The Old Fashion Candy Co., Inc.v.FUNraise, Inc.Download PDFTrademark Trial and Appeal BoardJul 31, 201991245989 (T.T.A.B. Jul. 31, 2019) Copy Citation mbm July 31, 2019 Opposition No. 91244190 (Parent) Opposition No. 91245989 Opposition No. 91245990 The Old Fashion Candy Co., Inc. v. FUNraise, Inc. Before Kuhlke, Mermelstein, and Coggins, Administrative Trademark Judges. By the Board: This proceeding now comes before the Board for consideration of the motion of The Old Fashion Candy Co., Inc. (“Opposer”) in Opposition No. 91244190 for summary judgment on its pleaded defense of claim preclusion based on the Board’s entry of judgment against FUNraise, Inc. (“Applicant”) in a prior proceeding, Cancellation No. 92067242 (the “Prior Proceeding”). The motion is fully briefed.1 1 Applicant’s change of correspondence address, filed March 29, 2019, in Opposition No. 91244190, is noted. Board records have been updated accordingly. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 General Contact Number: 571-272-8500 General Email: TTABInfo@uspto.gov THIS ORDER IS NOT A PRECEDENT OF THE TTAB Opposition Nos. 91244190, 91245989, and 91245990 2 I. Background On November 25, 2015, Applicant filed Application Serial No. 86832353, for the mark FUNRAISE, in standard characters.2 The application included the following goods and services: • International Class 9: Computer software for the user to maintain a record of the user’s charitable gifts; computer software for use in customer relationship management (CRM); computer network interface devices; Downloadable mobile applications for access to charitable fundraising, namely maintenance of the user’s charitable gifts records; • International Class 35: Providing an online portal for registration for fundraising events; Customer relationship management; Providing an interactive website for individuals and organizations featuring information about organizing and conducting charity auctions for charitable fundraising purposes; • International Class 38: Educational text messaging services for transmission of educational content via SMS; and • International Class 42: Providing temporary use of non-downloadable computer software for tracking charitable donor transactions; Application service provider featuring application programming interface (API) software for access to charitable fundraising, namely maintenance of the user’s charitable gifts records; Data automation and collection service using proprietary software to evaluate, analyze and collect service data; Providing a website that gives users the ability to create customized web pages featuring user-defined profiles. Application Serial No. 86832353 was refused registration, in part, based on a likelihood of confusion with Opposer’s Registration No. 3975142 for the mark FUN RAISING, in standard characters, for “candy” in International Class 30 and “charitable fund-raising” in International Class 36.3 12 TTABVUE 28-35. In an April 2 Filed November 25, 2015, alleging May 1, 2015 as the date of first use and August 30, 2015 as the date of first use in commerce. 3 Issued June 7, 2011, alleging January 4, 2011 as both the date of first use and the date of first use in commerce. Opposition Nos. 91244190, 91245989, and 91245990 3 26, 2017 Office Action, the Examining Attorney issued a final partial refusal of registration with respect to certain goods and services in each of the remaining classes in the application.4 Id. On October 26, 2017, Applicant filed a petition for partial cancellation of Opposer’s Registration No. 3975142 in the Prior Proceeding. Applicant sought to restrict only Opposer’s recitation of services in International Class 36 under Section 18 of the Trademark Act, 15 U.S.C. § 1068, to avoid a finding of likelihood of confusion with Applicant’s refused Application Serial No. 86832353.5 On December 12, 2017, in lieu of filing an answer to the petition to cancel, Opposer filed a motion to dismiss for failure to state a claim pursuant to Fed. R. Civ. P. 12(b)(6). Applicant failed to file a response to the motion to dismiss and on January 12, 2018, the Board granted the motion to dismiss as conceded and denied the petition to cancel with prejudice. On April 19, 2018, Applicant filed a request to divide its Application Serial No. 86832353. 12 TTABVUE 41-43. The request to divide was granted and the child application was assigned Serial No. 86983882 on May 4, 2018. Id. at 44-46. The child application contains only the goods and services not subject to the partial refusal from the parent application, namely: • International Class 9: Computer software for the user in customer relationship management (CRM); computer network interface devices; 4 Class 38 was deleted by Applicant prior to the April 26, 2017 Office Action. 5 Applicant explains that it selected “abandonment” as the ground for cancellation on the ESTTA cover sheet, because ESTTA “does not provide [an] option for partial cancellation” and “Applicant selected the closest ground.” 