The Old Fashion Candy Co., Inc.v.FUNraise, Inc.

Trademark Trial and Appeal Board

Jul 31, 2019

91245989 (T.T.A.B. Jul. 31, 2019)

mbm
July 31, 2019

Opposition No. 91244190 (Parent)
Opposition No. 91245989
Opposition No. 91245990

The Old Fashion Candy Co., Inc.

v.
FUNraise, Inc.

Before Kuhlke, Mermelstein, and Coggins,
Administrative Trademark Judges.

By the Board:

This proceeding now comes before the Board for consideration of the motion of The
Old Fashion Candy Co., Inc. (“Opposer”) in Opposition No. 91244190 for summary
judgment on its pleaded defense of claim preclusion based on the Board’s entry of
judgment against FUNraise, Inc. (“Applicant”) in a prior proceeding, Cancellation No.
92067242 (the “Prior Proceeding”). The motion is fully briefed.1

1 Applicant’s change of correspondence address, filed March 29, 2019, in Opposition No.
91244190, is noted. Board records have been updated accordingly.
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
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I. Background
On November 25, 2015, Applicant filed Application Serial No. 86832353, for the
mark FUNRAISE, in standard characters.2 The application included the following
goods and services:
• International Class 9: Computer software for the user to maintain a record
of the user’s charitable gifts; computer software for use in customer
relationship management (CRM); computer network interface devices;
Downloadable mobile applications for access to charitable fundraising,
namely maintenance of the user’s charitable gifts records;
• International Class 35: Providing an online portal for registration for
fundraising events; Customer relationship management; Providing an
interactive website for individuals and organizations featuring information
about organizing and conducting charity auctions for charitable
fundraising purposes;
• International Class 38: Educational text messaging services for
transmission of educational content via SMS; and
• International Class 42: Providing temporary use of non-downloadable
computer software for tracking charitable donor transactions; Application
service provider featuring application programming interface (API)
software for access to charitable fundraising, namely maintenance of the
user’s charitable gifts records; Data automation and collection service
using proprietary software to evaluate, analyze and collect service data;
Providing a website that gives users the ability to create customized web
pages featuring user-defined profiles.
Application Serial No. 86832353 was refused registration, in part, based on a
likelihood of confusion with Opposer’s Registration No. 3975142 for the mark FUN
RAISING, in standard characters, for “candy” in International Class 30 and
“charitable fund-raising” in International Class 36.3 12 TTABVUE 28-35. In an April

2 Filed November 25, 2015, alleging May 1, 2015 as the date of first use and August 30, 2015
as the date of first use in commerce.
3 Issued June 7, 2011, alleging January 4, 2011 as both the date of first use and the date of
first use in commerce.
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26, 2017 Office Action, the Examining Attorney issued a final partial refusal of
registration with respect to certain goods and services in each of the remaining
classes in the application.4 Id.
On October 26, 2017, Applicant filed a petition for partial cancellation of Opposer’s
Registration No. 3975142 in the Prior Proceeding. Applicant sought to restrict only
Opposer’s recitation of services in International Class 36 under Section 18 of the
Trademark Act, 15 U.S.C. § 1068, to avoid a finding of likelihood of confusion with
Applicant’s refused Application Serial No. 86832353.5
On December 12, 2017, in lieu of filing an answer to the petition to cancel, Opposer
filed a motion to dismiss for failure to state a claim pursuant to Fed. R. Civ. P.
12(b)(6). Applicant failed to file a response to the motion to dismiss and on January
12, 2018, the Board granted the motion to dismiss as conceded and denied the petition
to cancel with prejudice.
On April 19, 2018, Applicant filed a request to divide its Application Serial No.
86832353. 12 TTABVUE 41-43. The request to divide was granted and the child
application was assigned Serial No. 86983882 on May 4, 2018. Id. at 44-46. The child
application contains only the goods and services not subject to the partial refusal from
the parent application, namely:
• International Class 9: Computer software for the user in customer
relationship management (CRM); computer network interface devices;

