Category Archives: TTAB Decisions

Apr 25 2012
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TTAB Decisions

Recent TTAB Decisions and Activity of Note (3/12 – 3/18/2012): One case re-instituted after 10 year delay

Catching up on decisions from last month still!

During the week of March 12 – March 18, 2012, the TTAB issued one precedential decision regarding service of process. 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. Of particular interest is the case that has been on hold for more than 10 years – the Board believes the file has been lost and has asked the parties for help to reconstruct it.

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

Proceeding No.

Date

Board’s Action

Precedent?

 Notes

92052101

 03/16/2012 DEF`S. MOT. FOR SUMMARY JUDGMENT GRANTED

N

 Petitioner seeks to cancel STEAK OF THE MONTH for “electronic retailing services via computer featuring food and food related products” as generic. Petitioner previously lost a suit to respondent and is barred from operating any site or domain containing “STEAK OF THE THE MONTH,” thus the Board found Petitioner had no standing. Furthermore, the claim was litigated previously and is barred by res judicata. Respondent’s Motion for Summary judgment granted.

91188283

 03/14/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED

N

 Motion for summary judgment denied.

91195692

 03/12/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED

N

 Applicant’s motion for summary judgment on Opposer’s claim of likelihood of confusion denied; Opposer’s partial mostion for summary judgment regarding Applicant’s affirmative defenses granted in part and multiple affirmative defenses stricken.

91197260

 03/16/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED

N

 Cross-motions for summary judgment denied. Board scolds parties for their misconduct: We believe the parties’ use of wording such as “misguided and  ludicrous” (motion, p. 3); “audacity” (reply, p. 4);  “personal vendetta” (reply, p. 12); “frivolous and harassing” (motion, p. 9; reply, p. 12); and “appallingly,” “baseless,” and “astounding” (brief in opposition, p. 4) is unnecessary and reveals a lack of decorum.  Moreover, such behavior at

this early stage in the proceeding is roublesome and does not further the orderly disposition thereof.

92051437

 03/16/2012 PLAIN`S MOT. FOR SUMMARY JUDGMENT GRANTED

N

 Petitioner’s motion for summary judgment on 2(d) claim granted; JEWELRY FOR LIFE (for jewelry) cancelled due to priority and confusion with Petitioner’s JEWELERS FOR LIFE (jewelry store services)

92052150

 03/13/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED

N

 Petitioner’s Motion for Summary Judgment denied where civil action between the parties was settled but did not cover trademark issues.

92053072

 03/13/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED

N

 Motion for Summary Judgment denied.

91190276

 03/15/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED

N

 Cross-Motions for Summary Judgment denied.

94002238

 03/13/2012 BD`S DECISION: FAVORABLE TO APPLICANT

N

 Consent agreements and concurrent used accepted

94002403

 03/12/2012 BD`S DECISION: FAVORABLE TO APPLICANT

N

 Consent agrement regarding concurrent use accepted

77404047

 03/14/2012 BOARD`S DECISION: AFFIRMED

N

 Refusal of BIONICAM for failure to provide proper specimen affirmed where specimen only showed use on 1 of 2 classes of goods

77531829

 03/15/2012 BOARD`S DECISION: AFFIRMED

N

 Refusal of WHISPER and WHISPER DRIVE for window blinds and shades affirmed due to 2(d) conflict with registered mark WHISPERSHADE for motorized window shades and WHISPERTRAC for motorized track components for window coverings

77757688

 03/15/2012 BOARD`S DECISION: AFFIRMED

N

 Refusal of BEIJING BEEF (for ‘prepared chinese food’) under Sect 2(e)(1) affirmed: “Such term immediately conveys, without speculation or conjecture, that the goods are of a category of food prepared using the Beijing style of cooking.”

77910810

 03/12/2012 BOARD`S DECISION: AFFIRMED

N

 Refusal of iCookbook for portable electronic reading device under Sect 2(d)(1) affirmed: “As shown by the evidence of record, the combination iCookbook has no other unique or incongruous meaning in relation to applicant’s recited goods and services apart from the descriptive significance of the two separate terms themselves.” Applicant’s additional evidence was improperly submitted and not verified.

77932193

 03/14/2012 BOARD`S DECISION: AFFIRMED

N

 Refusal to register EL OBSERVADOR DE UTAH and two designs containing the wording  (for newspapers and electronic publications) under Sect 2(d) due to registration of EL OBSERVADOR & Design” for publications affirmed.

85001018

 03/16/2012 BOARD`S DECISION: AFFIRMED

N

 Refusal of ATLANTA TREND for “providing information and news in the field of business” under Section 2(d) due to registered mark GEORGIA TREND for “magazines dealing with Georgia business and finance” affirmed: “Despite the fact that the geographic indicators are different, the marks convey the same overall commercial impression, and the similarities in appearance caused by the inclusion of the identical dominant word element “Trend” in both marks outweigh the differences.”

77445394

 03/14/2012 BOARD`S DECISION: REVERSED

N

 Applications for GREEN CONNECT in standard character and logo for “promoting consumer awareness in the field of renewable energy…” refused under Section 2(d) due to registration of GREEN CONNECTED and GreenConnected logo for similar environmental services. Applicant’s also refused under Sect 1 and 45 lack of use in connection with the services; and logo refused on the ground that mark on the specifmes differs from the drawing. Board found that because GREEN is weak, confusion not likely and reversed refusal. Board found the specimens of use acceptable. Board found the variation between drawing page and specimen an “inconsequential variation,” and thus reversed all three grounds of refusal.

91194188

 03/13/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT

N

 Plaintiff seeks to cancel registration of SPRINKLES for “bakery goods” and “retail shopes featuring baked goods” on grounds of priority and likelihood of confusion with its use of SPRINKLES for baked goods and retail store. Following Plaintiff’s Motion for Summary Judgment, Defendant filed Rule 56(d) motion for disovery seeking: depositions that it noticed prior to the MSJ filing; deposition of delcarants in support of the MSJ; responses to document requests; and other claims. Defendant’s affirmative defenses of laches, waiver, acquiescence and estoppel deemed insufficient and stricken. Defendant’s motion for Rule 56(d) discovery granted; but only to the extent that defendant allowed 60 days to take depositions of certain persons regarding certain subjects.

91199038

 03/16/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT

N

 Opposer filed motion to compel after Applicant’s motion for summary judgment was pending; The motion to compel will not be considered as parties should have known the Board will suspend the proceeding pending outcome of potentially dispositive motion.

92053377

 03/16/2012 RESPONSE DUE 30 DAYS (DUE DATE)

N

 Defendant’s motion to dismiss the amended petition for cancellation for failure to state a claim granted as to some grounds of fraud and denied as to other grounds.

92053554

 03/16/2012 TRIAL DATES RESET

N

 Defendant brought motion to dismiss proceeding on grounds that Petition did not exist as a U.K. corporation when the petition was filed and thus lack standing. Respondent failed to plead such a defense it its answer or seek leave to amend the answer; failed to produce any evidence of such and motion denied, and also failed to serve initial disclosures before filign the motion. Motion denied.

92053693

 03/12/2012 TRIAL DATES RESET

N

 Petition sought to amend its pleading to add a claim of abandonment and to expand 2(d) claim to include a second Class of goods. Regarding the expansion of goods in the 2(d) claim, Petitioner failed to show any reason for delay, and motion to leave to amend denied. Regarding abandonment claim, Petitioner’s claim based on an announcement on respondent’s website avaiable at the time of filing. But because no new discovery is sought there is no prejudice and motion to amend to add claim of abandonment is granted.

91173784

 03/14/2012 TRIAL DATES RESET

N

 Applicant moved for judgment as a sanction for Opposer’s failrue to provide a properly verified responses to interrogatories as required in a board order many months earlier. The verification provided by Opposer did not include the title of the signatory or state and did not state conclusively that all responses are true. Board construed the verification as sufficient and denied motion for sanctions, but imposed a lesser sanction regarding discovery.

91201847

 03/13/2012 TRIAL DATES RESET

N

 Three weeks after the Board issued notice of default of application for failure to file an answer, Applicant filed an answer and motion to set aside default. Motion granted as default was not willful nor the result of gross neglect.

