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ACR Case List - ACR Cases and Cases Illustrating ACR-like Efficiencies

By Brandon Rose,2014-06-17 07:10
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ACR Case List - ACR Cases and Cases Illustrating ACR-like Efficiencies ...

ACR Cases and Cases Illustrating ACR-like Efficiencies

    (As of 11/1/09)

The following is a list of cases that relate to or involve, in some way,

    either the TTAB’s Accelerated Case Resolution (ACR) process or

    utilization of other means for parties to realize savings in time and

    resources, by agreeing to utilize more efficient and economical

    alternatives to traditional discovery and trial processes. While many

    of the listed cases did not result in the issuance of precedential

    orders or opinions, they may be useful references for parties

    interested in researching means for expediting discovery, trial or

    briefing the merits of inter partes proceedings. Opposition and

    cancellation proceeding numbers are provided to allow these cases

    to be viewed in the TTAB’s TTABVUE electronic proceeding file

    database.

1. Cases suitable for ACR or expedited process

Ballet Tech Foundation, Inc. v. The Joyce Theater Foundation, Inc., 89 USPQ2d

    1262, 1266 n.9 (TTAB 2008) (91180789 & 92042019) (comment included in final

    decision that case would have been suitable candidate for proceeding under

    ACR, although it had not been so prosecuted).

2. Discovery conference orders regarding use of ACR

    Facing the World v. Dan Maerovitz (91181253): Applicant pro se; two orders issued touching on ACR.

3. Stipulations to utilize ACR (whether discussed in discovery

    conference or later)

    philosophy, inc. v. Amansala USA, LLC (91190154): Parties’ stipulation to proceed by ACR was filed shortly after deadline for serving

    initial disclosures, but without such disclosures having been filed.

GN ReSound A/s v. Lisound Hearing Aid (Fuzhou) Co., Ltd. (91186228).

    Le Bonheur Group Sarl v. Lothar Schmidt (92048357): Proceeding commenced October 31, 2007, the day before the Board’s amended

    rules took effect.

Direct Marketing Consultants, LLC v. Wise-Buys, Inc. (92049014).

    Halloween Town, Inc. v. Pignatello L.L.C. (92049752):

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After answer filed and initial disclosures exchanged, respondent filed statement

    of parties’ agreement to proceed by ACR.

Anheuser-Busch, Inc. v. BLhUE, Inc. (91184562):

    After answer and at deadline for initial disclosures opposer filed consented

    motion to proceed by ACR, noting only that the parties had agreed to allow Board

    to resolve genuine issues of material fact.

    Get It In Writing Inc. v. IQ in Tech, Inc. and Get It In Writing, Inc. (92046274): Case commenced more than a year prior to amendment of Board rules for inter

    partes cases. After MSJ, parties moved for ACR and asked that their cross-

    motions for SJ be treated as briefs and that any evidence of record in motions be

    deemed properly of record.

4. Other interlocutory (post-discovery conference) orders regarding

    ACR

Merelinda Farms L.L.C. DBA Alpaca.com L.L.C. v. The American Breeders Co-

    op (91167038).

    GN ReSound A/s v. Lisound Hearing Aid (Fuzhou) Co., Ltd. (91186228): Board order followed up on and modified stipulation to proceed by ACR.

    *NOTE: This proceeding is already listed above in section on Stipulations to

    utilize ACR (whether discussed in discovery conference or later).

Le Bonheur Group Sarl v. Lothar Schmidt (92048357):

    Board order followed up on and modified stipulation to proceed by ACR.

    *NOTE: This proceeding is already listed above in section on Stipulations to

    utilize ACR (whether discussed in discovery conference or later).

    Eveready Battery Company, Inc. v. Green Planet, Inc., 91 USPQ2d 1511 (TTAB 2009) (91180015):

    Case commenced just prior to amendment of Board rules for inter partes cases.

    Large record created in briefing of opposer’s motion for summary judgment on its

    section 2(d) claim. Motion was denied and, with discovery closed, trial dates

    alone were reset. Parties agreed to ACR process just after trial began.

