Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA323703
`ESTTA Tracking number:
`12/22/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91184456
`Plaintiff
`L'Oreal USA, Inc.
`Robert L. Sherman
`Paul, Hastings, Janofsky & Walker LLP
`75 East 55th Street
`New York, NY 10022
`UNITED STATES
`rls@paulhastings.com
`Other Motions/Papers
`Robert L. Sherman
`rls@paulhastings.com
`/rls/
`12/22/2009
`L'OREAL Memo in Opposition to Motion to Vacate.pdf ( 19 pages )(1588511
`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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`In the Matter of Application Serial NO. 76 / 596,736
`Published in the Official Gazette on May 6, 2008
`Mark: UOREAL PARIS
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`L’OREAL SA and L‘OREAL USA, INO,
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`Oppose:-,
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`V.
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`Opposition No. 91184456
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`ROBERT VICTOR MARCON,
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`Applicant.
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`L’OREAL’S MEMORANDUM OF LAW
`IN OPPOSITION TO APPLICANTS MOTION TO VACATE DEFAULT JUDGMENT
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`LEGAL_US_E # 86181690.}
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`TABLE OF CONTENTS
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`Page
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`TABLE OF AUTHORITIES .....................................................
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`............................................................... .. ii
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`I. PRELIMINARY STATEMENT............................................................................................................. ..1
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`II. FACTUAL BACKGROUND ................................................................................................................ .. 2
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`III. ARGUMENT ...................................................... .§ .................................................................................. .. 4
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`A. App1icant’s Failure to Answer Was Willful or Grossly Negligent ........................................ .. 6
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`B. Applicant Has Not Established A Meritorious Defense ........................................................ .. 8
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`C. Under the Circumstances of This Proceeding, Delay Causes Prejudice to Opposer ...... ..12
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`IV. CONCLUSION ................................ ., .................................................................................................. ..14
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`TABLE OF AUTHORITIES
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`CASES
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`Page(s)
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`Adoaneed Comme’71 Denga, Irze. o. Premier Retail Nefwor/éx, I72e.,
`46 F. App’): 964 (Fed. Cir. 2002) ............................................................................................................ .. 9
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`Boyton Red Sox Baxeball C/ab, L.P. o. 5/eerman,
`88 U.S.P.Q.2d 1581 (T.T.A.B. 2008) ................................................................................................... .. 10
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`Commodore E/eee. Ltd. o. CBM Kaom/92'/éz' Kai;/ya,
`26 U.S.P.Q.2d 1503 (T.T.A.B. 1993) .....................................................
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`............................................ .. 10
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`'
`DeLorme Poo/fig Co. 7/. Earl‘/ea’; Ir/te.,
`60 U.S.P.Q.2d 1222 (T.T,A.B. 2000) .................................... ..'. .......................................................... .. 6, 8
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`V
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`22. SOS Arana/1/zmem‘aa'o71 S./1.,
`El Eneanlo, Inc.
`Opposition No. 116557, 2001 WL 531176 (T.T.A.B. May 18, 2001) .............................................. .. 9
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`Intel Corp. v. Emery/,
`Opposition No. 91123312, 2007 WL 1520948 (T.T.AA.B. May 15, 2007) .......
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`............................. .. 10
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`L. C. Lioezzying Iae. o. Berman,
`86 U.S.P.Q.2d 1883 (T.T.A.B. 2008) ................................................................................................... .. 10
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`Lane Ltd. o. ]ae/éxon Im"/ Trading Co.,
`33 U.S.P.Q.2d 1351 (T.T.A.B. 1994) ................................................................................................... .. 10
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`4
`S. Indux, Inc. 2/. Lamb—W/eyton Ina,
`45 U.S.P.Q.2d 1293 (I‘.T.A.B. 1997) ..................................................................................................... .. 6
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`OTHER AUTHORITIES
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`37 C.F.R. § 2.106(b)(1) .................................................................................................................................... .. 9
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`37 C.F.R. § 2.116(a) ......................................................................................................................................... .. 4
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`37 C.F.R. § 2.119(a) ......................................................................... .._. ............................................................. ..1
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`Fed. R. Civ. P. 8 ............................................................................................................................................... .. 9
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`Fed. R. Civ. P. 55(c) ..........................................................................................................................
