Tag Archives: TTAB decision

Recent TTAB Decisions and Activity of Note (6/18 – 6/24/2012)

Between June 18 and 24, 2012, the TTAB issued numerous decisions. None were precedential, but one was on remand from the CAFC.

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

– As a discovery sanction, a party was prohibit from introducing evidence that it did not produce in discovery, and all of its documents produced will be treated automatically as authentic and admissible.

– In an new oppsoition by Motorola against Nextel’s “chirp” sound mark, Board found that neither claim nor issue estoppel prevented the claim, which is based on a different set of ‘transactional facts’ since it relates to telecommunications services, not phone goods that were at issue in prior TTAB proceeding.

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

91196412

06/20/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED

N

Opposer (COCO DELICE for chocolates) moved for summary judgment on priority and likelihood of confusion against Applicant’s COCO DELICES CHOCOLATERIE & Design mark for chocolates. Finding genuine dispute as to nature and extent of opposer’s common law rights and priority, as well as the strength of opposer’s mark, Board denied the motion.

77534583

06/20/2012 BOARD`S DECISION: AFFIRMED

N

Refusal of registration of SULFREEN for “building, installation and maintenance of industrial plants” in International Class 37; and “research and development in the field of chemistry, in particular in the field of sulfur recovery from sulfur-containing gases; services of an engineer; development, planning, construction design and technical project planning of industrial plants, devices and methods in the field of analytical chemistry and synthesis, as well as corresponding advice, namely, technical consulting in the technology field of sulphur-containing gases, in particular in the field of sulfur recovery from sulfur-containing gases; performance and evaluation of chemical analysis; performance and evaluation of chemical synthesis; issuance of technical expert opinions in the technology field of sulphur recovery from sulphur-containing gases” in International Class 42 for failure to submit proper specimens showing use of the mark with the applied-for services affirmed. “It is settled that if a term is used only as the name of a process it does not function as a mark. However, a term can be used as the name of a process and also function as a mark for services. That is to say, use of a term in connection with a process does not prevent such term from designating more than a process.” Here, the Board found that the “specimen does not display SULFREEN in such a manner that it would be readily perceived as identifying the source of the identified services.”

77671449

06/22/2012 BOARD`S DECISION: AFFIRMED

N

Application for JOHN SHOPE’S SINISTER INDUSTRIES for motorcycles, parts, and related services refused under Section 2(d) as likely to be confused with registration for SINISTER CYCLES for “retail store services featuring motorcycle parts and accessories.” Finding goods and services related and SINISTER arbitrary and strong; the Board likened addition of JOHN SHOPE to addition of a house mark, and insufficient to avoid confusion. Fame of application JOHN SHOPE irrelevant. Refusal affirmed.

77832668

06/18/2012 BOARD`S DECISION: AFFIRMED

N

Application for ADMEDIA for a variety of advertising services refused under Section 23(c) as generic. Board affirmed: The Examining Attorney’s evidence included 38 third party registraitions featuring disclaimer of “ad” and/or “media.” “Despite the minimal evidence of use of the compound term “admedia,” there is ample evidence to support the relevant public’s understanding of the term ADMEDIA to refer to the genus of services. “ “[T]he joinder of the words “ad” and “media” into a single term creates no additional meaning, impression or nuance other than the meaning associated with the individual words as used together. Viewers would recognize the mark as consisting of the separate elements AD and MEDIA

77921755

06/21/2012 BOARD`S DECISION: AFFIRMED

N

Application for MY SMILEKIDS refused for ““providing a website featuring information in the field of dental care; providing information in the field of dental care” refused under Section 2(d) as likely to be confused with registration of MYSMILE for “providing health information.” Board found services overlapping; marks similar and sound and appearance; and affirmed the refusal. Applicant’s registration of SMILEKIDS for same services did not help it overcome the refusal; “The focus of the analysis in this case must be on the mark applicant seeks to register, MY SMILEKIDS, and not on the other mark applicant already registered.”

85064187

06/21/2012 BOARD`S DECISION: AFFIRMED

N

Application for MAXWELL for leather furniture refused under Section 2(d) as likely to be confused with MAXWELL for fabric products and MAXWELL HOME & GARDEN for fabrics. Refusal affirmed: “In balancing the relevant du Pont factors in this case, we find that because the marks are identical and very similar, the goods are related, the channels of trade and the classes of consumers overlap, confusion is likely between applicant’s mark and the marks in the cited.”

85065751

06/21/2012 BOARD`S DECISION: AFFIRMED

N

Application for MUZZIE’S & Design for retail clothing boutiques refused under Section 2(d) as likely to be confused with MUZZYS & Design registered for clothing and for store and wholesale services featuring motorcycle parts and clothing manufactured by others.

Refusal affirmed. Applicant’s prior registration irrelevant: “Applicant also raises the argument in its brief that that its predecessor in interest previously owned a registration for the same mark for “retail clothing boutiques” which was inadvertently cancelled due to the failure to file a Section 8 affidavit. Applicant’s Brief, p. 3. Applicant contends that the marks coexisted on the register for over six years without any instances of actual confusion. We are not persuaded.”

Applicant’s cancelled registration cannot justify registration

of its current application.

85082505

06/21/2012 BOARD`S DECISION: AFFIRMED

N

Refusal of AMERICA’S FAVORITE for mustard under Section 2(d) due to likelihood of confusion with registrations of  AMERICA’S FAVORITE for “ketchup” and “sauces” from same owner. Refusal affirmed. Applicant’s prior registrations did not help its cause: “Cancelled or expired registrations generally have no evidentiary value, and certainly an applicant cannot claim a right to registration based on its prior ownership of cancelled or expired registrations.”

91199193

06/22/2012 SUSPENDED PENDING DISP OF CIVIL ACTION

N

Motion to Consolidate granted. Fraud claim in counterclaim is stricken as improperly pleaded. Because of excessive number of filings, one party was “ordered to telephone the Interlocutory Attorney prior to the filing of any further interlocutory motions, and seek permission for such filings.”

91192593

06/19/2012 TRIAL DATES RESET

N

 Applicant moved for relief from final judgment for failure to file an answer, contending that its failure to file a timely answer and respond to the notice of default was clerical and entirely inadvertent (Applicant’s counsel blamed his secretary for docketing errors.) Motion granted: “While counsel may have overrelied on his firm’s “safeguard procedure,” we do not find that the record demonstrably shows that counsel willfully defaulted.  Further, since default judgments for failure to timely file an answer are not favored by the law, we generally treat Rule 60(b) motions seeking relief from such judgments more liberally than motions seeking relief from other types of judgments.”

91170112

06/18/2012 BOARD`S DECISION: DISMISSED

N

On remand from CAFC after the appeals court affirmed the Board’s finding of no likelihood of confusion and no dilution and that Applicant’s mark is merely descriptive. However, the appeals court vacated “the Board’s decision solely on its finding of acquired distinctiveness” and remanded for further proceedings. The Board here found that Applicant’s mark has acquired distinctiveness: “We note that while applicant’s COACH mark is merely descriptive, it is not so highly descriptive that applicant has the burden to show a concomitantly high level of acquired distinctiveness.”

