`A PRECEDENT OF THE
`TTAB
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`GCP
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` Mailed: April 12, 2012
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`Opposition No. 91191947
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`HLT Domestic IP LLC
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`v.
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`Eric Marcus
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`Before Seeherman, Ritchie, and Wolfson,
`Administrative Trademark Judges.
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`By the Board:
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`Eric Marcus (“applicant”) seeks to register the mark
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`WOOFDORF-ASTORIA DOG HOTEL & DAY SPA in standard characters
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`for “kennel services, namely, boarding for pets” in
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`International Class 43.1
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`HLT Domestic IP LLC (“opposer”) has filed a notice of
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`opposition to registration of applicant’s mark on the grounds
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`of likelihood of confusion and dilution by blurring. In
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`support of its asserted claims, opposer has pleaded that it
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`has common law rights in the mark WALDORF-ASTORIA, previously
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`used on or in connection with hotel services and related
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`1 Application Serial No. 77633434, filed on December 15, 2008,
`based on use in commerce under Trademark Act Section 1(a), 15
`U.S.C. Section 1051(a), claiming September 20, 2006 as both the
`date of first use and the date of first use in commerce.
`Applicant has provided a disclaimer of the wording “DOG HOTEL &
`DAY SPA.”
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`Opposition No. 91191947
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`goods, as well as ownership of the following registered marks:
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`(1) WALDORF-ASTORIA in standard characters for “hotel
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`services” in International Class 42;2 (2) WALDORF=ASTORIA
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`COLLECTION in standard characters for “hotel services;
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`restaurants and catering services; provision of facilities for
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`meetings, conferences and exhibitions” in International Class
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`43;3 and (3) WALDORF=ASTORIA COLLECTION and design for “hotel
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`services; restaurants and catering services; provision of
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`facilities for meetings, conferences and exhibitions” in
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`International Class 43.4
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`Applicant, in his answer, has denied the salient
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`allegations of the notice of opposition.
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`This case now comes before the Board for consideration of
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`(1) applicant’s motion for summary judgment on opposer’s
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`asserted ground of likelihood of confusion5 and (2) opposer’s
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`motion for summary judgment on its asserted claim of dilution
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`by blurring. The motions are fully briefed.
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`Summary judgment is an appropriate method of disposing
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`of cases that present no genuine disputes of material fact,
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`2 Registration No. 1065983, issued on May 17, 1977. Combined
`Section 8/Section 9 accepted/granted; renewed.
`3 Registration No. 3165117, issued on October 31, 2006.
`4 Registration No. 3267555, issued on July 24, 2007.
`5 Although the opening paragraph of applicant’s motion seeks
`entry of summary judgment dismissing the opposition in its
`entirety, we note that applicant only argues the merits of
`opposer’s pleaded likelihood of confusion claim and concludes his
`motion by stating that confusion is not likely. Accordingly, we
`construe applicant’s motion as only concerning opposer’s pleaded
`claim of likelihood of confusion.
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`2
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`Opposition No. 91191947
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`thus leaving the case to be resolved as a matter of law.
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`See Fed. R. Civ. P. 56(a). The evidence must be viewed in a
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`light favorable to the nonmoving party, and all justifiable
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`inferences are to be drawn in the nonmovant’s favor.
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`Lloyd’s Food Products, Inc. v. Eli’s, Inc, 987 F.2d 766, 25
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`USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA Inc. v. The
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`Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d
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`1471 (Fed. Cir. 1992).
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`Here, applicant has the burden of demonstrating the
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`absence of any genuine dispute of material fact, and that he
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`is entitled to judgment as a matter of law, with respect to
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`opposer’s claim of likelihood of confusion, and opposer has
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`the corresponding burden with respect to its dilution claim.
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`See Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Sweats
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`Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4
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`USPQ2d 1793 (Fed. Cir. 1987).
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`We first turn to applicant’s motion for summary
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`judgment regarding opposer’s asserted ground of likelihood
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`of confusion. In support of his motion, applicant
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`essentially argues that since his involved mark constitutes
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`an effective parody of opposer’s pleaded marks, there can be
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`no likelihood of confusion.
