OPP (T.T.A.B. Oct. 21, 2009)

AQFTM, Inc.v.Austinuts, Inc.

Trademark Trial and Appeal BoardOct 21, 2009

OPP (T.T.A.B. Oct. 21, 2009)

Hearing: Mailed: April 23, 2009 October 21, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE _______ Trademark Trial and Appeal Board _______ AQFTM, Inc. v. Austinuts, Inc. _______ Opposition Nos. 91166551 and 91166552 _______ RECONSIDERATION _______ Patricia S. Smart of Smart & Bostjancich for AQFTM, Inc. Orlesia A. Tucker of Graves Dougherty Hearon & Moody for Austinuts, Inc. _______ Before Walters, Bucher and Holtzman, Administrative Trademark Judges. Opinion by Walters, Administrative Trademark Judge: On August 6, 2009, the Board issued its decision sustaining these consolidated oppositions by AQFTM, Inc. to the applications of Austinuts, Inc. to register the marks AUSTINUTS and the design mark shown below for “nuts, namely, dry roasted nuts,” in International Class 29.1 1 Application Serial Nos. 76485325 and 76485326, respectively, both of which were filed January 27, 2003, based on use in commerce, alleging first use and use in commerce as of September 15, 1993. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91166551 2 The ground for opposition in each application, was opposer’s assertion that applicant’s mark, when applied to applicant’s goods, so resembles opposer’s previously used and registered marks for cookies and crackers as to be likely to cause confusion, under Section 2(d) of the Trademark Act. On September 9, 2009, applicant’s president filed a submission that we have construed as a request for reconsideration of the Board’s decision in the oppositions. Applicant primarily reargues the facts of its case, which is not a proper basis for a request for reconsideration. In this context, applicant contends (1) that the Board should not have granted opposer’s motion to strike the version of Mr. Ilai’s deposition filed by applicant in favor of the version to which opposer, applicant and the court reporter stipulated; (2) that opposer’s counsel held an ex parte communication with two of the Board judges immediately prior to the oral hearing; and (3) that one of the Board judges appeared at the hearing via video-conference and that there were technical difficulties with the transmission. Applicant claims that it was prejudiced by these three Opposition No. 91166551 3 occurrences and requests that its case be reviewed by a new panel of judges. Opposer has opposed the request for reconsideration on the ground that applicant is merely re-arguing the case. Regarding the alleged ex parte communication, opposer states that applicant’s counsel was present at this exchange and that it involved applicant’s use of an exhibit at the hearing, which the Board allowed. The USPTO has also received notice that, on October 5, 2009, applicant appealed the Board’s decision to the U.S. District Court for the Western District of Texas (case no. A09 CA73055). In view of applicant’s appeal of the Board’s decision, the request for reconsideration is moot and will be given no consideration. We note, however, that even if we had considered the request, we would have denied the request for reconsideration on the ground that we find no error in our decision as issued. Applicant’s arguments about the Ilai deposition merely rehash arguments made at trial. Regarding the alleged ex parte communication, applicant did not reply to dispute opposer’s statement that applicant’s counsel was present at the communication and, furthermore, the Board allowed the use of applicant’s exhibit at the hearing. Thus, there was no prejudice to applicant. Regarding the Opposition No. 91166551 4 video conferencing of one of the judges participating in the oral hearing, the Board regrets that there were technical difficulties. However, despite those difficulties, the judge participated fully in the oral hearing and, in deciding the case, all of the judges had available to them the full record herein. Thus, the video conferencing did not prejudice applicant. Decision: The Board’s decision stands. The oppositions are sustained on the ground of likelihood of confusion, and registration to applicant is refused in each application.