91187787

06/22/2012 BOARD`S DECISION: DISMISSED

N

Applicant’s mark: ARMORSTONE for “Clear and pigmented coatings used in the nature of paint; Glazes; House paint; Interior paint; Mixed paints; Paint for concrete floors; Paint primers; Paint sealers; Paint thinner; Paints; Paints and lacquers; Pavement striping paint; Epoxy coating for use on concrete industrial floors.” Opposer owns numerous registrations for STON- marks for epoxies and related good. Board first ruled the because the Application was under Section 1(a), merely checking a ground on the ESTTA cover sheet does not constitute properly pleading the ground. Opposer therefore only properly pleaded a claim under Section 2(d), but the descriptiveness claim was tried by implied consent. Board found the marks create different commercial impressions; the goods closely related; Opposer’s evidence fell short of showing fame; and dismissed the Section 2(d) claim. Board also dismissed the descriptiveness claim.

91195158

06/20/2012 BOARD`S COMMUNICATION

N

Applicant moved for relief from final judgment for failure to file an Answer. Motion denied: “In order to establish that relief from the default judgment is appropriate, applicant “must persuasively show (preferably by affidavits, declarations, documentary evidence, etc., as may be appropriate) that the relief requested is warranted for one or more of the reasons specified in Fed. R. Civ. P. 60(b).”  TBMP § 544 (3d ed. 2011).” “[A]pplicant provides no explanation as to why he neglected to respond or why he waited for a year to seek relief from judgment.”

91203482

06/20/2012 BOARD`S ORDER TRIAL DATES RESET

N

Consented motion to consolidate denied because the marks are not overlapping at all (HOMEWOOD RESIDENCE and a number of marks featuring THE HAMPTON).

92054391

06/21/2012 COURT`S DECISION; REMANDED

N

The CAFC, upon request from Respondent/Appellant, remanded to the TTAB so the Board can rule on his motion for relief from final judgment (a default) under Fed. R. Civ. P 60(b).

NOTE: Board already indicated in an order that “We would be inclined to grant respondent’s Motion for Relief from Final Judgment.”

91200355

06/18/2012 CROSS-MOTION FOR SUMMARY JUDGEMENT GRANTED

N

In opposition by Motorola to Nextel’s sound mark for telecommunication services, parties filed cross motions for summary judgment on the issue of res judicata and/or collateral estoppel. Board previously ruled that the “chirp” sound for two-way radios failed to function and for cell phones it was not inherently distinctive and had failed to acquire distinctiveness. The Board here ruled that claim preclusion did not apply: “the third element of claim preclusion is not met inasmuch as the instant opposition is not based on the same set of transactional facts that were before the Board in Opposition No. 91164353.  In that proceeding, the core issue before the Board (the issue which was not precluded by the decision in Opposition No. 91161817) was whether the sound had inherent or acquired distinctiveness as a mark with respect to Motorola’s “cellular telephones.”  The Board made no finding as to whether the sound had acquired distinctiveness as a mark as used in connection with any of Nextel’s services…[T]he Board did not rule with respect to whether the sound was inherently distinctive, or had acquired distinctiveness as a mark for Nextel’s services.” As for collateral estoppel/issue preclusion, the Board also found no preclusion of the current claims: “There is no identity of issues inasmuch as the issues resolved in Opposition No. 91164353 differ materially from those presented in the instant opposition.”

91200910

06/18/2012 MOTION FOR DEFAULT JUDGMENT; DENIED; TRIAL DATES RESET

N

Opposer moved for default judgment based on Applicant’s untimely answer filed without explanation. Motion denied: facts indicate delay was willful or the product of gross neglect.

91201549

06/18/2012 MOTION TO SET ASIDE NOTICE OF DEFAULT; GRANTED; TRIAL DATES RESET

N

Applicant moved to set aside notice of default. Applicant’s late answer was served on Opposer but was not properly filed with the Board. Motion granted: “the Board cannot infer either willful delay or gross neglect from applicant counsel’s mistaken belief that the answer was properly filed with the Board.”

91201070

06/21/2012 PL`S MOTION TO REOPEN; GRANTED

N

Opposer filed later response to motion for summary judgment, which Board construed as a motion to reopen opposer’s time to respond to the motion for summary judgment. Response filed just a few minutes past the midnight deadline. Motion granted: “The length of the delay is infinitesimal, and will have absolutely no impact on this proceeding.  And it appears that opposer has acted in good faith and applicant does not contend otherwise.”

91202073

06/18/2012 P`S AMENDED NOTICE OF OPPOSTION DUE THIRTY DAYS

N

Applicant moved to dismiss under 12(b)(6) for failure to state a claim. The notice of opposition consisted of the ESTTA form and a letter from Opposer. Motion granted regarding 2(a) claim and 2(d) claim; Board noted that 2(d) claim contain the proper elements but the form of the notice of opposition was lacking.

91200183

06/21/2012 RESPONSE DUE IN (20) DAYS

N

Competing motions to strike filed; Applicant seeking to strike assignment documents recorded by Opposer. Board declined to rule on the issue on the assignments, noting its power is regarding registrability and the validity of the documents would be an issue for trail. Opposer’s motion to strike dismissed as untimely as it came more than 25 days after the Answer. But Board reviewed the Answer anyways and noted that some claims alleged must be raised in a compulsory counterclaim and that one affirmative defense was insufficient.

92054730

06/18/2012 PROCEEDINGS RESUMED

N

Respondent moved to dismiss petition to cancel under 12(b)(6) for lack of standing. Because petitioner is a competitor of respondent, petitioner is a competitor “with a commercial interest affected by the registration, and the petition to cancel sufficiently sets forth allegations of standing and a ground for cancellation that, if proven, would entitle petitioner to judgment.  Accordingly, respondent’s motion to dismiss the petition to cancel is denied.”

91197005

06/20/2012 PROCEEDINGS RESUMED

N

Applicant moved to dismiss under 12(b)(6) for failure to state a claim. Motion denied.

91197661

06/21/2012 PROCEEDINGS RESUMED

N

Opposer moved for discovery sanctions. Board found many responses supplemented (per earlier Board order) but still insufficient. Board did not grant judgment as sanction but:“As an alternative to judgment, which we do not consider appropriate in the circumstances of this case, we grant opposer’s requested sanction prohibiting applicant’s introduction at trial of any information not provided in response to the Board’s order compelling discovery responses.” “If filed during trial by opposer, the Board will accept any documents produced by applicant as a result of this order as authentic and admissible. However, because those documents were improperly withheld from opposer, applicant is prohibited from using those documents at trial, either as an exhibit to a testimonial deposition or by notice of reliance.”

91198154

06/21/2012 PROCEEDINGS RESUMED

N

Opposer moved to compel discovery responses; motion granted as conceded.

