`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA154838
`ESTTA Tracking number:
`08/03/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91177695
`Plaintiff
`RobertoNoble
`Michael I. Santucci, Esq.
`Silverman Santucci, LLP
`Suite 500, 500 West Cypress Creek Road
`Fort Lauderdale, FL 33309
`UNITED STATES
`mis@500law.com
`Other Motions/Papers
`Michael I. Santucci, Esq.
`mis@500law.com
`/s/Michael I. Santucci
`08/03/2007
`Response to Motion to Dismiss.pdf ( 14 pages )(176784 bytes )
`Ex_1.pdf ( 5 pages )(903201 bytes )
`Ex_2.pdf ( 10 pages )(405868 bytes )
`Ex_3.pdf ( 6 pages )(148354 bytes )
`Ex_4.pdf ( 9 pages )(361863 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Application
`Serial No. 78/955,663
`I
`for the mark BONGOS CUBAN CAFE
`_____________________________________________________________ __X
`
`ROBERTO NOBLE,
`
`'
`
`Opposer,
`
`V.
`
`Opposition No. 91177695
`
`ESTEFAN ENTERPRISES, INC.
`
`:
`Applicant.
`_____________________________________________________________ __X
`
`OPPOSER’S RESPONSE TO MOTION TO DISMISS
`
`NOTICE OF OPPOSITION
`
`COMES NOW, ROBERTO NOBLE ("Opposer"), by and through his undersigned
`
`counsel SILVERMAN SANTUCCI, LLP, and hereby responds to ESTEFAN ENTERPRISES,
`
`INC.’s (alternatively “Applicant” and “EEI”) Motion to Dismiss Notice of Opposition [DE-4]1
`
`(“Motion to Dismiss”) as follows:
`
`STANDARD ON MOTION TO DISMISS
`
`Applicant’s Motion to Dismiss is filed under TBMP § 503 for motions to dismiss for
`
`failure to state a claim. For purposes of determining a motion to dismiss for failure to state a
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`claim upon which relief can be granted, all of the plaintiffs well-pleaded allegations must be
`
`accepted as true, and the complaint must be construed in the light most favorable to the plaintiff
`
`TBMP § 503.02. Dismissal for insufficiency is appropriate only if it appears certain that the
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`plaintiff is entitled to no relief under any set of facts that could be proved in support of its claim.
`
`1 All citations to docket entries filed in the herein proceeding shall be in the following format:
`e. g. — “[DE-4].” All docket entries filed in other proceedings shall be in the following format:
`e.g. - “(Docket #88)”.
`
`
`
`I_d. Whenever the sufficiency of any complaint has been challenged by a motion to dismiss, it is
`
`the duty of the Board to examine the complaint in its entirety, construing the allegations therein
`
`liberally, as required by Fed. R. Civ. P. 8(f), to determine whether it contains any allegations,
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`which, if proved, would entitle the plaintiff to the relief sought. TBMP § 503.02.
`
`I.
`
`APPLICANT’S RELIANCE UPON ITS U.S. REGISTRATION NO. 2,490,999 IS
`MISPLACED IN THAT SAID REGISTRATION WAS MAINTAINED
`
`THROUGH FRAUD.
`
`Applicant placed significant emphasis on its purported ownership of U.S. Registration
`
`No. 2,490,999, and cited to said Registration four (4) times in its Motion to Dismiss. It is
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`therefore crucial for the Board to note that said Registration was maintained fraudulently by
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`Applicant. In various actions, Applicant has claimed, and maintained its position that said
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`Registration has become incontestable. More specifically, on January 31, 2007, Applicant’s
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`President, Frank Amadeo filed a Combined Affidavit of Use and Incontestability Under Sections
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`8 and 15 of the Lanham Act. Therein, APPLICANT’s President declared, under penalty of
`
`perjury that:
`
`“There has been no final decision adverse to the owner's claim ofownership of
`such markfor such goods and/or services, or to the owner's right to register the
`same or to keep the same on the register; and there is no Qroceeding involving
`said rights Qending and not disgosed of either in the U.S. Patent and Trademark
`Office or in the courts.”
`
`3, Combined Affidavit of Use and Incontestability Under Sections 8 and 15 [emphasis added].