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`In response, opposer maintains that applicant’s motion
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`should be summarily dismissed inasmuch as it is not
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`supported by any evidence nor does the motion provide any
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`3
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`Opposition No. 91191947
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`analysis of the likelihood of confusion factors under In re
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`E.I. du Pont Nemours & Co., 476 F.2d 1357 (CCPA 1973) and,
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`therefore, applicant has failed to discharge his burden of
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`establishing that no genuine dispute of material fact
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`remains and that he is entitled to judgment as a matter of
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`law. Opposer further argues that parody is not a defense to
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`a claim of likelihood of confusion and that, in any event,
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`genuine disputes of material fact exist, at a minimum, as to
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`the relatedness of the parties’ respective services.6 In
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`particular, opposer maintains that it offers a wide variety
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`of pet-related goods and services that are identical to or
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`overlap with applicant’s services, including, among others,
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`(1) permitting and encouraging hotel guests to bring their
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`pets with them during their stay, (2) dog walking, grooming,
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`shopping, spa and feeding services, and (3) providing dog
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`beds, collars, leashes and pet bowls. In support thereof,
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`opposer has submitted the declaration of Barbara Arnold,
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`opposer’s Director of Intellectual Property, who, by her
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`declaration, attests to the types of pet services provided
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`by opposer at its hotels and resorts.
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`Parody is not, per se, a “defense” to a claim of
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`likelihood of confusion; rather, “it is merely a way of
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`6 We note that opposer also argues that applicant’s motion for
`summary judgment should be denied with regard to opposer’s
`pleaded claim of dilution. However, as previously noted, we have
`construed applicant’s motion to only concern opposer’s pleaded
`claim of likelihood of confusion.
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`4
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`Opposition No. 91191947
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`phrasing the traditional response that customers are not
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`likely to be confused as to source, sponsorship or
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`approval.” Schieffein & Co. v. Jack Co. of Boca, 725 F.
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`Supp. 1314, 1323 (S.D.N.Y. 1989) (quoting J. Thomas
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`McCarthy, McCarthy on Trademarks and Unfair Competition,
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`§ 31:156 (4th ed. database updated 2012)). Thus, parody is
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`simply another factor which is relevant to the analysis of
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`likelihood of confusion because parody is merely another way
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`of arguing that confusion is not likely. Nike, Inc. v. Just
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`Did It Enterprises, 6 F.3d 1125, 28 USPQ2d 1942 (7th Cir.
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`1993); Utah Lighthouse Ministry v. Found. For Apologetic
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`Info. and Research, 527 F.3d 1045, 86 USPQ2d 1865 (10th Cir.
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`1988). In other words, even if the defendant’s mark has a
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`parody aspect, that is not necessarily sufficient to prevent
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`likelihood of confusion. See Elvis Presley Enterprises Inc.
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`v. Capece, 141 F.3d 188, 46 USPQ2d 1737, 1744 (5th Cir.
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`1998); Dr. Suess Enterprises L.P. v. Penguin Books USA, 109
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`F.3d 1394, 42 USPQ2d 1184, 1193 (9th Cir. 1977).
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`In view of the fact that parody does not, as a matter
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`of law, avoid a likelihood of confusion7 and because this is
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`the sole basis for applicant’s motion, applicant having
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`failed to address any of the du Pont likelihood of confusion
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`factors or submit any evidence in support of his motion for
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`7 As noted infra, there is also a genuine issue as to whether
`applicant’s mark would be perceived as a parody.
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`5
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`Opposition No. 91191947
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`summary judgment, we find that applicant has failed to carry
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`his burden of demonstrating that he is entitled to summary
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`judgment dismissing opposer’s claim under Section 2(d) of
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`the Trademark Act.
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`Accordingly, applicant’s motion for summary judgment on
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`opposer’s asserted ground of likelihood of confusion is
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`denied.
