Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 FOCUS 21 INTERNATIONAL, INC.
v.
POLA KASEI KOGYO KABUSHIKI KAISHA
Cancellation No. 19,611
February 27, 1992
Before Rice, Rooney and Quinn
Members
By the Board:
J.E. Rice, L.E. Rooney and T.J. Quinn
Members, Trademark Trial and Appeal Board
This case now comes up for consideration of the following motions:
(1) Petitioner's motion filed November 14, 1991 to admit testimony and exhibits from Opposition No. 81,170;
(2) Respondent's motion filed November 27, 1991 to strike petitioner's motion to admit testimony and exhibits or, in the alternative, its opposition thereto, or, in the alternative, its motion to disqualify counsel for petitioner; and
(3) Petitioner's motion filed December 9, 1991 to amend the petition for cancellation.
In its motion to admit testimony, petitioner seeks to admit two testimony depositions, and exhibits thereto, taken by petitioner in Opposition No. 81,170, which involved the present parties. In that opposition petitioner opposed the registration to respondent of the mark SOFT FOCUS as used on cosmetics on the ground of likelihood of confusion with its marks FOCUS and FOCUS 21 as used on cosmetics; in the present cancellation proceeding petitioner seeks to cancel respondent's registration of the mark I.S. SOFTFOCUS and Design for cosmetics on the same ground. In Opposition No. 81,170 respondent filed an abandonment of its application for SOFT FOCUS and, as a result, on November 1, 1990 judgment was entered against respondent pursuant to Trademark Rule 2.135. The depositions which petitioner now seeks to introduce as testimony were taken on September 25, 1990 and copies thereof were filed with the Board as part of the record for the prior opposition on November 2, 1990.
Respondent has moved to strike petitioner's motion on the ground that service was inadequate, since petitioner relied upon its previous service of the testimony and exhibits on respondent and failed to serve copies with the present motion. In the alternative, respondent has opposed the motion on the grounds that it is untimely, having been filed during the discovery period in the present proceeding, rather than petitioner's testimony period, and that the testimony sought to be introduced is irrelevant to this proceeding.
Respondent's motion to strike is denied. Petitioner, in its reply, has offered to supply duplicate copies of any of the prior exhibits that respondent specifies to be of bad quality. The Board will embellish upon this offer and require that petitioner provide respondent with copies of all testimony and exhibits which it seeks to introduce into this proceeding. Petitioner is allowed until twenty days from the date hereof to serve these copies upon respondent, failing which respondent may move for reconsideration of its motion to strike.
Insofar as the timeliness of petitioner's motion is concerned, there is no specific requirement in Trademark Rule 2.122(f) that a motion filed thereunder be filed during the testimony period of the party seeking to introduce testimony from another proceeding. Cf.Trademark Rule 2.120(j)(3)(i). While the Board prefers that such a motion be filed during the party's testimony period, the earlier filing of the motion by petitioner in order to ascertain whether it might be able to rely upon this testimony is entirely reasonable and petitioner's motion will not be denied on this basis.
*2 Insofar as the relevancy of the testimony is concerned, the Board does not find it a prerequisite that the evidence was actually taken under consideration by the Board or the relevancy thereof determined in the prior opposition. Under Rule 2.122(f) the requirement is simply that the testimony was "taken in another proceeding". The testimony at issue here was taken prior to the entry of judgment in Opposition No. 81,170. If petitioner is permitted to introduce the testimony in this proceeding, respondent is entitled to recall or demand the recall for cross-examination of the witnesses whose testimony has been offered and to rebut the testimony, whether or not it attended the depositions when they were originally taken. Petitioner's introduction of the testimony here merely avoids the need for petitioner to retake the same depositions. The relevancy and materiality of the testimony as evidence herein remains subject to challenge by respondent. [FN1] Accordingly, and in view of the facts that the parties in the two proceedings are identical, the marks at issue are SOFT FOCUS and SOFTFOCUS in a design format with respondent's housemark I.S., respectively, and the ground for opposition (or cancellation) is the same, petitioner's motion is granted. The specified testimony and exhibits from Opposition No. 81,170 may be introduced as evidence in this proceeding.
In view of the granting of petitioner's motion to admit testimony, respondent's motion to disqualify counsel for petitioner pursuant to 37 C.F.R. 10.63 must be taken under consideration. In this motion respondent contends that since one of the deposition transcripts from Opposition No. 81,107 consists of the testimony of petitioner's counsel Fred Flam [FN2], and since Mr. Flam will be recalled for cross-examination in this proceeding, Mr. Flam will appear as a witness for his client and thus must be disqualified from serving as counsel for the same. This is a matter to be handled by the Solicitor's Office and accordingly the case file will now be forwarded to the Solicitor.
Prior thereto, in order to expedite matters, the Board will consider petitioner's motion to amend the petition for cancellation. In this motion, petitioner seeks to add a claim of abandonment to the pleadings, in view of information obtained by petitioner's counsel while investigating the business activities of I.S. Cosmetics. Petitioner concurrently requests that, if the amended petition is accepted, the times for discovery and testimony be reset.
Respondent has objected to the motion, both on the ground that petitioner's counsel obtained the information on which the claim of abandonment is based by means of inequitable conduct and on the ground that petitioner has set forth insufficient support in its motion for the allegations of abandonment.
Under Fed.R.Civ.P. 15(a) leave to amend shall be freely given when justice so requires and accordingly the Board liberally grants leave to amend pleadings when the other party will not be prejudiced thereby. Flatley v. Trump, 11 USPQ2d 1284 (TTAB 1989). Here petitioner did not obtain the information with respect to the business activities in the United States of I.S. Cosmetics until respondent had sought to extend its time to respond to requests for admission and petitioner decided to adopt other means to determine the facts. [FN3] The motion to amend was filed prior to opening of petitioner's testimony period and thus the discovery period may be reopened without undue prejudice to respondent.
*3 Furthermore, petitioner has set forth sufficient basis for the introduction of this new claim. Whether or not petitioner can actually prove the claim is a matter to be determined after the introduction of evidence and not at the present time. Any alleged impropriety in the conduct of counsel in obtaining this information must be made the subject of a motion to disqualify counsel and will not be considered by the Board.
Accordingly, petitioner's motion to amend is granted.
Proceedings herein are presently suspended pending disposition of respondent's motion to disqualify counsel for petitioner and the case file is being forwarded to the Office of the Solicitor. No further papers should be filed by the parties until further notice.
Upon resumption of proceedings at the Board, respondent will be given time to file an answer to the amended petition and a period for discovery, limited to the issues raised by the claim of abandonment, will subsequently be scheduled.
J. E. Rice
L. E. Rooney
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Any consideration of the question of estoppel in view of the prior judgment, as raised by petitioner in its reply, must necessarily be deferred until final hearing, or until earlier raised in a motion for summary judgment.
FN2. In this testimony Mr. Flam introduced into evidence several of the exhibits now being relied upon, these exhibits being various products of applicant purchased by counsel.
FN3. Respondent's motion filed November 14, 1991 to extend its time to respond to petitioner's requests for admission until December 18, 1991 is granted as uncontested. The objections to certain of the requests set forth therein should be served on petitioner, not the Board. See Fed.R.Civ.P. 36.