Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA97098
`ESTTA Tracking number:
`08/30/2006
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91171068
`Plaintiff
`Platypus Wear, Inc.
`Lisa A. Osman
`Dorsey & Whitney LLP
`370 17th Street, Suite 4700
`Denver, CO 80202-5647
`UNITED STATES
`osman.lisa@dorsey.com
`Other Motions/Papers
`Gregory S. Tamkin
`osman.lisa@dorsey.com
`/Gregory S. Tamkin/
`08/30/2006
`Motion for Judgment.pdf ( 9 pages )(354593 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Platypus Wear, Inc.,
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`Opposition No. 91171068
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`Opposer,
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`V.
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`Horizonte Ltda.,
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`Applicant.
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`Mark: BAD BOY POWER DRINK
`(and design)
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`Serial No.: 76/380,011
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`Filing Date: March 8, 2002
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`Publication Date: January 24, 2006
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`MOTION FOR JUDGMENT ON THE PLEADINGS
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`Opposer, Platypus Wear, Inc., by and through its undersigned attorneys, moves the Panel
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`for judgment on the pleadings as to Applicant’s affirmative defenses that (l) challenge
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`Opposer’s copyrights and (2) relate to use, as opposed to registration, and as grounds for this
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`motion states:
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`I. INTRODUCTION
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`Through its affirmative defenses that have no relation to the actual question at issue,
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`Applicant seeks to divert the attention of this proceeding from a determination about the
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`likelihood of confusion that would be caused by the registration of its proposed mark into a
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`dispute about various unrelated claims that would normally be considered, if at all, in an
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`infringement proceeding. The issue before the Panel is simple: whether Opposer’s use of
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`Virtually identical marks on a variety of products precludes registration of Applicant’s mark due
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`to a likelihood of confusion. Ignoring this question, Applicant raises affirmative defenses
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`claiming that ( 1) Opposer’s copyright registration, 1'. e. one of the bases for its use, is invalid, and
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`(2) Opposer’s conduct with respect to a potential joint venture years before the proposed
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`registration was published precludes the Opposition. Simply put, both arguments are not
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`defenses to an Opposition proceeding and should be stricken so that the proceeding is
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`unencumbered by sideshow issues.
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`The Panel should dismiss Applicant’s first affirmative defense because challenging the
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`validity of Opposer’s copyrights — as opposed to its trademarks — is not appropriate in this forum.
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`The validity of the copyright registrations is irrelevant to the issue in this case: this is not a
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`copyright infringement action. The copyright registrations evidence dates of prior use by
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`Opposer, identify the works involved and illustrate the likelihood of confusion, mistake and
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`deception that would occur if Applicant’s application were granted. Whether the copyrights are
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`valid is immaterial to each of those issues. What is relevant is Opposer’s _1m_e of the copyrighted
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`artwork on a variety of products for decades.
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`Additionally, Applicant asserts the equitable defenses of laches, estoppel, acquiescence,
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`unclean hands and fraud. Applicant, however, confuses affirmative defenses available
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`concerning 1g of a mark with affirmative defenses potentially available in response to an
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`Opposition to registration of a mark. Because Applicant has not and cannot assert any
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`inequitable conduct relating to registration that could support these very limited affirmative
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`defenses, the Panel should enter judgment on the pleadings dismissing each of these inter-related
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`affirmative defenses.
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`II. FACTUAL BACKGROUND
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`Applicant filed its application for registration of the mark BAD BOY POWER DRINK
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`and design on March 8, 2002 (the “Mark”). Thereafter, on January 24, 2006, the PTO published
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`the Mark for opposition. Opposer filed timely requests for extension of time to oppose, and on
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`May 24, 2006 filed this timely opposition.
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`Applicant’s Answer asserts a host of purported affirrnative defenses including: invalidity
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`of copyright, laches, estoppel, acquiescence, unclean hands and fraud. Despite voluminous, and
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`hotly contested, allegations concerning transactions occurring before the publication of the Mark,
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`Applicant failed to allege a single post-publication act by Opposer or any act relating to
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`registration of the Mark that could support these defenses.
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`III. ARGUMENT
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`Judgment on the pleadings is appropriate where there is no genuine issue as to any
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`material fact and the moving party is entitled to judgment as a matter of law. Baroid Drilling
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`Fluids, Inc. v. Sun Drilling Products, 24 U.S.P.Q.2d 1048, 1049 (T.T.A.B. 1992). The Panel
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`must take all facts plead in the non-movant’s pleadings as true for purposes of this motion and
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`draw all reasonable inferences in favor of the non-moving party. Li. A motion for judgment on
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`the pleadings is appropriate for eliminating affirrnative defenses that are legally or factually
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`deficient. E Q (entering judgment against affirmative defense).
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`A.
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`The Validity of Opposer’s Copyrights Is Neither Appropriately Decided By The
`Panel Nor Relevant To Any Dispute Before The Panel.
