Cheese-burger In Paradise, Inc.v.Jimmy Buffett

Trademark Trial and Appeal Board

Mar 8, 2005

No. 91159413 (T.T.A.B. Mar. 8, 2005)

Baxley Mailed: March 8, 2005

Opposition No. 91159413
Opposition No. 91161263

Cheeseburger In Paradise, Inc.

v.

Jimmy Buffett

Before Hohein, Hairston, and Chapman,
Administrative Trademark Judges

By the Board:

Jimmy Buffett (“applicant”) seeks to register the mark
CHEESEBURGER IN PARADISE and design in the following form:

for “jewelry, lapel pins and watches” in International Class
14;1 “beverage glassware, shot glasses and foam drink
holders” in International Class 21;2 “clothing, namely

1 Application Serial No. 78211424, filed on February 5, 2003 and
based on an assertion of a bona fide intent to use in commerce
under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b).

2 Application Serial No. 78211429, filed on February 5, 2003
under Trademark Act Section 1(a), 15 U.S.C. Section 1051(a), and
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF THE
TTAB
Opposition Nos. 91159413 and 91161263
2
shirts, T-shirts, sweatshirts and baseball caps” in
International Class 25;3 and “nightclub services and
providing information in the field of nightclub services,
namely live entertainment event calenders, location
information and driving directions via the Internet” in
International Class 41 and “restaurant and bar services, and
providing information in the field of restaurant and bar
services, namely food and drink menus, location information
and driving directions via the Internet” in International
Class 45.4 Applicant also seeks to register CHEESEBURGER IN
PARADISE and design in the following form:

alleging June 1, 2002 as the date of first use and date of first
use in commerce.

3 Application Serial No. 78211430, filed on February 5, 2003
under Trademark Act Section 1(a), 15 U.S.C. Section 1051(a), and
alleging June 1, 2002 as the date of first use and date of first
use in commerce.

4 Application Serial No. 78211448, filed on February 5, 2003
under Trademark Act Section 1(a), 15 U.S.C. Section 1051(a), and
alleging June 1, 2002 as the date of first use and date of first
use in commerce. The application includes the following
concurrent use statement:

Registration limited to the area comprising the entire
United States except for the state of Hawaii pursuant
to the decree of the United States District Court for
the central District of California Western division,
CV98-1730 CM (AIJx), dated June 8, 1999. Concurrent
registration with Jimmy Buffett, 424-A Fleming Street,
Key West, Florida 33040 and Cheeseburger in Paradise,
Inc., P.O. Box 10875, Lahaina, Hawaii.

Opposition Nos. 91159413 and 91161263
3

for “jewelry, lapel pins and watches” in International Class
14;5 “beverage glassware, shot glasses and foam drink
holders” in International Class 21;6 and “clothing, namely
shirts, T-shirts, sweatshirts and baseball caps” in
International Class 25.7
Registration of the marks in the above-identified
applications in all classes has been opposed by Cheeseburger
in Paradise, Inc. (“opposer”) on the ground of a likelihood
of confusion under Trademark Act Section 2(d), 15 U.S.C.
Section 1052(d), with its family of marks which are composed
of the following: (1) opposer’s previously used and
registered marks CHEESE BURGER IN PARADISE and design in the
following form:

5 Application Serial No. 78211425, filed on February 5, 2003 and
based on an assertion of a bona fide intent to use in commerce
under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b).

6 Application Serial No. 78211432, filed on February 5, 2003
under Trademark Act Section 1(a), 15 U.S.C. Section 1051(a), and
alleging June 1, 2002 as the date of first use and date of first
use in commerce.

7 Application Serial No. 78211449, filed on February 5, 2003
under Trademark Act Section 1(a), 15 U.S.C. Section 1051(a), and
alleging June 1, 2002 as the date of first use and date of first
use in commerce.

