Proceeding
`Party
`
`Correspondence
`Address
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA575048
`ESTTA Tracking number:
`12/06/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91203944
`Defendant
`Celgene Corporation
`CAMILLE M MILLER
`COZEN O'CONNOR
`1900 MARKET STREET
`PHILADELPHIA, PA 19103-3527
`UNITED STATES
`cmiller@cozen.com, mmiller@cozen.com, phdocketing@cozen.com
`Answer and Counterclaim
`Camille M. Miller
`cmiller@cozen.com, mmiller@cozen.com, tcloak@cozen.com
`/Camille M. Miller/
`12/06/2013
`Second_Motion_for_Leave_to_File_Amended_Answer.pdf(183539 bytes )
`Exhibit_A_Part_1.pdf(1897892 bytes )
`Exhibit_A_Part_2.pdf(2672380 bytes )
`Exhibit_A_Part_3.pdf(2645562 bytes )
`Exhibit_A_Part_4.pdf(1825309 bytes )
`Exhibit_B.pdf(1809536 bytes )
`Exhibit_C.pdf(322714 bytes )
`Exhibit_D.pdf(251179 bytes )
`Registrations Subject to the filing
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Registration No
`Registrant
`
`3562516
`PomWonderful LLC
`11444 W. Olympic Blvd., 10th Floor
`Los Angeles, CA 90064
`GERMANY
`Goods/Services Subject to the filing
`
`Registration date
`
`01/13/2009
`
`Class 001. First Use: 2007/05/07 First Use In Commerce: 2007/05/07
`All goods and services in the class are requested, namely: Botanical extracts, including pomegranate
`extracts, for use in the preparation of pharmaceutical products and preparations; botanical extracts,
`including pomegranate extracts, for use in the preparation of cosmetic and skin care products
`Class 005. First Use: 2007/05/07 First Use In Commerce: 2007/05/07
`All goods and services in the class are requested, namely: Dietary and nutritional supplements,
`including antioxidant supplements and supplements derived from and containing pomegranate
`extracts and plant extracts, including powders, liquids, capsules, and pills; nutraceuticals for use as a
`dietary supplement, including powders, liquids, capsules, and pills; nutritional additives for use in
`foods, including antioxidant additives and additives derived from and containing pomegranate
`extracts and plant extracts, including powders, liquids, capsules, and pills; [ anti-cancerpreparations; ]
`pharmaceutical productsand preparations, including preparations derived from and containing
`pomegranate extracts and plant extracts [, for the treatment of viral and infectious diseases, including
`for the treatment of cancer; nutritionally fortified beverages ]
`Class 030. First Use: 2007/05/07 First Use In Commerce: 2007/05/07
`All goods and services in the class are requested, namely: Pomegranate extracts for use as an
`ingredient in food products
`
`

`
`Class 032. First Use: 2006/03/06 First Use In Commerce: 2006/03/06
`All goods and services in the class are requested, namely: Non-alcoholic fruit extracts used in the
`preparation of beverages; pomegranate extracts for use as an ingredient in beverages
`
`Registration No
`Registrant
`
`3562517
`PomWonderful LLC
`11444 W. Olympic Blvd., 10th Floor
`Los Angeles, CA 90064
`GERMANY
`Goods/Services Subject to the filing
`
`Registration date
`
`01/13/2009
`
`Class 001. First Use: 2007/05/07 First Use In Commerce: 2007/05/07
`All goods and services in the class are requested, namely: Botanical extracts, including pomegranate
`extracts, for use in the preparation of pharmaceutical products and preparations; botanical extracts,
`including pomegranate extracts, for use in the preparation of cosmetic and skin care products
`Class 005. First Use: 2007/05/07 First Use In Commerce: 2007/05/07
`All goods and services in the class are requested, namely: Food, dietary and nutritional supplements,
`including antioxidant supplements and supplements derived from and containing pomegranate
`extracts and plant extracts, including powders, liquids, capsules,and pills; nutraceuticals for use as a
`dietary supplement, including powders, liquids, capsules, and pills; nutritionaladditives for use in
`foods, including antioxidant additives and additives derived from and containing pomegranate
`extracts and plant extracts, including powders, liquids, capsules, and pills; nutritionally fortified
`beverages; [ anti-cancer preparations; ] pharmaceutical products and preparations, including
`preparations derived from and containing pomegranate extracts and plant extracts [, for the treatment
