Recent TTAB decisions and activity of note (7/16 – 7/22/2012)

Between July 16 and July 22, 2012, the TTAB issued one precedential decision and several other interesting decisions:

– REAL RUSSIAN found geographically deceptively misdescriptive for vodka (precedential);

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

91199182

07/16/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED N Opposer’s motion for summary judgment denied given dispute regarding Opposer’s alleged use of its marks. Applicant’s motion for partial summary judgment also denied.

91173963

07/20/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED N Following the conclusion of a civil proceeding between the parties dismissing Opposer’s claims of trademark infringement, Applicant moved for judgment on the pleadings on ground of res judicata, and Opposer moved for judgment on the pleadings on the grounds that application is stopped from obtaining a trademark on the opposed terms MINI-MELTS and MINIMELTS marks without the additional term MUCINEX.Board found parties’ cross motions for judgment on the pleadings inappropriate since both relied on matters outside of the pleadings, and treated them a motions for summary judgment. Board denied claim for res judicata: “Even if we assume that the parties are identical and that a final judgment on the merits in the civil action has been rendered, it is well-settled that a claim for trademark infringement is based on different transactional facts than those upon which an opposition to registration of a mark is based.” Board also refused claim of judicial estoppels as “the civil action was based on different facts from the present opposition, and the ground of judicial estoppel is therefore inapplicable to the extent that opposer seeks to preclude applicant from obtaining registrations for its involved marks that do not include the term MUCINEX as a prefix to those marks.”

77135323

07/20/2012 BOARD`S DECISION: AFFIRMED N Application for WETTECHNOLOGIES & Design (for rust removal; Particle blast cleaning machines; machine tools for water blasting, descaling, derusting, wet lapping, wet peening, slurry processing, and deburring; wet etching machines) refused without a disclaimer of WET TECHNOLOGIES. Applicant agreed to disclaim WET and TECHNOLOGIES, but not the phrase together. Applicant’s brief included a list of marks and registration numbers, which Board failed to consider because “a list is not an appropriate way to make third party registrations of record; copies of the registration records from the USPTO’s database should be submitted” and because it was untimely when submitted with the appeal. The fact that the disclaimer requirement was changed after the initial review by Examiner did not matter: while new requirements should only be raised in cases of “clear error,” consideration of whether there has been a clear error is at the discretion of the examining attorney and his supervisors, and can only be reviewed via a petition to the director. Board found both WET and TECHNOLOGIES descriptive and found nothing about the combination of the two to avoid a finding of descriptiveness, and thus affirmed the refusal.

NOTE: Board’s opinion is 37 pages long!

77203020

07/16/2012 BOARD`S DECISION: AFFIRMED N Application for MaxCL for life insurance underwriting refused under Section 2(d) as likely to be confused with two marks from same registrant: MAX and MAX & Design, both for underwriting of property and casualty insurance.

“CL” in applicant’s mark found not to have any significant meaning. Applicant provided chart of registrations in Class 365 featuring “max” but it was not entitled to any weight: Applicant did not attach the registrations or list the services; furthermore, many of the registrations are ‘dead.’ Applicant owns a registration for “MaxCL PRO” for very similar services (“PRO” disclaimed), but Board did not find that fact significant. Board affirmed the refusal as it found the marks similar in sound, appearance, meaning, and commercial impression, and the services related.

Note: reply brief filed 5/21/11; oral hearing 1/10/2012; opinion issued 7/16/12.

77701760

07/20/2012 BOARD`S DECISION: AFFIRMED N Application for PREVAIL for medical devices refused under Section 2(d) as likely to be confused with PEEK PREVAIL® for surgical implants. Board discounted evidence of several third party registrations for medical goods featuring PREVAIL, and discounted third party evidence of use: “Insofar as the evidence of actual use is concerned, we focus on a critical infirmity in applicant’s evidence, namely the absence of any information regarding the extent of use of PREVAIL by third parties.”Even accepting that purchasers are sophisticated, Board affirmed finding of likelihood of confusion.

