Opinion
Opposition No. 117,476
July 20, 2001, Decided
THIS OPINION IS NOT A PRECEDENT OF THE TTAB
Bottorff, Administrative Trademark Judge:
This case now comes up on opposer's motion for summary judgment as to its pleaded Section 2(d) ground of opposition to registration of applicant's mark, and on applicant's Fed. R. Civ. P. 15(a) motion for leave to amend its answer to assert additional affirmative defenses and a counterclaim for cancellation of one of opposer's pleaded registrations. Each party has contested the other's motion, and the motions are fully briefed. For the reasons discussed below, opposer's motion for summary judgment is denied, and applicant's motion for leave to amend its pleading is granted in part and denied in part. Remaining response times, the discovery period, and testimony and briefing periods are reset as indicated at the end of this order.
By way of background, we note that applicant seeks registration of the mark ZIP9000, in typed form, for goods identified in the application as "computer software for archiving electronic documents in encrypted and/or compressed form." Opposer has opposed registration of applicant's mark, asserting as grounds therefor that applicant's use of the ZIP9000 mark on applicant's identified goods is likely to cause confusion with opposer's alleged family of "ZIP marks," which, according to opposer, have been previously used by opposer in connection with various computer-related goods and which are the subject of various registrations and applications owned by opposer.
Application Serial No. 75/481,615, filed May 8, 1998. The application is based on intent-to-use under Trademark Act Section 1(b), 15 U.S.C. § 1051(b).
In its amended notice of opposition, opposer pleads ownership of the twelve registrations and applications listed below. Because the current status of these registrations and applications is relevant to the Board's decision on the parties' pending motions, see infra, this listing includes the current status for each registration and application, as shown by the Office's automated records:
Registration No. 2,117,175, issued December 2, 1997, of the mark ZIP (in typed form) for "personal computer memory storage peripheral devices for storing and backing-up data and files, namely, disk drives and blank magnetic discs, computer memory storage controllers, blank computer memory storage cartridges and disks," in Class 9, with alleged first use in commerce on March 27, 1995;
Registration No. 2,142,125, issued March 10, 1998, of the mark ZIP ACROSS AMERICA for "political action committee services, namely, promoting the interests of young people and others in the field of politics; conducting public opinion polls," in class 42, with alleged first use in commerce on April 30, 1996;
Application Serial No. 75/540,466, filed August 21, 1998, seeking registration of the mark ZIP 100 (and design; "100" disclaimed) for "computer memory storage devices, namely, removable storage disk drives, blank removable storage disks and computer memory storage controllers," in Class 9, with alleged first use in commerce on March 19, 1995; Office records reveal that this application matured into Registration No. 2,344,658 on April 25, 2000 (subsequent to the filing of the amended notice of opposition), but opposer has not moved to amend its notice of opposition to identify this new registration by number and issue date (see Trademark Rule 2.106(b)(1));
Application Serial No. 75/580,184, filed October 30, 1998, seeking registration of the mark ZIP 100 (and different) design; "100" disclaimed) for "computer memory storage devices, namely, removable storage disk drives, blank removable storage disks and computer memory storage controllers," in Class 9, with alleged first use in commerce in March 1995; Office records reveal that this application matured into Registration No. 2,346,708 on May 2, 2000 (subsequent to the filing of the amended notice of opposition), but opposer has not moved to amend its notice of opposition to identify this new registration by number and issue date (see Trademark Rule 2.106(b)(1));
Application Serial No. 75/378,596, filed October 24, 1997, seeking registration of the mark ZIP BUILT-IN (and design) for "personal computer memory storage peripheral devices for storing and backing-up data and files, namely, disk drives and blank magnetic disks, computer memory storage controllers, blank computer memory storage cartridges and disks, and user manuals sold as a unit with any of the foregoing," in Class 9, with alleged first use in commerce on September 30, 1997 (although opposer's summary judgment declarant identifies November 28, 1998 as the date of first use of this mark); Office records reveal that this application matured into Registration No. 2,431,962 on February 27, 2001 (subsequent to the filing of the amended notice of opposition), but opposer has not moved to amend its notice of opposition to identify this new registration by number and issue date (see Trademark Rule 2.106(b)(1));
