IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`1 I
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`HANCOR, INC.
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`PRINSCO, INC.
`
`Opposer,
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`v.
`
`Applicant
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`Opposition No. 91159347
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`§
`5%
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`E 53: E
`E ‘N E
`Application Serial No. 76/512,703 g
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`E ° 5
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`3“;
`5
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`Published in the Official Gazette
`on December 23, 2003
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`APPLICANT’S AMENDED ANSWER TO NOTICE OF OPPOSITION
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`Prinsco, Inc. ("Applicant"), a Minnesota corporation, located and doing business at 108
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`Highway 7 West, Prinsburg, Minnesota 56281, hereby answers the Ofiicial Notice of Opposition,
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`No. 91159347 filed by Hancor, Inc. ("Opposer") against Applicant's allowed published application
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`to register its trademark, ECOFLO WT.
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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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`sufiicient knowledge or information to form a belief as to the truth of the facts related to the
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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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`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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`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, 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 suflicient 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 sufiicient 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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`

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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 ECOFLO WT
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`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 shifted 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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`14.
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`Answering paragraph 14 of said Notice of Opposition, Applicant denies that its
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`ECOFLO WT 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 ECOFLO
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`WT mark is likely to cause confiasion, to cause mistake, or to deceive.
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`AFFIRMATIVE DEFENSES
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`1.
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`Applicant's first usage of ECOFLO WT in commerce antedates Opposer's date of
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`alleged first usage of ECOFIRST and Design as claimed in Registration No. 2,642,585, or any
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`alleged use of the word ECOFIRST apart from any design element, and such use by Applicant has
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`been valid in the ordinary course of trade without abandonment. Accordingly, Opposer's opposition
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`fails to state a claim upon which relief can be granted.
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`2.
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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 ECOFLO WT clearly is not confiisingly
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`similar with Opposer's combination mark.
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`3.
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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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`4.
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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 ECOFLO
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`WT because Applicant has developed prior and/or intervening rights over Opposer to use the mark
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`ECOFLO WT as a trademark on plastic drainage pipe made of recycled polyethylene.
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`

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`
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`5.
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`Applicant's ECOFLO WT mark is not likely to cause confusion, or to cause mistake,
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`or to deceive with respect to Opposer's alleged mark, because it differs materially phonetically and
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`in appearance, spelling, content, and meaning.
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`APPLICANT’S COUNTERCLAIIVI 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 1-14 above, and Applicant’s Aflirmative Defenses 1-5 thereto, as
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`though fillly 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 (hereinafier
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`“P1eaded
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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 ECOFLO WT as a trademark in connection with the sale of water drainage tubing
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`constructed of recycled high density polyethylene.
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`Such use of the mark ECOFLO WT by the
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`Applicant has been valid, continuous and without interruption or abandonment since a date prior to
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`October 24, 2001, and on information and belief, since a date prior to Opposer’s first use of its
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`

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`
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`registered mark ECOFIRST & Design in connection with those goods designated in its Pleaded
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`Registration.
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`4.
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`As a result of Applicant’s continuous and uninterrupted use of the mark ECOFLO WT in
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`connection with water drainage tubing constructed of recycled high density polyethylene, the mark
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`ECOFLO WT has become associated in the minds of the consuming public with such goods
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`emanating from the Applicant, and is symbolic of extensive goodwill and consumer recognition
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`developed by 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 COI1fi1SlOI1, 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 COIlfLlSl0Il
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`between Opposer’s and Applicant’s respective trademarks, ECOFIRST & Design and ECOFLO
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`WT, Applicant hereby recites said allegation in support of Applicant’s Counterclaim in the
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`Alternative 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 confiasion, 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 ECOFLO WT.
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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 full 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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`WI-IEREFORE, Applicant respectfully 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/ 2‘/
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`(/1!
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`Brian F. Schroeder
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`
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`Schroeder & Siegfried, P.A.
`222 South Ninth Street
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`Suite 2870
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`Phone: 612/339-0120
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`ATTORNEY FOR APPLICANT
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`