Opposition Nos. 91159413 and 91161263
4

as used in connection with “restaurant and bar services” in
International Class 42,8 and CHEESE BURGER and design in the
following form:

(hereinafter “Cheese Burger mark”) as used on “household
utensils, namely, pots, frying pans, spatulas, serving
spoons, and mixing spoons; containers for household or
kitchen use; trivets; coasters not of paper or table linen;
dishes; beverage glassware; water bottles sold empty; and
mugs” in International Class 21 and “promotional
merchandise, namely, ornamental novelty pins, ornamental
novelty buttons” in International Class 26;9 (2) opposer’s

8 Registration No. 1765057, issued on April 13, 1993 and reciting
October 25, 1989 as the date of first use and date of first use
in commerce. The registration is limited to the area comprising
Hawaii pursuant to the decree of the United States District Court
for the Central District of California, Western Division, in
Civil Action No. CV 98-1730 CM (AIJx) and identifies applicant as
an excepted cconcurrent user. Applicant’s petition to cancel
this registration was instituted as Cancellation No. 92025148 and
remains pending before the Board.

9 Registration No. 2795196, issued December 16, 2003 and reciting
February 1, 1990 as the date of first use and date of first use
in commerce.
Opposition Nos. 91159413 and 91161263
5
previously used “Cheese Burger mark” in connection with
“restaurant and bar services” in International Class 42;10
and (3) opposer’s constructively used “Cheese Burger mark”
for “headwear; footwear; and clothing, namely, caps, shirts,
t-shirts, tanktops, blouses, jackets, coats, sweaters,
sweatshirts, shorts, pants, beachwear, swimwear, swimsuits,
pareos, caps, visors, and hats” in International Class 25.11
This case now comes up for consideration of the
following motions: (1) applicant’s motion (filed April 29,
2004) for leave to amend his answer in Opposition No.
91159413 to assert a compulsory counterclaim; (2)
applicant’s motion (filed April 29, 2004) for summary
judgment in Opposition No. 91159413; (3) applicant’s motion
(filed October 7, 2004) for summary judgment in Opposition

10 Opposer’s mark as used in connection with these services is the
subject of application Serial No. 75838294, filed November 2,
1999 and reciting February 1, 1990 as the date of first use and
first use in commerce. Subsequent to the filing of opposer’s
notice of opposition that commenced Opposition No. 91159413, this
application matured on February 3, 2004 into Registration No.
2810903. The registration includes a disclaimer of any right to
use CHEESEBURGER apart from the mark as shown.

11 Opposer’s pleaded “Cheese Burger mark” for “headwear; footwear;
and clothing, namely, caps, shirts, t-shirts, tanktops, blouses,
jackets, coats, sweaters, sweatshirts, shorts, pants, beachwear,
swimwear, swimsuits, pareos, caps, visors, and hats” in
International Class 25 is the subject of application Serial No.
75981924, filed November 2, 1999 and based on an assertion of a
bona fide intent to use the mark in commerce under Trademark Act
Section 1(b), 15 U.S.C. Section 1051(b). Following the filing of
opposer’s statement of use in this application, a final refusal
of registration based on likelihood of confusion under Section
2(d) with applicant’s Registration No. 1935684 for the mark
CHEESEBURGER IN PARADISE in typed form for “T-shirts and
sweatshirts” in International Class 25 was issued on October 25,
2004.
Opposition Nos. 91159413 and 91161263
6
No. 91161263; and (4) opposer’s motion (filed October 27,
2004) to consolidate the above-referenced proceedings. The
motions have been fully briefed.
Turning first to opposer’s motion to consolidate, the
Board notes that such motion was filed after the Board’s
issuance of orders (on May 20, 2004 in Opposition No.
91159413 and on October 17, 2004 in Opposition No. 91161263)
suspending the above-captioned proceedings pending
disposition of applicant’s motions for summary judgment and
advising the parties that any papers which were not germane
to the motions for summary judgment would receive no
consideration. Although the motion to consolidate is not
germane to applicant’s motions for summary judgment, the
Board notes that the parties were told in the notices
instituting each of the above-captioned proceedings that, if
they are parties to other Board proceedings involving
related marks, or if during the pendency of those
proceedings they become parties to such proceedings, they
should notify the Board immediately so that the Board can
consider whether consolidation is appropriate. Accordingly,
the Board will consider opposer’s motion to consolidate.
The Board notes initially that applicant has filed his
answer in both of the proceedings for which consolidation is
sought. See TBMP Section 511 (2d ed. rev. 2004). The Board
may consolidate pending cases that involve common questions
Opposition Nos. 91159413 and 91161263
7
of law or fact. 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). Inasmuch as the parties to the respective
proceedings are the same and the proceedings involve common
questions of law or fact, the Board finds that consolidation
of the above-referenced proceedings is appropriate.
In view thereof, opposer’s motion to consolidate is
hereby granted. Opposition Nos. 91159413 and 91161263 are
hereby consolidated and may be presented on the same record
and briefs.
We turn next to applicant’s motions for summary
judgment.12 In support thereof, applicant contends that, in
view of a settlement agreement in a civil action between the
parties, opposer is precluded from opposing registration of
applicant’s involved marks.13 In particular, applicant
contends that the district court found in a September 16,

