Wednesday, November 16, 2011

Test Your TTAB Judge-Ability: How Confident Are You About Deciding This Section 2(d) Gardening Case?

There was no need for new Administrative Trademark Judge Linda A. Kuczma to "dig into the record" in order to write this, her first TTAB opinion. Neither party submitted any testimony or filed briefs in this Section 2(d) opposition involving Helen Yoest's application to register the mark GARDENING WITH CONFIDENCE for "providing a website featuring information in the field of gardening" [GARDENING disclaimed]. Opposer McCorkle Nurseries claimed likelihood of confusion with its registered mark GARDENER’S CONFIDENCE for "live plants, trees and flowers" [GARDENER'S disclaimed]. That's all you need to know. How would you rule? McCorkle Nurseries, Inc. v. Helen Yoest dba Tiger Lily’s, Opposition No. 91191035 (October 26, 2011) [not precedential].

Procedure: Opposer McCorkle's opening brief was due on March 5, 2011 (a Saturday). On March 7, Opposer filed a motion seeking to re-open its testimony period [Good luck with that! - ed.], claiming that it was under the belief that the case had been suspended. The Board applied the Pioneer factors, finding that Applicant Yoest would not be prejudiced by a re-opening, but that resolution of this case would be significantly delayed. The cause of the delay was completely within Opposer McCorkle's control, and there was no reason for McCorkle to believe the case was suspended: "the parties were not engaged in settlement discussions, neither party filed a motion to suspend these proceedings, and the Board in fact never suspended this case." In short, the lack of a satisfactory explanation for the delay weighed "heavily against a finding of excusable neglect." Finally, the Board was unable to determine, on the record, whether Opposer McCorkle acted in good or bad faith.

Weighing all the factors, we find that the third factor, the reason for the delay, taken together with the second factor, the length and impact of the delay, weigh heavily against a finding of excusable neglect and therefore deny opposer’s motion to reopen its pretrial disclosure and testimony periods.

The Board also denied Opposer an extension of time to file its brief, again due to lack of a reasonable excuse for delay. Since neither Opposer nor Applicant Yoest submitted any evidence, and since Opposer had missed the briefing date, there was no need for the filing of a brief by Applicant, said the Board [I don't see why not - ed.], and it proceeded to the merits of the case.

Substance: The record was limited to the file of the opposed application and Opposer's registration, which became of record under Rule 2.122(b) because Applicant had counterclaimed to cancel the registration. [Had Applicant Yoest not counterclaimed, Opposer would have had nothing in the record].

The Board first looked to Applicant's Section 2(d) counterclaim. However, because Applicant had no evidence, she could rely only on the filing date of her (opposed) application (March 20, 2007), a date well after the filing date of Opposer's registration (December 21, 2004). Based on lack of priority, the Board dismissed the counterclaim.

Turning to Opposer McCorkle's 2(d) claim, the Board cryptically found the marks to be "somewhat different although they nonetheless have some similarities in appearance, sound, meaning and connotation."

As to the goods/services, "[i]nasmuch as the products sold by opposer are different from applicant’s services, and there is no evidence in the record to support the relatedness of such products and services, we find that applicant’s services are not similar or related to opposer’s products."

Balancing the du Pont factors, the Board found confusion unlikely, and it dismissed the opposition.

TTABlog comment: This was one strange case! The finding regarding the similarity of the goods and services is a bit unsatisfying. Couldn't the Board take judicial notice that there is some connection between plants, trees, and flowers, and a gardening website? But then, so what? I guess Opposer deserved to lose. However, don't forget that it can have a second bite of the apple via a Section 1071(b) civil action for review, in which it can create a new record.

Text Copyright John L. Welch 2011.


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