069

07/09/2012 TRIAL DATES RESET N Opposer moved to reopen its testimony period. But because delay was within Opposer’s control, “opposer’s inaction in presenting its case was unwarranted.” Motion denied.

91197274

07/09/2012 TRIAL DATES RESET N Consented motion to extend discovery by 3 months granted only in part; parties had already served discovery: “Given the age of this case and the limited discovery remaining to be taken, a three month extension of time is unjustified.  It is now time for the parties to finish discovery and move to trial expeditiously.” Board issued stern warning regarding additional extensions: “unless additional claims on which additional discovery is required are added to this proceeding, the discovery period may very well close as scheduled herein, even if both parties stipulate to further extend the discovery period.  In fact, from this point forward, in the event either party seeks any further extension or suspension, it must request it in a teleconference between the Board and both parties, failing which any further request to extend or suspend will be denied.”

91198619

07/10/2012 TRIAL DATES RESET N Opposer filed a “stipulated” motion to reopen discovery and reset trial dates. A month later, Applicant filed its opposition to reopening discovery. The motion to re-open discovery was denied, reopening of Opposer’s testimony  period(which was not contested) was granted.

91199621

07/09/2012 TRIAL DATES RESET N Applicant move to re-open discovery and extend trial dates. Applicant claimed that it had difficulties in part due to issues with its U.K. counsel. Board found that applicant did establish “excusable neglect” and denied the motion.

91200922

07/09/2012 TRIAL DATES RESET N Opposer filed a notice of testimony deposition upon written questions of Applicant’s co-owner; Applicant filed a motion to take the deposition orally. But “where a party wishes to take the testimony of an adverse party, or an official or employee of an adverse party, and the proposed witness is not willing to appear voluntarily to testify, the deposition may not be taken on notice alone.” “Applicant’s motion clearly indicates that Dr. Berry is unwilling to appear voluntarily for a testimony deposition upon written questions.  Thus, the noticed deposition upon written questions cannot be taken on notice alone.  Opposer indicated during the telephone conference that it had not Opposition obtained a subpoena compelling Dr. Berry’s attendance for a testimony deposition upon written questions.  Accordingly, the motion to quash is granted.”

91204340

07/11/2012 TRIAL DATES RESET N Opposer moved for leave to file an amended notice of Opposition granted as motion was brought before close of discovery. As the amended notice added two new claims but dropped the original claim of priority and likelihood of confusion without consent, that claim is dismissed with prejudice.

91197470

07/10/2012 BD`S DECISION: DISMISSED W/ PREJUDICE N Opposer moved to reopen its testimony period. Motion denied: “We find that opposer’s failure to take testimony was not the result of excusable neglect.” “[O]pposer’s failures to conduct the discovery conference, make initial disclosures, conduct discovery, to make expert and pretrial disclosures, and to enter testimony were entirely within opposer’s control” and Opposer never sought so much as a suspension or extension

92054059

07/12/2012 BOARD`S DECISION: DISMISSED W/ PREJUDICE N After the Board previously dismissed the original Petition for Cancellation without prejudice for failure to state a claim, the Petitioner filed an amended petition and the Registrant again moved to dismiss. This time around, the Board against granting motion to dismiss and dismissed the Petition with prejudice: “petitioner’s new allegations, and the amended petition’s allegations as a whole, are insufficient to adequately allege petitioner’s standing… [S]tanding requires a direct and personal injury, and does not provide a right of redress to those who may be only tangentially and speculatively affected by a registration.”

NOTE: Goats on a roof!

92052197

07/12/2012 BOARD`S COMMUNICATION N Respondent moved to “re-strike” three declarations from testimony that Board has already ruled stricken; Petitioner had now sought to attach them to testimonial depositions. Respondent also seeks to strike portions, but not the entirety, of Mr. Clary’s and Mr. Quam’s testimony because respondent argues that the portions at issue constitute “expert” testimony prohibited by the Prior Order.  Motion to re-strike the declarations granted, “And to the extent that any witness testified in an otherwise admissible oral testimony deposition directly about any previously-stricken declaration, that portion of the witness’s testimony is also hereby stricken.” Issue of whether the particular testimony was expert testimony or law testimony is deferred until final decision.

