IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91 159298
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`Application Serial No. 76/510,143
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`Published in the Ofiicial Gazette
`on December 2, 2003
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`u.s.Patenta.TMOfelTMMailFfcptDt.#78
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`05-24-2004
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`HANCOKINC
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`PRINSCO, INC.
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`Opposer,
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`V.
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`Applicant
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`APPLICANT’S AMENDED ANSWER TO NOTICE OF OPPOSITION
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`Prinsco, Inc. ("Applicant"), a Minnesota corporation,
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`located and doing business at 108
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`Highway 7 West, Prinsburg, Minnesota 56281, hereby answers the Official Notice of Opposition,
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`No. 91159298 filed by Hancor, Inc. ("Opposer") against Applicant's allowed published application
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`to register its trademark, ECOPIPE.
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`1.
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`Answering paragraph 1 of Hancor's Notice of Opposition, Applicant is currently
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`without sufficient knowledge or information to form a belief as to the truth of the facts related to the
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`allegations contained therein, and therefore denies same.
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`2.
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`Answering paragraph 2 of Hancor's Notice of Opposition, Applicant denies that
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`Federal Registration No. 2,642,585 is for the mark ECOFIRST. Applicant is currently without
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`sufficient knowledge or information to form a belief as to the truth of the facts related to the
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`remainder of the allegations contained in this paragraph, and therefore denies same.
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`3.
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`Answering paragraph 3 of said Notice of Opposition, Applicant is currently without
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`sufficient knowledge or information to form a belief as to the truth of the facts related to the
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`allegations contained therein, and therefore denies same.
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`4.
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`Answering paragraph 4 of said Notice of Opposition, Applicant is currently without
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`suficient knowledge or information to form a belief as to the truth of the facts related to the
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`allegations contained therein, and therefore denies same.
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`5.
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`Answering paragraph 5 of said Notice of Opposition, Applicant is currently without
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`sufficient knowledge or information to form a belief as to the truth of the facts related to the
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`allegations contained therein, and therefore denies same.
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`6.
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`Answering paragraph 6 of said Notice of Opposition, Applicant admits the
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`allegations of said paragraph.
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`7.
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`Answering paragraph 7 of said Notice of Opposition, Applicant admits that it does
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`compete directly with the Opposer,
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`to a limited extent only,
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`in the agriculture and commercial
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`markets.
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`8.
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`Answering paragraph 8 of said Notice of Opposition, Applicant admits that it does
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`sell and distribute corrugated high-density polyethylene pipe of some sizes, and does manufacture
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`pipe using recycled high-density polyethylene, but only in a limited variety and sizes. Applicant
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`admits that Opposer sells and distributes corrugated high-density polyethylene pipe of some sizes.
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`Applicant is without sufficient knowledge or information as to Opposer's current manufacturing
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`capabilities and therefore denies
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`that Opposer manufactures pipe of recycled high-density
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`polyethylene.
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`9.
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`Answering paragraph 9 of said Notice of Opposition, Applicant admits that it sells
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`and distributes its products in the construction, building, agricultural, recreational, residential, and
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`specialty markets. Applicant is currently without sufficient knowledge or information as to extent
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`of distribution channels of the Opposer, and therefore denies the remainder of this paragraph.
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`10.
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`Answering paragraph 10 of said Opposition, Applicant admits that
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`it sells its
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`products in some of the same geographical regions as Opposer, and advertises in some of the same
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`publications and at some of the same trade shows. Applicant is without sufficient knowledge to
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`form a belief as to whether "both companies" sell their products in all of the same geographical
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`regions and advertise in all of the same publications and at all of the same trade shows, and
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`accordingly denies the same.
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`11.
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`Answering paragraph 11 of said Notice of Opposition, Applicant denies that Opposer
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`provided it technology necessary to manufacture pipe from recycled high-density polyethylene, as
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`well as Opposer's false implication that it provided Applicant any such technology gratuitously.
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`Applicant admits, however,
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`that it did receive certain technology from the Opposer, as partial
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`consideration for settlement of Applicant's civil suit for patent infringement against Opposer, to
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`improve upon technology it already possessed for manufacturing pipe from recycled high-density
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`polyethylene, and that it uses said technology to make products it sells under its ECOPIPE mark.
