506 Motion to Strike Matter From Pleading
Fed. R. Civ. P. 12(f) Motion to Strike. The court may strike from a pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter. The court may act: (1) on its own; or (2) on motion made by a party either before responding to the pleading or, if a response is not allowed, within 21 days after being served with the pleading.
506.01 Nature of Motion
Upon motion, or upon its own initiative, the Board may order stricken from a pleading any insufficient defense or any redundant, immaterial, impertinent, or scandalous matter. [ Note 1.] The Board also has the authority to strike an impermissible or insufficient claim or portion of a claim from a pleading. [ Note 2.]
Motions to strike are not favored, and matter usually will not be stricken unless it clearly has no bearing upon the issues in the case. [ Note 3.] The primary purpose of pleadings, under the Federal Rules of Civil Procedure, is to give fair notice of the claims or defenses asserted. [ Note 4.] See TBMP § 309.03 (Substance of Complaint) and TBMP § 311.02 (Substance of Answer). Thus, the Board, in its discretion, may decline to strike even objectionable pleadings where their inclusion will not prejudice the adverse party, but rather will provide fuller notice of the basis for a claim or defense. [ Note 5.] A defense will not be stricken as insufficient if the insufficiency is not clearly apparent, or if it raises factual issues that should be determined on the merits. [ Note 6.]
Nevertheless, the Board grants motions to strike in appropriate cases. [ Note 7.]
NOTES:
1. Fed. R. Civ. P. 12(f); See Topco Holdings, Inc. v. Hand 2 Hand Industries, LLC, 2022 USPQ2d 54, at *9-10 (TTAB 2022) (on its own initiative, the Board struck applicant’s first affirmative defense and reservation of rights defense); Lacteos de Honduras S.A. v. Industrias Sula, S. De R.L. de C.V., 2020 USPQ2d 10087, at *9 (TTAB 2020) (motion to strike affirmative defense of priority based on Article 7 of the Pan-American Convention granted because such defense is unavailable in an opposition proceeding where opposer has pleaded registrations); Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013) (insofar as during briefing of petitioner'’s motion for summary judgment, respondent stated that it took no issue with the striking of respondent’s affirmative defenses, the Board struck these defenses), aff’d, 565 F. App’x 900 (Fed. Cir. 2014); Ohio State University v. Ohio University, 51 USPQ2d 1289, 1292 (TTAB 1999); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435, 1438 (TTAB 1996) (on its own initiative, the Board struck paragraph Nos. 8 and 9 of the notice of opposition).
2. Finanz St. Honore, B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1480 (TTAB 2007) (motion to strike counterclaim ground that portion of mark is generic asserted against registration over five years old granted); Ohio State University v. Ohio University, 51 USPQ2d 1289, 1293 (TTAB 1999) (motion to strike certain allegations in the counterclaim); Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1139 (TTAB 1990) (motion to strike allegations of geographic descriptiveness asserted against registration over five years old granted).
3. Ohio State University v. Ohio University, 51 USPQ2d 1289, 1292 (TTAB 1999); Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570, 1571 (TTAB 1988); Leon Shaffer Golnick Advertising, Inc. v. William G. Pendill Marketing Co., 177 USPQ 401, 402 (TTAB 1973); 5C C. WRIGHT & A. MILLER, FEDERAL PRACTICE AND PROCEDURE CIVIL § 1380 (3d ed. April 2021 Update).
4. Ohio State University v. Ohio University, 51 USPQ2d 1289, 1292 (TTAB 1999); Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570, 1571 (TTAB 1988); McDonnell Douglas Corp. v. National Data Corp., 228 USPQ 45, 47 (TTAB 1985).
5. Ohio State University v. Ohio University, 51 USPQ2d 1289, 1292 (TTAB 1999); Order of Sons of Italy in America v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1223 (TTAB 1995) (amplification of applicant’s denial of opposer’s claims); Textron, Inc. v. Gillette Co., 180 USPQ 152, 153 (TTAB 1973) (applicant’s affirmative defense amplifies denial of likelihood of confusion); Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570, 1571 (TTAB 1988) (reasonable latitude permitted in statement of claims).
