Valvoline Licensing & Intellectual Property LLCv.Sunpoint International Group USA Corp.

Trademark Trial and Appeal Board

Jul 22, 2021

91252877 (T.T.A.B. Jul. 22, 2021)

RSC
July 22, 2021

Opposition No. 91252877

Valvoline Licensing & Intellectual Property
LLC

v.
Sunpoint International Group USA Corp.

Before Zervas, Bergsman, and Goodman,
Administrative Trademark Judges.

By the Board:

This proceeding comes before the Board for consideration of the following motions:
(1) Valvoline Licensing & Intellectual Property LLC’s (“Opposer”) motion for
summary judgment on Sunpoint International Group USA Corp.’s (“Applicant”)
defense of res judicata;1 (2) Applicant’s motion for summary judgment on its defense
of res judicata;2 (3) Applicant’s combined motion for leave to amend its answer to add
a defense of collateral estoppel and cross-motion for summary judgment on its

1 11 TTABVUE. References to the pleadings, the evidence of record, and the parties’ briefs
refer to the Board’s TTABVUE docket system. Coming before the designation TTABVUE is
the docket entry number, and coming after this designation are the page and paragraph
reference, if applicable.
2 12 TTABVUE.
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 A
PRECEDENT OF THE
TTAB
Opposition No. 91252877

2
defenses of res judicata and collateral estoppel,3 (4) Opposer’s cross-motion for
summary judgment on collateral estoppel,4 and (5) Opposer’s motion for leave to
amend its notice of opposition.5
The parties’ July 29, 2020 motions for summary judgment and Opposer’s motion
for leave to amend are fully briefed. Applicant’s cross-motion for summary judgment
on res judicata, or claim preclusion, and collateral estoppel is contested by Opposer.6
Applicant’s motion for leave to amend its answer is unopposed.7
I. Background
Applicant seeks registration on the Principal Register of the standard character
mark MAXVOLINE for “automobile lubricants” in International Class 4. The
application, Serial No. 88471565, was filed on June 13, 2019, based on Applicant’s
asserted bona fide intention to use the mark in commerce under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b).
Opposer opposes registration of Applicant’s mark on the sole ground of likelihood
of confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on

3 15 TTABVUE. Applicant’s combined motion also sought summary judgment on Opposer’s
claim of likelihood of confusion. However, on October 7, 2020, the Board ordered that it would
only address the cross-motions for summary judgment on res judicata and collateral estoppel,
and all other motions were denied without prejudice. 22 TTABVUE.
4 20 TTABVUE.
5 19 TTABVUE.
6 Noting that Applicant filed its own motion for summary judgment on collateral estoppel,
the Board stated in its October 7, 2020 order that further briefing was unnecessary but
allowed Applicant the option of filing a combined reply in support of its motion and response
to Opposer’s cross-motion for summary judgment. 22 TTABVUE 2.
7 20 TTABVUE 10.
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3
Opposer’s prior use and registration of the marks VALVOLINE, MAX LIFE, and
MAXLIFE, all for automotive maintenance services, lubricants for automobiles,
antifreeze, transmission fluids, and other automotive products. In support of its
claim, Opposer pleaded ownership of the following seven registrations, and alleged
Applicant’s mark “is a term formed by conjoining a portion of Opposer’s ‘MAX LIFE’
mark with Opposer’s ‘VALVOLINE’ mark” and “[t]he trademark ‘MAXVOLINE’ is
confusingly similar to Opposer’s conjointly used trademarks MAX LIFE and
VALVOLINE”.8
MARK REG. NO. REG. DATE GOODS/SERVICES
VALVOLINE 53237 May 29, 1906 lubricating-oils
VALVOLINE 739915 October 30, 1962 petroleum products for use in
connection with vehicles
operated by motive power and in
connection with engines and
machinery generally

VALVOLINE 1084465 February 7, 1978 fuels for internal combustion
engines-namely, starting fluids,
fuel and oil mixtures for use in
internal combustion engines,
and prepared compositions for
mixing with gasoline and other
fuels in preparing fuel mixtures

MAX LIFE 2621773 September 17, 2002 motor oils, lubricants and
greases all for motor vehicles

MAXLIFE 2513312 November 27, 2001 motor oils, lubricants and
greases, all for motor vehicles

