Recent TTAB Decisions and Activity of Note (7/23 – 7/29/2012)

Between July 23 and July 29, 2012, the TTAB issued several precedential decisions and several other interesting decisions:

– the USPTO examining attorney reversed regarding a refusal based on the recitation of services

– disclaimer requirement for ARCADEWEB reversed even though Applicant has previously registered the wording on supplemental register

– motion to leave to amend to plead additional registrations owned by Petitioner denied

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 No.

Date

TTAB Disposition

Precedent?

Notes

77602145

07/23/2012 BOARD`S DECISION: AFFIRMED

N

Application for INFINI & Design for bicycles and related goods refused under Section 2(d) as likely to be confused with two marks from different owners: INFINITE® for bicycles and related goods and INFINITY® for luggage and sport bags. Goods overlap; marks found highly similar: Board affirmed refusal.

77779284

07/23/2012 BOARD`S DECISION: AFFIRMED

N

Refusal of BABY GUIDE for printed guides and website related to parenting refused as generic under Section 2(e)(1). Refusal affirmed.NOTE: Late filed evidence from Applicant was considered by the Board because Examiner did not object to it and addressed it.

77795412

07/26/2012 BOARD`S DECISION: AFFIRMED

Y

Application for “aCU” for dietary supplements refused under Section 2(a) as deceptive, and alternatively under 2(e)(1) as deceptively misdescriptive as to CU. ‘CU’ found to be abbreviation for ‘copper’, and that the presence of copper would be material to the decision to buy supplements, and as a result board Affirmed.

 85164601

07/26/2012 BOARD`S DECISION: AFFIRMED

N

Application for INTELLIGENT QUARTZ for watches refused a merely descriptive. Applicant’s finding of 3 cancelled registrations for the same mark for watches on the principal register without a finding of acquired distinctiveness was no help. Board affirmed refusal, finding: “consumers and prospective consumers viewing the mark INTELLIGENT QUARTZ as applied to watches will understand the mark to mean that the watch contains a quartz component controlled by a computer chip.  The three websites advertising applicant’s watches corroborate this finding of fact.”

85131427

07/24/2012 BOARD`S DECISION: REVERSED

N

Application for INVENI for computer software and entertainment and educational services was refused for failure to provide a sufficiently definite recitation of the services in Class 41 pursuant to 37 C.F.R. Sect. 2.32(a)(6). Board found Applicant’s identification language sufficiently definite and reversed.

85134539

07/27/2012 BOARD`S DECISION: REVERSED

Y

Application for ARCADEWEB & Design for online advertising services refused registration unless Applicant disclaimed ARCADEWEB. Prior registration by Applicant for ARCADEWEB in standard characters on the Supplemental Register, but Examining Attorney only raised for the first time in its brief the argument that Applicant had admitted the terms was merely descriptive in obtaining the supplement registration. Board noted this was not good practice. As to the current application, board found that “Registration on the Supplemental Register is prima facie evidence that, at least at the time of registration, the registered mark was merely descriptive,” “it is troubling that the examining attorney never put applicant on notice that the examining attorney was treating the Supplemental Registration as evidence in support of her position, or that applicant had options to address the prima facie evidence of the Supplemental Registration.” As a result, Board found that the examining attorney had not met her burden and the refusal was reversed.

92053659

07/26/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT

N

Petitioner moved for leave to amend its petition to add a fraud claim and to reopen discovery. Petitioner’s reply brief was stricken as more than 10 pages long. Petitioner’s proposed amended claim of fraud was found legally insufficient (“Pleadings of fraud made “on information and belief” when there is no separate indication that the pleader has actual knowledge of facts supporting a claim of fraud are insufficient.” It also failed to allege any intent.) Petitioner’s motion thus denied as futile.

91198438

07/26/2012 RESPONSE DUE 30 DAYS (DUE DATE)

N

Opposer’s motion for relief from judgment (dismissal) under Rule 60(b)(1) granted and proceeding reinstated. Board then considered the merits of Applicant’s motion to dismiss for failure to state a claim and granted motion to dismiss, giving Opposer leave to amend.