12 TTABVUE 6. Opposition Nos. 91244190, 91245989, and 91245990 4 • International Class 35: Customer relationship management; and • International Class 42: Data automation and collection service using proprietary software to evaluate, analyze and collect service data. On October 17, 2018, Opposer filed a notice of opposition opposing registration of the child application on the sole ground of likelihood of confusion pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). In support of its standing and claim, Opposer pleaded ownership of Registration No. 3975142. Opposer also pleaded ownership of Registration No. 1742446, for the mark FUN RAISING MONEY, in typeset form,6 for “candy” in International Class 30.7 On November 26, 2018, Applicant filed an answer and counterclaims to cancel Registration No. 3975142 as to International Class 36 only. As grounds for cancellation, Applicant asserted non-use or in the alternative, a restriction under Section 18 of the Trademark Act, 15 U.S.C. § 1068. On January 2, 2019, Opposer filed an answer to the counterclaims, denying the salient allegations therein and asserting numerous affirmative defenses, including claim preclusion based on the Board’s decision in the Prior Proceeding. On February 27, 2019, Opposer filed a motion for summary judgment asserting that Applicant’s counterclaims are barred under the doctrine of claim preclusion. 6 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. A typed or typeset mark is the legal equivalent of a standard character mark. TMEP § 807.03(i) (October 2018). 7 Registration No. 1742446, issued December 22, 1992, alleging August 1, 1991 as both the date of first use and the date of first use in commerce. Opposition Nos. 91244190, 91245989, and 91245990 5 Although the deadline for serving initial disclosures has not yet passed, the motion for summary judgment is nevertheless timely inasmuch as it is based upon claim preclusion. See Trademark Rule 2.127(e)(1). II. Motion for Summary Judgment in Opposition No. 91244190 Opposer contends that Applicant’s counterclaims are barred by the doctrine of claim preclusion based on the Board’s determination in the Prior Proceeding. In support of its motion, Opposer submitted the following: Applicant’s petition for partial cancellation in the Prior Proceeding; a copy of Opposer’s motion to dismiss in the Prior Proceeding; and a copy of the Board’s January 12, 2018 order denying the petition for partial cancellation with prejudice in the Prior Proceeding. In response, Applicant submitted the following: a copy of the April 26, 2017 partial final refusal of Applicant’s parent application; Applicant’s request for reconsideration of the final partial refusal of its parent application; a screenshot of the ESTTA filing page; a copy of Applicant’s April 19, 2018 request to divide its parent application; and a copy of the May 4, 2018 notice of the completion of Applicant’s divisional request. A. Summary Judgment Standard Summary judgment is appropriate where the movant shows that there is no genuine dispute as to any material fact and that it is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). A party asserting that a fact cannot be or is genuinely disputed must support its assertion by either (1) citing to particular parts of materials in the record, or (2) showing that the materials cited do not establish the absence or Opposition Nos. 91244190, 91245989, and 91245990 6 presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact. Fed. R. Civ. P. 56(c). A movant for summary judgment carries the burden of proof in regard to its motion. See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). In deciding the motion, the function of the Board is not to try issues of fact, but to determine if there are any genuine disputes of material fact to be tried. See TBMP § 528.01 and cases cited therein. See, e.g., Chutter, Inc. v. Great Concepts, LLC, 119 USPQ2d 1865, 1867 (TTAB 2016) (citing Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993) and Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1542 (Fed. Cir. 1992)). When the moving party has supported its motion with sufficient evidence that, if unopposed, indicates there is no genuine dispute of material fact, the burden then shifts to the non-moving party to demonstrate the existence of a genuine dispute of material fact to be resolved at trial. Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1540 (TTAB 2009). The nonmoving party must be given the benefit of all reasonable doubt as to whether genuine issues of material fact exist, and the evidentiary record on summary judgment, and all inferences to be drawn from the undisputed facts, must be viewed in the light most favorable to the nonmoving party. See Opryland USA, Inc. v. Great Am. Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992). B. Analysis Initially, we consider Applicant’s standing, which is a threshold issue that must be pleaded and proven by the plaintiff in every inter partes case. See Empresa Cubana Opposition Nos. 91244190, 91245989, and 91245990 7 Del Tabaco v. Gen Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 171 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999). We find that there is no genuine dispute of material fact that Applicant has standing to bring its counterclaims by virtue of its position as defendant in this proceeding. See Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1479 (TTAB 2007). Under the doctrine of claim preclusion, the entry of a final judgment “on the merits” of a claim (i.e., the cause of action) in a proceeding “prevents litigation of all grounds for, or defenses to, recovery that were previously available to the parties, regardless of whether they were asserted or determined in the prior proceeding.” Brown v. Felsen, 442 U.S. 127, 131 (1979) (superseded by statute on other grounds). For claim preclusion to be applied, the following factors must be present: (1) the parties (or their privies) are identical; (2) there has been an earlier final judgment on the merits of a claim; and (3) the second claim is based on the same set of transactional facts as the first. Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000). In this case, the parties do not dispute that the present opposition involves the same parties as the Prior Proceeding. Accordingly, no genuine dispute of material fact exists regarding the first factor of the claim preclusion analysis. With regard to the second factor, there is no genuine dispute of material fact that there has been an earlier final judgment on the merits of a claim. “[W]hether the judgment in the prior proceeding was the result of a dismissal with prejudice or even default, for claim preclusion purposes, it is a final judgment on the merits.” Urock Opposition Nos. 91244190, 91245989, and 91245990 8 Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1411 (TTAB 2015). See Morris v. Jones, 329 U.S. 545, 550-51 (1947) (“A judgment of a court having jurisdiction of the parties and of the subject matter operates as res judicata, in the absence of fraud or collusion, even if obtained upon a default.”) (internal citation omitted); Orouba Agrifoods Processing Co. v. United Food Imp., 97 USPQ2d 1310, 1314-15 (TTAB 2010) (“[E]ven default judgments for failure to answer, or dismissals for failure to prosecute, where there has been no decision ‘on the merits,’ can act as a bar under the doctrine of claim preclusion.”); La Fara Importing Co. v. F. Lli de Cecco di Filippo Fara S. Martino S.p.a., 8 USPQ2d 1143, 1146 (TTAB 1988) (“Issue preclusion operates only as to issues actually litigated, whereas claim preclusion may operate between the parties simply by virtue of the final judgment.”). Applicant argues that claim preclusion does not apply because “[t]he Board’s decision in the prior cancellation does not constitute a final judgment on the merits of the claim in this proceeding.” 12 TTABVUE 10. For claim preclusion to apply, however, there need not be a final judgment on the merits of the identical claim in the current proceeding; rather, there must be a final judgment on the merits of a claim that is based on the same set of transactional facts as the first claim. Jet, Inc., 55 USPQ2d at 1856. There is no genuine dispute of material fact that the Board’s denial of the petition to cancel in the Prior Proceeding constitutes a final judgment. We therefore turn to the third factor, i.e., whether the claims in the counterclaim are based on the same set of transactional facts as the claim in the Prior Proceeding. Opposition Nos. 91244190, 91245989, and 91245990 9 In determining whether the second claim is based on the same transactional facts as the first, the Board is guided by the Restatement (Second) of Judgments. See Urock Network, LLC, 115 USPQ2d at 1412. Section 25 of the Restatement provides that claim preclusion applies even where the plaintiff may present evidence, grounds, or theories not presented in the first proceeding or seek remedies or relief not sought in the first proceeding. Id. (citing Section 25 of the Restatement (Second)). “To assess whether the claims are based on the same set of transactional facts, comment b to Section 24 of the Restatement considers whether there is a common nucleus of operative facts.” Id. Applicant has asserted two counterclaims against Opposer’s Registration No. 3975142: (1) non-use; and (2) restriction of Opposer’s services under Section 18 of the Trademark Act to avoid a finding of a likelihood of confusion. We therefore examine each claim separately. 