Category Archives: TTAB Decisions

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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Jul 10 2012
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TTAB Decisions

Recent TTAB Decisions and Activity of Note (6/18 – 6/24/2012)

Between June 18 and 24, 2012, the TTAB issued numerous decisions. None were precedential, but one was on remand from the CAFC.

There were a few interesting and important rulings during this period, including:

– As a discovery sanction, a party was prohibit from introducing evidence that it did not produce in discovery, and all of its documents produced will be treated automatically as authentic and admissible.

– In an new oppsoition by Motorola against Nextel’s “chirp” sound mark, Board found that neither claim nor issue estoppel prevented the claim, which is based on a different set of ‘transactional facts’ since it relates to telecommunications services, not phone goods that were at issue in prior TTAB proceeding.

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

91196412

 06/20/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED

N

 Opposer (COCO DELICE for chocolates) moved for summary judgment on priority and likelihood of confusion against Applicant’s COCO DELICES CHOCOLATERIE & Design mark for chocolates. Finding genuine dispute as to nature and extent of opposer’s common law rights and priority, as well as the strength of opposer’s mark, Board denied the motion.

77534583

 06/20/2012 BOARD`S DECISION: AFFIRMED

N

 Refusal of registration of SULFREEN for “building, installation and maintenance of industrial plants” in International Class 37; and “research and development in the field of chemistry, in particular in the field of sulfur recovery from sulfur-containing gases; services of an engineer; development, planning, construction design and technical project planning of industrial plants, devices and methods in the field of analytical chemistry and synthesis, as well as corresponding advice, namely, technical consulting in the technology field of sulphur-containing gases, in particular in the field of sulfur recovery from sulfur-containing gases; performance and evaluation of chemical analysis; performance and evaluation of chemical synthesis; issuance of technical expert opinions in the technology field of sulphur recovery from sulphur-containing gases” in International Class 42 for failure to submit proper specimens showing use of the mark with the applied-for services affirmed. “It is settled that if a term is used only as the name of a process it does not function as a mark. However, a term can be used as the name of a process and also function as a mark for services. That is to say, use of a term in connection with a process does not prevent such term from designating more than a process.” Here, the Board found that the “specimen does not display SULFREEN in such a manner that it would be readily perceived as identifying the source of the identified services.”

77671449

 06/22/2012 BOARD`S DECISION: AFFIRMED

N

 Application for JOHN SHOPE’S SINISTER INDUSTRIES for motorcycles, parts, and related services refused under Section 2(d) as likely to be confused with registration for SINISTER CYCLES for “retail store services featuring motorcycle parts and accessories.” Finding goods and services related and SINISTER arbitrary and strong; the Board likened addition of JOHN SHOPE to addition of a house mark, and insufficient to avoid confusion. Fame of application JOHN SHOPE irrelevant. Refusal affirmed.

77832668

 06/18/2012 BOARD`S DECISION: AFFIRMED

N

 Application for ADMEDIA for a variety of advertising services refused under Section 23(c) as generic. Board affirmed: The Examining Attorney’s evidence included 38 third party registraitions featuring disclaimer of “ad” and/or “media.” “Despite the minimal evidence of use of the compound term “admedia,” there is ample evidence to support the relevant public’s understanding of the term ADMEDIA to refer to the genus of services. “ “[T]he joinder of the words “ad” and “media” into a single term creates no additional meaning, impression or nuance other than the meaning associated with the individual words as used together. Viewers would recognize the mark as consisting of the separate elements AD and MEDIA”

77921755

 06/21/2012 BOARD`S DECISION: AFFIRMED

N

 Application for MY SMILEKIDS refused for ““providing a website featuring information in the field of dental care; providing information in the field of dental care” refused under Section 2(d) as likely to be confused with registration of MYSMILE for “providing health information.” Board found services overlapping; marks similar and sound and appearance; and affirmed the refusal. Applicant’s registration of SMILEKIDS for same services did not help it overcome the refusal; “The focus of the analysis in this case must be on the mark applicant seeks to register, MY SMILEKIDS, and not on the other mark applicant already registered.”

85064187

 06/21/2012 BOARD`S DECISION: AFFIRMED

N

 Application for MAXWELL for leather furniture refused under Section 2(d) as likely to be confused with MAXWELL for fabric products and MAXWELL HOME & GARDEN for fabrics. Refusal affirmed: “In balancing the relevant du Pont factors in this case, we find that because the marks are identical and very similar, the goods are related, the channels of trade and the classes of consumers overlap, confusion is likely between applicant’s mark and the marks in the cited.”

85065751

 06/21/2012 BOARD`S DECISION: AFFIRMED

N

 Application for MUZZIE’S & Design for retail clothing boutiques refused under Section 2(d) as likely to be confused with MUZZYS & Design registered for clothing and for store and wholesale services featuring motorcycle parts and clothing manufactured by others.

Refusal affirmed. Applicant’s prior registration irrelevant: “Applicant also raises the argument in its brief that that its predecessor in interest previously owned a registration for the same mark for “retail clothing boutiques” which was inadvertently cancelled due to the failure to file a Section 8 affidavit. Applicant’s Brief, p. 3. Applicant contends that the marks coexisted on the register for over six years without any instances of actual confusion. We are not persuaded.”

Applicant’s cancelled registration cannot justify registration

of its current application.

85082505

 06/21/2012 BOARD`S DECISION: AFFIRMED

N

 Refusal of AMERICA’S FAVORITE for mustard under Section 2(d) due to likelihood of confusion with registrations of  AMERICA’S FAVORITE for “ketchup” and “sauces” from same owner. Refusal affirmed. Applicant’s prior registrations did not help its cause: “Cancelled or expired registrations generally have no evidentiary value, and certainly an applicant cannot claim a right to registration based on its prior ownership of cancelled or expired registrations.”

91199193

 06/22/2012 SUSPENDED PENDING DISP OF CIVIL ACTION

N

 Motion to Consolidate granted. Fraud claim in counterclaim is stricken as improperly pleaded. Because of excessive number of filings, one party was “ordered to telephone the Interlocutory Attorney prior to the filing of any further interlocutory motions, and seek permission for such filings.”

