Friday, May 31, 2013

Precedential No. 18: Parties Opt for ACR, Foregoing Discovery, Trial, and Final Argument

The parties to this opposition proceeding opted for the Board's Accelerated Case Resolution (ACR) procedure, agreeing to forego discovery, expert testimony, trial, and oral hearing. They stipulated that the Board may resolve genuine issues of fact and issue a final ruling based on the parties' ACR submissions: i.e., briefs and declarations or affidavits. What do you think of this approach? Chanel, Inc. v. Makarczyk, 106 USPQ2d 1774 (TTAB 2013) [precedential].

Applicant Jerzy Makarczyk, appearing pro se, applied to register the mark CHANEL for "real estate development and construction of commercial, residential and hotel property." Chanel, Inc. opposed on the grounds of likelihood of confusion, false suggestion of a connection (Section 2(a)), and dilution, relying on a number of registrations for the mark CHANEL for cosmetics, toiletries, etc.

In addition to streamlining the procedure, the parties stipulated to a number of facts, mostly basic,  but including this one: "Applicant uses in connection with his real estate development and construction of commercial, residential and hotel property services not only the CHANEL mark but also the marks HERMES and PLAYBOY among others." Apparently, Opposer will attempt to parlay that fact into some kind of "bad faith" claim against Applicant.

The Board approved the stipulation, set a briefing schedule, and stated that it would "endeavor to issue a decision on the merits within 50 days of the due date for opposers' rebuttal brief." [i.e., before December 17, 2013]. [The proceeding was commenced on December 7, 2012].

Read comments and post your comments here.

TTABlog comment: Well, what do you think? Is it worth giving up discovery to get a "quicker" decision? It would certainly help keep the costs down, but I personally think that a party should take some discovery - at least paper discovery - before deciding whether to opt for ACR.

Text Copyright John L. Welch 2013.


At 12:40 AM, Anonymous Paul Reidl said...

You asked a thought-provoking question. In this case, why not do this? At bottom this is a dilution and 2(a) case and Chanel has the burden of proof. It has the evidence and lawyers who know what is needed to prove the case and how to put that into the record. So if the Board decides that they do not have the evidence, they lose, and discovery on the pro se applicant will not change that. This strikes me as a decision that the Opposer does not want to play around with a pro se applicant for years but wants to cut to the chase because it thinks it can win.

At 5:29 AM, Blogger John L. Welch said...

I agree that it's a good decision from Chanel's point of view. I'm nnt so sure from Applicant's point of view. Usually an ITU applicant has little to produce in discovery, whereas an Opposer claiming fame has a lot to produce.


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