91200806

06/19/2012 PROCEEDINGS RESUMED

N

Applicant moved to strike paragraphs from the amended Notice of Opposition, interpreted as a motion under Rule 12(f) and 12(b)(6). Motion to strike reference to Opposer’s Canadian registrations denied. Motion to Dismiss fraud claim as improperly pleaded granted.

91201858

06/18/2012 PROCEEDINGS RESUMED

N

Applicant moved to dismiss under Fed. R. Civ. P. for failure to state a claim. Opposer’s response was late and attempted to argue the merits and other matters outside the pleadings; Opposer’s brief ignored by Board. Motion granted: Opposer failed to allege standing or descriptiveness. Opposer given time to amend pleading.
Tagged

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

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.
Tagged

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

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

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

Proceeding No.

Date

Disposition

Precedent?

Notes

91193223

05/17/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED N Opposer (LA MORENTI BRAND & Design for cheese) asserted likelihood of confusion and fraud. Applicant (MORENITO and LA MORENITA for tortillas and other foods) moved for summary judgment on issue of priority. Applicant’s argument based on the fact that Opposer’s sales information came from third parties (Wal-Mart) and is hearsay and/or inadmissible. Board overruled hearsay objection, but found genuine issue of material fact at dispute.

94002493

05/17/2012 BD`S DECISION: FAVORABLE TO APPLICANT N Thompson Cree sought concurrent use registration of TRUST YOUR HOME TO THOMPSON CREEK in all areas except California. The submitted agreement between the parties deemed acceptable by the Board and concurrent registrations granted.

77689692

05/17/2012 BOARD`S DECISION: AFFIRMED N Refusals to register SPOTLIGHT and SpotLight & Design for animal tracking/locating devices and services under Sect. 2(d) for likelihood of confusion with SPOTLIGHT for pet leashes affirmed. Mark found virtually identical and leashes and GPS collars found to be sold by the same source or in same channels of trade.

77689799

05/15/2012 BOARD`S DECISION: AFFIRMED N Refusal to register AST for supplements in class 5 under section 2(d) as likely to be confused with AST SPORTS SCIENCE for supplements affirmed.

77950529

05/17/2012 BOARD`S DECISION: AFFIRMED N Refusal to register WEBASSSETS for “computer software for management of energy industry asset related data” under Section 2(e)(1) affirmed

77950537

05/16/2012 BOARD`S DECISION: AFFIRMED N Refusal to register WEBOMS for computer software for outage management under Sect. 2(e)(1) affirmed. Term deemed to be combination of “web” and “OMS” [outage management system].

85025722

05/16/2012 BOARD`S DECISION: AFFIRMED N Application for RUDI’S GLUTEN-FREE BAKERY for bakery products refusd under Section 2(d) as likely to be confused with RUDI’S and RUDI’S & Design for ‘bakery products.’ Prior consent agreement did not cover the mark at issue. Refusal affirmed dispute Applicant’s prior registrations for related marks an identical goods.

77734610

05/18/2012 BOARD`S DECISION: REVERSED N Quicksilver’s application for SURF COUTURE for “Optical goods, namely, eyewear, sunglasses, spectacles and goggles for sports; recorded materials, namely, digital video discs and CDROMs featuring sports, recreational activities, music and fashion” (Class 9) and “Travel bags, luggage, carry-all bags, handbags, beach bags, tote bags, bath bags, namely, bags used to carry goods used in the bath, sports bags, backpacks, purses, wallets, satchels, brief cases, attaché cases, suitcases, key cases, valises; umbrellas” (Class 18) and clothing in Class 25 refused as descriptive under 2(e)(1). Refusal reversed by Board: “the evidence made of record by the examining attorney is insufficient to support a finding that, as applied to applicant’s goods, the mark SURF COUTURE would immediately describe, without conjecture or speculation, a significant characteristic or feature thereof.” Notably, two of five Nexis articles used by Ex. Atty. were from outside US.

79048804

05/14/2012 BOARD`S DECISION: REVERSED N Christian Dior’s application for a design patter for optical goods, furniture and other items refused as ornamental under Sect. 1,2, and 45 of the Trademark Act Applicant argued that its mark should be registered because its two prior registrations establish secondary source. Applicant’s prior registrations were pursuant to Section 44(e), Section 8 affidavits of use had been submitted. Board reversed the refusal: “in view of the fact that applicant is the owner of two registrations, issued under Section 44 and for which affidavits of use under Section 8 have been accepted, for a mark that is identical to the applied-for mark, this shall be accepted as showing of secondary source, applicant has shown that its mark serves a source-identifying function. TMEP § 1202.03 (c).

85074276

05/16/2012 BOARD`S DECISION: REVERSED N Refusal of FIREBRIX (for fire lighters; solid fire starters) under 2(d)(1). The Board reversed, finding Wikipedia and other definitions relevant, and finding examining attorney’s evidence (definitions and 5 webpages showing use) insufficient.

94002528

05/14/2012 RESPONSE DUE 30 DAYS (DUE DATE) N The Board reviewed a concurrent use agreement between 3 parties. The board found several discrepancies and unclear terms in the agreement and gave the parties 30 days to file an amended agreement.

91203073

05/17/2012 RESPONSE DUE 30 DAYS (DUE DATE) N The mark which was subject to the Opposition was filed under Trademark Act Sect. 66(a). During the proceeding, the USPTO received notification from the International Bureau that the international registration, upon with the US application was based, had been cancelled. As a result, Board issued a show cause order for Applicant to show cause why its failure to maintain the international registration should not be the equivalent of an abandonment without consent. “If, in response to this order, applicant submits a showing that the failure to maintain the international registration was the result of inadvertence or mistake, judgment will not be entered against it.”

91182377

05/17/2012 TRIAL DATES RESET N Plaintiff allowed some of its registrations to lapse by failing to file a Section 8. Board entered judgment as to those registrations on 2(d) grounds rather than abandonment: Plaintiff “failed to show that discontinuation of use of that mark was not made for the purpose of avoiding a judgment with regard to that registration on Television’s pleaded claim under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).”

91196325

05/14/2012 TRIAL DATES RESET N Applicant moved to extend time to serve initial disclosures for a 2nd time after its first such motion was granted. Applicant showed good cause and motion granted, though Applicant cautioned regarding additional extensions.

91203404

05/17/2012 TRIAL DATES RESET N Applicant moved to extend time to serve initial disclosures. Applicant’s recent change of counsel found to constitute good cause and motion granted.

91203898

05/14/2012 TRIAL DATES RESET N Applicant counterclaimed seeking to deny Opposer’s pending applications. Board found that any opposition to the registrations is premature and denied motion.

91196483

05/14/2012 BD`S DECISION: DISMISSED W/ PREJUDICE N Board issued an order to show cause why Opposition should not be dismissed due to Opposer’s failure to submit a brief. Opposer responded and showed continued interest and the show cause order was discharged. However, “because opposer failed to file a motion to reopen pursuant to Fed. R. Civ. P. 6(b)(1)(B), the brief on the case will be given no consideration.” Opposer submitted no testimony or evidence. Applicant’s answer did not admit any dispositive allegations. “In view thereof, judgment is hereby entered against opposer, and the opposition is dismissed with prejudice.”