`
`(E, Exhibit “I ” attached). This statement is blatantly false in light of the fact that the following
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`proceedings were pending at the time said affidavit was made and filed.
`
`Marrero Enterprises, Inc. v. Estefan Enterprises, Inc., Case No. 06-cv-8136,
`which is a Declaratory Judgment Action seeking declaratory relief including a
`declaration that Applicants’ mark BONGO’S CUBAN CAFE is merely
`
`
`
`descriptive or generic and that APPLICANT has abandoned its rights to the mark,
`or caused same to become diluted. The action was filed on November 6, 2006 and
`is currently pending in the U.S. District Court for the Southern District of Florida.
`(E, Complaint, Exhibit “2” attached).
`
`Estefan Enterprises, Inc. v. Roberto Noble, Opposition No. 91 l74l60 which is an
`administrative Opposition Action seeking to oppose the federal registration of the
`mark COCO BONGO HOUSE OF ROCK AND POP by ROBERTO NOBLE
`based upon Applicant’s ownership of U.S. Registration No. 2,490,999 for the
`mark BONGOS CUBAN CAFE. The affirrnative defenses in that action include
`
`subject mark and Registration have been
`that Applicant’s
`allegations
`abandonment and that Applicant’s subject Registration is void. The action was
`filed on February 13, 2001, and is currently pending before the USPTO’s
`Trademark Trial and Appeal Board.
`
`Estefan Enterprises, Inc. v. Bongo, S.A. de C.V., Cancellation No. 92042251
`which is an administrative Cancellation Action seeking the cancellation of the
`U.S. Registration No. 2,347,247 directed to the mark COCO BONGO owned by
`ROBERTO NOBLE based upon Applicant’s ownership of U.S. Registration No.
`2,490,999 for the mark BONGOS CUBAN CAFE. The affirmative defenses in
`that action include allegations that the mark is generic, merely descriptive, has
`become diluted, has been abandoned, was insufficiently used to maintain federal
`rights, that applicant has committed fraud on the USPTO concerning the subject
`Registration, and that applicant
`is barred from enforcement of the subject
`registration because of the U.S. District Court’s opinion in the case of Michael
`Caruso & Co., Inc. v. Estefan Enterprises, Inc., 994 F. Supp.
`l454 (S.D. Fla.
`1998). The action was filed on June 20, 2003 and is currently pending before the
`USPTO’s Trademark Trial and Appeal Board.
`
`Estefan Enterprises, Inc. v. Coco Bongo ’s Grill and Bar, Inc., Case
`No. 6:06-cv-00742-GAP-KRS which is an action filed by applicant for false
`designation of origin, and various forms of trademark infringement and
`unfair competition. The Defendant in that action, filed its Answer on July
`l7, 2006 (Docket # I 8) and is challenging the validity of Applicant’s rights in
`the mark BONGOS CUBAN CAFE, and corresponding U.S. Registration
`No. 2,490,999, and has alleged that applicant is estopped fiom asserting any
`rights therein. (E, Exhibit “3 ” attached).
`
`The USPTO’s current record showing the affidavit of incontestability was “accepted”
`
`was the direct result of the above quoted misrepresentation. Despite the USPTO’s record, on
`
`June 4, 2007, the U.S. District Court for the Middle District of Florida has recently ruled
`
`conclusively that APPLICANT’s U.S. Registration No. 2,347,247 is n_()t incontestable in the
`
`
`
`above described case of Estefan Enterprises, Inc. v. Coco Bongo ’s Grill and Bar, Inc., Case No.
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`6:06-cv-00742-GAP-KRS, (Docket # 88) (3, Exhibit “4” attached).
`
`Section 704.l2(d), TBMP permits the Board to take judicial notice “at any state of the
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`Board proceeding. ...” The TBMP articulates that the “only kind of fact that may be judicially
`
`noticed by the Board is a fact that is not subject to a reasonable dispute in that it is. . .capable of
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`accurate and ready determination by resort to sources whose accuracy cannot reasonably be
`
`questioned.” (Internal quotations omitted). TBMP § 704.l2(a).
`
`Indeed, the Board has taken
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`judicial notice of a federal court decision when it directly impacts the opposition proceedings.
`
`E, The William Carter Co. v. H. W. Carter & Sons, Inc., 2004 TTAB LEXIS 115 (TTAB Feb.
