TTAB Decisions | TTABulator

Jun 20 2012

Recent TTAB decisions and activity of note (5/21 – 5/28/2012)

During the week of May 21 – 28, 2012, the TTAB issued no precedential decisions. But it issued several dispositive rulings as well as important findings on procedure, evidence, and discovery. Also note that one appeal to the CAFC was instituted.

Here is a rundown of the activity of note from the TTAB in the week [visit http://ttabvue.USPTO.gov to view any of the proceeding and documents]:

Proceeding No.	Date	TTAB Disposition	Precedent?	Notes
91164764	05/21/2012	PL`S MOT. FOR SUMM. JUDGMENT DENIED	N	Opposer, owner of registrations for BRINKS and BRINK’S for security products, moved for partial summary judgment in its Opposition to BRINKMANN, for home security systems and components therefor, on applicant’s Morehouse defense regarding Opposer’s dilution claim. Opposer argued that the goods in the Applicant’s registrations are not the same or essentially the same as the goods recited in applicant’s involved application. Applicant contends that the Morehouse defense applies to the dilution claim given Opposer’s failure to challenge its prior registrations and various third party registrations. Board found that while there are no relevant material facts at issue, Opposer was essentially seeking an advisory opinion as to whether or not applicant’s modified Morehouse defense is applicable to opposer’s dilution claim. Board refused to issue such an opinion before trial as it would not address the pleaded likelihood of confusion claim which may be dispositive. Note that Opposition was instituted more than seven (7) years ago and Opposer on June 15, 2012, moved the Board to extend discovery by an additional 60 days.
91198922	05/23/2012	PL`S MOT. FOR SUMM. JUDGMENT DENIED	N	Plaintiff (The Clorox Co.) moved for summary judgment in its opposition against CLOROTEC & Design (diamond shaped) for “electrolysis cell for use in the manufacture of various ionic solutions.” Motion denied as Board found material facts in dispute as to relatedness of goods and similarity of marks.
91202371	05/24/2012	PL`S MOT. FOR SUMM. JUDGMENT DENIED	N	Opposer moved for summary judgment on res judicata and collateral estoppel grounds based on prior decision of the Board in a different Opposition. Board found that claim preclusion did not apply because of the addition of design elements in Applicant’s mark. As to issue preclusions, Board granted motion in part as to the similarity of the good and services since they are identical to prior proceeding, and denied it as to any other issues.
77509917	05/24/2012	BOARD`S DECISION: AFFIRMED	N	The BENTHRASHER mark of Applicant Ben Thrasher refused under 2(d) as likely to be confused with two registrations issued to High Speed Productions, Inc. (“HSP”) for THRASHER and a third registration issued to the Atlanta Hockey Club, Inc. (“AHC”) for THRASHERS, between whom there is a consent agreement. The applied for mark and the cited marks are all for clothing. Third party registrations submitted for first time with Applicant’s brief were ignored as untimely. Applicant’s attempts to limit the scope of the registrants goods improper (“The law is clear that the question of likelihood of confusion must be determined based on the identification of goods in the application and cited registration, regardless of what the record may reveal as to the actual nature of the goods, the particular channels of trade or the class of purchasers to which the goods are directed.” Evidence of third party registrations by Applicant dismissed because none of them were for the relevant goods. Evidence of use of the term THRASHERS by others in the field dismissed as being insufficient. As a result, Board affirmed the refusal. [NOTE: I disagree with the finding as I believe the commercial impression of BENTHRASHER is that of a personas name, not of an activity or a thing, and that it is further distinguished by the lack of space between the words. Furthermore, the register is already somewhat diluted by the two registrants even if there is a consent agreement between them.]
77709106	05/22/2012	BOARD`S DECISION: AFFIRMED	N	Refusal of BONE YARD INDUSTRIES & Design for gloves, shirts, hats and sweatshirts under Section 2(d) as likely to be confused with registrations, both from same entity, for BONE YARD & Design (tshirts and hats) and BONEYARDS (belts, footwear, pants, shirts, shorts, tshirts). Applicant argued that the cited registrant is not using the mark, but this argument refused as an impermissible collateral attack. Refusal affirmed: marks found similar and goods overlapping.
77738221	05/23/2012	BOARD`S DECISION: AFFIRMED	N	THE BIG RIG MATTRESS refused as descriptive under Sect. 2(e)(1) for mattresses (with MATTRESS disclaimed). Applicant’s double entendre argument fell short; Board affirmed refusal. (“To qualify as a double entendre, the second non-descriptive meaning of the mark must be immediately apparent to the consumer.”
77874764	05/21/2012	BOARD`S DECISION: AFFIRMED	N	BIG YANK in Class 18 (luggage) and 25 (clothing) refused under 2(d) with registered marks YANK for clothing and luggage goods. Refusal affirmed: Goods are overlapping; addition of big is not sufficient to differentiate the marks. Applicant’s cited its ownership of prior registrations, now expired, for BIG YANK. Applicant tried to cite registrant’s statements in its application traversing a 2(d) refusal with the then-registered BIG YANK mark. But the file history was not of record and Board did not take judicial notice; Board hinted that outcome might be different as to some of the goods if such evidence properly of record.
77888783	05/24/2012	BOARD`S DECISION: AFFIRMED	N	Refusal of SIERRA WHITE for granite and stone under Sect. 2(d) with SIERRA STONE registered for “cast stone.” Refusal affirmed; “WHITE” is descriptive and “STONE” generic.
77928112	05/22/2012	BOARD`S DECISION: AFFIRMED	N	Applicant’s mark, CIVITA for real estate development, refused under 2(d) with: – CIVITAS for “landscape architecture, and urban planning and design” – SEVITA and SEVITA logo both for financial and real estate services Board affirmed refusal finding marks similar and the services may emanate from the same source (relying on third party registrations). (The order was mistakenly identified as precedential in Board’s order, but a subsequent order corrected it.)
77931954	05/23/2012	BOARD`S DECISION: AFFIRMED		Refusal of design mark featuring a silhouette skateboarder and a skateboard for clothing under Section 2(d) as likely to be confused with registered design mark for clothing also featuring silhouette of skateboarder and skateboard. Applicant’s argument that sophisticated purchasers would distinguish the designs fails because the channels of trade are not limited. Refusal affirmed.
77956966	05/23/2012	BOARD`S DECISION: AFFIRMED	N	GROWSMART for soils refused as likely to be confused under 2(d) with SMARTGROW registered for “Animal and human hair used as a fertilizer, for moisture retention, and an all-natural growth enhancement.” Board affirmed finding goods overlapping, and the words in the marks identical but merely reversed.
85024647	05/23/2012	BOARD`S DECISION: AFFIRMED	N	WILD BY NATURE for pet food refused under 2(d) due to several BY NATURE registrations for pet food and similar items owned by one registrant. Applicant’s untimely third-party evidence submitted with its brief not considered. Refusal affirmed “[i] n view of the similarity of the marks, the legal identity of the goods and the presumption that the goods move in the same channels of trade and are sold to the same classes of consumers.”
85028579	05/21/2012	BOARD`S DECISION: AFFIRMED	N	Refusal of NEIGHBORHOODJOINTS for variety of Class 35 services under Sect. 2(e)(1) affirmed: “In short, it would be an impediment for competitors offering restaurant ratings or management services or for the public using such services to try to describe them if applicant were allowed to register “NEIGHBORHOODJOINTS.””
85048891	05/24/2012	BOARD`S DECISION: AFFIRMED	N	Refusal under Section 2(d) of TJ’S PIZZERIA for restaurant services due to likelihood of confusion with TJ’S SUBS for restaurant and fast food services featuring sandwiches and subs is affirmed. TJ’S portion is identical and dominant portion of both marks.
