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Consent Motion for Suspension in View of Civil Proceeding Certificate

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Consent Motion for Suspension in View of Civil Proceeding Certificate Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1069582 Filing date: 07/21/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding No. 91249003 Filing Party Defendant Société des Produits Nestlé S.A. Other Party Plaintiff The a2 Milk Company Limited Pending Motion Yes, there is a motion currently pending or another motion is being filed concur- rent with this consent motion. Attachments Joint Motion to Suspend.pdf(161080 bytes ) Complaint Braum A2MC USA.pdf(420099 bytes ) Braums v A2MC - Answer.pdf(1883776 bytes ) Consent Motion for Suspension in View of Civil Proceeding The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, Société des Produits Nestlé S.A. hereby requests suspension of this proceeding pending a final determ- ination of the civil action. Trademark Rule 2.117. Société des Produits Nestlé S.A. has secured the express consent of all other parties to this proceeding for the suspension requested herein. Certificate of Service The undersigned hereby certifies that a copy of this filing has been served upon all parties, at their address of record by Email on this date. Respectfully submitted, /Amy J. Tindell/ Amy J. Tindell [email protected], [email protected], [email protected] 07/21/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD The a2 Milk Company Limited, Opposition No.: 91249003 Opposer-Counterclaim Defendant, Applicant-Counterclaim Plaintiff Mark: v. Société des Produits Nestlé S.A, Applicant-Counterclaim Plaintiff Serial No.: 88176317 Applicant-Counterclaim Plaintiff. Opposer-Counterclaim Defendant Marks: A2 MILK TRUE A2 Opposer-Counterclaim Defendant Reg. Nos.: 3464046, 5311685, 5388849 Société des Produits Nestlé S.A, Opposition No.: 91251140 Opposer, Mark: ATWO v. Serial No: 88127337 The a2 Milk Company Limited, Applicant. Société des Produits Nestlé S.A., Opposition No.: 91254891 Opposer, Mark: A2 TRUE v. Serial No: 87799301 The a2 Milk Company Limited, Applicant. JOINT MOTION TO SUSPEND PENDING CIVIL LITIGATION Pursuant to C.F.R. § 2.117(a) and TMBP § 510.02, Société des Produits Nestlé S.A., Applicant and Counterclaim Plaintiff in Opp. No. 91249003 and Opposer in Opp. Nos. 91251140 and 91254891 (“Nestlé”), and The a2 Milk Company Limited, Opposer and Counterclaim Defendant in Opp. No. 91249003 and Applicant in Opp. Nos. 91251140 and 91254891 (“a2MC”), move to first consolidate (see 15 TTABVUE in Proceeding No. 91249003) and then to suspend Opposition Proceeding Nos. 91249003, 91251140, and 91254891 (the “Proceedings”) pending the final determination of civil litigation which may have a bearing on the issues before the Board in the Proceedings. I. Consolidation The parties filed a joint motion to consolidate the Proceedings on May 27, 2020, in which the parties reviewed the relevant procedural history in the Proceedings to date. 15 TTABVUE. The parties hereby incorporate their joint motion by reference and renew their request for consolidation. II. Suspension The parties additionally request that the consolidated Proceedings be suspended pending the outcome of a civil litigation, namely, Braum’s, Inc. v. The A2 Milk Company Limited, Case No. 5:20-cv-00466-HE, filed in the United States District Court in the Western District of Oklahoma (the “Litigation”). The relevant pleadings are attached with this Motion. A. Background of Civil Litigation The plaintiff and counterclaim defendant in the Litigation, third party Braum’s Inc. (“Braum’s”), is headquartered in Oklahoma City and offers retail and restaurant services, selling 2 a variety of cooked food in addition to pre-packaged dairy products, including “numerous varieties of A2 milk,” according to allegations in its complaint (Complaint at ¶¶ 8, 28). The Complaint filed by Braum’s in the Litigation requests the following relief: • a declaratory judgment of genericness and/or descriptiveness of the “A2” and “A2 Milk” designations (Complaint at ¶¶ 37-46); • a declaratory judgment that Braum’s use of the designation of “A2” and/or “A2 Milk” does not infringe any rights a2MC may hold in the “A2” and “A2 Milk” designations (Complaint at ¶¶ 47-57); • a declaratory judgment that Braum’s use of the designation of “A2” and/or “A2 Milk” constitutes fair use (Complaint at ¶¶ 58-66); and • cancellation of a2MC’s Reg. No. 3464046 for A2 MILK (Complaint at ¶¶ 67-77). a2MC filed an answer denying Braum’s allegations and asserting that “A2” and “A2 MILK” are not descriptive or generic, but instead serve as source identifiers for a2MC and its dairy products, and further alleging that a2MC has established secondary meaning in connection with its marks and that its “a2” and “a2 Milk” trademarks are valid and enforceable. a2MC additionally filed counterclaims for