Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA692210
`ESTTA Tracking number:
`08/27/2015
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91221010
`Plaintiff
`Bayer Consumer Care AG
`PHILLIP BARENGOLTS
`PATTISHALL MCAULIFFE BEWBURY HILLARD GERLADSON LLP
`200 SOUTH WACKER DR, STE 2900
`CHICAGO, IL 60606
`UNITED STATES
`arh@pattishall.com, pb@pattishall.com, eo@pattishall.com, blc@pattishall.com,
`lrb@pattishall.com
`Motion to Amend Pleading/Amended Pleading
`Jessica A. Ekhoff
`jae@pattishall.com, pb@pattishall.com, uw@pattishall.com, lrb@pattishall.com,
`docket@pattishall.com
`/Jessica A. Ekhoff/
`08/27/2015
`Amended notice with exhibit.pdf(441303 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
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`Signature
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`In the matter of Application Ser. Nos. 86/301,270 and 86/301,431: FLANAX and
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`BAYER CONSUMER CARE AG,
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`Opposer,
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`BELMORA LLC,
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`Applicant.
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`Opposition No. 91,221,010
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`AMENDED CONSOLIDATED NOTICE OF OPPOSITION
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`Bayer Consumer Care AG, a Swiss company having its principal place of business at
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`Peter Merian-Str. 84, Basel, Switzerland 4052, believes it is and will be damaged by registration
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`of the marks shown in Application Serial Nos. 86/301,270 and 86/301,431 (collectively, “New
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`FLANAX Marks”), and files this amended notice of opposition pursuant to 37 C.F.R. § 2.107
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`and FED. R. CIV. P. 15(a). The grounds for opposition are stated below.
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`1.
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`Since long prior to the filing date of Application Serial Nos. 86/301,270 and
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`86/301,431 (collectively, “New FLANAX Applications”), Opposer and its predecessors and
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`licensees (collectively, “Bayer Consumer Care”) have marketed and sold pain relief medicines in
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`Mexico under the registered trademark FLANAX.
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`2.
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`Bayer Consumer Care has sold hundreds of millions of dollars of its FLANAX
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`medicines in Mexico. This includes sales to Mexican-Americans traveling in Mexico.
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`3.
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`Bayer Consumer Care has spent millions of dollars promoting and advertising the
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`FLANAX brand in Mexico, including in major cities near the U.S.-Mexico border.
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`825656v1
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`4.
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`As a result of Bayer Consumer Care’s extensive sales and marketing, the
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`FLANAX brand is extremely well known in Mexico and to Mexican-American consumers in the
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`United States.
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`5.
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`In 2003, Applicant applied to the United States Patent and Trademark Office to
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`register the trademark FLANAX on an intent-to-use basis for “Orally ingestible tablets of
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`Naproxen Sodium for use as an analgesic.” Application Serial No. 78/310,029. The trademark
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`was registered in February 2005 and claimed a date of first use in United States commerce of
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`March 1, 2004. Registration No. 2,924,440.
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`6.
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`Applicant adopted the FLANAX mark to deliberately trade on Bayer Consumer
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`Care’s goodwill in the FLANAX mark in the United States.
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`7.
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`Applicant copied Bayer Consumer Care’s packaging for its FLANAX analgesic,
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`including a nearly identical blue color for the packaging of Bayer Consumer Care’s FLANAX
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`product and the use of an identical font – the “FLA” portion of the mark bolder than the “NAX”
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`portion – for the FLANAX mark displayed on the packaging, as shown below:
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`8.
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`Applicant has since changed its packaging for its FLANAX analgesics, although
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`its modified packaging contains many of the same visual themes as the packaging shown above,
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`and Applicant continues to use the FLANAX trademark for analgesics.
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`9.
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`Applicant has marketed its FLANAX products by targeting Hispanic consumers
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`likely to be familiar with Bayer Consumer Care’s FLANAX analgesics and deliberately
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`attempting to deceive those consumers into believing that Applicant’s FLANAX analgesics are
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`the same thing as the FLANAX medicines consumers know and trust from Mexico.
