Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1074540
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`Filing date:
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`08/12/2020
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`Proceeding
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`91256359
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`Plaintiff
`Solvay SA
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`REBECCA LIEBOWITZ
`VENABLE LLP
`PO BOX 34385
`WASHINGTON, DC 20043-9998
`UNITED STATES
`Primary Email: rliebowitz@venable.com
`Secondary Email(s): trademarkdocket@venable.com
`202-344-4976
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`Motion to Strike Pleading/Affirmative Defense
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`Rebecca Liebowitz
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`rliebowitz@venable.com, trademarkdocket@venable.com
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`/rebecca liebowitz/
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`08/12/2020
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`SLVAY Solvay v. Jeanne Gregori SOLVAY SAFE -- Motion to Strike Answer
`(49774402.pdf(161314 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`SOLVAY SA
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`Opposer,
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`v.
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`Jeanne M. Gregori
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`Applicant.
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`Attorney’s Reference: 32232-519398
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`Opposition No. 91256359
`Application Serial No. 88/353802
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`OPPOSER’S MOTION TO STRIKE APPLICANT’S ANSWER
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`Opposer Solvay SA (“Opposer”) submits this motion to strike Applicant’s “answer” for
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`failure to comply with the Federal Rules of Civil Procedure and the Trademark Rules of Practice.
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`I. RELEVANT BACKGROUND
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`On March 24, 2019 Applicant filed Application Serial No. 88/353802 to register the mark
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`SOLVAY SAFE in connection with “Providing temporary use of on-line non-downloadable
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`computer software accessible to authorized users through a web-based portal for reporting human
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`trafficking information and data and featuring a software template to input the information and
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`data for dedicated program reporting purposes; Providing an online non-downloadable Internet-
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`based system application featuring technology enabling users to report on human trafficking by
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`inputting text and data which can be collected, stored and maintained in the system application.”
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`Application Serial No. 88/353802 was published for opposition in the Official Gazette on
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`February 18, 2020.
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`On June 15, 2020, Opposer timely filed a Notice of Opposition against Application Serial
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`No. 88/353802, alleging likelihood of confusion and dilution by blurring as grounds for
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`opposition. 1 TTABVUE. On July 25, 2020, Applicant filed its “answer,” which not only fails
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`to comply with the rules, but also fails to give Opposer fair notice of Applicant’s defenses or
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`Applicant’s position with respect to the allegations in the Notice of Opposition.
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`II. ARGUMENT
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`Fed. R. Civ. P. 12(f), allows the Board to strike “from any pleading any insufficient
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`defense or any redundant, immaterial, impertinent, or scandalous matter.” See also Trademark
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`Rule 2.116; TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
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`(“TBMP”) § 506.01 (2019). While an answer need not follow a particular format, it must,
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`however, meet the requirements under the pertinent Trademark Rules and include the necessary
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`information for fairly responding to allegations in the complaint. See Trademark Rule 2.106(b);
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`see also TBMP § 311. Parties to Board proceedings are required to comply with the Trademark
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`Rules, and where applicable, the Federal Rules of Civil Procedure, regardless of whether they are
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`represented by counsel. McDermott v. San Francisco Women’s Motorcycle Contingent, 81
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`USPQ2d 1212, n.2 (TTAB 2006), aff’d unpub’d, 240 Fed. Appx. 864 (Fed. Cir. 2007), cert.
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`denied, 552 U.S. 1109 (2008).
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` Trademark Rule 2.106(b)(2) provides, in pertinent part, that:
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`An answer shall state in short and plain terms the applicant’s
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`defenses to each claim asserted and shall admit or deny the
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`averments upon which the opposer relies. If the applicant is
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`without knowledge or information sufficient to form a belief as to
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`the truth of an averment, applicant shall so state and this will have
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`the effect of a denial.
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`Fed. R. Civ. P. 8(b) provides, in part:
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`(b) Defenses; Admissions and Denials.
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` (1) In General. In responding to a pleading, a party must:
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` (A) state in short and plain terms its defenses to each claim
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`asserted against it; and
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` (B) admit or deny the allegations asserted against it by an
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`opposing party.
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` ***
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` (5) Lacking Knowledge or Information. A party that lacks
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`knowledge or information sufficient to form a belief about the truth
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`of an allegation must so state, and the statement has the effect of a
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`denial.
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`The “defendant should not argue the merits of the allegations in a complaint but rather should
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`state, as to each of the allegations contained in the complaint, that the allegation is either
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`admitted or denied.” TBMP 311.02(a); See Fed. R. Civ. P. 8(b); Trademark Rule 2.106(b)(2);
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`Thrifty Corp. v. Bomax Enter., 228 USPQ 62, 63 (TTAB 1985) (“[i]t is incumbent on Registrant
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`to answer [each] paragraph[] [of the notice of opposition] by specifically admitting or denying
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`the allegations contained in each one”).
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`Here, Applicant’s “answer” is argumentative and more in the nature of a brief on the
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`merits than a responsive pleading and should be stricken. The “answer” does not comply with the
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`simple mandate of Federal Rule of Civil Procedure 8(b)(6) because it fails to admit or deny each
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`of the sixteen numbered paragraphs in Opposer’s Notice of Opposition, and instead proceeds to
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`argue the merits of the allegations, and the arguments do not make clear whether the allegation is
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`admitted or denied. Because Applicant’s response is wholly deficient, it should be stricken in its
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`entirety, and Applicant should be compelled to promptly file a proper answer that complies with
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`Fed. R. Civ. P. 8 and with 37 C.F.R. § 2.106(b)(2). If Applicant fails to file a responsive
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`pleading that complies with the rules, default judgment should be entered against Applicant.1
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`III. REQUEST FOR BOARD PARTICIPATION IN THE PARTIES’ DISCOVERY
`CONFERENCE
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`The deadline for the parties’ to participate in the required discovery conference is August
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`24, 2020. Opposer respectfully requests Board participation in the parties’ discovery conference
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`so that the Board may efficiently and effectively resolve the issues raised in this motion to strike
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`Applicant’s “answer.” See TBMP § 506.02.
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`For the reasons and authorities above, Opposer respectfully requests that Applicant’s non-
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`IV. CONCLUSION
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`compliant “answer” be stricken.
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`Date: August 12, 2020
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`Respectfully submitted,
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`By: ______/Rebecca Liebowitz/_______________
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` Attorneys for Opposer
` Rebecca Liebowitz
` Catherine Mitros
` Tanya Curcio
` Renato Perez
` VENABLE LLP
` P.O. Box 34385
` Washington, D.C. 20043-9998
` Telephone: 202-344-4976
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`1 In the alternative, the Board should deem all of the allegations in the Notice of Opposition that
`are not specifically denied in the Answer to be admitted by Applicant. Fed. R. Civ. P. 8(b)(6);
`TBMP § 311.02(a) (“An answer that fails to deny a portion of an allegation may be deemed
`admitted as to that portion.”).
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`CERTIFICATE OF SERVICE
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`I certify that a true and accurate copy of the foregoing OPPOSER’S MOTION TO
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`STRIKE APPLICANT’S ANSWER was served on August 12, 2020 by e-mail on Applicant at
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`the following e-mail address of record:
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`Jeanne M. Gregori
`contact@solvaysafe.com
`projectsolvay@gmail.com
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`_____/ Rebecca Liebowitz/___
`Rebecca Liebowitz
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