Tag Archives: TTAB decision

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 November 15 to November 25, 2013. 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.

Mark

Plaintiff

TTABVue 91213582 ACCESS SPORTS MEDICINE & ORTHOPAEDICS 85956613 GET BACK IN THE GAME Ventura Orthopedics Medical Group, Inc.
TTABVue 91213545 ANARCHY BEVERAGE COMPANY 85878075 EVOLUTION Evolution Fresh, Inc.
TTABVue 91213544 BAGGINS, INC. 85753248 BAGGINS The Saul Zaentz Company
TTABVue 91213590 BEAT CLUB BAND 85687012 BEAT CLUB Beats Electronics, LLC
TTABVue 91213608 BOWENTERPRISES 85930937 T-REX HATES PUSHUPS The Ann Arbor T-Shirt Company, LLC
TTABVue 91213558 BUYERS RACK LLC 85797905 BUYERSRACK NIHC, Inc.
TTABVue 91213589 CABALLERO, MARCO 85868744 FATPENGUIN PEI Licensing, Inc.
TTABVue 91213598 COMMON CORE EDUCATION, INC. 85943409 JUMP Nebraska Book Company, Inc.
TTABVue 91213554 DIVINE NATURALS, INC. 85852877 DEAN’S COFFEE Dean Intellectual Property Services II, Inc.
TTABVue 91213577 FORSYTHE, DEVEN 85694202 ID Id Software LLC
TTABVue 91213518 GEODATA SYSTEMS MANAGEMENT INC 85866166 KILLER TOMATO W. Finletter Films LLC
TTABVue 91213510 GRECO, DARREN J. 85790965 VAGISSAGE Combe Incorporated
TTABVue 91213529 HERON, LESLEY 85707345 CADOS MOLINOS IP S.A.
TTABVue 91213507 HUA YUE FENG 85642230 M I N I MONSTERS KETTLE CORN M A D E I N N E W Y O R K Monster Energy Company
TTABVue 91213574 JON SLYMAN ENTERPRISES INC. 85850829 APPLESHARK.COM Apple Inc.
TTABVue 91213607 KONDA, KATHERINE 85866351 SKINNY BODS Societe des Produits Nestle S.A.
TTABVue 91213549 LEETAL PLATT DESIGNS, LLC 85892578 COSDAY H&M Hennes & Mauritz AB
TTABVue 91213508 MATHEWSON, SHEILA E. 85803776 POPEYE’S OLIVE OIL Hearst Holdings, Inc.
TTABVue 91213583 MICHAEL D. GORDON 85861311 EYEPHONE Apple Inc.
TTABVue 91213613 NEW BALANCE ATHLETIC SHOE, INC. 85962955 ANUE Deckers Outdoor Corporation
TTABVue 91213555 PETER FERMOSELLE 85841537 ZOMBIEFEST RobertW.Zombie
TTABVue 91213515 REGAN, EDWARD 85813965 ATHLETICATION Athletics Investment Group LLC, d/b/a The Oakland Athletics Baseball Company
TTABVue 91213514 SANTA ROSA ACADEMY INCORPORATED 85808308 SANTA ROSA ACADEMY RANGERS EST. 2005 INTEGRITY EXC Rangers Baseball LLC
TTABVue 91213591 SHANGHAI BEST ORAY INFORMATION S&T CO., LTD. 85698934 SUNLOGIN Oracle America, Inc.
TTABVue 91213614 SWENSON, ERIC 85955154 TESLIVE Tesla Motors Club LLC
TTABVue 91213606 TAYLOR, MICHAEL 85866942 BLACK MEN ROCK BeverlyA.Bond
TTABVue 91213640 THOMAS, JOHN 85941304 COMEDY RINGTONE FACTORY Hahaas Comedy, LLC
TTABVue 91213649 VALIANT EAGLE INDUSTRIAL CO., LTD. 79125625 CHLIONEAGLE The Goodyear Tire & Rubber Company
TTABVue 91213565 VENUS AMERICA CORP 85870176 DERMAMIX Valeant Pharmaceuticals North America LLC
TTABVue 91213519 YZY INC 85843683 [design mark] Collection 2000 Cosmetics, Inc.
TTABVue 91213569 ZOOX PTY. LTD. 85949671 YOLO YOLO Board
TTABVue 91213531 ABBOTT LABORATORIES 85890111 PREACTIV Guthy-Renker LLC
TTABVue 91213568 ADMAR INTERNATIONAL INC. 85922613 NATURAL NURSER Philips Electronics North America Corporation
TTABVue 91213528 AFFYMETRIX, INC. 85633863 ONCOSCAN Meridian Medical Systems, LLC
TTABVue 91213603 AMFIRST HOLDINGS, INC. 85394861 AF AMFIRST INSURANCE COMPANY AmFirst Bank, N.A.
TTABVue 91213605 APPLIED MICRO CIRCUITS CORPORATION 85442829 X-GENE Spec Research, Inc.
TTABVue 91213557 ATHENA COSMETICS, INC. 85841473 REGENESIS BEAUTY The Procter & Gamble Company
TTABVue 91213612 BEAR AND SON INC. 85949768 UNDEAD United Cutlery Corporation
TTABVue 91213620 BENECKE-KALIKO AG 79116455 B K S4 LLC
TTABVue 91213573 BIOCENOSIS SOLUTIONS, INC. 85893885 BIO-SOL The BioSolve Company
TTABVue 91213586 BRYAN J. PAPE 85445878 ONE4ONE Mycoskie, LLC
TTABVue 91213566 BULLSPITT, LLC 85868476

85868520

85868572

BULL SPITT BS

BULL SPITT BS

BULL SPITT BS

Red Bull GmbH
TTABVue 91213646 C.O. BRANDED CORPORATION 85796845 IN GUS WE TRUST IMG College, LLC
TTABVue 91213548 CACHET FINANCIAL SOLUTIONS INC. 77950367 CACHET FINANCIAL SOLUTIONS Cachet Financial Services
TTABVue 91213600 CAKEBREAD CELLARS 85698411 TIN MAN VINEYARDS J.J. Cohn Estate, LLC
TTABVue 91213643 CANRIG DRILLING TECHNOLOGY LTD. 85492605 REVIT Autodesk, Inc.
TTABVue 91213551 CAPRIOLA CORPORATION, INC. 85792626

85792972

MPS

MPS MOBILE POWER SOURCE

Monolithic Power Systems, Inc.
TTABVue 91213593 CARIBBEAN CANVAS COMPANY LTD. 85656185 CREW-TECH J. Crew Group, Inc., J. Crew International, Inc.
TTABVue 91213572 CONNECT ANYTHING LLC 85826333 GEXPERIENCE General Electric Company
TTABVue 91213630 DERARD, MICHAEL 85869259 LOLOSMART Clark Harris
TTABVue 91213621 DONGGUAN YINGFA INDUSTRIAL CO.,LTD. 85741840 YINGFA Yingfa Swimwear USA, Inc.
TTABVue 91213615 DONGTAI CITY SPIRULINA BIO-ENGINEERING CO., LTD, O., LTD, 85738567 C.B.N. The Christian Broadcasting Network, Inc.
TTABVue 91213650 DR. ING. H.C. F. PORSCHE AKTIENGESELLSCHAFT 79122004 MACAN Stanley Logistics, L.L.C.
TTABVue 91213538 EDIBLE ARRANGEMENTS, LLC 85904616 AUTUMN SWIZZLE BOUQUET 1-800-FLOWERS.COM, INC.
TTABVue 91213540 EDIBLE ARRANGEMENTS, LLC 85901891 BOOTASTIC BOUQUET 1-800-FLOWERS.COM, INC.
TTABVue 91213541 EDIBLE ARRANGEMENTS, LLC 85918912 REINDEER SLEIGH RIDE BOUQUET 1-800-Flowers.com, Inc.
TTABVue 91213576 ELISE SOPHIA PAULSON 85688876 BOM-B-GONE OMS Investments, Inc.
TTABVue 91213580 FLOW CONTROL LLC 85858960 PENTAFLEX Volvo Trademark Holding AB
TTABVue 91213651 GEOFFREY WOOTTON 85796118 THE BLACK MARQUEE Roof Deck Entertainment LLC
TTABVue 91213527 GREATER OMAHA PACKING CO., INC. 85897951 GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF Omaha Steaks International, Inc.
TTABVue 91213638 GREEN JETS INCORPORATED 85695751 BLACKJET JetBlue Airways Corporation
TTABVue 91213644 HORIBA ABX SAS 79110913 PENTRA Ferring B.V.
TTABVue 91213556 IDEA INTEGRATION CORP. 85439181 .IDEA CaseWare International Inc.
TTABVue 91213622 IEC SUPPLY LLC 85841253 IEC SUPPLY Commission Electrotechnique Internationale
TTABVue 91213647 JABER, SAIF 85660036 REVOLUTION Altadis U.S.A. Inc.
TTABVue 91213631 KLEENBY LLC 85642179 KLEENBY Kimberly-Clark Worldwide, Inc.
TTABVue 91213547 KONAMI GAMING, INC. 85813479 SPELLBOUND PRINCESS WMS Gaming Inc., Phantom EFX, LLC
TTABVue 91213553 LIGHTHOUSE GROWTH PARTNERS LLC 85760783 LIGHTHOUSE GROWTH PARTNERS Lighthouse Capital Partners, Inc.
TTABVue 91213602 LUMIVISIONS LLC 85792455 SPANLITE Spanlite Polylite Legacy Limited
TTABVue 91213595 M/S BEEBAY KIDS APPARELS PRIVATE LIMITED 85650384 BEEBAY eBay Inc.
TTABVue 91213511 M/S BEEBAY KIDS APPARELS PRIVATE LIMITED 85650384 BEEBAY bebe studio inc
TTABVue 91213636 MAGIC MUSIC, INC. 85817698 AKJ Harman International Industries, Inc.
TTABVue 91213637 MAGIC MUSIC, INC. 85817698 AKJ AKG ACOUSTICS GMBH
TTABVue 91213610 MARQUESINA, S.A. 85847407 A.G. SILVER Western Glove Works
TTABVue 91213570 MARTIN, JOSE 85828094 JPMARTIN JPMorgan Chase & Co.
TTABVue 91213581 MAXIM INTEGRATED PRODUCTS, INC. 85801371 M Motorola Trademark Holdings, LLC
TTABVue 91213560 MC INTOSH, NAKIERA 85685678 [design mark] The Coca-Cola Company
TTABVue 91213546 MEGAN DOT REARDON LLC 85569626 NOT MARTHA Martha Stewart Living Omnimedia, Inc.
TTABVue 91213578 MICHELE MILLER 85852680 PIRATES IN PARIS Pittsburgh Associates
TTABVue 91213629 MID-ATLANTIC TECHNOLOGY, RESEARCH & INNOVATION CENTER VATION CENTER 85951130

