Wisconsin Cheese Group, LLCv.Comercializadora de Lácteos y Derivados, S.A. de C.V.

Trademark Trial and Appeal Board

Mar 30, 2016

No. 91224900 (T.T.A.B. Mar. 30, 2016)

Krisp Mailed: March 30, 2016

Opposition No. 91224131 (parent case)
Opposition No. 91224900

Wisconsin Cheese Group, LLC
v.
Comercializadora de Lácteos y Derivados,
S.A. de C.V.

Before Shaw, Adlin and Heasley.
Administrative Trademark Judges.

By the Board:

Before the Board are Comercializadora de Lácteos y Derivados, S.A. de C.V.’s (“Ap-
plicant”) motions to amend the identifications of goods in its two opposed applications,
and its motion to consolidate the two opposition proceedings concerning those appli-
cations. We first take up the motion for consolidation.
I. Motion for Consolidation
On December 4, 2015, Applicant filed, in Opposition No. 91224900, a motion to
consolidate that case with Opposition No. 91224131.1
A. Standard
When cases involving common questions of law or fact are pending before the
Board, the Board may order consolidation of the cases. Fed. R. Civ. P. 42(a); Regatta

1 A copy of the filing was also entered into the record for Opposition No. 91224131.
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
THIS ORDER IS A
PRECEDENT OF THE
TTAB
Opposition Nos. 91224131 (parent case) and 91224900

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Sport Ltd. v. Telux-Pioneer Inc., 20 USPQ2d 1154 (TTAB 1991); Estate of Biro v. Bic
Corp., 18 USPQ2d 1382, 1384 n.3 (TTAB 1991). In determining whether to consoli-
date proceedings, the Board will weigh the savings in time, effort and expense that
may be gained from consolidation against any prejudice or inconvenience that may
be caused thereby. Consolidation is discretionary with the Board, and may be ordered
upon motion granted by the Board, or upon stipulation of the parties approved by the
Board, or upon the Board’s own initiative. World Hockey Ass’n v. Tudor Metal Prods.
Corp., 185 USPQ 246, 248 (TTAB 1975); TBMP § 511 (2015).
B. Analysis
Consolidation is appropriate here. As explained below, the proceedings involve
common questions of law and fact.
First, each of the captioned proceedings involves an application based on Trade-
mark Act Section 1(b), 15 U.S.C. § 1051(b), to register the mark SOYSALUD (stand-
ard characters).
Second, the Opposer and the grounds for opposition are similar. Specifically, Wis-
consin Cheese Group, LLC (“Opposer”) opposes each application on the following
three grounds:
1) likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C.
§1052(d);

2) deceptiveness under Trademark Act Section 2(a), 15 U.S.C. § 1052(a),
specifically alleging, in pertinent part, that “[A]pplicant’s mark contains
the term ‘SOY’ and misdescribes the character, quality, function, com-
position or use of the goods in the Application” and “[P]rospective pur-
chasers are likely to believe that the misdescription actually describes
Opposition Nos. 91224131 (parent case) and 91224900

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all of Applicant’s goods in that all of its goods contain soy (and/or soy-
bean milk), which they do not;”2 and

3) deceptive misdescriptiveness under Trademark Act Section 2(e)(1), 15
U.S.C. § 1052(e)(1), specifically alleging, in pertinent part, that “[A]ppli-
cant’s mark contains the term ‘SOY’ and deceptively misdescribes the
goods in the Application which do not contain soy,” and “[P]rospective
purchasers are likely to believe the misrepresentation.”3

Opposer’s Sections 2(a) and 2(e)(1) claims in both proceedings thus are directed only
to Applicant’s identified goods that do not contain soy.
In both proceedings, Opposer also alleges prior use and registration of a “family”
of SALUD standard character marks,4 namely:
1) Registration No. 3355301 for the mark BIO SALUD! for “dairy-based bever-
ages,” in International Class 29;

2) Registration No. 4335865 for the mark YA SALUD for “nutritional supple-
ments, namely, probiotic drinks,” in International Class 5; and

3) Registration No. 4335866 for the mark YA SALUD for “probiotic drinks,
namely, dairy based beverages,” in International Class 29.

