Tag Archives: TTAB decision

Jan 27 2012
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TTAB Decisions

Recent TTAB decisions & activity of note from TTABulator.com

In the last week (1/16 – 1/23), the TTAB issued several final decisions, including numerous ex parte appeals, and also issued several discovery and other procedural rulings.* Here is the activity of note from the TTAB in the last week.

Proceeding Number

Date

TTAB Action

Notes

91197659

 01/17/2012 PL`S MOT. FOR SUMM. JUDGMENT DENIED Motion for Summary Judgment on issue of Applicant’s bona fide intent to use denied

94002395

 01/20/2012 BD`S DECISION: FAVORABLE TO APPLICANT Concurrent use registrations granted by Board pursuant to settlement agreements between the parties

77508734

 01/17/2012 BOARD`S DECISION: AFFIRMED Refusal of Applicant’s specimens for restaurant services affirmed

77643857

 01/18/2012 BOARD`S DECISION: AFFIRMED [Precedential] Refusal of application by District of Columbia to register a mark comprising its official seal affirmed under Section 2(b) of the Trademark Act. (“This appeal  raises an issue of first impression:  Does Trademark Act § 2(b) bar registration of such a mark when the applicant is a government entity seeking to register its own flag, coat of arms, or other insignia?  We conclude that it does, and we accordingly affirm the refusal to register.

77660948

 01/18/2012 BOARD`S DECISION: AFFIRMED [Precedential] Refusal of registration of seal of City of Houston under Section 2(b) affirmed

77666448

 01/19/2012 BOARD`S DECISION: AFFIRMED Refusal under Section 2(d) affirmed

77812771

 01/17/2012 BOARD`S DECISION: AFFIRMED Refusal under Section 2(d) affirmed

77870089

 01/19/2012 BOARD`S DECISION: AFFIRMED Refusal under Section 2(d) affirmed

77879157

 01/18/2012 BOARD`S DECISION: AFFIRMED Refusal under Section 2(d) affirmed

77939659

 01/20/2012 BOARD`S DECISION: AFFIRMED Refusal of design mark under Section 2(d) affirmed

85005921

 01/17/2012 BOARD`S DECISION: AFFIRMED Refusal under Section 2(d) affirmed

85010558

 01/17/2012 BOARD`S DECISION: AFFIRMED Disclaimer requirement of “sport couture” for clothing goods affirmed

91183151

 01/17/2012 SUSPENDED PENDING DISP OF OUTSTNDNG MOT Parties’ stipulations and amendments denied because some of the signatures lacked proper title or a date

91194658

 01/20/2012 TRIAL DATES RESET Opposer ordered to provide some supplemental discovery responses covering a period of 10 years; Opposer order to produce unredacted copies of some materials

91199688

 01/17/2012 TRIAL DATES RESET Applicant’s motion to set aside default granted

91200125

 01/21/2012 TRIAL DATES RESET Motion to dismiss for failure to state a claim denied in part, granted in part with Opposer given time to amend fraud allegation

91200208

 01/17/2012 TRIAL DATES RESET Applicant’s motion to set aside notice of default is granted

91201414

 01/19/2012 TRIAL DATES RESET Applicant motion to amend mark to delete design element denied as a material alteration

91201459

 01/18/2012 TRIAL DATES RESET Applicant’s motion to set aside not of default is granted

91195992

 01/19/2012 BD`S DECISION: DISMISSED W/ PREJUDICE Opposer’s motion for relief from final judgment under Fed. R. Civ. P. 60(b)(1) granted in part but proceeding still dismissed for failure to prosecute

91198687

 01/21/2012 BD`S DECISION: DISMISSED W/ PREJUDICE Board granted consented motion to amend mark

91158276

 01/12/2012 COMMISSIONER`S DECISION Petition to Director denied following  Board denial of 3rd amended petition to cancel

91195961

 01/18/2012 CROSS-MOTIONS FOR SUMMARY JUDGEMENT DENIED Cross-Motions for summary judgment denied in Opposition filed by Van Halen band regarding the mark KELLYVANHALEN

91197983

 01/17/2012 CROSS-MOTIONS FOR SUMMARY JUDGMENT DENIED Cross-Motions for summary judgment denied

92054486

 01/20/2012 D`S MOTION TO AMEND DEFERRED/TRIAL DATES RESET

91200896

 01/19/2012 JUDGMENT VACATED; ANSWER DUE applicant’s motion to set aside the notice of default is granted, and opposer’s motion for default judgment is denied

94002242

 01/19/2012 PROCS RESUMED; TRIAL DATES RESET Motion to strike testimony as untimely granted

91201295

 01/20/2012 P`S MOTION TO AMEND PLEADINGS GRANTED; PROCEEDINGS SUSPENDED FOR SETTLEMENT Opposer’s Motion for leave to add claim of dilution granted

92053855

 01/18/2012 RESPONSES DUE AS INDICATED Motion to dismiss fraud claim under Fed. R. Civ. P. 12(b)(6) granted, petitioner given time to submit amended pleading

92053501

 01/21/2012 PROCEEDINGS RESUMED Respondent’s Motion  to compel granted in part
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Jan 19 2012
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TTAB Decisions

Recent TTAB decisions & activity of note

In the last week (1/10 – 1/15), the TTAB issued several final decisions and ruled on numerous motions.* Here is the activity of note from the TTAB in the last week.

