Jul 09 2012
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TTAB Decisions

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

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

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

– Google successfully opposed SOOGLE

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

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

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

Proceeding No.

Date

TTAB Disposition

Precedent?

Notes

91198926

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

91199515

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

77582484

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

77650780

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

77902174

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

77954823

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

78767343

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

85127067

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

85152285

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

92049913

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

92054315

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

92053694

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

92054736

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

92055365

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

91199269

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

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

92055117

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

91190109

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

91178856

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

91152248

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

91203113

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

92055403

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

91201360

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

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

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

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

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

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

– ROLEX successfully opposed RALPH LAUREN RLX and RLX RALPH LAUREN

– refusal of CARDANO as primarily merely a surname reversed

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

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

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

Proceeding No.

Date

TTAB Disposition

Precedent?

Notes

92048578

 05/23/2012 COURT`S DECISION: DISMISSED

N

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

92050834

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

N

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

94002441

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

N

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

76676618

 05/29/2012 BOARD`S DECISION: AFFIRMED

N

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

77314375

 05/31/2012 BOARD`S DECISION: AFFIRMED

N

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

77500870

 06/07/2012 BOARD`S DECISION: AFFIRMED

N

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

77713799

 06/06/2012 BOARD`S DECISION: AFFIRMED

N

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

77777885

 05/31/2012 BOARD`S DECISION: AFFIRMED

N

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

77785797

 06/05/2012 BOARD`S DECISION: AFFIRMED

N

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

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

77920248

 05/29/2012 BOARD`S DECISION: AFFIRMED

N

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

79081140

 05/31/2012 BOARD`S DECISION: AFFIRMED

N

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

85015573

 05/29/2012 BOARD`S DECISION: AFFIRMED

N

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

85021590

 05/31/2012 BOARD`S DECISION: AFFIRMED

N

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

85034692

 06/07/2012 BOARD`S DECISION: AFFIRMED

N

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

85063769

 06/06/2012 BOARD`S DECISION: AFFIRMED

Y

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

85079173

 05/29/2012 BOARD`S DECISION: AFFIRMED

N

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

85123800

 06/05/2012 BOARD`S DECISION: AFFIRMED

N

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

77005059

 06/07/2012 BOARD`S DECISION: REVERSED

N

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

85230910

 06/07/2012 BOARD`S DECISION: REVERSED

N

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

77440023

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

N

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

92055368

 06/01/2012 SUSPENDED PENDING DISP OF CIVIL ACTION

N

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

91199964

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

N

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

91198172

 06/01/2012 TRIAL DATES RESET

N

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

Note:  Opposer has subsequently withdrawn the Opposition.

91198440

 06/06/2012 TRIAL DATES RESET

N

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

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

91199529

 06/05/2012 TRIAL DATES RESET

N

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

91203538

 06/04/2012 TRIAL DATES RESET

N

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

91204338

 06/06/2012 TRIAL DATES RESET

N

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

91170868

 06/07/2012 BOARD`S DECISION: DISMISSED

N

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

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

Will it be appealed?

91191683

 05/29/2012 BOARD`S DECISION: DISMISSED

N

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

91180851

 06/07/2012 BOARD`S DECISION: SUSTAINED

N

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

91192340

 05/29/2012 BOARD`S DECISION: SUSTAINED

N

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

91195088

 06/04/2012 BOARD`S DECISION: SUSTAINED

N

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

91195090

 06/04/2012 BOARD`S DECISION: SUSTAINED

N

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

92053739

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

N

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

91192645

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

N

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

91125116

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

N

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

91176159

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

N

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

91194679

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

N

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

91201700

 06/07/2012 DATES REMAIN AS PREVIOUSLY SET

N

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

91203721

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

N

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

91202201

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

N

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

91199542

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

N

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

91198263

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

N

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

92053738

 05/29/2012 PROCEEDINGS RESUMED

N

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

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

• discovery is closed for respondent;”

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

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

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

91198182

 06/05/2012 PROCEEDINGS RESUMED

N

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

91200192

 06/06/2012 PROCEEDINGS RESUMED

N

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

91201700

 06/04/2012 PROCEEDINGS RESUMED

N

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

91204116

 06/01/2012 PROCEEDINGS RESUMED

N

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

TTAB finds that configuration of a Hershey bar is registrable trademark

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

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

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

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

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

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

Jun 29 2012
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Weekly Filings

Recent TTAB opposition and cancellation filings

Below are the records of recent Cancellation and Opposition filings at the Trademark Trial and Appeal Board from approximately June 25  and June 29, 2012. These records are taken from the public records of the US Patent and Trademark Office.

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

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

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

Opposition No.

Applicant

Serial No.