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`Applicant’s first affinnative defense alleges that Opposer’s copyrights are invalid. The
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`Panel should enter judgment on the pleadings dismissing that defense because: 1) this is not the
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`appropriate forum to consider the validity of an Opposer’s copyright (as opposed to its
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`trademark, if such were reasonably challenged); 2) the validity of Opposer’s copyrights is
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`irrelevant to any question being decided in this Opposition; and 3) Applicant failed to file a
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`proceeding actually seeking invalidation of the copyright registrations.
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`The Trademark Trial and Appeal Board does not have jurisdiction to resolve copyright
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`infringement claims. 28 U.S.C. § 1338 (U.S. District Courts have exclusive jurisdiction over
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`copyright infringement cases); Carano V. Vina Concha Y Toro S.A., 67 U.S.P.Q.2d 1149, 1151
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`(T.T.A.B. 2003). The validity of a copyright is irrelevant with respect to registration because it
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`is only the use of a work, the identity of the work, and the likelihood of confusion, mistake, or
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`deception that would result from registration of the opposed mark for which a copyright is
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`relevant in opposition proceedings. E 15 U.S.C. § lO52(d). These issues do not call the
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`validity of the copyrights into question.
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`Here, Opposer owns numerous copyrighted works dating from 1989 (and registrations
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`from at least 1995) with artwork and logos virtually identical to the Mark submitted for
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`registration. E Notice of Opposition at p. 5. Opposer relies on those copyrights and
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`registrations to establish dates of use by Opposer, and to identify the works depicted on products
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`currently in commerce for which there would be a likelihood of confusion, mistake and
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`deception if App1icant’s Mark were registered. Whether the actual copyright is valid does not
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`change the dates of use, the appearance of what has been used, or the amount of confusion likely
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`to be caused. Opposer cannot assert and is not asserting copyright infringement in this
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`proceeding, and thus the validity or invalidity of copyrights is simply not pertinent. Carano v.
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`Vina Concha Y Toro S.A., 67 U.S.P.Q.2d 1149, 1151 (T.T.A.B. 2003) (T.T.A.B. does not have
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`jurisdiction over copyright infringement).
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`Furthennore, even if validity were at issue, the Panel should dismiss App1icant’s
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`affirmative defense for the same reasons it would be required to dismiss a defense alleging
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`invalidity of a prior trademark registration. 37 C.F.R. § 2.106(b)(2) states in relevant part:
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`(i) A defense attacking the validity of any one or more of the
`registrations pleaded in the opposition shall be a compulsory
`counterclaim if grounds for such counterclaim exist at the time
`when the answer is filed. . .. A counterclaim need not be filed if it
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`is the subject of another proceeding between the same parties or
`anyone in privity therewith.
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`(ii) An attack on the validity of a registration pleaded by an
`opposer will not be heard unless a counterclaim or separate petition
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`is filed to seek the cancellation of such registration.
`added).
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`(emphasis
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`Thus, to allege the affirmative defense that a trademark registration is invalid the Applicant must
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`also bring a counterclaim, or if no counterclaim is brought, the applicant must file another action
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`contesting the validity of the registration.
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`I_d. The reason for this rule is to avoid repeated
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`proceedings concerning the same dispute and at the same time to protect the federal register from
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`having improper marks listed. The same reasoning applies to copyrights.
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`Here, Applicant failed to bring a counterclaim contending that Opposer’s copyright
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`registrations are invalid (and indeed could not in this administrative hearing), and thus was
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`required to file an action in federal court seeking cancellation of the copyright registrations if it
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`sought to have that issue heard. This would comport with the purpose of the regulation to
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`resolve all issues simultaneously. Because Applicant did not file another proceeding, the Panel
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`should dismiss this affirmative defense and avoid the piecemeal resolution of this dispute. E
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`37 C.F.R. § 2.l06(b)(2).
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`For all these reasons, the Panel should dismiss Applicant’s first affirmative defense
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`concerning copyright invalidity because it is irrelevant to the registration proceedings here.
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`Further, even if the Panel could consider the validity issue, it should dismiss the defense as set
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`forth in 37 C.F.R. § 2.l06(b)(2).
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`B.
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`The Panel Should Dismiss Applicant’s Second, Third, Fourth, Fifth, and Sixth
`Affirmative Defenses Because The Facts Supporting Them Show That They Do Not
`Relate To Registration Of The Mark.
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`While the equitable defenses of laches, acquiescence and estoppel are available in
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`opposition proceedings, their application is strictly limited. Specifically, Circuit Courts have
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`held that the relevant inquiry concerning these defenses is conduct specifically related to
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`registration of the mark. E gg, Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes, Inc., 971
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`F.2d 732, 734 (Fed. Cir. 1992). Use prior to registration, and actions or the failure to act related
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`thereto, cannot form the basis for these equitable defenses. For example, in Coach House
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`Restaurant Inc. V. Coach and Six Restaurants Inc., 934 F .2d 1551 (1 1th Cir. 1991) the opposer
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`actively represented that the applicant could use the mark at issue within the United States. LL at
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`15 58. This was not a licensing situation, but merely a permitted use. After nearly 20 years of
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`such use, the applicant tried to register the mark and opposer filed an opposition. 1; at 1555-56.
