PLM Operations, LLCv.Productos Lacteos Tocumbo S.A. de C.V.

Trademark Trial and Appeal Board

Nov 14, 2019

91245908 (T.T.A.B. Nov. 14, 2019)

mbm
November 14, 2019

Opposition No. 91245908

PLM Operations, LLC

v.
Productos Lacteos Tocumbo S.A. de C.V.,

Before Zervas, Dunn, and Hudis,
Administrative Trademark Judges.

By the Board:

This proceeding now comes before the Board for consideration of the following: (1)
the combined motion1 (filed March 24, 2019) of Productos Lacteos Tocumbo S.A. de
C.V. (“Prolacto”) to dismiss, for judgment on the pleadings, and for sanctions, and (2)
the motion2 (filed May 28, 2019) of PLM Operations, LLC (“PLM”) to strike Prolacto’s
May 7, 2019 and May 8, 2019 “objections” to portions of PLM’s April 15, 2019 brief
and evidence.3 The combined motion to dismiss, for judgment on the pleadings, and
for sanctions is contested. The motion to strike is fully briefed. Prolacto also filed a

1 7 TTABVUE.
2 11 TTABVUE.
3 8 TTABVUE.
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
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91245908

2
notice of “supplemental authority”4 in support of its combined motion to dismiss, for
judgment on the pleadings, and for sanctions on July 17, 2019.
For purposes of this order, we presume the parties’ familiarity with the pleadings,
the history of the proceeding, and the arguments and evidence submitted with respect
to each motion and do not repeat the arguments herein except as necessary to explain
the Board’s order.
I. Background in Opposition No. 91245908
Prolacto seeks to register the mark LA MICHOACANA NATURAL and Design,
as shown below, for “Cones for ice cream; Flavored ices; Frozen yoghurt; Fruit ice;
Fruit ice bar; Fruit ices; Ice; Ice candies; Ice cream; Ice cream drinks; Ice cream mixes;
Ice cream powder; Ice cubes; Ice milk bars; Ice-cream cakes” in International Class
30 and “Retail shops featuring ice cream, fruit bars, drinks and snacks; Retail stores
featuring ice cream, fruit bars, drinks and snacks” in International Class 35: 5

4 15 TTABVUE.
5 Application Serial No. 78954490, filed August 17, 2006, alleging February 8, 1995 as the
date of first use anywhere and February 10, 2002 as the date of first use in commerce. The
term “NATURAL” is disclaimed. The translation of the mark is as follows: “The foreign
wording in the mark translates into English as ‘the natural woman from Michoacan.’” The
description of the mark is as follows: “The mark consists of the stylized and shaded words
‘LA MICHOACANA’ superimposed above a fruit ice bar with the stylized word ‘NATURAL’
below. All the words are encircled by a broken oval-shaped ring which features a butterfly in
the opening at the upper right corner. Color is not claimed herein.”
Opposition No. 91245908

3
On January 17, 2019, PLM filed a notice of opposition opposing registration of
Prolacto’s involved application. In support of its standing and claims, PLM pleaded,
inter alia, prior use of the phrase “LA MICHOACANA” in connection with ice cream
and paletas. Notice of opposition ¶ 2.
As last reset by the Board, Prolacto’s answer to the notice of opposition was due
on March 19, 2019.6 On March 24, 2019, in lieu of an answer, Prolacto filed a
combined motion to dismiss, for judgment on the pleadings, and for sanctions on the
grounds that PLM’s claims are barred by the doctrines of claim preclusion, issue
preclusion, and judicial estoppel based on a prior proceeding between the parties.7
II. Background of Prior Proceeding
On April 27, 2007, in Cancellation No. 92047438, Prolacto petitioned to cancel
Registration No. 3210304, then registered to Paleteria La Michoacana, Inc.
(“Paleteria”), for the mark LA INDITA MICHOACANA and Design, as shown below,
for “ice cream and fruit ice products, namely fruit bars” in International Class 30.8

