Chronological List of Precedential Trademark Trial and Appeal Board Cases Since 1998

 

Issue Decision Date Issued Case Type Proceeding No. Parties Opposer/Petitioner Mark Applicant/Respondent Mark
Motion to StrikeMotion Denied2/3/2011CANC92051525General Council of the Assemblies of God dba Gospel Publishing House v. Heritage Music Foundation
2(e)(3)Refusal Affirmed1/28/2011EX77099522Jonathan Drew, Inc. d/b/a Drew Estate KUBA KUBA [cigars, tobacco and related products, namely, cigarettes, cigar boxes, lighters, holders, ashtrays, cigar bands, cigar cutters, humidors, and cigar tubes]
2(e)(1), 2(f)Refusal under 2(e)(1) Affirmed; Refusal under 2(f) Reversed1/28/2011EX76681269Thomas Nelson, Inc. NKJV [bibles]
2(e)(5)Petition to Cancel Granted1/25/2011CANC92048733Kistner Concrete Products, Inc. v. Contech Arch Technologies, Inc. Configuration of a one-piece open bottom bridge unit [precast concrete bridge unit for constructing a bridge or culvert]
2(e)(5); 2(f)Refusal Affirmed on both grounds1/7/2011EX77025789Charles N. Van Valkenburgh Trade dress of a motorcycle stand (product design) [motorcycle stands]
2(d), 2(e)(1), 43(c) dilution, fraudMotion to dismiss granted; Opposition Dismissed12/29/2010OPP91190682Prakash Melwani v. Allegiance Corporation ROYALSILK [non-woven medical gowns and non-woven surgical drapes]
2(d)Refusal Reversed12/28/2010EX79060553Wacker Neuson SE WACKER NEUSON [skid steer loaders, articulated front end wheel loaders, all-wheel-steered front end loaders; compact excavators, mobile excavators, crawler excavators, and parts therefor, namely, buckets, blades] [rental of construction machines]
2(a), 2(d), fraud, misrepresentation of source, ownershipMotion for summary judgment granted (res judicata); Petition to Cancel Denied12/28/2010CANC92050739Orouba Agrifoods Processing Company v. United Food ImportComposite word and design mark [preserved, dried and cooked fruits and vegetables; and other food products]Composite word and design mark (packaging) [various frozen fruits and vegetables]
2(a), 2(d), FraudMotion to dismiss denied12/28/2010CANC92052292Petroleos Mexicanos v. Intermix S.A.PEMEX [oil and gas goods and services]PEMEX [crude oil and refined petroleum products, namely, fuels and industrial oils, greases, and lubricants] [advertising and business management services related to the oil industry and crude-oil refined products] [oil refining]
2(c)Refusal Affirmed in all three applications12/10/2010EX77632391Richard M. Hoefflin OBAMA BAHAMA PAJAMAS [pajamas] OBAMA PAJAMA [pajamas] BARACK'S JOCKS DRESS TO THE LEFT [boxer briefs, briefs, pajama bottoms, pajamas, sleepwear]
2(c)Refusal Affirmed in all three applications12/10/2010EX77632400Richard M. Hoefflin OBAMA BAHAMA PAJAMAS [pajamas] OBAMA PAJAMA [pajamas] BARACK'S JOCKS DRESS TO THE LEFT [boxer briefs, briefs, pajama bottoms, pajamas, sleepwear]
2(c)Refusal Affirmed in all three applications12/10/2010EX77632406Richard M. Hoefflin OBAMA BAHAMA PAJAMAS [pajamas] OBAMA PAJAMA [pajamas] BARACK'S JOCKS DRESS TO THE LEFT [boxer briefs, briefs, pajama bottoms, pajamas, sleepwear]
2(e)(1), 2(f)Refusal Reversed, mark will be registered under Section 2(f)11/30/2010EX77099785Trek 2000 International Ltd. THUMBDRIVE [portable digital electronic devices for recording, organizing, transferring, storing and reviewing text, data, image, audio and video files; computer software for use in recording, organizing, transferring, storing and reviewing text, data, image, audio and video files on portable digital electronic devices]
2(e)(1), 2(f), 23(c)Refusal Affirmed on all grounds11/29/2010EX78724139Greenliant Systems, Ltd. NANDRIVE [electronic integrated circuits]
1, 2, 3 and 45; 2(f)Both Refusals Affirmed (trade dress not inherently distinctive and does not function as a service mark); No acquired distinctiveness11/23/2010EX78490836Chevron Intellectual Property Group LLC Stylized pole spanner sign [vehicle service station services and automobile maintenance and repair services]
2(d)Petition to Cancel Granted 10/28/2010CANC 92050101Weatherford/Lamb, Inc. v. C&J Energy Services, Inc.FRACSURE [oil well fracturing [and] oil and gas treatment services]FRAC-SURE [oil and gas well treatment services; oil and gas well fracturing services]
2(d)Refusal Reversed9/23/2010EX77519313Herbal-Science Group, LLC MINDPOWER [wide variety of goods in Class 1, including botanical extracts, plant extracts, chemical extracts and active principles of medicinal plants, or herbal extracts for use in the manufacture of various types of pharmaceutical or nutraceutical preparations or products, for use in cosmetics, or for use in foods, functional foods, medicinal foods or beverages]
2(d), 2(e)(1), 43(c) dilutionOpposition Dismissed [Proof of 2(e)(1) claim overcome by showing of acquired distinctiveness]9/17/2010OPP91170112Coach Services, Inc. v. Triumph Learning LLCCOACH (numerous registrations) [wide variety of leather goods, including cases, luggage, handbags, cell phone cases, computer cases, and computer accessory cases; various desk accessories and plannersCOACH (standard, stylized and with design; three applications) [Class 9: software for students and teachers for mastering standards-based curricula and preparing for exams, and audio and videotapes for the same] [Class 16: various printed materials for purposes noted above]
Sanctions; Rule 2.127(d)No automatic stay under 2.127(d); Sanctions previously entered stand; Previous Grant of Petition to Cancel Confirmed9/16/2010CANC92047859Super Bakery, Incorporated v. Ward E. Benedict
2(d); FraudMCI's Petition Granted; Bunte's Petition Dismissed but CABO PRIMO registration restricted9/13/2010CANC92045959M.C.I. Foods, Inc. v. Brady Bunte Brady Bunte v. M.C.I. Foods, Inc.[MCI's marks] CABO PRIMO (and design), LOS CABOS (and design), CABO CLASSICS [various Mexican style food products, including tortilla chips][Bunte's mark]CABO CHIPS [processed snack foods formed from corn, namely, chips]]
Cross-Motions for SJ on claim of Invalid Assignment; Motion for SanctionsOpposer's Motion for SJ Denied; Applicant's Motion for SJ Granted (disposing of one claim); Applicant's Motion for Sanctions Granted8/31/2010OPP91187118Amazon Technologies, Inc. v. Jeffrey S. WaxAMAZON (and variations thereof) [wide variety of goods and services]AMAZON VENTURES [investment management, raising venture capital for others, investment consultation, and capital investment consultation]
1, 2 and 45, fails to function as a mark; 2(f), acquired distinctivenessRefusal Affirmed; not inherently distinctive and no acquired distinctiveness8/26/2010EX77357895Brouwerij Bosteels Design of a beer glass and stand with wording and scrollwork [beer]
2(d)Opposition Sustained8/17/2010OPP91182429Automedx, Inc. v. Artivent CorporationSAVE (stylized) [portable ventilators]SAVE [Medical devices, namely, resuscitation apparatus, manual ventilators, manual emergency ventilators, transport ventilators, powered ventilators, powered emergency ventilators, positive end expiratory valves, oxygen masks, oxygen tubing, oxygen filters, endotracheal tubes, nasopharyngeal airway tubing, laryngeal masks, airway nanometers, all for use during artificial ventilation or resuscitation, for regulating or controlling ventilation, and for regulating or controlling resuscitation; accessories for the aforementioned ventilators and resuscitators]
2(d) Functional; 2(f) 2(d)Opposition Sustained Opposition sustained on both grounds Opposition Sustained7/28/2010OPP91163534Mag Instrument, Inc. v. The Brinkman Corp. and The Brinkman Corp. v. Mag Instrument, Inc.A family of MAG marks [flashlights]; MAG-NUM STAR [flashlight bulbs]MAGNUM MAXFIRE [hand-held portable lights, namely, flashlights and spotlights] The design of two bands encircling the barrel of the flashlight [Flashlights] MAG STAR [Electric flashlight accessories sold together or separately, namely rechargeable batteries, battery chargers, electrical converters, power cords, charger cradles, flashlight recharger adapters for use with vehicle cigarette lighters, battery packs for flashlights, voltage converters, foreign plug adapters; and Flashlights and related parts, component parts and accessories therefor, namely replacement flashlight lamps, combination lens holder/anti-roll units adapted to fit on the barrels of flashlights and leather and nylon carrying holsters and belt holders
2(d) Functional; 2(f) 2(d)Opposition Sustained Opposition sustained on both grounds Opposition Sustained7/28/2010OPP91164169Mag Instrument, Inc. v. The Brinkman Corp. and The Brinkman Corp. v. Mag Instrument, Inc.A family of MAG marks [flashlights]; MAG-NUM STAR [flashlight bulbs]MAGNUM MAXFIRE [hand-held portable lights, namely, flashlights and spotlights] The design of two bands encircling the barrel of the flashlight [Flashlights] MAG STAR [Electric flashlight accessories sold together or separately, namely rechargeable batteries, battery chargers, electrical converters, power cords, charger cradles, flashlight recharger adapters for use with vehicle cigarette lighters, battery packs for flashlights, voltage converters, foreign plug adapters; and Flashlights and related parts, component parts and accessories therefor, namely replacement flashlight lamps, combination lens holder/anti-roll units adapted to fit on the barrels of flashlights and leather and nylon carrying holsters and belt holders
2(d) Functional; 2(f) 2(d)Opposition Sustained Opposition sustained on both grounds Opposition Sustained7/28/2010OPP91164340Mag Instrument, Inc. v. The Brinkman Corp. and The Brinkman Corp. v. Mag Instrument, Inc.A family of MAG marks [flashlights]; MAG-NUM STAR [flashlight bulbs]MAGNUM MAXFIRE [hand-held portable lights, namely, flashlights and spotlights] The design of two bands encircling the barrel of the flashlight [Flashlights] MAG STAR [Electric flashlight accessories sold together or separately, namely rechargeable batteries, battery chargers, electrical converters, power cords, charger cradles, flashlight recharger adapters for use with vehicle cigarette lighters, battery packs for flashlights, voltage converters, foreign plug adapters; and Flashlights and related parts, component parts and accessories therefor, namely replacement flashlight lamps, combination lens holder/anti-roll units adapted to fit on the barrels of flashlights and leather and nylon carrying holsters and belt holders
2(d); No use of the mark in commerce; FraudOpposition Dismissed on all grounds7/27/2010OPP91152662Threshold.TV, Inc. and Blackbelt TV, Inc. v. Metronome Enterprises, Inc.BLACKBELT TV [digital broadband delivery over the internet of information, content, entertainment and audio-visual programming relating to fighting and martial arts]BLACK BELT TV (and design) [providing martial arts television network programming that will bring martial arts education and entertainment to homes throughout the U.S., 24/7]
MD CounterclaimMotion Granted in Part, Denied in Part7/14/2010OPP91191988Flash & Partners S.P.A. v. I. E. Mfg. LLCRR (stylized) [Class 25: clothing, namely skirts, dresses, trousers, jeans, jackets, shirts, hosiery, overcoats, raincoats, coats, vests, bandanas, sweaters, t-shirts, gloves, belts, neckties, scarves and neckerchiefs, leather clothing, namely jackets, trousers, overcoats, waistcoats, skirts, shirts, belts and gloves; footwear; boots, sandals; shoes; hats]RR (stylized) [Class 9: eyewear; sunglasses; goggles for sports; eyewear cases, namely cases for sports eyewear Class 25: t-shirts, sweatshirts, hats]
Abandonment; FraudPetition Dismissed as to both grounds6/30/2010CANC92048305Anosh Toufigh v. Persona Parfum, Inc.ECSTASY [bath crystals, bath foams, bath powder, bath salts, bubble bath, and foam bath]ECSTASY [parfum, eau de toilette, and cologne]
1(b) (No Bona Fide Intent to Use); 2(d)Opposition Sustained on No Bona Fide Intent to Use claim6/28/2010OPP91156452The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. BumbMITHRIL MINIATURES [collectible miniature figurines]MITHRIL [rings, bracelets, pendants, charms, necklaces, earrings, pins, tie pins and tie clasps, brooches, cufflinks, money clips, all of precious metal or alloyed precious metal]
2(d)Refusal Reversed6/16/2010EX77436425Princeton Tectonics, Inc. EPIC [personal headlamps]
Motion to CompelMotion Granted 6/16/2010OPP 91182207Johnson & Johnson and RoC International S.A.R.L. v. Obschestvo s ogranitchennoy
2(d); 43(c) (dilution)Opposition Sustained on ground of dilution6/11/2010OPP91166701National Pork Board and National Pork Producers Council v. Supreme Lobster and Seafood CompanyTHE OTHER WHITE MEAT [Class 16: cookbooks, brochures about pork, pens, pencils, crayons, bumper stickers, and stickers; Class 25: t-shirts, sweatshirts, aprons, jackets and hats; Class 42: association services namely, promoting the interests of members of the pork industry; Class 43: providing an Internet website featuring food preparation/cooking information regarding pork and accompanying recipes] THE OTHER WHITE MEAT (and design) [Class 35: promoting the interests of the members of the pork industry; Class 43: providing an Internet website featuring information about cooking and accompanying recipes]THE OTHER RED MEAT [fresh and frozen salmon]
2(e)(4)Refusal Reversed6/11/2010EX77256618P.J. Fitzpatrick, Inc. P.J. FITZPATRICK, INC. [roofing services; installing siding; installation of doors and windows; building construction services; construction, maintenance and renovation of property; installation of gutters and gutter systems]
1, 2 and 45 (mark does not function as a service mark)Refusal Affirmed6/9/2010EX77314455Osmotica Holdings Corporation OSMODEX [consultation services regarding controlled release drug delivery technology for pharmaceutical companies]
1, 2 and 45 (does not function as mark)Refusal Affirmed6/9/2010EX77251039T.S. Designs, Inc. CLOTHING FACTS [long-sleeved shirts; polo shirts; short-sleeved shirts; t-shirts]
2(d)Refusal Affirmed6/9/2010EX77399654Iolo Technologies, LLC ACTIVECARE [software feature that automatically analyzes and repairs or optimizes performance settings for personal computers, sold as a component of personal computer performance and maintenance utility software]
Motion to Amend Notice of Opposition to application based on Section 66(a)Motion Denied6/7/2010OPP91190886O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A.
Whether specimen evidences use as a trademarkRefusal Affirmed5/13/2010EX77004809Anpath Group, Inc. ANPATH [Class 5: all purpose disinfectant cleaning preparations for household, commercial and industrial use]
MTD under FRCP 12(b)(6)Motion Denied5/13/2010CANC92051014Meckatzer L^wenbr?u Benedikt Wei? KG v. White Gold, LLCWEISS-GOLD and MECKATZER MECKATZER LųWENBRfU WEISS GOLD (and design) [a variety of beverages including beer]WHITE GOLD and WHITE GOLD and design [Class 33 : alcoholic beverages]
Motion Granted, Petition to Cancel Dismissed 5/7/2010CANC 92051768Montecash LLC v. Anzar Enterprises, Inc.MONTEPIO $ (and design) [pawn shop service]
Motion to Dismiss Under FRCP 12Motion Granted, Petition to Cancel Dismissed5/7/2010CANC92051768Montecash LLC v. Anzar Enterprises, Inc. MONTEPIO $ (and design) [pawn shop service]
Motion to Compel; Motion to Exclude Witness from Testifying at TrialMotion to Compel Denied; Motion to Exclude Granted in Part5/6/2010OPP91189238Byer California v. Clothing for Modern Times Ltd.BCX and BCX GIRL [clothing]CBX [footwear]
1, 2 and 45; whether specimen shows use of mark as trademark for involved goodsRefusal Affirmed4/15/2010EX78960554Quantum Foods, Inc. PROVIDING PROTEIN AND MENU SOLUTIONS [processed meats, beef, pork, poultry and seafood sold in portions; fully cooked entrees consisting primarily of meat, beef, pork, poultry or seafood]
2(d)Opposition Dismissed4/14/2010OPP91154210Edwards Lifesciences Corporation v. Vigilanz CorporationVIGILANCE [heart monitors]VIGILANZ [near real-time computer monitoring system comprised of a software application and database that anticipates and detects possible adverse drug events, and alerts healthcare providers to adverse drug events]
Res Judicata; Whether Applicant can have Bona Fide Intent to Use MarkOpposition Sustained (Motion for Summary Judgment Granted)3/25/2010OPP91181092The John W. Carson Foundation v. Toilets.com, Inc.HERE'S JOHNNYHERE'S JOHNNY [portable toilets]
Motion for Leave to Amend Answer; Cross-motions for Summary JudgmentMotion to Amend Answer Denied; Applicant's MSJ Denied; Opposer's MSJ Denied3/15/2010OPP91183362American Express Marketing & Development Corp. v. Gilad Development CorporationAMERICAN EXPRESS [travel services, namely, transportation reservation and booking services]GRAND AMERICAN EXPRESS and GRAND AMERICAN EXPRESS RAILROAD CLEVELAND AND COLUMBUS (and design) [transportation services, namely, transporting passengers by means of a 19th century replica train]
Motion for Leave to Amend Answer; Cross-motions for Summary JudgmentMotion to Amend Answer Denied; Applicant's MSJ Denied; Opposer's MSJ Denied3/15/2010OPP91186156American Express Marketing & Development Corp. v. Gilad Development CorporationAMERICAN EXPRESS [travel services, namely, transportation reservation and booking services]GRAND AMERICAN EXPRESS and GRAND AMERICAN EXPRESS RAILROAD CLEVELAND AND COLUMBUS (and design) [transportation services, namely, transporting passengers by means of a 19th century replica train]
Motion to Dismiss Claims of Dilution and Lack of Bona Fide Intent to UseMotion Granted, with Leave for Opposer to Replead3/15/2010OPP91190607Fiat Group Automobiles S.p.A. v. ISM, Inc.FIAT PANDA and PANDA [automobiles]PANDA [automobiles]
2(a), disparagementRefusal Affirmed3/4/2010EX77072261Lebanese Arak Corporation KHORAN [alcoholic beverages, namely, wines]
23, genericness, capabilityRefusal Affirmed3/4/2010EX77067861Wm. B. Coleman Co., Inc. ELECTRIC CANDLE COMPANY [light bulbs; lighting accessories, namely, candle sleeves; lighting fixtures]
Whether opposer's failure to make initial disclosures precludes a motion for summary judgmentMotion for Summary Judgment Denied2/25/2010OPP91182244Qualcomm Inc. v. FLO Corp.
