In Re Pastificio Lucio Garofalo S.p.a., Appellant, 101 F.3d 716 (Fed. Cir. 1996)

UNOPPOSED MOTION TO REMAND TO U.S. PATENT AND TRADEMARK OFFICE

This is an appeal seeking reversal of a Judgment of the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, dated July 24, 1996, refusing registration of the trademark SANTA LUCIA to appellant, as sought in appellant's Application Serial No. 74/393,247. A timely Notice of Appeal was filed on September 23, 1996.

The present Motion is unopposed. Undersigned counsel is authorized to state that it is made with the knowledge--and express lack of opposition--of the Solicitor of the U.S. Patent and Trademark Office.

This appeal is taken from a refusal to register based on a prior registration by a third party, Rema Foods, Inc., registered on October 5, 1993, under Reg. No. 1,798,190. After the Decision of the Trademark Trial and Appeal Board, which held that there was likelihood of confusion between Rema's registration of SANTA LUCIA for oils and applicant's mark SANTA LUCIA for cereal products, Pastificio filed a Petition to Cancel, followed by an Amended Petition for Cancellation before the TTAB. A copy of that Amended Petition in Cancellation No. 25,398 is annexed hereto as Exhibit A.

In its Amended Petition, appellant alleged a date of first use in commerce in the United States prior to the date of first use alleged by registrant Rema in its Reg. No. 1,798,190. The cancellation proceeding, Cancellation No. 25,398, was commenced on August 23, 1996, subsequent to the Decision of the Trademark Trial and Appeal Board holding that the mark of appellant was not registrable to it on the basis of the Rema registration.

As will be apparent, if appellant here is successful in its now pending cancellation proceeding, and as a result of such proceeding appellant is held by the Trademark Trial and Appeal Board to have rights superior to those of Rema Foods, that Reg. No. 1,798,190 will be cancelled. Upon cancellation, that registration will no longer be citable against appellant's application for registration, and, in all likelihood, appellant's application will be approved. Upon such an occurrence, the present appeal to this U.S. Court of Appeals for the Federal Circuit will have been rendered unnecessary. Appellant respectfully asserts that it believes it has such superior rights in its mark and, therefore, that its cancellation petition will be granted and that its appeal to this Court, maintained to preserve its rights, will prove to be unnecessary.

WHEREBY, appellant Pastificio Lucio Garofalo, S.p.A. respectfully moves this Court for entry of an Order remanding said Application Serial No. 74/393,247 to the U.S. Patent and Trademark Office for entry of an Order suspending the application pending disposition of Cancellation No. 25,398.

Respectfully submitted,

PASTIFICIO LUCIO GAROFALO, S.p.A.,

Dated: November 13th, 1996

By: /s/ James A. Poulos,

James A. Poulos, III

Attorney for Appellant

WATSON COLE STEVENS DAVIS, P.L.L.C.

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