IP Law Daily, TRADEMARK—TTAB: Opposer to a registration may amend complaint to add later registrations, (Jan 18, 2022)

By Deirdre Kennedy, J.D.

The amendments and supplementations were not made in bad faith, nor did they cause any undue prejudice.

The opposer to an application to register the mark READY4LIFE, who alleged that it would likely be confused with its mark READY FOR LIFE, was permitted to amend and supplement its notice of opposition because the amendments did not cause undue prejudice to the applicant, and because it was in the interest of justice and judicial economy to permit all claims between the parties to be adjudicated, the Trademark Trial and Appeal Board has ruled in an opinion designated as precedential (Topco Holdings, Inc. v. Hand 2 Hand Industries, LLC, January 12, 2022, Bukrinsky, K.).

Applicant sought to register the standard character mark READY4LIFE, Application Serial No. 90067553, for “antibacterial alcohol skin sanitizer gel [and] spray sanitizer for personal use” in International Class 5. On March 4, 2021, Opposer filed a notice of opposition alleging likelihood of confusion with its registered and/or prior common law rights in the mark READY FOR LIFE for personal goods such as facial tissue, cleaning sponges, brooms, mops, cleaning goods such as disposable wipes, all-purpose cleaners and detergents, and toilet bowl cleaners; and in the mark SIMPLY DONE READY FOR LIFE for all-purpose cleaners, disposable wipes, dishwasher detergents, laundry detergents, disinfectant toilet bowl cleaners, and antibacterial hand soap. Opposer alleged ownership of Registration Nos. 5297038, 5402109, 5157266, and 5282150 for the mark READY FOR LIFE, and Registration No. 6108845 for the mark SIMPLY DONE READY FOR LIFE and Design.

Applicant filed an answer denying the allegations of the notice of opposition and asserted eight paragraphs of purported “affirmative defenses.” On August 3, 2021, Opposer filed a motion for leave to amend its notice of opposition.

Opposer sought leave to plead ownership of two applications for the mark READY FOR LIFE for goods in International Class 5, both filed after the proceeding was instituted: Application Serial No. 90665808 for “anti-bacterial hand wipes for personal use,” and Application Serial No. 90697362 for “disposable sanitizing personal wipes.” Opposer alleged in its amended notice of opposition that it had used its READY FOR LIFE mark in connection with the goods in its newly filed applications since 2017. Applicant argued that the amendments were made in bad faith, inasmuch as Opposer did not file the new applications or assert the underlying common law rights until after reviewing the allegations in Applicant’s answer. Applicant also argued that the amendments were prejudicial because they expanded the scope of the proceeding by asserting new goods under the READY FOR LIFE mark.

Opposer styled its motion as one for leave to amend under Fed. R. Civ. P. 15(a). However, to the extent Opposer sought leave to allege ownership of applications filed after the proceeding was instituted, the Board noted that the motion is one to supplement the pleading, and accordingly is governed by Fed. R. Civ. P. 15(d). The Board considered both.

Motion to amend complaint. Fed. R. Civ. P. 15(a)(2) encourages the Board to look favorably on motions to amend. In deciding whether to grant leave to amend, the Board may consider undue delay, prejudice to the opposing party, bad faith or dilatory motive, futility of the amendment, and whether the party has previously amended its pleadings.

In addressing Opposer’s motion for leave to allege prior common law rights in anti-bacterial hand wipes and personal wipes, the Board did not find any evidence of bad faith or dilatory motive in Opposer’s proposed amendment. An amendment under Fed. R. Civ. P. 15(a) may be used to introduce a new claim or defense, or to amplify existing allegations in the complaint. That Opposer’s amendment introduces additional support for its likelihood of confusion claim was not in itself improper and did not demonstrate bad faith. It was also Opposer’s first motion to amend its pleading.

Further, while Opposer could have pleaded prior common law rights in its READY FOR LIFE mark for anti-bacterial hand wipes and personal wipes in its original notice of opposition, the Board did not find that Opposer unduly delayed in failing to do so because the goods were arguably encompassed by Opposer’s allegation, in its original notice of opposition, of prior common law rights in the mark READY FOR LIFE for “cleaning goods such as disposable wipes.” Opposer’s new allegations simply clarified and amplified the alleged common law rights.

The Board also found no evidence of undue prejudice, inasmuch as three months of discovery remained at the time Opposer filed its motion for leave to amend, thus allowing time for Applicant to obtain discovery on Opposer’s amended allegations. Further, the interests of justice and judicial economy would be served by permitting all claims between the parties to be adjudicated. The Board therefore granted Opposer’s motion for leave to amend its notice of opposition to allege prior common law rights in the mark READY FOR LIFE for personal wipes and antibacterial hand wipes.

Motion to supplement. Fed. R. Civ. P. 15(d) expressly provides for supplementation of pleadings with events that took place after the proceeding was instituted. Accordingly, that Opposer sought to supplement its complaint with applications that were filed after the commencement of the proceeding did not, without more, demonstrate bad faith.

Nor did the Board find that Opposer unduly delayed in seeking leave to supplement. Opposer’s applications were filed in April and May 2021, and Opposer provided Applicant with a copy of its proposed amended pleading on May 10, 2021. Although Opposer did not explain why it waited until August 3, 2021 to file its motion, under the circumstances the Board did not find the passage of approximately three months to constitute undue delay. Moreover, for the same reasons discussed with respect to the motion to amend, the Board did not find that Applicant would be prejudiced by the supplementation, and did find that judicial economy was served by permitting it.

Finally, Applicant’s argument that the allegations pertaining to Opposer’s newly filed applications were futile because the filing date of Opposer’s applications was later than the filing date of Applicant’s application was not well-taken by the Board. At a minimum, Opposer’s newly pleaded applications may be relevant to Opposer’s entitlement to a statutory cause of action. Therefore, the Board granted Opposer’s motion for leave to supplement its notice of opposition to plead ownership of Application Serial Nos. 90665808 and 90697362.

Applicant’s affirmative defenses. Applicant alleged that Opposer’s original notice of opposition failed to state a claim. The Board, however, found that in its amended notice of opposition Opposer had sufficiently pleaded its entitlement to a statutory cause of action under Trademark Act Section 13, 15 U.S.C. § 1063,20 as well as a statutory ground for opposition under Trademark Act Section 2(d), 15 U.S.C. § 1052(d).

Finally, the Board held that Applicant’s reservation of the right to assert additional defenses was improper under the Federal Rules of Civil Procedure, inasmuch as it did not give Opposer fair notice of such defenses.

The Case is Opposition No. 91267988.

Attorneys: Karen S. Frank (Coblentz Patch Duffy & Bass LLP) for Topco Holdings, Inc. Roman Aguilera III (The Aguilera Law Firm PLLC) for Hand 2 Hand Industries, LLC.

Companies: Topco Holdings, Inc.; Hand 2 Hand Industries, LLC

Cases: Trademark USPTO GCNNews