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`We next turn to opposer’s motion for summary judgment
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`on its asserted claim of dilution by blurring. When an
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`application to register a mark is challenged on the grounds
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`of dilution, as is the case here, the Board looks to three
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`elements: (1) whether the opposer’s mark is famous, (2)
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`whether the opposer’s mark became famous prior to
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`applicant’s use of the mark; and (3) whether the applicant’s
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`mark is likely to blur the distinctiveness of the opposer’s
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`famous mark. National Pork Board v. Supreme Lobster and
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`Seafood Co., 96 USPQ2d 1479, 1494-5 (TTAB 2010).8
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`8 In determining whether a mark is likely to cause dilution by
`blurring, we consider all factors relevant to the issue,
`including the following six factors that are enumerated in
`Section 43(c)(2)(B) of the Trademark Act:
`(i)
`The degree of similarity between the mark or trade
`name and the famous mark;
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`(ii)
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`(iii)
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`(iv)
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`The degree of inherent or acquired distinctiveness of
`the famous mark;
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`The extent to which the owner of the famous mark is
`engaging in substantially exclusive use of the mark;
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`The degree of recognition of the famous mark;
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`6
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`Opposition No. 91191947
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`As to the first and second elements, there are no
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`genuine disputes of material fact that opposer’s pleaded
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`WALDORF-ASTORIA mark is famous and that opposer’s WALDORF-
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`ASTORIA mark acquired its fame prior to applicant’s first
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`use of his mark. Applicant, both by his own testimony and
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`in his response to opposer’s motion for summary judgment,
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`has conceded both of these points. See Exhibit G of
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`opposer’s motion consisting of excerpts of applicant’s
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`discovery deposition transcript (hereinafter “Marcus Dep.”
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`at 110:18-111:7, 111:13-23, 115:12-19); see also p. 2 of
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`applicant’s response to opposer’s motion for summary
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`judgment.
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`It is only on the final element of the three-part test,
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`i.e., in considering the six non-exclusive factors set forth
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`in Section 43(c)(2)(B) of the Trademark Act, that the
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`parties take contradictory positions. With respect to this
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`last element, opposer maintains that applicant has conceded
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`that (1) the parties’ marks are similar and that he intended
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`to “mimic” opposer’s WALDORF ASTORIA mark, see p. 6 of
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`applicant’s response to opposer’s motion, and (2) he intends
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`consumers to associate his mark with the WALDORF-ASTORIA
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`(v)
`Whether the user of the mark or trade name intended to
`create an association with the famous mark; and
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`(vi)
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`Any actual association between the mark or trade name
`and the famous mark.
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`15 U.S.C. § 1125(c)(2)(B).
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`7
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`Opposition No. 91191947
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`mark. Id. at p. 4. Opposer also argues that applicant
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`believes his mark is a “parody on the Waldorf Astoria,” and
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`has testified that “many consumers” have given him feedback
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`that his mark accomplishes its intended goal of being a
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`parody. See Marcus Dep. 41:19, 41-8-15, 112:1-7.
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`Moreover, opposer contends that it is not aware of any other
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`party with a “legitimate right to use any confusingly
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`similar mark,” see p. 18 of opposer’s motion, that applicant
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`has not produced any such evidence, and that in a search
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`opposer conducted using the Google search engine, “at least
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`the first 100 hits relate solely to [opposer’s] mark and
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`hotels, thus evidencing the unique association of the mark
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`with [opposer].” See p. 18 and Exhibit E of opposer’s
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`motion. Further, opposer argues that its WALDORF-ASTORIA
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`mark is entitled to a presumption of inherent
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`distinctiveness by virtue of the fact that it has been
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`registered on the Principal Register without the requirement
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`of a showing of acquired distinctiveness. Based on the
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`foregoing, opposer maintains that it has shown that
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`applicant’s mark is likely to blur the distinctiveness of
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`opposer’s famous WALDORF-ASTORIA mark.
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`As evidence in support of its motion, opposer has
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`submitted, inter alia,
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`(1) Exhibit E consisting of results from a Google
`search for the phrase “Waldorf Astoria”;
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`8
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`Opposition No. 91191947
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`(2) Exhibit F which consists of Trademark Application
`and Retrieval (“TARR”) copies of opposer’s pleaded
`registrations; and
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`(3) Exhibit G consisting of excerpts of applicant’s
`discovery deposition transcript.