12 Inasmuch as applicant’s reply briefs in connection with his
motions for summary judgment rebut arguments raised by opposer in
its briefs in response to the motions for summary judgment and
clarify issues before us, we have considered those reply briefs.
See Trademark Rule 2.127(a). However, because Rule 2.127(a)
expressly prohibits the filing of any further papers in
connection with motions in Board inter partes proceedings, we
have not considered either opposer’s sur-reply briefs or
applicant’s replies to opposer’s sur-reply briefs in connection
with the motions for summary judgment.

13 The civil action is styled James W. Buffett v. Cheeseburger in
Paradise, Inc., Case No. CV 98-1730 CM (AIJx), filed in the
United States District Court for the Central District of
California.

Opposition Nos. 91159413 and 91161263
8
1998 decision that applicant, having coined the phrase
“Cheeseburger in Paradise,” used his mark prior to opposer;
that the district court, noting that applicant coined the
phrase “cheeseburger in paradise” in a 1978 song that
applicant wrote, recorded and performed, found that
opposer’s use of the CHEESE BURGER IN PARADISE mark for
restaurant and bar services was confusingly similar to
applicant’s CHEESEBURGER IN PARADISE mark and therefore
ordered the cancellation of opposer’s Registration No.
1765057; that the parties subsequently entered into a
settlement agreement in June 1999 whereby the parties agreed
that the geographic scope of opposer’s Registration No.
1765057 would be limited to the state of Hawaii and that
opposer would be barred from objecting to the use or
registration of applicant’s CHEESEBURGER IN PARADISE marks,
except in certain limited situations that are not at issue
in this proceeding; that applicant has several pending
applications and owns two registrations for CHEESEBURGER IN
PARADISE marks, one of which is incontestable;14 and that,

14 The registrations of which applicant claims ownership in his
motions for summary judgment are as follows:

Registration No. 1935684 for the mark CHEESEBURGER IN PARADISE
in typed form for “T-shirts and sweatshirts” in International
Class 25, issued November 14, 1995 and alleging 1984 as the date
of first use and date of first use in commerce. Section 8
affidavit accepted, Section 15 affidavit acknowledged.