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`12.
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`Answering paragraph 12 of said Notice of Opposition, Applicant admits that
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`Opposer is the owner of recently issued U.S. Trademark Registration No. 2,765,879 on the un-
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`enforceable Supplemental Register. Applicant is without sufficient knowledge or information to
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`form a belief as to the alleged use to which the Opposer may put the green band referred to therein,
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`and therefore denies the use referred to in said paragraph 12.
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`13.
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`Answering paragraph 13 of said Notice of Opposition, Applicant states that it
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`initially made limited experimental use of a green shrink-wrap to protect its gasket. Unsatisfied,
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`Applicant shifled to the use of a stronger white shrink-wrap, and continues such usage to date.
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`Applicant denies paragraph 13 in all other respects,
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`including Opposer's alleged speculative
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`expectations, as Applicant is without sufficient knowledge or information to form a belief as to the
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`truth thereof.
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`14.
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`Answering paragraph 14 of said Notice of Opposition, Applicant denies that its
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`ECOPIPE mark is of an identical nature to any mark owned by the Opposer, and denies that its
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`goods and services are of an identical nature to those of the Opposer, and denies that its ECOPIPE
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`mark is likely to cause confusion, to cause mistake, or to deceive.
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`15.
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`Answering paragraph 15 of said Notice of Opposition, Applicant admits that is
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`intends to use the mark ECOPIPE on pipe manufactured from recycled high-density polyethylene
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`pipe. Applicant is without sufficient knowledge or information to form a belief as to the truth of the
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`allegation that such pipe assists in preserving resources and landfill space, or is "ecologically
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`friendly," and therefore denies the same.
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`16.
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`Answering paragraph 16 of said Notice of Opposition, Applicant denies that its
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`ECOPIPE mark is merely descriptive,
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`irrespective of any use to which it may be put and
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`irrespective of the Opposer's unwarranted presumptions with respect
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`to its anticipated usage.
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`Applicant reincorporates its answer from paragraph 15 above, and therefore denies that such pipe is
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`"ecologically friendly. "
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`AFFIRMATIVE DEFENSES
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`1.
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`Applicant is the owner of Federal Registration No. 2,802,952 for the distinctive mark
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`ECO-PIPE SUPREME covering recycled high-density polyethylene pipe, the application for which
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`was filed on an intent-to-use basis on June 7, 2001, well prior to Opposer's date of alleged first
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`usage of the word ECOFIRST and Design as claimed in Registration No. 2,642,585, or any alleged
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`use of the word ECOFIRST apart from any design element. Applicant's use of such mark has been
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`valid in the ordinary course of trade without abandonment. As such, Opposer has had full, clear and
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`unequivocal advance legal notice of Applicant's intent to adopt and use a trademark, the salient
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`portion of which is virtually identical to ECOPIPE. Opposer is therefore estopped from now
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`opposing Applicant's application to register ECOPIPE based on alleged priority of rights and
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`likelihood of confusion.
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`2.
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`Applicant's first usage of ECOPIPE in commerce antedates Opposer's date of alleged
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`first usage of ECOFIRST and Design as claimed in Registration No. 2,642,585, or any alleged use
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`of the word ECOFIRST apart from any design element, and such use by Applicant has been valid in
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`the ordinary course of trade without abandonment. Accordingly, Opposer's opposition fails to state
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`a claim upon which relief can be granted.
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`3.
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`On information and belief, Opposer's only mark is comprised of a distinctive design
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`element in combination with the term ECOFIRST as shown in Registration No. 2,642,585, not the
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`word ECOFIRST used alone, as alleged by Hancor, and ECOPIPE clearly is not confilsingly similar
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`with Opposer's combination mark.
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`4.
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`On information and belief, Opposer's alleged mark ECOFIRST is not entitled to
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`protection under Federal, State, or common law, because Opposer has made no use of the mark
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`ECOFIRST alone, as alleged by Opposer, and therefore has developed no goodwill or rights in and
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`to the mark ECOFIRST, used alone as alleged by Opposer.
