Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 ALBERTO-CULVER COMPANY
v.
F.D.C. WHOLESALE CORP.
Opposition No. 68,236
March 3, 1987
For Alberto-Culver Company
Raymond I. Geraldson, Jr.
Pattishall, McAuliffe & Hofstetter
33 West Monroe Street, 28th Floor
Chicago, Illinois 60603
For F.D.C. Wholesale Corp.
David Goldberg, William M Borchard and Lynn S. Fruchter
c/o Cowan, Liebowitz & Latman
605 Third Avenue
New York, New York 10158
By the Board:
J. D. Sams, J. E. Rice and R. L. Simms
Members
This case comes up on applicant's motion, filed January 24, 1986, for leave to amend its answer to assert a counterclaim. Applicant seeks to amend its pleading because of facts elicited during discovery which lead applicant to believe that partial cancellation of opposer's registrations is warranted on the ground of abandonment. In support thereof, applicant asserts that amendments to pleadings should be liberally allowed under Fed. R. Civ. P. 15(a); that the proposed amendment does not prejudice opposer; that additional discovery relating to the counterclaim is unnecessary by either side; and that applicant's amended pleading is made in good faith and does not involve undue delay. The motion is accompanied by an amended answer and counterclaim. Applicant also has submitted an affidavit from its counsel wherein he sets forth the facts leading up to the motion for leave to amend. [FN1]
Opposer has filed a brief in opposition to the motion wherein opposer asserts that the amendment should not be permitted since the amended pleading would not withstand a motion to dismiss; that the remedy of partial cancellation or restriction sought by respondent is not available in a cancellation proceeding; and that applicant's allegations are in any event legally insufficient since the counterclaim acknowledges that opposer is using the mark 'FDS' on deodorant, namely feminine deodorant spray, which is the same deodorant product opposer was using its mark on at the time it obtained its registration. [FN2]
Applicant, on March 3, 1986, filed a reply brief. Opposer, on March 13, 1986, filed a motion to strike applicant's reply brief or, in the alternative, for leave to file a reply to the reply. Applicant, on March 24, 1986, filed a response to the motion to strike.
The Board, in exercising its discretion, will consider the reply briefs filed by both applicant and opposer to the extent that they clarify the issues now before the Board. Accordingly, opposer's motion to strike is denied.
The Board now turns to the motion to amend. Applicant asserts in the counterclaim that opposer has abandoned its rights in the pleaded mark 'FDS' with respect to products for which it has not used the mark over a period of years, namely products other than feminine deodorant spray. Applicant is seeking, in essence, a partial cancellation to restrict the identification of goods in Registration Nos. 831,204 and 863,268 to 'feminine deodorant spray.'
Applicant's motion to amend is well taken. If the goods in an asserted registration are described so broadly as to defeat the defendant's right to registration for a narrower class of goods which is free from likelihood of confusion problems vis-a-vis goods on which the plaintiff has actually used its mark, the defendant may be able to restrict the registration by way of a partial cancellation thereof. See: U.S. Steel Corp. v. National Copper & Smelting Co., 131 USPQ 397 (TTAB 1961) [partial cancellation of a registration within provisions of Section 18 on ground of abandonment because of non-use of the mark on some of the goods within the scope of the identification in the registration]; and Stanspec Co. v. American Chain & Cable Co., Inc., 531 F.2d 563, 189 USPQ 420, 423 n.9 (CCPA 1976), revg 186 USPQ 205 (TTAB 1975) (citing U.S. Steel). But see: Selfway, Inc. v. Travelers Petroleum, Inc., 579 F.2d 75, 198 USPQ 271 (CCPA 1978), affg 195 USPQ 578 (TTAB 1977) [right to concurrent registration may not be determined in the context of a cancellation proceeding].
*2 In view of the above, we believe that applicant may seek partial cancellation of opposer's pleaded registrations. Moreover, it is our view that applicant's counterclaim sufficiently sets forth a claim of abandonment upon which relief can be granted. Accordingly, applicant's motion to amend is granted. Fed. R. Civ. P. 15(a).
Opposer is allowed until thirty days from the date hereof in which to file an answer to the counterclaim. Trademark Rule 2.106(b)(2)(iii).
The parties, between the dates of August 20, 1984 and January 10, 1986, filed numerous consented motions to extend time. [FN3] These motions are granted.
Applicant has indicated that it does not seek additional discovery relating to the counterclaim. We agree with applicant that opposer should not need additional discovery relating to the counterclaim since all facts relating to the alleged abandonment are within opposer's own knowledge. Moreover, opposer has not requested additional discovery time in the event that the counterclaim was allowed. Accordingly, at such time as opposer's reply to the counterclaim is filed, trial dates, beginning with opposer's testimony period as plaintiff in the opposition, will be rescheduled.
Except to the extent indicated above, proceedings herein are suspended.
J. D. Sams
J. E. Rice
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. Applicant's counterclaim seeks partial cancellation of two pleaded registrations, namely Registration Nos. 831,204 and 863,268 and cancellation of a non-pleaded registration in its entirety, namely Registration No. 848,781. In a reply brief (p.2, f.n. 1), however, applicant indicates that it 'will not at this time seek to cancel the FDS registration for shampoo.' Accordingly, the motion to amend will be considered only as to the amended pleading to partially cancel the two pleaded registrations.
FN2. Opposer's corrected motion, filed February 20, 1986, to extend time is noted. Since applicant has consented thereto, the motion is granted and opposer's brief in response to applicant's motion is considered timely.
FN3. The delay in ruling on these extensions and the motion to amend was occasioned by the loss of the opposition file. The parties' cooperation and assistance in recreating the file is appreciated.