`of viral and infectious diseases, including for the treatment of cancer; drug delivery agents consisting
`ofcompounds that facilitate delivery of pharmaceuticals; nutritionally enhanced water; vitamin
`enhanced water ]
`Class 030. First Use: 2007/05/07 First Use In Commerce: 2007/05/07
`All goods and services in the class are requested, namely: Pomegranate extracts for use as an
`ingredient in food products
`Class 032. First Use: 2006/03/06 First Use In Commerce: 2006/03/06
`All goods and services in the class are requested, namely: Non-alcoholic fruit extracts used in the
`preparation of beverages; pomegranate extracts for use as an ingredient in beverages
`
`Registration No
`Registrant
`
`3687491
`PomWonderful LLC
`11444 W. Olympic Blvd., 10th Floor
`Los Angeles, CA 90064
`GERMANY
`Goods/Services Subject to the filing
`
`Registration date
`
`09/22/2009
`
`Class 005. First Use: 2007/05/00 First Use In Commerce: 2007/05/00
`All goods and services in the class are requested, namely: Food, dietary and nutritional supplements,
`including antioxidant supplements and supplements derived from and containing pomegranate
`extracts and plant extracts, including powders, liquids, capsules,and pills; nutraceuticals for use as a
`dietary supplement, including powders, liquids, capsules, and pills; [ anti-cancer preparations; ]
`pharmaceutical products and preparations, including preparations derived from and containing
`pomegranate extracts and plant extracts [, for the treatment of viral and infectious diseases, including
`for the treatment of cancer ]
`Class 029. First Use: 2006/06/00 First Use In Commerce: 2006/06/00
`All goods and services in the class are requested, namely: Frozen fruits
`Class 030. First Use: 2006/02/01 First Use In Commerce: 2006/03/06
`All goods and services in the class are requested, namely: Topping syrup; iced tea and tea-based
`beverages with fruit flavoring
`
`

`
`Class 032. First Use: 2004/06/30 First Use In Commerce: 2004/06/30
`All goods and services in the class are requested, namely: Non-alcoholic fruit extracts used in the
`preparation of beverages; preparationsfor making fruit drinks; fruit flavoredbeverages; non-alcoholic
`beverages containing fruit juices; smoothies; bottled water; non-alcoholic beverages with tea flavor;
`low calorie fruit flavored beverages; low calorie fruit juice drinks; low calorie tea flavored beverages
`
`Registration No
`Registrant
`
`3687492
`PomWonderful LLC
`11444 W. Olympic Blvd., 10th Floor
`Los Angeles, CA 90064
`GERMANY
`Goods/Services Subject to the filing
`
`Registration date
`
`09/22/2009
`
`Class 005. First Use: 2007/05/00 First Use In Commerce: 2007/05/00
`All goods and services in the class are requested, namely: Food, dietary and nutritional supplements,
`including antioxidant supplements and supplements derived from and containing pomegranate
`extracts and plant extracts, including powders, liquids, capsules,and pills; nutraceuticals for use as a
`dietary supplement, including powders, liquids, capsules, and pills; [ anti-cancer preparations; ]
`pharmaceutical products and preparations, including preparations derived from and containing
`pomegranate extracts and plant extracts [, for the treatment of viral and infectious diseases, including
`for the treatment of cancer ]
`Class 029. First Use: 2006/06/00 First Use In Commerce: 2006/06/00
`All goods and services in the class are requested, namely: Frozen fruits
`Class 030. First Use: 2006/02/01 First Use In Commerce: 2006/03/06
`All goods and services in the class are requested, namely: Topping syrup; iced tea and tea-based
`beverages with fruit flavoring
`Class 032. First Use: 2004/06/30 First Use In Commerce: 2004/06/30
`All goods and services in the class are requested, namely: Non-alcoholic fruit extracts used in the
`preparation of beverages; preparationsfor making fruit drinks; fruit flavoredbeverages; non-alcoholic
`beverages containing fruit juices; smoothies; non-alcoholic beverages with tea flavor; low calorie fruit
`flavored beverages; low calorie fruit juice drinks; low calorie tea flavored beverages
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.2 91203944
`
`Serial Nos.:
`
`Marks:
`
`85/347,198
`85/347,212
`
`POML
`POMD
`
`) )
`
`) )
`
`POM WONDERFUL LLC,
`
`Opposer,
`
`v.