85951097

MID-ATLANTIC TECHNOLOGY, RESEARCH & INNOVATION CEN

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

Matric Limited
TTABVue 91213648 MINK DEVELOPMENT LLC 85887645 UNLEASH THE BEAST WITHIN YOU Monster Energy Company
TTABVue 91213559 MULAC, ROBERT 85839122 BRIDAL TOAST E. & J. Gallo Winery
TTABVue 91213533 MY PERSONAL CHEF, LLC 85606294 L.I.M.E. LOCAL.IMPROMPTU.MOVEABLE.EVENING. RTBD, Inc.
TTABVue 91213509 NEIGHBORHOOD ROGUE, LLC 85826783

85826855

NEIGHBORHOOD ROGUE

NEIGHBORHOOD ROGUE LOYALTY FRIENDSHIP LOVE

Oregon Brewing Company
TTABVue 91213585 NEW YORKER S.H.K. JEANS GMBH & CO. KG 85777926 FSBN JackRajca
TTABVue 91213596 NUDURA CORPORATION 85042422 DURAFOLD TECHNOLOGY U.S. POLYMERS, INC.
TTABVue 91213642 ONNIT LABS, LLC 85643827 HEMP FORCE Threshold Enterprises, Inc.
TTABVue 91213564 PAUL AUDIO, INC. 85697706 C-MARK Shenzhen Bao Ye Heng Industrial Development Co., Ltd
TTABVue 91213601 PEOPLES’ JUICE CORPORATION 85909729 IT’S YOUR CUP OF TEA Your Cup of Tea, Inc.
TTABVue 91213516 PND MEDIA SERVICES, INC. 85793430 PURE NATURAL DIVA Emanuel Ungaro Italia S.r.l.
TTABVue 91213552 PROSPECTHILL GROUP, LLC 85811170 PROSPECTHILL Prospect Mortgage, LLC
TTABVue 91213587 REAL FOODS PTY LTD 79111074 CORN THINS Frito-Lay North America, Inc.
TTABVue 91213639 REDFEST HOLDINGS, LLC 85695116 REDFEST The Cincinnati Reds LLC
TTABVue 91213512 ROCKWALL INDEPENDENT SCHOOL DISTRICT 85796298 H Houston Astros, LLC
TTABVue 91213543 ROCKWALL INDEPENDENT SCHOOL DISTRICT 85796667 Retail Royalty Company Kristin GarrisKilpatrick Townsend & Stockton LLP1114 Avenue of the Americas New York, NY 10036UNITED STATEStmadmin@kilpatricktownsend.com, kgarris@kilpatricktownsend.com, lamiller@kilpatricktownsend.com, lpearson@ktslaw.com, agarcia@kilpatricktownsend.
 TTABVue 91213571 RUBICON GENOMICS, INC. 85865429 PICOPLEX Ferring B.V.
TTABVue 91213594 SCIENCE OF SKINCARE, LLC 85849178 CHAMPAGNE FISZZ FACIAL Institut National et de l’Origine et de la Qualite, Comite Interprofessionnel du Vin de Champagne
TTABVue 91213517 SCOTT, DEBRA, MOORE, DRIA 85065975 CAKE BOSS Discovery Communications, LLC
TTABVue 91213550 SHFT GLOBAL INC 85858982 GENSSI Tristar Products, Inc.
TTABVue 91213588 SHOP LATINO NETWORK S DE RL DE CV 85862538 CAFIASP 85862545Application File Appl
TTABVue 91213562 SPRINGS GLOBAL US, INC. 85866195 REACT! KENNETH COLE PRODUCTIONS (LIC), LLC
TTABVue 91213537 STANLEY LOGISTICS, LLC 85956767 TOUGH LOCK Hans Oetiker AG Maschinen-und Apparatefabrik
TTABVue 91213520 STEVEN CEJNER AND THOMAS F. FLATLEY 85756830 OODLESBI 85756778Application File Appl
TTABVue 91213561 STEVEN L. PAIGE D.D.S. P.C. 85778043 AFFORDABLE DENTAL CARE Affordable Care, Inc.
TTABVue 91213542 TEAS ETC, INC. 85564960 SIMPLY BETTER TEA Simply Orange Juice Company
TTABVue 91213611 THE CLOTHING LINE, LTD. 85866176 MYSTYLEROCKS Fashion Rocks Group Limited
TTABVue 91213597 TIGERCAT INTERNATIONAL INC. 85814584 TIGERCAT Caterpillar, Inc.
TTABVue 91213616 TOPCO HOLDINGS, INC. 85765807 OVERSTOCKED OPTIONS Overstock.com, Inc.
TTABVue 91213617 TOPCO HOLDINGS, INC. 85765813 OVERSTOCKED OPTIONS Overstock.com, Inc.
TTABVue 91213584 TOYS TEKK 85867803 CLOUD ROVER JAGUAR LAND ROVER LIMITED
TTABVue 91213645 UTNE, NINA ROTHSCHILD 85971076 FUTUREFIT Mr.JohnPlatero
TTABVue 91213592 VAPELUX LTD. 85780501 REGCIG Altadis U.S.A. Inc.
TTABVue 91213641 VERTERA, INC. 85914299 VERTERA Edwards Lifesciences Corporation
TTABVue 91213575 VIEW, INC. 85775055 VIEW DYNAMIC CONTROL Sage Electrochromics, Inc.
TTABVue 91213532 VIEW, INC. 85775053 VIEW DYNAMIC GLASS Sage Electrochromics, Inc.
TTABVue 91213604 WHAT A LIFE, LLC 85696428 UP IN SMOKE UP IN SMOKE, INC.
TTABVue 91213609 WIDDOES, SUMNER 85737707 OK LA L.A. Gear, Inc.
TTABVue 91213563 WILSON, MATTHEW K. 85693100 GEORGE BEAR Bear U.S.A., Inc.
TTABVue 91213599 WINTER PARK CYCLES, LLC 85936109 THE FITLAB FITNESS LABS NUTRITION CORPORATION
TTABVue 91213513 WOODBOLT DISTRIBUTION, LLC 85826436 ROYAL SPORT Kansas City Royals Baseball Corporation

 

Cancellation No.

Owner/Defendant

Serial No.

Mark

Plaintiff

TTABVue 92058246 ART MODA SRL 79037847 POST & CO Post University, Inc.
TTABVue 92058272 BRIAN D. PHILLIPS DBA EMPTYFLOWER ASSOCIATES 77317052 EMPTYFLOWER Fong Liu
TTABVue 92058230 CUSTOM LEATHERCRAFT MFG. CO., INC. 77958342 HI-VIZ Ansell Limited
TTABVue 92058247 D. JACOBSON & SONS LIMITED 79022869 GOLA Goya Foods, Inc.
TTABVue 92058253 DEBRA GLADYS FORDHAM 79020262 SOUL VOICE Karin Marie Schelde Jensen
TTABVue 92058262 DXB, INC. 77125182 FITLAB NATURALS Fitness Labs Nutrition Corporation
TTABVue 92058261 ICH BIN AIKO, LLC 77983058

77983132

AIKO

AIKO

Western Glove Works
TTABVue 92058256 JEFFERY SORENSEN 76246177 THE INHIBITOR WD-40 Company
TTABVue 92058263 MITCH SHANNON 77302438 MITCH’S OH YEAH! Meat Mitch LLC
TTABVue 92058274 O-SO HEALTHY FOODS, LLC 77830240 NEW YOU New You Media LLC
TTABVue 92058280 TENGGIS CO., LTD. 78364503 CHINGGIS KHAAN KHAAN OF BEERS APU XK
TTABVue 92058271 VICENTE MARTINEZ GOMEZ AKA VICENTE MARTINEZ 85147512 PURO GUSTO Autogrill S.p.A.
TTABVue 92058258 ZAKARYAN, INC. 85272088 ZAK Western Glove Works
TTABVue 92058223 AILEEN OSER, INC. 76290250 BIKINI Phillip Muskat
TTABVue 92058276 ALPHA OMEGA THETA, INC. 85506804 ALPHA OMEGA THETA Frederick M. Gross
TTABVue 92058244 BIO ORGANICS SKINCARE, LLC 77645012 MAXXUM Exxon Mobil Corporation
TTABVue 92058279 BO VALLIN DBA SCANDINAVIAN SKI & SPORT SHOPS 74581205 SCANDINAVIAN Carina Wood
TTABVue 92058264 BOOTS RETAIL HOLDINGS (USA) INC. 85594570 INSTANT ILLUSION NewMarket Health LLC
TTABVue 92058255 BUNGALOW NO. 9 EAST (HK) LTD. 77223925 BUNGALOW NUMBER 9 Bubble Shack Hawaiian Soap Company, LLC
TTABVue 92058242 CACHET FINANCIAL SOLUTIONS INC. 85909656 CC CACHET FINANCIAL SOLUTIONS Cachet Financial Services
TTABVue 92058217 DCW REHABS, LLC 85439489 WANT2VAPE UTVG Europe Holding B.V.
TTABVue 92058251 DYNAMIC MEASUREMENT GROUP, INC. 78108626

