The Independent Order of Forestersv.Catholic Order of Foresters

Trademark Trial and Appeal BoardJul 31, 2009

No. 92042562 (T.T.A.B. Jul. 31, 2009)

Baxley Mailed: July 31, 2009 Opposition No. 91168839 Catholic Order of Foresters v. The Independent Order of Foresters Cancellation No. 92042562 The Independent Order of Foresters v. Catholic Order of Foresters Before Seeherman, Rogers and Taylor, Administrative Trademark Judges By the Board: On October 10, 2003, The Independent Order of Foresters ("Independent") commenced the above-captioned cancellation proceeding involving Catholic Order of Foresters's ("Catholic") Registration No. 2219467 for the mark FORESTER LIFE in typed form for "life insurance underwriting" in International Class 36.1 In the second amended petition to cancel that Independent filed on September 10, 2008, pursuant to the Board order of August 11, 2008, Independent 1 Registration No. 2219467, issued January 19, 1999, from an application filed December 16, 1996, reciting June 23, 1997 as the date of first use anywhere and in commerce; renewed. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91168839; Cancellation No. 92042562 2 set forth the following grounds for cancellation: 1) likelihood of confusion with Independentâ€™s previously used, unregistered marks that are composed in part of the words FORESTER or FORESTERS, including FORESTER UNIVERSAL LIFE and FORESTER UNIVERSAL LIFE 2, "in connection with many goods and services, including the sale of insurance and insurance products;"2 2) fraud based on alleged nonuse by Catholic of the FORESTER LIFE mark, both when the statement of use was filed in the application for that registration and when the affidavit under Trademark Act Section 8, 15 U.S.C. Section 1058, was filed in support of that registration; and 3) abandonment based on alleged nonuse of the mark. Catholic denied the salient allegations of the second amended petition to cancel in its answer and asserted affirmative defenses, including laches. In Opposition No. 91168839, which commenced January 25, 2006, Catholic opposes issuance of a registration based on Independent's application Serial No. 78426446, for the mark FORESTERS INVESTING SHARING INSPIRING and design in the following form, 2 Although not stated expressly in the second amended petition to cancel, this claim is pursuant to Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). Opposition No. 91168839; Cancellation No. 92042562 3 , for "periodical publications, namely newsletters and magazines pertaining to charitable activities, insurance, financial matters and recognition of members who do charitable work" in International Class 163 on the ground of likelihood of confusion with its previously used and registered mark FORESTER LIFE in typed form for "life insurance underwriting" in International Class 36, which registration is the subject of the above-captioned cancellation proceeding.4 Independent, in its answer, denied the salient allegations of the notice of opposition. The above-captioned proceedings were consolidated in an April 7, 2006 Board order. 3 This application was filed on May 27, 2004, based on an assertion of a bona fide intent to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), and based on Trademark Act Section 44(e), 15 U.S.C. Section 1126(e), through ownership of Canadian Registration No. TMA584789. 4 "COUNT I" of Catholicâ€™s notice of opposition is captioned as a claim for "trademark infringement." The Board is an administrative tribunal of limited jurisdiction empowered solely to determine the registrability of trademarks. See Trademark Act Sections 17, 18, 20, and 24, 15 U.S.C. Sections 1067, 1068, 1070, and 1092. The Board is not empowered to determine the right to use, nor may it decide broader questions of infringement or unfair competition. See Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1771 n.5 (TTAB 1994). Notwithstanding such captioning, the notice of opposition sets forth a claim under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), and will be treated as such. Opposition No. 91168839; Cancellation No. 92042562 4 This case now comes up for consideration of: 1) Independent's motion (filed April 10, 2009) for partial summary judgment in the above-captioned cancellation proceeding on its likelihood of confusion claim, based specifically on its prior use of the marks FORESTER UNIVERSAL LIFE and FORESTER UNIVERSAL LIFE 2 ("FORESTER UNIVERSAL marks") in connection with the sale and administration of universal life insurance "certificates;"5 and 2) Catholic's motion (filed April 13, 2009) for summary judgment whereby it seeks, in the cancellation proceeding, an order dismissing all of Independent's pleaded claims and sustaining its pleaded affirmative defense of laches and, in the opposition, an order sustaining Catholic's pleaded Section 2(d) claim. The motions have been fully briefed. As has often been