UTi Worldwide Inc.

Trademark Trial and Appeal Board

Dec 14, 2005

No. 76177195re (T.T.A.B. Dec. 14, 2005)

Mailed: December 14, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re UTi Worldwide Inc.
________

Serial No. 76177195
_______

Request for Reconsideration
_______

Thomas J. Moore of Bacon & Thomas, PLLC for UTi Worldwide
Inc.

Raul Cordova, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
_______

Before Chapman, Bucher and Holtzman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
On November 3, 2005, the Board affirmed the Examining
Attorney’s refusal to register applicant’s mark shown below

for services involving providing information relating to
the storage and forwarding of freight and information
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76177195

2
relating to the tracking of freight under Section 2(d) of
the Trademark Act in view of the registered mark IMPOWER
for goods involving computer programs for use in the
shipping industry (a customs regulation and import
information database), and services involving
transportation of the goods of others and providing a
database containing shipping and freight information.1
Applicant timely filed on December 5, 2005 a “Request
For Reconsideration And Rehearing.”2 See Trademark Rules
2.144 and 2.196.
Applicant explains that in footnote 3 of the Board’s
November 3, 2005 decision, it noted that applicant’s
previously filed (July 8, 2005) request for suspension and
remand for consideration of one third-party application and
one third-party registration had been denied in an
interlocutory Board order dated July 12, 2005. Applicant
then contends that the two third-party “cases should be
part of the record because they show that the U.S. Patent
and Trademark Office has been arbitrary and capricious in
not approving the present application, while simultaneously

1 For the precise identifications of applicant’s services and
registrant’s goods and services, see the original decision, pp.
1-3.
2 The Board held an oral hearing in this case on October 11, 2005
pursuant to applicant’s request under Trademark Rule 2.142(e).
To the extent applicant now seeks an oral hearing on its request
for reconsideration, the request for an oral hearing is denied.
Ser. No. 76177195

3
approving two marks that are closer to the mark of the
cited registration than is the mark of the present
application”; and that “The Order maintains that Appellant
has not adequately explained why these two cases were not
made part of the record on the date that the Notice of
Appeal was filed on February 22, 2005.” (Request for
Reconsideration, p. 2.) Applicant explains that the third-
party application is now a third-party registration.
Applicant’s arguments are essentially directed to the
Board order of July 12, 2005 denying applicant’s request to
suspend and remand wherein the Board stated, inter alia, as
follows: “Applicant has not provided a satisfactory
explanation as to why this registration [No. 2673845,
issued January 14, 2003] could not have been made of record
prior to the filing of the appeal. … In view of the limited
probative value of a third-party application, and given the
late stage of the appeal, we find that applicant has not
shown good cause to remand its application so that the
Examining Attorney could consider the third-party
application [then application Serial No. 78373496 -- now
Registration No. 2989173].”
To the extent applicant seeks reconsideration of the
July 12, 2005 Board order, its request is untimely, being
filed well after one month after the interlocutory order.
Ser. No. 76177195

4
To the extent, applicant seeks reconsideration of the
Board’s decision dated November 3, 2005, its arguments are
similar to arguments previously made by applicant during
the prosecution of the application, and these arguments
were considered by the Board as reflected in our decision
at pages 12-15.
Applicant’s arguments that the two third-party
registrations should be considered in the decision are not
persuasive that there has been any error of law or fact in
our November 3, 2005 decision. The Board decision of July
12, 2005 clearly explained to applicant why its request for
suspension and remand based on a third-party application
and a third-party registration was denied. The decision of
the Board, dated November 3, 2005, simply reiterated that
the third-party application and registration had previously
been excluded by the denial of applicant’s request to
suspend and remand. The Board nonetheless explained in the
November 3, 2005 decision that third-party registrations
are generally of limited probative value even if properly
made of record as the determination of registrability of
another mark in another case cannot control the merits of
the case now before us.
Ser. No. 76177195

5
We find no error in our November 3, 2005 decision.
Accordingly, applicant’s request for reconsideration is
denied.