`
`CELGENE CORPORATION,
`
`)
`)
`)
`)
`)
`Applicant.
`MM
`
`CELGENE CORPORATION’S SECOND MOTION FOR LEAVE TO FILE
`
`AMENDED ANSWER AND COUNTERCLAIMS
`
`I.
`
`INTRODUCTION
`
`Applicant, Celgene Corporation (“Celgene”), again respectfully moves the Board for
`
`leave to file an Amended Answer and Counterclaims. Specifically, Ce]gene requests leave to
`
`amend its Answer to include counterclaims (1) for partial cancellation/restriction of the goods
`
`identified in certain of Opposer’s, Pom Wonderful LLC’s (“Pom’s”), pleaded trademark
`
`registrations; and (2) for full cancellation of certain of Pom’s pleaded trademark registrations on
`
`the basis of fraud.
`
`Celgene previously sought leave to amend its Answer to assert counterclaims for partial
`
`cancellation of the goods identified in certain of Pom’s pleaded trademark registrations, namely,
`
`U.S. Trademark Reg. No. 3,562,516 for POMX, U.S. Trademark Reg. No. 3,562,517 for POMX
`
`and Design, U.S. Trademark Reg. No. 3,687,491 for POM WONDERFUL, and U.S. Trademark
`
`Reg. No. 3,687,492 for POM WONDERFUL and Design (the “Identified Registrations”), in
`
`August 2013 (the “First Motion”). At the time of filing the First Motion, Celgene had then
`
`recently discovered that Pom intended to argue that a likelihood of confusion exists between its
`
`marks and Celgene’s marks in part because the goods associated with the parties’ respective
`
`

`
`applications and registrations encompass pharmaceutical preparations. Pom intended to raise
`
`this argument despite the fact that the Federal Trade Commission (“FTC”) issued a final order in
`its action against Pom, upholding an Administrative Law Judge’s initial determination that Pom
`
`falsely advertised that its POM Juice and its POMx supplements can “treat, prevent, or reduce
`
`the risk of heart disease, prostate cancer, or erectile dysfunction, or are clinically proven to do
`
`so.” See In the Matter ofPom Wonderful LLC et al., No. 9344, Initial Decision, at 328 (FTC ,
`
`May 17, 2012) attached hereto as Exhibit A; In the Matter ofPom Wonderful LLC et al., No.
`
`9344, Opinion of the Commission, at 53 (FTC Jan. 10, 2013) attached hereto as Exhibit B. This
`final order, which the Board advised Celgene could “introduce through a notice ofreliance” if it
`
`were to issue prior to applicant’s testimony period, see Board Order dated March 1, 2013, makes
`
`plain that Pom in no way offers and cannot claim it offers “pharmaceutical products and
`
`preparations,” as claimed in the Identified Registrations.
`
`Confirming the inaccuracy of Pom’s identification of goods in each of the Identified
`
`Registrations, Pom amended these registrations on October 29, 2013, during the time that the
`
`Board was considering, inter alia, Celgene’s First Motion,1 to delete “anti-cancer preparations”
`
`and the limiting language “for the treatment of viral and infectious diseases, including for the
`
`treatment of cancer” that appeared after “pharmaceutical products and preparations, including
`
`preparations derived from and containing pomegranate extracts.” Pom also deleted “nutritionally
`
`fortified beverages” from the ‘5 1 6 Registration and “drug delivery agents consisting of
`
`compounds that facilitate delivery of pharmaceuticals; nutritionally enhanced water; vitamin
`
`enhanced water” from the ‘517 Registration. In making these amendments, Pom effectively
`
`rendered its registrations indefinite, as each registration now reads, in pertinent part, as follows:
`
`1
`
`Celgene’s First Motion was ultimately not considered by the Board due to an alleged procedural issue.
