throbber
Proceeding
`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 )
`
`

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`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
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`COMES NOW, ROBERTO NOBLE ("Opposer"), by and through his undersigned
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`counsel SILVERMAN SANTUCCI, LLP, and hereby responds to ESTEFAN ENTERPRISES,
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`INC.’s (alternatively “Applicant” and “EEI”) Motion to Dismiss Notice of Opposition [DE-4]1
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`(“Motion to Dismiss”) as follows:
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`STANDARD ON MOTION TO DISMISS
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`Applicant’s Motion to Dismiss is filed under TBMP § 503 for motions to dismiss for
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`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
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`accepted as true, and the complaint must be construed in the light most favorable to the plaintiff
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`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.
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`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)”.
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`

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`I_d. Whenever the sufficiency of any complaint has been challenged by a motion to dismiss, it is
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`the duty of the Board to examine the complaint in its entirety, construing the allegations therein
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`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.
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`I.
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`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
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`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
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`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].
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`(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
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`

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`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
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`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”
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`was the direct result of the above quoted misrepresentation. Despite the USPTO’s record, on
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`June 4, 2007, the U.S. District Court for the Middle District of Florida has recently ruled
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`conclusively that APPLICANT’s U.S. Registration No. 2,347,247 is n_()t incontestable in the
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`

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`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).
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`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
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`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
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`questioned.” (Internal quotations omitted). TBMP § 704.l2(a).
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`Indeed, the Board has taken
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`judicial notice of a federal court decision when it directly impacts the opposition proceedings.
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`E, The William Carter Co. v. H. W. Carter & Sons, Inc., 2004 TTAB LEXIS 115 (TTAB Feb.
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`27, 2004 (unpublished).
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`Further, pursuant to TBMP § 5l0.02(a), “[t]o the extent that a civil action in a Federal
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`district court involves issues in common with those in a proceeding before the Board,
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`the
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`decision of the Federal district court is often binding upon the Board. . .”); Wl/z0pper—Burger, Inc.
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`v. Burger King Corp., 171 USPQ 805 (TTAB l97l)(holding federal court decision is binding
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`upon the Board). See also, Mills v. Greene, 159 U.S. 651 (l895)(“The duty of this Court, as of
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`every other judicial tribunal, is to decide actual questions or abstract propositions, or to declare
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`principles or rules of law which cannot affect the matter in issue in the case before it”).
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`II.
`
`OPPOSER HAS NOT WAIVED ANY CLAIM RELATIVE TO THE
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`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
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`prior to the recent opening of the opposition period. The herein application is not the subject of
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`

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`the consolidated cancellation and opposition actions cited by Applicant in its Motion to Dismiss.
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`Those proceedings were filed, and have been pending, for years prior to even the filing date of
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`the subject application. The prior pending proceedings did not rely in any way upon Applicant’s
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`ownership of the subject application. (See, Opposition No. 91121980, Docket #86 / Cancellation
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`No. 92042251, Docket #18). In fact, Applicant has not even mentioned the subject Application in
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`its operative pleadings in those other proceedings.
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`I_d.
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`There cannot be said to be a waiver of any rights, unless the party to whom the waiver
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`allegedly applies has had the opportunity to assert, preserve and/or perfect those rights. See,
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`Oabre v. Entergy Operations, Inc., 522 U.S. 422, 422, 118 S.Ct. 838, 839 (1998). Never before
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`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.
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`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.
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`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
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`inappropriate subject matter for a motion to dismiss. A waiver is an intentional relinquishment
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`of a known right. Blacks Law Dictionary 1580 (6th ed.1990); See, e.g., Cherokee Nation v.
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`United States, 174 Ct.Cl. 131, 140, 355 F.2d 945 (1966); A Olympic Forwarder, Inc. V. United
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`States, 33 Fed.Cl. 514, 521 (1995). It is “a well established rule of law that ‘[w]aivers of rights
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`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
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`(1990), affd, 931 F.2d 863 (Fed.Cir.1991) (alterations in original) (citations omitted). “Waiver
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`

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`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
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`States, 22 Cl.Ct. 345, 346 (1991) (citing Matter ofGarfinkle, 672 F.2d 1340, 1347 (11th
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`Cir. 1982)).
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`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
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`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
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`v. American Cinema Editors Inc., 937 F.2d 1572, 1581-1582; 19 USPQ2d 1424, 1432 (Fed. Cir.
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`1991).
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`The rule fiom which Applicant’s argument derived, namely TBMP § 313.04 does not
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`apply to prior pending consolidated Opposition No. 91 12 1 980/Cancellation No. 92042251, much
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`less the facts pled in the instant Notice of Opposition. TBMP § 313.04 states that:
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`“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.
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`78/955,663 in the prior pending consolidated proceedings. The grounds to oppose the subject
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`Application Serial No. 78/955,663 could not have existed at the time when Opposer’s various
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`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.
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`In fact, the
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`