Trademark

Opposer
TTABVue 91205839 “ARARAT” FOOD FACTORY LLC 79098806 ARARAT Yerevan Brandy Company, CJSC
TTABVue 91205761 AMERICAN MASTERTECH SCIENTIFIC 85320201 MCDONALD’S GRAM STAIN KIT McDonald’s Corporation
TTABVue 91205757 BARBIERAWK, LLC 85489886 BARBIERAWK Mattel, Inc.
TTABVue 91205776 CHOICE ONE RESTORATION, INC. 85522628 TRI STATE WATER RESTORATION Choice Restoration, Inc
TTABVue 91205807 E & E CO., LTD. 85417085 OLLIIX A JLA WHOLESALE PLATFORM Ollie’s Bargain Outlet, Inc.
 TTABVue 91205832 ETERNALYPURE INC. 85478669 ETERNALYPURE Pentair Filtration Solutions, LLC
TTABVue 91205814 GIOMBONI, JASON J 85419745 M H. Lee Moffitt Cancer Center and Research Institute, Inc.
TTABVue 91205771 HAPPYTAINMENT INCORPORATED 85532215 FOCUS MGMT EASY YET POWERFUL ABC Information Builders, Inc.
TTABVue 91205779 HARRIS, FRAN 85414902 WOMEN WHO MEAN BUSINESS National Association of Women Business Owners
TTABVue 91205770 INDUSTRIA DE DISEÑO TEXTIL, S.A. (INDITEX, S.A.) 79095907 PULL & BEAR Bear Archery, Inc.
TTABVue 91205823 JING YUE 85430080 KLARUS Klarus Lighting Technologies (Hong Kong) Co., Ltd.
TTABVue 91205808 KCH CORPORATION 85427216 EMBELLISH Fantastic Industries, Inc.
TTABVue 91205809 KEVIN KIM 85370280 MEDISY Medicis Pharmaceutical Corporation
TTABVue 91205767 LAERA, VITO 85509987 VLANCO BLANCO GmbH + Co KG
TTABVue 91205768 LAERA, VITO 85530847 VLANCO BLANCO GmbH + Co KG
TTABVue 91205817 LEPARC FABRICE 85428875 SQUARECHIC Square, Inc.
TTABVue 91205805 LESTER, STEPHANIE 85423161 CAVEMAN COOKIES Caveman Foods, LLC
TTABVue 91205822 MARCUS DEARBONE 85425586 TEMPOSETTA Tempo Networks, LLC
TTABVue 91205827 NUCCI,CHARLES 85274747 STURGIS CHOPPERS Sturgis Motorcycle Rally, Inc.
TTABVue 91205821 RYAN BISHTI 79104925 CIRQUE DU SOIR Cirque du Soleil Holding USA, Inc.
TTABVue 91205773 SABI 85433381 LIVE A SHAKEN NOT STIRRED KIND OF LIFE Danjaq, LLC
TTABVue 91205755 SCOTT, MEAGAN 85364611 BOYS + ARROWS Cluett, Peabody & Co., Inc.
TTABVue 91205796 SHARK EYES, INC. 85456986 [design mark] PUMA S.E.
TTABVue 91205830 SWE, INC. 85503142 PILL POPPERS The Nutro Company
TTABVue 91205826 WEST CENTRAL, INC. 85481877 AXON Wilbur-Ellis Company
TTABVue 91205766 A.G. PROFESSIONAL HAIR CARE PRODUCTS LTD. 85295173 AG Giorgio Armani S.p.A., Milan, Swiss Branch Mendrisio
TTABVue 91205819 APPSSAVVY, INC. 85427782 ADTIVITY Oceanside Capital Corp.
TTABVue 91205801 ASTCOR PRODUCTS INC. 85428867 BREATHE EZI Traditional Medicinals, Inc.
TTABVue 91205783 BALDOCK, LUCY 85121273 LUCY B. Lucy B. Inc.
TTABVue 91205828 BIZANTU LLC 85474505 RE-TRAX RE/MAX, LLC
TTABVue 91205789 CALIFORNIA EGG INDUSTRY ASSOCIATION 85312721 CALIFORNIA FRESH EGGS Luberski, Inc. dba Hidden Villa Ranch
TTABVue 91205792 CALIFORNIA EGG INDUSTRY ASSOCIATION 85312656 CALIFORNIA FRESH EGGS Luberski, Inc. dba Hidden Villa Ranch
TTABVue 91205799 CALIFORNIA EGG INDUSTRY ASSOCIATION 85312656 CALIFORNIA FRESH EGGS Luberski, Inc. dba Hidden Villa Ranch
TTABVue 91205791 CHAMPAGNE PAUL LOUIS MARTIN, (SOCIÉTÉ PAR ACTIONS SIMPLIFIÉE) 79095922 CHAMPAGNE P. LOUIS MARTIN BOUZY G3 Properties, Inc.
TTABVue 91205785 COHERA MEDICAL, INC. 85485766 FLEXSIL ConvaTec Inc.
TTABVue 91205781 COMMISSION FOR CASE MANAGER CERTIFICATION N 85136557 CASE MANAGEMENT BODY OF KNOWLEDGE FIND IT. NOW. Case Management Society of America, Inc.
TTABVue 91205797 DABUR INDIA LIMITED 85323379 DABUR UVEDA Aveda Corporation
TTABVue 91205816 DAISAKU SHOJI LTD. 76707831 MAGICOOL Grabber, Inc.
TTABVue 91205778 DAWN TRIANA 85428312 TRIANA Medicis Pharmaceutical Corporation
TTABVue 91205815 DECAMAGES, INC. 85399286 YOGIPLAY Hanna-Barbera Productions, Inc.
TTABVue 91205820 DUBMENOW, INC. 85423682 SHARED IQ ShareThis, Inc.
TTABVue 91205812 EXCLAIM, LLC 85430039 MYSTIC PUG Shakopee Mdewakanton Sioux Community