`
`2
`
`

`
`pharmaceutical products and preparations, including preparations derived from and
`containing pomegranate extracts and plant extracts.
`
`Pom has retained this language despite the existence of the FTC’s final order and the
`
`ALJ’s corresponding initial decision, which effectively prohibit Porn from asserting that the
`goods upon which Pom uses its Various trademarks are, inter alia, pharmaceutical preparations.
`
`Thus, these registrations are still subject to cancellation and/or partial cancellation despite Pom’s
`
`recent amendments.
`
`Moreover, by deleting the limiting language “for the treatment of viral and infectious
`
`diseases, including for the treatment of cancer,” and retaining the term “including” instead of
`
`substituting this term for the proper term, “namely,” Pom effectively inappropriately broadened
`
`the scope of the Identified Registrations to cover goods Pom does not offer under its marks.
`
`Indeed, as currently drafted, Pom’s identification of goods encompasses all pharmaceutical
`
`products and preparations of every type and every manner, including anti-cancer preparations
`
`and the exact same drugs Celgene offers under its POML mark. This is plainly in error and is at
`
`odds with the FTC’s cease-and—desist order.
`
`Even assuming for the sake of argument “namely” is substituted for the term “including,’
`
`7
`
`the wording “pharmaceutical products and preparations, including preparations derived from and
`
`containing pomegranate extracts and plant extracts,” would be inappropriate in Pom’s
`
`registrations. For example, Pom offers only a liquid extract and a capsule-based dietary
`
`supplement under its POMX and POMX and Design marks. Pom’s POMx and POMX and
`
`Design registrations already include, however, “[p]omeg;ranate extracts for use as an ingredient
`
`in food products” and “[f] ood, dietary and nutritional supplements, including antioxidant
`
`supplements and supplements derived from and containing pomegranate extracts and plant
`
`extracts, including powders, liquids, capsules, and pills.” Given that the only goods Pom offers
`
`

`
`under its POMX and POMX and Design marks are already covered by these entries, there is no
`
`other product Porn offers that could be encompassed by the language “pharmaceutical products
`
`and preparations, including preparations derived from and containing pomegranate extracts and
`
`plant extracts.” Celgene should thus be allowed to amend its Answer to assert counterclaims
`
`seeking restriction of these goods under 15 U.S.C. § 1068.2
`
`Moreover, Pom’s amendments to its Identified Registrations, particularly the deletion of
`
`“nutritionally fortified beverages” and “nutritionally enhanced water; vitamin enhanced water,”
`
`which occurred without any prodding from Celgene, strongly suggests that Pom has not used—
`
`and never used——its marks in connection with certain of the goods identified in the Identified
`
`Registrations. For example, Celgene has been unable to locate any uses by Porn of either its
`
`POMX or POMX and Design mark in connection with “nutritionally fortified beverages” and
`
`“nutritionally enhanced water; vitamin enhanced water.” Celgene therefore believes that Porn
`
`committed fraud on the USPTO when Pom declared its use of these marks on such goods when
`
`filing its statements of use for these registrations. Pom’s practice of misleading the public
`
`suggests that Pom acted intentionally when conducting such acts. Accordingly, these
`
`registrations are subject to cancellation in full on the basis of fraud, and Celgene should be
`
`allowed to amend its Answer to assert counterclaims to this effect as well. A copy of the
`
`proposed Amended Answer and Counterclaims incorporating these, and the foregoing,
`
`counterclaims is attached hereto as Exhibit C.
`
`Contrary to Pom’s arguments set forth in its Opposition to Celgene’s First Motion (“Pom’s First Opp.”),
`2
`wherein Pom argued that Celgene’s counterclaims brought under 15 U.S.C. § 1068 were futile because Celgene
`must plead the elements necessary for cancellation, id. at 6-7, and which Celgene anticipates Pom will again raise in
`response to this Motion, the Trademark Rules make expressly plain that “[a] claim under Trademark Act § 18, 15
`U.S.C. § 1068, is in the nature of an equitable remedy and does not reguire pleading and proof of specific grounds
`for cancellation or opposition, such as abandonment.” TBMP § 309.03(d).
