Zeferino Ocampo Fitzv.Elizabeth Venegas Nunez Executor and Heir of the Estate of David Venegas Frias

Trademark Trial and Appeal Board

Jan 25, 2022

92077410 (T.T.A.B. Jan. 25, 2022)

KGC/wbc January 25, 2022 Cancellation No. 92077410 Zeferino Ocampo Fitz v. Elizabeth Venegas Nunez Executor and Heir of the Estate of David Venegas Frias Before Rogers, Chief Administrative Trademark Judge, Cataldo, and Johnson, Administrative Trademark Judges. By the Board: Respondent (“Venegas”) owns a registration on the Principal Register for the mark LOS YAGUARU DE ANGEL VENEGAS in standard characters for “entertainment services in the nature of a live musical group” in International Class 41.1 Petitioner Zeferino Ocampo Fitz2 (“Fitz”) has filed a petition to cancel this registration on the basis of (1) likelihood of confusion pursuant to Trademark Act 1 Registration No. 6150283 issued on September 15, 2020 and the underlying application Serial No. 85584163 was filed on March 29, 2012 based on Trademark Act Section 1(a), 15 U.S.C. § 1051(a), with an assertion of first use of January 1, 1996 and use in commerce of July 24, 2012. The registration contains the following statements: (1) “The English translation of ‘Los Yaguaru de Angel Venegas’ in the mark is ‘the otter of Angel Venegas’.”; and (2) “The name(s), portrait(s), and/or signature(s) shown in the mark identifies David Venegas Frias, whose consent(s) to register is made of record.” 2 Though TTABVUE identified Petitioner as Zeferino Ocamo Fitz, the ESTTA cover sheet accompanying the petition to cancel (1 TTABVUE 1) as well as the caption and body of the petition (id. at 3) identify Petitioner as Zeferino Ocampo Fitz. Inasmuch as Petitioner’s name 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 General Email: TTABInfo@uspto.gov THIS ORDER IS NOT A PRECEDENT OF THE TTAB Cancellation No. 92077410 2 Section 2(d), 15 U.S.C. § 1052(d), (2) likelihood of confusion “[b]ased on [i]nternational [t]reaties” (1 TTABVUE 10), in particular, the General Inter-American Convention for Trademark and Commercial Protection, 46 Stat. 2907, (3) no bona fide use, (4) fraud on the USPTO, and (5) nonuse. See 1 TTABVUE.3 In support thereof, Fitz pleads ownership of prior common-law rights in, and four Mexican registrations for, the marks LOS YAGUARU and LOS YAGUARU DE ANGEL VENEGAS in International Classes 9 and 41. See 1 TTABVUE 4-6, 10, 12, ¶¶ 1-5, 7, 21-22, 33-34. He also pleads ownership of two U.S. applications for the standard character mark LOS YAGUARÚ for “entertainment services in the nature of live visual and audio performances by a musical group; entertainment services in the nature of recording, production and post-production services in the field of music; organization of events for cultural purposes; organization of shows for cultural purposes” in International in TTABVUE appears to be a typographical error, the Board has amended the caption in this order and in TTABVUE to reflect that the proper spelling of Petitioner’s name is Zeferino Ocampo Fitz. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE § 512.02 (2021). All references to TTABVUE herein are to Cancellation No. 92077410 unless otherwise indicated. 3 The ESTTA cover sheet accompanying the petition to cancel also identifies abandonment and non-ownership as grounds for cancellation. 1 TTABVUE 1-2. However, inasmuch as these grounds do not appear in any of the enumerated counts in the body of the petition, they are insufficiently pleaded. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1827 n.2 (TTAB 2013) (“Although the ESTTA cover sheet is read in conjunction with the petition to cancel as an integral component, the mere mention of a ground therein is insufficient.”) (citing PPG Indus. Inc. v. Guardian Indus. Corp., 73 USPQ2d 1926, 1928 (TTAB 2005)) (other citation omitted). Cancellation No. 92077410 3 Class 41,4 and for the mark for “compact discs featuring music; magnetic tape recorders; sound recording and sound reproducing apparatus and instruments; sound recording apparatus; musical sound recordings” in International Class 9.5 Id. at 6, ¶ 6. This proceeding is now before us for consideration of Venegas’s motion to dismiss based on claim preclusion. 