Zachry Infrastructure, LLCv.American Infrastructure, Inc.

Trademark Trial and Appeal Board

Dec 30, 2011

No. 91196513 (T.T.A.B. Dec. 30, 2011)

Baxley Mailed: December 30, 2011

Opposition No. 91196513
Opposition No. 91196514

Zachry Infrastructure, LLC

v.

American Infrastructure, Inc.

Before Taylor, Ritchie and Lykos,
Administrative Trademark Judges.

By the Board:

In Opposition No. 91196513, opposer opposes
registration of the mark in applicant's application Serial
No. 77489679, AMERICAN INFRASTRUCTURE in standard character
form for "[b]usiness information management in the field of
heavy civil construction; supply services for third parties
in the field of construction materials, namely, purchase of
aggregate, asphalt, and concrete for other companies" in
International Class 35, "[b]uilding construction for
residential, commercial, and institutional use; excavation
services" in International Class 37, and "[q]uarry services
in the nature of stone-crushing" in International Class 40
("the '679 application").1 In Opposition No. 91196514,

1 The application includes a claim of acquired distinctiveness
under Trademark Act Section 2(f), 15 U.S.C. Section 1052(f), that
applicant raised as an alternative basis for registration in a
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
Opposition Nos. 91196513 and 91196514

2
opposer opposes registration of the mark in applicant's
application Serial No. 77979992, AMERICAN INFRASTRUCTURE in
standard character form for "[c]onstruction consultation;
construction management; construction planning; consultation
services for the construction of water and wastewater
plants; construction of water and wastewater plants; laying
and construction of pipelines; road and highway
construction; road and highway paving services; bridge
construction" in International Class 37 ("the '992
application"). The '992 application is a child application
that was divided from the '679 application.2 As grounds in
both oppositions, opposer alleges that the mark, as used on
or in connection with the respective services, is merely
descriptive and generic under Trademark Act Section 2(e)(1),
15 U.S.C. Section 1052(e)(1);3 primarily geographically

request for reconsideration of a final refusal of registration
under Trademark Act Section 2(e)(2), 15 U.S.C. Section
1052(e)(2), on the ground that the mark is primarily
geographically descriptive. The application file indicates that
the examining attorney approved the '692 application for
publication under Section 2(f).

2 Applicant incorporated a request to divide the '679 application
into the request for reconsideration of the refusal of
registration under Section 2(e)(2). The '992 application also
includes a claim of acquired distinctiveness under Trademark Act
Section 2(f), 15 U.S.C. Section 1052(f), that applicant raised as
an alternative basis for registration in a request for
reconsideration of a final refusal of registration under
Trademark Act Section 2(e)(2), 15 U.S.C. Section 1052(e)(2), on
the ground that the mark is primarily geographically descriptive.
The application file indicates that the examining attorney
approved the '992 application for publication under Section 2(f).

3 The electronic ESSTA forms of the notices of opposition
indicate that opposer is alleging genericness under Trademark Act
Opposition Nos. 91196513 and 91196514

3
descriptive under Trademark Act Section 2(e)(2), 15 U.S.C.
Section 1052(e)(2); and generic and that the mark has not
acquired distinctiveness under Section 2(f) for the
identified services.
The '679 and '992 applications were amended to seek
registration under Trademark Act Section 2(f) in the
alternative. However, they were approved for publication as
applications seeking registration under Section 2(f) without
objection by applicant.4
On October 28, 2010, the above-captioned proceedings
were consolidated with previously consolidated Opposition
Nos. 91192029, 91192030, and 91192031, styled Zachry
American Infrastructure, LLC5 v. American Infrastructure,
Inc. In Opposition No. 91192029, opposer opposed
registration of applicant's application Serial No. 76976619

Section 23, 15 U.S.C. Section 1091. However, Section 23 is not a
ground for opposing registration of a mark on the Principal
Register. Accordingly, we treat the notices of opposition as
alleging genericness under Trademark Act Section 2(e)(1), 15
U.S.C. Section 1052(e)(1). See Concurrent Technologies Inc. v.
Concurrent Technologies Corp., 12 USPQ2d 1054 (TTAB 1989).