1. Section 18 Counterclaim We turn first to the equitable relief sought under Section 18 to restrict Opposer’s “charitable fund-raising” services to avoid a finding of a likelihood of confusion with Applicant’s involved application. To obtain an equitable restriction under Section 18 of the Trademark Act, a party must plead and prove that entry of the proposed restriction will avoid a finding of likelihood of confusion and that the opponent is not using its mark on the goods or services that will be effectively excluded by the proposed restriction. See Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1270 (TTAB 1994). For the reasons that follow, we find that there is Opposition Nos. 91244190, 91245989, and 91245990 10 no genuine dispute of material fact that the claim in the current proceeding involves the same transactional facts as the claim in the Prior Proceeding. Applicant is asserting as a counterclaim the identical claim sought in the Prior Proceeding, namely, a restriction of Opposer’s services in Class 36 under Section 18 to avoid a likelihood of confusion. Each of the claims is premised on the same fact, i.e., that Opposer’s identification of “charitable fund-raising” is overly broad and that Opposer’s actual services are limited to “snack and candy fundraisers” or “‘charitable fundraising’ by means of selling merchandize to others, namely, snacks and candy.” 9 TTABVUE 22 (petition for partial cancellation in Prior Proceeding) and 4 TTABVUE 10 (counterclaim in the current proceeding). Applicant argues that the transactional facts are nevertheless different, because the child application was not subject to the Examining Attorney’s partial refusal and Applicant’s Section 18 claim in the Prior Proceeding was therefore limited solely to avoiding a likelihood of confusion with the goods and services subject to the partial refusal. Applicant’s parent application, in its entirety, was placed at issue in the Prior Proceeding. The petition for partial cancellation in the Prior Proceeding pleaded broadly that Applicant sought a restriction of Opposer’s Class 36 services to “avoid a finding of likelihood of confusion between [Applicant’s] applied-for mark and [Opposer’s] Registration.” 9 TTABVUE 23. Applicant pleaded that “[Applicant’s] efforts to distinguish the parties’ respective marks and the goods and services offered by the [Opposer] were rebuffed by the Examining Attorney on the grounds that the scope of the services in the Registration is so broad that it encompasses all products Opposition Nos. 91244190, 91245989, and 91245990 11 and services in the connection with charitable fund raising.” 9 TTABVUE 21. Applicant further pleaded that “If [Opposer’s] Registration properly reflected its actual goods and services, it would exclude computer software and database management related goods and services, and/or would be limited to the trade channels of [Opposer’s] goods and services, namely, snacks and candies fundraisers.” Id. Accordingly, the fact that the Examining Attorney did not refuse the goods and services later divided into the child application does not change the transactional facts. Applicant petitioned to partially cancel Opposer’s registration to avoid a likelihood of confusion with its then undivided application, which included all goods and services in the eventual child application. In reaching a determination of the Section 18 claim in the Prior Proceeding, the Board would not have been bound by the Examining Attorney’s findings. Cf. In re Perez, 21 USPQ2d 1075, 1077 (TTAB 1991) (Board not bound by examining attorney decision regarding registrability). Rather, the Board would have determined if the proposed restriction would have avoided a finding of a likelihood of confusion based on the identification of goods and services stated in the application and registration at issue, in their entirety. Cf. Aries Sys. Corp. v. World Book Inc., 26 USPQ2d 1926 (TTAB 1993) (comparing respective identifications of goods in the parties’ application and registration for purposes of determining if proposed restrictions would avoid a finding of likelihood of confusion); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (likelihood of confusion determined by comparison of goods and Opposition Nos. 91244190, 91245989, and 91245990 12 services in the parties’ respective applications and registrations). Cf. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion will be found if there is a likelihood of confusion with respect to any good or service in the identification of a class). Applicant’s child application constitutes a subset of the goods and services in the parent application. Claim preclusion is applicable, “not only with respect to the identical description of goods as had been previously litigated, but with respect to all goods that could be said to be encompassed by that description of goods….” Gen. Elec. Co. v. Raychem Corp., 204 USPQ 148, 150 (TTAB 1979) (citing Toro Co. v. Hardigg Indus., Inc., 549 F.2d 785, 193 USPQ 149 (CCPA 1977)). Claim preclusion applies where, as here, the goods or services in the second application are subsumed by the goods or services in the first application. See J.I. Case Co. v. F.L. Indus., Inc. 229 USPQ 697, 700 (TTAB 1986) (finding that the doctrine of claim preclusion barred a second application for the same mark where the goods in the second application were “fully encompassed by those claimed in the prior proceeding.”). The fact that Applicant is proposing