Registration No. 2468644 for the mark CHEESEBURGER IN PARADISE
in typed form for “sandwiches” in International Class 30, issued
July 17, 2001 and alleging 1987 as the date of first use and date
Opposition Nos. 91159413 and 91161263
9
notwithstanding the foregoing, opposer filed notices of
opposition in which it asserted that its rights in its
“family” of Cheese Burger marks would be damaged by the
registrations sought by applicant, but failed to mention in
the notices of opposition that its rights in its pleaded
marks are substantially limited by the parties’ settlement
agreement. Applicant further contends that opposer does not
have a real interest in maintaining these proceedings
because the district court has already determined that
applicant is the prior owner of the CHEESEBURGER IN PARADISE
mark; and that opposer cannot prove either prior use of its
mark or that it will be damaged by the registrations sought
by applicant. Applicant has included as an exhibit in
support of each of his motions a copy of the district
court’s decision in which it entered partial summary
judgment against opposer (as defendant in the civil action)
and ordered the cancellation of opposer’s Registration No.
1765057. Accordingly, applicant asks that the Board enter
summary judgment in his favor on opposer’s likelihood of
confusion claim and dismiss these oppositions.

of first use in commerce. The registration includes a disclaimer
of any exclusive right to use CHEESEBURGER apart from the mark as
shown. The registration is limited to the area comprising the
entire United States except for the state of Hawaii pursuant to
the decree of the United States District Court for the Central
District of California, Case No. CV98-1730 CM (AIJx), dated June
8, 1999.

Opposition Nos. 91159413 and 91161263
10
In response, opposer contends that it does not object
to applicant’s registration of the word mark CHEESEBURGER IN
PARADISE, but instead objects only to the registration of
the specific design marks at issue; that the district
court’s finding that applicant was the senior user of the
word mark CHEESEBURGER IN PARADISE is irrelevant because
opposer is not opposing registration of the word mark; that
the parties’ settlement agreement preserves opposer’s right
to oppose registration of applicant’s marks which violate
opposer’s rights; that opposer may rely on its rights in the
“Cheese Burger marks” in support of its Section 2(d) claim
against applicant’s involved marks; and that there are
genuine issues of material fact with regard to its Section
2(d) claims. In support of its briefs in response, opposer
has included the declaration of its president, Laren
Gardner. Accordingly, opposer asks that the Board deny
applicant’s motions.
In reply, applicant contends that opposer’s arguments
violate the well-settled rule that marks should be
considered in their entireties and not dissected into their
component parts; that there is no likelihood of confusion
between the marks at issue; and that it is fraudulent for
opposer to seek relief via these opposition proceedings.15

15 To the extent that applicant’s reply brief in Opposition No.
91159413 asks that sanctions be entered against opposer, the
Board notes that the request is not submitted to the Board as a
Opposition Nos. 91159413 and 91161263
11
Applicant included excerpts from the parties’ settlement
agreement in the civil action with his reply briefs.16
The purpose of summary judgment is to avoid an
unnecessary trial where additional evidence would not
reasonably be expected to change the outcome. See
Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 730 F.2d 624, 222
USPQ 741 (Fed. Cir. 1984). See also TBMP section 528.01 (2d
ed. rev. 2004) and cases cited therein. Generally, summary
judgment is appropriate in cases where the moving party
establishes that there is no genuine issue of material fact
which requires resolution at trial and that it is entitled
to judgment as a matter of law. See Fed. R. Civ. P. 56(c).
An issue is material when its resolution would affect the
outcome of the proceeding under governing law. See Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 106 S. Ct. 2505
(1986); and Octocom Systems Inc. v. Houston Computers
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1786 (Fed.
Cir. 1990). A fact is genuinely in dispute if the evidence
of record is such that a reasonable fact finder could return

separate filing and that applicant has not indicated that he has
complied with the safe harbor requirements of Fed. R. Civ. P.
11(c)(1). Accordingly, applicant’s request for entry of
sanctions is not properly before us and will receive no further
consideration. In any event, the Board does not award legal fees
and/or expenses. See Trademark Rule 2.127(f). See also TBMP
Section 502.05 (2d ed. rev. 2004).

