Destileria Serralles, Inc.,v.Kabushiki Kaisha Donq d/b/a/ Donq Co., Ltd.

Trademark Trial and Appeal Board

Dec 28, 2017

No. 91204129 (T.T.A.B. Dec. 28, 2017)

GCP Mailed: December 28, 2017

Opposition No. 91204129
Destileria Serralles, Inc.

v.
Kabushiki Kaisha Donq DBA Donq Co., Ltd.

Before Quinn, Lykos and Pologeorgis,
Administrative Trademark Judges.

By the Board:

This proceeding has been fully briefed by the parties and a final disposition on
the merits will issue under a separate decision.
In this order, the Board addresses a preliminary matter raised in the parties’
final briefs that concerns the number of marks Opposer intends to rely upon in
support of its asserted claims in this case, and the scope of Opposer’s rights in those
marks as pleaded.
As background, Applicant seeks to register the stylized mark for a
variety of food and beverage items, wholesale and retail store services and providing
regional cuisines identified in International Classes 29, 30, 32, 35 and 43. Applicant’s
involved application is a request for an extension of protection under the Madrid
Protocol, based on an international registration, under Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141(a) (“Madrid application”). As grounds for opposition,
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS ORDER IS A PRECEDENT
OF THE TTAB
Opposition No. 91204129

2
Opposer claims likelihood of confusion and dilution with its pleaded registrations for
marks consisting of DON Q and DONQ, in whole or in in part, all for rum.
Opposer, in support of its asserted claims of likelihood of confusion and dilution
by blurring, has introduced into evidence and argued in its trial brief asserted
common law rights in its pleaded DON Q marks used in connection with goods and
services other than rum, inter alia, rum cakes, chocolates and bar services. In its final
brief on the case, Applicant objects to Opposer’s attempt “to claim rights to goods or
services beyond the ‘rum’ listed in the registrations cited on the ESTTA cover sheet
for this proceeding.”1 88 TTABVUE 57. Specifically, Applicant contends that insofar
as the involved application was filed under Section 66(a), Opposer was obligated to
raise and specify all grounds for opposition, including all common law rights it was
relying upon, on the ESTTA cover sheet, which was transmitted to the World
Intellectual Property Organization (“WIPO”), so as to provide timely notice of the
opposition.2 In addition, Applicant has objected to any argument that these purported
common law rights were tried by consent and has objected to any evidence submitted
by Opposer which concerns such common law rights in Opposer’s DON Q marks.
In response, Opposer argues that the information required by the Madrid Protocol
and sent to the International Bureau (“IB”) of WIPO would remain the same if
Opposer were allowed to amend its pleading to include its common law rights in its
DON Q marks for “rum cakes, chocolates and bar services.”3 Specifically, Opposer

1 ESTTA is the Electronic System for Trademark Trials and Appeals.
2 Applicant’s Trial Brief, pp. 20-21, 88 TTABVUE 24-25.
3 Opposer’s Reply Brief, p. 4; 92 TTABVUE 10.
Opposition No. 91204129

3
contends that it does not seek to base the opposition on an entirely new mark or
expand the goods or services opposed.4 Nor does it seek to add to the opposition an
entirely new ground not already at issue.5 Instead, Opposer maintains that it seeks
to amend its pleading merely to clarify the scope of its rights under the already
pleaded DON Q marks to include goods and services associated with rum, yet not
specifically covered by the registrations which identify only “rum.”6 Opposer further
argues that such clarification is not prohibited by the Trademark Act or the
Trademark Rules concerning the Madrid Protocol.7 Finally, Opposer contends that,
in the event the Board does not permit Opposer to amend its notice of opposition to
assert its common law rights in its DON Q marks for rum cakes, chocolates and bar
services, the Board should still admit and rely upon evidence of Opposer’s common
law rights accrued through use of its DON Q marks in connection with these goods
and services when analyzing likely confusion under the du Pont factors.8
The Board construes Applicant’s objection to Opposer’s DON Q common law rights
evidence as a motion to strike such evidence and Opposer’s rebuttal response as a
motion for leave to amend its pleadings to assert such common law rights. These two
construed motions are addressed below.
Madrid applications are treated differently in many key respects from other
applications. To fulfill its reporting and other obligations under the Madrid Protocol,