4 Class 38 was deleted by Applicant prior to the April 26, 2017 Office Action.
5 Applicant explains that it selected “abandonment” as the ground for cancellation on the
ESTTA cover sheet, because ESTTA “does not provide [an] option for partial cancellation”
and “Applicant selected the closest ground.” 12 TTABVUE 6.
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• International Class 35: Customer relationship management; and
• International Class 42: Data automation and collection service using
proprietary software to evaluate, analyze and collect service data.
On October 17, 2018, Opposer filed a notice of opposition opposing registration of
the child application on the sole ground of likelihood of confusion pursuant to Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d).
In support of its standing and claim, Opposer pleaded ownership of Registration
No. 3975142. Opposer also pleaded ownership of Registration No. 1742446, for the
mark FUN RAISING MONEY, in typeset form,6 for “candy” in International Class
30.7
On November 26, 2018, Applicant filed an answer and counterclaims to cancel
Registration No. 3975142 as to International Class 36 only. As grounds for
cancellation, Applicant asserted non-use or in the alternative, a restriction under
Section 18 of the Trademark Act, 15 U.S.C. § 1068.
On January 2, 2019, Opposer filed an answer to the counterclaims, denying the
salient allegations therein and asserting numerous affirmative defenses, including
claim preclusion based on the Board’s decision in the Prior Proceeding.
On February 27, 2019, Opposer filed a motion for summary judgment asserting
that Applicant’s counterclaims are barred under the doctrine of claim preclusion.

