General Mills, Inc. and General Mills IP Holdings II, LLCv.Fage Luxembourg S.A.R.L.

Trademark Trial and Appeal Board

Jan 22, 2014

No. 91118950 (T.T.A.B. Jan. 22, 2014)

Mailed:
January 22, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

General Mills, Inc. and General Mills IP Holdings II, LLC
v.
Fage Luxembourg S.A.R.L.1
______

Opposition No. 91118482
to application Serial No. 75597291
filed on November 30, 1998

Opposition No. 91118950
to application Serial No. 75597292
filed on November 30, 1998

Opposition No. 91155075
to application Serial Nos. 76016809; 76016810; 76016811;
76016812; 76016813
all filed on April 4, 2000

Opposition No. 91182937
to application Serial Nos. 77037793; 77037808; 77037835;
77037851; 77037869; 77037897; 77037905; 77037924
all filed on November 6, 2006
_____

Richard J. Groos, C. Ashley Callahan and Brandon M. Ress of
Fulbright & Jaworski LLP for General Mills, Inc. and General
Mills IP Holdings II, LLC.

Virginia R. Richard, Lana C. Marina and Sanjana Chopra of
Winston & Strawn LLP for Fage Dairy Processing Industry S.A.

1 We note applicant’s change of name from Fage Dairy Processing
Industry S.A. to Fage Dairy Industry S.A. and subsequent
assignment to Fage Luxembourg S.A.R.L. recorded respectively at
reel/frame nos. 4699/0239 and 4979/0802 for Ser. No. 75597291;
and 4699/0239 and 4907/0138 for the remaining application Serial
Numbers.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
2
______

Before Quinn, Kuhlke and Mermelstein, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

The above-listed oppositions were sustained by the
Board2 in a precedential decision dated September 14, 2011.
General Mills Inc. v. Fage Dairy Processing Industry, 100
USPQ2d 1584 (TTAB 2011). Applicant appealed the decision of
the Board by filing, pursuant to 15 U.S.C. § 1071(b), civil
action No. 06:11-CV-01174-(DEP) in the United States
District Court for the Northern District of New York.3
Thereafter, the parties, having reached a settlement
with respect to the civil action, entered into a consent
judgment which was approved by the District Court on
November 5, 2013. The court dismissed the claims in the
civil actions. The court’s order further provides:
B. General Mills’ Opposition to FAGE’s
Application Serial Nos. 77/037,793; 77/037,808;
77/037,835; 77/037,851; 77/037,869; 77/037,897;
77/037,905; 77/037,924 (“FAGE’s 2006
Applications”) is dismissed without prejudice with
consent.

C. Pursuant to 15 U.S.C. §§ 1071(b) and 1119, the
United States Patent and Trademark Office is
directed to register on the Principal Register
FAGE’s United States Trademark Application Serial

2 We note Opposition No. 91155075 was dismissed as to the goods
in International Class 30 in Application Serial No. 76016809, and
that application has since issued into Registration No. 4208121
for the goods listed in that class.

3 We note opposers filed a related action (Case No. 06:12-CV-0920
(DEP))that was consolidated with the applicant’s case.
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
3
Nos. 77/037,793; 77/037,808; 77/037,835;
77/037,851; 77/037,869; 77/037,897; 77/037,905 and
77/037,924 without vacatur of the TTAB’s September
14, 2011 decision. (emphasis added)

We construe these provisions, taken together, to
provide only that the relief ordered by the September 14,
2011 Board order be set aside, on consent of the parties, to
the extent indicated above, while the factual findings and
rulings of law in that decision remain undisturbed. In view
thereof, Opposition No. 91182937 is dismissed without
prejudice with consent of the parties and application Serial
Nos. 77037793, 77037808, 77037835, 77037851, 77037869,
77037897, 77037905 and 77037924 will be forwarded for
issuance of notices of allowance. Because the applications
were filed under Section 1(b), 15 U.S.C. § 1051(b), based on
applicant’s stated intention to use the marks in commerce,
applicant must first comply with the remaining procedural
requirements prior to registration of the marks. See 15
U.S.C. § 21 (“The court may adjudge that an applicant is
entitled to a registration upon the application involved,
that a registration involved should be canceled, or such
other matter as the issues in the proceeding require, as the
facts in the case may appear. Such adjudication shall
authorize the Director to take any necessary action, upon
compliance with the requirements of law.”) (emphasis added)
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
4
In view of the court’s order that the September 14,
2011 opinion is not vacated, the findings of fact, legal
analysis and rulings of law otherwise stand undisturbed.

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