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`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91 159347
`
`E
`E
`Application Serial No. 76/512,703 §
`E
`§
`E
`E
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`Published in the Official Gazette
`on December 23, 2003
`
`
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`u.s.Patent&TMOfcITMMailRent0:.#79_
`
`05-24-2004
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`HANCOK INC.
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`PRINSCO, INC.
`
`Opposer,
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`V.
`
`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 COI1filSlOI1 and priority of use. Pursuant to 37 CFR
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`§2.l06(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 respectfiilly requested.
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`BACKGROUND
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`On April 28, 2003, Applicant filed in the United States Patent and Trademark Oflice
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`Application Serial No. 76/512,703 to register the mark ECOFLO WT under International Class 17
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`for corrugated polyethylene tubing used for underground drainage purposes.
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`In its application,
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`Applicant alleged June 1, 2001 as its date of first use “anywhere,” and February 7, 2003 as its date
`3
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`of first use “in commerce.’
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`This application, which is the subject of the instant opposition
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`proceeding, was published for opposition on December 23, 2003. Opposer, Hancor, Inc., thereafter
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`
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`filed its Notice of Opposition on January 8, 2004 alleging,
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`inter alia,
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`that Applicant's mark
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`ECOFLO WT was likely to cause confusion with Opposer's registered mark ECOFIRST and
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`Design, U.S. Registration No. 2,642,585. Opposer alleges a date of flrst use of its mark ECOFIRST
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`and Design since “at least 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 flrst use “anywhere,” as recited in Applicant's initial
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`application, was in error.
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`(Petersen Aff., 1] 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 ECOFLO WT, 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 flrst date the mark ECOFLO WT was used as a trademark. (Petersen Aff., 11 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 ECOFLO WT in connection with the goods would likely have followed soon,
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`and 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 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 ECOFLO WT which predated Opposer’s alleged first use date of ECOFIRST &
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`Design. Applicant had not yet, however, had the opportunity to explore and investigate the
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`shipping documents maintained at a number of its off—site storage facilities (Petersen Alf, 1] 4).
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`Therefore, at
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`the time of filing Applicant's Answer to Opposer's Notice of Opposition, while
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`Applicant believed evidence existed, facts supporting a counterclaim for cancellation of Opposer's
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`pleaded registration based on priority of use were not known or available to the Applicant.
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`Consequently,
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`in order to preserve this potential defense and investigate the matter fiirther,
`-2-
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`

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` i
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`Applicant, in its Answer, alleged priority of use of its mark ECOFLO WT as an affirmative defense.
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`(Answer to Notice of Opposition, Affirmative Defense No. 1; 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 ECOFLO WT was intended for use. Upon further 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 the mark ECOFLO WT. (Petersen Aff.
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`1] 6). 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 sufiicient documentation to establish a continuing bona fide use
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`of its mark ECOFLO WT in interstate commerce since a date prior to Opposer's alleged date of first
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`use, October 24, 2001, claimed in U.S. Registration No. 2,652,585. (Petersen Aff. 1] 6)1
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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 February 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.2 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 &
`1 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 Ali‘, 1] 4)
`-3-
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`

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`respectfially 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 after 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. 15(a) (emphasis added). Moreover, Fed. R. Civ. P.
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`l3(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
`
`1996)
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`ARGUMENTS IN 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.
`-4-
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`

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`
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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 confiision 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), if
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`grounds for such a counterclaim are known at the time of filing Applicant’s answer, 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. I_d. Under Fed. R. Civ. P.
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`l5(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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`ECOFLO WT 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 Afi‘. 1] 4).
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`It was determined that the date of first use
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`asserted by Applicant in its application to register ECOFLO WT was actually the first date of
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`production of the product upon which Applicant intended to use the mark ECOFLO WT, rather than
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`the date of actual first use of such mark as a trademark in connection therewith. (Petersen Aff., 1| 3).
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`The erroneous date asserted by Applicant in its application to register ECOFLO WT was not made
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`with intent to deceive or defraud the Untied States Patent and Trademark Office in any way.
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`(Petersen Aff., 1] 3).
`
`Although Applicant searched the office records of its principal
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`location in Prinsburg,
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`Minnesota, it was unable to establish use of its mark ECOFLO WT 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. l06(b)(2)(i).
`
`