`
`27, 2004 (unpublished).
`
`Further, pursuant to TBMP § 5l0.02(a), “[t]o the extent that a civil action in a Federal
`
`district court involves issues in common with those in a proceeding before the Board,
`
`the
`
`decision of the Federal district court is often binding upon the Board. . .”); Wl/z0pper—Burger, Inc.
`
`v. Burger King Corp., 171 USPQ 805 (TTAB l97l)(holding federal court decision is binding
`
`upon the Board). See also, Mills v. Greene, 159 U.S. 651 (l895)(“The duty of this Court, as of
`
`every other judicial tribunal, is to decide actual questions or abstract propositions, or to declare
`
`principles or rules of law which cannot affect the matter in issue in the case before it”).
`
`II.
`
`OPPOSER HAS NOT WAIVED ANY CLAIM RELATIVE TO THE
`
`APPLICATION WHICH IS THE SUBJECT OF THIS ACTION.
`
`Opposer has not waived any claims made in its Notice of Opposition for several reasons.
`
`A. Opposer Did Not Have the Opportunity To Challenge Applicant’s Rights in This
`Particular Application in the Prior Pending Consolidated Proceedings.
`
`Opposer had no prior opportunity to raise these claims relative to the subject application
`
`prior to the recent opening of the opposition period. The herein application is not the subject of
`
`
`
`the consolidated cancellation and opposition actions cited by Applicant in its Motion to Dismiss.
`
`Those proceedings were filed, and have been pending, for years prior to even the filing date of
`
`the subject application. The prior pending proceedings did not rely in any way upon Applicant’s
`
`ownership of the subject application. (See, Opposition No. 91121980, Docket #86 / Cancellation
`
`No. 92042251, Docket #18). In fact, Applicant has not even mentioned the subject Application in
`
`its operative pleadings in those other proceedings.
`
`I_d.
`
`There cannot be said to be a waiver of any rights, unless the party to whom the waiver
`
`allegedly applies has had the opportunity to assert, preserve and/or perfect those rights. See,
`
`Oabre v. Entergy Operations, Inc., 522 U.S. 422, 422, 118 S.Ct. 838, 839 (1998). Never before
`
`has Opposer had the opportunity to assert these bases for opposition of the subject Application
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`Serial No. 78/955,663. The applicable opposition period did not open until February 6, 2007.
`
`Within the opposition period, Opposer filed a single Request for Enlargement of Time. When it
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`became clear that a global settlement between the parties could not be reached, Opposer initiated
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`the herein Opposition Action in a timely manner.
`
`The defenses of acquiescence, laches and waiver are affirrnative defenses, dependent
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`upon facts which are outside the scope of the Notice of Opposition, and are therefore
`
`inappropriate subject matter for a motion to dismiss. A waiver is an intentional relinquishment
`
`of a known right. Blacks Law Dictionary 1580 (6th ed.1990); See, e.g., Cherokee Nation v.
`
`United States, 174 Ct.Cl. 131, 140, 355 F.2d 945 (1966); A Olympic Forwarder, Inc. V. United
`
`States, 33 Fed.Cl. 514, 521 (1995). It is “a well established rule of law that ‘[w]aivers of rights
`
`must be voluntary, knowing and intelligent acts done with sufficient awareness of the relevant
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`circumstances and likely consequences.’ ” Reliance Ins. Co. v. United States, 20 Cl.Ct. 715, 723
`
`(1990), affd, 931 F.2d 863 (Fed.Cir.1991) (alterations in original) (citations omitted). “Waiver
`
`
`
`requires (1) the existence at the time of the waiver a right, privilege, advantage or benefit that
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`may be waived; (2) the actual or constructive knowledge thereof; and (3) an intention to
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`relinquish such right, privilege, advantage or benefit.” Youngdale & Sons Constr. Co. v. United
`
`States, 22 Cl.Ct. 345, 346 (1991) (citing Matter ofGarfinkle, 672 F.2d 1340, 1347 (11th
`
`Cir. 1982)).
`
`The availability of defenses of this variety is severely limited in opposition and
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`cancellation proceedings because these defenses, in Board proceedings, start to run from the time
`
`of knowledge of the application for registration (that is, from the time the mark is published for
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`opposition), not from the time of knowledge of use. E, National Cable Television Association
`
`v. American Cinema Editors Inc., 937 F.2d 1572, 1581-1582; 19 USPQ2d 1424, 1432 (Fed. Cir.
