Author Archives: Erik M. Pelton & Associates

Sep 10 2012
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TTAB Decisions

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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Sep 04 2012
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TTAB Decisions

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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Aug 28 2012
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TTAB Decisions

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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Aug 27 2012
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Weekly Filings

Recent TTAB Opposition and Cancellation Filings

Below are the records of recent Cancellation and Opposition filings at the Trademark Trial and Appeal Board from approximately August 17 to August 24, 2012. These records are taken from the public records of the US Patent and Trademark Office.

To subscribe to future updates, see the bottom of this post ↓

For the full Trademark Trial and Appeal Board records of any proceeding, click the “TTABVue” link in the left column.

Note that the listings for proceedings involving logos, multiple marks, multiple plaintiffs, or multiple defendants may be incomplete.

Cancellation No.

Registrant

Serial No.

Trademark

Petitioner
TTABVue 92056054 DOUGLAS BENDER 77854447 OMNISEXUAL Mr. Steven M. Bailey
TTABVue 92056053 FLORIDA KEYS TOWING INC. 85411445 BEST HOOKERS IN TOWN All American Towing & Tire, Inc.
TTABVue 92056064 HL HEALTHCARE LIMITED 85477420 EAROL Parnell Pharmaceuticals, Inc.
TTABVue 92056059 HOLSTARK GROUP LLC 78512761 GREENLANDER Fenix Outdoor AB
TTABVue 92056077 IRON FIST BREWING COMPANY INCORPORATED 85042501 IRON FIST BREWING COMPANY 2323 N. Milwaukee LLC
TTABVue 92056069 JACOB KENIGSBERG 85335672 COUPLEOF CoupleOf G. Point Ltd.
TTABVue 92056074 KATHLEEN DUNCAN DBA UNIQUE CASTING 77924179 UNIQUE CASTING Unique Casting Partners LLC
TTABVue 92056070 SIMPLY EIGHT 77928422 SIMPLY EIGHT Dishaka Gourmet Imports, L.L.C.
TTABVue 92056071 WE BUY CARS INC. 85451432 1800CARBUYERS.COM 1 800 CASH FOR, LLC
TTABVue 92056043 WH SILVERSTEIN, INC. 85400916 YANKEE POST & BEAM THE ARTISANS OF POST & BEAM BARNS AND HOMES Topek, LLC
TTABVue 92056063 360SWEATER COMPANY, LLC 85268645 SEA CASHMERE Cashmere House, Inc.
TTABVue 92056055 ACAVA LIMITED 77350973

77528069

 BIANCA

BIANCA

 Joseph Campagna &Sons
TTABVue 92056040 ALEXANDER R. ISER 77895121

85451930

85451875

 PHONEDOCTORS A CELLULAR PHONE REPAIR AND REPLACEMENT COMPANY

PHONEDOCTORS

PHONE DOCTORS

 Robert Mason
TTABVue 92056075 AXIS GLOBAL SYSTEMS, LLC 77037800 AXIS GLOBAL SYSTEMS Axis Group, Inc.
TTABVue 92056049 BOSTON GRANITE EXCHANGE, INC. 85327717 BOSTON GRANITE EXCHANGE Greater Boston Granite, LLC
TTABVue 92056041 BURCO, INC. 74453175 [configuration mark] Adrian Steel Company
TTABVue 92056057 CBOCS PROPERTIES, INC 77452492

77453535

 THE GREATEST FAMILY ROAD TRIP GAME

THE GREATEST FAMILY ROAD TRIP

 Terrance Brennan
TTABVue 92056036 COASTAL PET PRODUCTS, INC. 76476206 POLAR PIZZAZZ Pet Pizazz! LLC
TTABVue 92056061 EDEN CHOCOLATES,; NAAMLOZE VENNOOTSCHAP 79058480

79067654

 SENZ

SENZ ART OF EXPRESSION

 Le Sens Services LLC
TTABVue 92056052 EXTREMITY MEDICAL, LLC 85012995 IO FIX Baxano, Inc.
TTABVue 92056048 F.I.S.T., LLC 85411937 PLAYCALLER PlayCall, Inc.
TTABVue 92056046 FENNER (INDIA) LIMITED 78454081