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`
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`H ' Applicant has been Prompt and Diligent in Assessing and Asserting its Counterclaim
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`If grounds for a counterclaim are learned afier 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 ECOFLO WT predating Opposer’s alleged
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`first use date of ECOFIRST & Design only afier filing it Answer to Opposer’s Notice of
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`Opposition, during a search of its off-site storage facilities. (Petersen Afi‘. 111] 4-6). On March 29,
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`2004, Applicant served Interrogatories and Production Requests on Opposer seeking, 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).
`
`Although the Applicant has not yet obtained documents enabling it to verify the actual date
`
`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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`ECOFLO WT, anywhere and in interstate commerce, predates the earliest date alleged by Opposer
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`in its pleaded registration.4 While Applicant is continuing to seek resolution of a number of
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`outstanding discovery issues, it has not yet received a substantive response from the Opposer; nor
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`has any date been set when a response will be forthcoming. To date, neither party has exchanged
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`documents; nor has either party established a date upon which an inspection of same will be made.
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`Therefore, it 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 ECOFIRST 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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` 0
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`‘s
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`in the 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
`7
`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
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`§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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`I[[.
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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 App1icant’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; M
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`L9,, 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 fiiture proceeding as well. See 6 WRIGHT, MJLLER & 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 respectfully requested.
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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: 52 Z'//_/_
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`Brian F. 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
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`Opposition No. 91159347
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`Application Serial No. 76/512,703
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`Published in the Oflicial Gazette
`on December 23, 2003
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`Opposer,
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`v.
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`Applicant
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`AFFIDAVIT OF BRIAN F. SCHROEDER
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`7
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`§ .
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`HANCOR, INC.
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`PRINSCO, INC.
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`ss
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`) ) )
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`STATE OF MINNESOTA
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`COUNTY OF HENNEPIN
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`2.
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`3.
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`1, Brian F. Schroeder, being first duly sworn under oath, hereby depose and state as follows:
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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. I am one of the attorneys representing Applicant, Prinsco, Inc., (hereinafier
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`"Prinsco") in the above Opposition proceeding filed by Opposer, Hancor, Inc., (hereinafter "Hancor").
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`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 the
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`process of preparing Prinsco's Answer, for reasons more fully set forth in the Affidavit ofDarrell C. Petersen,
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`filed herewith, it was determined that the earliest date of first use relied upon by Prinsco in its application to
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`register ECOFLO WT, application Serial No. 76/512,703, was in error. Although Prinsco believed it had
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`evidence of use of its mark ECOFLO WT that predated Hancor's alleged date of first use ofECOFIRST and
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`Design, at the time of filing Prinsco's Answer to Hancor's Notice of Opposition, Prinsco did not have such
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`evidence of prior use in hand. Since Prinsco believed such evidence may exist at one or more of its multiple
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`ofi”-site storage facilities, but had not yet had the opportunity to investigate and search the records thereof,
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`priority of use was asserted as an affirmative defense in Prinsco's Answer in order to preserve same and
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`provide the opportunity for further investigation.
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`Upon discovering documents in Prinsco's records evidencing use of the mark ECOFLO WT in interstate
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`commerce prior to that alleged by Hancor for its mark ECOFIRST and Design, Interrogatories and
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`Production Requests were prepared and served upon Hancor on March 29, 2004. Pn'nsco's discovery
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`requests sought documents that would, inter alia, allow Prinsco to verify the exact date upon which Opposer
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`Hancor first used its mark ECOFIRST and Design. Hancor's response to Prinsco's initial discovery requests
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`were received on May 6, 2004. Noting numerous deficiencies in Hancor's responses, I wrote to Hancor's
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`counsel on May 1 1, 2004 in an attempt to resolve the outstanding discovery issues. I requested a substantive
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`reply to my letter by May 18, 2004. However, on May 12, 2004, Hancor's counsel advised me by letter that
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`they would not be able to respond by the above "arbitrary deadline," and gave no date by which they would
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`respond. A copy of the letter received from Hancor's counsel is attached hereto as Exhibit A.
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`Hancor has left open the question ofits actual date of first use ofits mark ECOFIRST and Design by alleging
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`use since "at least as early as October 24, 2001." (see, Notice of Opposition, 1] 1). While Prinsco expects to
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`obtain this information through discovery, it appears that additional time may be necessary to first resolve a
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`number of outstanding discovery issues with Hancor. For this reason, given the circumstances and early
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`stages of discovery, it is believed that the timing of Applicant's Motion is timely and within the spirit of the
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`rules.
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`FURTHER AFFIANT SAYETH NOT.
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`(742,
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`BRIAN F