TTABVue 91205813 EXEGY PARTNERS, LLC 8544125185441257 X-FILESX-FILES Twentieth Century Fox Film Corporation
TTABVue 91205774 EXTREMITY MEDICAL, LLC 85462826 IO FIX PLUS INTRAOSSEOUS FIXATION Baxano, Inc.
TTABVue 91205777 EXTREMITY MEDICAL, LLC 85462779 IO FIX PLUS Baxano, Inc.
TTABVue 91205782 FISH, HEIDI 85310265 HF JIMLAR CORPORATION
TTABVue 91205756 GORDON FERGUSON YACKLE, L.L.C. 85383607 BOO FRUIT…GO CANDY! Fruit of the Loom, Inc.
TTABVue 91205759 GREENBILLS LLC 85313957 GREENBILLS 9ci, Inc.
TTABVue 91205800 GREGORY M. CHAIT 85382944 TYRO TYR Sport, Inc.
TTABVue 91205836 GTRC SERVICES, INC. 77681869 PROTEGE SPOP, Inc.
TTABVue 91205837 HATCH, INC. 85384251 COREFOCUS Consortium on Reading Excellence in Education, Inc.
TTABVue 91205803 HERCULES BRAND CORPORATION 85505191 VERTOX Vertex Pharmaceuticals Incorporated
TTABVue 91205764 HIXON-PUNIANI, INC 85355307 MASALA JACK’S MrRupinderSGarcha
TTABVue 91205811 HYPERKIN INC. 85279866 SUPABOY PORTABLE VIDEO GAME SYSTEM Nintendo of America Inc.
TTABVue 91205806 ICM CONTINUITY CONSULTING LIMITED 85008601 SHADOW-PLANNER StorageCraft Technology Corporation
TTABVue 91205775 INQPHARM EUROPE LIMITED 85333286 ZENOCTIL Virbac S.A.
TTABVue 91205795 K. HANSOTIA & CO., INC. 85443024 ACES & EIGHTS Top Tobacco L.P.
TTABVue 91205838 LAWLESS INC. 85505096 M.U.B.U. GTFM, Inc.
TTABVue 91205780 MARGARITAVILLE ENTERPRISES, LLC 8541761185418827 PLAY IN PARADISEPLAY IN PARADISE… NO PASSPORT REQUIRED Seminole Tribe of Florida
TTABVue 91205786 MARTIN ANTON GRODER 79089902 ROX Diageo North America, Inc.
TTABVue 91205787 MARTIN ANTON GRODER 79089902 ROX Colorado Rockies Baseball Club, Ltd.
TTABVue 91205788 MARTIN ANTON GRODER 79089902 ROX Russell G. Weiner
TTABVue 91205834 MARTINEZ, FELIX 85511955 GOLDEN BOAR Frank Brunckhorst Co., L.L.C.
TTABVue 91205762 MERRICK PET CARE, INC. 85387885 WHOLENESS Whole Foods Market IP, L.P.
TTABVue 91205835 MONSTER, INC. 85506861 SILHOUETTE SILHOUETTE International Schmied AG
TTABVue 91205818 NINA GIAMBELLI, INC. 8542646985426548 NINA GIAMBELLININA GIAMBELLI BariLaVera
TTABVue 91205810 ORIGIN PURE CORPORATION LIMITED 85254131 ORIGINPURE Origins Natural Resources, Inc.
TTABVue 91205829 POIESIS MEDICAL, LLC 85505738 DUETTE C. R. BARD, INC.
TTABVue 91205802 PUCCI & CATANA LUXURY PET BOUTIQUE, LLC 85297415 PUCCI & CATANA Emilio Pucci International B.V.
TTABVue 91205763 QUU, INC. 85340289 ADVERTISER EXPERIENCE iBiquity Digital Corporation
TTABVue 91205769 RPM SPORTS LIMITED 79096476 POWERSPIN Mad Dogg Athletics, Inc.
TTABVue 91205833 SCIEINSTEINS, LLC 85505367 SCIEINSTEINS The Hebrew University of Jerusalem
TTABVue 91205804 SEVEN MANAGEMENT SERVICES, INC. 85515216 WAISMANN INSTITUTE Dr.AndreWaismann
TTABVue 91205825 SINGAPOREMATH.COM. INC. 85097366 SINGAPOREMATH Marshall Cavendish International (Singapore) Pte Ltd
TTABVue 91205772 SOCCER UNITED MARKETING, LLC 85399070 KICKTV The National Sports Center Foundation
TTABVue 91205824 STILL SPINNIN’, LLC 85257563 STILL SPINNIN’ THE CURE TO THE COMMON GYM! Mad Dogg Athletics, Inc.
TTABVue 91205831 TALAR-MADE LIMITED 85479862 PROSTEP ProFoot, Inc.
TTABVue 91205793 THE BALLROOM WAY 85527102 ZUMBELIE Zumba Fitness, LLC
TTABVue 91205760 THE BIG TEN CONFERENCE, INC. 85456493 BTN Trinity Christian Center of Santa Ana, Inc.
TTABVue 91205784 THE COCA-COLA COMPANY 85286266 [Design Mark] Polar Corp.
TTABVue 91205758 TRANSPO PRODUCTS, INC. 85385427 THINKBOOK Lenovo (Singapore) Pte. Ltd.
TTABVue 91205794 TUMINELLO, RAYMOND 85505730 JOB Republic Technologies (NA), LLC
TTABVue 91205765 WEST MARINE PRODUCTS, INC. 77982989 BLACKTIP Watercraft Superstore, Inc.
TTABVue 91205798 WZI, INC. 85426983 ROADRUNNER Warner Bros. Entertainment Inc.

