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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`TTAB Assistance Center: 571-272-8500
`General Email: TTABInfo@uspto.gov
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`March 17, 2022
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`Opposition No. 91273726 (parent)
`Opposition No. 91273728
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`FOKANA, Inc.
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`v.
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`Bobby K. Jacob
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`Kevin G. Crennan, Interlocutory Attorney:
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`Consolidation
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` When proceedings involving common questions of law or fact are pending before
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`the Board, the Board may order consolidation upon its own initiative. Fed. R. Civ. P.
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`42(a); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 511
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`(2021). Consolidation is discretionary with the Board. See, e.g., Wis. Cheese Grp., LLC
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`v. Comercializadora de Lácteos y Derivados, S.A. de C.V., 118 USPQ2d 1262, 1264
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`(TTAB 2016). In determining whether to consolidate proceedings, the Board will
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`weigh the savings in time, effort, and expense that may be gained from consolidation
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`against any prejudice or inconvenience that may be caused thereby. See id.; World
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`Hockey Ass’n v. Tudor Metal Prods. Corp., 185 USPQ 246, 248 (TTAB 1975); TBMP
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`§ 511.
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`Opposition Nos. 91273726 (parent) and 91273728
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` A review of Opposition Nos. 91273726 and 91273728 reveals that consolidation is
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`appropriate here. Specifically, the grounds for opposition, the pleaded marks, and the
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`parties are identical, and the notices of opposition are virtually identical, despite the
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`variations in the opposed marks. Accordingly, Opposition Nos. 91273726 and
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`91273728 are hereby consolidated and may be presented on the same record and
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`briefs. See, e.g., Wis. Cheese Grp., 118 USPQ2d at 1264 (citing Helene Curtis Indus.
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`Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1619 n.1 (TTAB 1989)).
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` The Board file will be maintained in Opposition No. 91273726 designated as the
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`“parent.” From this point on, except as noted at the end of this order, the parties are
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`directed to file a copy of all motions and submissions in the parent case only, and
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`caption all consolidated proceeding numbers, listing and identifying the “parent” first
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`(as in the caption to this order).
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` Despite being consolidated, each proceeding retains its separate character and
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`requires entry of a separate judgment. The decision on the consolidated cases shall
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`take into account any differences in the issues raised by the respective pleadings; a
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`copy of the decision shall be placed in each proceeding file.
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`Motion to Join
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` The Federation of Kerala Associations in North America, Inc. seeks to join Bobby
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`K. Jacob as a party-defendant to this proceeding. 6 TTABVUE 2.1
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` When there has been an assignment of a mark that is the subject of an inter partes
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`proceeding before the Board, the assignee may be joined or substituted, as may be
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`1 References to TTABVUE are to Opposition No. 91273726, the parent case.
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`2
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`Opposition Nos. 91273726 (parent) and 91273728
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`appropriate, upon motion granted by the Board, or upon the Board’s own initiative,
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`provided that the assignment has been recorded with the USPTO or that proof of the
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`assignment has been submitted in the Board proceeding record . TBMP § 512.01.
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` Though Applicant submitted the “Trademark Assignment Cover Sheet” that was
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`purportedly filed with the Assignments Recordation Branch of the USPTO (6
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`TTABVUE 7), this does not constitute “proof of the assignment,” such as, might be
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`for example, the “Trademark Assignment Agreement” that Applicant allegedly
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`executed “giving the Federation all rights, title, and interest in the subject mark[s],”
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`which does not accompany the motion (id. at 2). Moreover, a review of the underlying
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`applications reveals that the assignments have not been recorded with the USPTO.
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`In view thereof, Applicant’s motion to join is denied without prejudice.
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`Motion to Suspend
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` Applicant’s motion to suspend proceedings pending final determination of Civil
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`Action No. 701449/2022 filed in the New York Supreme Court, Queens County is
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`granted as conceded. 6 TTABVUE;2 see Trademark Rules 2.127(a), 2.117(a).
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`Accordingly, proceedings are suspended pending final disposition of the civil
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`action.
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`Within twenty (20) days after the final determination of the civil action, the
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`parties shall so notify the Board so that this proceeding may be called up for
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`2 Applicant’s bar information, which was provided on February 15, 2022 , is noted, and the
`Board’s records have been updated accordingly. 8 TTABVUE.
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`3
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`Opposition Nos. 91273726 (parent) and 91273728
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`appropriate action.3 Such notification to the Board should include a copy of any final
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`order or final judgment which issued in the civil action.
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`During the suspension period, the parties must notify the Board of any address or
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`email address changes for the parties or their attorneys. In addition, the parties are
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`to promptly inform the Board of any other related cases, even if they become aware
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`of such cases during the suspension period. Upon resumption, if appropriate, the
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`Board may consolidate related Board cases.
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`Finally, inasmuch as proceedings have been consolidated before an answer was
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`filed in each, if proceedings resume and dates are reset, Applicant is advised that an
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`answer must be filed through ESTTA separately in each proceeding. See Trademark
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`Rule 2.106(b)(1); TBMP § 511 (“However, the Board may, in its discretion, order cases
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`consolidated prior to joinder of issue.”) (footnote omitted). Thereafter, as discussed,
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`the parties must file a copy of all motions and submissions in the parent case only,
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`and caption all consolidated proceeding numbers, listing and identifying the “parent”
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`first.
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`3 A proceeding is considered to have been finally determined when an order or ruling that
`ends litigation has been rendered, and no appeal has been filed, or all appeals filed have been
`decided and the time for any further review has expired. See TBMP § 510.02(b).
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`4
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