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`10.
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`Applicant has since expanded its line of FLANAX products to include liniment,
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`cough lozenges, and antacids, all sold under the FLANAX trademark. Applicant has similarly
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`marketed these products in a deliberate attempt to deceive consumers into believing that these
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`FLANAX products come from the same source as the Mexican FLANAX medicines.
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`11.
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`In June 2007, Bayer Consumer Care petitioned the TTAB to cancel Applicant’s
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`Registration No. 2,924,440 for the trademark FLANAX on the ground that Applicant
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`misrepresented the source of its products as coming from Bayer, in violation of 15 U.S.C.
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`§ 1064(3). Cancellation No. 92047741.
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`12.
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`On April 17, 2014, the TTAB issued a ruling cancelling Applicant’s FLANAX
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`trademark registration pursuant to 15 U.S.C. § 1064(3). The TTAB’s Decision (“Decision”) is
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`attached hereto as Exhibit A. Finding that the facts before them “do not present a close case,”
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`the TTAB concluded that, “[t]he preponderance of the evidence before us readily establishes
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`blatant misuse of the FLANAX mark in a manner calculated to trade in the United States on the
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`reputation and goodwill of [Bayer Consumer Care’s] mark created by its use in Mexico.”
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`Decision, p.21.
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`13.
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`Applicant filed a Section 1071(b) action with the United States District Court for
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`the Eastern District of Virginia. Case No. 1:14-cv-00847-GBL-JFA. On March 2, 2015, the
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`District Court entered judgment for Applicant. Bayer appealed the District Court’s decision and
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`the appeal is ongoing in the United States Court of Appeals for the Fourth Circuit. That federal
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`court proceeding is hereinafter referred to as the “Civil Suit.”
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`14.
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`Shortly after the TTAB’s ruling cancelling Applicant’s FLANAX registration,
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`Applicant filed Application Serial No. 86/301,270 for the identical FLANAX mark. Applicant
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`also filed Application Serial No. 86/301,431 for a logo version of the FLANAX mark.
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`15.
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`Applicant’s use and application to register the New FLANAX Marks is without
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`Bayer Consumer Care’s consent or permission.
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`COUNT I
`FRAUD ON THE PATENT AND TRADEMARK OFFICE
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`16.
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`Petitioner re-alleges paragraphs 1 through 15, as if fully alleged herein.
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`17.
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`Despite knowing Belmora’s FLANAX registration had been cancelled by the
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`TTAB, Belmora’s principal, Jamie Belcastro, filed declarations in support of the New FLANAX
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`Applications claiming that Belmora was “the owner of the trademark/service mark sought to be
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`registered.”
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`18.
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`By filing the New FLANAX Applications and submitting the signed declarations
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`associated therewith, Belmora represented to the USPTO that it had the right to register the
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`FLANAX mark, even though the TTAB had already ruled that Belmora had no such right.
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`19. Mr. Belcastro’s false, material statements, made with the intent to deceive the
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`PTO into issuing registrations to which Applicant knew it was not entitled, constitute fraud on
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`the PTO.
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`COUNT II
`THE APPLICATIONS ARE VOID AB INITIO
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`20.
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`Petitioner re-alleges paragraphs 1 through 15, as if fully alleged herein.
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`21.
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`Bayer seeks a permanent injunction against Belmora and Mr. Belcastro’s use of
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`the FLANAX mark in the Civil Suit. If this injunction is entered, Applicant will be forever
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`enjoined from using the FLANAX mark, including the New FLANAX Marks.
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`22.
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`If Applicant and Mr. Belcastro are enjoined from using the FLANAX mark, they
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`will not be permitted to use the New FLANAX Marks and, therefore, will never be able to obtain
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`trademark registrations for the New FLANAX Applications.
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`23.
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`As a result of the aforementioned potential injunction against use, the New
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`FLANAX Applications would be void ab initio.
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`24.
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`25.
