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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
`
`August 14, 2020
`
`Opposition No. 91256359
`
`Solvay SA
`
`v.
`
`Jeanne M. Gregori
`
`
`
`ELIZABETH J. WINTER, INTERLOCUTORY ATTORNEY:
`
`The answer to the notice of opposition was due July 25, 2020. The Board notes
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`that Applicant filed her answer on the due date, 4 TTABVUE 2-30, along with a
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`motion for judgment on the pleadings, 4 TTABVUE 31-32.1
`
`I.
`
`No Proof of Service on Opposer’s Counsel
`
`Applicant’s submissions do not indicate proof of service of a copy of same on
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`counsel for Opposer as required by Trademark Rule 2.119. Trademark Rules 2.119(a)
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`and (b) require that every paper filed in the Patent and Trademark Office in a
`
`proceeding before the Board must be served upon the attorney for the other party, or
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`on the party if there is no attorney, and proof of such service must be made before the
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`paper will be considered by the Board. Consequently, copies of all papers which
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`Applicant may file in this proceeding (including for Applicant, the amended answer
`
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`1 Applicant’s duplicate submissions will not be considered. 4 TTABVUE 33-63.
`
`
`
`
`
`Opposition No. 91256359
`
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`required herein) must be accompanied by “proof of service” of a copy on Opposer’s
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`counsel.
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`
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`“Proof of service” usually consists of a signed, dated statement attesting to the
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`following matters: (1) the title or nature of the paper being served, (2) the method of
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`service (i.e., electronic mail), (3) the person being served and the email address used
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`to effect service, and (4) the date of service. This written statement should take the
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`form of a “certificate of service” which should read as follows:
`
`The undersigned hereby certifies that a true and correct copy of the
`foregoing [insert title of document] was served upon Opposer’s counsel
`by forwarding said copy, via email to: [insert email address].
`
`The certificate of service must be signed2 and dated.
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`II.
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`Improper Answer Submitted
`
`Applicant’s answer includes over 30 paragraphs, which set forth various
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`arguments and purported defenses against Opposer’s claims. Applicant has also
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`attached purported “evidence” in support of her assertions.3 Applicant’s answer is not
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`acceptable because it does not comply with Fed. R. Civ. P. 8(b), which is made
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`applicable this proceeding by Trademark Rule 2.116(a); see also Trademark Rule
`
`
`2 An electronic signature comprises a forward slash, “/”, placed before and after the typed
`name of the person actually signing the document. See Trademark Rule 2.193; see also
`TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §§ 106.02 and
`106.03 (2020).
`
` 3
`
` Applicant is reminded that the documents and materials attached to her original answer
`are not considered evidence on behalf of Applicant, and must be identified and introduced in
`evidence as an exhibit during the period for the taking of testimony. See Trademark Rule
`2.122(c).
`
`
`
`
`2
`
`
`
`Opposition No. 91256359
`
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`2.106(b). In view thereof, Applicant’s answer filed on July 25, 2020, is hereby
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`STRICKEN. See Fed. R. Civ. P. 12(f); Trademark Rule 2.116(a).
`
`The notice of opposition filed by Opposer consists of sixteen (16) paragraphs
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`setting forth the basis of Opposer’s claims of damage. In accordance with Fed. R. Civ.
`
`P. 8(b)(1)(B),4 Applicant must answer the notice of opposition by specifically
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`admitting or denying the allegations contained in each paragraph. If
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`Applicant is without sufficient knowledge or information on which to form a belief as
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`to the truth of any one of the allegations, she should so state and this will have the
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`effect of a denial. Trademark Rule 2.106(b)(2). Regarding any defenses to Opposer’s
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`claims (which are separate from her answer), Applicant must separately state them
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`in short and plain terms.
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`In view of the foregoing, Applicant is allowed until THIRTY DAYS from the
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`date of this order in which to file an amended answer which complies with Fed. R.
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`Civ. P. 8(b) through ESTTA (pursuant to Trademark Rule 2.106(b)(1)5) and serve it
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`on Opposer’s counsel pursuant to Trademark Rule 2.119(b). Accordingly, Opposer’s
`
`
`4 Fed. R. Civ. P. 8(b) provides, in part:
`(b) Defenses; Admissions and Denials.
` (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 asserted against it; and
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`(B) admit or deny the allegations asserted against it by an opposing party.
` (5) Lacking Knowledge or Information. A party that lacks knowledge or information
`sufficient to form a belief about the truth of an allegation must so state, and the statement
`has the effect of a denial.
