Wisconsin Cheese Group, LLC v. Comercializadora de Lácteos y Derivados, S.A. de C.V.

United States Patent and Trademark Office

THIS ORDER IS A Trademark Trial and Appeal Board

PRECEDENT OF THE P.O. Box 1451

TTAB Alexandria, VA 22313-1451

General Contact Number: 571-272-8500

Krisp Mailed: March 30, 2016

Opposition No. 91224131 (parent case)

Opposition No. 91224900

Wisconsin Cheese Group, LLC

v.

Comercializadora de Lácteos y Derivados,

S.A. de C.V.

Before Shaw, Adlin and Heasley.

Administrative Trademark Judges.

By the Board:

Before the Board are Comercializadora de Lácteos y Derivados, S.A. de C.V.’s (“Ap-

plicant”) motions to amend the identifications of goods in its two opposed applications,

and its motion to consolidate the two opposition proceedings concerning those appli-

cations. We first take up the motion for consolidation.

I. Motion for Consolidation

On December 4, 2015, Applicant filed, in Opposition No. 91224900, a motion to

consolidate that case with Opposition No. 91224131.1

A. Standard

When cases involving common questions of law or fact are pending before the

Board, the Board may order consolidation of the cases. Fed. R. Civ. P. 42(a); Regatta

1 A copy of the filing was also entered into the record for Opposition No. 91224131.

Opposition Nos. 91224131 (parent case) and 91224900

Sport Ltd. v. Telux-Pioneer Inc., 20 USPQ2d 1154 (TTAB 1991); Estate of Biro v. Bic

Corp., 18 USPQ2d 1382, 1384 n.3 (TTAB 1991). In determining whether to consoli-

date proceedings, the Board will weigh the savings in time, effort and expense that

may be gained from consolidation against any prejudice or inconvenience that may

be caused thereby. Consolidation is discretionary with the Board, and may be ordered

upon motion granted by the Board, or upon stipulation of the parties approved by the

Board, or upon the Board’s own initiative. World Hockey Ass’n v. Tudor Metal Prods.

Corp., 185 USPQ 246, 248 (TTAB 1975); TBMP § 511 (2015).

B. Analysis

Consolidation is appropriate here. As explained below, the proceedings involve

common questions of law and fact.

First, each of the captioned proceedings involves an application based on Trade-

mark Act Section 1(b), 15 U.S.C. § 1051(b), to register the mark SOYSALUD (stand-

ard characters).

Second, the Opposer and the grounds for opposition are similar. Specifically, Wis-

consin Cheese Group, LLC (“Opposer”) opposes each application on the following

three grounds:

1) likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C.

§1052(d);

2) deceptiveness under Trademark Act Section 2(a), 15 U.S.C. § 1052(a),

specifically alleging, in pertinent part, that “[A]pplicant’s mark contains

the term ‘SOY’ and misdescribes the character, quality, function, com-

position or use of the goods in the Application” and “[P]rospective pur-

chasers are likely to believe that the misdescription actually describes

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Opposition Nos. 91224131 (parent case) and 91224900

all of Applicant’s goods in that all of its goods contain soy (and/or soy-

bean milk), which they do not;”2 and

3) deceptive misdescriptiveness under Trademark Act Section 2(e)(1), 15

U.S.C. § 1052(e)(1), specifically alleging, in pertinent part, that “[A]ppli-

cant’s mark contains the term ‘SOY’ and deceptively misdescribes the

goods in the Application which do not contain soy,” and “[P]rospective

purchasers are likely to believe the misrepresentation.”3

Opposer’s Sections 2(a) and 2(e)(1) claims in both proceedings thus are directed only

to Applicant’s identified goods that do not contain soy.

In both proceedings, Opposer also alleges prior use and registration of a “family”

of SALUD standard character marks,4 namely:

1) Registration No. 3355301 for the mark BIO SALUD! for “dairy-based bever-

ages,” in International Class 29;

2) Registration No. 4335865 for the mark YA SALUD for “nutritional supple-

ments, namely, probiotic drinks,” in International Class 5; and

3) Registration No. 4335866 for the mark YA SALUD for “probiotic drinks,

namely, dairy based beverages,” in International Class 29.