stated, summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c). The party moving for summary judgment has the initial burden of demonstrating the absence of any genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986); and Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). The evidence must be viewed in a light most 5 Independent refers throughout its filings to "certificates" instead of "policies." Opposition No. 91168839; Cancellation No. 92042562 5 favorable to the non-movant, and all justifiable inferences are to be drawn in the non-movantâ€™s favor. See Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). When the moving party's motion is supported by evidence sufficient to indicate that there is no genuine issue of material fact, and that the moving party is entitled to judgment, the burden shifts to the nonmoving party to demonstrate the existence of specific genuinely-disputed facts that must be resolved at trial. The nonmoving party may not rest on the mere allegations of its pleadings and assertions of counsel, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine issue of material fact for trial. In general, to establish the existence of disputed facts requiring trial, the nonmoving party "must point to an evidentiary conflict created on the record at least by a counterstatement of facts set forth in detail in an affidavit by a knowledgeable affiant." Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937, 941, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990). Opposition No. 91168839; Cancellation No. 92042562 6 We will first consider the parties' cross-motions for summary judgment in connection with Independent's Section 2(d) claim in the cancellation proceeding. In support of its motion, Independent claims that it has priority based on its use of the FORESTER UNIVERSAL marks since 1984; that its FORESTER UNIVERSAL marks are inherently distinctive identifiers of insurance certificates and related services; and the marks at issue are nearly identical in commercial impression, are used on legally identical services, and travel in the same trade channels. Accordingly, Independent contends that there is no genuine issue of material fact that it has priority and that Catholicâ€™s use of its mark is likely to cause confusion, and therefore that it is entitled to entry of judgment on its Section 2(d) claim as a matter of law. As evidence in support of its motion, Independent submitted the declaration of its director of product solutions, Stephan Lintner, wherein Mr. Lintner avers to the following: that he has been employed at Independent since 1980; that, prior to becoming director of product solutions, he served as director of business analysis from 1988 to 2006; that, as director of product solutions, he is responsible for the implementation of new products and product features, contract drafting and obtaining rate approvals of Independent financial products; that he has Opposition No. 91168839; Cancellation No. 92042562 7 personal knowledge of Independent's advertising, sale, administration and maintenance of certificates issued under Independent's life insurance plans, including those issued under the FORESTER UNIVERSAL marks; that, for the past twenty-five years, Independent has sold and/or administered universal life insurance certificates under the FORESTER UNIVERSAL marks; that Independent sold insurance certificates under the FORESTER UNIVERSAL LIFE mark between 1984 and 1987 and under the FORESTER UNIVERSAL LIFE 2 mark between 1987 and 2002; that more than 65,000 insurance certificates sold under the FORESTER UNIVERSAL marks remain active in the United States; that, since 2002, there have been more than 152,000 "incidents of activity" on all certificates sold under the FORESTER UNIVERSAL marks; and that Independent also uses the FORESTER UNIVERSAL marks in association with training materials provided to agents regarding how to administer such certificates. Evidence submitted by way of Mr. Lintner's declaration includes the following: a) copies of literature for sales in the United States of life insurance certificates sold under the FORESTER UNIVERSAL LIFE mark; b) copies of FORESTER UNIVERSAL LIFE certificates that were issued in the United States in 1984 and 1985; c) copies of FORESTER UNIVERSAL LIFE 2 certificates that were issued in the United States in 1988, 1989, and 1994; d) copies of annual Opposition No. 91168839; Cancellation No. 92042562 8 statements for FORESTER UNIVERSAL LIFE II (sic) certificates from 2002; e) copies of United States sales agent agreements from 1996 through 1999 which show use of the FORESTER UNIVERSAL marks; f) copies of annual statements from 2002 through 2009 showing ongoing administration of certificates that were issued under the FORESTER UNIVERSAL LIFE II (sic) mark in 1988-91, 1993-94, 1996, and 2003; and g) copies of sales training materials showing use of the FORESTER