`
`

`
`It is within the interest ofjustice to grant Celgene’s Motion. First, discovery in this case
`
`is still pending and has been extended until February 2014. Second, Pom should have been
`
`aware of the FTC’s final order when it first issued on January 10, 2013. Third, Pom only
`
`recently called into question its lack of use of the POMX and POMX and Design marks in
`
`connection with “nutritionally fortified beverages” and “nutritionally enhanced water; vitamin
`
`enhanced water” and inappropriately broadened the identification of goods for the Identified
`
`Registrations when Pom amended its registrations on October 29, 2013. Finally, Celgene filed
`
`its First Motion shortly after learning that, despite the issuance of the FTC’s final order, Pom
`
`nonetheless intended to argue that a likelihood of confusion exists between its marks and
`
`Celgene’s marks because the registrations at issue both cover pharmaceutical products, and
`
`promptly filed its Second Motion after the Board issued its Order in November.
`
`II.
`
`BACKGROUND
`
`In the Spring of 2012, having found evidence of an FTC proceeding wherein the FTC
`claimed that Pom may have falsely advertised its products as capable of curing, preventing or
`
`treating certain diseases such as cancer, Celgene initially requested in its discovery requests
`
`information pertinent to the FTC proceeding and related information so that it could determine
`whether Pom actually offered in commerce these goods. See, e.g., Exhs. 1 and 4 ofCelgene’s
`
`Motion to Compel, filed on September 7, 2012, for a true and complete copy of these requests.
`
`When Pom repeatedly failed to provide Celgene with this—and other—information, Celgene
`
`moved to compel this information on September 7, 2012. The case was then stayed.
`
`Six months later, in ruling on Celgene’s Motion to Compel, the Board denied Celgene’s
`
`request to pursue discovery related to the FTC proceeding. See March 1, 2013 Order. In doing
`
`so, however, the Board issued a dispositive order making plain that, it would not entertain review
`
`

`
`of any final FTC Order until, at the earliest, the notice of reliance phase of this proceeding by
`
`stating, “[i]n the event that the FTC litigation is finally disposed of prior to the conclusion of
`
`applicant’s testimony period, applicant may .
`
`.
`
`. introduce the decision through a notice of
`
`reliance. .
`
`. .” Id.
`
`The FTC apparently issued a final order in this matter on January 10, 2013, during the
`
`time this case was first stayed. See Exhibit B. In issuing the final order, the FTC agreed with
`
`the Administrative Law Judge that Pom “made serious yet unsupported claims” that its products
`
`“treat, prevent or reduce the risk of heart disease, prostate cancer, or ED.” Exh. B at 49. Further,
`
`the FTC affirmed that Pom’s “actions were serious and deliberate,” noting that Pom “made
`
`numerous deceptive representations and were aware that they were making such representations
`
`despite the inconsistency between the results of some of their later studies and the results of
`
`earlier studies to which [Porn] refer[red] in [its] ads.” Id. Thus, the FTC upheld the ALJ’s cease
`
`and desist order, restraining Porn from making “any representation in any manner, expressly or
`
`by implication, including through the use of a .
`
`.
`
`. trademark .
`
`.
`
`. that [Pom’s products are]
`
`effective in the diagnosis, cure, mitigation, treatment, or prevention of any disease” (emphasis
`
`added), unless the representation is non—misleading and Porn possessed competent and reliable
`
`scientific evidence that substantiate these claims. See Exh. A at 332. Thus, the final order and
`
`the corresponding initial decision effectively prohibit Porn from asserting—as Pom does in its
`
`Identified Registrations as currently arnended—that the goods upon which Pom uses its various
`
`trademarks constitute pharmaceutical preparations.