In light of these common questions of law and fact, Applicant’s motion to consoli-

date is granted. Opposition Nos. 91224131 and 91224900 are hereby consolidated and

may be presented on the same record and briefs. Helene Curtis Indus. Inc. v. Suave

Shoe Corp., 13 USPQ2d 1618, 1619 n.1 (TTAB 1989).

2 1 TTABVUE 7 (Opp. No. 91224131); 1 TTABVUE 6-7 (Opp. No. 91224900).

3 1 TTABVUE 7 (Opp. No. 91224131); 1 TTABVUE 7 (Opp. No. 91224900).

4 1 TTABVUE 5 (Opp. No. 91224131); 1 TTABVUE 5 (Opp. No. 91224900).

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Opposition Nos. 91224131 (parent case) and 91224900

The Board file will be maintained in Opposition No. 91224131 as the “parent case.”

Except as discussed below, the parties shall file a single copy of all motions and pa-

pers in the parent case only. Each such filing must caption both oppositions, identi-

fying the parent case first (as in the caption above).

Despite being consolidated, each proceeding retains its separate character and re-

quires entry of a separate judgment. The decision on the consolidated cases shall take

into account any differences in the issues raised by the respective pleadings; a copy

of the decision shall be placed in each proceeding file.5

II. Applicant’s Motions to Amend the Identification of Goods

In each opposition, prior to the time to file, and in lieu of filing, an answer, Appli-

cant filed an unconsented motion to amend its identification of goods.6 As shown be-

low, Applicant proposes to limit its identified goods to soy-based products.

Application Serial No. 86505813

Application Serial No. 86505813, the subject of the parent case, was published for:

coconut-based beverage used as a milk substitute; dairy products excluding

ice cream, ice milk and frozen yogurt; nut-based milk for use as a milk sub-

stitute; soy-based food beverage used as a milk substitute; soybean milk, in

International Class 29;

grain-based beverages, in International Class 30; and

milk of almonds for beverage, in International Class 32.

5 The parties should promptly inform the Board of any other Board proceedings or related

cases involving questions of law or fact in common with the present proceedings within the

meaning of Fed. R. Civ. P. 42, so that the Board can consider whether further consolidation

is appropriate.

6 Opposer did not file a brief in opposition to Applicant’s motions to amend; however, the

motions do not include Opposer’s consent.

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Opposition Nos. 91224131 (parent case) and 91224900

Applicant seeks to amend the identification of goods in International Class 29 as

follows:

coconut-based beverage used as a milk substitute; dairy products excluding

ice cream, ice milk and frozen yogurt; nut-based milk for use as a milk sub-

stitute; soy-based food beverage used as a milk substitute; soybean milk.

Accordingly, the resulting identification of goods would be:

soy-based food beverage used as a milk substitute; soybean milk, in International

Class 29.

Applicant also seeks to delete all of the identified goods in International Classes

30 and 32.

Application Serial No. 86649229

Application Serial No. 86649229, the subject of Opposition No. 91224900, was pub-

lished for:

artificial cream; cheese substitutes; nut-based milk for use as a milk sub-

stitute; sour cream substitutes; soy-based food beverage used as a milk sub-

stitute; yogurt substitutes, in International Class 29; and

ice cream; ice cream substitutes, in International Class 30.

Applicant seeks to amend the identification of goods in the application as follows:7

soy-based artificial cream; soy-based cheese substitutes; nut-based milk

for use as a milk substitute; soy-based sour cream substitutes; soy-based

food beverage used as a milk substitute; soy-based yogurt substitutes; and

ice cream; soy-based ice cream substitutes.

Accordingly, the resulting identification of goods would be:

soy-based artificial cream; soy-based cheese substitutes; soy-based sour

cream substitutes; soy-based food beverage used as a milk substitute; soy-

based yogurt substitutes, in International Class 29; and

7 In setting forth the amendments in the two involved applications, wording in

strikethrough is to be deleted, and wording in bold is to be added.

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Opposition Nos. 91224131 (parent case) and 91224900

soy-based ice cream substitutes, in International Class 30.