Application Serial No. 75/528,159, filed July 30, 1998, seeking registration of the mark ZIP 100 (in typed form; "100" disclaimed) for "computer memory storage devices, namely, removable storage disk drives, computer memory storage controllers, blank computer memory storage cartridges and disks, and computer software for use in storing, copying, finding and managing data and software drivers for removable storage drives, and user manuals sold as a unit therewith," in Class 9, with alleged first use in commerce in March 1995; Office records reveal that this application matured into Registration No. 2,462,159 on June 19, 2001 (subsequent to the filing of the amended notice of opposition), but opposer has not moved to amend its notice of opposition to identify this new registration by number and issue date (see Trademark Rule 2.106(b)(1));
Application Serial No. 75/580,188, filed October 30, 1998, seeking registration of the mark ZIP 250 (in typed form; "250" disclaimed) for "computer memory storage devices, namely, removable storage disk drives, computer memory storage controllers, blank computer memory storage cartridges and disks, and computer software for use in storing, copying, finding and managing data and software drivers for removable storage drives, and user manuals sold as a unit therewith," in Class 9, with alleged first use in commerce on December 15, 1998 - Office records reveal that this application matured into Registration No. 2,466,163 on July 3, 2001 (subsequent to the filing of the amended notice of opposition), but opposer has not moved to amend its notice of opposition to identify this new registration by number and issue date (see Trademark Rule 2.106(b) (1));
Application Serial No. 75/619,091, filed January 12, 1999, seeking registration of the mark ZIP 250 (and design; "250" disclaimed, for "computer memory storage devices, namely, removable storage disk drives, computer memory storage controllers, blank computer memory storage cartridges and disks, and computer software for use in storing, copying, finding and managing data and software drivers for removable storage drives, and user manuals sold as a unit therewith," in Class 9, with alleged first use in commerce on December 15, 1998 - Office records reveal that this application was allowed for registration on March 31, 2001, but no registration number has been issued yet;
Application Serial No. 75/384,575, filed November 4, 1997, seeking registration of the mark ZIP RESCUE WE KEEP YOU RUNNING (and design) for "computer software for use in accessing and operating computer disk and CD-ROM drives, copying to and from and retrieval of data from hard drives, disks, CD-ROMs or other peripheral storage units, managing and locating data on disks and CD-ROMs, data storage disaster recovery, and user manuals sold as a unit therewith," in Class 9; this is an intent-to-use application in which no dates of use have been alleged, although opposer's summary judgment declarant identifies November 1998 as the date of first use of this mark; Office records reveal that this mark was approved for publication on March 10, 2001, but no publication date has been set;
Application Serial No. 75/664,347, filed March 19, 1999, seeking registration of the mark ZIPCD (in typed form) for "computer memory storage devices, namely, CD, and CD-rewritable, optical disk drives, computer memory storage controllers, blank computer memory storage CD, CD-recordable, and CD-rewritable, software used in combination with any of the foregoing computer hardware, namely, memory storage controller software, and computer software for use with disk drives for backup, disaster recovery, and file copying; and user manuals sold as a unit with any of the foregoing," in Class 9, with alleged first use on August 16, 1999; Office records reveal that this application was allowed for registration on May 7, 2001, but no registration number has been issued yet;
Application Serial No. 75/544,082, filed August 28, 1998, seeking registration of the mark ADD ZIP TO YOUR PC for "computer memory storage devices, namely, blank optical and magneto-optical disk drives, blank magnetic disk drives and cartridges; computer memory storage controllers; blank computer memory storage cartridges, computer software for use in storing, copying, finding and managing file backup, disaster recovery and retrieval of data from disks operating in a removable storage drive, and user manuals sold as a unit with any of the foregoing," in Class 9; Office records reveal that a Notice of Allowance for this intent-to-use application was issued on November 28, 2000, but no Statement of Use has been filed; also, the Board notes that, whether by design or inadvertently, opposer has not identified or relied on this pleaded application in support of its summary judgment motion; and
Application Serial No. 75/189,313, filed October 29, 1996, seeking registration of the mark ZIP UNLEASHED for "computer hardware, namely, rechargeable battery packs for use with computer memory storage devices," in Class 9; this is an intent-to-use application in which no dates of use have been alleged, although opposer's summary judgment declarant identifies January 1, 1997 as the date of first use of this mark; Office records reveal that the application is subject to a Continuation of Final Refusal issued by the Trademark Examining Attorney on May 29, 2001.