78441980

 TOP DRIVE ENDURANCE PLUS

ENDURANCE PLUS

 Prestolite Performance LLC
TTABVue 92056045 FREDA’S ORIGINALS INC. 73443425 FREDA’S Lucky Joe Limited
TTABVue 92056050 JAMES R. GLIDEWELL, DENTAL CERAMIC, INC. DBA GLIDEWELL LABORATORIES 77761757 BRUXZIR Keating Dental Arts, Inc.
TTABVue 92056056 MONSTEROPS LLC 77042304 CARBOLIN 19 All American Pharmaceutical & Natural Foods Corporation
TTABVue 92056067 MOTHER’S NUTRITIONAL CENTER, INC. 77340519 MOTHER’S Ava Ruha Corporation dba Mother’s Market & Kitchen
TTABVue 92056037 ORLY INTERNATIONAL, INC. 77949472 PRIMETIME Bare Escentuals Beauty, Inc.
TTABVue 92056062 PAUL WILLIS 85072305 BUFFALO GAP STEAKHOUSE & CANTINA Frank Thomas Perini
TTABVue 92056065 PUYALLUP TRIBE OF INDIANS 77312251 EQC Zuffa, LLC
TTABVue 92056066 PUYALLUP TRIBE OF INDIANS 77312308 EMERALD QUEEN CASINO Zuffa, LLC
TTABVue 92056038 PUYALLUP TRIBE OF INDIANS 77311539 THE ENTERTAINMENT CAPITAL OF THE NORTHWEST! Zuffa, LLC
TTABVue 92056068 REVEL ENTERTAINMENT GROUP, LLC 85976966 REVEL Ravel Hotel LLC
TTABVue 92056072 REVEL ENTERTAINMENT GROUP, LLC 85977025 REVEL Ravel Hotel LLC
TTABVue 92056039 ROHTSTEIN CORPORATION 73370206 OLDE NEW ENGLAND The Moxie Beverage Company
TTABVue 92056060 SALTY DOG BRANDS LIMITED 79049459 SALTY DOG The Salty Dog, Inc. and Jack Dog, LLC
TTABVue 92056058 SEGAL & LAX ATTORNEY AT LAW 76552798 1-877-LAW-SMART Lawinfo.com, Inc.
TTABVue 92056044 SM&A 75208816 QUICKSTART QuickStart, LLC
TTABVue 92056051 THE FRANK LLOYD WRIGHT FOUNDATION 78961048 [Design Mark] Babette, Inc.
TTABVue 92056042 THERMOSOFT INTERNATIONAL CORPORATION 77129444 WARMSTEP Electro Plastics, Inc.
TTABVue 92056073 THROWDOWN INDUSTRIES, INC. 78836781 THROWDOWN Zuffa, LLC
TTABVue 92056047 VITRUVIAN CLOTHING CO. 78728072 VITRUVIAN CLOTHING Parmenter Holdings LLC

Opposition No.

Applicant

Serial No.

Trademark

Opposer
TTABVue 91206673 ALOTTA, DANIEL, ALOTTA, PHILIP 85473459 FOOD WITH A CONSCIENCE Food With A Conscience Inc.
TTABVue 91206620 ANDIORIO, DOUGLAS 85386900 BUCTOBER Pittsburgh Associates
TTABVue 91206640 ARCSOFT, INC. 85343803 HOMELINK Johnson Controls Technology Company
TTABVue 91206639 BEST INTENTIONS INVESTMENTS LIMITED 85535674 FREESURF Manulele Incorporated
TTABVue 91206638 BUNTHOEUN ME 85412772 MAYINTELL TECHNOLOGY Intel Corporation
TTABVue 91206668 COPPEREGG CORPORATION 85448059 COPPEREGG Newegg Inc.
TTABVue 91206610 DEBRA L. HOLTE 85462745 PAWS-TURPEDIC Sealy Technology LLC
TTABVue 91206630 E & D TRADING INC. 85561823 [design mark] Red Bull GmbH
TTABVue 91206592 GREENHOME TECHNOLOGIES LLC 85368591 GREENHOME TECHNOLOGIES, SMARTHOMES MADE SIMPLE Home Performance Enterprises, LLC
TTABVue 91206663 INTEROCEANIC TRADING, LLC 85384775 PONQUE RAM CHOCORAM PRODUCTOS RAMO S.A.
TTABVue 91206660 KDG BRISTOL VENTURES LLC 85208709 BELLA NOIRE Color Image Apparel, Inc.
TTABVue 91206651 MANTILLA DIAZ, MARCO 85621232 SEXY LOCKER Sexy Hair Concepts, LLC
TTABVue 91206643 PATRICIA HUNTINGTON 85458757 IBREATHE Teva Pharmaceutical Industries Ltd., Teva Respiratory, LLC
TTABVue 91206597 PHILLIPPE, ROBERT JEREMY 85473593 BAREFOOT BRAND E. & J. Gallo Winery
TTABVue 91206619 PROTEOTECH INC. 85374028 NEUROMAXIN NEUROBRANDS, LLC
TTABVue 91206607 START IT INC 85494403 [design mark] Twentieth Century Fox Film Corporation
TTABVue 91206624 THE ARTISAN COLLECTION 85521981 QUORUM Villa San Juliette
TTABVue 91206626 THE SIMPLE LIFE OUTFITTERS INC. 85449078 THE SIMPLE LIFE OUTFITTERS Bass Pro Intellectual Property, LLC
TTABVue 91206644 TIME PLAZA 85523971 FOUR SIGNAL adidas AG, adidas International Marketing BV, adidas America, Inc.
TTABVue 91206672 WAQAR, OMAR PITRAS 85441581 SUCH RECORDS NONESUCH RECORDS INC.
TTABVue 91206665 WEB TRENDY 85474626 WEB TRENDY Webtrends, Inc.
TTABVue 91206646 WU LI 85527888 D DD Q QQ Coach Services, Inc.
TTABVue 91206645 ZUNZUN EDUCATION SERVICES INC 85470583 AUTHENTIC CUBA TRAVEL. WE MAKE YOUR ISLAND DREAMS Gordy Marketing Incorporated
TTABVue 91206657 360SWEATER COMPANY, LLC 85406394 SEA BLEU Cashmere House, Inc.
TTABVue 91206661 7 SEAS BREWING, LLC 85473264 RUDE PARROT Diageo North America, Inc.
TTABVue 91206611 AFFYMAX PHARMA LIMITED 85287246 JATHEME Merck Sharp & Dohme Corp. by change of name from Schering Corporation
TTABVue 91206678 ALLEN, CURT 85476406 APTITUDE BORN WITH IT Columbia Insurance Company
TTABVue 91206635 ANHEUSER-BUSCH, LLC 85466740 LIME-A-RITA FROM BUD LIGHT LIME