91192593

 06/19/2012 TRIAL DATES RESET

N

  Applicant moved for relief from final judgment for failure to file an answer, contending that its failure to file a timely answer and respond to the notice of default was clerical and entirely inadvertent (Applicant’s counsel blamed his secretary for docketing errors.) Motion granted: “While counsel may have overrelied on his firm’s “safeguard procedure,” we do not find that the record demonstrably shows that counsel willfully defaulted.  Further, since default judgments for failure to timely file an answer are not favored by the law, we generally treat Rule 60(b) motions seeking relief from such judgments more liberally than motions seeking relief from other types of judgments.”

91170112

 06/18/2012 BOARD`S DECISION: DISMISSED

N

 On remand from CAFC after the appeals court affirmed the Board’s finding of no likelihood of confusion and no dilution and that Applicant’s mark is merely descriptive. However, the appeals court vacated “the Board’s decision solely on its finding of acquired distinctiveness” and remanded for further proceedings. The Board here found that Applicant’s mark has acquired distinctiveness: “We note that while applicant’s COACH mark is merely descriptive, it is not so highly descriptive that applicant has the burden to show a concomitantly high level of acquired distinctiveness.”

91187787

 06/22/2012 BOARD`S DECISION: DISMISSED

N

 Applicant’s mark: ARMORSTONE for “Clear and pigmented coatings used in the nature of paint; Glazes; House paint; Interior paint; Mixed paints; Paint for concrete floors; Paint primers; Paint sealers; Paint thinner; Paints; Paints and lacquers; Pavement striping paint; Epoxy coating for use on concrete industrial floors.” Opposer owns numerous registrations for STON- marks for epoxies and related good. Board first ruled the because the Application was under Section 1(a), merely checking a ground on the ESTTA cover sheet does not constitute properly pleading the ground. Opposer therefore only properly pleaded a claim under Section 2(d), but the descriptiveness claim was tried by implied consent. Board found the marks create different commercial impressions; the goods closely related; Opposer’s evidence fell short of showing fame; and dismissed the Section 2(d) claim. Board also dismissed the descriptiveness claim.

91195158

 06/20/2012 BOARD`S COMMUNICATION

N

 Applicant moved for relief from final judgment for failure to file an Answer. Motion denied: “In order to establish that relief from the default judgment is appropriate, applicant “must persuasively show (preferably by affidavits, declarations, documentary evidence, etc., as may be appropriate) that the relief requested is warranted for one or more of the reasons specified in Fed. R. Civ. P. 60(b).”  TBMP § 544 (3d ed. 2011).” “[A]pplicant provides no explanation as to why he neglected to respond or why he waited for a year to seek relief from judgment.”

91203482

 06/20/2012 BOARD`S ORDER TRIAL DATES RESET

N

 Consented motion to consolidate denied because the marks are not overlapping at all (HOMEWOOD RESIDENCE and a number of marks featuring THE HAMPTON).

92054391

 06/21/2012 COURT`S DECISION; REMANDED

N

 The CAFC, upon request from Respondent/Appellant, remanded to the TTAB so the Board can rule on his motion for relief from final judgment (a default) under Fed. R. Civ. P 60(b).

NOTE: Board already indicated in an order that “We would be inclined to grant respondent’s Motion for Relief from Final Judgment.”

91200355

 06/18/2012 CROSS-MOTION FOR SUMMARY JUDGEMENT GRANTED

N

 In opposition by Motorola to Nextel’s sound mark for telecommunication services, parties filed cross motions for summary judgment on the issue of res judicata and/or collateral estoppel. Board previously ruled that the “chirp” sound for two-way radios failed to function and for cell phones it was not inherently distinctive and had failed to acquire distinctiveness. The Board here ruled that claim preclusion did not apply: “the third element of claim preclusion is not met inasmuch as the instant opposition is not based on the same set of transactional facts that were before the Board in Opposition No. 91164353.  In that proceeding, the core issue before the Board (the issue which was not precluded by the decision in Opposition No. 91161817) was whether the sound had inherent or acquired distinctiveness as a mark with respect to Motorola’s “cellular telephones.”  The Board made no finding as to whether the sound had acquired distinctiveness as a mark as used in connection with any of Nextel’s services…[T]he Board did not rule with respect to whether the sound was inherently distinctive, or had acquired distinctiveness as a mark for Nextel’s services.” As for collateral estoppel/issue preclusion, the Board also found no preclusion of the current claims: “There is no identity of issues inasmuch as the issues resolved in Opposition No. 91164353 differ materially from those presented in the instant opposition.”

91200910

 06/18/2012 MOTION FOR DEFAULT JUDGMENT; DENIED; TRIAL DATES RESET

N

 Opposer moved for default judgment based on Applicant’s untimely answer filed without explanation. Motion denied: facts indicate delay was willful or the product of gross neglect.

91201549

 06/18/2012 MOTION TO SET ASIDE NOTICE OF DEFAULT; GRANTED; TRIAL DATES RESET

N

 Applicant moved to set aside notice of default. Applicant’s late answer was served on Opposer but was not properly filed with the Board. Motion granted: “the Board cannot infer either willful delay or gross neglect from applicant counsel’s mistaken belief that the answer was properly filed with the Board.”

91201070

 06/21/2012 PL`S MOTION TO REOPEN; GRANTED

N

 Opposer filed later response to motion for summary judgment, which Board construed as a motion to reopen opposer’s time to respond to the motion for summary judgment. Response filed just a few minutes past the midnight deadline. Motion granted: “The length of the delay is infinitesimal, and will have absolutely no impact on this proceeding.  And it appears that opposer has acted in good faith and applicant does not contend otherwise.”

91202073

 06/18/2012 P`S AMENDED NOTICE OF OPPOSTION DUE THIRTY DAYS

N

 Applicant moved to dismiss under 12(b)(6) for failure to state a claim. The notice of opposition consisted of the ESTTA form and a letter from Opposer. Motion granted regarding 2(a) claim and 2(d) claim; Board noted that 2(d) claim contain the proper elements but the form of the notice of opposition was lacking.

91200183

 06/21/2012 RESPONSE DUE IN (20) DAYS

N

 Competing motions to strike filed; Applicant seeking to strike assignment documents recorded by Opposer. Board declined to rule on the issue on the assignments, noting its power is regarding registrability and the validity of the documents would be an issue for trail. Opposer’s motion to strike dismissed as untimely as it came more than 25 days after the Answer. But Board reviewed the Answer anyways and noted that some claims alleged must be raised in a compulsory counterclaim and that one affirmative defense was insufficient.

