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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
`
`February 21, 2023
`
`Opposition No. 91282443 (Parent)
`Cancellation No. 92078159
`
`Societe Francaise D’Assainissement-SFA and
`SFA Saniflo, Inc.
`
`v.
`
`Sa Wang
`
`
`
`ELIZABETH J. WINTER, INTERLOCUTORY ATTORNEY:
`
`I. Proceedings Consolidated
`
`On January 9, 2023, Opposer filed a motion to consolidate Opposition No.
`
`91282443 and Cancellation No. 92078159. 4 TTABVUE.1 On January 6, 2023,
`
`Opposer filed the same motion to consolidate in Cancellation 92078159. 23
`
`TTABVUE. Applicant/Respondent has not opposed the motion to consolidate.
`
`
`1 Citations to the record or briefs in this order include citations to the publicly available
`documents on the Trademark Trial and Appeal Board Inquiry System (TTABVUE), the
`Board’s electronic docketing system. See, e.g., New Era Cap Co., Inc. v. Pro Era, LLC, 2020
`USPQ2d 10596, at *2 n.1 (TTAB 2020) (citing Turdin v. Trilobite, Ltd., 109 USPQ2d 1473,
`1476 n.6 (TTAB 2014)). To allow the Board and readers to easily locate materials in the
`record, the parties should cite to facts or evidence in the proceeding record by referencing the
`TTABVUE entry and downloadable PDF page number, e.g., “1 TTABVUE 2,” and not attach
`previously-filed evidence to their briefs. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL
`OF PROCEDURE (TBMP) §§ 106.03, 801.01 and 801.03 (2022). For material or testimony that
`has been designated confidential and which does not appear on TTABVUE, the TTABVUE
`docket entry number where such material or testimony is located should be inclu ded in any
`citation.
`
`
`
`
`
`Opposition No. 91282443
`Cancellation No. 92078159
`
`
`
`When cases involving common questions of law or fact are pending before the
`
`Board, the Board may order consolidation of the cases. See Fed. R. Civ. P. 42(a);
`
`Regatta Sport Ltd. v. Telux-Pioneer Inc., 20 USPQ2d 1154 (TTAB 1991); Estate of
`
`Biro v. Bic Corp., 18 USPQ2d 1382 (TTAB 1991). In determining whether to
`
`consolidate proceedings, the Board will weigh the savings in time, effort, and expense
`
`which may be gained from consolidation, against any prejudice or inconvenience
`
`which may be caused thereby.
`
`Consolidation is discretionary with the Board, and may be ordered upon motion
`
`granted by the Board, or upon stipulation of the parties approved by the Board, or
`
`upon the Board’s own initiative. See Wise F&I, LLC v. Allstate Ins. Co., 120 USPQ2d
`
`1103, 1105 (TTAB 2016) (consolidation is discretionary with the Board and may be
`
`ordered sua sponte); M.C.I. Foods Inc. v. Bunte, 86 USPQ2d 1044, 1046 (TTAB 2008)
`
`(proceeding involved identical parties, identical registrations and related issues);
`
`S. Indus. Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1297 (TTAB 1997) (both
`
`proceedings involved the same mark and virtually identical pleadings); see also 9A
`
`Wright & Miller, Fed. Prac. & Proc. Civ. § 2383 (3d ed. April 2022 update).
`
`The parties to these proceedings are identical, and the issues are similar or
`
`related. Accordingly, the motion to consolidate is GRANTED. See M.C.I. Foods, Inc.
`
`v. Bunte, 86 USPQ2d at 1046 (consolidation of opposition and cancellation in view of
`
`“identical parties, an identical registration and related issues,” even though claims
`
`differed in each proceeding). Opposition No. 91282443 and Cancellation No. 92078159
`
`are hereby consolidated and, after an Answer is filed in the opposition, may be
`
`
`
`2
`
`
`
`Opposition No. 91282443
`Cancellation No. 92078159
`
`
`presented on the same record and briefs. See, e.g., Hilson Research Inc. v. Soc. for
`
`Human Res. Mgmt., 27 USPQ2d 1423 (TTAB 1993); Helene Curtis Indus. Inc. v.