4 Id.
5 Id.
6 Id.
7 Id. at pp. 4-5; 92 TTABVUE 10-11.
8 Id. at p. 7; 92 TTABVUE 13.
Opposition No. 91204129

4
the USPTO has promulgated regulations to accommodate the particular attributes of
these applications and of the Madrid system for extending international registrations
into member countries. See Rules of Practice for Trademark-Related Filings Under
the Madrid Protocol Implementation Act, 68 Fed. Reg. 55748 (Sept. 26, 2003); see also
In re Börlind Gesellschaft für kosmetishce Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB
2005), for additional discussion.
In particular, the ESTTA cover sheet performs an integral function in cataloguing
and reporting to the IB information on oppositions filed against Madrid applications.
As the Board explained in CSC Holdings, LLC v. SAS Optimhome, 99 USPQ2d 1959,
1960 (TTAB 2011):
In the case of oppositions against § 66(a) applications, the ESTTA
electronic form plays an additional, vital role. As discussed below, when
an opposition is instituted, the USPTO must so notify the International
Bureau (“IB”) of the World Intellectual Property Organization,
informing it of certain information required under U.S. law
implementing the Madrid Protocol. This notice must be sent within
strict time limits, and any USPTO failure to fully and timely notify the
IB may result in the opposition being limited by the information sent or
dismissed in its entirety. In order to avoid any deficiency in the IB
notification and to ensure that it is timely sent, the ESTTA electronic
form collects all necessary information and automatically sends the
required notice to the IB. In re Börlind Gesellschaft für kosmetishce
Erzeugnisse mbH, 73 USPQ2d 2019, 2020 n.3 (TTAB 2005). In doing so,
the ESTTA system sends only the information provided by the filer on
the electronic form - the automated system does not send a copy of the
filer’s attached explanatory pleading to the IB. Moreover, the system is
fully automated, and Board personnel do not review or edit the
information provided on the electronic form in order to ensure that it is
complete. As a result, any required information that appears in the
attached pleading but was not entered on the ESTTA electronic form
will not be included in the USPTO’s notification to the IB.

Opposition No. 91204129

5
When a notice of opposition is uploaded for filing against a Section 66(a)
application, and after confirming that the application is ripe for opposition, ESTTA
allows the opposer to identify the grounds for opposition, as well as the registrations
and/or pending applications of which it claims ownership, and on which it relies as a
basis for its opposition. ESTTA also permits an opposer to identify common law
rights in a mark or marks, and the goods and/or services associated therewith as a
basis for its asserted claims, as illustrated below.9

9 The first chart displays a checklist of available grounds for opposition. The second chart
includes a box where a party may identify marks and the goods and/or services associated
therewith it intends to rely upon as a basis for its asserted claim(s) that are not subject to a
U.S. Registration or pending application.
Opposition No. 91204129

6

Because the ESTTA filing system permits an opposer opposing an application
under Section 66(a) to identify all marks it intends to rely upon at trial as a basis for
its asserted claim(s), including unregistered marks used for particular goods or
services and in which the opposer believes it has acquired “common law” rights, and
since the information provided to the IB is limited to that which the opposer
specifically selects or sets forth on the ESTTA cover sheet, see Trademark Rule
2.104(c), 37 C.F.R. § 2.104(c), (“Oppositions to applications filed under Section 66(a)
Opposition No. 91204129

