Tiger Lily Ventures Ltd. v. Barclays Capital Inc.

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

THIS ORDER IS A P.O. Box 1451

PRECEDENT OF THE Alexandria, VA 22313-1451

TTAB General Contact Number: 571-272-8500

EJW Mailed: September 20, 2017

Opposition No. 91219477 (parent)

Opposition No. 91219478

Barclays Capital Inc.

v.

Tiger Lily Ventures Ltd

and

Opposition No. 91219549

Tiger Lily Ventures Ltd.

v.

Barclays Capital Inc.

ELIZABETH J. WINTER, INTERLOCUTORY ATTORNEY:

These consolidated cases now come up for consideration of the fully-briefed motion

filed April 5, 2017, by Tiger Lily Ventures Ltd. (hereafter “Tiger Lily”) to strike

certain declarations and evidence filed by Barclays Capital Inc. (hereafter “Barclays”)

during its main testimony period as plaintiff in Opposition Nos. 91219477 and

91219478.1

1 Barclays’ testimony period closed on March 22, 2017 (76 TTABVUE) and these proceedings

were suspended on April 6, 2017, to consider the motion. Barclays obtained an extension of

Opposition Nos. 91219477, 91219478, and 91219549

The Board has considered the parties’ briefs on the contested motion, but for the

sake of efficiency does not repeat or discuss all of the arguments or submissions, and

does not address irrelevant arguments. Guess? IP Holder LP v. Knowluxe LLC, 116

USPQ2d 2018, 2019 (TTAB 2015). Furthermore, the Board presumes the parties’

familiarity with the arguments made in connection with the subject motion and the

evidence at issue.

Background

Tiger Lily seeks to register the mark LEHMAN BROTHERS in standard

characters for “Bar services; Restaurant services”2; and for “Spirits” and “Beer”3.

Barclays seeks to register LEHMAN BROTHERS in standard characters for

securities brokerage and various investment and financial services4. In its notices of

opposition, Barclays asserts it is the owner by assignment of the LEHMAN and

time to file its response to the motion to strike and Tiger Lily’s reply brief was timely filed on

May 22, 2017.

2 Application Serial No. 86298069, filed on June 2, 2014, claiming a bona fide intent to use

the mark under Trademark Act § 1(b), 15 U.S.C. § 1051(b); “BROTHERS” disclaimed; the

subject of Opposition No. 91219477.

3 Application Serial No. 85868892, filed on March 6, 2013, claiming a bona fide intent to use

the mark under Trademark Act § 1(b), 15 U.S.C. § 1051(b); “BROTHERS” disclaimed; the

subject of Opposition No. 91219478.

4 Application Serial No. 86081143, filed October 2, 2013, for “Securities brokerage services;

investment consulting services; investment banking services; merchant banking services;

financial and investment management services; financial planning and investment advisory

services; financial research services; administration and valuation of financial investments;

financial sponsorship of sporting, charitable and educational events; providing consultancy,

information and advisory services relating to all the foregoing;” claiming a bona fide intent

to use the mark under Trademark Act § 1(b), 15 U.S.C. § 1051(b); claiming acquired

distinctiveness under Section 2(f) of the Trademark Act; the subject of Opposition No.

91219549.

2

Opposition Nos. 91219477, 91219478, and 91219549

LEHMAN BROTHERS marks; that such marks are famous; that confusion is likely

between Barclays’ previously used marks and Tiger Lily’s mark; that registration of

Tiger Lily’s mark will dilute the distinctive quality of Barclays’ marks; that Tiger

Lily’s mark falsely suggests a connection between Tiger Lily and Barclays (and/or

Lehman Brothers, the predecessor-in-interest of Barclays); and that at the time Tiger

Lily filed its applications, it did not have a bona fide intent to use the mark in

commerce. In Tiger Lily’s notice of opposition in Opposition No. 91219549, Tiger Lily

alleges that Barclays did not have a bona fide intent to use the LEHMAN

BROTHERS mark in commerce when it filed its application; and that Barclays’

verified statement of bona fide intent to use the mark in commerce “was submitted

fraudulently and renders the Application void ab initio.”5

Tiger Lily requests an order striking Barclays’ two testimonial declarations and

various exhibits attached thereto or submitted by notice of reliance based on

procedural and substantive grounds. The Board approaches evidentiary objections

differently depending upon whether they are procedural or substantive in nature, as

discussed below.