6 5 TTABVUE 1.
7 7 TTABVUE.
8 Registration No. 3210304, issued February 20, 2007, alleging February 21, 2005 as both the
date of first use anywhere and the date of first use in commerce. The description of the mark
is as follows: “The color dark pink appears in the wording ‘LA INDITA,’ the skirt, the girl’s
veil and the ice cream; black appears in the girl’s hair, shoes, belt, the wording
‘MICHOACANA,’ the outline of the wording ‘LA INDITA’ and the outline of the girl; white
appears on the girl’s shirt, skin and ice cream cone.”
Opposition No. 91245908

4

The Board granted Prolacto’s petition to cancel on the sole ground of likelihood of
confusion on May 20, 2011. Paleteria filed an action in the United States District
Court for the District of Columbia, entitled Paleteria La Michoacana, Inc. v.
Productos Lacteos Tocumbo S.A. de C.V., Civ. No. 1:11-cv-01623-RC (the “Civil
Action”), seeking, inter alia, reversal of the Board’s cancellation of Paleteria’s
Registration No. 3210304 and asserting numerous other claims against Prolacto.
PLM was substituted and joined as the successor in interest to Paleteria during the
pendency of the appeal. Paleteria La Michoacana, Inc. v. Productos Lacteos Tocumbo
S.A. de C.V., 247 F. Supp. 3d 76, 86 (D.D.C. 2017). The Board’s decision was affirmed
by the District Court, on modified grounds. Paleteria La Michoacana, Inc. v.
Productos Lacteos Tocumbo S.A. de C.V., 188 F. Supp. 3d 22 (D.D.C. 2016).
III. Prolacto’s Technical Default
On February 8, 2019, Prolacto filed a consented motion9 to extend its time to file
an answer to the notice of opposition. On February 12, 2019, the Board granted10
Prolacto’s consented motion to the extent that Prolacto was allowed until March 19,

9 4 TTABVUE.
10 5 TTABVUE.
Opposition No. 91245908

5
2019 in which to file and serve an answer or otherwise respond to the notice of
opposition.11 Prolacto did not file an answer or a timely motion to extend by March
19, 2019. On March 24, 2019, Prolacto filed a paper titled “Motion to Dismiss/Motion
for Judgment on the Pleadings/Motion for Sanctions with Integrated Memorandum
of Law.” 7 TTABVUE. Inasmuch as Prolacto did not file a timely answer or extension
of time by the deadline set forth in the Board’s February 12, 2019 order, Prolacto was
in technical default. In PLM’s response12 to Prolacto’s motion to dismiss, PLM seeks
entry of default judgment based on Prolacto’s untimely response to the notice of
opposition.
Prolacto’s failure to file a timely response to the notice of opposition or otherwise
even address its default or PLM’s request for entry of default judgment evidences
carelessness on the part of Prolacto; however, there is no evidence of bad faith or
intentional delay. Given the minimal delay and the lack of prejudice to PLM, we find
good cause to set aside Prolacto’s technical default, and to consider Prolacto’s March
24, 2019 combined motion on the merits. See Fed. R. Civ. P. 55(c) (“[t]he court may
set aside an entry of default for good cause.”).

11 In its February 8, 2019 consented motion to extend, the proposed calendar identified March
28, 2019 as the proposed deadline for Prolacto to file and serve an answer to the notice of
opposition; however, in the body of the consented motion, Prolacto specifically requested an
extension of time “through and including March 19, 2019” in which to file and serve its
answer. 4 TTABVUE 2. Accordingly, the Board’s February 12, 2019 order clearly provided
Prolacto until March 19, 2019, in which to file and serve its answer. 5 TTABVUE 1. Prolacto
should take care to file clear and consistent motions and to carefully review the Board’s orders
for relevant deadlines.
12 8 TTABVUE 7-8, 14-15.
Opposition No. 91245908

