Publix Asset Management Companyv.Allegiance Retail Services, LLC

Trademark Trial and Appeal Board

Apr 28, 2016

No. 91186148 (T.T.A.B. Apr. 28, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: Mailed:
February 5, 2015 April 28, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Publix Asset Management Company
v.
Allegiance Retail Services, LLC1
_____

Opposition Nos. 91186148 and 91186863
_____

James B. Lake of Thomas & Locicero PL for the Publix Asset Management Company.

Peter A. Luccarelli Jr. of Luccarelli & Musacchio LLP for Allegiance Retail Services,
LLC.
_____

Before Quinn, Shaw, and Goodman, Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:

On August 7, 2015, the Board issued its final, non-precedential decision
dismissing the consolidated opposition against The Great Atlantic & Pacific Tea
Company, Inc. (A&P), the original Applicant on the underlying applications for
registration. On September 2, 2015, based on Applicant’s July 19, 2015 filing of a

1 Substituted for The Great Atlantic & Pacific Tea Company, Inc. as the assignee of the
mark and applications. Approved by order the Board on April 13, 2016. 139 TTABVUE 2.
Opposition Nos. 91186148 and 91186863
2
bankruptcy petition in the United States Bankruptcy Court for the Southern District
of New York, Opposer filed a motion to stay proceedings. The Board granted the
motion and suspended proceedings, including Opposer’s time to seek reconsideration
of the Board’s order, on September 3, 2015. See Trademark Rule 2.129(c), 37 C.F.R.
§ 2.129(c). During the bankruptcy proceeding, A&P assigned the marks and
applications to Allegiance.2 Because Allegiance is not a party to the bankruptcy
proceeding, proceedings in this case have been resumed and Allegiance has been
substituted for A&P.3 Publix now files an unopposed motion to vacate the Board’s
decision and a joint motion to dismiss proceedings as moot.
Following the assignment of the mark and applications from A&P, Allegiance
entered into a coexistence agreement with Publix imposing geographic restrictions
on the use of the mark.4 The coexistence agreement resolves the parties’ dispute and
includes their undertakings with respect to use and registration of their respective
marks. In particular, Allegiance agrees to “amend the applications (or file
replacement applications, if appropriate) to reflect the geographic limitations set
forth in [the] agreement.”5
The bankruptcy suspension also stayed Publix’s right to seek rehearing or to
appeal from the Board’s decision. Rather than filing a request for reconsideration or
an appeal, Publix, with Allegiance’s consent, now seeks to vacate the Board’s decision

2 138 TTABVUE 4.
3 139 TTABVUE.
4 140 TTABVUE 8.
5 Id. at 9.
Opposition Nos. 91186148 and 91186863
3
and dismiss proceedings as moot, thereby allowing Allegiance to amend the marks to
reflect the geographic limitations or to file replacement applications. It is apparent
that vacatur of the Board’s August 7, 2015 decision and dismissal of the proceedings
are important conditions of the agreement.
Motions to set aside or vacate a final judgment rendered by the Board are
governed by Fed. R. Civ. P. 60(b) and are committed to the equitable discretion of the
Board. Trademark Trial and Appeal Board Manual of Procedure (TBMP), § 544.
(2015). Section 544 states:
Where the parties are agreed that the circumstances
warrant the vacating or setting aside of a final judgment,
a stipulation or consented motion for relief from the
judgment should be filed. The Board ordinarily will grant
a consented request for relief from judgment.
Inasmuch as there are no circumstances that would suggest that relief from judgment
would not be appropriate in this case and the result is consistent with the decision of
August 7, 2015, the motion to vacate is granted. The Board’s decision dated August
7, 2015 is vacated, and the consolidated opposition is dismissed as moot. Serial Nos.
77349246 and 77409725 will be forwarded for issuance of the notices of allowance.