Ttab Decisions and Developments

• Jurisdiction: United States,Federal
• Citation: Vol. 44 No. 1
• Publication year: 2019
• Author: Jane Shay Wald
• topic: Contracts,Trademark,Civil Procedure

TTAB Decisions and Developments

Jane Shay Wald

Irell & Manella LLP

PRECEDENTIAL CASES OF THE TRADEMARK TRIAL AND APPEAL BOARD

Rules Change When Some Things Get Filed Read Them So You Don't Go Wild! Read Again, And Do Be Wary Otherwise, It Does Get Scarey

Opposer's motion for reconsideration of the Board's order denying its motion to compel discovery responses as untimely was denied. "The deadline for Opposer's pretrial disclosures fell on Monday, September 25, 2017; therefore, under Trademark Rule 2.120(f) (1), 37 C.F.R. Sec. 2.120 (f)(1), the last date to file a motion was 'before the day of' that date." Trademark Rule 2.196 provides "when the day or last day as fixed by statute or regulation falls on a Saturday, Sunday or Federal holiday...the action may be taken on the next succeeding day that is not a Saturday, Sunday or Federal Holiday."

Opposer filed its motion to compel on Monday, September 25, 2017, believing that "the day before" would have put its filing date on a Sunday. "However, this Rule does not apply to the relevant provision of Trademark Rule 2.120 (f) (1), which does not fix a particular day by which a motion to compel must be filed, but instead ensures that the motion will be filed before the day another event (pretrial disclosures) occurs. The Board noted that Rule 2.196 does not apply to the requirement that discovery be served early enough so responses will be due no later than the close of discovery, for example.

The Board explained that Trademark Rule 2.120(f) (1), 37 C.F.R. Sec. 2.120(f) (1) amended effective January 14, 2017, requires a motion to compel discovery " 'before the deadline for pretrial disclosures for the first testimony period as originally set or as reset.'" The policy is to allow discovery disputes to be resolved prior to trial, "and avoids the expense and uncertainty that arise when discovery disputes erupt on the eve of trial." Asustek Computer Incorporation v. Chengdu Westhouse Interactive Entertainment Co., Ltd., 128 U.S.P.Q.2d 1470 (T.T.A.B. Oct. 31, 2018).

The Parties Agreed, Not In Writing On Trademarks For Condoms Called "Nude" On The One Hand, And "Naked," They're Fighting Despite Their Consent, One Side Sued Although Their Agreement Was Oral A Mutual Meeting Of Minds Was Proven And Ended Their Quarrel When A Contract Is Valid, It Binds

Petitioner sought to cancel Respondent's registration for NAKED for condoms on the basis of prior use of NAKED for the same goods. The Board denied the Petition on the basis that Petitioner lacked standing because it had agreed not to use or register NAKED for condoms in the U.S., and, moreover, had agreed that Respondent could do so.

The Board agreed that Petitioner and Respondent had entered into an oral or informal understanding that Petitioner would use and register NUDE for condoms while Respondent would use and register NAKED for condoms.

The Petitioner argued the "inevitable confusion" doctrine in response to Respondent's affirmative defense of contractual estoppel. The Board pointed out that only the defense of equitable estoppel, not contractual estoppel, is negated by inevitable confusion. In addition, the Board saw the issue as one of standing, concluding that Petitioner lacked a real interest in the proceeding or a reasonable basis for its belief of damage, "having contracted away its right to use and register NAKED...."

As to the unwritten agreement, the elements to determine existence of a contract are mutuality of intent to contract, consideration, and lack of ambiguity in offer and acceptance. All were found here. The parties attempted to resolve their dispute over the NAKED mark and exchanged written proposals, but none was signed. Eventually, Respondent told Petitioner that Respondent was going to market its goods under the mark and that they "should put their agreement on paper." Petitioner replied:

No need to put anything on paper. Just makes lawyers a lot of money. We no longer have any Naked condoms in the USA, so

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it should be clear sailing for you. Good luck with the launch." The Board surmised that if there was no agreement, "Petitioner would have advised Respondent that there was no agreement or at least questioned Respondent as to why it wrote that there was an agreement.

The Board agreed with Respondent that Petitioner did not want to get lawyers involved to formalize an agreement because it knew it planned to circumvent their oral agreement and continue to sell NAKED condoms in the U.S. via internet.

The Board summarized how the contract was formed. The mutuality of intent to contract was satisfied because the parties recognized their trademark issue and they communicated and exchanged offers to resolve it. The consideration...is Petitioner's agreement not to use or register the NAKED trademark for condoms in the United States and Respondent's agreement not to use or register the NUDE trademark for condoms. Lack of ambiguity in offer and acceptance is evidenced by the facts that Petitioner stopped using the NAKED mark in the United States, Petitioner did not interfere with Respondent's use and registration of the NAKED mark in the USPTO, Petitioner registered the NUDE trademark in the United States, and Respondent did not interfere with Petitioner's use and registration of the NUDE trademark in the USPTO."

Because the case was dismissed for lack of standing, the Board had no need to review the issues of priority or the other claims. Therapeutic Supplies Pty. Ltd. V. Naked TM, LLC, 129 U.S.P.Q.2d 1027 (T.T.A.B. 2018).

Here's How It Went The Board Liked The Consent Of Two Cruise Lines Who Used "Constellation" They Know Best, Said The Board And Should Not Be Ignored As They Sail Off The Coasts Of This Nation

The Board reversed the Examining Attorney's refusal to register Applicant's AMERICAN CONSTELLATION for cruise ship services under Sec. 2(d). The Examining Attorney perceived a likelihood of confusion with the CONSTELLATION...