Cancellation No.

Registrant

Serial No.

Trademark

Petitioner
TTABVue 92055787 JOSEPH AZZOLINI 78836185 EL CAP Patagonia, Inc.
TTABVue 92055778 NICOLE M. RUIZ DE CASTILLA 77259114 SCREAMIN’ MONKEYS Fluff Monkey Enterprises, LLC
TTABVue 92055782 ALEXANDRIA M. SHULHAFER 78690673 DIRTY SHIRT Robert Coile
TTABVue 92055773 ANTAS-GESTAO E INVESTIMIENTOS LDA 7411823878748319 NO LIMITSNO LIMITS Morellato S.p.A.
TTABVue 92055774 BIG EARTH BRANDS LTD. 77367302 CALM MinTech, Inc.
TTABVue 92055786 CLEARWATER MARINE, INC. 77567911 CLEARWATER GSC Technologies Corporation
TTABVue 92055776 COMMISSION FOR CASE MANAGER CERTIFICATION 85136453 CM BODY OF KNOWLEDGE Case Management Society of America, Inc.
TTABVue 92055777 COMMISSION FOR CASE MANAGER CERTIFICATION 85136442 CASE MANAGEMENT BODY OF KNOWLEDGE Case Management Society of America, Inc.
TTABVue 92055783 GLAM AIR, INC. 85202154 GLAM AIR Graftobian Make-Up Company, LLC
TTABVue 92055775 HIRAOKA NEW YORK, INC. 73044229 PENNY CANDY DownEast Outfitters, Inc.
TTABVue 92055772 INTERNATIONAL GOLD STAR TRADING CORP. 78978140 BABUSHKA’S RECIPE Four Seasons Dairy, Inc.
TTABVue 92055780 LARIVIERE, GRUBMAN & PAYNE, LLP 78252598 EPROPERTY IProperty, Inc.
TTABVue 92055779 PAK’S TRADING EUROPE B.V. 78912600 [Design Mark] JunkFood Clothing Company
TTABVue 92055770 POLY PERFORMANCE, INC. 85317364 S SYNERGY SUSPENSION SYNERGYSUSPENSION.COM The Bunker Corporation dba Energy Suspension
TTABVue 92055771 RICHARD A. HARRIS, A PROFESSIONAL CORPORATION 85252186 THE DEFENDERS Los Defensores, Inc. and Walker Advertising, Inc.
TTABVue 92055784 STEPHEN M. HAGEN DBA OLD SCHOOL VINEYARDS 77780184 OLD SCHOOL VINEYARDS Dogfish Head Marketing, LLC
TTABVue 92055785 VINDIGO, INC. 78557151 CELEBRITYNOW! HoozOn, LLC
Tagged
Jun 27 2012
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Weekly Filings

Recent TTAB Opposition and Cancellation filings

Below are the records of recent Cancellation and Opposition filings at the Trademark Trial and Appeal Board from approximately June 15  and June 25, 2012. These records are taken from the public records of the US Patent and Trademark Office.

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

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

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

Cancellation No.

Registrant

Serial No.

Trademark

Plaintiff
TTABVue 92055737 BESTA HANDBAG INC 77846056 [Design Mark] Jones Investment Co. Inc.
TTABVue 92055768 C12 INVESTMENTS CORPORATION 77965101 SHOOT SMART Sundance Sky, LLC
TTABVue 92055766 HERZOG BODY TECH LLC 85421420 OSTEOPATHIC FITNESS American Osteopathic Association
TTABVue 92055747 LAURA BURKHALTER 85103644 CAFÉ ZUMBA Zumba Fitness, LLC
TTABVue 92055749 MICHAEL CASCIA 77477757 JITZ JAM IP Inc.
TTABVue 92055748 PATRICK CHEMOUL 85036056 BELAIR Bel-Air Association
TTABVue 92055754 SPRING FOOTWEAR CORP. 85108763 FLEXUS Grupo Flexi de Leon, S.A. de C.V.
 TTABVue 92055739 STRATEGIC MARKS, LLC 85137191 THE BROADWAY Macy’s, Inc.
TTABVue 92055750 WORLD SUPREME INTERNATIONAL, LLC 76683292 NANO-DERM Mr. Michael A. Linde
TTABVue 92055765 CATWALK TO SIDEWALK, INC. 8509168885057540 BELLATRIXBELLATRIX Color Image Apparel, Inc.
TTABVue 92055758 CCA GLOBAL PARTNERS, INC. 8508825585002953

