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Mar 02 2012
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TTAB Decisions

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

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

Several important and interesting decisions or interesting procedural and discovery issues are highlighted in bold.

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

Proceeding No.

Date

TTAB Disposition

Precedent?

Notes

91197030

02/24/2012

PLAIN`S MOT. FOR SUMMARY JUDGMENT GRANTED

N

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

76693637

02/24/2012

BOARD`S DECISION: AFFIRMED

N

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

77522433

02/22/2012

BOARD`S DECISION: AFFIRMED

Y

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

77724746

02/22/2012

BOARD`S DECISION: AFFIRMED

N

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

Decision: refusal affirmed

77784815

02/22/2012

BOARD`S DECISION: AFFIRMED

N

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

85017693

02/21/2012

BOARD`S DECISION: AFFIRMED

N

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

Decision: Refusal Affirmed

92053724

02/21/2012

RECONSIDERATION DENIED

N

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

92053982

02/23/2012

RECONSIDERATION DENIED

N

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

91196299

02/23/2012

SUSPENDED PENDING DISP OF OUTSTNDNG MOT

N

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

91190899

02/23/2012

RESPONSE DUE 30 DAYS (DUE DATE)

N

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

91200645

02/21/2012

RESPONSE DUE 30 DAYS (DUE DATE)

N

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

91200818

02/23/2012

RESPONSE DUE 30 DAYS (DUE DATE)

N

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

92050787

02/23/2012

TRIAL DATES RESET

N

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

92053298

02/24/2012

TRIAL DATES RESET

N

 Respondent’s motion to extend time to answer granted.

92053789

02/21/2012

TRIAL DATES RESET

N

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

91199381

02/22/2012

TRIAL DATES RESET

N

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

91201386

02/22/2012

TRIAL DATES RESET

N

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

91201529

02/23/2012

TRIAL DATES RESET

N

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

91181440

02/21/2012

BOARD`S DECISION: DISMISSED

N

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

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

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

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

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

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

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

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

91199336

02/24/2012

BOARD`S DECISION: DISMISSED

N

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

91185011

02/23/2012

BD`S DECISION: DISMISSED W/ PREJUDICE

N

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

92049692

02/22/2012

BOARD`S DECISION: GRANTED

Y

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

92054628

02/23/2012

BOARD`S DECISION: GRANTED

N

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

91161363

02/22/2012

MOTION TO AMEND GRANTED

N

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

91194906

02/22/2012

PROCEEDINGS RESUMED

N

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

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

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

Several important and interesting decisions or interesting procedural and discovery issues are highlighted in bold.

Here is a rundown of the activity of note from the TTAB in the last week (click link on TTAB action to open Board opinion):

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

Recent TTAB decisions & activity of note

Last week (2/04 – 2/12), the TTAB issued several final decisions and numerous discovery and other procedural rulings.

Several important and interesting decisions on procedural and discovery issues are highlighted in bold.

Here is a rundown of the activity of note from the TTAB in the last week (click link on TTAB action to open Board opinion):

Proceeding No. Date TTAB Action Precedent?

Notes
91196216 OPP 2/8/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED n Variety of motions decided in Opposition to OXIMIZE (Class 5 goods) based on OXY (acne medication); Applicant’s motion to amend identification denied as not limiting in scope; Opposer’s motion for leave to file  amended notice of opposition granted but amended fraud claim still found lacking required specificity and Opposer allowed to file second amended notice of Opposition; Applicant’s request to have OXY found to be generic denied as in improperly raised collateral attack that can only be raised by counterclaim and b/c these grounds existed at the time of filing the answer they would not be untimely; Applicant’s MSJ denied.
91200255 OPP 2/8/2012 DEF`S MOTION FOR SUMMARY JUDGMENT DENIED n Applicant’s MSJ on issue of collateral estoppel denied; prior Opposition was for SOY BUENO mark, current Opposition is for BIEN BIENO & Design
94002248 CNU 2/10/2012 BD`S DECISION: FAVORABLE TO APPLICANT n Applicant’s request for a concurrent use registration granted ater the named excepted user defaulted and Applicant demonstrated that concurrent use of its mark is not likely to lead to confusion, mistake or deception.
94002498 CNU 2/6/2012 BD`S DECISION: FAVORABLE TO APPLICANT n Concurrent use registrations granted “Based upon the parties’ Consent Agreement and Joint Motion, we find that concurrent use of the involved marks is not likely to cause confusion, mistake or deception under 15 U.S.C. § 1052(d).”
77256390 EXA 2/6/2012 BOARD`S DECISION: AFFIRMED n