`
` 5
`
` Instructions and forms for filing through ESTTA are available at http://estta.uspto.gov. All
`Board proceeding files can be viewed via TTABVUE at http://ttabvue.uspto.gov.
`
`
`
`
`3
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`
`
`Opposition No. 91256359
`
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`motion to strike Applicant’s answer (filed August 12, 2020) is moot and will be given
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`no further consideration.
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`III. Motion for Judgment on the Pleadings
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`Because Applicant must file an amended answer in this proceeding, Applicant’s
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`motion for judgment on the pleadings is premature and therefore will be given no
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`further consideration.
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`Applicant is also advised that it is improper for her to embed a motion within
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`another submission, in this case, her answer. Should Applicant file another pretrial
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`motion in this proceeding, she must file it separately from any other document filed.
`
`See Melwani v. Allegiance Corp., 97 USPQ2d 1537, 1541 (TTAB 2010); Sinclair Oil
`
`Corp. v. Kendrick, 85 USPQ2d 1032, 1033 n.3 (TTAB 2007); see also TBMP
`
`§ 502.02(b).
`
`IV. Trial Dates Reset
`
`Trial dates, including the answer due date and discovery conference6 due date, are
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`reset as shown in the following schedule:
`
`Time to File Answer
`
`9/13/2020
`
`Deadline for Discovery Conference
`
`10/13/2020
`
`Discovery Opens
`
`Initial Disclosures Due
`
`Expert Disclosures Due
`
`10/13/2020
`
`11/12/2020
`
`3/12/2021
`
`
`6 The Board notes Opposer’s request for the Board’s participation in the parties’ discovery
`conference. 5 TTABVUE 5. Opposer’s counsel should contact the assigned Interlocutory
`Attorney two weeks prior to the conference in order to arrange with Applicant a specific
`conference date and time.
`
`
`
`4
`
`
`
`Opposition No. 91256359
`
`
`Discovery Closes
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`4/11/2021
`
`Plaintiff's Pretrial Disclosures Due
`
`5/26/2021
`
`Plaintiff's 30-day Trial Period Ends
`
`7/10/2021
`
`Defendant's Pretrial Disclosures Due
`
`7/25/2021
`
`Defendant's 30-day Trial Period Ends
`
`9/8/2021
`
`Plaintiff's Rebuttal Disclosures Due
`
`9/23/2021
`
`Plaintiff's 15-day Rebuttal Period Ends 10/23/2021
`
`Plaintiff's Opening Brief Due
`
`12/22/2021
`
`Defendant's Brief Due
`
`Plaintiff's Reply Brief Due
`
`1/21/2022
`
`2/5/2022
`
`Request for Oral Hearing (optional) Due 2/15/2022
`
`
`
`Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
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`taken and introduced out of the presence of the Board during the assigned testimony
`
`periods. The parties may stipulate to a wide variety of matters, and many
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`requirements relevant to the trial phase of Board proceedings are set forth in
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`Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
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`manner and timing of taking testimony, matters in evidence, and the procedures for
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`submitting and serving testimony and other evidence, including affidavits,
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`declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
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`submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
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`final hearing will be scheduled only upon the timely submission of a separate notice
`
`as allowed by Trademark Rule 2.129(a).
`
`
`
`5
`
`
`
`Opposition No. 91256359
`
`
`THE FOLLOWING INFORMATION ON BOARD PROCEEDINGS IS
`PROVIDED AS A COURTESY TO APPLICANT.
`
`Nature of an Opposition Proceeding
`
` An inter partes proceeding before the Board is similar to a civil action in a Federal
`
`district court. There are pleadings, a wide range of possible motions; discovery (a
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`party’s use of discovery depositions, interrogatories, requests for production of
`
`documents and things, and requests for admission to ascertain the facts underlying
`
`its adversary’s case), a trial, and briefs, followed by a decision on the case. The Board
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`does not preside at the taking of testimony. Rather, all testimony is taken out of the
`
`presence of the Board during the assigned testimony, or trial, periods, and the written
`
`transcripts thereof, together with any exhibits thereto, are then filed with the Board.
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`No paper, document, or exhibit will be considered as evidence in the case
`
`unless it has been introduced in evidence in accordance with the applicable
`
`rules.
`
`Legal Representation Is Strongly Encouraged
`
`
`
`It should also be noted that while Patent and Trademark Rule 10.14 permits any
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`person to represent itself, or him or herself, it is generally advisable for a person
`
`(including an entity) who is not acquainted with the technicalities of the procedural
`
`and substantive law involved in an opposition or cancellation proceeding to secure
`
`the services of an attorney who is familiar with such matters. The U.S. Patent and
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`Trademark Office cannot aid in the selection of an attorney.