6
IV. PLM’s Motion to Strike Prolacto’s “Objections” to PLM’s Brief and
Evidence
We turn next to PLM’s motion to strike. PLM filed its response13 to Prolacto’s
combined motion to dismiss, for judgment on the pleadings, and for sanctions on April
15, 2019. Prolacto’s reply brief, if any, was therefore due on May 5, 2019.14 See
Trademark Rule 2.127(a), 37 C.F.R. § 2.127(a). Prolacto did not file a timely reply
brief in support of its combined motion. On May 7, 2019 and May 8, 2019,15 Prolacto
filed “objections” to certain arguments and evidence submitted by PLM in connection
with its April 15, 2019 brief.16 On May 28, 2019, PLM filed a motion to strike
Prolacto’s May 7 and 8 filings.17
Trademark Rule 2.127(a) only provides for the filing of a brief in response to a
motion and a timely reply brief in support of a motion.18 The Board does not consider
any further papers in support of or in opposition to a motion. See TRADEMARK TRIAL
AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 502.02(b) (June 2019). In its
response to the motion to strike, Prolacto cites rules and procedures relevant to

13 8 TABVUE.
14 Inasmuch as May 5, 2019 was a Sunday, Prolacto was allowed until Monday, May 6, 2019
in which to file and serve a reply brief.
15 Eastern time controls the filing date, which is determined at the time the transmission is
complete. Trademark Rule 2.195(a)(2), 37 C.F.R. § 2.195(a)(2). Prolacto’s second filing of
“objections” to PLM’s brief was transmitted after midnight and is therefore considered filed
on May 8, 2019, not May 7, 2019, as Prolacto contends. See 13 TTABVUE 11.
16 9, 10 TTABVUE.
17 11 TTABVUE.
18 The time for filing a reply brief will not be extended, even upon the parties’ consent. 37
C.F.R. § 2.127(a) and 37 C.F.R. § 2.127(e)(1); TBMP § 502.02(b).
Opposition No. 91245908

7
objecting to testimony and evidence at trial in support of its argument that its
“objections” were proper and timely filed.19 Prolacto has confused the rules and
procedures for objecting to trial evidence and testimony with the procedures for filing
briefs in support of motions under Trademark Rule 2.127. The rules and procedures
cited by Prolacto in its response to the motion to strike are inapplicable at this stage
in the proceeding. Trademark Rule 2.127(a) does not provide for any further briefing
on a motion, nor does it provide for the filing of separate “objections” to briefs or
evidence in support of (or in opposition to) a motion.
In view of the foregoing, PLM’s motion to strike is granted and Prolacto’s
untimely May 7 and 8, 2019 “objections” will be given no consideration by the Board.20
PLM is advised, however, that inasmuch as Trademark Rule 2.127 does not provide
for the filing of any brief beyond a timely reply brief, it is not necessary for a party to
file a motion to strike any brief other than a timely reply brief. See TBMP § 517.
V. Prolacto’s Notice of Supplemental Authority
On July 17, 2019, Prolacto filed a notice of “supplemental authority” in support of
its March 24, 2019 combined motion.21 The filing consists of a brief description and
copies of the following: (1) a June 6, 2019 order in the case La Michoacana Natural,
LLC v. Luis Maestre et al., Civ. No. 3:17-cv-00727, in the U.S. District Court for the
Western District of North Carolina; and (2) a May 31, 2018 order in the case Prolacto

19 13 TTABVUE.
20 We note, however, that for the reasons explained below, we have not considered the exhibits
submitted by either party at this stage.
21 15 TTABVUE.
Opposition No. 91245908

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Mich Florida, LLC v. s. La Mejor Michoacana Ice Cream, Inc., et al., Civ. No. 2:17-cv-
658, in the U.S. District Court for the Middle District of Florida.
Once a reply brief has been filed on a motion, further papers are barred.
Trademark Rule 2.127(a). However, relevant matters that arise after briefing has
concluded may be brought to the Board’s attention. Omega SA (Omega AG) (Omega
Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1291 n.2 (TTAB 2016). As an initial
matter, the order from the Florida District Court was issued before the notice of
opposition in this proceeding was even filed and cannot reasonably be proffered as
“supplemental authority” in support of Prolacto’s combined motion, which was filed
nearly one year later on March 24, 2019.
The order from the North Carolina District Court is also not appropriate
“supplemental authority” in support of Prolacto’s combined motion. See TBMP
§ 528.05(a)(1). Prolacto’s combined motion seeks dismissal of the claims under Fed.
R. Civ. P. 12(b)(6) and “judgment” on the ground that PLM’s claims are barred by the
doctrines of claim preclusion, issue preclusion, and judicial estoppel. That is, Prolacto
argues the claims are insufficient or barred. Prolacto submits the district court
decisions to demonstrate that its involved mark is not, in fact, merely descriptive,
which is authority on the merits of the case and not the subject of the motion. 15
TTABVUE 7. To the extent these decisions have any bearing on this proceeding at
Opposition No. 91245908

