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  • Counsel, when filing a motion, is certifying that all claims and other legal contentions asserted therein are warranted by existing law or by a nonfrivilous argument for the extension, modification, or reversal of existing law, and are not made for purposes of harassment or delay.
    • Schering-Plough Animal Health Corporation v. Aqua Gen AS, Opposition No. 91176641 (TTAB 2009).
      • Counsel for applicant is reminded of his obligations pursuant to Fed. R. Civ. P. 11, that when filing a motion, he is certifying that all claims and other legal contentions asserted therein are warranted by existing law or by a nonfrivilous argument for the extension, modification, or reversal of existing law, and are not made for purposes of harassment or delay.
  • Definition: Sufficiency of a Pleading.
    • Fair Indigo LLC v. Style Conscience, Opp. No. 91175571 (TTAB 2007).
      • In evaluating the sufficiency of a pleading, Trademark Rule 2.104(a) provides that:
        "The opposition must set forth a short and plain statement showing why the opposer believes he, she or it would be damaged by the registration of the opposed mark and state the grounds for opposition."
  • The elements of each claim should be stated concisely and directly, and include enough detail to give the defendant fair notice.
    • Fair Indigo LLC v. Style Conscience, Opp. No. 91175571 (TTAB 2007).
      • The elements of each claim should be stated concisely and directly, and include enough detail to give the defendant fair notice. See Fed. R. Civ. P. 8(e)(1); see also Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570, 1571 (since function of pleadings is to give fair notice of claim, a party is allowed reasonable latitude in its statement of its claims).
  • A plaintiff in a proceeding before the Board ordinarily can respond to a motion to dismiss by filing, inter alia, an amended complaint.
    • Fair Indigo LLC v. Style Conscience, Opp. No. 91175571 (TTAB 2007).
      • A plaintiff may amend its complaint once as a matter of course at any time before an answer thereto is served. Fed. R. Civ. P. 15(a). Thus, a plaintiff in a proceeding before the Board ordinarily can respond to a motion to dismiss by filing, inter alia, an amended complaint.
  • Pleading priority is less stringent than proving priority as the purpose of notice pleading is to obviate the need to allege particular "magic words."
    • Fair Indigo LLC v. Style Conscience, Opp. No. 91175571 (TTAB 2007).
      • At issue here is the sufficiency of the pleaded claims. Considering first whether opposer has asserted a proper Section 2(d) claim, the Board construes the allegations set forth in Paragraph 16 of opposer's amended notice of opposition as adequate notice pleading of applicant's reliance on analogous use to establish priority. Applicant's argument that opposer must allege the elements set forth in PacTel, including specifically alleging that the analogous use must be "sufficiently clear, widespread and repetitive," and make a "substantial impact on the purchasing public," reflects a misunderstanding of the rules regarding notice pleading. Applicant has confused the requirements for pleading priority through analogous use with the requirements for proving priority at trial or on summary judgment. As is often stated, the purpose of notice pleading is to obviate the need to allege particular "magic words." See Levi Strauss & Co. v. R. Josephs Sportwear, Inc., 36 USPQ2d 1328, 1330 (TTAB 1994).
  • Neither the brief in support of a motion nor the brief in response to a motion shall exceed twenty-five pages in length in its entirety, including table of contents, index of cases, description of record, statement of the issues, recitation of the facts, argument, and summary.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008).
      • Trademark Rule 2.127(a), which was recently amended to codify the Board's policy stated in Saint-Gobain v. Minnesota Mining and Manufacturing Company, 66 USPQ2d 1220 (TTAB 2005) ("Saint-Gobain"), concerning page limitations for briefs on motions, provides in relevant part: Neither the brief in support of a motion nor the brief in response to a motion shall exceed twenty-five pages in length in its entirety, including table of contents, index of cases, description of record, statement of the issues, recitation of the facts, argument, and summary.1
  • Trademark Rule 2.127(a) does not require briefs on motions to include a table of contents, index of cases, description of record, statement of the issues, recitation of the facts, argument, and summary.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008).
      • FOOTNOTE 1: "The rule does not require briefs on motions to include a table of contents, index of cases, description of record, statement of the issues, recitation of the facts, argument, and summary. However, if any of the above are included, they are counted as part of the stated page limit. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 F.R. 42242, 42256 (August 1, 2007) (comments on briefing of motions)."
  • The page limitation for a "brief in response to a motion" applies to a brief in which an opposition to a motion and a cross-motion are combined but address the same issues.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008).
      • The page limitation for a "brief in response to a motion" applies to a brief in which an opposition to a motion and a cross-motion are combined but address the same issues. In other words, one cannot subvert the page limitation for a brief by filing a combined brief in opposition and cross-motion, when both portions of the combined filing address the same issue raised by the original motion.
  • One cannot subvert the limit by filing both a brief in opposition and a separate brief in support of a cross-motion, when both address the same issue.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008).