trademark infringement (15 U.S.C. § 1114), false designation of origin (15 U.S.C. § 1125(a)), and common law unfair competition based on Braum’s use of the “A2” and “A2 Milk” designations, in addition to copyright infringement (17 U.S.C. § 101, et seq.) based on Braum’s use of an infographic. B. Impact on Proceedings The parties respectfully submit that suspension of the Proceedings will promote consistency and economy because there are some common claims in the Litigation and the Proceedings. See TBMP 510.02(a); see also Other Telephone Co. v. Connecticut National 3 Telephone Co., 181 U.S.P.Q. 125, 126-27 (TTAB 1974) (decision in civil action for infringement and unfair competition would have bearing on outcome proceeding). Final determination of the relief requested by Braum’s in the Litigation may have a bearing on certain issues before the Board in the Proceedings. See Softbelly’s Inc. v. Ty, Inc., Opp. No. 71, 2002, WL 1844210, at *3 (TTAB 2002) (“Because we determine that the civil action … will directly affect the resolution of the issue of genericness in this case, it would be appropriate to suspend the Board proceedings in this case.”). Although the outcome of the Litigation may not be dispositive of all issues disputed in the Proceedings, this is not required to warrant suspension. See New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 U.S.P.Q.2d 1550, 1552 (TTAB 2011) (suspending TTAB proceedings and stating “the civil action does not have to be dispositive of the Board proceeding to warrant suspension, it need only have a bearing on the issues before the Board”). The Proceedings are in early stages and the Parties are in agreement to suspend the Proceedings; therefore, neither party will be prejudiced or inconvenienced. To the contrary, suspension would result in savings of time, effort and expense, as well as judicial economy, and will benefit both Parties. As a result, suspension is appropriate. IV. Conclusion Accordingly, the Parties respectfully request that the Board consolidate the Proceedings and then suspend the Proceedings pending the outcome of the Litigation. 4 Dated: July 21, 2020 Respectfully submitted, /s/ Amy C. Ziegler /s/ Amy J. Tindell Amy C. Ziegler Nadya C. Davis Greer Burns & Crain Ltd. Amy J. Tindell 300 South Wacker Drive, Suite 2500 Catherine C. Miller Chicago, Il 60606 Holland & Hart, LLP [email protected], 1800 Broadway, Suite 300 [email protected] Boulder, Colorado 80302-5234 [email protected] [email protected] Phone: 312-360-0080 [email protected] [email protected] Attorneys for [email protected] The a2 Milk Company Ltd. Phone: (303) 473-2715 Fax: (303) 557-6173 Attorneys for Société des Produits Nestlé S.A. 5 CERTIFICATE OF SERVICE I hereby certify that a true and correct copy of the foregoing Joint Motion to Suspend has been served on July 21, 2020 via electronic mail, as agreed between the parties, to the following: [email protected] [email protected] [email protected] /s/ Amy Tindell Amy Tindell 6 Case 5:20-cv-00466-HE Document 1 Filed 05/19/20 Pag e 1 of 17 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF OKLAHOMA BRAUM’S, INC., Plaintiff, vs. Case No. The A2 MILK COMPANY LIMITED, Defendant. COMPLAINT Plaintiff Braum’s, Inc. (“Braum’s”), for its Complaint against Defendant The a2 Milk Corporation Limited (“a2MC”), alleges and states as follows: NATURE OF THE ACTION 1. This is an action for certain declaratory judgment and other relief brought under the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202. PARTIES 2. Braum’s is a corporation organized and existing under the laws of Oklahoma, and has its headquarters and principal place of business in Oklahoma City, Oklahoma. 3. On information and belief, a2MC is a limited liability company organized and existing under the laws of New Zealand, and has its headquarters and principal place of business in Auckland, New Zealand. On information and belief, a2MC’s North America operations are based in Boulder, Colorado. 1 26278250_1.doc Case 5:20-cv-00466-HE Document 1 Filed 05/19/20 Pag e 2 of 17 JURISDICTION AND VENUE 4. This action arises under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq., and under the trademark laws of the United States, Title 15 of the United States Code. This Court has jurisdiction over this action pursuant to 15 U.S.C. § 1121 as well as 28 U.S.C. §§ 1331, 1338, and 2201-2202. 5. As set forth below, this Court has personal jurisdiction over a2MC by virtue of the business activities it conducts within the State of Oklahoma and within this District, as well as by a2MC’s threats of litigation against Braum’s, resulting in sufficient minimum contacts with this forum. 6. Venue is proper in this District under 28 U.S.C. §§ 1391 because a substantial part of the events giving rise to the claims at issue occurred in this District and/or because a2MC is subject to personal jurisdiction in this action.
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