A. Standard for Unconsented Motions to Amend Before Trial

As Applicant argues, our decision in Johnson & Johnson v. Stryker Corp., 109

USPQ2d 1077 (TTAB 2013), provides a framework for deciding Applicant’s motion to

amend. Although we generally defer determination of such a timely (i.e., pretrial) un-

consented motion until final decision or until the case is decided upon motion for

summary judgment, see TBMP § 514.03 and cases cited therein, in order to give the

other party or parties fair notice thereof, Stryker held that an unconsented motion to

amend may be granted prior to trial under the following circumstances:

1) the proposed amendment must serve to limit the broader identi-

fication of goods or services;

2) the applicant must consent to the entry of judgment on the

grounds for opposition with respect to the broader identification

of goods or services present at publication;

3) if the applicant wishes to avoid the possibility of a res judicata

effect by the entry of judgment on the original identification, the

applicant must make a prima facie showing that the proposed

amendment serves to change the nature and character of the

goods or services or restrict their channels of trade and customers

so as to introduce a substantially different issue for trial; and

4) where required to support the basis of the subject application, any

specimens of record must support the goods or services as

amended; and the applicant must then introduce evidence during

its testimony period to prove use of its mark with the remaining

goods or services prior to the relevant date as determined by the

application’s filing basis.

Johnson & Johnson v. Stryker, 109 USPQ2d at 1078-79 (citing Drive Trademark

Holdings LP v. Inofin, 83 USPQ2d 1433, 1435 (TTAB 2007)); Giant Food, Inc. v.

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Opposition Nos. 91224131 (parent case) and 91224900

Standard Terry Mills, Inc., 229 USPQ 955, 964 (TTAB 1986); Int’l Harvester Co. v.

Int’l Telephone & Telegraph Corp., 208 USPQ 940, 941 (TTAB 1980).

B. Analysis

We agree with Applicant that, because its involved applications are based on an

intent to use, only the first three Stryker requirements apply. We also agree with

Applicant that it meets the three applicable Stryker requirements.

Obviously, the first requirement is satisfied. Applicant’s amendments to its Inter-

national Class 29 identification of goods in the ’813 Application, and to its Interna-

tional Classes 29 and 30 identifications of goods in the ’229 Application, limit the

broader identifications under which the applications were published for opposition.

The second Stryker requirement is also satisfied. In the parent case, Applicant

makes the following substantively similar statements:

[A]pplicant consents to the entry of judgment on the grounds for

opposition with respect to the broader identification of goods or

services present at publication;8

[I]f the proposed amendment is granted immediately, the scope of

discovery and presentation of evidence on opposer’s Section 2(d)

claim will be narrowed and simplified. The need for discovery,

presentation of evidence and arguments regarding opposer’s

claims under Sections 2(a) and 2(e)(1) will be eliminated entirely.

There is simply no point in requiring the parties to develop and

present evidence and arguments regarding opposer’s second and

third claims when applicant has already agreed to the entry of

judgment on those claims.9

8 4 TTABVUE 3. In Opposition No. 91224900, Applicant makes a nearly identical statement

at 4 TTABVUE 4.

9 4 TTABVUE 4 (emphasis added). In Opposition No. 91224900, Applicant makes a nearly

identical statement at 4 TTABVUE 4-5.

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Opposition Nos. 91224131 (parent case) and 91224900

By way of these statements, Applicant unconditionally consents to judgment as to

the Sections 2(a) and 2(e)(1) claims with respect to the broader identifications of goods

for which the applications were published for opposition.

Turning to the third requirement, Applicant has made a prima facie showing that

the proposed amendments serve to change the nature and character of the goods so

as to introduce a substantially different issue for trial with respect to the Sections

2(a) and 2(e)(1) claims. Indeed, Applicant has deleted all goods that, as published,

were not identified as “soy-based” or containing soy, and has amended the remaining

goods to specifically state that they are “soy-based.” Opposer limited its Sections 2(a)

and 2(e)(1) claims to Applicant’s goods that were not identified as “soy-based” or con-

taining soy. The amended identifications of goods no longer include non-soy goods to

serve as the bases for Opposer’s Section 2(a) and Section 2(e)(1) claims against the

non-soy goods.10

10 Fed. R. Civ. P. 26(b) defines the scope of discovery, “[u]nless otherwise limited,” as including

“nonprivileged matter that is relevant to any party’s claim or defense and proportional to the

needs of the case ….” It also sets forth limits on the scope of discovery. The Board has applied

the principle of proportionality to define the proper subjects of and expanse of inquiry in inter

partes proceedings under various circumstances. Cf. Domond v. 37.37, Inc., 113 USPQ2d

