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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
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`April 18, 2024
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`Cancellation No. 92084360
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`Latinas & Power, Inc.
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`v.
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`Zulmarie Padin
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`
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`Steven W. Ferrell Jr., Interlocutory Attorney
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`On April 18, 2024, the Board convened a telephone conference to address Latinas
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`& Power, Inc.’s (“Petitioner/Counterclaim Defendant”) motion, filed April 1, 2024,1 to
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`dismiss Zulmarie Padin’s (“Respondent/Counterclaim Plaintiff”) counterclaim
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`seeking to cancel Petitioner/Counterclaim Defendant’s pending application Serial No.
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`98319782. The
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`participants were Alexandra Summers,
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`counsel
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`for
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`Petitioner/Counterclaim
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`Defendant;
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`Yvonne Menedez,
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`counsel
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`for
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`1 6 TTABVUE. Citations to the Board record refer to TTABVUE, the Board’s online docketing
`system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). The number
`preceding TTABVUE corresponds to the docket entry number, and any number following
`TTABVUE refers to the page number of the docket entry where the cited materials appear.
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` The parties’ future submissions, including trial briefs, motions, responses, and replies,
`should use citations to the TTABVUE record created throughout the proceeding and during
`trial to facilitate the Board’s review of the evidence throughout the proceeding and at final
`hearing. See Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557, at *14-15 (TTAB
`2022); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 801.03
`(2023).
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`Cancellation No. 92084360
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`Respondent/Counterclaim Plaintiff; Zulmarie Padin, Respondent/Counterclaim
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`Plaintiff; and Interlocutory Attorney Steven Ferrell on behalf of the Board.
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`The Board has carefully considered all of the parties’ arguments, including those
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`made during the telephone conference, and for the reasons discussed during the
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`conference, the Board finds that Respondent/Counterclaim Plaintiff’s petition to
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`cancel Petitioner/Counterclaim Defendant’s application Serial No. 98319782 is
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`premature. Trademark Act Section 14, 15 U.S.C. § 1064, and Section 24, 15 U.S.C.
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`§ 1092, provide for the filing of a petition to cancel “a registration of a mark.” Until a
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`registration actually issues, there is no registration to cancel. Application Serial No.
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`98319782 has not yet been published for opposition, let alone registered.
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`Respondent/Counterclaim Plaintiff’s argument that the Board has jurisdiction
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`and authority to cancel Petitioner/Counterclaim Defendant’s pending application
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`because Petitioner/Counterclaim Defendant plead the pending application in its
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`petition for cancellation is not well taken. The statutory authority and implementing
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`rules are clear that only a registration of a mark may be cancelled. See TBMP § 307.04
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`and authorities cited therein.
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`Accordingly, inasmuch as the counterclaim is an impermissible attack on a
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`pending application, Petitioner/Counterclaim Defendant’s motion is granted and
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`Respondent/Counterclaim Plaintiff’s counterclaim for cancellation of application
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`Serial No. 98319782 is dismissed.2
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`2 Paragraphs 6 and 7 of the Answer to Petition for Cancellation and Counterclaim and the
`portion of the sentence that states “and that the registration pleaded by Petitioner, U.S.
`Trademark Application No. 98/319,782 for the mark LATINAS & POWER be denied” in the
`final paragraph that begins with “Wherefore” are stricken. See 4 TTABVUE 4.
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`2
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`
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`Cancellation No. 92084360
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`As discussed in the conference, Petitioner/Counterclaim Defendant requested that
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`the deadline to hold the discovery conference be reset to thirty days after the date of
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`this order. Respondent/Counterclaim Plaintiff consented to this request during the
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`conference. Though the request was made after the deadline to hold the discovery
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`conference, the Board construes this request as a motion to reopen the time to conduct
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`the discovery conference, which is granted. In the future, the parties must file such
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`requests to extend deadlines prior to the deadline in question.
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`Dates are reset as follows:
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`
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`Deadline for Discovery Conference
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`Discovery Opens
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`Initial Disclosures Due
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`Expert Disclosures Due
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`Discovery Closes
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`5/20/2024
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`5/20/2024
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`6/19/2024
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`10/17/2024
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`11/16/2024
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`Plaintiff’s Pretrial Disclosures Due
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`12/31/2024
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`Plaintiff’s 30-day Trial Period Ends
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`2/14/2025
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`Defendant’s Pretrial Disclosures Due
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`3/1/2025
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`Defendant’s 30-day Trial Period Ends
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`4/15/2025
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`Plaintiff’s Rebuttal Disclosures Due
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`4/30/2025
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`Plaintiff’s 15-day Rebuttal Period Ends
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`5/30/2025
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`Plaintiff’s Opening Brief Due
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`Defendant’s Brief Due
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`Plaintiff’s Reply Brief Due
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`7/29/2025
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`8/28/2025
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`9/12/2025
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`Request for Oral Hearing (optional) Due 9/22/2025
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`Respondent/Counterclaim Plaintiff’s remedy lies in the electronic filing of notice of opposition
`of Petitioner/Counterclaim Defendant’s application if it should publish for opposition or in a
`new petition to cancel after the registration has issued. See Trademark Act § 13, 15 U.S.C.
`§ 1063 (opposition); Trademark Act § 14, 15 U.S.C. § 1064 (cancellation). See also TBMP
`§§ 306, 307.
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`
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`3
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`
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`Cancellation No. 92084360
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`IMPORTANT TRIAL AND BRIEFING INSTRUCTIONS
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`Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
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`taken and introduced out of the presence of the Board during the assigned testimony
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`periods. The parties may stipulate to a wide variety of matters, and many
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`requirements relevant to the trial phase of Board proceedings are set forth in
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`Trademark Rules 2.121 through 2.125, 37 C.F.R. §§ 2.121-2.125. These include
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`pretrial disclosures, the manner and timing of taking testimony, matters in evidence,
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`and the procedures for submitting and serving testimony and other evidence,
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`including affidavits, declarations, deposition transcripts and stipulated evidence.
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`Trial briefs shall be submitted in accordance with Trademark Rules 2.128(a) and (b),
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`37 C.F.R. §§ 2.128(a) and (b). Such briefs should utilize citations to the TTABVUE
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`record created during trial, to facilitate the Board’s review of the evidence at final
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`hearing. See TBMP § 801.03. Oral argument at final hearing will be scheduled only
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`upon the timely submission of a separate notice as allowed by Trademark Rule
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`2.129(a), 37 C.F.R. § 2.129(a).
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`4
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