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`........... .. 5
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`Fed. R. Civ. P. 60(b) ........................................................................................................................................ .. 5
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`TBMP § 113.02 ................................................................................................. ..' ............................................. .. 4
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`TBMP§113.06...f. ........................................................................................................................................... .. 4
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`E1
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`111
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`TBMP § 312.01 ................................................................................................................................................ .. 5
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`TBMP § 312.03 ..... .._ ......................................................................................................................................... .. 4
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`Trademark Rule 2.1 06 (a) .............................................
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`................................................................................. .. 4
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`. L’Oréal S.A. and L’Oréal USA, Inc. (collectively, “L’Oréal” or “Opposer”) submit
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`this memorandum in opposition to what has been labeled “Communication G”, submitted to the
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`Trademark Trial and Appeal Board (the ‘‘Board’’) by Robert Victor Marcon (“Applicant”), and
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`designated by the Board as a motion to vacate the default judgment that was entered as a result of
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`Applicant’s failure to answer L’Oréal’s Amended Notice of Opposition.
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`L’Oréal has never been served with Applicant’s “Communication G”, as required by
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`Trademark Trial and Appeal Board Manual of Procedure (“TBMP”)
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`113.01, 113.02, and 37
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`,C.F.R. § 2.119(a) (“Every paper filed in the Patent and Trademark Office in inter partes cases,
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`including notice of appeal, must be served upon the other parties except the notice of interference,
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`the notification of opposition, the petition for cancellation, and the notice of a concurrent use
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`proceeding, which are mailed by the Patent and Trademark Office. Proof of such service must be
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`made before the paper will be considered by the Office”) (internal citations omitted). On December
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`7, 2009, L’Oréal fortuitously became aware of the filing only as a result of its own periodic review of
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`the docket.
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`I.
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`PRELIMINARY STATEMENT
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`Applicant is an experienced participant in Trademark Office proceedings. He has
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`waged a campaign against the U.S. trademark system by attempting to register famous marks owned
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`by others, but for disparate goods. As this proceeding demonstrates, any of those owners that
`attempts to defend its rights can expect to be met with an expensive and bad faith proceeding, made
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`even more expensive by Applicant’s selectively following or not following the rules as it suits him.
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`Applicant’s abuse of the intent—to—use system, and the corresponding burden on trademark owners
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`and the Trademark Office, is precisely what Congress intended to avoid by requiring the good faith
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`and bona fide intent to use that Applicant clearly lacks.
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`L’Oréal does not base its opposition to what has been designated a motion to vacate
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`on the deficiencies of Applicant’s “Communication G,” which apparently does little more than state
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`that the default judgment was entered in error because, Applicant claims, “Communication F” -
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`Applicant’s response to the Board’s notice of default — was timely filed. Rather, although L’Oréal
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`notes that Communication G does not meet the procedural or substantive requirements of a motion
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`to vacate,‘ L’Oréal opposes the vacatur of judgment because, even if timely received, Applicant’s
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`Communication F failed to show good cause why default should not be entered. In substance,
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`Communication F would have the Board excuse Applicant’s utter lack of diligence when he failed to
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`read and/or comply with the plain language of the Board’s order granting L’Oréal’s motion to
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`‘ amend, and would have the Board accept as a defense that Applicant thinks that U.S. trademark law
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`ought to be different from what it is. Applicant has still not filed an answer to the Amended Notice
`of Opposition. His Communication F tacitly admits that he cannot make the showing needed to
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`prove the statutorily—required bona fide intent to use his mark in commerce, without which his
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`application is invalid as a matter of law. Despite any reluctance that the Board may have to decide
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`cases by default, where an Applicant’s showing of good cause sets forth neither an excusable reason
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`for failure to answer nor a meritorious defense, entry of a default judgment is appropriate. The
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`motion to vacate is thus futile and should be denied.
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`II.
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`FACTUAL BACKGROUND
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`Following discovery, during which Applicant failed to produce any documentation
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`or other objective evidence in response to discovery requests regarding his bona fide intent to use
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`the subject mark, on June 29, 2009, L’Oréal filed a motion for leave to amend its Notice of A
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`Opposition to state an additional claim regarding Applicant’s lack of bona fide intent to use the
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`L’Oréal recognizes that Communication G was designated a Motion to Vacate Judgment by the
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`Board, not by Applicant.