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`The TTAB held that this acquiescence in use estopped opposer from challenging the registration
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`of the mark. Li. at 1558. The trial court affirmed. 1; On appeal, however, the Eleventh Circuit
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`held that opposer’s long, undisputed acquiescence in the use of the mark did not estop opposer
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`from challenging the registration. Li Specifically, the court found that opposer had never
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`explicitly consented to applicant’s registration, and acquiescence in E did not equate to
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`acquiescence in registration. Li.
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`Furthermore, the court determined that the relevant time for considering any delay in
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`challenging the mark began from the time the mark was published for opposition.
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`I_d_. at 1558.
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`In other words, the Court would not consider an equitable defense based on conduct prior to the
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`publication date. The opposer had waited just more than a year from publication to file its
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`opposition. Li. The absence of an actual agreement to applicant’s registration of the mark,
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`coupled with the fact that any delay in opposing was judged from the date of publication of the
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`mark for opposition, compelled the Circuit Court to reverse the trial court and TTAB panel by
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`finding that the defense lacked merit.
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`I_d. at 1559.
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`Likewise, in Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes, Inc., 971 F.2d 732 (Fed.
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`Cir. 1992) the Federal Circuit held that use by the applicant could not form the basis for the
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`equitable defenses of laches or estoppel. Specifically, the court held “As applied in trademark
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`opposition or cancellation proceedings, these defenses must be tied to a party’s registration of a
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`mark, not to a party’s use of the mark.” Li. at 734. This holding was consistent with the Federal
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`Circuit’s holding in National Cable Television Assoc. Inc. v. American Cinema Editors, Inc.,
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`937 F.2d 1572 (1991) where the court found that for purposes of an opposition proceeding,
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`laches must be judged solely on the acts taken from the time of publication of the mark for
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`opposition and cannot be based on any acts occurring before publication.
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`I_d. at 1580-81.
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`Here, in an attempt to avoid the obvious and necessary rejection of Applicant’s attempt to
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`register Opposer’s mark, Applicant tries to muddy the waters concerning its purported use of the
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`Mark prior to publication of the application. These allegations, the veracity of which Opposer
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`vehemently denies but which are presumed true for purposes of this Motion, do not support the
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`equitable defenses of laches, acquiescence and estoppel. Specifically, the Circuit Courts have
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`repeatedly held that these defenses fail in the absence of facts specifically related to registration
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`of the mark. Thus, Applicant’s laches argument fails because it failed to allege a single post-
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`publication fact supporting its claim of unreasonable delay. National Cable Television Assoc.
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`Inc. v. American Cinema Editors Inc., 937 F.2d at 1580-81. Likewise, Applicant’s acquiescence
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`defense must be dismissed because it has not and cannot allege that Opposer agreed to permit
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`Applicant to register in the United States, nor can it show an unreasonable delay in opposing the
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`application since publication. Coach House Restaurant Inc. v. Coach and Six Restaurants Inc.,
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`934 F.2d at 1158. Finally, even assuming Applicant’s inflammatory allegations are true for
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`purposes of this motion, Applicant’s estoppel claim fails because no facts exist that any
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`misleading statements were made that would give the impression that Opposer would not oppose
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`registration of the Mark. Lincoln Logs Ltd. V. Lincoln Pre-Cut Log Homes, Inc., 971 F.2d at
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`734. As a result, the Panel should enter judgment on the pleadings in Opposer’s favor as to
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`Applicant’s second, third and sixth affirmative defenses.
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`Applicant’s fraud and unclean hands defenses are likewise deficient because they are
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`based on the same set of allegations and have nothing to do with the registration at issue before
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`this Panel. That is, those defenses are based on the identical irrelevant facts and assert nothing
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`more than as a result of Opposer’s conduct concerning prior use and the potential joint Venture,
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`Opposer should be estopped from challenging registration. As a result, the Panel should also
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`dismiss Applicant’s fourth and fifth affirmative defenses for the same reasons it should dismiss
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`Applicant’s equitable defenses.
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`WHEREFORE, Opposer prays that this Panel enter judgment on the pleadings dismissing
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`Applicant’s first, second, third, fourth, fifth and sixth affirmative defenses.
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`Respectfully submitted this 30th day of August, 2006.
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`DORSEY & WHITNEY LLP
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`
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`370 17”‘ Street, Suite 4700
`Denver, CO 80202
`Tel:
`303-629-3400
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`Fax:
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`303-629-3450
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`ATTORNEYS FOR OPPOSER
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`PLATYPUS WEAR, INC.
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`4812-8413-7217\l
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing MOTION FOR
`JUDGMENT ON THE PLEADINGS has been served on D. Peter Hochberg by mailing said
`copy on August 30, 2006, Via First Class Mail, postage prepaid, to:
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`D. Peter Hochberg
`D. PETER HOCHBERG C0,, L.P.A.
`1940 East 6th Street - 6th Floor
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`Cleveland, OH 44114
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`James L. Bikoff, Esq.
`David K. Heasley, Esq.
`Silverberg, Goldman & Bikoff, LLP
`Suite 120
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`1101 30th Street, N.W.
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`Washington, D.C. 20007
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`Dated: AugL_1st3O, 2006
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`4851-9309-7473\1