4 TTABVUE. On August 17, 2021, the Board informed the parties that the motion to dimiss would be treated as one for summary judgment based on claim preclusion,6 and allowed the parties time to supplement their briefing. 5 TTABVUE. The construed motion for summary judgment on the basis of claim preclusion is fully briefed.7 4 Application Serial No. 87414262 was filed on April 17, 2017 based on Trademark Act 44(e), 15 U.S.C. § 1126(e), and includes the following translation: “The English translation of ‘Los’ in the mark is ‘The’.”. 5 Application Serial No. 90778406 was filed on June 16, 2021 based on Trademark Act Section 44(e), and includes the following mark description: “The mark consists of los YAGUARU in stylized font.” 6 A party may file a motion for summary judgment based on claim preclusion before making its initial disclosures. Trademark Rule 2.127(e)(1); see Zoba Int’l Corp. v. DVD Format/LOGO Licensing Corp., 98 USPQ2d 1106, 1108 n.4 (TTAB 2011). 7 The Board notes Venegas’s change of correspondence address, which is made of record. 6 TTABVUE. The Board has carefully considered all of the parties’ arguments and evidence, presumes the parties’ familiarity with the factual bases for their filings, and does not recount the facts or arguments here except as necessary to explain this decision. See Guess? IP Holder L.P. v. Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015). Cancellation No. 92077410 4 Prior Opposition On November 30, 2012, Viridiana Venegas filed a notice of opposition in Opposition No. 91208249 opposing David Venegas Frias’s then-application for the mark LOS YAGUARU DE ANGEL VENEGAS in standard characters for “entertainment services in the nature of a live musical group” in International Class 41.8 See 1 TTABVUE.9 As grounds for opposition, she alleged: … David Venegas Frias has been claiming to be the owner of the … mark [LOS YAGUARU DE ANGEL VENEGAS], trying to deceive the government of the United States…. David Venegas Frias submitted an application to register LOS YAGUARU DE ANGEL VENEGAS as the owner of the mark … intending to register a mark that does not belong to him because it is … my property as the official documents issued by the Mexican Government prove[] and he … knew that it was already registered. … [David Venegas Frias submitted] false declarations … before the Government of the United States of America. … [David Venegas Frias’s intention] was to enter the USA and exploit the mark LOS YAGUARU DE ANGEL VENEGAS [by] obtaining a fraudulent mark registry…. Id. at 4. The ESTTA cover sheet accompanying the notice of opposition also set forth the following grounds: immoral or scandalous matter, deceptiveness, and false suggestion of a connection pursuant to Trademark Act Section 2(a), 15 U.S.C. § 1052(a), the mark consists of or comprises a name of a living individual without 8 As discussed, then-application Serial No. 85584163, filed March 29, 2012, was based on Trademark Act Section 1(a), and issued as Registration No. 6150283. 9 All references to TTABVUE in this section are to Opposition No. 91208249. Cancellation No. 92077410 5 written consent pursuant to Trademark Act Section 2(c), 15 U.S.C. § 1052(c), likelihood of confusion, and fraud. 1 TTABVUE 1. In support of these claims, Viridiana Venegas pleaded ownership of the mark for “entertainment services in the nature of a live musical group, recorded compact discs, videotapes, laser disks and DVD’s featuring music” (id. at 2) and Mexican Registration No. 552594 for the “mark and design of LOS YAGUARU DE ANGEL VENEGAS” (id. at 4). On April 20, 2015, as assignee, Fitz was substituted for Viridiana Venegas as the plaintiff. 23 TTABVUE. Thereafter, on May 1, 2015, Fitz moved for leave to file an amended notice of opposition to “amplif[y] the grounds upon which each count of the original Opposition [was] based” (25 TTABVUE 2), enumerating therein the following grounds for opposition: likelihood of confusion, deceptiveness, false suggestion of a connection, the mark consists of or comprises a name of a living individual without written consent, and fraud (id. at 6-10). On July 22, 2019, upon the death of David Venegas Frias, Elizabeth Venegas Nunez, executor and heir of his estate, was substituted as the defendant. 