Proceeding Number  Date  TTAB Action (click link to open PDF from TTABvue) Notes
75463414 1/12/2012 BOARD`S DECISION: AFFIRMED six 2(d) refusal affirmed – some of the applications were filed in 1998!
77360365 1/12/2012 BOARD`S DECISION: AFFIRMED 2(d) refusal affirmed
77464726 1/12/2012 BOARD`S DECISION: AFFIRMED refusal of Johnson & Johnson applicationn for MICRO-GROOVES (for dental floss)  as merely descriptive affirmed
77606502 1/10/2012 BOARD`S DECISION: AFFIRMED 2(d) refusal affirmed
77853437 1/10/2012 BOARD`S DECISION: AFFIRMED PURA VIDA (tequila) refusal under 2(d)  with PURA VIDA (beer) affirmed; Applicant submission of webpage evidence during appeal denied
85016667 1/13/2012 BOARD`S DECISION: AFFIRMED 2(d) refusal affirmed
92050665 1/9/2012 APPEAL TO CAFC Appeal of Board decision cancelling BLACK BEAR SPRING WATER LLC based on priority and likelihod of confusion with BLACK BEAR SODA
76315793 1/10/2012 APPEAL TO CAFC Appeal of Ex Parte refusal to register COCK SUCKER & Design under Sect. 2(a)
92047058 1/12/2012 TRIAL DATES RESET Pro se petitioner’s reasons for not filing trial brief failed to establish excusable neglect; Plaintiff cannot submit its main brief
91151254 1/13/2012 TRIAL DATES RESET Opposer’s motion for 60 day extension of rebuttal testimony period denied (Opposition began in 2002)
91200934 1/13/2012 TRIAL DATES RESET Opposer’s motion for default judgment denied
91173468 1/10/2012 BOARD`S DECISION: DISMISSED  opposition dismissed on the ground of likelihood of confusion and on the ground of dilution
92051304 1/12/2012 BOARD`S DECISION: DISMISSED W/ PREJUDICE Petition to Cancel  SWEDISH FIRESTEEL on grounds of
geographically deceptively misdescriptive denied upon finding that registrant’s goods originate in Sweden
91196379 1/10/2012 D`S MOTION TO DISMISS DENIED; TRIAL DATES RESET applicant’s motion to dismiss for failure to prosecute is denied
91198922 1/12/2012 D`S MOTIONS FOR RULE 56(D) DISCOVERY AND TO STRIKE GRANTED Applicant’s Rule 56(d) motion granted in part
91199131 1/13/2012 MOTION TO REOPEN DISCOVERY PERIOD; DENIED Applicant’s motion to reopen the discovery period denied
92053509 1/11/2012 P`S MOTION TO COMPEL GRANTED, IN PART, DENIED, IN PART; TRIAL DATES RESET Petitioner’s Motion to Compel granted in part
91193987 1/10/2012 P`S MTN TO AMEND DENIED; P`S MTN TO SUSPEND DENIED  opposer’s motion to amend notice of opposition denied as untimely
91197762 1/10/2012 PROCEEDINGS RESUMED Opposer’s motion to strike four affirmative defenses granted as to one affirmative defense; denied as to the other three
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Jan 11 2012
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TTAB Decisions

Recent TTAB Decisions & Activity of Note

In the last week, the TTAB issued two final decisions.* Here is the activity of note from the TTAB in the last week:

Proceeding Number Date TTAB Action (click link to open PDF from TTABvue) Notes
77464553 1/9/2012 BOARD`S DECISION: AFFIRMED CHRISTMAS ALE found generic
85009182 1/9/2012 BOARD`S DECISION: AFFIRMED 2(d) refusal upheld: CAPITAL DISTRIBUTION SERVICES for “freight logistics management” denied; cited registration: CAPITAL TRANSPORTATION SOLUTIONS for “transportation logistics services, namely, arranging the transportation of goods for others; transportation logistics services, namely, planning and scheduling shipments for users of transportation services””
91159912 1/4/2012 APPEAL TO CAFC Appeal of Board’s grant of summary judgment in proceedings  regarding LOUIS KEMP marks
91194948 1/9/2012 SUSPENDED PENDING DISP OF CIVIL ACTION Suspension despite pending motion for sanctions

* Note that we are tweaking our tracking of TTAB decisions here

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Jan 06 2012
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TTAB Decisions

Interesting TTAB sanction: Opposer must contact intelocutory to arrange inter partes conference before filing motions

In an order issued by the Board on December 31, 2011, Opposer’s actions led to two interesting results:

  • In an earlier Order, the Board gave Opposer fifteen days to file an amended fraud claim. Opposer filed its Second Amended Notice of Opposition 74 days later,without a motion for leave to amend and without any consent from Applicant. The Board barred Opposer’s attempt to amend its pleading after so much time. (“[O]pposer filed its second amended pleading containing the amended fraud claim well after the time allowed for such filing by the Board in its order mailed on March 31, 2011. As such, opposer’s submission is untimely.”)
  • Due to its conduct and filings, Opposer was sanctioned such that it must contact the Board’s Interlocutory Attorney in order to arrange an inter partes conference with applicant’s counsel prior to filing any new motion in this proceeding.

The Board’s order covers several other issues as well, and serves as a good warning for TTAB litigants regarding the many complexities and procedural pitfalls involved in a trademark Opposition case.

Case: Montres Charmex S.A.  v. Montague Corporation

Opposition No. 91191784

Applicant’s Mark: SWISS MILITARY for use with ‘bicycles’

Link to TTAB Order: http://ttabvue.uspto.gov/ttabvue/ttabvue-91191784-OPP-37.pdf

picture from Montague website (www.montaguebikes.com)

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