Motion to Strike

I. Procedural Grounds

Tiger Lily moves to strike certain exhibits to Barclays’ four notices of reliance on

the basis that they suffer from procedural defects. Specifically, for each exhibit

5 See the discussion regarding the sufficiency of the pleadings in Opposition No. 91219549

infra.

3

Opposition Nos. 91219477, 91219478, and 91219549

identified in the numbered paragraphs below, Tiger Lily asserts that Barclays has

provided an insufficient description of the relevance of the documents and insufficient

explanation of their association with particular facts relevant to particular claims

and defenses, and that the documents in each exhibit are so numerous that they

should be accompanied by a properly indexed and associated schedule (91 TTABVUE

9-10). Additionally, Tiger Lily argues that Exhibits 1 and 4 to Barclays’ second notice

of reliance should be stricken because they comprise improper subject matter for a

notice of reliance, namely, quarterly reports (Exhibit 4) and newswire articles

(Exhibits 1 and 4) (91 TTABVUE 11).6

Objections to testimony or to a notice of reliance grounded in asserted procedural

defects are waived unless raised promptly, when there is an opportunity to cure. See,

e.g., Corporacion Habanos SA v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1093

(TTAB 2012) (objection that relevance of evidence not identified waived where raised

for first time with brief because procedural deficiency could have been cured if

objection had been raised seasonably); Beech Aircraft Corp. v. Lightning Aircraft Co.,

1 USPQ2d 1290, 1291 (TTAB 1986) (objection waived where respondent received

notice of reliance without referenced publications appended thereto but did not raise

the issue until briefing); see also Trademark Board Manual of Procedure (TBMP)

§ 707.02(b) (June 2017). Tiger Lily has promptly raised its objections to the

6 79 TTABVUE 115-247 and 80 TTABVUE 2113-2236. In fact, only a portion of Exhibit 1

comprises improper materials. Therefore, the better practice would have been for Tiger Lily

to indicate in its motion to strike which particular pages in the exhibits are at issue using

the pages as they appear in TTABVUE (e.g., 80 TTABVUE 2235-36). Cf. Trademark Trial

and Appeal Board Manual of Procedure (TBMP) § 801.03 (June 2017).

4

Opposition Nos. 91219477, 91219478, and 91219549

descriptions of relevance set forth in the notices of reliance. Accordingly, the Board

turns first to whether those descriptions are sufficient.

A. Descriptions of Relevance in Notices of Reliance

1) First Notice of Reliance, Exhibit 9. The description provided for the 331 pages

is as follows: “The TSDR records and copies of the registration certificates for

numerous third party registrations evidence registration of the same mark for

financial reporting, education and advice, wine clubs and retail services,

including retail markets that sell food and beverages attached hereto as

Exhibit 9 and [are] offered as evidence that consumers would expect these

goods and services to emanate from the same source.” (77 TTABVUE 4).

2) Second Notice of Reliance, Exhibits 1, 2, 3 and 4. The description provided for

these four groups of documents (totaling 3027 pages) states that the evidence

has been “offered to show that the LEHMAN Names and Marks have strength,

fame and recognition through long and extensive public exposure and use, that

Lehman Brothers’ rights in the LEHMAN Names and Marks were transferred

to and are owned by Barclays, and continuing use and intent to use, as relevant

to Barclays’ claims of likelihood of confusion, dilution and false suggestion of a

connection, and in defense of Tiger Lily’s claims of priority, fraud and lack of

bona fide intent to use” (79 TTABVUE 3, 8, 27-28, 102).

3) Third Notice of Reliance, Exhibit 9. The description provided for this exhibit

similarly states that the evidence (comprising 1715 pages) has been “offered to

show that the LEHMAN Names and Marks have strength, fame and

5

Opposition Nos. 91219477, 91219478, and 91219549

recognition through long and extensive public exposure and use, as relevant to

Barclays’ claims of likelihood of confusion, dilution and false suggestion of a

connection, and in defense of Tiger Lily’s claims of priority, fraud and lack of

bona fide intent to use” (81 TTABVUE 10).

4) Fourth Notice of Reliance, Exhibit 4. The description for this exhibit states that

the documents (comprising 1454 pages) “are offered as evidence of Tiger Lily’s

lack of bona fide intent to use the LEHMAN BROTHERS mark” (84 TTABVUE

4).

