Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1101416
`
`Filing date:
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`12/14/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`
`Petitioner Information
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Bayer Consumer Care AG
`
`Corporation
`
`Citizenship
`
`Switzerland
`
`PETER MERIAN-STR. 84
`BASEL, 4052
`SWITZERLAND
`
`JESSICA EKHOFF
`PATTISHALL MCAULIFFE NEWBURY HILLIARD & GERALDSON LLP
`200 SOUTH WACKER DRIVE
`CHICAGO, IL 60606
`UNITED STATES
`Primary Email: jae@pattishall.com
`Secondary Email(s): pb@pattishall.com, ntp@pattishall.com, dock-
`et@pattishall.com, jin@pattishall.com
`3125548000
`
`Docket Number
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`28000-20-374
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`Registrations Subject to Cancellation
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`Registration No.
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`5768512
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`Registration date
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`06/04/2019
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`Registrant
`
`Belmora LLC
`2231 CRYSTAL DRIVE #1000
`ARLINGTON, VA 22202
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 005. First Use: 2018/07/17 First Use In Commerce: 2018/07/17
`All goods and services in the class are subject to cancellation, namely: Orally ingestible tablets of
`Naproxen Sodium for use as an analgesic
`
`Grounds for Cancellation
`
`The registration is being used by, or with the per-
`mission of, the registrant so as to misrepresent
`the source of the goods or services on or in con-
`nection with which the mark is used
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`Trademark Act Section 14(3)
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`Registration No.
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`6074745
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`Registration date
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`06/09/2020
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`Registrant
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`Belmora LLC
`SUITE 400
`2011 CRYSTAL DRIVE
`ARLINGTON, VA 22202
`
`

`

`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 005. First Use: 2006/12/31 First Use In Commerce: 2006/12/31
`All goods and services in the class are subject to cancellation, namely: Antacids; Cough lozenges;
`Liniments
`
`Grounds for Cancellation
`
`The registration is being used by, or with the per-
`mission of, the registrant so as to misrepresent
`the source of the goods or services on or in con-
`nection with which the mark is used
`
`Trademark Act Section 14(3)
`
`Registration No.
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`6074750
`
`Registration date
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`06/09/2020
`
`Registrant
`
`Belmora LLC
`SUITE 400
`2011 CRYSTAL DRIVE
`ARLINGTON, VA 22202
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 005. First Use: 2008/12/31 First Use In Commerce: 2008/12/31
`All goods and services in the class are subject to cancellation, namely: Antacids; Cough lozenges;
`Liniments; Preparation for the relief of pain
`
`Grounds for Cancellation
`
`The registration is being used by, or with the per-
`mission of, the registrant so as to misrepresent
`the source of the goods or services on or in con-
`nection with which the mark is used
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`Trademark Act Section 14(3)
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`Related Proceed-
`ings
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`TTAB Proceeding No. 92047741 (Petition for cancellation of Belmora's Reg.
`No.2924440 for FLANAX); Federal Case No. 1:14-cv-00847-GBL-JFA (E.D.
`VA)(District Court appeal of TTAB decision cancelling Belmora's registration of
`theFLANAX mark; Lanham Act and California state unfair competition claims re-
`garding Belmora's use of its FLANAX mark; District Court decision was over-
`turned by Fourth Circuit, and Belmora requested an extension of time to file
`awrit of certiorari with the United States Supreme Court); TTAB Proceeding No.
`91221010 (Opposition against Belmora's Serial Nos. 86301431 and
`86301270for FLANAX BELMORA LLC and Design, and FLANAX, respectively)
`
`Attachments
`
`Petition to Cancel FLANAX Reg. Nos. 5768512, 6074745, 6074750.pdf(445532
`bytes )
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`Signature
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`Name
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`Date
`
`/Novaira T. Paul/
`
`Novaira T. Paul
`
`12/14/2020
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Reg. Nos. 5,768,512; 6,074,745; and 6,074,750:
`
`(BELMORA LLC
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`FLANAX MENSTRUAL PAIN RELIEVER, FLANAX, and
`FLANAX and Design)
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`BAYER CONSUMER CARE AG,
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`Petitioner,
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`v.
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`BELMORA LLC,
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`Registrant.
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`Cancellation No. ____________
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`
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`PETITION TO CANCEL
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`Bayer Consumer Care AG, a Swiss company having its principal place of business at
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`Peter Merian-Str. 84, Basel, Switzerland 4052, believes it is and will continue to be damaged by
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`Registrant Belmora LLC’s registration of the marks shown in Registration Nos. 5,768,512;
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`6,074,745; and 6,074,750 (collectively herein, the “Registrations” or "Registered Marks") and
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`hereby files this petition to cancel the same pursuant to 37 C.F.R. § 2.111(b).
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`The grounds for cancellation are as follows:
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`1.
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`Belmora LLC obtained the following U.S. trademark registrations:
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`• No. 5,768,512 for FLANAX MENSTRUAL PAIN RELIEVER for “Orally
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`ingestible tablets of Naproxen Sodium for use as an analgesic” in Class 5 on June
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`4, 2019;
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`• No. 6,074,745 for FLANAX for "Antacids; cough lozenges; liniments" in Class 5
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`on June 9, 2020; and
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`1595062v2
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`