Note: Appeal took two years: reply brief filed 5/5/11; oral hearing held 2/2/12; opinion issued 7/20/12.

77894876

07/16/2012 BOARD`S DECISION: AFFIRMED N Application by Zynga’s for CASINO WORLD for software refused under Section 2(d) as likely to be confused with CASINO WORLD® registered for dockside casino services. Board found “that a viable relationship exists between applicant’s online computer games playable over social network websites and registrant’s dockside casino services.” And as the marks are identical, Board affirmed the refusal.

77928717

07/18/2012 BOARD`S DECISION: AFFIRMED Y Applicant for REAL RUSSIAN for vodka refused as primarily geographically deceptively misdescriptive under Section 2(e)(3). “To the extent there would be any doubt that the primary significance of the word RUSSIAN used on vodka is a geographic location, the addition of the word REAL serves to underscore the meaning of geographic origin.” There was no dispute that the goods do not emanate from Russia and “the evidence of record here overwhelmingly supports a finding that Russia is extremely well known for vodka.” And as to materiality, “The evidence submitted establishes that vodka is an important product of Russia and that both the public in general, and vodka drinkers in particular, would be aware that Russia is well-known for vodka” As a result, refusal affirmed.

91202724

07/17/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Proposed consented amendment of applicant’s mark approved by the Board.

92051672

07/19/2012 TRIAL DATES RESET N Petitioner moved to compel responses to interrogatories and requests for production of documents, and to reset the discovery period for 120 days. Petitioner alleged that no documents were produced for many interrogs or document requests, and those that were produced were not identified by Bates numbers. Motion granted in part where respondent did not provide complete information or documents. If respondent has no documents responsive to a request in its possession or control, it must state so conclusively. For one document request, respondent order to produce “samples of ‘Cuban seed tobacco’ that Registrant uses in Registrants’ cigars bearing the mark HAVANA SUNRISE.” As to respondent’s claim that certain documents are in possession of its former counsel, Board ordered to submit a declaration to the Board with a full explanation of its request to former counsel and any rationale provided by that counsel, and it will then allow Petitioner time to request them via subpoena duces tecum.

92054767

07/18/2012 TRIAL DATES RESET N Parties’ consented motion to extend dates is granted in part; parties are ordered to conduct their discovery conference within 15 days.

91174169

07/18/2012 BOARD`S DECISION: SUSTAINED N Applicant filed 6 applications for VALENTINO RUDY & Design (IC 9, 14, 18, 24, 25, and 28) under Section 44(e). Valentino S.p.A. opposed on grounds of Section 2(d) based on its previously used and registred marks for VALENTINO, VERY VALENTINO, VALENTINO and “V” design, and VALENTINO GARAVANI and “V” design for clothing and related accessories. Board found the parties’ goods partly identical and the remainder related; and the marks highly related. Board also found Opposer’s mark arbitrary in long and continuous use, thus “commercially strong,” though it also found that several other entities use marks featuring VALENTINO. As a result, the Board sustained the oppositions.

91183352

07/17/2012 BOARD`S DECISION: SUSTAINED N Applicant moved for relief from final judgment under Fed. R. Civ. P. 60(b). Opposition was sustained due to discovery sanctions on July 1, 2009. Applicant brought this motion nearly 3 years later, and claimed that it was attorney’s neglect that led to entry of judgment against applicant. Fed. R. Civ. P. 60(c)(1) has a one year time limit and motion dismissed as untimely.