4 See TMEP Section 1212.02(c) (8th ed. 2011) for procedures
related to appealing a refusal and claiming acquired
distinctiveness in the alternative.

5 Opposer contends in its brief in support of its motion for
entry of judgment based on the district court decision, which is
discussed in detail infra, that Zachry American Infrastructure,
Inc., which is identified as the opposer in Opposition Nos.
91192029, 91192030, and 91192031 and as a defendant in the civil
action, "is now an LLC and the LLC is the party to [Opposition
Nos. 91196513 and 91196514]." Applicant does not dispute this
contention. Accordingly, we treat Zachry American
Infrastructure, Inc. and Zachry Infrastructure, LLC as being in
privity.
Opposition Nos. 91196513 and 91196514

4
for the mark AMERICAN INFRASTRUCTURE and design in the
following form,

("the '619 application") for the same services that are
identified in the ‘679 application. In Opposition No.
91192030, opposer opposed registration of applicant's
application Serial No. 77976963 for the mark ALLAN A. MYERS
A COMPANY OF AMERICAN INFRASTRUCTURE and design in the
following form,

("the '963 application") for the same services that are
identified in the '679 application. In Opposition No.
91192031, opposer opposed registration of applicant's
application Serial No. 77976922 for the mark R.G. GRIFFITH A
COMPANY OF AMERICAN INFRASTRUCTURE and design in the
following form,

("the '922 application") for the same services that are
identified in the '679 application. The '619, '963, and
‘922 applications do not include either Section 2(f) claims
or disclaimers with regard to the wording AMERICAN
INFRASTRUCTURE. In those proceedings, opposer filed

Opposition Nos. 91196513 and 91196514

5
essentially identical notices of opposition to registration
of the involved marks, wherein opposer alleged that the
AMERICAN INFRASTRUCTURE component of each of those marks is
primarily geographically descriptive, "primarily
descriptive," and/or generic and has not acquired
distinctiveness. Opposer contended in those cases that the
Board should refuse registration of applicant's marks or, in
the alternative, require applicant to disclaim the wording
AMERICAN INFRASTRUCTURE. In the Board's October 28, 2010
order, all five consolidated proceedings were suspended
pending final determination of a civil action styled
American Infrastructure, Inc. v. Zachry Construction Corp.
and Zachry American Infrastructure, Inc., Case No. 08cv2701,
filed in the United States District Court for the Eastern
District of Pennsylvania. In the district court case,
applicant, as plaintiff, alleged, among other things, false
designation of origin, infringement, and unfair competition
based on opposer's use of the term AMERICAN INFRASTRUCTURE
as part of its name. The affirmative defenses that the
defendants in the civil action raised included (1) that
applicant's marks are "generic or, at best, descriptive" and
(2) that those marks "have neither inherent distinctiveness
nor acquired distinctiveness."
In a December 28, 2010 decision, the district court
granted summary judgment in the defendants' favor and
Opposition Nos. 91196513 and 91196514

6
dismissed all of applicant's pleaded counts. In particular,
the district court determined that applicant "has not
pointed to sufficient evidence to create a genuine issue of
material fact that the [wording AMERICAN INFRASTRUCTURE] is
suggestive," and noted that applicant conceded at oral
argument that such wording is descriptive. December 28,
2010 order at 12. The district court further determined
that applicant had not "pointed to sufficient evidence to
create a genuine issue of fact regarding secondary meaning."
Id. at 26.
Following final determination of the civil action,
opposer, on February 14, 2011, filed a motion with the Board
for entry of judgment in all five of the then consolidated
oppositions based on the district court's decision, alleging
that "the issues as decided by the District Court are
[binding on the Board and are] completely dispositive of the
issues raised in the [n]otices of [o]pposition." After
receiving a series of extensions of time to respond to that
motion, applicant, on April 14, 2011, filed (1) express
abandonments of the '619, '963, and '922 applications,
without opposer's written consent thereto, and (2) a
combined brief in response to the motion for entry of
judgment and an unconsented motion to amend the ‘679 and
‘992 applications to the Supplemental Register.
Opposition Nos. 91196513 and 91196514