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`• No. 6,074,750 for BELMORA LLC FLANAX and Design,
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` , for
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`"Antacids; cough lozenges; liniments; preparation for the relief of pain" in Class 5
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`on June 9, 2020.
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`2.
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`Since long prior to the filing dates of the applications that matured into the
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`Registrations, Petitioner and its predecessors and licensees (collectively, “Bayer Consumer
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`Care”) have marketed and sold pain relief medicines in Mexico under the trademark FLANAX.
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`3.
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`Bayer Consumer Care has sold hundreds of millions of dollars of its FLANAX
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`medicines in Mexico. This includes sales to Mexican-Americans traveling in Mexico.
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`4.
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`Bayer Consumer Care has spent millions of dollars promoting and advertising the
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`FLANAX brand in Mexico, including in major cities near the U.S.-Mexico border.
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`5.
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`As a result of Bayer Consumer Care’s extensive sales and marketing, the
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`FLANAX brand is extremely well known in Mexico and to Mexican-American consumers in the
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`United States.
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`6.
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`The use by Registrant of the Registered Marks for the aforesaid goods in Class 5
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`is likely to result in confusion with Bayer Consumer Care's FLANAX trademark, or in the belief
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`that products bearing the Registered Marks are in some way legitimately connected with,
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`licensed, or approved by Bayer Consumer Care.
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`7.
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`On information and belief, neither Registrant nor any predecessor or related
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`company of Registrant has any claim of right in the mark FLANAX prior to October 6, 2003.
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`-2-
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`

`

`
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`8.
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`In 2003, Registrant applied to the United States Patent and Trademark Office to
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`register the trademark FLANAX on an intent-to-use basis for “Orally ingestible tablets of
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`Naproxen Sodium for use as an analgesic” (Application Serial No. 78/310,029). The trademark
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`was registered in February 2005 and claimed a date of first use in United States commerce of
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`March 1, 2004 (Registration No. 2,924,440). As discussed below, Bayer Consumer Care has
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`petitioned to cancel this registration.
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`9.
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`On June 5, 2014, Registrant filed applications to register FLANAX (Application
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`Serial No. 86/301,270) and FLANAX BELMORA LLC and Design,
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` (Application
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`Serial No. 86/301,431) for “Antacids; Cough lozenges; Liniments” and “Antacids; Cough
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`lozenges; Liniments; Preparation for the relief of pain,” respectively. Bayer Consumer Care filed
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`a consolidated notice of opposition against these applications on March 11, 2015 (Opposition
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`No. 91,221,010). On April 8, 2019, the Board sustained this opposition.
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`10.
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`On March 31, 2016, Registrant filed an application to register FLANAX
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`(Application Serial No. 86/959,320) for "Antacids; Cough lozenges; Oral analgesics;
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`Pharmaceutical preparations, namely, an analgesic for human consumption taken orally; Topical
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`analgesic creams; Topical analgesics." Bayer Consumer Care filed a notice of opposition against
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`this application on August 30, 2016 (Opposition No. 91,229,792). The opposition is currently
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`suspended pending the outcome of the civil litigation described below.
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`11.
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`Registrant adopted the FLANAX mark to deliberately trade on Bayer Consumer
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`Care’s goodwill in the FLANAX mark in the United States.
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`
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`-3-
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`

