Monday, August 01, 2011

Precedential No. 18: TTAB Denies Motion to Re-Open Testimony Period, Dismisses 2(d) Opposition for Shortage of Proof

The TTAB issued a red card to Opposer Vital Pharmaceuticals in its opposition to registration of the mark REDLINE for "cosmetics, perfumes, and fragrances for personal use." Vital claimed likelihood of confusion with its identical mark, registered for nutritional supplements, isotonic and sports drinks, and for related retail store services. But it missed the date for filing its brief, and when it sought to re-open the testimony periods, the Board denied Vital's motion, ruling that Vital had failed to establish excusable neglect. The Board then looked at Vital's pleaded registrations and at the admissions in Applicant's answer, and dismissed the opposition due to lack of proof that the involved goods/services are related. Vital Pharmaceuticals, Inc. v. Conrad J. Kronholm, Jr., 99 USPQ2d 1708 (TTAB 2011) [precedential].

When the Board issued an order to show cause due to Vital's failure to file a brief (Rule 2.128(a)(3)), Vital claimed that it had been in settlement negotiations with Applicant, and that it had not lost interest in the case. Vital requested that its time to file a brief be extended and that all deadlines be reset "to allow the parties to conclude the trial period of this matter."

Applicant Kronholm, however, asserted that there have been no settlement discussions, and he pointed to a communication from Opposer two months prior to Opposer's testimony period stating Opposer did not wish to settle.

The Board discharged the show cause order, finding that Vital had not lost interest in the case, but it refused to re-open the testimony periods. Applying its standard Pioneer analysis, the Board found that the failure to seek extensions of time for its testimony period were within Vital's reasonable control. The "purported" settlement discussions did not prevent opposer from taking testimony or seeking an extension.

Moreover, because there was no need to resume the proceeding (due to Vital's insufficient proofs, as explained below), denied Vital's request to file a main brief.

The Board looked at Vital's evidence of record and concluded that it had not proven its claim. Vital submitted electronic copies of its registrations with its notice of opposition, under Rule 2.122(d)(1). Applicant Kronholm admitted that "[c]osmetics, perfumes and fragrances are sold in the same mass market stores and pharmacies, such as Wal-Mart, Walgreens, and CVS, where nutritional supplements are sold." Not enough, said the Board.

[T]he presence of the parties' respective goods in the same store does not necessarily lead to the conclusion that confusion would arise. [citations omitted] Here, there is no evidence that nutritional supplements and cosmetics, perfumes and fragrances would be sold in the same department or be situated near each other; nor is there evidence that the goods are complementary or would otherwise be purchased together, such that consumers would encounter both types of products in the course of a single shopping trip. Moreover, there is no basis, such as evidence that the same companies make nutritional supplements and cosmetics, perfumes and fragrances, or that they sell such products under a single mark, upon which we could conclude that consumers would assume that these different products emanate from a single source.

And so the Board dismissed the opposition.

Text Copyright John L. Welch 2011.


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