78108640

78108633

85156381

85156400

85463933

DIBELS

DIBELS

DIBELS

DIBELS NEXT

DIBELS NEXT

DIBELS NEXT

University of Oregon
TTABVue 92058260 E. RITTER COMMUNICATIONS HOLDINGS, INC. DBA RITTER COMMUNICATIONS 85508013 Q U A N T U M Quantum Corporation
TTABVue 92058259 EARNED VALUE MANAGEMENT INSTITUTE, LLC 77816045 EVMBOK EARNED VALUE MANAGEMENT BODY OF KNOWLEDGE Project Management Institute, Inc.
TTABVue 92058233 EDIBLE ARRANGEMENTS, LLC 77473853 SWEET LIBERTY BOUQUET 1-800-Flowers.com, Inc.
TTABVue 92058241 EDIBLE ARRANGEMENTS, LLC 77478425 AMBITION BOUQUET 1-800-Flowers.com, Inc.
TTABVue 92058273 EP MINERALS, LLC 77478981 HI-DRI Multisorb Technologies, Inc.
TTABVue 92058278 EPASSPORTE, N.V. 78519895 IT’S EVERYWHERE YOU ARE Visa International Service Association
TTABVue 92058225 GRAB & GOURMET, INC. 85318051 MOD FRESH MOD Super Fast Pizza, LLC
TTABVue 92058234 HELMET VENTURE INC 85287899 REBEL HELMETS Jafrum International Inc.
TTABVue 92058224 INVISAPP, LLC 85694763 INVISAPP THE FAST, FREE ORTHODONTIC CONSULTATION InvisApp, LLC
TTABVue 92058214 ISOMERS LABORATORIES INC. 85118988 AGE DIFFUSER Murad, Inc.
TTABVue 92058277 JONES INVERSTMENT CO. INC. 78936196 WEAREVER GIRL Jill Aquisition LLC
TTABVue 92058252 KF LICENSING, INC. 75684651 PURE LOVE Mimi So International LLC
TTABVue 92058232 MARVELOUS MEDIA, LLC 77067970 MARVELOUS MEDIA MarvelousAQL, Inc.
TTABVue 92058249 MATRIX AUDIO, INC. DBA MATRXX AUDIO 76519627 MATRXX AUDIO Exxon Mobil Corporation
TTABVue 92058235 MY PERSONAL CHEF, LLC 85606232 L.I.M.E. RTBD, Inc.
TTABVue 92058236 OCC ESTABLISHMENT 74581903 MN MUSIC NOW EMI (IP) Limited
TTABVue 92058222 OCULUS INFO INC. 77525924 OCULUS INFO INC. Oculus VR, Inc.
TTABVue 92058254 OFFBEAT BRANDS, LLC 85679645 ZIN-PHOMANIAC Franciscan Vineyards, Inc.
TTABVue 92058250 PORTICO ACQUISITION, LLC 77134341 108 Yellow Designs, LLC
TTABVue 92058243 PRIME INDUSTRIAL DESIGN 78828997 XSPOT Labor Savings Systems, Ltd.
TTABVue 92058266 RITA MURPHY 85709571 MY ICE CREAM Milk & Honey LLC
TTABVue 92058268 RITA MURPHY 85709588 MRS. Milk & Honey LLC
TTABVue 92058270 RITA MURPHY 85709593 YOUR ICE CREAM Milk & Honey LLC
TTABVue 92058265 RWACHSBERG HOLDINGS INC. 77267964 AURORA Eveready Battery Company, Inc.
TTABVue 92058231 SENCO BRANDS, INC. 77526179 NEXIBOND Bioformix, Inc.
TTABVue 92058220 THE PANTRY, INC. 76448056 THE CHILL ZONE Cumberland Farms, Inc.
TTABVue 92058215 THE TEXAS BRAHMAS, L.P. 77134780 TEXAS BRAHMAS NYTEX Sports, L.L.C.
TTABVue 92058238 TRIPLE FIVE SOUL, INC. 75544767

76501972

94337564

TRIPLE FIVE SOUL

TRIPLE FIVE SOUL

555 SOUL

Triple 5 Inc.
TTABVue 92058257 ZING ENTERPRISES, LLC 77671148 TRIVIEW Repnet, Inc.
Tagged

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 October 26 to November 2, 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. Tradmark Opposer
TTABVue 91207731 AJ ENTERTAINMENT, LLC 85555888 NUDES A POPPIN The Alberta L. Schmitt Revocable Living Trust
TTABVue 91207716 CARAVAN CANOPY INTERNATIONAL, INC. 85622947 RHINOSHADE MDM Products LLC
TTABVue 91207719 COUNTRYWIDE GROUP INC. 85472749 INDIAN MOVIES COM Cleveland Indians Baseball Company Limited Partnership
TTABVue 91207794 CREATIVE ENERGY CANDLES, LLC 85594431 KISS MY WAX Kiss My Face, LLC
TTABVue 91207795 CUSTOM MUSIC INTERNATIONAL 85536963 STERLING MUSICAL INSTRUMENTS Paul Riggett
TTABVue 91207808 DENISE R. SELK 85546646 HAFA ADAI Patterson Enterprises DBA Suncare Distributors
TTABVue 91207780 DUNN SR., IRVING EARL 85524287 APOSTLES PROPHETS EVANGELISTS PASTORS TEACHERS FIV Genesco Brands, Inc.
TTABVue 91207769 GRAYER, BRITTNEY, ANN 85261511 ELLE CREE Hachette Filipacchi Presse
TTABVue 91207774 JIMMY RUFUS 85525829 SIN BURGER Fox Restaurant Concepts LLC
TTABVue 91207752 KIM, JOORI 85573157 ALSO ALSA GmbH
TTABVue 91207782 KIM, JOORI 85573157 ALSO Mr.JeffreyRay, Mr.AlexanderP.DeLaPena
TTABVue 91207772 KNELLER, BRUCE W. 85551594 GOJILEAN KASHI COMPANY
TTABVue 91207715 MITSUI, AHIYA 85414617 ARAMUSHA AM Design New York Yankees Partnership
TTABVue 91207724 OLIMPIA WEAR CORP. 85476145 O OLIMPIA United States Olympic Committee
TTABVue 91207804 PRINCE, BRIAN 85523254 THE CHAIRMAN’S CHOICE Tyson Fresh Meats, Inc.
TTABVue 91207743 SCHMIDT, WILLIAM P 85542605 WATCHBOX Watchbox Media Inc.
TTABVue 91207745 SMC CONSORTIUM INC. 85540856 ROXBORO Philip Morris USA Inc.
TTABVue 91207749 SONIC AUTOMOTIVE COMPONENTS, INC. 85146880 SONIC General Motors LLC
TTABVue 91207800 ACTIVISION PUBLISHING, INC. 85535344

85535352

85535356

85535359

85535362

85535366

85535369

SKYLANDERS GIANTS

SKYLANDERS GIANTS

SKYLANDERS GIANTS

SKYLANDERS GIANTS

SKYLANDERS GIANTS

SKYLANDERS GIANTS

SKYLANDERS GIANTS

San Francisco Baseball Associates LLC
TTABVue 91207759 AIT, INC. 76710465 SANIBEL STINGRAYS Tampa Bay Rays Baseball Ltd.
TTABVue 91207736 ANHEUSER-BUSCH, LLC 85612379 ORL Greater Orlando Aviation Authority
TTABVue 91207738 ARROW INTERNATIONAL INVESTMENT CORP. 85045031 ARROWEVOLUTION Cook Medical Technologies LLC
TTABVue 91207713 ART WITH HEART 85310062 ART WITH HEART

ART WITH HEAR

Art with A Heart, Inc.
TTABVue 91207778 AWANA CLUBS INTERNATIONAL 85602672 APPLESEED Digital Frontier Inc.
TTABVue 91207740 BEST BET AUTO FINANCE, LLC 85353054 GIT-R-DONE FINANCE DanielDWhitney
TTABVue 91207750 BEST BET AUTO FINANCE, LLC 85353026 GIT-R-DONE AUTO FINANCE Daniel D. Whitney
TTABVue 91207777 BEST BET AUTO FINANCE, LLC 85353054 GIT-R-DONE FINANCE Git-R-Done Productions, Inc.
TTABVue 91207742 BLUESTAR ALLIANCE LLC 85622600 AMERICAN LAUNDRY Cels Enterprises, Inc., Robert L. Goldman
TTABVue 91207790 BOSTON BIOPROCESS INC. 85544845 SUREOXYL Shurfine Foods, Inc.
TTABVue 91207765 BPI SPORTS, LLC 85680694 EXT SPORTS CHAIN Applied Lifescience Research Industries, Inc.
TTABVue 91207753 BROOKSHIRE GROCERY COMPANY 85491879 YOURPOINTS MyPoints.com, Inc.
TTABVue 91207776 CAN CAN HEALTH & WELLNESS, LLC 85494259 CAN CAN Wakefern Food Corp.
TTABVue 91207729 CBM CREATIVE BRANDS MARKEN GMBH 85361785 MCN MCM Holding AG
TTABVue 91207806 CHRISTINA DEPALMA 85607327 JULU’S Paul Frank Industries LLC
TTABVue 91207801 CJS BEVERAGE CORP. 85539125 17 HANDS Ste. Michelle Wine Estates LTD.
TTABVue 91207803 CJS BEVERAGE CORP. 85539119 17 EST. 2011 17 HANDS Ste. Michelle Wine Estates LTD.
TTABVue 91207732 CLC ENTERPRISES, INC 85473885 PLUM Plum Media, LLC
TTABVue 91207788 CLEANING FOR A REASON 76710121 UNTIL THERE’S A CURE … CLEANING FOR A REASON. Until There’s A Cure Foundation
TTABVue 91207787 CRAFT LIFE, LLC 85614450 CRAFT LIFE New Wave Group AB
TTABVue 91207758 CRESTVIEW DOORS, INC 85452739 DOORLITE Masonite International Corporation, Masonite Corporation
TTABVue 91207766 DEBEN GROUP INDUSTRIES LIMITED 85157072 SAPPHIRE FLIR Systems, Inc
TTABVue 91207755 DENISON UNIVERSITY 85613238 DENISON Avery Dennison Corporation
TTABVue 91207734 ECO-FRIENDLY SOLUTIONS, LLC 77561390 JUST ADD ICE Green Circle Growers, Inc.
TTABVue 91207722 EDIBLE ARRANGEMENTS, LLC 85465708 FIRST MOMENTS BOUQUET 1-800-Flowers.com, Inc.
TTABVue 91207723 EDIBLE ARRANGEMENTS, LLC 85465696 PRECIOUS ARRIVAL BOUQUET 1-800-Flowers.com, Inc.
TTABVue 91207797 FERNANDO A. DETORRES 85538174 ECOSAFE Michael Brandt Family Trust d/b/a Eco-Safe of Dallas
TTABVue 91207789 FUNZIO, INC. 85424172 MODERN WAR Activision Publishing, Inc.
TTABVue 91207791 FUNZIO, INC. 85424176 MODERN WAR BY FUNZIO Activision Publishing, Inc.
TTABVue 91207748 GARO DEDEYAN 79100545 PINGLER Karsten Manufacturing Corporation
TTABVue 91207711 GATOR QUEEN CHOATE, LLC 85590760 MONSTER MARSH Monster Energy Company
TTABVue 91207798 GREENLAND TRADING CORP. 85425670 FERN International Foodstuffs Co.
TTABVue 91207761 GROWING EINSTEINS HOLDINGS, INC. 85545887 GROWING EIN 85546003Application File Appl
TTABVue 91207721 HARBOR FREIGHT TOOLS USA, INC. 85401773 WARRIOR Winch Solutions Limited
TTABVue 91207783 HEALTHY SPIRIT, LLC 85430431 EASY REST ADJUSTABLE SLEEP SYSTEM WilliamE.Russell
TTABVue 91207799 ICE LIGHT, INC. 85588805 ICELIGHT Koncept Technologies, Inc.
TTABVue 91207763 ICON NEW MEDIA, INC 85375297 EBONYU Johnson Publishing Company, LLC
TTABVue 91207717 JEFFERY HOADLEY AND AVE SNYDER 85474232 VITACOR Dr.MatthiasRath
TTABVue 91207771 LAKE PLACID SPRING WATER, INC. 85542974 PURAH First Quality Water & Beverage, LLC
TTABVue 91207773 LICE BUSTERS INC. 85457745 LICE BUSTERS Larada Sciences, Inc.
TTABVue 91207756 LOGMEIN, INC. 85407458 CUBBY The Application Cubby, L.L.C.
TTABVue 91207728 LOOPY MANGO, LLC DBA LOOPY MANGO 85262519 LOOPY MANGO Consolidated Artists B.V.
TTABVue 91207747 MALO S.P.A. 79105644 [design mark] Athletics Investment Group LLC d/b/a The Oakland Athletics Baseball Company
TTABVue 91207737 MATRIX IT MEDICAL TRACKING SYSTEMS, INC. 85468473 MATRIXIT MEDICAL TRACKING SYSTEMS TeleTracking Technologies, Inc.
TTABVue 91207744 MATTEL, INC. 85329055 MONSTER HIGH Monster Products, Inc.
TTABVue 91207754 MAXPOINT INTERACTIVE, INC. 85288713