9
all, they do not constitute “supplemental authority” in support of Prolacto’s combined
motion.22
In view of the foregoing, we give Prolacto’s July 17, 2019 filing no further
consideration.
VI. Prolacto’s Combined Motion to Dismiss, for Judgment on the
Pleadings, and for Sanctions
In its combined motion, Prolacto seeks (1) sanctions in the form of judgment
against PLM and (2) dismissal or “judgment on the pleadings” on the grounds that
PLM has failed to state a claim upon which relief can be granted under Fed. R. Civ.
P. 12(b)(6) and on the ground that PLM’s claims are barred by the doctrines of claim
and issue preclusion and judicial estoppel.23 7 TTABVUE 2.
We turn first to Prolacto’s request for sanctions in the form of judgment against
PLM under Fed. R. Civ. P. 11. Prolacto filed its motion concurrently with its service
of that motion upon PLM. Therefore, Prolacto did not comply with the “safe harbor”

22 Additionally, inasmuch as PLM does not appear to be a party, or in privity with a party, to
either of these civil actions, it does not appear that they support a defense of claim preclusion,
issue preclusion, or judicial estoppel.
23 In its combined motion to dismiss, for judgment on the pleadings, and for sanctions,
Prolacto also asks that the Board “terminate” related Opposition Nos. 91205466 and
91205468 and refuse registration to several of PLM’s applications, which are still pending
before the examining attorney. 7 TTABVUE 26. Because none of these applications have been
opposed, the Board has no jurisdiction. See Home Juice Co. v. Runglin Cos., 231 USPQ 897,
898 n.7 (TTAB 1986). PLM similarly requests that the Board order that Prolacto disclaim
‘LA MICHOACANA’ in two applications not subject to this proceeding, “enter judgment in
Opp. Nos. 91205466 and 91205468 in favor of PLM, as well as dismiss Cancellation Nos.[sic]
92070644 … and Cancellation No. 92070670.” 8 TTABVUE 27. These related proceedings are
not currently consolidated with the present proceeding. There is no legal basis for either party
to request that the Board sua sponte enter judgment in other Board proceedings. Accordingly,
we have given no consideration to either party’s meritless requests. PLM also notes that the
Board may sua sponte consolidate related proceedings. The Board may consider consolidation
of these or other related proceedings after the issues have been joined in this proceeding.
Opposition No. 91245908

10
provision of Fed. R. Civ. P. 11(c)(2) by serving the motion for sanctions at least
twenty-one days prior to its filing. Moreover, Prolacto’s motion for sanctions is
combined with its motion to “dismiss” and for “judgment on the pleadings.” The
motion for sanctions was therefore not filed separately from any other motion, in
further contravention of Fed. R. Civ. P. 11(c)(2). Accordingly, to the extent Prolacto’s
motion seeks Fed. R. Civ. P. 11 sanctions, the motion is denied, without prejudice,
as procedurally deficient.24
We turn next to Prolacto’s motion for “judgment on the pleadings.” To the extent
Prolacto seeks judgment on the pleadings under Fed. R. Civ. P. 12(c), the motion is
procedurally improper. A motion for judgment on the pleadings may only be filed once
the pleadings have closed, i.e., after an answer has been filed. Fed. R. Civ. P. 12(c);
TBMP § 504.01; see also Land O Lakes, Inc. v. Hugunin, 88 USPQ2d 1957, 1960 n.1
(TTAB 2008). Inasmuch as Prolacto has not yet filed an answer to the notice of
opposition, a motion for judgment on the pleadings would be premature. We therefore
do not construe the motion as one for judgment on the pleadings.
Prolacto also seeks to “dismiss” the notice of opposition on the ground that PLM
has failed to state a claim pursuant to Fed. R. Civ. P. 12(b)(6), and on the grounds

