Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA252756
`ESTTA Tracking number:
`12/03/2008
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91180212
`Defendant
`IDEA AG
`Eric J. Sidebotham
`Eric J. Sidbotham, APC
`TechMart Center, 5201 Grant America Parkway, Suite 320
`Santa Clara, CA 95054
`UNITED STATES
`eric.sidebotham@ejs-law.com
`Motion to Dismiss 2.132
`Daniel M. Shafer
`eric.sidebotham@ejs-law.com, dan.shafer@ejs-law.com,
`ryan.smith@ejs-law.com
`/DMS/
`12/03/2008
`Motion to Dismiss 12-03-08.pdf ( 5 pages )(252058 bytes )
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`Proceeding
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No.: 91/180,212
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`App’n Serial No. 77/070,074
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`Mark: DIRACTIN
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`SCHERING CORPORATION,
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`Opposer,
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`v.
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`IDEA AG,
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`Applicant.
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`The Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`MOTION FOR JUDGMENT AND DISMISSAL FOR FAILURE TO PROSECUTE
`(37 C.F.R. § 2.132(a))
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`Applicant IDEA AG (“Applicant”) hereby moves to dismiss this opposition
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`proceeding on grounds that Opposer Schering Corporation (“Opposer”) failed to take any
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`testimony, offer any evidence, or otherwise prosecute this case in any manner during its
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`initial 30-day testimony period ending October 31, 2008.
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`Under 37 C.F.R. § 2.132(a) and TBMP § 534.02, Applicant may appropriately file
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`a motion for judgment directed to the sufficiency of Opposer’s trial evidence when
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`Opposer’s testimony period has passed, and Opposer has failed to take testimony or offer
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`any other evidence. In this case, Opposer proffered no evidence whatsoever during its
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`Opposition No. 91180212
`Application Serial. No. 77/070,074
`Atty. Docket No. 108-007TUS
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`Page 1 of 5
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`testimony period, and Applicant is therefore entitled to judgment in its favor and
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`dismissal of the instant opposition proceedings.
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`Opposer and the Board will note that Opposer’s motion to compel discovery
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`responses and motion to test the sufficiency of discovery responses (collectively, “Motion
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`to Compel”), filed September 29, 2008, are currently pending, and that this would
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`ordinarily result in suspension of the opposition proceeding while the motion is pending.
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`Trademark Rule 2.120(e)(2), (h)(2). However, to date no suspension order has been
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`issued.
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`Moreover, on October 21, 2008, Applicant filed a countermotion to strike
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`Opposer’s Motion to Compel (incorporated herein by reference), on grounds of excessive
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`length. In the event the Board does strike Opposer’s Motion to Compel, effectively
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`nullifying it, there would be no basis for a suspension under Trademark Rules
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`2.120(e)(2) or 2.120(h)(2). In that event, Opposer’s opening testimony period will have
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`come and gone with no suspension, and the Board will be justified in granting the instant
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`motion to dismiss. In this respect, the instant motion is distinguished from that made in
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`Jain v. Ramparts, 49 U.S.P.Q.2d 1429, 1431 (TTAB 1998), where the pendency of
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`plaintiff's procedurally proper motion to compel and to extend trial dates was deemed
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`sufficient cause for failure to try the case. Rather, the instant motion is analogous to the
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`situation in Saint-Gobain Corp. v. Minnesota Mining and Mfg. Co., 66 U.S.P.Q.2d 1220
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`(TTAB 2003), where briefs of excessive length were found to be “procedurally
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`improper,”1 and therefore received no consideration whatsoever. Similarly here,
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`Applicant expects that Opposer’s excessively-long Motion to Compel may be entirely
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`disregarded and effectively voided by the Board, such that no suspension will have been
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`1 This language is drawn from Opposer’s own motion to strike Applicant’s response to Opposer’s
`Motion to Compel (filed October 17, 2008), in which Opposer discusses and interprets Saint-
`Gobain at length.
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`Opposition No. 91180212
`Application Serial. No. 77/070,074
`Atty. Docket No. 108-007TUS
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`Page 2 of 5
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`warranted in the first instance. Indeed, this defect may explain why no suspension order
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`has been issued.