Opposition Dismissed2/23/2010OPP91176445Safer, Inc. v. OMS Investments, Inc.DEER AWAY and DEER AWAY PROFESSIONAL both for [repellant for repelling deer, other big game and rabbits]DEERBGON [animal repellant used to repel deer and other ruminant animals and rabbits]
2(d)Opposition Dismissed2/22/2010OPP91176445Safer, Inc. v. OMS Investments, Inc.DEER AWAY and DEER AWAY PROFESSIONAL both for [repellant for repelling deer, other big game and rabbits]DEER-B-GON [animal repellant used to repel deer and other ruminant animals and rabbits]
Whether opposer's failure to make initial disclosures precludes taking discoveryOpposer's motions to reopen discovery and to compel denied; motion to consolidate granted2/22/2010OPP91185884Dating DNA, LLC v. Imagini Holdings, Ltd.
Whether opposer's failure to make initial disclosures precludes taking discoveryOpposer's motions to reopen discovery and to compel denied; motion to consolidate granted2/22/2010OPP91191912Dating DNA, LLC v. Imagini Holdings, Ltd.
2(d); 43(c) (Dilution)Opposition Dismissed as to all four applications, on both claims2/16/2010OPP91177415Citigroup Inc. v. Capital City Bank Group, Inc.CITIBANK two registrations for, [banking services] [periodical publications for in house and public distribution concerning interests of employees, bankers and customers] CITIBANK EVERYTHING THAT COUNTS [financial services, namely, banking services] CITIBANK FAMILYTECH [charitable program providing computers and computer skills to students, families and teachers] CITIBANK CLEAR CARD [promoting goods and services of others through credit card incentive, loyalty and reward programs]CAPITAL CITY BANK [wide variety of services in the fields of banking, brokerage, credit cards, lending, mortgage banking, retirement savings, estate planning and management] CAPITAL CITY BANK INVESTMENTS and CAPITAL CITY BANC INVESTMENTS both for [brokerage services and administration of various securities, funds, stocks, bonds, retirement accounts, and life and long-term care insurance] CAPITAL CITY BANK GROWING BUSINESS [banking services; online banking services]
2(d)Petition Granted; Opposition Sustained2/5/2010OPP91165417Texas Department of Transportation v. Richard TuckerDON'T MESS WITH TEXAS [four registrations, covering various goods and services, and an application for various clothing items]DON'T MESS WITH TEXAS [various clothing items, in each of the registration and application]
2(d)Petition Granted; Opposition Sustained2/5/2010CANC92030882Texas Department of Transportation v. Richard TuckerDON'T MESS WITH TEXAS [four registrations, covering various goods and services, and an application for various clothing items]DON'T MESS WITH TEXAS [various clothing items, in each of the registration and application]
2(e)(1); 2(f)Refusal Affirmed1/28/2010EX77223725Nielsen Business Media, Inc. THE BOLLYWOOD REPORTER (two applications) [newspapers in the field of entertainment] [providing online publications in the nature of newspapers in the field of entertainment]
2(e)(1); 2(f)Refusal Affirmed1/28/2010EX77223738Nielsen Business Media, Inc. THE BOLLYWOOD REPORTER (two applications) [newspapers in the field of entertainment] [providing online publications in the nature of newspapers in the field of entertainment]
FraudPetitioner's Motion for Summary Judgment Denied1/14/2010CANC92045099DaimlerChrysler Corporation and Chrysler, LLC v. American Motors CorporationAMERICAN MOTORS CORPORATION and AMC (with and without design) [motor vehicles and parts therefor] AMC (and design) [toy vehicle replicas]AMC (and design) [automobiles and structural parts thereof]
2(d)Refusal Affirmed1/4/2010EX77186166Max Capital Group Ltd. MAX (and design) [writing property and casualty insurance and reinsurance; life, health and annuity reinsurance underwriting; property catastrophe reinsurance, aviation reinsurance, marine reinsurance, and energy reinsurance underwriting; excess and surplus insurance services, namely, property, inland marine, casualty, excess liability and umbrella insurance underwriting]
2(d)Oppositions Sustained12/29/2009OPP91174767Panda Travel, Inc. v. Resort Option Enterprises, Inc.PANDA, PANDA TRAVEL and a design of a panda, as well as other marks including the term PANDA [travel agency services]PANDA TRAVEL and PANDA TRAVEL (and design) [both for: travel agency services, namely making reservations and bookings for transportation]
2(d)Oppositions Sustained12/29/2009OPP91174768Panda Travel, Inc. v. Resort Option Enterprises, Inc.PANDA, PANDA TRAVEL and a design of a panda, as well as other marks including the term PANDA [travel agency services]PANDA TRAVEL and PANDA TRAVEL (and design) [both for: travel agency services, namely making reservations and bookings for transportation]
Whether Board should sanction applicant for not participating in the required settlement and discovery planning conference, or compel attendanceMotion for sanctions denied; motion to compel attendance granted12/24/2009OPP91190017Promgirl, Inc. v. JPC Co., Ltd.
2(d); 2(e)(4); 2(f) (lack of acquired distinctiveness]All Refusals Affirmed as to Both Applications12/23/2009EX76590702Jack B. Binion BINION and BINION'S [ both for: Class 41 casino and gaming services and Class 43 hotel and bar services]
2(d); 2(e)(4); 2(f) (lack of acquired distinctiveness]All Refusals Affirmed as to Both Applications12/23/2009EX76590729Jack B. Binion BINION and BINION'S [ both for: Class 41 casino and gaming services and Class 43 hotel and bar services]
2(d) (motion for relief from final judgment)Motion Denied (Petition Granted)12/16/2009CANC92032341Pramil S.R.L. v. Michel FarahOMIC [cosmetics]OMIC PLUS [cosmetics, namely body cream, body oil, skin cream, skin and body lotions, skin moisturizer, skin lightener, skin soap, skin toners, soaps for hands, face and body, in both liquid and solid form]
2(d), Lack of Bona Fide Intent to UseOpposition Sustained on Lack of Bona Fide Intent to Use12/2/2009OPP91179284Research in Motion Limited v. NBOR CorporationBLACKBERRY [various goods and services in the wireless telecommunications industry]BLACK MAIL [computer software for facilitating interactive communication, namely, chat, electronic mail, voice, instant message, text transfer, multi-media transfer, live collaboration, motion pictures, and sound]
2(d)Opposition Sustained, Petition to Cancel Granted [Counter-claim dismissed]11/10/2009OPP91171509Anthony's Pizza & Pasta Inter-national, Inc. v. Anthony's Pizza Holding Company, Inc.ANTHONY'S PIZZA & PASTA [restaurant services]Application: ANTHONY'S COAL-FIRED PIZZA (and design)
2(d)Opposition Sustained, Petition to Cancel Granted [Counter-claim dismissed]11/10/2009CANC92045956Anthony's Pizza & Pasta Inter-national, Inc. v. Anthony's Pizza Holding Company, Inc.ANTHONY'S PIZZA & PASTA [restaurant services]Registration: ANTHONY'S COAL-FIRED PIZZA
2(e)(1) (generic); 2(f) (sufficiency of evidence of acquired distinctiveness)Both Refusals Affirmed11/4/2009EX77091459Tires, Tires, Tires, Inc. TIRES TIRES TIRES [retail tire stores]
Motion to Compel; Motion to Extend; Motion to Test Sufficiency of Responses to Requests for Admissions; Motion for SanctionsMotions to Compel, Test Sufficiency of Responses and to Extend Granted; Motion for Sanctions Denied as Premature11/4/2009OPP91187118Amazon Technologies, Inc. v. Jeffrey S. Wax
2(d)Opposition Sustained10/30/2009OPP91160266Christopher Brooks v. Creative Arts by Calloway, LLCTHE CAB CALLOWAY ORCHESTRA [live musical performances and audio and video recordings of those performances]CAB CALLOWAY [in Class 35: retail stores, retail outlets and on-line retail store services featuring CDs and other home entertainment related products; distribution of pre-recorded music, drama, comedy and variety shows on video tapes, cassettes, digital video and audio discs and CD-ROM, and other services; in Class 41: production and distribution of live music concerts and live theatrical plays; production of radio and TV programs; production of videotapes an and sound recordings, etc., and other services]
2(d)Opposer's motion for summary judgment granted as to applicant's goods in Class 9 but denied as to applicant's services10/26/2009OPP91185393Hewlett-Packard Development Company, L.P. v. Vudu, Inc.VOODOO [personal and gaming computers, and other goods; and various services]VUDU [in Class 9: computer software for use in computers for the transmission, storage and playback of audio and video content, and other goods; a variety of services in Classes 35, 38, 41 and 42]
FraudPetitioner's motion for summary judgment deemed moot in view of insufficient pleading of fraud10/22/2009CANC92048821Asian and Western Classics B.V.
2(d)Refusal Affirmed10/16/2009EX77369073G.B.I. Tile and Stone, Inc. CAPRI COLLECTION [stones, ceramic floor tiles, porcelain floor tiles]
Fraud (and other grounds)Opposer's motion for summary judgment on fraud grounds denied10/6/2009OPP91170364Enbridge, Inc. v. Excelerate Energy Limited Partnership ENERGY BRIDGE [in Class 39: transmission of oil and gas through pipelines and ships; in Class 40: production of energy]
2(d)Refusal Reversed10/5/2009EX77093221White Rock Distilleries, Inc. VOLTA [energy vodka infused with caffeine]
2(e)(1) [descriptiveness and, in the alternative, deceptive misdescriptiveness]Opposition Dismissed [as to all three applications]9/16/2009OPP91180119Anheuser-Busch, Inc. v. Kelly J. Holt BEER 1 ONE BEER, BEER 1 and BEER 1 MMVII (and design) [all three for beer]
2(d)Opposition Sustained8/27/2009OPP91178937UMG Recordings, Inc. v. Charles O'RourkeMOTOWN [musical and theatrical sound and video recordings; entertainment services]; various marks incorporating the capital letter M and the word MOTOWN [an array of clothing and merchandise, including, short-sleeved and long-sleeved t-shirts, sweatshirts, and baseball-style caps]MTOWN CLOTHING (and design) [beanies; caps; footwear; hats; headbands; headwear; jackets; jogging suits; pajamas; polo shirts; pullovers; short-sleeved or long-sleeved t-shirts; shorts; suits; sweat pants; sweat shirts; swimsuits; t-shirts; tank tops; trunks; underwear; wristbands]
whether to permit a discovery deposition into evidence as trial testimony under Trademark Rule 2.120(j)(2)Opposer's motion under Trademark Rule 2.120(j)(2) granted8/24/2009OPP91184213Galaxy Metal Gear, Inc. v. Direct Access Technology, Inc.
whether the mark applicant seeks to register, as shown in its drawing, is a substantially exact representation of the mark it uses, as shown by its specimen of useRefusal Affirmed8/17/2009EX77333250Pharmavite LLC design mark comprising a representation of two bottles [dietary supplements]
2(d)Refusal Affirmed8/7/2009EX77029776Davey Products Pty Ltd. DAVEY [electric motors for machines; water pumps with fluid flow or pressure control for domestic, industrial and commercial use; and parts and fittings therefor]
2(d)Opposition Sustained7/31/2009OPP91177866Lacoste Alligator S.A. v. Maxoly, Inc.two alligator design marks [sport shirts, sweaters, men's socks, outer shorts, hats and caps, women's and children's dresses] and [polo shirts, sweatshirts, blousons, shirts, pants, shorts, skirts, dresses, jogging suits, sweaters, jackets, parkas, headwear, robes, swimwear, footwear, socks, belts, gloves]COLBA ISLAND (and design) [belts, caps, pants, shirts, shoes, shorts and t-shirts]
whether the opposition should be dismissed for lack of proper service of the notice of oppositionApplicant's motion to dismiss Denied7/30/2009OPP91187963Chocolade-fabriken Lindt & Sprungli AG
2(d)Opposition Sustained7/21/2009OPP91180015Eveready Battery Company, Inc. v. Green Planet, Inc.SCHICK [razors and razor blades]; and other marks for related goodsSLICK ULTRA PLUS [disposable razors]
whether applicant may register its mark in connection with the services recited in its applicationRefusal Reversed7/17/2009EX78899587Husqvarna Aktiebolag HOP [providing warranties to consumers and retailers on a wide range of power-operated outdoor products]
2(e)(5) [functional matter]Refusal Affirmed7/16/2009EX78723912Rolf Dietrich a spoke pattern in a bicycle wheel [bicycle wheels]
whether the Board should strike petitioner's witness's testimony deposition where petitioner failed to make a pretrial disclosure of its intention to offer the witness's deposition in evidenceRespondent's Motion to Strike Granted7/6/2009CANC92048667Jules Jurgensen/ Rhapsody, Inc. v. Peter Baumberger
2(a) [false suggestion of a connection]; 2(b) [simulation of an insignia of the U.S.]; whether applicant's drawing of its mark is acceptableRefusal Affirmed on all grounds6/26/2009EX76653159Peter S. Herrick, P.A. U.S. CUSTOMS SERVICE 1789 (and seal design) [attorney services]
whether applicant's identification of goods is acceptable in view of its specimens of use; 2(e)(1)Refusal Affirmed [but only on 2(e)(1) grounds]6/19/2009EX78806413Petroglyph Games, Inc. BATTLECAM [computer game software]
2(d)Refusal Affirmed6/18/2009EX79046106Toshiba Medical Systems Corporation VANTAGE TITAN [medical magnetic resonance imaging (MRI) diagnostic apparatus]
whether the matter applicant seeks to register is inherently distinctive or has acquired distinctiveness through use by applicant as a trademark; issue preclusionOpposition Sustained [on issue preclusion grounds as to žtwo-way radiosÓ and on grounds of lack of inherent or acquired distinctiveness as to cellular telephones]6/12/2009OPP91164353Nextel Communications, Inc. v. Motorola, Inc. a mark described by applicant as: an electronic chirp consisting of a tone at 1800 Hz played at a cadence of 24 milliseconds ON, 24 ms OFF, 24 ms ON, 24 ms OFF, 48 ms ON [cellular telephones and two-way radios]
2(d); whether the issue of fraud was tried by consent of the partiesOpposition Dismissed6/11/2009OPP91173806Morgan Creek Productions, Inc. v. Foria International, Inc.MORGAN CREEK (and design) [pre-recorded motion picture films and videos (video cassettes and DVDs); pre-recorded phonograph records, audio tapes, audio cassettes and CDs featuring musical entertainment]; MORGAN CREEK [caps, t-shirts, baseball shirts]MORGAN CREEK OUTFITTERS [camp shirts, dress shirts, golf shirts, knit shirts and shirts]
2(e)(1); whether applicant may disclaim, under Section 6, the words URBAN HOUSINGRefusal Affirmed [on 2(e)(1) grounds only]6/9/2009EX78752616Dean S. Carlson URBANHOUZING [real estate brokerage; real estate consultation; and real estate listing]
2(d); whether applicant fraudulently misused the trademark registration symbolOpposition Sustained (on 2(d) grounds only)5/13/2009OPP91176273Brown Shoe Company, Inc. v. Molly D. RobbinsPALOMA [clothing, namely, shirts, pants, footwear, headwear, and other items]PALOMITA [shirts, pants, shoes and hats]
FraudApplicant's motion for summary judgment granted in part and denied in part5/13/2009OPP91177858Zanella Ltd. v. Nordstrom, Inc.