92054730

 06/18/2012 PROCEEDINGS RESUMED

N

 Respondent moved to dismiss petition to cancel under 12(b)(6) for lack of standing. Because petitioner is a competitor of respondent, petitioner is a competitor “with a commercial interest affected by the registration, and the petition to cancel sufficiently sets forth allegations of standing and a ground for cancellation that, if proven, would entitle petitioner to judgment.  Accordingly, respondent’s motion to dismiss the petition to cancel is denied.”

91197005

 06/20/2012 PROCEEDINGS RESUMED

N

 Applicant moved to dismiss under 12(b)(6) for failure to state a claim. Motion denied.

91197661

 06/21/2012 PROCEEDINGS RESUMED

N

 Opposer moved for discovery sanctions. Board found many responses supplemented (per earlier Board order) but still insufficient. Board did not grant judgment as sanction but:“As an alternative to judgment, which we do not consider appropriate in the circumstances of this case, we grant opposer’s requested sanction prohibiting applicant’s introduction at trial of any information not provided in response to the Board’s order compelling discovery responses.” “If filed during trial by opposer, the Board will accept any documents produced by applicant as a result of this order as authentic and admissible. However, because those documents were improperly withheld from opposer, applicant is prohibited from using those documents at trial, either as an exhibit to a testimonial deposition or by notice of reliance.”

91198154

 06/21/2012 PROCEEDINGS RESUMED

N

 Opposer moved to compel discovery responses; motion granted as conceded.

91200806

 06/19/2012 PROCEEDINGS RESUMED

N

 Applicant moved to strike paragraphs from the amended Notice of Opposition, interpreted as a motion under Rule 12(f) and 12(b)(6). Motion to strike reference to Opposer’s Canadian registrations denied. Motion to Dismiss fraud claim as improperly pleaded granted.

91201858

 06/18/2012 PROCEEDINGS RESUMED

N

 Applicant moved to dismiss under Fed. R. Civ. P. for failure to state a claim. Opposer’s response was late and attempted to argue the merits and other matters outside the pleadings; Opposer’s brief ignored by Board. Motion granted: Opposer failed to allege standing or descriptiveness. Opposer given time to amend pleading.
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Jul 09 2012
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TTAB Decisions

Recent TTAB decisions and activity of note (June 11-17, 2012)

Between June 11 and 17, 2012, the TTAB issued numerous decisions. None were precedential – but one modified an earlier precedential decision to redact, upon an unopposed request from a party, several sentences from the Opinion.

There were a variety of interesting and important rulings during this period, including:

– Google successfully opposed SOOGLE

– Applicant’s prior registration on the supplemental register provided no help getting the mark re-registered and overcoming a generic refusal

– Petitioner Levi Strauss & Co has appealed to the CAFC the denial of its petition to cancel the jeans pocket design mark of Abercrombie & Fitch Trading Co.

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

91198926

 06/11/2012 PLAIN`S MOT. FOR SUMMARY JUDGMENT GRANTED N Google’s motion for summary judgment in its Opposition to SOOGLE for “Arranging and coordinating travel arrangements for individuals and groups, namely … Online trip and travel reservations services ….” granted under Section 2(d). GOOGLE mark found to be famous and coined, and the services at least related.

91199515

 06/11/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED N Opposer’s moved for summary judgment on grounds of priority and likelihood of confusion denied; Board found genuine issue of material fact regarding the marks’ commercial impressions (POLLO CAMPERO v POLLO CAMPESINO).

77582484

 06/11/2012 BOARD`S DECISION: AFFIRMED N Application for THE COLLECTORS TABLE for “Business consultation in the field of sales and marketing of alcoholic beverages; import agency services for others in the field of alcoholic beverages; promoting and marketing the alcoholic beverages of others; alcoholic beverage procurement services for others; and distributorships in the field of alcoholic beverages” refused under Sections 1 and 45 for specimens which fail to show use of the mark for the identified services. The refusal was affirmed; the Board found the specimens did not relate to the identified services. “[W]hen a service mark is used in advertising the services the specimen must show an association between the mark and the services for which registration is sought in order to comply with the statutory requirement that the mark “identify and distinguish the services.””

77650780

 06/11/2012 BOARD`S DECISION: AFFIRMED N Refusal of WHO’S WHO ONLINE for an online directory as generic under Section 23 affirmed: “The record shows that WHO’S WHO is a unitary generic term.  The record also establishes that the term ONLINE is simply a designation for a type of information available on the Internet, and lacking source-identifying capability.”  And “Thus, Gould-type evidence showing the generic nature of the two terms is sufficient to establish that the separate terms retain their generic significance when joined to form a compound that has “a meaning identical to the meaning common usage would ascribe to those words as a compound.”” Applicant’s prior registration of the mark on the Supplemental Register irrelevant: “While it is unfortunate that applicant’s prior registration was not maintained, our precedent is clear; a cancelled or expired registration has no probative value other than to show that it once issued…. Applicant is not entitled to favorable treatment because it inadvertently allowed its prior registration to be cancelled.”

77902174

 06/15/2012 BOARD`S DECISION: AFFIRMED N Refusal of BACKYARD CLASSIC for patio furniture under Sect. 2(e)(1) as merely descriptive (with “CLASSIC” disclaimed) affirmed. Three third party registrations for similar goods featuring disclaimers of “BACKYARD” given weight by the Board: “Although small in number, these third-party registrations are illustrative of the fact that the Office recognizes the term “backyard” as merely descriptive when used in connection with patio furniture.”

77954823

 06/15/2012 BOARD`S DECISION: AFFIRMED N Application for WHO’S CALLING ME? for application service provider services related to phone call tracking refused as likely to be confused under Sect. 2(d) with registrations for WHO’S CALLING and Who’s Calling logo for software goods and services in the field of marketing and including measuring calls. Goods and services found to be overlapping and sold in same channels of trade; addition of ME? “does very little to distinguish the marks.” Refusal affirmed.

78767343

 06/12/2012 BOARD`S DECISION: AFFIRMED N Application for SK (for alarm products,  variety of goods made of metal, and more) refused under section 2(d) as likely to be confused with three registrations for SK & Design owned by one registrant (for tool repair, metal boxes, alarm and camera products, and more). Marks found very similar; goods found overlapping, except in Classes 17 and 20. Refusal affirmed in Classes 6, 7, 8 and 9, will be allowed to proceed to registration in Classes 17 and 20.

