• Why Super Bakery Won This Trademark Case
  • January 20, 2014
  • Law Firm: Meyer Unkovic Scott LLP - Pittsburgh Office
  • A recent decision by the United States Court of Appeals is worth noting for reaffirming that the Trademark Trial and Appeal Board has the right to cancel a trademark when a party refuses to obey its discovery orders. The ruling also offers the definitive interpretation concerning the suspension of proceedings when a summary judgment is pending before the Trademark Trial and Appeal Board.

    Five years ago, following the rejection of Pittsburgh-based Super Bakery's "GOODY MAN" trademark application, Super Bakery started proceedings to cancel another company's "G the Goodyman's" mark.

    As part of the proceedings, Super Bakery served discovery requests, which the owner of "G the Goodyman" kept ignoring. Consequently, Super Bakery filed for a default judgment, requesting that the "G the Goodyman" mark be canceled. In response, the owner of "G the Goodyman" filed for summary judgment to dismiss the cancellation proceeding.

    The board agreed with Super Bakery and the "G the Goodyman" trademark was canceled. The appeals court reversed the initial cancellation and asked the board to reconsider. The board again ordered cancellation and another appeal followed. This time, the appeals court let the board's ruling stand, even as it rejected some of the legal arguments that Super Bakery made.

    The appeals court affirmed that the board did not abuse its discretion to cancel the "G the Goodyman" trademark, especially in light of the opposing party's failure to comply with the repeated discovery requests and orders.

    The appeals court also ruled that all proceedings not germane to a summary judgment motion are suspended pending the outcome of the summary judgment motion. Note that I was part of the team that successfully argued the case for Super Bakery on the second appeal.

    Read more: http://www.post-gazette.com/business/businessnews/2012/04/02/Business-Workshop-Why-Super-Bakery-won-this-trademark-case/stories/201204020288#ixzz2qknGtcSp