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`very next case cited in TBMP § 313.04 after the Vitaline Corp. v. General Mills Inc., case,2 cited
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`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).
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`Such facts simply do not exist. Opposer’s opposition of the subject application therefore cannot
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`be said to constitute waived compulsory counterclaims in the prior pending TTAB proceedings
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`which were not in any way based upon the subject Application Serial No. 78/955,663.
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`B.
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`The Five Year Statute of Limitations Has been Tolled Since 2003.
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`Notwithstanding Opposer’s inability to challenge Applicant’s rights to the subject
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`application, and notwithstanding Opposer’s decision not
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`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
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`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)
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`year statute of limitations to seek cancellation of Applicant’s Registration 2,490,999 was tolled
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`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.
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`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
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`action,
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`the time within which an afiirmative defensive action may be filed”; Humble Oil &
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`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
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`2 Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989).
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`

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`fifth anniversary date of registration, opposition wherein opposer relied on said registration
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`sought to be cancelled was filed before anniversary date); Sunbeam Corp. v. Duro Metal
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`Products Co., 106 USPQ 385, 386 (Comm'r 1955)(“...the filing of the pleading in which the
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`registration is relied upon tolls, during the pendency of the action,
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`the time within which an
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`afiirmative defensive action may befiled).
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`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:
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`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
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`Registration No. 2,490,999 issued shortly thereafter on September 18, 2001. On August 7, 2003,
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`Applicant herein, EEI amended its Notice of Opposition to assert Registration No. 2,490,999 as a
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`basis for opposition. Under the Sunbeam rule, the five (5) year statute of limitations to seek
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`cancellation of EEI’s Registration Number 2,490,999 has been tolled since EEI’s filing of its
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`Amended Notice of Opposition back in 2003 in which it asserted Registration Number 2,490,999
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`as a basis for opposition of Opposer herein, NOBLE’s application.
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`3 i.e., TBMP § 313.04.
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`

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`Furthermore, Opposer herein, NOBLE (the applicant therein), alleged in its Answer in
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`Opposition No. 91174160 that EEI’s Registration Number 2,490,999, upon which EEI’s
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`opposition was based was “void.” Under the above quote from Sunbeam, this is further evidence
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`of NOBLE’s challenge to EEI’s Registration Number 2,490,999, and the fact that NOBLE did
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`not waive his right to raise any arguments for opposition or cancellation of Applicant EEI’s
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`marks.
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`C. Failure to File an Affirmative Action to Cancel Is Neither a Basis for a
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`Waiver of Claims.
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`It is also of no consequence that Opposer did not file an affirmative action, whether by
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`counterclaim or separate proceeding, to cancel during the pendency of the prior consolidated
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`proceeding prior
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`to any alleged expiration of the five (5) year statute of limitations,
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`notwithstanding the clear tolling. Under the “Sunbeam Rule,”4
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`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
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`registrant’s rights which tolls the five (5) years statute of limitations period. The Commissioner
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`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).
`
`

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`Opposer NOBLE could not have waived its right to oppose the subject Application Serial
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`No. 78/955,663 by not asserting such bases in the prior pending consolidated Opposition No.
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`91121980 / Cancellation No. 92042251 since the subject Application Serial No. 78/955,663 was
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`not even mentioned therein. Any such failure to raise any claims in Opposition No. 91121980 /
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`Cancellation No. 92042251 to date, neither can act as a waiver of any rights since the period for
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`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
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`the effect that only an affirrnative action to cancel its Registration would have avoided a waiver
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`also fails under Sunbeam, supra.
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`III.
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`OPPOSER HAS PROPERLY ALLEGED A VALID BASIS FOR STANDING TO
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`MAINTAIN THE HEREIN OPPOSITION ACTION.
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`Any person who believes that he would be damaged by the registration of a mark upon
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`the Principal Register, may, upon payment of the prescribed fee, file an opposition in the Patent
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`and Trademark Office, stating the grounds therefor, within thirty days after the publication under
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`subsection (a) of section 12 of this Act of the mark sought to be registered. 15 U.S.C. § 1063(a),
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`Lanham Act,
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`§ 13(a); TBMP §§ 303.01; 309.03(b)
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`[other citations omitted].
`
`The term
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`"damage," as used in Sections 13 and 14 of the Act, 15 U.S.C. §§ 1063 and 1064, concerns
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`specifically a party's standing to file an opposition or a petition to cancel, respectively. TBMP §
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`303.03 [other citations omitted]. At the pleading stage, all that is required is that an opposer
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`allege facts sufficient to show a “real interest” in the proceeding, and a “reasonable basis for its
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`belief of damage." TBMP § 309.03(b); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023,
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`1025 (Fed. Cir. 1999) and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
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`USPQ 185, 189 (CCPA 1982). To plead a "real interest," the claimant must allege a "direct and
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`