In light of these common questions of law and fact, Applicant’s motion to consoli-
date is granted. Opposition Nos. 91224131 and 91224900 are hereby consolidated and
may be presented on the same record and briefs. Helene Curtis Indus. Inc. v. Suave
Shoe Corp., 13 USPQ2d 1618, 1619 n.1 (TTAB 1989).

2 1 TTABVUE 7 (Opp. No. 91224131); 1 TTABVUE 6-7 (Opp. No. 91224900).
3 1 TTABVUE 7 (Opp. No. 91224131); 1 TTABVUE 7 (Opp. No. 91224900).
4 1 TTABVUE 5 (Opp. No. 91224131); 1 TTABVUE 5 (Opp. No. 91224900).
Opposition Nos. 91224131 (parent case) and 91224900

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The Board file will be maintained in Opposition No. 91224131 as the “parent case.”
Except as discussed below, the parties shall file a single copy of all motions and pa-
pers in the parent case only. Each such filing must caption both oppositions, identi-
fying the parent case first (as in the caption above).
Despite being consolidated, each proceeding retains its separate character and re-
quires entry of a separate judgment. The decision on the consolidated cases shall take
into account any differences in the issues raised by the respective pleadings; a copy
of the decision shall be placed in each proceeding file.5
II. Applicant’s Motions to Amend the Identification of Goods
In each opposition, prior to the time to file, and in lieu of filing, an answer, Appli-
cant filed an unconsented motion to amend its identification of goods.6 As shown be-
low, Applicant proposes to limit its identified goods to soy-based products.
Application Serial No. 86505813
Application Serial No. 86505813, the subject of the parent case, was published for:
coconut-based beverage used as a milk substitute; dairy products excluding
ice cream, ice milk and frozen yogurt; nut-based milk for use as a milk sub-
stitute; soy-based food beverage used as a milk substitute; soybean milk, in
International Class 29;

grain-based beverages, in International Class 30; and

milk of almonds for beverage, in International Class 32.

5 The parties should promptly inform the Board of any other Board proceedings or related
cases involving questions of law or fact in common with the present proceedings within the
meaning of Fed. R. Civ. P. 42, so that the Board can consider whether further consolidation
is appropriate.

6 Opposer did not file a brief in opposition to Applicant’s motions to amend; however, the
motions do not include Opposer’s consent.
Opposition Nos. 91224131 (parent case) and 91224900

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Applicant seeks to amend the identification of goods in International Class 29 as
follows:
coconut-based beverage used as a milk substitute; dairy products excluding
ice cream, ice milk and frozen yogurt; nut-based milk for use as a milk sub-
stitute; soy-based food beverage used as a milk substitute; soybean milk.

Accordingly, the resulting identification of goods would be:
soy-based food beverage used as a milk substitute; soybean milk, in International
Class 29.

Applicant also seeks to delete all of the identified goods in International Classes
30 and 32.
Application Serial No. 86649229
Application Serial No. 86649229, the subject of Opposition No. 91224900, was pub-
lished for:
artificial cream; cheese substitutes; nut-based milk for use as a milk sub-
stitute; sour cream substitutes; soy-based food beverage used as a milk sub-
stitute; yogurt substitutes, in International Class 29; and

ice cream; ice cream substitutes, in International Class 30.

Applicant seeks to amend the identification of goods in the application as follows:7
soy-based artificial cream; soy-based cheese substitutes; nut-based milk
for use as a milk substitute; soy-based sour cream substitutes; soy-based
food beverage used as a milk substitute; soy-based yogurt substitutes; and

ice cream; soy-based ice cream substitutes.
Accordingly, the resulting identification of goods would be:
soy-based artificial cream; soy-based cheese substitutes; soy-based sour
cream substitutes; soy-based food beverage used as a milk substitute; soy-
based yogurt substitutes, in International Class 29; and

7 In setting forth the amendments in the two involved applications, wording in
strikethrough is to be deleted, and wording in bold is to be added.
Opposition Nos. 91224131 (parent case) and 91224900