UNIVERSAL marks. As additional support, Independent submitted the April 8, 2009 declaration of its actuary Terence M. Mawhinney, who avers that Independent sold 259,534 certificates under the FORESTER UNIVERSAL marks in the United States between 1984 and 2003; that, as of the end of 2008, the expected annual premiums to be paid for these certificates was approximately 44 million dollars; and that the life insurance protection provided by these certificates exceeded 4.5 billion dollars. In opposition to Independent's motion for summary judgment and in support of its cross-motion for summary judgment on Independent's Section 2(d) claim, Catholic asserts that the parties had co-existed as fraternal benefit societies for more than 100 years prior to the filing of Independent's petition to cancel; that the marks at issue have been in co-existence for twelve years with no reported actual confusion; that Independent ceased selling life Opposition No. 91168839; Cancellation No. 92042562 9 insurance certificates under the FORESTER UNIVERSAL marks seven years ago; that, in view of Independent's use of the additional components UNIVERSAL and 2 in its marks, there is no likelihood of confusion between the marks; that Catholic always displays its house mark on all materials that display its FORESTER LIFE mark; that the petition to cancel is barred by laches; and that the Board should disregard the entire Lintner declaration and its exhibits because, in it, Mr. Lintner relies in part upon documents used only in commerce in Canada or in commerce between Canada and the United Kingdom. Catholic's evidence includes: a) copies of brochures and Internet website excerpts showing the FORESTER LIFE mark used near Catholic's house mark(s); b) excerpts from the discovery depositions of Catholic's high chief ranger/president David Huber and employee Mary Anne File, wherein the deponents state that the FORESTER LIFE mark is used with Catholic's house mark(s); and (c) a declaration from Mr. Huber. In reply in support of its motion for summary judgment and in opposition to Catholic's cross-motion for summary judgment, Independent asserts that its supporting evidence was all used in the United States during the relevant time period; and contends that, because "confusion is not only likely but inevitable, ... the absence of evidence of actual confusion carries little weight;" and that the affirmative Opposition No. 91168839; Cancellation No. 92042562 10 defense of laches is inapplicable because confusion between the marks at issue is inevitable. As the party moving for summary judgment in its favor on its Section 2(d) claim, Independent must establish that there is no genuine dispute that (1) it has standing to maintain this proceeding; (2) that it is the prior user of its pleaded FORESTER UNIVERSAL marks; and (3) that contemporaneous use of the parties' respective marks in connection with their respective services would be likely to cause confusion, mistake or to deceive consumers. See Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB 2001). With regard to standing, we note that Catholic has not challenged Independent's standing to petition to cancel the involved registration. Moreover, there is no genuine issue that Independent has used the FORESTER UNIVERSAL marks in connection with the sale and administration of life insurance. Whether or not the use was in connection with sales in the United States, the use is sufficient to establish Independent's standing in the cancellation proceeding. We turn next to whether there is a genuine issue of material fact regarding Independent's asserted priority of use. To establish the absence of a genuine issue that it has priority, a party must prove, vis-Ã -vis the other party, Opposition No. 91168839; Cancellation No. 92042562 11 that it owns "a mark or trade name previously used in the United States ... and not abandoned...." Trademark Act Section 2, 15 U.S.C. Section 1052. A plaintiff may establish its own prior proprietary rights in a mark through actual use or through use analogous to trademark use, such as use in advertising brochures, trade publications, catalogues, newspaper advertisements and Internet websites which creates a public awareness of the designation as a trademark identifying the party as a source. See Trademark Act Sections 2(d) and 45, 15 U.S.C. Section 1052(d) and 1127; T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996), vacating PacTel Teletrac v. T.A.B. Systems, 32 USPQ2d 1668 (TTAB 1994). Catholic filed the intent-to-use application for its involved registration on December 16, 1996. See Trademark Act Section 7(c), 15 U.S.C. Section 1057(c). In the discovery deposition of Catholic's high chief ranger/president David Huber that Independent submitted in support of its motion, Mr. Huber "venture[s] a guess" that Catholic commenced use in commerce of the FORESTER LIFE mark in commerce in "maybe 