MAX LIFE 2518757 December 11, 2001 automatic transmission fluid

88 Notice of Opposition, ¶¶ 4, 5, 9, 10 (1 TTABVUE 7-9).
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MARK REG. NO. REG. DATE GOODS/SERVICES
MAXLIFE 2518758 December 11, 2001 automatic transmission fluid

In its answer, Applicant denied the salient allegations in the notice of opposition,
asserted the affirmative defense of res judicata based on the outcome of Cancellation
No. 92057294 involving the parties, and counterclaimed to cancel Opposer’s pleaded
registrations for the MAXLIFE or MAX LIFE marks (Registration Nos. 2621773,
2518757, 2513312, and 2518758) on the sole ground of genericness.
On June 29, 2020, the Board denied Opposer’s motion to strike Applicant’s defense
of res judicata but granted Opposer’s motion to dismiss Applicant’s counterclaim
based on genericness as the counterclaim was compulsory in Cancellation No.
92057294.9
II. The Prior Proceeding
In Cancellation No. 92057294 (the “Prior Proceeding”) Opposer, and its
predecessor-in-interest, sought to cancel Applicant’s registrations for the marks
MAXVOLINE for “lubricants for automobiles” on various grounds, including
likelihood of confusion.10 Opposer relied on the same registrations in the Prior
Proceeding as it does in the current proceeding.11 The Board issued a decision on the

9 10 TTABVUE.
10 Applicant’s registrations at issue in the cancellation were Registration No. 3450454, for
the mark MAXVOLINE in standard characters, and Registration No. 3454800 for the mark
MAXVOLINE and design. 11 TTABVUE 20-21.
11 Compare Notice of Opposition, ¶¶ 4, 5 (1 TTABVUE 7-8) with 11 TTABVUE 22.
Opposition No. 91252877

5
merits in the Prior Proceeding on April 26, 2019, granting the petition to cancel on
the claim of nonuse.12 Then, “[f]or purposes of completeness” the Board also
addressed, inter alia, Opposer’s likelihood of confusion claim and determined Opposer
had “not carried [its] burden to establish by a preponderance of the evidence that
Applicant’s MAXVOLINE marks are likely to cause consumer confusion with
[Opposer’s] marks VALVOLINE and MAX LIFE.”13 Judgment was not entered on the
likelihood of confusion claim. The Board’s decision ultimately granted the petition to
cancel only “on the claim that [Applicant] failed to use its marks at the time [it] filed
its Statements of Use and by the expiration of the time for filing its Statements of
Use.”14
Applicant did not appeal this decision; rather, it filed its subject application on
June 13, 2019.
III. The Cross-Motions for Summary Judgment
We first address the parties’ cross-motions for summary judgment on the issues
of res judicata, also referred to as claim preclusion, and collateral estoppel,
specifically whether either doctrine applies based on the final decision in the Prior
Proceeding.
Summary judgment is appropriate only where the movant shows the absence of
any genuine dispute as to any material fact, and that it is entitled to judgment as a

12 11 TTABVUE 50.
13 Id. at 50-75.
14 Id. at 88.
Opposition No. 91252877

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matter of law. Fed. R. Civ. P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317,
323-24 (1986); Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560,
4 USPQ2d 1793, 1796 (Fed. Cir. 1987); Freki Corp. N.V. v. Pinnacle Entm’t, Inc.,
126 USPQ2d 1697, 1700 (TTAB 2018). In deciding a motion for summary judgment,
the Board may not resolve any factual dispute; it may only determine whether a
genuine dispute of material fact exists. See, e.g., Meyers v. Brooks Shoe Inc., 912 F.2d
1459, 16 USPQ2d 1055, 1056 (Fed. Cir. 1990); Lloyd’s Food Prods. Inc. v. Eli’s Inc.,
987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993).
The doctrine of claim preclusion bars a second action when there is: (1) an identity
of parties or their privies; (2) 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. See
Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir.
2000); Chutter, Inc. v. Great Concepts, LLC, 119 USPQ2d 1865, 1868 (TTAB 2016).
“A valid and final judgment rendered in favor of the defendant bars another action
by the plaintiff on the same claim and encompasses claims that were raised or could
have been raised in the earlier action.” Chutter, 119 USPQ2d at 1868.
Under the doctrine of issue preclusion, or collateral estoppel, a party may be
barred from re-litigating the same issue in a second action involving the parties. B&B
Hardware, Inc. v. Hargis Indus., Inc., 125 S. Ct. 1293, 113 USPQ2d 2045, 2051
(2015). Issue preclusion requires the following: (1) identity of an issue in a prior
proceeding, (2) that the identical issue was actually litigated, (3) that determination
of the issue was necessary to the judgment in the prior proceeding, and (4) that the
Opposition No. 91252877