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`COUNT III
`COLLATERAL ESTOPPEL
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`Petitioner re-alleges paragraphs 1 through 15, as if fully alleged herein.
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`The TTAB decision cancelling Applicant’s FLANAX registration, which is also
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`at issue in the Civil Suit, will determine whether Applicant has the right to own a FLANAX
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`registration.
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`26.
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`If the Civil Suit results in affirmance of the decision of the TTAB in Cancellation
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`No. 92047741, Applicant will be collaterally estopped from making contrary arguments in this
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`proceeding with respect to the New FLANAX Marks.
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`27.
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`One of the New FLANAX Marks is identical to the mark covered by the
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`FLANAX registration, and the other is a logo version of the FLANAX mark that conveys the
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`same commercial impression.
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`28.
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`The goods covered by the New FLANAX Applications are medical products that
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`are substantially similar to the analgesics covered by the FLANAX registration.
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`29.
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`The New FLANAX Applications are barred by the doctrine of collateral estoppel.
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`COUNT IV
`MISREPRESENTATION OF SOURCE
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`Applicant uses the New FLANAX Marks to misrepresent to consumers, including
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`30.
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`especially consumers familiar with Bayer Consumer Care’s FLANAX mark, that Applicant’s
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`products are from the same source as Bayer Consumer Care’s goods sold under the FLANAX
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`mark.
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`31.
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`Applicant’s use and applications to register the New FLANAX Marks violate
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`Section 14(3) of the Lanham Act, 15 U.S.C. § 1064(3), because the New FLANAX Marks are
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`being used by Applicant to misrepresent the source of the goods on or in connection with which
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`Applicant’s New FLANAX Marks are being used.
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`Respectfully submitted,
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`PATTISHALL, MCAULIFFE, NEWBURY,
` HILLIARD & GERALDSON LLP
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`By:
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`/Jessica A. Ekhoff/
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`Phillip Barengolts
`Hans U. Widmaier
`Jessica A. Ekhoff
`200 South Wacker Drive
`Suite 2900
`Chicago, Illinois 60606
`(312) 554-8000
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`Attorneys for Bayer Consumer Care AG
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`Dated: August 27, 2015
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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing AMENDED CONSOLIDATED NOTICE
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`OF OPPOSITION was served upon Applicant on the 27th day of August, 2015, by mailing a
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`copy thereof via first-class mail to its counsel, John L. Welch, Wolf, Greenfield & Sacks, P.C.,
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`600 Atlantic Avenue, Boston, Massachusetts 02210, with a courtesy copy sent via email to
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`/Jessica A. Ekhoff/
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`John.Welch@WolfGreenfield.com.
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`EXHIBIT A
`EXHIBIT A
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`THIS OPINION IS A
`PRECEDENT OF THE TTAB
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`Hearing:
`October 23, 2013
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`Mailed:
`April 17, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
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`Trademark Trial and Appeal Board
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`Bayer Consumer Care AG
`v.
`Belmora LLC
`_____
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`Cancellation No. 92047741
`_____
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`Bradley L. Cohn, Phillip Barengolts, Alexis E. Payne, Ian J. Block, Scott T.
`Lonardo, Seth I. Appel, and Jeffrey A. Wakolbinger, Pattishall, McAuliffe, Newbury,
`Hilliard & Geraldson LLP, for Bayer Consumer Care AG.
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`Marsha G. Gentner, Philip L. O’Neill, and Leesa N. Weiss, Jacobson Holman PLLC,
`for Belmora LLC.
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`Before Seeherman, Taylor, and Hightower, Administrative Trademark Judges.
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`Opinion by Hightower, Administrative Trademark Judge:
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`Bayer Consumer Care AG petitions to cancel Belmora LLC’s registration for
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`the mark FLANAX, in standard characters, for “orally ingestible tablets of
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`Naproxen Sodium for use as an analgesic” in International Class 5.1 Petitioner
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`alleges that the registered mark is being used by the respondent to misrepresent
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`1 Registration No. 2924440, issued February 1, 2005. A declaration of use pursuant to
`Section 8 of the Trademark Act, 15 U.S.C. § 1058, was accepted December 16, 2010.