whether sanctions should be entered against applicant/ respondent for failure to comply with Board's orderOpposition Sustained; Petition to Cancel Granted (Motion for Sanctions Granted)5/11/2009OPP91181141MySpace, Inc. v. Donnell Mitchell
whether sanctions should be entered against applicant/ respondent for failure to comply with Board's orderOpposition Sustained; Petition to Cancel Granted (Motion for Sanctions Granted)5/11/2009CANC92048120MySpace, Inc. v. Donnell Mitchell
2(d)Refusal Affirmed5/8/2009EX76653359Cynosure, Inc. CYNERGY [medical lasers for the cosmetic and medical treatment of the face and skin, and vascular treatment, sold directly to licensed medical practitioners]
2(d) [whether applicant may rely on its original filing date after amendment of its application from one for registration on the Supplemental Register to one for registration under Section 1(b)]Applicant's cross-motion for summary judgment granted4/22/2009OPP91185033Kraft Group LLC v. William A. Harpole19-0 THE PERFECT SEASON [a wide variety of goods, including clothing items such as caps, t-shirts, jackets, golf jackets, knit shirts, etc.]19-0 THE PERFECT SEASON [hats, jackets, sport shirts, sports jackets, t-shirts]
2(d)Refusal Affirmed4/22/2009EX78634024Thor Tech, Inc. WAVE [recreational vehicles, namely, travel trailers and fifth wheel trailers]
whether applicant had a bona fide intention to use its mark on its recited goods in the U.S. as of the filing date of its applicationOpposition Sustained (Opposer's motion for summary judgment granted)4/8/2009OPP91170552Honda Motor Co., Ltd. v. Friedrich Winkelmann V.I.C. [vehicles]
2(d); whether registration of respondent's mark contravenes Article 6bis of the Paris Convention; whether respondent has used its registered mark to misrepresent the source of its goods [Section 14(3)]; fraudRespondent's motion to Dismiss granted as to all grounds except Section 14(3)4/6/2009CANC92047741Bayer Consumer Care AG v. Belmora LLCFLANAX [orally ingestible tablets of naproxen sodium for use as an analgesic]FLANAX [orally ingestible tablets of naproxen sodium for use as an analgesic]
whether applicant's mark is inherently distinctiveRefusal Affirmed3/25/2009EX78666598Chippendales USA, Inc. mark comprising cuffs worn around the wrists and a neck collar with a bow tie [adult entertainment services, namely, exotic dancing for women in the nature of live performances]
genericness; whether, if not generic, applicant's claimed marks have acquired distinctivenessOppositions Sustained on both grounds3/25/2009OPP91161403Stuart Spector Designs, Ltd v. Fender Musical Instruments Corporation 3 applications, the mark in each application described as a fancifully shaped configuration of the body portion of a guitar [guitar bodies]
genericness; whether, if not generic, applicant's claimed marks have acquired distinctivenessOppositions Sustained on both grounds3/25/2009OPP91161405Stuart Spector Designs, Ltd v. Fender Musical Instruments Corporation 3 applications, the mark in each application described as a fancifully shaped configuration of the body portion of a guitar [guitar bodies]
genericness; whether, if not generic, applicant's claimed marks have acquired distinctivenessOppositions Sustained on both grounds3/25/2009OPP91161406Stuart Spector Designs, Ltd v. Fender Musical Instruments Corporation 3 applications, the mark in each application described as a fancifully shaped configuration of the body portion of a guitar [guitar bodies]
genericness; whether, if not generic, applicant's claimed marks have acquired distinctivenessOppositions Sustained on both grounds3/25/2009OPP91161411Stuart Spector Designs, Ltd v. Fender Musical Instruments Corporation 3 applications, the mark in each application described as a fancifully shaped configuration of the body portion of a guitar [guitar bodies]
genericness; whether, if not generic, applicant's claimed marks have acquired distinctivenessOppositions Sustained on both grounds3/25/2009OPP91161413Stuart Spector Designs, Ltd v. Fender Musical Instruments Corporation 3 applications, the mark in each application described as a fancifully shaped configuration of the body portion of a guitar [guitar bodies]
genericness; whether, if not generic, applicant's claimed marks have acquired distinctivenessOppositions Sustained on both grounds3/25/2009OPP91161420Stuart Spector Designs, Ltd v. Fender Musical Instruments Corporation 3 applications, the mark in each application described as a fancifully shaped configuration of the body portion of a guitar [guitar bodies]
genericness; whether, if not generic, applicant's claimed marks have acquired distinctivenessOppositions Sustained on both grounds3/25/2009OPP91161422Stuart Spector Designs, Ltd v. Fender Musical Instruments Corporation 3 applications, the mark in each application described as a fancifully shaped configuration of the body portion of a guitar [guitar bodies]
genericness; whether, if not generic, applicant's claimed marks have acquired distinctivenessOppositions Sustained on both grounds3/25/2009OPP91161486Stuart Spector Designs, Ltd v. Fender Musical Instruments Corporation 3 applications, the mark in each application described as a fancifully shaped configuration of the body portion of a guitar [guitar bodies]
genericness; whether, if not generic, applicant's claimed marks have acquired distinctivenessOppositions Sustained on both grounds3/25/2009OPP91161518Stuart Spector Designs, Ltd v. Fender Musical Instruments Corporation 3 applications, the mark in each application described as a fancifully shaped configuration of the body portion of a guitar [guitar bodies]
genericness; whether, if not generic, applicant's claimed marks have acquired distinctivenessOppositions Sustained on both grounds3/25/2009OPP91161519Stuart Spector Designs, Ltd v. Fender Musical Instruments Corporation 3 applications, the mark in each application described as a fancifully shaped configuration of the body portion of a guitar [guitar bodies]
genericness; whether, if not generic, applicant's claimed marks have acquired distinctivenessOppositions Sustained on both grounds3/25/2009OPP91161520Stuart Spector Designs, Ltd v. Fender Musical Instruments Corporation 3 applications, the mark in each application described as a fancifully shaped configuration of the body portion of a guitar [guitar bodies]
genericness; whether, if not generic, applicant's claimed marks have acquired distinctivenessOppositions Sustained on both grounds3/25/2009OPP91162312Stuart Spector Designs, Ltd v. Fender Musical Instruments Corporation 3 applications, the mark in each application described as a fancifully shaped configuration of the body portion of a guitar [guitar bodies]
genericness; whether, if not generic, applicant's claimed marks have acquired distinctivenessOppositions Sustained on both grounds3/25/2009OPP91162313Stuart Spector Designs, Ltd v. Fender Musical Instruments Corporation 3 applications, the mark in each application described as a fancifully shaped configuration of the body portion of a guitar [guitar bodies]
genericness; whether, if not generic, applicant's claimed marks have acquired distinctivenessOppositions Sustained on both grounds3/25/2009OPP91162483Stuart Spector Designs, Ltd v. Fender Musical Instruments Corporation 3 applications, the mark in each application described as a fancifully shaped configuration of the body portion of a guitar [guitar bodies]
genericness; whether, if not generic, applicant's claimed marks have acquired distinctivenessOppositions Sustained on both grounds3/25/2009OPP91162485Stuart Spector Designs, Ltd v. Fender Musical Instruments Corporation 3 applications, the mark in each application described as a fancifully shaped configuration of the body portion of a guitar [guitar bodies]
genericness; whether, if not generic, applicant's claimed marks have acquired distinctivenessOppositions Sustained on both grounds3/25/2009OPP91162497Stuart Spector Designs, Ltd v. Fender Musical Instruments Corporation 3 applications, the mark in each application described as a fancifully shaped configuration of the body portion of a guitar [guitar bodies]
genericness; whether, if not generic, applicant's claimed marks have acquired distinctivenessOppositions Sustained on both grounds3/25/2009OPP91162498Stuart Spector Designs, Ltd v. Fender Musical Instruments Corporation 3 applications, the mark in each application described as a fancifully shaped configuration of the body portion of a guitar [guitar bodies]
2(e)(2)Refusal Reversed3/25/2009EX77000589Roy J. Mankovitz THE MONTECITO DIET [in Class 16: printed publications, namely, books, magazines, newsletters, brochures, and pamphlets concerning health, nutrition, illness prevention, detoxification, diet and lifestyle choices; in Class 41: on-line journals, namely, blogs featuring information in the fields listed above; in Class 44: providing information concerning and global computer websites featuring information in the fields listed above]
FraudPetition to Cancel Denied3/18/2009CANC92047976Kathleen Hiraga v. Sylvester J. Arena GARDEN ORGANICS [fertilizers, soil conditioners and soil amendments for domestic use]
whether applicant's motion for partial dismissal of the opposition is well takenApplicant's motion to dismiss denied3/17/2009OPP91176641Schering-Plough Animal Health Corporation v. Aqua Gen AS
2(d)Petition to Cancel Denied3/16/2009CANC92045576Benjamin J. Giersch v. Scripps Networks, Inc.DESIGNED2SELL [providing the services of staging managers and/or renters who are placed in residences during the sales cycle in order to improve the residence's selling potential; and other claimed services]DESIGNED TO SELL [entertainment services, namely, an on-going audio and visual program distributed over TV, satellite, wireless, audio and video media, fiber optics, cable, and a global computer network, in the fields of gardening and landscaping, furniture, antiques and collectibles; interior design and decorating; architecture and home design, building, improvement, repair and renovation; and similar subjects in the fields of homes and gardens]
2(d) [priority]Opposition Dismissed3/12/2009OPP91175091Syngenta Crop Protection, Inc. v. Bio-Chek, LLCAGROMETER [a temperature-sensing device that takes information that it gathers on high and low temperatures for the day and calculates the growing degree units]AGMETER [in Class 9: pesticide detectors; in Class 42: evaluation and testing of produce for pesticides]
whether the amended cancellation petition states a proper claim for restriction of respondent's registration under Section 18Petitioner allowed time to file an amended pleading that properly states a claim for restriction under Section 183/12/2009CANC92049636IdeasOne, Inc. v. Nationwide Better Health, Inc. WELLCORP [consulting services in the field of health]
2(e)(5); whether the configuration of applicant's goods functions as a markRefusal Affirmed on both grounds3/4/2009EX78867933UDOR U.S.A., Inc. the configuration of a round disk head on a sprayer nozzle [metal spray nozzles]
2(e)(5) [de jure functionality]; whether applicant's marks identify and distinguish the source of its goodsRefusal Affirmed in both cases on both grounds2/13/2009EX76601697Vertex Group LLC two applications to register a sound mark described as:
2(e)(5) [de jure functionality]; whether applicant's marks identify and distinguish the source of its goodsRefusal Affirmed in both cases on both grounds2/13/2009EX78940163Vertex Group LLC a descending frequency sound pulse (from 2.3kHz to approximately 1.5kHz) that follows an exponential, RC charging curve, wherein said descending frequency sound pulse occurs four to five times per second, and that over a one second period of time, there is alternating sound pulses and silence with each occurring approximately 50% of the time during a one second period of time
whether the petition to cancel should be dismissed as a nullity for failure to comply with service requirementsPetition to Cancel accepted but filing date changed to date of compliance with service requirements2/10/2009CANC92050044The Equine Touch Foundation, Inc. v. Equinology
counterclaims to cancel both of opposer's pleaded 2-class registrations on the grounds of fraudCounterclaim to cancel granted as to Class 35 in each of opposer's pleaded registrations and counterclaim dismissed as to Class 5 in each registration1/29/2009OPP91169571G&W Laboratories, Inc. v. G W Pharma LimitedG&W (and design) [2 registrations, both for various goods in Class 5 and certain distributorship services in Class 35]
2(d) [priority]Opposer's motion for summary judgment granted Applicant's motion to dismiss granted1/5/2009OPP91184174Compagnie Gervais Danone v. Precision Formulations, LLC and Precision Formulations, LLC v. Compagnie Gervais Danone FRUITOLOGY [various nutritional goods and medicated skin creams in Class 5 and various beverages in Class 32]
whether the parties' briefs exceed the page limit set by Trademark Rule 2.127(a)Respondent's motion for summary judgment denied; Petitioner's cross-motion for summary judgment denied12/17/2008CANC92048042Cooper Technologies Company v. Denier Electric Co., Inc.
2(e)(1)Refusal Affirmed in both classes12/15/2008EX77036122BetaBatt, Inc. DEC [in Class 9: power generating and/or storage batteries deriving power from nuclear decay processes; in Class 40: treatment of radioactive materials and/or porous substrates for use in the fabrication of power generating and/or storage devices, namely, batteries deriving power from nuclear decay processes; consulting and technical advisory services relating to the treatment of radioactive materials and/or porous substrates, and to the fabrication of power generating and/or storage devices, namely, batteries deriving power from nuclear decay processes]
ownership of the marksOpposition Sustained Petition to Cancel Granted12/11/2008OPP91180789Ballet Tech Foundation, Inc. v. The Joyce Theater Foundation, Inc. Application to register the mark: JOYCE [charitable fundraising services] Registered marks: JOYCE, JOYCE THEATER, JOYCE SOHO, and JOYCE (in stylized design format) [all four marks for: dance performance theaters and entertainment in the nature of performance arts theater productions]; JOYCE THEATER FOUNDATION [charitable fundraising services]
ownership of the marksOpposition Sustained Petition to Cancel Granted12/11/2008CANC92042019Ballet Tech Foundation, Inc. v. The Joyce Theater Foundation, Inc. Application to register the mark: JOYCE [charitable fundraising services] Registered marks: JOYCE, JOYCE THEATER, JOYCE SOHO, and JOYCE (in stylized design format) [all four marks for: dance performance theaters and entertainment in the nature of performance arts theater productions]; JOYCE THEATER FOUNDATION [charitable fundraising services]
2(a) [disparagement]Refusal Affirmed11/26/2008EX78558043Heeb Media, LLC HEEB [in Class 25: clothing, namely, jackets, jerseys, sweat pants, sweat shirts, track suits, t-shirts, tank tops and pants; headwear; in Class 41: entertainment, namely, conducting parties]
2(d) [whether applicant is entitled to judgment based on his Morehouse and/or laches defenses]Motion for Judgment denied11/20/2008OPP91182399Land O' Lakes, Inc. v. Jim Hugunin
whether respondent provided adequate initial disclosuresMotion to Compel Granted11/13/2008CANC92049076Influance, Inc. v. Elaina Zuker
2(e)(1)Refusal Affirmed11/13/2008EX78666879Paul Leonhardt BOBBLE POPS [candy]
whether sanctions should be imposed on applicant for failure to participate in required discovery conferenceMotion for Sanctions Denied11/13/2008OPP91182999Guthy-Renker Corporation v. Michael Boyd
whether oppositions should be dismissed for failure to make proper serviceMotion to Dismiss Granted in both cases11/13/2008OPP91184239Schott AG v. L'Wren Scott
whether oppositions should be dismissed for failure to make proper serviceMotion to Dismiss Granted in both cases11/13/2008OPP91184245Schott AG v. L'Wren Scott
whether sanctions should be entered against opposer for failure to make timely initial disclosuresMotion for Sanctions Denied10/17/2008OPP91181945Kairos Institute of Sound Healing, LLC v. Doolittle Gardens, LLC
2(d)Refusal Affirmed in both classes as to both cited registrations9/29/2008EX78848532RSI Systems, LLC RSI (and design) [in Class 7: conveyors, table for sorting, handling and printing mail and other substrates, infrared ink dryers, ink delivery system consisting of ink storage unit, ink level monitoring unit, tubes for delivering ink and parts therefor; in Class 9: ink jet printers, unfilled ink cartridges for computer printers, software for processing images, graphics or text, software to monitor ink delivery, ink delivery system comprising ink storage unit, ink level monitoring unit, tubes for delivering ink and parts therefor]
whether cancellation petitioner may amend its petition to add two new grounds for cancellation; 2(d) [priority]Petitioner's motion to amend denied; Petition to Cancel Denied (Respondent's motion for judgment on the pleadings granted)9/29/2008CANC92047294Media Online Inc. v. El Clasificado, Inc.CLASIFICADOSONLINE.COM and CLASIFICADOS ONLILNE [both marks for: various Internet advertising services and related services]EL CLASIFICADO ONLINE [placing advertisements of others on a website via a global computer network]
2(a) [false suggestion of a connection]Refusal Reversed9/26/2008EX79022561MC MC S.r.l. MARIA CALLAS [precious metals and their alloys, namely, gold, silver, platinum; goods made of or coated with gold, silver, platinum, namely, necklaces, rings, bracelets, brooches; jewelry; precious stones; horological and chronometric instruments]
2(e)(3)Opposition Sustained9/26/2008OPP91165519Corporacion Habanos, S.A. v. Anncas, Inc. HAVANA CLUB [cigars made from Cuban seed tobacco]
2(a) [immoral or scandalous]; 2(a) [disparagement]; 2(a) [false suggestion of a connection]; 2(d); whether applicant has a bona fide intent to use its mark on the goods recited in its applicationOpposition Sustained (but only on grounds that the mark is scandalous and disparaging under Section 2(a) and on the basis of a lack of bona fide intent to use the mark on the goods recited in the application)9/9/2008OPP91172268Boston Red Sox Baseball Club Limited Partnership v. Brad Francis ShermanRED SOX [entertainment services in the nature of baseball exhibitions; a wide range of goods, including clothing items, namely, shirts, jackets, ponchos, caps, bibs, two-piece diaper sets, baby bootees, short sets, and sweatshirts]; RED SOX (in stylized form) [a wide variety of items, including clothing]; and other marksSEX ROD (in stylized lettering) [a wide range of clothing items, including shirts, sweatshirts, jackets, ponchos, baseball caps, infant wear, baby bibs not of paper, etc.]
