Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA609676
`ESTTA Tracking number:
`06/12/2014
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92047741
`Defendant
`Belmora LLC
`MARTIN B SCHWIMMER
`LEASON ELLIS LLP
`ONE BARKER AVE, FIFTH FLOOR
`WHITE PLAINS, NY 10601
`UNITED STATES
`schwimmer@leasonellis.com
`Other Motions/Papers
`Martin B. Schwimmer
`schwimmer@leasonellis.com, kennedy@leasonellis.com
`/Martin B. Schwimmer/
`06/12/2014
`Belmora Petition for Leave to Amend.pdf(2868430 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
`Attachments
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`(cid:3)
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`BAYER CONSUMER CARE AG,
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`Cancellation No. 92047741
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`Petitioner/Appellee,
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`v.
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`BELMORA LLC,
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`Registrant/Appellant.
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`PETITION FOR LEAVE TO AMEND
`REGISTRANT’S NOTICE OF APPEAL
`TO THE FEDERAL CIRCUIT UNDER
`15 U.S.C. § 1071 AND RULES 2.145 AND
`2.146(A)(5), AND REQUEST FOR AN
`EXTENSION OF TIME UNDER RULE
`2.145(E)
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`Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`
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`Registrant/Appellant Belmora LLC (“Belmora”) petitions the Director pursuant to Rules
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`2.145 and 2.146(a)(5) of the Rules of Practice in Trademark Cases and 15 U.S.C. § 1071(b)(1)
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`for leave to amend its notice of appeal so as to elect to pursue a review by way of civil action in
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`the United States District Court, rather than appeal to the Court of Appeals for the Federal
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`Circuit (“CAFC”). This request is being made within the sixty-day period of time for seeking
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`such review. 15 U.S.C. § 1071(b). New circumstances created by Petitioner/Appellee Bayer
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`Consumer Care AG (“Bayer”), as discussed below, have caused Belmora to change its chosen
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`route of appeal.
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`Under § 1071, Belmora, as a dissatisfied party, may not ultimately determine whether an
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`appeal is made to the CAFC or the district court, but if either party elects the district court, then
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`it will be a district court of Belmora’s choosing. In accordance with the statute, Belmora filed a
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`timely Notice of Appeal to the Commissioner, dated June 3, 2014, attached hereto as Exhibit A,
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`appealing the decision of the Trademark Trial and Appeal Board (“TTAB”) in Bayer Consumer
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`1
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`(cid:3)
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`Care AG v. Belmora LLC, Cancellation No. 92047741 (TTAB Apr. 17, 2014) (“the TTAB
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`Decision”). It was Belmora’s view that the CAFC was the appropriate forum to review the
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`TTAB Decision on the completed record. Pursuant to 15 U.S.C. § 1071, Bayer has twenty days
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`from Belmora’s Notice of Appeal to elect the district court as the forum of the appeal. This
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`twenty day period ends on June 23, 2014. If Bayer were to elect review by way of a civil action
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`in the district court, then it would be Belmora’s statutory right to bring the district court action in
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`the district of its choosing. See 15 U.S.C. § 1071(a)(1).
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`I.
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`Bayer Seeks to Subvert the Statutory Appellate Scheme in § 1071 by Pleading what
`Would Otherwise be Compulsory Counterclaims in a Separate Civil Action in an
`Inconvenient Forum.(cid:3)
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`It has come to Belmora’s attention that on June 9, 2014, subsequent to notice to Bayer of
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`Belmora’s election of the CAFC, Bayer filed a civil suit against Belmora in the Central District
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`of California.1 See Bayer Consumer Care AG et al. v. Belmora, LLC et al., No. 2:14-cv-04433-
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`PA-CW (C.D. Cal.) (attached hereto as Exhibit B). To the best of Belmora’s knowledge, Bayer
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`has, to date, neither served Belmora nor notified the Board of its election of a district court
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`pursuant to § 1071(a)(1). The Central District of California Action (“C.D. Cal. Action”) arises
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`from the same set of transactional facts as the substance of Bayer’s cancellation proceeding.
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`Thus, Bayer’s California causes of action would have been compulsory counterclaims had
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`Belmora elected to bring a district court appeal. See FED. R. CIV. P. 13(a) (“Compulsory
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`Counterclaim … A pleading must state as a counterclaim any claim that—at the time of its
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`(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)
`1 According to Pacer, Bayer first filed this civil suit in the Southern District of California on June
`6, 2014 (“S.D. Cal. Action”). See Bayer Consumer Care AG et al. v. Belmora, LLC et al., No.
`3:14-cv-01395-DMS-DHB (S.D. Cal.). The next business day, prior to service, Bayer filed a
`Notice of Voluntary Dismissal of the S.D. Cal. Action, stating that the “case was filed in the
`wrong district.” Id. at Dkt. 5. That same day, Bayer filed the currently pending C.D. Cal. Action.
