M.Z. Berger & Co., Inc. v. Swatch Ag ( 2014 )

Case: 14-1219 Document: 18 Page: 1 Filed: 03/19/2014
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
M.Z. BERGER & CO., INC.,
Appellant,
v.
SWATCH AG (SWATCH SA) (SWATCH LTD.),
Appellee.
______________________
2014-1219
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Opposition
No. 91187092.
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M.Z. BERGER & CO., INC.,
Appellee,
v.
SWATCH AG (SWATCH SA) (SWATCH LTD.),
Appellant.
______________________
2014-1220
______________________
Case: 14-1219 Document: 18 Page: 2 Filed: 03/19/2014
2 M.Z. BERGER & CO., INC. v. SWATCH AG
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Opposition
No. 91187092.
______________________
ON MOTION
______________________
Before NEWMAN, MOORE and CHEN, Circuit Judges.
MOORE, Circuit Judge.
ORDER
M.Z. Berger & Co., Inc. (“Berger”) moves to dismiss
Swatch AG’s (“Swatch”) cross-appeal. Swatch opposes.
This appeal arises out of Berger’s application to regis-
ter the mark IWATCH under Lanham Act Section 1(b)
based on intent to use. In response, Swatch filed a notice
of opposition praying that Berger’s application “be re-
fused, that no registration be issued thereon to Applicant
and that this Opposition be sustained in favor of Oppos-
er.” In support, Swatch raised various grounds for opposi-
tion, including: (1) likelihood of confusion and (2) lack of
bona fide intent to use the mark in commerce. The
Trademark Trial and Appeal Board (“Board”) sustained
the opposition based on lack of bona fide intent to use, but
dismissed the opposition as to likelihood of confusion.
Berger filed an appeal, and Swatch filed a cross-appeal,
which is the subject of this motion to dismiss.
Generally, a party cannot appeal from a favorable de-
cision. See Elec. Fittings Corp. v. Thomas & Betts Co.,
307 U.S. 241, 242 (1939). That general rule is applicable
to trademark opposition proceedings. See 15 U.S.C.
§ 1071(a)(1) (granting a right of appeal only to parties
“dissatisfied with the decision” of the Board); Alltrade,
Inc. v. Uniweld Prods., Inc., 946 F.2d 622, 626 (9th Cir.
1991); Maremont Corp. v. Air Lift Co., 463 F.2d 1114,
Case: 14-1219 Document: 18 Page: 3 Filed: 03/19/2014
M.Z. BERGER & CO., INC. v. SWATCH AG 3
1116 (C.C.P.A. 1972). Here, the Board sustained Swatch’s
opposition and refused registration of the IWATCH mark,
which is exactly the relief that Swatch requested from the
Board.
Swatch contends that its cross-appeal is appropriate
because it is seeking reversal of the Board’s ruling on
likelihood of confusion. In fact, however, the “appellee,
may without taking a cross-appeal, urge in support of a
decree any matter appearing in the record, although his
argument may involve an attack upon the reasoning of
the lower [tribunal] or an insistence upon matter over-
looked or ignored by it.” United States v. Am. Ry. Express
Co., 265 U.S. 425, 435 (1924); Maremont Corp., 463 F.2d
at 1116 (“Appellees in trademark oppositions are entitled
to reargue issues which they raised below but on which
either they lost or the board did not rely.”). Swatch may
thus make its arguments regarding likelihood of confusion
in its response brief as an appellee. See, e.g., Datascope
Corp. v. SMEC, Inc., 879 F.2d 820, 822 n.1 (Fed. Cir.
1989) (an appellee may assert alternative grounds for
affirmance supported by the record).
Accordingly,
IT IS ORDERED THAT:
(1) The motion is granted. 2014-1220 is dismissed.
The revised official caption in 2014-1219 is reflected
above.
(2) Each side shall bear its own costs in 2014-1220.
FOR THE COURT
/s/ Daniel E. O’Toole
Daniel E. O’Toole
Clerk of Court
Case: 14-1219 Document: 18 Page: 4 Filed: 03/19/2014
4 M.Z. BERGER & CO., INC. v. SWATCH AG
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ISSUED AS A MANDATE (As To 14-1220 Only):
March 19, 2014