Embarcadero Technologies, Inc. v. Delphix Corp.

                                    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




DUNN                                Mailed: January 21, 2016


                                    Opposition No. 91197762
                                    Cancellation No. 92055153

                                    Embarcadero Technologies, Inc.

                                           v.

                                    Delphix Corp.

                                    (as consolidated)


Before Quinn, Mermelstein and Lykos, Administrative Trademark Judges:

By the Board:

   This case comes up on Respondent’s motion for summary judgment in

Cancellation No. 92055153 on the pleaded claim that Respondent fraudulently

averred use in commerce of its DELPHIX mark prior to registration. We also

address Petitioner’s cross-motion to amend its petition for cancellation to add

various claims, including the related claim that the application underlying the

subject registration was void for nonuse prior to registration. Both motions are

contested.
Opposition No. 91197762 and Cancellation No. 92055153


   On January 14, 2009, Respondent filed an application based on Trademark Act

Section 1(b), 

15 U.S.C. § 1051

(b), to register the mark shown below




for “computer software for use in database management; database management

software   for   managing   database    storage   and   provisioning   functions”   in

International Class 9 (application Serial No. 77649689). On August 12, 2009,

Respondent filed its statement of use alleging January 31, 2009 as its date of first

use of the mark and March 1, 2009 as its date of first use of the mark in commerce.

   On October 1, 2009, the USPTO issued an Office action finding Respondent’s

specimen of use unacceptable. On January 25, 2010 — within six months of

issuance of the notice of allowance — Respondent timely filed a request for an

extension of time to file the statement of use for six months, or until July 28, 2010.

On February 3, 2010, Respondent filed its response to the Office action, with an

accompanying substitute specimen and declaration averring that the substitute

specimen was in use in commerce prior to the expiration of the original filing

deadline for filing the statement of use. Respondent continued to allege January 31,

2009 as the date of first use of the mark, and substituted December 3, 2009 as its

date of first use of the mark in commerce. On February 24, 2010, the USPTO issued

a notice of acceptance of Respondent’s statement of use. 

Registration No. 3768914

issued March 30, 2010.




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Opposition No. 91197762 and Cancellation No. 92055153


    On February 9, 2012, Petitioner filed its petition to cancel 

Registration No. 3768914

 pleading, among other claims, fraud based on Respondent’s averment of

use in its statement of use.

    Respondent filed an answer denying the salient allegations of the petition, and

pleading various affirmative defenses. Pursuant to the Board’s July 26, 2013 order

granting the parties’ consented scheduling motion, discovery closed December 21,

2013. Respondent filed its motion for summary judgment on August 11, 2014, prior

to the opening of Petitioner’s testimony period.1

RESPONDENT’S MOTION FOR SUMMARY JUDGMENT ON FRAUD

    Summary judgment is an appropriate method of disposing of cases in which

there is no genuine dispute with respect to any material fact, thus leaving the case

to be resolved as a matter of law. See Fed. R. Civ. P. 56(c)(1). A party moving for

summary judgment has the burden of demonstrating the absence of any genuine

dispute as to a material fact, and that it is entitled to judgment as a matter of law.

See Celotex Corp. v. Catrett, 

477 U.S. 317, 323

 (1986). The evidence of record and all

justifiable inferences that may be drawn from the undisputed facts must be viewed

in the light most favorable to the non-moving party. See Lloyd’s Food Products Inc.

v. Eli’s Inc., 

987 F.2d 766

, 

25 USPQ2d 2027

 (Fed. Cir. 1993).




1 Proceedings were suspended, by consent of the parties, for about a year to allow
settlement discussions and, pursuant to the Board’s May 21, 2014 order granting the
parties’ scheduling motion, resumed with Petitioner’s testimony period scheduled to open
August 19, 2014.