85288724

85299255

85299258

MAXPOINT

MAXPOINT IT’S ABOUT THE NEIGHBORHOOD

MAXPOINT INTERACTIVE

MAXPOINT INTERACTIVE

MyPoints.com, Inc.
TTABVue 91207775 MPS ENTERTAINMENT, LLC 85543497

85543897

GTL

GTL

VIACOM INTERNATIONAL INC.
TTABVue 91207735 NATIONAL MULTIPLE SCLEROSIS SOCIETY 85477477 MUCKRUCKUS MS Ruckus Sports, LLC
TTABVue 91207779 ONEWEST BANK F.S.B. 85468769 MAGICCARD Celebrity Cards International, Inc.
TTABVue 91207727 OPENBAY, INC. 85527418 OPENBAY eBay Inc.
TTABVue 91207805 POLO GEAR INTELLECTUAL PROPERTIES, INC. 85458112 POLOGEAR PRL USA Holdings, Inc.
TTABVue 91207762 PRODUCT INNOVATIONS RESEARCH LLC 85639525 HOT PANTS Janus Holdings, Ltd
TTABVue 91207760 RAPISARDA, THOMAS 85472857 I CONTOUR Elevation Bed Limited Liability Company
TTABVue 91207770 SAMAR HADDAD 85453782 FLIP’N CHICKEN Fricker’s Progressive Concepts, Inc.
TTABVue 91207802 SELECT CLOTHING CO., INC. 85615959 LIV-LOS ANGELES JS IP LLC
TTABVue 91207725 SMALL BUSINESS & ENTREPRENEURSHIP INSTITUTE, INC. UTE, INC. 85420188 ENTREPRENEUR REVOLUTION Entrepreneur Media, Inc.
TTABVue 91207730 SOFTDOCS, INC. 85566625 SOFTDOCS DYNAMIC SOFTWARE POWERING DOCUMENTS Dynamic Software Corporation
TTABVue 91207793 STONEHENGE STRATEGIC GROUP, INC. 85546607 MIRACLE EXPRESSIONS A&H Sportswear Co., Inc.
TTABVue 91207785 SUSAN L. SCHWEGMAN 85545011 Design mark E. & J. Gallo Winery
TTABVue 91207796 THE BUSINESS LEGAL MANAGEMENT GROUP, INC. 85122767 LEGAL INTELLIGENCE ALM Media Properties, LLC
TTABVue 91207733 THE NASHVILLE ENTREPRENEUR CENTER 76708890 ENTREPRENEURCENTER Entrepreneur Media, Inc.
TTABVue 91207781 TINSELS LIMITED 85356347 COCO COOL N.B. Value Link Co., Ltd.
TTABVue 91207757 TOL INC. 85446802 BLINGIRLS Blinc, Inc.
TTABVue 91207807 TONY MINH NGUYEN 85613090 KINGSTON MATTRESS Kingston Technology Co., Inc.
TTABVue 91207741 TOPCODER, INC. 85540508 BUG RACE Volkswagen Aktiengesellschaft, Volkswagen Group of America, Inc.
TTABVue 91207792 VERACITY NETWORKS 85522446 VERACITY NETWORKS Veracity Solutions, Inc.
TTABVue 91207767 VIDEO SYSTEMS S.R.L. 79100611 PARSON Parsons Corporation
TTABVue 91207739 VS FROYO INC 85395924 REHAB Monster Energy Company
TTABVue 91207718 WARRIOR ATHLETICS LLC 85474290 WARRIOR ATHLETICS Athletics Investment Group LLC d/b/a The Oakland Athletics Baseball Company
TTABVue 91207746 WARSAW ORTHOPEDIC, INC. 85631906 MLINE Medline Industries, Inc.
TTABVue 91207726 WESCO DISTRIBUTION, INC. 85469237 MARATHON Superior Essex Communications LP
TTABVue 91207751 ZIBLIO, LLC 85410675 MY LDS MEMORIES Intellectual Reserve, Inc.
Cancellation No. Registrant Serial No. Trademark Petitioner
TTABVue 92056388 BRANDON M. HOVER 77469780 BRINK INDUSTRIES Brinko and Sutherlin DBA Brinko Ties
TTABVue 92056393 BRIGITTE MUELLER 77311193 NOIZIE Vice Media Inc.
TTABVue 92056374 CHURCHILL CHASE, INC. 78699500 ST. ANDREWS St Andrews Links Limited
TTABVue 92056379 LEE OLIVER 77599425 RAPTOR Raptor, Inc.
TTABVue 92056369 MR. KAYSON STONER 76174650 P P.E.R.S.E.P.T.I.O.N.S. Perceptions, Inc.
TTABVue 92056373 NCLGROUP, INC. 85350259 NATIONALCARLISTER.COM Vanguard Trademark Holdings USA LLC
TTABVue 92056392 SOBER CAMEL LLC 77855723 SOBER CAMEL Sober Cambel LLC
TTABVue 92056384 AMANDA’S RESTAURANTS, LLC 78848197 AMANDA’S Amanda’s of Colorado Springs LLC
TTABVue 92056383 DBMK ENTERPRISES, INC. 77082424 MAMA’S ON WASHINGTON SQUARE Jennifer Strome and Elizabeth Cuny
TTABVue 92056372 DSM IP ASSETS B.V. 79064678 DSM Delta Education LLC
TTABVue 92056377 FERGUSON ENTERPRISES, INC. 85363876

85351834

PROPLUS +

PROPLUS

Interline Brands, Inc.
TTABVue 92056385 FINISH LINE HORSE PRODUCTS, INC. 78928887 HEMAX Omega Alpha Pharmaceuticals Inc.
TTABVue 92056380 I A NUTRITION, INC. 78650007 INNER ARMOUR Under Armour, Inc.
TTABVue 92056370 INVITE HEALTH, INC. 85072794 POWER PLANT Hikari Holdings, LC
TTABVue 92056391 JAMES L. THRONEBURG 78689360 THORLOS LOVE YOUR FEET Spenco Medical Corporation
TTABVue 92056396 K. HANSOTIA & CO. 77951820

77197668

76579257

EAST INDIA

EAST INDIA TRADING COMPANY

EAST INDIA CORPORATION

The East India Company Limited
TTABVue 92056395 MENDOCINO WINE GROUP, LLC 78893264 PAUL DOLAN Paul Dolan
TTABVue 92056378 MOROCCANOIL, INC. 77122509

77359562

77359584

MOROCCANOIL

M MORACCANOIL

M MORACCANOIL

Avon Products, Inc.
TTABVue 92056381 NAKED TM, LLC 78303400 NAKED Australian Therapeutic Supplies Pty Ltd
TTABVue 92056387 RAINTREE CAPITAL PARTNERS, LLC 77649045 RAINTREE CAPITAL PARTNERS Raintree Capital Partners, LLC
TTABVue 92056371 RB FITNESS ENTERPRISES, INC. 78812492 IT’S NEVER TOO LATE It’s Never 2 Late, LLC
TTABVue 92056382 SETH CARNES 77439731 I HEART Iron Fist International, Inc.
TTABVue 92056376 STRICKLAND-FULLER PARTNERSHIP 77216184 NOW IS THE TIME E. Gluck Corporation
Tagged

Recent TTAB Decisions and Activity of Note (7/23 – 7/29/2012)

Between July 23 and July 29, 2012, the TTAB issued several precedential decisions and several other interesting decisions:

– the USPTO examining attorney reversed regarding a refusal based on the recitation of services

– disclaimer requirement for ARCADEWEB reversed even though Applicant has previously registered the wording on supplemental register

– motion to leave to amend to plead additional registrations owned by Petitioner denied

Below is a full rundown of the activity of note from the TTAB during this period. Decisions I found particularly interesting are highlighted in bold.

Visit http://ttabvue.USPTO.gov to view any of the proceeding and documents.

Proceeding No.

Date

TTAB Disposition

Precedent?

Notes

77602145

07/23/2012 BOARD`S DECISION: AFFIRMED

N

Application for INFINI & Design for bicycles and related goods refused under Section 2(d) as likely to be confused with two marks from different owners: INFINITE® for bicycles and related goods and INFINITY® for luggage and sport bags. Goods overlap; marks found highly similar: Board affirmed refusal.