1264, 1268 (TTAB 2015) (proportionality principle applied to interrogatories, document re-

quests and requests for admission); The Phillies v. Philadelphia Consol. Holding Corp., 107

USPQ2d 2149, 2153 (TTAB 2013) (proportionality discussed with respect to requests for ad-

missions). See also TBMP §§ 402.01 and 414(11). For example, a party may not be entitled to

information regarding goods and services not identified in an involved application. See

Sunkist Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ 147, 149 n.2 (TTAB 1985). Here,

while Applicant’s deletion of goods from its applications does not automatically alter the

scope of discovery, the parties should keep these principles in mind as they agree to the ap-

propriate scope of and limits on discovery in this proceeding given the amendments to Appli-

cant’s identification of goods.

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Opposition Nos. 91224131 (parent case) and 91224900

For all of these reasons, Applicant’s motions to amend are granted. Application

Serial Nos. 86505813 and 86649229 will be amended accordingly. Judgment is en-

tered in favor of Opposer as to its Section 2(a) and Section 2(e)(1) claims with respect

to all goods encompassed by Applicant’s broader identifications of goods, except for

the following:

soy-based food beverage used as a milk substitute; soybean milk, in Inter-

national Class 29 (Serial No. 86505813);

soy-based artificial cream; soy-based cheese substitutes; soy-based sour

cream substitutes; soy-based food beverage used as a milk substitute; soy-

based yogurt substitutes, in International Class 29 (Serial No. 86649229);

and

soy-based ice cream substitutes, in International Class 30 (Serial No.

86649229).

III. Going Forward

A. Amended Pleadings

To assure that the pleadings conform to the applications as amended, the Board

directs the parties to file amended pleadings, as appropriate. Accordingly, Opposer is

allowed until thirty days from the mailing date of this order to file an amended notice

of opposition to the amended ‘813 Application in Opposition No. 91224131, and an

amended notice of opposition to the amended ‘229 Application in Opposition No.

91224900, failing which the opposition or oppositions will be dismissed with preju-

dice. Applicant is allowed until thirty days from the date of service of each amended

notice of opposition to file its answer thereto, failing which the proceeding or proceed-

ings may be decided as on default. Despite consolidation, Applicant is directed to file

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Opposition Nos. 91224131 (parent case) and 91224900

each of its answers only in the proceeding to which it pertains. Thereafter, the parties

should commence the practice of filing all motions and papers in the parent case only.

B. Protective Order

The Board notes Opposer’s January 8, 2016 filing of an executed protective order

for protecting the confidentiality of information in these proceedings.11 The order is

applicable to these proceedings. Inasmuch as the Board has consolidated these pro-

ceedings, the parties need not file a copy of the order in Opposition No. 91224900.

C. Schedule

Proceedings are resumed. Conference, disclosure, discovery and trial dates are re-

set as follows:

Deadline for Discovery Conference 6/30/2016

Discovery Opens 6/30/2016

Initial Disclosures Due 7/30/2016

Expert Disclosures Due 11/27/2016

Discovery Closes 12/27/2016

Plaintiff's Pretrial Disclosures Due 2/10/2017

Plaintiff's 30-day Trial Period Ends 3/27/2017

Defendant's Pretrial Disclosures Due 4/11/2017

Defendant's 30-day Trial Period Ends 5/26/2017

Plaintiff's Rebuttal Disclosures Due 6/10/2017

Plaintiff's 15-day Rebuttal Period Ends 7/10/2017

In each instance, a copy of the transcript of testimony, together with copies of doc-

umentary exhibits, must be served on the adverse party within thirty days after com-

pletion of the taking of testimony. Trademark Rule 2.125, 37 C.F.R. § 2.125. Briefs

shall be filed in accordance with Trademark Rules 2.128(a) and (b), 37 C.F.R. §§

11 The filing does not include proof of service, as required under Trademark Rules 2.119(a)

and (b). All future filings must include proof of service.

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Opposition Nos. 91224131 (parent case) and 91224900

2.128(a) and (b). An oral hearing will be set only upon request filed as provided by

Trademark Rule 2.129, 37 C.F.R. § 2.129.

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