85127067

 06/14/2012 BOARD`S DECISION: AFFIRMED N Application for FIREBIRD X for guitars refused  under Section 2(d) as likely to be confused with registration of FIREBIRD for “electric audio equipment, namely, musical instrument sound processors comprising one or more of the following components, namely, amplifiers, equalizers, and speakers.” Dozens of third party registrations featuring goods of applicant and of registrant were submitted by Examining Attorney; goods found to be related and complementary. Refusal affirmed.

85152285

 06/14/2012 BOARD`S DECISION: AFFIRMED N Refusal of ANNABELLE’S NATURAL ICE CREAM & Design (for ice cream) under Section 2(d) as likely to be confused with registration of ANNABELLE’S (for candy) affirmed. ANNABELLE’S found to be dominant part of Applicant’s mark and goods found to frequently emanate from same source (based on evidence from 5 third party registrations and 3 websites). Applicant’s ownership of prior registration for same mark and same goods irrelevant (“While it is unfortunate that applicant’s prior registration was not maintained, our precedent is clear; a cancelled or expired registration has no probative value other than to show that it once issued  and is not entitled to any of the statutory presumptions of Section 7(b) of the Trademark Act.”)

92049913

 06/05/2012 APPEAL TO CAFC N Petitioner Levi Strauss & Co has appealed to the CAFC the denial of its petition to cancel the jeans pocket design mark of Abercrombie & Fitch Trading Co. due to issue preclusion.

92054315

 06/12/2012 SUSPENDED PENDING DISP OF CIVIL ACTION N Respondent’s motion to suspend proceeding pending civil action granted. Note that civil action was filed after Petitioner’s motion for summary judgment was filed.

92053694

 06/11/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT N Parties granted one final suspension; Motion for Summary judgment was filed more than 5 months ago and due to extensions no response filed yet. “[N]o further  extensions to respond or suspensions will be granted until respondent’s motion for summary judgment is decided or withdrawn.”

92054736

 06/12/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Respondent moved to dismiss petition for cancellation for lack of standing and failure to state a claim upon which relief may be granted. Petitioner then filed an amended Petition substituting corporation for individual as petitioner. Board permitted the substitution, finding no prejudice to Respondent. Petitioner’s amended claims found to be sufficiently pleaded and motion to dismiss denied.

92055365

 06/12/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Motion to dismiss for failure to state a claim grated regarding grounds of abandonment (“Petitioner has failed to allege a required element of a claim of abandonment of a mark, namely, that respondent has abandoned use of the mark with intent not to resume use.”)

91199269

 06/12/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Applicant moved to strike affirmative defenses in Opposer’s answer to counter-claim. Motion granted in part:“The equitable defenses of laches and acquiescence are not available against claims of abandonment, as well as genericness, descriptiveness, fraud, and functionality… Moreover, the Board has long held that the equitable defense of estoppel is not available against the claim of abandonment because there exists a broader public policy interest in removing abandoned registrations from the register.”

“As for the defense of unclean hands, the Board finds opposer’s pleading of this bare legal conclusion to be insufficient to give applicant notice of the basis for the  defense.  “The elements of a defense should be stated simply, concisely, and directly” and “should include enough detail to give the plaintiff fair notice of the basis for the defense.”  TBMP §311.02(b) (3rd ed 2011).”

92055117

 06/14/2012 TRIAL DATES RESET N Respondent’s motion for an extension of time to answer granted, and petitioner’s motion for default judgment denied.

91190109

 06/12/2012 BOARD`S DECISION: DISMISSED N Applicant: IT’S HIP TO BE GREEN for stickers and other goods in Class 16. Opposer: IT’S HIP TO BE GREEN registered for shirts and hats and used for online retail and other goods/services.  Opposer had no records of sales prior to 2008 due to a hard drive crash and failed to establish priority of use for stickers and bumper stickers, despite showing priority on other goods and services. Evidence of record was not sufficient to establish the Applicant’s goods are related to those goods/services for which Opposer could establish priority. As a result, the Opposition was dismissed.

91178856

 06/15/2012 BD`S DECISION: DISMISSED W/ PREJUDICE N Opposer owns registrations for BLUE NOTE for restaurant and cabaret services. Applicant seeks registration of BLUENOTES & design for variety of goods and services. Opposer failed to take or introduce any testimony or to submit a brief. While the parties were conducting settlement negotiations even after the testimony period and it is clear that Opposer has not lost interest in the proceeding, Opposer’s failure to submit any testimony or to seek a timely extension (it did not seek extension until a year after it closed). “[T]he reason for opposer’s delay, which was within its reasonable control, and the delay’s length and impact on this proceeding establish that opposer’s failure to take testimony or submit evidence during its testimony period is not excusable.” As a result the motion of extension is denied and cross motion to dismiss is granted and Opposition dismissed with prejudice for failure to prosecute.NOTE: Application filed in 2003. Opposition instituted in August 2007.

91152248

 06/12/2012 BOARD`S ORDER Y Amendment of precedential decision: Per Opposer’s uncontested motion, the Board removed several sentences from the prudential opinion issued February 16, 2012.

91203113

 06/14/2012 D`S MTN TO CORRECT DATES DENIED; TRIAL DATES RESET N Motion to suspend denied: “ the Board generally will not approve a motion or stipulation to suspend or extend time for settlement negotiations that are filed between the filing of an answer and the deadline for the settlement and discovery planning conference “precisely because the discovery conference itself provides an opportunity to discuss settlement.””

92055403

 06/12/2012 P`S MOT. FOR RECONSIDERATION DENIED; PROCEEDINGS REMAIN SUSPENDED PENDING OUTCOME OF CIVIL ACTION N Motion for reconsideration of order suspending the cancellation pending outcome of civil action is denied.

91201360

 06/12/2012 PROCEEDINGS RESUMED N Applicant moved to dismissed under Fed. R. Civ. P 12(b)(6) for failure to state a claim.  Motion dismissed as the claims were properly pleaded.
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Jul 05 2012
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TTAB Decisions

Recent TTAB decisions and activity of note (5/29 – 6/10/2012)

Between May 29 and June 10, 2012, the TTAB issued many decisions Only was was precedential – it was actually the redesignation of a decision from a few weeks earlier.