7
The Board, in an April 19, 2011 order, (1) entered
judgment against applicant in Opposition Nos. 91192029,
91192030, and 91192031 pursuant to Trademark Rule 2.135, and
(2) reset time for remaining briefing in connection with
opposer's motion for entry of judgment in Opposition Nos.
91196513 and 91196514 based on the district court decision,
which opposer contends is dispositive of the claims in the
oppositions, and in connection with applicant's motion to
amend the ‘679 and ‘992 applications (the subjects of
Opposition Nos. 91196513 and 91196514) to the Supplemental
Register. Opposer, on April 20, 2011, filed its combined
reply brief in support of its motion for entry of judgment
and in response to applicant's motion to amend. This filing
also included a separate motion for entry of judgment in
Opposition Nos. 91196513 and 91196514 on the ground of res
judicata, based on the Board's entry of judgment in
Opposition Nos. 91192029, 91192030, and 91192031. Opposer's
motion for entry of judgment based on the district court
decision and applicant's motion to amend the ‘679 and ‘992
applications to the Supplemental Register have been fully
briefed. Applicant has filed a brief in opposition to
opposer's motion for entry of judgment in Opposition Nos.
91196513 and 91196514 on the ground of res judicata, based
on the Board's entry of judgment in Opposition Nos.
91192029, 91192030, and 91192031.
Opposition Nos. 91196513 and 91196514

8
The motion for entry of judgment based on the district
court decision as it relates to the three oppositions in
which judgment has already been entered by the Board is
moot. As for Opposition Nos. 91196513 and 91196514, opposer
contends that the district court's determination that the
term AMERICAN INFRASTRUCTURE lacked inherent or acquired
distinctiveness is "completely dispositive of the issues
raised in the [n]otices of [o]pposition," and is binding
upon the Board. Based thereon, opposer asks that the Board
enter judgment in its favor in the above-captioned remaining
oppositions.
In opposition to that motion and in support of its
motion to amend, applicant contends that the district court
made no determination that the AMERICAN INFRASTRUCTURE mark
is incapable of distinguishing applicant's services, and
that amendment of the '679 and '992 applications to the
Supplemental Register is therefore consistent with that
decision. Accordingly, applicant contends Opposition Nos.
91196513 and 91196514 are rendered moot and asks that the
Board grant applicant's motion to amend the '679 and '992
applications to the Supplemental Register.
In its reply in support of the motion for entry of
judgment based on the district court decision, in opposition
to the motion to amend the involved applications to the
Supplemental Register, and in support of the motion for
Opposition Nos. 91196513 and 91196514

9
entry of judgment on the ground of res judicata based on the
judgments that were entered in Opposition Nos. 91192029,
91192030, and 91192031, opposer contends that, because the
district court did not determine that applicant's marks were
capable of acquiring distinctiveness, the district court
decision does not entitle applicant to amend the involved
applications to the Supplemental Register. Opposer further
contends that, because it does not consent to the amendment
of the '679 and '992 applications to the Supplemental
Register, such amendment is inappropriate until the Board
has resolved the genericness claims in the above-captioned
proceedings. In addition, opposer contends that, because
judgment on the merits was entered in the Board's April 19,
2011 order with regard to its claims in Opposition Nos.
91192029, 91192030, and 91192031 that the wording AMERICAN
INFRASTRUCTURE is generic, opposer is entitled to entry of
judgment on its genericness claim in Opposition Nos.
91196513 and 91196514 on the ground of res judicata.
In its reply in support of its motion to amend and in
opposition to opposer’s motion for entry of judgment on the
ground of res judicata based on the entry of judgment in
Opposition Nos. 91192029, 91192030, and 91192031, applicant
contends that the entry of judgment in those oppositions on
April 19, 2011 was "entirely procedural, and did not
consider the merits”; and that entry of judgment on the
Opposition Nos. 91196513 and 91196514

