Friday, October 24, 2008

Precedential No. 45: TTAB Denies Petitioner's Motion to Amend, Grants Respondent's Motion for Judgment on the Pleadings

Media Online Inc. got the bum's rush when it petitioned to cancel a registration for the mark EL CLASIFICADO ONLINE for Internet advertising services. The Board denied its cross-motion to amend its petition to add two claims, and then granted Respondent's motion for judgment on the pleadings. Media Online Inc. v. El Clasificado, Inc., 88 USPQ2d 1285 (TTAB 2008) [precedential].

Petitioner's Cross-Motion to Amend: The Board first dealt with and denied Petitioner's cross-motion to amend its petition to add claims of descriptiveness and fraud. Rule 15(a), Fed. R. Civ. P., states that leave to amend pleadings should be "freely given when justice so requires," but if the amendment would be prejudicial to the other party, leave will be denied. The timing of the motion to amend is a "major factor" in the calculus.

Here, the Board found that Petitioner unduly delayed in filing its motion. "The new claims appear to be based on facts within petitioner's knowledge at the time the petition to cancel was filed." Petitioner waited more than seven months, and until Respondent filed its motion for judgment, before seeking leave to amend. It relied on dictionary definitions and Respondent's website pages, which evidence it could have obtained prior to filing the petition for cancellation.

Petitioner argued that it delayed because the parties were engaged in settlement negotiations and because it was "surprised" by Respondent's assertion of the "affirmative defense" of priority first raised in its motion for judgment. The Board observed, however, that the parties never suspended proceedings for settlement talks, and that priority is an issue simply by virtue of Petitioner's original assertion of its 2(d) claim and so the issue could not be a surprise.

Moreover, Respondent would be prejudiced were Petitioner permitted to add claims. "It is incumbent upon petitioner to identify all claims promptly in order to provide respondent with proper notice." Otherwise, respondent would have to expend increased time, effort, and money to defend the case.

The Board therefore concluded that petitioner unduly delayed in bringing its motion to amend and was not unfairly surprised when Respondent sought judgment on the original claim.

Moreover, the Board noted that Petitioner's proposed fraud claim is futile because it fails to plead particular facts as required by Rule 9(b), Fed. R. Civ. P.

Respondent's Motion for Judgment on the Pleadings: The Petition for Cancellation was based on Section 2(d). Petitioner claimed first use of its marks on November 27, 1999. Respondent, however, filed the application that yielded its registration on November 4, 1999, and is entitled to rely on that date as its constructive first use date under Section 7(c).

Thus Respondent has priority as a matter of law, and the Board granted Respondent's motion under Rule 12(c), Fed. R. Civ. P.

Text Copyright John L. Welch 2008.


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