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`L’OREAL PARIS mark. L’Oreal included its proposed Amended Notice of Opposition with that
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`motion. Applicant did not oppose the motion, which the interlocutory attorney granted as both
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`conceded and well—taken. The July 28, 2009 order granting the motion stated that the Amended
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`Notice of Opposition is accepted as the operative complaint, and further stated that “[a]pplicant is
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`allowed until thirty days from the mailing date set forth in this order to file an answer to the
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`amended notice of opposition.”
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`Applicant has never filed an answer to the Amended Notice of Opposition. On
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`September 30, 2009, the Board issued a notice of default, clearly stating that Applicant had “until
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`thirty days from the mailing date of this order to show cause why judgment by default should not be
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`entered against applicant in accordance with Fed. R. Civ. P. 55(b).” On November 10, 2009, an
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`order issued, stating that “[t]he record shows no response” to the notice of default, entering
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`judgment by default against Applicant, sustaining the opposition, and refusing registration to
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`Applicant. On December 7, 2009, Applicant’s Communication G was entered into the Trademark
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`Trial and Appeal Board docket and designated as a motion to vacate judgment. As noted earlier,
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`L’Oréal has never been served with that document.
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`Communication G claims that the default judgment was entered in error because
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`Applicant timely responded to the notice of default by filing Communication F. Applicant includes
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`with Communication G a copy of Communication F and accompanying matter. L’Oréal lacks
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`information or knowledge regarding whether Communication F was timely filed with the Board and
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`notes that Communication F contains a “Certificate of Mailing” rather than a “Certificate of
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`Service,” indicating the date and manner in which Communication F was served on L’Oréal. It is
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`not evident whether the Board would consider a “Certificate of Mailing” to be adequate as proof of
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`service that must be submitted before the Board will consider the filing, under TBMP § 113.022
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`L’Oréal acknowledges that it received Communication F by US. mail sometime during the week of
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`November 2, 2009. To the extent that the motion to vacate relies on Communication G’s assertion
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`that default was improperly entered based on the Board’s erroneous belief that Applicant had not
`responded at all, L’Oréal' does not know the reasonsbehind the Board’s judgment and lacks
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`sufficient information on which to respond. However, to the extent that Communication G asserts
`that default judgment should not have been entered due to the allegedly timelyfiling of
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`Communication F, L’Oréal submits that Communication F utterly fails to show good cause why
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`default should not be entered, and therefore does not suffice to set aside the notice of default.
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`Accordingly, default judgment is proper,‘ regardless of whether or not Communication F was timely
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`filed with the Board.
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`III.
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`ARGUMENT
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`Under Trademark Rule 2.106(a), when an applicant fails to file an answer within the
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`time set by the Board, “the opposition may be decided as in the case of default.” Default judgments
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`in Opposition proceedings are governed by Federal Rules of Civil Procedure 55 and 60, as made
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`applicable by 37 C.F.R. § 2.116(a). Although the Board applies a slightly different standard when
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`determining whether to vacate a default judgment from the one it applies when setting aside a notice
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`of default, TBMP § 312.03, the factors to be considered by the Board are very similar in both
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`circumstances: (1) whether the delay or default was a result of App1icant’s willful conduct or gross
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`neglect, (2) whether the Applicant has a meritorious defense to the action, and whether Opposer
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`will be prejudiced by the delay. See TBMP
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`312.02 (“Good cause why default judgment should not
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`'1
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`The TBMP makes clear that ‘‘[a] certificate of service is not the equivalent of a certificate of
`mailing or transmissionfor an)/pmpose,” TBMP § 113.06 (emphasis in original), but is not clear
`whether the form of a Certificate of Mailing suffices to show proof of service.