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soy-based ice cream substitutes, in International Class 30.
A. Standard for Unconsented Motions to Amend Before Trial
As Applicant argues, our decision in Johnson & Johnson v. Stryker Corp., 109
USPQ2d 1077 (TTAB 2013), provides a framework for deciding Applicant’s motion to
amend. Although we generally defer determination of such a timely (i.e., pretrial) un-
consented motion until final decision or until the case is decided upon motion for
summary judgment, see TBMP § 514.03 and cases cited therein, in order to give the
other party or parties fair notice thereof, Stryker held that an unconsented motion to
amend may be granted prior to trial under the following circumstances:
1) the proposed amendment must serve to limit the broader identi-
fication of goods or services;

2) the applicant must consent to the entry of judgment on the
grounds for opposition with respect to the broader identification
of goods or services present at publication;

3) if the applicant wishes to avoid the possibility of a res judicata
effect by the entry of judgment on the original identification, the
applicant must make a prima facie showing that the proposed
amendment serves to change the nature and character of the
goods or services or restrict their channels of trade and customers
so as to introduce a substantially different issue for trial; and

4) where required to support the basis of the subject application, any
specimens of record must support the goods or services as
amended; and the applicant must then introduce evidence during
its testimony period to prove use of its mark with the remaining
goods or services prior to the relevant date as determined by the
application’s filing basis.

Johnson & Johnson v. Stryker, 109 USPQ2d at 1078-79 (citing Drive Trademark
Holdings LP v. Inofin, 83 USPQ2d 1433, 1435 (TTAB 2007)); Giant Food, Inc. v.
Opposition Nos. 91224131 (parent case) and 91224900

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Standard Terry Mills, Inc., 229 USPQ 955, 964 (TTAB 1986); Int’l Harvester Co. v.
Int’l Telephone & Telegraph Corp., 208 USPQ 940, 941 (TTAB 1980).
B. Analysis
We agree with Applicant that, because its involved applications are based on an
intent to use, only the first three Stryker requirements apply. We also agree with
Applicant that it meets the three applicable Stryker requirements.
Obviously, the first requirement is satisfied. Applicant’s amendments to its Inter-
national Class 29 identification of goods in the ’813 Application, and to its Interna-
tional Classes 29 and 30 identifications of goods in the ’229 Application, limit the
broader identifications under which the applications were published for opposition.
The second Stryker requirement is also satisfied. In the parent case, Applicant
makes the following substantively similar statements:
[A]pplicant consents to the entry of judgment on the grounds for
opposition with respect to the broader identification of goods or
services present at publication;8

[I]f the proposed amendment is granted immediately, the scope of
discovery and presentation of evidence on opposer’s Section 2(d)
claim will be narrowed and simplified. The need for discovery,
presentation of evidence and arguments regarding opposer’s
claims under Sections 2(a) and 2(e)(1) will be eliminated entirely.
There is simply no point in requiring the parties to develop and
present evidence and arguments regarding opposer’s second and
third claims when applicant has already agreed to the entry of
judgment on those claims.9

8 4 TTABVUE 3. In Opposition No. 91224900, Applicant makes a nearly identical statement
at 4 TTABVUE 4.
9 4 TTABVUE 4 (emphasis added). In Opposition No. 91224900, Applicant makes a nearly
identical statement at 4 TTABVUE 4-5.

Opposition Nos. 91224131 (parent case) and 91224900

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By way of these statements, Applicant unconditionally consents to judgment as to
the Sections 2(a) and 2(e)(1) claims with respect to the broader identifications of goods
for which the applications were published for opposition.
Turning to the third requirement, Applicant has made a prima facie showing that
the proposed amendments serve to change the nature and character of the goods so
as to introduce a substantially different issue for trial with respect to the Sections
2(a) and 2(e)(1) claims. Indeed, Applicant has deleted all goods that, as published,
were not identified as “soy-based” or containing soy, and has amended the remaining
goods to specifically state that they are “soy-based.” Opposer limited its Sections 2(a)
and 2(e)(1) claims to Applicant’s goods that were not identified as “soy-based” or con-
taining soy. The amended identifications of goods no longer include non-soy goods to
serve as the bases for Opposer’s Section 2(a) and Section 2(e)(1) claims against the
non-soy goods.10