77781694	05/24/2012	BOARD`S DECISION: REVERSED	N	Application for TIF for ‘turfgrass’ refused under 2(d) as likely to be confused with TifBlair The Certified Centipede [& Design] for grass seed. Board permitted consideration of third party registration submitted by Applicant during the appeal for the first time b/c the registration issued after the appeal was commenced. Board reversed the refusal; ‘TifBlair’ is a generic varietal name and thus afforded less weight.
77865028	05/24/2012	BOARD`S DECISION: REVERSED	N	Refusal of GREEN DOOR for “an adult-themed social club for engaging in adult-themed erotic activities, excluding restaurant and bar services” under 2(d) with THE GREEN DOOR for ‘restaurant and bar services’ reversed. Mark found essentially identical but services found quite different. “Evidence that applicant’s club may in fact include a bar and may provide alcoholic drinks to its members (and the evidence of record is contradictory on these points) does not establish a similarity between applicant’s sex or “swingers” club and registrant’s restaurant and bar.” Board seemingly indicated that finding may have been different if additional evidence made of record.
85135800	05/25/2012	BOARD`S DECISION: REVERSED	N	Descriptiveness refusals of NEWTRITIOUS and INSTANT NEWTRITION for powdered supplement drink mixes reversed by the Board. Evidence submitted by Applicant during appeal ignored. “[A] mark is not merely descriptive if a portion of the mark “creates a separate commercial impression, such that the mark as a whole has a double entendre, with one meaning that is not merely descriptive.”” Examiner’s 3rd party evidence was ambiguous – several of the uses were as a trademark or trade name.
91187118	05/22/2012	APPEAL TO CAFC	N/A	Appeal to CAFC filed by Applicant by AMAZON VENTURES after TTAB sustained Opposition by Amazon.com
91177768	05/21/2012	RECONSIDERATION DENIED	N	Applicant moved for reconsideration of ruled denying summary judgment on a fraud claim. Board denied motion, noted that no new issues or facts were raised. NOTE that ruling on motion for reconsideration issued 10 months after the filing of the request for reconsideration and 2.25 years after the MSJ was first filed.
92053863	05/22/2012	SUSPENDED PENDING DISP OF CIVIL ACTION	N	Motions to suspend pending civil proceeding and quash deposition granted despite fact that Respondent has already noticed a 30(b)(6) deposition. Board noted that civil action deemed commenced once it is filed, even if it has not yet been served.
91189221	05/25/2013	SUSPENDED PENDING DISP OF CIVIL ACTION	N	Board proceeding suspending pending outcome of a foreign appeal related to the same mark, as the foreign proceeding could potentially affect registration rights in the US.
92055005	05/22/2012	SUSPENDED PENDING DISP OF OUTSTNDNG MOT	N	Petitioner moved for a 90 days enlargement of time to respond to Respondent’s Motion for Summary Judgment. Motion granted in part: Petitioner allowed 30 days to respond to MSJ issues or to request suspension at the Board pending the motion to vacate District Court ruling.
91201933	05/22/2012	RESPONSE DUE 30 DAYS (DUE DATE)	N	Applicant’s amendment of correspondence address denied as neither a proper request for withdrawal of counsel nor a revocation of applicant’s power of attorney was filed.
91204026	05/22/2012	RESPONSE DUE 30 DAYS (DUE DATE)	N	Applicant moved, with consent, to amend its mark from A BULLY FREE WORLD to A WORLD FREE OF BULLYING, and to amend its identification of goods from “Rubber or silicon wristbands in the nature of a bracelet” to “Wrist-bands”. Proposed amendment to drawing denied. Proposed amendment to ID denied as broadening the current ID.
92054205	05/23/2012	TRIAL DATES RESET	N	Respondent moved to compel responses to interrogatories and RFP, and to test sufficiency of Petitioner’s untimely responses to requests for admissions (RFAs). Motion to compel granted as to interrogatories and RFP; Petitioner ordered to respond w/o objections as to the merits. Motion to deem RFAs admitted denied and Petitioner’s motion to withdraw admissions granted.
91202032	05/24/2012	TRIAL DATES RESET	N	Applicant moved to dismiss/strike Opposer’s claim of lack of a bona fide intent to use the mark after Opposer’s pleading referenced statements by Applicant’s attorney made in the course of settlement negotiations. Applicant’s motion denied; Board did not address FRE 408 issues.
92049332	05/21/2012	BOARD`S DECISION: DISMISSED W/ PREJUDICE	N	Opposition to BACKRACK for ‘pick-up truck racks’ on grounds of genericness denied: “We find that the evidence of generic use of respondent’s BACKRACK mark is offset by evidence of the overall context of respondent’s trademark use of the term BACKRACK, a less than rigorous but sufficient level of policing and control over use of the mark by others, recognition of the trademark significance of the mark by competitors and sellers, and a lack of evidence that the primary understanding of the term BACKRACK to end-purchasers of headache racks is as a generic term.”
91198679	05/23/2012	BOARD`S ORDER TRIAL DATES ARE RESET	N	Applicant’s motion for sanctions denied; Applicant had not previously filed motion to compel.
92053415	05/23/2012	BOARD`S ORDER TRIAL DATES RESET	N	Respondent’s motion to compel denied b/c Respondent did not make a good faith effort to resolve before filing with Board. Petitioner’s motion to compel discovery deposition appearance of Respondent’s 30(b)(6) witness granted to ensure witness is available before departing U.S. for 2 months.
91204197	05/23/2012	CONSOLIDATED – PARENT; SUSPENDED	N	Motion to consolidate granted; motion to suspend deferred until Answer filed in Civil action.
91201442	05/23/2012	CONSOLIDATED – PARENT; TRIAL DATES RESET	N	Motion to consolidate granted even though one proceeding was almost at end of discovery
91204280	05/21/2012	DISCOVERY CONFERENCE ORDER; D`S AMENDMENT TO APPLICATION DENIED WITHOUT PREJ; TRIAL DATES REMAIN AS	N	Applicant’s proposed amendment to its dates of use denied w/o prejudice; Applicant did not submit requisite declaration.
91204457	05/23/2012	D`S MOT. TO DISMISS GRANTED W/LEAVE TO AMEND; TRIAL DATES RESET	N	Applicant moved to dismiss for failure to state a claim. Motion granted: Opposer “[m]erely identifying its claims on the notice of opposition, without setting forth factual allegations to support such claims, does not constitute a proper pleading.”
91193955	05/24/2012	MOTION FOR SANCTIONS; DENIED; TRIAL DATES RESET	N	Board earlier granted Opposer’s unopposed motion to compel; Applicant then served supplemental discovery response. Opposer now moved for sanctions. While Board denied motion, it chastised applicant: “in view of applicant’s dilatory and obfuscatory conduct with respect to discovery which, in our view, has resulted in an unnecessary motion to compel and motion for sanctions, some sanctions are warranted in this matter. While not necessarily a sanction, we initially note that as a general “estoppel” rule, applicant may not rely on any information and documents that are responsive to opposers’ discovery requests but were not disclosed or produced during discovery.”
92054095	05/22/2012	PROCEEDINGS RESUMED	N	Petitioner moved to compel Respondent to designate one or more officer for 30(b)(6) deposition. Board granted motion.
92054870	05/24/2012	PROCEEDINGS RESUMED	N	Respondent’s motion interpreted as a 12(b)(6) motion to dismiss for failure to state a claim. Several claims found sufficient, but fraud claim found lacking: “Here, the petition to cancel fails to sufficiently set forth factual allegations that respondent had no reasonable basis for believing that no one else had the right to use the mark in commerce at the time it filed the application for the mark THE SPICE HOUSE.”
91188847	05/21/2012	PROCEEDINGS RESUMED	N	Opposer moved to test sufficient of responses to requests for admissions. Where applicant admitted or denied the RFA but provided additional clarification as well, Opposer’s motion denied. As to other Requests, Opposer’s motion denied where propounded for an improper purpose: “The requests for admissions at issue are not for purposes of limiting factual issues in this case.”
91200187	05/24/2012	PROCEEDINGS RESUMED	N	Opposer’s motion to compel granted in part and many of Applicant’s objections overruled. Motion to compel regarding requiring Applicant’s signature (“Applicant is an individual, not a corporation, and therefore, applicant’s counsel cannot sign on behalf of applicant as an agent, although objections to interrogatories must be signed by counsel.”)
91202546	05/21/2012	PROCEEDINGS RESUMED	N	Applicant’s 12(b)(6) motion denied as to Section 2(d) claim, granted as to ‘false suggestion of a connection’ claim, dilution claim, and deceptiveness claim.