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`be entered against a defendant for failure to file a timely answer to the complaint, is usually found
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`when the defendant shows that (1) the delay in filing an answer was not the result of willful conduct
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`or gross neglect on the part of the defendant, (2) the plaintiff will not be substantially prejudiced by
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`the delay, and (3) the defendant has a meritorious defense to the action”) and 312.03 (“Among the
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`factors to be considered in determining a motion to vacate a default judgment for failure to answer
`the complaint are (1) whether the plaintiffwill be prejudiced, (2) whether the default was willful, and
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`(3) whether the defendant has a meritorious defense to the action”). Without conceding whether
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`the Board should apply a stricter standard under Fed. R. Civ. P. 60(b) to a motion to vacate in this
`instance,3 Opposer submits that Applicant’s Communication F failed to meet even the liberal '
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`standard for a showing of good cause required by Fed. R. Civ. P. 55(c). If anything, Communication
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`F establishes that Applicant’s failure to file the answer was due to Applicant’s willful conduct or
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`gross negligence in ignoring the plain language of the Board’s order, and that Applicant has no
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`meritorious defense to the Amended Notice of Opposition. Applicant cannot escape the utter void
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`of documentation that was established during discovery —- now closed — regarding his required bona
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`fide intent to use.
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`Board procedure states that “[i]f the defendant ‘fails to file a response to the notice, or
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`files a reipome l/mt doe: not .5‘/7071J,g00d muse, default judgment may be entered against it.” TBMP § 312.01
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`(emphasis added). Therefore, even if the Board takes Communication G at face value, and finds
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`3 Opposer notes that Communication G does not meet the procedural or substantive
`requirements of Fed. R. Civ. P. 60(b) or the Board’s rules governing the making of motions
`(including, z'm‘e_r a/zkz, the requirement to serve the motion on Opposer). However, Opposer
`recognizes that it was the Board —— not Applicant —- that designated Communication G as a motion to
`vacate. In the event that the Board gives Applicant an opportunity to file a proper motion to vacate,
`, Opposer hereby reserves its right to file a response thereto, and nothing herein shall operate as a
`waiver.
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`that Communication F was timely filed, the entry of a default judgment should be sustained based
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`on Communications F’s failure to show good cause.
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`A.
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`Applicanfs Failure to Answer Was Willful or Grossly Negligent
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`The most significant element in determining whether a notice of default or entry of
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`default judgment should be set aside is whether the delay or default was due to Applicant’s culpable
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`conduct, i.e., within its control. See, e.g., 5. Imiur, Inc. 7/. Lezmb—We5to7z Inn, 45 U.S.P.Q.2d 1293, 1296
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`(T.T.A.B. 1997)
`applying the test for “excusable neglect” under Fed. R. Civ. P. 60(b), which is
`Very similar to the “good cause” analysis under Fed. R. Civ. P. 55(c), the Board stated that “several
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`courts have stated that ... the reason for the delay and whether it was within the reasonable control
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`of the rnovantl] might be considered the most important factor in a particular case”) (citing Pioneer
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`Imz. Ser//r. Co. v. B77/72521/zbé Arrow. Ltd. P ’r/Jip, 507 U.S. 380 (1993), and Pumpkin, Ltd. 1/. The Seed Corps,
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`42 U.S.PLQ.2d 1582 (T.T.A.B. 1997)). Applicant’s ‘willful conduct or gross negligence in failing to
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`file a timely answer is itself sufficient to support an entry of judgment by default, even if Applicant
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`had a meritorious defense and thedelay caused no prejudice to Opposer. See DeLom2e Pub/jg Co.
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`72.
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`Bart/M’: Ina, 60 U.S.P.Q.2d 1222, 1224 (T.T.A.B. 2000) (“Although opposer has failed to establish
`that applicant's delay in filing an answer caused substantial prejudice to opposer or that applicant is
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`without a meritorious defense to the opposition, we find that the delay here was the result of
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`applicant's willful conduct and gross neglect”). Even under the liberal standards that govern
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`defaults, and even in light of the leniency accorded pro se litigants, a failure to read and follow a clear
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`order of the Board constitutes a willful or grossly negligent disregard for the proper conduct of the
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`proceeding, and was completely within the control and discretion of Applicant.
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`Bein
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`g 8
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`enerous, A licant’s Communication F contains a sin le sentence ur ortin
`PP
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`P P
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`8
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`to defend Applicant’s failure to file an answer to the Amended Notice of Opposition. Applicant
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`writes: “In defence of the Applicant the Applicant would like to state that this oversight was
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`' unintentional in that the Applicant, being unfamiliar with oppositional procedures, mistakenly
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`believed that said answer to the Opposer’s amended notice of opposition should be submitted
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`during the Defendant’s Pretrial Disclosures.” Applicant’: Commztnication F, p. 3. How convenient.