77779284

07/23/2012 BOARD`S DECISION: AFFIRMED

N

Refusal of BABY GUIDE for printed guides and website related to parenting refused as generic under Section 2(e)(1). Refusal affirmed.NOTE: Late filed evidence from Applicant was considered by the Board because Examiner did not object to it and addressed it.

77795412

07/26/2012 BOARD`S DECISION: AFFIRMED

Y

Application for “aCU” for dietary supplements refused under Section 2(a) as deceptive, and alternatively under 2(e)(1) as deceptively misdescriptive as to CU. ‘CU’ found to be abbreviation for ‘copper’, and that the presence of copper would be material to the decision to buy supplements, and as a result board Affirmed.

 85164601

07/26/2012 BOARD`S DECISION: AFFIRMED

N

Application for INTELLIGENT QUARTZ for watches refused a merely descriptive. Applicant’s finding of 3 cancelled registrations for the same mark for watches on the principal register without a finding of acquired distinctiveness was no help. Board affirmed refusal, finding: “consumers and prospective consumers viewing the mark INTELLIGENT QUARTZ as applied to watches will understand the mark to mean that the watch contains a quartz component controlled by a computer chip.  The three websites advertising applicant’s watches corroborate this finding of fact.”

85131427

07/24/2012 BOARD`S DECISION: REVERSED

N

Application for INVENI for computer software and entertainment and educational services was refused for failure to provide a sufficiently definite recitation of the services in Class 41 pursuant to 37 C.F.R. Sect. 2.32(a)(6). Board found Applicant’s identification language sufficiently definite and reversed.

85134539

07/27/2012 BOARD`S DECISION: REVERSED

Y

Application for ARCADEWEB & Design for online advertising services refused registration unless Applicant disclaimed ARCADEWEB. Prior registration by Applicant for ARCADEWEB in standard characters on the Supplemental Register, but Examining Attorney only raised for the first time in its brief the argument that Applicant had admitted the terms was merely descriptive in obtaining the supplement registration. Board noted this was not good practice. As to the current application, board found that “Registration on the Supplemental Register is prima facie evidence that, at least at the time of registration, the registered mark was merely descriptive,” “it is troubling that the examining attorney never put applicant on notice that the examining attorney was treating the Supplemental Registration as evidence in support of her position, or that applicant had options to address the prima facie evidence of the Supplemental Registration.” As a result, Board found that the examining attorney had not met her burden and the refusal was reversed.

92053659

07/26/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT

N

Petitioner moved for leave to amend its petition to add a fraud claim and to reopen discovery. Petitioner’s reply brief was stricken as more than 10 pages long. Petitioner’s proposed amended claim of fraud was found legally insufficient (“Pleadings of fraud made “on information and belief” when there is no separate indication that the pleader has actual knowledge of facts supporting a claim of fraud are insufficient.” It also failed to allege any intent.) Petitioner’s motion thus denied as futile.

91198438

07/26/2012 RESPONSE DUE 30 DAYS (DUE DATE)

N

Opposer’s motion for relief from judgment (dismissal) under Rule 60(b)(1) granted and proceeding reinstated. Board then considered the merits of Applicant’s motion to dismiss for failure to state a claim and granted motion to dismiss, giving Opposer leave to amend.

91202393

07/23/2012 TRIAL DATES RESET

N

Applicant’s default set aside: “the record thus far does not evidence evasive conduct, bad faith or gamesmanship on applicant’s part, and does not suggest that the failure to timely answer, or to move for an extension oftime to answer, was the result of willful behavior, or indifference or inattentiveness to this proceeding.”

91197484

07/26/2012 BOARD`S DECISION: SUSTAINED

N

Opposition to applicant’s FATBOY mark for cigars and accessories based on prior use alleged of FAT BOY for cigars. Applicant did not take any testimony, and did not respond to requests for admissions, thus they were deemed admitted. Opposition sustained.

91199922

07/24/2012 BOARD`S ORDER TRIAL DATES RESET

N

Opposer’s late filed response to Applicant’s motion for a more definite statement ignored as untimely; Opposer must file revised notice of opposition or case will be dismissed.

94002505

07/23/2012 MOTION FOR SUMMARY JUDGEMENT DENIED

N

In a concurrent use proceeding, Board denied Applicant’s motion for summary judgment. “Having reviewed the record on summary judgment, and construing all inferences in favor of Turdin as non-movant, the Board finds that, at a minimum, there is a genuine dispute with respect to the material factual issue of likelihood of confusion.  In particular, the specific nature of the parties’ services, and whether and how they are similar or related, is in genuine dispute.”

92054129

07/24/2012 MOTION TO AMEND DENIED; SUMMARY JUDGEMENT MOOT

N

Petitioner’s motion for leave to amend the pleading to plead ownership of two additional registrations denied. Board found that petitioner unduly delayed by waiting 10 months. Petitioner’s effort to add claim of abandonment also denied as legally insufficient: “petitioner’s pleading of abandonment includes no facts which allege either that respondent has failed to use its mark for three years or that respondent has discontinued use of its mark with an intent not to resume use.” Petitioner found to have filed on the eve of trial for purposes on delay. “[W]e find that petitioner unduly delayed in asserting the abandonment claim and that the motion to amend was interposed for purposes of delay, having been filed one day before petitioner’s testimony period was set to open.” Board barred Petitioner from repleading the abandonment claim.

91204157

07/26/2012 MOTION TO AMEND; DENIED; TRIAL DATES RESET

N

Applicant moved, with consent, to amend its drawing and description of goods and services. Proposed amended drawing was rejected as not supported by the specimen of record. Proposed amendment to identification also denied as it “excludes goods that are already outside of the scope of the recited services.”

91186138

07/26/2012 PROCEEDINGS RESUMED

N

Opposer moved to quash applicant’s testimonial depositions. The notices were quashed as premature as Applicant’s testimony period had not yet opened. Because deponents (employees of Opposer) are located abroad, Applicant’s attempt to compel the appearance in person is improper.

91191180

07/27/2012 PROCEEDINGS RESUMED

N

Opposer’s Motion to compel granted and discovery reopened only for Opposer. Applicant found to have fully and timely cooperated with discovery obligations.

91197044

07/25/2012 PROCEEDINGS RESUMED

N

Opposer’s motion to compel in three related proceedings denied. Board found Opposer to blame as it failed to first consolidate the proceedings, and failed to give Applicant sufficient time.“Under the circumstances, opposer should have sought consolidation of these proceedings prior to serving any discovery and then served one set of interrogatories and document requests for the consolidated proceedings.” Opposer’s combined interrogatories found to number more than 75.

91200425

07/25/2012 PROCEEDINGS RESUMED

N

Opposer moved to compel granted in part and denied in part.

91202857

07/25/2012 PROCEEDINGS RESUMED

N

Opposer moved to strike 3 affirmative defenses, two of which were contested by applicant. Motion granted in part: Defense of failure to state a claim stricken, defense stating opposer’s mark is weak not stricken.
Tagged

Recent TTAB decisions and activity of note (7/16 – 7/22/2012)

Between July 16 and July 22, 2012, the TTAB issued one precedential decision and several other interesting decisions:

– REAL RUSSIAN found geographically deceptively misdescriptive for vodka (precedential);

Below is a full rundown of the activity of note from the TTAB during this period. Decisions I found particularly interesting are highlighted in bold.

Visit http://ttabvue.USPTO.gov to view any of the proceeding and documents.

Proceeding #

Date

TTAB Disposition

Precedent?

Notes

91199182

07/16/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED N Opposer’s motion for summary judgment denied given dispute regarding Opposer’s alleged use of its marks. Applicant’s motion for partial summary judgment also denied.

91173963

07/20/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED N Following the conclusion of a civil proceeding between the parties dismissing Opposer’s claims of trademark infringement, Applicant moved for judgment on the pleadings on ground of res judicata, and Opposer moved for judgment on the pleadings on the grounds that application is stopped from obtaining a trademark on the opposed terms MINI-MELTS and MINIMELTS marks without the additional term MUCINEX.Board found parties’ cross motions for judgment on the pleadings inappropriate since both relied on matters outside of the pleadings, and treated them a motions for summary judgment. Board denied claim for res judicata: “Even if we assume that the parties are identical and that a final judgment on the merits in the civil action has been rendered, it is well-settled that a claim for trademark infringement is based on different transactional facts than those upon which an opposition to registration of a mark is based.” Board also refused claim of judicial estoppels as “the civil action was based on different facts from the present opposition, and the ground of judicial estoppel is therefore inapplicable to the extent that opposer seeks to preclude applicant from obtaining registrations for its involved marks that do not include the term MUCINEX as a prefix to those marks.”

77135323

07/20/2012 BOARD`S DECISION: AFFIRMED N Application for WETTECHNOLOGIES & Design (for rust removal; Particle blast cleaning machines; machine tools for water blasting, descaling, derusting, wet lapping, wet peening, slurry processing, and deburring; wet etching machines) refused without a disclaimer of WET TECHNOLOGIES. Applicant agreed to disclaim WET and TECHNOLOGIES, but not the phrase together. Applicant’s brief included a list of marks and registration numbers, which Board failed to consider because “a list is not an appropriate way to make third party registrations of record; copies of the registration records from the USPTO’s database should be submitted” and because it was untimely when submitted with the appeal. The fact that the disclaimer requirement was changed after the initial review by Examiner did not matter: while new requirements should only be raised in cases of “clear error,” consideration of whether there has been a clear error is at the discretion of the examining attorney and his supervisors, and can only be reviewed via a petition to the director. Board found both WET and TECHNOLOGIES descriptive and found nothing about the combination of the two to avoid a finding of descriptiveness, and thus affirmed the refusal.

NOTE: Board’s opinion is 37 pages long!

77203020

07/16/2012 BOARD`S DECISION: AFFIRMED N Application for MaxCL for life insurance underwriting refused under Section 2(d) as likely to be confused with two marks from same registrant: MAX and MAX & Design, both for underwriting of property and casualty insurance.

“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

07/20/2012 BOARD`S DECISION: AFFIRMED N Application for PREVAIL for medical devices refused under Section 2(d) as likely to be confused with PEEK PREVAIL® for surgical implants. Board discounted evidence of several third party registrations for medical goods featuring PREVAIL, and discounted third party evidence of use: “Insofar as the evidence of actual use is concerned, we focus on a critical infirmity in applicant’s evidence, namely the absence of any information regarding the extent of use of PREVAIL by third parties.”Even accepting that purchasers are sophisticated, Board affirmed finding of likelihood of confusion.