6 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
A typed or typeset mark is the legal equivalent of a standard character mark. TMEP
§ 807.03(i) (October 2018).
7 Registration No. 1742446, issued December 22, 1992, alleging August 1, 1991 as both the
date of first use and the date of first use in commerce.
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Although the deadline for serving initial disclosures has not yet passed, the motion
for summary judgment is nevertheless timely inasmuch as it is based upon claim
preclusion. See Trademark Rule 2.127(e)(1).
II. Motion for Summary Judgment in Opposition No. 91244190
Opposer contends that Applicant’s counterclaims are barred by the doctrine of
claim preclusion based on the Board’s determination in the Prior Proceeding. In
support of its motion, Opposer submitted the following: Applicant’s petition for
partial cancellation in the Prior Proceeding; a copy of Opposer’s motion to dismiss in
the Prior Proceeding; and a copy of the Board’s January 12, 2018 order denying the
petition for partial cancellation with prejudice in the Prior Proceeding.
In response, Applicant submitted the following: a copy of the April 26, 2017 partial
final refusal of Applicant’s parent application; Applicant’s request for reconsideration
of the final partial refusal of its parent application; a screenshot of the ESTTA filing
page; a copy of Applicant’s April 19, 2018 request to divide its parent application; and
a copy of the May 4, 2018 notice of the completion of Applicant’s divisional request.
A. Summary Judgment Standard
Summary judgment is appropriate where the movant shows that there is no
genuine dispute as to any material fact and that it is entitled to judgment as a matter
of law. Fed. R. Civ. P. 56(a). A party asserting that a fact cannot be or is genuinely
disputed must support its assertion by either (1) citing to particular parts of materials
in the record, or (2) showing that the materials cited do not establish the absence or
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presence of a genuine dispute, or that an adverse party cannot produce admissible
evidence to support the fact. Fed. R. Civ. P. 56(c).
A movant for summary judgment carries the burden of proof in regard to its
motion. See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). In deciding the
motion, the function of the Board is not to try issues of fact, but to determine if there
are any genuine disputes of material fact to be tried. See TBMP § 528.01 and cases
cited therein. See, e.g., Chutter, Inc. v. Great Concepts, LLC, 119 USPQ2d 1865, 1867
(TTAB 2016) (citing Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d
2027, 2029 (Fed. Cir. 1993) and Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200,
22 USPQ2d 1542, 1542 (Fed. Cir. 1992)). When the moving party has supported its
motion with sufficient evidence that, if unopposed, indicates there is no genuine
dispute of material fact, the burden then shifts to the non-moving party to
demonstrate the existence of a genuine dispute of material fact to be resolved at trial.
Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1540 (TTAB 2009).
The nonmoving party must be given the benefit of all reasonable doubt as to
whether genuine issues of material fact exist, and the evidentiary record on summary
judgment, and all inferences to be drawn from the undisputed facts, must be viewed
in the light most favorable to the nonmoving party. See Opryland USA, Inc. v. Great
Am. Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992).
B. Analysis
Initially, we consider Applicant’s standing, which is a threshold issue that must
be pleaded and proven by the plaintiff in every inter partes case. See Empresa Cubana
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Del Tabaco v. Gen Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);
Ritchie v. Simpson, 171 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999). We
find that there is no genuine dispute of material fact that Applicant has standing to
bring its counterclaims by virtue of its position as defendant in this proceeding. See
Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1479 (TTAB 2007).
Under the doctrine of claim preclusion, the entry of a final judgment “on the
merits” of a claim (i.e., the cause of action) in a proceeding “prevents litigation of all
grounds for, or defenses to, recovery that were previously available to the parties,
regardless of whether they were asserted or determined in the prior proceeding.”
Brown v. Felsen, 442 U.S. 127, 131 (1979) (superseded by statute on other grounds).
For claim preclusion to be applied, the following factors must be present:
(1) the parties (or their privies) are identical;
(2) there has been an earlier final judgment on the merits of a claim; and
(3) the second claim is based on the same set of transactional facts as the first.
Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir.
2000).
In this case, the parties do not dispute that the present opposition involves the
same parties as the Prior Proceeding. Accordingly, no genuine dispute of material fact
exists regarding the first factor of the claim preclusion analysis.
With regard to the second factor, there is no genuine dispute of material fact that
there has been an earlier final judgment on the merits of a claim. “[W]hether the
judgment in the prior proceeding was the result of a dismissal with prejudice or even
default, for claim preclusion purposes, it is a final judgment on the merits.” Urock
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Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1411 (TTAB 2015). See Morris v. Jones,
329 U.S. 545, 550-51 (1947) (“A judgment of a court having jurisdiction of the parties
and of the subject matter operates as res judicata, in the absence of fraud or collusion,
even if obtained upon a default.”) (internal citation omitted); Orouba Agrifoods
Processing Co. v. United Food Imp., 97 USPQ2d 1310, 1314-15 (TTAB 2010) (“[E]ven
default judgments for failure to answer, or dismissals for failure to prosecute, where
there has been no decision ‘on the merits,’ can act as a bar under the doctrine of claim
preclusion.”); La Fara Importing Co. v. F. Lli de Cecco di Filippo Fara S. Martino
S.p.a., 8 USPQ2d 1143, 1146 (TTAB 1988) (“Issue preclusion operates only as to