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`5.
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`On information and belief, Opposer is not entitled to rely on its alleged trademark
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`rights in the mark ECOFIRST in opposing Applicant's application to register the mark ECOPIPE
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`because Applicant has developed prior and/or intervening rights over Opposer to use the mark
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`ECOPIPE as a trademark on plastic drainage pipe made of recycled polyethylene.
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`6.
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`Applicant's ECOPIPE mark is not likely to cause confilsion, or to cause mistake, or
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`to deceive with respect to Opposer's alleged mark, because it differs materially phonetically and in
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`appearance, spelling, content, and meaning.
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`7.
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`Applicant's mark ECOPIPE is a coined word which cannot be found in the
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`dictionary, and which is capable of multiple interpretations.
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`It is, in fact, suggestive and, therefore
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`properly registrable on the Principal Register, because it requires thought and imagination on the
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`part of the viewer.
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`APPLICANT’S COUNTERCLAHVI IN THE ALTERNATIVE FOR CANCELLATION OF
`OPPOSER’S PLEADED REGISTRATION
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`Applicant, Prinsco, Inc., believes that it is being, and will be, damaged by registration of the mark
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`shown in Opposer’s pleaded Registration No. 2,642,585 in the current Opposition Proceeding, and
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`as its counterclaim herein, hereby petitions for cancellation of said Registration No. 2,642,585. As
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`grounds for Applicant’s Counterclaim in the Alternative for Cancellation of Opposer’s Pleaded
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`Registration, Applicant asserts the following:
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`1.
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`Applicant reasserts and incorporates herein, to an extent not inconsistent with the pleadings
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`of this alternative counterclaim, those answers, responses and allegations to Opposer’s Notice of
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`Opposition set forth in Paragraphs 1-16 above, and Applicant’s Affirmative Defenses 1-7 thereto, as
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`though fiilly set forth herein.
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`2.
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`Opposer
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`is
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`the owner of U.S. Registration No. 2,642,585 (hereinafter “Pleaded
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`Registration”), for the mark ECOFIRST & Design, covering “flexible polyethylene pipe for use in
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`water drainage,” the application for which recites an alleged date of first use of the mark anywhere
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`and in interstate commerce at least as early as October 24, 2001.
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`3.
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`Applicant has been using, and is now using in the United States, and in interstate commerce,
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`the mark ECOPIPE as a trademark in connection with the sale of water drainage tubing constructed
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`of recycled high density polyethylene. Such use of the mark ECOPIPE by the Applicant has been
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`valid, continuous and without interruption or abandonment since a date prior to October 24, 2001,
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`and on information and belief, since a date prior to Opposer’s first use of its registered mark
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`ECOFIRST & Design in connection with those goods designated in its Pleaded Registration.
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`4.
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`As a result of Applicant’s continuous and uninterrupted use of the mark ECOPIPE in
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`connection with water drainage tubing constructed of recycled high density polyethylene, the mark
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`ECOPIPE has become associated in the minds of the consuming public with such goods emanating
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`from the Applicant, and is symbolic of extensive goodwill and consumer recognition developed by
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`Applicant.
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`5.
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`Opposer has alleged that Applicant competes directly with Opposer in the same markets;
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`that both companies sell and distribute, inter alia, corrugated high density polyethylene pipe in a
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`variety of sizes; that both manufacture pipe using recycled high density polyethylene; and that both
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`companies sell and distribute their products to customers in the construction, building, agricultural,
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`recreational, residential and specialty markets. To the extent that the Board deems these allegations
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`to constitute allegations that Opposer and Applicant’s market the same or similar products through
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`the same or similar channels of trade and in the same markets, Applicant hereby recites said
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`allegations in support of Applicant’s Counterclaim in the Alternative for Cancellation of Opposer’s
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`Pleaded Registration, and asserts same in the alternative.
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`6.