91191370

 03/12/2012 BOARD`S DECISION: SUSTAINED

N

 HAC logo for cosmetic and beauty products opposed based on registered MAC and MAC logo for cosmetic and beauty products. Opposer’s marks found famous. Applicant’s 3rd party registration evidence attached to answer not considered b/c not properly submitted. Marks found similar in sight and in sound, especially considering fame of Opposer’s marks. Result: Opposition sustained.

91116517

 03/14/2012 BOARD`S COMMUNICATION

N

 No action had been taken in the proceeding since 2001; Board presumed its filed to be lost. Board order requests assistance constructing a duplicate file if Opposer wishes to continue the proceeding.

94002503

 03/16/2012 BOARD`S ORDER

N

 Board found concurrent use agreement between the parties insuficient, but Board makes suggestions for amending the agreement.

91203607

 03/16/2012 D`S MOTION TO DISMISS DENIED; TRIAL DATES RESET

N

 Applicant’s motion to dismiss opposer’s asserted claim of priority and likelihood of confusion under Fed. R. Civ. P. 12(b)(6) for failure to state a claim upon which relief can be granted is denied.

91194974

 03/16/2012 MOT TO EXTEND GRANTED; MOTION TO COMPEL DENIED

N

 Board granted applicant’s motion to extend time to provide rebuttal expert disclosures and denied opposer’s motion to compel such disclosures.

92052419

 03/16/2012 MOTION FOR SANCTIONS; DENIED; SUSPENDED

N

 Respondent, after several extensions and delays due to withdrawal of counsel, failed to respond to discovery requests. Pettitioner’s motion for sanctions denied where respondent has not failed to comply with a Board order; Respondent ordered to provide disvoery responses by a certain date.

92054121

 03/12/2012 MOTION TO DISMISS GRANTED

Y

 Defendant’s motion to dismiss for failure of service granted. Petitioner served Brad D. Rose of the law firm Pryor Cashman LLP, an attorney who was never respondent’s counsel of record, but who responded in writing to a cease and desist letter that petitioner’s counsel had sent to the counsel of record listed for respondent during ex parte examination, Brian R. McGinley of the law firm Sonnenschein, Nath & Rosenthal LLP. But since it was clear that respondent is on notice of this proceeding, proceding institututed by the Board with a later institution date.

92053102

 03/16/2012 MOTIONS GRANTED; TRIAL DATES RESET Respondent Reebok’s motion for leave to amend its answer and add claims filed 8 days prior to close of discovery is granted. Respondent’s motion to compel discovery esponses hwere petition objected to a whole set of discovery requests as irrelevant is granted to the extent the request are relevant to the amended answer.

91198117

 03/14/2012 MOTIONS TO COMPEL; DENIED; PROCEEDINGS RESUMED; TRIAL DATES RESET Both parties filed motions to compel. Regarding opposer’s motion, opposer failed to provide a statement of good faith effort to resolve the issues or any indication of making such an effort, and the motion was denied. Regarding Applicant’s motion, applicant fialed to provide a statemetn of good faith effort and the only effort to reolve was the sending of one letter, and the motion was also denied.

92054050

 03/16/2012 PROCEEDINGS RESUMED; RESPONSE DUE IN (20) DAYS Reply brief which was 12 pages, more than the allowed limit of 10, was not considered. Respondent’s motion to dismiss is granted regarding pleading of fraud.

91194774

 03/05/2012 SUSPENDED FOR SETTLEMENT; DATES RESET Opposer’s motion to amend protective order granted; the amendment allows in house counsel to review trade secret materials with restrictions: “No emails which involve such materials may be sent or received by opposer’s (or any of opposer’s related companies’) domains, servers, or computer systems; Dr. Westerlund must use an outside email system such as Yahoo, Gmail, or the like.  And, if it is necessary to print such information, Dr. Westerlund may not print using opposer’s (or any of opposer’s related companies’) printers, but may print using her work-at-home printer.”

Opposer’s motion to compel denied as opposer has not met burden to make a good faith effort to resolve the issues fist.

92050171

 03/14/2012 PROCEEDINGS RESUMED Petitioner moved for sanctions alleging that 30(b)(6) witnesses were unprepared to answer questions on multiple topics at deposition. Board denied sanctions requested but permitted petitioner to conduct an additional deposition regarding some of the topics.

91194574

 03/13/2012 PROCEEDINGS RESUMED Applicant’s motion for sanctions denied as premature. Applicant’s motion to compel denied as “procedurally deficient because applicant failed to provide the required certification of good faith effort under 37 CFR § 2.120(e).”

91198579

 03/13/2012 PROCEEDINGS RESUMED Applicant’s second counterclaim is a new claim of fraud alleging that Opposer filed a press release as a specimen but describe it as advertising; the counterclaim is stricken as “there are no general or specific allegations regarding opposer’s knowledge and intent to deceive the USPTO to procure a registration to

which opposer was not entitled, which is required for a pleading of fraud against the USPTO.” Applicant’s 3rd counterclaim related to Opposer’s Section 8 and 15 filing and was similarly stricken.
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Apr 13 2012
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TTAB Decisions

Recent TTAB decisions and activity of note (3/26 – 4/01/2012)

Still catching up a bit on a lot of recent activity from the Board. Between 3/26/12 and 04/01/2012), the TTAB issued many decisions, as well as several discovery and other procedural rulings.0

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

[I have highlighted interesting cases and decisions in bold]