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`personal stake" in the outcome of the proceeding. TBMP § 309.03(b) [other citations omitted].
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`The allegations in support of plaintiffs belief of damage must have a reasonable basis "in fact."
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`I_d. [other citations omitted]. There is no requirement that actual damage be pleaded and proved
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`in order to establish standing or to prevail in an opposition or cancellation proceeding. E. [other
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`citations omitted].
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`Nonetheless, Opposer’s interest in these proceedings is “real.” Applicant has cited every
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`U.S. registration it has obtained against Opposer in prior proceedings. (E, Opposition No.
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`91121980, Docket #86 / Cancellation No. 92042251, Docket #18).
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`If the subject Application
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`Serial No. 78/955,663 matures into a registration, Opposer will undoubtedly additionally assert
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`the registration against Opposer in the other pending proceedings, to bolster its “family” of
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`registrations argument, and might attempt to use it to obtain injunctive relief or damages against
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`Opposer in the courts as Applicant has in actions involving users of marks which are similar to
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`Opposer’s COCO BONGO marks. Opposer’s basis for his belief of possible damage is
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`undoubtedly reasonable because Applicant has already asserted registrations for similar marks
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`against Opposer in the prior pending TTAB proceedings.
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`The public too has an interest in preventing the registration of diluted, descriptive or
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`otherwise unregisterable marks. This principle is even more appropriately applied to marks or
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`terms which have already been held by federal courts to be weak or unprotectable. e.g. Caruso
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`& Co., Inc. v. Estefan Enterprises, Inc., 994 F. Supp. 1454 (S.D. Fla. 1998)(The U.S. District
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`Court for the Southern District of Florida held the term BONGOS to be weak and afforded it
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`little protection with respect to enjoining Applicant’s use thereof in connection with Applicant’s
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`services).
`
`Section 309.03(b), TBMP states that:
`
`11
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`

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`“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,
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`cancellation and even federal court actions. (E, Opposition No. 91121980, Docket #86 /
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`Cancellation No. 92042251, Docket #18). Each time another Registration issues, it adds it to the
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`list of Registrations upon which it bases its claims. 3, Opposition No. 91121980; Cancellation
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`No. 92042251). If registration of the subject mark is permitted, Applicant will undoubtedly use
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`the registration to attempt to bolster its claims against Opposer in the other cited proceedings.
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`Opposer pled in the Notice of Opposition that: 1) Applicant relies on its purported use of
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`the mark BONGOS CUBAN CAFE in commerce and its pending trademark application to
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`further its various actions against Opposer before the TTAB; 2) Applicant does not have a
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`protectable right in the mark which is the subject of this Opposition Action because the subject
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`mark BONGOS CUBAN CAFE merely describes the basic nature of the goods and services
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`being offered by Applicant under the mark, namely, restaurant and bar services featuring Cuban
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`music, decor, drinks and food; 3) Applicant’s officers and agents admitted through direct
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`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;
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`4) The U.S. District Court for the Southern District of Florida held the term BONGOS to be
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`weak and afforded it
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`little protection with respect to enjoining Applicant’s use thereof in
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`connection with Applicant’s services in the case of Caruso & Co., Inc. v. Estefan Enterprises,
`
`12
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`

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`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
`
`can and will use the same to further harass Opposer with further TTAB or legal action, and will
`
`continue to tarnish Opposer's reputation and interfere with its business interests; and 7) Opposer
`
`will clearly be damaged by the registration of the subject Mark. (E, Notice of Opposition,
`
`111110-21).
`
`Opposer should be permitted to defend itself from such damage in the instant proceeding.
`
`A proper basis for standing has been pled under the authorities discussed above.
`
`IV.
`
`ANY REPLY BRIEF FILED IN RESPONSE HERETO SHOULD BE STRICKEN
`
`AND GIVEN NO CONSIDERATION OR EFFECT WITHOUT LEAVE OF THIS
`
`BOARD UPON A SHOWING OF GOOD CAUSE.
`
`Although the Board may, in its discretion, consider a reply brief in support of a motion,
`
`the filing of reply briefs is discouraged, as the Board generally finds that reply briefs have little
`
`persuasive value and are often a mere reargument of the points made in the main brief. TBMP §
`
`502.02(c); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1553 (TTAB 2000). Also see, Johnston
`
`Pump/General Valve Inc. v. Chromalloy American Corp., 13 USPQ2d 1719, 1720 n.3 (TTAB
`
`1989) ("The presentation of one's arguments and authority should be presented thoroughly in the
`
`motion or the opposition brief thereto").
`
`It has been more the standard, rather than the exception, for Applicant to file a reply brief
`
`in support of its motions in other proceedings before the TTAB. The Board in this proceeding
`
`should be aware of this history so that the litigation of this matter is not permitted to become
`
`vexatious and so the proceedings are not unnecessarily multiplied. For the benefit of both
`
`

`
`parties, and to aid in efficiency, and in reducing the workload and of this Board, such replies
`
`should be summarily rejected and ignored without a showing of good cause for such
`
`discretionary filings.
`
`WHEREFORE, Opposer believes that it will be damaged by registration of the subject
`
`mark, that it has sufficiently alleged standing, and has not waived any bases for opposition
`
`alleged. Opposer prays that Applicant’s Motion to Dismiss be denied accordingly.
`
`Respectfully submitted,
`
`SILVERMAN SANTUCCI, LLP
`Attorneys for Opposer
`500 West Cypress Creek Road
`Suite 500
`
`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
`
`

`
`Case 6:06—CV-00742-GAP—KRS Document 92-10
`
`Filed 06/26/2007
`
`Page 1 of 5
`
`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
`
`EMAIL
`
`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

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