`
`Despite the FTC’s order, Celgene learned, on July 25, 2013 when Pom filed its Reply
`
`Brief in Support of Its Motion to Reopen Expert Discovery (“Reply Br.”), that Pom nonetheless
`
`plarmed to argue a likelihood of confusion between its registrations and Celgene’s applications
`
`

`
`on the basis that the goods associated with each include pharmaceutical preparations and
`
`treatments.3 See Pom’s Reply Br. at 2-3. Given that Pom should not be able to argue that its
`
`products constitute pharmaceutical preparations in light of the FTC’s Order, Celgene promptly
`
`filed the First Motion on August 2, 2013 seeking leave from the Board to file counterclaims
`
`seeking partial cancellation of the Identified Registrations.
`
`On October 29, 2013, while Celgene’s First Motion was pending and these proceedings
`
`were stayed pending the disposition of Celgene’s co—pending Cross Motion to Compel and
`
`Motion for a Protective Order, Pom amended the Identified Registrations to delete “anti-cancer
`
`preparations” and the limiting language “for the treatment of viral and infectious diseases,
`
`including for the treatment of cancer” from each of the identification of goods in the Identified
`
`Registrations. Pom also deleted “nutritionally fortified beverages” from the ‘5 16 Registration
`
`and “drug delivery agents consisting of compounds that facilitate delivery of pharmaceuticals;
`
`nutritionally enhanced water; vitamin enhanced water” from the ‘517 Registration. However,
`
`Pom retained the following goods in each of the Identified Registrations: “pharmaceutical
`
`products and preparations, including preparations derived from and containing pomegranate
`
`extracts and plant extracts.”
`
`In light of these recent developments, Celgene now moves the Board to allow it leave to
`
`file an Amended Answer, see Exhibit C, seeking to cancel the Identified Registrations on the
`
`basis of fraud, partially cancel the Identified Registrations to exclude any reference to
`
`pharmaceutical preparations and products, and seeking, alternatively, to restrict the identification
`
`Indeed, Porn argued in its Reply Brief that “[t]his case is simply about two pharmaceuticalgparations
`3
`whose names differ only by a single letter — POMX vs. POML and POMX vs. POMD. Even if these products were
`in the same class but not both for pharmaceutical preparations, registration would be unlikely given the extremely
`high similarity between these coined terms. Howevepgthis case registration is particularly unlfi since ‘tribunals
`have long recognized the need for a more ‘conservativejpproach to determirgg a likelihood of confusion between
`trademarks used on pharmaceutical preparations due to the harmful
`conseq1_1e_nces of mistakenly taking the wrong
`medication.” In Re Indep. Pharmaceutica Ab, SERIAL 78160932, 2005 WL 363408, *3 (Trademark Tr. & App.
`Bd. Jan: 25, 2005).”
`
`

`
`of goods in the Identified Registrations to replace “including” with “namely” and to add in
`
`additional limitations to the extent still relevant. Celgene has acted diligently in filing this
`
`Motion and Pom will not be prejudiced in any way if the Board grants the same, particularly
`
`given the fact that discovery is still open——and was recently extended——in this matter. Moreover,
`
`pretrial disclosures are not yet due. Thus, the Motion should be granted in its entirety.
`
`III.
`
`ARGUMENT
`
`The Board should grant Celgene’s Motion to assert new counterclaims against Pom as
`
`entry ofthe proposed amendment will not “violate settled law or be prejudicial to the rights of
`
`[Pom],” TBMP § 507.02, particularly given the fact that (i) Pom should have been well aware of
`
`the FTC’s final order for quite some time, (ii) Pom has all of the facts related to Celgene’s
`
`counterclaims in its possession, (iii) Celgene promptly filed its First Motion after learning that,
`
`despite the FTC’s final order, Pom intended on arguing to the Board that there exists a likelihood
`
`of confusion in this case because, inter alia, both Pom’s registrations and Celgene’s applications
`
`cover pharmaceutical preparations, (iv).Pom’vs amendments to the Identified Registrations make
`
`plain that Pom still intends to raise similar likelihood of confusion arguments as noted above; (v)
`
`Pom’s sua sponte amendments to the ‘Identified Registrations inappropriately broaden the
`
`identification of goods and calls into question Pom’s intent when originally filing statements of
`
`use for the Identified Registrations; and (vi) discovery is still open in this proceeding and has
`
`recently been extended until February 2014, and there is still plenty of time before Pom’s pretrial
`
`disclosures are due.
