TTAB - Trademark Trial and Appeal Board - *1 AMERICAN VITAMIN PRODUCTS, INC. v. DOWBRANDS INC. Cancellation No. 19,036 January 16, 1992

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)





Cancellation No. 19,036

January 16, 1992


Joseph J. Bonk



c/o Dowbrands Inc.



9550 North Zionsville Road



P.O. Box 68511



Indianapolis, IN 46268-0511



Stephen L. Baker



Baker & Friedman



220 Fifth Avenue, Suite 1500



New York, NY 10001



Before Rice, Simms and Cissel






By the Board:



J.E. Rice, R.L. Simms and R.F. Cissel



Members, Trademark Trial and Appeal Board



 This case now comes up on the following matters: (1) petitioner's motion to strike the affirmative defenses set forth in paragraphs 10, 11, 14, 15 and 16 of respondent's answer to the petition for cancellation; (2) petitioner's motion for an extension of time to answer respondent's interrogatories; and (3) respondent's motion to reopen the period for discovery. These matters have been fully briefed by the parties.



 We turn first to petitioner's motion to strike certain affirmative defenses. At this point, a brief review of the background of this case is believed to be helpful.



 In its petition for cancellation, petitioner alleges that it manufactures and sells a wide variety of health and beauty aids; that it is engaged in the sale of such goods in interstate commerce; that it "has or is about to forward" to the Patent and Trademark Office an application to register "IPANA" for health and beauty aids; that said application is based upon petitioner's bona fide intention to use the mark in commerce on or in connection with said goods; that the application "filed or to be filed" on behalf of petitioner will be rejected in view of respondent's existing registrations for "IPANA" for related goods on the grounds of likelihood of confusion; that respondent has made no bona fide use of the involved marks for a period of at least two years; and that respondent has abandoned the use of the registered marks.



 As affirmative defenses, respondent alleges that the petition for cancellation fails to state a claim upon which relief can be granted (paragraph 10); that petitioner lacks standing because it has not pleaded either that it filed an application to register the involved mark on or before the date it filed the petition or that a particular application has been rejected by the Patent and Trademark Office under Section 2(d) of the Trademark Act (paragraph 11); that petitioner is guilty of unclean hands and bad faith in that petitioner is attempting to appropriate the good will of respondent's mark (paragraph 14); that there is no likelihood of confusion because there is no use of petitioner's mark (paragraph 15); and that petitioner has no bona fide intention to use the involved mark in commerce because it has adopted a registered mark which has been associated in the public mind with registrant (paragraph 16).



 In support of its motion to strike, petitioner maintains that it has asserted a real commercial interest in cancelling the registration as well as a valid ground upon which to seek to cancel; that five days after filing the petition for cancellation, petitioner filed an application to register "IPANA" for related goods based upon petitioner's bona fide intent to use the mark in commerce; that petitioner has alleged a competent claim of likelihood of confusion; and that equitable defenses of bad faith and unclean hands are not available in a petition to cancel a registration based upon abandonment.



  *2 In its response to the motion, respondent asserts that the motion to strike, which was filed 28 days after service of respondent's answer, is untimely; that petitioner lacks standing because a refusal to register petitioner's mark by the Office had not yet occurred and because petitioner's applications for registrations had not yet been filed; that the Trademark Rules specifically provide for the affirmative defense of unclean hands in an answer to a petition for cancellation; and that since petitioner is alleging as its only interest in the mark a good faith bona fide intent to use, the petitioner's good faith intent is relevant.



 A motion to strike must be filed within 20 days after service of an answer upon a party. See Fed.R.Civ.P. 12(f). Consequently, petitioner's motion to strike is untimely. However, the Board, upon its own initiative, and at any time, may order stricken from a pleading any insufficient defense or any redundant, immaterial, impertinent, or scandalous matter. Fed.R.Civ.P. 12(f). Thus, the Board, in its discretion, may entertain an untimely motion to strike matter from a pleading. See: 2A Moore's federal Practice § 12.21[1] (2d ed. 1985) and Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ 2d 1137 (TTAB 1990). Accordingly, the Board will consider petitioner's motion to strike on the merits.