91202393

07/23/2012 TRIAL DATES RESET

N

Applicant’s default set aside: “the record thus far does not evidence evasive conduct, bad faith or gamesmanship on applicant’s part, and does not suggest that the failure to timely answer, or to move for an extension oftime to answer, was the result of willful behavior, or indifference or inattentiveness to this proceeding.”

91197484

07/26/2012 BOARD`S DECISION: SUSTAINED

N

Opposition to applicant’s FATBOY mark for cigars and accessories based on prior use alleged of FAT BOY for cigars. Applicant did not take any testimony, and did not respond to requests for admissions, thus they were deemed admitted. Opposition sustained.

91199922

07/24/2012 BOARD`S ORDER TRIAL DATES RESET

N

Opposer’s late filed response to Applicant’s motion for a more definite statement ignored as untimely; Opposer must file revised notice of opposition or case will be dismissed.

94002505

07/23/2012 MOTION FOR SUMMARY JUDGEMENT DENIED

N

In a concurrent use proceeding, Board denied Applicant’s motion for summary judgment. “Having reviewed the record on summary judgment, and construing all inferences in favor of Turdin as non-movant, the Board finds that, at a minimum, there is a genuine dispute with respect to the material factual issue of likelihood of confusion.  In particular, the specific nature of the parties’ services, and whether and how they are similar or related, is in genuine dispute.”

92054129

07/24/2012 MOTION TO AMEND DENIED; SUMMARY JUDGEMENT MOOT

N

Petitioner’s motion for leave to amend the pleading to plead ownership of two additional registrations denied. Board found that petitioner unduly delayed by waiting 10 months. Petitioner’s effort to add claim of abandonment also denied as legally insufficient: “petitioner’s pleading of abandonment includes no facts which allege either that respondent has failed to use its mark for three years or that respondent has discontinued use of its mark with an intent not to resume use.” Petitioner found to have filed on the eve of trial for purposes on delay. “[W]e find that petitioner unduly delayed in asserting the abandonment claim and that the motion to amend was interposed for purposes of delay, having been filed one day before petitioner’s testimony period was set to open.” Board barred Petitioner from repleading the abandonment claim.

91204157

07/26/2012 MOTION TO AMEND; DENIED; TRIAL DATES RESET

N

Applicant moved, with consent, to amend its drawing and description of goods and services. Proposed amended drawing was rejected as not supported by the specimen of record. Proposed amendment to identification also denied as it “excludes goods that are already outside of the scope of the recited services.”

91186138

07/26/2012 PROCEEDINGS RESUMED

N

Opposer moved to quash applicant’s testimonial depositions. The notices were quashed as premature as Applicant’s testimony period had not yet opened. Because deponents (employees of Opposer) are located abroad, Applicant’s attempt to compel the appearance in person is improper.

91191180

07/27/2012 PROCEEDINGS RESUMED

N

Opposer’s Motion to compel granted and discovery reopened only for Opposer. Applicant found to have fully and timely cooperated with discovery obligations.

91197044

07/25/2012 PROCEEDINGS RESUMED

N

Opposer’s motion to compel in three related proceedings denied. Board found Opposer to blame as it failed to first consolidate the proceedings, and failed to give Applicant sufficient time.“Under the circumstances, opposer should have sought consolidation of these proceedings prior to serving any discovery and then served one set of interrogatories and document requests for the consolidated proceedings.” Opposer’s combined interrogatories found to number more than 75.

91200425

07/25/2012 PROCEEDINGS RESUMED

N

Opposer moved to compel granted in part and denied in part.

91202857

07/25/2012 PROCEEDINGS RESUMED

N

Opposer moved to strike 3 affirmative defenses, two of which were contested by applicant. Motion granted in part: Defense of failure to state a claim stricken, defense stating opposer’s mark is weak not stricken.
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