Thursday, March 08, 2007

Precedential No. 18: TTAB Interlocutory Ruling Re Amendment of Opposed Application

Rarely does the Board issue a precedential interlocutory ruling, but it did so in Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433 (TTAB 2007) [precedential]. It denied Applicant's motion to amend the opposed application (Trademark Rule 2.133), granted Applicant's motion to divide out the services in three unopposed classes, denied Opposer's motion to amend its notice of opposition to oppose those three classes, and denied cross motions for summary judgment.

Applicant Inofin sought to register the mark DRIVEUSA for certain automobile financing services in class 36, but was opposed by Drive Trademark Holdings LP, owner of the registered marks D DRIVE and D DRIVE FINANCIAL for other automobile financing services.

Motion to Amend Application: Inofin moved to amend its application to narrow its services. Opposer opposed. The Board noted that it generally defers decision on an unconsented Rule 2.133 motion until final decision, but will decide earlier if the proposed amendment "serves to limit ... the recitation of services and if the applicant consents to the entry of judgment on the question of likelihood of confusion between opposer's and applicant's mark with respect to the broader ... recitation of services." Applicant must make a prima facie showing that the amendment "serves to change the nature and character of the ... services or to restrict their channels of trade and customers in such a manner that a substantially different issue for trial has been introduced." Also the specimens of use must support the remaining services.

Here, Inofin's motion was limiting in nature but its specimen of use supported only the deleted services. Moreover, Inofin did not consent to judgment as to the broader, original recitation. Therefore, the Board denied the motion, but noted that Inofin could file a renewed motion that addressed those deficiencies.

Motion to Divide/Motion to Amend Opposition: Inofin moved to divide the opposed application so that the services in classes 35, 37, and 39 could proceed to issuance. Opposer countered by moving to amend its Notice of Opposition to include those three classes. The Board granted Inofin's motion and denied Opposer's because "an opposition may not be amended to add to the goods or services opposed." See Trademark Rule 2.107.

Cross-motions for Summary Judgment: As usual, genuine issues of material fact precluded the grant of summary judgment. The Board noted that just because both parties file for summary judgment, that "does not necessarily mean that there are no genuine issues of material fact, and that trial is unnecessary."

Text Copyright John L. Welch 2007.


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