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Jun 11 2012

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TTAB Decisions

Recent TTAB Decisions and Activity of Note (5/14 – 5/20/2012)

During the week of May 14 – 20, 2012, the TTAB issued one precedential decision [in which our firm is involved as counsel]. It also issued several important findings on procedure and discovery – including a sanction of dismissal for failure to comply with discovery requirements; a ruling that a “free service” is still a use in commerce; the denial of multiple requests for suspensions; and the denial of one mark due to an act of Congress.

Here is a rundown of the activity of note from the TTAB in the week [visit http://ttabvue.USPTO.gov to view any of the proceeding and documents]:

Proceeding No.	Date	Disposition	Precedent?	Notes
91193223	05/17/2012	DEF`S MOTION FOR SUMMARY JUDGMENT DENIED	N	Opposer (LA MORENTI BRAND & Design for cheese) asserted likelihood of confusion and fraud. Applicant (MORENITO and LA MORENITA for tortillas and other foods) moved for summary judgment on issue of priority. Applicant’s argument based on the fact that Opposer’s sales information came from third parties (Wal-Mart) and is hearsay and/or inadmissible. Board overruled hearsay objection, but found genuine issue of material fact at dispute.
94002493	05/17/2012	BD`S DECISION: FAVORABLE TO APPLICANT	N	Thompson Cree sought concurrent use registration of TRUST YOUR HOME TO THOMPSON CREEK in all areas except California. The submitted agreement between the parties deemed acceptable by the Board and concurrent registrations granted.
77689692	05/17/2012	BOARD`S DECISION: AFFIRMED	N	Refusals to register SPOTLIGHT and SpotLight & Design for animal tracking/locating devices and services under Sect. 2(d) for likelihood of confusion with SPOTLIGHT for pet leashes affirmed. Mark found virtually identical and leashes and GPS collars found to be sold by the same source or in same channels of trade.
77689799	05/15/2012	BOARD`S DECISION: AFFIRMED	N	Refusal to register AST for supplements in class 5 under section 2(d) as likely to be confused with AST SPORTS SCIENCE for supplements affirmed.
77950529	05/17/2012	BOARD`S DECISION: AFFIRMED	N	Refusal to register WEBASSSETS for “computer software for management of energy industry asset related data” under Section 2(e)(1) affirmed
77950537	05/16/2012	BOARD`S DECISION: AFFIRMED	N	Refusal to register WEBOMS for computer software for outage management under Sect. 2(e)(1) affirmed. Term deemed to be combination of “web” and “OMS” [outage management system].
85025722	05/16/2012	BOARD`S DECISION: AFFIRMED	N	Application for RUDI’S GLUTEN-FREE BAKERY for bakery products refusd under Section 2(d) as likely to be confused with RUDI’S and RUDI’S & Design for ‘bakery products.’ Prior consent agreement did not cover the mark at issue. Refusal affirmed dispute Applicant’s prior registrations for related marks an identical goods.
77734610	05/18/2012	BOARD`S DECISION: REVERSED	N	Quicksilver’s application for SURF COUTURE for “Optical goods, namely, eyewear, sunglasses, spectacles and goggles for sports; recorded materials, namely, digital video discs and CDROMs featuring sports, recreational activities, music and fashion” (Class 9) and “Travel bags, luggage, carry-all bags, handbags, beach bags, tote bags, bath bags, namely, bags used to carry goods used in the bath, sports bags, backpacks, purses, wallets, satchels, brief cases, attaché cases, suitcases, key cases, valises; umbrellas” (Class 18) and clothing in Class 25 refused as descriptive under 2(e)(1). Refusal reversed by Board: “the evidence made of record by the examining attorney is insufficient to support a finding that, as applied to applicant’s goods, the mark SURF COUTURE would immediately describe, without conjecture or speculation, a significant characteristic or feature thereof.” Notably, two of five Nexis articles used by Ex. Atty. were from outside US.
79048804	05/14/2012	BOARD`S DECISION: REVERSED	N	Christian Dior’s application for a design patter for optical goods, furniture and other items refused as ornamental under Sect. 1,2, and 45 of the Trademark Act Applicant argued that its mark should be registered because its two prior registrations establish secondary source. Applicant’s prior registrations were pursuant to Section 44(e), Section 8 affidavits of use had been submitted. Board reversed the refusal: “in view of the fact that applicant is the owner of two registrations, issued under Section 44 and for which affidavits of use under Section 8 have been accepted, for a mark that is identical to the applied-for mark, this shall be accepted as showing of secondary source, applicant has shown that its mark serves a source-identifying function. TMEP § 1202.03 (c).
85074276	05/16/2012	BOARD`S DECISION: REVERSED	N	Refusal of FIREBRIX (for fire lighters; solid fire starters) under 2(d)(1). The Board reversed, finding Wikipedia and other definitions relevant, and finding examining attorney’s evidence (definitions and 5 webpages showing use) insufficient.
94002528	05/14/2012	RESPONSE DUE 30 DAYS (DUE DATE)	N	The Board reviewed a concurrent use agreement between 3 parties. The board found several discrepancies and unclear terms in the agreement and gave the parties 30 days to file an amended agreement.
91203073	05/17/2012	RESPONSE DUE 30 DAYS (DUE DATE)	N	The mark which was subject to the Opposition was filed under Trademark Act Sect. 66(a). During the proceeding, the USPTO received notification from the International Bureau that the international registration, upon with the US application was based, had been cancelled. As a result, Board issued a show cause order for Applicant to show cause why its failure to maintain the international registration should not be the equivalent of an abandonment without consent. “If, in response to this order, applicant submits a showing that the failure to maintain the international registration was the result of inadvertence or mistake, judgment will not be entered against it.”
91182377	05/17/2012	TRIAL DATES RESET	N	Plaintiff allowed some of its registrations to lapse by failing to file a Section 8. Board entered judgment as to those registrations on 2(d) grounds rather than abandonment: Plaintiff “failed to show that discontinuation of use of that mark was not made for the purpose of avoiding a judgment with regard to that registration on Television’s pleaded claim under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).”
91196325	05/14/2012	TRIAL DATES RESET	N	Applicant moved to extend time to serve initial disclosures for a 2nd time after its first such motion was granted. Applicant showed good cause and motion granted, though Applicant cautioned regarding additional extensions.
91203404	05/17/2012	TRIAL DATES RESET	N	Applicant moved to extend time to serve initial disclosures. Applicant’s recent change of counsel found to constitute good cause and motion granted.
91203898	05/14/2012	TRIAL DATES RESET	N	Applicant counterclaimed seeking to deny Opposer’s pending applications. Board found that any opposition to the registrations is premature and denied motion.
91196483	05/14/2012	BD`S DECISION: DISMISSED W/ PREJUDICE	N	Board issued an order to show cause why Opposition should not be dismissed due to Opposer’s failure to submit a brief. Opposer responded and showed continued interest and the show cause order was discharged. However, “because opposer failed to file a motion to reopen pursuant to Fed. R. Civ. P. 6(b)(1)(B), the brief on the case will be given no consideration.” Opposer submitted no testimony or evidence. Applicant’s answer did not admit any dispositive allegations. “In view thereof, judgment is hereby entered against opposer, and the opposition is dismissed with prejudice.”
91174249	05/14/2012	BOARD`S DECISION: SUSTAINED	N	Opposition on 2(d) and dilution grounds to LYNXMASTER and logos for metal garage door hardware and electric garage openers. Opposer alleged prior use and registration of LIFTMASTER and LIFT-MASTER in connection with “overhead door operating systems.”Evidentiary issues:“Opposer objects to the introduction of information pertaining to previous oppositions, cancellations and settlement agreements involving opposer and unrelated third parties as irrelevant to the present action. We have previously noted that the settlement agreements are not admissible as they were submitted under notice of reliance; such evidence may only be submitted as an exhibit to a testimony deposition or by stipulation. On the other hand, information pertaining to prior oppositions and cancellations that is contained in the TTABVUE printouts or file histories thereof is relevant to the issue of the strength of opposer’s mark, as it serves to show opposer’s enforcement efforts.” Opposer’s submission of foreign trademark registration found irrelevant and excluded from consideration.Likelihood of confusion: Parties found to operate in same channels of trade, and their products, while not identical, found complimentary. Board found the marks similar. Opposer’s found famous among professionals and commercially strong among homeowners. Accordingly, the Board sustained the Opposition. Note: Applicant’s motion to amend its description of goods denied as well: “Amendment of the identification of goods to restrict the trade channels in applicant’s applications would not avoid a likelihood of confusion because both parties sell directly to this professional market.”
91194783	05/17/2012	BOARD`S DECISION: SUSTAINED	N	IKEA (furniture and related goods/services) Opposed NIKEA for chocolates, candy. Board found the marks similar and goods identical in relevant part (“Opposer sells, among its other products, “sweets and chocolates.” These are sold via restaurants at every IKEA store and also as retail products at each one.”). Board found IKEA not shown to be famous on the record: “We conclude that while opposer has shown a fair amount of market exposure over the time period provided, opposer has not provided clear context for its sales and advertising numbers with regard to the industry, nor as to how the fame.” Board sustained the Opposition.
