Precedential No. 30: TTAB Re-Designates as Precedential Its Opinion Vacating ROLEX/ROLL-X
On July 17, 2013, the Board re-designated as precedential its January 29, 2013 opinion in the ROLEX/ROLL-X case, vacating its original decision of December 5, 2011. The TTAB originally dismissed Opposer Rolex's dilution-by-blurring claim, concluding that Rolex had failed to prove that the applied-for mark ROLL-X for "x-ray tables for medical and dental use" would, despite an "actual association" between the marks, impair the distinctiveness of Opposer's famous ROLEX mark. And in a further ruling, the Board dismissed Rolex's claim that Applicant AFP did not have a bona fide intent to use the ROLL-X mark when it filed its application to register. [TTABlogged here]. Rolex appealed to the CAFC and, while the appeal was pending, applicant AFP unilaterally withdrew its application to register. The CAFC then dismissed the appeal as moot and remanded the case to "allow the Board to consider a motion to vacate its decision in the first instance, in accordance with United States Bancorp Mortgage Company v. Bonner Mall Partnership, 513 U.S. 18, 29 (1994), and for any further proceedings deemed appropriate by the Board." The Board concluded that U.S. Bancorp mandated that the Board's decision be vacated. [TTABlogged here]. Rolex Watch U.S.A., Inc. v. AFP Imaging Corporation, 107 USPQ2d 1626 (TTAB 2013) [precedential].