6. 5C C. WRIGHT & A. MILLER, FEDERAL PRACTICE AND PROCEDURE CIVIL § 1381 (3d ed. April 2021 Update).
7. Finanz St. Honore, B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1480 (TTAB 2007) (counterclaim ground stricken as time-barred);Ohio State University v. Ohio University, 51 USPQ2d 1289, 1292, 1295 n.16 (TTAB 1999) (estoppel may not be asserted as a defense against claims of mere descriptiveness or geographic descriptiveness; laches may not be maintained against fraud); Order of Sons of Italy in America v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1223 (TTAB 1995) (defense stricken as redundant, that is, as nothing more than a restatement of a denial in the answer and does not add anything to that denial); American VitaminProducts, Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992) (insufficient affirmative defenses stricken); Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1139 (TTAB 1990) (ground for cancellation not available for registration over five years old); Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570, 1571-72 (TTAB 1988) (immaterial allegation stricken); Continental Gummi-Werke AG v. Continental Seal Corp., 222 USPQ 822, 825 (TTAB 1984) (affirmative defense stricken because identical to counterclaim); W. R. Grace & Co. v. Arizona Feeds, 195 USPQ 670, 671 (Comm’r 1977) (affirmative defenses stricken as redundant because same allegations formed basis for counterclaim); Isle of Aloe, Inc. v. Aloe Creme Laboratories, Inc., 180 USPQ 794, 794 (TTAB 1974) (complaint stricken for failure to comply with requirement of Fed. R. Civ. P. 10(b) that each numbered paragraph be limited to a single set of circumstances).
506.02 Time for Filing
A motion to strike matter from a pleading should be filed within the time for, and before, the moving party’s responsive pleading. [ Note 1.] If no responsive pleading is required, the motion should be filed within 21 days after service upon the moving party of the pleading that is the subject of the motion. [ Note 2.] However, a motion to strike matter from a pleading will not relieve the defendant from filing its responsive pleading. The issues raised in a motion to strike may be discussed in the discovery conference in the event the parties request Board participation therein; and the non-movant need not file a responsive brief in such a case. A Board attorney will participate in the discovery conference when timely requested to ensure the resolution of the matter. The parties are required to contact the assigned Board attorney to arrange the date and time of the conference. The parties are, of course, encouraged to resolve the issue prior to the case conference. Alternatively, and particularly in the event the parties do not request Board participation in a discovery conference, the parties may fully brief a motion to strike matter from a pleading and the Board will issue a written determination.
However, the Board, upon its own initiative, and at any time, including during a discovery conference, may order stricken from a pleading any insufficient claim or defense or any redundant, immaterial, impertinent, or scandalous matter. [ Note 3.] Thus, the Board, in its discretion, may entertain an untimely motion to strike matter from a pleading. [ Note 4.] If a motion to strike is filed after the discovery conference, it will be decided like any other pretrial motion.
NOTES:
1. Fed. R. Civ. P. 12(f)(2); Order of Sons of Italy in America v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1222 (TTAB 1995); Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1139 (TTAB 1990).
2. Fed. R. Civ. P. 12(f); Order of Sons of Italy in America v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1222 (TTAB 1995); American Vitamin Products, Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992).
3. Fed. R. Civ. P. 12(f); Order of Sons of Italy in America v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1222 (TTAB 1995).
4. Order of Sons of Italy in America v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1222 (TTAB 1995); American Vitamin Products, Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992); Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1139 (TTAB 1990); 5C C. WRIGHT & A. MILLER, FEDERAL PRACTICE AND PROCEDURE CIVIL § 1380 (3d ed. April 2021 Update).
506.03 Exhibits Attached to Pleadings
The Board usually will not strike exhibits submitted with pleadings since they are clearly contemplated by 37 C.F.R. § 2.122(c) and Fed. R. Civ. P. 10(c). However, except for status and title copies or current printouts from the USPTO’s electronic database records containing status and title information of a plaintiff’s pleaded registrations filed by the plaintiff with its complaint pursuant to 37 C.F.R. § 2.122(d)(1), exhibits attached to pleadings are not evidence on behalf of the party to whose pleading they are attached unless they are identified and introduced in evidence as exhibits during the testimony period. [ Note 1.] See TBMP § 317 (Exhibits to Pleadings).
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