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Opposition No. 91197762 and Cancellation No. 92055153


   When a moving party’s motion for summary judgment is supported by evidence

sufficient to indicate that there is no genuine dispute as to any material fact and

the moving party is entitled to judgment, the burden shifts to the nonmoving party

to demonstrate the existence of a genuine dispute regarding at least one material

fact which requires resolution at trial. The nonmoving party, however, may not rest

on the mere allegations of its pleadings and assertions, but must designate specific

portions of the record or produce additional evidence showing the existence of a

genuine dispute as to a material fact for trial. See Barmag Barmer Maschinenfabrik

AG v. Murata Machinery, Ltd., 

731 F.3d 831

, 

221 USPQ 561, 564

 (Fed. Cir. 1984)

(“The party opposing the motion must point to an evidentiary conflict created on the

record at least by a counter statement of a fact or facts set forth in detail in an

affidavit by a knowledgeable affiant.”).

   Moreover, where the nonmoving party will bear the burden of proof at trial on a

dispositive issue, a summary judgment motion may properly be made in reliance

solely on the “pleadings, depositions, answers to interrogatories, and admissions on

file” and “requires the nonmoving party to go beyond the pleadings and by her own

affidavits, or by the depositions, answers to interrogatories, and admissions on file,

designate specific facts showing that there is a genuine issue for trial.” Celotex Corp.

v. Catrett, 

477 U.S. at 324

. That is, the moving party may discharge its burden by

showing that there is an absence of evidence to support the nonmoving party's case.

Id. at 325

; Copelands’ Enters. Inc. v. CNV Inc., 

945 F.2d 1563

, 

20 USPQ2d 1295, 1298

 (Fed. Cir. 1991).




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Opposition No. 91197762 and Cancellation No. 92055153


   Fraud in procuring a trademark registration occurs when an applicant

knowingly makes false, material representations of fact in connection with its

application with the intent to deceive the USPTO. In re Bose Corp., 

580 F.3d 1240

,

91 USPQ2d 1938, 1941

 (Fed. Cir. 2009). The standard for finding intent to deceive

is stricter than the standard for negligence or gross negligence, and evidence of

deceptive intent must be clear and convincing. 

Id.

   Respondent moves for summary judgment on Petitioner’s fraud claim,

contending that, even if there was an inaccuracy in the statement of use, there is no

evidence that the inaccuracy resulted from an intent to deceive the USPTO.

Respondent argues that Petitioner’s initial disclosures and pretrial disclosures

identify no documents or witnesses with knowledge of facts supporting a fraud

claim, and that Petitioner “has not produced a single document, witness, or

discovery response” supporting its fraud claim.

   Respondent submits the declaration of its CEO and founder, Jedidiah Yueh, who

avers that he created a unique software product and used the mark in accordance

with industry practice; that Respondent first installed the software bearing the

mark for a customer in December 2009; that at another unspecified point in 2009,

Respondent installed the DELPHIX software; that the mark was also used on a

user manual provided to both customers in 2009, and then the manual was

submitted as a specimen supporting Respondent’s amended statement of use; that

he signed the amendment to the statement of use; that because the manual was in

use with software installed for customers, he believed then and still believes that




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Opposition No. 91197762 and Cancellation No. 92055153


Respondent used the mark in commerce as of December 3, 2009; that Respondent

had ten customers by September 2010, and that customer testimonials were part of

Respondent’s presentation at a September 2010 trade conference.

