TTAB - Trademark Trial and Appeal Board - *1 HARSCO CORPORATION v. ELECTRICAL SCIENCES, INC., AND THE LAWSON & SESSIONS CO., JOINED AS PARTY DEFENDANT Cancellation No. 16,543 August 11, 1988

Trademark Trial and Appeal Board

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






Cancellation No. 16,543

August 11, 1988


By the Board:



J.D. Sams, J.E. Rice and R.L. Simms






 This case now comes up on respondent's motion filed May 31, 1988 to strike portions of the petition for cancellation. On June 13, 1988, petitioner submitted a brief in opposition to the motion to strike.



 Respondent urges the Board to strike paragraphs 5, 7, 11, 12 and 13 of the petition for cancellation on the basis that the paragraphs are immaterial and/or redundant.



 The paragraphs in question read, as follows:



Paragraph 5



   Petitioner asserts that it has a right at least equal to that of registrant to use the color "BLUE" on plastic tubing used to contain electrical conductors in electrical systems installed by electrical contractors and that registrant is not entitled to federal registration trademark 1,438,029 for the color "BLUE".



Paragraph 7



   Petitioner further asserts the mark of Registration No. 1,438,029 was not distinctive and had not acquired secondary meaning as of the date of the application for registration, i.e. March 12, 1985.



Paragraph 11



   Said products were marketed under the trademark EZ-FLEX long prior to such time, if any, in which the color "BLUE" is alleged to have become distinctive of registrant's goods in commerce.



Paragraph 12



   On information and belief, HARSCO has sold, continues to sell and offer for sale in interstate commerce ENT products having a blue color, said sales having been initiated from a time long prior to registrant's date of application for registration.



Paragraph 13



   Petitioner believes that its early and continuous use in interstate commerce of blue plastic ENT tubing confers on petitioner a right at least equal to any right of registrants to use the color "BLUE" on said goods.



 Fed.R.Civ.P. 12(f) provides, in relevant part, for striking from a pleading any redundant, immaterial, impertinent or scandalous matter. Motions to strike are not favored and matter will not be stricken unless it clearly has no bearing upon the issues under litigation. See FRA S.p.A. v. Surg-O-Flex of America, Inc., 194 USPQ 42, 46 (S.D.N.Y.1976); Leon Shaffer Golnick Advertising, Inc. v. William G. Pendil Marketing Co., Inc. 177 USPQ 401, 402 (TTAB 1977); and cases cited therein.



 Under the Federal Rules of Civil Procedure the function of pleadings is to give fair notice of the claim asserted--preferably, as provided by Fed.R.Civ.P. 8(a)(2), in a form which contains "a short and plain statement of the claim." While it may be prudent to limit a complaint to those basic allegations necessary to withstand a motion to dismiss pursuant to Fed.R.Civ.P. 12(b)(6), a party is allowed reasonable latitude in its statement of its claims. In this regard, it has been noted that. "... matter will not be stricken from a pleading unless it is clear that it can have no possible bearing upon the subject matter of the litigation ... Even if the allegations are redundant or immaterial, they need not be stricken if their presence in the pleading cannot prejudice the adverse party. If evidentiary facts are pleaded, and they aid in giving a full understanding of the complaint as a whole they need not be stricken." 2A Moore's Federal Practice, Section 12.21[2] (2nd ed. 1985).



  *2 Regarding paragraph 7, respondent argues that it is immaterial as respondent need only prove that its mark had become distinctive prior to the date of its registration, not as of the date of its application; and that it is a redundant pleading of the allegations found in paragraphs 4 and 6, namely that the mark is not distinctive, and has not acquired secondary meaning.



 Petitioner argues that paragraph 7 is material and relevant to the issue of whether, as of respondent's application date, the mark was actually in use, whether registrant possessed an exclusive right to use the mark, and whether the mark was capable of identifying the source of respondent's goods.



 It is well established that in an opposition proceeding distinctiveness must be determined on the evidence as it exists at the time when the issue is under consideration. See McCormick and Company, Inc. v. Summers, 148 USPQ 272 (CCPA, 1966); and Kaiser Aluminum & Chemical Corp. v. American Meter Co., 153 USPQ 419 (TTAB 1967). See also Vol. 1, McCarthy, Trademarks and Unfair Competition Section 15.23(C). (2d ed. 1984). Manifestly, in an opposition, the time when an issue of distinctiveness is under consideration is after the filing and publication of the involved application but prior to the issuance of any registration. In a cancellation proceeding, which, of course, involves an issued registration, the question is whether an issue of distinctiveness must be determined as of the date of registration, or as of the time when the issue of distinctiveness is under consideration in the cancellation proceeding. We believe that the critical date is the date of registration, because if a mark which is not registrable in the absence of proof of distinctiveness was not in fact distinctive at the time of the issuance of a registration thereof, then the registration was invalidly issued. Cf. The Board of Trustees of the University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408, at 410-411 (TTAB 1986). In any event, since the allegations contained in paragraph 7 relate to the question of whether respondent's mark was distinctive of its goods in commerce at the time of the filing of the application for registration thereof, it is clear that these allegations, even if proven, would have no effect on the outcome of this proceeding and therefore should be stricken.



 With respect to paragraphs 5 and 11-13, respondent argues that even if petitioner has a right to use the subject mark (which respondent asserts petitioner does not), the allegations in paragraphs 5 and 11-13 do not provide a ground for cancellation, and thus are immaterial and should be stricken; and that even if petitioner had a right to use the mark, petitioner has not pleaded use prior to respondents.



 Petitioner argues that paragraphs 5, 11, 12 and 13 are directed to petitioner's use of the color blue and are not only material and relevant to petitioner's standing, potential damage, and whether the mark has become distinctive of respondent's goods, but are necessary elements which must be pleaded by petitioner. Petitioner also contends that it is alleging the color blue has never achieved trademark significance leading to any superior rights or priority of use; that respondent seeks to have the Board decide at the pleading stage that respondent has superior rights; and that the paragraphs are relevant and material on the issues of respondent's exclusivity of use, acquisition of secondary meaning, and whether respondent has a right to maintain its registration.



  *3 The allegations which respondent seeks to have stricken bear directly on the use of the mark by the petitioner, on respondent's claims of exclusive use, and on acquired distinctiveness of its mark. The allegations are not prejudicial to respondent, and in fact give respondent a more complete notice of petitioner's claim.



 For the above reasons, respondent's motion to strike paragraph 7 is granted; however, respondent's motion to strike paragraphs 5, and 11-13 is denied. Respondent is now allowed until August 31, 1988 in which to file its answer to the petition for cancellation.



J. D. Sams



J. E. Rice



R. L. Simms



Members, Trademark Trial and Appeal Board


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