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             NOTE: This order is nonprecedential.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.

      ------------------------------------------------------------------

                  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



 s30


 ISSUED AS A MANDATE (As To 14-1220 Only):
 March 19, 2014
