Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA699825
`ESTTA Tracking number:
`10/02/2015
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91218627
`Defendant
`Mariner Biomedical, Inc.
`BASSAM N IBRAHIM
`BUCHANAN INGERSOLL & ROONEY PC
`1737 KING STREET , SUITE 500
`ALEXANDRIA, VA 22313-1404
`UNITED STATES
`bassam.ibrahim@bipc.com
`Motion to Dismiss 2.132
`Bassam N. Ibrahim
`bassam.ibrahim@bipc.com
`/Bassam N. Ibrahim/
`10/02/2015
`Applicant's Motion for Involuntary Dismissal.pdf(298194 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
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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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`Galderma S.A.
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`Opposer,
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`V.
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`Mariner Biomedical, Inc.
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`Applicant
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`9/\/\J\2\—/\/\./\/9/%/€
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`Opposition No. 91218627
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`APPLICANT'S MOTION FOR INVOLUNTARY DISMISSAL
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`PURSUANT TO 37 C.F.R. §2.132ga[
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`Pursuant to Rule 2.132(a) of the Rules of Practice in Trademark Cases, 37 C.F.R.
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`§2.132(a), Applicant Mariner Biomedical, Inc. ("Applicant") hereby moves for involuntary
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`dismissal (the “Motion”) of the above-captioned matter, Opposition No. 91218627 (the
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`“Opposition”), on the grounds that Opposer Galderma S.A. (“Opposer”) has failed to prosecute
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`the Opposition. This Motion is being timely filed prior to the opening of Applicant’s testimony
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`period.
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`STATEMENT OF FACTS
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`On October 1, 2014, Opposer, filed a Notice of Opposition against Applicant’s
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`Application No. 86/104,014 (the “Application”) for KAIDERMA (the “Applied-For Mark”) in
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`connection with “Non-medicated skin care preparations; non—medicated skin care products,
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`namely, exfoliating salt scrubs, anti—aging serums, anti-wrinkle gel, bath salts, facial cleansers,
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`massage gels and oils, body oils and lotions, facial and body toners, bath soap, lip balms” in
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`Class 3 and “Medicated skin care preparations; medicated skin care products, namely, sun
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`screens, skin protectant preparations, anti—itch preparations, anti-inflammatory preparations;
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`dermatological pharmaceutical products; parapharmaceutical products for use in dermatology” in
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`Class 5.
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`Opposer opposed the Application under Section 2(d) of the Trademark Act, alleging
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`likelihood of confusion with 5 trademark registrations (collectively, the “Cited Registrations”)
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`and one pending trademark application (the “Cited Application”), which are set forth below:
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`0
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`0
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`0
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`0
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`0
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`0
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`Reg. No. 3,740,054 for GALDERMA;
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`Reg. No. 3,532,965 for GALDERMA COMMITTED TO THE FUTURE OF
`DERMATOLOGY and Design;
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`Reg. No. 3,532,964 for GALDERMA COMMITTED TO THE FUTURE OF
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`DERMATOLOGY and Design;
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`Reg. No. 2,334,441 for GALDERMA and Design;
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`Reg. No. 1,531,542 for GALDERMA; and
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`App. Ser. No. 85/957,469 for GALDERMA and Design
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`As exhibits to the Notice of Opposition, Opposer attached plain copies of the Certificates
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`of Registration for the five Cited Registrations and a copy of the Notice of Allowance issued for
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`the Pending Registration.
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`Applicant timely filed its Answer to the Notice of Opposition on October 23, 2014,
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`generally and specifically denying Petitioner’s allegations.
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`Pursuant to the Board’s scheduling order, issued on October 1, 2014 (the “Scheduling
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`Order”), Opposer’s trial period ended on September 6, 2015. Prior to the closing of its trial
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`period, Opposer failed to provide Initial Disclosures, make expert disclosures, request any
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`discovery, offer any evidence or submit any testimony in this Opposition.
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`Applicant’s trial period is scheduled to open on October 5, 2015. However, Applicant
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`submits that this Opposition should be involuntarily dismissed pursuant to Rule 2.132(a) due to
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`Plaintiffs failure to prosecute this case.
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`ARGUMENT
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`Rule 2.132(a) provides that a party may obtain an involuntary dismissal for failure to
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`prosecute if the time for taking testimony by the plaintiff has expired and that party has not taken
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`testimony or offered any other evidence.
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`As set forth above, Opposer’s testimony period closed on September 6, 2015. Opposer
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`failed to offer any testimony or offer any evidence during its assigned testimony period.
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`Moreover, the plain copies of the registrations for the Cited Registrations and a copy of the
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`Notice of Allowance for the Cited Application, which were attached as exhibits to the Notice of
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`Opposition, are wholly insufficient to make either the Cited Registrations or the Cited
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`Application of record.