16 Although applicant filed only excerpts from the settlement
agreement as exhibits in connection with his motions for summary
judgment, applicant filed a complete copy of the settlement
Opposition Nos. 91159413 and 91161263
12
a verdict in favor of the nonmoving party. Id. However, a
dispute over a fact that would not alter the Board’s
decision on the legal issue will not prevent entry of
summary judgment. See, e.g., Kellogg Co. v. Pack 'Em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir.
1991).
The question of whether applicant is entitled to
summary judgment on the basis of the settlement agreement
requires construction of the terms of the agreement. We
have construed the agreement in accordance with the laws of
the State of California pursuant to paragraph 21 of the
agreement. Applying the principles of contract construction
to this agreement, we have no difficulty concluding that
applicant is entitled to judgment dismissing these
oppositions as a matter of law. The language of the
agreement is clear. The parties’ settlement agreement in
the civil action includes the following relevant portions.
As used herein, “the Mark” shall mean (1) [T]he
phrase CHEESEBURGER IN PARADISE, or any mark
confusingly similar thereto; and/or (2) any mark
that includes either the phrase ‘Cheeseburger in
Paradise’ or both of the words ‘cheeseburger’ and
‘paradise.’

Settlement Agreement at paragraph 1(d).
This Settlement Agreement imposes no restrictions
of any nature or kind on [applicant], and
[opposer] shall not object to any use of the Mark

agreement as an exhibit to each of his answers in the above-
captioned proceedings.
Opposition Nos. 91159413 and 91161263
13
anywhere in the world in any capacity by
[applicant] except that

(i) …[Applicant] shall not use the Mark
(1) on or in connection with the
operation or provision of any
restaurant, bar, nightclub, casino,
lodging or resort services in [the state
of Hawaii, or in Mexico and Japan]; or
(2) as the name of any restaurant, bar,
nightclub, casino, lodging
establishment, or resort or separate
area therein.

(ii) [W]ithin Hawaii, Mexico and Japan
only, [applicant] shall not use the Mark
to refer to or identify a food item on a
menu for an establishment in those
geographic areas, … and shall not use
“Cheeseburger in Paradise” on a food
menu other than in an ornamental manner
with at least, and no more prominently
than, one other song, book, play title,
or other word mark of [applicant], or as
a mark for or in connection with
merchandise items, provided other
merchandise items without that mark also
appear or are mentioned in the same
section of the menu;

(iii) [W]ithin Hawaii, Mexico and Japan
only, [applicant] shall not hand out or
distribute menus other than those
permissibly used under this Agreement in
Hawaii, Mexico or Japan; and

(iv) [Applicant] shall not use or
display the Mark anywhere in the world
in the manner specifically depicted in
…Registration No. 1765057.

Settlement Agreement at paragraph 7(a).17

17 The settlement agreement expressly limits opposer’s right to
use the CHEESE BURGER IN PARADISE mark in the United States to
restaurant and bar services in Hawaii, menu items at those
restaurants, and promotion of those restaurants. See Settlement
Agreement at paragraphs 4-5. The settlement agreement further
limits opposer’s right to register the CHEESE BURGER IN PARADISE
mark in the United States to restaurant and bar services and menu
items in Hawaii. See Settlement Agreement at paragraph 6.
Opposition Nos. 91159413 and 91161263
14

[Applicant] shall have the right to register or
apply to register the Mark anywhere in the world
for any goods and services, and [opposer] shall
not object to such registration, except that,
within Hawaii, Mexico and Japan, [applicant] shall
not register or seeks to register the Mark: (i) on
or in connection with any restaurant, bar,
nightclub, casino, lodging establishment or
resort; (ii) as the name of any restaurant, bar,
nightclub, casino, lodging establishment or
resort; (iii) as the name of any separate area
within a restaurant, bar, nightclub, casino,
lodging establishment or resort; or (iv) as the
name of a food item appearing on a menu.

Settlement Agreement at paragraph 8(a).
[T]he Parties shall not interfere with or object
to, oppose, challenge, or seek to cancel the other
Party(ies)’ pending or future applications to
register or registrations for the Mark for any
goods, services, or businesses, so long as such
applications and registrations are permitted by,
and comply with, this Agreement.