77983134

 HEALTHIER LIVINGHEALTHIER LIVING

HEALTHIER LIVING

 Healthier Choice Flooring, LLC
TTABVue 92055760 COLD SPRING BREWING COMPANY 77644272 KRAZY KRITTERS Orca Beverage Inc.
TTABVue 92055753 CONSTELLATION HOSPITALITY MANAGEMENT GROUP, LLC 77064646 LUMINA 6101 Hillcrest Hotel Group LLC
TTABVue 92055761 E & D TRADING INC 76601018 XL X-LOOK Louis Vuitton Malletier
TTABVue 92055767 ENDEAVORS TECHNOLOGY, INC. 78438048 APPEXPRESS Sayv Mobile, LLC
TTABVue 92055744 ENTERTAINMENT MUSIC MARKETING CORP. DBA EMMC 77892743 SPEAR SPHK Corp.
TTABVue 92055740 FACTORY DIRECT BRIDAL ACCESSORIES, L.C. 85052640 EN VOGUE BRIDAL ACCESSORIES Nathan Hennick & Co. Ltd.
TTABVue 92055756 FORESTS ALIVE INC. 78918813 LASTCALL Nufarm Americas Inc.
TTABVue 92055764 GO STAX, LLC BY ASSIGNMENT FROM JOHNSON FOODS, LLC 78946987 CATHEAD FOODS Carol M. Cornelius
TTABVue 92055743 GS HOLDINGS CORP. 7902061979019592 GSGS The Grocers Supply Co., Inc.
TTABVue 92055759 MIND CANDY LTD. 77976397 MOSHI MONSTERS Aevoe Corp.
TTABVue 92055746 NET VISIBILITY, INC. 78980516 SIRCLE Is That Odd, Inc., dba Is That Odd and isthatodd.com
TTABVue 92055741 NURI EROL 77159691 MANGINOS Mangino’s Pizzeria, Inc.
TTABVue 92055769 POLY PERFORMANCE, INC. 85317350 SYNERGY SUSPENSION The Bunker Corporation dba Energy Suspension
TTABVue 92055738 POTOMAC TOBACCO COMPANY LIMITED 7629222776459015 YESYES INTERNATIONAL J J Holand Limited
TTABVue 92055752 SOLANGEDEFRANCE.COM, LLC 77087407 ELEPHANT ON A TIGHTROPE Tendril Wine Cellars
TTABVue 92055742 STRATEGIC MARKS, LLC 85137193 THE BON MARCHE` Macy’s, Inc.
TTABVue 92055751 VI-JON, INC. 85428063 DIP-IT Parley, LLC

Opposition No

Applicant

Serial No.