`
`1991).
`
`The rule fiom which Applicant’s argument derived, namely TBMP § 313.04 does not
`
`apply to prior pending consolidated Opposition No. 91 12 1 980/Cancellation No. 92042251, much
`
`less the facts pled in the instant Notice of Opposition. TBMP § 313.04 states that:
`
`“A defense attacking the validity of any one or more of the registrations Qleaded
`in the oggosition shall be a compulsory counterclaim it grounds [or such
`counterclaim exist at the time when the answer is filed. It grounds [or a
`counterclaim are known to the agglicant when the answer to the oggosition is
`filed, the counterclaim shall be pleaded with or as part of the answer.” I_d.; 37
`CFR § 2.106(b)(2)(i) [emphasis added].
`
`As stated above, Applicant did not even mention the subject Application Serial No.
`
`78/955,663 in the prior pending consolidated proceedings. The grounds to oppose the subject
`
`Application Serial No. 78/955,663 could not have existed at the time when Opposer’s various
`
`answers were filed. Furthermore, the subject application was filed and published long after the
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`time for filing Opposer’s original answer in the prior referenced TTAB proceedings.
`
`In fact, the
`
`
`
`very next case cited in TBMP § 313.04 after the Vitaline Corp. v. General Mills Inc., case,2 cited
`
`by Applicant, namely, TBC Corp. v. Grand Prix Ltd., expressly requires a finding that the
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`grounds for the counterclaim were known at time the original answer was filed in order to be
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`considered “compulsory.” TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 1313 (TTAB 1989).
`
`Such facts simply do not exist. Opposer’s opposition of the subject application therefore cannot
`
`be said to constitute waived compulsory counterclaims in the prior pending TTAB proceedings
`
`which were not in any way based upon the subject Application Serial No. 78/955,663.
`
`B.
`
`The Five Year Statute of Limitations Has been Tolled Since 2003.
`
`Notwithstanding Opposer’s inability to challenge Applicant’s rights to the subject
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`application, and notwithstanding Opposer’s decision not
`
`to seek a formal, affirmative
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`counterclaim of any kind to date in the prior pending consolidated proceedings, there has been no
`
`waiver of the herein claims because Opposer still can seek leave of the Board in the prior
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`consolidated proceedings to amend the pleadings so long as that matter is pending. The five (5)
`
`year statute of limitations to seek cancellation of Applicant’s Registration 2,490,999 was tolled
`
`long before its otherwise natural expiration by Applicant’s own filing of its Notice of Opposition
`
`in the prior pending consolidated proceedings. 3, Williamson—Dickie Manufacturing Co. v.
`
`Mann Overall Company, 359 F.2d 450, 149 USPQ 518, 522 (CCPA 1966)(“It is held that the
`
`filing of the pleading in which the registration is relied upon tolls during the pendency of the
`
`action,
`
`the time within which an afiirmative defensive action may be filed”; Humble Oil &
`
`Refining Co. v. Sekisui Chemical Company Ltd. ofJapan, 165 USPQ 597, 598 n.4 (TTAB 1970)
`
`(grounds were not limited where, although petition to cancel was not properly filed until after
`
`2 Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989).
`
`
`
`fifth anniversary date of registration, opposition wherein opposer relied on said registration
`
`sought to be cancelled was filed before anniversary date); Sunbeam Corp. v. Duro Metal
`
`Products Co., 106 USPQ 385, 386 (Comm'r 1955)(“...the filing of the pleading in which the
`
`registration is relied upon tolls, during the pendency of the action,
`
`the time within which an
`
`afiirmative defensive action may befiled).
`
`The TBMP section directly preceding the section cited by Opposer in its Motion to
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`Dismiss3 the herein Notice of Opposition, namely, TBMP § 313.03 states:
`
`the grounds for cancellation available in the case of a
`“In some instances,
`counterclaim difi’er fiom those available in the case of a petition to cancel that
`are not in the nature ofa counterclaim. Section 14 ofthe Act, 15 US. C. 59 I064,
`limits, after a five—year period, the grounds upon which most Principal Register
`registrations may be cancelled. If the plaintzfl in a proceeding before the Board
`relies on such a registration and the five—year period has not yet expired when the
`plaintifi”s complaint is filed, the limitation does not apply to a counterclaim filed
`by the defendant therein for cancellation of that registration. This is so even if the
`five—year period has expired by the time the counterclaim is filed. In such cases,
`the filing of the plaintifi”s complaint tolls, during the pendency of the proceeding,
`the running of the five—year period for purposes of determining the grounds on
`which a counterclaim may be based.” TBMP § 313.03.