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party defending against preclusion had a full and fair opportunity to litigate the issue
in the prior proceeding. Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d
1229, 76 USPQ2d 1310, 1313 (Fed. Cir. 2005) (citing Montana v. U.S., 440 U.S. 147,
153-55 (1979)).
If a party cannot appeal the outcome of an earlier proceeding, then the second
action is not barred under either type of preclusion. See AVX Corp. v. Presidio
Components, Inc., 923 F.3d 1357, 2019 USPQ2d 171683, at *4-5 (Fed. Cir. 2019) (it is
“a traditional preclusion principle that neither claim nor issue preclusion applies
when appellate review of the decision with a potentially preclusive effect is
unavailable”) (citations omitted); see also Warner/Elektra/Atlantic Corp. v Cty. of
DuPage, 991 F.2d 1280, 1282 (7th Cir. 1993) (“an unappealable finding does not
collaterally estop”); Aviation Enters., Inc. v. Orr, 716 F.2d 1403, 1407 (D.C. Cir. 1983)
(appellate court lacked authority to consider appeal taken solely to secure review of
findings that might have res judicata effect). Thus, we first address Opposer’s
contention that, as the prevailing party, it could not have appealed the Board’s
findings regarding likelihood of confusion in the Prior Proceeding.
As a general rule, a prevailing party may not appeal from a favorable judgment
simply to obtain review of findings it deems erroneous. Mathias v. Worldcom Tech.,
Inc., 535 U.S. 682, 684 (2002) (per curiam) (citing N.Y. Tel. Co. v. Maltbie, 291 U.S.
645 (1934) (per curiam)); see also Allflex USA, Inc. v. Avid Identification Sys, Inc.,
704 F.3d 1362, 105 USPQ2d 1643, 1647 (Fed. Cir. 2013) (although the district court
held that appellant’s failure to disclose was material for purposes of an inequitable
Opposition No. 91252877

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conduct claim, appellant could not appeal that ruling because district court dismissed
the case without finding the patents unenforceable in the inequitable conduct claim).
This general rule is applicable to trademark inter partes proceedings. See 15 U.S.C.
§ 1071(a)(1) (right to appeal granted only to parties “dissatisfied with the decision” of
the Board); see also Maremont Corp. v. Air Lift Co., 463 F.2d 1114, 174 USPQ 395,
396 (CCPA 1972). In other words, if a plaintiff has obtained all of its requested relief,
then it normally lacks standing to appeal. Deposit Guar. Nat’l Bank v. Roper, 445
U.S. 326, 333 (1980); see also Intellectual Prop. Dev., Inc. v. TCI Cablevision of Cal.,
Inc., 248 F.3d 1333, 58 USPQ2d 1681, 1684 (Fed. Cir. 2001); 15A C. Wright, A. Miller
& M. Kane, FED. PRAC. & PROC. CIV. § 3902 (2d ed. Apr. 2021).
In the Prior Proceeding, Opposer asserted various grounds against Applicant’s
continued registration of its MAXVOLINE marks. The sole relief requested was
cancellation of the registrations―which is the full extent of the relief the Board could
have granted in the case. Trademark Act Section 17, 15 U.S.C. § 1067; see Conolty v.
Conolty O’Connor NYC LLC, 111 USPQ2d 1302, 1309 (TTAB 2014); McDermott v.
S.F. Women’s Motorcycle Contingent, 81 USPQ2d 1212, 1216 (TTAB 2006) (“[T]he
Board’s jurisdiction is limited to determining whether trademark registrations
should issue or whether registrations should be maintained.”) The Board granted
Opposer the full relief it sought, but did so solely on the ground of nonuse.
While the Board also determined Opposer did not carry its “burden to establish
by a preponderance of the evidence that Applicant’s MAXVOLINE marks are likely
Opposition No. 91252877