2(d)Refusal Affirmed9/4/2008EX78806669SL&E Training Stable, Inc. SAM EDELMAN [luggage, handbags, purses, wallets, all-purpose tote bags, all-purpose sports bags, backpacks]
2(d) [priority]Opposition Dismissed7/15/2008OPP91160999Life Zone Inc. v. Middleman Group, Inc.LIFE ZONE [educational services, namely, conducting seminars in the field of nutritional supplements, skin care products, cosmetics, health and fitness, marketing, accounting, and management]LIFEZONE [educational services, namely, conducting seminars, speeches, workshops, lectures and classes in the field of personal development, leadership and management, and distributing course materials in connection therewith]
whether the opposition should be dismissed as untimelyOpposition Dismissed (applicant's motion to dismiss granted)7/11/2008OPP91176345Vibe Records, Inc. v. Vibe Media Group LLC
whether the mark in applicant's drawing (i.e., the mark applicant seeks to register) is a substantially exact representation of the mark used in commerce, as show on its specimenRefusal Affirmed7/3/2008EX78653373Yale Sportswear Corporation UPPER 90 [clothing, namely, athletic jerseys, t-shirts, shirts, tanktops, pants, shorts, sweatsuits, sweatshirts, sweatpants, and team uniforms]
2(e)(1) [whether applicant's mark has acquired distinctiveness under Section 2(f)]; fraudOpposition Sustained (on fraud ground only)6/30/2008OPP91162008Grand Canyon West Ranch, LLC v. Hualapai Tribe GRAND CANYON WEST [airport services; air transportation services; arranging for recreational travel tours and providing related transportation of passengers by air, boat, raft, bus, and motorized on-road and off-road vehicles]
whether the Board should approve the parties' consented waiver of the requirement to make initial disclosuresWaiver Approved6/23/2008OPP91182083Boston Red Sox Baseball Club Limited Partnership v. Harry F. Chaveriat III
whether applicant's drawing of its mark is a substantially exact representation of the mark it uses in commerce, as shown on its specimens; whether applicant's mark is unregistrable as the title of a single creative workRefusal Affirmed (but only on the ground that it is the title of a single creative work)6/18/2008EX76607252Innovative Companies, LLC FREEDOM STONE [building stones used as landmarks or cornerstones]
2(e)(1)Refusal Reversed6/18/2008EX77054914Tea and Sympathy, Inc. THE FARMACY [in Class 35: retail store services featuring natural herbs and organic products; and on-line retail store services featuring natural herbs and organic products; in Class 44: providing integrated health services at retail locations in the nature of dietary and nutritional guidance and providing information about dietary supplements and nutrition]
whether applicant's specimen shows service mark use of applicant's mark for the services recited in its applicationRefusal Affirmed6/4/2008EX78373640DSM Pharmaceuticals, Inc. LIQUIDADVANTAGE [custom manufacturing of pharmaceuticals featuring liquid fill and finish technology]
whether the parties' prior agreement prevents registration of applicant's mark; whether opposer's opposition should be denied because of contractual or equitable estoppel or because of res judicataOpposition Sustained (Opposer's motion for summary judgment granted)5/28/2008OPP91174518Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG STORZ THE WORLD OF ENDOSCOPY (and design) [surgical, medical and veterinary instruments]
2(e)(1)Refusal Affirmed5/14/2008EX79018656Tokutake Industry Co., Ltd. [footwear]
Whether applicant's drawing of its mark is a substantially exact representation of the mark it uses in commerce, as shown on its specimens; whether the specimen shows use in connection with applicant's recited servicesRefusal Affirmed as to Ž268 application, but only on ground that the specimen fails to show service mark use; Refusal Reversed as to Ž272 application5/13/2008EX78227268wTe Corporation the Ž268 application:
2(d)Opposition Dismissed5/6/2008OPP91168309The H.D. Lee Company, Inc. v. Maiden-form, Inc.ONE TRUE FIT [clothing, namely, non-leather coats, shorts, shirts, blazers, non-leather jackets, skirts, jeans, and pants]ONE FAB FIT [foundation garments, panties, brassieres, underwear, briefs, body briefers, body suits, shapewear, girdles, camisoles, women's undergarments, and women's intimate apparel, namely, sleepwear, lingerie, and slippers]
whether the matter applicant seeks to register functions as a mark for her recited servicesRefusal Affirmed5/2/2008EX76649075Vicki Roberts irestmycase [providing professional legal services, namely, counseling in legal matters, drafting documents, and representation in adversarial and administrative matters]
whether applicant is entitled to summary judgment on its counterclaim for cancellation on ground of fraudApplicant's motion for summary judgment on its counterclaim denied5/2/2008OPP91168142University Games Corporation v. 20Q.net Inc.TWENTY QUESTIONS [a board game for correctly identifying well-known persons, places, things and years using game cards and board pieces]20Q [software for collecting data in the field of artificial intelligence; entertainment services, namely, providing an on-line interactive question and answer computer game] and 20Q (in design format) [hand-held unit for playing electronic games software for collecting data in the field of artificial intelligence]
whether applicant is entitled to summary judgment on its counterclaim for cancellation on ground of fraudApplicant's motion for summary judgment on its counterclaim denied5/2/2008OPP91170668University Games Corporation v. 20Q.net Inc.TWENTY QUESTIONS [a board game for correctly identifying well-known persons, places, things and years using game cards and board pieces]20Q [software for collecting data in the field of artificial intelligence; entertainment services, namely, providing an on-line interactive question and answer computer game] and 20Q (in design format) [hand-held unit for playing electronic games software for collecting data in the field of artificial intelligence]
whether applicant is seeking registration for more than one mark in its application [žphantomÓ mark]Refusal Affirmed4/29/2008EX78684820Primo Water Corporation a mark described as . . .the placement and orientation of identical spaced indicia on a water bottle having a handle, namely the placement of identical indicia on the other side of the handle in inverted orientation. [bottled drinking water]
genericness; whether, if not generic, applicant's mark is registrable under Section 2(f)Refusal Affirmed on both grounds4/23/2008EX78618762Noon Hour Food Products, Inc. BOND-OST [cheese]
2(d); dilution; fraud; 2(a) [false suggestion of a connection]Petition to Cancel Granted (but on 2(a) grounds only)4/22/2008CANC92044369Lesley Hornby a/k/a Lesley Lawson a/k/a Twiggy v. TJX Companies, Inc.TWIGGY [clothing]TWIGGY [clothing, namely, children's pants, tops, slacks, skirts, vests, sweaters, shirts and blouses]
2(d) [priority]Opposition Dismissed4/21/2008OPP91167007General Motors Corp. v. Aristide & Co., Antiquaire de MarquesLASALLE [motor vehicle parts; and other goods]LA SALLE [motor vehicles, namely, automobiles, boats, motorcycles; car bodies; automobile chassis; engines and other parts for motor vehicles, namely, axles, drive gears, transmissions; motor buses; recreational vehicles, namely, campers; motor coaches; bicycles; lorries, namely, light lorries, transportation lorries; vans, namely, caravans; motorcycles; tractors; mopeds]
whether the designs applicant seeks to register function as trademarks or function merely as product ornamentationRefusal Affirmed in all three cases4/16/2008EX79014936Right-On Co., Ltd. three design marks, each of which is described as a stitching design on side-by-side pockets [all three marks for: jeans, t-shirts, polo shirts, sweat shirts, sweaters, gloves and socks; belts for clothing; footwear, namely, sports shoes, mountaineering boots and sandals; headgear for wear, namely, caps and hats]
whether the designs applicant seeks to register function as trademarks or function merely as product ornamentationRefusal Affirmed in all three cases4/16/2008EX79014939Right-On Co., Ltd. three design marks, each of which is described as a stitching design on side-by-side pockets [all three marks for: jeans, t-shirts, polo shirts, sweat shirts, sweaters, gloves and socks; belts for clothing; footwear, namely, sports shoes, mountaineering boots and sandals; headgear for wear, namely, caps and hats]
whether the designs applicant seeks to register function as trademarks or function merely as product ornamentationRefusal Affirmed in all three cases4/16/2008EX79015094Right-On Co., Ltd. three design marks, each of which is described as a stitching design on side-by-side pockets [all three marks for: jeans, t-shirts, polo shirts, sweat shirts, sweaters, gloves and socks; belts for clothing; footwear, namely, sports shoes, mountaineering boots and sandals; headgear for wear, namely, caps and hats]
2(d)Petition to Cancel Dismissed4/4/2008CANC92045000Bass Pro Trademarks, L.L.C. v. Sportsman's Warehouse, Inc.SPORTSMAN'S WAREHOUSE and BASS PRO SHOPS SPORTSMAN'S WAREHOUSE (and design) [both marks for: retail stores featuring clothing, fishing supplies, and sporting goods]SPORTSMAN'S WAREHOUSE (with additional wording and design features) [retail and wholesale stores featuring hunting supplies, fishing supplies, camping supplies, reloading supplies, outerwear clothing, and footwear]
2(d) [res judicata]Opposition Sustained (Opposer's motion for summary judgment granted)4/4/2008OPP91153172Daimler Chrysler Corporation v. Keith MaydakDODGE and other marks incorporating DODGE [all marks for: automobiles and automotive goods and services]FORADODGE [consulting services and providing information in the fields of privacy, avoiding legal problems, obtaining government records, correcting government records, and counterintelligence]
2(d); whether applicant had a bona fide intent to use its mark on its identified goods when it filed its applicationOpposition Sustained on both grounds3/28/2008OPP91162330L.C. Licensing, Inc. v. Cary BermanENYCE and ENYCE (and design) [both marks for: apparel and headwear for men, women, and children, namely, hats, caps, visors, headbands, shirts, jackets, jogging suits, pants, coats, t-shirts, shorts, tank tops, skirts, warm-up suits, sweat shirts and sweat pants]ENYCE [custom automotive accessories, namely, fitted car covers, shift knobs, brake pads, and wheels for land vehicles, license plate holders, and spoilers for vehicles
2(e)(1) [genericness]; whether, if not generic, applicant's mark is registrable under Section 2(f)Refusal Affirmed3/24/2008EX78277681Hotels.com, L.P. HOTELS.COM [providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network]
2(d) [whether applicant is entitled to judgment on the pleadings]Opposition Dismissed (Applicant's motion for judgment on the pleadings granted)3/20/2008OPP91175014Ava Enterprises, Inc. v. P.A.C. Trading Group, Inc.BOSS AUDIOSYSTEMS [automobile audio components, namely, AM/FM stereo receivers, cassette tape decks, CD players, power amplifiers, equalizers, electronic cross overs, and speakers]PAC BOOSTER THE PERFECT SOUND [car and home audio and video equipment, namely, car stereos, car amplifiers, car speakers, car LCD panels, car DVD players, equalizers, crossovers, portable DVD players, portable MP3 players, home LCD and plasma TV sets, home DVD players, and home DVD recorders]
2(d)Refusal Affirmed3/14/2008EX78676199La Peregrina Limited LA PEREGRINA [jewelry; precious stones; pearls in loose pieces, pairs, and strands; pearl jewelry]
FraudPetitioner's motion for summary judgment granted as to four of respondent's six challenged registrations3/7/2008CANC92045172Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc. 6 registrations for various permutations of the mark:XEL HERBACEUTICALS [for: various food products or various skin care preparations or various pharmaceuticals]
whether applicant's specimens show trademark use of its mark on its recited goodsRefusal Affirmed in all three cases3/6/2008EX77027094Supply Guys, Inc. 3 applications to register the mark LEADING EDGE TONERS:[toner; toner cartridges]; [ink sticks]; [components for laser toner cartridges; printer parts; and other goods]
whether applicant's specimens show trademark use of its mark on its recited goodsRefusal Affirmed in all three cases3/6/2008EX77027097Supply Guys, Inc. 3 applications to register the mark LEADING EDGE TONERS:[toner; toner cartridges]; [ink sticks]; [components for laser toner cartridges; printer parts; and other goods]
whether applicant's specimens show trademark use of its mark on its recited goodsRefusal Affirmed in all three cases3/6/2008EX77027099Supply Guys, Inc. 3 applications to register the mark LEADING EDGE TONERS:[toner; toner cartridges]; [ink sticks]; [components for laser toner cartridges; printer parts; and other goods]
23 (generic); 6, 23 disclaimer (generic)Refusal Affirmed in both cases2/27/2008EX78180535Rosemount, Inc. REDUCER and DOUBLE REDUCER [flow meters used for measuring flow through pipes; vortex flow meters]
23 (generic); 6, 23 disclaimer (generic)Refusal Affirmed in both cases2/27/2008EX78180540Rosemount, Inc. REDUCER and DOUBLE REDUCER [flow meters used for measuring flow through pipes; vortex flow meters]
2(d)Opposition Sustained2/21/2008OPP91165010Green Spot (Thailand) Ltd. v. Vitasoy International Holdings LimitedVITAMILK ["a variety of beverage products"]VITAMILK [various goods in classes 29, 30 and 32, each class including a soy beverage or soy based beverage, including, fruit juices and fruit drinks made with soy]
whether sanctions should be imposed on a party for failure to comply with a Board order regarding discoveryMotion for Sanctions Granted2/19/2008CANC92045959M.C.I. Foods, Inc. v. Brady BunteBrady Bunte v. M.C. I. Foods, Inc.
whether sanctions should be imposed on a party for failure to comply with a Board order regarding discoveryMotion for Sanctions Granted2/19/2008CANC92046056M.C.I. Foods, Inc. v. Brady BunteBrady Bunte v. M.C. I. Foods, Inc.
whether registration should be refused for applicant's failure to comply with information requests made under Rule 2.61(b); 2(e)(2); 2(e)(3)Refusal Affirmed on all three grounds 2/1/2008EX 78694122Cheezwhse.com, Inc. NORMANDIE CAMEMBERT [cheese]
whether opposer established good cause for an extension of the discovery period; whether opposer's notice of deposition taking should be quashedOpposer's Motion to Extend Time Denied; Applicant's Motion to Quash Granted 1/29/2008OPP 91176569National Football League, NFL Properties LLC v. DNH Management, LLC NFL (and design) [promoting the interests of member football clubs; a wide variety of goods]
whether sanctions should be imposed on opposer for failure to provide discoveryApplicant's motion for sanctions granted 1/23/2008OPP 91162372HighBeam Marketing, LLC v. Highbeam Research
2(e)(1); whether the designations applicant seeks to register function as service marksRefusal Reversed in all three cases 1/16/2008EX 78199832ICE Futures U.S., Inc. SUGAR NO. 14, SUGAR NO. 11, and COTTON NO. 2 [all marks for: financial services, namely, futures exchange and related commodity trading services]
2(e)(2)Refusal Affirmed 12/12/2007EX 78710805Spirits of New Merced, LLC YOSEMITE BEER [alcoholic beer]
whether applicant's mark is registrable under Section 2(f)Opposition Sustained 11/30/2007OPP 91163556Target Brands, Inc. v. Shaun N.G. Hughes ULTIMATE POLO [sun protective clothing for men, women and children, namely, shirts]
whether opposer's pleadings of 2(d) priority and applicant's lack of bona fide use are sufficient to state claims for oppositionMotion to Dismiss Denied 11/21/2007OPP 91175571Fair Indigo LLC v. Style Conscience STYLE WITH A CONSCIENCE [jewelry, watches, necktie fasteners] STYLE CONSCIENCE [jewelry made from or coated with precious metals and their alloys and/or precious stones, namely, pendants, bracelets, earrings, and necklaces]
whether applicant's identification of goods is sufficiently definiteRefusal Reversed 10/31/2007EX 78487208Thor Tech, Inc. CHATEAU RESORT [park trailers]
2(e)(4)Refusal Affirmed 10/29/2007EX 78157550Piano Factory Group Inc. VOSE & SONS [pianos, namely, upright pianos, grand pianos, and digital pianos; piano keyboard instruments]
2(d)Refusal Affirmed 9/4/2007EX 78618843Ginc UK Limited ZOGGS TOGGS [swimsuits, swim caps, warm-up suits, t-shirts, jackets and wet suits]
functionality; whether applicant's claimed mark has acquired distinctivenessOpposition Sustained on both grounds 8/31/2007OPP 91119166Saint-Gobain Corporation v. 3M Company a specific shade of purple color applied to the entire rough side of applicant's goods [sandpaper, namely, coated abrasives with either paper or cloth backing]
2(e)(4)Refusal Reversed 8/28/2007EX 78521961Joint-Stock Company žBaikÓ BAIK [vodka]
FraudPetition to Cancel Denied 8/28/2007CANC 92043953Tri-Star Marketing, LLC v. Nino Franco Spumanti S.R.L. RUSTICO [wines and sparkling wines]
Abandonment; fraudPetition to Cancel Dismissed (Respondent's motion for summary judgment granted) 8/22/2007CANC 92044132Paris Glove of Canada, Ltd. v. SBC/Sporto Corp. AQUA STOP (rectangular form) [footwear, namely, rubbers and boots]
whether applicant's recited goods are goods in trade; whether applicant's claimed mark is inherently distinctive or has acquired distinctiveness under Section 2(f)Refusal Affirmed on both grounds 8/17/2007EX 76603323MGA Entertainment, Inc. configuration of a trapezoidal cardboard box [trapezoidal cardboard boxes for toys, games, playthings, etc.]
2(d); whether applicant's specimen is acceptable to show actual use of the mark in commerceRefusal Affirmed on both grounds 8/14/2007EX 76627857Chica, Inc. CORAZ"N BY CHICA (and design) [jewelry, necklaces, jewelry chains, charms; watches and clocks, watch straps and bands, watch cases; earrings, rings as jewelry]
whether applicant must provide an amended identification of goods and amended classification; 2(d)Refusal Affirmed as to cited mark PAPER DOLL but reversed as to other grounds for refusal 8/13/2007EX 76451078Paper Doll Promotions, Inc. PAPER DOLL PROMOTIONS [costumes, namely, masquerade costumes, Halloween costumes, Mardi Gras costumes, and custom costumes]
2(a) [geographically deceptive]Refusal Affirmed 8/13/2007EX 76624790Beaverton Foods, Inc. NAPA VALLEY MUSTARD CO. [condiments, namely, mustard]
2(d)Refusal Affirmed 8/7/2007EX 785537151st USA Realty Profession-als, Inc. 1st USA (and design) [real estate brokerage and listing services]
Whether applicant's web page specimen is acceptableRefusal Reversed 7/31/2007EX 76482852Valenite Inc. VALPRO [tools for power operated metal cutting machines, namely turning, milling, grooving, drilling, boring and threading tools; and cutting inserts and tool holders for power operated metal cutting machines and tools; and component parts therefor]
2(d); laches and acquiescencePetition Dismissed (confusion likely but defenses applicable) 7/31/2007CANC 92044366The Christian Broadcast-ing Network, Inc. v. ABS-CBN International CBN [television broadcasting services]; CBN [educational services, namely, seminars, workshops and conferences in the fields of Christian living, finances, marriages, veterans, and song writing; Christian evangelical ministerial services including outreach, counseling, and discipleship]; CBN WORLREACH [Christian evangelical ministerial services including outreach, counseling, and discipleship]; CBN NEWS [Entertainment, namely, television news shows] ABS-CBN [television broadcasting services via satellite and cable; telephone calling card services]
2(e)(1)Refusal Affirmed in both cases 6/18/2007EX 78542726IP Carrier Consulting Group ipPICS [telecommunications access services, namely, subscription-based access services featuring a device that allows the user to access high speed transmission of images and video via a global computer network, computers and wireless devices] and ipPIPE [telecommunications access services, namely, subscription-based access services featuring a device that allows the user to access high speed transmission of voice, data, images, video, and audio via a global computer network, computers and wireless devices]
2(d)Opposition Sustained 6/18/2007OPP 91117558Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang DR. SCHOLL'S and AIR-PILLO [both marks for: shoe insoles] DR. AIR [footwear and insoles for footwear]
whether the application from which respondent's registration issued was void ab initio under Section 1(a) [whether the application was filed by the owner of the mark]Petition to Cancel Granted 6/14/2007CANC 92032524Great Seats, Ltd. v. Great Seats, Inc. GREAT SEATS INC. (in stylized lettering) [ticket agency services for concerts, theatrical performances, and sporting events]
FraudSummary judgment granted for opposer on the issue of fraud, but opposer required to submit evidence of its standing 6/6/2007OPP 91152940Sinclair Oil Corporation v. Sumatra Kendrick sun design [retail apparel and gift store services; and other services]; and other marks STAACHI'S CO. 1996 (and sun design) [retail store services featuring bath products, gift products and candy products]
whether respondent has standing for its cancellation counterclaim and whether one of the grounds asserted is time-barredMotion to Dismiss Counter-claim for lack of standing denied; Motion to strike time-barred ground granted 6/6/2007OPP 91161028Finanz St. Honore, B.V. v. Johnson & JohnsonJohnson & Johnson v. Finanz St. Honore, B.V. 2 pleaded registrations for the markLOVE'S BABY SOFT [cologne] and [cologne spray and other goods] KISSABLY BABY SOFT [hair shampoo, skin lotion, body wash]
whether respondent may reopen its time to respond to requests for admission or, alternatively, withdraw its admissions (and related issues)Re-spondent's motion to withdraw its admissions granted; petitioner's motion for summary judgment denied 6/6/2007CANC 92045576Gerald David Giersch, Jr. and Benjamin J. Giersch v. Scripps Networks, Inc.