`
`Applicant herein, EEI filed Opposition No. 91174160 back on February 13, 2001. EEI’s
`
`Registration No. 2,490,999 issued shortly thereafter on September 18, 2001. On August 7, 2003,
`
`Applicant herein, EEI amended its Notice of Opposition to assert Registration No. 2,490,999 as a
`
`basis for opposition. Under the Sunbeam rule, the five (5) year statute of limitations to seek
`
`cancellation of EEI’s Registration Number 2,490,999 has been tolled since EEI’s filing of its
`
`Amended Notice of Opposition back in 2003 in which it asserted Registration Number 2,490,999
`
`as a basis for opposition of Opposer herein, NOBLE’s application.
`
`3 i.e., TBMP § 313.04.
`
`
`
`Furthermore, Opposer herein, NOBLE (the applicant therein), alleged in its Answer in
`
`Opposition No. 91174160 that EEI’s Registration Number 2,490,999, upon which EEI’s
`
`opposition was based was “void.” Under the above quote from Sunbeam, this is further evidence
`
`of NOBLE’s challenge to EEI’s Registration Number 2,490,999, and the fact that NOBLE did
`
`not waive his right to raise any arguments for opposition or cancellation of Applicant EEI’s
`
`marks.
`
`C. Failure to File an Affirmative Action to Cancel Is Neither a Basis for a
`
`Waiver of Claims.
`
`It is also of no consequence that Opposer did not file an affirmative action, whether by
`
`counterclaim or separate proceeding, to cancel during the pendency of the prior consolidated
`
`proceeding prior
`
`to any alleged expiration of the five (5) year statute of limitations,
`
`notwithstanding the clear tolling. Under the “Sunbeam Rule,”4
`
`even a mere denial of the
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`validity of a mark in an answer or affirmative defense is recognized as a challenge to a
`
`registrant’s rights which tolls the five (5) years statute of limitations period. The Commissioner
`
`in Sunbeam held that:
`
`“Applicant has admitted that the registration issued and was published by opposer
`under Section 12(c), but it has denied that the mark is valid or that the registration
`is valid. The effect of applicant's pleading is to say that an invalid mark invalidly
`registered should not stand as a bar under Section 2(d) to its right to register and
`the registration should therefore be canceled.”
`
`Sunbeam Corp. v. Dur0 Metal Products Co., 106 USPQ 385, 386 (Comm'r 1955).
`
`4Quote from: Wz'llz'ams0n—Dz'ckz'e Manufacturing Co. v. Mann Overall Company, 359 F.2d 450,
`454, 149 USPQ 518 (CCPA 1966).
`
`
`
`Opposer NOBLE could not have waived its right to oppose the subject Application Serial
`
`No. 78/955,663 by not asserting such bases in the prior pending consolidated Opposition No.
`
`91121980 / Cancellation No. 92042251 since the subject Application Serial No. 78/955,663 was
`
`not even mentioned therein. Any such failure to raise any claims in Opposition No. 91121980 /
`
`Cancellation No. 92042251 to date, neither can act as a waiver of any rights since the period for
`
`Opposer NOBLE to challenge Applicant EEI’s rights therein is still open due to the tolling of the
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`five (5) year statute of limitations. Notwithstanding the above, any claim by Applicant EEI to
`
`the effect that only an affirrnative action to cancel its Registration would have avoided a waiver
`
`also fails under Sunbeam, supra.
`
`III.
`
`OPPOSER HAS PROPERLY ALLEGED A VALID BASIS FOR STANDING TO
`
`MAINTAIN THE HEREIN OPPOSITION ACTION.