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`Opposer has alleged that,
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`in View of the identical nature of Opposer’s and Applicant’s
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`respective marks and the identical nature of the goods and/or services of the respective parties,
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`Applicant’s mark is likely to cause confusion, or to cause mistake, or to deceive. To the extent that
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`the Board deems these allegations to constitute an allegation that there is a likelihood of confiision
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`between Opposer’s and Applicant’s respective trademarks, ECOFIRST & Design and ECOPIPE,
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`Applicant hereby recites said allegation in support of Applicant’s Counterclaim in the Alternative
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`for Cancellation of Opposer’s Pleaded Registration, and asserts same in the alternative.
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`7.
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`By virtue of the existence of Opposer’s Pleaded Registration, and in View of the fact that
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`Opposer’s mark ECOFIRST & Design is likely to cause confiision, or to cause mistake, or to
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`deceive, as alternatively pleaded herein, Applicant has been and will continue to be damaged in that
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`Opposer’s Pleaded Registration, U.S. Registration No. 2,642,585, casts a cloud on Applicant’s legal
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`right to use, develop and expand the use of its established trademark ECOPIPE.
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`Applicant hereby appoints Schroeder & Siegfried, P.A., 222 South Ninth Street, Suite 2870,
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`Minneapolis, Minnesota
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`55402,
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`to act as attorneys for Applicant herein, with filll power to
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`prosecute said Opposition,
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`to transact all relevant business with the United States Patent and
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`Trademark Office and in the United States Courts and to receive all official communications in
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`connection with this Opposition.
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`WHEREFORE, Applicant respectfiilly prays that Opposer’s Opposition be dismissed in its
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`entirety, and that Opposer’s Pleaded Registration No. 2,642,585, for ECOFIRST & Design, be
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`cancelled in favor of Applicant’s counterclaim herein.
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`Dated: 5( 7//Z 7” "7
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`.7
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`,/
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`BriarfP . Schroeder
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`Schroeder & Siegfried, P.A.
`222 South Ninth Street
`Suite 2870
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`Phone: 612/339-0120
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`ATTORNEY FOR APPLICANT
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91 159298
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`E
`E
`Application Serial No. 76/510,143 E g’
`E ‘V
`E 3
`E 8
`E
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`Published in the Official Gazette
`on December 2, 2003
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`U-S-Pawn!8:TMOfc/TMMailPentDt.#78
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`HANCOK INC.
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`PRINSCO, INC.
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`Opposer,
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`v.
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`Applicant
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`APPLICANT'S NOTICE OF MOTION AND MOTION TO AMEND PLEADINGS
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`Please take notice that Applicant, Prinsco, Inc., pursuant to Federal Rule of Civil Procedure
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`15(a) and 37 CFR §2.20l, hereby moves the Board for leave to amend its initial Answer in the
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`above Opposition to include Applicant's Counterclaim in the Alternative to Cancel Opposer’s
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`Pleaded Registration, based on likelihood of confusion and priority of use. Pursuant to 37 CFR
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`§2.106(b)(2)(i), it is believed that the instant Motion is timely by reason, as will be shown herein,
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`that grounds for Applicant's counterclaim were not known at the time Applicant filed its Answer to
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`the Opposition, and are being promptly pleaded upon learning of such grounds supporting the
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`counterclaim subsequent thereto. Accordingly,
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`leave to amend the Applicant's pleadings in this
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`Opposition is respectfully requested.
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`BACKGROUND
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`On April 28, 2003, Applicant filed in the United States Patent and Trademark Omce
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`Application Serial No. 76/510,143 to register the mark ECOPIPE under International Class 17 for
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`water drainage tubing constructed of recycled HDPE (high density polyethylene).
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`In its application,
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`Applicant alleged June 1, 2001 as its date of first use “anywhere,” and March 13, 2002 as its date of
`77
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`first use “in commerce.
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`This application, which is the subject of the instant opposition proceeding,
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`was published for opposition on December 2, 2003.
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`Opposer, Hancor, Inc., thereafier filed its
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`‘Notice of Opposition on January 8, 2004 alleging, inter alia, that Applicant's mark ECOPIPE was
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`likely to cause confiision with Opposer's registered mark ECOFIRST and Design, U.S. Registration
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`No. 2,642,585. Opposer alleges a date of first use of its mark ECOFIRST and Design since “at least
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`as early as October 24, 2001.” (Opposer’s Notice of Opposition, 1] 1).