issues actually litigated, whereas claim preclusion may operate between the parties
simply by virtue of the final judgment.”).
Applicant argues that claim preclusion does not apply because “[t]he Board’s
decision in the prior cancellation does not constitute a final judgment on the merits
of the claim in this proceeding.” 12 TTABVUE 10. For claim preclusion to apply,
however, there need not be a final judgment on the merits of the identical claim in
the current proceeding; rather, there must be a final judgment on the merits of a
claim that is based on the same set of transactional facts as the first claim. Jet, Inc.,
55 USPQ2d at 1856. There is no genuine dispute of material fact that the Board’s
denial of the petition to cancel in the Prior Proceeding constitutes a final judgment.
We therefore turn to the third factor, i.e., whether the claims in the counterclaim are
based on the same set of transactional facts as the claim in the Prior Proceeding.
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In determining whether the second claim is based on the same transactional facts
as the first, the Board is guided by the Restatement (Second) of Judgments. See Urock
Network, LLC, 115 USPQ2d at 1412. Section 25 of the Restatement provides that
claim preclusion applies even where the plaintiff may present evidence, grounds, or
theories not presented in the first proceeding or seek remedies or relief not sought in
the first proceeding. Id. (citing Section 25 of the Restatement (Second)). “To assess
whether the claims are based on the same set of transactional facts, comment b to
Section 24 of the Restatement considers whether there is a common nucleus of
operative facts.” Id.
Applicant has asserted two counterclaims against Opposer’s Registration No.
3975142: (1) non-use; and (2) restriction of Opposer’s services under Section 18 of the
Trademark Act to avoid a finding of a likelihood of confusion. We therefore examine
each claim separately.
1. Section 18 Counterclaim
We turn first to the equitable relief sought under Section 18 to restrict Opposer’s
“charitable fund-raising” services to avoid a finding of a likelihood of confusion with
Applicant’s involved application. To obtain an equitable restriction under Section 18
of the Trademark Act, a party must plead and prove that entry of the proposed
restriction will avoid a finding of likelihood of confusion and that the opponent is not
using its mark on the goods or services that will be effectively excluded by the
proposed restriction. See Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co. KG, 34
USPQ2d 1266, 1270 (TTAB 1994). For the reasons that follow, we find that there is
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no genuine dispute of material fact that the claim in the current proceeding involves
the same transactional facts as the claim in the Prior Proceeding.
Applicant is asserting as a counterclaim the identical claim sought in the Prior
Proceeding, namely, a restriction of Opposer’s services in Class 36 under Section 18
to avoid a likelihood of confusion. Each of the claims is premised on the same fact,
i.e., that Opposer’s identification of “charitable fund-raising” is overly broad and that
Opposer’s actual services are limited to “snack and candy fundraisers” or “‘charitable
fundraising’ by means of selling merchandize to others, namely, snacks and candy.”
9 TTABVUE 22 (petition for partial cancellation in Prior Proceeding) and 4
TTABVUE 10 (counterclaim in the current proceeding). Applicant argues that the
transactional facts are nevertheless different, because the child application was not
subject to the Examining Attorney’s partial refusal and Applicant’s Section 18 claim
in the Prior Proceeding was therefore limited solely to avoiding a likelihood of
confusion with the goods and services subject to the partial refusal.
Applicant’s parent application, in its entirety, was placed at issue in the Prior
Proceeding. The petition for partial cancellation in the Prior Proceeding pleaded
broadly that Applicant sought a restriction of Opposer’s Class 36 services to “avoid a
finding of likelihood of confusion between [Applicant’s] applied-for mark and
[Opposer’s] Registration.” 9 TTABVUE 23. Applicant pleaded that “[Applicant’s]
efforts to distinguish the parties’ respective marks and the goods and services offered
by the [Opposer] were rebuffed by the Examining Attorney on the grounds that the
scope of the services in the Registration is so broad that it encompasses all products
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and services in the connection with charitable fund raising.” 9 TTABVUE 21.
Applicant further pleaded that “If [Opposer’s] Registration properly reflected its
actual goods and services, it would exclude computer software and database
management related goods and services, and/or would be limited to the trade
channels of [Opposer’s] goods and services, namely, snacks and candies fundraisers.”
Id.
Accordingly, the fact that the Examining Attorney did not refuse the goods and
services later divided into the child application does not change the transactional
facts. Applicant petitioned to partially cancel Opposer’s registration to avoid a
likelihood of confusion with its then undivided application, which included all goods
and services in the eventual child application. In reaching a determination of the
Section 18 claim in the Prior Proceeding, the Board would not have been bound by
the Examining Attorney’s findings. Cf. In re Perez, 21 USPQ2d 1075, 1077 (TTAB
1991) (Board not bound by examining attorney decision regarding registrability).
Rather, the Board would have determined if the proposed restriction would have
avoided a finding of a likelihood of confusion based on the identification of goods and
services stated in the application and registration at issue, in their entirety. Cf. Aries
Sys. Corp. v. World Book Inc., 26 USPQ2d 1926 (TTAB 1993) (comparing respective
identifications of goods in the parties’ application and registration for purposes of
determining if proposed restrictions would avoid a finding of likelihood of confusion);
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002) (likelihood of confusion determined by comparison of goods and
Opposition Nos. 91244190, 91245989, and 91245990