47 TTABVUE 1. Following this, on December 17, 2019, the Board considered Fitz’s motion for leave to file an amended notice of opposition, finding “that the only two possible claims set forth in the notice of opposition [were] lack of ownership and fraud in the declaration, Cancellation No. 92077410 6 however, the fraud claim [was] insufficiently pleaded.” 52 TTABVUE 6 (citations omitted). It further found that “the mere reference to the other claims on the ESTTA cover form … [was] insufficient to constitute a pleading of that claim.” Id. Ultimately, the Board denied the motion as untimely and insufficient, “find[ing] that [Fitz sought] to add claims, after [his] testimony period, of which [Venegas] had no notice because they were insufficiently pleaded” (id. at 6); “that [Venegas] would be unfairly prejudiced by allowing [Fitz] to add claims in a piecemeal manner late in the proceeding” (id. at 7); and that “the proposed amended notice of opposition fail[ed] to set forth any sufficient claims” (id. at 16). On June 17, 2020, the Board ordered Fitz “to show cause why default judgment should not be entered against [him] based on [his] apparent loss of interest in this proceeding” after Fitz was “allow[ed] … time to obtain new U.S. counsel,” but failed to do so. 57 TTABVUE. Finally, on August 11, 2020, the Board entered judgment against Fitz and dismissed the opposition with prejudice after he failed to respond to the preceding show-cause order. 58 TTABVUE. Summary Judgment and Claim Preclusion Standards Summary judgment is an appropriate method of disposing of cases in which there are no genuine disputes as to any material facts and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). In reviewing a motion for summary judgment, the evidentiary record must be viewed in the light most favorable to the non-moving party and all justifiable inferences to be drawn from the undisputed facts Cancellation No. 92077410 7 must be drawn in favor of the non-moving party. See Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). We may not resolve disputes of material fact; we may only ascertain whether a genuine dispute regarding a material fact exists. See Lloyd’s Food Prods., 25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1544. A factual dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter in favor of the non-moving party. See Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, 22 USPQ2d at 1544. Under the doctrine of claim preclusion, “‘a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies based on the same cause of action.’” Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n.5 (1979)) (other citations omitted). For claim preclusion to apply, there must be: (1) identity of parties (or their privies); (2) an earlier final judgment on the merits of a claim; and (3) a second claim based on the same set of transactional facts as the first. Id. (citing Parklane Hosiery, 439 U.S. at 326 n.5) (other citation omitted). The entry of a final judgment “on the merits” of a claim in a proceeding serves to preclude the relitigation of the same claim, cause of action, or defense in a subsequent proceeding that involves the same parties or their privies, even when the prior judgment resulted from default, consent of the parties, or dismissal with prejudice. See Lawlor v. Nat’l Cancellation No. 92077410 8 Screen Serv. Corp., 349 U.S. 322, 326 (1955); Chromalloy Am. Corp. v. Kenneth Gordon (New Orleans), Ltd., 736 F.2d 694, 222 USPQ 187, 189 (Fed. Cir. 1984); Flowers Indus. Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1583 (TTAB 1987). Identity of Parties The prior opposition was dismissed with Fitz as plaintiff but Elizabeth Venegas Nunez, executor for David Venegas Frias, as defendant. 58 TTABVUE 1 in Opp. No. 91208249. In this cancellation, Fitz has filed a petition to cancel against David Venegas Frias. 1 TTABVUE 1, 3. In the present motion for summary judgment, Venegas’s counsel has informed the Board that Mr. Frias is deceased and that Ms. Nunez is the executor and heir of Mr. Frias’s estate, submitting evidence to this effect. 