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`Cancellation No. 92047741
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`the source of the goods on or in connection with which the mark is used pursuant to
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`Section 14(3) of the Trademark Act, 15 U.S.C. § 1064(3).
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`We grant the petition to cancel.
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`Summary of Proceeding
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`Petitioner filed a petition to cancel on June 29, 2007,2 asserting a likelihood
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`of confusion. After respondent moved to dismiss for failure to state a claim under
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`FED. R. CIV. P. 12(b)(6), asserting that petitioner had not properly alleged standing
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`or prior use in the United States, petitioner amended its pleading to allege that its
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`mark FLANAX had been used in the United States,3 and respondent’s motion to
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`dismiss was denied as moot.4 In addition to a Section 2(d) claim, the amended
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`petition also asserted as grounds for cancellation that the registration violated
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`(1) Article 8 of the General Inter-American Convention for Trademark and
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`Commercial Protection of Washington, 1929 (“Pan American Convention”), and
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`(2) Article V of the Convention for the Protection of Commercial, Industrial and
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`Agricultural Trademarks and Commercial Names of Santiago, 1923 (“Santiago
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`Convention”). In lieu of a responsive pleading, respondent moved to dismiss the
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`amended petition, again alleging that petitioner failed to state a claim and lacked
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`2 This proceeding thus was not subject to the modified disclosure and conferencing regime
`applicable to inter partes proceedings commenced after November 1, 2007. See Trademark
`Trial and Appeal Board Manual of Procedure (TBMP) § 401 (3d ed. rev. 2 June 2013).
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`3 As discussed infra, petitioner has not used the FLANAX mark in the United States.
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`4 Board Order of September 26, 2007, 10 TTABVUE. Citations to the record include the
`TTABVUE number of the public (and English-language) entry where available, and, where
`relevant, to the electronic page number where a cited document or testimony appears.
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`2
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`Cancellation No. 92047741
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`standing. The Board granted respondent’s motion to dismiss but allowed petitioner
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`time to replead.5 Petitioner filed a second amended pleading.
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`For a third time, respondent moved to dismiss the amended petition for
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`failure to state a claim pursuant to FED. R. CIV. P. 12(b)(6). The Board granted the
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`motion in part in the precedential decision Bayer Consumer Care AG v. Belmora
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`LLC, 90 USPQ2d 1587 (TTAB 2009).6 The four claims in the second amended
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`petition, and their disposition, were as follows:
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`1. Likelihood of confusion under Section 2(d): Dismissed with prejudice
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`for failure to allege that goods bearing petitioner’s FLANAX mark were
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`manufactured or distributed in the United States prior to respondent’s
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`filing date by petitioner or on its behalf. Id. at 1591.
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`2. Violation of Article 6bis of the Paris Convention for the Protection of
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`Industrial Property (“Paris Convention”), as made applicable by
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`Sections 44(b) and (h) of the Trademark Act: Dismissed with prejudice.
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`The Board stated that Article 6bis does not afford an independent
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`cause of action for parties in Board proceedings, and that Trademark
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`Act Section 44 does not “provide the user of an assertedly famous
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`foreign trademark with an independent basis for cancellation in a
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`Board proceeding, absent use of the mark in the United States.” Id.7
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`5 Board Order of July 29, 2008, 17 TTABVUE.
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`6 Board Order of April 6, 2009, 25 TTABVUE.
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`7 Cf. Fiat Group Automobiles S.p.A. v. ISM Inc., 94 USPQ2d 1111, 1115 (TTAB 2010) (“We
`must, however, at least recognize the possibility that, in an unusual case, activity outside
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`3
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`Cancellation No. 92047741
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`3. Misrepresentation of source under Section 14(3) of the Trademark Act:
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`Motion to dismiss denied. The Board found that petitioner had
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`“alleged clearly and specifically that respondent copied petitioner’s
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`mark, including its particular display, and virtually all elements of its
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`packaging, in order to ‘misrepresent to consumers, including especially
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`consumers
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`familiar with Petitioner’s FLANAX mark,’
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`that
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`respondent’s product is from the same source as petitioner's product.”