Proceeding  No. Date TTAB disposition Prec-edent? Notes
In re PBM Products, Inc, 77368754 3/29/2012 BOARD`S DECISION: AFFIRMED No Refusal to register VERMONT ORGANICS for organic baby food from Vermont affirmed as primarily geographically descriptive, 2(e)(2).
In re Pearson Dental Supplies, Inc. 77470466 3/29/2012 BOARD`S DECISION: AFFIRMED No SYLK for dental floss refused for LOC with SILK also for floss; affirmed by Board. Board also affirms refusal on deceptively misdescriptive grounds because silk is not used in applicant’s floss and is used in the industry and would be a relevant factor to some consumers purchasing decision.
In re Chubby’s, Inc. 77493297 3/30/2012 BOARD`S DECISION: AFFIRMED No EA refused registration of CHUBBYS for bar and restaurant services based on LOC with EL CHUBBY’S for restaurant services featuring Mexican food. Board affirms refusal to register.
In re Guisto’s Specialty Foods LLC 77528795 3/30/2012 BOARD`S DECISION: AFFIRMED No EA refused registration of VITA-GRAIN for cooking ingredients based on LOC with VITOGRAIN for nearly identical products. Board affirms refusals.
In re American Express Marketing & Development Corp. 77538456 3/30/2012 BOARD`S DECISION: AFFIRMED No EA refused registration for MONEYEXCHANGE for stored value cards in Class 9, various financial services in Class 36, and online account services in Class 38, all cited as descriptive under 2(e)(1). Applicant made amendment seeking Supplemental Registration. Class 9 published, but Classes 36 and 38 refused for genericness. Board affirmed refusals to register.
In re Coty US LLC 77631330 3/29/2012 BOARD`S DECISION: REVERSED No EA refused registration for TEMPEST for perfumes, soaps, and body washes in Class 3, but registration was refused based on likelihood of confusion with TEMPEST for “indoor tanning preparations” in Class 3. Board reversed refusal to register citing that the registered mark includes only a very narrow set of goods and these goods are marketed and sold to sophisticated professionals.
In re Sonatt Nutritionals 77827420 3/27/2012 BOARD`S DECISION: AFFIRMED No EA refused registration of stylized SONŪ mark for dietary supplements in Class 5 based on likelihood of confusion with stylized SONU for beferages in Class 32. Board affirmed refusal and noted that the applicant repeatedly made improper collateral attacks on the registered mark during prosecution.
In re CellCorp USA LLC 77860793 3/28/2012 BOARD`S DECISION: AFFIRMED No EA refused registration for the configuration of a backpack with exterior pockets holding a water bottle and a flashlight citing that the product design had not acquired distinctiveness. The Board affirmed refusal noting that the applicant has a “heavy burden in establishing the distinctiveness of a product design.” Despite the presence of significant sales figures, there was no media attention and customers were not likely to look at the design as a trademark.
In re Nissan North America, Inc. 77865978 3/30/2012 BOARD`S DECISION: REVERSED No EA refused registration of ONE-TO-ONE SERVICE mark and same mark in stylized form for vehicle maintenance repair services citing LOC with ONE-TO-ONE SERVICE.COM and same mark in stylized form for online customer service management services. The Board reversed the refusal after analyzing similarity of the marks, similarity of the services, channels of trade and class of purchasers, and buyer sophistication and finding that the factors weigh in favor of registration.
In re William Coden 77899687 3/26/2012 BOARD`S DECISION: AFFIRMED No EA refused registration of FIDO’S FENCES for batteries in Class 9 and “installing pet containment systems” in Class 37 citing likelihood of confusion with FIDO-SHOCK for “pet deterrant electric fences.” The Board affirmed refusal citing that FIDO is the dominant part of the marks and that even batteries (presumably to be used in the fences) are likely to be confused.
In re Strategic Partners, Inc. 77903451 3/28/2012 BOARD`S DECISION: REVERSED Yes EA refused registration of stylized ANYWHERE mark for footwear citing likelihood of confusion with stylized ANYWHERE BY JOSIE NATORI for jackets, skirts, pants, tees, and stoles. Applicant has argued that the marks and goods are different, but also cites ownership and coexistance for more than five years of standard character mark ANYWEARS mark for footwear and socks, but not other clothing items. Board stated that under normal circumstances likelihood of confusion was likely between the marks, but considering the applicant’s existing registrations and the thirteenth du Pont factor (any other established fact probative of the effect of use), confusion is not likely.
In re Republic Bike Inc. 77909077 3/26/2012 BOARD`S DECISION: AFFIRMED No EA refused registration for REPUBLIC for bicycles and parts, excluding tires citing likelihood of confusion with REPUBLIC for tires (a brand owned by Goodyear). The board affirmed refusal citing identical marks and the fact that registration is for “tires”, generally, which could include bicycle tires. Goodyear in fact made bicycle tires until 2006 and various companies make both bicycle tires and car tires (Continental, Michelin, Kenda, etc.). The evidence also shows that  marks used to identify bikes are also used to identify bicycle tires.
In re Sketchers U.S.A., Inc. II 77922983 3/30/2012 BOARD`S DECISION: AFFIRMED No EA refused registration of TWINKLE TOES for “Dolls, excluding dolls relating to characters from children’s books; doll clothing; and doll accessories” citing likelihood of confusion with TWINKLE TOES for children’s books. Board affirmed refusal.
In re Steamboat Springs Chamber-Resort Association, Inc. 77939915 3/31/2012 BOARD`S DECISION: REVERSED No EA refused registration of BIKE TOWN USA mark (BIKE and USA disclaimed) for organizing bicycle races in Class 41 citing likelihood of confusion with BIKETOWN for bicycle promotion services and contests in Class 35. The Board, after balancing the factors including a lengthy discussion of the dissimilarity of the services, reversed the refusal to register.
In re Fedrigoni S.p.A. 79069010 3/27/2012 BOARD`S DECISION: AFFIRMED No EA refused registration of MULTILEVEL for printer supplies in class 2; printed holograms and encoded cards in Class 9; currency and currency making paper and the like in Class 16; and security threads and the like in Class 17 citing that the mark is merely descriptive. Board affirmed refusal for Classes 9 and 16 and affirmed EA’s requirement for more specificity in the descriptions for ID cards in Class 16. The Board reversed the refusal to register for goods in Classes 2 and 17 and reverse the requirement for more specificity in the identification of goods in Class 17.
In re Equine Natural Choice, L.L.C. 85056406 3/27/2012 BOARD`S DECISION: AFFIRMED No EA refused registration of EQUINE NATURAL CHOICE (EQUINE NATURAL disclaimed) for animal feed supplements and the like for LOC with EQUINE CHOICE for horse feeds. Board affirmed refusal to register after balancing the du Pont factors.
In re Big Time Holdings, Inc. 85057799 3/29/2012 BOARD`S DECISION: AFFIRMED No EA refused registration of BLIZZARD for gloves based on likelihood of confusion with BLIZZARD and similar design mark (of BLIZZARD ENTERTAINMENT) for “clothing, namely hats and shirts”, both in Class 25. Board affirmed refusal to register after balancing the du Pont factors.
In re International Christian Broadcasting, Inc. 85058128 3/29/2012 BOARD`S DECISION: REVERSED No EA refused HEROES UNDER GOD design mark for retail store services citing that the specimin submitted fails to show use of the mark in commerce with the identified services, noting that the specimins tend to show the mark with specific goods rather than to identify the services. Board reversed the refusal to register citing that the applicant’s specimin of use is adequate to support their contention that the mark is used to promote retail services.
UPS v. Unigroup Worldwide, Inc. 91175419 3/26/2012 BOARD`S DECISION: DISMISSED No Unigroup sought to register two design marks with content “UNIGROUP WORLDWIDE UTS” for business management and consulting in Class 35 and transportation, warehousing, storage, and freight services in Class 39. UPS opposed the application citing its own registrations of UPS for similar services in classes 35 and 39. The board considered the relevant du Pont factors and determined that confusion is not likely, citing to a significant difference in the marks.
Amazon Technologies, Inc. v.Wax 91187118 3/30/2012 BOARD`S DECISION: SUSTAINED No Amazon.com opposed registration of AMAZON VENTURES mark for venture capital services. The Board affirmed the opposition citing a likelihood of confusion.
RIM v. Sensors in Motion Inc. 91188320 3/26/2012 BOARD`S DECISION: DISMISSED No RIM opposed registration of SENSORS IN MOTION mark (SENSORS disclaimed) for automated process control systems related to industrial and electrical machinery and processes, GPS, remote controls, game controllers, and and the like alleging likelihood of confusion with goods and/or services offered under RIM’s RESEARCH IN MOTION mark. Board dismissed the opposition.
Byrn v. Culinaria, Ltd. 91189139 3/30/2012 BOARD`S DECISION: SUSTAINED No Byrn opposed registration of Culinaria’s applied for-mark, DINNER DOCTOR, for education and entertainment services relating to food and cooking, namely radio, tv, internet, etc. Opposition was based on likelihood of confusion and fraud. Opposer claims prior use (but no federal registration of) THE DINNER DOCTOR for television, radio, and print cooking information as well as claims ownership of registered mark THE CAKE MIX DOCTOR for cookbooks and for educational cooking services. Opposer established by a preponderance of the evidence that she has priority, and there is a likelihood of confusion. As such, the board sustained the opposition.
Fred’s Capital Management Company v. Fred Beverages, Inc. 91193052 3/30/2012 PROCEEDINGS RESUMED No FBI had application denied because of likelihood of confusion with FCMC registration, so FBI filed for partial cancellation of FCMC mark in Class 32. Partial cancellation was granted and FBI’s mark was approved for publication. FCMC subsequently opposed the FBI mark. Board analyzed issue of standing of applicant to seek cancellation because of abandonment after they surrendered the Class at issue in the LOC refusal, but the Board rejected this argument. The Board did grant opposer’s motion to strike one of the allegations from applicant’s amended petition because the paragraph only related to the already cancelled Class 32.
Edom Laboratories, Inc. v. Lichter 91193427 3/30/2012 BOARD`S DECISION: SUSTAINED Yes Opposer, Edom, objected to application of applicant for SUPER CHIRO TEA based on opposer’s registration for CHIRO-KLENZ citing LOC between the products. Parties agreed to ACR. The Board gave an interesting discussion of the similarity of the marks and, citing evidence of actual confusion and applicant’s bad faith intent, sustained the opposition.
91194106 3/26/2012 BD`S DECISION: DISMISSED W/ PREJUDICE No Two car clubs fighting over “LONG ISLAND VETTES” mark.  Parties agreed to ACR including several stipulated facts. Applicant found to have priority based on use for several years prior to Opposer’s incorporation, as a result, the Opposition was dismissed.
91195989 3/27/2012 BD`S DECISION: DISMISSED W/ PREJUDICE No Opposition to “HipRoc” for clothing based on Opposer’s marks HIP ROCK & Design and HIP ROCK AUTHORITY & Design for clothing. Opposer’s pleading and Brief actually aruged that there is no confusion as though responding to an Office Action or seeking a declaratory judgment. Neither party introduced any testimony or evidence. Opposer did not prove standing or priority, and Opposition dismissed with prejudice.
91196106 3/26/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED No Opposer filed MSJ; Applicant moved to repopen time to respond to Requests for Admissions or to withdraw such admissions, claiming it did not receive the RFA’s until after the time to respond expired (Applicant is a South Korean corporation and blamed delay on its agent). Board found Applicant found to have failed to establish excusable neglect and RFA’s are deemed admitted, but Applicant’s motion to withdraw its admissions is granted. Because the MSJ rested solely on the RFA admissions, it was denied.
91196776 3/29/2012 TRIAL DATES RESET No Applicant’s motion to compel further interrogatory responses and document production. Board found that despite correspondence between counsel, Applicant did not make the requisite good faith effort prior to filing motion. “Choosing to ignore opposer’s invitation to further clarify applicant’s discovery demands in view of opposer’s stated objections and, instead, filing a motion to compel does not meet said burden.”
91197754 3/27/2012 PROCEEDINGS RESUMED No Applicant’s motion for leave to share a document Opposer labeled as confidential “trade secret” document with a translator of its choice. Motion granted; translator should be advised of the terms of the protective order. Board sua sponte noted that several of the claim pleaded by Opposer are insufficient. Board also noted: The hostile and accusatory tone of the parties’ submissions herein, however, has not gone unnoticed.  The parties are reminded to conduct themselves with courtesy and decorum herein.
91199922 3/28/2012 D`S MOT TO DISMISS GRANTED, IN PART, DENIED, IN PART; TRIAL DATES RESET No Applicant’s (Nike, Inc.) application for 20XI & Design for apparel and other goods opposed on a variety of grounds, including the Paris Convention, based on Oppposer’s 20XII THE HONOR OF SPORT mark. Applicant moved to dismiss for failure to state claim: Dilution claim found insufficient; Aricle 8 of Paris Convention claim dismissed with prejudice as not a proper independent basis; claim of ownership of foreign registration dismissed as not in and of intself a ground for opposition; willful trademark infringement claim dismissed as outside jurisdiction of TTAB; claims of priority and likelihood of confusion permitted to go forward.
91200683 3/27/2012 BD`S ORDER RE TELEPHONE CONFERENCE No Opposer’s motion for applicant to supplement initial disclosures granted; Board found applicant’s initial disclosures insufficient as they did not include the location of the identified document and did not identify and potential witnesses.
91202393 3/27/2012 AMENDMENT DENIED/TRIAL DATES RESET No Consented motion to amend mark from PELICAN BAY RUM to PELICAN RUM denied as a material alteration of the mark.
91202567 3/28/2012 P`S MOT TO STRIKE GRANTED, IN PART, DENIED, IN PART; TRIAL DATES RESET No Opposer moved to strike certain affirmative defenses from Applicant’s answer. Defenses of unclean hands, acquiescence, and more stricken as motion granted in part.
91202725 3/29/2012 TRIAL DATES RESET No Applicant’s motion for a more definite statement regarding the Notice of Opposition is denied.
92049165 3/30/2012 CROSS-MOTIONS FOR SUMMARY JUDGEMENT DENIED No Cross motions for summary judgment denied. Note: parties each had an expert and Opposer had a survey conducted.
92049913 3/29/2012 DEF`S. MOT. FOR SUMMARY JUDGMENT GRANTED No Levis’ opposed application of Abercrombie & Fitch for jean pocket stiching pattern on grounds of 1) priority and likelihood of confusion, and 2) dilution. Opposition was suspended pending federal case where Levi’s failed on 2(d) grounds and the dilution grounds were withdrawn after Ninth Circuit overruled district court’s finding of no dilution. A&F moved for sum. judgment on claim preclusion and/or issue preclusion (collateral estoppel). Levi’s argued that the dilution claim The Board found its voluntary dismissal of the dilution claim did not constitute adequate litigation of the issues to give rise to issue preclusion. Board granted A&F’s summary judgment after finding issue preclusion.
92051031 3/30/2012 PETITION TO CANCEL DENIED No Petition to cancel SCIENTIFIC SOLUTIONS & Design (with wording disclaimed) for supplements based on Petitioner’s registration of SCIENTIFIC SOLUTIONS for computer hardware and software. Petitioner’s evidence of actual confusion found vague and given no weight. “Notwithstanding the close similarity of the parties’ marks, when we consider the respective goods of the parties, which are so fundamentally dissimilar and sold in different trade channels to different classes of purchasers, we find that a likelihood of confusion does not exist.  Decision:  The petition to cancel is denied.”
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Mar 29 2012
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TTAB Decisions, Uncategorized