7 TTABVUE 39-46, 48-49, ¶ 2. Venegas’s counsel also has indicated with supporting evidence that on May 31, 2021, before the cancellation was instituted, an assignment of the involved registration from Mr. Frias to Ms. Nunez was filed with the Assignments Recordation Branch of the USPTO, and has not yet been recorded. Id. at 48-49, 51, ¶ 2. Pursuant to Fed. R. Civ. P. 25, if a party dies and the claim is not extinguished, the court may order substitution of the proper party. When the requirements of Rule 25(a)(1) and (a)(3) are satisfied, “[t]he substituted party steps into the same position as the original party.” Hilao v. Estate of Marcos, 103 F.3d 762, 766 (9th Cir. 1996). Because it appears that the requirements of Rule 25(a)(1) and (a)(3) are satisfied, we find substitution is appropriate. Cancellation No. 92077410 9 Accordingly, Elizabeth Venegas Nunez, as executor and heir of the estate of David Venegas Frias, is hereby substituted as the defendant in this proceeding. In view thereof, for the purposes of claim preclusion, the parties are the same in both proceedings. Further, neither party disputes that the parties involved in this cancellation and the prior opposition are the same. See, e.g., 7 TTABVUE 7 (“[T]he parties hereto are identical to the parties in the prior Opposition proceeding”); 8 TTABVUE 6 (“While the parties are the same…”). Earlier Final Judgment on the Merits There also is no dispute that the Board’s dismissal with prejudice of the prior opposition based on Fitz’s apparent loss of interest in the proceeding is a final judgment on the merits. See Urock Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1411 (TTAB 2015) (“[W]hether the judgment in the prior proceeding was the result of a dismissal with prejudice or even default, for claim preclusion purposes, it is a final judgment on the merits”) (citations omitted). Second Claim Based on Same Set of Transactional Facts as First Claim The parties’ point of contention is whether the claims in this cancellation are based on the same set of transactional facts as the claims in the prior opposition. Because this proceeding implicates the defensive doctrine of “bar,” we must ascertain whether Fitz may bring this subsequent action against Venegas. See Jet, 55 USPQ2d at 1856 (stating that “the doctrine [of claim preclusion] has come to incorporate common law concepts of merger and bar, and will thus also bar a second suit raising claims based on the same set of transactional facts”) (citing Migra v. Cancellation No. 92077410 10 Warren City Sch. Dist. Bd. of Educ., 465 U.S. 75, 77 n.1 (1984)) (other citation omitted). Claim preclusion may apply in a subsequent action if that action is based on the same claims that the parties raised, or could have raised, in the prior action. Int’l Nutrition Co. v. Horphag Research, Ltd., 220 F.3d 1325, 55 USPQ2d 1492, 1494 (Fed. Cir. 2000) (citation omitted); Chutter, Inc. v. Great Concepts, LLC, 119 USPQ2d 1865, 1868 (TTAB 2016). Further, in view of the principle that the parties could and should have requested all available forms of relief in the earlier action, claim preclusion bars subsequent assertions of the same transactional facts in the guise of a different cause of action or theory of relief. Young Eng’rs, Inc. v. U.S. Int’l Trade Comm’n, 721 F.2d 1305, 219 USPQ 1142, 1151 (Fed. Cir. 1983); see also Brown v. Felsen, 442 U.S. 127, 131 (1979) (“Res judicata prevents litigation of all grounds for, or defenses to, recovery that were previously available to the parties, regardless of whether they were asserted or determined in the prior proceeding”) (citations omitted); 18 CHARLES ALAN WRIGHT & ARTHUR R. MILLER, FEDERAL PRACTICE & PROCEDURE § 4402 (3d ed. Apr. 2021 Westlaw update) (claim preclusion “foreclos[es] any litigation of matters that never have been litigated, because of a determination that they should have been advanced in an earlier suit”). However, “[i]f the claim did not exist at the time of the earlier action, it could not have been asserted in that action and is not barred by res judicata.” Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 101 USPQ2d 2015, 2021 (Fed. Cir. 2012). Accordingly, we must determine whether Fitz’s claims in Cancellation No. 92077410 11 this cancellation arise out of the same set of transactional facts that underlies the claims in the prior opposition. Applying the preceding analysis to the claims and factual allegations before us, we note, with some exceptions as will be discussed, that the grounds and assertions in the petition to cancel were explicitly raised in the prior opposition, existed when that earlier proceeding was instituted, or were known or available to Fitz at that time. Likelihood of Confusion Though the notice of opposition did not include a proper pleading of likelihood of confusion, it nonetheless contained a claim of ownership of Mexican Registration No. 552592. 