    Direct Marketing Consultants, LLC v. Wise-Buys, Inc. (92049014): Two Board orders followed up on and modified consent motion to proceed by

    ACR.

    * NOTE: this proceeding is already listed above in section on Stipulations to

    utilize ACR (whether discussed in discovery conference or later).

    M2 Software, Inc. v. M2 Communications, Inc. (91158118) (ACR case final decision nonprecedential; affirmed 450 F.3d 1378, 78 USPQ2d 1944 (Fed. Cir.

    2006):

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Case commenced and eventually decided before enhanced promotion of ACR, in

    conjunction with 2007 amendment of rules for Board inter partes cases.

Anheuser-Busch, Inc. v. BLhUE, Inc. (91184562):

    Board order followed up on and modified stipulation to proceed by ACR (case

    later settled).

    * NOTE: this proceeding is already listed above in section on Stipulations to

    utilize ACR (whether discussed in discovery conference or later).

5. Motions (not consented) to require use of ACR, mediation or

    arbitration

Roll-A-Cover, LLC v. James D. Cohen (91182364):

    Pro se applicant. Applicant’s motion to proceed by mediation or arbitration

    considered as motion to proceed under ACR, but denied.

Globo Communicacao E Participacoes S.A. v. The Media Globo Corporation

    (91184401):

    Pro se applicant. Applicant’s motion to proceed by ACR denied.

D-Col, Inc. v. Terry L. Young (91188416):

    Opposer pro se; applicant pro se. Opposer moved for ACR, but it was denied as

    applicant did not agree.

6. Cases decided by ACR

Merelinda Farms L.L.C. DBA Alpaca.com L.L.C. v. The American Breeders Co-

    op (91167038) (opposition sustained).

    * NOTE: this proceeding is already listed above in section on Other interlocutory

    (post-discovery conference) orders regarding ACR.

    Eveready Battery Company, Inc. v. Green Planet, Inc., 91 USPQ2d 1511 (TTAB 2009) (91180015) (opposition sustained).

    * NOTE: this proceeding is already listed above in section on Other interlocutory

    (post-discovery conference) orders regarding ACR.

    Direct Marketing Consultants, LLC v. Wise-Buys, Inc. (92049014) (petition dismissed).

    * NOTE: this proceeding is already listed above in section on Stipulations to

    utilize ACR (whether discussed in conference or later).

Facing the World v. Dan Maerovitz (91181253) (opposition sustained).

    *NOTE: this proceeding is already listed above in section on Discovery

    conference orders regarding use of ACR.

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    M2 Software, Inc. v. M2 Communications, Inc. (91158118) (ACR case final decision dismissing opposition nonprecedential; affirmed 450 F.3d 1378, 78

    USPQ2d 1944 (Fed. Cir. 2006)).

    *NOTE: this proceeding is already listed above in section on Other interlocutory

    (post-discovery conference) orders regarding ACR.

    Get It In Writing Inc. v. IQ in Tech, Inc. and Get It In Writing, Inc. (92046274) (petition granted).

    *NOTE: this proceeding is already listed above in section on Stipulations to

    utilize ACR (whether discussed in conference or later).

7. Stipulations of facts and/or means for submitting evidence (non-ACR

    cases)

    Christopher Brooks v. Creative Arts by Calloway, LLC, __ USPQ2d ___ (TTAB 2009) (91160266):

     Board issued short order approving a stipulation to submit testimony of certain

    witnesses in declaration form. Further stipulations followed but were not

    addressed until the final decision. These included stipulation to fourteen

    paragraphs of particular facts, that the sole issue for the Board to decide was

    opposer’s priority, and that opposer’s testimony on priority (with exhibits) could

    be submitted in affidavit form.

Factory Five Racing, Inc. v. Carroll Shelby and Carroll Hall Shelby Trust

    (91150346):

    Parties stipulated that either could introduce “previously-taken discovery depositions” of three individuals “including the depositions taken in” two district

    court cases. Stipulation included reservation of right by applicant to take further

    testimony from two of these witnesses during trial of the opposition, and of

    opposer’s right to cross-examine them.