   Respondent also submits its September 2010 press release describing existing

customers for the DELPHIX software, and excerpts from Mr. Yueh’s discovery

deposition in which he avers Respondent was the first company to offer database

virtualization, a concept invented by Mr. Yueh and the subject of patent

applications; that even now no other companies offer the type of database

virtualization solution that Respondent offers; and that the September 2010

presentation at the trade conference was intended to increase Respondent’s

customer base.2

   To support its opposition to the motion for summary judgment, Petitioner

submits Respondent’s responses to Petitioner’s request for the production of

documents, the declaration of attorney Angelique Riordan, and excerpts from the

Yueh deposition. The Riordan declaration avers that Respondent’s document

production includes no sales documents such as purchase orders or shipment

confirmations of Respondent DELPHIX software. The excerpts from the Yueh

deposition state that Yueh is a graduate of Harvard University, that before

founding Respondent, he was the founder of a different company with general

2 Petitioner moves (Opposition to Motion for Summary Judgment, p. 1 fn. 1) to strike the

Yueh deposition pursuant to Fed. R. Civ. P. 32. Inasmuch as Trademark Rule 2.127(e)(2)
specifies that “For purposes of summary judgment only, the Board will consider … a
discovery deposition or any part thereof with any exhibit to the part that is filed”, the
motion is denied. However, had the deposition evidence been stricken, we would come to the
same result on this motion.




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Opposition No. 91197762 and Cancellation No. 92055153


responsibilities for marketing and trademarks; and that he selected the prior

company’s trademark and sought to register it. With respect to Respondent’s

fraudulent intent in filing its statement of use, Petitioner contends (Response, p.

10):

       Delphix’s president and CEO Jedidiah Yueh appears to have been
       acting pro se when he signed and submitted both Statements of Use.
       That fact makes no difference – an applicant is responsible for
       ensuring that accurate information is transmitted to the USPTO. Mr.
       Yueh is a highly educated Harvard graduate, who has started at least
       two businesses, with previous trademark experience. Mr. Yueh is well
       aware of the importance of reading and verifying the accuracy of
       documents he signs. With his extensive business experience, including
       trademark responsibilities and previous dealings with USPTO and the
       filing of trademark applications, Mr. Yueh could not have reasonably
       believed that Delphix’s two claimed “installations” constituted use in
       commerce of software goods.


   Respondent filed a reply brief noting that Petitioner relies on only two facts

about Respondent’s CEO – that Mr. Yueh studied at Harvard and has a general

awareness of trademarks – to inappropriately infer that Respondent filed its

statement of use with the necessary fraudulent intent. Respondent contends that it

has discharged its burden for summary judgment by showing that there is an

absence of evidence to support Petitioner’s claim.

   While the Board must view Respondent's motion for summary judgment on

Petitioner’s pleaded claim of fraud in a light most favorable to Petitioner as the non-

moving party, Petitioner was required to set forth specific facts, by declarations or

as otherwise provided in the rule, evidence supporting an inference of Respondent’s

fraudulent intent in declaring that it was using its DELPHIX mark on the software




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Opposition No. 91197762 and Cancellation No. 92055153


in commerce, and showing that there are genuine disputed facts remaining for trial.

See Fed. R. Civ. P. 56(e). See also Copelands’ Enters. Inc., 

20 USPQ2d at 1298

, and

Octocom Sys. Inc. v. Houston Computers Servs. Inc., 

918 F.2d 937

, 

16 USPQ2d 1783, 1786

 (Fed. Cir. 1990). Here, Petitioner failed to rebut Respondent’s evidence or raise

a genuine dispute of material fact regarding Respondent’s intent to deceive USPTO.

In re Bose Corp., 

580 F.3d 1240

; 

91 USPQ2d 1938, 1942

 (Fed. Cir. 2009) (Board

erred in finding Sullivan’s belief that the mark was in use in commerce was not

reasonable, court holding “We do not need to resolve the issue of the reasonableness

as it is not part of the analysis. There is no fraud if a false misrepresentation is

occasioned by an honest misunderstanding or inadvertence without a willful intent

to deceive.”); M.C.I. Foods Inc. v. Bunte, 

96 USPQ2d 1544

, 1549 (TTAB 2010) (“we

will not draw an inference that MCI acted with the intent to deceive the Trademark

Office without some factual basis for drawing such an inference”). Compare

Copelands’ Enters. Inc., 

20 USPQ2d at 1299

 (“Although purporting to explain its

actions, CNV’s self-serving declarations are insufficient in the context of summary

judgment to overcome other evidence of deceptive use of the registration symbol.”)

(emphasis added). Testimony regarding the education and trademark experience of

Respondent’s CEO who signed the statement of use is not evidence, direct or

indirect, of fraudulent intent, a necessary element of the fraud claim. Accordingly,

Respondent’s motion for summary judgment on the ground of fraud is GRANTED.