Pursuant to the 2017 amendments to Trademark Rule 2.122(g), 37 C.F.R.

§ 2.122(g), a notice of reliance must indicate generally the relevance of the evidence

and associate it with one or more issues in the proceeding.7 To meet that requirement,

the offering party should associate the materials with a specific factor relevant to a

specific and pleaded claim or defense, or a specific fact relevant to determining a

particular claim or defense. See FUJIFILM SonoSite, Inc. v. Sonoscape Co., 111

USPQ2d 1234, 1236-37 (TTAB 2014) (citing Safer Inc. v. OMS Inv. Inc., 94 USPQ2d

1031, 1039-40 (TTAB 2010)); see also TBMP § 704.02. If the propounding party

introduces a group of documents to support more than one element of a claim or

defense, or more than one relevant fact, it should indicate the specific element or fact

7 See Miscellaneous Changes To Trademark Trial And Appeal Board Rules, 81 Fed. Reg.

69950, 69952 (Oct. 7, 2016) (“To alleviate any uncertainty, this final rule adds a paragraph

to the requirements for a notice of reliance, specifically, to require that the notice indicate

generally the relevance of the evidence and associate it with one or more issues in the

proceeding. In an effort to curtail motion practice on this point, the rule explicitly states any

failure of a notice of reliance to meet this requirement will be considered a curable procedural

defect. This codifies the holding in FUJIFILM SonoSite, Inc. v. Sonoscape Co., Ltd., 111

USPQ2d 1234, 1237 (TTAB 2014).”).

6

Opposition Nos. 91219477, 91219478, and 91219549

supported by each document in the group. FUJIFILM, 111 USPQ2d at 1236 (citing

Safer, 94 USPQ2d at 1040). The Board in FUJIFILM set forth an illustration of the

foregoing requirement, which is relevant here:

For example, if printed materials or Internet web pages introduced through

a notice of reliance are submitted to show the similarity of the products, the

similarity of the channels of trade, and the strength of the mark, the

propounding party should identify which of the documents support each

element or fact (e.g., plaintiff’s exhibits 1-10 demonstrate the similarity of

the products, plaintiff’s exhibits 3-5 and 11-15 demonstrate the similarity

of the channels of trade, and plaintiff’s exhibits 7-8, 16 and 16-30

demonstrate the strength of plaintiff's mark). . . . Under [this] practice, [a

party’s] notice of reliance would not be acceptable [if the party] submitted

the documents to prove three likelihood of confusion elements, but did not

associate each document or group of documents with a specific likelihood of

confusion factor. . . . The Board will not expend its resources guessing which

pages the propounding party is relying upon, particularly when an exhibit

comprises such a large number of pages. [The propounding party must

indicate] which web page or group of web pages within each exhibit support

each specific du Pont factor. Id.

Turning initially to the first notice of reliance (Exhibit 9) and the fourth notice of

reliance (Exhibit 4), the Board finds the descriptions in those notices of reliance to be

sufficiently narrow or focused and, therefore, to be acceptable. Accordingly, Tiger

Lily’s motion to strike is denied with respect to the asserted procedural defects with

those exhibits.

As regards Barclays’ second notice of reliance (Exhibit 1, 2, 3 and 4) and third

notice of reliance (Exhibit 9), although Barclays has included in each notice a chart

listing all of its exhibits and their respective pages numbers using BATES numbers,

Barclays has only provided a description or function of the attached documents that

is so general as to be meaningless. The entirety of each exhibit is said to show three

facts:

7

Opposition Nos. 91219477, 91219478, and 91219549

• LEHMAN Names and Marks have strength, fame and recognition through

long and extensive public exposure and use,

• Lehman Brothers’ rights in the LEHMAN Names and Marks were transferred

to and are owned by Barclays, and

• continuing use and intent to use,

and all the foregoing are assertedly relevant to:

• Barclays’ claims of likelihood of confusion, dilution and false suggestion of a

connection, and

• its defense to Tiger Lily’s claims of priority, fraud and lack of bona fide intent

to use.