Refusal of AIRESCUE (for ‘ “fixed wing aircraft medical service transport anywhere in the world’) as (i) generic and (ii) not shown to have acquired distinctiveness affirmed. While Board gave some weight to customers statements regarding non-genericness, the mark was found generic as it is the phonetic equivalent of AIR RESCUE; furthermore, Board found that   “in view of the highly descriptive nature of the term AIRESCUE, applicant’s evidence of acquired distinctiveness is insufficient to show that it has acquired distinctiveness.”
77600178 EXA 2/9/2012 BOARD`S DECISION: AFFIRMED n Refusal to register VENEERSTONE on the Supplemental Register for ‘decorative manufactured stone’ as generic affirmed
77899445 EXA 2/6/2012 BOARD`S DECISION: AFFIRMED n 2(d) refusal affirmed [Applicant: EVOLVE ADVANCED DIGITAL SOLUTIONS & Design for ‘Printing ink products, namely, inks, coating and varnishes, in Class 2; and Printing machines for commercial or industrial use, in Class 7; Cited Registration: EVOLUTION for variety of printing goods]
77911173 EXA 2/9/2012 BOARD`S DECISION: AFFIRMED n Disclaimer requirement for “MUNICH” in THE MUNICH & Design for a vareity of services due to geographic descriptiveness affirmed
77948331 EXA 2/6/2012 BOARD`S DECISION: AFFIRMED Descriptiveness refusal of JOHNNY VEGAS for “alcoholic beverages, namely, alcoholic cocktails containing tequila” is affirmed b/c it is the name of a specific cocktail featuring tequila.
92052522 CAN 2/10/2012 SUSPENDED PENDING DISP OF CIVIL ACTION n Proceeding suspended pending arbitration between the parties per the terms of a license agreement between the parties
91197936 OPP 2/7/2012 RESPONSE DUE 30 DAYS (DUE DATE) n Board denied consented motion to amend Applicant’s mark from ZURICH AWES FINANCIAL MANAGEMENT LIVE THE LIFE YOU LOVE & Design to LIVE THE LIFE YOU LOVE & Design denied as a material alteration 
91198908 OPP 2/8/2012 RESPONSE DUE 30 DAYS (DUE DATE) n Applicant’s Motion to Compel denied b/c applicant failed to satisfy his obligation to make a good faith effort to resolve issues prior to filing of the motion; Counsel for Applicant’s motion to withdraw as counsel denied for failure to comply with all the requirements
92053610 CAN 2/10/2012 TRIAL DATES RESET n Petitioner’s motion for relief from final judgment after it failed to respond to a Motion to Dismiss is granted along with Petitioner’s motion to amend its Petition to Cancel
92054913 CAN 2/10/2012 TRIAL DATES RESET n Petitioner’s Motion for Default is denied
91192456 OPP 2/8/2012 TRIAL DATES RESET n Motion to Suspend denied. After more than two years since the proceeding was instituted and with an answer yet to be filed, further suspension denied. (“This case is now well over two years old and the pleadings have yet to close.  Enough is enough, and therefore applicant’s motion to suspend, filed January 26, 2012, is hereby DENIED.”)
91200421 OPP 2/6/2012 TRIAL DATES RESET n Opposer’s motion to vacate Board’s order denied.
91200643 OPP 2/9/2012 TRIAL DATES RESET n Opposer’s motion to extend its deadline to respond to discovery by 60 days is granted with modification given exceptional circumstances and no evidence of neglect or bad faith by Opposer. [Note: Opposer mark is BUCK ROGERS.]
