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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91188800
`Serial No. 78/760,687
`Mark: WILD HARE ON ST. ANDREWS
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`St Andrews Links Limited
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`Opposer
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`v.
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`Robert Anthony Amoroso
`.
`Applicant
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`APPLICANT’S RESPONSE, COUNTER MOTION, AND OBJECTION TO
`OPPOSER’S MOTION TO AMEND OPPOSER’S NOTICE OF
`
`OPPOSITION
`
`Applicant, Robert Anthony Amoroso, respectfully moves the Board for an Order denying the
`Opposer’s belated Motion to Amend the Opposer’s Notice ofOpposition, and presents the following
`reasons for the denial of the requested amendment.
`
`1. FACTS
`
`In its Motion, Opposer seek leave of the Board pursuant to Federal R. Civ. P. 15(a)(2), to
`belatedly Amend the Opposer’s Notice of Opposition.
`
`II.
`
`A.
`
`OPPOSER’S PRIVILEGE T0 AMEND IS BROAD, BUT LIMITED
`
`Federal R. Civ. P. 15(a)(2) limits the ability of an opposer to amend a notice of
`opposition.
`
`Federal R. Civ. P. 15(a) provides that “a party may amend its pleading only with the opposing
`party’.s written consent or the court’s leave.” The administrative record before the Board does not
`suggest that the Opposer sought to either discussion with Applicant about the proposed amendment
`or Applicant’s written consent to the filing of the proposed amendment. Consequently, leave from
`the Board is required for the proposed amendment of Opposer’s notice of opposition.
`
`Opposer’s belated Motion to Amend the Opposer’s Notice of Opposition presents two
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`reasons for the proposed amendment, namely (1) to assert “six additional marks/registrations [sic]
`owned by Opposer against Applicant
`as a basis to sustain Opposer’s Opposition ...” and (2) to
`belatedly assert “a count for likelihood of confusion.” Absent from the Opposer’s Motion however,
`is a reasoned factual statement of why “justice so requires” the Opposer’s amendment.
`
`B.
`
`Leave of the Board to amend a notice of opposition under Federal R. Civ. P. 15(a)(2)
`should not prejudice the rights of the applicant.
`
`Applicant respectfully objects to and opposes the Opposer’s proposed amendment because,
`inter alia, the proposed amendment is unnecessary, the proposed amendment newly raises issues that
`the Interlocutory Attorney has repeatedly emphasized were not heretofore at issue in this opposition,
`and there is no assertion in Opposer’s Motion that the proposed amendment is just, reasonable, or
`necessary to the Opposer’s opposition to registration of Applicant’s mark.
`
`Moreover, the Opposer’s Motion fails to address the likelihood that the Opposer’ s proposed
`amendment would prejudice Applicant and Applicant’s right to continue his business with the
`encumbrance of this Opposition.
`
`The guidance tendered by the courts in matters originating from the Office suggest that there
`are no “ [r] igid preventative rules that deny
`[the Board] recourse to ‘common sense,” and that rules
`which suggest that resort by the Board to common sense “are neither necessary under our case law
`nor consistent with it.”‘ Perhaps, the Court’s directive to “common sense” when applied to the
`Opposer’s Motion, suggests that Federal R. Civ. P. 15(a)(2) also requires a finding by the Board that
`“the nonspecific, conclusory contention”2 that “Applicant will not suffer any prejudice by this
`proposed amendment to the Notice”3 when the Board considers that the Opposer’s Motion was filed
`unexpectedly, unarmounced, and simultaneously with the agreed Stipulation to suspend proceedings.“
`
`The
`in a rapid conclusion of this opposition is paramount.
`Applicant’s interest
`characterizations of the proposed amendments given by Opposer in justification for the proposed
`amendment are unaccompanied by a reasoned statement of facts demonstrating why justice, or a
`denial to Applicant of a speedy conclusion of this opposition, “so requires” the proposed
`amendments.