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`Alternatively, even if this opposition is currently deemed suspended (despite the
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`absence of a suspension order) the instant motion to dismiss is expressly authorized by
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`Trademark Rules 2.120(e)(2) or 2.120(h)(2) on grounds that it is “germane” to the
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`pending Motion to Compel, and may therefore be filed during any such suspension
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`period. Indeed, the instant motion to dismiss relates directly to the pending Motion to
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`Compel in that the deficiencies in the Motion to Compel, including its excessive length
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`(as discussed in Applicant’s countermotion of October 21, 2008) render it improperly
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`submitted and therefore incapable of resulting in a suspension. The instant motion to
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`dismiss is therefore substantively intertwined with the already pending motions, and
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`therefore germane to them.
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`Applicant’s instant motion under 37 C.F.R. § 2.132(a) is intended to save
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`Applicant the expense and delay of continuing with a trial in which Opposer has failed to
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`offer any evidence during its testimony period. See Litton Business Systems, Inc. v. J. G.
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`Furniture Co. Inc., 190 U.S.P.Q. 428 (TTAB 1976). For the reasons stated herein, it is
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`now appropriate to curtail these meritless2 proceedings on grounds that Opposer has
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`failed to prosecute its opposition despite the absence of any suspension order or any other
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`2 The meritless nature of these opposition proceedings may well explain Opposer’s failure to
`prosecute. For example, there is a total lack of similarity between Applicant’s and Opposer’s
`respective goods. Opposer’s TINACTIN mark is used in connection with over-the-counter
`anti-fungal skin creams used to treat athlete’s foot, jock-itch, ringworm and the like. In
`contrast, Applicant intends to use its DIRACTIN mark in connection with a prescription-
`only topical anti-inflammatory/analgesic gel used primarily to treat osteoarthritis and other
`joint conditions. In addition, there is no actionable similarity between the parties’ respective
`marks, since the “ACTIN” portion of each mark also appears in a large number of
`registered and pending U.S. trademarks that Opposer has never challenged. Significantly,
`none of Opposer’s marks were raised by the examining attorney in connection with the
`prosecution of the underlying application as a basis to support a finding of likelihood of
`confusion. It is thus apparent that this opposition is not bona fide, but is rather an improper
`attempt to obtain confidential/proprietary information about Applicant and/or to impair
`Applicant’s ability to lawfully market product in the United States.
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`Opposition No. 91180212
`Application Serial. No. 77/070,074
`Atty. Docket No. 108-007TUS
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`Page 3 of 5
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`proper basis sun which :1 suspensions of Drppesefis opening testimony period ins}; arise.
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`Applicant therefore respectfully requests that the Board granijiidgnienl in Appiieenfs
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`fin.-‘er and dismiss this opposition.
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`DATED: [Jeeember 3, H108
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`IDEAAG
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`-:.__T-———.e_
`K
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`ERIC J. SEDEIEDTHAM. Esq.
`DANIEL M. SHAFER, Esq.
`ERIC J. SlDEEO'I‘HAM. APE‘
`Te-:h.i'vIerl Center
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`52431 Great America Parkway. Suite 323
`Sarita Clara. CA 95054
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`Teleplieneti-'-H13) 35 l‘i—Fi'Dfll]
`Facsimile: [4-I13} fifiR—i'il‘J~fl1
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`Oppnsili-en Nu. 9| ISUIIE
`Application Serial. No. i"h'fli'll,-W4
`Any. Docket Ne.
`iC|E—FIII."IIT1‘L'S
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`CERTIFICATE HF SEEK’ K? F.
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`I ltercby certi 1'3* that L1 irtlfl cttpy of the foregoing .-‘EIOTIDIHE FOR .IUl}GMEHT
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`AND DISI"Ir‘lISS.-KI. FUR FAILURE TU PRCIISECITTE 37 {.'.F.H.
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`‘ LI31 51 was
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`scrvcti t:-n cnuuscl fur Dppcrscr. this 3"‘ day nfDI:ct:n1bcr. ZEIIJS, by settdittg same via Fiml
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`Class LES. Mail. prepaid. to:
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`David .I, K.c:'r3.. Esq.
`Beth A. Cltaprnatn. Esq.
`Ublon, S]."Ii\'Hlt, ML-Clcllnnd.
`Mater 3.: Ncustadt, [’.E'.
`IF}!-it] Duke Street
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`Alexantirla. Virginia 22314
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