There are many interesting and important rulings during this period, however including:

– motion to strike entire notice of opposition under FRCP 8 granted in part

– Opposition to the word CAVEMAN sustained based on a design mark consisting of a caveman

– ROLEX successfully opposed RALPH LAUREN RLX and RLX RALPH LAUREN

– refusal of CARDANO as primarily merely a surname reversed

– refusal of ATTORNEYYELLOWPAGES.COM reversed; decision included discussion of relevance of a very brief consent agreement

– refusal of registration of mark for failure to comply with Examining Attorney’s information requests affirmed

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

92048578

 05/23/2012 COURT`S DECISION: DISMISSED

N

 Parties consented to dismiss the CAFC appeal. Note that appellant has earlier failed to file its appeal brief and Respondent/Appellant’s registration has been cancelled by the USPTO.

92050834

 06/04/2012 PLAIN`S MOT. FOR SUMMARY JUDGMENT GRANTED

N

 Parties, both using DOGTOPIA for dog daycare services, had earlier stipulated that marks and services were similar and that sole issue was priority. The parties cross-moved for summary judgment – Defendant’s motion was based on the concurrent use application and proceeding it filed. Plaintiff found to have priority – even if its prior use was only in Cleveland, Ohio area that is sufficient under Section 2(d) for cancellation – and the petition to cancel granted. As to Defendant’s concurrent use request, the Board found material facts in dispute regarding whether there is confusion despite the geographic territories set forth in the concurrent use application.

94002441

 05/31/2012 BD`S DECISION: FAVORABLE TO APPLICANT

N

 Concurrent use agreement between the parties accepted by Board. Note that the Board’s order contains a good summary of the agreement and the  key provisions of a concurrent use agreement.

76676618

 05/29/2012 BOARD`S DECISION: AFFIRMED

N

 Application for COCO LOCO (translation: crazy coconut) for fruit juices refused under Sect. 2(d) as likely to be confused with THE CRAZY COFFEE COMPANY COCO LOCO ESRESSO & Design (translation of COCO LOGO ESPRESS = crazy coffee) for coffee and tea. As a procedural issue, Board noted that the refusal was not improper merely b/c the prior pending serial number (at the time, now the cited registration) was not listed in the suspension order during prosecution of the application; Board found applicant was not prejudiced as the examining attorney has previously noted the possible refusal. Board found that THE CRAZY COFFEE COMPANY was not the dominant feature of registered mark, but rather that the mark is comprised of two “memorable and distinct elements: THE CRAZY COFFEE COMPANY and the COCO LOGO ESPRESSO logo.” Board affirmed refusal (“the marks are similar, the goods are related, move in the same channels of trade and are sold to the same consumers”).

77314375

 05/31/2012 BOARD`S DECISION: AFFIRMED

N

 Refusal of TEEN PSYCHIC for a variety of services in Class 41 and 45 including psychic services as merely descriptive under Section 2(e)(1). Board affirmed the refusal.

77500870

 06/07/2012 BOARD`S DECISION: AFFIRMED

N

 BUCKET O’ RIBS for ‘pork ribs’ refused as generic and/or merely descriptive. Generic refusal affirmed: “The record in this case clearly establishes that BUCKET O’ RIBS is commonly used by restaurants as a generic reference to a portion or serving of ribs.” Applicant’s evidence of 14 registrations of BUCKET O ____ or similar phrases, 10 of which have been cancelled, not persuasive.

77713799

 06/06/2012 BOARD`S DECISION: AFFIRMED

N

 Refusal of THE BLACK SERIES for electric massage appliances as merely descriptive under Sect. 2(e)(1) because the items feature the color black affirmed. Applicant’s argument that black denoted luxury or premium quality was not persuasive.

77777885

 05/31/2012 BOARD`S DECISION: AFFIRMED

N

 Applicant’s BITE ME mark for pet food stuff, namely edible greetings in the form of panels, biscuits and chips refused under Section 2(d) as likely to be confused with 3 cited registrations owned by 2 entities. The cited marks contained BITE ME and were for pet goods or services. Refusals affirmed.

77785797

 06/05/2012 BOARD`S DECISION: AFFIRMED

N

 YUMMY TUMMY for “potato chips; potato crisps; potato crisps and chips” refused under Sect. 2(d) due to likelihood of confusion with ORGANIC YUMMY TUMMY INTSANT OATMEAL for instant oatmeal. “Yummy Tummy” found dominant feature of registered mark; evidence of two other registrations using the phrase not persuasive that the term is weak and diluted.  Third party registration evidence showed that several marks are used in connection with both goods. Refusal affirmed.

NOTE – the third party registration showing the goods are similar appear to be house marks or store names that cover many products.

77920248

 05/29/2012 BOARD`S DECISION: AFFIRMED

N

 PROGRADE for safety aids (“Safety aids, namely, non-metal television, door, window, appliance, and drawer latches for child safety, non-metal toilet seat locks for child safety, non-metal corner guards for child safety; safety aids, namely, top of door locks and cabinet locks not made of metal for childproofing.”) refused under Sect 2(d)due to likelihood of confusion with PROGRAD for metal locks. Registrations submitted by Applicant during appeal were not considered. Find goods related – and without any restrictions on channels of trade – and offered for sale at same locations, Board affirmed refusal.

79081140

 05/31/2012 BOARD`S DECISION: AFFIRMED

N

 Applicant for LA PIEVE & Design for “Wines, spirits, liqueurs and alcoholic beverages, namely distilled spirits and aperitifs, consisting of wine, sparkling water and liqueurs” refused under Sect. 2(d) as likely to be confused with PIEVE DI SPALTENNA for wines. The marks had differing translation statements, which the Board took judicial notice that English translation of Italian word “pieve” is “parish.” Given that the goods are overlapping, Board found the marks similar in appearance and sound and affirmed the refusal.

85015573

 05/29/2012 BOARD`S DECISION: AFFIRMED

N

 Application for CHESTER’S CHOPHOUSE & WINE BAR (& Design) for ““restaurant and bar services featuring fine dining and table service; wine bar services,” refused under Sect. 2(d) due to likelihood of confusion with CHESTER’S and CHESTER’S & design mark for restaurant services (same owner) as well as CHESTER’S HAMBURGERS & Design for restaurant services. Board affirmed, finding the services overlapping and the dominant terms in all the marks identical.