Applicant filed an answer to the amended notice of opposition, by which it admitted that the registrations and applications recited in the amended notice of opposition "belong to the Opposer," but denied that opposer's pleaded marks are valid and enforceable or that they comprise a family of marks. Applicant also denied the other allegations in the notice of opposition which are essential to opposer's Section 2(d) claim, and alleged affirmatively that opposer's likelihood of confusion claim is belied by the differences between applicant's and opposer's respective marks and goods, by the existence of numerous third-party "ZIP-based" marks, and by opposer's alleged factual admission (made in connection with the prosecution of the application which led to opposer's pleaded Registration No. 2,117,175, of the mark ZIP) that opposer is unaware of any instances of actual confusion between opposer's ZIP mark and any of those third-party marks.
We turn first to opposer's motion for summary judgment on its Section 2(d) ground of opposition. Summary judgment is appropriate in cases where the moving party establishes that there are no genuine issues of material fact which require resolution at trial and that it is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). An issue is material when its resolution would affect the outcome of the proceeding under governing law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A fact is genuinely in dispute if the evidence of record is such that a reasonable factfinder could return a verdict in favor of the nonmoving party. Id. 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 American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
Applying these principles to the present case, and after careful review of the record herein, we conclude that opposer's motion for summary judgment is not well-taken. At a minimum, we find that there is a genuine issue of material fact as to whether, as opposer claims, it owns a family of "ZIP" marks. In Hester Industries Inc. v. Tyson Foods Inc., 2 USPQ2d 1645 (TTAB 1987), the Board stated:
Our discussion in this order of certain particular genuine issues of material fact should not be construed as a finding that they are the only disputed material issues of fact which must be litigated at trial.
... it is well settled that the mere ownership of a number of marks sharing a common feature (or even ownership of registrations thereof) is insufficient to establish a claim of ownership of a "family" of marks characterized by the feature in the absence of competent evidence showing that prior to the first use by the alleged interloper, the various marks said to constitute the "family," or at least a goodly number of them, were used and promoted together in such a manner as to create among purchasers an association of common ownership based upon the "family" characteristic...
See also J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Trek Bicycle Corp. v. Fier, 56 USPQ2d 1527 (TTAB 2000); and American Standard Inc. v. Scott & Fetzer Company, 200 USPQ 457 (TTAB 1978). Under this standard, opposer's summary judgment showing with respect to its alleged "family" of marks is insufficient. There is a genuine issue of material fact as to whether opposer's "ZIP" marks are used and advertised together by opposer, and are perceived by the relevant purchasing public, as a "family" of marks.
Additionally, applicant has submitted evidence (Exhibits C-F and H-J to applicant's brief in opposition to opposer's summary judgment motion) from which a reasonable factfinder might conclude that "zip" is a term of art in the computer field (see, e.g., the references to "zip files" and the ".zip" file name extension), and that various third parties in the computer field use marks and/or trade names which include the term "ZIP," e.g., "PKZIP" and "WinZip." Viewing this evidence in the light most favorable to applicant, as we must for purposes of opposer's motion, we find that it suffices to raise genuine issues of material fact as to the connotation of, and overall commercial impression created by, "ZIP" marks in general (as used in connection with goods in the computer field), and as to the strength of opposer's particular "ZIP" marks and the resulting scope of protection to be accorded them, vis-a-vis applicant's ZIP9000 mark.