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`In response, applicant argues that the Board should
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`deny opposer’s motion for summary judgment because
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`established law permits applicant’s use of his involved mark
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`as a permissible parody which does not blur opposer’s
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`WALDORF-ASTORIA mark. Further, while applicant concedes
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`that opposer’s WALDORF-ASTORIA mark is famous, he
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`nonetheless contends that it is this very fame that makes
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`his parody successful.9
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`Moreover, while applicant concedes that opposer’s
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`WALDORF-ASTORIA marks are distinctive, famous and strong and
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`that he intended to associate his mark with opposer’s famous
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`marks, he nonetheless argues that his use of the famous
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`WALDORF-ASTORIA mark as a parody does not impair the
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`distinctiveness of the famous mark, since the success of the
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`parody depends upon the continued association of the mark
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`9 Applicant also makes a number of points that appear to go
`primarily to the issue of likelihood of confusion, not dilution,
`namely, (1) applicant uses his mark as a hotel for dogs and there
`is no likelihood that consumers will confuse a dog kennel with a
`famous New York hotel icon, (2) applicant’s pet boarding services
`range from $38-$48 a night while opposer’s hotel charges many
`times more, (3) the accommodations for dogs at applicant’s hotel
`are substantially different from those offered by opposer, and
`(4) there is a clear difference in price, quality, market and
`service between a dog kennel and a world famous, widely known
`hotel of the caliber espoused by opposer.
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`9
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`Opposition No. 91191947
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`with opposer and that a successful parody might actually
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`enhance the famous mark’s distinctiveness by making it an
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`icon. Finally, applicant maintains that his mark mimics,
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`but is not identical to opposer’s WALDORF-ASTORIA marks and,
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`therefore, applicant’s use is not so similar as to be likely
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`to impair the distinctiveness of opposer’s famous WALDORF-
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`ASTORIA marks.
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`Analysis and Decision
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`We initially note that parody is not delineated as a
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`defense to a claim of dilution by blurring where the
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`defendant uses the parody as its own designation of source,
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`i.e., as a trademark or service mark. See Section 43(c)(3)
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`of the Trademark Act, which provides the following
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`exclusions to a claim of dilution:
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`(3) Exclusions.--The following shall not be actionable
`as dilution by blurring or dilution by tarnishment
`under this subsection:
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`(A) Any fair use, including a nominative or
`descriptive fair use, or facilitation of such fair
`use, of a famous mark by another person other than
`as a designation of source for the person's own
`goods or services, including use in connection with-
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`(i) advertising or promotion that permits
`consumers to compare goods or services; or
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`(ii) identifying and parodying, criticizing, or
`commenting upon the famous mark owner or the goods
`or services of the famous mark owner.
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`15 U.S.C. § 1125(c)(3)(emphasis added).
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`Under the statute’s plain language, parodying a famous
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`mark is protected by the fair use exclusion only if the
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`10
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`Opposition No. 91191947
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`parody is not “a designation of source for the person’s own
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`goods or services.” Starbucks Corp. v. Wolfe’s Borough
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`Coffee, Inc., 588 F.3d 97, 92 USPQ2d 1769, 1778 (2d Cir.
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`2009) (“[defendant’s] use of the Charbucks Marks cannot
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`qualify under the parody exception because the Charbucks
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`Marks are used ‘as a designation of source for [defendant’s]
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`own goods’”). Here, applicant is clearly using WOOFDORF-
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`ASTORIA DOG HOTEL & DAY SPA as a source indicator for his
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`identified pet boarding services. Accordingly, the fair use
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`exclusion under Section 43(c)(3) of the Trademark Act is not
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`applicable in this case.
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`We note that applicant relies heavily on Louis Vuitton
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`Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 84
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`USPQ2d 1969 (4th Cir. 2007). In that case, although the
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`Fourth Circuit noted that the fair use exception for
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`parodies under Section 43(c)(3)(A) does not extend to
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`parodies used as trademarks, the Court held that “a
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`defendant’s use of a mark as a parody is relevant to the
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`overall question of whether the defendant’s use is likely to
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`impair the famous mark’s distinctiveness.” Louis Vuitton,
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`84 USPQ2d at 1978. The Court explained:
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`Factor (v) (whether the defendant intended to
`create an association with the famous mark) and
`factor (vi) whether there exists an actual
`association between the defendant’s mark and the
`famous mark) directly invite inquiries into the
`defendant’s intent in using the parody, the
`defendant’s actual use of the parody, and the
`effect that its use has on the famous mark. While
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`11
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`Opposition No. 91191947
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`a parody intentionally creates an association with
`the famous mark in order to be a parody, it also
`intentionally communicates, if it is successful,
`that it is not the famous mark, but rather a
`satire of the famous mark. That the defendant is
`using its mark as a parody is therefore relevant
`in the consideration of these statutory factors.
