Ttab Decisions and Developments

• Publication year: 2018
• Author: Jane Shay Wald

TTAB Decisions and Developments

Jane Shay Wald

Irell & Manella LLP

REVIEW OF PRECEDENTIAL TTAB CASES

Motion to Strike Was Granted in Part With Leave to Amend As the Board Showed Some Heart

The Board granted a procedural motion to strike testimony, with leave to amend, but deferred ruling on the substantive motion before it. Tiger Lily sought to register LEHMAN BROTHERS for bar and restaurant services, spirits and beer. Tiger Lily moved to strike Barclays' testimonial declarations based on procedural and substantive grounds.

The Board approaches evidentiary objections differently depending whether they are procedural or substantive. Objections to testimony or notice of reliance grounded in asserted procedural defects are waived unless raised promptly, when there is an opportunity to cure. Tiger Lily's objections to the descriptions of relevance set forth in Barclay's notice of reliance were procedural. The 2017 amendments to Trademark Rule 2.122(g) "provide that a notice of reliance must indicate generally the relevance of the evidence and associate it with one or more issues in the proceeding." The Board found certain of Barclay's indications of relevance in the notice of reliance were narrow and focused and therefore acceptable. But as to other indications in its subsequent notices of reliance, "Barclays has only provided a description or function of the attached documents that is so general as to be meaningless." Barclays therefore failed to comply with the 2017 amendments and Tiger Lily's motion to strike was granted. However, failure to comply with that rule is a curable defect, and Barclays was given 20 days to amend its objectionable notices of reliance.

Tiger Lily moved to strike two testimonial declarations for lack of probative value, further alleging they were cumulative, irrelevant and repetitive. These were deemed substantive objections, and the Board does not strike testimony on the basis of substantive objections prior to final hearing, per TMEP Sec. 533.03.

Tiger Lily also argued that the Board should address the substantive issues because the 2017 amended Trademark Rule 2.12 (c) imposes a cost-shifting burden for the adverse party who wishes to orally cross-examine a witness whose testimony was presented by declaration or affidavit. The Board clarified that the only new costs to the cross-examining party are that of the court reporter, and cost of the venue, if necessary. Under the old or new rule, with oral testimony depositions, the party cross-examining a witness must pay its own travel expense and its own attorney fees and expenses. Where oral cross-examination of affidavit or declaration testimony is desired, the cross-examiner must still pay its own travel expense and its own attorney fees and expenses. The fee-shifting doesn't change this. Barclays Capital Inc. v. Tiger Lily Ventures Ltd and Tiger Lily Ventures Ltd. v. Barclays Capital Inc., 124 U.S.P.Q. 2d 1160 (TTAB 2017).

The Little-Known Doctrine That's Called "Conjoint Use" Must Be Pleaded Quite Clearly, Without an Excuse

The Board dismissed an opposition to registration of the mark INNOVATION BREWING for beer, finding that Opposer had not met its burden of showing a likelihood of confusion with its mark registered INSPIRED BREWING for beer or its mark BOTTLING INNOVATIONS SINCE 1985. In its reply brief, Opposer raised the issue of likelihood of confusion under a "conjoint use" theory. A likelihood of confusion by conjoint use means that defendant's mark is a combination of more than one of the plaintiff's marks. For example, in Schering-Plough Health Care Prods. Inc. v. Huang, 84 U.S.P.Q.2d 1323 (TTAB 2007), the Board refused registration of the mark DR. AIR on a conjoint use analysis. There, Opposer pleaded and proved that it had prior use of its DR. SCHOLL'S mark and also its AIR-PILLO mark and used and displayed these two marks together on packages and in advertising so the relevant public recognized that the two marks jointly distinguished Opposer's products, and identified Opposer as the source. "Applicant's DR. AIR mark, which draws on two elements of Opposer's associated trademarks DR. SCHOLL's and AIR-PILLO, is likely to cause confusion.. "

In this case...