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`Applicant's Answer to Opposer's Notice of Opposition was prepared and filed on March 12,
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`2004, denying the substantive allegations of Opposer and asserting several affirmative defenses in
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`response thereto. Unfortunately, in the process of investigating and preparing Applicant's Answer,
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`it was determined that the initial date of first use “anywhere,” as recited in Applicant's initial
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`application, was in error.
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`(Petersen Aff., 11 4). Applicant erroneously believed that the date of first
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`use “anywhere” meant the date upon which Applicant first internally referenced the designated
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`goods as ECOPIPE, which was the date it first began commercially producing such goods.
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`Therefore, the date of first use was, in fact, erroneously recited as the date of first production, rather
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`than the first date the mark ECOPIPE was used as a trademark. (Petersen Aff., 1] 3).
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`Despite such error, Applicant continued to believe that, in View of its early production date,
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`first use of its mark ECOPIPE in connection with the goods would likely have followed soon, and
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`may have been prior to Opposer's alleged date of first use of its mark ECOFIRST and Design.
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`(Petersen Aff., 1] 4). For this reason, Applicant undertook a search for evidence of such early usage
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`at
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`its principal manufacturing facility in Prinsburg, Minnesota. However, at the time of filing
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`Applicant's Answer to Opposer's Notice of Opposition, Applicant had not found any evidence of
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`use of its mark ECOPIPE which predated Opposer’s alleged first use date of ECOFIRST & Design.
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`Applicant had not yet, however, had the opportunity to explore and investigate the shipping
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`documents maintained at a number of its off-site storage facilities (Petersen Aff., 11 4). Therefore, at
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`the time of filing Applicant's Answer to Opposer's Notice of Opposition, while Applicant believed
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`evidence existed, facts supporting a counterclaim for cancellation of Opposer's pleaded registration
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`based on priority of use were not known or available to the Applicant. Consequently, in order to
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`preserve this potential defense and investigate the matter fiirther, Applicant, in its Answer, alleged
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`‘priority of use of its mark ECOPIPE as an affirmative defense. (Answer to Notice of Opposition,
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`Affirmative Defense No. 2; Schroeder Aff, 1] 3).
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`On or about March 18, 2004, and while in the process of investigating facts and searching
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`for documents responsive to Opposer's first set of Discovery requests, Applicant discovered records
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`from one of its non-principal off-site facilities pertaining to shipments made of products in
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`connection with which the mark ECOPIPE was intended for use. Upon fiirther study of such
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`records, Applicant found various documents pertaining to orders filled from its Rose Creek,
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`Minnesota storage facility under
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`the mark ECOPIPE.
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`(Petersen Aff.
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`1] 6).
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`Although the
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`investigation of such documents is continuing at the time of filing the instant Motion, Applicant
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`now believes that it has uncovered sufficient documentation to establish a continuing bona fide use
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`of its mark ECOPIPE in interstate commerce since a date prior to Opposer's alleged date of first use,
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`October 24, 2001, claimed in U.S. Registration No. 2,652,585.
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`(Petersen Aff. 11 6)‘
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`Opposer's First Set of Interrogatories and First Request for Production of Documents and
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`Things were served upon Applicant Februaiy 24, 2004. Applicant's responses thereto were served
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`on Opposer March 29, 2004, along with Applicant's First Set of Interrogatories and Applicant's First
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`Request For Production of Documents and Things. Although Applicant requested documents that
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`would allow it to verify Opposer’s actual date of first use of the mark ECOFIRST & Design, to
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`date, no documents have been exchanged between the parties. Moreover, no Stipulated Protective
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`Order has yet been proposed or considered for the exchange of confidential
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`information; no
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`Privilege Document Logs have been produced by either party; and there appears to be a number of
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`discovery issues that remain unresolved between the parties? Discovery is therefore in its infancy.