`

`
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`12.
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`Registrant initially copied Bayer Consumer Care’s packaging for its FLANAX
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`analgesic, including a nearly identical blue color for the packaging of Bayer Consumer Care’s
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`FLANAX product and the use of an identical font – the “FLA” portion of the mark bolder than
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`the “NAX” portion – for the FLANAX mark displayed on the packaging, as shown below:
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`13.
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`Registrant has since changed the packaging for its FLANAX analgesics, although
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`
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`
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`its modified packaging incorporates many of the same visual themes as the packaging shown
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`above, and Registrant continues to use the FLANAX trademark for analgesics.
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`14.
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`Registrant has marketed its FLANAX analgesics by targeting Hispanic consumers
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`likely to be familiar with Bayer Consumer Care’s FLANAX analgesics and deliberately
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`attempting to deceive those consumers into believing that Registrant's FLANAX analgesics are
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`the same thing as the FLANAX medicines consumers know and trust from Mexico.
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`15.
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`Registrant has since expanded its line of FLANAX products to include liniment,
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`cough lozenges, and antacids, all sold under the FLANAX trademark, which includes products
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`bearing the Registered Marks. Registrant has similarly marketed these products in a deliberate
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`attempt to deceive consumers into believing that these FLANAX products come from the same
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`source as the Mexican FLANAX medicines.
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`
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`-4-
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`

`

`
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`16.
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`In June 2007, Bayer Consumer Care petitioned the Trademark Trial and Appeal
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`Board (“TTAB”) to cancel Registrant's Registration No. 2,924,440 for the trademark FLANAX
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`on the ground that Registrant misrepresented the source of its products as coming from Bayer, in
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`violation of 15 U.S.C. § 1604(3). Cancellation No. 92047741.
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`17.
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`On April 17, 2014, the TTAB issued a ruling cancelling Registrant's FLANAX
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`trademark registration pursuant to 15 U.S.C. § 1064(3). The TTAB’s Decision (“Decision”) is
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`attached hereto as Exhibit A. Finding that the facts before them “do not present a close case,” the
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`TTAB concluded that, “[t]he preponderance of the evidence before us readily establishes blatant
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`misuse of the FLANAX mark in a manner calculated to trade in the United States on the
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`reputation and goodwill of [Bayer Consumer Care’s] mark created by its use in Mexico.”
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`Decision, p. 21.
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`18.
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`Registrant appealed the TTAB’s ruling to the United States District Court for the
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`Eastern District of Virginia. Case No. 1:14-cv-00847-GBL-JFA. The District Court affirmed the
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`TTAB's ruling. Id., Docs. 280-281. That decision is currently on appeal in the Fourth Circuit.
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`19.
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`Registrant uses the Registered Marks to misrepresent to consumers, including
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`consumers familiar with Bayer Consumer Care’s FLANAX mark, that Registrant's products are
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`affiliated with, or come from the same source as, Bayer Consumer Care’s FLANAX medicine.
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`20.
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`Registrant's use and registration of the Registered Marks violates Section 14(3) of
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`the Lanham Act, 15 U.S.C. § 1064(3), because Registrant is using the Registered Marks to
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`misrepresent the source of the goods it sells in connection with those marks as coming from the
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`same source as the Mexican FLANAX products, i.e., Bayer Consumer Care.
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`
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`-5-
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`

`

`
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`21.
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`Registrant's use and registration of the Registered Marks damages Bayer
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`Consumer Care in that Registrant's actions are likely to cause confusion, mistake, or deception
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`among an appreciable number of consumers as to an affiliation or connection between Bayer
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`Consumer Care or its FLANAX medicine and Registrant or its products sold under the
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`Registered Marks.
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`22.
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`Registrant's use and registration of the Registered Marks is without Bayer
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`Consumer Care’s consent or permission.
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`
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`-6-
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`