Because Barclays has not identified any particular pages in the five exhibits as being

relevant to any particular element of its claims or defenses, such as any specific

du Pont factor in conjunction with the general description, Barclays has failed to

comply with the requirements set forth in FUJIFILM, and as a result, the 2017

amendment to Trademark Rule 2.122(g). Barclays’ failure to delineate the relevant

element of a claim or defense for specific pages within its exhibits is particularly

problematic because of the sheer volume of pages included in these exhibits. Although

Barclays may explain its exhibits in its trial brief, Tiger Lily is entitled to know, prior

to its testimony period, which pages of each exhibit assertedly support which claim,

defense or element of a claim or defense.

Failure to comply with Trademark Rule 2.122(g) and FUJIFILM is a curable

defect. Further, Barclays’ testimony period need not be reopened to allow for such

8

Opposition Nos. 91219477, 91219478, and 91219549

cure. Therefore, Barclays is allowed until TWENTY (20) DAYS from the mailing

date of this order to file and serve a revised notice of reliance relating to Exhibits 1,

2, 3 and 4 of its second notice of reliance and Exhibit 9 of its third notice of reliance,

indicating which pages8 of the exhibits relate to which du Pont factor, element of the

dilution claim,9 element of the false suggestion claim, or defense to a particular Tiger

Lily claim. If Barclays fails to comply, the exhibits will not be considered. Note that

the Board, at final decision, will not be limited to associating a piece of evidence only

with the issue or element with which the proffering party associated it. Rather, the

Board may treat any evidence of record as probative of any issue or element that

arises in the proceedings.

Accordingly, with respect to Barclays’ second notice of reliance, (Exhibits 1, 2, 3

and 4) and third notice of reliance (Exhibit 9), Tiger Lily’s motion to strike is granted,

with leave to cure. Barclays should not resubmit its exhibits with the revised notice

of reliance.

B. Type of Documents Attached to Second Notice of Reliance

As discussed supra, Tiger Lily argues that newswire service reports and quarterly

reports contained in Exhibits 1 and 4 of the second notice of reliance should be

stricken. Generally, financial reports may not be made of record by a notice of

8Barclays should identify the specific pages using the pages as they are numbered in

TTABVUE.

9 To the extent that Barclays contends that particular items said to evidence fame are

sufficient for both the 2(d) likelihood of confusion claim and the dilution claim, it may so

state.

9

Opposition Nos. 91219477, 91219478, and 91219549

reliance. See Research in Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1929 (TTAB

2009); Minnesota Mining & Mfg. Co. v. Stryker Corp., 179 USPQ 433, 434 (TTAB

1973). However, one of two quarterly reports included in Exhibit 4 (80 TTABVUE

2135-2143) is actually a segment of a newswire report retrieved from the

LEXIS/NEXIS database. The other newswire reports included in Exhibits 1 and 4 are

also retrieved from the LEXIS/NEXIS database.10 The Board routinely accepts

printouts of articles obtained from the LEXIS/NEXIS database, when filed under

notice of reliance, so long as the date and source of each article are clear. See Alcatraz

Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1759 (TTAB 2013);

Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1232 (TTAB 1992); Int’l Assn. of Fire

Chiefs v. H. Marvin Ginn Corp., 225 USPQ 940, 942 n.6 (TTAB 1985), rev’d on other

grounds, 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986) (excerpts from the Lexis/Nexis

database, including stories published by wire services, were admissible through

notice of reliance because the materials “clearly identify the excerpted articles by

their dates of publication and sources, all of which are readily available in published

materials”); see also In re Cell Therapeutics Inc., 67 USPQ2d 1795, 1797 (TTAB 2003).

In this case, the LEXIS/NEXIS printouts comprising newswire reports show the date

and source of each report. Therefore, with respect to Barclays’ printouts of newswire

service reports from the LEXIS/NEXIS database (inclusive or not of a quarterly

report), Tiger Lily’s motion to strike is denied. However, such reports have limited

probative value, because they may only be used for what they show on their face and

10 Exhibit 1 (79 TTABVUE, 181, 182); Exhibit 4 (80 TTABVUE 2114-31, 2144-72, 2175-78,

2181-84, 2193-2202, 2235-36).

10

Opposition Nos. 91219477, 91219478, and 91219549

not for the truth of the matter asserted in the reports, and also because the extent of

exposure of these reports to relevant consumers is unknown. As to the other quarterly

report submitted by Barclays (80 TTABVUE 2185), said report constitutes part of a

press release issued by the Lehman Brothers Inc. Trustee. Press releases are not

proper subject matter for a notice of reliance. See Hard Rock Café Licensing Corp. v.

