UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`
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`
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` Mailed: December 8, 2010
`
`Opposition No. 91196218
`
`The Black Dog Tavern Company,
`Inc.
`
`
`v.
`
`
`Black Dog Baits
`
`
`
`
`
`
`
`George C. Pologeorgis, Interlocutory Attorney:
`
`
`Pursuant to Fed. R. Civ. P. 26(f) and Trademark Rules
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`2.120(g)(1) and (2), the parties to this proceeding
`
`conducted a discovery conference with Board participation.1
`
`
`
`The parties agreed to hold the telephonic discovery
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`conference with Board participation at 2:00 p.m. Eastern
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`time on Monday, December 6, 2010. The conference was held as
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`scheduled among John L. Welch and Emily LaPointe, as counsel
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`for opposer, Kenneth C. Brooks, as counsel for applicant,
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`and George C. Pologeorgis, as a Board attorney responsible
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`for resolving interlocutory disputes in this case.
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`This order memorializes what transpired during the
`
`conference.
`
`
`1 A request for Board participation in the discovery conference
`was received via telephone from opposer on November 16, 2010.
`
`
`
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
`
`
`
`
` Mailed: December 8, 2010
`
`Opposition No. 91196218
`
`The Black Dog Tavern Company,
`Inc.
`
`
`v.
`
`
`Black Dog Baits
`
`
`
`
`
`
`
`George C. Pologeorgis, Interlocutory Attorney:
`
`
`Pursuant to Fed. R. Civ. P. 26(f) and Trademark Rules
`
`2.120(g)(1) and (2), the parties to this proceeding
`
`conducted a discovery conference with Board participation.1
`
`
`
`The parties agreed to hold the telephonic discovery
`
`conference with Board participation at 2:00 p.m. Eastern
`
`time on Monday, December 6, 2010. The conference was held as
`
`scheduled among John L. Welch and Emily LaPointe, as counsel
`
`for opposer, Kenneth C. Brooks, as counsel for applicant,
`
`and George C. Pologeorgis, as a Board attorney responsible
`
`for resolving interlocutory disputes in this case.
`
`This order memorializes what transpired during the
`
`conference.
`
`
`1 A request for Board participation in the discovery conference
`was received via telephone from opposer on November 16, 2010.
`
`
`
`
`
`Opposition No. 91196218
`
`
`During the discovery conference, the parties advised
`
`the Board that there was minimal discussion regarding
`
`settlement prior to the conference and settlement has not
`
`been reached. The parties further advised that there are no
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`related Board proceedings, federal district court actions,
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`or third-party litigation concerning the subject application
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`and/or the marks at issue.
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`The Board reviewed the pleadings herein and indicated
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`that opposer has alleged a claim of priority and likelihood
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`of confusion, as well as a dilution claim.2 Additionally,
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`the Board noted that applicant has asserted a counterclaim
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`seeking to cancel opposer’s pleaded Registration No. 2396059
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`on the grounds of abandonment and fraud. With regard to
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`opposer’s priority and likelihood of confusion claim, the
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`parties stipulated that priority is not an issue, except as
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`it concerns opposer’s pleaded Registration No. 2396059.
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`With regard to applicant’s counterclaim of fraud, the
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`Board noted applicant merely identified this ground for
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`cancellation on the ESTTA filing cover sheet of its
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`answer/counterclaim without providing sufficient allegations
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`in support of the claim within the body of applicant’s
`
`
`2 During the telephone conference, the Board noted that opposer’s
`dilution claim was not pleaded properly since it appeared that
`there was no affirmative allegation that opposer’s mark became
`famous prior to applicant’s first use of its mark. Upon further
`review of opposer’s pleading, however, the Board finds that
`opposer did in fact make such an affirmative allegation. See
`Paragraph 5 of Notice of Opposition. Accordingly, the Board finds
`that opposer has properly pleaded its dilution claim.
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`
`
`
`
`2
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`
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`Opposition No. 91196218
`
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`pleading. Accordingly, the Board found that applicant’s
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`fraud claim was deficiently pleaded.