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to cause confusion with [Opposer’s] marks VALVOLINE and MAX LIFE”,15 this
determination did not change the final judgment, which was to cancel the
registrations. If Applicant had appealed the judgment against it in the Prior
Proceeding, Opposer would have been able to assert likelihood of confusion as an
alternative ground for affirmance of the Board judgment in its favor. See, e.g., M.Z.
Berger & Co. v. Swatch AG, 559 F. App’x 1009 (Fed. Cir. 2014). But Applicant did not
appeal the final judgment in the Prior Proceeding. And inasmuch as Opposer received
all the relief it sought, Opposer could not have appealed in its own right. See id.;
Maremont Corp., 174 USPQ at 396.16
Thus, this case falls within the rule that, where a party cannot appeal the outcome
of an earlier proceeding (or cannot cross-appeal where the other party appealed), then
the second action is not barred under either type of preclusion. See AVX Corp., 2019
USPQ2d 171683, at *4-5. We therefore find that Opposer is not precluded as a matter
of law, under either the doctrine of claim preclusion or collateral estoppel, from
raising likelihood of confusion as a ground against registration of Applicant’s current
application for the mark MAXVOLINE. Accordingly, Opposer’s motions for summary
judgment on Applicant’s defenses of res judicata, or claim preclusion, and collateral
estoppel are granted, and Applicant’s cross-motions for summary judgment on the

15 11 TTABVUE 75.
16 Cf. Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1379 n.
8 (Fed. Cir. 2018) (appellee who successfully opposed registration on the Principal Register
based on descriptiveness claim had standing to cross-appeal dismissal of genericness claim
because prevailing on that claim would have qualified the appellee for the additional relief of
keeping the applicant’s mark off the Supplemental Register as well).
Opposition No. 91252877

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same are denied. Applicant’s defenses of res judicata and collateral estoppel are
therefore dismissed with prejudice.
IV. Opposer’s Motion for Leave to Amend
We next address Opposer’s motion to amend the notice of opposition to plead prior
use and registration of the mark MAXLIFE TECHNOLOGY as an additional basis
for its Section 2(d) claim. The proposed amended notice of opposition indicates the
corresponding Registration No. 4800587 issued on August 25, 2015, prior to the filing
of this opposition.17 Opposer asserts that it found, during its investigation of facts
related to the parties’ motions for summary judgment, that “its own conjoint use of
VALVOLINE with MAX LIFE has evolved to increasingly include conjoint use of
VALVOLINE, along with the phrase, ‘With MAXLIFE TECHNOLOGY,’” and the
proposed amendment is necessary to accurately reflect the current factual situation
of Opposer’s pleaded Section 2(d) claim.18 Opposer further contends that Applicant
will not suffer any prejudice by the proposed amendment as the proceeding has only
recently begun, neither party has engaged in any discovery yet, and the proposed
amendment would not significantly expand the scope of the case.
In response, Applicant argues the “protective part of the mark” in Registration
No. 4800587 is MAXLIFE, the mark MAXLIFE was asserted in the Prior
Proceeding,19 and the addition of TECHNOLOGY weakens Opposer’s arguments of

17 19 TTABVUE 14, ¶ 7.
18 Id. at 4-5.
19 29 TTABVUE 3.
Opposition No. 91252877

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conjoined use. Applicant also asserts that the principle of judicial estoppel should
apply inasmuch as Opposer argued in its motion to dismiss Applicant’s counterclaim
that this proceeding and the Prior Proceeding arose from the same transaction or
occurrence. Applicant contends the Board accepted Opposer’s position when it
dismissed Applicant’s counterclaim in this proceeding, and to allow Opposer to take
an inconsistent position would provide an unfair benefit to Opposer while creating an
unfair detriment to Applicant.
The Board liberally grants leave to amend pleadings at any stage of a proceeding
when justice so requires, unless entry of the proposed amendment would violate
settled law or be prejudicial to the rights of the adverse party or parties. Trademark
Rule 2.107(a), 37 C.F.R. § 2.107(a); Fed. R. Civ. P. 15; see also, e.g., Am. Express Mktg.
& Dev. Corp. v. Gilad Dev. Corp., 94 USPQ2d 1294, 1297 (TTAB 2010); Polaris Indus.
v. DC Comics, 59 USPQ2d 1798, 1799 (TTAB 2001). This is so even when a plaintiff
seeks to amend its complaint to plead an additional claim. See Commodore Elecs. Ltd.
v. CBM K. K., 26 USPQ2d 1503, 1506–1507 (TTAB 1993); see also TRADEMARK TRIAL
AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 507.02 (2021). In deciding
whether to grant leave to amend, the Board may consider undue delay, prejudice to
the non-moving party, bad faith or a dilatory motive, futility of the amendment, and
whether the party has previously amended its pleadings. Foman v. Davis, 371 U.S.
178, 182 (1962); Kemin Foods, L.C. v. Pigmentos Vegetales Del Centro S.A. de C.V.,
464 F.3d 1339, 80 USPQ2d 1385, 1395 (Fed. Cir. 2006); Am. Express Mktg. & Dev.
Corp., 94 USPQ2d at 1297.
Opposition No. 91252877