TTAB decisions and activity of note (3/5 – 3/12/2012)

Catching up here on a lot of recent activity from the Board. Between 3/05/12 and 03/12/2012), the TTAB issued many decisions, numerous final decisions and several discovery and other procedural rulings.

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

Parties Proceeding # Date TTAB Disposition Precedent? Notes
Rameriez v. Staves 91196016 3/7/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED N
In case with two parties fighting over right to registration of MAJESTIC CAR CLUB mark, summary judgment was denied because numerous issues of material fact exist as to ownership, membership, right to register, and priority.
Caterpillar, Inc. v. Alan Sadler 91198643 3/8/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED N

Because applicant was found to have no bona fied intention to use the mark in connection with the services listed in the application, the Board did not consider Applicant’s motion for summary judgment, and it was denied.
Caterpillar, Inc. v. Alan Sadler 91198463 3/5/2012 PLAIN`S MOT. FOR SUMMARY JUDGMENT GRANTED N Applicant admitted in interrogatory responses and deposition that he had no bona fied intent to use the mark in connection with the services listed in his application. Opposer’s motion summary judgment granted. Opposition of Caterpillar sustained. Marks: Caterpillar, CAT, and various other marks for earth-moving machinery and the like; LAWNCAT for lawn care services.
The Independent Feature Project, Inc. v. Gotham City Networking, Inc. 92052896 3/7/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED N Gotham owns GOTHAM FILM FESTIVAL mark, which was cited in LOC denial of IFP’s applications for GOTHAM INDEPENDENT FILM AWARDS and GOTHAM AWARDS marks. Summary judgment was requested by IFP for for priority and determination of no LOC, but it was denied. Alternatively, IFP requested leave to amend pleadings, which was gratned.
In Touch Ministries, Inc. v. Franklin 91200407 3/7/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED N
Opposer did not appropriately serve its requests for admissions because the mail requests were not sent to the proper address of the attorney of record and the electronic request were only sent as a courtesy because there had been no agreement between the parties to rely on electronic transmission for official correspondence. Therefore, Opposer’s request for summary judgment was denied.
Critical Homecare Solutions, Inc. v. Catholic Healthcare Services of Long Island and/or CHS Home Support Services 94002351 3/6/2012 BD`S DECISION: FAVORABLE TO APPLICANT N

