Goodman
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`Mailed: June 20, 2008
`
`Opposition No. 91181702
`
`Ther-Rx Corporation
`
`
`
`
`
`v.
`
`TherOx, Inc.
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`
`
`
`Before Hohein, Rogers and Cataldo, Administrative Trademark
`Judges.
`
`By the Board:
`
`This case now comes up on the following motions:
`
`1) Applicant’s motion to dismiss for failure to state a
`claim or alternative motion to strike, filed February
`15, 2008; and
`
`
`2) Opposer’s motion to amend the notice of opposition,
`filed March 10, 2008.
`
`
`
`
`
`
` We turn first to applicant’s motion to dismiss for
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`failure to state a claim.
`
`In order to avoid dismissal for failure to state a
`
`claim under Fed.R.Civ.P. 12(b)(6) opposer need only allege
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`such facts as would, if proved, establish that opposer is
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`entitled to the relief sought. Therefore, opposer must
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`allege that (1) it has standing to bring the proceeding, and
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`(2) a valid ground exists for denying the registration
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`sought. See TBMP § 503.02 (2d ed. rev. 2004).
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
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`
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`Mailed: June 20, 2008
`
`Opposition No. 91181702
`
`Ther-Rx Corporation
`
`
`
`
`
`v.
`
`TherOx, Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Before Hohein, Rogers and Cataldo, Administrative Trademark
`Judges.
`
`By the Board:
`
`This case now comes up on the following motions:
`
`1) Applicant’s motion to dismiss for failure to state a
`claim or alternative motion to strike, filed February
`15, 2008; and
`
`
`2) Opposer’s motion to amend the notice of opposition,
`filed March 10, 2008.
`
`
`
`
`
`
` We turn first to applicant’s motion to dismiss for
`
`failure to state a claim.
`
`In order to avoid dismissal for failure to state a
`
`claim under Fed.R.Civ.P. 12(b)(6) opposer need only allege
`
`such facts as would, if proved, establish that opposer is
`
`entitled to the relief sought. Therefore, opposer must
`
`allege that (1) it has standing to bring the proceeding, and
`
`(2) a valid ground exists for denying the registration
`
`sought. See TBMP § 503.02 (2d ed. rev. 2004).
`
`
`
`Applicant argues that this proceeding should be
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`dismissed for failure to plead standing because opposer did
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`not “claim any common law-rights as a Basis for Opposition”
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`and opposer is not the owner of the pleaded registration,
`
`Reg. No. 2948813.
`
`
`
`Opposer, while admitting lack of ownership of pleaded
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`Reg. No. 2948813, argues that its allegation in the first
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`sentence of paragraph 3 of the notice of opposition is an
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`assertion of common law rights and “an independent basis”
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`for standing “sufficient to defeat the Motion to Dismiss.”
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`
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`We find that the allegation in paragraph 3 of the
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`notice of opposition that “Opposer Ther-Rx is the owner of
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`the mark THER-RX for pharmaceutical products” is a
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`sufficient allegation of common law rights in the mark THER-
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`RX, which if proved, would establish opposer’s standing.
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`
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`In view thereof, applicant’s motion to dismiss is
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`denied.
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`
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`We turn next to applicant’s alternative motion to
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`strike and opposer’s motion to amend the notice of
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`opposition to add a joint opposer.
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`
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`Applicant seeks to strike the second sentence of
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`paragraph 3 of the notice of opposition that “Opposer is
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`further the owner of U.S. Registration No. 2,948,813 for THE
`
`THER-RX CONTINUUM OF WOMEN’S CARE & Design for ‘supplements;
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`prenatal nutritional supplements, vitamins and
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`2
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`
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`pharmaceutical and therapeutic substances, oral
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`contraceptives, anti-infective, electrolytes, fertility
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`enhancement preparations and agents, anti-inflammatories,
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`nausea treatment preparations and agents, hormones,
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`analgesics, migraine treatment preparations, muscle
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`relaxants, nausea treatment preparations and agents for the
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`treatment of a wide variety of illnesses, diseases and
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`medical conditions, namely, neonatal conditions,
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`osteoporotic conditions, aging, migraines, hypokalemia,
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`menopause, fungal and microbial infections, virological
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`infections, infertility, conception, osteoporosis, muscle
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`pain, hormone replacement therapy, and morning sickness’
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`(collectively ‘Opposer’s THER-RX Mark’)” since opposer is
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`not the owner of the registration.