24 Furthermore, “Rule 11 motions should not be made … to test the legal sufficiency or efficacy
of allegations in the pleadings…” Advisory Committee Notes to 1993 Amendments to Fed. R.
Civ. P. 11; 5A Charles A. Wright & Arthur R. Miller, Federal Prac. and Proc. § 1335 (4th ed.
2019) (“Rule 11 should not be used to raise issues of legal sufficiency of a claim or defense
that more appropriately can be disposed of by a motion to dismiss, a motion for judgment on
the pleadings, a motion for summary judgment, or a trial on the merits.”); see also Blue v.
U.S. Dep’t of the Army, 914 F.2d 525, 535 (4th Cir. 1990), cert. denied sub nom., Chambers v.
U.S. Dep’t of the Army, 499 U.S. 959 (1991) (“[C]laims that are plainly meritless should be
disposed of early in the course of litigation through summary judgment or other pretrial
motion.”).
Opposition No. 91245908

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that PLM’s claims are barred by the doctrines of claim preclusion, issue preclusion,
and judicial estoppel. In support thereof, Prolacto attaches copies of the Board’s
orders in Cancellation No. 92047438 and argues that PLM is precluded from
asserting any of its claims in this proceeding based upon the Board’s decision and
purportedly inconsistent positions taken by PLM in the prior proceeding. In response,
PLM similarly relies upon evidence and material outside the pleadings, principally,
decisions from the U.S. District Court for the District of Columbia during PLM’s
appeal of the Board’s decision in the prior proceeding. Paleteria La Michoacana, Inc.
v. Productos Lacteos Tocumbo S.A. de C.V., Civ. No. 1:11-cv-01623-RC.
Where a motion styled as one to dismiss relies on matter outside the pleadings,
the Board may construe the motion as one for summary judgment. A party need not
serve initial disclosures prior to seeking summary judgment on the grounds of claim
or issue preclusion. Trademark Rule 2.127(e)(1). In this case, however, we decline to
construe Prolacto’s motion as one for summary judgment at this stage. Upon review
of the notice of opposition, as further explained below, we find that the claims
asserted are unclear or insufficiently pleaded. Inasmuch as a party may not obtain
summary judgment on an unpleaded or improperly pleaded claim, determination of
the application of the doctrines of claim or issue preclusion on summary judgment
would be premature.25 Accordingly, we have not considered any of the materials

25 Additionally, to the extent Prolacto’s motion could have been considered as one for
summary judgment, the motion would be limited to consideration of Prolacto’s assertion of
claim and issue preclusion. Prolacto may not seek summary judgment on any other ground,
until it has served its initial disclosures in compliance with Trademark Rule 2.127(e)(1), 37
C.F.R. § 2.127(e)(1).
Opposition No. 91245908

12
outside the pleadings submitted by either party at this stage and have construed
Prolacto’s motion as one to dismiss for failure to state a claim under Fed. R. Civ. P.
12(b)(6).
To survive a motion to dismiss, “a complaint must contain sufficient factual
matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’”
Ashcroft v. Iqbal, 556 U.S. 662, 663, 129 S. Ct. 1937, 1949 (2009) (quoting Bell Atlantic
Corp. v. Twombly, 550 U.S. 544, 547, 127 S. Ct. 1955, 1974 (2007)). A claim has facial
plausibility when the plaintiff pleads factual content that allows the court to draw a
reasonable inference that the defendant is liable for the misconduct alleged. See
Twombly, 550 U.S. at 556-57. However, the plausibility standard does not require
that a plaintiff set forth detailed factual allegations. Id. Rather, a plaintiff need only
allege “enough factual matter … to suggest that [a claim is plausible]” and “raise a
right to relief above the speculative level.” Totes-Isotoner Corp. v. U.S., 594 F.3d 1346,
1354 (Fed. Cir. 2010). Moreover, it is well established that whether a plaintiff can
actually prove its allegations is not a matter to be determined upon motion to dismiss,
but rather at final hearing or upon summary judgment, after the parties have had an
opportunity to submit evidence. See Libertyville Saddle Shop Inc. v. E. Jeffries &
Sons, Ltd., 22 USPQ2d 1594, 1597 (TTAB 1992) (“A motion to dismiss does not
involve a determination of the merits of the case…”).
In deciding Prolacto’s motion, we have given no consideration to the matters that
are outside of the pleadings. See, e.g., Compagnie Gervais Danone v. Precision
Formulations LLC, 89 USPQ2d 1251, 1255-56 (TTAB 2009); TBMP § 503.04.
Opposition No. 91245908