`
`1
`
`2
`
`KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), an appeal reversing a
`finding of patent infringement by the U.S. Court of Appeals for the Federal
`Circuit.
`
`KSR International Co. v. Teleflex Inc., ibid.
`
`Opposer ’s Motion To Amend, page 5, paragraph 12.
`
`Opposer ’s Motion To Amend, page 5, paragraph 13.
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`.2-
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`In point-of-fact, the averments set forth in Opposer’s Motion suggest that amendment of
`Opposer’s amended notice is likely negate Applicant’s right to a speedy conclusion of the above-
`captioned opposition. Consequently, a grant of leave to the Opposer to amend would be prejudicial
`to the rights of Applicant.
`
`C.
`
`Federal R. Civ. P. l5(a)(2) is not give carte blanche authorization for an opposer to
`amend a notice of opposition.
`
`The proposed amendment to (1) assert “six additional marks/registrations [sic] owned by
`Opposer against Applicant
`as a basis to sustain Opposer’s Opposition ...” and to (2) assert “a count
`for likelihood of confusion” are unsupported in the administrative record before the Board of a
`reasoned factual statement of why “justice so requires” the Opposer’s amendment? Utterly absent
`from the Opposer’s Motion is explanation of why there has been a three year delay by Opposer in
`seeking to add a count based upon an averment of a likelihood of confiJsion.° Moreover, there is no
`denial by Opposer’s Motion that sufficient newly pled facts were already within the knowledge of
`the Opposer at the time Opposer’s notice of opposition was filed on the 11"‘ of February 2009.7
`
`III.
`
`l5(a)(2) CONTEMPLATES THAT THE ABILITY OF
`FEDERAL R. CIV. P.
`APPLICANT TO DEFEND WILL BE PROTECTED BY ANY LEAVE GRANTED
`
`T0 OPPOSER BY THE BOARD TO AMEND
`
`A.
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`Federal R. Civ. P. 15 Does Not Contemplate That Leave By The Board For Opposer To
`Amend Will Prejudice Applicant In Defending On The Merits.
`
`In an interpartes proceeding before the Board, a motion belated granted to allow an opposer
`to amend its notice of opposition should avoid prej udicing the rights of the applicant to defend on
`the merits, including the right of an applicant to compel discovery procedure available in the event
`ofa failure to provide discovery on any issue found to be raised by the amended notice ofopposition,
`such as discover requested by the applicant via means of discovery depositions, interrogatories, and
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`5
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`6
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`7
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`Federal R. Civ. P. l5(a)(2).
`
`In accord, TBMP §507.02(a) -- Timing of Motion to Amend Pleading — In
`General, footnote 122 and International Finance Corporation v. Bravo Co., 64
`USPQ2d 1597 (TTAB 2002) 550 U.S. 398 (2007).
`
`Also in accord, TBMP §507.02(a) -- Timing of Motion to Amend Pleading — In
`General, footnote 122 and Trek Bicycle Corp. v. Styletrek Ltd., 64 USPQ2d 1540
`(TTAB 2001).
`
`-3-
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`requests for production of documents and things.”
`
`Applicant respectfully submits therefore, that re-opening of time for pleading and time for
`discovery for the Applicant is indicated by the averments set forth in Opposer’ s motion. The Manual
`suggests that,
`
`“[i]n order to avoid any prejudice to the adverse party when a motion
`for leave to amend under Fed. R. Civ. P. 15(a) is granted, the Board
`may, in its discretion, reopen the discovery period to allow the
`adverse party to take discovery on the matters raised in the amended
`pleading.”°
`
`Such relief is respectfully requested.
`
`3
`
`9
`
`TBMP §523.0l. See also Jain v. Ramparts, Inc., 49 U.S.P.Q.2d 1429 (TTAB
`1998) and MacMillan Bloedel, Ltd, v. Arrow-M Corp., 203 U.S.P.Q. 952 (TTAB
`1979).