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`Id. at 1592. The claim was therefore sufficiently pled. Furthermore:
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`While respondent argues that petitioner does not have
`“standing” to bring a misrepresentation of source claim
`given its failure to allege use in the United States,
`petitioner has alleged that it is damaged by respondent’s
`use of strikingly similar packaging “to misrepresent the
`source of” respondent’s goods.
` This is enough to
`sufficiently allege petitioner’s standing in this proceeding.
`Although existing case law does not address whether
`petitioner’s alleged use is sufficient to support a claim of
`misrepresentation of source, we find that at a minimum
`the claim is pled sufficiently to allow petitioner to argue
`for the extension of existing law. Moreover, respondent’s
`focus solely on petitioner’s extra-territorial use fails to
`take account of the fact that respondent’s use is in the
`United States and to the extent such use may be
`misrepresenting to consumers making purchases in the
`United States that petitioner is the source of respondent’s
`products, the misrepresentation is alleged by petitioner to
`be occurring in the United States. The Lanham Act
`provides for the protection of consumers as well as the
`property rights of mark owners.
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`Id.
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`the United States related to a mark could potentially result in the mark becoming well-
`known within the United States, even without any form of activity in the United States.”).
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`4
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`Cancellation No. 92047741
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`4. Fraud: Dismissed with prejudice.
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` Because petitioner did not
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`sufficiently allege prior use of its mark in the United States, it also did
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`not sufficiently allege that it had legal rights superior to respondent’s;
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`therefore, petitioner’s claim that respondent falsely declared that no
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`other person, firm, corporation, or association had the right to use the
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`FLANAX mark in commerce was untenable. Id. at 1592-93.
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`Thus, after the Board’s order of April 6, 2009, petitioner’s only remaining claim was
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`misrepresentation of source pursuant to Trademark Act Section 14(3).
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`Respondent filed an answer denying petitioner’s allegations and asserting
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`several affirmative defenses on June 5, 2009, then moved for summary judgment
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`three months later, asserting that petitioner lacked standing and that respondent
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`had not misrepresented the source of its products as a matter of law. The Board
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`denied respondent’s motion for summary judgment on petitioner’s standing and
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`granted petitioner’s cross-motion for discovery pursuant to FED. R. CIV. P. 56(f),
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`deferring consideration of respondent’s motion for summary judgment on the
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`merits.8 Respondent’s motion for summary judgment on the merits of petitioner’s
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`misrepresentation of source claim was denied on January 10, 2011, and the parties
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`proceeded to trial.9
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`8 Board Order of February 2, 2010, 43 TTABVUE. The rule governing discovery in response
`to a summary judgment motion is now found at FED. R. CIV. P. 56(d).
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`9 Board Order of January 10, 2011, 60 TTABVUE. Discussion of various other discovery
`and trial motions not before us on final decision is omitted. Also, because respondent did
`not brief its affirmative defenses as such at trial, they are deemed waived. See, e.g., Miller
`v. Miller, 105 USPQ2d 1615, 1616 n.3 (TTAB 2013). However, to the extent they serve to
`amplify respondent’s defense – including its assertion that petitioner lacks standing – they
`have been considered.
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`5
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`Cancellation No. 92047741
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`The case is fully briefed, and an oral hearing was held on October 23, 2013.
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`Evidence and Objections
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`Each party has moved to strike evidence proffered by the other party.
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`Because of the volume of objections, we address only the objections to the evidence
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`on which the parties relied and that may be relevant to the claim before us. We also
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`discuss only in general terms the portions of the record that the parties have
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`submitted under seal and have not disclosed in their public briefs.
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`A.
