Black Bear Bottling Groupv.Black Bear Spring Water LLC

Trademark Trial and Appeal Board

Nov 8, 2011

No. 92050665re (T.T.A.B. Nov. 8, 2011)

Mailed: November 8, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Black Bear Bottling Group

v.

Black Bear Spring Water LLC
_____

Cancellation No. 92050665
On Reconsideration
_____

Donald J. Ersler of Donald J. Ersler, SC for Black Bear
Bottling Group.

Ernest D. Buff of Ernest D. Buff & Associates, LLC for Black
Bear Spring Water LLC.
_____

Before Quinn, Cataldo and Bergsman,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On August 18, 2011, the Board issued a final decision
in the above-captioned proceeding. In that decision, we
found that: petitioner had standing to bring its petition
to cancel; petitioner’s claim was not barred by laches; and
petitioner proved its pleaded claim of priority and
likelihood of confusion. Accordingly, we granted the
petition to cancel on the ground of priority and likelihood
of confusion.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Cancellation No. 92050665
2
On September 18, 2011, respondent timely filed a motion
for reconsideration of that decision. See Trademark Rule
2.129(c). Petitioner timely filed a brief in opposition
thereto.1 See Id.
In its motion for reconsideration, respondent asserts
that our August 18, 2011 decision is in error for the
following reasons:
(1) “The Board’s use of Petitioner’s date of
“actual knowledge” of September 2008 rather
than the registration date of August 2, 2005
manifests reversible error”;2
(2) “The Board’s improper use of Petitioner’s
date of “actual knowledge” of September 2008
resulted in error as to the Board’s
determination of prejudice against
Respondent”;3 and
(3) “Confusion is not inevitable”4 and, thus,
laches is available as a defense in this
case.
It has often been stated that the premise underlying a
request for rehearing, reconsideration, or modification

1 We note that the applicable Trademark Rules of Practice make no
provision for the filing of a reply brief on a request for
reconsideration of a decision issued after final hearing. See
Trademark Rule 2.129(c). Accordingly respondent’s reply brief on
its motion for reconsideration will be given no consideration.
2 Request for Reconsideration, p. 6.
3 Id. at 8.
Cancellation No. 92050665
3
under Trademark Rule 2.129(c) is that, based on the evidence
of record and the prevailing authorities, the Board erred in
reaching the decision it issued. See TBMP §543 (3d ed. May
2011) and the authorities cited therein. The request may
not be used to introduce additional evidence,

nor should it
be devoted simply to a reargument of the points presented in
the requesting party's brief on the case. See Amoco Oil Co.
v. Amerco, Inc., 201 USPQ 126 (TTAB 1978). Rather, the
request normally should be limited to a demonstration that
based on the evidence properly of record and the applicable
law, the Board's ruling is in error and requires appropriate
change. See, for example, Steiger Tractor Inc. v. Steiner
Corp., 221 USPQ 165 (TTAB 1984), different results reached
on reh’g, 3 USPQ2d 1708 (TTAB 1984). Cf. In re Kroger Co.,
177 USPQ 715, 717 (TTAB 1973).
We address each of respondent’s arguments in turn.
With regard to respondent’s first contention, in our August
18, 2011 decision we noted that, based upon the testimony
and evidence of record, petitioner first became aware of
respondent on September 18, 2008.5 We then went on to find,
in accordance with the relevant authorities,
Even absent this testimony, the earliest date for
purposes of determining whether there has been
undue delay is the March 2, 2004 publication date
and the August 2, 2005 issue date of the subject
registration. See National Cable Television Ass'n,

4 Id. at 11.
5 August 18, 2011 decision, p. 8.
Cancellation No. 92050665
4
Inc. v. American Cinema Editors, Inc., 937 F.2d
1572, 1581, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991)
(laches runs from the time from which action could
be taken against the trademark rights inhering
upon registration). Petitioner brought this
cancellation proceeding on March 9, 2009,
approximately five years after the publication
date and three years and seven months after the
date of registration.6

Thus, it is clear from the August 18, 2011 decision that
petitioner’s delay in bringing its cancellation action was
calculated from the August 2, 2005 issue date of
respondent’s subject registration. With regard to
respondent’s second contention and as discussed above,
inasmuch as the August 2, 2005 issue date of respondent’s
registration was used to calculate petitioner’s delay, our
determination of prejudice against respondent was not in
error. With regard to respondent’s third point, we note
that in our August 18, 2011 decision, we did not make a
finding with regard to inevitability of confusion either in
our discussion of laches or likelihood of confusion. Thus,
our decision cannot be found to be in error with regard
thereto.
In short, respondent points to no error on the part of
the Board in our August 18, 2011 decision on final hearing
but rather expresses disagreement with the result reached
therein. Furthermore, and as observed in our August 18,
2011 decision, respondent did not submit any arguments in

6 Id. p. 8-9.
Cancellation No. 92050665
5
its brief with regard to its laches defense. As a result,
respondent will not now be heard to raise for the first time
arguments that should properly have been raised in its brief
on final decision. As a result, we remain of the opinion
that our July 11, 2007 decision is correct.
Accordingly, respondent’s motion for reconsideration is
denied.7

7 The parties will note that neither Trademark Rule 2.129(c) nor
any of the other rules of practice applicable to Board
proceedings contemplate a second request for reconsideration of a
final decision in a Board inter partes case.