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254x Filetype PDF File size 2.24 MB Source: ttabvue.uspto.gov
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTATrackingnumber: ESTTA1069582
Filing date: 07/21/2020
IN THE UNITEDSTATESPATENTANDTRADEMARKOFFICE
BEFORETHETRADEMARKTRIALANDAPPEALBOARD
Proceeding No. 91249003
Filing Party Defendant
SociétédesProduits Nestlé S.A.
Other Party Plaintiff
Thea2MilkCompanyLimited
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 )
BraumsvA2MC-Answer.pdf(1883776bytes)
ConsentMotionforSuspensioninViewofCivilProceeding
Theparties are engaged in a civil action which may have a bearing on this proceeding. Accordingly,
SociétédesProduits Nestlé S.A. hereby requests suspension of this proceeding pending a final determ-
ination of the civil action. Trademark Rule 2.117.
SociétédesProduits Nestlé S.A. has secured the express consent of all other parties to this proceeding
for the suspension requested herein.
Certificate of Service
Theundersigned 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,
/AmyJ. Tindell/
AmyJ.Tindell
ajtindell@hollandhart.com, ncdavis@hollandhart.com, docket@hollandhart.com
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
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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
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