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Patent and Trademark Office Notices

(1) EX=Ex Parte Appeal; OPP=Opposition; CANC=Cancellation; CU=Concurrent Use; (SJ)=Summary Judgment; (MD)=Motion to Dismiss; (R) =Request for Reconsideration; (REM)=Decision on Remand (2) =Opinion Writer; (D)=Dissenting Panel Member

Date IssuedType of Case(1)Proceeding or Appn. NumberParty or PartiesTTAB Panel (2)Issue(s)TTAB DecisionOpposer’s or Petitioner’s mark and goods or servicesApplicant’s or Respondent’s mark and goods or servicesMark and goods or services cited by Examining AttorneyIssued as Precedent of TTAB
2-29 EX 86301277
86301384
86301547
Koninklijke Philips N.V. Zervas
Kuhlke
Adlin
2(d) Refusal
Affirmed in each involved application
  Three applications for WARM GLOW DIMMABLE LIGHT (and design) ("DIMMABLE LIGHT" disclaimed) [LED lamps] WARM GLOW [lighting fixtures] [LED (light emitting diode) lighting fixtures; lighting fixtures] No
2-29 OPP 91209028 Perfect Memorials LLC
v.
United Priority Distributors
Cataldo
Taylor
Ritchie
2(e)(1); 2(f)
 
Defense: unclean hands
Opposition
Sustained on both grounds; defense of unclean hands not available in 2(e)(1) case
  WEEPING ANGEL [funerary urns]   No
3-1 EX 86228926 Silhouette America, Inc. Kuhlke
Shaw
Greenbaum
2(e)(1) Refusal
Affirmed as to each class
  PIXSCAN [computer software for use in capturing images and
operating cutting machines, cutters, and plotters for cutting textile, paper, and cardstock in sheet or roll form in the field of crafts] [cutting mats for capturing images from which designs for
cutting machines for textile, paper and cardstock are generated]
  No
3-1 EX 86191836 Big Idea Brands LLC Taylor
Wellington
Wolfson
2(d) Refusal
Affirmed
  LAX FOR LIFE ("LAX" disclaimed) [athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; athletic shirts; pants; shirts; shorts; and t-shirts] LIFE IS LAX ("LAX" disclaimed) [wide variety of athletic apparel, including shirts, pants, hats and caps, footwear, fleece shorts, sweat shorts, and t-shirts]
LAX LIFE ("LAX" disclaimed) [athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; t-shirts]
No
3-2 EX 86291857 Medinol Ltd. Mermelstein
Bergsman
Lynch
2(d) Refusal
Affirmed
  ASSURE [stents; angioplasty balloons] ASSURANT and ASSURANT COBALT [devices and accessories used in intravascular and peripheral procedures, namely, balloon catheters, guide catheters, catheters, stents and guidewires] No
3-2 EX 85926813 Lawrence Foods, Inc. Richey
Bergsman
Pologeorgis
1 and 45 (use in commerce); (goods in trade) and Rules 2.34 and 2.56 (specimen) Refusal
Affirmed on specimen and use in commerce grounds; Refusal Reversed on goods in trade ground
  SWEET SUCCESS [instruction handbook of merchandising ideas and cost control instruction for bakery goods and products]   No
3-3 EX 86201991
86200220
Bankers Real Estate Trust, LLC Kuczma
Gorowitz
Lynch
2(d) Refusal
Affirmed in both involved applications
  CITADEL APARTMENTS (with and without design) ("APARTMENTS" disclaimed) [rental of apartments in an apartment community; management of apartments in an apartment community] CITADEL OUTLETS (with and without design) ("OUTLETS" disclaimed) [leasing of retail shopping mall space and tenant services, namely, building management of retail shopping mall space] No
3-3 EX 86429504 Boss Racing Products, LLC Zervas
Adlin
Gorowitz
2(d) Refusal
Affirmed based on Reg. No. 3817232
  BOSS RACING PRODUCTS (and design) ("RACING PRODUCTS" disclaimed) [BMX bicycle parts, namely, handle bar stems, excluding cruiser parts and bicycles] Reg. No. 3817232: BOSS CRUISER ("CRUISER" disclaimed) [bicycles, and structural parts of bicycles]
Reg. No. 3127031: BOSS HUGO BOSS (and design) [gymnastic and
sports articles and equipment, namely, skis, bicycles, golf clubs, golf tees, golf balls, head covers for golf clubs, golf
gloves, tennis rackets and tennis balls]
No
3-3 EX 86256664 Lawrence Foods, Inc. Richey
Bergsman
Pologeorgis
2(e)(1) Refusal
Affirmed
  CHOCOLATE GLAÇAGE (GLAÇAGE translates to "icing," "glazing," or "frosting") [icing and glazes for cakes, pies, donuts, and bakery goods]   No
3-3 CANC 92056381 Australian Therapeutic Supplies Pty Ltd.
v.
Naked TM, LLC
Richey
Bergsman
Wolfson
[Opinion "By the Board" (McNutt)]
2(d) and priority; 2(a) (false suggestion of a connection); bona fide intent to use
 
Defenses:
laches, equitable estoppel, unclean hands; contractual estoppel
Petition for Cancellation Granted in part on 2(d) (inevitable confusion) ground, contingent upon a showing of standing and priority at trial (partial summary judgment granted for Petitioner on contingent basis); defenses of laches, equitable estoppel, and unclean hands mooted if contingent showing made at trial NAKED and NAKED CONDOM [condoms] NAKED [condoms]   No
3-4 EX 86232287 Willesthorpe Limited Wellington
Kuczma
Heasley
2(d) Refusal
Affirmed
  COMFY CO ("CO" disclaimed) [beach clothes, namely, bathing trunks, bathing suits, bathing caps, swimsuits; caps, hats; coats, top coats, jackets, jerseys, jumpers, pants, parkas, pullovers, shirts, sports jerseys, sweaters, T-shirts, trousers, uniforms, vests, waterproof coats and waterproof jackets, sweatshirts, hooded sweatshirts, shoes, slippers, sandals] [retail store services, online retail store services, mail order retail store services, retail and wholesale store services featuring clothing, fashionwear, footwear and headgear, sportswear, and promotion of the aforesaid goods] KUMFY SLIPPERS ("SLIPPERS" disclaimed) [ballet slippers; bath slippers; dance slippers; disposable slippers; leather
shoes; leather slippers; leisure shoes; slippers; winter boots; women’s shoes]
COMFY TEE ("TEE" disclaimed) [t-shirts]
 
No
3-4 EX 86330492 Klick, Inc. Zervas
Wellington
Lynch
2(d) Refusal
Affirmed
  KATALYST [advice relating to the organization
and management of business; advisory services relating to business management and business operations; assistance and advice regarding business organization and management; business administration services; business information
management; business management]
CATALYST [business management and consultation services, namely project scheduling services for others relating to new product development and software utilization] [training services, namely, educating
others regarding generally accepted practices and principles for managing projects
relating to new product development and for software utilization]
No
3-4 OPP 91209621 GTFM, Inc.
v.
Fresh Body, LLC
Quinn
Cataldo
Gorowitz
2(d) and priority
 
Defense: Morehouse
Opposition
Sustained in Class 25;
Opposition Dismissed in Class 3 on Morehouse defense
FB (with and without design) and FB LEGACY [various items of apparel, including footwear, headwear, pants, and shirts] FRESH BODY FB (and design) ("FRESH" and "BODY" disclaimed) [non-medicated skin care preparations, namely, lotions (Class 3)] [clothing, namely, shirts, pants, shorts, sweatshirts, sportswear, in the nature of sweat pants and tank tops (Class 25)]   No

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