   This decision is interlocutory in nature. Appeal may be taken within two months

after the entry of a final decision resolving the remaining issues in the case.




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Opposition No. 91197762 and Cancellation No. 92055153


PETITIONER’S MOTION TO AMEND THE PETITION TO CANCEL

   Trademark Rule 2.115, 

37 C.F.R. § 2.115

, and Fed. R. Civ. P. 15(a) encourage the

Board to look favorably on motions to amend pleadings, stating that “leave shall be

freely given when justice so requires.” 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. Foman v. Davis, 

371 U.S. 178, 182

 (1962); Am. Express

Mktg. & Dev. Corp. v. Gilad Dev. Corp., 

94 USPQ2d 1294

, 1297 (TTAB 2010). In

determining whether the other party would be prejudiced by allowance of the

proposed amendment, the timing of the motion for leave to amend plays a large

role. Black & Decker Corp. v. Emerson Electric Co., 

84 USPQ2d 1482

, 1486 (TTAB

2007).

   In support of its motion to amend its petition for cancellation, Petitioner

contends that the accompanying amended petition to cancel does not include any

new, previously unasserted claims; that the original petition to cancel pleaded

claims of false suggestion of a connection, likelihood of confusion, and fraud, and

provided ample notice of all claims now clarified in the amended petition; that the

fraud claim includes allegations sufficient to plead the additional independent

claims of nonuse and “false declaration”; that existing law acknowledges that a

fraud claim based on nonuse also includes a separate nonuse claim; and that there

will be no prejudice to Respondent in granting the amendment inasmuch as no




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Opposition No. 91197762 and Cancellation No. 92055153


discovery is necessary.3 Respondent contends that amendment should be denied

because Petitioner unduly delayed in bringing its motion to amend, and because the

proposed amended petition to cancel includes new and futile claims beyond the

scope of the original pleading.

   Because the claims are untimely and futile, the motion to amend is denied with

respect to the claims of false suggestion of a connection and “false declaration.”

While the ESTTA cover sheet of the original petition to cancel listed false

suggestion of a connection under Trademark Act Section 2(a), 

15 U.S.C. § 1052

(a),

as a ground for cancellation, the Board’s April 29, 2013 order found that the claim

was not supported by any factual allegations, and held that no consideration would

be given to the claim. Petitioner did not seek reconsideration of that order. To the

extent that Petitioner alleges that its May 26, 2015 proposed amended petition

clarifies an existing claim, the Board disagrees. There is no claim of false suggestion

of a connection to clarify, and so we consider this the proposed addition as the

addition of a new claim.

   In any event, the proposed claim of false suggestion of a connection would be

futile. The claim of false suggestion of a connection is not a variation on a likelihood

of confusion claim. As Petitioner was previously informed, a sufficient claim

requires allegations that Respondent's DELPHIX mark is Petitioner Embarcadero

Technologies, Inc.’s identity or “persona,” and Petitioner’s allegations regarding the


3 The proposed amended petition to cancel no longer pleads that Respondent lacked a bona

fide intent to use the mark in commerce when the application underlying its registration
was filed. We therefore consider that claim to be withdrawn.




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Opposition No. 91197762 and Cancellation No. 92055153


similarities between the parties’ marks fall far short of this standard. See Hornby v.

TJX Cos., Inc., 

87 USPQ2d 1411

, 1424 (TTAB 2008).

   The proposed amended petition also is futile with respect to the claim of “false

representation.” There is no statutory claim for cancellation based on “false

representation.” And, as discussed, a cancellation claim that the registration “was

obtained fraudulently” requires more than a false representation; it requires, inter

alia, that the false representation be accompanied by deceptive intent.