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

77894876

07/16/2012 BOARD`S DECISION: AFFIRMED N Application by Zynga’s for CASINO WORLD for software refused under Section 2(d) as likely to be confused with CASINO WORLD® registered for dockside casino services. Board found “that a viable relationship exists between applicant’s online computer games playable over social network websites and registrant’s dockside casino services.” And as the marks are identical, Board affirmed the refusal.

77928717

07/18/2012 BOARD`S DECISION: AFFIRMED Y Applicant for REAL RUSSIAN for vodka refused as primarily geographically deceptively misdescriptive under Section 2(e)(3). “To the extent there would be any doubt that the primary significance of the word RUSSIAN used on vodka is a geographic location, the addition of the word REAL serves to underscore the meaning of geographic origin.” There was no dispute that the goods do not emanate from Russia and “the evidence of record here overwhelmingly supports a finding that Russia is extremely well known for vodka.” And as to materiality, “The evidence submitted establishes that vodka is an important product of Russia and that both the public in general, and vodka drinkers in particular, would be aware that Russia is well-known for vodka” As a result, refusal affirmed.

91202724

07/17/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Proposed consented amendment of applicant’s mark approved by the Board.

92051672

07/19/2012 TRIAL DATES RESET N Petitioner moved to compel responses to interrogatories and requests for production of documents, and to reset the discovery period for 120 days. Petitioner alleged that no documents were produced for many interrogs or document requests, and those that were produced were not identified by Bates numbers. Motion granted in part where respondent did not provide complete information or documents. If respondent has no documents responsive to a request in its possession or control, it must state so conclusively. For one document request, respondent order to produce “samples of ‘Cuban seed tobacco’ that Registrant uses in Registrants’ cigars bearing the mark HAVANA SUNRISE.” As to respondent’s claim that certain documents are in possession of its former counsel, Board ordered to submit a declaration to the Board with a full explanation of its request to former counsel and any rationale provided by that counsel, and it will then allow Petitioner time to request them via subpoena duces tecum.

92054767

07/18/2012 TRIAL DATES RESET N Parties’ consented motion to extend dates is granted in part; parties are ordered to conduct their discovery conference within 15 days.

91174169

07/18/2012 BOARD`S DECISION: SUSTAINED N Applicant filed 6 applications for VALENTINO RUDY & Design (IC 9, 14, 18, 24, 25, and 28) under Section 44(e). Valentino S.p.A. opposed on grounds of Section 2(d) based on its previously used and registred marks for VALENTINO, VERY VALENTINO, VALENTINO and “V” design, and VALENTINO GARAVANI and “V” design for clothing and related accessories. Board found the parties’ goods partly identical and the remainder related; and the marks highly related. Board also found Opposer’s mark arbitrary in long and continuous use, thus “commercially strong,” though it also found that several other entities use marks featuring VALENTINO. As a result, the Board sustained the oppositions.

91183352

07/17/2012 BOARD`S DECISION: SUSTAINED N Applicant moved for relief from final judgment under Fed. R. Civ. P. 60(b). Opposition was sustained due to discovery sanctions on July 1, 2009. Applicant brought this motion nearly 3 years later, and claimed that it was attorney’s neglect that led to entry of judgment against applicant. Fed. R. Civ. P. 60(c)(1) has a one year time limit and motion dismissed as untimely.

91186906

07/18/2012 BOARD`S DECISION: SUSTAINED N Applicant’s mark: Elektra & Design for “Retail stores featuring general consumer goods such as home appliances, electronics, electric appliances, furniture and household goods; and advertising, namely, the commercialization of goods such as home appliances, electronics, electric appliances, furniture and household goods, (‘715 application)and publicity, commercial business management, commercial business administration, office work (‘763 application). Opposer’s mark: “numerous ELEKTRA and ELEKTRA-formative marks, including the mark ELEKTRA (typed or standard characters), previously used and registered on the Principal Register for  prerecorded phonograph records, audio and video tapes, cassettes, and compact disks featuring entertainment.” Board found Opposer’s mark has achieved significant recognition, and found parties’ goods and services related, in party due to 8 used based registrations to be probative on the issue of the relatedness of the goods and services in the ‘715 application. Board sustained opposition to the ‘715 application, but denied it as to the ‘763 application given the differences in the goods and services.

91192293

07/17/2012 BOARD`S COMMUNICATION N Board convened a phone conference with the parties “to generate ideas about what the Board can do to make submission of evidence more efficient where large records may exist; to confirm to the parties that the Board did not view the parties as having elected accelerated case management (“ACR”) in this case; and to confirm the issues remaining for final decision.”

91203410

07/19/2012 BOARD`S COMMUNICATION N Applicant moved to compel the continued deposition of a witness. Motion granted – parties stipulated that 30(b)(6) witnesses could be deposed up to 12 hours each, the deponent’s had not yet completed 12 hours. Board blamed Opposer for the difficulty scheduling the deposition date. Parties also barred from filing unconsented motions without first discussing with interlocutory attorney: “The party seeking to file an unconsented motion must (i) discuss with the other party and agree on three alternative dates and times when a conference with the Board attorney could be held; (ii) arrange the conference with the Board and the other party; and (iii) during the conference, explain the circumstances warranting the filing.  If appropriate, the Board will authorize filing or addressing by phone the unconsented motion.”

91203833

07/18/2012 MOTION DENIED; TRIAL DATES REMAIN AS SET N Opposer (Zynga) moved to compel. Motion denied: party responding to requests is not required to produce documents with the responses, but rather “The responding party then “must either state that inspection and related activities will be permitted as requested or state an objection to the request, including the reasons.” Fed. R. Civ. P. 34(b)(2)(B).”

91204105

07/16/2012 MOTION DENIED; TRIAL DATES REMAIN AS SET N Applicant moved to suspend opposition pending civil action between Opposer and a third party in District Court. TTAB denied motion as the outcome of civil action will not have a bearing on the TTAB proceeding: “The third party plaintiff in the civil action does not seek cancellation of opposer’s pleaded registration, and whether or not the district finds a likelihood of confusion between the two marks will not affect whether the Board finds a likelihood of confusion between opposer’s and applicant’s respective marks.”

91200513

07/16/2012 MOTION TO CONSOLIDATE GRTD; TRIAL DATES RESET N Applicant (“MACWAGON & Design” for garden wagons) moved to strike two paragraphs from Opposer’s (McDonald’s) notice of opposition. Motion denied – statements will not prejudice Applicant and, to the extent they are vague, can be the subject of discovery.

92055306

07/19/2012 PROCEEDINGS RESUMED N Petitioner moved to strike paragraphs and affirmative defenses from the answer. Defendant’s denial of multiple paragraphs in the petition because they were “ambiguous and unintelligible as written” was stricken. Affirmative defenses of failure to state a claim and lack of standing are not real affirmative defenses. But since petitioner is not prejudiced by their inclusion, the motion to strike is denied as to those paragraphs. Board sua sponte noted that petitioner’s claim of false suggestion of a connection was not properly pleaded; leave to amend granted.

91204861

07/17/2012 PROCEEDINGS RESUMED N Opposer moved to strike many of Applicant’s affirmative defenses. Where Applicants “defenses” were statements raising factual issues related to the merits of Opposer’s claims, the motion was denied. Regarding defense of “fair use,” it does not belong in TTAB proceeding and motion is granted. Defenses alleging Opposer’s claim is barred by laches and acquiescence are stricken: “said defenses are not available to a defendant in an opposition proceeding.” Defenses of unclean hands, estoppel, and waiver were not set forth with factual bases and are stricken. Defenses of failure to state a claim or lack of standing stricken as the opposition pleading was sufficient.
Tagged

Recent TTAB decisions and activity of note (7/9-7/15/2012)

Between July 9 and July 15, 2012, the TTAB issued one precedential decision (regarding a 2(a) false suggestion claim) and several other interesting decisions:

– whether the  pleading of a claim under Section 14(3) of the Trademark Act for “misrepresentation of source” was sufficient;

– Zynga’s request to extend discovery in a proceeding by 180 days was denied;

– a consented extension was denied because the parties failed to show any activity regarding settlement discussion since the previous extension grant;

– a deposition upon written questions of an involuntary witness was denied on notice alone; party must obtain a subpoena;

– a challenge to the famous “goats of a roof” registration was dismissed with prejudice;

– a motion to disqualify counsel of the adversary was denied in a detailed 17 page opinion authored by Chief Administrative Trademark Judge Rogers;

Below is a full rundown of the activity of note from the TTAB during this period. Decisions I found particularly interesting are highlighted in bold.

Visit http://ttabvue.USPTO.gov to view any of the proceeding and documents.

Proceeding #

Date

TTAB Disposition

Precedent?

Notes

91200237

07/10/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED N Applicant’s moved for summary judgment that there is no likelihood of confusion, based in part on deemed admissions made when Opposer failed to respond to requests for admission. Opposer responded by request and extension of time to submit its admission responses, noting health issues of its principal. Opposer’s motion to withdraw its deemed admissions and accept its late-filed response to requests for admission was granted, and as a result the motion for summary judgment was denied.

77600412

07/11/2012 BOARD`S DECISION: AFFIRMED Y Board affirmed refusal based on false suggestion of association with BENNY GOODMAN pursuant to Section 2(a). Application was for BENNY GOODMAN COLLECTION THE FINEST QUALITY & Design for fragrances, cosmetics, leather good, and clothing (“COLLECTION and “THE FINEST QUALITY” disclaimed). “In view of the facts that applicant’s mark is a close approximation of the name of the musician Benny Goodman, that applicant’s mark points uniquely and unmistakably to him, that Benny Goodman has no connection with applicant’s business, and Benny Goodman is sufficiently famous that a connection with him (or his estate) would be presumed if applicant’s mark were used in connection with fragrances and cosmetics, leather goods, and clothing, we find that applicant’s mark falsely suggests a connection with Benny Goodman.”

77906902

07/11/2012 BOARD`S DECISION: AFFIRMED N Application for STAYS FLUFFY LONGER for pillows, featherbeds, comforters, and blankets refused as merely descriptive under Section 2(e)(1). Finding “fluffy” descriptive and “stays” and “longer” used in a laudatory manner, Board affirmed refusal.