Applicant's contention that opposer's ZIP marks are weak and entitled to a narrow scope of protection is not an improper attack on the validity of opposer's registered marks. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11.84 (4th Ed. 2000). The presumption of validity accorded to opposer's registrations is not conclusive of the strength of the marks, for purposes of determining likelihood of confusion. See Petro Stopping Ctrs., L.P. v. James River Petroleum, Inc., 130 F.3d 88, 44 USPQ2d 1921 (4th Cir. 1997); Munters Corp. v. Matsui Am., Inc., 909 F.2d 250, 15 USPQ2d 1666 (7th Cir. 1990). Thus, we would find that a genuine issue of material fact exists on this issue regardless of our decision, see infra, on applicant's motion for leave to amend its pleading to assert a counterclaim for cancellation of one of opposer's pleaded registrations.
In view of the existence of these genuine issues of material fact, opposer's motion for summary judgment is denied. See Fed. R. Civ. P. 56(c). Additionally, we deny applicant's request, made in its brief in opposition to opposer's summary judgment motion, that we sua sponte grant summary judgment to applicant on opposer's Section 2(d) claim.
We next consider applicant's Fed. R. Civ. P. 15(a) motion for leave to amend its answer. By its proposed amendment, applicant seeks to assert a counterclaim for cancellation of opposer's pleaded Registration No. 2,117,175, which is of the mark ZIP for "personal computer memory storage peripheral devices for storing and backing-up data and files, namely, disk drives and blank magnetic discs, computer memory storage controllers, blank computer memory storage cartridges and disks." (See supra at footnote 2.) Applicant's proposed amended answer also seeks to add two new affirmative defenses, one based on opposer's alleged lack of standing and the other based on the alleged genericness and public domain status of the term ZIP and the resulting unprotectability of opposer's pleaded ZIP marks.
Opposer has contested the motion, arguing that the amendment would be futile because applicant's proposed counterclaim and affirmative defenses are legally insufficient, that opposer would be prejudiced by the allowance of the proposed amendments, and that the proposed amendments are untimely under the Board's compulsory counterclaim rule.
Pleadings in Board proceedings may be amended in the same manner and to the same extent as in a civil action in a United States district court. 37 CFR § 2.107. Fed. R. Civ. P. 15(a) provides, in relevant part, that "leave [to amend a pleading] shall be freely given when justice so requires." In view thereof, the Board liberally grants leave to amend pleadings at any stage in the proceedings when justice so requires, unless entry of the proposed amendment would violate settled law or be prejudicial to the rights of the adverse party. See generally TBMP § 507.02, and cases cited therein.
Where the moving party seeks to add a new claim or defense, and the proposed pleading thereof is legally insufficient, or would serve no useful purpose, the Board normally will deny the motion for leave to amend. See, e.g., Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993); and Microsoft Corp. v. Qantel Business Systems Inc., 16 USPQ2d 1732 (TTAB 1990).
We turn first to the question of whether applicant's counterclaim for cancellation of opposer's pleaded Registration No. 2,117,125, as pleaded in applicant's proposed amended pleading, is legally sufficient. The counterclaim is legally sufficient if it alleges such facts as would, if proven, establish applicant's standing to challenge opposer's registration and the existence of a statutory ground for cancellation of the registration. See, e.g., Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 188 (CCPA 1982); Commodore Electronics Ltd., supra.
Applicant's standing to bring the counterclaim is inherent in its position as defendant in the opposition proceeding. See Syntex (U.S.A.) Inc. v. E.R. Squibb & Sons Inc., 14 USPQ2d 1879 (TTAB 1990); Bankamerica Corp. v. Invest America, 5 USPQ2d 1076 (TTAB 1987). Applicant identifies genericness, mere descriptiveness, and deceptive misdescriptiveness as the grounds for cancellation of opposer's pleaded registration. We have carefully reviewed applicant's proposed amended pleading in its entirety, and find that although the counterclaim is not a model of clarity, applicant's allegations therein are sufficient, under the notice pleading rules applicable to this proceeding, to state claims for each of these grounds for cancellation. Opposer's arguments to the contrary are not persuasive.
