CME
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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
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`Mailed: July 19, 2014
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`Opposition No. 91210103
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`The Coca-Cola Company
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`v.
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`Alberto Soler d/b/a Coki Loco and
`Miriam Soler
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`Before Cataldo, Taylor and Greenbaum,
`Administrative Trademark Judges.
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`By the Board:
`This case now comes up on (i) Opposer’s motion to amend, filed February
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`6, 2014, (ii) Applicants’ Request for Reconsideration of the Board’s order of
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`February 3, 2014 (“Prior Order”), filed March 3, 2014 (“RFR I”), (iii) Opposer’s
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`combined motion for sanctions and default judgment, filed May 14, 2014, (iv)
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`Co-Applicant Miriam Soler’s relinquishment of rights, filed May 18, 2014,
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`and (v) Applicants’ amended request for reconsideration, filed May 21, 2014
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`(“RFR II”).1 Applicants oppose Opposer’s combined motion for sanctions and
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`default judgment. Applicants did not respond to Opposer’s motion to amend
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`nor did Opposer respond to Applicants’ requests for reconsideration.
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`1 Co-Applicants’ change of correspondence address, filed June 18, 2014, is noted and
`the Board’s records have been updated accordingly.
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`Opposition No. 91210103
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`Opposer’s Motion for Sanctions
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`By way of background, in the Prior Order the Board ruled on a number of
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`motions and imposed several procedural requirements, including that
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`Applicants refrain from filing any unconsented pre-trial motions without first
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`participating in a telephone conference with Opposer and the assigned
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`Interlocutory Attorney to discuss the basis for the proposed motion and
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`receive, if warranted, the Board’s approval to file the motion. See Prior Order,
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`pp. 10-11. The Board also reminded Applicants that “all certificates of
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`services must be signed by both applicants.” Id. at 12 (emphasis in
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`original). The Board warned that Applicants may be subject to sanctions,
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`including entry of judgment against them, for violation of the Prior Order.
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`See id. at p. 11.
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`Opposer seeks sanctions in the form of judgment in its favor on the ground
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`that Applicants violated the Prior Order because they (i) filed RFR I without
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`first participating in a telephone conference with the Board and Opposer and
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`obtaining
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`the Board’s approval
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`to
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`file RFR
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`I, see Motion
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`for
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`Sanctions/Default, p. 2-3, and (ii) failed to sign the certificate of service
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`attached to RFR I. See id. p. 3.
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`A request for reconsideration is a procedural tool by which a party may
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`obtain reconsideration or modification of a Board order or decision with which
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`the party is dissatisfied. As such, a request for reconsideration is
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`fundamentally different from a “motion,” which typically concerns the
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`Opposition No. 91210103
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`conduct of a party to the proceeding or the procedural posture of the case. In
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`issuing the Prior Order, it was not the intent of the Board to deny Applicants
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`the right to seek review of a Board order, but to more closely manage motions
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`practice related to the parties’ conduct in this case. Accordingly, we do not
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`construe the Prior Order as requiring that Applicants obtain the Board’s
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`prior authorization before filing a request for reconsideration.2 Moreover,
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`Applicants’ failure to sign the certificate of service attached to RFR I is not
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`sufficiently egregious to warrant sanctions in the form of entering judgment
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`against Applicants. For these reasons, Opposer’s motion for sanctions in the
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`form of judgment is DENIED.
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`Opposer’s Motion for Default Judgment
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`“However the issue [of default] is raised, the standard for determining
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`whether default judgment should be entered against the defendant for its
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`failure to file a timely answer to the complaint is the Fed. R. Civ. P. 55(c)
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`standard.” TBMP §§ 312.01 and 508 (2014). Under Fed. R. Civ. P. 55(c),
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`default may be set aside “for good cause.” As a general rule, good cause will
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`be found where the defendant’s delay is not the result of willful conduct or
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`gross neglect, where prejudice to the plaintiff is lacking, and where the
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`defendant has a meritorious defense. See Fred Hyman Beverly Hills, Inc. v.
