Multisorb Technologies, Inc.v.Pactiv Corporation

Trademark Trial and Appeal Board

Dec 30, 2013

No. 92054730 (T.T.A.B. Dec. 30, 2013)

DUNN

Mailed: December 30, 2013

Cancellation No. 92054730

Multisorb Technologies, Inc.

v.

Pactiv Corporation

Before Taylor, Mermelstein, and Bergsman, Administrative
Trademark Judges:

By the Board:

Multisorb Technologies, Inc. filed a petition to cancel Pactiv
Corporation’s Registration No. 2379185, which issued August 22, 2000 and
has been renewed, for the mark ACTIVETECH for “plastic containers for the
storage and display of perishable foods,” on the grounds of abandonment and
fraud. In lieu of the answer required by the Board’s last order, respondent
filed a motion consenting to judgment on the ground of abandonment only.
Respondent argues that because its consent to judgment on the ground of
abandonment is sufficient for cancellation, its acceptance of judgment on that
ground alone resolves this matter, and that the proceeding should
accordingly be terminated without judgment on petitioner’s fraud claim.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
This Decision is a
Precedent of the TTAB
Cancellation No. 92054730
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Thus, this case comes up on respondent’s motion for entry of judgment
on the abandonment claim only. The motion is contested. In support of the
motion, respondent argues that the Board’s manual of procedure allows a
party which does not wish to litigate the case to consent to judgment, and
does not specify that the judgment must apply to all claims. Trademark Trial
and Appeal Board Manual of Procedure (TBMP) § 604 (3rd ed. rev. 2 June
2013) (“If a party to an inter partes proceeding before the Board does not
wish to litigate the case, and is willing to accept entry of judgment against
itself, the party may file a statement with the Board indicating that it
consents to entry of judgment against itself.”). Respondent asserts that,
inasmuch as the entry of judgment on the abandonment claim is sufficient to
cancel the registration, the limited judgment “resolves this matter
completely.” Petitioner opposes the motion, arguing that if respondent does
not wish to consent to entry of judgment on the fraud claim, respondent must
answer the petition and defend its position.
DISCUSSION
Trademark Rule 2.116(a), 37 CFR § 2.116(a), provides that procedure
before the Board is generally governed by the Federal Rules of Civil
Procedure, except where otherwise provided in the CFR (Code of Federal
Regulations). Consistent with this provision, and to enhance predictability
and consistency, the Board also generally follows settled federal practice
when deciding cases raising procedural issues that fall within the interstices
Cancellation No. 92054730
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between the provisions in the Federal Rules, the CFR, and the Trademark
Board Manual of Procedure (“TBMP”). This is one of those cases.
Like the federal courts, the Board has generally used its discretion to
decide only those claims necessary to enter judgment and dispose of the case.
See TBMP 102.01; WRIGHT, MILLER, KANE, AND MARCUS, 13B Fed. Prac. &
Proc. Civ. § 3533 (3d ed., rev. 2013) (“Courts do not wish to make law, nor to
waste their limited resources, simply to satisfy a litigant's curiosity or a
naked desire for vindication.”). More specifically, the Board’s determination
of registrability does not require, in every instance, decision on every pleaded
claim. See American Paging Inc. v. American Mobilphone Inc., 13 USPQ2d
2036, 2039-40 (TTAB 1989), aff'd, 923 F.2d 869, 17 USPQ2d 1726 (Fed. Cir.
1990) (not precedential) (“Having determined that petitioner is entitled to the
relief it seeks based upon its claim pursuant to Section 2(d) of the Lanham
Act, we need not address petitioner's claim that registrant has abandoned its
rights in the mark AMERICAN MOBILPHONE PAGING and design.”).1 To
assess what claims must be decided to dispose of a case, the Board, like the
federal courts, will typically look to individual circumstances, including the