91174249

05/14/2012 BOARD`S DECISION: SUSTAINED N Opposition on 2(d) and dilution grounds to LYNXMASTER and logos for metal garage door hardware and electric garage openers. Opposer alleged prior use and registration of LIFTMASTER and LIFT-MASTER in connection with “overhead door operating systems.”Evidentiary issues:“Opposer objects to the introduction of information pertaining to previous oppositions, cancellations and settlement agreements involving opposer and unrelated third parties as irrelevant to the present action.  We have previously noted that the settlement agreements are not admissible as they were submitted under notice of reliance; such evidence may only be submitted as an exhibit to a testimony deposition or by stipulation.  On the other hand, information pertaining to prior oppositions and cancellations that is contained in the TTABVUE printouts or file histories thereof is relevant to the issue of the strength of opposer’s mark, as it serves to show opposer’s enforcement efforts.” Opposer’s submission of foreign trademark registration found irrelevant and excluded from consideration.Likelihood of confusion: Parties found to operate in same channels of trade, and their products, while not identical, found complimentary. Board found the marks similar. Opposer’s found famous among professionals and commercially strong among homeowners. Accordingly, the Board sustained the Opposition. Note: Applicant’s motion to amend its description of goods denied as well: “Amendment of the identification of goods to restrict the trade channels in applicant’s applications would not avoid a likelihood of confusion because both parties sell directly to this professional market.”

91194783

05/17/2012 BOARD`S DECISION: SUSTAINED N IKEA (furniture and related goods/services) Opposed NIKEA for chocolates, candy. Board found the marks similar and goods identical in relevant part (“Opposer sells, among its other products, “sweets and chocolates.” These are sold via restaurants at every IKEA store and also as retail products at each one.”). Board found IKEA not shown to be famous on the record: “We conclude that while opposer has shown a fair amount  of market exposure over the time period provided, opposer has not provided clear context for its sales and advertising numbers with regard to the industry, nor as to how the fame.” Board sustained the Opposition.

91199018

05/14/2012 BOARD`S DECISION: SUSTAINED N Applicant’s motion to suspend denied: applicant did not establish good cause and it was previously advised that it if its representative was outside the country it had a duty to appoint someone in the representative’s absence. Applicant’s motion to compel denied: Applicant failed to make a good faith effort to resolve the discovery dispute first. Opposer’s motion for sanctions granted: In March 9, 2012 Board order, Applicant was directed to serve initial disclosures and responses to discovery requests within 20 days. While applicant provided initial disclosures by the deadline, it did not serve discovery responses or seek an extension, and failed to offer any explanation. As a result: “opposer’s motion for sanctions in the form of entry of judgment is granted”

92047436

05/14/2012 BOARD`S DECISION: GRANTED N Petitioner, Ralph Lauren, filed for cancellation under 2(d) for respondent’s design mark featuring a polo player falling of a horse for use with clothing. Evidence: Respondent’s objection to a rebuttal declaration granted as Respondent claims it never was served a copy and the filing with the Board does not indicate any certificate of service. 2(d): Board found the goods overlapping and the marks very similar. Board found that parody is not a defense.

91203215

05/17/2012 BOARD`S COMMUNICATION N Applicant’s motion to dismiss dilution claim granted (opposer failed to allege when its mark became famous) and Opposer given time to amend. Applicant’s time to answer suspended until after Opposer’s amended pleading is filed.

91197669

05/14/2012 DATES REMAIN AS PREVIOUSLY SET N Applicant (pro se) moved to extend discovery for 60 days. Board denied the motion: “The Board finds that applicant’s motion to extend is vague and provides no detailed factual information. In particular, applicant has not provided any specific information about what discovery was taken during the nearly 10 month discovery period, why the necessary discovery was not or could not be completed during the time already allotted, and what discovery remains uncompleted and outstanding, so as to support an extension of the discovery period. With regard to the taking of depositions, applicant has not explained his efforts to complete the depositions prior to proceedings being suspended for withdrawal of counsel, nor has he explained his efforts to schedule and complete the depositions after proceedings resumed in January 2012”

91194716

05/14/2012 D`S MOTION FOR SJ GRANTED IN PART; DENIED IN PART N Applicant’s Marks: GOTHAM BATMAN and GOTHAM BATMAN & Design for use with  “general business networking referral services, namely, promoting the goods and services of others by passing business leads and referrals among group members” in International Class 35 and “entertainment in the nature of amateur softball games” in International Class 41.DC Comics opposed. The parties cross-moved for summary judgment on 2(d) grounds, which Board denied: there is a genuine dispute of material fact as to whether applicant’s marks would be perceived as a parody.  We also find that there are genuine disputes of material fact as to the relatedness of the parties’ respective goods and services and the channels of trade of such goods and services. As to dilution, Applicant claimed that its mark was a parody and thus avoided any claim of dilution, but Board was not convinced: “Under the statute’s plain language, parodying a famous mark is protected by the fair use exclusion only if the parody is not “a designation of source for the person’s own goods or services.”  Here, applicant is clearly using its GOTHAM BATMEN and GOTHAM BATMEN and design marks as source indicators for its identified services.  Accordingly, the parody exclusion under Section 43(c)(3) of the Trademark Act is not applicable in this case.” But Board denied the MSJ finding “there is a genuine dispute as to whether applicant’s marks would be viewed by the consuming public as a parody, as applicant asserts.”Applicant also moved to dismiss the claim of lack of bona fide intent to use the mark and, of course, the Board found genuine disputes of material fact as to whether Applicant had bona fide intent to use its mark with networking services. But the Board found “that applicant is entitled to judgment in its favor as a matter of law with respect to opposer’s claim of lack of bona fide use as of the filing date of applicant’s applications solely in regard to applicant’s recited entertainment services in the nature of amateur softball games.” Use of the mark in connection with the rendering of free services still constitutes use in commerce under the Trademark Act.

91186397

05/16/2012 MOTION FOR SUMMARY JUDGEMENT GRANTED IN PART N Opposer moved for summary judgment on Applicant’s claim that Opposer’s SUSTAIN is a phantom mark ;Applicant’s claim that SUSTAIN is merely descriptive; and Opposer’s claim of priority and likelihood of confusion. Applicant’s phantom mark claim denied as the applied for mark does not include a blank or dashed line or a placeholder of any kind. Applicant’s descriptiveness claim denied as Applicant’s 2 other registrations containing the SUSTAIN term were issued more than 5 years ago and without any disclaimer. As to the MSJ on grounds of priority and likelihood of confusion, Board denied, finding material facts in dispute

91182207

05/16/2012 MOTION TO DISMISS COUNTERCLAIM DENIED Y Plaintiff’s motion to dismiss counterclaim for partial cancellation under FRCP 12(b)(6) denied. Defendant seeks partial cancellation of J&J’s registration as to three goods. “We find the counterclaim is sufficient as a claim of partial abandonment, which does not require any reference to avoidance of a likelihood of confusion.  [Defendant] has sufficiently pleaded a ground for partial cancellation by alleging abandonment of the mark as to particular goods through nonuse with no intent to resume use.”Disclosure: Our firm represents Applicant in this matter.