Elsea, 48 USPQ2d 1400, 1403 (TTAB 1998); Colt Indus. Operating Corp. v. Olivetti

Controllo Numerico S.p.A., 221 USPQ 73, 74 n.2 (TTAB 1983). Accordingly, Tiger

Lily’s motion to strike is granted, and that press release is hereby stricken. See Fed.

R. Civ. P. 12(f).

II. Substantive Grounds

Tiger Lily also complains on substantive grounds that the two testimonial

declarations have no probative value and that the exhibits thereto, as well as the

exhibits filed under all four notices of reliance, are needlessly cumulative, irrelevant

and repetitive.11 As to these substantive grounds, it is well-settled that such

objections are considered by the Board only at final hearing, if properly maintained.

See, e.g., FUJIFILM, 111 USPQ2d at 1236; Alcatraz Media Inc. v. Chesapeake Marine

Tours Inc., 107 USPQ2d 1750, 1755 (TTAB 2013) (citing Krause v. Krause Publ’ns

Inc., 76 USPQ2d 1904, 1907 (TTAB 2005) and Marshall Field & Co. v. Mrs. Fields

11 Tiger Lily points out that Exhibit 10 comprises 800 pages; Exhibit 11 comprises 928 pages;

Exhibit 21 has 1379 pages; Exhibit 29 has 364 pages; Exhibit 30 has 202 pages; Exhibit 44

has 1944 pages; and Exhibit 45 has 670 pages. Similarly, Exhibit 9 to the first notice of

reliance comprises 331 pages; Exhibit 2, 3, and 4 to the second notice of reliance have 667,

2110, and 123 pages, respectively; Exhibit 9 to the third notice of reliance comprises 1715

pages; and Exhibit 4 to the fourth notice of reliance comprises 1454 pages. The Board notes

that Exhibit 1 to the second notice of reliance comprises 132 pages.

11

Opposition Nos. 91219477, 91219478, and 91219549

Cookies, 25 USPQ2d 1321, 1326 (TTAB 1992) (internal citations omitted)); M-Tek Inc.

v. CVP Sys. Inc., 17 USPQ2d 1070, 1073 (TTAB 1990) (since a ruling on the

admissibility of exhibits under the Federal Rules of Evidence is deferred until trial,

ruling on the question of whether documents are admissible in the first instance also

is deferred until final hearing); see also TBMP § 502.01 (“It is the policy of the Board

not to read trial testimony or examine other trial evidence prior to final decision.”).

While recognizing that the Board “ordinarily” does not strike testimony on the

basis of substantive objections prior to final hearing, as discussed in TBMP § 533.03,

Tiger Lily argues in its motion that the reference to “ordinarily” leaves a window to

consider at this stage of the proceeding whether certain evidence should not form a

part of the record when case law provides that the evidence has no probative value.

Specifically, Tiger Lily contends that under In re Gray, Inc., 3 USPQ2d 1558 (TTAB

1987), the declarations of Barclays’ in-house counsel and its outside counsel’s former

paralegal should be stricken now because the declarations are biased and lack

credibility. Tiger Lily also suggests that the testimony is inappropriate under 37

C.F.R. § 10.63.12 Under this rule, an attorney generally may not represent a party on

whose behalf the practitioner is likely to appear as a witness, and if an attorney

becomes a witness on behalf of a party, withdrawal from representation may be

necessary.13

12 Effective May 3, 2013, 37 C.F.R. Part 10 was removed. See 78 FR 20180, April 3, 2013. The

operative rule is 37 C.F.R. § 11.307.

13 The Board denies Tiger Lily’s request for an oral hearing on its substantive objections to

the two declarations. The issues are adequately briefed, and it is not the practice of the Board

to have an oral hearing on a motion unless necessary to clarify the issues to be decided.