In concurrent use proceeding, Board found no bad faith in adoption of CHS mark by petitioner and approved registration and use by petitioner throughout the US, with the exception of New York counties Nassau, Suffolk, and Queens.
Planet Coffee Roasters, Inc. v. Souper Salad, Inc. 94002456 3/9/2012 BD`S DECISION: FAVORABLE TO APPLICANT N SSI has mark PLANET COFFEE for the entire US exept California and PCRI is requesting PLANET COFFEE ROASTERS, INC. and similar design mark for state of California only. A consent agreement to concurrent use was signed by the parties, so PCRI’s application for PLANET COFFEE ROASTERS, INC. and similar design mark for coffee and coffee beans is approved with geographic restriction to the state of California.
In re OurPet’s Company 76699927 3/5/2012 BOARD`S DECISION: AFFIRMED N EA’s final refusal citing descriptiveness for ON DEMAND for automated pet food dispensers and waterers affirmed by Board. In their brief, Applicant raised 1700+ examples of third party evidence of registrations of same or similar mark  for different sorts of on-demand goods or services, and the Board gave no weight to the argument because it was unsupported by any evidence in the record. Regarding Wictionary: “The Board will generally not take judicial notice of definitions or entries found only in online dictionaries or reference works not available in a printed format or having a regular fixed edition.”
In re Valmark Corp 76700150 3/5/2012 BOARD`S DECISION: AFFIRMED N Board affirmed EA’s 2(e)(1) refusal for descriptiveness of AUTHENTICATION TO SOURCE mark for counterfeit-prevention goods identification services.
In re Continental Frangrances, Ltd. 77677661 3/8/2012 BOARD`S DECISION: AFFIRMED N EA’s 2(d) LOC refusal of applicant’s INVISIBLE mark for “hair care preparations” was affirmed in light of existing registration of same mark for “cosmetics” owned by a different entity.  EA presented six registrations for marks that cover both cosmetics and hair care preparations and owned by the same entity. Interestingly, Unilever owns 3 of these 6 marks, a second entity owns 2 of the 6, and a third entity owns 1 of the 6. The EA also relies on 2 webpages offering both classes of products under the same name. The Board found this evidence from the EA to be sufficient. Although INVISIBLE was found to be weak for cosmetics, the other significant du Pont factors weigh in favor of affirming EA’s refusal to register.
In re Universal Rice Company Limited 77760488 3/6/2012 BOARD`S DECISION: AFFIRMED N
Registration refused for SAWAT-D  HEALTHY GRAIN and design mark for rice due to LOC with standard character SAWATDEE BRAND mark for dried fruit and vegitables. Similarity of the marks and similarity of the goods found in favor of denying registration and EA’s determination affirmed.
In re ICS Systems, Inc. 77906086 2/28/2012 BOARD`S DECISION: AFFIRMED N Board affirmed denial of registration of applicant’s mark ICS SYSTEMS, INC. for various computer software goods and services based on LOC with existing registrations owned by other firms for ICS and AUTONOMY ICS for “computer software design [and] installation” and ICS GUARDIAN and design for “technical support services” in relation to computing.
In re Market America Inc. 77949723 3/7/2012 BOARD`S DECISION: AFFIRMED N Board affirmed refusal to register LOREN and LOREN JEWELS for “jewelry; precious and semi-precious stones” in class 14 citing LOC with LOREN and LOREN plus design for “manufacture of castings for jewelry to the specifications of others” in class 40.
In re DBC, LLC 85155603 3/6/2012 BOARD`S DECISION: AFFIRMED N Board affirmed refusal to register ACTIVE DEFENSE COMPLEX for ingredients for dietary supplements, dietary supplements, and fruit extracts citing LOC with registered ECHINAMIDE ACTIVE DEFENSE for dietary supplements.
Bello Fitness LTDA v. Body Up Fitness LLC 92049838 3/2/2012 APPEAL TO DISTRICT COURT N
Body Up served notice of appeal of TTAB decision to the Court of Appeals for the District of Columbia seeking review of Board’s decision to grant petition for cancellation of BODY UP  and design mark.
E. & J. Gallo Winery v. Trigo Corp. 91200322 3/5/2012 SUSPENDED PENDING DISP OF CIVIL ACTION N
Trigo claims that the outcome of a federal case over the trade dress of competing wines  will have a bearing of whether they can continue with their application, but Gallo points out that this opposition is based on LOC of word marks (Gallo’s FRUTEZIA and Trigo’s D’FRUTA, both for wine) while the federal case is based on trade dress. Per Trademark Rule 2.117(a), the opposition was suspended because the federal case may have a bearing on this one.
Box.net, Inc. v. Dropbox, Inc. 91200450 3/5/2012 SUSPENDED PENDING DISP OF CIVIL ACTION N
Board found in favor of opposer to not consolidate with other oppositions of the mark because the oppositions are with different companies, with different records and briefs, may be argued on differing interests, and will not necessarily result in any judicial economy or time savings for the Board.
Ace Café London Limited v. ROCKERSync, Inc. 91199984 3/6/2012 TRIAL DATES RESET N Applicant defaulted twice in filing an answer, and opposer made motion to set aside late answer and requested summary judgment. Because the law strongly favors determination of cases on their merits, and because applicant asserts a meritorious defense of priority, opposer is not being prejudiced, and applicant’s default was not the result of gross neglect, applicant’s amended answer and counterclaim are accepted and trial dates are reset.
H.J. Heinz Co., L.P. v. Stonyfield Farm, Inc. 91200411 3/7/2012 TRIAL DATES RESET N
Opposer Heinz’s motion to strike affirmative defenses granted in-part and denied in-part and trial dates reset
philosophy, inc. v. Wilson 91189376 3/7/2012 BOARD`S DECISION: DISMISSED N Opposer “philsophy” provided no evidence of acquired distinctiveness of its unregistered and undefined “baby image mark” trade dress, so it is insufficient to support a basis for opposition. Opposer also cites common law rights in PHILOSOPHY mark for books and written material as well as for clothing, but the evidence does not support this contention. Opposer does own an unrestricted registration for PHILOSOPHY for publishing services, though.When balancing all of the factors, they weigh in favor of the applicant, and the opposition is dismissed.
Mendez v. Dita, Inc. 91167828 3/8/2012 BD`S DECISION: DISMISSED W/ PREJUDICE N Opposer’s testimony that she is a celebrity who manufactures and sells jewelry, clothing, bags, etc. under the mark DITA is enough to establish her standing to oppose. Opposer’s testimony related to use was unconvincing and unsupported by any documentary evidence. Opposer failed to establish herr priority, and opposition dismissed with prejudice.
O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A. 91190886 3/8/2012 BOARD`S DECISION: SUSTAINED N Opposer Seacrets Nightclub in Ocean City, MD had “attained a substantial degree of reknown in the Mid-Atlantic region,” but the evidence shows that they fall short of demonstrating nationwide fame. Thus, SEACRETS is a “strong mark with significant regional reknown which should accord a wider scope of protection.” Registration barred with Board sustaining a finding of LOC after balancing du Pont factors.
Allergan Inc. v. Boot Ox Pty Ltd. 91193303 3/6/2012 BOARD`S DECISION: SUSTAINED N
Opposer, owner of BOTOX pharmaceutical solution, successfully opposed BOOTOX mark for shoe horns, shoe stretchers, etc under Section 2(d); applicant provided not evidence
Bio-One, Inc. v. A.L.E.G., Inc. 92052195 3/8/2012 BOARD`S DECISION: GRANTED N
Petition for cancellation alleged fraud but failed to properly argue the necessary elements to show fraud. But, when balancing the factors, LOC likely and Petitioner has show priority, so registration is cancelled. Petitioner’s mark: BIO-ONE; respondent’s mark: BIO1ONE; both for use in connection with fertilizers
Kaplan v. Proctor & Gamble 92052998 3/6/2012 MOTION GRANTED; TRIAL DATES REMAIN AS SET Board explained to pro se petitioner that he must answer questions in his deposition.
Max Mara Fashion Group, S.r.l. v. Macays Stores Limited 91201523 3/5/2012 MOTION TO STRIKE; GRANTED; PROCEEDINGS RESUMED; TRIAL DATES RESET N
Motion by opposer Max Mara to strike the affirmative defenses of Mackay. Mackay sought 66(a) extension of protection for mark M&CO. for clothing items. Max Mara opposed based on existing MAX & CO.  and MAX&CO. marks for clothing and retail store services. Mackay’s six affirmative defenses were unsupported, insufficiently pleaded, non-specific,  or otherwise not actually affirmative defenses, and Max Mara’s motion to strike was granted for all six affirmative defenses.
Coyne, et al. v. Dervaes Institute; Denver Urban Homesteading, LLC v. Dervaes Institute 92053837 3/6/2012 PROCEEDINGS RESUMED; TRIAL DATES RESET N Respondent owns registration for URBAN HOMESTEADING for educational services, entertainment services, online journals, etc. Denver Urban Homesteading’s motion to test the sufficiency of respondent’s responses to requests for admission is denied without prejudice.
Amylin Pharma, Inc. v. Amlin Health LLC 91199018 3/9/2012 PROCEEDINGS RESUMED; TRIAL DATES RESET N
Board analyzed Pioneer Investment factors for excusable neglect and found that applicant has not established excusable neglect to reopen time to answer. Applicant sanctioned and given twenty days to serve its initial disclosures.
Beats Electronics, LLC v. Merkury Innovations, LLC 91203192 3/6/2012 P`S MOT. TO STRIKE GRANTED, IN PART, DENIED, IN PART; TRIAL DATES REMAIN AS SET N Eight of applicant’s affirmative defenses are not affirmative defenses; they are mere “amplifications fo applicant’s denials.” Because they put the opposer on notice in more detail of applicant’s position, there is no harm in leaving them in the record. The remainder of the affirmative defenses do not have the factual support of the record and the motion to strike them is granted.
JobDiva, inc. v. Jobvite, Inc. 92050828 3/9/2012 PROCEEDINGS RESUMED N Petitioner failed to fulfill its obligation under Trademark Rule 2.120(e)(1)  with respect to revised discovery requests, so its motion ro request production responses is denied. Overall, parties did a poor job of communicating with each other and following the schedule.
Red Bull Gmbh v. Anhing Corporation 92053993 3/6/2012 PROCEEDINGS RESUMED N
Petitioner Red Bull’s motion to strike affirmative defenses is granted.
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Mar 08 2012
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TTAB Decisions