91199018	05/14/2012	BOARD`S DECISION: SUSTAINED	N	Applicant’s motion to suspend denied: applicant did not establish good cause and it was previously advised that it if its representative was outside the country it had a duty to appoint someone in the representative’s absence. Applicant’s motion to compel denied: Applicant failed to make a good faith effort to resolve the discovery dispute first. Opposer’s motion for sanctions granted: In March 9, 2012 Board order, Applicant was directed to serve initial disclosures and responses to discovery requests within 20 days. While applicant provided initial disclosures by the deadline, it did not serve discovery responses or seek an extension, and failed to offer any explanation. As a result: “opposer’s motion for sanctions in the form of entry of judgment is granted”
92047436	05/14/2012	BOARD`S DECISION: GRANTED	N	Petitioner, Ralph Lauren, filed for cancellation under 2(d) for respondent’s design mark featuring a polo player falling of a horse for use with clothing. Evidence: Respondent’s objection to a rebuttal declaration granted as Respondent claims it never was served a copy and the filing with the Board does not indicate any certificate of service. 2(d): Board found the goods overlapping and the marks very similar. Board found that parody is not a defense.
91203215	05/17/2012	BOARD`S COMMUNICATION	N	Applicant’s motion to dismiss dilution claim granted (opposer failed to allege when its mark became famous) and Opposer given time to amend. Applicant’s time to answer suspended until after Opposer’s amended pleading is filed.
91197669	05/14/2012	DATES REMAIN AS PREVIOUSLY SET	N	Applicant (pro se) moved to extend discovery for 60 days. Board denied the motion: “The Board finds that applicant’s motion to extend is vague and provides no detailed factual information. In particular, applicant has not provided any specific information about what discovery was taken during the nearly 10 month discovery period, why the necessary discovery was not or could not be completed during the time already allotted, and what discovery remains uncompleted and outstanding, so as to support an extension of the discovery period. With regard to the taking of depositions, applicant has not explained his efforts to complete the depositions prior to proceedings being suspended for withdrawal of counsel, nor has he explained his efforts to schedule and complete the depositions after proceedings resumed in January 2012”
91194716	05/14/2012	D`S MOTION FOR SJ GRANTED IN PART; DENIED IN PART	N	Applicant’s Marks: GOTHAM BATMAN and GOTHAM BATMAN & Design for use with “general business networking referral services, namely, promoting the goods and services of others by passing business leads and referrals among group members” in International Class 35 and “entertainment in the nature of amateur softball games” in International Class 41.DC Comics opposed. The parties cross-moved for summary judgment on 2(d) grounds, which Board denied: there is a genuine dispute of material fact as to whether applicant’s marks would be perceived as a parody. We also find that there are genuine disputes of material fact as to the relatedness of the parties’ respective goods and services and the channels of trade of such goods and services. As to dilution, Applicant claimed that its mark was a parody and thus avoided any claim of dilution, but Board was not convinced: “Under the statute’s plain language, parodying a famous mark is protected by the fair use exclusion only if the parody is not “a designation of source for the person’s own goods or services.” Here, applicant is clearly using its GOTHAM BATMEN and GOTHAM BATMEN and design marks as source indicators for its identified services. Accordingly, the parody exclusion under Section 43(c)(3) of the Trademark Act is not applicable in this case.” But Board denied the MSJ finding “there is a genuine dispute as to whether applicant’s marks would be viewed by the consuming public as a parody, as applicant asserts.”Applicant also moved to dismiss the claim of lack of bona fide intent to use the mark and, of course, the Board found genuine disputes of material fact as to whether Applicant had bona fide intent to use its mark with networking services. But the Board found “that applicant is entitled to judgment in its favor as a matter of law with respect to opposer’s claim of lack of bona fide use as of the filing date of applicant’s applications solely in regard to applicant’s recited entertainment services in the nature of amateur softball games.” Use of the mark in connection with the rendering of free services still constitutes use in commerce under the Trademark Act.
91186397	05/16/2012	MOTION FOR SUMMARY JUDGEMENT GRANTED IN PART	N	Opposer moved for summary judgment on Applicant’s claim that Opposer’s SUSTAIN is a phantom mark ;Applicant’s claim that SUSTAIN is merely descriptive; and Opposer’s claim of priority and likelihood of confusion. Applicant’s phantom mark claim denied as the applied for mark does not include a blank or dashed line or a placeholder of any kind. Applicant’s descriptiveness claim denied as Applicant’s 2 other registrations containing the SUSTAIN term were issued more than 5 years ago and without any disclaimer. As to the MSJ on grounds of priority and likelihood of confusion, Board denied, finding material facts in dispute
91182207	05/16/2012	MOTION TO DISMISS COUNTERCLAIM DENIED	Y	Plaintiff’s motion to dismiss counterclaim for partial cancellation under FRCP 12(b)(6) denied. Defendant seeks partial cancellation of J&J’s registration as to three goods. “We find the counterclaim is sufficient as a claim of partial abandonment, which does not require any reference to avoidance of a likelihood of confusion. [Defendant] has sufficiently pleaded a ground for partial cancellation by alleging abandonment of the mark as to particular goods through nonuse with no intent to resume use.”Disclosure: Our firm represents Applicant in this matter.
91184936	05/17/2012	MTN TO SUSPEND DENIED; TRIAL DATES RESET	N	Motion to suspend the proceeding (again after multiple stipulations over approx. 4 years) denied as not containing the required detail report on the progress of negotiations. “No further extension of time or suspension of this proceeding will be granted for the purposes of settlement without a showing of extraordinary circumstances.”
91182155	05/15/2012	P`S MTN TO AMEND PLEADING GRANTED; TRIAL DATES RESET; APPLICANT TO FILE AMENDED ANSWER	N	Opposer’s motion to amend its notice of opposition to remove a cancelled registration and add a recently issued registration is granted as the Board found no substantial prejudice to Applicant. To mitigate any possible harm to Applicant, discovery reopened solely for Application for 30 days to conduct discovery regarding any issues regarding the newly pleaded registration.
91166060	05/17/2012	SUSPENDED AND APPLICATION REMANDED TO EXAMINER	N	Regarding state of Montana’s opposition to “THE LAST BEST PLACE: “Congress has continued to include, in appropriations legislation, clear prohibitions on the expenditure of funds to register or enforce marks that include the phrase “Last Best Place.” Accordingly, the USPTO has issued refusals of registration to applicant in those applications not before the Board in these oppositions. These oppositions shall remain suspended and the involved applications are remanded to the trademark examining attorney for further action consistent with the appropriations legislation of the Congress.”05/22/2012 Office Action: http://tdr.uspto.gov/jsp/DocumentViewPage.jsp?78463754/OOA20120522183709/Offc%20Action%20Outgoing/2/22-May-2012/sn/false#p=1
92052908	05/14/2012	PROCEEDINGS RESUMED	N	Respondent moved to dismiss the amended pleading of fraud under FRCP 12(b)(6) is denied.
94002437	05/18/2012	PROCEEDINGS RESUMED	N	The parties’ “Consent and Concurrent Use Agreement” is accepted.
91186025	05/20/2012	PROCEEDINGS RESUMED	N	Applicant moved to dismiss for failure to prosecute under Rule 2.132(a) and moved to strike Opposer’s pretrial disclosures. Opposer failed to take testimony or submit any evidence during testimony period, and failed to timely serve pretrial disclosures. After pro se Opposer’s testimony and pretrial disclosure deadlines had passed, Opposer served on applicant docs captions ‘pretrial disclosures.’ Applicant’s motion to strike the ‘pretrial disclosures’ is granted, but motion to dismiss denied – Opposer’s pleaded registration establish standing and priority and make out a prima facie case.
91201968	05/16/2012	PROCEEDINGS RESUMED	N	Applicant moved to “de-designate” certain documents produced by Opposer. Applicant’s motion granted to the extent that emails to customers are re-designated “confidential” rather than “highly confidential.” Opposer moved to compel production of “the identity of and contact information for applicant’s third-party service provider that is in possession of applicant’s emails, asserting, inter alia, that applicant has not produced certain emails from the 2006 – 2007 time period which opposer believes to exist.” Board denied the motion as premature- 4 months of discovery remained – as presuming the applicant’s production and/or supplementation is or will be decifient.
91204005	05/15/2012	PROCEEDINGS RESUMED	N	Applicant (STARZ ENERGY) brought a 12(b)(6) Motion to dismiss the opposition based on ROCKSTAR energy’s marks. Board dismissed the motion finding the pleading sufficient. Further, applicant’s allegations the Opposer is not the owner of the pleaded marks is an impermissible collateral attached which may only be raised by way of a counterclaim or separate petition to cancel.