BUD LIGHT LIME LIME-A-RITA

 New Mexico Wineries, Inc. d/b/a Southwest Wines
TTABVue 91206658 AQUATIC ACHIEVERS IP PTY LTD 85311163 USWIM Life Time Fitness, Inc.
TTABVue 91206606 BILLING REVOLUTION, INC. 85420758 MIDO Mido AG (Mido SA) (Mido Ltd)
TTABVue 91206664 BRIGHTSOURCE ENERGY, INC. 85321631 [design mark] Dominion Resources, Inc.
TTABVue 91206629 CAMERON MEMORIAL COMMUNITY HOSPITAL 85378037 CAMERON MEMORIAL COMMUNITY HOSPITAL Blue Cross and Blue Shield Association
TTABVue 91206649 CLARK SEAFOOD SHOPPES, INC. 85470210 THE FISHERY Jess Company, Inc
TTABVue 91206654 CLEAN PRODUCTION ACTION, INC. 85464767 GREENSCREEN Greenscreen
TTABVue 91206612 CLINE, ROGER M. 85112190 LIFETIME TOOL Lifetime Products, Inc.
TTABVue 91206680 COHEN, YONATAN 85476329 AMAZONSILK Amazon Technologies, Inc.
TTABVue 91206625 CONTOUR, INC. 85425858 CONTOUR Getty Images (US), Inc.
TTABVue 91206647 CREATIVE EYEWEAR INC 85410307 OLIVIA OCCHIALI Coach Services, Inc.
TTABVue 91206659 CROSBY ROAMANN, LLC 85469924 [design mark] Desnoes & Geddes Limited
TTABVue 91206679 DARK CYDE SUPPLEMENTS, LLC 85539196

85539184

 DARK CYDE S U P P L E M E N T S

DARK CYDE S U P P L E M E N T S

 Performance Formulations, Inc. d/b/a Dark Cyde, Formulife, Inc.
TTABVue 91206685 DIAGEO CHATEAU & ESTATE WINES COMPANY 85540699 STARK RAVING MAD ChristianStark, Stark Wine LLC
TTABVue 91206686 DIAGEO CHATEAU & ESTATE WINES COMPANY 85540695 STARK RAVING Stark Wines LLC, ChristianStark
TTABVue 91206648 ERIC COLLOMBIN 79096533 VOLTITUDE General Motors LLC
TTABVue 91206618 FIVERR INTERNATIONAL LTD. 85168396 GIGS Gigs, Inc.
TTABVue 91206596 FULL SAIL, LLC 85389725 FULL CIRCLE John R. Paluzzi
TTABVue 91206601 GENEVA AREA RECREATIONAL, EDUCATIONAL AND ATHLETIC TRUST D ATHLETIC TRUST 76706468 SPIRE Delta Education, LLC
TTABVue 91206599 GLAXO GROUP LIMITED 85428894 ZALIMER OSI Pharmaceuticals, LLC
TTABVue 91206674 GRIFFIN, DAVID JOHN 77298136 HERMETIC ORDER OF THE GOLDEN DAWN OUTER ORDER OF THE ROSICRUCIAN ORDER OF ALPHA ET OMEGA ORDO ROSAE CRUCIS ALPHA & OMEGA I.N.R.I. T.A.R.O. HERMETIC ORDER OF THE GOLDEN DAWN ORDO ROSAE RUBEAE ET AUREAE CRUCIS R.R. ET A.C. & Design Supreme Grand Lodge of the Ancient and Mystical Order Rosae Crucis, Inc.
TTABVue 91206608 HINDUJA GLOBAL SOLUTIONS LTD. 85365498 [design mark] China Telecommunications Corporation
TTABVue 91206650 HOSPICE OF METRO DENVER, INC. 85464384 OPTIO HEALTH

