In trademark opposition proceedings the affirmative defense of failure to state a claim is commonly pleaded, yet it is often an inappropriate affirmative defense. Other affirmative defenses that are severely limited in opposition proceedings include laches (consideration of this affirmative defense is taken as of the time an application is published for opposition purposes, not from the time of knowledge of an applicant’s use), waiver and estoppel (which turn on the conduct of a plaintiff during the time of prosecution of the application and must have sufficient facts pled to support them), and fraud (which must have sufficient facts pled in support of that affirmative defense).
Instead of a motion to strike, an opposer in an opposition proceeding should consider the cost-effective method of requesting that the Interlocutory Attorney assigned to the case by the Trademark Trial and Appeal Board participate in the mandatory discovery/settlement conference, as the Interlocutory Attorney has the power to strike affirmative defenses.
Under the rules, the request for the Interlocutory Attorney’s participation must be made at least 10 days before the date of the discovery/settlement conference set forth in the initial scheduling order issued by the Board. 37 C.F.R. Section 2.120(2).
In an opposition proceeding involving the mark CRONUT, the applicant’s lawyer requested the participation of the Interlocutory Attorney in a discovery/settlement conference this past December. This was a strategic mistake for the applicant, as the Interlocutory Attorney struck, upon the opposer’s request, the affirmative defenses of failure to state a claim, lack of standing, laches, waiver, acquiescence and estoppel, and fraud, which applicant’s counsel did not contemplate would occur.
The result? The case and areas of permissible discovery were narrowed at minimal expense, and the effect upon the applicant was to make it more cooperative in settlement negotiations. So, keep in mind this cost-effective tactic when representing an opposer in an opposition proceeding.