12

Opposition Nos. 91219477, 91219478, and 91219549

Tiger Lily also argues that the Board should address the substantive issues now

because there has been created by amended Trademark Rule 2.123(c) a “cost-shifting

burden” for the adverse party who wishes to exercise its right to orally cross-examine

a witness presented by way of affidavit or declaration. In particular, Tiger Lily

argues, “[t]he objecting party is forced to bear the costs of such deposition and

transcription, and then be compelled to brief the Board on its lack of admissibility,

lack of probative value and weight … such an approach, in the face of clear TTAB

precedent against attorneys giving evidence, unnecessarily burdens the questioning

party by inflating the costs of the deposition process, which could be saved by an

earlier ruling” (91 TTABVUE 6).

Pursuant to the 2017 amendments to Trademark Rules 2.123(a)(1) and 2.123(c),

37 C.F.R. §§ 2.123(a)(1) and 2.123(c), if a party submits the testimony of a witness in

the form of an affidavit or a declaration, the adverse party may elect to take and must

bear the expense of oral cross-examination of the affiant or declarant. Tiger Lily in

essence seeks to eliminate the minor cost-shifting effect of the rules change, by having

the Board make substantive evidentiary determinations in response to a motion to

strike. The Board addressed concerns regarding the fairness of the cost-shifting effect

in its response to comments published in “Miscellaneous Changes to Trademark Trial

and Appeal Board Rules,” 81 Fed. Reg. 69950, 69964 (Oct. 7, 2016), stating that

Ordinarily, arguments on a motion are, and should be, adequately presented in the written

briefs, and therefore the Board rarely grants a request for an oral hearing on a motion. See

TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 1313 n.3 (TTAB 1989) (exception to usual

practice is not warranted); TBMP § 502.03.

13

Opposition Nos. 91219477, 91219478, and 91219549

“[e]ven with oral testimony depositions, the party cross-examining the witness must

pay its own travel expense and its own attorney expenses” and that “the provision

that the party seeking oral cross-examination must bear the expense of oral cross-

examination is intended to cover the expense of the court reporter.” Id. Therefore, to

the extent that an adverse party seeks to cross-examine a testimonial declarant to

test the declarant’s credibility, to question the declarant’s statements, or to lodge

objections, the only new costs to that party are that of the court reporter and the cost

of the venue, if necessary. This partial cost-shifting, subject to notice and comment

during the rulemaking process, was determined to support the goal of the final rule

to create litigation efficiencies by “minimiz[ing] the ability of a party seeking cross-

examination to thwart the other party’s efforts to rein in the cost of litigation by

opting for testimony by affidavit.” Id.

Further, though Tiger Lily argues that it should not be required to conduct oral

cross-examination in order to lodge a substantive objection to declaration testimony,

it need not elect oral cross-examination in order to lodge a substantive objection to

declaration testimony. Such an objection may be raised by a motion to strike and

maintained in the brief, or raised in the brief for the first time. Genesco Inc. v. Martz,

66 USPQ2d 1260, 1264 (TTAB 2003) (“[W]ith regard to substantive objections (e.g.,

improper rebuttal, hearsay), these need not be raised by motion, but rather should be

raised in the objecting party’s brief on the case.”); see also Fed. R. Civ. P. 32(d)(3)(A);

TBMP § 707.03(c) (“[T]he Board will consider [a substantive objection] even if the

14

Opposition Nos. 91219477, 91219478, and 91219549

objection is raised for the first time in or with a party’s brief on the case.).14 Thus,

there is not necessarily a cost-shifting burden incurred solely for raising substantive

objections.

Moreover, the fact that a party may now submit unilaterally the testimony of its

witnesses in the form of an affidavit or a declaration, the result of which the adverse

party must bear the costs of cross-examination if elected, does not affect how evidence

is presented to the Board, that is, outside of its presence followed by submission to a

panel of judges for final decision. See Genesco Inc., 66 USPQ2d at 1263 (discussing

how evidence is presented before the Board and long-standing policy not to read trial

testimony and review evidence prior to submission of the case to judge panel).

For all of these reasons, the shift in court-reporting costs to the electing party does

not entitle it to an earlier ruling on substantive objections than otherwise would be

available with a direct testimony deposition.