1996." Mr. Huber further averred in a declaration filed as an exhibit to Catholicâ€™s brief in support of its motion for summary judgment that Catholic has used the FORESTER LIFE mark in connection with life insurance underwriting services "at least as early as June Opposition No. 91168839; Cancellation No. 92042562 12 23, 1997." Thus, at best, the earliest date on which Catholic can rely is 1996. We turn then to Independentâ€™s evidence of priority. As an initial matter, we note that some of the sample certificates upon which Independent relies in support of its motion for summary judgment are based upon currency other than United States dollars. See, e.g., Lintner declaration, exhibit L, which specifies that the certificate at issue is based on United Kingdom currency. Independent is based in Canada and these certificates appear to show use of the mark outside of the United States, e.g., between Canada and the United Kingdom, which is not relevant in this case. See Johnson & Johnson v. Salve S.A., 183 USPQ 375 (TTAB 1974). Compare First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 81 USPQ2d 1375 (Fed. Cir. 2007). Accordingly, we have not considered any certificates based upon currency other than United States dollars in this decision. In some of the sales deputy contracts that Independent made of record through the Lintner declaration, the "GOVERNING LAW" provisions are set forth as follows: "This agreement shall be deemed to have been made and delivered in the Municipality of Metropolitan Toronto in the Province of Ontario, Canada." E.g., Lintner declaration exhibit W at paragraph 18. However, the "TERRITORY" provisions of these Opposition No. 91168839; Cancellation No. 92042562 13 agreements indicate that the sales deputy "shall perform his duties ... in the State, Province or County of ...." Id. at paragraph 4. Further, Mr. Lintner states in a supplemental declaration that was submitted with Independent's reply brief that these documents, as well as other documents submitted by Independent, but which Catholic contends contain no explicit indication of country of origin, "were provided as evidence of [Independent's] use of the [FORESTER UNIVERSAL marks] ... in the United States." Lintner supplemental declaration at paragraph 3. Accordingly, except as noted, there is no genuine issue that these documents were used in the United States. After reviewing the parties' arguments and evidence, we find that there is no genuine issue of material fact that Independent owns "a mark or trade name previously used in the United States ... and not abandoned...." as required by Section 2(d). The evidence of record establishes that Independent commenced use in commerce of the FORESTER UNIVERSAL marks in connection with the sale and/or administration of life insurance certificates prior to 1996 and that use of those marks in connection with life insurance administration services is ongoing. In particular, the declaration of Independentâ€™s actuary, Terence M. Mawhinney, avers that Independent sold 259,534 certificates under the FORESTER UNIVERSAL marks in the Opposition No. 91168839; Cancellation No. 92042562 14 United States between 1984 and 2003; that, as of the end of 2008, the expected annual premium for these certificates was approximately 44 million dollars; and that the life insurance protection provided by these certificates exceeded 4.5 billion dollars. Independent's additional documentary evidence includes: 1) examples of certificates sold under the FORESTER UNIVERSAL LIFE mark based on United States dollars from 1984; 2) examples of certificates sold under the FORESTER UNIVERSAL LIFE 2 mark based on United States dollars from 1988; 3) annual statements for certificates sold in 1988-91, 1993-94, 1996, and 2003 under the FORESTER UNIVERSAL LIFE II (sic) mark from 1989, 1994, 2002, 2003 and 2005-09; 4) a "reproposal" for a certificate sold under the FORESTER UNIVERSAL LIFE 2 mark based on United States dollars from 1995; and 5) redacted letters dated March 10, 2009 in connection with modification of certificates sold under the FORESTER UNIVERSAL marks. While the evidence shows that Independent has not sold new certificates under those marks since 2003, it continues to render insurance administration services in support of the existing certificates. Independent also submitted copies of internal communications regarding administration of certificates under the FORESTER UNIVERSAL marks. Although these documents are not public in nature, they provide additional cumulative evidence of ongoing administration of Opposition No. 91168839; Cancellation No. 92042562 15 certificates sold under the FORESTER UNIVERSAL marks. See West Florida Seafood Inc. v. Jet Restaurants Inc., 31 USPQ2d 1660 (Fed. Cir. 1994). Thus, there is no genuine issue of material fact that Independent has made prior and continuing use of the FORESTER UNIVERSAL marks, and has not abandoned