Section 6 disclaimer requirement of the words ALPINE SPRING WATER (and whether that phrase has become distinctive of applicant's goods under Section 2(f)) [Note: Applicant disclaimed the words SPRING WATER]Refusal Affirmed 5/31/2007EX 76201270Crystal Geyser Water Company CRYSTAL GEYSER ALPINE SPRING WATER [bottled spring water]
whether petitioner has stated a valid ground for cancellation under Section 14(3)Respondent's Motion to Dismiss Granted, but Petitioner permitted 30 days to file an amended petition 5/30/2007CANC 92046167Otto International, Inc. v. Otto Kern GmbH OTTO and OTTO (and design) OTTO KERN [goods in Classes 18 and 25]
2(d); lachesCross-motions for summary judgment denied 5/23/2007CANC 92041493Fishking Processors, Inc. v. Fisher King Seafoods Limited FISHKING (used as both a trade name and a trademark) and FISHKING PROCESSORS INC. (used as a trade name) [all for: fresh and frozen fish] FISHER KING SEAFOODS [fresh and frozen seafood]
2(d)Opposition Sustained 5/21/2007OPP 91122964Fort James Operating Company v. Royal Paper Converting, Inc. 2 design marks [both marks for: paper towels] design mark [paper towels, paper face tissues, paper napkins, and toilet paper]
2(d); dilutionOpposition Dismissed 5/15/2007OPP 911177397-Eleven, Inc. v. Lawrence I Wechsler BIG GULP and a family of marks comprising or incorporating the word GULP [fountain drinks] GULPY [portable animal water dishes and animal water containers sold empty]
2(d) [priority]Opposition Dismissed in both cases [Appli-cant's motion for summary judgment granted] 5/11/2007OPP 91168152Westrex Corporation v. New Sensor Corporation GOLD LION [electron tubes (vacuum tubes)] GENALEX GOLD LION and GOLD LION [both marks for: electron tubes (vacuum tubes)]
2(e)(1) [genericness]; whether, if not generic, applicant's mark has acquired distinctiveness under Section 2(f)Refusal Affirmed on both grounds 4/17/2007EX 78076812Lens.com, Inc. LENS [retail store services featuring contact eyewear products rendered via a global computer network]
genericness [whether applicant's mark is registrable on the Supplemental Register]Refusal Affirmed 4/17/2007EX 78349181Active Ankle Systems, Inc. DORSAL NIGHT SPLINT [orthopedic splints for the foot and ankle]
2(d)Opposition Sustained 4/13/2007OPP 91153141Motion Picture Association of America, Inc. v. Respect Sportswear, Inc. RATED R [certification mark for certifying that a motion picture film is an adult film in some of its aspects and treatment so far as language, violence, nudity, and sensuality are concerned and that no one under 17 should be admitted unless accompanied by a parent or guardian]; and other certification marks incorporating the letter R, for certification similar to that described above RATED R SPORTSWEAR [men's and ladies' shirts, pants, ladies' dresses, shorts and jackets]
FraudPetition to Cancel Granted (Petition-er's motion for summary judgment granted) 4/9/2007CANC 92042991Hachette Filipacchi Presse v. Elle Belle, LLC ELLE BELLE [clothing articles for men, women, and children, namely, shirts, blouses, dresses, evening wear, skirts, trousers, vests, jerseys, pants, pajamas, t-shirts, socks and stockings, singlets, corsets, garters, underpants, petticoats, hats, head scarves, neckties, raincoats, overcoats, great coats, bathing suits, sports overalls, wind resistant jackets and ski pants]
2(d)Refusal Affirmed as to all three cited registra-tions 4/4/2007EX 76578579Association of the United States Army 3 cited registrations, all owned by the same entity:U.S. ARMY (and design) [employment services, namely, personnel placement services, employment agency services, employment counseling and recruiting services, and other services]; U.S. ARMY RESERVE (and design) [same services as in registration, above]; U.S. ARMY (and design) [downloadable educational software for teaching users about the armed forces, career education, and military tactics and strategies] ASSOCIATION OF THE UNITED STATES ARMY (and design) [association services, namely, promoting the interests of active members of the U.S. Army, National Guard, reservists, civilians, retirees and family members]
2(d)Refusal Affirmed 3/27/2007EX 76595049Fiesta Palms, LLC CLUB PALMS MVP [casino services]
2(d)Opposition Sustained in both cases 3/23/2007OPP 91158891The Black & Decker Corporation v. Emerson Electric Co. a family of marks comprising or incorporating the word HOG [power-operated outdoor equipment, including blower-vacuums, lawn mowers, grass trimmers, chainsaws, edgers] DIRT HAWG and WATER HAWG [both marks for: vacuum cleaners, wet and dry vacuum cleaners, and replacement parts therefor]
whether the matter applicant seeks to register functions as a certification mark; genericness; whether applicant's mark has acquired distinctiveness under Section 2(f)Refusal Affirmed but only on the ground of lack of acquired distinctiveness under Section 2(f) 3/22/2007EX 75722091The Council on Certification of Nurse Anesthetists CRNA [certification mark for certifying that a person is a registered nurse who has met certain predetermined and objective standards and requirements for providing a wide range of nurse anesthesia services listed in the application for registration]
2(e)(4)Refusal Affirmed 3/15/2007EX 78204502Thermo LabSystems Inc. WATSON [computer software for use in laboratory information management, namely, software used in analyzing, reporting, and tracking pharmaceutical drug study sample data for regulatory compliance]
2(d); affirmative defense of lachesPetition to Cancel Granted 3/15/2007CANC 92042871Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone IZZY'S(in stylized form) [restaurant services] and related marks composite mark comprising THE AUTHENTIC FLAVOR, IZZY'S, BROOKLYN, BAGELS, KOSHER, and a number of design features [restaurant services featuring bagels as a main entr»e]
2(d)Opposition Sustained in both cases 3/13/2007OPP 91160755Nike, Inc. v. WNBA Enterprises, LLC S (and star design) [adult and youth wearing apparel, namely, jackets and warm-up suits, sweatshirts and suits, t-shirts, head bands, wrist bands, shorts, polo shirts, sweaters, tank tops, hats, and gloves; and other goods] and S STARTER (and star design) [sports bags and other goods] S and star design [athletic bags, all purpose sports bags, gym bags, and other goods]and S and star design [t-shirts, sweatshirts, sweatpants, tank tops, sweaters, hats, warm-up tops, jackets, wind resistant jackets, head bands, wrist bands, boxer shorts, slacks, gloves; and other goods]
2(a) [false suggestion of a connection]Petition to Cancel Granted 3/8/2007CANC 92042323Association Pour La Defense Et La Promotion De L'Oeuvre De Marc Chagall Dite Comite Marc Chagall v. Bondarchuk MARC CHAGALL [vodka]
2(d)Opposition Dismissed; Petitions to Cancel Denied 3/7/2007OPP 91160856Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC MEMBER LEADING JEWELERS GUILD (and design) [indicating membership in an organization consisting of jewelry distributors] LEADING JEWELERS OF THE WORLD (and design) [indicating membership in an organization which sells diamond jewelry]; "LEADING JEWELERS OF THE WORLD" [indicating membership in an organization which sells diamond jewelry]; "LEADING JEWELERS OF THE WORLD" [association services, namely, promoting the interests of vendors of quality diamonds and diamond jewelry]
2(d)Opposition Sustained as to all classes 2/28/2007OPP 91150925Chicago Bears Football Club and NFL Properties LLC v. 12th Man/Tennessee LLC CHICAGO BEARS and BEARS [entertainment services in the nature of football exhibitions, some of which are rendered through the media of radio and TV broadcasts; a wide variety of products, including: paper stickers, clothing (t-shirts, jackets, sweatshirts, shorts, pants, and other items); and other goods] 12TH BEAR [in Class 14: jewelry; in Class 16: bumper stickers; in Class 21: insulated beverage containers; in Class 24: towels; in Class 25: clothing for informal wear, namely, pants, jackets, shirts, t-shirts, sweatshirts, shorts; in Class 26: ornamental novelty buttons]
2(d)Opposition Dismissed 2/27/2007OPP 91161331Parfums de Coeur, Ltd. v. Lory Lazarus BOD MAN and BOD [both marks for: men's fragrances] BM BODYMAN (and design) [entertainment services in the nature of an animated TV series]
whether applicant's specimens show use of its mark on its goods [mutilation]Refusal Reversed 2/22/2007EX 78976265Royal BodyCare, Inc. NANOCEUTICAL [dietary and nutritional supplements]
2(d); whether appt. may amend its identification of services; whether opposer may amend its notice of opp. to include other classes; whether applicant may divide out unopposed classes in its applicationCross-motions for summary judgment denied; applicant's motion to amend denied; opposer's motion to amend denied; applicant's motion to divide granted 2/22/2007OPP 91168402Drive Trademark Holdings LP v. Inofin and Mark Walsh D DRIVE (and design), D DRIVE FINANCIAL SERVICES (and design), and D (and design) [all three marks for: financial services, namely, purchasing loans from automobile dealerships] DRIVEUSA [financing services, namely, vehicle loans, assisting borrowers in applying for loans, preparing and originating auto loan forms]
whether applicant's specimens show use of its mark in connection with its recited goodsRefusal Affirmed 2/21/2007EX 78331176Brian Jay Osterberg CONDOMTOY CONDOM [condoms]
2(d)Opposition Sustained 2/21/2007OPP 91157529B.V.D. Licensing Corporation v. Florencio Rodriguez B.V.D. (in typed form and in various stylized forms) [men's and boys' underwear] BHD (and design) [a variety of clothing items, including: underwear]
2(d)Opposition Sustained 2/21/2007OPP 91158016ProQuest Information and Learning Company v. Jacques R. Island PROQUEST(in typed format and design format) [computer and software for retrieval of textual and graphic materials, from newspapers, periodicals, dissertations, and other publications, and bibliographic citations and abstracts relating thereto; computer assisted research services; electronic storage of textual and graphic materials from newspapers, periodicals, journals, dissertations and other publications; and other services] INQUEST [computer software for use by institutions and individuals in the fields of business, government, law, and academia to conduct research, namely, a database and filing program for gathering and storing information and bibliographic references, with functions for scanning or downloading online information and interchanging data between PCs, desktop computers, servers, and Internet-based data storage sites; and to provide routines that manipulate and compile stored data into books, monographs, legal briefs, essays, articles and theses]
2(d) [applicant's claim of priority based on Pan American Convention]Opposition Dismissed [appli-cant's motion for summary judgment granted] 2/16/2007OPP 91159871Mario Diaz v. Servicios De Franquicia Pardo's S.A.C. PARDO'S CHICKEN [restaurant services] PARDO'S CHICKEN (in stylized lettering) [eat-in and take-out restaurant services]
2(e)(1) [whether applicant's mark is registrable under Section 2(f)]Opposition Dismissed (on remand from U.S. Dist. Ct., ED Michigan) 2/15/2007OPP 91125884re Kellogg Company v. General Mills, Inc. CINNAMON TOAST CRUNCH [cereal derived ready-to-eat food bar]
whether the applicant's declaration in support of its application is acceptableRefusal Affirmed 2/13/2007EX 76585901Dermahose Inc. EPIL HOSE [pantyhose treated with inhibitors of hair growth]
2(e)(1)Refusal Affirmed 2/9/2007EX 78494701Litehouse, Incorporated CAESAR!CAESAR! [salad dressings]
2(d); whether applicant had bona fide intent to use its mark as of the filing date of its applicationOpposition Sustained, but only on 2(d) grounds 2/9/2007OPP 91157022The Wet Seal, Inc. v. FD Manage-ment, Inc. ARDEN B [women's clothing, footwear, purses and bags, hair ornaments and jewelry; retail apparel stores featuring women's clothing, footwear, hats and clothing accessories] ARDENBEAUTY [various fragrance products for personal use; a wide variety of cosmetics and skin care preparations; and other goods]
2(d)Opposition Sustained 2/9/2007OPP 91160627Miss Universe L.P., LLLP v. Community Marketing, Inc. MISS UNIVERSE and other marks incorporating those words [various goods and services related to beauty pageants] MR. GAY UNIVERSE [entertainment services in the nature of conducting a beauty pageant]
2(e)(3)Refusal Affirmed 2/1/2007EX 78486382South Park Cigar, Inc. YBOR GOLD [cigars, pipe tobacco and roll-your-own tobacco]
2(d); non-use of the mark on the recited goods as of the filing date of the application; affirmative defense of unclean hands (misuse of Federal registration symbol)Opposition Sustained on both grounds 1/23/2007OPP 91157982Barbara's Bakery, Inc. v. Barbara Landesman BARBARA'S (and other related marks) [a variety of food products including bakery goods; printed newsletters, printed recipes, and recipes sold as a component of food packaging] BARB'S BUNS BAKERY, INC. [printed recipes sold as a component of food packaging; recipe books; newsletters containing recipes for healthy lifestyles and information about baking techniques]
FraudOpposition Sustained(Opposer's motion for summary judgment granted) 1/23/2007OPP 91158304Hurley International LLC v. Paul and Joanne Volta THE SIGN (and design) [entertainment services, being vocal performances and/or instrumental performances; production of records, tapes, CDs, any digital media and films, radio, TV and Internet entertainment]
2(d)Refusal Reversed (but application remanded for amend-ment to alleged dates of use or, in alternative, amendment to claim a 1(b) basis for applica-tion) 1/19/2007EX 78401595The W.W. Henry Company, L.P. PATCH & GO [Portland cement based patch for use in patching, repairing or smoothing wall and floor surfaces, namely, wood, drywall, plaster, concrete, block wall, tile and wood paneling prior to painting or wallpapering]
2(e)(1)Refusal Affirmed 1/12/2007EX 76591278Cox Enterprises, Inc. THEATL [printed matter, namely, magazines, a weekly newspaper and a section of a newspaper in the fields of general and local, national and international news, directory type listings of businesses and organizations, shopping, retail sales, movies, theater, TV and radio programs, sporting events, concerts, museums, exhibitions and festivals, and sights and attractions of interest to residents and tourists and visitors to Atlanta, Georgia]
2(d); 2(a)Petition to Cancel Granted as to both registra-tions (but only on 2(d) grounds) 1/11/2007CANC 92040202L. & J.G. Stickley, Inc. v. Ronald C. Cosser THE CRAFTSMAN ALS IK KAN (and design) [furniture and related products] THE CRAFTSMAN ALS IK KAN (and design) [wood furniture polish]; THE CRAFTSMAN ALS IK KAN (and design) [furniture]
2(d)Opposition Sustained(in all four cases) [Opposer's motion for summary judgment granted] 1/3/2007OPP 91167237Venture Out Properties LLC v. Wynn Resorts Holdings, LLC CABANA [hotel services] CABANA BAR & CASINO [casino services]; CABANA BAR & CASINO (in stylized form) [casino services]; CABANA BAR [restaurant, bar and cocktail lounge services]; CABANA BAR & CASINO [restaurant, bar and cocktail lounge services]
whether applicant's mark has acquired distinctiveness and is registrable under Section 2(f)Refusal Reversed 12/28/2006EX 76570453The Black & Decker Corp. design of a key head [metal door hardware, namely, knobs, levers, leversets, handles and handle sets sold with deadbolt keys, and key blanks sold to supplement or to replace deadbolt keys for knobs, levers, handles, and handle sets]
2(e)(1)Refusal Affirmed 12/15/2006EX 75581859International Business Machines Corporation ESERVER [computer network access products, namely, computer hardware and operating software therefor that allow connectivity to and the administration of public and proprietary computer networks and the processing of information contained thereon]
2(a); 2(e)(2); 2(e)(3)Opposition Dismissed 12/14/2006OPP 91162078United States Playing Card Company v. Harbro, LLC VEGAS [playing cards]
genericness; whether, if not generic, applicant's mark is registrable under Section 2(f)Refusal Affirmed as to both classes, on both grounds asserted 12/11/2006EX 76570321The Outdoor Recreation Group OUTDOOR PRODUCTS [in Class 18: duffle bags, backpacks, tote bags, soft packs comprising backpacks or hikers' bags constructed of soft material which packs do not have a rigid frame for supporting the bag, adjustable belly bands used for backpacks, shoulder pad straps and accessory bands and straps sold separately from the bags heretofore mentioned, fanny packs, shoulder bags and belt pouches; in Class 25: clothing, namely, down booties, ponchos, gaiters which are protective, covers for footwear, chaps, parkas, pants, jackets, and rain suits]
2(d); whether applicant's drawing of its mark is a substantially exact representa-tion of the mark it uses in commerce, as shown on its specimens [mutilation]Refusal Affirmed(on 2(d) ground only) 11/16/2006EX 78249582Big Pig, Inc. PSYCHO [clothing, namely, hats, caps, jackets, t-shirts, aprons, shirts, blouses, shorts, pants, sweatshirts, sweatpants]
Section 6 disclaimer requirement (of the word ROUGE)Refusal Affirmed 11/14/2006EX 78638129Brown-Forman Corporation GALA ROUGE [wines]
2(d)Opposition Dismissed 11/14/2006OPP 91158556Truescents LLC v. Ride Skin Care, L.L.C. a family of marks, all incorporating the word GENUINE:GENUINE BODY [skin soaps, skin lotion, etc.]; GENUINE SPA [skin soaps, skin lotion, etc.]; GENUINE SKIN [skin soaps, skin lotion, etc.]; GENUINE FACE [skin soaps, skin lotion, etc.]; GENUINE HAIR [shampoo, conditioner, etc.] design mark incorporating the words GENUINE, RIDE, and SKIN CARE [non-medicated skin care products, namely, sunscreen, skin cleansers, skin moisturizers, pre-moistened cosmetic wipes and lip balms]
2(d)Petition to Cancel Granted 11/7/2006CANC 92040128Mattel, Inc. v. Funline Merchandise Co., Inc. RAD RIGS [toy vehicles and accessories therefor] RAD RODS (in stylized lettering) [mechanical action toy vehicles]
whether the judgment entered in plaintiff's favor in this case was voidMotion to Set Aside Default Judgment granted 11/1/2006CANC 92043691Smart Inventions, Inc. v. TMB Products, LLC
whether applicant's drawing of its mark is a substantially exact representa-tion of the mark it uses in commerce, as shown on its specimens [mutilation]Refusal Reversed in all three classes 10/26/2006EX 784422071175856 Ontario Ltd. WSI (and design) [in Class 35: franchising services, namely, offering technical assistance in the establishment and/or operation of businesses that provide website development; Internet marketing services, and design and web hosting services; in Class 41: training in the field of Internet and websites used for businesses; in Class 42: technical consulting services for businesses in the field of Internet and website use; website development and design; and web hosting services, namely, hosting the websites of others on a computer server for a global computer network]
2(d)Refusal Reversed 9/26/2006EX 76361399Homeland Vinyl Products, Inc. configuration of applicant's goods [non-metal fence rails]
whether opposer has standing to oppose under Section 2(a) [disparagement; immoral or scandalous matter]Opposition Dismissed [appli-cant's motion to dismiss granted] 9/13/2006OPP 91169211Michael J. McDermott v. San Francisco Women's Motorcycle Contingent DYKES ON BIKES [education and entertainment services in the nature of organizing, conducting, and promoting parade contingents, community festivals, events, street fairs, forums, seminars, parties, and rallies to support, organize and motivate women motorcyclists everywhere to do the same, thereby fostering pride in a wide variety of sexual orientations and identities, namely, lesbian, bisexual, and transgender]
AbandonmentPetition to Cancel Granted 9/5/2006CANC 92044407Quality Candy Shoppes/Buddy Squirrel of Wisconsin, Inc. v. Grande Foods KRAZY KORN [toasted corn product for snack purposes]
whether to modify protective order to permit in-house counsel access to confidential information; whether to re-designate certain evidence as non-confidentialOpposer's motion to modify protective order denied; opposer's motion to re-designate granted in part; opposer required to disclose and permit discovery of any expert witness it intends to depose for rebuttal 8/24/2006OPP 91157923Georgia-Pacific Corporation and Fort James Operating Company v. Solo Cup Company configuration of applicant's goods [plastic cup lids]
2(d); counterclaim to cancel opposer's pleaded registration on ground that opposer does not controlůor is unable to exercise control overůits certification markOpposition Sustained; Counter-claim to Cancel Dismissed 8/23/2006OPP 91118587Tea Board of India v. The Republic of Tea, Inc. DARJEELING (and design) [certification mark that certifies that a blend of tea contains at least 60% tea originating in the Darjeeling region of India and that the blend meets other specifications established by the certifier] DARJEELING NOUVEAU [tea]
whether applicant's mark is functional; 2(e)(1); whether, if descriptive, applicant's mark has acquired distinctiveness; affirmative defense of estoppelOpposition Sustained on grounds that applicant's mark is merely descriptive and without acquired distinctiveness 8/4/2006OPP 91119899Duramax Marine, LLC v. R.W. Fernstrum & Company a design mark consisting of a two-dimensional graphic representation of the goods applicant manufactures [manufacturing marine heat exchangers to the order and specification of others]
2(e)(2)Refusal Reversed in both cases 8/2/2006EX 78304942Brouwerij Nacional Balashi NV BALASHI BEER and BALASHI [both marks for beer]
genericness (whether applicant's mark is registrable on the Supplemental Register)Refusal Affirmed 7/25/2006EX 78369245Rodale Inc. NUTRITION BULLETIN [providing information in the field of health and diet via a web site on the Internet]
2(a) [false suggestion of a connection]Refusal Affirmed 7/20/2006EX 78146926White MOHAWK[cigarettes]
2(e)(1) [descriptive]Refusal Affirmed 7/6/2006EX 76561135VanillaGorilla, L.P. 3-0'S [automobile parts, namely, car wheel rims]
Whether the concurrent use applicant is entitled to the concurrent use registration it seeksConcurrent use applicant granted registration but for lesser territory than it sought; defending registrant's registration restricted to exclude territory of concurrent use applicant 7/6/2006CU 94001250CDS,Incorporated v. I.C.E.D. Manage-ment, Inc.
