Precedential No. 3: TTAB Grants Motion To Supplement Notice Of Opposition To Add Post-Filing Trademark Applications

• Published date: 19 January 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Wolf, Greenfield & Sacks, P.C.
• Author: Mr John L. Welch

Topco Holdings opposed registration of READY4LIFE for sanitizers for personal use, alleging a likelihood of confusion with its registered marks READY FOR LIFE and SIMPLY DONE READY FOR LIFE for various personal goods and cleaning products. On August 3, 2021, after Applicant Hand 2 Hand had answered, Topco filed a motion to amend and supplement its notice of opposition to add to its Section 2(d) claim by pleading two applications filed after this opposition was commenced (March 4, 2021), and also pleading common law rights, in the mark READY FOR LIFE for "[a]nti-bacterial hand wipes for personal use" and for "disposable sanitizing personal wipes," claiming use of its mark since 2017. The Board granted the motion. Topco Holdings, Inc.v. Hand 2 Hand Industries, LLC, 2020 USPQ2d 54 (TTAB 2022) (Order by Interlocutory Attorney Katie Bukrinsky).

FRCP 15(a)(2) "encourages the Board to look favorably on motions to amend, stating that the Board 'should feely give leave when justice so requires.'" In considering a motion to amend, the Board may take into account any undue delay, prejudice to the opposing party, bad faith or dilatory motive, futility of the amendment, and the number of previous amendments. See Foman v. Davis, 371 U.S. 178, 182 (1962).

The timing of the motion to amend plays a large role in determining whether the other party would be prejudiced by amendment. Embarcadero Techs., Inc. v. Dephix Corp., 117 USPQ2d 1518, 1523 (TTAB 2016). The Board may conclude that if there is no prejudice, there is no undue delay. See Am. Express Mktg. & Dev. Corp., 94 USPQ2d at 1297 (although delay was substantial, no prejudice where proceedings were still in the discovery stage and non-movant could be afforded time in which to take discovery).

FRCP 15(d) provides that "the court may, on just terms, permit a party to serve a supplemental pleading setting out any transaction, occurrence or event that happened after the date of the pleading to be supplemented." Courts and the Board have applied the same analysis to an FRCP 15(d) motion to supplement as they apply to an FRCP 15(a) motion to amend. See, e.g., Glatt v. Chi Part Dist., 87 F.3d 190, 194 (7th Cir. 1996); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1217 (TTAB 1990).

FRCP 15(a) Motion to Amend: Topco's motion to add common law rights fell under FRCP 15(a). The Board found no evidence of bad faith or dilatory motive on Topco's part: it is not improper to seek to introduce additional support for a...