`
`Any person who believes that he would be damaged by the registration of a mark upon
`
`the Principal Register, may, upon payment of the prescribed fee, file an opposition in the Patent
`
`and Trademark Office, stating the grounds therefor, within thirty days after the publication under
`
`subsection (a) of section 12 of this Act of the mark sought to be registered. 15 U.S.C. § 1063(a),
`
`Lanham Act,
`
`§ 13(a); TBMP §§ 303.01; 309.03(b)
`
`[other citations omitted].
`
`The term
`
`"damage," as used in Sections 13 and 14 of the Act, 15 U.S.C. §§ 1063 and 1064, concerns
`
`specifically a party's standing to file an opposition or a petition to cancel, respectively. TBMP §
`
`303.03 [other citations omitted]. At the pleading stage, all that is required is that an opposer
`
`allege facts sufficient to show a “real interest” in the proceeding, and a “reasonable basis for its
`
`belief of damage." TBMP § 309.03(b); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023,
`
`1025 (Fed. Cir. 1999) and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
`
`USPQ 185, 189 (CCPA 1982). To plead a "real interest," the claimant must allege a "direct and
`
`
`
`personal stake" in the outcome of the proceeding. TBMP § 309.03(b) [other citations omitted].
`
`The allegations in support of plaintiffs belief of damage must have a reasonable basis "in fact."
`
`I_d. [other citations omitted]. There is no requirement that actual damage be pleaded and proved
`
`in order to establish standing or to prevail in an opposition or cancellation proceeding. E. [other
`
`citations omitted].
`
`Nonetheless, Opposer’s interest in these proceedings is “real.” Applicant has cited every
`
`U.S. registration it has obtained against Opposer in prior proceedings. (E, Opposition No.
`
`91121980, Docket #86 / Cancellation No. 92042251, Docket #18).
`
`If the subject Application
`
`Serial No. 78/955,663 matures into a registration, Opposer will undoubtedly additionally assert
`
`the registration against Opposer in the other pending proceedings, to bolster its “family” of
`
`registrations argument, and might attempt to use it to obtain injunctive relief or damages against
`
`Opposer in the courts as Applicant has in actions involving users of marks which are similar to
`
`Opposer’s COCO BONGO marks. Opposer’s basis for his belief of possible damage is
`
`undoubtedly reasonable because Applicant has already asserted registrations for similar marks
`
`against Opposer in the prior pending TTAB proceedings.
`
`The public too has an interest in preventing the registration of diluted, descriptive or
`
`otherwise unregisterable marks. This principle is even more appropriately applied to marks or
`
`terms which have already been held by federal courts to be weak or unprotectable. e.g. Caruso
`
`& Co., Inc. v. Estefan Enterprises, Inc., 994 F. Supp. 1454 (S.D. Fla. 1998)(The U.S. District
`
`Court for the Southern District of Florida held the term BONGOS to be weak and afforded it
`
`little protection with respect to enjoining Applicant’s use thereof in connection with Applicant’s
`
`services).
`
`Section 309.03(b), TBMP states that:
`
`11
`
`
`
`“A real interest in the proceeding and a reasonable belief of damage may be
`found, for example, where plaintiff pleads (and later proves)...Defendant has
`relied on its ownership of its application or registration in another proceeding
`between the parties, or defendant has asserted a likelihood of confusion in another
`proceeding between the parties involving the same marks.” E, Tonka Corp. v.
`Tonka Tools, Inc., 229 USPQ 857, 859 (TTAB 1986) (petitioner has standing to
`cancel registration that has been asserted, even defensively, in a civil action); M.
`Aron Corporation v. Remington Products, Inc., 222 USPQ 93, 96 (TTAB 1984).
`
`Applicant has cited to every U.S. Registration it owns in its pleadings in other opposition,
`
`cancellation and even federal court actions. (E, Opposition No. 91121980, Docket #86 /
`
`Cancellation No. 92042251, Docket #18). Each time another Registration issues, it adds it to the
`
`list of Registrations upon which it bases its claims. 3, Opposition No. 91121980; Cancellation
`
`No. 92042251). If registration of the subject mark is permitted, Applicant will undoubtedly use
`
`the registration to attempt to bolster its claims against Opposer in the other cited proceedings.