 Respondent alleges in paragraphs 10 and 11 of its affirmative defenses that the petition fails to state a claim upon which relief may be granted. In order to state a proper claim, petitioner must allege facts in its pleadings which, if proved, establish that (1) it has standing to challenge respondent's registration and (2) there is a valid ground for seeking to cancel the subject registration. See Lipton Industries, Inc. v. Ralston Purina Co., 213 USPQ 185 (CCPA 1982).



 There appears to be no dispute that petitioner has established a statutory ground for seeking to cancel respondent's registration. Therefore, the question before us is whether petitioner has demonstrated its standing to bring the petition.



 Standing is a threshold inquiry directed solely to establishing a plaintiff's interest in the proceeding. The purpose in requiring standing is to prevent litigation where there is no real controversy between the parties, where a plaintiff is no more than an intermeddler. See Lipton Industries, Inc., supra.



 We believe petitioner has pleaded a legitimate commercial interest in the outcome of the proceeding. As set forth in the pleadings, petitioner is engaged in the manufacture and sale of goods which are related to those identified in the subject registrations. Moreover, petitioner has indicated its bona fide intention to use the mark "IPANA" in connection with those goods. Clearly, petitioner has demonstrated an interest in the proceedings beyond that of a mere intermeddler. Whether those allegations are true, is a question of fact to be determined at trial.



  *3 In paragraph 15 of its affirmative defenses, respondent has alleged that there is no likelihood of confusion because petitioner has not used the mark. Inasmuch as the likelihood of confusion is not a pleaded issue in this case, this affirmative defense is unsupportable. Petitioner is not asserting likelihood of confusion as a ground for cancellation. In an attempt to demonstrate its standing and claim of damage, petitioner has asserted the belief that its intent-to-use application, once filed, would be rejected during prosecution on Section 2(d) grounds.



 Respondent has set forth affirmative defenses of unclean hands and bad faith in paragraphs 14 and 16, respectively. Where the ground for cancellation is abandonment, equitable defenses such as laches, bad faith and unclean hands, are not available in light of the overriding public interest in removing abandoned registrations from the register.



 In view of the foregoing, the motion to strike is granted in its entirety and paragraphs 10, 11, 14, 15 and 16 of respondent's affirmative defenses are hereby stricken.



 We turn next to petitioner's motion, filed October 4, 1991, for an extension of time until October 29, 1991 to answer respondent's interrogatories. [FN1] Petitioner requests the additional time on the basis that "it is continuing to gather information needed to respond to respondent's discovery requests".



 Respondent objected to the motion, noting that the discovery period closed on September 23, 1991 and pointing out that respondent had already agreed to two previous requests which extended the due date for petitioner's responses to September 29, 1991. Respondent contends that petitioner now seeks to extend the response period beyond the close of discovery in an attempt to foreclose respondent's opportunity to clarify petitioner's answers or to serve follow-up discovery.



 Petitioner maintains that its motion to extend, although filed after the close of discovery, was served within the time frame set forth in the parties' agreement. Petitioner points out that if respondent is not satisfied with petitioner's responses to those discovery requests, respondent will have the opportunity to file appropriate objections.



 The standard for allowing an extension of a prescribed period prior to the expiration of that period is good cause. See Fed.R.Civ.P. 6(b)(1). Ordinarily, the Board is liberal in granting extensions of time before the period to act has elapsed, so long as the moving party has not been guilty of negligence or bad faith and the privilege of extensions is not abused. Petitioner has shown good cause sufficient to justify an extension of the time to respond to respondent's outstanding discovery requests.



 Moreover, the basis for respondent's objection to the request is not well taken. Respondent had agreed to a previous extension of the due date for petitioner's discovery responses which was set to expire nearly a week after the close of discovery. Respondent's contention that petitioner is now deliberately seeking to extend the period for response beyond the close of discovery is difficult to understand in light of respondent's prior agreement to permit petitioner's responses after discovery closed.