1 TTABVUE 4 in Opp. No. 91208249. Fitz also unsuccessfully moved to amend his notice of opposition to “amplify[y]” a likelihood of confusion claim, which he contended was identified in the original notice of opposition “but perhaps not stated as clearly as … in the Amended Opposition.” 25 TTABVUE 3 in Opp. No. 91208249. Now, in this cancellation, Fitz not only pleads ownership of the same Mexican registration (1 TTABVUE 5), he also pleads ownership of prior common-law rights in the mark LOS YAGUARU in the United States (id. at 6, 10, ¶¶ 5, 22) and Mexico (id. at 12, ¶ 34). In view of the fact that Mexican Registration No. 552592, which registered in 1997, was pleaded in the prior opposition, and because Fitz’s common-law rights rely on use “for over a decade” (1 TTABVUE 6, ¶ 5), which precedes Venegas’s use, it is clear that a claim of likelihood of confusion existed when the prior opposition was instituted. Fitz undoubtedly was aware of this, particularly Cancellation No. 92077410 12 given his attempt to amend the notice of opposition to “amplif[y]” such a claim. Thus, Fitz should and could have, but did not, plead in the prior opposition a likelihood of confusion claim based on Mexican Registration No. 552592 and prior common-law rights. Notwithstanding, Fitz also pleads ownership of three other Mexican Registrations Nos. 1709180, 1726554, and 1727401, registered in 2016 and 2017 (id. at 4-5), and two pending U.S. applications, Serial Nos. 87414262 and 90778406, filed in 2017 and 2021, respectively. Fitz’s rights in these registrations and applications, though, did not exist until they were issued and filed, after the prior opposition was instituted and after Fitz moved for leave to file an amended notice of opposition to “amplif[y]” his likelihood of confusion claim. Accordingly, these registrations and applications could not have been asserted in the prior opposition. After careful consideration of the parties’ submissions, we find no genuine dispute of material fact that Fitz’s likelihood of confusion claim is precluded to the extent the claim relies on Mexican Registration No. 552592 or prior common-law rights in the mark LOS YAGUARU. Notwithstanding, we find a genuine dispute of material fact as to whether Fitz’s claim of likelihood of confusion is precluded to the extent the claim relies on Mexican Registration Nos. 1709180, 1726554, and 1727401 and U.S. applications Serial Nos. 87414262 and 90778406. Thus, Venegas’s motion for summary judgment against Fitz’s likelihood of confusion claim on the basis of claim preclusion is granted in part and denied in part. Cancellation No. 92077410 13 No Bona Fide Use and Nonuse The prior opposition did not include claims of no bona fide use and nonuse. Fitz now pleads these claims in this cancellation predicated on information that existed and was evidently available to him before the prior opposition was instituted, namely, Venegas’s use of the mark as of the March 29, 2012 application filing date and the specimens submitted in connection therewith. 1 TTABVUE 12, 15. Moreover, in his unsuccessful motion to amend in the prior opposition, Fitz asserted that “none of the specimens show use of the LOS YAGUARU DE ANGEL VENEGAS mark in commerce” (25 TTABVUE 10, ¶ 18 in Opp. No. 91208249), as he similarly does in this cancellation (1 TTABVUE 15, ¶ 28 (“The specimen provided by Registrant[] consisted of evidence from the country of Mexico.”)). Thus, Fitz is essentially repurposing factual allegations from his proposed amended notice of opposition and clothing them in the guise of purportedly new claims of no bona fide use and nonuse; claims that, given the allegations in the proposed amended notice, Fitz was undeniably aware of when the prior opposition was instituted. In view thereof, we find no genuine dispute of material fact that claim preclusion bars Fitz’s no bona fide use and nonuse claims. Thus, Venegas’s motion for summary judgment against these claims is granted. Fraud Fraud was explicitly pleaded, albeit insufficiently, in the notice of opposition. 