Precedential No. 3: TTAB Grants Motion to Supplement Notice of Opposition to Add Post-Filing Trademark Applications

Topco Holdings opposed registration of READY4LIFE for sanitizers for personal use, alleging a likelihood of confusion with its registered marks READY FOR LIFE and SIMPLY DONE READY FOR LIFE for various personal goods and cleaning products. On August 3, 2021, after Applicant Hand 2 Hand had answered, Topco filed a motion to amend and supplement its notice of opposition to add to its Section 2(d) claim by pleading two applications filed after this opposition was commenced (March 4, 2021), and also pleading common law rights, in the mark READY FOR LIFE for "[a]nti-bacterial hand wipes for personal use" and for "disposable sanitizing personal wipes," claiming use of its mark since 2017. The Board granted the motion. Topco Holdings, Inc. v. Hand 2 Hand Industries, LLC, 2022 USPQ2d 54 (TTAB 2022) (Order by Interlocutory Attorney Katie Bukrinsky) [precedential].

FRCP 15(a)(2) "encourages the Board to look favorably on motions to amend, stating that the Board 'should freely give leave when justice so requires.'" In considering a motion to amend, the Board may take into account any undue delay, prejudice to the opposing party, bad faith or dilatory motive, futility of the amendment, and the number of previous amendments. See Foman v. Davis, 371 U.S. 178, 182 (1962).

The timing of the motion to amend plays a large role in determining whether the other party would be prejudiced by the amendment. Embarcadero Techs., Inc. v. Dephix Corp., 117 USPQ2d 1518, 1523 (TTAB 2016). The Board may conclude that if there is no prejudice, there is no undue delay. See Am. Express Mktg. & Dev. Corp., 94 USPQ2d at 1297 (although delay was substantial, no prejudice where proceedings were still in the discovery stage and non-movant could be afforded time in which to take discovery).

FRCP 15(d) provides that "the court may, on just terms, permit a party to serve a supplemental pleading setting out any transaction, occurrence or event that happened after the date of the pleading to be supplemented." Courts and the Board have applied the same analysis to an FRCP 15(d) motion to supplement as they apply to an FRCP 15(a) motion to amend. See, e.g., Glatt v. Chi Part Dist., 87 F.3d 190, 194 (7th Cir. 1996); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1217 (TTAB 1990).

FRCP 15(a) Motion to Amend: Topco's motion to add common law rights fell under FRCP 15(a). The Board found no evidence of bad faith or dilatory motive on Topco's part: it is not improper to seek to introduce additional support for a likelihood of confusion claim. Furthermore, this was Topco's first motion to amend. 

Although Topco cold have pleaded these common law rights in its notice of opposition, it did not unduly delay with its motion. Arguably the "added goods" are encompassed with Topco's original allegation of rights in "cleaning goods such as disposable wipes." "Opposer's new allegations clarify and amplify those alleged common law rights." Three months remained in the discovery period when Topco filed its motion, ample time for Applicant Hand 2 Hand to obtain discovery on the added allegations.

The Board concluded that "the interests of justice and judicial economy would be served by permitting all claims between the parties to be adjudicated." See Space Base, 17 USPQ2d at 1217 n. 1.

FRCP 15(d) Motion to Supplement: Topco's request to add the two applications filed after this proceeding was commenced fell under FRCP 15(d), which expressly provides for the supplementation of proceedings to allege such post-commencement events. The Board again found no bad faith, no undue delay, and no evidence that the applicant would be prejudiced by the delay in filing. Again, judicial economy would be served by allowing the amendment.

Applicant Hand 2 Hand argued that this amendment would be futile because the new filing dates were later than its filing date for the opposed applications. The Board, however, concluded that the newly pleaded applications "[a]t a minimum ... may be relevant to Opposer's entitlement to a statutory cause of action." See Toufigh v. Persona Parfum, Inc., 95 USPQ2d 1872, 1874 (TTAB 2010) (entitlement shown by petitioner’s allegation that he filed an application to register an identical mark to the one he sought to cancel).

"Affirmative Defenses": Finally, The Board sua sponte struck the applicant's "affirmative defense" of failure to state a claim because is "not a true affirmative defense." See John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d 1942, 1949 (TTAB 2010). It allowed several other purported affirmative defenses to remain in the Answer, although they were merely amplifications of the applicant's denials. See, e.g., ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1236 n.11 (TTAB 2015). And the Board struck as improper the applicant's claimed "reservation of right" to assert additional affirmative defenses, since such addition would require a motion for leave to amend. See Philanthropist.com, Inc. v. The Gen. Conf. Corp. of Seventh-Day Adventists, 2021 USPQ2d 643, at *4 n.6 (TTAB 2021).

Read comments and post your comment here.

TTABlogger comment: Only interesting point is the addition of the new applications. Not sure why opposer bothered, since it's newly added common law rights are by far more important.

Text Copyright John L. Welch 2022.