By the Trademark Trial and Appeal Board:

Proceedings have been suspended since March 28, 2016 pending final determination of civil action involving the parties, No. 1:14-cv-05213-NRB, in the United States District for the Southern District of New York (the “District Court”). 9 TTABVUE.

On October 4, 2019, Applicant submitted a certified copy of a corrected final judgment that the District Court issued on September 20, 2017 ordering the Director of the United States Patent and Trademark Office to cancel U.S. Registration Nos. 3037551 and 4124440. 28 TTABVUE 5-6. Additionally, on October 4, 2019, the parties filed a stipulated motion to withdraw the opposition and counterclaims against Registration Nos. 3040029 and 3930709 with prejudice. 29 TTABVUE.

In view of the parties’ stipulation, the opposition and counterclaims against Opposer’s Registration Nos. 3040029 and 3930709 are dismissed with prejudice.

Opposition No. 91225430

With respect to Applicant’s counterclaims against Opposer’s Registration Nos. 3037551 and 4124440, the deadline to appeal the District Court’s corrected final judgment has passed. Section 37 of the Trademark Act, 15 U.S.C. § 1119, provides:

In any action involving a registered mark the court may determine the right to registration, order the cancellation of registrations, in whole or in part, restore cancelled registrations, and otherwise rectify the register with respect to the registrations of any party to the action. Decrees and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby.

While the Board’s jurisdiction is concurrent with that of the district courts of the United States, “where a court of competent jurisdiction ‘i[n] any action involving a registered mark’ determines the respective rights of the parties before it to registration under the Trademark Act, that determination is binding upon the Commissioner pursuant to Section 37 of the Trademark Act.” In re Wells Fargo & Co., 231 USPQ 95, 104 (TTAB 1986) (citing Avon Shoe Co., v. David Crystal, Inc., 279

F.2d 607, 125 USPQ 607, 614 (2d Cir. 1960)).

Accordingly, pursuant to the corrected final order of the District Court and in accordance with Trademark Act Section 37, the petition to cancel Registration Nos. 3037551 and 4124440 on grounds that the marks are generic is granted, and Registration Nos. 3037551 and 4124440 will be cancelled in due course.

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