Tagged TTAB decision

May 23 2012

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TTAB Decisions

Recent TTAB decisions and activity of note (5/07 – 5/13/2012)

During the week of May 7 – 13, 2012, the TTAB issued no precedential decisions. But it did issue several important findings on procedure and discovery.

Several interesting decisions are highlighted in bold. Note two cases in which parties were admonished for their behavior and barred from filing unconsented motions without permission from the Board. AMERICA’S STRONGEST MAN was found not likely to be confused with WORLD’S STRONGEST MAN. Product configurations of hand sanitizer dispensers were found not functional, but lacking acquired distinctiveness.

Here is a rundown of the activity of note from the TTAB in the week [visit http://ttabvue.USPTO.gov to view any of the proceeding and documents]:

Proceeding No.	Document Date	Board Disposition	Precedent?	Notes
94002402	05/08/2012	BD`S DECISION: FAVORABLE TO APPLICANT	N	Concurrent use agreement and amendment accepted.
77308779	05/07/2012	BOARD`S DECISION: AFFIRMED	N	Prior Board opinion (a) vacated as to 1 cited registration that was cancelled for failure to renew, and (b) modified and affirmed as to the other cited registration.
77408993	05/07/2012	BOARD`S DECISION: AFFIRMED	N	Refusal of GAME FACE for protective face masks used with several sports under Section 2(d) as likely to be confused with registrations for GAME FACE and GAME FACE & Design for “goggles for use in paintball activities” was affirmed. Evidence Applicant submitted for the first time in its brief not considered, nor was reference to 3 websites for the first time in the brief.
79063620	05/09/2012	BOARD`S DECISION: AFFIRMED	N	Application for LION GLOBAL INVESTORS & Design for investment services refused under Sect. 2(d) as likely to cause confusion with LION CAPITAL and LION (same owner) for investment services. Board affirmed the refusal: “While the degree of care factor weighs in favor of applicant, it is not sufficient to outweigh the other factors.”
85066363	05/08/2012	BOARD`S DECISION: AFFIRMED	N	Application for THE HIGHLINER for ‘restaurant services’ refused under Sect. 2(d) due to likelihood of confusion with HIGHLINER COFFEE CO for ‘café services; and carryout restaurant services featuring coffee, candy and baked goods.’ Board affirmed the refusal: “The fact that the services fall in different international classes does not affect the likelihood of confusion analysis. The language in the recitation of services, not classification, controls our analysis.”
77701886	05/10/2012	BOARD`S DEC: AFFD IN PART/RVRSD IN PART	N	3M appealed refusals of 2 configurations of holders for s “hand-sanitizing antiseptic with moisturizers” on (i) 2(e)(5) ‘functional’ grounds and, alternatively, (ii) they do function as trademarks and have not acquired distinctiveness under 2(f), and (iii) the description of the mark was inadequate.As to functionality:– “we are not persuaded that the existence of applicant’s utility patents involving the dispenser and its nozzle weighs in favor of finding the proposed dispenser configuration marks as being functional”– “we find that the examining attorney has not met his burden in establishing a prima facie case that the dispenser configuration marks are functional and, thus, are not registrable on that basis. While there is some evidence that the shape of the dispenser’s nozzle in the proposed marks may have some utilitarian value, it does not follow that the entire mark is necessarily functional”*Regarding acquired distinctiveness:* – Some of Applicant’s evidence was unspecific and/or unsupported by declarants with personal knowledge, but there was no evidence contradicting the statements and examining attorney did not object to them. – Regardless, the Board found “the record does not establish that the dispenser configuration marks have acquired distinctiveness” – “Remarkably, there is no evidence showing the number of dispensers sold or dollar figures for such sales. Likewise, there is no evidence regarding advertising figures and the degree of advertising efforts made to associate applicant’s proposed dispenser configuration marks with the identified goods.” *Regarding the description of the mark* – “We find that applicant’s descriptions of the marks, as amended and currently reflected in the application, provide accurate characterizations of the marks. In view of the foregoing, the examining attorney’s requirement for acceptable descriptions of the marks is not well-taken and the refusal to register the marks based thereon is reversed.”
91199964	05/11/2012	RESPONSE DUE 30 DAYS (DUE DATE)	N	Applicant’s proposed amendment to its goods denied as an impermissible expansion of the scope. Applicant’s proposed amendment to the drawing of the mark denied. If applicant is proposing to add “Standard No.” wording to the mark it must show that “such matter constitutes either informational or genericmatter such that a material alteration will not result fromits addition..”
92051212	05/10/2012	TRIAL DATES RESET	N	Respondent’s unconsented motion to amend its identification deferred consideration until final hearing.
92053837	05/09/2012	TRIAL DATES RESET	N	Petitioner’s motion to compel the attendance of four witnesses of respondent granted.
91182644	05/07/2012	BOARD`S DECISION: DISMISSED	N	Fruit of the Loom opposed registration of BODY FRUIT for “footwear; headwear; jackets; pants; shirts; shorts; sweat shirts; undergarments; coats; tank tops” on grounds of: 2(d); dilution; and lack of bona fide intent to use. Applicant submitted no evidence and no brief. Opposer’s marks found strong and inherently distinctive, but Opposer did not successfully prove its marks famous for 2(d) purposes. (“[I]mportantly, opposer provides no context by which we may ascertain opposer’s market share vis a vis other manufacturers of the goods identified in its pleaded registrations. As a result, it is impossible to determine, for example, how its sales or advertising expenditures compare to those of its competitors such that we may conclude therefrom that opposer’s pleaded marks are famous.”) However, overall the Board found the marks more similar than dissimilar and sustained the opposition.
92023939	05/10/2012	BOARD`S DECISION: DISMISSED	N	In a petition to cancel MODEL AMERICAN on ground of abandonment filed on May 15, 1995, much of the testimony was more than 10 years old. Declaration evidence stricken: “absent a stipulation, a party may not simply submit a declaration, which does not entitle the other party to cross-examination or even objection.” While respondent was in bankruptcy for some time, it showed evidence of a valid license of its mark. Petitioner claimed that the sub-licensee was not using the mark for the goods in the registration, namely “computer utility program.” Finding the definition of the phrase unclear, the Board found Petitioner did not meet its burden to prove abandonment. And even if it had found that Respondent did not use the mark for a 3 year period, “we still would find that at all relevant times Respondent intended to resume use of the mark,” evidence of which included the renewal filings of the USPTO trademark registration.
92050860	05/08/2012	BOARD`S DECISION: DISMISSED	N	Petition to Cancel “AMERICA’S STRONGEST MAN” on the supplemental register brought under Section 2(d) by owner of “WORLD’S STRONGEST MAN” registered on the principal register under Section 2(f). The only evidence introduced by Petitioner was its registration. Respondent submitted no evidence; the registration file is automatically of record. “We find that the parties’ marks, unlike their contestants, are weak.” The board found no likelihood of confusion: “we find that these marks have different connotations or commercial impressions and the dissimilarities outweigh the similarities. In conclusion, based on this very sparse record, we find that petitioner has not carried its burden of proof and respondent’s mark is sufficiently dissimilar to petitioner’s mark so as to make confusion unlikely.”
92051140	05/11/2012	BOARD`S ORDER TRIAL DATES RESET	N	Respondent moved to strike petitioner’s notice of reliance. Motion granted as to petitioner’s discovery response and documents produced therewith; documents produced by respondent in response to discovery requests; notices of intent to take depositions. Motion denied as to respondent’s discovery requests noting that no documents exist.
91200036	05/08/2012	BOARD`S ORDER TRIAL DATES RESET	N	Applicant’s motion to set aside notice of default judgment granted: “the Board does not find applicant’s delay to be the result of willful or grossly negligent conduct. Further, because the law favors deciding cases on their merits, the Board is reluctant to grant judgments of default and tends to resolve all doubts by setting aside default, particularly when a proceeding is at such an early stage as is the case here.”
91199483	05/07/2012	CONSOLIDATED; SUSPENDED PENDING DISP OF CIVIL ACTION	N	Proceedings consolidated and suspended pending civil action
92053712	05/07/2012	CONSOLIDATED; TRIAL DATES RESET	N	Defendant moved to amend its answer and add affirmative defenses along with counterclaims of non-ownership and fraud, contending that it learned of the basis for the changes during the deposition of petitioner. Respondent’s counterclaim of fraud found to be sufficiently pleaded as to two of Petitioner’s registrations. Respondent’ counterclaim of fraud as to the other registration predicated on erroneous dates of use was denied as legally insufficient. The Board also admonished the parties and counsel: “the conduct of this proceeding by both parties remains unsatisfactory and inappropriate for attorneys who should be focused on advancing determination of a case on its merits not disposition through attempts to frustrate and annoy each other.” And parties barred from filing unconsented motions without permission from the Board: “parties are barred from filing any unconsented motion without the express permission of the Board.”
91178229	05/09/2012	MOTION TO COMPEL; GRANTED; PROCEEDINGS RESUMED; TRIAL DATES RESET	N	Opposer’s motion to compel granted; discovery requests had been served in 2007 and the Motion to compel had been filed in September 2007 just after Applicant moved for extension of time to file answer. Note: did Opposer serve its discovery before an answer was even due? Case was filed under old Rules of the Board.
91200673	05/11/2012	MOTION TO COMPEL; GRANTED; TRIAL DATES RESET	N	Opposer’s motions to compel regarding interrogatories and document requests is granted as conceded. Opposer’s 2nd motion to compel, filed after suspension for consideration of the 1st motion, given no consideration.
92054049	05/11/2012	PROCEEDINGS RESUMED	N	Respondent’s motion for a more definite statement was granted as grounds claimed by Petitioner were vague. Petitioner’s motion for sanctions was deemed moot.
92054551	05/10/2012	PROCEEDINGS RESUMED	N	Respondent’s motion for sanctions denied. But Board noted that “petitioner is hereby put on notice that this proceeding is subject to dismissal with prejudice should he file any further papers containing personal attacks on respondent or that are deemed completely irrelevant to the merits of this proceeding.” Petitioner’s motion to compel moot as respondent served responses after the motion, and the responses were not attached to the reply so Board could not evaluate them. Board further cautioned petitioner: “Petitioner, who filed more than a thousand pages since the last Board order, is ordered to cease submitting copies of prior orders and filings in this proceeding as exhibits to motions; to cease making arguments or submitting evidence regarding respondent’s use or registration of his unrelated PANDA marks; and to cease arguing the merits of past Board orders. Any paper filed by petitioner which includes documents already of record, or refers to respondent’s unrelated marks, or argues the merits of past orders, will be refused consideration. To be clear, if a filing by petitioner violates any of these prohibitions, in its text or in attachments thereto, the entirety of the filing shall be refused consideration.”The Board also barred the parties from filing any unconsented motion without express permission from the Board. “Effective immediately, respondent is ordered to cease unsubstantiated allegations that petitioner falsified certificates of service. Petitioner provided tracking information indicating refusal of delivery by FedEx courier at respondent’s address of record.” And ‘both parties are ordered to supplement their service of papers with a phone call made the same day of service to the receiving party to notify them that papers have been served”.”
91198414	05/11/2012	PROCEEDINGS RESUMED	N	Opposer’s motion to compel denied: “In view of opposer’s unexplained five-month delay in acting following applicant’s supplemental discovery, the excessive number of discovery requests at issue in opposer’s motion, and the lack of legal support establishing discoverability of the information and documents sought by those interrogatories and document requests, the Board finds that opposer failed to make a good faith effort to resolve the parties’ discovery dispute prior to seeking Board intervention.”

