Ttab Decisions and Developments

• Jurisdiction: United States,Federal
• Citation: Vol. 42 No. 3
• Publication year: 2017
• Author: Jane Shay Wald
• topic: Business of Law,Trademark,Intellectual Property,Civil Procedure

TTAB Decisions and Developments

Jane Shay Wald

Irell & Manella LLP

YOU SHOULDN'T ABANDON A SAUCE FOR GREAT RIBS YOU GRAB WITH YOUR HAND ON THOSE RESTAURANT BIBS

Applicant sought registration on the basis of a bona fide intent to use the mark AZEKA'S RIBS for barbeque sauce. Opposer opposed on three grounds: That Applicant's mark is primarily merely a surname, lack of a bona fide intent to use the mark, and likelihood of confusion.

The Board sustained the opposition on the ground that Applicant's proposed mark, AZEKA'S RIBS is primarily merely a surname, and cannot be registered on the Principal Register. The Board applied its usual tests for its usual conclusion of late that the mark was primarily merely a surname. Applicant's and Opposer's principal's surnames are Azeka. The Board noted that the surname significance of a term is not diminished by use of the possessive form, here, AZEKA'S. Nor did inclusion of the term RIBS in the mark preclude a surnominal rejection.

"After our decision on the surname issue, there is no reason to consider the claim of a lack of a bona fide intent to use the applied-for mark; both of these claims bear on the same ultimate issue, that is, the registrability of Applicant's mark based on the present application." (Emphasis in original).

In an interesting procedural twist, while it did not need to consider the likelihood of confusion claim either, given its surname ruling, the Board went ahead and tried the likelihood of confusion case. Applicant made an affirmative defense of abandonment. The Board found the Opposer had abandoned its mark by nonuse since 2006, with no intent to resume use. Since Opposer's abandonment precluded it from demonstrating priority of use of its pleaded mark against the Applicant, its likelihood of confusion claim failed. Here is why the Board decided the extra issue.

The Board has "'discretion to decide only those claims necessary to enter judgment and dispose of the case,'" as the "'determination of registrability does not require, in every instance, decision on every pleaded claim.'" Applicant contended that the Board should decide the merits of its Abandonment defense and the effect of that abandonment on priority, an essential element of Opposer's likelihood of confusion claim. Both parties agree that the case is part of an ongoing dispute between two branches of the Azeka family over the exclusive right to use the family name AZEKA as a trademark for barbeque sauce. Applicant's view is that the primary controversy between the parties is whether Opposer has abandoned its mark, and that Opposer's attempts to focus solely on the surname issue:

...makes no sense from a judicial economy perspective because ending the Opposition on this issue will do nothing more than to cause the Applicant to file yet another application for the same mark, this time under Trademark Act Section 1(a) because he is actually using the mark in commerce, and force the parties and this Board through an entire opposition process a second time, just to get back to the exact same critical issue that is before the Board right now.

The Board agreed. The parties tried the issue of Opposer's abandonment of its pleaded mark "and it is in the interest of judicial economy to decide the issue that is the crux of the dispute, which promises to continue in the absence of a complete resolution."

The Board found testimony clearly showed that Opposer has not used the mark in the ordinary course of trade for over ten years, far exceeding the three-year continuous period of nonuse giving rise to a rebuttable presumption of abandonment. Opposer does not deny nonuse since 2006. Instead, it argued that it had...