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`In view of the above, and based on information now in the hands of Applicant, Applicant
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`still does not know Opposer’s actual date of first use of its mark ECOFIRST &
`' Applicant
`Design, but has requested documents of Opposer from which this information may be obtained.
`2 Applicant wrote to Opposer on May 11, 2004 regarding deficiencies in Opposer’s
`responses to Applicant’s initial discovery requests, and requested a reply by May 18, 2004.
`Opposer’s counsel, citing no reason, stated that it was unable to reply by the above date, and
`provided Applicant with no date by which it will reply. (Schroeder Aff., 1] 4)
`-3-
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`’respectfi.1lly requests leave of the Board to amend its initial pleadings to add its counterclaim for
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`cancellation of Opposer's pleaded registration.3
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`LEGAL STANDARDS
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`Title 37 of the United States Code of Federal Regulations, §2.106(b)(2)(i) provides,
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`in
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`relevant part, that when grounds for a counterclaim attacking the validity of a pleaded registration
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`are learned subsequent to the filing of Applicant's Answer,
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`the counterclaim shall be pleaded
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`promptly afier the grounds therefor are learned. Pursuant to 37 CFR §2. 107, such an amendment to
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`the pleadings may be made in the same manner and to the same extent as in a civil action in a
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`United States district court. Leave to grant an amendment to the pleadings shall be "freely given
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`when justice so requires." Fed. R. Civ. P.
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`l5(a) (emphasis added). Moreover, Fed. R. Civ. P.
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`13(f), made applicable to Board proceedings under 37 CFR §2.116, provides that such a
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`counterclaim may be added by amendment even if the counterclaim was originally omitted “through
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`oversight, inadvertence, or excusable neglect, or when justice requires...” In View thereof, leave to
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`add omitted counterclaims is generally freely granted, especially when the omitted counterclaim is a
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`compulsory counterclaim. See 6 WRIGHT, MILLER & KANE, FEDERAL PRACTICE AND PROCEDURE: Civil
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`2d §1430, at PP.223-25 (1990). See also, e.g., See’s Candy Shops, Inc. V. Campbell Soup Co., 12
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`USPQ2d 1395 (TTAB 1989); and Mitek Corp. v. Woods Industries, Inc., 41 USPQ2d 1307 (TTAB
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`1996)
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`ARGUMENTS m SUPPORT OF APPLICANT'S MOTION TO AMEND PLEADINGS
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`I.
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`Applicant's Counterclaim is Timely Under 37 CFR §2.106(b)(2)(i).
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`3 Opposer alleges a date of first use “at least as early as October 24, 2001.” Although it is
`recognized that Opposer’s actual date of first use still remains to be determined, it now appears that
`this information may take longer than expected to develop through discovery. Therefore,
`it is
`believed that the timing of Applicant’s Motion to Amend Pleadings is prudent.
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`Under 15 U.S.C. §1052(d), a priority of use defense exists against a party asserting
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`likelihood of COI1fi1SiOI1 with a registered mark, if it can be established that the accused mark was
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`"previously used in the United States" and not abandoned. Under 37 CFR §2.106(b)(2)(i),
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`if
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`grounds for such a counterclaim are known at the time of filing Applicant’s answer,
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`it is to be
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`pleaded as a part of its answer.
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`If grounds for such a counterclaim are learned latter, it may be
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`added by amendment, if done so promptly upon learning of such grounds. Ll, Under Fed. R. Civ. P.
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`15(a), leave to grant such an amendment to the pleadings shall be "freely given when justice so
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`requires."
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`In the present case, although it was initially believed by Applicant that its use of the mark
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`ECOPIPE preceded Opposer's alleged first use of its registered mark, ECOFIRST and Design, it
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`was discovered just prior to filing its Answer to Opposer's Notice of Opposition that the date upon
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`which it was relying was in error. (Petersen Alf. 1] 4).
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`It was determined that the date of first use
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`asserted by Applicant
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`in its application to register ECOPIPE was actually the first date of
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`production of the product upon which Applicant intended to use the mark ECOPIPE, rather than the
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`date of actual first use of such mark as a trademark in connection therewith. (Petersen Afi‘., 1] 3).