85021590

 05/31/2012 BOARD`S DECISION: AFFIRMED

N

 Application for THE CHAMPAGNE LODGE & LUXURY SUITES for “hotels” refused as likely to be confused under Sect. 2(d) with CHAMPAGNE TOWERS registered for “resort hotel and restaurant services.” Board noted that applicant’s “hotel” services must be interpreted to include “resort hotel” services, and that neither the application nor registration featured any limitation on channel of trade. Finding CHAMPAGNE the dominant feature of both marks, Board affirmed refusal.

85034692

 06/07/2012 BOARD`S DECISION: AFFIRMED

N

 Application for TRITUM for “battery operated flashlights and headlamps” refused under Sect. 2(e)(1) as merely descriptive, as well as alternate ground of deceptively misdescriptive, and also for failure to comply with information request. Finding applicant failed to comply with information request (stating products had not yet been made), Board affirmed the refusal and did not need to consider the other grounds of refusal.

85063769

 06/06/2012 BOARD`S DECISION: AFFIRMED

Y

 Prior decision of April 19, 2012, re-designated as precedential

85079173

 05/29/2012 BOARD`S DECISION: AFFIRMED

N

 Applicant for COMFORT PLUS for a variety of medical products refused under Sect 2(d) for likelihood of confusion with COMFORTPLUS for “orthopedic braces.” Marks found nearly identical; goods found to possibly emanate from single source. Despite applicant’s attempted submission of third party registrations, Board found no evidence of extensive third party use of COMFORT and/or PLUS. Refusal affirmed.

85123800

 06/05/2012 BOARD`S DECISION: AFFIRMED

N

 Application for PLATFORM EQUINIX for variety of computer services refused under Sect. 6(a) for failure to disclaim “PLATFORM” as descriptive. Applicant’s arguments that its mark unitary and alliterative failed and refusal affirmed.

77005059

 06/07/2012 BOARD`S DECISION: REVERSED

N

 Refusal of application made under Section 2(f) for ATTORNEYPAGES for “providing a searchable directory of lawyers, legal service providers and information about the same through electronic means on a global computer network” based on (i) Sect. 2 (d) with ATTORNEYYELLOWPAGES.COM for online directory of attorneys registered on the supplemental register and (ii) lack of acquired distinctiveness. Applicant owned prior supplemental registration of its mark. Board found the cited registration extremely descriptive and weak and found the differences between applicant’s mark and the cited mark sufficient to be distinguishable. Applicant also cited a settlement agreement which Examining Attorney discounted as “naked” and lacking any real detail. However, Board said agreement should not be ignored because it was the result of litigation and was an “arms-length agreement.” Board thus found the marks not likely to be confused. Board also found the evidence of acquired distinctiveness sufficient under 2(f). Both refusals were thus reversed.

85230910

 06/07/2012 BOARD`S DECISION: REVERSED

N

 Application for CARDANO for variety of financial services refused as primarily merely a surname under Sect. 2(e)(4). In reviewing the rareness of the name, Board found that the number of entries submitted by Examiner Attorney was less than stated and contained duplicates; Board thus found that it is “extremely rare surname.” Board also found no evidence that it had look and sound of a surname, and other factors neutral. The rareness outweighed the other factors, and all doubts resolved in favor of applicant. Refusal reversed.

77440023

 06/05/2012 BOARD`S DEC: AFFD IN PART/RVRSD IN PART

N

 Refusal of HH HUDSON PRODUCTS & Design for machine and vehicle parts in Class 7, 9, 11, and 12 under Sect. 2(d) as likely to be confused with RLHUDSON & Design for engines and other vehicle parts. Despite differences in marks and designs, Board found marks rather similar. While evidence of 3 third parties making overlapping goods was shown by examiner, Board discounted as two of them were car manufacturers making replacements parts for their vehicles and one was the largest parts company with a very broad range of goods. Evidence from the three “would not show that consumers would expect these same goods to emanate from “regular” automotive parts manufacturers and suppliers and be sold under marks that are not the brand of the automobile manufacturer or automobile for which they are designed.” Board found goods in Class 11 (headlamps) not as similar as the other goods to the cited registrant’s goods. Refusal reversed as to Class 11, affirmed as to Classes 7, 9, and 12.

92055368

 06/01/2012 SUSPENDED PENDING DISP OF CIVIL ACTION

N

 Respondent’s motion to dismiss on the basis of insufficient service of process [FRCP 12(b)(5)]denied; even thought the petition filing was only the electronic cover sheet and exhibits. Respondent’s Motion to Dismiss under FRCP 12(b)(6) for failure to state a claim granted without prejudice; Petitioner stated no facts. Proceeding suspended pending civil action.

91199964

 05/29/2012 RESPONSE DUE 30 DAYS (DUE DATE)

N

 Applicant’s second proposed amendment to the identification of good is accepted as clearly limiting in nature. Applicant’s amendment to the drawing is accepted as not a material alteration; the addition of the wording “Standard No.” is an unregistrable component and has been disclaimed.

91198172

 06/01/2012 TRIAL DATES RESET

N

 Opposer moved to reopen its time in which to serve pretrial disclosures. Board determined that the parties did not inadvertently omit an extension of the deadline in its earlier filings with the Board. Finding that Opposer did not have ‘excusable neglect’ the motion was denied.

Note:  Opposer has subsequently withdrawn the Opposition.

91198440

 06/06/2012 TRIAL DATES RESET

N

 Opposer moved to test sufficiency of responses to Requests for Admissions. Requests 1 to 14 related to third party uses of similar marks. As this information is not generally within Applicant’s control, the motion is denied regarding these RFAs.

Requests 15 to 25 related to the accuracy of documents produced by Opposer and third parties. The motion was also denied as to these RFAs.

91199529

 06/05/2012 TRIAL DATES RESET

N

 Applicant filed an abandonment of the opposed Class 25 in its application without consent, and a withdrawal of its counter-claim. As a result, the Opposition is sustained.

91203538

 06/04/2012 TRIAL DATES RESET

N

 Opposer moved for default judgment. Opposer’s motion denied as applicant filed an Answer even though it was passed the extended deadline.

91204338

 06/06/2012 TRIAL DATES RESET

N

 Opposer moved to strike Applicant’s answer as deficient. Applicant submitted an amended answer in response. Motion granted as even the amended answer failed to conform to the requirements.

91170868

 06/07/2012 BOARD`S DECISION: DISMISSED

N

 Opposer (ROLEX) opposed registration of RALPH LAUREN RLX and RLX RALPH LAUREN for “jewelry and watches.” Opposer’s ROLEX mark found to be famous for watches and the goods of the parties identical. Applicant argued that the inclusion of its well known house mark precluded a finding of confusion. Board dismissed the Opposition under Section 2(d). Board found that the RL coming from RALPH LAUREN served to differentiate the marks sufficiently.