`Belmora has not yet been served with the C.D. Cal. Action complaint. Belmora only learned of
`the C.D. Cal. Action through its research on Pacer late on June 10, 2014.
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`2
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`(cid:3)
`(cid:3)
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`(cid:3)
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`service—the pleader has against an opposing party if the claim: (a) arises out of the transaction
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`or occurrence that is the subject of the opposing party’s claim; and (b) does not require adding
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`another party over whom the court cannot acquire jurisdiction.”).2 The appeal of the TTAB
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`decision will require the reviewing tribunal to evaluate whether acts allegedly made by Belmora
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`misrepresent to relevant consumers that Bayer is the source of Belmora’s products. All of
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`Bayer’s causes of action in the C.D. Cal. Action arise from these acts. Therefore, prosecution of
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`both the CAFC and the C.D. Cal. Actions allows for inconsistent holdings with regards to the
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`legal ramifications of these acts. See Painter, 863 F.2d at 332 (“[T]he very purpose of making
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`certain types of counterclaims compulsory is to prevent the relitigation of the same set of facts.”)
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`(citation and internal quotations omitted).
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`Bayer’s choice to bring a new civil action, rather than follow the statutory scheme and
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`elect review by way of a civil action in district court, which Belmora would have to file, appears
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`to be a transparent attempt to deprive Belmora of its statutory choice of the district court that will
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`hear the appeal and related counterclaims.
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`Accordingly, as Belmora is still within the sixty days to appeal under 15 U.S.C. § 1071
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`(which period ends this coming Monday, June 16, 2014), Belmora moves the Commissioner for
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`leave to amend its Notice of Appeal to indicate that it wishes to elect, pursuant to 15 U.S.C. §
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`1071(b), that the appeal be taken to the district court of its choosing. Belmora notes that Bayer
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`(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)
`2 See also Painter v. Harvey, 863 F.2d 329, 331-32 (4th Cir. 1988) (The Fourth Circuit’s test for
`whether a counterclaim is compulsory requires consideration of four factors: “(1) Are the issues
`of fact and law raised in the claim and counterclaim largely the same? (2) Would res judicata bar
`a subsequent suit on the party’s counterclaim, absent the compulsory counterclaim rule? (3) Will
`substantially the same evidence support or refute the claim as well as the counterclaim? And (4)
`Is there any logical relationship between the claim and counterclaim? A court need not answer
`all these questions in the affirmative for the counterclaim to be compulsory. … [Where] the same
`evidence will support or refute both the claim and counterclaim, the counterclaim will almost
`always be compulsory.”).
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`3
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`(cid:3)
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`has not taken any action as of the date of this writing with regard to election other than to file the
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`C.D. Cal. Action. Thus, Bayer is not prejudiced by this amendment. Furthermore, because the
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`twenty-day period for Bayer to elect to have the appeal proceed in the district court has not yet
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`expired, the TTAB has taken no steps to forward the TTAB record to the CAFC. Likewise, the
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`CAFC has taken no steps to docket the appeal.
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`From the date Commissioner decides this motion, Belmora requests 10 days to file a civil
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`action seeking review of the TTAB decision under Rule 2.145(e) of the Rules of Practice in
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`Trademark Cases. To the extent the Commissioner declines to decide the request to amend,
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`Belmora requests that the time to file a district court action be suspended so that Belmora may
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`approach the CAFC to seek the relief requested.
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`DATED: June 12, 2014
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`Respectfully submitted,
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`By: ______________________
`Martin B. Schwimmer
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`LEASON ELLIS LLP
`One Barker Avenue, Fifth Floor
`White Plains, New York 10601
`Phone: (914) 288-0022
`Fax: (914) 288-0023
`Schwimmer@leasonellis.com
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`Attorneys for Registrant
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`4
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`CERTIFICATE OF SERVICE(cid:3)
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`It is hereby certified that on June 12, 2014, a copy of the foregoing PETITION FOR
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`LEAVE TO AMEND REGISTRANT’S NOTICE OF APPEAL TO THE FEDERAL
`CIRCUIT UNDER 15 U.S.C. § 1071 AND RULES 2.145 AND 2.146(A)(5), AND
`REQUEST FOR AN EXTENSION OF TIME UNDER RULE 2.145(E) was served upon the
`following counsel of record via email and first class mail, postage prepaid:
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`Phillip Barengolts
`PATTISHALL MCAULIFFE NEWBURY ET AL
`200 S. Wacker Drive, Suite 2900
`Chicago, IL 60606
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`It is further certified that on June 12, 2014, three copies of the foregoing PETITION
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`FOR LEAVE TO AMEND REGISTRANT’S NOTICE OF APPEAL TO THE FEDERAL
`CIRCUIT UNDER 15 U.S.C. § 1071 AND RULES 2.145 AND 2.146(A)(5), AND
`REQUEST FOR AN EXTENSION OF TIME UNDER RULE 2.145(E) and required filing
`fees were filed with the Clerk of the Court of the United States Court of Appeals for the Federal
`Circuit via Federal Express at the following address:
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`U.S. Court of Appeals Federal Circuit
`717 Madison Place NW
`Washington, DC 20439-0001
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`(cid:3)
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`Martin B. Schwimmer
`LEASON ELLIS LLP
`One Barker Avenue, Fifth Floor
`White Plains, New York 10601
`Phone: (914) 288-0022
`Fax: (914) 288-0023
`Schwimmer@leasonellis.com
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`Attorney for Registrant
`(cid:3)(cid:3)
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`5
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`EXHIBIT A
`EXHIBIT A
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`(cid:3)
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`(cid:3)
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`BAYER CONSUMER CARE AG,
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`Petitioner,
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`Cancellation No. 92047741
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`REGISTRANT’S NOTICE OF APPEAL
`TO THE FEDERAL CIRCUIT
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`v.