OPTIO INTEGRATED CARE

 UnitedHealth Group incorporated
TTABVue 91206671 IMETRIKUS, INC. 85319279 NUMERA Numira Biosciences Inc.
TTABVue 91206676 ITILITY, L.L.C. 77664852 ITILITY Maryville Data Systems, Inc.
TTABVue 91206641 JWIN ELECTRONICS CORP. 85478236 HOTEL CALIFORNIA HOTEL CALIFORNIA BAJA LLC
TTABVue 91206593 KEMPS LLC 85533596 BEAR CREEK CARAMEL Bear Creek Country Kitchens, LLC
TTABVue 91206609 KIMBERLY ANN WEST 85255207 PERSONALITY VILLE Zynga Inc.
TTABVue 91206627 LANCO APPAREL LLC 85428207 NINA’S CLOSET Nina Footwear Corp.
TTABVue 91206682 LARSON ELECTRONICS LLC 85474627 MAGNALIGHT Mag Instrument, Inc.
TTABVue 91206670 LEAP FROG APPS, INC. 85471359 LEAP FROG APPS Leapfrog Online Customer Acquisition, LLC
TTABVue 91206622 LUMAIR LLC 85480771 LUMAIR E-Conolight LLC
TTABVue 91206600 LUMINTREK CORP. 85563028

85563051

 LUMINTREK

LIMINTREK LIGHTING IN MOTION

 Trek Bicycle Corporation
TTABVue 91206628 M&R OF FREDERICKTOWN LIMITED, INC. 85469498 NOVARIS Novartis AG
TTABVue 91206598 METABOLON, INC. 85468464 QUANTOSE Ferring B.V.
TTABVue 91206613 NAVITAS LLC 85325404 NAVITAS NATURALS Threshold Enterprises, Ltd.
TTABVue 91206615 NEW CHAPTER, INC. 85404065 CHINESE SKULLCAP FORCE Threshold Enterprises, Ltd.
TTABVue 91206616 NEW CHAPTER, INC. 85404070 SEA BUCKTHORN FORCE Threshold Enterprises, Ltd.
TTABVue 91206595 OUTERNET-WORLDWIDE TELEPATHIC WEB, LLC 85251761 OUTERNET WORLDWIDE TELEPATHIC WEB Tomorrow’s Technologies, Inc.
TTABVue 91206605 PHOTO MAMBO INC. 85251818 PHOTO MAMBO Mambo Graphics Pty Limited
TTABVue 91206667 PRINTEGRITY INCORPORATED 85515663 PRINTEGRITY Crabar/GBF, Inc.
TTABVue 91206604 PROTICA INC. 85465246 SKINNY DELIGHT Societe des Produits Nestle S.A.
TTABVue 91206677 RENNTECH, INC. 85551280 PERFORMANCE WITHOUT COMPROMISE Swift Racing Technologies LLP
TTABVue 91206603 RIVERMARK RESEARCH, LLC 85280369 RIVERMARK Rivermark Community Credit Union
TTABVue 91206681 RUN FOR COLOR, LLC 85602534 COLOR BOMB The Color Run, LLC
TTABVue 91206634 SALBRO, INC. 85584144 GLUTEOMAX EnriqueSuescun
TTABVue 91206637 SCHLERN INTERNATIONAL MUSIC FESTIVAL 85321522 SCHLERN INTERNATIONAL MUSIC FESTIVAL Gemeinde Vols am Schlern-Comune di Fie allo Sciliar
TTABVue 91206631 SHUFFLE MASTER, INC. 85420533 ULTIMATE TEXAS HOLD ‘EM Zuffa, LLC
TTABVue 91206614 SPECIALTY NATIONAL, INC. 85134605 FAST FORCE Threshold Enterprises, Ltd.
TTABVue 91206632 SQUARESPOT CORP. 85423512 SQUARESPOT Square, Inc.
TTABVue 91206684 STATACOR BIOSCIENCES, LLC 85474321 ENDURIN Metagenics, Inc.
TTABVue 91206655 STEEZ PROMO, LLC 85417619