Note: The proceeding lasted for 6 years. Opposer’s evidence included a survey.

Will it be appealed?

91191683

 05/29/2012 BOARD`S DECISION: DISMISSED

N

 Application for LOUISIANA FASTSTART for business training services was opposed under Sect. 2(d) based on a likelihood of confusion with Opposer’s QUICK START mark registered and used with “educational services; namely, industrial training of managers and other employees of companies.” Opposer filed no evidence during its main trail period, but later filed a testimony deposition (taken prior to close of its trial period) and five notices of reliance after the close of its rebuttal testimony period. Opposer failed to introduce proper status and title copy of its registration. The notices of reliance are deemed untimely. The testimony deposition of Opposer was allowed into the record. Board found the Opposer proved it has some common law rights prior to Applicant (because it could not rely on registration) and that the services are very similar. But finding that the terms QUICK START are highly suggestive and are mostly used as “ Georgia Quick Start”, which led to finding that the marks are no similar in sound, appearance, connotation or commercial impression, the Board concluded that “that opposer has failed to shown by a preponderance of the evidence that the use of Louisiana FastStart on applicant’s services will result in a likelihood of confusion with the Quick Start mark” and dismissed the opposition.

91180851

 06/07/2012 BOARD`S DECISION: SUSTAINED

N

 Registrant’s ICEWEAR & Design for clothing challenged under Section 2(d) based on Petitioner’s registration and use of ICEBERG and ICE for clothing. Opposer’s evidence consisted of its registrations and printed materials showing its mark in connection with its goods. Applicant submitted no evidence and no brief. Board sustained the Opposition finding the marks similar and the goods overlapping.

91192340

 05/29/2012 BOARD`S DECISION: SUSTAINED

N

 Opposition to CAVEMAN for decals, stickers, and clothing under Sect. 2(d) based on Opposer’s alleged prior use of CAVEMAN for clothing, and registration of a caveman design mark. Board found the design mark to have same meaning and commercial impression as Applicant’s CAVEMAN word mark. Goods in Class 25 found overlapping; goods in Class 16 found not related. Opposition sustained for Class 25, dismissed for Class 16.

91195088

 06/04/2012 BOARD`S DECISION: SUSTAINED

N

 Opposition to FEDERAL FIDELITY BANK & TRUST [& design] based on Opposer’s use and registration of many FIDELITY marks. Applicant submitted no testimony and no brief, and Opposer’s testimony included unanswered Requests for Admissions to applicant. Board, based on the record, sustained the Opposition: “[T]he absence of any evidence of third-party use or registration of FIDELITY in connection with similar services suggests that FIDELITY is a unique term in the financial field, and thus more likely to create confusion when used in both applicants’ and opposer’s marks.” [NOTE: USPTO records actually show many third party registrations containing FIDELITY for financial services.]

91195090

 06/04/2012 BOARD`S DECISION: SUSTAINED

N

 Opposition to “FIDELITY FEDRAL BANK AND TRUST OF FLORIDA” for banking services on 2(d) grounds. A pplicant submitted no testimony and no brief, and Opposer’s testimony included unanswered Requests for Admissions to applicant. Board, based on the record, sustained the Opposition: “[T]he absence of any evidence of third-party use or registration of FIDELITY in connection with similar services suggests that FIDELITY is a unique term in the financial field, and thus more likely to create confusion when used in both applicants’ and opposer’s marks.” [NOTE: USPTO records actually show many third party registrations containing FIDELITY for financial services.]

92053739

 06/04/2012 BOARD`S DECISION: DISMISSED W/ PREJUDICE

N

 Petition to Cancel LAKESIDE for a musical band’s services based on alleged prior use of identical mark for identical services. Respondent moved to dismiss for failure to prosecute as Petitioner submitted no testimony. Board ruled that “[P]etitioner’s testimony period has expired and petitioner has neither taken any testimony nor submitted any other admissible evidence.  Without testimony or other admissible evidence, petitioner has not met and cannot meet its burden of proof.  Accordingly, respondent’s motion to dismiss under Trademark Rule 2.132(a) is hereby GRANTED, judgment is entered against petitioner and in favor of respondent and the petition for cancellation is dismissed with prejudice

91192645

 05/29/2012 BD`S ORDER RE TELEPHONE CONFERENCE; TRIAL DATES REMAIN AS SET

N

 Applicant moved for a protective order, Opposer cross-moved for sanctions. Applicant’s counsel indicated its witness was unavailable for scheduled deposition (pursuant to an earlier Board order) due to a head injury. Opposer’s counsel relayed suspicions. Applicant’s counsel confirmed (after the date of the scheduled deposition) that the witness had traveled to Germany for a conference. Motion for sanctions denied as premature; parties indicated they were cooperating to complete the deposition, and motion for protective order deemed moot.

91125116

 06/08/2012 BOARD`S ORDER TRIAL DATES REMAIN AS SET

N

 Applicant’s motion for reconsideration and motion to extend its testimony period both denied. Applicant did not show good cause for extension. “In particular, the Board is troubled by applicant’s failure to provide any information regarding its diligence in deposing the witness in the face of time constraints which had not only been articulated by opposers but which were set down in an agreement and then the subject of reminders to applicant during the deposition”

91176159

 06/01/2012 BOARD`S ORDER TRIAL DATES RESET

N

 Opposer moved for reconsideration of Board order denying its motion to compel as untimely. The motion to reconsider is denied.

91194679

 05/29/2012 CROSS-MOTIONS; DENIED; PROCEEDINGS RESUMED

N

 Opposition to INDEPENDENT NATION & Design for publication of electronic magazines, blog, etc. Opposed by user and registrant of INDEPENDENT NATION for “advertising and promotion” of his book of the same name, as well as for an “Internet news portal” and “online community,” and a Web site, “online forum” and blog in the fields of news, politics, media, social issues, public affairs and entertainment. Opposer moved for Summary Judgment and applicant cross-moved. Opposer’s motion based in part on unanswered requests for admission it sought to have deemed admitted. But Applicant had submitted late response to the RFAs which Board deemed a motion to withdraw the deemed admissions and granted such motion. Finding genuine issues of material fact, Board denied the cross motions for summary judgment.