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`Jacques Bernier, Inc., 21 USPQ2d 1556, 1557
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`(TTAB 1991). The
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`2 Applicants’ assertions on pages 2-3 of their response brief that the Board should
`enter sanctions against Opposer will be given no further consideration as the Board
`generally does not consider “motions” embedded in other filings.
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`Opposition No. 91210103
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`determination of whether default judgment should be entered against a party
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`lies within the sound discretion of the Board. In exercising that discretion,
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`the Board must be mindful of the fact that it is the policy of the law to decide
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`cases on their merits. See Paolo's Assocs. Ltd. P’ship v. Paolo Bodo, 21
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`USPQ2d 1899, 1902 (Comm'r 1990). Accordingly, the Board is reluctant to
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`enter a default judgment for failure to file a timely answer, and tends to
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`resolve any doubt on the matter in favor of the defendant. See id.
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`As last reset, Applicants’ deadline to file an answer in this proceeding was
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`February 28, 2014, see Prior Order, p. 13, and no answer has yet been filed.
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`As Opposer points out, the filing of Opposer’s motion to amend did not
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`automatically toll the time for Applicants to file an answer. Still, as of
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`Applicants’ answer deadline, Opposer’s motion to amend its pleading was
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`pending and Applicants apparently believed that “there [was] no effective
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`and
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`legal complaint … to answer.” Response, p. 3. Under these
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`circumstances, we find that it would be inequitable to enter default judgment
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`against Applicants for failure to timely file an answer to Opposer’s original
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`complaint, particularly as Opposer has not alleged, much less established,
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`that witnesses or evidence have become unavailable due to the passage of
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`time, or that it has suffered any other substantial prejudice. See Delorme
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`Publishing Co. v. Eartha’s Inc., 60 USPQ2d 1222, 1224-25 (TTAB 2000). The
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`Board acknowledges that Applicants have not yet set forth a meritorious
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`Opposition No. 91210103
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`defense to the notice of opposition, but we will allow them time to do so. For
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`these reasons, Opposer’s motion for default judgment is DENIED.3
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`Opposer’s Motion to Amend
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`Opposer’s motion to amend is GRANTED as conceded because Applicants
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`failed to respond thereto. See Trademark Rule 2.127(a); Central Mfg., Inc. v.
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`Third Millennium Tech., Inc., 61 USPQ2d 1210, 1211 (TTAB 2001); Boston
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`Chicken, Inc. v. Boston Pizza Int’l, Inc., 53 USPQ2d 1053, 1054 (TTAB 1999).
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`Accordingly, Opposer’s
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`[proposed]
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`amended notice
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`of
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`opposition
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`accompanying its motion to amend is accepted and made of record and is now
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`Opposer’s operative pleading herein.4
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`3 Notwithstanding this determination, Applicants should have been proactive rather
`than allow their answer deadline to lapse. If they were uncertain about what effect
`Opposer’s filing may have had on their answer deadline, they should have requested
`a telephone conference with Opposer and the assigned Interlocutory Attorney to
`discuss the deadlines in the proceeding or filed a motion to extend their answer
`deadline or a motion to suspend proceedings pending disposition of Opposer’s
`motion. See TBMP 502.04 (noting that a party should not presume that the Board
`will reset dates when it determines a pending motion); Cf. See Super Bakery Inc. v.
`Benedict, 96 USPQ2d 1134, 1136 (TTAB 2010) (mere filing of motion for summary
`judgment or other motion which is potentially dispositive of a case does not
`automatically suspend proceedings; only an order of the Board formally suspending
`proceedings has such effect), clarified, 665 F.3d 1263, 101 USPQ2d 1089, 1092 (Fed.
`Cir. 2011). Applicants are reminded that although they have made a business
`decision to represent themselves in this proceeding, they must strictly comply with
`all the applicable rules and procedures. See Board’s Order of November 14, 2013, pp.
`2-3 and 5. It is unlikely that the Board will be lenient if Applicants fail to comply
`with the applicable rules and procedures in the future.