With respect to genericness, applicant has alleged, inter alia, that opposer's goods, as identified in the registration sought to be cancelled, "deliver archive/archiving functionality for computer files" (P48); that "the word 'ZIP', the ZIP file format, and the ZIP file name extension have become famously known, synonymous with, and ubiquitously used in conjunction with, the storing and archiving of computer files" (P51); and that "the word 'ZIP', is a generic identifier in the public domain for archives of computer files, and as such is ineligible for trademark protection. Opposer's mark ZIP (U.S. Registration No. 2,117,175), which also delivers archive/archiving functionality for computer files, is generic and therefore is ineligible for trademark protection" (P54).
As for mere descriptiveness, applicant alleges that "since February 13, 1989, trade and general directories disclose that the word 'ZIP' is a recognized word of art in the trade and that its use is descriptive of an archive of computer files" (P52); and that "Opposer's use of the word 'ZIP' in its mark ZIP (U.S. Registration No. 2,117,175), in conjunction with its goods and services, is descriptive in terms of their function and purpose - the goods and services deliver an archive/archiving functionality for computer files" (P55).
Finally, in support of its deceptive misdescriptiveness claim, applicant alleges (at P56) that
Opposer's use of the word "ZIP" in its mark ZIP (U.S. Registration No. 2,117,175), in conjunction with its goods and services, is misdescriptive in terms of ingredients and composition - the goods and services do not utilize, nor are in anyway [sic] dependent upon, nor are in any way associated with, the famous ZIP file format. This misdescription is a disservice to the consumer and could itself lead to confusion, mistake or deception on the part of the consumer.
As for the new affirmative defenses included in the proposed amended pleading, applicant's "genericness" or "public domain" affirmative defense is not technically a defense at all, but rather is essentially a restatement of the allegations contained in the counterclaim. Having found that applicant's pleading of its counterclaim is sufficient, we deem applicant's inclusion in its pleading of this "affirmative defense" to be unobjectionable.
However, applicant's proposed affirmative defense based on opposer's alleged lack of standing is legally insufficient and therefore is subject to being stricken. See Fed. R. Civ. P. 12(f). In order to establish standing, opposer need not plead nor prove what applicant terms "legal damages." Opposer need only plead and prove that it has a real interest in the outcome of this proceeding. See Lipton Industries, supra. Opposer's allegation of ownership and prior use of ZIP marks, and its allegation of a colorable, non-frivolous claim of likelihood of confusion, suffice, if proven, to establish opposer's standing.
We turn next to the issue of whether opposer would be unduly prejudiced by the granting of applicant's motion for leave to amend. Where, as in the present case, the motion for leave to amend is filed prior to the commencement of trial, the Board generally finds that the adverse party will not be prejudiced thereby. See TBMP § 507.02. We have carefully considered opposer's arguments in support of its claim of prejudice, but are not persuaded that any legally cognizable prejudice would result from the granting of applicant's motion for leave to amend.
It is not dispositive that opposer has expended time and resources in litigating the case to date on the basis of the issues presented in the original pleadings; the same would be true in almost every case in which a party seeks to amend its pleading to add new claims or defenses. As noted above, the Board generally grants such motions to amend if they are filed prior to trial. Moreover, and contrary to opposer's contention, the granting of applicant's motion to amend will not "render meaningless" the time and resources opposer expended in preparing and filing its summary judgment motion. Opposer's summary judgment motion has been denied on its own merits, regardless of the outcome of applicant's motion to amend. See supra at footnote 4.
Opposer also argues that this case had already been pending for a year when applicant's motion to amend was filed, that allowance of the amendment will result in a further delay in the resolution of the case, and that opposer will be prejudiced by such delay because, although applicant's mark is not currently in use, the mark is featured on applicant's website and applicant is offering to sell goods under the mark. However, if opposer believes it is being prejudiced or damaged by applicant's actual use of the mark on its website or otherwise, opposer's remedy is to seek injunctive relief from a court of competent jurisdiction. Any such prejudice is not the sort of legally cognizable prejudice which would dictate denial of applicant's motion to amend its pleading.