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`Fraud in procuring or maintaining a trademark
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`registration occurs when an application for registration or
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`a registrant in a declaration of use or a renewal
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`application knowingly makes specific false, material
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`representations of fact in connection with an application to
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`register or in a post-registration filing with the intent of
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`obtaining or maintaining a registration to which it
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`otherwise is not entitled. See In re Bose Corp., 580 F.3d
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`1240, 91 USPQ2d 1938 (Fed. Cir. 2009).
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`Further, pleadings of fraud made “on information and
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`belief,” when there is no allegation of “specific facts upon
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`which the belief is reasonably based” are insufficient. In
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`re Bose Corp., 91 USPQ2d at 1938.
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`Additionally, under USPTO Rule 11.18, the factual basis
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`for a pleading requires either that the pleader know of
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`facts that support the pleading or that evidence showing the
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`factual basis is “likely” to be obtained after a reasonable
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`opportunity for discovery or investigation. Allegations
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`based solely on information and belief raise only the mere
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`possibility that such evidence may be uncovered and do not
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`constitute pleading of fraud with particularity. Thus, to
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`satisfy Rule 9(b), any allegations based on “information and
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`belief” must be accompanied by a statement of facts upon
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`which the belief is founded. See Exergen Corp. v. Wal-Mart
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`Stores, Inc., 575 F.3d 1312, 91 USPQ2d 1656, 1670 n. 7 (Fed.
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`
`
`3
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`
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`Opposition No. 91196218
`
`
`Cir. 2009), citing Kowal v. MCICommc’n Corp., 16 F.3d 1271,
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`1279 n. 3 (D.C. Cir. 1994) “(‘[P]leadings on information and
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`belief [under Rule 9(b)] require an allegation that the
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`necessary information lies within the defendant's control,
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`and … such allegations must also be accompanied by a
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`statement of the facts upon which the allegations are
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`based’).”
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`A pleading of fraud on the USPTO must also include an
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`allegation of intent. In re Bose, 91 USPQ2d at 1939-40.
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`Moreover, although Rule 9(b) allows that intent may be
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`alleged generally, the pleadings must allege sufficient
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`underlying facts from which a court may reasonably infer
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`that a party acted with the requisite state of mind. Exergen
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`Corp., 91 USPQ2d at 1667, n. 4. Pleadings of fraud which
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`rest solely on allegations that the trademark applicant or
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`registrant made material representations of fact in
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`connection with its application or registration which it
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`“knew or should have known” to be false or misleading are an
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`insufficient pleading of fraud because it implies mere
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`negligence and negligence is not sufficient to infer fraud
`
`or dishonesty. In re Bose, 91 USPQ2d at 1940, quoting
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`Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1582
`
`(Fed. Cir. 1991).
`
`Thus under Bose, intent is a specific element of a
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`fraud claim and an allegation that a declarant “should have
`
`known” a material statement was false does not make out a
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`
`
`4
`
`
`
`Opposition No. 91196218
`
`
`proper pleading. See also Media Online Inc. v. El
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`Casificado, Inc., 88 USPQ2d 1285, 1287 (TTAB 2008) (finding
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`proposed amended pleading insufficient in part because the
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`pleading lacked allegations of scienter); Crown Wallcovery
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`Corp. v. The Wall Paper Mfrs. Ltd., 188 USPQ 141, 144 (TTAB
`
`1975) and cases cited therein (“in order to state a claim
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`upon which relief can be granted on the ground of fraud, it
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`must be asserted that the false statements complained of
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`were made willfully in bad faith with the intent to obtain
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`that to which the party making the statements would not
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`otherwise have been entitled”).
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`In view of the foregoing and in light of the noted
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`deficiencies in applicant’s pleading regarding its apparent
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`fraud claim, applicant is allowed up to, and including,
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`January 5, 2011 in which to file and serve an amended
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`pleading which properly sets forth a claim of fraud, failing
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`which applicant’s counterclaim will proceed solely on the
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`asserted claim of abandonment. In the event applicant does
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`file an amended answer/counterclaim, opposer is allowed
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`thirty days from the date indicated on the certificate of
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`service of applicant’s amended pleading in which to file and
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`serve an answer to the amended counterclaim.