them. Turning to the likelihood of confusion issue, we find that there are no genuine issues, and that Independent is entitled to judgment as a matter of law. The determination of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). With respect to our consideration of the marks, there is no genuine issue that Independent has rights in the marks FORESTER UNIVERSAL LIFE and FORESTER UNIVERSAL LIFE 2, and that these marks and Catholicâ€™s mark FORESTER LIFE are substantially similar in appearance, pronunciation, connotation and commercial impression. We are not persuaded by Catholic's contention that, because Independent's FORESTER UNIVERSAL marks include the additional elements UNIVERSAL and 2, confusion between the marks at issue is unlikely. Rather, the term FORESTER which is common to all the marks is clearly the dominant element in each. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 Opposition No. 91168839; Cancellation No. 92042562 16 (Fed. Cir. 1985). We take judicial notice that "universal life insurance" is a generic term for "[a] form of term life insurance in which the premiums are paid from the insured's earnings from a money-market fund."6 Black's Law Dictionary 808 (7th ed. 1999). In addition, we note that Catholic has disclaimed the generic term "LIFE" in its involved registration. As for the number 2 in Independent's FORESTER UNIVERSAL LIFE 2 mark, this number connotes an upgrade or second edition of the insurance product/service. Thus, the additional elements in the marks do not serve to distinguish them. Because the involved marks all begin with the word FORESTER and contain both FORESTER and LIFE, there is no genuine issue of material fact that, when these marks are considered in their entireties, they are substantially similar in appearance, sound, connotation and overall commercial impression. See In re Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987). Catholic also relies on the assertion that its FORESTER LIFE mark is always used in combination with its house mark(s) and that Independent regularly uses its FORESTER UNIVERSAL marks in combination with its house mark(s), so that confusion between the marks is unlikely. However, the record shows no genuine issue of material fact that 6 The Board may take judicial notice of dictionary definitions. See The University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982). Opposition No. 91168839; Cancellation No. 92042562 17 Independent also uses its FORESTER UNIVERSAL marks alone, i.e., without a house mark. And, in regard to Catholicâ€™s mark, our analysis must be based on the mark in Catholic's involved registration and not on the basis of how Catholic actually uses that mark. See United Foods Inc. v. J.R. Simplot Co., 4 USPQ2d 1172 (TTAB 1987). With regard to the similarity of the services at issue, because Catholic has a registration, we must consider its services based on the identification in the registration. See, e.g., Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). On the other hand, because Independent is relying on its common law rights, we must consider what the evidence shows Independentâ€™s services to be. There is no genuine issue that Independent has used its FORESTER UNIVERSAL marks for sales and/or administration of life insurance and continues to use the marks for the administration of life insurance. As such, there is no genuine issue of material fact that the services identified in Catholic's involved registration, i.e., "life insurance underwriting," are closely related to the services in connection with which Independent uses its FORESTER UNIVERSAL marks. Opposition No. 91168839; Cancellation No. 92042562 18 As for channels of trade and classes of consumers, there is no genuine issue that Independent insurance policies have been sold to its members and are administered on their behalf. As for Catholicâ€™s services, we must presume that the scope of the registration encompasses all services of the nature and type described, that the identified services move in all channels of trade that would be normal therefor, and that the services would be purchased by all customary potential customers. See In re Elbaum, 211 USPQ 639 (TTAB 1981). As such, Catholic's services are presumed to travel in all the normal channels of trade for the underwriting of insurance products. Thus, Catholicâ€™s services could be directed to or at least be encountered by Independent's members. The services must therefore be treated as traveling in the same channels of trade to the same classes of consumers. Accordingly, Catholic has not created a genuine issue of material fact regarding the classes of consumers for the involved insurance products and services. Although Catholic alleges that there has been no actual confusion between the marks at issue, this is insufficient to raise a genuine issue of material fact with regard to Independent's Section 