Friday, March 27, 2009

Precedential No. 9: TTAB Dismisses 2(d) Petition to Cancel "DESIGNED TO SELL" Registration

After the excitement of the last two posts (captured in the illustration immediately below), we come back down to earth today with a mundane, albeit precedential, ruling in a Section 2(d) cancellation proceeding. Petitioner Giersch claimed common law rights in the mark DESIGNED2SELL for "providing the services of staging managers and or renters who are placed in residences for the sole purpose of maintaining them through the sales cycle in order to improve the residence's selling potential," and for related interior decorating services and landscaping services. He petitioned to cancel Scripps' registration for the mark DESIGNED TO SELL for entertainment services, including television programs relating to interior design, decorating, and landscaping. Giersch lost. Benjamin J. Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020 (TTAB 2009) [precedential].

Petitioner Giersch established priority vis-a-vis the staging services, but he failed to show that the interior decorating services or the landscaping services "ever constituted a regular or recurring activity such as to create common-law rights" for those services.

Respondent Scripps contended that Giersch abandoned any common-law rights by discontinuing use and by selling his business. However, because the purported abandonment period was less than three years, Scripps had the burden to prove that Giersch intended to abandon his mark, and its proofs fell short. Giersch testified that he intended and intends to resume use, and that his brother has run a parallel business using the mark, with Giersch's permission and control, since a date prior to the alleged abandonment period. As to the sale of his business, the sale did not include the trade name, which Giersch intended to maintain.

Turning then to the 2(d) issues, the Board found Giersch's mark to be "highly suggestive and weak" and the involved services to be "dissimilar and unrelated." Despite the "high similarity between the marks" and a possible overlap in customers, the Board found no likelihood of confusion, and it dismissed the petition for cancellation.

TTABlog comment: I fail to see why this decision was deemed precedential. Seems pretty straightforward to me.

Postscript: In an earlier interlocutory decision in this case, the Board exercised its discretion under Rule 36(b), Fed. R. Civ. P., to allow Scripps to "withdraw" its effective admissions (having failed to timely respond to requests for admission) and to serve responses to Giersch's admission requests.[TTABlogged here].

Text Copyright John L. Welch 2009.


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