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`Id. at 1978-79.
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`We further note that no other federal courts have
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`adopted the Fourth Circuit’s interpretation that, even
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`though the statute specifically excludes parody as a fair
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`use defense to a dilution claim, the possible parody effect
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`of the defendant’s mark should be considered in determining
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`whether the plaintiff has proved dilution by blurring. In
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`fact, the Second Circuit, in deciding the Starbucks case,
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`specifically stated that “we need not adopt or reject Louis
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`Vuitton’s parody holding,” because it found that the
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`defendant’s use of its mark was not a parody that would
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`favor defendant in the dilution analysis “even if we were to
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`adopt the Fourth Circuit’s rule.” Starbucks Corp., 92
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`USPQ2d at 1778.
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`Just like the Second Circuit in Starbucks, “we need not
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`adopt or reject Louis Vuitton’s parody holding” at this
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`point. Instead, we find that there is a genuine dispute as
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`to whether applicant’s mark would be viewed by the consuming
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`public as a parody, as applicant asserts, or as an attempt
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`by applicant to achieve his own branding goals by conveying
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`that his services provide a level of luxury. We also find
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`12
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`Opposition No. 91191947
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`that there is a genuine dispute as to the similarity of the
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`services, and that this question affects whether applicant’s
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`mark would be viewed as a parody. See Harley Davidson, Inc.
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`v. Grottanelli, 1164 F.3d 806, 813 (2d Cir. 1999)(“[P]arodic
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`use is sharply limited” in circumstances where “an alleged
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`parody of a competitor’s mark [is used] to sell a competing
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`product”); Starbucks Corp. v. Wolfe’s Borough Coffee Inc.,
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`supra.
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`In view thereof, opposer’s motion for summary judgment
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`on its asserted claim of dilution by blurring is denied.
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`In summary, both opposer’s and applicant’s motions for
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`summary judgment are denied.10
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`Trial Schedule
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`Proceedings herein are resumed. Discovery is closed.
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`Trial dates, beginning with the deadline for opposer’s
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`pretrial disclosures, 11 are reset as follows:
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`10 The parties should note that the evidence submitted in
`connection with a motion for summary judgment or opposition
`thereto is of record only for consideration of that motion. Any
`such evidence to be considered at final hearing must be properly
`introduced in evidence during the appropriate trial period. See
`Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464
`(TTAB 1993); and Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983).
`Additionally, the issues for trial are not limited to those we
`have identified in explaining the denial of the parties’
`respective motions for summary judgment. Rather, the issues for
`trial are framed by the pleadings and any issues not pleaded but
`which may yet be tried by express or implied consent of the
`parties.
`11 We note that although both applicant and opposer filed their
`respective motions for summary judgment following the deadline
`for opposer’s pretrial disclosures, we have nonetheless reset
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`13
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`Opposition No. 91191947
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`Plaintiff's Pretrial
`Disclosures
`Plaintiff's 30-day Trial Period
`Ends
`Defendant's Pretrial
`Disclosures
`Defendant's 30-day Trial Period
`Ends
`Plaintiff's Rebuttal
`Disclosures
`Plaintiff's 15-day Rebuttal
`Period Ends
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`5/12/2012
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`6/26/2012
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`7/11/2012
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`8/25/2012
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`9/9/2012
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`10/9/2012
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`In each instance, a copy of the transcript of
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`testimony, together with copies of documentary exhibits,
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`must be served on the adverse party within thirty days after
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`completion of the taking of testimony. Trademark Rule
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`2.125.
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`Briefs shall be filed in accordance with Trademark
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`Rules 2.128(a) and (b). An oral hearing will be set only
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`upon request filed as provided by Trademark Rule 2.129.
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`this deadline to the extent that (1) opposer has yet to serve its
`pretrial disclosures or (2) our decision herein affects opposer’s
`pretrial disclosures that may have already been served.
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`14