`
`Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989).
`
`The Board file for these now consolidated proceedings will be maintained in
`
`Opposition No. 91282443 as the “parent case.” From this point on, except for the
`
`Answer that must be filed in the opposition, only a single copy of all motions
`
`and submissions should be filed, and each submission should be filed in the parent
`
`case only, but caption all consolidated proceeding numbers, listing and identifying
`
`the parent case first. Inasmuch as these proceedings are being consolidated prior to
`
`joinder of the issues in the opposition, Applicant/Respondent must file an
`
`answer in the opposition before commencing the practice of filing a single
`
`copy of all submissions in the parent case. The answer must be filed through
`
`ESTTA, the Board’s Electronic System for Trademark Trials and Appeals. See
`
`Trademark Rule 2.106(b)(1).
`
`Despite being consolidated, each proceeding retains its separate character and
`
`requires entry of a separate judgment. The decision on the consolidated cases shall
`
`take into account any differences in the issues raised by the respective pleadings; a
`
`copy of the decision shall be placed in each proceeding file. 2
`
`
`2 The parties should promptly inform the Board of any other Board proceedings or related
`cases within the meaning of Fed. R. Civ. P. 42, so that the Board can consider whether further
`consolidation is appropriate.
`
`
`
`3
`
`
`
`Opposition No. 91282443
`Cancellation No. 92078159
`
`
`II. Motion to Amend Petition for Cancellation
`
` Petitioner’s motion (filed January 6, 2023) for leave to file an amended petition
`
`for cancellation, 22 and 24 TTABVUE, is GRANTED as conceded. See Trademark
`
`Rule 2.127(a). Accordingly, Petitioner’s Second Amended Petition for Cancellation, 24
`
`TTABVUE 13, is ACCEPTED as Petitioner’s operative pleading for the cancellation
`
`in this consolidated proceeding. See Fed. R. Civ. P. 15(a)(2). Respondent is allowed
`
`until MARCH 22, 2023, to submit to the Board and serve on Petitioner’s counsel an
`
`Answer to the Second Amended Petition for Cancellation.
`
`III. Notice of Default in Opposition-Proceedings Suspended
`
`As set in the Board’s institution order mailed on December 21, 2022, an answer to
`
`the Notice of Opposition, 1 TTABVUE, was due in the opposition on January 30, 2023.
`
`2 TTABVUE 3. Inasmuch as no answer has been filed, Notice of Default is hereby
`
`entered against Applicant pursuant to Fed. R. Civ. P. 55(a).
`
`Accordingly, proceedings are SUSPENDED. Applicant is allowed until
`
`MARCH 22, 2023, to show cause why judgment by default should not be entered
`
`against him in accordance with Fed. R. Civ. P. 55(b)(2). Should Applicant respond to
`
`this order, Applicant is ORDERED to submit both (1) a response to the show cause
`
`order and (2) an answer to Opposer’s Notice of Opposition. Additionally, Applicant is
`
`reminded that he must include proof of service on Opposer’s counsel of any
`
`submission to the Board and Applicant must actually serve by email on Opposer’s
`
`counsel a copy of any submission to the Board.
`
`
`
`4
`
`
`
`Opposition No. 91282443
`Cancellation No. 92078159
`
`
`IV. U.S. Counsel Required for Opposition-Proceedings Suspended
`
`Effective August 3, 2019, the USPTO amended its rules of procedure to require
`
`Applicants, Registrants or parties to a proceeding, whose domicile is not located
`
`within the U.S. or its territories, to be represented by an attorney who is an active
`
`member in good standing of the bar of the highest court of a state in the U.S.,
`
`including the District of Columbia or any Commonwealth or territory.