Settlement Agreement at paragraph 9(b).18
The wording in each of applicant’s involved marks
consists entirely of the phrase CHEESEBURGER IN PARADISE.
As such, the involved marks are plainly within the purview
of the settlement agreement, and that settlement agreement
expressly precludes opposer from opposing registration of
applicant’s involved marks. Although the settlement
agreement permits opposer to object to, or take action

18 In addition, the parties have reserved each party’s right to
object to, or take action against, the other for any actions that
are prohibited thereby and have stipulated that the parties will
litigate any disputes arising from that agreement in the state
and federal courts of the State of California and that the
parties have consented to the jurisdiction of, and venue in, the
Opposition Nos. 91159413 and 91161263
15
against, any application containing the phrase CHEESEBURGER
IN PARADISE that is prohibited thereby, a review of the
involved applications indicates that they are in compliance
with the settlement agreement.19
Accordingly, we find that, under the agreement, opposer
is precluded from opposing registration of applicant’s
involved marks. Based on the foregoing, we find that there
is no genuine issue of material fact that opposer lacks
standing to oppose registration of applicant’s involved
marks, and that applicant is entitled to entry of judgment
in his favor as a matter of law.
In view thereof, applicant’s motions for summary
judgment are hereby granted. The oppositions are dismissed
with prejudice.
We turn next to applicant’s motion for leave to amend
his answer in Opposition No. 91159413 to add a

California courts. See Settlement Agreement at paragraphs 12 and
22.
19 We note that applicant’s involved application Serial No.
78211448 for the mark CHEESEBURGER IN PARADISE and design for
“nightclub services and providing information in the field of
nightclub services, namely live entertainment event calenders,
location information and driving directions via the Internet” in
International Class 41 and “restaurant and bar services, and
providing information in the field of restaurant and bar
services, namely food and drink menus, location information and
driving directions via the Internet” in International Class 45
seeks a registration, which is “limited to the area comprising
the entire United States except for the state of Hawaii,” in
accordance with the parties’ settlement agreement, while the
remaining involved applications are geographically unrestricted,
as permitted by such agreement.

Opposition Nos. 91159413 and 91161263
16
counterclaim.20 By such counterclaim, applicant seeks to
restrict the geographic scope of opposer’s Registration Nos.
2795196 and 2810903, both of which are for the “Cheese
Burger mark,” in all classes to the state of Hawaii. In
response thereto, opposer argues that, pursuant to Trademark
Rule 2.133(a), geographic limitations cannot be determined
in an opposition proceeding and instead can only be
determined in a concurrent use proceeding.
On June 7, 2004, applicant filed a “reply memorandum”
in connection with his motion for leave to amend his
pleading. However, he included a second amended answer and
counterclaim seeking cancellation of opposer’s Registration
Nos. 2795196 and 2810903.21 Opposer, on June 10, 2004,
filed a response to the “reply memorandum.” Therein,
opposer contends that applicant’s reply memorandum is in

20 Our dismissal of opposer’s oppositions supra does not by
itself preclude applicant from going forward as plaintiff in his
counterclaims. See, e.g., Syntex (U.S.A.) Inc. v. E.R. Squibb &
Sons, Inc., 14 USPQ2d 1879 (TTAB 1990). In addition, we note
that, by his counterclaim, applicant seeks to cancel or restrict
registrations for the “Cheese Burger mark” which is not the
subject of the parties’ settlement agreement.