2(e)(1) [descriptive]Refusal Affirmed 7/5/2006EX 76560855GMACMortgage Corporation WORKPLACEHOME-LOANS [real estate mortgage banking and lending services; loan origination and financing via a global communications network]
2(e)(5); alternatively, lack of acquired distinctiveness under Section 2(f)Refusals Affirmed 7/5/2006EX 76439661HowardLeight Industries, LLC Configuration of an ear plug [
2(e)(1)RefusalAffirmed in all three classes 6/23/2006EX 76424575ViventiaBiotech Inc. ARMED ANTIBODIES[in Class 1: biological preparations for use in the manufacture of biopharmaceutical and biotechnology products; in Class 5: biopharmaceutical and biotechnology reagents, namely, hybridoma-generated antibodies and recombitant fragments thereof for medical diagnostic use in the treatment of cancer, and other goods; in Class 42: research and product development services in connection with the biopharmaceutical and biotechnology industries]
2(d)RefusalAffirmed 6/21/2006EX 76393986JumpDesigns, LLC JUMPDESIGNS[furniture, and goods of various materials, not included in other classes, in the nature of furnishings, and decorative and functional appointments, for home, office and commercial settings, including desks and office furniture and numerous other goods]
whether the matter applicant seeks to register functions as a trademark; 2(e)(5) [functional-ity]Refusal Affirmed on both grounds 6/14/2006EX 76467774N.V.Organon the orange flavor of applicant's goods [pharmaceuticals for human use, namely, antidepressants in quick-dissolving tablets and pills]
2(e)(2); 2(e)(1)Refusal Affirmed on 2(e)(2) grounds only 6/8/2006EX 78341041Joint-StockCompany žBaikÓ BAIKALSKAYA[vodka]
whether applicant's specimens are acceptable to show use of its mark in commerceRefusal Affirmed 6/5/2006EX 76181456Settec, Inc. ALPHA-DISC(anddesign) [blank optical discs; blank CDs for audio and video recording; blank CD-ROMs; blank video discs; pre-recorded optical discs featuring motion pictures or music; and a number of other goods; computer software for applying copy protection to all of applicant's recited goods]
whether applicant's marks are functional; whether applicant's marks have acquired distinctiveness; fraudOpposition Sustained in both cases based on function-ality and the failure to show distinctiveness, but not on the basis of fraud 6/5/2006OPP 91153479American Flange & Manu-facturing Co., Inc. v. Rieke Corp. two product designs for plugs that form integral parts of closure systems for 55-gallon drums [metal closure fittings for drum containers]
2(d); Section 6 disclaimer requirement (of the word SOLU-TIONS)Refusal Affirmed only as to require-ment for disclaimer 5/23/2006EX 76267086BoxSolutions Corp. BOX SOLUTIONS (and design) [computer hardware, namely, communications servers]
2(a) [disparagement]Examining Attorney's Request for Recon-sideration Granted as to goods in Classes 25 and 35 [Refusal Affirmed in both applica-tions as to Classes 25 and 35; Refusal Reversed in both applica-tions as to Class 28] 5/23/2006EX 76511144re Squaw Valley Develop-ment Company SQUAW and SQUAW ONE [both marks for: in Class 25: clothing and accessories, namely, jackets, sweatshirts, sweaters, shirts, pants, bathrobes, t-shirts, gloves, head bands, vests, hats; in Class 28: skis, ski poles, ski bindings, ski tuning kits comprising waxes and adjustment tools, ski equipment, namely, power cords; in Class 35: retail store services in the field of sporting goods and equipment, apparel for men, women and children, footwear, headgear, and related goods and services]
whether applicant must make a unitary disclaimer of žSNAP ON 3000Ó rather than separate disclaimers of žSNAP ONÓ and ž3000ÓRefusal Reversed 5/17/2006EX 76544861GrassGmbH SNAP ON 3000 AIRMATIC [a wide variety of furniture hardware and fittings in Classes 6 and 20]
whether opposer may amend its oppositions to assert that there exists no basis for registration of applicant's marks under Section 44 and whether opposer is entitled to summary judgment on that groundOpposer's motion to amend the oppositions granted; Opposer's motion for summary judgment granted only to the extent that applicant is allowed 30 days to amend its basis for registration 5/4/2006OPP 91101408Karsten Manufacturing Corporation v. Editoy AG Editoy B.V. Pingu B.V. and Joker, Inc. PING and ZING [both marks for a large variety of sporting goods and accessories, primarily golf-related items] PINGU [goods in Classes 18, 25, and 28] and PINGU (and design) [goods in Classes 9, 16, 18, 25, and 28]
whether applicant's specimens show service mark use of its markRefusal Reversed 4/28/2006EX 76213721Ancor Holdings, LLC INFOMINDER [reminder services in the area of upcoming dates and events; personal scheduling services provided via the Internet]
2(d)Refusal Affirmed (but only as to cited registration for services in Class 35) 4/24/2006EX 78334625Mark Thomas MARCHE NOIR [jewelry]
2(d)Petition to Cancel Denied 4/19/2006CANC 92043377National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation design mark [lapel pins; newsletters, magazines, and information bulletins in the field of rural electrification, and pens and pencils; conducting educational workshops, seminars, and training programs, and management, law, and labor relations update seminars and lectures, in the field of rural electrification; association services, namely, promoting the interests of the rural electrification industry and members of rural electric cooperatives] SUZLON (and design) [wind turbines and their components, namely, nacelle, gearbox, generator, control system, hub, tower, and blades]
whether applicant's specimens show trademark use of its mark on its recited goodsRefusal Affirmed 4/12/2006EX 76171288Aerospace Optics, Inc. SPECTRUM (and design) [illuminated pushbutton switches, namely, pushbutton switches with dimmable illumination for use in military and civilian aircraft cockpits, aviation crewstations, ships and command, communications, control and intelligence systems]
2(e)(1) [deceptively misdescriptive]Refusal Affirmed in both classes 4/6/2006EX 78083495Moti Shniberg SEPTEMBER 11, 2001 [in Class 16: books in the field of history; series of fictional books; in Class 41: entertainment services, namely, ongoing radio programs in the field of news, ongoing TV programs in the field of drama, TV news shows, theatre productions, visual and audio performances, musical variety, news and comedy shows; production of operas, TV shows, plays, radio programs; providing a radio program in the field of news and historical events]
whether applicant's specimens show trademark useRefusal Affirmed 3/31/2006EX 76470648Genitope Corporation fingerprint man design [biopharmaceutical preparations used to treat cancer in humans, namely, individualized cancer treatments prepared specifically for each individual patient from whom tumor tissue has been received]
Fraud; counterclaim to cancel based on 2(d) and fraudPetition to Cancel Denied; Counter-claim for Cancella-tion Granted on 2(d) grounds 3/31/2006CANC 92040571Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc. MAIDS TO ORDER [franchising, namely, offering technical assistance in the establishment and operation of commercial and residential maid services and carpet cleaning services] MAID TO ORDER [cleaning of domestic and business premises]
2(a) [deceptive]Refusal Affirmed 3/27/2006EX 75819306ALP of South Beach Inc. CAFETERIA [restaurants providing full service to sit-down patrons, excluding cafeteria-style restaurants]
whether non-use as to some of the services recited in the application renders entire application void, in the absence of a pleading of fraudSummary judgment granted to opposer as to services for which applicant admits non-use; summary judgment denied as to remaining services 3/17/2006OPP 91162008Grand Canyon West Ranch, LLC v. Hualapai Tribe GRAND CANYON WEST [airport services; air transportation services; arranging for recreational travel tours and providing related transportation of passengers by air, boat, raft, rail, tram, bus, motorized on-road and off-road vehicles, non-motorized vehicles featuring bicycles, and domestic animals]
2(e)(1)Refusal Affirmed 3/8/2006EX 78278235Classic Media, Inc. SATURDAY MORNING T.V. [entertainment in the nature of on-going television programs in the field of comedy]
2(e)(1)Refusal Affirmed 3/6/2006EX 76300876Finisar Corporation SMARTSFP [optical transceivers]
2(e)(1)Refusal Affirmed 3/6/2006EX 76310516Westlake Plastics Company FM4910 [flame retardant fluoropolymer plastic material for the semiconductor industry sold in sheets, rods, and other preformed shapes]
2(e)(1)Refusal Affirmed 3/2/2006EX 76565486King Koil Licensing Co., Inc. THE BREATHABLE MATTRESS [beds, mattresses, box springs and pillows]
2(e)(4)Refusal Affirmed as to both classes 2/28/2006EX 76545470Adrian Giger and Thomas Giger GIGER MD [in Class 10: medical apparatus, namely, physical therapy apparatus; orthopedic articles, namely, powered exercise machines for therapeutic services; and exercise machines for therapeutic purposes; in Class 28: gymnastic and sporting articles, and exercising equipment, namely, powered exercising equipment; exercise machines; and gymnastic apparatus]
2(a) [immoral or scandalous mark]Refusal Affirmed in all classes 2/15/2006EX 75788830Red BullGmbH BULLSHIT [in Class 32: beer, mineral waters, aerated waters, carbonated waters, flavored waters and other non-alcoholic beverages; and other goods; in Class 33: rum, vodka, gin, tequila, whiskey, brandy spirits, distilled spirits, wine, and other goods; in Class 42: catering; hotel and lodging services; restaurant and bar services; medical care services; beauty salon services; veterinary services; scientific and research services; and a wide variety of other services]
2(e)(1)RefusalAffirmed 2/15/2006EX 76541018Promo Ink PARTY AT A DISCOUNT! [preparation and dissemination for others of advertising and promotional matter via global communications networks in the field of shopping for goods and services]
2(e)(1)RefusalAffirmed 2/15/2006EX 78195616Hunter FanCompany ERGONOMIC[ceilingfans]
2(d)Opposition Sustained as to both classes 2/9/2006OPP 91156879Starbucks U.S. Brands, LLC and Starbucks Corporation v. Marshall S. Ruben STARBUCKS [coffee, tea, spices, herb tea, chocolate, and cocoa]; STARBUCKS COFFEE (and design) [coffee; restaurant services featuring coffee and espresso beverages and also serving sandwiches and breakfasts]; and numerous other registered marks comprising or incorporating the word STARBUCKS for a variety of goods and services] LESSBUCKS COFFEEE [in Class 30: coffee, tea, and coffee-based and tea-based beverages; in Class 35: retail store services featuring coffee, tea, coffee-based beverages, and tea-based beverages]
2(d); lachesPetition to Cancel Denied 2/2/2006CANC 92041265Teledyne Tech-nologies, Inc. v. Western Skyways, Inc. GOLD SEAL [airplane parts, namely, ignition harnesses] GOLD SEAL [aircraft engines]
2(e)(1)Refusal Reversed 1/31/2006EX 78220033Grand Forest Holdings Incorporated FREEDOM FRIES [frozen French fried potatoes]
2(d) [priority]Opposition Dismissed (Appli-cant's motion for summary judgment granted) 1/30/2006OPP 91163436Aktiesels-kabet af 21. November 2001 v. Fame Jeans JACK & JONES [a wide variety of clothing items] JACK & JONES [a wide variety of clothing items]
2(d)Opposition Sustained 1/23/2006OPP 91159335Centraz Industries, Inc. v. Spartan Chemical Company, Inc. ICE SHINE [floor finishing preparations] ISHINE (in stylized lettering) [floor finishing preparations]
genericness;whether applicant's marks, if not generic, are nonetheless merely descriptive;whether applicant's marks, if merely descriptive though not generic, are registrable under Section 2(f)Refusal Reversed in all four cases and as to all classes [Marks will be published with 2(f) notation.] 1/18/2006EX 75460305America Online, Inc. INSTANT MESSENGER and AOL INSTANT MESSENGER [both marks for:in Class 38: telecommunications services, namely, electronic transmission of data, images and documents via computer terminals; electronic mail services; and facsimile transmission; in Class 39: electronic storage of data and documents]INSTANT MESSENGER and AOL INSTANT MESSENGER [both marks for: in Class 42: computer services, namely, providing multiple user access to computer networks and bulletin boards and the transfer and dissemination of a wide range of information, providing a wide range of general interest information via computer networks]
2(d); counterclaim to cancel on the grounds of fraudOpposition Dismissed; Counter-claim to Cancel Granted 1/10/2006OPP 91116242Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha TUNDRA [men's, ladies' and children's clothing, namely, sweaters, hats, jackets, coats, t-shirts, vests and shirts] and TUNDRA SPORT [men's, ladies' and children's clothing, namely, sweaters, hats, jackets, coats, shorts, t-shirts, vests and shirts] TUNDRA [automobiles and structural parts thereof]
genericness [whether applicant's mark is registrable on the Supplemental Register]Refusal Affirmed 12/16/2005EX 75530795Reed Elsevier Properties Inc. LAWYERS.COM [providing an online interactive database featuring information exchange in the fields of law, legal news, and legal services]
genericness; 2(e)(1) [merely descriptive]Refusal Affirmed (on grounds of genericness and, in the alternative, as merely descrip-tive) 12/6/2005EX 76331011DNI Holdings Ltd. SPORTSBETTING.COM [providing casino games on and through the Internet wherein there are no actual money wagers; providing contests and sweepstakes on and through a website on the Internet; providing an Internet website featuring information in the fields of gaming, athletic competition and entertainment]
whether applicant had a bona fide intention to use its mark as of the application filing date [whether applicant may rely on certain evidence it offered in opposition to motion for summary judgment]Request for Recon-sideration Denied (Appli-cant's evidence considered and opposer's motion for summary judgment denied) 11/29/2005OPP 91158854Vignette Corporation v. Steven Marino VIGNETTE EDITORIAL [video post-production services, namely, editing of music videos, TV commercials, and motion pictures]
whether applicant may amend its answers to the oppositions to assert counterclaims for cancellation based on fraudOpposer's motion to amend granted 11/21/2005OPP 91157260Turbo Sportswear, Inc. v. Marmot Mountain Ltd. marks comprising or incorporating a stylized mountain design [numerous items of clothing] two marks comprising a stylized mountain design [both marks for goods in Classes 18 and 25 (and in other classes not opposed)]