`
`Opposer pled in the Notice of Opposition that: 1) Applicant relies on its purported use of
`
`the mark BONGOS CUBAN CAFE in commerce and its pending trademark application to
`
`further its various actions against Opposer before the TTAB; 2) Applicant does not have a
`
`protectable right in the mark which is the subject of this Opposition Action because the subject
`
`mark BONGOS CUBAN CAFE merely describes the basic nature of the goods and services
`
`being offered by Applicant under the mark, namely, restaurant and bar services featuring Cuban
`
`music, decor, drinks and food; 3) Applicant’s officers and agents admitted through direct
`
`testimony in the case of Caruso & Co., Inc. v. Estefan Enterprises, Inc., 994 F. Supp. 1454 (S.D.
`
`Fla. 1998) that the term “BONGOS” is diluted, and is widely used in the entertainment industry;
`
`4) The U.S. District Court for the Southern District of Florida held the term BONGOS to be
`
`weak and afforded it
`
`little protection with respect to enjoining Applicant’s use thereof in
`
`connection with Applicant’s services in the case of Caruso & Co., Inc. v. Estefan Enterprises,
`
`12
`
`
`
`Inc., 994 F. Supp. 1454 (SD. Fla. 1998); 5) Since Applicant's mark is generic and/or merely
`
`descriptive of the recited services, Applicant’s mark should not be permitted registration on the
`
`Principal Register; 6) If Applicant were granted a registration for this descriptive Mark, then it
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`can and will use the same to further harass Opposer with further TTAB or legal action, and will
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`continue to tarnish Opposer's reputation and interfere with its business interests; and 7) Opposer
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`will clearly be damaged by the registration of the subject Mark. (E, Notice of Opposition,
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`111110-21).
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`Opposer should be permitted to defend itself from such damage in the instant proceeding.
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`A proper basis for standing has been pled under the authorities discussed above.
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`IV.
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`ANY REPLY BRIEF FILED IN RESPONSE HERETO SHOULD BE STRICKEN
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`AND GIVEN NO CONSIDERATION OR EFFECT WITHOUT LEAVE OF THIS
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`BOARD UPON A SHOWING OF GOOD CAUSE.
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`Although the Board may, in its discretion, consider a reply brief in support of a motion,
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`the filing of reply briefs is discouraged, as the Board generally finds that reply briefs have little
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`persuasive value and are often a mere reargument of the points made in the main brief. TBMP §
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`502.02(c); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1553 (TTAB 2000). Also see, Johnston
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`Pump/General Valve Inc. v. Chromalloy American Corp., 13 USPQ2d 1719, 1720 n.3 (TTAB
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`1989) ("The presentation of one's arguments and authority should be presented thoroughly in the
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`motion or the opposition brief thereto").
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`It has been more the standard, rather than the exception, for Applicant to file a reply brief
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`in support of its motions in other proceedings before the TTAB. The Board in this proceeding
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`should be aware of this history so that the litigation of this matter is not permitted to become
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`vexatious and so the proceedings are not unnecessarily multiplied. For the benefit of both
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`
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`parties, and to aid in efficiency, and in reducing the workload and of this Board, such replies
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`should be summarily rejected and ignored without a showing of good cause for such
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`discretionary filings.
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`WHEREFORE, Opposer believes that it will be damaged by registration of the subject
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`mark, that it has sufficiently alleged standing, and has not waived any bases for opposition
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`alleged. Opposer prays that Applicant’s Motion to Dismiss be denied accordingly.
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`Respectfully submitted,
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`SILVERMAN SANTUCCI, LLP
`Attorneys for Opposer
`500 West Cypress Creek Road
`Suite 500
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`Fort Lauderdale, Florida 33309
`
`(954) 35 l-7474/telephone
`(954) 35l-7475/facsimile
`
`By:
`
`/s/Michael I. Santucci
`Michael I. Santucci, Esq.
`Florida Bar Number: 0105260
`
`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY that a true and correct copy of the foregoing has been forwarded
`
`this flday of August, 2007 Via First Class Mail to: Karen Stetson, Esq., counsel for Applicant
`
`Estefan Enterprises, Inc., P.O. Box 403023 Miami, Florida 33 l40.
`
`s/Michael I. Santucci
`
`Michael I. Santucci, Esquire
`Florida Bar Number: 0105260
`
`mis@500laW.com
`
`l4
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`
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`Case 6:06—CV-00742-GAP—KRS Document 92-10
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`Filed 06/26/2007
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`Page 1 of 5
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`Combined Declaration of Use and Incontestability Under Sections 8 & 15
`
`
`The table below presents the data as entered.