      • Similarly, one cannot subvert the limit by filing both a brief in opposition and a separate brief in support of a cross-motion, when both address the same issue. C.f. Estate of Shakur v. Thug Life Clothing Co., 57 USPQ2d 1095, 1096 (TTAB 2000) (respondent improperly attempted to circumvent the page limitation set forth in Trademark Rule 2.127(a) by "dissect[ing] what is a single motion to compel into two motions separately addressing the interrogatories and document requests in order to file briefs totaling 50 pages").

        Thus, the rule with regard to page limits applies to the situation presented here, where the combined response and cross-motion are filed as a single brief and pertain to the same issues raised in the original motion.2

  • If the original motion and cross-motion involve different issues, the cross-motion brief will not count against the page limit applicable to the response to the original motion.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008).
      • FOOTNOTE 2: "It should be noted that if the original motion and crossmotion involve different issues, the brief in support of the cross-motion will not count against the page limit applicable to the response to the original motion. For example, if the initial motion for summary judgment is on the plaintiff's pleaded ground of priority and likelihood of confusion, but the cross-motion seeks summary judgment on a counterclaim for cancellation of the plaintiff's pleaded registration on the ground of abandonment, the defendant could permissibly file a brief in opposition to the original motion and a brief in support of the cross-motion, and because they would not be addressing the same issue, each could be 25 pages, whether the briefs were filed separately or combined."
  • Page limitations for briefs is intended to prevent unduly long briefs and unnecessary burdens on the TTAB.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008).
      • Although we note that neither party objected to the excessive length of its adversary's brief, the page limitation for briefs on motions is intended to prevent the filing of unduly long briefs and consequent unnecessary burdens on the Board.
  • The page limitation on briefs cannot be waived by action, inaction or consent of the parties.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008).
      • The page limitation on briefs cannot be waived by action, inaction or consent of the parties. See Saint-Gobain, supra.3
  • Briefs must be double spaced and at least 11-point type.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008).
      • FOOTNOTE 3: "In addition, briefs on motions must be double spaced and in at least 11-point type. See Trademark Rules 2.126(a)(1) and (b)."
  • Parties may not couch a surreply as a new motion in order to avoid the prohibition on surreplies.
    • Guthy-Renker Corporation v. Michael Boyd, Opposition No. 91182999 (TTAB 2008)
      • Applicant's cross-motion to dismiss is essentially a surreply, which is not permitted, and, therefore, it has not been considered. TBMP § 502.02(b) (2d ed. rev. 2004). Parties may not couch a surreply as a new motion in order to avoid the prohibition on surreplies.
  • Bother parties have equal responsibility to ensure that a discovery conference takes place by the assigned deadline.
    • Guthy-Renker Corporation v. Michael Boyd, Opposition No. 91182999 (TTAB 2008)
      • Moreover, it is the equal responsibility of both parties to ensure that a discovery conference takes place by the assigned deadline. Trademark Rules 2.120(a)(1) and (a)(2) and 2.120(g)(1).
  • The TTAB has adopted the practice of discovery conferences to avoid needless disputes and motions and to facilitate a smooth and timely conclusion to proceedings.
    • Guthy-Renker Corporation v. Michael Boyd, Opposition No. 91182999 (TTAB 2008)
      • The Board has adopted the practice of discovery conferences to avoid needless disputes and motions and to facilitate a smooth and timely conclusion to Board proceedings.
  • Case Finding: Opposer's motion for summary judgment and applicant's cross-motion for summary judgment are denied, without prejudice, for exceeding the page limitation.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008).
      • Accordingly, we find that both parties' briefs on their respective summary judgment motions violate the Board rule regarding page limitations for briefs on motions. In consequence thereof, opposer's motion for summary judgment and applicant's cross-motion for summary judgment are denied, without prejudice.
  • Trademark Rule 2.127(a) provides that the Board may treat a motion as conceded if no response is filed.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Trademark Rule 2.127(a) provides that the Board may treat a motion as conceded if no response is filed.
  • Motions to amend pleadings are liberally granted unless the amendment would violate settled law or be prejudicial to another party.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Motions to amend pleadings are liberally granted unless the amendment would violate settled law or be prejudicial to another party. Commodore Electronics v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993).
  • Inasmuch as opposer has not contested this motion, applicant's motion to amend is granted as conceded.
    • University Games Corporation v. 20Q.net Inc., Opposition Nos. 91168142 91170668 (TTAB 2008)
      • Inasmuch as opposer has not contested this motion, applicant's motion to amend is granted as conceded. See Trademark Rule 2.127(a) and Fed. R. Civ. P. 15(a).
Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008) Fair Indigo LLC v. Style Conscience, Opp. No. 91175571 (TTAB 2007) The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001) Grand Total
Saint-Gobain v. Minnesota Mining and Manufacturing Company, 66 USPQ2d 1220 (TTAB 2005) 1
Estate of Shakur v. Thug Life Clothing Co., 57 USPQ2d 1095 (TTAB 2000) 1
Commodore Electronics v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993) 1
Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570 (TTAB 1988) 1
Grand Total 2 1 1 4
No Statutes Listed.