`
`The Board “liberally grants leave to amend pleadings at any stage of a proceeding when
`
`justice so requires” so long as the opposing party will not be prejudiced by the amendment."
`
`TBMP § 507.02. The “timing of a motion for leave to amend under Fed..R. Civ. P. l5(a) plays a
`‘L
`
`

`
`large role in the Board’s determination of whether the adverse party would be prejudiced by the
`
`allowance of the proposed amendment.” Id. § 507.02(a). This is especially true for amendments
`
`to assert counterclaims. Id. § 507.02(b). Thus, “[i]n the absence of any apparent or declared
`
`reason -- such as undue delay, bad faith or dilatory motive on the part of the movant, repeated
`
`failure to cure deficiencies by amendments previously allowed, undue prejudice to the opposing
`
`party by virtue of allowance of the amendment, futility of amendment, etc. -- the leave sought
`
`should” be granted. Foman v. Davis, 371 U.S. 178, 182 (1962) (internal citations and quotations
`
`omitted); see also Commodore Elec. Ltd. v. CBM Kabushiki Kaisha, 26 U.S.P.Q.2d 1503, 1505
`
`(TTAB 1993) (“in deciding [a] motion for leave to amend, the Board must consider whether
`
`there is any undue prejudice .
`
`.
`
`. and whether the amendment is legally sufficient”). Given this
`
`liberal standard, the non-movant “generally carries the burden in persuading the court to deny
`
`leave to amend.” Dove v. Wash. Metro. Area Transit Auth., 221 F.R.D. 246, 247 (D.D.C. 2004).
`
`Applying these standards, it is plain that justice requires granting Celgene’s Motion.
`
`While the FTC issued its final order on January 10, 2013, it was not until Pom filed its Reply
`
`Brief—on July 25, 2013~—that Celgene learned that Pom, despite the FTC’s final order,
`
`. nonetheless intended to argue that a likelihood of confusion was likely here because one or more
`
`of the Identified Registrations cover pharmaceutical preparations, as do Celgene’s applications.
`
`See Pom’s Reply Br. at 2-3. Upon learning this information, Celgene promptly filed its First
`
`Motion. Proceedings in this case did not resume until November 27, 2013, at which time
`
`Celgene learned that the Board had not considered Celgene’s First Motion due to an alleged
`
`procedural issue. Since learning this information (and since the stay was lifted), Celgene has
`
`promptly filed this Second Motion within seven business days.4
`
`This is especially noteworthy in light of the Thanksgiving holiday, which effectively encompassed two of
`4
`these business days.
`
`

`
`Moreover, it was not until the Board’s November 27, 2013 Order that Celgene learned
`
`that Pom had—during the time these proceedings were stayed—also amended the Identified
`
`Registrations as discussed above.5 These amendments improperly broadened Pom’s
`
`identification of goods to encompass goods that Pom does not offer and, particularly with respect
`
`to the ‘516 and ‘517 Registrations, strongly suggest that Pom may have committed fraud against
`
`the USPTO when filing its statements of use for these registrations. Celgene therefore did not
`
`delay in requesting leave to assert counterclaims on the basis of fraud and restriction.
`
`Thus, Celgene has acted diligently in seeking leave to amend its Answer to assert all of
`
`its counterclaims. See, e.g., Media Online Inc. v. El Claszficado, Inc., 88 U.S.P.Q.2d 1285, 1286
`
`(T.T.A.B. 2008) (a motion for leave to amend should be filed promptly after the “ground for
`
`such amendment, e.g., newly discovered evidence, becomes apparen ”).