91184936

05/17/2012 MTN TO SUSPEND DENIED; TRIAL DATES RESET N Motion to suspend the proceeding (again after multiple stipulations over approx. 4 years) denied as not containing the required detail report on the progress of negotiations. “No further extension of time or suspension of this proceeding will be granted for the purposes of settlement without a showing of extraordinary circumstances.”

91182155

05/15/2012 P`S MTN TO AMEND PLEADING GRANTED; TRIAL DATES RESET; APPLICANT TO FILE AMENDED ANSWER N Opposer’s motion to amend its notice of opposition to remove a cancelled registration and add a recently issued registration is granted as the Board found no substantial prejudice to Applicant. To mitigate any possible harm to Applicant, discovery reopened solely for Application for 30 days to conduct discovery regarding any issues regarding the newly pleaded registration.

91166060

05/17/2012 SUSPENDED AND APPLICATION REMANDED TO EXAMINER N Regarding state of Montana’s opposition to “THE LAST BEST PLACE: “Congress has continued to include, in appropriations legislation, clear prohibitions on the expenditure of funds to register or enforce marks that include the phrase “Last Best Place.” Accordingly, the USPTO has issued refusals of registration to applicant in those applications not before the Board in these oppositions.  These oppositions shall remain suspended and the involved applications are remanded to the trademark examining attorney for further action consistent with the appropriations legislation of the Congress.”05/22/2012 Office Action: http://tdr.uspto.gov/jsp/DocumentViewPage.jsp?78463754/OOA20120522183709/Offc%20Action%20Outgoing/2/22-May-2012/sn/false#p=1

92052908

05/14/2012 PROCEEDINGS RESUMED N Respondent moved to dismiss the amended pleading of fraud under FRCP 12(b)(6) is denied.

94002437

05/18/2012 PROCEEDINGS RESUMED N The parties’ “Consent and Concurrent Use Agreement” is accepted.

91186025

05/20/2012 PROCEEDINGS RESUMED N Applicant moved to dismiss for failure to prosecute under Rule 2.132(a) and moved to strike Opposer’s pretrial disclosures. Opposer failed to take testimony or submit any evidence during testimony period, and failed to timely serve pretrial disclosures. After pro se Opposer’s testimony and pretrial disclosure deadlines had passed, Opposer served on applicant docs captions ‘pretrial disclosures.’ Applicant’s motion to strike the ‘pretrial disclosures’ is granted, but motion to dismiss denied – Opposer’s pleaded registration establish standing and priority and make out a prima facie case.

91201968

05/16/2012 PROCEEDINGS RESUMED N Applicant moved to “de-designate” certain documents produced by Opposer. Applicant’s motion granted to the extent that emails to customers are re-designated “confidential” rather than “highly confidential.” Opposer moved to compel production of “the identity of and contact information for applicant’s third-party service provider that is in possession of applicant’s emails, asserting, inter alia, that applicant has not produced certain emails from the 2006 – 2007 time period which opposer believes to exist.” Board denied the motion as premature-  4 months of discovery remained – as presuming the applicant’s production and/or supplementation is or will be decifient.

91204005

05/15/2012 PROCEEDINGS RESUMED N Applicant (STARZ ENERGY) brought a 12(b)(6) Motion to dismiss the opposition based on ROCKSTAR energy’s marks. Board dismissed the motion finding the pleading sufficient. Further, applicant’s allegations the Opposer is not the owner of the pleaded marks is an impermissible collateral attached which may only be raised by way of a counterclaim or separate petition to cancel.
Tagged

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

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

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

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

Proceeding No.

Document Date

Board Disposition

Precedent?

Notes

94002402

05/08/2012 BD`S DECISION: FAVORABLE TO APPLICANT N Concurrent use agreement and amendment accepted.

77308779

05/07/2012 BOARD`S DECISION: AFFIRMED N Prior Board opinion (a) vacated as to 1 cited registration that was cancelled for failure to renew, and (b) modified and affirmed as to the other cited registration.

77408993

05/07/2012 BOARD`S DECISION: AFFIRMED N Refusal of GAME FACE for protective face masks used with several sports under Section 2(d) as likely to be confused with registrations for GAME FACE and GAME FACE & Design for “goggles for use in paintball activities” was affirmed.  Evidence Applicant submitted for the first time in its brief not considered, nor was reference to 3 websites for the first time in the brief.

79063620

05/09/2012 BOARD`S DECISION: AFFIRMED N Application for LION GLOBAL INVESTORS & Design for investment services refused under Sect. 2(d) as likely to cause confusion with LION CAPITAL and LION (same owner) for investment services. Board affirmed the refusal: “While the degree of care factor weighs in favor of applicant, it is not sufficient to outweigh the other factors.”

85066363

05/08/2012 BOARD`S DECISION: AFFIRMED N Application for THE HIGHLINER for ‘restaurant services’ refused under Sect. 2(d) due to likelihood of confusion with HIGHLINER COFFEE CO for ‘café services; and carryout restaurant services featuring coffee, candy and baked goods.’  Board affirmed the refusal: “The fact that the services fall in different international classes does not affect the likelihood of confusion analysis.  The language in the recitation of services, not classification, controls our analysis.”

77701886

05/10/2012 BOARD`S DEC: AFFD IN PART/RVRSD IN PART N 3M appealed refusals of 2 configurations of holders for s “hand-sanitizing antiseptic with moisturizers” on (i) 2(e)(5) ‘functional’  grounds and, alternatively, (ii) they do function as trademarks and have not acquired distinctiveness under 2(f), and (iii) the description of the mark was inadequate.As to functionality:–    “we are not persuaded that the existence of applicant’s utility patents involving the dispenser and its nozzle weighs in favor of finding the proposed dispenser configuration marks as being functional”–    “we find that the examining attorney has not met his burden in establishing a prima facie case that the dispenser configuration marks are functional and, thus, are not registrable on that basis.  While there is some evidence that the shape of the dispenser’s nozzle in the proposed marks may have some utilitarian value, it does not follow that the entire mark is necessarily functional”Regarding acquired distinctiveness:

–    Some of Applicant’s evidence was unspecific and/or unsupported by declarants with personal knowledge, but there was no evidence contradicting the statements and examining attorney did not object to them.

–    Regardless, the Board found “the record does not establish that the dispenser configuration marks have acquired distinctiveness”

–    “Remarkably, there is no evidence showing the number of dispensers sold or dollar figures for such sales.  Likewise, there is no evidence regarding advertising figures and the degree of advertising efforts made to associate applicant’s proposed dispenser configuration marks with the identified goods.”