Daimlerchrysler Corp. and Chrysler, LLC v. Am. Motors Corp., 

94 USPQ2d 1086

,

1089 (TTAB 2010) (citing Bose, 

91 USPQ2d at 1942

 (“There is no fraud if a false

misrepresentation is occasioned by an honest misunderstanding or inadvertence

without a willful intent to deceive.”). Petitioner’s proposed claim of “false

representation” therefore fails to state a claim.

   The Board comes to a different result with the proposed new claim of nonuse,

which Respondent has not shown will necessarily be futile. The petition to cancel

alleges (Par. 20) that “[b]ased on the results of due investigation, the physical

appearance of the specimen documents available for Reg. No. 3,768,914 and the

public notices regarding the launch date of the actual product under the DELPHIX

(Logo) mark, such mark was not in bona fide commercial use in commerce at the

time of filing the Statement of Use and/or at the time of filing the substitute/new

specimen of use …,” and this allegation is sufficient notice to Respondent that its

use at the time the statement of use was filed was at issue. See ShutEmDown

Sports, Inc. v. Carl Dean Lacy, 

102 USPQ2d 1036

, 1045 (TTAB 2012) (“the petition




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Opposition No. 91197762 and Cancellation No. 92055153


for cancellation clearly put Respondent on notice that petitioner had alleged nonuse

by Respondent, in particular, ‘on all recited goods at the time of the application.’ …

[S]eparate pleading of a non-use claim, while preferable, is not, however, critical,

and the Board has found applications to be void ab initio even when nonuse was not

pleaded as a separate claim or issue.”) (citations omitted).

   Petitioner did not unnecessarily delay in seeking to add the separate nonuse

claim. Proceedings largely were suspended from issuance of the Board’s April 29,

2013 order, which held that the petition to cancel did not expressly plead a separate

claim of nonuse, until the instant motion for summary judgment was filed. Further,

under ShutEmDown Sports, the Board could have considered evidence of nonuse

without requiring a separate pleading. Accordingly, there is no prejudice in allowing

a separate pleaded claim of nonuse.

   But although Petitioner’s nonuse claim is timely, it is nonetheless based on a

faulty legal premise. Petitioner pleads that because Respondent filed its statement

of use on August 12, 2009, Respondent could not later substitute or amend dates of

use which occurred after August 12, 2009, and that Respondent’s subsequent

amendment to its statement of use was an impermissible withdrawal of the

statement of use. Accordingly, we review the existing rules allowing applicants to

submit evidence of use which occurred after the filing of the statement of use but

within the original or extended period for filing the statement of use, and hold that,

in an inter partes proceeding, the Board also will consider evidence of use which




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Opposition No. 91197762 and Cancellation No. 92055153


occurred after the filing of the statement of use but within the original or extended

period for filing the statement of use.

   During ex parte examination, the actual filing of a statement of use does not cut

off the deadline for meeting the requirements for a statement of use. The applicant

may amend its statement of use so long as the amendment demonstrates that the

requirements for the statement of use were met before the expiration of the

deadline for filing the statement of use. Trademark Rule 2.88(e), 

37 C.F.R. § 2.88

(e)

(“If, as a result of the examination of the statement of use, the applicant is found

not entitled to registration, the applicant will be notified and advised of the reasons

and of any formal requirements or refusals. The statement of use may be amended

in accordance with §§ 2.59 and 2.71 through 2.75.”). Thus, an applicant may amend

its statement of use to state dates of use which fall after the statement of use filing

date, but before the expiration of the deadline for filing the statement of use. See

Trademark Rule 2.71(c)(2), 

37 C.F.R. § 2.71

(c)(2) (“The applicant may amend the

dates of use, provided that the amendment is verified, except … after filing a

statement of use under § 2.88, the applicant may not amend the statement of use to

specify a date of use that is subsequent to the expiration of the deadline for filing

the statement of use.”).4


4 For example, if the deadline for filing the statement of use expires September 13, 2016,

and if the statement of use is filed on September 13, 2016, and alleges August 13, 2016 as
the dates of first use; and if an Office action finding that the specimen of use does not
demonstrate trademark use issues October 13, 2016, giving the applicant until April 12,
2017 to respond; then the applicant may file a response on April 12, 2017 which amends the
statement of use to include a new date of use of September 13, 2016. The applicant may not
file a response on April 12, 2017 which amends the statement of use to include a new date



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Opposition No. 91197762 and Cancellation No. 92055153


    An applicant which has filed its statement of use also may extend its deadline

for meeting statement of use requirements by seeking an extension of time.