`
`
`
`It is recommended that Applicant obtain a copy of the latest edition of Title 37 of
`
`the Code of Federal Regulations, which includes the Trademark Rules of Practice.
`
`
`
`6
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`
`
`Opposition No. 91256359
`
`
`These
`
`rules may
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`be
`
`viewed
`
`at
`
`the USPTO’s Trademarks
`
`page:
`
`https://www.uspto.gov/trademark/laws-regulations. The Board’s main webpage,
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`https://www.uspto.gov/trademarks-application-process/trademark-trial-and-appeal-
`
`board, includes information on the Trademark Rules applicable to Board proceedings,
`
`on the Board’s online systems, Alternative Dispute Resolution (ADR), Frequently
`
`Asked Questions about Board proceedings, and a web link to the TRADEMARK TRIAL
`
`AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”).7 Further, all Board
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`proceedings and other information regarding the Trademark Trial and Appeal Board
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`may be accessed at the following URLs: http://ttabvue.uspto.gov/ttabvue/ and
`
`http://www.uspto.gov/trademarks/process/appeal/index.jsp.
`
`Electronic Submissions to the Board
`
` All submissions in Board proceedings must be made via ESTTA, the Electronic
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`System for Trademark Trials and Appeals, and must be in compliance with
`
`Trademark Rules 2.126(a) and 2.126(b). See TBMP § 110.01. The ESTTA user
`
`manual, ESTTA
`
`forms, and
`
`instructions
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`for
`
`their use are
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`located at
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`http://estta.uspto.gov/.
`
`All Parties Must Comply with Board Deadlines
`
` While it is true that the law favors judgments on the merits wherever possible, it
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`is also true that the Patent and Trademark Office is justified in enforcing its
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`procedural deadlines. Hewlett-Packard v. Olympus, 18 USPQ2d 1710 (Fed. Cir.
`
`1991). Strict compliance with the Trademark Rules of Practice, and where
`
`
`the
`at
`accessed
`be
`7
`The
`TBMP
`may
`https://tbmp.uspto.gov/RDMS/TBMP/current#/current/tbmpd0e18.html.
`
`following
`
`URL:
`
`
`
`7
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`
`
`Opposition No. 91256359
`
`
`applicable the Federal Rules of Civil Procedure, is expected of all parties
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`before the Board, whether or not they are represented by counsel.
`
`Applicant’s Correspondence Address
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`Applicant is reminded that it is her responsibility to ensure that the Board8 has
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`her current correspondence address, including email address and telephone number.
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`See TBMP § 117.07 (If a party fails to notify the Board of a change of address, with
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`the result that the Board is unable to serve correspondence on the party, default
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`judgment may be entered against the party).
`
`General Information on Discovery Conferences
`
` Applicant is referred to the Board’s institution order in this proceeding and to the
`
`following URL:
`
`http://www.uspto.gov/trademarks/process/appeal/RULES08_01_07.pdf, see, e.g.,
`pp. 42245, 42246, 42248 and 42252.
`
`
`During the conference, the following topics must be discussed:
`
`
`(1) The nature of and basis for their respective claims and defenses;
`
`(2) The possibility of settling the case or at least narrowing the scope of claims
`or defenses, and;
`
`(3) Arrangements relating to disclosures, discovery and introduction of evidence
`at trial, should the parties not agree to settle the case.
`
`Either party may request the participation of the Board in the discovery conference.
`
`See Trademark Rule 2.120(a)(2), 37 C.F.R. § 2.120(a)(2).
`
`
`8 When an inter partes proceeding is not pending before the Board, the registrant must
`maintain a current address with the Trademark Office.
`
`
`
`
`8
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`
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`Opposition No. 91256359
`
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`Information on Initial Disclosures
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` Applicant is referred to TBMP § 401.02 and to the following web addresses to
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`obtain information regarding initial disclosures:
`
`http://www.uspto.gov/trademarks/process/appeal/RULES08_01_07.pdf and to
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`http://edocket.access.gpo.gov/2006/pdf/06-197.pdf or to
`
`http://www.uspto.gov/trademarks/process/appeal/RULES01_17_06.pdf. See Notice
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`of Final Rulemaking (“Miscellaneous Changes to Trademark Trial and Appeal
`
`Board Rules”) in the Federal Register, 72 Fed. Reg. 147 (August 1, 2007) and 71
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`Fed. Reg. 10, 2501 (January 17, 2006).
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`☼☼☼
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`9
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