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Registration No. 4800587 issued prior to Opposer’s filing of its notice of opposition
in this proceeding. However, this proceeding is in its infancy and discovery had not
opened prior to the suspension for the parties’ motions for summary judgment. See
Trademark Rule 2.127(d), 37 C.F.R. § 2.127(d). Accordingly, Opposer did not unduly
delay in filing the motion for leave to amend its pleading to add Registration No.
4800587. See Commodore Elecs., 26 USPQ2d at 1505-06 (no undue delay in view of
prior motion for summary judgment, and discovery was still open when motion was
filed); see also U.S. Olympic Comm. v. O-M Bread Inc., 26 USPQ2d 1221, 1222 (TTAB
1993) (proceeding still in pretrial stage and discovery had been extended); Focus 21
Int’l v. Pola Kasei Kogyo K. K., 22 USPQ2d 1316, 1318 (TTAB 1992) (granting motion
to amend filed prior to opening of petitioner’s testimony period).
Applicant also has not shown it would suffer any cognizable prejudice if Opposer
is allowed to amend the notice of opposition to plead ownership of an additional
registration for a related mark.20 Applicant’s arguments regarding judicial estoppel
are misplaced inasmuch as they rest on the presumption that, in dismissing
Applicant’s counterclaim in the present opposition, the Board necessarily determined
that the current proceeding and the Prior Proceeding arose from the same transaction
or occurrence. This is not accurate. The Board dismissed Applicant’s counterclaim
against Opposer’s pleaded registrations for the MAXLIFE or MAX LIFE marks

20 Prejudice contemplates an adverse effect on the non-movant’s ability to litigate the case,
e.g., where the movant’s delay has resulted in a loss or unavailability of evidence or
witnesses, which otherwise would have been available. See Trek Bicycle Corp. v. Styletrek
Ltd., 64 USPQ2d 1540, 1541 (TTAB 2001) (citing Pratt v. Philbrook, 109 F.3d 18 (1st Cir.
1997)).
Opposition No. 91252877

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(Registration Nos. 2621773, 2518757, 2513312, and 2518758) because Applicant
failed to plead a compulsory counterclaim in the prior cancellation proceeding against
the same pleaded registrations.21 Opposer’s Registration No. 4800587, for the mark
MAXLIFE TECHNOLOGY, was not pleaded in the Prior Proceeding. Therefore,
judicial estoppel is inapplicable. See Bos. Chicken Inc. v. Bos. Pizza Int’l Inc., 53
USPQ2d 1053, 1055 (TTAB 1999) (setting forth the factors to be considered in
applying judicial estoppel).
Moreover, Applicant’s arguments are based on a misapplication of the rules
governing preclusion and compulsory counterclaims. When a plaintiff brings a second
action related to an earlier action, the second action is precluded if three elements
are met, including that the second claim is based on the same set of transactional
facts as the first. However, when “a party seeks to preclude a defendant in the first
action from bringing certain claims in the second action, the rules of defendant
preclusion apply.” See Freki Corp., 126 USPQ2d at 1701. Under defendant preclusion,
a defendant is precluded if its “claim or defense in the second action was a compulsory
counterclaim that the defendant failed to assert in the first action,” as is the case
here.
The remainder of Applicant’s argument goes to the ultimate merits of the proposed
claim, not whether Opposer should be granted leave to amend its pleading to assert
Registration No. 4800587 in support of its Section 2(d) claim. Moreover, in view of
our determination above that res judicata and collateral estoppel cannot apply,

