Embarcadero Technologies, Inc.v.Delphix Corp.

Trademark Trial and Appeal Board

Jan 21, 2016

No. 91197762 (T.T.A.B. Jan. 21, 2016)

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.
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
Opposition No. 91197762 and Cancellation No. 92055153

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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.
Opposition No. 91197762 and Cancellation No. 92055153

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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.
Opposition No. 91197762 and Cancellation No. 92055153

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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).
Opposition No. 91197762 and Cancellation No. 92055153

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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
Opposition No. 91197762 and Cancellation No. 92055153

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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.
Opposition No. 91197762 and Cancellation No. 92055153

7
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
Opposition No. 91197762 and Cancellation No. 92055153

8
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.
Opposition No. 91197762 and Cancellation No. 92055153

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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
Opposition No. 91197762 and Cancellation No. 92055153

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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.
Opposition No. 91197762 and Cancellation No. 92055153

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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
Opposition No. 91197762 and Cancellation No. 92055153

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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
Opposition No. 91197762 and Cancellation No. 92055153

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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

Opposition No. 91197762 and Cancellation No. 92055153

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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.
5 See 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).
Opposition No. 91197762 and Cancellation No. 92055153

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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.
Opposition No. 91197762 and Cancellation No. 92055153

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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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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.

Opposition No. 91197762 and Cancellation No. 92055153

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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.