`

`
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`WHEREFORE, registrations by Registrant of FLANAX MENSTRUAL PAIN
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`RELIEVER, FLANAX, and BELMORA LLC FLANAX and Design for the aforesaid goods in
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`class 5 are damaging to Petitioner and Petitioner prays for cancellation of Registration Nos.
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`5,768,512; 6,074,745; and 6,074,750.
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`Petitioner submits the requisite filing fee of $1200.00. Please debit any deficiency from
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`or credit any overpayment to Account No. 16-0650, and address all correspondence to Phillip
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`Barengolts, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 200 South Wacker
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`Drive, Suite 2900, Chicago, Illinois 60606.
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`Dated: December 14, 2020
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`Respectfully submitted,
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`PATTISHALL, MCAULIFFE, NEWBURY,
` HILLIARD & GERALDSON LLP
`
`By:
`
`
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`
`
`
`/Jessica A. Ekhoff/
`Bradley L. Cohn
`Phillip Barengolts
`Jessica A. Ekhoff
`200 South Wacker Drive
`Suite 2900
`Chicago, Illinois 60606
`(312) 554-8000
`
`Attorneys for Bayer Consumer Care AG
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`-7-
`
`

`

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`
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`CERTIFICATE OF ELECTRONIC TRANSMISSION
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`I hereby certify that a copy of the foregoing PETITION TO CANCEL was
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`electronically submitted via ESTTA in accordance with TBMP § 310.01.
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`/Novaira T. Paul /
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`-8-
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`

`

`EXHIBIT A
`EXHIBIT A
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`

`

`THIS OPINION IS A
`PRECEDENT OF THE TTAB
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`
`
`
`
`Hearing:
`October 23, 2013
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`Mailed:
`April 17, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`Bayer Consumer Care AG
`v.
`Belmora LLC
`_____
`
`Cancellation No. 92047741
`_____
`
`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.
`
`Marsha G. Gentner, Philip L. O’Neill, and Leesa N. Weiss, Jacobson Holman PLLC,
`for Belmora LLC.
`_____
`
`Before Seeherman, Taylor, and Hightower, Administrative Trademark Judges.
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`Opinion by Hightower, Administrative Trademark Judge:
`
`
`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
`
`
`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.
`
`

`

`Cancellation No. 92047741
`
`
`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
`
`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).
`
`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.
`
`
`
`2
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`

`

`Cancellation No. 92047741
`
`
`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
`
`
`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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`
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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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`
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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.
`
`
`10 90 and 97 TTABVUE; Corrected Appendix 1 to Respondent’s Brief, Exhibits A and B, 128
`TTABVUE 7-21.
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`11 80 TTABVUE 216-37 and 238-46.
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`
`
`6
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`

`

`Cancellation No. 92047741
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`B.
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`Petitioner’s Objections and Motion to Strike Respondent’s Evidence12
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`1. Counter-Designations from Belcastro Deposition (Exhibit C to
`Respondent’s Amended Notice of Reliance)13
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`Petitioner objects to respondent’s proffered counter-designated excerpts from
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`the discovery deposition of respondent’s owner, Jamie Belcastro, on the ground that
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`respondent has failed to sufficiently explain why it needs to rely on each additional
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`excerpt. Respondent does not address its 26 non-consecutive pages of counter-
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`designations individually, but states that they “are offered pursuant to Fed. R. Civ.
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`P. 32(a)(6), which allows an adverse party to offer other parts of a deposition that in
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`fairness should be considered with the parts already introduced,” to provide context
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`to the “snippets” of testimony designated by petitioner.14
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`Petitioner’s objection is governed by Trademark Rule 2.120(j)(4):15
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`If only part of a discovery deposition is submitted and
`made part of the record by a party, an adverse party may
`introduce under a notice of reliance any other part of the
`deposition which should in fairness be considered so as to
`make not misleading what was offered by the submitting
`party. A notice of reliance filed by an adverse party must
`be supported by a written statement explaining why the
`adverse party needs to rely upon each additional part
`listed in the adverse party’s notice, failing which the
`Board, in its discretion, may refuse to consider the
`additional parts. (emphasis added).
`
`
`12 115, 117, and 122 TTABVUE; Appendix to Petitioner’s Brief, 125 TTABVUE; Appendix to
`Petitioner’s Reply Brief, 132 TTABVUE.
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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).
`
`
`
`7
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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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`
`
`8
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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.
`
`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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`9
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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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`
`
`10
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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