52 TTABVUE 6 in Opp. No. 91208249. In particular, the notice of opposition included allegations that Venegas falsely declared to the USPTO that he owned the mark LOS Cancellation No. 92077410 14 YAGUARU DE ANGEL VENEGAS. 1 TTABVUE 4 in Opp. No. 91208249. In this cancellation, Fitz again asserts, in support of his fraud claim, that Venegas falsely declared ownership of the mark LOS YAGUARU DE ANGEL VENEGAS. 1 TTABVUE 13, ¶¶ 19-20. To further substantiate his fraud claim, Fritz also alleges that Venegas “was not using the LOS YAGUARU DE ANGEL VENEGAS mark on or in connection with all of the services in the Application when the Application was filed, and may not have been using the … mark on or in connection with any of the services in the Application when the Application was filed” (id. at 13-14, ¶ 21), and that Venegas “provided a fraudulent statement of use by providing evidence of use from another country and portraying it to be use of the LOS YAGUARU DE ANGEL VENEGAS trademark in the United States of America” (id. at 14, ¶ 22). Although Fitz now relies on nonuse to support his fraud claim, his assertion of fraud based on non-ownership was explicitly pleaded in the prior opposition. Moreover, nonuse as a basis for fraud appears in Fitz’s unsuccessful motion to amend filed in the prior opposition: As further evidence of Applicant’s knowing fraud in the application for registration of the LOS YAGUARU DE ANGEL VENEGAS mark, Applicant on August 6, 2012 submitted five (5) specimens of use that Applicant declare[d] showed ‘use in commerce’; however, none of the specimens show use of the LOS YAGUARU DE ANGEL VENEGAS mark in commerce. 25 TTABVUE 10, ¶ 18 in Opp. No. 91208249. Thus, Fitz was certainly aware of this additional ground for fraud, which existed and was available to him, when the prior opposition was instituted. Cancellation No. 92077410 15 In view thereof, we find no genuine dispute of material fact that Fitz’s fraud claim is precluded. Thus, Venegas’s motion for summary judgment against this claim is granted. Non-Ownership and Abandonment As discussed, the ESTTA cover sheet accompanying the petition to cancel also identifies abandonment and non-ownership as grounds for cancellation. 1 TTABVUE 1-2. However, inasmuch as these grounds do not appear in any of the enumerated counts in the body of the petition, they are insufficiently pleaded. See Embarcadero Techs., 105 USPQ2d at 1827 n.2 (“Although the ESTTA cover sheet is read in conjunction with the petition to cancel as an integral component, the mere mention of a ground therein is insufficient.”) (citing PPG Indus., 73 USPQ2d at 1928) (other citation omitted). Notwithstanding, to the extent Fitz wishes to file an amended petition to cancel that sufficiently repleads a claim of non-ownership, such a claim is futile as it would merely revive the only claim that was sufficiently pleaded in the prior opposition and, thus, would be precluded. 52 TTABVUE 6 in Opp. No. 91208249 (“The Board finds that the only two possible claims set forth in the notice of opposition are lack of ownership and fraud in the declaration, however, the fraud claim is insufficiently pleaded.”) (citations omitted); see, e.g., Jung v. Magic Snow, LLC, 124 USPQ2d 1041, 1044 (TTAB 2017) (“We decline to provide any further opportunity for Opposer to replead her likelihood of confusion claim, as it appears that further efforts to plead the claim would be futile.”) (citations omitted). Cancellation No. 92077410 16 A claim of abandonment, however, would not necessarily be precluded to the extent the factual predicate for such a claim arose after the opposition was instituted. For example, in support of his claim of nonuse, Fitz alleges in the petition to cancel that a “search of the marketplace uncovered no offers for sale of [Venegas’s] services under [Venegas’s] the LOS YAGUARU DE ANGEL VENEGAS mark.” 1 TTABVUE 15, ¶ 27. Given the lack of detail, it is unclear when this search was conducted, and whether the results therefrom support an abandonment claim that could have been, but was not, brought in the prior opposition. At the very