Inviro Medical Devices Ltd.v.DuoProSS Meditech Corporation

Trademark Trial and Appeal Board

Nov 13, 2012

No. 92046702 (T.T.A.B. Nov. 13, 2012)

Mailed: November 13, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
____

Trademark Trial and Appeal Board
____

Inviro Medical Devices Ltd.

v.

DuoProSS Meditech Corporation
____

Cancellation No. 92046702
of Registration No. 2897833; and,
Counterclaim to cancel Registration Nos. 2970944, 2778604,
2967982, 2944686 and 3073371
____

Decision on Remand
____

Duane M. Byers of Nixon & Vanderhye, P.C. for Inviro Medical
Devices, Inc.

Thomas J. Moore of Bacon & Thomas, PLLC for DuoProSS
Meditech Corporation.
______

Before Taylor, Mermelstein and Greenbaum,1 Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Inviro Medical Devices, Ltd. (“Inviro”) petitioned to cancel
a registration owned by DuoProSS Meditech Corporation
(“DuoProSS”) for the mark BAKSNAP and design. As grounds for
cancellation, Inviro alleged priority of use and likelihood of

1 Judge Greenbaum is substituted for Judge Walters who has
retired from the Board.
THIS OPINION IS NOT A
PRECEDENT
OF THE TTAB
Cancellation No. 92046702

2
confusion, claiming ownership of Registration Nos. 2970944,
2778604, 2967982, 2944686 and 3073371. DuoProSS filed
counterclaims to cancel all five pleaded registrations.2
On April 5, 2011, the Board sustained DuoProSS’
counterclaims as to Registration Nos. 2967982, 2778604 and
2970944 (all three for the mark SNAP); sustained DuoProSS’
alternative counterclaim against Registration No. 3073371
(for the mark SNAP SIMPLY SAFER), specifically noting that
the decision to sustain the alternative counterclaim would
be set aside upon submission of a disclaimer of SNAP; and
dismissed DuoProSS’s counterclaim to cancel Registration No.
2944686 for the mark on both the grounds of mere
descriptiveness and that the mark is improperly registered
in the absence of a disclaimer.
After the Board’s decision, Inviro filed the required
disclaimer in Registration No. 3073371 and, in a decision
issued July 22, 2011, that part of the decision was set
aside; and DuoProSS filed a request for reconsideration of
the decision solely with respect to Registration No.
2944686, which was denied in an order also issued on July
22, 2011.

2 Inviro filed an unconsented withdrawal of the petition for
cancellation prior to trial and the petition was dismissed with
prejudice on April 30, 2009. The proceeding went to trial only
on DuoProSS’ couterclaims.

Cancellation No. 92046702

3
Thereafter, DuoProSS appealed the Board’s decisions, as
they pertained to Registration Nos. 2944686 and 3073371, to
the U.S. Court of Appeals for the Federal Circuit. On
August 14, 2012, the Court reversed the Board’s decisions on
the counterclaims involving these registrations and remanded
the case stating the following:
Substantial evidence fails to support the
Board’s conclusion that DuoProSS failed to
prove that the SNAP! design mark and SNAP
SIMPLY SAFER mark are merely descriptive.
Accordingly, we reverse the Board’s decision
and remand with instructions to enter judgment
in favor of DuoProSS and to order cancellation
of U.S. Registration Nos. 2,944,686 and
3,073,371.

DuoProSS Meditech Corporation v. Inviro Medical Devices,
LTD.,__ F.3d __, 103 USPQ2d 1753 (Fed. Cir. 2012).
In view of the Federal Circuit’s decision that
substantial evidence supported the DuoProSS counterclaims
against these two registrations, the Board’s decisions of
April 5, 2011, and July 22, 2011, are hereby modified. Our
dismissal of the DuoProSS counterclaims against U.S.
Registration Nos. 2944686 and 3073371 asserting the
registered marks are descriptive is hereby vacated and the
counterclaims are sustained as to those registrations.
Accordingly, Registration Nos. 2944686 and 3073371 will be
cancelled in due course.

* * *