Milne, Inc.v.Jeremy M. Kempter d/b/a Old Town Distilling Co.

Trademark Trial and Appeal Board

Feb 24, 2015

No. 91220102 (T.T.A.B. Feb. 24, 2015)

CME Mailed: February 24, 2015

Opposition No. 91220102
Milne, Inc.
v.
Jeremy M. Kempter d/b/a Old Town
Distilling Co., Jeremy Matthew
Kempter d/b/a Old Town Distilling Co.

Christen M. English, Interlocutory Attorney:

On February 20, 2015, at Applicant’s request, the Board participated in
the parties’ telephonic discovery conference mandated under Fed. R. Civ. P.
26(f) and Trademark Rule 2.120(a)(1) and (a)(2). Michael Cohen appeared on
behalf of Opposer, Wendy Peterson appeared on behalf of Applicant, and the
assigned interlocutory attorney participated on behalf of the Board.
During the teleconference, the parties agreed to accept formal service of
papers by email pursuant to Trademark Rule 2.119(b)(6). Opposer’s email
address for service is mcohen@schwabe.com and Applicant’s email address for
service is wsp@NJPLS.com. As a courtesy, Applicant also agreed to send cc’s
of papers to Opposer at trademarks@schwabe.com.
The parties confirmed that there are currently no pending related Board
proceedings, court actions, or third-party disputes. The parties also reported
that they have engaged in some settlement discussions at the business level.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
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The Board strongly encourages the parties to work together to resolve their
dispute, if possible.
The Board next addressed the pleadings noting that Opposer has
sufficiently alleged its standing and a claim for priority and likelihood of
confusion. Opposer attached to its notice of opposition copies of the
certificates of registration for its pleaded registrations, but such certificates
of registration do not show the current status and title of the registrations,
and therefore, Opposer’s pleaded registrations are not of record in this
proceeding. See Trademark Rule 2.122; see also TBMP § 704.03(b)(1)(A). If
Opposer properly introduces one or more of its pleaded registrations into
evidence during its trial period, priority will not be an issue at trial unless
Applicant asserts counterclaims to cancel Opposer’s pleaded registrations.
See Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998)
(citing King Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 110 (CCPA 1974)). In such circumstances, standing also will
not be an issue as Opposer’s pleaded registrations will establish its standing
to bring its claim.
Turning to Applicant’s answer, the Board advised that allegations that
Opposer’s marks are geographically descriptive or descriptive are attempted
collateral attacks against Opposer’s pleaded registrations and are
impermissible absent counterclaims. Accordingly, the following matter is
STRICKEN from the answer:
Opposition No. 91220102

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• Paragraph 4, line 3, phrase “and Opposer’s use of OLD TOWN is
geographically descriptive”;
• Paragraph 5, line 5, phrase “and Opposer’s use of OLD TOWN is
geographically descriptive”; and
• “Affirmative Defense” #1.
Further, Affirmative defense # 2, which asserts that Opposer has not
“established” a family surname, is immaterial because Opposer has not
pleaded a family of marks. Accordingly, Affirmative Defense # 2 also is
STRICKEN. Affirmative Defense # 3 is a properly pleaded affirmative
defense and is allowed to stand.
During the teleconference, Applicant’s counsel indicated that Applicant
would be willing to utilize Accelerated Case Resolution (“ACR”) to resolve this
proceeding, and Opposer’s counsel agreed to discuss this possibility with
Opposer. The Board encourages the parties to consider pursuing ACR as this
case appears to be a straight forward likelihood of confusion case.
As discussed during the discovery conference, ACR can take almost any
form that the parties agree to and that will move this proceeding forward in
an efficient and expeditious manner. The simplest form of ACR would be
similar to summary judgment whereby the parties would submit briefs with
attached evidence, but would agree to allow the Board to resolve any genuine
disputes of material fact raised by the parties’ filings or the record. See, e.g.,
Chanel Inc. v. Makarczyk, 106 USPQ2 1774 (TTAB 2013) (parties stipulated
Opposition No. 91220102

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to a number of facts and procedural issues, including submission of summary
judgment briefs, accompanied by the parties’ evidence). If such an approach
is adopted, the Board will endeavor to issue a decision within fifty (50) days
after briefing has been completed. Alternatively, the parties may wish to
consider ACR-like efficiencies such as: stipulating to some or all of the facts,
foregoing discovery in favor of greater reciprocal disclosures than required by
Fed. R. Civ. P. 26(a)(1), limiting discovery in time and scope (i.e. 60-day
discovery period with each party limited to 10 interrogatories, document
requests and requests for admission and 1 deposition), and/or taking
testimony by declaration, subject to the right of either party to cross examine,
if desired. See, e.g., Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1678
(TTAB 2007) (parties stipulated to entire record of the case including
business records, public records, government documents, marketing
materials and materials obtained from the Internet as well as thirteen
paragraphs of facts; the parties agreed to reserve the right to object to such
facts and documents on the bases of relevance, materiality and weight).
More information about ACR can be found by following the links below:
1. General description of ACR:
http://www.uspto.gov/trademarks/process/appeal/Accelerated_Case_Re
solution__ACR__notice_from_TTAB_webpage_12_22_11.pdf;
2. FAQs on ACR:
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http://www.uspto.gov/trademarks/process/appeal/Accelerated_Case_Re
solution_(ACR)_FAQ_updates_12_22_11.doc;
3. List of cases employing ACR-like efficiencies:
http://www.uspto.gov/trademarks/process/appeal/ACR_Case_List_(10-
23-12).doc;1
4. Potential ACR schedules:
http://www.uspto.gov/trademarks-application-process/appealing-
trademark-decisions/ttab-acr-options; and
5. Sections 528.05(a)(2), 702.04 and 705 of the TBMP (2014).
If the parties are interested in pursuing ACR, they are encouraged to contact
the assigned interlocutory attorney for assistance in crafting a suitable ACR
plan.
The Board’s standard protective order is applicable herein by operation of
Trademark Rule 2.116(g) and available here:
http://www.uspto.gov/trademarks/process/appeal/guidelines/stndagmnt.jsp
The parties are encouraged to acknowledge their obligations under the
protective order in writing, and may utilize the following form:
http://www.uspto.gov/trademarks/process/appeal/guidelines/ackagrmnt.jsp

1 It may be helpful for the parties to review the docket entries and filings for these
cases (accessible through TTABVue at http://ttabvue.uspto.gov/ttabvue/) to see the
types of ACR and ACR-like efficiencies that parties have utilized in Board
proceedings.

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The Board reminded the parties that neither discovery requests nor
motions for summary judgment may be served until after initial disclosures
are made.
Lastly, the Board is available for future telephone conferences to resolve
contested matters, address scheduling issues, assist the parties in developing
stipulations of fact or negotiating an ACR plan, and to address other issues,
as necessary, to move this case forward efficiently.
Dates remain as set in the Board’s institution order of January 9, 2015.
***