In short, we find that opposer will not be substantially prejudiced by the granting of applicant's motion for leave to amend its pleading. Having also found that applicant's proposed amendments (except for the "standing" affirmative defense) are legally sufficient, we conclude that, pursuant to Fed. R. Civ. P. 15(a), justice requires allowing applicant to amend its pleading.
However, opposer also has challenged applicant's proposed amendment on the ground of untimeliness, i.e., that the proposed amendment includes a compulsory counterclaim which, pursuant to 37 CFR § 2.106(b)(2)(i), was required to have been pleaded with applicant's original answer to the (amended) notice of opposition. We agree that applicant's omission of its counterclaim from the original answer is in contravention of Trademark Rule 2.106(b)(2)(i). Applicant's claim that it did not know of the grounds for its counterclaim at the time it filed its original answer to the notice of opposition is not particularly persuasive, given applicant's likely knowledge of the industry and of the allegedly well-known significance of the term ZIP in the industry.
Nonetheless, for many of the same reasons discussed above, we find that justice requires allowing applicant to assert, by way of amendment, its omitted compulsory counterclaim for cancellation of opposer's pleaded registration. Fed. R. Civ. P. 13(f), which is made applicable to this proceeding by 37 CFR §§ 2.107 and 2.116(a), see See' s Candy Shops, Inc. v. Campbell Soup Co., 12 USPQ2d 1395 (TTAB 1989), provides that "when a pleader fails to set up a counterclaim through oversight, inadvertence, or excusable neglect, or when justice requires, the pleader may by leave of court set up the counterclaim by amendment."
In deciding motions under Fed. R. Civ. P. 13(f), "the courts generally have adhered to the liberal amendment policy of Rule 15 and have freely granted leave to add omitted counterclaims." Wright, Miller & Kane, 6 Federal Practice and Procedure: Civil 2d § 1430, at pp. 223-24 (1990). This is especially so when the omitted counterclaim is a compulsory counterclaim: "However, when the omitted counterclaim is compulsory, the reasons for allowing its introduction by amendment become even more persuasive, since an omitted compulsory counterclaim cannot be asserted in subsequent cases (at least in the federal courts) and the pleader will lose the opportunity to have the claim adjudicated." Id at 227. As discussed above in connection with our analysis under Fed. R. Civ. P. 15(a) , we find that opposer would not be unduly prejudiced by our allowing applicant to assert its counterclaim by amendment. By contrast, applicant certainly would be prejudiced if its amendment were to be disallowed, inasmuch as it would be foreclosed from asserting its claim against opposer's Registration No. 2,117,175 not only in this proceeding but likely in any future proceeding as well.
An additional reason for allowing applicant to amend its pleading to assert its compulsory counterclaim against opposer's pleaded Registration No. 2,117,175 is that, as noted supra at footnote 2, opposer has pleaded ownership of numerous other applications, some of which have matured to registration and others which appear to be on the verge of issuance. However, none of those subsequently-issued registrations is a "pleaded registration," i.e., "a registration identified by number and date of issuance in an original notice of opposition or in any amendment thereto made under Rule 15, Federal Rules of Civil Procedure." 37 CFR § 2.106(b)(1). Therefore, none of those registrations is currently subject to the Board's compulsory counterclaim rule, which applies only to "registrations pleaded in the opposition." 37 CFR § 2.106(b)(2)(i). See M. Aron Corp. v. Remington Products, Inc., 222 USPQ 92 (TTAB 1984); TBMP § 319.04.
It appears from opposer's summary judgment arguments and submissions that opposer, in fact, intends to rely on those subsequently-issued registrations in support of its Section 2(d) claim. To do so, opposer must move for leave to amend its notice of opposition to properly plead the registrations. See Long John Silver's Inc. v. Lou Scharf Inc., 213 USPQ 263 (TTAB 1982). Applicant then would be entitled to amend its answer to assert its compulsory counterclaims against those registrations. In view thereof, no prejudice to opposer can result from allowing applicant's counterclaim against Registration No. 2,117,175 to go forward as well, cf. See' s Candy Shops, Inc., supra, and such allowance will further the Board's general policy of reaching a full adjudication of the parties' respective claims wherever possible.