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`Applicant provides no explanation for how or why he held that mistaken belief. In particular,
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`Applicant’s “explanation” fails to indicate how Applicant held that mistaken belief when the Board’s
`July 28, 2009 order stated in no uncertain terms that “Applicant is allowed until thirty days from the
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`mailing date set forth in this order to file an answer to the amended notice of opposition.”
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`Applicant evidently had no difficulty understanding the same instructions when set forth in the
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`Board’s September 30, 2009 order entering the notice of default (stating, “Applicant is allowed until
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`thirty days from the mailing date of this order to show cause why judgment by default should not be
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`entered against applicant in accordance with Fed. R. Civ. p. 55(b)”). Applicant should not be
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`permitted to pick and choose when he feels like following a Board order. Applicant acted willfully
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`or with gross negligence. To be "clear, Applicant has not proffered any reasonable explanation —~ or,
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`indeed, any explanation whatsoever —- for why he believed that his answer should be submitted
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`during Pretrial Disclosures, contrary to the plain instructions in the order. Parties to an action are
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`expected to familiarize themselves with and adhere to the rules that govern the proceeding. Even
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`pro re litigants are expected to exercise, at very least, the minirnal diligence needed to read and
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`comply with the Board’s orders. Failure to do so, especially selectively, is not mere negligence. It is
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`willful or grossly negligent conduct that ought not be countenanced.
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`Faced with sirnilar circumstances, the Board has held that an applicant’s failure to
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`follow the clear instructions of a Board order did not constitute “good cause” to set aside a notice of
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`default. In DeLorme Pub/z'r/Jing 7/. Bart/Jaiv, the applicant tried to excuse its failure to file a timely
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`answer or to request an extension by stating that it Viewed the notice of opposition as incomplete.
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`The Board expressed incredulity at the applicant’s failure to follow the instructions of the order
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`setting forth the time to answer: “The Board quite frankly shares opposer’s puzzlernent at
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`applicant’s statement. The Board’s order establishing the time for applicant’s answer was
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`A
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`unambiguous. The . .. order stated that ‘[a]pplicant’s answer is due forty days after the mailing date
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`hereof.’ Other than the [claim that it viewed the notice of opposition as incomplete], applicant
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`offers no reason why it didpnot file an appropriate response or a timely motion to extend this
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`period.” DeLomze Pub/’g, 60 U.S.P.Q.2d at 1223. Lending some clarity to the meaning of the term
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`“willful” in the conteitt of a showing of good cause, the Board in DeL0me Pub/2';/9z'72<g stated that
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`“[w]hile applicant may not have intended that the current proceeding be resolved against it by
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`default, the facts here clearly indicate that applicant consciously chose to ignore the notice of
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`opposition it receivedalong with the Board's institution letter and trial order.” Id. at 1224. DeLor772e
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`Pztb/zlr/Jzflg is exactly on point and rnilitates against a finding of good cause in the case at bar.
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`As the Board stated in DeLom2e Pub/J/aing, whether Applicant intended to dqfau/I is not
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`‘the question. Applicant intended not to amt:/er within the time prescribed. Applicant either
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`consciously chose to ignore the Board’s order setting forth the time to file an answer to the
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`Amended Notice of Opposition, or was grossly negligent in ignoring the order. Under either
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`scenario, Applicant’s willful or grossly negligence conduct does not establish good cause for the
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`failure to answer, and is itself sufficient reason to sustain the entry of default judgment.
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`B.
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`Applicant Has Not Established A Meritorious Defense
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`ln addition to the fact that the Applicant’s failure to file a timely answer was the
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`result of Applicant’s willful conduct or gross neglect, Applicant has not set forth a meritorious
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`defense to the action. Applicant indicates that the bulk of Communication F is his “response” to
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`the Amended Notice of Opposition. Opposer notes, however, that Communication F clearly is not
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`a responsive pleading in accordance with the Trademark Rules and the Federal Rules of Civil
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`_ Procedure (including, were/z'a, TBMP §§ 311.01 and 311.02, 37 C.F.R. § 2.106(b)(1), and Fed. R.
