Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 NABISCO BRANDS, INC.
Opposition No. 90,495
Cancellation No. 21,498
July 6, 1993
Mark V.B. Partridge of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson for Nabisco
Joanne Spatz of Keebler & Dompany for Keebler Co.
Before Sams, Rice, and Seeherman
J.D. Sams, J.E. Rice and E.J. Seeherman
Nabisco Brands, Inc. (Nabisco), on November 6, 1992, filed a combined notice of opposition to registration of the mark shown in application Serial No. 74/271,113 and a petition to cancel Registration No. 124,976, thereby commencing this proceeding. Fed. R. Civ. P. 3, Trademark Rules 2.101(a) and 2.111(a). A copy of the pleading is forwarded herewith to Keebler Company (Keebler). Proceedings will be conducted in accordance with the Trademark Rules of Practice.
On December 22, 1992, Nabisco filed a motion for partial summary judgment and a motion for leave to use testimony from a civil action involving the parties. On February 5, 1993, Nabisco filed a paper in which it noted that applicant had not filed a paper in response to its motion for partial summary judgment and asked the Board to grant its motion as uncontested. On February 22, 1993, Keebler filed a brief in opposition to the motion for entry of partial summary judgment. Keebler maintains that no response to the motion for partial summary judgment is due until it has been notified by the Board that the proceeding has been instituted. Further, Keebler requests that Nabisco be assessed costs for Keebler's preparation of a brief in response to the motion.
We turn first to the motion for entry of partial summary judgment. Nabisco's argument in support of its motion may be summarized as follows:
(1) Trademark Rule 2.101(a) provides that an opposition commences with the filing of the notice of opposition.
(2) Trademark Rule 2.116 provides that "[e]xcept as otherwise provided, and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure."
(3) Rule 56(a) of the Federal Rules of Civil Procedure provide that a motion for summary judgment may be filed "at any time after the expiration of 20 days from the commencement of the action ..."
(4) Trademark Rule 2.127(a) provides that a brief in response to a motion must be filed within fifteen days after service of the motion and that, if a party fails to respond to a motion, the Board may treat the motion as conceded.
While Nabisco's argument appears logical, it overlooks the fact that, in Board proceedings, the formal service of the complaint (the notice of opposition) is made by the Board and not by the plaintiff (opposer), as is the case in the U.S. District Court. Rule 56(a) assumes that the date of commencement of the proceeding (i.e., the date the complaint is filed with the court) is the same, or close to the same, date that the defendant is served with the complaint. Because that is not so in Board proceedings, the Board does not find this part of Rule 56 to be "applicable and appropriate" to opposition proceedings.
*2 For this reason, Keebler is correct that it was not required to respond to Nabisco's motion for partial summary judgment before it received from the Board a notification of the institution of this proceeding. Even when, as in this case, an opposer or cancellation petitioner sends a copy of the pleading to the applicant or registrant, the applicant or registrant does not know that the opposition or petition has been filed in proper form and that the proceeding has been instituted, unless and until it receives from the Board a notice of institution together with a copy of the pleading. Moreover, the filing of motion papers and responses with the Board prior to the Board's formal institution of proceedings may cause administrative difficulties for the Board, particularly where the Board has not yet assigned a proceeding number to the opposition or cancellation. Accordingly, Keebler was under no obligation to respond to Nabisco's premature motion for partial summary judgment. [FN1]
As for Keebler's request that it be awarded fees in connection with the preparation of its brief in response to Nabisco's motion, the motion is denied. Even if we considered such a sanction appropriate in this case (and we do not), the Board is without authority to award attorneys' fees or other expenses to any party. See Trademark Rule 2.127(f). [FN2]
Although Nabisco's motion for partial summary judgment was filed prematurely, we see no reason to require Nabisco to refile its motion now that, by means of the present order, the opposition has been formally instituted. Therefore, Keebler is allowed until July 26, 1993 to file a brief in response to Nabisco's motion for partial summary judgment and motion for leave to use testimony from a prior civil action.
Proceedings are suspended pending disposition of the pending motions. When proceedings are resumed, Keebler will be allowed time to file an answer herein.
Members, Trademark Trial and Appeal Board
FN1. For the same reasons, an applicant or registrant that has received from another party a copy of an opposition or petition to cancel that the party has filed in the Patent and Trademark Office is under no obligation to file an answer thereto until it receives from the Board a notice of institution setting the time for filing an answer.
The Board's formal institution of proceedings also affects the timing of discovery. Interrogatories, requests for productions of documents and things, and requests for admission may be served upon the plaintiff after the proceeding commences; by contrast, such discovery requests may be served upon the defendant with or after service of the complaint by the Board. See: Rule 2.120(a); FRCP 33(a), 34(b), and 36(a); and Notice of Final Rulemaking published in the Federal Register on August 22, 1989 at 54 FR 34886, 34892, and in the Official Gazette of September 12, 1989 at 1106 TMOG 26, 31. Discovery depositions may be taken by any party after commencement of the proceeding. The Board's permission must be obtained only if a plaintiff seeks to take a deposition prior to the expiration of 30 days after service of the complaint by the Board upon any defendant, except that permission is not required if the defendant has itself served a notice of taking deposition or otherwise sought discovery, or if the plaintiff's notice (1) states that the proposed deponent is about to go out of the United States, or is bound on a voyage to sea, and will be unavailable for examination unless his or her deposition is taken before expiration of the 30-day period, and (2) sets forth facts to support the statement. See: FRCP 30(a), and Crown Wallcovering Corp. v. Wall Paper Manufacturers Ltd., 188 USPQ 141 (TTAB1975).
FN2. Keebler, in a footnote in its brief, appears to object to Nabisco's having filed a combined opposition and petition to cancel. In Board practice, a party may, in appropriate cases, file, in a single pleading, a notice of opposition to one or more applications owned by the same defendant and a petition to cancel one or more registrations owned by that defendant. The required fee must be submitted for each party joined as plaintiff, for each class sought to be opposed or cancelled, in each application or registration against which the pleading is filed. Cf.: Rules 2.104(b) and 2.112(b). When such a pleading (referred to as a "combined" opposition and petition to cancel) is filed, the Board sets up both an opposition and a cancellation proceeding file, each with its own identifying number, and each marked "Combined with ______" followed by the number of the other proceeding. The opposition is treated as the "parent" case, and both proceeding numbers are placed on all papers relating to the combined proceedings. If Keebler believes that the marks and issues are sufficiently different such that the combined opposition and petition to cancel is not appropriate, it should file a formal motion requesting that the opposition and petition to cancel proceed separately.