Trademark

Opposer
TTABVue 91205650 ALTICOR INC. 85380987 NUTRILITE Nutri/System IPHC, Inc.
TTABVue 91205675 APPLIED BIOKINETICS LLC 85404500 FASCIADERM STEP BEYOND THE PAIN Mueller Sports Medicine, Inc.
TTABVue 91205649 B-LIST LIFE, LLC 85255161 B B-LIST SOCIALIFE Livingsocial, Inc.
TTABVue 91205697 BARRON, ELLINGTON 85499539 HOUSE OF PARADISE COLLECTION H.O.P Cheeseburger Restaurants, Inc. and Cheeseburger In Paradise, Inc.
TTABVue 91205639 BENJAMIN JUSTUS ALEXANDER 85472759 RANA Rani Refreshments FZCO
TTABVue 91205617 BONUTTI, BORIS 85423633 GENUINE BULL Red Bull GmbH
TTABVue 91205710 CMN INTERNATIONAL LLC 85427646 ROYAL BORDEAUX Institut National de l’Origine et de la Qualite
TTABVue 91205686 CWEB, INC 85423876 DIAMONDX Diamond Baseball Company, Inc. DBA Diamond Sports Co., Inc
TTABVue 91205645 DOMINGO CO., LTD. 79106750 ALF Alien Productions
TTABVue 91205702 DONNA FORBES WHITE 85456191 PRAELIA PHARMACEUTICALS Amgen Inc.
TTABVue 91205705 DUARTE, ANGELO 85426776 SOLID ROOTS Roots Canada Ltd.
TTABVue 91205707 E & D TRADING INC. 85433555 XL X-LOOK X 85425296Application File Appl
TTABVue 91205652 ECOSCEPTOR 85422785 ECOSCEPTOR TBC Trademarks, LLC
TTABVue 91205696 EST-GAR, LLC 85410289 ARSENAL JIU-JITSU The Arsenal Football Club Public Limited Company
TTABVue 91205688 FARMASEA HEALTH LLC 85424382 INNER AND OUTER BEAUTY FROM THE SEA Sarkli-Repechage, Ltd.
TTABVue 91205727 HOUSTON ART GLASS EMTERPRISES 85503904 PALACIO Masonite International Corporation, Masonite Corporation
TTABVue 91205704 HUES45, LLC 85497960 HUES45 Kayser-Roth Corporation
TTABVue 91205684 IDENTITY PRESERVED INGREDIENTS 85423212 PUPSICLE Conopco, Inc.
TTABVue 91205730 JMM LEE PROPERTIES, LLC 85423584 BUREN The Swatch Group (U.S.) Inc.
TTABVue 91205751 JOEL L. BELING DBA SUPA CHARACTERS PTY LTD. 85325751 SUPER DOGS DC Comics
TTABVue 91205725 KELLI WHARTON PTY LTD 85496877 TALULAH Aritzia LP
TTABVue 91205713 M. Z. BERGER & CO., INC. 85468226 SOFT TOUCH Tissot S.A.
TTABVue 91205668 MBG APPAREL, INC. 85422790 MADE BY GOD ARTHURGROSSIII
TTABVue 91205753 MICHEL MANZ 79102854 ONZA Bridgestone Corporation and Bridgestone Americas Tire Operations, LLC
TTABVue 91205715 NI, ZHIQIANG, WU, XUELAI 85309557 HANA Noodle Time, Inc.
TTABVue 91205676 OC CREATIVE MEDIA INC. 85424326 SPARKHOUSE Publishing House of the Evangelical Lutheran Church in America
TTABVue 91205678 PRICELESS REAL ESTATE LLC 85350211 PRICELESS REALTY MasterCard International Incorporated
TTABVue 91205693 RADEMAKER, KIRK, CROFT, RUSSELL 85492197 SAND GUYS SAND CPH A/S
TTABVue 91205621 TERINA INC 85422639 BULLDOZER ENERGY DRINK RED BULL GMBH
TTABVue 91205695 THORINGTON P TAYLOR 85447146 ABLE More J.B., Inc. dba Cain & Abel’s
TTABVue 91205658 TREE OF LIFE UNLIMITED LLC 85518442 TREE OF LIFE TEAS Tree of Life, LLC
TTABVue 91205703 UNIFY US, LLC 85424310 MOTRAC TeleTracking Technologies, Inc.
TTABVue 91205738 WILLIAMS, EMORY L 85498175 I’VE GOT TALENT TOO! FremantleMedia North America, Inc.
TTABVue 91205629 AMERICAN NATIONAL INSURANCE COMPANY 85370115 AMERICAN NATIONAL American National Investment Advisors, LLC
TTABVue 91205690 ARDENSYS INC. 85272971 QLIQ QlikTech International AB
TTABVue 91205735 ASHLEY NICOLE MATERNITY, LLC 85498648 ASHLEY NICOLE MATERNITY AS IP Holdings, Inc.
TTABVue 91205716 BANKS, RODNEY LEE 77193827 PROTÉGÉ SPOP, Inc.
TTABVue 91205618 BEVINTEL, LLC 8537005485376731 BEVINTEL HOSPITALITY PROFIT SYSTEMSBEVINTEL Intel Corporation
TTABVue 91205701 BIG BROTHERS BIG SISTERS OF EASTERN MISSOURI OURI 85226799 BE THERE Diageo North America, Inc.
TTABVue 91205659 BIRCH BEAUTY, LLC 85334952 BIRCH BEAUTY FAMILY Birchbox, Inc.
TTABVue 91205706 BLACK RAIN ORDNANCE, INC. 85417194 [Design Mark] Otis Products, Inc. dba Otis Technology, Inc.
TTABVue 91205685 BUILTWELL, INC. 85468895 BENCH & LOOM Suyen Corporation
TTABVue 91205698 C&R LIFESTYLE GROUP, LLC 85506064 CLAUDIA’S CHAMPAGNE SUNDOWN FRIDAYS Comite Interprofessionnel du Vin de Champagne, Institut National et de l?Origine et de la Qualite