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`Respondent’s Motion to Strike Exhibits to Petitioner’s Notice of Reliance10
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`Respondent moves to strike Exhibit B, Parts I and II, to petitioner’s notice of
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`reliance, i.e., excerpts from the Dictionary of Pharmaceutical Specialties of Mexico
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`and advertisements for Petitioner’s FLANAX products from printed publications
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`circulated in Mexico on the basis that they were not shown to be in general
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`circulation in the United States, and also that the advertisements were
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`insufficiently identified and may be made of record only through witness
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`testimony.11 Respondent’s motion is denied. The documents are admissible by
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`notice of reliance pursuant to Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e), for
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`petitioner’s stated purpose of showing the FLANAX mark and packaging in Mexico.
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`In addition, the sources of the materials in Exhibit B, Part II are sufficiently
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`identified.
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`10 90 and 97 TTABVUE; Corrected Appendix 1 to Respondent’s Brief, Exhibits A and B, 128
`TTABVUE 7-21.
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`11 80 TTABVUE 216-37 and 238-46.
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`6
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`Cancellation No. 92047741
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`B.
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`Petitioner’s Objections and Motion to Strike Respondent’s Evidence12
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`1. Counter-Designations from Belcastro Deposition (Exhibit C to
`Respondent’s Amended Notice of Reliance)13
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`Petitioner objects to respondent’s proffered counter-designated excerpts from
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`the discovery deposition of respondent’s owner, Jamie Belcastro, on the ground that
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`respondent has failed to sufficiently explain why it needs to rely on each additional
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`excerpt. Respondent does not address its 26 non-consecutive pages of counter-
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`designations individually, but states that they “are offered pursuant to Fed. R. Civ.
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`P. 32(a)(6), which allows an adverse party to offer other parts of a deposition that in
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`fairness should be considered with the parts already introduced,” to provide context
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`to the “snippets” of testimony designated by petitioner.14
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`Petitioner’s objection is governed by Trademark Rule 2.120(j)(4):15
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`If only part of a discovery deposition is submitted and
`made part of the record by a party, an adverse party may
`introduce under a notice of reliance any other part of the
`deposition which should in fairness be considered so as to
`make not misleading what was offered by the submitting
`party. A notice of reliance filed by an adverse party must
`be supported by a written statement explaining why the
`adverse party needs to rely upon each additional part
`listed in the adverse party’s notice, failing which the
`Board, in its discretion, may refuse to consider the
`additional parts. (emphasis added).
`
`
`12 115, 117, and 122 TTABVUE; Appendix to Petitioner’s Brief, 125 TTABVUE; Appendix to
`Petitioner’s Reply Brief, 132 TTABVUE.
`
`13 112 TTABVUE 87-124. Respondent also filed an amended notice of reliance, without
`exhibits, on December 10, 2012. See 116 TTABVUE.
`
`14 Respondent’s notice of reliance, 116 TTABVUE 4-6.
`
`15 Inter partes proceedings before the Board are governed, in part, by the Federal Rules of
`Civil Procedure, except as otherwise provided in the Trademark Rules of Practice.
`Trademark Rule 2.116(a).
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`
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`Cancellation No. 92047741
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`We agree with petitioner that respondent’s blanket statements fail to explain why
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`respondent needs to rely on each additional proffered excerpt. Nonetheless, in our
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`discretion, we have reviewed the excerpts and find that each introduces new
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`testimony rather than makes the testimony designated by petitioner not
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`misleading. We therefore grant petitioner’s motion to strike Exhibit C to
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`respondent’s notice of reliance.
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`2. Counter-Designations from Belcastro Declaration (Exhibit D to
`Respondent’s Corrected Amended Notice of Reliance)16
`
`Petitioner attempted to submit by notice of reliance portions of a declaration
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`by respondent’s owner in support of respondent’s motion for summary judgment,
`
`arguing that these statements from Mr. Belcastro’s declaration are admissible as
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`statements by a party-opponent pursuant to FED. R. EVID. 801(d)(2). Declarations
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`are not among the types of evidence admissible by notice of reliance. Trademark
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`Rule 2.122(e). Respondent, however, did not object on this basis, but rather
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`submitted the entire declaration with all exhibits as an exhibit to its own notice of
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`reliance. Respondent argues that petitioner effectively consented to submission of
`
`the full declaration into evidence; failing that, respondent argues that the
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`declaration is admissible in the interests of justice under the “residual” hearsay
`
`exception embodied in FED. R. EVID. 807(a).