91186906

07/18/2012 BOARD`S DECISION: SUSTAINED N Applicant’s mark: Elektra & Design for “Retail stores featuring general consumer goods such as home appliances, electronics, electric appliances, furniture and household goods; and advertising, namely, the commercialization of goods such as home appliances, electronics, electric appliances, furniture and household goods, (‘715 application)and publicity, commercial business management, commercial business administration, office work (‘763 application). Opposer’s mark: “numerous ELEKTRA and ELEKTRA-formative marks, including the mark ELEKTRA (typed or standard characters), previously used and registered on the Principal Register for  prerecorded phonograph records, audio and video tapes, cassettes, and compact disks featuring entertainment.” Board found Opposer’s mark has achieved significant recognition, and found parties’ goods and services related, in party due to 8 used based registrations to be probative on the issue of the relatedness of the goods and services in the ‘715 application. Board sustained opposition to the ‘715 application, but denied it as to the ‘763 application given the differences in the goods and services.

91192293

07/17/2012 BOARD`S COMMUNICATION N Board convened a phone conference with the parties “to generate ideas about what the Board can do to make submission of evidence more efficient where large records may exist; to confirm to the parties that the Board did not view the parties as having elected accelerated case management (“ACR”) in this case; and to confirm the issues remaining for final decision.”

91203410

07/19/2012 BOARD`S COMMUNICATION N Applicant moved to compel the continued deposition of a witness. Motion granted – parties stipulated that 30(b)(6) witnesses could be deposed up to 12 hours each, the deponent’s had not yet completed 12 hours. Board blamed Opposer for the difficulty scheduling the deposition date. Parties also barred from filing unconsented motions without first discussing with interlocutory attorney: “The party seeking to file an unconsented motion must (i) discuss with the other party and agree on three alternative dates and times when a conference with the Board attorney could be held; (ii) arrange the conference with the Board and the other party; and (iii) during the conference, explain the circumstances warranting the filing.  If appropriate, the Board will authorize filing or addressing by phone the unconsented motion.”

91203833

07/18/2012 MOTION DENIED; TRIAL DATES REMAIN AS SET N Opposer (Zynga) moved to compel. Motion denied: party responding to requests is not required to produce documents with the responses, but rather “The responding party then “must either state that inspection and related activities will be permitted as requested or state an objection to the request, including the reasons.” Fed. R. Civ. P. 34(b)(2)(B).”

91204105

07/16/2012 MOTION DENIED; TRIAL DATES REMAIN AS SET N Applicant moved to suspend opposition pending civil action between Opposer and a third party in District Court. TTAB denied motion as the outcome of civil action will not have a bearing on the TTAB proceeding: “The third party plaintiff in the civil action does not seek cancellation of opposer’s pleaded registration, and whether or not the district finds a likelihood of confusion between the two marks will not affect whether the Board finds a likelihood of confusion between opposer’s and applicant’s respective marks.”

91200513

07/16/2012 MOTION TO CONSOLIDATE GRTD; TRIAL DATES RESET N Applicant (“MACWAGON & Design” for garden wagons) moved to strike two paragraphs from Opposer’s (McDonald’s) notice of opposition. Motion denied – statements will not prejudice Applicant and, to the extent they are vague, can be the subject of discovery.

92055306

07/19/2012 PROCEEDINGS RESUMED N Petitioner moved to strike paragraphs and affirmative defenses from the answer. Defendant’s denial of multiple paragraphs in the petition because they were “ambiguous and unintelligible as written” was stricken. Affirmative defenses of failure to state a claim and lack of standing are not real affirmative defenses. But since petitioner is not prejudiced by their inclusion, the motion to strike is denied as to those paragraphs. Board sua sponte noted that petitioner’s claim of false suggestion of a connection was not properly pleaded; leave to amend granted.

91204861

07/17/2012 PROCEEDINGS RESUMED N Opposer moved to strike many of Applicant’s affirmative defenses. Where Applicants “defenses” were statements raising factual issues related to the merits of Opposer’s claims, the motion was denied. Regarding defense of “fair use,” it does not belong in TTAB proceeding and motion is granted. Defenses alleging Opposer’s claim is barred by laches and acquiescence are stricken: “said defenses are not available to a defendant in an opposition proceeding.” Defenses of unclean hands, estoppel, and waiver were not set forth with factual bases and are stricken. Defenses of failure to state a claim or lack of standing stricken as the opposition pleading was sufficient.
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