TTABVue 91205712 CHRISTIANS FOR ISRAEL INTERNATIONAL 85308313 WHY ISRAEL? Christians for Israel, Canada
TTABVue 91205752 CLINIQUE LA PRAIRIE FRANCHISING SA 79101756 CLP CLINIQUE LA PRAIRIE Clinique Laboratories LLC
TTABVue 91205748 CLUB IFIT LLC 85499106 IC CLUB IFIT 24/7 ICON Health & Fitness, Inc.
TTABVue 91205754 DEUTSCHE TELEKOM AG 79103553 REVVL Harman International Industries, Incorporated
TTABVue 91205682 DISTRIBUTION SYSTEMS INTERNATIONAL, INC. 85420925 MODUFLEX PANELFOLD, INC.
TTABVue 91205660 DR GLOBALDIRECT, INC. 85028775 MYCOMMERCE Commerce Bancshares, Inc.
TTABVue 91205644 DR. PINK, LLC 76709051 DR. PINK Victoria’s Secret Stores Brand Management, Inc.
TTABVue 91205681 DSM IP ASSETS B.V. 85018887 I-ALIVE Schwabe North America, Incorporated
TTABVue 91205721 DSM IP ASSETS B.V. 85019034 I-ENERGY Innovation Ventures, LLC
TTABVue 91205687 ECHL, INC. 85421579 ORLANDO SOLAR BEARS Dave Damato
TTABVue 91205741 EDOCTRINA CORP. 85434317 OBSERVE Dr.SanderMartin
TTABVue 91205740 ENERGETIC SOLUTIONS, LLC 77820814 SHOO! BUG TAG Charles F. Hudson Jr.
TTABVue 91205673 EURARK, LLC 85375770 LIFEPLUS DO MORE. BE MORE. LIVE MORE. The FRS Company
TTABVue 91205745 FELIPE GREGORIO INC 85282664 VALLE JUELO APS Distributors, LLC.
TTABVue 91205724 FUNKY FASHIONS, LLC 85423193 VICE69 Kaveh Harounian
TTABVue 91205654 GAMMA SALES INC. 85310125 SPX SPX Corporation
TTABVue 91205674 GP GLOBAL LIMITED 85382005 XTRA PLUSXTRA FRESH Church & Dwight Co., Inc.
TTABVue 91205626 HANSEN MEDICAL, INC. 85281777 DA GAMA Howmedica Osteonics Corp.
TTABVue 91205743 HILLSIDES 85225982 IP The Phillies
TTABVue 91205720 HYDROFARM, INC 85424720 HYDROPONIC ESSENTIALS ADDITIVES AND SOLUTIONS THAT Growth Products Ltd.
TTABVue 91205691 INEPTITUDE, LLC 85316194 MOTHER OF THE YEAR American Mothers, Inc.
TTABVue 91205643 JONATHAN LOUIS INTERNATIONAL LTD. 85463972 JL Allstate Floral & Craft, Inc.
TTABVue 91205635 JOSEPH VARNADO 85419639 UNO SUAVE Pizzeria Uno Corporation
TTABVue 91205669 KIDSTRONG ENTERPRISES, LLC 85377235 PROSTRONG Lance Armstrong Foundation
TTABVue 91205636 KWANG H. AHN 85472970 K-POP Katie Pop, Inc.
TTABVue 91205747 LAMARK MEDIA GROUP, LLC 85322785 LAMARK The Lamar Company, L.L.C.
TTABVue 91205679 LAVERNE & SHIRLEY, LLC 85424587 POLKA DOT BIKINI COCKTAILS E. & J. Gallo Winery
TTABVue 91205718 LICORES VERACRUZ, S.A. DE C.V. 77917080 [Design Mark] Grupo Industrial Muyaad S.A. DE C.V.
TTABVue 91205630 M & Q IP LEASING, INC. 85375488 FIRST QUALITY First Quality Enterprises, Inc.
TTABVue 91205664 MASTRONARDI PRODUCE LTD. 77628536 SUNSET ORGANICS Basic American, Inc.
TTABVue 91205700 MASTRONARDI PRODUCE LTD. 77696220 CARE Cooperative for Assistance and Relief Everywhere, Inc.
TTABVue 91205627 MATTEL, INC. 85329076 MONSTER HIGH Monster Energy Company
TTABVue 91205663 MCINTOSH LABORATORY, INC. 85377982 MCAIRE McDonald’s Corporation
TTABVue 91205726 METAL MARKETPLACE INTERNATIONAL 85324043 GA Giorgio Armani S.p.A., Milan, Swiss Branch Mendrisio
TTABVue 91205666 MITSUBISHI CHEMICAL CORPORATION 85234836 MC IONIC SOLUTIONS McDonald’s Corporation
TTABVue 91205623 MYSYS YAZILIM VE BILISIM SISTEMLERI SANAYI VE TICARET LIMITED SIRKETI 79098720 MYSYS Misys Limited
TTABVue 91205750 NATROL, INC. 85294690 SMOOTH MELTS Traditional Medicinals, Inc.
TTABVue 91205749 NEATFREAK GROUP, INC. 85170669 CLOSETMAX SYSTEM Clairson, Inc.
TTABVue 91205642 NEUROLIFE ADVANTAGE, INC. 85367173 NEUROLIFE Neuro Brands LLC
TTABVue 91205736 NOVA HEALTHCARE MANAGEMENT, LLP 85502394 NOVA Nova Healthcare Management, LLP
TTABVue 91205728 OLSEN, WILLIAM 85419599 BLACK & YELLOW CAR RENTAL Hertz System, Inc.
TTABVue 91205638 ORANGE RULER, LLC 8537883585378844 DARE TO BE ORANGEORANGE RULER Orange Brand Services, Ltd.
TTABVue 91205689 PONY SOCK, LLC 85542168 PONY SOCK Pony, Inc.
TTABVue 91205709 QVC, INC. 85377064 GILI Abercrombie & Fitch Trading Co.