85406440

 BASS UNION

BASS UNION

 Seattle Pacific Industries, Inc.
TTABVue 91206633 SWAPZ LLC 85570082 YOLO EYEWEAR YOLO Board LLC
TTABVue 91206636 TELEFLEX INCORPORATED 85265074 SMART CATHETER AngioDynamics, Inc.
TTABVue 91206621 THE CARTOON NETWORK, INC. 85430744

85430750

 COFFIN DODGERS

COFFIN DODGERS

 Los Angeles Dodgers LLC
TTABVue 91206652 THE NEST COLLECTIVE, INC. 85628163

85628138

 BISTRO BOWLS

BISTRO BOWLS

 Ready Pac Produce, Inc.
TTABVue 91206623 THERAPISTS WITHOUT BORDERS 85374681 THERAPISTS WITHOUT BORDERS Bureau International De Medecins Sans Frontieres and Medecins Sans Frontieres USA, Inc.
TTABVue 91206642 TIME PLAZA 85522091 SUN-V adidas AG, adidas America, Inc.
TTABVue 91206666 TIN MAN BREWING COMPANY LLC 85456717 TIN MAN Turner Entertainment Co.
TTABVue 91206656 U.S. PHOENIX GROUP, INC. 85345389 CC Covidien AG
TTABVue 91206662 VALHALLA MOTION PICTURES, INC. 85310089 VALHALLA ENTERTAINMENT Valhalla Game Studios Co. Ltd.
TTABVue 91206594 VOLCANO CORPORATION 85605715 WIREFLY LightLab Imaging, Inc., St. Jude Medical Systems AB
TTABVue 91206602 WORLD ELITE SPIRITS 85518296 PLATINKA Sazerac Company, Inc.
TTABVue 91206675 ZHANG CHAO 79104846 JULIA ROD Wright & McGill Co.
TTABVue 91206669 ZYNGA INC. 85326925 VILLE Game Show Network, LLC
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Aug 24 2012
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Uncategorized

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 N  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.
Aug 21 2012
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Weekly Filings

Recent TTAB Opposition and Cancellation Filings

Below are the records of recent Cancellation and Opposition filings at the Trademark Trial and Appeal Board from approximately August 11 to August 16, 2012. These records are taken from the public records of the US Patent and Trademark Office.

To subscribe to future updates, see the bottom of this post ↓

For the full Trademark Trial and Appeal Board records of any proceeding, click the “TTABVue” link in the left column.

Note that the listings for proceedings involving logos, multiple marks, multiple plaintiffs, or multiple defendants may be incomplete.

Opposition No.