Regarding the description of the mark

–    “We find that applicant’s descriptions of the marks, as amended and currently reflected in the application, provide accurate characterizations of the marks.  In view of the foregoing, the examining attorney’s requirement for acceptable descriptions of the marks is not well-taken and the refusal to register the marks based thereon is reversed.”

91199964

05/11/2012 RESPONSE DUE 30 DAYS (DUE DATE) N Applicant’s proposed amendment to its goods denied as an impermissible expansion of the scope. Applicant’s proposed amendment to the drawing of the mark denied. If applicant is proposing to add “Standard No.” wording to the mark it must show that “such matter constitutes either informational or genericmatter such that a material alteration will not result fromits addition..”

92051212

05/10/2012 TRIAL DATES RESET N Respondent’s unconsented motion to amend its identification deferred consideration until final hearing.

92053837

05/09/2012 TRIAL DATES RESET N Petitioner’s motion to compel the attendance of four witnesses of respondent granted.

91182644

05/07/2012 BOARD`S DECISION: DISMISSED N Fruit of the Loom opposed registration of BODY FRUIT for “footwear; headwear; jackets; pants; shirts; shorts; sweat shirts; undergarments; coats; tank tops” on grounds of: 2(d); dilution; and lack of bona fide intent to use. Applicant submitted no evidence and no brief. Opposer’s marks found strong and inherently distinctive, but Opposer did not successfully prove its marks famous for 2(d) purposes. (“[I]mportantly, opposer provides no context by which we may ascertain opposer’s market share vis a vis other manufacturers of the goods identified in its pleaded registrations.  As a result, it is impossible to determine, for example, how its sales or advertising expenditures compare to those of its competitors such that we may conclude therefrom that opposer’s pleaded marks are famous.”) However, overall the Board found the marks more similar than dissimilar and sustained the opposition.

92023939

05/10/2012 BOARD`S DECISION: DISMISSED N In a petition to cancel MODEL AMERICAN on ground of abandonment filed on May 15, 1995, much of the testimony was more than 10 years old. Declaration evidence stricken: “absent a stipulation, a party may not simply submit a declaration, which does not entitle the other party to cross-examination or even objection.” While respondent was in bankruptcy for some time, it showed evidence of a valid license of its mark. Petitioner claimed that the sub-licensee was not using the mark for the goods in the registration, namely “computer utility program.” Finding the definition of the phrase unclear, the Board found Petitioner did not meet its burden to prove abandonment. And even if it had found that Respondent did not use the mark for a 3 year period, “we still would find that at all relevant times Respondent intended to resume use of the mark,” evidence of which included the renewal filings of the USPTO trademark registration.

92050860

05/08/2012 BOARD`S DECISION: DISMISSED N Petition to Cancel “AMERICA’S STRONGEST MAN” on the supplemental register brought under Section 2(d) by owner of “WORLD’S STRONGEST MAN” registered on the principal register under Section 2(f). The only evidence introduced by Petitioner was its registration. Respondent submitted no evidence; the registration file is automatically of record. “We find that the parties’ marks, unlike their contestants, are weak.” The board found no likelihood of confusion: “we find that these marks have different connotations or commercial impressions and the dissimilarities outweigh the similarities.   In conclusion, based on this very sparse record, we find that petitioner has not carried its burden of proof and respondent’s mark is sufficiently dissimilar to petitioner’s mark so as to make confusion unlikely.”

92051140

05/11/2012 BOARD`S ORDER TRIAL DATES RESET N Respondent moved to strike petitioner’s notice of reliance. Motion granted as to petitioner’s discovery response and documents produced therewith; documents produced by respondent in response to discovery requests; notices of intent to take depositions. Motion denied as to respondent’s discovery requests noting that no documents exist.

91200036

05/08/2012 BOARD`S ORDER TRIAL DATES RESET N Applicant’s motion to set aside notice of default judgment granted: “the Board does not find applicant’s delay to be the result of willful or grossly negligent conduct. Further, because the law favors deciding cases on their merits, the Board is reluctant to grant judgments of default and tends to resolve all doubts by setting aside default, particularly when a proceeding is at such an early stage as is the case here.”

91199483

05/07/2012 CONSOLIDATED; SUSPENDED PENDING DISP OF CIVIL ACTION N Proceedings consolidated and suspended pending civil action

92053712

05/07/2012 CONSOLIDATED; TRIAL DATES RESET N Defendant moved to amend its answer and add affirmative defenses along with counterclaims of non-ownership and fraud, contending that it learned of the basis for the changes during the deposition of petitioner. Respondent’s counterclaim of fraud found to be sufficiently pleaded as to two of Petitioner’s registrations. Respondent’ counterclaim of fraud as to the other registration predicated on erroneous dates of use was denied as legally insufficient. The Board also admonished the parties and counsel: “the conduct of this proceeding by both parties remains unsatisfactory and inappropriate for attorneys who should be focused on advancing determination of a case on its merits not disposition through attempts to frustrate and annoy each other.” And parties barred from filing unconsented motions without permission from the Board: “parties are barred from filing any unconsented motion without the express permission of the Board.”

91178229

05/09/2012 MOTION TO COMPEL; GRANTED; PROCEEDINGS RESUMED; TRIAL DATES RESET N Opposer’s motion to compel granted; discovery requests had been served in 2007 and the Motion to compel had been filed in September 2007 just after Applicant moved for extension of time to file answer.  Note: did Opposer serve its discovery before an answer was even due? Case was filed under old Rules of the Board.

91200673

05/11/2012 MOTION TO COMPEL; GRANTED; TRIAL DATES RESET N Opposer’s motions to compel regarding interrogatories and document requests is granted as conceded. Opposer’s 2nd motion to compel, filed after suspension for consideration of the 1st motion, given no consideration.

92054049

05/11/2012 PROCEEDINGS RESUMED N Respondent’s motion for a more definite statement was granted as grounds claimed by Petitioner were vague. Petitioner’s motion for sanctions was deemed moot.

92054551

05/10/2012 PROCEEDINGS RESUMED N Respondent’s motion for sanctions denied. But Board noted that “petitioner is hereby put on notice that this proceeding is subject to dismissal with prejudice should he file any further papers containing personal attacks on respondent or that are deemed completely irrelevant to the merits of this proceeding.” Petitioner’s motion to compel moot as respondent served responses after the motion, and the responses were not attached to the reply so Board could not evaluate them. Board further cautioned petitioner: “Petitioner, who filed more than a thousand pages since the last Board order, is ordered to cease submitting copies of prior orders and filings in this proceeding as exhibits to motions; to cease making arguments or submitting evidence regarding respondent’s use or registration of his unrelated PANDA marks; and to cease arguing the merits of past Board orders. Any paper filed by petitioner which includes documents already of record, or refers to respondent’s unrelated marks, or argues the merits of past orders, will be refused consideration.  To be clear, if a filing by petitioner violates any of these prohibitions, in its text or in attachments thereto, the entirety of the filing shall be refused consideration.”The Board also barred the parties from filing any unconsented motion without express permission from the Board. “Effective immediately, respondent is ordered to cease unsubstantiated allegations that petitioner falsified certificates of service.  Petitioner provided tracking information indicating refusal of delivery by FedEx courier at respondent’s address of record.” And ‘both parties are ordered to supplement their service of papers with a phone call made the same day of service to the receiving party to notify them that papers have been served”.”