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`Civ. P. 8). Rather, the “response” is in the form of an argument, perhaps constituting Applicant’s
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`effort to meet the element of showing a meritorious defense to the action, in order to support a
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`showing of good cause to set aside a notice of default.4
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`To show a meritorious defense, the party in default does not need to establish that
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`there is a likelihood that it will succeed at trial, but it does need to show that the evidence submitted
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`—- if proven —— would constitute a complete defense. See, e.g., E/ Eizezmte, Inc.
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`22. SOS Arema A/z'772em‘cm'o72
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`S./1., Opposition No. 116557, 2001 WL 531176, at *2 (T.T.A.B. May 18, 2001) (to assert a
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`meritorious defense under Rule 60(b), “the defaulting [party] need not establish that there is a
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`likelihood that it will carry the day, but whether the evidence submitted, if proven at trial, would
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`constitute a complete defense”) (internal quotations omitted); Advanced Ce7m7ze’n Derzgn, Inc. 2/. Premier
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`Retail New/or/és, Inn, 46 F. App’); 964, 973 (Fed. Cir. 2002) (stating in a patent infringement case that
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`“in the Rule 55(c) context
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`a meritorious defense means that the evidence or argument proffered
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`by the defaulting party could reasonably lead to a finding in the defaulting party's favor”) (internal
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`citations omitted). Applicant’s effort to set forth a defense to the new allegations in the Amended
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`Notice of Opposition fails entirely.
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`The Amended Notice of Opposition alleges that Applicant’s application for the
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`L’OREAL PARIS mark is invalid as a matter of law, because at the time of filing, Applicant lacked
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`the statutorily—required bona fide intent to use. The new factual allegations in the Amended Notice
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`of Opposition are included because, if true, they establish Opposer’s claim. Specifically, as argued
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`4 Opposer notes that under any other reading, Applicant has failed to meetthat element, and the
`motion should be denied accordingly. Even under that reading it fails.
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`and supported in detail in Opposer’s motion for leave to amend (as well as in prior correspondence
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`Applicant, copies of which were submitted with that motion), U.S. trademark law
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`unambiguously requires an applicant to have a bona fide intent to use the mark that can be
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`measured by objective facts rather than shown by “applicant’s mere statement of subjective
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`intention, without more.” Lowe Ltd. 7/. foolzron Im"l Trot/z'n,g Co., 33 U.S.P.Q.2d 1351, 1355 (T.T.A.B.
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`1994). Opposer’s motion for leave to amend set forth ample authority establishing that the lack of
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`documentary evidence can prove a lack of bona fide intent. See Commodore Elm. Ltd. o. CBM
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`Kobu:/9z}éz' Kazlr/M, 26 U.S.P.Q.2d 1503, 1507 (T.T.A.B. 1993) (“the absence of any documentary
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`evidence on the part of the applicant
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`is sufficient to prove that the applicant lacks a bona fide
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`intention to use its mark in commerce as required by Section 1(b)”); Intel Corp. v. Emery/, Opposition
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`No. 91123312, 2007 WL 1520948, at *7 (T.T.A.B. May'15, 2007) (no bona fide intent to use where
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`applicant failed to produce evidence or information regarding marketing plans, business plans, or
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`any other objective substantiating evidence); Borton Red Sox Baseball Club, L.P. 7/. S/7677776171, 88
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`U.S.P.Q.2d 1581, 1587 (T.T.A.B. 2008) (no bona fide intent to use where applicant failed to produce
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`any documentary evidence regarding trademark searches, specimens, labels, or advertising plans),
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`L. Lz'oemz'71gI72o. o. Bemzo/1, 86 U.S.P.Q.2d 1883, 1892 (T.T.A.B. 2008) (no bona fide intent to use
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`where discovery responses failed to produce any facts that “explain or outweigh the failure of
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`applicant, when he filed the application, to have documents which support his claimed intent to
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`use”). Opposer’s motion for leave to amend also set forth authority establishing that a lack of
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`industry—relevant experience indicates an applicant’s lack of bona fide intent, roe Boston Rea’ Sox, 88
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`U.S.P.Q.2d‘at 1587, as does filing an excessive number of intent to use applications, see Lam: Ltd, 33
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`U.S.P.Q.2d at 1355-56. Discovery has been completed. Applicant could not produce a single scrap
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`of paper evidencing an objective good faith intent to use the mark. He is now precluded from doing
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`SO.