Tagged TTAB decision

May 17 2012

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TTAB Decisions

Recent TTAB decisions and activity of note (4/30 – 5/6/2012)

During the week of April 30 – May 6, 2012, the TTAB issued no precedential decisions. But it did issue several important findings on procedure and discovery. Note two motion under FRCP 56(d) – one granted and one denied. Microsoft lost and ex parte appeal on several grounds.

Several interesting decisions are highlighted in bold.

Here is a rundown of the activity of note from the TTAB in the week [visit http://ttabvue.USPTO.gov to view any of the proceeding and documents]:

Proceeding No.	Date	Board Disposition	Precedent?	Notes
77860835	05/01/2012	BD`S DECISION SET ASIDE	N	Apple has sought registration of ITUNES LP without disclaimer of “LP.” The Board previously upheld the disclaimer requirement. Applicant subsequently submitted a disclaimer and thus the decision is set aside and the mark will proceed to publication.
91200728	04/30/2012	DEF`S MOTION FOR SUMMARY JUDGMENT DENIED	N	Opposer’s Mark: JUST & Design for food and cosmetic products. Applicant’s Mark: JUST BEE & Design. Applicant’s Motion for Summary Judgment denied because at a minimum “there exists a genuine dispute of material fact as to the degree of similarity, if any, of the parties’ marks and the relevant goods, and the scope of protection to be afforded opposer’s marks.” The Board affirmed the disclaimer requirement: “In view of the foregoing and the evidence in the record, the examining attorney has established that “recycled paper” refers to a sub-genus of goods within the genus of greeting cards. As such, “recycled paper” is generic for greeting cards composed of recycled paper.”
77252690	05/04/2012	BOARD`S DECISION: AFFIRMED	N	Issue on ex parte appeal was whether Applicant had to disclaim “RECYCLED PAPER” portion of three marks. Applicant applied for the marks under Section 2(f) claiming acquired distinctiveness – and conceding descriptiveness – but still must disclaim any generic wording. Disclaimer requirement affirmed.
77651154	04/30/2012	BOARD`S DECISION: AFFIRMED	N	Application for DA VINCI for clothing was refused under Sect. 2(d) as likely to be confused with the registered marks DON DAVINCI for variety of clothing and L’IL DAVINCI for variety of apparel. In affirming the refusal, the Board noted the overlap between the goods, that all three share a commercial impression of Leonardo Da Vinci, and distinguished the third party registrations: ‘all four of the third-party DAVINCI marks incorporate other matter that serves to distinguish them from each other, as opposed to applicant’s mark which does not, other than a space, which as discussed above does not serve as a distinction.”
77767314	04/30/2012	BOARD`S DECISION: AFFIRMED	N	Application for ACTIVLASH for “eyelash conditioner” refused under Sect. 2(d) as likely to be confused with ACTILASH registered for “cosmetic preparations for eye lashes.” In affirming the refusal, the Board found the goods identical or overlapping, and the marks extremely similar in appearance. “With regard to connotation, consumers are likely to view the prefix ACTI in the cited mark as referring to “active,” a meaning reinforced by the registrant’s company’s name, Active Organics.”
77820474	04/30/2012	BOARD`S DECISION: AFFIRMED	N	Application for a stylized “X” for video game hardware and services refused under Sect. 2(d) with: X (standard character) for video game hardware and software, and with X (standard character) for online game services. “Applicant’s and registrant’s marks are legally identical” since Applicant’s mark could be displayed in any manner, and are pronounced the same. Even following the cited registrant’s cancellation of its registration in class 9, the Board affirmed the refusal as to all of Applicant’s goods and service.
78863190	05/04/2012	BOARD`S DECISION: AFFIRMED	N	Applicant (Microsoft) appealed refusal of WINDOWS RALLY for software on several grounds – ID amendment that exceeded scope of earlier ID; specimen; refusal to provide information about the goods; and disclaimer of ‘WINDOWS.’– *Identification: Refusal affirmed “because the addition of “computer software platform” and “computer software development tools” includes functionality that exceeds the existing identification, the amendment is beyond the scope of the identification. – Specimen:* refusal affirmed as mark not shown in connection with the applied for goods – *Request for Information:* Refusal affirmed because the information requested by examiner was relevant, and the request was not fully complied with by Applicant – *Disclaimer of “WINDOWS”:* refusal affirmed: e are persuaded by the evidence of record that the phrase WINDOWS is merely descriptive of applicant’s goods, as identified in the last acceptable identification, in that the term immediately describes a significant feature of the goods, namely that they include a GUI that features windows.”
85104508	05/01/2012	BOARD`S DECISION: AFFIRMED	N	Refusal of LA CASITA MEXICAN GRILL for “restaurant services” under Section 2(d) due to likelihood of confusion with registrations LA CASITA MEXICANA for restaurant services. Finding “LA CASITA” to be the part of the mark with source-identifying significance and to be identical in the marks. Board dismissed relevance of a third party with registrations of LA CASITA CHILANGA and LA CASITA CHILANGA RESTAURANT also for restaurant services. Board noted that different geographic locations, a claim cited by Applicant, are irrelevant since this is not a concurrent use proceeding.Note that the Board also affirmed requirement of applicant to submit $50 fee because the TEAS Plus application did not include a translation.
77723599	05/04/2012	BOARD`S DECISION: REVERSED	N	Appeal of “deceptively misdescritptive” refusal under 2(e)(1) of TATER DOG for ““freshly prepared sandwich consisting of meat with or without condiments inserted into the hollowed cavity of an edible bread roll” was refused. Applicant “confirmed that his sandwich basically comprises a hot dog inserted into a hollowed cavity of a potato roll; according to applicant, the hot dog product is designed to minimize condiment spills.” The Board reversed the refusal, finding the mark “just suggestive.”Interesting notes: Applicant was represented by the Vanderbilt Legal Clinic. For more on what a “Tater Dog” is, see Applicant’s website: http://www.thetaterdog.com/
91196105	05/02/2012	SUSPENDED PENDING DISP OF OUTSTNDNG MOT	N	Following Opposer motion for summary judgment, Applicant moved for additional discovery under FRCP 56(d). Applicant’ motion granted in part. “[B]ecause opposer relies on quite limited evidence in support of its motion, and applicant is by this order allowed only limited discovery under Fed. R. Civ. P. 56(d), the Board is extremely wary of allowing open-ended or wide-ranging discovery on these limited topics” and “applicant’s Rule 56(d) discovery is limited to no more than 10 interrogatories, 10 requests for production of documents and 10 requests for admission”
91201070	05/04/2012	RESPONSE DUE 30 DAYS (DUE DATE)	N	Following Applicant’s motion for summary judgment, Opposer filed a 56(d) motion for additional discovery. Specifically opposer sought to depose the applicants, one who had provided a declaration in support of the MSJ and one who had not. Finding that “this is a run-of-the-mill likelihood of confusion case made even more uncomplicated because the involved application is based on intent to use, rather than actual use,” the Board denied the motion.
91202150	04/30/2012	TRIAL DATES RESET	N	On 12/14/2011, Board issued a show cause order regarding Applicant’s lack of answer. On 01/17/2012, Applicant filed a response and moved to extend the time to answer. The notice of default was set aside by the Board as Applicant found to have shown good cause and “The record thus far does not evidence evasive conduct, bad faith or gamesmanship on applicant’s part, and does not suggest that the failure to timely answer was the result of willful behavior or inattentiveness to this proceeding.”
91203255	05/01/2012	TRIAL DATES RESET	N	Opposer moved for default judgment based on applicant’s failure to file an answer by the date set in parties’ earlier stipulation and an earlier Board order. Applicant stated it believe settlement negotiations were ongoing. Finding no prejudice to Opposer, the Board dismissed the motion.
91178996	04/30/2012	BOARD`S DECISION: DISMISSED	N	Applicant’s mark: BENCHMARK RELIANCE for “issuance and administration of annuities.” Opposer’s mark: RELIANCE STANDARD for insurance underwriting and issuance of annuities.Although it was unpleaded, Opposer also claimed use of “Reliance” by itself as a mark; Applicant found to have tried the issue by consent. Applicant introduced third party evidence showing use of “Reliance” during testimony. Opposer objected that the materials were within the scope of a request for production and that no such documents were produced during discovery. While Applicant did not timely supplement, Opposer was not prejudiced, and the documents were permitted by the Board. Applicant’s counterclaim for fraud failed due to lack of “clear and convincing” evidence regarding Opposer’s intent.Opposer’s claims regarding the term “Reliance” alone failed because it failed to prove priority of use as a trade name or service mark prior Applicant’s priority date. Finding: Opposition dismissed based on “the lack of any reported instances of actual confusion is relevant because there has been a reasonable opportunity for confusion to have occurred;” a high degree of care exercised by consumers; and differences between the marks.
91178953	05/02/2012	BD`S DECISION: DISMISSED W/ PREJUDICE	N	In a consolidated Opposition regarding numerous ____ ZERO marks including COKE ZERO, the issue was whether the marks, which were published with a claim of acquired distinctiveness of “ZERO” under Section 2(f), had indeed acquired distinctiveness. The descriptiveness of the mark was conceded by Coca-Cola when it selected 2(f). Board found that while “zero” is common in the beverage industry, Coca-Cola’s use of ZERO is so huge and extensive that it qualifies as “substantially exclusive” even though others have used it. As to the timing of relevant evidence, “The filing date or even the publication date is not a cutoff for any evidence developing after that time. Evidence of sales and advertising after the filing date of the application will be considered.”
91179951	04/30/2012	BD`S DECISION: DISMISSED W/ PREJUDICE	?	Decision not available on TTABvue: http://ttabvue.uspto.gov/ttabvue/v?pno=91179951
91189499	05/04/2012	BOARD`S DECISION: SUSTAINED	N	Applicant’s mark: FANTRIP for travel agency services. Opposer’s mark: common law use of ‘Fan Trips’ for travel agency services. Opposer claim grounds under 2(d) and 2(e)(1).Evidentiary issues:— Opposer’s motion to strike applicant’s testimony exhibits consisting of applicant’s discovery responses was granted: “Trademark Rule 2.120(j)(5) provides that an answer to an interrogatory or a response to a request for admission may be submitted and made part of the record by only the inquiring party, except in limited circumstances.” — Opposer’s interrogatory response have no probative value since they were unverified by Opposer. — Declarations submitted by Opposer in rebuttal testimony were deemed not admissible. Substantive Issues: Board found Applicant’s FANTRIP mark descriptive. As a result, the board did not reach the issue of likelihood of confusion and sustained the opposition.
91179108	04/30/2012	BOARD`S COMMUNICATION	N	Opposer moved to compel discovery. Board already issued judgment last year on issue of priority and likelihood of confusion. Motion granted as to interrogatories related to dilution; Motion denied as to document requests at issue since Oppose did not identify which of the requests pertained to the remaining ground of dilution.
91202567	05/02/2012	BOARD`S ORDER MOTION DEFERRED TRIAL DATES REMAIN AS RESET	N	Applicant moved, without opposer’s consent, to restrict its identification. Board deferred decision on the proposed amendment until final decision or motion for summary judgment.
91192645	05/01/2012	BOARD`S ORDER OPPOSER`S MOTION TO COMPEL IS DENIED TRIAL DATES ARE RESET	N	Cross-motions to compel depositions denied by the Board: neither party has demonstrated the requisite good faith effort to support their respective motions to compel.” But Board also ordered both parties to make their witnesses available within 30 days or face sanction (essentially granting the motions).
91153147	04/30/2012	ORDER ON REBUTTAL TESTIMONIAL DEPOSITIONS	N	Opposer’s motion to reschedule noticed rebuttal witness testimony depositions from applicant granted in part.
91201263	05/01/2012	P`S MOT. TO EXTEND GRANTED; TRIAL DATES RESET	N	Opposer’s motion to extend discovery granted as it was uncontested by Applicant.
92051849	05/04/2012	PROCEEDINGS RESUMED	N	Respondent moved to quash deposition of respondent. Petitioner cross-moved to take foreign deposition orally. Petitioner’s motion to take foreign deposition orally granted as Board was not pleased with behavior of respondent or its former counsel: “especially since respondent formally admitted shortly after the email exchange ended that Mr. Rosen is a managing partner of respondent, that Mr. Rosen resides in the United States, and that Mr. Rosen has a place of business in the United States.” Respondent’s behavior was also deemed to be sanctionable, ordering respondent “to (1) serve, within thirty days of the mailing date of this order, complete responses to discovery, without objection, as compelled by the Board’s August 31, 2011 order; (2) serve, within thirty days of the mailing date of this order, its initial disclosures upon petitioner; (3) make available, within sixty days of the mailing date of this order, its managing partner James Rosen for a discovery deposition under Fed. R. Civ. P. 30(b)(1) within the Federal judicial district where he resides or is regularly employed, or at some other location to which the parties agree; and (4) make available, within sixty days of the mailing date of this order, its Fed. R. Civ. P. 30(b)(6) witness for an oral deposition either in the Cayman Islands or at some other location to which the parties agree. As further sanctions, respondent (5) may not suspend or extend its time for complying with its written discovery, disclosure, or deposition obligations under this order, except with the consent of petitioner; (6) may not file any paper in this proceeding without first telephoning the Board, at 571-272 9467, to obtain permission for making the filing; (7) must provide, within thirty days of the mailing date of this order, the Board and petitioner with Mr. Rosen’s current telephone number; and (8) must be prepared to participate in a telephone conference with petitioner and the Board to resolve any future issues that may arise in this case and that are determined by the Board to be appropriate for resolution by telephone.”