91198414

05/11/2012 PROCEEDINGS RESUMED N Opposer’s motion to compel denied: “In view of opposer’s unexplained five-month delay in acting following applicant’s supplemental discovery, the excessive number of discovery requests at issue in opposer’s motion, and the lack of legal support establishing discoverability of the information and documents sought by those interrogatories and document requests, the Board finds that opposer failed to make a good faith effort to resolve the parties’ discovery dispute prior to seeking Board intervention.”
Tagged

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

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

Several interesting decisions are highlighted in bold.

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

Proceeding No.

Date

Board Disposition

Precedent?

Notes

77860835

05/01/2012 BD`S DECISION SET ASIDE

N

Apple has sought registration of ITUNES LP without disclaimer of “LP.” The Board previously upheld the disclaimer requirement. Applicant subsequently submitted a disclaimer and thus the decision is set aside and the mark will proceed to publication.

91200728

04/30/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED

N

Opposer’s Mark: JUST & Design for food and cosmetic products. Applicant’s Mark: JUST BEE & Design. Applicant’s Motion for Summary Judgment denied because at a minimum “there exists a genuine dispute of material fact as to the degree of similarity, if any, of the parties’ marks and the relevant goods, and the scope of protection to be afforded opposer’s marks.” The Board affirmed the disclaimer requirement: “In view of the foregoing and the evidence in the record, the examining attorney has established that “recycled paper” refers to a sub-genus of goods within the genus of greeting cards.  As such, “recycled paper” is generic for greeting cards composed of recycled paper.”

77252690

05/04/2012 BOARD`S DECISION: AFFIRMED

N

Issue on ex parte appeal was whether Applicant had to disclaim “RECYCLED PAPER” portion of three marks. Applicant applied for the marks under Section 2(f) claiming acquired distinctiveness – and conceding descriptiveness – but still must disclaim any generic wording. Disclaimer requirement affirmed.

77651154

04/30/2012 BOARD`S DECISION: AFFIRMED

N

Application for DA VINCI for clothing was refused under Sect. 2(d) as likely to be confused with the registered marks DON DAVINCI for variety of clothing and L’IL DAVINCI for variety of apparel. In affirming the refusal, the Board noted the overlap between the goods, that all three share a commercial impression of Leonardo Da Vinci, and distinguished the third party registrations: ‘all four of the third-party DAVINCI marks incorporate other matter that serves to distinguish them from each other, as opposed to applicant’s mark which does not, other than a space, which as discussed above does not serve as a distinction.”

77767314

04/30/2012 BOARD`S DECISION: AFFIRMED

N

Application for ACTIVLASH for “eyelash conditioner” refused under Sect. 2(d) as likely to be confused with ACTILASH registered for “cosmetic preparations for eye lashes.” In affirming the refusal, the Board found the goods identical or overlapping, and the marks extremely similar in appearance. “With regard to connotation, consumers are likely to view the prefix ACTI in the cited mark as referring to “active,” a meaning reinforced by the registrant’s company’s name, Active Organics.”

77820474

04/30/2012 BOARD`S DECISION: AFFIRMED

N

Application for a stylized “X” for video game hardware and services refused under Sect. 2(d) with: X (standard character) for video game hardware and software, and with X (standard character) for online game services. “Applicant’s and registrant’s marks are legally identical” since Applicant’s mark could be displayed in any manner, and are pronounced the same. Even following the cited registrant’s cancellation of its registration in class 9, the Board affirmed the refusal as to all of Applicant’s goods and service.

78863190

05/04/2012 BOARD`S DECISION: AFFIRMED

N

Applicant (Microsoft) appealed refusal of WINDOWS RALLY for software on several grounds – ID amendment that exceeded scope of earlier ID; specimen; refusal to provide information about the goods; and disclaimer of ‘WINDOWS.’–    Identification: Refusal affirmed “because the addition of “computer software platform” and “computer software development tools” includes functionality that exceeds the existing identification, the amendment is beyond the scope of the identification.  –    Specimen: refusal affirmed as mark not shown in connection with the applied for goods

–    Request for Information: Refusal affirmed because the information requested by examiner was relevant, and the request was not fully complied with by Applicant

–    Disclaimer of “WINDOWS”: refusal affirmed: e are persuaded by the evidence of record that the phrase WINDOWS is merely descriptive of applicant’s goods, as identified in the last acceptable identification, in that the term immediately describes a significant feature of the goods, namely that they include a GUI that features windows.”

85104508

05/01/2012 BOARD`S DECISION: AFFIRMED

N

Refusal of LA CASITA MEXICAN GRILL for “restaurant services” under Section 2(d) due to likelihood of confusion with registrations LA CASITA MEXICANA for restaurant services. Finding “LA CASITA” to be the part of the mark with source-identifying significance and to be identical in the marks. Board dismissed relevance of a third party with registrations of LA CASITA CHILANGA and LA CASITA CHILANGA RESTAURANT also for restaurant services. Board noted that different geographic locations, a claim cited by Applicant, are irrelevant since this is not a concurrent use proceeding.Note that the Board also affirmed requirement of applicant to submit $50 fee because the TEAS Plus application did not include a translation.

77723599

05/04/2012 BOARD`S DECISION: REVERSED

N

Appeal of “deceptively misdescritptive” refusal under 2(e)(1) of TATER DOG for ““freshly prepared sandwich consisting of meat with or without condiments inserted into the hollowed cavity of an edible bread roll” was refused. Applicant “confirmed that his sandwich basically comprises a hot dog inserted into a hollowed cavity of a potato roll; according to applicant, the hot dog product is designed to minimize condiment spills.” The Board reversed the refusal, finding the mark “just suggestive.”Interesting notes: Applicant was represented by the Vanderbilt Legal Clinic. For more on what a “Tater Dog” is, see Applicant’s website: http://www.thetaterdog.com/

91196105

05/02/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT

N

Following Opposer motion for summary judgment, Applicant moved for additional discovery under FRCP 56(d). Applicant’ motion granted in part. “[B]ecause opposer relies on quite limited evidence in support of its motion, and applicant is by this order allowed only limited discovery under Fed. R. Civ. P. 56(d), the Board is extremely wary of allowing open-ended or wide-ranging discovery on these limited topics” and “applicant’s Rule 56(d) discovery is limited to no more than 10 interrogatories, 10 requests for production of documents and 10 requests for admission”

91201070

05/04/2012 RESPONSE DUE 30 DAYS (DUE DATE)

N

Following Applicant’s motion for summary judgment, Opposer filed a 56(d) motion for additional discovery. Specifically opposer sought to depose the applicants, one who had provided a declaration in support of the MSJ and one who had not. Finding that “this is a run-of-the-mill likelihood of confusion case made even more uncomplicated because the involved application is based on intent to use, rather than actual use,” the Board denied the motion.