85059377

07/12/2012 BOARD`S DECISION: AFFIRMED N Application for MY MUSIC SKOOL for retail and education services in the field of music (“MUSIC SCHOOL” disclaimed) refused under Section 2(d) as likely to be confused with MY KIDS MUSIC SCHOOL for music education services (“KIDS MUSIC SCHOOL” disclaimed). Refusal affirmed, finding services identical and marks similar: “The misspelling of SKOOL in applicant’s mark is an insignificant difference from that of registrant’s mark, because SKOOL and SCHOOL are pronounced the same and the substitution of the letter K for the letters CH does not materially change the appearance of the word or impart it with any different meaning.”

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

85120587

07/13/2012 BOARD`S DECISION: AFFIRMED N Applicant for RED CARPET RED VELVET CAKE for “frozen concoctions” refused under Section 2(d) as likely to be confused with RED CARPET CUPCAKE for “bakery goods.” Finding dominant element – RED CARPET – identical and the goods related and overlapping channels of trade, Board affirmed. “However, the record does show a relationship between these goods that goes beyond the mere fact that they are both dessert items. The web page excerpts submitted by the examining attorney show other ice cream companies selling ice cream with red velvet cake pieces folded into the ice cream.”

85143186

07/10/2012 BOARD`S DECISION: AFFIRMED   Application for 24 HR LOCKOUTS for ““locksmithing, namely, opening of locks” refused under Section 2(e)(1): Board affirmed: “We find that when combined the terms 24, HR and LOCKOUTS do not lose their descriptive significance and, in fact, make clear that applicant provides lockout services on a 24 hour basis.”

85320832

07/10/2012 BOARD`S DECISION: AFFIRMED N Application for OIVA for cutlery, utensils, and other kitchen items refused as merely descriptive under Section 2(e)(1). OIVA means “excellent.” Applicant argued that the term is also the name for a place or a person. Board found that Finnish speakers in the US would translate OIVA as the laudatory term “excellent,” and affirmed the refusal.

92055517

07/10/2012 SUSPENDED PENDING DISP OF CIVIL ACTION N Respondent moved to suspend pending a civil action, and Board granted motion. Board sua sponte notes that fraud claim is insufficiently pled and descriptiveness claim is time-barred.

91190703

07/09/2012 SUSPENDED PENDING DISP OF CIVIL ACTION N Applicant moved to remove suspension. Inasmuch as the civil action is not final, resumption is premature.

91201118

07/10/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT N Opposer (Zynga, Inc.) moved to extend discovery by 180 days. Applicant responded and moved for partial summary judgment. “[A]pplicant contends that opposer has failed to diligently pursue discovery in this case and has therefore failed to show good cause for the extension sought,” and board agreed: Opposer has not established good cause for the extension sought. Motion to extend discovery denied; proceeding suspended pending Applicant’s motion for partial summary judgment.

91189069

07/09/2012 TRIAL DATES RESET N Opposer moved to reopen its testimony period. But because delay was within Opposer’s control, “opposer’s inaction in presenting its case was unwarranted.” Motion denied.

91197274

07/09/2012 TRIAL DATES RESET N Consented motion to extend discovery by 3 months granted only in part; parties had already served discovery: “Given the age of this case and the limited discovery remaining to be taken, a three month extension of time is unjustified.  It is now time for the parties to finish discovery and move to trial expeditiously.” Board issued stern warning regarding additional extensions: “unless additional claims on which additional discovery is required are added to this proceeding, the discovery period may very well close as scheduled herein, even if both parties stipulate to further extend the discovery period.  In fact, from this point forward, in the event either party seeks any further extension or suspension, it must request it in a teleconference between the Board and both parties, failing which any further request to extend or suspend will be denied.”

91198619

07/10/2012 TRIAL DATES RESET N Opposer filed a “stipulated” motion to reopen discovery and reset trial dates. A month later, Applicant filed its opposition to reopening discovery. The motion to re-open discovery was denied, reopening of Opposer’s testimony  period(which was not contested) was granted.

91199621

07/09/2012 TRIAL DATES RESET N Applicant move to re-open discovery and extend trial dates. Applicant claimed that it had difficulties in part due to issues with its U.K. counsel. Board found that applicant did establish “excusable neglect” and denied the motion.

91200922

07/09/2012 TRIAL DATES RESET N Opposer filed a notice of testimony deposition upon written questions of Applicant’s co-owner; Applicant filed a motion to take the deposition orally. But “where a party wishes to take the testimony of an adverse party, or an official or employee of an adverse party, and the proposed witness is not willing to appear voluntarily to testify, the deposition may not be taken on notice alone.” “Applicant’s motion clearly indicates that Dr. Berry is unwilling to appear voluntarily for a testimony deposition upon written questions.  Thus, the noticed deposition upon written questions cannot be taken on notice alone.  Opposer indicated during the telephone conference that it had not Opposition obtained a subpoena compelling Dr. Berry’s attendance for a testimony deposition upon written questions.  Accordingly, the motion to quash is granted.”

91204340

07/11/2012 TRIAL DATES RESET N Opposer moved for leave to file an amended notice of Opposition granted as motion was brought before close of discovery. As the amended notice added two new claims but dropped the original claim of priority and likelihood of confusion without consent, that claim is dismissed with prejudice.

91197470

07/10/2012 BD`S DECISION: DISMISSED W/ PREJUDICE N Opposer moved to reopen its testimony period. Motion denied: “We find that opposer’s failure to take testimony was not the result of excusable neglect.” “[O]pposer’s failures to conduct the discovery conference, make initial disclosures, conduct discovery, to make expert and pretrial disclosures, and to enter testimony were entirely within opposer’s control” and Opposer never sought so much as a suspension or extension

92054059

07/12/2012 BOARD`S DECISION: DISMISSED W/ PREJUDICE N After the Board previously dismissed the original Petition for Cancellation without prejudice for failure to state a claim, the Petitioner filed an amended petition and the Registrant again moved to dismiss. This time around, the Board against granting motion to dismiss and dismissed the Petition with prejudice: “petitioner’s new allegations, and the amended petition’s allegations as a whole, are insufficient to adequately allege petitioner’s standing… [S]tanding requires a direct and personal injury, and does not provide a right of redress to those who may be only tangentially and speculatively affected by a registration.”

NOTE: Goats on a roof!

92052197

07/12/2012 BOARD`S COMMUNICATION N Respondent moved to “re-strike” three declarations from testimony that Board has already ruled stricken; Petitioner had now sought to attach them to testimonial depositions. Respondent also seeks to strike portions, but not the entirety, of Mr. Clary’s and Mr. Quam’s testimony because respondent argues that the portions at issue constitute “expert” testimony prohibited by the Prior Order.  Motion to re-strike the declarations granted, “And to the extent that any witness testified in an otherwise admissible oral testimony deposition directly about any previously-stricken declaration, that portion of the witness’s testimony is also hereby stricken.” Issue of whether the particular testimony was expert testimony or law testimony is deferred until final decision.

91197048

07/12/2012 BOARD`S COMMUNICATION N Board clarified an earlier ruling to note that the doctrine of claim preclusion (res judicata) as well as doctrine of issue preclusion or collateral estoppel are “inapplicable to any of the factual determinations that opposer seeks.”

91203343

07/12/2012 BOARD`S COMMUNICATION N Applicant moved for relief from judgment under Fed. R. Civ. P.

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

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

91198943

07/10/2012 MOTION FOR CORRECTED JUDGMENT; DENIED N Opposer moved for suspension pending its petition to the Director, or alternatively for a ‘corrected judgment’ amending the Board’s prior order denying summary judgment and denying a motion to amend.  Both motions denied..

92047154

07/12/2012 MOTION FOR SUSPENSION; DENIED N Respondent filed consented motion for continued suspension. But respondent did not provide enough information about progress of the negotiations, as noted in the Board’s previous order: “Specifically, respondent does not state that any of the recited activity occurred since the last motion.” Accordingly, motion denied.

91196894

07/10/2012 PETITION TO DISQUALIFY DENIED N Applicant filed motion for recusal of Opposer’s Attorney, Timothy Lockhart, and the firm of Wilcox & Savage on the alleged bases of “substantial and irreconcilable conflicts of interest.” Applicant submitted no evidence to support its motion.

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

91195102

07/12/2012 TELECONFERENCE ORDER RE P`S MTN TO COMPEL; TRIAL DATES RESET N Opposer filed combined motions to compel discovery response and for sanctions. Motion was granted as to a particular interrogatory seeking identity of the entity or entities which manufacture(s), distribute(s) and/or market Crafts’ goods in the United States.

91205276

07/11/2012 TRIAL DATES REMAIN AS SET N Respondent’s motion to dismiss was given no consideration as the motion did not contest the sufficiency of the pleading but rather attempted to argue their merits and was effectively a motion for summary judgment, which is premature before initial disclosures are made.

92051684

07/09/2012 PROCEEDINGS RESUMED N Proceeding had been suspended bending a civil action. The district court proceeding concluded, and the court’s “rulings do not address either use or registration of the parties’ marks, and do not prevent petitioner from bringing its claim of nonuse or respondent from defending its registration.”  Accordingly, the proceeding is resumed.

92054925

07/11/2012 PROCEEDINGS RESUMED N Respondent filed a motion to dismiss the amended petition to cancel under Fed. R. Civ. Pr. 12(b)(6). Motion dismissed.