91161570 OPP 2/8/2012 BOARD`S DECISION: SUSTAINED n Consolidated Opposition and Cancellation proceedings (under old Board rules) related to SHUSTOFF for alcoholic beverages and SHUSTOV for alcholic beverages. Testimony deposition of an expert by Defendant stricken as applicant never supplemented discovery responses to identify the witness. Motion to strike Plaintiff’s testimony consisting of its  own discovery responses denied b/c the responses provided full context to responss submitted as testimony by Defendant. Defendant’s petition to cancel on grounds of fraud for lack of bona fide intent to use the mark at the time the application was filed is Denied. Defendant’s claim of abandonment denied as it was not raised until testimony, was not tried by consent, and was avaialble to Defendant earlier. Petition to Cancel granted.
91197241 OPP 2/9/2012 BOARD`S DECISION: SUSTAINED Y Opposition to TURFECTA (grass seen) based on TRIFECTA (lawn seed) sustained. Parties used ACR (with lengthy discussion on the procedure here and in general by the Board) with stipulations and shortened schedule. Objection to testimony declaration paragraphs referencing settlement discussion sustained as inadmissible under FRE 408. Finding Opposer’s mark arbitry, strong, and used for 25 yrs, and finding no evidence of any use of similar marks on similar goods, Board found that Opposer met its burden of showing a likelihood of confusion.
92053103 CAN 2/10/2012 BOARD`S DECISION: GRANTED n Stipulated motion to amend respondent’s registration from BAZARAC PAWN DESIGN to BAZARAC denied as a material alteration. Purusant to parties’ stipulation, the petition for cancellation is granted.
91193054 OPP 2/8/2012 CROSS-MOTIONS FOR SUMMARY JUDGEMENT DENIED n Cross-Motions for summary judgment denied. Board noted regarding evidence from Archive.org’s Wayback Machine “the Board has noted that internet archive and “Wayback Machine” documents are not self-authenticating, that such documents do not authenticate the pages in their historical record, and that a declarant often lacks the requisite personal knowledge to establish that the documents are what he proclaims them to be.  See Paris Glove of Canada Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1858-59 (TTAB 2007).”
92054059 CAN 2/10/2012 DEFENDENTS MOTION TO DISMISS GRANTED Y “Goats on a roof” LINK TO FULL POST
92054020 CAN 2/7/2012 D`S MOTION TO DISMISS DENIED; TRIAL DATES RESET n Defendant’s Motion to Dismiss amended petition to cancel denied; Petitioner properly set forth grounds alleging fraud given on allegation that at the time Defendant filed its underlying application, it knew it did not have the exclusive right to use the mark.
92053547 CAN 2/7/2012 MOTION TO DISMISS; DENIED; PROCEEDINGS RESUMED; TRIAL DATES RESET n Defendant’s Motion to Dismiss for failure to state a claim upon which relief may be granted denied. Petitioner cannot bring 2(d) claim against registration that is more than 5 yrs old., but Board finds that “that petitioner has sufficiently pled misrepresentation of source under section 14(3)” as well as claim of fraud.
91202757 OPP 2/10/2012 P`S MOTION TO STRIKE GRANTED, IN PART, DENIED, IN PART; TRIAL DATES RESET n Opposer’s motion to strike affirmative defenses granted in part. Defense alleged of  laches, acquiescence and estoppel stricken. Board also found that Opposer’s misrepresntation of source claim under Section 14(3) improperly pleaded and give Opposer time to submit amended pleading.
91198943 OPP 2/7/2012 RESPONSE DUE IN (10) DAYS  n Plaintiff’s motion to defer cross-motion for summary judgment at not germane denied.
92052556 CAN 2/10/2012 PROCEEDINGS RESUMED  Motion to Compel denied given Plaintiff’s failure to make a good faith effort to resolve the discovery issues before motion.
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Feb 14 2012
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TTAB Decisions