10
basis of res judicata is otherwise unwarranted under the
circumstances.
We consider first opposer’s motion for judgment in the
remaining oppositions based on the asserted preclusive
effect of the district court decision, which we consider to
present an argument for application of claim or issue
preclusion. The term res judicata includes two related
concepts: claim preclusion and issue preclusion (collateral
estoppel). See Sharp Kabushiki Kaisha v. ThinkSharp Inc.,
448 F.3d 1368, 79 USPQ2d 1376, 1378 (Fed. Cir. 2006).
Application of the doctrine of claim preclusion is
appropriate when (1) there is an identity of parties or
their privies; (2) there was an earlier final judgment on
the merits of a claim; and (3) the second claim is based on
the same set of transactional facts as the first. See Jet,
Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 1362, 55
USPQ2d 1355 (Fed. Cir. 2000). As noted supra, there is no
dispute that the parties in the remaining opposition
proceedings are either identical to or in privity with the
parties in the civil action. Further, there was a final
judgment on the merits in the civil action.
However, the transactional facts at issue are
different. In particular, the civil action involved whether
applicant’s mark, asserted by applicant as plaintiff in the
civil action, was distinctive and protectable and whether,
Opposition Nos. 91196513 and 91196514

11
if so, opposer’s actions, and those of the co-defendant,
were actionable; by contrast, the oppositions at issue
herein involve applicant’s right to registration.6 That is,
the civil action focused on the respective uses and rights
to use, whereas the oppositions focus on the right of
applicant to register its mark.
Regarding whether the doctrine of issue preclusion or
collateral estoppel is applicable herein based on the
district court's decision,
[t]he doctrine of collateral estoppel ... normally
will bar the relitigation of an issue of law or
fact that was raised, litigated, and actually
decided by a judgment in a prior proceeding
between the parties, if the determination of that
issue was essential to the judgment, regardless of
whether or not the two proceedings are based on
the same claim.

NLRB v. United Technologies Corp., 706 F.2d 1254, 1260 (2d
Cir. 1983). Application of the doctrine of collateral
estoppel requires (1) identity of an issue in the current
and a prior proceeding, (2) actual litigation of that issue

6 Because applicant's involved mark is the subject of a pending
application and not a registration, the district court may have
lacked jurisdiction to entertain a counterclaim by opposer to
refuse registration of applicant's involved mark. Dunn Computer
Corp. v. Loudcloud Inc., 57 USPQ2d 1626, 1633 (E.D. Va. 2001).
Trademark Act Section 37, 15 U.S.C. Section 1119, states as
follows: "In any action involving a registered mark the court
may determine the right to registration, order the cancellation
of registrations, in whole or in part, restore cancelled
registrations, and otherwise rectify the register with respect to
the registrations of any party to the action." (emphasis added).
"[A] Section 37 claim must involve an existing 'registered mark,'
not one that may come into existence in the future." Dunn
Computer Corp. v. Loudcloud Inc., supra. See also Johnny
Blastoff Inc. v. Los Angeles Rams Football Co., 51 USPQ2d 1920
(7th Cir. 1999).
Opposition Nos. 91196513 and 91196514