`
`Because both parties submitted (in whole or in part) Mr. Belcastro’s
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`declaration, we deem them to have stipulated the declaration into the record, and
`
`
`16 111 TTABVUE 9-67 (redacted).
`
`
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`Cancellation No. 92047741
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`we hereby consider the entire declaration for whatever evidentiary value it may
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`have and deny petitioner’s motion to strike respondent’s Exhibit D.
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`3. Testimony of Expert Witness Benjamin L. England17
`
`Petitioner objects to the testimony deposition of Benjamin L. England, offered
`
`by respondent as an expert witness, because Mr. England was not timely disclosed
`
`and did not submit a written report. Although this case predates the Board’s
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`pretrial and expert witness disclosure requirements, petitioner’s Interrogatory
`
`No. 20 sought disclosure of any expert on whose opinion respondent intended to rely
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`pursuant to FED. R. CIV. P. 26(a)(2)(A) and (B). Respondent responded during
`
`discovery that it “has not yet identified any expert witness that it expects to call to
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`testify on its behalf.”18
`
`General discovery closed February 9, 2011. Respondent states that it
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`“determined to elicit Mr. England’s testimony only after reviewing the record
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`following the close of Petitioner’s testimony period” in response to petitioner’s
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`decision not to introduce a paragraph of the Belcastro Declaration.19 However,
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`petitioner’s testimony period closed on October 14, 2012, and respondent did not
`
`identify Mr. England as a potential witness until November 28, 2012,
`
`
`17 119-21 TTABVUE.
`
`18 Annex 1 to Petitioner’s Brief, 124 TTABVUE 55 (redacted). It appears that respondent
`identified Mr. England in a supplemental answer to Interrogatory No. 20 in the text of an
`email to petitioner on December 3, 2012, during respondent’s testimony period. Appendix 1
`to Respondent’s Brief, 127 TTABVUE 51.
`
`19 Appendix 1 to Respondent’s Brief, respondent’s opposition to petitioner’s objections to its
`evidence, at 1-2, 127 TTABVUE 3-4.
`
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`Cancellation No. 92047741
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`approximately halfway through its testimony period.20 Moreover, petitioner’s notice
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`of reliance introducing portions of the Belcastro Declaration was filed more than a
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`year before respondent identified Mr. England, on August 24, 2011. We also point
`
`out that, although respondent states that it identified Mr. England “shortly after he
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`was engaged,” Mr. England testified that he was contacted during the first or
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`second week of November 2012 and agreed to testify shortly thereafter, well before
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`he was identified on November 28.21
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`We find that respondent’s failure to promptly identify and disclose its expert
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`witness and provide a written report was neither substantially justified nor
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`harmless, and petitioner’s objection is sustained. We therefore strike the England
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`testimony due to untimely disclosure pursuant to FED. R. CIV. P. 37(c)(1). See also
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`Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 414(7) (2d ed.
`
`rev. 2004)22 (“A party need not, in advance of trial, specify in detail the evidence it
`
`intends to present, or identify the witnesses it intends to call, except that the names
`
`of expert witnesses intended to be called are discoverable.”); TBMP § 414(7) & n.13
`
`(3d ed. rev. 2 June 2013) (“For proceedings commenced prior to November 1, 2007, a
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`party need not, in advance of trial, identify the witnesses it intends to call, except
`
`that the names of expert witnesses intended to be called are discoverable.”). We
`
`point out, however, that the entire Belcastro Declaration has been admitted into
`
`evidence, obviating respondent’s rationale for the England testimony.
`
`
`20 Id. at 4.
`
`21 England Transcript at 33:22-34:25, 119 TTABVUE 36-37.