2(c)Petition to Cancel Granted as to Classes 16, 35 and 42; Petition to Cancel Denied as to Class 41 11/18/2005CANC 92041171Chester L. Krause v. Krause Publica-tions, Inc. KRAUSE PUBLICATIONS [in Class 16: magazines featuring a variety of subject matters; trading cards on knives, series of books and price guides relating to antiques and other collectibles, coins and firearms; calendars;in Class 35: dissemination of advertising of others relating to hobby and collectible items via a global computer network; arranging and conducting trade shows featuring knives, daggers, swords, and cutlery or coins or sports cards, antiques and other collectibles; in Class 41: entertainment services in the nature of competitions and awards in the field of cutlery;in Class 42: conducting awards programs to recognize excellence in designs and themes of newly minted coins]
2(d); whether opposer has used its marks žin commerceÓOpposition Dismissed in all six cases 10/21/2005OPP 91122072First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc. FIRST NIAGARA, FIRST NIAGARA INSURANCE BROKERS, and FIRST NIAGARA INSURANCE BROKERS, INC. (and design) [all three marks for insurance brokerage services and other financial services] FIRST NIAGARA [banking services, insurance services (of various sorts), financial services (of various sorts), leasing services (of office equipment, construction equipment, building machinery, and motor vehicles)]; FIRST NIAGARA FINANCIAL GROUP and FIRST NIAGARA (and design) [both marks for the same services recited above]; FIRST NIAGARA ONLINE, FIRST NIAGARA BANK'S CUSTOMER CONNECTION LINE, and FIRST NIAGARA E-CD [all three marks for banking services]
2(d); whether opposer has used its marks in commerceOpposition Dismissed in all six cases 10/21/2005OPP 91122193First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc. FIRST NIAGARA, FIRST NIAGARA INSURANCE BROKERS, and FIRST NIAGARA INSURANCE BROKERS, INC. (and design) [all three marks for insurance brokerage services and other financial services] FIRST NIAGARA [banking services, insurance services (of various sorts), financial services (of various sorts), leasing services (of office equipment, construction equipment, building machinery, and motor vehicles)]; FIRST NIAGARA FINANCIAL GROUP and FIRST NIAGARA (and design) [both marks for the same services recited above]; FIRST NIAGARA ONLINE, FIRST NIAGARA BANK'S CUSTOMER CONNECTION LINE, and FIRST NIAGARA E-CD [all three marks for banking services]
2(d); whether opposer has used its marks žin commerceÓOpposition Dismissed in all six cases 10/21/2005OPP 91150237First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc. FIRST NIAGARA, FIRST NIAGARA INSURANCE BROKERS, and FIRST NIAGARA INSURANCE BROKERS, INC. (and design) [all three marks for insurance brokerage services and other financial services] FIRST NIAGARA [banking services, insurance services (of various sorts), financial services (of various sorts), leasing services (of office equipment, construction equipment, building machinery, and motor vehicles)]; FIRST NIAGARA FINANCIAL GROUP and FIRST NIAGARA (and design) [both marks for the same services recited above]; FIRST NIAGARA ONLINE, FIRST NIAGARA BANK'S CUSTOMER CONNECTION LINE, and FIRST NIAGARA E-CD [all three marks for banking services]
2(e)(1)Refusal Affirmed 10/18/2005EX 76436826The Place, Inc. THE GREATEST BAR [restaurant and bar services]
whether the words applicant seeks to register function as a trademark for applicant's goodsRefusal Affirmed 9/20/2005EX 76420605First Draft, Inc. FERN MICHAELS [series of fictional books]
genericness (plant varietal name)Refusal Affirmed 9/19/2005EX 76289621KRB Seed Company, LLC REBEL [grass seed]
2(d); dilutionOpposition Dismissed 8/18/2005OPP 91154055Blue Man Productions, Inc. v. Erich Tarmann BLUE MAN GROUP [entertainment services in the nature of live musical and theatrical performances; musical sound recordings; decorative magnets; postcards and posters; hats, t-shirts, sweatshirts; mugs; watches, ornamental pins; jackets and caps; prerecorded videos] BLUEMAN [tobacco, smokers' articles, namely, cigarettes]
2(e)(4)Refusal Reversed 7/13/2005EX 76445173Isabella Fiore, LLC
2(d)Opposition Dismissed 6/22/2005OPP 91153852Knight Textile Corp. v. Jones Investment Co., Inc. ESSENTIALS [women's clothing, namely, pants, blouses, shorts, and jackets for women] NORTON MCNAUGHTON ESSENTIALS [ladies' sportswear, namely, shirts, shorts, pants, jumpers, dresses, skirts, jackets, blouses, and vests]
whether certain of applicant's principals must be made available for discovery depositions; whether opposer must submit supplemental responses to applicant's document requestsApplicant's motion for protective order granted in part and denied in part; Applicant's motion to compel granted 4/27/2005OPP 91125458Pioneer Kabushiki Kaisha v. Hitachi High Tech-nologies America, Inc. ELITE [audio and video goods] SUPERSCAN ELITE [audio and video goods]
genericnessRefusal Affirmed 2/28/2005EX 76112441Eddie Z's Blinds and Drapery, Inc. BLINDSANDDRAPERY.COM [wholesale distributorship featuring blinds, draperies, and other wall coverings; retail store outlets featuring blinds, draperies and other wall coverings; retail store services featuring blinds, draperies and other wall coverings via a global computer network]
2(d)Refusal Affirmed 2/18/2005EX 76338228Work Zone, Inc. WORK ZONE (enclosed within a diamond shape) [protective boots and shoes for industrial use]
2(a) [false suggestion of a connection]Refusal Affirmed 9/9/2004EX 78175476Julie White APACHE [cigarettes]
genericness; whether applicant's mark, if not generic, has acquired distinctiveness under Sec. 2(f)Refusal Affirmed 9/8/2004EX 78058216Candy Bouquet Int'l., Inc. CANDY BOUQUET [retail, mail, and computer order services in the field of gift packages of candy]
2(e)(3)Refusal Affirmed 8/25/2004EX 75857797Consoli-dated Specialty Restaurants, Inc. COLORADO STEAKHOUSE (and design) [restaurant services]
whether applicant's specimens show trademark use of its mark (as displays associated with the goods)Refusal Reversed 8/12/2004EX 75851765Dell Inc. QUIETCASE [computer hardware; internal cases for computer hardware being parts of computer work stations]
2(d)Opposition Sustained in both cases 8/11/2004OPP 91120166Baseball America, Inc. v. Powerplay Sports, Ltd. BASEBALL AMERICA (in stylized lettering) [newspapers, books and calendars relating to baseball, principally items concerning minor league and college baseball; posters; conducting courses, seminars, conferences and workshops in the field of baseball history] BASEBALL AMERICANA [posters]; BASEBALL AMERICANA [educational services, namely, conducting courses, seminars, conferences, and workshops in the field of baseball history and trivia, and photography; organizing baseball exhibitions for stadiums, museums, theme parks, libraries and other public venues; providing facilities for educational, entertainment, sporting and cultural activities in the form of a baseball hall of fame and museum]
2(d)Petition to Cancel Granted 6/22/2004CANC 92032202Alfacell Corp. v. Anticancer, Inc. ONCONASE [pharmaceuticals, namely, cancer-treating drugs] ONCASE [therapeutic compositions containing reagents for in vivo anticancer use]
whether opposer's notice of opposition can be considered timelyOpposition Dismissed (Appli-cant's motion to dismiss granted) 5/13/2004OPP 91157129Yahoo! Inc. v. Franklin Loufrani SMILEY (and design) [a large variety of goods and services in 7 classes]
2(e)(4)Refusal Affirmed 5/12/2004EX 76277664Gregory ROGAN [bracelets, rings, chains, and pendants; leather handbags and wallets, fabric handbags; pants, shirts, footwear]
genericnessPetition to Cancel Denied in both cases 3/31/2004CANC 92032360Zimmerman v. National Association of Realtors REALTOR and REALTORS [collective service marks for real estate brokerage, management, appraisal and planning services involving buildings and land, as delivered by members of a professional association]
2(e)(1); 2.61(b)Refusal Affirmed on both grounds 3/30/2004EX 76322156Planalytics, Inc. GASBUYER [providing on-line risk management services in the field of pricing and purchasing decisions for natural gas]
2(d)Refusal Affirmed 1/29/2004EX 75578472A.I.T. Int'l., Inc. SOUTHERN TELECOM (and design) [telephones and answering machines]
2(d)Opposition Sustained 1/29/2004OPP 91117751GE Osmonics, OSMO (and design) [reverse osmosis solvent OSMOTECH [reverse osmosis separation or ultra
2(d)Refusal Affirmed 1/28/2004EX 76196495Mannington Mills, Inc. GUARDIAN [reinforced vinyl polymer comprising a component of vinyl floor
2(d)Refusal Affirmed as to both 1/28/2004EX 76226294L.I.D. Ltd. RINGS OF ETERNITY [jewelry, namely, rings, bracelets, necklaces,
2(e)(1)Refusal 1/28/2004EX 76312705The Daily FERTILITY BLEND
2(a) [false suggestion of a connection]; ownership of the markRefusal Reversed 1/15/2004EX 75786737Los Angeles Police Revolver and Athletic Club, Inc. TO PROTECT AND TO SERVE [beverage glasses; clothing, headwear and footwear, namely, police and public safety uniforms, vests, jackets, coats, foul weather gear, raincoats, overcoats, gloves, gym suits, jerseys, socks, t-shirts, shirts, shorts, pants, sweatsuits, ties, swimwear, trousers, sweaters, pullovers, raincoats, boots, shoes, belts, caps, sun visors, and headbands]
2(d); 2(e)(1)Refusal Affirmed on both grounds 9/11/2003EX 78013678Microsoft Corp. OFFICE.NET [a wide range of computer software and hardware products]
whether applicant must submit evidence of the continuing validity of the foreign registration on which its Sec. 44 U.S. application is basedRefusal Affirmed 8/21/2003EX 74135691Societe D'Exploita-tion de la Marque Le Fouquet's FOUQUET'S [a wide variety of goods and services in 20 classes]
genericnessRefusal Affirmed in both cases 8/19/2003EX 75313795Cell Thera-peutics, Inc. 2 applications to register the mark CELL THERAPEUTICS, INC. [for (1) pharmaceutical preparations, namely, bio-chemical signaling pathway modulators and non-living nature, for use in all fields of medicine, medical research and pharmacology and (2) laboratory research and development services in the field of biomedical and therapeutic products that affect cellular signaling pathways]
2(e)(1)Opposition Sustained 7/30/2003OPP 91121819Capital Project Manage-ment, Inc. v. IMDISI, Inc. TIA [investigation of problems experienced on construction projects using a technique which analyzes the effect of a particular event on schedulized activities]
2(d); dilutionOpposition sustained on both grounds 6/30/2003OPP 91121204The NASDAQ Stock Market, Inc. v. Antarctica, S.r.l. NASDAQ for stock market services and various collateral products NASDAQ and bird design for safety helmets, various items of sport clothing and various sporting goods
Section 6 disclaimer requirement of the word MIRACLE (as descriptive under 2(e)(1)) [Note: applicant disclaimed ORLANDO when application was filed]Refusal Reversed 6/11/2003EX 75599525WNBA Enterprises, LLC ORLANDO MIRACLE (and design) [statistical books, guide books and reference books for basketball, magazines in the field of basketball, commemorative game programs, statistical sheets for basketball topics, newsletters and pamphlets in the field of basketball, and other goods]
2(e)(1)Opposition Sustained 6/11/2003OPP 91118372The Goodyear Tire & Rubber Co. v. Continental General Tire, Inc. INTELLIGENT [tires]
whether opposer's pleading properly states a ground for oppositionOpposition Dismissed (applicant's motion to dismiss granted) 6/5/2003OPP 91125728Marilyn Carano v. Vina Concha Y Toro S.A. CONCHA Y TORO EST. 1883 (and design) [wines]
applicant's failure to comply with request for information under Rule 2.61(b); 2(e)(1)Refusal Affirmed for failure to comply with 2.61(b); 2(e)(1) moot 4/10/2003EX 76197868DTI Partnership, L.L.P. IBLOCK THERMAL MAPS [computer software used to perform data analysis in the field of demographics]
whether the matter applicant seeks to register on the Supp. Reg. as a certification mark functions as suchRefusal Affirmed 4/2/2003EX 74498601Software Publishers Association CERTIFIED SOFTWARE MANAGER [a certification mark for software asset and licensing management]
genericness; abandon-ment; whether cancellation petitioner has standingPetition to Cancel Denied 4/2/2003CANC 92030454No-belle.com, LLC v. Qwest Communications Int'l., Inc. design mark consisting of the stylized representation of a bell within a circle [telecommunications services]
2(d); dilutionOpposition Dismissed 3/12/2003OPP 91121296Genesco Inc. and Genesco Brands Inc. v. Gregory Martz several pleaded registrations for various marks incorporating the letters J & M in either block letters or stylized form [for various goods and/or services, e. g., footwear, clothing, fashion accessories, leather goods, retail store services, etc.] GM CUSTOM FIBERGLASSING WATERPROOF (and design incorporating a thumb print) [t-shirts, surftrunks, sweatshirts, sweatpants, shirts, tank tops, jackets, shorts, socks and pants]
unclean hands [motion to dismiss for failure to state a proper ground for opposition]Opposition Dismissed[Appli-cant's motion to dismiss granted] 2/20/2003OPP 91152062Seculus Da Amazonia S/A v. Toyota Jidosha Kabushiki Kaisha LEXUS (and design) [watches / watch parts] LEXUS (and design) [watches; binders and business card holders; traveling bags; bottles; stuffed animals]
Section 6 disclaimer requirement (of term CPA EXAMINA-TION) on grounds of genericnessRefusal Affirmed 1/16/2003EX 75626097American Institute of Certified Public Accountants UNIFORM CPA EXAMINATION [printed matter, namely, practice accounting examinations; accounting exams; accounting exam information booklets; and prior accounting examination questions and answers]
2(d); dilution; counterclaim for cancellation on the grounds of (1) abandon-ment and(2) non-use as to some of the services covered by the opposer's registrationOpposition Dismissed; Counter-claim for cancel-lation dismissed 12/2/2002OPP 91116355Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc. CAREFIRST [collective membership mark for indicating membership in an organization of persons and medical providers in health maintenance, preventive medicine, prepaid medical plans, reduced health costs, and programs on fitness, prenatal care, substance abuse, and other health-related topics] and [newsletters pertaining to health care, medical care and membership services; underwriting and administration services, on a prepayment basis, relating to emergency medical care, etc.; educational services, conducting seminars, classes, and workshops and lectures on nutrition, infant care, etc.; health care services in the nature of an HMO, and a number of other related services] FIRSTCAROLINA-CARE [healthcare insurance claims administration services, third-party insurance claims administration services, and underwriting insurance for prepaid healthcare; health care in the nature of health maintenance organizations]
2(e)(1)Refusal Reversed [Note: Decision includes a footnote discussing probative value of certain evidence gathered from the Internet] 11/18/2002EX 75932290Jose Ramacle BIO-CD [apparatus and instruments for scientific research for laboratories, namely, modified CDs on which biological molecules are fixed, and a variety of related goods; scientific and research services, namely, the identification of biological molecules of infectious agents present in human or animal tissues or liquids, etc.]