91202150

04/30/2012 TRIAL DATES RESET

N

On 12/14/2011, Board issued a show cause order regarding Applicant’s lack of answer. On 01/17/2012, Applicant filed a response and moved to extend the time to answer. The notice of default was set aside by the Board as Applicant found to have shown good cause and “The record thus far does not evidence evasive conduct, bad faith or gamesmanship on applicant’s part, and does not suggest that the failure to timely answer was the result of willful behavior or inattentiveness to this proceeding.”

91203255

05/01/2012 TRIAL DATES RESET

N

Opposer moved for default judgment based on applicant’s failure to file an answer by the date set in parties’ earlier stipulation and an earlier Board order. Applicant stated it believe settlement negotiations were ongoing. Finding no prejudice to Opposer, the Board dismissed the motion.

91178996

04/30/2012 BOARD`S DECISION: DISMISSED

N

Applicant’s mark: BENCHMARK RELIANCE for “issuance and administration of annuities.” Opposer’s mark: RELIANCE STANDARD for insurance underwriting and issuance of annuities.Although it was unpleaded, Opposer also claimed use of “Reliance” by itself as a mark; Applicant found to have tried the issue by consent. Applicant introduced third party evidence showing use of “Reliance” during testimony. Opposer objected that the materials were within the scope of a request for production and that no such documents were produced during discovery. While Applicant did not timely supplement, Opposer was not prejudiced, and the documents were permitted by the Board. Applicant’s counterclaim for fraud failed due to lack of “clear and convincing” evidence regarding Opposer’s intent.Opposer’s claims regarding the term “Reliance” alone failed because it failed to prove priority of use as a trade name or service mark prior Applicant’s priority date.

Finding: Opposition dismissed based on “the lack of any reported instances of actual confusion is relevant because there has been a reasonable opportunity for confusion to have occurred;” a high degree of care exercised by consumers; and differences between the marks.

91178953

05/02/2012 BD`S DECISION: DISMISSED W/ PREJUDICE

N

In a consolidated Opposition regarding numerous ____ ZERO marks including COKE ZERO, the issue was whether the marks, which were published with a claim of acquired distinctiveness of “ZERO” under Section 2(f), had indeed acquired distinctiveness. The descriptiveness of the mark was conceded by Coca-Cola when it selected 2(f). Board found that while “zero” is common in the beverage industry, Coca-Cola’s use of ZERO is so huge and extensive that it qualifies as “substantially exclusive” even though others have used it.  As to the timing of relevant evidence, “The filing date or even the publication date is not a cutoff for any evidence developing after that time.  Evidence of sales and advertising after the filing date of the application will be considered.”

91179951

04/30/2012 BD`S DECISION: DISMISSED W/ PREJUDICE

?

Decision not available on TTABvue: http://ttabvue.uspto.gov/ttabvue/v?pno=91179951

91189499

05/04/2012 BOARD`S DECISION: SUSTAINED

N

Applicant’s mark: FANTRIP for travel agency services. Opposer’s mark: common law use of ‘Fan Trips’ for travel agency services. Opposer claim grounds under 2(d) and 2(e)(1).Evidentiary issues:— Opposer’s motion to strike applicant’s testimony exhibits consisting of applicant’s discovery responses was granted: “Trademark Rule 2.120(j)(5) provides that an answer to an interrogatory or a response to a request for admission may be submitted and made part of the record by only the inquiring party, except in limited circumstances.”

— Opposer’s interrogatory response have no probative value since they were unverified by Opposer.

— Declarations submitted by Opposer in rebuttal testimony were deemed not admissible.

Substantive Issues: Board found Applicant’s FANTRIP mark descriptive. As a result, the board did not reach the issue of likelihood of confusion and sustained the opposition.

91179108

04/30/2012 BOARD`S COMMUNICATION

N

Opposer moved to compel discovery. Board already issued judgment last year on issue of priority and likelihood of confusion. Motion granted as to interrogatories related to dilution; Motion denied as to document requests at issue since Oppose did not identify which of the requests pertained to the remaining ground of dilution.

91202567

05/02/2012 BOARD`S ORDER MOTION DEFERRED TRIAL DATES REMAIN AS RESET

N

Applicant moved, without opposer’s consent, to restrict its identification. Board deferred decision on the proposed amendment until final decision or motion for summary judgment.

91192645

05/01/2012 BOARD`S ORDER OPPOSER`S MOTION TO COMPEL IS DENIED TRIAL DATES ARE RESET

N

Cross-motions to compel depositions denied by the Board: neither party has demonstrated the requisite good faith effort to support their respective motions to compel.” But Board also ordered both parties to make their witnesses available within 30 days or face sanction (essentially granting the motions).

91153147

04/30/2012 ORDER ON REBUTTAL TESTIMONIAL DEPOSITIONS

N

Opposer’s motion to reschedule noticed rebuttal witness testimony depositions from applicant granted in part.

91201263

05/01/2012 P`S MOT. TO EXTEND GRANTED; TRIAL DATES RESET

N

Opposer’s motion to extend discovery granted as it was uncontested by Applicant.

92051849

05/04/2012 PROCEEDINGS RESUMED

N

Respondent moved to quash deposition of respondent. Petitioner cross-moved to take foreign deposition orally. Petitioner’s motion to take foreign deposition orally granted as Board was not pleased with behavior of respondent or its former counsel: “especially since respondent formally admitted shortly after the email exchange ended that Mr. Rosen is a managing partner of respondent, that Mr. Rosen resides in the United States, and that Mr. Rosen has a place of business in the United States.” Respondent’s behavior was also deemed to be sanctionable, ordering respondent “to (1) serve, within thirty days of the mailing date of this order, complete responses to discovery, without objection, as compelled by the Board’s August 31, 2011 order; (2) serve, within thirty days of the mailing date of this order, its initial disclosures upon petitioner; (3) make available, within sixty days of the mailing date of this order, its managing partner James Rosen for a discovery deposition under Fed. R. Civ. P. 30(b)(1) within the Federal judicial district where he resides or is regularly employed, or at some other location to which the parties agree; and (4) make available, within sixty days of the mailing date of this order, its Fed. R. Civ. P. 30(b)(6) witness for an oral deposition either in the Cayman Islands or at some other location to which the parties agree.  As further sanctions, respondent (5) may not suspend or extend its time for complying with its written discovery, disclosure, or deposition obligations under this order, except with the consent of petitioner; (6) may not file any paper in this proceeding without first telephoning the Board, at 571-272 9467, to obtain permission for making the filing; (7) must provide, within thirty days of the mailing date of this order, the Board and petitioner with Mr. Rosen’s current telephone number; and (8) must be prepared to participate in a telephone conference with petitioner and the Board to resolve any future issues that may arise in this case and that are determined by the Board to be appropriate for resolution by telephone.”
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