With respect to Tiger Lily’s argument that TBMP § 533.03 would allow an

interlocutory order with respect to Tiger Lily’s substantive objections, the Board

disagrees. Amended Trademark Rule 2.123(j) explicitly provides that “[o]bjections to

the competency of a witness or to the competency, relevancy, or materiality of

14 However, as with objections to evidence based on asserted procedural defects (see

discussion supra Section I.), some objections to testimony that are essentially procedural in

nature are waived unless raised promptly, when there is an opportunity to cure. See, e.g.,

Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1070-71 (TTAB 2011)

(objection concerning authentication made in brief but not in testimonial deposition

procedural in nature and not timely raised); Chase Manhattan Bank, N.A. v. Life Care

Services Corp., 227 USPQ 389, 391 (TTAB 1985) (foundation objections to a survey submitted

by opposer raised for the first time in brief waived); see also TBMP § 707.03(c).

15

Opposition Nos. 91219477, 91219478, and 91219549

testimony . . . may not be considered until final hearing.”15 In view of the foregoing,

to the extent that Tiger Lily argues that the testimonial declarations of Mr.

Greenberg and Mr. Duran are irrelevant and have little probative value or that the

exhibits thereto and the notices of reliance are needlessly cumulative and repetitive,

said objections will be considered at final hearing so long as they are raised at the

time specified in Fed. R. Civ. P. 32(d)(3)(A) and in Tiger Lily’s trial brief. Trademark

Rule 2.123(j), 37 C.F.R. § 2.123(j). See Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d

1629, 1632 (TTAB 2007); Hard Rock Café Int’l (USA) Inc. v. Elsea, 56 USPQ2d 1504,

1507 n.5 (TTAB 2000) (objection to exhibit raised during deposition but not

maintained in brief deemed waived); Reflange Inc. v. R-Con Int’l, 17 USPQ2d 1125,

1126 n.4 (TTAB 1990); see also TBMP § 707.03(c). Accordingly, the request that the

Board strike the above-identified declarations based on substantive objections is

deferred for consideration at final hearing.

Pleadings in Opposition No. 91219549

Although Tiger Lily asserts on the ESTTA cover sheet and in the preamble of its

pleading that it opposes registration on the ground of likelihood of confusion, the

Board finds no allegations in the pleading that support such claim. In addition, the

purported fraud claim is insufficiently pleaded. See In re Bose Corp., 580 F.3d 1240;

91 USPQ2d 1938, 1939 (Fed. Cir. 2009); Torres v. Cantine Torresella S.r.l., 808 F.2d

46, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986); Fed. R. Civ. P. 9(b). Tiger Lily is allowed

15 Moreover, the TBMP is merely advisory and is not binding upon the Board. See Midwestern

Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1443

(Fed. Cir. 2012) (Dyk concurring and dissenting) (Unlike the federal regulations, the TMEP,

“does not have the force and effect of law.”); TBMP (Introduction).

16

Opposition Nos. 91219477, 91219478, and 91219549

until TWENTY (20) DAYS from the mailing date of this order to submit an amended

pleading with sufficient claims, failing which those claims shall be dismissed with

prejudice. Barclays is allowed until TWENTY (20) DAYS from the date of service of

the amended pleading to file an answer thereto.

Summary; Proceedings Remain Suspended

As discussed herein, Tiger Lily’s motion to strike is granted in part, denied in part,

and deferred in part, and Barclays is allowed until TWENTY (20) DAYS from the

mailing date of this order to submit to the Board revised notices of reliance relating

to Exhibits 1, 2, 3 and 4 of its second notice of reliance and Exhibit 9 of its third notice

of reliance.

On April 5, 2017, Tiger Lily filed notices of election of oral cross-examination of

Barclays’ testimonial witnesses, Anthony L. Greenberg and Ignacio V. Duran for

May 2, and May 4, 2017, respectively. Such notices were filed within 20 days from

the date of service of the affidavit or declaration, and therefore were timely. See

Trademark Rule 2.123(c), 37 C.F.R. § 2.123(c).

Oral cross examination of an affiant or declarant must be completed within 30

days from the date of service of the notice of election. Id. However, these proceedings

were suspended for consideration of the subject motion to strike prior to the scheduled

dates for cross-examination. Therefore, Tiger Lily is allowed until THIRTY (30)

DAYS from the date of service of Barclays’ revised notices of reliance (in accordance

with the foregoing order) to conduct the elected cross-examination of Barclays’

witnesses. The parties are directed to file a notice of completion of the cross-

17

Opposition Nos. 91219477, 91219478, and 91219549

examination within five days from the date of its completion. Upon receipt of said

notice, proceedings will resume and remaining trial dates will be reset by Board

order.

☼☼☼

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