TTAB's 13th Citable 2004 Decision Bobs To The Surface

Just when we thought the book was closed on the year 2004, a 13th citable TTAB decision has surfaced: namely, the Board's interlocutory decision in Cognis Corp. v. DBC, LLC, 73 USPQ2d 1766 (TTAB 2004).

Xango
In Opposition No. 91155308, Cognis Corporation has opposed the application of DBC, LLC to register the mark XANGO for "liquid dietary supplements," relying on its registration of the mark XANGOLD for dietary and nutritional supplements. DBC asserted a counterclaim for partial cancellation of the cited registration, claiming that Cognis has used its mark only on "lutein ester supplements."

Both parties moved for summary judgment. The Board first quickly denied DBC's motion, stating merely that DBC "has failed to meet its burden of showing the lack of a genuine issue that opposer's use of its mark has been as limited with regard to scope and trade channels as applicant claims."

The Board likewise denied Opposer's summary judgment motion:

"Inasmuch as we have determined above that there are genuine issues with regard to the goods upon which opposer has used its mark in commerce, we find that it is inappropriate to dispose of opposer's likelihood of confusion claim by summary judgment. In other words, so long as it remains possible that opposer's registration may ultimately be restricted, we cannot say that there are no genuine issues in dispute regarding . . . Section 2(d)."

The Board then noted that, even if there were no counterclaim, there still would be a genuine issue of material fact with regard to the similarity of the parties' marks.

The TTABlog humbly asks: what exactly is it about this decision that merits the "citable" designation? Basically, all it says is that summary judgment will be denied if the Board finds genuine issues of material fact. The opinion contains very little explanation, and in fact is just over 4 pages long. Had this decision remain submerged, the TTAB bar would, I think, have been none the worse off.

Text ©John L. Welch 2005. All Rights Reserved.