“Goats on a roof” trademark survives petition for cancellation

One of my favorite non-traditional trademarks is for “goats on a roof”.  Having “building décor with a roof comprised of grass and bearing several goats on the roof” is registered for restaurant services and for retail on and online retail store services featuring gifts, food and clothing. The registration is owned by Al Johnson’s Swedish Restaurant and Butik. The “drawing” of the mark in Registration No. 2007624 looks like this:

Robert Doyle petitioned to cancel the registration’s owned by Al Johnson’s Swedish Restaurant and Butik. Doyle essentially claimed the mark was functional since it helped keep the temperature lower below. Al Johnson’s brought a motion to dismiss for failure to state a claim.

The Board ruled that Petitioner did not properly allege standing. Petitioner claimed an interest in taking photographs. The Board noted that

While respondent’s Registrations might prevent petitioner from using any photographs of goats on sod roofs as a service mark in connection with restaurant or gift shop services, or related services, petitioner has not alleged that he uses or wants to use the desired photographs in such a manner, or that he has any right to do so…. In short, petitioner alleges that he wants to take photographs of goats on roofs, but does not allege that anything about respondent’s mark or Registrations prevents him from doing so.

The Board also found that the functionality claim, as alleged, had no merit

[W]hile petitioner alleges that respondent’s goats and sod roof affect respondent’s costs, by reducing respondent’s energy and mowing expenses, this allegation is
not specific, and is in fact completely unrelated, to restaurant or gift shop services.

Therefore, the Board dismissed the claims in a precedential opinion. See here for full opinion. However, Petitioner has 20 days to file an amended Petition for cancellation that properly alleges standing and a claim regarding functionality. The Board also took an unusual step of noting that the “Petitioner should also be aware of the extreme difficulties he would likely face in ultimately proving that respondent’s mark is functional.”

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Feb 10 2012
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TTAB Decisions

Recent TTAB Decisions & Activity of Note

Last week (1/31 – 2/03), the TTAB issued several final decisions and also issued several discovery and other procedural rulings.

Several important and interesting decisions on procedural and discovery issues are highlighted in bold.

Here is a rundown of the activity of note from the TTAB in the last week (click link on TTAB action to open Board opinion):

Proceeding Number Date  TTAB Action (click link to open PFD from TTABvue) Precedent Notes