Recent TTAB decisions and activity of note (2/27 – 3/5/2012)

Last week (2/27 – 3/05/12), the TTAB issued one precedential decision, numerous final decisions and several discovery and other procedural rulings.

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 last week [visit http://ttabvue.USPTO.gov to view any of the proceeding and documents]:

Proceeding No. Date TTAB Disposition Precedent? Notes
92052572 3/1/2012 PLAIN`S MOT. FOR SUMMARY JUDGMENT GRANTED N Petitioner’s motion for partial summary judgment on grounds of abandonment granted as respondent could not rebut evidence of no use in commerce over several years
91199530 2/28/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED N Applicant’s motion to withdraw or amend its responses to requests for admissions that were deemed admitted due to failure to timely respond is granted; as a result of allowing the late serve responses to reuests for admission, Opposer’s MSJ is denied
94002473 2/29/2012 BD`S DECISION: FAVORABLE TO APPLICANT N Applicant’s marks: (1) TWO RIVER COMMUNITY BANK and (2) TWO RIVER COMMUNITY BANK logo, for bankding services. Opposer’s mark: (i) TWO RIVERS BANK & TRUST and (ii) TWO RIVERS BANK & TRUST logo, for banking services. Concurrent use agreement between the parties approved.
77840784 2/27/2012 BOARD`S DECISION: AFFIRMED N Applicant’s mark, R.S.V.P. INTERNATIONAL, INC. for use with “hand tools, namely, manually operated tools for inserting stuffing into olives; scissors for cutting fruits and  vegetables; hand tools, namely, fruit and vegetable wedge cutters, egg slicers, potato ricers; hand operated fruit and vegetable peelers, strawberry hullers, tomato hullers, pizza cutters, ice tongs, mortar and pestles, cheese slicers; hand tools, namely, coffee tampers, crab crackers, saute tweezers” in Class 8 refused under Sect. 2(d) due to conflict with R.S.V.P. for “flatware” in Class 8. Applicant’s effort to introduct evidence, on appeal from prosecution of a third party registration, denied. Board found that both “applicant’s and the registrant’s goods can be sold by the same entities under a single mark, and that consumers can encounter both types of products together.” Refusal to register affirmed.
77860835 2/29/2012 BOARD`S DECISION: AFFIRMED N Refusal to register ITUNES LP for computer software and other goods and services without a disclaimer of ‘LP’ is affirmed even though the goods are not records.
91191681 2/28/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT N Applicant’s motion to quash rebuttal testimonial deposition denied.
91192072 2/27/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Consented motion to restrict the identification granted; motion to amend design mark denied becaue it added the words NEW YORK which material alters the commercial impression
91200110 2/28/2012 TRIAL DATES RESET N Applicant’s motion to dismiss under FRCP 12(b)(6) denied. Applicant also directed that its answer fails to conform to the FRCP 8(b) and its counterclaims are not cognizant.
91202732 2/27/2012 TRIAL DATES RESET N Applicant’s motion to dismiss under FRCP 12(b)(6) for failure to state a claim denied.
91190420 2/28/2012 BD`S DECISION: DISMISSED W/ PREJUDICE N Applicant moved for judgment under Trademark Rule 2.132(b) after Opposer did not file any testimony or brief, its only evidence of record was the 15 registrations it pleaded. Board entered judgment for Applicant, finding that thee parties’ marks are dissimilar and the relationship, if any, between opposer’s goods and applicant’s goods and services is not apparent from the pleaded registrations.
91178668 2/27/2012 BOARD`S DECISION: SUSTAINED Y RIM (Blackberry) Opposition to CRACKBERRY for variety of goods and services sustained on 2(d) and dilution by blurring grounds under Trademark Act § 43(c)(2)(B).
91202721 2/28/2012 D`S MOTION TO DISMISS DENIED; TRIAL DATES RESET N Applicant moved to dismiss opposition on grounds that the opposition was filed by a party not authorized to practice before the Board; motion denied as original pleading was signed by officer of Opposer and amended pleading was signed by US counsel.
91201367 3/1/2012 MOTION DENIED; TRIAL DATES REMAIN AS SET N Applicant’s motion to consolidate 3 oppositoin with 3 opposer’s denied; there is no indication “that the three opposers have reduced to writing a specific unified approach to discovery and trial, or have designated one
lead counsel for the three oppositions
91203112 3/2/2012 P`S MOTION TO STRIKE GRANTED; TRIAL DATES RESET N Opposer’s motion to strike several affirmative defenses granted.
91194864 2/29/2012 PROCEEDINGS RESUMED N Applicant’s motion to strike Opposer’s testimony deposition of Opposer’s witness because witness not identified in intitial disclosures or expert disclosures. Board treated the parties’ mutual failure to serve timely initial disclosures as their having waived such disclosures. Opposer made timely pretrial disclsoures. As a result, Applicant’s motion denied.
91194918 3/3/2012 PROCEEDINGS RESUMED Opposer’s motion to compel mostly granted; Applicant’s objections insufficient. Opposer’s motion to compel deposition of Applicant’s manager granted.
91198432 3/3/2012 PROCEEDINGS RESUMED Opposer’s motion to compel responses from Applicant without objections because they were overdue is denied. Applicant’s response to motion filed several weeks late and not considered.
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Mar 02 2012
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TTAB Decisions

Recent TTAB decisions and activity of note (Feb. 20 – 26, 2012)

Last week (2/20 – 2/26), the TTAB issued two precedential decisions, numerous final decisions and several discovery and other procedural rulings.

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 last week [visit http://ttabvue.USPTO.gov to view any of the proceeding and documents]:

Proceeding No.

Date

TTAB Disposition

Precedent?

Notes

91197030

02/24/2012

PLAIN`S MOT. FOR SUMMARY JUDGMENT GRANTED

N

 Opposer’s motion for summary judgment granted: AA & Design for “ammunition, gun and rifle cases, rifles and related Products” found confusingly similar with AA for “ammunition and parts thereof”

76693637

02/24/2012

BOARD`S DECISION: AFFIRMED

N

 Refusals of application for DOUBLE-LOK for “ammunition and parts thereof” as generic and as descriptive without having acquired distinctiveness are affirmed.

77522433

02/22/2012

BOARD`S DECISION: AFFIRMED

Y

 Refusals of application to register COLUMBIANO COFFEE HOUSE “providing food and drink” as descriptive and as confusingly similar with registration of COLUMBIAN for “coffee” affirmed.