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`
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`In response, opposer advises that its pleading of
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`ownership of Reg. No. 2948813, was an inadvertent mistake
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`made in good faith and that the “undisputed owner” thereof
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`is opposer’s “sister company,” DrugTech Corporation.
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`Opposer seeks to maintain the second sentence of paragraph 3
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`of the notice of opposition and “to cure Opposer’s
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`inadvertent misidentification of itself as owner of
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`Registration no. 2,948,813” by amending the notice of
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`opposition to add DrugTech Corporation as a joint opposer.
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`
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`With regard to opposer’s motion to amend to join
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`DrugTech Corporation as a party opposer, we note that
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`3
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`
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`joinder is not allowable under these circumstances. Once a
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`timely notice of opposition has been filed, and the time to
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`oppose has expired, the right to pursue the filed case is a
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`right individual to the timely filer. After commencement
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`of the case, this right to oppose in certain circumstances
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`may be transferred, but it may not be shared. SDT Inc. v.
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`Patterson Dental Co., 30 USPQ2d 1707 (TTAB 1994).1 Joinder
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`in this case would essentially allow DrugTech Corporation to
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`file an untimely notice of opposition, which is not
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`permitted. Accordingly, opposer’s motion to amend the
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`notice of opposition to join DrugTech Corporation as party
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`opposer is denied.
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`
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`With regard to applicant’s motion to strike, we agree
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`that the second sentence in paragraph 3 of the notice of
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`opposition should be stricken inasmuch as opposer is not the
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`owner of Reg. No. 2948813. In view thereof, applicant’s
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`motion to strike is granted and the second sentence in
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`paragraph 3 of the notice of opposition is hereby stricken.
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`
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`In summary, applicant’s motion to dismiss and opposer’s
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`motion to amend are denied and applicant’s motion to strike
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`is granted.
`
`
`1 Prior to commencement of an opposition, a party in privity with
`a potential opposer who has obtained an extension of time to
`oppose may join with the potential opposer and seek further
`extensions or join with the opposer in filing the opposition.
`Such circumstances are not presented by this proceeding.
`Further, sister corporations are not generally held to be in a
`
`4
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`
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`Proceedings are resumed.
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`We note that applicant has already filed its answer.
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`The discovery conference, disclosures, discovery and trial
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`dates are reset as follows:
`
`Deadline for Discovery Conference
`Discovery Opens
`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures
`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures
`Plaintiff's 15-day Rebuttal Period Ends
`
`
`
`7/18/08
`7/18/08
`8/17/08
`12/15/08
`1/14/09
`2/28/09
`4/14/09
`4/29/09
`6/13/09
`6/28/09
`7/28/09
`
`In each instance, a copy of the transcript of testimony
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`together with copies of documentary exhibits, must be served
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`on the adverse party within thirty days after completion of
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`the taking of testimony. Trademark Rule 2.l25.
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`Briefs shall be filed in accordance with Trademark
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`Rules 2.128(a) and (b). An oral hearing will be set only
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`upon request filed as provided by Trademark Rule 2.l29.
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`
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`* * * *
`
`The USPTO published a notice of final rulemaking in the
`Federal Register on August 1, 2007, at 72 F.R. 42242. By
`this notice, various rules governing Trademark Trial and
`Appeal Board inter partes proceedings are amended. Certain
`amendments have an effective date of August 31, 2007, while
`most have an effective date of November 1, 2007. For
`further information, the parties are referred to a reprint
`of the final rule and a chart summarizing the affected
`rules, their changes, and effective dates, both viewable on
`the USPTO website via these web addresses:
`
`privity relationship, as are parent and subsidiary or assignor
`and assignee.
`
`
`5
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`
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`http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf
`http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_FinalRuleChart.pdf
`
`By one rule change effective August 31, 2007, the Board's
`standard protective order is made applicable to all TTAB
`inter partes cases, whether already pending or commenced on
`or after that date. However, as explained in the final rule
`and chart, this change will not affect any case in which any
`protective order has already been approved or imposed by the
`Board. Further, as explained in the final rule, parties are
`free to agree to a substitute protective order or to
`supplement or amend the standard order even after August 31,
`2007, subject to Board approval. The standard protective
`order can be viewed using the following web address:
`http://www.uspto.gov/web/offices/dcom/ttab/tbmp/stndagmnt.htm
`
`
`6
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