genericness [whether applicant's mark is registrable on the Supplemental Register]Refusal Affirmed 8/28/2002EX 75482561Cyber-Financial.Net, Inc. BONDS.COM [providing information regarding financial products and services via a global computer network and providing electronic commerce services via a global computer network, namely, investment research, subscription services, market commentary, portfolio analysis, debt instrument conversion, yield performance, and pricing analysis, with respect to taxable and tax exempt debt instruments, and other related investment products and services, namely, investment securities]
2(e)(1)Refusal Affirmed 8/20/2002EX 75899614Ruffin Gaming, LLC FISHERMAN'S WHARF [entertainment services, namely, live performances, vaudevilles and comedy performances; hotel services, restaurant services, nightclub services, caf» services and providing convention facilities]
2(d)Opposition Sustained 7/17/2002OPP 91112409Time Warner Entertain ment Co. L. P. v. Karen L. Jones ROAD RUNNER [various types of printed matter and paper goods]; design mark consisting of a cartoon figure of a roadrunner [motion picture, video, and television films; prerecorded audio-visual tapes, cassettes and/or discs featuring animation and/or music]; ROAD RUNNER (and design incorporating a cartoon figure of the head of a roadrunner) [candy]; ROAD RUNNER (and design incorporating the cartoon figure of a roadrunner) [t-shirts and sweatshirts]; ROAD RUNNER [plush dolls and Halloween costumes and masks]; THE ROAD RUNNER & WILE E . COYOTE [series of motion picture, video and television films, etc.]; ROAD RUNNER AND WILE E. COYOTE [video game cartridges; video and computer game programs, etc.]; WB (and design) [motion picture, video, and television films, etc.] ROADRUNNER MAPS (and design incorporating a cartoon figure of a roadrunner) [road maps]
genericness; affirmative defense of licensee estoppelPetition to Cancel Denied in both cases on the basis of licensee estoppel; the Board žneed not decide the substantive issue of genericnessÓ 6/18/2002CANC 92027885Arleen Freeman v. National Association of Realtors REALTOR and REALTORS [collective membership mark registrations, indicating registrant's exercise of legitimate control over use of the marks for brokerage of real estate, industrial brokerage, farm brokerage, mortgage brokerage, in the appraisal of real estate, management of real estate, in the building of structures on real estate, in the subdivision of real estate properties, and in community planning for the development of raw land and slum clearance areas]
genericness (whether applicant's mark is registrable on the Supplemental Register)Refusal Affirmed 6/11/2002EX 75553426Martin Container, Inc. CONTAINER.COM [retail store services and retail services offered via telephone featuring metal shipping containers; rental of metal shipping containers]
2(e)(1) (genericness); whether the display of the words that compose applicant's mark is inherently distinctive or has acquired distinctiveness under Section 2(f)Refusal Affirmed 5/30/2002EX 75215519The American Academy of Facial Plastic and Re-constructive Surgery FACIAL PLASTIC SURGERY (in a design format) [training in plastic facial and reconstructive surgery techniques and practices and distributing course material in connection therewith; association services, namely, promoting the interests of facial plastic surgeons and reconstructive surgeons, research in the field of plastic surgery and reconstructive surgery and related basic sciences, namely, anatomy, pathology, biology, chemistry, physiology, and wound healing; indicating membership in an association of facial plastic and reconstructive surgeons]
2(e)(1)Refusal Affirmed 5/14/2002EX 75709532Tower Tech, Inc. SMARTTOWER [commercial and industrial cooling towers and accessories therefor, sold as a unit]
2(e)(1)Opposition Sustained (Opposer's motion for summary judgment granted) 5/10/2002OPP 91121583Callaway Vineyard & Winery v. Endsley Capital Group, Inc. COASTAL WINERY [varietal wines]
2(e)(1)Refusal Affirmed 4/18/2002EX 75628232Fitch IBCA, Inc. PORTFOLIO UPDATE [financial services, namely, providing information on securities, research and surveillance on securities via a global computer information network]
2(d)Opposition Dismissed as to both opposed applications 4/16/2002OPP 91113785The Sports Authority Michigan, Inc. v. The PC Authority, Inc. THE SPORTS AUTHORITY, THE SPORT S AUTHORITY (and design) and other marks, all of which compose a family of marks incorporating the word AUTHORITY [all these marks for retail store services featuring sporting equipment and clothing and/or a range of specifically detailed products and services] THE PERSONAL COMPUTER AUTHORITY and PC AUTHORITY (and design) [both marks for retail stores featuring computer hardware and software, computer accessories, computer networking products and peripheral devices; consultation and design for others in the field of computer hardware and software, computer accessories, computer networking products and peripheral devices]
2(e)(4)Refusal Reversed 4/11/2002EX 75398909Pyro-Spectaculars, Inc. SOUSA [fireworks; entertainment services, namely, production of events and shows featuring pyrotechnics, pageantry, including laser light shows and arranging for other live performances at special events]
2(e)(1); whether applicant is obliged under Rule 2.61 to provide requested information; whether applicant's identification of goods is acceptableRefusal Affirmed (on 2(e)(1) and Rule 2.61 grounds only) 4/5/2002EX 75877999SPX Corp. E-AUTODIAGNOSTICS [electronic engine analysis system comprised of a hand-held computer and related computer software]
Section 6 disclaimer requirement (of the word BEST)Refusal Affirmed 4/3/2002EX 75496422Best Software, Inc. BEST! IMPERATIV HRMS [computer software for human resource, payroll, W-2 and tax processing and employee management]
2(e)(1); 2(a) [deceptiveness]Refusal Affirmed on both grounds 3/28/2002EX 75664835Phillips-Van Heusen Corp. SUPER SILK [clothing, namely, dress shirts and sport shirts made of silk-like fabric]
Section 6 disclaimer requirement (of the words ALPHA ANALYTICS)Refusal Affirmed 3/26/2002EX 75829220Alpha Analytics Investment Group, LLC ALPHA ANALYTICS DIGITAL FUTURE FUND [financial services, namely, investment advisory services and mutual fund investment services]
Res Judicata as to DilutionOpposition Dismissed (Appli-cant's motion for summary judgment granted) 3/26/2002OPP 91120101Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car, Inc. WE'LL PICK YOU UP [rental and leasing of vehicles] WE'LL EVEN PICK YOU UP [rental and leasing of vehicles]
2(d); affirmative defense: whether a contractual agreement between the parties bars opposer's oppositionOpposition Dismissed (Applicant's motion for summary judgment granted) 3/22/2002OPP 91121784Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc. EYE CANDY (in stylized lettering) [retail store services featuring jewelry, watches, money clips, cuff links, key chains, clocks, handbags, purses, shawls, scarves, gloves and decorative hair clips and pins] EYE CANDY [retail store services featuring apparel, footwear, cosmetics, fragrances, health and beauty aids, candles, hair accessories, jewelry, watches, hand bags and carry bags, stationery goods, key chains, picture frames, and giftware]
whether applicant's description of its mark unacceptably encompasses more than the single mark shown in its drawingRefusal Affirmed 3/11/2002EX 75554641Ralph E. Hayes, Jr. and Gregory K. Clodfelter, dba Alpha Consulting a mark consisting of the colors red, green, and amber used as a color scheme on reporting charts to correspond with performance ratings within selected categories of performance, but no claim is made to a particular pattern of the three colors
Section 6 disclaimer requirement (of term O-TOWN)Refusal Reversed 3/11/2002EX 75628844Trans Continental Records, Inc. O-TOWN RECORDS INCORPORATED (and design) [pre-recorded compact discs, audio cassettes, and video cassettes featuring pop music; jewelry; paper goods and printed matter, namely, posters, bookcovers, postcards and unmounted photographs; leather goods, namely, backpacks and fanny packs; clothing, namely, hats, t-shirts, and jackets; and entertainment in the nature of live performances by a pop musical group]
2(e)(1); whether applicant's mark has become distinctive under Section 2(f)Refusal Reversed 3/8/2002EX 75501608Mine Safety Appliances Co. WORKMASK [safety equipment, namely, self-contained breathing apparatus]
2(d)Opposition Sustained 3/8/2002OPP 91103612Interlego AG, Lego Systems, Inc. and Kirkbi AG v. Abrams / Gentile Enter-tainment, Inc. and MJJ Multimedia LLC LEGO [a wide variety of toys, including doll figures and vehicular toys] MEGO [children's toys, namely, action figures, vehicles, dolls and accessories therefor]
whether plaintiff's testimony deposition should be stricken for failure to provide adequate noticeMotion to Strike Granted and Opposition Dismissed 2/15/2002OPP 91125329Terry P. Gaudreau, Ronald Knutson, TNT Fireworks, Inc. (MT corpora-tion), and TNT Fireworks, Inc. (ND corporation) v. American Promotional Events, Inc. TNT FIREWORKS, INC. [fireworks] TNT FIREWORKS, INC. [distributorship services for fireworks]
whether the applicant's identification of goods is acceptableRefusal Affirmed 2/13/2002EX 75464801Gary R. Johnson GLIDETEXT [printed text that may be used in all types of printed materials; electronic text that may be used in all types of electronic publications]
2(e)(5) [de jure functional]; whether, even if not de jure functional, applicant's product configuration is distinctive as a trademark]Refusal Affirmed (on both grounds) 12/19/2001EX 75513342Gibson Guitar Corp. configuration of the body of a guitar [guitars]
2(d); dilution [Secs. 13 and 43(c)]Opposition Dismissed 12/12/2001OPP 91114061The Toro Company v. ToroHead, Inc. a number of marks incorporating the word TORO [for a variety of goods and services, including grass cutting machinery and irrigation systems] ToroMR (and bull's head design) [very low reluctance, thin film magnetic reading and writing heads for sale to OEM manufacturers of high performance computer disk drives]
whether the specimens of use show use of applicant's marks in connection with its recited servicesRefusal Affirmed 10/10/2001EX 75657065HII, Inc. BEASTMASTER [production of motion pictures, pre-recorded videotapes, and television programs, and distribution of motion pictures and television programs]
2(d)Refusal Affirmed 9/27/2001EX 75649851Another Broken Egg of Florida, Inc. ANOTHER BROKEN EGG CAFE (and design) [restaurant services]
whether the mark in applicant's drawing is a substantially exact representa-tion of the mark actually usedRefusal Affirmed 9/27/2001EX 75679587Big O Tires, Inc. a graphic representation of the head of the legendary character known as Big Foot or Sasquatch [tires for land vehicles]
whether applicant had a bona fide intention to use its mark at the time it filed its Section 1(b) application; whether applicant made an invalid assignment of its ITU application under Section 10, thus rendering the application voidOpposition Sustained (Opposer's motion for summary judgment granted)ůon žinvalid assign-mentÓ ground only 9/27/2001OPP 91118181Pfizer, Inc. v. Gregg Hamer-schlag VIAGRA [compound for treating erectile dysfunction] CLIAGRA [natural, herbal vitamins and mineral supplements, namely, an herbal aphrodisiac to enhance female sexual desire]
2(e)(1)Refusal Affirmed 9/25/2001EX 75565599Ticket.com 1-800-TICKETS (in stylized form) [online information services, namely, the provision of information relating to travel via global computer network; online information services, namely, the provision of information relating to shows and other entertainment events via global computer network; online travel agency services, namely, making reservations and bookings for temporary lodging via global computer network]
2(e)(3)Refusal Affirmed 8/17/2001EX 75473959Broyhill Furniture Industries, Inc. TOSCANA [furniture]
2(d)Refusal Affirmed (as to both cited registra-tions) 8/15/2001EX 75689077Infinity Broad-casting Corp. of Dallas KYNG [radio broadcasting services]
2(d); unclean hands affirmative defenseOpposition Sustained (Opposer's motions for summary judgment granted) 7/30/2001OPP 91110043Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc. HORNBLOWER & WEEKS [security brokerage, investment banking and asset management services] HORNBLOWER & WEEKS [investment banking, investment management and brokerage services, namely, public and private underwriting, distribution and placement of corporate, municipal and governmental securities, investment management and counseling services and brokerage of securities and commodities]
2(e)(1); whether applicant's mark is distinctive under Section 2(f); whether applicant's mark is registrable on the Supplemental Register (genericness )Refusal Affirmed on all grounds asserted 7/20/2001EX 75609153A La Vieille Russie, Inc. RUSSIANART [dealership services in the field of fine art, antiques, furniture and jewelry]
2(d)Request for Recon-sideration Denied[Petition to Cancel Granted (Petition-er's motion for summary judgment granted)] 7/18/2001CANC 92026378Kappa Books, Inc. v. Herbko Int'l., Inc. CROSSWORD COMPANION [crossword puzzle books] CROSSWORD COMPANION (and design) [crossword puzzle system, namely, paper crossword puzzle rolls and hand held puzzle roll scrolling device sold as a unit and crossword puzzle replacement rolls sold separately]
2(e)(1)Refusal Affirmed 7/11/2001EX 75154506Major League Umpires MAJOR LEAGUE UMPIRE [clothing, namely, shirts, t-shirts, jackets, caps, trousers, socks, wind resistant jackets, wristbands, uniforms, and shoes]
2(e)(2)Refusal Affirmed 5/22/2001EX 75598351JT Tobacco-nists MINNESOTA CIGAR COMPANY [cigars, cigar cases not made of precious metal, and humidors]
2(d)Refusal Affirmed 5/10/2001EX 75536749Kent-Gamebore Corp. IMPACT [ammunition]
2(e)(1)Refusal Affirmed (in both cases) 4/30/2001EX 75519495Zanova, Inc. ITOOL [computer services, namely, providing custom services for web sites and design of web sites for others; computer software for use in creating web pages]
2(d)Refusal Affirmed 3/30/2001EX 75396043Comexa Ltda. AMAZON (and design) [chili sauce and pepper sauce]
Section 6 disclaimer requirement (of the words BEST and PREMIER)Refusal Affirmed (in both cases) 2/28/2001EX 75457125Best Software, Inc. BEST! SUPPORTPLUS PREMIER and BEST! SUPPORTPLUS [both marks for membership services in the nature of providing computer software consultation; and computer consultation and support services, namely, providing upgrades of finance, tax, accounting, budget, human resource, payroll, and asset management computer software]
2(d)Refusal Affirmed 2/22/2001EX 74619936Alpine Computer Systems, Inc. ALPINE NETWORK INSURANCE [installation, maintenance and repair services for computer and data transmission systems]
whether applicant is, in one application, seeking to register more than one mark; whether the matter asserted for registration functions as a markRefusal Affirmed (on both grounds) 2/14/2001EX 75064130Upper Deck Co. a hologram device applied to trading cards (with no claim as to any particular size, shape, content, nor positioning of such hologram device) [trading cards]
2(d)Refusal Affirmed 1/19/2001EX 75285881Thomas H. Wilson PINE CONE BRAND (and design) [California standard packed containers of fresh oranges, lemons and grapefruits for wholesalers and storeowners]
2(e)(3)Refusal Affirmed (in both cases) 1/10/2001EX 75460277Narada Productions, Inc. CUBA L.A. [prerecorded phonograph records and cassette tapes featuring music; prerecorded compact discs and CD-ROMs featuring music alone or couple with images and texts related to music] and CUBA L.A. [entertainment services, namely, live performances by a musical band; production and distribution services in the field of musical recordings and entertainment; recording studio services; music publishing services]
2(e)(3)Refusal Affirmed (in all three cases) 11/30/2000EX 75541256Boyd Gaming Corp. ROYAL HAVANA RESORT & CASINO [various wearing apparel; various beauty products and perfumes] and HAVANA RESORT & CASINO [various wearing apparel]
whether opposer should be sanctioned for failure to comply with discoveryOpposition Dismissed (motion for sanctions in the nature of default judgment granted) 11/29/2000OPP 91093359MHW, Ltd. and Pepsico, Inc.
2(e)(1)Refusal Affirmed 11/29/2000EX 75459910Style-click.com Inc. E FASHION [computer software for consumer use in shopping via a global computer network and computer software for providing fashion, beauty and shopping advice; electronic retailing services via a global computer network featuring apparel, fashion, accessories, personal care items, jewelry and cosmetics'
2(d)Opposition Sustained 9/14/2000OPP 91096518Recot, Inc. v. M. C. Becton FRITO LAY [snack foods] FIDO LAY [natural agricultural products, namely, edible dog treats]
2(e)(4); 2(e)(1) and genericnessOpposition Dismissed 7/19/2000OPP 91095655Michael S. Sachs, Inc. v. Cordon Art, B.V. M.C. ESCHER [a variety of goods (Classes 9, 14, 16, 24, 25, 27 and 28)]
2(e)(1)Refusal Affirmed 7/18/2000EX 75391440Taylor-Listug, Inc. PRESENTATION SERIES [musical instruments, namely, guitars]
whether applicant's proposed amendment to the drawing of its mark is acceptable; de jure functionality; whether the configuration applicant seeks to register is inherently distinctiveRefusal Affirmed (on grounds of de jure function-ality). Proposed amendment to the drawing found unaccept-able. 3/2/2000EX 75092220Ball Corp. product configuration of the top of a container for liquids, consisting of a larger circular ridge and a smaller more elevated circular ridge [metal tops for liquid containers]
2(e)(1) [genericness]; whether applicant's mark has acquired distinctiveness under Sec. 2(f)Refusal Affirmed (on both grounds) 11/2/1999EX 75131355Dial A Mattress Operating Corp. 1-888-M-A-T-R-E-S-S [telephone shop-at-home retail services in the field of mattresses]
2(e)(4); distinctiveness under Sec. 2(f)Refusal Affirmed 10/27/1999EX 75013108Dan E. Rogers GERSON [providing medical treatment for human illnesses by means of nutritionally based therapy]
whether applicant's mark as shown in its proposed amended drawing (submitted in order to conform to its specimens of use) is a material alteration of the mark shown in the drawing originally submitted with the application [Trademark Rule 2.72(a)]Refusal Affirmed 8/31/1999EX 74136476CTB, Inc. TURBO (and design) [ventilation systems for poultry and livestock houses comprising electric blowers, ducts, and controls]
2(d)Refusal Affirmed 8/31/1999EX 75033628Continental Graphics Corp. CONTINENTAL GRAPHICS [document reproduction services]
genericness; whether applicant's mark has become distinctive of its services under Section 2(f)Refusal Affirmed (on both grounds) 8/27/1999EX 74682845Log Cabin Homes, Ltd. LOG CABIN HOMES [architectural design of buildings, especially houses, for others, and retail outlets featuring kits for constructing buildings, especially houses]
2(a) [matter which may disparage; matter which may bring persons into contempt or disrepute]Opposition Dismissed 7/28/1999OPP 91099058Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd. BLACK TAIL [adult entertainment magazines]
2(a) [matter which may disparage; matter which may bring persons into contempt or disrepute]Petition to Cancel Denied 7/9/1999CANC 92025282Order Sons of Italy in America v. The Memphis Mafia, Inc. THE MEMPHIS MAFIA [entertainment services, namely, rendering talks relating to popular music and music personalities]
2(e)(1); whether applicant must provide additional information, under Rule 2.61(b)Refusal Affirmed (on both grounds) 5/26/1999EX 75066101Joseph Edward Page 888 PATENTS [legal services, namely, patent research, prosecution and enforcement; patent searching]
whether the specimens show useRefusal Affirmed 5/18/1999EX 75143020Miller Sports, Inc. M and design [in-line skates, ice skates and frames for skates]
2(a) [false suggestion of a connection with an institution]; 2(e)(1); 2(e)(2) or 2(e)(3)Refusal Affirmed (but only on 2(a) grounds) 5/12/1999EX 74441447Jose Ignacio Guisado Urbano SYDNEY 2000 [advertising and business services, namely, the preparation and placement of advertisements for others, publicity services, etc.; communications services, namely, telephone communication services, electronic, electronic mail services, radio broadcasting services, etc.]
2(e)(1)Opposition Dismissed 5/11/1999OPP 91103719Plyboo America, Inc. v. Smith & Fong Co. PLYBOO [bamboo laminate flooring and plywood made of bamboo]
whether the specimens of record demonstrate trademark use of applicant's mark for the goods recited in the applicationRefusal Reversed 5/11/1999EX 74617867Hydron Technologies, Inc. HYDRON MAKES THE DIFFERENCE [facial, skincare, hair, bath, and beauty preparations, namely, moisturizers, cremes, toners, clarifiers, exfoliators, masques, lotions, sunscreens, sunless tanning cremes and non-medicated hair care preparations]
whether applicant has properly complied with the requirement for a drawing of its claimed mark (i.e., whether applicant'sRefusal Affirmed 4/15/1999EX 74454035Elvis Presley Enterprises, Inc. trademark described as "the likeness and image of Elvis Presley" [cotton fabric]
2(a) [scandalous matter; matter which may disparage; matter which may bring persons into contempt or disrepute]Petition to Cancel Granted [but only on grounds that the marks may disparage or bring persons into contempt or disrepute] 4/2/1999CANC 92021069Harjo et al. v. Pro-Football, Inc. THE WASHINGTON REDSKINS, "REDSKINS," "WASHINGTON REDSKINS" (and a design of a human head in profile), and "THE REDSKINS" (and a design consisting of a spear and a human head in profile) [all four marks for entertainment services, namely, presentations of professional football contests]; "REDSKINETTES" [entertainment services, namely, cheerleaders who perform dance routines at professional football games and exhibitions and other personal appearances]; "THE REDSKINS" (in stylized lettering) [entertainment services, namely, football exhibitions rendered live in stadia and through the media of radio and television broadcasts]
whether matter applicant seeks to register has acquired distinctiveness as a trademark or is merely product ornamentation]Refusal Affirmed 3/31/1999EX 74300843Sunburst Products matching-color watch bezel and watch strap with a contrasting color of watch case [wrist watches]
whether the configuration of applicant's goods has become distinctive as a trademark and is registrable under Section 2(f)Refusal Affirmed 3/30/1999EX 74595978Parkway Machine Corp. configuration of the facing of a coin-operated bulk vending machine [coin-operated vending machines]
Abandonment; counterclaim based on Section 2(d)Petition to Cancel Granted; Counterclaim to Cancel Dismissed 3/30/1999CANC 92022060Auburn Farms, Inc. v. McKee Foods Corp. TOAST'N JAMMERS [fruit juice sweetened pastries] JAMMERS [filled cakes]
2(e)(1)Refusal Affirmed 12/11/1998EX 75075701Dos Padres QUESO QUESADILLA SUPREME [cheese]
2(e)(1)Refusal Affirmed 12/9/1998EX 75009424Patent & Trademark Services, Inc. PATENT & TRADEMARK SERVICES, INC. [legal representation in the area of intellectual property administered by representing others before the Patent and Trademark Office and the Copyright Office]