77724746

02/22/2012

BOARD`S DECISION: AFFIRMED

N

 Applicant’s Mark: WHOLE SOUL for goods in Class 25Cited Registration: WHOLE SOUL for “wearable full body towels and all purpose towels”  (class 24) and “apparel, namely, robes” Class 25

Decision: refusal affirmed

77784815

02/22/2012

BOARD`S DECISION: AFFIRMED

N

 Refusal of application for MULTIINFLUENTIALS for “business networking services” under Section 2(d) affirmed.

85017693

02/21/2012

BOARD`S DECISION: AFFIRMED

N

 Applicant’s mark: DIRECTO.COM & Design for telecommunication servicesCited registrations: DIRECOR IDEAS TELCEL / DIRECTO DE TELCEL / DIRECTO IDEAS for telecommunications services

Decision: Refusal Affirmed

92053724

02/21/2012

RECONSIDERATION DENIED

N

 Petitioner’s request for reconsideration of board order granting Respondent’s MSJ is denied

92053982

02/23/2012

RECONSIDERATION DENIED

N

 Petitioner’s request for reconsideration of order granting respondent’s motion to dismiss is denied.

91196299

02/23/2012

SUSPENDED PENDING DISP OF OUTSTNDNG MOT

N

 Many procedural motions ruled on; party’s response to motion for partial summary judgment stricken for exceeding page limit.

91190899

02/23/2012

RESPONSE DUE 30 DAYS (DUE DATE)

N

 Opposer’s Motion to compel granted regarding many issues. Applicant compelled to respond to the extent Applicant provided unexplained objections, to the extent Applicant objected to meaning of ‘similar term,’ to the extent Applicant had objected that the mark ONSHARP cannot be dissected, and on regarding other issues as well. Opposer’s motion to test sufficiency of response to requests for admissions granted in part. Opposer’s request for entry of modified protective order (to provide for confidential and highly confidential designations) is granted, and applicant advised it would need to retain outside counsel in order to have access to materials designated “highly confidential” by Opposer.

91200645

02/21/2012

RESPONSE DUE 30 DAYS (DUE DATE)

N

 Consented motion to amend applicant’s mark from standard character “G” to a specific font stylized lowercase letter “G” is granted.

91200818

02/23/2012

RESPONSE DUE 30 DAYS (DUE DATE)

N

 Applicant’s motion to strike paragraphs from the complaint to the extent they refer to marks beyond those pleaded by Opposer is granted – Opposer’s statements regarding ‘related marks’ and various designs were too vague – and Opposer given leave to amend the pleading.

92050787

02/23/2012

TRIAL DATES RESET

N

 Motion to strike part of petitioner’s notice of reliance to the extent it include materials that are not self-authenticating. Motion granted with regard to one exhibit that did not meet the requirements for internet printouts under Safer, but Petitioner allowed 20 days to correct the deficiency.

92053298

02/24/2012

TRIAL DATES RESET

N

 Respondent’s motion to extend time to answer granted.

92053789

02/21/2012

TRIAL DATES RESET

N

 Motion to dismissed amended petition for cancellation for failure to state a claim upon which relief may be granted.

91199381

02/22/2012

TRIAL DATES RESET

N

 Petition to cancel alleges fraud related to registrant’s ownership of the mark; Respondent’s motion to dismiss for failure to state a claim upon which relief may be granted as the amended petition to cancel does not properly allege standing and also fails to state a claim for fraud upon which relief may be granted. Motion to dismiss granted, if Petitioner fails to file a further amended petition for cancellation the petition will be dismissed with prejudice.

91201386

02/22/2012

TRIAL DATES RESET

N

 MSJ premature before initial disclosures have been served and thus dismissed.

91201529

02/23/2012

TRIAL DATES RESET

N

 Applicant’s motion to set aside the notice of default for failure to file a timely answer is granted.

91181440

02/21/2012

BOARD`S DECISION: DISMISSED

N

 Consolidated opposition and cancellation:-          Applicant’s marks: BERYLL & Cross Designs for (a) jewelry, leather accessories and furniture, (b) sunglasses, cloths and clothing, and (c) sunglasses jewelry, leather items and clothing

–          Opposer’s mark: PLUS SYSTEM and 3 different cross designs for sunglasses

–          Claims: Likelihood of confusion and priority; lack of use on sunglass and eyeglass goods; and fraud regarding one of the registrations

Opposer moved to strike a variety of evidence. Excluded evidence included: references to third party registrations without the registration certificates (“The Board does not take judicial notice of registrations that reside in the USPTO”); hearsay from a telephone conference from receptionist at a store;

Regarding Wikipedia evidence: the board considered it but noted that probative value is limited. Information about logos from a logo website are not considered for “the truth of any matters stated therein, such as proving that any of the depicted goods have been, or are being, offered for sale or distribution.”

Regarding Opposer’s statements made in the prosecution of one of its registrations regarding a lack of confusion, they may be used as evidence as an admission against interest but will not relieve the Board of its burden to reach its own conclusion.

Opposer objected to testimony of a third party witness as biased since Opposer has filed a petition to cancel the 3rd parties’ registration was denied.

Ruling: Fraud claim fell short and was dismissed, and the marks at issue “simply too dissimilar to support a finding of likelihood of confusion.” As a result, the Petition/Opposition was dismissed.

91199336

02/24/2012

BOARD`S DECISION: DISMISSED

N

 Applicant motion for judgment on the pleadings regarding Section 2(d) claim granted as the board found the two winged design marks too dissimilar despite nearly identical goods “and that a likelihood of confusion cannot exist as a matter of law based on the dispositive nature of the first du Pont factor in this case; furthermore the Board rules sua sponte that the dilution by blurring claim – although not part of the motion – also cannot exist as a matter of law, and Opposition dismissed in its entirety.

91185011

02/23/2012

BD`S DECISION: DISMISSED W/ PREJUDICE

N

 Opposer submitted no evidence during its testimony period. Applicant moved to dismiss for failure to prosecute; Opposer moved to reopen its testimony period. Board denied Opposer’s motion to reopen and applicant’s motion to dismiss granted.

92049692

02/22/2012

BOARD`S DECISION: GRANTED

Y

 Petition to cancel Respondent’s mark (“Shut It Down” for clothing and related goods) on grounds of abandonment and fraud. Respondent failed to follow rules of practice and failed to submit a valid brief or any testimony. Respondent admitted it never used many of the goods listed in the registrations description, and those are deemed abandoned. As to goods allegedly in use, Respondent showed no evidence of sales for several years prior to the filing of the petition for cancellation and abandonment also found. The registration was also found to be void ab initio as Respondent showed no real use on any goods and admitted non-use on over 100 listed goods.

92054628

02/23/2012

BOARD`S DECISION: GRANTED

N

 Petitioner sought partial cancellation of registration for HIGHWAY HAWK for “motorcycle helmets” on grounds of abandonment and no bona fide intent to use the mark; via subsequent limitation of the underlying international registration at WIPO, the USPTO registration limited to delete “motorcycle helmets.” As a result of the amendment without consent to Petitioner, the judgment is entered against respondent and the registration cancelled as to “motorcycle helmets.”

91161363

02/22/2012

MOTION TO AMEND GRANTED

N

 Motion for leave to amend Plaintiff’s pleading filed just before commencement of testimony granted.

91194906

02/22/2012

PROCEEDINGS RESUMED

N

 Opposer moved to compel supplemental discovery responses and to reopen discovery for opposer only. Motion denied by the Board.
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Feb 23 2012
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TTAB Decisions

Recent TTAB decisions and activity of note (Feb. 13 – 20, 2012)

Last week (2/13 – 2/20), the TTAB issued two precedential decisions, including one on remand from a District Court, several final decisions and numerous discovery and other procedural rulings.

