Rolex Watch U.S.A. Inc. v. PWT A/S

• Docket Number: 91231624
• Decision Date: 29 November 2021
• Parties: Rolex Watch U.S.A., Inc. v. PWT A/S
• Court: Trademark Trial and Appeal Board

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Rolex Watch U.S.A., Inc. v. PWT A/S

No. 91231624

United States Patent and Trademark Office, Trademark Trial and Appeal Board

November 29, 2021

This Opinion is Not a Precedent of the TTAB

Beth M. Frenchman and Adam Sgro of Gibney, Anthony & Flaherty LLP, for Rolex Watch U.S.A., Inc.

Marsha G. Gentner and Eric T. Fingerhut of Dykema Gossett PLLC, for PWT A/S.

Before Bergsman, Wellington and Pologeorgis, Administrative Trademark Judges.

OPINION

Bergsman, Administrative Trademark Judge

PWT A/S ("Applicant") seeks registration on the Principal Register of a crown design reproduced below:^[1]

(Image Omitted)

The mark consists of a crown design and Applicant does not claim color as a feature of the mark.

The application includes the following description of goods and services:

Toilet soaps, perfumery, namely, eau de toilette; essential oils; cosmetics; perfumed toilet preparations, namely shampoos, facial cleanser; preparations for cleaning, care and beautification of the skin, scalp and hair; deodorizing preparations for personal use, namely, deodorants for body care, in International Class 3;

Spectacles; sunglasses; frames for glasses; lenses for eyeglasses; eyeglasses cases; bags, cases and sleeves for electronic apparatus and instruments, namely, for computers laptops, tablets, telephones, smartphones, media players and cameras, in International Class 9;

Leather, trunks and travelling bags; all-purposes carrying bags; handbags; travelling bags, traveling sets made of leather, garment bags for travel, vanity cases not fitted, backpacks, sports bags, beach bag, shopping bags, shoulder bags, school bags, canvas bags for travelling, attache cases, boxes of leather or leather board, briefcases, bags of leather for packaging, wallets, purses, key wallets and key rings of leather not included in other classes; umbrellas, parasols, walking-sticks, walking stick seats, in International Class 18;

Clothing, namely, rainwear, ski wear, protective clothing, namely, raincoats, fur coats, coats, jackets, clothing jackets, sleeveless jackets, suits, shirts, skirts, dresses, blouses, bathrobes, dressing gowns, cardigans, sweaters, gloves, gym suits, imitation leather trousers, imitation leather skirts, imitation leather jackets, jerseys, kilts, knickerbockers, leather trousers, leather skirts, leather jackets, overalls, overcoats, parkas, plus fours, pockets for clothing, pullovers, pajamas, scarves, shawls, stoles, sashes for wear, shorts, singlets, sports jerseys, sports shirts, tailor-made suits, tops, trousers, t-shirts,

sweatshirts, tunics, vests, waistcoats, rompers, ties, clothing belts, underwear, anti-perspiration underwear, girdles, slips, camisoles, half-slips, perspiration absorbing underwear, petticoats, underpants, undershirts, underskirts, corsets, body stockings, long underwear, socks, leotards, stockings, tights, swimming suits; footwear; headwear, namely, hats, caps, kerchiefs, earmuffs, headbands, in International Class 25; and

Presentation of goods on communication media for retail purposes in the form of advertising; assistance in management of business activities; marketing services; wholesale and retail store services, including via the Internet, featuring toilet soaps, perfumery, essential oils, cosmetics, perfumed toilet preparations, preparations for cleaning, care and beatification of the skin, scalp and hair, deodorizing preparations for personal use, spectacles, sunglasses, frames for glasses, lenses for eyeglasses, glasses cases, bags, cases and sleeves for electronic apparatus and instruments, including for computers, laptops, tablets, telephones, smartphones, media players and cameras, leather and goods made thereof, trunks and travelling bags, bags and handbags, travelling bags, travelling sets, garment bags for travel, vanity cases, backpacks, sports bags, beach bags, shopping bags, shoulder bags, school bags, canvas travelling sack, attache cases, boxes of leather or leather board, briefcases, bags of leather for packaging, wallets, purses, key purses, clothing, namely, casual clothing, athletic clothing, exercise clothing, rainwear, golf wear, ski wear, protective clothing, namely, raincoats, fur coats, coats, jackets, clothing jackets, sleeveless jackets, suits, shirts, skirts, dresses, blouses, bathrobes, dressing gowns, cardigans, sweaters, formal wear for men, gloves, gym suits, imitation leather trousers, imitation leather skirts, imitation leather jackets, jerseys, kilts, knickerbockers, leather trousers, leather skirts, leather jackets, overalls, overcoats, parkas, plus fours, pockets for garments, pullovers, pajamas, scarves, shawls, stoles, sashes for wear, shorts, singlets, sports jerseys, sports shirts, tailor-made suits, tops, trousers, t-shirts, sweatshirts, tunics, vests, waistcoats, rompers, ties, clothing belts, underwear, anti-perspiration underwear, girdles, slips, camisoles, half-slips, perspiration absorbing underwear, petticoats, underpants, undershirts,