`
`In addition, and perhaps more importantly, Pom will in no way be prejudiced by
`
`Celgene’s assertions of these counterclaims. First, discovery in this case is still pending——and
`
`has been extended until February 2014 by the 'Board’s most recent Order. The case is still far
`
`away from either party’s testimony period such that Pom will have ample time to consider and
`
`respond to Celgene’s new counterclaims. Thus, Celgene’s counterclaims cannot be said to have
`
`been so late so as to prejudice Pom in this case. See, e.g., Commodore Elec. Lz.‘a’., 26 U.S.P.Q.2d
`
`at 1505-06 (T.T.A.B. 1993) (no undue delay where, inter alia, discovery was still open when the
`
`motion was filed). These facts are in stark contrast to the facts in ChaCha Search Inc. v. Grape
`
`Tech. Group Inc., 105 U.S.P.Q.2d 1298 (T.T.A.B. 2012), where the Board found undue delay
`
`when, inter alia, a motion for leave to amend was brought after pretrial disclosures were served
`
`Celgene notes that the Identified Registrations are improper on their face as they use “including” as
`5
`opposed to the required “namely” terminology adopted by the USPTO.
`
`l0
`
`

`
`and months after summary judgment motions involving the counterclaim were entertained. 105
`
`U.S.P.Q.2d at 1301.
`
`Second, Pom has all of the information relevant to these counterclaims in its possession,
`
`custody or control and should not require any discovery on these issues from Celgene or any
`
`third party. Indeed, Pom must have been aware of the FTC’s final order in January when the
`
`order first issued given the fact that the order expressly enjoined Porn from engaging in certain
`
`advertising and marketing practices, see Exhibit B. Thus, the final order likely impacted Pom’s
`
`business rather substantially. Pom cannot now feign surprise regarding this order and the facts
`
`associated therewith. Moreover, Porn is the keeper of all of the facts upon which Celgene’s
`
`counterclaims rest. Pom was the entity responsible for falsely advertising its various products.
`
`And Pom was responsible for filing overly broad trademark applications that encompass goods
`
`that it was not in fact offering for sale or selling under the applied-for marks. Moreover, Pom,
`
`by its own volition, amended the Identified Registrations.
`
`Thus, Porn is unable to claim that it should be surprised by these counterclaims. Given
`
`that the “analysis on undue delay” is “closely linked” with the “question of prejudice,”
`
`B00/chamer v. Sunbeam Pr0ds., No. C-09-6027 EMC (DMR), 2012 U.S. Dist. LEXIS 180497, at
`
`*l4 (N.D. Cal. Dec. 20, 2012), and Porn will in no way be prejudiced by the assertions of these
`
`counterclaims, Celgene’s Motion should be granted.
`
`Finally, Celgene’s Motion should be granted in the interest of promoting justice. The
`
`FTC has expressly enjoined Pom from making “any representation in any manner .
`
`.
`
`. including
`
`through the use of a .
`
`.
`
`. trademark .
`
`.
`
`. that [any food, drug, or dietary supplement, including, but
`
`not limited to, the POM Products] is effective in the diagnosis, cure, mitigation, treatment, or
`
`prevention of any disease” (emphasis added) unless Pom can rely upon competent and reliable
`
`ll
`
`

`
`scientific evidence in making these claims. See Exh. A at 332. Given that a “pharmaceutical” is
`
`“medicinal drug” and a “drug” is an article “intended for use in the diagnosis, cure, mitigation,
`
`treatment, or prevention of disease in man or other animals,” see website screenshots from
`
`Merriam-Webster Online Dictionary and the U.S. Government Printing Office, Federal Food
`
`Drug and Cosmetic Act, attached hereto as Exhibit D, Pom cannot claim (and has never been
`
`able to claim) that it offers any “pharmaceutical products and preparations” under any of the
`
`marks in the Identified Registrations.
`
`Even assuming for the sake of argument that “pharmaceutical products and preparations”
`
`encompasses non—medicinal goods such as dietary supplements, each of the identification of
`
`goods for the Identified Registrations as currently drafted is so broad via the use of the term
`
`“including” that it would nonetheless include medicinal goods, such as those offered by Celgene.
`
`And even assuming “including” was meant by Pom to read “namely,” which would be in
`
`violation of the USPTO’s naming convention, Pom’s identification of “pharmaceutical products
`
`and preparations, including preparations derived from and containing pomegranate ext