TTABulator

Opposition No.

Applicant

Serial No.

Mark

Plaintiff

85868520

85868572

BULL SPITT BS

BULL SPITT BS

85792972

MPS MOBILE POWER SOURCE

85951097

MID-ATLANTIC TECHNOLOGY, RESEARCH & INNOVATION CENTER MATRIC MARKET-DRIVEN INNOVATION

85826855

NEIGHBORHOOD ROGUE LOYALTY FRIENDSHIP LOVE

Cancellation No.

Owner/Defendant

Serial No.

Mark

Plaintiff

77983132

AIKO

78108640

78108633

85156381

85156400

85463933

DIBELS

DIBELS

DIBELS NEXT

DIBELS NEXT

DIBELS NEXT

76501972

94337564

TRIPLE FIVE SOUL

555 SOUL

85535352

85535356

85535359

85535362

85535366

85535369

SKYLANDERS GIANTS

SKYLANDERS GIANTS

SKYLANDERS GIANTS

SKYLANDERS GIANTS

SKYLANDERS GIANTS

SKYLANDERS GIANTS

ART WITH HEAR

85288724

85299255

85299258

MAXPOINT IT’S ABOUT THE NEIGHBORHOOD

MAXPOINT INTERACTIVE

MAXPOINT INTERACTIVE

85543897

GTL

85351834

PROPLUS

77197668

76579257

EAST INDIA TRADING COMPANY

EAST INDIA CORPORATION

77359562

77359584

M MORACCANOIL

M MORACCANOIL

Proceeding No.

Date

TTAB Disposition

Precedent?

77602145

N

77779284

N

77795412

Y

 85164601

N

85131427

N

85134539

Y

92053659

N

91198438

N

91202393

N

91197484

N

91199922

N

94002505

N

92054129

N

91204157

N

91186138

N

91191180

N

91197044

N

91200425

N

91202857

N

Proceeding #

Date

TTAB Disposition

Precedent?

Notes

91199182

91173963

77135323

NOTE: Board’s opinion is 37 pages long!

77203020

“CL” in applicant’s mark found not to have any significant meaning. Applicant provided chart of registrations in Class 365 featuring “max” but it was not entitled to any weight: Applicant did not attach the registrations or list the services; furthermore, many of the registrations are ‘dead.’ Applicant owns a registration for “MaxCL PRO” for very similar services (“PRO” disclaimed), but Board did not find that fact significant. Board affirmed the refusal as it found the marks similar in sound, appearance, meaning, and commercial impression, and the services related.

Note: reply brief filed 5/21/11; oral hearing 1/10/2012; opinion issued 7/16/12.

77701760

Note: Appeal took two years: reply brief filed 5/5/11; oral hearing held 2/2/12; opinion issued 7/20/12.

77894876

77928717

91202724

92051672

92054767

91174169

91183352

91186906

91192293

91203410

91203833

91204105

91200513

92055306

91204861

Proceeding #

Date

TTAB Disposition

Precedent?

Notes

91200237

77600412

77906902

85059377

NOTE: Application allowed to proceed for services that were not part of the refusal (franchising).

85120587

85143186

85320832

92055517

91190703

91201118

91189069

91197274

91198619

91199621

91200922

91204340

91197470

92054059

NOTE: Goats on a roof!

92052197

91197048

91203343

55(c) and 60(b), fifteen days after a default was entered against it. Board deferred a decision by giving Applicant a chance to explain his reason for failing to respond to the notice of default and to file an Answer:

“We are mindful that default judgments for failure to timely answer the complaint are not favored by the law, and that it is the policy of the Board to decide cases on their merits.  In view thereof, applicant is allowed until August 1, 2012 in which to (1) explain clearly, and in detail, his reasons for failing to file an answer or to respond to the motion for default judgment, including what he meant in his original motion by “erroneous letters,” and (2) submit an answer to the notice of opposition which complies with Rule 8(b) of the Federal Rules of Civil Procedure, and which shows that applicant has a meritorious defense.”

91198943

92047154

91196894

In essence, Applicant’s argues two bases for disqualification:  1) that Mr. Lockhart and his firm previously represented Tidewater or the Association and the relationship between the Association and Tidewater equates to representation of Tidewater and 2) that Mr. Lockhart and his firm have a proprietary interest in the outcome of these proceedings. In a detailed 17 page decision by Chief Administrative Trademark Judge Rogers, the motion was denied.

91195102

91205276

92051684

92054925

92055549

Pro-ceeding No.

Date

TTAB Disposition

Prece-dent?

Notes

91204318

Prior action: Opposition to Applicant’s NEUROGENESIS mark for water beverages; Applicant moved to dismiss under 12(b)(6); motion granted as conceded and opposition dismissed with prejudice. Current proceeding: Opposition to Applicant’s NEUROGENESIS HAPPY WATER mark for water beverages. Board found the doctrine of res judicata did not apply: different transactional facts in the current proceeding: “we find that applicant’s NEUROGENESIS mark, which was involved in the Prior Action, is a different mark, in terms of commercial impression, from NEUROGENESIS HAPPY WATER, the mark involved in this proceeding, and that the evidence of likelihood of confusion would not necessarily be the same in this case as it would have been in the Prior Action.”

91154103

77663407

85171209

76699839

92055147

92051949

92054934

91181288

91198266

92052696

91201377

A claim of misrepresentation of source under Section 14(3) of the Trademark Act is a separate claim from fraud.  It pertains to situations where a mark is used to deliberately misrepresent that goods or services originate from the defendant when if act those goods or services originate from the plaintiff.  The term misrepresentation of source, as used in Section 14(3) of the Trademark Act, refers to situations where it is deliberately misrepresented by or with the consent of the defendant that goods and/or services originate from a manufacturer or other entity when in fact those goods and/or services originate from another party.” Opposer’s pleading of the claim found sufficient. Opposer’s motion to dismiss granted as to fraud claim; denied as to nonuse of some of the goods. Affirmative defense of ‘unclean hands’ stricken as “applicant has failed to set forth any allegations of conduct on the part of opposer that would constitute unclean hands.” Statement that applicant may rely on other defenses that ‘may become available’ also stricken

91205546

92053461

92053245

“Respondent’s document production, as described by petitioners in their reply brief, indicates that respondent does not appear to have conducted the requisite thorough search of its records in preparing such production.” Respondent’s objections to discovery requests on grounds of vagueness, etc., were also overruled as inapplicable. Board granted motion and ordered respondent to conduct a thorough search of its records.

91169489

92054337

Note that reply brief which was over the page limit given no consideration –and attempt to amend it also given no consideration since it was after the reply brief deadline.

92048691

92055444

92055588

91179460

91204897

91204941