Ttab Decisions and Developments
| Jurisdiction | United States,Federal |
| Author | Jane Shay Wald |
| Publication year | 2016 |
| Citation | Vol. 41 No. 1 |
Jane Shay Wald
Irell & Manella LLP
Applicant sought to register MARATHON MONDAY for various clothing items in Class 25. Opposer, The Boston Athletic Association ("BAA") opposed under Sec. 2 (a) as creating a false suggestion of a connection with Opposer. The elements of such a claim require Opposer to prove: First, that MARATHON MONDAY is, or is a close approximation of Opposer's name or identity. The Board pointed out that the fact that "neither BOSTON MARATHON nor MARATHON MONDAY is Opposer's official name is not a dispositive factor," citing nickname cases, e.g., Buffett v. Chi-Chi's, 226 U.S.P.Q. 428, 429 n. 4 (T.T.A.B. 1985) (MARGARITAVILLE). However, Opposer argued that BOSTON MARATHON is Opposer's persona, and that BOSTON MARATHON and MARATHON MONDAY are interchangeable. While the Board found that BOSTON MARATHON was an identity of Opposer, it disagreed that MARATHON MONDAY closely approximated this persona. "In other words, Applicant's mark...must do more than simply bring Opposer's BOSTON MARATHON persona to mind." Opposer failed this prong.
As to whether MARATHON MONDAY pointed uniquely and unmistakably to Opposer, the Board found that it did not. Applicant's evidence established that other entities use MARATHON MONDAY to refer to marathons other than the Opposer's. Given Opposer's failure of both these elements, the Board found no need to analyze the remaining prongs of the test and dismissed the opposition.
Boston Athletic Association v. Velocity, LLC, 116 U.S.P.Q. 2d 1217 (T.T.A.B. 2015).
Respondent's motion for summary judgment was granted as to the fraud alleged against it. Petitioner had failed to rebut Respondent's evidence of use, or raise any genuine dispute of material fact regarding Respondent's intent to deceive.
Petitioner sought to amend its petition for cancellation; this was denied as futile as its proposed new Sec. 2(a) claim lacked allegations that Respondent's mark is Petitioner's identity or "persona." Petitioner's request to amend to add the claim of "false representation" failed as futile as there is no such statutory claim for cancellation based on "false representation."
The Board clarified the timing of "insurance" extensions of time to permit changes to a Statement of Use. Filing a request to extend time to file the Statement of Use along with the Statement of Use "insures" that if the Statement of Use is not accepted, a new one can be substituted, and dates of use can be amended, depending on the timing. "An applicant which has filed its Statement of Use...may extend its deadline for meeting Statement of Use requirements by seeking an extension of time...." being a "so-called 'insurance' extension." This insurance extension may be filed either with or after the Statement of Use, so long as it is filed before the expiration of the current deadline for filing the Statement of Use. The insurance extension varies from other Statement of Use extensions because it is the last available extension of time." The Board gave very specific hypothetical-date examples of timing. The Board held that "in an inter partes proceeding, it will consider evidence of use which occurred after the filing of the statement of use but within the original or extended period for filing the statement of use," consistent with the ex parte rules.
Embarcadero Technologies, Inc. v. Delphix Corp., ___ U.S.P.Q. ___ (T.T.A.B. 2016).
Petitioner filed a petition to cancel a registration on the grounds of likelihood of confusion and dilution. Respondent filed a motion to dismiss the case pursuant to F. R.Civ. P. 12(b) (6) for failure to state a claim, arguing that "both claims are implausible and Petitioner's asserted trademark rights conflict with the doctrine of aesthetic functionality and the prohibition against claims of trademark rights in gross." The Board denied the motion, finding the Petitioner had properly stated a claim. Respondent requested reconsideration, arguing that the Board erred because it did not specifically address all of its arguments. The Board in this Opinion denied the request for reconsideration, because "A motion to dismiss for failure to state a claim concerns only one issue: The legal sufficiency of the pleaded claims.... The Board is not required to address matters unnecessary to its determination of the legal sufficiency of a pleading."
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Guess? IP Holder L.P. v. Knowluxe LLC, 116 U.S.P.Q. 2d 2018 (T.T.A.B. 2015).
Opposer was unsuccessful in its motion for summary judgment. The Board found that despite Applicant's "sham affidavit" and the exclusion of a deponent's errata sheet, Opposer had not discharged its burden of showing that there were no genuine disputes of material fact.
Opposer alleged likelihood of confusion of its registered HOLLYWOOD CASINO mark, for casino services, and hotel services. Applicant sought to register HOLLYWOOD HOTEL for hotel and related services. Opposer took the discovery deposition of Applicant and a few days later, based on that testimony, moved to amend its Notice of Opposition to plead that Applicant's application was void ab initio on the basis that Applicant was not the owner of the mark at issue, but was merely a licensee of the owner. The Board found the claim was timely raised and no reopening of the discovery period would be necessary as the information needed for Applicant to defend the proposed additional claim was already in Applicant's custody or control. The Board agreed that if Applicant were not the owner of the mark sought to be registered at filing, its application would indeed be void. However, the Board found the deposition testimony "merely establishes that Applicant was not the owner of the physical property known as the Hollywood Hotel...at the time the application was filed." (Emphasis in original), resulting in a genuine dispute of material fact as to the question whether Applicant was the owner of the subject mark on the date the application was filed.
After the discovery deposition that Opposer said supported its claim that the Applicant was not the owner of the mark, and within the 30 day period allowed for the deponent to review its deposition and provide an errata sheet, the Applicant served an errata sheet, per F.R. Civ. P. Rule 30 (e). That errata sheet sought to "clarify" and contradict the Applicant's own testimony about the control of the mark and the licensing of the mark to try to undo the admissions made during the testimony. This was a case of first impression for the Board with respect to a discovery deposition, but the Board noted that it had ample experience with similar facts in testimony depositions: "[T]he Board has made it clear that while typographical and editorial corrections may be made in a transcript, any changes in a testimony deposition which are substantive in nature and, in effect...
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