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services in the parties’ respective applications and registrations). Cf. Tuxedo
Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981) (likelihood of confusion will be found if there is a likelihood of confusion with
respect to any good or service in the identification of a class).
Applicant’s child application constitutes a subset of the goods and services in the
parent application. Claim preclusion is applicable, “not only with respect to the
identical description of goods as had been previously litigated, but with respect to all
goods that could be said to be encompassed by that description of goods….” Gen. Elec.
Co. v. Raychem Corp., 204 USPQ 148, 150 (TTAB 1979) (citing Toro Co. v. Hardigg
Indus., Inc., 549 F.2d 785, 193 USPQ 149 (CCPA 1977)). Claim preclusion applies
where, as here, the goods or services in the second application are subsumed by the
goods or services in the first application. See J.I. Case Co. v. F.L. Indus., Inc. 229
USPQ 697, 700 (TTAB 1986) (finding that the doctrine of claim preclusion barred a
second application for the same mark where the goods in the second application were
“fully encompassed by those claimed in the prior proceeding.”).
The fact that Applicant is proposing different restrictive language to Opposer’s
Class 36 services does not constitute different transactional facts, but is rather
alternative relief for the same factual basis. Under the doctrine of claim preclusion,
a plaintiff is barred from a “subsequent assertion of the same transactional facts in
the form of a different cause of action or theory of relief.” See Young Eng’rs, Inc. v.
United States Int’l Trade Comm’n, 721 F.2d 1305, 219 USPQ 1142, 1151 (Fed. Cir.
1983). The basis for each claim is that Opposer’s identification of “charitable fund-
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raising” is overly broad and Opposer’s services should be limited to reflect Opposer’s
actual use. The fact that Applicant is now seeking a different restriction under
Section 18 is a request for alternative relief, but based on the same nucleus of facts.
In view of the foregoing, Opposer’s motion for summary judgment on Applicant’s
counterclaim for relief under Section 18 of the Trademark Act is granted and the
counterclaim is denied with prejudice.
2. Non-Use Counterclaim
With respect to the claim of non-use, we similarly find that there is no genuine
dispute of material fact that the claim is based on the same transactional facts of the
Prior Proceeding. Although Applicant’s theory of relief is different, Applicant relies
upon the same factual allegations to support its claim of non-use as it did to support
its petition for partial cancellation in the Prior Proceeding. In the Prior Proceeding,
Applicant pleaded the following:
• “According to the PTO database, [Opposer] filed Section 8 and 15 affidavits
for the Registration on June 7, 2017. The Section 8 and 15 affidavits have
been accepted and acknowledged.” 9 TTABVUE 22 (Petition ¶ 8).
• “On information and belief and according to [Opposer’s] web site at
, [Opposer’s] primary business is snack and
candy fundraisers. Respondent’s said website describing its businesses as:
‘Old Fashion Candy Company strives to offer you the most effective snack
and candy fundraisers … We offer a large assortment of snacks and candy
…’”. Id. (Petition ¶ 9).
In the current proceeding, in its counterclaim, Applicant has pleaded the
following:
• “Opposer filed a specimen in connection with the June 2017 Statement of
Use which is attached as Exhibit 3 to this Answer to Notice of Opposition
and Counterclaims. Opposer claimed that the specimen is ‘a catalog
evidencing the mark being used in connection with the services’ in Exhibit
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2, and the specimen in Exhibit 3 shows the FUN RAISING mark used in
connection with a conspicuous term ‘WITH LOLLIPOPS’ for sale of snacks
and candy.” 4 TTABVUE 7 (Counterclaim ¶ 18).
• “On information and belief and according to Opposer’s web site at
, Opposer’s primary business in relation to
Opposer’s Mark is sales of snacks and candy to third parties so that the
third parties can raise funds. Opposer’s website describes its business as
providing snacks and candy to any individual, group or organization so that
such entity can sell the snacks and candy Opposer provided to raise money.”
Id. at 8 (Counterclaim ¶ 20).
Applicant asserts the same specimens and website in support of its non-use claim
that it previously relied on in support of its Section 18 claim. Applicant is therefore
relying upon the same transactional facts to assert a new theory of relief. See Vitaline
Corp. v. Gen. Mills, Inc., 891 F.2d 273, 13 USPQ2d 1172 (Fed. Cir. 1989)
(abandonment claim barred by claim preclusion because claim of abandonment was
based on the same transactional facts as prior fraud claim—the defendant’s alleged
non-use of its mark on the goods identified in the registration).
Both claims are based on the premise that Opposer’s identification of its services
as “charitable fund-raising” is incorrect. In the Prior Proceeding, Applicant contended
that Opposer’s services, as evidenced by the specimens and Opposer’s website, were
more properly classified as “candies and snacks charitable fund-raising services,” 9
TTABVUE 22, while here, Applicant now alleges that the same actions by Opposer
“cannot be characterized as any type of ‘charitable fundraising.’” 4 TTABVUE 8
(Counterclaim ¶ 8). The nucleus of operative facts remains the same, i.e., Opposer’s
sale of candy for purposes of fundraising by third parties. The fact that Applicant has
now asserted a different cause of action for the same conduct by Opposer does not
constitute a new set of transactional facts. See Young Eng’rs, Inc., 219 USPQ at 1151.
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In view of the foregoing, Opposer’s motion for summary judgment on Applicant’s
counterclaim of non-use in Opposition No. 91244190 is granted and the counterclaim
is denied with prejudice.
III. Consolidation and Schedule
In Opposition Nos. 91245989 and 91245990, Opposer filed motions to suspend
proceedings pending final determination of the instant proceeding, Opposition No.
91244190. On June 27, 2019, the Board denied Opposer’s motion to suspend pending
final disposition of Opposition No. 91244190, but suspended the proceedings pending
determination of the motion for summary judgment in Opposition No. 91244190. The
Board noted that upon resumption, consolidation of the proceedings may be
appropriate.
The above-captioned proceedings involve common questions of law and fact and
the parties are the same. When cases involving common questions of law or fact are
pending before the Board, the Board may order the consolidation of the cases. See
Fed. R. Civ. P. 42(a); see also Regatta Sport Ltd. v. Telux-Pioneer Inc., 20 USPQ2d
1154 (TTAB 1991); and Estate of Biro v. Bic Corp., 18 USPQ2d 1382 (TTAB 1991).
In view thereof, Opposition Nos. 91244190, 91245989, and 91245990 are hereby
consolidated.
The consolidated cases may be presented on the same record and briefs. See Helene
Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989); and Hilson
Research Inc. v. Soc’y for Human Res. Mgmt., 26 USPQ2d 1423 (TTAB 1993).
Opposition Nos. 91244190, 91245989, and 91245990

