Tuesday, April 05, 2016

Precedential No. 8: TTAB Grants Pre-Trial Motion Limiting Goods in Opposed Application

In this consolidated opposition to registration of the mark SOYSALUD for various products in classes 29, 30, and 32, applicant filed a motion to amend its opposed Section 1(b) intent-to-use applications to limit the goods (various beverages) to soy-based products. Opposer based its opposition in part on Section 2(a) deceptiveness and Section 2(e)(1) deceptive misdescriptiveness, alleging that applicant's original identifications of goods included products that did not contain soy. Applying the framework set out in Johnson & Johnson v. Stryker Corp., 109 USPQ2d 1077 (TTAB 2013) [TTABlogged here], the Board granted the motion. Wisconsin Cheese Group, LLC v. Comercializadora de Lácteos y Derivados, S.A. de C.V., 118 USPQ2d 1262 (TTAB 2016) [precedential].


Rule 2.133 provides that "An application subject to an opposition may not be amended in substance ... except with the consent of the other party or parties and the approval of the Trademark Trial and Appeal Board, or upon motion granted by the Board." The Board will usually defer a ruling on such a motion until final decision. However, under Stryker, the Board ruled that an unconsented motion may be granted before trial under the following circumstances:

1) the proposed amendment must serve to limit the broader identification of goods or services;
2) the applicant must consent to the entry of judgment on the grounds for opposition with respect to the broader identification of goods or services present at publication;
3) if the applicant wishes to avoid the possibility of a res judicata effect by the entry of judgment on the original identification, the applicant must make a prima facie showing that the proposed amendment serves to change the nature and character of the goods or services or restrict their channels of trade and customers so as to introduce a substantially different issue for trial; and
4) where required to support the basis of the subject application, any specimens of record must support the goods or services as amended; and the applicant must then introduce evidence during its testimony period to prove use of its mark with the remaining goods or services prior to the relevant date as determined by the application's filing basis.

Because the opposed applications are based on Section 1(b) intent-to-use, the fourth Stryker requirement was inapplicable. Moreover, the first requirement was also obviously satisfied.

As to the second, applicant unconditionally consented to judgment as to the Sections 2(a) and 2(e)(1) claims with respect to the broader identifications of goods for which the applications were published.

As to the third Stryker requirement, applicant made a prima facie showing that the proposed amendments "serve to change the nature and character of the goods so as to introduce a substantially different issue for trial with respect to the Sections 2(a) and 2(e)(1) claims."

Indeed, Applicant has deleted all goods that, as published, were not identified as “soy-based” or containing soy, and has amended the remaining goods to specifically state that they are“soy-based.” Opposer limited its Sections 2(a) and 2(e)(1) claims to Applicant’s goods that were not identified as “soy-based” or containing soy. The amended identifications of goods no longer include non-soy goods to serve as the bases for Opposer’s Section 2(a) and Section 2(e)(1)claims against the non-soy goods.

The Board therefore granted the motion to amend and entered judgment in favor of Opposer as to its Section 2(a) and Section 2(e)(1) claims with respect to all goods encompassed by Applicant’s broader identifications of goods, except for the remaining soy-based goods. Opposer was allowed thirty days to file amended notices of opposition, to each of which applicant would then file its answer.

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TTABlog comment: This opinion/decision includes a mundane consolidation motion that was not worth discussing.

Text Copyright John L. Welch 2016.

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