Ttab Decisions and Developments

• Publication year: 2022
• Author: Jane Shay Wald

TTAB DECISIONS AND DEVELOPMENTS

Jane Shay Wald
Irell & Manella LLP

If You Want To Add Stuff That Took Place After Pleading A Motion To Supplement's What You Are Needing

If You Want To Plead Things That Pre-Dated Your Filing You Must Move To Amend For The Board To Be Smiling

The Board allowed Opposer to supplement its pleadings to allege later-filed applications and earlier common law rights. "Opposer styles its motion as one for leave to amend under Fed. R. Civ. P. 15(a). However, to the extent Opposer seeks leave to allege ownership of applications filed after the proceeding was instituted, the motion is to supplement the pleading, and accordingly is governed by Fed. R. Civ. P. 15(d)."

The Applicant sought to register READY4LIFE for sanitizers for personal use. Opposer alleged a likelihood of confusion with its registered marks READY FOR LIFE and SIMPLY DONE READY FOR LIFE for various personal goods and cleaning products. After Applicant filed its response to the Notice of Opposition, the Opposer filed a motion to add to its likelihood of confusion claim by pleading two applications it filed after its Notice of Opposition, and to plead common law rights in its mark READY FOR LIFE for anti-bacterial wipes and disposable sanitizing wipes. It now alleged priority of use at common law.

The Board observed that there is considerable confusion, including in some case law, as to the difference between a motion to amend the pleading and a motion to supplement the pleading. "'Parties and courts occasionally confuse supplemental pleadings with amended pleadings and mislabeling is common. However, these misnomers are not of any significance and do not prevent the court from considering a motion to amend or supplement under the proper portion of Rule 15.'" Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216,1217 (TTAB 1990). Where a party wishes to set out any transaction, occurrence, or event that happened after the date of the pleading, that is properly done by a motion to supplement—not a motion to amend. Where the party wishes to allege prior rights, or other facts that occurred before the pleading was filed, a motion to amend is the proper procedure. Here, the Opposer sought to amend with some allegations it could have brought

[Page 26]

prior to its initial filing—a true request to amend. It also sought to bring in facts that occurred after the original pleadings—which would trigger the need for a motion to supplement. The Board did not ding the movant for mis-identifying the request to supplement as a request to augment because the standard is the same. If there is no prejudice to the other party, the motion—be it to amend or to supplement—is typically not untimely, regardless of the calendar. The fact that there is ample time (in this case, three months) remaining in the discovery period was relevant to the lack of prejudice to the Applicant.

The Board noted that amendments need not themselves set forth a cause of action. It is sufficient that they amplify allegations already alleged in the pleadings.

Applicant argued that the allegations pertaining to Opposer's newly filed applications are futile because the filing dates were later than the filing date of Applicant's application at issue. The Board disagreed. "At a minimum, Opposer's newly pleaded applications may be relevant to Opposer's entitlement to a statutory cause of action" (formerly known as "standing.")

The Board sua sponte raised an issue the parties hadn't identified, namely, affirmative defenses. A paragraph in Applicant's affirmative defenses alleged that Opposer's original Notice of Opposition failed to state a claim. "This is not a true affirmative defense, inasmuch as it asserts that Opposer's pleading is insufficient, rather than states a defense to a properly pleaded claim." The Board therefore struck this affirmative defense.

As to certain other paragraphs of Applicant's answer, the Board observed that these were not true affirmative defenses either, but were merely amplifications of Applicant's denials to the Notice of Opposition. The Board did not strike them "because they give Opposer more complete notice of Applicant's intended defenses and do not prejudice Opposer."

Finally, Applicant's answer recited a "reservation of right" to assert additional defenses. The Board deemed this improper under the Fed. R. Civ. P. because this "reservation" does not give Opposer fair notice of what these additional defenses might be. The Board struck the reservation of right, noting that if Applicant might in the future perceive a basis to assert additional affirmative defenses, it would need to bring a motion for leave to amend. Topco Holdings, Inc. v. Hand 2 Hand Industries, LLC, Opposition No. 91267988 (TTAB January 12, 2022).

A Billion Sales That Didn't Call Attention To The Mark At All Were Useless To Prove Trademark...