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` 4
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` The Board will set a time for Applicants to answer Opposer’s amended notice of
`opposition if, or when, this proceeding is resumed.
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`Opposition No. 91210103
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`Requests for Reconsideration
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`We will not consider the merits of RFR I because Applicants did not sign
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`the certificate of service as required by Trademark Rule 2.119(a) and the
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`Prior Order. RFR II, filed May 21, 2014, also will be given no consideration
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`because it is untimely, having been filed more than one month after issuance
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`of the Prior Order. See Trademark Rule 2.127(b) (“Any request for
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`reconsideration or modification of an order or decision issued on a motion
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`must be filed within one month from the date of service thereof.”).
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`Notwithstanding the foregoing, RFR I includes a purported summary of a
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`telephone conversation between Co-Applicant Alberto Soler and Opposer’s
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`counsel, Ms. Parks, on August 26, 2013. The summary includes the following
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`statement attributed to Mr. Soler:
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`So, I say just this for you now: Mr. Rodriguez and Mr. Akcime
`(Mr. Wright, Vuelta and others and William Soler, my brother
`and Miriam Soler my mother) are associates of mines [sic] and
`members of an association I planned for my business venture. I
`am in charge- owner of the association and legal authority over
`the marks the members have under their names. The
`association owns the marks not the applicants based on the
`business and contract term executed.
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`RFR I, p. 7.
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`Involved application Serial No. 85672347 was filed by Alberto Soler, an
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`individual doing business as Coki Loco, and Miriam Soler, an individual,
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`based on Applicants’ allegation of a bona fide intention to use the mark in
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`commerce, pursuant to Trademark Act Section 1(b), 15 U.S.C. § 1051(b). An
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`Opposition No. 91210103
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`application filed pursuant to Section 1(b) of the Trademark Act, must include
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`a verified statement that:
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`the applicant has a bona fide intention to use the mark shown in
`the accompanying drawing in commerce on or in connection with
`the specified goods or services; that the applicant believes it is
`entitled to use the mark in commerce; that to the best of the
`declarant's knowledge and belief, no other person has the right
`to use the mark in commerce, either in the identical form or in
`such near resemblance as to be likely, when applied to the goods
`or services of the other person, to cause confusion or mistake, or
`to deceive; and that the facts set forth in the application are
`true.
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`Trademark Rule 2.33(b)(2); see also TMEP § 1201 (April 2014) (providing that
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`an application under Section 1(b) of the Trademark Act “must be filed by a
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`party who is entitled to use the mark in commerce, and must include a
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`verified statement that the applicant is entitled to use the mark in commerce
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`and that the applicant has a bona fide intention to use the mark in commerce
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`as of the application filing date.”). If it is a business entity “which has the
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`bona fide intention to use a particular mark, and yet the intent-to-use
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`application is filed in the name of an individual, then said application will be
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`deemed to be void ab initio.” American Forests v. Sanders, 54 USPQ2d 1860,
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`1862 (TTAB 1999) (recognizing that Section 1 of the Trademark Act must be
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`strictly complied with and holding an intent-to-use application filed by an
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`individual void where the entity that had a bona fide intention to use the
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`mark in commerce on the application filing date was a partnership composed
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`of the individual applicant and her husband), aff’d, 232 F.3d 907 (Fed. Cir.
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`2000); see also In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690 (TTAB
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`Opposition No. 91210103
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`1991) (finding application void where the mark was owned by a joint venture
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`but the application was filed in the name of only one member of the joint
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`venture).
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`Inasmuch as Mr. Soler has stated on the record that it is not Applicants
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`but a business association that owns the involved mark, Applicants are
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`allowed until THIRTY DAYS from the mailing date of this order to show
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`cause why judgment should not be entered against them on the ground that
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`the involved application is void ab initio.
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`In view of the foregoing, consideration of Co-Applicant Miriam Soler’s
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`motion to relinquish is deferred. Proceedings are otherwise SUSPENDED.
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`***
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