`
`22 This was the operative edition of the TBMP at the time this proceeding commenced.
`
`
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`Cancellation No. 92047741
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`4. Cross-Examination Testimony of Pascal Bürgin23
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`We sustain petitioner’s objections to cross-examination questions six through
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`57 and Exhibits A through E from the deposition on written questions of petitioner’s
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`witness Pascal Bürgin, on the ground that the cross-examination exceeded the scope
`
`of the direct examination pursuant to FED. R. EVID. 611(b).
`
`5. Exhibits G and H to Respondent’s Amended Notice of Reliance24
`
`Finally, for the sake of completeness, we note that previous orders of the
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`Board in the same proceeding (including respondent’s Exhibit G) are automatically
`
`of record. Also, because the document in Exhibit H – displaying respondent’s
`
`annotations to the operative pleading – is not admissible by notice of reliance, we
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`grant petitioner’s motion to strike it.
`
`We hasten to add that consideration of any of the excluded evidence would
`
`not have affected the outcome.
`
`C.
`
`Description of the Record
`
`The file of the subject registration for FLANAX is automatically of record.
`
`Trademark Rule 2.122(b). Pursuant to the evidentiary rulings supra, a summary of
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`the evidence made of record by the parties follows.
`
`1. Petitioner’s Evidence
`
`Petitioner introduced testimony depositions, with exhibits, of the following
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`six individuals:
`
`
`23 109 TTABVUE 9-24 (testimony) and 133-84 (exhibits) (redacted).
`
`24 112 TTABVUE 159-77.
`
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`Cancellation No. 92047741
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`• Karla Fernandez Parker, president and CEO of K. Fernandez &
`Associates, a Hispanic and multicultural marketing and advertising
`agency in San Antonio, Texas that did work for respondent in 2007;25
`
`• Eduardo Gonzalez Machado, a former contractor for K. Fernandez &
`Associates who performed work for respondent;26
`
`• Paul Currao, an account executive of packaging firm Disc Graphics,
`which produces cartons and labels for respondent;27
`
`• Lisa Halprin Fleisher, former global brand director for petitioner’s
`naproxen sodium brands, including FLANAX and ALEVE;28
`
`• Pascal Bürgin, head of law and compliance for petitioner, who was
`deposed on written questions;29 and
`
`• Juan Jose Bandera, marketing director for Bayer de Mexico, S.A. de
`C.V.30
`
`Petitioner submitted the following evidence by notice of reliance:
`
`• Publications showing the FLANAX mark and packaging in Mexico;31
`
`• Printouts from the website of the Department of Homeland Security
`showing data on numbers of Mexican immigrants to the United
`States;32
`
`• Printouts from websites accessible in the United States, including
`YouTube.com and Google.com, showing petitioner’s FLANAX mark;33
`
`
`25 78 TTABVUE.
`
`26 94 TTABVUE.
`
`27 99 TTABVUE (Exhibit 29 filed under seal at 100 TTABVUE 54).
`
`28 91 TTABVUE.
`
`29 106 and 109 TTABVUE. Mr. Bürgin’s business address is in Basel, Switzerland.
`
`30 92 TTABVUE (filed under seal).
`
`31 Petitioner’s Exhibit B, 80 TTABVUE 216-46.
`
`32 Exhibit C, 80 TTABVUE 247-75.
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`33 Petitioner’s Exhibit D, 80 TTABVUE 276 to 81 TTABVUE 69.
`
`
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`Cancellation No. 92047741
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`• Excerpts from pharmacology reference books;34
`
`• Printouts from the Aleve.com website and electronic records of the
`ALEVE trademark registration from the U.S. Patent and Trademark
`Office database;35
`
`• A copy of petitioner’s second set of requests for admission and
`respondent’s responses, admitting
`the authenticity of certain
`documents produced by respondent
`in response to petitioner’s
`discovery requests and identified as Exhibits 1 through 420;36
`
`• Printouts from the electronic records of the U.S. Patent and
`Trademark Office showing:
`
`o the current status and title o