2(d) claim. The test in determining likelihood of confusion is not actual confusion but likelihood of confusion. See Miguel Torres S.A. v. Casa Opposition No. 91168839; Cancellation No. 92042562 19 Vinicola Gerardo Cesari S.R.L., 49 USPQ2d 2018 (TTAB 1998). Although Catholic alleges that there has been no actual confusion between the marks at issue, Catholic has not shown that the marks at issue have been used in the same geographic area for a significant period of time or under other specific circumstances that could give rise to actual confusion. Further, any lack of actual confusion could be explained by Catholic's use of its house mark with the FORESTER LIFE mark. Thus, the absence of actual confusion fails to raise a genuine issue of material fact with regard to Independent's likelihood of confusion claim in the cancellation proceeding. Based on the foregoing, we find that Independent has met its burden of showing that there is no genuine issue of fact and that it is entitled to judgment on the issue of likelihood of confusion in the cancellation proceeding, and that Catholicâ€™s cross-motion in such proceeding is insufficient to show either that Catholic is entitled to judgment dismissing the petition or even that Independentâ€™s motion must be denied and the petition tried on its merits. With regard to Catholic's cross-motion for summary judgment in the cancellation proceeding on its affirmative defense of laches, that affirmative defense is not available where confusion between the marks at issue is inevitable. See Nat'l Cable Television Ass'n Inc. v. American Cinema Opposition No. 91168839; Cancellation No. 92042562 20 Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991); Turner v. Hops Grill & Bar Inc., 52 USPQ2d 1310 (TTAB 1999). In view of the substantial similarity of the involved marks and the close relationship of the services, trade channels and purchasers, as discussed above, we find that confusion is not only likely to result, but is inevitable. Thus, we need not consider whether there are any genuine issues of material fact as to Catholicâ€™s affirmative defense of laches. In view thereof, Independent's motion for summary judgment on its likelihood of confusion claim in the cancellation proceeding is granted, and Catholic's cross- motion for summary judgment dismissing Independent's likelihood of confusion claim and sustaining the affirmative defense of laches in the cancellation proceeding is denied. Judgment is hereby entered against Catholic in the cancellation proceeding, and the petition to cancel is granted. Registration No. 2219467 will be cancelled in due course.7 Because we have entered summary judgment sustaining Independent's likelihood of confusion claim in the cancellation proceeding, we need not decide Catholic's 7 Although these proceedings were consolidated, the cancellation proceeding maintains its separate character. See TBMP Section 511 (2d ed. rev. 2004). Accordingly, notwithstanding that the opposition proceeding remains pending, Catholic's time in which to appeal the Board's decision in the cancellation proceeding runs from the mailing date set forth in this order. Opposition No. 91168839; Cancellation No. 92042562 21 motion for summary judgment seeking dismissal of Independent's fraud and abandonment claims in the cancellation proceeding. Turning to Catholic's motion for summary judgment in the above-captioned opposition proceeding, we note that Catholic relies largely upon the registration which we have ordered cancelled. In view thereof, Catholic's motion for summary judgment in its favor in the opposition proceeding is denied without prejudice. The motion may be renewed if Catholic is successful in any appeal it may take from the judgment granting Independentâ€™s petition for cancellation, or if Catholic wishes to amend its notice of opposition to rely on any common law rights in the FORESTER LIFE mark. In sum, Independent's motion for summary judgment on its likelihood of confusion claim in the above-cancellation proceeding is granted, and the petition for cancellation is granted. Catholic's cross-motion for summary judgment in its favor in both the cancellation and the opposition proceedings is denied, and we decline to reach Catholic's motion for summary judgment seeking dismissal of Independent's claims of abandonment and fraud in the cancellation proceeding. In exercising our inherent right to control the scheduling of cases on our docket we order that, in the interest of judicial economy, the opposition proceeding Opposition No. 91168839; Cancellation No. 92042562 22 should remain suspended until the status of Catholic's involved registration is finally determined. Accordingly, proceedings herein remain suspended pending the expiration of Catholic's time to appeal the entry of summary judgment in the cancellation proceeding and until final determination of any appeal filed in connection therewith.