Applicant

Serial No

Trademark

Opposer
TTABVue 91206540 1 CHANCE ENTERTAINMENT 85551009 THE SATIN LOUNGE Shure Incorporated
TTABVue 91206544 ARTIAS INC. 85466641 PLAIR pair Networks, Inc.
TTABVue 91206559 CARRUTH, BRAD 85235244 HORSEPOWER ENERGY DRHORSEPOWER, INC.
TTABVue 91206550 IN COMMUNICATIONS 85459340 IN COMMUNICATIONS InterCommunications, Inc.
TTABVue 91206511 JUJUBEE S.A. 85549572 JUJUBEE Bad JuJu Games, LLC
TTABVue 91206512 LAERA, VITO 85591811 WWW.VLANCO.COM BLANCO GmbH + Co KG
TTABVue 91206554 LATORTUE, MAGALIE 85466421 P BEPLATINUM Platinum Performance, Inc.
TTABVue 91206526 LUSHHAIR LLC 85550445 LUSHHAIR Cosmetic Warriors Limited
TTABVue 91206562 MAESTRO LLC 85538233 MAESTRO MasterCard International Incorporated, Maestro International Incorporated, Maestro U.S.A., Inc.
TTABVue 91206555 MARTIN, GEOFFREY L 85548198 STRO Etro S.p.A.
TTABVue 91206542 SCHMIDT, KRIS 85422001 SLUG BUG Volkswagen Aktiengesellschaft, Volkswagen Group of America, Inc.
TTABVue 91206519 SEVARUS LLC 85404462 SAFETYTRAC TeleTracking Technologies, Inc.
TTABVue 91206514 SPEECHLY, DAVID P 85564009 POPCYCLE Popcycle Motors, LLC
TTABVue 91206560 TIME AMERICA, INC. 85467312 DAYTRACK TeleTracking Technologies, Inc.
TTABVue 91206543 WALTERS, MARVIN J. 85531665 BLACK STUNTMEN’S ASSOCIATION HOLLYWOOD BSA BLACK STUNTMEN?S ASSOCIATION
TTABVue 91206529 A. MILLER MARKETING GROUP INC 78790216 BRAVO LAUNDRY DETERGENT HEB Grocery Company, L.P.
TTABVue 91206567 AKM FOOD SERVICES L.L.C. 85437234 THE GREEN PEPPER AN AUTHENTIC BURRITO JOINT Santa Barbara Restaurant Group, Inc.
TTABVue 91206566 ALL STAR IMPORTS, LLC 85462716 AMORE VODKA Sazerac Company, Inc.
TTABVue 91206570 AMANDA LIMITED 85148358 JO LOVES Loblaws Inc.
TTABVue 91206585 AMERICAN NATIONAL INSURANCE COMPANY 85488352 AMERICAN NATIONAL American National Investment Advisors, LLC
TTABVue 91206541 ASSOCIATED LONG TERM CARE INSURANCE COMP ANY, INC. 85282299 LTC PROVIDER UNIVERSITY Blue Cross and Blue Shield Association
TTABVue 91206590 BEAUTY GEMS FACTORY CO., LTD. 85324815 AD CHOO DAVEE LIFE TIME PROMISES J. Choo Limited
TTABVue 91206513 BOBA TEA COMPANY, INC. 85412490 SPIN IT Spin Concepts, Inc.
TTABVue 91206547 BRISTOL-MYERS SQUIBB COMPANY 85471651 M H. Lee Moffitt Cancer Center and Research Institute, Inc.
TTABVue 91206591 CAPUTO 1890 S.R.L. 85453781 CORRADO CAPUTO 1890 Corrado’s Specialty Goods, Inc.
TTABVue 91206568 CHONGQING CHANGAN AUTOMOBILE CO., LTD. 85460712 V American Honda Motor Co., Inc.
TTABVue 91206521 COLD PLASMA MEDICAL TECHNOLOGIES, INC. 8540781085499158 HARMONIC COLD PLASMAHARMONIC PLASMA Johnson & Johnson
TTABVue 91206533 DANISSA COLOMBANA AND DAVID C. ROBERTS 85459006 MMA ANONYMOUS Chaiken Holdings, L.P.
TTABVue 91206588 DBC, LLC 85389964 FAVAO HARVEST 2000 INTERNATIONAL, INC.
TTABVue 91206548 DELTA CARD SERVICES, INC. 85441128 ZOOMGATE PAYMENT GATEWAY POWERED BY MC Xoom Corporation
TTABVue 91206539 DIRECT MARKETING ASSOCIATION, INC. 85466167 DMA Data Media Associates, Inc.
TTABVue 91206552 ENTEC SERVICES, INC. 85341808 ACS ADVANCED CEMS SOLUTIONS AN ENTEC SERVICES COMPANY C.E.M. Solutions, Inc.
TTABVue 91206537 FB’S FASHION, LLC 85536129 F&F DENIM Tesco Stores Limited
TTABVue 91206538 FB’S FASHION, LLC 85536119 F&F DENIM Tesco Stores Limited
TTABVue 91206564 FIRE TAIL BRANDS, LLC 85480533 IMPERIAL JADE Sazerac North America, Inc.
TTABVue 91206524 FOSTER POULTRY FARMS 85573619 TAHIR California Farms, LLC
TTABVue 91206545 FRENCH DOUGLAS, KOHLBERG 78586170 SCORPION RodrigoRodriguez
TTABVue 91206584 GIRL SCOUTS OF GREATER CHICAGO AND NORTHWEST INDIANA, INC. 85467487 JOURNEY WORLD Genesco Brands, Inc.
TTABVue 91206525 GORDON * HOWARD ASSOCIATES, INC. 85411058 ACT Sage Software, Inc.
TTABVue 91206561 INTERNATIONAL RECTIFIER CORPORATION 7670570376705702 COOLIRMOSCOOLIR2MOS Infineon Technologies AG
TTABVue 91206557 IT’S SIMPLE, INC. 85402460 IP 101 Licensing Executives Society (U.S.A. and Canada), Inc.
TTABVue 91206563 KING KOIL LICENSING COMPANY, INC. 85030819 BODYFIT Kingsdown, Inc.
TTABVue 91206551 KIRK BRONSORD 76707515 BAD BOYZ OF BBQ TAILGATERS BARBECUE PARTY Platypus Wear, Inc. DBA Bad Boy Brands
TTABVue 91206558 KRENTZ, DOUGLAS RICHARD 85331937 JETWET The Procter & Gamble Company
TTABVue 91206518 LI, SISI 85314555 SISI LI Gilfin S.p.A.
TTABVue 91206586 LUPO S.A. 77679249 LOBA LOWA Sportschuhe GmbH
TTABVue 91206579 MAAPE AS 79101387 [design mark] Payless ShoeSource Worldwide, Inc.
TTABVue 91206580 MADD GEAR PTY LTD 79106409 MADD GEAR MGP MADD GEAR Mothers Against Drunk Driving
TTABVue 91206523 MARCO POLO INDUSTRIES PTY LTD 85436485 MARCOPOLO. MARC O’POLO INTERNATIONAL AB
TTABVue 91206515 MARIA PUCCI 85467852 MP MARIA PUCCI COUTURE Emilio Pucci International BV
TTABVue 91206517 MCMRI AG 79096642 MCMRI McDonald’s Corporation
TTABVue 91206546 MEXCOR, INC. 85379607 TENNESSEE CROWN The R.S. Lipman Company
TTABVue 91206510 MISUMI GROUP INC. 79088474 VONA Vonage Marketing LLC
TTABVue 91206575 MONSTER, INC. 85318539 MAX 3D Imax Corporation
TTABVue 91206578 MPS ENTERTAINMENT, LLC 85404033 TWINNING Viacom International Inc.
TTABVue 91206573 NAIL TECH SUPPLY, INC. 85382589 RC RED CARPET MANICURE Tracie Martyn, Inc.
TTABVue 91206527 NEXTAG, INC. 85158134 NEXT COUPONS Next Retail Limited
TTABVue 91206589 NICK & SONS S.R.L. 79095852 UNFAMOUS Brown Group Retail, Inc.
TTABVue 91206549 NORTHSTAR MEDICAL RADIOISOTOPES, LLC 8542036785420378