`
`The record of the involved application shows that Applicant, Sa Wang, is domiciled
`
`outside of the United States, i.e., in Hangzhou, Zhejiang, China. Additionally,
`
`although Applicant’s correspondence addressee, Wei Yang, is identified as a U.S.
`
`attorney in the application, an answer has not been filed in the opposition, Mr. Yang
`
`has not otherwise entered an appearance in the opposition, and Mr. Yang’s listed
`
`California address is different from the address shown for Ruoting Men and Glacier
`
`Law LLP, who represent Respondent, Sa Wang, in the cancellation proceeding. In
`
`view of the foregoing and because counsel representing an applicant is automatically
`
`designated as correspondent of record when an opposition is instituted, see TBMP
`
`§ 117.03, it is unclear whether Mr. Yang actually continues to represent Applicant in
`
`the opposition.
`
`Accordingly, Applicant is required to secure United States counsel to
`
`represent him in this proceeding OR otherwise update the record in the
`
`cancellation indicating that the current correspondent is a U.S. attorney
`
`that represents Applicant in the opposition. 84 FR 31498 (Requirement of U.S.
`
`
`
`5
`
`
`
`Opposition No. 91282443
`Cancellation No. 92078159
`
`
`Licensed Attorney for Foreign Trademark Applicants and Registrants, July 2, 2019). 3
`
`Trademark Rules 2.2(o), 2.11, 2.17(b)(3) and 2.32(a)(4).
`
`Applicant is allowed until MARCH 22, 2023, to state that Wei Yang continues to
`
`represent Applicant in this proceeding OR obtain United States counsel and to
`
`establish representation by filing, through the Board’s electronic filing system,
`
`ESTTA: (1) a written power of attorney signed by the party the attorney represents,
`
`or (2) a document (e.g., motion, brief) that satisfactorily identifies the individual as
`
`attorney for the party.4
`
`Either filing must also include all of the following: year of the attorney’s
`
`admission, state or territory of attorney’s admission, and a statement of attorney’s
`
`good standing. Also, the filing must include proof of service of a copy on all other
`
`parties to this proceeding. Trademark Rule 2.119(a); TBMP § 114.03.
`
`If Applicant files no response, the Board may issue an order to show cause why
`
`default judgment should not be entered against Applicant based on Applicant’s
`
`apparent loss of interest in the proceeding.
`
`Proceedings are otherwise SUSPENDED pending response to this order. A copy
`
`of this order has been sent to the three persons listed below:
`
`SA WANG
`RM. 2704, UNIT 2, BLDG. 18, SONGDU
`CHENGUANG, INT'L GARDEN, JIANGGAN DIST.
`HANGZHOU
`CHINA
`
`3
`https://www.federalregister.gov/documents/2019/07/02/2019-4087/requirementof-us-
`licensed-attorney-for-foreign-trademark-applicants-and-registrants
`
` 4
`
` The USPTO cannot aid in the selection of an attorney. TBMP § 114.02.
`
`
`
`6
`
`
`
`Opposition No. 91282443
`Cancellation No. 92078159
`
`
`RUOTING MEN
`GLACIER LAW LLP
`200 PARK AVENUE, SUITE 1703
`NEW YORK, NY 10166
`ruoting.men@glacier.law
`
`NEIL B FRIEDMAN
`HODGSON RUSS, LLP
`605 3RD AVENUE, SUITE 2300
`NEW YORK, NY 10158
`nfriedma@hodgsonruss.com
`
`V. Trial Dates
`
`It is the Board’s practice to reset the trial dates for consolidated proceedings in
`
`accordance with the most recently instituted of the consolidated cases. See TBMP
`
`§ 511. However, discovery is almost closed in the cancellation, see Canc. No.
`
`920781590-19 TTABVUE 6 and 21 TTABVUE, and as noted supra, the facts and
`
`issues in these proceedings are highly similar or the same. In view thereof, the entire
`
`180-day period for discovery in the opposition is not necessary. When these
`
`proceedings resume, trial dates shall be reset in accordance with this finding.
`
`
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`☼☼☼
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`7
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