21 10 TTABVUE 4, 7-9.
Opposition No. 91252877

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Applicant’s arguments related to Opposer’s failure to assert Registration No. 4800587
in Cancellation No. 92057294 are unavailing. Opposer has sufficiently pleaded the
claim of likelihood of confusion based on Opposer’s conjoint use of its pleaded marks.22
See Nike, Inc. v. Palm Beach Crossfit Inc., 116 USPQ2d 1025, 1030 (TTAB 2015);
Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1348-49 (TTAB 2017)
(pleading of likelihood of confusion based on conjoint use). Whether Opposer can
prove its claim is a matter to be determined after the introduction of evidence at trial
or in connection with a motion for summary judgment. See Focus 21 Int’l, 22 USPQ2d
at 1318; Flatley v. Trump, 11 USPQ2d 1284, 1286 (TTAB 1989).
In view of the foregoing, and because the Board liberally grants leave to amend
pleadings when justice so requires, Opposer’s motion for leave to amend its notice of
opposition is granted. Opposer’s amended notice of opposition, filed September 25,
2020, is accepted and entered as its operative pleading.23 Applicant is allowed until
THIRTY DAYS from the date of this order to file an answer to the amended notice
of opposition.

22 Opposer’s amended notice of opposition includes allegations regarding asserted fame and
Trademark Act Section 43(c), 15 U.S.C. § 1125(c). Inasmuch as Opposer’s proposed amended
pleading fails to sufficiently plead dilution under Trademark Act Section 43(c), the Board
does not construe these allegations as asserting dilution. See Nike Inc. v. Maher, 100 USPQ2d
1018, 1023 (TTAB 2011); Toro v. ToroHead Inc., 61 USPQ2d 1164, 1173 (TTAB 2001); see
also Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1723-24
(Fed. Cir. 2012).
23 19 TTABVUE 11-19.
Opposition No. 91252877

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V. Accelerated Case Resolution
Although claim preclusion and collateral estoppel do not apply in this proceeding,
in the Prior Proceeding the parties previously engaged in discovery on, and submitted
evidence regarding, many of the issues likely to be relevant in this proceeding.
Therefore, the Board strongly encourages the parties to forego the traditional trial
schedule in favor of proceeding with Accelerated Case Resolution (ACR), or at a
minimum, to agree to streamline discovery and trial evidence in this proceeding
including a stipulation that evidence from Cancellation No. 92057294 may be used as
evidence in this proceeding. See TBMP § 705. Such agreements would assist in
getting this case “back on track” and serve them well.
ACR is an alternative to typical inter partes Board proceedings in which parties
can obtain a determination of their claims and defenses using simplified methods of
introducing evidence and in a shorter time period than contemplated by the standard
Trademark Rules. See TBMP §§ 528.05(a)(2) and 705, and decisional law cited
therein. The form of ACR can vary. The parties may agree to submit summary
judgment briefs and accompanying evidentiary submissions that encompass both the
trial and briefing periods and enter into stipulations relating to the submission of
evidence. Alternatively, the parties may stipulate to the trial record in whole or in
part, and submit trial briefs. For example, the parties could provide a joint statement
of undisputed facts to narrow the issues before the Board; the parties could stipulate
to limit the Board’s determination under Section 2(d) to certain DuPont factors; the
parties could stipulate to facts, supported by the record, that support Opposer’s
Opposition No. 91252877

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entitlement to a statutory cause of action; the parties could stipulate to Opposer’s
priority; and/or the parties could stipulate to the admissibility of certain testimony
and evidence from the prior cancellation proceeding or the admissibility of additional
evidence.
If the parties have questions about their ACR options, they are urged to contact
the assigned Interlocutory Attorney.
VI. Resumption of Proceedings
Proceedings are resumed. Applicant is allowed until thirty days from the date
of this order to file an answer to the amended notice of opposition, and remaining
dates are reset as follows:24
Discovery Opens 9/22/2021
Initial Disclosures Due 10/22/2021
Expert Disclosures Due 2/19/2022
Discovery Closes 3/21/2022
Plaintiff’s Pretrial Disclosures Due 5/5/2022
Plaintiff’s 30-day Trial Period Ends 6/19/2022
Defendant’s Pretrial Disclosures Due 7/4/2022
Defendant’s 30-day Trial Period Ends 8/18/2022
Plaintiff’s Rebuttal Disclosures Due 9/2/2022
Plaintiff’s 15-day Rebuttal Period Ends 10/2/2022
Plaintiff’s Opening Brief Due 12/1/2022
Defendant’s Brief Due 12/31/2022
Plaintiff’s Reply Brief Due 1/15/2023
Request for Oral Hearing (optional) Due 1/25/2023

24 Opposer stated, and Applicant does not dispute, that the parties conducted the required
discovery conference on August 4, 2020. 20 TTABVUE 9.
Opposition No. 91252877

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The Federal Rules of Evidence generally 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).