Trademark Rule 2.89(e), 

37 C.F.R. § 2.89

(e), and Trademark Manual of Examining

Procedure (“TMEP”) § 1108.03 (Oct. 2015).5 This so-called “insurance” extension

may be filed either with or after the statement of use, so long as it is filed before the

expiration of the current deadline for filing the statement of use. The insurance

extension varies from other statement of use extensions because it is the last

available extension of time.6 Trademark Rule 2.89(e)(1), 

37 C.F.R. § 2.89

(e)(1); In re

Dell, 

71 USPQ2d 1725

, 1726 (TTAB 2004) (“Because this fifth extension was filed

after the ‘insurance’ fourth extension request, the Examining Attorney advised

applicant that the fifth extension was not allowed, and therefore that any specimen

which was used after the expiration of the fourth extension was not acceptable.”).

As a result, if an applicant files a statement of use and an insurance extension the

day after the notice of allowance issues, and the extension meets the relevant

requirements, the applicant will have almost a year (the remainder of the six

months following issuance of the notice of allowance plus the six months provided


of use of September 14, 2016, a date which falls after the expiration of the deadline for
filing the statement of use, or to submit a substitute specimen of use that was first used on
September 14, 2015.
5See also In re Dermahose Inc., 

82 USPQ2d 1793

, 1795 (TTAB 2007); In re Informix
Software Inc., 

32 USPQ2d 1861

, 1862 (Comm’r 1993).
6 Prior to the filing of a statement of use, an applicant may request extensions of time in six

month increments, so long as the total time available for filing the statement of use is not
extended beyond thirty-six months from the issuance date of the notice of allowance.
Trademark Rule 2.89(a)-(d), 

37 C.F.R. § 2.89

(a)-(d). Once the statement of use is filed, an
applicant is limited to one further (insurance) extension. Trademark Rule 2.89(e), 

37 C.F.R. § 2.89

(e).




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Opposition No. 91197762 and Cancellation No. 92055153


by the insurance extension) in which to meet the requirements for a statement of

use.7

    Here, the notice of allowance for Respondent’s application issued July 28, 2009

and required Respondent to file a statement of use, or to seek an extension of time

to do so, within six months (that is, by January 28, 2010). On August 12, 2009,

Respondent filed its statement of use, and on January 25, 2010 — within six

months of issuance of the notice of allowance — Respondent timely filed a request

for an insurance extension of time for six months, or until July 28, 2010, in which to

file the statement of use. With this request Respondent submitted the required fee

and verification. No more is required for a first statement of use extension,

including an insurance extension that is the first requested extension under the

facts of a case. See Trademark Rule 2.89, 

37 C.F.R. § 2.89

.

    We find that giving Respondent the benefit of the insurance extension in this

proceeding satisfies the letter and the spirit of the statement of use rules, which

allow amendment of the statement of use by an applicant who has preserved its

time to make such amendments. It may be the rare case in which the extension

7 To illustrate, if the notice of allowance issues May 3, 2016, and the applicant files its
statement of use and meets all the requirements for an insurance extension on May 4, 2016
(the next day), making May 3, 2017 the deadline for filing the statement of use; and if the
statement of use alleges February 5, 2016 as the date of first use, and if an Office Action
issues May 4, 2016 finding that the specimen of use does not demonstrate trademark use,
then the applicant may file a response by November 4, 2016 with a new specimen and
alleging November 4, 2016 as its new date of first use, a date which falls before the May 3,
2017 expiration of the deadline for filing the statement of use. In fact, if a final Office action
issues finding that the substitute statement of use specimen does not demonstrate
trademark use, the applicant may respond with a new specimen and alleging May 3, 2017
as its new dates of use, a date which falls before the May 3, 2017 expiration of the deadline
for filing the statement of use.