 
77704628 EXA 1/30/2012 BOARD`S DECISION: AFFIRMED n Refusal to register DOMINANT BUCKS as descriptive affirmed
77803520 EXA 2/1/2012 BOARD`S DECISION: AFFIRMED n ORTHOROBITS for ‘medical surgery’ descriptiveness refusal affirmed
77907213 EXA 1/31/2012 BOARD`S DECISION: AFFIRMED n
refusal of YOUR PATHWAY TO SUCCESS ( “estate planning; financial planning; financial planning for retirement; insurance information and consultancy”) under Sect 2(d) with PATHWAYS TO SUCCESS (for variety of services related to the financial field) affirmed
77929696 EXA 2/3/2012 BOARD`S DECISION: AFFIRMED n refusal of LUCKY PAWS (pet treats) under Sect 2(d) with LUCK PAWZ (“pet boarding services; pet day care services”) affirmed
77943347 EXA 2/2/2012 BOARD`S DECISION: AFFIRMED n descriptiveness refusal of SMART VAC (manufacture of industrial vacuum vehicles to order and/or specification of others”) affirmed
77842712 EXA 1/31/2012 BOARD`S DEC: AFFD IN PART/RVRSD IN PART n PETTICOAT VINTAGE (women’s clothing) refusal as descriptive affirmed; refusal as deceptively misdescriptive reversed
92053902 CAN 2/1/2012 TRIAL DATES RESET  n amendments to registrations filed prior to filing of petition for cancellation were proper; petitioner’s granted leave to amend the petitions to correlate with the amended descriptions
91196684 OPP 2/3/2012 TRIAL DATES RESET n Applicant’s objection to telephone conference with intelocutory attorney denied;  regarding Opposer’s motion to strike portions of Applicant’s reply brief, “The Board finds that applicant’s statements in her reply impugn opposer’s counsel’s moral character and are impertinent and scandalous, and therefore, improper” and thus disregarded but did not strike them; Applicant’s motion to discovery santions found to be premature and given no consideration; Applicant’s motion to compel denied as applicant failed to make good faith effort to meet and confer prior to filing the motion; Applicant required to obtain leave of the Board prior to the filing of any pretrial motions.
92046786 CAN 1/30/2012 BOARD`S DECISION: DISMISSED Y Petitions to canel SWISS and SWISS made for certification marks for time pieces and parts denied on several grounds.
92052285 CAN 2/3/2012 BOARD`S DECISION: DISMISSED W/ PREJUDICE n Previous show cause order issued after petitioner failed to file brief is rescinded; but briefing period not reopened and since Petitioner failed to submit brief or any testimony or a motion to suspend for settlement discussions, the Petition to Cancel is dismissed with Prejudice.
92054111 CAN 2/3/2012 BOARD`S DECISION: DISMISSED W/O PREJ n Respondent’s amendment to the restrict the goods in its registration is granted; proceeding dismissed without prejudice
94002137 CNU 2/2/2012 AMDTS APPROVED; RESPONSE DUE 60 DAYS n The parties’ concurrent use settlement agreement submitted found insuffiicent to resolve the parties’ concurrent rights; parties allowed 60 days to submit a revised agreement
91196220 OPP 2/3/2012 AMENDMENT TO APPLICATION; DENIED n Applicant’s motion to amend design mark denied as it constitutes a material alteration
92053537 CAN 1/27/2012 CONSOLIDATED – CHILD OF 91193970 n proceedings consolidated; defendant’s motion for summary judgment denied
91202367 OPP 1/30/2012 D`S MOTION TO DISMISS DENIED; PROCEEDINGS RESUMED; TRIAL DATES RESET n Applicant’s motion to dismiss opposition for lack of service denied; non-receipt of a service copy does not negate prima facie proof of service
92051860 CAN 2/4/2012 D`S MTN FOR LEAVE TO SERVE INITIAL DISCLOSURES DENIED; TRIAL DATES REMAIN AS PREVIOUSLY RESET n Respondent moved to leave to submit for late submission of its initial disclosures so that it can require Petition to respond to its discovery requests and submit testimony is denied
91201098 OPP 2/1/2012 MOTION TO DISMISS; DENIED; PROCEEDINGS RESUMED; TRIAL DATES RESET n Applicant’s motion to dismiss for failure to state a claim regarding the Opposition its registration of VEGGIE POP for popcorn, flavored popcord and pretzels on ground of descriptiveness is denied
92054406 CAN 2/2/2012 MOTION TO DISMISS; DENIED; TRIAL DATES RESET n
Respondent’s motion to dismiss for failure to state a claim denied; rsepondent ordered to file a new Answer
91202203 OPP 2/2/2012 SHOW CAUSE ORDER n Applicant allwoed 30 days to show cause why judgment should not be entered against Applicant for his refusal to schedule or participate in discovery conference
91199253 OPP 2/2/2012 WITHDRAWAL OF D`S COUNSEL GRANTED; TRIAL DATES REMAIN AS PREVIOUSLY RESET n
Proposed amendments to the application filed by Applicant with the Trademark Examining Operation refused and Applicant allowed time to seek Oposer’s consent and to serve the proposed amendment on Opposer’s counsel
91201560 OPP 2/2/2012 PROCEEDINGS RESUMED n Opposer’s motion for default judgment denied even though Applicant’s second answer did not comply with Board’s earlier order; Applicant’s late-filed answer is accepted
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Feb 01 2012
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TTAB Decisions

Recent TTAB decisions & activity of note from TTABulator.com

Last week (1/24 – 1/30), the TTAB issued several final decisions, including numerous ex parte appeals, and also issued several discovery and other procedural rulings.