91197048

07/12/2012 BOARD`S COMMUNICATION N Board clarified an earlier ruling to note that the doctrine of claim preclusion (res judicata) as well as doctrine of issue preclusion or collateral estoppel are “inapplicable to any of the factual determinations that opposer seeks.”

91203343

07/12/2012 BOARD`S COMMUNICATION N Applicant moved for relief from judgment under Fed. R. Civ. P.

55(c) and 60(b), fifteen days after a default was entered against it. Board deferred a decision by giving Applicant a chance to explain his reason for failing to respond to the notice of default and to file an Answer:

“We are mindful that default judgments for failure to timely answer the complaint are not favored by the law, and that it is the policy of the Board to decide cases on their merits.  In view thereof, applicant is allowed until August 1, 2012 in which to (1) explain clearly, and in detail, his reasons for failing to file an answer or to respond to the motion for default judgment, including what he meant in his original motion by “erroneous letters,” and (2) submit an answer to the notice of opposition which complies with Rule 8(b) of the Federal Rules of Civil Procedure, and which shows that applicant has a meritorious defense.”

91198943

07/10/2012 MOTION FOR CORRECTED JUDGMENT; DENIED N Opposer moved for suspension pending its petition to the Director, or alternatively for a ‘corrected judgment’ amending the Board’s prior order denying summary judgment and denying a motion to amend.  Both motions denied..

92047154

07/12/2012 MOTION FOR SUSPENSION; DENIED N Respondent filed consented motion for continued suspension. But respondent did not provide enough information about progress of the negotiations, as noted in the Board’s previous order: “Specifically, respondent does not state that any of the recited activity occurred since the last motion.” Accordingly, motion denied.

91196894

07/10/2012 PETITION TO DISQUALIFY DENIED N Applicant filed motion for recusal of Opposer’s Attorney, Timothy Lockhart, and the firm of Wilcox & Savage on the alleged bases of “substantial and irreconcilable conflicts of interest.” Applicant submitted no evidence to support its motion.

In essence, Applicant’s argues two bases for disqualification:  1) that Mr. Lockhart and his firm previously represented Tidewater or the Association and the relationship between the Association and Tidewater equates to representation of Tidewater and 2) that Mr. Lockhart and his firm have a proprietary interest in the outcome of these proceedings. In a detailed 17 page decision by Chief Administrative Trademark Judge Rogers, the motion was denied.

91195102

07/12/2012 TELECONFERENCE ORDER RE P`S MTN TO COMPEL; TRIAL DATES RESET N Opposer filed combined motions to compel discovery response and for sanctions. Motion was granted as to a particular interrogatory seeking identity of the entity or entities which manufacture(s), distribute(s) and/or market Crafts’ goods in the United States.

91205276

07/11/2012 TRIAL DATES REMAIN AS SET N Respondent’s motion to dismiss was given no consideration as the motion did not contest the sufficiency of the pleading but rather attempted to argue their merits and was effectively a motion for summary judgment, which is premature before initial disclosures are made.

92051684

07/09/2012 PROCEEDINGS RESUMED N Proceeding had been suspended bending a civil action. The district court proceeding concluded, and the court’s “rulings do not address either use or registration of the parties’ marks, and do not prevent petitioner from bringing its claim of nonuse or respondent from defending its registration.”  Accordingly, the proceeding is resumed.

92054925

07/11/2012 PROCEEDINGS RESUMED N Respondent filed a motion to dismiss the amended petition to cancel under Fed. R. Civ. Pr. 12(b)(6). Motion dismissed.

92055549

07/10/2012 PROCEEDINGS RESUMED N Respondent moved to dismiss. Board found that Petitioner failed to alleged its standing for grounds of abandonment and genericness, and thus granted the motion. “[P]etitioner did not allege any facts regarding confusion between the parties’ marks nor did petitioner allege that it is using or has a prospective right to use the term EMPIRICAL CONCEPTS in the petition to cancel.  Petitioner simply alleged “inherent” standing based on its position as defendant in other oppositions or based on extensions of time to oppose that have been filed against its pending applications.” Board also found the genericness claim was not pleaded sufficiently and was incurable, dismissing it with prejudice: “Petitioner has failed to offer any facts which could be inferred to plausibly show that EMPIRICAL CONCEPTS is the central aspect of respondent’s auditing or accounting services or a type of auditing or accounting service.  The Board finds that these allegations are not plausible on their face, and any further opportunity to amend this claim would be futile.”
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