91201700

 06/07/2012 DATES REMAIN AS PREVIOUSLY SET

N

 Opposer moved to compel responses to interrogatories and documents requests without objections. Motion granted:  “applicant has made no showing that its failure to respond to the discovery requests in a timely manner was the result of excusable neglect”

91203721

 06/04/2012 DISMISSED AS A NULLITY; APPLICANT ALLOWED 30 DAYS TO FILE A REDACTED COPY OF ITS ABN

N

 Opposition dismissed as null: Request for extension of time to Oppose was filed by Mann (Suyen’s attorney). Opposition was clearly intended to be filed by Suyen (even though it references Mann in the electronic cover sheet).

91202201

 06/04/2012 MOTION TO QUASH AND PROTECTIVE RELIEF GRANTED

N

 Opposer’s motion to quash the deposition of Opposer’s counsel granted. Applicant sought to depose Opposer’s counsel on the grounds that counsel signed Opposer’s interrogatory responses. Opposer’s counsel is not an agent of the corporation. Board also noted that the verification signed by Opposer was insufficient: “as it is neither sworn to under oath or notarized and therefore, opposer’s answers are not properly signed by opposer under Fed. R. Civ. P. 33(b)(3) and (5).”

91199542

 06/05/2012 P`S MOT. TO COMPEL GRANTED, IN PART, DENIED, IN PART; TRIAL DATES RESET

N

 Opposer moved to compel, and the motion was granted in part.

91198263

 05/30/2012 P`S MOT. TO COMPEL GRANTED; TRIAL DATES RESET

N

 Opposer (the rock band CREED) moved to compel discovery responses. Motion granted. Applicant (CREED COMICS) must response without objection.

92053738

 05/29/2012 PROCEEDINGS RESUMED

N

 Petitioner moved for judgment as a sanction for Respondent’s alleged failure to comply with prior Board order granting Petitioner’s motion to compel. While Respondent served discovery answered, they were very late. Board granted motion but not the requested judgment. Respondent was sanctioned:

“• respondent’s concession that there is a likelihood of confusion between the parties’ marks is accepted, and petitioner need not prove likelihood of confusion at trial, as it is now established;

• discovery is closed for respondent;”

• petitioner is entitled to follow-up discovery within the time period set herein; and

• petitioner shall promptly bring any further discovery deficiencies to the Board’s attention and the issue will be promptly resolved via teleconference, and in the event respondent fails to participate in such a teleconference, or the discovery process, as ordered, judgment shall be entered against respondent on petitioner’s motion.

In other words, the only issues remaining for trial are priority and laches.

91198182

 06/05/2012 PROCEEDINGS RESUMED

N

 Opposer moved to compel. Applicant filed an untimely response brief, but Board exercised its discretion to consider the motion on the merits. Finding applicant’s responses to specific document requests and interrogatories insufficient, Opposer’s motion granted. Opposer’s motion to test the sufficiency of applicant’s responses to admission requests at issue is granted to the extent that applicant must serve amended answers to multiple requests.

91200192

 06/06/2012 PROCEEDINGS RESUMED

N

 Applicant moved to dismiss pursuant to FRCP 12(b)(6). Applicant’s motion to dismiss denied as to opposer’s claim of priority and likelihood of confusion. However, Opposer’s claim of deceptiveness under Sect. 2(a) is stricken.

91201700

 06/04/2012 PROCEEDINGS RESUMED

N

 Opposer’s motion to compel granted. Applicant ordered to “(1) serve amended responses without objection to opposer’s first set of interrogatories and first set of document requests; (2) select, designate and identify the items and documents, or categories of items and documents, to be produced without objection in response to opposer’s first set of document requests; and (3) notify opposer that the selection, designation and identification of such items and documents has been completed.” Requests for admissions are deemed admitted; while Applicant submitted late responses, it did not show any excusable neglect.

91204116

 06/01/2012 PROCEEDINGS RESUMED

N

 In response to notice of opposition to the mark EVIL DEAD, Applicant moved to strike the entire notice of opposition under FRCP 8 because it was not a “short and plain” statement, but 61 pages. Motion to strike granted in part: “A review of the pleading shows that it consists of redundant and repetitive allegations as well as immaterial, irrelevant or impertinent matter.”
Tagged
Jul 02 2012
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TTAB Decisions

TTAB finds that configuration of a Hershey bar is registrable trademark

In an non-precedential decision issued last week, the Trademark Trial and Appeal Board found the configuration shape of a Hershey candy bar (“The mark is a configuration of a candy bar that consists of twelve (12)  equally-sized recessed rectangular panels arranged in a four panel by three panel format with each panel having its own raised border within a large rectangle”), which has been used since 1968, is not functional as a whole. The Board therefore reversed the examining attorney’s refusal and then found that Hershey has provided sufficient evidence to demonstrate the design had acquired distinctiveness.

While the Board agreed with the examiner that the scoring of the candy bar is functional -and is a feature used by other candy bar makers – it noted that “applicant is seeking to register a candy bar comprising all of the elements shown in the drawing and in the description of the mark, i.e., “twelve . . . equally-sized recessed rectangular panels arranged in a four panel by three panel format with each panel having its own raised border within a large rectangle..”” In other words, the configuration is more than just scoring but includes the borders and the layout of the scores.

“[E]even if certain features found in applicant’s candy bar design are functional and common to other candy bars, it does not necessarily follow that the overall appearance of applicant’s candy bar configuration is functional.”

The Board had no problem accepting Hershey’s evidence of acquired distinctiveness (Applicant had admitted that the configuration was not inherently distinctive and sought registration under Section 2(f)) which included a survey as well as a declaration regarding the extensive use, sales and advertising number associated with goods bearing the mark. And the Applicant demonstrated its use of “look for” advertising, which can be key in showing acquired distinctiveness of a non-traditional trademark (see UPS brown mark and its use of “What can brown do for you?” as a great example)

Follow up question: Would it be prudent if the USPTO required Applicants of a configuration mark like this one to define the configuration elements they seek to protect with more specificity and/or to disclaim the elements that are not being protected?  See the current Louboutin red sole dispute for another mark where the arguable imprecise boundaries of what is claimed and what is protected  by the trademark registration matter.

The full opinion of the Board (PDF) is here: http://ttabvue.uspto.gov/ttabvue/ttabvue-77809223-EXA-15.pdf

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