`
`REGISTRATION NUMBER
`
`REGISTRATION DATE
`
`SERIAL NUMBER
`
`2490999
`
`09/18/2001
`
`MARK
`
`BONGOS CUBAN CAFE
`
`OWNER SECTION (current)
`
`NAME
`
`STREET
`
`CITY
`
`sTATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`OWNER SECTION (proposed)
`
`NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`
`Estefan Enterprises, Inc.
`
`555 Jefferson Avenue
`
`Miami Beach
`
`Estefan Enterprises, Inc.
`
`420 Jefferson Avenue
`
`Miami Beach
`
`(305) 695-7000
`
`maf@kstetson1aw.com
`
`ATTORNEY SECTION (current)
`
`NAME
`
`MITCHELL H STABBE
`
`ATTORNEY SECTION (proposed)
`
`GOODS AND/OR SERVICES SECTION
`
`INTERNATIONAL CLASS
`
`Kmh
`
`\\TICRS2\EXPORT12\751\654 \75165474\xml1\8150002.JP G
`
`EXHIBIT 1,
`
`
`
`
`
`Case 6:06-cv-O0742—GAP-KRS Document 92-10
`
`Filed 06/26/2007
`
`Page 2 of 5
`
`
`
`
` PAYMENT SECTION
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TEAS STAMP
`
`
`
`USPTO/S08Nl5-72.153.78.72
`-20070131104345573478-249
`0999-360ada7bf634eba18bfb
`4e947d63c6770-CC-1384-200
`70131 103049159059
`
`
`
`Combined Declaration of Use and Incontestability Under Sections 8 & 15
`
`To the Commissioner for Trademarks:
`
`REGISTRATION NUMBER: 2490999
`REGISTRATION DATE: 09/18/2001
`MARK: BONGOS CUBAN CAFE
`
`The owner, Estefan Enterprises, Inc., having an address of 420 Jefferson Avenue, Miami Beach, Florida US 33139, is filing a Combined Declaration
`of Use and Incontestability Under Sections 8 & 15.
`For International Class 042, the owner, or its related company, is using the mark in commerce on or in connection with all goods or services listed in
`the existing registration for this class; and, the owner, or its related company, has continuously used the mark in commerce for five (5) consecutive
`years after the date of registration, or the date of publication under Section l2(c), and is still using the mark in commerce on or in connection with
`all goods or services listed in the existing registration for this class. Also, there has been no final decision adverse to the owner's claim of ownership
`of such mark for those goods or services, or to the owner's right to register the same or to keep the same on the register; and, there is no proceeding
`involving said rights pending and not disposed of in either the U.S. Patent and Trademark Office or the courts.
`The owner is submitting one specimen for this class showing the mark as used in commerce on or in connection with any item in this class,
`consisting of a(n) website page advertising Bongos Cuban Cafe restaurant and bar.
`Specimen-1
`The registrant hereby appoints Karen L. Stetson to file this Combined Declaration of Use and Incontestability Under Sections 8 & 15 on behalf of
`the registrant.
`A fee payment in the amount of $300 will be submitted with the form, representing payment for 1 class(es), plus any additional grace period fee, if
`necessary.
`
`Declaration
`
`
`
`Case 6:O6—cv—O0742—GAP-KRS Document 92-10
`
`Filed 06/26/2007
`
`Page 3 of 5
`
`The owner, or its related company, is using the mark in commerce on or in connection with the goods and/or services identified above, as evidenced
`by the attached specimen(s) showing the mark as used in commerce. The owner, or its related company, has continuously used the mark in
`commerce on or in connection with the goods and/or services identified above, forfive (5) consecutive years after the date ofregistration, or the
`date ofpublication under Section 12(c), and is still using the mark in commerce on or in connection with the identified goods and/or services. There
`has been no final decision adverse to the owner's claim ofownership ofsuch markfor such goods and/or services, or to the owner's right to register
`the same or to keep the same on the register; and there is no proceeding involving said rights pending and not disposed ofeither in the U. S. Patent
`and Trademark Ofiice or in the courts.
`The undersigned being hereby warned that willful false statements and the like are punishable by fine or imprisonment, or both, under