Thus, the Board finds, in its discretion, that justice requires allowing applicant to amend its answer to assert its counterclaim for cancellation of opposer's Registration No. 2,117,175. See Fed. R. Civ. P. 15(a) and 13(f). Applicant's motion accordingly is granted, and its amended answer is entered. However, paragraphs 39-45 of the amended answer, which comprise applicant's "lack of standing" affirmative defense, are stricken. See Fed. R. Civ. P. 12(f).
Opposer is allowed until thirty days from the date stamped on this order to file and serve its answer to applicant's counterclaim. See 37 CFR § 2.106(b)(2)(iii).
Opposer is allowed until thirty days from the date stamped on this order to file and serve its answer to applicant's counterclaim. See 37 CFR § 2.106(b)(2)(iii).
Additionally, and to avoid any future complications or unnecessary motion practice pertaining to the pleadings in this case, opposer is allowed until thirty days from the date stamped on this order to file and serve an amended notice of opposition which identifies, by number and date of issuance, any additional registration(s) upon which opposer intends to rely at trial. See 37 CFR § 2.106(b)(i). Applicant then is allowed until thirty days from the date of service of such amended notice of opposition to file and serve its answer thereto, including any counterclaim(s) for cancellation of opposer's newly-pleaded registration(s). Upon applicant's filing of any such counterclaim(s), the Board, upon determining that all formal requirements (e.g., the required filing fees) for the counterclaim(s) have been satisfied, shall set the time for the filing and service of opposer's answer(s) thereto.
If opposer intends to rely on any registration which has not yet issued as of opposer's filing of the amended notice of opposition referred to in the preceding paragraph, opposer is allowed until thirty days from the date of issuance of such registration(s) to file and serve its further-amended pleading which identifies such including any additional counterclaims. If the counterclaims are in order, the Board then shall set opposer's time to file and serve its answer(s) to the counterclaim(s).
Proceedings herein, which have been suspended pending disposition of opposer's summary judgment motion, are resumed. In view of the new issues raised by applicant's amended pleading, the discovery period is hereby reopened, and testimony periods are reset in accordance with the trial schedule set out below:
IN EACH INSTANCE, a copy of the transcript of testimony, together with copies of documentary exhibits, must be served on the adverse party WITHIN THIRTY DAYS after completion of the taking of testimony. Trademark Rule 2.125.
THE PERIOD FOR DISCOVERY TO CLOSE:
Oct. 30, 2001
Testimony period for Iomega
as plaintiff in the opposition
to close:
Jan. 28, 2002
(opening thirty days prior thereto)
Testimony period for Information
Technology as defendant in the opposition
and as plaintiff in the counterclaim
to close:
March 28, 2002
(opening thirty days prior thereto)
Testimony period for Iomega
as defendant in the counterclaim
and its rebuttal testimony as
plaintiff in the opposition to close:
May 27, 2002
(opening thirty days prior thereto)
Rebuttal testimony period for
Information Technology as plaintiff
in the counterclaim to close:
July 11, 2002
(opening fifteen days prior thereto)
BRIEFS shall be due as follows:
[See Trademark Rule 2.128 (a) (2)].
Brief for Iomega as plaintiff
in the opposition shall be due:
Sept. 9, 2002
Brief for Information Technology as
defendant in the opposition and as
plaintiff in the counterclaim
shall be due:
Oct. 9, 2002
Brief for Iomega as defendant
in the counterclaim and its reply brief,
(if any) as plaintiff in the opposition
shall be due:
Nov. 8, 2002
Reply brief, (if any), for Information
Technology as plaintiff in the
counterclaim shall be due:
Nov. 23, 2002
If the parties stipulate to any extension of these dates, the papers should be filed in triplicate and should set forth the date in the format shown in this order. See Trademark Rule 2.121(d). An oral hearing will be set only upon request filed as provided by Trademark Rule 2.129. See Trademark Rule 1.7 regarding periods closing on Saturday, Sunday or Federal holiday.