Several important and interesting decisions on procedural and discovery issues are highlighted in bold.

Here is a rundown of the activity of note from the TTAB in the last week (click link on TTAB action to open Board opinion):

Pro-ceeding  No.

Date

TTAB Action (click link to open PDF from TTABvue)

Marked Prece-dential?

Notes

77753913

 01/26/2012 BOARD`S DECISION: AFFIRMED N 2(d) refusal affirmed

77765378

 01/24/2012 BOARD`S DECISION: AFFIRMED N 2(d) refusal affirmed

77810266

 01/24/2012 BOARD`S DECISION: AFFIRMED N 2(d) refusal affirmed

77853280

 01/24/2012 BOARD`S DECISION: AFFIRMED N 2(d) refusal affirmed

77856121

 01/27/2012 BOARD`S DECISION: AFFIRMED N 2(d) refusal affirmed

79071083

 01/24/2012 BOARD`S DECISION: AFFIRMED N Refusal of KAMPO BOUTIQUE under 2(e)(1) affirmed

91203261

 01/24/2012 SUSPENDED PENDING DISP OF CIVIL ACTION N Motion to Consolidate denied; Opposition suspended pending disposition of related cancellation

91166331

 01/25/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT N After Board set aside its default on 06/01/2011 in an Opposition, application should not matured to registration and registration will be cancelled as Opposition proceeds.

91178758

 01/25/2012 TRIAL DATES RESET N During its testimony, Applicant noticed deposition upon written questions of 5 third-parties regarding their use of “Mc” or “Mac”; Opposer McDonald’s moved to take the depositions by oral examination and to quash requests for production of documents from the third-parties as untimely. Board granted Opposer’s motion to convert the depositions to oral and to quash any requests for production of documents.

91200770

 01/26/2012 TRIAL DATES RESET N Applicant’s Motion to Compel discovery denied. By sending one letter to Opopser’s counsel, Applicant did not satisfy its obligation to “make a good faith effort to resolve the discovery disputes” (Trademark Rule 2.120(e)) prior to seeking Board’s intervention.

91192706

 01/27/2012 MOT COMPEL DENIED; TRIAL DATES RESET N One of Opposer’s motions denied because Board had earlier ruled that the parties may not file any further papers, other than testimony or final briefs, without prior leave of the Board. Opposer also admonished for having a representative who is not an attorney. Opposer’s Motion to Compel denied as Opposer’s initial disclosures were not timely served prior to sending discovery requests.

91189443

 01/25/2012 MOTION GRANTED IN PART; TRIAL DATES REMAIN AS SET N Opposer’s (oral) motion to quash applicant’s notices of testimonial deposition based on applicant’s failure to timely serve pretrial disclosures granted in part. Testimony depositions of nonparty witnesses quashed; testimony depositions of the parties’ representatives allowed but Opposer’s representative may provide testimony by declaration.

91195587

 01/23/2012 P`S MOT TO EXTNED TIME DENIED/P`S TIME TO SERVICE DISCOVERY EXTENDED/TRIAL DATES REMAIN AS SET N Opposer’s Motion to extend time to respond to discovery requests and to extend discovery and trial dates by 60 days denied; but Opposer given an 11 day extension to submit objections to discovery and a one month extension to provided substantive responses.

91193201

 01/27/2012 P`S MOTION FOR PARTIAL SJ GRANTED N Opposer’s motion for summary judgment to dismiss counterclaim on issue of priority granted. Applicant’s intent-to-use filing date was several years after the filing dates for Opposer’s registrations.

92053398

 01/24/2012 PROCEEDINGS RESUMED N Petitioner’s motion to compel granted regarding material withheld due to lack of protective order; Respondent also required to provide dates suitable for deposition of its representative to take place within 60 days and to conduct deposition within that time frame using video or telephone if necessary.
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