AQFTM, Inc.v.Austinuts, Inc.

Trademark Trial and Appeal Board

Oct 21, 2009

No. 91166552re (T.T.A.B. Oct. 21, 2009)

Hearing: Mailed:
April 23, 2009 October 21, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

AQFTM, Inc.
v.
Austinuts, Inc.
_______

Opposition Nos. 91166551 and 91166552
_______

RECONSIDERATION
_______

Patricia S. Smart of Smart & Bostjancich for AQFTM, Inc.

Orlesia A. Tucker of Graves Dougherty Hearon & Moody for
Austinuts, Inc.
_______

Before Walters, Bucher and Holtzman, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

On August 6, 2009, the Board issued its decision
sustaining these consolidated oppositions by AQFTM, Inc. to
the applications of Austinuts, Inc. to register the marks
AUSTINUTS and the design mark shown below for “nuts, namely,
dry roasted nuts,” in International Class 29.1

1 Application Serial Nos. 76485325 and 76485326, respectively, both of
which were filed January 27, 2003, based on use in commerce, alleging
first use and use in commerce as of September 15, 1993.

THIS OPINION
IS NOT
A PRECEDENT OF
THE TTAB
Opposition No. 91166551
2

The ground for opposition in each application, was
opposer’s assertion that applicant’s mark, when applied to
applicant’s goods, so resembles opposer’s previously used
and registered marks for cookies and crackers as to be
likely to cause confusion, under Section 2(d) of the
Trademark Act.
On September 9, 2009, applicant’s president filed a
submission that we have construed as a request for
reconsideration of the Board’s decision in the oppositions.
Applicant primarily reargues the facts of its case, which is
not a proper basis for a request for reconsideration. In
this context, applicant contends (1) that the Board should
not have granted opposer’s motion to strike the version of
Mr. Ilai’s deposition filed by applicant in favor of the
version to which opposer, applicant and the court reporter
stipulated; (2) that opposer’s counsel held an ex parte
communication with two of the Board judges immediately prior
to the oral hearing; and (3) that one of the Board judges
appeared at the hearing via video-conference and that there
were technical difficulties with the transmission.
Applicant claims that it was prejudiced by these three
Opposition No. 91166551
3
occurrences and requests that its case be reviewed by a new
panel of judges.
Opposer has opposed the request for reconsideration on
the ground that applicant is merely re-arguing the case.
Regarding the alleged ex parte communication, opposer states
that applicant’s counsel was present at this exchange and
that it involved applicant’s use of an exhibit at the
hearing, which the Board allowed.
The USPTO has also received notice that, on October 5,
2009, applicant appealed the Board’s decision to the U.S.
District Court for the Western District of Texas (case no.
A09 CA73055).
In view of applicant’s appeal of the Board’s decision,
the request for reconsideration is moot and will be given no
consideration.
We note, however, that even if we had considered the
request, we would have denied the request for
reconsideration on the ground that we find no error in our
decision as issued. Applicant’s arguments about the Ilai
deposition merely rehash arguments made at trial. Regarding
the alleged ex parte communication, applicant did not reply
to dispute opposer’s statement that applicant’s counsel was
present at the communication and, furthermore, the Board
allowed the use of applicant’s exhibit at the hearing.
Thus, there was no prejudice to applicant. Regarding the
Opposition No. 91166551
4
video conferencing of one of the judges participating in the
oral hearing, the Board regrets that there were technical
difficulties. However, despite those difficulties, the
judge participated fully in the oral hearing and, in
deciding the case, all of the judges had available to them
the full record herein. Thus, the video conferencing did
not prejudice applicant.
Decision: The Board’s decision stands. The
oppositions are sustained on the ground of likelihood of
confusion, and registration to applicant is refused in each
application.