Schering-Plough Animal Health Corporationv.Aqua Gen AS

Trademark Trial and Appeal Board

Mar 17, 2009

No. 91176641 (T.T.A.B. Mar. 17, 2009)

1

Lykos Mailed: March 17, 2009

Opposition No. 91176641

SCHERING-PLOUGH ANIMAL HEALTH
CORPORATION

v.

AQUA GEN AS

Before Quinn, Walters, and Taylor, Administrative Trademark
Judges.

By the Board:

This case now comes before the Board for consideration
of applicant’s motion, filed January 5, 2009, to partially
dismiss the opposition. The motion is contested.
By way of relevant background, on April 6, 2007,
opposer filed a notice of opposition against two
applications owned by applicant -– Application Serial Nos.
75829322 and 75829323. Shortly after institution of this
opposition, proceedings were suspended on May 14, 2007 to
allow the parties time to engage in settlement discussions.
Thereafter, on December 9, 2008, one of the involved
applications, Application Serial No. 75829323, inadvertently
registered. This application was also the subject of
Opposition No. 91175866 in which a third party, as opposer
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION
IS A PRECEDENT
OF THE T.T.A.B.
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in that case, withdrew its opposition on September 30, 2008.
The registration inadvertently issued as a result of the
dismissal in that proceeding.
Applicant has moved for partial dismissal of this
opposition proceeding as to the inadvertently registered
application. For the reasons set forth below, applicant’s
motion is denied.
In this case, opposer timely filed a proper notice of
opposition against Application Serial No. 75829323, and the
opposition has not been dismissed by the Board. A
registration will be deemed to have been issued
inadvertently if it issues despite a notice of opposition or
a request for extension of time to oppose being timely and
properly filed. See Quality S. Manufacturing Inc. v. Tork
Lift Central Welding of Kent, Inc., 60 USPQ2d 1703 (Comm’r
2000). Thus, the registration was inadvertently issued.
The fact that the application was inadvertently forwarded
for issuance of a registration during the course of this
proceeding cannot, under any reasonable view, provide
applicant with a ground for seeking dismissal. In such
situations, the proper action by a party is to inform the
Board promptly, by phone or in writing, of the inadvertent
issuance of the registration so that the Board may request
the appropriate action by the Director without requesting
dismissal of the case. To rectify this matter, the Director
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has cancelled the registration and restored the application
to pending status.
By filing an untenable motion to dismiss when the
application was the subject of a pending opposition and
therefore simply inadvertently matured into a registration,
counsel for applicant unnecessarily delayed this proceeding,
and increased the litigation costs to both parties.
Further, the Board’s resources were wasted by having to rule
on this unnecessary motion. Counsel for applicant is
reminded of his obligations pursuant to Fed. R. Civ. P. 11,
that when filing a motion, he is certifying that all claims
and other legal contentions asserted therein are warranted
by existing law or by a nonfrivilous argument for the
extension, modification, or reversal of existing law, and
are not made for purposes of harassment or delay.
The filing of a motion to dismiss in this instance
represents a misunderstanding of Board practice and
procedure. Under the circumstances presented herein, and to
more closely manage the prosecution and defense of this
proceeding, counsel for applicant and his co-counsel must
first secure permission from the appropriate interlocutory
attorney by telephone before filing any unconsented or
unstipulated motion in this matter. See generally TBMP
Section 527.03 (2d ed. rev. 2004) and authorities cited
therein; see also Carrini Inc. v. Carla Carini S.R.L., 57
4
USPQ2d 1067, 1071 (TTAB 2000) (“Board possesses the
inherent authority to control the disposition of cases on
its docket”); International Finance Corp. v. Bravo Co., 64
USPQ2d 1597, 1604 n.23 (TTAB 2002) (Board prohibited opposer
from filing any further motions to compel without prior
Board permission).
Proceedings herein are resumed. Applicant is allowed
until THIRTY (30) days from the mailing date of this order
to file an answer to the notice of opposition. The close of
discovery and trial dates, are reset as follows:
THE PERIOD FOR DISCOVERY TO CLOSE: 8/1/09
30-day testimony period for party in
position of plaintiff to close: 10/30/09

30-day testimony period for party in
position of defendant to close: 12/29/09

15-day rebuttal testimony period for
party in position of plaintiff
to close: 2/12/10

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule
2.l25.
Briefs shall be filed in accordance with Trademark Rule
2.128(a) and (b).
An oral hearing will be set only upon request filed as
provided by Trademark Rule 2.l29.
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NEWS FROM THE TTAB:
The USPTO published a notice of final rulemaking in the
Federal Register on August 1, 2007, at 72 F.R. 42242. By
this notice, various rules governing Trademark Trial and
Appeal Board inter partes proceedings are amended. Certain
amendments have an effective date of August 31, 2007, while
most have an effective date of November 1, 2007. For
further information, the parties are referred to a reprint
of the final rule and a chart summarizing the affected
rules, their changes, and effective dates, both viewable on
the USPTO website via these web addresses:
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_FinalRuleChart.pdf

By one rule change effective August 31, 2007, the Board's
standard protective order is made applicable to all TTAB
inter partes cases, whether already pending or commenced on
or after that date. However, as explained in the final rule
and chart, this change will not affect any case in which any
protective order has already been approved or imposed by the
Board. Further, as explained in the final rule, parties are
free to agree to a substitute protective order or to
supplement or amend the standard order even after August 31,
2007, subject to Board approval. The standard protective
order can be viewed using the following web address:
http://www.uspto.gov/web/offices/dcom/ttab/tbmp/stndagmnt.htm