  *4 In view of the foregoing, petitioner's motion for an extension of time is granted. Petitioner is accordingly allowed until ten days from the mailing date hereof in which to answer respondent's interrogatories. [FN2] Respondent, of course, is entitled to file the appropriate discovery motions if those responses are believed to be insufficient.



 In light of respondent's objections, the parties are advised that no further enlargements of this nature will be permitted at petitioner's request in the absence of a stipulation or a showing of extraordinary circumstances.



 We turn then to respondent's motion to reopen the period for discovery. [FN3] Respondent argues that it would be inappropriate for discovery to close prior to the decision by the Board on petitioner's motion to strike; that respondent has yet to receive answers to its first set of interrogatories, request for production of documents or request for admissions; that if petitioner does not respond or objects to respondent's discovery requests, discovery motions may be in order; and that it may be necessary to conduct follow-up discovery, depending on petitioner's responses to the discovery requests.



 Petitioner argues that respondent has failed to show excusable neglect to reopen the discovery period as required under Fed.R.Civ.P. 6(b)(2); that the Board's delay in deciding petitioner's motion to strike has no substantive or procedural effect upon respondent's motion to reopen discovery in that a favorable decision would serve to limit the issues rather than expand them; and that respondent has had a full and fair opportunity to seek discovery on issues relating to its affirmative defenses.



 As made applicable by Trademark Rule 2.116(a), the relevant provisions of  Fed.R.Civ.P. 6(b) permit the Board in its discretion to reopen the discovery period where the failure to act is shown to be due to excusable neglect. The question to be determined, then, is whether the reasons submitted by respondent constitute excusable neglect.



 Respondent's concerns regarding the status of petitioner's motion to strike, respondent's ability to conduct follow-up discovery and to file appropriate discovery motions if the circumstances warrant are noted. However, those concerns do not account for respondent's failure to submit a timely request for an extension of the discovery period. Under the circumstances, the Board does not believe that the reasons set forth by respondent constitute excusable neglect. [FN4]



 Respondent's motion to reopen the discovery period is consequently denied.



 Trial dates, commencing with petitioner's initial testimony period, are reset in the accompanying trial order.



J. E. Rice



R. L. Simms



R. F. Cissel



Members, Trademark Trial and Appeal Board



FN1. The unopposed motion for an extension of discovery and trial dates, filed by petitioner on July 29, 1991 is granted. The stipulated requests for extensions of time to respond to respondent's interrogatories, filed by petitioner on August 12, 1991 and September 13, 1991 are approved.



FN2. Petitioner's unopposed request, filed October 23, 1991 for suspension of proceedings pending a ruling by the Board on the parties' outstanding motions, is granted.



FN3. While respondent's motion is styled a motion to extend, it must be treated as a motion to reopen since it was filed after the close of the discovery period. See Fed.R.Civ.P. 6(b).



FN4. Respondent's argument regarding its inability to take follow-up discovery is unconvincing particularly since respondent did not initiate discovery until the last days of the original discovery period. As a result of the delay, respondent would not have been entitled to take follow-up discovery in any event. Moreover, the status of the motion to strike respondent's affirmative defenses has no bearing on the question of whether discovery should be reopened inasmuch as there is no indication that respondent refrained from taking discovery on those matters pending a decision by the Board on the motion to strike.



Terry Holtzman






  *5 In accordance with the Trademark Rules of Practice, trial dates are set as indicated below. IN EACH INSTANCE, a copy of the transcript of testimony together with copies of documentary exhibits, must be served on the adverse party WITHIN THIRTY DAYS after completion of the taking of testimony. Rule 2.125.




THE PERIOD FOR DISCOVERY TO CLOSE:                                   CLOSED     

Testimony period for party in position of plaintiff to close         March 16,  

 (opening thirty days prior thereto)                                  1992     

Testimony period for party in position of defendant to close         May 15,    

 (opening thirty days prior thereto)                                  1992     

Rebuttal testimony period to close (opening fifteen days prior       June 22,   

 thereto)                                                             1992     


   Briefs shall be filed in accordance with Rule 2.128(a) and (b).

   An oral hearing will be set only upon request filed as provided by Rule 2.129.


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