13
Additionally, we have not considered arguments that go to the merits of the case and
whether PLM ultimately will be able to prove its allegations. See, e.g., Advanced
Cardiovascular Sys. Inc., 26 USPQ2d at 1041; Covidien LLP v. Masimo Corp., 109
USPQ2d 1696, 1697 n.3 (TTAB 2017); Scotch Whiskey Assos. v. U.S. Distilled Prods.
Co., 18 USPQ2d 1391, 1393 (TTAB 1991).
A. Standing
Initially, we note that Prolacto does not directly attack PLM’s standing. We
nonetheless find that PLM’s allegations regarding its standing are sufficiently
pleaded. See Empresa Cubana del Tabaco v. Gen. Cigar Co., 111 USPQ2d 1058, 1062
(Fed. Cir. 2014) (citing Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26
(Fed. Cir. 1999) (holding that to establish standing an opposer must have a “real
interest” in the proceeding and a “reasonable basis” for its belief that it would suffer
damage if the mark is registered). PLM alleges facts in the notice of opposition that,
if proved, would establish its standing by virtue of its pleading that “LA
MICHOCANA” is merely descriptive without secondary meaning and that it has a
present right to use the term descriptively.26 See Binney & Smith Inc. v. Magic
Marker Industries, Inc., 222 USPQ 1003, 1010 (TTAB 1984).
B. Grounds for Opposition
In the notice of opposition, PLM list three grounds for opposition, namely: (1)
priority and likelihood of confusion, (2) that the involved mark is merely descriptive
without secondary meaning and/or is primarily geographically descriptive without

26 Notice of opposition ¶¶ 2, 9, 18.
Opposition No. 91245908

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secondary meaning, or alternatively (3) that “LA MICHOACANA” is merely
descriptive or primarily geographically descriptive and must be disclaimed. In its
response to Prolacto’s combined motion, however, PLM states first that it is only
seeking a disclaimer of “LA MICHOACANA” from Prolacto’s mark, 8 TTABVUE 7,
but then later requests that “Prolacto’s application be rejected, or in the
alternative, that Prolacto be required to disclaim ‘LA MICHOACANA.’” Id. at 14
(emphasis added). It is therefore unclear whether PLM is opposing registration of
Prolacto’s application in its entirety and, in the alternative, seeking a disclaimer of
“LA MICHOACANA,” or whether PLM is solely seeking a disclaimer of the phrase
“LA MICHOACANA.”
To the extent PLM intended to plead that the involved mark is merely descriptive,
PLM sufficiently pleads a claim that “LA MICHOACANA” is merely descriptive and
must be disclaimed, but not that Prolacto’s involved mark, as a whole, is merely
descriptive. Accordingly, Prolacto’s motion to dismiss is granted to the extent that
PLM has failed to state a claim that Prolacto’s involved mark is merely descriptive
as a whole.
PLM also failed to adequately plead a claim that Prolacto’s mark is primarily
geographically descriptive, in whole or in part. A mark is considered primarily
geographically descriptive when (1) the primary significance of the mark is the name
of a place generally known to the public, (2) the goods originate in the place identified,
and (3) the public would believe that the goods for which the mark is sought to be
registered originate from that place. See In re Nantucket, Inc., 677 F.2d 95, 213 USPQ
Opposition No. 91245908