21 Both the first and second amended answers and counterclaims,
were filed electronically via the Electronic System for Trademark
Trials and Appeals (ESSTA) and contained no signature in the
signature block thereof. Following the issuance of the Board’s
August 27, 2004 order in Opposition No. 91159413, in which the
Board required applicant to submit signed copies of the first and
second amended answers and counterclaims, applicant filed signed
copies thereof on September 23, 2004.
Nonetheless, the parties are advised that, under the Board’s
recent decision in PPG Industries, Inc. v. Guardian Industries
Corp., ___ USPQ2d ___ (TTAB, Opposition No. 91162329, February 3,
Opposition Nos. 91159413 and 91161263
17
fact a new motion for leave to amend its pleading and that
the new motion for leave to amend is not properly before the
Board. In particular, opposer contends that, by captioning
his June 7, 2004 filing as a reply memorandum, applicant is
improperly seeking to prevent opposer from responding
thereto; that the reply memorandum introduces new arguments
which are improperly raised in the context of a reply brief;
and that, because applicant’s reply memorandum is in fact a
new motion, its filing is in violation of the Board’s May
20, 2004 suspension order, which stated that any papers
which are not germane to the motion for summary judgment and
motion for leave to amend his pleading that applicant filed
on April 29, 2004 will not be considered.
The Board agrees with opposer that applicant, by way of
his “reply memorandum,” improperly raises new arguments and
seeks to introduce a second amended pleading in Opposition
No. 91159413. See Carbino v. West, 168 F.3d 32 (Fed. Cir.
1999). As such, applicant’s “reply memorandum” is actually
a new motion for leave to amend applicant’s pleading in that
proceeding.22 Because the new motion is apparently intended

2005), the electronic signature on the ESSTA filing form is
considered to pertain to any signature in that filing.
22 Accordingly, applicant’s first motion for leave to amend his
pleading and first amended answer and counterclaim are deemed to
have been withdrawn by the filing of the second motion and second
amended pleading.

In any event, opposer’s argument that geographic limitations
are properly raised only in the context of concurrent use
proceedings is well-taken. See Trademark Rule 2.133(c). As
Opposition Nos. 91159413 and 91161263
18
to correct defects in applicant’s first amended answer and
counterclaim, the new motion is germane to the first motion
for leave to amend his answer and therefore is properly
before the Board. However, because the new motion was
captioned as a reply memorandum, opposer believed that it
was prohibited from filing a brief in opposition thereto.
The Board further notes that the compulsory
counterclaim in applicant’s second amended pleading in
Opposition No. 91159413 seeks cancellation or restriction of
the same registrations on the same grounds as he does in the
counterclaim that he subsequently included as part of he
answer in Opposition No. 91161263.23 If applicant failed to
timely plead his compulsory counterclaims in Opposition Nos.
91159413, he cannot circumvent that failure by asserting the
counterclaims in Opposition No. 91161263. See Consolidated
Foods Corporation v. Big Red, Inc., 231 USPQ 744 (TTAB
1986); 6 Wright, Miller, and Kane, Federal Practice and
Procedure Civil 2d, Section 1417 (1990); TBMP Section 313.04
(2d ed. rev. 2004). Accordingly, before these proceedings
go forward on the counterclaim, the Board finds it necessary

such, the counterclaim that applicant sought to add herein by way
of the first amended pleading could not be allowed under the
Trademark Rules, and applicant’s first motion for leave to amend
his pleading would have been denied. See Foman v. Davis, 331
U.S. 178, 182 (1962); Fed. R. Civ. P. 15(a); TBMP Section 507.02
(2d ed. rev. 2004).

23 It is unnecessary to file essentially the same counterclaim in
each proceeding.
Opposition Nos. 91159413 and 91161263
19
to resolve the question of whether applicant may amend his
answer in Opposition No. 91159413 to assert the compulsory
counterclaim therein. Therefore, we deem it appropriate to
defer consideration of applicant’s new motion for leave to
file a second amended pleading to allow for full briefing
thereof.
Opposer is allowed until twenty days from the mailing
date of this order to file a brief in opposition to
applicant’s new motion for leave to file a second amended
pleading.24
Proceedings herein otherwise remain suspended.

24 Any reply brief in connection therewith is due in accordance
with Trademark Rule 2.127(a).