Glen Raven, Inc.v.Amerinova Properties, LLC

Trademark Trial and Appeal Board

Jan 7, 2015

No. 91192496 (T.T.A.B. Jan. 7, 2015)

Mailed:
January 7, 2015

United States Patent and Trademark Office
Trademark Trial and Appeal Board
________

Glen Raven, Inc.
v.
Amerinova Properties, LLC

________

Opposition No. 91192496
_______
Christopher Kelly and Jennifer L. Elgin of Wiley Rein LLP for Glen Raven, Inc.

Jennifer L. Whitelaw of Whitelaw Legal Group for Amerinova Properties, LLC.
_______
Before Cataldo, Taylor and Wolfson, Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
On July 23, 2013, the Board issued a final decision in this matter, dismissing
Opposer’s claims under Sections 2(d) and 43(c) of the Trademark Act, 15 U.S.C. §§
1052(d) and 1125(c). Opposer appealed the decision of the Board by filing, pursuant
to 15 U.S.C. § 1071(b), civil case No. 13-CV-2278-H-NLS, in the United States
District Court for the Southern District of California.
Thereafter the parties reached a settlement of the matter and on July 28,
2014, the Court issued an order remanding the action with instructions to “the
This Opinion is Not a
Precedent of the TTAB
Opposition No. 91192496

2

TTAB to facilitate resolution of the dispute and accept the parties’ agreement to
withdrawal [of] Amerinova’s application with prejudice and [to] dismiss Glen
Raven’s opposition as moot.” The Court order notes that the parties have entered
into a written settlement agreement that is contingent on vacatur of the TTAB
decision.
On August 5, 2014, the parties filed a joint motion to vacate the Board’s
decision. The parties submit that vacatur of the Board’s decision is an essential
condition of the agreement:
After extensive negotiations, the Parties reached a
conditional agreement and entered into a written
settlement agreement (the “Agreement”) that
conditionally resolved their dispute, the Federal Action,
and the Opposition. As an essential condition of the
Agreement, the Parties agreed to vacatur of the TTAB
Decision and also agreed to the withdrawal of the
Application with prejudice and the dismissal of the
Opposition as moot.
In view of the above, the decision issued July 23, 2013, is hereby vacated,
Applicant’s withdrawal (abandonment) of its application Serial No. 77703289 with
prejudice is accepted and entered, and Opposition No. 91192496 is dismissed as
moot.