15
889, 891-93 (CCPA 1982); Univ. Book Store v. Univ. of Wisconsin of Regents, 33
USPQ2d 1385, 1402-04 (TTAB 1994). Here, PLM has only alleged generally that “LA
MICHOACANA” is geographically descriptive, which is insufficient to state a claim.
Accordingly, Prolacto’s motion to dismiss is granted with respect to PLM’s claim that
Prolacto’s involved mark is primarily geographically descriptive or that “LA
MICHOACANA” is primarily geographically descriptive and must be disclaimed.
PLM also has not sufficiently pleaded a claim of priority and likelihood of
confusion. To allege a valid ground for opposition under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), PLM need only allege it has a registered mark or valid
proprietary rights that are prior to those of Prolacto and that Prolacto’s mark so
resembles PLM’s mark as to be likely to cause confusion. See Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). Although PLM
has asserted that it has prior use of “LA MICHOACANA” in connection with ice cream
and frozen treats, PLM has not pleaded that there is a likelihood of confusion with
respect to Prolacto’s involved mark. Rather, PLM has pleaded only that registration
“would give [Prolacto] a prima facie exclusive right to a composite mark consisting of
the words “La Michoacana,’ which is inconsistent with PLM’s right to use “La
Michoacana’ in connection with PLM’s business.” Notice of opposition ¶ 18. PLM has
not pleaded that there is a likelihood of confusion between Prolacto’s involved mark
and PLM’s pleaded marks. Accordingly, Prolacto’s motion to dismiss is granted with
respect to PLM’s claim of likelihood of confusion.
Opposition No. 91245908

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Notwithstanding the foregoing, the Board freely grants leave to amend pleadings
found to be insufficient upon challenge under Fed. R. Civ. P. 12(b)(6), as is the case
here. In view thereof, PLM is allowed until December 3, 2019 in which to file and
serve an amended notice of opposition that properly states a claim of priority and
likelihood of confusion, that the mark as a whole is merely descriptive, that the mark
is primarily geographically descriptive, and that “LA MICHOACANA” is primarily
geographically descriptive and must be disclaimed, failing which said claims will be
dismissed with prejudice and the notice of opposition will move forward solely on
PLM’s claim that “LA MICHOACANA” is merely descriptive and must be disclaimed.
In turn, Prolacto is allowed until December 23, 2019 in which to file and serve
an answer or otherwise respond to the amended pleading, if any. In the event PLM
fails to file and serve an amended notice of opposition by the deadline set forth above,
Prolacto is allowed until December 23, 2019 in which to file and serve an answer or
otherwise respond to the notice of opposition, as restricted by this order.
As a final matter, both parties have unnecessarily obfuscated the issues in this
proceeding through their imprecision and inconsistencies and, in some instances,
their failure to meet deadlines and follow applicable procedures and rules. To the
extent either party files a subsequent motion in this proceeding, it should carefully
review the Board’s order and its applicable procedures and rules before so doing.
VII. Schedule
Proceedings herein are resumed. Consistent with the time set for PLM to replead,
remaining dates are reset as follows:
Opposition No. 91245908

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Amended Notice of Opposition Due 12/3/2019
Time to Answer 12/23/2019
Deadline for Discovery Conference 1/22/2020
Discovery Opens 1/22/2020
Initial Disclosures Due 2/21/2020
Expert Disclosures Due 6/20/2020
Discovery Closes 7/20/2020
Plaintiff's Pretrial Disclosures Due 9/3/2020
Plaintiff's 30-day Trial Period Ends 10/18/2020
Defendant's Pretrial Disclosures Due 11/2/2020
Defendant's 30-day Trial Period Ends 12/17/2020
Plaintiff's Rebuttal Disclosures Due 1/1/2021
Plaintiff's 15-day Rebuttal Period Ends 1/31/2021
Plaintiff's Opening Brief Due 4/1/2021
Defendant's Brief Due 5/1/2021
Plaintiff's Reply Brief Due 5/16/2021
Request for Oral Hearing (optional) Due 5/26/2021

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
manner and timing of taking testimony, matters in evidence, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
final hearing will be scheduled only upon the timely submission of a separate notice
as allowed by Trademark Rule 2.129(a).