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`The erroneous date asserted by Applicant in its application to register ECOPIPE was not made with
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`intent to deceive or defraud the Untied States Patent and Trademark Office in any way. (Petersen
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`Afi‘., 1] 3).
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`Although Applicant searched the office records of its principal
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`location in Prinsburg,
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`Minnesota,
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`it was unable to establish use of its mark ECOPIPE that predated Opposer’s mark
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`ECOFIRST & Design prior to filing its Answer to Opposer's Notice of Opposition. However,
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`Applicant believed such evidence likely existed at one or more of its off-site storage facilities, but it
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`had not yet had the opportunity to search the records of such facilities. (Petersen Aff. 1] 4). Thus, at
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`the time it filed its Answer, Applicant did not have grounds to assert a counterclaim under 37 CFR
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`§2.106(b)(2)(i).
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`

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`
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`’ II’ ' Applicant has been Prompt and Diligent in Assessing and Asserting its Counterclaim
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`If grounds for a counterclaim are learned alter the filing of Applicant’s Answer,
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`the
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`counterclaim is to be pleaded “promptly” upon learning same. 37 CFR §2.106(b)(2)(i). Applicant
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`in this case discovered evidence of use of its trademark ECOPIPE predating Opposer’s alleged first
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`use date of ECOFIRST & Design only afier filing it Answer to Opposer’s Notice of Opposition,
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`during a search of its off-site storage facilities. (Petersen Aff.
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`111] 4-6). On March 29, 2004,
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`Applicant
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`served Interrogatories and Production Requests on Opposer
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`seeking,
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`inter alia,
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`documents that would allow it to verify the exact date of Opposer’s first use of its mark ECOFIRST
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`& Design. Opposer’s response to Applicant’s initial discovery requests were received May 6, 2004.
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`On May 11, 2004 the undersigned wrote to Opposer’s counsel regarding a number of deficiencies
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`noted in Opposer’s responses, and requested a substantive reply by May 18, 2004. On May 12,
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`2004, Opposer’s counsel
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`responded by advising the undersigned that it could not respond by the
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`above “arbitrary deadline,” and gave no date by which they would respond. (Schroeder Aff. 1] 4).
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`Although the Applicant has not yet obtained documents enabling it to verify the actual date
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`of first use of the mark ECOFIRST & Design by Opposer, it believes it has been both diligent and
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`prompt in its efforts to determine such information upon learning that its date of first use of its mark
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`ECOPIPE, anywhere and in interstate commerce, predates the earliest date alleged by Opposer in its
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`pleaded registration.4 While Applicant is continuing to seek resolution of a number of outstanding
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`discovery issues, it has not yet received a substantive response from the Opposer; nor has any date
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`been set when a response will be forthcoming. To date, neither party has exchanged documents;
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`nor has either party established a date upon which an inspection of same will be made. Therefore, it
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`is evident that Discovery is at its relative infancy in the instant proceeding.
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`In view of the fact that it will likely take additional time to confirm or otherwise ascertain
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`Opposer's "actual" date of first use of its mark ECOFJRST and Design, under the circumstances and
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`4 Opposer alleges a date of first use “at least as early as October 24, 2001,” leaving open
`the question of its actual date of first use.
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`-5-
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`

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`‘inithe interest of providing prompt notice of its counterclaim, Applicant believes that it is both
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`prudent to rely at this juncture upon Opposer's “alleged” date of first use a basis for bringing
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`Applicant's Counterclaim. As noted by the Board in Marshall Field & Co. V. Mrs. Fields Cookies,
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`11 USPQ2d 1355, 1359 (TTAB 1989), where there is little prejudice to the non—moving party, there
`3
`is no “undue delay.’ As Discovery is in its early stages, under the foregoing circumstances, it is
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`believed that Applicant has been prompt in asserting its counterclaim, as required under 37 CFR
`
`§2.106(b)(2)(i), and justice requires that leave be freely granted to allow Applicant’s Motion to
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`Amend Pleadings.
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`III.