8. Non-ACR Cases decided in whole or in part based on stipulated facts

    or records

    Christopher Brooks v. Creative Arts by Calloway, LLC, __ USPQ2d ___ (TTAB 2009) (91160266):

    Parties stipulated to admission of various testimony declarations, and in

    subsequent filing, stipulated to fourteen paragraphs of particular facts, that the

    sole issue for the Board to decide was opposer’s priority, and that opposer’s

    testimony on priority could be submitted in affidavit form.

    UMG Recordings Inc. v. Charles O’Rourke, 92 USPQ2d 1042 (TTAB 2009) (91178937):

    Parties stipulated that each could introduce produced documents as “authentic

    business records” and that each could introduce testimony by declaration. Each

    party had the right to elect live cross-examination, and opposer did so in regard

    to applicant O’Rourke.

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    BioWorld Products, LLC v. Bioworld Biotechnology, Inc. (92046745) (TTAB 2009): Agreement by parties to use of affidavit testimony discussed in final decision on

    the merits.

Regions Financial Corporation v. Regional Acceptance Corporation (91155299 &

    91155302) (TTAB 2009):

    Parties stipulated that all documents submitted by their notices of reliance “are

    authentic” and that discovery depositions of three witnesses were to be

    submitted in lieu of testimony depositions. Parties reserved the right to object to

    these depositions, and other evidence, “on the grounds of competency,

    relevance, and materiality.”

    Hachette Filipacchi Presse v. Ev International, LLC (91174433) (TTAB 2008): Parties stipulated to 16 pages (36 paragraphs) of facts and accompanying

    exhibits. Parties stipulated that the facts in the stipulation document were true

    and undisputed and the exhibits to the document were genuine. Parties agreed

    there would be no objections to truth of facts or admissibility of exhibits, even on

    appeal or in trial de novo.

    Target Brands, Inc. v. Shaun N.G. Hughes, 85 USPQ2d 1676 (TTAB 2007) (91163556):

    Opposer used ULTIMATE POLO descriptively; applicant claimed acquired

    distinctiveness. Entire record stipulated, including business records, government

    documents, marketing materials and internet printouts. Parties stipulated to 13

    paragraphs of facts, including applicant’s dates of first use, channels of trade for applicant, extent and manner of applicant’s use, recognition by others of

    applicant’s use, dates, nature and extent of descriptive use by opposer’s parent.

    Zimmerman v. National Association of Realtors, 70 USPQ2d 1425 (TTAB 2004) (92032360):

    Parties stipulated that record from 2002 Freeman case (see below) would be considered in this 2004 case involving same claims, i.e., that mark REALTOR is

    generic as a collective membership marks for members of an organization

    offering real estate services, etc.

    Freeman v. National Association of Realtors, 64 USPQ2d 1700 (TTAB 2002) (92027885 & 92028047):

    Parties stipulated that case would be decided on petitioner’s motion for summary

    judgment and respondent’s response. Petitioner argued the mark REALTOR (two registrations) is generic when used as a collective membership mark for

    members of an organization offering real estate services, etc.

    Miller Brewing Co. v. Coy International Corp., 230 USPQ 675 (TTAB 1986). After fully briefing cross-motions for summary judgment, the parties filed a

    stipulation:

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    that the affidavits and exhibits before the Board for purposes of the pending motion and cross-motion for summary judgment shall be the testimony and evidence of the parties for purposes of final hearing; that the briefs in support of and in opposition to the pending motion and cross-motion for summary judgment shall be deemed to be the briefs at final hearing pursuant to Trademark Rule 2.128 and that all office records, matters of public record, discovery deposition excerpts and the like incorporated in or annexed as exhibits to the briefs or affidavits shall be deemed to have been properly filed pursuant to notice of reliance pursuant to Trademark Rule 2.122(e).

    Id. at 676.

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