85420395

85420403

 TECHNEGENTECHNEGEN

TECHNEGEN

TECHNEGEN

 Mallinckrodt LLD
TTABVue 91206577 PHILLIP, MICHAEL 85458736 PROFESSIONALWOOKIE Lucasfilm Entertainment Company Ltd, Lucasfilm Ltd.
TTABVue 91206581 QWERCKY LTD. 85524126 I CAN’T REMEMBER THE ALAMO The State of Texas, by and through The General Land Office
TTABVue 91206536 R AND S IMPRESSIONS, INC. 85565672 THREAT LEVEL ORANGE Syracuse University
TTABVue 91206572 RAPID CASH ADVANCES, INC 85535509 XTRA CASH XtraCash, LLC
TTABVue 91206574 RUTLEDGE, KEVIN 85388668 [design mark] adidas International Marketing BV, adidas America, Inc., adidas AG
TTABVue 91206587 SHETTY VAISHALI 85551269 GAJALEE COASTAL INDIAN SEAFOOD GAJALEE COASTAL FOOD, INC. and, GAJALEE COASTAL FOOD PVT. LTD.
TTABVue 91206553 SIRSI CORPORATION 85541453 BLUE CLOUD BlueCloud Communications, Inc.
TTABVue 91206556 SKINMEDICA, INC. 85558710 LYTERA Laverana GmbH & Co. KG
TTABVue 91206576 STRIIV, INC. 8546417185464169 STRIIVSTRIIV Koss Corporation
TTABVue 91206509 THE COLOR RUN, LLC 85554046 THE COLOR RUN Run For Color, LLC
TTABVue 91206530 THE WISH FACTORY, INC. 85399102 POP GRRL Sjovik Limited
TTABVue 91206582 VALLEY OF THE SUN COSMETICS LLC 85393887 PINK CHIC Luster Products, Inc.
TTABVue 91206569 WARD, LENA 85461223 COEDCOUTURE Co-Ed Media Group, LLC
TTABVue 91206520 WELLINGTON DEVELOPMENT LLC 85458576 GRAND PRIX OF WEEHAWKEN Formula One Licensing BV
TTABVue 91206535 WILLIAMS, REGINALD 85361455 TIME TRAVELERS ACADEMY Learn Our History LLC
TTABVue 91206522 XTREME TOOLS, INTERNATIONAL 85524603 CASABLANCA MOROCCAN OIL Moroccanoil, Inc

Cancellation No.