Tagged TTAB decision

May 06 2012

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TTAB Decisions

Recent TTAB Decisions and Activity of Note (4/09 – 4/15/2012)

During the week of April 9 – April15, 2012, the TTAB issued no precedential decisions. But it did issue several important findings regarding discovery, surnames, geographic descriptiveness, concurrent use, and more in cases that involved Michael Jackson’s estate and the band Creed.

Several important and interesting decisions or interesting procedural and discovery issues are highlighted in bold.

Here is a rundown of the activity of note from the TTAB in the week [visit http://ttabvue.USPTO.gov to view any of the proceeding and documents]:

Proceeding No.	Date	Board Disposition	Precedent?	Notes
91191947	04/12/2012	PL`S MOT. FOR SUMM. JUDGMENT DENIED	N	Opposition to WOOFDORF-ASTORIA DOG HOSTEL & DAY SPA for pet boarding services brought by the owner of the WALDORF-ASTORIA hotel based on likelihood of confusion and dilution. Applicant moved for summary judgment on 2(d); opposer moved for summary judgment on claim of dilution by blurring. Applicant’s 2(d) MSJ was based solely on an attempted “parody” defense. Since “parody” as a matter of law does not avoid a likelihood of confusion, applicant’s MSJ denied. As to Opposer’s MSJ, board found “that there is a genuine dispute as to whether applicant’s mark would be viewed by the consuming public as a parody, as applicant asserts, or as an attempt by applicant to achieve his own branding goals by conveying that his services provide a level of luxury” and thus denied the motion.
94002361	04/12/2012	BD`S DECISION: FAVORABLE TO APPLICANT	N	Concurrent use proceeding regarding TIRE FACTORY marks. In May 2011 the Board issued an order in which it reviewed the parties 2005 agreement and found it unsatisfactory for a concurrent use registration, and allowed the parties time to prepare and file a concurrent use agreement. No such agreement having been filed, the Board resumed the proceedings. After the proceedings resumed, the Board now reconsidered and reverses its earlier decision, noting that in Holmes Oil Co. v. Myers Cruizers of Mena Inc., 101 USPQ2d 1148 (TTAB 2011), it permitted an agreement that was more of a consent agreement than a concurrent use. Thus the Board now finds the 2005 agreement acceptable for concurrent use: “Considering the parties’ consent agreement, taken together with the parties’ statements in the record, we find that this agreement between parties who are familiar with trade and market practices for their respective services is adequate evidence that confusion is unlikely, and supports TFI’s right to register the mark in question and the restriction of NWTF’s registration.”
76699882	04/10/2012	BOARD`S DECISION: AFFIRMED	N	AIRIA for “night clubs” refused under Section 2(d) confusion with AREA registered for “night clubs.” Key finding: “While a mark has no correct pronunciation, especially a coined term, applicant’s mark AIRIA is likely to be pronounced as “area.””
77484850	04/11/2012	BOARD`S DECISION: AFFIRMED	N	PITTSBURGH GLASS WORK for “glass and laminate windshield and windows for vehicles excluding aircraft” was refused as primarily geographically descriptive. Board affirmed the refusal: “the presence of the highly descriptive term GLASS WORKS in applicant’s mark does not detract from the primary geographical significance of the mark as a whole” Furthermore, Applicant’s headquarters are located in Pittsburgh
77517867	04/11/2012	BOARD`S DECISION: AFFIRMED	N	Application for BOND NO. 9’s DUBAI for perfumes, soaps and cosmetics refused for failure to disclaim DUBAI on grounds that it is geographically descriptive. The Board found DUBAI clearly geographically descriptive and did not find the mark unitary, and affirmed the refusal.
77697443	04/10/2012	BOARD`S DECISION: AFFIRMED	N	Section 44(e) application for CROMWELL medical products in Class 9 refused as primarily merely a surname under SEection 2(e)(4). Applicant argued that “CROMWELL is not primarily merely a surname because its primary significance is Oliver Cromwell, a British general, Puritan statesman, and Lord Protector of England from 1653-1658.” Applicant relied in part on a survey of British citizens placing Oliver Cromwell in the ten greatest Britons, but evidence not relevant because it was not US citizens. Board affirmed refusal: “In view of the foregoing, we find that surname “Cromwell” is more akin to McKinley than Da Vinci” and “the evidence of “Cromwell” as a surname is greater than the evidence that “Cromwell” has any other significance.”
79080056	04/10/2012	BOARD`S DECISION: AFFIRMED	N	BELUGA & Design for ‘fishing tackle’ refused as merely descriptive. Refusal affirmed: “we find that BELUGA will be understood as immediately and directly describing a purpose of the identified “fishing tackle,” and that the mark is merely descriptive of the goods.”
77571488	04/12/2012	BOARD`S DECISION: REVERSED	N	Application for DOG GAMES (for “pet toys”) was refused as generic and, alternatively, as highly descriptive and not having acquired distinctiveness under Section 2(f). Board found the mark not generic; “Doubt on the issue of genericness is resolved in favor of the applicant.” Board further found the mark descriptive, not “highly descriptive” as asserted by Examiner. “Given that DOG GAMES is not highly descriptive of pet toys, we are persuaded by the evidence of record that the term DOG GAMES has acquired distinctiveness for “pet toys.””
91199530	04/10/2012	RECONSIDERATION DENIED	N	Opposer moved for reconsideration of Board’s order denying summary judgment. Board found no error it its decision and denied the motion.
92053554	04/12/2012	RESPONSE DUE 30 DAYS (DUE DATE)	N	More than a year after proceeding commenced, Petitioner filed a motion for leave to file an amended petition to cancel, after it inadvertently filed the petition to cancel in the name under which it does business rather than its proper name (from Cabot Watch Company to Cabot Company Limited). The Board was not clear whether or not the change was to a different legal entity, and thus denied the motion without prejudice so Petitioner could re-move to amend and provide more details.
91199519	04/10/2012	TRIAL DATES SET	N	In regard to a motion to compel, the Board noted that “a party responding to document requests is not required to produce its discovery documents when it responds to those requests. Document requests initially require only timely written responses.” “Although parties often extend each other the courtesy of copying documents and materials responsive to their respective document requests and forwarding the copies at the propounding party’s expense, a responding party may comply with Federal Rule of Civil Procedure 34 by making documents available for the propounding party’s copying and inspection. See No Fear v. Rule, supra. Neither Federal Rule of Civil Procedure 34 nor Trademark Rule 2.120 set forth a specific deadline by which document production must be completed. However, such production should be completed so as to allow sufficient time for trial preparation. “
92055156	04/09/2012	TRIAL DATES RESET	N	Plaintiff’s motion for default judgment denied where defendant filed an Answer after the motion was filed, even though it did not file a response to the motion for default.
91198801	04/11/2012	TRIAL DATES RESET	N	Opposer’s [Record label for the band CREED] motion to compel was filed thirty days after the commencement of its testimony period, and denied as untimely. Opposer’s motion to extend testimony made without any explanation as to the good cause for needing it; as a result, the motion was denied.
91191929	04/11/2012	BOARD`S DECISION: DISMISSED	N	Opposition to NETGARD by owner of NETGATE, both for computer hardware and software related to network security. Board dismissed the opposition despite similarity of goods and channels of trade: “The marks share similar, but distinguishable, meanings and commercial impressions because they are suggestive of network security hardware and software. Under such circumstances, the prior use and registration of a suggestive term should not preclude the subsequent registration of a similarly suggestive, but otherwise distinguishable mark, for related goods.”
91203354	04/12/2012	BOARD`S DECISION: DISMISSED	n	Opposition dismissed because Opposer sent notice, but not to address of record at USPTO: “Because proof of service presumes actual service on applicant and opposer failed to effect actual service by failing to serve applicant at the correspondence address of record in the Office, opposer did not comply with the service requirement of the Trademark Rule.
91194027	04/13/2012	BD`S DECISION: DISMISSED W/ PREJUDICE	N	Opposer’s testimony period ended without opposer having filed any evidence or taken any testimony. Opposer did not file brief, but did response to order to show cause why judgment should not be entered against it. Opposer noted the parties were discussing settlement, but Board found: “After careful consideration of the Pioneer factors and the relevant circumstances in this case, the Board finds that opposer’s reasons for not actively participating in this case fail to establish excusable neglect, and do not warrant a reopening of this case for the presentation of evidence or a reopening of opposer’s time to file its main brief.” Opposition dismissed with prejudice.
91196472	04/11/2012	BD`S DECISION: DISMISSED W/ PREJUDICE	N	Applicant’s motion to dismiss for failure to prosecute; Opposer’s motion to reopen testimony period. “Applicant argues that opposer’s service of pretrial disclosures belies his claim that he believed that the Board would consider materials from and the final decision in the Prior Oppositions even if opposer introduced no evidence in this case.” Applicant’s motion granted and proceeding dismissed with prejudice.
91187537	04/12/2012	BOARD`S DECISION: SUSTAINED	N	Applicant’s mark: AmeriCare & Design for “ambulance transport services” Opposer’s mark: AMERICARES and AmeriCares & Design for “charitable fund raising services to support the distribution of food, clothing, medicine and medical services,” and AmeriCares Free Clinic & Design (“Free Clinic” disclaimed). Findings of 2003 WIPO domain dispute between the parties noted as irrelevant. Applicant’s laches/acquiescence claim dismissed as they are generally not available in an opposition. Opposer’s mark found strong, well-known and entitled to broad scope of protection. Some evidence of 3rd party use provided, but probative value limited. Decision: Opposition sustained.
91179013	04/14/2012	DISMISSAL ORDER VACATED IN PART; TRIAL DATES RESET	N	Procedural ruling in complicated consolidated oppositions vacates part of prior dismissal order to permit counterclaims and some oppositions to proceed.
91201852	04/09/2012	D`S MOT. TO DISMISS DENIED; TRIAL DATES RESET	N	Applicant filed a motion to dismiss the opposition on the grounds that opposer does not have standing to bring this case and for failure to state a claim upon which relief may be granted under Fed. R. Civ. P. 12(b)(6). Applicant’s motion denied – its allegations attacked the merits not the sufficiency of the pleading.
91200478	04/12/2012	MOTION FOR RECONSIDERATION DENIED	N	–
91202418	04/13/2012	MOTION TO STRIKE; DENIED; PROCEEDINGS RESUMED; TRIAL DATES RESET	N	Applicant and Opposer are both intellectual property law firms. Applicant moved to strike 2 paragraphs from Notice of Opposition which “bad faith” as irrelevant, potentially scandalous and insufficiently particular. Board denied the motion to strike, finding that the claims “are not irrelevant because opposer pleads likelihood of confusion, and applicant’s intent in adopting his mark may be relevant to that claim.”
92054159	04/11/2012	PROCEEDINGS RESUMED	N	Petitioner filed to cancel FORTIFIED CUTICLES mark on the Supplemental Register, claiming descriptiveness under 2(e)(1). Defendant’s 1st motion to dismiss for failure to state a claim was granted previously; Defendant brought a 2nd motion to dismiss the amended petition to cancel. Motion denied as petitioner adaquetly set forth grounds of genericness claim.
91198612	04/09/2012	PROCEEDINGS RESUMED	N	Opposer’s motion to compel granted “to the extent that applicant may answer the Interrogatories using a number range, and applicant may answer the Document Requests by producing an affidavit or declaration instead of business records or documents.”

Tagged TTAB decision

Apr 29 2012

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TTAB Decisions

Recent TTAB decisions and activity of note (3/19 – 3/25/2012)

Still catching up on decisions from last month – thanks for your patience!

During the week of March 19 – March 25, 2012, the TTAB issued five precedential decisions including one on the ex parte appeal for an application (OLD HAVANA) that was filed more than 15 years ago! It also issued many other decisions and rulings which cover important substantive and procedural issues..

Several important and interesting decisions or interesting procedural and discovery issues are highlighted in bold. Two interesting opinions relate to concurrent use agreements – one was accepted and one was rejected – and together they provide a good road map for how to draft an acceptable agreement. The SOFTSPIKES opinion provides an excellent road map for the type and amount of evidence that can establish acquired distinctiveness under Section 2(f).

Here is a rundown of the activity of note from the TTAB in the week [visit http://ttabvue.USPTO.gov to view any of the proceeding and documents]:

Proceeding No.	Date	TTAB Action	Precedent?	Notes
94002460	03/22/2012	BD`S DECISION: FAVORABLE TO APPLICANT	N	Board accpepted terms of concurrent use agreement.
75010230	03/20/2012	BOARD`S DECISION: AFFIRMED	Y	OLD HAVANA for rum refused under Section 2(e)(3) as primarily geogrphically deceptively misdescriptive, and alternatively as not having acquired distinctiveness under 2(f). Application pending since 1995 and has a long history. Evidence attached with the briefs not considered. Board affirmed the 2(e)(3) refusing finding: a good/place association, geographic origin to be a material factor for the purchase of the goods, and “OLD” not diminishing the signficance of HAVANA. As to 2(f), “Acquired distinctiveness may not be asserted to contravene a refusal under Section 2(e)(3) unless the mark became distinctive of an applicant’s goods in commerce before December 8, 1993, the date of enactment of the NAFTA Implementation Act.” Since mark was first used in 1991, Board affirmed 2(f) refusal.
77136242	03/21/2012	BOARD`S DECISION: AFFIRMED	Y	CEI for ‘technical consultation in the field of hydrocarbon and chemical processing, pipeline, and power industries’ refused on grounds that specimens failed to show use in connection with the services identified (Section 1 and 45 of Trademark Act). Applicant’s evidence of website addresses does not make the site content evidence of record, and the references (nor printouts attached to reply brief) were not considered. Board affirmed the refusal, finding Applicant’s mark “is identified as a metric, an index, an equivalency factor, a standard, a performance measure, but never as a technical consulting service. There is no direct association between applicant’s offer of the applied-for services and the term CEI.”
77629648	03/23/2012	BOARD`S DECISION: AFFIRMED	N	FOREVER NUTRI-LEAN refused under 2(d) with NUTRILEAN+. Both are for use with supplement products. Applicant argued that FOREVER is its house mark. Board found registered mark rather strong and affirmed the refusal.
77717219	03/22/2012	BOARD`S DECISION: AFFIRMED	N	2(d) refusal of applicant’s mark COUNTRY FRESH OVENS for “for “biscuits; breakfast burritos; brownies; cakes; cookies; Danish pastries; donuts; English muffins; hamburger sandwiches; hot dog sandwiches; muffins; sandwiches; sandwiches, namely, breakfast sandwiches and wraps, and cheeseburgers.” Cited mark: COUNTRY OVEN for “cakes, cake rolls, donuts, bread buns, rolls, fingers and party squares.” Evidence attached to applicant’s appeal brief not considered where Ex. Atty properly objected. Goods are identical in part; presence of FRESH in applicant’s mark not sufficient to avoid likelihood of confusion. Decision affirmed.“We also point out the often-cited principle that “a new entrant presenting a new mark for registration has an obligation to avoid confusion with established marks in the same market.” Bridgestone Americas Tire Operations, LLC v. Federal Corporation, __F.3d__, slip. op. No. 2010-*1376, p. 5 (Fed. Cir. March 16, 2012)”*
77892528	03/21/2012	BOARD`S DECISION: AFFIRMED	N	FOCUS for ‘for “medical devices, namely, retractors for use in spinal surgery” refused under 2(d) for conflict with MRFOCUS for a long list of ““surgical and microsurgical instruments.”As to the goods, “registrant’s and applicant’s surgical retractors are technically identical goods and may be used in the same types of surgical procedures regardless of the interpretation of registrant’s identification of goods.” In prosecutiong of Registrant’s application it had argued against a 2(d) refusal with a different FOCUS mark. But found its arguments during prosecution illuminative, but not admissions. Board also found FOCUS the dominant part of the registered mark and found the marks extremely similar. Applicant’s list of applications and registrations containing FOCUS given little if any weight – it did not identify good/service or deomonstrate actual use. Overall, Board affirmed: “we find the marks too similar and the goods potentially identical such that, even allowing for a sophisticated purchaser, there remains a likelihood of confusion in the purchasing decision.”
77967215	03/23/2012	BOARD`S DECISION: AFFIRMED	N	Applicant for BFFL! BEST FRIENDS FOR LIFE & Design for “footwear, shirts, pants, jackets, and headwear” refused under 2(d) for conflict with BFFLZ “footwear.” “[T]he examining attorney has submitted several entries into the record, showing that consumers perceive the term “BFFLZ” to mean “Best Friends for Life.” Thus, the Board affirmed refusal, concluding “that with legally identical goods travelling in the same channels of trade, and similar marks with similar connotations, there is a likelihood of confusion.”
79075796	03/20/2012	BOARD`S DECISION: AFFIRMED	N	OMICRON and OMICRON & Design for “designing electronic measurement, testing and analysis equipment used for testing, analyzing, monitoring, developing and implementing electronic devices of electric power supply systems; designing measurement, testing and analysis software for testing, analyzing, monitoring, developing and implementing electronic devices of electric power supply systems”refused under 2(d) for conflict with OMICRON for ‘computer consulting services in the fields of computers, software, information technology, e-business and networking,” Given similarity of marks and services, Board affirmed: “because the software identified in applicant’s applications and the cited registration can encompass the same type of software, and because the third-party registrations and third-party use demonstrate that computer consulting in the field of software and software design services can emanate from a single source, we find that the services, as identified in applicant’s applications and the cited registration, are related.”
85192286	03/23/2012	BOARD`S DECISION: AFFIRMED	N	MAP YOUR FUTURE for ‘financial administration of retirement plans’ refused under Section 2(d) for likelihood of confusion with MAPPING YOUR FUTURE for “providing information about money management via a global computer network”. “[I]n view of the near identity of the marks and the related and complementary nature of the services, we find that confusion is likely between applicant’s mark for its identified services and the mark in the cited registration”
76692673	03/19/2012	BOARD`S DECISION: REVERSED	Y	TTAB reverses 2(d) refusal on Ex Parte appeal: GRAND HOTELS NYC (for ‘hotel services’ with “HOTELS NYC” disclaimed) not confusingly similar to GRAND HOTEL (for ‘hotel and restaurant services’ with “HOTEL” disclaimed). Applicant submitted multiple 3rd party registrations containing GRAND HOTEL for hotel services; the declaration of a private investigator that confirmed use of the phrase by several others; and website advertisements of 10 hotels. “Because of the highly suggestive nature of the mark “Grand Hotel,” the proliferation of registered “Grand Hotel” marks and the unregistered uses of “Grand Hotel” marks, the mark “Grand Hotel,” itself, is entitled to only a very narrow scope of protection or exclusivity of use. Further, because of the highly suggestive nature of GRAND HOTEL and the number of third-party GRAND HOTEL marks, we conclude that consumers are able to distinguish between different GRAND HOTEL marks based on small differences in the marks, including the addition of a geographic term. Accordingly, we find that applicant’s mark GRAND HOTELS NYC for hotel services is not likely to cause confusion with Registration No. 1250067 for GRAND HOTEL for hotel services.”
77902555	03/23/2012	BOARD`S DECISION: REVERSED	N	Refusal of CHINA FREE & Design for ‘vitamin and mineral supplements’ (with “CHINA FREE” disclaimed) on grounds under Sect. 2(a) that the mark consists of or comprises matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols. Applicant’s untimely evidence submitted during appeal not considered. Issue on appeal – whether mark disparages the People’s Republic of China. Refusal reversed: Board “cannot find clear evidence on this record that applicant’s motivation is to disparage China.”
77955361	03/19/2012	BOARD`S DECISION: REVERSED	N	Standard character and logo applications for “440” for “metal fences and gates and structural component parts thereof for ranching use” were refused under Section 2(d) with registered mark 440-XH for “steel in the form of metal powder and compacted metal powder and wrought products, namely wire, rod, bar, strip, billet, and other shapes.” Board found goods different – registrant’s mark did not contain “finished products” – and channels of trade different. Applicant also demonstrated that the overlapping portion was weak in registrant’s industry. Registrant’s goods purchased by sophisticated consumers. Result: refusal reversed.
75574825	03/19/2012	BOARD`S DEC: AFFD IN PART/RVRSD IN PART	N	Applition for SOFTSPIKES for ‘cleats for footwear in sports’ refused as generic and alternatively as insufficient 2(f) evidence. Mark found not generic: “in the face of applicant’s substantial showing that SOFTSPIKES is recognized as an indicator of source, that SOFTSPIKES would be perceived by the relevant public primarily as a generic term for applicant’s plastic golf cleats.” Mark found to have acquired distinctivness. Excellent roadmap of the type and amount of evidence necessary to show 2(f).
77836610	03/20/2012	BOARD`S DEC: AFFD IN PART/RVRSD IN PART	Y	TENNIS INDUSTRY ASSOCIATION genericness refusal reversed, but 2(f) found evidence insufficient (“the greater the degree of descriptiveness, the greater the evidentiary burden on the user to establish acquired distinctiveness”).
77660948	03/19/2012	APPEAL TO CAFC	–	City of Houston commenced appeal to CAFC
92052337	03/19/2012	SUSPENDED PENDING DISP OF CIVIL ACTION	N	Petitioner commenced civil action after commencement of trial period and 2+ yrs after commencement of the proceeding. Despite frustration of Defendant and Board; proceeding suspended pending disposition of civil action.
92053674	03/24/2012	RESPONSE DUE 30 DAYS (DUE DATE)	N	Petition to cancel consisted of ESSTA cover sheet and letter. Defendant filed a 12(b)(6) motion to discmiss for failure to state claim. Petition found to lack any claim of damage or harm, and thus lacks standing. Petition also fails to adequetly set forth grounds for cancellation. Motion to dismiss granted; Petitioner allowed 30 days to amend pleading.
92054545	03/22/2012	TRIAL DATES RESET	N	Defendant moved to dismiss the petition for cancellation for failure to state a claim upon which relief can be granted, and for failure to plead fraud with particularity; Petitioner moved to amend pleadings. Amended pleaded allowed and found to survive 12(b)(6), so defendant’s motions to dismiss denied.
91202392	03/20/2012	TRIAL DATES RESET	N	Opposer moved to strike applicant’s affirmative defenses of laches, waiver, estoppel, and acquiescence. Defenses of laches and acquiescence stricken b/c they run from time the application is published. Regarding defenses of estoppel and waiver, they are stricken as merely “conclusory statements that fail to put opposer on notice as to the specific theory or defense that applicant is asserting.”
91176027	03/19/2012	BOARD`S DECISION: SUSTAINED	N	Apple opposed VIDEO POD for “video projectors” (“VIDEO” disclaimed) on 2(d) and 2(e)(1) grounds. Evidence: Board accorded no weigth to anonymous blogger statements; other documents produced by Applicant for first time during testimony excluded. Descriptiveness: Board finds “that the evidence supports the conclusion that the term “Video Pod” is merely descriptive of a pod-shaped video player.” Likelihood of confusion: Board found Opposer’s IPOD mark famous and “a conceptually strong mark” and sustained the Opposition under 2(d).
91184456	03/20/2012	BOARD`S DECISION: SUSTAINED	Y	Opposition to L’OREAL PARIS (for ‘aloe vera drinks’) sustained based likelihood of confusion with Opposer’s L’OREAL and L’OREAL PARIS marks for cosmetics. Board found Opposer’s marks famous. Applicant found to have history of filing intent-to-use marks correlating to well known brands, indicating bad faith. Applicant also found to be lacking bonafide intent to use the mark in commerce.
92054000	03/23/2012	BOARD`S DECISION: GRANTED IN PART		Petition to cancel granted as to two reistrations surrendered by Defendant; petittion to cancel dismissed as moot as to third registration that was not renewed
91198657	03/20/2012	EXTENSION OF TIME; GRANTED; SUSPENDED		Opposer’s motion to extend discovery granted; “Board finds that there is no evidence of negligence or bad faith on the part of opposer and opposer has not abused the privilege of extensions.”
91188800	03/22/2012	P`S MOTION TO AMEND PLEADINGS GRANTED; TRIAL DATES RESET	N	Opposer’s motion to amend pleadings granted. Board sua sponte reviewed all pleaded claims and found dilution and false suggestion of a connection claims deficient.
94002502	03/22/2012	RESPONSE DUE IN (60) DAYS	N	Concurrent use conset agreement denied by Board with suggestions on how to correct it.
92054925	03/22/2012	RESPONSE DUE TWENTY DAYS	N	Finding defendant’s failure to timely file an answer inadvertent, Board set aside notice of default. Board sua sponte noted that the dilution claim (registration is incontestible) not possible and the abandonment claim not properly pleaded and thus found petition to cancel failed to state a claim. Petitioner given 20 days to amend petition.
92054462	03/22/2012	PROCEEDINGS RESUMED	N	Defendant moved for relief from final judgment, a default. Board granted the motion – “the Board finds that respondent has a meritorious defense to the petition for cancellation inasmuch as the answer presents a plausible response to petitioner’s allegations and denies the pleaded ground of abandonment”

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TTABulator

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data and details about the Trademark Trial and Appeal Board of the USPTO. Presented by Erik M. Pelton & Associates. www.ErikPelton.com

Category Archives: TTAB Decisions

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