Dubliner, Inc.v.The Irish Dairy Board Co-Operative Limited

Trademark Trial and Appeal Board

Nov 10, 2008

No. 91164315 (T.T.A.B. Nov. 10, 2008)

Mailed
10 November 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Dubliner, Inc.
v.
The Irish Dairy Board Co-Operative Limited
_____

Opposition No. 91164315
Cancellation No. 92044189
_____

Decision on Remand
______

Joseph D. Lewis of Barnes & Thornburg, LLP for Dubliner,
Inc.

Anthony R. Masiello of Holland & Knight LLP for The Irish
Dairy Board Co-Operative Limited.
______

Before Rogers, Drost, and Mermelstein, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 30, 2007, the board held in favor of
defendant The Irish Dairy Board Co-Operative Limited
(applicant/respondent) and dismissed the notice of
opposition to the registration of defendant’s application
Serial No. 75922820 and denied a petition to cancel
defendant’s Registration No. 2319632, both filed by
plaintiff Dubliner, Inc. (opposer/petitioner).
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91164315
Cancellation No. 92044189
2
After the board’s decision, plaintiff appealed to the
U.S. Court of Appeals for the Federal Circuit. On October
10, 2008, the Court issued the following order:
Upon consideration of the parties’ joint motion to
remand this case … for further proceeding consistent
with the settlement agreement reached by the parties
and, specifically, to allow the parties to jointly move
the Board for vacatur of its decision on appeal,

IT IS SO ORDERED THAT:
(1) The motion is granted.
(2) All remaining motions are moot.
(3) Each side shall bear its own costs.

The parties have now filed a Joint Motion to Vacate
Judgment and Terminate Proceedings, which provides as
follows:
By this motion, the parties expressly do not request
any relief that would adversely affect the Application
or the Registration. It is the intention of the
parties that if the Board grants this motion, or any
part thereof, the Application will remain pending,
Applicant will be permitted to continue to prosecute it
to ultimate registration, and the Registration will
continue to subsist on the Principal Register.

Joint Motion at 2-3 (emphasis in original).
Specifically, the parties request (Joint Motion at 4)
that the Board:
(1) Vacate its decision issued on August 30, 2007;
(2) Deem the Opposition and the Cancellation withdrawn
with prejudice; and
(3) Forward the Application to the appropriate division
of the U.S. Patent and Trademark Office for issuance of
a registration in due course.

The Trademark Trial and Appeal Board Manual of Procedure,
Section 544, provides:

Opposition No. 91164315
Cancellation No. 92044189
3
Where the parties are agreed that the circumstances
warrant the vacating or setting aside of a final
judgment, a stipulation or consented motion for relief
from the judgment should be filed. The Board
ordinarily will grant a consented request for relief
from judgment.

Inasmuch as there are no circumstances that would
suggest that relief from judgment would not be appropriate
in this case and the result is consistent with the decision
of August 30, 2007, the motion to vacate is granted.
Decision: Plaintiff’s notice of opposition to
Application Serial No. 75922820 and petition to cancel
Registration No. 2319632, are both withdrawn with prejudice.
The Joint Motion to vacate the judgment of the board entered
August 30, 2007, is granted.