Motion to Strike Bogus Affirmative Defenses: Worth the Effort?

When I receive an answer to a notice of opposition or a petition for cancellation that contains boilerplate "affirmative defenses," I usually don't bother to move to strike because it's not worth the time and expense. Once in a while I do make a motion, depending on how ornery I feel at the time. Here's a case that I noticed yesterday via TTAB Across the Board, in which the Opposer brought such a motion. Castro v. Cartwright, Opposition No. 91188477 (September 5, 2009) [not precedential].


Applicant Rick Cartwright asserted six "affirmative defenses": (1) failure to state a claim upon which relief can be granted; (2) waiver; (3) estoppel; (4) abandonment; (5) failure to police and enforce; and (6) no trademark use by Opposer. Carlos A. Castro moved to strike all six defenses, and the Board agreed as to four of them. [Can you guess which ones? ed.]

"Motions to strike are not favored," said the Board, further noting that it "may decline to strike even objectionable pleadings where their inclusion will not prejudice the adverse party, but rather will provide fuller notice of the basis for a claim or defense." See FRCP 12(f) and TBMP Section 506.

As to defense (1), the Board noted that "failure to state a claim" is not really an affirmative defense "because it relates to an assertion of the insufficiency of the pleading of opposer’s claim rather than a statement of a defense to a properly pleaded claim."

In determining the sufficiency of the notice of opposition, the Board examines the notice to see if (1) the plaintiff has standing to maintain the proceeding, and (2) a valid ground exists for opposing the mark. Opposer pleaded standing (prior use) and alleged a valid claim (likelihood of confusion). Therefore the Board granted the motion to strike the first "affirmative defense."

As to Applicant Cartwrights’s second defense, that opposer’s claim is barred by the doctrine of waiver, "this assertion is insufficient on its face inasmuch as it fails to give opposer or the Board any factual basis for the defense." And so the Board granted the motion to strike defense (2).

The third asserted defense, estoppel, "may be invoked only by one who has been prejudiced by the conduct relied upon to create the estoppel." Here, Cartwright did not allege that "he was induced to select his mark because of the conduct of opposer or that applicant is in privity with ... third parties who have assertedly used similar marks for similar goods with opposer’s acquiescence thereto," and therefore his third defense was also stricken as insufficient.

Likewise, the Board construed defense (5) "to essentially restate that applicant has acquiesced to or not asserted its trademark rights, if any, against third parties." However, Cartwright made no allegations that he is in privity with any third party who relied on opposer’s conduct. And so the fifth defense was stricken.

Cartwright's fourth and sixth affirmative defenses (abandonment and lack of trademark use) involved an absence of proprietary rights in Opposer's alleged mark. The allegations "provide opposer with notice of applicant’s position with respect to opposer’s claim of priority and, thus, primarily function to amplify applicant’s denial of opposer’s claim of likelihood of confusion and do not prejudice opposer." Therefore, the Board denied Castro's motion to strike those two defenses.

The Board then re-set the various discovery and trial dates and gave Cartwright thirty days to file an amended answer "that states a proper affirmative defense of estoppel, as discussed supra, assuming applicant can make the factual allegations that support such a defense."

TTABlog comment: Well, do you think it's worth the time and effort to move to strike those defenses? If so, why? Presumably, the defendant will not be able to prove these defenses anyway, so why bother to strike them (other than to cause the other side some grief)?

Text Copyright John L. Welch 2009.