7
of the Act are limited to the goods, services and grounds set forth in the ESTTA cover
sheet.”),10 the instant Opposer’s failure to identify its common law rights in “the other
goods and services” including “rum cakes, chocolates and bar services” on the ESTTA
cover sheet precludes Opposer from now relying on such common law rights in the
marks as a basis for its asserted claims. Indeed, if an opposer is precluded from
amending its pleading to add an additional claimed registration to support a
previously asserted likelihood of confusion claim under Section 2(d) of the Trademark
Act,11 it would follow that an opposer also could not add common law trademark

10 Although Trademark Rule 2.104(c) took effect on January 14, 2017, a date subsequent to
the close of the parties’ testimony period in this case, it is nonetheless applicable to this
pending proceeding since it codifies existing Board practice and case law. See Notice of Final
Rulemaking, 81 Fed. Reg. 69950, 69954, 69957 (Oct. 7, 2016).

11 With regard to amending a pleading against a Madrid application during the pendency of
a Board proceeding, the Board promulgated Trademark Rule 2.107(b), 37 C.F.R. § 2.107(b),
which provides as follows (emphasis added):

Pleadings in an opposition proceeding against an application filed under
section 66(a) of the Act may be amended in the same manner and to the same
extent as in a civil action in a United States district court, except that, once
filed, the opposition may not be amended to add grounds for opposition or
goods or services beyond those identified in the notice of opposition, or to add
a joint opposer. The grounds for opposition, the goods or services opposed, and
the named opposers are limited to those identified in the ESTTA cover sheet
regardless of what is contained in any attached statement.

In its Notice of Rulemaking, the Board provided the following guidance regarding the
application of Trademark Rule 2.107(b):

[P]leadings in an opposition proceeding against an application filed under
section 66(a) of the Act may be amended in the same manner and to the same
extent as in a civil action in a United States district court; except that, once
filed, such opposition may not be amended to add to the goods or services
opposed, or to add to the grounds for opposition. Thus, opposer may not add an
entirely new ground for opposition or add an additional claimed
registration to a previously stated section 2(d) ground. An opposer may
make amendments to grounds asserted in the notice of opposition, for example,
for clarification.
Opposition No. 91204129

8
rights not previously identified on the ESTTA cover sheet. By doing so, an opposer
would be impermissibly expanding, not clarifying, the scope and/or basis of its Section
2(d) claim.
Accordingly, Applicant’s construed motion to strike is granted to the extent that
the Board will give no consideration to Opposer’s common law rights in its DON Q
marks used in association with “the other goods and services” including “rum cakes,
chocolates and bar services” as a basis for its asserted claims. Opposer’s construed
motion for leave to amend its pleading is therefore denied.12
A final decision on the merits of this case will issue in due course.

Rules of Practice for Trademark-Related Filings Under the Madrid Protocol Implementation
Act, 68 Fed. Reg. 55748, 55757 (Sept. 26, 2003) (emphasis added); see also Prosper Bus. Dev.
Corp. v. Int’l Bus. Machs., Corp., 113 USPQ2d 1148, 1151 n.7 (TTAB 2014) (opposition
against a Section 66(a) application may not be amended to add an additional claimed
registration to a previously asserted likelihood of confusion claim).

12 Even if Opposer were allowed to amend its pleading to assert its common law rights in its
DON Q marks for “other goods and services” including “rum cakes, chocolates and bar
services” as a basis for its asserted claims, attempting to do so at trial without providing any
justifiable reason for its delay when Opposer was clearly aware of its common law rights at
the time it filed its notice of opposition, would constitute an undue delay and would be
prejudicial to Applicant. Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1286
(TTAB 2008) (motion for leave to amend to add claims of descriptiveness and fraud denied;
petitioner unduly delayed in adding claims which were based on facts within petitioner’s
knowledge at time petition to cancel was filed); Black & Decker Corp. v. Emerson Electric Co.,
84 USPQ2d 1482, 1486 (TTAB 2007) (opposer unduly delayed in filing motion for leave to
amend during testimony period).