least, the petition to cancel does not include the requisite allegations of three-years of nonuse or nonuse with the intent not to resume use. Lewis Silkin LLP v. Firebrand LLC, 129 USPQ2d 1015, 1018 (TTAB 2018); SaddleSprings, Inc. v. Mad Croc Brands, Inc., 104 USPQ2d 1948, 1950 (TTAB 2012) (“[P]etitioner has alleged that respondent has either never used the registered mark in commerce or completely ceased using the mark in commerce, in connection with the goods identified in the registration, for at least a period of three consecutive years. The facts alleged by petitioner set forth a prima facie claim of abandonment.”) (citations omitted); Toufigh v. Persona Parfum, Inc., 95 USPQ2d 1872, 1875 (TTAB 2010) (“There are two elements to an abandonment claim: non-use and an intent not to resume use.”). In view thereof, we find no genuine dispute of material fact that claim preclusion bars Fitz’s non-ownership claim. Thus, Venegas’s motion for summary judgment against this claim is granted. Cancellation No. 92077410 17 However, we find a genuine dispute of material fact that Fitz’s abandonment claim is precluded, and, accordingly, Venegas’s motion for summary judgment against this claim is denied.10 Amended Pleading Allowed If the Board finds that a complaint fails to state a claim upon which relief can be granted, the Board generally will allow the plaintiff an opportunity to file an amended pleading. See Wise F&I, LLC v. Allstate Ins. Co., 120 USPQ2d 1103, 1110 (TTAB 2016); Intellimedia Sports Inc. v. Intellimedia Corp., 43 USPQ2d 1203, 1208 (TTAB 1997). In view thereof, Fitz is allowed until February 25, 2022 to file an amended petition to cancel wherein he sufficiently repleads a claim of abandonment in light of what has been discussed herein, failing which the cancellation will proceed only on the likelihood of confusion claim to the extent that claim relies on Mexican Registration Nos. 1709180, 1726554, and 1727401 and U.S. applications Serial Nos. 87414262 and 90778406. If repleading, Fitz should delineate his claims using separate headings to make it clear what claims are alleged and which factual allegations support which claims, as he did in the initial petition to cancel. Venegas is allowed until March 28, 2022 to file her answer or otherwise respond to Fitz’s operative pleading. 10 The parties should note that the evidence submitted in connection with the motion for summary judgment is of record only for consideration of that motion. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial period. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1465 n.2 (TTAB 1993). In addition, the parties should not infer that what we have identified as genuine disputes of material fact are the only issues remaining for trial. Cancellation No. 92077410 18 Schedule Proceedings are resumed, and dates are reset as follows: Deadline for Discovery Conference 4/27/2022 Discovery Opens 4/27/2022 Initial Disclosures Due 5/27/2022 Expert Disclosures Due 9/24/2022 Discovery Closes 10/24/2022 Plaintiff’s Pretrial Disclosures Due 12/8/2022 Plaintiff’s 30-day Trial Period Ends 1/22/2023 Defendant’s Pretrial Disclosures Due 2/6/2023 Defendant’s 30-day Trial Period Ends 3/23/2023 Plaintiff’s Rebuttal Disclosures Due 4/7/2023 Plaintiff’s 15-day Rebuttal Period Ends 5/7/2023 Plaintiff’s Opening Brief Due 7/6/2023 Defendant’s Brief Due 8/5/2023 Plaintiff’s Reply Brief Due 8/20/2023 Request for Oral Hearing (optional) Due 8/30/2023 General Information Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is taken and introduced out of the presence of the Board during the assigned testimony periods. The parties may stipulate to a wide variety of matters, and many requirements relevant to the trial phase of Board proceedings are set forth in Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the manner and timing of taking testimony, matters in evidence, and the procedures for submitting and serving testimony and other evidence, including affidavits, declarations, deposition transcripts and stipulated evidence. Trial briefs shall be submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at Cancellation No. 92077410 19 final hearing will be scheduled only upon the timely submission of a separate notice as allowed by Trademark Rule 2.129(a).