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The Board file for these consolidated cases will be maintained in Opposition No.
91244190 as the “parent” case. As a general rule, from this point on, only a single
copy of any paper or motion should be filed in the parent case of the consolidated
proceedings, but that copy should bear all proceeding numbers in its caption.
The parties are further advised that despite being consolidated, each proceeding
retains its separate character. The decision on the consolidated cases shall take into
account any differences in the issues raised by the respective pleadings and a copy of
the final decision shall be placed in each proceeding file.8
Upon consolidation, the Board resets dates for the consolidated proceeding,
usually by adopting the dates as set in the most recently instituted of the cases being
consolidated. Accordingly, proceedings are resumed and remaining dates in these
consolidated proceedings are reset as follows:9

Answers to Counterclaims in Child Proceedings Due 8/30/2019
Deadline for Discovery Conference 9/29/2019
Discovery Opens 9/29/2019
Initial Disclosures Due 10/29/2019
Expert Disclosures Due 2/26/2020
Discovery Closes 3/27/2020
Pretrial Disclosures Due for Party in Position of Plaintiff in Original
Claim
5/11/2020
30-day Trial Period Ends for Party in Position of Plaintiff in Original
Claim
6/25/2020

8 The parties should promptly inform the Board in writing of any other related inter partes
proceedings. See Fed. R. Civ. P. 42(a).
9 The Board’s decision on Opposer’s motion for summary judgment granting denial of the
counterclaims in Opposition No. 91244190 does not affect the counterclaims in Opposition
Nos. 91245989 and 91245990. Opposer should file its answers to the counterclaims in each
of the child proceedings separately as an exception to the general rule that all subsequent
filings be made in the parent case only.
Opposition Nos. 91244190, 91245989, and 91245990

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Pretrial Disclosures Due for Party in Position of Defendant in
Original Claim and in Position of Plaintiff in Counterclaim
7/10/2020
30-day Trial Period Ends for Party in Position of Defendant in
Original Claim, and in Position of Plaintiff in Counterclaim
8/24/2020
Pretrial Disclosures Due for Rebuttal of Party in Position of Plaintiff
in Original Claim and in Position of Defendant in Counterclaim
9/8/2020
30-day Trial Period Ends for Rebuttal of Party in Position of Plaintiff
in Original Claim, and in Position of Defendant in Counterclaim
10/23/2020
Pretrial Disclosures Due for Rebuttal of Party in Position of Plaintiff
in Counterclaim
11/7/2020
15-day Trial Period Ends for Rebuttal of Party in Position of Plaintiff
in Counterclaim
12/7/2020
Opening Brief for Party in Position of Plaintiff in Original Claim Due 2/5/2021
Combined Brief for Party in Position of Defendant in Original Claim
and Opening Brief as Plaintiff in Counterclaim Due
3/7/2021
Combined Rebuttal Brief for Party in Position of Plaintiff in Original
Claim and Brief as Defendant in Counterclaim Due
4/6/2021
Rebuttal Brief for Party in Position of Plaintiff in Counterclaim Due 4/21/2021
Request for Oral Hearing (optional) Due 5/1/2021

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).