*1 MICROSOFT CORPORATION
QANTEL BUSINESS SYSTEMS, INC., BY CHANGE OF NAME FROM MDS QANTEL, INC.
Cancellation No. 16,496
Before Sams, Rice and Quinn
By the Board:
J.D. Sams, J.E. Rice and T.J. Quinn
Members, Trademark Trial and Appeal Board
This case now comes up on petitioner's motion filed March 21, 1990 to amend the petition to cancel.
In support of its motion to amend, petitioner contends that, because discovery is still open in this case, there can be no prejudice to respondent; that amendments to pleadings are to be allowed liberally; that justice requires that pleadings include all relevant facts; and that Section 18 of the Trademark Law Revision Act (effective November 16, 1989) gives the Board jurisdiction to modify the statement of goods or services in a registration which is the subject of a petition to cancel. (Petitioner characterizes its amended pleading as one to restrict respondent's overbroad identification of goods, to reflect the existence of petitioner's application, [FN1] and to clarify the petition and conform it to facts learned through discovery.)
In opposition to the motion to amend, respondent contends that the jurisdictional provision of the Trademark Law Revision Act on which petitioner relies may not be applied to petitions to cancel already pending on November 16, 1989; that respondent will be prejudiced if the Board retroactively applies the provision of the Trademark Law Revision Act in question to this case; that petitioner is inappropriately attempting to include infringement matters in this case; that the amended pleading seeks relief not legally available in this case; that amendments to pleadings need not be allowed if they are futile and/or prejudicial; that the amendment is untimely, having been filed over two and one-half years after the original pleading was filed; and that the amendment will open avenues of discovery not relevant to this case. Respondent specifically argues that in paragraphs 16-18 of the amended pleading petitioner seeks to add an irrelevant claim regarding likelihood of confusion, when the original petition to cancel was based on genericness, descriptiveness, and/or abandonment of respondent's mark; and that paragraph 19 and the new portion of paragraph 20 (relating to the Board's jurisdiction to restrict respondent's identification of goods) seek a remedy not available in this case, which was filed prior to November 16, 1989.
Petitioner filed a reply brief.
Pleadings are not an end in themselves, but are a means to the proper presentation of a case. Moore's Manual: Federal Practice and Procedure, Section 9.09 (1982). As Fed. R. Civ. P. 15 notes, the policy of granting leave is to be a liberal one, and ordinarily the Court should grant leave to amend whenever doing so will not unduly delay trial of the case or prejudice the other party. See Flatley v. Trump, 11 USPQ2d 1284 (TTAB 1989). This proceeding is still in the discovery stage and respondent has not shown that any undue prejudice would result from the amendment of the petition to cancel by the addition of another ground for cancellation (assuming that the allegations of the amended pleading are sufficient to state an additional ground for cancellation).
*2 In this case respondent has not objected to the several minor wording changes throughout the petition to cancel, and those amendments are allowed under Fed. R. Civ. P. 15(a).
Respondent's arguments against the inclusion of new paragraphs 16-18 regarding likelihood of confusion are not well taken. The allegations of paragraphs 16-18 [namely (i) that respondent has asserted that the use of petitioner's mark constitutes an infringement of respondent's mark in that the parties' marks are confusingly similar, (ii) that petitioner's mark is not confusingly similar to respondent's mark, and (iii) that nevertheless respondent may use its involved registration as a basis to prevent petitioner's attempt to register its mark] relate to petitioner's standing, and, therefore, constitute an allowable amendment to the petition for cancellation.
Turning now to petitioner's amended pleading as to new paragraph 19 and the new phrase in paragraph 20, we note that the preliminary issue to be decided is the procedural matter of whether the provisions of Section 18, as amended by the Trademark Law Revision Act, may be applied in this cancellation proceeding. Respondent is incorrect in urging that the provisions of the Trademark Law Revision Act do not apply to petitions to cancel filed prior to November 16, 1989. Section 18 of the Trademark Act was amended effective November 16, 1989 to include, inter alia, jurisdiction of the Commissioner, through the Board, to "modify the application or registration by limiting the goods or services specified therein." The Trademark Law Revision Act is applicable to all Board proceedings pending on or after November 16, 1989. [FN2] Moreover, even prior to enactment of the amendments to Section 18, the Board entertained claims for partial cancellation (restriction) of trademark registrations. See Alberto-Culver Co. v. F.D.C. Wholesale Corp., 3 USPQ2d 1460 (TTAB 1987). Cf. Pegasus Petroleum Corp. v. Mobile Oil Corp., 227 USPQ 1040, at 1044 (TTAB 1985).
Regarding the substance of petitioner's allegations in new paragraph 19 and the new phrase in paragraph 20, the motion to amend must be denied. Section 18 of the Trademark Act, as amended, is a remedy provision and is not, in itself, a ground for cancellation. In this case, petitioner has not tied its request for a Section 18 remedy (a restriction of the goods listed in respondent's registration) to any ground for cancellation (e. g., non-use or abandonment with respect to particular goods included within the scope of registrant's identification of goods). Petitioner's amended petition includes allegations (in paragraph 17 of the amended petition) that the products on which the parties use their marks differ in nature and are distributed in markets that do not overlap. While such allegations may be read, arguably, as a pleading that petitioner believes it would be able to avoid a Section 2(d) (likelihood of confusion) refusal of registration, in connection with its pending application, if respondent's registration were limited to a more narrow recitation of the goods on which it actually uses its mark, the pleading is incomplete without an assertion of a statutory ground for the desired restriction (partial cancellation) of respondent's registration. The motion to amend as to paragraph 19 and the new portion of paragraph 20 is, therefore, denied.
*3 In summary, petitioner's motion to amend is granted except as to paragraph 19 and the new portion of paragraph 20, and petitioner is allowed until July 17, 1990 in which to file a signed copy of an amended pleading which is in accordance with this order. Respondent is then allowed until August 6, 1990 in which to file an answer thereto. Discovery and trial dates remain as set in petitioner's consented motion filed March 19, 1990, to extend dates, and approved by the Board on March 28, 1990.
J. D. Sams
J. E. Rice
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Although petitioner's amended pleading does not refer, with specificity, to its pending application, that application is application Serial No. 74/029,346, filed February 13, 1990, for the mark MICROSOFT QUICKBASIC, for computer programs for computer program development for microcomputers and instructional manuals, sold as a unit. Applicant submitted a disclaimer of the term "Quickbasic".
FN2. The argument by respondent that Section 46 of the Trademark Act prohibits this action is not well taken. That section was not added to the Lanham Act by the Trademark Law Revision Act but was part of the original Act of 1946.