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`Opposer is not Prejudiced by Applicant’s Amended Pleadings
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`As noted above, in the present case, Discovery is in its relative infancy. Neither party has
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`exchanged documents or established a time for inspecting same. No depositions have been
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`scheduled or taken; privilege documents logs have not been exchanged; nor has a Stipulated
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`Protective Order governing the production of confidential materials been drafted or considered by
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`either party. Given the relatively early stages of Discovery, and the promptness with which
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`Applicant now asserts its counterclaim, it is respectfully submitted that there is little or no prejudice
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`against the Opposer in allowing Applicant's amendment of its pleadings.
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`A favorable ruling on Applicant’s Motion is also consistent with the Board’s longstanding
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`recognition and following of the liberal policy established by the Federal Rules of Civil Procedure
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`concerning amendments to pleadings. See See’s Candy Shops, Inc., 12 USPQ2d at 1397; Mitek
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`Qgg, 41 USPQ2d at 1307. This is particularly true in the case of a compulsory counterclaim,
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`wherein the effect of dismissing or denying Applicant's request to amend would be to foreclose the
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`Applicant from asserting its claim against Opposer's registration not only in this proceeding, but
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`likely in any future proceeding as well. See 6 WRIGHT, MILLER & KANE, FEDERAL PRACTICE AND
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`PROCEDURE: Civil 2d §1430, at PP.223-24 (1990). Therefore, a balancing of hardships in this case
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`clearly warrants the allowance of Applicant's amendment to assert its counterclaim, and therefore
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`the Board’s approval is most respectfiilly requested.
`-7-
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`

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`In connection with the foregoing, Applicant submits herewith Applicant's Amended Answer
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`including its counterclaim requesting cancellation of Opposer's registration No. 2,642,585, and the
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`accompanying fee of $300.00 established under 37 CFR §2.6(16) covering such a petition to cancel
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`said registration.
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`In the event the amount submitted herewith is insufficient in any respect, the
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`Commissioner is hereby authorized to charge any additional amount due to our Deposit Account
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`No. 19-0715 and notify us of the same.
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`.
`Dated: 5'52 ( f 24197
`
`'
`.
`\“"" /Lt/5
`
`I
`
`‘ ,/A
`
`Brian F. Schroeder
`
`Schroeder & Siegfried, P.A.
`222 South Ninth Street
`Suite 2870
`
`Phone: 612/339-0120
`
`ATTORNEY FOR APPLICANT
`
`

`
`
`
`U.S.Patent&TMOfc/TMMailRep?nr#78,
`
`<r
`§
`<'r
`3'5
`O
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`) )
`
`HANCOR, INC.
`
`Opposer,
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`v.
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`PRINSCO, INC.
`
`)
`)
`)
`)
`)
`)
`Applicant
`)
`
`
`Opposition No. 91 159298
`
`Application Serial No. 76/510,143
`
`Published in the Oflicial Gazette
`on December 2, 2003
`
`AFFIDAVIT OF BRIAN F. SCHROEDER
`
`ss
`
`) ) )
`
`)
`)
`
`STATE OF MINNESOTA
`
`COUNTY OF I-IENNEPIN
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`1, Brian F. Schroeder, being first duly sworn under oath, hereby depose and state as follows:
`
`1.
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`I am an attorney with the law firm of Schroeder & Siegfried, P.A., 222 South Ninth Street, Suite 2870,
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`Minneapolis, Minnesota 55402.
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`I am one of the attorneys representing Applicant, Prinsco, Inc.,
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`(hereinafter "Prinsco") in the above Opposition proceeding filed by Opposer, Hancor, Inc., (hereinafter
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`2.
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`3.
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`"Hancor").
`
`I submit this affidavit in support of Prinsco's Motion to Amend Pleadings.
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`Prinsco's Answer to Hancor's Notice of Opposition was prepared and filed on March 12, 2004. While in
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`the process of preparing Prinsco's Answer, for reasons more fully set forth in the Affidavit of Darrell C.
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`Petersen, filed herewith, it was determined that the earliest date of first use relied upon by Prinsco in its
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`application to register ECOPIPE, application Serial No. 76/510,143, was in error. Althoug