Rolex Watch U.s.a., Inc. v. Afp Imaging Corporation

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# United States Court of Appeals for the Federal Circuit

ROLEX WATCH U.S.A., INC.,
Appellant,
V.
AFP IMAGING CORPORATION,
Appellee.

2012-1260
(Opposition No. 91188993)

Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board.

ORDER

Before PROST, MAYER and REYNA, Circuit Judges.
PROST, Circuit Judge.

Rolex Watch U.S.A., Inc. ("Rolex") responds to the
court's order directing it to show cause as to why its
appeal should not be dismissed as moot.

As Rolex notes, the court's previous order incorrectly
stated that Rolex had withdrawn its opposition to AFP
Imaging Corporation's ("AFP") trademark application.
Instead, AFP withdrew the application that Rolex op-
posed. The result is the same. The appeal is moot.

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Rolex argues that the Trademark Trial and Appeal
Board ("Board") no longer had jurisdiction to act on AFP's
withdrawal. No action by the Board is necessary. By
withdrawing its application, AFP has removed any case or
controversy for this court to resolve.

"If an event occurs while a case is pending on appeal
that makes it impossible for the court to grant 'any effec-
tual relief whatever' to a prevailing party, the appeal
must be dismissed as moot." See Nasatka v. Delta Scien-
tific Corp., 58 F.3d 1578 (Fed. Cir. 1995) (citation omit-
ted). In hearing this appeal, the court could affirm,
reverse, or vacate the Board's dismissal of Rolex's opposi-
tion. Any outcome would be meaningless legally, because
the opposed registration has been withdrawn. "The test
for mootness ... is whether the relief sought would, if
granted, make a difference to the legal interests of the
parties (as distinct from their psyches, which might
remain deeply engaged with the merits of the litigation)."
Id. (quotation omitted).

Additionally, Rolex's argument that the case involves
an important issue with respect to the evaluation of
survey evidence submitted to prove likely dilution of a
famous and unique mark under the Trademark Dilution
Revision Act is unavailing. It is well settled that a party's
desire to press a particular legal position in order to
benefit others is not enough to prevent a case from being
moot when there is no continuing case or controversy
between the parties before the court. See Alvarez v.
Smith, 130 S.Ct. 576, 580-81 (2009) (dismissing abstract
legal dispute as moot where law was no more likely to
impact plaintiffs in the future than any other citizens).

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Accordingly,
IT IS ORDERED THAT:

(1) The appeal is dismissed.

(2) Each party shall bear its own costs.

FOR THE COURT

AUG 14 2012

Date

/s/ Jan Horbaly
Jan Horbaly
Clerk

cc: Gary D. Krugman, Esq.
Norman H. Zivin, Esq.

$25

FILED
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
AUG 14 2012
JAN HORBALY
CLERK