Giancarlo Riotto

Trademark Trial and Appeal BoardDec 19, 2012

No. 85144408re (T.T.A.B. Dec. 19, 2012)

Mailed: December 19, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Riotto ________ Serial No. 85144408 On “Supplemental Request for Reconsideration” _______ Michael J. Doherty of Doherty & Charney LLC, for Giancarlo Riotto. Benjamin U. Okeke, Trademark Examining Attorney, Law Office 112 (Angela B. Wilson, Managing Attorney). _______ Before Quinn, Cataldo, and Ritchie, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: On October 9, 2012, the Board issued an order affirming the Office’s refusal to register applicant’s mark as shown below for TRIUMPH FITNESS and design, on the ground of likelihood of confusion under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d): THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 85144408 2 Applicant filed a timely request for reconsideration on November 9, 2012, but without a brief. On November 15, 2012, the Board denied the request for reconsideration. On November 20, 2012, applicant filed a “Supplemental Request for Reconsideration.” Applicant states in the “Supplemental Request for Reconsideration” that TBMP § 543 and 37 CFR § 2.129(c) allow a party 15 days during which to file a brief after making a timely request for reconsideration. The referenced rule states as follows: Any request for rehearing or reconsideration or modification of a decision issued after final hearing must be filed within one month from the date of the decision. A brief in response must be filed within fifteen days from the date of service of the request. The times specified may be extended by order of the Serial No. 85144408 3 Trademark Trial and Appeal Board on motion for good cause. 37 CFR § 2.129(c) Rule 2.129 is one of various rules in Title 37 of the Code of Federal Regulations that govern “Procedure in Inter Partes Proceedings,” i.e., trial proceedings involving a party in position of plaintiff and a party in position of defendant. Applicant’s refused application was before the Board in an ex parte appeal from that refusal, not in an inter partes proceeding. The plain language of the referenced rule indicates that a “brief in response” (emphasis added) to a request for reconsideration may be filed within 15 days of the request. The 15-day period clearly refers to time allowed for a response filed by the adverse party, i.e., an adversary in an inter partes proceeding. See Volkswagenwerk Aktiengesellschaft v. Ridewell Corp., 201 USPQ 410 (TTAB 1979) (serious questions raised by applicant’s request for reconsideration ought to have generated response by opposer). A party involved in an ex parte appeal does not file a “response” to its own request for reconsideration. In short, Rule 2.129 is inapposite to this case. The apt rule would be 2.144 (“Reconsideration of decision on ex parte appeal”): Any request for rehearing or reconsideration, or modification of the decision, must be filed within one month from the date of the decision. Such time may be extended by the Trademark Trial and Appeal Board upon a showing of sufficient cause. 37 CFR § 2.144 Serial No. 85144408 4 See TBMP § 1219.01.1 Accordingly, applicant should have filed the brief containing argument with the request for reconsideration, as filed within the initial one month period from the date of the Board’s decision on the appeal. Furthermore, even if properly submitted under the rules, we note the points raised by applicant in his “Supplemental Request for Reconsideration” are that the Board erred in that it 1) “improperly dissected” applicant’s mark in its analysis and gave “insufficient weight” to the design portion of applicant’s mark in construing the commercial impression of his mark; and that it further 2) “effectively dismissed the disclaimed portion” in a “misapplication of the law.” Regarding the first point, applicant acknowledges that the Board considered his arguments on this issue and rejected them. Indeed, as applicant notes in his “Supplemental Request for Reconsideration,” the Board acknowledged the presence of the design and its relevance in the October 9, 2012 decision. Specifically, the decision states: While we do not find the design in the application to be insignificant, it does not significantly change the commercial impression of the mark, nor would it affect its pronunciation, since consumers are likely to use 1 Applicant will also note that TBMP § 543 relates to inter partes or trial proceedings, while TBMP § 1219.01 relates to ex parte appeals. Serial No. 85144408 5 the words to call for, or refer to, the services. CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82 (Fed. Cir. 1983); In re Dakin’s Miniatures Inc., 59 UPSQ2d 1593, 1596 (TTAB 2001); In re Appetito Provisions Co., Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). October 9, 2012 decision, at 7. Regarding the second point, applicant does not explain in what way the Board ignored the term “FITNESS” in its analysis of the likelihood of confusion. Rather, the October 9, 2012 decision specifically refers to “the mark as a whole” in mentioning the commercial impression of applicant’s mark: When viewed in relation to the services in the application, the mark as a whole creates the commercial impression of services where consumers can triumph or win with applicant’s fitness center and instruction. Id. Thus, we find that both points were not only argued by applicant previously, but were directly addressed in the Board’s October 9, 2012 decision. The purpose of a request for reconsideration of a decision in an ex parte appeal “is to point out errors made by the Board in reaching its decision . . . not merely to allow either the applicant or the examining attorney to reargue the case.” In re Squaw Valley Development Co., 80 USPQ2d 1264, 1268 (TTAB 2006). Applicant’s “Supplemental Request for Reconsideration” is denied. The time to appeal has not been tolled by this untimely “Supplemental Request.” See TBMP § 902.02 (“Because the Board’s Serial No. 85144408 6 rules do not permit a second or subsequent request for reconsideration, only a timely first request for reconsideration or modification will toll the time for filing an appeal.”)