Monday, January 23, 2012

A Sampling of TTAB Motion Practice

As we all know, the vast majority of TTAB proceedings never reach final decision. But many involve motion practice of one sort or another. The TTABlog focuses primarily on final decisions, but here is a sampling of recent rulings on assorted interlocutory motions.

Embarcadero Technologies, Inc. v. Delphix Corp., Opposition No. 91197762 (January 10, 2012) [not precedential]. Motion to strike four affirmative defenses. Defense of failure to state a claim stricken, but motion denied as to laches and acquiescence (generally unavailable in an opposition proceeding) because Applicant relied on the Morehouse doctrine, and denied as to equitable estoppel. [See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 U.S.P.Q. 715, 717 (C.C.P.A. 1969) (no injury from registration of BLUE MAGIC for pressing oil when applicant owned prior registration for BLUE MAGIC for hair dressing and “while there are trifling differences [between the marks] it takes careful inspection to detect them and the record showed the products sold under the two marks were ‘one and the same’”)].

Tata Sons Limited v. Tata’s Natural Alchemy, LLC, Opposition No. 91193987 (January 10, 2012) [not precedential]. Motion to amend notice of opposition denied as untimely because Opposer unduly delayed in bringing its motion (to add a registration issued eleven months before the filing of the motion, on an application that was on file when the notice of opposition was filed).

The Clorox Company v. Hermilo Tamez Salazar, Opposition No. 91198922 (January 12, 2012) [not precedential]. Applicant's motion for discovery under Rule 56(d) granted as to relatedness of the goods, classes of purchasers, and trade channels, but denied as to other topics first raised in Applicant's reply brief in support of the motion.

Robert P. Hornsby, Jr. v. Megan L. Murphy, Cancellation No. 92047058 (January 12, 2012) [not precedential]. Order to show cause dismissed as to Petitioner's failure to file a brief, but motion for leave to file the brief denied because Petitioner did not establish excusable neglect under the Board's Pumpkin test.

Oneida Ltd. v. Oneida Indian Nation of New York, Oppositions Nos. 91151254 and 91151404 (January 13, 2012) [not precedential]. Opposer's motion to re-open Applicant's testimony period for purposes of cross-examination denied under the excusable neglect standard, and its motion to extend its rebuttal period by sixty days denied under the good cause standard. However, the rebuttal period was re-set to give Opposer the ten days remaining in its rebuttal period when it filed its motion.

Text Copyright John L. Welch 2012.


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