Friday, April 05, 2024

Three Recent TTAB Inter Partes Decisions of Interest

Here are three recent TTAB decisions that you may find of interest. Some of you may remember a rock-and-roll group called "The Young Rascals," later called "The Rascals" once they got older. Three of the original members are still involved in a dispute over use of the name. As part of a long running battle over the mark DERMAPEN, the Board deemed that mark abandoned because the respondent's parent was the user of the mark but the registration was owned by a subsidiary. And the third case demonstrates that discovery is very helpful, if not mandatory, in proving nonuse.

Dino Danelli and Edward Brigati v. Beata Music LLC, Opposition No. 91249965 (March 29, 2024) [not precedential]. [In a 55-page opinion, on cross-motions for summary judgment, the Board sustained this opposition to registration of the mark THE RASCALS for clothing items and entertainment services, upholding Opposer Edward Brigati's claim of contractual estoppel and rejecting Applicant Beata Music's affirmative defense of issue preclusion based on a SDNY litigation. Opposers Danelli and Brigati were members of the original group, along with Felix Cavaliere and Gene Cornish, members of the applicant.]

DP Derm, LLC v. Derma Pen IP Holdings LLC, Cancellation No. 92073045 (April 3, 2024) [not precedential] (Opinion by Judge Jyll S. Taylor). [In a 50-page opinion, the Board gwasanted a petition for cancellation of a registration for the mark DERMAPEN for "skin treatment devices using multiple needles in a vibrating method for performing skin treatment procedures." Distinguishing the Wella precedents, the Board followed its Noble House decision [TTABlogged here] by ruling that because the subject mark was used by respondent's parent company, not by respondent, the DERMAPEN mark was abandoned in light of three years of nonuse with no intent to resume use.]

MEC Addheat Co. Ltd. v. Baiduren (Dongguan) E-Commerce Co., Ltd., Cancellation No. 92079084 (March 29, 2024) [not precedential] (Opinion by Judge Thomas V. Shaw). [The Board granted this petition for cancellation of a registration for the mark ADDHEAT for "Boots; Gloves; Hats; Hoodies; Insoles; Jackets; Overalls; Pants; Shoes; Sweatshirts; Thermal underwear; Tops as clothing; Undershirts; Vests" on the ground of nonuse. Based on petitioner's brief and notice of reliance, the Board concluded that the issue of nonuse was tried by implied consent. Because respondent failed to respond to petitioner's requests for admissions they were deemed admitted, thereby establishing that the mark was not in use for the identified goods at the time the underlying application was filed. And so, the registration was deemed void ab initio.]

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Text Copyright John L. Welch 2024.


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