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`BELMORA LLC,
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`Registrant.
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`Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`
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`Notice is hereby given that Registrant Belmora LLC hereby appeals to the United States
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`Court of Appeals for the Federal Circuit from the opinion and order of the Trademark Trial and
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`Appeal Board of the United States Patent and Trademark Office, mailed on April 17, 2014 in
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`Cancellation No. 92047741. A copy of the opinion and order is attached.
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`DATED: June 3, 2014
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`Respectfully submitted,
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`By: ______________________
`Martin B. Schwimmer
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`LEASON ELLIS LLP
`One Barker Avenue, Fifth Floor
`White Plains, New York 10601
`Phone: (914) 288-0022
`Fax: (914) 288-0023
`Schwimmer@leasonellis.com
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`Attorneys for Registrant
`(cid:3)(cid:3)
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`{08039/609038-000/01168726.1}
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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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`

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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).
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`12 115, 117, and 122 TTABVUE; Appendix to Petitioner’s Brief, 125 TTABVUE; Appendix to
`Petitioner’s Reply Brief, 132 TTABVUE.
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`13 112 TTABVUE 87-124. Respondent also filed an amended notice of reliance, without
`exhibits, on December 10, 2012. See 116 TTABVUE.
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`14 Respondent’s notice of reliance, 116 TTABVUE 4-6.
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`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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`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
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`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,
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`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
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`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
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`exception embodied in FED. R. EVID. 807(a).
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`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
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`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
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`Petitioner objects to the testimony deposition of Benjamin L. England, offered
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`by respondent as an expert witness, because Mr. England was not timely disclosed
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`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
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`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
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`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
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`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
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`identify Mr. England as a potential witness until November 28, 2012,
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`17 119-21 TTABVUE.
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`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.
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`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
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`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.
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`rev. 2004)22 (“A party need not, in advance of trial, specify in detail the evidence it
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`intends to present, or identify the witnesses it intends to call, except that the names
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`of expert witnesses intended to be called are discoverable.”); TBMP § 414(7) & n.13
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`(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
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`that the names of expert witnesses intended to be called are discoverable.”). We
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`point out, however, that the entire Belcastro Declaration has been admitted into
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`evidence, obviating respondent’s rationale for the England testimony.
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`20 Id. at 4.
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`21 England Transcript at 33:22-34:25, 119 TTABVUE 36-37.
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`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
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`of the direct examination pursuant to FED. R. EVID. 611(b).
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`5. Exhibits G and H to Respondent’s Amended Notice of Reliance24
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`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
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`of record. Also, because the document in Exhibit H – displaying respondent’s
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`annotations to the operative pleading – is not admissible by notice of reliance, we
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`grant petitioner’s motion to strike it.
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`We hasten to add that consideration of any of the excluded evidence would
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`not have affected the outcome.
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`C.
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`Description of the Record
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`The file of the subject registration for FLANAX is automatically of record.
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`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.
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`1. Petitioner’s Evidence
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`Petitioner introduced testimony depositions, with exhibits, of the following
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`six individuals:
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`23 109 TTABVUE 9-24 (testimony) and 133-84 (exhibits) (redacted).
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`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
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`• Eduardo Gonzalez Machado, a former contractor for K. Fernandez &
`Associates who performed work for respondent;26
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`• Paul Currao, an account executive of packaging firm Disc Graphics,
`which produces cartons and labels for respondent;27
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`• Lisa Halprin Fleisher, former global brand director for petitioner’s
`naproxen sodium brands, including FLANAX and ALEVE;28
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`• Pascal Bürgin, head of law and compliance for petitioner, who was
`deposed on written questions;29 and
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`• Juan Jose Bandera, marketing director for Bayer de Mexico, S.A. de
`C.V.30
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`Petitioner submitted the following evidence by notice of reliance:
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`• Publications showing the FLANAX mark and packaging in Mexico;31
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`• Printouts from the website of the Department of Homeland Securit