12
in the prior proceeding, (3) necessity of a determination of
the issue in entering judgment in the prior proceeding, and
(4) a full and fair opportunity existed, for the party with
the burden of proof on that issue in the second proceeding,
to have litigated the issue in the prior proceeding. See
Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d
1229, 76 USPQ2d 1310, 1313 (Fed. Cir. 2005).
In the '679 and '992 applications, applicant seeks
registrations under Trademark Act Section 2(f) and, in so
seeking, concedes that the involved AMERICAN INFRASTRUCTURE
mark is not inherently distinctive and therefore must prove
acquired distinctiveness. See In re MGA Entertainment Inc.,
84 USPQ2d 1743, 1747 (TTAB 2007); Congoleum Corp. v.
Armstrong Cork Co., 218 USPQ 528, 535 (TTAB 1983). The
issues in Opposition Nos. 91196513 and 91196514 and the
civil action are identical insofar as, in the civil action,
applicant, as plaintiff, was required to prove that its
AMERICAN INFRASTRUCTURE mark was distinctive; similarly, in
these oppositions, because the oppositions challenge, in the
first instance, applicant’s right to obtain registrations on
the Principal Register, we also face the question whether
applicant’s mark has acquired distinctiveness.7 The issue

7 The motion to amend each application to seek registration on
the Supplemental Register does not eliminate the question raised
by opposer regarding whether the involved marks have acquired
Opposition Nos. 91196513 and 91196514

13
of the distinctiveness, inherent or acquired, of applicant’s
mark(s) was actually litigated in the civil action, and
applicant had a full and fair opportunity to litigate the
issue in the civil action.
To prevail in the civil action, applicant, as
plaintiff, would have been required to establish, among
other things, that its unregistered AMERICAN INFRASTRUCTURE
mark was valid and protectable, i.e., that such mark was
either inherently distinctive or had acquired
distinctiveness. See Checkpoint Systems, Inc. v. Check
Point Software Technologies, Inc., 269 F.3d 270, 279 and
282-84, 60 USPQ2d 1609 (3d Cir. 2001). As noted supra,
applicant, by seeking registration in the '679 and '992
applications under Trademark Act Section 2(f), has conceded
that the involved AMERICAN INFRASTRUCTURE mark is not
inherently distinctive and was thus required to show
acquired distinctiveness. The district court found that the
term "American Infrastructure" had not acquired
distinctiveness and, in view of such findings, dismissed
applicant's claims. Thus, the determination that such mark
had not acquired distinctiveness was necessary to the entry
of judgment in the civil action. The district court's
finding that the term AMERICAN INFRASTRUCTURE has not

distinctiveness. That is, opposer, by opposing the motion to
amend, clearly seeks a decision on this pleaded issue.

Opposition Nos. 91196513 and 91196514

14
acquired distinctiveness is binding on the parties, and
under the circumstances of this case, also binding on the
Board.8 American Bakeries Co. v. Pan-O-Gold Baking Co., 2
USPQ2d 1208 (D.C. Minn. 1986); TBMP Section 510.02(a) (3d
ed. 2011). Accordingly, we find that the doctrine of issue
preclusion (collateral estoppel) is applicable herein with
regard to opposer's claims in Opposition Nos. 91196513 and
91196514 that the AMERICAN INFRASTRUCTURE mark has not
acquired distinctiveness.
We next consider whether the district court judgment
has a preclusive effect on opposer’s claim that applicant’s
mark is generic. While applicant’s effective concession of
lack of distinctiveness obviated opposer’s need to prove
that applicant’s mark is not inherently distinctive, and the
district court decision has obviated opposer’s need to prove
the lack of acquired distinctiveness, it does not follow, as
a matter of course, that applicant’s claimed mark is
generic. See American Meat Inst. v. Horace W. Longacre,
Inc., 211 USPQ 712, 723 (TTAB 1981); In re Sooner Life
Insurance Co., 207 USPQ 948, 951 (TTAB 1980). Because the
district court did not address the issue of genericness and

8 Opposer filed its motion for entry of judgment based on that
finding less than two months after the issuance of the December
28, 2010 decision in the civil action. Applicant did not allege
in response thereto that the involved mark had acquired
distinctiveness through use and/or advertising subsequent to the
issuance of that decision, but rather moved to amend the '679 and
'992 applications to the Supplemental Register.
Opposition Nos. 91196513 and 91196514