Registrant

Serial No

Trademark

Petitioner
TTABVue 92056008 DAVID A WAYNE F/K/A SIDERA, INC. 85046852 GROBOTIX PurGro Electronics, LLC
TTABVue 92056033 EAVES REALTY GROUP LLC 85154226 EAVESREALTYGROUP.COM AvalonBay Communities, Inc.
TTABVue 92056011 EUREX LLC 77403735 MARC CAIN Marc Cain GmbH
TTABVue 92056024 FUNKWERKES LLC 85390029 OLD BASTARDS CLAN Old Bastards Clan
TTABVue 92056017 GIORDANO VINI S.P.A. 79023277 RADIANTE Treasury Wine Estates Americas Company
TTABVue 92056019 LIDL STIFTUNG & CO. KG 79058747 SUGARLAND Sugarland Chapel Hill Inc.
TTABVue 92056027 LIFE BRANDS, LLC 85095693 BRAINCANDY Monsterops LLC
TTABVue 92056001 MICHAEL E. MURPHY 77894482 EZ WATER FILTER Freije Treatment Systems, Inc.
TTABVue 92056020 PREMIER CHAMPIONSHIP FIGHTING LLC 77252022 PREMIER CHAMPIONSHIP FIGHTING Zuffa, LLC
TTABVue 92056018 STRATEGIC MARKS, LLC 85137185 ROBINSON’S Macy’s Inc.
TTABVue 92056025 UNIQUE WINE & SPIRITS 85122932 SUPERIO VODKA Sazerac Company, Inc.
TTABVue 92056014 ADVANCE MAGAZINE PUBLISHERS INC. 78869202 LIPSTICK.COM Verve Hosting, Inc.
TTABVue 92056031 ANIMATION INVESTMENT, INC. 7893913178938797

78908727

 ANIMAXANIMAX

ANIMAX

 Animax Interactive, LLC
TTABVue 92056026 ATI HOLDINGS, LLC 77532427 WELLSPIRE SOLUTIONS Anjali GUPTA Mehta DBA AGM Consulting
TTABVue 92056012 AUTOCRIB, INC. 76688141 AUTOCRIB Power Hawk Technologies, Inc.
TTABVue 92056023 BLU BATHWORKS INC. 77003521 BLU BATHWORKS Alfi Trade, Inc.
TTABVue 92056034 DAB DOOR COMPANY, INC. 78170142 WIND MASTER The Cookson Company, Inc.
TTABVue 92056009 DK INTERNATIONAL FOOD A/S 79042783 BETTER LIFE North Country Seed, LLC
TTABVue 92056029 DUNGEY ENTERPRISES LLC 77709168 A ASTRATTO Astratta, Inc.
TTABVue 92056028 EXTREMITY MEDICAL, LLC 85013050 IO FIX INTRA OSSEOUS FIXATION Baxano, Inc.
TTABVue 92056013 FRITZ HANSEN A/S 78782379 [chair configuration design] Restoration Hardware, Inc.
TTABVue 92056006 JAMES DOLAN 8514050885130759 HEALTHCARE HIRE FOR SUCCESSHIRE FOR SUCCESS California Manufacturing Technology Consulting
TTABVue 92056000 JEAN PHILIPPE FRANGRANCES, LLC 74330092 FIDELITY Tupperware Products S.A.
TTABVue 92056035 LIMITED LIABILITY COMPANY; “AUTOPLASTIC” 79081723 STP The Armor All/STP Product Company
TTABVue 92056030 MALCOLM & CO. LLC 78722661 VELOCITY Lightforce U.S.A., Inc. DBA Nightforce Optics, Inc.
TTABVue 92056022 OPTEKA, INC. 77726224 HERCULES SUPER STRONG Guillemot Corporation, S.A.
TTABVue 92056021 OZELLE PHARMACEUTICALS, INC. 76227670 ANVIRZEL Nerium Biotechnology, Inc.
TTABVue 92055999 PHOTON DISPLAY INC. 76978531 PHOTON Google Inc.
TTABVue 92056010 PRECISION TRANSDUCER SYSTEMS, INC. 77264240 PUMA AUDIO PUMA SE
TTABVue 92056015 STORYLAB ENTERPRISES INC. 78738483 STORYLAB Aegis Media Americas, Inc.
TTABVue 92056032 THE FREDERICK HARRIS MUSIC CO., LIMITED 85082346 BRIDGES The Math Learning Center
TTABVue 92055998 TWISTED SISTERS BOUTIQUE LTD. 78478196 TWISTED SISTERS John French
TTABVue 92056007 USA DETERGENTS INC. 74367643 FINE CARE A.P. Deauville, LLC
TTABVue 92056003 WATCH COMPANY ROMANOFF 79083655 ROMANOFF The Hyman Companies, Inc.
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