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`LEGAL_-_US_E # 86181690.3
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`Applicant’s Communication F in no way establishes that he has my cognizable
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`defense or my! evidence to counter the claim that that he lacked a bona fide intent to use the mark,
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`as required by law. Rather, his “response” consists of a dissertation against trademark law as it exists
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`in the United States. For example, Applicant states that he “disagrees with the Opposer’s View
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`that any applicant applying for a trademark lacks the required ‘bona fide intent’ mandated by the law
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`if they have not formed nor initiated the normal plans, preparations, or other actions associated with
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`the commercial capitalization of the applied for trademark.” App/z'cmzz"y Commzznication F, pp. 4—5.
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`However, the View described is not merely Opposer’s view; it is the view of the United States
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`Congress, the courts of the United States, and the Board, as demonstrated repeatedly by Opposer
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`but ignored entirely by Applicants
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`Applicant’s response asserts his own concept of the “fundamental idea of what
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`proposed trademarks actually are,” App/z'mm"r Commz/nication F, p. 5, but he provides no legal basis
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`for his position. Rather, he asserts philosophical notions about the purpose of trademarks and
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`trademark applications, which have no support in legislative language or judicial precedent, and in
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`fact are at odds with the laws passed by Congress and interpreted by the courts and the Board.
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`Applicant does not assert as a defense that he had, at the time of filing, taken steps towards use of
`the mark; that he has objective evidence of his bona fide intent to use the mark at that time; that he
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`has knowledge, skill, or experience required to make use of the mark; or that he has a legitimate
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`countervailing explanation for his filing of an excessive number of intent to use applications for
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`disparate goods under well—known or famous marks. Applicant does not assert as a defense that the
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`5 Applicant also asserts his View that owners of well-known and famous marks should not be able
`to prevent an applicant “in a geographic or market field remote from the owner’s field from using
`the same or a similar mark uncompetitively.” App/z'm71t’r "Communication F, ”pp. 6-7. Again, rather
`than provide a cognizable defense, Applicant refuses to recognize the indisputable existence of a
`claim for federal trademark dilution, which is included in Opposer’s Notice.
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`authority cited by Opposer has been overturned or is inapplicable. In fact, Applicant does not assert
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`a defense that is legally cognizable in any respect. Instead, Applicant argues that the requirement set
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`forth by Congress, the courts, and the Board regarding a showing of bona fide intent to use — i.e.,
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`the law —— should not be what it is. Applicant’s arguments in Communication F do not constitute a
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`meritorious defense to the action, under even the most lenient interpretation.
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`C.
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`Under the Circumstances of This Proceeding, Delay Causes Prejudice to Opposer
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`Applicant has already failed to meet two of the three elements for a showing of good
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`cause. The motion to vacate should therefore be denied as futile, as Applicant’s willful or grossly
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`negligent conduct and failure to present a meritorious defense each, on its own, suffices to support
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`the entry of a default judgment. «Applicant has not attempted to address the final element of a
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`showing of good cause: Applicant has not shown that Opposer will not be prejudiced by the delay.
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`In light of the other two factors weighing heavily against a finding of good cause, the prejudice to
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`Opposer on its own does not change the outcome. Nonetheless, Opposer believes that this case
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`presents an unusual circumstance where Vacatur of a default judgment would cause prejudice to
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`Opposer.
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`Opposer recognizes that the type of prejudice typically considered by the Board in
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`this context involves prejudice beyond the ordinary costs and burdens of proceeding to trial, and
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`focuses instead on prejudice such as loss of evidence or unavailability of witnesses. However,
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`Opposer respectfully submits that where an applicant is trying to make a philosophical point other
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`than on the merits of an applicatiorfs registrability under existing law, and willingly refuses to
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`exercise diligence in complying with Board procedure, refuses to acknowledge and address the law
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`as it exists rather than as he wishes it were, and persists in repeating the same arguments while
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`simply ignoring the presentation of extensive authority to the contrary, it imposes an unreasonable
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`cost and burden on an opposer to continue a proceeding in which it already has been established
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`that the applicant has no meritorious defense.
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`Throughout this proceeding, Opposer has incurred excessive costs due to
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`Applicant’s insistence on unrneritorious and unsubstantiated claims, including invalid objections to
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`discovery r