15
did not need to reach that issue in entering summary
judgment for opposer in the civil action, we decline to
enter judgment on the genericness claims in the above-
captioned proceedings based on the December 28, 2010
district court decision.
We now turn to the question whether the remaining
genericness claim should be resolved in opposer’s favor
because of claim preclusion based on the default judgments
that were entered in Opposition Nos. 91192029, 91192030 and
91192031 as a result of the abandonment of the '619, '963,
and '922 applications. There is no dispute that there is an
identity of parties in Opposition Nos. 91192029, 91192030,
91192031 and the remaining opposition proceedings.9 In
addition, the default judgments entered in Opposition Nos.
91192029, 91192030, and 91192031 are considered to be
judgments on the merits for purposes of applying the
doctrine of claim preclusion.10 See Int’l Nutrition Co. v.
Horphag Research, Ltd., 220 F.3d 1325, 1328, 55 USPQ2d 1492
(Fed. Cir. 2000). However, our primary reviewing court has
declined to apply the doctrine of claim preclusion in a
situation similar to that at issue here, involving an

9 See footnote 3, supra.

10 In contrast, because the issue of genericness was not actually
litigated in Opposition Nos. 91192029, 91192030 and 91192031, the
doctrine of issue preclusion is inapplicable. See
Mayer/Berkshire Corp. v. Berkshire Fashions Inc., supra.

Opposition Nos. 91196513 and 91196514

16
opposition filed against a word mark, based on entry of a
default judgment in an earlier opposition involving the same
parties but a mark composed of the same word(s) and a
design. See Sharp Kabushiki Kaisha v. ThinkSharp Inc., 448
F.3d 1368, 79 USPQ2d 1376, 1378-79 (Fed. Cir. 2006). In
Sharp, the Federal Circuit determined that entry of default
judgment in the opposition to registration of the THINKSHARP
and design mark did not warrant application of claim
preclusion in a separate opposition to registration of the
THINKSHARP word mark, which application had been filed
before the default judgment was entered in the first
opposition.
Here, as in Sharp, the '679 and '992 applications at
issue in Opposition Nos. 91196513 and 91196514 were filed
during the pendency of the '619, '963, and '922
applications, and the oppositions thereto. As the Federal
Circuit found in upholding the Board’s ruling in Sharp that
claim preclusion was inappropriate, "[p]recedent and sound
administrative policy support the Board's reasoning that a
trademark owner is entitled to choose which opposition to
defend, when the proceedings are not an attempt to evade the
effect of a previous adverse judgment on the merits." Id.
at 1379. Thus, when an applicant is defending oppositions
against multiple concurrently pending applications, that
applicant is entitled to make business decisions as to which
Opposition Nos. 91196513 and 91196514

17
oppositions involving those applications it wishes to
defend. That is, an applicant need not litigate all of the
oppositions to defend the right to litigate one, or some, of
them. Id. at 1379-80.
Opposer relies on Miller Brewing Co. v. Coy
International Corp., 230 USPQ 675, 678 (TTAB 1986), to
support its assertion that claim preclusion should apply in
this case. However, the present circumstances differ from
those in Miller. In Miller, the Board applied the doctrine
of res judicata against an applicant that, after a judgment
had been entered against it, filed a new application for a
second, insignificantly different mark in an attempt to
avoid the preclusive effect of a previous judgment. In this
case, applicant filed the '679 and '992 applications on June
3, 2008, more than a year prior to the September 23, 2009
commencement of Opposition Nos. 91192029, 91192030 and
91192031. Thus, when applicant filed the '679 and '992
applications, it could not reasonably be expected to know
that oppositions would be filed against its '619, '963, and
'922 applications.
We are not persuaded by opposer's assertion that Sharp
is inapplicable here because that case involved a Section
2(d) likelihood of confusion claim rather than the
genericness claim that is at issue in these consolidated
Opposition Nos. 91196513 and 91196514