different restrictive language to Opposer’s Class 36 services does not constitute different transactional facts, but is rather alternative relief for the same factual basis. Under the doctrine of claim preclusion, a plaintiff is barred from a “subsequent assertion of the same transactional facts in the form of a different cause of action or theory of relief.” See Young Eng’rs, Inc. v. United States Int’l Trade Comm’n, 721 F.2d 1305, 219 USPQ 1142, 1151 (Fed. Cir. 1983). The basis for each claim is that Opposer’s identification of “charitable fund- Opposition Nos. 91244190, 91245989, and 91245990 13 raising” is overly broad and Opposer’s services should be limited to reflect Opposer’s actual use. The fact that Applicant is now seeking a different restriction under Section 18 is a request for alternative relief, but based on the same nucleus of facts. In view of the foregoing, Opposer’s motion for summary judgment on Applicant’s counterclaim for relief under Section 18 of the Trademark Act is granted and the counterclaim is denied with prejudice. 2. Non-Use Counterclaim With respect to the claim of non-use, we similarly find that there is no genuine dispute of material fact that the claim is based on the same transactional facts of the Prior Proceeding. Although Applicant’s theory of relief is different, Applicant relies upon the same factual allegations to support its claim of non-use as it did to support its petition for partial cancellation in the Prior Proceeding. In the Prior Proceeding, Applicant pleaded the following: • “According to the PTO database, [Opposer] filed Section 8 and 15 affidavits for the Registration on June 7, 2017. The Section 8 and 15 affidavits have been accepted and acknowledged.” 9 TTABVUE 22 (Petition ¶ 8). • “On information and belief and according to [Opposer’s] web site at , [Opposer’s] primary business is snack and candy fundraisers. Respondent’s said website describing its businesses as: ‘Old Fashion Candy Company strives to offer you the most effective snack and candy fundraisers … We offer a large assortment of snacks and candy …’”. Id. (Petition ¶ 9). In the current proceeding, in its counterclaim, Applicant has pleaded the following: • “Opposer filed a specimen in connection with the June 2017 Statement of Use which is attached as Exhibit 3 to this Answer to Notice of Opposition and Counterclaims. Opposer claimed that the specimen is ‘a catalog evidencing the mark being used in connection with the services’ in Exhibit Opposition Nos. 91244190, 91245989, and 91245990 14 2, and the specimen in Exhibit 3 shows the FUN RAISING mark used in connection with a conspicuous term ‘WITH LOLLIPOPS’ for sale of snacks and candy.” 4 TTABVUE 7 (Counterclaim ¶ 18). • “On information and belief and according to Opposer’s web site at , Opposer’s primary business in relation to Opposer’s Mark is sales of snacks and candy to third parties so that the third parties can raise funds. Opposer’s website describes its business as providing snacks and candy to any individual, group or organization so that such entity can sell the snacks and candy Opposer provided to raise money.” Id. at 8 (Counterclaim ¶ 20). Applicant asserts the same specimens and website in support of its non-use claim that it previously relied on in support of its Section 18 claim. Applicant is therefore relying upon the same transactional facts to assert a new theory of relief. See Vitaline Corp. v. Gen. Mills, Inc., 891 F.2d 273, 13 USPQ2d 1172 (Fed. Cir. 1989) (abandonment claim barred by claim preclusion because claim of abandonment was based on the same transactional facts as prior fraud claim—the defendant’s alleged non-use of its mark on the goods identified in the registration). Both claims are based on the premise that Opposer’s identification of its services as “charitable fund-raising” is incorrect. In the Prior Proceeding, Applicant contended that Opposer’s services, as evidenced by the specimens and Opposer’s website, were more properly classified as “candies and snacks charitable fund-raising services,” 9 TTABVUE 22, while here, Applicant now alleges that the same actions by Opposer “cannot be characterized as any type of ‘charitable fundraising.’” 4 TTABVUE 8 (Counterclaim ¶ 8). The nucleus of operative facts remains the same, i.e., Opposer’s sale of candy for purposes of fundraising by third parties. The fact that Applicant has now asserted a different cause of action for the same conduct by Opposer does not constitute a new set of transactional facts. See Young Eng’rs, Inc., 219 USPQ at 1151. Opposition Nos. 91244190, 91245989, and 91245990 15 In view of the foregoing, Opposer’s motion for summary judgment on Applicant’s counterclaim of non-use in Opposition No. 91244190 is granted and the counterclaim is denied with prejudice. III. Consolidation and Schedule In Opposition Nos. 91245989 and 91245990, Opposer filed motions to suspend proceedings pending final determination of the instant proceeding, Opposition No. 91244190. On June 27, 2019, the