Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 SDT, INC.
PATTERSON DENTAL COMPANY
Opposition No. 91,052
March 7, 1994
Before Simms, Cissel and Hanak
Administrative Trademark Judges
By the Board:
R.L. Simms, R.F. Cissel and E.W. Hanak
This case now comes up for consideration of opposer's motion for leave to amend its notice of opposition and applicant's motion to dismiss the opposition pursuant to Trademark Rule 2.132(a). Applicant filed objections to opposer's motion for leave to amend. Opposer filed a response to applicant's motion to dismiss, which includes a motion to extend testimony periods. [FN1]
The Board apologizes for the delay in acting on this case. Had there not been a delay, the motion to dismiss could have been avoided. In any event, the motion to dismiss is denied.
In essence, applicant argues that opposer was obligated to request a resetting of testimony periods, or a suspension of proceedings, pending the Board's decision on opposer's motion for leave to amend the notice of opposition. However, the case cited by applicant as support for its position, Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 U.S.P.Q.2d 1710 (Fed.Cir.1991), is factually distinguishable from the case at hand.
On the other hand, opposer's assertion that proceedings herein were automatically suspended, under Trademark Rule 2.127(d), when opposer's motion to amend was filed, is incorrect. While the Board will always suspend a case in which a potentially dispositive motion has been filed, proceedings in such a case are not formally suspended until the Board issues a suspension order. Further, we disagree with opposer's contention that the situation at hand calls for invocation of Rule 2.127(d). Whether opposer's motion is granted or denied, the case at hand will not be disposed of. Therefore, the motion is not potentially dispositive.
Though it perhaps would have been wiser, and certainly would have been more cautious, for opposer to seek an extension or suspension, we believe it is in both parties' interest to have the motion for leave to amend settled before the parties engage in significant discovery and trial activities. Indeed, in view of the nature of the issue raised by opposer's motion to amend, it would be unreasonable to expect either party to take discovery or offer evidence prior to the determination of the motion. Thus, we find good and sufficient cause to reset discovery and testimony periods, and we have done so infra. See Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 5 U.S.P.Q.2d 1067 (TTAB 1987).
We now turn to the motion that started it all, opposer's motion for leave to amend its notice of opposition. In its motion, opposer correctly points out that the Board shall freely grant leave to amend a pleading when justice so requires. However, opposer's proposed amended notice of opposition does not alter the ground for opposition or amend the factual allegations of the notice in any significant way. All that opposer really wants to do is to join its licensee as a party-plaintiff to this case. Thus, we shall consider opposer's motion for leave to amend insofar as it seeks to join another party.
*2 Opposer argues that it simply seeks "to bring in as a co-Opposer another party with a vital interest in the marks in question, [i.e.] the only licensee of SDT, Inc., which is PDX, Inc., because of the potential harm to PDX, Inc., if Applicant is permitted to register its marks." This is the sole argument offered by opposer in support of its motion. [FN2]
In opposing the motion, applicant argues that "a party may oppose within thirty days after publication or within an extension of time. [Trademark] Rule 2.101(c). The potential new opposer cannot meet either of these requirements." Applicant also notes that the potential new opposer is not "a new owner or transferee of rights to" the original opposer's mark. Finally, applicant notes that the potential new opposer did not pay the opposition filing fee.
We agree with applicant that joinder of opposer's licensee is not warranted under these circumstances. Each party wishing to oppose an application must do so by filing a notice of opposition within the statutory opposition period, or within an approved extension of time, and by filing the proper fee therefor. See Section 13 of the Trademark Act and Trademark Rule 2.101.
It is possible for multiple claimants to initiate an opposition together and then proceed with it as co-opposers, provided that the opposition is filed within the statutory opposition period, or during an extension of time obtained by the joint opposers, and provided that each of the joint opposers submits the opposition fee. See Trademark Rule 2.101(d)(3). Of course, each claimant must be able to establish its standing and grounds for opposition.
In addition, two or more parties who are in privity with one another may file a single opposition as joint opposers even if the opposition is filed during an extension of time obtained by only one of the parties. This is because an extension of time to oppose inures to the benefit of the potential opposer and its privies, so that a party in privity with a potential opposer may step into the potential opposer's shoes and file a notice of opposition or may join with the potential opposer as a joint opposer. See Trademark Rule 2.102(b) and In re Cooper, 209 USPQ 670 (Comm'r Pat.1980).
By contrast, once a timely notice of opposition has been filed, and the time for opposing has expired, the right to pursue the filed case is a right individual to the timely filer. Under certain circumstances, this right may be transferred but it may not be shared.
Typically, the right to go forward with an opposition may be transferred when the opposer, or its pleaded mark and the goodwill associated therewith, has been acquired by another party. See, e.g., Information Resources Inc. v. X*Press Information Services, 6 U.S.P.Q.2d 1034 (TTAB 1988) (survivor of merger substituted as party plaintiff for opposer). See also, Huffy Corp. v. Geoffrey Inc., 18 U.S.P.Q.2d 1240 (Comm'r Pat.1990) (transferee of opposer's interest in opposer's pleaded mark joined as party-plaintiff).
*3 The Huffy decision, however, makes it clear that joinder would not have been permitted if the result were simply to allow another party, other than the original opposer, to join the proceeding: "[Joinder] does not amount to allowing Derby to file an untimely notice of opposition. Rather, Derby, as the transferee, stands in the shoes of Huffy, the transferor." Huffy Corp., 18 U.S.P.Q.2d at 1242 (Commissioner quoting from Board decision reviewed on petition to the Commissioner). Under the practice articulated in the Huffy decision, joinder, rather than substitution, is effected solely to facilitate discovery and does not result in an opposition with multiple claimants. [FN3]
In the case at hand, though opposer obtained an extension of time to oppose only on its own behalf, opposer's licensee, as a party in privity with opposer, could have joined opposer in filing the opposition during the extension period. Having failed to join opposer in filing the notice of opposition during the extension period, opposer's licensee cannot, now, be joined as a party plaintiff herein.
Opposer's motion for leave to amend its pleading to add its licensee as co-opposer herein is denied. Discovery and trial dates are reset in the attached order.
Administrative Trademark Judges, Trademark Trial and Appeal Board
The parties should note that the Board prefers not to receive unnecessary extra copies of motions and other papers filed in Board proceedings. In certain instances, the Trademark Rules require the filing of additional copies of particular papers. See e.g., Trademark Rule 2.121(d) regarding consented motions to extend times and Trademark Rule 2.128(b) regarding briefs at final hearing. Otherwise, a party to a Board proceeding need only file the original motion or paper, or a single copy thereof if it wants to retain the original, and serve one copy on each adverse party.
FN2. Opposer filed a reply brief in support of its motion. The Trademark Rules of Practice neither provide for nor prohibit the filing of reply briefs on motions. Generally, the Board discourages the filing of reply briefs, see, e.g. Wells Fargo & . v. Lundeen & Associates, 20 U.S.P.Q.2d 1156 (TTAB 1991) and Strang Corp. v. Stouffer Corp., 16 U.S.P.Q.2d 1309 (TTAB 1990), and retains discretion to consider them or disregard them. In this case, we have not considered opposer's reply brief.
FN3. The Board will join or substitute a transferee of a plaintiff's mark if a copy of the document of transfer is filed with the Board. The transferee will be substituted if the transfer occurred prior to the commencement of the proceeding or if the discovery and testimony periods have closed; otherwise, the transferee will be joined, rather than substituted, to facilitate discovery.