Rolex Watch U.S.A., Inc.v.AFP Imaging Corporation

Trademark Trial and Appeal Board

Jan 29, 2013

No. 91188993 (T.T.A.B. Jan. 29, 2013)

Mailed: January 29, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Rolex Watch U.S.A., Inc.
v.
AFP Imaging Corporation
_____

Opposition No. 91188993
to application Serial No. 77492131
filed on June 5, 2008
_____
ON REMAND FROM THE
UNITED STATES COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
______

Brian W. Brokate and Beth M. Frenchman of Gibney, Anthony & Flaherty, LLP and
Gary D. Krugman of Sughrue Mion, PLLC for Rolex Watch U.S.A., Inc.

Norman H. Zivin of Cooper & Dunham, LLP for AFP Imaging Corporation.
______

Before Mermelstein, Taylor and Lykos, Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

This case now comes before the Board for consideration of opposer’s combined
motion (filed November 20, 2012) to vacate the Board’s decision to dismiss this
opposition proceeding and enter judgment against applicant. The motion is fully
briefed.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91188993
2
I. Procedural Background
On June 5, 2008, AFP Imaging Corporation (“applicant”) filed an application
to register the mark ROLL-X, in standard character format, for “x-ray tables for
medical and dental use” in International Class 10, pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use in commerce.
Rolex Watch U.S.A., Inc. (“opposer”), based on its prior use and ownership of its
federally-registered mark ROLEX for “watches, clocks, parts of watches and clocks,
and their cases” opposed the registration of applicant's mark on several grounds;
ultimately opposer litigated two of its pleaded claims before the Board -- dilution by
blurring under Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c) and that
applicant lacked a bona fide intent to use the mark in commerce when the
application was filed.
After the parties conducted a full trial, on December 5, 2011, the Board, in an
opinion designated as precedential, found in applicant’s favor and dismissed the
opposition. On February 8, 2012, opposer timely filed an appeal of the Board’s
decision with our primary reviewing court, the Court of Appeals for the Federal
Circuit (“Federal Circuit”). Shortly thereafter, on March 19, 2012, applicant filed
with the Board an express abandonment of its involved application without
opposer’s consent. Applicant’s express abandonment of its application prompted the
Federal Circuit to issue an order on August 14, 2012 dismissing opposer’s appeal as
moot. In that order, the Federal Circuit stated that “[b]y withdrawing its
application, [applicant] removed any case or controversy for this court to resolve.”
Opposition No. 91188993
3
Opposer then filed a motion before the Federal Circuit to modify its August 14 order
to vacate the Board’s decision and remand the case back to the Board with
instructions to deem the involved application abandoned. On November 1, 2012,
the Federal Circuit vacated its August 14 order and declined to vacate the Board’s
decision, but instead remanded this case back to the Board for consideration of “a
motion to vacate in the first instance in accordance with United States Bancorp
Mortgage Company v. Bonner Mall Partnership, 513 U.S. 18, 29 (1994) [“U.S.
Bancorp”] and for any further proceedings deemed appropriate by the Board.”
II. Opposer’s Motion to Vacate
Opposer now requests that the Board vacate its December 5, 2011, decision,
dismiss the opposition in accordance with U.S. Bancorp, and enter judgment
against applicant pursuant to Trademark Rule 2.135 in light of applicant’s express
abandonment of its application without opposer’s written consent.
In the landmark case U.S. Bancorp, supra, the Supreme Court held that
when a party causes the conditions that lead to a case becoming moot, that party
should not be able to obtain an order vacating the lower court decision that was
adverse to that party. Vacatur, held the Court, is appropriate if the mootness arises
from external causes over which the parties have no control, or from the unilateral
act of the prevailing party, but not when the mootness is due to a voluntary act by
the losing party, such as a settlement. Id. at 25. As the Court explained:
The principal condition to which we have looked is whether the party
seeking relief from the judgment below caused the mootness by
voluntary action. [citations omitted]… A party who seeks review of
the merits of an adverse ruling, but is frustrated by the vagaries of
Opposition No. 91188993
4
circumstance, ought not in fairness be forced to acquiesce in the
judgment. The same is true when mootness results from the unilateral
action of the party who prevailed below.

Id. at 24-5.
Based on the record before us, it is clear that applicant, the prevailing party
in the Board proceeding, took the “unilateral action” of filing an express
abandonment of its application without opposer’s consent while opposer’s appeal
was pending before the Federal Circuit. There is no evidence in the record that the
appeal was rendered moot by any “voluntary action” on opposer’s behalf. See
Tessera Inc. v. Int’l Trade Comm’n, 646 F.3d 1357, 98 USPQ2d 1868, 1878 (Fed. Cir.
2011) (vacatur proper where appeal became moot due to “happenstance,” not
voluntary action by plaintiff). To the contrary, opposer vociferously objects to
applicant’s abandonment of its application as depriving opposer of the right to
obtain appellate review of the Board’s adverse decision.
Applicant argues that it was “forced” to withdraw its application due to costs
from litigating against “a much larger competitor.” Applicant’s financial reasons for
abandoning its application are not relevant to our analysis.1 The fact remains that
applicant made the unilateral decision to withdraw its application without first
obtaining opposer’s permission, thereby mooting opposer’s appeal.
Under these circumstances, the guidelines set forth under U.S. Bancorp
mandate that we vacate the Board’s December 5, 2011 final decision in this matter.

1 Of course, we recognize that litigation can sometimes be burdensome. Nonetheless,
oppositions (including appeals of those decisions) are part and parcel of the application
process, and reflect the balancing of interests Congress has mandated in the Trademark
Act. While it is unfortunate that applicant feels financially unable to continue to
participate in this process, applicant’s circumstances do not change the applicable law.
Opposition No. 91188993
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Indeed, to decide otherwise would be manifestly unfair because applicant’s
unilateral abandonment of the subject application has frustrated opposer’s
statutory right to seek review of a decision it believes to be incorrect. In view
thereof, the Board’s decision is vacated.
We now turn to opposer’s request that judgment be entered against applicant
pursuant to Trademark Rule 2.135. In relevant part, the rule states:
After the commencement of an opposition … proceeding, if the
applicant files a written abandonment of the application or of the mark
without the written consent of every adverse party to the proceeding,
judgment shall be entered against the applicant.

It is undisputed that applicant failed to obtain opposer’s written consent to
expressly abandon the involved application. See Goodway Corp. v. Int’l Marketing
Group Inc., 15 USPQ2d 1749, 1750 (TTAB 1990) (applicant's abandonment of
certain applications without opposer's written consent resulted in entry of judgment
against applicant with respect to such applications); Grinnell Corp. v. Grinnell
Concrete Pavingstones Inc., 14 USPQ2d 2065, 2067 (TTAB 1990) (consent required
for abandonment without prejudice regardless of motivation for abandonment).
Thus, by operation of Trademark Rule 2.135, judgment is hereby entered against
applicant. See Hiram Walker & Sons, Inc. v. Castlewood Int’l Corp., 198 USPQ 191
(CCPA 1978) (court vacated the Board’s decision dismissing the opposition after
appellee abandoned its trademark applications while case was pending before the
court on appeal; court in remanding the case back to the Board for “appropriate”
action, noted “the procedure followed upon abandonment of a trademark
application, 37 CFR 2.135.”).