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Opposition No. 91197762 and Cancellation No. 92055153


makes a difference as to whether the applicant can demonstrate proper trademark

use in an inter partes proceeding. Nonetheless, it is clear that the insurance

extension request was not acted upon because the USPTO found that Respondent’s

amended statement of use addressed the deficiency raised by the Examining

Attorney. See TMEP § 1108.03(a) (“If the examining attorney does not issue a

requirement or refusal based on the statement of use, the USPTO will not take

formal action on the extension request.”). If the USPTO had found that applicant’s

amended statement of use did not address the deficiency, Respondent‘s extension

would have been granted under the applicable rules, allowing Respondent an

additional six-month period in which to begin use and meet the statement of use

requirement for alleging dates of first use.8 To be clear, the issue before the Board is

not whether the USPTO erred in accepting Respondent’s amended statement of use,

but whether Respondent actually used its mark in commerce prior to the expiration

of its time for doing so. See Marshall Field & Co. v. Mrs. Fields Cookies, 

11 USPQ2d 1355

, 1358-59 (TTAB 1989).

    Accordingly, the Board finds that Respondent is entitled to the benefit of the

insurance extension and, to be legally sufficient, any nonuse claim that Petitioner

may submit must plead that Respondent did not use the DELPHIX mark with the




8 We hasten to add that we see no error in the ex parte examination of Respondent’s
statement of use, or the policy of taking no action with respect to requests for the insurance
extension which are unnecessary to meet the requirements for a statement of use. We
merely explain our reasoning why we believe Respondent to be entitled to the benefit of the
insurance extension, which had not been explicitly granted.




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Opposition No. 91197762 and Cancellation No. 92055153


software listed in the registration within the time for filing its statement of use as

extended, i.e., no later than July 28, 2010.

   In sum, Petitioner’s motion to amend the petition to cancel is GRANTED

inasmuch as the Board will allow Petitioner FIFTEEN DAYS from the mailing date

of this order to file a second amended petition to cancel in which Petitioner restates

its existing claim of priority of use and likelihood of confusion, and adds the

separate claim of nonuse based on Respondent’s alleged failure to use its mark in

commerce by July 28, 2010, the expiration of the time for filing a statement of use.

   If Petitioner fails to file a second amended petition to cancel, or files an amended

pleading which violates this order by including additional claims, this proceeding

will go forward only as to the Section 2(d) claim.

   Respondent is allowed until FIFTEEN DAYS from the date of service of any

amended pleading to file its answer.

   Because this order finds that Respondent was entitled to the insurance

extension to July 28, 2010 of its time to file proof of use sufficient to support the

registration, and as a result may submit evidence of its use prior to July 28, 2010 to

rebut Petitioner’s claims of nonuse prior to the expiration of the deadline for filing

the statement of use, discovery is reopened for a limited period of THIRTY DAYS

from the mailing date of this order for Petitioner (only) to seek information

regarding Respondent’s use of the mark during the extension period from January

29, 2010 to July 28, 2010.

   Proceedings are resumed, and dates are reset below.




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Opposition No. 91197762 and Cancellation No. 92055153


Plaintiff's Pretrial Disclosures                         4/11/2016
Plaintiff's 30-day Trial Period Ends                     5/26/2016
Defendant's Pretrial Disclosures                         6/10/2016
Defendant's 30-day Trial Period Ends                     7/25/2016
Plaintiff's Rebuttal Disclosures                          8/9/2016
Plaintiff's 15-day Rebuttal Period Ends                   9/8/2016


         In each instance, a copy of the transcript of testimony together with copies of

documentary exhibits, must be served on the adverse party within thirty days after

completion of the taking of testimony. Trademark Rule 2.l25.

         Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An

oral hearing will be set only upon request filed as provided by Trademark Rule

2.l29.




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