92055549

07/10/2012 PROCEEDINGS RESUMED N Respondent moved to dismiss. Board found that Petitioner failed to alleged its standing for grounds of abandonment and genericness, and thus granted the motion. “[P]etitioner did not allege any facts regarding confusion between the parties’ marks nor did petitioner allege that it is using or has a prospective right to use the term EMPIRICAL CONCEPTS in the petition to cancel.  Petitioner simply alleged “inherent” standing based on its position as defendant in other oppositions or based on extensions of time to oppose that have been filed against its pending applications.” Board also found the genericness claim was not pleaded sufficiently and was incurable, dismissing it with prejudice: “Petitioner has failed to offer any facts which could be inferred to plausibly show that EMPIRICAL CONCEPTS is the central aspect of respondent’s auditing or accounting services or a type of auditing or accounting service.  The Board finds that these allegations are not plausible on their face, and any further opportunity to amend this claim would be futile.”
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Recent TTAB Decisions and Activity of Note (7/2 – 7/8/2012)

Between July 2 and July 8, 2012, the TTAB issued several interesting decisions. None were precedential. There were a few interesting and important rulings during this period, including:

– Whether the  pleading of a claim under Section 14(3) of the Trademark Act for “misrepresentation of source” was sufficient;

– A motion to compel after the internet printouts provided by a party did not contain dates or URLs;

– Reversal of 2(d) refusal of DRILL WIZARD for “athletic training equipment, namely, computerized controls sold as a component of ball-delivery training machines for setting up and executing machine assisted training routines for ball sports” based on cited SHOT WIZARD mark for “basketball training devices, namely, devices for placing over basketball rims to aid in shot training;”

– Granting applicant’s Motion for Summary Judgment seeking dismissal of the opposition on the grounds of Claim Preclusion resulting from a prior civil action; and

– Consented amendment to drawing accepted, even though it moved position of word INSURANCE

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

Pro-ceeding No.

Date

TTAB Disposition

Prece-dent?

Notes

91204318

07/05/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED N Applicant moved to summary judgment on grounds of res judicata based on Board decision in a prior action between the parties.

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

91154103

07/02/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED N Parties filed cross-motions for summary judgment on issue of claim preclusion following a settlement that dismissed the civil action between the parties which has suspended the TTAB proceeding. Opposer’s motion denied and Applicant’s motion granted. ” Opposer now moves for summary judgment on the ground that the district court judgment was based on different transactional facts than are present in the opposition, and thus opposer is not barred from challenging applicant’s attempt to register its ULTRASHARP mark.  Applicant also moves for summary judgment, contending that opposer’s claims to the district court were based on allegations regarding the opposed ULTRASHARP application and opposer sought an injunction barring applicant’s registration, and since opposer agreed to dismissal of its claims with prejudice, opposer is barred from again challenging applicant’s ULTRASHARP application.”
“In sum, because the district court’s judgment dismissed with prejudice opposer’s claims regarding both applicant’s use and registration of its ULTRASHARP mark, opposer is barred by the doctrine of claim preclusion from bringing this action to oppose applicant’s application.  Accordingly, there are no genuine disputes as to any material fact and entry of judgment as a matter of law is appropriate.  Opposer’s motion for summary judgment is denied; applicant’s motion for summary judgment is granted; and the notice of opposition is dismissed.”

77663407

07/05/2012 BOARD`S DECISION: AFFIRMED N Refusal of I-BID LIVE (LIVE disclaimed) for online auction services under Section 2(d) with registration of “ibid motors” & Design for “online retail store services… and internet auctions” affirmed. Board found services similar and both marks dominated by same I-BID term and “Purchasers in general are inclined to focus on the first word or portion in a trademark, especially where the first word is followed by a highly descriptive term” “Further, to the extent that applicant’s argument based on an alleged overbroad recitation of services in the cited registration constitutes a collateral attack on the registration, we agree with the examining attorney’s assessment that such attack is impermissible.”

85171209

07/05/2012 BOARD`S DECISION: AFFIRMED N Refusal of SHAPE for painter’s masking tape under Section 2(d) with registration of SHAPE for paints and lacquers affirmed: marks identical; goods are complementary and sold together at stores as shown by examining attorney’s website evidence.

76699839

07/02/2012 BOARD`S DECISION: REVERSED N Refusal of DRILL WIZARD (DRILL disclaimed) for athletic training equipment under Section 2(d) with registration of SHOT WIZARD (SHOT disclaimed) for basketball training devices reversed: while goods related, there are differences; also no evidence to show they may emanate from single source; purchasers sophisticated; applicant’s products expensive. Marks not identical and additional connotation of WIZARD in applicant’s mark based on computer functions.

92055147

07/05/2012 SUSPENDED PENDING DISP OF CIVIL ACTION N Proceeding remains suspended pending appeal of civil action.

92051949

07/05/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Respondent failed to file Answer to amended petition to cancel. Respondent, acting pro se, has previously filed several tardy filings and/or filings without certificates of service, despite repeated warnings from the Board. While Board denied motion for default since Respondent has not indicated bad faith or complete disregard for the proceeding, it warned that if a proper and timely amended answer was not filed – with proper service – it will enter judgment against respondent.

92054934

07/02/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Respondent moved to dismiss for failure to state a claim under Fed. R. Civ. P. 12(b)(6) regarding claims of fraud and abandonment. Motion denied.

91181288

07/05/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Opposer moved to compel responses to multiple document requests and interrogatories, and to test the sufficiency of responses to requests for admission. Opposer’s motion to compel granted as to the majority of the requests. Opposer’s motion to test the sufficiency of RFA responses granted as to the majority of the requests.

91198266

07/03/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Consented amendment to drawing accepted (even though it moved position of word INSURANCE)

92052696

07/06/2012 TRIAL DATES RESET N Petitioner’s motion to compel denied without prejudice for lack or a good faith effort prior to the filing of the motions.

91201377

07/02/2012 BOARD`S ORDER OPPOSER IS ALLOWED 10 DAYS TO RESPOND N Applicant moved to dismiss claims of “(i) misrepresentation of source, (ii) fraud based on false first use dates, and (iii) fraud based upon nonuse at the time of filing of applicant’s application.” Opposer moved to strike Applicant’s affirmative defenses.

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

91205546

07/05/2012 BOARD`S ORDER TRIAL DATES RESET N Motion to amend notice of opposition granted; but several claims stricken as insufficiently pleaded; Opposer given leave to file a new amended notice of opposition.

92053461

07/06/2012 MOTION FOR SUMMARY JUDGEMENT DENIED; MOTION TO COMPEL DENIED N Respondent (ONE LOVE registration for restaurant services) moved for summary judgment and to compel against petitioner, which holds the rights to Bob Marley marks. In consolidated case, Respondent has opposed Petitioner’s application for ONE LOVE for music publishing and festival services. Finding genuine issues of material fact; Board denied the MSJ. Motion to compel denied as there was no evidence that moving party first made a good faith effort to resolve.

92053245

07/02/2012 MOTION TO COMPEL GRANTED IN PART/DENIED IN PART; PROCEEDINGS RESUMED; TRIAL DATES RESET N Petitioner moved to compel responses to multiple requests for production and interrogatories. Petitioner noted that web printouts produced by Respondent contained neither dates or URLs, “that respondent’s discovery documents are neither organized or labeled to correspond to the document requests nor organized as they are kept in the ordinary course of business; and that respondent’s document production appears to be based largely on the results of its attorney’s Internet search rather than a search of its records.”

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

91169489

07/02/2012 MOTION TO COMPEL; DENIED; PROCEEDINGS RESUMED; TRIAL DATES RESET N Opposer moved to compel supplemental discovery responses and moved to exceed page limit requirement for briefing. Motion denied: “[Opposer] filed a 144 page motion to compel supplemental responses to sixty five disputed discovery requests, namely fourteen interrogatories (Nos. 1, and 3-15), and fifty-one document requests (Nos. 1-12, 14-17, 19-20, 27, 29-35, 38-57, 59-73).  The motion is largely single-spaced, and includes more than 300 pages of exhibits.” The Board thus denied the motion, but took both parties to task for their discovery behavior: “While FCC’s discovery requests were over-reaching in the extreme, it is clear to the Board that EFI made boilerplate objections and evasive and incomplete responses, and it is not clear to the Board that EFI has served plainly relevant and requested information.  The Board holds both parties responsible for ensuring that this proceeding goes forward in a more cooperative and productive manner.

92054337

07/05/2012 P`S CROSS-MOTION DENIED; D`S MOTION FOR SJ GRANTED N The parties cross-moved for summary judgment on the claim that respondent’s mark was abandoned. Respondent argued that an attack by Petitioner in a different opposition between the parties make its non-use excusable pending the outcome of that proceeding. Board agreed that the prior proceeding has some affect: “In the interest of fairness, any nonuse of the PHACET mark by Farmaco during the six-month pendency of TriZetto’s counterclaim seeking to cancel the PHACET registration in Opposition No. 91184047 should not be counted in determining whether there has been three consecutive years of nonuse.” But presumption of abandonment was rebutted: “Even if we were to assume that Farmaco’s activities with respect to its PHACET mark undertaken after the institution of the cancellation proceeding of this consolidated case do not constitute technical use of the PHACET mark in commerce, these activities certainly preclude any finding that Farmaco has abandoned all claims to its PHACET mark or that FARMACO has no intent to commence use of its mark in commerce.” Respndent’s MSJ granted and the petition dismiss (related consolidated petition will continue).

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

92048691

07/05/2012 P`S MOTION TO AMEND PETITION TO CANCEL; GRANTED N Petitioner moved to amend the 2nd amended petition to cancel to bring a claim of nonuse granted when petitioner because aware of possible nonuse of some of registrants goods during testimony.

92055444

07/03/2012 PROCEEDINGS RESUMED N Default set aside and motion for default denied.

92055588

07/06/2012 PROCEEDINGS RESUMED N Respondent moved to dismiss for failure to state a claim. Motion granted (with leave to amend): Petitioner failed to allege grounds sufficient for standing. (“Petitioner does not set forth, for example, the nature of its business and/or its business activities, the basis for its commercial interest in the mark, its status as a competitor of respondents, or the nature of its use or any specific goods and/or services on which it alleges use of WORLD CUP or formatives thereof.”) Petitioner’s abandonment claim also found insufficient.

91179460

07/05/2012 PROCEEDINGS RESUMED N Opposer moved to strike Exhibit B-X of applicant’s notice of reliance “on the ground that applicant has failed to state the general relevance of these exhibits in compliance with Trademark Rule 2.122(e). Motion granted to as to part of the exhibits because the NOR included no statement setting forth their general relevance: “Even if the third-party registrations submitted under notice of reliance are essentially redundant of third-party registrations submitted through applicant’s testimony, that notice of reliance should be in compliance with applicable rules.”

91204897

07/02/2012 PROCEEDINGS RESUMED N See 91204941, below: same disposition in related proceeding.

91204941

07/03/2012 PROCEEDINGS RESUMED N Applicant filed motion to dismiss for failure to state a claim under Fed. R. Civ. P. 12(b)(6). Board granted the motion (with leave to amend) as to claims of deceptiveness, mere descriptiveness, and fraud; and denied the motion as to claim of geographic descriptiveness.
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