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 last week (click link on TTAB action to open Board opinion):

Proceeding No. Date  TTAB Action Precedent?
Notes
92051344 2/14/2012 PLAIN`S MOT. FOR SUMMARY JUDGMENT GRANTED Yes Respondent, from Pakistan, filed the underlying application based on an a registration from the European Union, claiming the registration was from his country of origin; Respondent had also claimed ownership of Pakistani application which had not matured to a registration at the time the US registration was issued. The Board found “as a matter of law, that respondent has not established the European Union as his country of origin, and that respondent’s ownership of Community Trade Mark Registration No. 005662887, issued by the European Union, cannot serve as a basis for registration under Section 44(e). Accordingly, respondent has no issued foreign registration on which he could rely at the time his U.S. registration issued under Section 44(e).” As a result, Petitioner’s MSJ granted and the registration was cancelled.
91192917 2/13/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED n Opposer’s motion to strike or to test sufficiency of Applicant’s responses to Requests for Admissions denied; Opposer’s MSJ denied; Motion to Compel Applicant’s appearance at deposition granted
94002467 2/13/2012 BD`S DECISION: FAVORABLE TO APPLICANT n
Concurrent use agreement between the parties accepted
76511652 2/17/2012 BOARD`S DECISION: AFFIRMED Y Applicant’s application to register FUTURE refused for many goods in Class 12 and 35 for likelihood of confusion with registered mark FUTURA for  “tires” and for “automotive
accessories, namely, vehicle wheel caps and hub caps.” Applicant’s application to register FUTURE MOTORS refused for goods and services in Class 12, 35, and 40 for the same conflict. Prior Opposition involving Applicant found to have preclusive effect regarding FUTURE but not FUTURE MOTORS. Section 2(d) refusals both affirmed.
77522109 2/13/2012 BOARD`S DECISION: AFFIRMED n Refusal of Application for UNIDRIVE for “metal screws”  under Sect. 2(d) for likelihood of confusion with UNA-DRIV for “threaded fasteners-namely, bolts” affirmed.
77848452 2/13/2012 BOARD`S DECISION: AFFIRMED n Refusal of application for TRANSLATIONAL EDUCATION MULTIMEDIA in Class 16 and 41 under Section 2(e)(1) affirmed; Applicant’s brief stricken for failure to comply with requirements regarding spacing and page length
77531855 2/13/2012 BOARD`S DEC: AFFD IN PART/RVRSD IN PART n Refusal of MIRIAD undder Section 2(d) due to registered mark MirriAD affirmed as to Classes 9 and 35; denied as to Classes 36, 40 and 42.
91170148 2/14/2012 RECONSIDERATION DENIED n Request for reconsideration of Board order sustaining the Opposition denied
91196998 2/17/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT  n Motion to reopen discovery for Applicant only after documents disclosed in deposition that taken day before the close of discovery; Board denied motion but proceedings suspended to allow opposer time to supplement its document production and discovery responses, and to allow applicant time in which to review opposer’s supplemental discovery and decide whether it needs a reopened discovery period in view of such discovery.
91179637 2/14/2012 RESPONSE DUE 30 DAYS (DUE DATE) n Applicant cannot change to the party that purchased its rights in the applied-for mark without the filing of an assignment of the application
91192408 2/17/2012 TRIAL DATES RESET n
Applicant’s motion to strike testimony deposition on basis of inadequate notice denied.
91201716 2/16/2012 TRIAL DATES RESET n Opposer’s motion to strike applicant’s response to the notice of opposition and to issue a notice of default granted and Applicant allowed 30 days to file an answer. Applicant’s response failed to comply with the Board rules for a number of reasons: it was a letter, submitted by a representative but not an attorney, and sent without proof of service on opposer.
91188863 2/16/2012 BOARD`S DECISION: DISMISSED n Opposer’s registered mark: MANGO (& Design) for “body soaps, perfumery, essential oils for personal use, cosmetics, hair lotions, and dentifrices” and other goods. Applicant’s mark: MANGO BEACH for “hand creams, body creams, face complexion creams and toners, massage oils, bubble baths, body cleansing gels, bath powders, soap, bath beads, skin moisturizing creams, sachets, body splash, light cologne and perfumes, room fragrances, and lip balms. Opposer’s claim of a famous mark failed. The common element found to be highly suggestive. Applicant’s mark, including the term BEACH, found to have a look and sound different from opposer’s mark, and as a result the Opposition was dismissed.
91189160 2/17/2012 BD`S DECISION: DISMISSED W/ PREJUDICE n Opposer responded to show cause order after if failed to file its main brief; opposer did not show excusable neglect and its brief was not considered. Since Opposer had not entered any testimony or other evidence, the Opposition was dismissed with prejudice.
91152248 2/16/2012 BOARD`S DECISION: SUSTAINED YES
Opposition to GUANTANAMERA for “tobacco, namely, cigars” on grounds that mark is primarily geographically descriptive under Sect. 2(e)(3) was sustained by TTAB in 2008. Case was then appealed to U.S. District Court of District of Columbia, and remanded back to the Board on Aug. 5, 2010 ‘so it may
apply the proper legal standard to the third part of the test for primarily geographically deceptively misdescriptive terms.” The Board sustained the Opposition, finding that “consumers would be materially influenced in the decision to purchase applicant’s cigars due to the geographic meaning of the mark in the Spanish language.  The case is also notable because the parties submitted more than 3,000 pages of evidence of this issue, and the Board ruled on several evidentiary issues.  In addition, a Motion to disqualify Applicant’s expert was denied, but Opposer’s objections to reliability of expert report concerning (a) the advertising and selling of Cuban cigar brands in US, and (b) consumer perception of the GUANTANAMERA brand, were sustained because the report was not reliable and did not explain methodology. “
92054462 2/14/2012 BOARD`S ORDER Respondent’s motion for relief from judgment after a default was entered against respondent for failure to file an answer is granted.
91197238 2/14/2012 D`S MOTION FOR RULE 56(D) DISCOVERY GRANTED, IN PART, DENIED, IN PART n Applicant’s motion for Rule 56(d) discovery following Opposer’s filing of MSJ granted in part so that Applicant may conduct discovery regarding Opposer’s continuous use, chain of title, and trade channels.
91202980 2/15/2012 D`S MOTION TO DISMISS DEEMED MOOT; D`S MOTION TO SUSPEND FOR CIVIL ACTION GRANTED n Applicant’s motion to dismiss for failure to state a claim (FRCP 12(b)6)) denied after Applicant amended its pleading to cure deficiencies. Applicant’s motion to supsend pending district court action seeking a declaratory judgment and involving Applicant’s mark is granted since the court could rule that Applicant’s mark has not acquired secondary meaning and such a ruling would impact the opposition claim of mere descriptiveness.
91190328 2/14/2012 MOTION DENIED; TRIAL DATES REMAIN AS SET n Applican’ts motion to consolidate two oppositions with different opposers denied despite being conceded by opposer’s since they did not file responses to the motion.
91193987 2/14/2012 SUSPENDED PENDING PETITION DECISION n Opposer’s motion to suspend proceeding pending action on Opopser’s petition for review of Board’s order by the Director (the order denied opposer’s motion to amend its pleading) is granted.
91201141 2/17/2012 PROCEEDINGS RESUMED n Applicant’s mark: MODS V ROCKERS for clothing and patches; Opposer’s claims common law rights in MODS V ROCKS in connection with organization and hosting of motorcycle and scooter events, and clothing and patches in connection therewith. Applicant filed motion to dismiss for failure to state a claim; Opposer filed an amended notice of opposition in response.  Opposer’s motion for leave to amend granted and Applicant’s motion to dismiss for failure to state a claim denied.
91202010 2/16/2012 PROCEEDINGS RESUMED n Applicant filed a combined motion to strike, to dismiss the dilution claim, and for partial judgment on the pleadings. To motion to strike sought to strike several lines from the notice of opposition referencing possible co-sponsorship of hte NCAA basketball tournement by the parties; because it was not clear if the statements were made in the context of settlement discussions, the Board denied the motion to strike. Regarding the motion to dismiss the dilution claim, Opposer fialed to allege that its mark became famous prior to applicant’s filing date; Opposer is granted leave to amend its pleading.  Applicant’s motion to for judgment on the pleadings regarding the claim of a lack of bona fide intent was denied by the Board, but the Board found the pleading insufficient and granted Opposer leave to amend.
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