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`The Board also advised the parties of the Board’s
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`accelerated case resolution (“ACR”) process. While the
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`parties declined to stipulate to pursue ACR at this time,
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`
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`5
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`
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`Opposition No. 91196218
`
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`the parties have the right to pursue ACR at a future date,
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`if appropriate.3
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` The Board then advised the parties of the automatic
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`imposition of the Board’s standard protective order in this
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`case and further indicated that the parties would control
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`which tier of confidentiality applies. Additionally, the
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`Board stated that if the parties wished to modify the
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`Board’s standard protective order, they could do so by
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`filing a motion for Board approval.
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`Furthermore, the Board noted that the exchange of
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`discovery requests could not occur until the parties made
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`their initial disclosures as required by Fed. R. Civ. P.
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`26(f). Additionally, the Board advised the parties that if
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`either party plans to file a motion to compel discovery, the
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`moving party must first contact the Board by telephone so
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`that the Board can ascertain whether the moving party has
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`demonstrated a good faith effort in resolving the discovery
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`dispute before filing its motion. The Board also noted that
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`a motion for summary judgment may not be filed until initial
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`disclosures were made by the parties.
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`The Board also provided the parties instruction as to
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`what the required initial disclosures entail under Fed. R.
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`Civ. P. 26(a).
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`
`3 For more information regarding the Board’s ACR process, the
`parties are directed to the following website:
`http://www.uspto.gov/web/offices/com/sol/notices/acrognoticerule.
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`
`
`6
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`
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`Opposition No. 91196218
`
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`Moreover, the parties agreed to accept service of
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`papers by e-mail, and that opposer may be served at the
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`following email addresses: JWelch@Lalaw.com and
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`emilylapointe@theblackdog.com and; and that applicant may be
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`served at the following email address:
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`kcb@brookspatents.com. The parties, however, may serve
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`responses to documents requests via first-class mail or by
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`express overnight mail. Further, the Board noted that since
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`the parties have agreed to service by email, the parties may
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`no longer avail themselves of the additional 5 days for
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`service provided under Trademark Rule 2.119(c) that is
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`afforded to parties when service is made by first-class of
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`express mail.
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`Additionally, the Board recommended that the parties
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`file papers via the Board’s electronic filing system, ESTTA,
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`and that they should review the ESTTA filing guidelines
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`found on the Board’s website.
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`Trial dates are reset as follows:
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`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures
`30-day testimony period for
`plaintiff's testimony to close
`Defendant/Counterclaim Plaintiff's
`Pretrial Disclosures
`
`March 8, 2011
`July 6, 2011
`August 5, 2011
`September 19, 2011
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`November 3, 2011
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`November 18, 2011
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`30-day testimony period for defendant
`and plaintiff in the counterclaim to
`close
`Counterclaim Defendant's and
`Plaintiff's Rebuttal Disclosures Due
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`January 2, 2012
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`January 17, 2012
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`
`
`7
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`
`
`Opposition No. 91196218
`
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`30-day testimony period for defendant
`in the counterclaim and rebuttal
`testimony for plaintiff to close
`Counterclaim Plaintiff's Rebuttal
`Disclosures Due
`15-day rebuttal period for plaintiff
`in the counterclaim to close
`Brief for plaintiff due
`Brief for defendant and plaintiff in
`the counterclaim due
`
`Brief for defendant in the
`counterclaim and reply brief, if any,
`for plaintiff due
`Reply brief, if any, for plaintiff in
`the counterclaim due
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`
`March 2, 2012
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`March 17, 2012
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`April 16, 2012
`June 15, 2012
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`July 15, 2012
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`August 14, 2012
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`August 29, 2012
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`In each instance, a copy of the transcript of testimony
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`together with copies of documentary exhibits, must be served
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`on the adverse party within thirty days after completion of
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`taking of testimony. Trademark Rule 2.125.
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`Briefs shall be filed in accordance with Trademark
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`Rules 2.128(a) and (b). An oral hearing will be set only
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`upon request filed as provided by Trademark Rule 2.129.
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`
`
`8
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