No. 91221325 (T.T.A.B. Apr. 19, 2017)

Red Bull GmbHv.Jordi Nogues, S.L.

Trademark Trial and Appeal BoardApr 19, 2017

No. 91221325 (T.T.A.B. Apr. 19, 2017)

KWM Mailed: April 19, 2017 Opposition No. 91221325 (Parent Case) Red Bull GmbH v. Jordi Nogues, S.L. Cancellation No. 92061202 Red Bull GmbH v. Jordi Nogues, S.L. Before Wolfson, Shaw and Pologeorgis, Administrative Trademark Judges. By the Board: These consolidated proceedings now come before the Board for consideration of (1) Red Bull GmbH’s (“Red Bull”) response (filed December 30, 2016) to the Board’s December 2, 2016 order; and (2) Kirton McConkie’s motion (filed April 5, 2017) to withdraw as Applicant’s representative. Background On August 9, 2016, Red Bull filed a motion for partial summary judgment solely on its pleaded claim that Jordi Nogues, S.L. (“Applicant”) lacked a bona fide intent to 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 THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91221325 2 use the mark subject to its involved intent-to-use application Serial No. 86324277.1 On December 2, 2016, the Board issued an order finding that Red Bull demonstrated that it is entitled to judgment on its claim of lack of a bona fide intent as a matter of law, provided it submitted evidence demonstrating that there is no genuine dispute of material fact as to its standing in Opposition No. 91221325. The Board further requested Red Bull to indicate whether it wishes to go forward on its other pleaded claims of likelihood of confusion, false suggestion of a connection with Red Bull, and dilution, should it prevail on the lack of a bona fide intent to use claim. On December 30, 2016, Red Bull submitted its response, together with a current printout of information from USPTO electronic database records showing the current status and title of Registration Nos. 3197810, 3881732, 3838170, 3092197, and 4647395. Red Bull also indicated that if this evidence demonstrates there is no genuine dispute of material fact as to its standing in Opposition No. 91221325, and judgment is entered against Applicant as to application Serial No. 86324277 on the ground of lack of bona fide intent, Red Bull wishes to proceed on its other claims in the cancellation proceeding only. Red Bull’s Partial Motion for Summary Judgment Red Bull has sufficiently established entitlement to summary judgment on the issue of standing and on the pleaded ground of lack of bona fide intent. See Bongrain Int’l (American) Corp. v. Moquet Ltd., 230 USPQ 626, 628 n.3 (TTAB 1986) (submission of status and title copies of registration is sufficient to make registration 1 The motion was based on the alleged lack of a bona fide intent to use by the original applicant, an individual by the name of Jordi Nogues. Opposition No. 91221325 3 of record for purposes of summary judgment). Accordingly, summary judgment is hereby entered in Red Bull’s favor in Opposition No. 91221325, the opposition is sustained, and registration of application Serial No. 86324277 is refused. Further Proceedings “Where a final disposition has been entered as to some, but not all, of the cases in a consolidated proceeding, the remaining cases will no longer be considered consolidated with the cases for which a final disposition has been entered.” TBMP § 511 (Jan. 2017). Since we have entered a final disposition with regard to Opposition No. 91221325, that proceeding is no longer consolidated with Cancellation No. 92061202. Cancellation No. 92061202 will proceed on its own on the pleaded grounds of (1) likelihood of confusion; (2) false suggestion of a connection with Red Bull; (3) dilution; and (4) non-use. Motion to Withdraw Kirton McConkie’s motion to withdraw from representation of Defendant Jordi Nogues, S.L. complies with the requirements of Trademark Rule 2.19 and Patent and Trademark Rule 11.116, and is accordingly granted. The law firm of Kirton McConkie no longer represents Defendant Jordi Nogues, S.L. in this proceeding. In view of the withdrawal of counsel, and in accordance with standard Board practice, proceedings are suspended and Defendant Jordi Nogues, S.L. is allowed until thirty days from the mailing date of this order to appoint new counsel, or to file a paper stating that it chooses to represent itself. If Defendant Jordi Nogues, S.L. files no response, the Board may issue an order to show cause why default judgment should Opposition No. 91221325 4 not be entered against it based on its apparent loss of interest in the proceeding. Defendant Jordi Nogues, S.L. should file its response to this order in Cancellation No. 92061202 only. As noted, Opposition No. 91221325 is sustained, proceedings herein are no longer consolidated, and Cancellation No. 92061202 is hereby suspended pending Defendant Jordi Nogues, S.L.’s response to this Order. A copy of this order has been sent to all persons listed below. cc: NICHOLAS D. WELLS KIRTON MCCONKIE PC 1800 WORLD TRADE CENTER, 60 E SOUTH TEMPLE SALT LAKE CITY, UT 84111 MARTIN R. GREENSTEIN TECHMARK A LAW CORPORATION 4820 HARWOOD ROAD 2ND FLOOR SAN JOSE, CA 95124-5237 JORDI NOGUES, S.L. BRUC 114, PRAL 2” BARCELONA, SPAIN 08009 Information regarding legal representation While Patent and Trademark Rule 11.14 permits any entity to represent itself, it is strongly advisable for an entity that is not acquainted with the technicalities of the procedural and substantive law involved in inter partes proceedings before the Board to secure the services of an attorney who is familiar with such matters. The Patent and Trademark Office cannot aid in the selection of an attorney. See TBMP § 114.02. Opposition No. 91221325 5 Trademark Rules 2.119(a) and (b) require that every submission filed in a proceeding before the Board must be served upon the other party