1 Accord ShutEmDown Sports, Inc. v. Lacy, 102 USPQ2d 1036, 1045-1046
(TTAB 2012) (“We need not discuss the remaining elements of the fraud claim or
render a decision on it, as we have already determined that the registration must be
cancelled in its entirety both on the abandonment claim and because of the
application's voidness.”); Venture Out Props. LLC v. Wynn Resorts Holdings LLC, 81
USPQ2d 1887, 1894 (TTAB 2007) (“In view of our decision finding a likelihood of
confusion, we need not reach the issue of dilution.”); Interlego AG v. Abrams/Gentile
Entertainment Inc., 63 USPQ2d 1862, 1864 (TTAB 2002) (“Having found that there
exists a likelihood of confusion, we elect to sustain the opposition on this basis
alone.”).
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specific claims pleaded. See WRIGHT, MILLER, KANE, AND MARCUS, 13B Fed.
Prac. & Proc. Civ. § 3533 (3d ed., updated April 2013) (“Courts recognize that
it may be valuable to decide alternative grounds, even though not all are
necessary, and also understand that there may be excellent reasons to avoid
alternative grounds.”).
Before turning to the question of whether judgment on a single claim
is appropriate here, we distinguish respondent’s motion from the procedures
set forth in Trademark Rule 2.134.2 Both of the situations contemplated in
Rule 2.134 and the issue presented by respondent’s motion involve
cancellation of a subject registration without the petitioner’s consent. 3
However, Trademark Rule 2.134 ensures that the unconsented cancellation of
a challenged registration outside the context of a Board proceeding does not

2 Trademark Rule 2.134 provides:
(a) After the commencement of a cancellation proceeding, if the respondent
applies for cancellation of the involved registration under section 7(e) of the Act of
1946 without the written consent of every adverse party to the proceeding, judgment
shall be entered against the respondent. The written consent of an adverse party
may be signed by the adverse party or by the adverse party’s attorney or other
authorized representative.
(b) After the commencement of a cancellation proceeding, if it comes to the
attention of the Trademark Trial and Appeal Board that the respondent has
permitted his involved registration to be cancelled under section 8 of the Act of 1946
or has failed to renew his involved registration under section 9 of the Act of 1946, an
order may be issued allowing respondent until a set time, not less than fifteen days,
in which to show cause why such cancellation or failure to renew should not be
deemed to be the equivalent of a cancellation by request of respondent without the
consent of the adverse party and should not result in entry of judgment against
respondent as provided by paragraph (a) of this section. In the absence of a showing
of good and sufficient cause, judgment may be entered against respondent as
provided by paragraph (a) of this section.
3 Albeit, in this case, with respect only to one of two claims.
Cancellation No. 92054730
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deprive a petitioner of entry of judgment. Here, because respondent consents
to entry of judgment, petitioner is not deprived of judgment.
We turn then to respondent’s motion for entry of judgment on the
abandonment claim only. Petitioner claims that respondent has procured the
subject registration by fraud, and argues that our grant of the motion would
deprive petitioner of the preclusive effect that would result from a judgment
on the fraud claim. We see no point in going forward with a fraud claim when
entry of judgment on the abandonment claim will result in cancellation of the
registration, and judgment on the claim of fraud — which relates specifically
to the procurement of the involved registration itself — would neither bar
applicant from filing a new application nor allow petitioner to challenge it on
the basis of claim preclusion.
More broadly, the question whether the Board should allow a
proceeding to continue on claims remaining after entry of judgment on
another claim (whether by consent of the defendant or not) is a matter
committed to the Board’s discretion in light of the circumstances of each case.
While it may not always be true that the Board will find a defendant’s
consent to entry of judgment on a particular claim to render consideration of
other claims unnecessary,4 we see no point in this instance in engaging in
further litigation over whether the registration was procured by fraud when
the only remedy — cancellation of this registration — has already been

4 The result might be different, for instance, if both claims had been completely
tried or the second claim was one that would potentially have a preclusive effect in a
future application to register the mark.
Cancellation No. 92054730
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granted and a decision on the fraud claim would have, at best, limited effect
on petitioner’s ability to challenge any future attempt by respondent to
register the mark.
Accordingly, respondent’s motion for entry of judgment on the
abandonment claim is GRANTED, and we do not reach the fraud claim.
Judgment is hereby entered against respondent and Registration No.
2379185 will be cancelled in due course.