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`Trademark Rule 2.122(d) provides the manner in which a plaintiff may properly make its
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`pleaded registration(s) of record:
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`(1) A registration of the opposer or petitioner pleaded in an opposition or petition to cancel
`will be received in evidence and made part of the record if the opposition or petition is
`accompanied by an original or photocopy of the registration prepared and issued by the
`United States Patent and Trademark Office showing both the current status of and current
`title to the registration, or by a current printout of information from the electronic database
`records of the USPTO showing the current status and title of the registration; or
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`(2) A registration owned by any party to a proceeding may be made of record in the
`proceeding by that party by appropriate identification and introduction during the taking of
`testimony or by filing a notice ofreliance, which shall be accompanied by a copy (original or
`photocopy) of the registration prepared and issued by the Patent and Trademark Office
`showing both the current status of and current title to the registration. The notice of reliance
`shall be filed during the testimony period of the party that files the notice.
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`In this case, Opposer has merely attached plain copies of the certificates of registration for the
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`Cited Registrations to its Notice of Opposition, which the Board has consistently held is not in
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`compliance with Rule 2. l22(d) and is insufficient to make the cited registrations of record. See
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`Sterling Jewelers Inc. v. Romance & Co., Inc., 110 USPQ2d 1598, 1601 (TTAB 2014) (“The
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`Board has routinely held that the submission of a photocopy of a pleaded registration, by itself, is
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`insufficient for purposes of establishing a party’s current ownership, or the current status, of the
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`registration, and therefore does not suffice to make the registration of record”) (citing TBMP §
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`704.03(b)(1)(A) (3d ed. rev. 2 2013) and authorities cited therein). Moreover, for purposes of a
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`Rule 2.132(a) motion, the requirements of Rule 2.122(d) must be strictly construed. Id. at 1601
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`n4 (“Strict compliance with Trademark Rule 2.122(d) is necessary if parties defending against
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`claims based on registrations, such as applicant in this case, are to know whether relevant
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`registrations are of record and thus whether to introduce opposing evidence”).
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`Opposer has similarly failed to introduce the Cited Application as evidence in the
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`Opposition. Merely attaching a Notice of Allowance to the Notice of Opposition is insufficient
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`to make an application of record. Rather, an application must be made of record during the
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`testimony period, either through the taking of testimony or by filing a notice of reliance. See
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`TBMP §704.03(b)(2). Moreover, even assuming the application was properly introduced, it has
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`no probative value. Applications are only evidence that an application was filed; they are not
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`evidence of rights or priority of use. See, e. g., Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d
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`1 187, 1193 n.8 (TTAB 2007).
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`The purpose of Rule 2.l32(a) is to relieve the applicant from the burden of having to
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`incur the expense and time of trial where the Opposer has wholly failed to prosecute its case. In
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`this case, Opposer has failed to make the Cited Registrations or the Cited Applications of record
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`and failed to offer any testimony or evidence during its assigned testimony. In fact, Opposer has
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`failed to comply with any of its discovery obligations in this case.
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`Because Opposer has wholly failed to prosecute its case, the Opposition should be
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`involuntarily dismissed with prejudice pursuant to Rule 2.l32(a) for failure to prosecute the
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`Opposition. 1
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`CONCLUSION
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`For the reasons set forth above, Applicant respectfully requests that the Opposition be
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`dismissed with prejudice.
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`Date: October 2, 2015
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`Respectfully submitted,
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`MARINER BIOMEDICAL, INC.
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`/Bassam N. Ibrahim/
`By:
`Bassam N. Ibrahim
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`Laura K. Pitts
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`Buchanan Ingersoll & Rooney PC
`1737 King Street, Suite 500
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`Alexandria, Virginia 22314-2727
`Telephone: 703-836-6620
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`Attorneys for Applicant
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`‘ In accordance with Board precedent, Applicant is seeking dismissal pursuant to Rule 2.132(a). See Sterling
`Jewelers, 110 USPQ2d at 1602 (“Because opposer has failed to comply with the "simple and clear'' directives of
`Trademark Rule 2.l22(d) , opposer's pleaded registration is not of record. In View thereof and inasmuch as opposer
`has failed to submit any other evidence or take any testimony during its assigned testimony period, we will consider
`applicant's motion for involuntary dismissal as one seeking relief under Trademark Rule 2.l32(a) only.”). However,
`Applicant maintains that it would also be entitled to dismissal pursuant to Rule 2.l32(b), assuming the Cited
`Registrations had been properly made of record.
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true copy of the foregoing APPLICANT’S MOTION FOR
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`INVOLUNTARY DISMISSAL PURSUANT TO RULE 2.132(a) was served this 2nd day of
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`October, 2015 Via email and U.S. first class mail on:
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`G. Mathew Lombard, Esq.
`Lombard & Geliebter LLP
`1115 Broadway, 12”‘ Floor
`New York, NY 10010
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`Florence Goodman