Board denied Opposer’s motion to suspend pending final disposition of Opposition No. 91244190, but suspended the proceedings pending determination of the motion for summary judgment in Opposition No. 91244190. The Board noted that upon resumption, consolidation of the proceedings may be appropriate. The above-captioned proceedings involve common questions of law and fact and the parties are the same. When cases involving common questions of law or fact are pending before the Board, the Board may order the consolidation of the cases. See Fed. R. Civ. P. 42(a); see also Regatta Sport Ltd. v. Telux-Pioneer Inc., 20 USPQ2d 1154 (TTAB 1991); and Estate of Biro v. Bic Corp., 18 USPQ2d 1382 (TTAB 1991). In view thereof, Opposition Nos. 91244190, 91245989, and 91245990 are hereby consolidated. The consolidated cases may be presented on the same record and briefs. See Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989); and Hilson Research Inc. v. Soc’y for Human Res. Mgmt., 26 USPQ2d 1423 (TTAB 1993). Opposition Nos. 91244190, 91245989, and 91245990 16 The Board file for these consolidated cases will be maintained in Opposition No. 91244190 as the “parent” case. As a general rule, from this point on, only a single copy of any paper or motion should be filed in the parent case of the consolidated proceedings, but that copy should bear all proceeding numbers in its caption. The parties are further advised that despite being consolidated, each proceeding retains its separate character. The decision on the consolidated cases shall take into account any differences in the issues raised by the respective pleadings and a copy of the final decision shall be placed in each proceeding file.8 Upon consolidation, the Board resets dates for the consolidated proceeding, usually by adopting the dates as set in the most recently instituted of the cases being consolidated. Accordingly, proceedings are resumed and remaining dates in these consolidated proceedings are reset as follows:9 Answers to Counterclaims in Child Proceedings Due 8/30/2019 Deadline for Discovery Conference 9/29/2019 Discovery Opens 9/29/2019 Initial Disclosures Due 10/29/2019 Expert Disclosures Due 2/26/2020 Discovery Closes 3/27/2020 Pretrial Disclosures Due for Party in Position of Plaintiff in Original Claim 5/11/2020 30-day Trial Period Ends for Party in Position of Plaintiff in Original Claim 6/25/2020 8 The parties should promptly inform the Board in writing of any other related inter partes proceedings. See Fed. R. Civ. P. 42(a). 9 The Board’s decision on Opposer’s motion for summary judgment granting denial of the counterclaims in Opposition No. 91244190 does not affect the counterclaims in Opposition Nos. 91245989 and 91245990. Opposer should file its answers to the counterclaims in each of the child proceedings separately as an exception to the general rule that all subsequent filings be made in the parent case only. Opposition Nos. 91244190, 91245989, and 91245990 17 Pretrial Disclosures Due for Party in Position of Defendant in Original Claim and in Position of Plaintiff in Counterclaim 7/10/2020 30-day Trial Period Ends for Party in Position of Defendant in Original Claim, and in Position of Plaintiff in Counterclaim 8/24/2020 Pretrial Disclosures Due for Rebuttal of Party in Position of Plaintiff in Original Claim and in Position of Defendant in Counterclaim 9/8/2020 30-day Trial Period Ends for Rebuttal of Party in Position of Plaintiff in Original Claim, and in Position of Defendant in Counterclaim 10/23/2020 Pretrial Disclosures Due for Rebuttal of Party in Position of Plaintiff in Counterclaim 11/7/2020 15-day Trial Period Ends for Rebuttal of Party in Position of Plaintiff in Counterclaim 12/7/2020 Opening Brief for Party in Position of Plaintiff in Original Claim Due 2/5/2021 Combined Brief for Party in Position of Defendant in Original Claim and Opening Brief as Plaintiff in Counterclaim Due 3/7/2021 Combined Rebuttal Brief for Party in Position of Plaintiff in Original Claim and Brief as Defendant in Counterclaim Due 4/6/2021 Rebuttal Brief for Party in Position of Plaintiff in Counterclaim Due 4/21/2021 Request for Oral Hearing (optional) Due 5/1/2021 Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is taken and introduced out of the presence of the Board during the assigned testimony periods. The parties may stipulate to a wide variety of matters, and many requirements relevant to the trial phase of Board proceedings are set forth in Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the manner and timing of taking testimony, matters in evidence, and the procedures for submitting and serving testimony and other evidence, including affidavits, declarations, deposition transcripts and stipulated evidence. Trial briefs shall be submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at final hearing will be scheduled only upon the timely submission of a separate notice as allowed by Trademark Rule 2.129(a). Copy with citationCopy as parenthetical citation