18
proceedings.11 The Federal Circuit's decision in Sharp is
not based on the nature of the claim(s) at issue, but
instead turns on the fact that the applications in that case
were pending prior to the entry of the default judgment and,
unlike in Miller, were not filed as a means of evading a
prior adverse judgment. Like the applicant in Sharp,
applicant herein should not be required to defend all five
of its then-pending oppositions to preserve its right to
litigate two of them.
In addition, the marks in the '679 and '992
applications at issue in these two remaining oppositions
differ from the marks in the applications at issue in the
three sustained oppositions. Further, with regard to the
‘992 application, as noted supra, the recited services are
entirely different from those recited in the '679, '619,
'963 and '922 applications. Accordingly, we decline to
apply the doctrine of claim preclusion based on the
judgments that were entered in Opposition Nos. 91192029,
91192030, and 91192031.
In view thereof, (1) opposer's motion for entry of
judgment in Opposition Nos. 91196513 and 91196514 based on
the district court decision is: (a) granted with regard to
opposer's claims that applicant's mark has not acquired

11 We note that Miller, upon which opposer relies in support of
its motion, also involved a Section 2(d) claim.

Opposition Nos. 91196513 and 91196514

19
distinctiveness under Trademark Act Section 2(f); and (b)
denied with regard to the genericness claims in both
proceedings;
(2) opposer's motion for entry of judgment on the
genericness claims in Opposition Nos. 91196513 and 91196514
under the doctrine of res judicata based on the judgments
that were entered in Opposition Nos. 91192029, 91192030, and
91192031 is denied.
Applicant's motion to amend the '679 and '992
applications to the Supplemental Register is deferred until
it can be properly considered on summary judgment or at
final hearing. See Enbridge Inc. v. Excelerate Energy Ltd.
Partnership, 92 USPQ2d 1537, 1539 n.3 (TTAB 2009); TBMP
Section 514.03 (3d ed. 2011).
Proceedings herein are resumed with regard only to the
determination of whether the wording AMERICAN INFRASTRUCTURE
is generic for applicant’s services. If such wording is
found not to be generic and therefore capable of
distinguishing applicant's services, then amendment to the
Supplemental Register is appropriate, and the motion will
not need consideration and can simply be granted.12 See
Trademark Act Section 23, 15 U.S.C. Section 1091; In re

12 Applications to register marks on the Supplemental Register may
not be subject to oppositions. Trademark Act Section 24, 15
U.S.C. Section 1092. Accordingly, we defer consideration of the
unconsented motion to amend the '679 and '992 applications to the
Opposition Nos. 91196513 and 91196514

20
American Fertility Soc., 188 F.3d 1341, 51 USPQ2d 1832 (Fed.
Cir. 1999).
Under circumstances such as these, the parties may wish
to consider stipulating to various facts and to a record
that can be considered by the Board to resolve the remaining
issue. Cf. Target Brands, Inc. v. Shaun N.G. Hughes, 85
USPQ2d 1676 (TTAB 2007).
Dates herein are reset as follows.
Answer Due13 1/30/12
Deadline for Discovery Conference 2/29/12
Discovery Opens 2/29/12
Initial Disclosures Due 3/30/12
Expert Disclosures Due 7/28/12
Discovery Closes 8/27/12
Plaintiff's Pretrial Disclosures Due 10/11/12
Plaintiff's 30-day Trial Period Ends 11/25/12
Defendant's Pretrial Disclosures Due 12/10/12
Defendant's 30-day Trial Period Ends 1/24/13
Plaintiff's Rebuttal Disclosures Due 2/8/13
Plaintiff's 15-day Rebuttal Period Ends 3/10/13

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule
2.l25.

Supplemental Register until final resolution of this case. See
TBMP Section 514.03 (3d ed. 2011).

13 Although the proceedings are consolidated, insofar as the Board
prefers the pleadings to be complete for each individual case,
applicant must file a separate answer in each proceeding.
Thereafter, all future submissions should be filed only in the
case designated as the "parent," namely Opposition No. 91196513.
Opposition Nos. 91196513 and 91196514

21
Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.
If either of the parties or their attorneys should have
a change of address, the Board should be so informed
promptly.