underskirts, corsets, body stockings, long underwear, socks, leotards, stockings, tights, swimming suits, footwear, headwear, namely, hats, caps, kerchiefs, earmuffs, headbands, in International Class 35.

Rolex Watch U.S.A., Inc. ("Opposer") filed a Notice of Opposition against the registration of Applicant's mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) as to all classes.^[2] Opposer claims ownership of the registered mark described as a crown design with five points for "time pieces of all kinds and parts thereof," in International Class 14, ^[3] and "retail store services featuring watches, timepieces, clocks and jewelry," in International Class 35.^[4] We reproduce below the registered crown design:

(Image Omitted)

Applicant, in its Answer, denied the salient allegations of the Notice of Opposition. Applicant also alleged, "Opposer is barred by the doctrine of laches, acquiescence, legal and equitable estoppel from bringing and maintaining the present cancellation [sic] claims."^[5]

I. Preliminary Issue

A. Applicant's motion for leave to amend its Answer to add a counterclaim for partial cancellation of Registration No. 0657756.

On March 18, 2019, Applicant filed a motion for leave to amend its Answer to assert a counterclaim for partial cancellation under Section 18 of the Trademark Act, 15 U.S.C. § 1068. Specifically, Applicant seeks to restrict Opposer's description of goods from "timepieces of all kinds and part thereof" to "timepieces of all kinds and parts thereof sold and/or offered for sale in jewelry stores."^[6]

The Board denied Applicant's motion for leave to amend because "Applicant has failed to assert any allegations demonstrating how the proposed restriction would serve to avoid a likelihood of confusion."^[7] The Board explained that such allegations are necessary to provide Opposer with fair notice of the restriction sought and properly to frame the issue for trial.^[8] The Board allowed Applicant time to serve a second amended answer and counterclaim for partial cancellation if Applicant has a basis for doing so.^[9]

On September 24, 2019, Applicant filed a "Second Amended Answer to Notice of Opposition and Counterclaim for Partial Cancellation under Trademark Act, §18."^[10]On October 23, 2019, Opposer moved to dismiss Applicant's second amended answer and counterclaim.^[11] The Board denied Applicant's second motion for leave to file an amended answer and counterclaim because, inter alia, the proposed counterclaim did not include a corresponding restriction to Applicant's description of goods and services and, therefore, the parties could offer their goods and services in overlapping channels of trade.^[12]

Applicant, in its brief, argues that the Board should not have denied its motion for leave to file a counterclaim under Section 18 of the Trademark Act.^[13] In other words, Applicant seeks reconsideration of the Board's decision more than one year after the Board denied Applicant's motion for leave to amend its answer to add a counterclaim. Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Manufacturing Co., 55 U.S.P.Q.2d 1848, 1854 (TTAB 2000) (applicant's "reformation" of Board's earlier order treated as a motion for reconsideration because it requests a modification of the previous order - "Applicant's attorney's mis-captioning of the motion for reconsideration as a motion for 'reformation' is clearly an attempt to avoid the obvious requirements of the correct rule, and is another indication of bad faith.").

Any request for reconsideration or modification of an order or decision issued on a motion must be filed within one month from the date thereof. A brief in response must be filed within twenty days from the date of the service of the request.

Trademark Rule 2.127(b), 37 C.F.R. § 2.127(b). See also U.S. Olympic Comm. v. Tempting Brands Netherlands B.V., 2021 U.S.P.Q.2d 164, at *6 (TTAB 2021) (applicant's request in its trial brief that the Board reconsider previously issued interlocutory orders denied as untimely).

We decline to reconsider the order or take any other action regarding Applicant's motion for leave to add a counterclaim for partial cancellation because Applicant is seeking an untimely review of the Board's previous order. In reaching this decision, we note that were we to grant Applicant's request at this late date, we would have to reopen trial and briefing because Opposer did not have notice that it would have to defend against the counterclaim.

II. The Record

The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of Applicant's application. The parties introduced the testimony and evidence listed below:

A. Opposer's Testimony and Evidence.

1. Testimony declaration of...