`
`TBMP, §507.02(a) -- Timing of Motion to Amend Pleading — In General, and
`footnote 124.
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`-4-
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`

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`RELIEF REQUESTED
`
`The Board is therefore respectfully requested to, protect against prejudice, Applicant’ s ability
`to defend its various rights to the Mark in question.
`In the interests of fairness, Applicant
`respectfully requests that the Board grant the relief requested by:
`
`A.
`
`Deny to Opposer leave to make the requested amendments to Opposers Notice of
`Opposition.
`
`Deny to Opposer leave to amend Opposers Notice ofOpposition to add to assert “six
`additional marks/registrations [sic] owned by Opposer against Applicant
`as a basis
`to sustain Opposer’s Opposition.”
`
`Deny to Opposer leave to amend Opposers Notice ofOpposition to add to assert “a
`count for likelihood of confusion.”
`'
`
`Deny to Opposer leave to amend Opposers Notice ofOpposition to add to assert “a
`count for likelihood of confusion” for any of Opposer’s marks that are not the subject
`of Opposer’s original Notice ofOpposition.
`
`Enlarge the time for Applicant to file an object, response or answer to any amended
`notice of opposition that the Board authorizes the Opposer to make.
`
`Re-open the discovery period to allow the adverse party to take discovery on the
`matters raised in the amended pleading. Notice of Opposition.
`'
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`Grant to Applicant such other and fiirther relief as justice and custom may require.
`
`Respectfull Submitted,
`
`
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91188800
`Serial No. 78/760,687
`Mark: WILD HARE ON ST. ANDREWS
`
`)
`
`) )
`
`) )
`
`)
`)
`)
`)
`
`St Andrews Links Limited
`
`Opposer
`
`v.
`
`Robert Anthony Amoroso
`
`Applicant
`
`) )i
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this Tuesday, the 14"‘ day of February 2012 a true and complete copy
`of the foregoing APPLICANT’S RESPONSE, COUNTER MOTION, AND OBJECTION TO
`OPPOSER’S MOTION TO AMEND OPPOSER’S NOTICE OF OPPOSITION has been served on
`the Opposer by mailing said copy, via e-mail and via First Class Mail (postage prepaid) to:
`
`David L. May, Esq.,
`Attorney for Opposer,
`NIXON PEABODY, L.L.P.
`401 9"‘ Street, N.W.,
`Washington, D.C. 20004-2128
`Telephone: (202) 585-81 10
`Facsimile: (202) 585-8080
`DMay@nixonpeabo y.com
`
`
`
`

`
`TRADEMARK
`T-47700PP
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of U.S. Trademark Application Serial No. 78/760687
`Published in the Official Gazette on 14 October 2008
`Mark: WILD HARE ON ST. ANDREWS
`
`St Andrews Links Limited
`
`Opposer
`
`v.
`
`Robert Anthony Amoroso
`Applicant
`
`Opposition No. 91188800
`
`CERTIFICATE OF MAILING UNDER 37 C.F.R. §2.l9Z
`
`Commissioner for Trademarks
`
`P.O. Box 1451
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`Arlington, VA 22313-1451
`
`Sir:
`
`
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`I hereby certify that this correspondence, A licant's Res onse and Ob'ection to oser's
`
`Motion to Amend Opposer's Notice of Opposition, is being deposited with the United States Postal
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`Service with sufficient postage as first class mail in an envelope addressed to
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`Commissioner for Trademark,
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`P.O. Box 1451, Alexandria, VA 22313-1451.
`
`Date:
`
`14 Februm 2012
`
` Robert E. ushnell
`
`Reg.No.: 27,774
`Attorney for the Applicant
`
`2029 “K” Street N.W., Suite 600
`Washington, D.C. 20006-1004
`(202) 408-9040
`
`Folio: T-4770 OPP
`
`Date: 2/14/12
`
`I.D.: REB/kf