TTABVue 91205717 RAISED BY WOLVES LLC 85387230 RAISED BY WOLVES Calum Green and Peter Williams, Calum Green dba Raised by Wolves
TTABVue 91205714 RAYBERN FOODS, LLC 85412004 BERNELI’S Bernatello’s Pizza, Inc.
TTABVue 91205628 RIDE NATURE CORPORATION 85378641 RIDE NATURE K-2 Corporation
TTABVue 91205699 ROCK CREEK GLOBAL ADVISORS LLC 85433339 ROCK CREEK GLOBAL ADVISORS LLC The Rock Creek Group, LP
TTABVue 91205742 RTL MOTO, LLC 85368094 RIDE THE LAND K-2 Corporation
TTABVue 91205708 SABETREND S.L. 85238541 UA URBAN ADDICT Under Armour, Inc.
TTABVue 91205625 SAFEWAY INC. 85460871 BAGEL SLENDERS Pinnacle Foods Group LLC
TTABVue 91205641 SALIX PHARMACEUTICALS, LTD. 85385669 MICROPHEX Microflex Corporation
TTABVue 91205677 SCHELL & KAMPETER, INC. 85418886 TRUE LIFE Darford Industries Ltd.
TTABVue 91205622 SEDESCO, INC. 85340536 SABANCI C 85340555Application File Appl
TTABVue 91205729 SILVIA BENAIN ABADI 85453062 SURELL INSTANT SHOE SANITIZER GOJO Industries, Inc.
TTABVue 91205637 SMITHTOWN STEAKHOUSE LLC 85360936 I INSIGNIA PRIME STEAK : SUSHI Joseph Phelps Vineyards LLC
TTABVue 91205640 SOL, INC. 85205127 20/20 Summit Electric Supply Company, Inc.
TTABVue 91205651 SONY LSI DESIGN INCORPORATED 85144924 LSI INTELLIGENCE ON CHIPS LSI Corporation
TTABVue 91205665 STOWERS, STACY, KOOCHER, DEAN 85361434 HAPPY SHAKE McDonald’s Corporation
TTABVue 91205723 STULLER, INC. 85416478 PRECIOUS BOND Jewelers Vigilance Committee
TTABVue 91205739 SUPREME GRAND LODGE; OF THE ANCIENT AND MYSTICAL; ORDER ROSAE CRUCIS, INC. 79083617 THE ROSICRUCIAN ORDER David John Griffin
TTABVue 91205655 SWIFT MAINTENANCE PRODUCTS, INC. 85168090 FLEX SEAL Building Materials Investment Corp.
 TTABVue 91205722 SZ TELSTAR CO., LTD 85418325 TELSTAR Telstra Corporation Limited
 TTABVue 91205657 TABLETOPS UNLIMITED, INC. 85417283 SALAD ON-THE-GO Cool Gear International, LLC c/o RAF Industries, Inc.
TTABVue 91205711 TEALAMA, LLC 85415294 TEALAMA Teavana Corporation
TTABVue 91205646 TECHNICOLOR 79098594 MEDIAENCORE Starz Entertainment, LLC
TTABVue 91205619 TEQUILERA MILAGRO, S.A. DE C.V. 77917008 INSPIRED EVOLUTION Sokol Blosser, Ltd.
TTABVue 91205620 TEQUILERA MILAGRO, S.A. DE C.V. 77916996 INSPIRE EVOLUTION Sokol Blosser, Ltd.
TTABVue 91205694 THANH Q. VU 85495412 ARTIER Cartier International A.G.
TTABVue 91205719 THE COLMAN GROUP, INC. 85294835 KLEEN TOWEL Georgia-Pacific Consumer Products LP
TTABVue 91205683 THE MISS AMERICA ORGANIZATION 85418953 THERE SHE IS . . . MISS AMERICA PhyllisWayne
TTABVue 91205656 THE WYANOKE GROUP, INC. 85475140 CARDIOLOGY TODAY INTERVENTION Bryn Mawr Communications II, LLC
TTABVue 91205624 TOKIO INDUSTRY CO., LTD 79101469 OLD STAG Sazerac Company, Inc.
TTABVue 91205661 TRIBUNE COMPANY 85211227 MOSAIC BY TRIBUNE MLB Advanced Media, L.P.
TTABVue 91205662 TRINITY UNIVERSITY 8538945785460229 TUTRINITY TIGERS Detroit Tigers, Inc.
TTABVue 91205680 TULLY, JOSEPH 85424411 SPROUTWORKS SproutLoud Media Networks, LLC
TTABVue 91205667 US FOODS, INC. 85373421 MOLLY’S KITCHEN Molly’s Cupcakes LLC
TTABVue 91205670 US FOODS, INC. 85370110 MOLLY’S KITCHEN Molly’s Cupcakes LLC
TTABVue 91205671 US FOODS, INC. 85370281 CREATED BY MOLLY Molly’s Cupcakes LLC
TTABVue 91205672 US FOODS, INC. 85370093 CREATED BY MOLLY Molly’s Cupcakes LLC
TTABVue 91205737 VIR, JAY R. 85418890 NO GOOD FLIX Showtime Networks Inc.
TTABVue 91205692 VMR PRODUCTS, LLC 85450714 VAPOR COUTURE Grand River Enterprises Six Nations Ltd.
TTABVue 91205653 WISHKEY, INC. 85377623 TREBLE & BASS PVH Corp.
TTABVue 91205746 YARDDOG PRODUCTIONS, LLC 77547735 RX 90210 Torand Productions Inc.
TTABVue 91205648 ZHEJIANG WALL-LIFE DECORATION CO., LTD. 79100589 WALLIFE Volkswagen Aktiengesellschaft and Volkswagen Group of America, Inc.
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Jun 20 2012
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TTAB Decisions

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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