Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 SEE'S CANDY SHOPS, INC.
CAMPBELL SOUP COMPANY
Cancellation No. 17,801
August 8, 1989
Before Sams, Simms and Quinn
Opinion by Sams
See's Candy Shops, Inc. [See's] has filed a petition to cancel a registration, owned by Campbell Soup Company [Campbell], of the mark shown below, which mark is registered for "candy": [FN1]
As grounds for the petition to cancel, See's alleges that the registered mark (the color gold applied to boxes for candy) is merely descriptive and not distinctive of Campbell's goods or is generic or does not function to identify Campbell's goods and distinguish them from the like goods of others.
This case comes up on Campbell's motion for summary judgment. [FN2] In moving for summary judgment, Campbell argues that the claims See's now asserts as the grounds for its petition to cancel should have been asserted, as a compulsory counterclaim, in Opposition No. 79,575 and may not be heard in the present cancellation proceeding.
In particular, See's applied to register the mark "SEE'S CANDIES" (and design), as shown below, for candy. [FN3]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
The drawing of the mark in the application is lined for the color gold. Campbe ll opposed registration of See's mark, under Section 2(d) of the Trademark Act, claiming ownership of a prior registration for its "gold box" mark for candy ( i.e., the registration challenged in the present cancellation proceeding). S ee's denied the essential allegations of the notice of opposition but did not f il e a counterclaim to cancel Campbell's pleaded registration. Campbell now re lie s on Trademark Rule 2.106(b)(2)(i), which reads as follows:
A defense attacking the validity of any one or more of the registrations pleaded in the opposition shall be a compulsory counterclaim if grounds for such counterclaim exist at the time when the answer is filed. If grounds for a counterclaim are known to the applicant when the answer to the opposition is filed, the counterclaim shall be pleaded with or as part of the answer....
Campbell urges that, because of See's failure to plead, with its answer to the notice of opposition in the prior proceeding, a counterclaim to cancel Campbell's registration, the Board should dismiss the present petition for cancellation.
See's filed a response to Campbell's motion, to which Campbell filed a reply memorandum. See's argues that, as long as it pleads facts establishing its standing to file a cancellation petition, it may do so despite its failure to file a counterclaim for cancellation in the opposition proceeding. [FN4] See's points to language in Trademark Rule 2.106(b)(2)(i) to the effect that "[a] counterclaim need not be filed if it is the subject of another proceeding between the same parties...."
See's memorandum in opposition to Campbell's motion misses the essential point raised by Campbell's motion, that is, the timing of See's petition for cancellation. While an attack on the validity of a pleaded registration may be raised by the defendant in an opposition proceeding by way of a counterclaim or by way of a separately-filed petition to cancel, the rules set time limits within which such an attack must be made, whether by counterclaim or separate petition. As Campbell notes, the Trademark Rules of Practice require that a defense attacking the validity of a registration pleaded in an opposition be asserted with the answer, if the grounds for such counterclaim are known at the time the answer is filed. See's has not argued that the grounds for its petition to cancel were not known as of the date it filed its answer in the opposition. Given the fact that the grounds See's asserts in its petition to cancel (all of which pleaded grounds amount to an assertion that Campbell's gold box fails to function as a mark) are premised on facts obviously known by See's, as a competitor of Campbell's, at the time See's filed its answer to the notice of opposition, such an argument would be hard to sustain.
*2 The above recounted facts notwithstanding, Trademark Rule 2.107 provides that pleadings in an opposition proceeding may be amended in the same manner and to the same extent as in a civil action in the U.S. District Court. [See Fed.R.Civ.P. 15]. Moreover, Fed.R.Civ.P. 13(f) (made applicable to Board proceedings by Trademark Rule 2.116) provides that, when a pleader fails to set up a counterclaim through oversight, inadvertence, or excusable neglect, or when justice requires, he may, by leave of court, set up the counterclaim by amendment. Reading Fed.R.Civ.P. 15(a) in conjunction with Fed.R.Civ.P. 13(f), we find that justice requires allowing See's to seek cancellation of the registration pleaded by Campbell in Opposition No. 79,575. In particular, the liberal policy established by the Federal Rules of Civil Procedure concerning amendments to pleadings dictates allowance of See's cancellation petition, as the effect of dismissing the petition would be to foreclose See's from asserting any claim it may have against the pleaded registration. See, generally, 6 Wright and Miller, FEDERAL PRACTICE AND PROCEDURE (1971) and 1988 SUPPLEMENT ¶ 1430. A liberal approach seems particularly appropriate here, where the opposition proceeding is still in the early stages of discovery and where See's filed its petition to cancel within two seeks of the date it filed its answer to the notice of opposition. We distinguish Endo Laboratories, Inc. v. Fredericks, 197 USPQ 560 (TTAB 1977), cited by Campbell in its reply memorandum. There, in a case decided prior to the existence of the Board's present rule on compulsory counterclaims, the Board, applying the Federal Rules of Civil Procedure, deemed as untimely a petition to cancel (tantamount to a counterclaim for cancellation) filed almost eight months after the discovery period had expired and after opposer had submitted its brief on the case.
The cancellation proceeding will, therefore, be consolidated, for purposes of discovery and trial, with Opposition No. 79,575, as soon as Campbell files an answer to the petition to cancel. Campbell is allowed thirty days from the date of this decision in which to file its answer to the petition to cancel, following which, proceedings in Cancellation 17,801 and Opposition 79,575 will be consolidated.
Decision: Respondent's motion for summary judgment is denied. Respondent is allowed thirty days from the date of this decision in which to file its answer to the petition for cancellation.
J. D. Sams
R. L. Simms
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Registration No. 1,506,191, issued September 27, 1988. The registration notes that the mark is lined for the color gold and that the mark was published in accordance with the provisions of Section 2(f) of the Trademark Act.
FN2. In lieu of filing an answer to the petition for cancellation, Campbell filed a motion to dismiss the petition. Because the motion was accompanied by matter outside the pleading, the Board notified the parties that it would treat Campbell's motion as one for summary judgment and allowed See's ten days from the mailing date of the order to file a brief in response to Campbell's motion.
FN3. Serial No. 718,781, filed March 21, 1988.