10 Fed. R. Civ. P. 26(b) defines the scope of discovery, “[u]nless otherwise limited,” as including
“nonprivileged matter that is relevant to any party’s claim or defense and proportional to the
needs of the case ….” It also sets forth limits on the scope of discovery. The Board has applied
the principle of proportionality to define the proper subjects of and expanse of inquiry in inter
partes proceedings under various circumstances. Cf. Domond v. 37.37, Inc., 113 USPQ2d
1264, 1268 (TTAB 2015) (proportionality principle applied to interrogatories, document re-
quests and requests for admission); The Phillies v. Philadelphia Consol. Holding Corp., 107
USPQ2d 2149, 2153 (TTAB 2013) (proportionality discussed with respect to requests for ad-
missions). See also TBMP §§ 402.01 and 414(11). For example, a party may not be entitled to
information regarding goods and services not identified in an involved application. See
Sunkist Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ 147, 149 n.2 (TTAB 1985). Here,
while Applicant’s deletion of goods from its applications does not automatically alter the
scope of discovery, the parties should keep these principles in mind as they agree to the ap-
propriate scope of and limits on discovery in this proceeding given the amendments to Appli-
cant’s identification of goods.

Opposition Nos. 91224131 (parent case) and 91224900

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For all of these reasons, Applicant’s motions to amend are granted. Application
Serial Nos. 86505813 and 86649229 will be amended accordingly. Judgment is en-
tered in favor of Opposer as to its Section 2(a) and Section 2(e)(1) claims with respect
to all goods encompassed by Applicant’s broader identifications of goods, except for
the following:
soy-based food beverage used as a milk substitute; soybean milk, in Inter-
national Class 29 (Serial No. 86505813);

soy-based artificial cream; soy-based cheese substitutes; soy-based sour
cream substitutes; soy-based food beverage used as a milk substitute; soy-
based yogurt substitutes, in International Class 29 (Serial No. 86649229);
and

soy-based ice cream substitutes, in International Class 30 (Serial No.
86649229).

III. Going Forward
A. Amended Pleadings

To assure that the pleadings conform to the applications as amended, the Board
directs the parties to file amended pleadings, as appropriate. Accordingly, Opposer is
allowed until thirty days from the mailing date of this order to file an amended notice
of opposition to the amended ‘813 Application in Opposition No. 91224131, and an
amended notice of opposition to the amended ‘229 Application in Opposition No.
91224900, failing which the opposition or oppositions will be dismissed with preju-
dice. Applicant is allowed until thirty days from the date of service of each amended
notice of opposition to file its answer thereto, failing which the proceeding or proceed-
ings may be decided as on default. Despite consolidation, Applicant is directed to file
Opposition Nos. 91224131 (parent case) and 91224900

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each of its answers only in the proceeding to which it pertains. Thereafter, the parties
should commence the practice of filing all motions and papers in the parent case only.
B. Protective Order

The Board notes Opposer’s January 8, 2016 filing of an executed protective order
for protecting the confidentiality of information in these proceedings.11 The order is
applicable to these proceedings. Inasmuch as the Board has consolidated these pro-
ceedings, the parties need not file a copy of the order in Opposition No. 91224900.
C. Schedule

Proceedings are resumed. Conference, disclosure, discovery and trial dates are re-
set as follows:
Deadline for Discovery Conference 6/30/2016
Discovery Opens 6/30/2016
Initial Disclosures Due 7/30/2016
Expert Disclosures Due 11/27/2016
Discovery Closes 12/27/2016
Plaintiff's Pretrial Disclosures Due 2/10/2017
Plaintiff's 30-day Trial Period Ends 3/27/2017
Defendant's Pretrial Disclosures Due 4/11/2017
Defendant's 30-day Trial Period Ends 5/26/2017
Plaintiff's Rebuttal Disclosures Due 6/10/2017
Plaintiff's 15-day Rebuttal Period Ends 7/10/2017

In each instance, a copy of the transcript of testimony, together with copies of doc-
umentary exhibits, must be served on the adverse party within thirty days after com-
pletion of the taking of testimony. Trademark Rule 2.125, 37 C.F.R. § 2.125. Briefs
shall be filed in accordance with Trademark Rules 2.128(a) and (b), 37 C.F.R. §§

11 The filing does not include proof of service, as required under Trademark Rules 2.119(a)
and (b). All future filings must include proof of service.
Opposition Nos. 91224131 (parent case) and 91224900

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2.128(a) and (b). An oral hearing will be set only upon request filed as provided by
Trademark Rule 2.129, 37 C.F.R. § 2.129.