or parties, and proper proof of such service must be made before the submission will be considered by the Board. Accordingly, all submissions filed in this proceeding must be accompanied by a statement, signed by the party (if an individual) or his or her attorney, or (if a corporation or other juridical entity), its attorney or other authorized representative, attached to or appearing on the original submission when filed, clearly stating the date and manner in which service was made, the name of each party or person upon whom service was made, and the email address or other authorized address at which service was made. See TBMP § 113.03. Service must be made by email unless otherwise stipulated, or unless the filing party has satisfied the requirements for another method of service as set forth in Trademark Rule 2.119(b). The statement will be accepted as prima facie proof of service, must be signed and dated, and should take the form of a Certificate of Service as follows: I hereby certify that a true and complete copy of the foregoing (insert title of submission) has been served on (insert name of opposing counsel or party) by forwarding said copy on (insert date of mailing), via email (or insert other appropriate method of delivery) to: (set out name, address, and email address of opposing counsel or party). Signature______________________________ Date___________________________________ Submissions in Board proceedings must be made via ESTTA, the Electronic System for Trademark Trials and Appeals, and must be in compliance with Trademark Rules 2.126(a) and (b). See TBMP § 110.01. The ESTTA user manual, ESTTA forms, and instructions for their use are at http://estta.uspto.gov/. Opposition No. 91221325 6 Strict compliance with the Trademark Rules of Practice, and where applicable the Federal Rules of Civil Procedure, is required of all parties, whether or not they are represented by counsel. McDermott v. San Francisco Women’s Motorcycle Contingent, 81 USPQ2d 1212, n.2 (TTAB 2006), aff’d unpub’d, 240 Fed. Appx. 865 (Fed. Cir. 2007), cert. denied, 552 U.S. 1109 (2008). Thus, it is strongly recommended that any pro se party be familiar with the latest edition of Chapter 37 of the Code of Federal Regulations, which includes the Trademark Rules of Practice. Parties should also be familiar with the Trademark Trial and Appeal Board Manual of Procedure (TBMP), available at http://www.uspto.gov/trademarks-application-process/trademark-trial- and-appeal-board-ttab; the TTABVUE system for viewing the record for all Board proceedings, available at http://ttabvue.uspto.gov/ttabvue/; and the Standard Protective Order, available at https://www.uspto.gov/trademarks-application- process/appealing-trademark-decisions/standard-documents-and-guidelines-0. Recent Changes to the Trademark Rules of Practice CHANGES TO THE TRADEMARK RULES OF PRACTICE, AFFECTING PROCEEDINGS BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD, BECAME EFFECTIVE JANUARY 14, 2017 The USPTO published a Notice of Final Rulemaking in the Federal Register on October 7, 2016, at 81 Fed. Reg. 69950. It sets forth several amendments to the rules that govern inter partes (oppositions, cancellations, concurrent use) and ex parte appeal proceedings. A correction to the final rule was published on December 12, 2016, at 81 Fed. Reg. 89382. For complete information, the parties are referred to: • The Board’s home page on the uspto.gov website: http://www.uspto.gov/trademarks-application-process/trademark-trial- and-appeal-board-ttab • The final rule: Opposition No. 91221325 7 http://www.uspto.gov/sites/default/files/documents/81%20FR%2069950. pdf • The correction to the final rule: http://www.uspto.gov/sites/default/files/documents/81%20FR%2089382. pdf • A chart summarizing the affected rules and changes: http://www.uspto.gov/sites/default/files/documents/Chart%20Summariz ing%20Rule%20Changes%2012-9-16.pdf For all proceedings, including those already in progress on January 14, 2017, some of the changes are: • All pleadings and submissions must be filed through ESTTA. Trademark Rules 2.101, 2.102, 2.106, 2.111, 2.114, 2.121, 2.123, 2.126, 2.190, and 2.191. • Service of all papers must be made by email, unless otherwise stipulated. Trademark Rule 2.119. • Response periods are no longer extended by five days for service by first- class mail, Priority Mail Express®, or overnight courier. Trademark Rule 2.119. • Deadlines for submissions to the Board that are initiated by a date of service are 20 days. Trademark Rule 2.119. Responses to motions for summary judgment remain 30 days. Similarly, deadlines for responses to discovery requests remain 30 days. • All discovery requests must be served early enough to allow for responses prior to the close of discovery. Trademark Rule 2.120. Duty to supplement discovery responses will continue after the close of discovery. • Motions to compel initial disclosures must be filed within 30 days after the deadline for serving initial disclosures. Trademark Rule 2.120. • Motions to compel discovery, motions to test the sufficiency of responses or objections, and motions for summary judgment must be filed prior to the first pretrial disclosure deadline. Trademark Rules 2.120 and 2.127. • Requests for production and requests for admission, as well as interrogatories, are each limited to 75. Trademark Rule 2.120. • Testimony may be submitted in the form of an affidavit or declaration. Trademark Rules 2.121, 2.123, and 2.125. Opposition No. 91221325 8 • New requirements for the submission of trial evidence and deposition transcripts. Trademark Rules 2.122, 2.123, and 2.125. This is only a summary of the significant content of the Final Rule. All parties involved in a Board proceeding should read the entire Final Rule.